Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA716533
`ESTTA Tracking number:
`12/24/2015
`
`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,
`minarkim@mvalaw.com
`Opposition/Response to Motion
`Kathryn G. Cole
`katecole@mvalaw.com, jeffreygianelli@mvalaw.com, minarkim@mvalaw.com,
`markwilson@mvalaw.com
`/Kathryn G. Cole/
`12/24/2015
`Opposition_to_Xoom_Corp__s_Motion_for_Summary_Judgment.pdf(252092
`bytes )
`Exhibits to Opposition.pdf(3290632 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
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`Signature
`Date
`Attachments
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`

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`UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91210148
`
`) ) ) ) ) ) ) ) ) ) )
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`XOOM CORPORATION,
`
`Opposer,
`
`v.
`
`XOOM ENERGY, LLC,
`
`Applicant.
`
`APPLICANT XOOM ENERGY, LLC’S OPPOSITION TO
`OPPOSER’S MOTION FOR SUMMARY JUDGMENT
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`Applicant Xoom Energy, LLC (“Applicant”) respectfully submits this Opposition to the Motion
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`for Summary Judgment filed by Opposer Xoom Corporation (“Opposer”). Applicant respectfully submits
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`that, as a matter of law, Opposer cannot succeed on its claim for likelihood of confusion. For that reason,
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`Opposer’s Motion must be denied. Further, for the reasons set forth in Applicant’s Motion for Summary
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`Judgment, filed on November 23, 2015, summary judgment should be entered in Applicant’s favor.
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`I.
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`INTRODUCTION
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`Opposer’s Motion for Summary Judgment obfuscates the appropriate likelihood of confusion
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`analysis required in this proceeding, and is instead based entirely upon mischaracterizations of the record
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`and imprecise legal analyses. Opposer cannot prevail in this opposition proceeding based solely on the
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`alleged similarity of the marks; instead, Opposer must prove a likelihood of confusion between
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`Applicant’s mark, as used in connection with energy and natural gas goods and services, and Opposer’s
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`mark, as used in connection with money transfer goods and services. There is no evidence or plausible
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`argument showing any overlap or relationship between the parties’ respective goods and services.
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`Likewise, Opposer has no evidence to establish that any other du Pont likelihood of confusion factor
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`weighs in Opposer’s favor. Absent such evidence, and given that Applicant and Opposer are vastly
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`different companies using their respective marks in connection with completely disparate goods and
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`services, Opposer cannot establish a likelihood of confusion as a matter of law. Opposer’s Motion for
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`Summary Judgment should be denied, and the Board should instead enter summary judgment in
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`Applicant’s favor.
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`III.
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`LEGAL STANDARD
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`On a Rule 56 motion for summary judgment, the moving party bears the initial burden of
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`establishing that there is no genuine dispute as to any material fact. Fed. R. Civ. P. 56(a); Kellogg Co. v.
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`Pack'Em Enters., 14 U.S.P.Q.2d (BNA) 1545, 1549 (T.T.A.B. Feb. 2, 1990). “The nonmoving party
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`must be given the benefit of all reasonable doubt as to whether genuine issues of material fact exist, and
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`the evidentiary record on summary judgment, and all inferences to be drawn from the undisputed facts,
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`must be viewed in the light most favorable to the nonmoving party. Hancor, Inc. v. Mollewood Export,
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`Inc., 2005 T.T.A.B. LEXIS 160, at *3-4 (Mar. 31, 2005).1 Furthermore, “the resolution of Board
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`proceedings by means of summary judgment is . . . encouraged.” Univ. Book Store v. Bd. of Regents of
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`the Univ. of Wis. Sys., 33 U.S.P.Q.2d (BNA) 1385, 1389 (T.T.A.B. 1994); Sweats Fashions, Inc. v.
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`Pannill Knitting Co. Inc., 833 F.2d 1560, 1563, 4 U.S.P.Q.2d (BNA) 1793, 1795 (Fed. Cir. 1987)
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`(“summary judgment is a salutary method of disposition designed to secure the just, speedy and
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`inexpensive determination of every action”). “This is particularly true when both sides seek resolution of
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`their dispute by means of summary judgment,” and, unless it would change the outcome of the
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`proceeding, differences between the accounts of the facts by the parties do not preclude summary
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`judgment. Univ. Book Store, 33 U.S.P.Q.2d at 1389-90; J. MOORE & J. WICKER, MOORE’S FEDERAL
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`PRACTICE § 56.120 (2015).
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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 likelihood of
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`confusion. Pure Gold, Inc. v. Syntex (U.S.A.), Inc., 221 U.S.P.Q. (BNA) 151, 154 (T.T.A.B. 1983), aff’d,
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`739 F.2d 624, 222 U.S.P.Q. (BNA) 741 (Fed. Cir. 1984) (granting applicant summary judgment on
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`likelihood of confusion despite genuine issues of fact because “we do not find them to be material facts”);
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`1 Pursuant to TBMP § 101.03, which allows citation to unpublished cases, Applicant has attached such cited cases
`hereto as Exhibit E.
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`2
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`Cent. Mfg. Co. v. Bd. of Regents, 2005 T.T.A.B. LEXIS 444, at *21 (Sept. 30, 2005) (granting applicant
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`summary judgment finding “there are no genuine issues of material fact regarding likelihood of
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`confusion”); Hancor, 2005 T.T.A.B. LEXIS 160, at *8 (granting applicant summary judgment because
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`“[t]he evidence of record clearly establishes that there is no genuine issue of material fact” on likelihood
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`of confusion). Even in an opposition with identical marks, when “it is clear that the goods to which the
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`parties apply their marks are so different in nature that confusion is unlikely to result from the
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`contemporaneous use of the marks in connection with such goods,” the dissimilarity of the respective
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`goods is dispositive, and the “applicant is entitled to judgment as a matter of law.” Pure Gold, 221
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`U.S.P.Q. (BNA) at 154; see also Calypso Tech., Inc. v. Calypso Capital Mgmt., LP, 100 U.S.P.Q.2d
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`(BNA) 1213, 1222 (T.T.A.B. Aug. 29, 2011) (“Essentially plaintiff would have us find confusion simply
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`because of the similarity of the marks. But this is not a sufficient basis for doing so.”); Hancor, 2005
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`T.T.A.B. LEXIS 160, at *7-9 (summary judgment entered despite identical marks, even though “all other
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`du Pont factors, including the fame of opposer’s mark [is] in opposer’s favor”).
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`IV.
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`ARGUMENT
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`There can be no likelihood of confusion as a matter of law where, as in this proceeding, the goods
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`and services recited in the applied-for mark’s application and a prior mark’s registration are so unrelated
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`that a consumer would not believe them to emanate from the same source. This principle, rooted in black
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`letter law prohibiting trademark rights “in gross or at large,” applies even when the respective marks are
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`identical. Ameritech Corp. v. Hollingsworth, 1999 T.T.A.B. LEXIS 214, at *10 (May 19, 1999) (“[T]he
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`determinative issue . . . is whether a likelihood of confusion exists when the respective marks are used in
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`connection with the parties’ non-competing services.”). Apparently recognizing that the crux of the
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`appropriate likelihood of confusion analysis in this particular proceeding is the dissimilarity of the parties’
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`respective goods and services, Opposer goes to great lengths to fabricate a semblance of relatedness
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`between Applicant’s energy and natural gas goods and services, on the one hand, and Opposer’s money
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`transfer goods and services, on the other hand. Notwithstanding Opposer’s attempts to change the
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`3
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`parameters of the likelihood of confusion analysis, the fact remains that there can be no likelihood of
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`confusion given the vast dissimilarities between the parties’ respective goods and services.
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`A.
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`The Scope of Opposer’s Trademark Rights in its XOOM Mark is Limited to the Money-
`Transfer Goods and Services Recited in its Pleaded Registrations.
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`In an opposition alleging likelihood of confusion under Section 2(d) of the Lanham Act, the
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`opposer “bears the burden of proving by a preponderance of the evidence” that it has prior trademark
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`rights. Life Zone Inc. v. Middleman Group, Inc., 87 U.S.P.Q.2d (BNA) 1953, 1959 (T.T.A.B. July 15,
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`2008). For purposes of Opposer’s Motion for Summary Judgment, Applicant does not contest Opposer’s
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`claim to prior rights in its XOOM mark for use in connection with the money transfer goods and services,
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`as recited in Opposer’s three pleaded registrations: U.S. Registration Nos. 2,909,931, 4,012,337, and
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`4,226,418 (the “Registrations”). However, to the extent Opposer attempts to assert common law rights in
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`its XOOM mark “for goods and services in addition to those identified in the pleaded registrations,”
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`Opposer must prove prior use of the mark in connection with those specific goods and services. Crazy
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`Horse Mem. Found. v. Spencer, 2014 T.T.A.B. LEXIS 83, at *29-30 (Feb. 26, 2014) (“Common law
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`rights exist by virtue of use of the mark in connection with specific goods and services and exist
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`independent of registration rights.”); Chi. Mercantile Exch., Inc. v. Globix Corp., 2004 T.T.A.B. LEXIS
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`222, at *20 (Apr. 8, 2004) (“[W]ith regard to priority as to opposer’s common law rights . . . opposer
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`must [ ] prove prior use of the mark with regard to the additional services.”). As explained in further
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`detail below, Opposer has failed to produce any evidence showing use of its XOOM mark that could
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`establish common law rights in its XOOM mark for any goods and services beyond those recited in its
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`Registrations. There is no genuine dispute of material fact that the scope of Opposer’s rights in its
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`XOOM mark is limited to the money transfer goods and services recited in its Registrations.
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`1.
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`Opposer has admitted that its use of the XOOM mark is limited to the money
`transfer goods and services recited in its Registrations.
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`Opposer expressly admitted during discovery that its trademark rights in its XOOM mark are
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`limited to those arising from use in connection with the money transfer goods and services recited in its
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`Registrations. Applicant’s Interrogatory No. 1 to Opposer requested as follows: “For each of Opposer’s
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`4
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`Cited Marks, identify each and every good and service on or in connection with which Opposer has used
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`or uses the mark in commerce.”2 “Opposer’s Cited Marks” was defined by Applicant as “the marks cited
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`by Opposer as the bases for its opposition, namely, the marks reflected in U.S. Registration Nos.
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`2,909,931, 4,012,337, and 4,226,418, and any marks alleged to be protected by common law.”3 In
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`response to Applicant’s Interrogatory No. 1, Opposer stated: “[T]he information requested is reflected in
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`the registrations Opposer attached to the Complaint.”4 Opposer verified these interrogatory responses
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`through its Verification dated May 11, 2015, executed by Mr. Julian King.5 As previously noted, the
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`goods and services described in Opposer’s Registrations are all specifically limited to money transfers.
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`In light of Opposer’s discovery responses, which are uncontradicted by any competent evidence
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`to the contrary, there is no genuine dispute that Opposer’s use of, and consequently, its trademark rights
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`in, its XOOM mark are limited to the money transfer goods and services recited in its Registrations. Diaz
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`v. Servicios De Franquicia Pardo's S.A.C., 83 U.S.P.Q.2d (BNA) 1321 (T.T.A.B. 2007) (granting
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`summary judgment where “based on opposer’s discovery responses, no genuine issue exists”).
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`2.
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`Opposer is precluded from claiming trademark rights in the goods and services for
`which it has attempted to assert common law rights.
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`Despite its express admissions regarding the scope of its trademark rights in its verified
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`interrogatory responses, Opposer attempts to expand the scope of its rights in the XOOM mark by
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`claiming prior common law rights in connection with the provision of informational blog posts, a loyalty
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`program, and social media.6 Such an attempt is a nonstarter as a matter of law. It is well-established that
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`2 Applicant’s First Set of Interrogatories, Interrogatory No. 1 (attached hereto as Exhibit A).
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`3 Applicant’s First Set of Requests for Production of Documents and Things, p. 3 (attached hereto as Exhibit B).
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`4 Opposer’s Objections and Responses to Applicant’s First Set of Interrogatories, Interrogatory No. 1 (attached here
`to as Exhibit C).
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`5 Opposer’s Verification of Opposer Xoom Corporation’s Responses to Applicant’s First Set of Interrogatories
`(attached hereto as Exhibit D).
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`6 Xoom Corporation’s Motion for Summary Judgment, pp. 2, 12, 17, 19; Applicant notes that Opposer references,
`for the first time in this opposition, an additional registration (the “New Registration”) that appears to recite goods
`and services similar to the goods and services for which Opposer claims common law rights. Id. at 6. Opposer has
`never pleaded the New Registration (which issued on September 24, 2013) or the application that matured into the
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`5
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`to be eligible for trademark rights, common law or otherwise, “a service must be (1) a real activity; (2)
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`performed to the order of, or for the benefit of, someone other than the applicant or registrant; and (3) the
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`activity performed must be qualitatively different from anything necessarily done in connection with the
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`sale of the” applicant or registrant’s goods or services. Omega S.A. v. Nat'l Mentoring P'ship, 2015
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`T.T.A.B. LEXIS 159, at *28 (May 29, 2015); In re Canadian Pacific Ltd., 754 F.2d 992, 224 U.S.P.Q.
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`971 (Fed. Cir. 1985); TMEP § 1301.01(a). Moreover, a “company’s promotional activities are not
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`services to others under the [Lanham] Act,” and trademark rights therein are precluded. In re Dr Pepper
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`Co., 836 F.2d 508, 510, 5 U.S.P.Q.2d (BNA) 1207, 1208 (Fed. Cir. 1987); Omega, 2015 T.T.A.B. LEXIS
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`159, at *30-31 (“An activity that primarily benefits Applicant is not a registrable service even if others
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`derive an incidental benefit.”).
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`While Opposer purports to offer informational blog posts, a loyalty program, and social media,
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`Opposer is conflating the plain language meaning of the term “offer,” and the meaning of “offer” as
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`contemplated by the Lanham Act. Trademarks are source identifiers, and as such, trademark rights do not
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`exist independent of the goods or services on “which the mark is employed.” United Drug Co. v.
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`Theodore Rectanus Co., 248 U.S. 90, 97 (1918). In other words, the scope of Opposer’s rights in its
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`XOOM mark extend no further than the scope of goods or services using its mark in commerce, and
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`Opposer cannot acquire common law rights in goods or services for which it is not a source. Asplundh
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`Tree Expert Co. v. Defibrator Fiberboard Aktiebolag, 208 U.S.P.Q. (BNA) 954, 959 (T.T.A.B. 1980) (a
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`party’s reliance on common law rights is “confined to the specific” goods and services, “as disclosed by
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`the evidence”). As to be expected from a money transfer business, Opposer does not sell, offer, or even
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`advertise to others any blog goods or services, loyalty program goods or services, or social media goods
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`or services, because Opposer is not a source of those services. Rather, Opposer apparently owns and/or
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`New Registration (which was filed prior to Opposer’s Notice of Oppostion), nor has Opposer amended its pleading
`to include the New Registration. Consequently, Opposer is limited to what was pleaded in its Complaint, and the
`Board cannot consider the New Registration for purposes of this proceeding. See S Indus. v. Casablanca Indus.,
`2002 T.T.A.B. LEXIS 644, fn. 26 (Oct. 3, 2002) (in declining to consider non-pleaded registrations, the Board held
`that “[a] plaintiff cannot simply continually during the course of an inter partes proceeding add non-pleaded
`registrations . . . because that would involve a lack of notice and prejudice to the defendant”).
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`6
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`uses its own blog, loyalty program, and social media, primarily for the promotion and advertising of its
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`money transfer goods and services—the only actual goods and services offered by Opposer—which is not
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`the type of “use” or “offering” that gives rise to trademark rights.7 In re Dr Pepper, 5 U.S.P.Q.2d at 1208
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`(“Through a series of decisions it has become a settled principle that” to be recognized as a “service”
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`under the Lanham Act, it “must be rendered to others.”).
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`While Opposer’s assertion of common law rights in goods and services it does not offer in
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`commerce seems incredible in the face of well-established trademark law, even more incredible is
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`Opposer’s argument that its informational blog, by virtue of “cover[ing] topics of general interest . . .
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`including postings about energy, sustainability and the environment,” not only gives rise to common law
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`rights in its XOOM mark for informational blog services, but also apparently in connection with any
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`subject matter mentioned on the blog. Indeed, by Opposer’s “logic,” this blog would provide Opposer
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`with common law rights not only in energy and natural gas goods and services,8 but also in connection
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`with any goods or services related to disaster relief, professional boxing, Ecuadorian emigration,
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`Jamaican basketball, Polish volleyball, Guatemalan politics, and all the other plethora of wide-ranging
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`topics discussed on the blog.9 It is absurd for Opposer to claim trademark rights in goods and services
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`simply because it has discussed matters related to such goods and service on a blog. To allow such an
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`7 While Opposer claims to “offer” the provision of informational blog posts, Opposer’s exhibits submitted in support
`show otherwise. See Xoom Corporation’s Motion for Summary Judgment, Exs. 2-3 to Declaration of Julian King
`(“King Decl.”). The blog posts are merely advertisements presented under the guise of an “informational” article.
`Indeed, each post is either directly about Opposer or Opposer’s business activities, or it provides a direct hyperlink
`to Opposer’s money transfer services, with little to no substantive information. For example, Opposer’s blog post
`titled “Ecuador attempts to stem emigration of citizens seeking work,” provides sparse information on the actual
`issue of Ecuadorian emigration. Rather, the short post includes the following unsubstantiated statement: “Many
`[Ecuadorians] likely hope that they will be able to send family members who are still in Ecuador an international
`money transfer to help pay for bills, education and other expenses.” The bold words are hyperlinked to Opposer’s
`money transfer services. In short, Opposer’s “informational blog posts” are nothing more than a way to promote its
`money transfer services. Id. at Ex. 2 to King Decl., OPP000973.
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`8 Xoom Corporation’s Motion for Summary Judgment, p. 19; Notably, while Opposer claims that Ex. 3 to King
`Decl., OPP001281-OPP001296, shows “examples” of blog posts about energy, they actually show: Mexican
`politics, Indian commerce, common household tips, Brazilian politics, Canadian environmentalists, and Filipino
`environmentalists. Furthermore, as explained in further detail in footnote 7, supra, while each of these blog posts
`are nominally informative, each contains a business-promoting statement about sending money and hyperlinking the
`statement to Opposer’s web page to initiate a money transfer.
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`9 See Xoom Corporation’s Motion for Summary Judgment, Exs. 2-3 to King Decl.
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`7
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`absurd conclusion would permit the acquisition of a right in gross, “which is contrary both to established
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`principles of trademark law and to Section 2(d).” Am. Optical Corp. v. Autotrol Corp., 175 U.S.P.Q.
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`(BNA) 725, 729-31 (T.T.A.B. 1972) (Opposer’s “shotgun approach” in attempting to establish
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`relatedness is “nothing more than an exercise in sophistry,” and cannot “preclude the subsequent
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`registration of the same or a similar mark for any and all products and services including goods and
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`services unrelated to those of opposer.”).
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`B.
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`The Differences in the Parties’ Goods and Services Preclude a Likelihood of Confusion.
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`A review of Opposer’s cursory analysis of six du Pont factors highlights the absence of any
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`evidence establishing a likelihood of confusion between Applicant’s mark for energy and natural gas
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`goods and services and Opposer’s mark for money transfer goods and services. Rather, it is clear that
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`“[t]he parties’ respective goods and/or services, in terms of their nature, purpose and function, are
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`dissimilar and non-competitive on their face,” and moreover, “[n]either party renders the other’s type of
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`services.” Evolutions Healthcare Sys. v. Evolution Bens., Inc., 2007 T.T.A.B. LEXIS 249, at *16-17
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`(July 12, 2007) (finding no likelihood of confusion and dismissing opposition). All of Opposer’s
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`arguments are premised entirely upon “theoretical possibilities of confusion,” which the Board and the
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`Federal Circuit have found to be insufficient for finding a likelihood of confusion. Witco Chem. Co. v.
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`Whitfield Chem. Co., 418 F.2d 1403, 1405, 164 U.S.P.Q. (BNA) 43, 44-45 (C.C.P.A. 1969); Electronic
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`Design & Sales, Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 717, 21 U.S.P.Q.2d (BNA) 1388,
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`1391 (Fed. Cir. 1992) (finding no likelihood of confusion because “[w]e are not concerned with mere
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`theoretical possibilities of confusion”); Crazy Horse, 2014 T.T.A.B. LEXIS 83, at *57 (finding no
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`likelihood of confusion because “[b]ased on the record before us, we conclude that confusion amounts to
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`only a speculative, theoretical possibility, rather than a likelihood”).
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`1.
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`The Similarity of the Parties’ Respective Marks Does Not Outweigh the
`Dissimilarities of the Goods and Services.
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`With no other du Pont factor in its favor, Opposer places great emphasis on the similarity of
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`Opposer’s XOOM mark and Applicant’s applied-for XOOM ENERGY mark. However, this lone du
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`8
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`Pont factor is not sufficient to overcome the significant disparity in the parties’ respective goods and
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`services. Indeed, the Board routinely finds no likelihood of confusion between identical marks, based
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`solely on the differences in the parties’ goods and services. See, e.g., Hancor, 2005 T.T.A.B. LEXIS 160,
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`at *9 (granting summary judgment on likelihood of confusion despite identical marks because “the
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`dissimilarity of the goods is so vast as to preclude a likelihood of confusion”); Cent. Mfg., 2005 T.T.A.B.
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`LEXIS 444, at *21.
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`Furthermore, even in proceedings where the opposer owns a famous mark that is identical to the
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`applicant’s applied-for mark, the Board has held that even a famous mark cannot preclude entry of a
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`subsequent identical mark if the “obvious dissimilarity” of the goods and services is so “vast” that there
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`can be no likelihood of confusion. Hancor, 2005 T.T.A.B. LEXIS 160, at *7-9 (granting summary
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`judgment for identical marks even though “all other du Pont factors, including the fame of opposer’s
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`mark [is] in opposer’s favor”). As established by the foregoing authority, and legion trademark cases,
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`even if the similarity of the parties’ marks supports Opposer’s claim, it is not dispositive of the analysis
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`and does not outweigh the vast differences between the parties’ goods and services. Cuban Cigar
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`Brands, N.V. v. Valle Grande Limitada, 2007 T.T.A.B. LEXIS 107, at *17 (Aug. 9, 2007) (emphasizing
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`that the “fundamental inquiry mandated by Section 2(d) goes to” the differences in the goods and
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`services”).
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`2.
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`Opposer’s Mark is Not Strong.
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`Opposer claims that its “XOOM mark and name are strong and entitled to a broad scope of
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`protection,”10 but has failed to provide any evidence to support its conclusory statements. The fifth du
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`Pont factor contemplates the “[f]ame of an opposer’s mark or marks, if it exists.” Fruit of the Loom, Inc.
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`v. Riley, 2012 T.T.A.B. LEXIS 159, at *7 (May 7, 2012) (internal citations omitted). This du Pont factor
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`requires the Board to evaluate the commercial strength of Opposer’s mark, measured “by the volume of
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`sales and advertising expenditures for the services traveling under the mark, by the length of time those
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`indicia of commercial awareness have been evident, widespread critical assessments and through notice
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`10 Xoom Corporation’s Motion for Summary Judgment, p. 16.
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`9
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`by independent sources of the products identified by the marks, as well as the general reputation of the
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`products and services.” Coach Services, Inc. v. Triumph Learning LLC, 2010 T.T.A.B. LEXIS 383, at
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`*14 (Sept. 17, 2010), aff’d, 668 F.3d 1356, 1370, 101 U.S.P.Q.2d (BNA) 1713 (Fed. Cir. 2012); see also
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`Mfrs. Tech. Insts., Inc. v. Pinnacle College, LLC, 2013 T.T.A.B. LEXIS 478, at *27 (Sept. 4, 2013).
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`As the party seeking a “wide latitude of legal protection,” it is Opposer’s duty to clearly prove the
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`commercial strength of its mark. Coach, 2010 T.T.A.B. LEXIS 383, at *15 (“[I]t is the duty of the party
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`asserting that its mark is famous to clearly prove it.”); Leading Jewelers Guild, Inc. v. LJOW Holdings,
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`LLC, 82 U.S.P.Q.2d 1901, 1904 (T.T.A.B. 2007) (“The party asserting that its mark is famous has the
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`burden to prove it.”). Opposer has provided no evidence showing consumer recognition. And the
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`evidence Opposer did provide, as discussed in further detail below, has no probative value for this du
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`Pont factor and cannot establish that its mark is so strong it should be accorded broad protection.
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`a.
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`Opposer’s evidence of the number of purported users and number of
`purported dollars transacted is of no probative value.
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`As previously stated, the volume of sales and advertising expenditures for goods and services
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`offered under the asserted mark is one factor in the evaluation of the fifth du Pont factor. Opposer has
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`provided no evidence for either the volume of sales or its advertising expenditures for any of its goods
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`and services. Instead, Opposer merely states that its mark’s “strength is further confirmed by the use of
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`Xoom products and services by 1.5 million active users for over seven billion dollars in transactions in
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`the past year alone.”11 As noted by the Board and the Federal Circuit, “raw numbers alone may be
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`misleading,” necessitating “context surrounding the raw statistics,” such as comparisons of opposer’s
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`figures “to those providing comparable products or services.” Coach, 2010 T.T.A.B. LEXIS 383, at *15.
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`To the extent Opposer is attempting to demonstrate its volume of sales with the number of purported
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`“active users,” Opposer offers no information about the significance of its numbers. Without context, it is
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`impossible to ascertain from Opposer’s single statement who or what constitutes an “active user,” if 1.5
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`million is considered a small or large user base in the relevant industry, or even which one of Opposer’s
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`11 Id.
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`10
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`

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`purported goods and services is being “actively used.” As such, “1.5 million active users” simply has no
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`meaning in the volume of sales inquiry, nor any probative value for this du Pont factor. The Board
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`rejected a similar argument in Leading Jewelers, in which it found that the raw statistics submitted by the
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`opposer fell “far short of establishing” the fifth du Pont factor. 82 U.S.P.Q.2d (BNA) at 1904. The
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`opposer in Leading Jewelers provided evidence showing the number of members and retail stores that
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`belonged to the opposer, but “failed to offer any information concerning the number of jewelry retailers in
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`this country, that is, the number of potential members of an organization such as [opposer’s].” Id. The
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`Board, reiterating that it is the opposer’s duty to clearly prove commercial strength or fame, found that
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`“this du Pont factor is neutral,” and ultimately concluded that there was no likelihood of confusion. Id.
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`In addition to its alleged number of users, Opposer submitted the purported number of dollars in
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`transactions in lieu of the volume of sales, stating that its products and services were used for “over seven
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`billion dollars in transactions.”12 While a number in the billions sounds impressive—undoubtedly the
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`reason Opposer chose this metric—the dollars in transactions and the volume of sales are completely
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`different statistics in this case due to the nature and type of Opposer’s goods and services. By Opposer’s
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`own admission, Opposer “is a digital money transfer and remittance provider,” meaning that the very
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`service Opposer offers to consumers is the transaction of money. Much like how the number of miles
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`traveled would not be a reliable indicator of an airline’s commercial success, the amount of money users
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`have transferred using Opposer’s goods and services provides no reference point for determining the
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`actual prevalence or success of the goods and services offered under Opposer’s mark. Furthermore,
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`because Opposer provides no context for this data, even if the number of dollars in transactions was a
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`reliable metric, it suffers from the same deficiencies as Opposer’s evidence of number of purported users:
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`it is but a raw number with little to no probative value. As a final note, Opposer has only provided
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`evidence for this past year.13 To establish commercial strength under the du Pont factor of fame, the mark
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`must have “extensive public recognition and renown,” and Opposer must prove that awareness of its
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`12 Id.
`13 Id.
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`11
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`brand, if it exists, has persisted for an appreciable length of time. Sports Auth. Mich., Inc. v. PC Auth., 63
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`U.S.P.Q.2d (BNA) 1782, 1795-96 (T.T.A.B. Apr. 16, 2002); (finding that “opposer’s enrollment,
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`revenues and advertising expenditures are not sufficient to establish that the mark is commercially strong”
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`where “those figures have, until very recently, been relatively low”). Statistics from one year alone are
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`not “especially meaningful,” and Opposer’s numbers, notwithstanding their other fatal shortcomings,
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`cannot establish strength or fame. Leading Jewelers, 82 U.S.P.Q.2d (BNA) at 1904.
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`b.
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`Opposer’s evidence of purported third-party recognition has no probative
`value for this du Pont factor.
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`Opposer further claims that “[t]hird parties have recognized through awards and through
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`unsolicited publications of articles about [Opposer], the strength of the XOOM mark and name.” As the
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`Board explained in Outback Steakhouse of Fla., Inc. v. Waterworldwide Pty Ltd., where “opposers rely
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`exclusively on purported facts and anecdotal evidence gleaned from” third-party publications as evidence
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`for fame, “[i]t has long been held that we cannot consider any printed publications submitted in this
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`manner for proof of the facts asserted in the printed publications.” 2009 T.T.A.B. LEXIS 50, at *7-8
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`(Jan. 7, 2009). “Rather, these articles are hearsay and merely serve as evidence that the content appeared
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`and that the public was exposed to the content. Id. at *8 (finding that the evidence did not support this du
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`Pont factor); see also T.B.M.P. § 704.08 (2015). As such, the copies of third-party publications
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`submitted by Opposer can only be used to show that the articles were published, and cannot be used to
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`prove that any of the publications speak to “the strength of the XOOM mark and name.”
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`However, for the sake of putting this du Pont factor to rest, even if the third-party publications
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`submitted by Opposer could be used for the content contained therein, they do not evidence strength or
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`fame of Opposer’s mark. On the contrary, the content within the publications shows that Opposer’s mark
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`has not gained public recognition and renown. For example, the publication titled “The Top 50 Venture-
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`Backed Companies,”14 submitted by Opposer as one of the publications that supposedly recognizes the
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`strength of Opposer’s mark and name, states that the list is intended for “lesser-known” companies.
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`14 Xoom Corporation’s Motion for Summary Judgment, Ex. 4 to King Decl., OPP000932-000942.
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`12
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`

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`Another article dated February 15, 2013, distinguishes Opposer from “entrenched players” in its field, and
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`states that Opposer’s “business is not yet profitable.”15 Moreover, of the six publications attached as
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`Exhibit 7 to King Decl., five were published on February 15, 2013, and one was published on February
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`11, 2013. And of the six publications—all regarding Opposer going public—four were published by San
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`Jose Mercury News. Opposer’s own evidence weighs against any finding of extensive public recognition.
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`3.
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`Opposer’s Mark is Used on a Narrow Set of Money Transfer Goods and Services.
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`Opposer next argues that the ninth du Pont factor is in its favor because its “XOOM mark is used
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`for a variety of goods and services, which is yet another factor weighing in favor of finding a likelihood
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`of confusion.”16 In re E.I. du Pont de Nemours, 476 F.2d 1357, 1361, 177 U.S.P.Q. (BNA) 563, 567
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`(C.C.P.A. 1973) (“The variety of goods on which a mark is or is not used (house mark, “family” mark,
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`product mark).”). According to Opposer, use of its “XOOM mark a