UNITED STATES PATENT AND TRADEMARK OFFICE
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`APPLICANT
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`PAPER NO‘
`
`SERIAL NO.
`
`s3::s:s::é‘:as5.
`
`MARK
`
`1
`
`-
`
`ADDRESS:
`Commissioner for Trademarks
`Arlington, VA 22202-3513
`www.uspto.gov
`Ifno fees are enclosed, the address should include the
`words "Box Responses - No Fee."
`
`Please provide inall correspondence:
`1. Filing Date; serial number, mark and
`Applicant's name.
`2. Mailing date ofthis Oflice action.
`3. Examining Attorney's name and
`Law Office number.
`4. Your telephone number and ZIP code.
`
`ADDRESS
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`MAILING DATE
`B 1;; I; 1
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`
`‘ p.ro_1525 (590)
`
`U.S:_D_EPT.2F
`
`PA'T. &TM OFFICE
`
`A PROPER RESPONSE TO THIS OFFICE ACTION MUST BE RECEIVED WITHIN 6
`MONTHS FROM THE DATE OF THIS ACTION IN ORDER TO AVOID ABANDONZWENT.
`For your convenience and to ensure proper handling ofyour response, a label has been enclosed
`Please attach it to the upper right corner ofyour response. Ifthe label is not enclosed, print or zj/pe
`the Trademark Law Office No., Serial No., andMark in the upper right corner ofyour response.
`
`RE: Serial Number: 76/002076
`The assigned examining attorney has reviewed the referenced application and determined the
`following.
`
`Mark is Merely Descriptive
`The examining attorney refuses registration on the Principal Register because the proposed mark
`merely describes the goods. Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP
`section 1209 et seq.
`
`A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. 1052(e)(1), if it
`describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant
`goods.
`In re Gyulqy, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987);
`In re Bed & Breakfast
`Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB
`1984); In re Bright—Crest, Ltd, 204 USPQ 591 (TTAB 1979); TMEP section 1209.0l(b).
`
`The applicant applied to register the mark E-WEAR.
`
`The prefix “E—” means “electrical; electronic.” Acronym Finder copyright ©1988-2000 by
`Mountain Data Systems. (See attachments).
`
`

`
`76/002076
`
`I
`
`.
`
`-2-
`
`O
`
`The word WEAR is defined as, “means clothes suitable for a particular use or clothes of a stated
`type.” Cambridge International Dictionary copyright © 2000 by Cambridge University Press.
`(See attachments).
`’
`.
`
`the mark E-WEAR would be understood as describing a quality, characteristic,
`In this case,
`function,
`feature, purpose or use of the relevant goods, namely, clothes which incorporate
`electronic components, or electronic components which can be worn. Accordingly, the mark is
`refused registration on the Principal Register under Section 2(e)(1).
`
`Alternatively, to the extent that the proposed mark does not describe any aspect of the goods, then
`the idea it conveys would be false because, given the nature of the goods, it is plausible that the
`proposed mark would immediately be understood as describing some aspect of the goods or the
`manner in which the goods are provided.
`
`then the term is deceptively
`If the idea conveyed by the mark is false, and also plausible,
`misdescriptive and is unregistrable under Trademark Act Section 2(e)(1), 15 U.S.C. Section
`1052(e)(1).
`In re Woodward & Lothrop Inc., 4 USPQ2d 1412 (TTAB 1987); In re Ox-Yoke
`Originals, Inc., 222 USPQ 352 (TTAB 1983).
`
`Therefore, to the extent that the proposed mark does not describe any aspect of the goods or the
`manner in which they are provided, as indicated above, the examining attorney concludes that the
`proposed mark would be deceptively misdescriptive and, therefore, in the alternative, registration is
`refused on that basis as Well.
`
`The applicant should also note the following additional ground for refusal.
`
`Likelihood of Confusion
`The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section
`1052(d), because the applicant's mark, when used on or in connection with the identified goods, so
`resembles the mark in US. Registration No. 1845160 as to be likely to cause confiasion, to cause
`mistake, or to deceive. TMEP section 1207. See the enclosed registration.
`
`The examining attorney must analyze each case in two steps to determine whether there is a
`likelihood of COl1fi.lSl0Il. First, the examining attorney must look at the marks themselves for
`similarities in appearance, sound, connotation and commercial impression. In re E. I. DuPont de
`Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Second, the examining attorney
`must compare the goods or services to determine if they are related or if the activities surrounding
`their marketing are such that confusion as to origin is likely. In re August Storck KG, 218 USPQ
`823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB
`1978); Guardian Products Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978).
`
`The applicant applied to register the mark E-WEAR. The registered mark is E WEAR, with
`design.
`
`The applicant’s mark is similar to the registrant’s mark. The applicant’s mark and the registrant’s
`mark share the common elements E and WEAR. The test of likelihood of confiision is not whether
`the marks can be distinguished when subjected to a side-by-side comparison. The issue is whether
`the marks create the same overall impression. Visual Information Institute, Inc. v. Vicon Industries
`
`

`
`76/002076
`
`-3-
`
`Inc., 209 USPQ 179 (TTAB .1980). The focus is on the recollection of the average purchaser who
`normally retains a general rather than specific impression of trademarks. Chemetron Corp. v.
`Morris Coupling & Clamp C0,, 203 USPQ 537 (TTAB 1979); SealedAir Corp. v. Scott Paper Co.,
`190 USPQ 106 (TTAB 1975); TMEP section 1207.01(b).
`
`The goods of the parties need not be identical or directly competitive to find a likelihood of
`confiision.
`They need only be related in some manner, or the conditions surrounding their
`‘ marketing be such, that they could be encountered by the same purchasers under circumstances that
`could give rise to the mistaken belief that the goods come from a common source. In re Martin's
`Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning
`Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984);
`Guardian Products Co., Inc. v. Scott Paper Co.., 200 USPQ 738 (TTAB 1978); In re International
`Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).
`In this case, the applicant’s broad
`and indefinite identification of goods easily encompasses the registrant’s identified goods.
`
`The examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the
`prior registrant.
`In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir.,
`1988).
`W
`'
`
`Potential Citation ofPrioifii/leg_Applications
`
`The examining attorney en oses information regarding pending Application Serial Nos. 75885905,
`75755972, 75743884, 75615245, 75720646, 75772783 and 75742114. The filing dates of the
`referenced applications precede the applicant's filing date. There may be a likelihood of confusion
`between the applicant's mark and the referenced marks under Trademark: Act Section 2(d), 15
`USC. Section 1052(d). If one or more of the referenced applications matures into a registration,
`the examining attorney may refilse registration in this case under Section 2(d). 37 C.F.R. Section
`2.83; TMEP section 1208.01.
`
`Informalities
`
`Although the examining attorney has refused registration, the applicant may respond to the refusal
`to register by submitting evidence and arguments in support of registration.
`If the applicant.
`chooses to respond to the refusal to register, the applicant must also respond to the following
`issues.
`
`Identification of Goods
`
`The identification of goods is unacceptable as indefinite. TMEP section 804. The applicant may
`adopt the following identification; if accurate:
`
`International Class 9
`
`Portable audio products that may be worn, namely, (identify each item by the common
`commercial name, e.g., music compact disc players).
`
`International Class 14
`
`Pendants with an embedded microchip and electronic circuitry for producing sounds; watch"
`straps with an embedded microchip and electronic circuitry for producing sounds.
`
`International Class 25
`
`Wrist bands with an embedded microchip and electronic circuitry for producing sounds.
`
`

`
`76/002076
`
`-4-
`
`Please note that the language in this suggested identification was derived from the “Trademark
`Acceptable Identification of Goods and Services Manua ” which is accessible through the PTO’s
`web site (USPTO.gov). Additionally, although the examining attorney has suggested that the
`identification be amended for purposes of clarity, additions to or enlargement of the scope of the
`identification are not permitted. 37 C.F.R. Section 271(b); TMEP Section 804.09.
`
`Particular Wording Indefinite’ — Requirement for Advertising or Literature
`The wording “wearable portable audio products,” “such as” and “wrist straps” in the identification
`of goods is unacceptable as indefinite. The applicant must “change “such as” to “namely” and
`amend the identification to specify the commercial name of the goods.
`If there is no common
`commercial name for the product, the applicant must describe the product and its intended uses.
`TMEP section 804. The nature of the goods is not clear from the present record.
`In order to allow
`proper consideration of the goods on which the applicant intends to use the mark, the applicant
`must submit samples of advertisements or promotional materials for goods of the same type.
`If
`such materials are not available, the applicant must submit a photograph of similar goods and must
`describe the nature, purpose and channels of trade of the goods on which the applicant has asserted
`a bona fide intent to use the mark.
`37 C.F.R. Section 2.6l(b); TMEP sections 1103.04 and
`1 105 .02.
`1
`1
`
`Reguirements for a Combined Application
`If the applicant prosecutes this application as a combined, or multiple-class, application,
`applicant must comply with each of the following.
`
`the
`
`(1) The applicant must list the goods by international class with the classes listed in
`ascending numerical order. TMEP section 1113.01.
`
`(2) The applicant must submit a filing fee for each international class of goods not covered
`by the fee already paid. 37 CFR. Sections 2.6(a)(1) and 2.86(b); TMEP sections 810.01
`and 1 1 13.01. Effective January 10, 2000, the fee for filing a trademark application is $325
`for each class. This applies to classes added to pending applications as well as to new
`applications filed on or after that date.
`
`If the applicant has any questions or needs assistance in responding to this Office action, please
`telephone the assigned examining attorney.
`
`.7
`/‘V %—/
`
`John Dwyer
`Examining Attorney
`Law Office 103
`
`(703) 308-9103 ext. 220
`
`

`
`AcronymFinder SearchResult
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`htlp://www,AcronymFinder.com/at?‘/.as...m=e&String=exact&search.X=43&search.y=14
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`Your search for e returned 18 hits (most common definition(s) list first)
`
`Electron
`
`Entertainment Television
`
`Espana (Spain) (International Auto Identificatron)
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`Everyone (ESRB)
`
`Total probable error
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`Mflitary e
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`Computer/
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`
`CambridgeInternationalDictionaries
`
`O
`
`http://dictionarycaidge.org/define.asp?KEY=weaI*I%2B0&x=89&y=9
`
`G ra:a.t?rma gm
`
`..
`
`_
`
`um
`
`wee t‘ ’ $ chief]! verb
`Wear (ON
`V
`to have (clothing or jewellery) on your body
`Tracey is wearing a simple black dress made from a cotton and Lycra mix.
`What are you wearing to Caroline's wedding?
`She was complaining that she had nothing to wear to the party.
`Some musicians don't like to wear rings when they're playing.
`He wears glasses for reading. [T]
`
`To wear your hair in a particular style is to have it arranged that way.
`_
`When she's working she wears her hair in a pony—tail.
`You should wear your hair up (=so that it does not hang down) more often - it suits you.
`FIGURATIVE The minister wore a confident smile throughout the interview. [T]
`
`If a person wears their heart on their sleeve they make their feelings and emotions obvious
`rather than hiding them.
`
`In a relationship, a person, esp. a woman, who wears the trousers/Am and Aus wears the
`pants is the one who is in control and who makes decisions for both people.
`Lisa may appear more pliant and easy-going than Brian but I'll tell you she wears the trousers in that
`relationship.
`
`wear pg W95 1' J $ W91»); noun [U]
`The word wear, often used in combination, means clothes suitable for a particular use or
`clothes of a stated type.
`casual wear
`evening wear
`leisure wear
`beachwear
`knitwear
`
`'wer.e—/ aéfiecfive
`33
`Wearable ,/E ‘wee. re.bl ,
`Clothes that are wearable are easy to wear because they are comfortable, acceptable in most
`social situations and look attractive in combination with other clothes.
`Unlike a lot of women's fashion magazines, it features clothes that are both affordable and wearable.
`
`W9aVeV,l£ ‘wearer, $ 'wer.a-/”0Wl[C]
`ln medieval times the sapphire was believed to offer protection to its wearer.
`Clothes, of course, say a lot about the wearer.
`
`‘ 9/12/00 3:45 AM
`
`

`
`h1‘tp://dictionaryxnidge.org/define.asp'?KEY=wear*1%2B0&x=89&y=9
`
`Cambridge International Dictionaries
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`
`I Booksellers | Agthors | Siie help |
`
`© Cambridge University Press 2000
`Cambridge University Press
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`Contact the Press
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`

`
`**~k
`
`User:
`
`jdwyer
`
`*** irial Number: 74326630 **. 9/6/00 3:44:30 PM ***
`
`E
`
`Mark
`
`E WEAR
`
`Goods and Services
`
`G & S: clothing; namely, pants, sweaters, T—shirts,
`US 039.
`IC 025.
`polo shirts, stirrup pants,
`leggings,
`jackets, shirts, vests, shorts,
`skirts, blazers,
`turtlenecks, mock turtlenecks, and blouses. FIRST USE:
`19930901.
`FIRST USE IN COMMERCE: 19930901
`
`*
`Mark Drawing Code
`(3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS
`
`Design Code
`261313 261321
`
`Serial Number
`74326630
`
`Filing Date
`October 28, 1992
`
`Filed ITU
`FILED AS ITU
`
`Publication for Opposition Date
`June 29, 1993
`
`Registration Number
`1845160
`
`Registration Date
`July 12, 1994
`
`Owner Name and Address
`Inc. CORPORATION WASHINGTON P. O. Box 2229 1321
`(REGISTRANT) Nordstrom,
`Second Avenue Seattle WASHINGTON 98111
`
`Assignment Recorded
`ASSIGNMENT RECORDED
`
`Disclaimer Statement
`
`NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "WEAR" APART FROM THE MARK
`AS SHOWN
`
`Type of Mark
`TRADEMARK
`
`*** Search:
`
`7 *** Document Number: 92 ***.
`
`

`
`*** User:
`
`jdwyer
`
`*** Se?‘1 Number: 74326630 ***
`
`Register
`PRINCIPAL
`
`Live Dead Indicator
`LIVE
`
`Attorney of Record
`R. J. Baynham
`
`*** Search:
`
`7 *** Document Number: 92 ***
`
`

`
`*** User:
`
`jdwyer
`
`*** ‘rial Number: 75885905 H. 9/6/00 3:43:12 PM ***
`
`E-SOFTWEAR
`
`Mark
`
`E—SOFTWEAR
`
`Pseudo Mark
`E SOFT WEAR
`
`I Goods and Services
`G & S: CLOTHING FOR MEN AND LADIES, NAMELY SUITS,
`IC 025.
`US O22 039.
`SPORTS COATS, TOP COATS, SLACKS, SHIRTS AND SHORTS
`
`Mark Drawing Code
`(1) TYPED DRAWING
`
`Serial Number
`75885905
`
`Filing Date
`December 30, 1999
`
`Filed ITU
`FILED AS ITU
`
`Owner Name and Address
`
`(APPLICANT) EISENBERG INTERNATIONAL CORP. CORPORATION CALIFORNIA 1350 6th
`Avenue, Suite 3110 New York NEW YORK 10019
`‘
`
`Type of Mark
`TRADEMARK
`
`Register
`PRINCIPAL
`
`Live Dead Indicator
`LIVE
`
`Attorney of Record
`John M. May
`
`*** Search:
`
`7 *** Document Number: 16 ***
`
`

`
`*** fiial Number: 75755972 ***.9/6/O0 3:43:40 PM ***
`
`[Typed Drawing]
`
`*** User:
`
`jdwyer
`
`Mark
`
`E.WEAR
`
`Pseudo Mark
`E WEAR
`
`Goods and Services
`
`tops, shorts,
`G & S: Clothing, namely, shirts,
`US 022 039.
`IC 025.
`dresses, skirts, pants, slacks,
`trousers,
`jeans, sweaters, sweatshirts,
`jackets, coats, socks,
`swim wear, beachwear,
`footwear and hats
`
`Mark Drawing Code
`(1) TYPED DRAWING
`
`Serial Number
`75755972
`
`Filing Date
`July 20, 1999
`
`Filed ITU
`FILED AS ITU
`
`Publication for Opposition Date
`February 15, 2000
`
`Owner Name and Address
`
`(APPLICANT) Read, Randy K.
`Salt Lake City UTAH 84121
`
`Type of Mark
`TRADEMARK
`
`Register
`PRINCIPAL
`
`Live Dead Indicator
`LIVE
`
`Attorney of Record
`Michael E. Mangelson
`
`INDIVIDUAL UNITED STATES 6141 South 2300 East
`
`*** Search:
`
`7 *** Document Numberf 32 ***
`
`

`
`*** User:
`
`jdwyer
`
`Mark
`
`E WARE
`
`Goods and Services
`
`*** irial Number: 75743884 **‘9/6/00 3:43:48 PM ***
`
`[Typed Drawing]
`
`G & S: electronic toys and educational
`US 022 O23 O38 050.
`IC 028.
`electronic toys, namely, electronic game equipment and hand held units
`for playing electronic games and educational games and accessories
`therefor
`
`Mark Drawing Code
`(1) TYPED DRAWING
`
`Serial Number
`75743884
`
`Filing Date
`July 6, 1999
`
`Filed ITU
`FILED AS ITU
`
`Publication for Opposition Date
`January 11, 2000
`
`Owner Name and Address
`
`(APPLICANT) Original San Francisco Toymakers, The CORPORATION CALIFORNIA
`360 Oyster Point Boulevard Suite 110 South San Francisco CALIFORNIA 94080
`
`Type of Mark
`TRADEMARK
`
`Register
`PRINCIPAL
`
`Live Dead Indicator
`LIVE
`
`Attorney of Record
`A. Anna Capelle
`
`*** Search:
`
`7 *** Document Number: 35 ***
`
`

`
`*** User:
`
`jdwyer
`
`*** iial Number: 75615245 ***.9/6/O0 3:44:11 PM ***
`
`Mark
`
`E WARE
`
`Goods and Services
`
`IC 028.
`
`US 022 O23 O38 050.
`
`G & S: educational electronic toys
`
`Mark Drawing Code
`(3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS
`
`Design Code
`260321
`
`Serial Number
`75615245
`
`Filing Date
`January 4, 1999
`
`Filed ITU
`FILED AS ITU
`
`Publication for Opposition Date
`September 7, 1999
`
`Owner Name and Address
`
`(APPLICANT) Original San Francisco Toymakers, The CORPORATION CALIFORNIA
`360 Oyster Point Suite 110 South San Francisco CALIFORNIA 94080
`
`Type of Mark
`TRADEMARK ’
`
`Register
`PRINCIPAL
`
`Live Dead Indicator
`LIVE
`
`*** Search:
`
`7 *** Document Number: 49 ***
`
`

`
`*** User:
`
`jdwyer
`
`*** irial Number: 75720646 ***.9/6/00 3:43:04 PM ***
`
`eWare
`
`Mark
`
`EWARE
`
`Pseudo Mark
`E WARE
`
`Goods and Services
`
`G & S: COMPUTER SOFTWARE FOR
`Us 021 O23 O26 O36 038.
`009.
`TC
`INTERNAL
`ACCESSING, VIA.A WIRELESS GATEWAY OR A GLOBAL COMPUTER NETWORK,
`INFORMATION DATABASES TO RETRIEVE, TRACK, ANALYZE AND MANAGE DATA
`
`Mark Drawing Code
`
`(1) TYPED DRAWING
`
`Serial Number
`75720646
`
`Filing Date
`June 3, 1999
`
`Filed ITU
`FILED AS ITU
`
`Owner Name and Address
`
`(APPLICANT) eWare Ltd. UNKNOWN 8 Baggot Lane Dublin 4
`
`IRELAND
`
`Type of Mark
`TRADEMARK
`
`Register
`PRINCIPAL
`
`Live Dead Indicator
`LIVE
`
`Attorney of Record
`A. Jason Mirabito
`
`*** Search:
`
`7 *** Document Number:
`
`14 ***
`
`

`
`*** User:
`
`jdwyer
`
`*** ‘rial Number: 75772783 **.9/6/O0 3:43:28 PM ***
`
`EWARE
`
`Mark
`
`EWARE
`
`Pseudo Mark
`E WARE
`
`\Goods and Services
`
`3
`
`G & S: computer software which assists
`Us O21 O23 026 O36 038.
`IC 009.
`the backup and storage of networked files
`
`Mark Drawing Code
`(1) TYPED DRAWING
`
`Serial Number
`75772783
`
`Filing Date
`August 11, 1999
`
`Filed ITU
`FILED AS ITU
`
`Owner Name and Address
`
`(APPLICANT) CONNECTED CORPORATION UNKNOWN MASSACHUSETTS 63 FOUNTAIN
`STREET FRAMINGHAM MASSACHUSETTS 01702
`
`Type of Mark
`TRADEMARK
`
`Register
`PRINCIPAL
`
`Live Dead Indicator
`LIVE
`
`Attorney of Record
`Roy T. Pierce
`
`*** Search:
`
`7 *** Document Number: 31 ***
`
`

`
`*** User:
`
`jdwyer
`
`*** ‘rial Number: 75742114 **.9/6/O0 3:43:59 PM ***
`
`[Typed Drawing]
`
`Mark
`
`E—WARE
`
`Pseudo Mark
`E WARE
`
`Goods and Services
`
`G & S: COMPUTER SOFTWARE FOR
`US O21 O23 O26 036 038.
`IC 009.
`DEVELOPING INTERNET BASED BUSINESS MANAGEMENT COMPUTER APPLICATIONS;
`COMPUTER SOFTWARE APPLICATION MODULES FOR PRODUCT PURCHASING MANAGEMENT;
`COMPUTER SOFTWARE APPLICATION MODULES FOR PRODUCT SALES MANAGEMENT;
`COMPUTER SOFTWARE APPLICATION MODULES FOR ORDER FULFILLMENT MANAGEMENT;
`COMPUTER SOFTWARE APPLICATION MODULES FOR PRODUCT PRODUCTION MANAGEMENT;
`COMPUTER SOFTWARE APPLICATION MODULES FOR MANAGING RELATIONSHIPS WITH
`CUSTOMERS; COMPUTER SOFTWARE APPLICATION MODULES FOR SYNCHRONIZING
`PRODUCT MANAGEMENT DATA BETWEEN MULTIPLE COMPUTER SITES; FINANCIAL
`ACCOUNTING COMPUTER SOFTWARE
`
`Mark Drawing Code
`(1) TYPED DRAWING
`
`Serial Number
`75742114
`
`Filing Date
`July 1, 1999
`
`Filed ITU
`FILED AS ITU'
`
`Owner Name and Address
`
`Inc. CORPORATION CALIFORNIA 999 Baker-
`(APPLICANT) Enterprise Engines,
`Way, Suite 400 San Mateo CALIFORNIA 94404
`
`Type of Mark
`TRADEMARK
`
`Register
`PRINCIPAL
`
`Live Dead Indicator
`LIVE
`
`Attorney of Record
`Gary S.Williams
`
`*** Search:
`
`7 *** Document Number: 36 ***