Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 ARIES SYSTEMS CORPORATION
v.
WORLD BOOK, INC.
Opposition No. 85,395
June 29, 1992
Before Rice, Quinn and Hohein
Members
Opinion by Hohein
Member
Applicant, World Book, Inc., has filed an application to register the mark "INFORMATION FINDER" for "computer programs, compact disks for use in educational research and as a reference source containing computer-readable data, and instructional manuals, sold as a unit". [FN1]
Opposer, Aries Systems Corporation, has opposed registration on the ground that applicant's mark, when applied to its goods, so resembles opposer's previously used mark "Knowledge Finder," which is used in connection with "computer programs and compact disks for use in research and as a reference source and [on] instruction manuals" and which is registered, in the form reproduced below, for "computer programs for information retrieval on microcomputers," [FN2] as to be likely to cause confusion, mistake or deception.
Knowledge Finder
Applicant, in its answer, has denied the salient allegations set forth in the notice of opposition.
This case now comes up on (i) opposer's motion, filed with a certificate of mailing dated February 3, 1992, for summary judgment; (ii) applicant's cross-motion, filed with a certificate of mailing dated April 22, 1992, for summary judgment; and (iii) applicant's motion, filed with a certificate of mailing dated April 22, 1992, for leave to file its first amended answer and counterclaim. [FN3] While each party has timely submitted a response in opposition to the other party's motion for summary judgment and has also filed a reply, opposer has indicated that it has no objection to applicant's motion for leave to file an amended pleading and has furnished its answer to the counterclaim. [FN4]
As has often been stated, the purpose of summary judgment is one of judicial economy, namely, to save the time and expense of a useless trial where no genuine issue of material fact remains and more evidence than is already available in connection with the motion for summary judgment could not be reasonably expected to change the result. See, e.g., Pure Gold, Inc. v. Syntex (U.S.A.), Inc., 739 F.2d 624, 222 USPQ 741, 743 (Fed.Cir.1984) and Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 222 USPQ 939, 941 (Fed.Cir.1984). The burden in a motion for summary judgment is on the moving party to establish prima facie that there is no genuine issue of material fact and that it is entitled to a judgment as a matter of law. Fed.R.Civ.P. 56(c).
Moreover, on a motion for summary judgment, the function of the Board is not to try issues of fact but to determine, instead, if there are any genuine issues of material fact to be tried. In this regard, all doubts as to whether or not particular factual issues are genuinely in dispute must be resolved against the moving party and, similarly, all inferences to be drawn from the undisputed facts must be viewed in the light most favorable to the nonmoving party. See Flatley v. Trump, 11 USPQ2d 1284, 1287 (TTAB 1989) and cases cited therein.
*2 Opposer seeks summary judgment sustaining the opposition on the basis of its claim of priority of use and likelihood of confusion. In particular, opposer asserts that when the relevant factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973), for determining whether a likelihood of confusion exists are considered, "virtually ALL of the factors clearly favor a finding of likelihood of confusion" as a matter of law.
In support of its position, opposer has furnished a copy of the pertinent portions of a publication which lists synonyms for various words [FN5] and the affidavit, with exhibits, of opposer's president, Lyndon S. Holmes. [FN6] Opposer has also submitted the affidavit of an employee of its counsel's law firm, Teresa C. Tucker, [FN7] as further support for its motion and as part of its opposition to applicant's cross-motion for summary judgment.
Applicant, by its motion for leave to file an amended answer, seeks to add a counterclaim to restrict the scope of the goods set forth in opposer's pleaded registration to that commensurate with the product to which the "Knowledge Finder" mark has actually been used. [FN8] Applicant maintains that if opposer's registration is so limited, along with, perhaps, an appropriate narrowing of the identification of goods set forth in its own application, there is no likelihood of confusion. Applicant, by its cross-motion for summary judgment, accordingly requests that its counterclaim be granted and that the opposition be sustained.
As support for its cross-motion for summary judgment, and in opposition to opposer's motion, applicant has filed the declaration, with exhibits, of one of its attorneys, John M. Murphy, [FN9] and the declaration, with exhibits, of applicant's "Director of School and Library Services," Paul E. Rafferty. [FN10] With its reply, applicant has furnished a supplemental declaration, with an exhibit, from Mr. Murphy [FN11] and a supplemental declaration from Mr. Rafferty. [FN12]
Preliminarily, we note that as a general rule, the resolution of Board proceedings by means of summary judgment is to be encouraged. Sweats Fashions, Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793, 1795 (Fed.Cir.1987). This is particularly true when both parties seek resolution of the dispute by means of summary judgment. Blue Cross & Blue Shield Association v. Harvard Community Health Plan, Inc., 17 USPQ2d 1075, 1076 (TTAB 1990) and Phoenix Closures Inc. v. Yen Shaing Corp. Ltd., 9 USPQ2d 1891, 1892 (TTAB 1988).
In the present case, we find with respect to opposer's motion for summary judgment that there are no genuine issues of material fact [FN13] and that, in the absence of appropriate restrictions of both the goods set forth in opposer's pleaded registration and those listed in applicant's involved application, confusion as to source or sponsorship is likely as a matter of law. In this regard, it is clear from the parties' affidavits that opposer is the prior user and, in any event, its priority is established by the certified copy of its pleaded registration, which evidences that the registration is subsisting and owned by opposer. [FN14] Moreover, it is also apparent, in light of the broad identification of goods in opposer's registration, that its computer programs, as identified, encompass those set forth in applicant's application. Furthermore, while we note, with respect to the parties' marks, that the terms "KNOWLEDGE" and "FINDER" have often been registered or applied for by others as elements of marks for the same type of goods, [FN15] none of the third-party marks involves a mark which, as confirmed by the dictionary excerpts, is synonymous to applicant's mark. Thus, and although highly suggestive of the respective goods of the parties, the marks "Knowledge Finder" and "INFORMATION FINDER" nevertheless are virtually identical in connotation and create essentially the same commercial impression when applied to computer programs and related materials used in research and as a CD-ROM reference source. [FN16] In view thereof, and notwithstanding the fact that purchasers of the goods may be sophisticated and discriminating, [FN17] we accordingly believe that contemporaneous use of the marks "Knowledge Finder" and "INFORMATION FINDER" is likely to cause confusion when applied to goods which, as respectively identified in opposer's registration and applicant's application, must be considered to be identical. [FN18] Opposer's motion for summary judgment, insofar as the question of likelihood of confusion presented by the broad identifications of the parties' goods is concerned, is therefore granted. Fed.R.Civ.P. 56(c).
*3 Applicant, by its filing of its cross-motion for summary judgment and motion for leave to amend, appears to realize that, in consequence of the above, opposer's motion for summary judgment is well taken absent appropriate relief under Section 18 of the Trademark Act. [FN19] In particular, applicant states in its brief that (footnote omitted): "The appearance of confusion, to the extent that it exists, flows from the overbroad identification of goods in Aries' pleaded registration. Since Aries uses its KNOWLEDGE FINDER mark only in connection with the MEDLINE database, used by medical librarians and medical professionals, and not in connection with 'computer programs for information retrieval on microcomputers' generally, its statement of goods should be limited accordingly". Applicant further notes, with respect to its application, that since the "identification of goods is perhaps overbroad as well, applicant would be amenable to amendment of its application pursuant to Trademark Rule 2.133 should this be deemed necessary by the Board".
Opposer, in response, asserts that information in an encyclopedia necessarily includes data in the fields of medicine and science. It therefore maintains that:
To limit Opposer's registration to one field of information, no matter what that field may be, would not negate the duplication of fields of information between Opposer's goods and Applicant's goods. Accordingly, opposer submits that to partially cancel, limit or otherwise rectify Opposer's identification of goods would not remove the existing likelihood of confusion problem because a more narrow identification of goods, for example, computer programs for information retrieval in the medical field on microcomputers, would still overlap with Applicant's goods.
Opposer consequently stresses that applicant "has failed to note that among the finite areas of computer goods, both Opposer's and Applicant's goods fall within the same small subcategory: computer programs for use as a research tool, which research may comprise investigation into medical and scientific fields".
Similarly, as to the facts that applicant's goods are intended for use by elementary and secondary students and are also designed as a general reference source for adults, opposer contends that:
Being so designed, Applicant's goods are purposefully and inherently simplistic, cursory and pedestrian. Opposer's goods on the other hand, are designed for use as a reference source which provides in depth, sophisticated data. If potential purchasers of Opposer's goods were to be confused into thinking that Opposer's goods were in some way connected with Applicant's goods, potential purchasers of Opposer's goods may question the level of sophistication of Opposer's goods and be dissuaded from purchase. The "stigma" of the lower complexity level of Applicant's goods is likely to have a negative effect on Opposer's customers' purchasing decisions, to the detriment of opposer.
*4 Opposer, in view thereof, is concerned that reverse confusion, in which the consumer who encounters the the highly promoted goods of the junior user believes that the goods of the senior user also emanate from the junior user, would still be likely to occur. The present opposition, according to opposer, "is clearly a matter of reverse confusion in that Applicant's well known 'WORLD BOOK' name, used in conjunction with the promotion of its 'INFORMATION FINDER' goods, operates to confuse the purchasing public into believing that Opposer's goods originate with Applicant".
Applicant argues in reply that opposer's "assertion that the statements of goods contained in Aries' registration and World Book's application could not be rewritten so as to avoid the appearance of likely confusion is ludicrous". Applicant consequently insists that because "World Book's product covers in general terms accessible to the juvenile or lay reader certain broad scientific and medical topics that Aries' product covers on an in-depth level suitable for the medical researcher or practitioner," imposing limitations or restrictions along such lines is "commercially significant" since likelihood of confusion will thereby be avoided.
The Board, in its latest pronouncement on amended Section 18 of the Trademark Act, [FN20] stated that:
A restriction is "commercially significant" if its entry would avoid a finding of likelihood of confusion in the proceeding in which the restriction request has been made. Even where entry of the proposed restriction would not avoid a finding of likelihood of confusion, a proposed restriction is "commercially significant" if the evidence adduced at trial (or on summary judgment) establishes clearly and convincingly that the registrant has recited its goods in terms that so overstate either the range of goods registrant actually markets under the registered mark or the trade channels in which registrant's goods move that fairness demands that an appropriate restriction to the registration be entered.
Procter & Gamble Co. v. Sentry Chemical Co., supra at 1592. However, we cannot presently decide, on summary judgment, whether any restriction and/or limitation would be sufficient to avoid a finding of likelihood of confusion for the following reasons.
First, as noted previously, applicant has failed to remit the required fee for the counterclaim. [FN21] Payment thereof is necessary in order for the Board to have jurisdiction, under Sections 14 and 18 of the Trademark Act, to consider the requested relief. Second, although opposer has consented to the filing of the counterclaim, the amended pleading filed by applicant is deficient inasmuch as the counterclaim must not only be tied to a specific ground for cancellation (e.g., nonuse by opposer of the mark other than for certain specific goods), but the request for partial cancellation must be specific (rather than general) in nature so that opposer, as the defendant in the counterclaim, has adequate notice of the restriction being sought to the identification of goods in its registration as well as fair notice of what limitation, if any, applicant is willing to accept to the identification of goods in its application. See Space Base Inc. v. Stadis Corp., 17 USPQ2d 1216, 1220 (TTAB 1990).
*5 In this case, the counterclaim contained in applicant's first amended answer, while tied to a statutory ground for cancellation, fails to give opposer (as well as the Board) reasonable notice of the particular restriction applicant desires to impose upon opposer's registration for the "Knowledge Finder" mark [FN22] and fails to specify, at a minimum, the least restrictive language, if any, applicant believes would be an appropriate limitation of its application regarding the "INFORMATION FINDER" mark. [FN23] Absent an appropriately amended pleading, which specifies in a sufficiently detailed manner whatever changes are proposed to restrict the goods set forth in opposer's registration, together with a particular indication of any modifications which may be also be necessary to the identification of goods in applicant's application, the issues applicant seeks to raise by its counterclaim are simply too amorphous for adequate resolution at this juncture. [FN24] Applicant's amended pleading consequently cannot be accepted and, pending possible perfection of the counterclaim, further consideration of its cross-motion for summary judgment must be postponed.
Accordingly, while applicant's motion for leave to file its first amended answer and counterclaim is denied for the reasons set forth above, applicant is nevertheless allowed, in light of opposer's consent to the filing of a counterclaim, until thirty days from the mailing date of this order [FN25] to perfect its proposed counterclaim by filing an amended pleading which, at the very least, includes the required fee and describes in sufficient detail the restriction it seeks with respect to opposer's pleaded registration, along with any appropriate limitation of the involved application, failing which applicant's cross-motion for summary judgment will be denied and a judgment sustaining the opposition will be entered in view of our granting of opposer's motion for summary judgment on the issue of likelihood of confusion presented by the present unrestricted identifications of the parties' goods. [FN26] Fed.R.Civ.P. 15(a) and 56(c).
Further consideration of applicant's cross-motion for summary judgment is consequently deferred. Proceedings herein remain otherwise suspended pending possible response to this order.
T.J. Quinn
G.D. Hohein
Members, Trademark Trial and Appeal Board
FN1. Ser. No. 74/022,531, filed on January 25, 1990, which alleges dates of first use of October 13, 1989. The word "INFORMATION" is disclaimed.
FN2. Reg. No. 1,599,266, issued on June 5, 1990, which sets forth dates of first use of October 1, 1986.
FN3. Although the last motion is accompanied by applicant's first amended answer and counterclaim, it is noted that the required fee for the counterclaim has not been paid.
FN4. Applicant's stipulated motion, received on March 16, 1992, for an extension of time until April 22, 1992 to respond to opposer's motion for summary judgment is granted. Similarly, and since no date for answering the counterclaim has yet been set, opposer's stipulated motion, received on May 4, 1992, for an extension of time until June 8, 1992 to respond to applicant's cross-motion for summary judgment and its first amended answer and counterclaim is construed as a request for an extension of time to respond to applicant's pending motions and, as so construed, is granted.
FN5. Specifically, The Synonym Finder at 631 lists "information" as a synonym for the word "knowledge".
FN6. In his affidavit, Mr. Holmes states, among other things, that opposer is in the business of designing, manufacturing, selling and servicing computer software products, supplies and related services; that opposer "adopted the trademark 'Knowledge Finder' on October 1, 1986 in connection with the marketing of computer programs and compact disks for use in research and as a reference source and [on] instructional manuals therefor and has continuously used 'Knowledge Finder' as a trademark ever since" as shown by the attached specimens of use; that opposer's sales of computer software products, supplies and related services under its "Knowledge Finder" mark are approximately $750,000 annually; that opposer, as shown by the attached certified copy thereof, is the owner of Reg. No. 1,599,266, issued on June 5, 1990, for the mark "Knowledge Finder" for "computer programs for information retrieval on microcomputers"; that as shown by the accompanying representative samples thereof, opposer promotes its goods by circulation of catalogs and leaflets and through advertisements in appropriate periodicals and at trade shows; that opposer "spends tens of thousands of dollars annually ($90,000 in 1991) in advertising and promoting its products marketed under the 'Knowledge Finder' trademark"; that its goods are sold through agents and distributors as well as directly to end-users; and that the goods opposer markets under its "Knowledge Finder" mark "have been featured in the popular press on multiple occasions" as evidenced by the attached samples of such articles.
FN7. In particular, Ms. Tucker indicates in her affidavit that on May 13, 1992, she telephoned applicant's customer service department and spoke to a customer service representative; that she "asked the customer service representative to describe the publication called 'Health and Medical Annual' which was identified in the recorded message ... heard while on hold waiting to be helped"; and that she "was told that it is an update to the 'Medical Yearbook' which is a publication specifically covering health and medical topics".
FN8. By its amended pleading, applicant proposes to cancel opposer's registration in part on the basis of the following:
13. Applicant has for many years been engaged in the manufacture, advertising, promotion, distribution and sale of a wide variety of educational products, including the WORLD BOOK ENCYCLOPEDIA, principally directed at families, elementary and secondary schools, and public libraries.
14. At least as early as October 13, 1989, applicant commenced use of the mark INFORMATION FINDER in connection with a CD-ROM reference source for elementary and secondary schools, public libraries and families consisting, essentially, of text and tables from the WORLD BOOK ENCYCLOPEDIA and definitions from the WORLD BOOK DICTIONARY.
15. On January 25, 1990, applicant filed Application Serial No. 74/022,531 to register INFORMATION FINDER in class 9 in connection with ... "computer programs, compact disks containing computer-readable data, and instructional manuals, sold as a unit". At the examiner's request, applicant disclaimed the word "INFORMATION" and amended its statement of goods to read ... "computer programs, compact disks for use in educational research and as a reference source containing computer-readable data, and instructional manuals, sold as a unit".
16. Without prejudice, applicant would be willing to further limit its statement of goods in order to eliminate the appearance of confusion with opposer's mark.
17. On June 20, 1991, opposer Aries Systems Corporation filed Opposition No. 85,395 with respect to the above application, based upon its registration of KNOWLEDGE FINDER, No. 1,599,266, in connection with "computer programs for information retrieval on microcomputers, in Class 9."
18. On information and belief, opposer has only used its KNOWLEDGE FINDER mark in connection with medical research tools designed for clinical and professional academic environments, and has specifically not used its KNOWLEDGE FINDER mark in connection with research tools designed for use by elementary and secondary school students or as a general reference source for adults.
19. Assuming for purposes of this counterclaim only that opposer may be correct in asserting that applicant's use of INFORMATION FINDER in connection with the goods specified in paragraph 15 is likely to cause confusion with opposer's use of KNOWLEDGE FINDER in connection with the goods covered by Registration No. 1,599,266, then the existence of opposer's registration is a source of damage and injury to applicant because the existence of this overly broad registration may allow opposer to prevent applicant from using its mark and obtaining a federal registration thereof, despite the fact that opposer has not used its mark in connection with the broad scope of goods claimed in Reg. No. 1,599,266 and has specifically not used its mark in connection with goods similar to those sold by applicant in connection with its mark.
20. The maintenance of opposer's Reg. No. 1,599,266 for such a broad range of goods may thus give opposer a greater scope of protection to its KNOWLEDGE FINDER mark than it should otherwise be entitled to claim, to the detriment of applicant.
WHEREFORE, applicant requests that:
A. The Commissioner partially cancel Reg. No. 1,599,266, and modify that registration by limiting the goods specified therein, or otherwise restrict or rectify Registration No. 1,599,266 with respect to the register in accordance with 15 U.S.C. § 1068, so that the statement of goods contained therein more accurately reflects the goods in connection with which opposer's KNOWLEDGE FINDER mark is actually used.
B. Opposition No. 85,395 be dismissed and the registration for which application has been made be issued in due course.
FN9. By such declaration, applicant has made of record certified copies of 22 third-party registrations, covering computer programs and/or optical disks, for marks which contain either (i) the term "KNOWLEDGE" as a prefix or separate initial word or (ii) the term "FINDER" as a suffix or separate last word. Similarly, applicant has submitted certified copies of 17 third-party applications for such marks, most of which relate to computer programs. In addition, applicant has furnished a certified copy of Reg. No. 1,420,563, which issued on December 9, 1986, for the mark "MEDLINE" for the services of "providing computerized access to data bases containing citations to and abstracts of biomedical journal articles". Applicant has also supplied copies of the pertinent pages from Webster's Third New International Dictionary (1981) at 1252 and 852 which respectively show, inter alia, that "information" is a synonym for "knowledge" since the former "generally applies to knowledge, commonly accepted as true, of a factual kind usu. gathered from others or from books" and that "finder" principally means "one that finds".
FN10. Among other things, Mr. Rafferty states in his declaration that applicant "is a leading publisher of educational reference materials for families, elementary and secondary schools and public libraries," including such titles as "the WORLD BOOK ENCYCLOPEDIA, the WORLD BOOK DICTIONARY, the WORLD BOOK ATLAS and CHILDCRAFT--THE HOW AND WHY LIBRARY"; that applicant's mark, "INFORMATION FINDER, is used in connection with a CD-ROM reference source containing the text and tables from the WORLD BOOK ENCYCLOPEDIA and definitions from the WORLD BOOK DICTIONARY"; that its "INFORMATION FINDER is designed for use by elementary and secondary students and as a general reference work for adults"; that "[t]he INFORMATION FINDER mark is almost always displayed in connection with [its] famous WORLD BOOK house mark (i.e., INFORMATION FINDER BY WORLD BOOK) except when it is used in descriptive text"; that its "INFORMATION FINDER" is marketed and sold primarily to elementary and secondary schools and public libraries," that "[t]he persons who purchase INFORMATION FINDER on behalf of these schools and libraries are highly sophisticated and knowledgeable about the product"; that approximately 8.2 percent of all units are sold to individual parents; that "[t]he price of the INFORMATION FINDER product ranges from $549.00 for the standalone version to $1,995.00 for the network (LAN) version," with prices for annual updates varying from $149.00 to $275.00; and that advertising and promotional materials for its "INFORMATION FINDER" product are attached.
FN11. In particular, such declaration contains a true copy of the decision in Procter & Gamble Co. v. Sentry Chemical Co., 22 USPQ2d 1589 (TTAB 1992), which is the latest case dealing with the extent and exercise of the Board's recently expanded authority under amended Section 18 of the Trademark Act.
FN12. Mr. Rafferty avers therein that applicant "publishes a MEDICAL ENCYCLOPEDIA, and a HEALTH AND MEDICAL ANNUAL"; that such "publications are an easy-to-use general medical reference source for lay persons, and are not intended for clinical, diagnostic or other use by medical professionals"; that "[n]either the MEDICAL ENCYCLOPEDIA nor the HEALTH AND MEDICAL ANNUAL are contained in the INFORMATION FINDER CD-ROM reference source"; and that through March 1992, applicant "has sold fewer than 500 units of its INFORMATION FINDER product to individual parents".
FN13. Although applicant, in its initial response to such motion, agreed that "the largely undisputed factual record in this case is an adequate basis for the disposition of Aries' summary judgment motion," applicant contends in its reply that it has "raised a genuine factual issue as to likelihood of confusion". Applicant, however, has not articulated what that issue is and we believe that, for purposes of resolving opposer's motion, there is no material factual issue genuinely in dispute.
FN14. See King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).
FN15. It is pointed out that third-party registrations, in particular, may be used to indicate that a commonly registered element has a suggestive or descriptive meaning for particular goods or services such that differences in other portions of the marks may be sufficient to render the marks as a whole distinguishable. See, e.g., Tektronix Inc. v. Daktronics, Inc., 187 USPQ 588, 592 (TTAB 1975), aff'd, 534 F.2d 915, 189 USPQ 693, 694-95 (CCPA 1976).
FN16. While applicant argues that confusion is unlikely inasmuch as it generally uses its house mark "WORLD BOOK" in connection with its "INFORMATION FINDER" mark, we concur with opposer that such contention is without merit since, in determining the right to registration, likelihood of confusion must be decided on the basis of the mark sought to be registered and the mark which applicant seeks to register obviously does not include the words "WORLD BOOK".
FN17. The fact, however, that purchasers of the parties' products may be technically knowledgable does not mean that they are sophisticated in their knowledge of trademarks for products of the type sold by the parties or immune from confusion as to the origin or affiliation of such goods. See, e.g., Wincharger Corp. v. Rinco, Inc., 297 F.2d 261, 132 USPQ 289, 292 (CCPA 1962); Refreshment Machinery Inc. v. Reed Industries, Inc., 196 USPQ 840, 843 (TTAB 1977); Sperry Rand Corp. v. Gruen Industries, Inc., 189 USPQ 381, 384 (TTAB 1975); and General Electric Co. v. Raychem Corp., 184 USPQ 766, 767 (TTAB 1974).
FN18. It is well established that the issue of likelihood of confusion must be determined in light of the goods and/or services set forth in the registration and application and, in the absence of any specific limitations therein, on the basis of all normal and usual channels of trade and methods of distribution for goods and/or services of the type listed. See, e.g., CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 189, 199 (Fed.Cir.1983); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed.Cir.1983); and Paula Payne Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
FN19. Such section provides, in relevant part, that the Board in inter partes proceedings "may refuse to register the opposed mark, may cancel the registration, in whole or in part, may modify the application or registration by limiting the goods or services specified therein, may otherwise restrict or rectify with respect to the register the registration of a registered mark, ... or may register the mark or marks for the person or persons entitled thereto, as the rights of the parties hereunder may be established in the proceedings".
FN20. Such section was amended, effective on November 16, 1989, by the Trademark Law Revision Act of 1988.
FN21. See Section 14 of the Trademark Act; and Trademark Rules 2.6(l) and 2.106(b)(2)(iii).
FN22. If, as argued in its brief, applicant believes that the only goods in connection with which opposer's mark has been used are "computer programs for the retrieval of information from databases containing citations to and abstracts of biomedical journal articles," its counterclaim should explicitly request such a restriction.
FN23. For example, in light of applicant's contentions and the evidence of record, it might wish to limit the goods in its application to "computer programs on compact disks for use in general educational research and as a reference source containing a computer-readable database of encyclopedic and dictionary information, and instructional manuals therefor, sold as a unit primarily to elementary and secondary schools, non-medical public libraries and families".
FN24. We recognize, of course, that matters of pleading and practice under amended Section 18 of the Trademark Act are still evolving. Nevertheless, when a party moves for summary judgment, and therefore contends among other things that there is no genuine issue of material fact, we think that at a minimum, the party seeking relief by way of partial cancellation of its opponent's registration should know and be able to provide in its pleading (by amendment if necessary) the particulars of any restriction it seeks to have imposed and should also include, either in its pleading or by motion under Trademark Rule 2.133(a), any limitation it may be willing to accept to its own application or registration. It is not for the Board, in the absence of issues specifically framed by the pleadings, to ferret out for the parties, in the first instance, whatever restriction and/or limitation would be commercially significant. See Trademark Rule 2.133(b).
FN25. See Patent Rule 1.7, as made applicable by Trademark Rule 2.1, for a response date falling on a Saturday, Sunday or federal holiday.
FN26. Provided that applicant complies with this order, applicant and opposer, in turn, will each be allowed a reasonable time to file supplemental papers with respect to applicant's cross-motion for summary judgment in light of the issue(s) raised by a properly pleaded counterclaim.