Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA159337
`ESTTA Tracking number:
`08/28/2007
`
`Filing date:
`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
`Granted to Date
`of previous
`extension
`Address
`
`Authentec, Inc.
`08/29/2007
`
`709 S. Harbor City Blvd Suite 400
`Melbourne, FL 32901
`UNITED STATES
`
`Attorney
`information
`
`David L. Sigalow
`Allen, Dyer, Doppelt, Milbrath & Gilchrist, P.A.
`255 S. Orange Avenue Suite 1401
`Orlando, FL 32801
`UNITED STATES
`dsigalow@addmg.com Phone:4078412330
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`78973389
`08/28/2007
`
`Publication date
`Opposition
`Period Ends
`
`05/01/2007
`08/29/2007
`
`Middleware Associates, LLC
`1697 E Classical Blvd
`Delray Beach, FL 33445
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 009.
`All goods and services in the class are opposed, namely: Facilities management software, namely,
`software to control building environmental, access and security systems
`
`Grounds for Opposition
`
`Deceptiveness
`Priority and likelihood of confusion
`
`Trademark Act section 2(a)
`Trademark Act section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`2670775
`
`01/07/2003
`
`Word Mark
`Design Mark
`
`AUTHENTEC
`
`Application Date
`
`08/19/1999
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 1996/01/00 First Use In Commerce: 1996/01/00
`Authentication and identification products, namely, computer software, biometric
`matching software, biometric indexing software, and cryptographic protection
`software, and related hardware, namely, fingerprint sensors and associated
`computer chips and electronic circuitry for use in determining the identity of
`unknown persons and to verify the claimed identity of persons
`
`U.S. Application
`No.
`Registration Date
`
`77226868
`
`NONE
`
`Application Date
`
`07/11/2007
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`AUTHENTEC
`
`NONE
`
`Class 009. First use: First Use: 1996/00/00 First Use In Commerce: 1996/00/00
`Authentication and identification products, namely, computer software, biometric
`matching software, biometric indexing software, and cryptographic protection
`software, and related hardware, namely, fingerprint sensors and associated
`computer chips and electronic circuitry for use in determining the identity of
`unknown persons and to verify the claimed identity of persons; and graphical
`user interface display software for linking biometric devices with software
`applications and functions
`
`2470452
`
`Application Date
`
`08/19/1999
`
`07/17/2001
`
`Foreign Priority
`Date
`PERSONAL SECURITY FOR THE REAL WORLD
`
`NONE
`
`NONE
`
`Class 009. First use: First Use: 2000/08/20 First Use In Commerce: 2000/08/20
`authentication and identification products, namely, computer software, biometric
`matching software, biometric indexing software, and cryptographic protection
`software, and related hardware, namely, fingerprint sensors and associated
`computer chips and electronic circuitry for use in determining the identity of
`unknown persons and to verify the claimed identify of persons
`
`U.S. Registration
`No.
`Registration Date
`
`2740918
`
`07/29/2003
`
`Application Date
`
`11/16/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`TRUEPRINT
`
`NONE
`
`Class 009. First use: First Use: 1999/12/00 First Use In Commerce: 2001/09/00
`Authentication and identification products, namely, computer software, biometric
`matching software, biometric indexing software, and cryptographic protection
`
`

`

`software, and related hardware, namely, fingerprint sensors and associated
`computer chips and electronic circuitry for use in determining the identity of
`unknown persons and to verify the claimed identity of persons
`
`U.S. Registration
`No.
`Registration Date
`
`3105183
`
`06/13/2006
`
`Application Date
`
`12/20/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`Attachments
`
`THE POWER OF TOUCH
`
`NONE
`
`Class 009. First use: First Use: 2005/08/00 First Use In Commerce: 2005/08/00
`Authentication and identification products, namely, computer software, biometric
`matching software, biometric indexing software, and cryptographic protection
`software, and related hardware, namely, fingerprint sensors and associated
`computer chips and electronic circuitry for use in determining the identity of
`unknown persons and to verify the claimed identity of persons
`
`2801537
`
`12/30/2003
`
`ENTREPAD
`
`NONE
`
`Application Date
`
`10/07/2000
`
`Foreign Priority
`Date
`
`NONE
`
`Class 009. First use: First Use: 2001/02/00 First Use In Commerce: 2001/02/00
`Authentication and identification products, namely, biometric fingerprint sensors
`and electronic circuitry, namely, computer chips for use in determining the
`identity of unknown persons and to verify the claimed identity of persons
`
`75780793#TMSN.gif ( 1 page )( bytes )
`77226868#TMSN.jpeg ( 1 page )( bytes )
`75779001#TMSN.gif ( 1 page )( bytes )
`75850660#TMSN.gif ( 1 page )( bytes )
`78535432#TMSN.jpeg ( 1 page )( bytes )
`76142343#TMSN.gif ( 1 page )( bytes )
`HQ1330.PDF ( 4 pages )(74749 bytes )
`
`Signature
`Name
`Date
`
`/David L. Sigalow/
`David L. Sigalow
`08/28/2007
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application Serial No. 78/973,389
`Published in the Official Gazette on May 1, 2007
`
`AuthenTec, Inc.,
`
`V.
`
`Opposition No:
`
`Opposer,
`
`Middleware Associates, LLC
`
`Applicant.
`
`/
`
`NOTICE OF OPPOSITION
`
`Opposer AuthenTec, Inc., a Delaware corporation whose address is 709 S. Harbor City Blvd.,
`
`Suite 400, Melbourne, Florida, 32901, believes it will be damaged by registration of the mark
`
`AUTHENTIGO, shown in Serial No. 78/973,389, in International Classes 9 for “facilities management
`
`software, namely, software to control building environmental, access and security systems,” and hereby
`
`opposes registration of the application in Class 9, pursuant to an Extension of Time allowed on May 22,
`
`2007.
`
`As grounds for opposition it is alleged that:
`
`1.
`
`Applicant seeks to register the mark AUTHENTIGO as a trademark for the above-
`
`described goods, as evidenced by the publication of the mark in the Official Gazette on May 1, 2007.
`
`2.
`
`Applicant filed its application on September 13, 2006, based on its intent to use the mark
`
`in commerce and has not yet filed an Amendment to Allege Use.
`
`1
`
`

`

`3.
`
`Opposer is the owner of the U.S. Trademark Registration No. 2,670,775 for the mark
`
`AUTHENTEC (Stylized), which registered on the Principal Register on January 7, 2003.
`
`4.
`
`Opposer is also the owner of the U.S. Application Serial No. 77/226,868 for the standard
`
`character mark AUTHENTEC, which was filed on July 16, 2007 but has not yet been assigned to an
`
`Examining Attorney.
`
`5.
`
`Opposer is also the owner of various other trademarks directed to goods and services
`
`within the biometric security industry, including PERSONAL SECURITY FOR THE REAL WORLD
`
`(U.S. Registration No. 2,470,452), TRUEPRINT (U.S. Registration No. 2,740,918), ENTREPAD (U.S.
`
`Registration No. 2,801,537), and THE POWER OF TOUCH (U.S. Registration No. 3,105,183).
`
`6.
`
`Opposer has used its marks AUTHENTEC (Stylized) and AUTHENTEC in commerce
`
`in connection with “authentication and identification products, namely, computer software, biometric
`
`matching software, biometric indexing software, and cryptographic protection software, and related
`
`hardware, namely, fingerprint sensors and associated computer chips and electronic circuitry for use in
`
`determining the identity of unknown persons and to verify the claimed identity of persons” in
`
`International Class 9 since at least as early as January of 1996.
`
`7.
`
`Opposer has extensively promoted and continuously used its marks throughout the U.S.,
`
`and has made significant sales of products under each of its marks and, as a result, Opposer’s marks have
`
`developed and represent valuable goodwill to Opposer.
`
`8.
`
`Opposer has exclusive rights to use its
`
`federally registered mark AUTHENTEC
`
`(Stylized) in the U.S. in connection with those goods identified in its registration.
`
`9.
`
`Opposer used the marks AUTHENTEC (Stylized) and AUTHENTEC in commerce
`
`prior to Applicant’s filing of its application and, on information and belief, before Applicant’s first use of
`
`its mark in connection with its goods.
`
`

`

`10.
`
`Applicant’s mark AUTHENTIGO is confusingly and deceptively similar to Opposer’s
`
`marks AUTHENTEC (Stylized) and AUTHENTEC. Applicant’s mark is very similar in sight, sound,
`
`connotation, and commercial impression to both of Opposer’s marks.
`
`11.
`
`Applicant’s goods, “facilities management software, namely, software to control building
`
`environmental, access and security systems” in International Class 9, are very similar and closely related
`
`to Opposer’s goods, “authentication and identification products, namely, computer software, biometric
`
`matching software, biometric indexing software, and cryptographic protection software, and related
`
`hardware, namely, fingerprint sensors and associated computer chips and electronic circuitry for use in
`
`determining the identity of unknown persons and to verify the claimed identity of persons” in
`
`lntemational Class 9.
`
`12.
`
`Upon information and belief, Applicant’s channels of trade and class of purchasers are
`
`likely to be very similar to those of Opposer.
`
`13.
`
`Due to the similarity between Applicant’s mark and goods and Opposer’s previously used
`
`marks and goods, and the likely similarity of the respective channels of trade and classes of purchasers,
`
`the registration of Applicant’s mark will cause great damage and injury to Opp oser. Persons familiar with
`
`Opposer’s marks and goods would likely confuse Applicant’s goods with those provided by Opposer.
`
`Any defect, objection or fault found with Applicant’s goods offered under the mark AUTHENTIGO may
`
`reflect upon and expose Opposer to liability, and seriously injure the reputation that Opposer has
`
`established for its goods.
`
`14.
`
`If Applicant is granted the registration herein opposed, it would obtain at least a prima
`
`facie exclusive right to use the mark AUTHENTIGO in the U.S., thereby causing damage and injury to
`
`Opposer.
`
`

`

`15.
`
`Registration of Applicant’s mark is likely to dilute the ability of Opposer’s marks to
`
`identify and distinguish Opposer as the source of its goods in the U.S. and Worldwide.
`
`WHEREFORE, Opposer prays that Application Serial No. 78/973,389 be rejected,
`
`that this
`
`opposition be sustained, that the registration therein sought for the goods specified in International Class
`
`9 be refused, and that Opposer be granted such additional relief as the Board deems just and proper.
`
`Respectfully submitted,
`
`/David L. SigaloW/
`David L. Sigalow, Esquire
`Bridget C. Heffernan, Esquire
`Allen, Dyer, Doppelt,
`Milbrath & Gilchrist, P.A.
`
`255 South Orange Avenue, Suite 1401
`Orlando, Florida 32801
`Phone: 407 841-2330
`Fax: 407 841-2343
`
`E-mail: _£_l_§_i.§§.3l0V‘v’§*§€%§3/dd£§Z1.;‘§.:§§_€2322
`
`Attorneys for Opposer
`
`