Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA502036
`ESTTA Tracking number:
`10/25/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91202367
`Defendant
`Acronis International GmbH
`GEORGE S BARDMESSER
`BARDMESSER LAW GROUP
`1025 CONNECTICUT AVENUE NW, SUITE 1000
`WASHINGTON, DC 20006
`UNITED STATES
`george@bardmesserlaw.com
`Motion for Summary Judgment
`GEORGE S. BARDMESSER
`george@bardmesserlaw.com
`/GB/
`10/25/2012
`2282.0740000 summary judgment motion cutepdf.pdf ( 103 pages )(8275035
`bytes )
`
`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Ivan Permyakov
`
`Opposer
`
`Acronis Inc.
`
`Applicant
`
`v.
`
`Opposition No. 91202367
`
`MOTION FOR SUMMARY JUDGMENT
`
`NOW COMES Applicant Acronis, Inc., by and through its attorneys, and submits this
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`Motion for Summary Judgment. As supported by Applicant’s memorandum in support of this
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`motion, Applicant hereby seeks summary judgment as a matter of law regarding the following
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`issues as to which there is no genuine dispute of material facts:
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`1. Opposer lacks standing to oppose the registration of Applicant’s trademark;
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`2. Opposer cannot possibly show a likelihood of confusion as a matter of law between
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`his mark and Applicant’s mark.
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`Accordingly, Applicant Acronis, Inc. respectfully requests that the Board grant its motion
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`for summary judgment and dismiss Opposer’s opposition in its entirety.
`
`Dated: October 25, 2012
`
`By:
`
`/s/
`George S. Bardmesser
`Attorney for Applicant Acronis, Inc.
`Bardmesser Law Group
`1025 Connecticut Avenue, N.W., Suite
`1000
`Washington, DC 20006
`Phone: 202-293-1191
`Fax: 505-213-5750
`george@bardmesserlaw.com
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Ivan Permyakov
`
`Opposer
`
`Acronis Inc.
`
`Applicant
`
`v.
`
`Opposition No. 91202367
`
`MEMORANDUM IN SUPPORT OF APPLICANT’S MOTION FOR SUMMARY
`JUDGMENT
`
`Applicant Acronis Inc. and its successor-in-interest Acronis International GmbH, by and
`
`through its attorneys, hereby submits its memorandum in support of its Motion for Summary
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`Judgment and requests that, in light of the below arguments and evidence, the Board should find
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`there is no genuine issue of material facts and as a matter of law Opposer Ivan Permyakov lacks
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`standing to bring the opposition and, even if he had standing, Opposer cannot show a likelihood
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`of confusion.
`
`I.
`
`Facts
`
`Applicant Acronis Inc. and its successor-in-interest Acronis International GmbH
`
`(hereinafter “Applicant” or “Acronis”) is a software product and service provider, specializing in
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`effective backup and restoration of computer data and programs. Exh. A at ¶ 3 (Declaration of
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`Dmitri Joukovski). Acronis is a recognized leader in this field, with over 175,000 customers in
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`more than 90 countries. Id. at ¶ 4. On May 24, 2011, Acronis filed an application with the
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`United States Patent and Trademark Office to register its VMPROTECT trademark on an intent-
`
`to-use basis in International Class 009: “Computer software for backup and recovery of virtual
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`machines; computer software for database imaging, virtual machine imaging, and disk imaging;
`
`computer software for snapshot generation, backup, and disaster recovery; computer software for
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`

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`virtual machine backup and recovery, including migration from a physical machine to a virtual
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`machine” (the “Acronis Mark”). See Exh. B (VMPROTECT Trademark/Service Mark
`
`Application, Principal Register).
`
`On October 4, 2011, the Acronis Mark registration was published for opposition. See
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`Exh. C (Notice of Publication). On October 31, 2011, Opposer Ivan Permyakov, an individual,
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`was granted a 30 day extension to file his opposition to the registration of the Acronis Mark. See
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`Exh. D (Extension of Time to Oppose is Granted). Opposer filed his opposition on November 1,
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`2011 and supplemented the Notice of Opposition on December 11, 2011. See Exh. E (Notice of
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`Opposition and Supplement).
`
`Opposer brings his opposition on grounds that there is a likelihood of confusion between
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`the product sold by the Applicant under the Acronis Mark (hereinafter, “Acronis’ Product”) and
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`a product (hereinafter “IYP IP Company Product”) sold under the VMPROTECT mark
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`(hereinafter, the “IYP IP Company Mark”) not by Opposer himself as an individual, but instead
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`by the company “Ivan Yurevich Permaykov, IP”. See Exh. E; Exh. F at 9:3-11 (Deposition
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`Transcript of Ivan Permyakov):
`
`Q: And the name of the company is Ivan Yurevich Permyakov, IP?
`A: Yes, it is.
`Q: And since 2004, you’ve been doing business under that name, Ivan Yurevich
`Permyakov, IP?
`A: Yes.
`
`In addition, as admitted by Opposer, the two companies’ products are different, serve
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`different functions, and are sold to different markets. Acronis’ Product is software which
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`enables users to backup and recover data. Exh. A at ¶ 5. The IYP IP Company Product, on the
`
`other hand, is designed to protect computer code including from cracking and analysis. See Exh.
`
`E (the IYP IP Company Product is described as “[c]omputer software for protecting applications,
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`libraries and drivers; computer software for virtualizing the code to prevent its cracking and
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`2
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`

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`analysis; computer software to add a serial number verification to other applications.”); Exh. G
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`(IYP IP Company Website) (accessed on October 19, 2012) (“VMProtect protects code by
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`executing it on a virtual machine with non-standard architecture that makes it extremely difficult
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`to analyze and crack the software.”).
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`II.
`
`A.
`
`Argument
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`Standard of Review
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`As the Federal Circuit Court of Appeals held in Brand Mgmt. v. Menard, Inc., 1998 U.S.
`
`App. LEXIS 493, 5-6 (Fed. Cir. Jan. 14, 1998):
`
`Summary judgment is proper where the movant establishes that there are no
`genuine issues of material fact, and the movant is entitled to judgment as a matter
`of law. Fed. R. Civ. P. 56(c). A genuine issue of material fact exists if there is a
`dispute of fact, the disputed fact is material to the outcome of the case, and the
`dispute is genuine, that is, a reasonable jury could return a verdict for either party.
`See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247, 91 L. Ed. 2d 202, 106 S.
`Ct. 2505 (1986). The moving party has the burden of proving that summary
`judgment is proper. See Adickes v. S.H. Kress & Co., 398 U.S. 144, 157, 26 L. Ed.
`2d 142, 90 S. Ct. 1598 (1970). When considering a motion for summary
`judgment, a court should construe all evidence in favor of the non-moving party.
`Anderson, 477 U.S. at 247. However, if evidence submitted by the non-moving
`party is merely colorable or is not significantly probative, summary judgment may
`be granted. Id. at 249-50.
`
`Furthermore, when evaluating the opposing party’s arguments:
`
`The court may not simply accept a party’s statement that a fact is challenged.
`Union Carbide Corp. v. American Can Co., 724 F.2d at 1571, 220 U.S.P.Q. at
`588 [Fed. Cir. 1984]. The party opposing the motion must point to an evidentiary
`conflict created on the record at least by a counter statement of a fact or facts set
`forth in detail in an affidavit by a knowledgeable affiant. Mere denials or
`conclusory statements are insufficient.
`
`Barmag Barmer Maschinenfabrik AG v. Murata Machinery, Ltd., 731 F.2d 831, 836, 221
`
`U.S.P.Q. (BNA) 561, 564 (Fed. Cir. 1984).
`
`B.
`
`Because Opposer Permyakov Cannot Show That He Has Standing, His
`Opposition Must Be Dismissed
`
`3
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`

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`In matters before administrative agencies such as the Patent and Trademark Office, an
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`opposer’s standing is determined by construing the statute that confers standing before the
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`agency. Ritchie v. Simpson, 170 F.3d 1092, 1095 (Fed. Cir. 1999). Because the dispute at hand
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`is an opposition to trademark registration, the relevant statutory provision is § 13 of the Lanham
`
`Act, which provides:
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`Any person who believes that he would be damaged by the registration of a mark
`upon the principal register may, upon payment of the prescribed fee, file an
`opposition in the Patent and Trademark Office, stating the grounds therefor . . . .
`
`15 U.S.C. § 1063.
`
`Although by its terms § 13 of the Lanham Act is broadly applied, see Ritchie, 170
`
`F.3d at 1095 (“the statute only requires that a person have a belief that he would suffer
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`some kind of damage if the mark is registered”), an opposer must also have a real interest
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`in the proceedings and a reasonable basis for his belief of damage. Ritchie, 170 F.3d at
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`1095. As a matter of law, Opposer Permyakov cannot show either.
`
`1.
`
`Opposer Permyakov Cannot Meet The “Real Interest” Test And
`Cannot Show That He Has “Reasonable” Belief Of Damage
`
`Opposer Permyakov is the wrong party to bring this Opposition. Under the “real
`
`interest” test, an opposer must have a legitimate personal interest in the opposition in order to
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`have standing to oppose the trademark registration. See Lipton Industries, Inc. v. Ralston Purina
`
`Co., 670 F.2d 1024, 1029 (C.C.P.A. 1982). “In other words, the opposer must have a direct and
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`personal stake in the outcome of the opposition.” Ritchie, 170 F.3d at 1095. The opposer must
`
`also show a reasonable belief that he will be damaged should applicant’s trademark be
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`registered. 15 U.S.C. § 1063.
`
`“. . . [T]he ‘belief of damage’ required by § 13 of the Lanham
`
`Act is more than a subjective belief. . . The belief must have a ‘reasonable basis in fact.’”
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`Ritchie, 170 F.3d at 1098 (citing Universal Oil Products Co. v. Rexall Drug & Chemical Co.,
`
`4
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`

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`463 F.2d 1122, 1124 (C.C.P.A. 1972)). Because Opposer Permyakov does not sell and has not
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`sold any goods which compete with Acronis’ Product, and cannot show that he has a reasonable
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`belief that he will be harmed by the registration of the Acronis Mark, his opposition must be
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`dismissed.
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`In the Notice of Opposition, Opposer Permyakov, identifying himself as an individual,
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`opposes registration of Applicant’s Mark under Section 2(d) of the Lanham Act and explains that
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`“[w]e’ve been selling the software with the same name (VMProtect) since 2004, so Acronis’
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`Product’s name confuses our customers,” and “I sell software with the same name for more than
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`7 years.”
`
`See Exh. E. However as his deposition testimony and documents clearly and
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`repeatedly show, Opposer Permyakov himself has never sold the software which serves as the
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`basis for his opposition to the registration of Applicant’s Mark. Instead, the software, and all
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`intellectual property rights associated with the software, is owned and has always been owned by
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`a Russian company, Ivan Yurevich Permyakov, IP (the “IYP IP Company”).
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`By his own admission, Opposer Permyakov does not sell the product upon which he
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`bases his opposition to registration of Applicant’s Mark. Instead, the IYP IP Company Product
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`is sold by the IYP IP Company. Opposer Permyakov is apparently an employee and shareholder
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`in that company. During his deposition, Opposer Permyakov stated that he registered the IYP IP
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`Company, and began doing business under the same in 2004. See Exh. F at 9:3-11:
`
`Q: And the name of the company is Ivan Yurevich Permyakov, IP?
`A: Yes, it is.
`Q: And since 2004, you’ve been doing business under that name, Ivan Yurevich
`Permyakov, IP?
`A: Yes.
`
`5
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`

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`Opposer Permyakov registered and began operating under the IYP IP Company in order to take
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`advantage of favorable tax policies offered to companies by the Russian Federation and to allow
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`for easier invoicing. Exh. F at 7:21-9:5:
`
`Q: So in other words, you register as a legal entity or as a company for tax reasons?
`A: That’s one of the reasons.
`. . .
`Q: So if I understand correctly, it is easier for a buyer to send -- for you to send invoices
`to buyers of your software if you’re registered as a company, correct?
`A: Yes, of course.
`
`Prior to the formation of the IYP IP Company, Opposer Permyakov had not sold any software
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`products in his capacity as an individual. See Exh. F at 7:8-11:
`
`Q: So you started getting involved with – professionally with software when you
`registered your company which was in 2004?
`A: Yes.
`
`IYP IP Company Product has only been distributed by the IYP IP Company. See id. at 12:4-7:
`
`Q: And in 2006, you started actually selling it, correct?
`A: We started selling that, according to the documents we have.
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`(i.e., according to the invoices from Plimus, Inc. and PayPro Global, discussed below). See also
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`Id. at 18:4-9:
`
`Q: Since 2004, all of the sales and distributions of the VMProtect product have been by
`your company, right?
`A: Yes, it is [sic].
`
`Similarly, the www.vmpsoft.com domain, which advertises and distributes IYP IP Company
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`Product, is registered to the IYP IP Company, not to Opposer Permyakov. See Exh. H (WHOIS
`
`information for <vmpsoft.com>); Exh F at 39:10-13:
`
`Q: So Exhibit 2 is a registration for the domain VMPSoft.com to your company, Ivan
`Permyakov, IP; is that correct?
`A: Yes.
`
`Consistent with these statements, documents produced by Opposer Permyakov in
`
`response to Applicant’s discovery requests irrefutably show that the IYP IP Company, not
`
`6
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`

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`Opposer Permyakov, distributes the Product. For instance, invoices issued by Plimus, Inc., a
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`distributor/reseller, to customers in the United States are issued on behalf of the IYP IP Company
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`and identify the IYP IP Company as the supplier of the Product. See Exh. I (Invoices from
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`Plimus, Inc.); Exh. F at 40:9-13:
`
`Q: Exhibit 5 is an invoice from Plimus, one of the resellers of your company’s products,
`also to a listing supplier as Ivan Yurevich Permyakov, IP, correct?
`A: Yes, of course.
`
`Similarly, the distribution agreement for the sale of the Product by PayPro Global, Inc., another
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`software distributor/reseller, was entered into between PayPro Global, Inc. and the IYP IP
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`Company. See Exh. J (PayPro Global, Inc. Distribution Agreement); Exh. F at 39:14-19:
`
`Q: Exhibit 3 is the agreement between PayPro Global, one of the resellers of your
`company’s product in the United States, and is between your company, Permyakov, Ivan
`Yurevich, IP, and PayPro Global, correct?
`A: Yes.
`
`Opposer Permyakov cannot point to single piece of evidence to demonstrate that he – as
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`an individual – has any intellectual property rights in IYP IP Company Product, the basis for his
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`opposition. However, “[t]he party opposing the motion must point to an evidentiary conflict
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`created on the record at least by a counter statement of a fact or facts set forth in detail in an
`
`affidavit by a knowledgeable affiant. Mere denials or conclusory statements are insufficient.”
`
`Barmag Barmer Maschinenfabrik AG, 731 F.2d 831 at 836, 221 U.S.P.Q. (BNA) at 564.
`
`Essentially, Opposer Permyakov’s entire opposition rests on several unsubstantiated statements
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`in his Notice of Opposition claiming that he owns and distributes IYP IP Company Product.
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`However, his own testimony directly contradicts that assertion. In light of the evidence
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`presented by Applicant in this motion for summary judgment, Opposer Permyakov cannot rely
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`on these untrue and self-serving statements. Simply put, Ivan Permyakov is the wrong party to
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`bring this Opposition.
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`7
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`

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`In light of the above, Opposer Permyakov cannot show that he has either real interest in
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`the opposition or a reasonable belief, based in fact, that he will suffer damage should Applicant’s
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`Mark be registered. Opposer Permyakov’s role here is akin to an employee or stockholder of
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`Microsoft Corp. filing an opposition to a trademark registration in his personal capacity on the
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`basis that, as a Microsoft Corp.’s stockholder, he has interest in the opposition and would be
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`harmed by the registration of the trademark.
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`It does not appear that the Board has ever
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`interpreted standing so broadly. See Stoller v. Ponce, 113 Fed. Appx. 403, 406 (Fed. Cir. 2004)
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`(“Mr. Stoller, however, submitted no admissible evidence that could demonstrate that he has a
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`real interest in the registration of the STEALTH SHELF trademark. In the absence of any
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`evidence demonstrating Mr. Stoller’s interest, the Board did not err in finding that he failed to
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`establish his standing to oppose Ms. Ponce’s registration.”).
`
`As demonstrated above, Opposer Permyakov clearly has no standing to bring the current
`
`Opposition.
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`C.
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`Even If He Had Standing, Opposer Permyakov Cannot Show a Likelihood of
`Confusion Between the Acronis Mark and the IYP IP Company Mark
`
`Opposer Permyakov brings this opposition on the grounds that a likelihood of confusion
`
`exists between Acronis’ Product and IYP IP Company Product under Section 2(d) of the Lanham
`
`Act. However, by Opposer’s own admission, IYP IP Company Product is entirely dissimilar
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`from Acronis’ Product, is sold to different classes of sophisticated consumers in different trade
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`channels than Acronis’ product. Neither Acronis’ customers nor IYP IP Company’s customers
`
`buy the products as impulse purchases. In addition, IYP IP Company Mark is not famous, and
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`any actual confusion – if it exists at all – is de minimis at best. These facts indisputably
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`demonstrate that Opposer cannot possibly show a likelihood of confusion as a matter of law.
`
`8
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`

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`“It is the opposer’s burden to establish facts sufficient to support the conclusion that
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`confusion, mistake, or deception is likely.” Bridgestone Ams. Tire Operations, LLC v. Fed.
`
`Corp., 673 F.3d 1330, 1333 (Fed. Cir. 2012). In re E.I. duPont de Nemours & Co., 476 F.2d
`
`1357, 177 USPQ 563 (CCPA 1973) enumerated thirteen evidentiary factors to be considered in
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`determining likelihood of confusion. See Kellogg Co. v. Pack’Em Enters., 951 F.2d 330, 332
`
`(Fed. Cir. 1991). These factors are not listed in order of merit and each may play a dominant
`
`role, “from case to case.” In re E. I. Du Pont de Nemours & Co., 476 F.2d at 1361-1362. The
`
`Du Pont factors relevant herein are:
`
`(2) The similarity or dissimilarity and nature of the goods or services as described
`in an application or registration or in connection with which a prior mark is in use.
`
`(3) The similarity or dissimilarity of established, likely-to-continue trade
`channels.
`
`(4) The conditions under which and buyers to whom sales are made, i.e.
`“impulse” vs. careful, sophisticated purchasing.
`
`(5) The fame of the prior mark (sales, advertising, length of use).
`
`. . .
`
`(7) The nature and extent of any actual confusion.
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`(8) The length of time during and conditions under which there has been
`concurrent use without evidence of actual confusion.
`
`In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973).
`
`1.
`
`Acronis’ Product Is Critically And Admittedly Different From The
`IYP IP Company Product
`
`As described in Applicant’s trademark application and as distributed in the marketplace,
`
`Acronis’ Product is critically and admittedly different from IYP IP Company Product.
`
`Essentially, Acronis’ Product is software designed and used for backup and recovery of virtual
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`machines. See Exh. A at ¶ 5; Exh. B (“Computer software for backup and recovery of virtual
`
`machines; computer software for database imaging, virtual machine imaging, and disk imaging;
`
`computer software for snapshot generation, backup, and disaster recovery; computer software for
`
`9
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`

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`virtual machine backup and recovery, including migration from a physical machine to a virtual
`
`machine.”). Acronis’ Product is designed to backup and recover virtual systems in preparation
`
`for or to mitigate the damages caused by system crashes. See Exh. A at ¶ 5. IYP IP Company
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`Product is entirely different in purpose and functionality. It uses virtualization to protect
`
`software code from tampering and analysis. As described in Opposer’s Notice of Opposition,
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`IYP IP Company Product is designed “for protecting applications, libraries and drivers . . .
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`virtualizing the code to prevent its cracking and analysis . . . to add a serial number verification
`
`to other applications.” See Exh. E. This is unrelated to anything that Acronis’ product does –
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`and is well-understood by anyone purchasing the product.
`
`Notably, Opposer Permyakov himself admits that IYP IP Company Product is entirely
`
`different in nature from Acronis’ Product. Exh. F at 24:21-25:19 (emphasis added):
`
`Q: So your product, your company’s product, does not do backups, correct? That’s not
`its purpose.
`
`A: Yes, it does -- no, it doesn’t. Our product and their product differ completely,
`according to the functionality.
`
`Q: So just so it’s clear in the transcript. Acronis’ Product and your company’s product
`have completely different functionality, correct?
`
`A: Yes.
`
`Q: And Acronis’ Product and your company’s product have completely different
`purposes, correct?
`
`A: Yes.
`
`This is a critical admission. Opposer himself does not see any similarity in the
`
`functionality between IYP IP Company Product and Acronis’ Product. Moreover, Opposer
`
`admits that buyers of IYP IP Company Product are aware of the different functionalities of the
`
`two products. See Exh. F at 26:18-21:
`
`Q: And as far as you know, people, buyers of Acronis software and buyers of your
`software, are aware of this?
`A: I think so, yes.
`
`10
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`

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`2.
`
`Both Acronis’ Product and IYP IP Company Product Are Sold To
`Sophisticated Consumers
`
`Both Acronis’ Product and IYP IP Company Product are sold to sophisticated consumers
`
`who are expected to exhibit great care prior to purchasing the products. Acronis’ Product is sold
`
`to information technology industry professionals (typically, to IT managers); it is not intended
`
`nor is it typically purchased or used by general consumers. See Exh. A ¶ at 6. Similarly, IYP IP
`
`Company Product is marketed and sold to different sophisticated computer industry
`
`professionals, namely software developers. See Exh. F 14:11-17:
`
`Q: Who buys this software and why do they buy it? Who is a typical buyer of the
`[Opposer] VMProtect product?
`A: They are the developers of the software.
`Q: So the typical buyer [of IYP IP Company’s product] is a software developer, correct?
`A: Yes, it is correct.
`
`Such sophisticated consumers would be expected to exercise great care prior to
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`purchasing either Acronis’ or IYP IP Company Product, which would necessarily reduce the
`
`likelihood of confusion. See Coach Servs. v. Triumph Learning LLC, 668 F.3d 1356, 1371 (Fed.
`
`Cir. 2012) (“. . . Board found that educational professionals are likely to exercise a high level of
`
`care in making purchasing decisions, which would minimize likelihood of confusion.”). “When
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`goods are sold to consumers that exercise care there is less chance that confusion will occur.” PC
`
`Club v. Primex Techs., Inc., 32 Fed. Appx. 576, 579 (Fed. Cir. 2002); see also Magnaflux Corp.
`
`v. Sonoflux Corp., 43 C.C.P.A. 868, 871, 231 F.2d 669 (1956) (confusion is less likely where the
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`goods are expensive and are purchased after careful consideration than when they are
`
`inexpensive); Palm Bay Imps. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
`
`1369, 1376 (Fed. Cir. 2005) (“Purchaser sophistication may tend to minimize likelihood of
`
`confusion.”). “The risk of likelihood of confusion is increased, however, when the products are
`
`relatively low-priced and subject to impulse buying because purchasers are held to a lesser
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`11
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`

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`standard of purchasing care.” Recot, Inc. v. Becton, 214 F.3d 1322, 1329 (Fed. Cir. 2000) (citing
`
`Kimberly-Clark Corp. v. H. Douglas Enter. Ltd, 774 F.2d 1144, 1146, 227 U.S.P.Q. (BNA) 541,
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`542 (Fed. Cir. 1985)).
`
`The relatively high price point of both Acronis’ and IYP IP Company Product similarly
`
`cuts against a finding of a likelihood of confusion. Through its website, customers can purchase
`
`one copy of Acronis’ Product, namely vmProtectTM
`
`8, for $599.00. See Exh. K (Acronis, Inc.’s
`
`Website). IYP IP Company Product is similarly priced, ranging from $129.00 to $599.00 for
`
`various versions of the software. See Exh. G. These are clearly price points that require a fair
`
`amount of thought and consideration on behalf of a purchaser. A computer industry professional
`
`would not spend hundreds of dollars on a product without engaging in significant research
`
`beforehand to determine the source, purpose and effect of the product. Opposer Permyakov
`
`himself admitted that purchase of IYP IP Company Product is not done on impulse. Exh. F at
`
`18:21-19:10:
`
`Q: So the buyers of your company’s products do not buy this [i.e., IYP IP Company’s
`product] as an impulse purchase, correct?
`A: Yes, because it’s not fun or game. It’s a serious product for the developers of the
`software. And beforehand, software developers are evaluating their needs and the
`qualities of the product.
`Q: So in other words, before the buyers buy your company’s product, they carefully study
`its functionality and capabilities, correct? . . .
`A: Yes.
`
`Accordingly, in light of the high price point of both Acronis’ and IYP IP Company Products and
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`the high level of sophistication of users of the products, the Board should find that the facts
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`clearly show that this factor also cuts against a finding of a likelihood of confusion.
`
`3.
`
`Acronis’ Products and IYP IP Company Products are Sold to
`Different Classes of Consumers
`
`Acronis’ Product and IYP IP Company Product are also sold to different groups of
`
`consumers. See Frehling Enterprises, Inc. v. International Select Group, Inc., 192 F.3d 1330,
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`1339 (11th Cir. 1999) (“‘Dissimilarities between the retail outlets for and the predominant
`
`customers of plaintiff’s and defendant’s goods lessen the possibility of confusion, mistake, or
`
`deception.’ . . . This factor takes into consideration where, how, and to whom the parties’
`
`products are sold,” quoting Amstar Corp. v. Domino’s Pizza, Inc., 615 F.2d 252, 262 (5th Cir.),
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`cert. denied, 449 U.S. 899, 66 L. Ed. 2d 129, 101 S. Ct. 268 (1980)). Acronis’ Product is
`
`marketed and distributed to professionals in the information technology industry, primarily to
`
`corporate customers. See Exh. A at ¶ 7. The IYP IP Company Product, on the other hand, is
`
`marketed and distributed to an entirely different class of consumers, namely software developers.
`
`See Exh. F 14:11-21:
`
`Q: Who buys this software and why do they buy it? Who is a typical buyer of the
`VMProtect product?
`A: They are the developers of the software. . . . Any developers. Whoever who needs
`such a method of protection for their software.
`
`Critically, an IT manager who buys Acronis’ product would have little use for IYP IP Company
`
`Product. Acronis typically sells its product to corporate IT managers who need to backup data –
`
`not develop software. Exh. A at ¶ 7.
`
`Therefore, the dissimilarity of classes of consumers also cuts against a finding of a
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`likelihood of confusion.
`
`4.
`
`Applicant’s Product and IYP IP Company’s Product Are Sold
`Through Different Trade Channels
`
`Acronis’ Product and IYP IP Company’s Product are sold through different trade
`
`channels, which also weighs against a finding of a likelihood of confusion. See Cortex Corp.,
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`1993 U.S. App. LEXIS 16041 (Fed. Cir. June 21, 1993) (Finding a difference in trade channels
`
`to be probative of a lack of likelihood of confusion). Acronis’ Product is sold directly to
`
`consumers through its website – where any buyer can clearly see the source of the product. See
`
`Exh. K. IYP IP Company’s Product, on the other hand, is sold through resellers such as Plimus,
`
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`Inc. and PayPro Global, Inc. See Exh. I; Exh. J. Upon information and belief, the IYP IP
`
`Company’s Product is not sold directly through the IYP IP Company’s website. This difference
`
`is critical in the light of the other factors herein which cut against a finding of a likelihood of
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`confusion. See Mr. Hero Sandwich Systems, Inc. v. Roman Meal Co., 781 F.2d 884, 889 (Fed.
`
`Cir. 1986) (Difference in trade channels between products sold through “grocery stores” and
`
`“fast food restaurants”, coupled with a lack of actual confusion, led the court to find that there
`
`was no likelihood of confusion”). Accordingly, the difference in trade channels used to sell the
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`products also favors a finding of a lack of a likelihood of confusion.
`
`5.
`
`No Actual Confusion
`
`“Although proof of actual confusion is not necessary to show likelihood of confusion, its
`
`absence in this case strongly reinforces the conclusion compelled by the other relevant Du Pont
`
`factors.” Cortex Corp. v. W.L. Gore & Assocs., 1993 U.S. App. LEXIS 16041, 7-8 (Fed. Cir.
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`June 21, 1993). “‘A reasonable juror may . . . find de minimis evidence of actual confusion
`
`unpersuasive as to the ultimate issue of likelihood of confusion’ because trademark infringement
`
`is only actionable when a mark is likely to ‘confuse an appreciable number of people as to the
`
`source of the product.’”). Nautilus Group, Inc. v. Icon Health & Fitness, Inc., 372 F.3d 1330,
`
`1338 (Fed. Cir. 2004) (quoting Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1150-51 (9th
`
`Cir. 2002)). Acronis’ Product has been sold and marketed since August 2011. Exh. A at ¶ 8.
`
`Nevertheless, despite producing over 28,000 documents during discovery and despite Applicant
`
`requesting that Opposer produce all documents in Opposer’s possession that support Opposer’s
`
`contention that “Acronis product’s name confuses [Opposer’s] customers,” Opposer Permyakov
`
`has pointed to a single German e-mail as the entirety of the evidence of actual confusion – an
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`email purportedly sent by a German national to the IYP IP Company looking for Acronis’
`
`Product. See Exh. L; Exh. F at 44:2-5 (Permyakov admitting that the email was received from
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`Germany). Opposer can point to no other evidence of actual confusion in the United States (or
`
`anywhere else). Indeed, during deposition Opposer Permyakov admitted that he “cannot be sure
`
`that there are any other e-mails” expressing actual confusion. See Exh. F at 42:20-43:1; 45:16:
`
`Q: . . . My question is actually very simple. Other than this e-mail from a guy in
`Germany, do you have any other document that proves that any one person in the United
`States was ever confused?
`A: As far as I know, I don’t have any letters requesting some Acronis product from the
`United States, but I’m not sure that on the Acronis company there are any evidence that
`our consumers wanted to buy their product, including from the United States.
`Q: Okay. So you’re saying that -- if I understand correctly, you’re saying that Acronis
`might have documents that proves it, but you don’t have any documents?
`A: Yes, I can say this. . .
`
`One solitary e-mail in the course of a year is plainly insufficient to constitute anything more than
`
`de minimis confusion – if that. See Nautilus Group, Inc., 372 F.3d at 1338 (Fed. Cir. 2004) (“We
`
`agree with ICON that the relatively small number of calls presented by Nautilus renders this
`
`evidence too unreliable to establish actual confusion.”). The record is otherwise utterly devoid
`
`of any other instances of actual confusion. Consequently, this factor should also be weighed in
`
`favor of the Applicant.
`
`6.
`
`The IYP IP Company Mark Is Not Famous
`
`The IYP IP Company Mark is not famous, or even well-known. “The fame of the
`
`opposer’s mark plays a ‘dominant role in the process of balancing the DuPont factors,’ for well
`
`known marks are more likely to be associated in the public mind with the reputation of the
`
`source.” Bridgestone Ams. Tire Operations, LLC v. Fed. Corp., 673 F.3d 1330, 1334 (Fed. Cir.
`
`2012) (quoting Recot Inc., 214 F.3d at 1327) (citation omitted). A famous mark is one that has
`
`“extensive public recognition and renown.” Coach Servs., 668 F.3d at 1367 (quoting Bose Corp.
`
`v. QSC Audio Prods. Inc., 293 F.3d 1367, 1371 (Fed. Cir. 2002)).
`
`Fame for purposes of likelihood of confusion is a matter of degree that “varies
`along a spectrum from very strong to very weak.” Palm Bay, 396 F.3d at 1375
`(quoting In re Coors Brewing Co., 343 F.3d 1340, 1344 (Fed. Cir. 2003)).
`
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`Relevant factors include sales, advertising, length of use of the mark, market
`share, brand awareness, licensing activities, and variety of goods bearing the
`mark. Recot, 214 F.3d at 1326; see also Bose, 293 F.3d at 1371 (“[O]ur cases
`teach that the fame of a mark may be measured indirectly, among other things, by
`the volume of sales and advertising expenditures of the goods traveling under the
`mark, and by the length of time those indicia of commercial awareness have been
`evident.”). The party asserting that its mark is famous