Subject: U.S. TRADEMARK APPLICATION NO. 85255200 - METALOGIX - N/A .
To: Metalogix International GmbH (kathleen@ansarilaw.com) Subject: U.S. TRADEMARK APPLICATION NO. 85255200 - METALOGIX - N/A Sent: 1/6/2015 11:03:38 PM Sent As: ECOM117@USPTO.GOV Attachments: Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35
Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 Attachment - 44 Attachment - 45 Attachment - 46 Attachment - 47 Attachment - 48 Attachment - 49 Attachment - 50 Attachment - 51 UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO) OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION U.S. APPLICATION SERIAL NO. 85255200 MARK: METALOGIX *85255200* CORRESPONDENT ADDRESS: KATHLEEN S ANSARI ANSARI LAW GROUP 501 STOCKTON AVENUE SAN JOSE, CA 95126 CLICK HERE TO RESPOND TO THIS http://www.uspto.gov/trademarks/teas/response VIEW YOUR APPLICATION FILE APPLICANT: Metalogix International GmbH CORRESPONDENT’S REFERENCE/DOCKET NO : N/A CORRESPONDENT E-MAIL ADDRESS: kathleen@ansarilaw.com OFFICE ACTION STRICT DEADLINE TO RESPOND TO THIS LETTER TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. ISSUE/MAILING DATE: 1/6/2015
THIS IS A FINAL ACTION. This Office action is in response to applicant’s communication filed on December 12, 2014. The examining attorney has carefully reviewed the applicant’s arguments and has found them to be unpersuasive. Thus the refusal under Section 2(d) is maintained and made FINAL. Likelihood of Confusion Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 2801280 and 3482955. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. Applicant seeks to register the mark METALOGIX for use with “Computer software that uses third party application interfaces to enable the storage, migration and management of business documents and content as a platform for exchanging of information”. The Registrant in U.S. Registration number 2801280 owns the mark METALOGIC for use with “Intellectual property licensing, namely, licensing of intelligent middle ware software; maintenance of intelligent middle ware software; technical support services, namely troubleshooting of intelligent middle ware software problems via telephone, global computer network, local area network or on-site examination or a combination of any of the above; computer consultation on how to simplify access to data and improve performance of intelligent middle ware computer software”. The Registrant in U.S. Registration number 3482955 owns the mark METALOGIC SOLUTIONS for use with “Business intelligence solutions development, namely, developing business intelligence computer software for data analysis, reporting and data management; design of business intelligence solutions computer software by using utility programs that are intended to facilitate business and consumer user access to live and stored data and to simplify e-commerce platforms; maintenance of business intelligence software; technical support services, namely, troubleshooting of business intelligence software problems via telephone, global computer network, local area network or on-site examination or a combination of any of the above; computer consultation on how to simplify access to data and improve performance of business intelligence computer software”. The same Registrant owns U.S. Registration numbers 2801280 and 3482955. In the first step of the analysis, the examining attorney finds that the applicant’s mark METALOGIX sounds like the leading term METALOGIC in the registrant’s marks. The applicant does not dispute that the marks look and sound similar. The marks are essentially phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc. , 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv). With respect to Registration number 2801280, the examining attorney finds that the applicant’s mark METALOGIX is the phonetic equivalent of the registrant’s mark METALOGIC. The marks are
essentially phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc. , 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv). Thus the marks are overall confusingly similar and impart a similar commercial impression. With respect to Registration number 3482955, the examining attorney finds that the applicant’s mark is also the phonetic equivalent of the leading term in the registrant’s mark. However, the addition of the term SOLUTIONS in the registrant’s mark, does not obviate the overall phonetic similarity of the marks. Adding a term to a registered mark generally does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part. The marks METALOGIX and METALOGIC SOLUTIONS are overall confusingly similar because the leading terms look and sound similar and the wording SOLUTIONS does not obviate the similarity of the marks. In the second step of the analysis, the applicant’s goods are related to the registrant’s services. The applicant provides computer software that stores and manages business documents so that the information may be exchanged. In Registration number 2801280, the registrant provides “computer consultation on how to simplify access to data and improve performance of intelligent middle ware computer software.” In Registration number 3482955, the registrant provides “computer consultation on how to simplify access to data and improve performance of business intelligence computer software.” In its response, the applicant maintains that its goods are different from the registrant’s services. The applicant argues that its “enterprise content management” software which facilitates the storage of “unstructured content” is not the same as “business intelligence” which “analyzes an organization’s data” to recommend solutions for business operation. The applicant alluded to articles from a particular publication, but failed to attach the full substantive content from the titles selected. Only a 30 word summary and abbreviated table of contents was attached. The applicant’s remarks regarding the authority of those articles is conclusory and provide no support to the applicant’s arguments. However, the examining attorney has attached several full articles by leading information technology experts to illustrate the merging demand of enterprise content management and business intelligence. The CIO article by Ryan Mulcahy indicates that “[business intelligence] is more than just corporate reporting and more than just a set of tools to coax data out of enterprise systems.” On the Sharepoint webpage,
which provides enterprise management software, there are testimonials by several international companies. A testimonial by Toyota states, “Toyota redesigns web portal using scalable cloud and content management solutions”. A page from the applicant’s website states that it uses Sharepoint to organize and access files. An article from the website for Information Management states that “ it is essential to combined the ability to manage [enterprise content] with business intelligence efforts (BI) to help facilitate workflow and collaboration and to provide a more enhanced view of the company.” Finally in an article about content management, the author refers to a study conducted by a research firm that outlined the benefits of unstructured data technologies such as text analytics in a [business intelligence] stack. In that study, Gerry Brown, a principal analyst found that “ “content intelligence” is a combination of [business intelligence software and content management technologies.” When analyzing an applicant’s and registrant’s goods and/or services for similarity and relatedness, that determination is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use. See Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); see also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002). Essentially both the applicant and the registrant are organizing and facilitating access to business information. In its response, and in the specimens of record, the applicant expressly uses Microsoft Sharepoint to administer a user’s business content.” Thus, the examining attorney has attached webpages from Microsoft Sharepoint to illustrate that software’s function. Sharepoint allows users to access, organize and share content from any device. The applicant’s software uses Sharepoint to access, store, organize and share content. According to the glossary on the Gartner website, which the applicant considers a reliable resource, “business intelligence” is an umbrella term that includes the applications, tools and best practices that enable users to access their information for analysis and performance. The registrant provides business intelligence solutions that include consultation on how businesses can access their data from emails, slide presentations and documents. Software applications like Sharepoint, would be a software tool to facilitate access to this information. So the applicant’s software which uses Sharepoint, is essentially a business intelligence solution because it is facilitating access to data. The only difference is that the applicant is providing goods and the registrant is providing services. However, both the applicant and the registrant provide a product that enables business users to access their data. The applicant does not dispute that the applicant and the registrant facilitate access to data. The applicant is disputing “why” the data is accessed. The applicant contends that the applicant’s software is used for the “internal collaboration and sharing of information within a company” and the registrant’s services are “used for products that analyze the external markets and analyze the customer to whom the company is marketing and selling.” However, based on the articles by the information technology experts, the examining attorney finds that to analyze information and make decisions, businesses use software to examine enterprise content. In fact, the examining attorney attaches evidence of a review of one of the Registrant’s products called eGlue. As the article states, the registrant’s eGlue is a software platform to integrate and share enterprise information. So the registrant has its own enterprise software to access data and deliver business
intelligence solutions. Because of the evidence of relatedness between content management software and business intelligence solutions to access content, the examining attorney finds that the applicant’s mark METALOGIX and the registrant’s marks METALOGIC and METALOGIC SOLUTIONS may mislead consumers to believe that the registrant’s services and the applicant’s goods originate from the same primary source. Thus the examining attorney refuses registration of the mark under Section 2(d) of the Trademark Act. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. This refusal is FINAL. Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond by providing one or both of the following: (1) A response that fully satisfies all outstanding requirements and/or resolves all outstanding refusals. (2) An appeal to the Trademark Trial and Appeal Board, with the appeal fee of 100 per class. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200. In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is 100. 37 C.F.R. §2.6(a)(15). /D. Beryl Gardner/ Examining Attorney Law Office 117 571-272-9162 (O) 571-273-9162 (F) beryl.gardner@uspto.gov TO RESPOND TO THIS LETTER: Go to http://www.uspto.gov/trademarks/teas/response forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail. All informal e-mail communications relevant to this application will be placed in the official application record. WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-7869199. For more information on checking status, see http://www.uspto.gov/trademarks/process/status/. TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at e.jsp.
utions.html 01/06120 15 02:04:59 PM I I :::m:: The IBM Cloud is thecloud for business. 11:11:11 Business onthe cloudis madewith IBM 11""11 I I I I Tap mtotheIBM Cloud. Learn more Want To Attract Mlllennials? Deploy Appealing Technology Home Enterprise Software Business Intelligence (Bl) TUTORIAL Business Intelligence Definition and Solutions MORE LIKE THIS Business Intelligence topics covering definition, objectives, systems and solutions. By Compiled by Ryan Mulcahy CIO IMar 6 . 2007 7:00 AM PT What is business intelligence? What kind of companies use Bl systems? Who shouldlead the way? How should Iimplement a Bl system? What are some potentialproblems? What are some benefits of business intelligence e More tips for getting Bl rg i ht What is business intelligence? Business intelligence , or Bl,is an umbrella term that refers to a variety of software applications used to analyze an organization's raw data. Bl as a discioline is made uo of several related activities. includina data Business Intelligence (Bl)for the MidMarket Business Intelligence The Brain Behind the Big, Bad Burger and Other Tales of Business Intelligence
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utions.html 01/06120 15 02:04:59 PM as the Boston Red Sox,Oakland A's and New England Patriots. RELATED LINKS Business Intelligence for the Mid-Market Business Intelligence Versus Business Analytics Whats the Difference Business Intelligence: Not Just for Bosses Anymore The Brain Behind the Big, Bad Burger and Other Tales of Business Intelligence NEWSLETTERS Enterprise With an analytical approach,the Patro i ts managed to win the Super Bowl three times in four years. The team uses data and analytical models extensively, both on and off the field. In-depth analytics help the team select players and stay below the NFL salary cap. Patriots coaches and players are renowned for their extensive study of game film and statistics, and Coach Bill Belichick reads articles by academic economists on statistical probabilities of football outcomes. Off the field, the team uses detailed analytics to assess and improve the "total fan experience. " At every home game, for example, 20 to 25 people have specific assignments to make quantitative measurements of the stadium food, parking, personnel, bathroom cleanliness and other factors. In retail, Wal-Mart uses vast amounts of data and category analysis to dominate the industry. Harrah's has changed the basis of competition ingaming from building megacasinos to analytics around customer loyalty and service. Amazon and Yahoo aren't just e-commerce sites; they are extremely analytical and follow a "test and learn" approach to business changes. Capital One runs more than 30,000 experiments a year to identify desirable customers and price credit card offers. Insider Resume Makeover: How (and When) to Break the Rules
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To: Metalogix International GmbH (kathleen@ansarilaw.com) Subject: U.S. TRADEMARK APPLICATION NO. 85255200 - METALOGIX - N/A Sent: 1/6/2015 11:03:38 PM Sent As: ECOM117@USPTO.GOV Attachments: Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8
trademark is liable to be objected to/rejected by the Trademark Examiner and/or the Registrar primarily due to its deceptive and phonetic similarity with the popular and reputed trademark in the same Class namely, “ Tanishq ” (Proprietor: Titan Company Ltd., promoted by the Tata
Commissioner for Trademarks . United States Patent and Trademark Office . P.O. Box 1451. Alexandria, VA 22313-1451 . Ms. Amy Cotton . Acting Deputy Commissioner for Trademark Examination Policy . United States Patent and Trademark Office . P.O. Box 1451. Alexandria, VA 22313-1451 . Re: Comments Regarding Implementation of the Trademark .
Effects of a registered trademark . 9. (1) The proprietor of a registered trademark has exclusive rights in the trademark. Such rights are infringed by such use of the trademark in Malta as is specified in article 10 without the consent of the proprietor. (2) Any reference in this Act to the infringement of a
Under China’s Trademark Law, foreigners or foreign enterprises must work with a China trademark agent or an organization that is qualifed to practice before the Trademark Ofce. However, if a foreign enterprise has a presence in Ch
Open EdX Open ed-X openedx 6 Do not otherwise vary the appearance of the Open edX trademark by abbreviating it, hyphenating it, incorporating it into acronyms, or changing its spelling or spacing. Always use the Open edX trademark as an adjective, never as a noun or a verb. Always follow the Open edX trademark with a lowercase noun.
Mark Scheme 128 Unit 2 Paper 02 129 Mark Scheme 144 CAPE Food and Nutrition Subject Reports 2004 Subject Report 2005 Subject Report 2006 Subject Report 2007 Subject Report 2008 Subject Report (Trinidad and Tobago) 2008 Subject Report (Rest of the Caribbean) 2009 Subject Report 2010 Subject Report 2011 Subject Report 2012 Subject Report 2013 .
Independent Personal Pronouns Personal Pronouns in Hebrew Person, Gender, Number Singular Person, Gender, Number Plural 3ms (he, it) א ִוה 3mp (they) Sֵה ,הַָּ֫ ֵה 3fs (she, it) א O ה 3fp (they) Uֵה , הַָּ֫ ֵה 2ms (you) הָּ תַא2mp (you all) Sֶּ תַא 2fs (you) ְ תַא 2fp (you
WIPO Convention, Art. 2 (viii) . trademark that has been awarded legal protection in Estonia, has no legal . PCT, Patent Cooperation Treaty - enables the applicant to obtain a patent in some or all of the contracting states. Table 3 Trademark application filing strategies, trademark protection territories .
