Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA523406
`ESTTA Tracking number:
`02/25/2013
`
`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
`
`Cisco Technology, Inc.
`02/24/2013
`
`170 West Tasman Drive
`San Jose, CA 95134
`UNITED STATES
`
`Attorney
`information
`
`Sally M. Abel, Linda M. Goldman
`Fenwick & West LLP
`801 California Street Silicon Valley Center
`Mountain View, CA 94041
`UNITED STATES
`trademarks@fenwick.com Phone:(650) 988-8500
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85457782
`02/25/2013
`
`Publication date
`Opposition
`Period Ends
`
`08/28/2012
`02/24/2013
`
`Systech Corporation
`16510 VIA ESPRILLO
`San Diego, CA 92127
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 009.
`All goods and services in the class are opposed, namely: Electronic devices that form interfaces,
`namely, a gateway and hardware interface to remote sensors and peripherals consisting of a variety
`of wired and wireless hardware interfaces and firmware and software for monitoring and controlling
`sensors and peripherals connected to the various interfaces; electronic devices that form interfaces,
`namely, a gateway and hardware interface which sends and receives data, commands via a
`centralized management system, and supports router functionality
`
`Grounds for Opposition
`
`False suggestion of a connection
`Priority and likelihood of confusion
`
`Trademark Act section 2(a)
`Trademark Act section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`2144553
`
`Application Date
`
`03/14/1997
`
`

`
`Registration Date
`
`03/17/1998
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`LINKSYS
`
`NONE
`
`Class 009. First use: First Use: 1991/05/17 First Use In Commerce: 1991/05/17
`network interface cards, combined fax/modem and network interface adapters,
`network interface adapters, network communications hubs,[ network print
`adapters,] network cables, [SCSI (Small Computer System Interface) adapters,
`computer printer sharing adapters, external printer buffers, power conservation
`devices for computer printers, and DC-to-AC power adapters]
`
`3068996
`
`03/14/2006
`
`LINKSYS
`
`NONE
`
`Application Date
`
`07/21/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Class 009. First use: First Use: 1991/05/17 First Use In Commerce: 1991/05/17
`Routers; gateways; switches; network access range expanders; telephones;
`internet video cameras; print servers; computer software for interconnecting,
`managing, and operating local and wide area networks; communication
`terminals comprising computer hardware and/or software for providing video,
`audio, data, video game, and telephone communications and/or transmissions;
`network storage devices, comprised of computer hardware and/or software;
`interfaces for interconnecting computers, [ projectors, ] stereo systems, game
`consoles, home appliances and/or other electronic devices; [ devices for
`recording, organizing, transmitting, and reviewing audio files; ] computer
`hardware for interconnecting and managing computer networks; computer
`hardware; network interface cards; network cables; computer network adapters;
`servers; computer hardware containing network security functionality, including
`firewalls, data encryption, and/or interoperability with network security protocols
`Class 042. First use: First Use: 2003/09/00 First Use In Commerce: 2003/09/00
`[ Dynamic domain name services, namely, providing consistent domain name
`identifications for users on a global computer network who have changing
`internet protocol addresses; internet services, namely, tracking changing
`internet protocol addresses to a single domain name address ]
`
`Attachments
`
`Notice of Opposition - SYSLINK.pdf ( 5 pages )(25644 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
`
`/lmg/
`Sally M. Abel, Linda M. Goldman
`
`

`
`Date
`
`02/25/2013
`
`02/25/2°1302/25/2°13
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`In the matter of
`Trademark Application Serial No.: 85/457,782
`Filed: October 27, 2011
`Published: August 28, 2012
`Mark: SYSLINK
`
` _
`
`
`
` )
`Cisco Technology, Inc.,
` )
`
` Opposer, )
`
`
`) Opposition No.
` vs.
`
`)
`
`
`)
`Systech Corporation,
`
`)
`
`
` )
` Applicant.
`
`)
`)
`
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`Cisco Technology, Inc., a California Corporation, located at 170 West Tasman
`
`Drive, San Jose, California 95134, (“Cisco”), believes it will be damaged by the registration of
`
`the mark shown in Application Serial Number 85/457,782, and hereby opposes that application,
`
`alleging as grounds for the opposition that:
`
`1.
`
`As is evidenced by the publication of the SYSLINK application in the
`
`August 28, 2012, issue of the Official Gazette, Systech Corporation (“Applicant”), seeks to
`
`register SYSLINK as a trademark for “electronic devices that form interfaces, namely, a gateway
`
`and hardware interface to remote sensors and peripherals consisting of a variety of wired and
`
`wireless hardware interfaces and firmware and software for monitoring and controlling sensors
`
`and peripherals connected to the various interfaces; electronic devices that form interfaces,
`
`

`
`
`
`namely, a gateway and hardware interface which sends and receives data, commands via a
`
`centralized management system, and supports router functionality” in International Class 9 (the
`
`“Application”). The Application was filed on October 27, 2011, on an intent-to-use basis.
`
`2.
`
`Cisco owns two U.S. Trademark Registrations for LINKSYS (collectively
`
`the “LINKSYS mark”), including: U.S. Reg. No. 2,144,553 for “network interface cards,
`
`combined fax/modem and network interface adapters, network interface adapters, network
`
`communications hubs, network cables” in International Class 9, which was registered on the
`
`Principal Register on March 17, 1998; and U.S. Reg. No. 3,068,996 for “routers; gateways;
`
`switches; network access range expanders; telephones; internet video cameras; print servers;
`
`computer software for interconnecting, managing, and operating local and wide area networks;
`
`communication terminals comprising computer hardware and/or software for providing video,
`
`audio, data, video game, and telephone communications and/or transmissions; network storage
`
`devices, comprised of computer hardware and/or software; interfaces for interconnecting
`
`computers, stereo systems, game consoles, home appliances and/or other electronic devices;
`
`computer hardware for interconnecting and managing computer networks; computer hardware;
`
`network interface cards; network cables; computer network adapters; servers; computer
`
`hardware containing network security functionality, including firewalls, data encryption, and/or
`
`interoperability with network security protocols” in International Class 9, which was registered
`
`on the Principal Register on March 14, 2006.
`
`3.
`
`Both U.S. Reg. Nos. 2,144,553 and 3,068,996 are incontestable and
`
`subsisting and are conclusive evidence of Cisco’s exclusive right to use the LINKSYS mark in
`
`commerce on the goods specified therein.
`
`4.
`
`There is no issue as to priority. Cisco commenced use of the LINKSYS
`
`mark prior to the filing date of the Application, and both LINKSYS applications were filed and
`
`matured to registration prior to the filing date of the Application. The LINKSYS mark and
`
`Applicant’s SYSLINK mark are visually and aurally similar. In view of the similarities of the
`
`
`Mark: SYSLINK
`Serial No.: 85/457,782
`Opposer: Cisco Technology, Inc.
`
`2
`
`

`
`
`
`respective marks and the related nature of the goods and services of the respective parties, it is
`
`alleged that Applicant’s SYSLINK mark so resembles Cisco’s registered LINKSYS mark as to
`
`be likely to cause confusion or mistake or to deceive, thereby causing loss, damage, and injury to
`
`Cisco and the purchasing public.
`
`5.
`
`Cisco is in the business of designing, manufacturing, marketing, selling,
`
`and providing a range of goods and services throughout the United States and worldwide. Since
`
`at least as early as May 1991, Cisco or its predecessors in interest have marketed and sold under
`
`the LINKSYS mark various communications hardware and software, including hardware and
`
`software for interconnecting, managing, securing and operating local and wide area networks,
`
`hardware and software for providing video, audio, data, video game, and telephone
`
`communications and transmissions, and interfaces for interconnecting computers, stereo systems,
`
`game consoles, home appliances and other electronic devices.
`
`6.
`
`The aforementioned nationwide trademark and service mark use of the
`
`LINKSYS mark by Cisco has been valid and continuous since the date of first use and has not
`
`been abandoned. As a consequence of Cisco’s extensive marketing, promotion, advertising, and
`
`sales activity, Cisco’s LINKSYS mark has come to be identified as a designator of Cisco’s
`
`goods, and as a result, has become a valuable asset of Cisco, and a principal symbol of its
`
`goodwill. In view of the close similarity of the respective marks and the highly related nature of
`
`the goods of the respective parties, it is alleged that Applicant’s SYSLINK mark so resembles
`
`Cisco’s LINKSYS mark previously used in the United States, and not abandoned, as to be likely
`
`to cause confusion or mistake or to deceive, or to disparage and falsely suggest a connection
`
`with Cisco, thereby causing loss, damage, and injury to Cisco and the purchasing public.
`
`WHEREFORE, Cisco prays that this notice of Opposition be sustained and that
`
`the Application be rejected.
`
`
`
`
`Mark: SYSLINK
`Serial No.: 85/457,782
`Opposer: Cisco Technology, Inc.
`
`3
`
`

`
`
`
`Please charge the requisite $600.00 filing fee for this Notice of Opposition and
`
`any additional fees to our Deposit Account No. 50-0261.
`
`Date: February 25, 2012
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`/Linda M. Goldman/
`Sally M. Abel, Esq.
`Linda M. Goldman
`Attorney for Opposer
`FENWICK & WEST LLP
`Silicon Valley Center
`801 California Street
`Mountain View, CA 94041
`650-988-8500
`
`
`
`
`
`
`Mark: SYSLINK
`Serial No.: 85/457,782
`Opposer: Cisco Technology, Inc.
`
`4
`
`

`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned declares that:
`
`I, Deborah A. Shaw, am employed in the County of Santa Clara, State of California. I am over
`
`the age of 18 and not a party to this action. My business address is: Fenwick & West LLP, Silicon
`
`Valley Center, 801 California Street, Mountain View, CA 94041.
`
`On February 25, 2013, I caused to be served the attached:
`
`NOTICE OF OPPOSITION
`
`on the parties in the subject action by placing a true copy thereof as indicated below, address:
`
`
`( )
`
`Lisel M. Ferguson
`Procopio, Cory, Hargreaves & Savitch, LLP
`525 B Street, Suite 2200
`San Diego, CA 92101-4474
`
`(XX) BY U.S. MAIL: I am familiar with our business practices for collecting and processing of mail
`for the United States Postal Service. Mail placed by me within the office for collection for the
`United States Postal Service would normally be deposited with the United States Postal Services
`that day in the ordinary course of business. The envelope(s) bearing the address(es) above was
`sealed and placed for collection and mailing on the date below following our ordinary business
`practices.
`BY PERSONAL SERVICE: I caused such envelope(s) to be delivered by hand on the office(s)
`of the addressee(s).
`BY FEDERAL EXPRESS: I caused such envelope(s) to be delivered to Federal Express for
`overnight courier service to the office(s) of the addressee(s).
`BY FACSIMILE: I caused a copy of such document(s) to be sent via facsimile transmission to
`the office(s) of the party(s) stated above and was transmitted without error.
`
`( )
`
`( )
`
`I declare under penalty of perjury under the laws of the State of California that the foregoing is
`
`true and correct.
`
`Date: February 25, 2013 /Deborah A. Shaw/
`Deborah A. Shaw
`
`
`
`
`
`
`
`
`Mark: SYSLINK
`Serial No.: 85/457,782
`Opposer: Cisco Technology, Inc.
`
`5