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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA416085
`ESTTA Tracking number:
`06/23/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Entity
`Address
`
`Information Builders, Inc.
`Corporation
`2 Penn Plaza
`New York, NY 10121
`UNITED STATES
`
`Citizenship
`
`New York
`
`Attorney
`information
`
`Howard F. Mandelbaum
`Levine & Mandelbaum
`222 Bloomingdale Road, Suite 203
`White Plains, NY 10605
`UNITED STATES
`mail@levman.com Phone:(914) 421-0500
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85058450
`06/23/2011
`
`Publication date
`Opposition
`Period Ends
`
`05/24/2011
`06/23/2011
`
`Goldberg, Gary R.
`754 Knollwood Terrace
`Westfield, NJ 07960
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 009.
`All goods and services in the class are opposed, namely: Computer software in the field of vision
`correction, namely, a computer software application, a computer utility program, a computer
`operating program and a downloadable software application that compensates for imperfections in a
`user's vision; Optical device for vision correction, namely an electronically controlled overlay that is
`applied to a display that compensates for imperfections in a user's vision
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution
`
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`1652265
`
`07/30/1991
`
`Word Mark
`
`FOCUS
`
`Application Date
`
`08/23/1990
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 1975/03/00 First Use In Commerce: 1975/03/00
`computer programs for data base management
`
`U.S. Registration
`No.
`Registration Date
`
`2606298
`
`08/13/2002
`
`Application Date
`
`12/11/1998
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`FOCUS
`
`NONE
`
`Class 042. First use: First Use: 1996/12/00 First Use In Commerce: 1996/12/00
`COMPUTER SERVICES, NAMELY, PROVIDING ONLINE INFORMATION TO
`FACILITATE DEMONSTRATION, TEST USE, AND ORDERING OF
`COMPUTER SOFTWARE
`
`U.S. Registration
`No.
`Registration Date
`
`2821942
`
`03/16/2004
`
`Word Mark
`Design Mark
`
`FOCUS
`
`Application Date
`
`06/30/2000
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 1975/03/00 First Use In Commerce: 1975/03/00
`COMPUTER SOFTWARE FOR DATABASE MANAGEMENT; COMPUTER
`SOFTWARE FOR USE IN DECISION SUPPORT SYSTEMS; COMPUTER
`SOFTWARE FOR USE IN ENTERPRISE REPORTING AND ANALYSIS
`SYSTEMS AND FOR BUILDING APPLICATIONS FOR THE MANAGEMENT
`AND TRACKING OF DATA FOR ENTERPRISE REPORTING SYSTEMS;
`COMPUTER DATABASE PROGRAMS FOR USE IN CONNECTION WITH
`DECISION SUPPORT, ANALYSIS, AND REPORTING PROGRAMS;
`COMPUTER SOFTWARE DEVELOPMENT TOOLS FOR USE IN
`DEVELOPING DECISION SUPPORT, ANALYSIS, AND REPORTING
`SYSTEMS AND APPLICATIONS; COMPUTER SOFTWARE, NAMELY,
`CLIENT/SERVER REPORTING, ANALYSIS AND DECISION SUPPORT
`TOOLS; COMPUTERIZED DATABASE, REPORTING, AND ANALYSIS
`SOFTWARE FOR USE ON CORPORATE INTRANET WEB SITES;
`ENTERPRISE SERVER SOFTWARE FOR USE IN WEB BASED DATA
`PUBLISHING, REPORTING, AND ANALYSIS SOLUTIONS; COMPUTER
`
`

`
`SOFTWARE FOR ACCESSING DATABASES BY MEANS OF GLOBAL
`COMPUTER NETWORKS TO GENERATE REPORTS; SOFTWARE
`DEVELOPMENT TOOLS FOR MAKING REPORTING AND ANALYSIS
`AVAILABLE THROUGH GLOBAL COMPUTER NETWORK WORLDWIDE
`WEBSITES AND FOR EXTENDING THE FUNCTIONALITY OF ENTERPRISE
`REPORTING AND ANALYSIS SYSTEMS ON TO GLOBAL COMPUTER
`NETWORKS; AND COMPUTER SOFTWARE FOR ACCESSING AND
`UPDATING DATABASES THROUGH GLOBAL COMPUTER NETWORKS
`
`U.S. Registration
`No.
`Registration Date
`
`2223450
`
`02/16/1999
`
`Application Date
`
`02/18/1993
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`FOCUS FORECASTING
`
`NONE
`
`Class 035. First use: First Use: 1974/00/00 First Use In Commerce: 1974/00/00
`consulting services in the field of inventory management and control for
`businesses including the use of computers and computer techniques in the field
`of inventory management and control for businesses
`
`U.S. Registration
`No.
`Registration Date
`
`2223457
`
`02/16/1999
`
`Application Date
`
`06/15/1994
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`FOCUS FORECASTING
`
`NONE
`
`Class 009. First use: First Use: 1978/00/00 First Use In Commerce: 1978/00/00
`computer programs recorded on electronic media, namely tapes or discs, for
`use by businesses to plan inventory needs and to manage and control inventory
`
`U.S. Registration
`No.
`Registration Date
`
`2248562
`
`06/01/1999
`
`Word Mark
`Design Mark
`
`WEBFOCUS
`
`Application Date
`
`03/03/1997
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`NONE
`
`

`
`Goods/Services
`
`Class 009. First use: First Use: 1996/04/00 First Use In Commerce: 1996/04/00
`computer programs for data base management
`
`U.S. Registration
`No.
`Registration Date
`
`2685249
`
`02/11/2003
`
`Word Mark
`Design Mark
`
`WEBFOCUS
`
`Application Date
`
`06/30/2000
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 1996/04/00 First Use In Commerce: 1996/04/00
`COMPUTER SOFTWARE FOR DATABASE MANAGEMENT; COMPUTER
`SOFTWARE FOR ACCESSING DATABASES BY MEANS OF GLOBAL
`COMPUTER NETWORKS TO GENERATE REPORTS; SOFTWARE
`DEVELOPMENT TOOLS FOR MAKING REPORTING AND ANALYSIS
`AVAILABLE THROUGH GLOBAL COMPUTER NETWORK WORLDWIDE
`WEBSITES AND FOR EXTENDING THE FUNCTIONALITY OF ENTERPRISE
`REPORTING AND ANALYSIS SYSTEMS ON TO GLOBAL COMPUTER
`NETWORKS; AND COMPUTER SOFTWARE FOR ACCESSING AND
`UPDATING DATABASES THROUGH GLOBAL COMPUTER NETWORKS
`
`U.S. Registration
`No.
`Registration Date
`
`2989088
`
`08/30/2005
`
`Word Mark
`Design Mark
`
`FOCUS
`
`Application Date
`
`12/30/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2003/06/17 First Use In Commerce: 2003/06/17
`Business Accountability Software to Insure Compliance with Governmental
`
`

`
`Requirements and Standards
`
`U.S. Registration
`No.
`Registration Date
`
`3755093
`
`03/02/2010
`
`Word Mark
`Design Mark
`
`OMNIFOCUS
`
`Application Date
`
`05/08/2007
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2008/01/08 First Use In Commerce: 2008/01/08
`Computer software for use in personal task management
`
`U.S. Registration
`No.
`Registration Date
`
`3831741
`
`08/10/2010
`
`Word Mark
`Design Mark
`
`WEBFOCUS MAGNIFY
`
`Application Date
`
`01/12/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`Attachments
`
`NONE
`
`Class 009. First use: First Use: 2007/06/30 First Use In Commerce: 2007/06/30
`software for searching structured and unstructured data and database records
`distributed across multiple applications in an enterprise
`
`76083549#TMSN.gif ( 1 page )( bytes )
`75250817#TMSN.gif ( 1 page )( bytes )
`76081024#TMSN.gif ( 1 page )( bytes )
`78346655#TMSN.jpeg ( 1 page )( bytes )
`77175366#TMSN.jpeg ( 1 page )( bytes )
`77909824#TMSN.jpeg ( 1 page )( bytes )
`
`

`
`NotofOppIBI 9010US.pdf ( 4 pages )(15263 bytes )
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Signature
`Name
`Date
`
`/Howard F. Mandelbaum/
`Howard F. Mandelbaum
`06/23/2011
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of an application to register EYEFOCUS,
`
`
`
`
`
`Serial No. 85/058,450 filed June 9, 2010, published for
`
`opposition on May 24, 2011, on Page TM 430 of the Official
`
`Gazette:
`
`---------------------------------------------X
`INFORMATION BUILDERS, INC.
`
`
`
`:
`
`
`
`
` v.
`
`
`
`
`
`
`
`
`
`Opposer,
`
`
`
`
`
`
`
`
`
`:
`
`
`
`: Opposition No.
`
`
`Gary R. Goldberg
`
`
`
`
`
`:
`
`
`
`
`
`
`
`
`
`
`
`:
`
`
`Applicant.
`---------------------------------------------X
`
`NOTICE OF OPPOSITION
`
`
`
`Information Builders, Inc., a corporation of the State of
`
`New York, having a principal place of business at 2 Penn Plaza,
`
`New York, New York 10121-2898, believes that it will be damaged
`
`by registration of the mark identified above, and hereby opposes
`
`such registration.
`
`The grounds for the opposition are as follows:
`
`
`
`1. Opposer produces, markets and/or licenses computer
`
`software for database management, for use in decision support
`
`systems, and for information control, reporting, and networking,
`
`including designing, building, and maintaining databases,
`
`recording, processing, analyzing and displaying data and
`
`

`
`information in a wide variety of industries and other fields,
`
`and computer software for use in personal task management, and
`
`provides to its customers support services including education
`
`in the use of software, and technical support and consultation
`
`in connection with implementation and installation of the
`
`software.
`
`2. Since 1975, Opposer has been marketing its software
`
`under the trademark FOCUS to computer users in a wide variety of
`
`industries and providing consulting services in connection with
`
`its FOCUS software for use in the management of business, and
`
`Opposer has registered its trademark in the Patent and Trademark
`
`Office under Nos. 1,652,265; 2,606,298; and 2,821,942.
`
`3. In the early 1980’s, Opposer began marketing its
`
`software under various additional trademarks which include the
`
`word FOCUS. Opposer is also the owner of the following Patent
`
`and Trademark Office registrations:
`
`Registration No.
`
`2,223,450
`
`2,223,457
`
`2,248,562
`
`2,685,249
`
`2,989,088
`
`3,755,093
`
`3,831,741
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`
`
`
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`
`
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`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Trademark
`
`FOCUS FORECASTING
`
`FOCUS FORECASTING
`
`WEBFOCUS
`
`WEBFOCUS
`
`FOCUS
`
`OMNIFOCUS
`
`WEBFOCUS MAGNIFY
`
`
`
`2
`
`

`
`4. Opposer sells computer software enabling users, via the
`
`Internet, to manage data using applicant’s FOCUS software.
`
`5. Opposer sells computerized instruction and training
`
`courses, accompanied by related printed materials, for teaching
`
`the use of FOCUS software.
`
`6. Opposer renders consulting services in connection with
`
`its FOCUS software for use in the management of business.
`
`7. Opposer has published a magazine entitled FOCUS
`
`SYSTEMS JOURNAL, and newsletters entitled FOCUS NEWS and FOCUS
`
`FLASH, distributed to computer users, as well as an online
`
`magazine entitled “The FOCUS Quarterly”, and currently publishes
`
`WEBFOCUS Journal.
`
`8. Opposer established “The Focus Users Group” (FUSE) to
`
`which its customers belong, and this group holds annual
`
`conferences at which representatives of those who use FOCUS
`
`software
`
`attend
`
`educational
`
`workshops,
`
`see
`
`product
`
`demonstrations, and otherwise exchange information about FOCUS
`
`software.
`
`9. Applicant seeks to register EYEFOCUS for “Computer
`
`software in the field of vision correction, namely, a computer
`
`software application, a computer utility program, a computer
`
`operating program and a downloadable software application that
`
`compensates for imperfections in a user's vision; Optical device
`
`for vision correction, namely an electronically controlled
`
`
`
`3
`
`

`
`overlay that is applied to a display that compensates for
`
`imperfections in a user's vision”.
`
`10. Upon information and belief, Applicant’s goods are so
`
`closely related to Opposer’s software, the printed and online
`
`materials distributed by Opposer, and Opposer’s services, that
`
`use of similar marks on the respective goods and services of the
`
`parties is likely to cause confusion or mistake, or to deceive
`
`purchasers as to the origin of the goods and services.
`
`11. Upon information and belief, the registration by
`
`Applicant of EYEFOCUS for goods closely related to Opposer’s
`
`goods and services will impair Opposer’s free use of its
`
`trademark, and will dilute the distinctive quality of Opposer’s
`
`famous “Focus” trademarks, which became famous prior to
`
`Applicant’s first use date, and will result in injury to the
`
`good will Opposer has acquired with respect to its trademark,
`
`all to Opposer’s damage.
`
`WHEREFORE, Opposer prays that the registration for which
`
`application has been made be disallowed, and that this
`
`opposition be sustained.
`
`4

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