`ESTTA199351
`ESTTA Tracking number:
`03/19/2008
`
`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
`Granted to Date
`of previous
`extension
`Address
`
`Authentec, Inc.
`03/19/2008
`
`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 South Orange AvenueSuite 1401
`Orlando, FL 32801
`UNITED STATES
`dsigalow@addmg.com, heffernan@addmg.com, bdeacon@addmg.com
`Phone:407 841-2330
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`77192307
`03/19/2008
`
`Publication date
`Opposition
`Period Ends
`
`11/20/2007
`03/19/2008
`
`First Data Solutions L.L.C.
`6855 Pacific Street
`Omaha, NE 68106
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 045.
`All goods and services in the class are opposed, namely: Identification verification services, namely,
`providing authentication of personal and business identification information
`
`Grounds for Opposition
`
`Deceptiveness
`False suggestion of a connection
`Priority and likelihood of confusion
`
`Trademark Act section 2(a)
`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
`
`Application Date
`
`08/19/1999
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`AUTHENTEC
`
`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
`
`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
`
`Attachments
`
`75780793#TMSN.gif ( 1 page )( bytes )
`77226868#TMSN.jpeg ( 1 page )( bytes )
`IL4693.PDF ( 5 pages )(14651 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
`
`/Bridget Heffernan Labutta/
`Bridget Heffernan Labutta
`03/19/2008
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application Serial No. 77/192,307
`Published in the Official Gazette on November 20, 2007
`
`AuthenTec, Inc. ,
`
`V.
`
`Opposer,
`
`First Data Solutions, LLC,
`
`Applicant.
`
`Opposition No:
`Mark: AUTHENTIQ
`
`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 AUTHENTIQ, shown in U.S. Application Serial No. 77/192,307, in International Class 45
`
`for “Identification verification services, namely, providing authentication of personal and
`
`business identification information,” and hereby opposes registration of the application in Class
`
`45, pursuant to an Extension of Time allowed on November 28, 2007.
`
`As grounds for opposition it is alleged that:
`
`1.
`
`Applicant seeks to register the mark AUTHENTIQ as a trademark for the above-
`
`described services, as evidenced by the publication of the mark in the Official Gazette on
`
`November 20, 2007.
`
`
`
`2.
`
`Applicant filed its application on May 29, 2007, based on its intent to use the
`
`mark in commerce and has not yet filed an Amendment to Allege Use.
`
`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 and was published for
`
`opposition on December 4, 2007.
`
`5.
`
`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 1996.
`
`6.
`
`Opposer is also the owner of various other trademarks directed to authentication
`
`and identification products, 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).
`
`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 valuable goodwill.
`
`8.
`
`The marks AUTHENTEC (Stylized) and AUTHENTEC are distinctive and are
`
`valuable assets of Opposer.
`
`
`
`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 AUTHENTIQ 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 services, “Identification verification services, namely, providing
`
`authentication of personal and business identification information” in International Class 45, 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 International 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 services 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
`
`Opposer. Persons familiar with Opposer’s marks and goods would likely confuse Applicant’s
`
`services with those provided by Opposer. Any defect, objection or fault found with Applicant’s
`
`goods offered under the mark AUTHENTIQ 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 AUTHENTIQ 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. 77/192,307 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,
`
`/Bridget Heffernan Labutta/
`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: dsigalow @ addm gcom
`bheffernan
`addm gcorn
`
`Attorneys for Opposer
`AuthenTec, Inc.
`
`
`
`CERTIFICATE OF SERVICE
`
`I certify that a true and correct copy of the foregoing was served by First Class Mail on
`March 19 2008 to:
`
`Bradley Prendergast, Esq.
`Sutherland Asbill & Brennan LLP
`
`1275 Pennsylvania Ave NW Fl 2
`Washington DC 20004-2415
`
`/Beverley Deacon/
`Signature
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