Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA518365
`ESTTA Tracking number:
`01/28/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91207444
`Plaintiff
`Bridgeline Digital, Inc
`SHERI S MASON
`MORSE BARNES-BROWN & PENDLETON PC
`230 THIRD AVENUE 4TH FLOOR
`WALTHAM, MA 02451
`UNITED STATES
`ttab@mbbp.com, smason@mbbp.com
`Reply in Support of Motion
`Sheri S. Mason
`smason@mbbp.com
`/Sheri S. Mason/
`01/28/2013
`Opposer's Reply ISO its Mtn to Strike (M0498648).PDF ( 7 pages )(254125
`bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`ESTTA518365
`ESTTA Tracking number:
`01/28/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91207444
`Plaintiff
`Bridgeline Digital, Inc
`SHERI S MASON
`MORSE BARNES-BROWN & PENDLETON PC
`230 THIRD AVENUE 4TH FLOOR
`WALTHAM, MA 02451
`UNITED STATES
`ttab@mbbp.com, smason@mbbp.com
`Reply in Support of Motion
`Sheri S. Mason
`smason@mbbp.com
`/Sheri S. Mason/
`01/28/2013
`Opposer's Reply ISO its Mtn to Strike (M0498648).PDF ( 7 pages )(254125
`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
`
`Bridgeline Digital, Inc.,
`Opposer,
`
`v.
`
`Jive Software, Inc.
`Applicant.
`
`5
`3
`5
`i
`3
`
`In re App. Ser. No. 85/594,068
`Mark:
`!APPS
`Filing Date: April 10,2012
`Publ’n Date: Sept. 4, 2012
`Opposition No.: 91207444
`
`___._,_Mj)
`
`OPPOSER’S REPLY IN SUPPORT OF ITS
`
`MOTION TO STRIKE APPLICANT’S AFFIRMATIVE DEFENSES
`
`Bridgeline Digital, Inc.’s (“Opposer” or “Bridgeline”), by and through its attorneys,
`
`hereby submits its reply in support of its Motion to Strike Affirmative Defenses.‘
`
`In support of its purported affirrnative defense that Opposer lacks standing, Applicant
`
`argues that Opposer is not the owner of U.S. Registration No. 2,015,430 (the “Registration”)
`
`because the trademark assignment (the “Assignment”) is invalid. By way of background,
`
`Bridgeline Software, Inc. (now Bridgeline Digital, Inc.) and Interactive Applications Group, Inc.
`
`(“IAG”) entered into a merger agreement on December 15, 2004 (see attached Certificate of
`
`Merger, Exhibit A). By the Agreement of Merger, referred in the Certificate of Merger, all
`
`assets of IAG, including the Registration, were acquired by Bridgeline. Because the Agreement
`
`of Merger contains confidential
`
`information, Opposer drafted and recorded the short form
`
`Assignment with the Patent and Trademark Office, as is customary.
`
`‘ Bridgeline Digital respectfully requests that the Board exercise its discretion to consider this reply because it does
`not rehash points made in Opposer‘s Motion to Strike Affirmative Defenses but rather addresses solely Jive’s
`arguments in its Response. Seculus da Amazonia SIS v. Toyota Jidosha Kabushiki Kaisha, 66 USPQ2d l 154,
`I 156
`n.4 (TTAB 2003); 37 CFR § 2.127(a); TBMP § 502.02(b).
`
`
`
`Opposer respectfully disagrees that the Assignment is invalid. First, Applicant argues
`
`that the term “the Marks” is never defined. However, the term “the Marks” is nothing more than
`
`the plural version of the term defined in the Assignment, “the Mark,” expressly recited only as
`
`U.S. Reg. No. 2,015,430. While it is true that the defined term “the Mark” appears in both
`
`singular and plural forms, this is clearly nothing more than a typographical inconsistency. See
`
`United States Hosiery Corporation v. The Gap, Inc. 707 F. Supp. 800, 809 (W.D.N.C. 1989)
`
`(rejecting Defendant’s argument that the corporation in the Plaintiffs assignment did not exist
`
`and therefore the assignment was invalid because of a typographical error which stated the
`
`corporation was incorporated in North Carolina when it was actually incorporated in Delaware.)
`
`Similarly, here, the Board should reject Applicant’s argument and find the Assignment valid
`
`because the plural version of the defined term “the Mark” in the Assignment is merely a
`
`typographical inconsistency that was intended to be read as “the Mark,” and as such the assignor
`
`effectively assigned the Registration to the assignee.
`
`Second, Applicant asserts that
`
`the Assignment
`
`is
`
`invalid because it claims the
`
`Assignment only “notes” that there is a registration for the mark IAPPS, but fails to assign it
`
`because the services in connection with which “the Mark” is used are not listed within the body
`
`of the Assigmnent. However, the Assignment does more than simply “note” that the mark is
`
`registered because it incorporates by reference the Registration, which is defined as “the Mark.”
`
`The services in connection with which “the Mark” is used — along with all other information
`
`recited in the Registration - are ascertainable from the Registration. The Assignment “assigns...
`
`all right, title, and interest” in and to the Registration to the assignee. Applicant is effectively
`
`requesting the Board to require every assignment recite not only the registration number but also
`
`
`
`select additional information from the registration in order for it to be valid, and Applicant does
`
`so without citing any precedent. The Board should reject the adoption of such a policy.
`
`Finally, Applicant’s argument that Opposer lacks standing is based solely on whether
`
`Opposer’s recorded Assignment is valid. While Opposer has established ownership, whether the
`
`Opposer is the owner of the Registration immaterial to the issue of standing because ownership
`
`of a trademark is not required in order to establish standing.
`
`“The issue is not whether the
`
`opposer owns the mark or is entitled to register it, but merely whether it is likely that he would
`
`be somehow damaged if a registration were granted to the applicant.” McCarthy on Trademarks
`
`and Unfair Competition, §§20:7; citing Wilson v. Delaunay, 114 USPQ 339, 341 (CCPA 1957)
`
`(finding that the appellee had standing because it derived revenues from the sale of goods under
`
`the mark and therefore would be injured by the registration of applicant’s mark). Opposer has
`
`standing because it derives revenues from the sale of the services under the IAPPS mark
`
`identified in the Registration and it would be damaged by the registration of Applicant’s mark.
`
`As such, Applicant’s affirmative defense that Opposer lacks standing should be stricken because
`
`it is redundant, immaterial, and/or impertinent.
`
`Finally, based on the foregoing, Applicant’s affirmative defense that Opposer has unclean
`
`hands should be stricken because Opposer has standing. Opposer has not engaged in
`
`wrongdoing by filing its Notice of Opposition based on the Registration and Applicant is not
`
`personally injured by the conduct of the Opposer. As such, Applicant’s affirmative defense that
`
`Opposer has unclean hands should be stricken because it
`
`is redundant,
`
`immaterial, and/or
`
`impertinent.
`
`CONCLUSION
`
`In light of the foregoing, the Board should grant Opposer’s motion and strike Applicant’s
`
`purported affirmative defenses.
`
`
`
`Date: January 28, 2013
`
`BRIDGELINE DIGITAL, INC.
`
`By its attorneys,
`
`MORSE, BARNES-BROWN & PENDLETON,
`P.C.
`
`By:
`
`aso/r1
`$ eis.
`1l"homas-F+Bunn
`230 Third Avenue, 4”‘ Floor
`Waltham, Massachusetts 02451
`Tel:
`(781)622-5930
`Fax:
`(781) 622-5933
`Email: ttab@rnbbp.com;
`
`smason@mbbp.com;tdunn mbb .com
`
`
`
`EXHIBIT A
`
`
`
`State of Delaware:
`St-eczatary of Starter
`D.r:.v.is1'on of Oo.:po:ert.1'.cuas
`£a.I.r.ve-rad 03:00 PM 12/15/2004
`some 02:44 PM 12/15/2004
`SRV 040908495 — 3278997 FILE
`
`STATE OF DELAWARE
`CERTIFICATE OF MERGER OF
`DOMESTIC CORPORATWONE
`
`Pursuant to Title 8, Section 25 l(c) offire Delaware General Corporation Law, the
`undersigned corporation executed the following Certificate of Merger:
`
`FIRST: The name of the surviving corporation is Bridgeline Sofiwaxe, Inc.. a
`Delaware corporation, and the name oftlre corporation being merged into this surviving
`corporation is Interactive Applications Group, Inc., a Delaware corporation.
`
`SECDND: The Ageement ofMerger has been approved, adopted, certified,
`executed and acknowledged by each of the constituent corporations.
`
`THIRD: The name ofthe surviving corporation is Bridgcline Software, Inc., a
`Delaware corporation.
`
`FOURTH: The Certificate of incorporation of Bridgcline Software, Inc-.., the
`Delaware corporation which is surviving m merger, shall be the Certificate of
`Incorporation of the surviving corporation.
`
`ZIETFFH: The merger is to become efibctive upon the tiling of this Certificate of
`Merger.
`
`SlX'l'H: The Agreement of Merger is on filo at 130 New Boston Street, Wobum,
`Massachusetts 01301, the place ofbusiness ofthe surviving corporation.
`
`SH: A copy ofthe Agreement of Merger will be furnishetl by the
`surviving corporation on request, without cost, to any stockholder of the constituent
`corporations.
`
`EN WITNESS WHEREOF, said surviving corporation has caused this certificate to be
`signed by an authorized ofiicer, theL1 day of December A.D., 2009:.
`
`By:
`
`
`
`/ 0/
`
`Name: Thomas L. Massic
`Title: President and Chief Executive Officer
`
`B5799 |4377»‘3.0-l 072%'l3.00I0
`
`
`
`CERTIFICATE OF SERVICE
`
`I, Sheri S. Mason, certify that a copy of the foregoing OPPOSER’S REPLY IN SUPPORT OF
`ITS MOTION TO STRIKE APPLICANT’S AFFIRMATIVE DEFENSES was served on:
`
`Kevin M. Hayes, Esq.
`Klarquist Sparkman, LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`
`Portland, Oregon 97204
`
`by placing same with the U.S. Postal Service, via first class mail, postage pre-paid, this 28th day
`ofJanuary, 2013.
`
`S eyi S./l'\'/Ia's'on
`
`C%se‘l-for‘B%geline Digital, Inc.
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