Trademark Trial and Appeal Board Electronic Filing System. 39145
`
`ESTTA Tracking number: ESTTA43668
`
`Filing d9-t33
`
`08/31/2005
`
`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
`
`100 Rialto PlaceSuite 200
`
`Address
`
`Melbourne, FL 32901
`UNITED STATES
`
`Attorney
`information
`
`David L. Stewart
`
`Allen, Dyer, Doppelt, Milbrath & Gilchrist, P.A.
`255 South Orange AVenueSuite 1401
`Orlando, FL 32801-3460
`UNITED STATES
`
`dstewart@addmg.com Phone:321-725-4760
`
`Applicant Information
`
`Application No 78274610
`
`P“b::;‘i°“
`
`he/02/2005
`
`Filing Date
`
`08/31/2005
`
`Period Ends
`
`£09/01/2005
`
`Bonus.com, Inc.
`Second Floor 824 San Antonio Road
`
`Applicant
`
`Palo Alto, CA 94303
`UNITED STATES
`
`Goods! Services Affected by Opposition
`
`
`
`ESTTA Tracking number: ESTTA43668
`
`Filing d9-t33
`
`08/31/2005
`
`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
`
`100 Rialto PlaceSuite 200
`
`Address
`
`Melbourne, FL 32901
`UNITED STATES
`
`Attorney
`information
`
`David L. Stewart
`
`Allen, Dyer, Doppelt, Milbrath & Gilchrist, P.A.
`255 South Orange AVenueSuite 1401
`Orlando, FL 32801-3460
`UNITED STATES
`
`dstewart@addmg.com Phone:321-725-4760
`
`Applicant Information
`
`Application No 78274610
`
`P“b::;‘i°“
`
`he/02/2005
`
`Filing Date
`
`08/31/2005
`
`Period Ends
`
`£09/01/2005
`
`Bonus.com, Inc.
`Second Floor 824 San Antonio Road
`
`Applicant
`
`Palo Alto, CA 94303
`UNITED STATES
`
`Goods! Services Affected by Opposition
`
`
`
`Class 042. First Use: 200208l5First Use In Commerce: 20020815
`
`All goods and sevices in the class are opposed, namely: Computer services, namely
`providing customized on-line web pages featuring user-defined information, which
`includes search engines and online web links to other web sites
`
`Attachments Opposition 8.31.05.pdf( 3 pages )
`
`Signature
`
`David L. Stevvartx’
`
`Name
`
`David L. Stewart
`
`Date
`
`08/31/2005
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No:
`
`In the matter of application Serial No.: 78/274,610 )
`)
`
`) )
`
`) )
`
`Filed:
`
`July 15, 2003
`
`Mark:
`
`FYI
`
`Published in the Official Gazette on: August 2, 2005)
`)
`
`) )
`
`)
`
`)
`)
`
`) )
`
`) )
`
`FYI CORPORATION,
`
`V.
`
`BONUS.COM,
`
`Opposer,
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`FYI CORPORATION, a corporation of Delaware, whose principal place of business is
`
`100 Rialto Place, Suite 200, Melbourne, FL 32901, believes that it will be damaged by
`
`registration of the mark FYI, shown in Serial No. 78/274,610, in International Class 42 for
`
`“computer services, namely providing customized on—line web pages featuring user defined
`
`information, which includes search engines and online web links to other websites.”
`
`As grounds for opposition, Opposer alleges:
`
`1.
`
`Applicant seeks to register FYI, as a trademark for computer services as
`
`evidenced by the publication of said mark in the Official Gazette on August 2, 2005.
`
`2.
`
`Opposer, under its existing name and through its previous name, ldentitech, Inc.
`
`has used the mark FYI since at least as early as January 18, 1991, for computer software
`
`including functionality which displays search results from database queries.
`
`
`
`3.
`
`Opposer is the owner of U.S. trademark/service mark registration no. 1,774,195,
`
`registered on June 1, 1993, for the mark FYI for use in connection with “computer software”
`
`(erroneously classified in International class 16).
`
`4.
`
`Opposer has continuously used the mark FYI in interstate commerce since as
`
`early as January 18, 1991, in connection with the goods identified in registration no. 1,774,195
`
`and related services.
`
`5.
`
`Opposer’s federal registration for the mark FYI is primafacie evidence of the
`
`validity of the mark and constitutes constructive notice that Opposer is the lawful owner of the
`
`mark.
`
`6.
`
`Opposer has developed considerable and valuable good will with respect to its
`
`mark thought its continued use of the mark in connection with its goods and services.
`
`7.
`
`Moreover, because of Opposers long and extensive use of the mark in connection
`
`with its goods and services, consumers have come to associate the goods and services provided
`
`under the mark with the Opposer.
`
`8.
`
`On or about July 15, 2003, Applicant filed application serial number 78/274,610,
`
`seeking to register the name FYI as a mark for use in connection with “computer services,
`
`namely providing customized on—line web pages featuring user defined information, which
`
`includes search engines and online web links to other websites.”
`
`9.
`
`Applicant’s services are confusingly similar to Opposers good and services and
`
`are offered in the same charmels of trade to the same customers of Opposers.
`
`10.
`
`Opposer has used its mark in interstate commerce since before Applicant filed its
`
`application to register the identical mark and on information and belief, before Applicant’s stated
`
`first use of its mark as set forth in its application.
`
`
`
`11.
`
`Applicant’s use and registration of the mark FYI for the services specified in the
`
`application herein and opposed by Opposer will likely cause confusion in the marketplace and
`
`damage Opposers business and goodwill by virtue of the virtually identical nature of Applicant’s
`
`and Opposer’s marks and services.
`
`12.
`
`Persons familiar with Opposer’s mark and its services would be likely to
`
`mistakenly believe that App1icant’s services were provided or authorized by the Opposer.
`
`13.
`
`In addition, Applicant’s use of the mark FYI will dilute the ability of Opposer’s
`
`mark to identify and distinguish the Opposer as a source of its good and services.
`
`14.
`
`If Applicant is granted the registration herein opposed, it would thereby obtain at
`
`least a primafacie exclusive right to use the mark FYI not withstanding the prior use of the same
`
`mark by Opposer. Such a registration would be a source of damage and injury to Opposer.
`
`WHEREFORE, Opposer prays that the registration sought by application Serial No.
`
`78/274,610, be disallowed, that this opposition be sustained, and that Opposer be granted such
`
`additional relief as the Board deems just and proper.
`
`Dated: August 31, 2005
`
`Respectfully submitted,
`
`/Qt; g ,_/
`
`David L. Stewart
`
`Allen, Dyer, Doppelt, Milbrath & Gilchrist, P.A.
`255 South Orange Avenue
`Suite 1401
`
`Orlando, Florida 32801-3460
`Phone 407 841-2330
`
`Fax 407 841-2343
`
`E-mail dstewart@addmg .com
`
`Attorney for Opposer
`FYI Corporation
`
`_3._
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