throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA278219
`ESTTA Tracking number:
`04/15/2009
`
`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.
`04/15/2009
`
`100 Rialto Place Suite 100
`Melbourne, FL 32901
`UNITED STATES
`
`Attorney
`information
`
`Bridget Heffernan Labutta
`Allen, Dyer, Doppelt, Milbrath & Gilchrist, P.A.
`255 S. Orange AvenueSuite 1401
`Orlando, FL 32801
`UNITED STATES
`blabutta@addmg.com, dsigalow@addmg.com Phone:407-841-2330
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`International
`Registration No.
`Applicant
`
`77163242
`04/15/2009
`
`NONE
`
`Publication date
`Opposition
`Period Ends
`International
`Registration Date
`
`12/16/2008
`04/15/2009
`
`NONE
`
`Route1 Inc.
`155 University Avenue, Suite 1920
`Toronto, Ontario, M5M3B7
`CANADA
`Goods/Services Affected by Opposition
`
`Class 009.
`All goods and services in the class are opposed, namely: Computer software that provides a secure
`remote access connection service, delivered through any Internet Protocol enabled network
`
`Grounds for Opposition
`
`False suggestion of a connection
`Priority and likelihood of confusion
`Dilution
`
`Trademark Act section 2(a)
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`2740918
`
`07/29/2003
`
`Application Date
`
`11/16/1999
`
`Foreign Priority
`
`NONE
`
`

`
`Word Mark
`Design Mark
`
`TRUEPRINT
`
`Date
`
`Description of
`Mark
`Goods/Services
`
`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
`
`Attachments
`
`75850660#TMSN.gif ( 1 page )( bytes )
`KE1708.PDF ( 5 pages )(200379 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
`
`/David L. Sigalow/
`David L. Sigalow
`04/15/2009
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application Serial No. 77/163,242
`Published in the Official Gazette on December 16, 2008
`
`AuthenTec, Inc.,
`
`v.
`
`Route], Inc.,
`
`Opposer,
`
`Opposition No:
`Mark: TRUOFFICE
`
`Applicant.
`
`I
`
`NOTICE OF OPPOSITION
`
`Opposer AuthenTec, Inc., a Delaware corporation whose address is 100 Rialto Place,
`
`Suite 100, Melbourne, Florida, 32901, believes it will be damaged by registration of the mark
`
`TRUOFFICE, shown in U.S. Application Serial No. 77/163,242, in International Class 9 for
`
`“computer software that provides a secure remote access connection service, delivered through
`
`any Internet Protocol enabled network,” and hereby opposes registration of the application,
`
`pursuant to an Extension of Time allowed on December 30, 2008.
`
`As grounds for opposition it is alleged that:
`
`1.
`
`Applicant seeks to register the mark TRUOFFICE as a trademark for the above-
`
`described goods, as evidenced by the publication of the mark in the Official Gazette on
`
`December 16, 2008.
`
`2.
`
`Applicant filed its application on April 26, 2007, claiming priority further to
`
`corresponding Canadian Trademark Application No. 1,339,332, which has since issued into
`
`

`
`Canadian Registration No. TMA 718,639. Applicant’s application is also based its intent to use
`
`the mark in commerce within the United States.
`
`3.
`
`Opposer is the owner of the U.S. Trademark Registration No. 2,740,918 for the
`
`mark TRUEPRINT, which registered on the Principal Register on July 29, 2003 and was based
`
`upon an application filed on November 16, 1999.
`
`4.
`
`Opposer is also the owner of the following pending TRUE-based applications, all
`
`of which (with the exception of Application Serial No. 77/451,639 for the mark TRUEME) have
`
`been allowed:
`
` Mark
`
`TRUEFINGER
`TRUEVAULT
`TRUEMAGIC
`
`A lication Serial No.
`
`78/785,002
`77/206,847
`77/ 1 83 299
`
`
`
`Filing Date
`
`
`
`June 15, 2007
`June 15, 2007
`Ma 17, 2007
`Ari127,2007
`March 15, 2007
`March 13,2007
`Aril18, 2008
`
`
`
`5.
`
`Opposer has used its TRUEPRINT mark in commerce since at least as early as
`
`September 2001 in connection with the products set
`
`forth in the registration, namely,
`
`“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.
`
`6.
`
`Opposer is also the owner of various other trademarks directed to authentication
`
`and identification products,
`
`including AUTHENTEC (U.S. Registration No. 3,434,565),
`
`PERSONAL SECURITY FOR THE REAL WORLD (U.S. Registration No. 2,470,452),
`
`2
`
`

`
`ENTREPAD (U.S. Registration No. 2,801,537), THE POWER OF TOUCH (U.S. Registration
`
`No. 3,105,183), and A (& Design) (U.S. Registration No. 2,447,074).
`
`7.
`
`Opposer has extensively promoted and continuously used its marks throughout
`
`the United States, and has made significant sales of products under each of its marks and, as a
`
`result, Opposer’s marks have developed valuable goodwill.
`
`8.
`
`9.
`
`The TRUE-based marks are distinctive and valuable assets of Opposer.
`
`Opposer used the mark TRUEPRINT 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 within the United States.
`
`10.
`
`Applicant’s mark TRUEOFFICE is confusingly and deceptively similar to
`
`Opposer’s marks TRUPRINT,
`
`as well as Opposer’s other TRUE-based applications.
`
`Applicant’s mark is very similar in sight, sound, connotation, and commercial impression to
`
`Opposer’s TRUE-based marks.
`
`11.
`
`Applicant’s goods, “computer sofiware that provides a secure remote access
`
`connection service, delivered through any Internet Protocol enabled network” in International
`
`Class 9, are very similar and closely related to Opposer’s authentication and identification
`
`products, which are also in International Class 9.
`
`12.
`
`Upon infonnation 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 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 TRUEPRINT mark and goods would likely confuse Applicant’s
`
`3
`
`

`
`services with those provided by Opposer. Any defect, objection or fault found with Applicant’s
`
`goods offered under the mark TRUOFFICE 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
`
`primafacie exclusive right to use the mark TRUOFFICE in the United States, 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 United States and
`
`worldwide.
`
`WHEREFORE, Opposer prays that Application Serial No. 77/163,242 be rejected, that
`
`this opposition be sustained, that the registration sought by Applicant 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
`Allison R. Imber, 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@addmg.com
`aimber@addmg.com
`
`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
`April 15, 2009 to:
`
`Susan M. Freeciman, Esq.
`Nixon Peabody, LLP
`401 9111 St. NW STE 900
`
`Washington, DC 20004-2145
`
`Us

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket