Hart Info LLCv.Innovative Measure-ment Solutions, Inc.

Trademark Trial and Appeal Board

Dec 4, 2003

No. 91123830 (T.T.A.B. Dec. 4, 2003)

Mailed:
December 4, 2003
Paper No. 32
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
Hart Info LLC
v.
Innovative Measurement Solutions, Inc.
________
Opposition No. 91123830
to Application Serial No. 75732660
_______
Nicole D. Vickroy and William E. Gallagher of Frost Brown
Todd LLC for Hart Info LLC.
Patricia L. Roer of Wiggins & Dana LLP for Innovative
Measurement Solutions, Inc.
_______
Before Seeherman, Hairston and Bucher, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Innovative Measurement Solutions, Inc. seeks to
register on the Principal Register the mark shown below:
for goods identified as “computer software for formula
development, formula management, and computer software for
product development and process manufacturing applications,
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91123830
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all for use in the process manufacturing industries,” in
International Class 9.1
Registration has been opposed by Hart Info LLC on the
ground that it, and not applicant, is the rightful owner of
this mark as applied to computer software, and hence, that
Innovative Measurement Solutions, Inc. is not entitled to
registration of this applied-for mark.
Applicant, in its answer, denied the salient
allegations of the notice of opposition.
A trial was conducted in accordance with the Trademark
Rules of Practice. The record consists of the pleadings;
the file of the opposed application; opposer’s notice of
reliance on portions of the discovery deposition of John
Sottery, with exhibits; applicant’s notice of reliance on
portions of the discovery deposition of John Melanson, with
exhibits, opposer’s responses to applicant’s first set of
interrogatories, and pages from printed publications;2 and
applicant’s trial depositions of John Sottery, Bob Slotkin,
1 Application Serial No. 75732660 was filed on June 17, 1999
based upon applicant’s claim of first use in commerce at least as
early as April 2, 1995. Applicant has disclaimed all the wording
in the mark apart from the mark as shown.
2 We have not considered the screen prints taken from
applicant’s Internet website (www.ims-usa.com) under applicant’s
notice of reliance as the contents of a website cannot qualify
for admission into evidence in an opposition proceeding under 37
CFR §2.122(e). Raccioppi v. Apogee Inc., 47 USPQ2d 1368 (TTAB
1998). See generally TBMP §704.08.
Opposition No. 91123830
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Barry Bearg, Susan Murray and John Melanson, each with the
exhibits attached thereto. Portions of the record
(testimony and exhibits) submitted by both parties have
been marked and treated as “confidential” and/or
“attorneys’ eyes only.” Both parties have fully briefed
the case, but only applicant was represented at an oral
hearing scheduled before the board.
It is important to note that these parties are not
strangers to each other. Quite the contrary, they worked
together for years. As noted by opposer:
This case does not present the issues
typically encountered in an opposition
proceeding …. The parties in this dispute
are former parties to a joint venture
relationship in which together they marketed
a computer software product …. In this
case, the Board is called upon to determine
the parties’ contractual understanding
concerning ownership of the disputed mark
and whether the Applicant is entitled to
register the mark.
(Opposer’s brief, pp. 1 – 2) Accordingly, we are not
concerned herein with the issues of priority or likelihood
of confusion. Rather, the large record in this case is all
about the nuances of a business relationship where each
participant brought critical but very different
contributions to the enterprise. In the absence of legal
documents laying out their respective interests, a fairly
Opposition No. 91123830
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detailed chronology of this relationship is critical to
understanding the dispute.
The Parties:
In order to set the stage, we begin by providing brief
backgrounds on the key players in this drama: John
Melanson and John Sottery.
John David Melanson, Jr. (hereinafter “Melanson”), now
opposer’s Vice President of Operations, graduated in 1983
from the University of Massachusetts with a degree in
chemical engineering. (Melanson Trial Deposition at 7)
Melanson was then hired by Procter & Gamble (P&G), where he
worked as a product formulator for, inter alia, hair care
and deodorant products. (Melanson Trial Deposition at 6, 9
& 12) During his years with P&G, he developed a software
program to help P&G formulators keep track of formulas and
organize formula information in a readily accessible
manner. (Melanson Trial Deposition at 6 – 11) Before his
departure from P&G in 1991 to start his own company, he
received assurances from the legal department of P&G that
he was free to take this program and develop it further.
(Melanson Trial Deposition at 13 - 14) Melanson’s new
enterprise was known initially as Hart Information Systems,
but was later reorganized as Hart Info. LLC, the current
opposer.
Opposition No. 91123830
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John Phelps Sottery (hereinafter “Sottery”),
applicant’s president, earned his chemistry degrees at Duke
University – being awarded his baccalaureate degree in 1981
and his Ph.D. in 1985. (Sottery Trial Deposition at 5) In
1985, Sottery, too, was hired by P&G, where he worked until
August 1992, progressing through several roles of
increasing responsibility with P&G’s exploratory
formulation group. (Sottery Trial Deposition at 6 - 10)
In 1992, he left his employment at P&G, also to start his
own company (Sottery Trial Deposition at 10), known as
Innovation Measurement Solutions, Inc. (sometimes referred
to in this record as “IMS”), the applicant herein.
Melanson and Sottery first began to know each other in
1985 at the time Sottery was hired by P&G. (Sottery Trial
Deposition at 10) They played ball together on P&G’s
softball team and worked together on at least one project
team at P&G. (Melanson Trial Deposition at 18; Sottery
Trial Deposition at 10; Sottery Discovery Deposition at 33)
Sottery was an active participant in Melanson’s wedding and
reception in 1991. (Melanson Trial Deposition at 18 – 19;
Sottery Discovery Deposition at 35) They stayed in touch
with each other after leaving their respective positions
with P&G. (Melanson Trial Deposition at 19 – 20; Sottery
Trial Deposition at 10 – 11; Sottery Discovery Deposition
Opposition No. 91123830
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at 34 - 35) Melanson recalled that Sottery was interested
in his advice upon setting up his business in 1992.
(Melanson Trial Deposition at 19) In 1993, in their first
collaboration away from P&G, Sottery contracted with
Melanson for his assistance as a software programmer on an
advanced imaging project that Sottery and his company,
Innovation Measurement Solutions, Inc., were designing for
the Elizabeth Arden Company. (Sottery Trial Deposition at
11 – 13; Melanson Trial Deposition at 19 – 20)
Hence, in 1994, Melanson and Sottery were friends,
former P&G colleagues, and principals in their respective
companies who had recently been collaborating
professionally.
The Formulation Software Product:
Upon leaving P&G in 1991, Melanson was free to take
with him the DOS-based formulation software he had designed
while working at P&G. In 1994, he ported over this DOS-
based formulation software to a Windows-based application.
(Melanson Trial Deposition at 6, 9, 16 – 17) During the
years of his collaboration with Sottery, the specific
features included in the software changed in accordance
with the needs of their prospective clients.
Opposition No. 91123830
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The formulation software was also bundled with
Sottery’s electronic catalog of raw materials suppliers.3
The first shrink-wrap version of bundled software to come
from this enterprise was available in May / June 1995.
Within the first year, Melanson and Sottery discovered that
at close to a thousand dollars a copy,4 this was not a
successful business model. Hence, in 1996, they switched
over to a plan of selling enterprise licenses of customized
versions of the product for big companies having a large
group of formulators. (Melanson Trial Deposition at 91 –
96) This model continued for the balance of the time
Melanson and Sottery worked together, i.e., until late-
1999.
After Melanson and Sottery stopped working together,
Sottery and his IMS software development team designed an
entirely new software product, known as “Formulation
3 While Supplier CD was Sottery’s product, Melanson was
involved in creating the software “front-end” that permitted the
user to search this collection of raw materials. Melanson also
digitized a large quantity of information from the raw materials
suppliers, creating an electronic version of the “Yellow Pages
for raw materials.” (Sottery Trial Deposition at 47 – 48) Given
that Supplier CD and the formulation software clearly offered a
“symbiotic relationship,” Melanson made it so that Supplier CD
worked seamlessly with the formulation software. (Sottery Trial
Deposition at 48; Melanson Trial Deposition at 36)
4 The Professional edition of Formulation WorkStation was
sold in 1995 for $985. This packet contained a full version of
Formulation WorkStation, a four-disk subscription to Supplier CD,
and Seagate’s report creation and integration software, the
Crystal Report® software. (Melanson at 73 - 74)
Opposition No. 91123830
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WorkStation 6i,” described as an “advanced, Java-based,
platform-neutral formulation solution,” which it continues
to sell to leading clients in the cosmetics and
pharmaceutical industries.
By contrast, while Melanson also continues to offer
software under the “Formulation WorkStation” mark through
Hart Info LLC, it is clear that this application has not
continued to provide robust business for Melanson.
The Business Enterprise:
By the spring of 1994, the formulation software
project was just one of several projects on which Sottery
and Melanson were then collaborating. These other projects
– separate from the enterprise involving the applied-for
mark – included an Elizabeth Arden project variously
referred to in this record as “custom foundations,” “shade
ID,” and/or “color probe” projects (Sottery Trial
Deposition at 39; Melanson Discovery Deposition at 27 –
32); imaging work for Chesebrough-Ponds; Unilever’s Counter
2000 (also an Elizabeth Arden Company); work on Sottery’s
Supplier CD program (Melanson Discovery Deposition at 33;
Sottery Trial Deposition at 48), etc. In each of these
other IMS projects, it was Sottery’s practice from the
Opposition No. 91123830
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outset to pay Melanson an hourly fee as a contract software
developer.5
Nonetheless, the majority of the evidence in this case
pertains to the formulation software sold under the mark
that is at issue in this case, and naturally, that is our
focus as well.
By the time Melanson and Sottery began their
collaborations in 1994, Melanson had demonstrated his
expertise in writing software and possessed a promising
software product. On the other hand, Sottery had better
contacts in the target industries – having appeared
regularly at seminars and trade shows around the world. By
all indications, IMS, the business Sottery founded in 1992,
had succeeded to the point that he had substantially more
resources at his disposal. Because Melanson was aware that
Sottery did a variety of presentations at professional
seminars and was well known within the product raw
materials and cosmetic industries, he reasoned that Sottery
could provide marketing support needed to bring his
evolving software product to market. (Melanson Trial
Deposition at 20 – 21)
5 Payment from IMS to Melanson for this work is included in
annual payment figures discussed infra (at p. 20, footnote 12).
Opposition No. 91123830
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Melanson testified that in his earliest discussions
with Sottery about his formulation software, they agreed
that bundling their respective products to meet key needs
in the personal care products industry was the best way for
two small companies to improve the profitability of each.
(Melanson at 65, 68) Sottery agreed with Melanson that it
would be advantageous for the two of them to pool their
resources, arguing that the only way to gain customers from
among international firms like Unilever, P&G, Clairol,
Revlon, et al., was to appear as large as possible – having
“more legs under the table.” (Sottery Discovery Deposition
at 135) As the record shows, however, this general
agreement of cooperation never led to conversations where
the parties discussed or contemplated the legal
implications of their evolving enterprise. (Sottery
Discovery Deposition at 180 – 181)
Absent any working version of the software, Sottery
discussed with Melanson in a January 1994 telephone
conversation his suggestion of preparing a presentation for
the next Suppliers Day trade show of The Society of
Cosmetic Chemists (SCC). (Applicant’s Trial Exhibit #31)
This was an event at which Sottery had appeared in previous
years. Accordingly, between January and May of 1994,
Melanson and Sottery worked together to prepare a
Opposition No. 91123830
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multimedia demonstration about the overall functionalities
to be incorporated into the software. For example, Sottery
and IMS employees collected some electronic images and
shipped them to Melanson. Melanson designed mockups of the
future screens typical in a Windows environment. (Melanson
Trial Deposition at 22 – 25; Opposer’s Trial Exhibit #2;
Sottery Trial Deposition at 28 - 33)
Sottery had been appearing at trade shows for years,
and it seems clear that IMS paid for all the costs
associated with having this SCC Suppliers Day booth in May
1994, where the formulation software product was prominent
among the products and services Sottery was promoting.
(Sottery Trial Deposition at 33 – 35)
Based upon positive feedback at the SCC Suppliers Day
booth, Sottery continued to promote this evolving,
developing project to key clients in the international
cosmetics industry through World Formulation Courses he
conducted in June 1994 with Gerdhard Dahms in the United
States, Sydney, Australia and in London, England. (Sottery
Trial Deposition at 38 – 40; Opposer’s Trial Exhibit #34)
Sottery determined at this stage that he was willing to put
IMS resources behind the product to make it successful.
Clearly, when Sottery returned from his international
tour at the end of June 1994, no marketable software
Opposition No. 91123830
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program existed. Melanson was responsible for porting over
all the features from the old “Process Helper” software
into a Windows environment, and for designing the raw
materials database so that it could be accessed from the
formulation software. Then Sottery and his colleagues at
IMS played a key role in identifying the additional
features and capabilities that would have to be
incorporated into the new software – ideas that they had
gleaned from their network of formulation experts from
around the world. After Melanson did this additional
programming, including the coding of the features Sottery
had identified as the “hot buttons” necessary to make the
program marketable, the functional but rough program was
alpha tested by IMS personnel, including Sottery, as well
as by Melanson. Melanson then remedied the problems that
members of this group had identified. Sottery and IMS
continued to have sessions with leading companies in the
personal care industry and with raw materials companies
from around the world to identify further requirements from
these prospective users. Melanson was responsible for
putting together a users’ manual. Then Sottery recruited
formulation experts from among the target user audience to
serve as beta testers for the evolving software in early
Opposition No. 91123830
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1995.6 Sottery’s group was then involved in going onsite to
these various companies to install the software on their
computers and to provide training for the users. Although
orders for these first software packets were taken in
December 1994 and then invoiced in January 1995, none was
shipped until May or June of 1995, as this is when all the
problems discovered in testing were finally resolved.
(Sottery Trial Deposition at 78 –79)
While Melanson and Sottery had ongoing discussions
during 1994 about the role each of them would play in
bringing this product to market and how Sottery would be
compensated for his contributions to the project, the exact
terms of the relationship had clearly not been agreed upon
or formalized in May of 1994. (Sottery Trial Deposition at
41; Melanson Trial Deposition at 30, 31 & 35)
Consistent with this lack of definition or agreement
on the nature of the relationship in 1994, Melanson’s fax
to Sottery of November 3, 1994 shows a terse brainstorming
6 Based upon Sottery’s contacts at the December 1994 SCC
Annual meeting in New York City, the first sales were made to
Presperse, Inc. – a supplier of raw materials to the personal
care industry. (Sottery Trial Deposition at 70 –72; Applicant’s
Trial Exhibit #44), and to Stepan (Sottery Trial Deposition at 74
– 75; Applicant’s Trial Exhibits ##45 & 46). See also Melanson
letter to Blaine Byers of Stepan Company dated January 20, 1995
(Melanson Trial Deposition at 76; Opposer’s Trial Exhibit #18),
and Melanson letter to Phil Thomas of Presperse Inc. dated
February 28, 1995 (Melanson Trial Deposition at 77; Opposer’s
Trial Exhibit #19).
Opposition No. 91123830
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list of “key activities” that Melanson suggested would be
necessary to bring this product to market (Melanson Trial
Deposition at 32 – 33; Opposer’s Trial Exhibit #8),7
questioning which ones Sottery felt IMS would be
responsible for and what his “terms are for compensation.”
(Opposer’s Trial Exhibit #7) It is not clear from the
record which, if any, of Melanson’s listed activities
Sottery accepted for himself, but as to compensation for
these shrink-wrap versions of the formulation software,
Melanson and Sottery were “talking about splitting the
expenses and then splitting the revenues 50:50.” (Sottery
Trial Deposition at 41)8
Very early in this evolving relationship, it is clear
that Melanson and Sottery had different ideas about the
nature of this conjoint endeavor. In November 1994,
Melanson envisioned collaboration where each party would
retain a separate identity while Sottery envisioned a more
complete melding of identities for purposes of marketing
this formulation software. Sottery reasoned that it was
“foolishness” for Melanson’s enterprise, Hart Information
7 We note that this “Key Activities” listing used “Formulator
Pro” as the working mark for this product.
8 Similarly, inasmuch as Melanson was to provide technical
support for Suppliers CD and receive 50% of the revenue, Sottery
would provide sales and marketing support and receive 50% of the
revenue (Melanson at 34)
Opposition No. 91123830
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Systems, to try to sell software in the personal care
industry where no one knew anything about Melanson or Hart.
(Sottery Trial Deposition at 90) In fact, it was in this
context that Sottery discussed the creation of a third
company, “Inno-Vision,” to be owned jointly by Sottery and
Melanson. This company would focus on the formulation
software and various imaging projects. (Sottery Trial
Deposition at 39; Sottery Discovery Deposition at 63)
By early 1995, Sottery and Melanson had created
business cards, envelopes and folders for their joint use
in promoting Formulation WorkStation9 and Supplier CD.
(Opposer’s Trial Exhibits ##11a, 11b & 11c) Similarly,
letterhead used on a letter of June 7, 1996 from IMS
employee Liam Murray reflected that this enterprise was
being touted as “An IMS Inc./Hart Info System Joint
Venture.” (Opposer’s Trial Exhibits #12) This particular
language was chosen by Sottery, shortened from “A Joint
Venture with Innovative Measurement Solutions, Inc. & Hart
Info Systems.” (Sottery Trial Deposition at 64 – 65;
Applicant’s Trial Exhibit #40)
9 The details about the adoption and use of this trademark by
the enterprise will be discussed more fully in the following
section (Intellectual Property – the Trademark).
Opposition No. 91123830
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Sottery continued during 1995 to demonstrate
Formulation WorkStation at a number of trade shows directed
to personal care and pharmaceutical organizations: In-
Cosmetics Europe (April), SCC Suppliers Day (May), HBA
Global Expo (June) and the SCC Annual Meeting (December),
as well as to biennial sessions of the International
Federated Society of Cosmetic Chemists (IFSCC) and the SCC
Sunscreen Symposium. (Sottery Trial Deposition at 81 –83)
In fact, over the period of their collaboration, Sottery
testified that IMS paid the costs for demonstration booths
at thirty-two different trade shows promoting Formulation
workStation. At each, the IMS corporate logo was displayed
prominently on these booths while Hart’s company logo was
never placed on any of the booths. (Sottery Trial
Deposition at 84 – 86)
The record contains one near-contemporaneous statement
in a published article referring to the creation of this
“joint venture.” An article Sottery and Melanson co-
authored10 (entitled “New Software and CD-ROM Based
Technology Tools for Today’s Formulator”) that appeared in
10 Other co-authors of this article included Liam A. Murray
and Jorge H. Jaramillo – both then employees of IMS. From the
contents of the submitted manuscript, this article evidently
appeared in Cosmetic and Toiletries Manufacture Worldwide in
late-1995 or early-1996.
Opposition No. 91123830
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the Cosmetic and Toiletries Manufacture Worldwide magazine,
contained the following sentence:
In 1994, IMS Inc. (Milford, CT USA) and Hart
Info Systems (Alexandria, KY USA) entered
into a joint venture to create
infrastructure for the personal care
industry…
(Melanson Trial Deposition at 66 – 68; Opposer’s Trial
Exhibit #13)
Consistent with the agreed-upon 50:50 split of
proceeds, records from Melanson for the periods of June
1995 through May 1996 and for January and February 1997
reflect an accounting of Hart’s production, shipment and
sale of these products along with the amounts remitted to
IMS. (Melanson Trial Deposition at 78 – 84; Opposer’s
Trial Exhibits ##16 & 21)
However, given the effort involved in producing,
selling, and fulfilling orders for the shrink-wrap
packages, Melanson and Sottery agreed this approach was not
working and could not meet revenues as anticipated.
(Sottery Trial Deposition at 104 – 105) Subsequent
discussions between Melanson and Sottery led to the
conclusion that a better business model was to focus on
customizing the product for big companies having a large
group of formulators. (Melanson Trial Deposition at 91 –
95) For the early shrink-wrap versions of the software,
Opposition No. 91123830
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both Hart and IMS collected money from the clients. With
these later versions (beginning in 1996), where the
emphasis was on selling enterprise licenses, IMS would bill
the customers for the cost of the contracted work, would
collect all the fees associated with licensing this
software (Sottery Trial Deposition at 103), and then
Melanson would invoice IMS for his efforts. (Melanson
Trial Deposition at 95 – 96)
It was at this point that Sottery recalls a change in
the nature of the relationship. Sottery testified that in
this 1995 to 1996 time frame, Melanson was so dissatisfied
with the revenues from Formulation WorkStation that he was
no longer willing to contribute toward any promotional
activities or other expenditures required to build the
brand. According to Sottery, Melanson wanted to approach
this project as they did other IMS projects, earning $100
per hour as a contract programmer as well as getting full
reimbursement for any of his travel expenses. (Sottery
Trial Deposition at 105 – 106) However, this seemingly
critical change in their relationship was never
memorialized; moreover, Melanson’s version of events as
presented at trial disputes any such change at this
juncture in the nature of their relationship.
Opposition No. 91123830
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During the period of 1996 to 1998, Sottery and
Melanson continued to hold themselves out to potential
clients as a single enterprise made up of two companies.11
Furthermore, the record does not reflect any open discord
between Melanson and Sottery during this period. However,
it is clear in retrospect that Sottery had serious
misgivings about whether this was still a 50:50
proposition. Sottery increasingly viewed Melanson as a
subordinate, not as an equal. Sottery viewed himself as
the “team leader” because “I was responsible for basically
generating the funding for everything that happened.”
(Sottery Discovery Deposition at 135). In fact, Sottery
testified that IMS put almost a million dollars into the
development and marketing of Formulation WorkStation over
the years: Melanson programming ($300,000); quality
assurance testing ($150,000); trade shows and other
11 Bob Slotkin, a technology information scientist for Clairol
was part of a team that chose Formulation WorkStation as the
formulation tool for Clairol in 1998, and then served as project
manager on behalf of Clairol. (Slotkin Trial Deposition at 4, 6
- 8) When narrowing the field for possible vendors, Slotkin
testified that in the final competition between the two
finalists, Melanson and Sottery assured Clairol that despite the
fact they were two companies, Clairol was to treat them as a
single enterprise in delivering the formulation management
software. (Slotkin Trial Deposition at 34) Because this
initiative faced several critical internal reviews within
Clairol, the statement of work changed several times during 1999.
(Applicant’ Trial Exhibit #72) Subsequently, IMS alone continued
this relationship with Clairol, moving in fits and starts through
2001 toward a small pilot project at the time testimony closed in
this case in October 2002. (Slotkin Trial Deposition at 23 – 24)
Opposition No. 91123830
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marketing activities ($180,000); Sottery and IMS staff time
(hundreds of thousands of dollars). (Sottery Trial
Deposition at 102 – 103) And while it is clear that
Melanson was generating other revenues for IMS, Sottery was
indeed paying significant sums of money to Melanson as a
contract employee, peaking in 1997:
Year IMS payments to
Melanson12
1995 $ 80,010
1996 $ 129,531
1997 $ 265,949
1998 $ 193,189
1999 $ 145,092
2000 $ 84,480
IMS work with Revlon in 1999 on formulation management
provides an example of the first signs of open discord.
For example, Melanson raised concern about contract
language in a contract between IMS and Revlon (January
1999) referring to Formulation WorkStation as “IMS
Technology.” Barry Baerg of Revlon testified that later in
1999, Melanson told Baerg that he [Melanson] would not work
12 The data in this table is drawn from IRS Form 1099-Misc.
for the listed years. (Applicant’s Trial Exhibit 30)
Opposition No. 91123830
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on the Revlon project any further because he was not being
paid by IMS.13
The record shows that Melanson did significant work
for IMS on Elizabeth Arden, Warner-Lambert, and Revlon
projects, submitting monthly invoices to IMS for the hours
he had worked on these projects during any given month.
(Sottery Trial Deposition at 107 – 110) Yet, as the
disagreements intensified over levels of effort on joint
13 Barry Baerg of Revlon met Sottery at SCC Suppliers Day in
1995 and learned of Formulation WorkStation software. (Baerg
Trial Deposition at 6) Revlon selected IMS as the vendor for its
formula management system in March 1998 with approval and kick-
off in the fall of 1998. (Baerg Trial Deposition at 12 - 13)
The contract between IMS and Revlon (~ January 1999)
contained the following language:
WHEREAS, REVLON desires to license from IMS, and IMS
desires to license to REVLON, IMS’ Formulation
WorkStation and Supplier CD (the “IMS Technology”) in
accordance with the License Addendum attached hereto
as Addendum A (the “License Addendum”); …
(Applicant’s Trial Exhibit #71) Melanson testified that this was
inconsistent with language drafted for earlier client contracts,
and questioned Sottery about this change. According to Melanson,
Sottery told him this was merely to distinguish between the
rights of Revlon and of IMS, not to distinguish between the
ownership rights of IMS and Hart. (Melanson Rebuttal Trial
Testimony at 9 – 11)
But later in 1999, the software installation at Revlon ran
into quality control problems – perhaps due to the problems
between two computer platforms – Oracle and Domino.com. At that
juncture, Baerg became aware of the problems between Hart and
IMS. According to Baerg, he had a telephone conversation with
Melanson who said he could not work on the Revlon project any
further because he was not being paid. (Baerg Trial Deposition
at 18 - 19) In March 2000, Melanson agreed with Baerg that Hart
would put the Formulation WorkStation source code into escrow
(Applicant’s Trial Exhibit #82), although it seems Revlon never
accepted this release of the software. (Baerg Trial Deposition
at 39) Baerg had no more working relationships with Melanson or
Hart, and IMS implemented its Formulation WorkStation 6i between
August 2000 and April 2001. (Baerg Trial Deposition at 20 - 21)
Opposition No. 91123830
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deliverables, over intellectual property rights, etc.,
Sottery testified that Melanson was refusing to provide bug
fixes for software they had provided to these clients
(Sottery Trial Deposition at 101), while Melanson testified
that Sottery was withholding payment from Melanson.
The record shows that even their attempts to resolve
disagreements over a relationship gone sour may well have
added confusion to the parties’ views of their respective
intellectual property rights. For example, Sottery
testified that Melanson was willing in 1999 to hang onto
his rights in the source code while relinquishing any
rights he had in the Formulation WorkStation trademark.
(Sottery Trial Deposition at 100 – 101) In his testimony,
Melanson disagreed, saying that in the context of trying to
work out a settlement between them, he recalled that
Sottery wanted to work out disposition of the brand name as
well as the underlying product. Melanson felt he was “over
a barrel,” and in order to get payment for his past
development services and to ensure that Sottery would not
attack Hart’s ownership of the underlying product, Melanson
was willing to offer IMS the brand as part of that
settlement. No such agreement was ever reached between the
parties. (Melanson Rebuttal Trial Testimony at 10 – 13)
Opposition No. 91123830
- 23 -
Then, according to the exchanges of May 1, 2000,
Melanson agreed to provide the fixes needed by their
clients and Sottery sent Melanson a check for the amounts
that had been withheld – an amount that matches the total
payment to Melanson from IMS for the year 2000. (Melanson
Trial Deposition at 128 – 129; Opposer’s Trial Exhibit # 27
– underlining for emphasis in original)
From: Dr. John P. Sottery
To: John Melanson
Sent: Monday, May 01, 2000 4:45 PM
Subject: FedEX Tracking Number for the Check

JD,

As you and I discussed, it is critical to the good reputation that both IMS
and Hart have worked so hard to establish in this industry, that we continue
to support key clients (Arden, Warner-Lambert, Revlon, etc.), while we
simultaneously work to reach agreement on how our two companies will
collaborate in the future.

I was encouraged by our conversation today and have sent a check for
$84,480 via FedEx ( … set for delivery on Tuesday) in reliance on our
mutual understanding that we will proceed in good faith to accomplish the
Warner-Lambert, Revlon and Arden items below:
…
As you said in our discussion, the past is over, it’s the future that really
matters. In regard to how we work together in the future, we are committed
to remaining flexible and finding a win-win approach for collaborations
between IMS and Hart…

Take care,

Sot
The Intellectual Property - Source Codes:
Melanson testified that Sottery requested on at least
three different occasions that IMS have access to the
source code for the formulation software. On each
occasion, Melanson said he adamantly refused to provide IMS
Opposition No. 91123830
- 24 -
or Sottery with his source codes. (Melanson Trial
Deposition at 70 – 72) As noted above, when the
relationship ended, in trying to reach a settlement
agreement, one of Melanson’s primary concerns was his right
to total and exclusive ownership of the underlying product,
including his source codes. It appears that IMS never got
these codes, and IMS instead created a next-generation
formulation management software product without resort to
any of Melanson’s underlying codes.
The Intellectual Property - The Trademark
The DOS-based formulation software that Melanson
designed while working at P&G was known as “Process
Helper.” (Melanson Trial Deposition at 6, 9 & 17) Upon
leaving P&G, he ported over this DOS-based formulation
software to a Windows-based application, and his earliest
marketing pieces in the record show that he was using the
name “Formulator Pro” and “Formulator Pro for Windows.”
(Melanson Trial Deposition at 16- 17; Opposer’s Exhibit #1;
Sottery Trial Deposition at 19 – 20)
Mockups of the future screens from the multimedia
presentation (i.e., the slides demonstrating the projected
functionalities of the software in May 1994) contained the
designation “Hart Information Systems Formulation Station”
Opposition No. 91123830
- 25 -
in the headers. Some places in the script for the computer
demonstration (Opposer’s Exhibit 3) and in Melanson’s
follow-up letters to interested viewers (Opposer’s Exhibit
#5), show the term “Formulation Station” in initial upper-
case letters in the form of a trademark. On the other
hand, in other places in the script for the computer
demonstration, it is also used repeatedly in lower-case
letters (“formulation station”) in a seemingly generic
fashion. (Opposer’s Exhibit 3)
Sottery testified that early in their discussions
about Melanson’s formulation software, he found both of
Melanson’s proposed marks to be unsatisfactory –
“Formulator Pro” was “not memorable” and “Formulation
Station” was “weak.” (Sottery Trial Deposition at 21, 23)
He claims that he coined the term “Formulation WorkStation”
in May of 1994 and then over the course of months of
persuasion, even “extensive lobbying” (Sottery Discovery
Deposition at 124), finally convinced Melanson to adopt
this trademark. (Sottery Trial Deposition at 21 – 24)14 By
contrast, Melanson testified that Sottery may well have
14 Note Sottery’s hand-written notation in April or May of
1994 in his personal organizer where he refers to “Formulation
WorkStation” as one of a list of “Hart/IMS projects.” (Sottery
Discovery Deposition at 52; Applicant’s Discovery Exhibit #1;
Sottery Trial Deposition at 37 – 39; Applicant’s Trial Exhibit
#34)
Opposition No. 91123830
- 26 -
reacted to Melanson’s on-going suggestions for product
names but did not coin the name Formulation WorkStation.
(Melanson Trial Deposition at 25 – 26) Melanson claims
that he personally conceived of the name Formulation
WorkStation “some time prior to October of 1994” and that
Sottery is “mistaken” in his claims to have coined the
name. (Opposer’s responses to Applicant’s first set of
interrogatories, Interrogatory #3; Melanson Trial
Deposition at 39, 49; Melanson Discovery Deposition at 188
- 189) He testified that he chose this name because he
“liked the way it sounded” and that the FWS initialism
“made for a file name extension [.fws] that was readily
associated with the product.” (Melanson Trial Deposition
at 49) Melanson stated that his suggestion that his
company (“Hart”) remain the sole owner of the Formulation
WorkStation trademark and that IMS remain as sole owner of
the Suppliers CD trademark was never objected to by
Sottery. (Melanson Trial Deposition at 40) Sottery,
however, stated that he would never have agreed to such a
division, especially in light of his strongly-held
contention that he had coined the Formulation WorkStation
mark. (Sottery Discovery Deposition at 125)
Irrespective of who coined “Formulation WorkStation”
as the product’s trademark, by November 1994 Melanson had
Opposition No. 91123830
- 27 -
clearly adopted the “Formulation WorkStation” mark for his
formulation software, and his proposed flyer expressly
states that “Formulation WorkStation is a trademark of Hart
Information Systems.”15 This statement was repeated in
late-December 1994 in a somewhat later rendition of the
November promotional piece for Formulation WorkStation.
(Melanson Trial Deposition at 46 – 48; Opposer’s Trial
Exhibit #9)
In his November 1994 fax cover letter to Sottery,
Melanson envisioned a collaboration where Hart’s
“WorkStation” product and IMS’s “Suppliers CD” would be
bundled but each would retain their own separate
identities. Melanson testified that he and Sottery
discussed this concept as well, and that while Sottery
envisioned a more complete melding of identities, Melanson
never had any interest in a common entity or identity in
the marketplace. (Melanson Trial Deposition at 35 – 37)
Sottery responded to Melanson’s emphasis on the Hart
identity by testifying that he “thought it was foolishness,
because no one in the personal care industry know who Hart
was, and that if we tried to sell software under the Hart
15 This flyer was included with Melanson’s November 1994 fax
to Sottery. (Melanson Trial Deposition at 32 – 33; Opposer’s
Trial Exhibit #8)
Opposition No. 91123830
- 28 -
name, that the software would be basically not successful
because people didn’t want to buy software from a company
that they don’t know anything about.” (Sottery Trial
Deposition at 90)
Later in November 1994, Melanson’s wife, Judi
Melanson, who was President of Hart, sent a letter to
Sottery explicitly and unequivocally rejecting joint
branding between Hart and IMS. (Melanson Trial Deposition
at 41 – 43; Opposer’s Trial Exhibit #15)
As noted earlier, Sottery even envisioned the creation
of a jointly-owned company, “Inno-Vision,” that would focus
on various imaging projects (Sottery Trial Deposition at
39; Sottery Discovery Deposition at 63), although Melanson
recalled that this name was proposed to be a trademark for
their bundled software products (Formulation WorkStation
and Supplier CD). (Melanson Trial Deposition at 37, 40,
41)
Melanson meticulously included trademark notices in
everything he drafted. For example, the installation
guides that accompanied all Formulation WorkStation and
Supplier CD software packages contained notifications that
Formulation WorkStation is a trademark of Hart Information
Systems and that Supplier CD is a trademark of Innovative
Measurement Systems, Inc. (Melanson Trial Deposition at 84
Opposition No. 91123830
- 29 -
– 88; Opposer’s Trial Exhibit #22) Melanson testified that
Sottery never objected to this language. The Formulation
WorkStation software (version 1.2, 1995) User’s Guide
continued the same prominent notation on the frontispiece
page, namely, that “Formulation WorkStation is a trademark
of Hart Info Systems.” (Melanson Trial Deposition at 89 –
91; Opposer’s Trial Exhibit #23)
As had been the case with the first four editions, the
electronic contents of the 5th Edition of Supplier CD having
Formulation WorkStation software (March 1997)16 contained
Melanson’s programmed notation that “Formulation
WorkStation is a trademark of Hart Info Systems.” However,
when doing a demonstration, Sottery discovered this claim
and felt that the mark was owned by IMS and Hart together,
and hence instructed that the notice be changed in
subsequent editions. (Sottery Trial Deposition at 98 –
100) Accordingly, the 6th Edition (April 1998), 7th Edition
(August 1998) and 8th Edition (April 1999) contained the
statement that “Formulation WorkStation is a trademark of
Innovative Measurement Systems Inc., and Hart Info
Systems.” Finally, after the major disagreements (during
the mid-to latter-part of 1999) over who owned what
Opposition No. 91123830
- 30 -
portions of the intellectual property rights associated
with this software (the source code, copyrights,
trademarks, etc.), Sottery directed that the 9th Edition
(March 2000) include Formulation WorkStation in the listing
of trademarks owned exclusively by Innovative Measurement
Systems Inc. (Sottery Trial Deposition at 99 – 101)
Melanson testified that he was unaware of these changed
notations (e.g., from April 1998 to March 2000) until the
time of this litigation, and that neither Sottery nor
anyone from IMS ever discussed these changed legal notices
with him. (Melanson Trial Deposition at 118 – 123;
Opposer’s Trial Exhibits ##24a, 24d & 24f) In fact,
Melanson testified that he did not realize there was an
issue with the ownership of the Formulation WorkStation
trademark until his / Hart’s federal trademark application
was rejected based upon IMS’s earlier filed application.17
After Sottery and Melanson agreed in the fall of 1994
to adopt “Formulation WorkStation” as the trademark for the
software product, Sottery pushed for the adoption of a
16 As to other intellectual property notifications, the
Supplier CD, 5th Edition bears a copyright notice of 1997, listing
“IMS, Inc./Hart Info Systems” as the copyright owners.
17 Hart’s application serial no. 75740457 was filed on July
27, 1999 (six weeks after the involved application was filed by
IMS) based upon Melanson’s claim of use anywhere as of 1991 and
use in commerce as of 1992. The Office action notifying him of
IMS’s earlier-filed application was mailed on October 20, 1999.
Opposition No. 91123830
- 31 -
composite mark (also referred to by the parties throughout
this record as the “logo”). Sottery testified that he
designed the logo that is the subject of the instant
trademark application. (Sottery Trial Deposition at 49)
By contrast, Melanson testified that the design of the logo
was a collaborative and iterative process, but that he had
the final say in approving what would be adopted.
Sue Murray was the graphics designer Sottery hired to
work on this project. She is the wife of Liam Murray, who
was at that time one of IMS’s principal employees.
(Melanson Trial Deposition at 51 – 53) The record shows
that in January 1995, Ms. Murray was faxing her work
products to Sottery. (Applicant’s Trial Exhibit #36) From
his undated, personal organizer notes that purport to be a
record of a telephone conversation with Ms. Murray, Sottery
clearly directed her as to the look and feel of the logo,
with attention to upper and lower case letters, font
selection and relative size of lettering, the slogan “The
Workflow Software for Formulators,” changing the letter “u”
into a beaker, and the placement of a representation of a
disk drive in a “more solid looking” design. (Sottery
Trial Deposition at 51 – 62; Applicant’s Trial Exhibits
##36 – 39; Sue Murray’s Trial Deposition at 9 - 10)
Opposition No. 91123830
- 32 -
At the same time, Melanson sent his own input related
to the logo design to Ms. Murray and selected his
preferences from among her evolving work products in faxed
communications with Sottery. (Melanson Trial Deposition at
53 – 57; Opposer’s Trial Exhibits ##10a and 10c) However,
Sottery testified that Melanson was simply one among half-
a-dozen team members whose opinion he sought in designing
the logo. In fact, Sottery recalled that Melanson thought
they were spending too much time and money on this process.
(Sottery at 65 – 66) He dismissed the role Melanson played
in this particular process, testifying that various graphic
ideas generated by Melanson were never employed in the
marketing and promotional materials that were eventually
used. (Sottery Trial Deposition at 68; Applicant’s Trial
Exhibit #41 - also Opposer’s Trial Exhibits #10a)
As an indication of the importance of his input in
creating this logo, Melanson testified that he wanted to
use the color blue for substantial portions of the
Formulation WorkStation mark to match the blue in the Hart
Info System mark, despite the fact that blue was clearly
not Sottery’s preference. Sottery described this blue as a
strong color, but just as significantly, a practical choice
minimizing the number of colors in order to keep down the
costs of printing. (Sottery Trial Deposition at 62 – 64)
Opposition No. 91123830
- 33 -
At the same time, Ms. Murray designed the Supplier CD logo
and the IMS house mark, both incorporating the same shade
of green. (Melanson Trial Deposition at 60 –63: Opposer’s
Trial Exhibits ##11a, 11b & 11c)
As to who paid for the costs associated with hiring a
graphic designer, the invoice from Susan Murray Designs to
John Sottery of January 30, 1995 (Sottery Trial Deposition
at 69 – 70; Applicant’s Trial Exhibit #42) was paid by IMS,
but Melanson testified that he paid half of these charges,
although two of the three logos were clearly identified
with IMS. (Melanson Trial Deposition at 62)
Melanson testified that he consistently stated to
Sottery that Formulation WorkStation was his/Hart’s
trademark, and that a statement to that effect was printed
on all the early software versions of the product.
However, Sottery testified that he never would have spent
all the money and effort that he did to build this brand
around the world if he had thought this was a property of
Hart Information Systems. (Sottery Trial Deposition at 91)
Currently, both IMS (applicant) and Hart (opposer) are
continuing separately to use the same composite mark.
Appearing on printouts from Hart’s homepage is the
composite mark that is the focus of this action:
Opposition No. 91123830
- 34 -
18
Similarly, IMS’s homepage demonstrates that IMS has added
its “6i” designation in a circle as a superscript over the
letter “n” in the word Formulation:
19
Analysis:
Even though the business venture of Melanson and
Sottery was never formally established by way of a written
document, given the incidents of this common undertaking as
detailed above, we find that the laws of Kentucky20 and of
Connecticut21 support the constructive creation of a joint
venture.22 Melanson and Sottery combined their respective
18 Melanson Trial Deposition at 133; Opposer’s Trial Exhibit #
28.
19 Melanson Trial Deposition at 134 – 135; Opposer’s Trial
Exhibit # 29. While this image was not proper subject matter for
applicant’s notice of reliance (see footnote 2, supra), it was
correctly introduced into evidence as an exhibit introduced as
part of Melanson’s trial testimony.
20 In 1994, Melanson’s company, Hart Information Systems, was
a Kentucky sole proprietorship. Hart Information Systems was
later reorganized as Hart Info. LLC, a limited liability
corporation organized under the laws of Kentucky.
21 IMS is a corporation of the State of Connecticut.
22 See Tencon Corporation v. Ralph E. Mills & Groman, Inc.,
186 F.Supp 891 (E.D. Ky 1960) [need for a common undertaking in
which there is a combination of money, efforts, skill or
Opposition No. 91123830
- 35 -
efforts, skills and knowledge for a common undertaking,
namely, developing and marketing a formulation software
product. Melanson brought to the table an idea for a
commercially-viable project and the programming ability to
make this computer application function in ever-changing
situations. Sottery provided the critical contacts to key
players in the relevant industries as well as the marketing
acumen and financial resources to make it happen. Their
joint venture started in 1994.
By contrast, we cannot point to any clear lines of
demarcation when this joint venture terminated. In his
testimony, Sottery claims it was 1996. Specifically,
Sottery testified that in 1996, Melanson became nothing
more to this venture than a contract programmer. However,
as noted earlier, there are clear indications that both
parties continued to hold themselves out as joint venturers
into 1999.
If not by the time of the filing of the instant
application, then certainly by the time that this dispute
was presented to the United States Patent and Trademark
Office, the implied contractual relationship growing out of
knowledge, joint control and responsibility of the undertaking];
and Willow Funding Company, L.P. v. Grencom Associates et al.,
2000 Conn. Super. Ct. LEXIS 194 (2000) [two parties combining
their property, money, efforts, skill or knowledge in a common
undertaking].
Opposition No. 91123830
- 36 -
this former joint venture had terminated. After Melanson
completed work on several outstanding projects and Sottery
sent him payment for his services, the most vexing issues
upon dissolution of the joint venture seem to have revolved
around intellectual property rights. Both applicant and
opposer have continued to press their respective and
mutually-exclusive claims to the same trademark.
It is clear from the entire record of this proceeding
that the parties to this joint venture never agreed upon
the ownership of this important intangible asset.
Nonetheless, we find that at the time of its adoption and
early use, the mark was owned by the joint venture. In
spite of Melanson’s claims of exclusive ownership of the
mark by Hart in some of his early work products (which
appear to have enjoyed a limited distribution), this
trademark was not something he brought to the joint
venture. The Formulation WorkStation trademark was not
developed until Sottery and Melanson’s common undertaking
was in force.
The overall record is convincing that Sottery coined
the trademark and played a leading role in designing the
composite mark involved herein. From his testimony, the
detailed sequence of logical steps that led him to the
selection of this trademark were much more convincing than
Opposition No. 91123830
- 37 -
those offered by Melanson. Furthermore, contemporaneous
records support Sottery’s having initiated most of the
ideas around all the components of the composite mark (the
“logo” design) involved herein. In addition to his being
the public face of this product and the risk-taking
entrepreneur without whose efforts this enterprise would
likely never have happened, his significant initiatives in
developing the mark added to Sottery’s understandable sense
of at least partial ownership of the growing goodwill
associated with this mark. However, we also find that it
was never Sottery’s trademark alone, because between 1994
and 1999, Melanson and Sottery created and maintained a
joint venture that we have determined owned this ever-more-
valuable source identifier, and this mark was an asset of
the joint venture.
Opposer cites to the case of Durango Herald, Inc. v.
Hugh A. Riddle and Riddle Directories, Inc., 719 F.Supp.
941, 11 USPQ2d 1052, 1988 (D. CO. 1988), emphasizing that
in the absence of contractual resolution, the tribunal
should focus on the “history of the parties relations ….”
Opposer points to the fact that Melanson brought the very
idea for the software to the joint venture, and that for
years Sottery allegedly did not object to Melanson’s
repeated claims of trademark ownership.
Opposition No. 91123830
- 38 -
We agree with opposer that we should focus on the
transactions herein in a contractual context.23 Under
principles of contract law, opposer would have us focus on
the question of whether Sottery knew, or had reason to
know, of Melanson’s understanding that the trademark
belonged exclusively to Melanson.24 The overall record
shows that: at various times, Sottery simply disregarded
some of the input offered by his co-venturer and friend (to
each other, they were “Sot” and “J.D.”); he came to view
himself as the “head of the team” because he was assuming
the risk of the venture and supplying all the financing; he
was totally committed to the idea of Hart and IMS
completely melding their respective identities on this
venture; and was much too busy to notice his friend’s
insertion of small, textual trademark notices.25
Taking this enterprise from a mere idea to widespread
application proved to be a fairly large commercial
undertaking. Drawing from his testimony as well as from
23 “… [T]he operative meaning [of an implied contract as
determined by a tribunal] is found in the transaction and its
context rather than in the law or in the usages of people other
than the parties.” Corbin on Contracts §24.2.
24 Cf. Corbin on Contracts §24.2: “… [T]his party [Sottery],
viewed with reference to all the circumstances, knew or had
reason to know the understanding of the other party.”)
25 Opposer should not find this possibility so hard to
believe, as Melanson acknowledges that until the time of this
litigation, he had not noticed the changes in such notices made
by Sottery in April 1998 and March 2000.
Opposition No. 91123830
- 39 -
the overall conduct of the parties (cf. Dolan v. Dolan, 107
Conn. 342, 140 A. 745 (1928)), we find that indeed Sottery
would never have put so much of IMS’s resources into this
joint endeavor had he been faced with a contractual
understanding that the trademark would belong solely to
Melanson upon dissolution of the enterprise.
Similarly, Melanson’s actions clearly show that he did
not have a contractual understanding that this mark would
belong to Sottery upon dissolution of the enterprise.
This fact situation calls for a decision that is not
only consistent with the law of contracts, but also
requires an outcome that is consistent with the laws
designed to prevent confusion among consumers.
As noted by Professor McCarthy, most problems of joint
ownership of marks appear to arise in the wake of the
dissolution of an entity. Unlike tangible assets, a
trademark and the attendant goodwill cannot easily be
apportioned without customer confusion, deception and the
impairment of the mark itself.26 According to Professor
McCarthy, when such a joint enterprise is dissolved and no
contractual provision has been made for disposition of the
26 J.T. McCarthy, McCarthy on Trademarks and Unfair
Competition, §16:42 (4th ed. 2001).
Opposition No. 91123830
- 40 -
mark, the goal should be to prevent multiple, fragmented
trademark use.
We find persuasive the reasoning of the court in
Durango Herald, Inc. supra, which opinion cites with favor
to Professor McCarthy’s treatise:
The public has a significant interest
in preserving the vitality of joint ventures
as a means of innovation and creativity.
The potential that one party to a joint
venture could legally appropriate all the
good will of a joint venture while
inhibiting the ability of other parties to
do the same would discourage innovation.
Participation and trust necessary to the
optimum cooperation between the parties
would be lessened.
The appropriate equitable approach in
this case is to return the parties to equal
advantage upon dissolution of the joint
venture. Because the parties have been
unable to arrive at a mutual distribution of
the trademark, which would inure further
benefit to each, the only benefit each may
take from “DIRECTORY PLUS” is the knowledge
of how to develop successful telephone
directories. It is indeed unfortunate that
elusive independent resolution of this
dispute has forced the court to, in effect,
extinguish a valuable asset produced by
years of hard work, energy and investment of
the parties. The result is necessary,
however, to prevent further irreparable
injury to the parties and continued consumer
confusion.
Durango Herald, Inc. supra.
Consistent with these principles, we conclude that
allowing either party to this joint venture to register
this mark in the wake of dissolution would result in
Opposition No. 91123830
- 41 -
consumer confusion as to source, which would be in
violation of the anti-confusion policy of both state and
federal law. In such an impasse, the unfortunate result of
the parties’ failure to anticipate the problem in advance,
or to settle their disagreements later, means that neither
party has proved exclusive ownership of the trademark.
Unlike a federal court, we obviously cannot determine
rights to use the mark, nor are we able to issue an
injunction. However, as far as our jurisdiction extends
(i.e., to the federal registration of this mark), we find
that absent any future contractual understandings, neither
party is the owner of the mark, and therefore that, insofar
as this proceeding is concerned, applicant is not entitled
to register this mark.27
Accordingly, while we disagree with opposer’s claim
that Hart is the rightful owner of the marks FORMULATION
WORKSTATION or FORMULATION WORKSTATION and design, as
applied to this computer software, we find that the marks
rightfully belonged to the now-terminated joint venture,
27 We are called upon in this proceeding to decide only
whether applicant has the right to register the composite mark
that is the subject of this application. Our findings, however,
could have an effect upon either party’s attempt to register
variations on the logo or the words “Formulation WorkStation”
alone.
Opposition No. 91123830
- 42 -
and hence, that applicant alone is not the rightful owner
of this property.
Decision: The opposition is sustained and
registration to applicant is hereby denied.