Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA716645
`ESTTA Tracking number:
`12/28/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91222449
`Plaintiff
`Epic Systems Corporation
`EUGENIA G CARTER
`WHYTE HIRSCHBOECK DUDEK SC
`PO BOX 1379
`MADISON, WI 53701-1379
`UNITED STATES
`ptomailbox@whdlaw.com, ecarter@whdlaw.com, nrenouard@whdlaw.com,
`mgiftos@whdlaw.com
`Motion to Suspend for Civil Action
`Eugenia G. Carter
`ptomailbox@whdlaw.com, jhughes@whdlaw.com
`/Eugenia G. Carter/
`12/28/2015
`Motion.pdf(1468437 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
`
`Opposition No. 91222449
`
`Mark: YOURCAREEVERYWHERE
`
`Appl. No.: 86/505,953
`
`) ) ) ) ) ) ) ) ) ) )
`
`EPIC SYSTEMS CORPORATION,
`
`Opposer,
`
`v .
`
`YOURCAREUNIVERSE, INC.,
`
`Applicant.
`
`MOTION TO SUSPEND PROCEEDINGS & EXTEND DISCOVERY
`
`In the matter of the above-captioned Opposition filed by Epic Systems Corporation
`
`(“Epic”) v. YourCareUniverse, Inc. (“YCU”), Opposition No. 91222449, Epic hereby moves the
`
`Trademark Trial and Appeal Board (“TTAB”) to suspend the application and opposition
`
`proceeding pursuant to 37 C.F.R. § 2.117(a) in light of a civil action now pending between the
`
`parties. Epic also moves to extend time to respond to Applicant’s outstanding discovery requests
`
`pursuant to 37 C.F.R. § 2.117.
`
`SUMMARY OF FACTS
`
`The parties to this proceeding are involved in a related case pending in federal court:
`
`Epic Systems Corp. v. YourCareUniverse, Inc., MedHost, Inc., and MedHost Solutions Corp.,
`
`United States District Court, Western District of Wisconsin, Case No. 3:15-cv-00821, filed
`
`December 22, 2015. The civil action filed by Epic asserts claims of common law trademark
`
`infringement, and federal and state law unfair competition relating to its CARE EVERYWHERE
`
`mark. A file-stamped copy of the Complaint is attached hereto as Exhibit 1.
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`WHD/12123784.1
`
`

`
`Epic filed its opposition to YCU before the TTAB on June 19, 2015. To date, only initial
`
`disclosures and one set of written discovery requests between the parties in the TTAB
`
`proceeding have been exchanged. Applicant has also issued a second set of written discovery
`
`requests; however, no depositions have been scheduled, and the testimony and briefing periods
`
`are scheduled well in the future.
`
`ARGUMENT
`
`Pursuant to Trademark Trial and Appeal Board Rule 37 C.F.R. § 2.117(a), the TTAB
`
`may suspend proceedings before it when the parties are involved in a civil action that may have a
`
`bearing on the Board proceeding. As a matter of general practice, the TTAB may suspend
`
`proceedings when a civil action for trademark infringement is pending between the parties. See
`
`Trademark Trial and Appeal Board Rule § 510.02(a) and The Other Tel. Co. v. Conn. Nat’l Tel.
`
`Co., 181 U.S.P.Q. (BNA) 125, 126 (T.T.A.B., Feb. 11, 1974) (granting opposer’s motion to
`
`suspend proceedings when civil action is pending).
`
`The civil action now pending before the Western District, Case No. 3:15-cv-00821,
`
`involves common issues with the above-captioned opposition proceeding. Specifically, Opposer
`
`(as Plaintiff in federal court) seeks relief from the federal court that the
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`YOURCAREEVERYWHERE mark applied for in this proceeding improperly infringes on its
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`CARE EVERYWHERE mark under both common law and the Lanham Act, and constitutes
`
`unfair competition. All of these claims rely on a finding that the YOURCAREEVERYWHERE
`
`mark should not be approved because it is confusingly similar to Epic’s CARE EVERYWHERE
`
`mark which has been in continuous use in interstate commerce for over 10 years for software and
`
`related services. Epic has developed substantial goodwill in its CARE EVERYWHERE mark,
`
`and the mark has become widely known in the public as a source identifier relating to Epic.
`
`WHD/12123784.1
`
`2
`
`

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`Clearly, Epic’s allegations here overlap with and address the same issues that will be pending
`
`before the federal court.
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`Moreover, the discovery process in this proceeding is in the early stages. The parties will
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`necessarily be required to engage in the same or similar discovery in federal court, and neither
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`party will be harmed by an extension of the discovery deadlines in this proceeding. Suspension
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`of this proceeding, including service of any additional and outstanding discovery and related
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`expenses, will save time, effort and expense for the Board and the parties due to the similarity of
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`the questions of law and fact in both forums. Shire City Herbals v. Blue, No. 15-CV-30069-
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`MGM, 2015 WL 5437091 (D. Mass., Sept. 15, 2015) (noting that federal forum was better suited
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`to resolve all parties’ pending disputes on similar facts and law because TTAB’s authority is
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`limited.)
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`Thus, Epic moves for an extension of time to respond to any outstanding discovery
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`responses after the suspended proceeding is resumed.
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`WHEREFORE, Epic respectfully requests that, based on good cause shown, the TTAB
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`order a suspension of this application and opposition proceeding pending the outcome of the civil
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`action pending in the Western District of Wisconsin. For the same reasons, Epic further requests
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`that the TTAB extend time to respond to any outstanding discovery until a reasonable date after
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`the Board proceeding is resumed, as appropriate.
`
`WHD/12123784.1
`
`3
`
`

`
`Dated: December 28, 2015
`
`WHYTE HIRSCHBOECK DUDEK S.C.
`
`By: /Eugenia G. Carter/
`Eugenia G. Carter
`Nicole J. Renouard
`Sarah E. Thomas Pagels
`Whyte Hirschboeck Dudek S.C.
`P.O. Box 1379
`Madison, WI 53701-1379
`(608) 234-6058 (telephone)
`(608) 258-7138 (facsimile)
`gcarter@whdlaw.com
`nrenouard@whdlaw.com
`stpagels@whdlaw.com
`
`Attorneys for Opposer Epic Systems
`Corporation
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on December 28, 2015, I caused the foregoing Motion to Suspend
`Proceedings to be served via electronic mail to:
`
`Angela Holt
`Bradley Arant Boult Cummings LLP
`200 Clinton Ave W, Ste 900
`Huntsville, AL 35801-4933
`aholt@babc.com, wbabcock@babc.com, dholt@babc.com, asandusky@babc.com
`
`/Eugenia G. Carter/
`ATTORNEYS FOR OPPOSER
`
`WHD/12123784.1
`
`4
`
`

`
`Case: 3:15-cv-00821 Document #: 1 Filed: 12/22/15 Page 1 of 10
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF WISCONSIN
`______________________________________________________________________________
`
`Exhibit 1
`
`EPIC SYSTEMS CORPORATION
`a Wisconsin Corporation,
`
`Plaintiff,
`
`Civil No. 15-cv-821
`
`vs.
`
`JURY TRIAL DEMANDED
`
`YOURCAREUNIVERSE, INC., a Delaware
`corporation, MEDHOST, INC., a Delaware
`corporation, and MEDHOST SOLUTIONS CORP.,
`a Delaware corporation.
`
`Defendants.
`______________________________________________________________________________
`
`COMPLAINT AND JURY DEMAND
`______________________________________________________________________________
`
`Epic Systems Corporation (“Epic”), for its Complaint against Defendants
`
`YourCareUniverse, Inc., MEDHOST, Inc., and MEDHOST Solutions Corp. (collectively,
`
`“Defendants”) states and alleges as follows:
`
`THE PARTIES
`
`1.
`
`Epic is a Wisconsin corporation with its principal place of business located at
`
`1979 Milky Way, Verona, Wisconsin 53593.
`
`2.
`
`Upon information and belief, YourCareUniverse, Inc. (“YCU”) is a Delaware
`
`corporation with a principal place of business located at 6550 Carothers Parkway, Suite 100,
`
`Franklin, Tennessee 37067. YCU’s registered agent is The Corporation Trust Company, located
`
`at the Corporation Trust Center, 1209 Orange Street, Wilmington, DE 19801. YCU was
`
`incorporated as a Delaware corporation on or around January 8, 2015.
`
`3.
`
`Upon information and belief, Medhost, Inc. (“Medhost”) is a Delaware
`
`corporation with a principal place of business located at 6550 Carothers Parkway, Suite 100,
`
`

`
`Case: 3:15-cv-00821 Document #: 1 Filed: 12/22/15 Page 2 of 10
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`Franklin, Tennessee 37067. Medhost’s registered agent is The Corporation Trust Company,
`
`located at the Corporation Trust Center, 1209 Orange Street, Wilmington, DE 19801.
`
`4.
`
`Upon information and belief, Medhost Solutions Corp. (“Medhost Solutions”) is a
`
`Delaware corporation with a principal place of business located at 6550 Carothers Parkway,
`
`Suite 100, Franklin, Tennessee 37067. Medhost Solutions’ registered agent is The Corporation
`
`Trust Company, located at the Corporation Trust Center, 1209 Orange Street, Wilmington, DE
`
`19801.
`
`5.
`
`Upon information and belief, YCU is wholly-owned by Medhost Solutions, and
`
`Medhost Solutions is wholly-owned by Medhost.
`
`6.
`
`Upon information and belief, YCU, Medhost and Medhost Solutions are all
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`related or affiliated entities.
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`JURISDICTION AND VENUE
`
`7.
`
`This is an action for trademark infringement and unfair competition in violation of
`
`the trademark laws of the United States, 15 U.S.C. § 1114 et. seq., and the common law.
`
`8.
`
`The court has subject matter jurisdiction under 28 U.S.C. §§ 1338 (a) and (b) and
`
`1367.
`
`9.
`
`Venue is proper under 28 U.S.C. § 1391(b) and (c).
`
`10.
`
`Upon information and belief, the court has personal jurisdiction over Defendants
`
`because they transact business in the State of Wisconsin, and their actions in this State give rise
`
`to the claims in this lawsuit.
`
`EPIC’S TRADEMARK RIGHTS
`
`11.
`
`Epic is one of the leading healthcare IT companies in the United States, with
`
`hundreds of healthcare providers, facilities, agencies and organizations using its software
`
`solutions and services.
`
`WHD/12097067.3
`
`2
`
`

`
`Case: 3:15-cv-00821 Document #: 1 Filed: 12/22/15 Page 3 of 10
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`12.
`
`Epic markets several software solutions widely used in the healthcare industry,
`
`including an electronic health record (“EHR”) system, mobile apps to improve patient
`
`engagement between providers and patients, and several solutions to provide safe and secure
`
`access to electronic medical records by providers, referring providers and patients.
`
`13.
`
`One particular feature of Epic’s EHR software system, is the CARE
`
`EVERYWHERE branded software, which enables healthcare providers to transfer electronic
`
`health records from one provider to another, regardless of whether that provider uses Epic’s
`
`proprietary software or an EHR system created by another vendor.
`
`14.
`
`The CARE EVERYWHERE software is widely used in the healthcare industry.
`
`For example, in November 2015, more than 20,602,000 medical records were transferred from
`
`one healthcare facility, hospital or provider to another using Epic’s CARE EVERYWHERE
`
`software.
`
`15.
`
`Epic owns U.S. Trademark Registration No. 2,964,155 for the CARE
`
`EVERYWHERE mark used in connection with software for use in the healthcare field, namely
`
`software for entering, storing, editing, organizing, integrating, synchronizing, processing,
`
`accessing, managing, communicating and sharing data to, from, across and among multiple
`
`separate information systems, including heterogeneous systems, and user manuals and
`
`documentation packaged with such computer software, in International Class 9 (the
`
`“Registration”). A copy of the Registration is attached as Exhibit A. The Registration was
`
`issued by the United States Patent and Trademark Office (“USPTO”) over ten years ago, on
`
`June 28, 2005. The CARE EVERYWHERE mark has been in continuous use since that time,
`
`and the Registration is incontestable.
`
`WHD/12097067.3
`
`3
`
`

`
`Case: 3:15-cv-00821 Document #: 1 Filed: 12/22/15 Page 4 of 10
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`16.
`
`Epic has used the CARE EVERYWHERE mark in interstate commerce since at
`
`least as early as February 22, 2004. During that time Epic has continuously used its CARE
`
`EVERYWHERE mark in interstate commerce in connection with its proprietary software.
`
`17.
`
`Epic has developed substantial good will in its CARE EVERYWHERE mark, and
`
`the mark has become widely known by the general public as a source identifier relating to Epic.
`
`18.
`
`Because of the long-standing use of the CARE EVERYWHERE mark by Epic
`
`and the substantial investment Epic has made in the mark, the CARE EVERYWHERE mark is a
`
`valuable asset that represents substantial good will.
`
`BACKGROUND
`
`19.
`
`Upon information and belief, Medhost and Medhost Solutions provide software
`
`and related services to healthcare facilities across the nation. Such services include an EHR
`
`software solution.
`
`20.
`
`Defendants and Epic are direct competitors that provide the same or closely
`
`related services in the healthcare IT industry.
`
`21.
`
`YCU was incorporated as a Delaware corporation on or around January 8, 2015.
`
`22.
`
`Upon information and belief, YCU markets a healthcare consumer engagement
`
`platform to healthcare facilities, hospitals and/or providers, which consists of a patient portal,
`
`data analytics and a consumer relationship management tool, all offered as cloud-based software
`
`services or SaaS (the “Consumer Engagement Platform”). In the industry, “SaaS” refers to
`
`“Software as a Service”.
`
`23.
`
`YCU’s patient portal enables patients or users to access, view and/or download
`
`certain personal health information, including medical records, and share it with other healthcare
`
`providers.
`
`WHD/12097067.3
`
`4
`
`

`
`Case: 3:15-cv-00821 Document #: 1 Filed: 12/22/15 Page 5 of 10
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`24. Medhost and YCU each promote the Consumer Engagement Platform services in
`
`interstate commerce.
`
`25.
`
`Upon information and belief, Defendants’ Consumer Engagement Platform
`
`services include the YOURCAREEVERYWHERE software services and related SaaS.
`
`26.
`
`Upon information and belief, Defendants offer a website featuring healthcare
`
`content under the YOURCAREEVERYWHERE mark in interstate commerce.
`
`27.
`
`Upon information and belief, Defendants also use the
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`YOURCAREEVERYWHERE mark for software services beyond the healthcare content
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`website, including a means for patients to access their medical records and to create profile pages
`
`for participating healthcare facilities and providers which are co-branded with the
`
`YOURCAREVERYWHERE mark and the facility or provider’s name and mark.
`
`DEFENDANTS WRONGFUL CONDUCT
`
`28.
`
`On January 16, 2015, YCU filed an intent-to-use application with the USPTO for
`
`registration of the YOURCAREEVERYWHERE mark (the “YOURCAREEVERYWHERE
`
`mark”) in connection with the following services, in International Class 42:
`
`Providing non-downloadable computer software through a web
`based portal for consumers to access medical, healthcare and
`health enhancement information and educational resources,
`including electronic publications, information on chronic diseases,
`health news, articles about health and wellness, medical reference
`material, consumer-driven query capability for symptom checkup,
`pharmacy information, medical news, and interactive tools for
`helping patients manage their health; providing non-downloadable
`computer software through a web based portal for health care
`providers to access health-related news, trends in healthcare,
`custom health and wellness-related information; computer
`services, namely, creating an on-line community for healthcare
`providers to participate in discussions regarding business
`operations in the field of health care, health care-related news, and
`wellness
`
`(the “Application”). The Application was assigned Serial No. 86/505,953.
`
`WHD/12097067.3
`
`5
`
`

`
`Case: 3:15-cv-00821 Document #: 1 Filed: 12/22/15 Page 6 of 10
`
`29.
`
`From April 12 – 16, 2015, Defendants attended the annual Health Information and
`
`Management Systems Society Conference and Exhibition, which was held in Chicago, Illinois
`
`(the “HIMSS Conference”). The HIMSS Conference is the largest health IT conference in the
`
`industry, with over 38,000 people attending the conference in 2014.
`
`30.
`
`At the HIMSS Conference, Defendants presented and exhibited its new Consumer
`
`Engagement Platform, including the YOURCAREVERYWHERE website and related services.
`
`31.
`
`After learning of Defendants’ intent to use the YOURCAREEVERYWHERE
`
`mark and marketing activities at the HIMSS Conference, Epic contacted the General Counsel of
`
`Medhost in April 2015 and notified Defendants of its prior rights in the CARE EVERYWHERE
`
`mark. Epic demanded Defendants refrain from using the YOURCAREEVERYWHERE mark in
`
`connection with healthcare software and related services.
`
`32.
`
`Defendants refused to comply and continue to use and market its software
`
`services under the YOURCAREEVERYWHERE mark.
`
`33.
`
`YCU then filed an amendment to the Application with the USPTO on May 7,
`
`2015, to delete certain services, with the remaining services listed as follows:
`
`Providing non-downloadable computer software through a web
`based portal for consumers to access medical, healthcare and
`health enhancement information and educational resources,
`including electronic publications, information on chronic diseases,
`health news, articles about health and wellness, medical reference
`material, consumer-driven query capability for symptom checkup,
`pharmacy information, medical news, and interactive tools for
`helping patients manage their health.
`
`34.
`
`Upon information and belief, since introducing the YOURCAREEVERYWHERE
`
`services to the market on or around April 2015, approximately 50 facilities or hospitals have
`
`engaged or contracted with one or more of the Defendants to provide a patient portal under the
`
`YOURCAREEVERYWHERE mark and/or create customized profile pages on the
`
`YOURCAREEVERYWHERE website.
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`WHD/12097067.3
`
`6
`
`

`
`Case: 3:15-cv-00821 Document #: 1 Filed: 12/22/15 Page 7 of 10
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`35.
`
`Defendants’ services offered and performed under the
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`YOURCAREEVERYWHERE mark are closely related to Epic’s software sold under the CARE
`
`EVERYWHERE mark.
`
`36.
`
`Defendants’ use of the YOURCAREEVERYWHERE mark has created a
`
`situation where two parties use a very similar mark for software and related services.
`
`37.
`
`Defendants are not affiliated with, connected with, or endorsed or sponsored by
`
`Epic. Epic has not authorized Defendants to use any mark that incorporates or is confusingly
`
`similar to its CARE EVERYWHERE mark.
`
`38.
`
`Defendants were aware of Epic’s CARE EVERYWHERE registration and prior
`
`rights in and to the CARE EVERYWHERE mark when Defendants started using the
`
`YOURCAREEVERYWHERE mark.
`
`39.
`
`Defendants’ willful use of the YOURCAREEVERYHWERE mark is likely to
`
`cause confusion concerning the source, sponsorship or affiliation between Epic and Defendants
`
`and the parties’ respective goods and services.
`
`40.
`
`Defendants’ use of the YOURCAREEVERYWHERE mark is without consent,
`
`permission or license from Epic.
`
`41.
`
`Epic is being irreparably harmed by Defendants’ unauthorized use of the
`
`confusingly similar YOURCAREEVERYWHERE mark, and will continue to suffer irreparable
`
`harm unless and until the Court orders the Defendants to cease their infringement.
`
`42.
`
`Epic has been damaged by Defendants’ actions in an amount to be proven at trial.
`
`COUNT I – LIKELIHOOD OF CONFUSION – 15 U.S.C. § 1114
`
`43.
`
`Epic restates and realleges each of the allegations set forth in the preceding
`
`paragraphs as if fully set forth herein.
`
`WHD/12097067.3
`
`7
`
`

`
`Case: 3:15-cv-00821 Document #: 1 Filed: 12/22/15 Page 8 of 10
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`44.
`
`Epic owns a registration and has common law rights in and to the CARE
`
`EVERYWHERE mark.
`
`45.
`
`The CARE EVERYWHERE mark is a valid and protectable trademark.
`
`46.
`
`Defendants have used the YOURCAREEVERYWHERE mark in interstate
`
`commerce.
`
`47.
`
`The YOURCAREEVERYWHERE mark so resembles Epic’s CARE
`
`EVERYWHERE mark that use and registration of the YOURCAREEVERYWHERE mark
`
`would be likely to cause confusion, mistake and/or deception as to the source, origin,
`
`sponsorship, affiliation or approval of Defendants’ goods and services.
`
`48.
`
`Defendants’ use of the YOURCAREEVERYWHERE mark infringes Epic’s
`
`trademark rights under the Lanham Act.
`
`49.
`
`Unless and until it is enjoined by this Court, Defendants’ conduct is causing, and
`
`will continue to cause damage and irreparable harm to Epic, to which there is no adequate
`
`remedy at law.
`
`COUNT II – COMMON LAW UNFAIR COMPETITION
`
`50.
`
`Epic restates and realleges each of the allegations set forth in the preceding
`
`paragraphs as if fully set forth herein.
`
`51.
`
`Defendants’ actions constitute unfair competition.
`
`52.
`
`Epic has been damaged as a result of Defendants’ unfair competition in an
`
`amount to be determined at trial.
`
`COUNT III – STATE TRADEMARK INFRINGEMENT
`
`53.
`
`Epic restates and realleges each of the allegations set forth in the preceding
`
`paragraphs as if fully set forth herein.
`
`WHD/12097067.3
`
`8
`
`

`
`Case: 3:15-cv-00821 Document #: 1 Filed: 12/22/15 Page 9 of 10
`
`54.
`
`Defendants’ actions constitute trademark infringement under the statutory and
`
`common laws of the State of Wisconsin.
`
`DAMAGES AND INJUNCTIVE RELIEF
`
`55.
`
`As a result of Defendants’ actions, Epic has suffered actual and consequential
`
`damages and Defendants have profited from their unlawful actions.
`
`56.
`
`Defendants have intentionally and willfully infringed and acted with reckless
`
`disregard of Epic’s trademark rights.
`
`57.
`
`Epic seeks recovery of monetary damages, including Defendants’ profits as a
`
`result of their actions.
`
`58.
`
`Epic seeks enhanced and punitive damages due to Defendants’ intentional and
`
`willful infringement of Epic’s trademark and reckless disregard of Epic’s trademark rights.
`
`59.
`
`To the fullest extent permitted under equity and law, Epic also seeks permanent
`
`injunctive relief enjoining Defendants from continuing their unlawful, unfair and infringing
`
`practices.
`
`JURY DEMAND
`
`60.
`
`Epic hereby demands trial by jury of all claims pursuant to Fed. R. Civ. P. 38.
`
`PRAYER FOR RELIEF
`
`1.
`
`Epic asks that Defendants be required to appear, answer and stand trial, and for
`
`the Court to enter judgment as follows:
`
`A.
`
`An order directing the USPTO to issue a formal refusal of YCU’s
`
`trademark application No. 86/505,953 for the CARE EVERYWHERE mark.
`
`B.
`
`An order pursuant 15 U.S.C. § 1118 to deliver up for destruction all
`
`containers, labels, signs, prints, packages, wrappers, advertising, promotional materials or the
`
`WHD/12097067.3
`
`9
`
`

`
`Case: 3:15-cv-00821 Document #: 1 Filed: 12/22/15 Page 10 of 10
`
`like in the possession of Defendants and their customers and licensees bearing any kind of
`
`indicia in volition of 15 U.S. C. §§ 1114 and/or 1125.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
`Actual and statutory damages as allowed by applicable law.
`
`Costs and attorneys’ fees as allowed by applicable law.
`
`Exemplary and punitive damages as allowed by applicable law.
`
`Permanent injunctive relief.
`
`Prejudgment and post-judgment interest as allowed by applicable law.
`
`Any other remedy to which Epic may be entitled under law and equity.
`
`Dated: December 22, 2015
`
`Respectfully submitted,
`
`s/Eugenia G. Carter
`Eugenia G. Carter
`Nicole J. Renouard
`Sarah Thomas Pagels
`Whyte Hirschboeck Dudek S.C.
`33 East Main Street, Suite 300
`Madison, WI 53703
`Telephone: 608-255-4440
`Fax: 608-258-7138
`ecarter@whdlaw.com
`nrenoaurd@whdlaw.com
`sthomaspagels@whdlaw.com
`
`Attorneys for Plaintiff
`
`WHD/12097067.3
`
`10
`
`

`
`Case: 3:15-cv-00821 Document #: 1-1 Filed: 12/22/15 Page 1 of 5
`EXHIBIT A
`
`Int. Cl.: 9
`
`Prior U.S. Cls.: 21, 23, 26, 36 and 38
`
`United States Patent and Trademark Office
`
`Reg. No. 2,964,155
`Registered June 28, 2005
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`CARE EVERYWHERE
`
`EPIC SYSTEMS CORPORATION (WISCONSIN
`CORPORATION)
`5301 TOKAY BOULEVARD
`MADISON, VVI 537111027
`
`FOR: COMPUTER SOFTWARE FOR USE IN THE
`HEALTHCARE FIELD, NAMELY SOFTWARE FOR
`ENTERING, STORING, EDITING, ORGANIZING,
`INTEGRATING. SYNCHRONIZING, PROCESSING,
`ACCESSING, MANAGING, COMMUNICATING
`AND SHARING DATA TO, FROM, ACROSS AND
`AMONG MULTIPLE SEPARATE INFORMATION
`SYSTEMS, INCLUDING HETEROGENEOUS SYS-
`TEMS, AND USER MANUALS AND DOCUMENTA-
`
`TION PACKAGED WITH SUCH COMPUTER
`SOFTWARE, IN CLASS 9 (US. CLS. 21, 23, 26, 35
`AND 38).
`
`FIRST UsE 12-8-2003; IN COMMERCE 2-22-2004.
`
`THE MARK CONSISTS OF STANDARD CHAR-
`ACTERS WITHOUT CLAIM TO ANY PARTICULAR
`FONT, STYLE, SIZE, OR COLOR.
`
`SER. NO. 78-417,889, FILED 5-13-2004.
`
`PAULA MAHONEY, EXAMINING ATTORNEY
`
`

`
`Case: 3:15-cv-00821 Document #: 1-1 Filed: 12/22/15 Page 2 of 5
`
`Trademark Status and Document Retrieval (TSDR) APIs are currently experiencing technical difficulties and users may be unable to access the
`database. The problem is being addressed by staff at the USPTO. We sincerely apologize for any inconvenience this may have caused.
`
`STATUS
`
`DOCUMENTS
`
`MAINTENANCE
`
`Back to Search
`
`Print
`
`Generated on: This page was generated by TSDR on 2015-12-22 15:22:35 EST
`
`Mark: CARE EVERYWHERE
`
`US Serial Number: 78417889
`
`Application Filing Date: May 13, 2004
`
`US Registration Number: 2964155
`
`Registration Date: Jun. 28, 2005
`
`Register: Principal
`
`Mark Type: Trademark
`
`Status: The registration has been renewed.
`
`Status Date: Sep. 25, 2014
`
`Publication Date: Apr. 05, 2005
`
`Mark Information
`
`Mark Literal Elements: CARE EVERYWHERE
`
`Standard Character Claim: Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
`
`Mark Drawing Type: 4 - STANDARD CHARACTER MARK
`
`Related Properties Information
`
`International Registration
`
`1192317
`
`Number:
`
`http://tsdr.uspto.gov/
`
`12/22/2015
`
`1
`
`

`
`Case: 3:15-cv-00821 Document #: 1-1 Filed: 12/22/15 Page 3 of 5
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`International Application
`
`A0040071/1192317
`
`(s) /Registration(s) Based on
`
`this Property:
`
`Goods and Services
`
`Note:
`
`The following symbols indicate that the registrant/owner has amended the goods/services:
`
`• Brackets [..] indicate deleted goods/services;
`
`• Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`
`• Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: Computer software for use in the healthcare field, namely software for entering, storing, editing, organizing, integrating, synchronizing,
`
`processing, accessing, managing, communicating and sharing data to, from, across and among multiple separate information systems,
`
`including heterogeneous systems, and user manuals and documentation packaged with such computer software
`
`International Class(es): 009 - Primary Class
`
`U.S Class(es): 021, 023, 026, 036, 038
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: Dec. 08, 2003
`
`Use in Commerce: Feb. 22, 2004
`
`Basis Information (Case Level)
`
`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44D: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Amended Use: No
`
`Amended ITU: No
`
`Amended 44D: No
`
`Amended 44E: No
`
`Filed No Basis: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: EPIC SYSTEMS CORPORATION
`
`http://tsdr.uspto.gov/
`
`12/22/2015
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`2
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`

`
`Case: 3:15-cv-00821 Document #: 1-1 Filed: 12/22/15 Page 4 of 5
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`Owner Address: 1979 Milky Way
`
`Verona, WISCONSIN UNITED STATES 53593
`
`Legal Entity Type: CORPORATION
`
`State or Country Where
`
`WISCONSIN
`
`Organized:
`
`Attorney/Correspondence Information
`
`Attorney of Record - None
`
`Correspondent
`
`Correspondent
`
`EPIC SYSTEMS CORPORATION
`
`Name/Address:
`
`1979 MILKY WAY
`
`VERONA, WISCONSIN UNITED STATES 53593
`
`Phone: 608-271-9000
`
`Fax: 608-271-7237
`
`Correspondent e-mail: bpaulson@epic.com
`
`Correspondent e-mail
`
`Yes
`
`Authorized:
`
`Domestic Representative - Not Found
`
`Prosecution History
`
`Date
`
`Sep. 25, 2014
`
`Sep. 25, 2014
`
`Sep. 25, 2014
`
`Sep. 25, 2014
`
`Sep. 16, 2014
`
`Sep. 16, 2014
`
`Jun. 14, 2011
`
`Jun. 14, 2011
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`May 12, 2011
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`Sep. 21, 2006
`
`Description
`
`Proceeding Number
`
`NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
`
`REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS)
`
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`
`TEAS SECTION 8 & 9 RECEIVED
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`
`REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
`
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`
`TEAS SECTION 8 & 15 RECEIVED
`
`76874
`
`76874
`
`76874
`
`77315
`
`77315
`
`88888
`
`http://tsdr.uspto.gov/
`
`12/22/2015
`
`3
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`

`
`Case: 3:15-cv-00821 Document #: 1-1 Filed: 12/22/15 Page 5 of 5
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`APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE)
`
`ENTERED
`
`TEAS CHANGE OF OWNER ADDRESS RECEIVED
`
`REGISTERED-PRINCIPAL REGISTER
`
`PUBLISHED FOR OPPOSITION
`
`NOTICE OF PUBLICATION
`
`LAW OFFICE PUBLICATION REVIEW COMPLETED
`
`ASSIGNED TO LIE
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`ASSIGNED TO EXAMINER
`
`NEW APPLICATION ENTERED IN TRAM
`
`77975
`
`77975
`
`76745
`
`Sep. 21, 2006
`
`Jun. 28, 2005
`
`Apr. 05, 2005
`
`Mar. 16, 2005
`
`Jan. 06, 2005
`
`Dec. 20, 2004
`
`Dec. 13, 2004
`
`Dec. 12, 2004
`
`May 19, 2004
`
`Maintenance Filings or Post Registration Information
`
`Affidavit of Continued Use: Section 8 - Accepted
`
`Affidavit of Incontestability: Section 15 - Accepted
`
`Renewal Date: Jun. 28, 2015
`
`TM Staff and Location Information
`
`TM Staff Information - None
`
`File Location
`
`Current Location: GENERIC WEB UPDATE
`
`Date in Location: Sep. 25, 2014
`
`Assignment Abstract Of Title Information - Click to Load
`
`Proceedings - Click to Load
`
`http://tsdr.uspto.gov/
`
`12/22/2015
`
`4
`
`

`
`Case: 3:15-cv-00821 Document #: 1-2 Filed: 12/22/15 Page 1 of 2
`
`AO 440 (Rev. 12/09) Summons in a Civil Action
`
`UNITED STATES DISTRICT COURT
`
`for the
`
`Western District of Wisconsin
`__________ District of __________
`
`Civil Action No.
`
`15-cv-821
`
`) ) ) ) ) ) )
`
`EPIC SYSTEMS CORPORATION
`
`Plaintiff
`
`v.
`YOURCAREUNIVERSE, INC., MEDHOST, INC. and
`MEDHOST SOLUTIONS CORP.
`
`Defendant
`
`To: (Defendant’s name and address)
`
`SUMMONS IN A CIVIL ACTION
`
`YOURCAREUNIVERSE, INC.
`c/o THE CORPORATION TRUST COMPANY
`CORPORATION TRUST CENTER
`1209 ORANGE STREET
`WILMINGTON, DE 19801
`
`A lawsuit has been filed against you.
`
`Within 21 days after service of this summons on you (not counting the day you received it) — or 60 days if you
`are the United States or a United States agency, or an officer or employee of the United States described in Fed. R. Civ.
`P. 12 (a)(2) or (3) — you must serve on the plaintiff an answer to the attached complaint or a motion under Rule 12 of
`the Federal Rules of Civil Procedure. The answer or motion must be served on the plaintiff or plaintiff’s attorney,
`whose name and address are:
`
`Eugenia G. Carter
`Whyte Hirschboeck Dudek S.C.
`33 East Main Street, Suite 300
`PO Box 1379
`Madison, WI 53701
`
`If you fail to respond, judgment by default will be entered against you for the relief demanded in the complaint.
`You also must file your answer or motion with the court.
`
`Date:
`
`CLERK OF COURT
`
`Signature of Clerk or Deputy Clerk
`
`

`
`Case: 3:15-cv-00821 Document #: 1-2 Filed: 12/22/15 Page 2 of 2
`
`AO 440 (Rev. 12/09) Summons in a Civil Action (Page 2)
`
`Civil Action No.
`
`15-cv-821
`
`PROOF OF SERVICE
`(This section should not be filed with the court unless required by Fed. R. Civ. P. 4 (l))
`
`This summons for (name of individual and title, if any)
`
`was received by me on (date)
`
`.
`
`’ I personally served the summons on the individual at (place)
`
`on (date)
`
`; or
`
`’ I left the summons at the individual’s residence or usual place of abode with (name)
`
`on (date)
`
`, and mailed a copy to the individual’s last known address; or
`
`, a person of suitable age and discretion who resides there,
`
`’ I served the summons on (name of individual)
`
` designated by law to accept service of process on behalf of (name of organization)
`
`on (date)
`
`; or
`
`’ I returned the summons unexecuted because
`
`’ Other (specify):
`
`, who is
`
`; or
`
`My fees are $
`
`for travel and $
`
`for services, for a total of $
`
`0.00
`
`.
`
`.
`
`I declare under penalty of perjury that this information is true.
`
`Date:
`
`Server’s signature
`
`Printed name and title
`
`Server’s address
`
`Additional information regarding attempted service, etc:
`
`

`
`Case: 3:15-cv-00821 Document #: 1-3 Filed: 12/22/15 Page 1 of 2
`
`AO 440 (Rev. 12/09) Summons in a Civil Action
`
`UNITED STATES DISTRICT COURT
`
`for the
`
`Western District of Wisconsin
`__________ District of __________
`
`Civil Action No.
`
`15-cv-821
`
`) ) ) ) ) ) )
`
`EPIC SYSTEMS CORPORATION
`
`Plaintiff
`
`v.
`YOURCAREUNIVERSE, INC., MEDHOST, INC. and
`MEDHOST SOLUTIONS CORP.
`
`Defendant
`
`To: (Defendant’s name and address)
`
`SUMMONS IN A CIVIL ACTION
`
`MEDHOST, INC.
`c/o THE CORPORATION TRUST COMPANY
`CORPORATION TRUST CENTER
`1209 ORANGE STREET
`WILMINGTON, DE 19801
`
`A lawsuit has been filed against you.
`
`Within 21 days after service of this summons on you (not counting the day you received it) — or 60 days if you
`are the United States or a United States agency, or an officer or employee of the United States described in Fed. R. Civ.
`P. 12 (a)(2) or (3) — you must serve on the plaintiff an answer to the attached complaint or a motion under Rule 12 of
`the Federal Rules of Civil Procedure. The answer or motion must be served on the plaintiff or plaintiff’s attorney,
`whose name and address are:
`
`Eugenia G. Carter
`Whyte Hirschboeck Dudek S.C.
`33 East Main Street, Suite 300
`PO Box 1379
`Madison, WI 53701
`
`If you fail to respond, ju