ESTTA Tracking number:
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`ESTTA1323948
`
`Filing date:
`
`11/22/2023
`
`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, LLC
`
`ANITA B POLOTT
`MORGAN LEWIS & BOCKIUS LLP
`1111 PENNSYLVANIA AVE NW
`WASHINGTON, DC 20004
`UNITED STATES
`Primary email: trademarks@morganlewis.com
`Secondary email(s): anita.polott@morganlewis.com, jen-
`nifer.evans@morganlewis.com, kiran.jassal@morganlewis.com, tri-
`cia.brown@morganlewis.com
`202-739-5397
`
`Motion to Suspend for Civil Action
`
`Kathryn Feiereisel
`
`katie.feiereisel@morganlewis.com, anita.polott@morganlewis.com
`
`/Kathryn Feiereisel/
`
`11/22/2023
`
`Attachments
`
`MOT TO SUSPEND OKTA.pdf(402592 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
`
`
`
`
`
`
`
`MOTION TO SUSPEND FOR CIVIL ACTION
`
`
`In accordance with Rule 2.117 of the Trademark Rules of Practice, and by and through its
`
`undersigned counsel, Applicant F2 Strategy n/k/a F2 Strategy, LLC (“F2”) respectfully requests
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`suspension of the above-styled opposition proceeding (“Proceeding”) because the claims asserted
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`by Opposer Okta, Inc. (“Okta”) are the subject of a pending civil action.
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`
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`F2 and Okta are currently involved in a civil action, F2 Strategy, LLC v. Okta, Inc., Civil
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`Action No. 123-cv-01325-GBW, which is pending in the United States District Court for the
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`District of Delaware (the “Civil Action”). In the Civil Action, F2 has requested a declaratory
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`judgment that its OCTO-formative marks do not infringe or dilute any valid right of Okta—
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`including Okta’s purported rights in the registrations Okta relies upon in the Proceeding—on the
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`grounds that F2’s OCTO-formative marks have not caused and are not likely to cause confusion
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`with or to dilute Okta’s OKTA mark. F2 also alleges in the Civil Action that Okta’s OKTA mark
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`is not famous. F2 in the Civil Action has requested an order directing the United States Patent
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`and Trademark Office to dismiss the Proceeding on these same grounds. A copy of the
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`complaint in the Civil Action is attached as Exhibit 1.
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`
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`The outcome of the Civil Action will have a bearing on this Proceeding. The same issues
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`raised in the Civil Action—including the fame of the OKTA mark and likelihood of confusion
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`1
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`

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`and dilution—are the subject of this Proceeding, and F2 has requested a court order directing the
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`Board to dismiss this Proceeding.
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`
`
`WHEREFORE, F2 requests that this Proceeding be suspended until termination of the
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`Civil Action.
`
`
`Dated: November 22, 2023
`
`
`
`
`
`
`
`
`
`
`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
`
`
`
`2
`
`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing MOTION TO SUSPEND
`FOR CIVIL ACTION has been served on Okta, Inc. by forwarding said copy on November 22,
`2023, via email, to:
`
`Sophy Tabandeh
`sophy.tabandeh@versolaw.com, ryan.bricker@versolaw.com,
`enrike.kaltakhtchyan@versolaw.com, annette.krieger@versolaw.com,
`shannon.glenn@versolaw.com, luisa.bonachea@versolaw.com,
`trademarks@versolaw.com
`
`
`Dated: November 22, 2023
`
`
`By: s/ Kathryn A. Feiereisel
`Kathryn A. Feiereisel
`
`
`
`
`
`
`
`
`
`
`
`3
`
`

`

`EXHIBIT 1
`EXHIBIT 1
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`

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`Case 1:23-cv-01325-UNA Document 1 Filed 11/20/23 Page 1 of 10 PageID #: 1
`
`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`F2 STRATEGY, LLC,
`
`Plaintiff,
`
`v.
`
`OKTA, INC.,
`
`Defendant.
`
`Civil Action No. ___________
`
`JURY TRIAL DEMANDED
`
`COMPLAINT FOR DECLARATORY JUDGMENT
`
`Plaintiff F2 Strategy, LLC (“F2” or “Plaintiff”) brings this action against Defendant Okta,
`
`Inc. (“Okta” or “Defendant”) as follows:
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`NATURE OF THE ACTION
`
`1.
`
`Plaintiff brings this action for a judgment declaring that its use of the trademark
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`OCTO—alone and in combination with other terms and designs (the “OCTO Marks”) in
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`connection with the sale and promotion of information technology consulting services does not
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`infringe or dilute any alleged trademark rights of Defendant. Defendant has claimed rights in the
`
`trademark okta (the “okta Mark”) and expressly alleges infringement and dilution by Plaintiff in
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`connection with Plaintiff’s use of the OCTO Marks, has demanded that Plaintiff cease all use of
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`the OCTO Marks and abandon its pending applications to register the OCTO Marks with the
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`United States Patent and Trademark Office (“USPTO”), has commenced an opposition proceeding
`
`against Plaintiff at the USPTO, and has made veiled threats of litigation against Plaintiff. A
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`declaratory ruling is necessary to remove the pall of uncertainty surrounding Plaintiff’s right to
`
`use the OCTO Marks in connection with the sale and promotion of its services going forward.
`
`

`

`Case 1:23-cv-01325-UNA Document 1 Filed 11/20/23 Page 2 of 10 PageID #: 2
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`THE PARTIES
`
`2.
`
`Plaintiff F2 Strategy, LLC is a Delaware limited liability company with a principal
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`place of business at 330 North Wabash Avenue, Floor 23, Chicago, Illinois 60611.
`
`3.
`
`Defendant Okta, Inc. is a Delaware corporation with a principal place of business
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`at 100 First Street, 6th Floor, San Francisco, California 94105.
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`JURISDICTION AND VENUE
`
`4.
`
`This action arises and is brought under the Declaratory Judgment Act, 28 U.S.C.
`
`§§ 2201-2202, and the Lanham Act, 15 U.S.C. §§ 1051, et seq. This Court has subject matter
`
`jurisdiction pursuant to 15 U.S.C. §§ 1116 and 1121 and 28 U.S.C. §§ 1331 and 2201-2202.
`
`5.
`
`Defendant/its counsel have written and called Plaintiff/its counsel, alleging
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`infringement and demanding that Plaintiff cease all use and attempted registration of Plaintiff’s
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`OCTO Marks.
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`6.
`
`This Court has personal jurisdiction over Defendant because Defendant is
`
`incorporated in—and therefore resides in—Delaware and because Defendant transacts substantial
`
`business within this District, including without limitation by selling goods and services within this
`
`District.
`
`7.
`
`Venue is proper in this District under 28 U.S.C. § 1391(b) at least because
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`Defendant resides in, is incorporated in, and conducts business in this District.
`
`A.
`
`Plaintiff and the OCTO Marks.
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`BACKGROUND
`
`8.
`
`Plaintiff is a wealth management technology services consulting firm helping
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`complex registered investment advisor (RIA), wealth, bank/trust and family office firms improve
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`their technical capabilities to build exceptional client and advisor experiences.
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`- 2 -
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`

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`Case 1:23-cv-01325-UNA Document 1 Filed 11/20/23 Page 3 of 10 PageID #: 3
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`9.
`
`Among many other things, Plaintiff offers a technology consulting service that
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`provides companies with technology expertise, analyzes their technology needs, proposes and
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`helps companies implement technology solutions, and provides the services of an outsourced Chief
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`Technology Officer.
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`10.
`
`OCTO is a distinctive trademark derived from the acronym for Outsourced Chief
`
`Technology Officer.
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`11.
`
`Plaintiff has offered information technology consulting services under the OCTO
`
`Marks since at least January 20, 2020. Since that time, Plaintiff has marketed, advertised, and
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`promoted its services using the OCTO Marks resulting in significant goodwill and customer
`
`recognition in the OCTO Marks.
`
`12.
`
`Plaintiff consistently uses the OCTO Marks in close proximity to its F2 Strategy
`
`trade name and the logos shown below (the “F2 Logos”).
`
`13.
`
`Plaintiff does not own any proprietary software and does not sell software to
`
`consumers under the OCTO Marks.
`
`14.
`
`In addition to Plaintiff’s common law rights in the OCTO Marks, Plaintiff owns the
`
`following applications to register the OCTO Marks in the United States (collectively, the “OCTO
`
`Applications”):
`
`Mark
`
`Serial No. Filing Date and Basis
`
`Goods/Services (First Use Date)
`
`Class 42: Information technology
`consulting services. (First Use in
`Commerce: 1/20/2020)
`
`OCTO
`
`88/844,911 Filing Date: 3/23/2020
`
`Use-Based
`Application
`
`- 3 -
`
`

`

`Case 1:23-cv-01325-UNA Document 1 Filed 11/20/23 Page 4 of 10 PageID #: 4
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`OCTO
`WEALTH
`
`97/937,885 Filing Date: 5/16/2023
`
`Intent-to-Use
`Application
`
`Class 42: Consultancy and information
`services relating to information
`technology architecture and
`infrastructure.
`
`15.
`
`Plaintiff’s application Serial No. 88/844,911 was approved by the USPTO for
`
`publication and is pending the outcome of Opposition No. 91287326 filed by Defendant. Plaintiff’s
`
`application Serial No. 97/937,885 for OCTO WEALTH has not yet been examined.
`
`B.
`
`Defendants and the okta Mark.
`
`16.
`
`Defendant claims to own rights in the okta Mark.
`
`17.
`
`Defendant has four U.S. registrations for the okta Mark (collectively, the “okta
`
`Registrations”), namely, U.S. Registration Nos. 4,000,741; 4,046,232; 6,682,165; and 7,041,769,
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`all for OKTA.
`
`18.
`
`Defendant also uses the stylized mark depicted below (the “okta logo”). In the okta
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`logo, “okta” is shown in lowercase.
`
`19.
`
`Defendant’s Chief Marketing Officer explained in a Built In Seattle article that the
`
`trademark Okta was chosen for its relation to clouds: “An ‘okta’ is a unit of measurement used to
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`describe cloudiness . . . Given that the Okta Identity Cloud helps organizations securely connect
`
`their people to technology – in many cases, cloud apps and services – the name Okta makes perfect
`
`sense for us.” See www.builtinseattle.com/2018/09/25/startup-name-stories.
`
`20.
`
`Upon information and belief, Defendant uses the okta Mark and the okta logo in
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`connection with authentication, identification, and access management software sold directly to
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`individual consumers and businesses, for access to applications, devices, and users. See
`
`https://www.okta.com/.
`
`- 4 -
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`

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`Case 1:23-cv-01325-UNA Document 1 Filed 11/20/23 Page 5 of 10 PageID #: 5
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`21.
`
`Upon information and belief, Defendant does not offer ongoing consulting services
`
`in the form of an outsourced Chief Technology Officer, whether under the okta Mark or otherwise.
`
`C.
`
`Controversy Between the Parties.
`
`22.
`
`In June of 2023, Defendant sent a letter to Plaintiff alleging that Plaintiff was
`
`infringing Defendant’s okta Mark and demanding that Plaintiff cease all use of the OCTO Marks
`
`and abandon its applications to register the OCTO Marks with the USPTO.
`
`23.
`
`On multiple occasions thereafter, in both correspondence and in phone
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`conversations through its counsel, Defendant continues to maintain its accusations of infringement.
`
`Plaintiff has provided multiple reasons why use of the OCTO Marks does not infringe Defendant’s
`
`alleged rights in the okta Mark, including the dissimilarity of the marks’ commercial impressions,
`
`that the companies offer different products/services at different prices, that Plaintiff consistently
`
`uses OCTO in close proximity to the F2 Strategy trade name and the F2 Logos, and that the Parties’
`
`marks have coexisted for over three years without any known instances of consumer confusion.
`
`24.
`
`Despite Plaintiff’s many attempts to explain the lack of any cognizable trademark
`
`or unfair competition claim, Defendant continues to allege infringement.
`
`25.
`
`On September 25, 2023, Defendant filed a Notice of Opposition with the
`
`Trademark Trial and Appeal Board (the “Board”), asking the Board to deny registration of OCTO
`
`(Serial No. 88/844,911) on grounds of likelihood of confusion and dilution by blurring of
`
`Defendant’s okta Mark (the “TTAB Action”).
`
`26.
`
`Since filing the TTAB Action, Defendant continues to allege infringement and
`
`dilution and to insist that Plaintiff cannot continue to use its OCTO Marks. Yet, Defendant has
`
`not filed suit against Plaintiff. Instead, it simply continues to allege infringement and demand that
`
`Plaintiff cease use of the OCTO Marks—a matter that the TTAB Action will not resolve.
`
`- 5 -
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`

`

`Case 1:23-cv-01325-UNA Document 1 Filed 11/20/23 Page 6 of 10 PageID #: 6
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`27.
`
`Plaintiff’s business is harmed by the uncertainty created by Defendant’s continuing
`
`allegations and veiled threats of litigation, which have given rise to a case of actual controversy
`
`within the jurisdiction of this Court pursuant to 28 U.S.C. §§ 2201-02.
`
`CLAIMS AND RELIEF SOUGHT
`
`FIRST CLAIM FOR RELIEF
`Declaratory Judgment of Non-Infringement
`
`28.
`
`Plaintiff alleges and incorporates herein the allegations of the preceding paragraphs
`
`of this Complaint as if fully set forth herein.
`
`29.
`
`Plaintiff’s use of the OCTO Marks does not infringe on any of Defendant’s alleged
`
`trademark rights in the okta Mark. Nor does Plaintiff’s sale or marketing of services in connection
`
`with the OCTO Marks constitute unfair competition.
`
`30.
`
`The OCTO Marks convey a commercial impression that is entirely distinct from
`
`the impression conveyed by the okta Mark. The marks are entirely different in sight, sound, and
`
`meaning. The Parties offer different goods/services under their respective marks, and the relevant
`
`consumers are sophisticated and unlikely to be confused, particularly given the price-point and
`
`specialized nature of Plaintiff’s services offered and planned to be offered (in the case of OCTO
`
`WEALTH) under the OCTO Marks. Plaintiff’s OCTO Marks are consistently used in close
`
`proximity to its F2 Strategy trade name and the F2 Logos, and the Parties’ marks have coexisted
`
`for over three years without any known instances of consumer confusion.
`
`31.
`
`Plaintiff’s continuing use of the OCTO Marks in connection with information
`
`technology consulting services does not cause actual or threatened harm to Defendant.
`
`32.
`
`Despite these facts, Defendant continues to allege likelihood of confusion, to
`
`demand that Plaintiff cease use of the OCTO Marks, and to demand that Plaintiff abandon the
`
`OCTO Applications.
`
`- 6 -
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`

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`Case 1:23-cv-01325-UNA Document 1 Filed 11/20/23 Page 7 of 10 PageID #: 7
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`33.
`
`As a result of the dispute between the Parties, an actual and justiciable controversy
`
`exists between the Parties regarding Plaintiff’s use of the OCTO Marks.
`
`34. Without prompt determination of whether Plaintiff’s use of the OCTO Marks
`
`infringes Defendant’s okta Mark, Plaintiff cannot relieve itself from the uncertainty generated by
`
`Defendant’s allegations.
`
`35.
`
`Plaintiff is entitled to declaratory judgment that it is not infringing, has not
`
`infringed, and is not liable for infringing any allegedly enforceable trademark rights owned by
`
`Defendant, pursuant to 15 U.S.C. §§ 1114 and 1125 and any state trademark or unfair competition
`
`laws that Defendant asserts.
`
`36.
`
`A declaratory judgment in this case would serve a useful purpose of clarifying and
`
`settling the respective legal rights and obligations of the parties, and it will terminate and afford
`
`relief from the uncertainty, insecurity, and controversy giving rise to this proceeding.
`
`SECOND CLAIM FOR RELIEF
`Declaratory Judgment of Non-Dilution
`
`37.
`
`Plaintiff alleges and incorporates herein the allegations of the preceding paragraphs
`
`of this Complaint as if fully set forth herein.
`
`38.
`
`Plaintiff’s use of the OCTO Marks does not dilute Defendant’s alleged trademark
`
`rights in the okta Mark.
`
`39.
`
`Defendant’s okta Mark is not widely recognized by the general consuming public
`
`and is thus not sufficiently famous to qualify for protection under the federal dilution statute, and
`
`there is no likelihood that Plaintiff’s use and registration of the OCTO Marks directly or indirectly
`
`dilute by blurring the distinctiveness of Defendant’s okta Mark.
`
`40.
`
`Plaintiff’s continuing use of the OCTO Marks in connection with information
`
`technology consulting services does not cause actual or threatened harm to Defendant.
`
`- 7 -
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`

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`Case 1:23-cv-01325-UNA Document 1 Filed 11/20/23 Page 8 of 10 PageID #: 8
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`41.
`
`Despite these facts, Defendant continues to allege likelihood of dilution, to demand
`
`that Plaintiff cease use of the OCTO Marks, and to demand that Plaintiff abandon the OCTO
`
`Applications.
`
`42.
`
`As a result of the dispute between the parties, an actual and justiciable controversy
`
`exists between the parties regarding Plaintiff’s use of the OCTO Marks.
`
`43. Without prompt determination of whether Plaintiff’s use of the OCTO Marks
`
`dilutes Defendant’s okta Mark, Plaintiff cannot relieve itself from the uncertainty generated by
`
`Defendant’s allegations.
`
`44.
`
`Plaintiff is entitled to declaratory judgment that it is not diluting, has not diluted,
`
`and is not liable for diluting any allegedly enforceable trademark rights owned by Defendant,
`
`pursuant to 15 U.S.C. § 1125(c) and any state laws that Defendant asserts.
`
`45.
`
`A declaratory judgment in this case would serve a useful purpose of clarifying and
`
`settling the respective legal rights and obligations of the parties, and it will terminate and afford
`
`relief from the uncertainty, insecurity, and controversy giving rise to this proceeding.
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`PRAYER FOR RELIEF
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`WHEREFORE, Plaintiff prays the Court grant the following relief:
`
`A.
`
`Enter a judgment declaring that Plaintiff’s use of the OCTO Marks is not infringing,
`
`has not infringed, and does not subject Plaintiff to liability for infringing any allegedly enforceable
`
`trademark rights owned by Defendant, pursuant to 15 U.S.C. §§ 1114 and 1125 and any state
`
`trademark or unfair competition laws that Defendant asserts;
`
`B.
`
`Enter a judgment declaring that Plaintiff’s use of the OCTO Marks is not diluting,
`
`has not diluted, and does not subject Plaintiff to liability for diluting any allegedly enforceable
`
`- 8 -
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`

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`Case 1:23-cv-01325-UNA Document 1 Filed 11/20/23 Page 9 of 10 PageID #: 9
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`trademark rights owned by Defendant, pursuant to 15 U.S.C. § 1125(c) and any state laws that
`
`Defendant asserts;
`
`C.
`
`Enter a judgment declaring that Defendant is not entitled to any injunctive relief
`
`with respect to Plaintiff’s use of the OCTO Marks;
`
`D.
`
`Enter a judgment declaring that Defendant has not and will not suffer any harm or
`
`damages, and thus is not entitled to any relief under the Lanham Act or any state trademark or
`
`unfair competition laws that Defendant asserts;
`
`E.
`
`An order awarding attorneys’ fees, costs, and expenses incurred in connection with
`
`this action, to Plaintiff, pursuant to 15. U.S.C § 1117(a);
`
`F.
`
`An order instructing the Board to dismiss the TTAB Action with prejudice; and
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`G.
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`An order awarding such other and further relief as this Court deems just
`
`and proper.
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`DEMAND FOR JURY TRIAL
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`Plaintiff hereby demands a jury trial on all issues and claims so triable.
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`- 9 -
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`

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`Case 1:23-cv-01325-UNA Document 1 Filed 11/20/23 Page 10 of 10 PageID #: 10
`
`Dated: November 20, 2023
`
`Respectfully submitted,
`
`MORGAN, LEWIS & BOCKIUS LLP
`
`/s/Amy M. Dudash
`Amy M. Dudash (DE Bar No. 5741)
`1201 N. Market Street, Suite 2201
`Wilmington, Delaware 19801
`amy.dudash@morganlewis.com
`Telephone: (302) 574-3000
`Facsimile: (302) 574-3001
`
`Kathryn A. Feiereisel (pro hac vice application
`forthcoming)
`110 N. Wacker Drive, Suite 2800
`Chicago, Illinois 60601
`katie.feiereisel@morganlewis.com
`Telephone: (312) 324-1000
`Facsimile: (312) 324-1001
`
`Attorneys for F2 Strategy, LLC
`
`- 10 -
`
`