Trademark practitioners will encounter a 2(d) Refusal (refusal due to a likelihood of confusion with a prior trademark registration) or a Notice of Opposition sooner or later in their practice. The case of Embarcadero Technologies, Inc. v. RStudio, Inc., 105 USPQ2d 1825 (TTAB 2013) [Precedential], reminds practitioners and applicants alike that the outcome of a 2(d) refusal or of an Opposition may be favorable if the Applicant is able to narrow its identification in such a manner as to avoid a likelihood of confusion with a prior registered mark or a senior user. A defendant may assert an affirmative defense by moving to restrict its goods and services.
Here, the applicant filed three applications for RSTUDIO in standard character format in International Classes 9, 41, & 42, for the following goods and services: computer software for statistical computing; computer software for software applications development; providing training in the use of computer software; providing training in the use of statistical methods; application service provider, computer software consultation, design and development of software; and technical support services. The Opposer filed a Notice of Opposition based on the grounds of priority and likelihood of confusion. Its registration is for ER/STUDIO in standard character format for entity relationship modeling software for SQL databases.
Before discovery closed, Applicant filed a motion to amend the application to narrow his identifications (limit his description of the goods and services). Under the Lanham Act Section 18, the Board is given equitable power to restrict the goods or services in a trademark application or registration. See 15 U.S.C. §1068, and TBMP 311.02(b). The current description of the Applicant’s goods is relatively broad. From a reading of the goods in International Class 9 it is presumed that the software incorporates all types of statistical computing software. Similarly the software design, development and training services are broad enough to include all types of software design, development and training, including those described in Opposer’s registration. However, based on the proposed modification to the identification, Applicant will narrow the descriptions to the field of “advanced” statistical software using the “R” computer software language.