IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`Liebert Corporation
`
`V.
`
`Opposer,
`
`Digitronics Inventioneering Corp.,
`
`Applicant.
`
`
`
`Opposition No. 91 153525
`IIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIII
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`04-05-2004
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`1.1.5. Paumta morcnm Mail acmm #22
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`OIDITIISSIOHCT 01”
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`go): T.Ti‘B N? F1],EEd
`2900 Crystal Drive
`AIIIl'IgtOIl, VA 22202-3513
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`Ta efnaf 5
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`k
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`-
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`EXPRESS MAIL MAILING LABEL
`NUMBER: E_L37'c? 30 930 3 U5
`DATE OF DEPOSIT 4/5/0 4
`I hereby certify thaftlifs paper or fee is being depositéd w‘It|'I the
`United -States Postal Service "EXPRESS MAIL POST OFFICE TO
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`ADDRESSEE" service under 37 C.F.R. § 1.10 on the dale Indicated
`above and is addressed to: BOX 'I‘l‘AB NO FEE, Commissioner for
`Trad '
`s.290DCrystaI DIive,AI1ingIon, VA 22202-3513.
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`’\./
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`
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`Signature
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`_
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`OPPOSER’S REPLY BRIEF
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`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
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`

`
`TABLE OF CONTENTS
`
`
`
`1
`
`2
`
`I.
`
`Introduction
`
`II. ARGUMENT
`
`A. Liebert May Properly Rely On All Marks And Issues To Which Applicant Did Not Object
`
`During Trial
`2
`
`1. Many of the Matters Applicant Now Decries Were Specifically Pleaded in Liebert’s
`
`Notice of Opposition
`
`2
`
`2. Each of the Issues Now Complained About Were Tried With Applicant’s Knowledge
`
`and Consent
`3
`
`6
`
`14
`
`14
`
`16
`
`B. Liebert Has Established A Family Of “SITE” Marks
`
`C. Applicant’s SITETRAK Mark Is Likely To Be Confused With Opposer’s Marks
`
`
`
`1. Similarity of the Marks
`
`2. Similarity of Goods
`
`3. Similarity of Trade Channels
`
`4. Sophistication of Purchasers
`
`20
`
`20
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`5. The Strength of Opposer’s Mark
`
`20
`
`6. The Number of Similar Marks in Use on Similar Goods
`
`21
`
`7. Actual Confusion and the Length of Time and Conditions of Concurrent Use Without
`22
`Evidence of Actual Confusion
`
`8. The Variety of Goods On Which Opposer’s Mark is Used
`
`23
`
`9. The Extent to Which Applicant Has a Right to Exclude Others
`24
`From Use of Its Mark
`
`10. The Extent of Potential Confusion
`
`24
`
`11. Any Other Established Fact Probative of the Effect of Use
`
`24
`
`III. SUMMARY
`
`25
`
`

`
`
`
`TABLE OF AUTHORITIES
`
`CASES
`
`AMF Inc. v. American Leisure Products, Inc.
`
`177 U.S.P.Q. 268 (C.C.P.A. 1973) ................................................................................... .. passim
`Avtex Fibers Inc. v. Gentex Corp.,
`23 U.S.P.Q. 625 (T.T.A.B. 1984) ............................................................................................. ..5
`Burger ChefSystems, Inc. v. Burger Man, Inc.,
`492 F.2d 1398, 181 U.S.P.Q. (C.C.P.A. 1974) .......................................................................... ..4
`CAE, Inc. v. Clean Air Engineering, Inc.,
`60 U.S.P.Q.2d 1449 (7th Cir. 2001) ......................................................................................... ..17
`Colony Foods, Inc. v. Sagemark, Lta'.,
`2212 U.S.P.Q. 185 (Fed. Cir. 1984)............................................................................................ ..I0
`CPC Int ’I, Inc. v. The Seven-Up Co.,
`218 U.S.P.Q. 379 (T.T.A.B. 1983) .......................
`Dufij/-Mot! Co. v. Borden, Inc.,
`
`............................................................ ..3, 4, 5
`
`201 U.S.P.Q. 846 (T.T.A.B. 1978) ....................................................................................... ..9, 22
`Fed. R. Civ. P. 15(b). ...................................................................................................................... ..4
`Federal Bureau ofInvestigation v. Societe:
`Brii & Co. ”,
`172 U.S.P.Q. 310 (T.T.A.B. 1971) ............................................................................................. ..3
`
`General Mills Inc. v. Health Valley Foods,
`24 USPQ2d (BNA) 1270 (TTAB 1992) .................................................................................. ..l 1
`Han Beauty, Inc. v. Alberto-Culver C0,,
`236 F.3d 1333, 57 U.S.P.Q.2d 1557 (Fed. Cir. 2001) ............................................ ..16, 19, 21, 22
`Hilson Reseach Inc. v. Societyfor Human Resource Management,
`27 U.S.P.Q.2d 1423 (T.T.A.B. 1993) ......................................................................................... ..5
`In re Albert Trostel & Sons Co.,
`
`29 U.S.P.Q.2d 1783 (TTAB 1993) ............................................................................................ ..11
`
`In re American Olean Tile Co.,
`
`1 USPQ2d (BNA) 1823 (TTAB 1986) ................................................................................... ..11
`In re Shell Oil Co.,
`26 U.S.P.Q.2d 1687 (Fed. Cir. 1993) ......................................................................................... ..24
`J & J Snack Foods Corp. v. McDonald's Corp.,
`18 U.S.P.Q.2d 1889 (Fed. Cir. 1991) ............................................................................... ..6, 11, 14
`Jewelers Vigilance Committee, Inc. v. Ullenberg Corp.,
`823 F.2d 490, 2 U.S.P.Q.2d 2021 (Fed. Cir. .1987) ................................................................ ..3, 4
`Kasco Corp. v. Southern Saw Serv., Inc.,
`27 U.S.P.Q.2d 1501 (T.T.A.B. 1993) ......................................................................................... ..5
`Levi Strauss & Co. v. R. Josephs Sportswear, Inc.,
`28 U.S.P.Q.2d 1464 (T.T.A.B. 1993) ......................................................................................... ..6
`Marion Laboratories, Inc. v. Biochemical/Diagnostics, Inc.,
`6 U.S.P.Q.2d 1215 (T.T.A.B. 1988) ......................................................................... ..8, 11, 13, 15
`
`iii
`
`

`
`
`
`Microsysrems Inc. v. Astra-Med Inc.,
`
`39 U.S.P.Q.2d 1144 (N.D. Ca. 1996) ....................................................................................... ..17
`Motorola, Inc. v. Griffiths Electronics, Inc.,
`137 U.S.P.Q. 551 (C.C.P.A. 1963) ........................................................................... ..9,11, 13, 15
`Older Tyme Foods, Inc. v. Rounafifls Inc.,
`22 U.S.P.Q.2d 1542 (Fed. Cir. 1992) ......................................................................................... ..20
`Order Sons ofItaly in America v. Profixmi Fratelli Nostra AG,
`36 U.S.P.Q.2d 1221 (T.T.A.B. 1995) ........................................................................................ ..3
`Polaroid Corp. v. PolaTech GmbH,
`1996 T.T.A.B. Lexis 302 (T.T.A.B. Sep. 5, 1996) ................................................................... ..l1
`Riceland Foods Inc. v. Pacific Eastern Trading Corp,
`26 U.S.P.Q.2d 1883 (T.T.A.B. 1993) ......................................................................................... ..5
`Robert Hall Clothes, Inc. v. Studds,
`
`286 F.2d 615, 128 U.S.P.Q. 542 (C.C.P.A. 1961) ...................................................................... ..6
`The Creamette Co. v. Merlino,
`
`1312 U.S.P.Q. 381 (9th Cir. 1962) ............................................................................................. ..l0
`
`OTHER AUTHORITIES
`
`T.B.M.P. § 101.03 ........................................................................................... .. 11
`
`T.B.M.P. § 314 ................................................................................................................................ ..4
`
`RULES
`
`Fed. R. Civ. P. 1S(b) ....................................................................................................................... ..3 _
`
`iv
`
`

`
`
`
`I.
`
`INTRODUCTION
`
`In its response to Opposer Liebert’s Opening brief, Applicant did not dispute the following
`
`key facts:
`
`1) Applicant’s SITETRAK monitoring device is specifically designed for use in third-
`
`party monitoring systems like Liebert’s SITESCAN system, and could easily replace or be
`
`combined with Liebert monitoring devices (like SITELINK or SITE I/O, which undisputedly
`
`perform the same functions as SITETRAK) in such systems;
`
`2) Liebert has longstanding rights in its various “SITE” trademarks, established well
`
`before Applicant’s first use of the SITETRAK mark; and
`
`3) Applicant’s sales and advertising channels are also used by Liebert to sell its “SITE”
`
`monitoring products.
`
`In light of these undisputed facts, and of the other facts involved in this opposition,
`
`Applicant’s nearly identical mark for identical goods, which are meant to be incorporated into a
`
`monitoring system like Liebert’s SITESCAN or SITENET and used alongside Liebert’s
`
`monitoring devices like SITELINK, SITEGATE, or SITE IO (marks that Applicant was
`
`undisputedly on notice of and did not object to during trial), is likely to be confused with Liebert’s
`
`SITE marks and should not be registered. This is the case whether Liebert’s prior “SITE” marks
`
`are analyzed individually, or when appropriately viewed as a family of marks.
`
`

`
`
`
`II.
`
`ARGUMENT
`
`Sections A and B below will explain why App1icant’s technical objections are meritless.
`
`Section C will then discuss why Applicant’s half-hearted and evidence-free attempt to argue that
`
`confusion is not likely must fail.
`
`A.
`
`Liebert May Properly Rely On All Marks And Issues To Which Applicant Did
`Not Object During Trial
`
`Applicant spends much of its time arguing that the Board should ignore many of Liebert’s
`
`“SITE” marks and the fact that Liebert owns a “SITE” family of marks, asserting that they were
`
`not specifically pled. As explained below, this argument fails for two basic reasons. First, Liebert
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`did plead several of the issues to which Applicant now belatedly objects. Second, Liebert provided
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`ample notice in its discovery responses and during trial of such issues. Applicant raised no
`
`objection throughout the entire course of this litigation to such evidence and issues, until finally
`
`raising its purported objections in its final brief. These issues were thus tried with Applicant’s
`
`consent.
`
`1.
`
`Many of the Matters Applicant Now Decries Were Specifically Pleaded in
`Liebert’s Notice of Opposition
`
`Applicant simply ignores that several of the allegedly barred matters were pled in Liebert’s
`
`Notice of Opposition. For example, even in the face of its objections, Applicant admitted that
`
`Liebert pled both its registration-based and prior use-based rights in its SITESCAN mark.
`
`(Applicanfs brief at 6; Notice of Opposition at W 2, ll.) Liebert also made clear that it was
`
`asserting several “SITE” marks, all related to monitoring products related to Applicant’s goods.
`
`(Notice of Opposition at 1['{] 1-10.) Applicant’s objection that Liebert did not use the magic word
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`“family” exalts form over substance.
`
`

`
`
`
`Liebert also pled harm as to each mark denoted therein, including SITESCAN, SITENET
`
`and SITELINK, stating that the registration of Applicant’s mark would “be a source of damage to
`
`Liebert.” (Notice of Opposition, 4:10.)
`
`In contrast to Applicant’s unsupported assertions, it is
`
`unnecessary to plead harm with particularity. See Order Sons of Italy in America v. Profumi
`
`Fratelli Nostra AG, 36 U.S.P.Q.2d 1221,
`
`(T.T.A.B. 1995) (in order to establish standing an
`
`opposer only need to plead a short and plain statement showing it is likely to be damaged); Federal
`
`Bureau of Investigation v. Societe: "M Bril & Co.", 172 U.S.P.Q. 310, 313 (T.T.A.B. 1971)
`
`(“[a]ll that is necessary in a proceeding of this type is that the ‘person’ bringing the opposition
`
`establish conditions and circumstances from which damage to it from the opposed mark can be
`
`assumed”); Jewelers Vigilance Committee, Inc. v. Ullenberg Corp., 823 F.2d 490, 2 U.S.P.Q.2d
`
`2021, 2023 (Fed. Cir. 1987) (opposer only need to show a personal interest in the outcome.)
`
`Liebert is thus not barred from raising the SITELINK mark on the purported basis that it “did not
`
`allege any harm” with respect to that mark.
`
`2.
`
`Each of the Issues Now Complained About Were Tried With Applicant’s
`Knowledge and Consent
`
`In an opposition proceeding, a party’s failure to object to the introduction of allegedly
`
`unpleacled matter after receiving notice of such matter through discovery or during the testimony
`
`period means that such matters have been tried by consent. CPC Int '1, Inc. v. The Seven-Up Co.,
`
`218 U.S.P.Q. 379, 380 (T.T.A.B. 1983). “When issues not raised by the pleadings are tried by
`
`express or implied consent of the parties, they shall be treated in all respects as if they had been
`
`raised in the pleadings.” Fed. R. Civ. P. l5(b) (emphasis added).
`
`Applicant fails to mention that Liebert provided ample notice of many of the allegedly
`
`barred matters through its interrogatory responses and document production.
`
`For example,
`
`

`
`
`
`Opposer specifically identified the SITE I/O mark and the SITEGATE marks in its supplemental
`
`response to Applicant’s Interrogatory No. 1, which requested the identity of those marks that
`
`Opposer was asserting.
`
`(Opposer’s Ex. 37, p. 2.)‘ Liebert finther made clear the precise goods
`
`with which all of its asserted marks were used (including SITELINK, used for the exact type of
`
`goods as Applicant’s SITETRAK), directing Applicant to the very brochures cited herein and in
`
`Liebert’s Opening brief.
`
`(Id., Opposer’s Ex’s. 3-15, 23-25, 27-28, 30.) Applicant was thus on
`
`notice through discovery of the many related “SITE” marks and goods that Liebert is asserting.
`
`Moreover, as can be seen from the citations to the trial record in its opening brief, Liebert
`
`introduced at trial each and every one of the matters raised in its briefing, such as the common-law
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`SITELINK, SITEGATE, SITE I/O and SITETRAP marks (Saliaris Depo. 3126-3325; 37:23 — 39:7;
`
`40: 1-41: 12; 42:21-43:6; 43:21-44:16; Opposer’s Ex’s. 29-35)’, the fact that Liebert had a family of
`
`SITE marks (Saliaris Depo. 31 :6-13; 46:17-47:19; 50:10-23), and that Liebert would be harmed by
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`registration of the SITETRAK mark. (Saliaris Depo. 64:12-66:13.) However, not once did
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`Applicant object to this evidence, or any other allegedly barred evidence. Instead, Applicant chose
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`to lay behind the log and ambush Liebert with its tardy objections over Six months after that
`
`evidence was introduced. The Notice of Opposition has thus been deemed amended to include
`
`teach and every matter Applicant claims is barred. T.B.M.P. § 314; Fed. R. Civ. P. 15(b).
`
`' Although mistakenly identified as SITENET 10 in its interrogatory response, Applicant had early
`notice that SITE I/O was a distinct mark used for a hardware component of Liebert’s SITESCAN
`monitoring system and of Liebert’s intent to assert that mark.
`(See 0pposer’s Ex. 37, p. 2.) The
`mistake was corrected at Mr. Saliaris’ testimony deposition, with no objection by Applicant.
`(Saliaris Depo. 46:7-14).
`
`2 In opposition proceedings, it is permissible to rely on both registered marks and common-law
`marks. Burger Chef Systems,
`Inc. v. Burger Man,
`Inc., 492 F.2d 1398, 181 U.S.P.Q. 168
`(C.C.P.A. 1974).
`
`

`
`
`
`This analysis comports with T.T.A.B. precedent addressing the issue.
`
`In CPC Int 7, 218
`
`U.S.P.Q. at 380 (TTAB 1983), CPC opposed Seven~Up’s application for the mark “SKIP” for soft
`
`drinks.
`
`In its brief, CPC raised an additional, unpleaded basis for the opposition. Seven-Up
`
`objected, arguing that basis had not been pled and that they were thus not fairly apprised that CPC
`
`intended to raise this issue. Seven-Up, however, like Applicant in this case, had received notice of
`
`the issue through Opposer’s discovery and trial testimony. The Board thus deemed that the issue
`
`had been tried by consent because “[a]ppIicantfiIed no objection to opposer’s notice of reliance
`
`nor did it raise objection during the cross-examination of its witness on this issue.” Id. at 380
`
`(emphasis added). As in CPC, Applicant in this case was on notice of Liebert’s grounds for
`
`opposition through both discovery responses and trial testimony, and it never objected to the
`
`introduction of that testimony before filing its final brief. As such, Applicant consented to
`
`introduction of that evidence at trial and its objection is untimely. Id. ,' see also Avtex Fibers Inc. v.
`
`Gentex Corp, 223 U.S.P.Q. 625, 626 n. 3 (T.T.A.B. 1984) (holding that an unpleaded matter was
`
`tried by consent because opposer’s testimony was directed to the matter and applicant failed to
`
`timely object that such testimony was outside of the pleadings); Kasco Corp. v. Southern Saw
`
`Serv., Inc, 27 U.S.P.Q.2d 1501, 1504 (T.T.A.B. 1993) (holding that an unpleaded matter was tried
`
`by consent because party did not object when witness was questioned relating to that matter or
`
`when the issue was raised in directed verdict briefing).
`
`Many of Applicant’s cited cases do not support its argument, because, in those cases, the
`
`unpleaded grounds were not tried by consent of the parties. See Hilson Research Inc. v. Societyfor
`
`Human Resource Management, 27 U.S.P.Q.2d 1423, 1439-40 (T.T.A.B. 1993) (denying an
`
`allegation of abandonment because it had not been pled and was never tried, either expressly or
`
`implicitly, by the parties); Riceland Foods Inc. v. Pacific Eastern Trading Corp, 26 U.S.P.Q.2d
`
`5
`
`

`
`
`
`1883, 1884 (T.T.A.B. 1993) (only mark pleaded by the opposer and tried, either impliedly or
`
`expressly, was registered design mark and applicant had no notice that opposer intended to rely on
`
`use); Levi Strauss & Co. v. R. Josephs Sportswear, Inc., 28 U.S.P.Q.2d 1464, 1471 n. 11 (T.T.A.B.
`
`1993) (noting that the board could only decide the case on the only ground which was pleaded and
`
`tried); Robert Hall Clothes, Inc. v. Studds, 286 F.2d 615, 617, 128 U.S.P.Q. 542, 544 (C.C.P.A.
`
`1961) (holding the appellant could not raise unpleaded grounds because the court found no
`
`amendment in the record (either express or implied through trial by consent) that included the
`
`unpled grounds.)
`
`In summary, the Opposer may rely on each and every matter raised in its opening brief
`
`because 1) they were, in fact, alleged in the pleadings, 2) Applicant had ample notice of these
`
`grounds through discovery, and/or 3) these matters were tried with the parties’ consent.
`
`B.
`
`Liebert Has Established A Family Of “SITE” Marks
`
`Applicant’s next argument — that Liebert has failed to prove a family of “SITE” marks — also
`
`fails under the very test Applicant proffers. Under J & J Snack Foods Corp. v. McDonald '5 Corp.,
`
`932 F .2'.d 1460, 18 U.S.P.Q.2d 1889, 1891 (Fed. Cir. 1991), a family of marks merely requires that 1)
`
`the group of marks have a recognizable common characteristic, and 2) the marks are composed and
`
`used in such a way that the public associates not only the individual marks, but the common
`
`characteristic of the family, with the trademark owner. These are the only two requirements, and
`
`Liebert’s family of SITE marks meets them both. Applicant’s additional proffered elements are not
`
`part of the test, and are mainly irrelevant-
`
`

`
`
`
`Liebeifs family of “SITE” marks meets both aspects of the J & J Snack Foods test. First,
`
`Liebert undisputedly owns at least seven marks,3 each beginning with the formative “SITE”, all
`
`having two syllables (except SITE I/O), and all of which have been used in connection with Liebert’s
`
`monitoring systems — a narrow area of goods upon which Applicant’S goods directly impinge.
`
`Second, the evidence of record supports only Liebert’s assertion that the public associates the “SITE”
`
`marks for these goods with Liebert alone.
`
`(Saliaris Depo. 46:17-47:19; 50:10-23; 63:3-12; 64:12-
`
`66:13.) Applicant has not come forward with any independent evidence casting doubt on that
`
`testimony.
`
`Liebert’s internal and external documents also show that the marks are marketed and used
`
`together as a family. Liebert itself uses the related goods as a family, referring to them together as its
`
`“SITE” products.
`
`(See Opposer’s Ex’s. 38-44). Also,
`
`the evidence simply does not support
`
`Applicant’s allegations regarding Liebert’s promotion of the marks together. Since establishing its
`
`SITESCAN system components as independent “SITE” goods in 1995, such as SITELINK,
`
`SITEGATE, SITE I/O, and SITETRAP, Liebert has promoted and marketed these system
`
`components in combination with one another, particularly in combination with the SITESCAN mark,
`
`establishing them as part of Liebert’s SITE family of monitoring products.
`
`(Saliaris Depo. 46:18-
`
`47:19; 50:10-23; 54:11-21; 55:21-25; Ex. 4 (at LB00030), 10 (at LB00058), 13 (at LB 00091
`
`(referring to Liebert’s “Site Products”)) 30, 31, 33, 34 (at p. 9) (brochures and other marketing
`
`materials; showing use of various “SITE” marks in conjunction with the SITESCAN mark).
`
`Moreover, Applicant admits that Liebert has promoted and used the SITE marks in conjunction with
`
`one another.
`
`(Applicant’s brief at pp. 12, 14-15). Combined with the uncontroverted testimony that
`
`3 As discussed in Liebert’s opening brief, Liebert’s family of SITE marks includes at
`SITESCAN, SITEMASTER, SITENET, SITELINK, SITEGATE, SITE I/O, and SITETRAP.
`
`least
`
`

`
`
`
`Liebert’s customers and others in the monitoring field readily identify “SITE” monitoring products
`
`with Liebert alone, the lack of any similar marks in use for goods even remotely similar to Liebert’s
`
`monitoring products, and the undeniable probability that those in the facilities and equipment
`
`monitoring industry would believe that Applicant’s SITETRAK monitoring device is simply the next
`
`in Liebert’s line of “SITE” monitoring products, Liebert has established that it has a family of
`
`“SITE” marks for its monitoring systems and components.
`
`Liebert’s position is consistent with those cases finding a family of marks where, as here, a
`
`party sells a series of related goods using marks that contain a common characteristic. For example,
`
`in Marion Laboratories,
`
`Inc. v. Biochemical/Diagnostics, Inc., 6 U.S.P.Q.2d 1215 (T.T.A.B.
`
`1988), the Trademark Trial and Appeals Board found that Marion Laboratories had a family of
`
`marks, all using the prefix “TOXI-” for various products used in the clinical drug screening field,
`
`and refused registration of the Applicant’s mark “TOXI-PREP” for use on kits for in vitro drug
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`screening.
`
`Id. at 1220. The TTAB noted that, as here, the opposer’s “TOXI-” products (like
`
`“TOXI-TUBES” and “TOX1-DISCS”) were sold as components of the overarching “TOXI-LAB”
`
`drug detection system.
`
`Id. at 1217-18. Particularly pertinent to this case, however, was the
`
`TTAB’s emphasis that “the goods on which opposer uses the ‘TOXI-’ marks are all related to its
`
`drug detection system, whether as components, replacement supplies or informational materials,
`
`and thus purchasers are generally exposed to several of the marks at once and would be likely to
`
`associate the goods bearing the ‘TOXI-’ prefix with a common source." Id. at 1219 (emphasis
`
`added). As such, “applicant’s mark ‘TOXI-PREP’ [for similar goods] is likely to be perceived as
`
`another member of opposer’s family, and is thus likely to cause confusion.” Id. at 1220. This
`
`applies to the current situation,
`
`in which Liebert’s “SITE” marks are used for goods directly
`
`

`
`
`
`relating to,
`
`including components of,
`
`its overarching “SITESCAN” system. That system is
`
`marketed to consumers who would readily believe that Applicant’s SITETRAK component is the
`
`next component of Liebert’s SITESCAN system. (Saliaris Depo. 64:12-66:13.) This is especially
`
`‘true where, as here, Applicant admittedly designed and marketed its SITETRAK monitoring
`
`device to be connected to and used as a component of a third-party monitoring system
`
`(Schoenburg Depo. 47:14-51 :10), such as Liebert’s SITESCAN.
`
`In Dufljz-Mott Co. v. Borden, Inc., 201 U.S.P.Q. 846, 849 (T.T.A.B. 1978), the TTAB held
`
`that the opposer had a family of products with the suffix “MATO” for beverages that, like here,
`
`were promoted as companion products to one another. The Board then found a likelihood of
`
`confusion with applicant’s “TRUEMATO” mark.
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`Id. at 850. Applicant’s use of the “MATO”
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`formative, the Board opined, suggested to the public that another, related product was available
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`from the same origin.
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`Id.; see also AMF Inc. v. American Leisure Products, Inc. 177 U.S.P.Q.
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`268, 270 (C.C.P.A. 1973) (Reversing dismissal of opposition; opposer had a family of “FISH”
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`marks for sailboats, and applicant’s GOLDFISH mark for similar goods “would appear to many to
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`be a member of appellant’s family of marks”)
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`The legal authorities and the virtually uncontested evidence in this case strongly support a
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`finding that Liebert has a family of SITE monitoring products. Not only are Liebert’s SITE
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`products: all related to its monitoring systems, but consumers recognize SITE monitoring products
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`as originating from Liebert and would easily believe that Applicant’s SITETRAK monitoring
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`device is the newest installment of Liebert’s SITE line of monitoring systems and devices. This
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`fact alone makes clear that Liebert has a protectable family of SITE marks and that Applicant’s
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`admittedly interchangeable monitoring device is likely to be confiised with Liebert’s marks.
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`Motorola. Inc. v. Griffiths Electronics, Inc, 137 U.S.P.Q. 551, 553 (C.C.P.A. 1963) (an explicit
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`determination of whether opposer had a family of “GOLDEN” marks was unnecessary; “[i]n our
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`judgment, it is quite likely that at least a substantial number of purchasers or users of appellee’s
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`electron guns, grids, or the TV picture tubes bearing the labels indicating that they are incorporated
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`therein .
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`.
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`. would attribute origin to opposer. This is suflicient reason, under section 2(a9, for
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`denying registration”) (emphasis added).
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`Applicant’s citation of The Creamerte Co. v. Merlino, 299 F.2d 55, 132 U.S.P.Q. 381 (9th
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`Cir. 1962) is flawed. Applicant cites Creamette to add a non-existent requirement that before a
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`fam.ily of marks may be protected, the common formative cannot be able to be “used with a variety
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`of wholly dissimilar words.” As applied to cases like this, where Liebert uses the word “SITE” in
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`a variety of similar marks in the same field, that argument is nonsensical. The use of a common
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`formative with a variety of other dissimilar words for products in the same field is the essence of a
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`family of marks. If Applicant’s argument were the law, no family of marks could be protected
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`since any common formative could potentially be combined with an infinite amount of “wholly
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`dissimilar words.”
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`In addition, Applicant’s proffered interpretation of Creamette is at odds with the Federal
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`Circuit’s J&J Snack Foods decision, only highlighting that A_pplicant’s interpretation is incorrect.
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`J&J Snack Foods found that McDonalds had a “MC” family of marks. J & J Snack Foods, 932
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`F.2d 1460, 18 U.S.P.Q.2d at 1892 (“Third party registrations of various ‘Mc’ names does not defeat
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`Mc.Donald’s specific family of marks wherein the prefix ‘Me’ is used with generic food names to
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`create fanciful words") Under Applieanfs reading of Creamette, however, McDona.ld’s would have
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`lost. But J&J Snack Foods is binding precedent in the T.T.A.B.
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`Applicant mis-cites yet another case, Colony Foods, Inc. v. Sagemark Ltd., 735 F.2d 1336,
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`222 U.S.P.Q. 185 (Fed. Cir. 1984), in support of its claim that Opposer cannot have a family of
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`10
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`marks because it has not introduced expensive and unnecessary survey evidence. Colony Foods,
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`however, imposes no such requirement, but simply indicates that a survey is one of many types of
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`evidence through which a mark owner can establish that the public identifies a particular mark or
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`family of marks with a single source. Liebert has introduced ample, uncontroverted evidence of
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`that; the fact that such evidence is not in the form of a survey is irrelevant. See, e. g., Marion Labs,
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`6 U.S.P.Q.2d at 1220; AMF, 177 U.S.P.Q. at 269; Motorola, 137 U.S.P.Q. at 553 (examples of
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`many cases finding a family of marks with no mention of survey evidence).
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`Applicanfs other arguments dealing with factors above and beyond those required by the
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`Federal Circuit are irrelevant, contrary to the facts of this case, or both.‘ For instance, Applicant says
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`that several purportedly current registrations for marks containing the word “site” are somehow
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`evidence that Liebert has no “SITE” family of marks. A closer review of the evidence, however,
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`reveals that Applicar1t’s claims do not hold water. First, despite its incorrect claim to the contrary,
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`Applicant has presented absolutely no evidence that any of the referenced third-party registrations
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`have ever been used in commerce, much less the extent of that use. It is black letter law that the mere
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`registration of third-party marks is not evidence ofi and proves nothing as to their use. See AMF, 177
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`U. S.P.Q. at 269 (“The existence of these [third-party] registrations is not evidence of what happens in
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`the market place or that customers are familiar with them .
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`.
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`. .”); In re Albert Trosrel & Sons Co., 29
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`4 Applicant primarily relies upon the non-precedential, unpublished opinion in Polaroid Corp. v.
`PolaTech GmbH, 1996 T.T.A.B. Lexis 302 (T.T.A.B. Sep. 5, 1996) for its two arguments
`attempting to minimize the large advertising expenditures and sales volume for Liebert’s “SITE”
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`products.
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`(Applicant’s brief at 29-30.) However, citation of non-precedential decisions of the
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`Board is improper and such cases should be disregarded. See, e. g., Trademark Board Manual
`of Procedure § 101.03; General Mills Inc. v. Health Valley Foods, 24 USPQ2d (BNA) 1270,
`1275 n.9 (TTAB 1992); see also, e. g., In re American Olean Tile Co., 1 USPQ2d (BNA) 1823,
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`1825 (TTAB 1986) (“The two decisions not published in any form cannot, of course, be relied
`upon for any purpose. ”) (emphasis added).
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`11
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`U.S.P.Q.2d 1783, 1785-86 (TTAB 1993) (third party registrations are not evidence that the marks
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`shown therein are in commercial use, or that the public is familiar with them); J & J Snack Foods, 18
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`U.S.P.Q.2d. at 1892 (Federal Circuit discounted evidence of a “large number of ‘Me’ marks not
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`registered to McDonald’s’’ and found that Opposer had a family of marks containing the “Me”
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`formative.)
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`Second, even if Applicant had established the use of similar, third-party marks, the cited
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`marks are outside the field of Liebert’s and Applicant’s monitoring products.
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`(Saliaris Depo. 62:17-
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`63:2; 8] :l0~122:24). For example Applicant’s proffered registrations include the marks SITEVIEW
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`for “computer software for managing camp ground and trailer park reservations” (Applicant’s Ex. 28)
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`and. SITEMASTER for “electric roadway lighting fixtures” (Applicant’s Ex. 9), both of which they
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`claim are “used in Opposer’s field/market.” (Applicant’s brief at p. 17). Applicant tried to confront
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`Mr. Saliaris, Director of Liebert’s Monitoring Group and the person most familiar with Liebert’s
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`market for monitoring equipment and systems, with the registrations cited in Applicant’s brief, but
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`Mr. Saliaris made clear that the goods and services listed in those registrations did not fall within
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`Liebert’s market (Saliaris Depo. 81:10-122224)} Putting aside Applicant’s failure to prove that such
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`5 Applicant’s President, Mr. Schoenburg, who admittedly had no knowledge of Liebert’s market
`before this action, gave his strained interpretation of Applicant’s cited registrations in an attempt to
`show that such other registrations could also be confused with Liebert’s SITE family of products.
`Such assertions, however, have no bearing on the registration of Applicant’s mark. See AMF, 177
`U.S.P.Q. at 269 (the existence of confiisingly similar, third-party registrations may not be used to aid
`registration of a mark that is independently likely to cause confusion). In addition, Mr. Schoenburg’s
`testimony strains the limits of credibility, going so far as to testify, for example, that a Liebert
`monitoring customer “would be a likely customer of the mar ” SITESEER, a mark whose listed
`goods are in no way similar to Opposer’s or Applicant’s goods I markets.
`(Applicant’s brief at pp.
`17, 21; Applicant’s Exhibit 130). Such foundationless speculation should be given no weight.
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`12
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`marks are in use, even assumed use of such marks outside the parties’ common field is thus
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`irrelevant.‘
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`Even the single mark that Mr. Saliaris stated he would like to investigate further is simply not
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`enough to defeat Liebert’s well-established SITE family of marks because 1) despite Applicant’s
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`misstatements to the contrary, there is no evidence that mark has ever been used; 2) Applicant’s
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`goods are much closer to Liebert’s SITE monitoring goods than those listed in the proffered
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`registration; 3) it is undisputed that Liebert was not aware of that mark’s existence until Applicant
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`brought it up in this case (Saliaris Depo. 1l6:4—19); and 4) the existence of one or more third party
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`marks in the Opposer’s field containing the formative at issue is simply not enough to defeat a
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`finding of a family of marks. Marion Labs, 6 U.S.P.Q.2d at 1219 (third-party registration of
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`“TOXI-” mark in similar field was insufficient to affect opposer’s family of “TOXI-” marks);
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`Motorola, 137 U.S.P.Q. at 553 (desp