Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1217652
`06/25/2022
`
`ESTTA Tracking number:
`
`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 ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`Speartip, LLC
`
`06/25/2022
`
`1714 DEER TRACKS TRAIL #150
`ST. LOUIS, MO 63131
`UNITED STATES
`
`EMMETT MCAULIFFE
`RIEZMAN BERGER PC
`7700 BONHOMME AVE, STE. 700
`SAINT LOUIS, MO 63105
`UNITED STATES
`Primary email: rem@riezmanberger.com
`3147270101
`
`Docket no.
`
`26768-026
`
`Applicant information
`
`Application no.
`
`90787585
`
`Opposition filing
`date
`
`Applicant
`
`06/25/2022
`
`Spear AI, Inc.
`1241 KENYON STREET NW
`WASHINGTON, DC 20010
`UNITED STATES
`
`Goods/services affected by opposition
`
`Publication date
`
`04/26/2022
`
`Opposition period
`ends
`
`06/25/2022
`
`Class 042. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Technical consulting in the field of artificial
`intelligence (AI) software customization; application service provider (ASP) featuring software using
`artificial intelligence for advanced processing of data from physical sensors; providing temporary use
`of on-line non-downloadable software and applications using artificial intelligence for advanced pro-
`cessing of data from physical sensors; software as a service (SAAS) services featuringsoftware using
`artificial intelligence for advanced processing of data from physical sensors; technology consultation
`in the field of artificial intelligence; research in the field of artificial intelligence
`
`Applicant information
`
`Application no.
`
`90787580
`
`Publication date
`
`04/26/2022
`
`Opposition filing
`date
`
`06/25/2022
`
`Opposition period
`ends
`
`

`

`Applicant
`
`Spear AI, Inc.
`1241 KENYON STREET NW
`WASHINGTON, DC 20010
`UNITED STATES
`
`Goods/services affected by opposition
`
`Class 009. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Downloadable computer software using ar-
`tificial intelligence for advanced processing of outputs from physical sensors in the electromagnetic
`and other spectrums; Recorded computer software using artificial intelligence for detection and clas-
`sification of outputs from physical sensors in the electromagnetic and other spectrums
`
`Applicant information
`
`Application no.
`
`90787583
`
`Publication date
`
`04/26/2022
`
`Opposition filing
`date
`
`Applicant
`
`06/25/2022
`
`Opposition period
`ends
`
`Spear AI, Inc.
`1241 KENYON STREET NW
`WASHINGTON, DC 20010
`UNITED STATES
`
`Goods/services affected by opposition
`
`Class 037. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Technical consulting in the field of artificial
`intelligence (AI) hardware customization
`
`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.
`
`4475063
`
`Register
`
`Principal
`
`Registration date
`
`01/28/2014
`
`Application date
`
`06/23/2013
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`SPEARTIP
`
`NONE
`
`Class 042. First use: First Use: Jun 21, 2005 First Use In Commerce: Aug 2005
`Computer consultation in the field of computer security; Computer security con-
`sultancy; Computer security consultancy in the field of scanning and penetration
`testing of computers and networks to assess information security vulnerability;
`Computer security service, namely, restricting access to and by computer net-
`works to and of undesired web sites, media and individuals and facilities; Devel-
`opment of security systems and contingency planning for information systems;
`Maintenance of computer software relating to computer security and prevention
`of computer risks; Updating of computer software relating to computer security
`and prevention of computer risks
`
`U.S. registration
`
`6101572
`
`Application date
`
`12/31/2019
`
`

`

`no.
`
`Register
`
`Principal
`
`Registration date
`
`07/14/2020
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`SPEARTIP
`
`NONE
`
`Class 009. First use: First Use: Jun 21, 2005 First Use In Commerce: Aug 2005
`Downloadable computer software for computer and network security
`
`U.S. registration
`no.
`
`6183534
`
`Register
`
`Principal
`
`Registration date
`
`10/27/2020
`
`Application date
`
`12/31/2019
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`SPEARTIP
`
`NONE
`
`Class 045. First use: First Use: Jun 21, 2005 First Use In Commerce: Aug 2005
`Monitoring of computer systems for detecting unauthorized access or data
`breach; provision of systems for the management of computer and network
`threats, namely, providing on-line non-downloadable software for surveillance
`and monitoring of vulnerability and security problems incomputer hardware, net-
`works, and software; Computer security consultancy services, namely, imple-
`menting plans for improving computer and network security and preventing crim-
`inal activity for businesses and governmental agencies
`
`Attachments
`
`90787585.pdf(242322 bytes )
`90787580.pdf(243458 bytes )
`90787583 00559103.pdf(243774 bytes )
`
`Signature
`
`/Emmett McAuliffe/
`
`Name
`
`Date
`
`EMMETT MCAULIFFE
`
`06/25/2022
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the Matter of Application Serial No. 90787585
`For the mark: SPEAR AI
`Published: April 25, 2022
`
`
`– – – – – – – – – – – – – – – – – – – – – – – – – – – – – – – – – X
`
`
`
`SPEARTIP LLC,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Opposer,
`
`
`
`v.
`
`SPEAR AI, INC.,
`
`
`
`
`
`
`
`
`
`Applicant.
`
`:
`
`:
`
`:
`
`:
`
`:
`
`:
`
`:
`
`:
`
`:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`– – – – – – – – – – – – – – – – – – – – – – – – – – – – – – – – – X
`
`
`
`
`
`Opposition No.
`
`[NUMBER]
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`
`
`Opposer, SPEARTIP, LLC, a corporation organized and existing under the laws of MISSOURI,
`with a principal place of business at 1714 Deer Tracks Trail, Suite 130, Saint Louis, MO 63131,
`believes that it will be damaged by the issuance of a registration for the alleged mark shown in
`Application Serial No. 90787585. Opposer hereby opposes same pursuant to Section 13(a) of the
`Lanham Trademark Act of 1946 ("Lanham Act"), 15 U.S.C. § 1063(a).
`
`As grounds for opposition, Opposer alleges as follows:
`
`1.
`Opposer is a comprehensive cyber-security company including the provision of
`software-as-a-service platforms.
`
`2.
`Opposer is the owner of valid and subsisting United States Trademark
`Registrations on the Principal Register in the United States Patent and Trademark Office for the
`trademark and service mark Attached as Exhibit 1, which is a true and correct printout from the
`United States Patent and Trademark Office electronic database showing the current status and
`title of the registrations as of June 25, 2022. The registrations are for convenience listed below
`on a Comparison Table.
`
`3.
`Opposer has used the SPEARTIP Mark in interstate commerce in the United
`States continuously since the dates indicated in the Comparison Table in connection with the
`
`{00559099- 1 26768-026}
`
`
`
`

`

`manufacture, distribution, provision, offering for sale, sale, marketing, advertising, and
`promotion of the goods and services indicated in the Comparison Table.
`
`4.
`As a result of its widespread, continuous, and exclusive use of the SPEARTIP
`Mark to identify its goods and services and Opposer as their source, Opposer owns valid and
`subsisting federal statutory and common law rights to the goods and services under said Mark.
`
`5.
`Opposer's SPEARTIP Mark is distinctive to both the consuming public and
`Opposer's trade.
`
`6.
`Opposer has expended substantial time, money, and resources marketing,
`advertising, and promoting the goods and services sold under the SPEARTIP Mark including
`through extensive marketing, advertising and promotional efforts into the channels of trade of
`those businesses which have websites, electronic portals, digital assets and data and/or trade
`secrets they need to protect, or confidentiality obligations to customers they have undertaken.
`
`7.
`The Goods and Services Opposer offers under the SPEARTIP Mark are of high
`quality as further described below.
`
`8.
`As a result of its distinctiveness and widespread use and promotion throughout the
`United States, Opposer's SPEARTIP Mark is a famous trademark within the meaning of Section
`43(c) of the Lanham Act, 15 U.S.C. § 1125(c), and became famous prior to the filing date of
`June 22, 2021 in the opposed application or any other priority date on which the applicant may
`rely.
`
`9.
`In support of the above claims, Opposer avers that it received a Nomination from
`Adviser Ltd.’s as Cyber Risk Awards Cyber Risk Event Response Team of the year (2021); it
`became an official Microsoft Azure Integration Partner (2021); its principal Jarrett Kolthoff, has
`been a regular columnist (“Ask the Expert”) and received frequent coverage in the St. Louis
`Business Journal, from 2018-present; and has expanded its offices to include Dallas, Toronto,
`Tampa, Washington, D.C. and Chandler, Arizona.
`
`10.
`Upon information and belief, Applicant, SPEAR AI, INC., with an address at
`1241 Kenyon Street NW Washington D.C. 20010, on the common date of June 22, 2021, filed
`the present trademark application and two sister applications also being opposed, as indicated on
`the Comparison Table.
`
`11.
`Applicant’s Mark has upon information and belief not been used in true interstate
`commerce and said application was filed under Section 1(b) of the Trademark Act (intent-to-
`use).
`
`12.
`Opposer's SPEARTIP mark has priority over the proposed mark because
`Opposer's use and registration dates predate the Applicant's filing date or any other date on
`which the Applicant may rely for purposes of priority.
`
`13.
`Applicant's proposed mark SPEAR AI is confusingly similar to Opposer's
`SPEARTIP Mark. Opposers Mark contains the noun Spear as modified by the word TIP which is
`added as a suffix to said noun. Applicant’s Mark is the noun Spear with an additional word AI
`
`{00559099- 1 26768-026}
`
`
`
`

`

`coming behind which upon information and belief signifies and stands for artificial intelligence
`and therefore is descriptive and is not a distinguishing feature of the mark. Further, artificial
`intelligence is, upon information and belief, a common method for producing computer
`technology in 2022. Opposer uses artificial intelligence as well.
`
`14.
`The Goods and Services covered by the Applicant's Application as indicated in
`the Comparison Table below in this paragraph are identical or similar to the Goods and Services
`Opposer offers under its SPEARTIP Mark. These similarities are indicated by the bolded
`descriptions in the Comparison Table. Opposer further avers that to the extent that opposer and
`applicant’s goods and services are not identical, they were related goods inasmuch as they all
`relate to computer software or computer consultancy to business customers. As related goods
`they are likely to produce confusion as to source and origin.
`
`
`COMPARISON TABLE
`
`Registration
`Date
`01/28/2014
`
`Registration
`Number
`4475063
`
`Class
`Number
`42
`
`07/12/2020
`
`1542843
`
`9
`
`Mark
`Goods and Services
`SPEARTIP Computer
`consultation in the field of
`computer security; Computer
`security consultancy; Computer
`security consultancy in the field
`of scanning and penetration
`testing of computers and
`networks to assess information
`security vulnerability; Computer
`security service, namely,
`restricting access to and by
`computer networks to and of
`undesired web sites, media and
`individuals and facilities;
`Development of security systems
`and contingency planning for
`information systems;
`Maintenance of computer
`software relating to computer
`security and prevention of
`computer risks; Updating of
`computer software relating to
`computer security and prevention
`of computer risks.
`SPEARTIP Downloadable
`computer software for
`computer and network security.
`
`Incontestable?
`(Y/N)
`Y
`
`Class
`No.
`42
`
`N
`
`9
`
`08/11/2020
`
`6183534
`
`45
`
`SPEARTIP Monitoring of
`computer systems for detecting
`unauthorized access or data
`breach; provision of systems for
`the management of computer and
`
`N
`
`37
`
`{00559099- 1 26768-026}
`
`
`
`SN/Mark/Goods and Services
`
`90787585 SPEAR AI Technical
`consulting in the field of artificial
`intelligence (AI) software
`customization; application service
`provider (ASP) featuring software
`using artificial intelligence for
`advanced processing of data from
`physical sensors; providing
`temporary use of on-line non-
`downloadable software and
`applications using artificial
`intelligence for advanced processing
`of data from physical sensors;
`software as a service (SAAS)
`services featuring software using
`artificial intelligence for advanced
`processing of data from physical
`sensors; technology consultation in
`the field of artificial intelligence;
`research in the field of artificial
`intelligence
`
`90787580 SPEAR AI
`Downloadable computer software
`using artificial intelligence for
`advanced processing of outputs from
`physical sensors in the
`electromagnetic and other spectrums;
`Recorded computer software using
`artificial intelligence for detection and
`classification of outputs from physical
`sensors in the electromagnetic and
`other spectrums
`
`90787583 SPEAR AI Technical
`consulting in the field of artificial
`intelligence (AI) hardware
`customization
`
`

`

`network threats, namely,
`providing on-line non-
`downloadable software for
`surveillance and monitoring of
`vulnerability and security
`problems in computer hardware,
`networks, and software;
`Computer security consultancy
`services, namely,
`implementing plans for
`improving computer and
`network security and preventing
`criminal activity for businesses
`and governmental agencies
`
`
`
`FIRST GROUND FOR OPPOSITION -- LIKELIHOOD OF CONFUSION
`
`15.
`The proposed mark is barred from registration because it consists of or comprises
`a mark which so resembles Opposer's previously used and registered SPEARTIP mark as to be
`likely, when used in connection with the alleged goods and services of Applicant, to cause
`confusion, mistake, or deception within the meaning of 15 U.S.C. § 1052(d).
`
`SECOND GROUND FOR OPPOSITION -- DILUTION
`
`16.
`Opposer's SPEARTIP Mark is distinctive and a "famous mark" within the
`meaning of Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c).
`
`17.
`Opposer's SPEARTIP Mark became distinctive and famous prior to the filing date
`of Applicant's application or any other date on which Applicant may seek to rely for purposes of
`priority.
`
`18.
`Registration by Applicant of the proposed mark SPEAR AI for Applicant's
`proposed goods and services would be likely to impair the distinctiveness, and cause dilution by
`blurring, of Opposer's famous SPEARTIP Mark in violation of 15 U.S.C. § 1125(c).
`Accordingly, pursuant to 15 U.S.C. § 1063, the proposed mark SPEAR AI is not entitled to
`registration.
`
`19.
`Registration by Applicant of the proposed mark SPEAR AI for Applicant's
`proposed goods and services would be likely to tarnish the reputation, and cause dilution by
`tarnishment, of Opposer's famous SPEARTIP Mark in violation of 15 U.S.C. § 1125(c).
`Accordingly, pursuant to 15 U.S.C. § 1063, the proposed mark SPEAR AI is not entitled to
`registration.
`
`{00559099- 1 26768-026}
`
`
`
`

`

`WHEREFORE, Opposer respectfully prays that its opposition be sustained and that registration
`to Applicant be refused.
`
`{00559099- 1 26768-026}
`
`
`
`

`

`EXHIBIT 1
`
`Generated on: This page was generated by TSDR on 2022-06-25 16:33:47 EDT
`
`Mark: SPEARTIP
`
`US Serial Number: 85967351
`
`US Registration
`Number:
`
`4475063
`
`Filed as TEAS
`Plus:
`
`Yes
`
`Register: Principal
`
`Mark Type: Service Mark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Jun. 23, 2013
`
`Registration Date: Jan. 28, 2014
`
`Currently TEAS
`Plus:
`
`Yes
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status: A Sections 8 and 15 combined declaration has been accepted and acknowledged.
`
`Status Date: Feb. 18, 2019
`
`Publication Date:Nov. 12, 2013
` 
`
`Mark Literal
`Elements:
`
`SPEARTIP
`
`Mark Information
`
`Standard Character
`Claim:
`
`Mark Drawing
`Type:
`
`Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
`
`4 - STANDARD CHARACTER MARK
`
`Related Properties Information
`
`1542830
`
`International
`Registration
`Number:
`
`A0097918/1542830
`
`International
`Application(s)
`/Registration(s)
`Based on this
`Property:
`
`Goods and Services
`
`Note:
`The following symbols indicate that the registrant/owner has amended the goods/services:
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: Computer consultation in the field of computer security; Computer security consultancy; Computer security consultancy in the field of
`scanning and penetration testing of computers and networks to assess information security vulnerability; Computer security service,
`namely, restricting access to and by computer networks to and of undesired web sites, media and individuals and facilities;
`Development of security systems and contingency planning for information systems; Maintenance of computer software relating to
`computer security and prevention of computer risks; Updating of computer software relating to computer security and prevention of
`computer risks
`
`International
`Class(es):
`
`042 - Primary Class
`
`U.S Class(es): 100, 101
`
`

`

`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: Jun. 21, 2005
`
`Use in Commerce: Aug. 2005
`
`Basis Information (Case Level)
`
`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Filed No Basis: No
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: SpearTip, LLC
`
`Owner Address: Refer Notice to Riezman Berger PC
`1714 Deer Tracks Trail, Suite 150
`St. Louis, MISSOURI UNITED STATES 63131
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`State or Country
`Where Organized:
`
`MISSOURI
`
`Attorney/Correspondence Information
`
`Attorney Name: Emmett McAuliffe
`
`Docket Number: 26768-010
`
`Attorney of Record
`
`Attorney Primary
`Email Address:
`
`rem@riezmanberger.com
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`Emmett McAuliffe
`Riezman Berger PC
`7700 Bonhomme, 7th Fl
`St. Louis, MISSOURI UNITED STATES 63105
`
`Phone: 3147270101
`
`Correspondent e-
`mail:
`
`rem@riezmanberger.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`Feb. 18, 2019
`
`NOTICE OF ACCEPTANCE OF SEC. 8 & 15 - E-MAILED
`
`Feb. 18, 2019
`
`REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
`
`Feb. 11, 2019
`
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`
`Jan. 29, 2019
`
`TEAS SECTION 8 & 15 RECEIVED
`
`Jan. 28, 2019
`
`COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED
`
`Jan. 07, 2019
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`
`Jan. 07, 2019
`
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`
`Jan. 28, 2014
`
`REGISTERED-PRINCIPAL REGISTER
`
`Nov. 12, 2013
`
`OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
`
`Nov. 12, 2013
`
`PUBLISHED FOR OPPOSITION
`
`Oct. 23, 2013
`
`NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
`
`Oct. 01, 2013
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`Oct. 01, 2013
`
`ASSIGNED TO EXAMINER
`
`Jul. 06, 2013
`
`NOTICE OF PSEUDO MARK E-MAILED
`
`Jul. 05, 2013
`
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
`
`Jun. 26, 2013
`
`NEW APPLICATION ENTERED IN TRAM
`
`Proceeding
`Number
`
`74704
`
`74704
`
`78484
`
`

`

`TM Staff and Location Information
`
`TM Staff Information - None
`
`File Location
`
`Current Location: TMO LAW OFFICE 111
`
`Date in Location: Feb. 18, 2019
`
`

`

`Generated on: This page was generated by TSDR on 2022-06-25 16:36:23 EDT
`
`Mark: SPEARTIP
`
`US Serial Number: 88743081
`
`US Registration
`Number:
`
`6101572
`
`Filed as TEAS
`Plus:
`
`Yes
`
`Register: Principal
`
`Mark Type: Trademark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Dec. 31, 2019
`
`Registration Date: Jul. 14, 2020
`
`Currently TEAS
`Plus:
`
`Yes
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.
`
`Status Date: Jul. 14, 2020
`
`Publication Date:Apr. 28, 2020
` 
`
`Mark Literal
`Elements:
`
`SPEARTIP
`
`Mark Information
`
`Standard Character
`Claim:
`
`Mark Drawing
`Type:
`
`Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
`
`4 - STANDARD CHARACTER MARK
`
`Related Properties Information
`
`1542843
`
`International
`Registration
`Number:
`
`A0097915/1542843
`
`International
`Application(s)
`/Registration(s)
`Based on this
`Property:
`
`Claimed Ownership
`of US
`Registrations:
`
`4475063
`
`Goods and Services
`
`Note:
`The following symbols indicate that the registrant/owner has amended the goods/services:
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: Downloadable computer software for computer and network security
`
`International
`Class(es):
`
`009 - Primary Class
`
`Class Status: ACTIVE
`
`U.S Class(es): 021, 023, 026, 036, 038
`
`

`

`Basis: 1(a)
`
`First Use: Jun. 21, 2005
`
`Use in Commerce: Aug. 2005
`
`Basis Information (Case Level)
`
`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Filed No Basis: No
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: Speartip, LLC
`
`Owner Address:
`
`refer notices to Riezman Berger
`1714 Deer Tracks Trail #150
`Saint Louis, MISSOURI UNITED STATES 63131
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`State or Country
`Where Organized:
`
`MISSOURI
`
`Attorney/Correspondence Information
`
`Attorney Name: Emmett McAuliffe
`
`Docket Number: 26768-015
`
`Attorney of Record
`
`Attorney Primary
`Email Address:
`
`rem@riezmanberger.com
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`EMMETT MCAULIFFE
`RIEZMAN BERGER PC
`7700 BONHOMME AVE FL 7TH
`SAINT LOUIS, MISSOURI UNITED STATES 63105
`
`Phone: 314-727-0101
`
`Correspondent e-
`mail:
`
`rem@riezmanberger.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`Jul. 14, 2020
`
`REGISTERED-PRINCIPAL REGISTER
`
`Apr. 28, 2020
`
`OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
`
`Apr. 28, 2020
`
`PUBLISHED FOR OPPOSITION
`
`Apr. 08, 2020
`
`NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
`
`Mar. 24, 2020
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`Mar. 24, 2020
`
`ASSIGNED TO EXAMINER
`
`Jan. 07, 2020
`
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
`
`Jan. 03, 2020
`
`NEW APPLICATION ENTERED IN TRAM
`TM Staff and Location Information
`
`Current Location: PUBLICATION AND ISSUE SECTION
`
`Date in Location: Jul. 14, 2020
`
`TM Staff Information - None
`
`File Location
`
`Proceeding
`Number
`
`70703
`
`

`

`Generated on: This page was generated by TSDR on 2022-06-25 16:37:06 EDT
`
`Mark: SPEARTIP
`
`US Serial Number: 88743089
`
`US Registration
`Number:
`
`6183534
`
`Filed as TEAS RF: Yes
`
`Register: Principal
`
`Mark Type: Service Mark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Dec. 31, 2019
`
`Registration Date: Oct. 27, 2020
`
`Currently TEAS RF: Yes
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.
`
`Status Date: Oct. 27, 2020
`
`Publication Date:Aug. 11, 2020
` 
`
`Mark Literal
`Elements:
`
`SPEARTIP
`
`Mark Information
`
`Standard Character
`Claim:
`
`Mark Drawing
`Type:
`
`Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
`
`4 - STANDARD CHARACTER MARK
`
`Related Properties Information
`
`1584227
`
`International
`Registration
`Number:
`
`A0097916/1584227
`
`International
`Application(s)
`/Registration(s)
`Based on this
`Property:
`
`Claimed Ownership
`of US
`Registrations:
`
`4475063
`
`Goods and Services
`
`Note:
`The following symbols indicate that the registrant/owner has amended the goods/services:
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: Monitoring of computer systems for detecting unauthorized access or data breach; provision of systems for the management of
`computer and network threats, namely, providing on-line non-downloadable software for surveillance and monitoring of vulnerability
`and security problems in computer hardware, networks, and software; Computer security consultancy services, namely, implementing
`plans for improving computer and network security and preventing criminal activity for businesses and governmental agencies
`
`International 045 - Primary Class
`
`U.S Class(es): 100, 101
`
`

`

`Class(es):
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: Jun. 21, 2005
`
`Use in Commerce: Aug. 2005
`
`Basis Information (Case Level)
`
`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Filed No Basis: No
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: Speartip, LLC
`
`Owner Address:
`
`refer notices to Riezman Berger
`1714 Deer Tracks Trail #150
`St. Louis, MISSOURI UNITED STATES 63131
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`State or Country
`Where Organized:
`
`MISSOURI
`
`Attorney/Correspondence Information
`
`Attorney Name: Emmett McAuliffe
`
`Docket Number: 26768-014
`
`Attorney of Record
`
`Attorney Primary
`Email Address:
`
`rem@riezmanberger.com
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`Emmett McAuliffe
`RIEZMAN BERGER PC
`7700 BONHOMME AVE FL 7TH
`SAINT LOUIS, MISSOURI UNITED STATES 63105
`
`Phone: 314-727-0101
`
`Correspondent e-
`mail:
`
`rem@riezmanberger.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`Oct. 27, 2020
`
`REGISTERED-PRINCIPAL REGISTER
`
`Aug. 11, 2020
`
`OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
`
`Aug. 11, 2020
`
`PUBLISHED FOR OPPOSITION
`
`Jul. 22, 2020
`
`NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
`
`Jul. 09, 2020
`
`ASSIGNED TO LIE
`
`Jul. 02, 2020
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`Jul. 01, 2020
`
`TEAS/EMAIL CORRESPONDENCE ENTERED
`
`Jun. 30, 2020
`
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`
`Jun. 30, 2020
`
`TEAS RESPONSE TO OFFICE ACTION RECEIVED
`
`Mar. 24, 2020
`
`NOTIFICATION OF NON-FINAL ACTION E-MAILED
`
`Mar. 24, 2020
`
`NON-FINAL ACTION E-MAILED
`
`Mar. 24, 2020
`
`NON-FINAL ACTION WRITTEN
`
`Mar. 24, 2020
`
`ASSIGNED TO EXAMINER
`
`Jan. 07, 2020
`
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
`
`Jan. 03, 2020
`
`NEW APPLICATION ENTERED IN TRAM
`
`Proceeding
`Number
`
`74221
`
`88889
`
`88889
`
`6325
`
`6325
`
`70703
`
`70703
`
`

`

`TM Staff and Location Information
`
`TM Staff Information - None
`
`File Location
`
`Current Location: PUBLICATION AND ISSUE SECTION
`
`Date in Location: Oct. 27, 2020
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the Matter of Application Serial No. 90787580
`For the mark: SPEAR AI
`Published: April 25, 2022
`
`
`– – – – – – – – – – – – – – – – – – – – – – – – – – – – – – – – – X
`
`
`
`SPEARTIP LLC,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Opposer,
`
`
`
`v.
`
`SPEAR AI, INC.,
`
`
`
`
`
`
`
`
`
`Applicant.
`
`:
`
`:
`
`:
`
`:
`
`:
`
`:
`
`:
`
`:
`
`:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`– – – – – – – – – – – – – – – – – – – – – – – – – – – – – – – – – X
`
`
`
`
`
`Opposition No.
`
`[NUMBER]
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`
`
`Opposer, SPEARTIP, LLC, a corporation organized and existing under the laws of MISSOURI,
`with a principal place of business at 1714 Deer Tracks Trail, Suite 130, Saint Louis, MO 63131,
`believes that it will be damaged by the issuance of a registration for the alleged mark shown in
`Application Serial No. 90787580. Opposer hereby opposes same pursuant to Section 13(a) of the
`Lanham Trademark Act of 1946 ("Lanham Act"), 15 U.S.C. § 1063(a).
`
`As grounds for opposition, Opposer alleges as follows:
`
`1.
`Opposer is a comprehensive cyber-security company including the provision of
`software-as-a-service platforms.
`
`2.
`Opposer is the owner of valid and subsisting United States Trademark
`Registrations on the Principal Register in the United States Patent and Trademark Office for the
`trademark and service mark Attached as Exhibit 1, which is a true and correct printout from the
`United States Patent and Trademark Office electronic database showing the current status and
`title of the registrations as of June 25, 2022. The registrations are for convenience listed below
`on a Comparison Table.
`
`3.
`Opposer has used the SPEARTIP Mark in interstate commerce in the United
`States continuously since the dates indicated in the Comparison Table in connection with the
`
`{00559102- 1 26768-026}
`
`
`
`

`

`manufacture, distribution, provision, offering for sale, sale, marketing, advertising, and
`promotion of the goods and services indicated in the Comparison Table.
`
`4.
`As a result of its widespread, continuous, and exclusive use of the SPEARTIP
`Mark to identify its goods and services and Opposer as their source, Opposer owns valid and
`subsisting federal statutory and common law rights to the goods and services under said Mark.
`
`5.
`Opposer's SPEARTIP Mark is distinctive to both the consuming public and
`Opposer's trade.
`
`6.
`Opposer has expended substantial time, money, and resources marketing,
`advertising, and promoting the goods and services sold under the SPEARTIP Mark including
`through extensive marketing, advertising and promotional efforts into the channels of trade of
`those businesses which have websites, electronic portals, digital assets and data and/or trade
`secrets they need to protect, or confidentiality obligations to customers they have undertaken.
`
`7.
`The Goods and Services Opposer offers under the SPEARTIP Mark are of high
`quality as further described below.
`
`8.
`As a result of its distinctiveness and widespread use and promotion throughout the
`United States, Opposer's SPEARTIP Mark is a famous trademark within the meaning of Section
`43(c) of the Lanham Act, 15 U.S.C. § 1125(c), and became famous prior to the filing date of
`June 22, 2021 in the opposed application or any other priority date on which the applicant may
`rely.
`
`9.
`In support of the above claims, Opposer avers that it received a Nomination from
`Adviser Ltd.’s as Cyber Risk Awards Cyber Risk Event Response Team of the year (2021); it
`became an official Microsoft Azure Integration Partner (2021); its principal Jarrett Kolthoff, has
`been a regular columnist (“Ask the Expert”) and received frequent coverage in the St. Louis
`Business Journal, from 2018-present; and has expanded its offices to include Dallas, Toronto,
`Tampa, Washington, D.C. and Chandler, Arizona.
`
`10.
`Upon information and belief, Applicant, SPEAR AI, INC., with an address at
`1241 Kenyon Street NW Washington D.C. 20010, on the common date of June 22, 2021, filed
`the present trademark application and two sister applications also being opposed, as indicated on
`the Comparison Table.
`
`11.
`Applicant’s Mark has upon information and belief not been used in true interstate
`commerce and said application was filed under Section 1(b) of the Trademark Act (intent-to-
`use).
`
`12.
`Opposer's SPEARTIP mark has priority over the proposed mark because
`Opposer's use and registration dates predate the Applicant's filing date or any other date on
`which the Applicant may rely for purposes of priority.
`
`13.
`Applicant's proposed mark SPEAR AI is confusingly similar to Opposer's
`SPEARTIP Mark. Opposers Mark contains the noun Spear as modified by the word TIP which is
`added as a suffix to said noun. Applicant’s Mark is the noun Spear with an additional word AI
`
`{00559102- 1 26768-026}
`
`
`
`

`

`coming behind which upon information and belief signifies and stands for artificial intelligence
`and therefore is descriptive and is not a distinguishing feature of the mark. Further, artificial
`intelligence is, upon information and belief, a common method for producing c