2014 Annual Convention

Transcription

1 2014 Annual Convention Intellectual Property Bootcamp: Where Change Is What Stays the Same and Intellectual Property Boots on the Ground: Where Change Is What Stays the Same Corporate Counsel Section/Intellectual Property Law Section 1.0 General CLE Hour Each April 30 May 2, 2014 Columbus

2 Intellectual Property Law Where Change is What Stays the Same Agenda Part 1: IP Bootcamp (substantive law developments) The Changing (?) Patent Demand Letter: Stephen L. Grant Trademark Case Law and Legislative Update: Alan S. Wernick Case Law Articles Part 2: IP Boots on the Ground (small group application: resolution of trademark infringement dispute) Case Study: Football Manufacturer and Sports Injury Medical Services provider Dispute Resolution Template

3 Contributors Stephen L. Grant Standley Law Group, Dublin Stephen Grant graduated from The Ohio State University with a degree in chemical engineering in While working as an engineer for a company in northeast Ohio, he attended the University of Akron, where he received the degree Juris Doctor cum laude. Steve has been actively involved in intellectual property matters since he was registered to practice in the United States Patent and Trademark Office in Although he focuses his practice in the Patent and Trademark Office, he is admitted to practice in the Supreme Court of Ohio, the US District Court for the Northern District of Ohio and the US Court of Appeals for the Federal Circuit. After practicing law for 15 years in northeast Ohio, Steve moved to central Ohio and joined Standley Law Group of Dublin, OH, in Steve has taught courses in copyright, patent, intellectual property, and art law as an adjunct professor at the University of Akron School of Law, the Pettit School of Law at Ohio Northern University, and the Moritz College of Law at The Ohio State University. He currently is an adjunct professor at the Capital University School of Law, where he teaches intellectual property law and patent law. He is a frequent speaker at continuing legal education seminars and a regular contributor to the Ohio State Bar Association Intellectual Property Section newsletter. Steve is the incoming chair of the Ohio State Bar Association Intellectual Property Law Section. Alan S. Wernick FisherBroyles, Chicago Mr. Wernick, a partner at FisherBroyles, LLP, and a member of the bars of IL, NY, OH, and DC, brings more than 30 years of experience focused almost exclusively on technology, intellectual property, data privacy/security transactions, and related legal matters. He has extensive contract negotiating and drafting experience, and has also served as an arbitrator/mediator for more than 30 years. That experience, coupled with a background in computer programming, technology and accounting, enables him to provide practical strategic advice and realistic risk assessments. His nationally recognized practice since 1982 focuses on providing sensible and tactical legal advice to clients on significant transactions in information technology, electronic commerce, intellectual property, data privacy/security transactions, and dispute management. Mr. Wernick s experience includes virtually every type of information technology contract and transaction, as well as publishing and media distribution agreements. His representation of clients includes Fortune 100 and Fortune 500 clients, many middle market businesses, and start-ups, spanning a wide range of industries and disciplines, including technology and related services, financial services and insurance, health care, retail, manufacturing, publishing, libraries, professional services providers, trade associations, universities, and media (print and digital) companies. He serves as a counselor and advocate for his clients in the management and resolution of a wide range of legal disputes, including analysis of potential risks, dispute avoidance, negotiation of settlements, and guidance through litigation, appeals, and the arbitration/mediation processes. A frequent lecturer and writer, his recognitions include being listed as a Martindale-Hubbell AV rated attorney, being included in The International Who s Who of Internet & e-commerce Lawyers, and being listed as a Leading Lawyer in Computer & Technology Law. Since 1984 he has served as an arbitrator on many panels involved with technology user/vendor disputes, IP, and/or licensing disputes. From this perspective, he has been able to observe how other parties put technology and intellectual property

4 deals together, how they fall apart, and how other lawyers do their lawyering. Mr. Wernick s professional activities include serving on Advisory Boards for publications including the Wolters Kluwer Guide to Computer Law, as a member of the Alumni Board for the Fisher College of Business at The Ohio State University, and as a Fellow at the Ponemon Institute. Mr. Wernick is a member of the American Bar Association (and a past editor of the e-newsletter for the Cyberspace Law Committee of the Business Section), the Ohio State Bar Association (where he was the founding chairman of the Digital Technology Law Committee), and the Northbrook Chamber of Commerce. His phone number is and is AWernick@FisherBroyles.com. LinkedIn: Barbara Varone Technology Commercialization and IP Manager, Ohio University, Athens At OU, Ms. Varone is responsible for the capture, maturation, processing and commercialization of all university developed intellectual property. Conducts due diligences on potential licenses, including review of business and marketing plans for viability. Responsible to draft and negotiate term sheets and agreements for a variety of contractual instruments. Educates and counsels university faculty and staff related to Intellectual Property and technology commercialization processes, policies, and procedures. Her experience encompasses all phases of patent, trademark and copyright practice with emphasis on patent preparation, prosecution and counseling. Dr. Sandra J. Dickinson, Esq. Attorney at Law; Columbus Dr. Dickinson formerly served as in-house counsel and corporate secretary for a nationally-recognized architecture firm, and has in-depth transactional and dispute resolution experience in the construction industry. During her 17 years of practicing business law, she has worked with both for-profit and nonprofit organizations at all stages of the business life cycle from startup and formation, through growth, to windup and dissolution. Her experience covers a broad range of matters including governance, regulatory compliance, contract management, risk management and insurance, feasibility analysis and business planning, shareholder relations, merger & acquisition, and documentation and information systems management. She has served as executive director of a nonprofit entrepreneurial education organization and taught numerous education law and business law courses through OSU, Franklin, and CSCC. Dr. Dickinson is member of the Ohio State bar Association and the Corporate Counsel Section Council.

5 INTELLECTUAL PROPERTY BOOTCAMP: WHERE CHANGE IS WHAT STAYS THE SAME (SUBSTANTIVE LAW, PART 1) THE CHANGING (?) PATENT DEMAND LETTER Stephen L. Grant Standley Law Group, Dublin, OH I. ASSESSING THE THREAT A. Assess the letter 1. Does the letter refer to a specific patent or a specific published patent application? 2. Does the letter refer to a specific product produced or a specific method practiced? B. Assess the patent 1. When did the patent issue? If a published application, when was it published? 2. Is there a clear nexus between the owner of the patent and the plaintiff? 3. Review the claims of the patent. Do you possibly infringe? 4. How long until the patent expires? 5. Has this patent been the basis of other suits? 6. Do you need a non-infringement opinion? C. Assess the opponent 1. Traditional competitor a. Threat is aimed at a core technology b. Generally aimed at technology cross-license or injunctive relief c. Generally premised on continued existence after resolution 2. The Patent Troll a. Potential plaintiff is a supplier or a non-related entity b. Aimed at a peripheral or business operation technology c. Why does this plaintiff own the patent? d. Generally aimed at a monetary settlement

6 II. DEFENSE STRATEGIES A. Do you have possible defense protection from: 1. general business insurance 2. warranty 3. indemnification 4. hold harmless B. Invalidity as a counterclaim in the courts 1. Federal Circuit Court of Appeals is the reviewing court on appeal 2. Recent Fed. Cir. cases have been resulting in narrower claim constructions, especially with older patents ( ) 3. Review standard is de novo review of claim construction C. Subject matter eligibility computer, business methods very tightly scrutinized D. Prior user defense E. Increased availability of attorney fees F. Count your chips III. ATTACK STRATEGIES A. Monitor patent publications of your competitors and suppliers B. Preissuance submissions 1. can be used in the case of some (see below) pending applications 2. limited to written documents 3. can be done anonymously (submitter s name will be known) 4. filing deadline formula: a. determine later of: i. six months after publication date; ii. date of first Office Action making claim rejections b. determine allowance date c. submission deadline is the earlier of: a or b C. Litigation in the Patent and Trademark Office 1. Central Re-Examination Unit amended claims can only be narrowed

7 a. Inter partes Re-examination no longer available b. Ex parte Re-examination i. Patent owner initiated ii. Third party initiated 2. Patent Trial and Appeal Board ( PTAB ) amendments can only narrow the claims A. Inter partes Review B. Covered Business Methods C. Post-Grant Review 3. Characteristics A. Preponderance of evidence B. No presumption of validity C. Patent owner has opportunity to amend claims, but doing so may trigger intervening rights D. fact-finding of the PTAB reviewed under the Administrative Procedures Act (APA) standard of abuse of discretion E. no attorney fees?

8 INTELLECTUAL PROPERTY BOOTCAMP: WHERE CHANGE IS, WHAT STAYS THE SAME (SUBSTANTIVE LAW, PART 1) SPONSORED BY THE OSBA CORPORATE COUNSEL SECTION & INTELLECTUAL PROPERTY LAW SECTION TRADEMARK CASE LAW & LEGISLATIVE UPDATE ADVANCED LEVEL BY ALAN S. WERNICK, ESQ.* PARTNER, FISHERBROYLES, LLP *ADMITTED TO PRACTICE IN IL, NY, OH, & DC LinkedIn: 1. The cost of a 2(d) or 2(e)(1) refusal in the USPTO trademark registration process. 2. The 2(d) refusal likelihood of confusion. a. What is a 2(d) refusal? b. What are elements of a response to a 2(d) refusal? i. Analysis is fact dependent. ii. Marketplace dynamics Who are the consumers? What are the trade channels? iii. TMEP et seq. c. Example of cases that may be cited in support of a 2(d) objection may include, without limitation: i. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), the court listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d). ii. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1355, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011); iii. In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003). d. Example of cases that may be cited against a 2(d) objection may include, without limitation: i. Embarcadero Technologies, Inc., v. RStudio, Inc., 2013 TTAB LEXIS 6 at *33; 105 U.S.P.Q.2D 1825 (2013); ii. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). COPYRIGHT 2014 ALAN S. WERNICK. ALAN@WERNICK.COM. LINKEDIN: PAGE 1 OF 2

9 3. The 2(e)(1) refusal mark is merely descriptive. a. What is a 2(e)(1) refusal? b. What are elements of a response to a 2(e)(1) refusal? i. Analysis is fact dependent. ii. Suggestive vs. merely descriptive. iii. TMEP (b). iv. TMEP (d). c. Example of cases that may be cited in support of a 2(e)(1) objection may include, without limitation: i. In re Hercules Fasteners, Inc., 203 F.2d 753, 97 USPQ 355 (C.C.P.A. 1953) ( FASTIE, phonetic spelling of fast tie ); ii. In re Carlson, 91 USPQ2d 1198 (TTAB 2009) ( URBANHOUZING phonetic spelling of urban and housing ); and iii. In re The State Chemical Manufacturing Co., 225 USPQ 687 (TTAB 1985) (holding FOM, phonetic spelling of foam ). 4. Cybersquatting and trademarks. a. What is cybersquatting? b. What options does a trademark owner have against a cybersquatter? c. Recent case law developments. i. Pensacola Motor Sales, Inc. v Eastern Shore Toyota, LLC, et al., 2012 U.S. App. LEXIS (USCA 11 th Circuit). 5. Uniform Domain-Name Dispute Resolution Policy ( UDRP ). a. What is the UDRP? b. Pros and cons of using the UDRP. 6. Internet Corporation for Assigned Names and Numbers ( ICANN ) a. March 14, 2014: Department of Commerce announced that it will give up its last bit of control of the Internet Corporation for Assigned Names and Numbers (ICANN) in i. How will this impact the freedom of the Internet? ii. What will the impact be on trademark owners? COPYRIGHT 2014 ALAN S. WERNICK. ALAN@WERNICK.COM. LINKEDIN: PAGE 2 OF 2

10 Page 1 Caution As of: Mar 24, 2014 IN THE MATTER OF THE APPLICATION OF E.I. DuPONT DeNEMOURS & CO. (ASSIGNEE OF HORIZON INDUSTRIES CORPORATION) Patent Appeal No United States Court of Customs and Patent Appeals 476 F.2d 1357; 1973 CCPA LEXIS 363; 177 U.S.P.Q. (BNA) 563 May 3, 1973 PRIOR HISTORY: [**1] Serial No. 307,711. CASE SUMMARY: PROCEDURAL POSTURE: Appellant sought review of a decision by the Trademark Trial and Appeal Board affirming the refusal to register appellant's trademark for a polishing, glazing, and cleaning agent for automobiles, under section 2(d) of the Lanham Act, 15 U.S.C.S. 1052(d). OVERVIEW: Appellant sought review of a decision affirming a refusal to register appellant's mark for a cleaning agent for use on automobiles, under section 2(d) of the Lanham Act, 15 U.S.C.S. 1052(d), on the basis of likelihood of confusion with another company's registered mark for an all-purpose detergent. Appellant purchased the other company's mark for the automobile-cleansing product, signing an agreement designed to avoid conflict, with the other company giving up the use of the mark in appellant's market and vice-versa. The examiner, aware of the assignment and agreement, nonetheless refused registration, and the board affirmed, holding that despite the agreement there was a likelihood of confusion, mistake or deception between the marks. The appellate court held, after reviewing the entire record, that confusion was not likely. The court reasoned that the assignment of the mark and agreement was more than mere consent and that appellant's application was rejected without proper consideration of all the evidence, including the agreement. OUTCOME: The Board's decision was reversed because the Board did not give proper consideration to the agreement between appellant and the other company on the use of the mark in their respective markets. LexisNexis(R) Headnotes Patent Law > Jurisdiction & Review > Subject Matter Jurisdiction > Appeals Trademark Law > Likelihood of Confusion > Consumer Confusion > General Overview Trademark Law > Protection of Rights > Registration > Principal Register [HN1] See 15 U.S.C.S. 1052(d). Patent Law > Jurisdiction & Review > Subject Matter Jurisdiction > Appeals Trademark Law > Likelihood of Confusion > Consumer Confusion > General Overview [HN2] The ultimate question of the likelihood of consumer confusion has been termed a question of fact. Contracts Law > Sales of Goods > General Overview

11 476 F.2d 1357, *; 1973 CCPA LEXIS 363, **; 177 U.S.P.Q. (BNA) 563 Page 2 Trademark Law > Likelihood of Confusion > Similarity > Appearance, Meaning & Sound > General Overview Trademark Law > Protection of Rights > Registration > Principal Register [HN3] In testing for likelihood of confusion under 15 U.S.C.S 1052(d), the following, when of record, must be considered: (1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression; (2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use; (3) The similarity or dissimilarity of established, likely-to-continue trade channels; (4) The conditions under which and buyers to whom sales are made, i.e. "impulse" vs. careful, sophisticated purchasing; (5) The fame of the prior mark (sales, advertising, length of use); (6) The number and nature of similar marks in use on similar goods; (7) The nature and extent of any actual confusion; (8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion. Civil Procedure > Pleading & Practice > Defenses, Demurrers & Objections > Affirmative Defenses > Laches Patent Law > Inequitable Conduct > General Overview Trademark Law > Protection of Rights > Registration > Principal Register [HN4] In testing for likelihood of confusion under 15 U.S.C.S 1052(d), the following, when of record, must be considered: (9) The variety of goods on which a mark is or is not used; (10) The market interface between applicant and the owner of a prior mark: (a) a mere "consent" to register or use; (b) agreement provisions designed to preclude confusion, i.e. limitations on continued use of the marks by each party; (c) assignment of mark, application, registration and good will of the related business; (d) laches and estoppel attributable to owner of prior mark and indicative of lack of confusion; (11) The extent to which applicant has a right to exclude others from use of its mark on its goods; (12) The extent of potential confusion, i.e., whether de minimis or substantial; (13) Any other established fact probative of the effect of use. OPINION BY: MARKEY OPINION [*1359] MARKEY, Chief Judge. This appeal is from the decision of the Trademark Trial and Appeal Board, 166 USPQ 351 (1970), affirming a refusal to register DuPont's mark RALLY for a combination polishing, glazing and cleaning agent for use on automobiles 1 on the basis of likelihood of confusion under section 2(d) of the Lanham Act with Horizon's registered mark RALLY for an all-purpose detergent. 2 We reverse. 1 Serial No. 307,711, filed September 19, Reg. No. 675,713, issued March 17, The application now before us was originally filed by Horizon. DuPont had earlier filed for registration of RALLY for a combination wax and cleaning agent for automobiles. 3 That application was refused in view of Horizon's registration. DuPont appealed and the board affirmed. 4 3 Serial No. 270,842, filed May 8, Decision of Trademark Trial and Appeal Board, abstracted at 160 USPQ 830 (1968). While its appeal was pending, DuPont purchased Horizon's mark for the automobile product, the present application and the good will of that business. Because Horizon retained RALLY for all-purpose detergent, [**2] an agreement designed to avoid conflict was entered into on the same day. Boundaries of use of the marks were established, permitting the sale of products "incidentally usable" in the other party's market but prohibiting any promotion as "especially suited for use in such market." DuPont's realm was the "automotive aftermarket." Horizon's encompassed the "commercial building or household market." The examiner, aware of the assignment and agreement, nonetheless refused registration, citing Horizon's registration and describing the issue as "ruled upon" in the board's earlier decision. The board affirmed, holding: It is our opinion that despite any agreement between the parties the public interest cannot be ignored, and when the goods of the parties are as [*1360] closely related as those here involved, their sale under the identical mark "RALLY" would be likely to result in confusion, mistake, or deception. cf. In re Avedis Zildjian Co., 157 USPQ 517 (CCPA, 1968); and In re Continental Baking Company, 156 USPQ 514 (CCPA, 1968). * * * The mere fact that registrant may have precluded itself from selling an automobile cleaner under the mark "RALLY" does not overcome the likelihood [**3] of confusion as set forth in Section 2(d) of the Trademark Statute. OPINION Our decision turns on the application of Sec. 2(d) to the facts before us. DuPont, having an unquestioned right to use, argues that the "right to register follows the right to use," particularly where the right on its goods is

12 476 F.2d 1357, *; 1973 CCPA LEXIS 363, **; 177 U.S.P.Q. (BNA) 563 Page 3 exclusive, Horizon having given up use of the mark in DuPont's market. The Patent Office solicitor denies such a broad relationship in the rights to use and register and emphasizes the duty of the Patent Office "to guard the public interest" against confusion. Both parties have cited prior opinions of this court. We are thus presented with a welcomed opportunity to set forth a reliable guide for decision-making in cases involving Sec. 2(d). It need hardly be said that concepts expressed in our prior opinions and inconsistent with what we say here may be considered no longer viable in this court. The Statute We begin with interpretation of the Lanham Act (Chapter 22, Title 15) as it applies here. The legislative history 5 of the Act as a whole describes its objectives as making registration "more liberal," dispensing with "mere technical prohibitions and arbitrary provisions" [**4] and modernizing the trademark statutes "so that they will conform to legitimate present-day business practice." The basic goal of the Act, which dealt with a good deal more than registration, was "the protection of trademarks, securing to the owner the good will of his business and protecting the public against spurious and falsely marked goods." 5 Accordingly, we consider the pre-lanham Act decisions 6 presented here to be inapt. 5 S. Rep. No. 1333, 79th Cong., 2d Sess. (1946) in U.S. Code Cong. Service, 79th Cong., 2d Sess. at (1946). 6 Skookum Packers Association v. Pacific Northwest Canning Co., 18 CCPA 792, 45 F.2d 912, 7 USPQ 143 (1930); Van Camp Sea Food Co., Inc. v. Westgate Sea Products Co., 18 CCPA 1311, 48 F.2d 950, 9 USPQ 417 (1931); Jacob Ries Bottling Works, Inc. v. The Coca-Cola Co., 31 CCPA 706, 138 F.2d 56, 59 USPQ 138 (1943). Sec. 2 (15 USC 1052), in pertinent part reads: [HN1] No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it * * * (d) consists of or comprises a mark which so resembles a mark registered [**5] in the Patent Office or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when applied to the goods of the applicant to cause confusion, or to cause mistake or to deceive: * * * Under the statute the Commissioner must refuse registration when convinced that confusion is likely because of concurrent use of the marks of an applicant and a prior user on their respective goods. The phrase "on account of its nature" in Sec. 2 clearly applies to the "resembles" element of Sec. 2(d). But the question of confusion is related not to the nature of the mark but to its effect "when applied to the goods of the applicant." The only relevant application is made in the marketplace. The words [*1361] "when applied" do not refer to a mental exercise, but to all of the known circumstances surrounding use of the mark. The Decisional Process [HN2] The ultimate question of the likelihood of consumer confusion has been termed a question of fact. Coca-Cola Company v. Snow Crest Beverages, Inc., 162 F.2d 280, 73 USPQ 518 (1st Cir. 1947), cert. den. 332 US 809, 75 USPQ 365 (1947). If labeled a mixed question or one of law, it is necessarily [**6] drawn from the probative facts in evidence. As so often said, each case must be decided on its own facts. There is no litmus rule which can provide a ready guide to all cases. [HN3] In testing for likelihood of confusion under Sec. 2(d), therefore, the following, when of record, must be considered: (1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. (2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use. (3) The similarity or dissimilarity of established, likely-to-continue trade channels. (4) The conditions under which and buyers to whom sales are made, i.e. "impulse" vs. careful, sophisticated purchasing. (5) The fame of the prior mark (sales, advertising, length of use). (6) The number and nature of similar marks in use on similar goods. (7) The nature and extent of any actual confusion. (8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion. [HN4] (9) The variety of goods on which a mark is or is not [**7] used (house mark, "family" mark, product mark).

13 476 F.2d 1357, *; 1973 CCPA LEXIS 363, **; 177 U.S.P.Q. (BNA) 563 Page 4 (10) The market interface between applicant and the owner of a prior mark: (a) a mere "consent" to register or use. (b) agreement provisions designed to preclude confusion, i.e. limitations on continued use of the marks by each party. (c) assignment of mark, application, registration and good will of the related business. (d) laches and estoppel attributable to owner of prior mark and indicative of lack of confusion. (11) The extent to which applicant has a right to exclude others from use of its mark on its goods. (12) The extent of potential confusion, i.e., whether de minimis or substantial. (13) Any other established fact probative of the effect of use. Where the Patent Office follows such process, 7 it is not abandoning its duty under Sec. 2(d) or allowing individuals to take the law into their own hands. Consideration of evidence emanating from the only place where confusion can occur, i.e. the marketplace, is not related to who decides but to the process of deciding. 7 See the decisions listed in "Appendix A" to Judge Smith's dissenting opinion in In re Continental Baking Co. at 55 CCPA 976, 390 F.2d 753, 156 USPQ 520. [**8] The reguired inquiry, though more sweeping, is not unlike that provided for in Patent Office Rule 2.41 wherein the applicant is specifically invited to submit all evidence, including letters from the trade or public, tending to show that the mark, otherwise merely descriptive, distinguishes the goods. The evidentiary elements are not listed above in order of merit. Each may [*1362] from case to case play a dominant role. In Schenley Distillers, Inc. v. General Cigar Co., Inc., 57 CCPA 1213, 427 F.2d 783, 166 USPQ 142 (1970), and in McKesson & Robbins, Inc.v. P. Lorillard Co., 120 USPQ 306 (TTAB 1959), element (9) led to a finding that confusion was unlikely when the same mark was used on a beverage and a tobacco product. In John Walker & Sons, Limited v. Tampa Cigar Company, Inc., 124 F.Supp. 254, 103 USPQ 21 (S.D. Fla. 1954), aff'd, 222 F.2d 460, 105 USPQ 351 (5th Cir. 1955) element (5) made confusion likely when the same mark was used on beverages and tobacco. See, also, Carling Brewing Company, Inc. v. Phillip Morris, Inc., 277 F.Supp. 326, 156 USPQ 70 (N.D. Ga. 1967) and Geo. A. Dickel Co. v. Stephano Brothers, 155 USPQ 744 (TTAB 1967) involving beverages and tobacco. [**9] We find no warrant, in the statute or elsewhere, for discarding any evidence bearing on the question of likelihood of confusion. Reasonable men may differ as to the weight to give specific evidentiary elements in a particular case. In one case it will indicate that confusion is unlikely; in the next it will not. In neither case is it helpful or necessary to inject broad maxims or references to "the public interest" which do not aid in deciding. Only the facts can do that. In every case turning on likelihood of confusion, it is the duty of the examiner, the board and this court to find, upon consideration of all the evidence, whether or not confusion appears likely. That determination ends the decisional process. Decision Applying the above criteria, and after a thorough review of the entire record, we are convinced that confusion is not likely. The agreement and assignment herein constitute far more than mere "consent." They play, in this case, a dominant role. The record of DuPont's original application, like so many, included only the application, specimens, reference mark and descriptions of goods. From these the examiner made a judgment, necessarily subjective [**10] and reguiring assumptions. The only facts were identical marks on "related" goods.confusion appeared likely and registration was refused. The present application, however, was rejected without proper consideration, in our view, of all the evidence. The examiner said the earlier decision had "ruled upon" the issue and referred to the "public interest" as though likelihood of confusion were established. The board, also citing the public interest, found confusion likely "despite any agreement." It has been said that agreement evidence may resolve "doubt," In re Harvey Aluminum (Inc.), 161 USPQ 366 (TTAB 1969) or may be useful when the issue is "debatable," In re Vim Corp., 161 USPQ 58 (TTAB 1969), but there are only two practical possibilities. Either there is no indication of likely confusion, in which case the registration promptly issues, or there is some indication that confusion may be likely. In the latter case, the question must remain open (i.e., "debatable") until any or all of the elements listed above have been reviewed and studied, the final decision being made on the basis of the entire record. In considering agreements, a naked "consent" may carry little weight. [**11] Absent more, the consenter may continue or expand his use. The consent may be based on ignorance or misconception of the law. The

14 476 F.2d 1357, *; 1973 CCPA LEXIS 363, **; 177 U.S.P.Q. (BNA) 563 Page 5 facts may show, on the other hand, that consent could exist only in the absence of any real likelihood of confusion. The weight to be given more detailed agreements of the type presented here should be substantial. It can be safely taken as fundamental that reputable businessmen-users of valuable trademarks have no interest in causing public confusion. The genius of the free competitive system is the paralleling of the interest of the entrepreneur and the consuming public so far a possible. Altruism aside, it is in his pecuniary interest, [*1363] indeed a matter of economic survival, that the businessman obtain and retain customers, the very purpose and function of a trademark, and that he avoid and preclude confusion. Millions of advertising dollars are spent daily for that precise purpose. The history of trademark litigation and the substantial body of law to which it relates demonstrate the businessman's alertness in seeking to enjoin confusion. In so doing he guards both his pocketbook and the public interest. Thus when those most [**12] familiar with use in the marketplace and most interested in precluding confusion enter agreements designed to avoid it, the scales of evidence are clearly tilted. It is at least difficult to maintain a subjective view that confusion will occur when those directly concerned say it won't. A mere assumption that confusion is likely will rarely prevail against uncontroverted evidence from those on the firing line that it is not. The parties here agreed to restrict themselves in effect to the general purpose cleaning market (Horizon) and the automobile market (DuPont). Horizon is subject to suit for breach of contract and infringement if it promotes its RALLY products for cleaning automobiles. DuPont can be sued if it promotes its RALLY products in general cleaning. The fact that the goods of one party "could be used" in the field of the other is too conjectural and too widely applicable to form the sole basis of decision, particularly where, as here, the parties have agreed to avoid the promotion of such cross-use. The mere fact of diverse marketing emphasis alone may not in every case preclude confusion. Without more, it may well be that purchasers active in both markets and [**13] familiar with products sold under a particular mark could attribute to the same source closely related goods sold under the same mark. The agreements herein, however, considered as a whole and notwithstanding certain phrases subject to contrary interpretation, evidence that confusion will be unlikely. As we read them, the very purpose and aim of the present agreements is the avoidance of public confusion.under provision 6 of the assignment the parties agreed "to take any further actions and execute any further agreements needed to carry out the spirit and intent of this agreement." The words of this court in a concurrent use proceeding, In re Beatrice Foods, Co., 57 CCPA 1302, 429 F.2d 466, 166 USPQ 431 (1970) are particularly apt: * * * there can be no better assurance of the absence of any likelihood of confusion, mistake or deception than the parties' promises to avoid any activity which might lead to such likelihood. It is reasonable to conclude that experienced businessmen fully and continuously alert to each others' products, labels, trade channels and advertising and parties to the agreements before us, will be quick to act against confusion. We cannot believe that Horizon [**14] would have sold its automotive business, assigned its mark and entered into the agreement or that DuPont would have accepted and paid for the assignment and entered into the agreement, if either thought for a moment that purchasers would seriously be confused as to source. Dollars were at stake. Decisions of men who stand to lose if wrong are normally more reliable than those of examiners and judges. We have no hesitancy in holding, therefore, under the facts of this case, that confusion is not likely to stem from concurrent use of RALLY by Horizon and DuPont on their respective goods under the terms of their agreement. Accordingly, the decision of the board must be reversed. From all of the foregoing, it can be seen that the arguments presented in this and prior cases regarding the effect of a right to use and the need for protection of the public interest against confusion provide of themselves inadequate guides in determining likelihood of confusion under Sec. 2(d). [*1364] Right to Use - Right to Register Decisional maxims like "the right to register follows the right to use," sometimes defended as "reflecting the realities of the marketplace," founder on their [**15] non-universality of application and the existence of Sec. 2(d). As attractive as that approach appears in In re National Distillers Products Co., 49 CCPA 854, 297 F.2d 941, 132 USPQ 271 (1962) and in the dissents in Ultra-White Company, Inc. v. Johnson Chemical Industries, Inc., 59 CCPA, 465 F.2d 891, 175 USPQ 166 (1972), In re Avedis Zildjian Co., 55 CCPA 1126, 394 F.2d 860, 157 USPQ 517 (1968) and In re Continental Baking Co., 55 CCPA 967, 390 F.2d 747, 156 USPQ 514 (1968), it is recognized as a goal and that the phrase "as nearly as possible" must be read into it. Clearly, a right to use is not a right to confuse. The rights to use and register are not identical. Alfred Dunhill of London, Inc. v. Dunhill Tailored Clothes, Inc., 49 CCPA 730, 293 F.2d 685, 130 USPQ 412 (1961), cert. den., 369 US 864,

15 476 F.2d 1357, *; 1973 CCPA LEXIS 363, **; 177 U.S.P.Q. (BNA) 563 Page USPQ 702 (1962). Many marks, including those described in Sec. 2(a), (b), and (c), merely descriptive terms and those on labels defective under other laws (Rule 2.69), might all be used but not registered. Although a naked right to use cannot always result in registration, the Act does intend, as we said above, that registration and use be coincident so far as possible. Post-Lanham [**16] Act opinions relating to Sec. 2(d) which maintain an iron curtain between the rights to use and register do not contribute to stability in the law. Treating those rights as totally divorced entities only perpetuates the "arbitrary provisions" respecting confusion that the Congress thought it was eliminating more than twenty-five years ago. The Public Interest Whether offered in response to a right-to-use argument or against any of the evidentiary considerations listed above, citation of "the public interest" as a basis for refusal of registration is a bootless cry. 8 We need add little to the shattering of that shibboleth in the concurring opinion in National Distillers, supra, and in the dissents in Ultra-White, Zildjian and Continental Baking, supra. Writers and scholars listed in those reported opinions have also shown the fallacy in the notion that the Patent Office is somehow guarding the public against confusion when it refuses a registration. After a likelihood of confusion is found (and the case thus decided) citation of the public interest is unnecessary. 8 We are aware, of course, of our part in encouraging this very cry. In re Continental Baking Co., above. [**17] The Patent Office does have a guardianship role under Sec. 2(d). It lies not in a negative, nay-saying of refusal alone, but in the protection of a mark by registering it and then rejecting later improper attempts, of which the registrant is unaware, to register it or a similar mark. Refusal to register cannot prevent confusion. At most, it might discourage further use. 9 Refusal can, under certain circumstances, encourage potential confusion. Absence of a registration of RALLY for auto cleansers in the present case may, for example, lead others to adopt and use that or a similar mark for auto cleansers. Granting a registration will not produce confusion. Use alone can do that and neither we nor the Patent Office can grant or deny a right to use. 9 That a rejected applicant might elect to abandon use, and thus reduce the potential for confusion, is a matter of the applicant's choice. Cf. Glenwood Laboratories, Inc. v. American Home Products Corp., 59 CCPA, 455 F.2d 1384, 173 USPQ 19 (1972). Presumably, everything the Patent Office and this court does is in the public interest. We find no place for "the guardianship of the public interest" as support for refusals [**18] to register under Sec. 2(d). [*1365] Conclusion What we have said under the heading "decisional process," supra, which has been in effect or in part followed on occasion in the past by this and other courts and by the Patent Office, and the elimination of considerations regarding right to use and the public interest should in time lead, we believe, to increased conformity of the register with the realities of use in the marketplace, and to the greater stability sought in the Act. REVERSED Baldwin, J., dissents.

16 Page 1 Caution As of: Mar 24, 2014 CITIGROUP INC., Appellant, v. CAPITAL CITY BANK GROUP, INC., Appellee UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT 637 F.3d 1344; 2011 U.S. App. LEXIS 6215; 98 U.S.P.Q.2D (BNA) 1253 March 28, 2011, Decided PRIOR HISTORY: [**1] Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board. (Opposition No ). Citigroup Inc. v. Capital City Bank Group, Inc., 2010 TTAB LEXIS 40 (Trademark Trial & App. Bd., Feb. 17, 2010) CASE SUMMARY: PROCEDURAL POSTURE: Appellant owner of registered trademarks containing CITIBANK filed an opposition to the registration of trademarks of appellee applicant containing CAPITAL CITY BANK alleging that there was a likelihood of confusion between the marks. The owner appealed the decision of the Trademark Trial and Appeal Board which denied the owner's opposition. OVERVIEW: The owner contended that the likelihood of confusion between the marks of the owner and the applicant was indicated by the fame of the owner's marks and the similarity of the parties' banking and financial services, trade channels, and customers. The court held that, although the owner's marks were clearly famous and the parties engaged in similar activities, no likelihood of confusion was shown since the parties' marks themselves were not similar and there was no indication of actual confusion. The marks were spelled differently, the applicant's marks used separate words rather than the compound word of the owner's marks, and the term "city bank" was frequently used in the banking industry as either part of a geographic name or as evoking a community bank. Further, the applicant's use of the word "capital" as the dominant element of its marks created a distinct look and sound from the owner's marks, and the applicants marks were dissimilar in appearance, sound, connotation, and commercial impression from the owner's marks. Also, despite significant overlap in the geographic markets in which both marks were used, there was no evidence of any actual confusion between the marks. OUTCOME: The decision denying the owner's opposition to registration of the applicant's marks was affirmed. LexisNexis(R) Headnotes Administrative Law > Judicial Review > Standards of Review > General Overview Administrative Law > Judicial Review > Standards of Review > De Novo Review Trademark Law > U.S. Trademark Trial & Appeal Board Proceedings > Oppositions > Grounds [HN1] A court must affirm the Trademark Trial and Appeal Board's factual determinations unless they are arbitrary, capricious, an abuse of discretion, or unsupported by substantial evidence. The Board's ultimate conclusion in a Lanham Act 2(d) (15 U.S.C.S. 1052(d)) analysis of whether a likelihood of confusion exists is an issue of law based on the underlying facts and is reviewed de novo by the court.

17 637 F.3d 1344, *; 2011 U.S. App. LEXIS 6215, **; 98 U.S.P.Q.2D (BNA) 1253 Page 2 Trademark Law > Federal Unfair Competition Law > Lanham Act > Scope Trademark Law > Likelihood of Confusion > Similarity > Commercial Impression [HN2] Under 2(d) of the Lanham Act, registration of a mark must be refused if it so resembles a mark registered in the U.S. Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive. 15 U.S.C.S. 1052(d). "Standard character" or "typed" registrations are federal mark registrations that make no claim to any particular font style, color, or size of display and, thus, are not limited to any particular presentation. Whether a likelihood of confusion exists between an applied-for mark and a previously registered mark is determined on a case-by-case basis, aided by application of the DuPont factors. Trademark Law > Likelihood of Confusion > General Overview Trademark Law > U.S. Trademark Trial & Appeal Board Proceedings > Oppositions > Grounds [HN5] Not all of the DuPont factors are necessarily relevant or of equal weight in a given case concerning likelihood of confusion between trademarks, and any one of the factors may control a particular case. Six of the thirteen DuPont factors are the following: (1) the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression; (2) the similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use; (3) the similarity or dissimilarity of established, likely-to-continue trade channels; (4) the buyers to whom sales are made; (5) the fame of the prior mark (sales, advertising, length of use); (7) the nature and extent of any actual confusion. The Trademark Trial and Appeal Board is not required to discuss every DuPont factor and may find a single factor dispositive. Trademark Law > Dilution of Famous Marks > General Overview [HN6] A famous mark has extensive public recognition and renown. Fame, if it exists, plays a dominant role in the likelihood of confusion analysis because famous marks enjoy a broad scope of protection or exclusivity of use. The fame of a mark may be measured indirectly, among other things, by the volume of sales and advertising expenditures of the goods traveling under the mark, and by the length of time those indicia of commercial awareness have been evident. Administrative Law > Judicial Review > Standards of Review > Substantial Evidence [HN3] Evidence is substantial if a reasonable person might find that the evidentiary record supports an agency's conclusion. The agency's finding may be supported by substantial evidence even if two inconsistent conclusions can be drawn from the evidence. Trademark Law > Protection of Rights > Registration > Degree of Protection [HN4] If a registrant of a trademark obtains a standard character mark without claim to any particular font style, size, or color, the registrant is entitled to depictions of the standard character mark regardless of font style, size, or color, not merely reasonable manners of depicting its standard character mark. Trademark Law > Likelihood of Confusion > Similarity > Commercial Impression Trademark Law > Likelihood of Confusion > Similarity > Relatedness [HN7] When trademarks would appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likely confusion declines. COUNSEL: MICHAEL F CLAYTON, Morgan, Lewis & Bockius LLP, of Washington, DC, argued for appellant. With him on the brief were J. KEVIN FEE and DANIEL S. MARKS. JOSEPH W. BERENATO, III, Berenato & White, LLC, of Bethesda, Maryland argued for appellee. With him on the brief was DAVID S. TAYLOR. JUDGES: Before RADER, Chief Judge, GAJARSA, and PROST, Circuit Judges. OPINION BY: GAJARSA OPINION [*1347] GAJARSA, Circuit Judge. This is an appeal from a final decision of the Trademark Trial and Appeal Board ("T.T.A.B" or "Board") denying the opposition by Citigroup Inc. ("Citigroup") to four standard character service mark applications filed by Capital City Bank ("CCB"). Citigroup Inc. v. Capital City Bank Grp., Inc., 94 U.S.P.Q.2d 1645 (T.T.A.B. 2010). For the reasons dis-

18 637 F.3d 1344, *; 2011 U.S. App. LEXIS 6215, **; 98 U.S.P.Q.2D (BNA) 1253 Page 3 cussed below, we affirm the T.T.A.B.'s denial of Citigroup's opposition to the registration of CCB's service mark. BACKGROUND Appellant Citigroup provides commercial and consumer financial services. Citigroup owns multiple federally registered marks for financial services containing the CITI prefix, many of which are incontestable under 15 U.S.C See, e.g., CITI, U.S. Reg. No. 1,181,467 (1981); CITICORP, U.S. [**2] Reg. No. 982,066 (1974); CITIBANK, U.S. Reg. No. 691,815 (1960). Citigroup began using the name Citibank in 1897, although its official names from the 1800s through the late 1970s included City Bank of New York, National City Bank, and First National City Bank. J.A. 32. In 1976, Citigroup legally changed its name from First National City Bank to Citibank, N.A. [*1348] Third-party brand valuation surveys, including by Interbrand and Millward Brown, indicate that the CITIBANK brand is one of the most valuable brands in the world. Citigroup, 94 U.S.P.Q.2d at Courts have deemed the CITIBANK mark "famous" for trademark analysis purposes. See, e.g., Citibank, N.A. v. City Bank of San Francisco, 206 U.S.P.Q. 997, 1004 (N.D. Cal. 1980). Citigroup seeks to keep the federal registry and marketplace free of marks it considers confusingly similar to its marks through cease-and-desist letters, opposition proceedings, negotiations, and lawsuits. Appellee CCB was formed in 1895 in Florida's state capital, Tallahassee. CCB has a multi-state presence including sixty-nine branches in Florida, Georgia, and Alabama; automated teller machines; and a website that serves customers in all fifty states. In 1995, [**3] CCB filed three service mark applications for banking services. Each contained the phrase "CAPITAL CITY BANK" along with a design consisting of a five-pointed star inside of a circle. See, e.g., U.S. Reg. No. 2,007,889 (1996): [SEE ILLUSTRATION IN ORIGINA] Beginning in June 2006, CCB filed a series of four new applications: CAPITAL CITY BANK, Serial No. 78/906,010 (filed June 12, 2006); CAPITAL CITY BANK INVESTMENTS, Serial No. 78/909,113 (filed June 15, 2006); CAPITAL CITY BANK GROWING BUSINESS, Serial No. 78/930,103 (filed July 14, 2006); and CAPITAL CITY BANC INVESTMENTS, Serial No. 78/934,941 (filed July 21, 2006). Unlike the prior applications, these applications contained standard character drawings and were, therefore, not limited to any particular font style, size, color, or design element. On May 21, 2007, Citigroup filed a timely Notice of Opposition with the T.T.A.B. against each of CCB's standard character applications. Citigroup based its opposition on two grounds: the likelihood of confusion between CCB's applications and Citigroup's marks and the likelihood of dilution by blurring. CCB denied all of the claims alleged by Citigroup. In its opinion, the T.T.A.B. treated all [**4] four applications as one and evaluated the likelihood of confusion under the thirteen factors listed in Application of E.I. DuPont De Nemours & Co., 476 F.2d 1357, 1362 (CCPA 1973) ("DuPont"). Citigroup, 94 U.S.P.Q.2d at The T.T.A.B. found that four of the six relevant likelihood of confusion factors favored Citigroup: (1) the fame of the CITIBANK mark; (2) the similarity of Citigroup's services and the services described in the applications; (3) the similarity of Citigroup and CCB's trade channels; and (4) the similarity of their consumers. Id. at The T.T.A.B. found that two of the DuPont factors favored CCB: (1) the nature and extent of any actual confusion and (2) the similarity of the marks. Id. at After weighing the factors, the T.T.A.B. determined that neither a likelihood of confusion nor dilution would arise from the registration of CCB's marks and dismissed Citigroup's opposition. Id. at On appeal, Citigroup does not address any dilution issues because it contends that "proper consideration of all the reasonable manners of display demonstrates a clear likelihood of confusion" and "this Court [*1349] need not consider the issue of dilution to reverse [**5] the Board's dismissal below." Appellant's Br. 11. This court, therefore, will consider only the issue of likelihood of confusion between CCB's applications and Citigroup's marks. We have jurisdiction over the timely filed appeal pursuant to 15 U.S.C. 1071(a) and 28 U.S.C. 1295(a)(4)(B). DISCUSSION [HN1] We must affirm the T.T.A.B.'s factual determinations unless they are arbitrary, capricious, an abuse of discretion, or unsupported by substantial evidence. Recot Inc. v. M.C. Becton, 214 F.3d 1322, 1327 (Fed. Cir. 2000). The T.T.A.B.'s ultimate conclusion in a Lanham Act section 2(d) (15 U.S.C. 1052(d)) analysis of whether a likelihood of confusion exists is an issue of law based on the underlying facts and is reviewed de novo by this court. In re Save Venice New York Inc., 259 F.3d 1346, (Fed. Cir. 2001). [HN2] Under section 2(d) of the Lanham Act, registration of a mark must be refused if it so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the

19 637 F.3d 1344, *; 2011 U.S. App. LEXIS 6215, **; 98 U.S.P.Q.2D (BNA) 1253 Page 4 United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive. 15 U.S.C. 1052(d). [**6] "Standard character" or "typed" registrations are federal mark registrations that make no claim to any particular font style, color, or size of display and, thus, are not limited to any particular presentation. See, e.g., 37 C.F.R. 2.52; Phillips Petroleum Co. v. C.J. Webb, Inc., 442 F.2d 1376, 1378, 58 C.C.P.A (CCPA 1971). Whether a likelihood of confusion exists between an applied-for mark and a previously registered mark is determined on a case-by-case basis, aided by application of the DuPont factors. On-Line Careline v. Am. Online, 229 F.3d 1080, 1085 (Fed. Cir. 2000). First, we examine the T.T.A.B.'s analysis of the two DuPont factors contested on appeal: the similarity of the marks and the "nature and extent of any actual confusion." Then we conclude the legal analysis by balancing the DuPont factors and assessing the likelihood of confusion between the parties' respective marks. I. The T.T.A.B.'s factual findings regarding the similarity of the marks and the "nature and extent of any actual confusion" are supported by substantial record evidence. [HN3] Evidence is substantial if "a reasonable person might find that the evidentiary record supports the agency's conclusion." On-Line Careline, 229 F.3d at [**7] The T.T.A.B's finding may be supported by substantial evidence even if two inconsistent conclusions can be drawn from the evidence. Id. at A. The T.T.A.B. determined that the DuPont factor assessing the "similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression" favored CCB. Citigroup, 94 U.S.P.Q.2d at Upon examination of the record as a whole, we conclude that substantial evidence supports the T.T.A.B.'s factual finding that CCB's marks are not similar to Citigroup's marks. The evidentiary record details the distinctive spellings of the marks at issue, [*1350] third-party usage of the phrase "City Bank" in the financial services industry, and the role of the word "Capital" in distinguishing CCB's marks from Citigroup's marks. We address each of these in turn. CCB's marks are spelled differently than Citigroup's marks. This court has found mark dissimilarity when the words are spelled differently. See, e.g., Champagne Louis Roederer, S.A. v. Delicato Vineyards, in which this court found mark dissimilarity between CRISTAL and CRYSTAL CREEK. 148 F.3d 1373, (Fed. Cir. 1998). Citigroup's marks are single words [**8] and all feature the C-I-T-I spelling. According to the record, CCB has never displayed its marks with "City" spelled C-I-T-I or with the words "City Bank" as a single compound word. J.A As the T.T.A.B. explained, "CAPITAL CITY BANK does not share the characteristics of the CITIBANK family of marks because (1) it starts with the word 'Capital,' not CITIBANK, (2) 'City Bank' is two words, not a compound word, and (3) applicant's 'City' is spelled with a 'y,' not an 'i.'" Citigroup, 94 U.S.P.Q.2d at Similarly, in Citigroup Inc. v. City Holding Co., a district court found that the "I/Y distinction is critical, though the marks are aurally identical." 171 F. Supp. 2d 333, 345 (S.D.N.Y. 2003). That court ruled that "the distinctive quality [i.e., spelling] of the CITI mark, the extent of usage of both marks, both in time and geography... demonstrate that the aural identity is overcome by the written differentiation." Id. at 349. The district court explained that the "I" misspelling is the foundation of the CITI marks' distinctiveness and the basis of Citigroup's trademark protection policy. Id. at 347. We agree with the reasoning of that court. Citigroup itself distinguishes [**9] its C-I-T-I spelling from marks containing the word "City." When seeking to register the mark CitiMortgage in Ohio, Citigroup represented to the Ohio Secretary of State that "[t]he public will understand that CitiMortgage, Inc. is associated with and part of the Citigroup family." Id. at It also maintained that "CitiMortgage" would not cause confusion with the senior mark "City Mortgage." Id. Citigroup also noted that "because 'City' is a commonly used prefix for financial services corporations, Citigroup and its many subdivisions that bear the famous CITI prefix have coexisted with many 'City' entities for years in virtually every jurisdiction." Id. In addition to distinct spellings, the T.T.A.B. also relied on the frequent usage of the phrase "City Bank" in the banking industry. Citigroup, 94 U.S.P.Q.2d at The Board found that consumers view CITY as either part of a geographic name or as evoking a community bank. Id. In Citigroup Inc., v. City Holding Co., the District Court for the Southern District of New York listed over twenty third-party banks using marks containing CITY and BANK as evidence of third-party use in the field of financial services. 171 F. Supp. 2d at [**10] Citigroup itself concedes that it does not pursue third-party uses of marks containing the phrase "CITY BANK" that include a distinguishing logo, designate a

20 637 F.3d 1344, *; 2011 U.S. App. LEXIS 6215, **; 98 U.S.P.Q.2D (BNA) 1253 Page 5 specific location, or occur only within a single community. Appellants Br. 19. In its opinion, the T.T.A.B. considered forty different websites for banking entities whose names contained the term "City Bank," including Surf City Bank, Gate City Bank, Lake City Bank, and Hastings City Bank. Citigroup, 94 U.S.P.Q.2d at Several of these banks present [*1351] their "City Bank" marks with the words "City Bank" on a separate line below the remainder of the mark. The T.T.A.B. found that "[n]otwithstanding the various uses of 'City Bank,' these uses do not diminish the strength of [Citigroup]'s mark." Id. at Citigroup contends that registration of standard character marks containing the phrase "CITY BANK" could make its efforts to police the federal registry and preserve the strength of the CITIBANK mark more difficult. Appellant's Reply Br. 26. Citigroup does not object to CCB registering "CAPITAL CITY" in standard characters. Appellant's Br. 4. Denying CCB's registration would not prevent CCB from achieving the same commercial [**11] effect. If CCB obtained the mark CAP- ITAL CITY in standard character form and combined it with the term BANK, which the T.T.A.B. deemed generic, Citigroup, 94 U.S.P.Q.2d at 1664, it could effectively achieve the standard character mark it seeks, CAPITAL CITY BANK. Additionally, the federal registry is not free of third-party standard character marks containing the phrase CITY BANK. Surf City Bank's standard character mark SURF CITY BANK is federally registered as U.S. Reg. No. 3,240,918 (2007). 94 U.S.P.Q.2d at The only difference between the SURF CITY BANK mark and CAPITAL CITY BANK is the substitution of the word CAPITAL. The T.T.A.B. also examined the role of the word "Capital" in distinguishing CCB's marks from Citigroup's marks. As explained in Kangol Ltd. v. KangaROOS U.S.A., Inc., "a particular feature of a mark may be more obvious or dominant." 974 F.2d 161, 163 (Fed. Cir. 1992). The T.T.A.B. determined that "'CAPITAL CITY' is the dominant element in creating the commercial impression engendered by [CCB]'s marks" because it is located at the beginning of the marks. Citigroup, 94 U.S.P.Q.2d at As the first word of the mark, the Board determined that "Capital" gives [**12] CCB's marks a distinct look and sound from Citigroup's marks. Further, CCB's applications disclaim BANK and when a mark consists of two or more words, some of which are disclaimed, the word not disclaimed is generally regarded as the dominant or critical term. In re Dixie Rests. Inc., 105 F.3d 1405, 1407 (Fed. Cir. 1997) (finding "delta" the dominant part of the mark "THE DELTA CAFÉ because CAFÉ was disclaimed"). Although "Capital City" is the dominant part of the mark, Citigroup argues that because "capital is a commonly understood financial term," it "does little, if anything to reduce the similarities between the marks" and "[c]ustomers are likely to assume that capital... CITY BANK is a financial service offered by Citigroup." Appellant's Br This argument is unpersuasive. "Capital" is not merely a descriptive financial term--it has geographic connotations and, here, refers to Tallahassee, the capital of Florida. Citigroup cites In re Mighty Leaf Tea in support of its argument that the presence of an additional term in a mark, such as CAPITAL, does not necessarily eliminate the likelihood of confusion. 601 F.3d 1342, 1348 (Fed. Cir. 2010). In Mighty Leaf Tea, this court affirmed [**13] the T.T.A.B.'s rejection of Mighty Leaf Tea's application for registration of the mark "ML" in standard character form for use with personal care and skin care products because the mark "ML MARK LEES" was already registered for skin care products. Id. In response to the rejection, Mighty Leaf Tea argued that it sought to register the mark [*1352] ML in standard character form, as distinguished from the already registered stylized mark, and contended that "the existence of many similar marks showed the weakness of the registered marks, such that consumers would look to fine distinctions to distinguish the sources of goods." Id. at Mighty Leaf Tea submitted evidence of several third-party registrations and pending applications that included the letters "ML" along with other letters. Id. This court held that the Board's findings that the goods were identical in part and that consumer confusion was likely between ML and ML MARK LEES were supported by substantial evidence. Id. at The third-party registrations including the letters "ML" did "not render the marks so similar and weak that the public would be alert to small differences," particularly when there was no evidence of third-party [**14] use of any of the cited marks. Id. at Additionally, in that case, "[a]pplicant's mark would appear to prospective purchasers to be a shortened form of registrants' mark." Id. at The facts of Mighty Leaf Tea differ from this case in some critical ways. In Mighty Leaf Tea, the exact same "ML" mark was already in use, whereas here, CCB's mark is spelled differently, is not a compound word, and is not a short or long form of Citigroup's existing marks. Also, here, third-party usage of marks ending in "City Bank" suggests that the public is sensitive to differences in the first word of the name of a bank. Citigroup maintains that because a footnote in the T.T.A.B.'s opinion noted that minimizing "CAPITAL" and emphasizing "CITY BANK" is not a "reasonable manner" of depicting CCB's marks, the T.T.A.B. did not

21 637 F.3d 1344, *; 2011 U.S. App. LEXIS 6215, **; 98 U.S.P.Q.2D (BNA) 1253 Page 6 consider as many variations of CCB's marks as it should have. Citigroup, 94 U.S.P.Q.2d at Both parties cite Phillips, 442 F.2d 1376, 58 C.C.P.A. 1255, as the source of the doctrine that only "reasonable" manners of depicting a standard character mark are considered. In the Phillips case, Phillips op-posed Webb's typed mark 1 "CRC MARINE FORMULA 6-66" for rust and corrosion inhibitors [**15] because it had already registered the mark "66" for marina services, cleaners, and lubricants. Id. at "In trying to visualize what other forms the mark might appear in," the court was "aided by the specimens submitted with Webb's application as 'illustrating the mark as actually used.'" Id. Webb's use depicted "the 6-66 portion of the mark much more prominently than the CRC MARINE FORMULA portion" with the first "6" at a different level from the later "66." Id. The court concluded that "the mark CRC MARINE FORMULA 6-66, in some forms at least, so resembles '66' that confusion, mistake or deception is likely" and reversed the T.T.A.B.'s decision dismissing the opposition. Id. at Until 2003, "standard character" marks were known as "typed" marks. The United States Patent and Trademark Office changed the nomenclature in 2003 to conform to the Madrid Protocol. See Rules of Practice for Trademark-Related Filings under the Madrid Protocol Implementation Act, 68 Fed. Reg. 55,748, 55,755 (2003) (explaining revisions to 37 C.F.R. 2.52). Neither Phillips nor any other opinion of the United States Court of Customs and Patent Appeals, our predecessor court, or this court has endorsed [**16] the T.T.A.B.'s "reasonable manner" limitation of variations evaluated in the DuPont analysis. Although this court has never adopted such a rule, the T.T.A.B. has applied it in [*1353] numerous proceedings. See, e.g., ProQuest Info. & Learning Co. v. Jacques R. Island, 83 U.S.P.Q.2d 1351, 1359 (T.T.A.B. 2007) ("[W]hen a mark is presented in a typed or standard character format, the Board must consider all reasonable manners in which applicant could depict its mark."); Jockey Int'l Inc. v. Mallory & Church Corp., 25 U.S.P.Q.2d 1233, 1235 (T.T.A.B. 1992) (stating that the registration of opposer's mark in typed format "requires consideration of all ordinary and reasonable manners in which its mark could be depicted," including in typical script form); INB Nat'l Bank v. Metrohost Inc., 22 U.S.P.Q.2d 1585, 1588 (T.T.A.B. 1992) ("[W]hen applicant seeks a typed or block letter registration of its word mark, then the Board must consider all reasonable manners in which those words could be depicted."). The T.T.A.B.'s "reasonable manner" standard limits the range of marks considered in the DuPont analysis. [HN4] If the registrant complies with Section 2.52 of the Rules of Practice in Trademark Cases and obtains [**17] a standard character mark without claim to "any particular font style, size or color," the registrant is entitled to depictions of the standard character mark regardless of font style, size, or color, not merely "reasonable manners" of depicting its standard character mark. The consideration of only "reasonable" manners of depicting a standard character mark is unsupported by anything other than T.T.A.B practice. The T.T.A.B. should not first determine whether certain depictions are "reasonable" and then apply the DuPont analysis to only a subset of variations of a standard character mark. The T.T.A.B. should simply use the DuPont factors to determine the likelihood of confusion between depictions of standard character marks that vary in font style, size, and color and the other mark. As explained in Phillips, illustrations of the mark as actually used may assist the T.T.A.B. in visualizing other forms in which the mark might appear. Citigroup also interprets the T.T.A.B.'s observation that CCB's past displays of its marks have not emphasized CITY BANK as indicating that the T.T.A.B. only considered marks as they were previously used. In accordance with Cunningham v. Laser Golf Corp., [**18] the T.T.A.B. used current and past commercial displays of the applied-for mark to inform but not to restrict its analysis of potential displays. 222 F.3d 943 (Fed. Cir. 2000). In Cunningham, this court canceled the junior mark LASERSWING for a golf practice device in light of the senior mark LASER for golf clubs and golf balls. Id. at 950. This court ruled that because the mark at issue is the mark as registered, not as it is used, a respondent in a cancellation proceeding could not argue that his typed mark is dissimilar from petitioner's based on his distinctive font, color, logo, and accompanying house mark. Id. at The T.T.A.B.'s opinion addresses the range of marks encompassed by the standard character format of the marks in CCB's application. Citigroup, 94 U.S.P.Q.2d at The T.T.A.B. determined that given the wide-spread use of CITY BANK, BANK is a generic banking term and CITY is part of a geographic name or identifies a community bank. Id. at Thus, it would not be reasonable for CCB to present itself in a manner not distinguishing itself from these third-party banks. Cf. DuPont, 476 F.2d at 1362 ("It can be safely taken as fundamental that reputable businessmen-users [**19] of valuable trademarks have no interest in causing [*1354] public confusion."). Although the Board's reference to "reasonable manners" of depicting CCB's marks in its opinion is ambiguous and unduly narrow, substantial evidence supports the T.T.A.B.'s finding that CCB's marks are dissimilar in appearance, sound, connotation, and commercial impression from Citigroup's marks.

22 637 F.3d 1344, *; 2011 U.S. App. LEXIS 6215, **; 98 U.S.P.Q.2D (BNA) 1253 Page 7 B. We next address the DuPont factor assessing the "nature and extent of any actual confusion." Substantial evidence supports the T.T.A.B.'s factual finding of the absence of actual confusion. As the T.T.A.B. noted, concurrent use in the same geographic markets since 1975 presented "a reasonable opportunity for confusion to have occurred" but neither party is aware of any actual confusion between the parties' marks. Citigroup, 94 U.S.P.Q.2d at CCB and Citigroup have nineteen bank branches near each other. Id. Additionally, market research indicates that Citigroup's renown extends nationwide, even if it does not have branches in all geographic regions. The T.T.A.B. reasoned that Id. at considering the widespread advertising of opposer's marks and the identity of the services, if the marks were similar then it is likely that [**20] there would be some reported instances of confusion or mistake as to source such as misdirected telephone calls, visits, or requests for information or other indicia of confusion in the marketplace. In contrast, in Citibank, N.A. v. City Bank of San Francisco, Citigroup asserted its Citibank International San Francisco mark against the City Bank of San Francisco. 206 U.S.P.Q. at The court found it "extremely significant" that many instances of actual confusion arose after less than one month of concurrent use of the marks. Id. at On appeal, Citigroup asserts that it has offered services under the brand "CitiCapital" and, therefore, CCB's standard character marks could damage the value and goodwill associated with its marks. Appellant's Br. 9. Although this argument could be considered waived, it also lacks merit. The CITICAPITAL mark was not used in commerce until November 2000, well after the 1995 priority dates of CCB's applications. Also, Citigroup offers no evidence of any confusion between the CitiCapital brand and CCB. Citigroup argues that the significance of the absence of actual confusion is negated because CCB has not used all of the potential variations [**21] of the standard character mark. Citigroup cites Nina Ricci, S.A.R.L. v. E.T.F. Enterprises, Inc., 889 F.2d 1070, (Fed. Cir. 1989), in support of its argument. But in Nina Ricci, the absence of actual confusion had no probative value because no products bearing the mark had been sold and the extent of usage of the mark was unknown. Unlike the mark at issue in Nina Ricci, CCB's marks have been used commercially in overlapping markets. Although the most potentially confusing form of CCB's marks, that is, a version deemphasizing "Capital" and emphasizing "City Bank," has not yet been used, the critical words are all in use and there is no evidence of actual confusion. Substantial evidence supports the T.T.A.B.'s analysis of the similarity of the marks and the nature and extent of any actual confusion. III. After weighing the relevant DuPont factors, we conclude that the [*1355] T.T.A.B. did not err in finding no likelihood of confusion between the parties' respective marks. [HN5] Not all of the DuPont factors are necessarily "relevant or of equal weight in a given case, and any one of the factors may control a particular case." In re Majestic Distilling Co., 315 F.3d 1311, 1315 (Fed. Cir. 2003) [**22] (internal quotation marks omitted). Six of the thirteen DuPont factors are relevant to this case: (1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. (2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use. (3) The similarity or dissimilarity of established, likely-to-continue trade channels. (4) The... buyers to whom sales are made. (5) The fame of the prior mark (sales, advertising, length of use).... (7) The nature and extent of any actual confusion. 476 F.2d at The T.T.A.B. is not required to discuss every DuPont factor and may find a single factor dispositive. See, e.g., Kellogg Co. v. Pack'em Enters. Inc., 951 F.2d 330, 333 (Fed. Cir. 1991). The first DuPont factor assesses the fame of the CITIBANK mark. [HN6] A famous mark has "extensive public recognition and renown." Bose Corp. v. QSC Audio Prod.'s Inc., 293 F.3d 1367, 1371 (Fed. Cir. 2002).

23 637 F.3d 1344, *; 2011 U.S. App. LEXIS 6215, **; 98 U.S.P.Q.2D (BNA) 1253 Page 8 Here, the T.T.A.B. found that CITIBANK is a famous mark. Citigroup, 94 U.S.P.Q.2d at As the T.T.A.B. noted, "[f]ame, if it exists, plays a [**23] dominant role in the likelihood of confusion analysis because famous marks enjoy a broad scope of protection or exclusivity of use." Id. at 1657; accord Recot, 214 F.3d at The "fame of a mark may be measured indirectly, among other things, by the volume of sales and advertising expenditures of the goods traveling under the mark, and by the length of time those indicia of commercial awareness have been evident." Bose Corp., 293 F.3d at The T.T.A.B. reviewed the press coverage of Citibank, corporate studies tracking brand awareness of the CITI- BANK mark, and brand valuations by independent research agencies. Citigroup, 94 U.S.P.Q.2d at Studies conducted in the 1990s indicated that the CITI- BANK mark had a 90-95% level of unaided awareness. Id. Substantial evidence supports the T.T.A.B's finding that CITIBANK is a famous mark. The second DuPont factor is the similarity and nature of Citigroup's services and the services described in CCB's applications. [HN7] When trademarks would appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likely confusion declines. See Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 877 (Fed. Cir. 1992). [**24] CCB seeks to register marks for: Brokerage and administration services in the fields of securities, namely, mutual funds, stocks and bonds, annuities, tax advantaged securities, money market funds, and self directed retirement accounts, including IRA portfolio management, 401(k) portfolio management, Simple IRA, and Roth IRA portfolio management. Citigroup, 94 U.S.P.Q.2d at The CITIBANK mark is registered for, inter alia, "securities and mutual fund investment; [*1356] brokerage and trading services; investment advisory and consulting services; securities brokerage and trading services." Id. Substantial evidence supports the T.T.A.B.'s finding that the services in CCB's applications are essentially identical to Citigroup's services. The second DuPont factor favors Citigroup. Because the parties' trade channels and classes of consumers are unrestricted, the third and fourth DuPont factors also favor Citigroup. As this court explained in Hewlett Packard Co. v. Packard Press, Inc., "absent restrictions in the application and registration, goods and services are presumed to travel in the same channels of trade to the same class of purchasers." 281 F.3d 1261, 1268 (Fed. Cir. 2002). We agree with [**25] the T.T.A.B.'s finding that the trade channels and classes of consumers at issue are identical or nearly identical. Citigroup argues that the T.T.A.B. incorrectly weighed the DuPont factors. Citigroup's approach of mechanically tallying the DuPont factors addressed is improper, as the factors have differing weights. Although the T.T.A.B. deemed the CITIBANK mark famous, fame is only one of the thirteen DuPont factors. CCB's marks do not employ the C-I-T-I spelling or compound word structure, characteristics that contribute to the fame of Citigroup's marks. Because those characteristics are not present in CCB's marks, the fame factor is less persuasive than it is typically. Pervasive third-party use of the phrase "City Bank" in marks for financial services also limits the protection afforded to the CITIBANK mark. The dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression strongly supports a finding of no likelihood of confusion. Additionally, no instances of actual confusion have been reported despite opportunities for confusion to have occurred. But because a standard character registration would cover potential variations of the [**26] CCB applications that create a different commercial impression from CCB's past uses, the "actual confusion" factor has limited probative value in this case. After considering the relevant DuPont factors favoring Citigroup against those favoring CCB, we conclude that CCB's marks are not likely to cause confusion with Citigroup's marks. CONCLUSION We conclude that no likelihood of confusion would arise from the registration of CCB's marks for banking and financial services and Citigroup's marks for the same services. We affirm the T.T.A.B.'s denial of Citigroup's opposition to the registration of CCB's marks. AFFIRM COSTS Each party shall bear its own costs.

24 Page 1 Positive As of: Mar 24, 2014 IN RE MAJESTIC DISTILLING COMPANY, INC UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT 315 F.3d 1311; 2003 U.S. App. LEXIS 5; 65 U.S.P.Q.2D (BNA) 1201 January 2, 2003, Decided PRIOR HISTORY: [**1] Appealed from: United States Patent and Trademark Office Trademark Trial and Appeal Board. (Serial no. 74/622,781). In re Majestic Distilling Co., 2001 TTAB LEXIS 870 (Trademark Trial & App. Bd., Nov. 29, 2001) DISPOSITION: CASE SUMMARY: AFFIRMED. were not famous, and the tequila manufacturer's uncorroborated statements of no known instances of actual confusion were of little evidentiary value. OUTCOME: The United States Patent and Trademark Office Trademark Trial and Appeal Board's decision was affirmed. LexisNexis(R) Headnotes PROCEDURAL POSTURE: Appellant tequila manufacturer appealed from the United States Patent and Trademark Office Trademark Trial and Appeal Board's denial of its application for registration of a trademark. OVERVIEW: The tequila manufacturer claimed that the United States Patent and Trademark Office Trademark Trial and Appeal Board's (Board) finding that there was a likelihood of confusion under 15 U.S.C.S. 1052(d) between its trademark and previously registered marks regarding malt liquor was improper because malt liquor and tequila were unrelated, the malt liquor marks were not famous marks, and there was no actual confusion. The court held that substantial evidence supported the Board's finding of likelihood of confusion under 15 U.S.C.S. 1052(d). The court found that consumer confusion was likely because malt liquor and tequila were similar goods and were sold in many of the same established and likely-to-continue trade channels, malt liquor and tequila were more likely than not purchased on impulse, there was no evidence that the malt liquor marks Trademark Law > Likelihood of Confusion > Consumer Confusion > General Overview Trademark Law > Protection of Rights > Registration > Federal Registration Trademark Law > Protection of Rights > Registration > Principal Register [HN1] Under 2(d) (15 U.S.C.S. 1052(d)) of the Lanham Act, the United States Patent and Trademark Office may refuse to register a trademark if it "so resembles" a previously registered mark as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive. 15 U.S.C.S. 1052(d). Administrative Law > Judicial Review > Standards of Review > General Overview Patent Law > Jurisdiction & Review > Subject Matter Jurisdiction > Appeals

25 315 F.3d 1311, *; 2003 U.S. App. LEXIS 5, **; 65 U.S.P.Q.2D (BNA) 1201 Page 2 Trademark Law > Likelihood of Confusion > General Overview [HN2] The United States Court of Appeals for the Federal Circuit reviews a determination of likelihood of confusion by the United States Patent and Trademark Office Trademark Trial and Appeal Board as a question of law based on findings of relevant underlying facts. Civil Procedure > Appeals > Standards of Review > De Novo Review Patent Law > Jurisdiction & Review > Standards of Review > De Novo Review Patent Law > Jurisdiction & Review > Subject Matter Jurisdiction > Appeals [HN3] Although the United States Court of Appeals for the Federal Circuit reviews the United States Patent and Trademark Office Trademark Trial and Appeal Board's (Board) ultimate legal conclusion de novo, it reviews the Board's underlying findings of fact under the substantial evidence standard. Thus, the court asks whether a reasonable person might find that the evidentiary record supports the Board's conclusion. Administrative Law > Judicial Review > Reviewability > Factual Determinations Administrative Law > Judicial Review > Standards of Review > Substantial Evidence [HN4] When reviewing for substantial evidence, the United States Court of Appeals for the Federal Circuit takes the entire record into account, including evidence that detracts from an agency's finding as well as evidence that justifies it. The possibility that inconsistent conclusions may be drawn from the same record does not render a United States Patent and Trademark Office Trademark Trial and Appeal Board finding unsupported by substantial evidence. Trademark Law > Likelihood of Confusion > Consumer Confusion > Circuit Court Factors > Federal Circuit Court [HN5] The United States Court of Appeals for the Federal Circuit determines likelihood of confusion by focusing on the question whether the purchasing public would mistakenly assume that the applicant's goods originate from the same source as, or are associated with, the goods in the cited registrations. The court makes that determination on a case-by-case basis, aided by the application of the DuPont factors. Trademark Law > Likelihood of Confusion > Consumer Confusion > Circuit Court Factors > Federal Circuit Court Trademark Law > Likelihood of Confusion > Similarity > Appearance, Meaning & Sound > General Overview [HN6] The DuPont factors applied in a likelihood of confusion determination are: (1) the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression, (2) the similarity or dissimilarity and nature of the goods described in an application or registration or in connection with which a prior mark is in use, (3) the similarity or dissimilarity of established, likely-to-continue trade channels, (4) the conditions under which and buyers to whom sales are made, i.e. "impulse" vs. careful, sophisticated purchasing, (5) the fame of the prior mark, (6) the number and nature of similar marks in use on similar goods, (7) the nature and extent of any actual confusion, (8) the length of time during and the conditions under which there has been concurrent use without evidence of actual confusion, (9) the variety of goods on which a mark is or is not used, (10) the market interface between the applicant and the owner of a prior mark, (11) the extent to which applicant has a right to exclude others from use of its mark on its goods, (12) the extent of potential confusion, and (13) any other established fact probative of the effect of use. Not all of the DuPont factors may be relevant or of equal weight in a given case, and any one of the factors may control a particular case. Trademark Law > Likelihood of Confusion > Consumer Confusion > Circuit Court Factors > Federal Circuit Court [HN7] For likelihood of confusion purposes, when word marks are identical but neither suggestive nor descriptive of the goods associated with them, the first DuPont factor weighs heavily against the applicant, and even when goods or services are not competitive or intrinsically related, the use of identical marks can lead to the assumption that there is a common source. Trademark Law > Likelihood of Confusion > Consumer Confusion > Circuit Court Factors > Federal Circuit Court [HN8] For likelihood of confusion purposes, the DuPont factors require the court to consider only "trade channels," which may be, but are by no means necessarily, synonymous with manufacturing channels. Trademark Law > Likelihood of Confusion > Consumer Confusion > General Overview

26 315 F.3d 1311, *; 2003 U.S. App. LEXIS 5, **; 65 U.S.P.Q.2D (BNA) 1201 Page 3 [HN9] For likelihood of confusion purposes, when the products are relatively low-priced and subject to impulse buying, the risk of likelihood of confusion is increased because purchasers of such products are held to a lesser standard of purchasing care. Trademark Law > Dilution of Famous Marks > General Overview Trademark Law > Likelihood of Confusion > Consumer Confusion > General Overview [HN10] Although the fame of a registered mark is relevant to likelihood of confusion, there is no converse rule that likelihood of confusion is precluded by a registered mark's not being famous. Trademark Law > Likelihood of Confusion > Consumer Confusion > General Overview [HN11] A showing of actual confusion would of course be highly probative, if not conclusive, of a high likelihood of confusion. The opposite is not true, however. The lack of evidence of actual confusion carries little weight, especially in an ex parte context. Trademark Law > Federal Unfair Competition Law > General Overview Trademark Law > Likelihood of Confusion > General Overview Trademark Law > U.S. Trademark Trial & Appeal Board Proceedings > Oppositions > General Overview [HN12] It is the duty of the United States Patent and Trademark Office and the United States Court of Appeals for the Federal Circuit to determine whether there is a likelihood of confusion between two marks. It is also their duty to afford rights to registrants without constantly subjecting them to the financial and other burdens of opposition proceedings. Trademark Law > Likelihood of Confusion > General Overview Trademark Law > Protection of Rights > General Overview Trademark Law > U.S. Trademark Trial & Appeal Board Proceedings > Cancellations > General Overview [HN13] Although prior use can be relevant to the questions whether a party can enjoin another's use of a mark, whether and where a party has a right to use a mark after the same mark is registered by another party for use in connection with the same goods or services, and whether a party can successfully oppose or petition to cancel another party's registration, it is not one of the DuPont factors and does not directly bear on likelihood of confusion. COUNSEL: William G. Pecau, Pennie & Edmonds LLP, of New York, New York, argued for appellant. With him on the brief was Carol M. Wilhelm. Linda Moncys Isacson, Associate Solicitor, Office of the Solicitor, United States Patent and Trademark Office, of Arlington, Virginia, argued for appellee. With her on the brief were John M. Whealan, Solicitor; and Cynthia C. Lynch, Associate Solicitor. JUDGES: Before NEWMAN, LOURIE, and SCHALL, Circuit Judges. OPINION BY: LOURIE OPINION [*1313] LOURIE, Circuit Judge. Majestic Distilling Company, Inc. appeals from the decision of the United States Patent and Trademark Office ("PTO") Trademark Trial and Appeal Board ("TTAB" or "Board") affirming the examining attorney's refusal to register the mark "RED BULL" for tequila. In re Majestic Distilling Co., Serial No. 74/622,781, Paper No. 22 (TTAB Nov. 29, 2001). The Board held that the examining attorney correctly refused registration on the basis of likelihood of confusion with previously registered "RED BULL" marks for malt liquor. We affirm. BACKGROUND Majestic seeks to register [**2] the mark "RED BULL" for tequila. Despite having asserted use in commerce since November 1, 1984, Majestic did not file its application for registration until January 18, In a first Office Action mailed August 10, 1995, the examining attorney refused registration of the mark under 2(d) of the Lanham Act, 15 U.S.C. 1052(d) (2000), on the ground of likelihood of confusion with Registration No. 1,071,580 ("RED BULL" for Scotch whiskey), issued August 16, 1977, to George Willsher & Co., Ltd.; Registration No. 1,542,792 ("RED BULL A SCHLITZ MALT LIQUOR BRAND" for malt liquor), issued June 6, 1989, to The Stroh Brewery Company; and Registration No. 1,541,794 (stylized "RED BULL" for malt liquor), issued May 30, 1989, also to Stroh. Office Action, Serial No. 74/622,781 (Aug. 10, 1995). The examining attorney also cited four of Stroh's pending applications for registration, Serial Nos. 74/541,371, 74/541,372, [*1314] 74/589,654, and 74/589,656, against Majestic's application. Id. After petitioning to cancel Willsher's mark for Scotch whiskey on the ground of abandonment, Majestic

27 315 F.3d 1311, *; 2003 U.S. App. LEXIS 5, **; 65 U.S.P.Q.2D (BNA) 1201 Page 4 responded to the Office Action. Finding Majestic's response unpersuasive, however, [**3] the examining attorney made his refusal final. Office Action, Serial No. 74/622,781 (June 6, 1996). Majestic then appealed to the Board. In re Majestic Distilling Co., Serial No. 74/622,781 (TTAB Apr. 15, 1997). While Majestic's appeal was pending, Willsher's mark was canceled and Stroh's four pending applications matured into registrations. At the examining attorney's request, the Board remanded the case to him. Id., slip op. at 1. He then issued another non-final Office Action, in which he refused registration of Majestic's mark not only over the '580, '792, and '794 registrations, but also over Stroh's newly matured registrations: Registration No. 1,923,974 ("RED BULL" with design for malt liquor), issued from Serial No. 74/589,656 on October 3, 1995; Registration No. 1,935,272 ("RED BULL" for malt liquor), issued from Serial No. 74/589,654 on November 14, 1995; Registration No. 2,046,277 ("RED BULL REPRESENTIN' THE REAL" for brewed malt liquor), issued from Serial No. 74/541,371 on March 18, 1997; and Registration No. 2,046,278 ("RED BULL REPRE- SENTIN'" for brewed malt liquor), issued from Serial No. 74/541,372 on March 18, Office Action, Serial No. 74/622,781 [**4] (Apr. 23, 1997). Majestic made several unsuccessful attempts to traverse the examining attorney's refusal to register its mark, but the examining attorney again made his refusal final. Office Action, Serial No. 74/622,781 (Mar. 15, 2000). Majestic again appealed to the Board, which affirmed the examining attorney's second final refusal. In re Majestic Distilling Co., Serial No. 74/622,781 (TTAB Nov. 29, 2001). Majestic now appeals to this court. We have jurisdiction pursuant to 15 U.S.C and 28 U.S.C. 1295(a)(4)(B). DISCUSSION [HN1] Under 2(d) of the Lanham Act, the PTO may refuse to register a trademark if it "so resembles" a previously registered mark "as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive." 15 U.S.C. 1052(d) (2000). [HN2] We review a determination of likelihood of confusion as a question of law based on findings of relevant underlying facts. Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 671, 223 USPQ 1281, 1282 (Fed. Cir. 1984). [HN3] Although we review the Board's [**5] ultimate legal conclusion de novo, In re Int'l Flavors & Fragrances, Inc., 183 F.3d 1361, 1365, 51 USPQ2d 1513, 1515 (Fed. Cir. 1999), we review the Board's underlying findings of fact under the substantial evidence standard. On-Line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000). Thus, we ask whether a reasonable person might find that the evidentiary record supports the Board's conclusion. Id. at 1085, 56 USPQ2d at [HN4] When reviewing for substantial evidence, we take the entire record into account, including evidence that detracts from an agency's finding as well as evidence that justifies it. Id. at 1086, 56 USPQ2d at The possibility that inconsistent conclusions may be drawn from the same record does not render a Board's finding unsupported by substantial evidence. Id.; In re Gartside, 203 F.3d 1305, 1312, 53 USPQ2d 1769, 1773 (Fed. Cir. 2000). [HN5] We determine likelihood of confusion by focusing on the question whether the purchasing public would mistakenly assume [*1315] that the applicant's goods originate from the same source as, or are associated [**6] with, the goods in the cited registrations. Paula Payne Prods. Co. v. Johnson Publ'g Co., 473 F.2d 901, 902, 177 USPQ 76, 77 (CCPA 1973). We make that determination on a case-by-case basis, On-Line Careline, 229 F.3d at 1084, 56 USPQ2d at 1474, aided by the application of the factors set out in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). [HN6] Those factors are: (1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression. (2) The similarity or dissimilarity and nature of the goods... described in an application or registration or in connection with which a prior mark is in use. (3) The similarity or dissimilarity of established, likely-to-continue trade channels. (4) The conditions under which and buyers to whom sales are made, i.e. "impulse" vs. careful, sophisticated purchasing. (5) The fame of the prior mark.... (6) The number and nature of similar marks in use on similar goods. (7) The nature and extent of any actual confusion. (8) The length of time during and the conditions [**7] under which there has been concurrent use without evidence of actual confusion. (9) The variety of goods on which a mark is or is not used....

28 315 F.3d 1311, *; 2003 U.S. App. LEXIS 5, **; 65 U.S.P.Q.2D (BNA) 1201 Page 5 (10) The market interface between the applicant and the owner of a prior mark.... (11) The extent to which applicant has a right to exclude others from use of its mark on its goods. (12) The extent of potential confusion.... (13) Any other established fact probative of the effect of use. Id. at 1361, 177 USPQ at 567. Not all of the DuPont factors may be relevant or of equal weight in a given case, and "any one of the factors may control a particular case," In re Dixie Restaurants, 105 F.3d 1405, , 41 USPQ2d 1531, 1533 (Fed. Cir. 1997). Both the examining attorney and the Board applied the relevant DuPont factors to the facts of the present case. With regard to the first factor, they found that one of Stroh's registered marks, Reg. No. 1,935,272, is identical to Majestic's applied-for mark. They also found that a second registration, Reg. No. 1,541,794, is almost identical to Majestic's mark, but for the use of stylized lettering in the former. [**8] As pointed out by the examining attorney, because the drawing for Majestic's mark is in typed format and hence can potentially be represented in any manner, that stylized lettering does not provide a significant difference between the marks. We have previously held that, [HN7] when word marks are identical but neither suggestive nor descriptive of the goods associated with them, the first DuPont factor weighs heavily against the applicant, In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566, 223 USPQ 1289, 1290 (Fed. Cir. 1984), and "even when goods or services are not competitive or intrinsically related, the use of identical marks can lead to the assumption that there is a common source," In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993). The Board found that, if marketed under the identical mark, consumers would be likely to believe that malt liquor and tequila emanate from, or are sponsored or endorsed by, the same entity. Majestic [*1316] argues against the Board's finding, asserting that malt liquor and tequila are unrelated. First, Majestic argues, malt liquor is a brewed product, whereas tequila is distilled. [**9] Secondly, the PTO's evidence of a relationship between malt liquor and tequila consists only of (1) articles demonstrating that malt liquor and tequila are occasionally found in some of the same places and (2) articles relating to Anheuser-Busch's Tequiza, a tequila-flavored beer. The PTO responds, and we agree, that malt liquor and tequila are similar by virtue of the fact that both are alcoholic beverages that are marketed in many of the same channels of trade to many of the same consumers. Although the PTO apparently found no evidence of any manufacturer who both brews malt liquor and distills tequila, Majestic has not shown that the PTO's lack of evidence in that regard is relevant. Unless consumers are aware of the fact, if it is one, that no brewer also manufactures distilled spirits, that fact is not dispositive. [HN8] The DuPont factors require us to consider only "trade channels," which may be, but are by no means necessarily, synonymous with manufacturing channels. In this case, Majestic has not demonstrated that consumers distinguish alcoholic beverages by manufacturer rather than brand name. Because substantial evidence supports the Board's conclusions that malt liquor [**10] and tequila are similar goods and are sold in many of the same established and likely-to-continue trade channels, we conclude that the second and third DuPont factors, respectively, weigh against Majestic, as well as the first. The fourth DuPont factor seems to us to be a close question. On the one hand, the Board found that malt liquor and tequila are both relatively inexpensive products that are likely to be purchased on impulse rather than selected with careful, studied consideration and sophistication. As we have held in the past, [HN9] "when the products are relatively low-priced and subject to impulse buying, the risk of likelihood of confusion is increased because purchasers of such products are held to a lesser standard of purchasing care." Recot Inc. v. M.C. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000). On the other hand, Majestic's response that common experience suggests that "beer drinkers and drinkers of distilled spirits are extremely, and often fiercely, brand-conscious and discriminating" also has some merit. Still, Majestic has provided no survey data or evidence other than Stroh's identification of consumers of its products [**11] as "reasonably intelligent and discerning" to support its argument, and it is unclear in any event that evidence of such brand-consciousness would even favor Majestic. First, even if Majestic were correct that "common experience" shows that consumers sometimes become attached to a particular brand of beer or spirits after purchasing and consuming that brand at least once, that would say little, if anything, about whether the consumer's initial selection of that brand was based on studied consideration and sophistication or, alternatively, on impulse. Secondly, it appears to us that brand-consciousness not only can be expected to lead a consumer who already has a favorite brand of tequila to be loyal to that brand, but it also should compel a con-

29 315 F.3d 1311, *; 2003 U.S. App. LEXIS 5, **; 65 U.S.P.Q.2D (BNA) 1201 Page 6 sumer who enjoys "RED BULL"-brand malt liquor but has not yet developed a taste for a particular brand of tequila to purchase "RED BULL"-brand tequila in the mistaken belief that it is manufactured or sponsored by the same entity. It seems to us that that is precisely the mistake that 2(d) of the Lanham Act seeks to prevent. To be sure, a side-by-side comparison of the two products' labels would probably dispel the mistake [*1317] for most consumers. [**12] It is doubtful, however, that such a comparison would be undertaken prior to purchase of these relatively inexpensive products. Thus, we can hardly say that the PTO's finding with respect to the fourth factor is lacking in substantial evidence. We will not upset the Board's conclusion, based on its balancing of the evidence, that these goods are more likely than not purchased on impulse. Although the Board did not evaluate the fifth DuPont factor, Majestic argues that Stroh's "RED BULL" marks for malt liquor are not famous marks with decades of prior use, and that the present case can accordingly be distinguished from cases such as Schlieffelin & Co. v. Molson Cos., 1989 TTAB LEXIS 1, 9 USPQ2d 2069 (TTAB 1989); In re Leslie Hennessy, Jr., 226 USPQ 274 (TTAB 1985); and Fleischmann Distilling Corp. v. Maier Brewing Co., 314 F.2d 149, 136 USPQ 508 (9th Cir. 1963), which were cited by the Board. However, we find no evidence in the record to substantiate Majestic's counsel's argument that Stroh's marks are not famous. Even if such evidence were of record, though, it would have little probative value. [HN10] Although we have previously [**13] held that the fame of a registered mark is relevant to likelihood of confusion, DuPont, 476 F.2d at 1361, 177 USPQ at 567 (factor five), we decline to establish the converse rule that likelihood of confusion is precluded by a registered mark's not being famous. With regard to the seventh DuPont factor, we agree with the Board that Majestic's uncorroborated statements of no known instances of actual confusion are of little evidentiary value. See In re Bissett-Berman Corp., 476 F.2d 640, 642, 177 USPQ 528, 529 (CCPA 1973) (stating that self-serving testimony of appellant's corporate president's unawareness of instances of actual confusion was not conclusive that actual confusion did not exist or that there was no likelihood of confusion). [HN11] A showing of actual confusion would of course be highly probative, if not conclusive, of a high likelihood of confusion. The opposite is not true, however. The lack of evidence of actual confusion carries little weight, J.C. Hall Co. v. Hallmark Cards, Inc., 52 C.C.P.A. 981, 340 F.2d 960, 964, 144 USPQ 435, 438 (CCPA 1965), especially in an ex parte context. Majestic's principal challenge [**14] appears to focus on the sixth, eighth, and tenth DuPont factors. First, Majestic asserts that other companies have marketed distilled spirits under the trade name "RED BULL" without any incidents of actual confusion over the course of the sixteen years that it has been selling its "RED BULL" tequila. Secondly, Majestic points to evidence showing that, over a twelve-year period, Stroh not only argued before the PTO that the "RED BULL" mark can be used concurrently for its malt liquor and others' distilled spirits without creating confusion, but also entered into agreements with George Willsher & Co., Ltd., which, as noted above, had registered "RED BULL" for Scotch whiskey, and Red Bull GmbH, which Majestic alleges manufactures "RED BULL" gin, vodka, brandy spirits, and wine. According to Majestic, the Board and the examining attorney improperly discredited the objective evidentiary value of the agreements among Stroh, Willsher, and Red Bull GmbH, as those agreements reflect the opinions of persons most familiar with the actual trade and marketing practices surrounding the goods and marks at issue, and "decisions of men who stand to lose if wrong are normally more reliable than [**15] those of examiners and judges." (quoting DuPont, 476 F.2d at 1363, 177 USPQ at 569). As the Board and the examining attorney have pointed out, however, there has [*1318] been no consent agreement executed between Majestic and Stroh, only between Stroh and third parties. The record appears to be silent as to whether Majestic ever attempted to negotiate an agreement with Stroh, but, in any event, we agree that no presumption can be made that Stroh consents to Majestic's use of the mark or that Stroh has determined or admits that confusion of the public by Majestic's concurrent use of the mark is unlikely. Moreover, the Stroh agreements with Willsher and Red Bull GmbH are several years old and may not reflect current views. For example, Stroh may now have knowledge of incidents of actual confusion, and may no longer hold the same view with respect to likelihood of confusion as it did when it executed those third-party agreements or when it argued to the PTO that there was no likelihood of confusion. Moreover, the consent agreements between Stroh and the third parties contain express limitations; in particular, the Willsher-Stroh agreement prohibits Stroh's use or registration [**16] of "BLACK BULL" or "THE MAGNIFICENT BULL" for brewed malt liquor, beer, or ale, even though Willsher apparently uses those marks only on Scotch whiskey. Majestic invited the PTO to simply pass its mark to publication so that Stroh could oppose the mark if it saw fit to do so. The PTO properly turned down Majestic's request. The appellant in Dixie Restaurants raised essen-

30 315 F.3d 1311, *; 2003 U.S. App. LEXIS 5, **; 65 U.S.P.Q.2D (BNA) 1201 Page 7 tially the same argument, 105 F.3d at 1408, 41 USPQ2d at 1535, and we held in that case that: Id. [HN12] It is the duty of the PTO and this court to determine whether there is a likelihood of confusion between two marks. In re Apparel, Inc., 54 C.C.P.A. 733, 366 F.2d 1022, 1023, 151 USPQ 353, 354 (CCPA 1966). It is also our duty "to afford rights to registrants without constantly subjecting them to the financial and other burdens of opposition proceedings." Id.; see also In re Clorox Co., 578 F.2d 305, 308, 198 USPQ 337, 341 (CCPA 1978); McCarthy, [McCarthy on Trademarks and Unfair Competition] 23.24[1][d] (where PTO rejects an application under section 1052(d), "it is no answer for the applicant to ask that the application be passed to publication to [**17] see whether the owner of the cited mark will oppose the registration"). Otherwise protecting their rights under the Lanham Act would be an onerous burden for registrants. Majestic also argues that it is the senior user and, as such, its "decision... not to petition to cancel Stroh's registrations, or to sue Stroh to stop its use of the RED BULL trademark, is significant evidence that confusion is not likely." In support of its position, Majestic cites Bongrain International (American) Corp. v. Delice de France, Inc., 811 F.2d 1479, 1 USPQ2d 1775 (Fed. Cir. 1987), for the proposition that "conduct of a prior user in not objecting to subsequent use of a similar mark by another is objective evidence to be considered when determining likelihood of confusion." It is unclear where Majestic derived that paraphrase, because the only statement in Bongrain that relates to objections raised by a prior user is: "As the prior user, Delice would be the one to object to the use and registration of Bongrain's mark. It has never objected to the use and, notwithstanding this cancellation proceeding, it has not seriously objected to its registration." Id. at 1485, 1 USPQ2d at [**18] That statement merely shows that Delice's actions were consistent with a belief that no likelihood of confusion existed. Neither that statement nor any other in Bongrain, however, suggests to us that the inaction of a prior user is "objective evidence to be considered when determining likelihood of confusion." [*1319] In any event, the Board's decision in the present case is not in conflict with our decision in Bongrain, for there are at least three critical distinctions that can be drawn between the facts in Bongrain and those in this case. First, unlike in the present case, there was an agreement executed between the parties to the suit in Bongrain, governing the uses of the respective marks. Id. at 1482, 1 USPQ2d at Secondly, the products in connection with which the marks at issue in Bongrain were to be used were significantly different from each other (i.e., milk and cheese on one hand, and baked goods on the other). Id. at 1481, 1 USPQ2d at Third, the court in Bongrain distinguished DuPont, which, as here, involved identical marks, on the basis that the marks (i.e., "DELICE DE FRANCE" and "LE PETIT [**19] DELICE DE FRANCE"), although similar, were not identical. Id. at 1483, 1 USPQ2d at Thus, whereas in Bongrain we held that it was "not necessary, in view of cumulative differences between the marks and the goods enumerated, to hold that confusion is likely," we hold that, in view of the similarities between the marks and the goods enumerated in the present case, we see no error in the Board's conclusion that confusion is likely. We also agree with the Board that Majestic's decision not to avail itself of the statutory provisions for opposition and cancellation before Stroh's marks became incontestable could have been made for any number of business reasons unrelated to the likelihood of confusion between the marks, and is not entitled to any significant weight. [HN13] Although prior use can be relevant to the questions whether a party can enjoin another's use of a mark, whether and where a party has a right to use a mark after the same mark is registered by another party for use in connection with the same goods or services, and whether a party can successfully oppose or petition to cancel another party's registration, it is not one of the DuPont factors [**20] and does not directly bear on likelihood of confusion. Several of the DuPont factors contain the phrase "the prior mark," but it is clear from their context that that phrase refers to a prior registered mark and not simply to a prior used mark. In any event, vindication of Majestic's asserted position of priority is more appropriately raised in proceedings designed to evaluate such a position. Neither the Board nor either party has raised arguments that relate to any of the ninth, eleventh, twelfth, and thirteenth DuPont factors, and we therefore do not discuss them. In summary, we find no fault in the Board's affirmance of the examining attorney's refusal to register Majestic's mark. The Board found, on the basis of substantial evidence, that Majestic's mark is identical to at least one of the previously registered marks, that malt liquor and tequila are related as alcoholic goods sold through the same trade channels to many of the same

31 315 F.3d 1311, *; 2003 U.S. App. LEXIS 5, **; 65 U.S.P.Q.2D (BNA) 1201 Page 8 consumers, and that malt liquor and tequila are both fairly inexpensive and likely to be purchased on impulse. Although Majestic's principal arguments are not without merit, analysis under DuPont requires a balancing of the relevant [**21] factors, and we find the balance in this case tilts towards a likelihood of confusion. See Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533 ("We see no error in the board's decision to focus on the DuPont factors it deemed dispositive."). We have considered Majestic's other arguments and find them unpersuasive. CONCLUSION Substantial evidence supports the Board's findings. On the basis of those findings, we agree with the Board's conclusion [*1320] that consumers who are aware of Stroh's "RED BULL" malt liquor and who then encounter Majestic's "RED BULL" tequila are likely to mistakenly believe that both come from or are sponsored or licensed by the same entity. Accordingly, the Board's decision is AFFIRMED.

32 Page 1 Cited As of: Sep 01, 2013 DISPOSITION: [*1] Embarcadero Technologies, Inc. v. RStudio, Inc. Opposition No to applications Serial Nos , & all filed on March 16, 2009 Trademark Trial and Appeal Board 2013 TTAB LEXIS 6; 105 U.S.P.Q.2D (BNA) 1825 February 14, 2013, Decided Decision: Applicant's motion to amend the involved applications is granted and the descriptions of goods and services are amended accordingly. The opposition is dismissed and the involved applications, as amended, will be forwarded for issuance of notices of allowance. COUNSEL: Martin R. Greenstein, Mariela P. Vidolova, and Leah Z. Halpert of TechMark a Law Corporation for Embarcadero Technologies, Inc. Julia Huston, Charles E. Weinstein, Joshua S. Jarvis, and Anthony E. Rufo of Foley Hoag LLP for RStudio, Inc. JUDGES: Before Bucher, Wellington, and Ritchie, Administrative Trademark Judges. OPINION BY: WELLINGTON OPINION: THIS OPINION IS A PRECEDENT OF THE TTAB Opinion by Wellington, Administrative Trademark Judge: Embarcadero Technologies, Inc. (hereinafter, "opposer"), has opposed three applications of RStudio, Inc. ("applicant"), to register the mark RSTUDIO, in standard character form, covering the following goods and services: Computer software for statistical computing; computer software for software applications development in International Class 9; Providing training in the use of computer software; providing training in the use of statistical methods and related computer [*2] software in International Class 41; and

33 2013 TTAB LEXIS 6, *; 105 U.S.P.Q.2D (BNA) 1825 Page 2 Application service provider (ASP) featuring software for statistical computing and software applications development; computer software consultation; design and development of computer software; technical support services, namely, troubleshooting of problems with computer software programs in International Class 42. n1 n1 Application Serial Nos , , and , in order respectively for each recited class of goods/ services. The applications were filed on March 16, 2009, based on Section 1(b)(bona fide intent to use the mark in commerce). Registration of applicant's mark in connection with the applied-for goods and services is opposed on the ground of priority and likelihood of confusion. Specifically, opposer alleges that it "is the owner of the trade name and trademark ER/STUDIO, having used said name and mark continuously in interstate commerce on and in connection with computer software and related services since long prior [*3] to the March 16, 2009 [filing date of the three opposed applications]"; and that "[s]imultaneous use by Applicant of the alleged mark RSTUDIO on the goods and services set forth in [the three opposed applications], and Opposer Embarcadero's ER/STUDIO mark on its goods and related services... is likely to cause confusion, mistake or deception among purchasers, users and the public, thereby damaging Opposer." n2 Opposer pleaded ownership of U.S. Registration No for the mark ER/STUDIO, in typed character form, for "entity relationship modeling software for SQL databases" in International Class 9. n3 [*4] n2 In the Notice of Opposition, opposer also alleged that "Applicant did not have the requisite bona fide intent to use the [mark] RSTUDIO... on all of the goods and services set forth [in the applications] in commerce or otherwise at the time of filing the [opposed applications], and the applications are thus void ab initio." However, opposer did not pursue this claim in its trial briefs, and therefore we consider this claim to be waived. Similarly, in opposer's trial brief, opposer states that the grounds for opposition include "a false suggestion of connection under Section 2(a) of the Trademark Act of 1946, 15 U.S.C. 1052(a)." Opposer's Brief at 8. However, opposer later states in that same brief that the "sole issue" to be determined by the Board is likelihood of confusion between the applied-for marks and opposer's mark. Opposer's Brief at 11. We further note that although the terms "false suggestion of a connection" and "Section 2(a)" are listed in the cover sheet generated by the Office's online filing electronic database (ESTTA) as "grounds for opposition," the ground was not sufficiently pleaded or otherwise elaborated upon in the attached notice of opposition. Although the content of the ESTTA cover sheet is read in conjunction with the notice of opposition as an integral component, PPG Industries Inc. v. Guardian Industries Corp., 73 USPQ2d 1926, 1928 (TTAB 2005), the mere mention of a ground therein is insufficient. Cf. Melwani v. Allegiance Corp., 97 USPQ2d 1537 (TTAB 2010). For purposes of properly pleading a claim of false suggestion of a connection under Section 2(a), see Petroleos Mexicanos v. Intermix S.A., 97 USPQ2d 1403 (TTAB 2010), and authorities cited therein. Accordingly, and in view of the fact that opposer has not provided any arguments or evidence regarding a Section 2(a) claim, we consider this ground also to be waived. n3 Registered November 10, 1998, renewed. In its answer, as amended, applicant admitted certain allegations regarding the filing of its applications, and also admitted that opposer is the owner of the pleaded registration. Applicant otherwise denied the other salient allegations in the notice of opposition. Applicant's Motion to Amend the Application/Section 18 Prior to the close of discovery in this proceeding, applicant moved to amend the descriptions of its goods and services in the applications "in the event that the Board deems such amendments necessary to dismiss the opposition." n4

34 2013 TTAB LEXIS 6, *; 105 U.S.P.Q.2D (BNA) 1825 Page 3 n4 Applicant's motion filed November 10, The proposed amended goods and services read as follows: [EDITOR'S NOTE: TEXT WITHIN THESE SYMBOLS [O> <O] IS OVERSTRUCK IN THE SOURCE.] Application Serial No : "Computer software for advanced statistical computing[o>; computer software for software [*5] applications development<o] using the R computing language and the data from two dimensional datasets" in International Class 9; Application Serial No : "Providing training in the use of computer software for advanced statistical computing using the R computing language and data from two dimensional datasets; providing training in the use of advanced statistical methods [O>and related computer software<o] using the R computing language and data from two dimensional datasets" in International Class 41; and Application Serial No : "Application service provider (ASP) featuring software for advanced statistical computing [O>and software applications development<o] using the R computing language and data from two dimensional datasets; [O>computer software<o] consultation regarding computer software for advanced statistical computing using the R computing language and data from two dimensional datasets; design and development of computer software for advanced statistical computing using the R computing language and data from two dimensional datasets; technical support services, namely, troubleshooting of problems with computer [*6] software [O>programs<O] for advanced statistical computing using the R computing language and data from two dimensional datasets" in International Class 42. (for ease of reference, we have shown additions in underline, and deletions in strikethrough). Applicant's motion was filed without the consent of opposer, and opposer indeed filed its opposition to the proposed amendments. n5 In an order issued on November 29, 2010, the Board stated that action on the motion would be deferred until final decision. Accordingly, we now consider said motion. n5 Opposer's brief of November 30, Section 18 of the Lanham Act gives the Board the equitable power to, inter alia, "restrict the goods or services identified in an application or registration." 15 U.S.C. Section Pursuant to Section 18 and in conjunction with a motion to amend, a defendant may assert an affirmative defense by moving to restrict its own goods and/or services in order to avoid any likelihood of confusion [*7] alleged by the plaintiff. Id.; Trademark Rule See also TBMP Section (b) (2012) and cases cited therein. In order for such an affirmative defense to be considered, it must be promptly asserted and the proposed restriction must be set forth in sufficient detail and with an explanation or allegation as to how the restriction alleviates the likelihood of confusion. Cf., ProQuest Information and Learning Co. v. Island, 83 USPQ2d 1351, (TTAB 2007) (applicant failed to state with precision how restriction of its own application would aid in avoidance of confusion); Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1898 (TTAB 2006) (applicant's offer to amend its identification of goods given no further consideration because it would not overcome the likelihood of confusion); and British Seagull Ltd. v Brunswick Corp., 28 USPQ2d 1197 (TTAB 1993), aff'd, 35 F.3d 1527, 32 USPQ2d 1120, 1125 (Fed. Cir. 1994) (Board had no duty to address applicant's offer to amend in final brief where applicant failed to file a motion to amend or include proposed amendment as an affirmative defense in pleading). [*8] Ideally, the Section 18 affirmative defense should be asserted in the defendant's answer to put the plaintiff on notice and shortly thereafter followed by a corresponding motion to amend the application.

35 2013 TTAB LEXIS 6, *; 105 U.S.P.Q.2D (BNA) 1825 Page 4 In its answer, applicant does not assert the Section 18 affirmative defense or otherwise raise the issue of a restriction to its descriptions of goods and services. Nevertheless, we find applicant's alternative request to restrict its descriptions of goods and services timely inasmuch as its motion was filed before the close of discovery. Moreover, the issue of the proposed restriction was clearly tried by the parties and argued in their respective trial briefs. Accordingly, we deem the answer in this proceeding to be amended to include the Section 18 affirmative defense. Fed. R. Civ. P. 15 (b). We further note that the Section 18 affirmative defense is raised in the alternative; applicant did not explicitly consent to judgment being entered against it with respect to the original, broader descriptions of goods and services. In its trial brief, applicant focuses the bulk of its arguments against finding a likelihood of confusion based on the restricted, narrower scope of applicant's [*9] goods and services. Nevertheless, applicant also suggests the amendments may not be "necessary" and requests that the Board offer applicant the option to reconsider entry of the amendments "in the event that the Board determines that applicant is entitled to registration of its mark even without the proposed amendments." Brief, p. 31. With the above in mind, we address applicant's Section 18 affirmative defense in this decision, as requested, in the alternative. That is, we have considered the original, unamended descriptions of goods in our likelihood of confusion analysis, and upon finding a likelihood of confusion therewith, we have also considered whether applicant has established its Section 18 affirmative defense, i.e., whether the proposed restrictions negate the likelihood of confusion. The Record By rule, the record includes the involved application files. Trademark Rule 2.122(b), 37 C.F.R (b). The pleadings are also automatically of record. In addition, opposer has submitted the testimony of Jason Tiret, opposer's Director of Modeling and Design Solutions in the Product Management Department, with attached exhibits. n6 Opposer also filed two notices of reliance [*10] on the following materials: 1. Printouts from applicant's website dated February 28, 2011; 2. Rule 30(b) (6) deposition of RStudio, Inc. and of Joseph J. Allaire, applicant's CEO, with attached exhibits; n7 3. Excerpts from the book R in a Nutshell by Joseph Adler; 4. Copy of an article "RinRuby: Accessing the R Interpreter from Pure Ruby" by David B. Dahl and Scott Crawford from the Journal of Statistical Software; 5. Copy of an article "Collaborative Software Development Using R-Forge" by Stefan Theu [beta] l and Achim Zeileis from The R Journal; 6. Copy of an online article "Calling Ruby, Perl or Python from R"; 7. Webpage printouts from the RubyForge website 8. Printouts from webpage entitled "What is R?" from the R-Project's website 9. Printouts from the "user! The R User Conference 2010" webpage Printouts from the online blog article "Revolution Analytics Targets R Language, Platform at Growing Need to Handle 'Big Data' Crunching"; 11. Various definitions of the word "statistics"; 12. Printouts from opposer's [*11] website;

36 2013 TTAB LEXIS 6, *; 105 U.S.P.Q.2D (BNA) 1825 Page Printouts from applicant's website dated May 25, 2011; 14. White paper entitled "R: An Open Source Statistical Environment" by Valentin Todorov; 15. Copy of the book Using R for Actuarial Science by Shyamal Kumar; 16. Copy of the online article "Scenarios for Using R within a Relational Database Management System Server" by Duncan Temple Lang; 17. Excerpts from the manual R Data Import/Export; 18. The article "Improving the Analysis, Storage and Sharing of Neuroimaging Data Using Relational Databases and Distributed Computing" by Uri Hasson et al.; and 19. Opposer's website and user guides. n6 Hereinafter cited to as "Tiret Dep. [page]:[line(s)]." n7 Hereinafter cited to as "Allaire Discov. Dep. [page]:[line(s)]." Applicant, during its trial period, filed the testimony of Joseph J. Allaire, applicant's CEO, with attached exhibits. n8 Applicant also filed a notice of reliance on the following materials: 1. Rule 30(b)(6) discovery [*12] deposition of Jason Tiret, with attached exhibits; n9 2. Opposer's response to applicant's interrogatory No. 14; 3. Excerpts from the book R in a Nutshell by Joseph Adler; 4. Applicant's website dated April 18, 2011; 5. A collection of fifty (50) web pages showing use of the word "studio"; 6. A collection of fifty (50) web pages showing use of the term "ER"; 7. Opposer's listings of its software from its website; 8. Prices for opposer's goods taken from opposer's website; and 9. The Wikipedia article "Comparison of Statistical Packages." n8 Hereinafter cited to as "Allaire Dep. [page]:[line(s)]." n9 Hereinafter cited to as "Tiret Discov. Dep. [page]:[line(s)]." Background Discussion Before we address the merits of this opposition, we offer the following background regarding the parties and their software products and services. In doing so, we acknowledge from the outset that our likelihood of confusion determi-

37 2013 TTAB LEXIS 6, *; 105 U.S.P.Q.2D (BNA) 1825 Page 6 nation is, and must be, confined [*13] to the identifications of goods set forth in the applications and pleaded registration, in addition to any prior common law rights established by opposer. See J & J Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991); Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990); and CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983). A. Applicant's Software and Services Applicant was founded in 2008 by its CEO, Mr. Allaire, and the RSTUDIO software product was subsequently developed by applicant. The descriptions of applicant's goods and services, as currently found in the applications and unamended, describe the function of the RSTUDIO software product in fairly broad terms. That is, based on a reading of the identification of goods only, it is presumed that applicant's software incorporates all types of statistical computing software, as well as computer software for developing all types of software applications. Likewise, the software "training" and "design and development" services, as currently recited in their respective applications, [*14] are broad enough to include training, design, and development for all types of software, including the software described in opposer's registration. By way of applicant's Section 18 defense and proposed restrictions to the descriptions of goods and services, applicant's software and related services are limited to the field of "advanced" statistical software, using the "R" computer software programming language, and data from "two dimensional datasets." See proposed (amended) descriptions above. "R" is defined as "an open source programming language and software environment for statistical computing and graphics," and "an environment within which statistical techniques are implemented." n10 By itself, R "includes very barebones tools" n11 for the analysis and visualization of data, n12 not the storage and maintenance of data. The reference to a "two dimensional dataset" is meant to describe data presented in a way similar to a spreadsheet, with "a set of variables and then a set of observations of those variables." n13 As to applicant's use of the word "advanced," this is meant to "make clear what... is widely understood," namely, that, in the software industry, "statistical computing" [*15] involves "more sophisticated and advanced analysis" along the lines of "regression and multiple regression, analysis of variance time series forecasting, and other sophisticated analytical tools." n14 n10 Opposer's Notice of Reliance, Exhibit H (R-Project, What is R?, n11 Allaire Discov. Dep. 27: n12 Opposer's Notice of Reliance, Exhibit H (R-Project, What is R?, n13 Allaire Discov. Dep. 126: n14 Allaire Dep. 204:7-23. Applicant notes that the wording "advanced statistical analysis" in the amended identification "is simply making explicit what is implicit in statistical computing." Id. at 205: Applicant's Section 18 defense and the import of the proposed restrictions to its field of software and related services are supported by the record. That is, applicant's CEO, Mr. Allaire, describes the function of applicant's RSTUDIO software as designed to act as a set of integrated [*16] tools that make it "easier" and "more productive" to work with the R computing language. n15 Because R is an open source environment within which statistical techniques are implemented, it can be easily extended via packages. It is estimated that there are hundreds of packages that have been created to do specialized tasks. n16 By way of example, applicant posits that a "user of RSTUDIO software might take a two dimensional dataset with several points of data related to patients with diabetes, such as gender, ethnicity, average weight, average glucose reading, etc., and load this dataset into RSTUDIO in order to perform statistical calculations on the data." Brief, p. 9, citing to Allaire Dep. 197:9-201:9. Ultimately, the function of applicant's software is limited to that of computer software for statistical computing using the R computing language and the data from two dimensional datasets. [*17] n15 Id. at 206:24-207: n16 Opposer's Notice of Reliance, Exhibit H.

38 2013 TTAB LEXIS 6, *; 105 U.S.P.Q.2D (BNA) 1825 Page 7 Although the opposed applications are based on an intent to use, there is evidence that applicant's software is available for download from its website. n17 Applicant also offers a "hosted" version of its software that can be accessed using a web browser. n18 Both the downloadable and hosted versions of the software are currently in "beta testing," meaning applicant has not yet released a final version of the software. n19 Applicant states that consumers currently do not pay for the software. n20 Applicant also states, "We don't know what the pricing's going to be [for the software] yet." n21 n17 Allaire Dep. at 180:18-181:7. n18 Id. at 182:22-183:3. n19 Id. at 182:5-9. n20 Id. at 184: n21 Allaire Discov. Dep. 34:6-7. The relevant consumers of applicant's software are "R programmers" who "use the R programming language to do statistical computing." n22 Applicant has indicated that "almost all" of the early adopters of its software have been educational [*18] institutions. n23 These consumers "are solving complex problems using a complex tool" n24 by "mak[ing] a pretty careful evaluation about what tools they use" and are considered "highly sophisticated." n25 n22 Allaire Dep. 184:1-3. n23 Allaire Discov. Dep. 34:8-11. n24 Allaire Dep. 184: n25 Id. at 185: Regarding applicant's services, the proposed identification restrictions limit the services to the field of software for advanced statistical computing using the R computing language and the data from two dimensional datasets. In particular and with respect to applicant's training services in International Class 41, applicant intends to train others in the use of the R computing language and RSTUDIO. n26 Likewise, for applicant's services in International Class 42, applicant intends to provide access to or use of RSTUDIO over a computer network by way of a web browser, n27 provide guidance on how to conduct analyses of data and other questions regarding how users [*19] may conduct their work, n28 design and develop software within RSTUDIO to assist users in performing statistical analyses, n29 and provide assistance with troubleshooting technical problems with the RSTUDIO software. n30 n26 Id. at 155:1-2, 156:3-19. n27 Id. at 158: n28 Id. at 159:5-14. n29 Id. at 160:5-6. n30 Id. at 160:9-16. Again, while the applications are based on an intent to use, the evidence shows that applicant's services are presently rendered directly from applicant, "typically through an ." n31 Though no actual prices have been set for these services, applicant has indicated that it intends to charge for these services. n32 And given that applicant's amended identifications relate specifically to its software product, it is presumed that the relevant consumer for applicant's software product is the same consumer of applicant's services. n31 Id. at 187:2-6. [*20]

39 2013 TTAB LEXIS 6, *; 105 U.S.P.Q.2D (BNA) 1825 Page 8 n32 Id. at 186: When it comes to the actual advertising of applicant's software and related services, applicant does not engage in any "explicit promotional activities" n33 but instead relies primarily on word-of-mouth promotion from its beta customers. n34 In addition, applicant has visited some schools to promote its goods, n35 as well as a conference "dedicated to the use of R." n36 n33 Allaire Discov. Dep. 62: n34 Id. at 62: See also Allaire Dep. 184:4-9 ("Typically [customers] would hear from maybe a colleague or a friend that, hey, there's a tool out there that makes it easier to work with R, and so then they would come to the website, maybe look at some of the screen shots, satisfy themselves that it's worth their time to download it, and then download it."). n35 Allaire Discov. Dep :17-6. n36 Id. at 66-67:17-8. B. Opposer's Software [*21] Opposer first developed a software product being sold under the mark ER/STUDIO in n37 The pleaded registration for said mark issued in 1998 and covers "entity relationship modeling software for SQL databases." The record reveals that "entity relationship modeling software for SQL databases" refers to software for developing a "relational database." n38 A relational database is one that stores data in multiple tables, with the tables usually having a common field that allows the data to be categorized by a particular event. n39 In such a database, the data relationship is presented visually. n40 This is distinguished from a "two dimensional dataset," which typically consists of one table with different values, usually in the forms of columns and rows. n41 Accordingly, the relational database allows for more factors to be considered than would be found in a two dimensional database. n37 Tiret Dep. 131:01, 172: Prior to this date, Mr. Tiret testified the product was called ER/1. Id. at 172:6-10; see also Tiret Discov. Dep. 27:4. The product released as ER/STUDIO would eventually become known as ER/Studio Data Architect. Tiret. Dep. 173:9-12. [*22] n38 Tiret Discov. Dep. 18:18-23, 26:19-27:16. Opposer also notes in its explanation of its exhibits in its Rebuttal Notice of Reliance that Exhibit E (excerpts from the manual R Data Import/Export) consists of a manual that "shows how the R language is well adapted to work with relational databases, such as ER/Studio." n39 Tiret Discov. Dep. 17:7-19:13. We also take judicial notice of the definition of "relational database" from The American Heritage(r) Dictionary of the English Language (4th ed. 2000): "A database system in which any database file can be a component of more than one of the database's tables." The Board may take judicial notice of definitions obtained from dictionaries that (1) are available in a printed format, (2) are the electronic equivalent of a print reference work, or (3) have regular fixed editions. TBMP ; see Fed. R. Evid. 201; 37 C.F.R (a). n40 Tiret Discov. Dep. 17:21-19:13, 26:19-27:16. n41 See Allaire Dep. 126:20-127:3; Allaire Discov. Dep. 40:

40 2013 TTAB LEXIS 6, *; 105 U.S.P.Q.2D (BNA) 1825 Page 9 In addition to the software product identified in [*23] the registration, opposer has used ER/STUDIO, either by itself or combined with other wording, on the following complementary software goods, which opposer refers to generally as "design and architecture tools": n42. ER/Studio Data Architect (data modeling tools for designing and understanding databases); n43. ER/Studio Business Architect (process modeling, or the exercise of mapping out a business process, n44 and conceptual modeling, or "a way to map out the technical infrastructure of an organization" n45); n46. ER/Studio Software Architect (application development); n47. ER/Studio Repository (stores database development models); n48. ER/Studio Portal (searches and reports from a browser metadata stored in ER/Studio Repository); n49. ER/Studio Metawizard (takes metadata from the logical or physical design and exports it to another format; n50 it "helps translate the model to another format"); n51. ER/Studio Viewer (a read-only product that allows users to see, navigate, and print databases); n52. ER/Studio Developer Edition (allows users to create databases and also create software that will interact with the databases); n53. [*24] ER/Studio Enterprise (bundles ER/Studio Business Architect, ER/Studio Data Architect, ER/Studio Software Architect, ER/Studio Repository, and ER/Studio Portal); n54. ER/Studio XE (same as ER/Studio Enterprise, but adds ER/Studio Metawizard to the bundle of software provided); n55 and. ER/Studio Standard ("Provides complete environment for analyzing, designing, creating, and maintaining database applications"). n56 n42 Tiret Dep. 112:24. n43 See id. at 115:21-22, 118:12-17, Exhibit 5; see also Tiret Discov. Dep. 14:12-19:13. n44 Tiret Discov. Dep. 12: n45 Id. at 12-13:22-1. n46 See Tiret Dep. 115:15-17, 120: , Exhibit 5; see also Tiret Discov. Dep. 19:17-21:14 n47 See Tiret Dep. 118:18-120:6-20; see also Tiret Discov. Dep. 21:18-22:25 n48 See Tiret Dep. 121:3-25; see also Tiret Discov. Dep. 23: n49 See Tiret Dep. 121:25-123:3-22, Exhibit 5; see also Tiret Discov. Dep. 23: n50 Tiret Discov. Dep. 23:25-25:10 n51 Id. at 24:6-7. [*25] n52 Id. at 25:19-26:1. n53 Id. at 26:5-13. n54 Tiret Dep. 118:5-10. n55 Id. at 115:13-15, 118:6-7. n56 Id. at Exhibit 9.

41 2013 TTAB LEXIS 6, *; 105 U.S.P.Q.2D (BNA) 1825 Page 10 Opposer's aforementioned software products (or database "design and architectural tools") are described by Mr. Tiret as for "anybody that needs a database, that needs to design or develop a database," as well as those that need to "design and develop the application code that would sit on top of the database." n57 The software products are offered to consumers in a variety of ways, such as direct sales representatives, telephone sales, third-party resellers, and opposer's own e-commerce website. n58 Opposer does not, however, offer these goods in any retail settings where consumers could walk in off the street and purchase the goods off the shelf. n59 The products are marketed on trade sites and in trade magazines, n60 as well as at an annual trade show. n61 Opposer estimates that it spends $ 500,000 per year on its various marketing activities. n62 Consumers of opposer's goods include "self-employed consultants" building [*26] databases for others and "some academic type of licenses sold to schools," n63 but opposer notes that its goods are for "general application use" and are not sold to any specific industry. n64 Within larger organizations, opposer has identified "data modelers," "data analysts," "data architects," "database developers," "database architects," "application developers," "application architects," "business analysts," "database administrators," "software engineers," and "software developers" as potential end users of the products offered under the ER/STUDIO mark. n57 Id. 116: n58 Tiret Discov. Dep. 45: n59 Id. at 49: n60 Id. at 49: n61 Id. at 54: n62 Tiret Dep. 132: n63 Tiret Discov. Dep. 50: n64 Tiret Dep. 116: The sales cycle for the ER/STUDIO goods ranges "anywhere from a day to a year," n65 though opposer acknowledges that the one-day sales are "kind of rare." n66 The prices for opposer's [*27] goods range from $ 500 for ER/STUDIO VIEWER to $ 5,995 for ER/STUDIO XE, n67 and purchasers must also pay additional "required maintenance" fees ranging from $ 180 to $ 1,499 at the time of purchase of opposer's software. n68 n65 Tiret Discov. Dep. 48:8. n66 Id. at 48:22. n67 Id. at 62:21-64:13; see also Applicant's Notice of Reliance, Exhibit H. n68 Applicant's Notice of Reliance, Exhibit H. Standing Opposer has established its standing in this proceeding through its pleaded registration, which applicant has admitted opposer is the owner of and furthermore was made of record by opposer by attaching printouts from the Office electronic database with the Notice of Opposition showing current status and title thereof. Trademark Rule 2.122(d)(1). See also Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). Priority [*28] Because opposer's pleaded registration is of record, Section 2(d) priority is not an issue in this case as to the specific goods covered by said registration vis-a-vis applicant's marks and goods and services. King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). In addition, opposer has pleaded and attempts to rely on common law rights in ER/STUDIO, as well as the other aforementioned ER/STUDIO-formative marks, used on or in connection with software products that complement opposer's mainstay data modeling software tools for designing and understanding databases. Opposer has also pleaded and attempts to rely upon common law rights in the ER/STUDIO mark in connection with consulting services.

42 2013 TTAB LEXIS 6, *; 105 U.S.P.Q.2D (BNA) 1825 Page 11 In contrast to its rights acquired via its pleaded and uncontested registration, and to the extent opposer wishes to rely on its common law rights, it must establish priority with respect to such rights. That is, opposer must prove by a preponderance of the evidence that its common law rights were acquired before any date upon which applicant may rely. Trademark Act Section 2, 15 U.S.C. 1052; Hydro-Dynamics Inc. v. George Putnam & Company Inc., 811 F.2d 1470, 1 USPQ2d 1772, 1773 (Fed. Cir. 1987) [*29] (The "decision as to priority is made in accordance with the preponderance of the evidence"). For priority purposes, applicant, at the very least, can rely on the filing date of its trademark applications, March 16, Zirco Corp. v. American Telephone and Telegraph Co., 21 USPQ2d 1542, 1544 (TTAB 1991) ("[T]here can be no doubt but that the right to rely upon the constructive use date comes into existence with the filing of the intent-to-use application and that an intent-to-use applicant can rely upon this date in an opposition brought by a third party asserting common law rights."). Mr. Tiret, opposer's Director of Modeling and Design Solutions in the Product Management Department, testified that opposer began using the mark ER/STUDIO in 1997 in connection with database design and construction, n69 and the evidence attached to that testimony (consisting of archived web pages from opposer's website) supports this assertion. n70 The record also shows that opposer began using the mark ER/STUDIO in connection with other terms on related products that provide additional functions or extend the capability of opposer's flagship database and design software, as described [*30] in the pleaded registration. Specifically, opposer has used the mark ER/STUDIO REPOSI- TORY since at least 2002, n71 and the marks ER/STUDIO STANDARD, ER/STUDIO ENTERPRISE, n72 and ER/STUDIO VIEWER since at least n73 In addition, the record establishes that opposer also began using the marks ER/STUDIO XE, ER/STUDIO DATA ARCHITECT, and ER/STUDIO BUSINESS ARCHITECT at least as early as n74 Accordingly, we find that opposer has established prior common law rights in the aforementioned marks on software products that generally supplement features or functions of opposer's entity relationship modeling software for SQL databases by allowing for the storing of models, the viewing of databases, and process and conceptual modeling. n75 n69 Tiret Dep. 131:01, 172: n70 Id. at Exhibit 9. n71 Id. at 134:18-24, Exhibits 6, 9. n72 In contrast to how these goods were described in the "Opposer's Software" portion of the "Background Discussion" section of this opinion, this software is described in Exhibit 9 of the Tiret Deposition as follows: "Includes the server-side ER/Studio Repository for improved teamwork and enterprise collaboration and Embarcadero's business process and conceptual modeling tool, EA/Studio." [*31] n73 Tiret Dep., Exhibit 9. n74 Applicant's Notice of Reliance, Exhibit H. n75 For a specific breakdown of which software performs what function, see discussion thereof, supra, pp ("Opposer's Software"). Mr. Tiret's testimony, and related exhibits, includes references to other trademarks and software products; however, it has not been shown by the preponderance of the evidence, that opposer has prior common law rights in such marks. For example, one of opposer's exhibits attached to Mr. Tiret's testimony (Exhibit 6) includes references to certain other goods sold under the ER/Studio Software Architect mark, but there is no indication that use of such mark on the goods began prior to March 16, While certain exhibits display copyright dates of "2009," this does not establish that the marks identified in the documents were actually in use prior to applicant's filing date such that prior common law rights may be claimed. With respect to any common law rights for services, it has not been shown that opposer has used the mark ER/STUDIO (alone or in combination [*32] with other wording) in connection with any software-related services prior to March 16, In view of the above, our likelihood of confusion analysis is limited to opposer's ER/STUDIO registration and the goods identified therein, as well as opposer's prior common law rights in ER/STUDIO-formative marks and the respec-

43 2013 TTAB LEXIS 6, *; 105 U.S.P.Q.2D (BNA) 1825 Page 12 tive goods on which they are used, vis-a-vis applicant's RSTUDIO mark and the goods and services identified in the applications. Likelihood of Confusion Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). However, not all the factors are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011); In re Majestic Distilling Co., 315 F.3d at 1315, 65 USPQ2d at 1204; [*33] see In re E. I. du Pont de Nemours & Co., 177 USPQ at 567. A. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. We initially address the du Pont factor involving the similarity or dissimilarity of the marks when viewed in their entireties in terms of appearance, sound, connotation and commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); see also In re E. I. du Pont De Nemours & Co., 177 USPQ at 567. Although opposer has demonstrated prior common law rights in several ER/STUDIO-formative marks, we make a comparison only between opposer's ER/STUDIO mark and applicant's RSTUDIO mark because it is the most similar mark, and therefore the one on which opposer is most likely to prevail. That is, in examining the similarity, the other ER/STUDIO-formative marks are clearly further removed inasmuch as they possess additional terms not found in applicant's mark. If the opposition is to be sustained based on opposer's ER/STUDIO mark, then we need not consider [*34] the other marks. If the opposition cannot be sustained on the ER/STUDIO mark, it will not be sustained based on other marks which are more distinguishable from applicant's mark. In comparing the RSTUDIO and ER/STUDIO marks, the obvious points of similarity are that they are prefaced with the letters "ER" or "R" and share the element "STUDIO." Furthermore, while "there is no correct pronunciation of a trademark," In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012); In re Belgrade Shoe Co., 411 F.2d 1352, 56 C.C.P.A. 1298, 162 USPQ 227 (CCPA 1969), we find that the two marks are likely to be verbalized in a similar manner by at least a significant number of consumers. Cf. Interlego AG v. Abrams/Gentile Entertainment Inc., 63 USPQ2d 1862 (TTAB 2002) (finding that LEGO and MEGO would be pronounced similarly). On the other hand, because opposer's mark begins with the letter E, there is a noticeable visual difference in the marks as well as a reason to pronounce the marks differently. Our analysis concerning the similarity of the marks, however, does not end with their appearance and sound. Rather, we must also look at any commercial [*35] impressions or connotations created by the marks and, in doing so, we consider the marks in relation to the identified goods and services. See e.g., Coach Services, Inc. v. Triumph Learning LLC, 96 USPQ2d 1600 (TTAB 2010), aff'd, 668 F.3d 1356, 101 USPQ2d 1713 (Fed. Cir. 2012) (COACH for educational software does not dilute or create likelihood of confusion with COACH for handbags, luggage, etc.); In re Sears, Roebuck & Co., 2 USPQ2d 1312 (TTAB 1987) (CROSSOVER for brassieres creates a different commercial impression from CROSSOVER for ladies' sportswear); In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984) (PLAYERS for shoes engenders a different commercial impression from PLAYERS for underwear); see also In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1373 (Fed. Cir. 2004) ("The Board must, of course, determine the commercial impression of a mark in the proper context of the goods or services associated with that mark.") (citation omitted). In this case, the parties' marks engender different commercial impressions when considered in the context of applicant's described goods and services, as [*36] amended, and opposer's goods. That is, each of the letter prefixes employed in the marks, "R" and "ER", has a uniquely different and specific meaning as applied to the respective types of software being sold under each mark. First, with respect to opposer's mark, consumers of opposer's entity relationship modeling software will understand the letters "ER" as a recognized abbreviation for "entity relationship." The record includes printouts from approximately fifty (50) different websites showing the acronym "ER" as an abbreviation or in a substantially synonymous manner as the term "entity relationship" in connection with databases. n76 The following are representative excerpts from these websites:

44 2013 TTAB LEXIS 6, *; 105 U.S.P.Q.2D (BNA) 1825 Page 13 htm: "An entity-relationship (ER) diagram is a specialized graphic that illustrates the interrelationships between entities in a database." ity-relationship-model: "The entity-relationship model (or ER model) is a way of graphically representing the logical relationships of entities (or objects) in order to create a database." [*37] ty+relationship+model&i=42662,00.asp: "Definition of: entity relationship model. A database model that describes the attributes of entities and the relationships among them. An entity is a file (table). Today, ER models are often created graphically, and software converts the graphical representations of SQL code required to create the data structures in the database." atamodeling/index.html: "This document is an informal introduction to data modeling using the Entity-Relationship (ER) approach." "Aqua Data Studio offers an Entity Relationship (ER) Modeler for all major RDBMSes." n76 Applicant's Notice of Reliance, Exhibit F. Moreover, opposer has acknowledged that most of the users of its products, or database modeling software in general, would understand "ER" to mean "entity relationship." n77 [*38] n77 Tiret Discov. Dep. 95:8-24. Applicant's mark, on the other hand, is prefaced with the letter "R" and, as previously discussed, R is the name of the software programming language that provides the subject matter and field of use for applicant's RSTUDIO software and related services, as amended. Thus, the "R" element of applicant's mark clearly identifies the nature of applicant's advanced statistical computing software using the R computing language as well as the training and consulting services involving the R programming language. Consumers of the described goods and services will immediately understand the descriptive significance of R, as used in applicant's mark in connection with the goods and services. As to the latter, common element, STUDIO, the record establishes convincingly that this term is used frequently by third parties in the names of various types of software products. There are fifty (50) different websites using the word "studio" in connection with or on software goods. n78 The following are representative examples: ("Aqua Data Studio" for database software); ("Datafeed Studio" for database development software); [*39] com/software/data/optim/data-studio ("IBM Data Studio" for database development and management software); ("SAS/IML Studio" for statistical programming software);

45 2013 TTAB LEXIS 6, *; 105 U.S.P.Q.2D (BNA) 1825 Page 14 ("SQL Studio Data Compare" for database comparison and development software) ("EMS SQL Management Studio 2010 for Oracle" for database administration and development software) n78 Applicant's Notice of Reliance, Exhibit E. In addition, opposer has acknowledged that STUDIO is "sometimes used in the software industry to suggest a collection of tools or programs in a way somewhat analogous to what one may find in an artist's 'Studio' or a music 'Studio'." n79 Opposer's witness, Mr. Tiret, characterized "studio" as "a general term" used in connection with software. n80 [*40] n79 Id. at Exhibit B, at p. 11 (opposer's response to applicant's interrogatories). n80 Tiret Discov. Dep. 97: Based on the record, we find that the common term, STUDIO, is highly suggestive and commonly adopted by third parties in connection with software. It thus lacks any significant degree of distinctiveness so as to warrant anything more than a narrow scope of protection. See Rocket Trademarks Pty Ltd. v. Phard S.p.A., 98 USPQ2d 1066, (TTAB 2011); Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313, (TTAB 2005). Our primary reviewing court has long held that highly suggestive common elements are not accorded great weight in the likelihood of confusion calculus. See, e.g., Pioneer Hi-Bred Corn Co. v. Welp, 280 F.2d 151, 47 C.C.P.A. 1118, 1960 Dec. Comm'r Pat. 456, 126 USPQ 398 (CCPA 1960) ("The record shows that both parties deal in hybrid poultry, and 'Hy' therefore has a suggestive significance, hence is not entitled to as great weight in determining likelihood of confusion as an arbitrary word or syllable."); Lauritzen & Co. v. The Borden Co., 239 F.2d 405, 44 C.C.P.A. 720, 1957 Dec. Comm'r Pat. 100, 112 USPQ 60, 62 (CCPA 1956) ("In the instant case, the [*41] syllable 'lac,' which is common to the two trademarks under consideration, has a somewhat descriptive connotation as applied to milk products, and has been commonly used as a portion of trademarks for such products. Accordingly, it should be given little weight in determining whether those marks are confusingly similar."); see also Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 56 USPQ2d 1351 (Fed. Cir. 2000) ("it is proper to give greater weight to the PACKARD portion of the PACKARD TECHNOLOGIES mark on the ground that the word "technology" is highly suggestive/merely descriptive with respect to the services at issue"); and Land-O-Nod Co. v. Paulison, 220 USPQ 61 (TTAB 1983) (CHIROPRACTIC and CHI- RO-MATIC). Accordingly, we find a degree of similarity in the marks' appearance and sound; however, each mark possesses a separate and distinctively different commercial impression and connotation. The common element STUDIO is highly suggestive and weak and commonly adopted in the field of software. Consumers, viewing the marks in their entireties, will therefore focus on the initial letters, R and ER, and when viewing these marks on or in connection [*42] with the respective types of software and services, they will be able to distinguish the marks. n81 Accordingly, this du Pont factor weighs in favor of not finding a likelihood of confusion, despite the aural and visual similarity of the marks. n81 For sake of clarity, we do not find that the letter "R" will necessarily have the same distinctive connotation when considered in the context of applicant's broadly-worded, unamended goods and services. Without the Section 18 defense proposed amendments to applicant's goods and services, it stands to reason that the letter "R" would be less likely understood as a reference to the statistical software computing language.

46 2013 TTAB LEXIS 6, *; 105 U.S.P.Q.2D (BNA) 1825 Page 15 B. The similarity or dissimilarity and nature of the parties' goods and services We now turn to a consideration of the relatedness of the goods and services at issue in this case. As previously discussed, our likelihood of confusion determination is confined to the identifications of goods and services set forth in the opposed applications [*43] and the goods in the pleaded registration, as well as those goods on which opposer has established prior common law use. In comparing the parties' goods and services, we consider whether "the respective products are related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source." Coach Services, Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (citing 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). On the other hand, and with particular relevance to this proceeding, given that computer software is employed in nearly all industries and facets of life, the fact that both parties' goods are computer software is not sufficient, in and of itself, to establish a relationship between the goods. See, e.g., M2 Software, Inc. v. M2 Communications, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1948 (Fed. Cir. 2006) ("Moreover, given the pervasiveness of software and software-related goods in society, it would be inappropriate to presume relatedness on the mere basis of goods being delivered [*44] in the same media format, especially where, as here, the goods described in both the application and registration are defined narrowly, along distinct industry lines."); Electronic Data Systems Corp. v. EDSA Micro Corp., 23 USPQ2d 1460, 1463 (TTAB 1992) ("All computer software programs process data, but it does not necessarily follow that all computer programs are related. Given the ubiquitous use of computers in all aspects of business in the United States today, this Board and its reviewing Court have rejected the view that a relationship exists between goods and services simply because each involves the use of computers."). With the above in mind, we first address applicant's described goods and services, as published for opposition and without regard to the proposed amended identifications, vis-a-vis opposer's goods, and readily find them to be related. Applicant's "computer software for software applications development" is broad enough to include database software applications and, in which case, would clearly be related to opposer's database modeling software. The unamended descriptions of services are even more broadly termed and encompass training and consulting [*45] services in the particular field of opposer's database modeling software. Accordingly, we find applicant's described goods and services, without amendments thereto, are related to opposer's software. This brings us to a second, separate analysis under Section 2(d), involving applicant's goods and services, as described in the amended descriptions, vis-a-vis opposer's goods. Again, by way of the amendments, the International Class 9 goods are identified as, "computer software for advanced statistical computing using the R computing language and the data from two dimensional datasets." Similarly, applicant has restricted its training, consulting and application service provider (ASP) services in International Classes 41 and 42 to the field of software using the R computing language and data from two dimensional datasets. Applicant's proposed amendments to its descriptions of goods and services are significant; they narrow applicant's software goods and related services to a particular field of use that is unrelated to opposer's software. Applicant's software cannot function unless the R computing language is part of a user's system. n82 Applicant's software also cannot be used [*46] to construct or maintain a relational database n83 and does not have the inherent ability to interface or interact directly with relational databases. n84 Ultimately, applicant provides software for advanced statistical analysis of external two-dimensional data. n85 n82 Allaire Dep. 124:16-125:3. n83 Id. at 134:3-5. n84 Id. at 131:21-132:05. n85 Id. at 128:6-11. Opposer points to the fact that its software performs statistical analysis. However, the nature of the analysis is quite different from that performed by applicant's software. Opposer's software is quite removed from the R computing language and has no native ability to perform statistical analysis of external data in the databases ultimately created by us-

47 2013 TTAB LEXIS 6, *; 105 U.S.P.Q.2D (BNA) 1825 Page 16 ers of its software. n86 Rather, any statistical analyses performed by opposer's software is confined to "metadata," which is defined as, "details of the information contained in a large computer database, for example who wrote the information and what format [*47] it is in." n87 Thus, it appears that the statistical functions performed by opposer's software are merely ancillary to the main function of the software, which is database design and development. We consider opposer's software statistical feature as being akin to word processing software that also provides statistical analysis in the form of providing the number of pages, words, paragraphs, lines, and characters in a written document through a "word count" or similar feature. The fact that word processing software may provide a statistical analysis in such a manner does not make it software for statistical analysis, and consumers would not purchase it to perform statistical analysis. Another example is video game software, which may provide statistics such as number of games played, high scores, and win/loss ratios. Again, however, the fact that video game software may offer certain game statistics does not mean that consumers would consider it software for statistical analysis. In sum, it remains that opposer's software products, even in expanded form and including all features for which it has shown prior common law use, cannot be considered software for statistical analysis [*48] or otherwise sufficiently related to applicant's software. n86 Tiret Dep. 174:6-9. n87 We take judicial notice of the dictionary definition of "metadata" from Macmillan Dictionary (2012), available at See n. 39, supra. Opposer argues that various third-party "plug-ins" and "bridge" software are available that may make applicant's software compatible with opposer's software. We have considered this argument and the evidence in support thereof. However, this does not persuade us that the parties' respective software products are related. Although a consumer may conceivably use opposer's software to develop a database and then, with the assistance of third-party plug-in software, applicant's software may be used later to analyze the data that populates the database, this does not necessarily translate into the parties' software products being related. The functions of the software products remain very different and would be [*49] so viewed by the respective users. That is, even if RSTUDIO users could use third-party plug-in software so that they could access data from an ER/STUDIO-developed (or other entity relationship) database, the fact remains that statistical computing software is very different from design tool software used for designing and maintaining relational databases. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1692 (Fed. Cir. 1993); Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399 (TTAB 2010) (we are not concerned with mere "theoretical possibilities" of likelihood of confusion). We have also considered opposer's argument that relevant purchasers would think the different products related due to opposer's broad suite of software products: "a customer can use ER/STUDIO to design a database or software and then go in to build applications on top of the database or software using [opposer's software tools]." Brief, p. 40. In this regard, although we have found the evidence lacking with regard to establishing priority as to opposer's common law rights in ER/Studio Software Architect, we nevertheless consider the evidence probative to the extent [*50] that it shows related software products and portrays a possible natural scope for expansion. After careful consideration of all the software products for which opposer has established prior common law rights in the mark ER/STUDIO, we do not find that they, individually or as a group, are sufficiently related to applicant's goods or services; nor does their existence establish a relationship between opposer's entity relationship modeling software for SQL databases and applicant's goods and services, or otherwise bring them closer. Rather, opposer's software products being sold under the ER/STUDIO or ER/STUDIO-formative marks, as described above, are very much integrated with opposer's database modeling software identified in the pleaded registration. Opposer's software products, for which it has established prior common law rights, do not appear to have any connection to applicant's advanced statistical software using the R computing language and the data from two dimensional datasets, and we do not find them to be significantly related. In conclusion, we find applicant's software and related services, identified in their broader form in the applications as published, to be related [*51] to opposer's software. In contrast, taking applicant's proposed amendments into account, we do not find any significant relationship between the respective software products of the parties other than falling under the very broad product category of "software." Applicant's services are even one step further removed inasmuch as they involve a service, e.g., consulting, training, technical support, etc., in the field of the R computing language software.

48 2013 TTAB LEXIS 6, *; 105 U.S.P.Q.2D (BNA) 1825 Page 17 C. Trade channels, classes of purchasers, and conditions under which and buyers to whom sales are made, i.e., "impulse" vs. careful, sophisticated purchasing. The parties have presented contrasting arguments on the du Pont factors involving relatedness of trade channels and classes of purchasers, as well as the conditions under which the parties' software products and services are sold. Ultimately, and for reasons explained further below, these factors either remain neutral in our likelihood of confusion analysis or weigh in favor of finding no likelihood of confusion. As to the classes of purchasers, the parties have correctly noted that the applications and pleaded registration do not contain any limitations in [*52] their descriptions of the goods and services. We must therefore presume that they travel in the normal trade channels and are offered to the usual classes of purchasers for the respective goods and services. Citigroup Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261; Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). However, because opposer's goods are not the same as applicant's goods and services, as identified in its amended descriptions, we cannot presume these trade channels and classes of purchasers to necessarily be the same. The record does not establish that the normal trade channels or classes of purchasers for opposer's entity relationship modeling software for SQL databases match the trade channels and classes of purchasers for applicant's software goods and services. Instead, the record as a whole suggests that the R computational language is used mostly by statisticians while ER/STUDIO is mostly used by information architects and database administrators responsible for the design, storing and maintenance of large databases. That is not to say that there is no possibility of any overlap between the two classes [*53] of consumers. However, as seen under the fourth du Pont factor, any overlap between the two will involve sophisticated users in both professions. Indeed, the nature of the parties' respective software products makes any potential confusion unlikely. The record shows that consumers of both opposer's and applicant's respective goods and services are likely to be very knowledgeable of the types of products and the purpose of what they are purchasing. Again, opposer's own witness testified that while it is possible for a sales cycle of opposer's software to be "one-day," this would be "kind of rare" and typical sales cycles are more likely a question of "maybe weeks, months...." Moreover, the pricing point of opposer's software varies, and the fact that it is not found in retail stores leads us to conclude that opposer's products are not inexpensive and require considerable forethought prior to purchase. As to applicant's software, it has been shown that the software will be sought by consumers who are equally experienced in their specific field, namely, advanced statistical analysis, and they will be looking to use applicant's software for particular purposes which are rather [*54] different from the uses of opposer's software. In short, consumers of both parties' software are likely to be sophisticated and well-informed in seeking the respective and very different products and services of applicant and opposer. The fact that the parties' goods are of a very technical and specialized nature, not the types of software to be purchased in retail stores, and the fact that they will be purchased by technology professionals highly familiar with the different nature, use and purpose of each software product, carry great weight and diminish any likelihood of confusion. See Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992) ("sophistication is important and often dispositive because sophisticated consumers may be expected to exercise greater care;" reversing the Board and finding no likelihood of confusion resulting from the contemporaneous use of E.D.S. and EDS despite the fact that "the two parties conduct business not only in the same fields but also with some of the same companies."). See also J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition 23:101 (4th ed. [*55] 2009) ("Where the relevant buyer class is composed solely of professional, or commercial purchasers, it is reasonable to set a higher standard of care than exists for consumers."). Based on the record and the circumstances particular to this case, the factors involving purchasing conditions and sophistication of consumers weigh in favor of finding no likelihood of confusion. E. Balancing the factors - Applicant's Section 18 Defense In balancing the likelihood of confusion factors based on the unamended goods and services in the involved applications, we find there would be a likelihood of confusion. Accordingly, applicant's assertion of the Section 18 defense, alternatively raised in the event the Board finds a likelihood of confusion, is relevant. Applicant has established its Section 18 defense. With the amended descriptions of goods and services in place, and upon weighing all relevant du Pont factors, we find no likelihood of confusion. Although the marks are similar in sound and appearance, they possess different connotations and create quite different commercial impressions when viewed and understood in the context of the parties' respective goods and services. [*56] The shared element, STUDIO, is extensively used by third parties in connection with various kinds of software, and consumers are therefore less likely to at-

49 2013 TTAB LEXIS 6, *; 105 U.S.P.Q.2D (BNA) 1825 Page 18 tribute source-identifying significance in this highly suggestive term. Thus, the overall commercial impression of and connotation created by applicant's mark, RSTUDIO, is dominated by the prefix R and will be readily understood as a reference to the R programming language. By contrast, the ER prefix in opposer's mark informs consumers of the function or field of use for opposer's entity relationship (ER) software. The respective software products possess very different functions and purposes and it is unlikely they will be used in conjunction with one another in a meaningful manner whereby consumers would mistakenly believe they emanate from a common source. Significantly, it has also been shown that consumers of the respective goods and services possess a degree of sophistication. The respective consumers will seek out the software products with a higher level of forethought and knowledge in the distinctively different functions of the parties' software. Legal Topics: For related research and practice materials, see the following legal topics: Trademark LawLikelihood of ConfusionGeneral OverviewTrademark LawProtection of RightsRegistrationGeneral OverviewTrademark LawU.S. Trademark Trial & Appeal Board ProceedingsOppositionsGrounds

50 Page 1 Caution As of: Mar 24, 2014 PALM BAY IMPORTS, INC., Appellant, v. Veuve Clicquot Ponsardin MAISON FONDEE EN 1772, Appellee UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT 396 F.3d 1369; 2005 U.S. App. LEXIS 2020; 73 U.S.P.Q.2D (BNA) 1689 February 9, 2005, Decided PRIOR HISTORY: [**1] Appealed from: United States Patent and Trademark Office Trademark Trial and Appeal Board. (Opposition No. 115,438). Veuve Clicquot Ponsardin v. Palm Bay Imps., Inc., 2003 TTAB LEXIS 388 (Trademark Trial & App. Bd., Aug. 4, 2003) DISPOSITION: part. CASE SUMMARY: Affirmed in part and reversed in PROCEDURAL POSTURE: Appellant, an American wine importer, sought review of an order of the United States Patent and Trademark Office Trademark Trial and Appeal Board (Board) that refused registration of its trademark for a wine on the ground of likelihood of confusion with three of appellee French competitor's marks. The importer challenged findings as to the similarity of the marks, third-party uses, the fame of the competitor's marks, and purchaser sophistication. OVERVIEW: The importer filed an intent to use trademark application under 1(b) of the Lanham Act, 15 U.S.C.S. 1051(b), for the mark "VEUVE ROYALE" for its sparkling wine. The competitor filed an opposition with the Board, alleging a likelihood of confusion with its own marks for similar wines. Following denial of the application, the importer challenged the Board's findings as to four of the thirteen In re E.I. DuPont factors for determining likelihood of confusion. The Board did not err in finding a likelihood of confusion, except as to the finding for one of the marks, "THE WIDOW." Although the appellate court reversed the Board's conclusion as to one of the marks, it affirmed the Board's refusal to register the "VEUVE ROYALE" trademark. The court declined to find reversible error for two minor misstatements as to the similarity test, in an otherwise proper analysis, and found that "VEUVE" was an arbitrary term as applied to champagne and thus conceptually strong as a trademark, and distinctive, so its presence in both parties' marks enhanced the likelihood of confusion. Substantial evidence supported the Board's finding. The competitor had advertised its products heavily. OUTCOME: The Board's refusal to register the importer's mark was affirmed, except that the Board's finding of likelihood of confusion for one of the competitor's marks was not supported by substantial evidence, and that finding was reversed. LexisNexis(R) Headnotes Trademark Law > Likelihood of Confusion > Consumer Confusion > Circuit Court Factors > Federal Circuit Court Trademark Law > Protection of Rights > Registration > Principal Register

51 396 F.3d 1369, *; 2005 U.S. App. LEXIS 2020, **; 73 U.S.P.Q.2D (BNA) 1689 Page 2 [HN1] Likelihood of confusion under the Lanham Act, 15 U.S.C.S. 1025(d), is a legal determination based upon factual underpinnings. The United States Court of Appeals for the Federal Circuit determines the question on a case-specific basis, applying the thirteen In re E.I. DuPont factors without deference. At the same time, the court reviews factual underpinnings for that legal conclusion, namely the DuPont factors, for substantial evidence. Evidence is substantial if a reasonable person might find that the evidentiary record supports the agency's conclusion. Trademark Law > Likelihood of Confusion > Consumer Confusion > Circuit Court Factors > Federal Circuit Court [HN2] The first DuPont factor for determining likelihood of confusion with a trademark requires examination of the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. Trademark Law > Federal Unfair Competition Law > General Overview Trademark Law > Likelihood of Confusion > Consumer Confusion > Circuit Court Factors > Federal Circuit Court Trademark Law > Likelihood of Confusion > Similarity > Appearance, Meaning & Sound > General Overview [HN3] The sixth DuPont factor for determining likelihood of confusion with a trademark considers the number and nature of similar marks in use on similar goods. Evidence of third-party use of similar marks on similar goods is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection. Trademark Law > Likelihood of Confusion > General Overview [HN4] The probative value of third-party trademarks depends entirely upon their usage. Civil Procedure > Justiciability > Standing > Third Party Standing Trademark Law > Likelihood of Confusion > Similarity > Appearance, Meaning & Sound > General Overview [HN5] Where the record includes no evidence about the extent of third-party uses of similar trademarks, the probative value of such evidence is minimal. Trademark Law > Infringement Actions > General Overview Trademark Law > Likelihood of Confusion > Similarity > Appearance, Meaning & Sound > General Overview [HN6] The purpose of a trademark infringement defendant introducing third party uses of similar marks is to show that customers have become so conditioned by a plethora of such similar marks that customers have been educated to distinguish between different such marks on the bases of minute distinctions. Trademark Law > Dilution of Famous Marks > Factors Trademark Law > Likelihood of Confusion > General Overview Trademark Law > U.S. Trademark Trial & Appeal Board Proceedings > Oppositions > General Overview [HN7] Fame of an opposer's trademark, if it exists, plays a dominant role in the process of balancing the DuPont factors for determining likelihood of confusion with a trademark. Famous marks enjoy wide latitude of legal protection since they are more likely to be remembered and associated in the public mind than weaker marks, and are thus more attractive as targets for would-be copyists. Trademark Law > Dilution of Famous Marks > Factors Trademark Law > Likelihood of Confusion > General Overview [HN8] Fame for likelihood of confusion purposes and fame for dilution purposes are distinct concepts. While dilution fame is an either/or proposition, dilution fame either does or does not exist, likelihood of confusion fame varies along a spectrum from very strong to very weak. Trademark Law > Dilution of Famous Marks > Factors Trademark Law > Dilution of Famous Marks > Federal Trademark Dilution Act Trademark Law > Federal Unfair Competition Law > Trade Dress Protection > Causes of Action [HN9] Under the 1996 Federal Trademark Dilution Act (FTDA), 15 U.S.C.S. 1125(c), only famous marks are protected. The FTDA lists eight nonexclusive factors courts are to consider in determining whether a mark is distinctive and famous. 15 U.S.C.S. 1125(c)(1)(A)-(H). Trademark Law > Likelihood of Confusion > Consumer Confusion > Circuit Court Factors > Federal Circuit Court [HN10] The United States Court of Appeals for the Federal Circuit holds that the proper legal standard for evaluating the fame of a mark is the class of customers and

52 396 F.3d 1369, *; 2005 U.S. App. LEXIS 2020, **; 73 U.S.P.Q.2D (BNA) 1689 Page 3 potential customers of a product or service, and not the general public. Trademark Law > Conveyances > General Overview Trademark Law > Likelihood of Confusion > Consumer Confusion > Circuit Court Factors > Federal Circuit Court [HN11] The fourth DuPont factor for determining likelihood of confusion with a trademark examines the conditions under which, and to whom, sales are made. Purchaser sophistication may tend to minimize likelihood of confusion. Impulse purchases of inexpensive items may tend to have the opposite effect. Trademark Law > Foreign & International Protections > General Overview Trademark Law > Likelihood of Confusion > Similarity > Appearance, Meaning & Sound > Meaning [HN12] Under the doctrine of foreign equivalents, foreign words from common languages are translated into English to determine genericness, descriptiveness, and similarity of connotation in order to ascertain confusing similarity with English word marks. When it is unlikely that an American buyer will translate the foreign mark and will take it as it is, then the doctrine of foreign equivalents will not be applied. COUNSEL: Edmund J. Ferdinand, III, Grimes & Battersby, LLP, of Norwalk, Connecticut, argued for appellant. With him on the brief was Gregory J. Battersby. Marie V. Driscoll, Fross Zelnick Lehrman & Zissu, P. C., of New York, New York, argued for appellee. With him on the brief was John Margiotta. JUDGES: Before MICHEL, Chief Judge, 1 RADER, and PROST, Circuit Judges. 1 Paul R. Michel assumed the position of Chief Judge on December 25, OPINION BY: RADER OPINION [*1370] RADER, Circuit Judge: Palm Bay Imports, Inc. (Palm Bay) appeals from the decision of the United States Patent and Trademark Office Trademark Trial and Appeal Board (Board) refusing registration of the mark Veuve Royale for sparkling wine on the ground of likelihood of confusion with three of opposer Veuve Clicquot Ponsardin's (VCP's) marks. Veuve Clicquot Ponsardin v. Palm Bay Imps., Inc., 2003 TTAB LEXIS 388, Opp'n No. 115,438, 2000 WL (T. T.A.B. Aug. 4, 2003). This court concludes that the Board did not err in finding a likelihood of confusion, but substantial evidence does not support such a finding [**2] for one of the marks. Even though this court reverses the Board's conclusion as to one of the marks, the Board's refusal to register Palm Bay's VEUVE ROYALE mark is affirmed. I. In April 1998, Palm Bay filed an intent-to-use trademark application under Section 1(b) of the Lanham Act, 15 U.S.C. 1051(b), for the mark Veuve Royale for "alcoholic beverages, namely, sparkling wine." Veuve Clicquot Ponsardin, 2003 TTAB LEXIS 388 at *6-7. The examining attorney found no evidence of a similar mark that would bar registration on the ground of likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. 1052(d). In response to the June 22, 1999 Official Gazette publication of Palm Bay's application, VCP filed an opposition with the Board, alleging a likelihood of confusion between Veuve Royale and five of its own marks. Specifically, VCP asserted a likelihood of confusion based on the following [*1371] marks: (1) Veuve Clicquot Ponsardin; (2) Veuve Clicquot; (3) Veuve Clicquot Ponsardin Design; (4) The Widow; and (5) LA Viuda. On August 4, 2003, the Board refused registration of VEUVE ROYALE, finding a likelihood of confusion with (1) VEUVE CLICQUOT PONSARDIN [**3], (2) VEUVE CLICQUOT, and (3) THE WIDOW. The Board dismissed VCP's Section 2(d) claim for La Viuda finding the doctrine of foreign equivalents inapplicable to marks in two different foreign languages, i. e., Spanish and French. Palm Bay appeals. II. [HN1] Likelihood of confusion under the Lanham Act, 15 U.S.C. 1052(d), is a legal determination based upon factual underpinnings. On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1084 (Fed. Cir. 2000). This court determines the question on a case-specific basis, applying the thirteen factors set forth in In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C. C.P.A. 1973), without deference. In re Int'l Flavors & Fragrances, Inc., 183 F.3d 1361, 1365 (Fed. Cir. 1999). At the same time, this court reviews factual underpinnings for that legal conclusion, namely the DuPont factors, for substantial evidence. Dickinson v. Zurko, 527 U.S. 150, 156, 144 L. Ed. 2d 143, 119 S. Ct (1999); Bose Corp. v. QSC Audio Prods., 293 F.3d 1367, 1370 (Fed. Cir. 2002). Evidence is substantial if "a reasonable person [**4] might find that the evidentiary record

53 396 F.3d 1369, *; 2005 U.S. App. LEXIS 2020, **; 73 U.S.P.Q.2D (BNA) 1689 Page 4 supports the agency's conclusion." On-Line Careline, 229 F.3d at III. The VEUVE Marks Palm Bay asserts that the Board erred in its findings on four DuPont factors during analysis of VEUVE CLICQUOT and VEUVE CLICQUOT PONSARDIN: (1) the similarity of the marks; (2) third-party use of the term VEUVE; and (3) the fame of VCP's marks; and (4) purchaser sophistication (corresponding to the first, sixth, fifth and fourth DuPont factors, respectively). A. [HN2] The first DuPont factor requires examination of "the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression." DuPont, 476 F.2d at Palm Bay contends that the Board made two errors in finding that Veuve Royale was confusingly similar to VCP's marks. First, it claims that the Board misstated the legal test of similarity by treating "commercial impression" as the ultimate conclusion rather than as a separate factor. Second, Palm Bay claims the Board erred in finding that VEUVE was the "prominent feature" of VCP's marks. Instead, argues Palm Bay, CLICQUOT is the dominant feature. [**5] 1. Test for Similarity The Board phrased the legal test for similarity as whether the marks "when compared in their entireties in terms of appearance, sound and connotation, are similar or dissimilar in their overall commercial impressions." Veuve Clicquot Ponsardin, 2003 TTAB LEXIS 388 at *31. After conducting a thorough analysis of the appearance, sound, meaning, and commercial impression of the marks, the Board concluded that they were "more similar than dissimilar in their overall commercial impression for purposes of the first DuPont factor." 2003 TTAB LEXIS 388 at *35. In both instances, the Board treated "commercial impression" as the ultimate conclusion under this prong rather than as a separate factor along with appearance, sound, and meaning. Palm Bay contends that the [*1372] Board's inaccurate paraphrase of the legal standard infected its analysis and constitutes reversible error. This court declines to find reversible error merely because the Board, in two instances, made a minor misstatement of the similarity test in an otherwise proper analysis. Moreover, this court's precedent counsels that the phrase "commercial impression" is occasionally used as a proxy for the ultimate conclusion [**6] of similarity or dissimilarity of marks resulting from a comparison of their appearance, sound, and meaning. Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, (Fed. Cir. 2002) (holding that PACK- ARD TECHNOLOGIES and HEWLETT PACKARD differ in appearance and sound, but the marks convey a similar commercial impression because consumers would be aware of Hewlett-Packard's heavy involvement in technology-based goods, and therefore the marks are similar in their entireties); Kenner Parker Toys, Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 355 (Fed. Cir. 1992) (holding that in light of the appearance, sound and meaning of the marks PLAY-DOH and FUNDOUGH, consumers may receive the "same commercial impression" from the marks); Morton-Norwich Prods., Inc. v. S.C. Johnson & Son, Inc., 531 F.2d 561, 562 (C. C.P.A. 1976) (holding that RAINFRESH is confusingly similar to RAIN BARREL given the close relationship of the goods and "similarity of commercial impressions"). 2. Significance of CLICQUOT Palm Bay next asserts that the Board gave insufficient weight to the relative dominance of CLICQUOT, while placing too much emphasis [**7] on the weaker VEUVE portion of VCP's marks. Palm Bay notes that VCP admitted that CLICQUOT was the most distinctive portion of its marks in a World Intellectual Property Organization (WIPO) Internet domain name proceeding, and that VCP has used CLICQUOT in its marketing materials, including radio spots, promotional products, and as the URL of its website ( Moreover, Palm Bay argues, VCP has no enforceable trademark rights in the term VEUVE, and has never used the term, standing alone, on its champagne bottles or in its marketing efforts. The Board correctly weighed the relative importance of VEUVE and CLICQUOT. VEUVE is an arbitrary term as applied to champagne and sparkling wine, and thus conceptually strong as a trademark. See, e. g., Nautilus Group, Inc. v. Icon Health & Fitness, Inc., 372 F.3d 1330, 1340 (Fed. Cir. 2004) (defining an arbitrary mark as "a known word used in an unexpected or uncommon way" and observing that such marks are typically strong). Indeed, VCP has made VEUVE a theme of its marketing efforts because of the history, and the widow Clicquot herself, connected with the origins of the company. To be sure, CLICQUOT is [**8] an important term in the mark, but VEUVE nevertheless remains a "prominent feature" as the first word in the mark and the first word to appear on the label. Not only is VEUVE prominent in the commercial impression created by VCP's marks, it also constitutes "the dominant feature" in the commercial impression created by Palm Bay's mark. Veuve Clicquot Ponsardin, 2003 TTAB LEXIS 388 at *37 (VEUVE is first word in mark; significance of ROYALE is more laudatory and less source-indicating than VEUVE or "widow"; arbitrary term VEUVE contributes more to commercial impression of product than ROY-

54 396 F.3d 1369, *; 2005 U.S. App. LEXIS 2020, **; 73 U.S.P.Q.2D (BNA) 1689 Page 5 ALE). The presence of this strong distinctive term as the first word in both parties' m arks renders the marks similar, especially in light of the largely laudatory (and [*1373] hence non-source identifying) significance of the word ROYALE. This case is distinguishable from cases upon which Palm Bay relies where this court found no likely confusion between marks involving a common term. See, e. g., Kellogg Co. v. Pack'em Enters, Inc., 951 F.2d 330 (Fed. Cir. 1991) (FROOTEE ICE for flavored ice bars not likely to cause confusion with FROOT LOOPS for breakfast cereal and related products); [**9] Keebler Co. v. Murray Bakery Prods. Inc., 866 F.2d 1386 (Fed. Cir. 1989) (PECAN SHORTIES not likely to cause confusion with PECAN SANDIES for cookies). In these cases, the common term is a generic or non-distinctive term. Here, the common term - VEUVE - is distinctive, and as such its presence in both parties' marks enhances the likelihood of confusion. Substantial evidence therefore supports the Board's finding that the marks are similar under the first DuPont factor. B. Palm Bay next contends that the Board erred in rejecting evidence of third-party use of at least five different alcoholic beverages that use the term VEUVE (or a foreign equivalent). [HN3] This assertion requires analysis of the sixth DuPont factor, which considers "the number and nature of similar marks in use on similar goods." DuPont, 467 F.2d at Evidence of third-party use of similar marks on similar goods is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection. General Mills, Inc. v. Kellogg Co., 824 F.2d 622, (8th Cir. 1987); J. Thomas McCarthy, 2 McCarthy on Trademarks and Unfair Competition [**10] 11: 88 (4th ed. 2001) (hereinafter McCarthy on Trademarks). In particular, Palm Bay argues that third-party evidence consists of at least five different alcoholic beverages that use the term VEUVE: (1) Viuda De Romero (tequila); (2) Veuve Castarde Bas Armagnac (brandy); (3) Veuve Roth Brandy (brandy); (4) Veuve De Lalande (sparkling wine); and (5) Veuve Du Vernay (sparkling wine). Each of these brands has at various points of time appeared in an industry trade publication, the Beverage Media Guide, which lists all beverage products in the wine and spirits categories sold by wholesalers to restaurants and retail stores in New York State. The Board rejected this evidence on the ground that the Beverage Media Guide is only distributed to the trade, and thus does not show the extent to which consumers actually encounter these brands in the marketplace. [HN4] The probative value of third-party trademarks depends entirely upon their usage. E. g., Scarves by Vera, Inc. v. Todo Imports, Ltd., 544 F.2d 1167, 1173 (2d Cir. 1976) ("The significance of third-party trademarks depends wholly upon their usage. Defendant introduced no evidence that these trademarks were actually [**11] used by third parties, that they were well promoted or that they were recognized by consumers."). While the Beverage Media Guide is compelling evidence that distributors were aware that the term VEUVE was used for other alcoholic products, it is not evidence that the consuming public was likewise aware. At best, the Beverage Media Guide is evidence that the consuming public could potentially be cognizant of third-party use of the term VEUVE. Absent evidence of the consuming public's awareness, however, the Beverage Media Guide standing alone does not suffice. [HN5] As this court has previously recognized where the "record includes no evidence about the extent of [third-party] uses... the probative value of this evidence is thus minimal." [*1374] Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1338 (Fed. Cir. 2001) (emphasis added). Lloyd's Food Products, Inc. v. Eli's, Inc.,987 F.2d 766 (Fed. Cir. 1993), does not alter that reasoning. In Lloyd's, this court held that the Board erred in failing to consider evidence of third-party use of service marks in phone directories. Id. at 768. Unlike the Lloyd's phone directories that [**12] were distributed to the public, the Beverage Media Guide is only sent to distributors, not to the consuming public. Additionally, the issue in Lloyd's involved service marks, for which advertising in phone directories is evidence of use. Here, by contrast, the marks are trademarks applied to goods for which a mere listing in a directory is not evidence of such use. Thus, the Lloyd's holding is inapposite to the facts of this case. Palm Bay further argues that the Board erred in minimizing the import of retail marketing evidence it presented for the third-party mark Veuve de Vernay. Specifically, Palm Bay notes that its private investigator discovered that six New York stores displayed for sale the Veuve De Vernay sparkling wine as well as internet web sites and restaurant lists. Though the Board determined that such evidence exhibited more than de minimis use, it did not credit the single mark use with much weight. As the Board observed, [HN6] "the purpose of a defendant introducing third party uses is to show that customers have become so conditioned by a plethora of such similar marks that customers 'have been educated to distinguish between different [such] marks on the bases [**13] of minute distinctions.'" Veuve Clicquot Ponsardin, 2003 TTAB LEXIS 388 at *30 (citing McCarthy on Trademarks, at 11: 88). Palm Bay's evidence does not rise to the level of demonstrating that the single third-party use was so widespread as to "condition" the consuming public.

55 396 F.3d 1369, *; 2005 U.S. App. LEXIS 2020, **; 73 U.S.P.Q.2D (BNA) 1689 Page 6 Accordingly, substantial evidence supports the Board's finding that the strength of VCP's mark was not under mined by third-party use in either the Beverage Media Guide or the retail market. C. Palm Bay argues that the Board erred in concluding that VCP's marks are famous, per the fifth DuPont factor, and therefore entitled to a wide scope of protection. In its view, the Board applied an incorrect legal standard for measuring fame by focusing on a narrow class of consumers limited to purchasers of champagne and sparkling wine. The proper standard for fame, Palm Bay asserts, is whether a mark has achieved "extensive public recognition and renown" among the general public. Kenner Parker Toys, Inc., 963 F.2d at 353. Palm Bay further contends there was insufficient evidence to support a finding of fame. [HN7] Fame of an opposer's mark, if it exists, plays a "dominant role in the process of balancing [**14] the DuPont factors." Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1327 (Fed. Cir. 2000). Famous marks enjoy wide latitude of legal protection since they are more likely to be remembered and associated in the public mind than weaker marks, and are thus more attractive as targets for would-be copyists. Id. Indeed, "[a] strong mark... casts a long shadow which competitors must avoid." Kenner Parker Toys,963 F.2d at 353. [HN8] Fame for likelihood of confusion purposes and fame for dilution purposes, however, are distinct concepts. The Toro Co. v. ToroHead, Inc., 61 U.S.P.Q. 2d 1164, 1170 (T. T.A.B. 2001). 2 [*1375] While dilution fame is an either/or proposition - fame either does or does not exist - likelihood of confusion fame "varies along a spectrum from very strong to very weak." In re Coors Brewing Co., 343 F.3d 1340, 1344 (Fed. Cir. 2003). 2 [HN9] Under the 1996 Federal Trademark Dilution Act (FTDA), 15 U.S.C. 1125(c), only "famous" marks are protect ed. The FTDA lists eight nonexclusive factors courts are to consider in determining whether a mark is "distinctive and famous." See 15 U.S.C. 1125(c)(1)(A)-(H) (2004). [**15] This court's statement in Kenner Parker Toys that fame for likelihood of confusion purposes is to be measured by whether a mark has achieved "extensive public recognition and renown" was not intended to require public awareness among every segment of the U.S. population. Indeed, the court in Kenner Parker Toys did not consider the issue of the extent of public renown necessary to qualify for treatment as a famous mark. Palm Bay's argument for a general public standard would be contrary to the trend of our case law and improperly elevate likelihood of confusion fame to the higher and more rigorous standard for dilution fame required under the FTDA. In this case, some classes of consumers would not have occasion to be expose d to VCP's champagne products, such as children or adolescents below the drinking age, or adults who for religious or other reasons choose not to consume alcoholic beverages. Thus, a general public awareness standard does not adequately reflect the mark's fame amongst the purchasing public. Fame for confusion purposes arises as long as a significant portion of the relevant consuming public, namely, purchasers of champagne and sparkling wine, recognizes [**16] the mark as a source indicator. Although this court has not directly addressed the question of what segment of the consuming public must be aware of a mark in order for it to be considered famous in a likelihood of confusion analysis, it has indirectly suggested that a mark's renown within a specific product market is the proper standard. See Bose Corp., 293 F.3d at 1376 (2002) ("Large market shares of product sales or large percentages of advertising expenditures in a product line would buttress claims to fame."). Similarly, this court's precedent has defined the relevant product market for purposes of determining likelihood of confusion as customers and potential customers. Elec. Design & Sales, Inc. v. Elec. Data Sys. Corp., 954 F.2d 713, 716 (Fed. Cir. 1992) (holding that purchaser confusion is the "primary focus" and, in case of goods and services that are sold, "the inquiry generally will turn on whether actual or potential 'purchasers' are confused"). [HN10] Accordingly, this court holds that the proper legal standard for evaluating the fame of a mark under the fifth DuPont factor is the class of customers and potential customers of a product [**17] or service, and not the general public. The Board did not err in so holding. Given this clarification of the proper relevant market for evaluating the fame of a mark, this court finds that there was sufficient factual evidence of fame within the market of purchasers of champagne and sparkling wine to support the Board's conclusion. The record indicates that VCP's sales volume and advertising expenditures since 1990 have been substantial. Veuve Clicquot champagne is the second leading brand sold in the U.S. The brand is sold in 8,000 restaurants nationwide, and in liquor stores, wine shops, and other retail establishments. VCP advertises in general interest magazines such as Vanity Fair and in wine specialty magazines, radio ads, point-of-sale displays, through in-store and in-restaurant wine tastings and events, through sponsorship of events, and on its Internet site. VCP's products have [*1376] been featured in articles and reviews in both specialized an d general interest magazines. According to an April 2001 issue of Wine and Spirits, Veuve Clicquot was the most-ordered wine in the "sparkling wine" category of the 363 survey respondents. VCP's products have also

56 396 F.3d 1369, *; 2005 U.S. App. LEXIS 2020, **; 73 U.S.P.Q.2D (BNA) 1689 Page 7 been featured in [**18] Business Week, American Way (in-flight magazine of American Airlines), The New York Times, the Boston Globe, Money magazine, and the Detroit News. Moreover, Palm Bay's President, David Taub, admitted that the Veuve Clicquot mark is famous. His later qualification that such fame was limited to the "top-end" segment of the market does not diminish the significance of his admission in view of the Board's finding that high-end champagne and less-expensive sparkling wines are marketed in the same channels of trade to the same consumers. Finally, the Board noted that several WIPO domain name arbitration decisions had found VCP's marks to be famous. While acknowledging Palm Bay's argument that a mark must be famous among purchasers in the United States, whereas WIPO examined VCP's marks worldwide, the Board properly noted that such evidence nonetheless provided a "confirmatory context" for VCP's other evidence of fame. Considering this evidence in its totality and in context, this court finds that substantial evidence supports the Board's finding of fame. D. [HN11] The fourth DuPont factor examines the conditions under which, and to whom, sales are made. DuPont, 467 F.2d at [**19] Purchaser sophistication may tend to minimize likelihood of confusion. Conversely, impulse purchases of inexpensive items may tend to have the opposite effect. Recot, Inc., 214 F.3d at In concluding that this factor was "neutral, at best," Veuve Clicquot Ponsardin, 2003 TTAB LEXIS 388 at *17, the Board found that champagne and sparkling wines are not necessarily expensive goods which are always purchased by sophisticated purchasers who exercise a great deal of care in making their purchases. This court agreed with the Board's finding. Although some champagne can be expensive, many brands sell for around $ 25 a bottle, and sparkling wines for less than $ 10 a bottle. Moreover, general consumers, not just connoisseurs, occasionally purchase champagne or sparkling wines on celebratory occasions, with little care or prior knowledge. And even more sophisticated purchasers might be aware that champagne houses offer both types of products under similar marks, and could easily conclude that Veuve Royale was Veuve Clicquot's sparkling wine. This market expansion rationale undercuts Palm Bay's argument that because VCP has never sold a sparkling wine product or low-priced champagne, [**20] and that it has always used its CLICQUOT house mark in connection with its sales, consumers would be unlikely to confuse Palm Bay's inexpensive sparkling wine and VCP's slightly more expensive champagne products. Considering this evidence in its entirety, this court concludes that substantial evidence supports the Board's finding under this DuPont factor. IV. The Board held that Palm Bay's Veuve Royale was confusingly similar to VCP's mark The Widow, n part because under the doctrine of foreign equivalents, an appreciable number of purchasers in the U.S. speak and/or understand French, and they "will translate" applicant's mark into English as "Royal Widow." Veuve Clicquot Ponsardin, 2003 TTAB LEXIS 388 at *43. The Board erred in so finding. [HN12] [*1377] Under the doctrine of foreign equivalents, foreign words from common languages are translated into English to determine genericness, descriptiveness, as well as similarity of connotation in order to ascertain confusing similarity with English word marks. See In re Sarkli, Ltd., 721 F.2d 353 (Fed. Cir. 1983); In re Am. Safety Razor Co., 1987 TTAB LEXIS 95, 2 U.S.P.Q. 2d 1459, 1460 (T. T.A.B. 1987) (finding BUENOS [**21] DIAS for soap confusingly similar to GOOD MORNING for shaving cream). When it is unlikely that an American buyer will translate the foreign mark and will take it as it is, then the doctrine of foreign equivalents will not be applied. In re Tia Maria, Inc., 188 U.S.P.Q. 524 (T. T.A.B. 1975) (no likelihood of confusion between TIA MARIA for a Mexican restaurant and AUNT MARY's for canned vegetables). In comparing VEUVE ROYALE with VEUVE CLICQUOT PONSARDIN and VEUVE CLICQUOT, the Board found that "an appreciable number of purchasers are unlikely to be aware that VEUVE means 'widow' and are unlikely to translate the marks into English." Veuve Clicquot Ponsardin, 2003 TTAB LEXIS 388 at *34 (emphasis added). In comparing Veuve Royale with The Widow, however, the Board found that "[A] n appreciable number of purchasers in the United States speak and/or understand French, and they will translate applicant's mark into English as Royal Widow." 2003 TTAB LEXIS 388 at *43 (emphasis added). An appreciable number of U.S. consumers either will or will not translate VEUVE into "widow," and the Board was inconsistent in its application of the doctrine of foreign equivalents. Although words [**22] from modern languages are generally translated into English, the doctrine of foreign equivalents is not an absolute rule and should be viewed merely as a guideline. In re N. Paper Mills, 20 C.C.P.A. 1109, 64 F.2d 998, 999, 1933 Dec. Comm'r Pat. 452 (C. C.P.A. 1933); McCarthy on Trademarks, at 11: 34. The doctrine should be applied only when it is likely that the ordinary American purchaser would "stop and translate [the word] into its English equivalent." In re Pan Tex

57 396 F.3d 1369, *; 2005 U.S. App. LEXIS 2020, **; 73 U.S.P.Q.2D (BNA) 1689 Page 8 Hotel Corp., 190 U.S.P.Q. 109, 110 (T. T.A.B. 1976). This court agrees with the T.T.A.B. that it is improbable that the average American purchaser would stop and translate "VEUVE" into "widow." Substantial evidence does not support the Board's finding regarding the doctrine of foreign equivalents. This court, therefore, reverses the Board's finding of likelihood of confusion for THE WIDOW. CONCLUSION This court affirms the Board's decision that a likelihood of confusion exists between applicant's VEUVE ROYALE mark and opposer's marks VEUVE CLICQUOT PONSARDIN and VEUVE CLICQUOT. We reverse the Board's conclusion of the likelihood of confusion as to the THE WIDOW mark and we affirm the Board's refusal [**23] to register Palm Bay's VEUVE ROYALE mark. COSTS Each party shall bear its own costs. AFFIRMED

58 Page 1 Positive As of: Jun 11, 2013 IN RE HERCULES FASTENERS, INC. No United States Court of Customs and Patent Appeals 40 C.C.P.A. 944; 203 F.2d 753; 1953 CCPA LEXIS 207; 97 U.S.P.Q. (BNA) 355 Oral argument March 10, 1953 April 15, 1953 PRIOR HISTORY: [***1] APPEAL from Patent Office, Serial No. 556,338 DISPOSITION: CASE SUMMARY: Affirmed. PROCEDURAL POSTURE: Appellant applicant sought review of a decision of the Commissioner of Patents (commissioner), who affirmed the conditional refusal of the examiner of trade-marks to register a trade-mark sought by the applicant. OVERVIEW: The applicant sought to register the trade-mark "FASTIE." The examiner was of the opinion that this notation was descriptive of the function of a machine and therefore was unregistrable. The examiner further held, however, that the mark as a whole was registrable, provided the applicant disclaimed the descriptive portion of the mark. The commissioner affirmed the examiner's decision and the court affirmed. The court held that although the applicant's mark as a whole was not merely descriptive, and hence was registrable, the applicant was not entitled to register it unless descriptive and unregistrable subject matter contained therein was disclaimed. Moreover, the commissioner had the right to enforce his requirement for disclaimer by a refusal to register the mark in the event that the requirement was not met. The court found that "FASTIE" was merely a phonetic spelling of "fast tie," and it connoted that which unites or joins quickly. The court concluded that the notation was descriptive of the function and character of the goods to which it was applied and therefore was unregisterable. OUTCOME: The court affirmed the decision of the commissioner against the applicant, refusing registration of the applicant's trade-mark in the absence of a disclaimer. LexisNexis(R) Headnotes Patent Law > Inequitable Conduct > General Overview Patent Law > U.S. Patent & Trademark Office Proceedings > General Overview Trademark Law > Protection of Rights > Registration > Amendments [HN1] The Commissioner of Patents shall require unregistrable matter to be disclaimed. Patent Law > Jurisdiction & Review > Subject Matter Jurisdiction > Appeals Trademark Law > Protection of Rights > Registration > Federal Registration Trademark Law > Protection of Rights > Registration > Principal Register [HN2] Section 2 of the Trade-Mark Act of 1946, 15 U.S.C.S. 1052(e), provides that no trade-mark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the prin-

59 40 C.C.P.A. 944, *; 203 F.2d 753, **; 1953 CCPA LEXIS 207, ***; 97 U.S.P.Q. (BNA) 355 Page 2 cipal register on account of its nature unless it consists of a mark which when applied to the goods of the applicant is merely descriptive or deceptively misdescriptive of them. Patent Law > Jurisdiction & Review > Subject Matter Jurisdiction > Appeals Trademark Law > Protection of Rights > Registration > Disclaimer of Unregistrable Matter Trademark Law > Protection of Rights > Registration > Federal Registration [HN3] Section 6 of the Trade-Mark Act of 1946, 15 U.S.C.S. 1056, provides that the Commissioner of Patents shall require unregistrable matter to be disclaimed, but such disclaimer shall not prejudice or affect the applicant's or owner's rights then existing or thereafter arising in the disclaimed matter, nor shall such disclaimer prejudice or affect the applicant's or owner's rights of registration on another application of later date if the disclaimed matter has become distinctive of the applicant's or owner's goods or services. Patent Law > Jurisdiction & Review > Subject Matter Jurisdiction > Appeals Trademark Law > Protection of Rights > Registration > Disclaimer of Unregistrable Matter Trademark Law > Protection of Rights > Registration > Federal Registration [HN4] Since 6 of the Trade-Mark Act (Act) of 1946 is essentially declaratory of the disclaimer practice existing prior to the Act, decisions decided prior to the Act and not inconsistent with the qualifications in the latter part of 6 are still authoritative. Patent Law > Jurisdiction & Review > Subject Matter Jurisdiction > Appeals Trademark Law > Protection of Rights > Registration > Federal Registration [HN5] The purpose of a disclaimer is to show that the applicant is not making claim to the exclusive appropriation of such matter except in the precise relation and association in which it appeared in the drawing and description. Patent Law > Jurisdiction & Review > Subject Matter Jurisdiction > Appeals Trademark Law > Protection of Rights > Registration > Federal Registration Trademark Law > Subject Matter > Descriptive & Laudatory Terms > General Overview [HN6] The language of 2(e) of the Trade-Mark Act of 1946 differs slightly from that of the corresponding part of 5 of the Trade-Mark Act of Although there are slight changes, the prohibitions against descriptive marks under the Trade-Mark Act of 1946 are the same as under the Trade-Mark Act 0f Patent Law > Jurisdiction & Review > Subject Matter Jurisdiction > Appeals Trademark Law > Protection of Rights > Registration > Federal Registration Trademark Law > Subject Matter > Descriptive & Laudatory Terms > General Overview [HN7] Marks which are merely descriptive of the goods upon which they are used, or the quality or character of the goods falls within the prohibitions of section 2(e) of the Trade-Mark Act 0f Patent Law > Jurisdiction & Review > Subject Matter Jurisdiction > Appeals Trademark Law > Protection of Rights > Registration > Federal Registration Trademark Law > Subject Matter > Descriptive & Laudatory Terms > General Overview [HN8] Trade-marks which are descriptive of the use or function of the goods may be descriptive within the meaning of 2(e) of the Trade-Mark Act of 1946, and hence unregistrable, because they describe the character or quality of the goods. COUNSEL: John L. Seymour (N. Douglas Parker, Jr. of counsel) for appellant. E. L. Reynolds (Clarence W. Moore of counsel) for the Commissioner of Patents. OPINION BY: JOHNSON OPINION [*945] [**754] Before GARRETT, Chief Judge, and O'CONNELL, JOHNSON, WORLEY, and COLE, Associate Judges JOHNSON, Judge, delivered the opinion of the court: This is an appeal from a decision of the Commissioner of Patents, speaking through the Assistant Commissioner, 92 USPQ [**755] 287, affirming the conditional refusal of the Examiner of Trade-Marks to register the trade-mark sought by appellant. Appellant seeks to have registered on the Principal Register, under the Trade-Mark Act of 1946, a composite

60 40 C.C.P.A. 944, *; 203 F.2d 753, **; 1953 CCPA LEXIS 207, ***; 97 U.S.P.Q. (BNA) 355 Page 3 mark "for Tube sealing machines, which apply barrel fasteners, sometimes called eyelet fasteners to seal the ends of flexible tubes," such as sausage casings. The mark sought consists of the notation "FASTIE," which appears, in the application drawing, in black letters superimposed upon a fanciful black and white background comprising the ends of three tubular elements, apparently sausages, each having a fastener attached [***2] to its end. Although it seems that the notation might be pronounced "fastee," counsel for appellant stated during oral argument that the pronunciation used by applicant is "fas-tie." The examiner regarded the notation "FASTIE" as the phonetic equivalent of "fast-tie", and he was of the opinion that this notation was descriptive of the function of the machine and therefore unregistrable. He held further, however, [*946] the mark as a whole was registrable, provided appellant disclaimed the descriptive portion "FASTIE." With respect to the question of disclaimer the examiner stated: * * * it is considered that the proposed mark is registrable, provided the descriptive word "FASTIE" is disclaimed under the provisions of Section 6 of the Trade-Mark Act of At an interview on April 23, 1951 applicant's attorney voiced the opinion that, giving proper weight to the word "merely" in Section 2(e)(1), a mark, a substantial portion of which is descriptive but which also includes a substantial portion which is fanciful, should be registrable without a disclaimer of the descriptive portion, Section 6 notwithstanding. It is the Examiner's opinion that Section 6 cannot be disregarded, [***3] and that, in accordance with its provisions, disclaimer of the descriptive portion, or any portion which is not registrable per se under Section 2(e), must be required as a condition precedent to registration. The language of the statute leaves no choice but states [HN1] "The Commissioner shall require unregistrable matter to be disclaimed." * * * In the absence of such a disclaimer by appellant, the examiner continued to refuse registration and an appeal was taken to the commissioner. The commissioner affirmed the examiner's holding that the notation "FASTIE" was descriptive, stating: * * * In its advertising applicant refers to the "tie" which the fastener makes when applied by the machine, the verb "tie" in its transitive form being defined under the second definition in Webster's New International Dictionary, Second Edition, as "to unite or join firmly; to connect." The notation "FASTIE" obviously connotes that which ties or fastens quickly, and it is entirely clear from the applicant's advertising that such is the intended meaning of the notation since it is stated that applicant's machine does casing-end ties two to three times faster than human hands. Thus the applicant refers [***4] to the operation of its machine in terms of the broad definition of the word "tie." The commissioner also affirmed the examiner's ruling that the descriptive and hence unregistrable portion of the mark, the notation, "FASTIE," must be disclaimed in accordance with section 6 of the 1946 Act, as a condition precedent to registration. Appellant contends that the notation "FASTIE" is not descriptive within the prohibition of section 2(e)(1). He contends also that even if the notation "FASTIE" were descriptive and unregistrable per se, he need not disclaim it because the composite mark sought is not "merely descriptive" of the goods to which it is applied, and therefore the Patent Office erroneously and arbitrarily refused registration. We think appellant's latter contention is clearly in error. [**756] [HN2] Section 2 of the Trade-Mark Act of 1946, 15 U.S.C. 1052, provides that: [*947] No trade-mark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it - * * * (e) Consists of a mark which, (1) when applied to the goods of the applicant is merely [***5] descriptive or deceptively misdescriptive of them * * *. Clearly the examiner and the commissioner have recognized that the composite mark as a whole is not "merely descriptive" and hence is registrable under section 2(e)(1). However (assuming now that the notation "FASTIE" was properly held descriptive) it does not necessarily follow from this, as appellant appears to contend, that those tribunals were erroneous and arbitrary in refusing to register the composite mark in the absence of disclaimer of "FASTIE." [HN3] Section 6 of that Act, 15 U.S.C. 1056, provides: The Commissioner shall require unregistrable matter to be disclaimed, but such disclaimer shall not prejudice or affect the applicant's or owner's rights then existing or thereafter arising in the disclaimed matter, nor shall such disclaimer prejudice or affect the applicant's or owner's rights of registration on another application of later date if the disclaimed matter has become distinctive of the applicant's or owner's goods or services. [1] Prior to the Act of 1946 there was no statutory provision authorizing or requiring the disclaimer of un-

61 40 C.C.P.A. 944, *; 203 F.2d 753, **; 1953 CCPA LEXIS 207, ***; 97 U.S.P.Q. (BNA) 355 Page 4 registrable subject matter which was part of a composite mark containing [***6] other registrable matter in combination therewith. Such a composite mark, for example, might contain registrable subject matter in combination with matter which is merely descriptive, or geographically descriptive, and therefore unregistrable. The practive grew up in the Patent Office of allowing such unregistrable matter to be disclaimed, so that the mark as a whole might be registered. This practice was sanctioned by the Supreme Court in Beckwith v. Commr. of Patents, 252 U.S. 538, and this court, following the rule of the Beckwith case, also upheld the Patent Office's disclaimer practice. In re American Cyanamid & Chemical Corp., 26 C.C.P.A. (Patents) 712, 99 F.2d 964, 39 USPQ 445; In re Effervescent Products, Inc., 30 C.C.P.A. (Patents) 762, 132 F.2d 142, 56 USPQ 163. Under the disclaimer practice prior to the 1946 Act, however, if an applicant disclaimed certain subject matter as unregistrable he and his successors in interest were held estopped from later securing registration of such matter, even though the disclaimed portions subsequently became distinctive and protectable in the Federal courts as valid, common-law trade-marks. See In re Canada Dry Ginger Ale, Inc., [***7] 24 C.C.P.A. (Patents) 872, 87 F.2d 736, 32 USPQ 255, and In re Canada Dry Ginger Ale, Inc., 24 C.C.P.A. (Patents) 879, 87 F.2d 737, 32 USPQ 256. [*948] [2] A study of the legislative history of the 1946 Act convinces us that the part of section 6 stating "The Commissioner shall require unregistrable matter to be disclaimed, * * *" is essentially declaratory of the disclaimer practice as then existing under the sanction of the Beckwith decision. However, the then existing practice has been modified by the latter part of the section, not here involved, which provides that a disclaimer will not prejudice or affect the applicant's rights then existing or thereafter arising in the disclaimed matter. See Hearings, Committee on Patents, House of Representatives, H.R. 9041, 75th Congress, 3rd Session, pages 137 to 141; and Hearings, Committee on Patents, House of Representatives, H.R. 4744, 76th Congress, 1st Session, pages 61 to 64. See also In re Servel, Inc., 37 C.C.P.A. (Patents) 977, 181 F.2d 192, 85 USPQ 257.Since [HN4] section 6 is essentially declaratory of the disclaimer practice existing prior to the 1946 Act, we think decisions decided prior to the Act and not inconsistent [***8] with the qualifications in the latter part of section 6 are still authoritative. [**757] [3] [HN5] The purpose of a disclaimer is to show that the applicant is not making claim to the exclusive appropriation of such matter except in the precise relation and association in which it appeared in the drawing and description.beckwith v. Commissioner, supra. [4] Although appellant's mark as a whole is not "merely descriptive," and hence is registrable, appellant is not entitled to register the same unless descriptive and unregistrable subject matter contained therein is disclaimed. Moreover, the Commissioner of Patents has the right to enforce his requirement for disclaimer by a refusal to register the mark in the event that the requirement is not met. In re American Cyanamid, etc., supra. We think this is clearly in accord with the mandate of section 6 of the 1946 Act. In view of the foregoing, it follows that if the notation "FASTIE," which appellant has declined to disclaim, is descriptive of its goods within the prohibition of section 2(e)(1), the commissioner did not err in conditionally refusing registration. Cyanamid case, supra. We turn therefore to consideration of [***9] appellant's contention that the mark is not objectionally descriptive. Appellant contends before this court that "FASTIE" is not objectionably descriptive because it is only by proceeding through a series of thoughts and words that one can deduce any relationship or descriptiveness between the notation "FASTIE" and the machine or the fasteners to which it is applied, or to the function of the machine. [*949] In effect, appellant argues that "FASTIE" is merely suggestive and not descriptive. [5] [HN6] The language of section 2(e) of the 1946 Act differs slightly from that of the corresponding part of section 5 of the Trade-Mark Act of This court has decided, however, that although there are slight changes, the prohibitions against descriptive marks under the new Act are the same as under the 1905 Act. Andrew J. McPartland, Inc. v. Montgomery Ward & Co., Inc., 35 C.C.P.A. ( Patents 802, 164 F.2d 603, 76 USPQ 97, wherein the differences between the acts, and the effect thereof, were discussed at length. [6] [HN7] Marks which are merely descriptive of the goods upon which they are used, or the quality or character of the goods falls within the prohibitions of section 2(e) [***10] of the new act, McPartland v. Montgomery Ward, supra. [7] Of course marks that are merely suggestive are registrable. In re St. Paul Hydraulic Hoist Co., etc., 37 C.C.P.A. (Patents) 751, 177 F.2d 214, 83 USPQ 315. [8] [HN8] Trade-marks which are descriptive of the use or function of the goods may be descriptive within the meaning of section 2(e), and hence unregistrable, because they describe the character or quality of the goods. Hygienic Products Co. v. Huntington Laboratories, Inc., 31 C.C.P.A. (Patents) 773, 139 F.2d 508, 60 USPQ 205. [9] We are of the opinion that "FASTIE" is merely a phonetic spelling of "fast tie" and that it connotes that

62 40 C.C.P.A. 944, *; 203 F.2d 753, **; 1953 CCPA LEXIS 207, ***; 97 U.S.P.Q. (BNA) 355 Page 5 which unites or joins quickly, "tie" being used according to its broad meaning. Thus, for the reasons advanced in the above-quoted excerpt from the commissioner's opinion, we think the notation is descriptive of the function and character of the goods to which it is applied. That notation itself is therefore unregistrable. [10] Prior decisions are generally of relatively little value in deciding trade-mark cases such as this. In re Locke Stove Company, 33 C.C.P.A. (Patents) 934, 154 F.2d 200, 69 USPQ 108. However, we think our [***11] holdings in the Locke Stove case and McPartland v. Montgomery Ward, supra, particularly apposite and persuasive. In the former case, we held the mark "Warm-Ever" applied to water heaters was merely descriptive of the character of the goods and unregistrable. In the latter case, we held the mark "Kwixtart" for use on electric storage batteries is merely the phonetic spelling of "quick start" and not entitled to registration because it was descriptive of the character of the goods on which it was used. In view of the foregoing, the decision of the commissioner refusing registration of the appellant's mark in the absence of disclaimer is affirmed.

63 Page 1 Positive As of: Mar 24, 2014 DISPOSITION: [*1] In re Dean S. Carlson Serial No Trademark Trial and Appeal Board 2009 TTAB LEXIS 438; 91 U.S.P.Q.2D (BNA) 1198 April 21, 2009, Hearing June 9, 2009, Decided Decision: The refusal on the ground that applicant's mark is merely descriptive of his identified services is affirmed. COUNSEL: Stephen R. Baird and Sharon D. Armstrong of Winthrop & Weinstine, P.A. for Dean S. Carlson Amy C. Kean, Trademark Examining Attorney, Law Office 113 (Odette Bonnet, Managing Attorney) JUDGES: Before Seeherman, Hairston and Mermelstein, Administrative Trademark Judges OPINION BY: SEEHERMAN OPINION: THIS OPINION IS A PRECEDENT OF THE TTAB Opinion by Seeherman, Administrative Trademark Judge: Dean S. Carlson has appealed from the final refusal of the trademark examining attorney to register URBAN- HOUZING in standard character format for "real estate brokerage; real estate consultation; and real estate listing." n1 There are two issues before us in this appeal: whether applicant's mark is merely descriptive of his identified services (refusal based on Section 2(e)(1) of the Trademark Act, 15 U.S.C. 1052(e)(1)); and whether applicant's disclaimer of the term URBAN HOUSING is acceptable, or whether it constitutes an impermissible disclaimer of the entire mark. n1 Application Serial No , filed November 11, 2005, based on Section 1(a) of the Trademark Act, and asserting first use and first use in commerce as early as February 2005.

64 2009 TTAB LEXIS 438, *; 91 U.S.P.Q.2D (BNA) 1198 Page 2 [*2] The appeal has been fully briefed, and applicant and the examining attorney appeared at an oral hearing. n2 [*3] n2 In his briefs applicant has not provided the case cites to United States Patent Quarterly for the federal court cases he has cited. "When cases are cited in a brief, the case citation should include a citation to The United States Patent Quarterly (USPQ), if the case has appeared in that publication." TBMP (2d ed., revised 2004). With his reply brief applicant submitted pages from the guidelines for listings in "urban dictionary," the source of the definition of the phrase "in da hizza houze" submitted by the examining attorney. Applicant's submission is untimely and would normally not be considered. If applicant had wished to raise questions about the probative value of the examining attorney's evidence from this source he should have submitted the guidelines during the course of prosecution. (Although the dictionary definition was made of record by the examining attorney with the final Office action, applicant could have submitted the additional webpages with a request for reconsideration.) However, at oral argument the examining attorney stated that she had no objection to this material, and therefore we have treated it as being of record. A term is deemed to be merely descriptive of goods or services, within the meaning of Section 2(e)(1) of the Trademark Act, 15 U.S.C. 1052(e)(1), if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, (CCPA 1978). A term need not immediately convey an idea of each and every specific feature of the applicant's goods or services in order to be considered to be merely descriptive; rather, it is sufficient that the term describes one significant attribute, function or property of the goods or services. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). Whether a term is merely descriptive is determined not in the abstract, but in relation to the goods or services for which registration is sought, the context in which it is being used on or in connection with the goods or services, and the possible significance that the term would have to the average purchaser of the goods or services because of the manner of its use; that a term [*4] may have other meanings in different contexts is not controlling. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). In other words, the question is not whether someone presented with only the mark could guess what the goods or services are. Rather, the question is whether someone who knows what the goods or services are will immediately understand the mark as directly conveying information about them. In re Tower Tech Inc., 64 USPQ2d 1314, 1317 (TTAB 2002). We need not reiterate the evidence that the examining attorney has made of record to show that the term "urban housing" is merely descriptive for applicant's services. Applicant has essentially admitted this by his offer of a disclaimer of "urban housing." That is, applicant has recognized that "urban housing" is a descriptive term and that he is not entitled to exclusive rights to it. "Applicant has made clear and the owners of the [previously cited] application and registration have made clear that none seek exclusive rights in the descriptive phrase URBAN HOUSING." Response filed June 7, However, it is applicant's position that the manner in which his mark is spelled, with the letter [*5] "Z" substituted for the letter "S" in housing and the compressing of the two words, URBAN HOUSING, into the single word URBANHOUZING, transforms the descriptive term "urban housing" into an inherently distinctive mark. We find, first, that the compression of the words URBAN HOUSING into a single term, URBANHOUZING, still conveys the commercial impression of two words. In other words, consumers would recognize the mark as consisting of the separate elements URBAN and HOUZING. See In re Cox Enterprises Inc., 82 USPQ2d 1040, 1043 (TTAB 2007) ("THEATL is simply a compressed version of the descriptive term THE ATL without a space between the two words. Without the space, THEATL is equivalent in sound, meaning and impression to THE ATL and is equally descriptive of applicant's goods"); In re Planalytics Inc., 70 USPQ2d 1453 (TTAB 2004) (GASBUYER merely descriptive of providing on-line risk management services in the field of pricing and purchasing decisions for natural gas; the absence of the space does not create a different meaning or perception of the term). The Planalytics decision, 70 USPQ2d at , also cited the following cases in which, [*6] although a space was deleted between the words, the combined term remained descriptive:

65 2009 TTAB LEXIS 438, *; 91 U.S.P.Q.2D (BNA) 1198 Page 3 In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987) (SCREENWIPE generic for a wipe for cleaning television and computer screens); In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978) (GASBADGE at least descriptive for gas monitoring badges; three judges concurred in finding that term was the name of the goods); In re Orleans Wines, Ltd., 196 USPQ 516 (TTAB 1977) (BREADSPRED descriptive for jams and jellies that would be a spread for bread); In re Perkin-Elmer Corp., 174 USPQ 57 (TTAB 1972) (LASERGAGE merely descriptive for interferometers utilizing lasers). The next question is whether the misspelling of the descriptive word HOUSING as HOUZING changes the meaning or commercial impression of the mark. In general, a mere misspelling of a word is not sufficient to change a merely descriptive term into an inherently distinctive trademark. See Armstrong Paint & Varnish Works v. Nu-Enamel Corp., 305 U.S. 315, 59 S. Ct. 191, 83 L. Ed. 195, 1939 Dec. Comm'r Pat. 838 (1938) (NU-ENAMEL; NU found equivalent of "new"); In re Quik-Print Copy Shops, 616 F.2d 523, 205 USPQ 505, 507 n.9 (CCPA 1980) [*7] (QUIK-PRINT held descriptive; "There is no legally significant difference here between 'quik' and 'quick'"); In re Organik Technologies Inc., 41 USPQ2d 1690, 1694 (TTAB 1997) ("ORGANIK, which is the phonetic equivalent of the term 'organic,' is deceptive"); and Hi-Shear Corp. v. National Automotive Parts Association, 152 USPQ 341, 343 (TTAB 1966) (HI-TORQUE "is the phonetic equivalent of the words 'HIGH TORQUE'"). In In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828 (Fed. Cir. 2007), the Court found that ASPIR- INA was merely descriptive for analgesic goods, and affirmed the Board's finding that ASPIRINA and aspirin are sufficiently close in appearance, sound, and meaning that "[t]he mere addition of the letter 'A' at the end of the generic term 'aspirin' is simply insufficient to transform ASPIRINA into an inherently distinctive mark for analgesics." 82 USPQ2d at In that case, the Court held that "[a]dding an 'a' to aspirin results in virtually no distinction with respect to the visual impressions of the terms," and that the meaning of the terms was similar. 82 USPQ2d at In the present case, [*8] the terms are, if anything, even more similar, because they are also phonetically identical. The dictionary definition for the word "housing" shows it is pronounced "hou'zing." n3 n3 The American Heritage Dictionary of the English Language, 4th ed. (c) 2000, made of record with Office action mailed May 18, In determining whether the misspelling of HOUSING in applicant's mark URBANHOUZING makes the mark inherently distinctive, we must consider whether URBANHOUZING will be perceived as the equivalent of URBAN- HOUSING and, as a secondary point, whether, as applicant argues, the element ZING makes a separate commercial impression. First, we find that HOUZING will be recognized as a misspelling of the descriptive word HOUSING. It is, as we have stated, a phonetic equivalent. Further, the examining attorney has submitted excerpts from blogs/message boards and from a slang dictionary in which what is obviously meant to be the word "housing" is spelled "houzing." See, for example, a listing of topics, such [*9] as Minerals, English Study, Computer, in which "Houzing" is listed as a category, with "Housing in Urbana," "Urbana yellow page" and "Room listing in Urbana" as subtopics/links. See also a comment in an Internet forum that "he was in Newark at a houzing project." We do not mean to suggest that listings in blogs or even a slang dictionary n4 show that "houzing" is an accepted alternate spelling of "housing" or that this spelling is in common and widespread use. But these uses indicate either that "housing" may be misspelled as "houzing" or that the writers who deliberately use this spelling view "houzing" as a misspelling or alternate spelling that readers will immediately understand as "housing." n4 As noted in footnote 2, the "urban dictionary," has a listing for "in da hizza houze." Perhaps most importantly, applicant himself uses "HOUZING" as an alternate version of "housing" in general statements separate and apart from his [*10] proposed trademark. On his website he makes such statements as "ALL YOUR HOUZING NEEDS FROM A TO ZING"; "THE TWIN CITIES ULTIMATE URBAN HOUZING LIFE-

66 2009 TTAB LEXIS 438, *; 91 U.S.P.Q.2D (BNA) 1198 Page 4 STYLE RESOURCE"; and "Consumer demand for a lifestyle of convenience has revitalized the Urban Houzing Market." The next question we must consider is whether the ZING portion of applicant's mark creates a separate commercial impression, such that the mark as a whole has a double entendre, with one meaning that is not merely descriptive. Applicant argues that because "zing" means "a quality or characteristic that excites the interest, enthusiasm, etc." and "to move or proceed with speed or vitality; zip," "the mark suggests that Applicant's real estate brokerage, consulting and listing services are provided with speed and enthusiasm." Brief, p. 15. Applicant has cited In re Grand Metropolitan Foodservice, Inc., 30 USPQ2d 1974 (TTAB 1994) and Surfvivor Media, Inc. v. Survivor Productions, 406 F.3d 625, 74 USPQ2d 1621 (9th Cir. 2005), in support of his position. The latter decision, however, is distinguishable from the present situation for many reasons. Most importantly, there was never [*11] an issue as to whether the plaintiff's mark, SURFVIVOR, was descriptive of such beach-themed products as sunscreen and t-shirts. The comments the Court made with respect to the mark were limited to the issue of the strength of the mark in terms of an infringement action, specifically whether the mark as a coined word was fanciful and entitled to the highest degree of trademark protection, or suggestive and worthy of a lesser scope of protection. In Grand Metropolitan Foodservice, the Board found that applicant's mark Link to Image was not merely descriptive of muffins because it would not be perceived as just a misspelling of a descriptive or generic word, but as having a dual meaning of "fun" as well as of "muffins." We consider this case to be distinguishable from the present situation as well, since the way the mark is depicted the word "fun" is emphasized as a separate word by the use of the capital "F." The "Z" in applicant's mark, because it is not emphasized and would be perceived as only a misspelling of the descriptive word "housing", does not project the impression of the separate word "zing." Applicant has argued that we must look to his specimens to determine [*12] whether the ZING portion of his mark will make a separate commercial impression. Applicant cites In re Hershey, 6 USPQ2d 1470 (TTAB 1988), for that proposition. However, Hershey involved a refusal under Section 2(a) on the ground that the mark was scandalous. Moreover, the Board did not rely on the specimens in finding that the mark was not scandalous. The Board stated only that the specimens provided further support for its view that the mark did not have an offensive meaning, the Board having found that the evidence submitted by the examining attorney to be "at best marginal to demonstrate that the mark is a vulgar, slang reference to male genitalia and would be recognized as such a reference by a substantial composite of the general public." Id. at Applicant has pointed to no cases in which the courts or this Board have looked to an applicant's specimens to find that a mark was not merely descriptive n5. On the contrary, the cases we have reviewed are directly contrary to applicant's position. n6 For example, in In re The Place Inc., 76 USPQ2d 1467 (TTAB 2005), applicant sought to register THE GREATEST BAR for restaurant [*13] and bar services, arguing that the mark was not merely descriptive because it had a double entendre in that the theme and decor of the restaurant would focus on the greatest people, places and events in Boston history. The Board rejected this argument, stating: A mark thus is deemed to be a double entendre only if both meanings are readily apparent from the mark itself. If the alleged second meaning of the mark is apparent to purchasers only after they view the mark in the context of the applicant's trade dress, advertising materials or other matter separate from the mark itself, then the mark is not a double entendre. Id. at 1470 (emphasis in original). The Board then reiterated: "A mark is not a double entendre if the second meaning is grasped by purchasers only when the mark is used with 'other indicia,' even if that other indicia is itself not merely descriptive." Id. at 1471.

67 2009 TTAB LEXIS 438, *; 91 U.S.P.Q.2D (BNA) 1198 Page 5 n5 Of course, specimens and promotional material may be used to prove that a mark is merely descriptive, and statements made in them can show that a term describes a feature or characteristic of the goods or services. See, for example, In re Abcor Development Co., supra; In re Hunter Fan Co., 78 USPQ2d 1474 (TTAB 2006). [*14] n6 Even in Grand Metropolitan Foodservice, the Board found the mark per se projected a double meaning; the promotional materials emphasizing this meaning merely supported the Board's finding based on the mark alone. Similarly, in In re Wells Fargo & Company, 231 USPQ 95 (TTAB 1986), applicant argued that its mark EX- PRESSERVICE was not merely descriptive of banking services because of a double entendre, "the historical connotation with applicant's predecessor which was extensively involved in the Old West." Id. at 99. However, the Board found that "consumers associate 'Express Service' with this Old West imagery only when the term is used in association with the Wells Fargo name or with one of its allied marks (e.g., the stagecoach design)." Id. The applicant in that case had an argument very similar to applicant's position herein: In its reply brief, applicant contends by way of rebuttal that we are obliged to consider the issue before us in relation to the context of its use of EXPRESSERVICE, citing In re Tennis in the Round, Inc., 199 USPQ 496 (TTAB 1978), [*15] and that that context includes the name Wells Fargo and the depiction of a stagecoach in an Old West setting. Thus, appellant argues that, in the context of its use (i.e., in close association with the name Wells Fargo and the depiction of a stagecoach), as well as the continuing references to the word "express" in connection with Wells Fargo's historical foundation, EXPRESSERVICE is bound to convey the Old West imagery, thereby supporting the proposition that appellant's mark is suggestive rather then merely descriptive. Id. at 100. The Board rejected this argument: Appellant misconstrues Tennis in the Round. The only purpose of the reference to the specimen brochures in that case was to show that applicant's tennis courts were normal rectangular tennis courts rather than round ones (albeit, the entire facility had a circular configuration), thereby confirming that the services did not literally involve playing a game of tennis in a round tennis court. The well established rule that descriptiveness issues must be analyzed in relation to the context of use does not and cannot, obviously, mean that descriptiveness of the term sought to be registered must be [*16] evaluated as if that term were used in association with other nondescriptive indicia. In re Nash-Finch Co., 160 USPQ 210 (TTAB 1968) ["The question is not whether the subject matter in association with other trademarks is capable of distinguishing applicant's goods but whether it is capable of distinguishing applicant's goods without reference to other indicia."]... Thus, applicant's argument that it is appropriate to look to his specimens to find that his mark has a double entendre must be rejected. We conclude that applicant's applied-for mark, URBANHOUZING in standard character form, will be immediately and directly perceived by consumers as the equivalent of the admittedly descriptive term URBAN HOUSING, rather than as including the separate word ZING. The mark, thus, does not convey a double entendre that would prevent it from being merely descriptive of applicant's services. In reaching our conclusion that applicant's mark is merely descriptive, we have considered applicant's argument that "the Board employs three tests to determine whether a mark is suggestive rather than descriptive: (1) the "competitors' need test," (2) the "competitors' use test, [*17] " and (3) the degree of imagination test." Brief, p. 17. Applicant bases this argument on No Nonsense Fashions Inc. v. Consolidated Foods Corp., 226 USPQ 502 (TTAB 1985). How-

68 2009 TTAB LEXIS 438, *; 91 U.S.P.Q.2D (BNA) 1198 Page 6 ever, these "tests" were set out in an inter partes case in a discussion of whether use of a term by third parties on their packaging detracted from the plaintiff's trademark rights. Thus, to the extent that applicant is suggesting that the Office must prove all three points, applicant is incorrect. Since this decision issued in 1985, there have been numerous decisions from the Court of Appeals for the Federal Circuit and the Board making clear that the test for descriptiveness is whether a term "immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used." In re Bayer Aktiengesellschaft, 82 USPQ2d at 1831, citing In re Gyulay, 820 F.2d 1216, 1217, 3 USPQ2d 1009 (Fed. Cir. 1987). Further, with respect to applicant's statement that "the Examiner has also failed to show that any competitor has used, or will ever have need to use, the terms URBANHOUZING or HOUZING in connection with real estate services," brief, [*18] pp. 5-6, the test for descriptiveness is set out in the preceding sentence. There is no requirement that the Office prove actual competitor use or need; it is well established that even if an applicant is the only user of a merely descriptive term, this does not justify registration of that term. See In re BetaBattInc., 89 USPQ2d 1152, 1156 (TTAB 2008); In re Sun Microsystems, Inc., 59 USPQ2d 1084, 1087 (TTAB 2001); In re Acuson, 225 USPQ 790, 792 (TTAB 1985). In any event, applicant's arguments with respect to the lack of evidence of third-party use of URBANHOUZING or HOUZING for real estate services, or of dictionary definitions for those terms, goes to the particular spelling of HOUZING with a "Z." We have already discussed why the misspelling of the merely descriptive term "urban housing" does not make applicant's mark registrable. In view of our finding that URBANHOUZING in standard character format is merely descriptive of applicant's identified services, the second issue before us in this appeal, whether applicant's disclaimer of "urban housing" is appropriate, is moot. However, in order to render a complete opinion, we will address this [*19] issue, assuming, arguendo, that applicant's mark is not merely descriptive but is registrable. Such an assumption involves viewing applicant's mark as having a double entendre based on the misspelling of his mark to create the word ZING. In such a circumstance, the disclaimer of "urban housing" would not constitute a disclaimer of the entire mark, since the "ZING" portion and meaning of the mark creates a registrable element. Further, the disclaimer of the words "urban housing," spelled correctly, is the appropriate form of the disclaimer, since applicant is not claiming exclusive rights to use those words; he is claiming exclusive rights to use URBANHOUZING with the letter "Z." Accordingly, if applicant's mark were to be found inherently distinctive, the disclaimer submitted by applicant of the words "urban housing" is acceptable, and the examining attorney's refusal to accept this disclaimer is reversed. Legal Topics: For related research and practice materials, see the following legal topics: Trademark LawProtection of RightsRegistrationDisclaimer of Unregistrable MatterTrademark LawSubject MatterDescriptive & Laudatory TermsGeneral OverviewTrademark LawSubject MatterStrength GRAPHIC: Logo, no caption

69 Page 1 Positive As of: Mar 24, 2014 DISPOSITION: [*1] Decision: The refusal of registration is affirmed. COUNSEL: Body, Vickers & Daniels for applicant. In re The State Chemical Manufacturing Co. Serial No. 296,199 Trademark Trial and Appeal Board 1985 TTAB LEXIS 104; 225 U.S.P.Q. (BNA) 687 March 21, 1985, Decided Cynthia B. White, Trademark Examining Attorney, Law Office VII (Lynne Beresford, Managing Attorney) for the Patent and Trademark Office. JUDGES: Before Rice, Allen and Rooney, Members. OPINION BY: ALLEN OPINION: Opinion by Allen, Member: This is an appeal from the Trademark Examining Attorney's refusal of registration of FOM for "industrial cleaner for carpets, rugs and upholstery" on the ground that the term sought to be registered is merely descriptive of a characteristic of the product on which it is used and cannot for that reason be registered on the Principal Register. Section 2(e)(1) of the Trademark Act, 15 U.S.C. 1052(e)(1)(1976). Both parties have filed briefs. No oral hearing of arguments was requested. We affirm the refusal of registration. Appellant's product is a spotter and cleaner for carpets, rugs and upholstery. As indicated on the specimens submitted with the application, the product is sold in an aerosol dispenser and is applied (in the case of carpets, which is its primary use) by spraying the carpet with the product, working the product into [*2] the carpet with a dampened sponge mop, and when the carpet is dry, vacuuming to remove the dried cleaner and loosened soil. Although appellant's product is in liquid form in the aerosol container before it application, when it is applied the product takes on the form of a foam which rests in a layer on top of the carpet. The foam gradually disappears into the carpet's pile when it is scrubbed into the carpet with the sponge mop. n1 Appellant does not contest any of these facts and concedes that the product "foams as a result of the pressure dispensing thereof" (main brief, 1), that "foaming is a characteristic of the product attendant to its use," (id) and that what is created when appellant's product is sprayed on an area of carpet is, in fact, a

70 1985 TTAB LEXIS 104, *; 225 U.S.P.Q. (BNA) 687 Page 2 "foam" (reply brief, 1). However, it is appellant's position that FOM is merely suggestive of that characteristic of its product rather than merely descriptive thereof. We disagree. [*3] n1 The carpet cleaning directions on appellant's labels read in part as follows: Shake can well and spray the carpet from a height of two feet. Use a sweeping motion to cover an area 3'X3' with a light layer of FOM. Do not over saturate; a light covering will provide best results. Dampen the sponge mop with clear water and wring to prevent dripping. Work FOM into the carpet with gradually INCREASING pressure on the sponge mop. cover the area at right angles until the foam gradually disappears into the pile. * * * When carpet is THOROUGHLY dry (approximately 2-4 hours), vacuum thoroughly to remove the dried cleaner and loosened soil. As a starting point in our analysis, it seems clear based on the evidence in the file that the term "foam" is merely descriptive of a significant characteristic of appellant's carpet and upholstery cleaner, i.e. that when applied to the object to be cleaned the product takes on the form of a layer of foam. That this is the case is corroborated by soft copies of sixteen registrations of marks in respect of the same kind of product as the one in respect of which appellant seeks registration of FOM, all of which comprise the term FOAM combined with other terms, namely, FOAM POWER, SHAFOAM, WINDSOR SUPER DRI FOAM, MAGIC FOAM, FOAM-O-STEAM & DESIGN, CON-FOAM, WESTFOAM, FOAM-TEX, MAGNIFOAM, HIL-FOAM, REDI-FOAM, POWER FOAM, ZEPOFOAM, CER- TI-FOAM, LUSTRE FOAM & DESIGN; and VANISHING FOAM. In four of these registrations the term FOAM has been disclaimed and in three of them the term "foam" is also part of the identification of goods. n2 [*4] n2 "Foam shampoo for cleaning upholstery, rugs, and fabrics" in Reg. No. 890,251; "dry foam rug shampoo," in Reg. No. 1,077,226 and "pressure-propelled foam shampoo for cleaning upholstery, rugs, and fabrics," in Reg. No. 915,789. (Emphases added.) On the other hand, appellant cites two pre-lanham Act decisions in which Assistant Commissioner Frazer held "FOAM" to be highly suggestive, but not objectionably descriptive, of cleaning products. Swift & Co. v. Wool Novelty Co., 67 U.S.P.Q. 114 (Com'r Pats. 1945) [WOOL FOAM not descriptive of washing compound for cleansing sweaters, socks, and woolens.], aff'd (on other ground) 156 F. 2d 103, 70 U.S.P.Q. 216 (CCPA 1946); Ex parte West Disinfecting Co., 64 U.S.P.Q. 489 (Com'r Pats. 1945) [RUG FOAM highly suggestive, but not objectionably descriptive, of a cleaning preparation for rugs, upholstery, etc.] As the Examining Attorney has noted in her brief, 5, Swift is distinguishable in that the product therein was a washing compound for cleaning garments rather than a rug and upholstery shampoo. West Disinfecting is apposite to the present case in that the goods in that case appear to have been the same as those now before us. However, we do not follow it. There is nothing in the decision to indicate what kind of evidence was before Commissioner Frazer regarding the significanceof the term "foam" to rug and upholstery cleaning [*5] preparations. Here, the evidence consisting of appellant's labels, the third-party registrations which it introduced, n3 and statements in appellant's briefs, clearly demonstrates the significance of the term "foam" in relation to the product for which registration of FOM is sought. Based on these facts, it seems to us beyond doubt that the term "foam" is merely descriptive of appellant's goods. n3 The reason appellant introduced the third-party registrations of marks incorporating the term "foam" was to support its argument concerning another ground of refusal, likelihood of confusion of the mark applied for with the registered mark DEEP FOME for "carpet shampoo and rug cleaner," which ground was subsequently withdrawn, rather than in regard to the Section 2(e)(1) issue. However, once properly made of record, evidence may be used for all relevant purposes. The only remaining question is whether FOM would be perceived by relevant purchasers as equivalent to the merely descriptive term "foam." It is conceded that considered in the abstract FOM has no such meaning. Indeed, in

71 1985 TTAB LEXIS 104, *; 225 U.S.P.Q. (BNA) 687 Page 3 abstract reference, the term appears to be entirelyarbitrary and would probably be pronounced with [*6] a short "o", i.e. rhyming with "Mom". However, in considering descriptiveness issues, we must consider the term sought to be registered in the context of the product on which it is used and how the purchaser would view the mark in its marketplace setting. In this respect, it is proper to look at the specimens submitted with the application to ascertain what the marketplace reaction by the average purchaser might be. E.g., In re Abcor Development Corp., 588 F. 2d 811, 200 U.S.P.Q. 215 (CCPA 1978). On both of the back and front panels of appellant's label (portion of front panel reproduced below) FOM is presented in letters which have the physical appearance of foam. [SEE ILLUSTRATION IN ORIGINAL] Based on this presentation, the fact that the product takes on the form of a layer of foam when it is applied, and the use of the term "foam" descriptively and as parts of trademarks by appellant and other manufacturers of carpet and upholstery cleaners of this kind, it seems clear to us that a substantial number of purchasers would readily perceive the term FOM to be a misspelling of the descriptiveterm "foam" and would pronounce the term in the same manner as [*7] they would the term FOAM. Moreover, it is likely that dealers would so pronounce the term in their advertising and promotion of these goods. n4 n4 It is a perfectly normal instinct of merchants to promote the sale of their products in a manner that best conveys their beneficial aspects. To pronounce FOM as if it rhymed with "Mom" would be contrary to that instinct. To pronounce it like "foam" would be consistent with it. It is also clear that it is not possible for appellant to control how its mark will be pronounced. See, e.g., In re Elbaum, 211 U.S.P.Q. 639, 641 (TTAB 1981). It is hornbook law that the use of a slight misspelling of a descriptive term which would be perceived by purchasers as the equivalent of the descriptive term is subject to the same proscription of Section 2(e)(1) as the descriptive term itself. E.g., Standard Paint Co. v. Trinidad Asphalt Co., 220 U.S. 446, 455 (1911) [RUBEROID, misspelling of "rubberoid" for roofing material]; Miller Brewing Co. v. Joseph Schlitz Brewing Co., 605 F. 2d 990, 203 U.S.P.Q. 642, 643 (7th Cir. 1979)[LITE, misspelling of "light" for low calorie beer]; Fleetwood Co. v. Sylvia Mende, 298 F.2d 797, 132 U.S.P.Q. 458 (CCPA 1962) [*8] [TINTZ, misspelling of "tints" for hair coloring formula]; American Druggists' Syndicate v. United States Industrial Alcohol Co., 2 F. 2d 942, 55 App. D.C. 140 (1924) [AL-KOL, misspelling of "alcohol" for rubbing alcohol]; A&H Transp. Inc. v. Save Way Stations, Inc., 214 Md. 325, 115 U.S.P.Q. 251 (1957) [SAVON GAS, equivalent of "save on gas" for gasoline filling station services] 1 McCarthy, TRADEMARKS AND UNFAIR COMPETITION, 11:12 (2d ed. 1984). We have considered appellant's argument, reply brief, 4, that registration of FOM could not interfere with anyone's right to use the word "foam" in describing foaming characteristics of their products. The same argument has been frequently made in cases involving misspellings of merely descriptive terms. One answer is that we must be concerned with all classes of purchasers, including those who might not be aware of the fact that the term is a misspelling. As the United States SupremeCourt concluded in the RUBEROID case: The word, therefore is descriptive, not indicative of the origin or ownership of goods; and being of that quality, we cannot admit that it loses such quality and becomes arbitrary [*9] by being misspelled. Bad orthography has not yet become so rare or so easily detected as to make a word the arbitrary sign of something else than its conventional meaning.... Standard Paint, supra, 220 U.S. at 455. The rationale very simply is that the misspelled term does not serve a trademark function any more than the correctly spelled one. As the late Assistant Commissioner Leeds said in Heminway & Bartlett Mfg. Co. v. Sterling Net & Twine Co., 108 U.S.P.Q. 343 (Com'r Pats. 1956). "Nyloon" is merely a misspelling of "nylon" and, as such, it is not more registrable for nylon twine and netting than would be "silke" for silk stockings, or "wul" for wool yarn, or "cotin" for cotton twine and netting. Another is that all competitors trading in the field of products as those in which appellant deals have under our law "the right to be free from claims of exclusive right by others and from harassmentbased on such claims" against their use in their businesses of language which is accepted terminology in that field. Armour & Co. v. Organon, Inc., 245 F.2d 495, 114 U.S.P.Q. 334, 338 (Rich, J., concurring) (CCPA 1957); see [*10] also, Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 U.S.P.Q. 40, 43 (CCPA 1981). The principle is none the less applicable where the term alleged to constitute the trademark is a misspelling likely to be perceived as a term which is merely descriptive of or a generic name for the goods. Astra Pharmaceutical Products, Inc. v. Pharmaton, S.A., 345 F.2d 189, 145 U.S.P.Q. 461 (CCPA 1965); Armour & Co. v. Organon, Inc., supra.

72 1985 TTAB LEXIS 104, *; 225 U.S.P.Q. (BNA) 687 Page 4 In the case before us, it may be subject to debate whether as large a number of purchasers of rug shampoo would be likely to visualize the term FOM in the abstract as a misspelling as in the examples postulated by Mrs. Leeds in Heminway, and certainly not as many as in the RUBEROID case. However, when dealing in consumer goods which are frequentlypurchased by the spoken word, sound is also important. Thus, the right to be free from unwarranted claims of exclusive right by others and from harassment based on such claims, must, concerning goods so traded, include freedom from claims based on similarity of sound against the use by others of the proper spelling and the sound of the underlying word. [*11] In this regard, similarity in sound may be the most important, or even the only, reason for a determination of likelihood of confusion. Leon Finker, Inc. v. Schlussel, 469 F. Supp. 674, 202 U.S.P.Q. 452, (S.D.N.Y. 1979) and cases cited therein, aff'd, 614 F.2d 1288, 204 U.S.P.Q. 433 (2d Cir. 1979); see also, Colburn v. Puritan Mills, Inc., 108 F.2d 377, 43 U.S.P.Q. 482, 484 (7th Cir., 1939); Armstrong Manufacturing Mfg. Co. v. Ridge Tool Co., 132 F.2d. 158, 56 U.S.P.Q. 165 (CCPA 1942). Thus, while appellant's statement that FOM could not interfere with anyone's right to use "foam" to describe the foaming characteristic of its rug shampoo maybe correct, the more significant question is whether registration of FOM on the Principal Register would enable appellant to claim that another's descriptive use of the term FOAM in connection with the same type of product constituted an infringement of its rights in FOM because of the phonetic equivalence of those terms in the perception of a substantial number of purchasers. See, e.g. Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178, 207 U.S.P.Q. 278 (5th Cir. 1980), [*12] cert. denied, Soweco Inc. v. Shell Oil Co. 450 U.S. 981, 210 U.S.P.Q. 776 (1981) [Use of "larvicide" by Shell alleged to infringe LARVACIDE, subject of an incontestable registration for fumigants for exterminating bugs.] The fact that Shell eventually prevailed based on its "fair-use" defense, 15 U.S.C. 33(b)(4)(1976) --suggesting that the same defense might be available to protect appellant's competitors in their use of the descriptive term "foam" fairly and in good faith to describe rug shampoos--, does not absolve us from our responsibility to apply Section 2(e)(1) of the TrademarkAct where not to do so would place one in a position to make or threaten to make an unwarranted claim of rights based on the presumptive right to exclude another's use which flows from the grant of a Principal Register registration. The importance of this inquiry has been highlighted by the recent decision of the Supreme Court in Park 'N Fly v. Dollar Park ' N Fly, Inc., U.S., 105 S. Ct. 658, 224 U.S.P.Q. 327, 331 (1985), holding that an action to enjoin the infringement of a trademark, the federal registration of which has become [*13] incontestable, may not be defended on the ground that the plaintiff's mark is merely descriptive even if the action by this Office in issuing the registration was erroneous. Accordingly, without a showing that appellant's mark has acquired distinctiveness pursuant to Section 2(f) of the Act--there is no claim or showing of secondary meaning here--, we conclude that the refusal of registration on the Principal Register under Section 2(e)(1) was proper. Legal Topics: For related research and practice materials, see the following legal topics: Trademark LawForeign & International ProtectionsInternational TreatiesTrademark LawProtection of RightsRegistrationDisclaimer of Unregistrable MatterTrademark LawProtection of RightsRegistrationPrincipal Register GRAPHIC: Illustration, no caption

73 Page 1 1 of 1 DOCUMENT PENSACOLA MOTOR SALES INC, A FLORIDA CORPORATION, d.b.a. Bob Tyler Toyota, Plaintiff - Appellant, versus EASTERN SHORE TOYOTA, LLC, an Alabama limited liability company, DAPHNE AUTOMOTIVE, LLC, an Alabama limited liability company, SHAWN ESFAHANI, an individual, DAPHNE ENTER- PRISES, INC., an Alabama corporation, Defendants - Appellees. No UNITED STATES COURT OF APPEALS FOR THE ELEVENTH CIRCUIT 2012 U.S. App. LEXIS June 21, 2012, Decided June 21, 2012, Filed PRIOR HISTORY: [*1] Appeal from the United States District Court for the Northern District of Florida. D.C. Docket No. 3:09-cv RS-MD. DISPOSITION: AFFIRMED. COUNSEL: For PENSACOLA MOTOR SALES INC, A FLORIDA CORPORATION, d.b.a. Bob Tyler Toyota, Plaintiff - Appellant: Frank Herrera, Gustavo Sardina, H New Media, MIAMI, FL, US; John S. Derr, Quintairos Prieto Wood & Boyer, PA, TALLAHASSEE, FL; Patrick Vernon Douglas, Quintairos Prieto Wood & Boyer, PA, TALLAHASSEE, FL. For EASTERN SHORE TOYOTA, LLC, an Alabama limited liability company, DAPHNE AUTOMOTIVE, LLC, an Alabama limited liability company, SHAWN ESFAHANI, an individual, DAPHNE ENTERPRISES, INC., an Alabama corporation, Defendants - Appellees: J. Nixon Daniel, III, Beggs & Lane, RLLP, PEN- SACOLA, FL. JUDGES: Before TJOFLAT and CARNES, Circuit Judges, and MICKLE, * District Judge. * Honorable Stephan P. Mickle, United States District Judge for the Northern District of Florida, sitting by designation. OPINION BY: CARNES OPINION CARNES, Circuit Judge: People who compete against each other in the same business or profession don't have to dislike one another. A few years back there was even a song lyricizing about "Lawyers in Love." But no one has ever written a song about "Car Dealers in Love," and if this [*2] case is any indication, no one ever will. These two car dealers are bitter business rivals in overlapping markets. One of them used a software program to compete more aggressively with the other one over the internet. That program produced a multiplicity of mini-websites, a host of hard feelings, and of course litigation. This is the appellate part of that litigation. 1 1 The lawsuit that led to this appeal is not the only one between these parties or the sole indication of the bitterness between them. Last fall a state court jury awarded Shawn Esfahani and his company Eastern Shore Toyota, the primary defendants in the present case, $2.5 million in compensatory damages and $5 million in punitive damages for claims they brought against Bob Tyler Toyota, which is the plaintiff in the present case, and its sales manager. Order Deny. Defs.' Post-Trial Mot. at 10, 32, 35, Daphne Auto., LLC v. Pensacola Motors Sales, Inc., No. CV (Ala. Mobile Cnty. Cir. Ct. Mar. 16, 2012). That $7.5 million judgment re-

74 2012 U.S. App. LEXIS 12726, * Page 2 I. sulted from slanderous statements that Bob Tyler Toyota's salesmen had made about Eastern Shore Toyota and Esfahani, who was born in Iran but fled from there with his family when [*3] he was a teenager. Id. at 16, 18. The state court found that it had been part of Bob Tyler Toyota's sales strategy to tell customers who were considering shopping with Eastern Shore Toyota that Esfahani was a terrorist and that the money his dealership made was being used to support terrorism and to fight American troops in the Middle East, none of which was true. Id. at 16, Bob Tyler Toyota employees had also referred to Eastern Shore Toyota as the "Middle Eastern Toyota" and "Taliban Toyota." Id. at 3. The time period in which Bob Tyler Toyota was using its slanderous statements strategy against Esfahani and Eastern Shore Toyota overlapped the time of Eastern Shore Toyota's internet strategy against Bob Tyler Toyota, which gave rise to the lawsuit leading to this appeal. Id. In fact, Bob Tyler Toyota tried unsuccessfully to introduce evidence of this lawsuit in the slander trial. Id. at 6. Earlier this year the state trial court denied Bob Tyler Toyota's post-judgment motions in that case, leaving intact the $7.5 million judgment against it. Id. at 10, 35. That judgment is now on appeal to the Alabama Supreme Court. Notice of Appeal, Pensacola Motors Sales, Inc. v. Daphne Auto., [*4] LLC, No (Ala. Apr. 4, 2012). Shawn Esfahani is a Hyundai and Toyota car dealer who owns Eastern Shore Toyota, Daphne Automotive, LLC, and Daphne Enterprises, Inc. (collectively "Eastern Shore" for short). In the summer of 2009, Esfahani attended a Hyundai dealers' conference, where officials in Hyundai's corporate division introduced dealers to David Vaughan, Jr., who was the corporate division's internet marketing expert. Vaughan offered to help the dealers revamp their websites and spruce up their technology systems. Not that there's anything wrong with that. Vaughan went further than that, however. Over the next few weeks, he pitched two internet marketing strategies to Esfahani, one defensive and the other offensive. The defensive strategy was for Esfahani, under Vaughan's tutelage, to buy and hold desirable domain names 2 in order to keep them out of competitors' hands; some of those desirable domain names would incorporate trademarks of his competitors. Those defensive strategy domain names would not be operational because they would not be connected to a web page. 2 As another court has explained: A domain name tells users where they can find a particular web page, much [*5] like a street address tells people where they can find a particular home or business. Domain names consist of two parts: the top level domain name (TLD) and secondary level domain name (SLD). The TLD is the suffix, identifying the nature of the site. The SLD is the prefix, identifying the site's owner. Thus in the domain name Duke.edu, ".edu" is the TLD, identifying the site as affiliated with an educational institution. "Duke" is the SLD, identifying the owner as Duke University. Virtual Works, Inc. v. Volkswagen of Am., Inc., 238 F.3d 264, 266 (4th Cir. 2001). The offensive strategy that Vaughan proposed involved the creation of a large number of mini-websites, or microsites, using a computer program that he would license to Esfahani. By simply entering domain names into that software program and clicking a button, Vaughan could instantly mass produce microsites for Esfahani, each one using a name related in some way to the car business, for example, Those microsites would either automatically redirect users who clicked on them to Eastern Shore's official websites or they would display a one-page website advertising Eastern Shore. Esfahani agreed to both strategy [*6] proposals. In July and August 2009 through Eastern Shore, Esfahani signed contracts with Vaughan's company, Advanced Dealer Systems, for marketing services and use of Vaughan's software program. Within a couple of months, Eastern Shore went from owning about 40 domain names to owning around 4,000. The new domain names were purchased from the popular domain name vendor Go- Daddy.com, and some incorporated trademarks from Facebook, YouTube, and ebay, for example: and More to the point of this case, some of the domain names that Eastern Shore purchased incorporated trademarks of its competitors, such as Eastern Shore's new domain name marketing strategy caught the attention of ebay. The online auction website discovered one of the questionable domain

75 2012 U.S. App. LEXIS 12726, * Page 3 names-- it ed Eastern Shore about that name in September The demanded that Eastern Shore stop using ebay's trademark in the domain name, disable any website linked to it, and allow the domain name's registration to expire instead of attempting to sell or transfer it to someone else. Ebay's warned [*7] Eastern Shore that the "registration and use" of a domain name infringing on another's trademark violated the Lanham Act and that the "use, [sale], or offer for sale" of such a domain name violated the Anticybersquatting Consumer Protection Act; it also pointed out that the anticybersquatting act provides for statutory damages of up to $100,000 for each infringing domain name. After receiving the from ebay, Esfahani decided to "take it down." The next day, acting through Vaughan, he gave that domain name back to GoDaddy.com. Esfahani notified ebay that he had complied with its demands. He did not, however, make any effort to review his other domain names to see if they infringed on any other trademarks. There was more trouble. In October 2009 a sales manager at Bob Tyler Toyota discovered one of Eastern Shore's microsites: That microsite featured a photo of one of the car models that Bob Tyler Toyota sold, and it allowed visitors to enter their addresses and their financial information to complete a credit application for a car loan. The phone number listed on the site, however, was not Bob Tyler Toyota's. It was Eastern Shore's. Bob Tyler Toyota employees [*8] found five other Eastern Shore microsites; all of them had virtually the same design, used some version of the Bob Tyler trademark, and listed Eastern Shore's phone number. The general manager for Toyota's southeastern division told Eastern Shore that Bob Tyler Toyota objected to the microsites and urged Eastern Shore to disable them. Esfahani was shocked--"shocked," he said--to learn that those domain names were operational, and he immediately ordered Vaughan to disable the microsites. A few days later, attorneys for Bob Tyler Toyota sent Eastern Shore a cease-and-desist letter identifying six of the infringing microsites, although by then Eastern Shore was already in the process of disabling them. The letter demanded that Eastern Shore forfeit the domain names and threatened to file a lawsuit under the federal anticybersquatting act unless Eastern Shore agreed to pay Bob Tyler Toyota $250,000 within seven days. After the receipt of that letter, Esfahani and Vaughan blamed each other for the problem. Esfahani sent Vaughan a letter terminating their contracts and accusing Vaughan of having "misled" him into believing that purchasing the domain names was legal. Vaughan countered that Esfahani [*9] "went rogue," purchasing the domain names and hosting the microsites on his own despite Vaughan's warnings that doing so "was a real bad idea[]." Bob Tyler Toyota's cease-and-desist letter was dated October 23, By the end of the next day, all of the microsites infringing on the Bob Tyler trademark had been disabled, except for two undetected ones. 3 On December 17, 2009, Bob Tyler Toyota sent Eastern Shore another letter, this one demanding the return of the domain names and a $1 million payment. A week later Esfahani surrendered to GoDaddy.com all of the domain names that infringed on the Bob Tyler trademark, except for the two undetected ones. A little over a week after that, Bob Tyler Toyota filed this lawsuit against Esfahani and Eastern Shore Toyota, along with Daphne Automotive, LLC, and Daphne Enterprises, Inc. (two related corporations controlled by Esfahani), all of which we are referring to collectively as "Eastern Shore," except when separate reference is necessary. II. 3 Eastern Shore's initial review of its domain name list had not located two problem microsites because their domain names misspelled the Bob Tyler trademark: and Eastern [*10] Shore eventually discovered and disabled those microsites on January 3, 2010, and surrendered their domain names to GoDaddy.com on February 3, In its second amended complaint, which is the operative one, Bob Tyler Toyota brought six claims against Eastern Shore seeking injunctive relief and actual and statutory damages. All of those claims were based on Eastern Shore's registration or use of fourteen domain names that impermissibly incorporated the Bob Tyler trademark. The claims were: (1) false advertising under the Lanham Act, 15 U.S.C. 1125(a); (2) unfair competition under the Lanham Act, id.; (3) violation of the Anticybersquatting Consumer Protection Act, id. 1125(d); (4) unfair competition under Florida law; (5) violation of Florida's trademark dilution statute, Fla. Stat ; and (6) violation of Florida's "Antiphising Act," Fla. Stat Bob Tyler Toyota moved for summary judgment on all of the claims. In response to that motion, and about a month and a half before trial, Eastern Shore raised for the first time a statutory defense to the anticybersquatting claim: it allegedly "believed and had reasonable grounds to believe that the use of the domain [*11] name[s] was a fair use or otherwise lawful," 15 U.S.C. 1125(d)(1)(B)(ii). Bob Tyler Toyota replied by arguing that Eastern Shore had waived that statutory de-

76 2012 U.S. App. LEXIS 12726, * Page 4 fense by failing to plead the defense in its answer to the second amended complaint. The district court allowed Eastern Shore to raise the defense. The court also denied in full Bob Tyler Toyota's motion for summary judgment. In its case-in-chief at trial, Bob Tyler Toyota did not prove any monetary damages resulting from Eastern Shore's registration or use of any of the domain names. Because of that, only injunctive relief was available on the federal false advertising claim, the state and federal unfair competition claims, and the state trademark dilution claim. Even without proof of actual damages, however, Bob Tyler Toyota still had a chance to recover statutory damages on its Florida antiphishing claim, see Fla. Stat (2)(b)(2), and on its federal anticybersquatting claim, 15 U.S.C. 1117(d). At the close of its case-in-chief, Bob Tyler Toyota moved for judgment as a matter of law on all of its claims, which the district court denied. Eastern Shore moved for judgment as a matter of law on Bob Tyler Toyota's antiphishing [*12] claim, which the district court granted. Eastern Shore then asked the district court to deny Bob Tyler Toyota any equitable relief on its claims for federal false advertising, state and federal unfair competition, and state trademark dilution. Eastern Shore argued that no injunctive relief was warranted because it had already surrendered the fourteen domain names and disabled the microsites that went with them. 4 Its position was that it should not be enjoined from doing what it had already quit doing before the lawsuit was filed. The district court agreed, denying any injunctive relief because Bob Tyler Toyota failed to show any likelihood that Eastern Shore would re-register the domain names or reactivate the microsites. The court's rulings left only the federal anticybersquatting claim for the jury to consider. 4 One of the fourteen domain names had never been connected to a microsite. At the charge conference, Bob Tyler Toyota raised numerous challenges to the court's proposed jury instructions and special interrogatory verdict form. Among other things, it objected to the interrogatory on Eastern Shore's anticybersquatting statutory defense, which asked the jury whether Eastern Shore [*13] believed and had reasonable grounds to believe that its use of the domain names was a fair use or otherwise lawful. The court overruled that objection. Bob Tyler Toyota also asked the court to instruct the jury on the concept of willful blindness, to give a portion of the American Bar Association's pattern jury instructions on the anticybersquatting act's statutory defense, and to add to the instructions on damages a statement that the act's purposes are to deter and compensate. The district court denied all of those requests. When the court instructed the jury on the anticybersquatting act's statutory defense, it explained that Eastern Shore had the burden to prove that it had both "reasonable grounds to believe that the use of the domain names was [a] fair use or otherwise lawful" and that it actually "had this belief." The court told the jury that "reasonable grounds" meant that "an ordinary person in [the] defendants' position would have had those grounds." The special interrogatory verdict form asked the jury three questions. The first one was: "Did Plaintiff prove by a preponderance of the evidence that any of the Defendants acted in a manner that constituted a violation of the [*14] Anticybersquatting Consumer Protection Act?" If the jury answered "yes" to that question, the second question asked it to identify which of the defendants had violated the anticybersquatting act for each of the fourteen domain names at issue. 5 The third question for the jury addressed the statutory defense. The first part of it asked: "Did any of the Defendants have a reasonably held belief that their use of the domain names was a fair use or otherwise lawful?" The second part of it asked the jury to specify which defendants, if any, "believed that the use of the domain names was a fair use or otherwise lawful." At the end of that interrogatory, the verdict form stated: "If your answer is 'Yes' as to all Defendants, then you have found a verdict for all Defendants.... If your answer is 'No' as to any Defendant, proceed to part 2." "Part 2" asked the jury to specify what damages it "attribute[d] to the use of [each] domain name." The jury did not get that far. 5 As we explained earlier, the defendants were Esfahani, Eastern Shore Toyota, Daphne Automotive, LLC, and Daphne Enterprises, Inc. (which we are referring to collectively as "Eastern Shore"). The jury returned a verdict answering [*15] "yes" to the first question, thereby finding that at least one of the defendants had violated the anticybersquatting act. On the second question, the jury found that Eastern Shore Toyota, not Esfahani or his other corporate entities, violated the anticybersquatting act by registering or using three of the domain names that the jury specified. On the third question, however, the jury decided that all of the defendants, including Eastern Shore Toyota, had a reasonable belief that their use of the domain names was a fair use or otherwise lawful, so it did not get to the question about what damages to award Bob Tyler Toyota. After the court read the verdict, Bob Tyler Toyota did not object to, or even mention, any inconsistency between the jury's finding that Eastern Shore was both in

77 2012 U.S. App. LEXIS 12726, * Page 5 violation of the anticybersquatting act and protected by the act's statutory defense. About a month after the verdict, Bob Tyler Toyota renewed its motion for judgment as a matter of law on all of its claims. It also moved for a new trial on the anticybersquatting claim, arguing, among other things, that the jury verdict was inconsistent and that it was not supported by the evidence. The district court denied [*16] both motions. III. Bob Tyler Toyota has appealed, contending that the district court erred by denying: (1) its motion for summary judgment, (2) equitable relief on three of its claims, 6 (3) its request for proposed jury instructions, (4) its renewed motion for judgment as a matter of law, (5) and its motion for a new trial. It also contends that the district court erred by granting judgment as a matter of law in favor of the defendants on the antiphishing claim and by allowing them to present to the jury the anticybersquatting statutory defense. A. 6 In its briefs to this Court, Bob Tyler Toyota did not challenge the district court's denial of equitable relief on its state trademark dilution claim. That issue is abandoned. See Greenbriar, Ltd. v. City of Alabaster, 881 F.2d 1570, 1573 n.6 (11th Cir. 1989). Bob Tyler Toyota's contention that the district court erred by denying it summary judgment is a non-starter because a party may not appeal an order denying summary judgment after there has been a full trial on the merits. Ortiz v. Jordan, U.S., 131 S.Ct. 884, (2011) ("May a party, as the Sixth Circuit believed, appeal an order denying summary judgment after a full trial [*17] on the merits? Our answer is no."). B. We review only for an abuse of discretion the district court's ruling that Bob Tyler Toyota is not entitled to equitable relief on its federal false advertising claim and its state and federal unfair competition claims. Bradley v. King, 556 F.3d 1225, 1229 (11th Cir. 2009). In determining whether the district court abused its discretion, we decide de novo any underlying legal issues but check factual findings only for clear error. Id. The district court denied injunctive relief because Bob Tyler Toyota could not show that Eastern Shore was likely to register or use the infringing domain names again. As the Supreme Court explained a long time ago, even when voluntary cessation of unlawful conduct does not moot a claim (and there is no argument here that it did), a court has equitable discretion about whether to issue an injunction after the conduct has ceased. See United States v. W.T. Grant Co., 345 U.S. 629, , 73 S.Ct. 894, (1953). Not only that, in this area a district court's "discretion is necessarily broad and a strong showing of abuse must be made to reverse it." Id. at 633, 73 S.Ct. at 898. To establish that a district court abused [*18] its discretion by not issuing an injunction when the unlawful conduct has stopped, the appellant "must demonstrate that there was no reasonable basis for the District Judge's decision." Id. at 634, 73 S.Ct at 898. Bob Tyler Toyota has not done that. The evidence at trial proved that on October 24, 2009, the day after Bob Tyler Toyota sent its cease-and-desist letter, Eastern Shore disabled all of its infringing microsites with the exception of two. The reason it did not disable those two is that misspellings in them prevented Eastern Shore from finding them. When it finally did find those two remaining microsites, it promptly disabled them. On December 24, 2009, Eastern Shore surrendered to GoDaddy.com all of the Bob Tyler domain names that it had discovered. Moreover, Eastern Shore acknowledged its error in creating the microsites, fired its internet consultant, and promised to stop any infringing activity. There was no evidence that Eastern Shore thereafter infringed the Bob Tyler trademark in any way or intended to do so in the future. Because the evidence supported the district court's finding that Eastern Shore was not likely to infringe on the Bob Tyler trademark in the future, [*19] that finding is not clearly erroneous, there is a reasonable basis for the court's decision not to grant an injunction, and that decision is not an abuse of discretion. C. Bob Tyler Toyota's contention that the district court erred by granting Eastern Shore judgment as a matter of law on the state antiphishing claim is meritless. Florida's antiphishing act allows the owner of a web page or trademark "who is adversely affected by [a] violation" to bring a lawsuit under that act. Fla. Stat (1)(c). At trial, Bob Tyler Toyota failed to prove any damages or otherwise show that it had been adversely affected by the microsites or the domain names. The district court correctly concluded that the antiphishing claim failed as a matter of Florida law. IV. Bob Tyler Toyota presses a number of contentions related to the one claim that did go to the jury. It brought that claim under the Anticybersquatting Consumer Protection Act, which provides:

78 2012 U.S. App. LEXIS 12726, * Page 6 A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if,... that person... has a bad faith intent to profit from that mark, including a personal name which [*20] is protected as a mark under this section; and registers, traffics in, or uses a domain name that... in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark U.S.C. 1125(d)(1)(A)(i)-(ii) (subsection designations omitted). The act lists nine factors that "a court may consider" when determining whether a domain name infringer had a "bad faith intent to profit" from the trademark. Id. 1125(d)(1)(B). 7 It also specifies that the factors that may be considered are "not limited to" the nine that are listed. Id. And regardless of which direction the bad faith factors point, the act states: "Bad faith intent... shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful." Id. 1125(d)(1)(B)(ii). That statutory defense is often referred to as the "safe harbor" defense. See, e.g., TMI, Inc. v. Maxwell, 368 F.3d 433, 438 n.6 (5th Cir. 2004). 7 The nine factors listed in the act are: (I) the trademark or other intellectual property rights of the person, if any, in the [*21] domain name; (II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person; (III) the person's prior use, if any, of the domain name in connection with the bona fide offering of any goods or services; (IV)the person's bona fide noncommercial or fair use of the mark in a site accessible under the domain name; (V) the person's intent to divert consumers from the mark owner's online location to a site accessible under the domain name that could harm the goodwill represented by A. the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site; (VI) the person's offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person's prior conduct indicating a pattern of such conduct; (VII) the person's provision of material and misleading false contact information when applying for the registration of the [*22] domain name, the person's intentional failure to maintain accurate contact information, or the person's prior conduct indicating a pattern of such conduct; (VIII) the person's registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and (IX) the extent to which the mark incorporated in the person's domain name registration is or is not distinctive and famous within the meaning of subsection (c) of this section. 15 U.S.C. 1125(d)(1)(B)(i)(I)-(IX). Bob Tyler Toyota contends that for two reasons the district court erred by instructing the jury on the anticybersquatting act's statutory safe harbor defense and submitting an interrogatory covering that defense. First, it argues that Eastern Shore waived the safe harbor defense by failing to plead that defense in its answer to the second amended complaint. "Failure to plead an affirmative

79 2012 U.S. App. LEXIS 12726, * Page 7 defense generally results in a waiver of that defense." [*23] Latimer v. Roaring Toyz, Inc., 601 F.3d 1224, 1239 (11th Cir. 2010) (citing Fed. R. Civ. P. 8(c)). This Court, however, has held that "if a plaintiff receives notice of an affirmative defense by some means other than pleadings, the defendant's failure to comply with Rule 8(c) does not cause the plaintiff any prejudice. When there is no prejudice, the trial court does not err by hearing evidence on the issue." Grant v. Preferred Research, Inc., 885 F.2d 795, 797 (11th Cir. 1989) (quotation marks and citation omitted). In Grant, the defendant raised the affirmative defense of statute of limitations for the first time in a motion for summary judgment that was filed less than a month before trial. Id. The district court permitted the defense to be raised, and we upheld that ruling because the plaintiff had not shown any prejudice from the defendant's failure to raise the defense in the answer. Id. at 798. And we went on to hold that the defendant was entitled to judgment as a matter of law based on that defense. Id. at The facts in Grant are similar to the ones in this case. Eastern Shore raised its anticybersquatting statutory defense a month and a half before trial in a motion [*24] for summary judgment, and Bob Tyler Toyota has not suggested that it suffered any prejudice from the delay in asserting the defense. The district court did not abuse its discretion in allowing Eastern Shore to raise the defense. The second reason Bob Tyler Toyota argues that the district court erred in letting Eastern Shore's safe harbor defense go to the jury is that Eastern Shore was guilty of bad faith, which should have barred it from sailing into the safe harbor. That argument relies on a Fourth Circuit decision and the decisions of some other circuits following it. See Virtual Works, Inc. v. Volkswagen of Am., Inc., 238 F.3d 264 (4th Cir. 2001); see, e.g., Lahoti v. VeriCheck, Inc., 586 F.3d 1190 (9th Cir. 2009); Coca-Cola Co. v. Purdy, 382 F.3d 774 (8th Cir. 2004). In the Fourth Circuit case, an internet service provider named Virtual Works registered the domain name Virtual Works, 238 F.3d at 266. At the time of that registration, Virtual Works' owners recognized the domain name's similarity to the Volkswagen trademark and agreed that they would sell the domain name to the car manufacturer for "'a lot of money'" if they could. Id. Virtual Works later told Volkswagen [*25] that if Volkswagen did not make an offer to purchase the domain name within 24 hours, Virtual Works would sell it to the highest bidder. Id. at 270. When Volkswagen would not purchase the domain name, Virtual Works filed a lawsuit for a declaratory judgment in order to protect its rights to the vw.net domain name, but Volkswagen counterclaimed, asserting that Virtual Works did not have any right to the name and had violated the anticybersquatting act. Id. at 267. The Fourth Circuit held that Virtual Works could not rely on the safe harbor provision because a "defendant who acts even partially in bad faith in registering a domain name is not, as a matter of law, entitled to benefit from the Act's safe harbor provision." Id. at 270. In the present case, Bob Tyler Toyota argues that Eastern Shore likewise should not be permitted to benefit from the safe harbor defense because it conceded in the district court that six of the nine 1125(d)(1)(B) factors were present and weighed against Eastern Shore. Those are the factors that the act says "a court may consider" when determining whether a domain name infringer had a "bad faith intent to profit" from the trademark. 15 U.S.C. 1125(d)(1)(B). As [*26] we have explained before, however, "[a] court's analysis of whether a defendant had the bad faith intent to profit necessary to a cybersquatting claim is not based on a score card of the statutory factors." Southern Grouts & Mortars, Inc. v. 3M Co., 575 F.3d 1235, 1249 (11th Cir. 2009). No particular number of those factors requires a finding of a bad faith intent to profit. The statute, after all, says that the factors are nonexclusive ones that "a court may consider." 15 U.S.C. 1125(d)(1)(B)(i) (emphasis added); see also Sporty's Farm, L.L.C. v. Sportsman's Mkt., Inc., 202 F.3d 489, 499 (2d Cir. 2000) (noting that the most important grounds for finding bad faith "are the unique circumstances of this case, which do not fit neatly into the specific factors enumerated by Congress but may nevertheless be considered under the statute"). We do not read Virtual Works or any other decision that has been cited to us as holding that there is a statutory factors tipping point at which the safe harbor defense tumbles out of the case. See Virtual Works, 238 F.3d at 269 ("We need not, however, march through the nine factors seriatim because the [act] itself notes that use of the listed criteria [*27] is permissive."). The present case is different from Virtual Works where it was undisputed that the defendant had a bad faith intent to profit by selling or threatening to sell the infringing domain name to the highest bidder if Volkswagen did not buy the name from it. See id. at 270. In this case, by contrast, there was no evidence that Eastern Shore intended to sell or threatened to sell any infringing domain names to anyone at any time. There was some evidence that Eastern Shore intended to profit from the infringing domain names, but there was also evidence disputing that. Where there is a genuine dispute about a material fact, such as whether Eastern Shore had a bad faith intent to profit or instead reasonably believed that its actions were lawful, resolving that dispute is a task for the jury. See Tate v. Gov't Emps. Ins. Co., 997 F.2d 1433, 1436 (11th Cir. 1993) ("A judgment as a matter of law will not lie if the dispute about a material

80 2012 U.S. App. LEXIS 12726, * Page 8 fact is genuine, that is, if the evidence is such that a reasonable jury could return a verdict for the nonmoving party." (quotation marks omitted)). 8 8 We also reject Bob Tyler Toyota's contention that the district court impermissibly allowed [*28] Eastern Shore to argue a mistake of law defense to the anticybersquatting claim at trial. Eastern Shore did not argue to the jury that it misunderstood the law and thus should be shielded from liability. Instead, Eastern Shore argued that it believed and had reasonable grounds to believe that its actions were lawful based on Vaughan's professional advice, which was a permissible argument under the anticybersquatting act. See 15 U.S.C. 1125(d)(1)(B)(ii). In addition to the absence of any evidence that Eastern Shore attempted to sell the improper microsites or use them to extort money from Bob Tyler Toyota, there is evidence that Eastern Shore relied on the advice of Vaughan, Hyundai's internet marketing expert; that it promptly discontinued the microsites as soon as it received notice they violated the anticybersquatting act; and that it then surrendered the infringing domain names to GoDaddy.com. This is not to say that we would have decided the good faith versus bad faith issue the same way that the jury did, only that the evidence created a genuine issue of material fact for the jury to resolve. B. Bob Tyler Toyota contends that the district court erred by rejecting three of its proposed [*29] jury instructions on the anticybersquatting claim. We review only for an abuse of discretion a district court's refusal to give a requested jury instruction. Burchfield v. CSX Transp., Inc., 636 F.3d 1330, 1333 (11th Cir. 2011). In refusing to give a requested jury instruction, "[a]n abuse of discretion is committed only when (1) the requested instruction correctly stated the law, (2) the instruction dealt with an issue properly before the jury, and (3) the failure to give the instruction resulted in prejudicial harm to the requesting party." Id. at (quotation marks omitted). 1. Bob Tyler Toyota contends that the district court should have given the instruction it requested on willful blindness. We cannot decide this issue on the merits because we do not know exactly what the requested instruction, which is not in the record on appeal, said. Under the "absence equals affirmance" rule, "the burden is on the appellant to ensure the record on appeal is complete, and where a failure to discharge that burden prevents us from reviewing the district court's decision we ordinarily will affirm the judgment." Selman v. Cobb Cnty. Sch. Dist., 449 F.3d 1320, 1333 (11th Cir. 2006); accord [*30] Loren v. Sasser, 309 F.3d 1296, 1304 (11th Cir. 2002); Borden, Inc. v. Fla. E. Coast Ry. Co., 772 F.2d 750, 758 (11th Cir. 1985); Green v. Aetna Ins. Co., 397 F.2d 614, 615 n.5, (5th Cir. 1968). 9 So it is here. Without knowing exactly what the requested instruction stated we cannot state whether it correctly stated the law. See Burchfield, 636 F.3d at 1333 (noting that the first step in deciding whether giving an instruction was an abuse of discretion is determining whether "the requested instruction correctly stated the law") In Bonner v. City of Prichard, 661 F.2d 1206, 1209 (11th Cir. 1981) (en banc), we adopted as binding precedent all decisions of the former Fifth Circuit handed down prior to October 1, Bob Tyler Toyota next contends that the district court erred by not including a portion of the American Bar Association's model jury instructions on the anticybersquatting act's statutory defense. The portion of the ABA model instruction that Bob Tyler Toyota proposed states: "Defendants lack such 'reasonable grounds' if they had multiple motives and not all of those motives would qualify for this defense." In its briefs on appeal, Bob Tyler Toyota does not explain [*31] how it was prejudiced by the district court's rejection of this instruction. And it is not evident that Bob Tyler Toyota was prejudiced. We have held that: If the trial judge's instructions accurately reflect the law, he or she is given wide discretion as to the style and wording employed in its instruction. Further, under this standard, we examine whether the jury charges, considered as a whole, sufficiently instructed the jury so that the jurors understood the issues and were not misled. We will only reverse the lower court because of an erroneous instruction if we are left with a substantial and ineradicable doubt as to whether the jury was properly guided in its deliberations. McCormick v. Aderholt, 293 F.3d 1254, 1260 (11th Cir. 2002) (quotation marks and citations omitted) (emphasis added). In this case the district court instructed the jury that it "must consider all of the evidence." And a "jury is

81 2012 U.S. App. LEXIS 12726, * Page 9 presumed to follow jury instructions." Adams v. Wainwright, 709 F.2d 1443, 1447 (11th Cir. 1983). We cannot say--and Bob Tyler Toyota does not attempt to argue--that in deciding whether Eastern Shore reasonably believed its registration or use of the domain names was lawful, the jury [*32] did not consider all of the possible motivations or attempted uses of the domain names. Bob Tyler Toyota argued that Eastern Shore had at least two motivations: (1) to defensively register and hold the domain names, and (2) to divert consumers to its websites. It is implausible for the jury to have concluded that Eastern Shore had no reasonable belief that one of those motivations was lawful yet render a verdict that Eastern Shore had a reasonable belief that its actions were lawful. Either Eastern Shore had a reasonable belief or it didn't. Considering all of the circumstances, we are not "left with a substantial and ineradicable doubt as to whether the jury was properly guided in its deliberations." McCormick, 293 F.3d at 1260 (quotation marks omitted). Bob Tyler Toyota has not carried its burden of showing that it was prejudiced by the district court's refusal to give the ABA model instruction. See Burchfield, 636 F.3d at (stating that the failure to give a requested instruction is not an abuse of discretion unless it "resulted in prejudicial harm to the requesting party"). 3. Bob Tyler Toyota also contends that the district court erred when it refused to instruct the jury [*33] that the anticybersquatting act's purposes were to deter infringement and to compensate victims. The obvious purpose of any statute that authorizes the award of damages against one who violates it is to compensate the victim and to deter violations. There is no need to state the obvious, and Bob Tyler Toyota has presented no evidence that doing so would have altered the jury's verdict in this case. Because Bob Tyler Toyota was not prejudiced, the district court did not abuse its discretion by refusing to instruct the jury about the purposes of the act. See id. C. Bob Tyler Toyota complains that the jury's answers in its special interrogatory verdict were inconsistent. They were. The jury found both that Eastern Shore Toyota had violated the anticybersquatting act and also that it qualified for the protection of the act's safe harbor because it had a reasonable belief that the "use of the domain name[s] was a fair use or otherwise lawful." 15 U.S.C. 1125(d)(1)(B)(ii). Those answers are inconsistent because a defendant who falls within the scope of the safe harbor provision necessarily lacks the bad faith intent to profit that is necessary to violate the statute. See id. 1125(d)(1)(A). Even [*34] so, Bob Tyler Toyota waived any argument that the verdict was inconsistent by not objecting before the jury was discharged. See Walter Int'l Prods., Inc. v. Salinas, 650 F.3d 1402, 1419 (11th Cir. 2011) ("We have held that if the party challenging this type of verdict has failed to object before the jury is discharged, that party has waived the right to contest the verdicts on the basis of alleged inconsistency." (quotation marks omitted)). The reason for this particular raise-it-or-lose-it rule is that if the inconsistency is raised before the jury is discharged, the jury can be sent back for further deliberations to resolve the inconsistency in its verdict or interrogatory answers. Once the jury is gone, and has been free to talk to others about the case, that is not possible. Bob Tyler Toyota did not mention any inconsistency in the interrogatory answers until about a month after the jury rendered its verdict. That was way too late. D. Bob Tyler Toyota's remaining contentions are directed at the denial of its renewed motion for judgment as a matter of law based on the sufficiency of the evidence and the denial of its motion for a new trial based on the weight of the evidence. 1. We [*35] review de novo the denial of a motion for judgment as a matter of law, which necessarily means that we apply the same standard as the district court. Goldsmith v. Bagby Elevator Co., Inc., 513 F.3d 1261, 1275 (11th Cir. 2008). That standard is heavily weighted in favor of preserving the jury's verdict. In applying it, "we consider all the evidence, and the inferences drawn therefrom, in the light most favorable to the nonmoving party. We then determine whether, in this light, there was any legally sufficient basis for a reasonable jury to find in favor of the nonmoving party." Advanced Bodycare Solutions, LLC v. Thione Int'l, Inc., 615 F.3d 1352, 1360 (11th Cir. 2010) (quotation marks, citation, and alterations omitted). That determination is substantially guided by the principle that "[c]redibility determinations, the weighing of the evidence, and the drawing of legitimate inferences from the facts are jury functions, not those of a judge." See Cleveland v. Home Shopping Network, Inc., 369 F.3d 1189, 1193 (11th Cir. 2004) (quotation marks omitted). It necessarily follows that we must "disregard all evidence favorable to the moving party that the jury is not required to believe." Id. Bob [*36] Tyler Toyota's entitlement to judgment as a matter of law on its anticybersquatting act claim turns on whether there was enough evidence for the jury

82 2012 U.S. App. LEXIS 12726, * Page 10 to find that Eastern Shore reasonably believed that its actions were lawful. If Eastern Shore reasonably believed its actions were lawful, it had no bad faith intent to profit; and if it had no bad faith intent to profit, it is not liable under the act; and if it is not liable under the act, Bob Tyler Toyota was not entitled to judgment as a matter of law. See 15 U.S.C. 1125(d)(1)(B)(ii). Bob Tyler Toyota argues that there was not enough evidence for the jury to find that Eastern Shore reasonably believed that its actions were lawful because the evidence at trial established a number of the "bad faith" statutory factors, see 15 U.S.C. 1125(d)(1)(B)(i)(I)-(IX), which in turn ruled out any finding that Eastern Shore reasonably believed its actions were lawful. The number of statutory factors, however, is not conclusive. Regardless of how many statutory factors the evidence establishes, Eastern Shore cannot be liable for registering or using the Bob Tyler trademark with a bad faith intent to profit if it nonetheless "believed and had reasonable [*37] grounds to believe that the use of the domain name was... lawful." Id. 1125(d)(1)(B)(ii). To qualify for that safe harbor, Eastern Shore must have had both a subjective belief and an objectively reasonable belief in the lawfulness of its actions. Viewed in the context of a motion for judgment as a matter of law, the question is: when all credibility determinations are made and all inferences are drawn in favor of the verdict, and all evidence disfavoring the verdict that the jury was not required to believe is disregarded, was there enough evidence to support the verdict that Eastern Shore lacked a bad faith intent to profit because it believed and had reasonable grounds to believe that its actions were lawful? There was. Esfahani testified that: "Based on everything I knew, owning these domain names was legal, and is legal." He also testified that if he had known that it was illegal to register the domain names, he would not have done so. And there was evidence that Vaughan assured Esfahani that the practices he was proposing were legal and that Esfahani reasonably relied on Vaughan's expertise and assurances. 10 Esfahani had every reason to believe that Vaughan was a bona fide [*38] and independent internet marketing professional on whom he could rely. Vaughan had worked in the car dealership business for about twenty-seven years and had started working in internet marketing as early as He owned Advanced Dealer Systems, an internet marketing company whose clientele included car dealerships and manufacturers, such as Hyundai, Dodge, Jeep, and Chrysler. It was Hyundai's corporate division that introduced Vaughan to its dealership owners, including Esfahani, as a "preferred vendor" and the corporate division's internet marketing expert, someone who could help dealers revamp their websites and internet marketing strategies to compete in the twenty-first century economy. 10 In Southern Grouts & Mortars, Inc. v. 3M Co., 575 F.3d 1235, 1247 (11th Cir. 2009), we held that 3M did not have a bad faith intent to profit when it continued to register, but did not otherwise use or attempt to sell, a domain name that incorporated a trademark of its competitor, Southern Grouts. That conclusion might seem to favor Eastern Shore in this case, but Southern Grouts does not stand for the proposition that every instance of registering domain names containing the trademark of another [*39] to prevent its use is permitted by the anticybersquatting act. In that case Southern Grouts failed to prove that 3M had a bad faith intent to profit by continuing to register a single domain name when 3M did so not to prey on customer confusion but to prevent confusion. Id. at The trademark used in the disputed domain name was similar to a trademark 3M owned, and 3M was seeking to protect its own trademark from erosion by its competitors. Id. at 1239, In conversations with Esfahani, Vaughan touted offensive and defensive tactics that Eastern Shore could use in the ultra-competitive car dealership business. Offensively, Vaughan's Advanced Dealer Systems contracted with Eastern Shore to "build and host multiple websites" and to license Vaughan's proprietary microsite-producing program for eighteen months to net the dealership more customers. Defensively, Vaughan outlined a strategy of obtaining and holding desirable domain names to prevent the competition from ever using them. So one set of domain names would be used offensively to host one-page microsites or redirect users to Eastern Shore's official websites, and the other set would be inactive. Despite Eastern Shore's [*40] purchase of thousands of domain names, many of them were never activated, which meant that they were not connected to their own microsites and did not redirect web visitors to Eastern Shore's actual website. Vaughan was so convinced of the legality and propriety of the defensive strategy that he openly touted it in his deposition testimony, which was read into evidence at trial: If I was a guy like Shawn Esfahani, I would buy my competition up; and I would just not let them use it. I would just keep [the domain names] dormant. I think that's a good strategy.... I've actually helped Hyundai buy Toyota domains just to keep them away from Toyota.... Everybody does it.

83 2012 U.S. App. LEXIS 12726, * Page 11 There also was evidence from which the jury could have concluded that Vaughan inadvertently launched the microsites that used the Bob Tyler trademark instead of keeping those domain names dormant, as Esfahani testified he had believed Vaughan would do. Vaughan controlled his microsite-producing computer program. With the click of a button, that program could generate microsites from data in an Excel spreadsheet. The ease with which the program could be activated allowed for inadvertent activation. And despite the fact [*41] that Eastern Shore purchased the domain names, Vaughan decided which domain server it should purchase to interact with his microsite program, Vaughan managed the Go- Daddy.com domain name account, and Vaughan had access to all the domain names. Although Vaughan denied activating the infringing microsites, the jury was not required to believe his denials. At least one of the activated infringing microsites bore the name of his company in the tagline "Powered by Advanced Dealer Systems." And it was undisputed that Vaughan and his company had exclusive access to the operational back-end of the microsites, where he could upload content and track visitors to the sites. In his testimony about the infringing microsites, Esfahani stated that he "personally had no idea these things were hooked to [the] website generating machine" that Vaughan sold to him, and he expressed his belief that Vaughan may have inadvertently connected the infringing domain names to microsites. Esfahani's reaction to the news that the trademark-infringing domain names had been activated is more evidence that he had not wanted those domain names to be used offensively and was unaware that they were being used that way. [*42] After Toyota's southeastern division general manager alerted Esfahani to the microsites using the Bob Tyler trademark, Esfahani immediately ordered Vaughan to deactivate them. Esfahani testified about their conversation: I said, "Hey, there's a website out there that's been activated, how did that happen?" He said, "Well, we're building these websites for you as"--and I said, "Well how did Bob Tyler's get on there?" And he said, "My programmers don't know what they're plugging in. They don't recognize Bob Tyler's." And I said, "You need to be much more selective. Take anything that's got Bob Tyler's name on it off your process of building these websites." And he said, "Ok." And that was the end of that. That conversation occurred a few days before Eastern Shore received Bob Tyler Toyota's cease-and-desist letter, claiming that Eastern Shore was breaking the law with the microsites and threatening to sue it. According to Eastern Shore's administrative director, when the letter came Esfahani "was upset that we were being told that this was something that was wrong, that we couldn't do it, that it was illegal... we never do anything that's illegal. I mean he's very explicit about that." [*43] Esfahani then called Vaughan again. Recounting that conversation, Vaughan, who blamed Esfahani for the microsite mishap, testified that the activation of the infringing microsites likely was an error: "I do believe [it] was an error, because his reaction was abrupt, immediately. He called me in the morning. This was before work started.... This was an SOS call for sure." (Emphasis added.) By the end of day on October 24, 2009, a day after Bob Tyler Toyota sent the cease-and-desist letter, Vaughan had disabled the known microsites that utilized the Bob Tyler trademark as Esfahani had demanded he do. A few days later Esfahani sent a letter to Vaughan terminating Eastern Shore's contract with Vaughan's company. The letter read: "We entered into a contract with you under the assumption that purchasing these domains was legal. Needless to say, I feel I've been misled, whether willful or not, therefore we need to end our contract immediately." Within a couple of months and before this lawsuit was filed, Eastern Shore also surrendered to GoDaddy.com all of the Bob Tyler trademark-infringing domain names that it had found. A few months later it also surrendered to GoDaddy.com the domain [*44] names that infringed on the trademarks of other companies. In summary, construed in the light most favorable to the verdict, the evidence showed that Esfahani believed the actions he took and those he authorized Vaughan to take complied with the law. As soon as he received notice about the existence of the infringing Bob Tyler microsites and before he even received a letter from Bob Tyler Toyota demanding that he do so, Esfahani ordered Vaughan to deactivate them. Eastern Shore surrendered the domain names using the Bob Tyler trademark before the lawsuit was filed in this case, and it surrendered the domain names using trademarks of its other competitors soon thereafter. And, of course, there was no evidence that Eastern Shore ever attempted to profit by selling the infringing domain names to Bob Tyler Toyota or anyone else.

84 2012 U.S. App. LEXIS 12726, * Page 12 The actions and reactions of Esfahani and Eastern Shore were starkly different from those of defendants who have been held to have violated the anticybersquatting act. See, e.g., Lahoti, 586 F.3d at 1203 ("[A] reasonable person who had previously been declared a cybersquatter in a judicial proceeding [] should have known that his actions might be unlawful."); Audi AG, 469 F.3d at [*45] ("Following the cease and desist letters and this lawsuit, [the defendant] continued to sell advertising space [on the trademark-infringing website]. Even construing facts and inferences in a light most favorable to [the defendant], his belief that he had permission to use the trademarks was objectively unreasonable...."); Coca-Cola Co., 382 F.3d at 788 ("[The defendant] argues that his belief that his conduct was protected by the First Amendment brings him within the ACPA 'safe harbor' provision.... He continued to register and use domain names in the face of repeated complaints and warnings from the plaintiffs that such conduct was unlawful and even after the district court issued preliminary injunctive relief. Moreover, [the defendant] had also been enjoined in a prior Internet case.... That injunction was affirmed despite [his] claim that his actions were protected by the First Amendment, and that appellate decision was filed before [the defendant] engaged in the conduct at issue in this case."). Bob Tyler Toyota attempts to bring this case within the factual orbit of some of those circuit opinions by arguing that the cease-and-desist that Eastern Shore had received [*46] from ebay a month before it got Bob Tyler Toyota's cease-and-desist letter alerted Eastern Shore to the fact that its trademark infringing domain names likely violated the anticybersquatting act and the Lanham Act. Actually, what ebay's stated was that Eastern Shore's "registration and use" or the "use, [sale], or offer for sale" of the domain name likely violated the law. (Emphasis added.) A jury could have reasonably found that after reading that Esfahani still reasonably believed that defensively holding the domain names using the Bob Tyler trademark was not a violation of the law. And, as we have explained, a jury also could have reasonably found that Eastern Shore did not know that the microsites using the Bob Tyler trademark were operational, and thus in "use," until Toyota's southeastern division general manager told Esfahani about the microsites. Bob Tyler Toyota also attempts to show on another ground why Eastern Shore had no reasonable belief that its actions were lawful. Esfahani testified that years before meeting Vaughan, a competitor's disgruntled ex-employee contacted him and offered to sell him the competitor's trademarked domain names. The ex-employee had [*47] purchased the domain names for the competitor, while still employed by it, and at its direction. Esfahani turned down the offer, calling it "dirty pool." Bob Tyler Toyota argues that Esfahani's testimony shows that he knew that it was unlawful to register any domain name that included another company's trademark. But a reasonable jury just as easily could have inferred from that testimony that Esfahani simply did not want to purchase pilfered property. That does not mean Esfahani knew or should have known that he could not legally purchase unpilfered domain names from Go- Daddy.com to prevent their use by competitors, especially when Vaughan was telling him that he could. Bob Tyler Toyota also obtained a party admission under Federal Rule of Civil Procedure 36(a) from Eastern Shore admitting that it "purchased the Bob Tyler Domain Names with the intention of diverting consumers from [Bob Tyler Toyota's] website or business to [Eastern Shore's] own website." Bob Tyler Toyota introduced that admission into evidence as part of one of its exhibits. Ordinarily, under Rule 36(b), the effect of such a party admission would be to "conclusively establish[]" for these proceedings the fact that [*48] was admitted unless the district court, upon a motion, allowed Eastern Shore to withdraw or amend that admission. Fed. R. Civ. P. 36(b). But what ordinarily happens and what should have happened did not happen in this case. Although Eastern Shore never made a motion to withdraw its admission, Bob Tyler Toyota never objected to Eastern Shore asserting a position at trial that was directly contrary to that admission. It let Eastern Shore offer evidence and argue that it intended only to defensively hold the domain names, not to activate them and divert customers to its own websites. The district court apparently did not notice the inconsistency either. But the jury did. During the first day of deliberations, the jury sent a question to the district court asking it how it should resolve a conflict between the party admission and the "[p]resented testimony that [Eastern Shore] did not willfully activate a site." Instead of arguing that the jury should be instructed according to the Federal Rules of Civil Procedure--that the Rule 36(a) admission established that fact conclusively--bob Tyler Toyota's attorney, for unknown reasons, agreed with Eastern Shore's attorney that the jury should be [*49] instructed to give the admission and the trial testimony "the weight you believe it deserves." So, with the agreement of both sides, the district court instructed the jury that: "The Request for Admissions relates to the purchase of a domain name. The testimony which you describe in your communication relates to the activation of a website. The two are different things. You should give each the weight you believe it deserves." The next day the jury had another question about Eastern Shore's admission. It asked whether Eastern

85 2012 U.S. App. LEXIS 12726, * Page 13 Shore was "admitting to only 'Defensive use' or to both Defensive and offensive use." The district court determined that Eastern Shore's admission dealt only with the intention it had in purchasing the domain names, not with the intent behind any of its later actions. On that basis, the district court suggested to the parties a jury instruction explaining that "the defendants' response simply admitted that sentence as it is worded." Eastern Shore's attorney was satisfied with that instruction. So was Bob Tyler Toyota's attorney, who said: "That's fine with me too, Your Honor." The district court then gave that instruction, and less than two hours later, the jury [*50] decided the case in favor of Eastern Shore. The district court should have instructed the jury that Eastern Shore's Rule 36(a) admission established conclusively that Eastern Shore purchased the infringing domain names with the intent to divert consumers to its websites. But its error in not doing so was an error that Bob Tyler Toyota invited. A party that invites an error cannot complain when its invitation is accepted. Ford ex rel. Estate of Ford v. Garcia, 289 F.3d 1283, (11th Cir. 2002). Under the instructions that Bob Tyler Toyota agreed to, the jury was free to weigh the testimony Eastern Shore presented against its Rule 36(a) admission and give each "the weight [the jury] believe[d] it deserve[d]." That, apparently, is what it did. After considering all of the evidence, and the circumstances, we cannot say that the district court erred in denying Bob Tyler Toyota's motion for judgment as a matter of law. 2. As for the denial of Bob Tyler Toyota's motion for new trial based on the weight of the evidence, "[n]ew trials should not be granted on evidentiary [sufficiency] grounds unless, at a minimum, the verdict is against the great--not merely the greater--weight of the evidence." [*51] St. Luke's Cataract & Laser Inst., P.A. v. Sanderson, 573 F.3d 1186, 1200 n.16 (11th Cir. 2009) (quotation marks and alteration omitted). The district court's determination that the verdict was not against the great weight of the evidence is one that we review only for an abuse of discretion. Rosenfield v. Wellington Leisure Prods., Inc., 827 F.2d 1493, 1498 (11th Cir. 1987). In light of the totality of the evidence, which we have already summarized, we cannot say that the district court abused its discretion in determining that the jury's verdict was not against the great weight of the evidence. AFFIRMED.

86 Page 1 1 of 1 DOCUMENT PENSACOLA MOTOR SALES INC, A FLORIDA CORPORATION, d.b.a. Bob Tyler Toyota, Plaintiff - Appellant, versus EASTERN SHORE TOYOTA, LLC, an Alabama limited liability company, DAPHNE AUTOMOTIVE, LLC, an Alabama limited liability company, SHAWN ESFAHANI, an individual, DAPHNE ENTER- PRISES, INC., an Alabama corporation, Defendants - Appellees. No UNITED STATES COURT OF APPEALS FOR THE ELEVENTH CIRCUIT 2012 U.S. App. LEXIS June 21, 2012, Decided June 21, 2012, Filed PRIOR HISTORY: [*1] Appeal from the United States District Court for the Northern District of Florida. D.C. Docket No. 3:09-cv RS-MD. DISPOSITION: AFFIRMED. COUNSEL: For PENSACOLA MOTOR SALES INC, A FLORIDA CORPORATION, d.b.a. Bob Tyler Toyota, Plaintiff - Appellant: Frank Herrera, Gustavo Sardina, H New Media, MIAMI, FL, US; John S. Derr, Quintairos Prieto Wood & Boyer, PA, TALLAHASSEE, FL; Patrick Vernon Douglas, Quintairos Prieto Wood & Boyer, PA, TALLAHASSEE, FL. For EASTERN SHORE TOYOTA, LLC, an Alabama limited liability company, DAPHNE AUTOMOTIVE, LLC, an Alabama limited liability company, SHAWN ESFAHANI, an individual, DAPHNE ENTERPRISES, INC., an Alabama corporation, Defendants - Appellees: J. Nixon Daniel, III, Beggs & Lane, RLLP, PEN- SACOLA, FL. JUDGES: Before TJOFLAT and CARNES, Circuit Judges, and MICKLE, * District Judge. * Honorable Stephan P. Mickle, United States District Judge for the Northern District of Florida, sitting by designation. OPINION BY: CARNES OPINION CARNES, Circuit Judge: People who compete against each other in the same business or profession don't have to dislike one another. A few years back there was even a song lyricizing about "Lawyers in Love." But no one has ever written a song about "Car Dealers in Love," and if this [*2] case is any indication, no one ever will. These two car dealers are bitter business rivals in overlapping markets. One of them used a software program to compete more aggressively with the other one over the internet. That program produced a multiplicity of mini-websites, a host of hard feelings, and of course litigation. This is the appellate part of that litigation. 1 1 The lawsuit that led to this appeal is not the only one between these parties or the sole indication of the bitterness between them. Last fall a state court jury awarded Shawn Esfahani and his company Eastern Shore Toyota, the primary defendants in the present case, $2.5 million in compensatory damages and $5 million in punitive damages for claims they brought against Bob Tyler Toyota, which is the plaintiff in the present case, and its sales manager. Order Deny. Defs.' Post-Trial Mot. at 10, 32, 35, Daphne Auto., LLC v. Pensacola Motors Sales, Inc., No. CV (Ala. Mobile Cnty. Cir. Ct. Mar. 16, 2012). That $7.5 million judgment re-

87 2012 U.S. App. LEXIS 12726, * Page 2 I. sulted from slanderous statements that Bob Tyler Toyota's salesmen had made about Eastern Shore Toyota and Esfahani, who was born in Iran but fled from there with his family when [*3] he was a teenager. Id. at 16, 18. The state court found that it had been part of Bob Tyler Toyota's sales strategy to tell customers who were considering shopping with Eastern Shore Toyota that Esfahani was a terrorist and that the money his dealership made was being used to support terrorism and to fight American troops in the Middle East, none of which was true. Id. at 16, Bob Tyler Toyota employees had also referred to Eastern Shore Toyota as the "Middle Eastern Toyota" and "Taliban Toyota." Id. at 3. The time period in which Bob Tyler Toyota was using its slanderous statements strategy against Esfahani and Eastern Shore Toyota overlapped the time of Eastern Shore Toyota's internet strategy against Bob Tyler Toyota, which gave rise to the lawsuit leading to this appeal. Id. In fact, Bob Tyler Toyota tried unsuccessfully to introduce evidence of this lawsuit in the slander trial. Id. at 6. Earlier this year the state trial court denied Bob Tyler Toyota's post-judgment motions in that case, leaving intact the $7.5 million judgment against it. Id. at 10, 35. That judgment is now on appeal to the Alabama Supreme Court. Notice of Appeal, Pensacola Motors Sales, Inc. v. Daphne Auto., [*4] LLC, No (Ala. Apr. 4, 2012). Shawn Esfahani is a Hyundai and Toyota car dealer who owns Eastern Shore Toyota, Daphne Automotive, LLC, and Daphne Enterprises, Inc. (collectively "Eastern Shore" for short). In the summer of 2009, Esfahani attended a Hyundai dealers' conference, where officials in Hyundai's corporate division introduced dealers to David Vaughan, Jr., who was the corporate division's internet marketing expert. Vaughan offered to help the dealers revamp their websites and spruce up their technology systems. Not that there's anything wrong with that. Vaughan went further than that, however. Over the next few weeks, he pitched two internet marketing strategies to Esfahani, one defensive and the other offensive. The defensive strategy was for Esfahani, under Vaughan's tutelage, to buy and hold desirable domain names 2 in order to keep them out of competitors' hands; some of those desirable domain names would incorporate trademarks of his competitors. Those defensive strategy domain names would not be operational because they would not be connected to a web page. 2 As another court has explained: A domain name tells users where they can find a particular web page, much [*5] like a street address tells people where they can find a particular home or business. Domain names consist of two parts: the top level domain name (TLD) and secondary level domain name (SLD). The TLD is the suffix, identifying the nature of the site. The SLD is the prefix, identifying the site's owner. Thus in the domain name Duke.edu, ".edu" is the TLD, identifying the site as affiliated with an educational institution. "Duke" is the SLD, identifying the owner as Duke University. Virtual Works, Inc. v. Volkswagen of Am., Inc., 238 F.3d 264, 266 (4th Cir. 2001). The offensive strategy that Vaughan proposed involved the creation of a large number of mini-websites, or microsites, using a computer program that he would license to Esfahani. By simply entering domain names into that software program and clicking a button, Vaughan could instantly mass produce microsites for Esfahani, each one using a name related in some way to the car business, for example, Those microsites would either automatically redirect users who clicked on them to Eastern Shore's official websites or they would display a one-page website advertising Eastern Shore. Esfahani agreed to both strategy [*6] proposals. In July and August 2009 through Eastern Shore, Esfahani signed contracts with Vaughan's company, Advanced Dealer Systems, for marketing services and use of Vaughan's software program. Within a couple of months, Eastern Shore went from owning about 40 domain names to owning around 4,000. The new domain names were purchased from the popular domain name vendor Go- Daddy.com, and some incorporated trademarks from Facebook, YouTube, and ebay, for example: and More to the point of this case, some of the domain names that Eastern Shore purchased incorporated trademarks of its competitors, such as Eastern Shore's new domain name marketing strategy caught the attention of ebay. The online auction website discovered one of the questionable domain

88 2012 U.S. App. LEXIS 12726, * Page 3 names-- it ed Eastern Shore about that name in September The demanded that Eastern Shore stop using ebay's trademark in the domain name, disable any website linked to it, and allow the domain name's registration to expire instead of attempting to sell or transfer it to someone else. Ebay's warned [*7] Eastern Shore that the "registration and use" of a domain name infringing on another's trademark violated the Lanham Act and that the "use, [sale], or offer for sale" of such a domain name violated the Anticybersquatting Consumer Protection Act; it also pointed out that the anticybersquatting act provides for statutory damages of up to $100,000 for each infringing domain name. After receiving the from ebay, Esfahani decided to "take it down." The next day, acting through Vaughan, he gave that domain name back to GoDaddy.com. Esfahani notified ebay that he had complied with its demands. He did not, however, make any effort to review his other domain names to see if they infringed on any other trademarks. There was more trouble. In October 2009 a sales manager at Bob Tyler Toyota discovered one of Eastern Shore's microsites: That microsite featured a photo of one of the car models that Bob Tyler Toyota sold, and it allowed visitors to enter their addresses and their financial information to complete a credit application for a car loan. The phone number listed on the site, however, was not Bob Tyler Toyota's. It was Eastern Shore's. Bob Tyler Toyota employees [*8] found five other Eastern Shore microsites; all of them had virtually the same design, used some version of the Bob Tyler trademark, and listed Eastern Shore's phone number. The general manager for Toyota's southeastern division told Eastern Shore that Bob Tyler Toyota objected to the microsites and urged Eastern Shore to disable them. Esfahani was shocked--"shocked," he said--to learn that those domain names were operational, and he immediately ordered Vaughan to disable the microsites. A few days later, attorneys for Bob Tyler Toyota sent Eastern Shore a cease-and-desist letter identifying six of the infringing microsites, although by then Eastern Shore was already in the process of disabling them. The letter demanded that Eastern Shore forfeit the domain names and threatened to file a lawsuit under the federal anticybersquatting act unless Eastern Shore agreed to pay Bob Tyler Toyota $250,000 within seven days. After the receipt of that letter, Esfahani and Vaughan blamed each other for the problem. Esfahani sent Vaughan a letter terminating their contracts and accusing Vaughan of having "misled" him into believing that purchasing the domain names was legal. Vaughan countered that Esfahani [*9] "went rogue," purchasing the domain names and hosting the microsites on his own despite Vaughan's warnings that doing so "was a real bad idea[]." Bob Tyler Toyota's cease-and-desist letter was dated October 23, By the end of the next day, all of the microsites infringing on the Bob Tyler trademark had been disabled, except for two undetected ones. 3 On December 17, 2009, Bob Tyler Toyota sent Eastern Shore another letter, this one demanding the return of the domain names and a $1 million payment. A week later Esfahani surrendered to GoDaddy.com all of the domain names that infringed on the Bob Tyler trademark, except for the two undetected ones. A little over a week after that, Bob Tyler Toyota filed this lawsuit against Esfahani and Eastern Shore Toyota, along with Daphne Automotive, LLC, and Daphne Enterprises, Inc. (two related corporations controlled by Esfahani), all of which we are referring to collectively as "Eastern Shore," except when separate reference is necessary. II. 3 Eastern Shore's initial review of its domain name list had not located two problem microsites because their domain names misspelled the Bob Tyler trademark: and Eastern [*10] Shore eventually discovered and disabled those microsites on January 3, 2010, and surrendered their domain names to GoDaddy.com on February 3, In its second amended complaint, which is the operative one, Bob Tyler Toyota brought six claims against Eastern Shore seeking injunctive relief and actual and statutory damages. All of those claims were based on Eastern Shore's registration or use of fourteen domain names that impermissibly incorporated the Bob Tyler trademark. The claims were: (1) false advertising under the Lanham Act, 15 U.S.C. 1125(a); (2) unfair competition under the Lanham Act, id.; (3) violation of the Anticybersquatting Consumer Protection Act, id. 1125(d); (4) unfair competition under Florida law; (5) violation of Florida's trademark dilution statute, Fla. Stat ; and (6) violation of Florida's "Antiphising Act," Fla. Stat Bob Tyler Toyota moved for summary judgment on all of the claims. In response to that motion, and about a month and a half before trial, Eastern Shore raised for the first time a statutory defense to the anticybersquatting claim: it allegedly "believed and had reasonable grounds to believe that the use of the domain [*11] name[s] was a fair use or otherwise lawful," 15 U.S.C. 1125(d)(1)(B)(ii). Bob Tyler Toyota replied by arguing that Eastern Shore had waived that statutory de-

89 2012 U.S. App. LEXIS 12726, * Page 4 fense by failing to plead the defense in its answer to the second amended complaint. The district court allowed Eastern Shore to raise the defense. The court also denied in full Bob Tyler Toyota's motion for summary judgment. In its case-in-chief at trial, Bob Tyler Toyota did not prove any monetary damages resulting from Eastern Shore's registration or use of any of the domain names. Because of that, only injunctive relief was available on the federal false advertising claim, the state and federal unfair competition claims, and the state trademark dilution claim. Even without proof of actual damages, however, Bob Tyler Toyota still had a chance to recover statutory damages on its Florida antiphishing claim, see Fla. Stat (2)(b)(2), and on its federal anticybersquatting claim, 15 U.S.C. 1117(d). At the close of its case-in-chief, Bob Tyler Toyota moved for judgment as a matter of law on all of its claims, which the district court denied. Eastern Shore moved for judgment as a matter of law on Bob Tyler Toyota's antiphishing [*12] claim, which the district court granted. Eastern Shore then asked the district court to deny Bob Tyler Toyota any equitable relief on its claims for federal false advertising, state and federal unfair competition, and state trademark dilution. Eastern Shore argued that no injunctive relief was warranted because it had already surrendered the fourteen domain names and disabled the microsites that went with them. 4 Its position was that it should not be enjoined from doing what it had already quit doing before the lawsuit was filed. The district court agreed, denying any injunctive relief because Bob Tyler Toyota failed to show any likelihood that Eastern Shore would re-register the domain names or reactivate the microsites. The court's rulings left only the federal anticybersquatting claim for the jury to consider. 4 One of the fourteen domain names had never been connected to a microsite. At the charge conference, Bob Tyler Toyota raised numerous challenges to the court's proposed jury instructions and special interrogatory verdict form. Among other things, it objected to the interrogatory on Eastern Shore's anticybersquatting statutory defense, which asked the jury whether Eastern Shore [*13] believed and had reasonable grounds to believe that its use of the domain names was a fair use or otherwise lawful. The court overruled that objection. Bob Tyler Toyota also asked the court to instruct the jury on the concept of willful blindness, to give a portion of the American Bar Association's pattern jury instructions on the anticybersquatting act's statutory defense, and to add to the instructions on damages a statement that the act's purposes are to deter and compensate. The district court denied all of those requests. When the court instructed the jury on the anticybersquatting act's statutory defense, it explained that Eastern Shore had the burden to prove that it had both "reasonable grounds to believe that the use of the domain names was [a] fair use or otherwise lawful" and that it actually "had this belief." The court told the jury that "reasonable grounds" meant that "an ordinary person in [the] defendants' position would have had those grounds." The special interrogatory verdict form asked the jury three questions. The first one was: "Did Plaintiff prove by a preponderance of the evidence that any of the Defendants acted in a manner that constituted a violation of the [*14] Anticybersquatting Consumer Protection Act?" If the jury answered "yes" to that question, the second question asked it to identify which of the defendants had violated the anticybersquatting act for each of the fourteen domain names at issue. 5 The third question for the jury addressed the statutory defense. The first part of it asked: "Did any of the Defendants have a reasonably held belief that their use of the domain names was a fair use or otherwise lawful?" The second part of it asked the jury to specify which defendants, if any, "believed that the use of the domain names was a fair use or otherwise lawful." At the end of that interrogatory, the verdict form stated: "If your answer is 'Yes' as to all Defendants, then you have found a verdict for all Defendants.... If your answer is 'No' as to any Defendant, proceed to part 2." "Part 2" asked the jury to specify what damages it "attribute[d] to the use of [each] domain name." The jury did not get that far. 5 As we explained earlier, the defendants were Esfahani, Eastern Shore Toyota, Daphne Automotive, LLC, and Daphne Enterprises, Inc. (which we are referring to collectively as "Eastern Shore"). The jury returned a verdict answering [*15] "yes" to the first question, thereby finding that at least one of the defendants had violated the anticybersquatting act. On the second question, the jury found that Eastern Shore Toyota, not Esfahani or his other corporate entities, violated the anticybersquatting act by registering or using three of the domain names that the jury specified. On the third question, however, the jury decided that all of the defendants, including Eastern Shore Toyota, had a reasonable belief that their use of the domain names was a fair use or otherwise lawful, so it did not get to the question about what damages to award Bob Tyler Toyota. After the court read the verdict, Bob Tyler Toyota did not object to, or even mention, any inconsistency between the jury's finding that Eastern Shore was both in

90 2012 U.S. App. LEXIS 12726, * Page 5 violation of the anticybersquatting act and protected by the act's statutory defense. About a month after the verdict, Bob Tyler Toyota renewed its motion for judgment as a matter of law on all of its claims. It also moved for a new trial on the anticybersquatting claim, arguing, among other things, that the jury verdict was inconsistent and that it was not supported by the evidence. The district court denied [*16] both motions. III. Bob Tyler Toyota has appealed, contending that the district court erred by denying: (1) its motion for summary judgment, (2) equitable relief on three of its claims, 6 (3) its request for proposed jury instructions, (4) its renewed motion for judgment as a matter of law, (5) and its motion for a new trial. It also contends that the district court erred by granting judgment as a matter of law in favor of the defendants on the antiphishing claim and by allowing them to present to the jury the anticybersquatting statutory defense. A. 6 In its briefs to this Court, Bob Tyler Toyota did not challenge the district court's denial of equitable relief on its state trademark dilution claim. That issue is abandoned. See Greenbriar, Ltd. v. City of Alabaster, 881 F.2d 1570, 1573 n.6 (11th Cir. 1989). Bob Tyler Toyota's contention that the district court erred by denying it summary judgment is a non-starter because a party may not appeal an order denying summary judgment after there has been a full trial on the merits. Ortiz v. Jordan, U.S., 131 S.Ct. 884, (2011) ("May a party, as the Sixth Circuit believed, appeal an order denying summary judgment after a full trial [*17] on the merits? Our answer is no."). B. We review only for an abuse of discretion the district court's ruling that Bob Tyler Toyota is not entitled to equitable relief on its federal false advertising claim and its state and federal unfair competition claims. Bradley v. King, 556 F.3d 1225, 1229 (11th Cir. 2009). In determining whether the district court abused its discretion, we decide de novo any underlying legal issues but check factual findings only for clear error. Id. The district court denied injunctive relief because Bob Tyler Toyota could not show that Eastern Shore was likely to register or use the infringing domain names again. As the Supreme Court explained a long time ago, even when voluntary cessation of unlawful conduct does not moot a claim (and there is no argument here that it did), a court has equitable discretion about whether to issue an injunction after the conduct has ceased. See United States v. W.T. Grant Co., 345 U.S. 629, , 73 S.Ct. 894, (1953). Not only that, in this area a district court's "discretion is necessarily broad and a strong showing of abuse must be made to reverse it." Id. at 633, 73 S.Ct. at 898. To establish that a district court abused [*18] its discretion by not issuing an injunction when the unlawful conduct has stopped, the appellant "must demonstrate that there was no reasonable basis for the District Judge's decision." Id. at 634, 73 S.Ct at 898. Bob Tyler Toyota has not done that. The evidence at trial proved that on October 24, 2009, the day after Bob Tyler Toyota sent its cease-and-desist letter, Eastern Shore disabled all of its infringing microsites with the exception of two. The reason it did not disable those two is that misspellings in them prevented Eastern Shore from finding them. When it finally did find those two remaining microsites, it promptly disabled them. On December 24, 2009, Eastern Shore surrendered to GoDaddy.com all of the Bob Tyler domain names that it had discovered. Moreover, Eastern Shore acknowledged its error in creating the microsites, fired its internet consultant, and promised to stop any infringing activity. There was no evidence that Eastern Shore thereafter infringed the Bob Tyler trademark in any way or intended to do so in the future. Because the evidence supported the district court's finding that Eastern Shore was not likely to infringe on the Bob Tyler trademark in the future, [*19] that finding is not clearly erroneous, there is a reasonable basis for the court's decision not to grant an injunction, and that decision is not an abuse of discretion. C. Bob Tyler Toyota's contention that the district court erred by granting Eastern Shore judgment as a matter of law on the state antiphishing claim is meritless. Florida's antiphishing act allows the owner of a web page or trademark "who is adversely affected by [a] violation" to bring a lawsuit under that act. Fla. Stat (1)(c). At trial, Bob Tyler Toyota failed to prove any damages or otherwise show that it had been adversely affected by the microsites or the domain names. The district court correctly concluded that the antiphishing claim failed as a matter of Florida law. IV. Bob Tyler Toyota presses a number of contentions related to the one claim that did go to the jury. It brought that claim under the Anticybersquatting Consumer Protection Act, which provides:

91 2012 U.S. App. LEXIS 12726, * Page 6 A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if,... that person... has a bad faith intent to profit from that mark, including a personal name which [*20] is protected as a mark under this section; and registers, traffics in, or uses a domain name that... in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark U.S.C. 1125(d)(1)(A)(i)-(ii) (subsection designations omitted). The act lists nine factors that "a court may consider" when determining whether a domain name infringer had a "bad faith intent to profit" from the trademark. Id. 1125(d)(1)(B). 7 It also specifies that the factors that may be considered are "not limited to" the nine that are listed. Id. And regardless of which direction the bad faith factors point, the act states: "Bad faith intent... shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful." Id. 1125(d)(1)(B)(ii). That statutory defense is often referred to as the "safe harbor" defense. See, e.g., TMI, Inc. v. Maxwell, 368 F.3d 433, 438 n.6 (5th Cir. 2004). 7 The nine factors listed in the act are: (I) the trademark or other intellectual property rights of the person, if any, in the [*21] domain name; (II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person; (III) the person's prior use, if any, of the domain name in connection with the bona fide offering of any goods or services; (IV)the person's bona fide noncommercial or fair use of the mark in a site accessible under the domain name; (V) the person's intent to divert consumers from the mark owner's online location to a site accessible under the domain name that could harm the goodwill represented by A. the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site; (VI) the person's offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person's prior conduct indicating a pattern of such conduct; (VII) the person's provision of material and misleading false contact information when applying for the registration of the [*22] domain name, the person's intentional failure to maintain accurate contact information, or the person's prior conduct indicating a pattern of such conduct; (VIII) the person's registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and (IX) the extent to which the mark incorporated in the person's domain name registration is or is not distinctive and famous within the meaning of subsection (c) of this section. 15 U.S.C. 1125(d)(1)(B)(i)(I)-(IX). Bob Tyler Toyota contends that for two reasons the district court erred by instructing the jury on the anticybersquatting act's statutory safe harbor defense and submitting an interrogatory covering that defense. First, it argues that Eastern Shore waived the safe harbor defense by failing to plead that defense in its answer to the second amended complaint. "Failure to plead an affirmative

92 2012 U.S. App. LEXIS 12726, * Page 7 defense generally results in a waiver of that defense." [*23] Latimer v. Roaring Toyz, Inc., 601 F.3d 1224, 1239 (11th Cir. 2010) (citing Fed. R. Civ. P. 8(c)). This Court, however, has held that "if a plaintiff receives notice of an affirmative defense by some means other than pleadings, the defendant's failure to comply with Rule 8(c) does not cause the plaintiff any prejudice. When there is no prejudice, the trial court does not err by hearing evidence on the issue." Grant v. Preferred Research, Inc., 885 F.2d 795, 797 (11th Cir. 1989) (quotation marks and citation omitted). In Grant, the defendant raised the affirmative defense of statute of limitations for the first time in a motion for summary judgment that was filed less than a month before trial. Id. The district court permitted the defense to be raised, and we upheld that ruling because the plaintiff had not shown any prejudice from the defendant's failure to raise the defense in the answer. Id. at 798. And we went on to hold that the defendant was entitled to judgment as a matter of law based on that defense. Id. at The facts in Grant are similar to the ones in this case. Eastern Shore raised its anticybersquatting statutory defense a month and a half before trial in a motion [*24] for summary judgment, and Bob Tyler Toyota has not suggested that it suffered any prejudice from the delay in asserting the defense. The district court did not abuse its discretion in allowing Eastern Shore to raise the defense. The second reason Bob Tyler Toyota argues that the district court erred in letting Eastern Shore's safe harbor defense go to the jury is that Eastern Shore was guilty of bad faith, which should have barred it from sailing into the safe harbor. That argument relies on a Fourth Circuit decision and the decisions of some other circuits following it. See Virtual Works, Inc. v. Volkswagen of Am., Inc., 238 F.3d 264 (4th Cir. 2001); see, e.g., Lahoti v. VeriCheck, Inc., 586 F.3d 1190 (9th Cir. 2009); Coca-Cola Co. v. Purdy, 382 F.3d 774 (8th Cir. 2004). In the Fourth Circuit case, an internet service provider named Virtual Works registered the domain name Virtual Works, 238 F.3d at 266. At the time of that registration, Virtual Works' owners recognized the domain name's similarity to the Volkswagen trademark and agreed that they would sell the domain name to the car manufacturer for "'a lot of money'" if they could. Id. Virtual Works later told Volkswagen [*25] that if Volkswagen did not make an offer to purchase the domain name within 24 hours, Virtual Works would sell it to the highest bidder. Id. at 270. When Volkswagen would not purchase the domain name, Virtual Works filed a lawsuit for a declaratory judgment in order to protect its rights to the vw.net domain name, but Volkswagen counterclaimed, asserting that Virtual Works did not have any right to the name and had violated the anticybersquatting act. Id. at 267. The Fourth Circuit held that Virtual Works could not rely on the safe harbor provision because a "defendant who acts even partially in bad faith in registering a domain name is not, as a matter of law, entitled to benefit from the Act's safe harbor provision." Id. at 270. In the present case, Bob Tyler Toyota argues that Eastern Shore likewise should not be permitted to benefit from the safe harbor defense because it conceded in the district court that six of the nine 1125(d)(1)(B) factors were present and weighed against Eastern Shore. Those are the factors that the act says "a court may consider" when determining whether a domain name infringer had a "bad faith intent to profit" from the trademark. 15 U.S.C. 1125(d)(1)(B). As [*26] we have explained before, however, "[a] court's analysis of whether a defendant had the bad faith intent to profit necessary to a cybersquatting claim is not based on a score card of the statutory factors." Southern Grouts & Mortars, Inc. v. 3M Co., 575 F.3d 1235, 1249 (11th Cir. 2009). No particular number of those factors requires a finding of a bad faith intent to profit. The statute, after all, says that the factors are nonexclusive ones that "a court may consider." 15 U.S.C. 1125(d)(1)(B)(i) (emphasis added); see also Sporty's Farm, L.L.C. v. Sportsman's Mkt., Inc., 202 F.3d 489, 499 (2d Cir. 2000) (noting that the most important grounds for finding bad faith "are the unique circumstances of this case, which do not fit neatly into the specific factors enumerated by Congress but may nevertheless be considered under the statute"). We do not read Virtual Works or any other decision that has been cited to us as holding that there is a statutory factors tipping point at which the safe harbor defense tumbles out of the case. See Virtual Works, 238 F.3d at 269 ("We need not, however, march through the nine factors seriatim because the [act] itself notes that use of the listed criteria [*27] is permissive."). The present case is different from Virtual Works where it was undisputed that the defendant had a bad faith intent to profit by selling or threatening to sell the infringing domain name to the highest bidder if Volkswagen did not buy the name from it. See id. at 270. In this case, by contrast, there was no evidence that Eastern Shore intended to sell or threatened to sell any infringing domain names to anyone at any time. There was some evidence that Eastern Shore intended to profit from the infringing domain names, but there was also evidence disputing that. Where there is a genuine dispute about a material fact, such as whether Eastern Shore had a bad faith intent to profit or instead reasonably believed that its actions were lawful, resolving that dispute is a task for the jury. See Tate v. Gov't Emps. Ins. Co., 997 F.2d 1433, 1436 (11th Cir. 1993) ("A judgment as a matter of law will not lie if the dispute about a material

93 2012 U.S. App. LEXIS 12726, * Page 8 fact is genuine, that is, if the evidence is such that a reasonable jury could return a verdict for the nonmoving party." (quotation marks omitted)). 8 8 We also reject Bob Tyler Toyota's contention that the district court impermissibly allowed [*28] Eastern Shore to argue a mistake of law defense to the anticybersquatting claim at trial. Eastern Shore did not argue to the jury that it misunderstood the law and thus should be shielded from liability. Instead, Eastern Shore argued that it believed and had reasonable grounds to believe that its actions were lawful based on Vaughan's professional advice, which was a permissible argument under the anticybersquatting act. See 15 U.S.C. 1125(d)(1)(B)(ii). In addition to the absence of any evidence that Eastern Shore attempted to sell the improper microsites or use them to extort money from Bob Tyler Toyota, there is evidence that Eastern Shore relied on the advice of Vaughan, Hyundai's internet marketing expert; that it promptly discontinued the microsites as soon as it received notice they violated the anticybersquatting act; and that it then surrendered the infringing domain names to GoDaddy.com. This is not to say that we would have decided the good faith versus bad faith issue the same way that the jury did, only that the evidence created a genuine issue of material fact for the jury to resolve. B. Bob Tyler Toyota contends that the district court erred by rejecting three of its proposed [*29] jury instructions on the anticybersquatting claim. We review only for an abuse of discretion a district court's refusal to give a requested jury instruction. Burchfield v. CSX Transp., Inc., 636 F.3d 1330, 1333 (11th Cir. 2011). In refusing to give a requested jury instruction, "[a]n abuse of discretion is committed only when (1) the requested instruction correctly stated the law, (2) the instruction dealt with an issue properly before the jury, and (3) the failure to give the instruction resulted in prejudicial harm to the requesting party." Id. at (quotation marks omitted). 1. Bob Tyler Toyota contends that the district court should have given the instruction it requested on willful blindness. We cannot decide this issue on the merits because we do not know exactly what the requested instruction, which is not in the record on appeal, said. Under the "absence equals affirmance" rule, "the burden is on the appellant to ensure the record on appeal is complete, and where a failure to discharge that burden prevents us from reviewing the district court's decision we ordinarily will affirm the judgment." Selman v. Cobb Cnty. Sch. Dist., 449 F.3d 1320, 1333 (11th Cir. 2006); accord [*30] Loren v. Sasser, 309 F.3d 1296, 1304 (11th Cir. 2002); Borden, Inc. v. Fla. E. Coast Ry. Co., 772 F.2d 750, 758 (11th Cir. 1985); Green v. Aetna Ins. Co., 397 F.2d 614, 615 n.5, (5th Cir. 1968). 9 So it is here. Without knowing exactly what the requested instruction stated we cannot state whether it correctly stated the law. See Burchfield, 636 F.3d at 1333 (noting that the first step in deciding whether giving an instruction was an abuse of discretion is determining whether "the requested instruction correctly stated the law") In Bonner v. City of Prichard, 661 F.2d 1206, 1209 (11th Cir. 1981) (en banc), we adopted as binding precedent all decisions of the former Fifth Circuit handed down prior to October 1, Bob Tyler Toyota next contends that the district court erred by not including a portion of the American Bar Association's model jury instructions on the anticybersquatting act's statutory defense. The portion of the ABA model instruction that Bob Tyler Toyota proposed states: "Defendants lack such 'reasonable grounds' if they had multiple motives and not all of those motives would qualify for this defense." In its briefs on appeal, Bob Tyler Toyota does not explain [*31] how it was prejudiced by the district court's rejection of this instruction. And it is not evident that Bob Tyler Toyota was prejudiced. We have held that: If the trial judge's instructions accurately reflect the law, he or she is given wide discretion as to the style and wording employed in its instruction. Further, under this standard, we examine whether the jury charges, considered as a whole, sufficiently instructed the jury so that the jurors understood the issues and were not misled. We will only reverse the lower court because of an erroneous instruction if we are left with a substantial and ineradicable doubt as to whether the jury was properly guided in its deliberations. McCormick v. Aderholt, 293 F.3d 1254, 1260 (11th Cir. 2002) (quotation marks and citations omitted) (emphasis added). In this case the district court instructed the jury that it "must consider all of the evidence." And a "jury is

94 2012 U.S. App. LEXIS 12726, * Page 9 presumed to follow jury instructions." Adams v. Wainwright, 709 F.2d 1443, 1447 (11th Cir. 1983). We cannot say--and Bob Tyler Toyota does not attempt to argue--that in deciding whether Eastern Shore reasonably believed its registration or use of the domain names was lawful, the jury [*32] did not consider all of the possible motivations or attempted uses of the domain names. Bob Tyler Toyota argued that Eastern Shore had at least two motivations: (1) to defensively register and hold the domain names, and (2) to divert consumers to its websites. It is implausible for the jury to have concluded that Eastern Shore had no reasonable belief that one of those motivations was lawful yet render a verdict that Eastern Shore had a reasonable belief that its actions were lawful. Either Eastern Shore had a reasonable belief or it didn't. Considering all of the circumstances, we are not "left with a substantial and ineradicable doubt as to whether the jury was properly guided in its deliberations." McCormick, 293 F.3d at 1260 (quotation marks omitted). Bob Tyler Toyota has not carried its burden of showing that it was prejudiced by the district court's refusal to give the ABA model instruction. See Burchfield, 636 F.3d at (stating that the failure to give a requested instruction is not an abuse of discretion unless it "resulted in prejudicial harm to the requesting party"). 3. Bob Tyler Toyota also contends that the district court erred when it refused to instruct the jury [*33] that the anticybersquatting act's purposes were to deter infringement and to compensate victims. The obvious purpose of any statute that authorizes the award of damages against one who violates it is to compensate the victim and to deter violations. There is no need to state the obvious, and Bob Tyler Toyota has presented no evidence that doing so would have altered the jury's verdict in this case. Because Bob Tyler Toyota was not prejudiced, the district court did not abuse its discretion by refusing to instruct the jury about the purposes of the act. See id. C. Bob Tyler Toyota complains that the jury's answers in its special interrogatory verdict were inconsistent. They were. The jury found both that Eastern Shore Toyota had violated the anticybersquatting act and also that it qualified for the protection of the act's safe harbor because it had a reasonable belief that the "use of the domain name[s] was a fair use or otherwise lawful." 15 U.S.C. 1125(d)(1)(B)(ii). Those answers are inconsistent because a defendant who falls within the scope of the safe harbor provision necessarily lacks the bad faith intent to profit that is necessary to violate the statute. See id. 1125(d)(1)(A). Even [*34] so, Bob Tyler Toyota waived any argument that the verdict was inconsistent by not objecting before the jury was discharged. See Walter Int'l Prods., Inc. v. Salinas, 650 F.3d 1402, 1419 (11th Cir. 2011) ("We have held that if the party challenging this type of verdict has failed to object before the jury is discharged, that party has waived the right to contest the verdicts on the basis of alleged inconsistency." (quotation marks omitted)). The reason for this particular raise-it-or-lose-it rule is that if the inconsistency is raised before the jury is discharged, the jury can be sent back for further deliberations to resolve the inconsistency in its verdict or interrogatory answers. Once the jury is gone, and has been free to talk to others about the case, that is not possible. Bob Tyler Toyota did not mention any inconsistency in the interrogatory answers until about a month after the jury rendered its verdict. That was way too late. D. Bob Tyler Toyota's remaining contentions are directed at the denial of its renewed motion for judgment as a matter of law based on the sufficiency of the evidence and the denial of its motion for a new trial based on the weight of the evidence. 1. We [*35] review de novo the denial of a motion for judgment as a matter of law, which necessarily means that we apply the same standard as the district court. Goldsmith v. Bagby Elevator Co., Inc., 513 F.3d 1261, 1275 (11th Cir. 2008). That standard is heavily weighted in favor of preserving the jury's verdict. In applying it, "we consider all the evidence, and the inferences drawn therefrom, in the light most favorable to the nonmoving party. We then determine whether, in this light, there was any legally sufficient basis for a reasonable jury to find in favor of the nonmoving party." Advanced Bodycare Solutions, LLC v. Thione Int'l, Inc., 615 F.3d 1352, 1360 (11th Cir. 2010) (quotation marks, citation, and alterations omitted). That determination is substantially guided by the principle that "[c]redibility determinations, the weighing of the evidence, and the drawing of legitimate inferences from the facts are jury functions, not those of a judge." See Cleveland v. Home Shopping Network, Inc., 369 F.3d 1189, 1193 (11th Cir. 2004) (quotation marks omitted). It necessarily follows that we must "disregard all evidence favorable to the moving party that the jury is not required to believe." Id. Bob [*36] Tyler Toyota's entitlement to judgment as a matter of law on its anticybersquatting act claim turns on whether there was enough evidence for the jury

95 2012 U.S. App. LEXIS 12726, * Page 10 to find that Eastern Shore reasonably believed that its actions were lawful. If Eastern Shore reasonably believed its actions were lawful, it had no bad faith intent to profit; and if it had no bad faith intent to profit, it is not liable under the act; and if it is not liable under the act, Bob Tyler Toyota was not entitled to judgment as a matter of law. See 15 U.S.C. 1125(d)(1)(B)(ii). Bob Tyler Toyota argues that there was not enough evidence for the jury to find that Eastern Shore reasonably believed that its actions were lawful because the evidence at trial established a number of the "bad faith" statutory factors, see 15 U.S.C. 1125(d)(1)(B)(i)(I)-(IX), which in turn ruled out any finding that Eastern Shore reasonably believed its actions were lawful. The number of statutory factors, however, is not conclusive. Regardless of how many statutory factors the evidence establishes, Eastern Shore cannot be liable for registering or using the Bob Tyler trademark with a bad faith intent to profit if it nonetheless "believed and had reasonable [*37] grounds to believe that the use of the domain name was... lawful." Id. 1125(d)(1)(B)(ii). To qualify for that safe harbor, Eastern Shore must have had both a subjective belief and an objectively reasonable belief in the lawfulness of its actions. Viewed in the context of a motion for judgment as a matter of law, the question is: when all credibility determinations are made and all inferences are drawn in favor of the verdict, and all evidence disfavoring the verdict that the jury was not required to believe is disregarded, was there enough evidence to support the verdict that Eastern Shore lacked a bad faith intent to profit because it believed and had reasonable grounds to believe that its actions were lawful? There was. Esfahani testified that: "Based on everything I knew, owning these domain names was legal, and is legal." He also testified that if he had known that it was illegal to register the domain names, he would not have done so. And there was evidence that Vaughan assured Esfahani that the practices he was proposing were legal and that Esfahani reasonably relied on Vaughan's expertise and assurances. 10 Esfahani had every reason to believe that Vaughan was a bona fide [*38] and independent internet marketing professional on whom he could rely. Vaughan had worked in the car dealership business for about twenty-seven years and had started working in internet marketing as early as He owned Advanced Dealer Systems, an internet marketing company whose clientele included car dealerships and manufacturers, such as Hyundai, Dodge, Jeep, and Chrysler. It was Hyundai's corporate division that introduced Vaughan to its dealership owners, including Esfahani, as a "preferred vendor" and the corporate division's internet marketing expert, someone who could help dealers revamp their websites and internet marketing strategies to compete in the twenty-first century economy. 10 In Southern Grouts & Mortars, Inc. v. 3M Co., 575 F.3d 1235, 1247 (11th Cir. 2009), we held that 3M did not have a bad faith intent to profit when it continued to register, but did not otherwise use or attempt to sell, a domain name that incorporated a trademark of its competitor, Southern Grouts. That conclusion might seem to favor Eastern Shore in this case, but Southern Grouts does not stand for the proposition that every instance of registering domain names containing the trademark of another [*39] to prevent its use is permitted by the anticybersquatting act. In that case Southern Grouts failed to prove that 3M had a bad faith intent to profit by continuing to register a single domain name when 3M did so not to prey on customer confusion but to prevent confusion. Id. at The trademark used in the disputed domain name was similar to a trademark 3M owned, and 3M was seeking to protect its own trademark from erosion by its competitors. Id. at 1239, In conversations with Esfahani, Vaughan touted offensive and defensive tactics that Eastern Shore could use in the ultra-competitive car dealership business. Offensively, Vaughan's Advanced Dealer Systems contracted with Eastern Shore to "build and host multiple websites" and to license Vaughan's proprietary microsite-producing program for eighteen months to net the dealership more customers. Defensively, Vaughan outlined a strategy of obtaining and holding desirable domain names to prevent the competition from ever using them. So one set of domain names would be used offensively to host one-page microsites or redirect users to Eastern Shore's official websites, and the other set would be inactive. Despite Eastern Shore's [*40] purchase of thousands of domain names, many of them were never activated, which meant that they were not connected to their own microsites and did not redirect web visitors to Eastern Shore's actual website. Vaughan was so convinced of the legality and propriety of the defensive strategy that he openly touted it in his deposition testimony, which was read into evidence at trial: If I was a guy like Shawn Esfahani, I would buy my competition up; and I would just not let them use it. I would just keep [the domain names] dormant. I think that's a good strategy.... I've actually helped Hyundai buy Toyota domains just to keep them away from Toyota.... Everybody does it.

96 2012 U.S. App. LEXIS 12726, * Page 11 There also was evidence from which the jury could have concluded that Vaughan inadvertently launched the microsites that used the Bob Tyler trademark instead of keeping those domain names dormant, as Esfahani testified he had believed Vaughan would do. Vaughan controlled his microsite-producing computer program. With the click of a button, that program could generate microsites from data in an Excel spreadsheet. The ease with which the program could be activated allowed for inadvertent activation. And despite the fact [*41] that Eastern Shore purchased the domain names, Vaughan decided which domain server it should purchase to interact with his microsite program, Vaughan managed the Go- Daddy.com domain name account, and Vaughan had access to all the domain names. Although Vaughan denied activating the infringing microsites, the jury was not required to believe his denials. At least one of the activated infringing microsites bore the name of his company in the tagline "Powered by Advanced Dealer Systems." And it was undisputed that Vaughan and his company had exclusive access to the operational back-end of the microsites, where he could upload content and track visitors to the sites. In his testimony about the infringing microsites, Esfahani stated that he "personally had no idea these things were hooked to [the] website generating machine" that Vaughan sold to him, and he expressed his belief that Vaughan may have inadvertently connected the infringing domain names to microsites. Esfahani's reaction to the news that the trademark-infringing domain names had been activated is more evidence that he had not wanted those domain names to be used offensively and was unaware that they were being used that way. [*42] After Toyota's southeastern division general manager alerted Esfahani to the microsites using the Bob Tyler trademark, Esfahani immediately ordered Vaughan to deactivate them. Esfahani testified about their conversation: I said, "Hey, there's a website out there that's been activated, how did that happen?" He said, "Well, we're building these websites for you as"--and I said, "Well how did Bob Tyler's get on there?" And he said, "My programmers don't know what they're plugging in. They don't recognize Bob Tyler's." And I said, "You need to be much more selective. Take anything that's got Bob Tyler's name on it off your process of building these websites." And he said, "Ok." And that was the end of that. That conversation occurred a few days before Eastern Shore received Bob Tyler Toyota's cease-and-desist letter, claiming that Eastern Shore was breaking the law with the microsites and threatening to sue it. According to Eastern Shore's administrative director, when the letter came Esfahani "was upset that we were being told that this was something that was wrong, that we couldn't do it, that it was illegal... we never do anything that's illegal. I mean he's very explicit about that." [*43] Esfahani then called Vaughan again. Recounting that conversation, Vaughan, who blamed Esfahani for the microsite mishap, testified that the activation of the infringing microsites likely was an error: "I do believe [it] was an error, because his reaction was abrupt, immediately. He called me in the morning. This was before work started.... This was an SOS call for sure." (Emphasis added.) By the end of day on October 24, 2009, a day after Bob Tyler Toyota sent the cease-and-desist letter, Vaughan had disabled the known microsites that utilized the Bob Tyler trademark as Esfahani had demanded he do. A few days later Esfahani sent a letter to Vaughan terminating Eastern Shore's contract with Vaughan's company. The letter read: "We entered into a contract with you under the assumption that purchasing these domains was legal. Needless to say, I feel I've been misled, whether willful or not, therefore we need to end our contract immediately." Within a couple of months and before this lawsuit was filed, Eastern Shore also surrendered to GoDaddy.com all of the Bob Tyler trademark-infringing domain names that it had found. A few months later it also surrendered to GoDaddy.com the domain [*44] names that infringed on the trademarks of other companies. In summary, construed in the light most favorable to the verdict, the evidence showed that Esfahani believed the actions he took and those he authorized Vaughan to take complied with the law. As soon as he received notice about the existence of the infringing Bob Tyler microsites and before he even received a letter from Bob Tyler Toyota demanding that he do so, Esfahani ordered Vaughan to deactivate them. Eastern Shore surrendered the domain names using the Bob Tyler trademark before the lawsuit was filed in this case, and it surrendered the domain names using trademarks of its other competitors soon thereafter. And, of course, there was no evidence that Eastern Shore ever attempted to profit by selling the infringing domain names to Bob Tyler Toyota or anyone else.

97 2012 U.S. App. LEXIS 12726, * Page 12 The actions and reactions of Esfahani and Eastern Shore were starkly different from those of defendants who have been held to have violated the anticybersquatting act. See, e.g., Lahoti, 586 F.3d at 1203 ("[A] reasonable person who had previously been declared a cybersquatter in a judicial proceeding [] should have known that his actions might be unlawful."); Audi AG, 469 F.3d at [*45] ("Following the cease and desist letters and this lawsuit, [the defendant] continued to sell advertising space [on the trademark-infringing website]. Even construing facts and inferences in a light most favorable to [the defendant], his belief that he had permission to use the trademarks was objectively unreasonable...."); Coca-Cola Co., 382 F.3d at 788 ("[The defendant] argues that his belief that his conduct was protected by the First Amendment brings him within the ACPA 'safe harbor' provision.... He continued to register and use domain names in the face of repeated complaints and warnings from the plaintiffs that such conduct was unlawful and even after the district court issued preliminary injunctive relief. Moreover, [the defendant] had also been enjoined in a prior Internet case.... That injunction was affirmed despite [his] claim that his actions were protected by the First Amendment, and that appellate decision was filed before [the defendant] engaged in the conduct at issue in this case."). Bob Tyler Toyota attempts to bring this case within the factual orbit of some of those circuit opinions by arguing that the cease-and-desist that Eastern Shore had received [*46] from ebay a month before it got Bob Tyler Toyota's cease-and-desist letter alerted Eastern Shore to the fact that its trademark infringing domain names likely violated the anticybersquatting act and the Lanham Act. Actually, what ebay's stated was that Eastern Shore's "registration and use" or the "use, [sale], or offer for sale" of the domain name likely violated the law. (Emphasis added.) A jury could have reasonably found that after reading that Esfahani still reasonably believed that defensively holding the domain names using the Bob Tyler trademark was not a violation of the law. And, as we have explained, a jury also could have reasonably found that Eastern Shore did not know that the microsites using the Bob Tyler trademark were operational, and thus in "use," until Toyota's southeastern division general manager told Esfahani about the microsites. Bob Tyler Toyota also attempts to show on another ground why Eastern Shore had no reasonable belief that its actions were lawful. Esfahani testified that years before meeting Vaughan, a competitor's disgruntled ex-employee contacted him and offered to sell him the competitor's trademarked domain names. The ex-employee had [*47] purchased the domain names for the competitor, while still employed by it, and at its direction. Esfahani turned down the offer, calling it "dirty pool." Bob Tyler Toyota argues that Esfahani's testimony shows that he knew that it was unlawful to register any domain name that included another company's trademark. But a reasonable jury just as easily could have inferred from that testimony that Esfahani simply did not want to purchase pilfered property. That does not mean Esfahani knew or should have known that he could not legally purchase unpilfered domain names from Go- Daddy.com to prevent their use by competitors, especially when Vaughan was telling him that he could. Bob Tyler Toyota also obtained a party admission under Federal Rule of Civil Procedure 36(a) from Eastern Shore admitting that it "purchased the Bob Tyler Domain Names with the intention of diverting consumers from [Bob Tyler Toyota's] website or business to [Eastern Shore's] own website." Bob Tyler Toyota introduced that admission into evidence as part of one of its exhibits. Ordinarily, under Rule 36(b), the effect of such a party admission would be to "conclusively establish[]" for these proceedings the fact that [*48] was admitted unless the district court, upon a motion, allowed Eastern Shore to withdraw or amend that admission. Fed. R. Civ. P. 36(b). But what ordinarily happens and what should have happened did not happen in this case. Although Eastern Shore never made a motion to withdraw its admission, Bob Tyler Toyota never objected to Eastern Shore asserting a position at trial that was directly contrary to that admission. It let Eastern Shore offer evidence and argue that it intended only to defensively hold the domain names, not to activate them and divert customers to its own websites. The district court apparently did not notice the inconsistency either. But the jury did. During the first day of deliberations, the jury sent a question to the district court asking it how it should resolve a conflict between the party admission and the "[p]resented testimony that [Eastern Shore] did not willfully activate a site." Instead of arguing that the jury should be instructed according to the Federal Rules of Civil Procedure--that the Rule 36(a) admission established that fact conclusively--bob Tyler Toyota's attorney, for unknown reasons, agreed with Eastern Shore's attorney that the jury should be [*49] instructed to give the admission and the trial testimony "the weight you believe it deserves." So, with the agreement of both sides, the district court instructed the jury that: "The Request for Admissions relates to the purchase of a domain name. The testimony which you describe in your communication relates to the activation of a website. The two are different things. You should give each the weight you believe it deserves." The next day the jury had another question about Eastern Shore's admission. It asked whether Eastern

98 2012 U.S. App. LEXIS 12726, * Page 13 Shore was "admitting to only 'Defensive use' or to both Defensive and offensive use." The district court determined that Eastern Shore's admission dealt only with the intention it had in purchasing the domain names, not with the intent behind any of its later actions. On that basis, the district court suggested to the parties a jury instruction explaining that "the defendants' response simply admitted that sentence as it is worded." Eastern Shore's attorney was satisfied with that instruction. So was Bob Tyler Toyota's attorney, who said: "That's fine with me too, Your Honor." The district court then gave that instruction, and less than two hours later, the jury [*50] decided the case in favor of Eastern Shore. The district court should have instructed the jury that Eastern Shore's Rule 36(a) admission established conclusively that Eastern Shore purchased the infringing domain names with the intent to divert consumers to its websites. But its error in not doing so was an error that Bob Tyler Toyota invited. A party that invites an error cannot complain when its invitation is accepted. Ford ex rel. Estate of Ford v. Garcia, 289 F.3d 1283, (11th Cir. 2002). Under the instructions that Bob Tyler Toyota agreed to, the jury was free to weigh the testimony Eastern Shore presented against its Rule 36(a) admission and give each "the weight [the jury] believe[d] it deserve[d]." That, apparently, is what it did. After considering all of the evidence, and the circumstances, we cannot say that the district court erred in denying Bob Tyler Toyota's motion for judgment as a matter of law. 2. As for the denial of Bob Tyler Toyota's motion for new trial based on the weight of the evidence, "[n]ew trials should not be granted on evidentiary [sufficiency] grounds unless, at a minimum, the verdict is against the great--not merely the greater--weight of the evidence." [*51] St. Luke's Cataract & Laser Inst., P.A. v. Sanderson, 573 F.3d 1186, 1200 n.16 (11th Cir. 2009) (quotation marks and alteration omitted). The district court's determination that the verdict was not against the great weight of the evidence is one that we review only for an abuse of discretion. Rosenfield v. Wellington Leisure Prods., Inc., 827 F.2d 1493, 1498 (11th Cir. 1987). In light of the totality of the evidence, which we have already summarized, we cannot say that the district court abused its discretion in determining that the jury's verdict was not against the great weight of the evidence. AFFIRMED.

99 Trademark Owners Receive New Federal Law in Their Fight Against Cyberpirates and Cybersquatters By ALAN S. WERNICK, ESQ. E-Commerce Law Report (BNA), Vol. 2, No. 5, March, 2000 Introduction In the children s story Peter Pan, Captain Hook threatens children with walking the plank. Internet pirates, among other things, threaten trademark owners crown jewels by stealing trademark owners valuable marks as domain names. While trademark owners already had some legal remedies to deal with this problem (and other trademark concerns on the Internet), Congress has decided to enact legislation aimed directly at the heart of the problem. According to the legislative history, what motivated Congress to act was a recognition that cyberpiracy and cybersquatting (a) result in consumer fraud and public confusion as to the true source or sponsorship of goods and services; (b) impair electronic commerce, which is important to interstate commerce and the United States economy; (c) deprive legitimate trademark owners of substantial revenues and consumer goodwill; and (d) place unreasonable, intolerable, and overwhelming burdens on trademark owners in protecting their valuable trademarks. Cybersquatting and cyberpirating are variations on the same theme, and can even be committed by the same individual. The cybersquatter registers domain names consisting of known trademarks before the respective trademark owner claims them and then attempts to extract some sort of ransom. The cyberpirate registers domain names similar to rather than identical with known trademarks. This is meant to cause confusion for potential visitors searching for the trademark owner s Web site, and perhaps decoy potential visitors to the cyberpirate s site instead. The Anticybersquatting Consumer Protection Act On November 29, 1999, the President signed into law the Anticybersquatting Consumer Protection Act ( ACPA ) as part of the Intellectual Property and Communications Omnibus Reform Act of The ACPA provides protection, with some exceptions, for trademark owners, owners of a personal name protected as a mark, and names of living persons. In addition, it provides a method to deal with the characteristic of anonymity available on the Internet, whereby domain name registrants are not always who or what they appear to be in the registration. As the Second Circuit Court of Appeals said in one of the first published opinions by a United States Court of Appeals analyzing the ACPA: [W]e think it is clear that the new law was adopted specifically to provide courts with a preferable alternative to stretching federal dilution law when dealing with cybersquatting cases. 2 After analyzing the ACPA and the facts, the Second Circuit held that the ACPA provides the precise remedy and ordered that the Internet domain name sportys.com should be 1 1 (Public Law ). 2 Sporty s Farm L.L.C. v. Sportsman s Market, Inc., Docket Nos (L), (XAP) (United States Court of Appeals, Second Circuit, February 2, 2000). COPYRIGHT 2000 ALAN S. WERNICK. ALAN@WERNICK.COM LINKEDIN: Page 1 of 5

100 transferred to Sportsman s Market, Inc., the trademark owner. Harvard University, Exxon/Mobil, the National Football League and others have been victims of cyberpirates, and in some cases have filed lawsuits. In each case, the domain name registrant had registered a domain name that incorporates, in whole or in part, the trademark owner s mark(s) in the domain name, or the cyberpirate used the mark as part of the domain name or used words or letters that were substantially similar to the mark and likely to cause confusion with the mark. In some cases, the trademark owner had established an existing Internet site utilizing its trademark as part of the domain name. In other cases, the cybersquatter simply got there first to register the domain name that incorporated the trademark owner s mark(s). The length of the secondary level domain name (now at 63 alphanumeric characters) gives countless permutations and combinations available for a domain name. Thus, it would be a daunting task for any trademark owner to have to register every conceivable domain name for each of the trademark owner s marks. From a policy perspective, such an undertaking by a trademark owner to protect one s valuable trademark assets by filing every conceivable combination and permutation of their trademarks is an inefficient use of resources. Rather, the ACPA presents a more precise tool to help protect the trademark owner in the context of Internet domain names and is perhaps a more efficient alternative than attempting to register every conceivable domain name for each of the trademark owner s marks. However, trademark owners still need to be ever vigilant in protecting the valuable intellectual capital represented by their trademarks and service marks on the Internet. The ACPA does not say if you are the trademark owner you automatically win in a fight against an Internet domain name cyberpirate. As the Act shows, there are instances where a trademark owner s mark may be registered by another as an Internet domain name, or part of a domain name, that are not done in bad faith. As the trial court decisions involving the use in a domain name of the word Clue in one case, and Avery in another case, show, the trademark owner will not always prevail. In the Clue case, Clue Computing had registered clue.com and was sued by Hasbro, the owner of the mark Clue for the board game. In the Avery case, among other things, the domain name registrant registered avery.com in the context of a family name, but was sued by Avery-Dennison, the office supply company. In both of these cases the facts led the court to decide that the domain name registrant would retain the domain name and did not transfer the domain name to the trademark owner. Each case will be determined on the facts. For the trademark owner or owner of a personal name protected as a mark, the ACPA provides remedies against a person who (a) has a bad faith intent to profit from that mark or personal name; and (b) registers, traffics in, or uses a domain name that (1) in the case of a distinctive mark, is identical or confusingly similar to that mark and (2) in the case of a famous mark, is identical or confusingly similar to or dilutive of that mark. In addition, the ACPA provides protection for the Red Cross insignia and for certain Patriotic Societies & Observances. The term traffics in refers to transactions that include, but are not limited to, sales, purchases, loans, pledges, licenses, exchanges of currency, and any other transfer for consideration or receipt in exchange for consideration. Bad Faith What is bad faith in this context? Congress provided nine factors for the courts to consider in analyzing this question: (1) trademark or other intellectual property rights of the person, if any, in the domain name; (2) domain name as the legal name (or common alias) of the person; (3) prior use, if any, of the domain name in connection with the bona fide offering of any COPYRIGHT 2000 ALAN S. WERNICK. ALAN@WERNICK.COM LINKEDIN: Page 2 of 5

101 goods or services; (4) bona fide noncommercial or fair use of the mark in a site accessible under the domain name; (5) intent to divert consumers from the mark owner s online location to a site accessible under the domain name that could harm the goodwill represented by the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site; (6) offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third person for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person s prior conduct indicating a pattern of such conduct; (7) providing of material and misleading false contact information when applying for the registration of the domain name, the person s intentional failure to maintain accurate contact information, or the person s prior conduct indicating a pattern of such conduct; (8) registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regards to the goods or services of the parties; and (9) the extent to which the mark incorporated in the person s domain name registration is or is not distinctive and famous with the meaning of 43(c)(1) of the Lanham Act (the United States trademark law). In addition to consideration of these factors, the ACPA also states that there is no bad faith if the court determines the person believed, and had reasonable grounds to believe, that the use of the domain name was a fair use or otherwise lawful. Remedies What are the trademark owner s remedies when the court finds a person has the requisite bad faith intent and registers, traffics in, or uses a domain name that, in the case of a distinctive mark, is identical or confusingly similar to that mark; and in the case of a famous mark, is identical or confusingly similar to or dilutive of that mark? Depending on the facts, the courts may order injunctive relief such as forfeiture or cancellation of the domain name, or transfer of the domain name, as well as actual damages and profits, or statutory damages of not less than $1,000 and more than $100,000 per domain name, as the court considers just. This liability extends to the domain name registrant or that registrant s authorized licensee. In the case of cyberpiracy of the name of a living person, the civil remedies may include injunctive relief in the form of forfeiture, cancellation, or transfer of the domain name; plus, in the court s discretion, attorney fees and costs to the prevailing party. An important exception was carved out of the case of civil liability for cyberpiracy of a living person: A person who in good faith registers a domain name consisting of the name of another living person, or a name substantially and confusingly similar thereto, shall not be liable under the relevant paragraph of the ACPA if such name is used in, affiliated with, or related to a work of authorship protected under the United States Copyright Law, and if the person registering the domain name is the copyright owner or licensee of the work, the person intends to sell the domain name in conjunction with the lawful exploitation of the work, and such registration is not prohibited by a contract between the registrant and the named person. This narrow exception shall apply only to a civil action brought under this specific section of the ACPA and shall in no manner limit the protections afforded under the United States Federal Trademark Act (the Lanham Act) or other provision of Federal or State law. In Rem Jurisdiction This may all sound quite good if you are a trademark owner seeking to protect your valuable trademarks on the Internet, but what if you cannot find the domain name registrant for service of process of a lawsuit? The old Internet line that On the Internet, no one knows you re a dog has an equally valid corollary: On the COPYRIGHT 2000 ALAN S. WERNICK. ALAN@WERNICK.COM LINKEDIN: Page 3 of 5

102 Internet, no one knows you live in a dog house. Some domain name registrants are not accurately identifying themselves and their actual address in the registration of the domain name, and in other cases, the registrant moves to another location or city and does not notify the domain name registry of the new physical mailing address. In any event, the registrant, for all intent and purpose, becomes anonymous and reasonably unavailable for service of process to bring a lawsuit under the ACPA. When this results in an in rem action under the ACPA, a domain name shall be deemed to have its situs in the judicial district in which: (1) the domain name registrar, registry, or other domain name authority that registered or assigned the domain name is located; or (2) documents sufficient to establish control and authority regarding the disposition of the registration and use of the domain name are deposited with the court. The ACPA in rem civil action remedy may be filed in the judicial district in which the domain name registrar, domain name registry, or other domain name authority that registered or assigned the domain name is located if the domain name violates any right protected under ACPA, and the court finds that the owner plaintiff: (a) is not able to obtain in personam jurisdiction over a person who would have been a defendant in a civil action under the ACPA above-mentioned section; or (b) through due diligence was not able to find a person who would have been a defendant in a civil action under paragraph ACPA above-mentioned section, by: (1) sending a notice of the alleged violation and intent to proceed under this paragraph to the registrant of the domain name at the postal and address provided by the registrant to the registrar, and (2) publishing notice of the action as the court may direct promptly after filing the action. These actions shall constitute service of process under the ACPA when the registrant s actual name and address for service of process are unknown or not reasonably available. Third Party Liability In addition to the domain name registrant, the domain name registrar, registry, or other registration authority have potentially significant liability for failure to act promptly in the case of a domain name piracy. This liability can include injunctive relief, actual damages and profits, and attorney fees and costs. Misrepresentation by Trademark Owner What can happen if the trademark owner or the owner s representative knowingly misrepresents the status of the mark and the impact of the domain name thereon to a domain name registrar, registry, or other registration authority, and the domain name is cancelled or transferred to the mark owner? If a domain name registrar, registry, or other registration authority acts on a knowing and material misrepresentation by any other person that a domain name is identical to, confusingly similar to, or dilutive of a mark, the person making such misrepresentation shall be liable to the domain name registrant for damages, including attorneys fees and costs, incurred by such action, plus injunctive relief including reactivation of the domain name or the transfer of the domain name to the domain name registrant. If the domain name registrant makes a knowing and material misrepresentation that a domain name is identical to, confusingly similar to, or dilutive of a mark (e.g., stating that the domain name is not identical to, confusingly similar to, or dilutive of a mark, when in fact the registrant knows it is so), then the domain name registrant may be liable for these remedies. In addition to the ACPA, the Internet Corporation for Assigned Names and Numbers ( ICANN ) has published a revised Internet domain name dispute policy. 3 This policy, like the ACPA, addresses the conflict trademark owners face when their valuable trademarks have become victims of a cyberpirate. However, the ICANN remedy is through a mandatory 3 ( COPYRIGHT 2000 ALAN S. WERNICK. ALAN@WERNICK.COM LINKEDIN: Page 4 of 5

103 administrative proceeding (like arbitration) and not the courts (although the ICANN remedy defers to the court if the parties timely choose to pursue their remedies through a court of competent jurisdiction). Both the ACPA and the ICANN Internet domain name dispute resolution policy are worth considering in light of the specific facts facing the trademark owner. Trademark owners should be aware of the ICANN domain name dispute policy, but detailed coverage of this matter is the subject of another article. Conclusion The bottom line is that the ACPA provides an important tool to assist in protecting the valuable intellectual capital assets of trademarks and service marks in the context of Internet domain names. However, it does not replace the ongoing diligence required by the owner of the marks to monitor and protect their intellectual capital on the Internet. Neither the ACPA, nor the ICANN policy, provides guaranteed wins for the trademark owner, and the facts of each case must be analyzed separately in light of the applicable law. COPYRIGHT 2000 ALAN S. WERNICK. ALAN@WERNICK.COM LINKEDIN: Page 5 of 5

104 Cybersquatting violations August 2012 BY ALAN S. WERNICK, ESQ. T: An entire new industry of Internet marketing strategists and consultants has developed to provide services aimed at helping other businesses grow their online presence. However, when either the business or the Internet marketing strategist fails to take into consideration the legal infrastructure, whatever gains the business may achieve with their e-commerce business may be wiped out by damages and a judgment or settlement due to neglecting the legal signposts. There are a number of elements to the e-commerce legal infrastructure. One such legal element is the Anticybersquatting Consumer Protection Act (ACPA). Even though ACPA was signed into law in 1999, many businesses and Internet marketing strategists fail to take into consideration the damages that can flow from cybersquatting violations. ACPA provides protection, with some exceptions, for trademark owners, owners of a personal name protected as a mark and names of living people. It also provides a method to deal with the characteristic of anonymity available on the Internet, whereby domain name registrants are not always who or what they appear to be in the registration. A violation of ACPA can result in a court ordering injunctive relief such as forfeiture or cancellation of the domain name or transfer of the domain name, as well as actual damages and profits, or statutory damages of up to $100,000 a domain name. This liability extends to the registrant or that authorized licensee. Out of a number of cybersquatting complaints by some wellknown brands under ACPA, some have resulted in victories for the trademark owners and some have not. In a recent decision by the 11th U.S. Circuit Court of Appeals, the court reviewed a scenario where a company relied upon an Internet marketing company to acquire some 4,000 domain names and create a number of mini-websites, or microsites, which incorporated trademarks of others in the domain names as part of their Internet marketing strategy. In Pensacola Motor Sales Inc., d.b.a. Bob Tyler Toyota vs. Eastern Shore Toyota, LLC (11th Cir. 2012), two car dealerships squared-off over allegations that boiled down to an application and interpretation of ACPA. In Pensacola the owner of the defendant, Eastern Shore, attended a dealer's conference where, as the court states, he was introduced to an Internet marketing expert who offered to help the dealers revamp their websites and spruce up their technology systems. Advanced Dealer Systems (ADS), pitched two Internet marketing strategies to Eastern Shore's owner, one defensive and the other offensive. The defensive strategy was for Eastern Shore, under ADS' guidance, to buy and hold desirable domain names to keep them out of competitors' hands. However, those defensive strategy domain names would not be operational. The offensive strategy proposed involved the creation of a large number of microsites. By simply entering domain names into the software program and clicking a button, he could instantly mass produce microsites for Eastern Shore, each one using a name related in some way to the car business, for example, 2009camry.com. Those microsites would either automatically redirect users who clicked on them to Eastern Shore's official websites or they would display a one-page website advertising Eastern Shore. Several of those domain names and microsites included references to the plaintiff's (Bob Tyler Toyota ( BTT )) marks. A general manager for Toyota's southeastern division informed the owner of Eastern Shore who immediately notified ADS to disable the microsites. A few days later Eastern Shore received a demand letter from BTT's attorney threatening to file a lawsuit under ACPA unless Eastern Shore agreed to pay his client $250,000 within seven days. Within 24 hours after receipt of the demand letter, all of the microsites infringing on BTT's marks were disabled. However, a couple of months later BTT's attorney sent another letter to Eastern Shore demanding the return of the domain names and a $1 million payment. About a week later BTT filed a lawsuit. After a trial by jury and an appeal, the 11th Circuit rendered its decision affirming the jury's findings under ACPA that the defendant violated ACPA and also qualified for the protection of the act's safe harbor provision because it had a reasonable belief that the use of the domain name[s] was a fair use or otherwise lawful. 15 U.S.C. 1125(d)(1) (B)(ii). Although the 11th Circuit states, [T]hose answers are inconsistent because a defendant who falls within the scope of the safe harbor provision necessarily lacks the bad faith intent to profit that is necessary to violate the statute. See id. 1125(d)(1)(A), the court held that BTT waived any argument that the verdict was inconsistent by not objecting before the jury was discharged. The court listed the nine factors identified in ACPA that a court may consider when determining whether a domain name infringer had a bad faith intent to profit from a trademark and notes that the factors are not limited to these nine factors. Those trying to improve their Internet marketing strategy and those providing strategies need to be mindful of the legal infrastructure to avoid damages. COPYRIGHT 2012 ALAN S. WERNICK. ALAN@WERNICK.COM LINKEDIN: PAGE 1 OF 1

105 TECHNOLOGY LAW Domain Name Liabilities 2/11/2011 BY ALAN S. WERNICK, ESQ. T: E: Domain names are valuable intellectual capital assets in today s ecommerce enabled economy. However, ownership of domain names is not always clearly understood by everyone who uses a website to do business. Just because a business has been using a domain name for years does not mean that the business owns the domain name. Domain name are valuable for several reasons. First, they are unique each domain name represents a unique IP address or, in other words, a unique location/address on the Internet. Second, domain names often are comprised of words or phrases that consist of valuable trademarks (e.g., Kodak.com, and Xerox.com). Third, businesses spend significant amounts of monies marketing their domain names to drive traffic to their websites. But what happens when the proverbial "digital rug" is pulled out from under the business and one morning they wake up to find that their website is replaced with a single page directing visitors to some other website? A recent case from the United States Court of Appeals for the 9 th Circuit provides an example where a business, believing that it owned its website, went to court to establish its ownership rights when their website was replaced by a page directing visitors to another website. In the case of DSPT International, Inc., vs. Lucky Nahum, the Court describes a problem that perhaps could have been avoided for $25 in 1999 only if the business owner or his attorney better understood the issues involved in owning a domain name. DSPT is a business that designs, manufactures and imports men s clothing, and was founded and owned by Paolo Dorigo. Its brand name since 1988 had been Equilibrio but in 1999 created an EQ brand for its clothing. Around that time Dorigo decided to create a website on this new thing (at the time) called the Internet. Dorigo had brought into the business a friend, Lucky Nahum, whose brother, a hairdresser, was also a part-time website designer. DSPT s website, was developed by Nahum s brother in consultation with Dorigo. However, Nahum registered the website in his own name. It s not uncommon for an employee to obtain and register a domain name, using his or her own name and address, for a company. I have on multiple occasions represented such companies (including some very large companies). Giving the employee the benefit of the doubt, this often is done as a matter of expediency by the employee rather than with initial malicious intent. However, at some point down the road this arrangement creates problems for the business, as the DSPT case teaches. Let s roll the clock forward from 1999 to fall of 2005, when Nahum decided to leave DSPT and join a competitor. About a month after Nahum s departure from DSPT, DSPT s website mysteriously disappeared. If a customer typed eq-italy.com into his web browser, instead of seeing DSPT s clothing line, all he saw was a screen saying All fashion related questions to be referred to Lucky Nahum at: lnahum@yahoo.com. According to the Court, Nahum had no use for the website, and had told his new boss at DSPT s competitor that he had inserted that sentence in order to get Equilibrio [DSPT s older brand] to pay him funds that were due to him. As soon as DSPT became aware of what happen, DSPT requested Nahum to give back the website, but he refused. For most businesses, losing control the company website would be problematic, but in the retail business this creates a serious crisis. Most retailers do a substantial portion nearly three-fourths of their annual business in the fourth quarter of the year, so manufacturers and wholesalers like DSPT also do a significant portion of their annual business during that quarter, supplying the retailers in addition to taking orders for spring merchandise deliveries. DSPT used its website to conduct this business and, since it didn t have its website, sales plummeted. According to the Court, Sales plummeted and inventory was left over in the spring from the very bad fall had been good, and the first quarter of 2005 was the best ever, but the last quarter of 2005, and all of 2006, were disastrous. A lot of inventory had to be sold below cost. DSPT spent $31,572.72, plus a great deal of time, writing to customers to explain the situation and replacing its website and the stationery that referred customers to eq-italy.com. In affirming the trial court s decision, the Court of Appeals looked to the Anti-Cybersquatting Consumer Protection Act (ACCPA) which creates a civil liability basis for cyberpiracy when a plaintiff proves that (1) the defendant registered, trafficked in, or used a domain name; (2) the domain name is identical or confusingly similar to a protected mark owned by the plaintiff; and (3) the defendant acted with bad faith intent to profit from that mark. There was no dispute over the first element of the ACCPA analysis Nahum registered the domain name and was refusing to transfer it to DSPT. Regarding the second element, the Court found that even though DSPT had not registered the EQ mark, the evidence presented established that only DSPT used the EQ mark for a men s shirts line, and used the Italian fashion connection as a selling point. Based on the evidence the Court held that DSPT had common law trademark rights and that a jury could reasonably conclude (as it had) that the domain name eq-italy.com is confusingly similar to the mark EQ. COPYRIGHT 2011 ALAN S. WERNICK. ALAN@WERNICK.COM. LINKEDIN: PAGE 1 OF 2

106 In its analysis of the third element, the Court reviewed the ACCPA statutory factors for bad faith intent and noted that while there was no evidence of any wrongdoing by Nahum s original registration of the domain name, his subsequent behavior to use the domain name as leverage against DSPT for his claim of commissions owed by DSPT elevated the behavior to use of the domain name with bad faith intent to profit therefrom. As for whether use to get leverage in a business dispute can establish a violation, the statutory factors for bad faith intent establish that it can. Evidence of bad faith may arise well after registration of the domain name. The statute contains a safe harbor provision, excluding a finding of bad faith intent for persons who reasonably believed that use of the domain name was fair use or otherwise lawful, but that safe harbor has no application here. The Court held that the intent to profit means simply the intent to get money or other valuable consideration. Profit does not require that Nahum receive more than he is owed on his disputed claim. Rather, [p]rofit includes an attempt to procure an advantageous gain or return. Concluding that the jury verdict awarding DSPT $152,000 in damages was supported by the evidence, the Court of Appeals states: Even if a domain name was put up innocently and used properly for years, a person is liable under 15 U.S.C. 1125(d) if he subsequently uses the domain name with a bad faith intent to profit from the protected mark by holding the domain name for ransom. The bottom line is that a business should not assume that it owns a domain name simply because it uses it. If you have not had one done recently, consider having a website legal audit done by an attorney knowledgeable in information technology law and intellectual property law (preferably someone who also has a background in the technology). Suffice it to say that the cost of this preventive legal audit will be far less (both in money and management time) than the costs if you have to go to court, as did DSPT, to establish legal rights to your domain name. Helpful Hint If your business uses a website, consider using generic addresses for the domain name registrant, technical and other contact information. For example, use a generic address like admin@yourdomain.com. Then, set up this generic address to automatically forward any incoming s to several individuals in the company that can act appropriately and responsively to any activity concerning the domain name (e.g., an attempt at an unauthorized transfer of the domain name, DMCA filings, etc.). This generic address that autoforwards all incoming s can help avoid problems when using an individual s personal (or work) address (e.g., if the person goes on vacation or is out sick, the address may not be monitored in a timely manner, or if the individual leaves the company the address may subsequently become inactive). COPYRIGHT 2011 ALAN S. WERNICK. ALAN@WERNICK.COM. LINKEDIN: PAGE 2 OF 2

107 Business First Innovation Mark These Words: Name is a Key Asset (March 1993) By ALAN S. WERNICK, ESQ. Trademarks, service marks and trade names are valuable intellectual property assets. In some cases any one of them may be among the most valuable assets of a company. Consider familiar trademarks such as Kodak, Xerox and IBM. The owners of these marks spend significant amounts of money in establishing and protecting the good will associated with their respective marks. These companies are known in their respective marketplaces by their marks. Millions of dollars are spent on marketing and promoting trademarks and service marks. Of course, not all companies are known in the marketplace by the same name as their trademark. As one example, Special K cereal is produced by the Kellogg Co. and not the Special K Co. A single mark can be a trademark, service mark or a trade name. It all depends on the use of the mark. The statutory law in Ohio, the Ohio Revised Code, defines a "trademark" as "any word, name, symbol or device or any combination thereof adopted and used by a person to identify goods made or sold by him and to distinguish them from goods made or sold by others." A trademark is used to identify goods. Goods can be anything from soup to nuts. The trademark helps to identify the source of origin of the goods. Thus someone buying a cereal box marked with the Special K trademark should be able to rely on the supplier of that cereal being the Kellogg Co. of Battle Creek, Mich., and not some other source. T: E: ALAN@WERNICK.COM As such, the consumer has certain expectations about the taste and quality of the cereal being purchased because of the trademark. Ohio statutes define a service mark as "a mark used in the sale or advertising of services to identify the services of one person and distinguish them from the services of others and includes without limitation the marks, names, symbols, titles, designations, slogans, character names and distinctive features of radio or other advertising used in commerce." A service mark is used to identify services. Services include accounting, banking and insurance. Like a trademark, a service mark creates certain expectations among consumers. For-instance, if a consumer buys a policy from an insurance company using a particular service mark, the consumer will have certain expectations with regard to underwriting, adjusting and claims services, among other things. A trade name is something quite different from a trademark and a service mark. Ohio statutes define a trade name as "a name used in business or trade to designate the business of the user and to which the user asserts a right to exclusive use." The owner of the trade name may use the trade name solely to identify his business. The goods or services of the business may be known by an entirely different identity. In this use of the word or words making up the trade name, the owner of the trade name is not using it to identify his goods or services, but rather to identify the name of the business. COPYRIGHT 1993 ALAN S. WERNICK. ALAN@WERNICK.COM LINKEDIN: Page 1 of 2

108 In some cases, the same word or words may be used to identify goods, services and a trade name. Xerox for example, is used in all three ways. You can buy a Xerox copier (a good). You can have your copier maintained through the Xerox maintenance services (a service). And you can look up the company name of Xerox as a trade name. While there can be a great deal of overlap in how the word or words are used as a trademark, service mark or trade name it is important to realize that each such use is protected in a somewhat different way under the law. One implication for this other company is that all the money that the company has spent on creating and marketing a trademark or service mark could be lost if the right to use the trademark or service mark is gone. The bottom line is that companies need to give serious consideration to the legal implications of obtaining and maintaining rights in the valuable intellectual property assets of trademarks and service marks. One such difference is that trademarks and service marks can, depending upon their use, be covered by federal law as well as state law and common law. Trade names, on the other hand, are protected only under state law and common law. However, if the trade name is used as a trademark or service mark, then a federal law remedy may exist. Another difference is the statutory remedy available for trademarks and service marks is not the same for trade names. This particular statutory difference will also depend upon whether the trademark or service mark is registered with the state or federal government. While these different definitions for a trademark, a service mark and a trade name may sound confusing, the impact on a company s bottom line when rights to these intellectual property assets are lost is clear. For example, if you have a valid and enforceable trademark, you can potentially stop a competitor in his tracks if he uses a trademark on his goods that is likely to cause confusion with your trademark in the marketplace. COPYRIGHT 1993 ALAN S. WERNICK. ALAN@WERNICK.COM LINKEDIN: Page 2 of 2

109 As mobile apps grow, so do potential problems October 2012 BY ALAN S. WERNICK, ESQ. T: E: Computer applications for mobile devices (i.e., "mobile apps") are becoming as ubiquitous as mobile phones. Perhaps you may fondly remember a time when the primary (if not sole) function of a mobile phone was to make and receive phone calls. Of course, not too long before that, the distance one could travel with a mobile phone depended upon the length of the phone wire attached to the phone. Today, mobile apps provide increasingly numerous functions for mobile phones to interact with you as well as with other devices. All of those mobile apps and all of those interactions have significant business, technology and legal implications. Turning our focus to the legal implications opens up a wide array of legal issues and concerns. For instance, mobile app issues can include copyright, trademark, patent, trade secret, contract, tort, privacy, Children's Online Privacy Protection Act (COPPA), CAN-SPAM, Federal Communications Commission (FCC), Federal Trade Commission (FTC), licensing, open source and class-action legal issues, to name a few. These issues concern not only manufacturers of mobile phone devices but developers as well. Patents This column could be devoted entirely to the recent jury decision in the patent infringement case involving Apple and Samsung. Apple Inc. v. Samsung Electronics Co., (USDC, ND, CA, Aug. 24, 2012). A jury awarded Apple $1.05 billion in damages after finding that Samsung infringed on several of Apple's patents. We have not heard the last of that case or the impact of intellectual property laws on the evolution of mobile apps. The lesson for mobile app developers (and mobile device manufacturers) is to be aware of the patent pool in which your technology is designed to play, and act proactively in understanding and protecting your intellectual property rights and promptly if you become aware of possible infringing activity. Promissory fraud One recent case example of tort law interacting with mobile apps involves the manufacturer of a mobile phone announcing that it was going to upgrade the operating system of its mobile device. A consumer purchased the mobile device allegedly in reliance on that representation only to find (after the 30-day return policy expired) that the manufacturer was not going to provide the upgrade. In Haught v. Motorola Mobility, Inc. (Aug. 23, 2012), the U.S. District Court for the Northern District of Illinois, in denying a motion to dismiss a class-action lawsuit, held because Haught alleges that he reasonably relied on Motorola's misrepresentations of future conduct regarding the proposed upgrade of his mobile phone's operating system in deciding not to return his phone, he has properly stated claims of promissory fraud and unjust enrichment based on a scheme or device to defraud that are plausible on their face. This court decision is early in the litigation process of this lawsuit, the ultimate outcome of which will need to be determined on its merits. Nonetheless, this case provides an example of how promissory fraud (tort) issues may arise with mobile devices. Privacy On May 25, 2012, the FCC announced an inquiry into privacy and security of information stored on mobile communication devices. The public notice solicited comments regarding the privacy and datasecurity practices of mobile wireless service providers with respect to customer information stored on their users' mobile devices and the application of existing privacy and security requirements to that information. The FCC is seeking to "refresh the record" concerning these mobile devices including: How have those practices evolved since the FCC collected information on this issue in the 2007? Are consumers given meaningful notice and choice with respect to service providers' collection of usage-related information on their devices? Do current practices serve the needs of service providers and consumers and in what ways? and Do current practices raise concerns with respect to privacy and data security? The answers to these questions, and others, will affect mobile wireless service providers and mobile app developers. The FTC and other regulators are also looking into privacy issues concerning mobile apps. As wireless service providers and mobile app developers become stewards of sensitive customer and business data, including personal identifying information, how will the law and regulations evolve? Will wireless service providers and mobile app developers be viewed differently or the same as Internet service providers? What these developments mean for mobile app developers and the businesses hiring mobile app developers is that they, and their legal advisers, need to be mindful of the evolving legal issues as they develop and release their mobile apps. When the subpoena is served with the complaint alleging violations of these and other legal rights, this is not the time to ask, "Is there an app for that?" to wish away the pending legal liabilities. The bottom line is that mobile app developers and businesses hiring mobile app developers need to consider the business, technology, and legal aspects of the mobile app. COPYRIGHT 2012 ALAN S. WERNICK. 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110 OSBA Legal Basics for Small Business (2013 Edition) Copyright Notice and Registration Benefits Copyright Owner BY ALAN S. WERNICK, ESQ. T: E: By the time they begin to read, most people have seen a copyright notice. Most, however, misunderstand the meaning of the notice and its role and purpose in protecting copyrights. If the work is infringed, proper copyright notice and proper registration of the copyright can enhance the copyright owner s award of damages. It is a myth that copyright notice is required for a copyright in a work to exist. However, the myth does have some basis in history. In the past, according to United States law, the copyright notice was required for creating and maintaining copyrights with some exceptions. Since March 1, 1989, however, even if a work does not have a copyright notice on it, copyrights can exist and be enforced, with a few exceptions. Under copyright law in the United States today, including a copyright notice on a work is entirely optional. The copyright owner does not even have to include a copyright notice on publicly distributed copies of a work. For example, a newspaper publisher does not have to include a copyright notice in the newspaper to assert a valid copyright. Although the copyright notice is no longer necessary, it is very advantageous to use it. For example, if a copyright infringement suit is brought on a work distributed with a copyright notice, it is easier to assert damages against the purported infringer because the infringer cannot claim to be an innocent infringer who did not know the work was copyrighted. Thus, the copyright owner likely will be entitled to a greater amount if the court determines there has been an infringement and orders the defendant to pay damages. And, if the U.S. copyright owner has properly registered the work in a timely manner with the U.S. Copyright Office, there is a potential for even greater damages (referred to as statutory damages) against the infringer. If the copyright owner is eligible for statutory damages, then, in the case of a willful infringement, the court in its discretion may increase the award of statutory damages to a sum of not more than $150,000. Also, in certain circumstances, the court may award court costs and a reasonable attorney s fee to the prevailing party. Registration of the copyright in the U.S. Copyright Office is a relatively inexpensive process, particularly if one considers the valuable legal rights available to properly registered copyright works. Copyright registration can, for most works, now be done online using the Electronic Copyright Office (eco) at Basic copyright registration claims that can now be done online include literary works (e.g., books, computer programs), visual arts works, performing arts works, sound recordings, motion pictures, and single serial issues. While a copyright notice is no longer required for a copyright to exist (but highly recommended because of the benefits afforded the copyright owner under the Copyright Law in the United States), if you are going to use it, you might as well do it right. Federal law sets forth the proper elements of a copyright notice. COPYRIGHT 2013 ALAN S. WERNICK ALAN@WERNICK.COM LINKEDIN: Page 1 of 2

111 The general form of the copyright notice is set forth in the federal copyright statute (17 U.S.C. 401). There are three parts to the copyright notice under this law: The first part has three options: the symbol (the letter C in a circle), the abbreviation Copr., or the word Copyright. (In the case of a sound recording, the letter P in a circle is used instead.) The second part of the notice is the year of first publication of the work. The third part of the notice is the name of the copyright owner or some abbreviation by which the name can be recognized, or some generally known alternative designation of the owner (e.g., IBM ). The year of first publication may be omitted when a pictorial, graphic or sculptural work, with accompanying text matter, if any, is reproduced in or on greeting cards, postcards, stationary, jewelry, dolls, toys, or any useful articles. The positioning of the copyright notice on the work is important. A notice should be affixed to the copies of the work in such a manner and location as to give reasonable notice to the claim of copyright. Examples of possible copyright notice positions include: For a book: Copyright notice should be placed on the title page or the page immediately following, either side of the front or back cover, or the first or last page of the main body of the work. For computer programs: Copyright notice should be placed with or near the title or at the end of the work on paper printouts of the work, at the user s terminal at sign-on (and removed only after the user takes some action such as pressing a key or clicking on a mouse), on continuous display on the terminal, in the About box, or reproduced durably on a label securely fastened to the copies or to a container used as a permanent receptacle for the copies. Proper placement of the copyright notice depends on the specific work. The bottom line is that a proper copyright notice, along with the proper and timely registration of the copyrights in the work, can greatly enhance the copyright owner s remedies in the event the work is infringed. by Alan S. Wernick, an attorney in private practice focused on information technology and intellectual property law, and a member of the bar in IL, NY, OH, & DC ALAN S.WERNICK. All rights reserved. Reprinted by the OSBA with permission. COPYRIGHT 2013 ALAN S. WERNICK ALAN@WERNICK.COM LINKEDIN: Page 2 of 2

112 IP BOOTS ON THE GROUND: WHERE CHANGE IS, WHAT STAYS THE SAME (APPLICATION, PART 2) Case Study The Parties: Football Manufacturer and Sports Injury Medical Services provider. You represent one of them in a trademark dispute and are about to enter negotiations with the other side. What are your arguments and strategies? 1. Football Manufacturer a. Began manufacturing footballs in Ohio in late 1950s b. Target market: junior and senior high schools, little league organizations, retail outlets in Ohio c. Adopted advertising slogan in late 1960s: get ahead of the game i. Initially stenciled onto balls, with a little flame at the end of the tagline ii. By 1990s, embossed tagline and flame into balls during manufacturing process d founder retires, son takes over as CEO e. Son registers trademark in Ohio 2003 and federal in 2008; tagline with little flame shooting forward at the end of the tagline. f. Son implements plans for regional expansion. g. 2010: son implements website to sell the company manufactured footballs via the Internet: getaheadofthegame.com. Their trademark tagline and flame is prominently displayed on their website. Get ahead of the game 2. Sports Injury Medical Services provider a. Founded 1999 in Florida b. Target market: parents of injured student athletes c. Slowly but steadily expanded north and east through network of high school and small college athletic directors and coaches d. In 2007, website set up so that student-athletes can take a test online for $50 e. In 2013, website transitioned to new Top Level Domain: stayaheadofthegame.med f. In 2014, applied for federal trademark on tagline stay ahead of the game with logo of flaming football Stay ahead of the game