Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA710350
`ESTTA Tracking number:
`11/23/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91210148
`Defendant
`Xoom Energy, LLC
`J MARK WILSON
`MOORE & VAN ALLEN PLLC
`100 N TYRON ST, STE 4700
`CHARLOTTE, NC 28202-4003
`UNITED STATES
`katecole@mvalaw.com, markwilson@mvalaw.com, jeffreygianelli@mvalaw.com
`Motion for Summary Judgment
`Kathryn G. Cole
`katecole@mvalaw.com, jeffreygianelli@mvalaw.com, minarkim@mvalaw.com,
`markwilson@mvalaw.com
`/Kathryn G. Cole/
`11/23/2015
`Motion and Memorandum.pdf(347812 bytes )
`Ex. A.pdf(175698 bytes )
`Ex. B.pdf(219759 bytes )
`Exs. C-F.pdf(3017515 bytes )
`Ex. G.pdf(776464 bytes )
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91210148
`
`) ) ) ) ) ) ) ) ) ) )
`
`XOOM CORPORATION,
`
`Opposer,
`
`v.
`
`XOOM ENERGY, LLC,
`
`Applicant.
`
`APPLICANT XOOM ENERGY, LLC’S
`MOTION FOR SUMMARY JUDGMENT
`
`Pursuant to 37 C.F.R. § 2.127, Rule 56 of the Federal Rules of Civil Procedure, and Section
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`528 of the Trademark Trial and Appeal Board Manual of Procedure, Applicant Xoom Energy, LLC,
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`by and through its undersigned counsel, hereby respectfully moves for summary judgment. In
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`support of this Motion, Xoom Energy submits the accompanying Memorandum and supporting
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`documents.
`
`Respectfully submitted,
`
`/Kathryn G. Cole/
`J. Mark Wilson
`Kathryn G. Cole
`Moore & Van Allen PLLC
`Suite 4700
`100 North Tryon Street
`Charlotte, NC 28202-4003
`Telephone (704) 331-1000
`Facsimile (704) 339-5981
`
`Attorneys for Applicant Xoom Energy, LLC
`
`

`
`CERTIFICATE OF SERVICE
`
`I certify that the foregoing APPLICANT XOOM ENERGY, LLC'S MOTION FOR SUMMARY
`JUDGMENT was served on Opposer by mailing a copy of same by U.S. first class mail, postage
`prepaid, addressed as follows:
`
`Rochelle D. Alpert
`Morgan Lewis & Bockius LLP
`One Market, Spear Street Tower
`San Francisco, CA 94105
`
`Attorneys for Opposer Xoom Corporation
`
`Date: November 23, 2015
`
`/Kathryn G. Cole/
`Kathryn G. Cole
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91210148
`
`) ) ) ) ) ) ) ) ) ) )
`
`XOOM CORPORATION,
`
`Opposer,
`
`v.
`
`XOOM ENERGY, LLC,
`
`Applicant.
`
`APPLICANT XOOM ENERGY, LLC’S MEMORANDUM IN SUPPORT OF
`MOTION FOR SUMMARY JUDGMENT
`
`Pursuant to 37 C.F.R. § 2.127, Rule 56 of the Federal Rules of Civil Procedure, and Section
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`528 of the Trademark Trial and Appeal Board Manual of Procedure, Applicant Xoom Energy, LLC
`
`(“Applicant”) respectfully submits this Memorandum in support of its Motion for Summary
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`Judgment. Applicant moves for entry of summary judgment on the grounds that there are no genuine
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`disputes of material fact regarding the claim of likelihood of confusion asserted in this proceeding by
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`Opposer Xoom Corporation (“Opposer”). For this reason, Applicant respectfully submits that, as a
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`matter of law, summary judgment must be entered in Applicant’s favor.
`
`I.
`
`INTRODUCTION
`
`Opposer and Applicant are vastly different companies, offering wholly different goods and
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`services under their respective XOOM-formative marks. As reflected by its allegations in this
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`proceeding and the recitations of goods and services in Opposer’s asserted trademark and service
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`mark registrations, Opposer uses its alleged XOOM mark in commerce solely in connection online
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`and electronic money transfer goods and services. Notice of Opposition (“Opp.”) ¶¶ 1-3. In contrast,
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`and as shown in the recitation of goods and services in Applicant’s opposed trademark application,
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`Applicant seeks registration of its XOOM ENERGY mark for use in connection with electrical
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`

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`energy and natural gas goods and services. Opp. ¶ 8. Other than their common use of the term
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`“xoom” in connection with their offering of goods and services, the single thing these two companies
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`have in common is that they, like countless other companies, use computer software as a vehicle
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`through which they provide their completely distinct goods and services.
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`Opposer brought this over-reaching opposition proceeding with the apparent belief that its
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`use of the mark XOOM in connection with money transfer goods and services provides it with the
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`right to exclude any other entity from using that mark in connection with any type of good or service.
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`The law does not support Opposer’s position. As the Board is aware, similarity of the marks at issue
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`is but one factor in the multi-factor likelihood of confusion analysis. For that reason, the Board
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`routinely enters summary judgment in favor of an applicant even where the applicant’s mark is
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`identical to the opposer’s mark. This proceeding is no different. The disparity between the parties’
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`goods and services weighs so heavily against a finding of likelihood of confusion that there can be no
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`genuine dispute as to any material fact related to Opposer’s claim. For this reason, summary
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`judgment must be entered in Applicant’s favor.
`
`II.
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`RELEVANT FACTUAL BACKGROUND
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`A.
`
`Applicant’s Business and Application
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`Applicant is a third party energy supplier.1 Specifically, Applicant provides electricity and
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`natural gas solutions exclusively in states with a deregulated energy market.2 To secure its brand,
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`Applicant filed U.S. Trademark Application Serial No. 85/335,647 (“Application”) on June 1, 2011,
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`seeking to register the mark XOOM ENERGY for use in connection with the following goods and
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`services:
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`Electrical energy and natural gas (International Class 04);
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`Computer software and software applications for remotely managing the operation of
`heating and cooling systems, thermostats, lighting, appliances and other residential
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`1 See Printout of Support Section from Applicant’s Website, APP010928 (attached hereto as Exhibit A).
`2 See Printout of About Us Section from Applicant’s Website, APP010922 (attached hereto as Exhibit B).
`
`2
`
`

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`and commercial equipment; electric control devices for energy management and for
`controlling the operation of heating and cooling systems,
`thermostats,
`lighting,
`appliances and other residential and commercial equipment; photovoltaic solar
`modules and solar panels for production of electricity; solar batteries; solar cells;
`programmable controllers and actuators that track the sun enabling concentrating
`optics to maximize solar energy input (International Class 09);
`
`Solar light fixtures, namely, indoor and outdoor solar powered lighting units and
`fixtures; solar energy based cooling apparatus; solar energy based heating apparatus;
`solar water heaters (International Class 11);
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`services, namely, arranging, organizing, promoting and
`Energy management
`conducting an energy demand response program in which an energy customer is
`compensated for
`the right
`to reduce the energy customer’s energy or gas
`consumption; and conducting energy audits of
`residential, commercial and
`institutional facilities for the purpose of improving energy efficiency (International
`Class 35);
`
`Extended warranty services, namely, service contracts; providing extended warranties
`on heating, cooling, lighting, and environmental control systems and devices, on solar
`energy systems and alternative energy products, on electric control devices for energy
`management and for controlling the operation of heating and cooling systems,
`thermostats, lighting, appliances and other residential and commercial equipment, and
`on heating and cooling systems, thermostats, lighting, appliances and other residential
`and commercial equipment (International Class 36); and
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`Repair and installation of solar energy systems and alternative energy products for
`residential and commercial use;
`repair and installation services, namely,
`the
`installation of heating, cooling, lighting, and environmental control systems and
`devices (International Class 37).
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`As clearly described in the recited goods and services, the Application is solely directed to
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`energy and natural gas goods and services. Following publication of the XOOM ENERGY mark on
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`December 11, 2012, Opposer filed a Notice of Opposition on April 9, 2013, alleging likelihood of
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`confusion and false suggestion of a connection. Opp. ¶¶ 14-15.
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`B.
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`Opposer’s Business and Asserted Registrations
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`Opposer does not use its XOOM mark in commerce in connection with energy or natural gas
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`goods or services. There is no evidence in this case to suggest that Opposer has any commercial
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`connection to any aspect of the energy utility market. Furthermore, through its discovery responses,
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`Opposer has expressly limited its rights in the alleged XOOM mark to those arising from use in
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`3
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`

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`connection with the goods and services reflected in its asserted registrations, which are all related to
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`money transfer. In Applicant’s Interrogatory No. 1 to Opposer, Applicant requested the following:
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`“For each of Opposer’s Cited Marks, identify each and every good and service on or in connection
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`with which Opposer has used or uses the mark in commerce.”3 “Opposer’s Cited Marks” was
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`defined as “the marks cited by Opposer as the bases for its opposition, namely, the marks reflected in
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`U.S. Registration Nos. 2,909,931, 4,012,337, and 4,226,418, and any marks alleged to be protected
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`by common law.”4 In response to Applicant’s Interrogatory No. 1, Opposer stated: “[T]he
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`information requested is reflected in the registrations Opposer attached to the Complaint.”5
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`Opposer’s asserted registrations, U.S. Service Mark Nos. 2,909,931; 4,012,377; and U.S. Trademark
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`No. 4,226,418 (collectively, the “Registrations”), recite the following goods and services, all related
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`to money transfers:
`
`Mark:
`Reg. No.:
`Services:
`
`XOOM
`2,909,931
`Providing business information, namely on, money transfer services
`(International Class 35).
`Money transfer services; electronic funds transfer services; bill
`payment remittance services; electronic payment, namely, electronic
`processing and transmission of bill payment data (International Class
`36).
`
`Mark:
`Reg. No.:
`Services:
`
`XOOM
`4,012,377
`Providing a web site featuring temporary use of non-downloadable
`software for providing information on money transfers, and for
`facilitating money transfers, electronic funds transfers, bill payment
`remittances and electronic processing and transmission of bill
`payment data (International Class 42).
`
`Mark:
`Reg. No.:
`Goods:
`
`XOOM
`4,226, 418
`Computer software for facilitating money transfer services, electronic
`funds transfer services, bill payment remittance services, electronic
`
`3 Applicant’s First Set of Interrogatories, Interrogatory No. 1 (attached hereto as Exhibit C).
`4 Applicant’s First Set of Requests for Production of Documents and Things, p. 3 (attached hereto as Exhibit D).
`5 Opposer’s Objections and Responses to Applicant’s First Set of Interrogatories, Interrogatory No. 1 (attached
`hereto as Exhibit E).
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`4
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`

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`processing and transmission of payments and payment data
`(International Class 09).
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`Pursuant to these Registrations, Opposer uses its XOOM mark in connection with a very
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`short menu of money transfer goods and services, which, according to Opposer, enable individuals to
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`send and receive money domestically and internationally, using their smartphone or Opposer’s
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`website.6
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`C.
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`Procedural History
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`In opposing registration of Applicant’s Application, Opposer alleged that registration of the
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`XOOM ENERGY mark for use in connection with the electrical energy and natural gas goods and
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`services recited in the Application would damage Opposer by creating a likelihood of confusion and
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`a false suggestion of connection. Opp. ¶ 14.
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`Opposer’s Section 2(d) claim of likelihood of confusion was pleaded with apparent reference
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`to three of the likelihood of confusion factors enumerated in In re E.I. du Pont de Nemours, 476 F.2d
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`1357, 177 U.S.P.Q. (BNA) 563 (C.C.P.A. 1973): similarity of the marks, similarity of the goods and
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`services, and similarity of trade channels. Opp. ¶¶ 11-13. In order to survive judgment on the
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`pleadings, Opposer took advantage of the liberal pleading standards and alleged, without support,
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`that Applicant’s recited goods and services “overlap with and/or are related to” Opposer’s money-
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`transfer services because Applicant’s electrical energy and natural gas services encompass “payment
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`related services” and/or are in Opposer’s zone of natural expansion. Opp. ¶ 12. Opposer also
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`alleged, without support, that the parties have overlapping channels of trade because they both “use
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`the internet” to target Opposer’s customer base, and they both “offer their services online and
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`through smartphones and other mobile devices.” Opp. ¶ 13. Moreover, Opposer’s Section 2(a) claim
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`for false suggestion of a connection was even more thinly pleaded, lacking any allegation or
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`reference to certain necessary elements of such a claim.
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`6 See Printout of Opposer’s Website, OPP000023-OPP000024 (attached hereto as Exhibit F).
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`5
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`

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`In light of the disparate nature of the parties’ goods and services, combined with the sparsely
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`pleaded Notice of Opposition, Applicant moved for entry of judgment on the pleadings on June 18,
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`2013. Applicant sought to dismiss Opposer’s Section 2(d) claim, on the basis that as a matter of law,
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`there could not be a likelihood of confusion given the vast differences in the parties’ goods and
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`services.7 Applicant further requested dismissal of Opposer’s Section 2(a) claim, as it was comprised
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`of a single conclusory statement, and insufficiently pleaded.8
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`On September 25, 2013, the Board issued its Order on Applicant’s Motion for Judgment on
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`the Pleadings. The Board denied Applicant’s motion as directed to Opposer’s Section 2(d) claim,
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`holding that the Board could not “conclude, at the pleading stage, that if opposer proved the factual
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`allegations in the complaint it would be unable to establish likelihood of confusion as a matter of
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`law,” because Opposer sufficiently pleaded: “similarity of the marks, relatedness of the goods and
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`services, (or services within the natural zone of opposer’s expansion), and similar channels of trade,
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`as well as prior use of the trade name and the brand XOOM in connection with a blog which
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`addresses topics of interest to consumers including renewable energy information.”9 However, the
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`Board granted Applicant’s motion as directed to Opposer’s Section 2(a) claim, agreeing with
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`Applicant that the claim was insufficiently pleaded.10 Opposer was allowed twenty days to replead
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`its Section 2(a) claim, which it failed to do.
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`The discovery period in this proceeding subsequently closed on April 27, 2015. During that
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`time, Opposer did not develop any evidence sufficient to show that there is a genuine dispute of any
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`material fact regarding its sole remaining claim for likelihood of confusion. To the extent Opposer is
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`basing its likelihood of confusion argument on the similarity of the marks and an alleged overlap in
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`goods and services offered in conjunction with the respective marks, Opposer has expressly admitted,
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`7 See generally Xoom Corp.’s Opp. to Motion for Judgment on the Pleadings.
`8 Id. at 13-15.
`9 Order on Motion for Judgment on the Pleadings, pp. 7-8.
`10 Id. at 8-9.
`
`6
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`

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`or provided no evidence to contradict, that (1) it does not use its alleged mark in commerce in
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`connection with any energy-related goods or services; (2) it does not use its XOOM mark in
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`commerce for goods or services beyond what is recited in its Registrations; (3) the energy market is
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`not related to the money-transfer market; (4) Applicant’s goods and services do not encompass
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`money-transfer services; and (5) energy and natural gas goods and services are not within Opposer’s
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`zone of natural expansion.
`
`III.
`
`LEGAL STANDARD
`
`Pursuant to Federal Rule of Civil Procedure 56, summary judgment is appropriate in a
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`trademark opposition proceeding where the moving party establishes that there is no genuine dispute
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`as to any material fact, thus entitling the movant to a judgment as a matter of law. Fed. R. Civ. P.
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`56(a); Pure Gold, Inc. v. Syntex (U.S.A.), Inc., 221 U.S.P.Q. (BNA) 151 (T.T.A.B. 1983), aff’d, 739
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`F.2d 624, 222 U.S.P.Q. (BNA) 741 (Fed. Cir. 1984). As a mechanism for judicial economy, “the
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`resolution of Board proceedings by means of summary judgment is . . . encouraged.” Univ. Book
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`Store v. Bd. of Regents of the Univ. of Wis. Sys., 33 U.S.P.Q.2d (BNA) 1385, 1389 (T.T.A.B. 1994);
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`Sweats Fashions, Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 1563, 4 U.S.P.Q.2d (BNA) 1793,
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`1795 (Fed. Cir. 1987) (“summary judgment is a salutary method of disposition designed to secure the
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`just, speedy and inexpensive determination of every action”).
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`On a motion for summary judgment, “the function of the Board is not to try issues of fact but
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`to determine, instead, if there are any genuine issues of material fact to be tried.” Univ. Book Store,
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`33 U.S.P.Q.2d (BNA) at 1389. Importantly, not all factual issues are material. An issue of fact is
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`material only if its determination would alter the Board’s decision on the legal issue. See, e.g.,
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`Kellogg Co. v. Pack’Em Enterprises Inc., 14 U.S.P.Q.2d 1545 (T.T.A.B. 1990), aff’d, 951 F.2d 330,
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`21 U.S.P.Q.2d (BNA) 1142 (Fed. Cir. 1991). Thus, outstanding factual questions do not preclude
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`entry of summary judgment if they are not material. Id.; see also Pure Gold, 221 U.S.P.Q. (BNA) at
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`154 (in granting summary judgment, “the Board is aware that there are genuine issues of fact
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`7
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`

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`outstanding . . . . Although these are genuine issues of fact, we do not find them to be material
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`facts.”).
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`In an opposition brought pursuant to Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d),
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`summary judgment is appropriate where there is no genuine issue of material fact regarding
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`likelihood of confusion. Pure Gold, 221 U.S.P.Q. (BNA) at 154 (granting applicant summary
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`judgment on likelihood of confusion despite genuine issues of fact because “we do not find them to
`
`be material facts”); Cent. Mfg. Co. v. Bd. of Regents, 2005 T.T.A.B. LEXIS 444, at *21 (Sept. 30,
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`2005) (granting applicant summary judgment finding “there are no genuine issues of material fact
`
`regarding likelihood of confusion”)11; Hancor, Inc. v. Mollewood Export, Inc., 2005 T.T.A.B. LEXIS
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`160, at *8 (Mar. 31, 2005) (granting applicant summary judgment because “[t]he evidence of record
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`clearly establishes that there is no genuine issue of material fact” on likelihood of confusion).
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`The existence of a likelihood of confusion is a question of law, determined by evaluating and
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`balancing the underlying facts and the relevant du Pont factors. See Lloyd’s Food Prods., Inc. v.
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`Eli’s, Inc., 987 F.2d 766, 767, 25 U.S.P.Q.2d (BNA) 2027, 2028 (Fed. Cir. 1993). The applicability
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`and weight of each of the twelve du Pont factors is dependent on the specifics of each case; not every
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`case involves every du Pont factor. Shen Mfg. Co. v. The Ritz Hotel, Ltd., 73 U.S.P.Q.2d (BNA)
`
`1350, 1353, 393 F.3d 1238, 1241 (Fed. Cir. 2004); In re E.I. du Pont, 177 U.S.P.Q. (BNA) at 563.
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`Where the weight of one du Pont factor is so dominant that it overshadows all other factors, that
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`single du Pont factor is dispositive of the issue of likelihood of confusion. See, e.g., Pure Gold, 221
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`U.S.P.Q. (BNA) at 154 (finding dissimilarity of goods dispositive of likelihood of confusion
`
`inquiry); In re WGI Innovations, Ltd., 2013 T.T.A.B. LEXIS 60, at *15 (Feb. 13, 2013) (finding that
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`“a single factor may be dispositive” and “in view of the differences in the goods,” confusion is not
`
`likely); Hancor, 2005 T.T.A.B. LEXIS 160, at *9 (“the dissimilarity of the goods is so vast as to
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`11 Pursuant to TBMP § 101.03, which allows citation to unpublished cases, Applicant has attached such cited cases
`hereto as Exhibit G.
`
`8
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`

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`preclude a likelihood of confusion”); Cent. Mfg., 2005 T.T.A.B. LEXIS 444, at *21 (“the
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`dissimilarity of the goods precludes a finding of likelihood of confusion”). Indeed, even if other du
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`Pont factors remain in dispute, they are not material if they would not change the outcome of the
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`likelihood of confusion analysis; in such instance, summary judgment is still appropriate. Pure Gold,
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`221 U.S.P.Q. (BNA) at 154 (summary judgment granted even with remaining issues of fact, such as
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`channels of trade and customer base, because “the Board would still find that there would be no
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`likelihood of confusion, given the difference in the goods involved”).
`
`IV.
`
`ARGUMENT
`
`As discussed in more detail below, the dominant du Pont factor in this case is the “[t]he
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`similarity or dissimilarity and nature of the goods or services….” In re E.I. du Pont, 177 U.S.P.Q.
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`(BNA) at 567. The vast dissimilarities of the parties’ respective goods and services in this
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`proceeding preclude any finding of a likelihood of confusion. And while Opposer is likely to argue
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`that certain other du Pont factors, such as the similarities of the marks, alleged overlapping trade
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`channels, and purported evidence of actual confusion, weigh in favor of a finding of likelihood of
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`confusion, the evidence (or lack thereof) supporting these factors demonstrates that Opposer cannot
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`on its claim succeed as a matter of law. In short, the vast dissimilarity of the goods and services is
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`not outweighed by any of the remaining du Pont factors. As the Board held in Pure Gold, “it is clear
`
`that the goods to which the parties apply their marks are so different in nature that confusion is
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`unlikely to result from the contemporaneous use of the marks in connection with such goods.” 221
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`U.S.P.Q. (BNA) at 154.
`
`A.
`
`There is No Genuine Dispute of Material Fact Regarding the Differences in the
`Parties’ Goods and Services.
`
`It is black letter law that a trademark is a source identifier, not a property right in gross; as
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`such, trademark rights do not exist independent of the goods or services on “which the mark is
`
`employed.” United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 97 (1918); Cent. Mfg., 2005
`
`9
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`

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`T.T.A.B. LEXIS 444, at *20 (citing J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR
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`COMPETITION, § 2:15 (4th ed. 2004)). In other words, Opposer’s rights in its XOOM mark go no
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`further than the extent to which it has used its mark in commerce in connection with its money
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`transfer goods and services. Opposer’s alleged rights do not extend so far as to exclude others from
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`using a XOOM-formative mark in conjunction with goods or services that are so unrelated to money
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`transfer that consumers would not assume that they emanate from the same source. FBI v. Societe:
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`“M. Bril & Co.”, 172 U.S.P.Q. (BNA) 310, 315 (T.T.A.B. Nov. 19, 1971) (dismissing opposition
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`finding no likelihood “to mistakenly cause purchasers to associate” applicant’s use with opposer).
`
`Despite the differences between Opposer’s money transfer goods and services and Applicant’s
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`energy and natural gas goods and services, as set forth in Section II., supra, Opposer made the
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`incredible allegation that the parties’ goods and services overlap and/or are related:
`
`On information and belief, Xoom alleges that the services for which Applicant Xoom
`seeks to register the opposed XOOM ENERGY designation overlap with and/or are
`related to Xoom’s products and services, particularly because the services
`encompasses [sic] payment related services, and/or such services are in the natural
`zone of Xoom’s expansion.
`
`Opp. ¶ 12. However, at summary judgment, Opposer can no longer simply rest on its allegations.
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`Instead, Opposer must come forward with evidence showing a genuine dispute of material fact
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`regarding such alleged overlap in goods and services. There is simply no evidence that the parties’
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`goods and services are similar, have any overlap, or share any relationship; on such facts, summary
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`judgment must be entered in Applicant’s favor.
`
`1.
`
`Opposer’s claims of overlap between the parties’ goods and services is
`without merit.
`
`It is well-established that a Section 2(d) likelihood of confusion analysis is restricted to a
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`comparison of the parties’ goods and services “as they are identified in the respective description in
`
`the application and registration.” In-N-Out Burgers v. Fast Lane Car Wash & Lube, L.L.C., 2013
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`T.T.A.B. LEXIS 131, at *35-36 (Mar. 14, 2013); M2 Software, Inc. v. M2 Communs., Inc., 2005
`
`10
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`

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`T.T.A.B. LEXIS 314, at *8 (July 21, 2005), aff’d, 450 F.3d 1378, 78 U.S.P.Q.2d (BNA) 1944 (Fed.
`
`Cir. 2006) (“we must compare the goods as they are described in the application and the registration
`
`in determining whether there is a likelihood of confusion”); Systemax Corp. v. Systemax, Inc., 2003
`
`T.T.A.B. LEXIS 513, at *28 (Sept. 30, 2003) (the “issue of likelihood of confusion must be
`
`determined based on the goods as they are identified”). This is particularly true in this case given
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`that Opposer specifically admitted in discovery that the only goods and services in connection with
`
`which it has used its mark in commerce are those reflected in its asserted Registrations.12 A review
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`of the goods and services recited in Opposer’s pleaded Registrations and Applicant’s Application
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`shows that there are no similarities between the parties’ goods and services.
`
`To the extent Opposer’s argument of overlap is based on the strained notion that consumers
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`pay for Applicant’s goods and services—because, of course, they are offered in commerce—such
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`argument would effectively eliminate this du Pont factor, as trademark rights cannot exist in the
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`absence of “use in commerce.” See 15 U.S.C. § 1051(a)(1) (“The owner of a trademark used in
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`commerce may request registration of its trademark on the principal register….”). Payment for
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`goods and services received is, at best, incidental to Applicant’s goods and services, and such an
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`incidental feature does not support Opposer’s characterization of the provision of electrical energy
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`and natural gas as “payment-related.”
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`The Federal Circuit rejected a similar argument in M2, in which it found that the mere fact
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`that a good or service contained a musical or entertainment component would “not bring them within
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`the music or entertainment fields” because such a component is an incidental feature. 78 U.S.P.Q.2d
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`(BNA) at 1947. The application at issue in M2 recited educational and promotional goods and
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`12 As set forth in Section II.B., supra, Opposer’s response to Applicant’s Interrogatory No. 1 expressly limits
`Opposer’s use in commerce of its XOOM mark, and consequently, its trademark and common law rights, to the
`goods and services recited in U.S. Registration Nos. 2,909,931, 4,012,337, and 4,226,418. See Ex. C, Interrogatory
`No. 1; Ex. D, p. 3; Ex. E, Interrogatory No. 1. While Opposer may attempt to argue that it has common law rights
`extending to goods and services broader than those recited in its Registrations, Opposer’s interrogatory response
`pointed to no additional goods or services.
`
`11
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`

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`services for companies in the pharmaceutical and medical fields, and encompassed multimedia CD-
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`ROMs with musical or entertainment features. The opposer’s registration recited goods and services
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`for the film and music industries, and also encompassed multimedia CD-ROMs. Id. In affirming the
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`Board’s dismissal of the opposition, the Federal Circuit found that “the board’s determination that the
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`parties’ goods were not related is supported by substantial evidence,” and “incidental music or
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`entertainment features contained” in the applicant’s goods or services does not “alter the fact that
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`they are produced for, and are, therefore, products within the pharmaceutical and medical fields.” Id.
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`Similar arguments were presented in In re SmartMoney, where the application at issue recited
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`computer software for investment, business, and financial news and information for personal
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`computers, excluding academic uses, while the registration recited computer programs for
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`educational use. 2002 T.T.A.B. LEXIS 634, at *1-2 (Sept. 30, 2002). The Board found that “while
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`applicant’s goods have some incidental educational or possibly even instructive use, they primarily
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`provide news and information on various investment, business and financial topics,” and are not
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`educational or instructive as contemplated by the registration. Id. at *7. Consequently, the Board
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`found no likelihood of confusion, noting that “while the respective goods are both computer
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`programs or software, their educational purposes or uses are for the most part quite different.” Id.
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`Opposer’s argument that Applicant’s goods are “payment related” is simply without merit.
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`Nor is there “overlap” between the parties’ goods and services simply because both parties
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`offer software. In prior briefing in this proceeding, Opposer improperly parsed the parties’
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`respective recitations of goods and services to make the strained argument that the parties’ goods and
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`services overlap because they “both cover computer software.”13 A review of Opposer’s allegations
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`and asserted Registrations makes clear that Opposer’s use of its mark in connection with computer
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`software is specifically limited to software for money transfer services. Opp. ¶¶ 2, 3(b), (c). In
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`13 Xoom Corp.’s Opposition to Motion for Judgment on the Pleadings, p. 10.
`
`12
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`

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`contrast, Applicant’s computer software is specifically limited to software for remote management of
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`energy equipment. Opp. ¶ 8. Despite the significant differences between the types and uses of the
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`software goods at issue, Opposer asserts that the mere offering of computer software by both parties
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`creates “apparent overlap” in the goods and services.14
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`Recognizing the proliferation of computer-based goods and services, the Board has
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`repeatedly rejected such conclusions. As explained in In re Quadram Corp., 228 U.S.P.Q. (BNA)
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`863, 865 (T.T.A.B. 1985),
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`As a result of the veritable explosion of technology in the computer field over the last several
`years and the almost limitless number of specialized products and specialized uses in this
`industry, we think that a per se rule relating to source confusion vis-a-vis computer hardware
`and software is simply too rigid and restrictive an approach and fails to consider the realities
`of the marketplace.
`
`Id. at 865. Taking heed, the Board in Reynolds and Reynolds Co. v. I.E. Systems, Inc. found no
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`likelihood of confusion between the opposer’s use of various ACCU-formative marks in connection
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`with software for tax preparation and applicant’s use of its ACCULINK mark in connection with
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`software for asynchronous data communication, given the differences in the respective software. 5
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`U.S.P.Q.2d (BNA) 1749, 1752 (T.T.A.B. 1987). Providing further guidance on the likelihood of
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`confusion analysis in the software context, the Board offered the following instruction:
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`It is important to note that, in order to support a holding of likelihood of confusion, there
`must be some similarity between the goods and services at issue herein beyond the fact that
`each involves the use of computers. In view of the fact that computers are useful and/or are
`used in almost every facet of the world of business, commerce, medicine, law, etc., it is
`obvious that distinctions must be made.
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`Id. at 1751 (citing Quadram, 228 U.S.P.Q. (BNA) at 863).
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`Similarly, in Electronic Data Systems Corp. v. EDSA Micro Corp., the Board found no
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`likelihood of confusion between opposer’s use of its EDS mark for computer software programs for
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`data processing, and applicant’s use of its EDSA mark for computer software programs for electrical
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`distribution system analysis and design. 23 U.S.P.Q.2d (BNA) 1460, 1464 (T.T.A.B. 1992). In
`
`14 Id.
`
`13
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`

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`comparing the respective goods and services, the Board noted that “the fact that both parties provide
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`computer programs does not establish a relationship between the goods or services, such that
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`consumers would believe that all computer software programs emanate from the same source simply
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`because they are sold under similar marks.” Id. at 1463. The Board rejected opposer’s arguments,
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`stating:
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`Opposer argues that the parties’ products are related because each party provides
`software programs which process data. We decline to interpret the concept of related
`goods so broadly. All computer software programs process data, but it does not
`necessarily follow that all computer programs are related. Given the ubiquitous use
`of computers in all aspects of business in the United States today, this Board and
`its reviewing Court have rejected the view that a relationship exists between
`goods and services simply because each involves the use of computers.
`
`Id. (citation omitted) (emphasis added).
`
`The importance of distinctions between computer-related goods and