Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA993994
`08/09/2019
`
`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
`
`ACT Inc.
`
`08/24/2019
`
`500 ACT DRIVE
`IOWA CITY, IA 52243
`UNITED STATES
`
`MICHELLE D. KAHN
`SHEPPARD MULLIN RICHTER & HAMPTON LLP
`FOUR EMBARCADERO CENTER, 17TH FLOOR
`SAN FRANCISCO, CA 94111
`UNITED STATES
`mkahn@sheppardmullin.com, rlozoya@sheppardmullin.com, sftmdock-
`et@sheppardmullin.com
`no phone number provided
`
`Applicant Information
`
`Application No
`
`87887384
`
`Publication date
`
`06/25/2019
`
`Opposition Filing
`Date
`
`Applicant
`
`08/09/2019
`
`Opposition Peri-
`od Ends
`
`08/24/2019
`
`ACT-Authentication Compliance Technologies, Inc
`Suite A
`32238 Paseo Adelanto
`San Juan Capistrano, CA 92675
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 042. First Use: 2016/07/01 First Use In Commerce: 2016/07/01
`All goods and services in the class are opposed, namely: Computer technology identification verifica-
`tion services, namely, providing authentication of IT hardware and software and accurately detecting
`and identifyingcounterfeit and modified products, namely, design and implementation of multi-step
`computer processes, computer technologies and software for the purpose 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
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`Dilution by tarnishment
`
`Trademark Act Sections 2 and 43(c)
`
`Trademark Act Sections 2 and 43(c)
`
`

`

`False suggestion of a connection with persons,
`living or dead, institutions, beliefs, or national
`symbols, or brings them into contempt, or disrep-
`ute
`
`Trademark Act Section 2(a)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`2888069
`
`Registration Date
`
`09/28/2004
`
`Application Date
`
`04/27/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`ACT
`
`NONE
`
`Class 009. First use: First Use: 1966/00/00 First Use In Commerce: 1966/00/00
`Pre-recorded compact discs, video and audio cassettes, and educational and
`administrative software featuring instruction, information, tests, proficiency and
`professional assessments, and administrative assistance, all for one or more of
`the following purposes, namely, educationand career planning, post secondary
`admissions, academic advising, course placement, educational research, test
`development, educational and occupational testing, test scoring and reporting,
`test administration, student aptitude and achievement testing, student evalu-
`ation, instructional assessment and training, curriculum development, language
`proficiency assessment, need analysis, certification and professional licensing,
`professionalassessment, and career guidance, all for use in the field of educa-
`tion from primary through postgraduate levels and instructional manuals there-
`fore sold as a unit
`Class 016. First use: First Use: 1959/09/08 First Use In Commerce: 1959/09/08
`Publications, namely, printed test booklets, educational books, booklets, news-
`letters, brochures, catalogues, manuals, guidebooks, technical manuals, statist-
`ical reports, and research reports, all inthe fields of education planning, career
`planning and preparation, workforce development, college admissions, and
`standardized testing
`Class 041. First use: First Use: 1959/09/08 First Use In Commerce: 1959/09/08
`Educational services, namely, providinga web site on a global computer net-
`workfeaturing information in the fields of education planning, career counseling
`and guidance, namely, career planning and preparation, workforce development
`and college admissions; instructional offerings, namely conducting workshops
`and seminars in the fields of educational planning, career counseling and guid-
`ance, namely career planning and preparation, workforce development and the
`uses of standardized tests for educational institutions, professional organiza-
`tions, government, business, and industry; preparing, administering, and scoring
`of standardizedtests for schools, colleges, professional organizations, govern-
`ment, business, and industry
`Class 042. First use: First Use: 1959/09/08 First Use In Commerce: 1959/09/08
`Conducting research to advance theory and practice in areas of educational
`testing, measurement, research, and program support
`
`U.S. Registration
`No.
`
`4517656
`
`Registration Date
`
`04/22/2014
`
`Word Mark
`
`ACT
`
`Application Date
`
`09/06/2013
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 1994/12/31 First Use In Commerce: 1994/12/31
`Preparation of methods and materials for identifying specific skills and specific
`content and level of knowledge required for probable success in specific fields of
`employment; evaluation of specificfields of employment for others to identify
`specific skills and specific content and level of knowledge required for probable
`success in such specific fields of employment, educational testing and consult-
`ing services related thereto in thefield of job placement and job-related skills;
`providing an on-line computer database in the fields of vocational testing to de-
`termine skills for employment, and workforce development programs; providing
`databases featuring job profiles and requirements; computerized database man-
`agement and compilation of information into computerized databases; providing
`information in the fields of vocational testing for employment, and workforce de-
`velopment programs; advisory and consultancy services relating to vocational
`testing for employment, and workforce development programs; providing a web-
`site featuring information in the field of vocational testing for employment and
`workforce development programs; developing, maintaining and utilizing a com-
`puter database designed to serve as a central repository of companies, jobs,
`and the functional skills and skill levels necessary foreach individual job in all
`types of business and industry sectors
`
`U.S. Registration
`No.
`
`5676749
`
`Registration Date
`
`02/12/2019
`
`Word Mark
`
`Design Mark
`
`ACTNEXT
`
`Application Date
`
`05/01/2017
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 016. First use: First Use: 2017/06/05 First Use In Commerce: 2017/06/05
`Publications and printed matter, namely, manuals, newsletters, brochures, book-
`lets, research reports and policy reportsrelating to research in the fields of edu-
`cation, educational research, learningand assessment, occupational profiling
`
`

`

`and workforce development
`Class 035. First use: First Use: 2017/06/05 First Use In Commerce: 2017/06/05
`Business research in the fields of learning and assessment methodologies for
`use in the field of career and workplace success; providing a website featuring
`business information in the fields of learning and assessment methodologies for
`use in the fields of career success and workforce development
`Class 041. First use: First Use: 2017/06/05 First Use In Commerce: 2017/06/05
`Providing online non-downloadable digital publications, namely, manuals, news-
`letters, brochures, booklets, research reports and policy reports in the fields ofin-
`tegrative research in the fields of computational psychometrics, artificial intelli-
`gence, innovative assessments, multimodal analytics, and learning experiences
`for use in the fields of education and career and workforce development
`Class 042. First use: First Use: 2017/06/05 First Use In Commerce: 2017/06/05
`Providing online non-downloadable software featuring technology that allows
`theuser to conduct and report findings in integrative research in the fields of
`computational psychometrics, artificial intelligence, innovative assessments,
`multimodal analytics, and learning experiences in the fields of education and ca-
`reerand workforce development; scientific research services, namely, integrative
`research in the fields of computational psychometrics, artificial intelligence, in-
`novative assessments, multimodal analytics, and learning experiences; provid-
`ing a website featuring scientific research findings and information in the fields of
`computational psychometrics, artificial intelligence, innovative assessments,
`multimodal analytics, and learning experiences for use in the field of education
`
`U.S. Registration
`No.
`
`5581754
`
`Registration Date
`
`10/09/2018
`
`Word Mark
`
`Design Mark
`
`ACT TESSERA
`
`Application Date
`
`06/22/2017
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the word "ACT" in blue followed by the word "Tessera" in
`red. The "A" in "ACT" consists of a stylized capital letter "A" in blue with a red
`line across it.
`
`Class 009. First use: First Use: 2018/07/09 First Use In Commerce: 2018/07/09
`Downloadable electronic publications inthe nature of manuals, catalogues,
`newsletters, brochures, booklets, score reports, guidebooks, statistical reports,
`and teaching playbooks and teaching materials in the fields of education, social
`and emotional learning factors, skills assessments and standardized testing
`Class 041. First use: First Use: 2018/07/03 First Use In Commerce: 2018/07/03
`Providing educational and educational skills assessment services; providing on-
`line educational publications, namely, newsletters, brochures, catalogues,
`manuals, guidebooks, statistical reports and teaching playbooks and teaching
`materials, all in the fields of education, socialand emotional learning factors,
`skills assessments and standardized testing; educational and educational skills
`testingservices featuring the use of standardized tests and surveys; providing
`online computer manuals for web-based administration of tests; providing online
`educational services, namely, providing summative and formative educational
`assessmentsin the fields of social and emotional learning factors; educational
`
`

`

`and educational skills testing services; preparing,administering, and scoring aca-
`demic standardized tests; educational services, namely, providing online reports
`containing scores and score interpretation for educational and educational skills-
`based tests
`Class 042. First use: First Use: 2018/06/26 First Use In Commerce: 2018/06/26
`Providing temporary use of online non-downloadable computer software,
`namely, testing and assessment software in the fields of education, social and
`emotional learning factors, skills assessments andstandardized testing; provid-
`ing a web site featuring technology that enables students, parents, educators
`and administrators to analyze and interpret student formative and summative as-
`sessment testing data reflecting social and emotional learning factors in the field
`of education at the middle school and high school levels
`
`U.S. Registration
`No.
`
`5581670
`
`Registration Date
`
`10/09/2018
`
`Application Date
`
`05/11/2017
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`ACT HOLISTIC FRAMEWORK
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2016/06/30 First Use In Commerce: 2016/06/30
`Downloadable electronic publications, namely, manuals, newsletters, brochures,
`booklets, research reports, policy reports, and training and teaching materials in
`the fields of education and workplacereadiness and success; Downloadable
`training and teaching materials, namely, software for organizing classroom in-
`struction in the fields of core and general academic skills, namely, language
`arts, mathematics and science, technology and information literacy, collaborat-
`ive problem solving, thinking and metacognition, studying and learning; behavi-
`oral skills,namely, interpersonal self-regulatory and task related skills necessary
`to educational and workplace settings, education and career path navigational
`skills
`Class 016. First use: First Use: 2016/06/30 First Use In Commerce: 2016/06/30
`Publications and printed matter, namely, manuals, newsletters, brochures, book-
`lets, research reports, policy reports, and training and teaching materials in the
`fields of education and workplace readiness and success; Printed training and
`teaching materials in the fields of coreand general academic skills, namely, lan-
`guage arts, mathematics and science, technology and information literacy, col-
`laborative problem solving, thinking and metacognition, studying and learning;
`behavioral skills, namely, interpersonal self-regulatory and task-related skills ne-
`cessary to educational and workplace settings, education and career path navig-
`ation
`Class 035. First use: First Use: 2016/06/30 First Use In Commerce: 2016/06/30
`Business advisory and consultancy services in the field of employment vocation-
`al testing to determine professional competency and employment skills; Busi-
`
`

`

`ness research in the field of employment vocational testing to determine profes-
`sional competency and employment skills; Providing a website featuring inform-
`ation in the fields of business management, namely, workplace readiness and
`success
`Class 041. First use: First Use: 2016/06/30 First Use In Commerce: 2016/06/30
`Advisory and consultancy services in the field of vocational guidance; Educa-
`tional research in the field of vocational guidance; Providing a website featuring
`educational information in the fields ofvocational guidance; Providing education-
`al information in the field of vocational guidance; Educational services, namely,
`providing on-line training courses inthe fields of core and general academicskills,
`namely, language arts, mathematics and science, technology and information lit-
`eracy, collaborative problem solving, thinking and metacognition, studying and
`learning; behavioral skills, namely, interpersonal self-regulatory and task-related
`skills necessary to educational and workplace settings, education and career
`path navigation; Educational services, namely, providing classroom instruction in
`core and general academic skills, namely, language arts, mathematics and sci-
`ence, technology and information literacy, collaborative problem solving, thinking
`and metacognition, studying and learning; behavioral skills, namely, interperson-
`al self-regulatory and task-related skills necessary to educational and workplace
`settings, education and careerpath navigation
`Class 042. First use: First Use: 2016/06/30 First Use In Commerce: 2016/06/30
`Providing online non-downloadable software that provides the technology for
`training in core and general academic skills, namely, language arts, mathemat-
`ics and science, technology and information literacy, collaborative problem solv-
`ing, thinking and metacognition, studying and learning; behavioral skills, namely,
`interpersonal self-regulatory and task-related skills necessary to educational and
`workplace settings, education and careerpath navigation; Providing on-line non-
`downloadable interactive software that provides the technology to format and
`creates resumes
`
`U.S. Registration
`No.
`
`2346807
`
`Registration Date
`
`05/02/2000
`
`Word Mark
`
`Design Mark
`
`ACT ASSESSMENT
`
`Application Date
`
`12/31/1998
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 016. First use: First Use: 1959/11/07 First Use In Commerce: 1959/11/07
`Printed booklets featuring college admissions tests and printed support materi-
`als in the form of reports and study aidsrelating thereto
`Class 042. First use: First Use: 1959/11/07 First Use In Commerce: 1959/11/07
`Preparing, administering, and scoring of college admissions tests, provided in
`both printed booklets and in a database for administration as a computer adapt-
`ive test
`
`U.S. Registration
`No.
`
`2829305
`
`Application Date
`
`09/10/2002
`
`

`

`Registration Date
`
`04/06/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`AIM ACT INFORMATION MANAGER
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2002/04/15 First Use In Commerce: 2002/04/15
`Database software that organizes the information in student records compiled
`through the college admissions testing process and that enables colleges to use
`such information for student recruitment and retention
`
`U.S. Registration
`No.
`
`2731932
`
`Registration Date
`
`07/01/2003
`
`Application Date
`
`09/10/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`ACT NATIONAL CURRICULUM SURVEY
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 016. First use: First Use: 2002/09/01 First Use In Commerce: 2002/09/01
`printed answer sheets bearing a survey administered every three years to high
`school teachers and college faculty to identify content being taught in high
`school courses and entry-level college courses nationwide
`
`U.S. Registration
`No.
`
`5215150
`
`Registration Date
`
`05/30/2017
`
`Word Mark
`
`Design Mark
`
`PREACT
`
`Application Date
`
`03/16/2016
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 016. First use: First Use: 2016/03/22 First Use In Commerce: 2016/03/22
`Publications, namely, printed standardized test booklets, answer sheets, educa-
`tional booklets, newsletters, brochures, catalogues, manuals, guidebooks, tech-
`
`

`

`nical manuals, summative reports, statistical reports, and research reports, all
`inthe fields of education, educational planning, college admissions, and stand-
`ardized testing
`Class 041. First use: First Use: 2016/03/22 First Use In Commerce: 2016/03/22
`Educational services, namely, providinga website featuring information in the
`fields of education, educational planning, and college admissions; instruction-
`alofferings, namely, conducting workshopsand seminars in the fields of educa-
`tion, educational planning, and the uses of standardized tests for educational in-
`stitutions, Providing educational assessment services, namely, preparing, ad-
`ministering, scoring, and interpretation of standardized tests; providing online
`computer manuals for web-based administration of tests; providing online edu-
`cational publications, namely, newsletters, brochures, catalogues, manuals,
`guidebooks, and statistical reports, all in the fieldsof education, college admis-
`sions, and standardized testing
`
`U.S. Registration
`No.
`
`5795328
`
`Registration Date
`
`07/02/2019
`
`Word Mark
`
`Design Mark
`
`ACT ACADEMY
`
`Application Date
`
`01/18/2018
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2018/03/22 First Use In Commerce: 2018/03/22
`Downloadable electronic publications inthe nature of manuals, catalogues,
`newsletters, brochures, booklets, score reports, guidebooks, statistical reports,
`teaching playbooks and teaching materials in the fields of test preparation and
`standardized testing; computer software for administering practice tests and
`downloading electronic publications in the nature of manuals, catalogues, news-
`letters, brochures, booklets, score reports, guidebooks, statistical reports, teach-
`ing playbooks and teaching materials for usein the fields of test preparation and
`standardized testing
`Class 016. First use: First Use: 2018/03/22 First Use In Commerce: 2018/03/22
`Publications and printed matter, namely, manuals, catalogues, newsletters, bro-
`chures, booklets, score reports, guidebooks, statistical reports, teaching play-
`books and teaching materials in the fieldsof test preparation and standardized
`testing
`Class 041. First use: First Use: 2018/03/22 First Use In Commerce: 2018/03/22
`Providing educational and test preparation services, namely, lectures,
`classes,exercises and test preparation in the field of a wide variety of topics and
`subjects such as math, science, humanities,and economics offered through on-
`line non-downloadable video, audio and instructor assistance; Providing a web
`site featuring a wide variety of educational topics and subjects on-line and in
`mobile wireless form; Providing a web site featuring a wide variety of education-
`al topicsand subjects that enables students, parents, educators and administrat-
`
`

`

`ors to practice and deepen understanding of content necessary to be successful
`in standardized testing
`Class 042. First use: First Use: 2018/03/22 First Use In Commerce: 2018/03/22
`Providing temporary use of online non-downloadable computer software,
`namely, test preparation software in the field ofstandardized testing; computer
`services, namely, creating an online community for users to participate in dis-
`cussions, participate in tutoring, and engage in social networking, all featuring
`educational topics and subjects useful in standardized testing
`
`U.S. Registration
`No.
`
`5795327
`
`Registration Date
`
`07/02/2019
`
`Word Mark
`
`Design Mark
`
`ACT ACADEMY
`
`Application Date
`
`01/18/2018
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a stylized capitalletter "A" in blue with red bar, followed by
`the capital letters "C" and "T" inblue followed by the word "ACADEMY" in red.
`
`Class 009. First use: First Use: 2018/03/22 First Use In Commerce: 2018/03/22
`Downloadable electronic publications inthe nature of manuals, catalogues,
`newsletters, brochures, booklets, score reports, guidebooks, statistical reports,
`teaching playbooks and teaching materials in the fields of test preparation and
`standardized testing; computer software for administering practice tests and
`downloading electronic publications in the nature of manuals, catalogues, news-
`letters, brochures, booklets, score reports, guidebooks, statistical reports, teach-
`ing playbooks and teaching materials for usein the fields of test preparation and
`standardized testing
`Class 016. First use: First Use: 2018/03/22 First Use In Commerce: 2018/03/22
`Publications and printed matter, namely, manuals, catalogues, newsletters, bro-
`chures, booklets, score reports, guidebooks, statistical reports, teaching play-
`books and teaching materials in the fieldsof test preparation and standardized
`testing
`Class 041. First use: First Use: 2018/03/22 First Use In Commerce: 2018/03/22
`Providing educational and test preparation services, namely, lectures,
`classes,exercises and test preparation in the field of a wide variety of topics and
`subjects such as math, science, humanities,and economics offered through on-
`line non-downloadable video, audio and instructor assistance; Providing a web
`site featuring a wide variety of educational topics and subjects on-line and in
`mobile wireless form; Providing a web site featuring a wide variety of education-
`al topicsand subjects that enables students, parents, educators and administrat-
`ors to practice and deepen understanding of content necessary to be successful
`in standardized testing
`Class 042. First use: First Use: 2018/03/22 First Use In Commerce: 2018/03/22
`Providing temporary use of online non-downloadable computer software,
`namely, test preparation software in the field ofstandardized testing; computer
`services, namely, creating an online community for users to participate in dis-
`cussions, participate in tutoring, and engage in social networking, all featuring
`educational topics and subjects useful in standardized testing
`
`U.S. Application
`
`88253798
`
`Application Date
`
`01/08/2019
`
`

`

`No.
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`ACT STACK
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 0 First Use In Commerce: 0
`preparation of methods and materials for identifying specific skills and specific
`content and level of knowledge required for probable success in specific fields of
`employment; evaluation of specificfields of employment for others to identify
`specific skills and specific content and level of knowledge required for probable
`success in such specific fields of employment, educational testing and consult-
`ing services related thereto in thefield of job placement and job-related skills;
`providing an on-line computer database in the fields of vocational testing to de-
`termine skills for employment, and workforce development programs; providing
`databases featuring job profiles and requirements; computerized database man-
`agement and compilation of information into computerized databases; providing
`information in the fields of vocational testing for employment, and workforce de-
`velopment programs; advisory and consultancy services relating to vocational
`testing for employment, and workforce development programs; providing a web-
`site featuring information in the field of vocational testing for employment and
`workforce development programs; preparation of methods and materials for
`identifying specific skills and specific content and level of knowledge required for
`probable success in specific fields of employment;evaluation of specific fields of
`employment for others to identify specific skills and specific content and level of
`knowledge required for probable success insuch specific fields of employment,
`educational testing and consulting servicesrelated thereto in the field of job
`placement and job-related skills
`Class 042. First use: First Use: 0 First Use In Commerce: 0
`Platform as a service (PAAS) featuring computer software platforms for use in
`database management which enables employers to deliver workforce assess-
`ments to current and prospective employees
`
`U.S. Application
`No.
`
`88253782
`
`Application Date
`
`01/08/2019
`
`Registration Date
`
`NONE
`
`Word Mark
`
`ACT STACK
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`Attachments
`
`The mark consists of a stylized capitalletter "A" in blue with red bar, followed by
`the capital letters "C" and "T" inblue followed by the word "Stack" in red.
`
`Class 035. First use: First Use: 0 First Use In Commerce: 0
`preparation of methods and materials for identifying specific skills and specific
`content and level of knowledge required for probable success in specific fields of
`employment; evaluation of specificfields of employment for others to identify
`specific skills and specific content and level of knowledge required for probable
`success in such specific fields of employment, educational testing and consult-
`ing services related thereto in thefield of job placement and job-related skills;
`providing an on-line computer database in the fields of vocational testing to de-
`termine skills for employment, and workforce development programs; providing
`databases featuring job profiles and requirements; computerized database man-
`agement and compilation of information into computerized databases; providing
`information in the fields of vocational testing for employment, and workforce de-
`velopment programs; advisory and consultancy services relating to vocational
`testing for employment, and workforce development programs; providing a web-
`site featuring information in the field of vocational testing for employment and
`workforce development programs; preparation of methods and materials for
`identifying specific skills and specific content and level of knowledge required for
`probable success in specific fields of employment;evaluation of specific fields of
`employment for others to identify specific skills and specific content and level of
`knowledge required for probable success insuch specific fields of employment,
`educational testing and consulting servicesrelated thereto in the field of job
`placement and job-related skills
`Class 042. First use: First Use: 0 First Use In Commerce: 0
`Platform as a service (PAAS) featuring computer software platforms for use in
`database management which enables employers to deliver workforce assess-
`ments to current and prospective employees
`
`86058191#TMSN.png( bytes )
`87979562#TMSN.png( bytes )
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`ACT_ ACT-AUTHENTICATIONCOMPLIANCETECHNOLOGIES_ 52PK-301351
`Notice of Opposition.pdf(153917 bytes )
`Exhibit A_ACT.pdf(196379 bytes )
`Exhibit B_Second ACT.pdf(191352 bytes )
`Exhibit C_ACTNEXT.PDF(49454 bytes )
`Exhibit D_ACT Tessera.pdf(135910 bytes )
`Exhibit E_ACT Holistic Framework.pdf(131941 bytes )
`Exhibit F_ACT Assessment.pdf(124781 bytes )
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`

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`Exhibit G_AIM ACT.pdf(118252 bytes )
`Exhibit H_ ACT National Curriculum Survey.pdf(124296 bytes )
`Exhibit I_ PREACT.pdf(130252 bytes )
`Exhibit J_ACT Academy.pdf(152690 bytes )
`Exhibit K_Second ACT Academy.pdf(156365 bytes )
`Exhibit L_ACT STACK.pdf(150116 bytes )
`Exhibit M_Second ACT STACK.pdf(154480 bytes )
`Exhibit N_ ACT.org.pdf(104635 bytes )
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`Signature
`
`/MDK/
`
`Name
`
`Date
`
`MICHELLE D. KAHN
`
`08/09/2019
`
`

`

`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`87/887,384
`
`
`Opposition No. _______________
`
`Serial No.:
`
`Filed:
`
`Published:
`
`Trademark: ACT-
`AUTHENTICATION COMPLIANCE
`TECHNOLOGIES
`
`April 21, 2018
`
`June 25, 2019
`
`))))))))
`
`))
`
`
`
`
`
`
`
`ACT, INC.,
`
`
`
`
`
`ACT-AUTHENTICATION
`COMPLIANCE TECHNOLOGIES,
`INC,
`
`
`
`Opposer,
`
`Applicant.
`
`
`
`v.
`
`
`
`
`
`
`
`
`TO: Commissioner For Trademarks
`
`ATTN: Trademark Trial and Appeal Board
`
`United States Patent and Trademark Office
`
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`
`NOTICE OF OPPOSITION
`
`
`
`Opposer, ACT, Inc. (“Opposer” or “ACT”) believes that it will be damaged by the
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`registration of the designation ACT-AUTHENTICATION COMPLIANCE TECHNOLOGIES
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`that is the subject of U.S. Application Serial No. 87/887,384 (“Application”), and hereby
`
`opposes its registration under Lanham Act Section 13, 15 U.S.C. § 1063, and Trademark Rule
`
`2.101, 37 C.F.R. § 2.101 on the following grounds:
`
`FACTUAL BACKGROUND REGARDING OPPOSER AND ITS MARKS
`
`1.
`
`Opposer ACT is an Iowa corporation, having its principal place of business at 500
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`ACT Drive, P.O. Box 168, Iowa City, Iowa 52243-0168.
`
`2.
`
`Opposer owns the registered marks ACT (standard character mark), ACT (typed
`
`drawing), ACTNEXT, ACT TESSERA, ACT HOLISTIC FRAMEWORK, ACT
`
`ASSESSMENT, AIM ACT INFORMATION MANAGER, ACT NATIONAL CURRICULUM
`
`SMRH:4838-6863-9645.2
`
`
`
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`-1-
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`

`

`
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`SURVEY, PREACT, ACT ACADEMY (standard character mark), ACT ACADEMY (stylized)
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`and related Marks for use in connection with educational, testing, career, and workforce
`
`development services, and associated services (collectively, the “ACT Family of Marks”).
`
`Additionally, Opposer has pending applications for the marks ACT STACK (standard character
`
`mark) and ACT STACK (stylized).
`
`3.
`
`Opposer’s Family of Marks are used across a broad range of services and services
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`employed to provide innovative educational, testing, career, and workforce training, assessment
`
`and counseling programs and materials, as well as research related thereto. Opposer also uses
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`the ACT Family of Marks in the promotion and marketing of its educational, testing, career, and
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`workforce development systems.
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`4.
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`Opposer has continuously used the marks within its ACT Family of Marks since
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`at least as early as 1959, long before the filing date of the Application.
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`5.
`
`Opposer is the owner of record of the incontestable registered trademark/service
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`mark ACT (typed drawing), U.S. Registration No. 2,888,069, U.S. Application Serial No.
`
`75/692,325, filed on April 27, 1999, for (1) “pre-recorded compact discs, video and audio
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`cassettes, and educational and administrative software featuring instruction, information, tests,
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`proficiency and professional assessments, and administrative assistance, all for one or more of
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`the following purposes, namely, education and career planning, post-secondary admissions,
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`academic advising, course placement, educational research, test development, educational and
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`occupational testing, test scoring and reporting, test administration, student aptitude and
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`achievement testing, student evaluation, instructional assessment and training, curriculum
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`development, language proficiency assessment, need analysis, certification and professional
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`licensing, professional assessment, and career guidance, all for use in the field of education from
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`primary through postgraduate levels and instructional manuals therefore sold as a unit” in
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`SMRH:4838-6863-9645.2
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`
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`-2-
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`

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`International Class 9; (2) “publications, namely, printed test booklets, educational books,
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`booklets, newsletters, brochures, catalogues, manuals, guidebooks, technical manuals, statistical
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`reports, and research reports, all