""7793
`
`Attorney Docket No. 020206-202500
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re Application No. 76/384,129
`Applicant:
`CIBER, Inc.
`Published:
`June 8, 2004
`Mark:
`’
`CIBER
`
`In re Registration No. 1,185,100
`Applicant:
`CIBER, Inc.
`Published:
`January 5, 1982
`Mark:
`CIBER
`
`In re Registration No. 1,479,942
`Applicant:
`CIBER, Inc.
`Published:
`January 5, 1982
`Mark:
`CIBER (Stylized)
`
`BRUCE F. EVANS,
`
`Petitioner/Opposer,
`
`CIBER» INC»
`
`Registrant/Applicant
`
`'
`
`Box TTAB NO FEE
`Assistant Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`Opposition No.: 91162306
`
`Cancellation No.: 92043733
`
`NOTICE OF MOTION AND
`REGISTRANT/APPLICANT’S
`MOTION
`
`FOR SUMMARY JUDGMENT
`
`
`
`
`
`NOTICE OF MOTION
`
`Please take notice that Applicant/Respondent, CIBER, Inc., (“CIBER”) by this document
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`and pursuant to 37 C.F.R. § 2.127, moves the Trademark Trial and Appeal Board (“TTAB” or
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`the “Board”) to grant summary judgment on the grounds and for the reasons set forth in the
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`accompanying Motion and incorporated brief.
`
`
`
`
`O1-04-2005
`US. Patent 8: TMOfcITM Mall cpt Dt. #74
`
`

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`
`
`Opposition No. 91162306
`Cancellation No. 92042733
`
`Page 2
`
`MOTION
`
`I.
`
`INTRODUCTION
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`Petitioner/Opposer Bruce F. Evans (“Evans”) lacks the requisite standing to prosecute
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`this proceeding before the TTAB. There is no genuine dispute that Evans has no real interest in
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`this proceeding. Likewise, there is no genuine dispute that Evans has no reasonable basis to
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`believe that he will be damaged by the registration of any of CIBER’s marks. CIBER, therefore,
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`respectfially requests that the Board enter summary judgment in favor of CIBER and dismiss this
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`proceeding for lack of standing.
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`II.
`
`UNDISPUTED FACTS
`
`CIBER is the owner of numerous trademark registrations and applications, including
`
`without limitation U.S. Trademark Registration Nos. 1,185,100, for CIBER, and 1,479,942, for
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`CIBER (stylized), as well as U.S. Trademark Application No. 76/384,129, for CIBER
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`(collectively, CIBER’s “Marks”).' Registration No. 1,185,100 has been on the Principal
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`Register since January 5, 1982, and Registration No. 1,479,942 has been on the Principal
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`Register since March 8, 1988. Id. Hence, both of these registrations have long since become
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`incontestable.
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`Evans owns a company called “Ciber Consulting.” From March 1, 1996 to March 1,
`
`2002, Evans’ company existed as “Ciber Consulting, Inc.,” an Illinois corporation. In'2002,
`
`1 King Dec]. 1] 3, Exhibit A. (All references herein to an exhibit refer to the respective exhibit attached to
`the Declaration of Chad E. King in Support of Summary Judgment (“King Dec1.”), filed concurrently
`herewith.)
`
`

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`
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`Opposition No. 91162306
`Cancellation No. 92042733
`
`Page 3
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`however, Evans lost the right to use the trade name “Ciber Consulting, Inc.” when his
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`corporation was administratively dissolved and CIBER registered that trade name in Illinois. See
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`Exhibit E at 7. Evans’ company is essentially a one man operation, with Evans running the
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`business out of his home as the sole officer, employee and owner.2 Evans’ business provides
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`very specialized consulting services in the field of nuclear records management and in the eight
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`years Evans has operated his business, he has only had four customers. Exhibit B at 9:23—lO:2,
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`19:14-23. Although Evans has attempted, on multiple occasions, to provide services outside this
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`field, such attempts have never been successfiil. Exhibit E, at 3; Exhibit G, at 7. Simply put,
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`there is absolutely no evidence that Evans ever will expand either his business or his use of the
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`CIBER mark beyond their current boundaries.
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`On September 18, 2002, CIBER initiated a trademark infringement action (the
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`“Infringement Litigation”) in the U.S. District Court for the Northern District of Texas against
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`Evans and his company, Ciber Consulting, Inc. (“CCI”), which was, at the time, an Illinois
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`corporation. King Decl. 1] 5, Exhibit C. The Infringement Litigation alleged that Evans and CCI
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`infringed CIBER’s rights in the CIBER Marks. Exhibit C. The Infringement Litigation was
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`transferred to the U.S. District Court for the Northern District of Illinois on January 27, 2003.
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`King Decl. 1] 5.
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`2 Evans’ wife is also a nominal owner of the business (51%) and carries the title of “President.” It
`appears, however, that her “ownership” and title are simply for the purpose of securing potential
`governmental preferences available to “woman-owned” businesses. See Exhibit E at 4, n.3.
`
`

`
`
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`Opposition No. 91 162306
`Cancellation No. 92042733
`
`Page 4
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`In the Infringement Litigation, Evans and CCI asserted a counterclaim against CIBER,
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`alleging that the mark CIBER is generic and requesting an order canceling CIBER’s registration
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`and an order compelling the rejection of CIBER’s application. Id. 1] 6. On May 7, 2004, CIBER
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`voluntarily moved to dismiss with prejudice its infringement claim against CCI and Evans, and
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`to dismiss the counterclaim as moot. Id. 1] 7, Exhibit E. Evans and CCI opposed the motion to
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`dismiss their counterclaim, alleging that their counterclaim was not moot because Evans and CCI
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`“have every intention of expanding their business to serve additional clients and, if the
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`opportunity presents itself, expanding the business outside the field of records management.”
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`King Decl. 1] 7, Exhibit F.
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`In an order dated July 6, 2004, the District Court dismissed CIBER’s claims with
`prejudice and dismissed Evans and CCI’s counterclaim as moot. Id. 1] 8, Exhibit G. In that
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`order, the District Court noted that Evans and CCI failed to provide any evidentiary support for
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`the proposition that Evans intended to expand his business, and that any speculation about such
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`intentions was too remote to provide a controversy between the parties. Exhibit E at 5, 7.
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`Specifically, the District Court found dispositive the utter absence of factual support for Evans
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`and CCI’s speculation that the business would expand, coupled with the fact that Evans “no
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`longer even hold[s] the right to use the trade name “Ciber Consulting, Inc.” in [his] home state of
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`Illinois .
`
`.
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`. .” Id. at 7.
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`On September 3, 2004, Evans initiated this proceeding by filing a Combined Petition to
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`Cancel and Notice of Opposition (the “Petition”), seeking the cancellation of U.S. Trademark
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`Registration Nos. 1,185,100 and 1,479,942, and opposing U.S. Trademark Application No.
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`76/384,129. In alleging standing before the TTAB, Evans asserted that he “has a real and
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`

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`Opposition No. 91162306
`Cancellation No. 92042733
`
`Page 5
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`personal interest in canceling the mark CIBER for computer and intemet related services because
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`he intends to continue doing business as “Ciber Consulting” and intends to expand his business,
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`including expanding the scope of his business and obtaining new and larger customers.”
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`Petition, ‘ll 5. This allegation is substantially identical to the allegation already rejected as
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`without factual basis by the District Court in the Infringement Litigation. Notably, the Petition
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`pleads no facts that either support this allegation or refute the findings of the District Court’s
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`opinion dismissing Evans and CCI’s counterclaim. Thus, there is no record evidence supporting
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`Evans’ allegations that he believes he will be damaged by the registration of CIBER’s mark.
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`III.
`
`ARGUMENT
`
`A.
`
`Summary judgment is appropriate in this case.
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`The Federal Rules of Civil Procedure generally apply to proceedings before the TTAB.
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`See 37 C.F.R. § 2.1 l6(a). Therefore, on a motion for summary judgment, the Board may render
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`judgment for the moving party if there is no genuine issue as to any material fact. See Fed. R.
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`Civ. P. 56(c). In Pure Gold, Inc. v. Syntex (U.S.A.), Inc., 739 F.2d 624, 222 U.S.P.Q. 741 (Fed.
`
`Cir. 1984), the Federal Circuit affirrned the Board’s grant of summary judgment in an opposition
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`proceeding. The court explained that the “basic purpose of summary judgment is one ofjudicial
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`economy.” Pure Gold, 739 F.2d at 626, 222 U.S.P.Q. at 743 (citing Exxon Corp. v. Nat ’l Food
`
`
`
`Line Corp., 579 F.2d 1244, 1246, 198 U.S.P.Q. 407, 408 (C.C.P.A. 1978)).
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`11 is against public
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`
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`interest to conduct unnecessary trials, and where the time and expense of a full trial can be
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`avoided by the summary judgment procedure, such action is favored. See Pure Gold, 739 F.2d at
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`

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`
`
`Opposition No. 91 162306
`Cancellation No. 92042733
`
`Page 6
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`621, 222 U.S.P.Q. at 743. Indeed, the Federal Circuit encouraged the disposition of matters
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`before the TTAB by summary judgment:
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`The practice of the U.S. Claims Court and of the fonner U.S. Court of Claims in
`routinely disposing of numerous cases on the basis of cross-motions for summary
`judgment has much to commend it. The adoption of a similar practice is to be
`encouraged in inter partes cases before the Trademark Trial and Appeal Board,
`which seem particularly suitable to this type of disposition. Too often we see
`voluminous records which would be appropriate to an infringement or unfair
`competition suit but are wholly unnecessary to resolution of the issue of
`registrability of a mark.
`
`739 F.2d at 627 n.2, 222 U.S.P.Q. at 744 n.2. See also Sweats Fashions, Inc. v. Pannill Knitting
`
`Co. Inc., 833 F.2d 1560 1562, 4 U.S.P.Q.2d 1793, 1795 (Fed. Cir. 1987) (lauding the use of
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`summary judgment to resolve Board proceedings).
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`The burden of a party moving for summary judgment is met by showing “that there is an
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`absence of evidence to support the nonmoving party’s case.” Celotex Corp. v. Catrett, 477 U.S.
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`317, 325 (1986). When the moving party shows that there is no genuine issue of material fact,
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`the nonmoving party “may not rest upon the mere allegations or denials of [its] pleadings.” Fed.
`
`R. Civ. P. 56(e). It must respond, setting “forth specific facts showing that there is a genuine
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`factual issue for trial.” Id. A factual dispute is genuine only if, on the evidence of record, a
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`reasonable fact finder could resolve the matter in favor of the nomnoving party. See Lloyd ’s
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`Food Products, Inc. v. Eli ’s, Inc., 987 F.2d 766, 767, 25 U.S.P.Q.2d 2027, 2029 (Fed. Cir. 1993);
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`Sweats Fashions, 833 F.2d at 1562, 4 U.S.P.Q.2d 1795. To survive summary judgment on the
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`issue of standing, therefore, Evans must adduce sufficient evidence to establish a genuine issue
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`of material fact with respect to his standing before the TTAB._ As discussed below, however,
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`there is no genuine dispute that Evans has identified neither any real interest in the registration
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`

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`
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`Opposition No. 91 162306
`Cancellation No. 92042733
`
`Page 7
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`status of C[BER’s Marks nor any reasonable basis to believe that he will be damaged in any
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`cognizable way by the registration of CIBER’s Marks. Summary judgment, therefore, is
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`appropriate in this case.
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`B.
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`Evans does not have standing to pursue this action.
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`As noted above, the District of Illinois has already held that Evans’ concerns do not rise
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`to the level of a “case or controversy” sufficient to confer standing under Article III of the
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`Constitution. The TTAB, however, is not subject to Article III; instead, to determine standing in
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`the TTAB, one must look to the statues conferring standing before this tribunal. Ritchie v.
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`Simpson, 170 F.3d 1092, 1095, 50 U.S.P.Q.2d 1023, 1025 (Fed. Cir. 1999). Section 14 ofthe
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`Lanham Act, 15 U.S.C. § 1064, provides that “[a]ny person who believes that he is or will be
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`damaged .
`
`.
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`. by the registration of a mark upon the principal register” may file a petition to
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`cancel a registration. Accord T.B.M.P. § 303.3
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`In addition to the bare requirements of §§ 13 and 14, the Federal Circuit acknowledges
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`two additional requirements for party to establish standing before the TTAB. First, the party
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`must demonstrate a “real interest” in the proceeding. Ritchie, 170 F.3d at 1095, 50 U.S.P.Q.2d at
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`1025. In addition, the party must establish a “reasonable basis” for the party’s belief that it will
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`be damaged by the registration of the mark at issue. Id. These criteria are more than mere
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`pleading requirements: “A petitioner’s allegations alone do not establish standing. .
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`.
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`. The facts
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`3 Section 13 of the Lanham Act, 15 U.S.C. § 1063, establishes a similar standard for filing an opposition.
`Moreover, the same standing requirements apply in both opposition and cancellation proceedings, see
`Ritchie, 170 F.3d at 1095, 50 U.S.P.Q.2d 1025, so this Motion will address both the Petition and the
`
`Footnote continued on next page
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`

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`Opposition No. 91 162306
`Cancellation No. 92042733
`
`Page 8
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`regarding standing .
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`.
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`. are part of a petitioner’s case and must be affirrnatively proved.” Lipton
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`Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 1028, 213 U.S.P.Q. 185, 188 (C.C.P.A. 1982).
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`Thus, Evans, as the petitioner/opposer, bears a burden to establish a genuine issue with respect
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`both his “real interest” in this proceeding and the “reasonable basis” for his alleged belief that he
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`will be damaged by ClBER’s Marks. The undisputed evidence shows that Evans cannot meet
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`either of these requirements, and this action therefore must be dismissed for lack of standing.
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`1.
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`Evans, as a mere intermeddler, has no real interest in this proceeding.
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`As an initial matter, to establish standing to challenge a mark, a party must have a
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`legitimate personal interest in the outcome of the proceeding. Ritchie, 170 F.3d at 1095, 50
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`U.S.P.Q.2d 1025. “This ‘real interest’ requirement stems from a policy of preventing ‘mere
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`intermeddlers’ who do not raise a real controversy from bringing oppositions or cancellation
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`proceedings in the PTO.” Id. Consequently, a party challenging a registration in the TTAB
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`cannot do so merely to vindicate the rights of others or for punitive reasons; instead, “the party
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`seeking review must, himself, be among the injured.” Ritchie, 170 F. 3d at 1096, 50 U.S.P.Q.2d
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`at 1026 (citing Sierra Club v. Morton, 405 U.S. 727 (1972)); accord Intersat Corp. v. Int ‘I
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`Telecomm. Satellite 0rg., 226 U.S.P.Q. 154, 155 (T.T.A.B. 1985) (“The purpose of the
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`requirement of standing is to avoid litigation where there is no real controversy between the
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`
`
`
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`Footnote continued from previous page
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`Opposition collectively. Accord Young v. AGB Corp., 152 F.3d 1377, 1380, 47 U.S.P.Q.2d 1752,1755
`(Fed. Cir. 1998).
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`

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`
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`Opposition No. 91162306
`Cancellation No. 92042733
`
`Page 9
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`parties. That is to say, the standing requirement weeds out ‘interrneddlers’ from those with a
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`‘personal interest in the outcome beyond that of the general public.”’).
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`There is no genuine issue that Evans is a mere interrneddler in this proceeding. While
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`there are many bases for finding a real interest in the proceedings,4 none of them exist here.
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`While CIBER’s registrations were at issue in the infiingement litigation between the parties, that
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`litigation actually established that there is no real controversy between the parties. The
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`preclusive effect of the federal litigation between the parties means that Evans stands in a
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`materially different position than the general public vis-a-vis CIBER’s registrations and
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`applications——he is immune to infringement claims. If not for the infringement litigation,
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`CIBER would be free to assert its registrations against Evans in an infringement action. Because
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`of the infringement litigation, however, CIBER cannot do that unless Evans materially changes
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`the nature or extent of his use, and as discussed below, there is insufficient evidence that Evans
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`might actually change his use to create a genuine issue of fact. Thus, Evans has no personal
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`interest in either this proceeding or the status of CIBER’s registrations and applications.
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`Instead, Evans’ participation in this action, to the extent it is not merely a deliberate
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`attempt to obtain an extortionate settlement from CIBER, represents an attempt to vindicate the
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`public: interest. Evans has stated (through counsel) on at least one occasion that he seeks “to
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`liberate the word ‘ciber”’ and that this effort is a matter of public policy. Exhibit F, at 12-13, 14.
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`. been raised and relied on by
`.
`4 For example, the TTAB has noted that if “the registration has .
`respondent in proceedings before the court,” the petitioner has standing to challenge the registration.
`Tonka Corp. v. Tonka Tools, Inc., 229 U.S.P.Q. 857, 858-59 (T.T.A.B. 1986).
`
`

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`
`
`Opposition No. 91162306
`Cancellation No. 92042733
`
`Page 10
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`Since Evans is free to continue to use CIBER without fear of infringement claims, this
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`“1iberation” would be of value to only to persons other than Mr. Evans himself. Accordingly, the
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`public interest that Evans seeks to vindicate does not represent a personal interest of Evans
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`himself, and that interest is insufficient to confer standing on Evans in this proceeding.
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`Consequently, as there is no genuine issue that Evans lacks a personal interest in this proceeding,
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`summary judgment is appropriate.
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`2.
`
`Evans has no reasonable belief that he will be damaged by the
`registration of CIBER’s Marks.
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`In addition to establishing that he has a real interest in this proceeding, Evans must also
`
`establish that he has a reasonable basis to believe he will be damaged by the registration of
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`CIBER’s Marks. Ritchie, 50 U.S.P.Q.2d 1025, 170 F.3d at 1095. Specifically, “the ‘belief of
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`damage’ required by § 13 of the Lanham Act is more than a subjective belief. The belief must
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`have a ‘reasonable basis in fact.”’ Id. at 1098, 50 U.S.P.Q.2d at 1027 (quoting Univ. Oil Prod.
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`Co. v. Rexall Drug & Chem. C0,, 463 F.2d 1122, 1124, 174 U.S.P.Q. 458, 459-60 (C.C.P.A.
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`1972)). The only conceivable interest Evans might have in this proceeding is his allegation that
`he might be subject to an infringement claim based on CBER’s registrations.
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`Specifically, Evans has alleged that he “has a real and personal interest in the mark
`
`CIBER .
`
`.
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`. because he intends to continue doing business as ‘Ciber Consulting,i” Petition 1[ 11,
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`and therefore, presumably, fears that he will be subject to an infringement claim if CIBER’s
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`registrations stand. This allegation, even if taken as true, fails to establish a genuine dispute that
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`Evans has any reasonable basis to believe he might be damaged by the registration of CIBER’s
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`Marks. As a matter of law, Evans cannot dispute that the dismissal of the infringement litigation
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`
`
`

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`
`
`Opposition No. 91162306
`Cancellation No. 92042733
`
`Page 11
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`between the parties allows Evans to continue using the CIBER mark in the same manner as he
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`currently uses the mark without any fear whatsoever of an infringement claim by CIBER. Thus,
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`the mere fact that Evans intends to continue doing business as “Ciber Consulting” fails to
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`establish a commercial interest in the registration of CIBER’s Marks.
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`Evans also alleges that he “intends to expand his business, including expanding the scope
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`of his business and obtaining new and larger customers.” Petition, 1] ll. Presumably, Evans
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`fears that, if he changes his use materially, he will be subject to an infringement claim by
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`CIBER. This allegation, however, represents merely a subjective belief that Evans might be
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`damaged by ClBER’s registrations. The evidence fails to establish a reasonable basis for this
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`belief, as required for Evans to have standing in this proceeding.
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`The undisputed facts, rather than supporting Evans’ allegation, actually contradict it.
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`Evans and his company have used the CIBER mark in substantially the same manner for over
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`eight years with virtually zero growth, and there is absolutely no evidence that Evans ever will
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`change his use materially. In fact, the undisputed evidence demonstrates that Evans has tried in
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`the past to expand his use of the mark CIBER without any success whatsoever.
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`
`
`
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`impede Evans’ ability to expand his business, even if he were otherwise able to do so. Finally,
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`while Evans did business for several years under the corporate name “Ciber Consulting, Inc.,”
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`vans has lost the right, under state law, to use that corporate name in his home state. CCI was
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`The undisputed facts further establish that Evans has little prospect of ever changing his
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`use of the mark CIBER. First, Evans’ company is basically a one-man operation, and there is no
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`evidence that Evans ever will hire additional personnel or otherwise expand his capabilities.
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`Second, Evans has suffered from a “personal health situation,” which likely will continue to
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`

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`
`
`Opposition No. 91162306
`Cancellation No. 92042733
`
`Page 12
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`administratively dissolved in 2003, and CIBER hasisince registered the corporate name in
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`Illinois, Evans’ home state. Thus, even if he were to expand his business, Evans would not be
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`able to do so under the “Ciber Consulting, Inc.” name.’
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`Evans’ speculation that he might attempt to expand his business is merely that-
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`speculation unsupported by any evidence whatsoever. The Northern District of Illinois
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`addressed precisely the same speculation, and held,
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`
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`defendants’ stated intentions to expand their use of the ‘CIBER’
`mark, standing alone, are simply too speculative to create a case or
`controversy in the instant case. As plaintiff points out in its motion
`to dismiss, defendants no longer even hold the right to use the
`trade name Ciber Consulting, Inc. in their home state of Illinois
`.
`.
`.
`. Nor have defendants buttressed their stated goal of expanding
`their business beyond the nuclear records management industry
`with any factual support.
`
`Exhibit G at 7. As the District Court held, the record evidence simply provides no reasonable
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`basis to believe that Evans ever might change his use in such a fashion that he would be subject
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`to an infringement claim by CIBER. Consequently, Evans has no reasonable basis to believe he
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`would be damaged by the registration of CIBER’s Marks. Thus, Evans cannot carry his burden
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`to establish a genuine question with respect to his standing to prosecute this proceeding, and
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`summary judgment is appropriate.
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`5 Thus, although Evans has not alleged that he intends possibly to sell his business, even if he did intend
`o sell his business, it is highly unlikely that a purchaser would agree to purchase the name “Ciber
`onsu1ting,” since Evans cannot demonstrate title to that name even in his home state of Illinois.
`
`

`
`—
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`Opposition No. 91 162306
`Cancellation No. 92042733
`
`Page 13
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`IV.
`
`CONCLUSION
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`For the foregoing reasons, the Board should enter judgment in favor of CIBER. As such,
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`CIBER respectfully requests the Board to grant this motion in all respects.
`
`Dated: December 30, 2004
`
`Respectfully submitted,
`
`TOWNSEND AND TOWNSEND AND CREW, LLP
`
`By
`
`2
`Stephen F. Jew
`Chad E. King
`Attorneys for Applicant/Registrant
`
`.
`
`Two Embarcadero Center, 8th Floor
`San Francisco, CA 94111-3834
`Telephone: (415) 576-0200
`Facsimile: (415) 575-0300
`
`,
`‘
`
`

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`
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`Opposition No. 91162306
`Cancellation No. 92042733
`
`Page 14
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`CERTIFICATE OF SERVICE AND MAILING
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`I hereby certify that on December 30, 2004, this MOTION FOR SUMMARY
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`JUDGMENT was served by Express Mail No. EL88937890lUS, to counsel for Petitioner, as
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`follows:
`
`Anthony E. Dowell, Esq.
`1001 Main Street
`
`Lafayette, IN 47901
`
`and was sent by Express Mail No. EL889378915US, to
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`Commissioner for Trademarks
`
`Box TTAB NO FEB
`
`2900 Crystal Drive
`Arlington, VA 22202-3514.
`
`Dated: December 30, 2004
`
`By:
`
`(
`
`60365392 v1
`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Attorney Docket No. 020206-202500
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`I, CHAD E. KING, hereby declare under penalty of perjury, as follows:
`
`1.
`
`I am an attorney licensed to practice law in the State of Colorado. I am one of the
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`attorneys of record representing Applicant/Respondent CIBER, Inc. (“CIBER”) in this
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`proceeding.
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`2.
`
`I make this declaration in support of CIBER’s Motion for Summary Judgment.
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`Opposition No.: 91 162306
`
`Cancellation No.: 92043733
`
`DECLARATION OF CHAD E. KING
`
`IN SUPPORT OF MOTION
`
`FOR SUMMARY JUDGMENT
`
`
`
`In re Application No. 76/384,129
`Applicant:
`CIBER, Inc.
`Published:
`June 8, 2004
`Mark:
`CIBER
`
`In re Registration No. 1,185,100
`Applicant:
`CIBER, Inc.
`- Published:
`January 5, 1982
`Mark:
`CIBER
`
`In re Registration No. 1,479,942
`Applicant:
`CIBER, Inc.
`Published:
`January 5, 1982
`Mark:
`CIBER (Stylized)
`
`BRUCE F. EVANS,
`
`
`
`
`Petitioner/Opposer,
`
` CIBER, INC.,
`
`Registrant/Applicant.
`
`Box TTAB NO FEE
`Assistant Commissioner for Trademarks
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`

`
`Opposition No. 91162306
`Cancellation No. 92042733
`
`Page 2
`
`3.
`
`CIBER has used the trademark “CH3ER” since at least 1974 and has obtained at
`
`l.east two federal registrations for the CIBER mark: U.S. Registration No. 1,185,100 for CIBER
`
`(the “‘10O Registration”), and U.S. Registration No. 1,479,942 for CIBER (Stylized) (the “‘942
`
`Registration”). The ‘ 100 Registration was registered on the Principal Register on January 5,
`
`1982, and the ‘492 Registration was registered on the Principal Register on March 8, 1988.
`
`C[BER also has pending numerous federal applications for CIBER and related marks, including
`
`without limitation U.S. Application No. 76/384,129, (the “‘ 129 Application”) for CIBER.
`
`Attached hereto as Exhibit A are, collectively, true and correct copies of certificates of
`
`registration for the ‘ 100 Registration and the ‘942 Registration, and a true and correct copy of a
`
`TESS printout for the ‘129 Application.
`
`4.
`
`Evans, through his company (formerly known as CCI), provides very specialized
`
`consulting services in the field of nuclear records management. See Exhibit
`
`(true and correct
`
`copy of an excerpt from the transcript of the December 10, 2002 deposition of Bruce F. Evans).
`
`5.
`
`On September 19, 2002, CIBER filed a complaint in the U.S. District Court for
`
`the Northern District of Texas against Ciber Consulting, Inc. (“CCI”) and Bruce F. Evans.
`
`Attached hereto as Exhibit C is a true and correct copy of that complaint. On January 27, 2003,
`
`the litigation between CIBER, CCI and Evans was transferred to the U.S. District Court for the
`
`Northern District of Illinois.
`
`6.
`
`On May 12, 2003, CCI and Evans filed a counterclaim against CIBER, alleging
`
`that the CIBER mark is generic and requesting an order canceling the ‘100 Registration and the
`
`

`
`
`
`Opposition No. 91 162306
`Cancellation No. 92042733
`
`Page 3
`
`‘492 Registration, as well as an order compelling the rejection of the ‘ 129 Application. Attached
`
`hereto as Exhibit D is a true and correct copy of that counterclaim.
`
`7.
`
`After discovering that Evans’ use of the CIBER mark is, at most, de minimis,
`
`CIBER filed on May 7, 2004 a motion to dismiss with prejudice its claims against Evans and
`
`CCI, and to dismiss as moot Evans’ and CCI’s counterclaim against CIBER. A true and correct
`
`copy of that motion to dismiss, along with a supporting declaration by Chad E. King and exhibits
`
`thereto, is attached hereto as Exhibit E.
`
`8.
`
`In a response filed May 27, 2004 (a true and correct copy of which is attached
`
`hereto as Exhibit F), Evans and CCI opposed CIBER’s motion to dismiss their counterclaim,
`
`contending that the counterclaim was not moot because Evans and CCI “have every intention of
`
`expanding their business to serve additional clients and, if the opportunity presents itself,
`
`expanding the business outside the field of records management.”
`
`
`
`
`
`hereto as Exhibit G.
`
`xecuted this flday of December, 2004.
`
`Ch
`
`. Kin
`
`9.
`
`In an order dated July 6, 2004, the Northern District of Illinois dismissed
`
`CIBER’s claims, as well as the counterclaim, finding “too speculative” any assertion by Evans
`
`and CCI that Evans might expand his business. A true and correct copy of that order is attached
`
`

`
`
`
`Opposition No. 91162306
`Cancellation No. 92042733
`
`Page 4
`
`CERTIFICATE OF SERVICE AND MAILING
`
`I hereby certify that on December 30, 2004, this DECLARATION OF CHAD E.
`
`KING IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT was served by Express
`
`Mail No. EL889378901US, to counsel for Petitioner, as follows:
`
`Anthony E. Dowell, Esq.
`1001 Main Street
`
`Lafayette, IN 47901
`
`and was sent by Express Mail No. EL889378915US, to
`
`Commissioner for Trademarks
`
`Box TTAB NO FEB
`
`2900 Qrystal Drive
`Arlington, VA 22202-3514.
`
`Dated: December 30, 2004
`
`By:
`
`I
`
`2(_»Q_
`
`60386482 vl
`
`

`
`

`
`
`
`Int. Cls.: 35 and 42
`
`Prior U.S. C1,: 101
`
`United States Patent and Trademark Office
`
`Reg. No. 1,185,100
`Registered Jan. 5, 1982
`
`‘ SERVICE ‘ MARK
`Principal Register
`
`CIBER
`
`Ciber, Inc. (Michigan corporation)
`304(1) Telegraph Rd.
`Bingham Farms, Mich. 48010
`
`For: MANAGEMENT CONSULTING SER-
`VICES IN THE FIELDS OF BUSINESS, ENGI-
`NEERING AND RESEARCH, in CLASS 35 (US.
`Cl. 101).
`First use Jul. 1, 1974; in commerce Jul. 1, 1974.
`For: DESIGN, DEVELOPMENT AND IMPLE-
`
`MENTATION OF COMPUTER PROGRAMMING
`
`AND SOFTWARE SERVICES, in CLASS 42 (US.
`Cl. 101).
`’
`
`First use Jul. 1, 1974; in commerce Jul. 1, 1974.
`
`Ser. No. 171,161, filed May 22, 1978.
`
`MARC BERGSMAN, Primary Exan1iner
`
`

`
`
`
`Int. Cls.: 35 and 42
`
`Prior U.S. Cls.: 100 and 101
`
`United States Patent and Trademark Offi
`
`Reg. No. 1,479,942
`ce Registered Mar. 8,1988
`
`SERVICE MARK
`PRINCIPAL REGISTER
`
`<lB<R
`
`CIBER,’ INC. (MICHIGAN CORPORATION)
`SUITE 323
`FOUR PARKLAND BOULEVARD
`DEARBORN. MI 48126
`
`FOR: MANAGEMENT CONSULTING SERV-
`CES IN THE FIELDS OF BUSINESS, ENGI-
`EERING AND RESEARCH, IN CLASS 35 (U.S.
`L. 101).
`FIRST USE
`-1-1974.
`
`IN COMMERCE
`
`7-1-I974;
`
`MING AND SOFTWARE SERVICES, IN CLASS
`42 (U.S. CLS. 100 AND 101).
`.
`
`FIRST USE
`7-1-1974.
`
`-
`
`7-1-I974;
`
`IN COMMERCE
`
`'OWNER OF U.S. REG. NO. 1,185,100 AND
`OTHERS.
`
`SER. NO. 674,566, FILED 7-27-1987.
`
`FOR: DESIGN, DEVELOPMENT AND IM--
`LEMENTATION OF COMPUTER PROGRAM-
`
`DAVID A. I-IERDMAN, EXAMINING ATTOR-
`NEY
`
`
`
`
`
`......"-.....--..._.'‘...‘.‘_._.“'......'1.1"..5‘.,.........-.'.....__.-.......-..-.._.........._....-.....,...,._..._.......
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`
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`41-’:
`
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`
`

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`Type Drawing
`
`Word Mark CIBER
`
`Good and
`
`Servic s
`
`IC 035. US 100 101 102. G & S: CONSULTING AND PROJECT MANAGEMENT
`SERVICES FOR BUSINESSES, NAMELY ANALYZING, ASSESSING,
`PLANNING AND DEVELOPING STRATEGIES, INFORMATION, PROCESSES,
`AND ORGANIZATIONS FOR BUSINESSES IN ORDER TO ENHANCE THE
`EFFICIENCY AND EFFECTIVENESS OF THOSE BUSINESSES; AND
`OUTSOURCING SERVICES, NAMELY PROVIDING STAFFING TO OTHERS IN
`ORDER TO OPERATE HELP DESKS, CUSTOMER CARE CENTERS,
`SOFTWARE MAINTENANCE AND NETWORK SUPPORT FUNCTIONS, AND
`PRODUCTION HOSTING AND SUPPORT FACILITIES. FIRST USE: 19740701.
`FIRST USE IN COMMERCE: 19740701
`
`IC 041. US 100 101 107. G & S: TRAINING SERVICES, NAMELY PROVIDING
`TRAINING TO OTHERS IN THE FIELDS OF COMPUTERS, DATABASES AND
`PROJECT MANAGEMENT. FIRST USE: 19740701. FIRST USE IN COMMERCE:
`19740701
`
`IC 042. US 100 101. G & S: CONSULTING SERVICES, NAMELY ANALYZING,
`ASSESSING, PLANNING AND DEVELOPING INFORMATION-BASED AND E-
`COMMERCE BASED COMPUTER AND SOFTWARE SYSTEMS FOR
`BUSINESSES; AND SYSTEM IMPLEMENTATION AND SYSTEM
`INTEGRATION OF CUSTOM AND PACKAGE SOFTWARE FOR
`INFORMATION-BASED AND E-COMMERCE BASED SYSTEMS FOR
`BUSINESSES. FIRST USE: 19740701. FIRST USE IN COMMERCE: 19740701
`
`Mark
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`Drawing
`Code
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`(1) TYPED DRAWING
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`76384129
`
`http://tess2.us1%to.gov/bin/showfield?f=doc&state=9p5en3.2.1
`
`12/30/2004
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`IA
`
`Filing Date March 13, 2002
`Current
`F ling Basis
`0 iginal
`1A
`Fi ing Basis
`P b"".“."’ f°" June 8, 2004
`
`
`
`(APPLICANT) Ciber, Inc. CORPORATION DELAWARE 5251 DTC Parkway, Suite
`1400 Greenwood Village COLORADO 80111
`A5‘ 'g““'°“‘ ASSIGNMENT RECORDED
`Re
`rded
`
`Att
`Rec rrney 0
`
`f
`
`.
`Lesley S. Craig, Esq.
`
`Prio
`.
`Reg tratio
`
`_
`_
`1185 l00,1479942,AND OTHERS
`
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`

`
`‘
`
`IN THE MATTER OF:
`
`I
`
`CIBER, INC.
`
`vs.
`
`CIBER CONSULTING, INC.
`
`“
`
`BRUCE F. EVANS
`December 10, 2002
`
`L.A. REPORTING
`79 West Monroe Street, Suite 1219
`Chicago, Illinois 60603
`(312) 419-9292
`
`

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