Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA464868
`ESTTA Tracking number:
`04/02/2012
`
`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
`Granted to Date
`of previous
`extension
`Address
`
`APPSENSE LIMITED plc
`04/04/2012
`
`3300 Daresbury ParkDaresbury, Warrington
`CHESHIRE, WA4 4HS
`UNITED KINGDOM
`
`Attorney
`information
`
`Cathleen E. Stadecker
`Downs Rachlin Martin PLLC
`199 Main Street
`Burlington, VT 05402-0190
`UNITED STATES
`tmip@drm.com, jfitzgerald@drm.com Phone:802-863-2375
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85404735
`04/02/2012
`
`Publication date
`Opposition
`Period Ends
`
`12/06/2011
`04/04/2012
`
`Opnet Technologies, Inc.
`7255 Woodmont Avenue
`Bethesda, MD 208147900
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 009.
`All goods and services in the class are opposed, namely: Computer software allowing collection,
`archiving, normalization, reporting, and analysis of network and infrastructure data, namely, topology,
`configuration, performance, and traffic data, and other related application performance data
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`2579693
`
`06/11/2002
`
`Word Mark
`
`APPSENSE
`
`Application Date
`
`02/16/2000
`
`Foreign Priority
`Date
`
`NONE
`
`
`ESTTA464868
`ESTTA Tracking number:
`04/02/2012
`
`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
`Granted to Date
`of previous
`extension
`Address
`
`APPSENSE LIMITED plc
`04/04/2012
`
`3300 Daresbury ParkDaresbury, Warrington
`CHESHIRE, WA4 4HS
`UNITED KINGDOM
`
`Attorney
`information
`
`Cathleen E. Stadecker
`Downs Rachlin Martin PLLC
`199 Main Street
`Burlington, VT 05402-0190
`UNITED STATES
`tmip@drm.com, jfitzgerald@drm.com Phone:802-863-2375
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85404735
`04/02/2012
`
`Publication date
`Opposition
`Period Ends
`
`12/06/2011
`04/04/2012
`
`Opnet Technologies, Inc.
`7255 Woodmont Avenue
`Bethesda, MD 208147900
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 009.
`All goods and services in the class are opposed, namely: Computer software allowing collection,
`archiving, normalization, reporting, and analysis of network and infrastructure data, namely, topology,
`configuration, performance, and traffic data, and other related application performance data
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`2579693
`
`06/11/2002
`
`Word Mark
`
`APPSENSE
`
`Application Date
`
`02/16/2000
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2000/02/01 First Use In Commerce: 2001/07/01
`computer software for use to control the use of other software applications
`
`U.S. Registration
`No.
`Registration Date
`
`4010840
`
`08/16/2011
`
`Word Mark
`Design Mark
`
`APPSENSE STRATA
`
`Application Date
`
`12/02/2009
`
`Foreign Priority
`Date
`
`08/13/2009
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use:
`CD-ROMs featuring application installation management software; computer
`software, namely, application installation management software; downloadable
`publications and instructions and teaching materials in electronic form, namely,
`electronic books and educational manuals in the field of application installation
`management software
`Class 016. First use:
`Printed publications, namely, books and manuals in the field of application
`installation management software; printed instructional and teaching materials in
`the field of application installation management software
`Class 041. First use:
`Instructional and teaching materials in electronic form supplied online from a
`database or from facilities provided on the Internet or other network, namely,
`providing a Website featuring non-downloadable books and instruction manuals
`in the field of application installation management software
`Class 042. First use:
`Post-sale maintenance and consultancy services relating to computer software
`
`
`
`Attachments
`
`75921085#TMSN.gif ( 1 page )( bytes )
`77883950#TMSN.jpeg ( 1 page )( bytes )
`20120402_NoticeofOpposition.pdf ( 10 pages )(369081 bytes )
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Certificate of Service
`
`Signature
`Name
`Date
`
`/Cathleen E. Stadecker/
`Cathleen E. Stadecker
`04/02/2012
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 85/404,735 for APPSENSOR XPERT
`Published in the Official Gazette of December 6, 2011
`
`_____________________________________________________________ .._x
`
`Appsense Limited
`
`Opposer,
`
`V.
`
`Opposition No.:
`
`Opnet Technologies, Inc.
`
`.
`Applicant.
`.............................................................. ....x
`
`NOTICE OF OPPOSITION
`
`Appsense Limited, a United Kingdom private limited company with an address at 3300
`
`Daresbury Park, Daresbury, Warrington, Cheshire, U.K. WA4 4HS (hereinafter, “Opposer”),
`
`believes that it will be damaged by the registration of the trademark APPSENSOR XPERT,
`
`the
`
`subject of Application Serial No. 85/404,735 owned by Opnet Technologies, Inc., a Delaware
`
`corporation with an address at 7255 Woodmont Avenue Bethesda (hereinafter, “Applicant”), and
`
`hereby opposes registration of the same.
`
`As grounds for opposition, Opposer alleges as follows:
`
`1.
`
`Opposer is the owner of Registration No. 2,579,693 for the trademark APPSENSE
`
`(the “APPSENSE Mark”) in connection with “computer software for use to control the use of
`
`other software applications” in International Class 9 (the “APPSENSE Registration”). The
`
`APPSENSE Registration, which is incontestable, issued on June 11, 2002 based on Opposer’s use
`
`of the mark in commerce since at least as early as July 2001. A true and correct copy of the
`
`certificate of registration setting forth the details of the APPSENSE Registration is attached as
`
`Exhibit A.
`
`
`
`2.
`
`Opposer is also the owner of Registration No. 4,010,840 for the trademark and
`
`service mark APPSENSE STRATA (the “APPSENSE STRATA Mark”) in connection with
`
`goods and services in Classes 9, 16, 41 and 42 relating to its application management software,
`
`including, particularly, “computer software, namely, application installation management
`
`software” in Class 9 (the “APPSENSE STRATA Registration”). This registration issued on
`
`August 16, 2011. A true and correct copy of the certificate of registration setting forth the details
`
`of the APPSENSE STRATA Registration is attached as Exhibit B.
`
`3.
`
`Opposer’s family of APPSENSE marks comprises not only its two registered
`
`marks, but also five common law marks containing APPSENSE, which it uses in commerce in
`
`connection with various software products for managing and/or monitoring the performance of
`
`desktop applications. Specifically, Opposer has used APPSENSE APPLICATION MANAGER
`
`and APPSENSE PERFORMANCE MANAGER since at least as early as May 2002, APPSENSE
`
`ENVIRONMENT MANAGER since at least as early as January 2005, and APPSENSE
`
`MANAGEMENT CENTER since at least as early as January 2007. These products are sold
`
`separately and as part of the APPSENSE MANAGER SUITE of software products. Opposer’s
`
`family of APPSENSE marks, including the APPSENSE Mark, the APPSENSE STRATA Mark,
`
`and the common law marks listed in this paragraph are collectively referred to as the
`
`“APPSENSE Marks.”
`
`4.
`
`On August 23, 2011, Applicant filed an application to register the trademark
`
`APPSENSOR XPERT, Application Serial No. 85/404,735 (the “APPSENSE XPERT Mark”),
`
`based on Applicant’s declared intention to use the mark in commerce in connection with
`
`“Computer software allowing collection, archiving, normalization, reporting, and analysis of
`
`network and infrastructure data, namely, topology, configuration, performance, and traffic data,
`
`
`
`and other related application performance data,” in International Class 9 (the “APPSENSOR
`
`XPERT Application” ). A true and correct printout from the website of the USPTO setting forth
`
`the details of the APPSENSOR XPERT Application is attached as Exhibit C.
`
`5.
`
`On information and belief, all of Opposer’s APPSENSE Marks have been in
`
`continuous and exclusive use in commerce since before any use by Applicant of the
`
`APPSENSOR XPERT Mark.
`
`6.
`
`Because APPSENSOR XPERT is substantially similar to the APPSENSE Marks,
`
`APPENSOR being the dominant word in the APPSENSOR XPERT Mark; because Opposer’s
`
`and Applicant’s marks identify overlapping and closely related goods; and because Opposer’s and
`
`Applicant’s goods are likely to be offered in the same channels of trade and to the same class of
`
`purchasers, Applicant’s APPSENSOR XPERT Mark is likely to cause confusion, or to cause
`
`mistake, or to deceive within the meaning of Section 2(d) of the Trademark Act.
`
`7.
`
`If Applicant were permitted to register the APPSENSOR XPERT Mark as
`
`specified in the application herein opposed, confusion in trade would be inevitable, and persons
`
`familiar with the APPSENSE Marks would be likely to buy Applicant’s goods as and for a
`
`product made and sold by Opposer. Any such confusion in trade would not only be harmful to
`
`the purchasing public, it would likely result in loss of sales to Opposer. Worse, such confusion
`
`could lead to injury to Opposer’s reputation should any defect or fault found with Applicant’s
`
`products be misattributed to Opposer .
`
`8.
`
`If Applicant is granted the registration herein opposed, it would thereby obtain at
`
`least a primafacie exclusive right to use the mark. Such registration would be a source of
`
`damage and injury to Opposer.
`
`
`
`WHEREFORE, Opposer asks that this Notice of Opposition be sustained and that
`
`Application Serial No. 85f404,735 be refused.
`
`Respectfully submitted,
`
`DOWNS RACI-ILIN MARTIN PLLC
`
`Attorneys for Opposer Appsense Limited
`
`Date: April 2, 2012
`
`Burlington’ Vermom
`
`By:
`
`E
`
`Cathleen E. Stadecker
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that true and complete copies of the foregoing document
`entitled Notice of Opposition has been served on Applicant, and Applicanfs attorney of record,
`by mailing said copies from Burlington, Vermont on April 2, 2012, via First Class Mail, postage
`prepaid to:
`
`L C
`
`athleen E. Stadecker
`
`Opnet Technologies, Inc.
`7255 Woodmont Avenue
`
`Bethesda, MD 20814-T900
`
`Andrew B. Katz
`
`Belles Katz LC
`
`1721 Dresher Rd, Ste 1 I00
`Horsham, PA 19044-2216
`
`9957503
`
`
`
`Exhibit A
`
`Int. Cl.: 9
`
`Prior U.S. Cls.: 21, 23, 26, 36, and 38
`
`United States Patent and Trademark Office
`
`Reg. No. 2,579,693
`Registered June 11,2002
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`APPSENS-E
`
`APPSENSF. LIMITED (UNYTED KINGDOM l..IM-
`man LIABILITY company}
`MILAN COURT
`mm) HALL LANE
`STOCKPORT, CHESIIIRB. UNITED KINGDOM SK3
`WY
`"
`
`FOR: COMPUTER- SOFTWARE FOR USE TO
`CONTROL 'l‘I-IE USE OF OT!-iF,R SOE-"l'WAR!3 J'\P-
`
`PLICIKTIONS, IN CLASS 9 (U.S. CLS. 21. 23, 26. 36
`AND 33;
`
`.
`_ _
`FIRST USE M2090’ m COMMERCE 7 ' mm‘
`sw 7S~921.fl85. FILED 245-2000.
`
`DAVID TAYLOR. EXAMIHING A'1'I‘0RN'l".Y
`
`
`
`Exhibit B
`
`“itgb fitatefi Hf Qmer
`11;?
`
`Tleluttetn §>tat2s$ fiatent amt: flfirahentarh cfiffite
`
`APPSENSE STRATA
`
`Reg. No. 4,010,840
`
`APPSENSE LIMITED (UNITED KINGDOM LIMITD COMPANY)
`3300 DARESBURY PARK
`
`Registered Au g. 1 6, 201 1 DARESBURY, WARRINGTON, CHESHIRE, UNITED KINGDOM WA4 4HS
`
`Int. Cls.: 9, 16, 41 and 42 FOR: CD-ROMS FEATURINGAPPLICATIONINSTALLATIONMANAGEMENT SOFTWARE;
`COMPUTER SOFTWARE, NAMELY, APPLICATION INSTALLATION MANAGEMENT
`SOFTWARE; DOWNLOADABLE PUBLICATIONS AND INSTRUCTIONS AND TEACHING
`MATERIALS IN ELECTRONICFORM, NAMELY, ELECTRONIC BOOKS AND EDUCATION-
`AL MANUALS IN THE FIELD OF APPLICATION INSTALLATION MANAGEMENT SOFT-
`WARE, IN CLASS 9 (U.S. CLS. 21, 23, 26, 36 AND 38).
`
`SERVICE MARK
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`
`
`Dirculor oflhe United Stales Faun! and rmdcmnrk ()fi‘nc=
`
`FOR: PRINTED PUBLICATIONS, NAMELY, BOOKS AND MANUALS IN THE FIELD OF
`APPLICATION INSTALLATION MANAGEMENT SOFTWARE; PRINTED INSTRUCTIONAL
`AND TEACHING MATERIALS IN THE FIELD OF APPLICATION INSTALLATION MAN-
`AGEMENT SOFTWARE, IN CLASS 16 (U.S. CLS. 2, 5, 22, 23, 29, 37, 38 AND 50).
`
`FOR: INSTRUCTIONAL AND TEACHING MATERIALS IN ELECTRONIC FORM SUPPLIED
`ONLINE FROM A DATABASE OR FROM FACILITIES PROVIDED ON THE INTERNET OR
`OTHER NETWORK, NAMELY, PROVIDING A WEBSITE FEATURING NON-DOWNLOAD-
`ABLE BOOKS AND INSTRUCTION MANUALS IN THE FIELD OF APPLICATION INSTALL-
`ATION MANAGEMENT SOFTWARE, IN CLASS 41 (U.S. CLS. 100, 10] AND 107).
`
`FOR: POST-SALE MAINTENANCE AND CONSULTANCY SERVICES RELATING TO
`COMPUTER SOFTWARE, IN CLASS 42 (U.S. CLS. 100 AND 101).
`
`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PAR-
`TICULAR FONT, STYLE, SIZE, OR COLOR.
`
`PRIORITY CLAIMED UNDER SEC. 44(D) ON ERPN CMNTY TM OFC APPLICATION NO.
`008489403, FILED 8-13-2009, REG. NO. 008489403, DATED 2-I0-2010, EXPIRES 8-I3-2019.
`
`SER. NO. 77-883,950, FILED 12-2-2009.
`
`SAIMA MAKHDOOM, EXAMINING ATTORNEY
`
`
`
`Mark:
`
`APPSENSOR XPERT
`
`Exhibit C
`
`Generated on 2012-04-02T11:30:39.102—04:0O
`
`AppSens0r Xp ert
`
`US Serial
`Number:
`
`85404735
`
`Register:
`
`Principal
`
`Mark Type:
`
`Trademark
`
`Application
`Filing Date:
`
`Aug’ 23’ 2011
`
`Status:
`
`A request for an extension of time to file an opposition has been filed with the
`Trademark Trial and Appeal Board. For filrther information, see TTABVUE on
`the Trademark Trial and Appeal Board web page.
`
`Status Date:
`
`Jan. 03, 2012
`
`Publication
`Date:
`
`Dec 06: 2011
`
`Mark Information
`
`""*"" ”‘°'a'
`Elements:
`
`APPSENSOR XPERT
`
`Standard
`
`Yes. The mark consists of standard characters without claim to any particular
`
`Character Claim:
`
`font style, size, or color.
`
`""""" °"“"""‘9
`Type:
`
`4 — STANDARD CHARACTER MARK
`
`Goods and Services
`
`Note: The following symbols indicate that the goods and services have been amended after registration
`of the Mark. Double parenthesis ((..)) identify any goods no claimed in Section 15 affidavit; Single
`brackets [..] indicate deleted goods; and, Single asterisks *..* identify additional (new) wording in the
`goods.
`
`For:
`
`Computer software allowing collection, archiving, normalization, reporting,
`andanalysis of network and infrastructure data, namely, topology, configuration,
`performance, and traffic data, and other related application performance data
`
`Class Status:
`
`6 - ACTIVE
`
`Basis:
`
`1(b)
`
`International
`Class:
`
`009
`
`Basis Information (Case Level)
`
`
`
`Filed Use:
`
`Filed ITU:
`
`Filed 44D:
`
`Filed 44E:
`
`Filed 66A:
`
`Filed No Basis:
`
`No
`
`Yes
`
`No
`
`N0
`
`No
`
`No
`
`Currently Use:
`
`Currently ITU:
`
`Currently 44D:
`
`Currently 44E:
`
`Currently 66A:
`
`Currently No
`Basis:
`
`No
`
`Yes
`
`No
`
`No
`
`No
`
`No
`
`Amended Use: No
`
`Amended ITU: No
`
`Amended 44D: No
`
`Amended 44E: No
`
`Current Owner(s)Nlnformagtion
`
`Owner Name:
`
`Opnet Technologies, Inc.
`
`Owner Address:
`
`7255 Woodmont Avenue
`
`Bethesda, MARYLAND 208147900
`UNITED STATES
`
`Legal Entity
`Type:
`
`CORPORATION
`
`State or Country
`Where
`
`Organized:
`
`DELAWARE
`
`Attorneylcorrespondence Information
`
`Attorney Name:
`
`Andrew B. Katz
`
`Attorney of Record
`
`Correspondent
`
`Correspondent
`NamelAddress:
`
`ANDREW B. KATZ
`BELLES KATZ LLC
`
`721 DRESHERRD STE 1100
`
`HORSHAM, PA 19044-2216
`UNITED STATES
`
`Phone
`
`215-658-1890
`
`Fax
`
`888-649-7733
`
`Correspondent e- Yes
`mail Authorized
`
`Domestic Representative - Not Found
`
`Prosecution History
`
`Date
`
`Description
`
`Proceeding
`Number
`
`Jan. 03, 2012
`
`EXTENSION OF TIME TO OPPOSE RECEIVED
`
`
`
`Dec. 06, 201 l
`
`OFFICIAL GAZETTE PUBLICATION CONFIRMATION
`EMAILED
`
`Dec. 06, 201 l
`
`PUBLISHED FOR OPPOSITION
`
`NOTIFICATION OF NOTICE OF PUBLICATION E-
`Nov. 16, 201.1 MAILED
`
`Oct. 28, 201 l
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`Oct. 21, 201]
`
`ASSIGNED TO EXAMINER
`
`83I9l
`
`Aug. 30, 201 I
`
`NOTICE OF PSEUDO MARKMAILED
`
`Mg‘ 27‘ 201 1
`
`APPLICATION OFFICE SUPPLIED DATA
`ENTERED IN TRAM
`
`Aug. 26, 201 1
`
`NEW APPLICATION ENTERED IN TRAM
`
`TM Staff and Location Information
`
`TM Attorney:
`
`LORENZO, KATHLEEN H
`
`‘f"".°"‘°°
`sslgned:
`
`LAW OFFICE 109
`
`Current Location:
`
`PUBLICATION AND ISSUE
`SECTION
`
`Date in Location: Oct. 31, 2011
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