Calypso Technology, Inc. v. CALYPSO CAPITAL MANAGEMENT, LP

THIS OPINION IS A

PRECEDENT OF THE TTAB

Mailed:

August 29, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE

_____

Trademark Trial and Appeal Board

______

Calypso Technology, Inc.

v.

Calypso Capital Management, LP

_____

Opposition No. 91184576

to applications Serial No. 78797405

filed January 23, 2006

and Serial Nos. 78798953 and 78799018

filed on January 25, 2006

Cancellation No. 92049489 to Registration

Nos. 2852353, 2852354 and 2852355

_____

Jonathan P. Froemel and Hae Park-Suk of Barnes & Thornburg

LLP for Calypso Technology, Inc.

Erica D. Klein and Carole E. Klinger of Kramer Levin

Naftalis & Frankel LLP for Calypso Capital Management LP.

______

Before Seeherman, Quinn and Wolfson, Administrative

Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Calypso Technology, Inc. (hereafter plaintiff) has

filed a combined opposition and cancellation action. It

opposes registration by Calypso Capital Management, LP

Opposition No. 91184576 and Cancellation No. 92049489

(hereafter defendant) of the marks CALYPSO CAPITAL

MANAGEMENT,1 CALYPSO QUALIFIED PARTNERS2 and CALYPSO MASTER

FUND,3 all for “equity investment management and fund

services, with a primary focus on United Kingdom and

European securities,” and has petitioned to cancel

defendant’s registrations for CALYPSO OVERSEAS,4 CALYPSO

PARTNERS5 and CALYPSO ADVISORS,6 for the same services. For

all of these marks, defendant has disclaimed exclusive

rights to the words other than CALYPSO. As grounds for

opposition and cancellation, plaintiff has alleged that

defendant did not use any of the subject marks prior to

December 29, 1998; that plaintiff was founded in 1998 and

since that time has been a provider of computer software to

financial institutions for trading applications; that

plaintiff owns Registration No. 2769418 for CALYPSO; that

the goods for which plaintiff has prior rights are offered

in the same channels of trade to the same customers as the

services identified in defendant’s applications and

registrations; and that defendant’s marks so resemble

1

Application Serial No. 78799018, filed January 25, 2006,

asserting first use and first use in commerce on August 20, 2004.

2

Application Serial No. 78798953, filed January 25, 2006, and

asserting first use and first use in commerce on July 22, 2004.

3

Application Serial No. 78797405, filed January 23, 2006 and

asserting first use and first use in commerce on August 24, 2004.

4

Registration No. 2852355, issued June 15, 2004, from an

application filed January 8, 2001; Section 8 affidavit accepted.

5

Registration No. 2852354, issued June 15, 2004, from an

application filed January 8, 2001; Section 8 affidavit accepted.

6

Registration No. 2852353, issued June 15, 2004, from an

application filed January 8, 2001; Section 8 affidavit accepted.

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Opposition No. 91184576 and Cancellation No. 92049489

plaintiff’s marks as to be likely, when used in connection

with the services of defendant, to cause confusion or to

cause mistake or to deceive.

In its answer defendant has denied the salient

allegations in the complaint. Defendant has also asserted

the affirmative defenses of laches, acquiescence and/or

estoppel because plaintiff “has for years been aware of use

of [defendant’s] marks comprising CALYPSO, or

registration(s) of or application(s) to register any or all

of such marks, and by its action(s) or omission(s) has

induced [defendant] to rely prejudicially thereon.” ¶ 16.

Defendant has also asserted that plaintiff’s claims with

respect to the opposed applications are barred because

defendant owns prior registrations such that the

registrations now sought by defendant would cause no added

injury to plaintiff (the so-called Morehouse defense). See

Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881,

160 USPQ 715 (CCPA 1969).

The Record and Objections

By operation of the rules, the record includes the

pleadings and the files of the opposed applications and the

registrations sought to be cancelled. With its brief,

defendant submitted a five-page list of objections to

plaintiff’s evidentiary record. Subject to defendant’s

objections about certain of the materials found therein, the

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Opposition No. 91184576 and Cancellation No. 92049489

parties are in agreement that the following evidence is of

record:

The files of the three opposed applications,

Serial Nos. 78799018, 78798953 and 78797405;

The files of the three registrations sought to be

cancelled, Nos. 2852353, 2852354 and 2852355;

Plaintiff’s notice of reliance dated March 19,

2010, and exhibits thereto;

Plaintiff’s supplemental notice of reliance dated

May 13, 2010, and exhibits thereto;

Plaintiff’s rebuttal notice of reliance dated

August 26, 2010;

Defendant’s notice of reliance dated July 12, 2010

and exhibits thereto;

Trial testimony of defendant’s Chief Operating

Officer, Andrew J. Flinn, taken July 14, 2010, and

exhibits thereto.

Plaintiff has also listed in its brief, as part of the

description of the record, the trial testimony, with

exhibits, of plaintiff’s CEO and Chairman, Charles Hamilton

Marston, taken May 27, 2010, as being of record. However,

the Board, in an order mailed January 21, 2011 (after

plaintiff had filed its brief), granted defendant’s motion

to strike this testimony and exhibits. Accordingly, no

consideration has been given to such material.7 In

7

In defendant’s list of objections to plaintiff’s evidentiary

record, it includes specific objections to most of the exhibits

submitted with that testimony deposition. Because the Board has

stricken the testimony and exhibits in its entirety, none of the

exhibits is of record and we will not consider whether any of

those exhibits would have been acceptable if submitted under a

notice of reliance. Nor does the fact that plaintiff listed the

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Opposition No. 91184576 and Cancellation No. 92049489

addition, the May 27, 2010 Board order stated that any

references made in plaintiff’s brief to the stricken

testimony would be disregarded.

Plaintiff has listed the rebuttal testimony deposition,

with exhibits, of Charles Marston, taken on October 12,

2010, as being of record. Defendant has objected to this

testimony as improper rebuttal, “submitted for the improper

purpose of supporting [plaintiff’s] case in chief as

purported evidence of tarnishment, rather than to rebut any

evidence placed into the record by [defendant].”

Objections, p. 3. We view this objection as going only

toward Mr. Marston’s testimony regarding his view of the

effect on plaintiff if customers were to assume a connection

testimony deposition with exhibits as item 27 in its notice of

reliance result in the exhibits to the deposition being

separately considered for whether they are acceptable for

submission under a notice of reliance. However, to the extent

that plaintiff may have separately submitted the exhibits to the

deposition as items under a notice of reliance, we have

considered their acceptability.

We note that in its reply brief plaintiff has contended that

Mr. Marston’s testimony deposition should be considered of record

because defendant “has relied on Mr. Marston’s testimony, opening

the door for [plaintiff] to rely on this testimony as well.”

Reply brief, p. 9. Plaintiff’s argument is rather convoluted.

It asserts that in defendant’s brief, in making a general

statement about the nature of plaintiff’s goods, it cited to a

page of plaintiff’s brief. Plaintiff contends that because that

page of its brief cited to Mr. Marston’s testimony, defendant

relied on that testimony and plaintiff may do so also. We note

that the particular statement on that page of plaintiff’s brief

cited to some 44 exhibits in plaintiff’s notices of reliance in

addition to citing to Mr. Marston’s testimony. We do not read

defendant’s actions as relying on Mr. Marston’s testimony or

otherwise stipulating that the testimony of Mr. Marston is of

record. On the contrary, defendant’s brief states several times

that Mr. Marston’s testimony and accompanying exhibits have been

stricken.

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Opposition No. 91184576 and Cancellation No. 92049489

between plaintiff and hedge funds. We note that the only

testimony or evidence regarding negative publicity for hedge

funds that was submitted as part of defendant’s testimony

was elicited by plaintiff during the cross-examination of

defendant’s witness, Andrew Flinn. However, during that

cross-examination defendant’s counsel objected only to the

following question, and did so on the basis that it was

“vague and ambiguous,” not on the basis that it was outside

the scope of direct examination:

Have you, during the most recent economic crisis,

seen negative publicity related to certain hedge

funds in journals and periodicals related to the

financial industry?

Flinn, p. 45. In the circumstances, we have considered the

rebuttal testimony of Mr. Marston. We point out, though,

with respect to defendant’s contention that the rebuttal

testimony was purported evidence of tarnishment, that we do

not regard the use of the term “tarnishment” as referencing

a dilution by tarnishment ground; such a ground was neither

pleaded nor tried. In fact, in its main brief plaintiff

makes clear that “the sole issue is whether there is

likelihood of confusion.” p. 3. Further, the evidence

submitted by plaintiff regarding negative publicity or

reactions to hedge funds has limited probative value; if

defendant’s use of its marks is likely to cause confusion

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Opposition No. 91184576 and Cancellation No. 92049489

plaintiff will succeed on its claim, whether or not the

confusion will result in a negative association.

Defendant has also objected to certain materials

submitted with plaintiff’s notice of reliance, supplemental

notice of reliance and rebuttal notice of reliance.

Plaintiff has not responded to the specific objections,

stating only that defendant has relied on “many of the same

exhibits it seeks to strike.” Reply brief, p. 17.

Plaintiff asserts that in defendant’s brief defendant has

cited to certain of plaintiff’s exhibits, specifically to

plaintiff’s supplemental notice of reliance exhibits 2 and

55 (allegedly cited at p. 4 of defendant’s brief) and to

plaintiff’s supplemental notice of reliance exhibits 10-24,

28—30 and 33-55 (allegedly cited at pp. 20 and 26 of

defendant’s brief), and also asserts that defendant relies

on the same types of evidence as submitted by plaintiff in

support of its case. Plaintiff’s position is that defendant

“cannot object to the introduction of these types of

evidence, yet also rely on such evidence.” Id. Contrary to

plaintiff’s contention, the pages of defendant’s brief

indicated by plaintiff in which it has supposedly cited to

plaintiff’s exhibits do not include cites to any exhibits

other than exhibit A to exhibit 2 of the notice of reliance,

and to that portion of exhibit 4 consisting of defendant’s

response to Interrogatory 44, and exhibits 7, 25 and 33 of

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Opposition No. 91184576 and Cancellation No. 92049489

the supplemental notice of reliance. Defendant has not

objected to these exhibits, with the exception that

defendant has objected that plaintiff may not rely on any

evidence for the truth of the matters asserted therein, as

that would be hearsay. This objection goes to the probative

value of the exhibits, rather than their admissibility. As

for the types of evidence made of record by defendant, all

of the evidence submitted by defendant complied with the

trademark rules for making evidence of record by notice of

reliance; as detailed below, much of plaintiff’s evidence is

not of the same type, nor did it comply with the trademark

rules.

A party seeking to make evidence of record by notice of

reliance must follow the rules and case law; if material

cannot be made of record by notice of reliance it will not

be considered even if the adverse party does not

specifically object to it, as long as the adverse party does

not specifically treat it as of record such that we can say

it has been stipulated into the record. Thus, we will now

consider each of the items submitted with plaintiff’s

notices of reliance, along with defendant’s objections

thereto. With its first notice of reliance, plaintiff

submitted the affidavit of Robert D. Finnell, which had been

previously submitted in connection with plaintiff’s

memorandum in support of plaintiff’s motion for summary

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Opposition No. 91184576 and Cancellation No. 92049489

judgment. As defendant has pointed out, there is no

stipulation between the parties permitting the submission of

testimony by affidavit. See Trademark Rule 2.123(b). Nor

did Mr. Finnell authenticate the affidavit as part of a

trial testimony deposition. Cf. Levi Strauss & Co. v. R.

Josephs Sportswear Inc., 28 USPQ2d 1464, 1465 n.2 (TTAB

1993). Accordingly, the affidavit itself (Item 1 of the

notice of reliance) is excluded. However, Exhibit A to the

affidavit (item 2 of the notice of reliance) consists of

pages downloaded from the website www.calypso.com, and they

contain both the URL and the date that they were printed.

This exhibit is proper material for a notice of reliance,

and we have therefore considered it. See Safer Inc. v. OMS

Investments Inc., 94 USPQ2d 1031 (TTAB 2010). None of the

other attachments to the Finnell affidavit may be made of

record by notice of reliance, and therefore the emails (item

3 listed in the notice of reliance) are not of record. Item

4 of the notice of reliance, defendant’s responses to

plaintiff’s interrogatories and requests for production of

documents, is properly of record. See Trademark Rule

2.120(j)(3)(i).8

8

Documents produced in response to document production requests

cannot be made of record by notice of reliance, see Trademark

Rule 2.120(j)(3)(ii); however, plaintiff did not submit any

documents with the notice of reliance, only defendant’s responses

consisting of objections or a representation that documents would

be produced. Cf. L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883,

n. 5 (TTAB 2008).

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Opposition No. 91184576 and Cancellation No. 92049489

Item 5 of the notice of reliance consists of the

affidavit of Hae Park-Suk. Again, the parties did not

stipulate to the submission of testimony by affidavit, and

therefore we will not consider the affidavit itself.

However, the exhibits to the affidavit (item 6 of the notice

of reliance) that consist of printouts of applications and

registrations, taken from the TESS database of the U.S.

Patent and Trademark Office, may be made of record by notice

of reliance pursuant to Trademark Rule 2.122(e) because they

are official records. On the other hand, the pages included

in the exhibits consisting of summaries of search results

are not official records, and they have not been considered.

Item 7 of the notice of reliance is a “soft” copy of

plaintiff’s pleaded Registration No. 2769418, issued

September 30, 2003, from an application filed December 29,

1998, for CALYPSO for “computer software for use by

financial institutions for core processing and control.”

Plaintiff has also furnished a page from the USPTO’s

assignment records database showing title in the

registration in plaintiff, as recorded on September 30,

2009. Although this submission would not be sufficient to

make this registration of record, as plaintiff did not

provide any evidence as to the current status of the

registration, with its supplemental notice of reliance

plaintiff submitted a record from the USPTO’s TARR database

10

Opposition No. 91184576 and Cancellation No. 92049489

showing that Section 8 and 15 affidavits have been accepted

and acknowledged. Accordingly, plaintiff has submitted

adequate information as to the registration’s title and

status, and the pleaded registration is of record. See

Research in Motion Ltd. v. NBOR Corp., 92 USPQ2d 1926, 1928

(TTAB 2009).

Plaintiff has submitted with its notice of reliance the

declaration of Erica D. Klein, one of defendant’s attorneys,

which had been previously submitted by defendant in

opposition to plaintiff’s summary judgment motion. However,

plaintiff has not listed the declaration itself as one of

the items in its notice of reliance. Moreover, there is no

stipulation that this declaration could be submitted as

testimony. Thus, it is not of record. Plaintiff does rely

on “the Trademark Office search results attached by

[defendant] as Exhibit B” to the Klein declaration (item 8

of the notice of reliance); they consist of summary listings

of marks retrieved from searches of the USPTO TESS database

showing the words in the mark, the application serial number

and, if registered, the registration number, and the status

of the application/registration. Although taken from the

Office’s database, such search summaries are not considered

to be official records, and therefore they (Exhibits B-1 –

B-5) are not properly made of record by notice of reliance.

Plaintiff has made no mention of Exhibits B-6 and B-7 as

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Opposition No. 91184576 and Cancellation No. 92049489

items on which it relies, and therefore we do not consider

them to be of record.

Item 9 of the notice of reliance is a second affidavit

of Hae Park-Suk, with exhibits. Again, we cannot consider

affidavit testimony, or the attached exhibits consisting of

lists from the USPTO TESS database, but the exhibits

consisting of third-party trademark registrations are

admissible as official records.

Items 10 through 22 are described by plaintiff as its

own printed publications, but the mere fact that they are

printed materials does not make them printed publications

that can be made of record by notice of reliance pursuant to

Trademark Rule 2.122(e). They appear to be plaintiff’s

brochures, but there is no indication that they are “printed

publications, such as books and periodicals, available to

the general public in libraries or of general circulation

among members of the public or that segment of the public

which is relevant under an issue in a proceeding.” Id.

Certainly if these materials are in general circulation it

was incumbent on plaintiff to show this in response to

defendant’s objection. These materials have not been

considered.

Item 23 of the notice of reliance is what plaintiff

describes as a “press release compilation” called Cognito.

Although plaintiff states in its notice of reliance that the

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Opposition No. 91184576 and Cancellation No. 92049489

entire compilation was published on its website, there is no

web address on this submission showing that it was

downloaded from the website. However, because this item is

a compilation of individual articles appearing either in

printed publications or online, and shows the publication

name or URL and date of issue of each article, this item is

admissible under Trademark Rule 2.122(e) and Safer Inc. v.

OMS Investments Inc., supra.

Item 24, described by plaintiff as a printed

publication published on its website in 2008-2009 is not

acceptable as a printed publication, nor can it be accepted

pursuant to Safer, since it does not bear the date the

material was either published or printed.

The final item, 25, in plaintiff’s notice of reliance

is plaintiff’s own answers to defendant’s first set of

interrogatories. Because an answer to an interrogatory may

be submitted and made part of the record only by the

inquiring party, this item would normally not be considered.

See Trademark Rule 2.120(j)(5).9 However, defendant

9

This rule also provides that, if fewer than all of the

interrogatories or other discovery responses are offered in

evidence by the inquiring party, the responding party may

introduce other answers to interrogatories, etc., which should in

fairness be considered so as to make not misleading what was

offered by the inquiring party, in which case the notice of

reliance must be supported by a written statement explaining why

the responding party had to rely upon each of the additional

discovery responses. That exception does not apply to the

instant situation. Not only did plaintiff submit its

interrogatory answers prior to defendant’s submitting any of

13

Opposition No. 91184576 and Cancellation No. 92049489

submitted the non-confidential portions of plaintiff’s

responses through its own notice of reliance. To this

extent only, they are of record.

Plaintiff also submitted a supplemental notice of

reliance during its main testimony period. The first 25

items listed in this notice of reliance were previously

submitted with plaintiff’s first notice of reliance, and

already discussed above. As a general comment with respect

to these duplicate submissions, the Board frowns on

submitting duplicate evidence; it merely adds to the bulk of

the record and wastes the time of Board staff in handling or

scanning the papers and the time of the judges in reviewing

the additional papers. We note that plaintiff has provided

certain additional information regarding item 17, stating

that the Corporate Overview was published on plaintiff’s

website in 2008-2009. However, providing the general dates

of the period when webpages might be found on a website does

not meet the requirements of Safer Inc. v. OMS Investments

Inc., 94 USPQ2d at 1039, that the webpages must show the

date of publication or the date that they were accessed and

printed. Thus, this item is not properly of record.

Item 26 of the supplemental notice of reliance states

that plaintiff “relies on the testimony and exhibits from

the testimony deposition of Robert Finnell, which may be

plaintiff’s discovery responses, but it sought to submit all of

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Opposition No. 91184576 and Cancellation No. 92049489

taken by agreement of the parties outside of [plaintiff’s]

testimony period,” while Item 27 relies on the testimony and

exhibits from the testimony deposition of Charles Marston.

As noted in the Board’s January 21, 2001 order, at footnote

4, notices of reliance are not to be used to state a party’s

reliance on testimony depositions, and a testimony

deposition need not be submitted under a notice of reliance.

That same order granted defendant’s motion to strike the

testimony of Mr. Marston and, therefore, as previously

noted, this testimony and the exhibits thereto are not of

record. As for Mr. Finnell’s deposition, apparently such

testimony deposition was not taken, since it is not listed

as part of the record by either plaintiff or defendant in

their respective briefs, nor has it been submitted. Thus,

Items 26 and 27 are not part of the record.

Items 28, 29 and 30 are press releases taken from an

internet site called Bobsguide. The releases show their

publication date, but the URL at which the webpages can be

found does not appear on them. Safer clearly states that

the document itself must identify its source (URL). Because

these webpages do not do so, they cannot be considered.

Item 31 is an attendee list of a symposium; there is no

information as to the date the webpages were published or

printed. Accordingly, this item is not of record.

its answers.

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Opposition No. 91184576 and Cancellation No. 92049489

Items 32 and 33 are webpages and include the URLs and

the dates the webpages appeared, while items 34 through 55

are articles taken from the NEXIS database. Items 32 and 33

are admissible under Safer, and the other items are printed

publications admissible under Trademark Rule 2.122(e). Item

56, a notice of opposition filed by defendant in connection

with a third-party application, is an official record. Item

57, webpages taken from plaintiff’s website and showing the

URL and date they were printed, are admissible under Safer.

Finally, item 58 is not admissible under Safer; it is not

clear that they are even webpages, but even if we assume

they are, they do not show the date the webpages were

published or printed. Plaintiff’s statement in the notice

of reliance that they were published in “2010” is not a

substitute; the specific date that the webpages were

published or printed must appear on the webpages themselves.

Defendant has submitted, under notice of reliance,

certain of plaintiff’s answers to defendant’s first set of

interrogatories;10 certain third-party registrations; and

one magazine, admissible as a printed publication.

Plaintiff has submitted, under a rebuttal notice of

reliance, several affidavits, with exhibits, of Hae Park

Suk. Again, the affidavits themselves are not properly of

record, since the parties have not stipulated that testimony

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Opposition No. 91184576 and Cancellation No. 92049489

can be submitted in this manner.11 As for the exhibits

submitted with that testimony, they consist of pages taken

from the USPTO’s TESS and TARR databases and various

webpages. The summary listings of third-party applications

and registrations retrieved from searches of terms in the

USPTO’s TESS database are not official records and therefore

are not appropriate material for a notice of reliance.

However, the electronic versions of the registrations are

official records. In addition, those webpages downloaded

from websites, showing the URL and date the page was

printed, are of record under Safer. However, we note that

part of Exhibit A to the Suk affidavit regarding the term

QUALIFIED PARTNERS consists primarily of a Google search

results summary. The Safer holding allowing documents

printed from internet websites to be made of record by

notice of reliance does not apply to such search summaries,

which are more in the nature of listings of documents, i.e.,

the website pages that the summary links to, than to the

documents per se.

10

Defendant filed only the non-confidential responses to its

interrogatories.

11

It is noted that plaintiff submitted several different

affidavits of Ms. Suk in one ESTTA filing. When the parties have

agreed, or the Board has granted leave, to file testimony by

affidavit, it is preferable to submit separate filings for each

affidavit, particularly when each affidavit includes many pages

of exhibits, to insure that the separate affidavits will be

indexed in the record of the Board proceeding.

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Opposition No. 91184576 and Cancellation No. 92049489

In summary, the items listed in plaintiff’s first and

supplemental notices of reliance that are properly of record

are Nos. 2, 4 (to the extent defendant made the discovery

responses of record), 6 (copies of applications and

registrations only), 7, 9 (copies of third-party

registrations only), 23, 25 and 32-57. All of the exhibits

(but not the affidavits) submitted under plaintiff’s

rebuttal notice of reliance are of record with the exception

of the listings retrieved from the TESS searches, and the

Google search results summary submitted with the affidavit

regarding the term “qualified partners.” All of the

exhibits submitted by defendant under notice of reliance are

of record.

We have accorded the various exhibits submitted by the

parties their appropriate weight. In particular, with

respect to articles and other material published on websites

or in publications, we have considered them only for the

fact that they have been published and may have been viewed,

but not for the truth of the statements made in them.

Standing

Plaintiff has shown, through its registration for

CALYPSO, that it has a personal stake in the outcome of this

proceeding. Therefore, plaintiff has established its

standing. See Cunningham v. Laser Golf Corp., 222 F.3d 943,

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Opposition No. 91184576 and Cancellation No. 92049489

55 USPQ2d 1842 (Fed. Cir. 2000); Lipton Industries, Inc. v.

Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).

Priority

In view of plaintiff’s registration for CALYPSO,

priority is not in issue in the opposition proceeding. See

King Candy Company v. Eunice King’s Kitchen, Inc., 496 F.2d

1400, 182 USPQ 108 (CCPA 1974). With respect to the

cancellation proceeding, because both parties have

registrations, it is plaintiff’s burden to demonstrate that

its use of its CALYPSO mark is prior to defendant’s use of

its registered marks. Brewski Beer Co. v. Brewski Brothers,

Inc., 47 USPQ2d 1281, 1284 (TTAB 1998). During its

testimony period, the only evidence regarding priority that

was properly made of record by plaintiff is its registration

for CALYPSO. Although defendant made of record plaintiff’s

answers to defendant’s interrogatories, and Interrogatory 8

requested the dates of first use of each of plaintiff’s

marks in commerce, plaintiff did not answer that part of the

interrogatory, stating only that “it commenced operations in

1998, continued to build and develop [plaintiff’s] Goods

and/or Services, provided services to prospects in

connection with identifying their capital market product

needs and installed versions of [plaintiff’s] Goods and/or

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Opposition No. 91184576 and Cancellation No. 92049489

Services at least as early as August 1999.”12 This answer

does not provide any information as to when plaintiff began

to use CALYPSO as a trademark on goods or services. Thus,

plaintiff may only rely on the December 29, 1998 filing date

of the application which matured into its pleaded

registration. As for defendant, not having submitted any

evidence of earlier use,13 it may rely on the January 8,

2001 filing dates of the applications which matured into the

registrations sought to be cancelled. Accordingly,

plaintiff has demonstrated its priority in connection with

the cancellation proceeding.

Likelihood of confusion

Our determination of the issue of likelihood of

confusion is based on an analysis of all of the probative

facts in evidence that are relevant to the factors set forth

in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177

USPQ 563 (CCPA 1973). See also, In re Majestic Distilling

Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).

12

During its rebuttal testimony period plaintiff did not submit

any evidence of its first use, but even if it had, it would not

have been acceptable rebuttal, since proving priority is part of

a plaintiff’s case in chief.

13

Plaintiff submitted defendant’s interrogatory response that it

“commenced its business in 1999, and has continued to develop and

operate its funds from at least as early as October 14, 1999 to

the present.” Response to Interrogatory No. 11, submitted as

Item 4 of plaintiff’s notice of reliance. This response does not

indicate when defendant began to use any of the trademarks at

issue in this proceeding for its identified services, and

therefore is insufficient to prove 1999 as defendant’s date of

first use of any of its marks.

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Opposition No. 91184576 and Cancellation No. 92049489

Plaintiff’s mark is CALYPSO; defendant’s marks all

begin with CALYPSO, followed by descriptive terms for its

services, terms which defendant has acknowledged are “widely

and typically used in connection with equity investment

management and fund services,” brief, p. 10, and which it

has disclaimed. It is a well-established principle that, in

articulating reasons for reaching a conclusion on the issue

of likelihood of confusion, there is nothing improper in

stating that, for rational reasons, more or less weight has

been given to a particular feature of a mark, provided the

ultimate conclusion rests on a consideration of the marks in

their entireties. In re National Data Corp., 753 F.2d 1056,

224 USPQ 749, 751 (Fed. Cir. 1985). In this case, the

additional wording in defendant’s marks does not serve to

distinguish its marks from plaintiff’s. Instead, those

words provide information about defendant’s services or are

terms used generally for such services. Thus, consumers

will look to the arbitrary word CALYPSO in defendant’s marks

as having the source-indicating significance.

Although we have found that the parties’ marks are

similar, that does not end the inquiry. Even if marks are

identical, the goods and services must also be sufficiently

related and/or the circumstances surrounding their marketing

be such that purchasers encountering them would mistakenly

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Opposition No. 91184576 and Cancellation No. 92049489

believe that they emanate from the same source for us to

find that confusion is likely to occur. Standard Knitting

Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917,

1930 (TTAB 2006). In any likelihood of confusion analysis,

two key considerations are the similarities between the

marks and the similarities between the goods and/or

services. See Federated Foods, Inc. v. Fort Howard Paper

Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In

re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531

(Fed. Cir. 1997). We therefore turn to a consideration of

the parties’ goods and services. In its pleading, plaintiff

alleges broadly that it has been a leading provider of

“computer software to financial institutions for trading

applications.” ¶ 8. However, plaintiff has not properly

made of record any evidence regarding its actual use of the

mark CALYPSO.14 Therefore, plaintiff’s rights in its mark

are limited to its registration, which identifies its goods

as “computer software for use by financial institutions for

core processing and control.” Defendant’s services, as

identified in the opposed applications and the registration

sought to be cancelled, are “equity investment management

and fund services, with a primary focus on United Kingdom

14

Although plaintiff has submitted printouts from its webpages

pursuant to a notice of reliance, the printouts are not evidence

of the statements made in the printouts.

22

Opposition No. 91184576 and Cancellation No. 92049489

and European securities.” Defendant essentially operates a

hedge fund, or actually several funds.

There is clearly some connection between plaintiff’s

goods and defendant’s services, as both are in the financial

field. Plaintiff’s software is specifically identified as

being for use by financial institutions. And defendant’s

“equity investment management and fund services,” and more

specifically, hedge fund services, involve financial

investing. However, in order to find that goods and

services are related, there must be more of a connection

than that a single term, in this case “financial field,” may

be used to generally describe them. See In re W.W. Henry

Co., 82 USPQ2d 1213, 1215 (TTAB 2007) (it is not sufficient

that a particular term may be found which may broadly

describe the goods); General Electric Co. v. Graham

Magnetics Inc., 197 USPQ 690, 694 (TTAB 1977) (it is,

however, not enough to find one term that may generically

describe the goods).

Plaintiff has attempted to show a connection between

its goods and defendant’s services by submitting third-party

registrations which include goods and services covering

financial software and financial services. Third-party

registrations which individually cover a number of different

items and which are based on use in commerce serve to

suggest that the listed goods and/or services are of a type

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Opposition No. 91184576 and Cancellation No. 92049489

which may emanate from a single source. See In re Albert

Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). However,

none of the registrations submitted by plaintiff is based on

use in commerce; rather, they are all based on international

registrations, and therefore there is no evidence that any

of the marks have been used in the United States for goods

and services that are the same as those of the parties

herein.15

There is simply no evidence of record that shows that

“computer software for use by financial institutions for

core processing and control” and “equity investment

management and fund services” are ever offered by a single

company. Again, while both plaintiff’s software and

defendant’s investment management and fund services are both

concerned with activities in the financial world, plaintiff

has failed to show the necessary connection that would cause

the consumers of these goods and services to believe that

they emanate from a single source if they were offered under

similar marks.

There is evidence that the same institutions that would

purchase computer software of the type sold by plaintiff

would also avail themselves of the investment management and

15

No Section 8 affidavits of continuing use have been filed for

any of these registrations; with one exception, these

registrations are less than five years old.

24

Opposition No. 91184576 and Cancellation No. 92049489

fund services offered by defendant.16 However, there is no

evidence that the same people at the financial institutions

make the decision to purchase investor services also choose

to purchase computer software for core processing and

control. See Electronic Design & Sales Inc. v. Electronic

Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed.

Cir. 1992) (the mere purchase of the goods and services of

both parties by the same institution does not, by itself,

establish similarity of trade channels or overlap of

customers); Electronic Data Systems Corp. v. EDSA Micro

Corp., 23 USPQ2d 1460, 1465 (TTAB 1992) (the fact that a

large company, which buys a myriad of different products and

services, may purchase opposer's and applicant's services

and goods, does not either make the services and goods

related or demonstrate that confusion is likely to occur

because of the use of similar marks). Plaintiff points out

that defendant’s CFO, Andrew Flinn, attended a meeting with

plaintiff’s representatives at defendant’s offices at which

plaintiff tried to sell defendant its software, and that Mr.

Flinn also is involved with recruiting investment customers.

From this, plaintiff concludes that “the same individuals

within the same types of financial institutions are involved

in both the hedge fund services of [defendant], and in the

decision to procure goods like [plaintiff’s].” Reply brief,

16

This evidence has been marked confidential, so we will not

25

Opposition No. 91184576 and Cancellation No. 92049489

p. 5. However, Mr. Flinn’s involvement as the purveyor of

investment management and fund services does not show that a

customer for such services would also be involved in the

purchase of computer software for core processing and

control for his or her financial institution. (In fact,

there is no evidence that defendant purchases, as opposed to

offering, investment management services at all.)

The du Pont factor of the similarity of the goods and

services favors defendant.

An additional factor favoring defendant is the

sophistication of the purchasers of the respective goods and

services. Because plaintiff’s goods are specifically

identified as “computer software for use by financial

institutions for core processing and control,” its customers

are limited to financial institutions. Therefore, the only

overlap in terms of customers for defendant’s services are

financial institutions as well. We are not dealing here

with an individual with a few dollars to invest. Mr. Flinn

testified that, due to SEC regulations, its institutional

customers must have investment assets of $25 million. It is

not clear whether the SEC requires that all financial

institutions who obtain “equity investment management and

fund services, with a primary focus on United Kingdom and

European securities” have investment assets of $25 million,

give any details about it.

26

Opposition No. 91184576 and Cancellation No. 92049489

but it is obvious that financial institutions using these

services will be investing large sums of money, and will be

extremely careful and sophisticated purchasers. As for

plaintiff’s software, Mr. Flinn stated that the software

proposed by plaintiff for defendant would cost in excess of

$1 million, and that the software that defendant actually

did purchase from a different party was in the $200,000-

$300,000 range. Thus, because of the cost and the purpose

of the software, the financial institutions purchasing

software for core processing and control will be careful and

sophisticated as well.

Such consumers are not likely to assume that such

disparate goods and services as plaintiff’s particular

computer software and defendant’s identified hedge fund

services emanate from the same source merely because they

are offered under the similar marks CALYPSO and CALYPSO with

additional descriptive wording. First, there is no evidence

that the same individuals within a financial institution

would be involved with the purchase of these different goods

and services. Even if they were, plaintiff has not shown

that they would have any reason to think that the goods and

services would come from a common source. There is simply

no evidence that computer services for core processing and

control and equity investment management and fund services

are ever rendered by a single entity. And the sophisticated

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Opposition No. 91184576 and Cancellation No. 92049489

purchasers involved in these purchasing decisions would be

aware of the practices of the industry, and recognize that

such goods and services do not emanate from a single

source.17

Essentially plaintiff would have us find confusion

simply because of the similarity of the marks. But this is

not a sufficient basis for doing so.

As for the du Pont factor of fame, plaintiff has not

shown that its mark is famous. There is no evidence of

record regarding the extent of sales or advertising.

Although plaintiff has made of record some articles, many

are about the company rather than about the trademark

CALYPSO for the particular computer software. It is the

duty of a party asserting that its mark is famous to clearly

prove it. Leading Jewelers Guild Inc. v. LJOW Holdings LLC,

82 USPQ2d 1901, 1904 (TTAB 2007). We simply cannot

conclude, from a few articles and plaintiff’s promotion of

17

Plaintiff has argued that the parties attend similar types of

conference and events in the financial industry. However, there

is no evidence of record to support this. The evidence shows

that plaintiff has used its mark at the SIBOS Conference trade

event, see plaintiff’s response to Interrogatory 16, made of

record by defendant, while defendant has attended business

networking events at the Annual Goldman Sachs Prime Brokerage

Emerging Managers Hedge Fund Conference and the Annual U.S.

Manager Forum. Defendant’s response to Interrogatory Nos. 30 and

31, made of record by plaintiff. There is also evidence, Item 32

of plaintiff’s supplemental notice of reliance, that defendant’s

General Counsel and Chief Compliance Officer, Shawn Singh, was

listed as a panelist at something called the “3rd Annual Hedge

Fund Operations & Technology,” but there is no information about

the nature of this conference or that plaintiff attended or

participated in it.

28

Opposition No. 91184576 and Cancellation No. 92049489

its mark on its own website, that CALYPSO is a famous mark

for computer software for use by financial institutions for

core processing and control.

We do find that plaintiff’s mark is arbitrary and

strong. There is no evidence of third-party use of CALYPSO

for software used by financial institutions. Defendant has

submitted evidence of third-party registrations for CALYPSO

or marks containing the word CALYPSO, including, in the

software area, three owned by one entity for computer

software for use in connection with medical diagnostic

imaging and the like, and one owned by a different company

for measuring machines and software used in connection with

them. Such registrations are not evidence of use of the

marks in the marketplace, and they do not show that the

public is familiar with them. See Olde Tyme Foods Inc. v.

Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir.

1992) and AMF Inc. v. American Leisure Products, Inc., 474

F.2d 1403, 177 USPQ 268, 269 (CCPA 1973). We recognize that

third-party registrations may be used in the manner of

dictionary definitions, to show that a term has a

significance in a particular industry. See Tektronix, Inc.

v. Daktronics, Inc., 187 USPQ 588 (TTAB 1975). However, the

goods in these third-party registrations are so different

from plaintiff’s goods that we can ascribe no suggestive

significance to CALYPSO for plaintiff’s identified goods.

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Opposition No. 91184576 and Cancellation No. 92049489

There is no probative evidence of record showing actual

confusion. Defendant has made of record plaintiff’s

response to its Interrogatory 29, in which defendant

requested that plaintiff describe every instance of

confusion known to it. Plaintiff’s answer was that it

“identifies an email from an investment research company,

Morningstar, Inc., dated July 28, 2008 to [plaintiff’s]

Sales Department Email address, inquiring about

[defendant’s] funds, specifically CALYPSO GLOBAL

OPPORTUNITIES FUND, LTD., CALYPSO MASTER FUND, LTD. and

CALYPSO OVERSEAS, LTD.” In view of the fact that this

response is merely plaintiff’s report/characterization of an

email, the response has no probative value as evidencing

actual confusion.18 As for the companion du Pont factor of

the length of time during and conditions under which there

has been concurrent use without evidence of actual

confusion, there is no evidence as to the extent of either

plaintiff’s or defendant’s use and advertising such that we

can conclude that there has been an opportunity for

confusion to occur if it were likely to occur. These du

Pont factors are neutral.

Because plaintiff has not properly submitted any

evidence of its actual use of its mark, the du Pont factor

18

We are, however, puzzled as to why defendant would choose to

submit this response under its own notice of reliance when it

objected to plaintiff’s submission of the underlying email.

30

Opposition No. 91184576 and Cancellation No. 92049489

of the variety of goods on which plaintiff’s mark is used is

neutral. Further, because of the limited number of

overlapping potential purchasers of the parties’ goods and

services, and their sophistication, the extent of potential

confusion is de minimis.

There is no evidence that plaintiff has excluded others

from the use of its mark, but there is also no evidence that

plaintiff has had to take any such actions. We treat these

factors as neutral.

Neither party has argued that there is any market

interface. Therefore, we treat this factor as neutral.

Finally, plaintiff points to the fact that defendant

filed an opposition against a third party’s application to

register BLUE CALYPSO for “providing electronic

advertisement distribution via computer networks.”

Defendant has provided an explanation for its actions in its

brief, but there is no evidence of record to support it, and

therefore we have not considered it. As for defendant’s

position in that opposition, it is not an admission, but may

be considered only as illuminative of shade and tone in the

total picture. See Interstate Brands Corporation v.

Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151 (CCPA

1978). In the present case, because the goods in the third-

party application are substantially different from

plaintiff’s goods herein, we do not regard that opposition

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Opposition No. 91184576 and Cancellation No. 92049489

as indicating in any way that defendant believes there is a

likelihood of confusion between use of its mark for its

services and plaintiff’s use of its mark for its goods.

Balancing the factors

Any of the du Pont factors may play a dominant role

from case to case. In re E. I. du Pont de Nemours & Co.,

476 F.2d 1357, 177 USPQ at 567. In fact, a single factor

may be dispositive. Kellogg Co. v. Pack’em Enterprises

Inc., 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991). In the

present case, the factors of the dissimilarity of the goods

and services and the sophistication of the customers

strongly outweigh the factors, such as similarity of the

marks and the strength of plaintiff’s mark, that would favor

a finding of likelihood of confusion. Accordingly, we find

that plaintiff has failed to prove that defendant’s use of

its marks for “equity investment management and fund

services, with a primary focus on United Kingdom and

European securities” is likely to cause confusion with

plaintiff’s mark for CALYPSO for “computer software for use

by financial institutions for core processing and control.”

Affirmative defenses

In view of our finding on likelihood of confusion, we

need not consider defendant’s affirmative defenses.

Decision

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Opposition No. 91184576 and Cancellation No. 92049489

The opposition and the petition to cancel are dismissed

with respect to the three opposed applications and the three

registrations sought to be cancelled.

33