.,—«—"\
`
`fimiaiuirrulmrra
`
`/ (I
`
`09.19-2oo1
`IE UNITED STATES PATENT AND TRADEMARK OFFICE
`WM M.\\Ron1D‘~"7°
`--5oRE THE TRADEMARK TRIAL AND APPEAL BOARD
`Us-"“°'“"‘"‘°
`
`"-3
`
`, 3
`,.-1
`
`Opposition No.
`
`In the matter of:
`
`Application Serial No. 76/123,882
`Mark: YOUR COOLLINK TO THE
`INTERNET
`
`Filed on September 6, 2000
`
`Published in the Official Gazette
`on May 22, 2001
`
`§
`§
`§
`
`§ §
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`STERLING SOFTWARE, INC.
`
`Opposer,
`
`vs.
`
`COOL PARTNERS, L.L.C.
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`Opposer, STERLING SOFTWARE, INC., a Delaware corporation, ("Opposer"),
`
`having a principal place of business at One Computer Associates Plaza, Islandia, New York
`
`ll749, believes that it will be damaged by registration of the mark YOUR COOLLINK TO THE
`
`INTERNET (the "Opposed Mark") shown in Application Serial No. 76/123,882, and hereby
`
`opposes that application.
`
`As grounds for its opposition, Opposer alleges:
`
`1.
`
`Applicant, COOL PARTNERS, L.L.C. ("Applicant"), seeks registration of
`
`the Opposed Mark, Application Serial No. 76/ 123,882, for use in connection with "entertainment
`
`services, namely, providing digitized audio programming of radio, music samples and sound
`
`recordings as well as providing information about music, music events, music artists and music
`
`available for purchasing via a global computer network" in International Class 41. Applicant
`
`filed this application on September 6, 2000, alleging that Applicant has a bona fide intention to
`
`use in commerce the mark YOUR COOLLINK TO THE INTERNET.
`
`09/24/2001 ZCLIFT01 00000130 76123882
`
`01 FC3377 DALO1:630552.l
`
`300'“ op
`
`‘DD
`
`
`
`fimiaiuirrulmrra
`
`/ (I
`
`09.19-2oo1
`IE UNITED STATES PATENT AND TRADEMARK OFFICE
`WM M.\\Ron1D‘~"7°
`--5oRE THE TRADEMARK TRIAL AND APPEAL BOARD
`Us-"“°'“"‘"‘°
`
`"-3
`
`, 3
`,.-1
`
`Opposition No.
`
`In the matter of:
`
`Application Serial No. 76/123,882
`Mark: YOUR COOLLINK TO THE
`INTERNET
`
`Filed on September 6, 2000
`
`Published in the Official Gazette
`on May 22, 2001
`
`§
`§
`§
`
`§ §
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`STERLING SOFTWARE, INC.
`
`Opposer,
`
`vs.
`
`COOL PARTNERS, L.L.C.
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`Opposer, STERLING SOFTWARE, INC., a Delaware corporation, ("Opposer"),
`
`having a principal place of business at One Computer Associates Plaza, Islandia, New York
`
`ll749, believes that it will be damaged by registration of the mark YOUR COOLLINK TO THE
`
`INTERNET (the "Opposed Mark") shown in Application Serial No. 76/123,882, and hereby
`
`opposes that application.
`
`As grounds for its opposition, Opposer alleges:
`
`1.
`
`Applicant, COOL PARTNERS, L.L.C. ("Applicant"), seeks registration of
`
`the Opposed Mark, Application Serial No. 76/ 123,882, for use in connection with "entertainment
`
`services, namely, providing digitized audio programming of radio, music samples and sound
`
`recordings as well as providing information about music, music events, music artists and music
`
`available for purchasing via a global computer network" in International Class 41. Applicant
`
`filed this application on September 6, 2000, alleging that Applicant has a bona fide intention to
`
`use in commerce the mark YOUR COOLLINK TO THE INTERNET.
`
`09/24/2001 ZCLIFT01 00000130 76123882
`
`01 FC3377 DALO1:630552.l
`
`300'“ op
`
`‘DD
`
`
`
`
`
`2.
`
`Since at least as early as 1997, Opposer began using marks containing the
`
`term "cool" (the "COOL Marks") on computer software and in connection with related services.
`
`' 3.
`
`Opposer owns numerous federal registrations for marks incorporating the
`
`term ''cool,'' for use on computer software. A summary of such registrations is attached hereto as
`
`Exhibit A.
`
`4.
`
`Opposer also owns a pending application incorporating the term "cool,"
`
`for use on computer software and related services. A summary of this pending application is
`
`attached hereto as Exhibit B.
`
`5.
`
`Since its first use of the mark, Opposer has continuously and extensively
`
`used the COOL Marks in connection with its goods in interstate commerce.
`
`6.
`
`Opposer has expended considerable sums of money in advertising,
`
`promoting, marketing, and otherwise developing the COOL Marks.
`
`7.
`
`The most prominent and distinctive portion of the COOL Marks is the
`
`initial term ''cool.''
`
`8.
`
`Due to Opposer's extensive distribution, sales and advertising of its goods
`
`and services provided under the COOL Marks, these marks have acquired extensive goodwill
`
`and consumer recognition throughout the United States and abroad, and the COOL Marks have
`
`become known throughout the United States and abroad as an indicator of goods and services
`
`provided by Opposer.
`
`9.
`
`Applicant's mark YOUR COOLLINK TO THE INTERNET is
`
`confiisingly similar to Opposer's COOL Marks. Both the COOL Marks and the Opposed Mark
`
`are used in connection with computer-related goods or services. Therefore, Applicant's mark is
`
`likely to cause confusion, or to cause mistake, or to deceive.
`
`10.
`
`On information and belief, Applicant’s services are or will be advertised
`
`and sold in the same channels of trade or to the same customers as Opposer's goods.
`
`Consequently, App1icant’s proposed use of the Opposed Mark for use in connection with
`
`DALOl:630552.1
`
`
`
`“entertainment services, namely, providing digitized audio programming of radio, music
`
`samples and sound recordings as well as providing information about music, music events, music
`
`artists and music available for purchasing via a global computer network" would be likely to
`
`cause consumers to be confused, deceived or misled into the mistaken belief that Applicant’s
`
`services emanate from, are affiliated with, or are otherwise related to Opposer when in fact they
`
`are not.
`
`11.
`
`For the foregoing reasons, the Opposed Mark is likely to cause confusion,
`
`or to cause mistake, or to deceive.
`
`12.
`
`Thus, Opposer will be damaged and harmed by the use and registration of
`
`the Opposed Mark.
`
`WHEREFORE, Opposer prays that Application Serial No. 76/123,882 be
`
`rejected, that no registration be issued to Applicant, and that this opposition be sustained in favor
`
`of Opposer.
`
`This Notice of Opposition is being submitted in duplicate. Please charge the
`
`$300.00 requisite fee to Deposit Account No. 02-0384 of Baker Botts.
`
`Respectfillly submitted this the 19th day of September, 2001,
`
`By:
`
`all/0z,u,u}.
`
`Anita Nesser
`
`BAKER BOTTS, L.L.P.
`2001 Ross Avenue
`
`Suite 600
`
`Dallas, Texas 75201-2980
`(214) 953-6790 Telephone
`(214) 661.4790 Facsimile
`
`ATTORNEYS FOR OPPOSER
`
`STERLING SOFTWARE, INC.
`
`DAL01:630S52.l
`
`
`
`
`
`
`I hereby certify that this correspondence is
`being deposited with
`the United States
`
`Postal Service "Express Mail Post Office to
`Addressee" service under 37 C.F.R. 1.10 in
`an envelope addressed to: Box TTAB-Fee,
`
`
`Assistant Commissioner
`for Trademarks,
`2900 Crystal Drive, Arlington, VA 22202-
`
`3513 nseptemb r1
`001.
`
`
`
` EL 827020796 US
`Express Mail Cert. No.
`
`
`
`
`DALOI :630552.l
`
`
`
`
`
`Registration No.
`
`Mark
`
`Goods/Services
`
`EXHIBIT A
`
`2,243,581
`
`COOL:DAT
`
`2,243,582
`
`COOL:JEX
`
`2,243,584
`
`COOL:BIZ
`
`2,243,583
`
`COOL:STUFF
`
`2,251,862
`
`COOL:GEN
`
`2,309,646
`
`COOL:XTRAS
`
`DAL01:630552.l
`
`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
`for
`development;
`application
`modeling
`including
`design
`and
`construction of computer programs;
`and
`for
`application modeling
`including design and assembly of
`software components.
`(IC 9)
`
`Computer programs
`cycle
`model-based
`development. (IC 9)
`
`full-life
`for
`application
`
`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)
`
`
`
`
`
`2,322,501
`
`COOL:DBA
`
`2,341,683
`
`COOL:ENTERPRISE
`
`2,379,968
`
`COOL:PLEX
`
`2,432,053
`
`COOL:2E
`
`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)
`
`DAL01:630552.l
`
`
`
`
`
`EXHIBIT B
`
`Serial No.
`
`Mark
`
`Goods/Services
`
`75/689,691
`
`COOL:JOE
`
`75/575,231
`
`COOL:TEAMWORK
`
`and
`
`object-
`Component-oriented
`software
`oriented
`computer
`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)
`
`in
`use
`for
`software
`Computer
`for
`computer-aided
`engineering
`requirements documentation, and for
`system design of real time embedded
`computer systems. (IC 9)
`
`DALOI :630552.l
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