UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF NEW HAMPSHIR E

PRO TRAK INTERNATIONAL, INC ., )

)

Plaintiff, )

)

v. )

)

)

PROTRACKER SOFTWARE, INC .

)

Defendant. )

Civil Action No. C-05-342-JM

CORRECTED MEMORANDUM IN SUPPORT OF DEFENDANT'S

MOTION FOR SUMMARY JUDGMENT

Case 1:05-cv-00342-JM Document 28 Filed 09/11/06 Page 1 of 30
TABLE OF CONTENT S

INTRODUCTION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I

A. Statement of Material Facts . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1

1 . ARGUMENT . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4

A. The Law of Summary Judgment . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4

B. The Plaintiff's Unreasonable, Inexcusable Delay in Bringing This Suit and

the Resulting Severe Prejudice to Defendant Bars Plaintiff From Any Relief . . . 5

1 . The Doctrine of Laches . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5

2. Plaintiff Knew or Should Have Known of the Alleged Infringement i n

July 1998, SEVEN Years Before Filing Suit. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6

3. Plaintiff Has No Excuse for Delaying Taking Any Action for Seven (7)

Years From When It Knew or Should Have Known of the Alleged

Infringement. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7

4. Defendant Would Be Severely Prejudiced If Plaintiff Were Allowe d

Now To Enforce its Purported Rights . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7

C. There Is No Likelihood Of Confusion Between the Parties' Names

and Marks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .9

1 . The Parties' Goods Are Very Different. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10

2. Channels Of Trade, Advertising , And Class Of Prospective Purchasers . . . . . . 13

3. Evidence of Actual Confusion . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17

4. Intent In Adopting The Mark . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19

5. Strength Of Mark . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 20

6. The Marks Are Different. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2 1

D. Pro Trak's Asserted U .S. Reg. No. 1,835,278 Should Be Cancelled . . . . . . . . . . . . 22

II. CONCLUSION. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 25

Case 1:05-cv-00342-JM Document 28 Filed 09/11/06 Page 2 of 30
TABLE OF AUTHORITIES

Cases

AFL-CIO v. Winship Green Nursing Center, 103 F.3d 196, 200 (1st Cir. 1996). . . . . . . . . . . . . . . . . . . . . . . . . . . . 9

Aktiebolaget Electrolux v . Armatron Int'l, Inc., 999 F .2d 1, 5-6 (1st Cir. 1993) . . . . . . . . . . . . . . 10, 13, 18

American Steel Foundries v. Robertson, 269 U.S . 372 (1926) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9,23

Anderson v. Board of Regents of the Univ . of Wisconsin Sys., 140 F .3d 704 (7th Cir. 1998) . . . . . . . . . 5

Anderson v. Liberty Lobby, Inc., 477 U.S . 242, 255 (1986) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4,5

Anheuser-Busch, Inc. v. L & L Wings, Inc., 962 F.2d 316, 320 (4th Cir. 1992). . . . . . . . . . . . . . . . . . . . . . . . . . . . 13

Ayala-Gerena v. Bristol Myers-Squibb Co ., 95 F.3d 86, 94 (1st Cir. 1996) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4

Bridgestone/Firestone Research, Inc. v. Auto. Club de l'Ouest de la France, 245 F.3d 1359,

1362, 1364 (Fed. Cir. 2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5

Carroll v. Xerox Corp ., 294 F.3d 231, 236-237 (1st Cir. 2002) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5

Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4

E-Systems, Inc. v. Monitek, Inc., 720 F.2d 604, 607 (9th Cir. 1983) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5, 7

Greenlon, Inc. of Cincinnati v. Greenlawn, Inc ., 542 F. Supp. 890, 893 (S.D. Ohio 1982) . . . . . . . . 23

Irwin v. Dept. of Veteran Affairs, 498 U.S. 89, 92 (Dec. 1990) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6,7

Keebler Co. v. Rovira Biscuit Corp., 624 F.2d 366, 377 (lst Cir. 1980) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18

Link v. Wabash Railroad Co ., 370 U.S . 626, 634 (June 1962). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6

Marshak v. Green, 746 F.2d 927, 929 (2°d Cir. 1984) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23

Miller v. Glenn Miller Productions, Inc ., 2006 U.S. Ex. LEXIS 18072 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5

New Era Publications Int'l v. Henry Holt & Co ., 873 F.2d 576, 584-85 (2d Cir. 1989) . . . . . . . . . . . . . . . . 5

Pignons S.A . De Mecanique De Precision v . Polaroid Corp., 657 F.2d 482, 487

(Ist Cir. 1981) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18,21

Sanchez v. Oregon, 126 S. Ct. 2669, 2686 (June 2006) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6

11

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Societe des Produits Nestle, S.A. v. Casa Helvetia, Inc., 982 F.2d 633, 641 (1s` Cir. 1992) . . . . . . . . . . 9

Star Fin. Servs., Inc. v . AASTAR Mortgage Corp., 89 F.3d 5, 10 (1s` Cir.) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9

Stone v. Williams, 873 F.2d 620, 624 (2d Cir. 1989). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9

Tandy Corp. v. Malone & Hyde, Inc., 769 F.2d 362, 366 (6`h Cir. 1985). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5

The International Association of Machinists and Aerospace Workers, AFL-CIO v . Winship

Green Nursing Center, 103 F.3d 196, 200 (ls` Cir. 1996) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9, 10, 1 8

The Joint Stock Society v . The Russian American Spirits Co ., 53 F. Supp. 2d 692 (D. Del. 1999) 8

United Drug Co . v. Theodore Rectanus Co ., 248 U.S. 90 (1928) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23

Rules

Fed. R. Civ. P. 56(c) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4

Statutes

15 U.S.C. §1060 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23

15 U.S.C. §1119 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 25

ui

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INTRODUCTION

This is a trademark infringement case . Summary judgment should be granted in favor of

Defendant ProTracker Software, Inc . ("Defendant") on three issues: (1) Plaintiff's inexcusable

delay and the resulting severe prejudice to Defendant bars Plaintiff from obtaining any relief in

the case; (2) there is no likelihood of confusion between the parties' names and marks ; and (3)

the federal trademark registration asserted by Plaintiff is invalid and should be cancelled .

Plaintiff waited seven (7) years before bringing suit, a delay that would severely

prejudice Defendant if Defendant were now ordered to change its name and marks. Additionally,

there is no likelihood of confusion because the parties use different marks, have different

products, market to different potential customers, and use different channels of trade . Further,

there has been no, or at most de minimis, actual confusion during the nine (9) years of concurrent

use of the marks. Finally, the federal trademark registration asserted by Plaintiff is invalid, as

there was no goodwill associated with the mark when assigned to Plaintiff and the registration

should be cancelled .

A. Statement of Material Facts

Defendant was created by Warren Mackensen, a Certified Financial Planner (CFP), in the

mid-1990's when he was looking for a better way to manage his own financial planning

business. Ex. A 14, 91 . In particular, he wanted software that would automate repetitive tasks,

track work flow processes, perform calculations and enable others in his office to track the status

of matters and to remind them when they should do something for a client . Ex. A 15. Mr.

The exhibits, affidavits and deposition transcripts cited herein are contained in Defendant' s Appendix of Materials

("Appendix "), submitted herewith. Affidavits cited herein are cited by the appropriate lettered reference in the

Appendix , followed by relevant paragraphs (e.g., "Ex . A y[ 4, 9"). Exhibits cited herein are cited by the appropriate

lettered reference in the Appendix followed by relevant pages (e.g., "Ex. Q, 2"). Deposition transcript excerpts cited

herein are cited by the appropriate lettered reference in the Appendix , followed by the relevant pages (e .g ., "Ex. D,

3, 30").

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Mackensen learned there was no such product available and took the initiative to develop his

own practice management software . Ex. A 16. In 1996, Mr. Mackensen demonstrated his

software at a financial planners conference, encouraging other financial planners to develop

similar software . Ex. A 17. Instead, they clamored to purchase his software. Ex. A 18. In 1997,

after much thought, Mr. Mackensen incorporated ProTracker Software, Inc., to develop, market

and license PROTRACKER SYSTEM, his software for personal financial advisors . Ex. A 19.

ProTracker Software, Inc ., was based out of Mr. Mackensen's house for the first three

years of its existence. Ex. A 19. Although now moved out of Mr. Mackensen's house, Defendant

still operate as a small New Hampshire-based company with just three full-time employees . Ex.

A 1 2. Over time, Defendant has expanded its business to offer several products for financial

planners, such as PROTRACKER Compliance Manual and PROTRACKER Business Continuity

Plan, with the core product remaining the practice management tool developed ten (10) years

ago . Ex. A 1 24. All Defendant's products are for personal financial advisors . Ex. A I 11, 13.

Defendant has plans to release additional software for personal financial advisors in the near

future. Ex. A 1 24.

Since 1997, Defendant built up and established its business and reputation, spending

considerable effort, resources and money to do so. Ex. A 156. Defendant attended numerous

conferences across the country, gave lectures, ran booths at trade shows, marketed and advertised

its products, all to promote its name, mark and products . Ex. A 1 13-15.

PROTRACKER SYSTEM was enhanced and improved, and Defendant changed the

name to PROTRACKER ADVANTAGE in 2003, using a laudatory term in the product name to

tout a new graphical user interface and the benefits that the product provides to its users . Ex. A 9[

17. The U. S. Trademark Office determined that the mark was unique and not likely to caus e

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confusion with any other registered mark or pending application and awarded Defendant U .S.

Trademark Reg. No. 3,038,202 for the mark PROTRACKER ADVANTAGE . Ex. Q, 2 .

Defendant has always focused its product line and product marketing to a very narrow

market - personal financial advisors . Ex. A 113 . These personal financial advisors are typically

self-employed or working in a small office of, on average, three users. Ex. A I 11 . The personal

financial advisors may be independent or part of a larger organization, but all of the users of the

Defendant's products service clients comprising individual retail clients, typically a single

person, a couple or sometimes, a family . Ex. A I 11 .

Defendant's PROTRACKER ADVANTAGE practice management software provides its

users with a comprehensive tool to manage their entire practice, guiding them through many preprogrammed tasks personal financial advisors should engage in when servicing clients . Ex. A 1

19. PROTRACKER ADVANTAGE provides the necessary forms, timetables, calculations and

reports for a personal financial advisor, enabling the user to effectively run a personal financial

advising practice without having to create anything himself. Ex. A 1 19-20.

Defendant's product is unique. There is only one other product that performs similar

tasks to Defendant's PROTRACKER ADVANTAGE product, "Junxure," sold by a third party .

Ex . A 123 . PROTRACKER ADVANTAGE and Junxure are the only available products that

target the personal financial advisor practice management market by providing a comprehensive

industry-specific practice management tool. Ex. A 123.

Plaintiff Pro Trak International, Inc . ("Plaintiff') is a New York-based corporation that

licenses customer relationship management ("CRM") software to institutional investment clients .

Ex . D, 3, 30. One of the primary features of Plaintiff's product is that it downloads and integrates

third-party data about potential customers . Ex. D, 22. This data is used to solicit new busines s

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and manage their relationships with existing customers. Ex . D, 21-22. Plaintiff's product does

not include pre-programmed tasks for managing a personal financial advising practice, and does

not provide the forms, timetables, calculations or reports for a personal financial advisor needs to

manage a personal financial advising practice. Ex . D, 148-160 . Thus, personal financial advisors

would not select Plaintiff's product to manage their personal financial advising practice . In fact,

no personal financial advisor has ever purchased Plaintiff's product. Ex. D, 100.

Although Defendant has been openly and widely using its name and marks since May

1997, Plaintiff did not contact Defendant to complain of Defendant's use of its name and marks

until June 2005. Ex. A 1 27 . As set forth below in more detail, Plaintiff knew of Defendant, its

products and its name and marks as early as July 1998 . Ex. F, 1-2 . At that time, Plaintiff obtained

through its attorney a trademark search report disclosing the existence of Defendant and its

marks. Ex. E, 4-5. Despite having at least constructive knowledge of Defendant and its marks,

Plaintiff did nothing for seven (7) years . Ex. F, 1-2 ; Ex. A 127.

1 . ARGUMENT

A. The Law of Summary Judgment

Summary judgment should be granted when there is no genuine issue of material fact and

the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c) ; Celotex Corp.

v. Catrett, 477 U.S. 317, 322 (1986). A genuine issue of material fact exists where a fact that

may affect the outcome of the suit may be resolved in favor of either party. Anderson v. Liberty

Lobby, Inc., 477 U.S. 242, 250 (1986). The moving party must identify the portions of the record

"which it believes demonstrate the absence of a genuine issue of material fact ." Celotex 477 U.S.

at 323. The opposing party then has the burden to "produce evidence on which a reasonable

finder of fact, under the appropriate proof burden, could base a verdict for it; if the party cannot

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produce such evidence, the motion must be granted." Ayala-Gerena v. Bristol Myers-Squibb Co.,

95 F.3d 86, 94 (1st Cir. 1996) (citing Celotex, 477 U.S. at 323 ; Anderson, 477 U.S. at 249). All

reasonable and justifiable inferences must be drawn in the light most favorable to the opposing

party and any doubt must be resolved against the moving party . Anderson, 477 U.S. at 255.

Summary judgment cannot be defeated by conclusory allegations, improbable inferences, or

unsupported speculation . Carroll v. Xerox Corp ., 294 F.3d 231, 236-237 (I't Cir. 2002).

B. The Plaintiff's Unreasonable, Inexcusable Delay in Brin 2in2 This Suit and the

Resultin2 Severe Preludice to Defendant Bars Plaintiff From Any Relie f

1. The Doctrine of Laches

The doctrine of laches bars enforcement of a plaintiff's rights when it has unreasonably

delayed their assertion so as to cause prejudice to the opposing party . Anderson v. Board of

Regents of the Univ . of Wisconsin Sys., 140 F.3d 704 (7th Cir. 1998). In the context of a

trademark case, laches may be applied to bar both injunctive relief and damages. See Tandy

Corp. v. Malone & Hyde, Inc., 769 F.2d 362, 366 (6th Cir. 1985). To prove the defense of laches,

the defendant must show that (1) plaintiff knew or should have known of the allegedly infringing

activity; (2) plaintiff inexcusably delayed in taking action ; and (3) defendant would be

prejudiced if plaintiff were now allowed to belatedly assert its alleged rights . New Era

Publications Int'l v. Henry Holt & Co ., 873 F.2d 576, 584-85 (2d Cir. 1989) (laches barred

plaintiff from enjoining publication of biography when there was severe prejudice and

unconscionable delay in seeking relief) ; Miller v. Glenn Miller Productions, Inc ., 2006 U.S. Ex.

LEXIS 18072 (Plaintiff who "should have known" of defendant's allegedly infringing activity is

deemed to have constructive knowledge); see also E-Systems, Inc . v. Monitek, Inc ., 720 F.2d

604, 607 (9`h Cir. 1983) (laches barred trademark infringement even though the plaintiff did not

have actual knowledge of the defendant's activities until the year of suit, as the plaintiff shoul d

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have discovered defendant's use sooner) ; Bridgestone/Firestone Research, Inc. v. Auto. Club de

l'Ouest de la France, 245 F.3d 1359, 1362, 1364 (Fed. Cir. 2001) (petition for cancellation of a

registered trademark was barred by the doctrine of laches based on the petitioner's constructive

knowledge); 5 J. McCarthy, on Trademarks § 31 :38 (4th ed . 1996) (laches requires determining

when the plaintiff was "actually or constructively on notice of defendant's activities") .

2. Plaintiff Knew or Should Have Known of the Alleged Infringement in July

1998 SEVEN Years Before Filing Suit

Plaintiff had at least constructive knowledge of the existence of Defendant and its use of

its names and marks at least as early as July 1998. Plaintiff through its attorney, Ralph Wood,

conducted a full trademark availability search for the mark PROTRAK for the goods "computer

software" in July 1998. Ex. E, 4-5 . Plaintiff's attorney received and kept a copy of the report

covering a variety of sources, including Trademark Office records . Ex. E, 4-5. Defendant had

applied for a trademark registration for the mark PROTRACKER SYSTEM in 1997, and

therefore, Defendant's name, applied-for mark, and details surrounding Defendant's application

were in the Trademark Office database and included in the search report. Ex. F, 1-2. Plaintiff's

attorney reviewed and maintained the search report, and thus had notice and at least constructive

knowledge of Defendant . Ex. E, 4-5 . In fact, Plaintiff used this search report to gather

information about, Marmen Computing, Inc . ("Marmen") who owned a trademark registration

for the mark PROTRAK. Ex. E, 7-8. Plaintiff sought an assignment of the mark PROTRAK and

the registration thereof. Ex. G, 1 .

Whether Plaintiff itself reviewed the report and had seen Defendant's information in the

report does not matter, for the knowledge of its attorney, its agent, is imputed to Plaintiff. See

Sanchez v. Oregon, 126 S. Ct. 2669, 2686 (June 2006) (an attorney's actions or omissions are

imputed to the client) ; Irwin v. Dept. of Veteran Affairs, 498 U.S . 89, 92 (Dec . 1990); Link v.

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Wabash Railroad Co., 370 U.S. 626, 634 (June 1962). Despite knowing about Defendant's

existence and its use of the names and marks PROTRACKER, PROTRACKER SOFTWARE

and PROTRACKER SYSTEM since July 1998, Plaintiff inexcusably failed to take any action

until June 2005, over seven (7) years later.

3. Plaintiff Has No Excuse for Delaying Taking Any Action for Seven (7) Years

From When It Knew or Should Have Known of the Alleged Infringement

Despite its knowledge of Defendant and its alleged infringement since July 1998 ,

Plaintiff did nothing for seven (7) years, until June 2005, when it sent a letter to Defendant . Ex.

A 1 27 ; Ex. F, 2 . The only excuse Plaintiff can offer for this unreasonable delay is that it did not

have actual knowledge of Defendant or its alleged infringement 2

As discussed above, Plaintiff had notice and at least constructive knowledge and that is

all the law requires . E-systems, 720 F .2d at 607. The undisputed fact is that Plaintiff's lawyer, at

Plaintiff's instruction, ordered and obtained a full trademark search report, which fully identified

Defendant and its activities. Ex. E, 4-5 . The search report was studied by Plaintiff' s

attorney/agent, and knowledge of its contents is imputed to Plaintiff. Irwin, 498 U.S. at 92.

4. Defendant Would Be Severely Prejudiced If Plaintiff Were Allowed Now To

Enforce its Purported Rights

During the seven (7) years that Defendant existed and operated with Plaintiff's

knowledge, Defendant developed a significant market for its company and its product . Ex . A 9[

13. Defendant advertised and became well known throughout the personal financial advisor

community. Ex. A 113. Since 1997, Defendant spent considerable resources developing its

stellar reputation and goodwill . Ex . A 113 . Mr. Mackensen traveled around the country giving

presentations for Defendant at trade shows and conferences customarily attended by personal

z

If that is Plaintiff s excuse, it shows that there is no likelihood of confusion, because Plaintiff allegedly was not

aware of Defendant for eight (8) years of continuous, concurrent uses of the parties' respective names and marks .

Within that entire time, there were no confused customers that brought Defendant to Plaintiffs attention .

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financial advisors, presenting at as many as ten trade shows per year. Ex. A 113. Defendant

advertised in the trade journal NAPFA Advisor. Ex. A 113 . In 1998, Defendant established, and

has continuously updated, a very robust and user-friendly web site at www .protracker.com. Ex.

A 113. Defendant spent a significant amount of time and money marketing its names and marks

to its potential customers. Ex. A 113. Defendant's entire identity, its very ability to survive, is

now tied to the use of its names and marks it has developed since 1997 . Ex . A 116. If Defendant

were forced to change its names and marks, Defendant's customers and potential customers

would likely believe Defendant had gone out of business, and would not purchase any additional

goods or services from Defendant, resulting in the likely end of Defendant's business . Ex. A 1

16. This is an extremely severe prejudice Defendant would suffer as a result of Plaintiff sitting

on its purported rights for seven years .

Both monetary damages3 and an injunction would severely and unfairly prejudice

Defendant, especially because of Plaintiff's inexcusable and unreasonable delay of seven (7)

years. Laches serves to bar both monetary and injunctive relief in the face of an inexcusable

delay in bringing suit that results in severe prejudice to the defendant . The Joint Stock Society v.

The Russian American Spirits Co., 53 F. Supp. 2d 692 (D. Del. 1999). Defendant is very small,

with only three (3) full-time employees. Ex. A 1 2 . During the seven (7) year period when

Plaintiff knew of Defendant, but did nothing, Plaintiff sat back and allowed Defendant to spend

its meager resources developing its name, goodwill and positive reputation within the

community. Plaintiff has created a situation where Defendant would be severely prejudiced if it

were now to be required to stop using its marks PROTRACKER, PROTRACKER .COM, and

PROTRACKER ADVANTAGE .

3 Here, Plaintiff admits that it has not been damaged as a result of Defendant's use of its name and mark . Ex. D 105.

Thus, there are no monetary damages to award .

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The purpose of the laches doctrine is to not reward a party that sits on its purported rights.

Granting an injunction in this case would wrongfully reward Plaintiff for doing nothing for seven

(7) years. The longer the delay without a good reason, the less prejudice to the Defendant that

needs to be demonstrated . Stone v. Williams, 873 F.2d 620, 624 (2d Cir. 1989) (laches was

granted where a delay for six years without a reason required defendants to show little

prejudice). Here, the Plaintiff delayed without any reason for seven (7) years, resulting in an

extreme prejudice to the Defendant.

This Court should bar both monetary and injunctive relief to Plaintiff because of

Plaintiff's inexcusable and unreasonable delay and severe prejudice suffered by Defendant if

Plaintiff could now assert its purported rights . Because of Plaintiff's laches, summary judgment

on each count of the Amended Complaint should be entered in favor of Defendant, barring any

and all relief to Plaintiff.

C. There Is No Likelihood Of Confusion Between the Parties' Names and Marks

The Lanham Act provides that the unauthorized use of a trademark occurs when the

particular usage causes a likelihood of confusion with respect to the identity of the trademark

owner. The International Association of Machinists and Aerospace Workers, AFL-CIO v .

Winship Green Nursing Center, 103 F.3d 196, 200 (1s` Cir. 1996) ; see also Societe des Produits

Nestle, S.A. v. Casa Helvetia, Inc., 982 F.2d 633, 641 (1 s' Cir. 1992) (explaining that only those

trademarks that are likely to cause confusion are prohibited). Likelihood of confusion is typically

the dispositive inquiry in a Lanham Act case. Id. Plaintiff's state law claims mirror the Lanham

Act claims and can be ruled upon in favor of Defendant for the same reasons set forth herein .

To prove likelihood of confusion, a trademark owner "must show more than the

theoretical possibility of confusion." Int'l Ass'n of Machinists 103 F.3d at 200 ; see also

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American Steel Foundries v. Robertson, 269 U.S . 372, 382 (1926) (requiring probable

confusion) ; Star Fin. Servs., Inc. v. AASTAR Mortgage Corp., 89 F.3d 5, 10 (ls` Cir.) (requiring

evidence of a substantial likelihood of confusion) ; 3 J. McCarthy, McCarthy on Trademarks and

Unfair Competition §23.01[3][a] (4eh ed. 1996). When assessing likelihood of confusion, eight

factors are considered and analyzed in the First Circuit : (1) the similarity of the goods; (2) the

relationship between the parties channels of trade; (3) the juxtaposition of their advertising ; (4)

the classes of prospective purchasers; (5) the evidence of actual confusion ; (6) the defendant's

intent in adopting its allegedly infringing mark ; (7) the strength of the plaintiff's mark; and (8)

the similarity of the marks. Aktiebolaget Electrolux v. Armatron Int'l, Inc ., 999 F.2d 1, 5-6 (1s`

Cir. 1993) ; Int'l Ass'n of Machinists, 103 F.3d at 201. Typically, factors two through four are

treated together. Aktiebolaget, 999 F .2d at 5.

In analyzing the eight factors for determining likelihood of confusion, no one individual

factor is determinative. Int'l Ass'n of Machinists, 103 F.3d at 201 . Rather, each factor must be

carefully considered and appropriately weighed . Aktiebolaget, 999 F.2d at 4-5. Each factor, as

analyzed below, and the overall cumulative effect of the analysis, conclusively demonstrates that

there is no likelihood of confusion between the parties' respective names and marks .

1. The Parties ' Goods Are Very Different

The parties' goods are very different. Defendant's product is a practice management

product for personal financial advisors . Ex. A I 11 . A "personal financial advisor" is one who

advises and services an individual client (typically an individual person, a married couple or

sometimes a family unit). Ex. A 9[ 11 . This is different from Plaintiff's customers, who are

"institutional" investment advisors who advise mutual funds, hedge funds, and endowments,

such as for universities and the like. Ex. D, 51-52 ; Ex. A 129. Plaintiff does not have aU

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customers who are personal financial advisors . Ex. D, 100. Another major difference between

the two types of advisors is the amount of money managed . The typical personal financial

advisor might have an average of $ 100 million of assets under management ; the typical

institutional investment advisor often will have billions of dollars in assets under management .

Ex . A 1 12, 29 . The tasks each type of advisor needs to undertake to service their respective

clients are very different. Ex. A 119.

Defendant's product provides a personal financial advisor with all of the tools necessary

to run a successful personal financial advising practice. Ex. A 119 . The software, as licensed,

out-of-the-box, is completely ready for a personal financial advisor to use to run his practice . Ex.

A 1 19-20. The product includes all of the tasks, tables and information aggregation needed for

effective practice management. Ex. A 119. Additionally, Defendant's product includes a series

of pre-created standard reports for practice management, including client management and

reports that may be needed for example, during a U . S. Securities and Exchange Commission

("SEC") audit. Ex. A 1 19-20.

Defendant's product also performs various calculations needed, to service clients who are

individuals, such as those necessary to determine net worth, withdrawal rate, and Required

Minimum Distributions ("RMDs"). Ex. A 119. For example, RMDs are distributions the federal

government requires investors take from IRAs, 401(k) plans and the like when the investor

reaches age 70%2 . Ex. A 119. It is important to take an RMD, or there are significant adverse tax

consequences to the investor . Ex. A 119. Some investors, desire to minimize the amount they

take each year as a distribution, maximizing what they can pass on to their heirs . RMD

calculations are only necessary for individual investors. RMDs have no impact on institutional

investors, as they are not subject to any such distribution rules. Ex. A 119 .

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Plaintiff's product, on the other hand, is customer relationship management software for

institutional investors . Ex. D, 51 . As noted, institutional investors include investment companies

that manage large-scale investments for institutional investors, such as pension or 401(k) fund

programs. Ex. D, 51-52 . One of the main selling points of Plaintiff's products is that it manages

third- party directory information. Ex. D, 21-22. Various third parties, such as Standard & Poor's

Money Market Directory of Pension Funds, and Nelson's Plan Sponsors / Consultants, provide

information about institutional investors, including contact information, amount of money

available to be managed, and other information that would enable a money manager to make a

sales pitch to the institutional investor. Ex. D, 21-22. This information may be downloaded using

Plaintiff's product from electronic service providers and imported into Plaintiff's product . Ex. D,

22. Plaintiff's product provides a sophisticated level of customer relationship management

features, making it a very good contact manager. Ex. H, 1. It allows a user to track contact

communications, whether email, phone logs, letters, or the like, that the user had with a contact .

Ex . H, 1 . It is also customizable, either by Plaintiff or its users, to perform various tasks. Ex . D,

142-143.

What Plaintiff's product cannot do, however, is provide practice management for

personal financial advisors to enable a user to run a personal financial advisor's office as

Defendant's product does . Ex. D, 148-160. In fact, no personal financial advisors have used

Plaintiff's product to set up and run their practice . Ex. D, 100. Plaintiff's product has no preprogrammed tasks, it has very few pre-formatted reports, and does no calculations of interest to

the personal financial advisor. Ex. D, 148-160. For example, Plaintiff's product does not

calculate net worth, withdrawal rate or RMDs . Ex. D, 148-160 . It does not have pre-formatted

reports that a personal financial advisor must provide to the SEC during an audit . Ex. D, 58 . It is

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not a product that any personal financial advisor would want to use to mange their practice, as

Defendant's product is.

Plaintiff's product is apparently customizable. Ex. D, 142-143. Plaintiff asserts that it or

its users could change Plaintiff's product to provide the functionality offered by Defendant's

product. Ex. D, 142-143 . However, this is irrelevant. First, it would be very burdensome to make

the changes in Plaintiff's product to provide the functionality already available in Defendant's

product. Second, the level of expertise required to make such changes is far beyond most users.

Third, prospective customers would not pay for such changes to force Plaintiff's product to do

what Defendant's product does out-of-the-box . Fourth, as a matter of law, that is not relevant,

because the test for the similarity of the products is as-sold, not how one of the products could be

modified to make it more like the other. Anheuser-Busch, Inc. v. L & L Wings, Inc., 962 F .2d

316, 320 (4th Cir. 1992) (must look at the product as-sold in the marketplace).

While Plaintiff now asserts that Defendant is a competitor, the reality is otherwise . The

only product that is truly a competitor to Defendant, Junxure, is not considered by Plaintiff to be

competitive with Plaintiff's product. Ex. A 123. If Defendant's competitor is not a competitor of

Plaintiff, then logically, Defendant cannot possibly be a competitor of Plaintiff either. Further,

Plaintiff asserts in litigation that it was not aware of Defendant until late 2004 . Ex. D, 14. If that

is the case, then how could the parties be competitors, and Plaintiff did not even know of

Defendant for seven years ?

Because of these significant differences between the goods, this factor weighs heavily in

favor of Defendant.

2. Channels Of Trade, Advertising, And Class Of Prospective Purchasers

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The channels of trade, advertising, and class of prospective purchasers are all interrelated

and thus are typically analyzed together in the First Circuit. See e.g. Id. at 488 ; Aktiebolaget, 999

F.2d at 5. Significant differences exist between the channels of trade, relationship of advertising,

and prospective purchasers of the parties . This only makes sense, as the parties' products

themselves are so different. As noted above, Plaintiff's product is targeted to institutional

investors such as companies running pension, 401(k), or hedge funds . Ex. D, 51-52 . No personal

financial advisors have used Plaintiff's product to set up and run their practice . Ex. D, 100.

Plaintiff's product is a CRM product designed to help the user manage information about

contacts. Ex. D, 30. Defendant's product, on the other hand, is targeted to personal financial

advisors whose clients are individual investors . Ex. A 111 . The purpose of Defendant's product

is to streamline and increase the efficiency of the overall practice management for personal

financial advisors. Ex. A 1 21. Defendant has never sold its product to institutional money

managers such as companies operating hedge funds, pensions or 401(k) funds .

The parties market and advertise to very different groups of potential consumers, as very

different groups of potential consumers will want to purchase their respective products, because

the products perform such different functions . Defendant markets to personal financial advisors .

Defendant's most significant marketing vehicle is through the National Association of Personal

Financial Advisors ("NAPFA") and the Financial Planning Association ("FPA") conferences and

trade shows, where Defendant makes presentations and has exhibits and booths promoting its

products . Ex. A 113. Plaintiff, on the other hand has never exhibited at nor ever considered

exhibiting at a NAPFA or FPA conference . Ex. D, 32 . Plaintiff markets its product to

institutional investors . Ex. D, 30. When Plaintiff does attend conferences, it attends conferences

sponsored by the Association of Investment Management Sales Executives ("AIMSE") and th e

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Case 1:05-cv-00342-JM Document 28 Filed 09/11/06 Page 18 of 30
Professional Association for Investment Communication Resources ("PAICR") . Ex. D, 32.

Defendant has never attended nor considered attending an AIMSE or PAICR conference . Ex. A 9[

15. Not surprisingly, the parties have never appeared at the same trade show. Ex. D, 32.

Defendant occasionally advertises in NAPFA Advisor, a trade journal aimed at personal

financial planners, and obtains positive third-party reviews and word of mouth . Ex. A 113 .

Defendant has never used or considered using a direct mail or email marketing program . Ex. A 9[

15. Defendant relies heavily on its web site to disseminate information about itself including

demos showing details of how its products work. Ex. A 113. Defendant has never purchased

keyword ads from Google or other search engines. Ex . A 1 15.

Plaintiff uses different advertising and marketing methods than Defendant. Plaintiff

primarily markets through Internet advertising, purchasing Google® keyword ads, and engaging

in significant direct mail and e-mail programs several times each year . Ex. D, 32, 38 .

The purchasers of the parties' respective products are sophisticated customers who will

conduct a significant amount of research when determining whether to purchase one of the

parties' products . The products are not impulse items purchased in the checkout line at the

grocery store. Typically, each party's prospective customer will have many conversations with

the party prior to purchasing the product, attempting to ascertain the potential uses and

advantages of the product and how it may integrate into their business. Ex. D, 41-42 . This is

especially true for Plaintiff, whose product is significantly customizable, unlike Defendant's

product, which is far less customizable . Ex . D, 142-143 . Additionally, Plaintiff uses a web-based

demo that works live in real-time with a Plaintiff sales representative, explaining the uses and

functionality of Plaintiff's software. Ex. D, 42. Potential customers of each party will clearly

understand the product and its source through these conversations and demonstrations.

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Both products are expensive, further causing potential customers to be very careful when

making their purchasing decisions . Additionally, there is a great difference in price between the

parties' respective products. Plaintiff's product is far more expensive than Defendant's product .

The current license fee for Plaintiff's product for five users is $33,500, or about $6,700 per user .

Ex . D, 100. The current license fee for Defendant's product is $900 for the first user and $450

for each additional user within the same office thereafter . Ex. A 125. Thus, for five users,

Defendant's product would cost $2,700, less than one-twelfth the price of Plaintiff's product. Ex .

A 9[ 25 ; Ex. D, 100.

Any customer who may spend thousands of dollars on software will approach the

decision very carefully, investigating all aspects of the product and its source . Indeed, Plaintiff

fields calls from up to three or more persons within a potential customer's organization prior to

purchase. Ex. D, 41-42 . An assistant may make the initial contact, next a potential user, followed

by someone from the potential customer's Information Technology (IT) department. Ex. D, 42 .

On the other hand, many of Defendant's customers are very small businesses that do not even

have an IT department. Ex. A I 11 . The personal financial advisor himself will call Defendant to

investigate. Ex . A 1 22 .

Because Defendant's product is intended to manage the practice of its users, the personal

financial advisor, these potential customers will proceed very cautiously and carefully before

making a purchase decision . Ex . A 1 22 . Defendant's potential customers are far more cost

conscious than Plaintiff's potential customers, and are very reluctant to pay even the lower price

Defendant charges. Ex. A 125. If they were being charged close to the $6,700 per user of

Plaintiff's customers, Defendant's customers would not purchase the product. Ex. A 125 . Thus,

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Case 1:05-cv-00342-JM Document 28 Filed 09/11/06 Page 20 of 30
Defendant's potential customers would be very aware of who they were dealing with based on

the price of the respective products.

To actually obtain a copy of Plaintiff's product, the licensee must sign a written

agreement. Ex. D, 64. Plaintiff's agreement specifically identifies the parties to the agreement,

including Plaintiff as the licensor. Ex. D, 64 . Any issue as to source of the product would

certainly have been clarified by the time a potential customer signed the agreement .

Thus, the major differences between the parties' respective channels of trade, means and

methods of advertising, and class of prospective purchasers weigh heavily in favor of Defendant .

The two companies market to very different classes of purchasers, as evidenced by the types of

marketing and advertising conducted, the trade shows and conferences attended, and the vastly

different price range of the two software systems . This factor weighs in favor of Defendant.

3. Evidence Of Actual Confusion

During the now nine (9) years of concurrent use by the parties of their respective names

and marks, there is at most only one (1) example of alleged actual confusion . Ex. D, 29 . Further,

this "one example" is not even an example of actual confusion, but rather, of a party who knew

exactly with whom he was speaking but made a clerical mistake . Mr. David Andera attended a

conference at which Defendant gave a presentation. Ex. M, 1 . Several months after th e

conference, he sought to gather additional information about the Defendant's product . Ex. M, 1 .

He apparently did not have Defendant's phone number and mistakenly obtained Plaintiff's

number. Ex. M, 1 . In a conversation with Plaintiff's sales representative, he told Plaintiff that he

wanted to talk to the New Hampshire company. Ex. M, 1 . Once he learned of the price of

Plaintiff's product, he ended the conversation . Ex. M, 1 . The following month, Mr. Andera

called Defendant. Ex. N, 1 . In that conversation, he mentioned to Defendant's representative tha t

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Case 1:05-cv-00342-JM Document 28 Filed 09/11/06 Page 21 of 30
there was a company called "ProTrak." Ex. N, 1 . This shows that Mr. Andera was not confused

and knew exactly with whom he was speaking . He was fully aware that Plaintiff and Defendant

are not in any way affiliated and were located in different states . He simply made a clerical error

when obtaining the phone number.

A demonstration of actual confusion is not necessary to show likelihood of confusion, but

"weak evidence of actual confusion weighs quite heavily against a finding of likelihood of

confusion." Aktiebolaget, 999 F.2d at 7 . An absence or negligible amount of actual confusion

"between two products after a long period of coexistence on the market is highly probative in

showing that little likelihood of confusion exists." Id. (coexistence for six years with little actual

confusion was convincing that there was no likelihood of confusion) ; see also Pignons, 657 F.3d

at 490 (coexistence for four years with little actual confusion was convincing that there was no

likelihood of confusion) ; Keebler Co. v. Rovira Biscuit Corp., 624 F.2d 366, 377 (Vt Cir. 1980)

(coexistence for three and a half years with no actual confusion was convincing that there was no

likelihood of confusion) . The PROTRACKER SOFTWARE, INC. and PRO TRAK

INTERNATIONAL, INC. names, the PROTRACKER.COM and PROTRAK.COM domain

names and the PROTRACKER and PROTRAK marks have coexisted for nine (9) years with no

instances of confusion, and one insignificant clerical error. Ex. D, 28; Ex . A 128 . Additionally,

the product names PROTRACKER ADVANTAGE and PROTRAK ADVANTAGE have

coexisted for one and a half years with no actual confusion . Ex. D, 28; Ex. A 128.

Even if the court determines Mr. Andera's clerical error was in fact actual confusion, this

is only one instance of actual confusion in the nine (9) years of coexistence of the parties' names

and marks. One isolated instance of confusion does not constitute probable confusion . Int'l Assn

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Case 1:05-cv-00342-JM Document 28 Filed 09/11/06 Page 22 of 30
of Machinists, 103 F.3d 196 at 201 . This one alleged instance, especially considering the details,

is a negligible amount of confusion and does not demonstrate actual confusion .

The lack of evidence supporting actual confusion weighs heavily in favor of Defendant as

the names and marks have coexisted for a significant period of time without actual confusion

occurring. Not only does this not show likelihood of confusion, but it also weighs quite heavily

against an overall finding of likelihood of confusion .

4. Intent In Adopting The Mark

Defendant did not exhibit any bad faith when adopting the names and marks

PROTRACKER SOFTWARE, INC ., PROTRACKER, PROTRACKER SYSTEM,

PROTRACKER .COM, or PROTRACKER ADVANTAGE. At the time he incorporated

Defendant, Warren Mackensen conducted a search to make sure his chosen company and

product names were not in conflict with any other names. Ex . B, 19 . Mr. Mackensen learned of

another New Hampshire company called Pro-Track, Inc ., and obtained its consent to incorporate

his company as "ProTracker Software, Inc ." Ex. B, 19 Mr. Mackensen selected the names and

marks PROTRACKER, PROTRACKER .COM, PROTRACKER SOFTWARE, INC. and

PROTRACKER SYSTEM well before Defendant ever learned of Plaintiff . Additionally, when

Defendant changed the component term "system" to "advantage" in its product name, he was not

aware that Plaintiff purportedly was also using the component term "advantage" . Ex. A 117.

Defendant first learned of the existence of Plaintiff, its name and its products during

prosecution of Defendant's PROTRACKER SYSTEM application (well after Defendant's

incorporation under the name ProTracker Software, Inc .). Ex. A I 10. Defendant investigated

Plaintiff as best it could . Ex. A I 10. During the prosecution of Defendant's trademark

application, Defendant determined that there was no likelihood of confusion, for all the reason s

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Case 1:05-cv-00342-JM Document 28 Filed 09/11/06 Page 23 of 30
discussed above, namely different products, different customers, different marketing, different

channels of trade, no actual confusion, expensive products and different price points, etc . Ex. A 9[

10. When Defendant adopted the PROTRACKER ADVANTAGE mark, again, it did so after

careful consideration and investigation and because it believed that the term "advantage" was a

good descriptive term to describe the "advantages" the product provided to the product's user

over the user's competitor who was not using the product. Ex. A 117. Also, the term describes

the "advantages" of the software over previous versions. Ex. A 117.

Plaintiff has never applied for a U .S. trademark registration for the mark "Pro Trak

Advantage," thus, a search of the Trademark Office records did not reveal Plaintiff's mark . Ex.

D, 59 . The search Defendant conducted for the mark "PROTRACKER ADVANTAGE" showed

that the mark was available for use. Ex. A 117 . At the time Defendant changed its product name

from to PROTRACKER ADVANTAGE, Defendant was not aware of Plaintiff's purported prior

use. Ex . A 117 . Indeed, from a review of Plaintiff's web site, it is difficult to tell even today that

it has a product that includes the component term "advantage" .

Thus, Defendant had no bad intent in adopting any of its marks. The good faith, and more

specifically the lack of bad faith on the part of Defendant in adopting its PROTRACKER,

PROTRACKER.COM, and PROTRACKER ADVANTAGE marks weighs in favor of

Defendant and that there is no likelihood of confusion.

5. Strenath Of Mar k

PROTRAK, PROTRACKER, PROTRAK ADVANTAGE, and PROTRACKER

ADVANTAGE are not very strong marks. A search on the United States Trademark Office web

site shows over 100 registrations and applications for marks that include the common portion of

PROTRAK and PROTRACKER as part of a component term, "protra ." Ex. I, 1 . A search for

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Case 1:05-cv-00342-JM Document 28 Filed 09/11/06 Page 24 of 30
marks that include the component term "advantage" shows over 2,700 registrations and

applications, with over 700 in International Class 009 . Ex. J, 1 ; Ex. C, 1 . The term has no

significance outside of being descriptive and laudatory, in which no party has enforceable rights.

As shown by the sheer number of parties using the components of the marks, the marks are not

very strong.

6. The Marks Are Differen t

Plaintiff alleges infringement based on Defendant's use of its names and marks

PROTRACKER, PROTRACKER .COM, and PROTRACKER ADVANTAGE4 . Plaintiff asserts

that these marks are confusingly similar to marks it claims rights in, PROTRAK and PROTRAK

ADVANTAGE. The parties' respective marks are spelled and pronounced differently:

PROTRACKER has three syllables, PROTRAK has only two syllables . PROTRACKER is

spelled with a "CK," while PROTRAK is spelled with only a "K" . This is especially important

because of consumer's use of Internet search engines, where correct spelling is very important in

finding information . The different spellings of the parties' names and marks make it less likely

that consumers will be confused.

Defendant also uses the mark PROTRACKER ADVANTAGE in connection with its

product. The component "advantage" is a descriptive, laudatory term that describes the

advantage that a user of Defendant's product would have over a competitor that does not use

Defendant's product . Ex. A 117. Plaintiff also includes the component "advantage" in

connection with its mark, but again, it is a descriptive term that does not add additional

significance or weight to Plaintiff's PROTRAK mark.

4 Plaintiff does not explicitly assert infringement by Defendant's use of its trade name PROTRACKER

SOFTWARE, INC. or its mark PROTRACKER SYSTEM, although those presumably are covered in Plaintiff's

assertions against Defendant's use of the PROTRACKER mark .

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Even comparing the marks with both component terms, PROTRACKER ADVANTAGE

still has one additional syllable than and a different spelling from PROTRAK ADVANTAGE .

Additionally, in determining the total commercial impression or connotation of the mark,

it is also necessary to review how the mark is used in general, for example on the goods and

packaging and in advertising. See generally Pignons S.A. De Mecanique De Precision v.

Polaroid Corp., 657 F.2d 482, 487 (1 s' Cir. 1981) (the use of the mark ALPHA in close

proximity with the logo and company name was found to reduce the similarity of the mark to the

mark ALPA). The actual visual impact of the parties' names and marks are significantly

different, especially as used by the parties with their corresponding logos . Defendant's logo is in

all lower case letters with the "pro" portion in yellow and the "tracker" portion in blue .

Defendant's logo also includes a box situated over the "otr" of "protracker" with the letters "pt"

in the upper right hand corner of the box . The word "software" is located in capital letters but a

smaller font beneath the "tracker" of "protracker . "

P'

acker 1111 1

On the other hand, Plaintiff's logo uses all capital letters and is mostly black . The "0" of

"Pro Trak" is in a larger font than the rest of "Pro Trak" and is disjointed, such that there appear

to be two separate halves to the "0." The word "international" follows "Pro Trak," is also in all

capital letters, but is in a significantly smaller font than "Pro Trak ." Additionally, the logo is

almost entirely in black, with only the left half of the "0" in orange .

F R TR r -rF sinrra A L

When looking at the overall commercial impression of the marks, especially the differen t

connotations they provide during their use, the significant differences in the visual impac t

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between the parties' respective marks indicates that the marks are quite different from on e

another, and that potential consumers are not likely to confuse the parties or their goods.

D. Pro Trak's Asserted U.S. Rea. No. 1 835 278 Should Be Cancelled

Plaintiff has asserted U .S . Trademark Reg . No. 1,835,278 for the mark PROTRAK

against Defendant. See Complaint, Counts One and Two. The asserted registration is invalid,

however, and should be ordered cancelled by the Court. The registration is invalid because when

it was assigned to Plaintiff, the assignor had no goodwill to assign with the mark . Section 10 of

the Lanham Act provides that a valid trademark assignment must carry with it the assignment of

goodwill which the trademark symbolizes. 15 U.S.C. §1060. It is well established that a

trademark has no independent significance apart from the goodwill it symbolizes, and cannot be

sold or assigned apart from the goodwill it symbolizes. Marshak v. Green, 746 F.2d 927, 929

(2°a Cir. 1984) ; United Drug Co. v. Theodore Rectanus Co ., 248 U.S . 90 (1928); American Steel

Foundries v. Robertson, 269 U.S . 372 (1926). An assignment of a trademark without goodwill is

an assignment in-gross and "does not transfer any legal rights to the assignee ." Greenlon, Inc. of

Cincinnati v . Greenlawn, Inc ., 542 F. Supp. 890, 893 (S.D. Ohio 1982) ; citing Bourjois & Co. v.

Katzel, 260 U.S. 689 (1923). A trademark assignment in-gross is invalid since the assignor

relinquished nothing, and no rights transferred to the assignee. Greenlon, 542 F.Supp at 895.

The goodwill can take the form of physical assets or intangible knowledge and ways of

conducting business. Greenlon, 542 F.Supp at 894 . A trademark and its associated goodwill are

inseparable, and one does not survive without the other. 2 J. McCarthy, on Trademarks § 18:2

(4th ed. 1996). If the trademark assignor has stopped using the mark and abandoned the mark

prior to the assignment, then there is no goodwill to assign . See Supra .

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Plaintiff did not file the application that resulted in the asserted registration. Ex. K 1 4.

Plaintiff obtained the registration from its then-owner, Marmen, well after Marmen had

abandoned the mark. Ex. K I 10. Because Marmen had abandoned the mark when it assigned its

"rights" in the mark to Plaintiff, the assignment is void, the registration invalid, and it should be

cancelled. Marmen stopped using and had no intention of resuming use of the mark PROTRAK

well before July 1998. Ex. K I 10. Before Marmen assigned the PROTRAK mark, it had

abandoned the mark and had no goodwill associated with the mark . Ex. K 15. Marmen did not

transfer any technical information, know-how, software, business information, business,

customers, customer lists, or physical or intangible assets to Pro Trak. Ex. K I 11 . Therefore, the

assignment of PROTRAK did not include the transfer of any goodwill .

In July 1998, Ralph Wood, attorney for Plaintiff, called Marmen regarding its

PROTRAK trademark registration . Ex. L, 1 . Attorney Wood spoke with Steven Le Boeuf, Vice

President of Marmen. Ex. L, 1 . That same day, attorney Wood memorialized his conversation in

a letter to Mr. Le Boeuf. Ex. L, 1 . Attorney Wood said in his letter, "However, if as you

indicated, Marmen is no longer using the mark [PROTRAK], we might be able to avoid the

cancellation proceeding by having Marmen assign the mark to Pro Trak ." Ex. L, 1 . Thus,

Plaintiff knew that Marmen had stopped using the mark PROTRAK and that there was no

goodwill to be assigned. Nonetheless, Plaintiff agreed to pay $750 for the assignment. Ex. K 19.

Attorney Wood drafted the assignment, which Mr. Le Boeuf signed on behalf of Marmen . Ex. G,

2. Mr. Le Boeuf recently confirmed that he told Attorney Wood that Marmen had abandoned the

mark prior to the assignment. Ex . K I 10. He also confirmed that Marmen assigned no goodwill

to Plaintiff. Ex . K I 10.

24

Case 1:05-cv-00342-JM Document 28 Filed 09/11/06 Page 28 of 30
Because the assignment by Marmen was invalid, the mark and registration were never

transferred and thus still belongs to Marmen. However, since Marmen abandoned the mark long

ago, the registration is invalid and should be cancelled . Because asserted U.S. Trademark Reg.

1,835,278 is invalid, it should be cancelled, and summary judgment entered in favor of

Defendant on Counts One and Two in the Amended Complaint and Count II of CounterPlaintiff's Counterclaim .

II. CONCLUSION

In view of the foregoing, Defendant has demonstrated that Pro Trak is barred from

obtaining any relief in this action under the doctrine of laches. Defendant has demonstrated that

there is no likelihood of confusion between Defendant's and Plaintiff's names and marks. For the

foregoing reasons, pursuant to Rule 56 Fed. R. Civ . P., Defendant is entitled to summary

judgment on all counts of Plaintiff's Amended Complaint, Count I of Counter-Plaintiff's

Counterclaim and Defendant's Affirmative Defenses 1-4 and 6. In addition, the asserted

registration is invalid and should be cancelled. Defendant is entitled to summary judgment on

Count One and Two of Plaintiff's Amended Complaint, Count II of Counter-Plaintiff's

Counterclaim, Defendant's Affirmative Defense 7 and the Court should order the Commissioner

of Trademarks to cancel U .S. Trademark Reg. No. 1,875,278, pursuant to 15 U .S.C. § 1119.

PROTRACKER SOFTWARE, INC .

Dated: September 7, 2006

By: /s/Mark K. Suri

One of Its Attorney s

Teresa C. Tucker

GROSSMAN, TUCKER,

PERREAULT & PFLEGER, PLLC

55 South Commercial Street

Manchester, NH 0310 1

Telephone: 603-668-6560

Facsimile: 603-668-2970

Email: ttucker@gtpp.com

Mark K. Suri

Eric H. Weimers

RYNDAK & SURI LLP

200 West Madison Street, Suite 2100

Chicago, IL 60606

Telephone : 312-214-7770

Facsimile : 312-214-7715

Email : suri @ ryndaksuri.com

25

Case 1:05-cv-00342-JM Document 28 Filed 09/11/06 Page 29 of 30
CERTIFICATE OF SERVICE

I, Mark K. Suri, certify that a true and correct copy of the foregoing CORRECTED

MEMORANDUM IN SUPPORT OF DEFENDANT'S MOTION FOR SUMMARY

JUDGMENT was served electronically, through ECF, upon counsel for Plaintiff Pro Trak

International, Inc . :

Michael J. Bujold, Esq.

Davis & Bujold P.L.L.C.

112 Pleasant Street

Concord, NH 033 0 1-2 93 1

Telephone: (603) 226-7490

Facsimile : (603) 226-749 9

Email : patent@davisandbujold.com

on this 7m day of September, 2006 .

By: /s/Mark K. Suri

Mark K. Suri

Attorney for Defendant

Case 1:05-cv-00342-JM Document 28 Filed 09/11/06 Page 30 of 30