Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA197165
`ESTTA Tracking number:
`03/10/2008
`
`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
`Entity
`Address
`
`Smartcomp, L.L.C.
`Limited Liability Company
`480 Johnson Road Suite 200
`Washington, PA 15301
`UNITED STATES
`
`Citizenship
`
`Pennsylvania
`
`Attorney
`information
`
`Sherry H. Flax
`Saul Ewing LLP
`500 E. Pratt St.
`Baltimore, MD 21202
`UNITED STATES
`sflax@saul.com Phone:410-332-8784
`Applicant Information
`
`77248247
`03/10/2008
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`Publication date
`Opposition
`Period Ends
`Intego Insurance Services, LLC
`190 Farmington Ave.
`Farmington, CT 06032
`UNITED STATES
`Goods/Services Affected by Opposition
`
`02/19/2008
`03/20/2008
`
`Class 036. First Use: 2007/07/11 First Use In Commerce: 2007/08/01
`All goods and services in the class are opposed, namely: Workers' Compensation service that utilizes
`a customer's payroll information to calculate, process, and transmit insurance premiums
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`
`Design Mark
`Description of
`Mark
`
`2753851
`
`Application Date
`
`05/14/2001
`
`08/19/2003
`
`Foreign Priority
`Date
`UNIVERSAL SMARTCOMP THE SMART WAY TO MANAGE YOUR INJURED
`WORKERS.
`
`NONE
`
`NONE
`
`
`ESTTA197165
`ESTTA Tracking number:
`03/10/2008
`
`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
`Entity
`Address
`
`Smartcomp, L.L.C.
`Limited Liability Company
`480 Johnson Road Suite 200
`Washington, PA 15301
`UNITED STATES
`
`Citizenship
`
`Pennsylvania
`
`Attorney
`information
`
`Sherry H. Flax
`Saul Ewing LLP
`500 E. Pratt St.
`Baltimore, MD 21202
`UNITED STATES
`sflax@saul.com Phone:410-332-8784
`Applicant Information
`
`77248247
`03/10/2008
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`Publication date
`Opposition
`Period Ends
`Intego Insurance Services, LLC
`190 Farmington Ave.
`Farmington, CT 06032
`UNITED STATES
`Goods/Services Affected by Opposition
`
`02/19/2008
`03/20/2008
`
`Class 036. First Use: 2007/07/11 First Use In Commerce: 2007/08/01
`All goods and services in the class are opposed, namely: Workers' Compensation service that utilizes
`a customer's payroll information to calculate, process, and transmit insurance premiums
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`
`Design Mark
`Description of
`Mark
`
`2753851
`
`Application Date
`
`05/14/2001
`
`08/19/2003
`
`Foreign Priority
`Date
`UNIVERSAL SMARTCOMP THE SMART WAY TO MANAGE YOUR INJURED
`WORKERS.
`
`NONE
`
`NONE
`
`
`
`Goods/Services
`
`Class 042. First use: First Use: 2001/05/00 First Use In Commerce: 2001/05/00
`Medical case management, workers compensation panel development and
`coordination of care for injured employees
`
`U.S. Application
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`NONE
`
`NONE
`
`NONE
`
`Application Date
`
`Foreign Priority
`Date
`
`NONE
`
`Attachments
`
`76255788#TMSN.gif ( 1 page )( bytes )
`int4D6D.PDF ( 3 pages )(31003 bytes )
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Signature
`Name
`Date
`
`/sherry flax/
`Sherry H. Flax
`03/10/2008
`
`
`
`NOTICE OF OPPOSITION
`
`Opposer, Smartcomp, LLC, a limited liability company organized and existing
`
`under the laws of the Commonwealth of Pennsylvania, believes that it will be damaged by
`
`registration of the mark SMARTCOMP, as shown in Serial No. 77248247, and hereby opposes
`
`the same. As grounds of opposition, it is alleged that:
`
`l.
`
`Opposer is a physical medicine rehabilitation company and scheduling
`
`service that provides its services to injured workers. It schedules physical therapy, occupational
`
`therapy and chiropractic services for its clients from a network of providers and provides billing,
`
`bill review, and re—pricing services. Opposer provides its services throughout the United States.
`
`2.
`
`Opposer owns the registration for the service mark UNIVERSAL
`
`SMARTCOMP THE SMART WAY TO MANAGE YOUR INJURED WORKERS, U.S. Reg.
`
`No. 2753851, for use in connection with “medical case management, workers compensation
`
`panel development and coordination of care for injured employees,” in International Class 42.
`
`Opposer has been using the mark in interstate commerce on a continuous basis since at least as
`
`early as May 2001.
`
`3.
`
`Opposer has filed an application to register SMARTCOMP, U.S. Ser. No.
`
`77417330, for use in connection with “Case management services, namely, the coordination of
`
`necessary medical services, vocational issues and educational services for persons injured at
`
`work,” in International Class 45. The application is based on actual used in interstate commerce
`
`on a continuous basis since at least as early as May 2001.
`
`4.
`
`Pursuant to Application Serial No. 77248247, Applicant Intego Insurance
`
`Services, LLC (“Applicant”), seeks to register SMARTCOMP as a service mark for “workers”
`
`compensation service that utilizes a customer's payroll information to calculate, process, and
`
`
`
`transmit insurance premiums” in International Class 36. Applicant alleges as its filing basis
`
`actual use of the mark in commerce as of August 1, 2007. The mark was published in the
`
`Official Gazette on February 19, 2008.
`
`5.
`
`Opposer has developed exceedingly valuable goodwill in its
`
`SMARTCOMP mark. By virtue of its efforts and the expenditure of considerable sums for
`
`promotional activities, and by virtue of the excellence of its services, Opposer has gained a
`
`valuable reputation in connection with providing comprehensive medical case management and
`
`related services for injured workers.
`
`6.
`
`There is no issue as to priority of use. Opposer has used SMARTCOMP in
`
`interstate commerce since at least as early as May 2001. Accordingly to its application,
`
`Applicant’s date of first use is August 1, 2007.
`
`7.
`
`Opposer hereby opposes registration of SMARTCOMP because it is
`
`confusingly similar to Opposer’s SMARTCOMP and UNIVERSAL SMARTCOMP THE
`
`SMART WAY TO MANAGE YOUR INJURED WORKERS marks. Applicant seeks
`
`registration for nearly identical services as are provided by Opposer. Because both marks are
`
`used in connection with providing billing and management services for injured workers, the
`
`channels of trade are nearly identical and use of the same mark is highly likely to cause
`
`confusion as to the source of the services among consumers.
`
`8.
`
`If Applicant is granted the registration herein opposed, it would thereby
`
`obtain at least a primafacie exclusive right to the use of the mark. Such registration would be a
`
`source of damage and injury to Opposer. Opposer would lose the value of the good will
`
`associated with its use of its SMARTCOMP and UNIVERSAL SMARTCOMP THE SMART
`
`WAY TO MANAGE YOUR INJURED WORKERS marks. Applicant's use of SMARTCOMP
`
`
`
`would cause confusion and deception as to the source, origin or sponsorship of its services in
`
`trade in Violation of the Lanham Act, 15 U.S.C. § 1114(1).
`
`WHEREFORE, Opposer prays that the application Serial No. 77248247 be
`
`rejected, and that the mark therein sought for the services specified in the application be denied
`
`and refused.
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