In Chorus Call, Inc. v ZoomInfo Converse LLC 2023 TMOB 144, the Trademarks Opposition Board refused registration of the marks CHORUS.AI, CHORUS and CHORUS owing to the applicant’s failure to demonstrate on a balance of probabilities that there is no reasonable likelihood of confusion with the previously registered mark and previously used trade name CHORUS CALL.
The decision offers examples of the following considerations when compiling evidence in opposition proceedings:
- to avoid objections to evidence on the basis of hearsay, it is best to rely on first-hand information and to ensure affidavits from agents or counsel are relied on only in appropriate limited circumstances;
- state of register evidence to reflect marketplace use must be relevant to the goods and services under consideration and must relate to marks which are in good standing and are allowed or registered (absent a claim to use).
AffectLayer, Inc. filed three applications to register the trademarks CHORUS.AI in association with “networking services, namely, business consulting in the field of business networking; business strategy development services, business management consultation in the field of telecommunications; technical support services, namely troubleshooting in the nature of the repair of computer hardware and computer software”, and an application for the marks CHORUS and CHORUS in association with “business strategy development services; business management consultation in the field of telecommunications”, which were subsequently assigned to the current owner ZoomInfo Converse LLC. (Affect Lawyer, Inc. and ZoomInfo Converse LLC collectively referred to as the “applicant”).
Chorus Call, Inc. (the opponent) opposed the applications based on an alleged likelihood of confusion with its trademark (the CHORUS CALL mark), registered under number TMA699,411 in association with “multimedia teleconferencing services including audio, video and data teleconferencing”, and its trade name CHORUS CALL.
Both parties filed evidence and written representations, and were represented at a hearing. Given that the evidence and issues raised in respect of the three applications were essentially identical, the matters were heard together and addressed in a single decision.
The Opponent’s evidence-in-chief comprised an affidavit in the name of the General Manager of Chorus Call Canada Corp. (Chorus Call Canada), the Opponent’s wholly-owned Canadian subsidiary. And,as reply evidence, the affidavit of a searcher and the affidavit of a paraprofessional with the Opponent’s agent firm.
The Opponent’s evidence in chief described the Opponent’s activities, including provision of variety of multimedia communication services to business and non-profit organizations a wide range of market sectors and industries across Canada, and provided sales figures, annual expenditures for advertising, promotional, and marketing efforts in Canada in association with CHORUS CALL mark, as well as documentary evidence of the Opponent’s promotional activities wherein the mark was displayed.
The Opponent’s reply evidence, comprised the results of a search conducted by a searcher from an intellectual property research firm of the Canadian Intellectual Property Office trademark database for active trademarks including the term CHORUS or alternative spellings, in association with goods and services relating to “telecommunications” in any class, as well as an affidavit in the name of a paraprofessional of the Opponent’s agent firm including a certified copy of the examination history of the subject applications, as well as print outs from the websites located at www.chorus.ai and www.zoominfo.com.
The applicant’s evidence comprised an affidavit in the name of a lawyer with the applicant’s previous agent firm providing evidence relating to AffectLayer and its business, as well as printouts of pages from the website located at www.chorus.ai, as well as state of the Register and state of the marketplace evidence, namely search results from Canadian Intellectual Property Office trademark database and from the search engine Google, for the terms CHORUS and CORUS.
The opponent objected to the admissibility of the applicant’s evidence on the basis that it constituted inadmissible hearsay and opinion evidence regarding the scope of the Applicant’s business and the nature of the services that it provides. The opponent also contested the admissibility of the state of the register and marketplace evidence submitted by the applicant because the search strategy was designed, performed, and analyzed by a lawyer for the applicant’s agent firm.
In assessing the regular factors for determining confusion as set out in subsection 6(5) of the Trademarks Act, the Board ultimately determined that, owing the opponent’s lengthy use and the extent to which its marks had become known, the similarities in the marks, and the potential for overlap of the services, the marks were confusing.
Notably, with respect to the criterion assessing the nature of the services, the board noted that, while the applicant sought to distinguish the nature of its services from those of the opponent by filing evidence, because the evidence, which included what purported to be printouts from the applicant’s website discussing its services and business, the evidence amounted to hearsay and was ultimately inadmissible since the affiant was a lawyer with the applicant’s previous agent firm and not someone with first-hand knowledge of the applicant’s activities or the truth of the website’s contents.
Moreover, the evidence was considered to not meet the standard of necessity given that the applicant could have put forward an affiant with first-hand knowledge of the applicant’s business.
Additionally, because the applicant’s affidavit was the only evidence from the applicant purporting to speak to the nature of the applicant’s services and trade for the purpose of the confusion analysis, and is therefore important and potentially contentious evidence, the Board Member determined it was not suitable to come from an employee of a party’s agent firm.
With respect to the state of the register and state of the marketplace evidence tendered in the applicant’s affidavit, the board commented that evidence concerning the state of the register is relevant to the extent that inferences may be drawn regarding the state of the marketplace and, more particularly, that relevant trademarks include those that (i) are registered or are allowed and based on use; (ii) are for similar goods and services as the marks at issue, and (iii) include the component at issue in a material way.
While the applicant’s evidence included particulars of almost 50 trademarks on the register which contain the term CHORUS or a phonetic equivalent, and printouts of various web pages for “businesses, organizations, and products” identified through an online search for the keywords CHORUS and CORUS, in its oral submissions, it pointed to only two records it considered to be the most relevant.
The Board determined that the state of the register evidence did not assist the applicant to any meaningful degree since some of the references included in the evidence related to trademark applications that were neither registered nor allowed based on use, abandoned applications, or covered very different goods and services from those in issue in this case. Likewise, the Board determined that the vast majority of the third party webpages submitted as evidence pertained to unrelated goods and services, and did not, therefore, show common adoption and use of similar marks by third parties in a relevant field and, as such, was not considered to be a significant surrounding circumstance in the present case.
