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`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`CONVERSIVE, INC.
`
`Opposer,
`
`v.
`
`.
`:
`'
`
`Opposition No.: 91 160948
`Application No.: 78/305,402
`Mark: CONVERSAGENT
`
`CONVERSAGENT, INC.
`:
`(formerly, ACTIVE BUDDY, INC.) :
`
`Applicant.
`
`Commissioner for Trademarks
`
`Box: TTAB — NO FEE
`
`P.O. Box 145 1
`
`Alexandria, Virginia 22313-1451
`
`NOTIFICATION TO THE BOARD OF OPPOSER/RESPONDENT’S
`SUBSTITUTION OF REPRESENTATION
`
`The Applicant hereby notifies the Board of its appointment of new counsel in the
`
`above-referenced proceedings, effective immediately, through the encl sed Substitute
`
`Power of Attorney, and respectfully requests the Boa
`
`up ate its
`
`s accordingly.
`
`
`
`
`
`J ss M. Collen
`
`COLLEN IP
`
`The Holyoke-Manhattan Building
`80 South Highland Avenue
`Ossining-On-Hudson, NY 10562
`Tel: (914) 941-5668
`Fax: (914) 941-6091
`Attorneys for Applicant
`
`|l|||l|Illll||||||||||lllll||||||||||||||l|||||||l
`
`04-22-2005
`US. Patent & TMOfcITM Mail Rep! 0!. #64
`
`Date: April 20, 2005
`JMC/TPG
`
`Encl.: Substitute Power of Attorney
`Certificate of Service
`
`3 Duplicate Copies (4 total)
`
`

`
`
`
`//,1."_._-..
`
`.43
`
`1)
`
`.9)
`
`COLLEN IP, INTELLECTUAL PROPERTY LAW, P.C., THE HOLYOKE—
`
`MANHATTAN BUILDING, 80 SOUTH HIGHLAND AVENUE, OSSINING-ON-
`
`HUDSON, NEW YORK, 10562.
`
`SHOULD ANY OTHER FEE BE REQUIRED, THE PATENT AND TRADEMARK
`OFFICE IS HEREBY REQUESTED TO CHARGE SUCH FEE TO OUR DEPOSIT
`ACCOUNT 03-2465.
`
`I HEREBY CERTIFY THAT THIS CORRESPONDENCE IS BEING DEPOSITED
`
`WITH THE UNTILED STATES POSTAL SERVICE AS FIRST CLASS MAIL,
`POSTAGE PREPAID IN AN ENVELOPE ADDRESSED TO: ASSISTANT
`
`COMMISSIONER FOR TRADEMARKS, P.O. BOX 1451, ALEXANDRIA,
`VIRGINIA 22313-1451.
`COLLEN IP
`
`BY: gm4% Q , (29 @413
`
`DATE: April 20, 2005
`
`

`
`
`
`4)
`
`From: unknown
`
`Page: 2/2
`
`Date: 4/20/2005 12:29:55 PM
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`._.....
`
`CONVERSIVE, INC.
`
`Opposcr,
`
`v.
`
`CONVERSAGENT, INC.
`(formerly, ACTIVE BUDDY, INCL)
`
`Applicant.
`
`Opposition No.: 91 160948
`Application No.: 78/3 05,402
`Mark: CONVERSAGENT
`
`.
`:
`'
`2
`;
`
`SUBSTITUTE POWER OF ATTORNEY
`
`Sir:
`
`Applicant hereby appoints Jess M. Collcn member of the New York Bar at the
`address COLLEN IP, The I-lolyoke-Manhattan Building, 80 South Highland Avenue,
`Ossining-On~Hudson, New York 10562, Telephone No. (914) 941-5668 to prosecute the
`above:-czaptioned proceedings in the United States Patent and Trademark Office
`Trademark Trial and Appeal Board. to transact all business in the Patent and Trademark
`Offlce in connection therewith, and revoking all prior powers and appointments. The
`Applicant requests the Board to make this substitution and change the correspondence
`address for Applicanl.’s representative as well.
`
`CL“/crsi;lg~.=4.1L.iI1s;__._§____:
`
`(Applicant)
`
`By:
`
`(Primed Name)
`
`
`
`L3_-__Q.£4tr\:l‘
`
`Title:
`
`_C 3 0
`
`Date:
`
`05.
`
`COLLEN IP
`
`The Holyokc-Mauhauan Building
`80 South Ilighland Avcnuc
`Ossining-O11-1-ludson, New York 10562
`
`

`
`
`
`Q.’P
`
`0)
`
`I,
`
`Notificat on
`
`CERTIFICATE OF SERVICE
`
`The Board Of A licant’s Substitution Of Re resentation and Substitute
`
`, hereby certify that a copy ofthe foregoing
`
`%
`
`Power of Attorney and Motion to Suspend Proceedings was served upon the following
`parties via first class mail, this 20”‘ day of April, 2005:
`
`Kent E. Baldauf, Jr., Registration No. 3
`Webb Ziesenheim Logsdon Orkin & Hanson
`436 Seventh Avenue, 700 Koppers Bldg.
`Pittsburgh, PA 15219-1818
`
`Janene P. Bassett
`
`Sheppard Mullin
`1901 Ave. of the Stars, 16th Fl.,
`Los Angeles, CA 90067
`Tel: (310) 228-3731
`Fax: (213) 443-2773 2
`
`flags»
`
`Agni Q0.ZDG>/
`
`(Date)
`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`CONVERSIVE, INC.
`
`Opposer,
`
`v.
`
`.
`:
`:
`
`Opposition No.: 91160948
`Application No.: 78/305,402
`Mark: CONVERSAGENT
`
`:
`CONVERSAGENT, INC.
`(formerly, ACTIVE BUDDY, INC.) :
`
`Applicant.
`
`Commissioner for Trademarks
`Box: TTAB — NO FEE
`
`P.O. Box 1451
`
`Alexandria, Virginia 22313-1451
`
`MOTION TO SUSPEND OPPOSITION PROCEEDINGS
`
`Applicant, Conversagent, Inc. (“Conversagent”), pursuant to TBMP 510.02(a),
`
`hereby moves the Board to suspend the Opposition proceedings before the Trademark
`
`Trial and Appeal Board. Applicant seeks this suspension in light of an ongoing civil
`
`litigation between the parties that involve the parties’ rights with respect to the mark
`
`CONVERSAGENT.
`
`On February 24, 2005, Conversive, Inc. (herein referred to as “Opposer”), filed a
`
`civil action in the United States District Court for the Central District of California
`
`against Conversagent, Inc., Civil Action No. 05 CV 1399. A copy of the Complaint is
`
`attached hereto as Exhibit A. Opposer’s Complaint alleges, inter alia, issued which
`
`could resolve the issues presently before the Board in this administrative proceeding
`
`US. Patent & TM01'c/TM Mail RCPT D1. #64
`
`Hlllllllfllllllllllllllllllllllllllllllllllllllll
`
`04-22-2005
`
`

`
`
`
`Accordingly, Applicant respectfully requests that in order to avoid duplicative
`
`litigation, the Petition to Cancel be suspended until the final disposition of the above
`
`cited civil action.
`
`This motion is filed in triplicate.
`
`Respectfully submitted
`for Applicant,
`
`MBy:
`
`’
`/
`Jess M. Collen
`
`COLLEN IP
`
`The Holyoke-Manhattan Building
`80 South Highland Avenue
`Ossining, NY 10562
`Tel: (914) 941-5668
`Fax: (914) 941-6091
`Attorney for Applicant
`
`JMC/TPG
`
`Encl. — Exhibit A
`
`Dated: April 20, 2005
`
`COLLEN IP, INTELLECTUAL PROPERTY LAW, P.C., THE HOLYOKE-
`
`MANHATTAN BUILDING, 80 SOUTH HIGHLAND AVENUE, OSSINING-ON-
`
`HUDSON, NEW YORK, 10562.
`
`SHOULD ANY OTHER FEE BE REQUIRED, THE PATENT AND TRADEMARK
`OFFICE IS HEREBY REQUESTED TO CHARGE SUCH FEE TO OUR DEPOSIT
`ACCOUNT 03-2465.
`
`I HEREBY CERTIFY THAT THIS CORRESPONDENCE IS BEING DEPOSITED
`
`WITH THE UNTILED STATES POSTAL SERVICE AS FIRST CLASS MAIL,
`POSTAGE PREPAID IN AN ENVELOPE ADDRESSED TO: ASSISTANT
`
`COMMISSIONER FOR TRADEMARKS, P.O. BOX 1451, ALEXANDRIA,
`VIRGINIA 22313-1451.
`
`COLLEN IP
`
`BY: DOMM
`
`DATE: April 20, 2005
`
`

`
`
`
`JAMES M. BURGESS Ca]. Bar No. 151018
`KENT R. RAYGOR C’a1. Bar No. 117224
`L.
`JANENE P. BASSETT Cal. Bar No. 197722
`P11‘ 2: 00
`‘TEEFEB 214
`SHEPPARD MULLIN RICHTER & HAMPTON LL13
`Z-I.‘r,'
`1*:
`-,~-..
`1901.Avenue of the Stars Suite 1600 '
`. Los An eles California 90067-6017
`Tel: 31 -228-3700/Fax: 310-228-3701
`E-mail:
`kra
`or
`she
`ardmu11in.com
`E—maI_1:
`ur ess
`s e
`ar mu 1n.cOm
`E-maI1:_
`assett
`s e
`ar mu In.com ._
`
`
`
`OfCounse1:
`
`KENT E. BALDAUF; JR.
`JOHN W. MCILVAINE
`WEBB ZIESENHEIM LOGSDON ORKIN & HANSON, P.C.
`436 Seventh Avenue, 700 Koingers Building
`-1818
`Pittsbur h Penns lvania 152
`Tel: 41 -471-88 5/Fax: 412-471-4094
`WebbLaw.com
`KBa1dauflr
`E—mai1:
`e
`aw.com
`C vaIne
`E-mail:
`
`AttOme s for Plaintiff
`CONV RSIVE, INC.
`
`UNITED STATES DISTRICT COURT
`
`CONVERSIVE, INC.,
`
`0
`
`Plaintiff,
`
`CENTRAL DISTRICT OF CALIFORNIA —- WESTERN DIVISION
`Case
`C V
`I. 3
`COMPLAINT FOR DAMAGES ;,.;;3,
`AND INJUNCTION FOR:
`FEDERAL TRADEMARK
`
`V.
`
`(1)
`
`CONVERSAGENT, INC.,
`
`Defendant.
`
`
`
`(2)
`
`(3)
`
`(4)
`
`. (5)
`
`(6)
`
`INIFFINGEMENT [15 U.S.C. §
`FEDIZRAL UNFAIR
`
`.
`
`COMPETITION AND FALSE I
`DESIGNATION OF ORIGIN us
`U.S.C.]§A1125 a)]'
`*
`FEDE
`L T DEMARK
`DIIZLSUTIION [15 U.S.C. §
`CALIEORNIA TRADEMARK
`
`C
`
`.
`
`DILUTION CAL. BUS. &
`PROF. COD § 14330];
`‘ CALIFORNIA COMMON V
`LAW UNFAIR
`COMPETITION; AND
`CALIFORNIA UNFAIR
`COMPETITION ICAL. BUS. &
`PROF. CODE §§ 17200 et seq.];
`
`DEMAND FOR JURY TRIAL
`
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`
`‘following for its Complaint against Defendant Conversagent, Inc. (“Conversagent”):
`
` Plaintiff, Conversive, Inc. (“Conversive”),‘by its counsel, and avers the
`\OOO\lO\UI-I}-‘.UJi\J*-‘
`
`THE PARTIES
`
`1.
`
`V
`
`I Conversive, formerly known as Virtual Personalities, Inc., is a
`
`corporation organized and existing under the laws of Delaware, with its principal
`
`place of business at 3806 Cross Creek Road, Unit F, Malibu, California‘ 90265.
`
`On information-and belief, Conversagent is a corporation
`2.
`organized and existing under the lawsof Delaware, with its principal place of
`business at 481 Greenwich Street, Suite 5C, New York, New York 10013.’
`
`JURISDICTION AND VENUE
`
`3.
`
`This is an action for trademark infringement, trademark dilution,
`
`and unfair competition arising under the Federal Trademark Act of 1946, as
`
`amended, commonly known as the Lanham Act, ~15~U.S.C. §§ 1051 et seq., and the
`
`statutes and common law of California.
`
`4.
`This Court has jurisdiction over the subject matter and parties of
`this action pursuant to 28 U.S.C. §§. 1331, 1332(3) and 1338(3) and (b), and under
`the principle of supplemental jurisdiction pursuant to 28 U.S.C. § 1367. On
`information and belief, the damages suffered by Conversive due to Conversagent's
`
`unlawfiil acts exceed $75,000.
`
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`
`.5.
`
`Venue is proper in this judicialidistiict under 28 U.S.C. §
`
`l391(b) and (c) because a substantial part of the events giving rise to the claim "
`
`occurred in this judicial district.
`
`'
`
`0 BACKGROUND ALLEGATIONS
`
`6.
`On September 2, 2002, Conversive filed United States
`Trademark Application No. 78/161,055 for the mark CONVERSIVE for “computer
`
`software for allowing web—based interaction, namely, instant messaging, electronic
`
`mail and wireless interactive messaging.” Conversive sells computer software
`which allows for the interaction with data through the use of natural language. This
`
`-software is used in real time intemet relay communications platforms. Conversive’s
`software products include an interactive natural‘ language processing program used
`
`to build and customize interactive conversational mechanisms for use on web sites.
`
`These interactive conversational mechanisms offer functionality that includes
`
`assisting, answering questions and providing information to users of web sites.
`
`7.
`
`Conversive is the owner of United States Trademark Registration _
`
`No. 2,855,081 for the mark CONVERSIVE, which issued on June 15, 2004. A copy '
`of this registration is attached hereto as EXHIBIT A.
`
`8.
`
`Conversive is also the owner of multiple trademarks that include
`
`the word “AGENT”’for computer software for natural language applications. These
`
`
`
`marks include the following: READYAGENT; ANYWHERE AGENT; AGENT
`OPERATOR; AGENT EVERYWHERE; INSTANT AGENT; E—MAIL AGENT;
`
`EASYAGENT; ASSISTED RESPONSE AGENT; COLLEGE AGENT; and I
`
`A
`
`LIBRARY AGENT. Applications for the federal registration of most of these
`
`

`
`Conversagent sells and offers for sale computer sofiware used to
`9.
`A
`deliver natural language-capable applications to networked-.tv_vo'-‘way text messaging
`
`enviromnents, namely,wireless_'networks,- the intemet, and instant messaging-
`applications; computer software _that enables data integration into two-way
`conversational applications and enables users to access data from numerous and
`various data sources; software development tools and server softwareifor the
`development and distribution ofnatural language capable software applications;
`downloadable software for use in the collection, aggregation, and analysis of A
`information ‘from users ofnatural language-enabled applications, delivered via the
`
`Internet and wireless networks; and computer software used for web-based instant
`
`o\o'oo\1oV«.n4>‘n.um....
`
`ll messaging applications.
`
`.
`
`12
`
`13
`
`10.
`
`Conversagent’s use of its confusingly similar name
`
`14
`
`“Conversagent” for the sale of directly competitive software is intended to, has and
`
`is likely to continue foster market confusion that Conversagent’s products originate,
`
`are sponsored by, or are otherwise affiliated with Conversive because of the
`similarity of the “Conversagent” name to the registered CONVERSIVE trademark -'
`
`H.
`
`of Conversive, as well as the various “AGENT” marks of Conversive.
`
`ll.
`
`Unless the relief requested herein by Conversive is granted,
`
`Conversive will suffer fiirther serious, immediate, and irreparable harm, including,
`
`but not limited to, customer confiision, dilution, and loss of goodwill.
`
`. _, FIRST CAUSE OF ACTION
`
`(Trademark Infringement Under 15 U.S.C. § 1114)
`
`12.
`
`Conversive repeats and realleges the averments contained in
`
`2]
`
`22
`
`23
`
`25
`
`26
`
`27
`
`28 paragraphs 1 through l l of this Complaint as if fully stated herein.
`
`15
`
`16
`
`17
`
`18
`
`l9
`
`20
`
`
`
`

`
`13.
`
`The registered trademark CONVERSTVE for web application
`
`7 ‘software is the sole and exclusive property of Conversive. The various trademarks
`including the word “Agent” for web application software are the sole and exclusive
`
`property of Conversive
`
`14.
`
`Conversive has never authorized.Conversagent to use the
`
`CONVERSIVE trademark or any mark confusingly similar thereto, including
`
`“Conversagent”. Conversive has never authorized Conversagent to use the AGENT
`
`trademarks or any mark confusingly similarthereto, including “Conversagent”
`
`15.
`
`Conversagent has, without the consent of Conversive used its
`
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`A: [Q ' ’confi1singly"similar‘“Conversive” mark in connection with its sale of web —'
`
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`application software and has caused such products to enter interstate commerce.
`
`16.
`
`"Upon information and belief, Conversagent has promoted,
`
`v-I» O\ marketed, and sold software in conjunction with the name “Conversagent” with the
`
`—t \l knowledge and belief that such unauthorized use in commerce has caused and is
`
`>—dn—I
`
`likely to cause confusion, or to cause mistake, or to deceive the purchasers of
`
`\0.00 Conversagent productsthat such products are manufactured, endorsed, sponsored, -
`
`
`
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`
`authorized, recommended, or warranted by Conversive.
`
`17.
`
`Conversagent’s use of its infringing “Conversagent” name in
`
`interstate commerce has caused and is likely to cause confusion, or to cause mistake,
`
`or todeceive the purchasers of»-Conversagen-t—softwareato mistakenly believe that
`
`such products are manufactured, sponsored, endorsed, authorized, recommended, or
`
`warranted by Conversive.
`
`

`
`
`
`Conversagent’s conduct violates Section 32(1) of the Lanham
`18.
`Act, 15 U.S.C.'§ 11 14(1).
`
`Conversive has been, and is likely to continue to be, irreparably
`19.
`' harmed and damaged by Conversagent’s acts of trademark infiingernent if
`
`Conversagentis not restrained, in that Conversive has suffered and isfiilikely to suffer ,
`a loss of salesand profits ‘each timecustomers believe that the products of
`
`Conversagent are manufactured, sponsored, endorsed, authorized, recommended, or
`
`warranted by Conversive.
`
`Conversive has also been, and islikely to continue to be,
`20.
`irreparably harmed and damaged by Conversagent’s aforementioned acts, of
`
`trademark infringement, unless Conversaigent’s is restrained, in that Conversive has
`
`suffered a destruction of goodwill on each occasion that its customers believe that
`
`the products of Conversagent are manufactured, sponsored, authorized, endorsed, 2
`
`recommended, or warranted by Conversive.
`
`SECOND CAUSEOF ACTION
`
`(False Designation of Origin and Unfair Competition
`
`in Violation of 15 U.S.C. § l125(a))
`
`21.
`
`Conversive repeats and realleges the avennents contained in
`
`paragraphs 1 through 20 of this Complaint as if fully stated herein.
`
`22.
`
`The distinctive CONVERSIVE trademark, and the public
`
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`- recognition thereof, and the public association thereof with Conversive are protected
`
`under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
`
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`
`

`
`23.
`
`Conversive has never authorized Conversagent to use.’ its
`
`CONVERSIVE or the AGENT trademarks, the mark “Conversagent” or any other
`
`mark in connection with Conversagent’s sale of software or otherwise.
`
`Conversagent has, without the consent of Conversive, used the
`24.
`name “Conversagent” in connection with its sale of web applicationsoftware and
`
`has caused such products ‘to enter interstate commerce.
`
`_
`25. Upon information and belief, Conversagent has promoted,
`marketed, and/or sold software in conjunction with the name “Conversagent” with
`
`the knowledge and belief that such unauthorized use in commerce has caused and is
`
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`.likely_to. con.t.in»ue..to. cause..confusi.on,—-or--to -cause-.mi»stak_e», or to -deceive, the
`
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`
`purchasers of C0nversagent’s products that such products are manufactured,
`
`—n A developed, formulated, endorsed, sponsored, or authorized by Conversive, or that
`
`A-0 00 Commerce has caused and is likely to cause confusion, or toicause mistake, or to
`
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`deceive, the purchasers of software to believe mistakenly that such products are
`
`manufactured, sponsored, endorsed, or authorized by Conversive or connected in
`
`some way with Conversive, or that such products are recommended or warranted by
`
`I\.) N
`
`Conversive.
`
`-.-_ -
`
`.. 2.7 .
`
`.. .._.Th_c..name,i‘._Conversagentii is_.c_o_nfu,s.ingly. s.imi1.ar.._to...U.S.
`
`Registration No. 2,855,081 and the various AGENT marksof Conversive. The use
`
`of this name by Conversagent is even more confusing because it is used on identical
`
`goods.
`
`
`
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`
`such products are recommended or warranted by Conversive.
`
`26,‘.
`
`Conversive’s unauthorized use of th_e “Conversagent” name in
`
`

`
`28.
`
`Conversagent’s conduct constitutes false designation of origin
`
`and unfair competition and violates Section 43(a) of the Lanham Act, l5 U.S.C. :§
`
`1 l25(a).
`
`29.
`
`Conversive has been, and is likely to continue to be, irreparably
`
`harmed and damaged by Conversagent’s acts of false designation of origin if
`
`Conversagent is not restrained, in that Conversive has suffered and is likely to suffer
`a loss of sales and profits each time its customers believe that'Conversagent’s
`
`products are manufactured or endorsed by Conversive, and Conversive has no
`
`adequate remedy at law.
`
`\O0O\lO\Ui-I>U.)l\J|-4
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`10
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`30.—-- Conversive-al-so-has-been,~and is likely»-toxzontinue to be
`
`13
`
`irreparably harmed and damaged by Conversagent’s aforementioned acts of unfair
`
`.14
`
`competition and false designation of origin unless Conversagent is restrained, in that
`
`15 Conversive has suffered and is likely to suffer a loss of reputation and goodwill on
`
`16
`
`17
`
`18
`
`'19
`
`20
`
`21
`
`22
`
`each occasion that its customers believe Conversagent’s products are manufactured
`
`or endorsed by Conversive, and Conversive has no adequate remedy at law.
`
`THIRD CAUSE OF ACTION
`
`(Trademark Dilution in Violation of 15 U.S.C. § 1 125(c)(1))
`
`3 l.
`
`Conversive repeats and realleges the averments contained in
`
`32.
`
`Conversive is the exclusive owner of its registered trademark
`
`CONVERSIVE. This trademark is strong and distinctive and is famous within the
`
`relevant market.
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
` paragraphs 1 through 30 of this Complaint as if fully stated herein.
`
`

`
` 7
`
`33.
`
`Conversive has never authorized Conversagent to use the
`
`CONVERSIVE trademark or any name or mark confusingly similar thereto in -'
`
`connection with Conversagent’s products or otherwise.
`
`34.
`
`Conversagent, without the consent of Conversive, has used its
`
`confusingly similar “Conversag_ent” name in connection with its sale of web
`
`application software, and "has caused such products to enter interstate commerce.
`
`Conversagent’s use of this name on these identical products began after the
`CONVERSIVE mark became famous.
`
`
`
`C>\DOO\lO\Ln-l>.bJt\)-—-
`
`y—.|
`
`y—|
`
`..I.. ‘.9
`
`35
`
`Upon information and belief, Conversagent has promoted,
`
`l -marke—ted,—and/or sold its products-with the -knowledge and intent that such
`
`unauthorized use in commerce has caused mistake, or deceived the customers of
`
`Conversive that such products are manufactured, developed, sponsored, endorsed, or
`
`authorized by Conversive or that such products are recommended or warranted by
`
`Conversive. Conversagent’s use of its name in connection with the sale of its
`
`products causes dilution by lessening the capacity of the CQNVERSIVE trademark
`to identify and distinguish Conversive and its products.
`
`
`
`36.
`Such unauthorized use of the"‘Conversagent” name in commerce
`by Conversagent has caused, or is likely to cause irreparable injury to Conversive’s
`
`business reputation and/or dilution of the distinctive quality of the CONVERSIVE
`
`trademark, and Conversive has no adequate remedy at law.
`
`37. - Conversagent’s conduct constitutes trademark dilution and
`
`violates Section 43(c)(1) ofthe Lanham Act, 15 U.S.C. § 1 125(c)(1).
`
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`
`
`FOURTH CAUSE OF ACTION
`
`(California Trademark Dilution in CAL. BUS. & PROF. CODE § 14330)
`
`38.
`
`Conversive repeats and realleges the averments contained in
`
`Paragraphs 1 through 37 of this Complaint as if fully stated herein.
`
`39.
`
`Conversive is the exclusive owner of the CONVERSIVE
`
`trademark for web application software. This trademark is strong and distinctive,
`
`and has acquired secondary meaning.
`
`40.
`
`Conversive ‘has never authorized Conversagent to use the
`
`CONVERSIVE trademark orany-markc'onfii-singly--similar thereto in connection
`
`with Conversagent’s products or otherwise.
`
`41. ’ Conversagent has, without the consent of Conversive, used the
`
`“Conversagent” name in connection with its sale of web application software.
`
`42.
`
`Upon information and belief, Conversagent has promoted,
`
`marketed, and/or sold software with the knowledge and intent that such
`
`in
`
`n—
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`unauthorized use in commerce has caused mistake, or has deceived the customers of
`
`h.)
`
`{Q N!
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`t\)l\)it\.>O\KII.I§
`
`27
`
`Conversive that such products are manufactured, developed, sponsored, endorsed, or
`authorized by Conversive or that such products are recommended or warranted by
`
`Conversive. Conversagent’s use of the “Conversagent” name causes dilution by
`
`lessening the capacity of the CONVERSIVE trademark to identify and distinguish
`
`Conversive and its products.
`
`43.
`
`Such unauthorized use of the “Conversagent” name in commerce
`
`28 by Conversagent has caused, and is likely to continue cause irreparable injury to
`
`-9-
`
`

`
`
`
`
`
`L--A Conversive’s business reputation and/or dilution of the distinctive quality of the
`CONVERSIVE trademark, and Conversive has no adequate remedy at law.
`
`\DOO\lO\U‘u-IS-U-)t\)
`
`ES
`
`44.
`
`Conversagent’s conduct constitutes trademark dilution and
`
`violatesCAL. Bus. & PROF. CODE§ 14330.
`
`t FIFTH CAUSE OF ACTION 4
`
`(Common Law Unfair Competition) _
`
`45. ‘ Conversive repeats and realleges the avermentscontained in
`
`
`
`p_n
`
`)—A paragraphs 1 through 44 of this Complaint as if fully stated herein.
`
`5-‘: 5Q
`
`I-I U.)
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`E
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`he L11
`
`Conversagent’s aforementioned_conduc_t in connection with the
`46.
`sale of web application software while utilizing the “Conversagent” name, by
`
`seeking to pass off its goods and ‘services as those of Conversive, constitutes unfair
`
`3 competition at common law.
`
`»—I \l
`
`u—a 00
`
`47.
`
`Conversive has been, and is likely to continue to be, irreparably
`
`\D harmed and damaged by Conversagent’s acts of unfair competition if Conversagent
`is not restrained, in that Conversive has suffered and is likely to suffer a loss of sales
`
`ix) 0.
`
`l\.) I—-I
`
`I\) l\)
`
`and profits each time its customers believe that Conversagent’s products are
`
`manufactured, developed, sponsored, endorsed, or authorized by Conversive and
`
`l\) U.) Conversive has no adequate remedy at law.
`
`N) -5
`
`l\J U1
`
`l\J O\
`
`l\) \l
`
`48.
`
`Conversive also has been, and is likely to continue to be,
`
`irreparably harmed and damaged by Conversagent aforementioned acts of unfair
`
`competition unless Conversagent is restrained, in that Conversive has suffered and is_
`
`28 likely to suffer a loss of reputation and goodwill on each occasion that its customers
`
`_]0_
`
`

`
`
`-)
`
`believe that it has manufactured, developed, sponsored, endorsed, or authorized
`
`iConversagent’s products, and Conversive has no adequate remedy at law. '
`
`49.
`Conversive is informed and believes, and on that basis alleges,
`V
`that in acting as alleged herein Conversagent has acted intentionally and despicably
`
`_
`
`with oppression, fraud and malice toward Conversive. Conversive therefore is
`entitled to an award ofpunitive damages for the sake of example and byway of
`punishing "Conversagent pursuant to CAL. CIV. CODE § 3294.
`
`
`
`\OOo'\lO\UI.J>.l)Jxg.»--
`
`10
`
`11
`
`12
`
`1-3
`
`_
`
`SIXTH CAUSE OF ACTION
`
`(Unfair Competition under CAL. BUS. & PROF. CODE §§ 17200 et seq.)
`
`____-,_ __._.
`
`,___,,- _._,,,__ ..__,_______._
`
`_._.___-____._.- -.
`
`49.
`
`Conversive repeats and realleges the averments contained in
`
`14 paragraphs 1 through 48 of this Complaint as if fully stated herein.
`
`15
`
`16
`
`50.
`
`Conversagent’s aforementioned conduct in connection with the
`
`17 sale of web application software while utilizing the “Conversagent” name
`
`18 constitutes unlawful, unfair, and fraudulent business practices in violation of CAL.
`
`19 Bus. & PROF. CODE §§ 17200 et seq.
`
`
`
`20
`
`21
`
`_
`
`51.
`
`Conversive has been, and is likely to continue to be, irreparably
`
`22 harmed and damaged by Conversagent’s acts of unfair competition if Conversagent
`
`23 is not restrained, in that Conversive has suffered and is likely to suffer a loss of sales
`
`-24 and profits each time its customers believe that »Conversagent’—s products are
`
`25 manufactured, developed, sponsored, endorsed, or authorized by Conversive and
`
`26 Conversive has no adequate remedy at law.
`
`27
`
`-1]-
`
`

`
`O\OOO\lO"\LhJ>-L»->I\)'-’
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`
`27
`
`28
`
`Conversive also has been, and is likely to continue to be,
`52.
`‘irreparably harmed and damagedby Conversagent aforementioned. acts ofunfair
`
`competition unless Conversagent is restrained, in that Conversive has suffered and is
`
`likely to suffer a loss of reputation and goodwill on each occasion that its customers
`
`believe that it has manufactured, developed, sponsored, endorsed, or authorized
`
`Conversagent’s products, and Conversive has no adequate remedy at ‘law.
`
`PRAYER FOR RELIEF
`
`_ WHEREFORE, Conversive requests:
`
`(a)
`
`that Conversagent, their officers, agents, servants, employees,
`
`and attorneys, and those persons in activeconcert or participation with
`
`Conversagent, be preliminarily and permanently enjoined and restrained from using
`the mark/name “Conversagent” and any other mark confusingly similar to the mark
`
`CONVERSIVE in the manufacture, marketing, advertising, labeling, packaging,
`offer for sale, sale, distribution of any and all web application software;
`.
`
`(b)
`
`, that all labels, boxes, cartons, signs, catalogs, literature,
`
`packages, marketing materials, and advertisements of Conversagent which include
`the name “Conversagent” and/or any other mark confusingly ‘similar to the mark I
`
`CONVERSIVE, and relate to any and all web application software, be delivered and
`
`destroyed as the Court shall direct pursuant to 15 U.S.C. § ll 16;
`
`(c) ‘
`
`that Conversagent be ordered to account to Conversive for any
`
`and all profits derived by it by reason of the acts complained of in this Complaint
`
`pursuant to 15 U.S.C. §§ lll4, lll7 and H25;
`
`-]2_
`
`

`
`'1
`
`\000\lO\UI-bUJl\)*-'
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`2.4..
`
`
`
`25
`
`26
`
`27
`
`28
`
`(cl)
`
`that Conversagent be ordered to pay damagesto Conversive for‘.
`
`’ ‘injuries sustained by Conversive as a result of Conversagent infiingementof
`Conversive's trademark, false designation of origin and unfair competition, and
`trademark dilution, in an amount to be determined at trial, pursuant to 15 U.S.C. §§
`
`A
`
`4
`
`1114, 1117, and 1125 and California statutory and common law;
`
`(e)
`
`that Conversagent be ordered to pay treble damages to
`
`Conversive pursuant to 15 U.S.C. § 1117(b);
`
`(f)
`
`That Conversive beawarded punitive and exemplary damages
`
`pursuant to CAL. CIV. CODE § 3294;
`
`(g)
`
`That Conversive be granted pre-judgment and post-judgment
`
`interest on the damages caused by Conversagent;
`
`(h)
`
`that Conversive be awarded its costs of this action; and
`
`(i)
`
`that Conversive be awarded its reasonable attomey’s fees
`
`pursuant to 15 U.S.C. § 1117; and
`
`(j)
`
`that Conversive be awarded such further relief as the Court shall
`
`deem appropriate.
`
`Dated; February 24, 2005.21 ..SHEPPARD MULLIN RICHTER & HAMPTON 1.11»
`
`By
`
`J ME
`
`.
`. BURGESS
`
`Attorneys for Plaintiff CONVERSIVE, INC.
`
`-13-
`
`

`
`
`v\
`
`DEMAND FOR JURY TRIAL
`
`_
`.
`Pursuant to FED. R. CIV. P. 3_8(b), Plaintiff, Conversive, Inc. I
`_
`(“Conversive”) hereby demands a ma] by juryhof any and all issues triable of right
`
`by a jury.
`
`DATED: February 24, 2005
`
`
`
`
`
`Attorneys for Plaintiff it
`CONVERSIVE, INC.
`
`o\oo_o\1o\uu4>u.>zQ-—
`
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`
`{Q 00
`
`

`
`
`
`"Int. Cl.: 9
`
`
`Pr’ U.S.Cl.: 21, 23, 26, 36,
`Reg. No. 2,855,081
`a"
`'°'
`S
`
`United States Patent and Trademark Office. Registered June 15,2004
`
`ass
`
`I
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`CONVERSIVE
`
`VIRTUAL PERSONALITIES; INC-
`CORPORATION)
`3305 cnoss CREEK ROAD UNIT F
`
`(DELAWARE
`
`INTERACTIVE MESSAGING , IN CLASS 9 (I15. CLSI."
`21, 23, 25, 36 AND 38).
`~
`
`MALJBU, CA 90265
`
`FIRST USE 1202002; IN COMMERCE 12-0-2002.
`
`FOR: COMPUTER SOFTWARE FOR ALLOWING
`WEB-BASED INTERACTION, NAMELY, INSTANT
`A MESSAGING, ELECTRONIC MAIL AND WIRELESS
`
`SN 78-161,055, FILED 9-5-2002.
`
`TRICIA THOMRKINS, EXAMINING ATTORNEY’ _
`
`1‘ A
`
`1
`
`-.-
`
`

`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`, hereby certify that a copy of the foregoing
`I,
`Notificat ’ T The Board Of A licant’s Substitution Of Re resentation and Substitute
`
`
`
`Power of Attorney and Motion to Suspend Proceedings was served upon the following
`parties via first class mail, this 20”‘ day of April, 2005:
`
`Kent E. Baldauf, Jr., Registration No. 3
`Webb Ziesenheim Logsdon Orkin & Hanson
`436 Seventh Avenue, 700 Koppers Bldg.
`Pittsburgh, PA 15219-1818
`
`Janene P. Bassett
`
`Sheppard Mullin
`1901 Ave. of the Stars, 16th Fl.,
`Los Angeles, CA 90067
`Tel: (310) 228-3731
`Fax: (213) 443-2773 :
`
`E;
`
`a
`
`(Date)
`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`CONVERSIVE, INC.
`
`Opposer,
`
`v.
`
`.
`:
`:
`
`Opposition No.: 91 160948
`Application No.: 78/305,402
`Mark: CONVERSAGENT
`
`:
`CONVERSAGENT, INC.
`(formerly, ACTIVE BUDDY, INC.) :
`
`Applicant.
`
`Commissioner for Trademarks
`Box: TTAB — NO FEE
`
`P.O. Box 1 45 1
`
`Alexandria, Virginia 22313-1451
`
`MOTION TO SUSPEND OPPOSITION PROCEEDINGS
`
`Applicant, Conversagent, Inc. (“Conversagent”), pursuant to TBMP 510.02(a),
`
`hereby moves the Board to suspend the Opposition proceedings before the Trademark
`
`Trial and Appeal Board. Applicant seeks this suspension in light of an ongoing civil
`
`litigation between the parties that involve the parties’ rights with respect to the mark
`
`CONVERSAGENT.
`
`On February 24, 2005, Conversive, Inc. (herein referred to as “Opposer”), filed a
`
`civil action in the United States District Court for the Central District of California
`
`against Conversagent, Inc., Civil Action No. 05 CV 1399. A copy of the Complaint is
`
`attached hereto as Exhibit A. Opposer’s Complaint alleges, inter alia, issued which
`
`could resolve the issues presently before the Board in this administrative proceeding
`
`

`
`Accordingly, Applicant respectfully requests that in order to avoid duplicative
`
`litigation, the Petition to Cancel be suspended until the final disposition of the above
`
`cited civil action.
`
`This motion is filed in triplicate.
`
`Respectfully submitted
`for Applicant,
`
`By:
`
`,
`Jess M. Collen
`
`COLLEN IP
`
`The Holyoke-Manhattan Building
`80 South Highland Avenue
`Ossining, NY 10562
`Tel: (914) 941-5668
`Fax: (914)941-6091
`Attorneyfor Applicant
`
`JMC/TPG
`
`Encl. — Exhibit A
`
`Dated: April 20, 2005
`
`COLLEN IP, INTELLECTUAL PROPERTY LAW, P.C., THE HOLYOKE-
`MANHATTAN BUILDING, 80 SOUTH HIGHLAND AVENUE, OSSINING-ON-
`HUDSON, NEW YORK, 10562.
`
`SHOULD ANY OTHER FEE BE REQUIRED, THE PATENT AND TRADEMARK
`OFFICE IS HEREBY REQUESTED TO CHARGE SUCH FEE TO OUR DEPOSIT
`ACCOUNT 03-2465.
`
`I HEREBY CERTIFY THAT THIS CORRESPONDENCE IS BEING DEPOSITED
`
`WITH THE UNTILED STATES POSTAL SERVICE AS FIRST CLASS MAIL,
`POSTAGE PREPAID IN AN ENVELOPE ADDRESSED TO: ASSISTANT
`
`COMMISSIONER FOR TRADEMARKS, P.O. BOX 1451, ALEXANDRIA,
`VIRGINIA 22313-1451.
`COLLEN IP
`
`BY: igaflggm £34 4 2§_2
`
`DATE: April 20, 2005
`
`

`
`
`
`EXHIBIT A
`
`

`
`
`
`FILE
`
`o\ooo\1c:5Ln.x>._t»1q»--
`
`JAME

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