Epiq Systems, Inc.

Trademark Trial and Appeal Board

Aug 4, 2015

No. 85979129 (T.T.A.B. Aug. 4, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 4, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Epiq Systems, Inc.
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Serial Nos. 85978692 and 859791291
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Carla Calcagno of Calcagno Law PLLC,
for Epiq Systems, Inc.
Cory Boone, Trademark Examining Attorney, Law Office 104,
Chris Doninger, Managing Attorney.
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Before Zervas, Lykos and Hightower,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
On January 30, 2011, Epiq Systems Inc. (“Applicant”) filed an intent-to-use
application2 to register the mark DOCUMATRIX MOBILE (standard characters)
for, as amended,
Consulting in the field of technical support services, namely,
troubleshooting in the nature of diagnosing computer hardware and
software problems; leasing of computer software that stores and manages

1 On October 20, 2014, the Board granted the Trademark Examining Attorney’s motion to
consolidate the above referenced appeals. 17 TTABVUE.
2 Application Serial No. 85978692. Applicant disclaimed “MOBILE” apart from the mark as
shown.
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documents, digital media, text, sound and images in the fields of
electronic discovery, internal corporate matters, compliance, second
requests, litigation, investigations and document management in
International Class 42; and

Litigation support services, namely, conducting electronic discovery and
document review of electronically stored information that could be
relevant in legal proceedings; legal consultation services in International
Class 45.

On that same day, Applicant filed a second intent-to-use application for the
mark DMX MOBILE (standard characters) for services ultimately identified as
identical to those in the DOCUMATRIX MOBILE application, with the exception of
the underlined language below:
Consulting in the field of technical support services, namely,
troubleshooting in the nature of diagnosing computer hardware and
software problems; Leasing of computer software that stores and manages
documents, digital media, text, sound, and images, all in the fields of
electronic discovery, internal corporate matters, compliance, second
requests, litigation, investigations, and document management for
purposes of responding to discovery in International Class 42; and

Litigation support services, namely, conducting electronic discovery and
document review services of electronically stored information that could
be relevant in legal proceedings; Legal consultation services in
International Class 45.3

3 Application Serial No. 85979129. Applicant disclaimed “MOBILE” apart from the mark as
shown.
Both applications also included the following goods in International Class 9: “Computer
hardware; computer software that stores and manages documents, digital media, text,
sound, and images in the fields of electronic discovery, internal corporate matters,
compliance, second requests, litigation, investigations, and document management.”
Following issuance of the notice of allowance for both applications, Applicant filed a request
to divide the Class 9 goods which was granted. The Class 9 goods remained with the
“parent” applications while the Class 42 and 45 services were placed in the “child”
applications which are now the subject of this appeal.

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Following issuance of a notice of allowance, on March 1, 2013, Applicant
submitted a statement of use in connection with the DOCUMATRIX MOBILE
application. Applicant described the accompanying specimen as “the cover and
material pages from a brochure distributed by Applicant relating to its
DOCUMATRIX MOBILE services.” The Trademark Examining Attorney refused
registration as to both Classes 42 and 45 under Trademark Act Sections 1 and 45,
on the ground that Applicant’s specimen failed to show the applied-for mark used in
direct connection with the identified services. See 15 U.S.C. §§ 1051, and 1127; 37
C.F.R. §§ 2.56 and 2.88(b)(2). In response thereto, on September 4, 2013, Applicant
submitted a substitute specimen consisting of additional pages from the same
brochure originally submitted with the statement of use. In a final Office action
dated October 1, 2013, the Examining Attorney again refused registration on the
basis that the substitute specimen did not evidence use of the mark in connection
with any of the identified Class 42 and 45 services. On April 1, 2013, Applicant filed
a Request for Reconsideration which the Examining Attorney denied.
The prosecution history of the DMX MOBILE application is similar. The
specimen accompanying the statement of use submitted on April 15, 2013 consists
of the same brochure submitted by Applicant as its substitute specimen in the
DOCUMATRIX MOBILE companion application. On December 5, 2013, the
Examining Attorney likewise refused registration of Applicant’s DMX MOBILE
mark as to both classes of services on for the same reasons noted above. No
substitute specimen was submitted in connection with DMX MOBILE application.
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The Examining Attorney then issued a final refusal and subsequently denied
Applicant’s Request for Reconsideration.
On appeal, Applicant focuses on whether the following page of Applicant’s
brochure reprinted below constitutes proper use in commerce of the applied-for
marks for both Classes 42 and 45:

The Examining Attorney argues that the specimens do not show either of the
applied-for marks used in connection with any of Applicant’s services identified in
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Class 42 and 45 but rather identify computer software and hardware, a Class 9
good. More specifically, the Examining Attorney contends:
Whereas the applications identify services of technical support,
legal consulting, and conducting discovery and document review –
activities implicitly performed by people – the applied-for marks are
used solely as the names of specific software products. In other
words, while the “DOCUMATRIX MOBILE” and “DMX MOBILE”
software may be used by people to facilitate activities of the kind
identified, these software products are only tools per se and distinct
from the activities identified, at least according to the specimens of
record. The evidence clearly indicates that “DOCUMATRIX” is a
software platform, and the marks “DOCUMATRIX MOBILE” and
“DMX MOBILE” refer to versions of this software provided on-site
to consumers anywhere in the world. [internal citation omitted]
Thus, the marks are used for the actual software only; they are not
used in association with the services as actually identified to the
extent that the services imply human actors.

Examining Attorney’s Brief, 18 TTABVUE 6. In support of his position, the
Examining Attorney relies on In re DSM Pharm., Inc., 87 USPQ2d 1623,
1625-26 (TTAB 2008) and In re Walker Research, Inc., 228 USPQ 691 (TTAB
1986) which stand for the proposition that “[a] term that only identifies a
computer program does not become a service mark, unless it is also used to
identify and distinguish the service.” See Trademark Manual of Examining
Procedure (“TMEP”) § 1301.02(f) (July 2015). As the Examining Attorney
maintains, the brochure when considered in its entirety identifies the
services in question under the Epiq Systems umbrella mark, not the applied-
for marks DOCUMATRIX MOBILE or DMX MOBILE. In the Examining
Attorney’s view, “[a] consumer reading [the brochure] would believe that
while Epiq may provide the services that it identifies in these applications,
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“DOCUMATRIX MOBILE” and “DMX MOBILE” are the names only for the
Epiq software product and not a source for the actual services.” 18 TTABVUE
9.
Applicant on the other hand contends that the brochure does indeed
advertise both applied-for marks in connection with the Class 42 and 45
services. In support thereof, Applicant has submitted the declaration, with
exhibits, of Jayne Rothman, Applicant’s Vice President and General Counsel
(“Rothman Declaration”), to rebut the Examining Attorney’s assertions that
Applicant’s specimen shows the mark used only in connection with a software
platform or “software as a service” or SAAS. In relevant part, Rothman states
in her declaration regarding the DOCUMATRIX MOBILE mark:
7. Epiq System, Inc.’s DOCUMATRIX Mobile is not a software
platform as defined. It is not a software environment used to write
applications and run them. Nor is it an operating system under
which various smaller applications are designed to run.

8. Nor is “software as a service” the same thing as a software
platform. To my understanding, “software as a service” is a method
of distributing software over the Internet.

9. Instead DOCUMATRIX MOBILE is a bundled solution
consisting of three parts. First, an appliance (hardware) owned by
Epiq that Epiq brings to a client site. Second, the software
application loaded on the appliance that Epiq lease to the clients for
use at the client site. Third, service and support for the processing
solution.

10. Further, the software application component is software that
Epiq leases to its clients for use on-site. As the specimens state:
DOCUMATRIX MOBILE provides “On-site access to Epiq’s feature
rich proprietary review platform enabling accelerated review to
meet deadlines.” In other words, Epiq owns the hardware and
proprietary software components and leases those to the client who
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incorporate them on site. As indicated above, however, Epiq does
not supply the software over the Internet. It is not a SAAS model.

11. In summary, DOCUMATRIX MOBILE is not just software, but
is a complete solution consisting of hardware, software and
services. Consistent with this, and as the specimens themselves
reflect DOCUMATRIX MOBILE is a complete solution consisting of
hardware, software, legal consulting services, and litigation support
services and a broad variety of other consulting services, including
technical support to troubleshoot problems. [reference to specimen
omitted]

12. By consultants and experts, the specimen refers to and would be
understood by the relevant class of consumers as legal consultants
and experts in e-discovery, litigation support services, as well as
trouble- shooting. By analytic, prioritization and foreign support,
the specimen refers to and would be understood by the relevant
class of consumers as legal consultation services and litigation
support in the nature of document processing, review, analysis, and
prioritization conducted by both the technology and by legal
consultants and experts, as well as troubleshooting involved when
foreign language documents, especially when western alphabets,
including but not limited to, Chinese, Japanese and Korean
characters may be involved.4

Rothman made similar statements in connection with the DMX MOBILE mark, and
added the following:
9. …DMX is a bundled solution consisting of three parts. The
first component is an appliance (hardware) owned by Epiq that
Epiq brings to the client site. The second component consists of
software applications loaded on the applicant that Epiq leases to
the clients for use at the client site. These software applications
of DMX Mobile include Epiq’s Documatrix software that are
leased as part of the DMX MOBILE Solution, and are delivered
under the DMX MOBILE mark. The third component consists of
service and support for the processing solution. This service and
support consists of consultants and experts who offer a complete
suite of electronic discovery services, offered on-site or remotely
as part of the complete DMX MOBILE solution. These

4 USPTO TSDR Application Serial No. 85978692 entry dated April 1, 2014 (Request for
Reconsideration).
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consultants and experts analyze and review documents, data
and work flow. They also prioritize custodians and documents,
including developing algorithms to determine the most pertinent
documents and analyze the results. They upload data. They also
troubleshoot problems including the unique problems faced
when using the software with a foreign language and especially
foreign alphabet documents, such as those written in Chinese,
Korean or Japanese.

11. In summary, DMX MOBILE is not just software, but a
completed solution consisting of hardware, software and
services. Consistent with this, and as the specimens themselves
reflect DMX MOBILE is a complete solution consisting of
hardware, software, legal consulting services, and litigation
support services including a complete suite of electronic
discovery support services, and a broad variety of other
consulting services, including technical support to troubleshoot
problems. …5

Section 1(d)(1) of the Trademark Act, 15 U.S.C. § 1051(d)(1), requires that the
applicant file a “specimen” or facsimile “of the mark as used in commerce.” The Act
provides further that a mark is “in use in commerce … on services when it is used or
displayed in the sale or advertising of the services.” 15 U.S.C. §1127. Trademark
Rule 2.56(a), 37 C.F.R. § 2.56(a), likewise specifies that an applicant filing an
intent-to-use application file “one specimen . . . showing the mark as used in
commerce on or in connection with the goods or services” (emphasis added). A
service mark specimen consisting of advertising or promotional materials must
show a direct association between the mark and the services for which registration
is sought. See In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ 456, 457
(C.C.P.A. 1973); In re HSB Solomon Assocs., 102 USPQ2d 1269, 1274 (TTAB 2012).

5 USPTO TSDR Application Serial No. 85979129 entry dated June 5, 2014 (Request for
Reconsideration).
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That being said, the Board has recognized that the service need not be referenced
explicitly even in a specimen which purports to show use of a mark in the
advertisement or promotion of the services. See In re International Environmental
Corp., 230 USPQ 688, 691 (TTAB 1986) (specimen showing use of mark in surveys
used to promote service with no mention of “distributorship services” found
acceptable). While the exact nature of the services does not need to be specified in
the specimen, there must be something which creates in the mind of the purchaser
an association between the mark and the services that have been recited in the
application. In re Adair, 45 USPQ2d 1211, 1215 (TTAB 1997) (quoting In re
Johnson Controls Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)). See also In re
Osmotica Holdings, Corp., 95 USPQ2d 1666, 1668 (TTAB 2010). “In determining
whether a specimen is acceptable evidence of service mark use, we may consider
applicant's explanations as to how the specimen is used, along with any other
available evidence in the record that shows how the mark is actually used.” In re
DSM Pharmaceuticals Inc., 87 USPQ2d 1623, 1626 (TTAB 2008) (citing In re Int’l
Environmental Corp., 230 USPQ at 691).
We find that the page from brochure excerpted above does show the required
correspondence between both marks and services in Classes 42 and 45 being offered
for sale in commerce. “The same specimen may be acceptable for multiple classes if
the specimen shows direct association between the mark and at least one of the
identified services in each class.” See TMEP § 1301.04(f)(ii). We highlight the
following language:
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Documatrix Mobile (“DMX Mobile”) provides law firms and corporations
the ability to perform on-site document review in a self-contained portable
environment behind and in conjunction with a corporation’s IT
infrastructure. The hardware and software solution, coupled with Epiq’s
on-site support team, allows legal teams to abide by local data protection
or privacy laws and security concerns, and respond to litigation events,
regulatory investigations, and compliance services. Combining DMX
Mobile with Epiq’s Document Review Services provides attorney review
services on a global scale, wherever the investigation may occur.

The Examining Attorney interprets this language as an implicit
acknowledgment of the distinction between Applicant’s computer software versus
Applicant’s document review services provided under the marks. Indeed, the
Examining Attorney appears to be conflating the inclusion of the Applicant’s name
“Epiq” on the specimen as evidence of non-use of Applicant’s marks in connection
with any of the identified services. When considered as a whole, we do not read this
particular language in the specimen in such a restrictive manner. Rather, as aptly
put by Applicant, the consumer “would not dissect and micro-analyze the brochure
into component parts.” Applicant’s Reply Brief, 21 TTABVUE 7.
The Examining Attorney also contends that the specimen fails to identify the
services of software leasing. As he argues,
There is no “sign up for a subscription”, “log in and begin using the
software today”, or any of the other common invitations used by
companies to make it clear that their software is available to lease.
Thus, the specimens use the applied-for marks solely to reference
the applicant’s software products and not in any way for the
services as identified in the applications.

Examining Attorney’s Brief, 18 TTABVUE 9-10. While acknowledging that the
excerpt from the specimen does not use the specific term “leasing,” we do find that
the overall language noted above creates in the mind of a prospective consumer
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who, given the nature of the services will have specialized knowledge in the legal
field, an association between both marks and the Class 42 services of “leasing of
computer software that stores and manages documents, digital media, text, sound
and images in the fields of electronic discovery, internal corporate matters,
compliance, second requests, litigation, investigations and document management.”
The Rothman declaration clarifies that Applicant’s computer software is not a
platform, nor is it “software as a service” or “SAAS” provided via the Internet.
Rather, as she explained, the software is leased on-site by the consumer. By
consultants and experts, the specimen refers to and would be understood by the
relevant class of consumers as legal consultants and experts in e-discovery,
litigation support services, as well as troubleshooting.
Similarly, we find that such consumers will associate both the DOCUMATRIX
MOBILE and DMX MOBILE marks with the services providing in conjunction with
the software identified as “[l]itigation support services, namely, conducting
electronic discovery and document review of electronically stored information that
could be relevant in legal proceedings; legal consultation services” in Class 45. We
find that the specimen shows a direct association between the applied-for marks
and these Class 45 services.
Thus, we find that a client or prospective client of Applicant’s services would
view the marks DMX MOBILE and DOCUMATRIX MOBILE in “direct association”
with the Class 42 and 45 services noted above.
Decision: The refusal to register both applications is reversed.