Tuesday, March 16, 2010

Glitch-Filled Battle Over "COMPUTER GEEKS" Mark Lurches to Split TTAB Decision

You might expect a TTAB battle over the mark COMPUTER GEEKS to include a few glitches, right? Sure enough, the parties to this consolidated opposition/cancellation proceeding staggered to a split decision regarding rights in that mark for various computer-related goods and services. Computer Geeks, Inc. v. Compgeeks.com, Oppositions Nos. 91167886 and 91170726 and Cancellation No. 92046567 (March 4, 2010) [not precedential].

Cancellation dismissed: Plaintiff got off on the wrong foot when the Board jettisoned its petition for cancellation of a registration for the mark COMPGEEKS.COM for on-line computer ordering services and for internet search engines. Plaintiff alleged priority of use but it never alleged likelihood of confusion. Instead, it asserted only that: "Insofar as the subject Reg. No. 2499396 is asserted by the Registrant ... as a defense to the pending Consolidated Opposition, then Petitioner believes it will be damaged by the continued registration of the mark of 2499396." Not good enough, said the Board, agreeing with Defendant's affirmative defense that the petition "failed to state a claim."

Testimony submitted late: Defendant objected that Plaintiff had not submitted its testimonial depositions "in a timely fashion," but the objection was overruled, since "Defendant did not suffer any cognizable prejudice."

Too much confidentiality: The Board was not pleased that a "good portion of the record" was designated as Confidential. "[W]e will not be hamstrung by the parties' designation of testimony and evidence as 'Confidential.'" The Board indicated that it would treat as confidential only that which is "truly confidential and commercially sensitive."

Who has priority? There remained to be decided Plaintiff's two oppositions to registration of COMPUTER GEEKS for computer-related goods and services in classes 9, 35, and 4.2 Plaintiff claimed prior use of that mark for a "wide variety of computer-related goods and services."

Plaintiff's testimony established a first use date of November 28, 1995, but only for "computer services in the nature of diagnostics, consulting, and custom assembly of computers."

Defendant asserted a first use date of April 8, 1995 in one application, and had to prove this date only by a preponderance of the evidence. As to the other application, it asserted a first use date of February 1, 1996, and it was required to prove any earlier date (e.g., earlier than November 28, 1995), by clear and convincing evidence. Defendant failed on both counts due to "the uncertainty of [its] testimony on exact dates, as well as the lack of documentary evidence attesting to the use of the mark in 1995."

Likelihood of confusion: The Board noted that this case was "a bit unusual in that neither party in its brief actually points to evidence or arguments regarding the du Pont factors." Plaintiff argued that it should win because (1) the examining attorney for Plaintiff's application thought there was confusion, and (2) Defendant sent Plaintiff two cease-and-desist letters. Not good enough, said the Board: it is not bound by the decisions of examining attorneys, and cease-and-desist letters are not dispositive on the issue. Likewise, Defendant's reliance on certain comments made by Plaintiff's witness was insufficient because the comments were not dispositive admissions.

The Board then found the marks to be identical, but it weighed in Defendant's favor the lack of actual confusion during the more than 10 years that the parties have co-existed in Southern California.

The Board concluded that confusion is likely between Plaintiff's "computer services in the nature of diagnostics, consulting, and custom assembly of computers" and Defendant's computer consulting services (class 42) and its computer hardware (class 9). However, as to "retail store services" and "on-line retail store services," Plaintiff failed to sustain its burden of proof.

Got that?

Text Copyright John L. Welch 2010.


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