AMENDMENT STAGE
`
`CHANGE
`
`Name: Celia Abednego
`75714317
`
`L.O. 104
`
`MINATION WORKSHQQT
`‘XPUBLICATION/REGISTRATION STAGE
`SerialNo.
`HQ ,. iQQO34i
`
`Date 10/03/02
`
`INSTRUCIIONS: Place a check mark in the appropriate column and/or box to indicate which data elements have been amended/coded"
`IE
`
`L al Instrument Examiner
`
`Mark Data
`
`Misc. Mark Data
`
`Foreign Reg. Data
`
`Owner Data
`
`E] Prime/International Class
`
`El Goods and Services
`
`Data Element
`
`E! First Use Date
`
`C]
`
`El
`
`In Another Form
`
`lb
`
`Cl Word Mark
`
`El Mark Drawing Code
`
`El Scan Sub Drawing
`
`El Mark Description
`
`El Lining/Stippling
`
`El Translation
`
`.
`
`El First Use in Commerce Date
`
`El Certification
`
`El Pseudo Mark
`
`El Design Search Code
`
`El Disclaimer
`
`El Name/Portrait/Consent
`
`El Section 2(t) Entire Mark
`
`El Section 2(f) Limitation Statement
`
`El Section 2(f) in Part
`
`E! Amended Register
`
`El Foreign Country
`
`El Foreign Application Number
`
`CI Foreign Registration Number
`
`El Amended Register Date
`
`El 44(d)
`
`El Foreign Application Filing Date
`
`El Foreign Registration Date
`
`El Foreign Registration Expiration Date
`
`Cl Foreign Renewal Reg. Number
`
`El Foreign Reg. Renewal Expiration Date
`
`El Foreign Renewal Reg. Date
`
`CI Owner Name
`El Address 1
`
`El City
`
`CI Zip Code
`
`El Citizenship
`
`El Entity Statement
`
`El Assignment(s)/Name Change
`
`El Concurrent Use
`
`»
`
`El DBA/AKA/TA
`El Addressz
`
`A
`
`El State
`
`El Entity
`
`El Composed of
`
`

`
`- TRAI‘ AARK EXAMINATION WORKSI;
`ST
`|%NO CHANGE
`U PUBLICATION/REGISTRATION STAGE
`{AMENDMENT STAGE
`Date SEP 09 29"? Serial No.75/@7s gggggzt
`Name: LOLITA BEST L.0. 104
`INSTRUCTIONS: Place a check mark in the appropriate column and/or box to indicate which data elements have been amended/coded.
`
`Le ; al Instrument Examiner (LIE)
`
`S C
`
`lass Data _ Cl Prime/International Class
`— Cl First Use Date
`El
`In Another Form
`
`Cl Goods and Services
`[I First Use in Commerce Date
`El Certification
`
`Mark Data
`
`Misc. Mark Data
`
`Section 2(1)
`
`Foreign Reg. Data
`
`Owner Data
`
`'
`
`U Word Mark
`El Mark Drawing Code
`
`El Scan Sub Drawing
`
`Cl Mark Description
`Cl Lining/Stippling
`U Translation
`
`El Pseudo Mark
`Cl Design Search Code
`
`El Disclaimer
`El Name/Portrait/Consent
`
`El Section 2(t) Entire Mark
`El Section 2(f) Limitation Statement
`Cl Amended Register
`'
`
`‘
`
`El Foreign Country
`El Foreign Application Number
`
`El Foreign Registration Number
`
`El Section 2(f) in Part
`El Amended Register Date
`
`Cl 44(d)
`U Foreign Application Filing Date
`
`U Foreign Registration Date
`El Foreign Renewal Reg. Number
`
`Citizenship
`
`Entity Statement
`
`Assignment(s)/Name Change
`
`Amd/Corr Restr.
`
`U Concurrent Use
`
`El DBA/AKA/TA
`El Address 2
`
`CI State
`
`Cl Entity
`
`Cl Composed of
`
`Prior U.S_ Reg,
`Correspondence
`
`I certify that all corrections have been
`
`Ling
`
`El Prior Registration
`El Attorney
`El Attorney Docket Number
`
`El Correspondence Firm Name/Address
`
`Cl Doiinestic Representative
`
`tered in accordance with text editing guidelines.
`
`2
`
`‘
`
`DATE
`
`55? 0 9 2002
`
`

`
`Sent by: GREENBERG
`
`C
`
`7037491301;
`
`08/26/O2
`
`.5PM;]£IE‘fl&_#El5B;Page 1/5
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`fillil«Nfl[lli
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`Transmittal Cover Sheet
`
`T0
`
`Matthew H. Swycrs, Esq,
`
`Company
`
`United States Patent and Trademark Office, Trademark Examining Division
`
`Fax Number
`
`(703) 746-63 98
`
`Phone Number
`
`(703) 908-9104, x 280
`
`FROM
`
`David A. Kessler
`
`File Number
`
`46250.0] 0400
`
`Comments
`
`August 26, 2002
`
`4:50 PM
`
`Including this cover sheet
`
`5
`
`Please notify us immediately if not received properly at 703~749—1300.
`
`it is Intended only for the use of
`The information contained in this transmission is attorney privileged and confidential.
`me individual or entity named above.
`If the reader or ibis message is not the intended recipient. you are hereby
`notified that any dissemination, distribution or copy of this communication is strictly prohibited.
`if you have received
`this commurllcallon in error, plnaase notify us immradiately by telephone collect and return the original message to us ar
`the address below via the US. F'Cx'5ta| Service. We will reimburse you for your postage. Thank you.
`
`1750 Tyson-5 Boulevard. Suite 1200, Tysons Corner, Virginia 22102
`
`(‘(03) 749-1300 Fax (703) 749-1301
`
`Received from <7ll3?4ll1301 >al 8l26l02 4:53:40 PM [Eastern Daylight Time]
`
`

`
`‘Sent by: GREENBERG
`
`\
`
`C
`
`7037491301;
`
`O8/26/O2
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`5PM§].Ei'.EEX_#858;Page 2/5
`
`liliilllfllllli
`
`2\'l"|'u|tHli\'n‘ AT
`
`LAW
`
`llllllllllli
`
`August 25, 2002
`
`Attorne;/__Docket No. 46250010400
`
`VIA FACSIMILE & FIRST CLASS MAIL
`
`Assistant Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`BOX RESPONSES
`NO FEE
`
`Sir:
`
`Submitted herewith please find a Response to Second Office Action and Request for
`Reconsideration with respect to Applicant Sterling Softwaw (U-3:) 10°-is 3PP1iC'““i°“ F0‘ the
`mark ONTIME, Serial No. 76/ 1 22,034 and a retum postal card acknowledging receipt hereof.
`
`If any additional teas are required in connection with this filing, please charge Deposit
`Account No. 5041653.
`
`Respectfully Submitted,
`
` &mEm
`‘H-IEREBY CERTIFY TI-lA'1' THIS CORRESPONDENCE
`13 BEING DEPOSITED wrru THE uumao sures posrm.
`SERVICE WITH SUFFICH-INT POSTAGE AS FIRST
`CLASS MAIL IN AN ENVELOPE ADDRESSED T0:
`ASSISTANT COMMISIONER. FOR TRADEMARKS.
`2900
`~
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`2202 35”
`_ _
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`
`13:4?“ r/?_,(6_,¢/7q1__
`
`,
`r-,
`- Kurtz.
`Ric I
`David A. Kessler, Esq.
`
`sq‘
`
`Gmnberg Tmmg’ LLP
`1750 Tyscms Blvd, 12”‘ Floor
`McLean, VA 22|02
`(703)749-1300
`
`cc: Ms. Kellie S.Kei1"er
`
`(illl'.l'2."ll(lC|lt.’ ‘l‘I(AL1u:;,l.I.|’
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`ll|tr\'\‘l:2li
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`Received lltlm < 7037491301 > at 8l26l02 4:53:40 PM [Eastern Daylight Time]
`
`

`
`‘Sent by: GREENBERG
`
`\
`
`C
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`7037491301;
`
`08f26/O2
`
`i6PM;]g[Eag_#B5B;Page 3/5
`
`/4’
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re U.S. Trademark Application
`
`Sterling Software (U.S.), lnc
`
`Serial No.: 76/122,034
`
`Filed: September l, 2000
`
`Mark: ONTIME
`
`Assistant Commissioner for Trademarks
`Box RESPONSES NO FEE
`
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`;/x.-._/\_/\./~_z\_/\/\/
`
`[Examining Atty: Matthew
`
`Swyers
`
`Law Office: 104
`
`Our Ref. No.: 46250010400
`
`RESPONSE TO SECOND OFFICE ACTION AND
`REQUEST FOR RECONSIDERATION
`
`Pursuant to 37 C.F.R. § 2.64, Applicant files this response to the Second Office Action
`
`(“Office Action”), and request for reconsideration of the same, in which the Examining Attorney
`
`continued his refusal
`
`to register the mark ONTIMB (the “Marl<”) because the specimen is
`
`unacceptable as evidence of actual service mark usage for the services in class 42.
`
`l. ARGUMENT
`
`Applicant submits respectfully that
`
`the ONTLME system as described in the initial
`
`specimen encompasses both software and services. To the extent that the initial specimen is
`
`ambiguous as to whether Applicant uses the Mark in connection with the services recited in the
`
`application, “[i}n certain limited instances, otherwise deficient specimens may be accepted where
`
`other materials and statements sufficiently augment the record to support a claim of proper
`
`service mark usage.” TMEP § 1301.04.
`
`In response to the First Office Action, Applicant
`
`submitted additional evidence of proper service mark usage, as well as the sworn declaration of
`
`Kellie Keifer, Vice President of Advanced Technology Operations for Applicant. Applicant
`
`respectfully requests that the Examining Attorney reconsider his refusal to register in light of
`
`Received from <7t137491301 > at 8!26l02 4:53:40 PM [Eastern Daylight Time]
`
`

`
`‘Sent by: GHEENBERG
`
`\
`
`C
`
`7037491301;
`
`OB/26/O2
`
`6PM;]gfl;'a,L#858;F‘age 4/5
`
`such additional evidence.
`
`Respectfully submitted,
`
`GREENBERG TRAURIG, LLP
`
`Dated:
`
`till.“ O 1-"
`
`A
`
`:
`
`E. Kurtz, J11, Esq.
`David A. Kessler, Esq.
`
`1750 Tysons Blvd., Suite 1200
`McLean, VA 22012
`Telephone: 703-749-1300
`
`Received from '1 7037491301 > at 8l26»'02 4:53:40 PM [Eastern Daylight Time]
`
`

`
`.Sen1: by: GHEENBERG
`
`ec 7037491301;
`
`O8/26/O2
`
`J6PM;]eLE£!&_#858;P;-tge 5/5
`
`CERTIFICATE OF MAILING UNDER 37 C.F.R. § 1.8
`
`I hereby certify that this document (and any referred to as being attached or enclosed) is being deposited.
`with the United States Postal Service with sufficient postage as First Class Mail in an envelope and
`addressed to the Assistant Commissioner for Trademarks, 2900 Crystal Drive, Arlington, VA 22202-
`3513 on August 26, 2002, by Jo
`R. Keselyak.
`
`'
`
`seph R. K(;sely'
`
`Received from < 7037491301 > at 8!26I02 4:53:40 PM [Eastern Daylight Time]
`
`

`
`UNITED STA I‘ES PATENT AND TRADEMARK-OFFICE
`
`SERIAL NO.
`
`APPLICANT
`fI~Is"¥::.e::ar" 3. :%. f-in-:22!-" !:!...§r: ,. "
`
`..
`
`_’.f;-
`
`E
`
`FORM PTO-1525 (5-90)
`
`u.s. DEPT. OF COMM. PAT. & TM
`
`OFFICE
`
`‘ PAPERNO.
`
`‘
`
`ADDRES S 2
`Commissioner for Trademarks
`2900 Crystal Drive
`Arlington, VA 22202-3513
`www.uspto.gov
`Ifno fees are enclosed, the address should include
`the words "Box Responses - No Fee."
`
`ACIQQN N0-
`“‘”
`
`REE No_
`
`Please provide in all correspondence:
`
`1. Filing Date, serial number, mark and
`APP”°"""S “‘““°‘
`2. Mailing date ofthis Office action.
`3. Examining Attomey's name and
`Law Office number.
`4. Your telephone number and ZIP code.
`
`A PROPER RESPONSE TO THIS OFFICE ACTION MUST BE RECEIVED WITHIN 6
`MONTHS FROM THE DATE OF THIS ACTION IN ORDER TO AVOID ABANDONMENT.
`
`For your convenience and to ensure proper handling ofyour response, a label has been enclosed.
`Please attach it to the upper right corner ofyour response. If the label is not enclosed, print or zjype
`the Trademark Law Office No., Serial No., andMark in the upper right corner ofyour response.
`
`RE: Serial Number: 76/122034
`
`2ND OFFICE ACTION
`
`This letter responds to the applicant's correspondence received on September 12, 2001. The
`examining attorney has considered the applicant's arguments in support of registration and, based
`upon those arguments, advises the applicant that the refusal to register the mark based upon a
`likelihood of confusion with the mark contained in U.S. Registration No. 1,625,682 is hereby
`WITHDRAWN. The examining attorney further advises the applicant that its amendment to the
`recitation of services in Class 42 is acceptable and has been made a part of the record. The
`following issue remains.
`
`Specimen of Use — Class 42
`
`The specimen is unacceptable as evidence of actual service mark use for the services in class 42
`because they specimen submitted is not an acceptable physical form of specimen. The applicant
`must submit a specimen showing the mark as it is used in commerce.
`37 C.F.R Section 2.56.
`Examples of acceptable specimens are signs, photographs, brochures or advertisements that show
`the mark used in the sale or advertising of the services. TMEP section 1301.04. The applicant
`must verify, with an affidavit or a declaration under 37 C.F.R. Section 2.20, that the substitute
`specimen was in use in commerce at least as early as the filing date of the application. 37 C.F.R.
`Section 2.59(a); TMEP section 905.10.
`
`

`
`76/122034
`
`General Information
`
`the Trademark Status Line, (703) 305-8747, has been established for
`For your convenience,
`immediate case status inquiries, and is available Monday through Friday, from 6:30 a.m. until
`Midnight, Eastern Standard Time.
`
`If the applicant has any questions or needs assistance in responding to this letter, please telephone
`the assigned examining attorney.
`
`Matthew Swyers
`Attorney Examiner
`Law Office 104
`
`Tel. (703) 308-9104 x 280
`Fax (703) 746-6398
`email matthew. swyers@uspto.gov
`
`

`
`N/AMENDMENT STAGE
`Name: LOLITA BEST L.o. 104
`INSTRU
`
`_.ET
`TR; VJMARK EXAMINATION WORKS
`CI NO CHANGE
`CI PUBLICATION/REGISTRATION STAGE
`Date 11/6/01
`Serial No. 75/@ 78
`loiél-O3f£
`
`Leal Instrument Exami er (LIE)
`—Amenata Element
`Class Data
`El Prime/Intemational Class
`4' Goods and Services
`Cl First Use Date
`C! First Use in Commerce Date
`
`Cl
`
`In Another Form
`
`D Certification
`
`Mark Data
`
`Misc. Mark Data
`
`Cl Word Mark
`CI Mark Drawing Code
`
`Cl Scan Sub Drawing
`
`El Mark Description
`CI Lining/Stippling
`CI Translation
`
`Section 2(1)
`
`El Section 2(f) Entire Mark
`Cl Section 2(f) Limitation Statement
`
`Foreign Reg. Data
`
`Owner Data
`
`EIEIDEIEJEI
`
`Ell]
`
`|'_'lE|ElEl
`
`Amended Register
`Foreign Country
`Foreign Application Number
`'11
`oreign Registration Number
`oreign Registration Expiration Date
`oreign Reg. Renewal Expiration Date
`wner Name
`
`_Q"1'J"1'l
`
`Address 1
`.0«'2
`
`Zip Code
`Citizenship
`
`Entity Statement
`
`D Pseudo Mark
`Cl Design Search Code
`
`El Disclaimer
`CI Name/Portrait/Consent
`
`El Section 2(f) in Part
`
`Cl Amended Register Date
`CI 44(d)
`Cl Foreign Application Filing Date
`El Foreign Registration Date
`Cl Foreign Renewal Reg. Number
`Cl Foreign Renewal Reg. Date
`CI DBA/AKA/TA
`
`El Address 2
`E] State
`
`I3 Entity
`
`El Composed of
`
`Amd/Corr Restr.
`
`El Concurrent Use
`
`El Assignment(s)/Name Change
`
`Prior U.S. Reg.
`
`Correspondence
`
`El Prior Registration
`C! Attorney
`CI Attorney Docket Number
`- CI Correspondence Firm Name/Address
`I certify that all corrections have been e tere in accordance with text editing guidelines.
`LIE
`DATE [ [ "@"0[
`
`Other:
`
`Cl Domestic Representative
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OF]
`
`09-12-2001
`
`Illllllllllllllllllllllllllllllllllfllllllllllllll
`
`“'3' "W"! 5- TMOfc/TM Mail Ffcpt cu: [mg
`
`Examining Atty.: Matthew H. Swyers
`
`2
`
`Law Office;
`
`104
`
`Our Ref. No.: 46250.010400
`
`In re U.S. Trademark Application
`
`Sterling Software (U.S.), Inc
`
`Serial No.: 76/122,034
`
`Filed: September 1, 2000
`
`Mark: ONTIME
`
`\/\/\/x./\./y/y/\./xy
`
`Assistant Commissioner for Trademarks
`Box RESPONSES NO FEB
`
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`RESPONSE TO FIRST OFFICE ACTION
`
`This is in response to the First Office Action dated March 19, 2001 (the “Office Action”).
`
`In the Office Action, the Examining Attorney refused registration on the ground that Applicant’s
`
`mark ONTIME (the “Mark”) is confusingly similar to Registration No. 1,625,682.
`
`The
`
`Examining Attorney also refused registration on the ground that the identification of services is
`
`indefinite because the Applicant uses the wording “relating to” instead of “namely.”
`
`LIKELIHOOD OF CONFUSION:
`
`There Is No Likelihood Of Confusion Between The Mark And Registration No. 1,625,682.
`
`The Examining Attorney is incorrect in concluding that there is a likelihood of confusion
`
`between Applicant’s Mark and Registration No. 1,625,682. Applicant’s goods are “computer
`
`software for synthesizing and/or displaying air carrier operational data,” while its services are
`
`“computer services for others relating to design and implementation of software for synthesizing
`
`and/or displaying air carrier operational data.” Registrant’s goods, on the other hand, are
`
`“computer programs for schedule management, and manuals sold therewith.”
`
`The Examining Attorney concludes Without any evidence that “[s]ince both marks
`
`

`
`contain an identical term and both goods involve computer programs a likelihood of confusion
`
`exists between the two marks.” Applicant respectfully disagrees with the Examining Attorney.
`
`The only term that the descriptions of goods for the Mark and Reg. No. 1,625,682 both include is
`
`the word “computer.” Furthermore, Applicant and Registrant’s use of their respective marks
`
`demonstrates that consumers are not likely to be confused. Applicant uses its Mark for software
`
`that “integrates dynamic air traffic control (ATC) and airline data” — software that is clearly
`
`targeted at airports and airlines. (Exhibit A). Registrant uses its mark for computer software to
`
`coordinate employee “work schedules and meetings” — software that
`
`is targeted at
`
`the
`
`personal/retail consumer. (Exhibit B). The charmels of trade and targeted customers are
`
`completely different.
`
`The fact that the Mark and Reg. No. 1,625,682 both involve computers and software is
`
`insufficient to find a likelihood of confusion.
`
`[T]he Board has cautioned that there is no per se rule that confusion will always
`be found as between any and all items of computer ‘hardware and software. .
`.
`.
`As the computer becomes widely accepted as a common tool used in all phases of
`businesses and professions, it becomes possible for a trademark on computer
`products targeted at a specialized market to coexist without confusion with a
`somewhat similar trademark used on computer products targeted at a quite
`different specialized market. .
`.
`. Thus, the Trademark Board and the Federal
`Circuit “have rejected the View that a relationship exists between goods and
`services simply because each involves the use of computers.”
`
`4 J. THOMAS MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 24:44 at 24-65 (4”‘ Ed.
`
`2000).
`
`In Amicus Communications, LP. 12. Hewlett—Packard Co., Inc., 1999 WL 495921 (W.D.
`
`Tex. June 11, 1999), the court addressed whether the plaintiff, which had registered the mark
`
`PAVILION for providing on—line communication services to affinity groups over the Internet,
`
`could allege the existence of a likelihood of confusion by the defendant’s use of the same mark
`
`for the manufacture and sale of personal computer systems. The court noted that the plaintiff’ s
`
`

`
`services required users to register to gain access, while the defendant did not restrict its sales of
`
`personal computers to specific individuals or groups. Amicus, 1999 WL 495921 at *l2.‘
`
`Finding no likelihood of confusion merely because both marks involved computers, the court
`
`observed:
`
`More to the point, there are other instances of personal computers and internet
`services companies sharing names.
`For example, Presario is the name of a
`leading personal computer marketed by COMPAQ and Presario.com is an
`unrelated consulting company which offers advice on systems integration. Indigo
`is the name of a work station marketed by Silicon Graphics and unrelated
`Indigo.com markets science—re1ated equipment. ASPIRE is the name of a
`personal computer and unrelated to ASPIRING TECHNOLOGIES provides web
`page development and internet services. VERSA is the name of [a] notebook
`computer and unrelated Versa.com provides internet publishing and marketing
`services.
`Poweredge is
`a
`sub-brand of Dell Computers
`and unrelated
`Poweredge.com provides internet site hosting. Pavilion Technologies, Inc.
`in
`Austin, Texas markets software under the name Pavilion. The Trademark Trial
`and Appeal Board has rejected plaintiffs premise that all computer hardware,
`software and internet services are “closely related” when it noted that: “[T]here
`must be some similarity between the goods and services beyond the fact that each
`involves the use of computers.” The Trademark Trial and Appeal Board has held
`the fact that the two parties provide computer programs in and of itself “does not
`establish a relationship between good[s] or services such that consumers would
`believe that all computer software programs emanate from the same source
`simply because they are sold under similar marks.
`.
`.
`. The computer filed [sic]
`has become too large and too fragmented for a per se rule.
`
`Id. at *l2—13. See also In re Quadram Corp., 228 U.S.P.Q. 863 (T.T.A.B. 1985) (no likelihood
`
`of confusion between software for energy conservation [FASER] and hardware buffers
`
`[MICROFAZER]); Information Resources v. X*PreSs Info. Svs., 6 U.S.P.Q.2d 1034 (T.T.A.B.
`
`1988) (no likelihood of confusion between news service transmitted through cable television to a
`
`personal computer
`
`[X*PRESS] and specialized information analysis computer programs
`
`[EXPRESS]); Electronic Data Sys. Corp. v. EDSA Micro Corp., 23 U.S.P.Q.2d 1460 (T.T.A.B.
`
`1992) (no likelihood of confusion between general data processing services [EDS] and computer
`
`‘The virtually identical situation exists in the present case. Access to Applicant’s services requires
`registration and a password, whereas the goods sold under Reg. No. 1,625,682 are not restricted to any
`particular individual or group.
`
`

`
`assisted design for electrical power systems [EDSA]) and Aries Sys. Corp. V. World Book, Inc.,
`
`26 U.S.P.Q.2d 1926 (T.T.A.B. 1992) (no likelihood of confusion between computer programs
`
`for encyclopedic information [INFORMATION FINDER] and computer programs for retrieval
`
`in specialized medical databases and sold to physicians [KNOWLEDGE FINDER]).
`
`AMENDMENT OF RECITATION OF SERVICES
`
`Applicant amends its recitation of services as follows:
`
`“computer services for others, namely, the design and implementation ofsoftware \/
`
`for synthesizing and/or displaying air carrier operational data” in International
`Class 42.
`
`SPECIMENS
`
`The Examining Attorney indicated that “[t]he specimen is unacceptable as evidence of actual
`
`service mark use because it fails to demonstrate use of the mark for the services recited in the application.
`
`Applicant submits respectfully that the ONTIME system as described in the initial specimen encompasses
`
`both software and services. To the extent that the initial specimen is ambiguous as to whether Applicant
`
`uses the Mark in connection with the services recited in the application, “[i]n certain limited instances,
`
`otherwise deficient specimens may be accepted where other materials and statements sufficiently augment
`
`the record to support a claim of proper service mark usage.” TMEP § 1301.04.
`
`. Applicant’s ONTlME service integrates dynamic air traffic control and airline data to improve
`
`airline bank management. Applicant receives data from a variety of Federal Aviation Administration
`
`sources (“FAA Data”), and blends the FAA Data with data received from airlines (“Airline Data”) and
`
`other commercial sources of aircraft data to determine optimal
`
`landing and gate arrival
`
`times.
`
`(Declaration of Kellie S. Keifer at 1] 3) (Exhibit C). More specifically, Applicant receives FAA Data
`
`from a variety of Federal Aviation Administration sources and Airline Data from airline ramp towers and
`
`operational control centers and data from other commercial sources, at its sever located in its Ft. Worth,
`
`Texas offices using a TCP/IP protocol over a secure, airline-developed client/server communication
`
`network. Li. at 1] 4. Applicant blends the FAA Data, Airline Data, and data from other commercial
`
`

`
`sources on its server, and subsequently makes that information available to customers using a computer
`
`interface designed by Applicant to display the final data. Li.
`
`In order to use Applicant’s ONTIME
`
`service, customers must purchase a license for each terminal accessing Applicant’s server, and must pay a
`
`monthly recurring fee, which includes the following services: (1) technical support; (2) regular software
`
`upgrades; and (3) training sessions. Li.
`
`The present case is very similar to In re Lativ Systems, Inc, 223 U.S.P.Q. 1037 (T.T.A.B. 1984),
`
`Where the applicant sought to register the mark VINYLIZING as a service mark for “material treatment,
`
`namely, applying a chip resistant coating to metal surfaces likely to be subject to abrasion such as
`
`automobile bodies.” The applicant submitted a specimen identifying the mark as a process. The issue
`
`before the Trademark Trial and Appeal Board was “whether the term VINYLIZING, concededly sued as
`
`the name of a process, also functions as a service mark. This issue must be determined by examining the
`
`specimens of record along with any other material made of record by appellant during the prosecution of
`
`its application.” Lativ Systems, 223 U.S.P.Q. at 1038 (citing cases). The Board observed that the
`
`materials filed by the applicant to bolster its initial specimens demonstrated use of the mark for services:
`
`On the new brochures, we find unmistakable evidence that the term VINYLIZING is
`used to indicate that the service of app1icant’s franchisees in applying the coating to
`motor vehicles, including, in particular, the following: VINYLIZING * * * 4. is quickly,
`easily and inexpensively applied in two steps by your Vinylizing dealer.
`
`Id. As a result, the Board reversed the Examining Attorney’s refusal to register on the ground that the
`
`term sought to be registered identified a process rather than a service. Id. at 1039.
`
`CONCLUSION
`
`Based on the above, Applicant has responded to all outstanding issues relating to the
`
`above—referenced application. Applicant respectfully requests that the mark ONTIME be
`
`allowed to proceed to registration.
`
`

`
`Respectfully submitted,
`
`Dated: ql/0 ‘O1
`
`GREENBERG TRAURIG, LLP
`
`a.
`
`By:
`
`'
`Richard E. Kurtz, J12, Esq.
`David A. Kessler, Esq.
`
`1750 Tysons Blvd., Suite 1200
`McLean, VA 22012
`Telephone: 703-749-1300
`
`

`
`
`
`WPODOONEmorioma
`
`

`
`
`
`mroduclng OnTlME"‘
`0nT|ME"‘ (Tnmpomuor: luloruuuizn IflarnpanntEtmronrmm) Is in
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`modernmdon, Sou-II»; Sokwnu It roam. um my mm In Innonuvu.
`mupma mum.
`The Solution
`omnsw blood: ruenndy mllshh PM ‘am mm may nmuu am kl;
`owrml hndlng ON and pt: IN «mu nduuua. sum ndnduh mmgommfli
`mm mm uffldmz. ma Irngular opcrlllocu menu and mm-, becam-
`mm mum In men ulfllm xchndulc rim n pmma m . am»,-, orpnlud
`mmur icr rmmodmn mm Mun lnhrvlndon n mqulrud.
`
`
`
`

`
`.: SOFTWARE
`STERLING
`7900 Sudlrsy Road
`Suite 205
`Man.
`VA ZOIO9
`(703)331-0994
`....,.m.m.n
`
`

`
`

`
`About OnTime
`
`‘Or:-=*g2.$§§,’I‘ia,,
`suave
`
`About OnTime
`Product Details
`
`Download More info
`H Request More info
`
`flcustomer Support
`I30nTime Training
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`OnTime gives you a
`fly access to all
`calendaring and
`scheduling functioi
`
`Home: Products: OnTime
`
`It's not just a matter of time
`
`0nTime® is an enterprise scheduling solution that
`enables organizations of any size to coordinate and
`synchronize work schedules and meetings.
`
`Completely Web-based, OnTime lets anyone in your
`organization with a Web browser view and update
`calendars and coordinate complex schedules-
`across organizational or geographical boundan'es—in
`real time.
`
`From the office, on the road, or at home, it ensures that
`you have access to the most accurate and up-to-date
`calendar information available.
`
`OnTime is a true enterprise solution, scalable to
`accommodate tens of thousands of users across your
`intranet and extranet.
`
`Use it with Livelink
`
`OnTime can be deployed as a standalone solution
`or integrated with Livelink to provide unparalleled
`global collaboration by integrating control of
`information and schedules. As a fully integrated
`offering, Livelink and its OnTime module ensure
`that all of your projects stay on time and on course.
`
`Q Product Details
`
`Copyright © 2001 Open Text Corporation. All Rights Reserved.
`
`http://www.opentext.com/ontime/
`
`5/2/2001
`
`

`
`I3/about OnTime
`EProduct Details
`
`I! Downioad More info
`I: Request More info
`
`I! Customer Support
`OnTime Training
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`Solutions
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`Home: Products: OnTime: Product Details
`
`Web-based architecture for
`
`real-time performance
`
`Ottiitm
`
`OnTime is not tied '
`single type of e-ma
`server, so it allows
`create a solution th
`works in your
`environment
`
`Enter appointments. mi
`and tasks. View them i
`week or month fonn
`
`To learn more, cons:
`today: info@opentext
`Global tolI—free:
`+800-4996-5440 (new
`(Dialing problems’? gs
`LIB)
`North America toll-fr
`1»800-49945544
`
`Or: +1-519-888-7111
`
`OnTime's architecture allows you to build and configure
`a system that is powerful and flexible as well as easy
`to maintain.
`
`OnTime is scalable to tens of thousands of users.
`supporting any size deployment. It utilizes network
`bandwidth only when users are actually interacting with
`their calendars, so expanding the number of users
`doesn't overload the network.
`
`Since OnTime can be accessed through a standard
`Web browser, administration is simple. Multiple sewers
`communicate with each other in real time, acting as a
`single virtual server. And system administrators can
`manage the system from any location.
`
`OnTime enables you to improve efficiency levels while
`leveraging your existing corporate infrastructure. Most
`PlM-based calendar/scheduling systems are built on a
`proprietary e-mail system such as Microsoft Exchange®
`or Lotus Notes®. Because OnTime works
`independently of e-mail, organizations can deploy it
`regardless of the type or number of e-mail systems
`installed.
`
`Since today's workgroups are diverse, broad and
`constantly changing, controlling access to calendar
`information is imperative. With OnTime, access to your
`calendar can be made as open or secure as you
`choose.
`
`OnTime offers many powerful end-user features,
`including:
`
`powerful scheduling and calendaring
`functionality,
`immediate Common Time Availability,
`RSVP to invitations,
`point and click browser navigation,
`e-mail notification,
`event scheduling,
`resource scheduling,
`calendar printouts,
`remote user support, and
`palmtop integration.
`
`Discover more Q Download OnTime
`
`http://www.opentext.com/ontime/detai1s.htm1
`
`5/2/2001
`
`

`
`Page 2 of 2
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`Copyright © 2001 Open Text Corporation. All Rights Reserved,
`
`http://www.opentext.com/ontime/details.htm1
`
`5/2/2001
`
`

`
`About Open Text Corporation
`
`About Us:
`
`Hour Positioning
`Hour Legacy
`Hopen Text Leadership
`I:Our Customers
`
`flcontact Information
`I30pen Text Locations
`
`Ecareer Opportunities
`E investor information
`ECorporate Press
`Reteases
`
`Our Partners:
`
`nOur Affinity Partners
`flour Global Alliances
`
`flYear 2000 Readiness
`
`Solutions
`
`Products
`
`Services
`
`Careers
`
`investors
`
`Home: About Open Text
`
`Collaborative commerce-
`Open Text and the hyperlinked
`enterprise
`The Internet is fundamentally changing the way we
`do business. More and more organizations are
`realizing the importance of Web-based collaboration
`as an effective way to capture knowledge and
`improve critical processes. But collaboration isn't
`just about working together. Today, it provides the
`foundation for business-to-business e—commerce by
`increasing access to information, streamlining
`processes, reducing time-to-market, and improving
`customer satisfaction.
`
`B2B commerce has moved well beyond financial
`transactions into the realm of collaborative interaction.
`At Open Text, we design and deliver applications that
`allow organizations to leverage their people, resources
`and infrastructure to create collaborative commerce.
`Livelink, our flagship product, hyperlinks buyers, sellers,
`customers and employees across organizations and
`online communities. These hypernetworks form across
`geographical and departmental boundaries, enabling
`people to work together to share infonnation, negotiate
`contracts. and find solutions that redefine the commerce
`process.
`
`From the outset, Open Text has worked to develop
`technologies that promote innovation. Our efforts have
`been rewarded. Today, the Company is the largest
`supplier of collaborative Web—based solutions for the
`enterprise, supporting over four million users across
`4,000 corporations in 31 countries and 12 languages
`throughout the world.
`
`Find out how we're helping organizations like yours
`move their people and products Further Faster”.
`Contact us today for more information.
`
`Open Text promotes and supports industry standards
`through active participation in key industry groups:
`
`ASP Consortium
`Document Management Alliance
`Open Document Management API (ODMA)
`SGMUOpen
`HTML Working Group
`W3C
`Calendaring and Scheduling Working Group of
`the IETF
`AllM
`Simple Workflow Access Protocol (SWAP)
`Group of the IETF
`
`According to lnternaticn
`Corporation. the coltabo
`applications market will
`bitlion in software revent
`during this year alone as
`and more companies dis
`that human interaction i:
`vital component missing
`their business-to-busine
`transactions.
`
`To learn more, conta
`today: info@opentext
`Global toll-free:
`+800-4996-5440 (new
`(Dialing problems? 95
`help)
`North America toll-fr
`1-800-499-6544
`
`Or: +1-519-888-7111
`
`http://www.opentcxt:.com/about”us/
`
`5/2/2001
`
`

`
`About Open Text Corporation
`
`Page 2 of 2
`
`Copyright © 2001 Open Text Corporation. All Rights Reserved.
`
`http://www.opentext.com/about_us/
`
`5/2/2001
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re U.S. Trademark Application
`
`Sterling Software (U.S.), Inc
`
`Serial No.: 76/122,034
`
`Filed: September 1, 2000
`
`Mark: ONTIME
`
`g/\_/g/g/\4Ky%/\y@
`
`Examining Atty.: Matthew H. Swyers
`
`Law Office:
`
`104
`
`Our Ref. No.: 46250.0l0400
`
`DECLARATION OF KELLIE S. KEIFER
`
`I, Kellie S. Keifer, hereby make this declaration under penalty of perjury in
`
`