Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA868837
`01/03/2018
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`
`Opposer Information
`
`Name
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`Textio, Inc.
`
`01/03/2018
`
`1218 3rd Ave #1900
`Seattle, WA 98101
`UNITED STATES
`
`Connie L. Ellerbach
`Fenwick & West LLP
`801 California Street
`Silicon Valley Center
`Mountain View, CA 94041
`UNITED STATES
`Email: trademarks@fenwick.com
`Phone: 650-988-8500
`
`Applicant Information
`
`Application No
`
`87329561
`
`Publication date
`
`09/05/2017
`
`Opposition Filing
`Date
`
`Applicant
`
`01/03/2018
`
`Zipstorm Inc
`11704 NE 34th Street
`Bellevue, WA 98005
`UNITED STATES
`
`Opposition Peri-
`od Ends
`
`01/03/2018
`
`Goods/Services Affected by Opposition
`
`Class 035. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Advertising, including promotion relating to
`the sale of articles and services for third parties by the transmission ofadvertising material and the
`dissemination of advertising messages on computer networks; Providing advertising services; Provid-
`ing employment counseling information on how to successfully transition jobs; Providing networking
`opportunitiesfor individuals seeking employment; Providing on-line employment information inthe field
`of careers, job resources andlistings, resumes, opportunities for jobs, philanthropic work, mentorship,
`and readiness of a person for a professionalrole; Providing on-line interactive employment counseling
`and recruitment services; Providing online databases featuring information relating to employers and
`employees and places of employment; Providing an on-line searchable database featuring employ-
`ment opportunities
`
`Class 038. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Broadcast communication services,
`namely, transmitting e-mails, faxes, text messages and telephone voice messages to designated re-
`cipients for others; Computer-aided transmission of messages and images; Delivery of messages by
`electronic transmission; Electronic transmission of data and documents via computer terminals; Elec-
`
`

`

`tronic transmission of messages and data; Providing multiple user access to proprietary collections of
`information by means of global computer information networks; Providing on-line forums fortransmis-
`sion of messages among computerusers; Providing telecommunication connectivity services for
`transfer of images, messages, audio, visual, audiovisual and multimedia works; Transmission and
`delivery of messages via a messaging system that filters irrelevant messages and values recipient at-
`tention; Transmission of messages; Transmission of messages over electronic media; Transmission
`of location-based messaging; Broadcasting services, namely, transmission of advertising programs
`and media advertising communications via digital communications networks; Communication ser-
`vices, namely, providing electronic transmission of information stored in a database via interactively
`communicating computer systems
`
`Class 042. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Computer services comprised of an elec-
`tronic, and software applications for messaging; Computer services, namely, creating an on-line com-
`munity for registered users to message each other, advertise, identify opportunities, search and find
`suitable candidates, organize groups, events, participate in discussions, get feedback from their
`peers form virtual communities, share information and resources, and engage in social, business and
`community networking; Computer services, namely, filtering of unwanted e-mails; Computer services,
`namely, providing search platforms to allow users to search andfind relevant candidates for posi-
`tions;Computer services, namely, providing search platforms to allow users to search target specific
`users for messaging, andrecruiters to search potential candidates for positions; Computer services,
`namely, providing an interactive web site featuring technology that allows users toconsolidate and
`manage social networks,accounts, and connections to existing and emerging application program-
`ming interfaces (APIs); Computer services, namely, redirecting electronic mail to changedpersonal
`electronic address; Design anddevelopment of computer hardware and software; Online computer
`services, namely, providing spam filtering services to protect websites and online applications from
`receiving unsolicited messages; Providing information relating to on-line non-downloadable software
`to facilitate electronic communication between individuals provided via the Internet; Providingtempor-
`ary use of non-downloadable cloud-based software for recruitment, job seeking, advertising, and
`messaging; Providing temporary use of on-line non-downloadable software and applications for re-
`cruitment, job seeking, advertising, and messaging; Providing a web site featuringtemporary use of
`non-downloadable software for use in database management; Research and development of ad-
`vanced learning technologies and teaching methods
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`False suggestion of a connection with persons,
`living or dead, institutions, beliefs, or national
`symbols, or brings them into contempt, or disrep-
`ute
`
`Trademark Act Section 2(d)
`
`Trademark Act Section 2(a)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`5097421
`
`Registration Date
`
`12/06/2016
`
`Word Mark
`
`TEXTIO
`
`Application Date
`
`10/13/2014
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 042. First use: First Use: 2015/07/15 First Use In Commerce: 2015/07/15
`Providing temporary use of non-downloadable software to analyze text and doc-
`uments; providing on-line non-downloadable software for text recognition func-
`tions,data visualization functions and data analytics functions
`
`U.S. Application
`No.
`
`86422592
`
`Application Date
`
`10/13/2014
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`TEXTIO
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`Attachments
`
`NONE
`
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`downloadable text recognition software;downloadable data visualization soft-
`ware; downloadable data analytics software
`
`86980718#TMSN.png( bytes )
`86422592#TMSN.png( bytes )
`Textio_NEXTIO_Notice of Opposition_US.pdf(177531 bytes )
`Textio_NEXTIO Opposition_Exhibit A - Complaint.pdf(2638913 bytes )
`Textio_NEXTIO Opposition_Exhibit B - TEXTIO TSDR Records.pdf(885715
`bytes )
`
`Signature
`
`Name
`
`Date
`
`/Eric J. Ball/
`
`Eric J. Ball
`
`01/03/2018
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the matter of
`Trademark App. Ser. No. 87/329,561
`Filed: February 9, 2017
`Published: September 5, 2017
`Mark: NEXTIO
`
`Textio, Inc.,
`
`
` vs.
`
`ZipStorm Inc.,
`
`Applicant.
`
`
`
`
`Opposer,
`
`
`)
`)
`) Opposition No. ______________________
`)
`)
`)
`)
`)
`
`
`
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
` Textio, Inc. (“Opposer”), a Delaware corporation having a place of business at 1218 3rd
`
`Ave, Suite 1900 Seattle, Washington, United States 98101, believes that it will be damaged by
`
`registration of the NEXTIO mark in Application Serial No. 87/329,561 (the “Application”) filed
`
`by ZipStorm Inc. (“Applicant”), and hereby opposes the Application, alleging as grounds for the
`
`opposition that:
`
`1.
`
`On November 15, 2017, Opposer filed a lawsuit in the United States District
`
`Court for the Western District of Washington, case number 2:17-cv-01719, against Applicant
`
`alleging Federal trademark infringement, Federal unfair competition and false designation of
`
`origin, Washington common law trademark infringement, Washington statutory unfair business
`
`practices, and Washington common law unfair competition. Attached as Exhibit A is a copy of
`
`the complaint.
`
`2.
`
`As is shown by publication of the Application in the Official Gazette on
`
`September 5, 2017, Applicant filed the Application on an intent-to-use basis on February 9,
`
`2017, seeking to register the NEXTIO mark in Classes 35, 38 and 42 for the following services:
`
`1
`
`

`

`
`
`Class 35: Advertising, including promotion relating to the sale of articles and services for
`
`third parties by the transmission of advertising material and the dissemination of
`
`advertising messages on computer networks; Providing advertising services; Providing
`
`employment counseling information on how to successfully transition jobs; Providing
`
`networking opportunities for individuals seeking employment; Providing on-line
`
`employment information in the field of careers, job resources and listings, resumes,
`
`opportunities for jobs, philanthropic work, mentorship, and readiness of a person for a
`
`professional role; Providing on-line interactive employment counseling and recruitment
`
`services; Providing online databases featuring information relating to employers and
`
`employees and places of employment; Providing an on-line searchable database featuring
`
`employment opportunities;
`
`
`
`Class 38: Broadcast communication services, namely, transmitting e-mails, faxes, text
`
`messages and telephone voice messages to designated recipients for others; Computer-
`
`aided transmission of messages and images; Delivery of messages by electronic
`
`transmission; Electronic transmission of data and documents via computer terminals;
`
`Electronic transmission of messages and data; Providing multiple user access to
`
`proprietary collections of information by means of global computer information
`
`networks; Providing on-line forums for transmission of messages among computer users;
`
`Providing telecommunication connectivity services for transfer of images, messages,
`
`audio, visual, audiovisual and multimedia works; Transmission and delivery of messages
`
`via a messaging system that filters irrelevant messages and values recipient attention;
`
`Transmission of messages; Transmission of messages over electronic media;
`
`Transmission of location-based messaging; Broadcasting services, namely, transmission
`
`of advertising programs and media advertising communications via digital
`
`communications networks; Communication services, namely, providing electronic
`
`transmission of information stored in a database via interactively communicating
`
`computer systems; and
`
`
`
`Class 42: Computer services comprised of an electronic, and software applications for
`
`messaging; Computer services, namely, creating an on-line community for registered
`
`users to message each other, advertise, identify opportunities, search and find suitable
`
`2
`
`

`

`
`
`candidates, organize groups, events, participate in discussions, get feedback from their
`
`peers form virtual communities, share information and resources, and engage in social,
`
`business and community networking; Computer services, namely, filtering of unwanted
`
`e-mails; Computer services, namely, providing search platforms to allow users to search
`
`and find relevant candidates for positions; Computer services, namely, providing search
`
`platforms to allow users to search target specific users for messaging, and recruiters to
`
`search potential candidates for positions; Computer services, namely, providing an
`
`interactive web site featuring technology that allows users to consolidate and manage
`
`social networks, accounts, and connections to existing and emerging application
`
`programming interfaces (APIs); Computer services, namely, redirecting electronic mail
`
`to changed personal electronic address; Design and development of computer hardware
`
`and software; Online computer services, namely, providing spam filtering services to
`
`protect websites and online applications from receiving unsolicited messages; Providing
`
`information relating to on-line non-downloadable software to facilitate electronic
`
`communication between individuals provided via the Internet; Providing temporary use
`
`of non-downloadable cloud-based software for recruitment, job seeking, advertising, and
`
`messaging; Providing temporary use of on-line non-downloadable software and
`
`applications for recruitment, job seeking, advertising, and messaging; Providing a web
`
`site featuring temporary use of non-downloadable software for use in database
`
`management; Research and development of advanced learning technologies and teaching
`
`methods.
`
`
`
`3.
`
`Textio offers communications software, including text recognition and analysis
`
`software, data visualization software, and data analytics software for use in, among other fields,
`
`job placement, recruiting and related consulting, including via www.textio.com. Textio assists
`
`employers in creating effective job listings by analyzing job post and hiring outcome data.
`
`Textio’s predictive engine uncovers statistical patterns and phrases, which are used to generate a
`
`“Textio Score” to predict how effective a document will be at recruiting qualified applicants
`
`quickly.
`
`3
`
`

`

`
`
`4.
`
`Opposer is the owner of the following U.S. trademark registration and application
`
`for the TEXTIO mark:
`
`
`U.S. Trademark Registration No. 5097421 for the mark TEXTIO, covering “Providing
`
`temporary use of non-downloadable software to analyze text and documents; providing
`
`on-line non-downloadable software for text recognition functions, data visualization
`functions and data analytics functions” in Class 42; and
`
`
`
`U.S. Trademark Application No. 86422592 for the mark TEXTIO, covering
`“downloadable text recognition software; downloadable data visualization software;
`downloadable data analytics software” in Class 9.
`
`
`
`True and correct copies of the Certificate of Registration for U.S. Registration No.
`
`5097421 and printouts of information from the electronic database records of the U.S. Patent and
`
`Trademark Office showing the current status and title of Opposer’s trademark registration and
`
`application are attached as Exhibit B.
`
`5.
`
`U.S. Reg. No. 5097421 is valid and subsisting and is prima facie evidence of
`
`Textio’s exclusive right to use the TEXTIO mark on the services specified therein.
`
`6.
`
`The TEXTIO and NEXTIO marks differ by only one letter, sound alike, and
`
`operate in the same field. Textio’s and Nextio’s actual or prospective customers, vendors,
`
`business, associates and others, are likely to be confused by the NEXTIO trademark also
`
`operating in job placement and recruitment.
`
`7.
`
`There is no issue as to priority. Opposer began use of the TEXTIO mark in
`
`commerce before the filing date of the Application. Opposer filed for and Registration No.
`
`5097421 for the TEXTIO mark issued before February 9, 2017, when Applicant filed the
`
`Application. Opposer filed for Application No. 86422592 for the TEXTIO mark before
`
`4
`
`

`

`
`
`Applicant filed the Application. And, Opposer’s common law rights in the TEXTIO mark for
`
`the goods and services described herein predate the filing date of the Application.
`
`8.
`
`Opposer’s nationwide use of the TEXTIO mark has been valid and continuous
`
`and has not been abandoned. Because of Opposer’s extensive marketing, promotion, advertising,
`
`and sales activity, Opposer’s TEXTIO mark has come to be identified as a designator of
`
`Opposer’s goods and services, and as a result, have become valuable assets of Opposer, and
`
`principal symbols of its goodwill. If Applicant is permitted to register the mark shown in the
`
`Application, Applicant’s corresponding rights to use the NEXTIO mark in nationwide commerce
`
`will conflict with Opposer’s exclusive right to use the TEXTIO mark nationwide, thereby
`
`causing loss, damage, and injury to Opposer and the purchasing public.
`
`9.
`
`Opposer is not connected with the services Applicant offers or claims to intend to
`
`offer under the NEXTIO mark. Thus, Applicant’s use of the NEXTIO mark is likely to falsely
`
`suggest a connection between Applicant and Opposer’s trade name and identity because the
`
`NEXTIO mark is the same as or a close approximation of Opposer’s TEXTIO name and identity.
`
`Even more, the reputation of Opposer’s TEXTIO name and identity is of such a nature that a
`
`connection with Opposer would be presumed when Applicant uses NEXTIO in connection with
`
`Applicant’s purported services. And because Applicant’s use of NEXTIO uniquely and
`
`unmistakably points to Opposer’s name and identity, Opposer alleges that Applicant’s NEXTIO
`
`mark falsely suggests a connection to Opposer’s name and identity.
`
`10.
`
`In view of the parties’ similar marks and their overlapping goods and services,
`
`and because the parties’ respective goods and services are likely to be marketed to overlapping
`
`consumers in the same or related channels of trade, Applicant’s NEXTIO mark so resembles
`
`Opposer’s TEXTIO mark as to be likely to cause confusion or mistake or to deceive as to the
`
`source, origin or sponsorship of the parties’ respective goods and services, or to falsely suggest a
`
`5
`
`

`

`
`
`connection with Opposer, thereby causing loss, damage, and injury to Opposer, including
`
`Opposer’s rights relating to the TEXTIO mark, and the purchasing public.
`
`11.
`
`By reason of the foregoing, Opposer will be damaged by the registration of the
`
`mark shown in the Application.
`
`WHEREFORE, Opposer prays that this Notice of Opposition be sustained and that
`
`Applicant’s the Application be denied registration.
`
`Respectfully submitted,
`
`Dated: January 3, 2017
`
`
`
`
`
`/Eric J. Ball/
`
`Eric Ball, Esq.
`Connie L. Ellerbach, Esq.
`Attorneys for Opposer
`FENWICK & WEST LLP
`Silicon Valley Center
`801 California Street
`Mountain View, CA 94041
`(650) 988-8500
`trademarks@fenwick.com
`eball@fenwick.com
`
`6
`
`

`

`EXHIBIT A
`
`EXHIBIT A
`
`

`

`JS 44 (Rev. 06/17)
`
`Case 2:17-cv-01719 Document 1-6 Filed 11/15/17 Page 1 of 2
`CIVIL COVER SHEET
`The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as
`provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the
`purpose of initiating the civil docket sheet.
`(SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)
`
`I. (a) PLAINTIFFS
`
`TEXTIO, INC.
`
`DEFENDANTS
`
`ZIPSTORM, INC.
`
`(b) County of Residence of First Listed Plaintiff
`Seattle, King Cty, WA
`(EXCEPT IN U.S. PLAINTIFF CASES)
`
`County of Residence of First Listed Defendant
`
`Bellevue, King Cty, WA
`(IN U.S. PLAINTIFF CASES ONLY)
`
`NOTE:
`
`IN LAND CONDEMNATION CASES, USE THE LOCATION OF
`THE TRACT OF LAND INVOLVED.
`
`(c) Attorneys (Firm Name, Address, and Telephone Number)
`Annasara G. Purcell, WSBA No. 44668
`FENWICK & WEST LLP, 1191 2nd Ave., 10th Floor, Seattle, WA, 98101
`Ph: (206) 389-4510, Email: apurcell@fenwick.com
`
` Attorneys (If Known)
`
`II. BASIS OF JURISDICTION (Place an “X” in One Box Only)
`
`(cid:117) 1 U.S. Government
`Plaintiff
`
`(cid:117) 3 Federal Question
`(U.S. Government Not a Party)
`
`III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an “X” in One Box for Plaintiff
`(For Diversity Cases Only)
`and One Box for Defendant)
`PTF DEF
`PTF
` DEF
`(cid:117) 1
`(cid:117) 1
`(cid:117) 4
`(cid:117) 4
`
`Citizen of This State
`
`Incorporated or Principal Place
` of Business In This State
`
`(cid:117) 2 U.S. Government
`Defendant
`
`(cid:117) 4 Diversity
`(Indicate Citizenship of Parties in Item III)
`
`Citizen of Another State
`
`(cid:117) 2
`
`(cid:117) 2
`
`Incorporated and Principal Place
`of Business In Another State
`
`(cid:117) 5
`
`(cid:117) 5
`
`IV. NATURE OF SUIT (Place an “X” in One Box Only)
`CONTRACT
`TORTS
`
`FORFEITURE/PENALTY
`
`Click here for: Nature of Suit Code Descriptions.
`BANKRUPTCY
`OTHER STATUTES
`
`Citizen or Subject of a
` Foreign Country
`
`(cid:117) 3
`
`(cid:117) 3
`
`Foreign Nation
`
`(cid:117) 6
`
`(cid:117) 6
`
`PERSONAL INJURY
`(cid:117) 365 Personal Injury -
` Product Liability
`(cid:117) 367 Health Care/
` Pharmaceutical
` Personal Injury
` Product Liability
`(cid:117) 368 Asbestos Personal
` Injury Product
` Liability
` PERSONAL PROPERTY
`(cid:117) 370 Other Fraud
`(cid:117) 371 Truth in Lending
`(cid:117) 380 Other Personal
` Property Damage
`(cid:117) 385 Property Damage
` Product Liability
`
`(cid:117) 110 Insurance
` PERSONAL INJURY
`(cid:117) 310 Airplane
`(cid:117) 120 Marine
`(cid:117) 315 Airplane Product
`(cid:117) 130 Miller Act
`(cid:117) 140 Negotiable Instrument
` Liability
`(cid:117) 150 Recovery of Overpayment (cid:117) 320 Assault, Libel &
` & Enforcement of Judgment
` Slander
`(cid:117) 151 Medicare Act
`(cid:117) 330 Federal Employers’
`(cid:117) 152 Recovery of Defaulted
` Liability
`(cid:117) 340 Marine
` Student Loans
`(cid:117) 345 Marine Product
` (Excludes Veterans)
`(cid:117) 153 Recovery of Overpayment
` Liability
`LABOR
`(cid:117) 710 Fair Labor Standards
`(cid:117) 350 Motor Vehicle
` of Veteran’s Benefits
`(cid:117) 160 Stockholders’ Suits
`(cid:117) 355 Motor Vehicle
` Act
`(cid:117) 720 Labor/Management
`(cid:117) 190 Other Contract
` Product Liability
`(cid:117) 195 Contract Product Liability (cid:117) 360 Other Personal
` Relations
`(cid:117) 740 Railway Labor Act
`(cid:117) 196 Franchise
` Injury
`(cid:117) 751 Family and Medical
`(cid:117) 362 Personal Injury -
` Leave Act
` Medical Malpractice
` PRISONER PETITIONS (cid:117) 790 Other Labor Litigation
` CIVIL RIGHTS
`(cid:117) 791 Employee Retirement
`(cid:117) 440 Other Civil Rights
`Habeas Corpus:
`(cid:117) 463 Alien Detainee
`(cid:117) 441 Voting
` Income Security Act
`(cid:117) 510 Motions to Vacate
`(cid:117) 442 Employment
`(cid:117) 443 Housing/
` Sentence
`(cid:117) 530 General
` Accommodations
`(cid:117) 445 Amer. w/Disabilities - (cid:117) 535 Death Penalty
` Employment
`Other:
`(cid:117) 446 Amer. w/Disabilities - (cid:117) 540 Mandamus & Other
`(cid:117) 550 Civil Rights
` Other
`(cid:117) 448 Education
`(cid:117) 555 Prison Condition
`(cid:117) 560 Civil Detainee -
` Conditions of
` Confinement
`
` REAL PROPERTY
`(cid:117) 210 Land Condemnation
`(cid:117) 220 Foreclosure
`(cid:117) 230 Rent Lease & Ejectment
`(cid:117) 240 Torts to Land
`(cid:117) 245 Tort Product Liability
`(cid:117) 290 All Other Real Property
`
`IMMIGRATION
`(cid:117) 462 Naturalization Application
`(cid:117) 465 Other Immigration
` Actions
`
`(cid:117) 422 Appeal 28 USC 158
`(cid:117) 625 Drug Related Seizure
` of Property 21 USC 881 (cid:117) 423 Withdrawal
`(cid:117) 690 Other
` 28 USC 157
`
`PROPERTY RIGHTS
`(cid:117) 820 Copyrights
`(cid:117) 830 Patent
`(cid:117) 835 Patent - Abbreviated
` New Drug Application
`(cid:117) 840 Trademark
`SOCIAL SECURITY
`(cid:117) 861 HIA (1395ff)
`(cid:117) 862 Black Lung (923)
`(cid:117) 863 DIWC/DIWW (405(g))
`(cid:117) 864 SSID Title XVI
`(cid:117) 865 RSI (405(g))
`
`FEDERAL TAX SUITS
`(cid:117) 870 Taxes (U.S. Plaintiff
` or Defendant)
`(cid:117) 871 IRS—Third Party
` 26 USC 7609
`
`(cid:117) 375 False Claims Act
`(cid:117) 376 Qui Tam (31 USC
` 3729(a))
`(cid:117) 400 State Reapportionment
`(cid:117) 410 Antitrust
`(cid:117) 430 Banks and Banking
`(cid:117) 450 Commerce
`(cid:117) 460 Deportation
`(cid:117) 470 Racketeer Influenced and
` Corrupt Organizations
`(cid:117) 480 Consumer Credit
`(cid:117) 490 Cable/Sat TV
`(cid:117) 850 Securities/Commodities/
` Exchange
`(cid:117) 890 Other Statutory Actions
`(cid:117) 891 Agricultural Acts
`(cid:117) 893 Environmental Matters
`(cid:117) 895 Freedom of Information
` Act
`(cid:117) 896 Arbitration
`(cid:117) 899 Administrative Procedure
` Act/Review or Appeal of
` Agency Decision
`(cid:117) 950 Constitutionality of
` State Statutes
`
`V. ORIGIN (Place an “X” in One Box Only)
`(cid:117) 1 Original
`(cid:117) 2 Removed from
`Proceeding
`State Court
`
`(cid:117) 3 Remanded from
`Appellate Court
`
`(cid:117) 4 Reinstated or
`Reopened
`
`(cid:117) 6 Multidistrict
`Litigation -
`Transfer
`
`(cid:117) 8 Multidistrict
` Litigation -
` Direct File
`
`(cid:117) 5 Transferred from
`Another District
`(specify)
`Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):
`Lanham Act, 15 U.S.C. § 1114; Lanham Act, 15 U.S.C. § 1125(a); RCW 19.86 et seq; and Unfair Competition
`Brief description of cause:
`Trademark Infringement
`(cid:117) CHECK IF THIS IS A CLASS ACTION
`UNDER RULE 23, F.R.Cv.P.
`
`DEMAND $
`To Be Determined
`
`CHECK YES only if demanded in complaint:
`(cid:117) Yes
`(cid:117) No
`
`JURY DEMAND:
`
`(See instructions):
`
`JUDGE
`
`DOCKET NUMBER
`
`SIGNATURE OF ATTORNEY OF RECORD
`s/ Annasara G. Purcell, WSBA 44668
`
`VI. CAUSE OF ACTION
`
`VII. REQUESTED IN
`COMPLAINT:
`
`VIII. RELATED CASE(S)
`IF ANY
`
`DATE
`11/15/2017
`FOR OFFICE USE ONLY
`
`RECEIPT #
`
`AMOUNT
`
`APPLYING IFP
`
`JUDGE
`
`MAG. JUDGE
`
`

`

`JS 44 Reverse (Rev. 06/17)
`
`Case 2:17-cv-01719 Document 1-6 Filed 11/15/17 Page 2 of 2
`
`INSTRUCTIONS FOR ATTORNEYS COMPLETING CIVIL COVER SHEET FORM JS 44
`
`Authority For Civil Cover Sheet
`
`The JS 44 civil cover sheet and the information contained herein neither replaces nor supplements the filings and service of pleading or other papers as
`required by law, except as provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is
`required for the use of the Clerk of Court for the purpose of initiating the civil docket sheet. Consequently, a civil cover sheet is submitted to the Clerk of
`Court for each civil complaint filed. The attorney filing a case should complete the form as follows:
`
`I.(a) Plaintiffs-Defendants. Enter names (last, first, middle initial) of plaintiff and defendant. If the plaintiff or defendant is a government agency, use
`only the full name or standard abbreviations. If the plaintiff or defendant is an official within a government agency, identify first the agency and
`then the official, giving both name and title.
` (b) County of Residence. For each civil case filed, except U.S. plaintiff cases, enter the name of the county where the first listed plaintiff resides at the
`time of filing. In U.S. plaintiff cases, enter the name of the county in which the first listed defendant resides at the time of filing. (NOTE: In land
`condemnation cases, the county of residence of the "defendant" is the location of the tract of land involved.)
` (c) Attorneys. Enter the firm name, address, telephone number, and attorney of record. If there are several attorneys, list them on an attachment, noting
`in this section "(see attachment)".
`
`II.
`
`Jurisdiction. The basis of jurisdiction is set forth under Rule 8(a), F.R.Cv.P., which requires that jurisdictions be shown in pleadings. Place an "X"
`in one of the boxes. If there is more than one basis of jurisdiction, precedence is given in the order shown below.
`United States plaintiff. (1) Jurisdiction based on 28 U.S.C. 1345 and 1348. Suits by agencies and officers of the United States are included here.
`United States defendant. (2) When the plaintiff is suing the United States, its officers or agencies, place an "X" in this box.
`Federal question. (3) This refers to suits under 28 U.S.C. 1331, where jurisdiction arises under the Constitution of the United States, an amendment
`to the Constitution, an act of Congress or a treaty of the United States. In cases where the U.S. is a party, the U.S. plaintiff or defendant code takes
`precedence, and box 1 or 2 should be marked.
`Diversity of citizenship. (4) This refers to suits under 28 U.S.C. 1332, where parties are citizens of different states. When Box 4 is checked, the
`citizenship of the different parties must be checked. (See Section III below; NOTE: federal question actions take precedence over diversity
`cases.)
`
`III. Residence (citizenship) of Principal Parties. This section of the JS 44 is to be completed if diversity of citizenship was indicated above. Mark this
`section for each principal party.
`
`IV.
`
`V.
`
`Nature of Suit. Place an "X" in the appropriate box. If there are multiple nature of suit codes associated with the case, pick the nature of suit code
`that is most applicable. Click here for: Nature of Suit Code Descriptions.
`
`Origin. Place an "X" in one of the seven boxes.
`Original Proceedings. (1) Cases which originate in the United States district courts.
`Removed from State Court. (2) Proceedings initiated in state courts may be removed to the district courts under Title 28 U.S.C., Section 1441.
`When the petition for removal is granted, check this box.
`Remanded from Appellate Court. (3) Check this box for cases remanded to the district court for further action. Use the date of remand as the filing
`date.
`Reinstated or Reopened. (4) Check this box for cases reinstated or reopened in the district court. Use the reopening date as the filing date.
`Transferred from Another District. (5) For cases transferred under Title 28 U.S.C. Section 1404(a). Do not use this for within district transfers or
`multidistrict litigation transfers.
`Multidistrict Litigation – Transfer. (6) Check this box when a multidistrict case is transferred into the district under authority of Title 28 U.S.C.
`Section 1407.
`Multidistrict Litigation – Direct File. (8) Check this box when a multidistrict case is filed in the same district as the Master MDL docket.
`PLEASE NOTE THAT THERE IS NOT AN ORIGIN CODE 7. Origin Code 7 was used for historical records and is no longer relevant due to
`changes in statue.
`
`VI.
`
`Cause of Action. Report the civil statute directly related to the cause of action and give a brief description of the cause. Do not cite jurisdictional
`statutes unless diversity. Example: U.S. Civil Statute: 47 USC 553 Brief Description: Unauthorized reception of cable service
`
`VII. Requested in Complaint. Class Action. Place an "X" in this box if you are filing a class action under Rule 23, F.R.Cv.P.
`Demand. In this space enter the actual dollar amount being demanded or indicate other demand, such as a preliminary injunction.
`Jury Demand. Check the appropriate box to indicate whether or not a jury is being demanded.
`
`VIII. Related Cases. This section of the JS 44 is used to reference related pending cases, if any. If there are related pending cases, insert the docket
`numbers and the corresponding judge names for such cases.
`
`Date and Attorney Signature. Date and sign the civil cover sheet.
`
`

`

`Case 2:17-cv-01719 Document 1 Filed 11/15/17 Page 1 of 11
`
`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF WASHINGTON
`AT SEATTLE
`
`TEXTIO, INC.,
`
`Case No.: 2:17-cv-01719
`
`Plaintiff,
`
`v.
`
`ZIPSTORM, INC.,
`
`Defendant.
`
`COMPLAINT FOR (1) FEDERAL
`TRADEMARK INFRINGMENT, (2)
`FEDERAL UNFAIR COMPETITION AND
`FALSE DESIGNATION OF ORIGIN, (3)
`COMMON LAW TRADEMARK AND
`TRADE NAME INFRINGEMENT, (4)
`STATUTORY UNFAIR BUSINESS
`PRACTICES, AND (5) COMMON LAW
`UNFAIR COMPETITION
`
`JURY TRIAL DEMANDED
`
`Plaintiff Textio, Inc. (“Textio”) brings this action against Defendant ZipStorm, Inc.
`
`(“Defendant” or “ZipStorm”) to enforce Textio’s exclusive right to its name and marks. Earlier
`
`this year, Defendant launched the confusingly similar Nextio platform to operate in the same
`
`field as a core Textio business: job placement. Textio has attempted to resolve this dispute
`
`amicably but Defendant has refused to comply with its legal obligations. Textio seeks an
`
`injunction prohibiting Defendant from using the confusingly similar NEXTIO name and mark.
`
`Textio also seeks damages and its attorneys’ fees in connection with this litigation.
`
`THE PARTIES
`
`1.
`
`Textio operates a predictive engine to analyze hiring data and find meaningful
`
`language patterns to help assess and improve job placement. Textio is a corporation organized
`
`and existing under the laws of Delaware. Textio’s principal place of business is 1218 3rd
`
`Avenue, Suite 1900, Seattle, WA 98101.
`
`COMPLAINT FOR TRADEMARK INFRINGMENT - 1
`CASE NO.: __________
`
`FENWICK & WEST LLP
`1191 SECOND AVENUE, 10TH FLOOR
`SEATTLE, WASHINGTON 98101
`TEL: (206) 389-4510; FAX: (206) 389-4511
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`
`
`Case 2:17-cv-01719 Document 1 Filed 11/15/17 Page 2 of 11
`
`2.
`
`Nextio is a platform to assist with job placement that was launched by ZipStorm
`
`in 2017. Textio believes and therefore alleges that, ZipStorm is a corporation organized and
`
`existing under the laws of Delaware. Textio further believes and therefore alleges that,
`
`ZipStorm’s principal place of business is 11704 NE 34th Street, Bellevue, WA 98005.
`
`JURISDICTION AND VENUE
`
`3.
`
`In this action, Textio alleges t