Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA708507
`ESTTA Tracking number:
`11/13/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92061076
`Plaintiff
`Quotient, Inc.
`JORDAN S WEINSTEIN
`BARNES & THORNBURG LLP
`1717 PENNSYLVANIA AVE NW, STE 500
`WASHINGTON, DC 20006
`UNITED STATES
`jweinstein@btlaw.com, dbondurant@btlaw.com, docketingtm-dc@btlaw.com
`Motion for Summary Judgment
`Jordan S. Weinstein
`jweinstein@btlaw.com, dbondurant@btlaw.com, docketingtm-dc@btlaw.com
`/jsw/
`11/13/2015
`Quotient-MSJ.pdf(138102 bytes )
`MSJExh1.pdf(4322459 bytes )
`MSJ Exhibit 2.pdf(3629461 bytes )
`MSJExh3.pdf(4186449 bytes )
`Exh4 - Lare Affidavit.pdf(45318 bytes )
`LareExh A.pdf(2380481 bytes )
`MSJ Lare Aff Exh B-REDACTED.pdf(1602242 bytes )
`MSJ Lare Aff Exh C.pdf(1494911 bytes )
`MSJExh5.pdf(1485394 bytes )
`MSJExh6.pdf(1294194 bytes )
`MSJExh7.pdf(3953934 bytes )
`MSJExh8.pdf(3224493 bytes )
`
`

`

`Attorney Docket No.: 66366-556060
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Cancellation No: 92/061,076
`
`Registration No.: 4,341,705
`Mark: QUOTIENT INTEGRATED
`SOLUTIONS & Design
`
`Registration No.: 4,341,239
`Mark: QUOTIENT INTEGRATED
`SOLUTIONS
`
`)
`
`))
`
`))
`
`))
`
`))
`
`))
`
`Quotient, Inc.,
`
`Petitioner,
`
`v.
`
`Quotient Integrated Solutions, Inc.,
`
`Respondent.
`
`PETITIONER’S MOTION FOR AND BRIEF IN SUPPORT OF
`SUMMARY JUDGMENT
`
`Pursuant to Federal Rule of Civil Procedure 56, Quotient, Inc. (“Petitioner” or
`
`“Quotient”), by and through its undersigned counsel, hereby moves for summary judgment
`
`against Quotient Integrated Solutions, Inc. (“Respondent”) on all claims in this Cancellation
`
`proceeding. Specifically, as set forth herein, Quotient files this motion on the basis that there is
`
`no genuine dispute as to any material fact relating to Quotient’s standing, Quotient’s priority and
`
`the likelihood of confusion between the marks at issue.
`
`In support of its Motion, Quotient relies on the pleadings, documents produced by
`
`Respondent, Respondent’s responses to discovery requests, the affidavit of Clark J. Lare, Jr. and
`
`publicly available documents, all submitted herewith.
`
`I.
`
`INTRODUCTION AND PROCEDURAL HISTORY
`
`On March 13, 2014 and June 30, 2014, respectively, Quotient filed U.S. Application
`
`Serial No. 86/220604 for the trademark QUOTIENT, and U.S. Application Serial No. 86/324202
`
`

`

`for the slightly stylized version,
`
`, both in connection with the following
`
`services: “Provision of information technology services and information technology management
`
`consulting services to Federal government agencies and commercial enterprises; provision of
`
`information technology project management services to Federal government agencies and
`
`commercial enterprises; and provision of web and enterprise content management, web site
`
`design, network and systems engineering and cybersecurity services to Federal government
`
`agencies and commercial enterprises, in International Class 42” (the “Quotient Applications”).
`
`True and correct printouts from the USPTO TSDR database of the Quotient Applications are
`
`attached hereto as Exhibit 1.
`
`On October 16, 2014, the Trademark Office refused registration of both the Quotient
`
`Applications. The stated ground for the refusal is a likelihood of confusion with Respondent’s
`
`registrations, U.S. Registration No. 4,341,239 and U.S. Registration No. 4,341,705
`
`(“Respondent’s Registrations”), under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d).
`
`Copies of the Examining Attorney’s Office Actions are attached hereto as Exhibit 2. Printouts
`
`from the USPTO TSDR database of the Respondent’s Registrations are attached hereto as
`
`Exhibit 3.
`
`On March 16, 2015, Quotient filed the current Petition for Cancellation, seeking
`
`cancellation of Respondent’s Registrations. The parties exchanged initial disclosures and
`
`engaged in discovery. Respondent served its Responses to Petitioner’s First Set of
`
`Interrogatories, Request for Production of Documents and Things, and Requests for Admission
`
`on September 9, 2015 (“Respondent’s Discovery Responses”). Petitioner served its Responses
`
`to Respondent’s First Set of Interrogatories, Request for Production of Documents and Things,
`
`- 2 -
`
`

`

`and Requests for Admission on October 9, 2015. Discovery is set to close on November 21,
`
`2015.
`
`II.
`
`STANDARD FOR SUMMARY JUDGMENT
`
`Summary judgment is appropriate where there is no genuine dispute as to any material
`
`fact and the movant is entitled to judgment as a matter of law. FRCP 56(a). Summary judgment
`
`is a useful tool for conserving judicial resources, narrowing the issues and saving the parties the
`
`time and expense of litigating issues where there are no disputed facts. The summary judgment
`
`standard does not require the movant to demonstrate a complete lack of any factual disputes.
`
`Rather, “[b]y its very terms, this standard provides that the mere existence of some alleged
`
`factual dispute between the parties will not defeat an otherwise properly supported motion for
`
`summary judgment; the requirement is that there be no genuine issue of material fact.”
`
`Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986) (emphasis in original). A factual
`
`dispute is only genuine if, on the submitted evidence, the Board could resolve the matter in favor
`
`of the non-moving party. See Opryland USA Inc. v. Great American Music Show Inc., 23
`
`U.S.P.Q.2d 1471, 1472 (Fed. Cir. 1992).
`
`As likelihood of confusion is a question of law, and not one of fact, it is an issue that “the
`
`board may unquestionably resolve . . . on summary judgment.” Sweats Fashions Inc. v. Pannill
`
`Knitting Co., 4 U.S.P.Q.2d. 1793, 1797 (Fed. Cir. 1987). The instant case lends itself well to
`
`such resolution. The marks at issue are nearly identical, as are the services and channels of trade.
`
`Given Petitioner’s clear priority, summary judgment is not only appropriate, but also would
`
`spare the parties and the Board significant time and resources in further continuing this
`
`proceeding.
`
`- 3 -
`
`

`

`III.
`
`STATEMENT OF UNDISPUTED MATERIAL FACTS
`
`The following material facts cannot be disputed:
`
`a. Petitioner was incorporated, and began using its QUOTIENT mark in relation to
`
`information technology services in 1999. Affidavit of Clark J. Lare, Jr. in
`
`Support of Petitioner’s Motion for Summary Judgment at ¶¶ 3-4, attached as
`
`Exhibit 4 (hereinafter “Lare Affidavit”).
`
`b. The information technology services provided under Petitioner’s QUOTIENT
`
`mark include: content management, web design and development, application
`
`development, cyber security, systems engineering, learning management systems,
`
`cloud engineering and management consulting. Lare Affidavit at ¶ 7.
`
`c. Continuously since 1999, Petitioner has promoted and provided its information
`
`technology services under the QUOTIENT mark in U.S. commerce. Lare
`
`Affidavit at ¶8; Exhibits B and C to Lare Affidavit.
`
`d.
`
`In relation to its use of the QUOTIENT mark for providing information
`
`technology services, Petitioner owns the Quotient Applications. Exhibit 1; Lare
`
`Affidavit at ¶ 9.
`
`e. On October 16, 2014, the Trademark Office refused registration of Quotient’s
`
`Applications. The stated ground for the refusal is a likelihood of confusion with
`
`Respondent’s Registrations. See Exhibit 2.
`
`f. Respondent’s Registrations cover services that are highly related, if not identical,
`
`to Petitioner’s information technology services. Specifically, Respondent’s
`
`Registration, U.S. Registration No. 4,341,239 for QUOTIENT INTEGRATED
`
`SOLUTIONS covers “computer software development.” See Exhibit 3. U.S.
`
`- 4 -
`
`

`

`Registration No. 4,341,705 for
`
`covers “Computer software
`
`development; Computer software development and computer programming
`
`development for others; Computer software development in the field of mobile
`
`applications.” Id.
`
`g. Respondent made no use of, and has no evidence of use of, the marks set forth in
`
`Respondent’s Registrations prior to January 1, 2008. Respondent’s Discovery
`
`Responses, Responses to Requests for Admission Nos. 4 and 5, attached hereto as
`
`Exhibit 5.
`
`h. As Petitioner has continuous use of its QUOTIENT mark dating back to 1999 and
`
`Respondent admittedly has no use of the QUOTIENT INTEGRATED
`
`SOLUTIONS marks depicted in Respondent’s Registrations prior to 2008,
`
`Petitioner has priority.
`
`IV.
`
`ARGUMENT
`
`The resolution of this proceeding revolves around a very simple issue, and one perfectly
`
`tailored for summary judgement: is the mark QUOTIENT INTEGRATED SOLUTIONS, used in
`
`connection with computer software development and programming services, likely to cause
`
`confusion with the QUOTIENT mark, used on information technology services that include
`
`application development? To prevail in this proceeding, Petitioner need only demonstrate that:
`
`(i) Petitioner has standing to bring this Cancellation proceeding, (ii) Petitioner has priority and
`
`rights in its QUOTIENT mark, and (iii) there is a likelihood of confusion between Petitioner’s
`
`QUOTIENT mark and the marks represented by Respondent’s Registrations.
`
`- 5 -
`
`

`

`A. STANDING
`
`Any person “who believes that he is or will be damaged . . . by the registration of a mark
`
`on the principal register” may petition to cancel the registration under 15 U.S.C. § 1064.
`
`Standing only requires that the Petitioner have a “real interest” in the proceeding. Int’l Order of
`
`Job’s Daughters v. Lindeburg & Co., 220 U.S.P.Q. 1017, 1020 (Fed. Cir. 1984). In this case,
`
`Petitioner has established that it has a real interest in this proceeding due to the fact that it has
`
`established prior use of a confusingly similar mark to those represented by Respondent’s
`
`Registrations. See Lare Affidavit at ¶ 4; Respondent’s Discovery Responses, Responses to
`
`Requests for Admission Nos. 4 and 5; Giersch v. Scripps Networks Inc., 90 U.S.P.Q.2d 1020,
`
`1022 (TTAB 2009) (standing established by showing of prior common law rights). Petitioner
`
`also has established standing by submitting evidence that the USPTO refused to register the
`
`Quotient Applications due to a likelihood of confusion with Respondent’s Registrations. See
`
`Exhibt 1; Giersch, 90 U.S.P.Q.2d at 1022.
`
`B. PRIORITY
`
`Priority, in this case, is far from a close call and not subject to dispute. Petitioner has
`
`entered evidence showing use of its QUOTIENT mark on information technology services
`
`continuously since 1999. Lare Affidavit at ¶¶ 4, 8; Exhibits B & C to Lare Affidavit.
`
`Respondent, on the other hand, has admitted that it did not use the marks represented by
`
`Respondent’s Registrations prior to January 1, 2008. Respondent’s Discovery Responses,
`
`Responses to Requests for Admission Nos. 4 and 5. Priority cannot be disputed.
`
`- 6 -
`
`

`

`C. LIKELIHOOD OF CONFUSION
`
`As Respondent’s Registrations are not incontestable, Petitioner need only make out a
`
`claim for likelihood of confusion, a reason that would have precluded registration of
`
`Respondent’s Registration in the first instance. Cunningham v. Laser Golf Corp., 55 U.S.P.Q.2d
`
`1842, 1844 (Fed. Cir. 2000). Under Section 2(d) of the Lanham Act, the U.S. Patent and
`
`Trademark Office should refuse registration of a mark that:
`
`so resembles . . . a mark or trade name previously used in the
`United States by another and not abandoned, as to be likely, when
`used on or in connection with the goods of the applicant, to cause
`confusion, or to cause mistake, or to deceive.
`
`The analysis involved in reaching the legal conclusion as to whether a likelihood of confusion
`
`exists involves a review of any relevant evidence under the thirteen factors set out in In re E.I.
`
`DuPont DeNemours & Co., 177 U.S.P.Q. 563, 567 (C.C.P.A. 1973). Those factors are:
`
`(1)
`
`(2)
`
`(3)
`
`(4)
`
`(5)
`
`(6)
`
`(7)
`
`(8)
`
`(9)
`
`The similarity of the marks in appearance, sound, connotation and commercial
`impression;
`
`The similarity of the services in connection with which the marks are used;
`
`The similarity of trade channels;
`
`The conditions under which consumers encounter the services and the marks;
`
`The fame of the prior user’s mark;
`
`The number of similar marks in use;
`
`Any actual confusion;
`
`The length of time of any concurrent use without actual confusion;
`
`The variety of services on which the mark is used;
`
`(10) Any market interface or relationship between the senior and junior users of the
`marks;
`
`(11)
`
`The extent to which the applicant has a right to exclude others from use of its
`mark on its services;
`
`- 7 -
`
`

`

`(12)
`
`The extent of the potential for confusion; and
`
`(13) Any other probative facts relating to the use of the marks.
`
`The likelihood of confusion analysis takes into account that certain of the factors may, in
`
`any given case, be more determinative of the outcome. See DuPont, 476 F.2d at 1361; In re
`
`Shell Oil Co., 26 U.S.P.Q.2d 1687 (Fed. Cir. 1993). Indeed, “[i]n any likelihood of confusion
`
`analysis, two key considerations are the similarities between the marks and the similarities
`
`between the goods and/or services.” In re max Capital Grp. Ltd., 93 U.S.P.Q.2d 1243, 1244
`
`(T.T.A.B. 2010). Further, “[n]ot all of the DuPont factors are relevant to every case, and only
`
`factors of significance to the particular mark need be considered.” In re Mighty Leaf Tea, 94
`
`U.S.P.Q.2d 1257, 1259 (Fed. Cir. 2010). Any reasonable doubt as to likelihood of confusion
`
`when considering these factors should be resolved against the junior user. Id. In the present case,
`
`the key DuPont factors are the similarity of the marks, the similarity of the services and the trade
`
`channels. Because those factors overwhelmingly favor Petitioner, and the remaining factors are
`
`neutral, at best, to Respondent’s case, summary judgment should be granted.
`
`i.
`
`Similarity of the Marks
`
`When looking for likelihood of confusion, the similarity of the marks is the “predominant
`
`inquiry.” Herbko Intern., Inc. v. Kappa Books, Inc., 64 U.S.P.Q.2d 1375 (Fed. Cir. 2002). In the
`
`present case, there can be no argument that the marks are nearly identical in appearance, sound,
`
`connotation and commercial impression. Petitioner’s word mark consists of QUOTIENT and, as
`
`stylized,
`
`. Respondent’s Registrations cover the word mark QUOTIENT
`
`INTEGRATED SOLUTIONS and, as stylized,
`
`. Petitioner’s mark consists of
`
`one word, QUOTIENT, while Respondent’s marks begin with that same exact word,
`
`- 8 -
`
`

`

`QUOTIENT, and Respondent has disclaimed the remaining words INTEGRATED SOLUTIONS
`
`in Respondent’s Registrations.
`
`Consumers generally focus on the first word, prefix, or syllable in any trademark or
`
`service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772,
`
`73 U.S.P.Q.2d 1689, 1692 (Fed. Cir. 2005); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9
`
`U.S.P.Q.2d 1895, 1897 (TTAB 1988) (noting that “it is often the first part of a mark which is
`
`most likely to be impressed upon the mind of a purchaser and remembered.”) Further,
`
`disclaimed matter is typically less significant or less “dominant” when comparing marks. See In
`
`re Dixie Rests., Inc., 41 U.S.P.Q.2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 224
`
`U.S.P.Q. 749, 752 (Fed. Cir. 1985). As QUOTIENT is the first word in Respondent’s
`
`Registrations, and as Respondent disclaimed the other words in Respondent’s marks,
`
`QUOTIENT is the dominant feature of Respondent’s Registrations. Courts generally give
`
`greater weight to a dominant feature when determining whether marks are confusingly similar.
`
`See In re Nat’l Data Corp., 224 U.S.P.Q. at 751. Accordingly, the dominant feature of
`
`Respondent’s Registrations and the only feature of Quotient’s mark, namely QUOTIENT, are
`
`identical.
`
`In the stylized registration of Respondent’s mark, Respondent emphasizes the
`
`QUOTIENT element by placing it on top of, and in a much larger font than, the disclaimed
`
`INTEGRATED SOLUTIONS element. Moreover, Respondent utilizes a “Q” in quotient that is
`
`almost identical in appearance to the “Q” used in Petitioner’s stylized version of its QUOTIENT
`
`mark, with the tail of the Q being directly vertical. Both stylized versions of Petitioner’s mark
`
`and Respondent’s mark are depicted below:
`
`- 9 -
`
`

`

`As the dominant portion of Respondent’s marks is identical to Petitioner’s mark, and as
`
`Respondent emphasizes the QUOTIENT portion of its mark with a Q virtually identical to that
`
`used by Petitioner, there can be no argument that there is almost no distinction between the
`
`marks with respect to sound, appearance and commercial impression. Moreover, in cases where
`
`the services are identical (in part), “the degree of similarity between the marks which is required
`
`to support a likelihood of confusion is less than it would be if the [services] were not identical.”
`
`Barbara’s Bakery, Inc. v. Landesman, 82 U.S.P.Q.2d 1283, 1288 (T.T.A.B. 2007). The
`
`similarity of the marks at issue, being nearly identical, weighs heavily in favor of a finding of
`
`likelihood of confusion.
`
`ii.
`
`Similarity of Services
`
`Respondent’s services are the same as, or are closely related to, Petitioner’s. When
`
`analyzing the similarity of the services, such services must be evaluated on the basis of the
`
`services as set out in the subject registration, regardless of what the record may otherwise reveal
`
`as to the particular nature of those services. Octocom Sys., Inc. v. Houston Computer Servs., Inc.,
`
`16 U.S.P.Q.2d 1783, 1787 (Fed. Cir. 1990). The services set forth in Respondent’s Registrations
`
`encompass all of the following: “Computer software development; Computer software
`
`development and computer programming development for others; Computer software
`
`development in the field of mobile applications.” As noted in the Lare Affidavit, Quotient’s
`
`information technology services include “content management, web design and development,
`
`application development, cyber security, systems engineering, learning management systems,
`
`cloud engineering and management consulting.” Lare Affidavit at ¶ 7; Exhibit C to Lare
`
`- 10 -
`
`

`

`Affidavit . Numerous online sources define “application” as being software. See Exhibit 6. As
`
`such, there is no distinction between Petitioner’s application development services and the
`
`software development services listed in Respondent’s Registrations. In addition, attached as
`
`Exhibit 7, are numerous third-party registrations which cover services listed in Quotient’s
`
`Applications (such as information technology services, web site design, etc.) as well as the
`
`computer software development services as set forth in Respondent’s Registrations. Such third
`
`party registrations are probative of the fact that Respondent’s services and Petitioner’s services
`
`are so highly related that consumers would expect them to be provided by the same entity. In re
`
`Mucky Duck Mustard Co., 6 U.S.P.Q.2d 1467, 1470 (T.T.A.B.), aff’d per curiam, 864 F.2d 149
`
`(Fed. Cir. 1988). As with the similarity of the marks, Respondent cannot dispute the fact that the
`
`services at issue are highly related, if not identical.
`
`iii.
`
`Similarity of Trade Channels
`
`In comparing trade channels, the Board again must focus on the identification of the
`
`services in Respondent’s Registrations. Bose Corp. v. QSC Audio Products, Inc., 63 U.S.P.Q.2d
`
`1303 (Fed. Cir. 2002). Due to the fact that Petitioner’s services and Respondent’s services are
`
`highly related, if not identical, they will be presumed to be offered and promoted in the same
`
`channels of trade unless the identification of services in the respective applications/registrations
`
`restricts those trade channels. Id. In the present case, neither Respondent nor Petitioner has
`
`restricted their channels of trade in their respective identification of services. Accordingly, the
`
`channels are presumed to be the same. In re Smith & Mehaffey, 31 U.S.P.Q.2d 1531, 1532
`
`(T.T.A.B. 1994); see also Schieffelin & Co. v. Molson Comp. Ltd., 9 U.S.P.Q.2d 2069 (T.T.A.B.
`
`1989). Indeed, due to the unrestricted description of services in Respondent’s Registrations and
`
`the Quotient Applications, any submitted evidence showing that either party only offers its
`
`- 11 -
`
`

`

`services to a specific class of customers would not be considered as providing evidence on a
`
`material fact for purposes of awarding summary judgment. Octocom Systems, Inc., 16
`
`U.S.P.Q.2d at 1787.
`
`Not only are the channels of trade presumed to be the same, they are, in fact, the same.
`
`Both Respondent and Petitioner provide their information technology services to large
`
`commercial enterprises and government agencies. Lare Affidavit at ¶ 4; Discovery Responses,
`
`Response to Interrogatory No. 8. Further, both Respondent and Petitioner advertise and promote
`
`their services via the internet. Lare Affidavit at ¶ 5; Discovery Responses, Response to
`
`Interrogatory No. 6. Accordingly, the comparison of trade channels factor also strongly favors a
`
`finding of likelihood of confusion.
`
`iv.
`
`Remaining DuPont Factors
`
`QUOTIENT, when applied to information technology services, does not suggest or
`
`describe a significant ingredient, quality, or characteristic of the services. Dictionary definitions
`
`of “quotient” have absolutely nothing to do with information technology services, and are not
`
`suggestive of those services. See Exhibit 8. As such, Petitioner’s QUOTIENT mark should be
`
`deemed a strong, arbitrary mark, entitled to a broad scope of protection. See, e.g., Palm Bay
`
`Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 U.S.P.Q.2d 1689, 1692
`
`(Fed. Cir. 2005). Because QUOTIENT is distinctive when applied to information technology
`
`services, the likelihood of confusion is enhanced. Id.
`
`While there is no evidence of any actual confusion in this case, a showing of actual
`
`confusion is unnecessary as the test is “likelihood” of confusion. See Jansen Enters v. Rind, 85
`
`U.S.P.Q.2d 1104, 1110 (T.T.A.B. 2007) (finding the absence of any actual confusion despite ten
`
`years of contemporaneous use to be neutral to the likelihood of confusion analysis).
`
`If a lack of
`
`- 12 -
`
`

`

`evidence of actual confusion gave rise to a genuine dispute as to a material fact, summary
`
`judgment could almost never be granted in favor of a petitioner on likelihood of confusion
`
`grounds. See, Apple Computer v. TVNET.net, Inc., 90 U.S.P.Q.2d 1393, 1397 (finding that the
`
`applicant’s arguments surrounding lack of actual confusion and good faith adoption did not raise
`
`any genuine issues of material fact so as to preclude summary judgment).
`
`While information technology services are admittedly not inexpensive, and therefor
`
`normally purchased after careful research and investigation, “even sophisticated purchasers can
`
`be confused by very similar marks.” In re Shell Oil Co., 26 U.S.P.Q.2d at 1693. Beyond “very
`
`similar,” the marks at issue in this proceeding, as demonstrated above, are nearly identical. As
`
`such, even the most sophisticated and diligent of consumers will likely be confused.
`
`The remaining DuPont factors do not save Respondent from a finding of likelihood of
`
`confusion. Given that the marks at issue, the services at issue and the trade channels at issue are
`
`all nearly identical, none of the remaining issues present any material fact that could possibly
`
`lead to a ruling on likelihood of confusion in Respondent’s favor.
`
`V.
`
`CONCLUSION
`
`Resolution of this Cancellation proceeding does not require the Board to make any
`
`determination as to any contested material facts. Respondent cannot contest Petitioner’s
`
`standing or priority. For purposes of the likelihood of confusion analysis, the Board need look
`
`no further than the similarities of the marks, the similarities of the services, and the channels of
`
`trade. None of those exercises is subject to factual dispute. Respondent’s and Petitioner’s
`
`QUOTIENT marks are nearly identical. Respondent’s and Petitioner’s services both involve
`
`application/software development and both fall under the general umbrella of information
`
`- 13 -
`
`

`

`technology services. Respondent simply cannot deny that the services are, at the very least,
`
`highly related. To cement matters, the trade channels, due to Respondent’s unrestricted
`
`registrations, are presumed to be the same.
`
`QUOTIENT is a strong, arbitrary mark in relation to information technology services — a
`
`mark worthy of a broad scope of protection. Unfortunately for Respondent, Petitioner used
`
`QUOTIENT first in commerce on information technology services. Petitioner’s prior rights in
`
`the confusingly similar QUOTIENT mark cannot be disputed. As there are no genuine disputes
`
`as to any material facts, summary judgment is appropriate. Petitioner respectfully requests that
`
`the Board enter summary judgment in its favor, grant the Petition to Cancel and order the
`
`cancellation of Respondent’s Registrations.
`
`Respectfully submitted,
`
`QUOTIENT, INC.
`
`4/-
`
`
`. ordan S. Weinstein
`
`Barnes & Thornburg LLP
`1717 Pennsylvania Avenue, N.W.Suite 500
`Washington, DC 20006
`UNITED STATES
`
`jweinsteinfdtbtlawcom
`
`Date: November
`
`3
`
`.2015
`
`-14-
`
`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that true copies of the foregoing QUOTIENT’S MOTION AND BRIEF
`
`IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT, EXHIBITS 1-3 and 5-8,
`
`AFFIDAVIT OF CLARK J. LARE (Exhibit 4), and EXHIBITS A-C, were served on
`M
`counsel for Respondent, this 1; clay of November, 2015, by sending same Via e-mail to:
`
`Darin Siefl<es, Esquire
`The Law Office of Darin Sieflces, PLLC
`
`1523 W. Koenig Lane
`Austin, TX 78756
`ds@dsaustinlaw.com
`
`W-
`
`
`Jordan S. Weinstein
`
`-15-
`
`

`

`EXHIBIT 1
`
`

`

`11/5/2015
`
`Trademark Status 8: Document Retrieval
`
`The recently released version of TSDR has been rolled back to the earlier version in order to repair minor defects. The
`
`new version will be re-releasedInthe near future
`
`‘
`
`STATUS
`
`DOCUMENTS
`
`Back to Search
`
`E Print
`
`Generated on: This page was generated by TSDR on 2015-11-05 13:57:54 EST
`
`Mark:
`
`[QUOTIENT]
`
`[QUOTIENTfi
`
`US Serial Number: 86324202
`
`Application Filing Date: Jun. 30, 2014
`
`Register: Principal
`
`Mark Type: Service Mark
`
`Status: An Office action suspending further action on the application has been sent (issued) to the applicant. 1
`click on the Trademark Document Retrieval link at the top ofthis page.
`
`Status Date: Apr. 16. 2015
`
`v Mark Information
`
`Mark Literal Elements:
`
`[QUOTIENT]
`
`Standard Character Claim: No
`
`{CollapseAll
`
`Mark Drawing Type: 3 - AN ILLUSTRATION DRAWING WHICH INCLUDES WORD(S)/ LETTER(S)/NUMBER(S)
`
`Description of Mark: The mark consists ofthe literal portion "QUOTIENT' in stylized block lettering in the middle of two bracl
`
`Color(s) Claimed: Color is not claimed as a feature of the mark.
`
`Design Search Code(s): 24.17.14 - Ampersands (&); Commas; Diacritical marks; Brackets, punctuation; Punctuation marks; QUt
`Exclamation points (Ii)
`
`v 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: Provision of information technology services and information technology management consulting servi
`
`agencies and commercial enterprises; provision of information technology project management servici
`
`agencies and commercial enterprises; provision of web and enterprise content management, web site
`
`engineering and cybersecurity services to Federal government agencies and commercial enterprises
`
`International Class(es): 042 - Primary Class
`
`U.S Class(es): 100, 101
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: 2004
`
`Use in Commerce: 2004
`
`htth/tsdrusptogovlflcaseNum ber=86324202&caseType= SER IAL_N 0&searchType=statusSearch
`
`1/3
`
`

`

`11/5/2015
`
`Trademark Status & Document Retrieval
`
`v Basis Information (Case Level)
`
`Filed Use:
`
`Yes
`
`Filed ITU:
`
`No
`
`Filed 44D:
`
`No
`
`Filed 44E:
`
`No
`
`Filed 66A: No
`
`Currently Use:
`
`Yes
`
`Currently lTU:
`
`Currently 44D:
`
`Currently 44E:
`
`No
`
`No
`
`No
`
`Currently 66A: No
`
`Al
`
`Al
`
`AI
`
`Filed No Basis: No
`
`Currently No Basis: No
`
`v Current Owner(s) Information
`
`Owner Name: Quotient, Inc.
`
`Owner Address: Suite 101
`
`6310 Hillside Court
`
`Columbia, MARYLAND 21046
`UNITED STATES
`
`Legal Entity Type: CORPORATION
`
`State or Country Where MARYLAND
`
`Organized:
`
`v Attorney/Correspondence Information
`
`Attorney of Record
`
`Attorney Name: David M. Abrahams
`
`Docket Number: Ql
`
`Attorney Primary Email trademarks@wc-b.com
`Address:
`
`Attorney Email Authorized: Yes
`
`Correspondent
`
`Correspondent DAVID M. ABRAHAMS
`
`Name/Address: WEBSTER, CHAMBERLAIN & BEAN, LLP
`1747 PENNSYLVANIA AVE NW STE 1000
`
`WASHINGTON, DISTRICT OF COLUMBIA 20006-4693
`UNITED STATES
`
`Phone:
`
`(202) 785-9500
`
`Fax:
`
`(202) 835-0243
`
`Correspondent e-mail:
`
`trademarks@wc-b.com
`
`Correspondent e-mail Yes
`Authorized:
`
`Domestic Representative - Not Found
`
`v Prosecution History
`
`Date
`
`Oct. 30, 2015
`
`Apr. 16, 2015
`
`Apr. 16,2015
`
`Description
`
`ASSIGNED TO LIE
`
`NOTIFICATION OF LETTER OF SUSPENSION E-MAILED
`
`LETTER OF SUSPENSION E-MAILED
`
`Proceeding Number
`
`70468
`
`6332
`
`6332
`
`httpd/tsdrusptagov/IkaseNum ber=86324202&caseType= SERIAL_N O&searchType=statusSearch
`
`213
`
`

`

`11/5/2015
`
`Apr. 16,2015
`
`Mar. 17, 2015
`
`Mar. 16, 2015
`
`Mar. 16, 2015
`
`Oct. 16, 2014
`
`Oct. 16, 2014
`
`Oct. 16, 2014
`
`g Oct. 09, 2014
`
`Oct. 08, 2014
`
`Jul. 08, 2014
`
`Jul. 07, 2014
`
`Jul. 03,2014
`
`Trademark Status & Document Retrieval
`
`SUSPENSION LETTER WRITTEN
`
`TEAS/EMAIL CORRESPONDENCE ENTERED
`
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`
`TEAS RESPONSE TO OFFICE ACTION RECEIVED
`
`NOTIFICATION OF NON-FINAL ACTION E-MAILED
`
`NON-FINAL ACTION E-MAILED
`
`NON-FINAL ACTION WRITTEN
`
`ASSIGNED TO EXAMINER
`
`ASSIGNED TO EXAMINER
`
`81899
`
`88889
`
`88889
`
`6325
`
`6325
`
`81899
`
`81899
`
`90297
`
`NOTICE OF DESIGN SEARCH CODE E-MAILED
`
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
`
`NEW APPLICATION ENTERED IN TRAM
`
`v TM Staff and Location Information
`
`TM Staff Information
`
`TM Attorney: JACKSON, KATINA SHAY
`
`Law Office Assigned: LAW OFFICE 104
`
`File Location
`
`Current Location: TMEG LAW OFFICE 104 - EXAMINING
`ATTORNEY ASSIGNED
`
`Date in Location: Apr. 16,2015
`
`v Assignment Abstract Of Title Information - Click to Load
`
`v Proceedings - Click to Load
`
`htlp'Jltsdr.uspto.gov/#caseNum ber=86324202&caseType=SERlAL_N O&searchType=stamsSearch
`
`3/3
`
`

`

`11/5/2015
`
`Trademark Status & Document Retrieval
`
` The recently released version of TSDR has been rolled back to the earlier version in order to repair minor defects. The
`
`,,
`new verSIon will be re-releasedIn the near futu're.
`A
`,
` MI ,V
`
`:1
`j
`
`STATUS
`
`"I
`g
`
`DOCUMENTS
`
`Back to Search
`
`_
`PrInt
`
`Generated on: This page was generated by TSDR on 2015-11-05 13:58:57 EST
`
`Mark: QUOTIENT
`
`QUOTIENT
`
`US Serial Number: 86220604
`
`Application Filing Date: Mar. 13, 2014
`
`Register: Principal
`
`Mark Type: Service Mark
`
`Status: Suspension check completed. Application remains suspended.
`
`Status Date: Oct. 26, 2015
`
`" Mark Information
`
`Mark Literal Elements: QUOTIENT
`
`‘I‘A-V‘Coilapse All
`
`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
`
`v 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: Provision of information technology services and information technology management consulting serv
`
`agencies and commercial enterprises; provision of information technology project management servic
`
`agencies and commercial enterprises; provision of web and enterprise content management, web site
`
`engineering and cybersecurity services to Federal governmentagencies and commercial enterprises
`
`International Class(es): 042 - Primary Class
`
`U.S Class(es): 100, 101
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: 1999
`
`v Basis Information (Case Level)
`
`Use in Commerce: 1999
`
`Filed Use: Yes
`
`Currently Use: Yes
`
`http’J/tsdr.uspto.gov/#caseN um ber=86220604&caseType=SERlAL_N O&searchType=statusSearch
`
`AI
`
`1/3
`
`

`

`11/5/2015
`
`Trademark Status & Document Retrieval
`
`Filed ITU:
`
`Filed 44D:
`
`Filed 44E:
`
`Filed 66A:
`
`Filed No Basis:
`
`No
`
`No
`
`No
`
`No
`
`No
`
`Currently ITU:
`
`Currently 440:
`
`Currently 44E:
`
`Currently 66A:
`
`Currently No Basis:
`
`No
`
`No
`
`No
`
`No
`
`No
`
`v Current Owner(s) Information
`
`Owner Name:
`
`Quotient, Inc.
`
`Owner Address:
`
`Suite 101
`
`6310 Hillside Court
`
`Columbia, MARYLAND 21046
`