BULKY DOCUMENTS
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`(exceeds 300 pages)
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`Proceeding] Serial No: 91 1 5995 1
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`Filed: 08- 14-2006
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`Title: Opposer’s motion and Memorandum in
`Support of Summary Judgment
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`Part 1 of 2
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Opposition No. 91 159951
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`7é/M W7
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`) )
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`J.
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`L COMMUNICATIONS, INC.
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`Opposer,
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`V.
`NEXX, LLC
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`Applicant.
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`OPPOSER’S MOTION AND MEMORANDUM IN SUPPORT OF SUMMARY JUDGMENT
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`Opposer, Nextel Communications, Inc. (“Nextel”), by and through counsel, hereby moves the
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`Trademark Trial and Appeal Board (“the Board”) pursuant to Fed.R.Civ.P. 56 for summary judgment on
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`its Notice of Opposition against Nexx, LLC’s (“Nexx”) pending trademark application, Serial No.
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`76/404,829, for the NEXX mark used in connection with Applicant’s multi-level marketing business
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`services through which Applicant sells telecommunications services to the public.
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`I.
`/-‘
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`INTRODUCTION
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`Neitel, a subsidiary of Sprint Nextel Corporation,
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`is a leader
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`in providing wireless
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`telecommunications goods and services throughout
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`the United States under its famous NEXTEL
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`trademark. Nextel opposes the registration of Applicant’s NEXX mark, which Applicant uses in
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`connection with the sale of wireless telecommunications goods and services, based upon a likelihood of
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`confusion with the NEXTEL mark. Nextel will be harmed if Applicant’s mark is allowed to register.
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`As discussed more fully below, the pleadings, depositions, answers to interrogatories, admissions by the
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`parties and the Statement of Undisputed Material Facts, show that there is no genuine issue as to any
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`material facts relating to whether there is a likelihood of confusion between Opposer’s NEXTEL mark
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`and Applicant’s NEXX mark. Nor is there any genuine issue of fact that Applicant has failed to
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`properly recite its services in an explicit manner as required by Section 1 of the Lanham Act. As such,
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`WMWWWMMWWM
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`08-14-2006
`U.S. Patent & TMOfcITM Mail Rcpt Dt. #34
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`its application is void. On either ground, Opposer is entitled to summary judgment as a matter of law.
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`Opposer will show that there is no factual dispute that Nextel has priority of use; NEXTEL is a
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`famous mark; the marks are similar in sight, sound and meaning; Nextel and Nexx are both selling
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`wireless telecommunications services under their respective marks; both parties’ goods and services are
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`promoted to the general public; the parties’ goods and services travel in the same charmels of trade; and
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`the parties’ goods and services are sold to the same consumers.
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`Indeed, there is evidence in the record
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`that there have been instances of actual confusion where the public has confused Nexx’s products and
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`services with Nextel’s products and services.
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`(_Sge App1icant’s Answer to Interrogatory No. 23 and
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`Deposition of Carton, Exhibits M and L.) Further, Opposer will show that Applicant has presented no
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`evidence that contradicts any of these issues. As such, there are no material facts in dispute that would
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`prevent the Board from determining that there is a likelihood of confusion between the two marks.
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`Thus, summary judgment is fully appropriate in this matter.
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`II.
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`LEGAL STANDARD FOR SUMMARY JUDGMENT
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`Summary judgment is proper when there is no genuine issue of material fact, and the movant is
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`entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c); Anderson v. Liberty Lobby, Inc., 477 U.S.
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`242, 247; 106 S.Ct. 2505, 2509-10 (1986); Continental Can Co. USA Inc. v. Monsanto Co., 948 F.2d
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`1264, 1265 (Fed. Cir. 1991). A factual issue is “genuine” only if the evidence is such that a reasonable
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`fact finder could return a verdict for the non-moving party under the applicable substantive evidentiary
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`standard. Anderson, 477 U.S. at 254. Accordingly, it is the obligation of the non-moving party to “set
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`forth specific facts showing that there is a genuine issue for trial.” Fed.R.Civ.P. 56(e). The mere
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`identification of a dispute of fact will not necessarily defeat a motion for summary judgment if the fact
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`disputed is not essential to the determination sought by the summary judgment motion; a factual dispute
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`is material only if resolution of the dispute would affect the decision on the legal issue. Pure Gold Inc.
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`v. Syntex gU.S.A.), Inc., 739 F.2d 624, 636 (Fed. Cir. 1984). The Board should not deny summary
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`judgment “merely to satisfy a litigant’s speculative hope of finding some evidence that might tend to
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`support a complaint.” Pure Gold, 739 F.2d at 627. (Citing First National Bank v. Cities Services Co.,
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`391 U.S. 253, 290 (1968).
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`The Federal Circuit has held that the likelihood of confusion between two (2) marks is a question
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`of law to be decided by the Board; Weiss Associates Inc. v. HRE Associates Inc., 902 F.2d 1546, 1547
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`(Fed. Cir. 1990). Sfi al_s_Q Pure Gold, Inc. v. Syntex (USA. 1, Inc., supra, (likelihood of confusion is an
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`issue well-suited for summary judgment). Moreover, 37 C.F.R. § 2.116(a) makes Fed.R.Civ.P. 56
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`applicable to all inter partes proceedings before the Board.
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`To prevail on a claim of likelihood of confusion under Section 2(d) of the Trademark Act of
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`1946 before the Board, an opposer must show by a preponderance of the evidence that it has priority in a
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`valid trademark and that the opposed mark, when used with the services specified in the disputed
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`application, is likely to cause confusion or to cause mistake or to deceive the public. Baroid Drilling
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`Fluids, Inc v. Sun Drilling Products, 24 U.S.P.Q.2d 1048, 1052 (TTAB 1992). The standard to prevail
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`on a likelihood of confusion claim on summary judgment is even more stringent: the moving party must
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`show not merely a preponderance of the evidence, but that there is no genuine issue as to any material
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`fact that would defeat the moving party’s claim that it is entitled to judgment as a matter of law. Fed. R.
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`Civ. P. 56(c), Celotex v. Catrett, 477 U.S. 317 (1986); T.A.B. Systems v. PacTel Teletrac, 77 F.3d. 1.372,
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`37 U.S.P.Q.2d 1879, 1881 (Fed. Cir. 1996). In this proceeding, there is no genuine issue of any material
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`fact contrary to a finding of confusion between the two (2) marks.
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`III.
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`ARGUMENT
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`As demonstrated below and consistent with existing case law, there are no disputed material
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`facts that are necessary for a determination by the Board of likelihood of confusion or Applicant’s
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`failure to properly recite its services in its application. Accordingly, it is appropriate for the Board to
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`grant Opposer’s Motion for Summary Judgment and deny Application No. 76/404,829.
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`A.
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`The Board Should Grant Opposer’s Motion For Summag Judgment Because
`There Is A Likelihood Of Confusion Between Opposer’s NEXTEL Marks And
`Applicant’s NEXX Mark.
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`The Board should grant Opposer’s Motion for Summary Judgment because there is a substantial
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`likelihood of confusion between Opposer’s NEXTEL mark and Applicant’s NEXX mark under the
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`standards set forth in Application of E.I. DuPont DeNemours & Co. 476 F.2d 1357, 177 U.S.P.Q. 563
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`(C.C.P.A. 1973). The applicable standard for determination of the issue of likelihood of confusion in an
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`opposition proceeding is set forth in DuPont, supra.
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`In DuPont, the Court of Customs and Patent Appeals identified thirteen (13) evidentiary factors
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`that should be evaluated in determining whether a likelihood of confusion exists. As is clear from the
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`decision itself, these factors are not listed in order of merit. Rather the significance of each factor and its
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`relevance to subsequent cases varies from case to case. DuPont, 476 F .2d at 1361. As such, only those
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`factors most relevant to this case are discussed below. These factors are: (1) the similarity of the marks
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`as to appearance, sound, connotation and commercial impression; (2) the similarity of the services
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`offered in connection with the marks NEXX and NEXTEL; (3) the similarity of established, likely-to-
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`continue trade channels; (4) the fame of the NEXTEL mark; and (5) the existence of actual confusion.
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`DuPont, 476 F.2d at 1361. Each of these factors will be discussed in turn below.
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`Nextel Communications, Inc. Should Prevail in Its Opposition to Registration
`1.
`Because the Marks NEXTEL and NEXX Are Confusingly Similar.
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`The Board should grant summary judgment in Nextel’s favor because the marks NEXTEL and
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`NEXX are confusingly similar.
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`In evaluating whether marks are confusingly similar, the Board looks at
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`the entirety of the marks and compares the marks’ respective appearance, sound, connotation and
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`commercial impression. Centug 21 Real Estate Cogporation v. Centug 21 Life of America, 970 F.2d
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`874, 876; 23 U.S.P.Q.2d 1698 (C.A. Fed 1992).
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`It is beyond argument that the marks NEXTEL and
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`NEXX are similar in appearance, sound, and commercial
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`impression when used for comparable
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`communication services.
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`a.
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`The marks NEXTEL and NEXX are confusingly similar in
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`earance.
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`It is undisputed that the mark NEXX as shown in Application No. 76/404,829 includes the initial
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`letters NEX in identical order and spelling as Nextel’s Mark. Additionally, the font used by Nexx is
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`strikingly similar to the font used by Nextel. Further NEXX has adapted terms such as NEXX wireless
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`services and NEXX Connect which also tend to create an association with Opposer. Opposer submits
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`that the prefix NEX is the dominant part of both Opposer’s NEXTEL mark and Applicant’s NEXX mark
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`and, therefore, the likelihood of confusion is increased.
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`Specifically, the prefix NEX in both marks, as the first portion of both marks, “is most likely to
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`be impressed upon the mind of a purchaser and remembered.” Presto Products v. Nice-Pak Products, 9
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`U.S.P.Q.2d 1895, 1897 (T.T.A.B. 1988).
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`In Presto Products the Board found that the marks “KIDS
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`WIPES” and “KID STUFF” were confusingly similar, largely because they shared the same first word
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`“KID” which would be impressed upon and remembered by the consumer. Similarly, here the consumer
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`will be drawn to the prefix NEX as the first and dominant portion in the parties’ respective marks.
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`The prefix NEX is the dominant portion not only because it appears first, but also because it is
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`arbitrary and/or suggestive when applied to telecommunications goods and services. On the other hand,
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`the suffix TEL is arguably descriptive of those goods and services. Although there is no mechanical test
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`to select a “dominant” element of a compound word mark, consumers would be more likely to perceive
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`a fanciful or arbitrary term rather than a descriptive or generic term as the source-indicating feature of
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`the mark. Accordingly, if two marks for related goods or services share the same dominant feature and
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`the marks, when viewed in their entireties, create similar overall commercial impressions, then
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`confusion is likely. E In re J.M. Originals Inc., 6 U.S.P.Q.2d 1393 (TTAB 1987) (JM ORIGINALS
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`(with "ORIGINALS" disclaimed) for various items of apparel held likely to be confiised with JM
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`COLLECTABLES for "knitwear -- namely, sport shirts").
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`Where, as here, the dominant portion of both marks is identical, the likelihood of confusion
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`increases. E Nina Ricci, S.A.R.L. v. E.T.F. Enterprises, Inc., 889 F.2d 1070, 1073, 12 U.S.P.Q.2d
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`1901, 1903 (Fed. Cir. 1989) (ETF’s use of the word “RICCI” as part of its mark “VITTORIO RICCI”
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`held confusingly similar to registrant’s “NINA RICCI” and related “RICCI” marks and that “RICCI”
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`was the unifying and dominant portion of registrant’s marks). Moreover, where the dominant portion of
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`the marks is the same, peripheral differences will not avoid a likelihood of confusion. fig In re Riddle,
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`225 U.S.P.Q. 630 (TTAB 1985) (RICHARD PETTY’S ACCU TUNE held confusingly similar to
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`ACCUTUNE). This is especially true where the peripheral differences are merely descriptive. E Injre
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`California Pizza Kitchen, supra. Applicant cannot avoid a likelihood of confusion with Opposer’s
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`NEXTEL mark simply by excluding TEL from its mark. This difference between the marks is minor
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`when looking at the marks as a whole. As such, there is a significant likelihood that, when viewing both
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`95 (6
`marks in commerce — where the words, “telecommunication, wireless service” or “phone service” are
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`present - a customer will be confused as to the source or sponsorship of the goods sold in connection
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`therewith.
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`b.
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`The marks NEXTEL and NEXX are confusingly similar in sound and
`pronunciation.
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`Additionally, the similarity in the sound and pronunciation of trademarks is an important factor
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`in determining a likelihood of confusion. DuPont, 476 F.2d at 1361; Kenner Parker Toys, Inc. V. Rose
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`Art Industries Inc., 963 F.2d 350, 22 U.S.P.Q.2d 1453, 1457 (Fed. Cir. 1992).
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`In Kenner Parker, the
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`Federal Circuit concluded that given the similarity in the sounds of the respective marks, the marks were
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`confusingly similar. S_e§ Kenner Parker, 22 U.S.P.Q.2d at 1457.
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`In that case, the Federal Circuit held
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`that
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`identical pronunciation of the
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`single-syllable suffixes DOH (“Play-D0h”) and DOUGH
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`(“Fundough”) led to the “graphic confusability” of the two terms. Kenner Parker, 22 U.S.P.Q.2d at
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`1457. Likewise, in the present case, there can be no dispute that the letters NEX are pronounced the
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`same way. Such similarity in sound is further evidence of the confusing similarity of the marks at issue.
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`It follows that such identical pronunciations would lead to the same confusability, and likelihood of
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`confusion, that was present in Kenner Parker.
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`c.
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`The marks NEXTEL and NEXX create a similar commercial
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`impression.
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`It is also significant that the parties’ respective marks create the same commercial impression.
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`R, 476 F.2d at 1361, 177 U.S.P.Q. at 567. Commercial impression is “occasionally used as a
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`proxy for the ultimate conclusion of similarity or dissimilarity of marks resulting from a comparison of
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`their appearance, sound, and meaning.” Palm Bay Imps, Inc. V. Veuve Clicguot Ponsardin Maison
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`Fondee En 1772, 396 F.3d 1369, 1372 (Fed. Cir. 2005). The court in Hewlett-Packard Co. v. Packard
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`Press
`lnc., 281 F.3d 1261, 1266-67 (Fed. Cir. 2002) found that although the marks PACKARD
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`TECHNOLOGIES and HEWLETT PACKARD differed in appearance and sound, they conveyed a
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`similar commercial
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`impression because consumers would be aware of Hewlett-Packard’s heavy
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`involvement
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`in technology-based goods and,
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`therefore,
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`the marks were similar in their entireties.
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`Similarly, in Morton-Norwich Prods.
`Inc. v. S.C. Johnson & Son lnc., 531 F.2d 561, 562 (C. C.P.A.
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`1976) the court held that RAINFRESH was confusingly similar to RAIN BARREL given the close
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`relationship of the goods and “similarity of commercial impressions.”
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`Here, Applicant’s NEXX mark creates a similar commercial impression with customers. The
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`parties’ use of the identical NEX prefix as the dominant portion of the respective marks in connection
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`with identical services (sag below) is likely to create the identical commercial impression. Both parties
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`use NEX in connection with pictures of cell phones, handsets and the word ‘telephone” for products in
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`the same or similar industry. As such, they create the same commercial impression. (E copies of
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`Applicant’s advertising materials attached hereto as Exhibit J.) Moreover, Applicant’s use of its NEXX
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`mark as a prefix in connection with the sale of its telecommunications services has included, but not
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`been limited to, the terms NEXXWIRELESS and NEXXCONNECT. These phrases clearly show that
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`Applicant is using and intends to use the NEX portion of its mark in the context of gecommunications
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`descriptors such as “wireless” and “connect” to create the same commercial impression as the NEXTEL
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`mark. Therefore, the Board should find that this factor weighs in favor of granting summary judgment
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`for Opposer.
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`2.
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`The Parties’ Respective Goods and Services are Virtually Identical.
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`The similarity or dissimilarity of the parties’ respective services is also relevant to whether there
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`is a likelihood of confusion. D_ul_’_<11_t, 177 U.S.P.Q.2d at 567. E a1s_o J.C. Hall Company v. Hallmark
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`Cards, Incogporated, 340 F.2d 960, 963, 144 U.S.P.Q. 435, 438 (C.C.P.A. 1965). This factor strongly
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`favors Opposer.
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`It is not necessary for the services of Opposer and Applicant to be identical for a likelihood of
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`confusion to exist. Safety—Kleen Co1_‘p. v. Dresser Industries, Inc., 518 F.2d 1399, 1404, 186 U.S.P.Q.
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`476, 480 (C.C.P.A. 1975); W.E. Kautenberg Co. v. Ekco Products Company, 251 F.2d 628, 631, 116
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`U.S.P.Q. 417, 419 (C.C.P.A. 1958) (ECKO as applied to kitchen utensils held confusingly similar to
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`WECKO as applied to mops and related products). Here, however, it is undisputed that Opposer’s
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`services gt; identical
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`to the services Applicant uses in connection with its NEXX mark, (ii,
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`telecommunications goods and services).
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`There is no factual dispute based on the record before the Board that Applicant’s services are
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`identical to Opposer’s goods and services. Notwithstanding the fact that the recitation of services in
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`Application Serial No. 76/404,829 is for multi-level marketing services, the goods and services offered
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`by Applicant under its NEXX mark are telecommunications services. Specifically, Applicant is not
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`selling know-how respecting “multi-level marketing systems” for others to implement.
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`Instead, it sells
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`telecommunications goods and services to the general public under its NEXX mark through multi-level
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`marketing i._e_. (representatives solicit customers to buy telephones then get others to buy, etc.). Thus,
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`Applicant is offering goods and services to the public under its NEXX brand that are identical to
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`NEXTEL’s goods and services. The fact that NEXX employs a “multi-level marketing system” on
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`selling its phone services does not differentiate the similarity of the goods and services at issue here.
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`Qwest Communications International, Inc. v. Onegzwest, LLC, 2002 U.S. Dist. LEXIS 25469. That
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`“multi-level marketing” is in a different class than telecommunications in no way avoids a finding of
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`likelihood of confusion.
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`As pointed out by the Federal Circuit in Jean Patou, Inc. v. Theon, Inc,. 9F .3d 971, 29
`U.S.P.Q.2d 1771, It is elementary that a registrant has rights under the statute only with
`respect to goods on which the trademark has been used. Trademark ownership results
`only from use, not from registration. Classification is to facilitate searching for registered
`marks which is primarily what is meant by “the convenience of the” PTO. See $9 37
`CFR § 2.85(g) (“Classification schedules shall not limit or extend the applicant’s rights”)
`(attachment omitted.)
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`Applicant has conceded on numerous occasions that its services are substantially comprised of
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`the sale of telecommunications goods and services to the general public. (_S_e_e Applicant’s advertising
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`materials attached hereto as Exhibit J.)
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`Thus, there is no question that the parties’ goods and services offered in connection with their
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`respective NEXTEL and NEXX marks are identical. Therefore, consumers are likely to be confused by
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`Applicant’s use of its NEXX mark.
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`3.
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`The Similarity of the Parties’ Respective Trade Channels Increases the
`Likelihood of Confusion Between Applicant’s Mark and Opp0ser’s Mark.
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`If the users of two (2) similar marks also use similar trade channels to advertise their goods and
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`services, there is a greater likelihood of confusion between the two (2) marks. DuPont, 476 F.2d at
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`1361, 177 U.S.P.Q.2d at 567; Fleischmann Distilling Com. V. Maier Brewing Company, 314 F.2d 149,
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`161 (9th Cir. 1963).
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`Opposer and Applicant use the same channels of trade for the promotion and sale of their
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`respective goods and services. For the purposes of a likelihood of confusion analysis, Applicant is
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`presumed to use all normal and customary channels of trade.
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`In re Southern Belle Frozen Foods Inc.,
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`48 U.S.P.Q.2d 1849 (TTAB 1998) (TTAB held that it must “presume that registrant’s packaged cooked
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`meals include goods of all such types sold in all normal channels of trade for those goods...”)
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`(Emphasis added).
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`In fact, Applicant and Opposer both promote their services through identical
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`channels of trade. The Federal Circuit has stated that sharing of distribution channels among similar
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`marks enhances the likelihood of confusion of those marks. Century 21, 970 F.2d at 877, 23 U.S.P.Q.2d
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`at 1700.
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`In this case, the parties’ use of substantially identical channels of trade increases the likelihood
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`of confusion. Specifically, both Applicant and Opposer actively promote and sell their respective goods
`and services through the intemet by use of their websites. (E printouts of www.nextel.com and
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`www.sprint.com attached hereto as Exhibit D, and printouts of www.nexx.net attached hereto as Exhibit
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`K.) In addition, both parties utilize direct sales techniques.
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`In response to Opposer’s Interrogatory No.
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`15, Applicant stated that it uses direct sales in connection with the sale of its goods and services, through
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`its “warm customer sales.” (fig Applicant’s responses to interrogatories attached hereto as Exhibit N.)
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`In fact, Applicant produced specimens of “door knob” hangers and other direct advertising where the
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`mark NEXX is used to sell telecommunications goods and services directly to the consumer.
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`(gee
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`specimens of direct advertising attached hereto as Exhibit J). Similarly, Opposer utilizes direct to
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`consumer advertising such as direct mailers to promote and sell its goods and services. (E specimens
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`of Opposer’s direct advertising attached hereto as Exhibit E).
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`Finally, both parties promote and
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`advertise their goods and services in connection with their respective marks in media advertising.
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`(S_ee_
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`Applicant’s responses to Interrogatories Nos. 15 and 17 attached hereto as Exhibit M and Opposer’s
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`specimens of advertising attached hereto as Exhibits F and G.)
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`As such, it is clear that the parties utilize the same charmels of trade to promote and sell identical
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`goods and services in connection with confusingly similar marks.
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`4.
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`The Opposer’s Mark Is Famous and Therefore Entitled to a Broad Scope of
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`Protection.
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`Since 1988, Opposer has continuously and extensively used its mark in interstate commerce in
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`connection with telecommunications goods and services.
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`It has garnered substantial notoriety in
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`association with its telecommunications services and is currently the third largest cellular telephone
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`company in the United States. (See newspaper articles and advertising materials Exhibit A). Nextel
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`operates hundreds of company-owned and licensed retail stores nationwide offering telecommunications
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`products and services. Opposer’s customers are located in all 50 states, the District of Columbia, Puerto
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`Rico and the territories.
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`(_S§§ Nextel ’s Annual Report attached hereto as Exhibit B). Millions of
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`consumers are exposed to the NEXTEL mark every day through print advertisements in national
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`newspapers, television and radio commercials, sponsorship of NASCAR and other professional sporting
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`events, in-store displays, brochures, billboards, catalogs and signage. Between the period of 2002 and
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`2005, Nextel spent more than One Hundred Million Dollars ($l00,000,000.00) in advertising its
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`telecommunications services. Also, Nextel and Sprint operate Internet websites that prominently display
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`the Nextel mark and are regularly visited by many thousands of customers weekly. As such, the
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`NEXTEL mark has become famous and distinctive and should therefore be entitled to a broad scope of
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`protection.
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`Fame of an Opposer’s mark plays a “dominant role in the process of balancing the DuPont
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`factors.” Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1327 (Fed. Cir. 2000 2. Famous marks enjoy a wide
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`latitude of legal protection since they are more likely to be remembered and associated in the public
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`mind than weaker marks. Thus, they are more attractive as targets for would-be copyists. ILL Further, as
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`the fame of a mark increases, the degree of similarity between the marks necessary to support a
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`conclusion of likely confusion declines. Bose Coggoration v. QSC Audio Products Inc., 293 F. 3d 1367,
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`63 U.S.P.Q.2d 1303 (Fed. Cir. 2002).
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`The Federal Circuit has stated repeatedly that there is no excuse for even approaching the well-
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`known trademark of a competitor inasmuch as “[a] strong mark casts a long shadow which competitors
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`must avoid.” Kenner Parker Toys ,963 F.2d at 353. There is no doubt that Applicant is a competitor to
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`Opposer. (g Exhibit J, Example 1) Applicant’s use of its NEXX mark in connection with its
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`telecommunications services and goods clearly will deceive, cause confusion or mistake within the
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`public’s mind as to the source or origin of Applicant’s goods.
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`5.
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`Registration Should Be Denied Because Actual Confusion In The Market
`Place Already Exists
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`Summary judgment is also appropriate in this proceeding due to the existence of actual consumer
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`confusion between the parties’ respective marks. Historically, a showing of actual confusion is
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`unnecessary in order to establish likelihood of confusion. Weiss Associates Inc. v. HRL Associates Inc.,
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`14 U.S.P.Q.2d 1840, 1842-43 (Fed. Cir. 1990). However, when actual confiasion does exist, it is very
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`potent evidence thereof. In fact, even a single instance of confusion has been held "illustrative of how
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`and why confusion is likely." Molenaar, Inc. v. Happy Toys Inc., 188 U.S.P.Q. 469 (TTAB 1975).
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`Generally, the Courts agree that "[t]here can be no more positive or substantial proof of the likelihood of
`
`confusion than proof of actual confusion." World Carpets, Inc. v. Dick Littrell’s New World Carpets,
`
`168 U.S.P.Q. 609 (5th Cir. 1971); see gsp In re Majestic Distilling C0,, Inc., 65 U.S.P.Q.2d 1201 (Fed.
`
`Cir. 2003) ("A showing of actual confusion would of course be highly probative, if not conclusive, of a
`
`high likelihood of confusion); Tools USA and Eguipment Co. v. Champ Frame Straightening Eguipment
`
`Co., 39 U.S.P.Q.2d 1355 (4th Cir. 1996) ("evidence of actual consumer confusion ‘is patently the best
`
`evidence of likelihood of confusion"').
`
`Here, Applicant has admitted awareness of several instances of actual market place confusion
`
`between the marks at issue. (Sfi Excerpt of Deposition of Christopher Carton at page 21, lines 8 - 20
`
`attached hereto as Exhibit L.) Specifically, multiple consumers have contacted Applicant when in fact
`
`looking for Opposer's goods and services. (See Applicant’s Response to Opposer’s First Set of
`
`Interrogatories attached hereto as Exhibit M.) The occurrence of this actual confusion is proof that
`
`future confusion also remains likely, Intern., Inc. v. Trek Bicycle Corp, 64 U.S.P.Q.2d 1564 (9th Cir.
`
`12
`
`

`
`2002). Since consumers have been actually confused between the NEXTEL and NEXX marks, a
`
`likelihood of confusion has already been established in this case. Based on the reasoning above, this
`
`evidence of actual confusion can only weigh heavily in Opposer's favor for purposes of granting
`
`summary judgment.
`
`B.
`
`Applicant's NEXX ITU Application For "Multi-level Marketing Services" Does Not
`Authorize It To Sell All Products and Services Under The NEXX mark
`
`Section 1(b)(3)(D) of the Lanham Act requires that the application for registration include a
`
`verified statement specifying that,
`
`to the best of the verifier’s knowledge and belief, no other person has the right to use
`such mark in commerce either in the identical form thereof or in such near resemblance
`
`thereto as to be likely, when used on or in connection with the goods of such other
`person, to cause confusion, or to cause mistake, or to deceive.
`
`As a matter of law, Applicant cannot meet this requirement since it is undisputed that it intends
`
`to offer and is currently offering, telecommunications services not specified in the Application and
`
`Applicant knows of other purveyors of telecommunications services that sell such services under marks
`
`that are in near resemblance to Applicant's mark. Further, TMEP § 1402.01 requires that:
`
`[a] written application must specify the particular goods or services on or in connection
`with which the applicant uses, or has a bona fide intention to use, the mark in commerce.
`(citing § 1051 (a)(2) and 1051(b)(2); 37 C.F.R § 2.32(a)(6). To specify means to name
`in an explicit manner." (Emphasis added.)
`
`Here, it is admitted that the Applicant offers telecommunications services and that “Applicant
`
`offers it multi-level marketing business services for all goods/and or services than can be profitably
`
`marketed. . . .”2 In addition, Applicant admits that it uses its NEXX mark “in close proximity to the
`
`telecommunications services it markets.”3 Thus, it is clear that Applicant intends to sell goods and
`
`services under the NEXX mark that are not explicitly identified by use of the phrase "multi-level
`
`2 Applicant’s Answer to Averment 14.
`3 Id. Averment 4.
`
`13
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`

`
`marketing services." Accordingly, the Opposition should be sustained because Applicant has failed to
`
`properly recite its services in an explicit manner as required by Section 1 of the Lanham Act.
`
`Throughout
`
`this proceeding, Applicant has insisted that
`
`its specification of "multi-level
`
`marketing business services" authorizes it to sell all manner of goods and services under its NEXX
`
`mark. As Applicant admits, it intends to sell anything that it profitably can under its NEXX trademark
`
`including, but not limited to, telecommunications services. However, no registration for such multi-
`
`level marketing services also automatically gives the owner the right to sell the underlying services
`
`under the mark. For generations, retailers have specified explicitly the goods they intended to sell at
`
`retail if they intended them to be covered by their trademarks. Sears, Wal-Mart, JC Penney et al have
`
`very specific registrations for the goods they intend to sell under their brands. They do not simply rely
`
`on a registration for retail services. Indeed, applications for retail services without identification of the
`
`products to be sold are routinely rejected. Similarly with advertising services, an ad agency cannot
`
`necessarily sell the goods it advertises for others under the ad agency’s own mark unless those goods are
`
`also specified in the ad agency applications. In fact, review of the trademark register respecting the
`
`marks of Amway, the leader in multi-level marketing services, shows that Amway, like other retailers,
`
`specifies with particularity the goods and services it sells under its mark in accordance with the
`
`requirements of TMEP § 1401.
`
`However, Applicant is attempting to avoid the requirement to specify its goods and services
`
`explicitly. It is clear that Opposer, having standing to the challenge the Application, can “raise any legal
`
`defect or deficiency in the application.” McCarthy on Trademarks § 20:13, p. 20-28, citing Community
`
`ofRoguefort v. Santo, 443 F2d. 1196, 170 U.S.P.Q. 205 (C.C.P.A. 1971)
`
`Summary judgment is appropriate to resolve whether Applicant's NEXX ITU application for
`
`"multi-level marketing services" is sufficiently explicit under the requirements of TMED § 1401.
`
`14
`
`

`
`IV.
`
`CONCLUSION
`
`For the foregoing reasons, the Board should grant the Opposer’s Notice of Opposition and deny
`
`the registration of the mark NEXX.
`
`Respectfully submitted by Nextel Communications, Inc.
`
`By: Edward W. Gray, Jr., Esquire
`Sherri N. Blount
`
`Christopher George
`Morrison & Foerster LLP
`
`2000 Pennsylvania Ave., NW
`Suite 5500
`
`Washington, D.C. 20006-1888
`
`Attorneys for Opposer
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 14”‘ day of August, 2006, the foregoing OPPOSER’S
`
`MOTION FOR SUMMARY JUDGMENT and MEMORANDUM IN SUPPORT OF
`
`OPPOSER’S MOTION FOR SUMMARY JUDGMENT, with STATEMENT OF
`
`UNDISPUTED MATERIAL FACTS and Exhibits, are being hand delivered in an envelope
`
`addressed to the Trademark Trial and Appeal Board, U.S. Patent and Trademark Office, P.O.
`
`Box 1451, Alexandria, VA 22313-1451 and that a copy of the above Motion, Memorandum and
`
`Exhibits are being deposited with the United States Postal Service as First-Class Mail, postage
`
`prepaid, in a separate envelope to the following address:
`
`Nicholas A. Perrino, Esquire
`Corporate Counsel
`Nexx, LLC
`3291 N. Buffalo Drive
`
`Las Vegas, NV 89129
`
`Attorney for Applicant
`
`dc-4601 14
`
`?§1w1.d2a/*
`
`Sherri N. Blount
`
`Morrison & Foerster LLP
`
`2000 Pennsylvania Ave., NW
`Suite 5500
`
`Washington, DC 20006
`
`Attorney for Opposer
`
`

`
`TABLE OF AUTHORITIES
`
`CASES
`
`Anderson v. Liberty Lobby, Inc.,
`477 U.S. 242, 106 S.Ct. 2505 (1986) ......................................................................................... ..2
`
`Application ofE.I. DuPont DeNemours & Co.,
`476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973) ............................