Octocom Systems, Inc. v. Houston Computer Services, Inc.

• Decision Date: 02 November 1990
• Docket Number: No. 90-1196,90-1196
• Citation: 16 USPQ2d 1783,918 F.2d 937
• Parties: OCTOCOM SYSTEMS, INC., Appellant, v. HOUSTON COMPUTER SERVICES, INC., Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

Page 937

918 F.2d 937

16 U.S.P.Q.2d 1783

OCTOCOM SYSTEMS, INC., Appellant, v. HOUSTON COMPUTER SERVICES, INC., Appellee.

No. 90-1196.

United States Court of Appeals Federal Circuit.

Nov. 2, 1990.

Brian M. Dingman, Law Offices of Joseph S. Iandiorio, Waltham, Mass., argued for appellant. With him on the brief was Joseph S. Iandiorio.

J. Paul Williamson, Arnold, White & Durkee, Arlington, Va., argued for appellee.

Before NIES, Chief Judge, ARCHER and CLEVENGER, Circuit Judges.

NIES, Chief Judge.

Octocom Systems, Inc. (OSI), appeals from the final decision of the U.S. Patent and Trademark Office, Trademark Trial and Appeals Board, in Opposition No. 76345, refusing registration of OSI's alleged trademarks OCTOCOM alone and with a stylized "O" design for "modems," Serial Numbers 618,049 and 618,030, respectively. On a motion for summary judgment, the board held that OSI's marks so resemble the previously used and registered trademark OCTACOMM for computer programs of Houston Computer Services, Inc., as to be likely to cause confusion, mistake or deception and were, therefore, unregistrable under section 2(d) of the Lanham Act, 15 U.S.C. Sec. 1052(d) (1988). Our jurisdiction rests on 28 U.S.C. Sec. 1295(a)(4)(B). We affirm and grant Houston's motion for sanctions for a frivolous appeal.

I

OSI filed applications on September 2, 1986, for registration of the marks OCTOCOM and O/OCTOCOM for "data communications equipment--namely, modems and computer programs for use in or in conjunction with modems, such programs being distributed in magnetic media and read-only memory and in other forms." Despite the presence on the register of Reg. No. 1,338,874 issued June 4, 1985, to Houston for the virtually identical mark OCTACOMM for "computer programs recorded on magnetic tapes and discs and manuals therefor all sold as a unit," the examiner approved OSI's alleged marks for publication. ¹ Houston timely opposed.

As grounds for opposition, Houston alleged that it produces and sells a variety of personal and professional computers to be connected in networks with a host computer; that it offers its computer programs under the mark OCTACOMM and has done so since long prior to use of OCTOCOM by OSI; that it is the owner of Reg. No. 1,338,874 issued June 4, 1985, covering such use of the OCTACOMM mark; and that OSI's marks OCTOCOM alone or with the design so resemble Houston's previously used and registered mark OCTACOMM as to be likely, when used in conjunction with applicant's goods, to cause confusion, to cause mistake or to deceive. OSI responded with a general denial. On April 27, 1988, Houston filed the motion for summary judgment which, after much legal maneuvering, was ultimately granted in August 1989. The decision was reaffirmed on a petition for reconsideration in October 1989.

As indicated, OSI originally sought registration of the OCTOCOM marks for modems and computer programs. OSI first filed a motion to amend its answer to add a counterclaim to cancel Houston's registration in part. OSI asserted the theory that Houston had "abandoned" its registration, which covered computer programs broadly, to the extent that the description therein encompassed types of computer programs which Houston had never sold under the mark. In effect, OSI sought to narrow the description of goods in Houston's registration to limited types of computer programs sold to a specific class of customers. In denying the motion, the board held, inter alia, that even if Houston's registration were to be restricted, Houston's goods would be encompassed within OSI's unrestricted description of its goods as "computer programs". It further opined that the relief sought was not supported by any precedent.

OSI then filed a motion to delete all reference to "computer programs" in its application. This motion to amend was granted. However, in accordance with board practice, OSI was required to agree to entry of a judgment against it that the marks OCTOCOM and OCTOCOM with the "O" design, when used for the broader identification (i.e., including computer programs), would be likely to cause confusion with Houston's mark OCTACOMM. Houston Computer Servs. v. Octocom Sys., Opp. No. 76345, slip op. at 3 (TTAB Apr. 11, 1989). Thus, OSI's application came to be limited to registration of the mark OCTOCOM for "modems" only.

Having restricted its application to "modems", OSI again tried to add a counterclaim for partial cancellation of Houston's registration. The board again denied the motion. The board found, inter alia, that even though the direct overlap in the parties' goods had been eliminated, the likelihood-of-confusion issue without the restriction of Houston's goods would be essentially the same as with the proposed restriction. The board noted that Houston's programs are intended for use whenever there is need for communications between a host computer and other equipment such as a "modem" and that OSI's identification of its "modems" was unrestricted. Because allowing the amendment would serve no purpose, the board denied OSI's motion. In this appeal, OSI does not challenge the denial of that motion.

Having finally disposed of preliminary skirmishes, the board turned to the merits of Houston's pending motion for summary judgment. Houston's motion was based on the marks and goods as set forth in the application and registration, respectively, as well as evidence that the goods of the parties were closely related, that the OCTACOMM mark was arbitrary, and that there was no other variation of the OCTACOMM mark for computer products known to Houston. In response to Houston's motion, OSI submitted a brief in opposition accompanied by an affidavit of its president, Ian R. Davison. Mr. Davison averred that he was not aware of any confusion as to the source of OSI's modems, and further averred: that not all data communications equipment requires software of the type offered for sale by Houston under the OCTACOMM mark; that Houston's software need not operate with modems; that OSI software controls the principal features of OSI's family of modems and modem controllers; and that Houston's software may not be used to perform this control function. The declaration also presented information directed toward differentiating OSI's channels of trade and advertising media from those for Houston's computer programs.

Upon consideration of the record, the board concluded that there was no genuine issue of material fact and that the use of OCTOCOM with or without the "O" design for modems would be likely to cause confusion with the prior use of OCTACOMM for computer programs. OSI challenges both of these rulings. ²

II

A Alleged Factual Disputes

Rule 56 of the Federal Rules of Civil Procedure is made applicable to proceedings before the Trademark Trial and Appeal Board by 37 C.F.R. Sec. 2.116(a) (1989).

Rule 56 provides in pertinent part:

(c) ... The judgment sought shall be rendered forthwith if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law....

....

(e) ... When a motion for summary judgment is made and supported as provided in this rule, an adverse party may not rest upon the mere allegations or denials of the adverse party's pleading, but the adverse party's response, by affidavits or as otherwise provided in this rule, must set forth specific facts showing that there is a genuine issue for trial. If the adverse party does not so respond, summary judgment, if appropriate, shall be entered against the adverse party.

Where a motion for summary judgment is made and supported in accordance with the above rule, it is incumbent on the nonmovant in a summary judgment proceeding to proffer countering evidence sufficient to create a genuine factual dispute. A dispute is genuine only if, on the entirety of the record, a reasonable jury could resolve a factual matter in favor of the non-movant. Sweats Fashions v. Pannill Knitting Co., 833 F.2d 1560, 1562, 4 USPQ2d 1793, 1795 (Fed.Cir.1987). The party opposing a motion for summary judgment must point to an evidentiary conflict created on the record at least by a counterstatement of facts set forth in detail in an affidavit by a knowledgeable affiant. The record must be viewed in a light most favorable to the party opposing the motion. Barmag Barmer Maschinenfabrik AG v. Murata Machinery, Ltd., 731 F.2d 831, 836, 221 USPQ 561, 564 (Fed.Cir.1984).

As stated in Barmag Barmer Maschinenfabrik AG, 731 F.2d at 835-36, 221 USPQ at 564 A critical factor in a motion for summary judgment ... is the determination by the court that there is no genuine issue of material fact.... The party opposing the motion must point to an evidentiary conflict created on the record at least by a counter statement of a fact or facts set forth in detail in an affidavit by a knowledgeable affiant.

See also Pure Gold, Inc. v. Syntex (U.S.A.), Inc., 739 F.2d 624, 222 USPQ 741 (Fed.Cir.1984) (trademark opposition).

OSI argues that the board erred in holding that the record created no genuine issue of material fact in view of the affidavit of its president, Ian R. Davison, which averred certain facts which, per OSI, must be considered in resolving the ultimate issue of likelihood of confusion under the precedent of In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA 1973). OSI argues that the averments in Davison's affidavit "establish a genuine issue necessitating a trial on the merits." This argument is wholly without evidentiary foundation. OSI points to no conflicting evidence which would establish an underlying fact one way or the other depending on which party's evidence is believed. When pressed at oral argument, OSI's counsel could not identify a single factual issue in dispute. The ostensible "fact" disputes,...