Stamps.Com Inc. v. Imayl Inc.

• Decision Date: 14 May 2018
• Docket Number: Application Serial 86806094,Opposition 91227829
• Court: Trademark Trial and Appeal Board
• Parties: Stamps.com Inc. v. Imayl Inc. Counterclaim to cancel Reg. No. 1930424

Stamps.com Inc. v. Imayl Inc.

Counterclaim to cancel Reg. No. 1930424

Opposition No. 91227829

Application Serial No. 86806094

United States Patent and Trademark Office, Trademark Trial and Appeal Board

May 14, 2018

THIS OPINION IS NOT A PRECEDENT OF THE TTAB

Mary Ann Novak of Hilgers Graben PLLC for Stamps.com Inc.

John Alumit of Alumit IP for Imayl Inc.

Before Wellington, Greenbaum, and Masiello, Administrative Trademark Judges.

OPINION

Wellington, Administrative Trademark Judge.

Applicant Imayl, Inc., seeks registration of the standard character mark IMAYL for goods and services identified as:

Computer software for use in mail management, namely creating and developing invoices, tracking inbound parcels tracking mail, sending mail alerts, scanning parcels, tendering invoices, verifying postage, and monitoring and managing productivity and processes, in International Class 9; and

Design and development of computer software; Providing an online non-downloadable Internet-based system application featuring technology enabling users to track the delivery and acceptance of mail and parcels, and for inventory management, over computer networks, intranets and the internet, and also featuring alert notifications; Providing on-line non-downloadable software for tracking the delivery and acceptance of mail and parcels, and for inventory management, over computer networks, intranets and the internet, and also featuring alert notifications; Providing temporary use of non-downloadable computer software for tracking documents over computer networks, intranets and the internet; Providing temporary use of non-downloadable computer software for tracking freight over computer networks, intranets and the internet; Providing temporary use of non-downloadable computer software for tracking packages over computer networks, intranets and the internet; Software as a service (SAAS) services featuring software for use in tracking the delivery and acceptance of items and parcels, and for inventory management, over computer networks, intranets and the internet, and also featuring alert notifications, in International Class 42.^[1]

Opposer, Stamps.com, Inc., has opposed registration of Applicant's mark on the ground of likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). Opposer pleaded ownership of Registration No. 1930424 ("pleaded registration") for the mark I-MAIL for "computer program for the transmission of data between multiple locations and the manuals for the program sold as a unit, " in International Class 9.^[2] Opposer also pleaded common law rights in the same mark "in connection with [the software described in the registration] and related software and services in the field of postage, shipping and mailing, " and that these rights "pre- date the first use date claimed by Applicant in the Application."^[3] Opposer alleged that Applicant's mark is "likely to cause confusion, mistake and deception among purchasers and users as to the source or origin" of the parties' goods.^[4]

Applicant made certain admissions with regard to allegations involving its application, ^[5] but otherwise denied the salient likelihood of confusion allegations in the notice of opposition. Applicant also pleaded a counterclaim to cancel Opposer's pleaded registration on the ground that the mark "has become generic of the identified goods."^[6] Specifically, Applicant alleges that "[t]he wording 'I-' and 'MAIL' are each generic for Opposer's computer programs which are designed for the Internet and specifically for the purposes of 'MAIL.'"^[7]

Opposer filed an answer to the counterclaim denying the central allegations to the counterclaim that its mark, I-MAIL, has become generic.^[8]

Opposer's opposition claim and Applicant's counterclaim have been briefed.

I. The Record and Evidentiary Objections

The record includes the pleadings and, by operation of Trademark Rule 2.122, the files of the involved application and registration.

Opposer submitted the following evidence:

• The testimonial declaration of Seth Weisberg, ^[9] Chief Legal Officer of Opposer, with exhibits that include, inter alia, printouts from Opposer's website (www.stamps.com), printouts from Applicant's website (www.imayl.com), and a copy of a document that was "produced" by Applicant;^[10]

• Opposer's first notice of reliance, ^[11] attaching copies of Applicant's responses to Opposer's interrogatory nos. 9-12 and 19, and Opposer's admission request no. 2.

• Opposer's second notice of reliance, ^[12] attaching copies of third-party registrations for marks with an "I-" prefix, as well as printouts involving these registrations from the Office's electronic database TESS.

Applicant submitted the following evidence:

• Applicant's first notice of reliance, ^[13] attaching printouts of Opposer's and Applicant's websites, copies of online dictionary definitions and other online authoritative resources, and a copy of Reg. No. 4196916 for the mark TOPS IMAIL and its file history.

• Applicant's second notice of reliance, ^[14] attaching copies of Opposer's responses to Applicant's interrogatories and Applicant's admission requests.^[15]

• The testimonial declaration of David Vannoy, ^[16] Applicant's Vice President of sales, with exhibits that include, inter alia, printouts from Applicant's website, Applicant's promotional materials, and printouts from Opposer's website.

With its brief, Opposer attached an appendix listing objections to evidence submitted by Applicant, including portions of Mr. Vannoy's testimony and related exhibits.^[17] The bases for the objections include: hearsay to the extent Applicant attempts to rely on the truth of any statements made in some of the submitted printed materials; relevance; improper matter for judicial notice; and lack of foundation. Opposer also takes issue with the probative value or weight of certain testimony and evidence.

Applicant responded in its brief to Opposer's evidentiary objections.^[18]

In light of the type of objected-to evidence and the bases of the objections, we choose not to address them in this decision. The Board is capable of weighing the relevance and strength or weakness of the objected-to testimony and evidence, including any inherent limitations. As necessary and appropriate, we will point out any limitations in the evidence, e.g., lack of foundation for testimony, or otherwise note that the evidence cannot be relied upon in the manner sought, e.g., based on improper hearsay. In doing so, we also keep in mind the various objections raised by Opposer. We accord whatever probative value the subject testimony and evidence merit. See Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 U.S.P.Q.2d 1477, 1479 (TTAB 2017). We have noted where we have not considered evidence proffered.

II. Standing in Opposition and Counterclaim Cancellation

Standing is a threshold issue that must be proven by the plaintiff in every inter partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 U.S.P.Q.2d 1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S.Ct. 1401 (2015). The U.S. Court of Appeals for the Federal Circuit has enunciated a liberal threshold for determining standing, namely that a plaintiff must demonstrate that it possesses a "real interest" in a proceeding beyond that of a mere intermeddler, and "a reasonable basis for his belief of damage." Empresa Cubana Del Tabaco, 111 U.S.P.Q.2d at 1062 (citing Ritchie v. Simpson, 170 F.3d 1902, 50 U.S.P.Q.2d 1023, 1025-26 (Fed. Cir. 1999)). A "real interest" is a "direct and personal stake" in the outcome of the proceeding. Ritchie v. Simpson, 50 U.S.P.Q.2d at 1026.

In this case, Opposer made of record by notice of reliance a copy of its pleaded registration for the mark I-MAIL, as well as TESS electronic database printouts showing the registration's current status and title.^[19] In addition, Opposer has established that it is a "provider of online mailing and shipping solutions" and that it provides software and services that allow "individuals, home offices, small businesses, corporations, governmental entities, and other entities to print U.S. postage using any PC and an ordinary inkjet or laser printer directly onto envelopes, plain paper, or labels."^[20] In view thereof, Opposer has established its standing.

Applicant's standing to assert a counterclaim to cancel Opposer's pleaded registration is inherent in its position as defendant in the opposition proceeding. Finanz St. Honore, B.V. v. Johnson & Johnson, 85 U.S.P.Q.2d 1478, 1479 (TTAB 2007); Carefirst of Md., Inc. v. FirstHealth of the Carolinas, Inc., 77 U.S.P.Q.2d 1492, 1502-03 (TTAB 2005).

III. Counterclaim Cancellation - Genericness

We first address Applicant's counterclaim to cancel Opposer's pleaded, registered mark, I-MAIL, on the ground of genericness. The viability of the registration obviously has ramifications with respect to Opposer's rights in the mark I-MAIL and our likelihood of confusion analysis.

The Supreme Court has held that "[g]eneric terms are not registrable, and a registered mark may be canceled at any time on the grounds that it has become generic." Park 'N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 224 U.S.P.Q. 327, 329 (U.S. 1985) (citing 15 U.S.C. §§ 1052, 1064). This is so because "[g]eneric terms, by definition incapable of indicating source, are the antithesis of trademarks, and can never attain trademark status." In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 4 U.S.P.Q.2d 1141, 1142 (Fed. Cir. 1987); see also Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 114 U.S.P.Q.2d 1827, 1830 (Fed. Cir. 2015).

A generic term "is the common descriptive name of a class of goods or services."...