IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 118,919
`
`“
`
`In the matter of:
`
`§ § §
`
`§
`
`STERLING SOFTWARE, INC.
`
`Opposer,
`
`7
`
`_
`
`_
`
`_
`
`g
`
`vs.
`
`°3"9'3°°"'
`u.a. nun: I TMOYOITM Mu: Hcmbt
`
`Application Serial No. 75/730,556
`Mark: COOLALERTS
`
`ATWOOD DANIEL COOL
`
`Applicant.
`
`§
`§
`§
`§
`
`Filed on July 14, 1999
`Published in the Official Gazette
`on January 4, 2000
`
`OPPOSER’S MOTION FOR SUMMARY JUDGMENT
`
`Opposer Sterling Software, Inc. (hereinafter “Opposer”), hereby moves for summary
`
`judgment on the issue of likelihood of confusion. Applicant has admitted that
`
`there is a
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`likelihood of confusion by failing to respond to Opposer’s First Set of Requests for Admissions
`
`to Applicant, which include admissions as to a likelihood of confusion. In addition, the evidence
`
`of record demonstrates that there is a likelihood of confusion based on the parties’ marks and
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`goods as set forth in their respective registrations and application. There being no dispute
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`regarding the material facts, Opposer is entitled to judgment as a matter of law.
`
`I.
`
`Status of Case
`
`Opposer filed the subject opposition on May 3, 2000. For approximately two years the
`
`parties attempted to negotiate a resolution to this controversy. On August 15, 2003, Applicant
`
`filed an answer to Opposer’s notice of opposition. On December 19, 2003, Opposer served
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`Applicant with discovery,
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`including Opposer’s First Set of Requests for Admissions to
`
`Applicant. The discovery response deadline has passed and Applicant has failed to provide any
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`response to Opposer’s discovery requests, and in particular to its admission requests. TBMP §
`
`DAL0l:7S63l3.2
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`1
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`

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`
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`411.01 provides that failure to respond or object to an admission request within the agreed time,
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`results in the matters being deemed admitted.
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`Opposer now moves for summary judgment on the issue of likelihood of confusion.
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`Pursuant to TMEP §528.02, a motion for summary judgment is deemed timely if filed before the
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`opening of the first testimony period. The Board’s Order dated October 1, 2003 indicates that
`
`the first testimony period will open on March 20, 2004. Accordingly, this motion for summary
`
`judgment is timely filed.
`
`II.
`
`Governing Authority - Federal Rule of Civil Procedure 56
`
`Pursuant to Trademark Board Manual of Procedure (“TBMP”) § 528, Federal Rule of
`
`Civil Procedure 56 governs motions for summary judgment filed in inter partes proceedings
`
`before the Trademark Trial and Appeal Board. Summary judgment is appropriate when “there is
`
`no genuine issue as to any material fact and .
`
`.
`
`. the moving party is entitled to a judgment as a
`
`matter oflaw.” Fed. R. Civ. P. 56(c); SR1 Int 7 v. Matsushita Elec. Cor . 0 Am., 775 F.2d 1107,
`
`1116, 227 U.S.P.Q. (BNA) 557, 581 (Fed. Cir. 1985) (en banc).
`
`III.
`
`Requests for Admissions
`
`In this Opposition, Applicant has admitted that its mark is likely to cause confusion with
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`one or more of Opposer's family of COOL:
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`marks. According to TBMP §4l 1.01
`
`and FRCP 36, requests for admissions stand admitted if a party fails to timely respond. Attached
`
`as Exhibit A are true and correct copies of “Opposer’s First Set of Requests for Admissions to
`
`:11
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`Applicant.
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`Therefore, as Applicant has failed to provide any discovery responses, as a matter
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`of law Applicant is deemed to have admitted the statements put forth in Opposer’s First Set of
`
`I Reguest to Admit No. 9 — Admit that there is a likelihood of confusion between any or all of Opposer’s Marks
`and Applicant’s Alleged Mark.
`
`Reguest to Admit No. 10 — Admit that the customers, or intended customers of Applicant’s goods or services sold
`or intended to be sold under Applicant‘s Alleged Mark, would be confused, misled or deceived by Applicant’s use
`ofthe mark COOLALERTS.
`
`DALO] :786313.2
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`2
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`

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`
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`Requests for Admissions to Applicant, which include statements that Applicant’s mark is likely
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`to cause confusion with any or all of Opposer’s marks.2
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`Applicant has not objected to the substance, form, or timeliness of the discovery requests
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`propounded by Opposer.
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`Pursuant
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`to TBMP § 41 1.01 Applicant’s failure to respond to
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`Opposer’s Requests for Admissions results in Applicant being deemed to have admitted that
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`registration of Applicant’s COOLALERTS mark is likely to cause confusion with one or more of
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`Opposer’s marks. Accordingly, as there is no genuine issue as to any material fact, summary
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`'
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`judgment in Opposer’s favor is appropriate.
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`IV..
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`Evidence of Record
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`Even if Applicant is not deemed to have admitted to a likelihood of confusion by failing
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`to respond to Opposer’s First Set of Requests for Admissions to Applicant, the evidence of
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`record in this proceeding demonstrates that
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`there is a likelihood of confusion between
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`Applicant’s mark and Opposer’s marks. Opposer owns federal trademark registrations for the
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`marks listed on attached Exhibit C as evidenced by copies of the registration certificates for these
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`marks attached as Exhibit D. Opposer’s registrations for these marks cover computer software
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`and computer programs. Applicant seeks to register COOLALERTS for computer software.
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`Applicant’s mark is highly similar to Opposer’s family of marks, and both parties use or intend
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`to use their respective marks with overlapping goods, i.e., computer software and programs in
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`International Class 9. These similarities create a likelihood of confusion between Applicant’s
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`mark and Opposer’s marks.
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`2 Attached as Exhibit B is the Affidavit of Pamela S. Ratliff, attesting to the fact that Applicant did not respond to
`Opposer’s discovery requests, including Opposer’s First Set of Requests for Admissions to Applicant.
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`DAb01:7B6313.2
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`3
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`

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`
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`A.
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`Applieant’s Mark is Confusingly Similar to Opposer’s Marks
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`There is a likelihood of confusion between Applicant’s mark and Opposer’s Marks
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`because Applicant’s mark is similar in sound, appearance and form to Opposer’s family of
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`marks. Applicant seeks to register the mark COOLALERTS. Opposer owns US.
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`federal
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`trademark registrations for a family of COOL
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`marks: COOL:DAT, COOLJEX,
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`COOL:BIZ, COOL:STUFF, COOL:GEN, COOL:XTRAS, COOL:DBA, COOL:ENTERPRISE,
`
`COOL:PLEX, COOL:2E, and COOLJOE. These marks create a family of COOL:
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`marks. The most prominent and distinctive portion of the parties’ marks is the initial term
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`COOL. The form of Opposer’s Marks is that the initial term COOL is followed by another tenn.
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`This is the form of Applicant’s COOLALERTS mark. Thus, Applicant’s COOLALERTS mark
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`is highly similar in sound, appearance and form to Opposer’s family of marks, and follows the
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`same pattern of COOL plus another term.
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`It therefore creates the same commercial impression
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`as Opposer’s Marks.
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`B.
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`Applicant’s Goods are Related to and Overlap with ()pposer’s Goods
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`There is a likelihood of confusion between Applicant's mark and Opposer’s Marks
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`because the parties’ marks are used in connection with related and overlapping goods: computer
`
`software and programs in International Class 9. Applicant seeks registration of COOLALERTS
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`for use on "computer software for the management of computer networks“ in International Class
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`9. Attached as Exhibit C is a table of Opposer’s Marks and the goods for which each mark is
`
`registered. The goods listed on Applicant’s application are related to and overlap with the goods
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`listed in Opposer’s registrations.
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`The nature and scope of the parties’ goods must be determined on the basis of the goods
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`recited in the application or registration. TMEP §1207.01 (a)(iiii). See, e.g., HewJ'eIz—Packard
`
`DALOI :7863l3.2
`
`4
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`

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`
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`Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); In re Shell Oil Co.,
`
`992 F.2d 1204, 26 USPQ2d 1687, 1690 n. 4 (Fed. Cir. 1993); and J & J Snack Foods Corp. v.
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`McD0nald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991).
`
`If Opposer’s
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`registrations describe goods broadly, and there is no limitation as to the nature, type, channels of
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`trade or class of purchasers, it must be presumed that the registrations encompasses all goods of
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`the type described, that they move in all nonnal channels of trade, and that they are available to
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`all classes of purchasers. TMEP §l207.01. Therefore, Applicant cannot avoid likelihood of
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`confusion merely by more narrowly identifying its related goods. See, e. g., In re Linkvest S.A.,
`
`24 USPQ2d 1716 (TTAB 1992) (where a registrant’s goods are broadly identified as “computer
`
`programs recorded on magnetic disks,” without any limitation as to the kind of programs or the
`
`field of use, it is necessary to assume that the registrant’s goods encompass all such computer
`
`programs, and that they travel in the same channels of trade and are available to all classes of
`
`prospective purchasers of those goods).
`
`Similarly,
`
`there is a likelihood of confusion if an
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`applicant identifies its goods so broadly that the identification encompasses the goods identified
`
`in the registration of a similar mark. See, e.g., In re Americor Health Services, 1 USPQ2d 1670
`
`(TTAB 1986)
`
`(RESOLVE for corporate employee assistance services, namely, providing
`
`confidential mental health counseling services, held likely to be confused with RESOLVE for
`
`counseling services in the field of infertility). Furthemiore, an applicant may not restrict the
`
`scope of its goods and/or the scope of the goods covered in the registration by extrinsic argument
`
`or evidence, for example, as to the quality or price of the goods. See, e.g.,
`
`In re Bercut-
`
`Vandervoort & Co, 229 USPQ 763, 764 (TTAB 1986). Thus, Applicant’s goods as set forth in
`
`the COOLALERTS application are related to and encompassed by the goods set forth in
`
`Opposer’s registration, and this creates a likelihood of confusion.
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`DALO] :7'86313.2
`
`5
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`

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`
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`C.
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`Opposer has Prior Rights in its Marks
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`Opposer’s priority in Opposer’s Marks precedes
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`the Applicant’s
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`filing date for
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`COOLALERTS. Opposer’s federal registrations for Opposer’s Marks are valid and subsisting.
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`V.
`
`Conclusion
`
`Applicant has admitted to a likelihood of confusion by failing to respond to Opposer’s
`
`First Set of Requests for Admissions to Applicant.
`
`In addition, Applicant’s mark creates the
`
`same commercial impression as Opposer’s family of marks and Applicant’s mark is intended to
`
`be used with goods highly similar to and encompassed by the goods protected by Opposer’s
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`registrations. Therefore, Applicant’s mark is likely to cause confilsion, to cause mistake or to
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`deceive. Opposer will be damaged and harmed by the registration of App1icant’s mark.
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`On its Motion for Summary Judgment, Opposer has shown that there is no genuine issue
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`as to any material fact, and it is entitled to judgment as a matter of law. Accordingly, Opposer
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`respectfully requests that its "Motion for Summary Judgment be .
`
`Respectfully submitted this 19th day of March, 2004.
`
`Priscilla L. Dunckel,
`
`Pamela S. Ratliff, Esq.
`Baker Botts L.L.P.
`
`2001 Ross Ave, Suite 600
`
`Dallas, Texas 75201-2980
`
`(214) 953-6818
`
`ATTORNEYS FOR OPPOSER
`
`DALOI :7863 13.2
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`6
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`

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`
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`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of this Opposer’s Motion for Summary
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`Judgment was served on the attorney of record for Applicant via U.S. Express Mail to the
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`following this the 19th day of March, 2004.
`
`John M. Kim, Esq.
`Gray Cary Ware & Freidenrich LLP
`4365 Executive Drive, Suite 1100
`San Diego, California 92121-2133
`Telephone: 858.638.6859
`Facsimile: 858.677.1400
`
`Attorneys for Applicant
`
`£amm§
`
`I hereby certify that this correspondence is
`being deposited with the United States
`Postal Service "Express Mail Post Office to
`Addresses" service under 37 C.F.R. 1.10 in
`an envelope addressed to:
`BOX TTAB NO FEE, 2900 Crystal Drive,
`Arlington, Virginia 22202-3513 on March 19.
`2004.
`
`Ex ress Mail Cert. No.
`
`iqam
`
`EL
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`DALOi:‘."863l3.2
`
`7
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`

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`
`
`

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`
`
`EXHIBIT A
`
`OPPOSER’S FIRST SET OF REQUESTS FOR ADMISSIONS TO APPLICANT
`
`DAL01 27363132
`
`8
`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 118,919
`
`In the matter of:
`
`Application Serial No. 75/730,556
`Mark: COOLALERTS
`
`Filed on July 14, 1999
`Published in the Official Gazette
`on January 4, 2000
`
`§ § §
`
`§ §
`
`§
`§
`§
`
`§ §
`
`§
`§
`§
`
`STERLING SOFTWARE, INC.
`
`Opposer,
`
`vs.
`
`ATWOOD DANIEL COOL
`-
`
`Applicant.
`
`OPPOSER'S FIRST SET OF REQUESTS FOR ADMISSIONS TO APPLICANT
`
`Pursuant to Rule 36 of the Federal Rules of Civil Procedure and Trademark Rule of
`
`Practice 2.120, Sterling Software, Inc. (“Opposer”), by its attorneys, requests that Atwood Daniel
`
`Cool (“Applicant”) make the following admissions in writing, separately, fully and under oath,
`
`within thirty (30) days from the date of service hereof by mailing or otherwise delivering the
`
`answers to Baker Botts L.L.P., 2001 Ross Avenue, Suite 600, Dallas, Texas 75201-2980.
`
`INSTRUCTIONS
`
`1.
`
`These Requests seek responses from Applicant, which are complete and fiilly
`
`responsive as of the date the responses are executed, and which reflect or embody all relevant
`
`infomiation or documentation known to and within the custody and/or control of Applicant as of
`
`that date. Should Applicant later learn that any response or production was incomplete, incorrect
`
`when made, or though correct when made is no longer accurate, the response shall be timely
`
`supplemented as required by Rule 26 of the Federal Rules of Civil Procedure.
`
`DAlJ3l:772098.1
`
`1
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`
`
`

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`
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`2.
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`No part of a response shall be left unanswered merely because an objection is
`
`interposed as to any part thereof. Where an objection is made to any Request, or subpart thereof,
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`the objection shall be made in writing and shall state all grounds with specificity.
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`3.
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`If the information sought is not in Applicant’s possession and/or control, indicate
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`the company and/or individuals who would have such knowledge.
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`4.
`
`In responding to the following Requests, please furnish all information available
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`to you, including information in the possession of your representatives, not merely information
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`within the personal knowledge of the person responding to these Requests.
`
`In the event the
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`admission to any Request is not within your knowledge, or a complete admission to a particular
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`Request is not possible or is objected to, your answer should so indicate and you should admit
`
`the Request to the extent possible, stating why only a partial admission is given.
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`5.
`
`In the event that Applicant objects to any Request herein based upon an allegation
`
`of’ privilege (including work product) or immunity to discovery, it is requested that Applicant
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`provide an appropriate privilege log which identifies the nature of the privilege which is being
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`claimed as well as information necessary to establish the necessary elements of the privilege.
`
`DEFINITIONS
`
`The definitions set forth in Opposer’s First Set of Interrogatories to Applicant, served
`
`concurrently herewith, are incorporated herein by reference.
`
`REQUESTS FOR ADMISSION
`
`REQUEST TO ADIVIIT NO. 1:
`
`Admit
`
`that Exhibit A attached hereto is a true and correct copy of information
`
`downloaded from the website of the United States Patent and Trademark Office with respect to
`
`Serial No. 75/730,556 for the mark COOLALERTS.
`
`REQUEST TO ADMIT NO. 2:
`
`Admit that COOL is the dominant portion of the mark which is the subject of Application
`
`Serial No. 75/730,556
`
`DALI)! :772098.l
`
`2
`
`

`
`
`
`REQUEST TO ADMIT NO. 3:
`
`Admit that Opposer has standing to bring this proceeding.
`
`REQUEST TO ADMIT N0. 4:
`
`Admit
`
`that Opposer is the ‘owner of United States Trademark Registration Nos.
`
`2,243,581; 2,243,582; 2,243,584; 2,243,583; 2,251,862; 2,309,646; and 2,322,501.
`
`_l3___EQUEST TO ADMIT NO. 5:
`
`Admit that Applicant intends to use the Alleged Mark in connection with computer
`
`softwarefor the management ofcomputer nenvorks.
`
`gngunsr TO ADMIT N0. 6:
`
`Admit that the computer software sold under any or all of Opposer's Marks is related to
`
`computer software for the management of computer networks.
`
`REQUEST TO ADMIT NO. 7:
`
`Admit that the goods Applicant intends to offer or offers under Applicant's Alleged Mark
`
`and the goods sold under any or all of Opposer's Marks are sold in the same channels of trade.
`
`"REQUEST TO ADMIT N0. 8:
`
`Admit that goods Applicant intends to offer or offers under Applicant's Alleged Mark and
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`the goods sold under any or all of Opposer's Marks are sold or intended to be sold to the same
`
`class of consumers.
`
`REQUEST TO ADMIT NO. 9:
`
`Admit that there is likelihood of confusion between any or all of Opposer's Marks and
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`Applicant's Alleged Mark.
`
`REQUEST TO ADNIIT NO. 10:
`
`Admit that the customers, or intended customers of Applicant's goods or services sold or
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`intended to be sold under Applicant's Alleged Mark, would be confused, misled or deceived by
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`Applicant's use of the mark COOLALERTS.
`
`DAl.D1:772098.l
`
`3
`
`

`
`
`
`if
`
`I
`
`REQUEST TO ADMIT NO. 10:
`
`Admit that Applicant's goods and/or services and Opposer's goods are related in such a
`
`manner or marketed under circumstances such that they are likely to be encountered by the same
`
`persons under circumstances that would give rise, because of the marks used thereon, to the
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`mistaken belief that they originate from or are in some way associated with the same producer.
`
`Respectfully submitted this the 19th day of December, 2003,
`
`Priscilla L. Dunckel
`
`Pamela S. Ratliff
`
`Baker Botts L.L.P.
`
`2001 Ross Ave., Suite 600
`Dallas, Texas 75201-2980
`Telephone: (214) 953-6532
`Telecopier: (214) 661-4899
`
`ATTORNEYS FOR OPPOSER
`
`STERLING SOFTWARE, INC.
`
`DAUN :T72098.1
`
`

`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of Opposer's First Set of Requests for
`
`Admissions to Applicant, was served on the attorneys of record for Applicant on the date
`
`indicated below, via United States Express Mail addressed to the following on this the 19th day
`
`of December, 2003:
`
`John M. Kim, Esq.
`Gray Cary Ware & Freidenrich LLP
`4365 Executive Drive, Suite 1100
`San Diego, California 92121-2133
`Telephone: 858.638.6859
`Facsimile: 85 8.677. 1400
`
`Attorneys for Applicant
`
`S.
`Pamela S. Ratliff
`
`DAL0l:7T2098.l
`
`5
`
`

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`
`
`EXHIBIT A
`
`DALDI :7'.'2098.1
`
`6
`
`

`
`
`Latest Status Info
`Page 1 of 2
`
`i
`
`f i
`
`Thank you for your request. Here are the latest results from the TARR web server.
`
`This page was generated by the TARR system on 2003-12-19 16:07:28 ET
`
`Serial Number: 75730556
`
`Registration Number: (NOT AVAILABLE)
`
`Mark (words only): COOLALERTS
`
`Standard Character claim: No
`
`Current Status: An opposition is now pending at the Trademark Trial and Appeal Board.
`
`Date of Status: 2000-06-16
`
`Filing Date: 1999-07-14
`
`Transformed into a National Application: No
`
`Registration Date: (DATE NOT AVAILABLE)
`
`Register: Principal
`
`Law Dffice Assigned: TMO Law Office 114
`
`Attorney Assigned:
`CHHINA KARANENDRA S Employee Location
`
`Current Location: 849 -TTAB
`
`Date In Location: 2000-04-13
`
`i
`LAST APPLICANT(S)/0WNER(S) OF RECORD
`__
`1. Atwood Daniel Cool
`
`Address:
`
`Atwood Daniel Cool
`1721 Wilstone Ave
`
`Encinitas, CA 92024
`United States
`
`Legal Entity Type: Individual
`Country of Citizenship: United States
`
`_
`
`GOODS AND/OR SERVICES
`_
`Computer Software for the management of computer networks
`International Class: 009
`
`http://tarr.uspto.goV/servlet/tarr?regser=serial&entIy=75%2F730556&action=Request+St...
`
`12/19/2003
`
`

`
`
`~
`Latest Status Info
`_
`i
`Page 2 of 2
`,
`
`.
`
`t
`
`,-—.
`
`First Use Date: (DATE NOT AVAILABLE)
`First Use: in Commerce Date: (DATE NOT AVAILABLE)
`
`Basis: 1(b)
`
`
`
`
`
`ADDITIONAL INFORMATION
`
`(NOT AVAILABLE)
`
`
`
`
`
`
`MADRID PROTOCOL INFORMATION
`
`
`(NOT AVAILABLE)
`
`
`
`PROSECUTION HISTORY
`
`
`
`2000-06-16 - Opposition instituted for Proceeding
`
`2000-06-16 - Opposition instituted for Proceeding
`
`2000-02-03 - Extension of time to oppose — Filed
`
`2000-01-04 - Published for opposition
`
`1999- 12-03 - Notice of publication
`
`1999-11-04 - Approved for Pub - Principal Register (Initial exam)
`
`1999-10-26 - Examiner's amendment mailed
`
`1999--10-25 - Case file assigned to examining attorney
`
`
`
`CONTACT INFORMATION
`
`
`Correspondent (Owner)
`JOHN M. KIM
`
`GRAY CARY WARE & FREIDENRICH LLP
`
`4365 EXECUTIVE DRIVE, SUITE 1100
`SAN DIEGO, CA 92121-2133
`United States
`
`
`
`http://tarr.uspto. gov/servlet/ta;rr?regser=seria1&ent1y=75%2F73 05 S 6&action=Request+St. ..
`
`12/19/2003
`
`

`
`

`
`
`
`EXHIBIT B
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 118,919
`
`In the matter of:
`
`Application Serial No. 75/730,556
`Mark: COOLALERTS
`
`Filed on July 14, 1999
`Published in the Official Gazette
`on January 4, 2000
`
`§ § §
`
`§ §
`
`§
`§
`§
`
`§ §
`
`§
`§
`§
`
`STERLING SOFTWARE, INC.
`
`Opposer,
`
`vs.
`
`ATWOOD DANIEL COOL
`
`Applicant.
`
`AFFIDAVIT OF PAMELA S. RATLIFF
`
`1, Pamela S. Ratliff, affirm as follows:
`
`1.
`
`I am associated with the firm of Baker Botts L.L.P., and submit this sworn
`
`statement in support of Opposer’s Motion for Summary Judgement.
`2.
`Attached as Exhibit A is a true and accurate copy of Opposer’s First Set of
`Requests for Admissions to Applicant, which I served on Applicant’s attorney of record on
`December 19, 2003.
`3.
`I was never served with responses to Opposer’s First Set of Requests for
`Admissions to Applicant, and I have never received any communication from Applicant or
`Applicant’s attorney regarding responses to Opposer’s discovery requests.
`4.
`Attached as Exhibit D are true and correct copies of the U.S. federal registration
`certificates for Opp0ser’s Marks.
`I declare under penalty of perjury that the foregoing is true and correct.
`
`Pamela S. Ratliff .
`
`Baker Botts L.L.P.
`
`2001 Ross Avenue, Suite 600
`
`Dallas, Texas 75201-2980
`
`Telephone: (214) 953-6532
`Telecopier: (214) 661-4532
`
`Date: March 19, 2004
`
`DAL01:786313.2
`
`9
`
`

`
`
`
`

`
`
`
`EXHIBIT C
`
`OPPOSER’S MARKS
`
`Registration fig,
`
`Mark
`
`Goods/Services
`
`2,24-3,581
`
`COOL:DAT
`
`2,243,582
`
`COOL:JEX
`
`2,243,584
`
`COOL:BIZ
`
`2,f243,5 83
`
`COOL:STUFF
`
`2,251,862
`
`COOL:GEN
`
`2,309,646
`
`COOL:XTRAS
`
`DALD] :'I'863l3.2
`
`10
`
`Computer programs for logical and
`physical data design and database.
`(IC 9)
`
`Computer programs for application
`modeling
`including
`design
`and
`construction of computer programs.
`(IC 9)
`
`Computer programs for business and
`workflow modeling. (IC 9)
`
`Computer programs for business and
`workflow modeling; for logical and
`physical data design and database
`management; for full-life cycle
`model-based application
`development; for application
`modeling including design and
`construction of computer programs;
`and for application modeling
`including design and assembly of
`software components. (IC 9)
`
`Computer programs for full-life
`cycle model-based application
`development. (IC 9)
`
`Utilities for computer programs for
`business and workflow modeling; for
`logical and physical data design and
`database management;
`for
`full
`life
`cycle
`model-based
`application
`development;
`for
`application
`modeling
`including
`design
`and
`construction of computer programs;
`and
`for
`application modeling
`
`

`
`
`
`including design and assembly of
`software components. (IC 9)
`
`Computer program which provides a
`relational database and generation
`tool for a modeling environment. (IC
`9)
`
`Software for developing multi—tier,
`enterprise-scale
`client/server
`for
`applications
`and
`improving
`application
`software
`development
`and printed instructional manuals,
`therefor, sold as a unit. (IC 9)
`
`Software development tool used to
`develop software applications and
`generate software applications, to be
`installed and run on multiple
`platforms, and printed instructional
`manuals, sold as a unit. (IC 9)
`
`Computer software development tool
`used to develop software
`applications and to generate software
`applications and printed instructional
`manuals, therefor, sold as a unit. (IC
`
`9)
`
`Component-oriented and
`object—oriented computer software
`development and design tools for use
`in analyzing, creating, documenting,
`and maintaining scalable enterprise
`business models, and that provide
`component modeling, physical
`implementation, design, test and
`debug support, and printed
`instructional manuals, therefor, sold
`
`as a unit. (IC 9)
`
`2,322,501
`
`COOL: DBA
`
`2,341,683
`
`COOL:ENTERPRISE
`
`2,379,968
`
`COOL:PLEX
`
`2,432,053
`
`COOLQE
`
`2,502,594
`
`COOL:JOE
`
`DAL0l 27863132
`
`ll
`
`

`
`

`
`
`
`EXHIBIT D
`
`COPIES OF REGISTRATION CERTIFICATES FOR OPPOSER’S MARKS
`
`DAL0l:786313.2
`
`12
`
`

`
`
`
`Int. Cl.: 9
`
`, 2 , 6
`'
`.
`.
`I
`.:
`Reg. No. 2,243,581
`6 3 , and 38
`Pnor U S C s 21, 23
`
`-United States Patent and Trademark Office Registered May 4,1999
`
`TRADEMARK
`
`PRINCIPAL REGISTER -
`
`COOL:DAT
`
`STERLING SOFTWARE,
`CORPORATION)
`300 CRESCENT COURT, SUITE 200
`DALLAS, TX 75201
`
`INC.
`
`(DELAWARE
`
`DATABASE MANAGEMENT, IN CLASS 9 (U.S.
`CLS. 21, 23, 26, 36 AND 38).
`FIRST USE
`7-0-1997;
`7-0-I997.
`
`IN COMMERCE
`-
`
`SN T5-314,563, FILED 6-25-1991‘.
`
`FOR: COMPUTER PROGRAMS FOR LOGI-'
`CAL AND PHYSICAL DATA DESIGN AND
`
`MARK SPARACINO, EXAMINING ATTORNEY
`
`

`
`
`
`Int. CL: 9
`
`Prior U.S. Cls.: 21, 23, 26, 36, and 38
`
`Reg. No. 2,243,582
`
`United States Patent and Trademark Office
`
`Registered May 4, 1999
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`COOL:JEX
`
`STERLING SOFTWARE,
`CORPORATION)
`300 CRESCENT COURT, SUITE 200
`DALLAS, TX 'I520l
`
`INC.
`
`(DELAWARE
`
`GRAMS, IN CLASS 9 (U.S. CLS. 21, 23. 26, 36
`AND 33).
`FIRST USE
`7-0-1997.
`
`IN COMMERCE
`
`7-0-1997;
`
`FOR: COMPUTER PROGRAMS FOR APPLI-
`CATION MODELING INCLUDING DESIGN
`AND CONSTRUCTION OF COMPUTER PRO-
`
`SN 7S—3l4,565. FILED 6-25-1997.
`
`MARK SPARACINO, EXAMINING ATTORNEY
`
`
`
`

`
`
`
`Int. CL: 9
`
`_
`
`Prior U.S. Cls.: 21, 23, 26, 36, and 38
`
`Reg. No. 2,243,584
`- United States Patent and Trademark Office Registered May 4,1999
`
`
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`CO0L:BIZ
`
`STERLING SOFTWARE,
`CORPORATION)
`300 CRESCENT COURT, SUITE 200
`DALLAS, TX 7520]
`
`INC.
`
`(DELAWARE
`
`FOR: COMPUTER PROGRAMS FOR BUSI-
`NESS AND WORKFLOW MODELING,
`IN
`CLASS 9 (US. CLS. 21, 23, 26, 36 AND 38).
`
`FIRST USE
`7-0-1997.
`
`7.0.1997;
`
`IN COMMERCE
`
`SN 75-314,569, FILED 6-25-1997.
`
`MARK SPARACINO, EXAMINING ATTORNEY
`
`

`
`
`
`Int. Cl.: 9
`
`Prior U.S. Cls.: 21, 23, 26, 36, and 38
`
`Reg. No. 2,243,583
`United States Patent and Trademark Office
`Registered May 4, 1999
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`COOL:STUFF
`
`STERLING SOFTWARE,
`CORPORATION)
`300 CRESCENT COURT, SUITE 200
`DALLAS, TX 75201
`
`INC.
`
`(DELAWARE
`
`FOR: COMPUTER PROGRAMS FOR BUSI-
`NESS AND WORKFLOW MODELING; FOR
`LOGICAL AND PHYSICAL DATA DESIGN
`AND DATABASE MANAGEMENT; FOR FULL-
`LIFECYCLE MODEL-BASED APPLICATION
`DEVELOPMENT; FOR APPLICATION MODEL-
`ING INCLUDING DESIGN AND CONSTRUC-
`
`TION or compunsn PROGRAMS; AND FOR
`APPLICATION
`MODELING
`INCLUDING
`DESIGN AND ASSEMBLY o1= SOFTWARE
`COMPONENTS, IN CLASS 9 (11.8. CLS. 21, 23,
`26, 36 AND 33).
`FIRST USE
`7-0-1997.
`
`IN COMMERCE
`
`7-0-1997;
`
`SN 75-314,567, FILED 6-25-I997.
`
`MARK SPARACINO, EXAMINING ATTORNEY
`
`

`
`
`
`Int. CL: 9
`Prior U.S. Cls.: 21, 23, 26, 36, and 38
`United States Patent and Trademark Office
`
`Reg No_ 2,251,862’
`Registered June 3,1999
`
`'
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`COOL:GEN
`
`STERLING SOFTWARE.
`CORPORATION)
`300 CRESCENT COURT, SUITE 200
`DALLAS. TX 75201
`
`INC.
`
`(DELAWARE
`
`DEVELOPMENT, IN CLASS 9 (U.S. CLS. 2|, 23,
`26, 36 AND 38).
`_
`FIRST USE
`IN COMMERCE
`7-0-1997.
`
`7-0-1997;
`
`SN 75—3I4,564, FILED 6-25-I997.
`
`FOR: COMPUTER PROGRAMS FOR FULL-
`LIFECYCLE MODEL-BASED APPLICATION
`
`MARK SPARACINO. EXAMINING ATTORNEY
`
`

`
`
`
`Int. CL: 9
`
`Prior U.S. Cls.: 21, 23, 26, 36, and 38
`
`Reg. No. 2,309,646
`
`United States Patent and Trademark Office
`
`Registered Jan. 18, 2000
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`COOL:XTRAS
`
`DESIGN AND CONSTRUCTION OF COMPUT-
`ER PROGRAMS; AND FOR APPLICATION
`MODELING INCLUDING DESIGN AND AS-
`SEMBLY OF SOFTWARE COMPONENTS.
`IN
`CLASS 9 (U.S. CLS. 2|, 23. 26, 36 AND 38).
`FIRST USE
`7-0—I997;
`IN COMMERCE
`7-0-1997.
`
`SN 75—3I4.568. FILED 6-25-1997.
`
`MARK SPARACINO, EXAMINING ATTORNEY
`
`STERLING SOFTWARE,
`CORPORATION)
`300 CRESCENT COURT, SUITE 200
`DALLAS, TX 75201
`
`INC.
`
`(DELAWARE
`
`FOR: UTILITIES FOR COMPUTER PRO-
`GRAMS FOR BUSINESS AND WORKFLOW
`MODELING; FOR LOGICAL AND PHYSICAL
`DATA DESIGN AND DATABASE MANAGE-
`MENT;
`FOR FULL LIFECYCLE MODEL-
`BASED APPLICATION DEVELOPMENT; FOR
`APPLICATION MODELING
`INCLUDING
`
`‘:_=.__,;.€‘:........xI.aa._a...._..._;'2:-.—.-;:-..__..
`
`
`
`
`

`
`
`
`Int. CL: 9
`
`Prior U.S. CIs.: 21, 23, 26, 36, and 38
`
`United States Patent and Trademark Office
`
`Reg. No. 2,322,501
`
`Registered Feb. 22, 2000
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`COOL:DBA
`
`STERLING SOFTWARE.
`CORPORATION)
`300 CRESCENT COURT, SUITE I200
`' DALLAS. TX 7520]
`
`INC.
`
`(DELAWARE
`
`VIRONMENT, [N CLASS 9 (us. CLS. 21, 23. 26.
`35 AND 33).
`FIRST USE 10-26-1998;
`10-26-1998.
`
`IN COM M ERCE
`
`FOR: COMPUTER PROGRAM WHICH PRO-
`VIDES A RELATIONAL DATABASE AND
`GENERATION TOOL FOR A MODELING BN-
`
`SN 75—S75.248, FILED l0—23—I998.
`
`ESTHER BELENKER. EXAMINING ATTOR-
`NEY
`
`

`
`
`
`Int. Cl.: 9
`
`Prior U.S. Cls.: 21, 23, 26, 36, and 38
`
`Reg. No. 2,341,683
`United States Patent and Trademark Office
`Registered Apr. 11, 2000
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`COOL:ENTERPRISE
`
`STERLING SOFTWARE,
`CORPORATION)
`300 CRESCENT COURT, SUITE 200
`DALLAS, TX. 75201
`
`INC.
`
`(DELAWARE
`
`MANUALS, THEREFOR, SOLD AS A UNIT, IN
`CLASS 9 (U.S. CLS. 21, 23. 26, 36 AND 38).
`FIRST USE
`7-O—I997;
`IN
`COMMERCE
`7-0-1997.
`
`DEVELOPING
`FOR
`SOFTWARE
`FOR:
`MULTI-TIER, ENTERPRISE-SCALE CLIENT/
`SERVER APPLICATIONS AND FOR IMPROV-
`ING APPLICATION SOFTWARE DEVELOP-
`MENT AND PRINTED INSTRUCTIONAL
`
`SN 75—320.6I2, FILED 7-2-I997.
`
`KATHLEEN M. VANSTON, EXAMINING AT-
`TORNEY
`
`

`
`
`
`Int. CL: 9
`
`Reg. No. 2,379,968
`Prior U.S. Cls.: 21, 23, 26, 36, and 38
`Registered Aug. 22,2000
`United States Patent and Trademark Office
` _:__:
`
`..
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`COOL:PLEX
`
`INC.
`
`(DELAWARE COR-
`
`STERLING SOFI'WARE,
`PORATION)
`.300 CRESCENT COURT. SUITE 1200
`DA'-'-’’*S-TX 7520'
`FOR: SOFTWARE DEVELOPMENT TOOL USED
`TO DEVELOP SOFTWARE APPLICATIONS AND
`GENERATE SOFTWARE APPLICATIONS. TO BE IN-
`STALLED AND RUN ON MULTIPLE PLATFORMS.
`
`INSTRUCTIONAL MANUALS.
`PRINTED
`AND
`THEREFOR, SOLD AS A UNIT, IN CLASS 9 (U.S.
`CLS. 21. 23, 26. 36 AND 38).
`FIRST USE 3-3-1993;
`IN COMMERCE 8-3-1998.
`
`5” 75-529-'57-“LED 7*31“'993-
`.
`ESTHER BELENKER, EXAMINING ATTORNEY
`
`
`
`$a—..;;;;..
`
`

`
`
`
`
`
`Int. Cl.: 9
`
`Prior U.S. CIs.: 21, 23, 26, 36, and 38
`
`United States Patent and Trademark Office
`
`Reg. No. 2,432,053
`
`Registered Feb. 27, 200]
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`COOL:2E
`
`STERLING SOFTWARE,
`PORATION)
`300 CRESCENT COURT. SUITE I200
`DALLAS, TX 7520!
`
`INC.
`
`(DELAWARE COR-
`
`TIONS AND PRINTED INSTRUCTIONAL MANUALS.
`THEREFOR. SOLD AS A UNIT,
`IN CLASS 9 (U.S.
`CLS. 2|, 23. 26, 36 AND 38).
`FIRST USE |I—2—|998: IN COMMERCE II—2—|998.
`
`FOR: COMPUTER SOFTWARE DEVELOPMENT
`TOOL USED TO DEVELOP SOFTWARE APPLIC/\~
`TIONS AND TO GENERATE SOFTWARE APPLICA-
`
`SN 75—529,I58, FILED 7—3I—I998.
`
`ROBERT LORENZO. EXAMINING ATTORNEY
`
`

`
`
`
`Int. Cl.: 9
`
`Prior U.S. Cls.: 21, 23, 26, 36, and 38
`
`Reg. No. 2,502,594
`United States Patent and Trademark Office
`Registered Oct. 30, 2001
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`COOL:JOE
`
`STERLING SOFTWARE, INC. (DELAWARE COR-
`PORATION)
`300 CRESCENT COURT. SUITE 1200
`’DALLAS. TX 7520!
`
`SUPPORT, AND PRINTED INSTRUCTIONAL MAN-
`UALS, THEREFOR, SOLD AS A UNIT, IN CLASS 9
`(U.S. CLS. 2|, 23, 26, 36 AND 38).
`
`FOR: COMPONENT-ORIENTED AND OBJECT-
`ORIENTED COMPUTER SOFTWARE DEVELOP-
`MENT AND DESIGN TOOLS FOR USE IN ANA-
`LYZING, CREATING, DOCUMENTING AND
`MAINTAINING SCALABLE ENTERPRISE BUSI-
`NESS MODELS, AND THAT PROVIDE COMPO-
`NENT MODELING, PHYSICAL
`IMPLEMENTATION. DESIGN. TEST AND DEBUG
`
`FIRST USE I-20-1999; IN COMMERCE I-20-I999.
`
`OWNER OF US. REG. NOS. 2,243,58l.'2,25l,862,
`AND OTHERS.
`
`SN 75—689,69l, FILED 4-23-1999.
`
`ESTHER BELENKER. EXAMINING ATTORNEY
`
`

`
`
`
`B
`
`U--P
`
`March 19, 2004
`
`Via Express Mail EL498403679US
`
`Traarrrrrark Trial and appear Baarrr
`U.S. Patent and Trademark Office
`:98)?
`Dme
`NO
`
`Arlington VA 22202-3513
`
`2001 R055 AVENUE
`DALLAS, TEXAS
`75201-2930
`214.953.6500
`FAX 214.953.6503
`
`-Eflfi
`
`AUSTIN
`BAKU
`DALLAS
`HOUSTON
`LONDON
`MOSCOW
`NEW YORK
`RJYADH
`WASHINGTON
`
`Pamela S. Ratliff
`214.953.6532
`FAX 214.661.4532
`
`Pamela"mmH@b°k°’b°"s'°°m
`
`ll|l||ll||||llIl||||||
`
`I mum ll
`ll
`Hmmm
`I
`03-19-2004
`U.8. Plurltlt TMOWTM Mall RI=D1D1
`
`Re:
`
`Sterling Software, Inc. v. Atwood Daniel Cool
`Opposition No: 118,919
`Mark: COOLALERTS
`
`Our File: 0631702258
`
`Dear Sir:
`
`Enclosed please find Opposeris Motion for Summary Judgment‘. Your attention is
`respectfully requested to this document.
`
`through
`Copies of this motion request have been timely served upon Applicant
`Applicant’s counsel of record via express mail. A proper certificate of service is enclosed.
`
`Your assistance is greatly appreciated in this matter.
`and remain
`
`I look forward to hearing from you
`
`Very truly yours
`
`pm¢w@S.
`
`Pamela S. Ratliff
`
`PSR/sj g
`
`Enclosure(s)
`
`DAL0l:7869/-18.1