hereby certify that this correspondence is being deposited with the
`Jnited States Postal Service as first class mail in an envelope
`addressed to: Commissioner for Trademarks. P. O. Box 1451,
`\lexandria, Virginia 22313-1451, the date shown below:
`
`TRADEMARK
`0631700358
`
`r- '
`
`I
`
`j
`
`I
`
`_4
`
`1’
`
`,_
`/'
`
`2,148,690
`Post Registration
`Tammy Logan
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`DAL0121034328.1
`
`The mark to which the §8 affidavit pertains must be essentially the same as the mark that appears
`in the registration. See TMEP § 1604.13. Where the registered mark is currently used as one of
`several elements in a composite mark, the decision as to whether to accept the specimen requires
`consideration of whether the registered mark makes an impression apart from the other elements
`of the composite mark. If the display of the composite is such that the essence of the registered
`mark makes a separate impression, then the specimen may be sufficient for purposes of the §8
`requirement. If the mark, as used on the §8 specimen, creates a separate impression apart from
`any other material on the specimen, then the specimen may be accepted as evidence of current
`use of the registered mark.
`
`In re: the Registration of
`
`Sterling Software, Inc.
`Reg. No. 2,148,690
`Registered: April 7, 1998
`Mark: SOLVE:OPERATIONS
`Class: 9
`
`Office Action dated: July 18, 2008
`
`Commissioner for Trademarks
`PO. Box 1451
`Alexandria, Virginia 223 13—1451
`
`Post Registration Division
`Trademark Specialist:
`Tammy Logan
`
`llllllllllllllllllllllllllllllllllllllllllllllIlll
`12-23-2003
`‘J 5, Patent. & THDf‘c/TN Mail chl ‘31. 332
`
`RESPONSE TO OFFICE ACTION
`
`This response is respectfully submitted to the Office Action dated July 18, 2008.
`
`The Trademark Specialist has refused to accept the Section 8 portion of Registrant’s Combined
`Section 8 Affidavit & Section 9 Renewal Application for the above referenced registration on the
`basis that the specimen submitted does not show the registered mark.
`
`The Trademark Specialist’s objection that Registrant’s specimen depicts less than the entire mark
`as shown on the registration, is commonly referred to as “mutilation” of a mark. The mark
`depicted on Registrant’s specimen is a complete mark. The determinative factor is whether or
`not the subject matter in question projects a separate and distinct commercial impression in
`relation to the other element(s).
`
`Registrant respectfully submits the mark on the specimen is essentially the same mark that
`appears in the registration. The mark is SOLVE:OPERATIONS. The house mark CA on the
`specimen is separable from the SOLVE:OPERATIONS portion of the mark. Consumers widely
`
`

`

`TRADEMARK
`063170.03 5 8
`
`2,148,690
`Post Registration
`Tammy Logan
`
`recognize that CA is the Registrant’s company name, as well as Registrant’s house mark.
`Furthermore, CA and SOLVE20PERATIONS are not Visually integrated into a single mark. The
`SOLVE:OPERATIONS mark is clearly separated from the CA mark with a significant amount
`of space between the two marks. Accordingly, the SOLVE:OPERATIONS mark as depicted on
`Registrant’s specimen functions as a trademark separately from the CA house mark depicted on
`the specimen.
`
`Likewise, Registrant respectfully submits that the SOLVE20PERATIONS mark functions as a
`trademark and makes an impression apart from the CA mark. Registrant submits that the
`specimen submitted with the Section 8 Declaration properly shows the registered mark.
`Consequently, Registrant respectfully requests that the Trademark Specialist’s refusal of the
`Declaration under Section 8 be withdrawn.
`
`Deficiency Surcharge
`
`The Trademark Specialist has stated that the owner must submit a $100 deficiency surcharge if
`its response to the Office Action is received after the expiration of the grace period. Registrant
`respectfully submits that the specimen originally submitted with the Declaration under Section 8
`is in compliance with the requirements under Section 8 and therefore, no deficiency surcharge is
`due as a substitute specimen is not being submitted.
`
`Registrant respectfully submits that it has responded satisfactorily to the outstanding Office
`Action, and requests acceptance of the Section 8 Declaration and renewal
`f this registration.
`
`In a similar context, courts have held that portions of composite marks function as trademarks
`and are therefore separately registrable.
`In In re Servel, Inc, it was held that the mark SERVEL
`was registrable apart from the mark SERVEL TNKLINGS as shown on applicant’s specimen. In
`re Serve], Inc, 181 F.2d 192 (C.C.P.A. 1950).
`In another case, the Trademark Trial and Appeal
`Board held that the mark GRIPLET was separately registrable apart from the house mark BERG,
`notwithstanding the fact that the “G” in GRIPLET was overlapping with the “G” in BERG. In re
`Berg Electronics, Inc, 163 U.S.P.Q. 487 (T.T.A.B. 1969).
`
`DAL01:1034328.1
`
`I317 09
`
`VALERIE VERRET
`BAKER BOTTS L.L.P.
`2001 Ross Avenue
`
`Dallas, Texas 75201
`Telephone:
`(214) 953-6818
`Telecopier:
`(214) 661-4899
`Email: daltmdept@bakerbotts.com
`ATTORNEYS FOR REGISTRANT
`
`