Trademark Trial and Appeal Board Electronic Filing System. 39145
`
`ESTTA Tracking number: ESTTA42092
`
`Filing date3
`
`08/12/2005
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated
`application.
`
`Opposer Information
`
`Name
`
`Javaoool Software, LLC
`
`Granted to
`
`D3“?
`of previous
`extension
`
`O8/13/2005
`
`P.O. Box 112573
`
`Address
`
`Pittsburgh, PA 15241
`UNITED STATES
`
`Attorney
`information
`
`Christine W. Trebilcock
`
`Cohen & Grigsby, P.C.
`11 Stanwix Street15th Floor
`Pittsburgh, PA 15222
`UNITED STATES
`
`iptraden1ark@oohenlaW.con1 Phone:(412) 297-4842
`
`Application No 78368017
`
`Opposition
`Filing Date
`
`08/12/2005
`
`P“b(':;:‘i°“
`
`ios/14/2005
`
`Opposition
`Period Ends
`
`§08/13/2005
`
`Applicant
`
`Webroot Software, Inc.
`
`2990 Center Green Court
`Boulder, CO 80301
`
`
`
`ESTTA Tracking number: ESTTA42092
`
`Filing date3
`
`08/12/2005
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated
`application.
`
`Opposer Information
`
`Name
`
`Javaoool Software, LLC
`
`Granted to
`
`D3“?
`of previous
`extension
`
`O8/13/2005
`
`P.O. Box 112573
`
`Address
`
`Pittsburgh, PA 15241
`UNITED STATES
`
`Attorney
`information
`
`Christine W. Trebilcock
`
`Cohen & Grigsby, P.C.
`11 Stanwix Street15th Floor
`Pittsburgh, PA 15222
`UNITED STATES
`
`iptraden1ark@oohenlaW.con1 Phone:(412) 297-4842
`
`Application No 78368017
`
`Opposition
`Filing Date
`
`08/12/2005
`
`P“b(':;:‘i°“
`
`ios/14/2005
`
`Opposition
`Period Ends
`
`§08/13/2005
`
`Applicant
`
`Webroot Software, Inc.
`
`2990 Center Green Court
`Boulder, CO 80301
`
`
`
`UNITED STATES
`
`Goods! Services Affected by Opposition
`
`Class 009.
`
`All goods and sevices in the class are opposed, namely: Computer software, namely,
`computer software for providing security features to detect, identify, block and delete
`trojan horse programs, adware programs, system monitor and other spyware programs
`
`Attachments WebrootOppNotice.pdf ( 5 pages )
`
`Signature
`
`fChristir1e W. Trebilcockf
`
`Name
`
`Christine W. Trebilcock
`
`Date
`
`08f12/2005
`
`
`
`983071 _1
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application Serial No: 78/368,017
`For the Trademark Spyware Guard
`Published in the Official Gazette on June 14, 2005
`Our Ref: 04-032 OPP
`
`JAVACOOL SOFTWARE LLC
`
`Opposer,
`
`V.
`
`WEBROOT SOFTWARE, INC.
`
`Applicant.
`
`Opposition No.
`
`\_/\_/\_/\_/\_/\_/\_/\_/\_/\_/\_/
`
`NOTICE OF OPPOSITION
`
`Opposer Javacool Software LLC ("Opposer"), a Pennsylvania Limited Liability Company,
`
`having a principal business address of P.O. Box 112523, Pittsburgh, Pennsylvania, 15241-0123, and
`
`sole licensee of the SPYWAREGUARDTM name and mark, believes that it will be damaged by the
`
`issuance of a registration for the mark SPYWARE GUARD (the "Applicant's Mark"), as applied for
`
`in Application Serial No. 78/368,017 filed on February 13, 2004, by Webroot Software, Inc.
`
`("Applicant"), and hereby opposes the same.
`
`The grounds for opposition are as follows:
`
`1.
`
`Opposer is the licensee of common law rights and the federal trademark Application
`
`Serial No. 76/780,005 filed on February 26, 2004, for the mark SPYWAREGUARD.
`
`2.
`
`Since as early as January 11, 2003, Opposer has continuously provided goods under
`
`and used the SPYWAREGUARD name and mark on various items of computer software for
`
`locating, removing, disabling and/or preventing the installation of targeted data, programs, code and
`
`
`
`software, including spyware, adware, dialers and browser hijackers, on a computing device; and
`
`computer software for locating, removing, disabling and/or preventing the installation of targeted
`
`data, programs, code and software, namely spyware, adware, dialers and browser hijackers.
`
`3.
`
`Opposer's software bearing the SPYWAREGUARD mark is a popular anti— spyware
`
`product in the anti— spyware, computer security and privacy industries and is regularly recommended
`
`and reviewed by popular technical media, for example please see:
`
`http://netsecurity.about.com/od/popupsandspyware/tp/aatp082804.htm (undated),
`
`http://www.bleepingcomputer.com/forums/index.php?showtutorial=50 (dated April 8, 2004), and
`
`http://www.pcworld.com/news/article/0,aid,l l82l5,00.asp (dated November 3, 2004).
`
`4.
`
`Reviews of Opposer’s related SPYWAREBLASTER product may also recommend
`
`use of the SPYWAREGUARD product
`
`in conjunction with Opposer’s SPYWAREBLASTER
`
`product, for example please see:
`
`http://www.techsupportalert.com/issues/issuel06.htm (dated February ll, 2004),
`
`http://www.spywarewarrior.com/rogue anti—spyware.htm#trustworthy (dated June 26, 2005), and
`
`http://www.watchguard.com/infocenter/editorial/l5860.asp (undated). Considering the relationship
`
`of Opposer’s SPYWAREGUARD product with its SPYWAREBLASTER product in the field and
`
`in the media, the granting of a registered mark for Applicant’s virtually identical mark would likely
`
`further confuse and damage the SPYWAREBLASTER product.
`
`5.
`
`Opposer's
`
`software bearing the SPYWAREGUARD mark is provided and
`
`distributed through the internet and may be downloaded from a global computer network.
`
`6.
`
`Opposer has expended considerable time, effort and expense in promoting its
`
`SPYWAREGUARD name
`
`and mark,
`
`and
`
`goods
`
`offered
`
`in
`
`connection with
`
`the
`
`SPYWAREGUARD mark, with the result
`
`that the public has come to know, rely upon and
`
`
`
`recognize Opposer's SPYWAREGUARD mark as an indicator of the source of the goods so
`
`marked. By Virtue of these efforts, Opposer has gained a Valuable reputation and amount of
`
`goodwill for its SPYWAREGUARD mark.
`
`7.
`
`Opposer's use of SPYWAREGUARD as a trade name and mark on its goods,
`
`including computer software, has been Valid and continuous since 2003, and has not been
`
`abandoned.
`
`8.
`
`Upon information and belief, Applicant filed an intent to use application to register
`
`SPYWARE GUARD on February 13, 2004. Therein, Applicant seeks registration of Applicant's
`
`Mark in connection with "computer software, namely, computer software for providing security
`
`features to detect,
`
`identify, block and delete trojan horse programs, adware programs, system
`
`monitor and other spyware programs."
`
`9.
`
`Upon information and belief, Applicant has not filed a Statement of Use declaring it
`
`has used the Applicant's Mark.
`
`10.
`
`Upon information and belief, Applicant has not used Applicant's Mark in commerce.
`
`11.
`
`The goods proposed by Applicant are closely related to the goods offered by
`
`Opposer and as described in Paragraphs 2-4 herein.
`
`12.
`
`There is no issue of priority of use. Even if Applicant has used Applicant's Mark in
`
`commerce, the earliest date would not predate Applicant's application, which was filed more than 13
`
`months after Opposer first used its SPYWAREGUARD mark in interstate commerce.
`
`l3.
`
`Opposer’s continuous use of the SPYWAREGUARD name and mark on its goods
`
`predates any use of the Applicant's Mark by Applicant.
`
`
`
`14.
`
`Pursuant to 15 U.S.C. § l057(c)(l), Opposer has priority over the Applicant with
`
`regard to using the SPYWAREGUARD mark on or in connection with the goods,
`
`including
`
`software.
`
`15.
`
`Applicant's SPYWARE GUARD mark is likely to be confused with and mistaken
`
`for Opposer's SPYWAREGUARD name and mark because, among other reasons, Applicant's Mark
`
`is virtually the same as Opposer’s Mark, it contains the exact same and only words: "Spyware" and
`
`"Guard" in the same order separated only by a space, and has similar meaning, sound and
`
`appearance as does Opposer's mark. Applicant's Mark would be used on computer software and
`
`marketed to the same demographic as are goods marketed and provided by Opposer in connection
`
`with Opposer’s SPYWAREGUARD mark. Therefore, Applicant's Mark is confusingly similar to
`
`Opposer's SPYWAREGUARD mark.
`
`16.
`
`If Applicant is permitted to register Applicant's Mark for the goods specified in the
`
`Application herein opposed,
`
`there is a substantial likelihood that consumers will be confused,
`
`mistaken or deceived resulting in damage and injury to Opposer. Persons familiar with Opposer's
`
`SPYWAREGUARD name and mark are likely to mistakenly believe that any goods of Applicant
`
`offered under the SPYWARE GUARD mark would have been produced, sponsored, endorsed or
`
`approved by Opposer, or would be in some way associated, affiliated or connected with Opposer, or
`
`would be otherwise confused as to the origin of the Opposer's software. Such confusion inevitably
`
`would result in damage to Opposer as a consequence.
`
`17.
`
`If Applicant is granted registration for the mark herein,
`
`it would give Applicant
`
`prima facie evidence of the validity and ownership and exclusive right to use "Spyware Guard" to
`
`the detriment of Oppo ser.
`
`
`
`WHEREFORE, pursuant to Sections 7 and 13 of the Lanham Act, 15 U.S.C. §§ 1057(c) and
`
`1063, Opposer, by and through its counsel, respectfully requests that the Applicant's Mark sought to
`
`be registered by Applicant in Serial No. 78/368,017 be refused and this Opposition be sustained.
`
`Date: August 12, 2005
`
`Respectfully submitted,
`
`By:
`
`/Christine W. Trebilcockl
`Christine W. Trebilcock
`
`Cohen & Grigsby, P.C.
`11 Stanwix Street, 15m Floor
`Pittsburgh, PA 15222-1319
`(412) 297-4900
`Email:
`iptrademark@cohenlaw.com
`Attorneys for Opposer
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