Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA445136
`ESTTA Tracking number:
`12/07/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91200535
`Plaintiff
`Mr. Sanford J. Asman
`SANFORD J ASMAN
`LAW OFFICE OF SANFORD J ASMAN
`570 VININGTON COURT
`ATLANTA, GA 30350-5710
`UNITED STATES
`sandy@asman.com
`Motion to Suspend for Civil Action
`Sanford J. Asman
`sandy@asman.com
`/sanford j. asman/
`12/07/2011
`111207_Motion.pdf ( 56 pages )(1215425 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In re Application of
`Serial No.
`Filed
`Mark
`Published Official Gazette
`
`:
`:
`:
`:
`:
`
`Integrated Imaging, LLC
`77859579
`October 28, 2009
`CASEWORKS WEB
`January 4, 2011
`
`
`
`
`
`Opposition No. 91200535
`
`
`
`SANFORD J. ASMAN,
`
`Opposers,
`
`v.
`
`INTEGRATED IMAGING, LLC
`
`Applicant.
`
`
`
`MOTION TO RESET DATES AND SUSPEND
`
`
`
`
`
`Sanford J. Asman (“Opposer”), acting pro se, hereby moves for an Order (1) resetting the
`
`dates associated with the subject Opposition, and (2) to suspend the Opposition pending the
`
`disposition of a trademark infringement action in U.S. District Court, seeking, inter alia, the
`
`cancellation of the subject application, Ser. No. 77859579.
`
`After the subject Opposition was brought, and discovery commenced, undersigned
`
`Opposer (who is also an attorney and acting pro se in the Opposition) became quite ill, as set in
`
`the attached letter (Exhibit 1) which was sent to Charles S. Sara, Esq., attorney for Applicant, on
`
`November 30, 2011.
`
`Rather than agree to the reasonable request for extension, given the situation, Mr. Sera
`
`responded with a letter, dated December 2, 2011, a true copy of which is annexed as Exhibit 2 in
`
`which he declined such extension, despite the fact that it was requested as a result of significant
`
`

`
`health issues which ultimately led to several hospitalizations for numerous tests, multiple
`
`instances requiring general anesthesia, and, ultimately, to surgery.
`
`In view of the foregoing refusal by Applicant’s attorney to grant the requested extension,
`
`Opposer hereby solicits an Order resetting the times in the Opposition.
`
`Thereafter, on December 5, 2011, Opposer filed a trademark infringement action
`
`captioned Sanford J. Asman v. Integrated Imaging, LLC in U.S. District Court, Northern District
`
`of Georgia, Case No. 1:11-cv-04206-RWS (“the Civil Action”), which action seeks, inter alia,
`
`the cancellation of trademark application Ser. No. 77859579. A true copy of the Complaint filed
`
`in that action is attached as Exhibit 3.
`
`In view of the foregoing, Opposer respectfully shows that good cause has been
`
`shown for both the solicited resetting of periods in the Opposition as well as for the
`
`suspension of the Opposition pending the disposition of the Civil Action.
`
`Wherefore, Applicant hereby respectfully solicits an Order granting the relief
`
`solicited herein.
`
`
`
`Dated: December 7, 2011
`
`Law Office of Sanford J. Asman
`570 Vinington Court
`Atlanta, Georgia 30350
`Phone
`: 770-391-0215
`Fax
`: 770-668-9144
`Email
`: sandy@asman.com
`
`By:___/s/ Sanford J. Asman_______
`Sanford J. Asman, pro se
`Opposer
`
`

`
`
`
`CERTIFICATE OF SERVICE
`
`Undersigned hereby certifies that, on the date set forth below, a copy of the foregoing:
`
`MOTION TO RESET DATES AND SUSPEND
`
`
`was served through the electronic filing system of the U.S. Patent and Trademark Office,
`
`Trademark Trial and Appeal Board, and by first class mail, postage prepaid, upon Opposer’s
`
`counsel, addressed as follows:
`
`Charles S. Sara, Esq.
`DeWitt Ross & Stevens, S.C.
`2 #. Mifflin Street, Suite 6000
`Madison, WI 53703
`
`
`
`By:_/s/ Sanford J. Asman_____________
`Sanford J. Asman, pro se
`Opposer
`
`
`Dated: December 7, 2011
`
`Law Office of Sanford J. Asman
`570 Vinington Court
`Atlanta, Georgia 30350
`Phone
`: 770-391-0215
`Fax
`: 770-668-9144
`Email
`: sandy@asman.com
`
`
`

`
`
`
`EXHIBIT 1
`EXHIBIT 1
`
`

`
`SANFORD J. ASMAN
`
`ATTORNEY AT LAW
`
`570 VININGTON COURT
`
`ATLANTA, GEORGIA 30350 - U.S.A.
`
`Telephone:
`
`(770) 391-0215
`
`E—mail: sandy@asman.com
`
`Facsimile:
`
`(770) 668-9144
`
`November 30, 2011
`
`Charles S. Sara, Esq.
`DeWitt Ross & Stevens, S.C.
`
`2 E. Mifflin Street, Suite 6000
`
`Madison, WI 53703
`
`Re:
`
`Trademark Opposition No. 91200535 regarding “CASEWORKS WEB”
`File No.: 17105-5020
`
`Dear Mr. Sara:
`
`I began
`In early October,
`I am writing this letter to advise you of the following.
`experiencing severe coughing which I initially attributed to a cold or allergy. Suffice it to say
`that it was impossible for me to carry on a conversation, work, or sleep. By mid-October, I was
`referred to an ENT whose initial diagnosis entailed taking more drugs than I have ever taken in
`my life (particularly since I don’t even take aspirin normally), along with referrals to a surgeon to
`check out what might be causing the issue. The surgeon set me up for a series of tests which
`each required time in hospitals, with the ultimate conclusion that surgery would be required.
`
`I was operated on on November 18”‘ at which time it was determined that I had a 4” tear
`in my diaphragm, which was (hopefully) repaired, and a stomach/esophageal
`issue was also
`addressed.
`I was finally able to come into my office Monday, on a very restricted basis, and I
`understand that the expected recovery time will take another 4-6 weeks. The good news is that I
`eat and drink nothing, so I have lost about 15 pounds so far.
`
`In any event, the purpose of this letter is to request your cooperation in connection with
`any discovery and dates in connection with the Opposition, in that I am now requesting that all
`dates in the matter be extended by two months, and that the time to respond to any discovery
`which may have been served also be extended. Please advise me of your expected cooperation so
`that I may prepare a Joint Motion on Consent.
`I would like to hear from you by the close of
`business Friday, and I thank you for your anticipated courtesy and professionalism.
`
`Very truly yours,
`
` Sanford J. Asman
`
`

`
`
`
`EXHIBIT 2
`EXHIBIT 2
`
`

`
`IE
`
`DEWITT
`ROSS &S TEVENS._._
`W
`
`F
`
`'
`
`R M
`
`Capitol Square Office
`Two East Mifllin Street
`Suite 600
`Madison, WI 53703-2865
`Tel 608-255-8891
`Fax 608-252-9243
`
`Metro Milwaukee Office
`13935 Bishop's Drive
`Suite 300
`Brookfield, WI 53005-6605
`Tel 262-754-2840
`Fax 252-754-2345
`
`Please respond to:
`Direct line:
`
`Capitol Square Office
`608-395-6784
`
`Email:
`
`css@dewittross.com
`
`www.dewillross.com
`
`December 2, 2011
`
`Via Email with Confirmation
`
`Sanford J. Asman, Esq.
`Law Office of Sanford J. Asman
`
`570 Vinington Court
`Atlanta, GA 30350-5710
`
`RE:
`
`CASEWORKS WEB Trademark Opposition No. 91200535
`Your Reference No. 17105-5020
`Our Reference 34447 .003
`
`Dear Mr. Asman:
`
`I confirm receipt of your letter dated November 30, 2011. I am sorry to hear of the situation you
`described in your letter.
`
`While I am mindful of the issues you present in your letter, I must also weigh these against the best
`interests of my client, particularly since my client’s Requests for Admissions now stand admitted.
`Further, I am concerned over the fact that we received no word from you in your capacity as both
`the opposing party and its legal representative since our telephone conference of September 15,
`2011.
`
`Owing to prior unfortunate experiences with other counsel in similar situations, I must regretfully
`request that you provide a doctor’s excuse or similar evidence to show that you were unable to
`provide us with the required documents which were due October 15”‘, and that you were unable to
`alert us of this situation until now. With this information, we should be able to come to a suitable
`
`meeting of terms.
`
`I look forward to hearing from you.
`
`Very truly yours,
`
`DEWITT Ross & STEVENS s.c.
`
`Charles S. Sara
`
`CSS:sxb
`
`cc:
`
`Integrated Imaging (w/o enc.)
`
`

`
`
`
`EXHIBIT 3
`EXHIBIT 3
`
`

`
`Case 1:11-cv-04206-RWS Document 1 Filed 12/05/11 Page 1 of 30
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE NORTHERN DISTRICT OF GEORGIA
`
`ATLANTA DIVISION
`
`Civil Action No.
`
`
`
`COMPLAINT
`
`Trademark Infringement
`
`Unfair Competition
`
`
`
`SANFORD J. ASMAN, an individual,
`
`
`
`
`
`
`
`
`Plaintiff,
`
`vs.
`
`
`
`
`INTEGRATED IMAGING, LLC, a limited
`liability company of Virginia,
`
`COMPLAINT
`
`Defendant.
`
`
`
`
`
`
`
`
`
`Plaintiff Sanford J. Asman (“Asman”), acting pro se, complains of defendant
`
`Integrated Imaging, LLC (“Defendant”), as follows:
`
`NATURE OF THE ACTION
`
`1.
`
`This is an action to remedy acts of, inter alia, federal and common law
`
`trademark infringement; false designation of origin and misrepresentation in
`
`commerce; false advertising; unfair competition; dilution; and misappropriation, all
`
`caused by, inter alia, the defendant’s infringement of Asman’s federally registered
`
`“CaseWebs®” and “CaseSpace®” trademarks (“the Asman Marks”).
`
`- 1 -
`
`

`
`Case 1:11-cv-04206-RWS Document 1 Filed 12/05/11 Page 2 of 30
`
`PARTIES
`
`Plaintiff
`
`2.
`
`Asman is an individual, having an address of 570 Vinington Court, Atlanta,
`
`Georgia 30350.
`
`Defendant
`
`3.
`
`Defendant is limited liability company of Virginia, whose address is 419
`
`Salem Avenue, Roanoke, Virginia 24016.
`
`JURISDICTION AND VENUE
`
`4.
`
`This action arises under the federal Trademark Act, 15 U.S.C. §1051, et
`
`seq., and under related federal and state common law.
`
`5.
`
`This action is also based upon diversity, as the parties are residents of
`
`different states, i.e., Asman is a Georgia resident, while Defendant is a Virginia
`
`resident, and the amount in controversy exceeds $75,000.
`
`6.
`
`Subject matter jurisdiction over this action is conferred upon this Court by
`
`15 U.S.C. § 1121 and 28 U.S.C. § 1338. This Court has supplemental jurisdiction
`
`over the subject matter of plaintiff’s state and common law claims pursuant to 28
`
`U.S.C. § 1367.
`
`7.
`
`Venue is properly laid in the Northern District of Georgia pursuant to 28
`
`U.S.C. § 1391(b), in that, on information and belief, Defendant transacts business
`
`- 2 -
`
`

`
`Case 1:11-cv-04206-RWS Document 1 Filed 12/05/11 Page 3 of 30
`
`within this judicial district, and Defendant has committed the torts complained of
`
`herein within this judicial district.
`
`8.
`
`This Court has further personal jurisdiction over the defendants pursuant to
`
`O.C.G.A. § 9-10-91 in that Defendant has transacted, and continues to transact,
`
`business within the State of Georgia; Defendant has committed tortious acts or
`
`omissions within this state; Defendant has committed tortious injuries in this state;
`
`and Defendant regularly does and/or solicits business, and engages in other persistent
`
`courses of conduct, and derives substantial revenue from goods used or consumed or
`
`services rendered in this state.
`
`STATEMENT OF FACTS
`
`Plaintiff’s Business and Plaintiff’s Intellectual Property
`
`9.
`
`Asman is an attorney-at-law, and a member of the state bars of New York,
`
`New Jersey, and Georgia; a Registered Patent Attorney; and he is admitted, as a
`
`plenary member, to practice before the federal district courts for the Northern
`
`District of New York, Southern District of New York, Eastern District of New York,
`
`District of New Jersey, Northern District of Georgia, Middle District of Georgia,
`
`Eastern District of Wisconsin, and District of Colorado. In addition, Asman has been
`
`admitted pro hac vice before several other district courts in which he has litigated.
`
`10.
`
`In connection with the foregoing court admissions, Asman, a sole
`
`practitioner, has handled dozens of intellectual property cases litigated in federal
`
`- 3 -
`
`

`
`Case 1:11-cv-04206-RWS Document 1 Filed 12/05/11 Page 4 of 30
`
`courts throughout the country, including approximately two dozen such cases in the
`
`Atlanta Division of the Northern District of Georgia, alone.
`
`11.
`
`By way of further background, in addition to being a member of various
`
`bars, Asman has a degree in Computer Science from the Massachusetts Institute of
`
`Technology, where Asman also taught and worked on the research staff, doing
`
`computer related research for Project MAC.
`
`12.
`
`In the late 1970’s microcomputers were introduced into the commercial
`
`marketplace, and Asman began combining his knowledge of computer programming
`
`with his legal practice by developing a series of software products which ran on
`
`microcomputers.
`
`13.
`
`While Asman had built several microcomputers from components,
`
`Asman’s first commercially purchased computer was a Radio Shack TRS-80, Model
`
`I, for which Asman wrote a word processing package.
`
`14.
`
`Asman used his computer experience to modify the TRS-80 Model I in
`
`order to enable it to display and store both upper and lower case letters (as the
`
`original TRS-80 Model I computers did not include adequate memory needed to
`
`display and store lower case letters.
`
`15.
`
`Asman used his computer and experience and engineering training to
`
`interface an IBM Selectric Computer Terminal/Printer to his TRS-80, whereby the
`
`combination of the modified TRS-80 Model I, the IBM Terminal, and Asman’s
`
`- 4 -
`
`

`
`Case 1:11-cv-04206-RWS Document 1 Filed 12/05/11 Page 5 of 30
`
`software gave Asman the ability to create, retrieve, edit, and print “letter quality”
`
`documents, at a time when dedicated, stand-alone word processors costing tens of
`
`thousands of dollars were all that was commercially available for the production of
`
`such documents.
`
`16.
`
`Upon learning of Asman’s success in creating and using a microcomputer
`
`as a business tool in his practice, Asman, attorneys from other firms approached
`
`Asman, who was then practicing law in New Jersey, and requested that he set them
`
`up with similar systems for their own offices.
`
`17.
`
`As a result, Asman created a New Jersey corporation (“MBA”) to market
`
`an “updated” and more reliable version of his system, in which a Radio Shack
`
`TRS-80 Model III microcomputer, a C. Itoh daisywheel printer, and Asman’s
`
`software were used. MBA marketed such systems for a number of years.
`
`18.
`
`When the IBM PC was later introduced, in 1981, Asman’s company began
`
`marketing IBM “clone” computers sold by Leading Edge Products, as it was still
`
`necessary, in the early 1980’s to be able to sell a fully “integrated” system to law
`
`firms which, at the time, generally had no microcomputers, and lawyers generally
`
`insisted upon buying a fully “integrated” solution for their word processing needs.
`
`19.
`
`While MBA was successful in marketing such systems, it became clear that
`
`the real “profit” was in the software, rather than in the hardware.
`
`- 5 -
`
`

`
`Case 1:11-cv-04206-RWS Document 1 Filed 12/05/11 Page 6 of 30
`
`20.
`
`Accordingly, as more and more law firms acquired IBM-PC’s and
`
`“clones”, Asman decided to move away from the hardware side of the business and
`
`devote his efforts solely to writing and marketing legal application software.
`
`21.
`
`In that regard, Asman decided to write software for use in his own legal
`
`practice, and to the extent that it appeared to be useful to him, to market it to others
`
`through MBA.
`
`22.
`
`Asman had handled many residential real estate closings, and he realized
`
`that the paperwork associated with the preparation of the HUD-1 Uniform Settlement
`
`Statement, the collection and retention of the various tax, water, sewer, etc. searches,
`
`and expenses, disbursements, etc. associated with handling residential real estate
`
`transactions was so great that typical law firms handling real estate work generally
`
`had one or more “paralegals” who did nothing other than such work.
`
`23.
`
`Based on Asman’s familiarity with computer software and real estate
`
`closings, Asman developed a piece of software called “MBA RESPA”, where MBA
`
`was a reference to the company started by Asman, and RESPA was the acronym for
`
`the Real Estate Settlement Procedures Act of 1974, which created and mandated the
`
`use of the Uniform Settlement Statement called the HUD-1.
`
`24.
`
`MBA RESPA was a very popular piece of software with real estate firms,
`
`and it led to Asman writing and marketing other related software, including MBA
`
`Survey (which allowed one to “verify” a metes and bounds survey description),
`
`- 6 -
`
`

`
`Case 1:11-cv-04206-RWS Document 1 Filed 12/05/11 Page 7 of 30
`
`MBA Finance (which performed numerous financial calculations as well as
`
`providing mortgage amortization tables for a variety of loan types, etc.), and “The
`
`1099 Reporter” which real estate attorneys used to collect and retain data from real
`
`estate transactions and report them annually to the IRS using magnetic media.
`
`25.
`
`From the foregoing experiences Asman confirmed that it was more
`
`profitable to remain solely in the software business than the hardware business, as
`
`hardware inventories were expensive, equipment became obsolete rapidly, and prices
`
`dropped over time, and as lawyers and law firms had generally embraced the use of
`
`microcomputers in their practice.
`
`26.
`
`While Asman continued to market MBA RESPA, MBA Finance, MBA
`
`Survey, and The 1099 Reporter into the 1990’s, Asman learned that it was common
`
`for the very same real estate paralegals who “loved” MBA RESPA to surreptitiously
`
`“distribute” unlicensed copies to the paralegals with whom they dealt at other firms.
`
`27.
`
`Numerous calls for “support” from unlicensed parties caused Asman to
`
`realize that there was an inherent “piracy” problem in marketing software intended to
`
`be used on “desktop” computers and distributed on disk.
`
`28.
`
`As the IRS changed its reporting requirements annually, and as state real
`
`estate transfer taxes changed periodically, it was both necessary and desirable to
`
`create both “updates” and “enhancements” to the various software products being
`
`marketed by MBA.
`
`- 7 -
`
`

`
`Case 1:11-cv-04206-RWS Document 1 Filed 12/05/11 Page 8 of 30
`
`29.
`
`Asman, in the interim, had continued to write software for his own practice,
`
`including general ledger software, trust accounting software, and billing software,
`
`but he did not license that software to others.
`
`CaseWebs
`
`30.
`
`In around 2000, while litigating a case captioned Iguana, LLC v. Realtree
`
`Outdoor Products, Inc., Outland Sports, Inc., Lohman Mfg. Co., Inc., Hunters
`
`Specialties, Inc., Wal-Mart Stores, Inc., Connecticut Valley Arms, Inc., Drury
`
`Marketing, Inc., Rocky Shoes & Boots, Inc., and Bass Pro Outdoor World, L.P., Case
`
`No. 1:99-cv-810-CAP, it occurred to Asman that he could combine his legal training
`
`with his computer training to develop a web-based software system which would
`
`provide 24/7 access to all litigation being handled by Asman, by Asman, his clients,
`
`co-counsel, and others, whereby once a document was scanned, and entered into the
`
`system, it would be available from any location with Internet access. Asman
`
`developed such a system and called it “CaseWebs”.
`
`31.
`
`CaseWebs was Asman’s first effort at writing a web-based legal
`
`application, and it turned out to be both very useful, and very well received by
`
`clients, co-counsel, and others.
`
`32.
`
`Since the first version of CaseWebs was developed (ca. 2000) for use in the
`
`Iguana v. Realtree, et als. case, CaseWebs has been used in numerous cases, in both
`
`- 8 -
`
`

`
`Case 1:11-cv-04206-RWS Document 1 Filed 12/05/11 Page 9 of 30
`
`state and federal courts, by Asman and other attorneys, as well as by clients,
`
`co-counsel, and others interested in following the progress of such cases.
`
`33.
`
`From the perspective of a law firm CaseWebs provides numerous benefits
`
`relative to what is generally a “hodge podge” of different docketing and filing
`
`systems which vary from law firm to law firm and from case to case within any
`
`given law firm.
`
`34.
`
`In particular, CaseWebs provides a single, well defined approach for
`
`handling litigation files, in that all physical documents are kept in loose leaf view
`
`binders having, inter alia, a spine adapted to receive a printed slip. The view binders
`
`used with CaseWebs are vinyl binders constructed with a clear pocket over the front
`
`cover, spine, and back cover on the outside. The pockets are open at the top to allow
`
`insertion of printed materials. The binders generally also include a 4 inch high
`
`horizontal pocket on their inside front cover and inside back cover. Such view
`
`binders are universally available from office supply stores, and they are typically
`
`made to hold different capacities, with 2” and 3” binders being the binders of choice
`
`for use in connection with CaseWebs.
`
`35.
`
`Within the view binders, numbered index tabs (also generally available at
`
`legal supply sources and office supply stores) are used to retain documents,
`
`corresponding to the Pleadings, Correspondence, Discovery, and Miscellaneous
`
`items present in any given litigation.
`
`- 9 -
`
`

`
`Case 1:11-cv-04206-RWS Document 1 Filed 12/05/11 Page 10 of 30
`
`36.
`
`In addition to paper documents, the binders used with CaseWebs can retain
`
`other items, including such things as CD/DVD holders.
`
`37.
`
`The CaseWebs software not only keeps track of documents in cases, but it
`
`also keeps track of other items, in the form of computer readable files, including,
`
`inter alia, music, videos, and photographs, as well as any other type of computer
`
`readable file (PowerPoint presentations, spread sheets, .pdf files, etc.), whereby once
`
`entered into the CaseWebs system, and uploaded to the web-based secure servers
`
`used by CaseWebs such files are immediately available to any “user” who has been
`
`assigned access codes (i.e., generally the users email address and a password) by the
`
`“Firm Administrator” of a law firm using CaseWebs, with such accessibility as may
`
`be appropriate. Thus, access to “confidential” documents can be easily restricted to
`
`only lawyers, law firm personnel, and the associated client, while access to
`
`non-confidential documents can be provided to other registered users who have been
`
`given access to a particular case, with all users having 24/7 access.
`
`38.
`
`In addition to being able to retain data about specific documents in a case,
`
`the CaseWebs database also includes data associated, inter alia, with users, lawyers,
`
`judges, judicial staff, court web sites, case events, etc. Such data includes phone
`
`numbers, contact information, access to Local Rules, Court personnel, Electronic
`
`Filing (CM/ECF), etc.
`
`- 10 -
`
`

`
`Case 1:11-cv-04206-RWS Document 1 Filed 12/05/11 Page 11 of 30
`
`39.
`
`Thus, CaseWebs provides immediate access to all litigation related
`
`information using a single integrated system from a single web site, namely,
`
`http:www.casewebs.com. Accordingly, CaseWebs has been called an “Integrated
`
`Case Information System”.
`
`40.
`
`Further, since CaseWebs is web-based, it requires no installed software
`
`other than a standard browser and an installed .pdf reader, such as Adobe Acrobat
`
`Reader, to operate. Thus, CaseWebs can be used on any operating system (i.e.,
`
`Microsoft Windows, Mac OS, Linux), with any browser (i.e., Internet Explorer,
`
`Firefox, Google Chrome, Safari), and it can be used with any Internet enabled device
`
`(i.e., desktop computers, laptops, notebooks, netbooks, iPhones and Android based
`
`“smart phones”, as well as iPads and other “tablets”), any of which provide
`
`immediate access to every case, document, user, lawyer, court, and court personnel,
`
`all using a very simple, intuitive, user friendly interface, with no need to transfer files
`
`or take any action other than logging in to the CaseWebs web site. Using CaseWebs
`
`makes losing files, dragging boxes from the office to the home, misplacing
`
`documents, creating multiple copies of documents for those needing access, etc. all
`
`things of the past.
`
`41.
`
`In addition to the foregoing, CaseWebs uses a standardized system for
`
`providing a dynamically produced .pdf file for creating the “spine” insert for the
`
`aforementioned view binders, whereby each spine insert provides, at a glance, the
`
`- 11 -
`
`

`
`Case 1:11-cv-04206-RWS Document 1 Filed 12/05/11 Page 12 of 30
`
`court name, case caption, case number, judge and judicial staff information, a list of
`
`attorneys in the case (along with their phone numbers), and a “CaseLogo” which is a
`
`visual design (i.e., a photo, trademark of a party, etc.) which makes it trivial to find a
`
`case binder, as the “CaseLogo” is also present on the web page associated with each
`
`particular matter.
`
`42.
`
`For the reasons expressed above as well as for other reasons associated
`
`with features which have not been described, CaseWebs has developed, over the past
`
`decade, into an extremely useful and reliable tool for use by lawyers, law firms, and
`
`their clients.
`
`43.
`
`While the view binders used for retaining physical documents have been
`
`described, in fact, it is rarely necessary to access the physical documents, as most
`
`litigators tend to have computers on their desktops (or notebooks, smart phones,
`
`tablets, etc.) whereby everything about all of their past and current cases is at their
`
`fingertips, all in a “paperless” environment which is accessible from wherever they
`
`happen to have Internet access.
`
`44.
`
`While an overview of CaseWebs has been generally described above,
`
`CaseWebs actually includes many more features which allow a lawyer using
`
`CaseWebs to readily add documents to an existing matter. Thus, in the case of
`
`federal litigation, when an attorney receives the CM/ECF filing notice by email, it
`
`only takes a few steps to “cut and paste” the docket text into CaseWebs, download
`
`- 12 -
`
`

`
`Case 1:11-cv-04206-RWS Document 1 Filed 12/05/11 Page 13 of 30
`
`the file from the CM/ECF server, enter the file into CaseWebs, and cause CaseWebs
`
`to issue automated emails to all users having access to the particular matter.
`
`45.
`
`Other uses of CaseWebs include the ability to have “local counsel” or
`
`“co-counsel” who are hundreds or thousands of miles apart, have full access to the
`
`identical file in a matter of seconds without making copies, sending faxes, or doing
`
`anything other than giving them appropriate user access to a matter.
`
`46.
`
`In situations in which discovery entails providing opposing counsel with
`
`documents from other matters, such access can be provided in seconds without any
`
`duplication, shipping, or delay. As such, CaseWebs has proven its ability to save
`
`substantial time and money for litigators who are often called upon to duplicate
`
`documents from other cases, particularly since a litigator can honestly represent to a
`
`Court that by giving opposing counsel access to CaseWebs, such opposing counsel is
`
`being provided with both immediate and identical access that the party has.
`
`47.
`
`Once it became apparent to Asman that CaseWebs was providing a
`
`significant benefit to his practice and to his clients (who no longer needed to contact
`
`Asman to keep up-to-date with their respective matters, who were no longer being
`
`billed for time associated with merely finding out and tracking their litigation
`
`matters, and who were never frustrated by getting voicemail or waiting for a return
`
`phone call or email when they simply wanted to know what was going on in their
`
`matter), and once Asman realized that CaseWebs provided a wholly different
`
`- 13 -
`
`

`
`Case 1:11-cv-04206-RWS Document 1 Filed 12/05/11 Page 14 of 30
`
`paradigm to attorneys, as they now had 24/7 access to all of their litigation files from
`
`anywhere, including such places as airports, wifi equipped airliners, cruise ships,
`
`foreign countries, etc. while simultaneously providing password protected secure
`
`web-servers rather than having to carry around files which had to be repeatedly
`
`copied, etc., Asman realized that CaseWebs could be further commercialized as a
`
`product which could be used, and licensed, by other lawyers and firms, thereby
`
`opening up a market greater than that which was present within Asman’s own client
`
`base and those lawyers with whom Asman associated in particular cases.
`
`48.
`
`In view of the numerous capabilities of the CaseWebs litigation system, as
`
`set forth above, it has been called an “integrated” litigation system, as set forth on the
`
`CaseWebs site in which it is referred to as an “Integrated Case Information System”.
`
`See, Exhibit 1, the “specimen” filed on February 6, 2007 in the application for
`
`federal registration of the mark “CaseWebs”, a date well prior to Defendant's initial
`
`use of the infringing “CaseWorks Web” mark.
`
`49.
`
`Due to the successful deployment of CaseWebs for use by Asman, his
`
`clients, and others, Asman decided to rewrite CaseWebs so that it could be used by,
`
`and licensed to, other firms and marketed on a subscription basis.
`
`50.
`
`On October 23, 2007, Asman received U.S. Trademark Reg. No. 3,316,614
`
`(“the ‘614 Registration”) in which the mark CaseWebs was registered on the
`
`- 14 -
`
`

`
`Case 1:11-cv-04206-RWS Document 1 Filed 12/05/11 Page 15 of 30
`
`Principal Register of the United States Patent and Trademark Office. A true copy of
`
`the ‘614 Registration is attached hereto as Exhibit 2.
`
`CaseSpace
`
`51.
`
`As set forth above, Asman has a long history of having written legal
`
`application software for his own legal practice as well as for licensing to others.
`
`52.
`
`As a practicing attorney, Asman realized was that it was extremely
`
`important to avoid the common practice of having different pieces of software
`
`handling different, but related, tasks. Thus, while it is common in law offices to use
`
`software such as Microsoft Outlook to retain client contact information, while using
`
`something like Timeslips for billing, and some other software (i.e., Excel or even
`
`Word) to maintain docket lists, etc., such actions led to numerous problems of
`
`inconsistent data entered into different pieces of software.
`
`53.
`
`Asman realized that the use of multiple, independent pieces of software,
`
`each with its own database, inevitably led to inconsistencies. For example, if a client
`
`moved or changed contact information (i.e., an address, phone number, email, or
`
`personnel change), such change might be reflected in the Microsoft Outlook file, but
`
`not in the billing software. Similarly, if the title of a matter changed, such change
`
`might be made in the docketing software, but not in the billing software. Asman
`
`realized that such inconsistencies abound in the practice of law when different
`
`software, each having its own database, is used.
`
`- 15 -
`
`

`
`Case 1:11-cv-04206-RWS Document 1 Filed 12/05/11 Page 16 of 30
`
`54.
`
`Based upon the foregoing, Asman incorporated what he considers to be one
`
`of the “truths” of life, i.e., “It is better to be wrong than inconsistent.” into a desktop
`
`based legal practice legal application he had written to “integrate” the functions of
`
`client contact, matter management, docketing, and billing, whereby data resided in a
`
`single database, thereby providing a fully integrated legal system for all purposes
`
`other than those which were the subject of CaseWebs.
`
`55.
`
`Asman developed the aforementioned desktop software and called it
`
`“LegalNET”. While LegalNET was fully workable, Asman realized that it suffered
`
`from a number of shortcomings as it worked only on a single computer which had to
`
`be running under the Microsoft Windows operating system, and it had to have the
`
`correct version of the Microsoft .Net Framework installed.
`
`56.
`
`While Asman considered marketing LegalNET, such thoughts were highly
`
`tempered by Asman’s prior experiences with licensing desktop software, including
`
`the support and piracy issues mentioned above.
`
`57.
`
`One attorney who was aware of Asman’s LegalNET and wanted to see it
`
`operate was local counsel to Asman in a matter which Asman was then handling in
`
`the U.S. District Court for the Southern District of Florida. Asman’s local counsel
`
`asked Asman to demonstrate LegalNET to him.
`
`58.
`
`In anticipation of that meeting, which coincided with a trip relating to the
`
`District Court litigation, Asman copied the LegalNET software from his desktop
`
`- 16 -
`
`

`
`Case 1:11-cv-04206-RWS Document 1 Filed 12/05/11 Page 17 of 30
`
`computer to a newly acquired notebook computer which Asman brought with him to
`
`Miami for the express purpose of showing and demonstrating the LegalNET
`
`software to his co-counsel. To Asman's great surprise, embarrassment, and chagrin,
`
`when he attempted to start