Trademark Trial and Appeal Board Electronic Filing System. httgj/estta.usQto.gov
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`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
`
`henryward@mva|aw.com
`
`Other Motions/Papers
`J. Mark Wilson
`
`
`
`markwi|son@mva|aw.com, kateco|e@mva|aw.com, jeffreygiane||i@mva|aw.com
`/J. Mark Wilsonl
`
`06/18/2013
`
`Xoom_Energy_Motion_for_Judgment_on_the_P|eadings.pdf(116781 bytes )
`Xoom Energy Memo ISO 12(c) Motion.pdf(202311 bytes )
`Xoom Energy — Exhibit 1.pdf(452398 bytes )
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA543664
`ESTTA Tracking number:
`06/18/2013
`
`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
`henryward@mvalaw.com
`Other Motions/Papers
`J. Mark Wilson
`markwilson@mvalaw.com, katecole@mvalaw.com, jeffreygianelli@mvalaw.com
`/J. Mark Wilson/
`06/18/2013
`Xoom_Energy_Motion_for_Judgment_on_the_Pleadings.pdf(116781 bytes )
`Xoom Energy Memo ISO 12(c) Motion.pdf(202311 bytes )
`Xoom Energy - Exhibit 1.pdf(452398 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91210148
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`---------------------------------------------------------------
`XOOM CORPORATION
`
`Opposer
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`v.
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`XOOM ENERGY, LLC
`
`Applicant
`---------------------------------------------------------------
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`XOOM ENERGY, LLC’S RULE 12(C)
`MOTION FOR JUDGMENT ON THE PLEADINGS
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`Pursuant to 37 C.F.R. §§ 2.116(a) and 2.127, Rule 12(c) of the Federal Rules of Civil
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`Procedure, and Section 504 of the Trademark Trial and Appeal Board Manual of Procedure,
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`Applicant Xoom Energy, LLC, by and through its undersigned counsel, hereby respectfully
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`moves for judgment on the pleadings. In support of this Motion, Xoom Energy submits the
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`accompanying Memorandum and supporting documents.
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`Respectfully submitted,
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`/J. Mark Wilson/
`J. Mark Wilson
`Kathryn G. Cole
`Moore & Van Allen PLLC
`100 North Tryon Street, Suite 4700
`Charlotte, NC 28202-4003
`Telephone (704) 331-1000
`Facsimile (704) 339-5981
`Attorneys for Xoom Energy LLC
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`

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`CERTIFICATE OF SERVICE
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`I certify that the foregoing XOOM ENERGY, LLC’S RULE 12(C) MOTION FOR
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`JUDGMENT ON THE PLEADINGS was served on Opposer Xoom Corporation by mailing a
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`copy of same by U.S. first class mail, postage prepaid, addressed as follows:
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`Rochelle D. Alpert
`Morgan Lewis & Bockius LLP
`One Market, Spear Street Tower
`San Francisco, CA 94105
`
`Attorneys for Opposer Xoom Corporation
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`Date: June 18, 2013
`
`/J. Mark Wilson/
`J. Mark Wilson
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91210148
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`---------------------------------------------------------------
`XOOM CORPORATION
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`Opposer
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`v.
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`XOOM ENERGY, LLC
`
`Applicant
`---------------------------------------------------------------
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`XOOM ENERGY, LLC’S MEMORANDUM IN SUPPORT OF
`RULE 12(C) MOTION FOR JUDGMENT ON THE PLEADINGS
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`Pursuant to 37 C.F.R. §§ 2.116(a) and 2.127, Rule 12(c) of the Federal Rules of Civil
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`Procedure, and Section 504 of the Trademark Trial and Appeal Board Manual of Procedure,
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`Applicant Xoom Energy, LLC respectfully submits this Memorandum in support of its Motion
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`for Judgment on the Pleadings. Early and final disposition of Opposer Xoom Corporation’s
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`Opposition is appropriate because no material issue of fact exists as to its likelihood of confusion
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`claim, and Opposer therefore cannot prevail as a matter of law.
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`FACTUAL BACKGROUND
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`This dispute arises from Opposer’s opposition to Applicant’s June 1, 2011 application to
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`register the mark XOOM ENERGY, U.S. Trademark Application Serial No. 85/335,647 (the
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`“Application”). The Application recites the following goods and services:
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`Electrical energy and natural gas (International Class 04);
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`remotely managing the
`Computer software and software applications for
`operation of heating and cooling systems, thermostats, lighting, appliances and
`other residential 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
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`

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`enabling concentrating optics to maximize solar energy input (International Class
`09);
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`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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`Energy management services, namely, arranging, organizing, promoting and
`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);
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`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 reflected by the recitation set forth above, the Application is directed to goods and
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`services related to the provision of electrical energy and natural gas. The Application was
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`published in the OFFICIAL GAZETTE on December 11, 2012.
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`After requesting and being granted one extension of time to oppose the Application,
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`Opposer filed a Notice of Opposition on April 9, 2013 (the “Opposition”), citing the following
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`three (3) service mark and trademark registrations purportedly owned by Opposer (the
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`“Registrations”):
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`Mark:
`Reg. No.:
`Services:
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`XOOM
`2,909,931
`information, namely on, money transfer
`Providing business
`services (International Class 35).
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`2
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`

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`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).
`
`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).
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`XOOM
`4,226, 418
`services,
`facilitating money transfer
`software for
`Computer
`electronic funds transfer services, bill payment remittance services,
`electronic processing and transmission of payments and payment
`data (International Class 09).
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`Mark:
`Reg. No.:
`Services:
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`Mark:
`Reg. No.:
`Goods:
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`In its Opposition, Opposer alleges that it will be damaged by registration of Applicant’s
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`Application for the mark XOOM ENERGY, in connection with the provision of electrical energy
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`and natural gas, on the ground that the XOOM ENERGY mark is likely to cause confusion in
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`violation of Section 2(d) of the Trademark Act. Opp. at ¶ 14.1 On May 20, 2013, Applicant
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`timely answered the Opposition.
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`LEGAL STANDARD
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`A motion for judgment on the pleadings under Rule 12(c) must be granted where “the
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`moving party clearly establishes that no material issue of fact remains to be resolved and that it is
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`entitled to judgment as a matter of law.” Baroid Drilling Fluids, Inc. v. Sun Drilling Products,
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`1 Opposer has alleged “Likelihood of Confusion” as the sole ground for its opposition. Opp. at 5. However, as
`discussed more fully in Section II, infra, in addition to citing Section 2(d) as the basis for this claim, Opposer also
`cited Section 2(a) of the Trademark Act as part of its claim for likelihood of confusion. Opposer does not provide
`any factual allegations to support a claim under Section 2(a). It is axiomatic that Section 2(a) is separate and distinct
`from a likelihood of confusion claim under Section 2(d). Reference to Section 2(a) does not change the sole claim
`for relief pleaded by Opposer—which is alleged likelihood of confusion—and does not support Opposer’s pleaded
`claim. Nor are there otherwise any material issues of fact in dispute relevant to a Section 2(a) claim, given
`Opposer’s failure to plead the requisite elements of such a claim.
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`3
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`

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`24 U.S.P.Q.2d (BNA) 1048, 1049 (T.T.A.B. 1992) (granting applicant’s motion for judgment on
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`the pleadings based on opposer’s failure to establish priority). Pursuant to Rule 12(c), a party
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`may move for judgment on the pleadings, “[a]fter the pleadings are closed—but early enough not
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`to delay trial.” Fed. R. Civ. P. 12(c). See also TBMP § 504.01 (“[T]o be timely, a motion for
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`judgment on the pleadings must be filed after the pleadings are closed, but prior to the opening of
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`the first testimony period, as originally set or as reset.”).
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`In ruling on a motion for judgment on the pleadings, the Board must focus on the well-
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`pleaded allegations set forth in the pleadings. “For the purposes of the motion, all well-pleaded
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`factual allegations of the nonmoving party are assumed to be true, the inferences drawn
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`therefrom are to be viewed in a light most favorable to the nonmoving party.” Baroid, 24
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`U.S.P.Q.2d (BNA) at 1049. While the Board may take judicial notice of facts relevant to those
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`allegations, outside evidence may not be presented. Ava Enters. Inc. v. P.A.C. Trading Group,
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`Inc., 86 U.S.P.Q.2d (BNA) 1659, 1661 (T.T.A.B. 2008) (granting applicant’s motion for
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`judgment on the pleadings based on opposer’s failure to establish likelihood of confusion).
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`Conclusions of law, however, are not taken as admitted. Kraft Group LLC v. Harpole, 90
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`U.S.P.Q.2d (BNA) 1837, 1840 (T.T.A.B. 2009) (granting applicant’s cross-motion for judgment
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`on the pleadings based on opposer’s failure to establish likelihood of confusion). And where the
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`allegations set forth in the pleadings do not present any material facts in dispute or any issue
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`upon which the non-moving party can prevail, judgment is to be granted in favor of the moving
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`party. “A motion for judgment on the pleadings is designed to provide a means of disposition of
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`cases when the material facts are not in dispute and judgment on the merits can be achieved by
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`focusing on the pleadings.” CBS Inc. v. James V. Mercandante and Rose Marie Mercandante,
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`4
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`

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`dba 911 Rescue Bar, 23 U.S.P.Q.2d (BNA) 1784, 1790 (T.T.A.B. 1992) (granting motion for
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`judgment on the pleadings based on opposer’s failure to establish likelihood of confusion).
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`ARGUMENT
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`When the well-pleaded factual allegations and inferences drawn therefrom are viewed in
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`the light most favorable to Opposer, Applicant is entitled to judgment on the pleadings. As an
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`initial matter, the scope of the issues presented by Opposer is very narrow. The sole ground for
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`opposition set forth in Opposer’s pleading is likelihood of confusion. Opp. at p. 5. To prevail on
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`such a claim, which is analyzed pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. §
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`1052(d), Opposer must prove priority and likelihood of confusion. Kraft Group, 90 U.S.P.Q.2d
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`1837, at 1841. In light of the significant differences between the goods and services recited in
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`Opposer’s Registrations and Applicant’s Application, there cannot be, as a matter of law, any
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`likelihood of confusion.
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`I.
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`No Likelihood of Confusion Exists as a Matter of Law.
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`As explained in Champagne Louis Roederer, S.A. v. Delicato Vineyards, 148 F.3d 1373,
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`1374, 47 U.S.P.Q.2d (BNA) 1459, 1460-61 (Fed. Cir. 1998), a claim of likelihood of confusion
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`is to be evaluated with reference to the thirteen (13) factors set forth in In re E.I. DuPont de
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`Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. (BNA) 563 (C.C.P.A. 1973). Of the thirteen (13)
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`factors set forth in DuPont, Opposer appears to allege likelihood of confusion based on the
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`following three (3) factors: (i) the similarity or dissimilarity of the marks, (ii) the similarity or
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`dissimilarity and nature of the goods and services, and (iii) the similarity or dissimilarity of trade
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`channels. See Opp. at ¶¶ 11, 12, 13 (alleging likelihood of confusion based on the three (3)
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`foregoing factors). See also DuPont, 476 F.2d at 1361 (setting out the likelihood of confusion
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`factors).
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`5
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`

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`As noted in DuPont, “[t]he [likelihood of confusion factors] are not listed…in order of
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`merit. Each may from case to case play a dominant role.” Id. at 1361-62. Accordingly, it has
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`been consistently held that where a single DuPont factor so overshadows the other twelve (12),
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`that factor can and should be dispositive of the entire dispute. See, e.g., Kellogg Co. v. Pack’em
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`Enters. Inc., 951 F.2d 330, 333, 21 U.S.P.Q.2d (BNA) 1142, 1145 (Fed. Cir. 1991) (“We know
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`of no reason why, in a particular case, a single DuPont factor may not be dispositive.”); Pure
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`Gold, Inc. v. Syntex (U.S.A.), Inc., 221 U.S.P.Q. (BNA) 151, 154 (T.T.A.B. 1983), aff’d 739 F.2d
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`624, 22 U.S.P.Q. (BNA) 741 (Fed. Cir. 1984); Ava Enters., 86 U.S.P.Q.2d at 1661 (“[O]ne
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`DuPont factor may be dispositive in a likelihood of confusion analysis….”) (citation omitted).
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`While Opposer alleges likelihood of confusion based on similarity of marks, similarity of
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`services, and similarity of trade channels, Applicant submits that the substantial dissimilarity
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`between the parties’ goods and services, as recited in the Registrations and the Application, is
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`dispositive of the likelihood of confusion analysis in this proceeding. Applicant submits that in
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`light of these differences, there can be no likelihood of confusion as a matter of law.
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`A.
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`The dissimilarity of the good and services is the predominant DuPont factor
`in this proceeding and requires entry of judgment in Applicant’s favor.
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`For purposes of the present Motion only, Applicant respectfully submits that one DuPont
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`factor is dispositive of this dispute, namely, the dissimilarity and nature of the goods and services
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`recited in Opposer’s Registrations and Applicant’s Application. The parties’ goods and services
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`are starkly different in terms of purpose and use. As Opposer describes in its Opposition, its
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`Registrations cover “money transfer related products and services,” offered both through its web
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`site and through “a downloadable software application for smartphones.” Opp. at ¶¶ 1, 2. On
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`the other hand, as Opposer alleges and Applicant does not dispute, Applicant’s Application
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`recites goods and services related to electrical energy and natural gas. Opp. at ¶ 8. More
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`6
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`

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`specifically, Applicant’s goods and services relate to the creation, distribution, management,
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`provision, and/or use of electrical energy and natural gas, not money transfer. As such, the
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`parties’ respective goods and services share absolutely no overlap.
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`As previously noted, Applicant’s Application recites goods in International Classes 04,
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`09, and 11. See U.S. Trademark Application Serial No. 85/335,647. Nowhere in its Opposition
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`does Opposer allege that there is any similarity between the goods recited in Applicant’s
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`Application and any of the goods or services recited in Opposer’s Registrations. Indeed,
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`Opposer’s only allegation as to similarity between goods or services is found in Paragraph 12 of
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`its Opposition, and is directed solely to Applicant’s recited services:
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`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.
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`Opp. at ¶ 12 (emphasis added). For that reason alone, judgment should be entered in Applicant’s
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`favor with respect to, at a minimum, its application for registration of the XOOM ENERGY
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`mark for use in connection with the International Class 04, International Class 09, and
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`International Class 11 goods recited in its Application.
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`Applicant also submits that Opposer’s sole allegation as to similarity between the parties’
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`services—namely, that both parties’ “services encompass[] payment related services”—is
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`insufficient for at least two reasons.
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`First, nowhere in Applicant’s recitation of goods and services is there any type of
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`payment-related service. See U.S. Trademark Application Serial No. 85/335,647. Opposer does
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`not identify which of Applicant’s services it contends are “payment related,” and does not
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`otherwise provide any basis for its unfounded characterization of Applicant’s recited services.
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`7
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`

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`The only basis upon which Applicant’s recitation can be read to include “payment related
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`services” would be based on the strained notion that because Applicant’s services are the type
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`that are offered in commerce, its services are “payment related” and are therefore similar to
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`Opposer’s for purposes of a likelihood of confusion analysis. If adopted by the Board, such a
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`strained notion would effectively eliminate this DuPont factor.
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`Second, even if there was some reasonable basis upon which to conclude that Applicant’s
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`recited services are “payment related,” which Applicant submits does not exist, the Board has
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`repeatedly found that likelihood of confusion does not exist where there is merely a tangential
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`relationship between the goods and services recited. For example, in Hancor, Inc. v. Mollewood
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`Export, Inc., 2005 T.T.A.B. LEXIS 160 (Mar. 31, 2005),2 the Board found no genuine issue of
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`material fact as to likelihood of confusion based on the applicant’s application for registration of
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`the mark SURE-LOK even though the opposer owned a prior registration directed to the
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`identical mark. The application at issue recited collapsible wooden boxes for use in the
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`automotive parts industry, while the opposer’s prior registration recited plastic pipe and tubing.3
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`Id. at *9. The Board rejected the opposer’s argument that the goods were similar because they
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`both involved a “unique latching feature.” Id. at *8-9. Instead, the Board explained that “this
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`could be said for a glass jar and a screen door; it is not sufficient to raise a genuine issue of
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`material fact.” Id. at *8. This same logic applies to money transfer related products and services
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`2 Pursuant to TBMP § 101.03, which allows citation to unpublished cases, Applicant has attached such cited cases
`hereto as Exhibit 1.
`3 The legal standard for assessing a motion for judgment on the pleadings is nearly identical to the standard for a
`motion for summary judgment. Fed. R. Civ. P. 56; see Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986) (holding
`that the party moving for summary judgment is entitled to judgment as a matter of law where no genuine issue of
`material fact exists). Thus, Applicant submits that prior proceedings in which this Board granted summary
`judgment based on a review of the pleadings are persuasive in deciding the present motion.
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`8
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`

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`and goods and services for the creation, distribution, management, provision, and/or use of
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`electrical energy and natural gas.
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`Similarly, the Board rejected essentially the same argument in Mobil Oil Corp. v. Alber
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`Haustechnik und Apparatebau GmbH, 2000 T.T.A.B. LEXIS 86 (Feb. 29, 2000). In that case,
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`the Board found no genuine issue of material fact as to whether the applicant’s use of the term
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`MOBIL as part of the applied-for mark SCALAMOBIL for stair climbing attachments for
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`wheelchairs created any likelihood of confusion in light of the opposer’s MOBIL mark used in
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`connection with automotive products, gas stations, convenience stores, and credit card services.
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`Id. at *10. The opposer, Mobil Oil Corp., argued that the applicant’s goods—accessories used
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`for transporting wheelchairs up and down the staircase—related generally to health care, and
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`because opposer offered health care products to its credit card holders through direct mail inserts
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`included with its credit card statements, the goods and services recited were similar enough to
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`create a likelihood of confusion. Id. at *8. The Board flatly rejected this argument, finding
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`instead that the single dispositive DuPont factor requiring judgment for the applicant was the
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`dissimilarity of the goods and services:
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`We believe that the circumstances of this case are similar to those in 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, 21 U.S.P.Q.2d (BNA) 1142 (Fed. Cir. 1991), in that a single du
`Pont factor, here the dissimilarity of the goods and services as described in
`the application or registration or in connection with prior use of the mark,
`substantially outweighs any other relevant factors and is dispositive of the issue
`of likelihood of confusion. The Board has considered those other factors,
`including the fame of opposer’s MOBIL and MOBIL-stem marks, as favoring
`opposer. Even viewing these other relevant du Pont factors in opposer’s favor,
`we find the parties’ respective goods and services so dissimilar and unrelated as
`to avoid likelihood of confusion.
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`Mobil Oil, 2000 T.T.A.B. LEXIS 86, at *9-10 (emphasis added).
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`9
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`

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`Opposer’s allegations relative to Applicant’s services are even more tenuous than those
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`asserted in Mobil Oil. Unlike the opposer in Mobil Oil, Opposer has not alleged that its mark is
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`famous, and has not even alleged how the goods and services offered by it and Applicant
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`actually overlap in any way, other than a conclusory statement that both parties’ “services
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`encompass[] payment related services.” Opp. at ¶ 12. Instead, Opposer merely contends that
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`both parties offer services that “relate” to “payment” (which, as previously noted, represents a
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`mischaracterization of the goods and services actually recited in the Application). Opp. at ¶ 12.
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`As the foregoing precedent makes clear, such (non-existent) similarity is insufficient to create
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`any issue of material fact regarding likelihood of confusion.
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`B.
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`Opposer’s allegations regarding similarity of the marks and overlapping
`channels of trade do not outweigh the dissimilarity of the goods and services.
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`In addition to alleging likelihood of confusion based on purported similarities between
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`the parties’ services—despite the stark differences in the goods and services actually recited in
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`the Registrations and Application—Opposer also alleges likelihood of confusion based on
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`similarity of the marks and overlapping channels of trade. Opp. at ¶¶ 11, 13.4
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`With respect to the alleged overlapping channels of trade, Opposer alleges that both
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`parties “offer their services online and through smartphones and other mobile devices to
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`consumers,” and “use the internet and/or other overlapping channels of trade to target the same
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`or overlapping prospective customers.” Opp. at ¶ 13. However, allegations of such broad
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`channels of trade, even if accepted as true, are insufficient to create any issue of fact regarding
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`likelihood of confusion when considered in view of the stark dissimilarities between the goods
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`and services recited in the Registrations and Application.
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`4 For purposes of this Motion, Applicant will not dispute the similarity or dissimilarity of the marks.
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`10
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`

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`The breadth of the Internet as a channel of trade was addressed in Parfums de Coeur, Ltd.
`
`v. Lory Lazarus, 83 U.S.P.Q.2d (BNA) 1012 (T.T.A.B. 2007):
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`We…note opposer’s point that it promotes and sells its products through the
`Internet, and that applicant’s television series might be promoted through the
`Internet…. Even if we accept that opposer’s products and applicant’s television
`series could be promoted through the Internet, the mere fact that goods and
`services may both be advertised and offered through the Internet is not a
`sufficient basis to find that they are sold through the same channels of trade.
`The Internet is such a pervasive medium that virtually everything is advertised
`and sold through the Internet. We therefore need something more than this
`general fact in order to show that “the conditions and activities surrounding the
`marketing of the goods [and services] are such that they would or could be
`encountered by the same persons under circumstances that could, because of the
`similarity of the marks, give rise to the mistaken belief that they originate from
`the same producer.” For example, if the goods and services were promoted or
`offered through the same website, that might constitute a circumstance that could
`lead to likelihood of confusion. However, merely because the medium of the
`Internet is involved is not a sufficient basis to show that the conditions and
`activities surrounding the marketing of the goods and services are such as to lead
`to confusion.
`
`Id. at 1021(quoting In re Int’l Tel. and Tel. Corp., 197 U.S.P.Q. (BNA) 910, 911 (T.T.A.B.
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`1978)). Applicant submits that the allegedly overlapping channels of trade in this proceeding—
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`“online,” “smartphones,” and “the internet”—are “pervasive mediums” through which “virtually
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`everything is advertised and sold.” Parfums de Coeur, 83 U.S.P.Q.2d at 1021. Thus, such
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`general allegations of overlapping channels of trade are insufficient.
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`Even accepting Opposer’s conclusory allegation as to the broad overlapping channels of
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`trade, the stark differences between the parties’ goods and services remain dispositive of the
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`likelihood of confusion inquiry. As previously explained, it is well-established that even where
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`one or more DuPont factors favor an opposer, an opposition should be dismissed if another
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`DuPont factor is dispositive of the likelihood of confusion analysis and weighs in favor of the
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`applicant. See, e.g., Kellogg, 951 F.2d at 332-34; Ava Enters., 86 U.S.P.Q.2d at 1661; Hancor,
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`2005 T.T.A.B. LEXIS 160, at *3; Mobil Oil Corp., 2000 T.T.A.B. LEXIS 86, at *9-10; Sears
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`Mortgage Corp. v. Northeast Savings F.A., 24 U.S.P.Q.2d (BNA) 1227, 1228 (T.T.A.B. 1992).
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`C.
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`No amount of discovery will change the likelihood of confusion analysis.
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`In light of the stark and substantial differences between the parties’ respective goods and
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`services, early and final disposition is particularly appropriate to prevent unnecessary and
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`fruitless discovery. No amount of discovery will change the dissimilarity of the goods and
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`services pertinent to the Board’s analysis of the Opposition.
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`For example, in Pure Gold, the Board found no issue of material fact regarding likelihood
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`of confusion between applicant’s use of the mark FERMODYL PURE GOLD in connection with
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`hair treatment products and opposer’s use of PURE GOLD in connection with citrus foods. Pure
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`Gold, 221 U.S.P.Q. (BNA) at 154. In support of its motion for summary judgment, the applicant
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`argued that “even if the marks involved…were identical, there would be no likelihood of
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`confusion, as a matter of law, in view of the vast differences” between the goods. Id. at 153.
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`The Board agreed, finding that “it is clear that the goods to which the parties apply their marks
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`are so different in nature that confusion is unlikely to result from the contemporaneous use of the
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`marks in connection with such goods. No evidence that opposer may adduce at trial in support
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`of its pleadings would be persuasive of a contrary result.” Id. at 154. On appeal, the Federal
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`Circuit affirmed the Board’s decision to grant summary judgment in favor of the applicant. Pure
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`Gold, Inc. v. Syntex (U.S.A.) Corp., 739 F.2d 624, 627-28, 222 U.S.P.Q. (BNA) 741, 744 (Fed.
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`Cir. 1984). Among other things, the opposer argued that the Board erred in not allowing
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`discovery to explore issues such as whether applicant used or intended to use citrus products in
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`its hair treatment preparations. Id. at 626. However, the Court held that the clear dissimilarity of
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`the goods obviated the need for any further discovery or proceedings “merely to satisfy a
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`litigant’s speculative hope of finding some evidence that might tend to support a complaint.” Id.
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`at 627. The Court agreed with the Board’s dismissal of the matter because “[f]urther litigation in
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`this case not only would put the parties to unnecessary expense but also, equally importantly,
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`would be wasteful of judicial resources.” Id.
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`In the present case, based on Opposer’s pleadings, there is no basis upon which the Board
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`could conclude or even infer that Opposer’s Registrations and Applicant’s Application recite
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`similar goods and services. As in Pure Gold, no amount discovery would be persuasive of a
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`contrary result.
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`II.
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`Opposer’s Reference to Section 2(a) of the Trademark Act Does not Support Its
`Likelihood of Confusion Claim or Create Any Issue of Material Fact Sufficient to
`Withstand Entry of Judgment on the Pleadings.
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`As part of its sole ground for opposition—captioned as “Likelihood of Confusion” (Opp.
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`at 5)—Opposer references not only Section 2(d) of the Trademark Act, but also Section 2(a).
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`Specifically, Opposer alleges that “relevant consumers will be misled into believing that there is
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`an association, affiliation or approval of [Opposer] with [Applicant] and its XOOM ENERGY
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`designation, when there is no such affiliation or approval, in violation of Section 2(a) of the
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`Trademark Act.” Opp. at ¶ 15.
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`As an initial matter, Applicant respectfully submits that Section 2(a) of the Trademark
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`Act is not a proper basis upon which to assert a likelihood of confusion claim. See, e.g., Springs
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`Industries, Inc. v. Bumblebee Di Stefano Ottina & C.S.A.S., 222 U.S.P.Q. (BNA) 512, 514
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`(T.T.A.B. 1984) (noting that the elements of a claim under Section 2(a) “are distinctly different
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`from the elements of a trademark…infringement claim, which elements are the essence of
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`Section 2(d)”). Indeed, as the case law makes clear, claims under Section 2(a) are separate and
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`apart from likelihood of confusion claims under Section 2(d). See Bridgestone/Firestone
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`Research v. Auto. Club, 245 F.3d 1359, 1363, 58 U.S.P.Q.2d (BNA) 1460, 1464 (Fed. Cir. 2001)
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`(“[T]he rights protected under the § 2(a) false suggestion provision are not designed primarily to
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`protect the public, but to protect persons and institutions from exploitation of their persona. This
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`protection of rights of personal privacy and publicity distinguishes the § 2(a) false suggestion of
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`connection provision from the § 2(d) likelihood of confusion provision.”) (citing University of
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`Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 703 F.2d 1372, 1376, 217 U.S.P.Q.
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`(BNA) 505, 508-09 (Fed. Cir. 1983)); see also In re WM Distribution, Inc., 2005 T.T.A.B.
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`LEXIS 452, at *5 (July 14, 2005) (“[T]he portion of Section 2(a) dealing with false suggestion of
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`a connection resulted from the desire to give statutory effect to the notions of the rights of
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`privacy and publicity, the elements of which are distinctly different from the elements of a
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`trademark infringement claim of likelihood of confusion, which is the essence of Section 2(d) of
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`the Trademark Act.”). Thus, Opposer’s reference to Section 2(a) in Paragraph 15 of its
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`Opposition does not and cannot support its sole ground for opposition, which Opposer itself
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`captioned as “Likelihood of Confusion.” See Opp. at p. 5.
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`Notwithstanding the inapplicability of Section 2(a) to a likelihood of confusion claim,
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`Applicant notes that, even if the Board considered Opposer’s reference to Section 2(a) as stating
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`a separate basis for opposition, no material issues of fact exist as to such a claim. It is well-
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`settled that in order to succeed on a claim under Section 2(a), a plaintiff must show the
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`following:
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`(1) that the defendant’s mark is the same as or a close approximation of plaintiff’s
`previously used name or identity;
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`(2) that the mark would be recognized as such, in that it