ESTTA Tracking number:
`
`Filing date:
`
`ESTTA1312096
`09/25/2023
`
`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
`
`Okta, Inc.
`
`09/27/2023
`
`100 FIRST STREET - 6TH FLOOR
`SAN FRANCISCO, CA 94105
`UNITED STATES
`
`SOPHY TABANDEH
`VERSO LAW GROUP LLP
`209 KEARNY ST., 3RD FLOOR
`SAN FRANCISCO, CA 94108
`UNITED STATES
`Primary email: sophy.tabandeh@versolaw.com
`Secondary email(s): ryan.bricker@versolaw.com, en-
`rike.kaltakhtchyan@versolaw.com, annette.krieger@versolaw.com, shan-
`non.glenn@versolaw.com, luisa.bonachea@versolaw.com, trade-
`marks@versolaw.com
`4155340495
`
`Docket no.
`
`Applicant information
`
`Application no.
`
`88844911
`
`Opposition filing
`date
`
`Applicant
`
`09/25/2023
`
`Publication date
`
`05/30/2023
`
`Opposition period
`ends
`
`09/27/2023
`
`F2 Strategy
`50 CLAIRE WAY
`BELVEDERE TIBURON, CA 94920
`UNITED STATES
`
`Goods/services affected by opposition
`
`Class 042. First Use: Jan 20, 2020 First Use In Commerce: Jan 20, 2020
`All goods and services in the class are opposed, namely: Information technology consulting services
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`Trademark Act Sections 2 and 43(c)
`
`Marks cited by opposer as basis for opposition
`
`U.S. registration
`no.
`
`4000741
`
`Application date
`
`04/20/2010
`
`

`

`Register
`
`Principal
`
`Registration date
`
`07/26/2011
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`OKTA
`
`NONE
`
`Class 042. First use: First Use: Apr 12, 2010 First Use In Commerce: Apr 12,
`2010
`computer services, namely, providing unification, management, performance op-
`timization and integration of computer systems and networks, enterprise soft-
`ware applications, users, and internet resources; computer services, namely,
`monitoring, analyzing, and reporting on the performance of computer systems,
`networks, and enterprise software applications
`Class 045. First use: First Use: Apr 12, 2010 First Use In Commerce: Apr 12,
`2010
`computer services, namely, providing user authentication services in e-
`commerce transactions for network access control, security management and
`security application auditing; computerized identification verification services,
`namely, providing authentication of personal identification information for net-
`work access control, security management and security application auditing;
`computerized identification verification services, namely, providing authentica-
`tion for electronic funds transfer, credit and debit card and electronic check
`transactions via a global computer network for network access control, security
`management and security application auditing
`
`U.S. registration
`no.
`
`4046232
`
`Register
`
`Principal
`
`Registration date
`
`10/25/2011
`
`Application date
`
`04/20/2010
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`OKTA
`
`NONE
`
`Class 009. First use: First Use: Jul 1, 2010 First Use In Commerce: Jul 1, 2010
`computer software for the unification, management, optimization and integration
`of computer systems and networks, enterprise software applications, users, and
`Internet resources; computer software for computer systems and network ac-
`cess control featuring digital identity authentication, security management and
`security application auditing; computer software for the monitoring, analyzing,
`and reporting on the performance of computer systems, networks, and enter-
`prise software applications
`
`U.S. registration
`no.
`
`6682165
`
`Register
`
`Principal
`
`Registration date
`
`03/29/2022
`
`Word mark
`
`Design mark
`
`OKTA
`
`Description of
`
`NONE
`
`Application date
`
`11/10/2020
`
`Foreign priority
`date
`
`NONE
`
`

`

`mark
`
`Goods/services
`
`Class 009. First use: First Use: Jul 1, 2010 First Use In Commerce: Jul 1, 2010
`downloadable mobile application computer software for the unification, manage-
`ment, optimization and integration of computer systems and networks, enter-
`prise software applications, users, and Internet resources; downloadable mobile
`application computer software for computer systems and network access control
`featuring digital identity authentication, security management and security ap-
`plication auditing; downloadable mobile application computer software for the
`monitoring, analyzing, and reporting on the performance of computer systems,
`networks, and enterprise software applications; downloadable mobile application
`computer software for providing computer security service to verify user or ma-
`chine identities, user or machine permissions, and for the management of user
`or machine data; downloadable mobile application computer software for identity
`management and identity security software for use by others for ensuring the se-
`curity of computer networks, databases, computer software, software applica-
`tions and software development tools; downloadable mobile application com-
`puter software for use by others to manage network and database users, simpli-
`fy user authentication, and control access to computer software, software applic-
`ations and software development tools; downloadable mobile application com-
`puter software for securing communications between computers; downloadable
`mobile application computer software for providing user authentication services
`using software technology in online communications, transactions, and applica-
`tions for network access control, security management and security application
`auditing; downloadable mobile application computer software for providing au-
`thentication of personal identification information using software technology;
`downloadable mobile application computer software for providing authentication
`using software technology for communications and transactions via a global
`computer network
`Class 042. First use: First Use: Apr 12, 2010 First Use In Commerce: Apr 12,
`2010
`software as a service (SaaS) services featuring software which provides unifica-
`tion, management, performance optimization, integration, and access of com-
`puter systems and networks, enterprise software applications, users, and inter-
`net resources; software as a service (SaaS) services featuring software featur-
`ing digital identity authentication, security management and security application
`auditing; computer services, namely, monitoring, analyzing, and reporting on the
`performance of computer systems, networks, and enterprise software applica-
`tions; computer security consultancy; computer security services, namely,
`providing computer security service to verify user or machine identities, user or
`machine permissions, and for the management of user or machine data; provid-
`ing temporary use of online non-downloadable software, namely, identity man-
`agement and identity security software for use by others for ensuring the secur-
`ity of computer networks, databases, computer software, software applications
`and software development tools; providing temporary use of online non-
`downloadable software for use by others to manage network and database
`users, simplify user authentication, and control access to computer software,
`software applications and software development tools; software as a service
`(SaaS) services featuring software for securing communications between com-
`puters; computer services, namely, providing user authentication services using
`software technology in online communications, transactions, and applications for
`network access control, security management and security application auditing;
`computerized identification verification services, namely, providing authentica-
`tion of personal identification information using software technology for commu-
`nications and transactions via a global computer network; computerized identi-
`fication verification services, namely, providing authentication using software
`technology for communications and transactions via a global computer network,
`namely, validating personal identification information and user credentials to se-
`cure access to online computer services and software programs and products
`
`

`

`U.S. registration
`no.
`
`7041769
`
`Register
`
`Principal
`
`Registration date
`
`05/02/2023
`
`Application date
`
`03/24/2022
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`OKTA
`
`NONE
`
`Class 041. First use: First Use: Nov 11, 2013 First Use In Commerce: Nov 11,
`2013
`educational services, namely, providing of training in the fields of technology, in-
`formation technology, computers, computer software, computer networks, and
`computer and online security, authentication, and identity management; educa-
`tional services, namely, training courses, testing, and distributing course materi-
`als in connection therewith, all in the fields of technology, information techno-
`logy, computers, computer software, computer networks, and computer and on-
`line security, authentication, and identity management; educational services,
`namely, providing training for certification of others in the fields of technology, in-
`formation technology, computers, computer software, computer networks, and
`computer and online security, authentication, and identity management; IT train-
`ing services; educational services, namely, organizing and providing confer-
`ences, workshops, meetings, and seminars in the field of technology, informa-
`tion technology, computers, computer software, computer networks, and com-
`puter and online security, authentication, and identity management
`
`Attachments
`
`2023-09-25 - Notice of Opposition - OCTO.pdf(180768 bytes )
`Exhibit A - Notice of Opposition - OCTO.pdf(679304 bytes )
`
`Signature
`
`/Sophy Tabandeh/
`
`Name
`
`Date
`
`SOPHY TABANDEH
`
`09/25/2023
`
`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`OKTA, INC.,
`
`Opposition No. ______________
`
`
`
`Opposer,
`
`
`
`
`
`
`
`
`
`v.
`
`F2 STRATEGY,
`
`
`
`
`
`Applicant.
`
`
`
`
`
`Serial No.: 88844911
`Filed: March 23, 2020
`Published: May 30, 2023
`Mark: OCTO
`
`NOTICE OF OPPOSITION
`
`This opposition is necessary due to the damage that will be caused to Okta, Inc.
`
`(“Okta”) by registration of U.S. Application Serial No. 88844911 for the OCTO mark filed
`
`by F2 Strategy (“Applicant”) on March 23, 2020 (the “Application”). As grounds for
`
`opposition, Okta asserts that:
`
`1.
`
`Okta, Inc. is a Delaware corporation with an address at 100 First Street, 6th
`
`Floor, San Francisco, CA 94105. For more than ten years, Okta has been partnering with
`
`businesses to implement customizable technology services that enable secure access,
`
`authentication, and automation. Okta and its brands are well-known in the United States and
`
`worldwide for the company’s identification and access management services.
`
`2.
`
`On information and belief, Applicant F2 Strategy is a California corporation
`
`with an address at 50 Claire Way, Belvedere Tiburon, California 94920.
`
`NOTICE OF OPPOSITION
`- 1 -
`
`

`

`3.
`
`Okta owns registered and common law rights for its well-known OKTA®
`
`mark (collectively, the “OKTA Marks”) for its goods and services. Below are examples of
`
`Okta’s registrations:
`
`Trademark
`
`Reg. No.
`
`Classes/Goods & Services
`
`OKTA
`
`4000741 Cl 42: computer services, namely, providing
`unification, management, performance
`optimization and integration of computer
`systems and networks, enterprise software
`applications, users, and internet resources;
`computer services, namely, monitoring,
`analyzing, and reporting on the performance of
`computer systems, networks, and enterprise
`software applications
`
`Cl 45: computer services, namely, providing
`user authentication services in e-commerce
`transactions for network access control, security
`management and security application auditing;
`computerized identification verification
`services, namely, providing authentication of
`personal identification information for network
`access control, security management and
`security application auditing; computerized
`identification verification services, namely,
`providing authentication for electronic funds
`transfer, credit and debit card and electronic
`check transactions via a global computer
`network for network access control, security
`management and security application auditing
`
`OKTA
`
`4046232 Cl 9: computer software for the unification,
`management, optimization and integration of
`computer systems and networks, enterprise
`software applications, users, and Internet
`resources; computer software for computer
`systems and network access control featuring
`digital identity authentication, security
`management and security application auditing;
`computer software for the monitoring,
`analyzing, and reporting on the performance of
`
`NOTICE OF OPPOSITION
`- 2 -
`
`

`

`OKTA
`
`computer systems, networks, and enterprise
`software applications
`
`6682165 Cl 9: downloadable mobile application
`computer software for the unification,
`management, optimization and integration of
`computer systems and networks, enterprise
`software applications, users, and Internet
`resources; downloadable mobile application
`computer software for computer systems and
`network access control featuring digital identity
`authentication, security management and
`security application auditing; downloadable
`mobile application computer software for the
`monitoring, analyzing, and reporting on the
`performance of computer systems, networks,
`and enterprise software applications;
`downloadable mobile application computer
`software for providing computer security
`service to verify user or machine identities, user
`or machine permissions, and for the
`management of user or machine data;
`downloadable mobile application computer
`software for identity management and identity
`security software for use by others for ensuring
`the security of computer networks, databases,
`computer software, software applications and
`software development tools; downloadable
`mobile application computer software for use
`by others to manage network and database
`users, simplify user authentication, and control
`access to computer software, software
`applications and software development tools;
`downloadable mobile application computer
`software for securing communications between
`computers; downloadable mobile application
`computer software for providing user
`authentication services using software
`technology in online communications,
`transactions, and applications for network
`access control, security management and
`security application auditing; downloadable
`mobile application computer software for
`
`NOTICE OF OPPOSITION
`- 3 -
`
`

`

`providing authentication of personal
`identification information using software
`technology; downloadable mobile application
`computer software for providing authentication
`using software technology for communications
`and transactions via a global computer network
`
`Cl 42: software as a service (SaaS) services
`featuring software which provides unification,
`management, performance optimization,
`integration, and access of computer systems and
`networks, enterprise software applications,
`users, and internet resources; software as a
`service (SaaS) services featuring software
`featuring digital identity authentication, security
`management and security application auditing;
`computer services, namely, monitoring,
`analyzing, and reporting on the performance of
`computer systems, networks, and enterprise
`software applications; computer security
`consultancy; computer security services,
`namely, providing computer security service to
`verify user or machine identities, user or
`machine permissions, and for the management
`of user or machine data; providing temporary
`use of online non-downloadable software,
`namely, identity management and identity
`security software for use by others for ensuring
`the security of computer networks, databases,
`computer software, software applications and
`software development tools; providing
`temporary use of online non-downloadable
`software for use by others to manage network
`and database users, simplify user
`authentication, and control access to computer
`software, software applications and software
`development tools; software as a service (SaaS)
`services featuring software for securing
`communications between computers; computer
`services, namely, providing user authentication
`services using software technology in online
`communications, transactions, and applications
`for network access control, security
`management and security application auditing;
`
`NOTICE OF OPPOSITION
`- 4 -
`
`

`

`OKTA
`
`computerized identification verification
`services, namely, providing authentication of
`personal identification information using
`software technology for communications and
`transactions via a global computer network;
`computerized identification verification
`services, namely, providing authentication using
`software technology for communications and
`transactions via a global computer network,
`namely, validating personal identification
`information and user credentials to secure
`access to online computer services and software
`programs and products
`
`7041769 Cl 41: educational services, namely, providing
`of training in the fields of technology,
`information technology, computers, computer
`software, computer networks, and computer and
`online security, authentication, and identity
`management; educational services, namely,
`training courses, testing, and distributing course
`materials in connection therewith, all in the
`fields of technology, information technology,
`computers, computer software, computer
`networks, and computer and online security,
`authentication, and identity management;
`educational services, namely, providing training
`for certification of others in the fields of
`technology, information technology, computers,
`computer software, computer networks, and
`computer and online security, authentication,
`and identity management; IT training services;
`educational services, namely, organizing and
`providing conferences, workshops, meetings,
`and seminars in the field of technology,
`information technology, computers, computer
`software, computer networks, and computer and
`online security, authentication, and identity
`management
`
`See Exhibit A. The above-identified registrations are valid and in full force and effect. Reg
`
`Nos. 4000741 and 4046232 have also become incontestable.
`
`NOTICE OF OPPOSITION
`- 5 -
`
`

`

`4.
`
`In addition to its registered rights, Okta owns common law rights in the
`
`OKTA Mark for information technology consulting services. For example, Okta partners
`
`with businesses to implement customizable technology services that enable secure access,
`
`authentication, and automation. Businesses use Okta’s services to optimize digital
`
`experiences by providing secure and seamless authentication systems, preventing cyber
`
`attacks and identify theft, managing third party API to safely exchange data, among other
`
`features and functions.
`
`5.
`
`Okta’s identification and access management services have received
`
`widespread recognition, and Okta’s OKTA Marks are recognized and relied on by
`
`consumers as identifying Okta’s goods and services and distinguishing them from the goods
`
`and services of others. The OKTA Marks have come to symbolize and represent Okta’s
`
`reputation for high-quality goods and services and the valuable goodwill that Okta has built
`
`in its brand.
`
`6.
`
`Notwithstanding Okta’s prior registered and common law rights, and well
`
`after Okta’s OKTA Marks gained notoriety and a reputation as symbols of high-quality
`
`goods and services, in 2020 Applicant filed its Application for the OCTO mark for
`
`“[i]nformation technology consulting services” in Class 42 (“Applicant’s Services”).
`
`7.
`
`Okta’s first use of its OKTA Marks and filing date of its registrations bearing
`
`the OKTA Marks precede the filing date of the Application and Applicant’s January 20,
`
`2022 claimed first use date. Okta has priority over Applicant’s Application and claimed first
`
`use date.
`
`8.
`
`The Application was published for opposition on May 30, 2023. Okta timely
`
`filed an extension to oppose.
`
`NOTICE OF OPPOSITION
`- 6 -
`
`

`

`9.
`
`Applicant’s use of the OCTO mark so resembles Okta’s OKTA-formative
`
`Marks as to be likely to cause confusion, mistake or to deceive, and is likely to dilute the
`
`distinctiveness of Okta’s OKTA mark.
`
`10.
`
`If Applicant is granted registration, it will interfere with Okta’s exclusive
`
`rights to use its OKTA Marks and will cause damage to Okta.
`
`FIRST GROUND FOR OPPOSITION
`LIKELIHOOD OF CONFUSION – 15 U.S.C. § 1052(d)
`
`Okta repeats and alleges the allegations contained in the foregoing
`
`11.
`
`paragraphs as if set forth fully herein.
`
`12.
`
`Section 2(d) of the Lanham Act, 15 U.S.C. §1052(d), prohibits registration on
`
`the Principal Register of a mark that consists of or comprises a mark which so resembles a
`
`mark previously used in the U.S. by another and not abandoned, as to be likely, when used
`
`on or in connection with the goods of the applicant, to cause confusion, to cause mistake, or
`
`to deceive.
`
`13.
`
`Okta began using the OKTA-formative Marks at least as early as 2010, prior
`
`to Applicant’s claimed January 20, 2020 claimed first use date and application filing date in
`
`2022. Accordingly, Okta has priority.
`
`14.
`
`Applicant’s OCTO mark is confusingly similar to Okta’s OKTA marks.
`
`Both marks are four-letter word marks and the marks are visually similar. Applicant’s
`
`OCTO mark is not only substantially similar in appearance, but it also sounds identical to
`
`Okta’s OKTA Marks. The parties’ marks create the same commercial impression,
`
`particularly since neither mark has a conceptual meaning.
`
`15.
`
`Similarity in appearance alone is sufficient to find marks confusingly similar.
`
`In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citation omitted). The
`
`NOTICE OF OPPOSITION
`- 7 -
`
`

`

`addition, deletion or substitution of letters does not eliminate the likelihood of confusion.
`
`See, e.g., Weiss Assocs. Inc. v. HRL Assocs. Inc., 902 F.2d 1546 (Fed. Cir. 1990) (TMM
`
`confusingly similar to TMS); In re Lamson Oil Co., 6 USPQ2d 1041 (TTAB 1987)
`
`(TRUCOOL and TURCOOL confusingly similar in appearance); In re Pellerin Milnor
`
`Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS stylized highly
`
`similar in appearance); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (differences between
`
`LUTEX and LUTEXAL insufficient to avoid confusion); Interlego AG v. Abrams/Gentile
`
`Ent. Inc., 63 USPQ2d 1862 (TTAB 2002) (LEGO and MEGO confusingly similar for toys).
`
`16.
`
`Additionally, the Application covers services that overlap with, and/or are
`
`substantially related to Okta’s goods and services offered under the OKTA Marks.
`
`17.
`
`Applicant’s use of the OCTO mark is thus confusingly similar to Okta’s
`
`OKTA Marks.
`
`18.
`
`Applicant’s OCTO mark so closely resembles Okta’s OKTA Marks as to be
`
`likely, when applied to Applicant’s Services, to cause confusion, to cause mistake or to
`
`deceive by creating the erroneous impression that Applicant’s Services originate from or are
`
`associated with Okta, or that Applicant’s Services are authorized, endorsed or sponsored by
`
`Okta.
`
`19.
`
`Applicant filed its Application bearing the OCTO mark without license,
`
`authorization or permission from Okta.
`
`20.
`
`Registration of Applicant’s mark will result in damage to Okta and create a
`
`cloud on the lawful right of Okta to adopt and use the OKTA-formative Marks.
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`- 8 -
`
`

`

`SECOND GROUND FOR OPPOSITION
`DILUTION – 15 U.S.C. § 1125(c)
`
`Okta repeats and alleges the allegations contained in the foregoing
`
`21.
`
`paragraphs as if set forth fully herein.
`
`22.
`
`Okta’s OKTA mark is distinctive in relation to Okta’s goods and services
`
`offered under the mark.
`
`23.
`
`Okta’s OKTA mark also is widely recognized by the general consuming
`
`pubic of the United States as designating Okta as the source of its goods and services under
`
`the mark. Okta’s OKTA mark therefore is famous and distinctive within the meaning of
`
`Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c).
`
`24.
`
`Okta’s OKTA mark has been famous within the meaning of Section 43(c)
`
`since prior to the filing date of the Application and any alleged first date of use in the United
`
`States that Applicant may be able to establish.
`
`25.
`
`Okta has engaged in substantially exclusive use of its OKTA mark.
`
`26.
`
`Applicant’s OCTO mark is nearly identical to Okta’s OKTA mark in that it is
`
`substantially similar in appearance and identical in sound.
`
`27.
`
`Applicant’s use of the OCTO mark in connection with Applicant’s Services
`
`likely would cause consumers to associate Applicant’s OCTO mark with Okta’s OKTA
`
`mark.
`
`28.
`
`Applicant’s OCTO mark therefore is likely to dilute the distinctiveness of
`
`Okta’s OKTA mark by eroding consumers’ identification of that mark with Okta, and by
`
`otherwise lessening the capacity of that mark to identify and distinguish Okta’s goods and
`
`services, in violation of Section 43(c)(1).
`
`
`
`NOTICE OF OPPOSITION
`- 9 -
`
`

`

`WHEREFORE, Okta respectively requests that the Trademark Trial and Appeal
`
`Board deny registration of U.S. Application Serial Nos. 88844911 and for such other relief
`
`as may be deemed just and proper.
`
`Respectfully submitted,
`
`VERSO LAW GROUP LLP
`
`Dated: September 25, 2023
`
`
`
`
`
` By: /s/ Sophy Tabandeh
`
`Sophy Tabandeh
`
`Ryan Bricker
`
`Luisa M. Bonachea
`
`
`
`Attorneys for Opposer Okta, Inc.
`
`
`
`NOTICE OF OPPOSITION
`- 10 -
`
`

`

`
`
`EXHIBIT A
`EXHIBIT A
`
`

`

`7/3/23, 2:54 PM
`
`Trademark Status & Document Retrieval
`
`For assistance with TSDR, email teas@uspto.gov and include your serial number, the document you are looking for,
`and a screenshot of any error messages you have received.
`
`STATUS
`
`DOCUMENTS
`
`MAINTENANCE
`
`Back to Search
`
`Print
`
`Generated on: This page was generated by TSDR on 2023-07-03 17:54:28 EDT
`
`Mark: OKTA
`
`US Serial Number: 85018298
`
`US Registration Number: 4000741
`
`Register: Principal
`
`Mark Type: Service Mark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing Date: Apr. 20, 2010
`
`Registration Date: Jul. 26, 2011
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Offic
`
`Status: The registration has been renewed.
`
`Status Date: Jan. 04, 2022
`
`Publication Date: May 10, 2011
`
`Mark Information
`
`Mark Literal Elements: OKTA
`
`
`
`Standard Character Claim: Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
`
`Mark Drawing Type: 4 - STANDARD CHARACTER MARK
`
`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 services, namely, providing unification, management, performance optimization and integration of
`networks, enterprise software applications, users, and internet resources; computer services, namely, monit
`reporting on the performance of computer systems, networks, and enterprise software applications
`
`International Class(es): 042 - Primary Class
`
`U.S Class(es): 100, 101
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: Apr. 12, 2010
`
`Use in Commerce: Apr. 12, 2010
`
`https://tsdr.uspto.gov/#caseNumber=85018298&caseType=SERIAL_NO&searchType=statusSearch
`
`1/4
`
`

`

`7/3/23, 2:54 PM
`
`Trademark Status & Document Retrieval
`
`For: computer services, namely, providing user authentication services in e-commerce transactions for network a
`management and security application auditing; computerized identification verification services, namely, pro
`personal identification information for network access control, security management and security application
`identification verification services, namely, providing authentication for electronic funds transfer, credit and d
`check transactions via a global computer network for network access control, security management and sec
`
`International Class(es): 045 - Primary Class
`
`U.S Class(es): 100, 101
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: Apr. 12, 2010
`
`Basis Information (Case Level)
`
`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Filed No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: Okta, Inc.
`
`Use in Commerce: Apr. 12, 2010
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`Owner Address: 100 First Street, 6th Floor
`San Francisco, CALIFORNIA UNITED STATES 94105
`
`Legal Entity Type: CORPORATION
`
`State or Country Where
`Organized:
`
`DELAWARE
`
`Attorney/Correspondence Information
`
`Attorney of Record
`Attorney Name: Luisa Bonachea
`
`Attorney Primary Email
`Address:
`
`Correspondent
`Correspondent
`Name/Address:
`
`luisa.bonachea@versolaw.com
`
`Attorney Email Authorized: Yes
`
`Luisa Bonachea
`Verso Law Group LLP
`209 Kearny St., 3rd Floor
`San Francisco, CALIFORNIA UNITED STATES 94108
`
`Phone: 4155340495
`
`Correspondent e-mail:
`
`luisa.bonachea@versolaw.com
`info@versolaw.com
`carmen.hunt@versolaw.com
`
`Domestic Representative - Not Found
`
`Correspondent e-mail
`Authorized:
`
`Yes
`
`https://tsdr.uspto.gov/#caseNumber=85018298&caseType=SERIAL_NO&searchType=statusSearch
`
`2/4
`
`

`

`7/3/23, 2:54 PM
`Prosecution History
`
`Trademark Status & Document Retrieval
`
`Date
`Apr. 06, 2023
`
`Apr. 06, 2023
`
`Apr. 06, 2023
`
`Apr. 06, 2023
`
`Apr. 06, 2023
`
`Feb. 06, 2023
`
`Feb. 06, 2023
`
`Feb. 06, 2023
`
`Jan. 04, 2022
`
`Jan. 04, 2022
`
`Jan. 04, 2022
`
`Jan. 04, 2022
`
`Jul. 23, 2021
`
`Mar. 08, 2021
`
`Mar. 08, 2021
`
`Mar. 08, 2021
`
`Mar. 08, 2021
`
`Mar. 08, 2021
`
`Jul. 26, 2020
`
`Oct. 09, 2016
`
`Oct. 08, 2016
`
`Oct. 06, 2016
`
`Aug. 02, 2016
`
`Aug. 19, 2013
`
`Aug. 19, 2013
`
`Aug. 09, 2011
`
`Aug. 09, 2011
`
`Jul. 26, 2011
`
`May 10, 2011
`
`Proceeding Number
`88888
`
`Description
`APPLICANT/CORRESPONDENCE CHANGES (NON-
`RESPONSIVE) ENTERED
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP
`RECEIVED
`
`TEAS CHANGE OF OWNER ADDRESS RECEIVED
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP
`RECEIVED
`
`NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
`
`REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS)
`
`77074
`
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED 77074
`
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`
`77074
`
`TEAS SECTION 8 & 9 RECEIVED
`
`APPLICANT/CORRESPONDENCE CHANGES (NON-
`RESPONSIVE) ENTERED
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP
`RECEIVED
`
`TEAS CHANGE OF OWNER ADDRESS RECEIVED
`
`COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED
`
`NOTICE OF ACCEPTANCE OF SEC. 8 & 15 - E-MAILED
`
`REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
`
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`
`TEAS SECTION 8 & 15 RECEIVED
`
`APPLICANT/CORRESPONDENCE CHANGES (NON-
`RESPONSIVE) ENTERED
`
`TEAS CHANGE OF OWNER ADDRESS RECEIVED
`
`APPLICANT/CORRESPONDENCE CHANGES (NON-
`RESPONSIVE) ENTERED
`
`TEAS CHANGE OF OWNER ADDRESS RECEIVED
`
`REGISTERED-PRINCIPAL REGISTER
`
`OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-
`MAILED
`
`88888
`
`77315
`
`77315
`
`88888
`
`88888
`
`May 10, 2011
`
`PUBLISHED FOR OPPOSITION
`
`https://tsdr.uspto.gov/#caseNumber=85018298&caseType=SERIAL_NO&searchType=statusSearch
`
`3/4
`
`

`

`7/3/23, 2:54 PM
`
`Trademark Status & Document Retrieval
`
`Apr. 01, 2011
`
`Mar. 28, 2011
`
`Mar. 28, 2011
`
`Mar. 28, 2011
`
`Mar. 28, 2011
`
`Dec. 21, 2010
`
`Dec. 21, 2010
`
`Dec. 21, 2010
`
`Nov. 19, 2010
`
`Nov. 19, 2010
`
`Nov. 19, 2010
`
`Nov. 08, 2010
`
`Nov. 05, 2010
`
`Jul. 28, 2010
`
`Jul. 28, 2010
`
`Jul. 28, 2010
`
`Jul. 28, 2010
`
`Apr. 23, 2010
`
`LAW OFFICE PUBLICATION REVIEW COMPLETED
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`TEAS/EMAIL CORRESPONDENCE ENTERED
`
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`
`TEAS REQUEST FOR RECONSIDERATION RECEIVED
`
`NOTIFICATION OF FINAL REFUSAL EMAILED
`
`FINAL REFUSAL E-MAILED
`
`FINAL REFUSAL WRITTEN
`
`TEAS/EMAIL CORRESPONDENCE ENTERED
`
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`
`ASSIGNED TO LIE
`
`ASSIGNED TO EXAMINER
`
`TEAS RESPONSE TO OFFICE ACTION RECEIVED
`
`NOTIFICATION OF NON-FINAL ACTION E-MAILED
`
`NON-FINAL ACTION E-MAILED
`
`NON-FINAL ACTION WRITTEN
`
`ASSIGNED TO EXAMINER
`
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED
`
`68658
`
`88889
`
`88889
`
`76503
`
`68658
`
`68658
`
`68658
`
`76503
`
`6325
`
`6325
`
`76851
`
`76851
`
`TM Staff and Location Information
`
`TM Staff Information - None
`