Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA167572
`ESTTA Tracking number:
`10/09/2007
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91179185
`Defendant
`Middleware Associates, LLC
`MIDDLEWARE ASSOCIATES, LLC
`1697 E CLASSICAL BLVD
`DELRAY BEACH, FL 33445-1204
`
`patrick@ma-security.com
`Answer
`Patrick Conners
`technical@ma-security.com
`/patrickconners/
`10/09/2007
`91179185_ma_response.pdf ( 6 pages )(281909 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

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`NOTICE OF OPPOSITION
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`Opposer AuthenTec, Inc, a Delaware corporation whose address is 709 S. Harbor City Blvd,
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`Suite 400, Melbourne, Florida, 32901, believes it will be damaged by registration of the mark
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`AUTI-IENTIGO, shown in Serial No. 78/973,389, in international Classes 9 for “facilities management
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`software, namely, software to control building environmental, access and security systems,” and hereby
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`opposes registration of the application i11 Class 9, pursuant to a11 Extension of Time allowed on May 22,
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`2007.
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`As grounds for opposition it is alleged that:
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`1.
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`Applicant seeks to register the mark AUTHENTIGO as a trademark for the above-
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`deseribed goods, as evidenced by the publication of the mark in the Official Gazette on May 1, 2007.
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`ANSWER: Correct
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`2.
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`Applicant filed its application on September 13, 2006, based on its intent to use the mark
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`in commerce and has not yet filed an Amendment to Allege Use.
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`ANSWER: Incorrect: Middleware Associates has used the mark AuthentiGO”“ with its
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`customers, potential customers and has produced several publications using the
`mark on its web site.
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`3.
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`Opposer is the owner of the U.S. Trademark Registration No. 2,670,775 for the mark
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`AUTHENTEC (Stylized), which registered on the Principal Register on January 7, 2003.
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`ANSWER: Correct
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`4.
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`Opposer is also the owner of the U.S. Application Serial No. 77/226,868 for the standard
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`character mark AUTHENTEC, which was filed on July 16, 2007 but has not yet been assigned to an
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`Examining Attorney.
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`ANSWER: Correct
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`

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`5.
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`Opposer is also the owner of various other trademarks directed to goods and services
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`within the biometric security industry, including PERSONAL SECURITY FOR THE REAL WORLD
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`(U.S. Registration No. 2,470,452), TRUEPRINT (U.S. Registration No. 2,740,918), ENTREPAD (U.S.
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`Registration No. 2,801,537), and THE POVVER OF TOUCH (U.S. Registration No. 3,105,183).
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`ANSWER: Correct
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`6.
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`Opposer has used its marks AUTHENTEC (Stylized) and AUTHENTEC in commerce
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`in connection with “authentication and identification products, namely, computer software, biometric
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`matching software, biometric indexing software, and cryptographic protection software, and related
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`hardware, namely, fingerprint sensors and associated computer chips and electronic circuitry for use in
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`determining the identity of unknown persons and to verify the claimed identity of persons” in
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`International Class 9 since at least as early as January of 1996.
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`ANSWER:Correct
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`7.
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`Opposer has extensively promoted and continuously used its marks throughout the U.S.,
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`and has made significant sales of products under each of its marks and, as a result, Opposer’s marks have
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`developed and represent valuable goodwill to Opposer.
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`ANSWER: Correct
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`8.
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`Opposer has exclusive rights to use its
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`federally registered mark AUTHENTEC
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`(Stylized) in the U.S. in connection with those goods identified in its registration.
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`ANSWER: Correct
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`9.
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`Opposer used the marks AUTHENTEC (Stylized) and AUTHENTEC in commerce
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`prior to Applicant’s filing of its application and, on information and belief, before Applicant’s first use of
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`its mark in connection with its goods.
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`ANSWER: Correct
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`

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`10.
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`Applicants mark AUTHENTIGO is confusingly and deceptively similar to Opposer’s
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`marks AUTHENTEC (Stylized) a11d AUTHENTEC. Applieant’s mark is Very similar in sight, sound,
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`connotation, and commercial impression to both of Opposer’s marks.
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`ANSWER: The names are similar, yes; however there are many many trademarks
`which have been issued and used in commerce which sound similar yet the
`application is so broad that prohibiting similar names which use the root of the same
`word, in this case, “authentication”, is not justification for denying the use of
`AUTHENTIGO within this product category.
`(see complete answer in response to
`#15 below)
`
`ll.
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`Applicant’s goods, “facilities management software, namely, software to control building
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`environmental, access and security systems” in International Class 9, are Very similar and closely related
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`to Opposer’s goods, “authentication and identification products, namely, computer software, biometric
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`matching software, biometric indexing software, and cryptographic protection software, and related
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`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
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`International Class 9.
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`ANSWER: The opposer had the full right to choose facilities management software,
`namely , software to control building environmental, access and security systems as
`their class, but in fact the opposer did not, and rightfully so because their products
`are in a special niche market of “fingerprint biometrics”. The defendant's product
`AuthentiGO”" has absolutely nothing in common with “fingerprint biometrics”. The
`broad definition of Opposer’s goods referenced above would also render the Live
`trademarks of many companies (further identified in response to #15 below) to be
`invalid. Middleware Associates believes the opposer is unjustified in their claim that
`the two names are so similar within a technology category that is broad as to render
`ANY use of the root word “authenticate”, sic, “authen*****” within the field of
`“security”, broadly defined but not limited in any way, as to be unfounded.
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`12.
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`Upon information and belief, Applicant’s channels of trade and class of purchasers are
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`likely to be Very similar to those of Opposer.
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`ANSWER: AuthentiGO”“ is software that is used for facility management and the
`control of security systems. To suggest that technology, with its various methods of
`adoption and use by the end user community could in any way restrict the rights of
`Middleware Associates to represent and use AuthentiGO, is simply too broad to be
`valid.
`
`

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`13.
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`Due to the similarity between Applicant’s mark a11d goods a11d Opposer’s previously used
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`marks and goods, and the likely similarity of the respective channels of trade and classes of purchasers,
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`the registration of Applicant’s mark will cause great damage and injury to Opp oser. Persons familiar with
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`Opposer’s marks and goods would likely confuse Applicant‘s goods with those provided by Opposer.
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`Any defect, objection or fault found with App licant’s goods offered under the mark AUTHENTIGO may
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`reflect upon a11d expose Opposer to liability, a11d seriously injure the reputation that Opposer has
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`established for its goods.
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`ANSWER: Middleware Associates has been using this mark AuthentiGO”" for over two
`years now. The opposer has absolutely no proof of confusion of goods within this
`time period.
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`Regarding liability, how would the opposer’s reputation be damaged more by
`AUTHENTIGO”" than by the following federally registered marks: VERGENCE
`AUTHENTICATOR, AUTHENTIUM ESP, ZERO-TOUCH CONSUMER AUTHENTICATION,
`YOUR AUTHENTIC VOICE, AUTHENTIUM, ActivIdentity Authentic8, authenticity,
`AUTHENTINET, AUTHENTISEC, AUTHENTICARE, AUTHENTIVERSE, AUTHENTIX,
`AUTHENEX, AUTHENTOS?
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`14.
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`If Applicant is granted the registration herein opposed, it would obtain at least a prima
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`facie exclusive right to use the mark AUTHENTIGO in the U.S., thereby causing damage and injury to
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`Opposer.
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`ANSWER: We disagree (see explanation below in response to #15)
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`15.
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`Registration of AppliCant’s mark is likely to dilute the ability of Oppose1"s marks to
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`identify and distinguish Opposer as the source of its goods in the U.S. and worldwide.
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`ANSWER: AuthentiGO”“ is clearly a product of Middleware Associates, LLC a Florida
`based company. Article 15 would only hold true if the company Authentec were to
`develop security or facility management software under the same name. If the
`oppose did this then they would be in violation of the defendant product trademark
`“AUTHENTIGO”“”. The response below is the basis of our claim that denying the
`legal right of the trademark AuthentiGO would represent a predatory ancl
`monopolistic use of the root of the word “authenticate”, sic, “authen*” by ANY other
`company whose products are used in the field of security; whether that be building
`security, personal security, information security, etc.
`
`In conclusion:
`
`Middleware Associates has been actively using the AUTHENTIGOT“ trademark for
`over two years and has not
`infringed upon the trademarked company name,
`AUTHENTEC; our position is that the root of the word “authenticate” has been used
`
`

`
`for years in international commerce and many times with specific application having
`to do with the various
`technologies
`for authenticating an identity.
`These
`technologies and their application are not
`limited to access control or facilities
`management, rather include the broad spectrum of end uses including computer
`networks, signature or voice verification, biometrics, smartcards, authentication
`tokens, personal identification numbers (PIN), etc. that are commonly related to the
`field of “security”. The word Authentication (from Greek au9avTIKog;
`real or
`genuine, from authentes; author) is the act of establishing or confirming something
`(or someone) as authentic, that is, that claims made by or about the thing are true.
`Authenticating
`an
`object may mean
`confirming
`its
`provenance, whereas
`authenticating a person often consists of verifying their identity. Authentication
`depends upon one or more authentication factors.
`
`A very recent search of the uspto.gov database in October, 2007 yields 174 records
`found when doing an advanced search for the word combinations “authen*” and
`“computer” alone. There exist many other permutations and combinations that
`could be performed to yield similar search results, however, the inexhaustibility of
`combinations should suffice that this sample set alone yields that the use of the root
`of the word “authentication” is,
`in no way, the lone possession of AUTHENTEC when
`opposing Middleware Associates legal rights to use AUTHENTIGO. The search of 174
`records yields many live and dead trademarks, yet a
`small
`sample of Live
`trademarks found using the aforementioned search is listed below:
`
`MATRIXAUTHENTICATION, VERGENCE AUTHENTICATOR, AUTHENTIUM ESP, ZERO-
`TOUCH CONSUMER AUTHENTICATION, YOUR AUTHENTIC VOICE, AUTHENTIUM,
`ActivIdentity
`Authentic8,
`authenticity,
`AUTHENTINET,
`AUTHENTISEC,
`AUTHENTICARE, AUTHENTIVERSE, AUTHENTIX, AUTHENEX, AUTHENTOS (again; this
`list is in NO way exhaustive of the various permutations and combinations that MAY
`be found when performing an infinite number of searches of the uspto.gov database)
`
`Middleware Associates believes, based upon the body of evidence provided to refute
`the claims of the opposer, AUTHENTEC, that this small sample of Live trademarks
`that have in “some way” affiliation or connection to the term “authenticate”, clearly
`demonstrates that Middleware Associates has full legal authority to its live registered
`trademark, AUTHENTIGO and that it has in NO way infringed upon the rights of
`AUTHENTEC to promote their company name and respective trademarks, just as
`Middleware Associates has the right to promote AUTHENTIGO and ALL of the other
`companies referenced above have the same rights to promote their trademarked
`company or brand names.
`
`in
`Middleware Associates seeks a default judgment in favor of the defendant, itself,
`the opposition of AUTHENTEC in this action. To continue an exhaustive and costly
`legal battle would simply be counter to the basis of law that the uspto.gov, by its
`definition, was founded upon.
`
`Middleware Associates will continue to engage its federal, lawful right to continue to
`use the trademark “AUTHENTIGO”"” and associated images.
`
`Respectfully,
`
`/Patrick Conners/
`Electronic signature above
`
`

`
`Middleware Associates
`1697 E. Classical Blvd.
`
`Delray Beach, FL 33445
`technica|@ma-security.com