Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA74577
`ESTTA Tracking number:
`04/05/2006
`
`Filing date:
`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
`Entity
`Address
`
`Commontime, Limited
`Citizenship
`Corporation
`15 St. Christopher's Way Pride Park
`Derby, DE24 8JY
`UNITED KINGDOM
`
`United Kingdom
`
`Attorney
`information
`
`Gene A. Tabachnick
`Reed Smith LLP
`435 Sixth Avenue
`Pittsburgh, PA 15219
`UNITED STATES
`gtabachnick@reedsmith.com , afalsetti@reedsmith.com Phone:412-288-3258
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`78541141
`04/05/2006
`
`Publication date
`Opposition
`Period Ends
`
`03/28/2006
`04/27/2006
`
`Danucom Corp.
`490 Crawford Street
`Eatontown, NJ 07724
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 2004/12/28 First Use In Commerce: 2004/12/28
`All goods and sevices in the class are opposed, namely: Computer software that allows organizations
`to enable mobile data collection and mobile forms driven business process automation
`
`Attachments
`
`Commontime.mForms.Opposition.S and P Statement.pdf ( 2 pages )
`Commontime.mForms.Danucom Letter.Ex. A.pdf ( 3 pages )
`
`Signature
`Name
`Date
`
`/s/ Gene A. Tabachnick
`Gene A. Tabachnick
`04/05/2006
`
`
`ESTTA74577
`ESTTA Tracking number:
`04/05/2006
`
`Filing date:
`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
`Entity
`Address
`
`Commontime, Limited
`Citizenship
`Corporation
`15 St. Christopher's Way Pride Park
`Derby, DE24 8JY
`UNITED KINGDOM
`
`United Kingdom
`
`Attorney
`information
`
`Gene A. Tabachnick
`Reed Smith LLP
`435 Sixth Avenue
`Pittsburgh, PA 15219
`UNITED STATES
`gtabachnick@reedsmith.com , afalsetti@reedsmith.com Phone:412-288-3258
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`78541141
`04/05/2006
`
`Publication date
`Opposition
`Period Ends
`
`03/28/2006
`04/27/2006
`
`Danucom Corp.
`490 Crawford Street
`Eatontown, NJ 07724
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 2004/12/28 First Use In Commerce: 2004/12/28
`All goods and sevices in the class are opposed, namely: Computer software that allows organizations
`to enable mobile data collection and mobile forms driven business process automation
`
`Attachments
`
`Commontime.mForms.Opposition.S and P Statement.pdf ( 2 pages )
`Commontime.mForms.Danucom Letter.Ex. A.pdf ( 3 pages )
`
`Signature
`Name
`Date
`
`/s/ Gene A. Tabachnick
`Gene A. Tabachnick
`04/05/2006
`
`
`
`Opposer Commontime, Ltd. hereby opposes registration of the mark “MFORMS” that is
`
`the subject of application Serial No. 78/541,141, published in the Official Gazette on March 28,
`
`2006, and requests that registration to Applicant be refiised.
`
`As grounds in support of its opposition, Opposer asserts as follows:
`
`1. Opposer Commontime, Ltd. (“Commontime”) is a British corporation with a business
`
`address of 15 St. Christopher's Way, Pride Park, Derby DE24 8JY, UK. Commontime’s
`
`U.S. affiliate, Commontime, Inc., is headquartered at 245 West Roosevelt Road,
`
`Building 15, Suite 119, West Chicago, IL 60185.
`
`2. Upon information and belief, Applicant Danucom Corporation (“Danucom”) is a New
`
`Jersey corporation located at 490 Crawford Street, Eatontown, NJ 07724.
`
`3. Applicant Danucom has filed U.S. Trademark Application Serial No. 78/541,141 for
`
`registration of the word mark “MFORMS” for “computer software that allows
`
`organizations to enable mobile data collection and mobile forms driven business process
`
`automation,” in International Class 9.
`
`4. Applicant’s alleged first use and first use in commerce took place on December 28,
`
`2004.
`
`5. Commontime, for many years and since long prior to any date of first use upon which
`
`Applicant can rely, has adopted and continuously used the term “MFORMS” as a
`
`trademark for goods similar to Applicant’s.
`
`6. Commontirne alerted Danucom to its prior trademark rights shortly after Danucom filed
`
`its application. Ex. A, attached hereto. Danucom never responded to Commontime’s
`
`letter.
`
`4/5/06 11:26 AM
`
`
`
`7. Registration of the identical “MFORMS” mark by Danucom would be likely, when used
`
`on or in connection with the goods of Danucom, to cause confusion, or to cause mistake,
`
`or to deceive. Trademark Act § 2(d), 15 U.S.C. § 1052(d).
`
`8. Accordingly, Commontime has a direct and personal stake in the outcome of this
`
`proceeding and a reasonable belief that it will be damaged should Danucom be permitted
`
`to register the “MFORMS” mark.
`
`Wherefore, Opposer prays that the opposition be sustained and that registration to
`
`Applicant be refused.
`
`
`
`EXHIBIT A
`
`4/5/06 11:26 AM
`
`
`
`ReedSmith
`
`Gene A. Tabachnick
`Direct Phone: 412.288.3258
`Email: gtabachnick@reedsmith.com
`
`Reed Smith LLP
`435 Sixth Avenue
`Pittsburgh, PA 15219-1886
`412.288.3131
`Fax 412.288.3063
`
`W301 251:: name. eras sues
`
`March 18,2005
`
`VIA CERTIFIED MAIL
`
`RETURN-RECEIPT REQUESTED
`
`Office of the President
`
`Danucom Corp.
`490 Crawford Street
`
`Eatontown, NJ 07724
`
`Re:
`
`CommonTime’s “MFORMS” Trademark
`
`Dear Sir or Madam:
`
`We are counsel to CommonTime, Inc., the owner of the trademark “MFORMS”. It has recently
`come to our attention that you have applied for a federal registration of our client’s mark, and
`presumably have been using the mark since December 2004, in violation of CommonTime’s trademark
`rights. Your activities raise serious concerns for our client because of CommonTime’s prior use and
`rights to the MFORMS trademark.
`
`For several years predating your use, CommonTime has used its MFORMS mark in connection
`with computer sofiware for synchronization purposes between desktop/server PCS and mobile devices.
`The mark is distinctive and recognized as identifying ComrnonTime as the provider of this software.
`Your use of MFORMS in connection with your products creates a serious conflict with our client’s
`trademark rights. Your use is likely to cause confusion by creating the false impression that there is
`some connection, relationship, or sponsorship between our client and your business. Your continued use
`of the MFORMS mark in conjunction with your products will cause prospective consumers and others
`to mistakenly associate your business with CommonTime’s.
`
`LONDON 0 NEW YORK 9 LOS ANGELES 0 SAN FRANCISCO 0 WASHINGTON, D.C. O PHILADELPHIA O PITTSBURGH 6 OAKLAND
`PRINCETON O FALLS CHURCH O WILMINGTON O NEWARK O MIDLANDS, UK. 9 CENTURY CITY 6 RICHMOND O LEESBURG
`
`reedsmith.com
`
`PGHLIB-1557369.1
`
`
`
`Office of the President
`March 18, 2005
`Page 2
`
`Accordingly, we insist that you immediately take all necessary steps to avoid any further
`violation of CommonTime’s trademark rights. You must withdraw your application for registration, and
`cease advertising and offering products under the MFORMS mark or any confusingly similar mark.
`
`Please provide us with confirmation by April 1, 2005 that you will comply.
`
`Very truly yours,
`
`REED SMITH LLP
`
`y/5/FWQJMQQ
`
`ene A. Tabachnick
`
`GAT:rrg
`
`cc: Freya Fowles
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