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UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`
`
`
`
`
`
`
` Mailed: December 12, 2007
`
`Cancellation No. 92045458
`
`CGI Group Inc.
`
`v.
`
`Global Name Services LLP
`
`
`
`am/Winter
`
`
`
`
`Jyll S. Taylor, Administrative Trademark Judge:
`
`
`On September 19, 2007, respondent filed a proposed
`
`amendment to its Registration No. 2921123, with petitioner's
`
`consent. On October 9, 2007 the Board allowed respondent time
`
`to file the appropriate fee for the amendment. On October 22,
`
`2007, respondent filed the appropriate fee.
`
`
`
`By the proposed amendment, respondent seeks to change the
`
`recitations of services as follows:1
`
`In International Class 35,
`
`From: "providing an online electronic database of
`business document forms and business executed
`agreements,"
`
`To: "providing an online electronic database of
`business document forms and business executed
`agreements, excluding online non-downloadable software
`for use by members of the insurance industry to gather,
`manage and evaluate data relating to insurance policies
`
`
`1 The new wording is shown in bold italics.
`
`

`
`Cancellation No. 92045458
`
`and to prepare and transmit insurance applications,
`renewals, endorsements, cancellations, reinstatements
`and other insurance policy transactions."
`
`In International Class 39,
`
`From: "document management services, namely,
`electronic storage of documents,"
`
`To: "document management services, namely, electronic
`storage of documents, excluding online non-downloadable
`software for use by members of the insurance industry
`to gather, manage and evaluate data relating to
`insurance policies and to prepare and transmit
`insurance applications, renewals, endorsements,
`cancellations, reinstatements and other insurance
`policy transactions."
`
`In International Class 42,
`
`From: "Providing temporary use of online non-downloadable
`software for document management; technical support
`services, namely, troubleshooting of computer hardware and
`software problems,"
`
`To: "Providing temporary use of online non-downloadable
`software for document management, excluding online non-
`downloadable software for use by members of the insurance
`industry to gather, manage and evaluate data relating to
`insurance policies and to prepare and transmit insurance
`applications, renewals, endorsements, cancellations,
`reinstatements and other insurance policy transactions;
`technical support services, namely, troubleshooting of
`computer hardware and software problems, excluding online
`non-downloadable software for use by members of the
`insurance industry to gather, manage and evaluate data
`relating to insurance policies and to prepare and transmit
`insurance applications, renewals, endorsements,
`cancellations, reinstatements and other insurance policy
`transactions."
`
`Inasmuch as the amendment complies with all of the procedural
`
`requirements of Trademark Rule 2.173, 37 C.F.R. § 2.173, it is
`
`clearly limiting in nature as required by Trademark Rule
`
`2.71(b), 37 C.F.R. § 2.71(b), and petitioner consents thereto,
`
`
`
`2
`
`

`
`Cancellation No. 92045458
`
`it is approved. See Trademark Rule 2.133(a), 37 C.F.R. §
`
`2.133(a).
`
`
`
`The amendment will be forwarded to the Post Registration
`
`Branch of this Office for appropriate action in accordance
`
`with Section 7(e) of the Trademark Act.
`
`
`
`If this resolves the dispute herein, petitioner is
`
`allowed until THIRTY DAYS from the mailing date of this order
`
`to file a withdrawal of the petition to cancel, failing which
`
`the petition to cancel will go forward on the registration as
`
`amended. See Trademark Rule 2.114(c), 37 C.F.R. § 2.114(c).
`
`☼☼☼
`
`
`NEWS FROM THE TTAB:
`
`The USPTO published a notice of final rulemaking in the
`Federal Register on August 1, 2007, at 72 F.R. 42242. By
`this notice, various rules governing Trademark Trial and
`Appeal Board inter partes proceedings are amended. Certain
`amendments have an effective date of August 31, 2007, while
`most have an effective date of November 1, 2007. For
`further information, the parties are referred to a reprint
`of the final rule and a chart summarizing the affected
`rules, their changes, and effective dates, both viewable on
`the USPTO website via these web addresses:
`http://www.uspto.gov/web/offices/com/sol/notices/72fr42242.pdf
`http://www.uspto.gov/web/offices/com/sol/notices/72fr42242_FinalR
`uleChart.pdf
`
`By one rule change effective August 31, 2007, the Board's
`standard protective order is made applicable to all TTAB
`inter partes cases, whether already pending or commenced on
`or after that date. However, as explained in the final rule
`and chart, this change will not affect any case in which any
`protective order has already been approved or imposed by the
`Board. Further, as explained in the final rule, parties are
`free to agree to a substitute protective order or to
`supplement or amend the standard order even after August 31,
`2007, subject to Board approval. The standard protective
`order can be viewed using the following web address:
`http://www.uspto.gov/web/offices/dcom/ttab/tbmp/stndagmnt.htm
`
`
`
`
`
`3

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