Epiq Systems, Inc.Download PDFTrademark Trial and Appeal BoardAug 4, 2015No. 85978692 (T.T.A.B. Aug. 4, 2015) Copy Citation This Opinion is Not a Precedent of the TTAB Mailed: August 4, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Epiq Systems, Inc. _____ Serial Nos. 85978692 and 859791291 _____ Carla Calcagno of Calcagno Law PLLC, for Epiq Systems, Inc. Cory Boone, Trademark Examining Attorney, Law Office 104, Chris Doninger, Managing Attorney. _____ 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. Serial Nos. 85978692 and 85979129 - 2 - 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. Serial Nos. 85978692 and 85979129 - 3 - 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. Serial Nos. 85978692 and 85979129 - 4 - 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 Serial Nos. 85978692 and 85979129 - 5 - 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, Serial Nos. 85978692 and 85979129 - 6 - “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 Serial Nos. 85978692 and 85979129 - 7 - 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). Serial Nos. 85978692 and 85979129 - 8 - 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). Serial Nos. 85978692 and 85979129 - 9 - 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: Serial Nos. 85978692 and 85979129 - 10 - 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 Serial Nos. 85978692 and 85979129 - 11 - 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. 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