Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 FREDERIC C. TOWERS
v.
ADVENT SOFTWARE, INC.
Cancellation No. 17,085
August 30, 1989
Hearing: June 8, 1989
John T. Roberts for Frederic C. Towers
Pillsbury, Madison & Sutro for Advent Software, Inc.
Before Rooney, Simms and Hanak
Members
Opinion by Hanak
Frederic C. Towers (petitioner) has petitioned to cancel Registration No. 1,347,405 for the mark THE PROFESSIONAL PORTFOLIO owned by Advent Software, Inc. (registrant). The goods listed in the registration are "computer programs for use in the field of financial management." The registration issued on July 9, 1985 with a claimed first use date of December 22, 1983. No claim was made to the exclusive right to use PORTFOLIO apart from the mark THE PROFESSIONAL PORTFOLIO in its entirety.
Petitioner alleges that continuously since November 1982, he has made use of the mark THE PROFESSIONAL PORTFOLIO SYSTEM in connection with the marketing of its VALPORT computer-based portfolio valuation system. Petitioner furthers alleges that the contemporaneous use of THE PROFESSIONAL PORTFOLIO by registrant and THE PROFESSIONAL PORTFOLIO SYSTEM by petitioner is likely to result in confusion, mistake or deception. Petitioner argues that because he first used his mark over one year before registrant first used THE PROFESSIONAL PORTFOLIO, the registration of THE PROFESSIONAL PORTFOLIO should be canceled.
In response, registrant pleads that the contemporaneous use of THE PROFESSIONAL PORTFOLIO SYSTEM by petitioner and of THE PROFESSIONAL PORTFOLIO by registrant is not likely to cause confusion. In addition, registrant asserts that the term THE PROFESSIONAL PORTFOLIO SYSTEM is merely descriptive of petitioner's computer-based portfolio valuation system, and that petitioner has failed to establish that this term acquired a secondary meaning prior to the time that registrant first used THE PROFESSIONAL PORTFOLIO. As a consequence, petitioner, according to registrant, has not established rights in the term THE PROFESSIONAL PORTFOLIO SYSTEM on which to base his petition for cancellation pursuant to Section 2(d) of the Lanham Trademark Act (15 U.S.C. § 1052d). Finally, registrant argues that the petition for cancellation--filed March 31, 1988--is barred by laches inasmuch as the petitioner had constructive notice of registrant's mark THE PROFESSIONAL PORTFOLIO as of July 9, 1985, the date of registration.
Both parties filed briefs with this Board and were represented by counsel at a hearing on June 8, 1989.
We will consider first the issue of likelihood of confusion, and then the issue of priority of acquisition of trademark rights. In considering the issue of likelihood of confusion, we will assume for the moment that petitioner has trademark rights in THE PROFESSIONAL PORTFOLIO SYSTEM.
Both petitioner and registrant market computer-based portfolio valuation systems to "investment professionals," a term which includes brokerage firms, investment advisors, bank trust departments, corporate treasurers and accounting firms. [FN1] Both products are marketed through the same trade channels. For example, both petitioner and registrant have marketed their respective products at the Investment Company Institute general membership meeting held in Washington, D.C. Moreover, both products have been described in the same publications, such as the February 1989 issue of Wall Street Computer Review. Under such circumstances, there can be little doubt that the use of nearly identical marks [FN2] for legally identical products is likely to result in confusion, mistake or deception.
*2 Registrant argues that confusion is unlikely because both its product and petitioner's product are sold to highly sophisticated customers. However, it must be remembered that such sophistication does not preclude a likelihood of confusion when the marks are extremely similar and the products are legally identical. In re Computer Communications, Inc., 484 F.2d 1392, 1394, 179 USPQ 51, 52 (CCPA 1973).
Registrant also argues that confusion is unlikely as witnessed by the fact that to date, there has been no evidence of actual confusion despite the fact that the products of the parties have been marketed side by side. In contrast, Mr. Towers testified that he remembered inquiries from prospective customers which, by their nature, indicated that there was confusion involving the products of the parties. [FN3] Of course, it need hardly be said that proof of actual confusion is not a prerequisite to a finding of likelihood of confusion. Given the high degree of similarity of the marks and the legally identical nature of the products, we would find that there is a likelihood of confusion in this case even assuming arguendo that there has been no proof of actual confusion.
The more difficult issue in this proceeding is not likelihood of confusion, but rather priority of acquisition of trademark rights. In order to be successful in a cancellation action premised upon Section 2(d) of the Lanham Trademark Act (15 U.S.C. § 1052d), the petitioner must establish that the word, name, symbol or device which he claims to be his mark is indeed "distinctive [of his goods and/or services], whether inherently so or through the acquisition of secondary meaning." Otto Roth & Co., Inc. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 44 (CCPA 1981) citing Canal Co. v. Clark, 80 U.S. 311, 323 (1871). Moreover, "even though something is used as a trademark, if it is not distinctive, the user does not have a trademark because he has no existing trademark rights." Otto Roth, 209 USPQ at 44.
In the present case, the registrant claims that petitioner's mark, THE PROFESSIONAL PORTFOLIO SYSTEM, is merely descriptive of petitioner's services. Petitioner, on the other hand, claims that his mark, as well as registrant's mark THE PROFESSIONAL PORTFOLIO, "are [both] partially and equally suggestive and laudatory." (Petitioner's brief page 10).
A mark is considered descriptive if it directly conveys information concerning, among other things, a function, characteristic, purpose or use of the goods or services. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217 (CCPA 1978). There is agreement between the parties that the generic terms for petitioner's and registrant's products are "portfolio valuation system," "computerized portfolio valuation system" and "computer-based portfolio valuation system." (Petition for cancellation paragraphs 1 and 2; petitioner's brief page 2; petitioner's reply brief page 4). Therefore, petitioner's mark THE PROFESSIONAL PORTFOLIO SYSTEM is, in essence, the generic term "portfolio valuation system" with the addition of the word "professional" and the deletion of the word "valuation." [FN4]
*3 In our view, the presence of the word "professional" in petitioner's mark THE PROFESSIONAL PORTFOLIO SYSTEM serves to further describe petitioner's product, namely, a portfolio valuation system with advanced capabilities designed for and marketed to investment professionals. Mr. Towers testified that there are "lots of different portfolio evaluation [sic] systems" on the market, but "they couldn't do half, they couldn't do one one-hundredth of what [petitioner's] VALPORT could do." (Towers dep. 43).
We recognize that Mr. Towers also testified that the word "professional" in his mark reflected his opinion about his VALPORT product, and further functioned somewhat like THE MARK OF EXCELLENCE and similar phrases used as trademarks. (Towers dep. 60). However, in the same paragraph of his testimony, Mr. Towers stated that his product "is very professional in the way it works." (Towers dep. 60).
Furthermore, we take note of the testimony of Mr. John J. Driver, who is the administrator of petitioner's VALPORT product on behalf of petitioner's sole licensee, Control Data. Control Data distributes petitioner's VALPORT product to the ultimate investment professional users. Mr. Driver stated that the mark THE PROFESSIONAL PORTFOLIO SYSTEM "describes [petitioner's VALPORT product] as a portfolio system. A professional portfolio system, that is a further refinement that tells us what the product does more than the words VALPORT do." (Driver dep. 48).
In our view, the presence of the word "professional" serves to immediately convey information about a function, purpose or characteristic of petitioner's product to prospective purchasers. The information conveyed is that petitioner's product possesses professional capabilities and hence is able to meet the needs of investment professionals.
As for the absence of the word "valuation" in petitioner's mark, while such absence may preclude a finding that the mark THE PROFESSIONAL PORTFOLIO SYSTEM is a generic term for petitioner's product, by the same token, we do not believe that this absence causes petitioner's mark to lose its descriptive characteristics. Apparently, Mr. Towers shares our view. In response to the question--"In your mind does THE PROFESSIONAL PORTFOLIO SYSTEM describe what VALPORT is?"--he replied: "Well, portfolio system clearly does." (Towers dep. 60). See also the testimony of Mr. Driver supra.
While the absence of the word "valuation" from petitioner's mark THE PROFESSIONAL PORTFOLIO SYSTEM results in a mark which does not necessarily inform prospective purchasers that petitioner's VALPORT computer software and related services perform a valuation function on portfolios, said mark nevertheless informs prospective purchasers that petitioner's software and related services assist in the management of portfolios, as opposed to doing one of the thousands of other functions which may be performed by computer software. Cf. In re Analog Devices Inc., 6 USPQ2d 1808 (TTAB 1988), aff'd, No. 89-1029 (Fed.Cir. March 23, 1989).
*4 Finally, we do not believe that the addition of the word "professional" and the removal of the word "valuation" from the generic term "portfolio valuation system" somehow work together to form a result (THE PROFESSIONAL PORTFOLIO SYSTEM) which is not descriptive of petitioner's computer software and related services. As Mr. Driver noted, the resulting combination (THE PROFESSIONAL PORTFOLIO SYSTEM) "describes [petitioner's VALPORT product] as a portfolio system. A professional portfolio system ..." (Driver dep. 48).
Having determined that petitioner's "mark" THE PROFESSIONAL PORTFOLIO SYSTEM is descriptive of petitioner's product, we must now determine whether petitioner's "mark" has acquired a secondary meaning in that it has become primarily a source indicator of products emanating from petitioner, rather than simply a term which primarily describes a function or characteristic of petitioner's product.
In November 1982, petitioner first used THE PROFESSIONAL PORTFOLIO SYSTEM in the manner shown below in connection with his VALPORT Securities Index, which is a list of stocks and bonds and their codes.
VALPORT(R)
"The Professional Portfolio System"
Securities Index
November 30, 1982
Petitioner's VALPORT Securities Index is distributed to his professional investment customers who utilize it to prepare schedules for their clients. The record is not entirely clear as to the number of customers to which petitioner distributed his Securities Index. Part of the uncertainty stems from the fact that petitioner's licensee, Control Data, counts customers by referring to billing units, whereas petitioner counts his customers by referring to end users which he calls "sub-id users." In any event, even using the more expensive "sub-id user" count, it appears that petitioner's "customers" numbered no more than 500.
Prior to registrant's first use of THE PROFESSIONAL PORTFOLIO in December 1983, petitioner had made additional mailing of his Securities Index bearing the "mark" THE PROFESSIONAL PORTFOLIO SYSTEM in the above manner in May 1983, and again in November 1983. Petitioner did not make use of THE PROFESSIONAL PORTFOLIO SYSTEM in connection with any of his other literature prior to registrant's first use of THE PROFESSIONAL PORTFOLIO in December 1983. The other literature on which THE PROFESSIONAL PORTFOLIO SYSTEM did not appear includes petitioner's catalogues, user guides, technical manuals, on-line reports to customers, bills and newsletters.
Not only was petitioner's use of THE PROFESSIONAL PORTFOLIO SYSTEM prior to December 1983 limited to his VALPORT Securities Index, but in addition, it is noted that the use of this term on the Securities Index was in a clearly subordinate fashion as compared to petitioner's primary mark VALPORT. Based on the foregoing, we find that petitioner's limited use of THE PROFESSIONAL PORTFOLIO SYSTEM in a subordinate fashion did not cause this term to acquire a secondary meaning prior to December 1983 when, according to the undisputed facts, registrant had clearly begun to use THE PROFESSIONAL PORTFOLIO (if it had not done so earlier).
*5 Our conclusion is buttressed by the testimony of Mr. Driver, the individual at Control Data who had primary responsibility for marketing petitioner's VALPORT product. At his deposition taken in January 1989, Mr. Driver testified in response to the question--"Do you identify THE PROFESSIONAL PORTFOLIO SYSTEM with VALPORT?"--as follows: "I have always known VALPORT as VALPORT, and I've lived with it since 1973." (Driver dep. 38-39). Moreover, Mr. Driver stated that he was unaware that other employees of Control Data had ever used THE PROFESSIONAL PORTFOLIO SYSTEM in connection with petitioner's VALPORT product. (Driver dep 25). Moreover, Mr. Driver further testified that he was unaware of any calls or letters received by Control Data in which customers expressed interest in THE PROFESSIONAL PORTFOLIO SYSTEM (or simply THE PROFESSIONAL PORTFOLIO). (Driver dep. 21). Mr. Driver's testimony indicates that even as of January 1989, there was no evidence showing that prospective customers associated THE PROFESSIONAL PORTFOLIO SYSTEM with products emanating from the petitioner. Indeed, even employees of Control Data apparently did not make this association.
Inasmuch as the record reflects that petitioner had not acquired trademark rights in his alleged mark THE PROFESSIONAL PORTFOLIO SYSTEM as of the time registrant first used THE PROFESSIONAL PORTFOLIO in December 1983, we hold that petitioner has not established a valid cause of action to cancel the registration of THE PROFESSIONAL PORTFOLIO pursuant to Section 2(d) of the Lanham Act.
In making this determination, we are mindful of the fact that petitioner's alleged mark THE PROFESSIONAL PORTFOLIO SYSTEM and registrant's registered mark THE PROFESSIONAL PORTFOLIO are quite similar and are used for identical types of products. We are also aware that petitioner has noted that registrant seeks "to play both sides of the street" by arguing that its registered mark THE PROFESSIONAL PORTFOLIO is valid, whereas petitioner's purported mark THE PROFESSIONAL PORTFOLIO SYSTEM does not serve as a mark because it has not acquired a secondary meaning. (Petitioner's brief pages 9-10).
However, in this cancellation proceeding, the petitioner has in no way challenged the registration of THE PROFESSIONAL PORTFOLIO on the basis that, as of the time of registration, the term was merely descriptive of registrant's product. Section 2(e)(1) of the Lanham Trademark Act [15 U.S.C. § 1052(e)(1) ]. Indeed, quite to the contrary, petitioner has argued very strongly that both his mark and registrant's mark THE PROFESSIONAL PORTFOLIO are at most suggestive. Because petitioner has not challenged the registration of THE PROFESSIONAL PORTFOLIO on the basis of mere descriptiveness pursuant to Section 2(e)(1), we are obligated to find that this registered mark functions as a trademark, and that it has done so since December 1983, the undisputed first-use date of the mark by registrant. Otto Roth, 209 USPQ at 44.
*6 As previously noted, the only challenge made by petitioner to registrant's registration was on the ground of likelihood of confusion pursuant to Section 2(d) of the Lanham Trademark Act. In order to prevail pursuant to Section 2(d), the petitioner must establish, among other things, prior trademark rights in his own purported mark. Because petitioner herein has failed to do this, the petition for cancellation must be dismissed.
Decision: The petition for cancellation is dismissed. [FN5]
R. L. Simms
E. W. Hanak
Members, Trademark Trial and Appeal Board
FN1. A computer-based portfolio valuation system enables the user to quickly update on a daily basis the values of various individual investments held in particular accounts.
FN2. It is to be noted that on at least one occasion, registrant's mark THE PROFESSIONAL PORTFOLIO has been incorrectly referred to as THE PROFESSIONAL PORTFOLIO SYSTEM which, of course, is the identical mark of which petitioner claims ownership. See the February 1989 issue of Wall Street Computer Review.
FN3. While Mr. Towers' testimony concerning instances of actual confusion is sketchy--and hence is to be accorded limited weight on this basis alone--his testimony does not constitute hearsay. See Armco Inc. v. Armco Burglar Alarm Co., Inc., 693 F.2d 1155, 217 USPQ 145, 149 (5th Cir.1982) and Mustang Motels, Inc. v. Patel, 226 USPQ 526, 527 (C.D.Cal.1985).
FN4. In this case, the presence of the word "the" in petitioner's mark neither adds to nor subtracts from the descriptive character of the mark.
FN5. In view of our holding that petitioner has not established trademark rights in THE PROFESSIONAL PORTFOLIO SYSTEM, we need not consider registrant's affirmative defense of laches. Goldring, Inc. v. Towncliffe, Inc., 234 F.2d 265, 110 USPQ 284, 285 (CCPA 1956). See also 1 J. McCarthy Trademarks and Unfair Competition, § 20:20 at pages 1071-1072 (2d ed. 1984).