Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA554402
`ESTTA Tracking number:
`08/16/2013
`
`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
`
`Avocent Corporation
`08/18/2013
`
`4991 Corporate Drive
`Huntsville, AL 35805
`UNITED STATES
`
`Attorney
`information
`
`Lisa M. DuRoss/Jessica S. Sachs
`Harness, Dickey & Pierce, P.L.C.
`5445 Corporate Drive Suite 200
`Troy, MI 48098
`UNITED STATES
`jsachs@hdp.com, docketingtm@hdp.com Phone:248-641-1292
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85575964
`08/16/2013
`
`Publication date
`Opposition
`Period Ends
`
`02/19/2013
`08/18/2013
`
`DSR Technologies, Inc.
`8610 SW 61st Place
`Gainesville, FL 32608
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 037.
`All goods and services in the class are opposed, namely: Installation, repair and maintenance of
`computers, computer networking hardware, and computer peripherals; Fire and/or burglar alarm
`installation and/or repair; Installation and/or repair of Door Access Control Systems; Security and
`Surveillance system installation and/or repair
`
`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
`
`2859800
`
`07/06/2004
`
`Word Mark
`
`DSR
`
`Application Date
`
`08/06/2003
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2001/12/14 First Use In Commerce: 2001/12/14
`Computer peripherals, namely, switches allowing multiple users to
`independently access multiple personal computers and serial devices via analog
`or IP connection; computer hardware for providing multiple users with the
`equivalent of direct keyboard, power supply, video monitor and mouse access
`and control of servers and serial devices via IP or analog connections and
`associated manuals sold as a unit therewith
`
`U.S. Registration
`No.
`Registration Date
`
`2859800
`
`07/06/2004
`
`Application Date
`
`08/06/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`DSR
`
`NONE
`
`Class 009. First use: First Use: 2001/12/14 First Use In Commerce: 2001/12/14
`Computer peripherals, namely, switches allowing multiple users to
`independently access multiple personal computers and serial devices via analog
`or IP connection; computer hardware for providing multiple users with the
`equivalent of direct keyboard, power supply, video monitor and mouse access
`and control of servers and serial devices via IP or analog connections and
`associated manuals sold as a unit therewith
`
`Related
`Proceedings
`
`Opposition No. 91211967
`
`Attachments
`
`Notice of Opposition (DSR TECHNOLOGIES).PDF(316627 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
`
`/jss/
`Jessica S. Sachs
`08/16/2013
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 85/575,964
`Published in the Official Gazette of February 19, 2013
`
`Opposition No.
`
`l ]
`
`] l
`
`]
`l
`
`] l
`
`]
`
`AVOCENT CORPORATION
`
`Opposer,
`
`V.
`
`DSR TECHNOLOGIES, INC.
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`Avocent Corporation (“Avocent”), by and through its undersigned attorneys, hereby
`
`submits its Notice of Opposition of Application Serial No. 85/575,964 for the trademark DSR
`
`TECHNOLOGIES in International Class 37 (the “Opposed Application”) owned by DSR
`
`Technologies, Inc. (“Applicant”). Avocent believes that it will be damaged by registration of
`
`this application, and hereby opposes the same.
`
`As grounds in support of its Notice of Opposition, Avocent asserts as follows:
`
`1.
`
`Avocent is a corporation organized and existing under the laws of Delaware, with
`
`a principal place of business at 4991 Corporate Drive, Huntsville, Alabama, 35805.
`
`2.
`
`Upon information and belief, Applicant is a corporation organized and existing
`
`under the laws of Florida, with a principal place of business at 8610 SW 613‘ Place, Gainesville,
`
`Florida 32608.
`
`3.
`
`Avocent is a leading provider of information technology (IT) solutions, including
`
`software, hardware, peripherals, firmware, embedded technologies, and related services.
`
`

`
`Notice of Opposition — DSR TECHNOLOGIES
`Serial No. 85/575,964
`
`Page 2
`
`4.
`
`Avocent’s DSR trademark was first used in connection with computer hardware
`
`and peripherals at least as early as December 2001 and use of the mark in connection with such
`
`products and associated services continues.
`
`5.
`
`Avocent is the owner of U.S. Trademark Registration No. 2,859,800 for the DSR
`
`trademark, registered on July 6, 2004, for “computer peripherals, namely, switches allowing
`
`multiple users to independently access multiple personal computers and serial devices via analog
`
`or IP connection; computer hardware for providing multiple users with the equivalent of direct
`
`keyboard, power supply, video monitor and mouse access and control of servers and serial
`
`devices via IP or analog connections and associated manuals sold as a unit
`
`therewith” in
`
`International Class 9, and the common law rights associated therewith (the “DSR Mark”). A
`
`copy of the TSDR printout and Certificate of Registration for the foregoing registration is
`
`attached hereto as Exhibit A, and made a part hereof.
`
`6.
`
`The registration for
`
`the DSR Mark is valid,
`
`incontestable, and serves as
`
`conclusive evidence of the validity of the DSR Mark, Avocent’s ownership of the DSR Mark,
`
`and Avocent’s exclusive right to use the DSR Mark in commerce on or in connection with the
`
`goods specified in the registration.
`
`7.
`
`The DSR Mark symbolizes the extensive goodwill, reputation, and recognition
`
`built up by Avocent as a result of the time, resources and effort spent advertising, promoting, and
`
`publicizing the goods offered under the DSR Mark, and establishing the DSR Mark in the minds
`
`of consumers as an indicator of high—quality products offered by Avocent. As a result, the DSR
`
`Mark has become, through favorable public acceptance and recognition, an asset of value as a
`
`symbol of Avocent, its quality products, and its goodwill.
`
`8.
`
`Applicant seeks to register the trademark DSR TECHNOLOGIES (“Applicant’s
`
`Mark”) for “installation, repair and maintenance of computers, computer networking hardware
`
`

`
`Notice of Opposition — DSR TECHNOLOGIES
`Serial No. 85/575,964
`Page 3
`
`and computer peripherals; tire and/or burglar alarm installation and/or repair; installation and/or
`
`repair of door access control systems; security and surveillance system installation and/or repair"
`
`in International Class 37. The Opposed Application was published in the February 19, 2013
`
`edition of the Official Gazette.
`
`9.
`
`The Opposed Application was filed on March 21, 2012 based upon proposed use.
`
`Use of Avocent’s DSR Mark began at least as early as December 2001, a date significantly
`
`earlier than the filing/priority date of the Opposed Application.
`
`10.
`
`Applicant’s Mark is visually, aurally, and conceptually similar to the DSR Mark,
`
`and contains the entirety of the DSR mark.
`
`In addition, the services listed in the Opposed
`
`Application are sufficiently related to the goods and services offered by Avocent under the DSR
`
`Mark as to be likely to cause confusion, or to cause mistake, or to deceive.
`
`11.
`
`Avocent reasonably believes that consumers, upon encountering Applicant’s
`
`Mark used in connection with Applicant’s services, are likely to believe that such services
`
`emanate from, are authorized or sponsored by, or are in some other way affiliated with Avocent.
`
`12.
`
`Applicant’s Mark falsely suggests a connection or association with Avocent.
`
`When Applicant’s Mark is used in connection with services offered in the same or similar
`
`channels of trade as products sold by Avocent under the DSR Mark, Applicant’s Mark so
`
`resembles the DSR Mark as to be likely to cause confusion and lead to deception or mistake as to
`
`the origin of Applicant’s services offered under Applicant’s Mark. Consequently, Avocent
`
`believes that Applicant’s use and registration of Applicant’s Mark will cause consumers to draw
`
`a false conclusion about
`
`the origin, nature, or quality of Applicant’s
`
`services under
`
`circumstances where such a conclusion will be material
`
`to the consumer’s deliberations
`
`regarding the purchase of such services.
`
`

`
`Notice of Opposition — DSR TECHNOLOGIES
`Serial No. 85/575,964
`
`Page 4
`
`13.
`
`If Applicant is permitted to use and register Applicant’s Mark for the services
`
`specified in the application herein opposed, confusion in trade resulting in damage and injury to
`
`Avocent would result by reason of the similarity between Applicant’s Mark and the DSR Mark.
`
`Furthermore, any objection or fault found with App1icant’s services offered under Applicant’s
`
`Mark would necessarily reflect upon and seriously injure the reputation that Avocent has
`
`established in its mark.
`
`WHEREFORE, Avocent prays that this opposition be sustained and that Applicant be
`
`denied registration of the mark DSR TECHNOLOGIES as identified in Application Serial No.
`
`85/575,964 in International Class 37.
`
`Date:August 16,2013
`
`Respectfully submitted,
`
`g
`
`[/2 £4
`
`ael P. Brennan
`
`Lisa M. DuRoss
`
`Jessica S. Sachs
`
`Harness, Dickey & Pierce, P.L.C.
`5445 Corporate Drive, Suite 200
`Troy, Michigan 48098
`Phone: (248) 641-1600
`Fax: (248) 641-0270
`Email: jsachs@hdp.com
`
`Attorneys for Opposer
`Avocent Corporation
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 16th day of August, 2013, I mailed, via First Class Mail, postage
`
`prepaid, a true and correct copy of the foregoing NOTICE OF OPPOSITION to:
`
`Correspondent of Record:
`DSR Technologies Inc.
`8610 SW 615‘ Place
`
`Gainesville, Florida 32608
`Attention: Davilson Rodrigues
`
`
`
`

`
`EXHIBIT A
`
`TO
`
`NOTICE OF OPPOSITION
`
`

`
`Generated on: This page was generated by TSDR on 2013-0846 07:31 :29 EDT
`Mark: DSR
`
`US Serial Number: 76535319
`US Registration Number: 2859800
`Register: Principal
`Mark Type: Trademark
`
`Application Filing Date: Aug. 06, 2003
`Registration Date:
`Jul. 06, 2004
`
`Status: A Sections 8 and 15 combined declaration has been accepted and acknowledged.
`Status Date: Sep. 04, 2009
`Publication Date: Apr. 13, 2004
`
`it Mark Inyformpawtvion
`
`Mark Literal Elements: DSR
`
`Standard Character Claim: N0
`
`Mark Drawing Type:
`
`1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
`
`
`
`Related Properties Information
`
`International Registration 0979269
`Number:
`
`International AO013069/0979269
`Application(s)
`IRegistration(s) Based on
`this Property:
`
`Note: ilirz .l<'.:i:i‘>w:n_<:; sym
`
`
`
`irimxaiizz that inn !‘F.?(jl$i§’i:§!§i/(iwlliaf mes; 2-mli-enderl the _goc>t:'sis;i-'emcei2.~;'
`
`1 Goods, ai1_d_..S9rvic§s
`
`
`.i sriiri ‘rater <i<=eit=2io<i §}()0C§i§i5$(~2iViCf3S;
`i
`9
`
`
`§)Eii‘t‘E!‘iii\
`ii. )) identify any g<‘i<Jds/services; not (winter! in is Section 15 affidavit of
`0 Donn
`v Axsierisks ‘.
`‘
`irir-zritsiy additional (new) wording in the goods/services.
`
`For: Computer peripherals, namely, switches allowing multiple users to independently access multiple personal computers and serial
`devices via analog or IP connection; computer hardware for providing multiple users with the equivalent of direct keyboard, power
`supply, video monitor and mouse access and control of servers and serial devices via IP or analog connections and associated
`manuals sold as a unit therewith
`
`international Class(es): O09 — Primary Class
`Class Status: ACTlVE
`
`Basis: 1(a)
`First Use: Dec, 14, 2001
`
`U.S Class(es): O21. 023, 026, O36, 038
`
`Use‘ Co
`
`
`erce' Dec. 14. 2001
`
`Inf9rmétion
`
`>
`
`A»
`
`Filed Use: Yes
`Filed lTU: No
`Filed 440: No
`Filed 44E: No
`Filed 66A: No
`Filed No Basis: No
`
`Currentlyuse: Yes
`Currenl:lyITU: No
`Currently44D: No
`Currently 44E: No
`Currently 66A: No
`
`C rrentlyN B
`M Current Owne1j.('s)
`
`Owner Name: Avocent Corporation
`
`Owner Address: 4991 Corporate Drive
`Huntsville, ALABAMA 358055906
`UNlTED STATES
`
`Amended Use: No
`Amended lTU: No
`Amended 44D: No
`Amended 44E: No
`
`Legal Entity Type: CORPORATlON
`
`State or Country Where DELAWARE
`
`

`
`Attorney Name:
`Attorney Primary Email
`Address:
`
`Michaei P. Brennan
`
`docketIngtm@hdQ.com
`
`Correspondent Michael P. Brennan
`NameIAddres5:
`Harness, Dickey & Pierce, P. L.C.
`Post Office Box 828
`Bioomfieid Hills, MICHIGAN 48303
`UNITED STATES
`
`Phone:
`
`248-641-1600
`
`Correspondent e-mail: dockeIingtm@hdg.com
`
`Organized:
`
`]
`
`f
`
`L
`
`
`
`
`
`Attorney of Record
`Docket Number: 6499A—200051
`Attorney Email Yes
`Authorized:
`
`Correspondent
`
`Fax: 248-641-0270
`
`Correspondents-mail Yes
`Authorized:
`
`Dale
`
`Description
`
`Proceeding
`Number
`
`Preosecution History
`
`Sep.28,2010
`
`Sep.28,201O
`
`Sep.04,2009
`
`Aug.10,2009
`
`Aug.05,2009
`OcL11.2007
`
`Oct. 04, 2007
`
`Aug.08.2007
`
`Aug.O6,2007
`Oct.04,2006
`
`OcL03,2005
`
`JuL06,2004
`
`Apr.13,2004
`Mar.24,2004
`
`Feb.O4,2004
`
`Jan.28,2004
`Jan.20,2004
`
`Dec.17,2003
`
`ATTORNEY REVOKED AND/OR APPOINTED
`
`TEAS REVOKE/APPOINT ATTORNEY RECEIVED
`
`REGISTERED — SEC. 8 (6—YR) ACCEPTED & SEC. 15 ACK.
`ASSIGNED TO PARALEGAL
`
`TEAS SECTION 8 & 15 RECEIVED
`
`CERTIFICATE OF CORRECTION ISSUED
`
`ASSIGNED TO PARALEGAL
`SEC 7 REQUEST FILED
`
`PAPER RECEIVED
`
`REVIEW OF CORRESPONDENCE COMPLETE
`PAPER RECEIVED
`
`REGISTERED-PRINCIPAL REGISTER
`PUBLISHED FOR OPPOSITION
`
`NOTICE OF PUBLICATION
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`EXAMINER'S AMENDMENT MAILED
`
`ASSIGNED TO EXAMINER
`
`PAPER RECEIVED
`
`69471
`
`69471
`
`69934
`
`67149
`
`73731
`
`Sep.08.2003
`
`PAPERRECEIVED
` Maint99an¢¢LF Registration Ilnfortmtion
`Affidavit of Continued Section 8 - Accepted
`Use:
`
`Affidavit of Section 15 ~ Accepted
`Incontestabiiityz
`Change in Registration: Yes
`
`Correction made to IN THE STATEMENT. COLUMN 1. LINE 1. "ALABAMA" SHOULD BE DELETED, AND DELAWARE SHOULD BE INSERTED
`Registration:
`
`Current Location: POST REGISTRATION
`
`Date in Location: Sep. 04, 2009
`
`TM Staff Infonnation - None
`File Location
`
` I I
`
`
`
`

`
`Summary
`Number of P oceedi
`
`
`Proceeding Number:
`Status:
`
`interlocutory Attorney:
`
`Name:
`
`Correspondent Address:
`
`Associated marks
`
`Mark
`
`DSR TECHNOLOGIES, INC
`
`
`ojip6siti'o}i ’
`
`Filing Date:
`Status Date: Aug 09, 2013
`
`Defendant
`
`Pending
`ANDREW P BAXLEY
`
`DSR Technoiogies. inc.
`DSR TECHNOLOGIES INC
`8610 SW 6’iST PLACE
`GAINESVILLE FL , 32608
`UNITED STATES
`
`Application Status
`
`Opposition Pending
`Plaintiffls)
`
`Serial
`Number
`
`85575986
`
`Registration
`Number
`
`Name; Avocent Corporation
`Correspondent Address: JESSICA S SACHS
`HARNESS DICKEY & PIERCE PLC
`5445 CORPORATE DRIVE , SUITE 200
`TROY MI , 48098
`UNITED STATES
`
`Correspondent e-mail:
`Associated marks
`
`'sachs@hdg.com , dockeiingtm@hd9.com
`
`Mark
`
`DSR
`
`Application Status
`
`Section 8 and 15 - Accepted and
`Acknowledged
`Prosecution History
`
`Smgyber
`
`History Text
`
`FILED AND FEE
`
`NOTICE AND TRIAL DATES SENT; ANSWER DUE:
`
`PENDING, INSTITUTED
`
`1
`
`2
`
`3
`
`Date
`
`Aug ()9, 2013
`
`Aug 09‘ 2013
`
`Aug 09' 2013
`
`Serial
`Number
`
`Registration
`Number
`
`76535319
`
`2859800
`
`Due Date
`
`Sep 18,2013
`
`

`
`Int. Cl.: 9
`
`Prior U.S. Cls.: 21, 23, 26, 36 and 38
`
`Reg. No. 2,859,800
`United States Patent and Trademark Office
`Registered July 6, 2004
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`DSR
`
`AVOCENT CORPORATION (ALABAMA con-
`PORATION)
`4991 CORPORATE DRIVE
`HUNTSVILLE, AL 358055906
`
`FOR: COMPUTER PERIPHERALS, NAMELY,
`SWITCHES ALLOWING MULTIPLE USERS TO IN-
`DEPENDENTLY ACCESS MULTIPLE PERSONAL
`COMPUTERS AND SERIAL DEVICES VIA ANALOG
`OR IP CONNECTION; COMPUTER HARDWARE
`FOR PROVIDING MULTIPLE USERS WIIH THE
`EQUIVALENT OF DIRECT KEYBOARD, POWER
`
`SUPPLY, VIDEO MONITOR AND MOUSE ACCESS
`AND CONTROL OF SERVERS AND SERIAL DEVI-
`CES VIA II’ OR ANALOG CONNECTIONS AND
`ASSOCIATED MANUALS SOLD AS A UNIT THERE-
`VVITH, IN CLASS 9 (U.S. CLS. 21, 23, 26, 36 AND 38).
`
`FIRST USE 12-14-2001; IN COMMERCE 12-14-2001.
`
`SER. NO. 76-535,319, FILED 8-6-2003.
`
`HOWARD SMIGA, EXAMINING ATTORNEY