‘(T95
`
`11-03-2003
`- .PatInt& mo1un'ia.MuII Row! D!- 4*"
`
`INC.
`STERLING SOFTWARE,
`300 Crescent Court Suite 1200
`Dallas, TX 75201
`
`Steven N. Fox,
`P.O. Box 251
`Canton, MA 02021
`
`Esq.
`
`UNWEDSTATESPATENTANDTRADEMARKOFHCE
`Trademark Trial and Appeal Board
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`Ma.i.i.e:‘i.~
`
`:2.:.4:;or.e=.:‘.':.‘4-.-'s:
`
`'/‘_=“-.".‘;.
`
`Cancellation No.
`Reg. No. 2360154
`
`92042418
`
`International Electronics,
`
`inc.
`
`V.
`
`.'3’I'EE{L;iINE3
`
`SOP"i‘Wf's[~’..T.'I,
`
`l.Ni.‘.'.
`
`TAMMY LOGAN, LEGAL ASSISTANT
`
`A petition, a copy of which is attached,
`above-identified registration.
`
`has been Eiled to cancel
`
`the
`
`Proceedings will be conducted in accordance with the Trademark Rules of
`Practice.
`
`(See Patent
`ANSWER IS DUE FORTY DAYS after the mailing date hereof.
`and Trademark Rule 1.7 for expiration date falling on Saturday, Sunday
`or a holiday).
`
`Proceedings will be conducted in accordance with the Trademark Rules of
`Practice, set forth in Title 37, part 2, of the Code of Federal
`Regulations.
`The parties are reminded of the recent amendments to the
`Trademark Rules that became effective October 9, 1998.
`See Notice of
`Final Rulemaking published in the Official Gazette on September 29,
`1998 at 1214 TMOG 145.
`slight corrections to the rules,
`resulting in a
`correction notice, were published in the Official Gazette on October
`20, 1998 at 1215 TMOG 64.
`A copy of
`the recent amendments to the
`Trademark Rules, as well as the Trademark Trial and Appeal Board Manual
`of Procedure (TBMP),
`is available at http://www.uspto.gov.
`
`Discovery and testimony periods are set as follows:
`
`Discovery period to open:
`
`October 07, 2003
`
`Discovery period to close:
`
`April 04, 2004
`
`_.m—“:—n'—‘b
`
`

`
`
`
`30-day testimony period for party
`in position of plaintiff to close:
`
`July 03, 2004
`
`30-day testimony period for party
`in position of defendant to close:
`
`September 01. 2004
`
`15-day rebuttal testimony period
`for plaintiff to close:
`
`October 15. 2004
`
`A party must serve on the adverse party a copy of the transcript of any
`testimony taken during the party's testimony period,
`together with
`copies of documentary exhibits, within 30 days after completion of
`taking of such testimony.
`See Trademark Rule 2.125.
`
`the
`
`Briefs shall be filed in accordance with Trademark Rule 2.l2B(a) and
`(b). An oral hearing will be set only upon request filed as provided
`by Trademark Rule 2.129.
`
`The Board allows parties to utilize telephone conferences to
`NOTE:
`discuss or resolve many interlocutory matters that arise in inter
`partes cases.
`See the Official Gazette notice titled “Permanent
`Expansion of Telephone Conferencing on Interlocutory Matters in Inter
`Partes Cases Before the Trademark Trial and Appeal Board,” 1235 TMOG 68
`(June 20, 2000).
`A hard copy of the Official Gazette containing this
`notice is available for a fee from the Superintendent of Documents,
`U.S. Government Printing Office, Washington, D.C. 20402 (Telephone
`(202) 512-1800).
`The notice is also available at http://www uspto.gov.
`Interlocutory matters which the Board agrees to discuss or decide by
`phone conference may be decided adversely to any party which fails to
`participate.
`
`If the parties to this proceeding are also parties to other Board
`proceedings involving related marks or, during the pendency of this
`proceeding,
`they become parties to such proceedings,
`they should notify
`the Board immediately,
`so that
`the Board can consider consolidation of
`proceedings.
`
`

`
`
`
`iv
`
`-1!
`
`VI
`
`.-
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`‘_
`r4-I
`.4I
`
`111 file matter 0f=
`For the mark:
`
`U-3- Trademark Reg N0- 2.360,154
`CONTROL YOUR WORLD
`
`Date Registered:
`
`June 20, 2000
`
`llllllllllllllllllllllllllllllllIlilllllllllllllll
`
`0902,2003
`U3, pgunu. 'rMon:.'TM Marl Fleet Dt I22
`
`INTERNATIONAL ELECTRONICS, INC.,
`PETITIONER,
`
`V.
`
`STERLING SOFTWARE, INC.,
`REGISTRANT.
`
`23
`re
`E3
`
`PETITION TO CANCEL UNDER 37 C.F.R. 2.111
`
`The Petitioner, International Electronics, Inc, is a Massachusetts corporation having a
`principal place of business at 427 Turnpike Street, Canton, MA 02021.
`
`To the best of Petitioner's knowledge, the name and address of the current owner of
`U.S. Reg. No. 2,360,154 is Sterling Software, Inc., a Delaware corporation having a principal
`place of business at 300 Cresent Court, Suite 1200, Dallas, Texas 75201.
`
`The Petitioner believes that it will be damaged by the above—identified registration, and
`
`hereby petitions to cancel the same.
`
`As grounds for cancellation, the Petitioner alleges as follows:
`
`1.
`
`2.
`
`Petitioner is the owner of Application Serial No. 78/293,449 filed on August
`28, 2003 for the mark “CONTROL YOUR WORLD” that recites goods of
`“Computer based access control systems comprising computer hardware such as
`controllers, entry key pads, proximity detectors, and lock sets; and software for
`use in controlling access by individuals to entry ways and devices." (the
`“Petitioner’s Application”).
`_
`
`On information and belief, the Registrant is no longer in business and has
`stopped and abandoned use of the mark “CONTROL YOUR WORLD" in
`connection with the goods identified in U.S. Reg. No. 2,360,154.
`
`09/06/2003 KSIIDWI 00009119 2360154
`
`01 FCIMO1
`
`300.00 OP
`
`Page 1 of 2
`
`

`
`
`
`7 -1
`
`5“
`
`3.
`
`4.
`
`5.
`
`6.
`
`The mark sought to be registered by Petitioner’s Application, namely.
`“CONTROL YOUR WORLD," is identical to that of U.S. Reg. No. 2,360,154
`for the mark “CONTROL YOUR WORLD.”
`
`The goods identified in Petitioner‘s Application might arguably be considered
`related to the goods of U.S. Reg. No. 2,360,154.
`
`There is a substantial likelihood that Petitioner’s Application will be refused
`registration on the principal register in view of U.S. Reg. No. 2,360,154.
`
`Petitioner will be damaged if U.S. Reg. No. 2,360,154 is not cancelled from
`the principal register.
`
`Enclosed please find Check No. 1091 in the amount of $300.00 for the petition fee of
`$300.00.
`
`A duplicate copy of this petition is enclosed.
`
`Respectfully submitted,
`
`
`
`7' 1-8 ‘ 1-8920
`
`D4000. 890
`
`Page 2 of 2
`
`

`
`
`
`-9)
`
`-3
`
`5;;
`
`‘[53.
`
`3;}
`(Voice) 78315821-8920
`(Facsimile) ‘-781-821-89 19
`
`Government Mail Only:
`P.O. Box 251
`
`Canton, MA 02021
`
`STEVEN N. FOX, ESQ., PC
`24 Fox Run, Unit #7
`Marshfield, MA 02050
`
`/——__
`
`\ VN5
`
`_._____i_
`
`.__
`
`lmlnllllllmllmmrlllllulutllnl M‘
`
`09-02-2003
`U.S. Paw,”
`
`5 TMOTEITM Man Rcmot "22
`
`(E—Mail) foxpatent@aol .curn
`
`Patent, Trademark, and Copyright Law
`
`5
`
`August 29, 2003
`
`Box TTAB FEE
`Commissioner for Trademarks
`2900 Crystal Drive
`Arlington, VA 22202-3513
`Re:
`
`U.S. Registration No. 2,360,154
`Mark: CONTROL YOUR WORLD
`Date of Registration: June 20, 2000
`
`(2
`". __
`3
`
`"-T.‘
`fig"
`
`5
`I
`
`Sir:
`
`International Electronics, Inc.
`Petitioner:
`Sterling Software, Inc.
`Registrant:
`Cancellation No.: To Be Assigned
`Our Docket No.: 2003—2l9
`
`Enclosed please find the following documents for filing with the U.S. Patent and
`Trademark Office:
`
`1.
`2.
`3.
`
`4.
`
`Petition For Cancellation Under 37 C.F.R. §2.111;
`Duplicate Copy of Petition For Cancellation;
`Check No. 1091 for $300.00 for the petition fee: and
`
`Certificate of Mailing.
`
`If you should have any questions, please
`
`n
`
`hesitate to contact me.
`
`
`
`.
`
`ox
`
`Enclosures
`D4000. 891
`
`‘
`
`r ey for Applicant
`g No. 33,237
`
`
`
`

`
`
`
`TTAB NOTICE CONCERNING CORRESPONDENCE ADDRESS
`
`(TRADEMARK RULE 2.18)
`
`The Trademark Trial and Appeal Board will mail correspondence to only one address for each party.
`
`|f a party is located in the U.S., correspondence will be sent to the party's own address. unless l1l
`papers filed with the Board are filed by a party's attorney, (2) a written power of attorney is filed, B} a
`written authorization of some other person entitled to be recognized is filed. or (4) the party requests in
`writing that correspondence be sent to another address.
`In these situations, correspondence will be
`sent, respective|y_ to (1) the attorney filing papers, (2) the attorney named in the power of attorney, (3l
`the other person designated in the written authorization, or (4) the other address specified by the party.
`
`when one attorney or other authorized representative makes an appearance on behalf of a party, his
`address is noted on the proceeding file as the correspondence address.
`If a second attorney or other
`authorized representative makes an appearance on behalf of the party. and requests that
`cofrespondence be directed to him, the correspondence address on the proceeding file will be changed,
`and future correspondence will be sent to the second attorney or other authorized representative, rather
`than to the first one.
`If the second attorney or other authorized representative does not request that
`correspondence be sent to him, the Board will continue to send correspondence to the first attorney or
`authorized representative.
`
`H a power of attorney from a party to one attorney has been filed, and thereafter another attorney or
`authorized representative makes an appearance on behalf of the party and asks that correspondence be
`sent to him, the second attorney or authorized representative will be required to submit authorization.
`from the party or from the first attorney, for the requested change in correspondence address.
`
`If a power of attorney from a party to one attorney has been filed, and thereafter a power of attorney
`from the party to another attorney is filed, the second power of attorney will be construed as a written
`request to change the correspondence address from the first attorney to the second one, even if there is
`no revocation of the first power, unless the party or the first attorney directs otherwise. Likewise. if an
`attorney makes an appearance on behalf of a party, and thereafter the party files a written power of
`attorney to another attorney. the Board will send subsequent correspondence to the appointed attorney.
`
`H a power of attorney from a party to one attorney has been filed, and thereafter that attorney files an
`"associated power of attorney" to another attorney. the correspondence address will remain unchanged,
`and the Board will continue to send correspondence to the first attorney. unless the first attorney or the
`party directs otherwise.
`
`In the case of a party whose application is the subject of a Board proceeding, any appearance or power
`of attorney lor designation of other authorized representative) of record in the application file at the time
`of the commencement of the Board proceeding is considered to be effective for purposes of the
`proceeding, and correspondence will be sent initially to that address. Thereafter. the correspondence
`address may be changed as described in Trademark Rule 2.18.
`
`in the case of a party whose registration is the subject of a Board proceeding. any representative which
`may be of record in the registration file at the time of the commencement of the Board proceeding is not
`considered to be effective for purposes of the Board proceeding. Rather, correspondence is sent to the
`registrant itself unless and until another correspondence address is established in the manner described
`in Trademark Rule 2.18.
`
`

`
` Q
`
`THE TRADEMARK TRIAL AND APPEAL BOARD WOULD
`LIKE YOU TO KNOW:
`
`The TTAB Customer Service Center is available to
`
`*answer telephone inquiries
`*expIain pertinent legal provisions and related administrative
`practices as they apply to specific cases
`*provide status information on pending cases
`*provide access to the files of pending cases
`*resolve problems
`
`[zero].
`
`The telephone number for the TTAB Customer Service Center is (703) 308-9300, extension 0
`
`
`
`
`The Patent and Trademark Office has two special boxes for expedited processing and
`distribution of documents filed with the TTAB. Envelopes and transmittal letters for TTAB should be
`
`
`addressed to: Commissioner for Trademarks, 2900 Crystal Drive, Arlington, VA 22202, followed by
`
`
`one of the following d€Sl90ati0nS
`
`
`"Box TTAB Fee": for papers filed with the TTAB that include
`filing fees, such as notices of opposition, petitions to cancel,
`
`
`and notices of ex parte appeal
`
`
`and
`
`
`“Box TTAB": for all non-fee papers filed with the TTAB, such as
`requests for extensions of time to file notices of opposition and
`
`motions.
`
`
`
`
`The TTAB Customer Service Center makes every effort to provide public access to application
`files, opposition files, cancellation files and concurrent use files immediately upon request for access.
`Files located win be made available in a central storage area accessible to the public. You can also
`access information about 'l'|'AB proceeding files online. Go to httpzflwvvw.usgto.govlweblofficesldcomfttabl
`and click the "BISX LINK".
`
`
`
`Any questions. comments, or suggestions concerning TTAB service should be directed to Jean
`Brown, TTAB Technical Program Manager, at (703) 308-9300. extension 123 or Afendi Ziad,
`
`Supervisory Legal Assistant at (703) 308-9300, extension 205.
`
`

`
`
`
`NOTICE CONCERNING ALTERNATIVE DISPUTE RESOLUTION (ADR)
`
`The Trademark Trial and Appeal Board encourages you to consider alternative dispute resolution
`as a means of settling the issues raised in this opposition or cancellation proceeding. Although more than
`95% of Board proceedings are decided prior to trial (by settlement or by entry of pre-trial judgment),
`alternative dispute resolution techniques might produce an earlier, mutually agreeable resolution of your
`dispute or might, at least, narrow the scope of discovery or the issues for trial. In either case, alternative
`dispute resolution might save you time and money.
`
`Many non-profit organizations, both inside and outside the intellectual property field, offer
`alternative dispute resolution services. Listed below are the names and addresses of organizations that
`have indicated that they can make arrangements for alternative dispute resolution. The listings are given
`for your convenience; the Board does not sponsor nor endorse any particular organization’s alternative
`dispute resolution services.
`
`International Trademark Association
`Telephone: (212) 642-1726
`Fax: (212) 768-7796
`www_inta.org[adr/index.shtm1
`e-mail: 1stigliano@inta.org
`
`
`
`
`
`
`
`
`CPR Institute for Dispute Resolution
`
`Telephone: (212) 949-6490
`Fax:
`(212)949-8859
`www.cpradr.org
`
`e-mail:
`info@cpradr.org
`
`
`American Intellectual Property Law Association (AIPLA)
`2001 Jefferson Davis Highway
`
`Suite 203
`
`Arlington, Virginia 22202
`Telephone: (703) 415-0780
`
`Fax;
`703 415-0786
`American Arbitration Association (A)
`
`
`
`
`
`
`
`Headquarters
`140 West 51" Street
`New York, New York 10020-1203
`Telephone: (212)484-3266
`
`
`Fax;
`212 307-4387
`
`
`
`Finally, if the parties consider using alternative dispute resolution in this proceeding, the Board
`would like to know; and if the parties actually engage in alternative dispute resolution, the Board would
`be interested to learn what mechanism (e.g., arbitration, mediation, etc.) was used and with what general
`result. Such a statement from the parties is not required but would be helpful to the Board in assessing
`the value of alternative dispute resolution in Trademark Trial and Appeal Board proceedings.
`
`
`
`

`
`
`
`I
`
`t
`
`.
`
` Testimony taken by deposition upon
`FILING OPPOSITION/CANCEIALATION
`oral examination or upon written
`Time for reply to counterclaim set
`Any person (Opposer)
`rna¥’file a
`questions.
`37 CFR 2.123, 2.124.
`by TTAB for not less than 30 days
`Notice of Opposition vvithin 30 days
`from TTAB action mailing date. 37
`
`against any mark published Under 15
`CFR 2.l06(b), 2.1l4(b).
`USC 1052(a} in 0fficiaJ. gazette? may
`oppose in whole or part-
`
`Plaintiff serves Transcript of
`testimony and copies of documentary
`exhibits on adverse party within 30
`days after completion of taking
`testimony. Certified transcript and
`exhibits filed with TTAB.
`37 CFR
`2.125.
`
`Notice of Reliance as appropriate on
`Discovery Deps., Adms. and Int.
`Answers, with copies of same, one
`before close of Test.
`37 CPR
`2.12o.5
`
`Involved app. or reg. files are in
`evidence for
`relevant and competent purposes.
`Publications in gen. Circ.
`or in
`libraries, and official records, may
`be received if appropriate Notice of
`Reliance is filed and copies
`submitted within Test. period.
`CPR 2.122.
`
`37
`
`if filed,
`Motion under 37 CFR 2.132,
`due after close of Pl.'s Test.
`period & before opening of Def.‘s.
`
`DEFENANT’S TRIAL PERIOD
`Opens 30 days after close of Pl.'s
`Test. period. Runs for 30 days.
`
`taken by deposition upon oral
`Test.
`examination or upon written
`questions.
`37 CFR 2.123, 2.124.
`
`Notice of Reliance on Discovery
`responses also due within Test.
`period,
`if filed.
`3? CFR 2.120.
`
`«.4
`
`Notice of Reliance on gen. circ.
`publ. and official records due
`within Test. period,
`if filed.
`CFR 2.122.
`
`3?
`
`Motions may be brought before TTAB
`in writing and with Brief in
`support. Brief in opposition
`thereto, 15 days (30 days for
`summary judgment motion). Briefs
`limited to 25 pages. Reply Brief,
`if filed,
`15 days,
`limited to 10
`pages. Reconsideration 30 days
`after decision; opposition Brief, 15
`days.
`37 CFR 2.127. Most motions
`used in Federal practice are
`applicable.
`
`to
`Motions for Summary Judgment,
`compel, and to Test Sufficiency of
`Responses to Requests for
`Admissions,
`if filed, due before
`Plaintiff testimony period opens.
`37 CPR 2.127(e), 2.120(e), 2.l20(h).
`
`
`TRIAL DATES
`TTAB issues Order setting opening
`and close of Discovery and Trial
`dates. Discovery set for period of
`180 days: 30-day Pl. Testimony
`period closes 90 days after close of
`Discovery period; 30-day Def. Test.
`period closes 60 days after Pl.
`Test. period; 15-day Pl. Rebuttal
`Test. period closes 45 days after
`Def. Test. period.
`37 CPR 2.l20(a),
`2.121.
`
`In cases where counterclaim filed,
`TTAB sets additional time periods
`for testimony and briefing.
`
`DISCOVERY PERIOD
`for Prod. Of
`Interrogatories, Regs.
`Docs.
`& Things,
`and Regs.
`for Adm.,
`if served, must be served by last
`day of Discovery period. Written
`Responses within 30 days from date
`of service of Disc. Regs.
`FRCP
`apply except as otherwise provided.
`37 CFR 2.116, 2.l2D(a). Extension
`of Time to respond to discovery
`granted upon cause or by
`stipulation.‘
`
`Interrogatories limited to
`proceeding total of 75, counting
`subparts: additional interrogatories
`allowed upon motion for good cause
`or by stipulation.
`37 CFR
`2.l20(d)(1).
`
`00
`
`0::
`
`Time for filing Notice IHEY be
`extended by written recvieet to TTAB-
`A first extension for Iiet more than
`30 days will be granted upon
`request.
`Further extensions may be
`granted for good cause.
`EXtenSi0n5
`aggregating more thari 129 days fI0m
`pub. date not granted \JU1e55
`consented to by applicant or
`37 CPR
`extraordinary circumstances.
`2.lO2(c). Request should be in
`triplicate.
`37 CPR 2.102(d)-
`
`Any person (Petitioner) may file a
`Petition to cancel a registration in
`whole or in part, but onlY under
`conditions set forth in 15 USC
`1054.2 Geographic iimitation will
`be considered by TTAB only in
`concurrent use proceedifl9-
`37 CPR
`2.99(h), 2.133(c).
`
`5
`
`Opposer/Petitioner is in P°5iti°n Of
`Plaintiff and Applicant/Respondent
`is Defendant.
`37 CFR 2.116(b)-
`
`Notice/Petition corresponds to
`complaint in civil action.
`37 CFR
`2.1l6(C).
`
`Amendment to pleadings in accord
`with Rule 15, Fed. Rules of Civil
`Procedure (FRCP). 37 CFR 2-107.
`2.115.
`
`4
`
`MRILING PROCEDURES
`Certificate of Mailing 61
`Transmission and Express Mail
`procedures effective for all PePeI5-
`37 CFR 1.8, 1.10.
`
`INSTITUTION OF PROCEEDINGF WI’-fl'n3RN'mI-I
`TTAB examines Notice/Petiti°n for
`formal requirements and Sends
`notification to Defendant. 9enera11Y
`within few weeks of filing date-
`Duplicate copy of Notice/Petition
`and Exhibits sent to Defendant.
`CFR 2.105, 2.113.
`
`37
`
`Notice/Petition may be withdrawn
`without prejudice herore Defendant
`files Answer.
`37 CFR 2.106(0).
`2.ll4(c). With written consent of
`Defendant, later withdrawal may be
`without prejudice.
`
`Defendant may not abandon
`application or surrender
`registration without prejudice
`except with written consent of
`Plaintiff.
`37 cru 2.135. 2-134-
`
`v
`
`c_o
`
`«,0
`
`9..
`
`at
`
`ANSWER; MJTIONS
`Time for Answer set by TTAE for 40
`days from Notification mailing
`date.3 counterclaim Should be filed
`with answer or promptly UPOH
`discovery of information supporting
`Counterclaim.
`37 CPR 2-lU5(b}.
`2.114(1)) .
`
`
`
`transcript on P1.
`Def. serves Test.
`within 30 days and files certified
`transcript and exhibits with TTAB.
`37 CFR 2.125.
`
`PLAINTIFF’S REBUTTAL PERIOD
`Rebuttal Test. period for P1. opens
`30 days after close of Def.'s Test.
`period and runs for 15 days.
`
`Pl. may file Notice of Reliance
`under 37 CFR 2.120, 2.122, with
`to
`matter relied on, and take Test.
`rebut Def. Test. and other evidence.
`
`Pl. serves and files Transcript of
`Rebuttal Test. and exhibits in
`accordance with 37 CFR 2.125.
`
`BRIEFS; ORAL HEARING
`Pl. Brief due 60 days after Rebuttal
`period closing.6
`
`if filed, due 30 days
`Def. Brief,
`after Pl. Brief due.
`
`if filed, due 15
`Pl. Reply Brief,
`37 CFR
`days after Def. Brief due.
`2.128.
`
`Discovery Depositions (noticed and
`taken within Disc. Period)
`in
`District where deponent resides or
`is employed.
`3? CFR 2.l20(ah
`2.l20(b). Either party may request
`designation of witnesses under FRCP
`30(b)[6). 31(a)-
`
`PLAINTIFF’ S TRIAL PERIOD
`Plaintiff's Testimony—In—Chief.
`opens 60 days after Discovery Period
`closes, and runs for 30 days (refer
`to Order).
`
`0.0
`
`0.0
`
`to
`
`u‘:
`
`

`
`
`
`Separate Request for ()ral Hearing.
`if filed, due not lateir than 10 dfiY5
`after Reply Brief due.
`37 CPR
`2.129.
`
`TTAB Notice of Oral Hearing sent to
`all parties.
`
`0.0
`
`Oral Hearing before panel of at
`least three TTAB judges.
`30 minutes
`for each party.
`37 CFR 2.129.
`
`DECISION; RECONSIDERATION; APPEAL
`TTAB Deliberation. Writing of
`Opinion and Decision in due course.
`
`Request for rehearing,
`reconsideration or modification, if
`
`due within one month. Brief
`filed,
`in opposition due within 15 days.
`37 CFR 2.129(c).
`
`Any Appeal from TTAB Decision due
`within two months of Decision or two
`months after denial of req.
`for
`recon.
`See especially 3? CFR
`2.129(d).
`
`

`
`
`
`NOTE: Footnotes and 7'1'AB addresses andtelephone numberappear on the back ofthis sheet.
`FOOTNOTES
`
`(1)
`
`(3)
`
`(3)
`
`(4)
`
`(5)
`
`(3)
`
`damaged by
`tlpposer may be any legal entity including a corporation. tipposer must believe that opposer would be
`registration or the mark and state the reasons. 15 use 1063 and 37 CPR 2.101. Notice or opposition need not he verified. $200
`reqmrea tee rer each class for each person opposing. 37 GFR 2.6, 2.i01(b) May be signed by attorney. 37 CPR 2.i0i(b). Duplicate
`copy including ermmts required. Order status and title copies of pleaded registrations in advance and attach to NcticeiPetition or
`introduce as evidence during Testimony-in-Chief period. 37 GFR 2.122.
`
`Aeuerr grounds and requirements (Footnote 1) for initiation or cancellation proceeding are similar to those for an Opposition
`proceeding and are covered In 15 USC 1064, 1092 and 37 GFR 2.111. 2.112. 8200 required fee per class, per person. Duplicate copy
`required.
`
`Except Noflcemeuuon, each paper must be served an opponent. Statement or service (date and manner) is required. Period to
`respond to motions and Discovery Requests is extended 5 days when service is by first-class mail, “Express Mail.” or overnight
`courier. 37 CFR 2.119. Action due on weekend or n.c. holiday can be taken on next business day. 37 Om 1.7.
`
`Resetting of time to respond to Discovery Request does not result in extension of Discovery period and subsequent testimony periods
`unless requested. 37 CFR 2.120(3). All consented extensions of time should be filed in triplicate and list specific dates for all
`subsequent periods affected.
`
`lgreepr for 37 cm 2,122(e) documents, documents produced in response to Requests for Production cannot be made of record by
`Notice of Reliance alone. 3? GFR 2.120(l)(ll).
`
`Briefs should he typewflttflll or printed, double-spaced. in at least pica or eleven-point type. on letter paper (8% x 11). Three copies or
`brietg requ11'ed_ Alphabetical index of cases required Length limit or 55 pages, including table of contents, index of cases,
`description of record, statement of issues, recitation of facts, argument, and summary. Reply brief 25 pages total. 37 cm 2.123(b).
`
`B
`
`All papers not requiring a tee should be mailed to:
`
`Box TTAB No Fee
`
`Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`NOTE: For papers with ice, use “Box TTAB Fee”
`
`'l'I'AB Office Location and Telephone Number
`
`2900 Crystal Drive
`South Tower, suite 9B4!)
`Arlington, Virginia 22202-3513
`
`Telephone: (703) 308-9300
`
`

`
`
`
`'9
`
`(TRADEMARK RULE 2.18)
`
`TTAB NOTICE CONCERNING CORRESPONDENCE ADDRESS
`
`The Trademark Trial and Appeal Board will mail correspondence to only one address for each party_
`
`If a party is located in the U.S., correspondence will be sent to the party's own address. unless (1)
`papers fi|ed with the Board are filed by a party's attorney. (2) a written power of attorney is filed_ (3) a
`written authorization of some other person entitled to be recognized is filed, or l4l the party requests rr,
`writing that correspondence be sent to another address.
`In these situations, correspondence will be
`sent, reepeotiue|y_ to (1) the attorney filing papers, l2l the attorney named in the power of attorney, (3)
`the other person designated in the written authorization, or {-4) the other address specified by the party_
`
`when one attorney or other authorized representative makes an appearance on behalf of a party, his
`address is noted on the proceeding file as the correspondence address.
`If a second attorney or other
`authorized representative makes an appearance on behalf of the party, and requests that
`correspondence be directed to him. the correspondence address on the proceeding file will be changed.
`and future correspondence will be sent to the second attorney or other authorized representative_ rather
`than to the first one,
`If the second attorney or other authorized representative does not request that
`correspondence he sent to him, the Board will continue to send correspondence to the first attorney or
`authorized representative-
`
`H a power of attorney from a party to one attorney has been filed, and thereafter another attorney or
`authorized representative makes an appearance on behalf of the party and asks that correspondence be
`sent to him. the second attorney or authorized representative will be required to submit authorization,
`from the party or from the first attorney, for the requested change in correspondence address.
`
`H a power of attorney from a party to one attorney has been filed, and thereafter a power of attorney
`from the party to another attorney is filed. the second power of attorney will be construed as a written
`request to change the correspondence address from the first attorney to the second one. even if there is
`no revocation of the first power, unless the party or the first attorney directs otherwise. Likewise, if an
`attorney makes an appearance on behalf of a party. and thereafter the party files a written power or
`attorney to another attorney. the Board will send subsequent correspondence to the appointed attorney.
`
`rt a power of attorney from a party to one attorney has been filed, and thereafter that attorney mes an
`"associated power of attorney" to another attorney, the correspondence address will remain Unchanged,
`and the Board will continue to send correspondence to the first attorney, unless the first attorney or the
`party directs otherwise.
`
`in the case of a party whose application is the subject of a Board proceeding, any appearance or power
`of attorney (or designation of other authorized representative) of record in the application file at the time
`of the commencement of the Board proceeding is considered to be effective for purposes of the
`proceeding, and correspondence will be sent initially to that address. Thereafter, the correspondence
`address may be changed as described in Trademark Rule 2.18.
`
`In the case of a party whose registration is the subject of a Board proceeding, any representative which
`may be of record in the registration file at the time of the commencement of the Board proceeding is not
`oonsidered to be effective for purposes of the Board proceeding. Rather, correspondence IS sent to the
`registrant itseif t,n|e5s and until another correspondence address is established in the manner described
`in Trademark Rule 2.18-
`
`

`
` _
`
`THE TRADEMARK TRIAL AND APPEAL BOARD WOULD
`LIKE YOU TO KNOW:
`
`he TTAB Customer Service Center is available to
`
`*answer telephone inquiries
`*exp|all'I pertinent legal provisions and related administrative
`practices as they apply to specific cases
`*provide status information on pending cases
`*provide access to the files of pending cases
`*resolve problems
`
`The telephone number for the 'l‘l'AB Customer Service Center is (703) 308-9300, extension 0
`
`[zero].
`
`
`
`The Patent and Trademark Office has two special boxes for expedited processing and
`
`
`distribution of documents filed with the TTAB. Envelopes and transmittal letters for TTAB should be
`
`
`addressed to: Commissioner for Trademarks, 2900 Crystal Drive, Arlington, VA 22202, followed by
`
`
`one of the following designations
`
`
`"Box TTAB Fee": for papers filed with the TTAB that include
`filing fees, such as notices of opposition, petitions to cancel,
`
`
`and notices of ex parte appeal
`and
`
`
`"Box TTAB": for all non-fee papers filed with the TTAB, such as
`requests for extensions of time to file notices of opposition and
`
`motions.
`
`
`
`
` The TTAB Customer Service Center makes every effort to provide public access to application
`
`files, opposition files, cancellation files and concurrent use files immediately upon request for access.
`
`Files located will be made available in a central storage area accessible to the public. You can also
`
`access information about TTAB proceeding files online. Go to httpzllvvww.usgto.govlweblofficesldcomlttabl
`and click the “BISX LINK”.
`
`
`
`
`
`
`
`
`Any questions, comments, or suggestions concerning TTAB service should be directed to Jean
`Brown, TTAB Technical Program Manager, at (703) 308-9300, extension 123 or Aiendi Ziad,
`Supervisory Legal Assistant at (703) 308-9300, extension 205.
`
`
`
`
`

`
`
`
`ft‘
`
`NOTICE CONCERNING ALTERNATIVE DISPUTE RESOLUTION (ADR)
`
`The Trademark Trial and Appeal Board encourages you to consider alternative dispute resolution
`as 3 means of settiing the issues raised in this opposition or cancellation proceeding. Although more than
`95% of Board proceedings are decided prior to trial (by settlement or by entry of pre-trial judgment),
`alternative dispute resolution techniques might produce an earlier, mutually agreeable resolution of your
`dispute or might, at least, narrow the scope of discovery or the issues for trial. In either case, alternative
`dispute resoiutidn might save you time and money.
`
`Many nen-p;-ofit organizations, both inside and outside the intellectual property field, offer
`alternative dispute resolution services. Listed below are the names and addresses of organizations that
`have indicated that they can make arrangements for alternative dispute resolution. The listings are given
`for your convenience; the Board does not sponsor nor endorse any particular organization’s alternative
`dispute resolution services.
`
`
`CPR Institute for Dispute Resolution
`International Trademark Association
`Telephone: (212)949-6490
`Telephone: (212)642-1726
`Fax:
`(212) 949-8859
`Fax: (212) 768-7796
`www.cpradr.org
`www.inta.orgtadr/indexshtml
`e-mail:
`info@cpradr.org
`e-mail:
`lsti
`liano inta.or
`
`
`
`
`
`
`
`
`
`American Intellectual Property Law Association (AIPLA)
`2001 Jefferson Davis Highway
`
`
`
`Suite 203
`Arlington, Virginia 22202
`Telephone:
`(703) 415-0780
`Fax;
`703 415-0786
`American Arbitration Association (A)
`
`Headquarters
`140 West 515' Street
`
`
`New York, New York 10020-1203
`Telephone:
`(212) 484-3266
`
`212 307-4387
`Finally, if the parties consider using alternative dispute resolution in this proceeding, the Board
`wenid iike to know; and if the parties actually engage in alternative dispute resolution, the Board would
`be interested to learn What mechanism (e.g., arbitration, mediation, etc.) was used and with what general
`result, Such a statement from the parties is not required but would be helpful to the Board in assessing
`the value of alternative dispute resolution in Trademark Trial and Appeal Board proceedings.
`
`
`
`
`
`
`
`
`

`
`
`
`
`
`
`___..-_{.‘._._.;-'~"A __ --,,
`. lJ.e.e...., .
`..
`Testimony taken by deposition upon
`oral examination or upon written
`questions,
`3'.‘ CFR 2 . 123, 2.124.
`
`. ”
`
`50
`
`Plaintiff serves Transcript of
`testimony and copies of documentary
`exhibits on adverse party within 30
`days after completion of taking
`testimony. Certified transcript and
`exhibits filed with TTAB.
`37 CPR
`2.125.
`
`
`
`FILING OPPO
`
`
`Any person (0pposer) ma)? file 3
`Notice of Opposition Within 30 333/3
`against any mark