Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1114305
`02/13/2021
`
`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
`
`Correspondence
`information
`
`DigiCert, Inc.
`
`02/14/2021
`
`2801 N. THANKSGIVING WAY
`SUITE 500
`LEHI, UT 84043
`UNITED STATES
`
`DEBORAH A. GUBERNICK
`SNELL & WILMER, LLP
`600 ANTON BOULEVARD
`SUITE 1400
`COSTA MESA, CA 92626
`UNITED STATES
`Primary Email: ipocdocket@swlaw.com
`Secondary Email(s): dgubernick@swlaw.com, aezzell@swlaw.com, gmor-
`lock@swlaw.com
`714-427-7000
`
`Applicant Information
`
`Application No.
`
`88751231
`
`Publication date
`
`08/18/2020
`
`Opposition Filing
`Date
`
`Applicant
`
`02/13/2021
`
`Opposition Peri-
`od Ends
`
`02/14/2021
`
`GOTRUSTID Inc.
`SUITE 402,
`800 N. STATE STREET,
`DOVER, COUNTY OF KENT,, DE 19901
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 2019/12/16 First Use In Commerce: 2019/12/16
`All goods and services in the class are opposed, namely: Computer software for controlling and man-
`aging access server applications; Computer software for encryption; Computer software for wireless
`content delivery; Computer application software for mobile phones, namely, software for signing onto
`the computer and web service; Communications software for encryption; Mobile applications for use
`in computer access control; Mobile applications for use in the encryption and decryption of digital
`files, including audio, video, text, binary, still images, graphics and multimedia files; Downloadable
`mobile applications for signing onto the computer and webservice; Downloadable computer software-
`for signing onto the computer; Secure Digital (SD) Memory Cards; USB (universalserial bus) hard-
`ware; USB computer security key; USB computer access control key; Cards with integrated circuits;
`
`

`

`Integrated circuits cards and components; Encoded integrated circuits cards containing programming
`used for data protection and user identity; Encoded smart cards embedded with transponders and
`containing programming used for data protection anduser identity; Encoded electronic chip cards
`containing programming used for data protection and user identity; Electronic security token in the
`nature of a fob-like device used by an authorized userof a computer system to facilitate authentica-
`tion
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`4949792
`
`Registration Date
`
`05/03/2016
`
`Application Date
`
`07/31/2015
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`GEOTRUST
`
`NONE
`
`Class 009. First use: First Use: 1999/06/04 First Use In Commerce: 1999/06/04
`Computer software for providing network, Internet, and computer security; Inter-
`net security software, including computer software for use in the monitoring and-
`control of computer and online activity; computer software for providing on-
`linetransaction security; privacy control software
`Class 042. First use: First Use: 1999/06/04 First Use In Commerce: 1999/06/04
`Computer consultation; computer consultation in the field of computer secur-
`ity;providing information in the field of computer network and Internet security;
`providing information concerning encryption of electronic data for website and e-
`commerce transaction security; computer and software consultancy services in
`thefields of digital media, data encryption, computer security, communication se-
`curity and computer software; encryption and decryption of data; computer ser-
`vices, namely, on-line scanning and detectingof malware on websites
`Class 045. First use: First Use: 1999/06/04 First Use In Commerce: 1999/06/04
`Providing information concerning authentication of user identification data fore-
`commerce transaction security; computer security services in the nature of
`providing authentication, issuance, validation and revocation of digital certific-
`ates; providing user authentication services in e-commerce transactions
`
`U.S. Registration
`No.
`
`2556558
`
`Registration Date
`
`04/02/2002
`
`Application Date
`
`04/14/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`GEOTRUST
`
`NONE
`
`Class 009. First use: First Use: 1999/06/04 First Use In Commerce: 1999/06/04
`COMPUTER SOFTWARE PROGRAMS THAT ALLOW USERS TO BUILD, AC-
`CESS AND CONTROL SYSTEMS, POLICIES AND PROCEDURES FOR THE
`SECURITY OF DATA AND MONITORING THE SECURITY OF DATA AND
`MONITORING THE PRIVACY AND CONFIDENTIALITY OF DATA ON A COM-
`PUTER WEBSITE
`
`

`

`Class 035. First use: First Use: 1999/06/04 First Use In Commerce: 1999/06/04
`[ BUSINESS CONSULTATION AND INFORMATIONSERVICES ON THE SUB-
`JECT OF SECURITY OF DATA AND MONITORING THE PRIVACY AND CON-
`FIDENTIALITY OF DATA ON A COMPUTER WEB SITE ]
`Class 041. First use: First Use: 1999/06/04 First Use In Commerce: 1999/06/04
`[ EDUCATIONAL SERVICES, NAMELY, PROVIDING COURSES OF IN-
`STRUCTION IN BUSINESS AND COMPUTER TRAINING SERVICES]
`Class 042. First use: First Use: 1999/06/04 First Use In Commerce: 1999/06/04
`[ COMPUTER SOFTWARE DEVELOPMENT SERVICES FOR OTHERS; COM-
`PUTER CONSULTATION SERVICES; RATING OF WEB SITES FOR THE SE-
`CURITY OF DATA AND ] MONITORING THE PRIVACY AND CONFIDENTIAL-
`ITY OF DATA ON A COMPUTER WEB SITE; COMPUTER SERVICES,
`NAMELY, PROVIDING INFORMATION AND DATA BASES FOR THE SECUR-
`ITY OF DATA AND MONITORING THE PRIVACY AND CONFIDENTIALITY OF
`DATA ON ACOMPUTER WEB SITE
`
`Related Proceed-
`ings
`
`91250267
`
`Attachments
`
`76763.00006 - DigiCert - GoTrusID _ GOTRUSTID_88751231 - Notice of Op
`position 4819-7180-2580 v.2.pdf(276336 bytes )
`
`Signature
`
`/dag/
`
`Name
`
`Date
`
`DEBORAH A. GUBERNICK
`
`02/13/2021
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of:
`
`DIGICERT, INC., a Utah corporation
`Opposer,
`
`v.
`
`GOTRUSTID, INC., a Delaware
`corporation
`Applicant.
`
`
`
`
`
` NOTICE OF OPPOSITION
`
` Opposition No.:
`
` Application No.: 88/751,231
`
`
`
`
`
`
`
`
`
`
`
` Published: August 18, 2020
`
`
`
`NOTICE OF OPPOSITION
`
`
`
`
`
`
`
`
`DigiCert, Inc. (“Opposer”), a Utah corporation, having a principal place of business at
`
`2801 N. Thanksgiving Way Suite 500 Lehi, Utah 84043, believes that it will be damaged by
`
`registration of the design mark shown in U.S. Application No. 88/751,231 GOTRUSTID (stylized)
`
`filed by GoTrustID, Inc. (“Applicant”), a Delaware corporation, having a principal address of
`
`record at 800 N. State Street Suite 402 Dover, Delaware 19901. Opposer hereby files this Notice
`
`of Opposition pursuant to Section 13 of the Trademark Act (15 U.S.C. § 1063). As grounds for
`
`Opposition, Opposer alleges as follows:
`
`
`1.
`
`Opposer owns two valid trademark registrations for GEOTRUST on file with the
`
`U.S. Patent and Trademark Office for goods and services in Class 09, Class 42, and Class 45
`
`(hereinafter the “Registered Marks”) as described below:
`
`
`
`
`4819-7180-2580
`
`
`

`

`2.
`
`3.
`
`Opposer’s Registered Marks are valid, unrevoked, and in full force and effect.
`
`Through longstanding use, Opposer also owns common law trademark rights in and
`
`
`
`to GEOTRUST.
`
`4.
`
`Opposer offers its services online and in manners customary to the trust-industry
`
`trade and has continuously done so long before the Application was filed.
`
`5.
`
`Opposer owns the goodwill and reputation connected with and symbolized by the
`
`Registered Marks.
`
`6.
`
`Long after Opposer’s first use of Opposer’s Registered Marks, Applicant applied
`
`
`4819-7180-2580
`
`
`

`

`to register an application for the design mark GOTRUSTID in Class 009 (the “Application”), as
`
`shown below:
`
`
`
`7.
`
`8.
`
`9.
`
`The mark in the Application is substantially similar to Opposer’s Registered Marks.
`
`The Application was published for opposition on August 18, 2020.
`
`Opposer’s Registered Marks pre-date Applicant’s use of Applicant’s applied-for
`
`mark and the Application filing date, affording Opposer priority.
`
`10.
`
`Opposer has opposed two other applications of Applicant, including Serial No.’s
`
`88/066,912 and 88/074,254, under Proceeding No. 91250267.
`
`11.
`
`Based on the substantially similar nature of the marks for highly related goods, the
`
`purchasing public is likely to falsely associate Applicant’s goods with Opposer or may erroneously
`
`believe the goods offered under the mark shown in the Application is sponsored, licensed, or
`
`otherwise endorsed and/or authorized by Opposer.
`
`12.
`
`Based on the foregoing, Opposer has a good faith belief that it has and will continue
`
`
`4819-7180-2580
`
`
`

`

`to suffer damage if Applicant’s mark under the Application proceeds to registration.
`
`
`
`WHEREFORE, Opposer prays that Application No. 88/751,231 be denied registration and
`
`that this Opposition be granted in favor of Opposer.
`
`[SIGNATURE PAGE FOLLOWS]
`
`
`
`
`
`
`4819-7180-2580
`
`
`

`

`
`
`Respectfully submitted,
`
`
`
`Dated: February 12, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`
`By: __________________________
`
`Deborah A. Gubernick
`
`Attorney of Record for Opposer
`
`
`SNELL & WILMER, LLP
`600 Anton Blvd.
`Suite 1400
`Costa Mesa, CA 92626-7689
`Tel.: (714) 427-7000
`Fax: (714) 427-7799
`dgubernick@swlaw.com
`
`
`
`
`
`
`
`
`
`4819-7180-2580
`
`
`

`

`CERTIFICATE OF SERVICE/ELECTRONIC SERVICE
`
`
`
`I hereby certify that a true and complete copy of the foregoing NOTICE OF OPPOSITION
`
`against Application Number 88/751,231 is being served on the Applicant’s attorney of record via
`
`electronic mail to the correspondent email listed on the records of the United States Patent and
`
`Trademark Office using the addresses below:
`
`Counsel for GoTrustID, Inc.
`David Starr
`Muncy Geissler Olds & Lowe PC
`4000 Legato Road, Suite 310
`Fairfax, VA 22033
`hds@mg-ip.com
`mailroom@mg-ip.com
`
` I
`
` declare under penalty of perjury under the laws of the United States of America that the
`
`foregoing is true and correct, and that this Certificate is executed on the date specified below.
`
`By: __________________________
`
`Deborah A. Gubernick
`
`Attorney of Record for Opposer
`
`
`SNELL & WILMER, LLP
`600 Anton Blvd.
`Suite 1400
`Costa Mesa, CA 92626-7689
`Tel.: (714) 427-7000
`Fax: (714) 427-7799
`dgubernick@swlaw.com
`
`
`
`
`
`
`
`
`
`
`Dated: February 12, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`4819-7180-2580
`
`
`