Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 INTERFAX, INC.
Opposition No. 83,771
November 15, 1991
Before Sams, Cissel and Seeherman
Opinion by Cissel
On February 22, 1990 SearchCraft, Inc. filed an application based on its intent to use "FAXTEX" as a service mark for what was subsequently identified by amendment as "transmission of data information by facsimiles" in Class 38. Timely Notice of Opposition was filed by INTERFAX, INC. on October 17, 1990.
As grounds for opposition opposer asserts that it has used "FAXTEX" as a service mark for facsimile transmission services since December 18, 1989; that it applied for registration of its mark on March 26, 1990 (S.N. 74/042,728, a copy of which was attached to the complaint); and that confusion is likely if applicant uses and registers the same mark for substantially the same services. Applicant's answer denied knowledge of opposer's claimed use, and therefore that confusion would be likely.
Following consented extensions of the discovery period, on August 26, 1991 opposer moved for suspension of its testimony period and for summary judgment. Opposer asserts that no material facts are disputed, and that, based on the undisputed facts, opposer is entitled to judgment as a matter of law. In support of opposer's motion, affidavits and evidence were submitted subject to a protective order to which the parties had agreed and which was sanctioned by the Board. Also submitted were a brief and a statement of the facts asserted by opposer to be undisputed. On September 6, 1991 proceedings were suspended pending disposition of the motion for summary judgment.
Applicant then filed its own motion for summary judgment on September 13, 1991. Opposer's responses to applicant's document request and opposer's interrogatory responses were submitted in support of applicant's cross motion. Applicant contends that priority is the sole issue before the Board, but that opposer has failed to demonstrate that it had acquired proprietary rights in the mark before applicant filed its application.
Applicant finds fault with opposer's attempt to show priority in two ways. As to the claimed use of the mark with clients and potential clients, applicant argues that such use was confidential and did not create a public awareness of opposer's use of the term in connection with its services. The references to opposer's mark in two published articles about opposer's services are faulted by applicant for other reasons. Applicant argues that one publication does not show use of the mark "in an unambiguously correct service mark format," and that the other publication shows "FAXTEX" "buried" in other text in a way that the public would not likely note.
Rule 56(c), Fed.R.Civ.P. provides that
Summary Judgment shall be rendered forthwith if the pleadings, depositions, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law ..."
*2 The question of likelihood of confusion has been consistently held by the U.S. Court of Appeals for the Federal Circuit to be one of law and unquestionably may be resolved by way of summary judgment under appropriate circumstances. See, e.g., Sweats Fashions, Inc. v. Pannill Knitting Company, Inc., 833 F.2d 1560, 4 USPQ2d 1793 (Fed.Cir.1987). Priority, being the only disputed issue in the case at hand, seems to be particularly suited to resolution by summary judgment.
Both parties believe that this matter is ripe for resolution on the materials of record in connection with the cross motions, although each party argues that judgment for the other party would be improper. We agree that no facts material to the issue of priority are disputed. We find that the materials of record in connection with the cross motions establish opposer's use of "FAXTEX" as a service mark prior to applicant's filing date, and that opposer is entitled to judgment as a matter of law.
The affidavits of opposer's founder, of opposer's president, and of a customer of opposer set forth facts which establish opposer's adoption of "FAXTEX" as a service mark in November of 1989 and its use as a service mark since December, 1989. Both orally and in writing, opposer referred to its "FaxTex interactive facsimile service" in sales presentations to customers. The mark was used in opposer's revised Standard Information Provider Agreement, which was sent to a client on December 1, 1989. Opposer's service is identified therein as the "FAXTEX interactive facsimile service." The agreement is the contract between opposer and its clients whereby opposer's services are rendered. The customer signed the agreement on December 19, 1989. The mark has been used in sales presentations since November of 1989, both orally and by providing customers with written materials which use the mark in connection with opposer's services.
Applicant argues that this use of the mark by opposer was "confidential" use which was not sufficient to establish rights. Applicant contends that the fact that opposer's evidence relating to these issues is marked "confidential" and is subject to the protective order to which opposer and applicant agreed in this case demonstrates the highly confidential nature of opposer's asserted use, and that without more public use than this, opposer cannot be considered to have used the mark in a way which would establish proprietary rights in it.
As opposer notes, however, applicant is confusing the confidentiality with which the parties to this proceeding have agreed to treat this information with the nature of opposer's activities with its customers in 1989 and early 1990. While it is clear that opposer does not want to have to reveal information regarding its customers because applicant is a direct competitor, opposer's use of its service mark was not confidential. The record shows that opposer's use of its mark with customers and potential customers was open and public use of the mark to identify opposer's services. Opposer did not advise these people to treat its mark as confidential. There is no authority for the proposition which applicant seems to be asserting, that by agreeing to consider the evidence of its first use of its mark confidential, opposer was retroactively converting the nature of its first use into activity so confidential and secret as to divest opposer of the rights it had established.
*3 In light of the clear sufficiency of the affidavit evidence of opposer's priority, applicant's arguments concerning the alleged deficiencies in the two published references to opposer's "FAXTEX" service prior to applicant's filing date are moot. Moreover, notwithstanding applicant's arguments to the contrary, we find this evidence also supports opposer's claim of priority. Applicant's objections are without merit.
We can find no deficiency in any of the evidence that opposer used its mark to identify its services in 1989, well before applicant filed its application in February of the following year. Because no material facts are disputed and the undisputed facts show that opposer has prior use of the identical mark for services which are substantially the same, confusion is likely and summary judgment for opposer is appropriate.
Decision: The opposition is sustained.
J. D. Sams
R. F. Cissel
E. J. Seeherman
Members, Trademark Trial and Appeal Board