Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA423377
`ESTTA Tracking number:
`08/04/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91195673
`Plaintiff
`Trusted Systems, Inc.
`MICHAEL G LEAHY
`KLOS LOURIE LEAHY PA
`2007 IDEWATER COLONY DRIVE, SUITE 2B
`ANNAPOLIS, MD 21401
`UNITED STATES
`mgleahy@klllaw.com
`Motion to Suspend for Civil Action
`Michael G. Leahy
`mgleahy@klllaw.com
`/Michael G. Leahy/
`08/04/2011
`Line Filing Error.Attachements.08042011.pdf ( 14 pages )(365236 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`ESTTA423377
`ESTTA Tracking number:
`08/04/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91195673
`Plaintiff
`Trusted Systems, Inc.
`MICHAEL G LEAHY
`KLOS LOURIE LEAHY PA
`2007 IDEWATER COLONY DRIVE, SUITE 2B
`ANNAPOLIS, MD 21401
`UNITED STATES
`mgleahy@klllaw.com
`Motion to Suspend for Civil Action
`Michael G. Leahy
`mgleahy@klllaw.com
`/Michael G. Leahy/
`08/04/2011
`Line Filing Error.Attachements.08042011.pdf ( 14 pages )(365236 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Trusted Systems, Inc.
`118 Round Bay Road
`Severna Park, Maryland 21146
`Opposer
`
`v.
`
`Trusted Federal Systems, Inc.
`1 122 Bettstrail Way
`Potomac, Maryland 20854
`Applicant
`
`*
`
`*
`
`=z<
`
`*
`
`*
`
`*
`
`Serial No. 7793 8309
`
`Opposition No. 91 195673
`
`LINE - NOTICE OF FILING ERROR
`
`Opposer, Trusted Systems, Inc., files the attached LINE and COMPLAINT TO CANCEL
`
`REGISTRATION OF TRADE NAME in substitution for PLAINTIFFS MOT T0 SUSP PEND
`
`DISP CIV ACTION, Prosecution History Item # 18, because Item #18, as submitted did not
`
`incorporate the COMPLAINT TO CANCEL REGISTRATION OF TRADE NAME.
`
`Respectfitlly submitted,
`
` By: Michael G. Leah_
`
`Klos, Lourie & Lourie, P.A.
`2007 Tidewater Colony Drive, 2B
`Annapolis, Maryland 21401
`443-569-0234
`
`- mgleahy@l_{lllaw.oom
`
`August 4, 2011
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy of the foregoing Line and a copy of the COMPLAINT TO
`CANCEL REGISTRATION OF TRADE NAME has been sent via First Class Mail, postage
`prepaid to Applicant’s counsel this 4th day of August, 2011 to:
`
`Morris E. Turek, Esq.
`167 Lamp & Lantern Village, #220
`Chesterfi (1, MO 63017
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Trusted Systems, Inc.
`118 Round Bay Road
`Severna Park, Maryland 21146
`Opposer
`
`v.
`
`.
`
`Trusted Federal Systems, Inc.
`1122 Bettstrail Way
`Potomac, Maryland 20854
`Applicant
`
`*
`
`*
`
`3k
`
`*
`
`*
`
`*
`
`'
`Serial No. 77933309
`
`_
`
`Opposition No. 91 195673
`
`LINE
`
`.
`fr‘
`
`i E E
`
`:
`1
`
`I
`
`Opposer, Trusted Systems, Inc., gave notice to the Board and the Applicant, Trusted
`
`Federal Systems, Inc., that Opposer of its initiation of a COMPLAINT TO CANCEL
`
`-REGISTRATION OF TRADE NAME against Applicant in the Circuit Court for Montgomery '
`
`County, Maryland on August 3, 2011.
`
`Opposer has not yet received a Case Number from the Circuit Court for Montgomery
`
`County, Maryland as of this date, but provides a copy ofthe COMPLAINT TO CANCEL
`
`. REGISTRATION OF TRADE NAME, as filed, to the Board herewith.
`
`
`
`Respectfully submitted,
`
` .
` August 4, 2011
`
`Klo lourie 8: Lourle, P. * .
`2007 Tidewater Colony Drive, 2B
`Annapolis, Maryland 21401
`443-569-0234
`
`mgLeahy@11iaw.com
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy of the foregoing Line and a copy of the COMPLAINT TO
`CANCEL REGISTRATION OF TRADE NAME has been sent via First Class Mail, postage
`prepaid to Applicant's counsel this 4th day of August, 2011 to:
`
`'
`Morris E. Turek, Esq.
`167 Lamp 8: Lantern Village, #220
`Chesterfield, MO 63017 »_
`
`
`
`
`
`Circuit Court for M0!‘-tgomg County
`
`.
`City or County
`CIVIL - NON—DOMESTIC CASE INFORIVIATION REPORT
`
`~
`
`
`I HIECTIOIVS:
`
`
`
`
`
`
`CASE NAME, Trusted Systems, Inc.
`-
`Plninfiff
`
`
`Anticipated length oftrial:L ham or __:days
`No
`Yes No Ifyes,
`#(s), ifkhown:
`
`(Clerk no insm)
`vs. Trusted Federal Systems, Inc.
`Defendant
`
`CASE NUMBER
`
`
`
`Plaintiff: 172110 Infirrmation Report must be completedand attached to the complaintfiledwith the Clerk ofCourt
`zmlessyour case is exemptedfiom the reguirement by the Ch1'efJudge ofthe Court ofAppeals‘pursuant to Rule 2-!I[(0).
`
`' capymust be includedfor each dqfendam to be served.
`'
`Dgf'éudaua': You mustfile an Iujbrmation
`
`
`
`NATURE OF ACTION
`(CHECK ONE BO
`
`DAMAGESIRELIEF
`
` A. TORTS
`
`
`
`
`
`
`
`
`
`
`
`.
`
`E]Medical Bills
`s
`|_"_| pmpeny Damages
`3
`U Wage Loss
`3‘
`
`
`
`
`
`.
`
`-
`
`Actual Damages
`UUnders7.500
`U $7,500 - $50,000
`- Cl $50,000 '- $100,000
`Dover $100,000
`
`Ijfiofessional Malpractice
`E] Wrongful Death
`EBusiness & Commemial
`1:ILi0e1& Slander
`'
`REAL PROPERTY A
`B. CONTRACTS
`C. NONMONETARY
`
`
`
`Dhadicial Sale
`
`DCondemnation
`Declaratory Judgment
`D Under $10,000
`DLandlord Tenant
`Cl $10,000. $20,000 _. Injunction '
`D0ther
`I
`CI Over szo,0000
`D0ther
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`erral 0 an Anlipmcess underMd. Rule 17-01010 (Check :0 that a ' ly)
`
`Yes
`No '
`c. Seuiemcnt conferehce DYcs
`No
`A. Meaiauon
`_ B. g&rbit‘ra_I1io'n D Ygs EHO
`D. l’~{e'utn'al Eva.lual_:ion
`flYes Q No
`
`
`
`
`
`TRACK REQUEST‘
`‘ . Withthe exception ofsagzémarq caémgzanasalrzmore Cily,pleagefitlii: the-e.'m‘ma;ed1,ENa_I1fIoF'r1ez4L. .
`
`' wascrassWILL-ITIENVBEmgcmnAcconnnvozé
`'
`E‘ -172 day oftria! or less .
`-
`'
`3 _day§o'ftri.0_ti tinie-
`I ' 1 day oftrial time
`More than 3 daysoftrial time
`
`I 2 days oftrial time
`
`‘
`
`
`
`'
`
`
`AGEMENT PROGRAM (ASTAR), AS WELL AS ADDI;l.;IO'NAL
`.
`- . 0
`IN BALTIMORE crry, PRINCE GEOR_GE'S co
`
`
`.r;Da,,.,7/26/2011
`.
`~.
`0-
`-~
`';
` Sagnamre
`
`
`
`
`
`
`
`
` For ailjuristliczionr, ifBusiness and Technology: track designation under Md Rule 16-205 is requested’, attach a duplicate
`
`
`copy ofcomptaint and check one ofthe tracks below.
`[I]
`Standard
`Trial within 18 months
`is Filirig
`
`Expedited
`Trial within 7 months
`
`ofFiling
`
`@ EMERGENCY RELIEF REQUESTED
`
`
`
`
`
`
`Piease check (lie a'p_rp.fioob!e box below andattach aduplicate copy ofyour complaint
` D Expedited — Trial wifliiii 7 months ofFiling
`
`El Standard - Trial within 18 months ofFiling
`
`
` D Expedited
`
`
`Cl 7Standa.rd-Short
`
`lj Standard
`
`
`D Lead Paint
`
`E] Asbestos
`
` Cl Protractegl Cases
`
`
`Trial 60 to 120 days fiom notice. Non-jury matters.
`
`
`
`
`Trial 210 days.
`
`Trial 360 days.
`
`Fill in; Birth Date ofyoungest plaintiff
`‘Events and deadlines set by individual judge.
`
`Complex cases designated by the Administrative Judge. -
`
`
`
`
`
`
`
`
`'
`
`
`
`
`This information is n_o_3.‘_ '
`
`
`cmcurr COURT FOR PRINCE GEORGES coumrv
`
`
`
`To assist the Court in determining the appropriate Track for this casc,'ch'eck one ofthe boxes below.
`- an admission and may not be used for any purpose other than Track Assignment.
`CI I'_.iability.isconceded.-_
`
`
`
`
`'. [3 Liability is not oooooooo, but is not seriously in dispute.
`
`
`
`U Liability is seriously in dispute.
`
`
`
`" '
`
`'cc1IicMpii2i('Rov',2{2oio)
`
`_'.
`
`"o1’ag'of2of3.-
`
`
`
`0
`
`T
`
`
`
`CIRCUIT‘ COURT FOR BALTIMORE COUNTY
`
`D Expedited
`(Trial Date-90 days)
`
`Auraehment-Beibre Iudgmenl; Declaratory Judgment (Simple), Administrarive Appeals, District
`Court Appeals and Jury Trial Prayers, Guardianship, Injunction, Mandamus.
`
`Condemnation, Confessed Judgments (Vacated), Contract, Employment Related Cases, Fraud and
`_
`D Stand-'5-N1
`(T551 D31¢~240 days) Misrepresentation, International Tort, Mote": Tort, Other Personal Injury, Workers’ Compensation‘
`Cases.
`.
`
`
`
`
`
`
`
`
`
`
`
`
`
`D Exffinded Standard
`(Trial Daf€'345 days)
`
`Asbestos, Lender Liability, Professional Malpractice. Serious Motor Tort or Personal Injury Cases
`(medical expenses and wage loss of$100,000, expert and out-of-state witnesses (panics), and trial
`offive or more days), State Insolvency.
`
`
`
`
`
`
`
`Class Actions, Designated Toxic Tort, Major Construction Contracts, MajorProduct Liabilities,
`B Complex
`
`
`
`‘other Complex Cases.(Trial Dare-450 days) .
`
`
`..ccméMoo2(ney{2/2910)
`
`'
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`Page3of3 "
`
`
`
`IN THE CIRCUIT COURT OF MARYLAND FOR MONTGOMERY COUNTY
`
`TRUSTED SYSTEMS, INC.
`86 York Street, Suite 3
`Taneytewn, Maryland 21787
`
`Plaintiff
`
`_
`
`v.
`
`'
`
`,
`
`TRUSTED FEDERAL SYSTEMS, INC.
`1122 Bettstrail Way
`-
`Potomac, Maryland 20854
`
`Serve: Sudhi Umarji, Resident Agent.
`.1122 Bettstraii Way
`Potomac, Maryland 20854
`
`Defendant
`
`_
`
`*
`
`*
`
`*
`
`*
`
`*
`
`*
`
`*
`
`*
`
`*
`
`Case No.
`
`I
`
`I
`
`COMPLAINT TO CANCEL REGISTRATION OF TRADE NAME
`
`COMES NOW, the Plaintiff, Trusted Systems, Inc. (“Trusted”), by and through its
`
`I counsel, Miehael G. Leahy, and Klos, Lourie & Leahy, P.A., and sues the l)efendant, Trusted
`
`Federal Systems, hie. (“Federal”), and states as follows:
`
`_
`
`1.
`
`Trusted is an Arizona corporation qualified to do business in the State of Maryland,
`
`- having a principal office in Maryland at 86 York Street, Suite‘ 3, Taneytown, Maryland
`
`' _2_17s7.'
`Trusted registered to do business in‘ Majrgirl-and on Augilst 17,:2004, and has used the trade
`name “TRUSTED SYSTEMS” Maryland continuously sinee that time.
`' Federal is a Maryland C01-poratiou with itsprincipal place ofbusixiess at 1122 Bettstrail
`
`I
`
`A
`
`'i_ 2.‘
`
`H" 3.
`
`.
`
`'
`
`way, Potomac, Marjr1and:20854.
`
`I I
`
`
`
`The United States Patent and Trademark Ofiice (the “PTO”) issued a trademark
`
`registration (# 2563785) to Trusted for the trademark “TRUSTED SYSTEMS” (the
`“Trademark”) on April 23, 2002.
`
`.
`
`_
`
`Trusted has continuously used the Trademark in commerce since registration and has
`
`,
`
`fulfilled the requirements of 15 U.S.C. Sec. 1058 necessary to keep the Trademark
`"registration in force to the present date.
`
`Federal filed a Trade Name Application with the Maryland State Department of
`
`Assessments and Taxation (“SDAT”) for the Trade Name “TRUSTBD SYSTEMS, INC.”
`on February l6, 20'l0i SDAT accepted and registered Federal’s Trade Name Application
`for “Trusted Systems, Inc”.
`V
`
`The use of“Trusted Systems, Inc.” by Federal as a trade name islikely to confuse or
`
`T
`
`deceive as to the origin or source of goods or services because (a) it is exactly the same as
`
`.Trusted’s corporate name as used in Maryland; and (b) it resembles Trusted’s Trademark
`which was registered with the PTO sttbstantially before Federal registered ‘-‘Trusted
`Systems, Inc.”'as a trade name with SDAT.
`I
`
`The SDAT Trade Name Application Instructions state:
`
`' NOTICE: Acceptance of a trade name application does not confer on the
`, owner any greaterright to use the name than he otherwise already has. The A
`-Department checks thename only against other tradenarnes filed with this
`M Department. Federal trademarks, State service marks, records in other
`states and trade names are not meant to reserve the name for its owners, to
`act as- a trademark filing or to‘ confer on the owner any greater right to the
`. name that he already possesses. ‘For flurther-information, Contact your
`lawyer, accountant or financial adviser.
`~
`
`.
`
`'
`
`A
`
`,
`
`' Trusted hasmade a demand upon Federal to cease and desist use of“'_I‘rus_ted Systems,
`inc.” as a trade name and to assign it to Trusted onlluly 15, 2010. To date, Federal has .
`‘made no reply to
`correspondence.
`,
`
`
`
`COUNT I — DEFENDANT’S INFRINGING USE
`
`10.
`
`11.
`
`Plaintiff Trusted adopts and incorporates paragraphs I-9 herein as if set forth in full.
`
`Federa1’s use of “Trusted Systems, Inc.” as the name under which its commercial
`
`enterprise operates in business in Maryland is with full knowledge and Understanding of
`
`' Trusted’s ownership of and senior rights in and to the Trademarlr as well as the
`
`equivalence with Trusted’s actual corporate name.
`
`12.
`
`Trusted is informed and based thereon alleges that Federal has used, is using, and intends
`
`-
`
`to continue using now and in the future in commerce the term “Trusted Systems, Inc.” as
`
`a trade name in such a way as will likely cause confiision or mistake, or will likely
`deceive the public in relation to their products being associated or identified or being the
`
`same as those of Trusted.
`
`13'.
`
`Both Trusted and Federal conduct business in the Information Technology business
`
`arena.
`
`I I4.
`
`' Trusted-never consented to or authorized Federal’s-adoption or commercial use ofthe
`
`Trademark. Federal‘therefore hasinfringed and is infringing upon the Trademark in
`violation ofSection 43(a) ofthe Lanl1aIn'A_ct, 15 I_J'.S.C._§ 1125(a).
`The goodwill ofTrusted’s business under the‘Trademark is ofenormous value, and ‘
`Trustedwill sufler irreparable harm should Federal’s infringement be allowedto continue
`-to the great detrirnent ofits reputation and goodwill.- Federal’s infringement will
`
`continue unless enjoined.
`
`. The Annotated Code ofMaryland, Business Regu1ationAArticie, Sectionll-412(1))
`.' prcyides in pertinent partr-
`
`to paragraph (2) of this
`Registration in patent _o_)jfz‘ce 4- '_(l) Subject
`subsection, the Secretary ‘of State -shall cancel the registration of a mark if
`
`15.
`
`I
`
`I
`
`
`
`
`
`a court of competent jurisdiction finds the mark to be likely to confuse or
`deceive because it resembles a mark that:
`(i) was registered by another person in the United States Patent Office
`before the date the registrant applied for registration under this
`subtitle; and
`'
`(ii) is not abandoned.
`
`WHEREFORE, Plaintiff Trusted Systems, Inc. prays that this Court find the use
`
`of the Trade Name “Trusted Systems, Inc.” by Defendant Trusted Federal Systems, Inc.,
`
`is likely to confuse or deceive and order the Secretary of State cancel the registration of
`said Trade Name, plus costs and attorneys’ fees, and for such other and further relief as
`
`the Court deems just and proper.
`
`COUNT II
`
`TRADEMARK DILUTION ‘AND INJURY To BUSINESS REPUTATION
`
`1'7.
`
`Trusted repeats and alleges each and every allegation contained in paragraphs 1 through
`
`16 ofthis ‘Complaint,’ and incorporates them herein as though set forth in full.
`
`.
`
`18.
`
`As a result of the duration and extent of use ofthe Trademark, the duration and extent of
`
`the advertising and publicity ofthe Trademark, the geographical extent ofthe distribution ,
`
`ofthe same, the superior quality ofTrusted’s products and services, and the degree of
`
`recognition ofthe Trademark, the Trademark has achieved an extensive degree of
`
`'
`
`A {distinctiveness and is a famous trademark.
`
`.
`
`'Federal’s-use ofthe trade name “Trusted,Systems, Inc.” is intentionally designed to
`Trusted’s Trademark and corporate"name so as to likely cause confusion regarding '
`the source of‘Federal’s products and services, in that purchasers thereofwill be likely to '
`
`associate or have associated such productswith, as originating with, or as approved by
`- Trusted, all to the.det_riment ofTrusted.
`
`I
`
`
`
`As a result ofFederafs use and registration of the Trademark and Trusted’s corporate
`
`name as a trade name, Federal is diluting the distinctive quality of Trusted’s Trademark
`
`and corporate name.
`
`Trusted will suffer irreparable hann if Federal’s illegal acts be allowed to continue to the
`
`great detriment of its reputation and goodwill. Fe_deral’s acts will continue unless
`
`i
`
`enjoined.
`
`WI-IEREFOR\E, PlaintifiTrusted Systems, Inc. prays;
`‘ that Defendant Trusted Federal Systems, Inc. and its agents, officers, employees,
`
`representatives, successors, assigns, attorneys and all other persons acting for, with, by,
`through or under authority from Defendant, and each ofthem, be preliminarily and"
`permanently enjoined from: (a) using the Trade Name “Trusted Systems, 1110.”; (b)“5i113
`
`' Trusted’s Trademark depicted in Exhibit A, or any colorable imitation thereof; (0) using
`
`any trademark that imitates or is confiisingly similar to or in any way similar to Trusted’s
`
`"Trademark “Trusted Systems", or that is likely to cause confusion, mistake, deception, or
`
`"
`
`' public misunderstanding as to the origin ofTruste'd’s products or their‘ connectedness to
`
`Defendant;
`
`2.
`
`the Court and serve on Trusted within thirty (30)
`' that Defendant be required to file
`' days afier entry ofthe Injunction, -a report in writing under oath setting forth in detail the i
`. manner and form in which Defendant has complied with the Injunction;
`
`‘
`
`that Defendant be compelled to account to Trusted for any and all profits derived by it
`
`from its use of-the Trade Name “Trusted Systems, Inc. complained ofherein;
`
`“'4.
`
`'''_-f5; "
`
`that thevcourt award Trusted its full costs and reasonable attorneys’ fees; and,
`'_ For such and other fijrther relief the court deemsjustand proper.
`
`
`
`Respectfully submitted,
`
`UL/,L0
`
`
`
`Michael G. Leahy
`
`.A.
`Klos, Lourie & Leahy,
`2007 Txdewater Colony Drive
`Suite 2B
`
`Annapolis, Maryland 21401
`443 -569-0234
`
`Attorney for Plaintiif, Trusted Systems, Inc.
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