Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA235745
`ESTTA Tracking number:
`09/10/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91185291
`Plaintiff
`Regional Economic Models, Inc.
`Erik P. Belt
`Bromberg & Sunstein LLP
`125 Summer Street
`Boston, MA 02110
`UNITED STATES
`trademarks@bromsun.com
`Opposition/Response to Motion
`Paul Kitchin
`trademarks@bromsun.com
`/paul kitchin/
`09/10/2008
`(2371_501) Response To Applicant_s Request For Extension Of Time.PDF ( 14
`pages )(363457 bytes )
`
`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`RESPONSE TO APPLICANT’S
`REQUEST FOR EXTENSION OF
`TIME
`
`In the Matter of Application:
`
`Opposition No.: 91185291
`Serial No.:
`78/963,853
`Filed:
`August 30, 2006
`Applicant:
`Macroeconomic Advisers, L.L.C.
`Mark:
`MONETARY POLICY INSIGHTS
`
`Published:
`
`June 17, 2008
`
`)
`REGIONAL ECONOMIC MODELS, INC.,)
`)
`
`) )
`
`)
`)
`)
`
`Opposer,
`
`v.
`
`,
`MACROECONOMIC ADVISERS, L.L.C.
`
`) )
`
`Applicant.
`____________T__)
`
`Regional Economic Models, Inc. (“REMI”) opposes Macroeconomic Advisers, L.L.C.’s
`
`(“MA”) Request for Extension of Time, filed August 26, 2008, which seeks to extend the August
`
`27, 2008, deadline for MA to file an answer to REMI’s Opposition. MA does not show good
`
`cause for
`
`the requested extension of time, and MA’s requested extension of time was
`
`necessitated by MA’s own lack of diligence and unreasonable delay in filing an answer.
`
`To request an extension of time,
`
`the moving party must show good cause for the
`
`requested extension. Trademark Trial and Appeal Board Manual of Procedure (“TBMP”)
`
`§509.01. The moving party must also demonstrate that the requested extension of time is not
`
`necessitated by the party’s own lack of diligence or unreasonable delay in taking the required
`
`action. TBMP § 509.01(a). MA’s request cites two grounds for “good cause,” both false, for its
`
`failure to file a timely answer, and MA’s cited grounds show MA’s lack of diligence and
`
`unreasonable delay.
`
`

`
`
`
`
`
`E1 lElll. 1
`
`.
`
`E.
`
`I
`
`First, MA cites settlement discussion between the parties. The parties have discussed
`
`settlement intermittently for over a year before the start of the present opposition proceeding, but
`
`this is not an excuse for MA’s failure to file a timely answer. MA’s counsel contacted REMI’s
`
`counsel on August 20, 2008, requesting REMI’s consent to an extension of time for MA to file
`
`its answer. REMI’s counsel clearly stated that REMI did not consent to an extension of time for
`
`MA to file its answer, but that REMI was interested in continuing discussion of a possible
`
`settlement. MA’s answer,
`
`if timely filed, would have advanced discussion of a possible
`
`settlement by helping to establish the disputed and undisputed facts of the opposition. There is
`
`no reason MA could not have filed a timely answer by the August 27, 2008, deadline while
`
`simultaneously continuing to negotiate. The parties’ settlement discussion is not good cause for
`
`an extension of time. See Fairline Boats PLC v. New Howmar Boats Corp., 59 U.S.P.Q. 2d
`
`1479 at
`
`l (T.T.A.B. 2000) (denying motion to extend testimony period and noting that mere
`
`existence of settlement negotiations or proposals, without more, would not justifying party’s
`
`delay).
`
`Second, MA cites a need for additional time to research and investigate REMI’s claims.
`
`REMI first raised its claims regarding the confi1sing similarity between MA’s MONETARY
`
`POLICY INSIGHTS mark and REMI’s POLICY INSIGHT mark in a November 1, 2006, letter.
`
`MA has been aware of REMI’s claim for almost
`
`two years, and the parties have been
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`corresponding about REMI’s claims since November 1, 2006. See Exhibit A, February 14, 2007,
`
`letter from REMI’s counsel attaching earlier letters from REMI and MA. MA admits that the
`
`parties’ counsel have been involved in active settlement discussion starting in April 2007. There
`
`is no good cause for MA’s need for further research or investigation to file a timely answer. To
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`the extent that MA needs further time to research and investigate REMI’s claims, this need was
`
`necessitated by MA’s own lack of diligence and unreasonable delay in failing to research and
`
`investigate claims that REMI raised nearly two years go.
`
`

`
`Accordingly, MA does not show good cause for an extension of time to file its answer,
`
`and the requested extension of time was necessitated by MA’s own lack of diligence and
`
`unreasonable delay in researching and investigating REMI’s claims
`
`REMI respectfully requests that the Board deny MA’s request of an extension of time to
`
`file an answer after the August 27, 2008, deadline.
`
`Dated: Boston, Massachusetts
`September 10, 2008
`
`Regional Economic Models, Inc.
`
`By its attorneys,
`
`/s/ Paul Kitchin
`
`Erik P. Belt
`
`Paul Kitchin
`
`BROMBERG & SUNSTEIN LLP
`125 Summer Street
`
`Boston, Massachusetts 021 10-1618
`(617) 443-9292
`(617) 443-0004 (fax)
`ebelt@bromsun.com
`pkitchin@bromsun.com
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing Response to Applicant’s Request
`for Extension of Time has been served on Donald J. Fitzpatrick, counsel for Macroeconomic
`Advisers, L.L.C., by overnight mail on September 10, 2008 to, Greensfelder, Hemker & Gale,
`P.C., 2000 Equitable Building, 10 South Broadway, St. Louis, MO 63102.
`
`/s/ Paul Kitchin
`
`Paul Kitchin
`
`02371/00501 931755.l
`
`

`
`Exhibit A
`
`

`
`1isIf5 2I
`
`
`
`2
`
`1
`
`:_ 125 SUMMER STREET BOSTON MA 02110-1618
`
`T 617 443 9292 F 617 443 0004 www.BRoMsuN.coM
`
`
`
`
`BROMBERG 7. SUNSTEINirp 9
`
`WILLIAM J. MORRIS Ill
`T 617 443 9292 X338
`WMORRlS@BROMSUN.COM
`‘Anulnm IN Vuwauv emu
`
`February 14, 2007
`
`Via Federal Express
`
`Mr. Chris Varvares
`
`Macroeconomic Advisers, L.L.C.
`231 South Bemiston, Suite 900
`
`St. Louis, MO 63105
`
`Re:
`
`Infringement of POLICY INSIGHT Trademark
`Our File:
`2371/501
`
`Dear Mr. Varvares:
`
`This firm represents Regional Economic Models, Inc. (“REMI”). As you know, REMI is a
`leading provider of economic-forecasting and policy—analysis tools and related consulting
`services. REMI has used the federally registered POLICY INSIGHT mark (U.S. Reg. No.
`2603369) since at least as early as 1998 to identify the computer software and related
`services it provides to its customers. As you also know, our client sent you a letter on
`November 1, 2006 (attached as Exhibit A), regarding Macroeconomic Advisers, L.L.C.’s use
`of and application to federally register the mark MONETARY POLICY INSIGHTS (U .S.
`Serial No. 78963853) in connection with “economic modeling, financial forecasting and
`policy analysis,” as well as its use of the mark FISCAL POLICY INSIGHTS. Despite our
`client’s amicable attempt to resolve this matter, Macroeconomic Advisers continues to use
`the MONETARY POLICY INSIGHTS and FISCAL POLICY INSIGHTS marks in knowing
`disregard of our client’s trademark rights.
`
`We reviewed your November 20, 2006, response to our client’s letter (attached as Exhibit B).
`That response makes clear that Macroeconomic Advisers has used the above-referenced
`marks with knowledge of REMI’s superior trademark rights. In your own words:
`
`At the time we applied for the [MONETARY POLICY INSIGHTS]
`trademark we were aware of REMI’s use of ‘Policy Insight’ and that it
`was a registered trademark. This came up in the trademark search.
`
`(See Exhibit B). The foregoing statement amounts to an admission that Macroeconomic
`Advisers applied to register the MONETARY POLICY INSIGHTS mark in knowing
`disregard of REMI’s superior rights in its POLICY INSIGHT mark and that it determined to
`
`ATTOR NEYS AT LAW
` l
`
`

`
`
`
`Mr. Chris Varvares
`
`Macroeconomic Advisers, L.L.C.
`
`February 14, 2007
`Page 2
`
`commence or at
`
`least continue to use the FISCAL POLICY INSIGHTS mark despite
`
`knowledge of REMI’s registered trademark.
`
`Your correspondence also makes clear that REMI’s POLICY INSIGHT mark has priority
`over Macroeconomic Advisers’ MONETARY POLICY INSIGHTS and FISCAL POLICY
`INSIGHTS marks. While REMI first used its mark at
`least as early as 1998, your
`correspondence claims that Macroeconomic Advisers did not begin use of its MONETARY
`POLICY INSIGHTS mark until the summer of 2002 and that use of the FISCAL POLICY
`INSIGHTS mark did not begin until June 2006.
`.
`
`Moreover, while your letter claims that Macroeconomic Advisers’ services are provided to a
`“different target market” from REMI’s market, that is not the case. As noted in REMI’s
`’ November 1, 2006, correspondence, REMI and Macroeconomic Advisers recently advertised
`at the same industry conference (the NABE conference). That both companies advertise at
`the same industry conference also makes clear that the goods and services of the parties are
`similar or at least related, which is all that is required for a finding of a likelihood of
`confusion. Moreover, the express description of services in the above-referenced pending
`application for MONETARY POLICY INSIGHTS highlight the overlap in the goods and
`services. We fiirther note that both REMI and Macroeconomic Advisers share some of the
`same clients, including the AARP. Under these circumstances, there is clearly an overlap in
`the goods and services provided by the parties, the channels of trade in which such goods and
`services are sold and marketed, and the actual customers utilizing each company’s goods and
`services.
`
`Furthermore, your statement that there have been no instances where customers looking for
`REMI’s products have contacted Macroeconomic Advisers misstates the test for confusion.
`Even if your statement were true (which is expressly denied), confusion can be found based
`solely on the likelihood that consumers will believe that REMI endorses or sponsors
`Macroeconomic Advisers’ goods and services, or the impression that the two companies are
`somehow affiliated. Given the similarity of the marks and the goods and services, we believe
`that there is a high likelihood that consumers will so be confused.
`
`Finally, and while not directly addressed in your correspondence, the marks at issue are
`clearly similar such that they are likely to be confused. Two thirds of the marks are
`essentially identical and the only addition to Macroeconomic Advisers’ marks are the
`descriptive terms “fiscal” and “monetary.” Courts and the Trademark Trial and Appeal
`Board routinely find that where one company merely adds‘ a descriptive term to another
`company’s mark in connection with similar or related goods and services, confusion is likely.
`
`Based on all of the foregoing, there is likely to be confusion between the marks at issue and
`the superior rights fall with our client. Accordingly, should your company continue its
`unauthorized and willful
`infringing use of the MONETARY POLICY INSIGHTS and
`
`

`
`Mr. Chris Varvares
`
`Macroeconomic Advisers, L.L.C.
`February 14, 2007
`Page 3
`
`FISCAL POLICY INSIGHTS marks, our client may oppose the application for the former
`and take additional action to seek redress for the above—referenced ongoing infringements.
`
`We therefore request that Macroeconomic Advisers (1) cease using and permanently refrain
`from using in the future any mark that includes the phrase “Policy Insight,” or any terms
`similar thereto, (2) expressly abandon its pending federal application to register the mark
`MONETARY POLICY INSIGHTS, and (3) refrain from applying to federally register the
`FISCAL POLICY INSIGHTS mark.
`
`With that said, our client does not wish to create unnecessary animosity between mutually
`successful companies, and is willing to provide Macroeconomic Advisers with a generous
`phase-out period of one year to discontinue use of its MONETARY POLICY INSIGHTS and
`FISCAL POLICY INSIGHTS marks. Moreover, if your company agrees in writing by
`Februag 27, 2007, to the above requests, our client will not seek economic redress for
`Macroeconomic Advisers’ knowing and willful
`infringement of REMI’s rights in its
`POLICY INSIGHT mark.
`
`Please note that this correspondence is being direct to you because we are unaware as to
`whether you have retained counsel in connection with this matter. We have sent a copy of
`this correspondence to the trademark counsel
`listed in the MONETARY POLICY
`INSIGHTS application, namely, Donald J. Fitzpatrick, Esq. Please let us know if we should
`direct any future correspondence to Mr. Fitzpatrick or other counsel.
`
`We look forward to hearing from you or your counsel.
`
`Sincerely,
`
`
`
`Enclosures
`
`cc:
`
`Frederick Treyz, Ph.D.
`Erik P. Belt, Esq.
`Donald J. Fitzpatrick, Esq.
`
`02371/00501 5988952
`
`

`
`ii.
`
`i 11 1 El
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`Origin lD: LWMA (617)443-9292
`From:
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`Bromberg 3. sunsiegn |_[_P
`125 Summer Street
`
`Boston, MA 02110
`
`BILL SENDER
`
` SHlP TO: (314)721-4747
`
`Mr. Chris Varvares
`Macroeconomic Advisers, L.L.C.
`231 South Bemiston
`Suite 900
`
`
`
`
`
`CLSIl207i2l.I2J
`
`2371I501
`
`Ref #
`Invoice #
`SSpf#
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`St. Louis, MO 63105
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`

`
`EXHIBIT A
`
`

`
`VIA FEDERAL EXPRESS
`
`November 1, 2006
`
`Mr. Varvares
`
`Macroeconomic Advisers, LLC
`231 South Bemiston, Suite 900
`
`St. Louis, MO 63105
`
`Dear Mr. Varvares:
`
`It was a pleasure seeing you at the NABE conference. As you know, I am the
`President and CEO of Regional Economic Models, Inc. (“REMI”), a company that
`provides economic—forecasting and policy—analysis tools and consulting services
`regarding the same. As you may be aware, we own the registered trademark POLICY
`INSIGHT (U.S. Reg. No. 2603369), which is registered in connection with computer
`software and the renting, leasing, and licensing of computer software used in the
`analysis of demographic, economic, and statistical data. We obtained this registration
`in August 2002, and have been using the mark since at least as early as 1998.
`
`I am writing to you because your company is using two marks that may cause
`confusion with REMI’s registered trademark. More specifically, your company’s
`website features the mark MONETARY POLICY INSIGHTS, a mark for which I
`recently learned that your company filed an application to register with the U.S.
`Patent and Trademark Office for “economic modeling, financial forecasting and
`policy analysis.” I am also aware of another mark that appears on your company’s
`website, namely FISCAL POLICY INSIGHTS, but I am not aware of a pending
`application to register that mark.
`I believe that REMI’s POLICY INSIGHT marks
`predates your company’s marks be several years.
`
`Given the similarities between the marks and the products and services provided by
`our respective companies, your company’s use of MONETARY POLICY INSIGHTS
`and FISCAL POLICY INSIGHTS may cause confusion in the marketplace we serve.
`I want to make sure that any confusion is prevented or minimized.
`
`I hope and trust that we can resolve this situation amicably and thus invite you to
`contact me to discuss this matter. This letter does, however, put your company on
`official notice of REMI’s trademark rights.
`In the event that you do not contact me
`by November 30, 2006, I will unfortunately have to turn this matter over to our
`outside legal counsel.
`
`I look forward to hearing from you.
`
`Sincerely,
`
`Frederick Treyz, Ph.D.
`President and Chief Executive Officer
`
`

`
`EXHIBIT B
`
`
`

`
`
`
`E .L
`
`.
`
`, 3
`
`l
`
`'i
`5.3,S
`
`E iE5
`
`.
`
`
`
`
`
`
`
`l2
`
`l
`
`
`
` VAMACROECONOMIC ADVlSERS, LLC
`
`
`
`November 20,. 2006
`
`Fred Treyz
`President
`
`Regional. Economic Models, Inc.
`433 West Street
`
`Amhert, MA 01002
`
`Dear Fred:
`
`I replied by e—mail the day after
`I apologize for the apparent delay in responding to your letter.
`I received your letter (on November 3) just prior to heading to Honduras for a week. When I
`returned I found that the e-mail was returned as un.de1.iverable, even though Ihad found your e-
`mail address on the REMI website. Two subsequent attempts (after calling to confirm the e-
`mail address) also failed. This morning I tried to send it to your administrative assistant.
`1 am
`finally resorting to FedEx! Below is my original note.
`
`_I fully agree that it is in :neither of our company°s interest to promote confusion in the market
`place.
`
`We -have been in the midst of completing a forecast round and I am preparinggto be out of the
`country for -a week, so consider this my preliminary response.’ I wanted to glet you know that we
`got your letter, we’re considering the issues you raised, and want to provide some facts and"
`some of our thinking at the time we applied for the TM as background. We should follow—up
`with a conversation when 1 return to the US.
`
`At the time we applied for the MP1 trademark we were aware of REMI’s use of “Policy
`Insight” and that it was a registered trademark. This came up in the trademark search. As we
`understand it, "Policy Insight is a sol’twa.re tool (i.t is listed under “Software” on your website)
`containing an embedded customizable (calibrated) regional model used. to produce regional
`impact analyses.
`
`lneed to check the exact date, but beginning in the summer of 2002 we began using Monetary
`Policy insights as the name of the service. Our website and literature describe this service as
`.f.ol.lows:
`
`"‘Meyer‘s Monetary Policy Insights (MP1) provides commentary on the strategic link between
`the US. economic outlook and policy actions of the Federal Reserve. Dr. Meyer's analysis is
`‘part. of a suite of services on the economi.c outlook that builds on his experience as an award-
`winning forecaster and as a member of both The Board of Governors of the Federal Reserve
`System and the Federal Open Market Committee.”
`
`This service‘ is an iiifonnation/report service that is Larry intensive and does not include
`software or model.s and there is no regional component whatsoever. The target audience is
`economists, strategists, fixed income traders, and investment managers at hedge funds, broker
`dealers, and traditional investment management firms. We view this as a very different target
`market than that for Policy Insight.
`
`231 5. BEMISTON Ava. SUITE 900
`ST. Louis, MO 63105
`PHONE‘. 814721-4747 FAX: 31 4721-6383
`www.MAcRoAnvisERs,c:oM
`
`

`
`i.
`
`
`
`l iLlIlIilllil
`
`i
`
`2l
`
`By using “Monetary” in the title of the service, we clearly identify the thrust of this service,
`and I believe it is distinguished from your software/model tool. that is aimed at generating
`regonal impacts. Anyone looking for Larry’s service will be looking for Larry directly, or will
`specifically be looking for federal reserve analysts, or Monetary policy analysis, and the like.
`
`Ultimately the proof is in the pudding. In the 4+ years we have been using this name, I am not
`aware that there has not been a single incident where people looking for your tool have
`contacted us. I doubt you have received any calls from peopl.e lookin g for Larry Meyer’s
`service who contacted you because you have a product called Policy Insight. I
`
`A similar story applies to Fiscal Policy Insights, except that we just began using this name this
`June.
`
`Our website and literature describe this service as follows:
`“FPI monitors the outlook for Federal fiscal policy, analyzes the links between the tax and
`spending policy and the US. economic outlook, and addresses the impact of fiscal policy on
`financial markets. FPI clients will have access to Douglas I.-lolt2.—Eakin who has unparalleled
`experience and expertise in the fiscal policy outlook.”
`
`This service is an information/report service that is Doug intensive and does not include
`software or models. It is focused on US federal fiscal. policy and there is no regional
`component whatsoever. The target audience is economists, strategists, fixed income traders,
`and investment managers at hedge funds, broker dealers, and traditional investment
`management firms. This is a very different target market than that for Policy Insight.
`
`I believe that this
`By using “Fiscal” in the title, we clearly identify the thrust of this service.
`distinguishes this service from your software/model tool that is aimed at generating regional
`impacts.
`
`In light of the foregoing we need to step back and ask what is the likelihood of con't‘usion:
`- These services are aimed at different clientele ~~— macro/‘financial versus regional
`planners
`- who are seeking different types of services -- commentary versus an auialytical tool
`- in subject areas far removed - US (macro) monetary and fiscal policy versus regional
`impact analysis
`
`My initial take on this that there is little chance of anyone confusing our services, but I am
`certainly open to considering any ideas you may have to insure that confusion does not arise in
`the inarket place.
`
`Give this some thought and we’ll talk in about 10 days or so.
`
`Best Regards,
`
`3
`
`Chris Varvares
`President