Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA891755
`04/23/2018
`
`ESTTA Tracking number:
`
`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 ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`EyeVerify Inc.
`
`04/22/2018
`
`1740 Main Street, Suite 100
`Kansas City, MO 64108
`UNITED STATES
`
`Kristen McCallion
`Fish & Richardson P.C.
`PO BOX 1022
`Minneapolis, MN 55440-1022
`UNITED STATES
`Email: tmdoctc@fr.com, mccallion@fr.com, rthomas@fr.com
`Phone: 212-765-5070
`
`Applicant Information
`
`Application No
`
`87524754
`
`Publication date
`
`10/24/2017
`
`Opposition Filing
`Date
`
`Applicant
`
`04/23/2018
`
`Opposition Peri-
`od Ends
`
`04/22/2018
`
`ANKER TECHNOLOGY CO., LIMITED
`Rm 1318-19, Hollywood Commercial Center
`610 Nathan Road, Mongkok
`Kowloon
`HONG KONG
`
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 0 First Use In Commerce: 0
`Opposed goods and services in the class: apparatus for recording, transmission or reproduction of
`sound; wireless transmitters and receivers
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Application
`No.
`
`87359730
`
`Application Date
`
`03/06/2017
`
`Registration Date
`
`NONE
`
`Word Mark
`
`ZOLOZ
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`Computer software and software applications for biometric user identity verifica-
`tion and authentication; computer software and software applications for user
`identity verification and authentication;downloadable software in the nature of a
`mobile application for biometric user identity verification and authentication;
`downloadable software in the nature ofa mobile application for user identity veri-
`fication and authentication; software development kits (SDK); Apparatus and in-
`struments for the identification or automatic recognition of persons, finger or
`palm prints, characteristics of the iris, veins or voice, facial or body features or
`other biometric characteristics; computer software for the identificationor auto-
`matic recognition of persons, finger or palm prints, characteristics of the iris,
`veins or voice, facial or bodyfeatures or other biometric characteristics; systems
`consisting of apparatus and computer software for checking and identifying bio-
`metric data, namely, persons, finger or palm prints, characteristicsof the iris,
`veins or voice, facial or body features; computers and computer software for bio-
`metric devices for identifying and authentication of persons; biometric system
`computer software for identifying and authentication of persons; computer soft-
`ware for detecting persons; computer software for interpreting fingeror palm
`prints, characteristics of the iris, veins or voice, facial or body features or other
`biometric data for the purposes of identifying individuals; optical, optoelectronic
`or electroacoustic sensors for taking finger or palm prints, characteristics of the
`iris, veins or voice, facial or body features or other biometric characteristics;
`electronic cardreaders; magnetic coded card readers; smart card readers; bio-
`metric computer terminals; biometric electronic payment terminal; biometric
`electrical terminal blocks; electric locks or devices for controlling access to build-
`ings; data processing equipment for checking finger or palm prints, characterist-
`ics of the iris, veins or voice, facial or body features or other biometric character-
`istics; computer systems consisting of computer and computer software for pro-
`tecting information or communications in connection with checking finger or
`palm prints, characteristics of the iris, veins or voice, facial or body features or
`other biometric characteristics; computer software forprocessing the signal used
`for detecting and identifying persons or the biometric characteristics of persons
`in the field of security and controlling access; apparatus, instruments and com-
`puter software for detecting and identifying fraudulent documents; optoelectronic
`sensors for taking information on stationary and moving vehicles; fixed, portable
`and on-board data processing equipment for use on land, air or sea vehicles in
`connection with forensic security and transport applications for medico-legal ap-
`plications; electronic terminals for the purposes of securing game, lottery or bet-
`ting applications; optoelectronic sensors for gathering bar code, numbers and
`date information on game, lottery or betting tickets; electronic readers for check-
`ing and identifying digital data; devices, namely, electronic devices and com-
`puter software for checking and identifying digital data utilized by optical read-
`ers, microphones, gyroscopes, accelerometers andcomputer processors; appar-
`atus and instruments for the authentication and identification of digital data util-
`ized by optical readers, computer software and computer processors; reader
`
`

`

`computer software, computer terminals and electronic devices which authentic-
`ate and identify a machine-readable area on passports, visas, identity cards,
`driving licenses, health cards, voting cards, resident cards,permits to stay, pro-
`fessional health cards and other personal administrative documents that have
`an electronic chip that can transmit data for the purpose of verifying an individu-
`al's identity; electronic devices and computer software for identification, via a
`password, of an individual's identity; apparatus and instruments comprised of
`computer software, computer terminals and electronic readersfor processing
`data, namely, for acquisition, verification, storage, generationof database and
`transmission of data; computer software for checking and identifying secured di-
`gital data by acquisition, processing, verification, storage, generation of data-
`base and transmission ofdata; apparatus and instruments for controlling data re-
`lating to a person's identity by acquisition, processing, verification, storage, gen-
`eration of database and transmission of data; chip cards, namely, blank elec-
`tronic chip cards and encoded chip cards for developing and loading applica-
`tions onto user terminals; encoded electronic chip cards for access and commu-
`nicating with data network users; equipment for processing data,
`namely,encoded electronic chip card terminals and parts for the aforementioned
`goods; computer programs and operating systems for chip cards, namely, soft-
`ware used inidentification and detection systems for the purposes of identifying
`individuals, authentication of documents and locating and identifying of vehicles;
`apparatus for testing chip cards for testing their quality and proper operation; in-
`stallations for handling chip cards, namely,chip card readers; apparatus for print-
`ing, namely, printers for printing identity cards, health cards, voting cards, resid-
`ent cards, licenses, permits, and passports
`Class 016. First use: First Use: 0 First Use In Commerce: 0
`Printed matter, namely, paper and cardboard for use in the manufacture of iden-
`tity cards, telephone cards, checks, credit or bank cards, passports, visa docu-
`ments, driving licenses, health cards, voting cards, resident cards, permits to
`stay, professional health cards and other personal administrative documents
`that comprise a machine-readable area; printedcards and personal administrat-
`ive documents without magnetic coding of paper orcardboard for sale to issuing
`organizations, that comprise a machine-readable area, namely, identity cards,
`telephone cards, checks, credit cards, bank cards, passports, visa documents,
`driving licenses, health cards, voting cards, resident cards, permits to stay, and
`cards for indicating the credentials of medical professionals
`Class 038. First use: First Use: 0 First Use In Commerce: 0
`Telecommunications, namely, providing access to telecommunication networks
`and providing telecommunications connectionsto a global computer network;
`providingelectronic telecommunication connections; providing telecommunica-
`tions connections to the internet or databases; providing information about tele-
`communication and data communication; telecommunication consultation in the
`nature of technical consulting in the field of audio, textand visual data transmis-
`sion and communication; consulting in the field of telecommunication services,
`namely, transmission of voice, data, and documents via telecommunications
`networks
`Class 042. First use: First Use: 0 First Use In Commerce: 0
`Software as a service featuring software for biometric user identity verification
`and authentication; software as a service featuring software for user identity
`verification and authentication; services and advice in the field of controlling per-
`sons' access, namely, providing a secured-access, members only website fea-
`turing technology that gives members theability to enter into a protected online
`area in order to conduct financial services activities or facilitate e-commerce
`transactions; design, research and development of computer programs and
`computer software for interpreting finger or palm prints, characteristics of the
`iris,veins, voice, facial and body features or other biometric characteristics in the
`fields of access control or authentication of persons; research, design and devel-
`opment of on-line computer software systems to check previous histories of per-
`
`

`

`sons' past history and background; research, design and development of elec-
`tronic data security systems to check previous histories of persons' past history
`and background; design, research and development of computer programs and
`computersoftware for electronic identification;automation services for computers,
`namely, data automation and collection service using proprietary software to
`evaluate, analyze and collect service data; conversion of data from physical to
`electronic media; design, installation, maintenance and updating of computer
`software for data processing; cryptography services; encoding of identity docu-
`ments; advice, information and consultation in connection with the aforemen-
`tioned services, namely, computer security consultancy, computer consultation
`in the field of computer security, information technology consultation, advice re-
`lating to the design of computer hardware and technical advice relating to opera-
`tion of computers;electronic databases in the field of biometric electronic access
`data, biometric identification, identity verification and authentication
`Class 045. First use: First Use: 0 First Use In Commerce: 0
`Identification verification services, namely, providing authentication of personal
`identification information; personalbackground investigation services usingalpha-
`numeric and biometric data; consulting services, namely, consultation in the
`fields of product and document authentication and tracking, and brand monitor-
`ing and protection, to protect against counterfeiting, tampering, and diver-
`sion,and to ensure the integrity of genuine products and documents; identifica-
`tion verification services, namely, providing authentication of personal identifica-
`tion information via secure storage and transmitting such information via the In-
`ternet; personalization services for documents, namely, providing authentication
`ofpersonal identification information; providing user authentication services in e-
`commerce transactions
`
`Related Proceed-
`ings
`
`Attachments
`
`TTAB Opposition No. 91239408
`
`87359730#TMSN.png( bytes )
`Notice of Opposition ZOLO Logo.pdf(132212 bytes )
`
`Signature
`
`/Kristen McCallion/
`
`Name
`
`Date
`
`Kristen McCallion
`
`04/23/2018
`
`

`

`
`
`Attorney’s Docket No.: 44726-0023PP1
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the matter of Application Serial No. 87/524,754
`For the Mark ZOLO (& Design)
`Published in the Official Gazette on October 24, 2017
`
`
`Opposition No.
`
`
`EYEVERIFY INC.,
`
`
`
`v.
`
`ANKER TECHNOLOGY CO., LIMITED,
`
`
`
`
`Opposer,
`
`Applicant.
`
`
`United States Patent and Trademark Office
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`NOTICE OF OPPOSITION
`EyeVerify Inc., a corporation duly organized and existing under the laws of the State of
`
`Delaware and having an address at 1740 Main Street, Suite 100, Kansas City, Missouri 64108,
`
`believes that it will be damaged by registration of the mark shown in the above-identified
`
`application, and hereby opposes same.
`
`The grounds for opposition are as follows:
`
`1.
`
`Opposer develops products and services in the field of biometric security,
`
`identification and authentication.
`
`
`
`2.
`
`On March 6, 2017, Opposer filed, on an Intent-to-Use basis, Application Serial
`
`No. 87/359,730 for the mark ZOLOZ for use in connection with:
`
`

`

`Applicant : Anker Technology Co., Limited
`Serial No. :
`87/524,754
`Filed:
`:
`July 12, 2017
`Mark
`:
`ZOLO (& Design)
`Page
`:
`2
`
`
`Attorney’s Docket No.: 44726-0023PP1
`
`“Computer software and software applications for biometric user identity verification and
`authentication; computer software and software applications for user identity verification
`and authentication; downloadable software in the nature of a mobile application for
`biometric user identity verification and authentication; downloadable software in the nature
`of a mobile application for user identity verification and authentication; software
`development kits (SDK); Apparatus and instruments for the identification or automatic
`recognition of persons, finger or palm prints, characteristics of the iris, veins or voice, facial
`or body features or other biometric characteristics; computer software for the identification
`or automatic recognition of persons, finger or palm prints, characteristics of the iris, veins
`or voice, facial or body features or other biometric characteristics; systems consisting of
`apparatus and computer software for checking and identifying biometric data, namely,
`persons, finger or palm prints, characteristics of the iris, veins or voice, facial or body
`features; computers and computer software for biometric devices for identifying and
`authentication of persons; biometric system computer software for identifying and
`authentication of persons; computer software for detecting persons; computer software for
`interpreting finger or palm prints, characteristics of the iris, veins or voice, facial or body
`features or other biometric data for the purposes of identifying individuals; optical,
`optoelectronic or electroacoustic sensors for taking finger or palm prints, characteristics of
`the iris, veins or voice, facial or body features or other biometric characteristics; electronic
`card readers; magnetic coded card readers; smart card readers; biometric computer
`terminals; biometric electronic payment terminal; biometric electrical terminal blocks;
`electric locks or devices for controlling access to buildings; data processing equipment for
`checking finger or palm prints, characteristics of the iris, veins or voice, facial or body
`features or other biometric characteristics; computer systems consisting of computer and
`computer software for protecting information or communications in connection with
`checking finger or palm prints, characteristics of the iris, veins or voice, facial or body
`features or other biometric characteristics; computer software for processing the signal
`used for detecting and identifying persons or the biometric characteristics of persons in the
`field of security and controlling access; apparatus, instruments and computer software for
`detecting and identifying fraudulent documents; optoelectronic sensors for taking
`information on stationary and moving vehicles; fixed, portable and on-board data
`processing equipment for use on land, air or sea vehicles in connection with forensic
`security and transport applications for medico-legal applications; electronic terminals for
`the purposes of securing game, lottery or betting applications; optoelectronic sensors for
`gathering bar code, numbers and date information on game, lottery or betting tickets;
`electronic readers for checking and identifying digital data; devices, namely, electronic
`devices and computer software for checking and identifying digital data utilized by optical
`readers, microphones, gyroscopes, accelerometers and computer processors; apparatus and
`instruments for the authentication and identification of digital data utilized by optical
`readers, computer software and computer processors; reader computer software, computer
`terminals and electronic devices which authenticate and identify a machine-readable area
`on passports, visas, identity cards, driving licenses, health cards, voting cards, resident
`cards, permits to stay, professional health cards and other personal administrative
`documents that have an electronic chip that can transmit data for the purpose of verifying
`an individual's identity; electronic devices and computer software for identification, via a
`
`

`

`Applicant : Anker Technology Co., Limited
`Serial No. :
`87/524,754
`Filed:
`:
`July 12, 2017
`Mark
`:
`ZOLO (& Design)
`Page
`:
`3
`
`
`Attorney’s Docket No.: 44726-0023PP1
`
`password, of an individual's identity; apparatus and instruments comprised of computer
`software, computer terminals and electronic readers for processing data, namely, for
`acquisition, verification, storage, generation of database and transmission of data;
`computer software for checking and identifying secured digital data by acquisition,
`processing, verification, storage, generation of database and transmission of data;
`apparatus and instruments for controlling data relating to a person's identity by acquisition,
`processing, verification, storage, generation of database and transmission of data; chip
`cards, namely, blank electronic chip cards and encoded chip cards for developing and
`loading applications onto user terminals; encoded electronic chip cards for access and
`communicating with data network users; equipment for processing data, namely, encoded
`electronic chip card terminals and parts for the aforementioned goods; computer programs
`and operating systems for chip cards, namely, software used in identification and detection
`systems for the purposes of identifying individuals, authentication of documents and
`locating and identifying of vehicles; apparatus for testing chip cards for testing their quality
`and proper operation; installations for handling chip cards, namely, chip card readers;
`apparatus for printing, namely, printers for printing identity cards, health cards, voting
`cards, resident cards, licenses, permits, and passports” in International Class 9;
`
`“Printed matter, namely, paper and cardboard for use in the manufacture of identity cards,
`telephone cards, checks, credit or bank cards, passports, visa documents, driving licenses,
`health cards, voting cards, resident cards, permits to stay, professional health cards and
`other personal administrative documents that comprise a machine-readable area; printed
`cards and personal administrative documents without magnetic coding of paper or
`cardboard for sale to issuing organizations, that comprise a machine-readable area, namely,
`identity cards, telephone cards, checks, credit cards, bank cards, passports, visa documents,
`driving licenses, health cards, voting cards, resident cards, permits to stay, and cards for
`indicating the credentials of medical professionals” in International Class 16;
`
`“Telecommunications, namely, providing access to telecommunication networks and
`providing telecommunications connections to a global computer network; providing
`electronic telecommunication connections; providing telecommunications connections to
`the internet or databases; providing information about telecommunication and data
`communication; telecommunication consultation in the nature of technical consulting in
`the field of audio, text and visual data transmission and communication; consulting in the
`field of telecommunication services, namely, transmission of voice, data, and documents
`via telecommunications networks” in International Class 38;
`
`“Software as a service featuring software for biometric user identity verification and
`authentication; software as a service featuring software for user identity verification and
`authentication; services and advice in the field of controlling persons' access, namely,
`providing a secured-access, members only website featuring technology that gives
`members the ability to enter into a protected online area in order to conduct financial
`services activities or facilitate e-commerce transactions; design, research and development
`of computer programs and computer software for interpreting finger or palm prints,
`characteristics of the iris, veins, voice, facial and body features or other biometric
`
`

`

`Applicant : Anker Technology Co., Limited
`Serial No. :
`87/524,754
`Filed:
`:
`July 12, 2017
`Mark
`:
`ZOLO (& Design)
`Page
`:
`4
`
`
`Attorney’s Docket No.: 44726-0023PP1
`
`characteristics in the fields of access control or authentication of persons; research, design
`and development of on-line computer software systems to check previous histories of
`persons' past history and background; research, design and development of electronic data
`security systems to check previous histories of persons' past history and background;
`design, research and development of computer programs and computer software for
`electronic identification; automation services for computers, namely, data automation and
`collection service using proprietary software to evaluate, analyze and collect service data;
`conversion of data from physical to electronic media; design, installation, maintenance and
`updating of computer software for data processing; cryptography services; encoding of
`identity documents; advice, information and consultation in connection with the
`aforementioned services, namely, computer security consultancy, computer consultation in
`the field of computer security, information technology consultation, advice relating to the
`design of computer hardware and technical advice relating to operation of computers;
`electronic databases in the field of biometric electronic access data, biometric
`identification, identity verification and authentication” in International Class 42; and
`
`“Identification verification services, namely, providing authentication of personal
`identification information; personal background investigation services using alphanumeric
`and biometric data; consulting services, namely, consultation in the fields of product and
`document authentication and tracking, and brand monitoring and protection, to protect
`against counterfeiting, tampering, and diversion, and to ensure the integrity of genuine
`products and documents;
`identification verification services, namely, providing
`authentication of personal identification information via secure storage and transmitting
`such information via the Internet; personalization services for documents, namely,
`providing authentication of personal
`identification
`information; providing user
`authentication services in e-commerce transactions” in International Class 45.
`
`3.
`
`Accordingly, Opposer has a constructive first use date of March 6, 2017 via the
`
`
`
`filing date of its ZOLOZ application.
`
`4.
`
`Opposer commenced use of ZOLOZ in connection with biometrics-based goods
`
`and services in October 2017. See www.zoloz.com.
`
`5.
`
`On July 12, 2017, Applicant, Anker Technology Co., Limited, filed, on an Intent-
`
`to-Use basis, Application Serial No. 87/524,754 for the mark ZOLO (& Design) for
`
`“Wireless headsets for mobile devices, wired earphones, dongles being computer hardware
`for preventing the unauthorized copyright or use of computer software; adapters, namely,
`wireless adapters for computers, amplifier and amp; apparatus for recording, transmission
`or reproduction of sound; audio speakers; wireless headsets for smartphones; earphones
`and headphones; wireless transmitters and receivers; wireless adapters for computers and
`
`

`

`Applicant : Anker Technology Co., Limited
`Serial No. :
`87/524,754
`Filed:
`:
`July 12, 2017
`Mark
`:
`ZOLO (& Design)
`Page
`:
`5
`
`
`Attorney’s Docket No.: 44726-0023PP1
`
`audio equipment; audio amplifiers; bass amplifiers; sound amplifiers” in International
`Class 9.
`
`Said application was published in the Official Gazette on October 24, 2017, with
`
`
`
`extensions of time to oppose granted to Opposer until April 22, 2018.
`
`6.
`
`7.
`
`The parties’ marks contain ZOLO.
`
`To the extent that certain of Applicant’s Class 9 goods, i.e., “apparatus for
`
`recording, transmission or reproduction of sound” and “wireless transmitters and receivers”
`
`which are broadly worded and indicate no restriction on use, are biometric-based products, they
`
`overlap with and/or are similar to the biometric-based products of Opposer such that there is a
`
`likelihood of confusion between the parties, and their respective marks and goods, with
`
`consequent injury to Opposer, the trade and the public, all in violation of Section 2(d) of the
`
`Federal Trademark Act, 15 U.S.C. § 1052 (d).
`
`WHEREFORE, Opposer requests that registration of Applicant’s designation ZOLO (&
`
`Design), Application Serial No. 87/524,754, be denied.
`
`Please charge Deposit Account 06-1050, Order No, 44726-0023PP1 for the filing fee for
`
`this Notice of Opposition, as well as for any other fees that may be due.
`
`
`
`
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`
`
`
`
`
`
`
`
`
`
`

`

`Applicant : Anker Technology Co., Limited
`Serial No. :
`87/524,754
`Filed:
`:
`July 12, 2017
`Mark
`:
`ZOLO (& Design)
`Page
`:
`6
`
`
`Date: April 23, 2018
`
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`Attorney’s Docket No.: 44726-0023PP1
`
`Respectfully submitted,
`
`EYEVERIFY INC.
`
`By its Attorneys,
`
`/Kristen McCallion/
`Kristen McCallion
`Ryan Thomas
`FISH & RICHARDSON P.C.
`Postal Address:
`P.O. Box 1022
`Minneapolis, MN 55440-1022
`Telephone: (212) 765-5070
`Facsimile: (212) 258-2291
`
`
`