Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA203263
`ESTTA Tracking number:
`04/08/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91172747
`Defendant
`ID BODYGUARD, LLC
`MITCHELL M. MUSIAL, II
`MITCHELL M. MUSIAL II, PLLC
`6960 ABBOTT TERRACE
`WEST BLOOMFIELD, MI 48323
`UNITED STATES
`MMusial@MMMPLLC.com
`Opposition/Response to Motion
`Mitchell M. Musial II
`MMusial@MMMPLLC.com
`/Mitchell M. Musial II/
`04/08/2008
`ID Bodyguard Response to Summary Judgment.pdf ( 16 pages )(1061615 bytes
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`)E
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`XHIBIT A1.pdf ( 3 pages )(65303 bytes )
`EXHIBIT A2-A7.pdf ( 6 pages )(609293 bytes )
`EXHIBIT A8-A13.pdf ( 18 pages )(999946 bytes )
`EXHIBIT A14-A20.pdf ( 8 pages )(1771455 bytes )
`EXHIBIT B.pdf ( 6 pages )(83927 bytes )
`EXHIBIT C.pdf ( 4 pages )(1970483 bytes )
`EXHIBIT D.pdf ( 7 pages )(11448969 bytes )
`EXHIBIT E.pdf ( 4 pages )(24982 bytes )
`Exhibit F.pdf ( 2 pages )(91043 bytes )
`EXHIBIT G.pdf ( 7 pages )(56725 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`ID BODYGUARD
`Mark:
`Serial No: 78/633,548
`Opposition Number: 91172747
`
`INTERSECTIONS, INC.
`
`Opposer
`
`V.
`
`Opposition No. 91 172747
`
`Attorney Docket No.
`2006-IBL-00002
`
`ID BODYGUARD, LLC
`
`Applicant
`
`APPLICANT’S MEMORANDUM IN OPPOSITION TO OPPOSER’S MOTION FOR
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`SUMMARY JUDGMENTAND APPLICANT’S CROSS MOTION FOR SUMMARY
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`JUDGMENT
`
`Applicant, ID BODYGUARD, LLC hereby responds to Opposer Intersections, Inc.’s Motion and
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`Memorandum for Summary Judgment and respectfully requests that the Board deny Opposer’s motion for
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`Summary Judgment and respectfully requests that the Board grant Applicant’s Cross Motion to for
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`Summary Judgment dismissing Opposition No. 91172747 with Prejudice.
`
`

`
`ID BODYGUARD
`Mark:
`Serial No: 78/633,548
`Opposition Number: 91172747
`
`I.
`
`INTRODUCTION
`
`On May 19, 2005, ID BODYGUARD, LLC (“Applicant”) filed its intent to use application for ID
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`BODYGUARD (Application Serial No. 78/633548).
`
`Opposer filed its Opposition and Amended Opposition requesting that the Trademark Trial and
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`Appeal Board (“the Board”) deny Applicant’s application because a likelihood of confusion exists with
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`Opposer’s IDENTITY GUARD marks.
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`Summary judgment should be granted in favor of Applicant, dismissing the Opposition
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`proceeding, as there are no genuine issues of material fact with respect to this case, and even viewing the
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`facts in a light most favorable to Opposer, there is no likelihood of confusion under Section 2(d) of the
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`Lanham Act, 15 U.S.C. § l052(d), as a matter of law. As a consequence, Opposer lacks supportable
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`grounds for those counts remaining in this opposition action, as a matter of law.
`
`II.
`
`APPLICANT’S MARK
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`Applicant’s mark is ID BODYGUARD, serial number 78/633548, filed May 19, 2005 for “credit
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`reporting data maintained by others; providing identity theft insurance underwritten by others; credit risk
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`management services, namely, obtaining credit information and other public and personal financial
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`information for use in providing reports on credit risks due to identity theft, credit management services,
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`namely, assistance with restoring credit damaged by identity theft.” and for “monitoring consumer credit
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`reports” and for “Identity theft protection services, namely, fraud prevention in the form of personal
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`information and financial identity monitoring; fraud resolution assistance, namely, providing advice and
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`consultation in the field of identity theft” in international class 045. Opposer’s then registered mark
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`IDENTITY GUARD, registration numbers 2,689,65, was not cited against Applicant in the December
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`12, 2005 Office Action, attached hereto as Exhibit El . Applicant’s Mark was published for opposition
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`on May 9, 2006. Exhibit E2
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`

`
`III.
`
`OPPOSERS MARKS
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`ID BODYGUARD
`Mark:
`Serial No: 78/633,548
`Opposition Number: 91172747
`
`Opposer has set forth registration numbers 2,689,654, 3,297,288 and 3,297,290 for the mark
`
`IDENTITY GUARD in opposition to Applicant’s ID BODYGUARD mark. Registration Number
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`2,689,654 is for “CREDIT CARD CANCELLATION SERVICES FOR LOST OR STOLEN CARDS;
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`CREDIT CARD MONITORING SERVICES FOR LOST OR STOLEN CARDS” in international class
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`35 and “CREDIT CARD REGISTRATION SERVICES” in international class 36. Registration Numbers
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`3,297,288 and 3,297,290 are for “credit reporting data maintained by others; providing identity theft
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`insurance underwritten by others; credit risk management services, namely, obtaining credit information
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`and other public and personal financial information for use in providing reports on credit risks due to
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`identity theft, credit management services, namely, assistance with restoring credit damaged by identity
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`theft.” in international class 03 6, for “monitoring consumer credit reports” in international class 35 and
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`for “Identity theft protection services, namely, fraud prevention in the form of personal information and
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`financial identity monitoring; fraud resolution assistance, namely, providing advice and consultation in
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`the field of identity theft” in international class 045. Registration Numbers 3,297,288 and 3,297,290
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`whose services overlap Applicant’s, have disclaimed “IDENTITY”.
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`In light of Applicant’s pending application for the ID BODYGUARD Mark, Applicant’s mark
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`was not cited against Opposer’s Registration Numbers 3297288 and 3297290 for the mark IDENTITY
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`GUARD, filed after Applicant’s Intent to Use Application. Opposer has not claimed that its IDENTITY
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`GUARD mark is famous.
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`IV.
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`SUMMARY JUDGMENT STANDARD
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`A motion for summary judgment is a pretrial device used to dispose of cases where “the
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`pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if
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`any, show that there is no genuine issue as to any material fact and that the moving party is entitled to
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`judgment as a matter of law.” See Fed. R. Civ. P. 56(c); see also Cleotex Corp. v. Catretl, 477 U.S. 317
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`(1986); see also Flatley v. Trump, 11 U.S.P.Q.2d 1284 (T.T.A.B. 1989).
`
`

`
`ID BODYGUARD
`Mark:
`Serial No: 78/633,548
`Opposition Number: 91172747
`
`The purpose of the motion for summary judgment is judicial economy, that is, to avoid an
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`unnecessary trial where there is no genuine issue of material fact and more evidence than is already
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`available in connection with the summary judgment motion could not reasonably be expected to change
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`the result in the case. See Pure Gold, Inc. v. Syntex (USA), Inc., 739 F.2d 624 (Fed. Cir. 1984); see also
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`University Book Store v. University of Wisconsin Board ofRegents, 33 U.S.P.Q.2d 1385 (T.T.A.B. 1994).
`
`The evidentiary record on summary judgment, and all inferences to be drawn from the
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`undisputed facts, must be viewed in the light most favorable to the nonmoving party. See Lloyd ’s Foods
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`Products, Inc. v. Eli ’s Inc., 987 F.2d 766 (Fed. Cir. 1993); see also University Book Store, 333
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`U.S.P.Q.2d 1385 (T.T.A.B. 1994). A fact is genuinely in dispute if the evidence of record is such that a
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`reasonable factfinder could return a verdict in favor of the nonmoving party. See Lloyd ’s Food Products
`
`Inc. v. Eli ’s Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993, emphasis added).
`
`V.
`
`ARGUMENT
`
`A.
`
`The mark IDENTITY GUARD as Applied To 0pposer’s services is weak
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`The Trademark Trial and Appeal Board and the courts have recognized that merely descriptive
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`and weak designations may be entitled to a narrower scope of protection than an entirely arbitrary or
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`coined word. In re Central Soya Company, Inc ., 220 USPQ 914 (TTAB 1984). There are ample third-
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`party registrations, a summary of which is attached hereto as Exhibit B and the website printouts attached
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`as Exhibits A2—A19 that offer value for the purpose of establishing that the morpheme “GUARD” has
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`appealed to others as a trademark element in the field of identity theft protection and that the morpheme
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`“GUARD” is not distinctive in this field; and that “GUARD” has a readily understood suggestive
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`meaning in the field. See Bost Bakery, Inc., v. Roland Industries, Inc., 216 USPQ 799, 801, n.6 (TTAB
`
`1982). See also Henry Siegel Co. v. M&R Mfg. Co., 4 USPQ2d 1154, 1161, n.11 (TTAB 1987). These
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`exhibits are being offered to show the inherent weakness in a mark incorporating “GUARD” and that only
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`slight differences in marks containing “GUARD” may be sufficient to distinguish one from another.
`
`

`
`ID BODYGUARD
`Mark:
`Serial No: 78/633,548
`Opposition Number: 91172747
`
`I)
`
`The term IDENTITY is Disclaimed and is Descriptive .
`
`The word IDENTITY is descriptive of “Identity theft protection” services identified in Opposer’s
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`Registration Numbers 3297288 and 3297290 as it describes an essential feature of those services.
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`“Regarding descriptive terms, this court has noted that the ‘descriptive component of a mark may be
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`given little weight in reaching a conclusion on the likelihood of confusion.’” Cunningham v. Laser Golf
`
`Corp., 55 USPQ2d at 1846, mg, In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 752
`
`(Fed. Cir. 1985).
`
`2)
`
`The term GUARD is Descriptive, or if not Descriptive, highly suggestive of Opposer ’s
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`service
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`The term GUARD is so commonly associated with identity theft protection services it is at the
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`very minimum descriptive or highly suggestive at best. For example “How to guard against identity
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`theft”, “be on guard against internet fraud” or “guard your social security number”. These examples,
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`among others, are found in Exhibits A5, A7, A8, A11, A16 and A19 attached hereto. Applicant does not
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`seek an attack on Opposer’s mark as a whole, merely to show that the word “GUARD” is so prevalent
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`with regard to identity theft protection services, as well as services related thereto, that Opposer cannot be
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`permitted to remove the term from the public domain and obtain exclusive use of it. See Sweats Fashions
`
`Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793, 1796 (Fed. Cir. 1987) ("The registration
`
`affords primafacie rights in the marks as a whole, not in any component. Thus, a showing of
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`descriptiveness or genericness ofpart of a mark does not constitute an attack on the registration")
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`Additionally, it is clearly Opposer’s intent to protect is customers from injury, and to therefore,
`
`“GUARD” their identity.
`
`As defined by Webster’s Third New International Dictionary, the word “BODYGUARD” means
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`“a usually armed attendant who travels with an individual to protect him from bodily harm”. In contrast,
`
`when used with identity theft protection services, the term “GUARD” would be understood to mean “to
`
`

`
`protect from danger” as defined by Webster’s Third New International Dictionary. In contrast, Applicant
`
`does not suggest to provide bodyguard services for identification.
`
`ID BODYGUARD
`Mark:
`Serial No: 78/633,548
`Opposition Number: 91172747
`
`It follows, the meaning of a mark must be determined not in a vacuum, but in relation to the
`
`goods on or in connection with which it is used. See Presto Products Inc. v. Nz'ce—Pak Products Inc., 9
`
`USPQ2d 1895 (TTAB 1988). Opposer would like the Board to accept their definition of GUARD as “a
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`person or group who guards”, however the term guard is used so commonly with identity theft protection
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`services that the public is more likely to perceive GUARD to mean “to protect from danger” as defined by
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`Webster’s Third New International Dictionary, the relevant page from which is attached as Exhibit D7.
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`There are many third party registrations that use the word “GUARD” in identity theft protection services
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`and related services, both registered and unregistered. A list of third party marks is attached hereto as
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`Exhibit C. The marks identified on Exhibit C consist of services that are either identical or related, such
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`as electronic surveillance or database security. Additionally, Exhibits A2, A4, A6, A9, A10, A12, A13,
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`A15, A17, A18 identify actual third party use of the mark “GUARD” for identity theft protection
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`services.
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`There are at least 16 instances of related third party registrations and applications that use the
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`word “GUARD” in their mark. See Exhibit B attached. Additionally, there are 10 examples of ACTUAL
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`USE of use of the word “GUARD” in association with identity theft protection services. (Please see
`
`Exhibits A2, A4, A6, A9, A10, A12, A13, A15, A17, A18) . Also, the word “GUARD” is commonly
`
`used in association with identity theft protection services. Based on this evidence, purchasers will be
`
`able to distinguish among various marks using or containing the word “GUARD” Accordingly, the
`
`term “GUARD” is descriptive or highly suggestive at best.
`
`The scope ofprotection afforded to 0pposer’s mark “IDENTITY GUARD” is more
`3)
`narrow than an arbitrary mark
`
`

`
`ID BODYGUARD
`Mark:
`Serial No: 78/633,548
`Opposition Number: 91172747
`
`It is settled that highly suggestive marks are weak and are generally accorded a more limited
`
`scope of protection than an arbitrary mark. See The Drackett Company v. H. Kolznstamm & Co., Inc., 160
`
`USPQ 407 (CCPA 1969) ["The scope of protection afforded such highly suggestive marks is necessarily
`
`narrow and confusion is not likely to result from the use of two marks carrying the same suggestion as to
`
`the use of closely similar goods."]; and Sure—Fit Products Company v. Saltzson Drapery Company, 117
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`USPQ 295 (CCPA 1958). As set fort above, IDENTITY describes an essential feature of those services
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`which Opposer opposes. Additionally, “GUARD” is so commonly associated with the opposed services,
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`that the term is highly suggestive at best. Combined, the descriptive nature of the components do not
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`operate to create a strong mark. “IDENTITY GUARD” is easily read to convey a meaning of “identity
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`protection”, and should thus be afforded a very narrow scope of protection.
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`B.
`
`0pposer’s Motion Must Be Denied Because There Is No Likelihood of Confusion between
`Applicant’s ID BODYGUARD Mark and Opposer’s IDENTITY GUARD Mark
`
`Opposer states in its Motion for Summary Judgment that a single du Pont evidentiary factor, that
`
`is, the similarity of the marks, remains. Applicant agrees. In Kellogg Co. v. Pack ‘Em Enterprises the
`
`Board held that the first of the du Pont factors, "[t]he similarity or dissimilarity of the marks in their
`
`entireties as to appearance, sound, connotation and commercial impression," was dispositive of the issue
`
`and warranted summary judgment in favor of Pack'em. Kellogg Co. v. Pack’Em Enterprises Inc., 14
`
`USPQ2d 1545 (TTAB 1990), aff’d, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991).Applicant’s mark is
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`so dissimilar in appearance, sound, meaning and commercial impression from Opposer’s mark that
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`Opposer’s Motion for Summary Judgment must be denied.
`
`1)
`
`Applicant’s mark “ID BODYGUARD” and 0pp0ser’s mark “IDENTITY GUARD”
`
`are not similar in appearance, sound, commercial impression or meaning
`
`

`
`ID BODYGUARD
`Mark:
`Serial No: 78/633,548
`Opposition Number: 91172747
`
`In determining the similarity or dissimilarity of the marks, marks must be considered in their
`
`entireties, as to appearance, sound, connotation and commercial impression. Cunningham V. Laser Golf
`
`Corp., 55 USPQ2d 1842 (Fed. Cir. 2000). That is, comparison of marks requires consideration of the
`
`likely pronunciation of the marks, their visual similarities or differences, their connotations, and their
`
`overall commercial impressions. Giant Food, Inc. v. Nation ’s Foodservice, Inc., 710 F.2d 1565, 218
`
`USPQ 390, 395 (Fed. Cir. 1983). The marks differ so substantially in appearance, sound, connotation and
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`commercial impression that there is no likelihood that their contemporaneous use by different parties will
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`result in confusion.
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`a. 0pp0ser’s mark and Applicant’s mark have no similarity of appearance
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`It is often the first part of a mark which is most likely to be impressed upon the mind of a
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`purchaser and remembered. Presto Products Inc. v. Nz'ce—Pak Products Inc., 9 USPQ2d 1895 (1988).
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`The first word in Applicant’s mark is ID, in contrast Opposer’s mark begins with IDENTITY, which are
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`clearly not the same length or spelling. The dominant terms of the respective marks, BODYGUARD and
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`GUARD are different in appearance. The mere fact that Applicant's mark incorporates a component of
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`Opposer’s mark does not mean that the two marks are similar, quite the contrary.
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`The only similarity of appearance between the marks is the morpheme GUARD. Opposer
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`suggests that the analytically correct approach would be to divide BODYGUARD into its component
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`parts and discard BODY, leaving GUARD, claiming the second half of Applicant’s mark, post dissection,
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`is the dominant portion of Applicant’s mark, regarding the BODY portion as “descriptive or subordinate
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`matter”. Opposer’s brief, page 12. It is well settled that marks must be compared in their entireties, not
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`dissected into component parts and the minute details of each part compared with other parts. Genesco
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`Inc. v. Martz, 66 USPQ2d 1260 (TTAB 2003). That is, in determining likelihood of confusion, the marks
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`are not dissected or split into component parts and each part compared with other parts. It is the
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`impression created by the marks as a Whole that is important. See 3 J. Thomas McCarthy, McCarthy on
`
`Trademarks and Unfair Competition, §23 :41 (4th ed. 1999). In fact, it is highly unlikely that a consumer
`
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`
`ID BODYGUARD
`Mark:
`Serial No: 78/633,548
`Opposition Number: 91172747
`
`(1. Opposer’s mark and Applicant’s mark have no similarity of commercial
`
`impression
`
`The “commercial impression” of a trademark is the meaning or idea it conveys, or the mental
`
`reaction it evokes. Spice Islands V. Frank Tea & Spice Co, 505 F.2d 1293, 1296 (CCPA 1974)
`
`Applicant’s mark “ID BODYGUARD”, conveys a meaning that an armed attendant will travel with the
`
`user of Applicant’s services to protect their identification.
`
`In contrast, Opposer’s “IDENTITY GUARD”
`
`is easily read to convey a meaning of “identity protection”
`
`The difference of commercial impressions between the marks is significant. Applicant’s mark
`
`evokes a consumer’s imagination while Opposer’s mark clearly explains Opposer’s services. It is a fact
`
`that there is no similarity of commercial impression between Applicant’s ID BODYGUARD mark and
`
`Opposer’s IDENTITY GUARD mark.
`
`2)
`
`There Can Be No Likelihood Of Confusion As A Matter Of Law
`
`For reasons stated above, Opposer is only entitled to a narrow scope of protection. The
`
`Trademark Office evidently reached the conclusion that the ID BODYGUARD and IDENTITY GUARD
`
`marks are not confusingly similar due to the substantial visual, connotation, impression and phonetic
`
`differences between them, as neither registration was cited against the other. The Trademark Off1ce’s
`
`conclusion is consistent with controlling case law.
`
`While a determination of whether a likelihood of confusion exists is made by evaluating and
`
`balancing the du Pont evidentiary factors shown to be applicable to a particular case, as noted in the du
`
`Pont decision itself different factors may play a dominant role in any particular case. In re E. Z. du Pont de
`
`Nem0urs,_476 F.2d 1357, 1361 (CCPA 1973). Indeed, in an appropriate case a single du Pont factor may
`
`be dispositive in the likelihood of confusion analysis.
`
`11
`
`

`
`ID BODYGUARD
`Mark:
`Serial No: 78/633,548
`Opposition Number: 91172747
`
`In Kellogg Co. v. Pack ‘Em Enterprises the Board held that the first of the du Pont factors, "[t]he
`
`similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and
`
`commercial impression," was dispositive of the issue and warranted summary judgment in favor of
`
`Pack'em. It noted that Pack'em's mark has an elephant design and stylized script, while Kellogg's does
`
`not, and that the marks share no common words, Pack'em's using FROOTEE, a misspelling of "fruity,"
`
`and Kellogg's using FROOT, a misspelling of "fruit." Kellogg Co. v. Pack’Em Enterprises Inc., 14
`
`USPQ2d 1545 (TTAB 1990), aff’d, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991). The fact that the
`
`marks are not similar in appearance, sound, connotation and commercial impression precludes grant of
`
`Opposer’s Motion for Summary Judgment.
`
`The dissimilarity of the marks has been dispositive in a number of cases in addition to Kellogg V.
`
`Pack’Em Enterprises — KeeblerCo. v. Murray Bakery Prod. 866 F.2d 1386 (Fed. Cir. 1989) (dissimilarity
`
`of the marks PECAN SANDIES and PECAN SHORTEES held dispositive); and Sears Mtg. Corp. v.
`
`Northeast Savings F.A. 24 USPQ2d 1227 (TTAB 1992) (dissimilarity of the marks APPROVAL PLUS
`
`and APPROVAL FIRST held dispositive). Here, as in Kellogg Co. the dissimilarity of the marks alone is
`
`dispositive of the Section 2(d) claim, even where the parties’ respective goods apparently overlap.
`
`Applicant’s mark ID BODYGUARD differs substantially from Opposer’s IDENTITY GUARD.
`
`Therefore, Applicant respectfully requests the Board to deny Opposer’s motion for Summary Judgment.
`
`C.
`
`Applicant’s Cross Motion For Summary Judgment Must Be Granted Because No Factual
`uestion Exists As To Whether A LikeLihood Of Confusion between A licant’s Mark and
`
`0pposer’s Mark Exists
`
`Given the forgoing, Applicant now makes its request for Summary Judgment. For purposes of
`
`Summary Judgment, Applicant stipulates to Opposer’s claims that the marks cover the same services or
`
`related services, that the marks travel in the same channels of trade, have the same class of purchasers,
`
`and the only remaining issue is the similarity of marks. Therefore, the only issue outstanding in this
`
`12
`
`

`
`motion for summary judgment is the similarity of the marks. Applicant submits that Opposer’s Motion
`
`for Summary Judgment should be denied and App1icant’s Cross Motion for Summary Judgment be
`
`granted.
`
`ID BODYGUARD
`Mark:
`Serial No: 78/633,548
`Opposition Number: 91172747
`
`13
`
`

`
`ID BODYGUARD
`Mark:
`Serial No: 78/633,548
`Opposition Number: 91172747
`
`VI.
`
`CONCLUSION
`
`For all of the reasons set forth above, Applicant submits that there are no issues of material fact
`
`and questions concerning the Validity of Applicant’s application and no presence of likelihood of
`
`confusion. Accordingly, Applicant respectfully requests that Opposer’s Motion for Summary Judgment
`
`be denied and that Applicant’s Cross—Motion for Summary Judgment be granted.
`
`Respectfully submitted,
`
`ID Bodyguard, LLC
`
`By:
`
`/Mitchell M. Musial II/
`
`Mitchell M. Musial II
`
`Attorney for Applicant
`Mitchell M. Musial II, PLLC
`6960 Abbott Terrace,
`West Bloomfield, MI 48323
`
`(248) 672-2000
`
`Date: April 7, 2008
`
`14
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`

`
`ID BODYGUARD
`Mark:
`Serial No: 78/633,548
`Opposition Number: 91172747
`
`CERTIFICATE OF TRANSMISSION
`
`I hereby certify that this correspondence is being transmitted to the United States
`
`Patent and Trademark Office Via the ESTTA electronic filing system on the date set forth
`
`below.
`
`Date of Transmission: April 7, 2008
`
`/Mitchell M. Musial II/
`
`Mitchell M. Musial
`
`

`
`CERTIFICATE OF SERVICE
`
`ID BODYGUARD
`Mark:
`Serial No: 78/633,548
`Opposition Number: 91172747
`
`I hereby certify that a true copy of the forgoing Applicant’s Memorandum In
`
`Opposition To Opposer’s Motion For Summary Judgment and Applicant’s Cross Motion For
`
`Summary Judgment has been served on counsel for Respondent this 7th day of April, 2008
`
`Via first class mail, postage prepaid to:
`
`Jacqueline L. Patt, Esq.
`Venable LLC
`
`575 7”‘ street, NW
`Washington, DC 20004- 1 601
`
`Date of Deposit: April 7, 2008
`
`/Mitchell M. Musial II/
`
`Mitchell M. Musial
`
`l6
`
`

`
`Exhibit A1
`
`ID BODYGUARD
`Mark:
`Serial No: 78/633,548
`Opposition Number: 91172747
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`INTERSECTIONS, INC.
`
`Opposer
`
`V
`
`Opposition No. 91172747
`
`Attorney Docket No.
`2006-IBL-00002
`
`ID BODYGUARD, LLC
`
`Applicant
`
`DECLARATION OF MITCHELL M. MUSIAL IN SUPPORT OF APPL|CANT’S
`
`RESPONSE TO OPPOSER’S MOTION FOR SUMMARY JUDGMENT AND
`
`APPL|CANT’S CROSS MOTION FOR SUMMARY JUDGMENT
`
`I, Mitchell M. Musial, hereby declare under the penalty of perjury, state as
`
`follows:
`
`1.
`
`I am an attorney licensed to practice law listed at Michigan and a member
`
`of the firm Mitchell M Musial II, PLLC.
`
`2. I represent Applicant, ID Bodyguard, LLC, in the above identified
`
`Opposition.
`
`3. I received a Motion for Summary Judgment from Opposer dated May 7,
`
`2007.
`
`4. The Motion for Summary Judgment from Opposer dated May 7, 2007 is
`
`based in part upon statements alleged as fact, however unsupported, as to the
`
`allegedly confusing similarity in appearance, sound, connotation and commercial
`
`

`
`Exhibit A1
`
`ID BODYGUARD
`Mark:
`Serial No: 78/633,548
`Opposition Number: 91172747
`
`impression between App|icant’s “|D BODYGUARD” Mark and Opposer’s “|DENT|TY
`
`GUARD“ Mark.
`
`5. I personally located the evidence relied upon to support the present
`
`Response and Cross Motion for Summary Judgment.
`
`6. The documents set forth are copies of information found in electronic
`
`format or copies of original documents.
`
`7. Each document is authentic and was discovered in a location where one
`
`seeking to discover such a document would expect to find such a document.
`
`8. I personally located examples of marks in actual use, accompanying this
`
`Declaration, containing the morpheme “GUARD” for identity theft protection services
`
`identified as Exhibits A2, A4, A6, A9, A10, A12, A13, A15, A17, A18.
`
`10.
`
`I personally located current registered and pending third party marks at
`
`the United States Patent and Trademark Office through TESS, containing the
`
`morpheme “GUARD”, the summaries of which are attached hereto as Exhibit B.
`
`9.
`
`I personally located copies of the application for ID BODYGUARD and
`
`registrations for IDENTITY GUARD through TESS, attached hereto as Exhibit C.
`
`11.
`
`I personally located definitions for the words ID, BODYGUARD, and
`
`-2-
`
`

`
`Exhibit A1
`
`ID BODYGUARD
`Mark:
`Serial No: 78/633,548
`Opposition Number: 91172747
`
`GUARD, attached hereto as Exhibit D.
`
`12.
`
`I personally located copies of the application file history for ID
`
`BODYGUARD through the Trademark Applications and Registrations Retrieval
`
`(TARR) System at the USPTO website, TESS, attached hereto as Exhibit E.
`
`The forgoing is true to the best of my knowledge. Further Deponent Sayeth
`
`Not:
`
`Date: April 7, 2008
`
`By:
`
`Mitchell M. Musial ll
`
`
`
`

`
`OnGuard Online — Identity Theft
`
`http://onguardonline.g0V/idthefthtml
`
`Exhibit
`A2
`
`
`
`OnGuardCinline.gov provides practical tips from the federal government and
`the technology industry to help you be on guard against Internet fraud,
`secure your computer, and protect your personal information.
`
`File a Complaint
`About Us
`Topics
`Espafiol
`Resources
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`
`.,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,4,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,
`
`
`
`ID Theft Links and Resources
`
`Duwnioad this page in PB?
`format
`
`Send this page to :5 friend
`
`The FTC's ID Theft Site
`
`Get Your Free Annual Credit
`Report Oniine
`
`National Criminal Justice
`Reference Service
`
`video on identity ‘(heft from i-SAFEb11,1111,1111,1111,1111,1111,1111,1111,1111,1111,1111,1111,1111,1111,1111,1111,1111,1111,1111,1111,1111,1111,,,,,,,,,,,,,,,,,,,,,,,,
`
`§)i:'ectory of Crime Victim Sewices
`
`LLS. Foe:-ta! Inspectors
`
`Bepa rtment of the Treasury
`
`Fraderai Deposit Insurance
`Corporatiore -{FBXC}
`
`Students 8; Teachers; -- Watch a
`
`
`
`
`[:247 ggéffiwv"fi?Zv/f////////
`
`
`f\l“~§R\
`
`En espafiol
`
`SW1} 7'’!‘or1
`
`7,2; ,,. zdu
`
`,,
`
`(n4
`
`Quick Facts
`
`It's important to protect your personal information, and to take certain steps quickly
`to minimize the potential damage from identity theft if your information is
`accidentally disclosed or deliberately stolen:
`
`0 Place a “Fraud Alert” on your credit reports, and review those reports carefully.
`Notifying one of the three nationwide consumer reporting companies is
`sufficient.
`
`0 Close any accounts that have been tampered with or established fraudulently.
`
`0 File a police report with local law enforcement officials. This is an essential step
`in claiming your rights.
`
`0 Report your theft to the Federal Trade Commission, or
`
`
`
`7, by phone, or by mail.
`
`And before ID theft happens, learn how to safeguard your information at
`
`.‘__j()'\.’/l5uZ.'-UT?‘-’-'..
`
`identity Theft: What To Do If Your Shersonai info:-matiora Has fie-en
`Compromiseti
`The bottom line for online threats like phishing, spyware, and hackers is identity theft. ID
`theft occurs when someone uses your name, Social Security number, credit card number
`or other personal information without your permission to commit fraud or other crimes.
`That's why it's important to protect your personal information. To find out how to deter
`and detect identity theft, visit ftc.gr:v,’:rJtnert.
`
`But, according to OnGuard Online, if your personal information is accidentally disclosed or
`deliberately stolen, taking certain steps quickly can minimize the potential for the theft of
`your identity.
`
`0 Place a "Fraud Alert" on your credit reports, and review the reports
`carefully. The alert tells creditors to follow certain procedures before they open new
`accounts in your name or make changes to your existing accounts. The three
`nationwide consumer reporting companies have toll—free numbers for placing an
`initial 90-day fraud alert; a call to one company is sufficient:
`
`c> Experian: wwwexp-' mcom, 1-888-EXPERIAN (397-3742)
`
`0 Equifax: www.eq:iifax.<:om, 1-800-525-6285
`
`0 TransUnion: wvvw,trens:.:nic-lmcom, 1-800-680-7289
`
`Placing a fraud alert entitles you to free copies of your credit reports. Look
`for inquiries from companies you haven't contacted, accounts you didn't
`open, and debts on your accounts that you can't explain.
`
`ID Theft Related Topics
`
`finishing
`
`Spyware
`
`0 Close accounts. Close any accounts that have been tampered with or established
`fraudulently:
`
`Spam §a:ams
`\KKKKKKKKKKKKKKKKKKKKKKKKKKKKKKKKKKKKKKKKKKK\\\\\\\\\\\\\\\\\\\\\\\Q
`
`0 Call the security or fraud departments of each company where an account was
`opened or changed without your okay. Follow up in writing, with copies of
`supporting documents.
`
`0 Use the ID Theft Affidavit at rtc.gr;v,’:rJtner'r_ to support your written statement.
`
`0 Ask for verification that the disputed account has been closed and the fraudulent
`debts discharged.
`
`0 Keep copies of documents and records of your conversations about the theft.
`
`0 File a police report. File a report with law enforcement officials to help you with
`creditors who may want proof of the crime. This report will also help you claim your
`rights as a victim of ID theft.
`
`:‘~£:‘.t\~*.-' to sew
`
`. .. .t.:m C.
`If your information has been misused,
`file a report about your identity theft
`with the police, and file a complaint
`with the Federal Trade Commission at
`ftc.g-av/idtheft. Read Take Charge:
`Figl“-tir-g iv) k Against Identity Theft
`for detailed information on other
`steps to take in the wake of identity
`theft.
`
`lofl
`
`0 Report the theft to the Federal Trade Commission. Your report helps law
`enforcement officials across the country in their investigations.
`
`3/23/2008 6:19 PM
`
`

`
`Credit reporting, credit monitoring and identity theft protection.
`
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`
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`Exhibit A4
`
` \
`
`
`
`Receive up-to-date credit
`reports, credit scores and
`credit monitoring — so you're
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`Maintain control over your ID
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`Enjoy a range of essential
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`hands.
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`matnttas §§3r'_Es§s.*§
`5 rfietyauritémt 2}‘.
`
`Did You Know?
`A person falls victim to identity theft
`every 3.5 seconds.
`
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