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To: Metalogix International GmbH ( 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


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) TO RESPOND TO THIS LETTER: Go to 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 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 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 or call 1-800-7869199. For more information on checking status, see TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at e.jsp.

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To: Metalogix International GmbH ( 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

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