"N
`
`‘TlI Illll
`I\
`
`'0 ,——
`|I|lIl|llllllllllllllllllllllllllllllllll
`
`U.S. PI
`
`09-19-2001
`an: a. TMO1clTM Mall Rep! 0:. #70 UNITED STATES PATENT AND TRADEMARK OFFICE
`mar ORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.
`
`In the matter of:
`
`?>
`Application Serial No. 76/ 123,8
`Mark: YOUR COOLLINK TO T
`INTERNET
`
`Filed on September 6, 2000
`
`Published in the Official Gazette
`on May 22, 2001
`
`2
`ra
`/02
`
`Q
`
`§ § §
`
`§ §
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`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
`
`11749, believes that it will be damaged by registration of the mark YOUR COOLLINK TO THE
`
`INTERNET (the ”Opposed Mark") shown in Application Serial No. 76/123,883, 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. 76/123,883, for use in connection with "dissemination
`
`of advertising for others via an online global computer network in conjunction with media
`
`streaming audio/video webcasting services" in International Class 35. 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.
`
`09/25/2001 ZCLIFT01 00000007 76123883
`
`01 FC:377
`
`300.00 DP
`
`DAL01:630558.l
`
`
`
`‘TlI Illll
`I\
`
`'0 ,——
`|I|lIl|llllllllllllllllllllllllllllllllll
`
`U.S. PI
`
`09-19-2001
`an: a. TMO1clTM Mall Rep! 0:. #70 UNITED STATES PATENT AND TRADEMARK OFFICE
`mar ORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.
`
`In the matter of:
`
`?>
`Application Serial No. 76/ 123,8
`Mark: YOUR COOLLINK TO T
`INTERNET
`
`Filed on September 6, 2000
`
`Published in the Official Gazette
`on May 22, 2001
`
`2
`ra
`/02
`
`Q
`
`§ § §
`
`§ §
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`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
`
`11749, believes that it will be damaged by registration of the mark YOUR COOLLINK TO THE
`
`INTERNET (the ”Opposed Mark") shown in Application Serial No. 76/123,883, 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. 76/123,883, for use in connection with "dissemination
`
`of advertising for others via an online global computer network in conjunction with media
`
`streaming audio/video webcasting services" in International Class 35. 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.
`
`09/25/2001 ZCLIFT01 00000007 76123883
`
`01 FC:377
`
`300.00 DP
`
`DAL01:630558.l
`
`
`
`
`
`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
`
`confusingly 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.
`I
`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, Applicant’s proposed use of the Opposed Mark for use in connection with
`
`DAL01:630SS8.1
`
`
`
`
`
`"dissemination of advertising for others via an online global computer network in conjunction
`
`with media streaming audio/video webcasting services" would be likely to cause consumers to be
`
`confused, deceived or misled into the mistaken belief that App1icant’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. 76/123,883 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.
`
`Respectfully submitted this the 19th day of September, 2001,
`
`By:
`
`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.
`
`DAL01:630558.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 on SeptenW19, 2001.
`
`Name
`
`
`
`EL 827020805 US
`Express Mail Cert. No.
`
`DAL01:63OS58.1
`
`i
`
`
`
`
`
`Registration No.
`
`Mark
`
`Goods/Services
`
`EXHIBIT A
`
`2,243,581
`
`COOL:DAT
`
`2,243,582
`
`COOLIJEX
`
`2,243,584
`
`COOL:BIZ
`
`2,243,583
`
`COOL:STUFF
`
`2,251,862
`
`COOL:GEN
`
`2,309,646
`
`COOL:XTRAS
`
`DAL01:630558.1
`
`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)
`
`programs
`Computer
`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
`
`COOLZDBA
`
`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
`sofiware
`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 :630558.1
`
`
`
`
`
`EXHIBIT B
`
`Serial No.
`
`Mark
`
`Goods/Services
`
`75/689,691
`
`COOL:JOE
`
`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)
`
`DAL01:630558.1
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