Precedential No. 6: Applicant's Rule 133 Amendment Yields Dismissal of 2(d) Opposition

Prior to the close of discovery in this Section 2(d) opposition, Applicant RStudio moved under Rule 2.133 (and Section 18) to narrow the descriptions of its software and related services in the opposed applications "in the event that the Board deems such amendments necessary to dismiss the opposition." The Board deferred ruling on the motion until final decision. It ultimately found that, taking into account applicant's proposed amendments, there was no significant relationship between applicant's software and services and Opposer's software, and so it dismissed the opposition. Embarcadero Technologies, Inc. v. RStudio, Inc., 105 USPQ2d 1825 (TTAB 2013) [precedential].


Applicant sought to register the mark RSTUDIO for goods and services identified in fairly broad terms, encompassing all types of statistical software and application development software, as well as training and design and development services. Applicant's motion aimed to restrict the application under Section 18 to the field of "advanced" statistical software using the "R" computer language and data from two dimensional datasets.

Opposer Embarcadero alleged likelihood of confusion with its registered mark ER/STUDIO for "entity relationship modeling software for SQL databases."

The Board noted that, ideally, a defendant will invoke Section 18 as an affirmative defense. The Board, however, found applicant's motion to be timely because it was filed before the close of discovery. The proposed restrictions were supported by the record in that the scope of applicant's actual goods and services are in fact so restricted. In addition, it was clear that the issue of the proposed restriction was tried by the parties and argued in their briefs. As requested, the Board considered applicant's Section 18 defense in the alternative.

The Board then proceeded through its usual Section 2(d) analysis. It found that the marks have a degree of similarity in appearance and sound, but that each mark has a distinctly different commercial impression and connotation. Most of Opposer's users would understand ER to mean "entity relationship," whereas the R in applicant's mark refers to the "R" programming language. The common element STUDIO is highly suggestive and weak in the field. Therefore this du Pont factor weighed in applicant's favor.

As to the involved goods and services, applicant's "unamended" software and services were clearly related to opposer's database modeling software. As to the amended goods and services, however, the Board did not find "any significant relationship between the respective software products," and it further noted that applicant's services are even further removed from opposer's goods.

The purchasing conditions and the sophistication of purchasers weighed against a likelihood of confusion finding.

Balancing the relevant du Pont factors, the Board found confusion likely as to the unamended goods and services in the opposed applications. However, considering the amended description, the Board found no likelihood of confusion.

And so the Board granted the motion to amend and dismissed the opposition.

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Text Copyright John L. Welch 2013.