Thursday, September 15, 2011

Precedential No. 23: Sophistication of Buyers Leads to TTAB Dismissal of CALYPSO Section 2(d) Opposition and Cancellation Proceeding

The Board dismissed this combined opposition and cancellation proceeding, finding Defendant's six marks, all containing the word CALYPSO with the remaining words disclaimed, for equity investment management and fund services, not likely to cause confusion with the registered mark CALYPSO for "computer software for use by financial institutions for core processing and control." The Board concluded that the differences in the goods/services and the sophistication of the customers "strongly outweigh" the other relevant du Pont factors, including the similarity of the marks and the strength of Plaintiff's mark. Calypso Technology, Inc. v. Calypso Capital Management, LP, 100 USPQ2d 1213 (TTAB 2011) [precedential].

More than half of the 33-page opinion concerned various evidentiary rulings, none of which were noteworthy. The last 13 pages are devoted to the likelihood of confusion analysis.

The Marks: Defendant sought to register the marks CALYPSO CAPITAL MANAGEMENT, CALYPSO QUALIFIED PARTNERS, and CALYPSO MASTER FUND. Its registered marks are CALYPSO OVERSEAS, CALYPSO PARTNERS, and CALYPSO ADVISORS. With all the other words disclaimed, the Board not surprisingly found the word CALYPSO to be the portion having source-identifying significance in Defendant's marks. Therefore the Board found the marks to be "similar" to Plaintiff's mark.

The Goods/Services: As to the respective goods and services, the fact that both are in the "financial field" does not mean that they are necessarily related for 2(d) purposes. Plaintiff pointed to third-party registrations that include financial services and software, but none were based on use in commerce. There was simply no evidence that the involved goods and services "are ever offered by a single company." In short, Plaintiff failed to show "the necessary connection that would cause consumers of these goods and services to believe that they emanate from a single source."

There was evidence that the same institutions that purchase computer software like that of Plaintiff would also purchase investment services offered by Defendant. But there was no evidence that the purchasing decisions would be made by the same people. Therefore, this factor favored Defendant.

Purchaser Sophistication: The only overlap in customers for the involved goods and services consists of financial institutions. "We are not dealing here with an individual with a few dollars to invest." The entities using Defendant's services "will be investing large sums of money, and will be extremely careful and sophisticated purchasers." Similarly, "because of the cost and the purpose " of Plaintiff's software, the purchasers will also be careful and sophisticated.

These sophisticated consumers are not likely to assume that "the disparate goods and services" emanate from the same source merely because they are offered under marks comprising or containing the word CALYPSO. The purchasers "would be aware of the practices of the industry, and recognize that such goods and services do not emanate from a single source."

Strength of Plaintiff's Mark: Plaintiff failed to prove that its mark is famous, but the Board found that the mark is arbitrary and strong.

Balancing the relevant duPont factors, the Board ruled that Plaintiff had failed to prove likelihood of confusion, and so it dismissed the combined proceedings.

TTABlog comment: Why was this decision deemed precedential?

Text Copyright John L. Welch 2011.


At 5:48 PM, Anonymous Rob said...

This decision was deemed precedential because of the fairly novel evidentiary rulings which implement Safer.


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