UNITED STATES DISTRICT COURT FOR THE

DISTRICT OF NEW HAMPSHIRE

Pro Trak International, Inc.

v. Civil No. 05-cv-342-JM

Protracker Software, Inc.

O R D E R

Defendant moves for summary judgment on all counts of

Plaintiff’s Amended Complaint, Counts I & II of its counterclaim

and on its Affirmative Defenses 1-4, 6 and 7. I find that there

are numerous genuine issues of material fact upon which a

reasonable jury could find for either side. Consequently, I deny

the motion (document no. 23).

Standard of Review

Summary judgment is appropriate only “if the pleadings,

depositions, answers to interrogatories, and admissions on file,

together with the affidavits, if any, show that there is no

genuine issue as to any material fact and that the moving party

is entitled to a judgment as a matter of law.” Fed. R. Civ. P.

56(c). A genuine issue is one “that properly can be resolved

only by a finder of fact because [it] may reasonably be resolved

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in favor of either party.” Anderson v. Liberty Lobby, Inc., 477

U.S. 242, 250 (1986). A material fact is one “that might affect

the outcome of the suit.” Id. at 248.

In ruling on a motion for summary judgment, the court 

construes the evidence in the light most favorable to the

nonmovant. See Navarro v. Pfizer Corp., 261 F.3d 90, 94 (1st

Cir. 2001). The party moving for summary judgment “bears the

initial responsibility of . . . identifying those portions of

[the record] which it believes demonstrate the absence of a

genuine issue of material fact.” Celotex Corp. v. Catrett, 477

U.S. 317, 323 (1986). Once the moving party has met its burden,

the burden shifts to the nonmovant to “produce evidence on which

a reasonable finder of fact, under the appropriate proof burden,

could base a verdict for it; if that party cannot 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). Neither conclusory

allegations, improbable inferences, nor unsupported speculation

are sufficient to defeat summary judgment. Carroll v. Xerox

Corp., 294 F.3d 231, 236-37 (1st Cir. 2002). 

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Facts

Defendant was incorporated in New Hampshire in 1997 by

Warren Mackensen, a Certified Financial Planner (CFP) to develop,

market and license software he had created. The software

provides a management tool for aspects of a financial planning

practice which, among other things, automates repetitive tasks,

tracks work flow processes, performs calculations and provides

reminders. At inception the defendant operated its business out

of Mr. Mackensen’s house. Currently it has three employees and

continues to market practice management software exclusively for

CFP’s. 

Plaintiff is a New York based corporation which “is the

global leader and a major innovative force in the development and

delivery of Client Relationship Management software (CRM) to the

investment management community.” www.protracker.com. Its

clients includes such giants as JP Morgan and GM Asset

Management. It does not sell its products to the CFP community

but rather to large investment managers. Plaintiff has been in

business since at least 1988. 

In July of 1997 defendant filed an application for a

trademark of “Protracker System”. Exh. L. The application was

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refused because of the likelihood of confusion with the

registered mark in Registration No. 1,835,278 owned by Marmen

Computing, Inc. Defendant then abandoned its application. 

Defendant became aware of plaintiff during prosecution of the

trademark but its principal says he determined that the product

and market of the two companies were different. 

In June of 1998 plaintiff, through its attorney, conducted a

trademark search for “PRO TRACK” for software goods. That search

disclosed Marmen, the defendant and many others. Defendant

asserts that Marmen had abandoned the mark while plaintiff says

that Marmen was using the mark for enterprise - wide computer

networks in municipal, corporate and governmental environments. 

Plaintiff was assigned the mark by Marmen in exchange for

$750.00. While defendant is listed a few pages apart from Marmen

on the attorney’s search, plaintiff’s attorney claims he didn’t

note defendant and notes that the list has many pages. 

In September of 2003 defendant filed a trademark application

to register “PROTRACKER ADVANTAGE” and began commercial use on

December 22 or 23, 2004. Trademark Reg. No. 3,038,202 issued to

defendant. Plaintiff has used “PROTRACK ADVANTAGE” since on or

about 2001. 

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Discussion

After considering the motion for summary judgment, drawing

all reasonable inferences in favor of the non-moving party with

respect to the motion, the Court finds that there are numerous

genuine issues as to material fact that prevent the entry of

summary judgment. 

1. Laches

Defendant first relies on the doctrine of laches and asserts

laches as a complete bar to plaintiff’s suit. The equitable

doctrine of laches is a defense in a trademark case. 5 McCarthy

on Trademarks, § 31:3 (tracing the development of the guidelines

of the laches defense in trademark cases). Laches is a defense

to both requests for injunctive relief (equitable claims) and for

damages (legal claims). Id. However, “the defense of estoppel

by laches is only rarely applied to bar a permanent injunction

after a strong case of likely confusion has been proven.” Id. at

§ 31:6. “(I)t usually requires a full trial on the merits not

disposition on summary judgment.” Id. at § 31:1. 

To establish the defense “defendant must prove (1) plaintiff

knew of defendant’s use of its mark, (2) plaintiff unreasonably

delayed in taking action, and (3) defendant will be prejudiced.” 

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PC Connection, Inc. v. Programmer’s Connection, Inc., 1994 WL

258656, at *7 (D.N.H. 1994). For summary judgment purposes,

defendant’s laches claim falters coming out of the gate. The

earliest date plaintiff can be shown to have known about

defendant’s use of its mark is 2004. Defendant points to a July

1998 trademark search report for the mark “PRO TRAK” which was

obtained by plaintiff’s attorney. That report does include

defendant’s corporate name “PROTRACKER SOFTWARE, INC.”, its

address and its applied-for mark “PROTRACKER SYSTEM”. The

attorney recalled little about the search other than he had

ordered it, it was produced from his files and shortly after the

search he contacted Marmen, a company identified in the search. 

The search result is over 250 pages long. Exh. R, Parts I-IV. 

Marmen is listed on page 15, Exh. R, Part I. Protracker

Software, Inc. is listed on page 36 of that Part. Unlike Marmen

it is not listed as having a registered trademark. 

From these facts defendant argues at least constructive

knowledge since July 1998 by plaintiff’s attorney which

knowledge, it argues, is imputed to plaintiff. In short,

defendant cannot show actual knowledge. Defendant’s claim is of

imputed knowledge in 1998. Plaintiff, on the other hand, states

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it first had knowledge of defendant in 2004. App. D. Koziel, Tr.

15-16. On the issue of laches knowledge is clearly a genuine

issue of controverted material fact. 

I need not address the last two prongs of the laches claim. 

The motion is denied as to laches. 

2. Likelihood of Confusion

Between Parties’ Names and Marks

The Lanham (Trademark) Act, 15 U.S.C. § 1151 et seq.

protects the public and trademark owners by “prevent(ing) the use

of the same or similar marks in a way that confuses the public

about the actual source of the goods or service.” Star Fin.

Servs., Inc. v. Aastar Mortgage Corp., 89 F.3d 5, 9 (1st Cir.

1996). Likelihood of confusion is a question of fact. AnheuserBusch v. Caught-on-Bleu, 288 F. Supp. 2d 105, 114 (D.N.H. 2003),

aff’d without op., 105 Fed. Appx. 285 (1st Cir. 2004), cert.

denied, 544 U.S. 920 (2006). The factors considered in

determining likelihood of confusion are: 

(1) the similarity of the marks; (2) the

similarity of the goods; (3) the relationship

between the parties’ channels of trade; (4)

the relationship between the parties’

advertising; (5) the classes of prospective

purchasers; (6) evidence of actual confusion;

(7) the defendant’s intent in adopting its

mark; and (8) the strength of the plaintiff’s

mark. 

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Volkswagenwerk Aktiengesellschaft v. Wheeler, 814 F.2d 812, 817

(1st Cir. 1987). “No one factor is necessarily determinative,

but each must be considered.” Id.

a. Similarity of the marks

This issue is not determined by the parties’ respective

logo. They are very different in style, type and layout but the

main feature of each contains the letters “PROTRA K”. This,

plaintiff argues, makes the differences de minimus in comparison. 

The evidence is that defendant’s trademark application was

refused because of its likely confusion with “PROTRAK”. The

determination of the Patent and Trademark Office is entitled to

great weight. Syntex Laboratories, Inc. v. Norwich Pharmacal

Co., 437 F.2d 566, 569 (2d Cir. 1971). In addition adding

“Advantage”, which both parties have done, provides no basis to

distinguish the two marks. 

Given the PTO’s prior finding and the mutual addition of

“Advantage” defendant has not met its burden of showing no

genuine issue of fact on the similarity prong. 

b. Similarity of Goods

An owner of a trademark is afforded “protection against use

of its mark on any product or service which would reasonably be

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thought by the buying public to have come from the same source.” 

Anheuser-Busch, 288 F. Supp. 2d at 118 (Quoting 4 McCarthy on

Trademarks and Unfair Competition § 24:6). Again, the PTO found

that the goods are similar and that must be afforded great

weight. Syntex Laboratories, Inc., 437 F.2d at 569. Both

products consist of business computer software which helps

managers manage contacts, lists and money. There are also many

dissimilarities such as the type of calculations, size and

complexity of finances managed and the overall use of the

program. What cannot be said is that defendants have carried

their burden to show such dissimilarity between the products as

to eliminate a genuine issue of material fact. 

c., d. & e. Prospective Customers,

Promotional Activities and Trade Channels

Plaintiff argues that the parties’ class of prospective

customers significantly overlaps. They have shown factually some

overlap. However, it is a real stretch to say that there is

significant overlap. In fact, defendant has demonstrated that

there is no genuine issue of material fact on the key issue of

customers - defendant’s customers are individual and small-firm

personal financial advisors while plaintiff’s customers are large

institutional investors. 

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The respective customers are in different aspects of the

financial industry, belong to different professional associations

and generally attend different conferences. Defendant advertises

in NAPFA Advisor and has a web site. It does not solicit by

direct mail or email. It does not purchase keyword ads from

search engines. In contrast, plaintiff does all of those things. 

There is no genuine issue of material fact on these legs of the

likelihood of confusion question. 

f. Actual confusion

In nine years of concurrent use of their respective names

and marks plaintiff, at this point, can point to only one

incidence of actual confusion. Defendant argues that the facts

surrounding the contacts with Mr. Andera in fact demonstrate no

actual confusion. The parties each argue the facts and

inferences well. The summary judgment stage is not the point at

which I am to find facts but rather I am only to determine

whether there are genuine issues on controverted facts. Hearing

the testimony and assessing credibility is for trial. At this

stage whether Mr. Andera’s situation establishes actual confusion

and the timing and circumstances of it point to a genuine issue

of material fact. 

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g. Defendant’s Intentions

The facts show that when defendant tried to register its

trademark it learned of plaintiff, its corporate name and

trademark. The PTO rejected the application because of

likelihood of confusion. Defendant withdrew its application but

it persisted in using its mark despite its knowledge of

plaintiff. It did so because, plaintiff says, its principal

“determined that our respective products were different, and that

we were not in the same market . . .” Exh. A.10. It may be that

defendant can persuade the court of its good faith and intent at

trial but the facts relating to the rejection of the defendant’s

application and Mr. Mackensen’s affidavit establish a clear

genuine issue of material fact. 

h. Strength of the plaintiff’s mark

“‘Strong’ marks are accorded broader protection against

infringement than are ‘weak’ marks.” Volkswagenwerk

Aktiengesellschaft, 814 F.2d at 819. To determine the strength

of a mark the court looks to “the length of time the mark has

been used, its renown in the plaintiff’s field of business, and

the plaintiff’s actions to promote the mark.” Star Fin. Servs.

v. Aastar Mortg. Corp., 89 F.3d 5, 11 (1st Cir. 1996). 

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Plaintiff’s mark has been used since 1998. It’s products

are marketed widely in its field. Defendant relies on a

trademark search to show weakness. However, search report

evidence is hearsay; it does not establish extensive use by

others; and, in fact, does not establish use of the mark. 2

McCarthy on Trademarks and Unfair Competition, §§ 11:88 and

11:89. In short, defendant has not sustained its burden on this

prong. 

Summary judgments for defendant on likelihood of confusion

are very few and hard to get. This case is no different. 

I find that there are many genuine issues of material fact

on all theories briefed. 

Conclusion

For the reasons set forth above, the court finds that

defendant is not entitled to summary judgment, and therefore

denies its motion (document no. 23). 

SO ORDERED.

____________________________________

James R. Muirhead

United States Magistrate Judge

Date: March 1, 2007

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cc: Michael J. Bujold, Esq.

 Neal E. Friedman, Esq.

 Roger Masson, Esq.

 Mark K. Suri, Esq.

 Teresa C. Tucker, Esq.

 Eric H. Weimers, Esq.

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