Trademark Trial and Appeal Board Electronic Filing System. 39145
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`ESTTA Tracking number: ESTTA8992
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`Filing d3l3e3
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`05/20/2004
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Notice of Opposition
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`Notice is hereby given that the following party opposes registration of the indicated
`application.
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`Opposer Information
`
`Address
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`12950 Worldgate Drive Suite 150
`Herndon, VA 20170
`UNITED STATES
`
`Attorney
`information
`
`Stephanie A. Hale
`Sommer Barnard Ackerson Attorneys, PC
`One Indiana Square Suite 3500
`Indianapolis, IN 46204
`UNITED STATES
`
`shale@sbalawyers.com Phone:317-713-3500
`
`Applicant Information
`
`Application No 78208007
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`P“b::;‘i°“
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`l04/20x2004
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`Filing Date
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`05/20/2004
`
`I
`
`Period Ends
`
`£05/20/2004
`
`Class 009. First Use: First Use In Commerce:
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`

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`All goods and sevices in the class are opposed, namely: Computer software for Validating
`public key information for use in the field of electronic and collaborative design and
`document Validation and Verification
`
`Attachments
`
`Enotary Opposition Pgl.tif ( 1 page )
`Enotary Opposition Pg2.tif ( 1 page )
`Enotary Opposition Pg3.tif ( 1 page )
`Enotary Opposition Pg4.tif ( 1 page )
`Exhibit A Page 1 ENOTARY.tif ( 1 page )
`Exhibit A Page 2 ENOTARY.tif ( 1 page )
`
`Exhibit B Page 1 ENOTARY.tif ( 1 page )
`Exhibit B Page 2 ENOTARY.tif ( 1 page )
`
`Signature
`
`fsahf
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Trademark Application Serial No. 78/208,007
`Filed: January 28, 2003
`For the mark: ENOTARY
`
`Published in the Official Gazette on April 20, 2004
`
`Opposition No.:
`
`Surety, LLC,
`Opposer,
`
`v.
`
`Forum Systems, Inc.,
`
`)
`)
`
`)
`
`)
`
`l.0000 South,
`) 45 West
`Applicant,
`Suite 415 ) Salt Lake City, Utah
`84070
`)
`
`Commissioner for Trademarks
`
`2900 Crystal Drive
`
`Arlington, Virginia 22202-3513
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`N TI E OF PP
`
`ITION
`
`Surety, LLC, a limited liability company organized and existing under the laws of the
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`State of Delaware, believes that it will be damaged by registration of the mark shown in
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`Serial No. 78/208,007 in lntemational Class 9 (computer software for validating public key
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`information for use in the field of electronic and collaborative design and document validation
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`and verification) and hereby opposes the same.
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`As grounds for opposition, it is alleged that:
`
`( Cl)
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`Opposer, Surety, LLC, is a limited liability company organized and
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`existing under the laws of the State of Delaware. Opposer has a place of business at
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`12950 Worldgate Drive, Suite 150, Herndon, Virginia 20170.
`
`(2)
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`Opposer or its predecessors in interest have since 1994 used the mark
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`DIGITAL NOTARY in connection with computer software for use in the field of
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`

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`document Verification, namely software to assist and effect the time—stamping of computer-
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`generated files in digital format in International Class 9. Opposer is submitting herewith as
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`part hereof and marked as Exhibit A, Registration No. 2,423,581 issued on January 23, 2001.
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`(3)
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`Opposer or its predecessors in interest have since 1995 used the mark
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`DIGITAL NOTARY in connection with document Verification services, namely, time-
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`stamping of computer-generated tiles for others in International Class 42. Opposer is
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`submitting herewith as part hereof and marked as Exhibit B, Registration No. 2,178,724
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`issued August 4, 1998.
`
`(4)
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`Applicant seeks to register ENOTARY as a trademark for computer software
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`for validating public key information for use in the field of electronic and collaborative
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`design and document validation and Verification in International Class 9 on an "intent-to—use"
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`basis, as evidenced by the publication. of said mark. in the Official Gazette on page 249 of
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`the April 20, 2004 issue.
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`(5) There is no issue of priority. Applicants date of first use is subsequent to the dates
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`of issuance of Opposer's Registrations 2,178,724 and 2,423,581, with dates of first use of
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`April 1995, and 1994 respectively.
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`(6) Opposer has sold and continues to sell
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`its goods and services listed in the
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`aforesaid registrations under the aforesaid marks throughout the United States. Opposer
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`has acquired substantial and Valuable goodwill with respect to the marks covered by the
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`aforesaid registrations.
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`(7) By Virtue of Opposer’s efforts,
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`the expenditure of consi.derable sums for
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`promotional activities and the excellence of Opposer's products and services, Opposer has
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`gained for its above-identified marks a Valuable reputation.
`
`(8)
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`The trademark. proposed for registration by Applicant, namely, ENOTARY,
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`is substantially similar to Opposer's mark DIGITAL NOTARY, and is applied to the identical
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`goods as those sold by Opposer, are used in similar channels of commerce, are directed to
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`similar customers, and so nearly resembles Opposer's marks as to be likely to be confused
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`therewith and mistaken thereof. Applicant's mark is deceptively similar to Opposer's marks
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`as to cause confusion. and lead to deception as to the origin of Appl.icant’s goods bearing
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`Applica;n.t’s mark.
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`

`
`(9)
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`If Applicant is permitted to use and register its mark for its goods, as
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`specified in the application herein opposed, there will be substantial confusion in the
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`marketplace resulting in damage and injury to Opposer. Persons familiar with Opposer’
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`s marks would be likely to buy Applicant’s goods believing the products to be made and
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`sold by Opposer. Any such confusion inevitably would result in a loss of sales to Opposer.
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`Further, any defect, objection or fault found with Applicant's products marketed under
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`its mark would necessarily reflect upon and seriously injury the reputation. which Opposer
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`has established for its products and services merchandised under its DIGITAL NOTARY
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`marks.
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`(10) If Applicant were granted the registration herein opposed,
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`it would thereby
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`obtain at least a primafaczé exclusive right to use of its mark. Such registration would be a.
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`source of damage and injury to Opposer.
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`WHEREFORE, Opposer prays that the application Serial No. 78/208,007 be
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`rejected, and that the mark therein sought for the goods herein specified in International
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`Class 9 be denied an.d refused.
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`Opposer hereby gives notice under Rule 2. l22(d) of the Rules of Practice that
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`after hearing and in any appeal on this oppositi.on proceeding, it will rely on its
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`registrations which are annexed hereto as exhibits to this Notice of Opposition as evidence
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`in support of this Notice of Opposition.
`
`The undersigned Opposer hereby consents and appoints Michelle Kaiser Bray and
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`Stephanie A. Hale, each a member of the Bar of the State of Indiana, whose address is
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`Sommer Barnard Ackerson. Attomeys, PC, One Indiana Square, Suite 3500, Indianapolis,
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`Indiana 46204, (317) 713-3500, as its duly authorized agents and attorneys in the matter of the
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`opposition above—identified to prosecute said opposition, to transact all business in the Patent
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`and Trademark Office and in the United States courts in connection with this opposition, to
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`sign their .na1nes to all papers which may hereinafter be tiled in connection therewith, and to
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`receive all communications relating to the same.
`
`

`
`Rasgsctfaiiy submiitefi,
`
`fiumiy, ELC
`
`
`gm
`7§.‘§1:3as Kim; A
`Sam:
`£33 2'? wzz WM
`
`

`
`EXHIBIT A‘
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`
`
`CERTIFECATE GE REGESTRAPHGN
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`PR%KC£P.AL REGISTER
`
`The Mark sizawrz in this certzficate fies freeze registered in $519 United States
`Patent and Trademark Gfiice to the named regisfruszz.
`‘
`b
`
`The recoris of the United Stafes Pa:‘e2st and frazfemark Oflice Shaw #2423
`an applicafion fix? regzlvtration ofike Mark shmm in 531119 Certificate was flied if: the
`Ofiice; fka? ifhe application was examined and determined 20 be in campfiazzce with
`the requiremenzié ofihe law and wfih the regzdarfons prescribed by the Director oftize
`United States Pafemf and Trademark Ofiice; and shat fize Appiicant is enzitfed {(2
`registration ofthe Mark under ihe Trademarimci ofI946, as Amended’.
`
`'
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`A copy of the Mark and‘ pertirzem? dam fiom the application are pan‘ of
`this certificate.
`
`34122833
`This registration shail remain in force fie? TEN (19) years‘,
`rerminated eariéer as pravéded by iaw, and subject‘ to ccmpliance with the provisions
`ofSec2‘i<m 8 ofifze TmciemarkAcf of .3946, asAme22a‘ed.
`
`Acting Direcsor of the United States Pazem and Trademark Ofiice
`
`
`
`

`
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`EXHIBIT B
`
`
`
`CERTEHCATE GE‘ RESESL
`
`
`PRINCIPAL REGESTER
`
`The Mark stmwtt in this certificate has been registered in the Eftttted States
`Patetttqanfl Trademark flfiice to the named tegtstmttt.
`
`The records of tttt United States Patent and frademark Gjfice Shaw that
`
`633% applttattmtfar registration ofttte Matt: ttta-wt: ttt this fletttficate wasjited tts ttte
`
`Gjfice, tttat the appticattvtt was emmitted and detettttttted to be tn compttance with
`
`the requirements afttze law amt with the regutatiottsprescttbed by the Catttmtsstatttt
`
`af Patettm and fmfiemattcs, and that the Appticattt is etttttted to tegisttattotz of the
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`Mart; under the ttademark Act @1946, at Axmtttdezt.
`
`A copy cf the Mark and petttttettt data fttam the appticatiatt are a gait of
`
`this certificate.
`
`Tttts rtgittrattatt shalt remain in fates fat TEN (M) years, tttztess
`
`terminated eartter as prottdefi by taw, and sttéject ta compitance with the provisions
`
`of Section 8 qt tttt Trademark Act of 2946, as Ametzfied.
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`Cemmissionet of Patents and Trademarks
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`

`
`Eat. C3,: 42
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`Friar US. CBS.3 33% am EGE
`
`
`
`Reg. No. 2,E78;724
`
`
`
`
`SERVECE MARK
`PRENCEPAL REGESTER
`
`flEGE'E‘AL NGEARY
`
`SURETY TECHNOLGGEES {EELAWARE COR-
`PGRATEON)
`1 MAIN STREET
`CHATHAM, N3 @7928
`
`FOR: DOCUMENT VERIFICATEON SERV-
`ICES, NAMELY, TIME-STAMPING OF COM»
`PU'E'ER~GENERATED FILES FOR CYFHERS, EN
`CLASS 42 (US. CLS. 2% AND 303}.
`
`4-—0——i995;
`
`FERST USE
`4—{}—399S.
`N0 CLAIM ES MADE TO THE EXCLUSEVE
`RIGHT TO USE “NOTARY”, APART FROM
`THE MARK AS SHOWN.
`
`EN COMMERCE
`
`SN 74—43S,l§3, FILED 2-2-4994.
`
`GLENN CLARK, EXAMENING ATFORNEY