Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA521488
`ESTTA Tracking number:
`02/13/2013
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92054573
`Defendant
`Ortronics, Inc.
`MARK D GIARRATANA
`MCCARTER & ENGLISH LLP
`185 ASYLUM STREET, CITYPLACE 1
`HARTFORD, CT 06103
`UNITED STATES
`mgiarratana@mccarter.com, rrundelli@calfee.com, jcastrovinci@calfee.com,
`ssmith@mccarter.com, jwhitney@mccarter.com
`Reply in Support of Motion
`Mark D. Giarratana
`mgiarratana@mccarter.com, shsmith@mccarter.com
`/s/Mark D. Giarratana
`02/13/2013
`REPLY MEMORANDUM IN SUPPORT OF REGISTRANT'S MOTION FOR
`SUMMARY JUDGMENT.pdf ( 12 pages )(71944 bytes )
`Supplemental Declaration of Shawn S. Smith.pdf ( 3 pages )(92420 bytes )
`Exhibit RR to Supplemental Smith Declaration.pdf ( 3 pages )(270248 bytes )
`Exhibit SS to Supplemental Smith Declaration.pdf ( 2 pages )(188034 bytes )
`Exhibit TT to Supplemental Smith Declaration.pdf ( 2 pages )(166462 bytes )
`Exhibit UU to Supplemental Smith Declaration.pdf ( 12 pages )(400678 bytes )
`Exhibit VV to Supplemental Smith Declaration.pdf ( 19 pages )(1491804 bytes )
`Exhibit WW to Supplemental Smith Declaration.pdf ( 16 pages )(895862 bytes )
`Exhibit XX to Supplemental Smith Declaration.pdf ( 13 pages )(1012237 bytes )
`Exhibit YY to Supplemental Smith Declaration.pdf ( 11 pages )(810349 bytes )
`Exhibit ZZ to Supplemental Smith Declaration.pdf ( 12 pages )(922780 bytes )
`Exhibit AAA to Supplemental Smith Declaration.pdf ( 5 pages )(313968 bytes )
`Exhibit BBB to Supplemental Smith Declaration.pdf ( 12 pages )(969113 bytes )
`Exhibit CCC to Supplemental Smith Declaration.pdf ( 9 pages )(769441 bytes )
`Exhibit DDD to Supplemental Smith Declaration.pdf ( 11 pages )(920524 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the Matter of Registration Nos.:
`For the Marks:
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`Date of Issue:
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`LAYERZERO POWER SYSTEMS, INC.
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`Petitioner,
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`ORTRONICS, INC.,
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`Registrant,
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`3,998,542 and 3,998,543
`LAYER ZERO and LAYER 0
`July 19, 2011
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`Cancellation No.: 92054573
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`REPLY MEMORANDUM IN SUPPORT OF
`REGISTRANT’S MOTION FOR SUMMARY JUDGMENT
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`Mark D. Giarratana
`Shawn S. Smith
`MCCARTER & ENGLISH, LLP
`185 Asylum Street
`CityPlace I
`Hartford, CT 06103
`860.275.6700
`860.724.3397 (fax)
`mgiarratana@mccarter.com
`shsmith@mccarter.com
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`Attorneys for Registrant
`Ortronics, Inc.
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`ME1 15057670v.1
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`1. Introduction
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`Petitioner does not controvert Registrant’s evidence demonstrating (i) the parties’ Goods are expensive,
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`highly technical and purchased only after careful, deliberate and lengthy purchasing processes; (ii) the parties’ target
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`purchasers are different, mutually exclusive, discriminating and sophisticated professionals who have an in-depth
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`understanding of the respective Goods and the source of those Goods; and (iii) the parties’ Goods are specifically
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`different, non-competitive, and travel in different channels of trade. These undisputed facts dictate summary
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`judgment of no likelihood of confusion. Petitioner argues the marks are similar, the Goods are “closely related”, and
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`there is one instance of alleged actual confusion by Petitioner’s long-time consultant. But these arguments do not
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`controvert the above-mentioned undisputed facts, and do not preclude summary judgment.1
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`2. Petitioner Concedes the Parties’ Goods are Expensive and Purchased Only After Careful, Lengthy
`Purchasing Processes by Sophisticated Professionals
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`Petitioner does not dispute that its Goods (i) are highly technical, customized power distribution equipment
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`that deliver uninterrupted power to mission critical operations and, as such, are an extremely important purchase
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`made only after careful consideration of the reliability and dependability of Petitioner and its Goods (Reg. Br., 1-4);
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`(ii) can cost hundreds of thousands of dollars (Reg. Br., 4); and (iii) are sold to sophisticated, professional purchasers
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`after a lengthy, individualized sales process through which purchasers understand the complex, unique features and
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`source of Petitioner’s Goods. (Reg. Br., 4-7.) Nor does Petitioner dispute that Registrant’s Goods (i) are technically
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`sophisticated, customer-configured racks and cabinets used to organize structured cabling and network equipment
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`(Reg. Br., 7-9); (ii) can cost several thousand dollars, and are typically sold in transactions involving sales of
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`Petitioner’s Goods within the range of $9,000 to $500,000 dollars (Reg. Br., 9); and (iii) are sold to sophisticated
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`purchasers after a lengthy, individualized sales process (Reg. Br., 10-11).
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`The sophistication of the parties’ professional purchasers, and the undisputed care exercised by such
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`purchasers, weigh decisively in Registrant’s favor and dictate summary judgment of no likelihood of confusion. See
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`1 Registrant’s Memorandum in Support of its Motion for Summary Judgment [D.I. #17] is referenced as “Reg. Br.”,
`and Petitioner’s Memorandum in Opposition to Registrant’s Motion for Summary Judgment [D.I. #34] is
`referenced as “Opp.” All capitalized terms not defined herein are defined in Reg. Br. The lettered Exhibits RR-DDD
`referenced herein are appended to the Supplemental Declaration of Shawn S. Smith filed herewith. All other lettered
`Exhibits referenced herein are appended to the Smith Declaration [D.I. #19]. The numbered Exhibits referenced
`herein are Petitioner’s Exhibits that were filed together with its Memorandum in Opposition.
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`ME1 15057670v.1
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`1
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`Elec. Design & Sales Inc. v. Elec. Data Syst. Corp., 21 U.S.P.Q.2d 1388, 1392 (Fed. Cir. 1992)(purchaser
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`“sophistication is important and often dispositive because ‘[s]ophisticated consumers may be expected to exercise
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`greater care.’”). See also id. (“There is always less likelihood of confusion where goods are expensive and
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`purchased after careful consideration.”)
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`3. The Parties’ Goods Indisputably Travel in Different Channels of Trade and Are Sold To Different
`Purchasers
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`Petitioner argues the “channels of trade are in material dispute” (Opp., 17), but fails to controvert
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`Registrant’s evidence establishing (i) the individuals that evaluate and decide to purchase Petitioner’s Goods are
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`facilities engineering and real estate professionals; (ii) the individuals that evaluate and decide to purchase
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`Registrant’s Goods are datacenter or network managers; (iii) these two classes of individuals are different and
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`mutually exclusive; and (iv) the parties’ Goods are specifically different and non-competitive, and therefore travel in
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`separate channels of trade and are sold to different purchasers. (Reg. Br., 6-7, 9-11, 12-17.)
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`Petitioner attempts to create an issue of fact by arguing there is “an overlapping group of end-users
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`(owners/operators of datacenters)” and “an overlapping group of electrical contractors” involved in “the same
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`‘project-based’ contracting process.” (Opp., 17.) But this is legally irrelevant because Petitioner’s evidence of
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`overlap is at an institutional level and does not identify specific purchasers. Elec. Design & Sales Inc., 21
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`U.S.P.Q.2d at 1390 (Fed. Cir. 1992)(“The likelihood of confusion must be shown to exist not in a purchasing
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`institution, but in a ‘customer or purchaser.’”)(emphasis in original). Further, Petitioner’s argument is belied by the
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`testimony of its Rule 30(b)(6) witnesses who unequivocally testified that Petitioner’s target purchasers are facilities
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`managers, facilities engineers, and corporate real estate professionals, “not computing guys”. (Reg. Br., 6-7; Ex. L,
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`12:21-13:20; Ex. K, 61:10-63:4, 99:25-100:2.) When pressed to identify the individuals who made the purchasing
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`decisions at the vast majority of its customers, Petitioner’s president Bhanoo did not identify a single datacenter or
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`network manager, IT professional, or electrical contractor. (Ex. K, 112:22-130:19.) The purchasers of Registrant’s
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`Goods, on the other hand, indisputably are datacenter or network managers. (Reg. Br., 9-11.)
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`Petitioner’s argument that “the purchasing decision dichotomy” between datacenter managers and facility
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`managers “is breaking down” does not controvert the undisputed fact that the parties sell to different and mutually
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`ME1 15057670v.1
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`exclusive individuals. (Opp., 18.) Whether datacenter or network managers are interested in racks and cabinets that
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`reduce cooling costs and, in turn, energy consumption, does not change the fact that there is no evidence they make
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`the decisions to purchase Petitioner’s Goods.
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`Petitioner argues that for two of its customers – Digital Realty Trust and Sentinel Data Centers – the
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`purchasing decision makers “tend to be the upper level management – not the facility or datacenter managers.”
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`(Opp., 18.) First, this argument is belied by Bhanoo’s testimony where he unambiguously stated the purchaser of
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`Petitioner’s Goods at Sentinel was the construction company (Tishman Construction), not Sentinel’s “upper level
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`management”. See Sinskey v. Pharmacia Ophthalmics, 25 U.S.P.Q.2d 1290, 1293 (Fed. Cir. 1992), abrogated in
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`part on other grounds by Pfaff v. Wells Elecs., 48 U.S.P.Q.2d 1641, 1646-47 (U.S. 1998)(“A party cannot create an
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`issue of fact by supplying an affidavit contradicting his prior deposition testimony, without explaining the
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`contradiction or attempting to resolve the disparity.”); Wanlass v. Gen. Elec. Co., 46 U.S.P.Q.2d 1915, 1922 (Fed.
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`Cir. 1998)(same). Second, Bhanoo’s post-deposition declaration that the purchasing decision makers “tend to be”
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`upper level management is itself ambiguous and does not controvert his undisputed testimony that Petitioner’s target
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`purchasers are facilities managers, facilities engineers, and corporate real estate professionals (like Tishman
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`Construction). (Reg. Br., 6-7.) Bhanoo also points to three “smaller, non-traditional customers” (Careerbuilder.com,
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`Pearson Education and Starwood Hotels) and argues the purchasing decision-makers are “typically the Chief
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`Information Officer [‘CIO’]”. (Opp., 18.) Again, Bhanoo’s post-deposition statement is itself ambiguous because it
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`merely states the purchasers are “typically” a CIO, and thus implies this is the case for some of the three customers,
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`but not others. Further, Bhanoo’s self-serving declaration is contradictory stating, on the one hand, that the three
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`customers are “smaller, non-traditional customers”, and on the other hand, that “[c]ustomers like these are likely to
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`remain a significant portion of LayzerZero’s business ….” (Bhanoo Dec., ¶ 41.)
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`Although there is no evidence that the same purchasing decision-makers encounter both parties’ Goods in
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`the context of a purchasing decision, in the unlikely event this were to occur, there is no dispute such an encounter
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`would occur in the context of an individualized, lengthy sales process leaving no room for misunderstanding about
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`the sources of the parties’ Goods. See supra, pp. 1-2. Bearing in mind the level of sophistication of the relevant
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`purchasers, the expensive, technically-sophisticated Goods, and the conditions under which purchases are made, it is
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`ME1 15057670v.1
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`inconceivable there would be a likelihood of confusion. PerkinElmer Health Sci., Inc. v. Atlas Database Software
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`Corp., 2011 WL 7005538 at *19 (T.T.A.B. Dec. 22, 2011)(non-precedential)(Ex. VV)(software for medical records
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`did not travel in same channels as software for laboratory management because even if the same individuals did
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`encounter the mark and products “they would do so only in the context of a thoughtful purchasing process leaving
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`no room for misunderstanding about the sources of the respective software.”).
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`Petitioner attempts to create an issue of fact by claiming it has direct, post-sale interactions with datacenter
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`managers. (Opp., 18-19.) However, Petitioner’s alleged interactions with datacenter managers are irrelevant to the
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`likelihood of confusion inquiry for two reasons. First, it is undisputed that Petitioner’s actual and target purchasers
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`are not datacenter managers. Supra, pp. 2-3. Astra Pharm. Prods., Inc. v. Beckman Inst., Inc., 220 U.S.P.Q. 786, 790
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`(1st Cir. 1983)(“If likelihood of confusion exists, it must be based on the confusion of some relevant person; i.e., a
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`customer or purchaser.”). Second, Petitioner has not proffered any evidence that datacenter managers are involved in
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`the purchase of Petitioner’s Goods, and therefore they are not “relevant persons” for assessing whether there is a
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`likelihood of confusion. Supra, p. 2-3. Elec. Design & Sales, Inc., 21 U.S.P.Q.2d at 1391-92 (end-users of product
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`who have no involvement in purchasing decision are not “relevant persons” for confusion inquiry).
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`Petitioner’s argument that the parties market and sell their Goods to a broadly defined “datacenter market”
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`(Opp., 8-9) and have attended three of the same trade shows and experienced some overlap in visitors at such shows
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`on an institutional level (Opp., 9-10), misses the mark. The relevant inquiry is not whether the parties sell to the
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`same institutions, but whether they sell to the same individuals in those institutions. Elec. Design & Sales, Inc., 21
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`U.S.P.Q.2d at 1390. Mere attendance at the same trade shows is insufficient to establish a likelihood of confusion
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`where the parties sell to different individuals in the companies attending such shows. See, e.g., Gen. Cable Techs.
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`Corp. v. Nat’l Rural Elec. Coop. Ass’n, 2009 TTAB LEXIS 483, *25-26 (T.T.A.B. June 25, 2009)(non-
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`precedential)(Ex. WW)(opposition dismissed where parties advertised in same publications and exhibited at trade
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`show directly next to one another but sold to different individuals in the purchasing organizations); Alliance Tech.
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`Servs. v. Alliance Mach. Sys. Int’l, Inc., 2006 TTAB LEXIS 370, *16-17 (T.T.A.B. Aug. 16, 2006)(non-
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`precedential)(Ex. XX)(no confusion despite attendance at same trade shows and overlap in customers where
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`majority of sales were made to different individuals at the customers).
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`ME1 15057670v.1
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`4. The Parties’ Goods are Indisputably Different in Nature, are Used for Entirely Different Purposes, and
`Do Not Compete in Any Way
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`Despite the stark contrast in the nature and use of the parties’ Goods, Petitioner argues “a reasonable fact
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`finder could conclude the goods are complementary or used together ….” (Opp., 15.) However, “the test is not that
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`goods and services must be related if used together.” Packard Press, Inc. v. Hewlett-Packard Co., 56 U.S.P.Q.2d
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`1351, 1355 (Fed. Cir. 2000); see also Shen Mfg. Co., Inc. 73 U.S.P.Q.2d 1350, 1355-56 (Fed. Cir. 2004)("That two
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`goods are used together … does not, in itself, justify a finding of relatedness.”). Petitioner does not controvert
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`Registrant’s evidence that the parties’ Goods are significantly different in nature, are used for entirely different
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`purposes, and do not compete in any way. (Reg. Br., 1-3, 7-9, 12-15.) Further, there is no evidence that Petitioner’s
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`Goods require Registrant’s Goods to perform their functions, and vice versa. Nor is there any evidence that use of
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`Petitioner’s Goods requires Registrant’s Goods, and vice versa. Rather, Petitioner’s Goods switch between power
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`sources to ensure uninterrupted power for, and distribute the power downstream to, critical loads. Registrant’s
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`Goods have nothing to do with power supply, switching between power supplies, or distributing power. Nor are
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`Registrant’s Goods “critical loads”. Rather, they are racks and cabinets that do not require Petitioner’s Goods for
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`their use and functionality, and vice versa.
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`Petitioner argues the parties’ Goods are complementary because Petitioner’s Goods might supply electrical
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`power used downstream by third-party products mounted in Registrant’s racks and cabinets (Opp., 5, 14), or that
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`Registrant’s cable pathway products might carry power cables that receive power from Petitioner’s Goods. (Opp., 5,
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`n.3.) But under this rationale, any product that uses electrical power, or that deploys another product that uses
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`electrical power, would be complementary to Petitioner’s Goods. The mere possibility that both parties’ Goods may
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`be located in the same datacenter whitespace does not create an issue of fact as to whether the Goods are
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`complementary. See Sbs Prod. Inc. v. Sterling Plastic & Rubber Prod. Inc., 8 U.S.P.Q.2d 1147, 1150 (T.T.A.B.
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`1988)(no confusion between industrial products bearing identical mark despite being located in close proximity in
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`same industrial facilities). See also Astra Pharm. Prods., Inc., 220 U.S.P.Q. 786, 790 (blood analyzer and drugs both
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`used in hospital but not complementary); Edwards Lifesciences Corp. v. VigiLanz Corp., 94 U.S.P.Q.2d 1399,
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`1411-12 (T.T.A.B. 2010)(heart monitors and computer monitoring systems both used in hospitals but not
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`ME1 15057670v.1
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`complimentary); S. C. Johnson & Son, Inc. v. Johnson, 121 U.S.P.Q. 63, 68-69 (6th Cir. 1959), cert. denied, 123
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`U.S.P.Q. 590 (U.S. 1959)(wet mops and floor wax both used in “floor maintenance field” but not complementary);
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`In re British Bulldog, Ltd., 224 U.S.P.Q. 854, 856 (T.T.A.B. 1984)(men’s underwear and shoes both worn by same
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`persons at same time but not complementary); Toro Mfg. Corp. v. Gleason Works, 177 U.S.P.Q. 330, 331 (C.C.P.A.
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`1973)(lawn mowers have gears but they are not complementary).
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`Petitioner surmises the parties’ Goods “coexist side by side or in close proximity in the white space of a
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`datacenter.” (Opp., 5.) Petitioner’s only evidentiary support is the Bhanoo, Galm and Mosman Declarations.
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`Bhanoo’s and Galm’s Declarations are carefully drafted to state they personally observed “products of Registrant”,
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`but do not identify those products.2 (Bhanoo Dec., ¶ 22; Galm Dec., ¶ 4.) Similarly, Mosman merely states “[i]t
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`would not be unusual …” to find the parties’ Goods side by side, but fails to state that he ever saw this. (Mosman
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`Dec., ¶ 22.) Such innuendo and speculation does not create a factual dispute. McLellan v. Smith, 439 F.3d 137, 144
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`(2d Cir. 2006)(Ex. YY)(“The nonmoving party cannot defeat summary judgment by simply showing ‘that there is
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`some metaphysical doubt as to the material facts’ … or by factual argument based on conjecture or surmise”)(citing
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`Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986)); Scotto v. Almenas, 143 F.3d 105, 114
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`(2d Cir. 1998)(Ex. ZZ)(“The non-moving party may not rely on conclusory allegations or unsubstantiated
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`speculation.”).
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`Petitioner claims that purchasers are likely to believe the parties’ Goods originate from the same source
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`because Registrant sells “power injectors”, and Registrant’s affiliate Electrorack sells “rack mounted power strips”,
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`both under different marks not at issue in this case. (Opp., 6, 14.) But Petitioner does not sell either power injectors
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`or rack mountable power strips, and these products are dramatically different than Petitioner’s Goods. Registrant’s
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`power injectors, a/k/a power over Ethernet (“POE”) patch panels, are small devices that transmit both data and
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`power over Ethernet cabling to allow a cable to provide data and power to products that are not easily accessible,
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`such as security cameras or wireless access points. (Exs. RR, SS.) Registrant’s affiliate Electrorack sells rack
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`mounted power strips that mount on a rack to provide additional electrical sockets. (Ex. TT.) There is no dispute that
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`2 Bhanoo describes on the same page “Registrant’s products as identified in the registrations …”, and therefore
`could have identified those Goods if, in fact, he had personally observed them, but he did not. (Bhanoo Dec., ¶ 20.)
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`Petitioner does not sell power injectors, rack mountable power strips, or power strips of any sort, that these goods are
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`entirely different in function and use than any of Petitioner’s Goods, and that these goods do not compete in any way
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`with Petitioner’s Goods. Accordingly, there is no basis to conclude either party’s sophisticated, professional
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`purchasers, would reasonably assume Petitioner’s Goods and Registrant’s Goods emanate from the same source
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`based on Registrant’s and its affiliate’s sale of power injectors and power strips under marks not at issue in this case.
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`Petitioner’s selection of words that allegedly describe Petitioner’s Goods along with power injectors and strips (i.e.
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`“power distribution units”, “PDUs”, and “power distribution products”) does not create an issue of fact as to whether
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`they are related.3 See In re Sungard Dev. Corp., 1999 WL 381033, *3-*4 (T.T.A.B. June 4, 1998)(Ex. AAA)(non-
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`precedential)(declining to interpret “computer programs” to include “all types of computer programs” because the
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`term is broad and “thousands of computer programs are sold in today’s marketplace for diverse purposes). See also
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`In Re The W.W. Henry Co., L.P., 82 U.S.P.Q.2d 1213, 1215 (T.T.A.B. 2007)(“to demonstrate that goods are related,
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`it is not sufficient that a particular term may be found which may broadly describe the goods.”); Gen. Elec. Co. v.
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`Graham Magnetics Inc., 197 U.S.P.Q. 690, 694 (T.T.A.B. 1977)(“It is [] not enough to find one term that may
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`generically describe the goods. More must be shown ….”).
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`Petitioner’s argument that rack mountable power strips are within its zone of expansion also is meritless.
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`(Opp., 14; Bhanoo Dec., ¶ 26.) Petitioner does not sell any rack mountable products, much less power strips, and has
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`no current plans to develop or sell any rack mountable products. (Ex. UU, 168:22-173:7.) At most, Petitioner
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`anticipates “possibly developing” some unknown rack mountable products in the future. (Ex. UU, 173:4-7; Bhanoo
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`Dec., ¶ 26.) Such conjecture is insufficient to create a disputed issue of fact. See S. C. Johnson & Son, Inc. v.
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`Johnson, 81 U.S.P.Q. 509, 513 (2d Cir. 1949), cert. denied, 83 U.S.P.Q. 543 (U.S. 1949)(plaintiff not allowed to
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`“reach a choking hand into a market not its own” unless it could make a strong showing of probable expansion).
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`Petitioner’s argument that Schneider Electric’s introduction of a pre-constructed datacenter creates an issue
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`of fact as to whether purchasers would perceive the parties’ Goods as emanating from the same source also is
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`baseless. (Opp., 8, 14-15; Bhanoo Dec., ¶ 43.) Schneider’s pre-constructed datacenter is an entirely different product
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`than either party’s Goods, and therefore fails to prove that any purchasers have become conditioned to perceive the
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`3 There is no evidence that anyone has ever described Registrant’s power injectors with any of these terms.
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`ME1 15057670v.1
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`parties’ different Goods as coming from the same source. See In Re Optical Sensors Inc., 2007 WL 2415745
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`(T.T.A.B. Aug. 13, 2007)(Ex. BBB)(non-precedential)(ambulatory blood pressure monitoring equipment and non-
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`invasive hemodynamic monitoring equipment not related despite evidence of other products that combine blood
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`pressure and hemodynamic monitoring equipment into integrated systems).
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`Petitioner’s reliance on In re Toshiba Medical Sys. Corp., 91 U.S.P.Q.2d 1266 (T.T.A.B. 2009), Envirotech
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`Corp. v. Nat’l Serv. Indus., Inc., 197 U.S.P.Q. 292 (T.T.A.B. 1977), and HRL Assocs. v. Weiss Assocs. Inc., 12
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`U.S.P.Q.2d 1819 (T.T.A.B. 1989), is misplaced. In Toshiba, MRI and ultrasound machines were complementary
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`because they were used by the same physician on the same patient “as part of a common diagnostic approach”, and
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`that same physician was involved in the purchasing decision for both parties’ goods. 91 U.S.P.Q.2d at 1268.
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`Similarly, in Envirotech, lighting fixtures and pollution control equipment were complementary because the former
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`were “installed as an integral part of or in very close and obvious association with” the latter.4 197 U.S.P.Q. at 295.
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`Further, Petitioner acknowledges that in Envirotech “the goods of both parties were purchased by the same end-
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`users.” (Opp., 15.) In this case, neither party’s Goods require the other for their use or functionality and are
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`decidedly not complementary. Moreover, the parties’ purchasers are indisputably different and mutually exclusive.
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`See supra, pp. 2-4. HRL, on the other hand, is an initial interest confusion case, involving directly competitive
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`software. Consumer sophistication did not control in HRL because of the potential that “opposer may be precluded
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`from further consideration by the potential purchaser in his or her buying decision (which may, in turn, prevent
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`opposer from making a sale)” as a result of the initial interest confusion. 12 U.S.P.Q.2d at 1823. Here, Petitioner
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`admits the parties’ Goods do not compete in any way (Ex. UU, 168:9-24). Thus, even if potential purchasers were
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`initially confused (which there is no evidence of) they would not –and indeed could not—substitute one party’s
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`Goods for the other.
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`5. There is No Evidence of Actual Confusion Confirming That Confusion is Not Likely
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`Despite arguing the parties have a 40% overlap in Petitioner’s customer base, a 20% overlap in
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`“intermediate purchasers”, and 65% overlap in Petitioner’s customer base visiting Registrant’s trade show exhibits,
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`4 In contrast to Petitioner’s assertion, in Envirotech the words “in close association” did not mean “in close
`proximity” (Opp., 15), but rather meant that one product was required for use with the other to meet specifications.
`Id. at 294. There is no evidence the Goods in this case are ever installed “in close association”.
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`ME1 15057670v.1
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`over a three year period (Opp., 9-10), Petitioner cannot point to a single instance of actual customer confusion.
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`Rather, Petitioner alleges that Mosman, a long-time consulting engineer and “huge supporter of [Petitioner] from
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`day one” (Ex. K, 142:18-19), experienced confusion after encountering Registrant’s literature. (Opp., 10-11.) But
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`this argument fails for several reasons. First, it is undisputed that neither Mosman nor his consulting firm is a
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`purchaser of Petitioner’s Goods, and therefore the alleged inquiry indisputably did not result in a commercial injury.
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`(Ex. K, 147:25-148:6, 156:17-157:8.) Lang v. Ret. Living Pub. Co., Inc., 21 U.S.P.Q.2d 104, 1046 (2d. Cir. 1991).
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`Moreover, Petitioner does not dispute that Mosman has continued to recommend Petitioner’s Goods, and, therefore,
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`Petitioner was not damaged by any alleged misunderstanding. (Ex. K, 150:22-24.) See V&S Vin Spirit Aktiebolag v.
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`Absolute Publ’g USA Inc., 2005 WL 3272828, *8 (S.D.N.Y. Nov. 22, 2005)(Ex. CCC)(no likelihood of confusion
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`where actual confusion did not have “any impact on consumers’ choices to the detriment of the company.”). And
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`assuming arguendo that Mosman was actually confused, this isolated instance is de minimis, and insufficient to
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`justify a finding of likelihood of confusion. Savin Corp. v. Savin Group, 73 U.S.P.Q.2d 1273,1285 (2d Cir.
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`2004). Indeed, despite an alleged “major” overlap in customers (Opp., 9), Petitioner’s identification of only one
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`instance of suspected actual confusion confirms that confusion is not likely. Hayden Switch and Instr., Inc. et al. v.
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`Rexnord, Inc., 4 U.S.P.Q.2d 1510, 1517 (D. Conn. 1987)(where “plaintiffs were able to produce only one witness
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`who even suggested the possibility of confusion; the inability to produce any other credible witnesses confirms
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`that confusion is not likely.”)(emphasis added).
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`Unable to prove an instance of actual confusion, Petitioner’s argument devolves into speculation about the
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`likelihood of initial interest confusion. (Opp., 24)(“This leaves open the distinct possibility that Registrant’s use of
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`marks similar to the trade designations of LayerZero could cause initial interest confusion ….”)(emphasis added).
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`Not only does the possibility of initial interest confusion not create an issue of fact as to actual confusion, but
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`Petitioner’s initial interest theory also fails in light of the lack of relation between the parties’ Goods, the
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`sophistication of the parties’ respective purchasers, and the careful, deliberate and lengthy purchasing processes. See,
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`e.g., Sensient Techs. v. Sensory Effects, 96 U.S.P.Q.2d 1164, 1172 (8th Cir. 2010)(rejecting initial interest confusion
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`argument for similar goods where customers are sophisticated and exercise a relatively high degree of care);
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`Checkpoint Sys. Inc. v. Check Point Software Techs., 60 U.S.P.Q.2d 1609, 1627 (3d Cir. 2001)(where products are
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`ME1 15057670v.1
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`dissimilar and consumers exercise high degree of care, “some initial confusion will not likely facilitate free riding on
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`the goodwill of another mark, or otherwise harm the user claiming infringement.”).
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`6. Petitioner’s Purported Trade Name Rights Do Not Preclude Summary Judgment
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`Although analysis of the similarity of the marks is unnecessary to granting summary judgment of no
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`likelihood of confusion in view of the DuPont factors addressed above (Reg. Br., 19-20), Petitioner attempts to skirt
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`the differences between its trademark “LayerZero Power Systems, Inc.” and Registrant’s Marks by asserting its
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`purported rights in the abbreviated trade name “LayerZero”. (Opp., 3-4). But Petitioner fails to identify any evidence
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`establishing rights in the “LayerZero” trade name prior to the September 26, 2008 filing date of Registrant’s Marks.
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`The only evidence Petitioner cites is Bhanoo’ s conclusory statement that Petitioner “has done business under the
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`trade names ‘LayerZero’ … continuously since its founding in 2001.” (Bhanoo Dec., ¶ 11.) This conclusory
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`allegation is insufficient to create an issue of fact as to prior trade name rights. Z Prods., Inc. v. SNR Prods., Inc.,
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`2011 U.S. Dist. LEXIS 95304, *15-16 (M.D. Fla. Aug. 18, 2011)(Ex. DDD)(conclusory assertion of trademark
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`usage without specific supporting facts does not create an issue of fact as to prior rights). Bhanoo cites to Ex. 23 for
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`evidentiary support, but none of the documents in the exhibit prove usage prior to Registrant’s September 26, 2008
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`filing date. Two of the documents are dated after Registrant’s filing date (LZPS_000271 and 002896 are dated 2009
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`and 2012, respectively), another is an undated picture (LZPS_000039), and the other is a web page dated “2008”
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`(LZPS_001075-1076), but without a month and day the web page does not establish trade name rights prior to
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`Registrant’s September 26, 2008 filing date. (Ex. 23.) See EZ Loader Boat Trailers, Inc. v. Cox Trailers, Inc., 213
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`U.S.P.Q. 597 n. 5 (T.T.A.B. 1982)(where the earliest date of documentary evidence is a year, and the month and day
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`are unknown, the Board will not presume any date earlier than the last day of that year).
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`7. Conclusion
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`For the foregoing reasons and those set forth in Registrant’s Memorandum in Support of its Motion for
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`Summary Judgment [D.I. #16], Registrant’s Motion for Summary Judgment should be granted.
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`Date: February 13, 2013
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`Respectfully submitted,
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`/Mark D. Giarratana/
`Mark D. Giarratana
`Shawn S. Smith
`MCCARTER & ENGLISH, LLP
`185 Asylum Street
`CityPlace I
`Hartford, CT 06103
`860.275.6700
`860.724.3397 (fax)
`mgiarratana@mccarter.com
`shsmith@mccarter.com
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`ATTORNEYS FOR REGISTRANT
`ORTRONICS, INC.
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`CERTIFICATE OF SERVICE
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`I HEREBY CERTIFY that on February 13, 2013, the foregoing document was submitted for filing to
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`the Trademark Trial and Appeal Board through the ESTTA system and a copy of this paper has been served on
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`Petitioner LayerZero Power Systems, Inc. on this date via e-mail to:
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`Raymond Rundelli, Esq.
`Juliet P. Castrovinci, Esq.
`CALFEE, HALTER & GRISWOLD LLP
`The Calfee Building
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