Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA647766
`ESTTA Tracking number:
`12/31/2014
`
`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
`Granted to Date
`of previous ex-
`tension
`Address
`
`Zipwire Incorporated
`01/04/2015
`
`12506 172nd Avenue NE
`Redmond, WA 98052
`UNITED STATES
`
`Attorney informa-
`tion
`
`Michael J. Bevilacqua, Esquire
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, MA 02109
`UNITED STATES
`michael.bevilacqua@wilmerhale.com, barbara.barakat@wilmerhale.com, an-
`gela.dyer@wilmerhale.com Phone:617 526 6000
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`86122644
`12/31/2014
`
`Publication date
`Opposition Peri-
`od Ends
`
`07/08/2014
`01/04/2015
`
`Aspect Software, Inc.
`300 Apollo drive
`Chelmsford, MA 01824
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 042. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Software as a service (SAAS) services,
`namely, hosting software for use by others, namely, software for managing and controlling customer
`contact centers systems, namely, associated software for initiating, integrating, routing, controlling
`and monitoring inbound and outbound customer contacts through one or more multiple channels in-
`cluding public switched telephone networks (PSTN), VoIP telephone contacts, email, web, chat, so-
`cial media and facsimile contacts, software for controlling telecommunication systems utilized by cus-
`tomer contact centers comprised of central and private telephone switches, interactive voice re-
`sponse units(IVR) and telephone dialers, software for managing and controlling customer contact
`center Automatic Call Distribution (ACD), outbound predictive dialing and campaign management,
`software used for intelligent contact routing via telephone,e-mail, web, chat, social media and fax,
`computer software used to support the activities of contact center customer service representatives
`and contact centermanagers, software used to manage web chat, interactive voice response (IVR),
`real-time and historical contact center report generation and customer contact blending by managing
`both inbound and outbound telephone calls and inbound and outbound contacts through one or more
`multiple channels including public switched telephone networks (PSTN), VoIP telephonecontacts,
`email, web, chat, social media and facsimile contacts, software used to create desktop and manage-
`
`

`
`ment tools for customer contact centers, software used to create and manage customer contactcen-
`ter virtual agents, visual scripting, workforce schedules, workforce job performance and workforce
`skills improvement, software used to provide customer contact center self-provisioning capabilities via
`an on-line portal and software used to create and manage customer contactcenter optional recording
`of calls and/or customer contact interactions
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Application
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`86136559
`
`NONE
`
`ZIPWIRE
`
`Application Date
`
`12/05/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`Computer software for the collection, editing, organizing, modifying and verifying
`of data and information; Computer software to allow for private communication
`across personal communication devices;Computer software and system for
`electronic payment and receipt transactions
`Class 036. First use: First Use: 0 First Use In Commerce: 0
`credit card payment processing services
`Class 038. First use: First Use: 0 First Use In Commerce: 0
`providing a website featuring functionality to allow for private communication
`across communication devices, namely, private and secure electronics commu-
`nications over a private or public computer network
`Class 042. First use: First Use: 0 First Use In Commerce: 0
`providing a website featuring temporaryuse of non-downloadable software for
`the collection, editing, organizing, modifying and verifying of data and informa-
`tion for personal and business purposes; providing a website featuring tempor-
`ary use of non-downloadable software to allowfor private communication across
`communication devices; providing a website featuring temporary use of non-
`downloadablesoftware for electronic payment and receipt transactions
`
`Attachments
`
`86136559#TMSN.png( bytes )
`ZIPWIRE nop.PDF(215286 bytes )
`
`

`
`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.
`
`Certificate of Service
`
`Signature
`Name
`Date
`
`/barbara a. barakat/
`Barbara A. Barakat, Esquire
`12/31/2014
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application Serial No. 86/122644
`
`Published in the Official Gazette at TM 1216 on July 8, 2014
`
`Zipwire Incorporated,
`
`Opposer
`
`V.
`
`Aspect Software, Inc.,
`
`Applicant
`
`BOX TTAB/FEE
`
`. Commissioner for Trademarks
`
`P.O. Box 1451
`
`Alexandria, Virginia 22313-1451
`
`\/\/Q/\&%/\./\./%/9/\&€
`
`Opposition No. I
`
`NOTICE OF OPPOSITION
`
`Zipwire Incorporated, a corporation organized and existing under the laws of Delaware,
`
`located and doing business at 12506 l72"d Avenue NE, Redmond, Washington 98052, believes
`that it will be damaged by the registration ofthe trademark “ZIPWIRE” as shown in Application
`
`Serial No. 86/122644, filed November 19, 2013, by Aspect Software, Inc. (hereinafter
`
`“Applicant”), and hereby opposes the same.
`
`As grounds for opposition, it is alleged that:
`
`1.
`
`Opposer is the owner of United States Trademark Application Serial No.
`
`86136559, filed December 5, 2013 for the mark ZIPWIRE for use in connection with computer
`
`software for the collection, editing, organizing, modifying and verifying of data and information; 1
`
`Computer software to allow for private communication across personal communication devices;
`
`ActiveUS l39019958v.1
`
`

`
`Computer software and system for electronic payment and receipt transactions, credit card
`
`payment processing services, providing a website featuring functionality to allow for private
`communication across communication devices, namely, private and secure electronics
`
`communications over a private or public computer network and providing a website featuring
`
`temporary use of non—downloadable software for the collection, editing, organizing, modifying
`
`and verifying of data and information for personal and business purposes; providing a website
`
`featuring temporary use of non-downloadable software to allow for private communication
`
`across communication devices; providing a website featuring temporary use of non-
`
`downloadable software for electronic payment and receipt transactions (“Opposer’s Mark”);
`
`2.
`
`Shortly before the filing of the Opposer’s trademark application, on November
`
`19, 2013, Applicant filed its intent to use application for the mark ZIPWIRE, which was assigned
`
`United States Trademark Application Serial No. 86122644, covering Software as a service
`(SAAS) services, namely, hosting software for use by others, namely, software for managing and
`
`controlling customer contact centers systems, namely, associated software for initiating,
`
`integrating, routing, controlling and monitoring inbound and outbound customer contacts
`
`through one or more multiple channels including public switched telephone networks (PSTN),
`
`VoIP telephone contacts, email, web, chat, social media and facsimile contacts, software for
`
`controlling telecommunication systems utilized by customer contact centers comprised of central
`
`-
`
`and private telephone switches, interactive voice response units (IVR) and telephone dialers,
`
`software for managing and controlling customer contact center Automatic Call Distribution
`
`(ACD), outbound predictive dialing and campaign management, software used for intelligent
`
`contact routing via telephone, e~mail, web, chat, social media and fax, computer software used to
`
`support the activities of contact center customer service representatives and contact center
`
`ActiveUS l390l9958v.l‘
`
`

`
`managers, software used to manage web chat, interactive Voice response (IVR), real-time and
`
`historical contact center report generation and customer contact blending by managing both
`
`inbound and outbound telephone calls and inbound and outbound contacts through one or more
`
`multiple channels including publicswitched telephone networks (PSTN), VoIP telephone
`
`contacts, email, web, chat, social media and facsimile contacts, software used to create desktop
`
`and management tools for customer contact centers, software used to create and manage
`
`customer contact center Virtual agents, Visual scripting, workforce schedules, workforce job
`
`performance and workforce skills improvement. software used to provide customer Contact
`
`center self—proVisioning capabilities Via an on-line portal and software used to create and manage
`
`customer contact center optional recording of calls and/or. customer contact interactions
`
`(“Applicant’ s Mark”).
`
`3.
`
`The Examining Attorney in Opposer’s application has cited Applicant’s Mark to
`
`provisionally refuse registration to Opposer’s Mark, and Opposer’s application has been
`
`suspended.
`
`4.
`
`Opposer incorporated under the name “Zipwire Incorporated” in October 2013.
`
`Prior to the date of incorporation, Opposer had used the name “Zipwire” in association with its
`
`technology and the operation of its business.
`
`5.
`
`Opposer registered the domain name <zipwire.net> on October ll, 2013. On
`
`information and belief, Applicant was aware of the purchase of the domain name on that date.
`
`6.
`
`Opposer used the trademark ZIPWIRE in interstate commerce on and in
`
`association with its goods and services prior to the filing date of the Applicant’s application.
`
`7.
`
`Opposer began nationwide testing of the messaging around the “ZIPWIRE” name
`
`and logo on or about November 13, 2013 and used the name in presentations, employee
`
`ActiveUS l390l9958v.l
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`

`
`recruiting and customer interviews from that date forward, all before App1icant’s November 19,
`
`2013 filing date.
`
`8.
`
`Given Opposer’s use of the mark ZIPWIRE prior to the Applicant’s filing date,
`
`Opposer has superior rights in the mark.
`9.
`By reason of Opposer’s prior use of the “ZIPWIRE” mark, the public will believe
`that the Applicant’s use of its mark “ZlPWIRE” is sponsored or approved by Opploser and that
`
`the quality of the services bearing the Applicant’s mark has been approved and/or maintained by
`
`Opposer.
`
`10.
`
`In view of these similarities and the provisional rejection raised by the Examining _
`
`Attorney in Applicant’s application, Applicant’s use of the mark “ZIPWIRE” is likely to cause
`
`confusion, mistake, or deception with respect to Opposer’s mark “ZIPWIRE” and to damage the
`
`goodwill represented and symbolized by the mark.
`
`1 1.
`
`Based on the foregoing, Applicant’s registration of the mark “ZIPWIRE” on the
`
`Principal Register of the United States Patent and Trademark Office would clearly cause injury
`
`and damage to the Opposer.
`
`ActiveUS l39019958V.l
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`

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`WHEREFORE, Opposer prays that this opposition be sustained and that registration of
`
`Applicant’s mark “ZIPWIRE” as shown in Application Serial No. 86/122644 be refused.
`
`Respectfully submitted,
`
`ZIPWIRE INCORPORATED,
`
`/barbara a. barakat/
`
`Michael J. Bevilacqua
`Reg. No. 31,091
`Barbara A. Barakat
`
`Reg. No. 32,190
`Attorneys for Opposer
`
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`
`Boston, Massachusetts 02109
`
`(617) 526-6154
`December 31, 2014
`
`CERTIFICATE OF SERVICE
`
`It is hereby certified that a true copy of the foregoing NOTICE OF OPPOSITION was
`served this 313‘ day of December 2014, upon:
`
`Daniel Bourque, Esq.
`Bourque and Associates
`835 Hanover Street, Suite 301
`Manchester, New Hampshire 03104-5401
`
`byAfirst—class mail, postage prepaid.
`
`/barbara a. barakat/
`
`Barbara A. Barakat
`
`ActiveUS 1390l9958v.l