Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA908206 Filing date: 07/09/2018 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91208416 Party Plaintiff PayPal, Inc. Correspondence ROCHELLE D ALPERT Address MORGAN LEWIS & BOCKIUS LLP ONE MARKET SPEAR STREET TOWER SAN FRANCISCO, CA 94105 UNITED STATES Email: [email protected], [email protected], [email protected], [email protected], [email protected], [email protected], [email protected] Submission Brief on Merits for Plaintiff Filer's Name Sharon R. Smith Filer's email [email protected], [email protected], sftrade- [email protected], [email protected] Signature /SRS/ Date 07/09/2018 Attachments Opposer Trial Brief iso Consolidated Oppositions and Index of Objec- tions.pdf(443609 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
In the matter of application Serial No. 85/578,671 Filed March 23, 2012 For the mark ZOOMPAY Published in the OFFICIAL GAZETTE on August 14, 2012
In the matter of application Serial No. 86/192,659 Filed February 13, 2014 For the mark ZOOMPAY Published in the OFFICIAL GAZETTE on July 15, 2014
PAYPAL, INC.,
Opposer, Opposition No.: 91,208,416 (parent) v. 91,217,374 (child) ZT HOLDINGS, LLC
Applicant.
OPPOSER’S TRIAL BRIEF IN SUPPORT OF CONSOLIDATED OPPOSITIONS TO APPLICATIONS FOR ZOOMPAY
DB2/ 33770618.1
TABLE OF CONTENTS Page I. DESCRIPTION OF THE RECORD ...... 6 A. Overall Use and Strength of the XOOM Marks ...... 6 B. Use of the XOOM Marks for Relevant Financial Transaction and Electronic Payment Goods and Services ...... 7 C. Consumers’ Understanding of Goods and Services for Use with XOOM Marks ...... 11 D. Federal Trademark Registrations for XOOM Marks and Specimens Filed ...... 11 E. Third Party Registrations Evidencing Overlap in Goods and Services ...... 12 F. Consumers’ References to XOOM Pronounced as “ZOOM” ...... 12 G. Opposer’s Consumer Marketing about XOOM Evidences its Pronunciation as “ZOOM” ...... 12 H. Relevant Dictionary Definitions ...... 12 I. Evidence of Overlap with Class 36 Services for ZOOMPAY ...... 13 J. Evidence that Applicant Lacks a Bona Fide Intent to Use ZOOMPAY for Any Computer Operating Software ...... 13 K. Evidence of Meaning of “Computer Operating Software” ...... 13 L. Judgment in Favor of Opposer ...... 14 M. Admissions Against Interest ...... 14 N. Applicant’s Evidence and Objectionable Evidence ...... 14 II. STATEMENT OF THE ISSUES...... 15 III. FACTS ...... 16 A. Opposer Has Prior Trademark Rights in the XOOM Marks ...... 16 B. Applicant’s ZOOMPAY Trademark Application No. 85/578,671 for Financial Transaction and Electronic Payment Services ...... 24 C. Applicant’s ZOOMPAY Intent-to-Use Trademark Application No. 86/192,659 for Class 9 Computer Operating Software ...... 25 D. Procedural Status of Consolidated Opposition ...... 25 IV. ARGUMENT ...... 26 A. Evidence Establishes a Likelihood of Confusion as to Both Opposed Applications for ZOOMPAY ...... 26 B. Evidence of Record of Applicant’s Objective Lack of Bona Fide Intent to Use ZOOMPAY (Application No. 86/192,659) in Commerce for Computer Operating Software ...... 46 V. CONCLUSION ...... 52
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TABLE OF AUTHORITIES
Page(s)
Cases
In re 1st USA Realty Prof’ls, Inc., 84 U.S.P.Q.2d 1581 (TTAB 2007) ...... 29, 30
In re Albert Trostel & Sons Co., 29 U.S.P.Q.2d 1783 (TTAB 1993) ...... 37
AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403 (CCPA 1973) ...... 42
In re Appetito Provs. Co., Inc., 3 U.S.P.Q.2d 1553 (TTAB 1987) ...... 29
Baroid Drilling Fluids, Inc. v. Sun Drilling Prods., 24 USPQ2d 1048 (TTAB 1992) ...... 43
Black & Decker Corp. v. Emerson Elec. Co., 84 U.S.P.Q.2d 1482, 2007 WL 894416 (TTAB 2007) ...... 30
Brdwy. Catering Corp. v. Carla, Inc., 215 USPQ 462 (TTAB 1982) ...... 44
Clinton Detergent Co. v. Procter & Gamble Co., 302 F.2d 745 (CCPA 1962) ...... 31
Commodore Elecs. Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503 (TTAB 1993) ...... 50
In re Davey Prods. Pty. Ltd., 92 U.S.P.Q.2d 1198 (TTAB 2009) ...... 37
DC Comics v. Pan Am. Grain Mfg. Co., 77 USPQ2d 1220 (TTAB 2005) ...... 44
In re E. I. DuPont de Nemours & Co., 177 USPQ 563 (CCPA 1973) ...... passim
In re El Torito Rests., Inc., 9 U.S.P.Q. 2d 2002 (TTAB 1988) ...... 31
Eveready Battery Co., Inc. v. Green Planet, Inc., 91 U.S.P.Q.2d 1511, 2009 WL 2176668 (TTAB 2009) ...... 30
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TABLE OF AUTHORITIES (continued) Page(s)
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 196 U.S.P.Q. 24 (CCPA 1976) ...... 28
Fiserv, Inc. v. Elec. Transaction Sys. Corp., 113 USPQ 2d 1913 (TTAB 2015) ...... 37
Fossil Inc. v. Fossil Group, 49 U.S.P.Q.2 1451, 1998 WL 962201 (TTAB 1998) ...... 32
Fram Trak Indus. v. Wiretracks LLC, 77 U.S.P.Q.2d 2000 (TTAB 2006) ...... 27
Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261 (Fed. Cir. 2002)...... 33, 41
Hi-Shear Corp. v. Nat. Auto. Parts Ass’n, 152 U.S.P.Q. 341 (TTAB 1966) ...... 42
Honda Motor Co. v. Winkelmann, 90 USPQ2d 1660 (TTAB 2009) ...... 50
Hornblower & Weeks Inc. v. Hornblower & Weeks Inc., 60 USPQ2d 1722 (TTAB 2001) ...... 43
In re i.am.Symbolic, LLC, 866 F.3d 1315 (Fed. Cir. 2017)...... 42
In re Infinity Broad. Corp. of Dallas, 60 U.S.P.Q.2d 1214 (TTAB 2001) ...... 31
In re J.M. Originals Inc., 6 U.S.P.Q.2d 1393 (TTAB 1987) ...... 31
Jules Berman & Assos., Inc. v. Consol. Distilled Prods, Inc., 202 U.S.P.Q. 67, 1979 WL 24832 (TTAB 1979) ...... 30
Kenner Parker Toys, Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 22 U.S.P.Q.2d 1453 (Fed. Cir. 1992) ...... 41
L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883 (TTAB 2008) ...... 50
Lane Ltd. v. Jackson Intl. Trading Co., 33 USPQ2d 1351 (TTAB 1994) ...... 50
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TABLE OF AUTHORITIES (continued) Page(s)
In re M. Serman & Co., Inc., 223 U.S.P.Q. 52 (TTAB 1984) ...... 29
M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368, 114 USPQ2d 1892 (Fed. Cir. 2015) ...... 50
May Dept. Stores Co. v. Prince, 200 USPQ 803 (TTAB 1978) ...... 36
McCormick & Co. v. Summers, 354 F.2d 668 (CCPA 1966) ...... 42
In re Microsoft Corp, 68 U.S.P.Q.2d 1195 (TTAB 2003) ...... 33
In re Mighty Leaf Tea, 94 U.S.P.Q.2d 1257 (Fed. Cir. 2010) (ML confusingly similar to ML MARK LEES (stylized) for related skincare products) ...... 32
Nat’l Cable Television Ass’n, Inc. v. Amer. Cinema Editors, Inc., 937 F.2d 1572 (Fed. Cir. 1991)...... 42
In re Nat’l Data Corp., 753 F.2d 1056, 224 U.S.P.Q. 749 (Fed. Cir. 1985) ...... 30
Nina Ricci, SARL v. ETF Enters., Inc., 889 F.2d 1070 (Fed. Cir. 1989)...... 44
Octocom Sys., Inc. v. Houston Comp. Servs., Inc., 918 F.2d 937 (Fed. Cir. 1990)...... 39
On-Line Careline Inc. v. Am. Online, Inc., 229 F.3d 1080, 56 U.S.P.Q.2d 1471 (Fed. Cir. 2000) ...... 28
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369 (Fed. Cir. 2005)...... 26, 29
Presto Prod., Inc. v. Nice-Pak Prods. Inc., 9 U.S.P.Q.2d 1895 (TTAB 1988) ...... 30
San Fernando Elec. Mfg. Co. v. JFD Elecs. Comp. Corp., 196 USPQ 1 (CCPA 1977) ...... 29
Saul Zaentz Co. v. Bumb, 95 USPQ2d 1723 (TTAB 2010) ...... 50
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TABLE OF AUTHORITIES (continued) Page(s)
Savin Corp. v. Savin Group, 391 F.3d 439 (2d Cir. 2004)...... 40
In re Shell Oil Co., 992 F.2d 1204, 26 U.S.P.Q.2d 1687 (Fed. Cir. 1993) ...... 33
In re St. Helena Hosp., 774 F.3d 747 (Fed. Cir. 2014)...... 32
Starbucks U.S. Brands, LLC v. Ruben, 78 U.S.P.Q.2d 1741 (TTAB 2006) ...... 40
Stone Lion Capital Partners, L.P., v. Lion Capital LLP, 746 F.3d 1317 (Fed. Cir. 2014)...... 31, 32
Swiss Grill Ltd. v. Wolf Steel Ltd., 115 USPQ2d 2001 (TTAB 2015) ...... 50
Time Warner Entmt. Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002) ...... 36, 44
Venture Out Prop. LLC v. Wynn Resorts Holdings, LLC, 81 U.S.P.Q.2d 1887 (TTAB 2007) ...... 27, 30, 39
Vibrant Sales, Inc. v. New Body Boutique, Inc., 652 F.2d 299 (2d Cir. 1981)...... 40
Statutes
15 U.S.C. § 1051(b) ...... 50 §§ 1052, 1052(d) ...... 26 § 1057(b) ...... 27 §§ 1065, 1115(b) ...... 27, 40 § 1072...... 25, 27 § 1127...... 28
Other Authorities
37 CFR § 2.122(d)(1) ...... 19
2 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 19:9 ...... 25
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Opposer PayPal, Inc. (“PayPal” or “Opposer”) submits its Trial Brief in support of the
oppositions to Applicant ZT Holdings, LLC (“Applicant”)’s applications for ZOOMPAY pursuant to the schedule for briefing the oppositions in the consolidated proceedings.
Application of the trial record to the established law leads to the singular conclusion that the opposed ZOOMPAY applications for financial transaction and electronic payment services through biometric technology and point of sale computer operating software are likely to cause confusion with Opposer’s long-standing and exclusive use of its XOOM marks for related, overlapping and even competitive goods and services, including electronic financial transaction, money transfer and electronic payment services, and related software and services for facilitating such financial transactions. The record also establishes that the Board should sustain the opposition to Applicant’s intent-to-use application for ZOOMPAY on the alternative ground that Applicant did not have an objective bona fide intent to use the designation for the applied-for Class 9 goods—downloadable computer operating software.
I. DESCRIPTION OF THE RECORD
A. Overall Use and Strength of the XOOM Marks
Through the Trial Testimony Declaration (Dkt. 89) and Trial Testimony Deposition (Dkt.
100, Ex. 154) of Julian King, and representative documentary and video examples of the use of the
XOOM marks submitted through Opposer’s Notices of Reliance (Dkt. 35-36, 47, 56, 86-88, 105), as
further detailed herein, Opposer has submitted substantial evidence of the strength, breadth and reach
of the XOOM marks in the marketplace. For instance, the King Declaration establishes that the
XOOM marks have been continuously used for a wide array of financial transaction, electronic
money transfer, bill payment, and electronic payment services from 2003 to the present, from the
United States to now 67 international countries, and later, a related XOOM mobile application was
offered to facilitate these electronic transfer and payment services. Dkt. 89, ¶¶11-26. Indeed, over
the years, Opposer has spent more than $250 million in advertising and promotion of its XOOM 6 DB2/ 33770618.1
marks, with XOOM becoming widely recognized as a top electronic payment platform, and Opposer
winning awards for its promotional efforts. Id., ¶¶51, 52; see third party recognition, Dkt. 100, Ex.
154, 195:19-196:2; Dkt. 87, Ex. 45 (p.164) 1, Ex. 48 (p.184), Ex. 50 (p.195), Ex. 51 (p.199), Ex. 54
(p.220), Ex. 57 (p.233), Ex. 59 (p.245), Ex. 62 (p.263), Ex. 69 (pp.307-308, 314), Ex. 71 (p.374), Ex.
72 (p.334), Ex. 89 (p.436); Dkt. 88, Ex. 91 (p.5), Ex. 97 (p.32); see awards for advertising, Dkt. 87,
Exs. 73-76 (pp.385-395).
Opposer also submits voluminous representative samples of uses of its XOOM mark for
electronic transactions and payments products and services from 2003 through the present including
on its website xoom.com, social media, video advertisements, transaction data, customer reviews and
transaction notes, and third-party articles and references. Dkt. 35, Exs. 22-26; Dkt. 36, Exs. 30-31,
34-74; Dkt. 47, Exs. 1-14, Dkt. 56, Exs. 15-17, 20-22; Dkt. 86, Exs. 29-31, 33; Dkt. 87, Exs. 34-36;
40-84, 88-90; Dkt. 88, Exs. 91-97, 100-103; Dkt. 105, Exs. 118-120.
B. Use of the XOOM Marks for Relevant Financial Transaction and Electronic Payment Goods and Services
Opposer has submitted incontrovertible evidence of use of its XOOM mark continuously
since 2003 for a wide range of financial transaction, and electronic transfer and payments products
and services. Notably, Opposer’s long-standing common law use of its XOOM marks provides an
independent and separate basis for the Board to sustain these oppositions, as well as based on its
federal registrations. Opposer’s uses of XOOM are voluminously and materially established in the
record from 2003 to the present, including, for example:
For all years of the company’s operation, approximately 10% of all transactions over the
XOOM platform have been for the payment of goods and services. Dkt. 89, ¶15.
1 Citations to pages are references to the referenced page number within in each docket entry. For example, here, the cited page is page 64 out of the 448 pages in Docket No. 87, which page is within Exhibit 45 to the Notice of Reliance. TBMP §801.03.
DB2/ 33770618.1 7
Evidence of use of XOOM for bill payments of Jamaican utility bills from 2003 through at
least 2014 through a partnership with Victoria Mutual. Dkt. 89, ¶¶9-10, Exs. 1 (p.39), 2
(p.44-53), 5 (Video No. 5); Dkt. 86, Ex. 31-A (pp.423-433) (pages from 2005-2014 featuring
XOOM and “Bill Payment - of all of your Jamaican utility bills!”); see also Dkt. 86, Ex. 29
(p.288) (FAQ: “You can pay utility bills directly in Jamaica.”). Mr. King confirmed this
longstanding capability to use XOOM to pay bills in Jamaica. Dkt. 89, ¶9.
Evidence of use of XOOM for mortgage payments in Jamaica. Dkt. 89, ¶22, Ex. 11 (p.96-
98). And, in various countries, including but not limited to, Mexico and the United
Kingdom. Dkt. 89, ¶¶22-24, Exs. 12 (p.102), 13 (p.106); see also id., Ex. 5 (No. 50, June 26,
2013 (video still available online promoting XOOM for mortgage payments in UK, entitled
“Deposit in less than an hour to the UK with Text Updates”), and related testimony, Dkt. 89,
¶33.
On 8/28/2003, Xoom promoted the XOOM mark in connection with its services to “pay
bills.” Dkt. 86, Ex. 29 (p.263 (XOOM46)). The record also confirms the use of XOOM to
“pay bills” and “pay a utility bill” from screenshots of its website in 2003 and 2004. Dkt. 86,
Ex. 31 (pp.408-412).
On 9/9/2003, Xoom also promoted use of XOOM to “pay bills (p.136),” to make “credit card
payments” (p.139), other “payments (p.140),” and as a “platform for businesses and
individuals to send and receive money (p.140),” Dkt. 86, Ex. 23, (pages cited herein).
Screen shots of Xoom.com on various dates in 2003 and 2004 demonstrating the available
use of the XOOM platform to send money “for a friend, relative, or other individual to pay a
utility bill or make a bank deposit;” make “credit card payments;” and “you can also pay bills
or make bank deposits.” Dkt. 89, Exs. 9 (pp.83-86), 16 (p.113), 18 (p.117).
DB2/ 33770618.1 8
On various dates, including 2004, 2007, 2008, 2009, 2011 promotions that XOOM can be
used to send money “to friends, family and businesses.” Dkt., 86, Ex. 29 (p.267
(XOOM50)), (p.269 (XOOM0052)), (p.272 (XOOM55)), (p.273 (XOOM56)); (p.318
(MLB33)); Dkt. 86, Ex. 31 (pp.413, 415 (“safe money transfers to family, friends, business
partners)).
At various times, Opposer’s marketing materials targeted business and retail payments. On
2/24/2006, XOOM offered “Global Money Transfer Solutions for Your Business!” including
for retailers.” Dkt. 89, Exs. 24-25 (pp.130-133); Dkt. 86, Ex. 29 (pp.325-333).
In 2006, Opposer promoted use of XOOM services “to purchase goods from international
merchants.” Dkt. 86, Ex. 29 (pp.338-339 (MLB210, 266)).
Evidence that “many small businesses use money transfers to pay foreign-based contractors.”
Dkt. 86, Ex. 29 (p.366 (MLB361)).
On 12/14/2009, evidence of use of XOOM to “send money…to friends, family and
businesses…” from xoom.com. Dkt. 86, Ex. 23 (p.150).
Evidence from 2010, 2011, 2012 and 2013 that consumers could use XOOM to pay credit
card bills in Ecuador, including to pay Diners Club and MasterCard. Dkt. 89, Ex. 10 (pp.87-
94) (transaction data), Exs. 30-31 (pp.143-145) (xoom.com printouts from 2012, 2013
regarding paying credit card bills). The ability to pay such bills in Ecuador was confirmed by
testimony of Opposer’s Julian King who also authenticated business records of such
transactions. Dkt. 89, ¶¶19, 37.
Promotion of XOOM mark in January 18, 2011, referencing “Xoom has recently introduced
a feature to schedule transactions for later dates or set up recurring money transfers. There
are many expats who need to transfer money to the UK accounts on a regular basis, in order
DB2/ 33770618.1 9
to manage expenses or pay bills occurring in their home country.” Dkt. 86, Ex. 29 (p.316)
(emphasis added).
An article on the XOOM blog describing how people in the United States use money transfer
options to pay bills abroad, including for mortgages, loans and credit cards. Dkt. 86, Ex. 30
(p.380). The article also describes how people may send money to a family member at home
who can make the payment on behalf of the payee. Id. Additionally, the article references
how people who need to pay bills internationally can open a bank account in their home
country, transfer funds into the account, and use that account to make autonomic payments.
Id.
Consumer recognition from 1/21/2014 regarding use of XOOM, “Been using XOOM for all
money transfers to pay my mortgage direct to bank and also to wife’s relatives.” Dkt. 87, Ex.
67 (p.299).
Uses of XOOM from 11/2014 to the present for paying bills through a XOOM enhanced bill
payment service and for reloading mobile phones. Dkt. 86, Ex. 29 (pp.205-252).
Opposer’s partnership with retailer Walmart to “Send cash anywhere in the word, right from
your computer;” “[m]oney can be picked up in cash at any of thousands of locations or
deposited quickly into bank accounts.” Dkt. 89, Exs. 3-4 (pp.55-66).
Use of XOOM for equated monthly installment payments and loan payments, and to schedule
payments in advance including recurring payments. Dkt. 89, Ex. 5, Video Nos. 139-140, first
published September 14, 2016 (EMI payment) and first published September 21, 2016 (EMI
payment), ¶38, Ex. 8 (p.80) (scheduling feature to “manage expense or pay bills…” by
“scheduling transactions for later dates’).
Additionally, Opposer has evidenced its use of the XOOM marks through promotions on its website,
social media advertising, through video advertisements, as described in third-party articles and
DB2/ 33770618.1 10
Internet references, and in references on its website and on app stores such as Google Play and
iTunes. Dkt. 86, Exs. 29-30 (pp.205-402), 33 (pp.458-1102), Dkt. 87, Exs. 34-36 (pp.3-90), 40-41
(pp.143-151), 44-84 (pp.160-418), 88-90 (pp.431-448), Dkt. 88, Exs. 91-97 (pp.2-42), Dkt. 105, Exs.
118-119 (pp.5-10).
C. Consumers’ Understanding of Goods and Services for Use with XOOM Marks
Opposer submitted evidence in a variety of forms including publically-available, online
reviews of XOOM goods and services completed by consumers, and Opposer’s transaction records
that establish consumers’ understanding of the many ways the XOOM platform can be used to
transfer money and make payments for a variety of reasons and types of transactions including for
the payment of goods and services, credit card bills, mortgage bills, child support, family support,
alimony, hotel stays, employee salaries, independent contractor payments (including for property
managers, caretakers, virtual assistants, web developers, cat sitters, etc.), tuition bills, utility bills,
medical bills, rent, loans, international dues and ministry payments. Dkt. 89, Exs. 14 (p.109)
(interview with consumer), 32 (p.147-148) (consumer transaction notes regarding use of XOOM), 33
(pp.150-325) (consumer reviews regarding uses of XOOM from trustpilot.com); see also Dkt. 89,
¶¶39-41 (King testimony).
D. Federal Trademark Registrations for XOOM Marks and Specimens Filed
In the parent proceeding, Opposer relies on and submitted evidence of valid, subsisting, and unrevoked federal trademark registrations for its XOOM mark including XOOM® (Reg. No.
2,909,931), XOOM® (Reg. No. 4,012,377), XOOM® (Reg. No. 4,226,418), XOOM IT ONLINE
(Reg. No. 4,232,742), STOP WAITING IN LINE. XOOM IT ONLINE. (Reg. No. 4,232,741) Dkt.
89, ¶45. In the child proceeding, Opposer relies on and the record reflects each of Opposer’s registrations asserted in the parent proceeding, and in addition its registration for XOOM® (Reg. No.
4,407,099). Id. Specimens submitted with each of the relevant filings for these registrations further establish use of the marks. Dkt. 86, Exs. 23-27 (pp. 136, 169, 175, 184, 194, 201).
DB2/ 33770618.1 11
E. Third Party Registrations Evidencing Overlap in Goods and Services
The record includes third-party registrations for goods and services that confirm consumers
will believe that the goods and services associated with the XOOM marks and those of the opposed-
applications for ZOOMPAY emanate from the same source, although, of course, they do not. Dkt.
35, Exs. 7-18 (pp.44-72); Dkt. 86, Exs. 7-22 (pp.72-130).
F. Consumers’ References to XOOM Pronounced as “ZOOM”
Opposer has introduced evidence demonstrating that consumers understand that “XOOM” is
pronounced with a “Z” sound like “Zoom,” and that consumers have, while specifically referencing
“XOOM,” inadvertently referenced Xoom in writings with a “Z” as “Zoom.” Dkt. 89, Ex. 45
(pp.524-602), Dkt. 88, Ex. 103 (pp.384-462) (trustpilot.com reviews that reference “Xoom” as
“Zoom”).
G. Opposer’s Consumer Marketing about XOOM Evidences its Pronunciation as “ZOOM”
Opposer has submitted evidence that overall its advertising and promotions consistently
pronounce “XOOM” with a “Z” sound. Specifically, Mr. King testified to Opposer’s advertising
specifically aimed at educating consumers to pronounce “XOOM” with a “Z” sound. Dkt. 89, Ex. 25
(p.133) (“Xoom (pronounced “zoom”), ¶¶55 (all advertising pronounces XOOM with a “z”); Dkt.
86, Ex. 29 (p.366 (MLB361 (“Xoom (pronounced “zoom”)).
H. Relevant Dictionary Definitions
Opposer has submitted relevant dictionary definitions. Dictionary definitions of the word
“pay” confirm that Opposer has continuously used its XOOM marks consistent with its filings before
the Trademark Office and that the electronic payment services of the parties’ here overlap. Dkt. 88,
Exs. 104 (p.466), 105 (p.470). Opposer’s dictionary definitions of “Equated Monthly Installment[s]” demonstrate that consumers understand and Opposer has promoted use of the XOOM platform to make fixed payments. Dkt. 88, Exs. 110 (p.490), 111 (pp.497-501).
DB2/ 33770618.1 12
I. Evidence of Overlap with Class 36 Services for ZOOMPAY
The testimony of Opposer’s Julian King and Applicant’s President Anthony Toepfer, and the
extensive documentation of the use of the XOOM marks, demonstrate the overlap between the
parties’ respective goods and services including with respect to electronic payments on the face of
the applications and otherwise. Dkt. 100, Exs. 153-154, Dkt. 89. Revealingly, Applicant failed to
submit more than one purported use of ZOOMPAY for its financial transaction and electronic
payment services, with no other substantiating information as to extent of use, such that the
description must be considered broadly and at face value. Dkt. 97, Ex. 11 (pp.77-78).
J. Evidence that Applicant Lacks a Bona Fide Intent to Use ZOOMPAY for Any Computer Operating Software.
Applicant’s discovery responses contain multiple admissions that it lacks a bona fide intent to use ZOOMPAY for any computer operating software and/or even any downloadable software. Dkt.
88, Exs. 114-117 (pp.598-692). Mr. Toepfer also confirms that Applicant has no legitimate intent-to- use for the claimed description of goods. Dkt. 100, Ex. 153, 101:17-102:4.
K. Evidence of Meaning of “Computer Operating Software”
Multiple dictionary definitions in the record, confirm that Applicant’s proposed ZOOMPAY
software is not ‘computer operating software.” Dkt. 88, Exs. 106 (pp.472-473), 107 (p.477). Even
more telling, the Trademark Offices’ interpretation of the term has been submitted as part of the
Notice of Reliance, which demonstrates Applicant’s lack of a bona fide intent to use the designation
for any such software. TMEP §1402.03(d); Dkt. 88, Ex. 108 (pp.481-483). Moreover, Applicant’s
own witness testified that this defintion was chosen only because that was what the government
offered. Dkt. 100, Ex., 153, 97:23-98:1, 101:17-102:15. What the government offers is not a valid
basis for a good faith intent, particularly where there is no evidence of any intent to use for
“computer operating software.” Thus, the record establishes that Applicant lacks a bona fide intent
to use ZOOMPAY for computer operating software including on the basis of the Trademark Office’s
DB2/ 33770618.1 13
rules for “Identifying Computer Programs with Specificity,” TMEP §1402.03(d); Dkt. 88, Ex. 108
(pp.481-483).
L. Judgment in Favor of Opposer
Opposer has submitted judgment in its favor from an opposition to ZOOMGATE
PAYMENT GATEWAY for credit card payment services. Dkt. 87, Ex. 39 (pp.117-142).
M. Admissions Against Interest
Opposer’s evidence includes Applicant’s admissions that “Zoom” and “Xoom” contain the
same phonetic sound. Dkt. 4 (parent, Answer), Dkt. 4 (child, Answer) (“‘Zoom” and ‘Xoom’ contain
the same phonetic sound”) (¶11), and that “its services description is not limited as to customers or
channels of trade.” (¶13). Relevant discovery responses and testimony of Applicant demonstrate its
lack of bona fide intent to use ZOOMPAY for computer operating software in Class 9. Dkt. 88, Exs.
114-117 (pp.598-692), Dkt. 100, Ex., 153, 101:17-102:15.
N. Applicant’s Evidence and Objectionable Evidence
Applicant has filed objectionable evidence that Opposer has objected to in its concurrently
filed Statement of Objections, attached hereto as Appendix of Objections to Applicant’s Trial
Declaration and Testimony, and Notices of Reliance (“Objections”).
Applicant submits testimony from its owner and President, Anthony Toepfer, through a trial
testimony deposition and declaration, certain of which Opposer objects to as inadmissible because he
lacks foundation to provide an opinion regarding the features of the XOOM platform, a legal opinion
regarding a likelihood of confusion, and other specific topics. Objections, pp.1-6.
Applicant submits numerous third-party registrations and/or uses of purported formatives of
XOOM or ZOOM as purported evidence that the XOOM marks are weak, all of which Opposer
objects to as inadmissible on the grounds that they are not similar marks, for related or overlapping
goods or services, no use has been demonstrated at all, the registrations are on the Supplemental
Register or remain unregistered applications, no use in the United States has been shown, and/or are
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the cited marks are used for descriptive purposes, and thus, are not relevant. Other registrations
submitted are cancelled, supplemental registrations or are applications, which also raises objections.
For all of the cited marks, no evidence of the extent of use has been provided. All of these objections
are detailed in the Objections. Objections, pp.6-9, 11-35.
Notably, Applicant fails to evidence current use of its ZOOMPAY designation for the Class
36 services or the Class 9 goods. More importantly, Applicant provides no evidence of how many
transactions or the value of any transactions have allegedly been effectuated through the Class 36
service for which it claims use. With respect to Class 36, Applicant proffers one single consumer
facing document evidencing use of ZOOMPAY—an undated purported in-store display—and fails to
provide any other documentation or objective information about the use of the mark. Dkt. 97, Ex. 11
(pp.77-78). With respect to Class 9, Applicant offers a single document as well, an employee
Manual, which fails to reference or describe any use or intended use of ZOOMPAY for computer
operating software or any downloadable software. Dkt. 101.
II. STATEMENT OF THE ISSUES
1. Is the opposed-application for ZOOMPAY (85/578,671) for “financial transaction
services, namely, providing secure commercial transactions through the use of biometric technology;
electronic payment services by which customers may apply money from various sources through the
use of biometric technology,” in Class 36, likely to cause confusion with Opposer’s XOOM marks
long used in connection with money transfer services, electronic funds transfer services, bill payment
remittances, and electronic payments services and related software for facilitating such services?
2. Is the opposed-application for ZOOMPAY (Ser. No. 86/192,659) for “computer operating
software for point of sale system,” in Class 9, likely to cause confusion with Opposer’s XOOM
marks long used in connection with money transfer services, electronic funds transfer services, bill
payment remittances, and electronic payments services and related software for facilitating such
services?
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3. Did the Applicant have a bona fide intent-to-use ZOOMPAY for “computer operating software,” at the time it filed the opposed-application on February 13, 2014, given that Applicant had and has no business plan for such use of the designation, made no sales pitches or efforts, does not have finished software after at least 4 years of development, and the evidence shows that any use being developed by Applicant is not computer operating software?
III. FACTS
A. Opposer Has Prior Trademark Rights in the XOOM Marks.
The XOOM platform is a leading digital money transfer product and service, which is now
owned and operated by PayPal. PayPal is one of the worlds’ major financial services companies that
offers products and services for consumers to manage and move money. Through the XOOM
service, consumers can electronically send money to recipients from a phone, tablet or computer.
See Dkt. 89, ¶6. Opposer provides its XOOM money transfer services online through its website xoom.com (the “XOOM Website”) and through its free downloadable XOOM mobile application
(the “XOOM App”). Id. Through these tools, collectively referred to as the “XOOM platform,”
Opposer also offers related goods and services, including informational services. Id. Using the
XOOM Website or the XOOM App, Opposer’s customers and potential customers can initiate money transfers for a variety of reasons and goals, and track status, payment details, as well as review fees, check exchange rates, contact XOOM customer service and/or access other XOOM services, such as the XOOM blog. Id., ¶¶8, 43, Exs. 14-15 (pp.109, 111), 29 (p.141), 37 (p.458), 40
(p.488).
Opposer has used its XOOM mark for money transfer services for some fifteen years. Id., ¶6.
Over that long time period, Opposer has continuously promoted its XOOM money transfer services and related products and services. Id., ¶¶11-14; Dkt. 86, Ex. 29 (pp.204-366). The XOOM website prominently features the XOOM mark, as does Opposer’s social media presence, including on the
Facebook page for XOOM. Dkt. 86, Exs. 29 (pp.204-366), 30 (pp.367-402), 31 (pp.403-421), 33
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(pp.458-1102) (printouts from Applicant’s website, blog and Facebook page showing prominent use
of the XOOM mark). Opposer further advertises its XOOM services in online videos and television
commercials. Dkt. 89, Ex. 5. Opposer’s XOOM advertisements are well-received including winning
awards such as the Telly Awards in 2012 and 2013 for its commercials. Dkt. 87, Exs. 74-76 (pp.388-
395).
In regards to video advertising, Opposer promotes its products and services offered under the
XOOM mark on its own YouTube channel – located at
https://www.youtube.com/user/XoomMoneyTransfers. There, Opposer offers videos promoting the
XOOM money transfer services that highlight how to use the service and its advantages, both
through spokespeople, and humorous vignettes. Dkt. 89, Ex. 5. Videos promoting XOOM often are
watched by thousands and tens of thousands of consumers. See Dkt. 87, Ex. 34 (pp.2-68) (see number of views per video); see, e.g., at p. 3 (11,909 views of “Xoom, The Easiest Way to Send
Money to Poland), at p. 12 (10,496 views of “Malrats – Stop Going Out of Your Way to Send
Money”), at p. 44 (59,001 views of “Send Money to India—Zatzat Phatphat”).
Additionally, Opposer promotes and encourages the use of its XOOM products and services through its XOOM blog, where consumers are informed about using XOOM products and services to transfer money for mortgage payments, other bill payments, gifts, charitable donations, and for topics of general interest. Dkt. 86, Ex. 30 (pp.367-402).
As a result of its extensive advertising and promotion and the quality of the services offered under the XOOM mark, today there are more than 1.5 million active unique customers in the United
States using XOOM, who, in 2017, collectively transferred more than $7 billion using the XOOM platform. Dkt. 100, Ex. 154, 193:16-195:10. The XOOM platform has become well-regarded and well-known. For example, in 2011 and 2012, Xoom was ranked in the Wall Street Journal’s list of the Top 50 venture-backed companies. Dkt. 87, Ex. 70 (p.319).
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Due to its extensive use, sales and advertisements of its XOOM mark, the financial services
marketplace associates the mark exclusively with Opposer and its services. The scope of recognition
of the XOOM mark is evidenced by unsolicited media coverage of the goods and services offered for
sale and sold under the XOOM marks. Dkt. 87, Exs. 44-84 (pp. 160-418), 88-90 (pp.431-448), Dkt.
88, Exs. 91-97 (pp.2-42) (sample articles discussing XOOM).
To solidify its common law rights in its XOOM marks, Opposer has obtained trademark
registrations covering the products and services it offers and promotes. Opposer owns the following
valid, subsisting, uncancelled and unrevoked federal trademark registrations:
United States Registration for XOOM® (Reg. No. 2,909,931), filed on September 15, 2003, issued on December 14, 2004, and claiming a first use date of May 7, 2003 for the following services for “Providing business information, namely on, money transfer services” in International Class 35 and “Money transfer services; electronic funds transfer services; bill payment remittance services; electronic payment, namely, electronic processing and transmission of bill payment data” in International Class 36.
United States Registration for XOOM® (Reg. No. 4,012,377), filed on January 24, 2011, issued on August 16, 2011, and claiming a first use date of May 7, 2003 for “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” in International Class 42.
United States Registration for XOOM® (Reg. No. 4,226,418), filed on January 24, 2011, issued on October 16, 2012, and claiming a first use date of August 8, 2012 for “Computer software for facilitating money transfer services, electronic funds transfer services, bill payment remittance services, electronic processing and transmission of payments and payment data” in International Class 9.
United States Registration for XOOM IT ONLINE® (Reg. No. 4,232,742), filed on November 23, 2011, issued on October 30, 2012, and claiming a first use date of July 2011 for “Money transfer services; electronic funds transfer services; bill payment remittance services; electronic payment, namely electronic processing and transmission of payment data” in International Class 36 and “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 payment data” in International Class 42.
United States Registration for STOP WAITING IN LINE. XOOM IT ONLINE.® (Reg. No. 4,232,741), filed on November 23, 2011, issued on October 30, 2012, and claiming a first use date of July 2011 for “Money transfer services; electronic funds transfer services; bill payment remittance services; electronic payment, namely electronic processing and
DB2/ 33770618.1 18
transmission of payment data” in International Class 36 and “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 payment data” in International Class 42.
True and correct printouts from the TSDR database for the XOOM® and XOOM®-formative
registrations were pleaded in Opposer’s Notice of Oppositions and made of record pursuant to 37
CFR § 2.122(d)(1). Dkt. 35, Exs. 1-6 (pp.20-43); Dkt. 86, Exs. 23-27 (pp.131-194).
a. Use of XOOM (Registration No. 2,909,931), Class 36
On September 15, 2003, Opposer filed a trademark application based on its use in commerce
of the XOOM mark for “money transfer services; electronic funds transfer services; bill payment
remittance services; electronic payment, namely, electronic processing and transmission of bill
payment data,” in Class 362, which matured into Registration No. 2,909,931. As of the filing date,
Opposer was using XOOM for offering “bill payment remittance services; electronic payment,
namely, electronic processing and transmission of bill payment data.” Dkt. 89, ¶45(a). Indeed, the
specimen of use submitted with the application, which is dated September 9, 2003, before the
application filing date, plainly states “You can also pay bills or make bank deposits” and that XOOM
banking services include “bank deposits, loan payments, credit card payments.” Id., Ex. 38 (p.466).
As of the filing date, there were many ways to use the XOOM service for bill payment remittance and electronic payments, and for tracking those payment services. Id., ¶¶11, 45(a).
On December 14, 2009, Opposer filed a Combined Declaration of Use and Incontestability under Sections 8 and 15, stating that the XOOM mark was in use in commerce on or in connection with all of the services listed in Registration No. 2,909,931. As of the date of the Section 8 and 15 filing, Opposer had been continuously using the XOOM mark for “bill payment remittance services; electronic payment, namely, electronic processing and transmission of bill payment data.” Dkt. 89,
2 Registration No. 2,909,931 for XOOM also includes a Class 35 description of services, which is not subject to any challenge by Applicant.
DB2/ 33770618.1 19
¶¶45(b). In fact, the specimen of use submitted with the Section 8 and 15 filing, dated December 14,
2009, states, similar to the specimen of use for the initial application, “With the xoom.com money
transfer service you can send money from any Internet-enabled computer to friends, family and businesses in more than 45 countries.” Id., Ex. 39 (p.478) (emphasis added). By way of further example, testimony and summary transaction data establishes that consumers could and did pay credit card bills from the United States for such obligations in Ecuador directly to MasterCard,
Diners Club, and others using the XOOM service from 2007 continuously to 2016. Id., Ex. 10 (p.88-
94) (transaction data), Exs. 30-31 (p.143-145) (xoom.com from 2012-2013 identifying payees for credit card payments).
On March 11, 2014, Xoom filed a Combined Declaration of Use for Renewal of the same
Registration under Sections 8 and 9, stating that the XOOM mark was in use in commerce on or in connection with all of the services listed in Registration No. 2,909,931. As of the date of the renewal filing, Xoom was using the XOOM mark for “bill payment remittance services; electronic payment, namely, electronic processing and transmission of bill payment data.” Dkt. 89, ¶45(c). The specimen of use submitted with the renewal filing, dated on March 11, 2014, provides “Deposit money to any Euro account…,” which could be used to pay a bill directly into a third party biller’s account. Id., Ex. 40 (p.489). Transaction data from Opposer’s business records establishes that consumers could and did pay credit card bills in Ecuador directly to MasterCard, Diners Club, and others using XOOM from 2008 to 2016. Id., Ex. 10 (p.88-94) (transaction data), Exs. 30-31 (p.143-
145) (xoom.com from 2012-2013 identifying payees for credit card payments). In addition, there were other bill payments and electronic payments that could be accomplished using the XOOM service for bill payment remittance and electronic payments. Id., ¶11. Consumers understood that they could use XOOM for bill payments and other money transfers. Id., Exs. 32-33 (pp.146-325).
During this time, Opposer also ran promotions regarding such services, including how to pay mortgages in the UK using the XOOM platform. Dkt. 89, Ex. 5 (Video No. 50).
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b. Use of XOOM (Reg. No. 4,012,377), Class 42
On January 24, 2011, Xoom filed a trademark application based on its use in commerce of
the XOOM® mark for “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,”
in Class 42, which matured into Registration No. 4,012,377. As of the filing date, Xoom was
offering services using the XOOM® mark for a web site for “facilitating…bill payment remittances
and electronic processing and transmission of bill payment data.” Dkt. 89, ¶45 (d). Summary
transaction data establishes that consumers could and did pay credit card bills in Ecuador directly to
MasterCard, Diners Club, and others using the XOOM service through its website from 2008 to
2016. Id., Ex. 10 (p.88-94) (transaction data), Exs. 30-31 (p.143-145) (xoom.com from 2012-2013 identifying payees for credit card payments). As another example, from 2005 to the present consumers in the United States could pay bills and make mortgage payments in Jamaica through
Opposer’s partnership with Victoria Mutual. Id., ¶¶9, 22, Exs. 1 (p.39), 2 (p.44-54), 11 (pp.96-98).
In addition, there were other ways to use the XOOM service on its web site as of the filing date, which facilitated bill payment remittance and electronic processing and transmission of bill payment data. Id., ¶11. Indeed, during this time, evidence shows that consumers understood they could use the XOOM platform for bill payments and other electronic payments and transfers. Id., Exs. 32-33
(pp.146-325).
c. Use of XOOM (Reg. No. 4,226,418), Class 9
On January 24, 2011, Xoom filed an intent to use trademark application for the XOOM® mark for “computer software for facilitating money transfer services, electronic funds transfer services, bill payment remittance services, electronic processing and transmission of payments and payment data,” in Class 9, which matured into Registration No. 4,226,418. Xoom filed a statement of use for this application in August 2012. At that point, Xoom was using the XOOM® mark for
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computer software for “facilitating…bill payment remittance services, electronic processing and
transmission of payments and payment data.” Dkt. 89, ¶45(e). Similar to the ability of consumers to
pay credit card bills directly in Ecuador to credit card companies using the XOOM Website,
consumers could use the XOOM App to facilitate payment of this type of bill in Ecuador. Id., Ex. 10
(p.88-94) (transaction data), Exs. 30-31 (p.143-145) (xoom.com from 2012-2013 identifying payees
for credit card payments). Also as of the filing date, the XOOM software was offered and used for
facilitating bill payment remittances and electronic processing and transmission of payments in other
ways. E.g., id., ¶¶10- 11, 13, Exs. 1 (p.39), 2 (p.44-54), 11 (pp.96-98). Consumers understood that they could use the XOOM platform for bill payments and other money transfers. Id., Exs. 32-33
(pp.146-325).
d. Use of XOOM IT ONLINE and STOP WAITING IN LINE. XOOM IT ONLINE (Reg. Nos. 4232741 and 4,232,742), Classes 36 and 42
On November 23, 2011, Xoom filed a trademark application based on its use in commerce of the XOOM IT ONLINE® and STOP WAITING IN LINE. XOOM IT ONLINE® marks for “money transfer services; electronic funds transfer services; bill payment remittance services; electronic payment, namely electronic processing and transmission of payment data,” in Class 36 and
“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 payment data,” in Class 42, which respectively matured into Registration Nos. 4,232,741, 4,232,742. As of the filing dates of these applications, Opposer was using the XOOM IT ONLINE® and STOP WAITING IN LINE.
XOOM IT ONLINE® marks for “bill payment remittance services; electronic payment, namely electronic processing and transmission of payment data” and for a web site for “facilitating…bill payment remittances, and electronic processing and transmission of payment data.” Dkt. 89, ¶45(f).
Transaction data from Opposer’s business records establishes that consumers could and did pay
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credit card bills in Ecuador directly to MasterCard, Diners Club, and others using the XOOM
platform including from 2007-2016. Id., Exs. 10 (pp.88-94), 30-31 (p.143-145). Additionally, there were several other ways users could use the XOOM service to facilitate bill payment remittances and electronic payments. E.g., id., ¶¶11, 13.
e. Use of XOOM for a Variety of Types of Payments
Seeking to justify its confusingly similar ZOOMPAY designation, Applicant focuses on
Opposer’s Terms of Use in certain years to argue that the XOOM mark has not been used for electronic payment or bill payment services. To reach this conclusion, Applicant relies solely on its own interpretations without any actual use of or attempt to make any payment using the XOOM platform, without any reference to the understanding of consumers using the platform and without any other support.
First, Opposer’s evidence of record firmly establishes continuous use of XOOM for credit card payments and mortgage payments since 2003. Dkt. 89, Exs. 5 (Video No. 50), 10 (pp.88-94),
30-31 (p.143-145). Second, nothing in Opposer’s Terms of Use precludes (and no cognizable testimony shows otherwise) the use of the XOOM platform to pay personal bills such as for caretakers, repayment of personal loans, for child support, cat sitters—and any other myriad types of payments. Dkt. 89, ¶47 (user agreements “did not alter the ability of consumers to use the XOOM® platform to send remittances and money transfers (and Xoom users continued to send remittances and money transfers in 2012 and after) for the purpose of paying bills or making electronic payments to third party recipients” including for credit card payments, mortgage and loan payments); see also
¶¶46-50. And, there is ample evidence that confirms consumers’ understanding throughout the relevant time period that the XOOM platform could be used for paying personal bills and other obligations. See, e.g., Dkt. 97, Exs. 32 (pp.146-48) (transaction notes regarding paying bills), Ex. 33
(pp.149-325) (trustpilot.com reviews regarding paying bills and making other electronic payments).
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B. Applicant’s ZOOMPAY Trademark Application No. 85/578,671 for Financial Transaction and Electronic Payment Services
By Application Serial No. 85/578,671, Applicant seeks to register the designation
ZOOMPAY for “[f]inancial transaction services, namely, providing secure commercial transactions through the use of biometric technology; electronic payment services by which customers may apply money from various sources through the use of biometric technology” in Class 36. Applicant filed its application on March 23, 2012 and claims a first use date of January 15, 2012, well after Opposer began using and had registered its XOOM marks.
In its Answer to the Opposition, Applicant admits that Applicant is the owner of the listed marks. Answer, Dkt. 4, ¶ 3. Applicant also admits that its own service description has no limitation on customers or channels of trade. Answer, Dkt. 4, ¶ 13 (“Applicant admits that its services description is not limited as to customers or channels of trade.”). Further, Applicant admits that
Opposer’s trademark XOOM is phonetically identical to “Zoom”. Id., ¶ 11 (“Applicant admits that
‘Zoom’ and ‘Xoom’ contain the same phonetic sound.”).
Further, although Applicant filed its application as a use application, the specimen submitted to the Trademark Office with the application is from a web page that Applicant testified no longer appears in use. Dkt. 100, Ex. 153, Ex. 13 (p.515) (specimen); 79:15-81:10, 82:22-83:11
(ZOOMPAY not intended to be used on website or outside of Applicant’s store). Indeed, no current use (or any use after 2012) of the designation ZOOMPAY can be found on the website from which the specimen came or anywhere else on Applicant’s website, www.zoomtan.com. Dkt. 87, Ex. 38
(pp.101-116). To the contrary, the website references only payment by credit cards for the tanning services offered at the url, www.zoomtan.com. (No Cash Accepted °Visa MasterCard & Discovery
Only”). Id. at p. 111. With regard to its alleged use of ZOOMPAY, Applicant has introduced no
evidence regarding the number of customers claimed to use the service, over what time periods or
even in what geographic locations the service has allegedly been used. Tellingly, Mr. Toepfer
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admitted that Applicant has no idea as to the number of customers who have used this service, the
revenue associated with the service and the time periods for such use, “because it makes no
difference to [Applicant].” Dkt. 100, Ex. 153, 94:25-95:4.
Moreover, Applicant pursued its application for the applied-for designation despite having
constructive notice of Opposer’s rights in its XOOM trademarks, as evidenced by Opposer’s
admitted pre-existing federal registrations for XOOM marks. Answer, Dkt. 4, ¶3. See 15 U.S.C.
§ 1072; 2 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 19:9 (“A Principal Register
registration is constructive notice of a claim of ownership so as to eliminate any defense of good faith
adoption and use made after the date of registration).
C. Applicant’s ZOOMPAY Intent-to-Use Trademark Application No. 86/192,659 for Class 9 Computer Operating Software
By Application No. 86/192,659, Applicant seeks to register the ZOOMPAY designation for
“computer operating software for point of sale system,” in Class 9, claiming an intent-to-use the
designation. Applicant filed this intent-to-use application on February 13, 2014—over a decade
after Opposer began using and had registered its XOOM marks and after Opposer had opposed the
ZOOMPAY application for Class 36 that is the subject of the parent proceeding.
Applicant’s President, Mr. Toepfer testified that Applicant had approved a settlement of the parent opposition proceeding, before he filed the application and in so doing unilaterally rescinded the agreed-to settlement. Dkt. 100, Ex. 153, Ex. 15 (pp.593-600), 117:17-120:21.
D. Procedural Status of Consolidated Opposition
On July 15, 2016, the Board consolidated Opposition No.: 91,208,416 (parent) and
91,217,374 (child), and ordered trial briefing to be consolidated. Dkt. 61.
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IV. ARGUMENT
A. Evidence Establishes a Likelihood of Confusion as to Both Opposed Applications for ZOOMPAY
In ruling on a likelihood of confusion claim, the Board makes its determination on an
analysis of all relevant, probative evidence properly in the record. In re E. I. DuPont de Nemours &
Co., 177 USPQ 563, 567 (CCPA 1973); see Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 1371 (Fed. Cir. 2005). Section 2(d) of the Lanham Act
provides that a trademark may be refused registration if it so resembles a prior used or registered
mark “as to be likely, when used on or in connection with the goods of the applicant, to cause
confusion, or to cause mistake, or to deceive.” 15 U.S.C. § 1052(d).
Opposer meets this burden here to establish a likelihood of confusion as the evidence
demonstrates that: (1) Opposer has standing; (2) Opposer has priority of use of its XOOM marks; and
(3) weighing the elements of the likelihood of confusion analysis, the undisputed evidence
demonstrates that the ZOOMPAY designation for the specified applied-for goods and services in
Classes 9 and 36 is likely to cause confusion with Opposer’s XOOM mark, which has been used in
connection with money transfer services and related software in Classes 9 and 36 (and other classes)
for many years, as well as in connection with related products and services. As detailed below,
Applicant’s registration of the ZOOMPAY designation is likely to cause confusion under 15 U.S.C.
§ 1052(d), particularly because of the admitted phonetic similarity of the marks, the related and
overlapping nature of the parties’ respective goods and services, consumers and channels of trade,
and because of the strength of the XOOM mark.
1. It Is Undisputed that Opposer Has Standing to Bring this Proceeding
There is no dispute that Opposer has standing to bring this proceeding. Applicant has not
challenged Opposer’s standing, and even admitted that the pled marks appear in the records of the
Trademark Office as being owned by Opposer. Answer, Dkt. 4 ¶3, Dkt. 23 (child), ¶3.
DB2/ 33770618.1 26
Even if Applicant had challenged Opposer’s standing to bring this Opposition, Opposer has
submitted evidence of its continuous common law use and registration of the XOOM marks, which
alone establish standing. See Venture Out Prop. LLC v. Wynn Resorts Holdings, LLC, 81 U.S.P.Q.2d
1887, 1891 (TTAB 2007) (evidence of use of similar mark establishes standing).
2. Opposer Has Prior, Incontestable Trademark Rights in the XOOM Marks
To establish trademark infringement, a trademark owner proves priority by establishing that
it owns “a mark … previously used in the United States . . . and not abandoned . . .” 15 U.S.C.
§1052; Fram Trak Indus. v. Wiretracks LLC, 77 U.S.P.Q.2d 2000, 2005 (TTAB 2006).
Opposer owns and has used its XOOM mark since at least as early as 2003—approximately fifteen years. Dkt. 89, ¶6. Additionally, Opposer’s registrations for the XOOM® mark evidence its exclusive rights to use the mark in commerce in connection with the goods and services specified in the registrations. 15 U.S.C. §1057(b). Opposer’s registrations – two of which (Reg. Nos. 2,909,931 and 4,012,377) issued before Applicant’s claimed first use date and filing date – also provide constructive notice of Opposer’s claim of ownership. 15 U.S.C. §1072. Indeed, Registration
No. 2,909,931, which covers money transfer services, is incontestable and therefore constitutes conclusive evidence of Opposer’s ownership of the XOOM mark and the validity of the XOOM mark. 15 U.S.C. §§1065, 1115(b).
Applicant only filed its applications for ZOOMPAY on March 23, 2012, claiming a first use date of January 15, 2012 (Ser. No. 85/578,671), and its intent-to-use application on February 13,
2014 (Serial No. 86/192,659), almost two years later, and well after Opposer’s first opposition had been filed. Even if Applicant’s claimed first use date were legitimate and not trumped-up for
DB2/ 33770618.1 27
purposes of the application (and has in fact been in continuous use since that time), neither serves to
pre-date Opposer’s rights.3
Thus, there is no question that Opposer’s use of the XOOM mark predates Applicant’s filing
dates and claimed first use date, precluding any issue regarding Opposer’s ownership of the
registrations and/or priority of use including under common law.
3. Likelihood of Confusion Is Established Against Both Opposed-Applications for ZOOMPAY by the Undisputed Evidence
The Board determines likelihood of confusion based on the factors set forth in In re
E. I. DuPont Nemours & Co., 177 U.S.P.Q. 563 (CCPA 1973). No one DuPont factor is
determinative and “[e]ach may from case to case play a dominant role.” Id. at 567. The Board
considers only those factors that are relevant to the particular facts of the case. On-Line Careline Inc.
v. Am. Online, Inc., 229 F.3d 1080, 1086, 56 U.S.P.Q.2d 1471, 1474 (Fed. Cir. 2000).
In any likelihood of confusion analysis, two key considerations are the similarities between
the marks and the similarities between the goods and services. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 196 U.S.P.Q. 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the
goods and differences in the marks.”). In all events, each of the relevant DuPont factors weigh in
Opposer’s favor as a matter of law, including: (1) the similarity of the marks; (2) the identity and
similarity of the services; (3) the natural zone of expansion of the senior user; (4) the shared
customers and trade channels; (5) strength of the XOOM marks; and (6) Opposer’s long-established
prior and exclusive rights. From the face of the applications and Opposer’s registrations for its
3 The Trademark Act defines “use in interstate commerce” as “the bona fide use of that mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.” 15 U.S.C. § 1127. Mere token use made solely to reserve a right does not meet the statutory definition.
DB2/ 33770618.1 28
XOOM marks and long-standing common law use, each of these pertinent factors supports the grant
of judgment in favor of Opposer.
(1) Applicant’s ZOOMPAY Designation is Confusingly Similar To Opposer’s XOOM Marks in Sight, Sound and Commercial Impression
In considering whether the parties’ marks are similar, the Board considers and compares the
appearance, sound, connotation and commercial impression of the parties’ marks in their entireties.
See Palm Bay Imports, 396 F.3d at 1371. Similarity in any one of these elements suffices for a finding of confusion. In re 1st USA Realty Prof’ls, Inc., 84 U.S.P.Q.2d 1581, 1586 (TTAB 2007).
Here, the opposed ZOOMPAY designation is highly similar to the XOOM marks because its dominant prefix is virtually identical to Opposer’s long-registered XOOM marks. Indeed, Applicant admitted that “Zoom” and “Xoom” “contain the same phonetic sound.” Dkt. 4 (Answer), ¶11; see also Dkt. 4 (child, Answer), ¶11.
The issue is not whether the parties’ marks can be distinguished when subjected to a side-by- side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression such that confusion as to the source of the goods offered under the respective marks is likely to result. San Fernando Elec. Mfg. Co. v. JFD Elecs. Comp. Corp., 196 USPQ 1, 3
(CCPA 1977). The proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. In re Cable Lock, Inc., 2012 TTAB LEXIS 418, at *20-
21 (Oct. 31, 2012); see also In re Appetito Provs. Co., Inc., 3 U.S.P.Q.2d 1553, 1554 (TTAB 1987)
(APPETITO and design for Italian sausage confusingly similar to A APPETTITO’S and
A APPETITO’S INC. and design for restaurant services; In re M. Serman & Co., Inc., 223 U.S.P.Q.
52 (TTAB 1984) (CITY WOMAN for ladies blouses and CITY for female clothing likely to be confused).
DB2/ 33770618.1 29
Indeed, it is a well-accepted principle that one feature of a mark may be more significant than
another, and it is proper to give more weight to this dominant feature in determining the commercial
impression created by the mark. In re Nat’l Data Corp., 753 F.2d 1056, 224 U.S.P.Q. 749, 751 (Fed.
Cir. 1985). Here, the dominant feature of Applicant’s applied-for designation is “zoom” which is only one letter different in appearance from and phonetically identical to “xoom.” Thus, the first and dominant element of Applicant’s applied-for ZOOMPAY designation fully incorporates and consists of a word phonetically identical and visually similar to Opposer’s XOOM mark. Presto Prod., Inc. v.
Nice-Pak Prods. Inc., 9 U.S.P.Q.2d 1895, 1897 (TTAB 1988) (“…it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered.”); Venture Out
Prop. LLC, 81 U.S.P.Q.2d at 1892 (marks similar in sound and appearance when they begin with same word).
Indeed, the phonetic similarity here – which Applicant admitted in its Answers – strongly supports a finding of likelihood of confusion. See, e.g., Eveready Battery Co., Inc. v. Green Planet,
Inc., 91 U.S.P.Q.2d 1511, 2009 WL 2176668 (TTAB 2009) (finding SCHICK and SLICK ULTRA
PLUS confusingly similar for razors); In re 1st USA Realty Prof’ls., 84 U.S.P.Q.2d at 1586 (FIRST
USA and 1ST USA confusingly similar); Black & Decker Corp. v. Emerson Elec. Co., 84
U.S.P.Q.2d 1482, 2007 WL 894416 (TTAB 2007) (the applicant’s DIRT HAWG and WATER
HAWG for vacuum cleaners likely to cause confusion with opposer’s HOG family); Jules Berman &
Assos., Inc. v. Consol. Distilled Prods, Inc., 202 U.S.P.Q. 67, 1979 WL 24832 (TTAB 1979) (NOR-
KING and KNORR confusingly similar).
Importantly, Opposer’s customers recognize that XOOM is pronounced with a “Z” sound.
Relevant evidence including in consumer reviews of “Xoom Global Money Transfer
(/review/www.xoom.com) inadvertently reference the company as “Zoom” using the letter “z.” Dkt.
88, Ex. 103 (pp.385-462), see, e.g., at p.389 (“I love using ZOOM.”).
DB2/ 33770618.1 30
Moreover, Opposer has engaged in advertising where it pronounces the mark as “zoom” and
even has educated consumers to pronounce XOOM with a “Z” sound. For example:
Promotion stating, “Xoom” is “(pronounced “zoom.”) (Dkt. 89, Ex. 25 (p.133);
Video advertisements consistently pronouncing XOOM with “Z” Sound (Dkt. 89, Ex. 5).
Further, Applicant admits that the “PAY” in ZOOMPAY describes the pay method of its
services. Dkt. 100, Ex. 153, 74:3-6. It is well-accepted that the mere additon of another syllable or
word, particularly if the additional word is descriptive of the applicant’s services, does not obviate
the similarity when the first, dominant word is the same. Clinton Detergent Co. v. Procter & Gamble
Co., 302 F.2d 745 (CCPA 1962) (where the added word simply describes a use for the product (JOY
vs. CARJOY for detergent), it does not serve to lessen the likelihood of confusion); In re J.M.
Originals Inc., 6 U.S.P.Q.2d 1393 (TTAB 1987) (holding JM ORIGINALS (with “ORIGINALS”
disclaimed) for various items of apparel and JM COLLECTABLES for sport shirts likely to cause
confusion). The additional word “pay,” which is descriptive of the financial tranaction service
described in Applicant’s application and the services of Opposer, does not overcome the likelihood
of confusion and does not change the commercial impression or alter the meaning of the dominant
portion of the mark.4 The “PAY” in “ZOOMPAY” is a natural extension of a payment brand such as
XOOM. Dkt. 100, Ex. 154, 40:12-15. See, e.g., In re El Torito Rests., Inc., 9 U.S.P.Q. 2d 2002
(TTAB 1988) (MACHO for sandwiches confusingly similar to MACHO COMBOS for food plates
offered in restaurants); In re Infinity Broad. Corp. of Dallas, 60 U.S.P.Q.2d 1214, 1217 (TTAB
2001) (KYNG similar to KING-TV and KING FM, as TV and FM are descriptive or generic and
have no source indicating value); Stone Lion Capital Partners, L.P., v. Lion Capital LLP, 746 F.3d
4 It is noteworthy that Opposer currently uses the terminology XOOM BILL PAY to reference its “productized” electronic payment services, which is further evidence underscoring the likelihood of confusion that results from the opposed ZOOMPAY applications for financial transactions, electronic payments, and software related to point of sale payments. Dkt. 89, ¶57, Ex. 46 (p.603-605).
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1317, 1322 (Fed. Cir. 2014) (addition of adjective “STONE,” did not “distinguish the marks in the
context of the parties’ services;” holding that STONE LION CAPITAL was likely to cause confusion
with LION CAPITAL). To the contrary, if the dominant portion of the marks are the same, marks
are often held to be confusingly similar, despite some differences. See, e.g., In re Mighty Leaf
Tea, 94 U.S.P.Q.2d 1257, 1260-61 (Fed. Cir. 2010) (ML confusingly similar to ML MARK LEES
(stylized) for related skincare products). Here, the only difference in the phonetic similarity –the term “PAY” for electronic payment products, and services and a “pay method” only serves to increase the likelihood of confusion. Dkt. 88, Exs. 104-105 (pp.466, 470) (definitions of pay); Dkt.
100, Ex. 153, 74:3-6. The result is that ZOOMPAY creates the same commercial impression as
XOOM for payments or bill pay, emphasizing the pay aspects of the goods and services. In re St.
Helena Hosp., 774 F.3d 747 (Fed. Cir. 2014) (marks must be considered in light of fallibility of memory and not on basis of side-by-side comparison).
In addition to being comprised of the admitted “same phonetic sound” of the XOOM mark, the applied-for designations convey an identical commercial impression. Both the applied-for
ZOOMPAY designation and Opposer’s registered XOOM mark necessarily suggest the same commercial impression: the speed and ease of the goods and services offered related to payments and/or paying. The addition of “PAY” to ZOOM in Applicant’s designation does nothing to
distinguish it from XOOM given that both marks are identified for use with payment and financial
products and services. Stone Lion Capital Partners, L.P., 746 F.3d at 1322.
Thus, this factor substantially weighs in favor of Opposer on the face of the opposed- applications. This is particularly evident in light of the well-established rule that as the degree of similarity of the goods of the parties increases, the degree of similarity of the marks necessary to support a conclusion of likely confusion declines. Fossil Inc. v. Fossil Group, 49 U.S.P.Q.2 1451,
1998 WL 962201 (TTAB 1998), quoting Century 21 Real Estate Corp. v. Century Life of America,
970 F.2d 874, 23 U.S.P.Q.2d 1698, 1700 (Fed. Cir. 1992). Thus, any dissimilarity in the marks
DB2/ 33770618.1 32
themselves – which is not material in any event – is outweighed by the fact that on the face of the
applications, the ZOOMPAY designation appears to be used for closely related services. In re
Microsoft Corp, 68 U.S.P.Q.2d 1195 (TTAB 2003) (“[W]hen marks appear on or in connection with
virtually identical or closely related goods, the degree of similarity of the marks necessary to support
a conclusion of likely confusion is not as great as when the goods are different.”).
(2) The XOOM Mark and the Applied-For Designation ZOOMPAY Are Used or Claimed to be Used for Highly Related Goods and Services
In an opposition proceeding, the nature and scope of a party’s goods or services is determined
on the basis of the goods or services as stated in the application. Hewlett-Packard Co. v. Packard
Press, Inc., 281 F.3d 1261 (Fed. Cir. 2002). An applicant and registrant do not have to offer identical or competitive products or services to find a likelihood of confusion. Rather, it is sufficient if the designation at issue covers related goods and services. Moreover, “the degree of relatedness must be viewed in the context of all the factors, in determining whether the services are sufficiently related that a reasonable consumer would be confused as to source or sponsorship,” particularly the similarity of the marks, which as shown above, are confusingly similar on their face. In re Shell Oil
Co., 992 F.2d 1204, 1206, 26 U.S.P.Q.2d 1687, 1689 (Fed. Cir. 1993) (“[E]ven when goods or services are not competitive or intrinsically related, the use of identical marks can lead to the assumption that there is a common source”).
Here, there can be no question that the parties’ services are overlapping or, at a minimum, highly related. Applicant’s ZOOMPAY application expressly covers: “[f]inancial transaction services, namely, providing secure commercial transactions through the use of biometric technology; electronic payment services by which customers may apply money from various sources through the use of biometric technology” in class 36. Opposer offers XOOM electronic payment and financial transaction services that allow consumers to electronically transfer money for a variety of purposes.
DB2/ 33770618.1 33
Dkt. 89, ¶¶11-26 (highlighting the various types of transactions and payments available through the
XOOM platform since 2003). A financial transaction necessarily involves the transfer of money,
rendering these services highly related and even overlapping for this reason alone. Moreover, the
electronic payment services of Applicant only can be characterized as directly related, overlapping
and competitive with those electronic payment product and services offered using the XOOM marks.
Evidence abounds that consumers use XOOM for a variety of types of electronic payments
and bills including personal bills. For example, consumers have posted online and in transaction
comments about using XOOM for:
Transferring money to hotels, travel-related businesses for travel in UK (Dkt. 88, Ex. 101
(p.93);
For a property in Baja, sending money to “care takers to pay them and pay monthly bills”
(Dkt. 88, Ex. 101 (p.124);
Paying a hospital bill in Chile (Dkt. 88, Ex. 101 (p.190);
sending bonuses to an assistant in the Philippines (Dkt. 88, Ex. 101 (p.200);
paying child support, alimony, telephone bills, deposit of hotel, salary for caregiver, salary for maid, loan [repayment] (Dkt. 89, Ex. 32 (pp.147-148).
Users of the XOOM platform can effect such payments through a variety of ways including direct bill pay to the payee, transferring money directly into bank accounts, and/or through delivery and cash pick up services. Dkt. 100, Ex. 154, 192:3-193:15. At various times, the XOOM platform could also be used for the payment of goods or commercial bills including as Mr. King testified in
2016, to pay for goods in China from the United States. Id., 158:2-22.
Opposer currently offers biometric confirmations—i.e., fingerprint authorizations called
“TouchId” for money transfers and payments on its XOOM software app. Dkt. 89, ¶58. This
undisputed evidence further confirms the overlapping and related nature of Applicant’s services with
those offered on the XOOM platform. Moreover, many other companies in the electronic payment
DB2/ 33770618.1 34
and transfer business offer the ability to effectuate a transaction through fingerprint or biometric
authorizations including Opposer’s PAYPAL products and services, as well as third parties Azimo,
Western Union, TransferWise, WorldREmit. Dkt. 154, 197:13-198:12. As such, consumers are
likely to believe that ZOOMPAY for providing secure transactions or payments through biometric
technology are related to the services offered under the XOOM marks, such that consumers will be
confused.
As to Applicant’s opposed ZOOMPAY application in Class 9, it covers, “computer operating
software for point of sale system.” A point of sale system effects financial transactions and/or
payments at retail. Dk. 100, Ex. 154, 39:18-25. Opposer has and had many different types of
partnerships over the years of its use, including with retail outlets and businesses at which a customer
can pay bills or other obligations including to the retail outlet partnering with Opposer using the
XOOM platform. Dkt. 89, ¶30. Additionally, at certain times, retail stores and businesses have been
able to use the XOOM platform to process transactions for the payment of bills, receipts of monetary
credits, and the disbursement of cash to recipients in person at retail. Id., see also Dkt. 89, Exs. 24-
25 (pp.129-133) (use of XOOM by businesses including retail purchases). One of Opposer’s partnerships was with retailer Wal-Mart for a co-branded website. Id., ¶9.
Importantly, Opposer offers XOOM software for retail transactions in that retailers can and do pay out transactions to consumers on behalf of Opposer and in some instances pay bills at retail.
Dk. 100, Ex. 154, 39:18-25; Dkt. 89, ¶30. Additionally, at certain times, retail stores and businesses have used the XOOM platform to directly process payments of bills, receive monetary credits and disburse cash to recipients. Dkt. 89, ¶30, Exs. 24-25 (pp.130-133).
Moreover, due to the current marketplace of financial transaction companies, consumers are likely to believe that a company that offers point of sale transaction products and services is also likely to offer electronic money transfer and payment products and services. Dkt. 89, ¶59. Examples of companies that offer both types of products and services include Square, Alipay, WeChat Pay, and
DB2/ 33770618.1 35
others. Id. Moreover, almost every one of Opposer’s direct competitors offers money transfer services at retail including MoneyGram, Western Union, Bank of America, Wells Fargo. Dkt. 100,
Ex. 154, 73:24-74:14, 196:24-197:12. As a result, consumers are likely to believe that Opposer offers XOOM point of sale products and services including as part of a natural zone of expansion.
May Dept. Stores Co. v. Prince, 200 USPQ 803 (TTAB 1978) (shampoo is natural expansion from plaintiff’s health and beauty aids inasmuch as shampoo falls within the category of health and beauty aids); Time Warner Entmt. Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002) (evidence of licensing
ROADRUNNER mark on wide variety of goods and use of another mark BUGS BUNNY on maps
supported finding that road maps were within the natural area of expansion of products for plaintiff).
Applicant has failed to introduce any evidence demonstrating the breadth and scope of its
claimed use of ZOOMPAY in the marketplace that is relevant to the analysis. Applicant submitted
one in-store consumer-facing display referencing ZOOMPAY, which Applicant admits is no longer
used because “people were knocking them over and they were breaking so we quit…when they break
they go into the garbage.” Dkt. 97, Ex. 11 (pp.77-78); Dkt. 100, Ex. 153, 96:24-97:5. Applicant’s
President Mr. Toepfer also testified that ZOOMPAY is not used outside of its tanning salons, has not
been used in any external advertising or promotions, and is not intended to be used on its website.
Dkt. 100, Ex. 153, 82:22-83:11, 88:19-89:11. Applicant has not and cannot specify any revenue
earned from ZOOMPAY. Dkt. 100, Ex. 153, 94:25-95:4. Applicant also cannot specify and has not
specified the number of customers allegedly using ZOOMPAY. Id., 96:1-3. As a result, the Board
must analyze the opposed-applications for ZOOMPAY based solely on the identifications of goods
and services in the applications, based on the evidence that the designations have not been used at all
or have only been used in very limited ways inside Applicant’s tanning salons, which appear to be
located in only a few states. Dkt. 87, Ex. 38 (p.104).
Mr. Toepfer does admit that ZOOMPAY is a pay method for consumer commercial credit
card transactions (Dkt. 100, Ex. 153, 98:21-23), which is plainly related to and overlapping with the
DB2/ 33770618.1 36
capability of the XOOM platform to allow consumers to use their credit cards to electronically send
money and make payments. Moreover, Opposer’s federal registrations for its XOOM marks cover
related goods and services including electronic funds transfer and bill payment remittances services, and computer software for facilitating electronic funds transfers, bill payment remittances, and
electronic processing of payments. Dkt 89, Exs. 38-44.
The Board recently held that PMONEY for electronic funds transfers was likely to cause
confusion with the registered POPMONEY mark for electronic funds transfers and related computer
software. Fiserv, Inc. v. Elec. Transaction Sys. Corp., 113 USPQ 2d 1913 (TTAB 2015). Similarly,
here, given the similarity of ZOOMPAY for electronic payments and transfers and XOOM for
overlapping products and services, confusion is necessarily likely on the face of the XOOM
registrations and the ZOOMPAY applications.
Third-party registrations provide additional compelling evidence that money transfer services
and the applied for goods and services of Applicant are often offered under the same mark and, on
that basis alone, are related. Third-party registrations provide persuasive proof that Opposer’s money
transfer goods and services and Applicant’s applied-for goods and services are of a type which may
emanate from a single source under a single mark. See In re Davey Prods. Pty. Ltd., 92 U.S.P.Q.2d
1198, 1203 (TTAB 2009); In re Albert Trostel & Sons Co., 29 U.S.P.Q.2d 1783 (TTAB 1993).
Relevant examples of such registrations include:
SQUARE for computer hardware and software for processing financial transactions and
payments at point of sale and other financial services including money transfer and payment
services, Dkt. 86, Ex. 7 (pp.72-77).
WELLS FARGO WALLET and WELLS FARGO EASYPAY for computer software for
point of sale transactions and other types of financial services such as money transfer and
electronic payment services. Id., Ex. 8 (pp.78-82).
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PAYMENTWALL for commercial transactions and payment options using point of sale
networks and money transfer services. Id., Ex. 9 (pp.83-86).
WESTERN UNION WU and WESTERN UNION for electronic money transfer and bill
payment services as well as computer software for financial platform that accommodates
multiple types of payment and debit transactions. Id., Ex. 22 (pp.126-130); Dkt. 35, Ex. 7
(p.45).
MONEYGRAM for money transfer services and related software as well as services for
processing payments to third parties. Dkt. 35, Ex. 8 (p.47).
Opposer has introduced numerous other examples of registrations including the goods and services
identified and used with the parties’ respective XOOM and ZOOMPAY designations. Dkt. 86, Exs.
10-21 (pp.87-125); Dkt. 35, Exs. 9-18 (pp.48-72). Indeed, articles reflect that Opposer is viewed as a
competitor of many of these third parties. Dkt. 88, Ex. 91 (p.3), Ex. 94 (p.17), Ex. 97 (p.30). Many
of these competitors also offer biometric authorizations for such transactions. Dkt. 100, Ex. 154,
197:23-198:9. Moreover, many of these companies allow domestic and international payments and
transfers, which is something Opposer once offered and will likely offer again in the future. Id.,
79:15-20 (XOOM platform previously offered domestic to domestic transactions and payments and
will likely offer such functionality in the future).
As a result, consumers who would encounter Applicant’s ZOOMPAY designation for
financial transaction services, electronic payment services, and point of sale transaction software
would likely believe that they emanate from the same source as and/or are associated with or related
to Opposer PayPal and its XOOM money transfer service, when that is not the case. Given the
undisputable overlap and relatedness between Applicant’s applied-for goods and services and
Opposer’s XOOM money transfer products and services, this factor weighs strongly in Opposer’s
favor.
DB2/ 33770618.1 38
(3) The Parties’ Goods and Services Are Presumed to Share Consumers and Travel Through Similar Trade Channels
Because neither Opposer’s registrations for its XOOM mark nor the applied-for ZOOMPAY
applications contain limitations or restrictions on the particular channels of trade or classes of
consumers for the goods and services at issue, the Board assumes that the parties’ related goods and
services will be sold in identical channels to the same classes of consumers. See Hewlett-Packard
Co., 62 U.S.P.Q.2d at 1005 (“[A]bsent restrictions in the application and registration, goods and
services are presumed to travel in the same channels of trade to the same class of purchasers.”).
Opposer’s products and services are offered to general consumers (Dkt. 100, Ex. 154, 90:17-24) and
the applied-for designation likewise is also broadly offered to ordinary consumers. Indeed, the class
9 application for computer software for point of sale transactions, necessarily encompasses ordinary
consumers as the use of payment software is ubiquitous at retail establishments frequented by all
types of ordinary consumers. Likewise, the electronic payment services claimed in Class 36 are
wholly unlimited as to any consumers or channels of trade.
Applicant readily admits that the descriptions of goods and services in applications are not
limited in any way as to any type of consumer or channels of trademark. Dkt. 4, ¶13 (parent); Dkt. 4,
¶13 (child). Likewise, Mr. Toepfer testified that the description of services is in the application is not
limited in any way as to customers or channels of trade. Dkt. 100, Ex. 153, 74:20-24. An application
with an identification of goods and services having no restriction on trade channels or customers
cannot be narrowed by testimony that the applicant’s use is, in fact, restricted to a particular class of
customers or channel of trade. Octocom Sys., Inc. v. Houston Comp. Servs., Inc., 918 F.2d 937 (Fed.
Cir. 1990).
Accordingly, this factor further supports and weighs heavily in a likelihood of confusion.
See Venture Out Prop., LLC, 81 U.S.P.Q.2d at 1891.
DB2/ 33770618.1 39
(4) Opposer’s XOOM Mark is Strong and Has Been Used for its Services for Essentially Fifteen Years
The strength of a mark refers to the degree to which the relevant public recognizes it as an
exclusive source-identifier. As detailed in the King declaration and the evidence of record, the
XOOM mark for money transfer services, regardless of how the service is effectuated, is strong and
entitled to a broad scope of protection. See Starbucks U.S. Brands, LLC v. Ruben, 78 U.S.P.Q.2d
1741 (TTAB 2006) (strong marks are entitled to broad scope of protection).
As an initial matter, Opposer’s registrations for the XOOM mark on the Principal Register
provide a presumption of distinctiveness. See Vibrant Sales, Inc. v. New Body Boutique, Inc., 652
F.2d 299, 304 (2d Cir. 1981). Registration Number 2,909,931 is incontestable and entitled to a
conclusive presumption of distinctiveness for the registered services. 15 U.S.C. §§ 1065, 1115(b);
see Savin Corp. v. Savin Group, 391 F.3d 439, 457 (2d Cir. 2004) (“[A]n incontestible registered
trademark enjoys a conclusive presumption of distinctiveness.”).
Furthermore, as detailed above, the XOOM mark has been highly publicized, widely used,
and well regarded. Since 2003, Opposer has spent more than $250 million in advertising and
promotion of XOOM, including $40 million in 2017 alone. Dkt. 86, ¶¶51-52, Dkt. 100, Ex. 154,
193:16-24. In 2017 alone, there were 1.562 million unique users in the United States of the XOOM
products and services. Dkt. 100, Ex. 154, 194:3-11. In 2017, users of the XOOM platform sent or
paid $7.1 billion dollars, which is an increase from the $6 billion in 2016. Dkt. 100, Ex. 154, 194:22-
195:10.
Third party media, industry and news organizations have recognized XOOM products and
services including the Wall Street Journal, the Inter-American Dialogue, Consumer Reports, and
others, as a top platform for sending money online. Dkt. 100, Ex. 154, 195:19-196:2; Dkt. 87, Ex. 45
(p.164), Ex. 48 (p.184), Ex. 50 (p.195), Ex. 51 (p.199), Ex. 54 (p.220), Ex. 57 (p.233), Ex. 59
(p.245), Ex. 62 (p.263), Ex. 69 (pp.307-308, 314), Ex. 71 (p.374), Ex. 72 (p.334), Ex. 89 (p.436);
DB2/ 33770618.1 40
Dkt. 88, Ex. 91 (p.5), Ex. 97 (p.32).
The evidence of record confirms that consumers strongly recognize XOOM products and
services including through consumer reviews on trustpilot.com, for example:
“Xoom is a great way to pay for travel reservation deposits.” Dkt. 88, Ex. 101 (p.93);
“Xoom is the very best way to transfer money, and I should know!” Id., (p.97);
“Great experience paying a hospital bill in Chile.” Id., (p.190);
“Discovering Xoom has been a godsend! I can pay my utilities, directly deposit into
contractors’ accounts for services, and transfer dollars into my own Mexican account quickly
and easily, from anywhere in the world.” Id. (p.224);
“I love using xoom, it’s fast and easy.” Id. (p.234);
“I love XOOM. How convenient this tool has been for sending money to family and friends!
I paid all my international dues through this marvelous portal.” Id. (p.263).
As such, XOOM is a strong mark and “casts a long shadow which competitors must avoid.”
Kenner Parker Toys, Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 353, 22 U.S.P.Q.2d 1453, 1456
(Fed. Cir. 1992). Opposer’s longstanding use of its XOOM mark also favors a finding of likelihood of confusion under the circumstances. In re DuPont, 476 F.2d at 1362. Applicant, as the newcomer, has an obligation to avoid confusion with Opposer’s XOOM marks. Hewlett-Packard, 281 F.3d at
1265 (“the newcomer has the opportunity and obligation to avoid confusion with existing marks”).
(5) Lack of Relevant Third Party Registrations or Uses Weighs in Favor of a Likelihood of Confusion
The purported evidence of third-party marks introduced by Applicant fails to do anything to tarnish the strength of Opposer’s XOOM marks. Evidence of third-party use falls under the sixth
DuPont factor – the “number and nature of similar marks in use on similar goods.” In re E. I.
DuPont de Nemours & Co., 177 USPQ 563, 567 (CCPA 1973). If the evidence establishes that the consuming public is exposed to third-party use of similar marks on similar goods, it “is relevant to
DB2/ 33770618.1 41
show that a mark is relatively weak and entitled to only a narrow scope of protection.” Palm Bay
Imps, 73 USPQ2d at 1693. Marks that are not similar, are not for similar goods or services, or that
are descriptive are not relevant to this factor. See Nat’l Cable Television Ass’n, Inc. v. Amer. Cinema
Editors, Inc., 937 F.2d 1572, 1579-80 (Fed. Cir. 1991) (third party marks for unrelated goods and
services are “irrelevant” and “meaningless” to likelihood of confusion analysis); Hi-Shear Corp. v.
Nat. Auto. Parts Ass’n, 152 U.S.P.Q. 341, 344 (TTAB 1966) (holding that a supplemental
registration “manifestly…cannot be considered as evidence of a proprietary right in the registered
mark.”); McCormick & Co. v. Summers, 354 F.2d 668 (CCPA 1966) (supplemental registration is not
evidence of exclusive right to use mark).
Applicant’s Notices of Reliance threw in the kitchen sink listing any conceivable registration
without regard to the goods and services at issue, while failing to evidence any relevant third party
registrations and uses of similar marks for similar goods or services. All of the third party marks in
Applicant’s Notices of Reliance are entirely irrelevant including because they: are for unrelated
goods or services; the marks are not similar; the marks are descriptive and/or are on the supplemental
register; are used outside the United States; are not yet registered; are not in use anywhere; have been
cancelled or otherwise have become inactive; and there is no proof of the extent of any proffered
uses. See Objections.
For third party marks to render a senior mark weak, the evidence of third party uses of a
similar mark for similar goods and services must be “ubiquitous” or “considerable use” that is simply
not evidenced here. In re i.am.Symbolic, LLC, 866 F.3d 1315, 1328-29 (Fed. Cir. 2017).
Notwithstanding Applicant’s failure to introduce evidence of similar third party marks, it is well-
settled precedent that “the coexistence of similar marks in third-party registrations does not justify
registering a mark that is likely to cause confusion with previously registered marks.” AMF Inc. v.
Am. Leisure Prods., Inc., 474 F.2d 1403, 1406 (CCPA 1973).
DB2/ 33770618.1 42
Further, Applicant’s efforts to unilaterally create a “family” of ZOOM marks is likewise to
no avail. See Dkt. 97, ¶¶11-17. Applicant cannot create a family of marks as a defense, especially, when it clearly does not have priority. See Hornblower & Weeks Inc. v. Hornblower & Weeks Inc.,
60 USPQ2d 1722 (TTAB 2001); Baroid Drilling Fluids, Inc. v. Sun Drilling Prods., 24 USPQ2d
1048 (TTAB 1992) (family of marks argument can be used offensively as a sword but not defensively as a shield). In any event, the third-party registrations that it attempts to offer in evidence are no more relevant to this proceeding that the claimed family of marks for unrelated goods and services including energy drinks, fitness offerings, tanning salons. Dkt. 98, Exs. 1-9
(pp.49-101).
As a result, this factor weighs strongly in favor of a likelihood of confusion as Opposer’s
XOOM marks remain strong in the marketplace.
(6) Applicant is Not Currently Using ZOOMPAY Such That There Would Be Any Actual Confusion
One factor for consideration in ruling on a likelihood of confusion is the nature and extent of any actual confusion. In re E. I. DuPont de Nemours & Co., 476 F.2d at 1361.
Applicant has completely failed to objectively evidence any actual use of ZOOMPAY for any services since 2012. Dkt. 100, Ex. 153, Ex. 13 (p.515). Indeed, Applicant fails to introduce any use of ZOOMPAY on its website after 2012 or through any customer records or testimony. Dkt.
100, Ex. 153, 83:4-11. Applicant admits that it does not use or advertise ZOOMPAY outside of its own tanning salons, which appear to be geographically located only in Florida, Georgia and New
York. Id. at 83:9-11, 89:5-8; 121:7-9; Dkt. 87, Ex. 38 (p.104). Notably, the specimen submitted in connection with the application dated March 23, 2012 from the zoontan.com website is no longer featured there; currently, as the website now indicates that only “debit or credit cards” are accepted.
Dkt. 100, Ex. 153 at Ex. 13(p.515) compared to Dkt. 87, Ex. 38 (p.104). And, the display materials in evidence are admittedly no longer in use. Dkt. 100, Ex. 153, 96:24-97:5, Ex. 11 (pp.484-485).
DB2/ 33770618.1 43
As a result, there has been no opportunity for any actual confusion, or at the very least any
meaningful actionable confusion. Nina Ricci, SARL v. ETF Enters., Inc., 889 F.2d 1070, 1073-74
(Fed. Cir. 1989) (absence of actual confusion has no probative value because extent of usage of the
mark was unknown). As to the intent-to-use ZOOMPAY application, by definition there can be no actual confusion because there can be no evidence of use.
Hence, the fact that there is no evidence of actual confusion, is neutral at best, and, in all events does not weigh in favor of registration of the ZOOMPAY applications. Importantly, it is well accepted that actual confusion does not need to be established to find a likelihood of confusion. Time
Warner Entmt. Co. LP v. Jones, 65 USPQ 2d at 1662 (actual confusion is not required to establish
likelihood of confusion and is “notoriously difficult to come by”).
(7) Evidence Demonstrates Applicant’s Bad Faith
When applicable, in analyzing a likelihood of confusion, the Board will consider whether the
adoption or filing of a mark was in bad faith. See TBMP §309.03(c)(2)(B); DC Comics v. Pan Am.
Grain Mfg. Co., 77 USPQ2d 1220, 1228 (TTAB 2005) (bad faith intent in adopting the mark is
relevant under the 13th DuPont factor); Brdwy. Catering Corp. v. Carla, Inc., 215 USPQ 462 (TTAB
1982) (bad faith intent is strong evidence of a likelihood of confusion).
Here, there can be no doubt as to bad faith, particularly as to the filing of the intent to use
application for ZOOMPAY (Ser. No. 86/192,659). In February 2014, when that application was
filed, Applicant had actual notice of Opposer’s rights—not merely constructive notice. The
opposition against the financial services application for ZOOMPAY (Ser. No. 85/578,671) had been
filed in 2012 – two years earlier – and the parties had been working on a settlement agreement. Dkt.
100, Ex. 153, Ex. 15 (pp.583-600). As Applicant’s owner testified, at some point after authorizing
the settlement agreement, the Applicant determined to proceed to renege on the agreement and
proceed with an intent to use (and then another intent to use application two years after that in 2016)
for the identical ZOOMPAY designation for yet other goods. Dkt. 100, Ex. 153, 109:22-110:10,
DB2/ 33770618.1 44
118:9-119:4 (testifying to authorizing settlement and then changing his mind), Ex. 15 (pp.593-600)
(email with settlement agreement signed by Xoom).
Equally significant, when asked why he used the goods and services chosen for each of the
applications, Applicant’s owner testified he did so because that is all that the government offered --
not that he actually used or in good faith planned to use the ZOOMPAY designation for the applied-
for goods and services. Dkt. 100, Ex., 153, 97:23-98:1, 101:17-102:15. This alone demonstrates that
Applicant did not act in good faith as to the applications.
(8) Conclusion
Based on Opposer’s continuous, extensive use of its XOOM marks for now essentially fifteen years, and the incontestable status of at least one of the XOOM registrations, with concomitant promotion and consumer recognition, the XOOM mark is strong and entitled to broad protection, while in contrast, no such showing has been made and cannot be made (since there is no cognizable evidence of record) for any ZOOMPAY designation even the ZOOMPAY designation that supposedly is in use.
At its core, there is a likelihood of confusion due to the use of XOOM for a variety of types of electronic payments including through biometric authorizations, the fact that the electronic payment services are not restricted to personal or commercial, and Applicant’s applied-for
ZOOMPAY electronic payment services are not restricted as to personal or commercial. Likewise, there is a likelihood of confusion due to the use of XOOM software for retailers to effect consumer payments at retail, the nature of the electronic payments marketplace for companies to offer point of sale and other types of money transfer products and services, and the lack of any restrictions in the goods and services of either party.
Separately or combined, the relevant DuPont factors support the Board sustaining both oppositions in favor of Opposer given that the evidence etablishes a likelihood of confusion.
DB2/ 33770618.1 45
B. Evidence of Record of Applicant’s Objective Lack of Bona Fide Intent to Use ZOOMPAY (Application No. 86/192,659) in Commerce for Computer Operating Software
1. Relevant Facts Demonstrating a Lack of Bona Fide Intent
The dictionary defines “operating software” as “software used in the operation of a computer
system, typically by performing such tasks as memory allocation, job scheduling, and input/output
control.” Dkt. 88, Ex. 106 (pp.472-473) (noting Microsoft produces 90 percent of operating software
for computers); see also Dkt. 88, Ex. 107 (p.477) (“thelawdictionary.com”). Importantly, this
definition is consistent with the definition of “computer operating software” provided in the
Trademark Office’s TMEP today and in 2014 when the application was filed and subsequently when
it was amended. Dkt. 88, Ex. 108 (pp.481-483) (TMEP §1402.03(d)(2) (“Computer operating
programs…: Software under this category comprises master control programs that run the computer
itself. They are the first programs loaded when the computer is turned on and set the standards for
the application programs that run in the…operating program”). Similarly, the TEMP states that
“Computer software is a product classified in International Class 9 if it is recorded on media or is
downloadable…”). Id., p.483. Under these governing definitions, Applicant does not now, and did not at the time it filed its ZOOMPAY intent-to-use application, nor at the time it amended its
ZOOMPAY intent-to-use pplication, have the requisite bona fide intent to use in commerce of the applied-for ZOOMPAY designation for downloadable “computer software for point of sale system” or “computer operating software for point of sale system.” Simply stated, Applicant has come forward with no objective evidence of use for any computer software falling into International Class
9 and/or for any computer operating software, or any good faith intent to do so as of the filing date of the application in February 2014.
In response to Opposer’s requests for all documents supporting its claim to have had a bona fide intent to use ZOOMPAY for “computer operating software,” Applicant agreed to provide all
responsive documents but, in fact, produced no documents referencing computer operating software,
DB2/ 33770618.1 46
or even downloadable computer software, and has provided no such documents during its trial
testimony periods. Dkt. 88, Ex. 114 (pp.590-629) (e.g., Reg. Nos. 1-2). Only two types of responsive documents were produced relating to software and which are in evidence, but they provide no support for the bona fide intent to use the designation for “computer operating software.”
First, Applicant’s President testified that the intended ZOOMPAY software is referred to as
Hyperion software. Dkt. 97, ¶24. The Hyperion website from November 2017 describes its “point
of sale” software capabilities as “intuitive software accessed through the cloud.” Dkt. 86, Ex. 32 (p
439). A cloud-based solution is by definition Internet-based, not downloadable software. Dkt. 88,
Ex. 109 (pp.485-486).
Second, Applicant introduced into evidence and produced a “Zoom Tan Training Manual,”
marked as CONFIDENTIAL-FOR ATTORNEYS’ EYES ONLY-TRADE
SECRET/COMMERCIALLY SENSITIVE under the Board’s Standard Protective Order. Dkt. 97,
Ex. 10 (filed under seal in Dkt. 101) (ZTH-0171-255). Applicant’s President testifies that this
undated Manual—without referencing any one of the 85 pages therein—trains employees “on how to
operate the ZOOMPAY point –of-sale software system.” Dkt. 97, ¶24. This Manual, however, does
not evidence any “operating software” nor does it establish that any such software is downloadable.
Dkt. 101. Indeed, “Zoom Pay” is described in the Manual as a tab within a “pay now” tab, and not as
computer operating software” or even downloadable software. Id. At ZTH-000195, ZTH-000243
(screen shot of “Pay Now” tab).
Applicant’s President further testified that the ZOOMPAY software in the application is referenced in the Manual as “Hyperion.” Dkt. 97, ¶24. The references to Hyperion, however, demonstrate a cloud or Internet-based product only. Dkt. 101, ZTH-000239-240 (see references to
“IP Address” and access through the “internet”). This Zoom Tan Training Manual is the single piece of evidence relied on by Applicant’s President in testifying to his self-serving statement that
Applicant had a bona fide intent to use ZOOMPAY for “computer operating software.” Dkt. 97, Ex.
DB2/ 33770618.1 47
10 (pp.77-78), ¶24. Overall, the Manual does not demonstrate any bona fide intent to use
ZOOMPAY for computer operating software for point of sale. Dkt. 101. In fact, the complete lack
of objective evidence confirms Applicant had no bona fide intent.
In this same regard, the only consumer or public facing use of ZOOMPAY produced by
Applicant in either proceeding is an undated in-store display, which states in relevant part,
“ZoomPAY™ allows you to pay with the touch of a finger. It’s super fast and it is protected by the
uniqueness of your fingerprint!” Dkt. 97, Ex. 11 (pp.77-78). Again, as admitted by Applicant’s
President, that reference only describes a service, not any software. Dkt. 97, ¶32.
Although Applicant agreed to produce all responsive documents relating to how ZOOMPAY
software is downloadable computer operating software, Applicant has not produced and has not
submitted at trial any evidence of:
business plans including identifying any competitors or sale price for any computer operating
software (RFP Nos. 19, 25, 34)
documents referencing ZOOMPAY for computer operating software or explaining how its
software is computer operating software, or any downloadable software (RFP Nos. 1- 2, 9);
marketing or advertising materials, or documents relating to sales and/or user targets for
software (RFP Nos. 3, 13, 14);
agreements relating to software (RFP No. 4);
documents demonstrating any money spent to develop software or evidencing when work
started on the software (RFP Nos. 5, 31, 32);
screenshots of software showing features or functions of the software (RFP Nos. 7, 40);
any communications or letters relating to software (RFP Nos. 8, 16)
software specifications, software manuals, software architecture (RFP Nos. 10, 11, 12);
documents provided to third parties about software (RFP No. 15).
DB2/ 33770618.1 48
Dkt. 88, Ex. 114 (pp.590-628). To date, Applicant has not submitted any objective evidence
demonstrating a bona fide intent to use the designation for computer operating software. See record
at Dkt. 41, Dkt. 97-100. Moreover, the computer operating software for point of sale claimed
admittedly to date: had not been completed in terms of development (RFA No. 2); had not been sold
to any third parties (RFA No. 3); had not been communicated, marketed or advertised to any third
parties in any manner (RFP No. 16); and has no defined target industry (RFP No. 13). Dkt. 88, Exs.
116-117 (pp.653-692).
In response to a question as to how Applicant’s ZOOMPAY software was computer
operating software, Applicant’s President testified that Applicant had to work within the “confines of
what the government gives them for categories, because they didn’t have a point of sale category.”
Dkt. 100, Ex., 153, 101:17-102:4. Such a statement does not support a “bona fide” intent. This is
particularly true because when the examining attorney proposed the definition the Examining
Attorney especially gave the express admonition to adopt the proposed revised description only “if
accurate.”
Importantly, Applicant admits that “how consumers and/or customers will download the
software, is presently unknown.” Dkt. 88, Ex. 117 (p.678) (Rog. No. 8). Thus, this statement alone
independently weighs against any bona fide intent to use the designation for “computer operating
software” in Class 9.
Based on the objective evidence of record, Applicant, did not (and does not) have bona fide
intent use the applied-for designation for any “downloadable software” of any type, at any time, let
alone for any “computer operating software” on the date the opposed-application was filed, or on the
date of the amendment to the description of the software in May 2014.
DB2/ 33770618.1 49
2. Analysis Supporting Judgment in Favor of Opposer on Lack of Bona Fide Intent Claim
Section 1(b) of the Lanham Act provides that an applicant may file a trademark application
based on a bona fide intention to use a mark in commerce “under circumstances showing the good
faith of such person.” 15 U.S.C. §1051(b). It is well-established that a determination of whether an
applicant has a bona fide intention to use the mark in commerce is an objective, not a subjective,
determination based on all the circumstances. Lane Ltd. v. Jackson Intl. Trading Co., 33 USPQ2d
1351, 1355 (TTAB 1994); M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368, 114 USPQ2d 1892,
1898 n.5 (Fed. Cir. 2015) (product development, market research, manufacturing activities,
promotional activities, steps to acquire distributors or other similar activities are objective evidence
of intent). Indeed, subjective claims of intent to use the mark for the goods identified in the
application are not relevant evidence of whether the filing was bona fide. See Swiss Grill Ltd. v. Wolf
Steel Ltd., 115 USPQ2d 2001 (TTAB 2015).
The Board has held that if there are no documents predating the filing supporting the intent to
use for the goods covered by the application, there is a prima facie case of no bona fide intent to use
the mark in commerce. Saul Zaentz Co. v. Bumb, 95 USPQ2d 1723, 1727 (TTAB 2010). The
absence of any documentary evidence suffices to prove that an applicant lacks the intention required
by Section 1(b) of the Trademark Act, unless other facts are presented which adequately explain or
outweigh applicant’s failure to provide such documentary evidence. See Commodore Elecs. Ltd. v.
CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1507 n.11 (TTAB 1993); Honda Motor Co. v.
Winkelmann, 90 USPQ2d 1660, 1662 (TTAB 2009); L.C. Licensing Inc. v. Berman, 86 USPQ2d
1883, 1891 (TTAB 2008).
There is simply is no dispute here as to the relevant facts in the trial record — the
ZOOMPAY intent-to-use application claims an intent to use for downloadable “computer operating
software for point of sale,” in Class 9, but no documents to objectively evidence that intent have been
DB2/ 33770618.1 50
produced. To the contrary, the Applicant testified that it only adopted the description because that
was the only definition that the Trademark Office offered. Dkt. 100, Ex. 153, 102:15-103:2. That is
not enough as a matter of law.
The Trademark Manual of Examining Procedure Section 1402.03(d), entitled “Identifying
Computer Programs with Specificity” provides the definition of “computer operating program,” as:
Computer operating programs and computer operating systems: Software under this category comprises master control programs that run the computer itself. They are the first programs loaded when the computer is turned on and set the standards for the application programs that run in the operating system or operating program.
Dkt. 88, Ex. 108 (p.481). The TMEP’s statement of what “computer operating programs” are is consistent with the definitions found in dictionaries. Dkt. 88, Exs. 106-107 (pp.472-473).
Thus, based on the undisputed facts including the sworn testimony of the President of
Applicant, other admissions, the documents in evidence, the documents Applicant produced (and the documents Applicant did not produce), Applicant did not have an objective bona fide intent to use
ZOOMPAY for computer operating software whether judged at the time of filing the application, at the time of amendment or even now.
Even if Applicant intended to use ZOOMPAY for a computer program for point of sale payments, that is not a master control program that runs the computer itself and does not set the standards for the application programs that run in the operating system or program. As Applicant admitted, it did not adopt the amendment proposed by the Examining Attorney for its goods description because “computer operating” software accurately described the intended product but only because it believed the Trademark Office “didn’t have a point of sale category.” Dkt. 100, Ex.
153, 101:17-101:15. In fact, Applicant testified that the intended software does not control the computer, as required to meet the definition of computer operating software. Id., 104:5-7, 105:3-5; see Dkt. 88, Exs. 106-108 (pp.472-483). Applicant’s testimony that the intended ZOOMPAY
DB2/ 33770618.1 51
designation “operates the front counter” underscores the lack of bona fide intent to use the desgination for computer operating software. Dkt. 100, Ex. 153, 102:11-21.
Importantly, Applicant has failed to produce a single document such as a business plan, website, screen shot of the software or computer user manuals, evidencing an intent to use
ZOOMPAY for any software let alone for the downloadable “computer operating software.” Simply stated, Applicant has provided no objective evidence demonstrating any actions or plans to attempt to license, market or sell any software product to any third parties, let alone a computer operating software product.
On this basis alone, the Board should grant judgment in favor of Opposer sustaining the
Opposition as to Application Number No. 86/192,659 as Applicant cannot demonstrate the objective bona fide intent to use required to legally substantite the statutory requirement for an intent to use application.
V. CONCLUSION
For each of the foregoing reasons, Opposer respectfully requests that the Board issue
judgment in favor of Opposer:
(1) as to the opposed-application for ZOOMPAY (Serial No. 85/578,671) on the basis of the
overwhelming evidence submitted in support of its likelihood of confusion claim; and
(2) As to the opposed-application for ZOOMPAY (Serial No. 86/192,659) on the basis of the
undisputed evidence submitted in support of its likelihood of confusion claim and claim that
Applicant lacks the bona fide intent to use the mark for computer operating software of any type.
Respectfully submitted,
Dated: July 9, 2018 By: /s/ Sharon R. Smith
Rochelle D. Alpert Sharon R. Smith Morgan, Lewis & Bockius LLP One Market, Spear Street Tower San Francisco, CA 94105
DB2/ 33770618.1 52
Telephone: (415) 442-1326 Facsimile: (415) 442-1001 [email protected] (Email) [email protected] (Email)
Attorneys for Opposer PayPal, Inc.
CERTIFICATE OF SERVICE
I hereby certify that a copy of the foregoing • OPPOSER’S TRIAL BRIEF IN SUPPORT OF
CONSOLIDATED OPPOSITIONS TO APPLICATIONS FOR ZOOMPAY
(with APPENDIX OF OBJECTIONS TO APPLICANT’S TRIAL DECLARATION AND
TESTIMONY, AND NOTICES OF RELIANCE) was sent via email to the attorneys for
Applicant on July 9, 2018 to:
NATHAN B WEBB JEANNE L. SEEWALD HAHN LOESER & PARKS LLP HAHN LOESER & PARKS LLP 200 PUBLIC SQUARE, SUITE 2800 5811 PELICAN BAY BLVD, SUITE 650 CLEVELAND, OH 44114 NAPLES, FL 34108
[email protected], [email protected], [email protected] Attorneys for Applicant, ZT HOLDINGS, LLC
DB2/ 33770618.1 53
APPENDIX OF OBJECTIONS TO APPLICANT’S TRIAL DECLARATION AND TESTIMONY, AND NOTICES OF RELIANCE
DB2/ 33251462.1
Pursuant to TBMP §§707.02(c) and 707.03(c), Opposer PayPal, Inc. (“Opposer”),
submits this Statement and Appendix of Objections to Applicant’s Trial Testimony and Notice of
Reliance filed concurrently with its trial brief as to substantive objections to the testimony and
notice of reliance trial evidence Applicant has submitted in this Consolidated Proceeding
(“Proceeding”).
I. Testimony
A. Objections to Trial Testimony Declaration of Anthony Toepfer, dated January 12, 2018 (DKT. 97); Testimonial Deposition, dated June 11, 2015 (DKT. 100)
Applicant submitted declaration testimony, dated January 12, 2018, of Applicant’s owner
and manager, Anthony Toepfer (“Toepfer”) hereafter (“Toepfer Decl.”), and submitted as part of
a Notice of Taking Testimony (DKT. 96), Anthony Toepfer’s testimonial deposition taken on
June 11, 2015, and further resubmitted the same trial testimony as part of its Notice of Reliance,
DKT. 100, Ex. 153, (hereafter, “Toepfer Depo.”); both of the submissions of the Toepfer
June 2015 trial testimony include a copy of the Toepfer Declaration submitted in opposition to
the motion for summary judgment (hereinafter, DKT. 100, Ex. 153, “S/J Decl.,” Depo. Ex. 14,
pp. 517-92). For ease of reference, Opposer refers to the testimony submission by Notice of
Reliance of the Toepfer Deposition (DKT. 100, Ex. 153) and the page numbers of the trial
testimony transcript and exhibit numbers thereto, and by doing so, thereby objects on the same
basis to the testimony and exhibits regardless of docket entry where Applicant also may have submitted the same testimony and/or exhibits. In the same regard, Opposer submits its objections to the Summary Judgment Toepfer Decl., included as an exhibit to the Toepfer Depo., to the extent Opposer believes Applicant may rely on this Declaration. Opposer provides specific objections to this testimony and exhibits regardless of submission format as specified below.
DB2/ 33251462.1 1 1. Testimony as to “Beliefs” about Opposer’s Offerings Business and Customers
Applicant’s owner, Anthony Toepfer, purports to testify about his “review and inspection
of the XOOM website/software” and Applicant characterizes such testimony as Toepfer’s
“beliefs” that this examination led him to “about bill payment remittance and electronic
payments not actually being offered by Opposer XOOM.” DKT. 96, p. 3. See Toepfer Depo.,
DKT. 100, Ex. 153, pp. 29:6-25; 30:1-15; 51:10-52:4; 52:15-60:19; 61:3-64:25; id., S/J Decl.,
Dep. Ex. 14, ¶¶21, 23-26, p. 520; Toepfer Decl., DKT. 97, ¶¶53-61, pp. 18-20.
In his testimony, Toepfer admits that to reach these so-called “beliefs” he went through
the Xoom website “pretty quick because [he] was trying to find a similarity….” DKT. 100, Ex.
153, Toepfer Depo. 61:21-62:1. Toepfer further admits that he did not try to make an electronic payment for goods or services, because he believed that Xoom did not take credit cards (which is not the case, as evidenced in the documents he himself appears to have relied on for his so-called
“beliefs” (e.g., id., S/J Decl., Dep. Ex 14, section 4(b), p. 584) (payment methods include “credit card, debit card or bank account”)). Toepfer Depo., DKT. 100, Ex. 153, 62:7-63:1. Likewise,
Toepfer admits that “he looked at the software app and concluded it was pretty much the same thing on their Web site.” Id., 63:20-25. As a result, Toepfer’s referenced declaration statements and testimony about his beliefs about Xoom offerings are irrelevant, lack personal knowledge, lack foundation and constitute improper opinion evidence. Fed. R. Evid. 401 (relevance), 602
(lack of personal knowledge); 701 (improper opinion, not an expert).
Likewise, Toepfer attempts to testify regarding his “beliefs” as to the nature of customers using the XOOM platform based on this same “review of their Web site” and unidentified “third party articles.” Toepfer Depo., DKT. 100, Ex. 153, 70:11-71:6; id., S/J Decl., Dep. Ex. 14, ¶¶22-
26, p. 520; Toepfer Decl, DKT. 97, ¶¶53-61, pp. 18-21. This testimony is objectionable as irrelevant, lacking personal knowledge, and improper opinion from a non-expert. Fed. R. Evid.
DB2/ 33251462.1 2 401 (relevance); 602 (lack of personal knowledge); 701 (improper opinion not admissible, not an
expert).
2. Testimony as to Likelihood of Confusion
Toepfer also improperly attempts to opine about his beliefs on the ultimate legal issue —
whether there is a likelihood of confusion between XOOM’s trademark rights and the applied-for
ZOOMPAY designations without a proper foundation. Toepfer Decl., DKT. 97, ¶¶43-51,
and 61, pp. 15-16, and 20; Toepfer Depo., DKT. 100, Ex. 153, pp. 30:17-31:2. Opposer objects
to this testimony as inadmissible. Fed. R. Evid. 401 (relevance); 602 (lack of personal
knowledge); Fed. R. Evid. 701 (improper opinion; legal conclusion).
Despite the fact that the ZOOMPAY application at issue in the child proceeding is based
on an admitted intent-to-use application and Toepfer himself admits the product “has never been
advertised or sold,” Toepfer nonetheless proffers his “belief” that he would be very surprised if
there was marketplace confusion. Toepfer Decl., DKT. 97, ¶46, p. 16. Given that the
application is an intent-to-use application and not limited as to channels of trade or customers,
this “belief” is not admissible on relevancy grounds (Fed R. Evid. 401). See Octocom Sys. Inc. v.
Houston Computer Services Inc., 918 F.2d 937 (Fed. Cir. 1990) (Board should presume normal
channels of trade and to all types of customers when goods/services are not limited). In all
events, there also is no foundation for Toepfer’s self-serving testimony about Opposer’s
offerings or customers, or even Applicant’s supposed other offerings, since, for example, there is
no data of record about any extent of any use by Applicant in terms of any sales, revenues or
geographic scope of use currently of record. Thus, Opposer also objects to this statement based
on lack of foundation (Fed. R. Evid. 602) and that it constitutes improper opinion and legal
conclusion (Fed. R. Evid. 701).
DB2/ 33251462.1 3 3. Testimony as to the Functionality of ZOOMPAY Computer Operating Software
Toepfer also purports to testify in his declaration that the ZOOMPAY computer operating
software cannot effect money transfers between individuals — only from customer accounts to
pay businesses. Toepfer Decl., DKT. 97, ¶48, p 16. Opposer objects to this statement as
irrelevant given that the goods description in the opposed intent-to-use application (and for that
matter the services in the alleged “use” application for “electronic payments” as admitted in
Applicant’s Answer, dated 1/21/2013, DKT. 4, ¶13, p. 3) is not limited as to customers or
channels of trade. See also Applicant’s Answer, Opp. 91217334, dated 8/24/2014, DKT. 4, ¶13, p. 4 (“description is not limited as to customers or channels of trade”). See also Octocom Sys.
Inc. v. Houston Computer Services Inc., 918 F.2d 937 (Fed. Cir. 1990) (Board should presume
normal channels of trade and to all types of customers when goods/services are not limited).
Given that neither application is limited and that Applicant has admitted this fact, any self-
serving statements to the contrary are objectionable. Thus, these statements are irrelevant and
lack foundation and constitute improper opinion. Fed. R. Evid. 401 (relevance); Fed R. Evid.
602 (foundation), Fed R. Evid. 701 (opinion).
Toepfer also attempts to draw a conclusory opinion that there is no overlap between the
channels of trade or purchasers of XOOM goods and services and Applicant’s goods or
purchasers. Toepfer Decl., DKT. 97, ¶49, p. 16-17. Toepfer lacks foundation to testify about the
XOOM goods and services (see discussion above), and as previously noted for any intent to use
application, since the goods/services are not limited in the opposed applications, the proper
presumption is that the goods/services apply to all channels of trade and to all types of
consumers. See Octocom Sys. Inc. v. Houston Computer Services Inc., 918 F.2d 937 (Fed. Cir.
1990). Given Applicant’s admission that its use application is not limited as to customers or channels of trade (Applicant’s Answer, Opp. No. 91208416, dated 1/21/2013, DKT. 4, ¶13, p. 3),
DB2/ 33251462.1 4 this same conclusion applies for Applicant’s so-called services. Thus, this statement is irrelevant
and lacks foundation and constitutes an improper conclusory opinion. Fed. R. Evid. 401
(relevance); Fed. R. Evid. 602 (lack of foundation); Fed R. Evid. 701 (improper opinion not
admissible; legal conclusion).
For these same reasons, Topefer’s declaration testimony that there is no likelihood of
confusion, or that the so-called risk is “small” (Toepfer Decl., DKT. 97, ¶¶50-51, 61. p. 17) is
not admissible as relevant, lacking foundation and improper opinion. Fed. R. Evid. 401
(relevance); Fed. R. Evid. 602 (lack of personal knowledge); Fed. R. Evid. 701 (improper
opinion; legal conclusion).
4. Testimony as to Beliefs about Third Party Registrations
Toepfer’s declaration testimony about third party trademark registrations, including
cancelled registrations, without reference to their extent of use, is without foundation. Toepfer
does not identify which third party trademark registrations he relied on or if he did anything to
determine the extent of use of such registrations as part of his proferred testimony. Toepfer
Decl., DKT. 97, ¶52, pp. 17-18. On the face of his so-called belief, there is no indication in the
declaration as to what registrations or use of the registrations the declarant is relying on other
than a generalized reference to a Notice of Reliance (which evidence in and of itself is deficit as
laid out in more detail below in Section II). Toepfer Decl., DKT. 97, ¶52, pp. 17-18. Thus, the
testimony is objectionable: Fed. R. Evid. 401 (relevance); Fed. R. Evid. 602 (lack of personal
knowledge); and Fed. R. Evid. 701 (improper opinion not admissible; legal conclusion).
5. Testimony about Beliefs about Consumers Generally
The declarant offers his “belief,” without foundation, that “consumers are accustomed to
discerning that different goods and services are offered under names that arguably contain
similar elements.” Toepfer Decl., DKT. 97, ¶52, pp. 17-18. This belief likewise is not supported
DB2/ 33251462.1 5 by any cognizable evidence since the declarant offers a bald opinion without any statement as to
how he reached this conclusory opinion about consumers generally and is without foundation.
Fed. R. Evid. 401 (relevance); Fed. R. Evid. 602 (lack of personal knowledge); Fed. R. Evid. 701
(improper opinion not admissible; legal conclusion).
6. General Objection to Deposition Testimony.
As to the trial deposition testimony, since Applicant has submitted the entire transcript
including exhibits, as part of its Notice of Reliance without in any way specifying those portions
it will rely on, Opposer reserves its right to file additional objections specific to other testimony
that Applicant may cite in its trial brief once that testimony is identified by Applicant.
II. Notices of Reliance
A. Opposition No. 91208416: Objections to Documents in Notice of Reliance
1. Third Party Registrations Without Any Proof of Use
Opposer objects to the third party registrations that Applicant attempts to enter into the record through flawed statements of relevance, incorrectly relied-upon case law, and otherwise flawed foundations. See Applicant’s Notice of Reliance, DKT. 41, ¶¶9-13, Exs. AG–AK, pp. 4-
6, 57-66. Although certain of the registrations overlap with others asserted in the more recent
Notice of Reliance, DKT. 98, others differ and, in all events, in certain instances, there are
additional justifications for striking the references as made in the Notice of Reliance for
Opposition No. 91208416. DKT. 41, ¶¶9–13, Exs. AG-AK, pp. 4-6, 57-66. If there is an
overlap of arguments, for the convenience of the Board, we have referenced the so-called
registrations from this notice of reliance in Section B set forth below as well.
First, Applicant attaches to its Notice of Reliance five different third party
registrations — purportedly marks containing phonetic equivalents (i.e., “Zoom,” “zzoom,” etc.)
and so-called Class 36 goods. Notice of Reliance, DKT. 41, ¶¶9–13, Exs. AG–AK, pp. 4-6, 57-
DB2/ 33251462.1 6 66. Applicant’s requisite statement of relevance for all five of these third party registrations
asserts that each registration “illustrates a similar mark in use on goods of the same international
class, and is therefore relevant to the number and nature of similar marks in use on similar goods,
which influences a finding that the mark is relatively weak and entitled only to a narrow scope of
protection.” Id. This statement of relevance is flawed and objectionable because: (1) it improperly conflates “goods of the same international class” with “marks in use on similar goods” and is an erroneous and unjustified statement of relevance, and (2) most importantly,
Applicant did not demonstrate actual use of any of the five registrations, which is required for a third party registration to be relevant for the purpose of establishing any alleged weakness of a mark. On these grounds alone, all five registrations are objectionable as irrelevant and lacking in foundation. Fed. R. Evid. 401, 602.
As set forth in DuPont, the relevant issue for the likelihood of confusion analysis is “the
number and nature of similar marks in use on similar goods,” with no reference to only an
overlap in classes as sufficient to demonstrate relevance. Dupont, 476 F.2d at 1361 (emphasis
added). As that DuPont factor is further articulated in Palm Bay, it is even more clear that an overlap in class alone is not relevant particularly given that “[t]he probative value of third party trademarks depends entirely on their usage.” Palm Bay, 396 F.3d at 1373, citing Scarves by
Vera, Inc. v. Todo Imports, Ltd., 544 F.2d 1167, 1173 (2d Cir. 1976) (“[t]he significance of third- party trademarks depends wholly upon their usage. Defendant introduced no evidence that these trademarks were actually used by third parties, that they were well promoted or that they were recognized by consumers.”). The registration certificates Applicant submits are not accompanied with proof of any use, let alone any information about the extent of any such use.
Notice of Reliance, DKT. 41, ¶¶9–13, Exs. AG–AK, pp. 4-6, 57-66. Thus, Opposer objects to each of these exhibits as irrelevant and lacking in foundation on these grounds alone. Fed. R.
DB2/ 33251462.1 7 Evid. 401, 602.
Totally separately, it is noteworthy that three out of the five registrations Applicant
attaches to its Notice of Reliance have been cancelled. The registration certificate for I-ZOOM,
U.S. Reg. No. 3423798, according to the TSDR database, was formally cancelled on
December 12, 2014; the registration certificate for ZOOM REALTY, U.S. Reg. No. 3467161,
according to the TSDR database, was formally cancelled on February 20, 2015; and the
registration certificate for ZOOMPASS, U.S. 3,649,247, which shows it was based only on a
Canadian registration, owned by a Canadian partnership Enstream LP, according to the TSDR
database, was formally cancelled on February 12, 2016 (Defendant’s Notice of Reliance,
DKT. 98, Ex. 66, p. 340-41). See, DKT. 41, ¶¶11–13, Exs. AI, AJ, and AK, pp. 5-6, 62-66.
Accordingly, Opposer respectfully requests the Board to take judicial notice of its own records
(and documents of record) showing that these registrations are cancelled. As cancelled
registrations owned by third parties, without any proof of use in commerce in the United States
at any time before cancellation, all are further objectionable on the independent ground that they
lack any relevancy or foundation as to the extent of use, if any. Fed. R. Evid. 401, 602.
Second, Applicant attaches seven additional third party registrations to its Notice of
Reliance, each for a mark purportedly containing the word “xoom.” DKT. 41, ¶¶14–20, Exs.
AL–AR, pp. 6-7, 67-80.1 Applicant asserts these registrations are relevant because each
“illustrates a similar mark in at least sight and connotation, and is therefore relevant to the scope
of protection and/or lack of distinctiveness of Opposer’s marks.” Id., ¶¶14–20, pp. 6-7.
Applicant’s reasoning again is flawed. Without a showing of relevance to the goods and services
at issue, which there is none provided here, and there can be none on the face of the registrations;
1 The registration for XOOMBOX, US Registration No. 3,883,743 (DKT. 41, ¶20, Ex. AR, pp. 7, 79-80) has been cancelled based on the USPTO records. Opposer request that the Board take judicial notice of this fact, particularly since no use prior to cancellation has been made of record.
DB2/ 33251462.1 8 these registrations are not relevant. Fed. R. Civ. 401. Without regard for the similarity or
relatedness of goods and services, a third party registration is utterly irrelevant and lacking in
foundation. Fed R. Evid. 401, 602.
Even assuming the relevance of these third party registrations, they are objectionable
because the registrations alone without more fail to establish the extent of use of the marks.
AMF Inc. v. American Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973)
(the "existence of [third party] registrations is not evidence of what happens in the market place
or that customers are familiar with them."). Without evidence of the extent to which the marks
are in use in commerce, applicant's list of third-party registrations possesses no probative value.
Fed. R. Evid. 602.
2. Webpages as Limiting Opposer’s Use
In its Notice of Reliance, Applicant proffers seventeen printouts from Opposer’s
xoom.com website, attached as Exhibits AS through BI, claiming that the printouts describe and
limit Opposer’s actual use of its marks.” See DKT. 41, ¶¶21–37, Exs. AS–BI, pp. 8-11, 81-149.
This statement of relevance is objectionable since there is no cognizable testimony that they can
be construed to “limit Opposer’s actual use of its marks.” Id. Fed R. Evid. 602, 701. Further,
there is no cognizable testimony that establishes the completeness of these printouts as to
Opposer’s offerings at the time of printing of these webpages by Applicant. On this basis, as
well, the testimony is lacking in foundation and relevance. Fed. R. Evid. 401, 602.
3. Printouts of Searches of Marks
Applicant attaches as Exhibits BJ and BK to its Notice of Reliance printouts of TESS
database search results for registrations and applications, both active and inactive, containing
“zoom” (Ex. BJ) or “xoom” (Ex. BK). DKT. 41., ¶¶38–39, Exs. BJ and BK, pp. 11, 150-167.
Applicant asserts that these search results “illustrate a frequency of similar marks in at least sight
DB2/ 33251462.1 9 and connotation, and are therefore relevant to the scope of protection and/or lack of
distinctiveness of Opposer’s marks.” Id. It is well-established law, however, that third party
registrations, without regard to the similarity of goods or services and without evidence of actual
use of the marks, are not probative of “scope of protection and/or lack of distinctiveness.” In all
events, the TBMP is clear that such third party registrations are not properly admitted via a
Notice of Reliance simply by introducing a TESS search list of third-party registrations. TBMP
§704.03(b)(1)(B) (“[A] party may not make a third-party registration of record simply by
introducing a list of third-party registrations…”). Indeed, the majority of the listed, purported
registrations are “dead” applications or registrations, which are probative of nothing.2 Thus, this printout of TESS Search Results is objectionable. Fed. R. Evid. 401, 602.
4. Printouts Concerning Uses Outside the United States
Opposer objects to exhibits in Applicant’s Notice of Reliance which are related to activities solely outside of the United States. See DKT. 41, ¶¶42–43, 45, Exs. BN, BO, BQ, pp.
12-13, 174-78, 181-183. These printouts reveal on their face uses of internet pages only outside the United States. The purported Zoompass service is offered apparently by Paymobile, Inc. to
“Canadian mobile phone subscribers” for “Money transfers in Canada.” Id., Exs. BN, BO, pp.
12, 174-78. Similarly, ZOOM by National University Hospital, likewise only references services in Singapore under a .sg domain name. Id., at ¶45, Ex. BQ, pp. 13, 181-83. Johnson & Johnson
v. Salve S.A.,183 USPQ 375, 376 (TTAB 1974) (foreign use of mark creates no rights in mark in
U.S.). Thus, there is no relevancy or proper foundation for these pages here. Fed R. Evid. 401,
602.
2 What’s more, most of the active applications and registrations listed containing “xoom” are owned by Opposer, which only serves to contradict Applicant’s supposed statement of relevance. See DKT. 41, Ex. BJ, pp. 150-58, which proves if anything the opposite of Applicant’s contention.
DB2/ 33251462.1 10 5. Third Party Internet Materials
Opposer objects to Applicant’s use of third party internet materials. DKT. 41, ¶¶41, 44,
46-51, Exs. BM, BP, BR, BS, BT, BU, BV, BW, pp. 12-14, 172-73, 179-80, 184-215. Each of
these references lacks foundation since there is no information about the extent of use of these
references or anything else about them. Fed. R. Evid. 401, 602.
6. Third Party Articles from the Internet
Applicant seeks to rely on articles from the Internet to establish the frequency of “similar
marks.” DKT. 41, ¶¶40, 52, Exs. BL, BX, pp. 11-12, 15, 168-71, 216-219. The Wikipedia
printout for “zoom” (but which shows “Xoom” as well, p. 170 under “See Also”) and the article
“Power of Starting Your Brand Name With an X,” do not present cognizable evidence of the
frequency of so-called “similar marks.” Id. The materials as far as “similar marks” lack
relevance and foundation. Fed. R. Evid. 401, 602.
B. Opposition No. 91217374 Objections to Documents submitted in Notice of Reliance:
1. Third Party Registrations and/or Applications, DKT 98
(i) Registration for DATAXOOM
Opposer objects to the admissibility of the registration for DATAXOOM covering
“connecting wireless service providers with wireless data consumers” in Class 35 (DKT. 98,
Ex. 10, pp. 102-6; See also DKT. 41, Ex. AM, pp. 69-70), and supposed proof of use (DKT. 98,
Ex. 11, pp. 107-12) as irrelevant and lacking in foundation. See also DKT. 41, Ex. AM, pp. 69-
70. On its face, connecting wireless service providers with wireless data consumers” services are
not similar or related services to those goods and services at issue. Moreover, Exhibit 11 only
provides an example of use of “DataXoom Corp,” a trade name use, not DATAXOOM the
registered mark, and only for “connecting businesses to the mobile internet,” which also do not
DB2/ 33251462.1 11 appear to be the services covered by the registration. DKT. 98, Ex. 11, pp. 108-12. Nonetheless,
on its face, “connecting businesses to the mobile internet” services are not related to the goods
and services at issue. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en
1772, 396 F.3d 1369, 1373-74 (Fed. Cir. 2005) (significance of third party trademarks depends
wholly on their usage). And the extent of use of this mark is not demonstrated. Thus; this
registration and purported internet pages are not admissible pursuant to Fed. R. Evid. 401
(relevance) and Fed. R. Evid. 602 (lacking in foundation).
(ii) Supplemental Registration for FOCUS ZOOM
Opposer objects to the admissibility of the Supplemental Registration for FOCUS ZOOM
for “cameras” (DKT. 98, Ex. 12, p. 113-16) and the purported use of the registered mark on the
Internet (id., Ex. 13, pp. 117-29). On the face of the Supplemental Registration, “cameras” are not related to or relevant to the goods and services at issue in this proceeding. Moreover, the webpage printouts do not demonstrate use of the registered mark FOCUS ZOOM for any camera. Id. Rather, the only use of Focus Zoom on the webpage printouts Applicant provides
(id., pp. 117-29) only show use for a SMART TV, without any trademark marking, and from a
site addressed to “Central America and Caribbean.” Id. Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74 (Fed. Cir. 2005) (significance of
third party trademarks depends wholly on their usage). See also Johnson & Johnson v. Salve
S.A., 183 USPQ 375, 376 (TTAB 1974) (foreign use of mark creates no rights in the mark in the
United States). Furthermore, given that the cited registration is on the supplemental registration,
Applicant had to prove up actual use functioning as a mark for the registered goods since a
supplemental registration is not entitled to any statutory presumptions. TBMP §704.03(b)(1)(A);
In re Chippendales USA, Inc., 622 1346, 1353 n. 9 (Fed Cir. 1989). Applicant has not done so.
Thus, this registration and purported internet pages are not admissible pursuant to Fed. R. Evid.
DB2/ 33251462.1 12 401 (relevance) and Fed. R. Evid. 602 (lacking in foundation).
(iii) Registration for GAZOOM
Opposer objects to the admissibility of the third party registration for GAZOOM for
“online advertising via a computer communications network.” DKT. 98, Ex. 14, pp. 130-32.
The cited Internet page from archive.org (id., Ex. 15, pp. 133-34) is dated June 1, 2016, so it
does not in any event evidence current use as of the filing of the Notice of Reliance on January 1,
2018. Moreover, on its face, the services covered by the GAZOOM registration are not similar
or related to the goods and services at issue here. Further, without a showing of current use,
there is no showing as to the extent of use. In re E.I. du Pont Nemours & Co., 476 F.2d 1357,
1361 (CCPA 1973). Thus, these exhibits to the Notice of Reliance are not admissible pursuant to
Fed. R. Evid. 401 (relevance) and Fed. R. Evid. 602 (lacking in foundation).
(iv) Registrations for MAZOOMA
Opposer objects to the admissibility of the third party registrations for MAZOOMA.
DKT. 98, Exs. 16, 17, pp. 135-44. Only similar marks in terms of sight, sound and/or meaning
are relevant to the likelihood of confusion issue. In re E.I. du Pont Nemours & Co., 476 F.2d
1357, 1361 (CCPA 1973). Applicant has failed to demonstrate that the third party mark
MAZOOMA is similar in sight, sound or meaning to Opposer’s XOOM marks. Registrant’s
statement in the cited registrations that MAZOOMA has “no meaning in a foreign language”
confirms that that the mark is a single term not a term that ordinarily would be broken down into
component parts. Id., Ex. 17, p 141. Indeed, in the printouts provided by Applicant,
MAZOOMA appears in a single type face with no highlighting of any letters or portions of the
coined term (id., Ex. 18, pp. 145-51) further substantiating no relevance or foundation. And,
Applicant has not shown the extent of any use. Accordingly, the registration should be found
inadmissible under relevance and lack of foundation. Fed. R. Evid. 401, 602.
DB2/ 33251462.1 13 (v) Registrations for PAYZOOM
Opposer objects to the admissibility of the third party registration for PAYZOOM.
DKT. 98, Exs. 20, 21, pp. 159-65. Only third party registrations with similar or related goods
and services are relevant to the likelihood of confusion issue. Palm Bay Imps., Inc. v. Veuve
Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74 (Fed. Cir. 2005)
(significance of third party trademarks depends wholly on the usage). Applicant has failed to
demonstrate in its Notice of Reliance or otherwise that the services identified for and used in
relation to the PAYZOOM marks identified are similar or related to those used in connection
with the XOOM marks. The cited marks are registered for “providing an internet website portal
featuring technology for “conducting business transactions… and establish terms of dealing
between business entities.” DKT. 98, Exs. 20, 21, pp. 159-165. The Internet use Applicant
proffers further belies any relatedness here as the printouts show use for “Job Management”
“unlimited work orders,” “permissions,” “custom billing cycles,” “custom rates.” Id., Ex. 22,
p. 167; Ex. 23, p. 170. And, the extent of use of this mark has not been shown. As a result, the
registration for PAYZOOM is not relevant under Fed. R. Evid. 401 and lacking in foundation,
Fed. R. Evid. 602.
(vi) Registration for QUICKZOOM
Opposer objects to the admissibility of the third party registration for QUICKZOOM.
DKT. 98, Ex. 24, pp. 172-75. The evidence of use that Applicant provides shows only use of
QUICKZOOM as a feature of “QuickBooks Online,” not for any computer software that the
registration covers. DKT. 98, Ex. 25, pp. 176-77. In any event, the QUICK component of the
mark is the dominate part of the referenced mark. The only reference to QUICKZOOM
Applicant provides expressly states “the QuickZoom feature shows the detail behind the reports
and lets you drill down to the transaction level” and then states “For a Free Trial of QuickBooks
DB2/ 33251462.1 14 Online, visit www.quickbooks.in/index.html.” DKT. 98, Ex. 25, p. 177 (emphasis added). This
feature of QUICKBOOKS Online is not the same or related to the goods and services offered in
connection with the XOOM marks. Only third party registrations which are confusingly similar
to the XOOM marks are relevant to the likelihood of confusion issue. In re E.I. du Pont
Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973). Fed. R. Evid. 401. And, only those third
party registrations covering similar or related goods and services are relevant to the likelihood of
confusion issue. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772,
396 F.3d 1369, 1373-74 (Fed. Cir. 2005) (significance of third party trademarks depends wholly
on the usage). This registration does not meet either requirement and thus is not relevant.
Fed. R. Evid. 401 (relevance). Further, there has been no evidence submitted showing use of the
registered mark for any computer software and, for that matter, the extent of use of such mark.
Fed. R. Evid. 602 (lack of foundation).
(vii) Registration for SOFTZOOM
Opposer objects to the admissibility of the third party registration for SOFTZOOM
covering “computer software consulting; programming of computer software for others.”
DKT. 98, Ex. 26, p. 178-80. On the face of the registration, the mark is not at all germane to the
goods and services for which XOOM uses its marks. The only use of the SOFTZOOM mark
Applicant provides (DKT. 98, Ex. 27, p. 181-83) further confirms that the services are
completely unrelated. There the page expressly states “We specialize in programming web
applications using up to date Microsoft technologies.” Id., p. 183. See Palm Bay Imps., Inc. v.
Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74 (Fed. Cir. 2005)
(significance of third party trademarks depends wholly on the usage, including how it is used, whether it is well promoted or recognized by consumers). Thus, the registration and the so- called website printout of use for the registration is irrelevant to the issues in this proceeding and
DB2/ 33251462.1 15 lacking in foundation. Fed. R. Evid. 401, 602.
(viii) Supplemental Registration for TOUCH ZOOM
Opposer objects to the admissibility of the third party registration on the supplemental
registrar for TOUCH ZOOM (DKT. 98, Ex. 28, pp. 185-87) for “mobile phones; computer
application software for mobile phones for receiving and transmission of message in the nature
of data, text, language, sound, image and video” as not similar to or related to the goods and
services at issue on the face of the registration. DKT. 98, Ex. 28, pp. 185-87. Revealingly, the
Internet pages Applicant relies on confirm no use for the goods for which the mark is registered.
DKT. 98, Ex. 29, pp. 188-95. Rather, the use shown is for a wholly generic feature of a mobile
phone that “allows users to Zoom In or Zoom Out by triple tapping the screen.” Id., p. 189.
Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369,
1373-74 (Fed. Cir. 2005) (significance of third party trademarks depends wholly on their usage).
This use also is not relevant to the XOOM marks at issue. Further, the web pages show no use of
any trademark marking in connection with the Touch Zoom feature. Furthermore, given than the
cited registration is on the supplemental registration, Applicant has to prove even more that a
registration since such a registration is not entitled to any statutory presumptions. TBMP
§704.03(b)(1)(A); In re Chippendales USA, Inc., 622 1346, 1353 n. 9 (Fed Cir. 1989). Both the supplemental registration and the webpages submitted are irrelevant and lacking in foundation.
Fed. R. Evid. 401, 602.
(ix) Supplemental Registration for TRACKING ZOOM
Opposer objects to the admissibility of the third party supplemental registration for
TRACKING ZOOM for “mobile phones; computer application software for mobile phones for receiving and transmission of message in the nature of data, text, language, sound, image and video.” DKT. 98, Ex. 30, pp 196-99. On its face, this registration is not for goods or services
DB2/ 33251462.1 16 related to those for which the XOOM mark is used. As a supplemental registration, Applicant
has to prove use as a trademark for the covered goods since a supplemental registration is not
entitled to any statutory presumptions. TBMP §704.03(b)(1)(A); In re Chippendales USA, Inc.,
622 1346, 1353 n. 9 (Fed Cir. 1989). The cited Internet pages (DKT. 98, Ex. 31, pp. 200-1) do
not cure this deficiency. Rather, the use shows only a “Tracking zoom mode” feature to “focus
on and enlarge,” without any indication of any trademark usage for mobile phones or for
software, or even any trademark marking. It appears that the “Tracking zoom mode” appears to
relate to video, but without any indication of the nature of the delivery of the video. Thus, there
is no trademark use demonstrated and no indication on even what product the “Tracking zoom
mode” appears. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396
F.3d 1369, 1373-74 (Fed. Cir. 2005) (significance of third party trademarks depends wholly on
their usage, including whether they were well promoted or are recognized by consumers). This
mark and Internet printouts are irrelevant and lacking in foundation. Fed. R. Evid. 401
(relevance) and 602 (lack of foundation).
(x) Registration for VELOCITY ZOOM
Opposer objects to the admissibility of the third party registration for VELOCITY
ZOOM (DKT. 98, Ex. 32, pp. 203-5) on the grounds that on its face the registration is irrelevant.
Fed. R. Evid. 401 (relevance). The evidence of use for VELOCITY ZOOM supplied by
Applicant (id., Ex. 33, pp. 206-8) only shows use for “system analytics” such as “real time analytics on application performance as well as data on access and changes to application
environment.” Id., Ex. 33, p. 208. On their faces, these types of services are not similar or
related to those goods and services offered in connection with Opposer’s marks. In re E.I. du
Pont Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973); Palm Bay Imps., Inc. v. Veuve
Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74 (Fed. Cir. 2005)
DB2/ 33251462.1 17 (significance of third party trademarks depends wholly on their usage, including whether they
were well promoted or are recognized by consumers). And, the extent of such use has not been
adequately demonstrated. The registration and the webpages are objectionable as not relevant
and lacking in foundation. Fed. R. Evid. 401, 602.
(xi) Registration for XOME ZOOM
Opposer objects to the admissibility of the third party registration for XOME ZOOM
(DKT. 98, Ex. 34, pp. 209-10) on the grounds that it is irrelevant on its face. Fed. R. Evid. 401
(relevance). Applicant has failed to demonstrate that the downloadable mobile application
product identified for and used in relation to XOME ZOOM mark is similar or related to those
used in connection with Opposer’s XOOM marks. First, on the face of the description of goods,
the Registrant specifically excludes the type of software covered by Opposer’s XOOM mark by
expressly carving out any implication of such use, stating: “excluding software for money
transfer, facilitating money transfers, bill payment, payment of mortgages, electronic processing
and transmission of payments.” DKT. 98, Ex. 34, p. 210. Second, the Internet printout
Applicant provides confirms that there is no use that goes beyond this exclusion. The webpages
expressly identify the app as “Real Estate BY Xome, by Xome Inc.” and only describes the app
as “a radically better way to buy or sell a home.” DKT. 98, Ex. 35, pp. 214-16. See Palm Bay
Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74 (Fed.
Cir. 2005) (significance of third party trademarks depends wholly on their usage, including
whether they were well promoted or are recognized by consumers). As a result, on the face of
the goods description and on the webpages submitted no relevant use can be found. And, the
extent of such use of the registered mark has not been made of record. As such, the registration
is not relevant to any XOOM goods or services and lacks foundation. Fed. R. Evid. 401, 602.
DB2/ 33251462.1 18 (xii) Registration for XZOOM PRO
Opposer objects to the admissibility of the third party registration for XZOOM PRO.
DKT. 98, Ex. 36, pp. 217-20. The registration itself expressly excludes certain goods stating,
“specifically excluding computers, hand-held devices, mobile phones, computer hardware,
computer software, card readers, computer chip readers, point of sale terminals, magnetically
encoded gift cards, pre-paid cards and deferred payment cards, and holders for magnetically
encoded gift cards, pre-paid cards and deferred payment cards falling….” DKT. 98, Ex. 36,
p. 218. Notably any type of computer software or pre-paid or payment cards are expressly
excluded. Id. The use of the XZOOM PRO mark Applicant provides does not change that
result, since, at best, it shows limited use — only for a “XZOOM Pro Dual Car Charger Micro
Cable.” DKT. 98, Ex. 37, p 222. Such a device on its face is not similar or related to the goods
and services covered by XOOM marks. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin
Maison Fondee en 1772, 396 F.3d 1369, 1373-74 (Fed. Cir. 2005) (significance of third party trademarks depends wholly on their usage). As such, the registration is not relevant and lacking in foundation since no use has been shown for anything beyond a charger micro cable. Fed. R.
Evid. 401, 602.
(xiii) Registration for BLOOM ZOOM and Design
Opposer objects to the admissibility of the third party registration for BLOOM ZOOM and Design. DKT. 98, Ex. 38, pp. 224-27. On the face of the registration, it covers software for use in literacy, games and entertainment in the nature of stories, games, puzzles and reading activities, which use is wholly unrelated to the goods and services for which Xoom’s marks are used. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d
1369, 1373-74 (Fed. Cir. 2005) (significance of third party trademarks depends wholly on their usage, including whether they were well promoted or are recognized by consumers). More
DB2/ 33251462.1 19 importantly, Applicant provides no use of this mark for any goods or services, let alone the
extent of use. Thus, the registration is objectionable both because the registration is irrelevant on
its face and otherwise lacks foundation for not being in use, let alone the extent of use. Fed. R.
Evid. 401 (relevancy); Fed. R. Evid. 602(lack of foundation).
(xiv) Registration for ZOOM
Opposer objects to the admissibility of the third party registration for ZOOM covering
“mobile computer hardware and software development platform comprised of a software
application framework and software development tools.” DKT. 98, Ex. 39, pp. 228-33. On its
face, this registration is not relevant to the use of the XOOM marks. This conclusion is further
confirmed by the limited website printouts Applicant provides (id., Ex. 40, pp. 234-38), which
only proffer use for a “development kit for evaluating the functionality of Texas Instruments.
DaVinci.” Id. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772,
396 F.3d 1369, 1373-74 (Fed. Cir. 2005) (significance of third party trademarks depends wholly
on their usage, including whether the mark is well promoted or recognized by consumers). Thus,
the registration and use should not be considered because the registration is irrelevant on its face
and otherwise lacks foundation for being in use for any relevant goods or services. Fed. R. Evid.
401, 602.
(xv) Registration for ZOOM
Opposer objects to the admissibility of the third party registration for ZOOM covering
essentially computer hardware and software for receiving and transmitting data over a wireless
network and related items. DKT. 98, Ex. 41, pp. 239-43. On its face, this coverage has nothing
to do with the XOOM goods and services. Further, Applicant has failed to demonstrate that this
ZOOM mark overlaps with or is related to the goods and services used in connection with the
XOOM marks. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772,
DB2/ 33251462.1 20 396 F.3d 1369, 1373-74 (Fed. Cir. 2005) (significance of third party trademarks depends wholly
on their usage, including whether the mark is well promoted or are recognized by consumers).
The Internet printout Applicant provides only confirms the irrelevancy of this Registration,
because it only evidences use for a “mini external modem.” DKT. 98, Ex. 42, pp. 244-45. On
the face of the registration and the webpages provided, the mark is not relevant and lacks foundation as to any other use beyond that of a “mini external modem,” which on its face is irrelevant. Fed. R. Evid. 401, 602.
(xvi) Registrations for ZOOM CREDIT and ZOOM CREDIT and Design
Opposer objects to the admissibility of the third party registrations for ZOOM CREDIT
(DKT. 98, Ex. 43, pp. 239-43) and ZOOM CREDIT and Design (id., Ex. 44, pp. 251-55). On the face of the registrations, there is an exclusion of “software and services relating to money transfers, bill payment remittances, electronic processing and transmission of payments and payments data, and electronic funds transfer services.” Id., Exs. 43 and 44, pp. 246-55.
Applicant failed to demonstrate any use in the cited Internet printouts that in any way redefines the scope of use. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en
1772, 396 F.3d 1369, 1373-74 (Fed. Cir. 2005) (significance of third party trademarks depends wholly on their usage, including whether the mark is well promoted or recognized by consumers). Instead, the Internet printouts, to the extent they are at all legible show that ZOOM
CREDIT services are for services offered to businesses: “Furniture & Bedding merchants can now enter the customer credit application into our online portal….” DKT. 98, Exs. 45, 46, pp.
256-59. Moreover, no printout shows use of the design mark. Id. And, the extent of use has not otherwise been demonstrated. On the face of the registrations and the webpages provided, the registrations are not relevant and lack foundation. Fed. R. Evid. 401, 602.
DB2/ 33251462.1 21 (xvii) Registration for ZOOM INFORMATION
Opposer objects to the admissibility of the third party registration for ZOOM
INFORMATION. DKT. 98, Ex. 47, pp. 260-63. The ZOOM INFORMATION registration on
its face is limited to “non-downloadable computer software for accessing, extracting, and
organizing information from the Internet and other sources regarding people, companies,
products, markets, industries and other categories to develop databases of information and to
enable searching of those databases,” which appears unrelated on its face to the XOOM marks.
Further, Applicant has failed to demonstrate any use of the ZOOM INFORMATION mark. The
webpages submitted as Exhibit 48 only use ZOOMINFO, not the registered mark ZOOM
INFORMATION. Compare DKT. 98, Ex. 47, pp. 260-63 with id., Ex. 48, pp. 264-69. But even
then, the printouts using ZOOMINFO only show use for “B2B Database of Detailed and
Accurate Contact Information.” DKT. 98, Ex. 48, pp. 264-69. On the face of the registration
and the webpages, the mark is not relevant and lacks foundation as to any use, let alone one
similar or related to the XOOM marks at issue, and do not show the extent of use. Fed. R. Evid.
401 and 602.
(xviii) Registration for ZOOM LISTING
Opposer objects to the admissibility of the registration for ZOOM LISTING. DKT. 98,
Ex. 49, pp. 270-72. On its face of the registration, the description of services covers software as a service for an online database of real estate properties and to facilitate the purchase of real estate “by matching buyers and sellers.” Id., p. 271. The Internet printout merely serves to underscore the lack of any relatedness as it describes the use of the designation for a real estate software service as “providing any real estate firm with a true market differentiator.” Id., Ex. 50,
274-75. On the face of the registration and the webpages provided, the mark is not relevant and there is no proffer of the extent of use. Fed. R. Evid. 401, 602.
DB2/ 33251462.1 22 (xix) Registration for ZOOM LOANS
Opposer objects to the admissibility of the third party registration for ZOOM LOANS.
DKT. 98, Ex. 51, pp. 278-81. On the face of the registration, the services covered consist of
“electronic loan origination services” (id., p. 279), which on their face are not similar or related
to Xoom’s goods and services. Moreover, the Internet printout in Exhibit 52 describes only a
portal for “Custom Real Estate Loans.” Id., Ex. 52, pp. 282-85. See Palm Bay Imps., Inc. v.
Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74 (Fed. Cir. 2005)
(significance of third party trademarks depends wholly on their usage, including whether the
mark is well promoted or recognized by consumers). And, there is no evidence of the extent of
use. On the face of the registration and the webpages, the mark is not relevant and lacks
foundation as to use for “electronic loan origination services,” let alone a use similar or related to
the marks at issue and/or the extent of such use. Fed. R. Evid. 401, 602.
(xx) Registration for ZOOM MEDIA
Opposer objects to the admissibility of the third party registration for ZOOM MEDIA.
DKT. 98, Ex. 53, pp. 286-90. On the face of the registration, the ZOOM MEDIA designation is
not used for services related or similar to those at issue here. The registration covers
“advertising and marketing services for others…;” “consultation services related to advertising
design…;” “Rental services for others for advertising space;” “Distribution of advertising and
promotional material and product samples for others…;”and “Printing services for others”
owned by Groupe Zoom Media Inc. Notably, there was no use shown upon registration in 2017,
since the application solely relied on a Canadian registration. Id., pp. 287-88. Further, on the
face of the registration, the covered services have no relationship to the goods and services at
issue here. See In re E.I. du Pont Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973).
Moreover, Applicant has failed to demonstrate use in the webpages provided. Id., Ex. 54, pp.
DB2/ 33251462.1 23 291-301. The printout only bears the name ZOOM Active Lifestyle Marketing (id., top of page,
except p. 301 top and bottom). That entity is not the owner of the registered mark ZOOM
MEDIA, which is Groupe Zoom Media Inc. There is no evidence of record of any relationship
between Groupe Zoom Media Inc. and ZOOM Active Lifestyle Marketing. On the face of the
registration and the webpages, the mark is not relevant and lacks foundation as to any use, let
alone one similar or related to the use of the XOOM marks at issue, and the extent of use in
commerce with the United States has not been demonstrated. Fed. R. Evid. 401, 602.
(xxi) Registration for ZOOM NOTIFY
Opposer objects to the admissibility of the third party registration for ZOOM NOTIFY.
DKT. 98, Ex. 55, pp. 302-5. The registration covers computer software and computer network
integration services and the hosting of application and software of others, along with computer
security services. Id. On the face of the registration, these services are unrelated to the goods
and services at issue here. In re E.I. du Pont Nemours & Co., 476 F.2d 1357, 1361 (CCPA
1973). Revealingly, the only use of the registered mark Applicant has identified is use of ZOOM
NOTIFY for “empowering businesses to detect fraud, reduce risk, improve compliance and
improve human productivity with proactive event management,” stating that “Businesses today
can ill afford the consequences of data breach, revenue loss or simply inefficient processes.”
DKT. 98, Ex. 56, 306-8; see id., p. 307 for quote. No other services are substantiated as being offered in the webpages submitted. Id. On the face of the registration and the webpages, the
mark is not relevant and lacks foundation as to any services beyond data breach services, let
alone any extent of such use. Fed. R. Evid. 401, 602.
(xxii) Supplemental Registration for ZOOM TO TRACK
Opposer objects to the admissibility of the Supplemental Registration for ZOOM TO
TRACK. DKT. 98, Ex. 57, pp. 309-12. On the face of the registration, the registration is not
DB2/ 33251462.1 24 relevant since it covers mobile phones and computer application software for receiving and
transmission of message in the nature of data, text language, sound image and video,” owned by
LG Electronics Inc. of the Republic of Korea. In re E.I. du Pont Nemours & Co., 476 F.2d 1357,
1361 (CCPA 1973). Further, as a supplemental registration, Applicant has to prove use as a
trademark for the covered goods since a supplemental registration is not entitled to any statutory
presumptions, and is not evidence of anything….” TBMP §704.03(b)(1)(A); In re Chippendales
USA, Inc., 622 1346, 1353 n. 9 (Fed Cir. 1989). The webpages submitted (DKT. 98, Ex. 58, pp.
313-15) do not demonstrate any use for mobile phones or for any type of application software
whether available outside or in the United States. Instead the webpages submitted use ZOOM
TO TRACK only in reference to a feature for playing a video which allows the enlargement of
an object while tracking it, without any trademark marking. Id. at 314. See Palm Bay Imps., Inc.
v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74 (Fed. Cir. 2005)
(significance of third party trademarks depends wholly on their usage, including whether the
mark is well promoted or recognized by consumers). Revealingly, the webpages are from a “.ca”
address (see bottom left) and only reference LG Canada on every page at the top. DKT. 98,
Ex. 58, pp. 314-15. Johnson & Johnson v. Salve S.A., 183 USPQ 375, 376 (TTAB 1974)
(foreign use of mark creates no rights in the mark in the United States). On the face of the registration and the webpages submitted, the mark is not relevant and lacks foundation as to any use in the United States, let alone one similar or related to the marks at issue. Fed. R. Evid. 401,
602.
(xxiii) Registration for ZOOMDATA
Opposer objects to the admissibility of the third party registration for ZOOMDATA.
DKT. 98, Ex. 59, pp. 316-18. On the face of the registration, the registration covers wholly unrelated services, namely “business information management,” “consumer strategy business
DB2/ 33251462.1 25 consulting,” “analysis of market research” and “business data analysis.” Id., p. 317. The
webpages submitted do not even support use of the registration. Id., Ex. 60, pp. 319-21. Instead,
the webpages refer only unrelated educational services — a Master Class in Big Data. Such use
also has nothing to do with the XOOM marks and does not even demonstrate use of the
registration of ZOOMDATA. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee en 1772, 396 F.3d 1369, 1373-74 (Fed. Cir. 2005) (significance of third party trademarks
depends wholly on their usage, including whether the mark is well promoted or recognized by
consumers). On the face of the registration and the webpages, the mark is not relevant and lacks
foundation as to any use of the registration, let alone the extent of any such use. Fed. R. Evid.
401, 602.
(xxiv) Supplemental Registration for ZOOM TO TRACK
Opposer objects to the admissibility of the Supplemental Registration for AREA ZOOM.
DKT. 98, Ex. 61, pp. 322-25. The registration covers mobile phones; computer cameras and
computer application software mobile phones for receiving and transmission of message in the
nature of data, text language, sound image and video, owned by LG Electronics, Inc. of the
Republic of Korea. Id. As a supplemental registration, proof of use as a trademark for the
covered goods or services is required, particularly since a supplemental registration is not
entitled to any statutory presumptions.” TBMP §704.03(b)(1)(A); In re Chippendales USA, Inc.,
622 1346, 1353 n. 9 (Fed Cir. 1989). Here, Applicant provided no proof of use. The
supplemental registration alone lacks any evidentiary value and is simply irrelevant and lacking
in foundation. Fed. R. Evid. 401, 602.
(xxv) Supplemental Registration for ZOOMIN
Opposer objects to the admissibility of the Supplemental Registration for ZOOMIN.
DKT. 98, Ex. 62, pp. 326-28. The registration is for “electronic messages management
DB2/ 33251462.1 26 software.” On the face of this supplemental registration, this registration is not for goods that are
similar or related to the goods or services at issue. Further, as a supplemental registration, proof
of use as a trademark for the covered goods or services is required, particularly since a
supplemental registration is not entitled to any statutory presumptions.” TBMP
§704.03(b)(1)(A); In re Chippendales USA, Inc., 622 1346, 1353 n. 9 (Fed Cir. 1989). The
Internet pages (DKT. 98, Ex. 63, pp. 329-32) do not demonstrate use of the mark for “electronic
messages management software. At best, the webpages evidence use of a tool to maintain the
zoom feature to enlarge Microsoft outlook messages. Id. Revealingly, there is no trademark
notice or marking on any of the web pages, except trademark markings when referring to the
zoom feature of “Microsoft® Outlook®.” Id., p. 330. As Palm Bay Imps., Inc. v. Veuve
Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74 (Fed. Cir. 2005)
recognizes, the significance of third party trademarks depend wholly on their usage, including
whether the mark is well promoted or recognized by consumers. Thus, this supplemental
registration alone lacks any foundation and is simply irrelevant, and the webpages provided do
not change that result. Fed. R. Evid. 401 and 602.
(xxvi) Registration for ZOOMINFO
Opposer objects to the admissibility of the third party registration for ZOOMINFO.
DKT. 98, Ex. 64, pp. 333-36. That registration on its face is for “computer software for
accessing, extracting and organizing information from the Internet and other sources regarding
people, companies, products, markets industries, and other categories to develop databases of
information to enable searching of those databases.” Id. On its face, this registration has no
relevance to this proceeding. Further, while the website pages refer to a database providing
“access to over 209 million professional profiles and 13 million business profiles” (DKT. 98,
Ex. 65, pp. 337-39; id., p. 338 for quote), there is no reference to any software for accessing that
DB2/ 33251462.1 27 database or any other reference to how that database is delivered. Id. Regardless, a business and
professional database regardless of how it is delivered, has no relevance to this proceeding. In re
E.I. du Pont Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973). The registration is simply
irrelevant, and the webpages provide no proof of any use for any type of software and even if
they did they do not prove the extent of use. Fed. R. Evid. 401 and 602.
(xxvii) Cancelled Registration for ZOOMPASS
Opposer objects to the admissibility of the cancelled registration for ZOOMPASS owned
by Enstream LP, a partnership of “all Canadian companies.” DKT. 98, Ex. 66, pp. 340-44; see
id., p. 342 for quote. See also, DKT. 41, ¶13, Ex. AK, pp. 5-6, 65-66. The cancelled registration on its face was based solely on a Canadian registration. Id. Under these circumstances, in particular, a cancelled registration is not relevant to any issues in this proceeding. See Johnson
& Johnson v. Salve S.A., 183 USPQ 375, 376 (TTAB 1974) (foreign use of mark creates no rights in the mark in the United States). Further, Applicant has not provided any documentation that shows Enstream LP, a Canadian entity, ever used the mark in the United States. In fact, the registration was cancelled for lack of use. DKT. 98, Ex. 66, pp. 340-44. The cancelled registration is simply irrelevant, and lacks any foundation for being admissible in this proceeding because there is no evidence of record of Estream LP’s use before cancellation in commerce with the United States or the extent of that use. Fed. R. Evid. 401 and 602.
(xxviii) Application for ZOOMPASS
Applicant requests that an opposed application for the mark ZOOMPASS be made of record here. DKT. 98, Ex. 67, pp. 345-350. It is well-established, however, that an application is not of any significance and that is particularly so when an opposition has been filed. See
Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 109 USPQ2d 1949, 1956 n.9
(TTAB 2014) (third party applications are not evidence of anything except that they were filed).
DB2/ 33251462.1 28 See also TBMP §704.03(b)(2). Here the application has been opposed as well, making it even
more irrelevant. DKT. 98, Ex. 67, pp. 345-50.3 Of significance, no evidence of use in
commerce with the US for all or any of the goods and services has been provided. See Palm Bay
Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74 (Fed.
Cir. 2005) (significance of third party trademarks depends wholly on their usage, including
whether the mark is well promoted or recognized by consumers). The webpages Applicant
provided only bear a Canadian phone number and address, with no indication of availability in
the United States. DKT. 98, Ex. 68, pp. 351-56. Johnson & Johnson v. Salve S.A., 183 USPQ
375, 376 (TTAB 1974) (foreign use of mark creates no rights in the mark in the United States).
Thus, the opposed (now dead) application and the webpage providing no use in commerce with
the United States are not relevant and lack foundation. Fed. R. Evid. 401, 602.
(xxix) Registration for ZOOMTOWN
Opposer objects to the admissibility of the third party registration for ZOOMTOWN
covering “electronic mail, chat rooms, and bulletin boards.” DKT. 98, Ex. 69, pp. 357-364.
While the registration before 2009 covered other goods and services, all other goods and services
were cancelled under Section 8. Id. On its face this registration has no relevance to this
proceeding. The only use provided states “ZoomTown is Cincinnati Bell’s brand name for high
speed Internet Access.” Id., Ex. 70, pp. 365-68; see id., p. 366 for quote. Notably, the
registration does not cover high speed Internet Access. Thus, no use of the mark for the
registered services has been provided. Moreover, even the use shown on the Internet printout —
high speed internet access — is not similar or related to the use of the XOOM marks at issue.
In re E.I. du Pont Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973). Thus, the registration
3The opposition reflected in DKT. 98, Ex. 67, p. 347 has now been adjudicated by the TTAB in favor of Opposer. Opposer here requests that the Board take judicial notice of the judgment this Board issued in TTAB Proceeding No. 91/230,664. With the application now dead, the citation is completely irrelevant and lacking in foundation.
DB2/ 33251462.1 29 and the webpages referencing use for high speed internet access are not relevant and otherwise
lack foundation as to any relevant use and the extent of use. Fed. R. Evid. 401, 602.
(xxx) Registration for ZOOMUMBA
Opposer objects to the admissibility of the third party registration for ZOOMUMBA for
computers and computer games. DKT. 98, Ex. 71, pp. 369-73. On its face, this registration has
no relevance to this proceeding. In re E.I. du Pont Nemours & Co., 476 F.2d 1357, 1361 (CCPA
1973). Computers and computer games are not similar or related to the XOOM marks and
neither is the mark the same or similar in terms of sight, sound or meaning. Id. This is
confirmed by the attempted effort to prove use, where the mark is depicted as ZOO MUMBA
(DKT. 98, Ex. 72, pp. 374-76), which of course on its face is entirely different than Opposer’s
XOOM mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772,
396 F.3d 1369, 1373-74 (Fed. Cir. 2005) (significance of third party trademarks depends wholly
on their usage). Further, no evidence of use for computers or computer games is of record.
DKT. 98, Ex. 72, pp. 374-76. The webpages of record only shows use for a reader forum. Id.,
pp. 375-76. Thus, the registration and the webpages referencing use for a reader forum are not
relevant and otherwise lack foundation. Fed. R. Evid. 401, 602.
(xxxi) Registration for ZOOMWARE
Opposer objects to the admissibility of the registration for ZOOMWARE owned by
Zoom Management, Inc. DKT. 98, Ex. 73, pp. 377-80. The registration covers essentially
“medical software for managing provision of medical services…” which use on its face is not
related to the XOOM marks. Further, the Internet pages provided (DKT. 98, Ex. 74, pp. 381-86)
do not demonstrate any use of ZOOMWARE — as the pages only reference ZOOM+CARE, an
entirely different designation. The Internet pages also do not refer to Zoom Management, Inc.
anywhere. Thus, there is no proof of record of any use of ZOOMWARE. As Palm Bay Imps.,
DB2/ 33251462.1 30 Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74 (Fed. Cir.
2005) recognized the significance of third party trademarks depends wholly on their usage,
including the extent of use. Thus, the registration and the webpages referencing an entirely
different designation are not relevant and lack foundation. Fed. R. Evid. 401, 602.
(xxxii) Registration for ZOOM-ZOOM
The registration for ZOOM-ZOOM owned by Mazda Motor Company of America covers
“automobile dealership services and providing information about automobile dealership and the
purchase and sale of automobiles by means of an Internet web site and automobile financing and
warranty services.” DKT. 98, Ex. 75, pp. 387-90. On their face, these services are not similar or
related to the goods and services at issue. Id. Further, there is only limited use of the registered
mark through the internet pages provided (id., Ex. 76, pp. 391-97), with the registered mark
appearing in grayed-out, small print on an image of a car (id., p. 392). As Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74 (Fed. Cir. 2005), recognized the significance of third party trademarks depends wholly on their usage. Thus, the registration and the single webpage referencing the mark in connection with an automobile, not any of the other services listed in the registration, are not relevant and lack foundation, and the extent of use has not been shown. Fed. R. Evid. 401, 602.
(xxxiii) Registration for ZZOOM! and Design
The registration ZZOOM! and Design registration covers “bonding services.” DKT. 98,
Ex. 77, pp. 398-401. See also DKT. 41, ¶10, Ex. AH, pp. 5, 59-60. On its face, bonding services
are not similar to or related to any goods or services at issue in this proceeding. Even more
significant, no proof of use has been made of record. As Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74 (Fed. Cir. 2005) recognized
significance of third party trademarks depends wholly on their usage. Thus, the registration
DB2/ 33251462.1 31 covering bonding services with no proof of use at all is not relevant and lacks foundation. Fed.
R. Evid. 401, 602.
(xxxiv) Registration for ZOOMLOOKER and Design
The registration ZOOMLOOKER and Design (DKT. 98, Ex. 78, pp. 402-6) is owned by
a German individual and is based only on Section 66(a), not actual use in commerce with the
United States. Thus, on this basis alone, this registration is not relevant. See Johnson & Johnson v. Salve S.A., 183 USPQ 375, 376 (TTAB 1974) (foreign use of mark creates no rights in the mark in the United States). In this same regard, there is no use evidence in commerce with the
United States, let alone the extent of use. As Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin
Maison Fondee en 1772, 396 F.3d 1369, 1373-74 (Fed. Cir. 2005) recognizes the significance of
third party trademarks depends wholly on their usage. Since there is no use of record or even
ever filed, it cannot really be discerned whether this mark is in use at all let alone for which
specific services. Thus, the registration with no proof of use is not relevant and lacks foundation.
Fed. R. Evid. 401, 602.
(xxxv) Application for EASYZOOM
Opposer objects to the admissibility of the application for EASYZOOM owned by Smart
in Media, a German Company, for telecommunication services and for a broad range of software
services, including but not limited to “software for displaying images and text.” DKT. 98,
Ex. 79, pp. 407-10. Given the pending status of this application it is hard to know what the final goods description will be and whether it will be approved. Thus, the application is irrelevant in and of itself and is unrelated on its face. As Frito-Lay North America, Inc. v. Princeton
Vanguard, LLC, 109 USPQ2d 1949, 1956 n.9 (TTAB 2014) holds third party applications are not evidence of anything except that they were filed. See also TBMP §704.03(b)(2). Moreover, the Internet printout provided uses EASYZOOM, without any trademark marking, describes only
DB2/ 33251462.1 32 a feature where you can “zoom into the images without downloading them.” DKT. 98, Ex. 80,
pp. 411-12. And, the printout states that it is a product for “professionals.” Id., p. 412.
Moreover, the internet printout does not evidence use for all of the services in the application or
the extent of use. The product for which the internet printout shows use for on its face is
unrelated. Id. Thus, the application and the limited proof of use on their face are not relevant
and otherwise lack foundation. Fed. R. Evid. 401, 602.
(xxxvi) Application for XOOM ENERGY
Opposer objects to the admissibility of an application for XOOM ENERGY. DKT. 98,
Ex. 81, pp. 413-18. First, Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 109
USPQ2d 1949, 1956 n.9 (TTAB 2014) provides that third party applications are not evidence of
anything except that they were filed. See also TBMP §704.03(b)(2). Second, on its face, the
description of goods and services in the application specifically excludes “money transfer
services, electronic funds transfer services, bill payment remittance services or electronic
processing and transmission of bill payment data” for all of the goods and services listed in the
application. Id., pp. 414-15. Third, Applicant has failed to demonstrate by the Internet printout
provided (DKT. 98, Ex. 82, pp. 419-21) that the goods and services for the pending XOOM
ENERGY mark are similar or related to the XOOM marks. In re E.I. du Pont Nemours & Co.,
476 F.2d 1357, 1361 (CCPA 1973). The Internet printout provided references XOOM ENERGY
only for energy-plans and in a limited geographic region. DKT. 98, Ex. 82, pp. 419-21. The
printout states, “shop rates for your home or business,” referencing only “Illinois, Ohio and
Pennsylvania.” Id., p. 420. Thus, the application and the limited proof of use provided, on their
face, are not relevant and otherwise lack foundation. Fed. R. Evid. 401, 602.
(xxxvii) Suspended Application for ZOOM MARKETING
Opposer objects to the admissibility of the third party suspended application for ZOOM
DB2/ 33251462.1 33 MARKETING for business marketing consulting services. DKT. 98, Ex. 83, pp. 422-24. First,
Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 109 USPQ2d 1949, 1956 n.9
(TTAB 2014) provides that third party applications are not evidence of anything except that they
were filed. See also TBMP §704.03(b)(2). On the face of the application, the business
marketing consulting services associated with the application are irrelevant. Second, the Internet
printout provided does not establish any use of ZOOM MARKETING as a trademark. DKT. 98,
Ex. 84, pp. 425-28. ZOOM MARKETING appears nowhere on the Internet printout provided
except as the address of a website “(http//www.zoommarketing.com)” on one page of the
printout. Id., p. 426. Thus, the application and the limited proof of use on their face are not
relevant and otherwise lack foundation. Fed. R. Evid. 401, 602.
(xxxviii) Application for ZOOM REHEARSE
Opposer objects to the admissibility of the third party application for ZOOM
REHEARSE for the services listed. DKT. 98, Ex. 85, pp. 429-32. It is well-established in Frito-
Lay North America, Inc. v. Princeton Vanguard, LLC, 109 USPQ2d 1949, 1956 n.9 (TTAB
2014) that third party applications are not evidence of anything except that they were filed. See
also TBMP §704.03(b)(2). Revealingly, the use provided does not show use for the services in
the application. Compare DKT. 98, Ex. 85, pp. 429-32 with DKT. 98, Ex. 86, pp. 433-35. The
internet printout identifies the product only as “revolutionizing the functional and stress testing
process.” Id., p. 434. And, otherwise, the extent of such use is not provided. Thus, this
application and the internet printout is irrelevant and lack foundation. Fed. R. Evid. 401, 602.
(xxxix) Application for ZOOM SUPPORT
Opposer objects to the admissibility of the third party application for ZOOM SUPPORT
filed by a Belize company based on an International Registration. DKT. 98, Ex. 87, pp. 436-40.
It is well-established in Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 109
DB2/ 33251462.1 34 USPQ2d 1949, 1956 n.9 (TTAB 2014) that third party applications are not evidence of anything
except that they were filed. See also TBMP §704.03(b)(2). Moreover, there is no use in commerce with the United States alleged in the application. DKT. 98, Ex. 87, pp. 436-40.
Further, the internet pages provided only evidence use for remote repair computer services.
DKT. 98, Ex. 88, pp. 441-45. This use is not related on its face to the goods and services at issue in this proceeding. Moreover, on its face, that use is limited and does not cover all the goods and services of the application. Compare DKT. 98, Ex. 87, pp. 436-40 with DKT. 98, Ex. 88, pp.
441-45. Thus, this Application and the internet printout is irrelevant and lacks foundation. Fed.
R. Evid. 401, 602.
(xl) Suspended Application for ZOOMIEE
Opposer objects to the admissibility of the third party intent-to-use application for
ZOOMIE for electronic delivery of images and photographs and digital media. DKT. 98, Ex. 89, pp. 446-48. First, it is well-established in Frito-Lay North America, Inc. v. Princeton Vanguard,
LLC, 109 USPQ2d 1949, 1956 n.9 (TTAB 2014) that third party applications are not evidence of anything except that they were filed. See also TBMP §704.03(b)(2). Second, on its face, the coverage for the applied-for designation has no relevance to this proceeding. DKT. 98, Ex. 89, pp. 447. Third, the internet pages provided do not change that result. DKT. 98, Ex. 90, pp. 449-
50. The internet printout is not evidence of use. The printout states only “ZOOMIE Is Coming.”
Id., p. 450. Thus, this Application and the Internet printout provided are irrelevant and lack foundation. Fed. R. Evid. 401, 602.
2. Other Categories of Documents
Opposer objects to the dictionary definition documents and other manuals in Applicant’s
Notice of Reliance. DKT. 98, Exs. 132-36, pp. 951-81. See also DKT. 100, Ex. 154, Depo Exs.
6-9, pp. 1030-1042. These documents do not appear to be relevant to any issue in this
DB2/ 33251462.1 35 proceeding. Revealingly, in its Answer to the first opposition, Applicant admitted in its answer
that the “ZOOM” portion of its mark is pronounced the same as XOOM. Applicant’s Answer,
DKT. 4, ¶11, p. 3 (“Applicant admits that “Zoom” and “Xoom” contain the same phonic
sound.”). Moreover, how other words beginning with the letter “X” may be pronounced in
Spanish or any other language has no bearing on how Opposer or its customers or potential
customers actually pronounce or understand how the XOOM mark is pronounced. For example,
in Applicant’ own evidence it shows that customers actually refer to Xoom as “Zoom.” E.g.,
DKT. 100, Ex. 154, Depo Ex. 17, p. 1206 (“Zoom is a great way to send money to people in
other countries.”). Thus, the random entries for other “W,” “X,” or “Y” words from a Spanish
dictionary and Spanish pronunciation guidelines or guides or other pronunciation guides from
other languages simply are not relevant and lack foundation to establish how XOOM is
pronounced by Opposer or any existing or potential customers seeking to use and using the
XOOM platform in the United States. As Applicant’s own initial answer itself demonstrates
(Applicant’s Answer, DKT. 4, ¶11, p. 3), “XOOM” is pronounced as “ZOOM.” Thus, Opposer
objects on the basis of relevance and lack of foundation to these entries and improper opinion
evidence. Fed R. Evid 401, 602, 701.
3. Opposer’s Discovery Responses and Correspondence
Opposer objects to the references to the discovery responses attached to Applicant’s
Notice of Reliance (DKT. 100, Exs. 140-146, pp. 6-150) because the Notice of Reliance fails to
provide any notice as to which responses Applicant intends to rely on and for what purpose. In
regards to all of these documents, notably, Applicant failed to move to compel any discovery
responses from Opposer. Fed. R. Evid. 401. Indeed, publically available information
independently supports each of Opposer’s contentions as to its use of its marks, as to the
pronunciation of its XOOM marks, and as to other issues in this proceeding.
DB2/ 33251462.1 36 4. Applicant’s Printouts of Searches from USPTO of Registrations Containing the Phrase “Computer Operating Software”
Opposer objects to Applicant’s Notice of Reliance (DKT. 100, Ex. 151, pp. 167-255), which purportedly consists of printouts of searches of the USPTO’s database of registrations containing the phrase “computer operating software” on the basis of relevance and lack of foundation. Fed. R. Evid. 401, 602. Applicant fails to support any evidentiary value of any printout without how the references are used, such that the printout could potentially shed light on the nature of “computer operating software.” As a result, the exhibit in its entirety contains no information or evidence that is relevant or admissible to this proceeding. Moreover, by
Applicant’s own admission certain of the references are applications (Notice of Reliance,
DKT. 98, ¶110, p. 44-5) and thus, on their face, they are not probative of any accepted use or meaning for “computer operating software.” Fed. R. Evid. 401, 602.
C. Testimonial Deposition of Julian King of February 5, 2016 from Opposition No. 91,208,416, DKT. 100, Ex. 154, pp. 601-1211
1. Testimony Regarding Cancelled ZOOMPASS Registration
Opposer objects to the elicited testimony regarding a cancelled registration for the
ZOOMPASS designation on the grounds that it is not relevant. DKT. 100, King Dep. Tran.
53:9-69:23; Ex. 154, Dep. Ex. 2, pp. 654-70, 873-74 (registration No. 3,649,297, which has been
cancelled for lack of use), King Dep. Ex. 3 (Internet printouts from zoompass.com referencing
“Money Transfers in Canada”), id., pp. 875-77; King Dep. Ex. 4 (Internet printouts from zoompass.com referencing “Canadian mobile phone subscribers” and “Send and receive money across Canada”), id., pp. 881-927. Testimony regarding a cancelled registration, which was based only on a Canadian registration (DKT. 98, Ex. 66, pp. 340-44), and printouts proved relating to use in Canada are not relevant to any issues in this proceeding such that the testimony and the associated exhibits should be deemed inadmissible. No use has been shown in
DB2/ 33251462.1 37 commerce with the United States. Fed. R. Evid. 401 (relevance),701 (lack of foundation);
Johnson & Johnson v. Salve S.A., 183 USPQ 375, 376 (TTAB 1974) (foreign use of mark creates
no rights in the mark in the United States).
2. Testimony and Exhibit by Third party (Seeking Alpha)
Opposer objects to the elicited testimony of Mr. King related to an Internet article, exhibit
14 to his deposition, and the exhibit itself, which are references to the XOOM product by a third party. DKT. 100, King Dep. Tran. 163:3-166:21, Dep. Ex. 14, pp. 764-767, 1199-1201.
Mr. King testified that he was not familiar with the article but stated it contained inaccurate information. Id. First, the article is hearsay and lacks foundation for the truth of any matters
asserted as to Xoom or its products. Fed. R. Evid. 602, 801. Second, due to the inaccuracies and
his lack of familiarity with the article, Mr. King lacks foundation to testify to anything beyond
the inaccuracies of the article. DKT. 100, King Dep. Tran. 163:3-166:21, pp. 764-767. Fed. R.
Evid. 401, 602.
3. Testimony Regarding Internet Printout
Opposer objects to the portions of Mr. King’s testimony regarding an Amazon.com printout the witness testified he had never seen and was not familiar with. DKT 100, Ex. 154,
King Depo. Tran. 170:5-172:18. As such, the testimony is irrelevant since the witness lacked foundation to testify about the printout. Fed. R. Evid. 602 (lack of personal knowledge).
DB2/ 33251462.1 38