ESTTA Tracking number:
`
`ESTTA1320071
`
`Filing date:
`
`11/03/2023
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`91287326
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Defendant
`F2 Strategy
`
`JOSHUA A. SCHAUL
`GARVEY ADAM LLP
`19900 MACARTHUR BOULEVARD
`SUITE 530
`IRVINE, CA 92612
`UNITED STATES
`Primary email: trademark@garveyadam.com
`714-924-4377
`
`Answer
`
`Anita B. Polott
`
`anita.polott@morganlewis.com, katie.feiereisel@morganlewis.com
`
`/Anita B. Polott/
`
`11/03/2023
`
`Attachments
`
`OCTO Answer to File.pdf(184599 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`OKTA, INC.,
`
`
`
`v.
`
`F2 STRATEGY,
`
`
`
`Opposer,
`
`Applicant.
`
`
`
`
`
`Opposition No. 91287326
`
`
`
`Serial No.: 88844911
`Filed: March 23, 2020
`Published: May 30, 2023
`Mark: OCTO
`
`
`
`
`
`
`
`ANSWER TO NOTICE OF OPPOSITION
`
`Applicant F2 Strategy (“Applicant”), by and through its undersigned counsel, hereby
`
`answers the Notice of Opposition filed by Okta, Inc. (“Opposer”) in accordance with the
`
`numbered paragraphs thereof as follows. Applicant denies all allegations in Opposer’s Notice of
`
`Opposition that are not expressly admitted.
`
`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
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`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
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`worldwide for the company’s identification and access management services.
`
`ANSWER: Applicant is without knowledge or information sufficient to form a belief as
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`to the truth of the allegations of this paragraph and on that basis denies them.
`
`2.
`
`On information and belief, Applicant F2 Strategy is a California corporation with
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`an address at 50 Claire Way, Belvedere Tiburon, California 94920.
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`ANSWER: Admitted that Applicant’s former corporate address, 50 Claire Way,
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`Belvedere Tiburon, California 94920, appears on Application Serial No. 88844911. Applicant’s
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`current corporate address is 330 North Wabash Avenue, Floor 23, Chicago, Illinois 60611.
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`1
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`

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`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
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`registrations:
`
`Trademark
`
`Reg. No.
`
`Classes/Goods & Services
`
`OKTA
`
`4000741
`
`OKTA
`
`4046232
`
`OKTA
`
`6682165
`
`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
`
`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 computer systems, networks, and
`enterprise software applications
`
`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
`
`2
`
`

`

`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 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
`
`3
`
`

`

`OKTA
`
`7041769
`
`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; 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
`
`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
`
`4
`
`

`

`
`
`See Exhibit A. The above-identified registrations are valid and in full force and effect.
`
`Reg Nos. 4000741 and 4046232 have also become incontestable.
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`ANSWER: Applicant admits that the records of the United States Patent and Trademark Office
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`identify Opposer as the record title owner of the registrations identified in this paragraph and
`
`show Reg. Nos. 4000741 and 4046232 as being incontestable. Applicant denies the remaining
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`allegations of this paragraph.
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`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.
`
`ANSWER: Applicant is without knowledge or information sufficient to form a belief as
`
`to the truth of the allegations of this paragraph and on that basis denies them.
`
`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
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`Okta’s goods and services and distinguishing them from the goods and services of others. The
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`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.
`
`
`
`ANSWER: Applicant is without knowledge or information sufficient to form a belief as
`
`to the truth of the allegations of this paragraph and on that basis denies them.
`
`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
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`5
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`

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`services, in 2020 Applicant filed its Application for the OCTO mark for “[i]nformation
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`technology consulting services” in Class 42 (“Applicant’s Services”).
`
`
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`ANSWER: Applicant admits that it filed its Application for the OCTO mark for
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`“[i]nformation technology consulting services” in Class 42 on March 23, 2020. Applicant denies
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`the remaining allegations of this paragraph.
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`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.
`
`
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`ANSWER: Applicant admits that the filing date of the registrations identified in
`
`paragraph 3 predate the filing date of Applicant’s Application and claimed date of first use.
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`Applicant is without knowledge or information sufficient to form a belief as to the truth of the
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`remaining allegations of this paragraph and on that basis denies them.
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`8.
`
`The Application was published for opposition on May 30, 2023. Okta timely filed
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`an extension to oppose.
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`
`
`ANSWER: Admitted.
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`9.
`
`Applicant’s use of the OCTO mark so resembles Okta’s OKTA-formative Marks
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`as to be likely to cause confusion, mistake or to deceive, and is likely to dilute the distinctiveness
`
`of Okta’s OKTA mark.
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`
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`ANSWER: Denied.
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`10.
`
`If Applicant is granted registration, it will interfere with Okta’s exclusive rights to
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`use its OKTA Marks and will cause damage to Okta.
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`
`
`ANSWER: Denied.
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`6
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`

`

`FIRST GROUND FOR OPPOSITION
`LIKELIHOOD OF CONFUSION – 15 U.S.C. § 1052(d)
`
`Okta repeats and alleges the allegations contained in the foregoing paragraphs as
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`11.
`
`if set forth fully herein.
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`
`
`ANSWER: Applicant repeats its answers to the foregoing paragraphs as if set forth fully
`
`herein.
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`12.
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`Section 2(d) of the Lanham Act, 15 U.S.C. §1052(d), prohibits registration on the
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`Principal Register of a mark that consists of or comprises a mark which so resembles a mark
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`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.
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`
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`ANSWER: This paragraph contains statements of law as to which no response is
`
`required and on that basis they are denied.
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`13.
`
`Okta began using the OKTA-formative Marks at least as early as 2010, prior to
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`Applicant’s claimed January 20, 2020 claimed first use date and application filing date in 2022.
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`Accordingly, Okta has priority.
`
`
`
`ANSWER: Applicant is without knowledge or information sufficient to form a belief as
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`to the truth of the allegations of this paragraph and on that basis denies them.
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`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
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`not only substantially similar in appearance, but it also sounds identical to Okta’s OKTA Marks.
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`The parties’ marks create the same commercial impression, particularly since neither mark has a
`
`conceptual meaning.
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`
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`ANSWER: Denied.
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`15.
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`Similarity in appearance alone is sufficient to find marks confusingly similar. In
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`7
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`

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`re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citation omitted). The
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`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).
`
`
`
`ANSWER: This paragraph contains statements of law as to which no response is
`
`required and on that basis they are denied.
`
`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.
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`ANSWER: Denied.
`
`17.
`
`Applicant’s use of the OCTO mark is thus confusingly similar to Okta’s OKTA
`
`Marks.
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`ANSWER: Denied.
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`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
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`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.
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`ANSWER: Denied.
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`19.
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`Applicant filed its Application bearing the OCTO mark without license,
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`8
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`authorization or permission from Okta.
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`
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`ANSWER: Applicant denies that it was required to secure any license, authorization, or
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`permission from Okta prior to filing its Application and denies the remaining allegations of this
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`paragraph.
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`20.
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`Registration of Applicant’s mark will result in damage to Okta and create a cloud
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`on the lawful right of Okta to adopt and use the OKTA-formative Marks.
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`ANSWER: Denied.
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`SECOND GROUND FOR OPPOSITION
`DILUTION – 15 U.S.C. § 1125(c)
`
`Okta repeats and alleges the allegations contained in the foregoing paragraphs as
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`21.
`
`if set forth fully herein.
`
`
`
`ANSWER: Applicant repeats its answers to the foregoing paragraphs as if set forth fully
`
`herein.
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`22.
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`Okta’s OKTA mark is distinctive in relation to Okta’s goods and services offered
`
`under the mark.
`
`
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`ANSWER: Denied.
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`23.
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`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.
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`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).
`
`
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`ANSWER: Applicant states that Opposer’s claim that the Okta mark is “famous” within
`
`the meaning of Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c) is without any evidentiary
`
`support and denies the allegations of this paragraph.
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`24.
`
`Okta’s OKTA mark has been famous within the meaning of Section 43(c) since
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`9
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`

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`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.
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`ANSWER: Applicant states that Opposer’s claim that the Okta mark is “famous” within
`
`the meaning of Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c) is without any evidentiary
`
`support and denies the allegations of this paragraph.
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`25.
`
`Okta has engaged in substantially exclusive use of its OKTA mark.
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`ANSWER: Applicant is without knowledge or information sufficient to form a belief as
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`to the truth of the allegations of this paragraph and on that basis denies them.
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`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.
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`ANSWER: Denied.
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`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.
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`ANSWER: Denied.
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`28.
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`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
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`lessening the capacity of that mark to identify and distinguish Okta’s goods and services, in
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`violation of Section 43(c)(1).
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`ANSWER: Denied.
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`ADDITIONAL DEFENSES
`
`Without prejudice to the denials set forth in its Answer to Notice of Opposition and
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`without admitting any allegations in the Notice of Opposition not otherwise admitted, Applicant
`
`asserts the following Additional Defenses to Opposer’s claims. Applicant reserves all further
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`10
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`

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`defenses under Rule 8(c) of the Federal Rules of Civil Procedure, the Lanham Act, and any other
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`defenses at law or in equity, that may now or in the future exist based on discovery and further
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`factual investigation in the case:
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`1.
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`Opposer’s claims are barred, in whole or in part, for failure to state a claim upon
`
`which relief can be granted.
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`WHEREFORE, having fully answered the claims in the Notice of Opposition, Applicant
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`respectfully requests that the Notice of Opposition be dismissed with prejudice in all respects.
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`Dated: November 3, 2023
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`Respectfully submitted,
`
`By: /s/ Anita B. Polott
`Anita B. Polott
`MORGAN, LEWIS & BOCKIUS LLP
`1111 Pennsylvania Ave., N.W.
`Washington, D.C. 20004
`Tel: (202) 739-3000
`Fax: (202) 739-3001
`Email: anita.polott@morganlewis.com
`
`Kathryn A. Feiereisel
`MORGAN, LEWIS & BOCKIUS LLP
`110 North Wacker Drive, Suite 2800
`Chicago, IL 60606
`Tel: (312) 324-1000
`Fax: (312) 324-1001
`Email: katie.feiereisel@morganlewis.com
`
`Attorneys for Applicant
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`11
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