Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 FLOW TECHNOLOGY, INC.
Opposition No. 76,387
January 2, 1991
Before Sams, Rice and Rooney
Opinion by Rooney
An opposition has been filed against an application for registration of the mark OMNITRAX for computer programs. [FN1] The grounds for opposition are that the applicant's mark so resembles the mark OMNITRAK previously used and registered by opposer for flowmeter calibrators [FN2] as to be likely to cause confusion, mistake or deception. Applicant admitted that opposer's mark and its own are similar in sight and sound, but otherwise denied the allegations of the notice of opposition.
This case is now before the Board for a determination of opposer's motion for summary judgment. As grounds for summary judgment, opposer asserts that there are no triable issues of fact which would preclude opposer from prevailing as a matter of law. In support of the motion, opposer has filed the declaration of Jerry McIntosh, opposer's product manager for calibrators. Mr. McIntosh states that in the calibrator industry, it is common to use computer programs to control calibrators and the two are commonly marketed together; that, as early as March of 1984, opposer introduced a flow calibrator which was controlled by a personal computer and has continued to sell computer controlled flow calibration equipment since that time; that the personal computer which controls opposer's flow calibration equipment is software driven and the programs which drive the calibration equipment are customized by opposer to suit the particular needs of each customer; and, that the computer programs are an important part of opposer's business and sales success and are associated with the OMNITRAK mark.
The exhibit attached to the motion is a brochure showing, among other things, the specifications of one of opposer's flow calibration systems. The description of a "Low Flow Liquid Calibration System" reads "The Micro/Omnitrak TM is a very compact, computer assisted liquid calibration system ..." It is significant that the specifications for opposer's goods in the brochure include a "personal computer" and that in the same brochure opposer offers a personal computer "which is adaptable to all fluid flow calibrators in the product line. "The brochure also states that" User friendly, menu driven software and a typewriter keyboard permits quick modification of print format, headings, and easy entering of flowmeter data ...".
In response, applicant filed the affidavit of Louis Picciano, the applicant, who swears that there is no likelihood of confusion between opposer's mark and his own because the marks are affixed to completely dissimilar goods; that the product to which he affixes the OMNITRAX mark is a video store management system and it is extremely unlikely that purchasers of applicant's goods own a flowmeter calibrator, are shopping for one or even know what one is; that the mere fact that a flowmeter calibrator contains a dedicated computer does not raise a likelihood of confusion between the marks; that opposer has shown no actual confusion; and that the allegations of likelihood of confusion are based wholly on conclusory, self serving allegations.
*2 Summary judgment is appropriate where no genuine issues of material fact remain to be resolved and the moving party is entitled to judgment as a matter of law. See Buffett v. Chi-Chi's, Inc., 226 USPQ 428 (TTAB 1985). The initial burden on a motion for summary judgment is on the moving party. However, when the movant supports his position in the manner provided in Fed.R.Civ.P. 56, the adverse party may not rest upon the mere allegations or denials of his pleading, but his response, by affidavits or as otherwise provided in the rule, must set forth specific facts showing that there is a genuine issue for trial. See Fed.R.Civ.P. 56(e).
Applicant's affidavit raises no genuine issues of fact. Rather, applicant has argued only that the goods are dissimilar because its own computer programs comprise a video store management system. It appears that applicant's position is that the channels of trade differ. However, that is not a material fact which requires a trial inasmuch as applicant's goods are identified very broadly in his application as "computer programs," with no limiting language at all. We are constrained to determine the question of likelihood of confusion on the basis of the goods as identified in the application and/or registration at issue, unless applicant's entitlement to a registration for a narrower range of goods has been put in issue by motion or amendment to the pleadings. Here, applicant has filed no such motion or amendment. Thus, although applicant urges us to consider that its computer programs are for video store management, they must be considered to be computer programs of all types. See CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed.Cir.1983) and Seven-Up Company v. Aaron, 216 USPQ 807 (TTAB 1982).
In the absence of any genuine issues of material fact, the question of likelihood of confusion may be determined as a matter of law. See Bongrain International (America) Corporation v. Delice de France Inc., 811 F2d 1479, 1 U.S.P.Q.2d 1775 (Fed.Cir.1986) and Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281 (Fed.Cir.1984).
The question of priority does not arise in a case wherein the opposer is the owner of a valid and subsisting registration for its mark. See Black and Decker Manufacturing Company v. Bright Star Industries, Inc., 220 USPQ 890 (TTAB 1983). Opposer has filed a status and title copy of its registration along with its motion for summary judgment. Moreover, the affidavit submitted by opposer also establishes the lack of a genuine issue of material fact as to opposer's priority.
The marks of the parties are practically identical, the only difference being in the final letter of each. Opposer's mark is spelled with a final letter "k". Applicant's is spelled with a final letter "x" which causes applicant's mark to sound like the plural of opposer's, OMNITRAK and OMNITRAX. Applicant, in fact, has admitted that the marks are similar in sight and sound.
*3 The question of likelihood of confusion therefore rests on the goods. It has long been settled that goods do not have to be the same or even competitive to give rise to a likelihood of confusion. It is sufficient for that purpose that there be a relationship between the goods such that they are likely to be encountered by the same persons under circumstances which would, because of the marks used thereon, give rise to a presumption that they originate from or are in some way associated with the same producer. See Kraft, Inc. v. Country Club Food Industries, Inc., 230 USPQ 549 (TTAB 1986), Oxford Pendaflex Corporation v. Anixter Brothers, Inc., 201 USPQ 851 (TTAB 1978) and Monsanto Company v. Enviro-Chem Corporation, 199 USPQ 590 (TTAB 1978).
As previously noted, the identification of applicant's goods is quite broad and easily encompasses computer programs such as are used to drive opposer's calibration equipment. Moreover, even though opposer's mark is not used on computer programs, per se, nevertheless, customized computer programs are included as part of the flow meter calibrators on which opposer does use its mark, a fact explained in the brochures in which opposer advertises its computer driven OMNITRAK goods. If applicant used its mark OMNITRAX on a computer program for driving flow calibration equipment (as we must presume that applicant does in view of his broad identification of goods), one familiar with opposer's mark and goods may well be expected to make a connection upon encountering applicant's mark on such a computer program.
We therefore find likelihood of confusion and accordingly grant opposer's motion for summary judgment to the extent that we hereby enter judgment in opposer's favor on the issue of its standing and on the issue of likelihood of confusion with respect to the identification of goods as now written. However, applicant is allowed until twenty days from the date of this action to submit a request to amend the identification of goods in the application to accurately set forth the nature of the computer programs he actually sells under the mark (such as, for example, "computer programs for video store management"). If such a proposed amendment is submitted, the case will go to trial on the issue of likelihood of confusion with respect to the proposed amended identification of goods. If the Board ultimately finds that applicant is entitled to a registration with the proposed amended identification, the amendment will be entered and the opposition will be dismissed. See Rule 2.133(b). In the event that applicant fails to submit such a proposed amendment, the opposition will be sustained and registration to applicant will be refused.
Members, Trademark Trial and Appeal Board
FN1. Ser. No. 642529 filed February 2, 1987 claiming use since July 1986.