IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD ;
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`In re Application of: Monarch Business Forms
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`Serial No. 76/ 165,245
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`Filed: November 14, 2000
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`Service Mark: STRATACOM & Design
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`Published: August 6, 2002
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`ASSISTANT COMMISSIONER FOR TRADEMARKS
`Box TTAB FEB
`2900 CRYSTAL DRIVE
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`ARLINGTON, VA 22202-3513
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`\/\./\a\/g/\/\/\/\a
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`Dear Sir:
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`NOTICE OF OPPOSITION
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`[r 02-03-2003
`US. Patent & TMOfclTM Mail Rent 01. #70
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`Strata Graphics, Inc., a corporation organized and existing under the laws (ifthe State of
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`Pennsylvania, doing business at 2000 Butler Pike, Conshohocken, Pennsylvania (‘fOpposer”),
`believes that it will be damaged by registration ofthe mark shown in application Seria1No.
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`76/165,245, filed November 14, 2000 in International Class 35, and hereby opposes the same.
`As grounds for opposition, it is alleged that:
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`On or about November 14, 2000, Applicant, Monarch Business Forms, doing business at
`1.
`15041 Bake Parkway, Irvine, California filed an application in the US. Patent arid Trademark Office,
`Serial No. 76/165,245 seeking registration on the Principal Register ofthe trademark STRATACOM
`& Design for “business forms brokerage and\distribution of advertising speciality products,” in Class
`35.”
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`2.
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`Applicant seeks to register the mark STRATACOM & Design for “business forms brokerage
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`and distribution of advertising speciality products,” in Class 35" as evidenced b'y the publication of
`02/12/2003 KGIBBONS 00000080 76165245
`300. 00 OP
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`01 FE:6402
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`~ said mark in the Oflicial Gazette of August 6, 2002.
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`3.
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`Commencing at least as early as 1992, Opposer began using its house mark STRATA in
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`connection with the “planning, creation, production, warehousing and fulfillment of marketing
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`communications products, forms and services for others, graphic design services, creation of sales
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`materials, ad specialties, printing services and print brokerage services for others,” inJClasses 35 and
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`42.
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`4.
`Opposer is the owner ofU.S. Service Mark Application Serial No. 76/358,868 for ”THE
`STRATA COMPANIES” filed January 15, 2002 for “business services, namely, plafrming, creation,
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`production, warehousing and fulfillment ofmarketing communications products and services for
`others,” in International Class 42, as well as Serial No. 76/297,033 for STRATATl%ACKS filed
`August 8, 2001 for “providing the ordering, tracking, locating, and fulfillment oforders and deliveries
`of case report form materials for clinical trials in the pharmaceutical industry throiigh a computer
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`program available through a global computer network,” in Class 35, and, Serial Nib. 76/374,493 for
`STRATA MARKETING SERVICES filed February 21, 2002 for “marketing communications
`services, namely, strategic planning, graphic design, print advertising, web develbpment, Internet
`marketing, direct mail, sales collateral, trade show marketing, media planning arfd buying and
`promotional items,” in Class 42, all ofwhich have formed the Opposer’s familyioftrademarks that
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`share the root word STRATA.
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`5.
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`Commencing in 1992 and continuing to the present, Opposer has used the name STRATA in
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`connection with the “planning, creation, production, warehousing and fiilfilhrlent ofmarketing
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`communications products, forms and services for others, graphic design services, creation of sales
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`materials, ad specialties, printing services and print brokerage services for others,” in Classes 35 and
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`42. in interstate commerce.
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`Opposer first began to use the mark STRATA in 1992 and first began to use THE STRATA
`6.
`COMPANIES trademark in March of 1999 and the STRATATRACKS trademark in l\/“larch of 1998.
`Applicant filed an intent to use application on November 14, 2000 and as such was not’: using its mark
`STRATACOM in commerce as ofthe date offiling the application. Therefore, Opposer has been
`using its house mark in commerce for eight (8) years prior to the time Applicant filed intent-to—use
`application for the mark STRATACOM and therefore, Opposer has senior rights to the name under
`the common law since it was the first to use the name. Additionally, Opposer’s use (ifthe marks THE
`STRATA COMPANIES and STRATATRACKS also predate the filing date ofApplicant’s
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`application for STRATACOM by at least a year-and-one-half.
`7.
`As a result ofoffering and promoting its “planning, creation, production, warehousing and
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`fulfillment of marketing communications products, forms and services for others, graphic design
`services, creation of sales materials, ad specialties, printing services and print brokerage services for
`others,” in Classes 35 and 42., Opposer has built up substantial goodwill in the S'l“RATA name that
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`has come to signify a respected and well-known source for planning, creation, production,
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`warehousing and fulfillment ofmarketing communications products, forms and services for others,
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`graphic design services, creation of sales materials, ad specialties, printing services and print
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`brokerage services originating with Opposer.
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`8.
`Applicant’s mark for STRATACOM is virtually identical to Opposer’s house mark
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`STRATA. The Opposer’s house mark and family ofmarks are used on related services or for use in
`association with the services identified in the Applicant’s application for STRATACOM herein being
`opposed, and the proposed use ofSTRATACOM by the Applicant is likely to create confusion,
`mistake or deception, all to the damage ofOpposer, and to the damage ofOpposer’s rights in its house
`mark and family oftrademarks, which names and marks the Opposer holds p‘rior rights within.
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`9.
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`The respective services of Opposer and Applicant are closely related, travel and are promoted
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`through the same channels of trade for sale to, and use by, the same class of purchasers such that
`customers ofOpposer and others familiar with Opposer’s STRATA house mark related family of
`marks, upon seeing Applicant’s services offered under the name STRATACOM, wrfiuld be likely to
`believe and would be justified in so believing that such services originated fi'om Opposer or were
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`offered in association or affiliation with, or under authorization by Opposer. Thus }App1icant’s mark,
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`as used with “business forms brokerage and distribution ofadvertising speciality p’roduets,” in Class
`35.” would lead persons familiar with Opposer’s STRATA house mark and related family ofmarks to
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`believe that Applicant’s services are offered by, in affiliation with, or under licence from Opposer.
`10.
`Additionally, Applicant’s mark, by reason ofit being virtually identical to Opposer’s
`STRATA house mark and family ofmarks, will likely to cause irreparable loss,
`and damage to
`Opposer’s business and to the goodwill thereto and recognized by its STRATA [house mark and
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`related family of marks.
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`1 1.
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`Opposer would be injured by the granting to Applicant of a Certificate bf Registration for the
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`mark STRATACOM & Design because Applicant would obtain thereby at least a primafacie
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`exclusive right to use such mark. Such registration would be a source of damage and injury to
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`Opposer and Opposer’s customers.
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`12.
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`A duplicate copy ofthis Notice of Opposition and the statutory fee arb enclosed herewith.
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`WHEREFORE, Opposer prays that this Opposition be sustained and that the registration sought in
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`Trademark Application Serial No. 76/165,245 be denied and that the citatiqii of this application be
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`removed as a basis for rejection in Opposer’s pending application for THE {STRATA COMPANIES
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`Serial No. 76/358,868. Enclosed is a fee of $300.00 for filing the Notice of Opposition.
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`Respectfully submitted,
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`( \
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`Juliann B. Bochinski
`Attorriey for Opposer
`w
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`S
`ta Graphics, Inc.
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`///
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`IDZWCB J 8 ‘WW N mt” '1 ~ ‘L.
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`LAW OFFICE OF JULIANNE B. BOCHINSKI
`Colonial Green Ofiice Park
`250 Post Road East, Suite 102
`P.0. Box 2723
`
`Westport, Connecticut 06880
`(203) 226-8833
`(203) 226-3364 (facsimile)
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`

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`Personal Printer/Fax/Copier
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`Fax Log Report for
`AMERICAN TRADEMARK CO I
`203 226 3364
`Jan—03—O3?
`04:51 PM
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`I:(X)ZO0I45 002582030022
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`IN THE UNITED STATES PATENT AND TRADEMARK
`TRADEMARK EXAIVIINING DIVISION
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`Applicant: Monarch Business Forms
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`5
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`Serial No.: 76/165,245
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`Attorney Ref.: SAMM~106
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`Filing Date: November 14, 2000
`Mark: STRATACOM & Design
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`Date ofPublication: August 6,’; 2002
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`REQUEST FOR FURTHER EXTENSION OF TINIE TO FILE ‘A
`NOTICE OF OPPOSITION (WITH CONSENT)
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`ASSISTANT COMMISSIONER FOR TRADEMARKS
`BOX TTAB NO FEB
`2900 CRYSTAL DRIVE
`ARLINGTON, VA 22202-3 515
`
`Sir:
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`JANUARY 3, 2003
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`Your Opposer, Strata Graphics, Inc., by its attorney, Julianne B. Bochinfski, hereby
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`requests an additional thirty (30) day extension of time until February 2, 2003‘, for filing a
`Notice ofOpposition against the above application. This extension is not interided to delay, but
`rather is necessary to allow potential opposer time to research the subject marlt, discuss the
`possibility of settlement with counsel for applicant and consult with its attorneys and determine
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`whether an opposition is warranted. This request is submitted in triplicate.
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`an effort to avoid an opposition.
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`This request was discussed with and agreed to by Applicant’s counsel, Steven DA
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`McCarthy, in a phone conversation on December 31, 2002.
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`f:
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` Law Office of Julianne B. Bochinski
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`w3»o3
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`Date
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`Colonial Green Office Park, Suite 102
`P.O. Box 2723
`Westport, CT 06880
`Telephone:
`(860) 226-8833
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`SAMM— 1 06
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`_ v
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`In re Application of: Monarch Business Forifis '
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`A
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`02-03-2008
`u/ls. Patent & TMOfclTM Mail Ram 01- #70
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`EXPRESS MAIL CERTIFICATE
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`Serial No. 76/165,245
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`Filing Date: February 3, 2003
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`Mark: STRATACOM & Design
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`The Assistant Commissioner
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`for Trademarks: Box New App
`2900 Crystal Drive
`Arlington, VA 22202-3513
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`“Express Mail” label number EU077865175US
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`I hereby certify that the following attached correspondence compilising:
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`1. Notice of Opposition
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`2. Filing Fee of $300
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`3. Copy of Last extension request
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`4. Corresponding acknowledgment post card,
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`is being deposited with the United States Postal Service “Express MaillPost Office to Address”
`service under 37 C.F.R. 1.10 on the date indicated below and is addressed to:
`
`ulianne B. Bochinski, Esq.
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`
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`ii February 3, 2003
`' (Date of Deposit)
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`bb
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`tr
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`TTAB
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`The Assistant Commissioner
`for Trademarks
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`February 3, 2003
`
`Via Facsimile
`
`Re: U.S. Service Mark Application
`STRATACOM & Design
`U.S. Serial No. 76/165,245
`Our Ref.: SAMM—l06
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`Dear Assistant Commissioner:
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`Enclosed please find a confirmation copy of a request for extension of
`time to file an opposition that was timely filed on January 3, 2003 via
`facsimile in connection with the above-referenced mark (attached is a_ copy
`of the certificate of fax transmission and fax transmission ,report confirming
`receipt by the USPTO).
`
`We are filing a confirmation copy herein, because today is the deadline
`for filing the Notice of Opposition herein (enclosed withlfees) and we have
`not yet received a confirmation back from the USPTO on our facsimile filed
`extension request giving us until February 2, 2003 in which to file the
`enclosed Notice of Opposition. PLEASE NOTE THAT} SINCE
`FEBRUARY 2, 2003 FELL ON A SUNDAY, THIS OBPOSITION IS
`TIMELY FILED ON MONDAY, FEBRUARY 3, 2003].)
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`As always, please feel free to call me-if you~hage\a'ny questions.
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`6177 Q77
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`203 226-8833 ‘ FAX 203 226-3364
`
`Colonial Green Office Park
`250 Post Road East. Suite 102
`PO. Box 2723
`Westport, CT 06880
`
`Email: infoéamericanzrademarkcom
`http://www.americantrademark.com
`
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