Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1087775
`10/09/2020
`
`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
`
`NetScout Systems, Inc.
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`10/14/2020
`
`310 LITTLETON ROAD
`WESTFORD, MA 01866
`UNITED STATES
`
`AMANDA K. GREENSPON
`MUNCK WILSON MANDALA, LLP
`P.O. DRAWER 800889
`DOCKET CLERK
`DALLAS, TX 75380
`UNITED STATES
`Primary Email: ttab@munckwilson.com
`972-628-3600
`
`Docket Number
`
`NTCT05-00306
`
`Applicant Information
`
`Application No.
`
`88532585
`
`Publication date
`
`06/16/2020
`
`Opposition Filing
`Date
`
`Applicant
`
`10/09/2020
`
`Opposition Peri-
`od Ends
`
`10/14/2020
`
`Xiong Bin
`2-3,TIANSHENG ROAD NO.2,BEIBEI DISTRICT
`CHONGQING, 400700
`CHINA
`
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 2018/07/17 First Use In Commerce: 2018/09/09
`All goods and services in the class are opposed, namely: Computer hardware; Computer memory
`devices; Computer peripheral apparatus; Digital signage; Earphones; Eyeglasses; Headphones; In-
`struments for measuring length; Motion picture cameras; Protective covers for smartphones; Semi-
`conductors; Surveying instruments; Time recording apparatus; Weighing apparatus and instruments;
`Wireless chargers
`
`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)
`
`

`

`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`2636255
`
`Registration Date
`
`10/15/2002
`
`Application Date
`
`02/29/2000
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NGENIUS
`
`NONE
`
`Class 009. First use: First Use: 2000/08/00 First Use In Commerce: 2000/08/00
`COMPUTER HARDWARE AND SOFTWARE FOR MANAGING COMPUTER
`NETWORKS, NAMELY HARDWARE AND SOFTWARE TO MONITOR, ANA-
`LYZE, IDENTIFY, REPORT, TROUBLESHOOT, AND FORECAST THE PER-
`FORMANCE AND EFFICIENCY OF APPLICATION AND CONTENT DELIVERY
`OVER NETWORK INFRASTRUCTURES
`
`U.S. Registration
`No.
`
`4633137
`
`Registration Date
`
`11/04/2014
`
`Application Date
`
`03/04/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NGENIUSONE
`
`NONE
`
`Class 009. First use: First Use: 2013/07/18 First Use In Commerce: 2013/07/18
`Computer software and hardware devices used to manage, monitor, analyze
`and report the performance of computer applications, information technology
`service delivery to customers, network-based packetflows, information systems
`infrastructures, computer network infrastructures and equipment, and telecom-
`munications network infrastructures and equipment; computer software and
`hardware devices used to provide security management for computer applica-
`tions, information technology service delivery to customers, information systems
`infrastructures, computer network infrastructures and equipment and telecom-
`munications network infrastructures and equipment; computer software and
`hardware devices used for automated analytics and troubleshooting for applica-
`tionand network performance management and management of information
`technology service delivery to customers
`
`Attachments
`
`NTCT05-00306 Notice of Opposition.pdf(631409 bytes )
`
`Signature
`
`/AKG-aeh/
`
`Name
`
`Date
`
`AMANDA K. GREENSPON
`
`10/09/2020
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`NetScout Systems, Inc.
`
`Opposer,
`
`Xiong Bin (Individual)
`
`Applicant.
`
`:
`:
`:
`:
`:
`:
`:
`:
`
`Opposition No.
`[not yet assigned]
`
`RE: U.S. Trademark Application Serial No. 88/532,585 (GNEINESS)
`Filed: July 24, 2019
`Published: June 16, 2020
`Extension of time to file opposition until October 14, 2020
`
`NOTICE OF OPPOSITION
`
`Opposer, NetScout Systems, Inc., a Delaware Corporation with its principal place of
`
`business at 310 Littleton Road, Westford, Massachusetts, 01866 (hereafter “NetScout” or
`
`“Opposer”) believes it is or will be damaged by GNEINESS, Application Serial No. 88/532,585 in
`
`International Class 009 ((hereinafter the “GNEINESS Mark” or Applicant’s Mark) and hereby
`
`opposes registration thereof pursuant to Section 13 of the Lanham Act (15 U.S.C. §1063), alleging
`
`as grounds for opposing the registration of Applicant’s Mark that:
`
`1.
`
`Opposer
`
`is
`
`the current owner of
`
`the registered marks NGENIUS and
`
`NGENIUSONE used on or in connection with computer hardware and software for managing
`
`computer networks (“Opposer’s Registered Marks”).
`
`2.
`
`Opposer, itself or by its predecessors, has used Opposer’s NGENIUS mark since at
`
`least as early as 2000 in interstate commerce in the United States and has established common law
`
`rights from that time in Opposer’s NGENIUS Mark.
`
`3.
`
`Opposer’s use of the NGENIUS Mark has been continuous since 2000.
`
`1
`
`

`

`4.
`
`Opposer is the owner of the following U.S. Trademark registrations:
`
`Trademark
`
`Reg. No.
`
`Full Goods/Services
`
`NGENIUS
`
`2,636,255
`
`NGENIUSONE
`
`4,633,137
`
`(Int’l Class 009) Computer hardware and software for
`managing computer networks, namely hardware and software
`to monitor, analyze,
`identify,
`report,
`troubleshoot, and
`forecast
`the performance and efficiency of application and
`content delivery
`over network infrastructures
`(Int’l Class 009) Computer software and hardware devices used
`to manage, monitor, analyze and report the performance of
`computer applications, information technology service delivery
`to customers, network-based packet flows, information systems
`infrastructures,
`computer
`network
`infrastructures
`and
`equipment, and telecommunications network infrastructures and
`equipment; computer software and hardware devices used to
`provide security management for computer applications,
`information
`technology
`service delivery
`to customers,
`information
`systems
`infrastructures,
`computer network
`infrastructures and equipment and telecommunications network
`infrastructures and equipment; computer software and hardware
`devices used for automated analytics and troubleshooting for
`application and network performance management and
`management of information technology service delivery to
`customers
`
`(“Opposer’s Registered Marks”).
`
`Copies of the Opposer’s Registered Marks from the USPTO TSDR Database are attached as
`
`Exhibit A and made of record in this proceeding pursuant to Trademark Rule 2.122(d).
`
`5.
`
`Opposer’s U.S. Registration No. 2,636,255 for Opposer’s NGENIUS mark was
`
`issued on October 15, 2002.
`
`6.
`
`Opposer’s U.S. Registration No. 2,636,255 for Opposer’s NGENIUS mark has
`
`been renewed and is currently a live valid trademark registration at the U.S. Patent and Trademark
`
`Office.
`
`7.
`
`The records of the U.S. Patent and Trademark Office (“USPTO”) indicate a
`
`Declaration of Incontestability of a Mark under Section 15 (15 U.S.C. §1065) was acknowledged
`
`2
`
`

`

`for Opposer’s U.S. Registration No. 2,636,255 on Oct 24, 2008.
`
`8.
`
`Opposer’s U.S. Registration No. 4,633,137 for Opposer’s NGENIUSONE mark
`
`issued on November 4, 2014.
`
`9.
`
`The records of the U.S. Patent and Trademark Office (“USPTO”) indicate a
`
`Declaration of Incontestability of a Mark under Section 15 (15 U.S.C. §1065) was filed for
`
`Opposer’s U.S. Registration No. 4,633,137 on September 10, 2020.
`
`10.
`
`Opposer’s Marks share the predominant term “GENIUS” making that term an
`
`indicator of source for Opposer.
`
`11.
`
`Consumers have come to recognize Opposer of the source of goods and services
`
`provided under “GENIUS” formative marks.
`
`12.
`
`Opposer’s Registered Marks are arbitrary marks, and have achieved a high degree
`
`of notoriety, fame and reputation as identifiers of Opposer’s computer hardware and software
`
`goods and services.
`
`13.
`
`Opposer’s GENIUS formative marks are and have become valuable assets of
`
`Opposer, identifying its computer hardware and software goods and services related or
`
`complementary thereto, and distinguishing Opposer’s products and services from the products and
`
`services of others.
`
`14. Opposer’s GENIUS formative marks as described herein have been extensively
`
`advertised in the United States, and have appeared on or in relation to products, product packaging,
`
`point-of-sale displays and other promotional materials for products sold, offered and advertised,
`
`and/or have been used in connection with various products and services, throughout the United
`
`States.
`
`15.
`
`The records of the USPTO indicate that Applicant is Xiong Bin, is an individual
`
`
`
`3
`
`

`

`having an address of 2-3, Tiansheng Road No.2, Beibei District Chongqing CHINA 400700
`
`(“Applicant”).
`
`16.
`
`The records of the USPTO indicate that Applicant is the owner of U.S. Serial No.
`
`88/532,585 (“Applicant’s Application”) on the following goods:
`
`“computer hardware; computer memory devices; computer peripheral apparatus;
`
`digital signage; earphones; eyeglasses; headphones; instruments for measuring
`
`length; motion picture
`
`cameras; protective
`
`covers
`
`for
`
`smartphones;
`
`semiconductors; surveying instruments; time recording apparatus; weighing
`
`apparatus and instruments; wireless chargers.”
`
`in Int’l Class 009 (“Applicant’s Goods”).
`
`17.
`
`The records of the USPTO indicate that Applicant’s Application was filed on July
`
`24, 2019.
`
`18.
`
`The records of the USPTO indicate that, on July 24, 2019, the time of filing,
`
`Applicant alleged it was entitled to registration based on use in interstate commerce of the
`
`Applicant’s Mark (15 U.S.C. §1051(a)).
`
`19.
`
`Applicant alleges first use of the Applicant’s Mark for the Class 009 Goods was on
`
`July 17, 2018.
`
`20.
`
`Applicant alleges first use of the Applicant’s Mark in commerce of September 09,
`
`2018.
`
`21.
`
`Opposer’s Registered Marks have been used in U.S. commerce on and in connection
`
`with computer hardware; computer memory devices; computer peripheral apparatus; digital
`
`signage thereto since long prior to the July 24, 2019 filing date of Applicant’s GNEINESS Mark,
`
`opposed herein.
`
`
`
`4
`
`

`

`22.
`
`Opposer’s rights to Opposer’s Registered Marks and its common law rights to
`
`Opposer’s Registered Marks are senior in time to any of the use dates provided by Applicant in
`
`Applicant’s Application.
`
`Claim 1: Likelihood of Confusion under Trademark Act § 2(d)
`
`23.
`
`Opposer repeats and realleges each and every allegation contained in paragraphs 1-
`
`22, inclusive, as if fully recited in this paragraph.
`
`24.
`
`Applicant’s GNEINESS Mark is a close approximation of the Opposer’s Registered
`
`Marks.
`
`25.
`
`Applicant’s Mark is substantially similar in appearance to Opposer’s Registered
`
`Marks.
`
`26.
`
`Applicant’s Mark is substantially similar in sound to Opposer’s Registered Marks.
`
`27.
`
`Applicant’s Mark is substantially similar in commercial impression to Opposer’s
`
`Registered Marks.
`
`28.
`
`Applicant’s Application identifies “computer hardware; computer memory
`
`devices; computer peripheral apparatus; digital signage;” in Class 009.
`
`29.
`
`The goods identified in Applicant’s Application are identical to the goods identified
`
`in Opposer’s Registrations.
`
`30.
`
`The goods identified in Applicant’s Application are substantially similar to
`
`the computer hardware and software goods and services identified in Opposer’s Registrations.
`
`31.
`
`The goods identified in Applicant’s Application are or will be advertised and
`
`promoted to and directed at the same trade channels, the same purchasers, and are or will be used
`
`in the same environment as Opposer’s products and services described herein, sold and/or offered
`
`under Opposer’s Registered Marks.
`
`5
`
`

`

`32.
`
`Opposer’s Marks identify, inter alia, “[c]omputer hardware and computer software
`
`for managing computer networks...” in Class 009 will be perceived by customers as closely related
`
`to the Class 009 goods of Applicant’s Application.
`
`33.
`
`Simultaneous use of Applicant’s GNEINESS Mark on the goods set forth in Appln.
`
`No. 88/532,585, and Opposer’s Registered Marks on its goods and services as set forth above is
`
`likely to cause confusion, mistake or deception among purchasers, users and the public, thereby
`
`damaging Opposer.
`
`34.
`
`Use by Applicant of its GNEINESS Mark on the goods set forth in Appln. No.
`
`88/532,585 is likely to lead to the mistaken belief that Applicant’s products are sponsored by,
`
`affiliated with, approved by or otherwise emanate from Opposer, thereby damaging Opposer.
`
`35.
`
`Applicant’s Mark so resembles Opposer’s Marks as to be likely to cause confusion,
`
`or to cause mistake, or to deceive as to the source of the identified goods and services within the
`
`meaning of Section 2(d) of the Lanham Act. The marks are substantially similar and, moreover,
`
`the goods provided by the parties in connection with their respective marks are likely to be offered
`
`in the same channels of trade and to the same customers.
`
`36.
`
`The use and registration of Applicant’s Mark will damage Opposer by causing a
`
`likelihood of confusion as Applicant’s Mark would be used in connection with goods that are
`
`closely related to those offered in interstate commerce by Opposer under Opposer’s Registered
`
`Marks.
`
`37.
`
`Based on ¶¶ 23-36 above, Applicant’s GNEINESS Mark is likely to cause
`
`confusion with Opposer’s Registered Marks, in violation of Lanham Act § 2(d), and is, therefore,
`
`not entitled to registration.
`
`6
`
`

`

`Claim 2: Dilution by Blurring and Tarnishment under Trademark Act § 43(c)
`
`38.
`
`Opposer repeats and realleges each and every allegation contained in paragraphs 1-
`
`37, inclusive, as if fully recited in this paragraph.
`
`39.
`
`As set forth above, Applicant’s GNEINESS Mark is substantially similar to and
`
`intended to reference Opposer’s Registered Marks.
`
`40.
`
`As set forth above, due to extensive marketing, advertising, and sales in the United
`
`States, Opposer’s Registered Marks are famous throughout the entire United States, and became
`
`famous long prior to the July 24, 2019 filing date of Applicant’s GNEINESS Mark.
`
`41.
`
`Opposer’s Registered Marks are so distinctive in the United States that the public
`
`would associate them with Opposer even devoid of a trademark context or apart from the extensive
`
`goods and services offered by Opposer under them.
`
`42.
`
`The use of Applicant’s GNEINESS Mark is likely to cause dilution by blurring as
`
`consumers, upon seeing Applicant’s use of its GNEINESS Mark on the goods of Appln.
`
`No.88/532,585, would be immediately reminded of Opposer’s Registered Marks, and associate
`
`Applicant’s use with Opposer.
`
`43.
`
`The use of Applicant’s GNEINESS Mark is likely to cause dilution by tarnishment as
`
`the association arising from the substantially similar nature of Applicant’s GNEINESS Mark and
`
`Opposer’s Registered Marks will harm the reputation of Opposer’s Registered Marks.
`
`44.
`
`Therefore, based on ¶¶ 38-43 above, Applicant’s GNEINESS Mark is likely to
`
`cause dilution by blurring and dilution by tarnishment of Opposer’s Registered Marks in violation of
`
`Lanham Act § 43(c), and is not entitled to registration.
`
`WHEREFORE, Opposer prays that the Trademark Trial and Appeal Board deny
`
`registration to U.S. Application Serial No. 88/532,585 for the GNEINESS mark and otherwise
`
`7
`
`

`

`sustain this opposition.
`
`Payment in the amount of the required filing fee is submitted with this Notice of
`
`Respectfully submitted,
`
`
`
`
`
`/s/Amanda K. Greenspon
`Amanda K. Greenspon
`Vindra Richter
`MUNCK WILSON MANDALA, LLP
`600 Banner Place Tower
`12770 Coit Road
`Dallas, Texas 75251
`Telephone: 972.628.3600
`Telecopier: 972.628.3616
`Email: ttab@munckwilson.com
`
`ATTORNEYS FOR OPPOSER
`NetScout Systems, Inc.
`
`Opposition.
`
`Dated: October 9, 2020
`
`
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`8
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`

`

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`
`EXHIBIT A
`EXHIBITA
`
`

`

`Generated on: This page was generated by TSDR on 2020-10-09 15:35:59 EDT
`
`Mark: NGENIUS
`
`US Serial Number: 75931551
`
`US Registration
`Number:
`
`2636255
`
`Register: Principal
`
`Mark Type: Trademark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Feb. 29, 2000
`
`Registration Date: Oct. 15, 2002
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status: The registration has been renewed.
`
`Status Date: Oct. 15, 2012
`
`Publication Date: Oct. 09, 2001
`
` 
`
`Notice of
`Allowance Date:
`
`Jan. 01, 2002
`
`Mark Information
`
`Mark Literal
`Elements:
`
`NGENIUS
`
`Standard Character
`Claim:
`
`No
`
`Mark Drawing
`Type:
`
`1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
`
`Goods and Services
`
`Note:
`The following symbols indicate that the registrant/owner has amended the goods/services:
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: COMPUTER HARDWARE AND SOFTWARE FOR MANAGING COMPUTER NETWORKS, NAMELY HARDWARE AND SOFTWARE
`TO MONITOR, ANALYZE, IDENTIFY, REPORT, TROUBLESHOOT, AND FORECAST THE PERFORMANCE AND EFFICIENCY OF
`APPLICATION AND CONTENT DELIVERY OVER NETWORK INFRASTRUCTURES
`
`International
`Class(es):
`
`009 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: Aug. 2000
`
`Filed Use: No
`
`Filed ITU: Yes
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Filed No Basis: No
`
`U.S Class(es): 021, 023, 026, 036, 038
`
`Use in Commerce: Aug. 2000
`
`Basis Information (Case Level)
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`

`

`Owner Name: Netscout Systems, Inc.
`
`Owner Address: 310 Littleton Road
`Westford, MASSACHUSETTS UNITED STATES 01886
`
`Legal Entity Type: CORPORATION
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Attorney/Correspondence Information
`
`Attorney Name: Amanda K. Greenspon
`
`Docket Number: TEKT05-00010
`
`Attorney Primary
`Email Address:
`
`trademarks@munckwilson.com
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Attorney of Record
`
`Correspondent
`Name/Address:
`
`Amanda K. Greenspon
`Munck Wilson Mandala LLP
`P.O. Drawer 800889
`Docket Clerk
`Dallas, TEXAS UNITED STATES 75380
`
`Phone: 972-628-3600
`
`Fax: 972-628-3616
`
`Correspondent e-
`mail:
`
`trademarks@munckwilson.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`Jul. 12, 2016
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`
`Jul. 12, 2016
`
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`
`Jul. 22, 2015
`
`ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY
`
`Jul. 15, 2015
`
`ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY
`
`Oct. 15, 2012
`
`NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
`
`Oct. 15, 2012
`
`REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS)
`
`Oct. 15, 2012
`
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`
`Oct. 05, 2012
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`
`Oct. 12, 2012
`
`TEAS SECTION 8 & 9 RECEIVED
`
`Nov. 30, 2011
`
`ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY
`
`Oct. 24, 2008
`
`REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
`
`Oct. 08, 2008
`
`TEAS SECTION 8 & 15 RECEIVED
`
`Feb. 07, 2008
`
`CASE FILE IN TICRS
`
`Oct. 15, 2002
`
`REGISTERED-PRINCIPAL REGISTER
`
`Jul. 29, 2002
`
`ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED
`
`Jul. 22, 2002
`
`ASSIGNED TO EXAMINER
`
`Jul. 19, 2002
`
`STATEMENT OF USE PROCESSING COMPLETE
`
`Jul. 01, 2002
`
`USE AMENDMENT FILED
`
`Jul. 01, 2002
`
`PAPER RECEIVED
`
`Jan. 01, 2002
`
`NOA MAILED - SOU REQUIRED FROM APPLICANT
`
`Oct. 09, 2001
`
`PUBLISHED FOR OPPOSITION
`
`Sep. 19, 2001
`
`NOTICE OF PUBLICATION
`
`Jun. 04, 2001
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`Feb. 22, 2001
`
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`
`Aug. 22, 2000
`
`NON-FINAL ACTION MAILED
`
`Aug. 09, 2000
`
`ASSIGNED TO EXAMINER
`
`TM Staff and Location Information
`
`TM Staff Information - None
`
`File Location
`
`Current Location: GENERIC WEB UPDATE
`
`Date in Location: Oct. 15, 2012
`
`Proceeding
`Number
`
`59136
`
`59136
`
`59136
`
`75589
`
`75589
`
`

`

`Assignment Abstract Of Title Information
`
`Summary
`
`Total Assignments: 8
`
`Conveyance: SECURITY INTEREST
`
`Reel/Frame: 3652/0310
`
`Date Recorded: Nov. 01, 2007
`
`Supporting
`Documents:
`
`assignment-tm-3652-0310.pdf
`
`Assignment 1 of 8
`
`Registrant: Netscout Systems, Inc.
`
` 
`
`Pages: 9
`
`Assignor
`
`Name: NETSCOUT SYSTEMS, INC.
`
`Execution Date: Nov. 01, 2007
`
`Legal Entity Type: CORPORATION
`
`Name: WELLS FARGO BANK, NATIONAL ASSOCIATION
`
`Legal Entity Type: NATIONAL ASSOCIATION
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Assignee
`
`State or Country
`Where Organized:
`
`UNITED STATES
`
`Address: 625 MARQUETTE AVENUE SOUTH
`MAC N9311-110
`MINNEAPOLIS, MINNESOTA 55479
`
`Correspondent
`Name:
`
`MARCELA ROBLEDO
`
`Correspondent
`Address:
`
`2550 HANOVER STREET
`PALO ALTO, CA 94304
`
`Conveyance: SECURITY INTEREST
`
`Reel/Frame: 3720/0410
`
`Date Recorded: Feb. 15, 2008
`
`Supporting
`Documents:
`
`assignment-tm-3720-0410.pdf
`
`Correspondent
`
`Domestic Representative - Not Found
`
`Assignment 2 of 8
`
`Pages: 16
`
`Name: NETSCOUT SYSTEMS, INC.
`
`Execution Date: Dec. 21, 2007
`
`Assignor
`
`Legal Entity Type: CORPORATION
`
`Name: KEYBANK NATIONAL ASSOCIATION
`
`Legal Entity Type: NATIONAL BANKING ASSOCIATION
`
`Address: 127 PUBLIC SQUARE
`ATTN: COMMUNITY BANK
`CLEVELAND, OHIO 44114
`
`Correspondent
`Name:
`
`Correspondent
`Address:
`
`THOMPSON HINE LLP
`
`127 PUBLIC SQUARE
`NATHAN L. WIEDEMANN, ESQ.
`CLEVELAND, OH 44114
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Assignee
`
`State or Country
`Where Organized:
`
`UNITED STATES
`
`Correspondent
`
`Conveyance:
`
`INTELLECTUAL PROPERTY SECURITY AGREEMENT
`
`Domestic Representative - Not Found
`
`Assignment 3 of 8
`
`

`

`Reel/Frame: 4666/0416
`
`Date Recorded: Nov. 28, 2011
`
`Supporting
`Documents:
`
`assignment-tm-4666-0416.pdf
`
`Pages: 18
`
`Name: NETSCOUT SYSTEMS, INC.
`
`Execution Date: Nov. 22, 2011
`
`Assignor
`
`Legal Entity Type: CORPORATION
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Assignee
`
`Name: KEYBANK NATIONAL ASSOCIATION AS ADMINISTRATIVE AGENT
`
`Legal Entity Type: NATIONAL BANKING ASSOCIATION
`
`State or Country
`Where Organized:
`
`OHIO
`
`Address: 127 PUBLIC SQUARE
`ATTN: INSTITUTIONAL BANKING
`CLEVELAND, OHIO 44114
`
`Correspondent
`Name:
`
`Correspondent
`Address:
`
`THOMAS R. BUTCHKO, ESQ.
`
`127 PUBLIC SQUARE
`3900 KEY CENTER
`CLEVELAND, OH 44114
`
`Conveyance: SECURITY INTEREST
`
`Reel/Frame: 5569/0836
`
`Date Recorded: Jul. 06, 2015
`
`Supporting
`Documents:
`
`assignment-tm-5569-0836.pdf
`
`Name: WELLS FARGO BANK, NATIONAL
`ASSOCIATION
`
`Legal Entity Type: NATIONAL ASSOCIATION
`
`Name: NETSCOUT SYSTEMS INC
`
`Legal Entity Type: CORPORATION
`
`Correspondent
`
`Domestic Representative - Not Found
`
`Assignment 4 of 8
`
`Pages: 3
`
`Assignor
`
`Execution Date: Jul. 01, 2015
`
`State or Country
`Where Organized:
`
`UNITED STATES
`
`Assignee
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Address: 310 LITTLETON ROAD
`WESTFORD, MASSACHUSETTS 01886-4105
`
`Correspondent
`
`Correspondent
`Name:
`
`Correspondent
`Address:
`
`DEBBIE ESCAMILLA
`
`MAC # C3700-043
`1700 LINCOLN STREET, 4TH FLOOR
`DENVER, CO 80203
`
`Domestic Representative - Not Found
`
`Assignment 5 of 8
`
`Pages: 7
`
`Conveyance: SECURITY INTEREST
`
`Reel/Frame: 5576/0528
`
`Date Recorded: Jul. 14, 2015
`
`Supporting
`Documents:
`
`assignment-tm-5576-0528.pdf
`
`Name: NETSCOUT SYSTEMS, INC.
`
`Execution Date: Jul. 14, 2015
`
`Legal Entity Type: CORPORATION
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Assignor
`
`

`

`Name: SIMENA, LLC
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`Name: JPMORGAN CHASE BANK, N.A.
`
`Legal Entity Type: NATIONAL ASSOCIATION
`
`Address: 270 PARK AVE, 43RD
`NEW YORK, NEW YORK 10017
`
`Execution Date: Jul. 14, 2015
`
`State or Country
`Where Organized:
`
`VIRGINIA
`
`Assignee
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Correspondent
`Name:
`
`Correspondent
`Address:
`
`SKADDEN, ARPS, SLATE, MEAGHER & FLOM LLP
`
`Correspondent
`
`FOUR TIMES SQUARE
`REBECCA RODAL
`NEW YORK, NY 10036
`
`Domestic Representative - Not Found
`
`Assignment 6 of 8
`
`Pages: 5
`
`Conveyance: RELEASE OF SECURITY INTEREST
`
`Reel/Frame: 5576/0547
`
`Date Recorded: Jul. 14, 2015
`
`Supporting
`Documents:
`
`assignment-tm-5576-0547.pdf
`
`Name: KEYBANK NATIONAL ASSOCIATION
`
`Execution Date: Jul. 14, 2015
`
`Assignor
`
`Legal Entity Type: NATIONAL BANKING ASSOCIATION
`
`Name: NETSCOUT SYSTEMS, INC.
`
`Legal Entity Type: CORPORATION
`
`Address: 310 LITTLETON ROAD
`WESTFORD, MASSACHUSETTS 01886
`
`State or Country
`Where Organized:
`
`Assignee
`
`No Place Where Organized Found
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Correspondent
`Name:
`
`Correspondent
`Address:
`
`SKADDEN, ARPS, SLATE, MEAGHER & FLOM LLP
`
`Correspondent
`
`FOUR TIMES SQUARE
`REBECCA RODAL
`NEW YORK, NY 10036
`
`Domestic Representative - Not Found
`
`Assignment 7 of 8
`
`Pages: 6
`
`Conveyance: RELEASE OF SECURITY INTEREST
`
`Reel/Frame: 5576/0552
`
`Date Recorded: Jul. 14, 2015
`
`Supporting
`Documents:
`
`assignment-tm-5576-0552.pdf
`
`Name: KEYBANK NATIONAL ASSOCIATION
`
`Execution Date: Jul. 14, 2015
`
`Assignor
`
`Legal Entity Type: NATIONAL BANKING ASSOCIATION
`
`Name: NETSCOUT SYSTEMS, INC.
`
`Legal Entity Type: CORPORATION
`
`Address: 310 LITTLETON ROAD
`WESTFORD, MASSACHUSETTS 01886
`
`State or Country
`Where Organized:
`
`Assignee
`
`No Place Where Organized Found
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`

`

`Correspondent
`Name:
`
`Correspondent
`Address:
`
`SKADDEN, ARPS, SLATE, MEAGHER & FLOM LLP
`
`Correspondent
`
`FOUR TIMES SQUARE
`REBECCA RODAL
`NEW YORK, NY 10036
`
`Domestic Representative - Not Found
`
`Assignment 8 of 8
`
`Pages: 6
`
`Conveyance: RELEASE OF SECURITY INTEREST
`
`Reel/Frame: 5576/0558
`
`Date Recorded: Jul. 14, 2015
`
`Supporting
`Documents:
`
`assignment-tm-5576-0558.pdf
`
`Name: KEYBANK NATIONAL ASSOCIATION
`
`Execution Date: Jul. 14, 2015
`
`Assignor
`
`Legal Entity Type: NATIONAL BANKING ASSOCIATION
`
`Name: NETSCOUT SYSTEMS, INC.
`
`Legal Entity Type: CORPORATION
`
`Address: 310 LITTLETON ROAD
`WESTFORD, MASSACHUSETTS 01886
`
`State or Country
`Where Organized:
`
`Assignee
`
`No Place Where Organized Found
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Correspondent
`Name:
`
`Correspondent
`Address:
`
`SKADDEN, ARPS, SLATE, MEAGHER & FLOM LLP
`
`Correspondent
`
`FOUR TIMES SQUARE
`REBECCA RODAL
`NEW YORK, NY 10036
`
`Domestic Representative - Not Found
`
`

`

`Int. Cl.: 9
`
`Prior U.S. Cls.: 21, 23, 26, 36, and 38
`
`United States Patent and Trademark Office
`
`Reg. No. 2,636,255
`Registered Oct. 15, 2002
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`NGENIUS
`
`NETSCOUT SYSTEMS, INC. (DELAWARE COR-
`PORATION)
`310 LITI‘LETON ROAD
`WESTFORD, MA 01886
`
`FOR: COMPUTER HARDWARE AND SOFT-
`WARE FOR MANAGING COMPUTER NETWORKS,
`NAMELY HARDWARE AND SOFTWARE TO
`MONITOR, ANALYZE,
`IDENTIFY, REPORT,
`TROUBLESHOOT, AND FORECAST THE PERFOR—
`MANCE AND EFFICIENCY OF APPLICATION
`
`AND CONTENT DELIVERY OVER NETWORK IN—
`FRASTRUCTURES, IN CLASS 9 (U.S. CLS. 21, 23, 26,
`36 AND 38).
`
`FIRST USE 8-0-2000; IN COMMERCE 8—0—2000.
`
`SN 75—931,551, FILED 2-29-2000.
`
`RONALD AIKENS, EXAMINING ATTORNEY
`
`

`

`Generated on: This page was generated by TSDR on 2020-10-09 15:36:50 EDT
`
`Mark: NGENIUSONE
`
`US Serial Number: 85865577
`
`US Registration
`Number:
`
`4633137
`
`Register: Principal
`
`Mark Type: Trademark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Mar. 04, 2013
`
`Registration Date: Nov. 04, 2014
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.
`
`Status Date: Nov. 04, 2014
`
`Publication Date: Jan. 07, 2014
`
` 
`
`Mark Literal
`Elements:
`
`NGENIUSONE
`
`Notice of
`Allowance Date:
`
`Mar. 04, 2014
`
`Mark Information
`
`Standard Character
`Claim:
`
`Mark Drawing
`Type:
`
`Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
`
`4 - STANDARD CHARACTER MARK
`
`Related Properties Information
`
`Claimed Ownership
`of US
`Registrations:
`
`2636255
`
`Goods and Services
`
`Note:
`The following symbols indicate that the registrant/owner has amended the goods/services:
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: Computer software and hardware devices used to manage, monitor, analyze and report the performance of computer applications,
`information technology service delivery to customers, network-based packet flows, information systems infrastructures, computer
`network infrastructures and equipment, and telecommunications network infrastructures and equipment; computer software and
`hardware devices used to provide security management for computer applications, information technology service delivery to
`customers, information systems infrastructures, computer network infrastructures and equipment and telecommunications network
`infrastructures and equipment; computer software and hardware devices used for automated analytics and troubleshooting for
`application and network performance management and management of information technology service delivery to customers
`
`International
`Class(es):
`
`009 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`U.S Class(es): 021, 023, 026, 036, 038
`
`First Use: Jul. 18, 2013
`
`Use in Commerce: Jul. 18, 2013
`
`Basis Information (Case Level)
`
`Filed Use: No
`
`Currently Use: Yes
`
`

`

`Filed ITU: Yes
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Filed No Basis: No
`
`Currently ITU: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: NetScout Systems, Inc.
`
`Owner Address: 310 Littleton Road
`Westford, MASSACHUSETTS UNITED STATES 01886
`
`Legal Entity Type: CORPORATION
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Attorney/Correspondence Information
`
`Attorney Name: Amanda K. Greenspon
`
`Docket Number: NTCT05-00008
`
`Attorney Primary
`Email Address:
`
`trademarks@munckwilson.com
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Attorney of Record
`
`Correspondent
`Name/Address:
`
`Amanda K. Greenspon
`Munck Wilson Mandala LLP
`P.O. Drawer 800889
`Docket Clerk
`Dallas, TEXAS UNITED STATES 75380
`
`Phone: 972-628-3600
`
`Fax: 972-628-3616
`
`Correspondent e-
`mail:
`
`trademarks@munckwilson.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`Sep. 10, 2020
`
`TEAS SECTION 8 & 15 RECEIVED
`
`Nov. 04, 2019
`
`COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED
`
`Jul. 12, 2016
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`
`Jul. 12, 2016
`
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`
`Nov. 04, 2014
`
`REGISTERED-PRINCIPAL REGISTER
`
`Oct. 02, 2014
`
`NOTICE OF ACCEPTANCE OF STATEMENT OF USE E-MAILED
`
`Oct. 01, 2014
`
`ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED
`
`Sep. 30, 2014
`
`NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED
`
`Sep. 29, 2014
`
`STATEMENT OF USE PROCESSING COMPLETE
`
`Sep. 09, 2014
`
`USE AMENDMENT FILED
`
`Sep. 29, 2014
`
`EXTENSION 1 GRANTED
`
`Sep. 04, 2014
`
`EXTENSION 1 FILED
`
`Sep. 24, 2014
`
`CASE ASSIGNED TO INTENT TO USE PARALEGAL
`
`Sep. 09, 2014
`
`NOTICE OF REVIVAL - E-MAILED
`
`Sep. 09, 2014
`
`EXTENSION RECEIVED WITH TEAS PETITION
`
`Sep. 09, 2014
`
`TEAS STATEMENT OF USE RECEIVED
`
`Sep. 09, 2014
`
`PETITION TO REVIVE-GRANTED
`
`Sep. 09, 2014
`
`TEAS PETITION TO REVIVE RECEIVED
`
`Mar. 04, 2014
`
`NOA E-MAILED - SOU REQUIRED FROM APPLICANT
`
`Jan. 07, 2014
`
`OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
`
`Jan. 07, 2014
`
`PUBLISHED FOR OPPOSITION
`
`Dec. 18, 2013
`
`NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
`
`Dec. 05, 2013
`
`LAW OFFICE PUBLICATION REVIEW COMPLETED
`
`Proceeding
`Number
`
`65362
`
`65362
`
`65362
`
`65362
`
`65362
`
`88889
`
`74221
`
`

`

`Nov. 30, 2013
`
`ASSIGNED TO LIE
`
`Nov. 05, 2013
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`Nov. 05, 2013
`
`EXAMINER'S AMENDMENT ENTERED
`
`Nov. 05, 2013
`
`NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED
`
`Nov. 05, 2013
`
`EXAMINERS AMENDMENT E-MAILED
`
`Nov. 05, 2013
`
`EXAMINERS AMENDMENT -WRITTEN
`
`Jun. 24, 2013
`
`NOTIFICATION OF NON-FINAL ACTION E-MAILED
`
`Jun. 24, 2013
`
`NON-FINAL ACTION E-MAILED
`
`Jun. 24, 2013
`
`NON-FINAL ACTION WRITTEN
`
`Jun. 15, 2013
`
`ASSIGNED TO EXAMINER
`
`Mar. 09, 2013
`
`NOTICE OF PSEUDO MARK E-MAILED
`
`74221
`
`88888
`
`6328
`
`6328
`
`74301
`
`6325
`
`6325
`
`74301
`
`74301
`
`Mar. 08, 2013
`
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
`
`Mar. 07, 2013
`
`NEW APPLICATION ENTERED IN TRAM
`TM Staff and Location Information
`
`Current Location: PUBLICATION AND ISSUE SECTION
`
`Date in Location: Oct. 01, 2014
`
`Assignment Abstract Of Title Information
`
`TM Staff Information - None
`
`File Location
`
`Summary
`
`Total Assignments: 1
`
`Conveyance: SECURITY INTEREST
`
`Reel/Frame: 5576/0528
`
`Date Recorded: Jul. 14, 2015
`
`Supporting
`Documents:
`
`assignment-tm-5576-0528.pdf
`
`Assignment 1 of 1
`
`Registrant: NetScout Systems, Inc.
`
` 
`
`Pages: 7
`
`Name: NETSCOUT SYSTEMS, INC.
`
`Execution Date: Jul. 14, 2015
`
`Assignor
`
`Legal Entity Type: CORPORATION
`
`Name: SI