Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1022957
`
`Filing date:
`
`12/16/2019
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91245504
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Plaintiff
`Decentrix, Inc.
`
`CLEMENT HAYES
`BLOCK45 LEGAL
`730 17TH ST SUITE 810
`DENVER, CO 80202
`UNITED STATES
`clement@block45legal.com, lauren.taylor@block45legal.com,
`ben@block45legal.com
`303-353-4531
`
`Testimony For Plaintiff
`
`Clement Hayes
`
`clement@block45legal.com, ipinbox@block45legal.com
`
`/Clement Hayes/
`
`12/16/2019
`
`Attachments
`
`2019.12.12 W.Ruting Declaration.executed.pdf(224242 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In re Trademark Application Serial Nos. 87/860,564; 87/860,561; 87/860,562;
`87/860,571; 87/860,572
`
`
`
`
`
`
`Decentrix, Inc.,
`
`
`
`Opposer,
`
`
`v.
`
`
`
`Decentric Media, Inc.,
`
`
`Applicant.
`
`
`
`
`
`
`
`
`Opposition No. 91245504
`
`Mark: DECENTRIC MEDIA
`
`Filed: Apr. 3, 2018
`
`
`
`
`
`
`TESTIMONY DECLARATION OF WAYNE RUTING
`
`
`I, Wayne Ruting, declare under penalty of perjury as follows:
`
`1.
`I am currently the Chief Operating Officer and Founder of opposer Decentrix, Inc.
`(“Opposer”). I submit this declaration to provide relevant information regarding Opposer’s use of
`Opposer’s DECENTRIX marks in United States and international commerce and the recognition
`and fame of the DECENTRIX mark among consumers. I also provide herein relevant information
`concerning applicant Decentric Media, Inc.’s (“Applicant”) DECENTRIC MEDIA mark that is
`the subject of Application Nos. 87860564, 87860561, 87860562, 87860571, and 87860572 and
`this proceeding.
`
`2.
`The facts set forth herein are based on my personal knowledge and on information
`contained in Opposer’s business records regularly maintained by Opposer in the normal course of
`business and to which I have regular access in the course of my job. Unless otherwise noted, the
`exhibits to which I refer, and which are attached to this declaration are copies of documents and
`other materials from Opposer’s business records kept in the ordinary course of business.
`
`
`I.
`
`JOB RESPONSIBILITIES, EXPERIENCE, AND EDUCATION
`
`
`
`3.
`As the Chief Operating Officer and Founder of Opposer, a position I have held
`since 2001, my responsibilities include and have included researching, developing, and innovating
`the goods and services offered under the DECENTRIX mark, the creation and maintenance of the
`DECENTRIX mark and brand, and the deployment of necessary advertising, promotion, and
`marketing of the DECENTRIX mark/brand and all goods and services offered by Opposer. Since
`
`
`
`1
`
`

`

`the inception of Opposer, I have been integrally and continuously involved in each of the foregoing
`responsibilities from 2001 to the present.
`
`
`4.
`I hold a Bachelor of Science in Physics, Bachelor of Engineering with Honors, and
`a Master of Engineering in Electrical Engineering and CPU Design from the University of New
`South Wales.
`
`
`OPPOSER’S BUSINESS AND GENERAL HISTORY OF OPPOSER’S MARKS
`
`II.
`
`
`
`5.
`Opposer is a globally focused data technology company that has developed
`solutions which maximize advertising and content revenues across all media distribution platforms
`for brand advertisers, telecommunications, and media and entertainment companies.
`
`6.
`Opposer commenced use of the DECENTRIX mark in connection with providing
`temporary access to non-downloadable software and online databases for building intranet and
`extranet web sites, managing online content, publishing on the Internet, allowing the
`personalization and customization of content, permitting the navigation and layout of online
`content, and for building and managing collaborative applications (“First Goods and Services”)
`on February 1, 2002 and subsequently applied for and received a registration for the DECENTRIX
`mark for the foregoing goods and services. Trial Exhibits 1 and 2 include true and correct
`depictions of Opposer’s first uses of the DECENTRIX mark and United States Patent and
`Trademark filings and registrations. Trial Exhibit 3 includes true and correct copies of press
`coverage covering and publicity of Opposer and the DECENTRIX mark.
`
`Opposer selected the DECENTRIX mark because “Devolve” and “Centric” were
`7.
`the central tenets and genesis of the DECENTRIX mark. As Opposer’s business has evolved,
`Opposer has slightly nuanced the product relationship to the two words Devolve and Centric.
`
`8.
`Since the launch of the DECENTRIX brand in 2002, Opposer has been
`continuously using the DECENTRIX mark in US and foreign commerce in connection with the
`First Goods and Services, and has expanded use of the mark to include the following goods and
`services:
`
`
`a. Starting February 1, 2002 – Providing temporary use of non-downloadable
`software for building intranet and extranet web sites, managing online content,
`publishing on the Internet, allowing the personalization and customization of
`content, permitting the navigation and layout of online content, and for building
`and managing collaborative applications; providing online computer databases in
`the field of website development, namely, building intranet and extranet web sites,
`managing online content, publishing on the Internet, allowing the personalization
`and customization of content, permitting the navigation and layout of online
`content, and for building and managing collaborative applications.
`b. Starting March 31, 2002 – Downloadable or remotely accessible website
`development and publishing software; downloadable or remotely accessible
`computer graphics software; computer software development tools; computer
`hardware and downloadable or remotely accessible computer software programs
`
`
`
`2
`
`

`

`for the integration of text, audio, graphics, still images, and moving pictures into an
`interactive delivery for multimedia applications; downloadable or remotely
`accessible computer software
`for application and database
`integration;
`downloadable or remotely accessible computer software for the management,
`distribution and optimization of long and short form video, audio, graphical and
`still content, social media, advertising content and messaging, e-commerce, and
`website development; downloadable or remotely accessible computer network
`management software platforms for servers, hybrid or Cloud system hardware,
`software and network architecture interactive end user support management
`computer software for use in customer platforms; downloadable or remotely
`accessible computer software that provides real-time, integrated business
`management machine learning and artificial intelligence solutions; downloadable
`or remotely accessible computer software that automates cross-media applications
`and performs optimized computations; downloadable or remotely accessible
`software
`for deploying
`results
`in
`the
`field of media, entertainment,
`telecommunications, and advertising in graphical user interface; advertising for
`transmission of advertising content and engagement
`tracking analytics;
`Downloadable or remotely accessible software platforms providing financial
`analytics and business research for financial outcomes; machine intelligence in the
`nature of downloadable computer software enabling clients to perform analytics
`and business research; downloadable or remotely accessible analysis software that
`utilizes machine learning to interpret data sources and derive outcomes in the field
`of media, entertainment,
`telecommunications, and advertising for others;
`downloadable or remotely accessible computer applications for development,
`modification, and publishing of websites.
`c. Starting May 31, 2003 – Business management consulting services for software
`and hardware deployment, administration management, business efficiency, and
`workflow optimization; database management; advertising and business
`management consultancy, namely, managing administration and execution of
`advertising campaign orders and the associated workflows; providing commercial
`information to consumers through web portals; market research for optimizing
`pricing by monitoring comparative market pricing with computer software and
`enabling customers to leverage the pricing of advertising or other content either for
`themselves or for others; ad serving, namely, placing advertisements for others on
`any medium; distribution of advertising materials through electronic mediums,
`websites, broadcast, print, OTT, MVPD, satellite, and mobile platforms for others;
`developing advertising campaigns to optimize and increase the value of inventory
`and enhance audience value; enabling centralized billing solutions through
`automating bookkeeping processes; providing consumer product advice for
`downloadable or remotely accessible computer software programs and platforms;
`advertising and directory services, namely, promoting the services of others by
`providing a web page featuring links to the websites of others; business monitoring
`and consulting services, namely, tracking websites and applications of others to
`provide strategy, insight, marketing, sales, operation, product design, particularly
`specializing in the use of analytic and statistic models for the understanding and
`predicting of consumers, businesses, and market trends and actions; business
`
`
`
`3
`
`

`

`monitoring services, namely, tracking websites of others to provide details about
`user click traffic or visits to the website; marketing services; marketing the goods
`and services of others, namely, by providing hyperlinks to websites of others;
`website optimization; website traffic optimization; business monitoring services,
`namely, tracking of websites and applications for others for fraud detection to
`determine frequency and validity of site access that may impact advertising
`economics.
`d. Starting May 31, 2003 – Financial analysis and consultation; financial management
`services to manage client financial risk, data, and portfolio analysis and billing.
`e. Starting May 31, 2003 – Internet services, namely, providing multiple-user access
`to information on the internet concerning the development and generation of
`computer software for use in businesses; communication services, namely,
`providing electronic transmission of information stored in a database via
`interactively communicating computer systems; communication by computer
`terminals; telecommunication access services; transmission of content and
`advertising services to consumers; interactive bidirectional communication,
`namely, broadband communication services between consumers and networks
`and/or social networks enabling connection to click-through interaction with OTT,
`VOD, websites, social networks, streaming content, and e-commerce fulfillment.
`f. Starting January 31, 2004 – Computer education training services; educational
`services, namely, conducting educational webcasts, video training, interactive
`tutorials, and
`training sessions
`in
`the
`field of media, entertainment,
`telecommunications, and advertising and distribution of training materials, namely,
`printed or electronic publications, video, audio dissemination and interactive
`graphical training materials including KPIs in connection therewith.
`
`9.
`As of the date of this declaration, Opposer uses the DECENTRIX mark in
`commerce in connection with the following goods and services (the “Goods and Services”) which
`are also the subject of Opposer’s Application Nos. 88233268, 88233286, 88233309, 88233324,
`88233330, 87927317:
`
`
`Class 009: Downloadable or remotely accessible website development and
`publishing software; downloadable or remotely accessible computer graphics
`software; computer software development
`tools; computer hardware and
`downloadable or remotely accessible computer software programs for the
`integration of text, audio, graphics, still images, and moving pictures into an
`interactive delivery for multimedia applications; downloadable or remotely
`accessible computer software
`for application and database
`integration;
`downloadable or remotely accessible computer software for the management,
`distribution and optimization of long and short form video, audio, graphical and
`still content, social media, advertising content and messaging, e-commerce, and
`website development; downloadable or remotely accessible computer network
`management software platforms for servers, hybrid or Cloud system hardware,
`software and network architecture interactive end user support management
`computer software for use in customer platforms; downloadable or remotely
`
`
`
`4
`
`

`

`accessible computer software that provides real-time, integrated business
`management machine learning and artificial intelligence solutions; downloadable
`or remotely accessible computer software that automates cross-media applications
`and performs optimized computations; downloadable or remotely accessible
`software
`for deploying
`results
`in
`the
`field of media, entertainment,
`telecommunications, and advertising in graphical user interface; advertising for
`transmission of advertising content and engagement
`tracking analytics;
`Downloadable or remotely accessible software platforms providing financial
`analytics and business research for financial outcomes; machine intelligence in the
`nature of downloadable computer software enabling clients to perform analytics
`and business research; downloadable or remotely accessible analysis software that
`utilizes machine learning to interpret data sources and derive outcomes in the field
`of media, entertainment,
`telecommunications, and advertising for others;
`downloadable or remotely accessible computer applications for development,
`modification, and publishing of websites.
`
`Class 035: Business management consulting services for software and hardware
`deployment, administration management, business efficiency, and workflow
`optimization; database management; advertising and business management
`consultancy, namely, managing administration and execution of advertising
`campaign orders and the associated workflows; providing commercial information
`to consumers through web portals; market research for optimizing pricing by
`monitoring comparative market pricing with computer software and enabling
`customers to leverage the pricing of advertising or other content either for
`themselves or for others; ad serving, namely, placing advertisements for others on
`any medium; distribution of advertising materials through electronic mediums,
`websites, broadcast, print, OTT, MVPD, satellite, and mobile platforms for others;
`developing advertising campaigns to optimize and increase the value of inventory
`and enhance audience value; enabling centralized billing solutions through
`automating bookkeeping processes; providing consumer product advice for
`downloadable or remotely accessible computer software programs and platforms;
`advertising and directory services, namely, promoting the services of others by
`providing a web page featuring links to the websites of others; business monitoring
`and consulting services, namely, tracking websites and applications of others to
`provide strategy, insight, marketing, sales, operation, product design, particularly
`specializing in the use of analytic and statistic models for the understanding and
`predicting of consumers, businesses, and market trends and actions; business
`monitoring services, namely, tracking websites of others to provide details about
`user click traffic or visits to the website; marketing services; marketing the goods
`and services of others, namely, by providing hyperlinks to websites of others;
`website optimization; website traffic optimization; business monitoring services,
`namely, tracking of websites and applications for others for fraud detection to
`determine frequency and validity of site access that may impact advertising
`economics.
`
`
`
`5
`
`

`

`Class 036: Financial analysis and consultation; financial management services to
`manage client financial risk, data, and portfolio analysis and billing.
`
`Class 038: Internet services, namely, providing multiple-user access to information
`on the internet concerning the development and generation of computer software
`for use in businesses; communication services, namely, providing electronic
`transmission of information stored in a database via interactively communicating
`computer systems; communication by computer terminals; telecommunication
`access services; transmission of content and advertising services to consumers;
`interactive bidirectional communication, namely, broadband communication
`services between consumers and networks and/or social networks enabling
`connection to click-through interaction with OTT, VOD, websites, social networks,
`streaming content, and e-commerce fulfillment.
`
`Class 041: Computer education training services; educational services, namely,
`conducting educational webcasts, video training, interactive tutorials, and training
`sessions in the field of media, entertainment, telecommunications, and advertising
`and distribution of training materials, namely, printed or electronic publications,
`video, audio dissemination and interactive graphical training materials including
`KPIs in connection therewith.
`
`Class 042: Providing temporary use of non-downloadable software for building
`intranet and extranet web sites, managing online content, publishing on the Internet,
`allowing the personalization and customization of content, permitting the
`navigation and layout of online content, and for building and managing
`collaborative applications; providing online computer databases in the field of
`website development, namely, building intranet and extranet web sites, managing
`online content, publishing on the Internet, allowing the personalization and
`customization of content, permitting the navigation and layout of online content,
`and for building and managing collaborative applications.
`
`10.
`As early as 2002, Opposer commenced use of the DECENTRIX mark in connection
`with some or all of the Goods and Services—and the goods and services similar to those of
`Applicant—and since then has been using the DECENTRIX mark continuously in connection with
`these goods and services. Trial Exhibit 4 includes true and correct depictions of Opposer’s Goods
`and Services and sample advertisements for Opposer’s Goods and Services under the
`DECENTRIX mark.
`
`III.
`
`SUCCESS AND PUBLIC RECOGNITION OF OPPOSER’S MARKS
`
`Today, Opposer’s Goods and Services under the DECENTRIX mark are offered
`11.
`for sale and sold to consumers throughout the United States and abroad, and have been offered for
`sale throughout the United States and abroad since well before Applicant’s filing date of April 3,
`2018 for all of Applicant’s applications.
`
`
`
`
`6
`
`

`

`Starting in 2002, Opposer’s Goods and Services under the DECENTRIX mark have
`12.
`been and continue to be available for purchase and are sold through the internet, presentations,
`white papers, emails, brochures, print and online articles, verbal conversations, trade shows,
`conferences, conventions, digital media, website, and social media. These trade channels are the
`ordinary trade channels for data technology companies providing advertising and content revenues
`across all media distribution platforms for brand advertisers, telecommunications, and media and
`entertainment companies and the Goods and Services identified in Opposer’s applications asserted
`in this proceeding.
`
`Starting in at least 2003, Opposer’s Goods and Services under the DECENTRIX
`13.
`mark have been featured in several prevalent trade shows including NABShows and
`Echostar/Team Summits. For example, Trial Exhibit 5 includes true and correct printouts and
`images of Opposer’s presence and the use of the DECENTRIX mark at trade shows.
`
`Opposer’s Goods and Services under the DECENTRIX mark are targeted towards
`14.
`and purchased by Fortune 500 Media or Brand Advertisers, Telecommunications, and Media and
`Entertainment companies. The businesses are predominantly public enterprises listed on the NYSE
`or NASDAQ. They can be readily researched. Almost all have been clients for many years. They
`engage Opposer because Opposer is able to provide solutions to their business that substantially
`enhance their revenue opportunities. These consumers are the typical consumers data technology
`companies providing advertising and content revenues across all media distribution platforms for
`brand advertisers, telecommunications, and media and entertainment companies and the Goods
`and Services identified in Opposer’s applications asserted in this proceeding. Trial Exhibit 6
`demonstrates a true and correct cross-section of the markets and customers of Opposer and
`Opposer’s Goods and Services under the DECENTRIX mark.
`
`Opposer’s Goods and Services under the DECENTRIX mark are generally sold at
`15.
`varying prices based on the customization of the Goods and Services to each of Opposer’s clients.
`This pricing model is typical of data technology companies providing advertising and content
`revenues across all media distribution platforms for brand advertisers, telecommunications, and
`media and entertainment companies and the Goods and Services identified in Opposer’s
`applications asserted in this proceeding.
`
`16.
`Opposer engages in a variety of promotional activities for its Goods and Services
`under the DECENTRIX mark. In 2019 alone, Opposer has placed advertised and otherwise
`promoted the Goods and Services under the DECENTRIX mark in brochures, online (via
`Opposer’s website, social media, and video clips), trade shows (including the NABShow 2019),
`print and online articles, verbal conversations, conventions and conferences, presentations, and
`digital and print media.
`
`17.
`Since 2002, Opposer has spent considerable expenses in advertising and promoting
`its Goods and Services under the DECENTRIX mark. All advertisements and promotions
`prominently featured the DECENTRIX mark.
`
`18.
`Opposer also advertises its Goods and Services through its website at
`(the “Website”), which prominently displays
`https://www.decentrix.net/index.html
`the
`
`
`
`7
`
`

`

`DECENTRIX mark at the top of every page. Trial Exhibit 7 includes true and correct printouts
`of pages from the Website at the dates indicated therein.
`
`19.
`Opposer also uses social media to advertise its Goods and Services under the
`DECENTRIX mark, including pages on Facebook, LinkedIn, and Twitter. Opposer’s Facebook
`page https://www.facebook.com/Decentrix/) promoting DECENTRIX Goods and Services has
`“likes”
`and
`“followers”
`to date. Opposer’s LinkedIn page
`received over 89
`(https://www.linkedin.com/company/decentrix-inc-/) has over 1,289 followers and several posts.
`Opposer’s Twitter page (https://twitter.com/decentrix?lang=en) promoting DECENTRIX Goods
`and Services has over 67 followers and 53 tweets (the last dated October 21, 2019). Trial Exhibit
`8 includes true and correct printouts of pages from Opposer’s Facebook, LinkedIn, and Twitter
`pages.
`
`20.
`Opposer also uses video clips to advertise its Goods and Services under the
`DECENTRIX mark, including at least 27 clips posted on YouTube.com or Vimeo.com. Trial
`Exhibit 9 includes true and correct printout of pages of Opposer’s video clips posted on the dates
`indicated therein.
`
`Over the years, Opposer’s Goods and Services have garnered substantial
`21.
`unsolicited media coverage throughout the United States, including on Microsoft.com,
`Multichannel News, B+C, TVTechology, Content + Technology, The Record, Wall Street
`Communications, ScreenPlays Magazine, and on Opposer’s website. Fred Dawson, an industry
`writer, praised Opposer and Opposer’s Goods and Services under the DECENTRIX brand in an
`article entitled “Addressability is Game Changer in OTT TV Monetization Debate” in June 2019.
`Trial Exhibit 3 includes true and correct copies of samples of this unsolicited media coverage.
`
`Over the years, Opposer’s business has received several reviews on employment
`22.
`platforms, including on Glassdoor.com, and on other websites. Trial Exhibit 10 includes true and
`correct printouts of pages from these other websites.
`
`Opposer’s Goods and Services under the DECENTRIX mark have been extremely
`23.
`successful. For example, Opposer’s BIAnalytix Planner™ was nominated as Product of the Year
`at the NABShow2019. Trial Exhibit 11 includes true and correct copies of the foregoing. Further,
`Opposer’s Goods and Services under the DECENTRIX mark have been featured in Microsoft’s
`booth at several trade shows. Trial Exhibit 11 includes true and correct images of the foregoing.
`
`24.
`All of the foregoing sales, advertising, and publicity of Goods and Services under
`the DECENTRIX mark have resulted in extremely strong consumer recognition of the
`DECENTRIX brand in the United States and abroad.
`
`25.
`Because of the overwhelming success and appeal of DECENTRIX Goods and
`Services, and Opposer’s exclusive use of the DECENTRIX mark in connection with Goods and
`Services, the DECENTRIX mark has acquired enormous value and become extremely well known
`to the public and to the trade as identifying and distinguishing Opposer exclusively and uniquely
`as the source of Opposer’s Goods and Services under the mark. Thus, in addition to its inherent
`distinctiveness, the DECENTRIX mark has acquired distinctiveness in the minds of consumers.
`
`
`
`8
`
`

`

`
`IV. OPPOSER’S REGISTRATIONS FOR OPPOSER’S MARKS
`
`
`26.
`Opposer was the owner of Registration No. 2769966 on the Principal Register in
`the United States Patent and Trademark Office for the DECENTRIX mark in connection with
`“Providing temporary access to non-downloadable software and online databases for building
`intranet and extranet web sites, managing online content, publishing on the Internet, allowing the
`personalization and customization of content, permitting the navigation and layout of online
`content, and for building and managing collaborative applications,” registered on September 30,
`2003. Trial Exhibit 1 is a true and correct printout from the United States Patent and Trademark
`Office database showing the current status and title for Registration No. 2769966.
`
`27.
`Opposer is the applicant for Application Serial Nos. 87927317, 88233286,
`88233309, 88233324, 88233330, 88233268 (each filed on a § 1(a) basis). Trial Exhibit 2
`includes true and correct printouts from the United States Patent and Trademark Office database
`showing the current status and title for the foregoing Application Serial Nos.
`
`V.
`
`OPPOSER’S ENFORCEMENT OF OPPOSER’S MARKS
`
`28.
`Opposer was not aware of any infringers of the DECENTRIX mark before
`Applicant’s recent application for the DECENTRIC MEDIA mark.
`
`29. With respect to patent infringement, Opposer has identified a number of
`corporations infringing its patent portfolio. Opposer have aggressively pursued those infringers
`and a number of these international and domestic businesses have executed patent licensing
`agreements with Opposer. Opposer continues to aggressively pursue other companies infringing
`Opposer’s patents.
`
`As a result of Opposer’s enforcement activities, including the challenging of
`30.
`Applicant’s mark in this proceeding, Opposer’s use of the DECENTRIX mark is substantially
`exclusive in connection with Goods and Services. Thus, the DECENTRIX mark, as used in
`connection with the Goods and Services uniquely identifies Opposer’s Goods and Services.
`
`VI. APPLICANT, THE DECENTRIC MARK, AND CONSUMER CONFUSION
`
`
`
`31.
`On September 24, 2018, Opposer learned that Applicant applied to register the
`DECENTRIC MEDIA mark when Opposer’s Application Serial No. 87927317 received an Office
`action citing a Section 2(d) refusal based on a likelihood of confusion with Applicant’s
`DECENTRIC MEDIA mark applications. Opposer was not aware of the DECENTRIC MEDIA
`mark before this date.
`
`Upon learning of Applicant’s applications, Opposer promptly retained counsel and
`32.
`filed an extension of time to oppose on October 09, 2018. Opposer filed an additional extension
`of time to oppose for good cause on October 19, 2018 to gather additional documentation for its
`211-page Notice of Opposition filed on December 26, 2018.
`
`
`
`
`9
`
`

`

`33.
`Opposer has no business relationship with Applicant and has never authorized
`Applicant or otherwise permitted Applicant to use or register the DECENTRIC MEDIA mark or
`any other mark consisting of or similar to the DECENTRIX mark. Trial Exhibit 12 is a true and
`correct copy of Opposer’s Delaware secretary of state certification with no affiliation to
`Applicant’s entity.
`
`The goods and services identified in Applicant’s Application Serial No. 87860561
`34.
`at issue in this action, namely “Providing news, information, opinion, commentary in the field of
`careers via websites, the internet, and online electronic communications networks; Arranging and
`conducting business conferences in the fields of finance, entertainment, popular culture, and
`financial technology; providing on-line web directory and database services featuring hyperlinks
`to the websites of others; Providing and updating a financial index, namely, providing and updating
`the trading values of securities, currencies, and market information,” in international class 035 are
`related to Opposer’s Goods and Services under the DECENTRIX mark because the services
`offered by Opposer in international classes 035 and 036 are nearly identical to Applicant’s
`foregoing goods services. Further, Opposer’s Application Serial No. 88233309 and 8823386 have
`been refused registration on the principal register based on a Section 2(d) likelihood of confusion
`with Applicant’s Application Serial No. 87860561. Trial Exhibit 13 is a true and correct copies
`of the Office actions received by Opposer including the Section 2(d) refusal.
`
`The goods and services identified in Applicant’s Application Serial No. 87860562
`35.
`at issue in this action, namely “Providing news, information, opinion, and commentary in the field
`of financial news and financial services in the field of cryptocurrency via websites, the internet,
`and online electronic communications networks; Providing financial information, namely,
`information on the trading values of securities, currencies, and market information,” in
`international class 036 are related to Opposer’s Goods and Services under the DECENTRIX mark
`because the services offered by Opposer in international class 036 are nearly identical to
`Applicant’s foregoing goods services. Further, Opposer’s Application Serial No. 88233309 has
`been refused registration on the principal register based on a Section 2(d) likelihood of confusion
`with Applicant’s Application Serial No. 87860561. Trial Exhibit 14 is a true and correct copy of
`the Office action received by Opposer including the Section 2(d) refusal.
`
`The goods and services identified in Applicant’s Application Serial No. 87860564
`36.
`at issue in this action, namely “Internet broadcasting and streaming of audio-visual media content
`in the fields of financial information, popular culture, entertainment, careers, and human interest,
`namely, the delivery of programming, information, and data online and to mobile phones and
`devices; providing access to interactive electronic databases that contain news and information in
`financial
`information, popular culture, entertainment, careers, and human
`interest;
`telecommunications services, namely, providing email alerts via the internet to update subscribers
`on selected topics; providing on-line chat rooms and electronic bulletin boards for transmission of
`messages among computer users concerning financial news, popular culture, entertainment,
`financial technology, careers, lifestyle, and human interest; providing on-line chat rooms for social
`networking; providing voice chat services; ticker tape services; instant messaging services,” in
`international class 038 are related to Opposer’s Goods and Services under the DECENTRIX mark
`because the services offered by Opposer in international class 038 are nearly identical to
`Applicant’s foregoing goods services. Further, Opposer’s Application Serial No. 88233324 has
`
`
`
`10
`
`

`

`been refused registration on the principal register based on a Section 2(d) likelihood of confusion
`with Applicant’s Application Serial No. 87860564 in