ATTORNEYS AT
`
`LAW
`
`lfifilfilfi
`
`September l0, 2001
`“
`
`Attorney Docket No. 46250010300
`
`VIA FIRST CLASS MAIL
`
`Box RESPONSES
`NO FEE ‘
`Assistant Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, Virginia 22202-3 513
`
`Sir:
`
`to
`Submitted herewith please find a Response‘ to First Office Action with respect
`Applicant Sterling Software (U.S.),
`lnc.’s application for the mark ONTIME:DISPATCH,
`» Serial No. 7 6/ 122,042 and a return postal card acknowledging receipt hereof.
`
`If any additional fees are required in connection with this filing, please charge Deposit
`Account No. 50-06533.
`
`2
`E
`M‘
`E”
`I HEREBY CERTIFY THAT THIS CORRESPONDENCE
`§§E1I:EING DEPOSITED wrrn ms UNITED STATES POSTAL
`VICE WITH SUFFICIENT POSTAGE As FIRST
`CLASS MAIL IN AN ENVELOPE ADDRESSED ro:
`'
`ASSISTANT COMMISIONER FOR T
`EMARKS,
`2
`~
`VA 222022513
`
`- cc: Ms. Kellie S. Keifer
`
`Respectfully Submitted,
`
`I M
`Ric ard E. Kuxtz, Ir., Esq.
`-
`David A’ Kessler’ Esq
`.
`Greenberg Traurig
`1750 Tysons Blvd., 12”‘ Floor
`McLean, VA 22102
`(703) 749-1300
`
`GREENBERG TRAURIC, LLP
`1750 Trsons BOULEVARD SUITE 1200 MCLEIXN, VIRGINIA 22102
`703-749-1300 FAX 703-749-1301 www.gI.1echluw.com
`MIAMI NEW YORK WAsHINGroN,D.C. ATLANTA PHILADELPHIA MCLEAN CHICAGO BosToN PHOENIX WILMlNC'l‘0N Los ANGELES DENVER
`S30 PAULO Four LAUDERDALE BOCA RATON WEST PALM BEACH ORLANDO TALLAHASSEE
`
`

`
`.
`
`‘
`
`.
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`1n re u_s_ Trademark Appmau-on
`
`Sterling Software UJ.S.), Inc
`
`Serial No.: 76/122,042
`
`Filed: September 1, 2()O0
`
`Mark: ONTIMlE:DISPATCH
`
`\J\y\/\/\/y/\J\/\J
`
`HlllllllllfllllllllllHlllUllllllflllllflllllfll
`
`Examining Atty.: Matthew H.‘
`
`Law Office:
`
`104
`
`o9_12_2oO1
`U.S. Patents. TMOR:/TM Mail Flcptot #35
`
`Our Ref. No.: 46250.010300
`
`Assistant Commissioner for Trademarks
`Box RESPONSES NO FEE
`
`2900 Crystal Drive
`Arlington, VA 22202-3 513
`
`RESPONSE TO FIRST OFFICE ACTIO_N
`
`This is in response to the First Office Action dated March 19, 2001 (the “Office Action”).
`
`In the OfflCC Action, the Examining Attorney refused registration on the ground that Applicant’s
`
`mark ONTIME:DISPATCH (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. App1icant’s goods are “computer
`
`software for synthesizing and/or displaying air carrier operational data,” while its services are
`
`“computer services fiar 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
`
`

`
`4
`
`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 I
`
`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 channels of trade and targeted customers are
`
`A 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 l\/lCCARTH‘{ ON TRADEMARKS AND UNFAIR COMPETITION § 24:44 at 24-65 (4‘“ Ed.
`
`2000).
`
`InAmicu.s' Communications, LP. v. Hewlett-Packard Co., Iruc., l999 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 confiision by the defendant’s use of the same mark
`
`for the manufacture and sale of personal computer systems. The court noted that the plaintiffs
`
`

`
`.1
`
`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 confilsion 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
`Indigocom markets science-related equipment. ASPIRE "is
`the name of a
`personal computer and unrelated to ASPIRING TECHNOLOGIES provides web
`page development and intemet services. VERSA is the name of’ [a] notebook
`computer and unrelated Versacom provides intemet publishing. and marketing
`services.
`Poweredge is . a
`sub-brand of Dell Computers
`and unrelated
`Poweredgecom provides intemet 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,
`a sofiware and intemet 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 compu.ter 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. I985) (110 likelihood
`
`of confiision between software for energy conservation [FASER] and hardware. buffers‘
`
`[l\/IICROFAZERD; Information Resources 12. 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 A/[icro Corp, 23 U.S.P.Q.2d l46O (T.T.A.B.
`
`1992) (no likelihood of confusion between general data processing services [EDS] and computer
`
`iThe 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.
`'
`-
`
`

`
`Jl
`
`assisted design for electrical power systems [EDSA]) and Aries Sys. Corp. 12. World Book, Inc,
`
`26 U.S.P.Q.2d 1926 (T.T.A.B. 1992) (no likelihood of confusion between computer programs
`
`for encyclopedic inf-onnation [INFORMATION FINDER] and computer programs for retrieval
`
`in specialized medical databases and sold to physicians [KNOWLEDGE FINDERD.
`
`AMENDMENT OF REECITATIOON OF SERVICES
`
`Applicant amends its recitation of services as follows:
`
`“computer services for others, namely, the design and implementation of software
`for synthesizing and/or displaying air carrier operational data” in International ‘
`Class 42.
`2
`
`A
`
`CONCLUSION
`
`Based on the above, Applicant has responded to all outstanding issues relating to the
`
`A
`
`above-referenced
`
`application.
`
`I Applicant
`
`respectfully
`
`requests
`
`that
`
`the mark
`
`ONTIME:DISPATCI-I be allowed to proceed to registration.
`
`Respectfully submitted,
`
`GREENBERG TRAURIG, LL]?
`
`Esq. _
`c ard E. Kurtz,
`David A. Kessler, Esq.
`
`1750 Tysons Blvd, Suite 1200
`McLean, VA 22012
`
`Telephone: 703-749-1300
`
`

`
`

`
`
`
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`About OnTime
`
`Page 1 of 1
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`-
`
`if 3! l HIE
`,/
`,
`1/-
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`Om-ime gives you '
`fly accesfls to all
`°a.e“d3""9 and
`scheduling functiol
`
`Event:
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`Home: Products: Onfime
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`It's not just a matter of time
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`nD°‘”"'°ad Mme mf°
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`On‘lime® is an enterprise scheduling solution that
`enables organizations of any size to coordinate and
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`Completely Web-based. OnTime lets anyone in your
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`calendars and coordinate complex schedules—
`across organizational or geographical boundan’es—-in
`'93‘ um”-
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`Onlime is a true enterprise solution, scalable to
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`Use it with Livelink
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`» OnTime can bedeployedas a standalone solution
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`{'3 Product Details \
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`Copyright I9 2001 Open Text Corporation. All Rights Reserved.
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`’/Www.opentexI.com/o'ntime/
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`Ontafi a
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`4/
`sa
`1.x/F
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`OnTime is not tied '
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`single type ofe-ma
`server, so it allows
`create a solution th
`
`works in your
`environment
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`Enter appointments, rm
`and tasks. View them i
`week or month form
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`To learn more, cont:
`today: inf0@opentext
`Global toll-free:
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`Web-based architecture for
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`Since OnTime can be accessed through a standard.
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`Collaborative commerce-
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`

`
`A'l"l'Ol{NEYS AT
`
`LAW
`
`1 H H U H | H
`
`IlllllllllllHillHllllllllllllllllfllllllllllllll
`
`09-12-2001
`US- Patent: & ‘rMotc/TM Mlil stem o. “,5
`
`September 10, 2001
`
`Attorney Docket No. 46250.010300
`
`VIA FIRST CLASS MAIL
`
`Box RESPONSES
`NO FEE
`Assistant Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`Sir:
`
`inid3A:i3oi3>5
`
`
`
`
`
`’sit1t§tw¥5iTznuz
`
`:5.” O
`to .
`Submitted herewith please find a Response to First Office Action with respect
`Applicant Sterling Sofiware (U.S.), Inc.’s application for the mark ONTIME:DISPATCH,
`Serial No. 76/ 122,042 and a return postal card acknowledging receipt hereof.
`
`If any additional fees are required in connection with this filing, please charge Deposit
`Account No. 50-0653.
`
`MA
`EM
`I HEREBY CERTIFY THAT THIS CORRESPONDENCE
`IS BEING DEPOSITED WITH THE UNITED STATES POSTAL
`
`CLASS MAIL IN AN ENVELOPE ADDRESSED To:
`ASSISTANT COMMISIONER FOR TR
`EMARKS,
`2900 cRYs
`V13,
`I
`’ VA 222023513
`
`” 0
`
`cc: Ms. Kellie S. Keifer
`
`Respectfiilly Submitted,
`
`Ric ard E. Kurtz, IL, Esq.
`
`.
`th
`Greenberg Traurig
`1750 Tysons BlVd., 12 Floor
`McLean, VA 22102
`(703) 749-1300
`
`CREENBERG TRAURIC, LLP
`1750 TYSONS BOULEVARD SUITE 1200 MCLEAN, VIRGINIA 22102
`703—749—1300
`FAX 703-749-1301 www.gttecI1law.com
`MIAMI NEWYORK WASHINGTON, DC.
`ATLANTA PHILADELPHIA lWCLEAl\' CHICAGO B0sToN PHOENIX WILMINGTON LOSANGELES DENVER
`SA0 PAULO Form‘ LAUDERDAIE BOCA RATON WEST PALMBEACH ORLANDO TALLAHASSEE
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Examining Atty.: Matthew H. Swyers
`
`Law Officel
`
`104
`
`Our Ref. No.1 46250010300
`
`In re U.S. Trademark Application
`
`Sterling Software (U .S.), Inc
`
`Serial No.: 76/122,042
`
`Filed: September 1, 2000
`
`Mark: ONTIMlLE:DISPATCH
`
`\./\J\/\/\./\./\/\./\/
`
`Assistant Commissioner for Trademarks
`
`Box RESPONSES NO FEB
`2900 Crystal Drive
`Arlington, VA 22202-3 513
`
`RESPONSE TO FIRST OFFICE ACTIQE
`
`This is in response to the First Office Action dated March 19, 2001 (the “Office Action”).
`
`I In the Office Action, the Examining Attorney refused registration on the ground that Applicant’s
`
`mark
`
`IM]E:DISPATCH (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 CONFUSIONE
`I
`
`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 soflware for synthesizing
`
`and/or displaying air carrier operational data.” Registrant’s goods, on the other hand,’ are
`I “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. N0. 1,625,682 both include is
`
`the word “computer.” Furthermore, Applicant and Registra;nt’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 channels 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, L.P. v. 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 *12.‘
`
`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 intemet
`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
`Indig0.com markets science—related equipment. ASPIRE is the name of a
`personal computer and unrelated to ASPJRING TECHNOLOGIES provides web
`page development and intemet services. VERSA is the name of [a] notebook
`computer and unrelated Versa.com provides intemet publishing and marketing
`services.
`Poweredge is
`a
`sub—brand of Dell Computers and unrelated
`Poweredgecom provides intemet 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 intemet 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.1Q.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.
`
`

`
`1
`
`.
`
`J
`
`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 retiieval
`
`in specialized medical databases and sold to physicians [KNOWLEDGE FlNDER]).
`
`AMENDMENT OF RECITATION OF SERVICES
`
`Applicant amends its recitation of services as follows:
`
`“computer services for others, namely, the design and implementation of software
`for synthesizing and/or displaying air carrier operational data” in International
`Class 42.
`
`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:DISPATCH be allowed to proceed to registration.
`
`Respectfully submitted,
`
`GREENBERG TRAURIG, LLIP
`
`B
`
`Q26,
`
`<.
`
`'
`3 Esq.
`IC ard E. Kurtz,
`David A. Kessler, Esq.
`
`%—/
`
`1750 Tysons Blvd., Suite 1200
`McLean, VA 22012
`
`Telephone: 703-749~l300
`
`

`
`
`
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`

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`Home: Products: Onfime
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`AboutOnflme
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`II Product Details
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`It's not just a matter of time
`
`OnTime® is an enterprise scheduling solution that
`enables organizations of any size to coordinate and
`synchronize work schedules and meetings.
`
`Completely Web-based, 0nTime lets anyone in your
`organization with a Web browser view and update
`calendars and coordinate complex schedules——-
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`From the office, on the road, or at home, it ensures: that
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`Onlime is a true enterprise solution, scalable to
`accommodate tens of thousands of users across your
`intranet and extranet.
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`Use it with Livelink
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`0nTime can be deployed as a standalone solution
`or integrated with Livelink to provide unparalleled
`global collaboration by integrating control of
`infonnation and schedules. As a fully integrated
`offering, Livelink and its OnTIme module ensure
`that all of your projects stay on time and on course.
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`9 Product Details
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`server, so it allows
`create a solution th
`works in your
`environment
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`Enter appointments. mi
`and tasks. View them i
`week or month form
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`To learn more, conta
`today: inf0@opentext
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`Home: Products: OnTime: Product Details
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`Web-based architecture for
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`real-time performance
`
`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 servers
`communicate with each other in real time, acting as a
`single virtual sewer. 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 caiendarlscheduling systems are built on a
`proprietary e—mafl 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 email 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:
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`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.
`
`000000000
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`Discover mores) Download OnTime
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`Collaborative commerce-
`Open Text and the hyperlinked
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`The lntemet is fundamentally changing the way we
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`realizing the importance of Web-based collaboration
`as an effective way to capture knowledge and
`improve critical processes. But collaboration isn't
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`B2B commerce has moved well beyond financial
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`At Open Text, we design and deliver applications that
`allow organizations to leverage their people, resources
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`Livelink, our flagship product, hypenlinks buyers, sellers,
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`From the outset, Open Text has worked to develop
`technologies that promote innovation. Our efforts have
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`Find out how we're helping organizations like yours
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