IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`PETITION TO CANCEL
`
`Cancellation No.
`
`L
`
`04-1 8-2003
`US. Patent & TMOfcITM Mai! Hcpt Dt. #74
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`In re Trademark Registration No. 2,493,425
`
`CLINIX MEDICAL INFORMATION
`SERVICES, LLC
`
`Petitioner,
`
`-against-
`
`CLIGNOSIS, INC.
`
`Responden
`
`BOX TTAB - FEE
`
`Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`05/07/2003 SIIILSOHI 00000078 2493485
`
`01 FC:6401
`
`Reference l3So?f1%°dgpt0 Registration No. 2,493,425 for the mark CLINIX for “design of
`
`computer software for others regarding clinical knowledge base applicants” in International
`
`Class 42, in the name of C1iGnosis, Inc. (“Respondent”). Petitioner, Clinix Medical Information
`
`Services, LLC (“Petitioner”), believes it is being damaged by the registration of the mark in
`
`Registration No. 2,493,425, and hereby petitions to cancel same.
`
`A.
`
`Respondent
`
`PARTIES
`
`Upon information and belief, Respondent is a corporation organized and existing under
`
`the laws of the State of Delaware, with a principal place of business located at 116 Appleton
`
`Street, Boston, Massachusetts 021 16.
`
`CHI l05ll098.1
`
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`PETITION TO CANCEL
`
`Cancellation No.
`
`L
`
`04-1 8-2003
`US. Patent & TMOfcITM Mai! Hcpt Dt. #74
`
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`In re Trademark Registration No. 2,493,425
`
`CLINIX MEDICAL INFORMATION
`SERVICES, LLC
`
`Petitioner,
`
`-against-
`
`CLIGNOSIS, INC.
`
`Responden
`
`BOX TTAB - FEE
`
`Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`05/07/2003 SIIILSOHI 00000078 2493485
`
`01 FC:6401
`
`Reference l3So?f1%°dgpt0 Registration No. 2,493,425 for the mark CLINIX for “design of
`
`computer software for others regarding clinical knowledge base applicants” in International
`
`Class 42, in the name of C1iGnosis, Inc. (“Respondent”). Petitioner, Clinix Medical Information
`
`Services, LLC (“Petitioner”), believes it is being damaged by the registration of the mark in
`
`Registration No. 2,493,425, and hereby petitions to cancel same.
`
`A.
`
`Respondent
`
`PARTIES
`
`Upon information and belief, Respondent is a corporation organized and existing under
`
`the laws of the State of Delaware, with a principal place of business located at 116 Appleton
`
`Street, Boston, Massachusetts 021 16.
`
`CHI l05ll098.1
`
`
`
`B.
`
`Petitioner
`
`Petitioner is a limited liability company organized and existing under the laws of the
`
`State of Delaware, with a principal place of business at 5211 Maryland Way, Suite 2020,
`
`Brentwood, Tennessee 37027.
`
`GROUNDS FOR CANCELLATION
`
`The grounds for cancellation are as follows:
`
`1.
`
`Since at least as early as l987,lPetitioner has continuously used the trade name
`
`CLINIX in connection with computer software and related services for use in healthcare practice
`
`management, medical billing, accounts receivable and patient information.
`
`2.
`
`Since at least as early as 1987, Petitioner has continuously used the mark CLINIX
`
`in connection with computer software and related services for use in healthcare practice
`
`management, medical billing, accounts receivable and patient information, and related goods or
`
`services.
`
`3.
`
`Since at least as early as September 1, 2001, Petitioner has used the mark
`
`CLINIXMIS in connection with “providing temporary use of online, non-downloadable software
`
`for use in healthcare practice management, medical billing, accounts receivable and patient
`
`information” (“Petitioner’s Services”). Petitioner owns Application Serial No. 76/376,951 for
`
`CLINIXMIS, with a filing date of March 1, 2002. Petitioner has requested that that application
`
`be revived and suspended pending the outcome of this proceeding.
`
`4.
`
`Since at least as early as September 1, 2001, Petitioner has used the mark
`
`CLINIXMD in connection with Petitioner’s Services. Petitioner owns Application Serial No.
`
`76/3 76,962 for CLINIXMD, with a filing date of March 1, 2002. Petitioner has requested that
`
`that application be revived and suspended pending the outcome of this proceeding.
`
`5.
`
`Since at least as early as September 1, 2001, Petitioner has used the mark
`
`CH1 10511098.}
`
`2
`
`
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`CLINIXCM in connection with Petitioner’s Services. Petitioner owns Application Serial No.
`
`76/3 77,881 for CLINIXCM, with a filing date of March 1, 2002. Petitioner has requested that
`
`that application be revived and suspended pending the outcome of this proceeding.
`
`6.
`
`As a result of Petitioner’s longstanding, continuous use of the trade name and
`
`mark CLINIX, and the marks CLINIXMIS, CLINIXMD and CLINIXCM, Petitioner has
`
`developed strong trade name and trademark rights in the relevant industry.
`
`7.
`
`Petitioner adopted and began using its CLINIX trade name and mark more than
`
`10 years prior to the alleged first use date of Respondent’s CLINIX mark, and more than 12
`
`years prior to the filing date of Respondent’s application to register CLINIX.
`
`8.
`
`Respondent’s registered mark CLINIX is identical to Petitioner’s trade name and
`
`mark CLINIX, and incorporates an identical element from Petitioner’s marks CLINIXMIS,
`
`CLINIXMD and CLINIXCM.
`
`9.
`
`Respondent has registered CLINIX in International Class 42 for “design of
`
`computer software for others regarding clinical knowledge base applicants.” Respondent’s
`
`application to register CLINIX was filed on December 1, 1999 based on an intent to use the
`
`mark. Respondent’s application issued to registration on September 25, 2001, listing a first use
`
`date of September 1, 1998 and a first use in commerce date of March 1, 1999.
`
`10.
`
`Upon information and belief, prior to September 1, 1998 Respondent did not use
`
`the mark CLINIX anywhere for the services listed in Registration No. 2,493,425.
`
`11.
`
`Upon information and belief, prior to March 1, 1999 Respondent did not use the
`
`mark CLINIX in commerce for the services listed in Registration No. 2,493,425.
`
`12.
`
`Upon information and belief, Respondent is not currently using the mark
`
`CLINIX, either directly or through a licensee or related company.
`
`CH1 l05ll098.l
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`
`
`13.
`
`Upon information and belief, Respondent has abandoned the mark CLINIX for
`
`the services listed in Registration No. 2,493,425.
`
`14.
`
`Respondent’s registration for CLINIX is likely to cause COI1fi1Sl0I1 among the
`
`trade and the purchasing public, thereby causing damage and injury to Petitioner. Persons
`
`familiar with Petitioner's goods and services are likely to be confused as to whether Respondent's
`
`services are authorized or sponsored by Petitioner. Furthermore, any defect, objection or fault
`
`found with Respondent's services would likely reflect upon and injure the good reputation
`
`Petitioner has established for its goods and services.
`
`15.
`
`Respondent’s registration is harming Petitioner because it impedes on Petitioner’s
`
`ability to register its marks, despite Petitioner’s prior rights in and to CLINIX and despite
`
`Respondent’s abandonment of that mark.
`
`16.
`
`This Petition to Cancel is being filed within five years of the registration date of
`
`Respondent’s Registration No. 2,493,425.
`
`RELIEF REQUESTED
`
`A.
`
`Registration No. 2,493,425 should be cancelled in accordance with Section 2(d)
`
`of the Lanham Trademark Act of 1946, as amended, 15 U.S.C. Section 1052(d).
`
`B.
`
`Registration No. 2,493,425 should be cancelled because respondent has
`
`abandoned the registered mark.
`
`C.
`
`Registration No. 2,493,425 should be cancelled because respondent is not, and
`
`was not, at the time of the filing of its application for registration, the rightful owner of the
`
`registered mark.
`
`CH1 l05ll098.l
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`Dated: Chicago, Illinois
`April 15, 2003
`
`Respectfully submitted,
`
`SEYFARTH SHAW
`
`By‘ W9
`Bruce Haraguchi
`Inna Tsimerman
`SEYFARTH SHAW
`Attorneys for Petitioner
`
`55 East Monroe Street, Suite 4200
`Chicago, Illinois 60603
`Tel:
`(312) 269-8963
`Fax:
`(312) 269-8869
`E-mail:bharaguchi@seyfa1th.com
`
`Certificate of Mailing
`I hereby certify that this correspondence is being deposited in duplicate with the
`United States Postal Service as first class mail in an envelope addressed to:
`Commissioner for Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-
`3513 on April 15, 2003.
`
`Bruce I-laragu hi
`
`~
`
`A
`
`/
`
`1
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`
`CH1 lO5l1098.l
`
`
`
`~
`SEYFARTH
`
`A T T O R N E Y S
`
`55 East Monroe Street
`
`Writer's direct phone
`(312) 269-8963
`
`Writer's e-mail
`bharaguchi@seyfarth.com
`
`I:
`’
`
`,
`’
`
`04-18-2003
`
`us. Patent & TMOfcITM Mail Rem oz. #74
`
`April 15, 2003
`
`BY U.S. MAIL
`
`BOX TTAB - FEE
`U.S. Patent and Trademark Office
`Trademark Trial and Appeal Board
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`.
`
`Re:
`
`Trademark Registration No. 2,493,425
`
`Dear Sir/Madam:
`
`_
`
`Suite 4200
`
`3i2'346—80O0
`fax 312-269-8869
`
`Www_seYfu”h.Com
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`Enclosed please find Petition to Cancel for the above—referenced matter along with a check in the
`amount of $300.00 for the filing of the same.
`
`Also enclosed is a self-addressed stamped postcard. Please place your received stamp on the
`postcard and return same to our offices. Please call me if you have any questionsregarding this matter.
`
`Very truly yours,
`
`SEYFARTH SHAW
`I
`
`Bruce Haraguchi
`
`BH:rw CH2 201375211
`Enclosure
`cc: R. D. Yant
`
`MAILING CERTIFICATE
`
`I hereby certify that the attached correspondence is being deposited with the United States Postal Service via First Class
`U. S. Mail to BOX TTAB — FEE, U.S. Patent and Trademark Office, Trademark Trial and Appeal Board, 2900 Crystal Drive,
`Arlington, Virginia 22202-3513, on April 15, 2003.
`
`Bruce Haraguca‘
`
`‘
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