Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA968975 Filing date: 04/23/2019
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 Symantec Corporation Granted to Date 04/28/2019 of previous ex- tension Address 350 Ellis Street Mountain View, CA 94043 UNITED STATES
Attorney informa- Sally M. Abel, Esq. and Radi Rader, Esq. tion FENWICK & WEST LLP 801 CALIFORNIA STREET Silicon Valley Center MOUNTAIN VIEW, CA 94041 UNITED STATES [email protected], [email protected] 650-988-8500
Applicant Information
Application No 87916600 Publication date 10/30/2018 Opposition Filing 04/23/2019 Opposition Peri- 04/28/2019 Date od Ends Applicant Civic Technologies, Inc. 540 Bryant Street Palo Alto, CA 94301 UNITED STATES Goods/Services Affected by Opposition
Class 009. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Computer hardware, software, and firm- ware for authenticating user identification; downloadable computer software, namely, software in the fields of digital security and database access management foruse in validating user identity and per- mitting user access to websites, computer software, and computer hardware through secure verifica- tion; downloadable computer software, namely, software that securely verifies a pre-existing relation- ship exists between parties prior to initiation of a transaction involving the parties; computer software, namely, software that securely verifies the relationship between parties involved in a digital or non- digital transaction to prove thata legitimate relationship exists between the parties; computer soft- ware, namely, software that facilitates authentication in the fields of digital security, identification, and digital transactions; communications software for electronically exchanging data; downloadable com- puter software for authenticating user identification, and for sending, receiving, buying, selling, storing and providing access to virtual currencies, digital currencies, cryptocurrencies and applicationtokens; downloadable computer software for e-commerce that allow users to perform electronic business transactions via a global computer network; downloadable computer software for processing im- ages,graphics, audio, video, and text; computer software for authenticating user identification, and for sending, receiving,buying, selling and storing and providing access to virtual currencies, digitalcurren- cies, cryptocurrencies and application tokens; downloadable computer software in the nature of a mobile application for authenticating user identification, and for sending, receiving, buying, selling, storing and providing access to virtual currencies, digital currencies, cryptocurrencies and application tokens;computer software for personal information management and data synchronization;security token hardware for reusable identity verification; computer software for providing access to virtual currencies, digital currencies, cryptocurrencies,and application tokens; computer software for validat- ing a relationship betweenan individual and an organization by verifying the individual confirmed an association with the organization by interacting with a link provided by the organization Class 036. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Financial services, namely, providing aweb- site featuring information on bitcoin, cryptocurrency, collateral for derivatives, derivative contracts, vir- tual currency, and digital currency Class 042. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Software-as-a-Service (SaaS) services fea- turing software that facilitates authentication in the fields of digital security, database access manage- ment, and secure verification of identity; software-as-a-service (SaaS) services featuring software in the fields of digital securityand database access management for use in validating user identity and permitting user access to websites, computer software, and computer hardware through secure veri- fication; software-as-a-service (SaaS) services featuring software that securely verifies that a pre- existing relationship exists between parties prior to initiation of a transaction involvingthe parties; soft- ware-as-a-service (SaaS) services featuring software that securely verifies the relationship between parties involved in a digital or non-digital transaction to prove that a legitimate relationship exists between the parties; design, development, and implementation of software; platform-as-a-service (PaaS) featuring a computer software platform for authenticating, facilitating, matching, processing, clearing, storing, receiving, tracking, transferring, and submitting transaction data, exchanging trans- action details, or management of a transaction lifecycle; providing online non-downloadable software for use in blockchain technology; technical support services, namely, troubleshooting of software problems; technical support services,namely, monitoring technological functions of computer network systems; software-as-a-service (SaaS) services featuringsoftware for sending electronic messageal- erts, transmitting orders, sending and receiving electronic messages, and allowing users to perform electronic business transactions via a global computer network; providing e-commerce software and- application service provider (ASP) services featuring software that allows users to perform electronic business transactions via a global computer network; application service provider (ASP) servicesus- ing software for application programming interfaces (APIs); application service provider (ASP), namely, hosting software of others; application service provider (ASP) services for software for creat- ing, managing, editing, organizing, modifying, transmitting, storing, and sharing data, information, and software for creating, editing, uploading, downloading, retrieving, presenting, publishing, displaying, tagging, blogging, streaming, linking, and communicating electronic media via a network; provision of online non-downloadable software for authenticating user identification, and for sending, receiving, buying, selling, storing and providing access to virtual currencies, digital currencies, cryptocurrencies and application tokens; application service provider (ASP) services featuring software for authenticat- ing user identification, and for sending, receiving, buying, selling, storing and providing access to vir- tual currencies, digital currencies, cryptocurrencies and application tokens; application service pro- vider, namely, hosting, managing, developing, and maintaining applications, websites, and other soft- ware in the fields of wireless communications, mobile information access,and remote data manage- ment for wirelessly providing content to mobile electronic devices; providing temporary use of non- downloadable software for use in access, reading, tracking, and using blockchain technology; design, development, and implementation of software solutions fordigital currency security, including but not limited to bitcoin currency and transactions involving bitcoin currency; design, development, and im- plementation of software solutions for secure relationship verification, including but not limited to veri- fication of a pre-existing relationship between an individual and anorganization before initiation of a transaction involving the individual and the organization; design, development, andimplementation of software solutions for validating a relationship between an individual and an organization by verifying the individual confirmed an association with the organization by interacting with a link provided by the organization; relationship verification services in the nature of providing user authentication services using single sign-on technology, biometric hardware and software technology for e-commerce trans- actions; relationship verification services in the nature of providing user authentication services for the purpose of validating arelationship between an individual and an organization by verifying the in- dividual confirmed an association with the organization by interacting with a link provided by the or- ganization; providing user identity authentication services using single sign-on technology, biometric hardware and software technology for the purpose of securely verifying that a pre-existing relation- ship exists between parties prior to initiation of a transaction involving the parties; fraud and identity theft protection services, namely, monitoring of personally identifying information to detect identity theft via the internet; financial identity monitoring services for fraud protection purposes, namely, electronic monitoring of credit card activity to detect fraud via the internet; computer security con- sultationin the field of data theft; computer security consultation in the field of identity theft; Electronic monitoring of credit reports, the Internet, and public records to facilitate the detection and prevention of identity theft and fraud; computer security services in the nature of providing authentication, verific- ation, and validation of personal identity information and enabling consumers to confirm their identity to prevent identity theft and fraudulent activities on their credit reports; identification verification ser- vices in the nature of computer security services, namely, providing authentication of personal identi- fication information; providing user authenticationservices using single sign-on technology, biometric hardware and software technology for e-commerce transactions; identification verification services in the nature of computer security services, namely, providing authentication of personal identification information via secure storage and transmitting such information via a global computer network; iden- tification verification services in the nature of computer security services, namely, providing authentic- ation of personal identification information via secure storage to verify a pre-existing relationship ex- ists between entities involved in a transaction; computer assurance services relating to the develop- ment of security systems and contingency planning for information systems; identity validationser- vices through the administration of digital security tokens; user verification services using technology to authenticate user identity; identification verification services, namely, providing authentication of personal identification information using technology to authenticate user identity; providing a website featuring technology information on secureverification of relationships between parties involved in a transaction Grounds for Opposition
Priority and likelihood of confusion Trademark Act Section 2(d) Dilution by blurring Trademark Act Sections 2 and 43(c) Marks Cited by Opposer as Basis for Opposition
U.S. Registration 3861132 Application Date 08/20/2004 No. Registration Date 10/12/2010 Foreign Priority NONE Date Word Mark NONE Design Mark
Description of NONE Mark Goods/Services Class 009. First use: First Use: 2004/09/07 First Use In Commerce: 2004/09/07 Computer software in the field of cryptographic network security and data secur- ity functions; computer software for integration of information logic and data between computer networks; computer software for automating a process for authentication of identity using existing databases in connection with the issu- ance andmanagement of digital certificates usedfor authentication or encryption of digital communications, or authentication of a digital signature in an electronic transaction or communication, over the Internet and other computer networks; computer software to integrate managed security services, namely, public key infrastructure ("PKI") services, digital certificate issuance, verification, and man- agement, and enterprise software integration, with existing communications net- works, software, and services; downloadable electronic publications in the nature of a newsletter in the field of informationtechnology Class 016. First use: First Use: 2004/09/07 First Use In Commerce: 2004/09/07 Printed matter, namely, newsletters, instructional materials and teaching materi- als in the field of information technology Class 035. First use: First Use: 2004/09/07 First Use In Commerce: 2004/09/07 [ Commercial information and directory services; providing commercial informa- tion and on-line directory information services for locating Internet and other computer network addresses and demographicinformation for entities, and providinga directory of organizations, individuals, addresses, and resources ac- cessible through the use of the Internet and other computer networks; ] business management services, namely, providing outsourcemanagement services to others in the field of digital certificate authentication; advanced computerized database management services Class 036. First use: First Use: 2004/09/07 First Use In Commerce: 2004/09/07 Providing extended warranties for authentication, encryption and certification services used to provide security in electronic transactions and communications that take place over the Internet and other computer networks; administration and processing of claims under extended warranties of authentication, encryp- tion and certification services used to provide security in electronic transactions and communications that take place over the Internet and other computer net- works Class 041. First use: First Use: 2004/09/07 First Use In Commerce: 2004/09/07 Educational services, namely, providinginstruction in the fields of the Internet, computer network addresses, and Internet domain name issues; providing news in the nature of current event reportingin the field of domain name disputes; providing a nondownloadable on-line newsletter in the field of information tech- nology Class 042. First use: First Use: 2004/09/07 First Use In Commerce: 2004/09/07 Providing authentication of identity; issuance and management of digital certific- ates for authentication or encryption of a digital communication, or authentica- tion of a digital signature in an electronic transaction or communication, overthe Internet and other computer networkand providing technical and customer sup- port in connection therewith; development, design, implementation, testing, ana- lysis, and consulting services in the field of security, access, authorization, au- thentication encryption, and identification systems for computers, computer hardware and computer networks; development, integration and operation of computersystems to support issuance and management of digital certificates; creation and implementation of procedures and practices for issuance and man- agement of digital certificates; computer related services, namely, managed computer network and Internet security services, namely, public key infrastruc- ture ('PM') verification, authentication, distribution and management, digital certi- ficate issuance, verification and management, and enterprise software integra- tion [; computer services, namely, enabling users of the Internet to deliver in- formation about themselves and, if applicable, their businesses, products or ser- vices to, and to register their universal resource locators with on-line catalogues, directories, search engines and web sites, via the Internet and other computer networks; registration and tracking of domain names for identification of users on a global computer network and other computer networks;providing informa- tion in the field of services relating to the ownership rightsof domain names; do- main name managementservices, namely, Domain Name System ("DNS") man- agement and maintenance, domainname directory management and mainten- ance, Domain Name System ('DNS') infrastructure services, domain name and Domain Name System ("DNS") information propagation, and resolution of Do- main Name System("DNS") requests; data conversion of computer programs data or information, namely, network, computer, database and directory services that convert an assignednumber sequence into an Internet Protocol ("IF') ad- dress or uniform resource locator ('URL") for the purpose of enabling access, selection and display of online content via a wireless network; directory, discov- ery, and information servicesassociated with Radio Frequency ID (RFID) and the Electronic Product Code (EPC)network ] Class 045. First use: First Use: 2004/09/07 First Use In Commerce: 2004/09/07 Business services in the nature of managed public key infrastructure services, namely, application and network infrastructure security services; business man- agement, namely, digital certificate issuance services
U.S. Registration 4354348 Application Date 10/15/2010 No. Registration Date 06/18/2013 Foreign Priority NONE Date Word Mark NONE Design Mark
Description of The mark consists of a circle with a checkmark in the center of the circle. Mark Goods/Services Class 009. First use: First Use: 2010/10/00 First Use In Commerce: 2010/10/00 Computer antivirus software; computer software for providing network, Inter- net,and computer security; computer software for providing online identity pro- tection and parental control; computer software for providing intrusion detection andprevention; computer software for scanning, detecting, and removing vir- uses, worms, Trojan horses, adware, spyware, andother malware; Internet se- curity software, including computer software for use in the monitoring and con- trol of computer and online activity; computer softwarefor providing online trans- action security; fraud protection software; computer optimization software; com- puter softwareto prevent, diagnose, and repair computer problems; computer maintenance software; computer software for the back-up, storage, restoration and recovery of data, folders, and files; enterprise security software; fire wall software; privacy control software; content filtering software; cloning software, namely, softwarefor cloning computer hard drives, software for cloning computer operating systems, software for cloning data files, software reconfiguring per- sonal computers; computer software for the creation of virtual private network; computer utility software; computer utility software for removal of computer ap- plications and software; utility software for facilitatingcomputer use at remote locations and for facilitating communications among mobile users over networks; computer software, namely, middleware for interfacing client applications and networked or host based databases; computer software for use in updating oth- er computer software; computer software for connecting and managing remote computers, for synchronization of files through e-mail, for providing security to remote computer users, for implementing computer, software and network se- curity measures for remote computer users; computer software for file manage- ment and transfer; computer softwarefor telecommuting, namely, for connecting to and use of a remote computer network, a remote computer and mobile devices; computer software for use with a home or remote office for connecting computernetwork users to global networks; computer software and recorded databases for use in diagnosis, repair and configuration of computers, computer software and computer peripherals; computer software, hardware, firmware and peripherals for network and Internet security data and system protection, and storage, server, client, and application performance management; computer hardware; computer hardware appliances that provide firewall, content filtering, intrusion alert, virus protection, virtual private networking and other security functions and file serving storage management; computer software for use in file, disk and systems management; computer software for use in data storage management and storage area networks; computer software for backing upand restoring computer data; computer software for use in disaster recovery; com- puter software for use in removable storage media management; computer soft- warefor monitoring, identifying, and rectifying file, disk, system, and computer network problems and errors; computer software for use in the field of enterprise information management; computer software for use in the field of online analyt- ical processing (OLAP); computer softwarefor generating reports from data- bases; computer software for scheduling automated processes; computer soft- ware for use in the central management of computer attached to a computer network; computer software for replicating and archiving files from one data store to another; computer software for metering the use of the other computer software; computer software for use in developing data analysisapplications and other computer software; computer programs for data security for use with data communications applications, and for the encryption and authentication of elec- tronic information; computer programs for use in the field of computer system administration, namely, programs for the administration and management of computer programs and electronic data about computer systems; computer pro- grams for managing the software configurations of computer systems and com- puternetworks; computer programs for the sending and receiving of computer software across a computer network to accomplish software distribution and computer programs for installing and upgrading other computer software without manual user intervention; computer programs for copyingdata from one elec- tronic storage mediumto another electronic storage medium; computer programs for remotely monitoring, evaluating, demonstrating and controlling other com- puter programs or computer processes; computer programs for locking-down one or more computers on a computer network; computer hardware and soft- ware for authenticating users and maintaining and managing access to com- puter data,computer content, electronic communications, and computer net- works; embedded software for network monitoring and security; embedded soft- ware for authenticatingusers and maintaining and managing access to computer data, computer content, electronic communications, and computer networks; computer software, namely, content management software which filters, monit- ors, reports on and controls use of and access to locations on computer systems and networks and on global communication networks; electronic mail and news group filtering software which prevents or shunts delivery of defined categoriesor origins of electronic mail messages and news postings; protection software which detects electronic inquiries for information from computer systems or of users of computer systems and organizes, monitors, controls and prevents pro- visionof such information; privacy managementsoftware which prevents, monit- ors, certifies, aggregates and reports on the distribution and use of personal identification information on computer systems andnetworks and on global com- munications networks; file transfer filtering software which prevents, monitors, reports on or shunts delivery of defined categories,origins, volumes, or time- frames of electronic files; and chat filtering software which prevents, monitors, reports on, analyzes, or shunts delivery of defined categories, senders, recipi- ents, origins, volumes or timeframes of conversationstransmitted or stored elec- tronically; downloadable electronic publications in the nature of reference, user, technical and instructional manuals and data sheets for use with computer soft- ware, hardware, peripherals and firmware and downloadable electronic publica- tions in the nature of manuals, blogs, instructional materials, teaching materials, newsletters,magazines, newspapers, books and pamphlets in the fields of com- puter software and computer and on-line security Class 016. First use: First Use: 2010/10/00 First Use In Commerce: 2010/10/00 Computer user manuals in the field of computers, computer software, computer peripherals, computer security, computer services, and computer networks; prin- ted matter and publications, namely, magazines and conference materials in the fieldof computers, computer software, computer peripherals, and computer net- works; paper labels and paper printed hologram labels Class 038. First use: First Use: 2010/10/00 First Use In Commerce: 2010/10/00 Transmittal of anti-virus scanning and other network security software via a glob- al computer network; information and consultancy with regard to aforemen- tionedservices Class 039. First use: First Use: 2010/10/00 First Use In Commerce: 2010/10/00 Electronic storage of data files for clients to store and retrieve data via a global computer network; electronic document and email archiving services Class 042. First use: First Use: 2010/10/00 First Use In Commerce: 2010/10/00 Development of software for network andInternet security and data encryption; computer consultation; computer consultation in the field of computer security; computer diagnostic services; computer services, namely, filtering of unwanted and unsolicited email; computer services,namely, data recovery services; tech- nical support services, namely, troubleshooting in the nature of diagnosing com- puter hardware and software problems; technical support services, namely, providing back-up computer programs and facilities; computer virus protection services; computer software installation services; technical consultation in the field of computer software installation and maintenance; development, updating, publishing and maintenance of software for networksand standalone computers in the fields of security, database management, and anti-virus protection and monitoring security systems; providing information in the field of computer net- work and Internetsecurity; providing technical information in the field of computer software applications; application service provider services, namely, providing on-line, non-downloadable software for computer security testing in the fields of computer and Internet security; updating computer software; providing informa- tion in the field of computer database, software, hardware, and network opera- tion, design anddevelopment; computer monitoring services in the nature of tracking hardware and software performance and processes andsending reports thereof; monitoring thecomputer systems of others for technical purposes and providing back-up computer programs and facilities; integration of computer sys- tems and networks; computer services, namely, providing information concern- ing the encryption and authentication of electronic data for website and ecom- merce transaction security; computer and software consultancy services in the fields of digital media, data encryption, computer security, communication secur- ity and computer software; encryption and decryption of data and communica- tions; creating indexes of information available on websites and filtering un- wanted electronic transmissions from websites; providing security threat man- agement systems, namely, monitoring and tracking of security vulnerabilities and problemsin computer software products, the Internet, and computer net- works; providing information about accessing computer security, preventing computer threats and design and development of computer security hardware and software applications Class 045. First use: First Use: 2010/10/00 First Use In Commerce: 2010/10/00 Monitoring of computer systems for security purposes; monitoring computer net- works for security purposes; providing user authentication services in e- commerce transactions; providing information about computer and Internet se- curity in the nature of administering digital keys andcertificates
U.S. Registration 4368939 Application Date 10/27/2010 No. Registration Date 07/16/2013 Foreign Priority NONE Date Word Mark NORTON BY SYMANTEC Design Mark
Description of The mark consists of a circle with a checkmark in the center of the circle appear- Mark ing next to the words "NORTON BY SYMANTEC". Goods/Services Class 009. First use: First Use: 2010/10/00 First Use In Commerce: 2010/10/00 Computer antivirus software; computer software for providing network, Inter- net,and computer security; computer software for providing online identity pro- tection and parental control; computer software for providing intrusion detection andprevention; computer software for scanning, detecting, and removing vir- uses, worms, Trojan horses, adware, spyware, andother malware; Internet se- curity software, including computer software for use in the monitoring and con- trol of computer and online activity; computer softwarefor providing online trans- action security; fraud protection software; computer optimization software; com- puter softwareto prevent, diagnose, and repair computer problems; computer maintenance software; computer software for the back-up, storage, restoration and recovery of data, folders, and files; firewall software;privacy control soft- ware; content filtering software; downloadable electronic publications in the nature of reference, user, technical and instructional manuals and data sheets for use with computer software, and firmware and downloadable electronic pub- lications in the nature ofmanuals, blogs, instructional materials, teaching materi- als, newsletters, magazines, newspapers, books and pamphlets inthe fields of computer software and computer and on-line security Class 016. First use: First Use: 2011/06/00 First Use In Commerce: 2011/06/00 Computer user manuals in the field of computers, computer software, computer security, computer services, and computer networks; printed matter and publica- tions, namely, books in the field of computers and computer software Class 039. First use: First Use: 2010/10/00 First Use In Commerce: 2010/10/00 Electronic storage of data files for clients to store and retrieve data via a global computer network Class 042. First use: First Use: 2010/10/00 First Use In Commerce: 2010/10/00 Computer consultation; computer consultation in the field of computer secur- ity;computer diagnostic services; computer services, namely, data recovery ser- vices; technical support services, namely, troubleshooting in the nature of dia- gnosing computer hardware and software problems; technical support services, namely, providing back-up computer programs and facilities; computer virus pro- tection services; computer software installation services; technical consultation in the field of computer software installation and maintenance; development, up- dating, publishing and maintenance of software fornetworks and standalone computers in the fields of security, database management, and anti-virus protec- tion and monitoring security systems; providing information in the field of com- puter network andInternet security; providing technical information in the field of computer software applications; providing information concerning encryption of electronic data for website and e-commerce transaction security; computer and software consultancy services in the fields of digital media, data encryption, computer security, communication security and computer software; encryption and decryption of data and communications; providing security threat manage- ment systems, namely, monitoring and tracking of security vulnerabilities and problems in computer software products, the Internet, and computer networks; providing information about assessing computer security, preventing computer threats and design and development of computer security hardware and soft- ware applications Class 045. First use: First Use: 2010/10/00 First Use In Commerce: 2010/10/00 Monitoring of computer systems for security purposes; monitoring computer net- works for security purposes; providing information concerning authentication of user identification data for e-commerce transaction security
U.S. Registration 4368938 Application Date 10/27/2010 No. Registration Date 07/16/2013 Foreign Priority NONE Date Word Mark SYMANTEC Design Mark
Description of The mark consists of a circle with a checkmark in the center of the circle nextto Mark the word "SYMANTEC". Goods/Services Class 009. First use: First Use: 2010/10/00 First Use In Commerce: 2010/10/00 Computer antivirus software; computer software for providing network, Inter- net,and computer security; computer software for providing online identity pro- tection and parental control; computer software for providing intrusion detection andprevention; computer software for scanning, detecting, and removing vir- uses, worms, Trojan horses, adware, spyware, andother malware; Internet se- curity software, including computer software for use in the monitoring and con- trol of computer and online activity; computer softwarefor providing online trans- action security; fraud protection software; computer optimization software; com- puter softwareto prevent, diagnose, and repair computer problems; computer maintenance software; computer software for the back-up, storage, restoration and recovery of data, folders, and files; enterprise security software; fire wall software; privacy control software; content filtering software; cloning software, namely, softwarefor cloning computer hard drives, software for cloning computer operating systems, software for cloning data files, software reconfiguring per- sonal computers; computer software for the creation of virtual private network; computer utility software; computer utility software for removal of computer ap- plications and software; utility software for facilitatingcomputer use at remote locations and for facilitating communications among mobile users over networks; computer software, namely, middleware for interfacing client applications and networked or host based databases; computer software for use in updating oth- er computer software; computer software for connecting and managing remote computers, for synchronization of files through e-mail, for providing security to remote computer users, for implementing computer, software and network se- curity measures for remote computer users; computer software for file manage- ment and transfer; computer softwarefor telecommuting, namely, for connecting to and use of a remote computer network, a remote computer and mobile devices; computer software for use with a home or remote office for connecting computernetwork users to global networks; computer software and recorded databases for use in diagnosis, repair and configuration of computers, computer software and computer peripherals; computer software, hardware, firmware and peripherals for network and Internet security data and system protection, and storage, server, client, and application performance management; computer hardware; computer hardware appliances that provide firewall, content filtering, intrusion alert, virus protection, virtual private networking and other security functions and file serving storage management; computer software for use in file, disk and systems management; computer software for use in data storage management and storage area networks; computer software for backing upand restoring computer data; computer software for use in disaster recovery; com- puter software for use in removable storage media management; computer soft- warefor monitoring, identifying, and rectifying file, disk, system, and computer network problems and errors; computer software for use in the field of enterprise information management; computer software for use in the field of online analyt- ical processing (OLAP); computer softwarefor generating reports from data- bases; computer software for scheduling automated processes; computer soft- ware for use in the central management of computer attached to a computer network; computer software for replicating and archiving files from one data store to another; computer software for metering the use of the other computer software; computer software for use in developing data analysisapplications and other computer software; computer programs for data security for use with data communications applications, and for the encryption and authentication of elec- tronic information; computer programs for use in the field of computer system administration, namely, programs for the administration and management of computer programs and electronic data about computer systems; computer pro- grams for managing the software configurations of computer systems and com- puternetworks; computer programs for the sending and receiving of computer software across a computer network to accomplish software distribution and computer programs for installing and upgrading other computer software without manual user intervention; computer programs for copyingdata from one elec- tronic storage mediumto another electronic storage medium; computer programs for remotely monitoring, evaluating, demonstrating and controlling other com- puter programs or computer processes; computer programs for locking-down one or more computers on a computer network; computer hardware and soft- ware for authenticating users and maintaining and managing access to com- puter data,computer content, electronic communications, and computer net- works; embedded software for network monitoring and security; embedded soft- ware for authenticatingusers and maintaining and managing access to computer data, computer content, electronic communications, and computer networks; computer software, namely, content management software which filters, monit- ors, reports on and controls use of and access to locations on computer systems and networks and on global communication networks; electronic mail and news group filtering software which prevents or shunts delivery of defined categoriesor origins of electronic mail messages and news postings; protection software which detects electronic inquiries for information from computer systems or of users of computer systems and organizes, monitors, controls and prevents pro- visionof such information; privacy managementsoftware which prevents, monit- ors, certifies, aggregates and reports on the distribution and use of personal identification information on computer systems andnetworks and on global com- munications networks; file transfer filtering software which prevents, monitors, reports on or shunts delivery of defined categories,origins, volumes, or time- frames of electronic files; and chat filtering software which prevents, monitors, reports on, analyzes, or shunts delivery of defined categories, senders, recipi- ents, origins, volumes or timeframes of conversationstransmitted or stored elec- tronically; downloadable electronic publications in the nature of reference, user, technical and instructional manuals and data sheets for use with computer soft- ware, hardware, peripherals and firmware and downloadable electronic publica- tions in the nature of manuals, blogs, instructional materials, teaching materials, newsletters,magazines, newspapers, books and pamphlets in the fields of com- puter software and computer and on-line security Class 016. First use: First Use: 2010/10/00 First Use In Commerce: 2010/10/00 Computer user manuals in the field of computers, computer software, computer peripherals, computer security, computer services, and computer networks; prin- ted matter and publications, namely, magazines and conference materials in the fieldof computers, computer software, computer peripherals, and computer net- works; paper labels and paper printed hologram labels Class 038. First use: First Use: 2010/10/00 First Use In Commerce: 2010/10/00 Transmittal of anti-virus scanning and other network security software via a glob- al computer network; information and consultancy with regard to aforemen- tionedservices Class 039. First use: First Use: 2010/10/00 First Use In Commerce: 2010/10/00 Electronic storage of data files for clients to store and retrieve data via a global computer network; electronic document and email archiving services Class 042. First use: First Use: 2010/10/00 First Use In Commerce: 2010/10/00 Development of software for network andInternet security and data encryption; computer consultation; computer consultation in the field of computer security; computer diagnostic services; computer services, namely, data recovery ser- vices;computer services, namely, filtering ofunwanted and unsolicited email; technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems; technical support services, namely, providing back-up computer programs and facilities; computer virus protection services; computer software installation services; technical consultation in the field of computer software installation and maintenance; development, updating, publishing and maintenance of software for networksand standalone computers in the fields of security, database management, and anti-virus protection and monitoring security systems; providing information in the field of computer net- work and Internetsecurity; providing technical information in the field of computer software applications; application service provider services, namely, providing on-line, non-downloadable software for computer security testing in the fields of computer and Internet security; updating computer software; providing informa- tion in the field of computer database, software, hardware and network opera- tion, design and development; providing information aboutaccessing computer security, preventingcomputer threats and design and development of computer security hardware and software applications; computer monitoring services in the nature of tracking hardware and software performance and processes and sending reports thereof; monitoring the computer systems of others for technical purposes and providing back-upcomputer programs and facilities; integration of computer systems and networks;computer services, namely, providing informa- tion concerning the encryption and authentication of electronic data for website and e-commerce transaction security; computer and software consultancy ser- vices in the fields of digital media, data encryption, computer security, commu- nication security and computer software; encryption and decryption of data and communications; creating indexes of information available on websites and filter- ing unwanted electronic transmissions fromwebsites; providing security threat management systems, namely, monitoring and tracking of security vulnerabilit- ies andproblems in computer software products,the Internet, and computer net- works Class 045. First use: First Use: 2010/10/00 First Use In Commerce: 2010/10/00 Monitoring of computer systems for security purposes; monitoring computer net- works for security purposes; providing user authentication services in e- commerce transactions; providing information about computer and Internet se- curity in the nature of administering digital keys andcertificates
U.S. Registration 4672009 Application Date 11/24/2010 No. Registration Date 01/13/2015 Foreign Priority NONE Date Word Mark SYMANTEC.CLOUD Design Mark
Description of The mark consists of a circle with a checkmark in the center of the circle nextto Mark the words "SYMANTEC.CLOUD". Goods/Services Class 039. First use: First Use: 2011/06/01 First Use In Commerce: 2011/06/01 Electronic storage of data files for clients to store and retrieve data via a global computer network; electronic document and email archiving services Class 042. First use: First Use: 2010/12/31 First Use In Commerce: 2010/12/31 Development of software for network andInternet security and data encryption; publishing of software for networks and standalone computers in the fields of se- curity, database management, and anti-virus protection and monitoring security systems; application service provider services, namely, providing on-line, non- downloadable software for computer security testing in the fields of computer and Internet security; creating indexes of information available on websites and filtering unwanted electronic transmissionsfrom websites; computer services, namely, filtering of unwanted and unsolicitedemail
U.S. Registration 4690810 Application Date 12/20/2013 No. Registration Date 02/24/2015 Foreign Priority NONE Date Word Mark SYMANTEC Design Mark
Description of The mark consists of a circle with a checkmark in the center of the circle nextto Mark the word "SYMANTEC". Goods/Services Class 009. First use: First Use: 2010/10/00 First Use In Commerce: 2010/10/00 Computer software for cryptographic network security and data security func- tions; computer software for integration of information logic and data between computer networks; computer software for automating a process for authentica- tion of identity using existing databases in connection with the issuance and management of digital certificates used for authentication or encryption of digital communications, or authentication of a digital signature in an electronic transac- tion or communication, over the Internet and other computer networks; computer software, namely, encryption software to enablesecure transmission of digital in- formation, namely, confidential, financial andcredit card information over the In- ternet, as well as over other modes of communication between computing devices; computer software to integrate managed security services, namely, public key infrastructure (PKI) services, digital certificate issuance, verification, management and enterprise software integration, withexisting communications networks, software and services; computer software for use in analysis and re- porting of firewall log data; computer software for identity security; computer software for authentication and identity management information security; com- puter software for digital information and data access; computer software for de- tecting identity fraud; computer software and firmware for the management, transmission, and storage of data and information; computer software for use in networking computers; computer software for use in monitoring computers for security purposes; computer software for use with computer servers forcon- trolling and managing server applications; downloadable electronic publications in the nature of manuals, white papers, articles, and technical documentation manuals in the fields of computer hardware and software, digital telecommunica- tions, consumer electronics, and information technologies Class 042. First use: First Use: 2010/10/00 First Use In Commerce: 2010/10/00 Providing authentication of website operator identity, namely, IP address verific- ation services; providing technical and customer support services, namely en- cryption of a digital communication and technical support in the nature of com- puter help desk services for issuance and management of digital certificates for digital communication and digital signatureauthentication and encryption, over theInternet and other computer network; development, design, implementation, testing, analysis, and consulting services inthe field of security, access, authoriz- ation, authentication encryption, and identification systems for computers, com- puter hardware and computer networks; development, integration and operation of computer systems to support issuance and management of digital certificates; creating and implementing software for issuing and managing digital certificates; computer consulting services in the field of security integration, network security, network architecture, encryption technology, and computer security; security verification of computer network firewalls, servers and other network devices from unauthorized access, namely, analyzing global computer information net- work and internal computer network vulnerability; providing electronic data stor- age services; application service provider services, namely, providing on-line, non-downloadable software for computer securitytesting in the fields of com- puter and Internet security Class 045. First use: First Use: 2010/10/00 First Use In Commerce: 2010/10/00 Managed public key infrastructure services, namely, authentication, issuance and validation of digital certificates; providing user authentication services in e- commerce transactions; issuance of digital certificates for authentication; provid- ing authentication of identity in the nature of authentication of personal identifica- tion information; identification verification services, namely, providing authentica- tion of personal identification information; security consulting about creating and implementing proceduresand practices for issuing and managing digital certific- ates
U.S. Application 88126071 Application Date 09/20/2018 No. Registration Date NONE Foreign Priority NONE Date Word Mark NORTON LIFELOCK Design Mark
Description of The mark consists of a circle with a checkmark in the center of the circle nextto Mark a design consisting of the word NORTON appearing on top of a box with roun- ded edges with a lock shape and a keyhole in the center next to the word LIFE- LOCK. Goods/Services Class 009. First use: First Use: 0 First Use In Commerce: 0 Computer software; computer hardware; computers; computer application soft- ware for use in electronic storage of data, documents and receipts; computer application software to assist in tracking, managing, and reporting expenses, credit scores, account information, and commercialtransactions; computer ap- plication software for providing alerts and notifications regarding potential iden- tity theft, and for providing tips and information concerning identity theft Class 036. First use: First Use: 0 First Use In Commerce: 0 Credit reporting services; providing credit reporting data maintained by others; credit risk management and consultation services, namely, assistance with restoring and analyzing credit damaged by identity theft; tracking and reporting regarding consumer credit reports and changes thereto; providing advice and consultation in the field of credit reports andcredit scores; fraud resolution assist- ance, namely, assistance with restoring credit damaged by identity theft; provid- ing reimbursement of costs associated with identity theft; providing financial in- formation via a web site; financing services; financial services; financial services, namely, credit repair and restoration; credit risk management, credit riskcon- sultation, and analyzing credit damaged by identity theft Class 042. First use: First Use: 0 First Use In Commerce: 0 Software as a service (SaaS) featuring software for use in electronic storage of data, documents and receipts; softwareas a service (SaaS) featuring software to assist in tracking, managing, and reporting expenses, credit scores, account in- formation, and commercial transactions; software as a service (SaaS) featuring- software for providing alerts and notifications regarding potential identity theft, and for providing tips and information concerning identity theft; electronic monit- oring of personally identifying information to detect identity theft via the internet; electronic monitoring of credit card activity to detect fraud via the internet; data security consultancy;identity theft detection and protectionservices in the nature of arranging secure authentication of personal data in requests to open banking, credit, credit card, loan, financial, telecommunications and utility accounts; fraud and identity theft protection services; monitoringthe internet, public records, credit reports, private and public electronic databases, and unregulated global computer networks to facilitate the detection of and protection against identity theft and fraud; providing a secure interactive website concerning notifications of potential fraud and potential identity theft; providing information on potential fraud and potential identity theft via e-mail alerts and notifications; resolution as- sistance, namely, providing advice andconsultation in the field of data theftand identity theft; consultation in thefield of data theft and identity theft;tracking, mon- itoring, and reporting regarding consumer credit reports and changes thereto for purposes of protecting against data theft, identity theft and fraud; prevention of unsolicited commercialcommunications, namely, removal from pre-approved credit offer lists; fraud andidentity theft protection services consisting of credit card and debit card cancellation services in the event of loss or theft, namely, re- gistering credit anddebit cards for cancellation; fraud andidentity theft protection services consisting of assisting others with replacing personal identification cards, driver's licenses, Social Security cards, insurance cards, checkbooks and travelers checks in the event of loss or theft; monitoring personal financial ac- count activities for fraud protection purposes; providing alerts and notification in- formationconcerning possible fraud and identity theft for fraud protection pur- poses; monitoring public reports concerning largerscale consumer data security breaches for fraud protection purposes; providing alerts and notification informa- tion concerning possible fraud and identity theftrelated to such events for fraud protection purposes; monitoring personal financial account activities for atypical activities for fraud protection services; computer technology consultancy; com- puterprogramming; rental of computer software; computer system design Class 045. First use: First Use: 0 First Use In Commerce: 0 Providing consultation to third partiesin the field of prevention of data theft, iden- tity theft, and prevention of unsolicited commercial electronic mail, namely, re- moval from junk mail lists and offers for pre-approved credit
U.S. Application 88289816 Application Date 02/05/2019 No. Registration Date NONE Foreign Priority NONE Date Word Mark NORTON Design Mark
Description of The mark consists of a circle with a checkmark in the center of the circle appear- Mark ing next to the word "NORTON". Goods/Services Class 009. First use: First Use: 0 First Use In Commerce: 0 Computer antivirus software; computer software for database management in the field of cryptographic network security and data security functions; computer software for providing network, Internet, and computer security; computer soft- ware for providing online identity protectionand parental control; computer soft- warefor providing intrusion detection and prevention; computer software for scanning, detecting, and removing viruses, worms, Trojan horses, adware, spy- ware, and other malware; Internet security software, including computer soft- ware for use inthe monitoring and control of computer and online activity; com- puter software for providing online transaction security; fraud protection soft- ware; computer optimization software; computer software to prevent, diagnose, and repair computerproblems; computer maintenance software; computer soft- ware for the back-up, storage, restoration and recovery of data, folders, and files; enterprise security software; firewall software; privacy control software; content filtering software; computer hardware; computer peripherals; computer hardware appliances that provide fire wall, content filtering, intrusion alert, virus protection, virtual private networking and other security functions; computer soft- ware; computer software in the field of cryptographic network security and data security functions;computer software for integration of information logic and data between computer networks; computer software for automating a process for authentication of identity using existing databases in connection with the issu- ance and management ofdigital certificates used for authentication or encryption of digital communications, or authentication of a digital signature in an electronic transaction or communication, over the Internet and other computer networks; computer software,namely, encryption software to enable secure transmission of digital information, namely, confidential, financial and credit card information over the Internet, as well as over other modes of communication between com- puting devices; computer software to integrate managed security services, namely, public key infrastructure (PKI) services, digital certificate issuance, veri- fication, management andenterprise software integration, with existing commu- nications networks, software and services; computer software for use in analysis and reporting of firewall log data; computer software for detecting, blocking, and intercepting malware and other threats to computer hardware andsoftware; com- puter software for encrypting and authenticating data; computer software for en- cryption; computer softwarefor use in the encryption and decryption of digital files, including audio, video, text, binary, still images, graphicsand multimedia files; computer softwareplatform for bridging Internet and telephony services and enabling users to communicate and transact business faster across multiple net- works via wire line phones, mobile phones, personal computers, PDAs and oth- er personal electronic devices; computer software platform for providing faster Internet connections, website resolution and e-mail deliveries; cloning software, namely, software for cloning computer hard drives, software for cloning com- puter operating systems, software for cloning data files, software reconfiguring personal computers; computer software for the creation of virtual private net- work; computer software and downloadable computer software, namely, utility software; computer utility software for removal of computer applications and software; utility software for facilitating computer use at remote locations andfor facilitating communications among mobile users over networks; computer soft- ware, namely, middleware for interfacingclient applications and networked or host based databases; computer software and downloadable computer software for usein updating other computer software; computer software for use in net- working applications; computer software for sendingand receiving facsimile transmissions from computers and notebook computers; computer software for connecting and managing remote computers, for synchronization of files through e-mail, for providing security to remote computer users, forimplementing com- puter, software and network security measures for remote computer users; com- puter software for file management and transfer; computer software for telecom- muting, namely, for connecting to and use of a remote computer network, a re- mote computer and mobile devices;computer communications software for use with a home or remote office for connecting computer network users to global networks; computer software and databasesfor use in diagnosis, repair and con- figuration of computers, computer software and computer peripherals; computer programs for data communications applications, and for the encryption and au- thentication of electronic information; computer software for identity security; computersoftware for authentication and identity management information se- curity; computer software for digital information anddata access; computer soft- ware for detecting identity fraud; computer software and firmware for the man- agement, transmission, and storage of data and information; computer software for use in networking computers; computer software for usein operating elec- tronic mail; computer software for use in monitoring computersfor security pur- poses; computer software for use in vulnerability scanning of networks and web- sites; computer software for use in detecting malware computer software for use with computer servers forcontrolling and managing server applications; com- puter software for use in accessing databases; user manuals and instructional guides supplied with all of the foregoing; downloadable electronic publications Class 042. First use: First Use: 0 First Use In Commerce: 0 Computer services; Internet security services; electronic storage of data; com- puter consultation; computer consultationregarding computer networks and in- ternal computer networks, security services for computer networks and internal computer networks, namely, installation, design and customization; on-line tech- nical support services, namely, troubleshootingof computer hardware and soft- ware problems; technical and customer support services, namely, troubleshoot- ing of computer software problems; computer services, namely, detection of vir- uses and threats; design and implementation of software and technology solu- tions for the purposes of protecting against counterfeiting, tampering and diver- sion, and to ensure the integrity of genuine websites; technical support services, namely, providing back-up computer programs and facilities; updating of com- puter software for others; computer virus protection services; computer consulta- tion in the field of computer security; computer diagnostic services; computer services, namely, data recovery services; computer software installation ser- vices; computer programming;notification and delivery of software updates; re- search services relating to computer hardware and computer software; technical consultation in the field of computer software installation and maintenance; de- velopment, updating, publishing and maintenance of software for networksand standalone computers in the fields of security, databases management, and anti-virus protection and monitoring security systems; providing information in the field of network and Internet security; providing technical information in the field of computer software applications; computer services, namely, providing in- formation concerning the encryption and authentication of electronic data; providing information concerning authentication of user identification data for e- commerce transaction security; consultancy services in the fields of digital me- dia, data encryption, computer security, communication security and computer software; encryption and decryption of data and communications; computer sup- port services, namely, technical support and software update services; computer consulting services related to computer products and services; application ser- vice provider services, namely, providing on-line, non-downloadable software for computer security testing in the fields of computer and Internet security; soft- ware as a service for use in scanning networks and websites to detect and identify vulnerabilities and malware; providing consultants to help deploy, super- vise and manage information technology projects; providing information in the field of information technology relating to communicationsdevices, computers, computer hardware, computer software, computer peripherals,and computer networks; providing hostedelectronic mail and instant messaging services; com- puter services, namely, providing search engines for obtaining data on a global computer network; computer consulting services in the field of security integra- tion, network security, network architecture, encryption technology, and com- puter security; security verification of computer network firewalls, servers and other network devices from unauthorized access, namely, analyzing globalcom- puter information network and internal computer network vulnerability; applica- tion hosting; web hosting; and turnkeye-commerce services; providing authentic- ation of identity; issuance and management of digital certificates for authentica- tion or encryption of a digital communication, or authentication of a digital signa- ture in an electronic transaction or communication, over the Internet and other computer network and providing technical and customer support in connection- therewith; development, design, implementation, testing, analysis, and consult- ing services in the field of security, access, authorization, authentication encryp- tion, and identification systems for computers, computer hardware and com- puternetworks; computer systems analysis in the field of security, access, au- thorization, authentication encryption, and identification systems for computers and computer networks; development, integration and operation of computer systems to support issuance and management of digital certificates; creation and implementation of procedures and practices for issuance and management of digital certificates; computer related services, namely, managed computer network and Internet security services, namely, public key infrastructure (PKI) verification, authentication, distribution and management, digital certificate issu- ance, verification and management, and enterprise software integration; provid- ing user authentication services in e-commerce transactions; monitoring of com- puter systems for security purposes; monitoring of computer networks for secur- ity purposes; providing security threat management systems, namely, monitoring and tracking of security vulnerabilities and problems in computer software products, the Internet, and computer networks; providing information in the fields of global computer network and local area network Internet security, preventing computer viruses, preventing computer threats, computer hardware and soft- ware applications in security; identity theft protection services, namely, fraud prevention in the form of personal and financial information monitoring Class 045. First use: First Use: 0 First Use In Commerce: 0 Authentication, issuance and validationof digital certificates; identificationverific- ation services, namely, providing authentication of business identification inform- ation; computer security services in the nature of providing an internet trust cen- ter, namely, computer security assurance and administration of digital keys and digital certificates; providing user identity authentication services in ecommerce transactions; providing authentication of identity; personal background investiga- tion services in order to authenticate identity
U.S. Application 88352424 Application Date 03/22/2019 No. Registration Date NONE Foreign Priority NONE Date Word Mark LIFELOCK WITH NORTON Design Mark
Description of The mark consists of a box with roundededges with a lock shape and keyhole in Mark the center appearing to the left of the words "LIFELOCK WITH NORTON", with a circle with a checkmark in the center of the circle design appearing between the words "WITH" and "NORTON". Goods/Services Class 009. First use: First Use: 0 First Use In Commerce: 0 Computer software; computer hardware; computers; computer application soft- ware for use in electronic storage of data, documents and receipts; computer application software to assist in tracking, managing, and reporting expenses, credit scores, account information, and commercialtransactions; computer ap- plication software for providing alerts and notifications regarding potential iden- tity theft, and for providing tips and information concerning identity theft Class 036. First use: First Use: 0 First Use In Commerce: 0 Credit reporting services; providing credit reporting data maintained by others; credit risk management and consultation services, namely, assistance with restoring and analyzing credit damaged by identity theft; tracking and reporting regarding consumer credit reports and changes thereto; providing advice and consultation in the field of credit reports andcredit scores; fraud resolution assist- ance, namely, assistance with restoring credit damaged by identity theft; provid- ing reimbursement of costs associated with identity theft; providing financial in- formation via a web site; financing services; financial services; financial services, namely, credit repair and restoration; credit risk management, credit riskcon- sultation, and analyzing credit damaged by identity theft Class 042. First use: First Use: 0 First Use In Commerce: 0 Software as a service (SaaS) featuring software for use in electronic storage of data, documents and receipts; softwareas a service (SaaS) featuring software to assist in tracking, managing, and reporting expenses, credit scores, account in- formation, and commercial transactions; software as a service (SaaS) featuring- software for providing alerts and notifications regarding potential identity theft, and for providing tips and information concerning identity theft; electronic monit- oring of personally identifying information to detect identity theft via the internet; electronic monitoring of credit card activity to detect fraud via the internet; data security consultancy;identity theft detection and protectionservices in the nature of arranging secure authentication of personal data in requests to open banking, credit, credit card, loan, financial, telecommunications and utility accounts; fraud and identity theft protection services; monitoringthe internet, public records, credit reports, private and public electronic databases, and unregulated global computer networks to facilitate the detection of and protection against identity theft and fraud; providing a secure interactive website concerning notifications of potential fraud and potential identity theft; providing information on potential fraud and potential identity theft via e-mail alerts and notifications; resolution as- sistance, namely, providing advice andconsultation in the field of data theftand identity theft; consultation in thefield of data theft and identity theft;tracking, mon- itoring, and reporting regarding consumer credit reports and changes thereto for purposes of protecting against data theft, identity theft and fraud; prevention of unsolicited commercialcommunications, namely, removal from preapproved credit offer lists; fraud and identity theft protection services consisting of credit card and debit card cancellation services in the event of loss or theft, namely, re- gistering credit and debit cards for cancellation; fraud and identity theft protec- tion services consisting of assisting others with replacingpersonal identification cards, driver'slicenses, Social Security cards, insurance cards, checkbooks and travelers checks in the event of loss or theft; monitoring personal financial ac- count activities for fraud protection purposes; providing alerts and notification in- formation concerning possible fraud and identity theft for fraud protection pur- poses; monitoring public reports concerning larger scale consumer data security breaches for fraud protection purposes; providing alerts and notification informa- tion concerning possible fraud and identity theft related to such events for fraud protection purposes; monitoring personal financial account activities for atypical activities for fraud protection services; computer technology consultancy; com- puter programming; rental of computer software; computer system design Class 045. First use: First Use: 0 First Use In Commerce: 0 Providing consultation to third partiesin the field of prevention of data theft, iden- tity theft, and prevention of unsolicited commercial electronic mail, namely, re- moval from junk mail lists and offers for pre-approved credit
Attachments 76607897#TMSN.png( bytes ) 85154143#TMSN.png( bytes ) 85163095#TMSN.png( bytes ) 85163091#TMSN.png( bytes ) 85185160#TMSN.png( bytes ) 86150175#TMSN.png( bytes ) 88126071#TMSN.png( bytes ) 88289816#TMSN.png( bytes ) 88352424#TMSN.png( bytes ) C and CHECKMARK IN A CIRCLE design in color - Notice of Opposition DLR FINAL Rev 4-23-19.pdf(239677 bytes ) Civic Exhibit A.pdf(685767 bytes ) Civic Exhibit B.pdf(331098 bytes )
Signature /Randi Rader/ Name Sally M. Abel, Esq. and Randi Rader, Esq. Date 04/23/2019
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
In the matter of Trademark App. Ser. No. 87/916600 Filed: May 10, 2018 Published: October 30, 2018
Mark: ______Symantec Corporation, ) Opposer, ) ) Opposition No.______v. ) ) Civic Technologies, Inc. ) Applicant. ) ______)
NOTICE OF OPPOSITION
Opposer, Symantec Corporation (“Symantec” or “Opposer”), a Delaware corporation
having its principal place of business at 350 Ellis Street, Mountain View, California 94043,
believes it will be damaged by issuance of a registration for the Checkmark in a Circle Design
mark (in color), (“The Application”), as applied for in Application Serial No. 87/916600 filed on an intent-to-use basis, on May 10, 2018, by Applicant Civic Technologies, Inc. (“Applicant”), a
Delaware corporation in the United States with the address 540 Bryant Street, Palo Alto,
California 94301. Requests for extensions of time to oppose were granted by the Trademark
Trial and Appeal Board. Symantec now timely opposes The Application.
As grounds for opposition, Symantec alleges that:
Notice of Opposition of App. No. 87/916600 Symantec Corporation v. Civic Technologies, Inc. Page 1
1. On May 10, 2018, Applicant filed The Application on an intent-to-use basis for the following goods and services:
International Class 9: Computer hardware, software, and firmware for authenticating user identification; downloadable computer software, namely, software in the fields of digital security and database access management for use in validating user identity and permitting user access to websites, computer software, and computer hardware through secure verification; downloadable computer software, namely, software that securely verifies a pre-existing relationship exists between parties prior to initiation of a transaction involving the parties; computer software, namely, software that securely verifies the relationship between parties involved in a digital or non-digital transaction to prove that a legitimate relationship exists between the parties; computer software, namely, software that facilitates authentication in the fields of digital security, identification, and digital transactions; communications software for electronically exchanging data; downloadable computer software for authenticating user identification, and for sending, receiving, buying, selling, storing and providing access to virtual currencies, digital currencies, cryptocurrencies and application tokens; downloadable computer software for e-commerce that allow users to perform electronic business transactions via a global computer network; downloadable computer software for processing images, graphics, audio, video, and text; computer software for authenticating user identification, and for sending, receiving, buying, selling and storing and providing access to virtual currencies, digital currencies, cryptocurrencies and application tokens; downloadable computer software in the nature of a mobile application for authenticating user identification, and for sending, receiving, buying, selling, storing and providing access to virtual currencies, digital currencies, cryptocurrencies and application tokens; computer software for personal information management and data synchronization; security token hardware for reusable identity verification; computer software for providing access to virtual currencies, digital currencies, cryptocurrencies, and application tokens; computer software for validating a relationship between an individual and an organization by verifying the individual confirmed an association with the organization by interacting with a link provided by the organization.
International Class 36: Financial services, namely, providing a website featuring information on bitcoin, cryptocurrency, collateral for derivatives, derivative contracts, virtual currency, and digital currency.
International Class 42: Software-as-a-Service (SaaS) services featuring software that facilitates authentication in the fields of digital security, database access management, and secure verification of identity; software-as-a-service (SaaS) services featuring software in the fields of digital security and database access management for use in validating user identity and permitting user access to websites, computer software, and computer hardware through secure verification; software-as-a-service (SaaS) services featuring software that securely verifies that a pre-existing relationship exists between parties prior to initiation of a transaction involving the parties; software-as-a-service (SaaS) services featuring software that securely verifies the relationship between parties
Notice of Opposition of App. No. 87/916600 Symantec Corporation v. Civic Technologies, Inc. Page 2
involved in a digital or non-digital transaction to prove that a legitimate relationship exists between the parties; design, development, and implementation of software; platform-as-a-service (PaaS) featuring a computer software platform for authenticating, facilitating, matching, processing, clearing, storing, receiving, tracking, transferring, and submitting transaction data, exchanging transaction details, or management of a transaction lifecycle; providing online non-downloadable software for use in blockchain technology; technical support services, namely, troubleshooting of software problems; technical support services, namely, monitoring technological functions of computer network systems; software-as-a-service (SaaS) services featuring software for sending electronic message alerts, transmitting orders, sending and receiving electronic messages, and allowing users to perform electronic business transactions via a global computer network; providing e-commerce software and application service provider (ASP) services featuring software that allows users to perform electronic business transactions via a global computer network; application service provider (ASP) services using software for application programming interfaces (APIs); application service provider (ASP), namely, hosting software of others; application service provider (ASP) services for software for creating, managing, editing, organizing, modifying, transmitting, storing, and sharing data, information, and software for creating, editing, uploading, downloading, retrieving, presenting, publishing, displaying, tagging, blogging, streaming, linking, and communicating electronic media via a network; provision of online non-downloadable software for authenticating user identification, and for sending, receiving, buying, selling, storing and providing access to virtual currencies, digital currencies, cryptocurrencies and application tokens; application service provider (ASP) services featuring software for authenticating user identification, and for sending, receiving, buying, selling, storing and providing access to virtual currencies, digital currencies, cryptocurrencies and application tokens; application service provider, namely, hosting, managing, developing, and maintaining applications, websites, and other software in the fields of wireless communications, mobile information access, and remote data management for wirelessly providing content to mobile electronic devices; providing temporary use of non- downloadable software for use in access, reading, tracking, and using blockchain technology; design, development, and implementation of software solutions for digital currency security, including but not limited to bitcoin currency and transactions involving bitcoin currency; design, development, and implementation of software solutions for secure relationship verification, including but not limited to verification of a pre-existing relationship between an individual and an organization before initiation of a transaction involving the individual and the organization; design, development, and implementation of software solutions for validating a relationship between an individual and an organization by verifying the individual confirmed an association with the organization by interacting with a link provided by the organization; relationship verification services in the nature of providing user authentication services using single sign-on technology, biometric hardware and software technology for e-commerce transactions; relationship verification services in the nature of providing user authentication services for the purpose of validating a relationship between an individual and an organization by verifying the individual confirmed an association with the organization by interacting with a link provided by the organization; providing user identity authentication services using single sign-on technology, biometric hardware and software technology for the
Notice of Opposition of App. No. 87/916600 Symantec Corporation v. Civic Technologies, Inc. Page 3
purpose of securely verifying that a pre-existing relationship exists between parties prior to initiation of a transaction involving the parties; fraud and identity theft protection services, namely, monitoring of personally identifying information to detect identity theft via the internet; financial identity monitoring services for fraud protection purposes, namely, electronic monitoring of credit card activity to detect fraud via the internet; computer security consultation in the field of data theft; computer security consultation in the field of identity theft; Electronic monitoring of credit reports, the Internet, and public records to facilitate the detection and prevention of identity theft and fraud; computer security services in the nature of providing authentication, verification, and validation of personal identity information and enabling consumers to confirm their identity to prevent identity theft and fraudulent activities on their credit reports; identification verification services in the nature of computer security services, namely, providing authentication of personal identification information; providing user authentication services using single sign-on technology, biometric hardware and software technology for e-commerce transactions; identification verification services in the nature of computer security services, namely, providing authentication of personal identification information via secure storage and transmitting such information via a global computer network; identification verification services in the nature of computer security services, namely, providing authentication of personal identification information via secure storage to verify a pre-existing relationship exists between entities involved in a transaction; computer assurance services relating to the development of security systems and contingency planning for information systems; identity validation services through the administration of digital security tokens; user verification services using technology to authenticate user identity; identification verification services, namely, providing authentication of personal identification information using technology to authenticate user identity; providing a website featuring technology information on secure verification of relationships between parties involved in a transaction.
2. Symantec, a well-known software company founded in 1982, is a leader in the
cybersecurity software and services industry, specializing in digital and cyber security software and services. Symantec is in the business of providing digital and cyber security software and services, including user identification authentication, verification of user identity, and identity theft prevention throughout the United States and worldwide. Symantec offers these goods and services in connection with its unique Checkmark in a Circle Design logo and various other
Checkmark in a Circle Design-based marks (the “Checkmark in a Circle Design Marks”).
Symantec’s distinctive Checkmark in a Circle Design logo has been used continuously by
Opposer or its predecessor in interest, VeriSign, Inc. (“VeriSign”) as a trademark in interstate
Notice of Opposition of App. No. 87/916600 Symantec Corporation v. Civic Technologies, Inc. Page 4
commerce in connection with digital security and identity and authentication software and
services since at least as early as 2004, well before the May 10, 2018 filing date of The
Application.
3. The Application was published for opposition in the Official Gazette on October
30, 2018. Symantec requested and was granted extensions of the deadline to oppose The
Application until April 28, 2019. This Notice of Opposition is timely filed.
4. Symantec owns the following U.S. trademark registrations for the Checkmark in a
Circle Design Marks, covering a variety of digital and cyber security services, including user
identification authentication, verification of user identity, and identity theft:
Reg. No. Mark Offerings Covered by Registrations Reg. Date
3861132 Computer software in the field of cryptographic network security October 12, 2010 and data security functions; computer software for integration of information logic and data between computer networks; computer software for automating a process for authentication of identity using existing databases in connection with the issuance and management of digital certificates used for authentication or encryption of digital communications, or authentication of a digital signature in an electronic transaction or communication, over the Internet and other computer networks; computer software to integrate managed security services, namely, public key infrastructure ("PKI") services, digital certificate issuance, verification, and management, and enterprise software integration, with existing communications networks, software, and services; downloadable electronic publications in the nature of a newsletter in the field of information technology;
Printed matter, namely, newsletters, instructional materials and teaching materials in the field of information technology;
business management services, namely, providing outsource management services to others in the field of digital certificate authentication; advanced computerized database management services;
Notice of Opposition of App. No. 87/916600 Symantec Corporation v. Civic Technologies, Inc. Page 5
Providing extended warranties for authentication, encryption and certification services used to provide security in electronic transactions and communications that take place over the Internet and other computer networks; administration and processing of claims under extended warranties of authentication, encryption and certification services used to provide security in electronic transactions and communications that take place over the Internet and other computer networks;
Educational services, namely, providing instruction in the fields of the Internet, computer network addresses, and Internet domain name issues; providing news in the nature of current event reporting in the field of domain name disputes; providing a nondownloadable on-line newsletter in the field of information technology;
Providing authentication of identity; issuance and management of digital certificates for authentication or encryption of a digital communication, or authentication of a digital signature in an electronic transaction or communication, over the Internet and other computer network and providing technical and customer support in connection therewith; development, design, implementation, testing, analysis, and consulting services in the field of security, access, authorization, authentication encryption, and identification systems for computers, computer hardware and computer networks; development, integration and operation of computer systems to support issuance and management of digital certificates; creation and implementation of procedures and practices for issuance and management of digital certificates; computer related services, namely, managed computer network and Internet security services, namely, public key infrastructure ('PM') verification, authentication, distribution and management, digital certificate issuance, verification and management, and enterprise software integration;
Business services in the nature of managed public key infrastructure services, namely, application and network infrastructure security services; business management, namely, digital certificate issuance services. 4354348 Computer antivirus software; computer software for providing June 18, 2013 network, Internet, and computer security; computer software for providing online identity protection and parental control; computer software for providing intrusion detection and prevention; computer software for scanning, detecting, and
Notice of Opposition of App. No. 87/916600 Symantec Corporation v. Civic Technologies, Inc. Page 6
removing viruses, worms, Trojan horses, adware, spyware, and other malware; Internet security software, including computer software for use in the monitoring and control of computer and online activity; computer software for providing online transaction security; fraud protection software; computer optimization software; computer software to prevent, diagnose, and repair computer problems; computer maintenance software; computer software for the back-up, storage, restoration and recovery of data, folders, and files; enterprise security software; fire wall software; privacy control software; content filtering software; cloning software, namely, software for cloning computer hard drives, software for cloning computer operating systems, software for cloning data files, software reconfiguring personal computers; computer software for the creation of virtual private network; computer utility software; computer utility software for removal of computer applications and software; utility software for facilitating computer use at remote locations and for facilitating communications among mobile users over networks; computer software, namely, middleware for interfacing client applications and networked or host based databases; computer software for use in updating other computer software; computer software for connecting and managing remote computers, for synchronization of files through e-mail, for providing security to remote computer users, for implementing computer, software and network security measures for remote computer users; computer software for file management and transfer; computer software for telecommuting, namely, for connecting to and use of a remote computer network, a remote computer and mobile devices; computer software for use with a home or remote office for connecting computer network users to global networks; computer software and recorded databases for use in diagnosis, repair and configuration of computers, computer software and computer peripherals; computer software, hardware, firmware and peripherals for network and Internet security data and system protection, and storage, server, client, and application performance management; computer hardware; computer hardware appliances that provide firewall, content filtering, intrusion alert, virus protection, virtual private networking and other security functions and file serving storage management; computer software for use in file, disk and systems management; computer software for use in data storage management and storage area networks; computer software for backing up and restoring computer data; computer software for use in disaster recovery; computer software for use in removable storage media management; computer software for monitoring, identifying, and rectifying file, disk, system, and computer network problems and
Notice of Opposition of App. No. 87/916600 Symantec Corporation v. Civic Technologies, Inc. Page 7
errors; computer software for use in the field of enterprise information management; computer software for use in the field of online analytical processing (OLAP); computer software for generating reports from databases; computer software for scheduling automated processes; computer software for use in the central management of computer attached to a computer network; computer software for replicating and archiving files from one data store to another; computer software for metering the use of the other computer software; computer software for use in developing data analysis applications and other computer software; computer programs for data security for use with data communications applications, and for the encryption and authentication of electronic information; computer programs for use in the field of computer system administration, namely, programs for the administration and management of computer programs and electronic data about computer systems; computer programs for managing the software configurations of computer systems and computer networks; computer programs for the sending and receiving of computer software across a computer network to accomplish software distribution and computer programs for installing and upgrading other computer software without manual user intervention; computer programs for copying data from one electronic storage medium to another electronic storage medium; computer programs for remotely monitoring, evaluating, demonstrating and controlling other computer programs or computer processes; computer programs for locking- down one or more computers on a computer network; computer hardware and software for authenticating users and maintaining and managing access to computer data, computer content, electronic communications, and computer networks; embedded software for network monitoring and security; embedded software for authenticating users and maintaining and managing access to computer data, computer content, electronic communications, and computer networks; computer software, namely, content management software which filters, monitors, reports on and controls use of and access to locations on computer systems and networks and on global communication networks; electronic mail and news group filtering software which prevents or shunts delivery of defined categories or origins of electronic mail messages and news postings; protection software which detects electronic inquiries for information from computer systems or of users of computer systems and organizes, monitors, controls and prevents provision of such information; privacy management software which prevents, monitors, certifies, aggregates and reports on the distribution and use of personal identification information on computer systems and networks and
Notice of Opposition of App. No. 87/916600 Symantec Corporation v. Civic Technologies, Inc. Page 8
on global communications networks; file transfer filtering software which prevents, monitors, reports on or shunts delivery of defined categories, origins, volumes, or timeframes of electronic files; and chat filtering software which prevents, monitors, reports on, analyzes, or shunts delivery of defined categories, senders, recipients, origins, volumes or timeframes of conversations transmitted or stored electronically; downloadable electronic publications in the nature of reference, user, technical and instructional manuals and data sheets for use with computer software, hardware, peripherals and firmware and downloadable electronic publications in the nature of manuals, blogs, instructional materials, teaching materials, newsletters, magazines, newspapers, books and pamphlets in the fields of computer software and computer and on-line security;
Computer user manuals in the field of computers, computer software, computer peripherals, computer security, computer services, and computer networks; printed matter and publications, namely, magazines and conference materials in the field of computers, computer software, computer peripherals, and computer networks; paper labels and paper printed hologram labels;
Transmittal of anti-virus scanning and other network security software via a global computer network; information and consultancy with regard to aforementioned services;
Electronic storage of data files for clients to store and retrieve data via a global computer network; electronic document and email archiving services;
Development of software for network and Internet security and data encryption; computer consultation; computer consultation in the field of computer security; computer diagnostic services; computer services, namely, filtering of unwanted and unsolicited email; computer services, namely, data recovery services; technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems; technical support services, namely, providing back-up computer programs and facilities; computer virus protection services; computer software installation services; technical consultation in the field of computer software installation and maintenance; development, updating, publishing and maintenance of software for networks and standalone computers in the fields of security, database management, and anti-virus protection and monitoring security systems; providing information in the field of computer
Notice of Opposition of App. No. 87/916600 Symantec Corporation v. Civic Technologies, Inc. Page 9
network and Internet security; providing technical information in the field of computer software applications; application service provider services, namely, providing on-line, non-downloadable software for computer security testing in the fields of computer and Internet security; updating computer software; providing information in the field of computer database, software, hardware, and network operation, design and development; computer monitoring services in the nature of tracking hardware and software performance and processes and sending reports thereof; monitoring the computer systems of others for technical purposes and providing back-up computer programs and facilities; integration of computer systems and networks; computer services, namely, providing information concerning the encryption and authentication of electronic data for website and ecommerce transaction security; computer and software consultancy services in the fields of digital media, data encryption, computer security, communication security and computer software; encryption and decryption of data and communications; creating indexes of information available on websites and filtering unwanted electronic transmissions from websites; providing security threat management systems, namely, monitoring and tracking of security vulnerabilities and problems in computer software products, the Internet, and computer networks; providing information about accessing computer security, preventing computer threats and design and development of computer security hardware and software applications;
Monitoring of computer systems for security purposes; monitoring computer networks for security purposes; providing user authentication services in e-commerce transactions; providing information about computer and Internet security in the nature of administering digital keys and certificates. 4368939 Computer antivirus software; computer software for providing July 16, 2013 network, Internet, and computer security; computer software for
providing online identity protection and parental control; computer software for providing intrusion detection and prevention; computer software for scanning, detecting, and removing viruses, worms, Trojan horses, adware, spyware, and other malware; Internet security software, including computer software for use in the monitoring and control of computer and online activity; computer software for providing online transaction security; fraud protection software; computer optimization software; computer software to prevent, diagnose, and repair computer problems; computer maintenance software;
Notice of Opposition of App. No. 87/916600 Symantec Corporation v. Civic Technologies, Inc. Page 10
computer software for the back-up, storage, restoration and recovery of data, folders, and files; firewall software; privacy control software; content filtering software; downloadable electronic publications in the nature of reference, user, technical and instructional manuals and data sheets for use with computer software, and firmware and downloadable electronic publications in the nature of manuals, blogs, instructional materials, teaching materials, newsletters, magazines, newspapers, books and pamphlets in the fields of computer software and computer and on-line security;
Computer user manuals in the field of computers, computer software, computer security, computer services, and computer networks; printed matter and publications, namely, books in the field of computers and computer software;
Electronic storage of data files for clients to store and retrieve data via a global computer network;
Computer consultation; computer consultation in the field of computer security; computer diagnostic services; computer services, namely, data recovery services; technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems; technical support services, namely, providing back-up computer programs and facilities; computer virus protection services; computer software installation services; technical consultation in the field of computer software installation and maintenance; development, updating, publishing and maintenance of software for networks and standalone computers in the fields of security, database management, and anti-virus protection and monitoring security systems; providing information in the field of computer network and Internet security; providing technical information in the field of computer software applications; providing information concerning encryption of electronic data for website and e- commerce transaction security; computer and software consultancy services in the fields of digital media, data encryption, computer security, communication security and computer software; encryption and decryption of data and communications; providing security threat management systems, namely, monitoring and tracking of security vulnerabilities and problems in computer software products, the Internet, and computer networks; providing information about assessing computer security, preventing computer threats and design and development of computer security hardware and software applications;
Notice of Opposition of App. No. 87/916600 Symantec Corporation v. Civic Technologies, Inc. Page 11
Monitoring of computer systems for security purposes; monitoring computer networks for security purposes; providing information concerning authentication of user identification data for e-commerce transaction security. 4368938 Computer antivirus software; computer software for providing July 16, 2013 network, Internet, and computer security; computer software for providing online identity protection and parental control; computer software for providing intrusion detection and prevention; computer software for scanning, detecting, and removing viruses, worms, Trojan horses, adware, spyware, and other malware; Internet security software, including computer software for use in the monitoring and control of computer and online activity; computer software for providing online transaction security; fraud protection software; computer optimization software; computer software to prevent, diagnose, and repair computer problems; computer maintenance software; computer software for the back-up, storage, restoration and recovery of data, folders, and files; enterprise security software; fire wall software; privacy control software; content filtering software; cloning software, namely, software for cloning computer hard drives, software for cloning computer operating systems, software for cloning data files, software reconfiguring personal computers; computer software for the creation of virtual private network; computer utility software; computer utility software for removal of computer applications and software; utility software for facilitating computer use at remote locations and for facilitating communications among mobile users over networks; computer software, namely, middleware for interfacing client applications and networked or host based databases; computer software for use in updating other computer software; computer software for connecting and managing remote computers, for synchronization of files through e-mail, for providing security to remote computer users, for implementing computer, software and network security measures for remote computer users; computer software for file management and transfer; computer software for telecommuting, namely, for connecting to and use of a remote computer network, a remote computer and mobile devices; computer software for use with a home or remote office for connecting computer network users to global networks; computer software and recorded databases for use in diagnosis, repair and configuration of computers, computer software and computer peripherals; computer software, hardware, firmware and peripherals for network and Internet security data and system protection, and storage, server, client, and application
Notice of Opposition of App. No. 87/916600 Symantec Corporation v. Civic Technologies, Inc. Page 12
performance management; computer hardware; computer hardware appliances that provide firewall, content filtering, intrusion alert, virus protection, virtual private networking and other security functions and file serving storage management; computer software for use in file, disk and systems management; computer software for use in data storage management and storage area networks; computer software for backing up and restoring computer data; computer software for use in disaster recovery; computer software for use in removable storage media management; computer software for monitoring, identifying, and rectifying file, disk, system, and computer network problems and errors; computer software for use in the field of enterprise information management; computer software for use in the field of online analytical processing (OLAP); computer software for generating reports from databases; computer software for scheduling automated processes; computer software for use in the central management of computer attached to a computer network; computer software for replicating and archiving files from one data store to another; computer software for metering the use of the other computer software; computer software for use in developing data analysis applications and other computer software; computer programs for data security for use with data communications applications, and for the encryption and authentication of electronic information; computer programs for use in the field of computer system administration, namely, programs for the administration and management of computer programs and electronic data about computer systems; computer programs for managing the software configurations of computer systems and computer networks; computer programs for the sending and receiving of computer software across a computer network to accomplish software distribution and computer programs for installing and upgrading other computer software without manual user intervention; computer programs for copying data from one electronic storage medium to another electronic storage medium; computer programs for remotely monitoring, evaluating, demonstrating and controlling other computer programs or computer processes; computer programs for locking- down one or more computers on a computer network; computer hardware and software for authenticating users and maintaining and managing access to computer data, computer content, electronic communications, and computer networks; embedded software for network monitoring and security; embedded software for authenticating users and maintaining and managing access to computer data, computer content, electronic communications, and computer networks; computer software, namely, content management software which filters, monitors,
Notice of Opposition of App. No. 87/916600 Symantec Corporation v. Civic Technologies, Inc. Page 13
reports on and controls use of and access to locations on computer systems and networks and on global communication networks; electronic mail and news group filtering software which prevents or shunts delivery of defined categories or origins of electronic mail messages and news postings; protection software which detects electronic inquiries for information from computer systems or of users of computer systems and organizes, monitors, controls and prevents provision of such information; privacy management software which prevents, monitors, certifies, aggregates and reports on the distribution and use of personal identification information on computer systems and networks and on global communications networks; file transfer filtering software which prevents, monitors, reports on or shunts delivery of defined categories, origins, volumes, or timeframes of electronic files; and chat filtering software which prevents, monitors, reports on, analyzes, or shunts delivery of defined categories, senders, recipients, origins, volumes or timeframes of conversations transmitted or stored electronically; downloadable electronic publications in the nature of reference, user, technical and instructional manuals and data sheets for use with computer software, hardware, peripherals and firmware and downloadable electronic publications in the nature of manuals, blogs, instructional materials, teaching materials, newsletters, magazines, newspapers, books and pamphlets in the fields of computer software and computer and on-line security;
Computer user manuals in the field of computers, computer software, computer peripherals, computer security, computer services, and computer networks; printed matter and publications, namely, magazines and conference materials in the field of computers, computer software, computer peripherals, and computer networks; paper labels and paper printed hologram labels;
Transmittal of anti-virus scanning and other network security software via a global computer network; information and consultancy with regard to aforementioned services;
Electronic storage of data files for clients to store and retrieve data via a global computer network; electronic document and email archiving services;
Development of software for network and Internet security and data encryption; computer consultation; computer consultation in the field of computer security; computer diagnostic services; computer services, namely, data recovery services; computer
Notice of Opposition of App. No. 87/916600 Symantec Corporation v. Civic Technologies, Inc. Page 14
services, namely, filtering of unwanted and unsolicited email; technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems; technical support services, namely, providing back-up computer programs and facilities; computer virus protection services; computer software installation services; technical consultation in the field of computer software installation and maintenance; development, updating, publishing and maintenance of software for networks and standalone computers in the fields of security, database management, and anti-virus protection and monitoring security systems; providing information in the field of computer network and Internet security; providing technical information in the field of computer software applications; application service provider services, namely, providing on-line, non-downloadable software for computer security testing in the fields of computer and Internet security; updating computer software; providing information in the field of computer database, software, hardware and network operation, design and development; providing information about accessing computer security, preventing computer threats and design and development of computer security hardware and software applications; computer monitoring services in the nature of tracking hardware and software performance and processes and sending reports thereof; monitoring the computer systems of others for technical purposes and providing back-up computer programs and facilities; integration of computer systems and networks; computer services, namely, providing information concerning the encryption and authentication of electronic data for website and e-commerce transaction security; computer and software consultancy services in the fields of digital media, data encryption, computer security, communication security and computer software; encryption and decryption of data and communications; creating indexes of information available on websites and filtering unwanted electronic transmissions from websites; providing security threat management systems, namely, monitoring and tracking of security vulnerabilities and problems in computer software products, the Internet, and computer networks;
Monitoring of computer systems for security purposes; monitoring computer networks for security purposes; providing user authentication services in e-commerce transactions; providing information about computer and Internet security in the nature of administering digital keys and certificates. 4672009 Electronic storage of data files for clients to store and retrieve January 13, 2015
Notice of Opposition of App. No. 87/916600 Symantec Corporation v. Civic Technologies, Inc. Page 15
data via a global computer network; electronic document and email archiving services
Development of software for network and Internet security and data encryption; publishing of software for networks and standalone computers in the fields of security, database management, and anti-virus protection and monitoring security systems; application service provider services, namely, providing on-line, non-downloadable software for computer security testing in the fields of computer and Internet security; creating indexes of information available on websites and filtering unwanted electronic transmissions from websites; computer services, namely, filtering of unwanted and unsolicited email 4690810 Computer software for cryptographic network security and data February 24, 2015 security functions; computer software for integration of information logic and data between computer networks; computer software for automating a process for authentication of identity using existing databases in connection with the issuance and management of digital certificates used for authentication or encryption of digital communications, or authentication of a digital signature in an electronic transaction or communication, over the Internet and other computer networks; computer software, namely, encryption software to enable secure transmission of digital information, namely, confidential, financial and credit card information over the Internet, as well as over other modes of communication between computing devices; computer software to integrate managed security services, namely, public key infrastructure (PKI) services, digital certificate issuance, verification, management and enterprise software integration, with existing communications networks, software and services; computer software for use in analysis and reporting of firewall log data; computer software for identity security; computer software for authentication and identity management information security; computer software for digital information and data access; computer software for detecting identity fraud; computer software and firmware for the management, transmission, and storage of data and information; computer software for use in networking computers; computer software for use in monitoring computers for security purposes; computer software for use with computer servers for controlling and managing server applications; downloadable electronic
Notice of Opposition of App. No. 87/916600 Symantec Corporation v. Civic Technologies, Inc. Page 16
publications in the nature of manuals, white papers, articles, and technical documentation manuals in the fields of computer hardware and software, digital telecommunications, consumer electronics, and information technologies
Providing authentication of website operator identity, namely, IP address verification services; providing technical and customer support services, namely encryption of a digital communication and technical support in the nature of computer help desk services for issuance and management of digital certificates for digital communication and digital signature authentication and encryption, over the Internet and other computer network; development, design, implementation, testing, analysis, and consulting services in the field of security, access, authorization, authentication encryption, and identification systems for computers, computer hardware and computer networks; development, integration and operation of computer systems to support issuance and management of digital certificates; creating and implementing software for issuing and managing digital certificates; computer consulting services in the field of security integration, network security, network architecture, encryption technology, and computer security; security verification of computer network firewalls, servers and other network devices from unauthorized access, namely, analyzing global computer information network and internal computer network vulnerability; providing electronic data storage services; application service provider services, namely, providing on-line, non-downloadable software for computer security testing in the fields of computer and Internet security
Managed public key infrastructure services, namely, authentication, issuance and validation of digital certificates; providing user authentication services in e-commerce transactions; issuance of digital certificates for authentication; providing authentication of identity in the nature of authentication of personal identification information; identification verification services, namely, providing authentication of personal identification information; security consulting about creating and implementing procedures and practices for issuing and managing digital certificates.
Notice of Opposition of App. No. 87/916600 Symantec Corporation v. Civic Technologies, Inc. Page 17
True and correct copies of TSDR printouts showing the current status and title of the
registrations for these trademarks are attached as Exhibit A, and are incorporated by reference as though fully set forth herein.
5. Symantec owns numerous worldwide trademark applications for Checkmark in a
Circle Design Marks, including United States Application Serial Nos. 88126071, 88289816, and
88352424, earning a broad scope of protection. True and correct copies of TSDR printouts showing the current status and title of the United States trademark applications are attached hereto as Exhibit B, and are incorporated by reference as though fully set forth herein.
6. Said registrations are valid and subsisting and are conclusive, prima facie evidence of Symantec’s exclusive rights to use the Checkmark in a Circle Design Marks in commerce in connection with the goods and services specified therein. There is no issue as to priority, as Symantec and/or its predecessor, VeriSign, commenced use of its Checkmark in a
Circle Design Marks prior to the filing date of The Application. Further, almost all of
Symantec’s Checkmark in a Circle Design Marks matured to registration prior to the filing date of The Application, which is the subject of this proceeding.
7. Symantec’s Registration No. 3,861,132 for its Checkmark in a Circle Design logo is incontestable. As such, it constitutes conclusive evidence of the validity of the registered mark, Symantec’s ownership of the registered mark, and Symantec’s exclusive right to use the registered mark in commerce as provided in Section 33 of the Lanham Act, 15 U.S.C. § 1115.
8. By virtue of its prior, widespread, and continuous use of the Checkmark in a
Circle Design Marks, Symantec has established extensive common law rights in the Checkmark in a Circle Design logo in connection with its digital security and identity authentication software and services.
Notice of Opposition of App. No. 87/916600 Symantec Corporation v. Civic Technologies, Inc. Page 18
9. Because of the similarity between Applicant’s Checkmark in a Circle Design mark (in color) and Symantec’s Checkmark in a Circle Design Marks, and the similarities between the parties’ related goods and services, The Application is likely to cause consumer confusion, mistake, or deception in the trade and among consumers as to the source, origin, affiliation, or sponsorship of the parties’ respective goods and services.
10. Further, through Symantec’s marketing, promotion, advertising, and commercial activity, the public readily associates the Checkmark in a Circle Design logo with Symantec and its digital and cyber security software, including user identification authentication, verification of user identity, and identity theft prevention. The Checkmark in a Circle Design logo is thus a valuable asset of Symantec and a symbol of its goodwill. Symantec has received substantial press regarding its digital and cyber security software, including identity authentication services.
Such publicity further demonstrates the goodwill in the Checkmark in a Circle Design logo, and that the mark is well known to the general consuming public of the United States. As a result of the Checkmark in a Circle Design logo’s widespread and significant popularity, the mark is famous. The Checkmark in a Circle Design logo became famous prior to the filing of The
Application.
11. Registration of The Application is likely to cause dilution of the distinctive quality of Symantec’s famous Checkmark in a Circle Design logo.
Notice of Opposition of App. No. 87/916600 Symantec Corporation v. Civic Technologies, Inc. Page 19
WHEREFORE, Symantec prays that this Notice of Opposition be sustained and that The
Application be denied registration.
Respectfully submitted,
Date: April 23, 2019 /Randi Rader/ Sally M. Abel, Esq. Randi Rader, Esq. Attorneys for Opposer FENWICK & WEST LLP 801 California Street Mountain View, CA 94041 650-988-8500 [email protected]
Notice of Opposition of App. No. 87/916600 Symantec Corporation v. Civic Technologies, Inc. Page 20
Exhibit A
Status Search SN 3861132 Page 1 of 10
Due to high-volume usage, you may experience intermittent issues on the Trademark Status and Document Retrieval (TSDR) system between 6 – 8 a.m. ET. Refreshing your web browser should resolve the issue. If you still need assistance accessing a document, email [email protected] and include your serial number, the document you are looking for, and a screenshot of any error messages you have received.
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STATUS DOCUMENTS MAINTENANCE Back to Search Print
Generated on: This page was generated by TSDR on 2019-04-22 18:47:18 EDT
Mark:
US Serial Number: 76607897 Application Filing Date: Aug. 20, 2004
US Registration Number: 3861132 Registration Date: Oct. 12, 2010
Register: Principal
Mark Type: Trademark, Service Mark
TM5 Common Status LIVE/REGISTRATION/Issued and Active Descriptor: The trademark application has been registered with the Office.
Status: A Sections 8 and 15 combined declaration has been accepted and acknowledged.
Status Date: Dec. 23, 2016
Publication Date: May 29, 2007 Notice of Allowance Date: Aug. 21, 2007
Mark Information
Mark Literal Elements: None
Standard Character Claim: No
Mark Drawing Type: 2 - AN ILLUSTRATION DRAWING WITHOUT ANY WORDS(S)/ LETTER(S)/NUMBER(S)
Color(s) Claimed: Color is not claimed as a feature of the mark.
Design Search Code(s): 24.17.15 - Check marks 26.01.01 - Circles as carriers or as single line borders
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 in the field of cryptographic network security and data security functions; computer software for integration of information logic and data between computer networks; computer software for automating a process for authentication of identity using existing databases in connection with the issuance and management of digital certificates used for authentication or encryption of digital communications, or authentication of a digital signature in an electronic transaction or communication, over the Internet and other computer networks; computer software to integrate managed security services, namely, public key infrastructure ("PKI") services, digital certificate issuance, verification, and management, and enterprise software integration, with existing communications networks, software, and services; downloadable electronic publications in the nature of a newsletter in the field of information technology
International Class(es): 009 - Primary Class U.S Class(es): 021, 023, 026, 036, 038
Class Status: ACTIVE
Basis: 1(a)
http://tsdr.uspto.gov/ 4/22/2019 Status Search SN 3861132 Page 2 of 10
First Use: Sep. 07, 2004 Use in Commerce: Sep. 07, 2004
For: Printed matter, namely, newsletters, instructional materials and teaching materials in the field of information technology
International Class(es): 016 - Primary Class U.S Class(es): 002, 005, 022, 023, 029, 037, 038, 050
Class Status: ACTIVE
Basis: 1(a)
First Use: Sep. 07, 2004 Use in Commerce: Sep. 07, 2004
For: [ Commercial information and directory services; providing commercial information and on-line directory information services for locating Internet and other computer network addresses and demographic information for entities, and providing a directory of organizations, individuals, addresses, and resources accessible through the use of the Internet and other computer networks; ] business management services, namely, providing outsource management services to others in the field of digital certificate authentication; advanced computerized database management services
International Class(es): 035 - Primary Class U.S Class(es): 100, 101, 102
Class Status: ACTIVE
Basis: 1(a)
First Use: Sep. 07, 2004 Use in Commerce: Sep. 07, 2004
For: Providing extended warranties for authentication, encryption and certification services used to provide security in electronic transactions and communications that take place over the Internet and other computer networks; administration and processing of claims under extended warranties of authentication, encryption and certification services used to provide security in electronic transactions and communications that take place over the Internet and other computer networks
International Class(es): 036 - Primary Class U.S Class(es): 100, 101, 102
Class Status: ACTIVE
Basis: 1(a)
First Use: Sep. 07, 2004 Use in Commerce: Sep. 07, 2004
For: Educational services, namely, providing instruction in the fields of the Internet, computer network addresses, and Internet domain name issues; providing news in the nature of current event reporting in the field of domain name disputes; providing a nondownloadable on-line newsletter in the field of information technology
International Class(es): 041 - Primary Class U.S Class(es): 100, 101, 107
Class Status: ACTIVE
Basis: 1(a)
First Use: Sep. 07, 2004 Use in Commerce: Sep. 07, 2004
For: Providing authentication of identity; issuance and management of digital certificates for authentication or encryption of a digital communication, or authentication of a digital signature in an electronic transaction or communication, over the Internet and other computer network and providing technical and customer support in connection therewith; development, design, implementation, testing, analysis, and consulting services in the field of security, access, authorization, authentication encryption, and identification systems for computers, computer hardware and computer networks; development, integration and operation of computer systems to support issuance and management of digital certificates; creation and implementation of procedures and practices for issuance and management of digital certificates; computer related services, namely, managed computer network and Internet security services, namely, public key infrastructure ('PM') verification, authentication, distribution and management, digital certificate issuance, verification and management, and enterprise software integration [; computer services, namely, enabling users of the Internet to deliver information about themselves and, if applicable, their businesses, products or services to, and to register their universal resource locators with on-line catalogues, directories, search engines and web sites, via the Internet and other computer networks; registration and tracking of domain names for identification of users on a global computer network and other computer networks; providing information in the field of services relating to the ownership rights of domain names; domain name management services, namely, Domain Name System ("DNS") management and maintenance, domain name directory management and maintenance, Domain Name System ('DNS') infrastructure services, domain name and Domain Name System ("DNS") information propagation, and resolution of Domain Name System ("DNS") requests; data conversion of computer programs data or information, namely, network, computer, database and directory services that convert an assigned number sequence into an Internet Protocol ("IF') address or uniform resource locator ('URL") for the purpose of enabling access, selection and display of online content via a wireless network; directory, discovery, and information services associated with Radio Frequency ID (RFID) and the Electronic Product Code (EPC) network ]
International Class(es): 042 - Primary Class U.S Class(es): 100, 101
Class Status: ACTIVE
Basis: 1(a)
First Use: Sep. 07, 2004 Use in Commerce: Sep. 07, 2004
http://tsdr.uspto.gov/ 4/22/2019 Status Search SN 3861132 Page 3 of 10
For: Business services in the nature of managed public key infrastructure services, namely, application and network infrastructure security services; business management, namely, digital certificate issuance services
International Class(es): 045 - Primary Class U.S Class(es): 100, 101
Class Status: ACTIVE
Basis: 1(a)
First Use: Sep. 07, 2004 Use in Commerce: Sep. 07, 2004
Basis Information (Case Level)
Filed Use: No Currently Use: Yes
Filed ITU: Yes Currently ITU: No
Filed 44D: No Currently 44E: No
Filed 44E: No Currently 66A: No
Filed 66A: No Currently No Basis: No
Filed No Basis: No
Current Owner(s) Information
Owner Name: SYMANTEC CORPORATION
Owner Address: 350 ELLIS STREET MOUNTAIN VIEW, CALIFORNIA UNITED STATES 94043
Legal Entity Type: CORPORATION State or Country Where DELAWARE Organized:
Attorney/Correspondence Information
Attorney of Record
Attorney Name: Sally M. Abel, Esq. Docket Number: 25389-70166
Attorney Primary Email [email protected] Attorney Email Authorized: Yes Address:
Correspondent
Correspondent Sally M. Abel, Esq. Name/Address: Fenwick & West LLP 801 California Street Silicon Valley Center Mountain View, CALIFORNIA UNITED STATES 94041
Phone: (650) 988-8500 Fax: (650) 938-5200
Correspondent e-mail: [email protected] [email protected] Correspondent e-mail Yes Authorized:
Domestic Representative - Not Found
Prosecution History
Date Description Proceeding Number
Dec. 23, 2016 NOTICE OF ACCEPTANCE OF SEC. 8 & 15 - E-MAILED
Dec. 23, 2016 REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK. 76873
Dec. 20, 2016 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 76873
Oct. 12, 2016 TEAS SECTION 8 & 15 RECEIVED
Jul. 14, 2011 NOTICE OF SUIT
Oct. 12, 2010 REGISTERED-PRINCIPAL REGISTER
Sep. 08, 2010 ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY
Sep. 07, 2010 NOTICE OF ACCEPTANCE OF STATEMENT OF USE E-MAILED
Sep. 04, 2010 LAW OFFICE REGISTRATION REVIEW COMPLETED 68123
Sep. 04, 2010 ASSIGNED TO LIE 68123
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Aug. 30, 2010 ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
Aug. 30, 2010 TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
Aug. 24, 2010 ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED
Aug. 23, 2010 STATEMENT OF USE PROCESSING COMPLETE 76538
Aug. 16, 2010 USE AMENDMENT FILED 76538
Aug. 16, 2010 PAPER RECEIVED
Feb. 24, 2010 EXTENSION 5 GRANTED 76538
Feb. 19, 2010 EXTENSION 5 FILED 76538
Feb. 19, 2010 TEAS EXTENSION RECEIVED
Aug. 27, 2009 EXTENSION 4 GRANTED 76538
Aug. 21, 2009 EXTENSION 4 FILED 76538
Aug. 21, 2009 TEAS EXTENSION RECEIVED
Feb. 09, 2009 EXTENSION 3 GRANTED 98765
Feb. 09, 2009 EXTENSION 3 FILED 98765
Feb. 09, 2009 TEAS EXTENSION RECEIVED
Jan. 30, 2009 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Sep. 02, 2008 EXTENSION 2 GRANTED 76538
Aug. 20, 2008 EXTENSION 2 FILED 76538
Sep. 02, 2008 CASE ASSIGNED TO INTENT TO USE PARALEGAL 76538
Aug. 20, 2008 TEAS EXTENSION RECEIVED
Feb. 20, 2008 EXTENSION 1 GRANTED 98765
Feb. 20, 2008 EXTENSION 1 FILED 98765
Feb. 20, 2008 TEAS EXTENSION RECEIVED
Jan. 10, 2008 FAX RECEIVED
Aug. 21, 2007 NOA MAILED - SOU REQUIRED FROM APPLICANT
May 29, 2007 PUBLISHED FOR OPPOSITION
May 09, 2007 NOTICE OF PUBLICATION
Apr. 24, 2007 CHANGES/CORRECTIONS AFTER PUB APPROVAL ENTERED 76572
Apr. 11, 2007 WITHDRAWN FROM ISSUE - EXAMINING ATTORNEY REQUEST 60579
Apr. 10, 2007 PUBLISHED FOR OPPOSITION
Mar. 21, 2007 NOTICE OF PUBLICATION
Feb. 22, 2007 LAW OFFICE PUBLICATION REVIEW COMPLETED 76538
Feb. 21, 2007 ASSIGNED TO LIE 76538
Jan. 18, 2007 EXAMINERS AMENDMENT MAILED
Jan. 17, 2007 APPROVED FOR PUB - PRINCIPAL REGISTER
Jan. 17, 2007 EXAMINER'S AMENDMENT ENTERED 88888
Jan. 17, 2007 EXAMINERS AMENDMENT -WRITTEN 74662
Jan. 16, 2007 PREVIOUS ALLOWANCE COUNT WITHDRAWN
Dec. 18, 2006 WITHDRAWN FROM PUB - OG REVIEW QUERY 61844
Nov. 15, 2006 LAW OFFICE PUBLICATION REVIEW COMPLETED 70997
Nov. 09, 2006 ASSIGNED TO LIE 70997
Nov. 01, 2006 ASSIGNED TO LIE 62282
Oct. 26, 2006 APPROVED FOR PUB - PRINCIPAL REGISTER
Oct. 26, 2006 EXAMINER'S AMENDMENT ENTERED 70997
Oct. 25, 2006 EXAMINERS AMENDMENT MAILED
Oct. 25, 2006 EXAMINERS AMENDMENT -WRITTEN 74662
Oct. 16, 2006 AMENDMENT FROM APPLICANT ENTERED 70629
Sep. 29, 2006 CORRESPONDENCE RECEIVED IN LAW OFFICE 70629
Sep. 29, 2006 PAPER RECEIVED
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Apr. 12, 2006 NON-FINAL ACTION MAILED
Apr. 12, 2006 NON-FINAL ACTION WRITTEN 74662
Apr. 07, 2006 PREVIOUS ALLOWANCE COUNT WITHDRAWN
Apr. 03, 2006 WITHDRAWN FROM PUB - OG REVIEW QUERY 77908
Mar. 13, 2006 LAW OFFICE PUBLICATION REVIEW COMPLETED 74192
Mar. 03, 2006 ASSIGNED TO LIE 74192
Mar. 02, 2006 EXAMINERS AMENDMENT MAILED
Mar. 02, 2006 APPROVED FOR PUB - PRINCIPAL REGISTER
Mar. 02, 2006 EXAMINER'S AMENDMENT ENTERED 88888
Mar. 02, 2006 EXAMINERS AMENDMENT -WRITTEN 74662
Mar. 01, 2006 AMENDMENT FROM APPLICANT ENTERED 70629
Jan. 24, 2006 CORRESPONDENCE RECEIVED IN LAW OFFICE 70629
Jan. 24, 2006 PAPER RECEIVED
Jan. 06, 2006 NON-FINAL ACTION MAILED
Jan. 05, 2006 NON-FINAL ACTION WRITTEN 74662
Dec. 14, 2005 PREVIOUS ALLOWANCE COUNT WITHDRAWN
Dec. 05, 2005 WITHDRAWN FROM PUB - OG REVIEW QUERY 77908
Nov. 03, 2005 LAW OFFICE PUBLICATION REVIEW COMPLETED 70629
Oct. 28, 2005 ASSIGNED TO LIE 70629
Oct. 21, 2005 APPROVED FOR PUB - PRINCIPAL REGISTER
Oct. 13, 2005 AMENDMENT FROM APPLICANT ENTERED 70629
Sep. 26, 2005 CORRESPONDENCE RECEIVED IN LAW OFFICE 70629
Sep. 26, 2005 PAPER RECEIVED
Mar. 24, 2005 NON-FINAL ACTION MAILED
Mar. 24, 2005 NON-FINAL ACTION WRITTEN 74662
Mar. 22, 2005 ASSIGNED TO EXAMINER 74662
Dec. 13, 2004 TEAS CHANGE OF OWNER ADDRESS RECEIVED
Nov. 03, 2004 APPLICANT AMENDMENT PRIOR TO EXAMINATION - ENTERED 76869
Nov. 03, 2004 PAPER RECEIVED
Aug. 31, 2004 NEW APPLICATION ENTERED IN TRAM
TM Staff and Location Information
TM Staff Information - None File Location
Current Location: TMO LAW OFFICE 111 Date in Location: Dec. 23, 2016
Assignment Abstract Of Title Information
Summary Conveyance Filter
Total Assignments: 1 Registrant: VeriSign, Inc.
Assignment 1 of 1
Conveyance: ASSIGNS THE ENTIRE INTEREST
Reel/Frame: 4269/0964 Pages: 12
Date Recorded: Aug. 30, 2010
Supporting Documents: assignment-tm-4269-0964.pdf
Assignor
Name: VERISIGN, INC. Execution Date: Aug. 09, 2010
Legal Entity Type: CORPORATION State or Country Where DELAWARE Organized:
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Assignee
Name: SYMANTEC CORPORATION
Legal Entity Type: CORPORATION State or Country Where DELAWARE Organized:
Address: 350 ELLIS STREET MOUNTAIN VIEW, CALIFORNIA 94043
Correspondent
Correspondent Name: SALLY M. ABEL, ESQ.
Correspondent Address: 801 CALIFORNIA STREET SILICON VALLEY CENTER MOUNTAIN VIEW, CA 94041
Domestic Representative - Not Found
Proceedings
Summary Party type Proceeding type
Number of Proceedings: 5
Type of Proceeding: Opposition
Proceeding Number: 91247626 Filing Date: Apr 17, 2019
Status: Pending Status Date: Apr 17, 2019
Interlocutory Attorney: REBECCA J STEMPIEN COYLE
Defendant
Name: Integrity Risk International LLC
Correspondent Address: GREGORY P BRUMMETT BRUMMETT TECHLAW PLLC 2201 COOPERATIVE DR, STE 600 HERNDON VA , 20171
Correspondent e-mail: [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
INTEGRITYRISK IMPACT Opposition Pending 88014720
Plaintiff(s)
Name: Symantec Corporation
Correspondent Address: SALLY M. ABEL, ESQ. AND RANDI RADER, ESQ. FENWICK & WEST LLP 801 CALIFORNIA STREET SILICON VALLEY CENTER MOUNTAIN VIEW CA UNITED STATES , 94041
Correspondent e-mail: [email protected] , [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
Section 8 and 15 - Accepted and 76607897 3861132 Acknowledged
Registered 85154143 4354348
NORTON BY SYMANTEC Registered 85163095 4368939
SYMANTEC Registered 85163091 4368938
SYMANTEC.CLOUD Registered 85185160 4672009
SYMANTEC Registered 86150175 4690810
NORTON LIFELOCK Non-Final Action - Mailed 88126071
New Application - NORTON 88289816 Assigned to Examiner
LIFELOCK WITH NORTON 88352424
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New Application - Assigned to Examiner
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Apr 17, 2019
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Apr 17, 2019 May 27, 2019
3 INSTITUTED Apr 17, 2019
Type of Proceeding: Opposition
Proceeding Number: 91247631 Filing Date: Apr 17, 2019
Status: Pending Status Date: Apr 17, 2019
Interlocutory Attorney: MARY B MYLES
Defendant
Name: Integrity Risk International LLC
Correspondent Address: GREGORY P BRUMMETT BRUMMETT TECHLAW PLLC 2201 COOPERATIVE DR, STE 600 HERNDON VA , 20171
Correspondent e-mail: [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
INTEGRITYRISK WEALTH Opposition Pending 88014674
Plaintiff(s)
Name: Symantec Corporation
Correspondent Address: SALLY M. ABEL, ESQ. AND RANDI RADER, ESQ. FENWICK & WEST LLP 801 CALIFORNIA STREET SILICON VALLEY CENTER MOUNTAIN VIEW CA UNITED STATES , 94043
Correspondent e-mail: [email protected] , [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
Section 8 and 15 - Accepted and 76607897 3861132 Acknowledged
Registered 85154143 4354348
NORTON BY SYMANTEC Registered 85163095 4368939
SYMANTEC Registered 85163091 4368938
SYMANTEC.CLOUD Registered 85185160 4672009
SYMANTEC Registered 86150175 4690810
NORTON LIFELOCK Non-Final Action - Mailed 88126071
New Application - NORTON 88289816 Assigned to Examiner
New Application - LIFELOCK WITH NORTON 88352424 Assigned to Examiner
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Apr 17, 2019
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Apr 17, 2019 May 27, 2019
3 INSTITUTED Apr 17, 2019
Type of Proceeding: Opposition
Proceeding Number: 91245781 Filing Date: Jan 10, 2019
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Status: Pending Status Date: Jan 10, 2019
Interlocutory Attorney: WINSTON T FOLMAR
Defendant
Name: UAV Recon
Correspondent Address: EDWARD C SCHEWE COTMAN IP LAW GROUP PLC 35 HUGUS ALLEY, SUITE 210 PASADENA CA UNITED STATES , 91103
Correspondent e-mail: [email protected] , [email protected] , [email protected] , [email protected] , [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
VOLT VISUAL ONLINE LINEMAN TEAM Opposition Pending 87861687
Plaintiff(s)
Name: Symantec Corporation
Correspondent Address: RANDI RADER FENWICK & WEST LLP 801 CALIFORNIA STREET, SILICON VALLEY CENTER MOUNTAIN VIEW CA UNITED STATES , 94041
Correspondent e-mail: [email protected] , [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
Section 8 and 15 - Accepted and 76607897 3861132 Acknowledged
Registered 85154143 4354348
NORTON BY SYMANTEC Registered 85163095 4368939
SYMANTEC Registered 85163091 4368938
SYMANTEC.CLOUD Registered 85185160 4672009
SYMANTEC Registered 86150175 4690810
NORTON LIFELOCK Non-Final Action - Mailed 88126071
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Jan 10, 2019
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Jan 10, 2019 Feb 19, 2019
3 PENDING, INSTITUTED Jan 10, 2019
4 MOT TO AMEND APPLICATION Feb 13, 2019
5 P MOT FOR EXT W/ CONSENT Feb 14, 2019
6 RESPONSE DUE 30 DAYS (DUE DATE) Mar 05, 2019 Apr 04, 2019
7 MOT TO AMEND APPLICATION Mar 25, 2019
8 RESPONSE DUE 30 DAYS (DUE DATE) Apr 04, 2019 May 04, 2019
9 MOT TO AMEND APPLICATION Apr 10, 2019
Type of Proceeding: Opposition
Proceeding Number: 91243581 Filing Date: Sep 12, 2018
Status: Terminated Status Date: Oct 24, 2018
Interlocutory Attorney: ANDREW P BAXLEY
Defendant
Name: Transunion Interactive, Inc.
Correspondent Address: JULIE NICHOLS MATTHEWS LATHROP GAGE LLP 155 NORTH WACKER DRIVE, SUITE 3000 CHICAGO IL UNITED STATES , 60606-1787
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Correspondent e-mail: [email protected] , [email protected] , [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
Abandoned - After Inter- TRUECREDIT 87687220 Partes Decision
Plaintiff(s)
Name: Symantec Corporation
Correspondent Address: SALLY M ABEL FENWICK & WEST LLP 801 CALIFORNIA STREET, SILICON VALLEY CENTER MOUNTAIN VIEW CA UNITED STATES , 94041
Correspondent e-mail: [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
Section 8 and 15 - Accepted and 76607897 3861132 Acknowledged
Registered 85154143 4354348
NORTON BY SYMANTEC Registered 85163095 4368939
SYMANTEC Registered 85163091 4368938
SYMANTEC.CLOUD Registered 85185160 4672009
SYMANTEC Registered 86150175 4690810
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Sep 12, 2018
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Sep 12, 2018 Oct 22, 2018
3 PENDING, INSTITUTED Sep 12, 2018
4 W/DRAW OF APPLICATION Oct 22, 2018
5 BD DECISION: OPP DISMISSED W/O PREJ Oct 24, 2018
6TERMINATED Oct 24, 2018
Type of Proceeding: Opposition
Proceeding Number: 91199719 Filing Date: May 09, 2011
Status: Terminated Status Date: May 10, 2012
Interlocutory Attorney: GEORGE POLOGEORGIS
Defendant
Name: Comodo Group, Inc., Comodo CA Limited
Correspondent Address: STEPEHN CANNAVALE COMODO LEGAL DEPARTMENT 525 WASHINGTON BLVD, STE 1400 JERSEY CITY NJ UNITED STATES , 07310
Correspondent e-mail: [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
Abandoned - After Inter- C COMODO SECURE 85055223 Partes Decision
Plaintiff(s)
Name: Symantec Corporation
Correspondent Address: GUINEVERE L JOBSON FENWICK & WEST LLP 555 CALIFORNIA ST SAN FRANCISCO CA UNITED STATES , 94104
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Correspondent e-mail: [email protected] , [email protected] , [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
V Cancelled - Section 8 76665358 3671293
Section 8 and 15 - Accepted and 76607897 3861132 Acknowledged
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE May 09, 2011
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: May 09, 2011 Jun 18, 2011
3 PENDING, INSTITUTED May 09, 2011
4ANSWER Jun 20, 2011
5 STIP TO SUSPEND PEND SETTLEMENT NEGOTNS Jul 06, 2011
6 SUSPENDED Jul 07, 2011
7 STIP TO SUSPEND PEND SETTLEMENT NEGOTNS Sep 06, 2011
8 SUSPENDED Sep 06, 2011
9 WITHDRAWAL OF APPLICATION May 04, 2012
10 BOARD'S DECISION: SUSTAINED May 10, 2012
11 TERMINATED May 10, 2012
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STATUS DOCUMENTS MAINTENANCE Back to Search Print
Generated on: This page was generated by TSDR on 2019-04-22 18:50:05 EDT
Mark:
US Serial Number: 85154143 Application Filing Date: Oct. 15, 2010
US Registration Number: 4354348 Registration Date: Jun. 18, 2013
Register: Principal
Mark Type: Trademark, Service Mark
TM5 Common Status LIVE/REGISTRATION/Issued and Active Descriptor: 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: Jun. 18, 2013
Publication Date: Sep. 13, 2011 Notice of Allowance Date: Nov. 08, 2011
Mark Information
Mark Literal Elements: None
Standard Character Claim: No
Mark Drawing Type: 2 - AN ILLUSTRATION DRAWING WITHOUT ANY WORDS(S)/ LETTER(S)/NUMBER(S)
Description of Mark: The mark consists of a circle with a checkmark in the center of the circle.
Color(s) Claimed: Color is not claimed as a feature of the mark.
Design Search Code(s): 24.17.15 - Check marks 26.01.02 - Circles, plain single line; Plain single line circles 26.09.14 - Squares, three or more; Three or more squares 26.09.16 - Squares touching or intersecting 26.09.21 - Squares that are completely or partially shaded
Related Properties Information
Claimed Ownership of US 2459141, 3671293, 3861132 and others Registrations:
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 antivirus software; computer software for providing network, Internet, and computer security; computer software for providing online identity protection and parental control; computer software for providing intrusion detection and prevention; computer software for
http://tsdr.uspto.gov/ 4/22/2019 Status Search SN 4354348 Page 2 of 8
scanning, detecting, and removing viruses, worms, Trojan horses, adware, spyware, and other malware; Internet security software, including computer software for use in the monitoring and control of computer and online activity; computer software for providing online transaction security; fraud protection software; computer optimization software; computer software to prevent, diagnose, and repair computer problems; computer maintenance software; computer software for the back-up, storage, restoration and recovery of data, folders, and files; enterprise security software; fire wall software; privacy control software; content filtering software; cloning software, namely, software for cloning computer hard drives, software for cloning computer operating systems, software for cloning data files, software reconfiguring personal computers; computer software for the creation of virtual private network; computer utility software; computer utility software for removal of computer applications and software; utility software for facilitating computer use at remote locations and for facilitating communications among mobile users over networks; computer software, namely, middleware for interfacing client applications and networked or host based databases; computer software for use in updating other computer software; computer software for connecting and managing remote computers, for synchronization of files through e-mail, for providing security to remote computer users, for implementing computer, software and network security measures for remote computer users; computer software for file management and transfer; computer software for telecommuting, namely, for connecting to and use of a remote computer network, a remote computer and mobile devices; computer software for use with a home or remote office for connecting computer network users to global networks; computer software and recorded databases for use in diagnosis, repair and configuration of computers, computer software and computer peripherals; computer software, hardware, firmware and peripherals for network and Internet security data and system protection, and storage, server, client, and application performance management; computer hardware; computer hardware appliances that provide firewall, content filtering, intrusion alert, virus protection, virtual private networking and other security functions and file serving storage management; computer software for use in file, disk and systems management; computer software for use in data storage management and storage area networks; computer software for backing up and restoring computer data; computer software for use in disaster recovery; computer software for use in removable storage media management; computer software for monitoring, identifying, and rectifying file, disk, system, and computer network problems and errors; computer software for use in the field of enterprise information management; computer software for use in the field of online analytical processing (OLAP); computer software for generating reports from databases; computer software for scheduling automated processes; computer software for use in the central management of computer attached to a computer network; computer software for replicating and archiving files from one data store to another; computer software for metering the use of the other computer software; computer software for use in developing data analysis applications and other computer software; computer programs for data security for use with data communications applications, and for the encryption and authentication of electronic information; computer programs for use in the field of computer system administration, namely, programs for the administration and management of computer programs and electronic data about computer systems; computer programs for managing the software configurations of computer systems and computer networks; computer programs for the sending and receiving of computer software across a computer network to accomplish software distribution and computer programs for installing and upgrading other computer software without manual user intervention; computer programs for copying data from one electronic storage medium to another electronic storage medium; computer programs for remotely monitoring, evaluating, demonstrating and controlling other computer programs or computer processes; computer programs for locking-down one or more computers on a computer network; computer hardware and software for authenticating users and maintaining and managing access to computer data, computer content, electronic communications, and computer networks; embedded software for network monitoring and security; embedded software for authenticating users and maintaining and managing access to computer data, computer content, electronic communications, and computer networks; computer software, namely, content management software which filters, monitors, reports on and controls use of and access to locations on computer systems and networks and on global communication networks; electronic mail and news group filtering software which prevents or shunts delivery of defined categories or origins of electronic mail messages and news postings; protection software which detects electronic inquiries for information from computer systems or of users of computer systems and organizes, monitors, controls and prevents provision of such information; privacy management software which prevents, monitors, certifies, aggregates and reports on the distribution and use of personal identification information on computer systems and networks and on global communications networks; file transfer filtering software which prevents, monitors, reports on or shunts delivery of defined categories, origins, volumes, or timeframes of electronic files; and chat filtering software which prevents, monitors, reports on, analyzes, or shunts delivery of defined categories, senders, recipients, origins, volumes or timeframes of conversations transmitted or stored electronically; downloadable electronic publications in the nature of reference, user, technical and instructional manuals and data sheets for use with computer software, hardware, peripherals and firmware and downloadable electronic publications in the nature of manuals, blogs, instructional materials, teaching materials, newsletters, magazines, newspapers, books and pamphlets in the fields of computer software and computer and on-line security
International Class(es): 009 - Primary Class U.S Class(es): 021, 023, 026, 036, 038
Class Status: ACTIVE
Basis: 1(a)
First Use: Oct. 2010 Use in Commerce: Oct. 2010
For: Computer user manuals in the field of computers, computer software, computer peripherals, computer security, computer services, and computer networks; printed matter and publications, namely, magazines and conference materials in the field of computers, computer software, computer peripherals, and computer networks; paper labels and paper printed hologram labels
International Class(es): 016 - Primary Class U.S Class(es): 002, 005, 022, 023, 029, 037, 038, 050
Class Status: ACTIVE
Basis: 1(a)
First Use: Oct. 2010 Use in Commerce: Oct. 2010
For:
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Transmittal of anti-virus scanning and other network security software via a global computer network; information and consultancy with regard to aforementioned services
International Class(es): 038 - Primary Class U.S Class(es): 100, 101, 104
Class Status: ACTIVE
Basis: 1(a)
First Use: Oct. 2010 Use in Commerce: Oct. 2010
For: Electronic storage of data files for clients to store and retrieve data via a global computer network; electronic document and email archiving services
International Class(es): 039 - Primary Class U.S Class(es): 100, 105
Class Status: ACTIVE
Basis: 1(a)
First Use: Oct. 2010 Use in Commerce: Oct. 2010
For: Development of software for network and Internet security and data encryption; computer consultation; computer consultation in the field of computer security; computer diagnostic services; computer services, namely, filtering of unwanted and unsolicited email; computer services, namely, data recovery services; technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems; technical support services, namely, providing back-up computer programs and facilities; computer virus protection services; computer software installation services; technical consultation in the field of computer software installation and maintenance; development, updating, publishing and maintenance of software for networks and standalone computers in the fields of security, database management, and anti-virus protection and monitoring security systems; providing information in the field of computer network and Internet security; providing technical information in the field of computer software applications; application service provider services, namely, providing on-line, non-downloadable software for computer security testing in the fields of computer and Internet security; updating computer software; providing information in the field of computer database, software, hardware, and network operation, design and development; computer monitoring services in the nature of tracking hardware and software performance and processes and sending reports thereof; monitoring the computer systems of others for technical purposes and providing back-up computer programs and facilities; integration of computer systems and networks; computer services, namely, providing information concerning the encryption and authentication of electronic data for website and ecommerce transaction security; computer and software consultancy services in the fields of digital media, data encryption, computer security, communication security and computer software; encryption and decryption of data and communications; creating indexes of information available on websites and filtering unwanted electronic transmissions from websites; providing security threat management systems, namely, monitoring and tracking of security vulnerabilities and problems in computer software products, the Internet, and computer networks; providing information about accessing computer security, preventing computer threats and design and development of computer security hardware and software applications
International Class(es): 042 - Primary Class U.S Class(es): 100, 101
Class Status: ACTIVE
Basis: 1(a)
First Use: Oct. 2010 Use in Commerce: Oct. 2010
For: Monitoring of computer systems for security purposes; monitoring computer networks for security purposes; providing user authentication services in e-commerce transactions; providing information about computer and Internet security in the nature of administering digital keys and certificates
International Class(es): 045 - Primary Class U.S Class(es): 100, 101
Class Status: ACTIVE
Basis: 1(a)
First Use: Oct. 2010 Use in Commerce: Oct. 2010
Basis Information (Case Level)
Filed Use: No Currently Use: Yes
Filed ITU: Yes Currently ITU: No
Filed 44D: No Currently 44E: No
Filed 44E: No Currently 66A: No
Filed 66A: No Currently No Basis: No
Filed No Basis: No
Current Owner(s) Information
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Owner Name: Symantec Corporation
Owner Address: 350 Ellis Street Mountain View, CALIFORNIA UNITED STATES 94043
Legal Entity Type: CORPORATION State or Country Where DELAWARE Organized:
Attorney/Correspondence Information
Attorney of Record
Attorney Name: Sally M. Abel, Esq. Docket Number: 25389-70166
Attorney Primary Email [email protected] Attorney Email Authorized: No Address:
Correspondent
Correspondent SALLY M. ABEL, ESQ. Name/Address: FENWICK & WEST LLP 801 CALIFORNIA ST MOUNTAIN VIEW, CALIFORNIA UNITED STATES 94041-1990
Phone: (650) 988-8500 Fax: (650) 938-5200
Correspondent e-mail: [email protected] Correspondent e-mail Yes Authorized:
Domestic Representative - Not Found
Prosecution History
Date Description Proceeding Number
Jun. 18, 2018 COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED
Jun. 18, 2013 REGISTERED-PRINCIPAL REGISTER
May 14, 2013 NOTICE OF ACCEPTANCE OF STATEMENT OF USE E- MAILED
May 13, 2013 LAW OFFICE REGISTRATION REVIEW COMPLETED 68171
May 10, 2013 ASSIGNED TO LIE 68171
May 10, 2013 ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED
May 08, 2013 STATEMENT OF USE PROCESSING COMPLETE 65362
May 07, 2013 USE AMENDMENT FILED 65362
May 07, 2013 TEAS STATEMENT OF USE RECEIVED
Nov. 16, 2012 NOTICE OF APPROVAL OF EXTENSION REQUEST E- MAILED
Nov. 15, 2012 EXTENSION 2 GRANTED 65362
Nov. 08, 2012 EXTENSION 2 FILED 65362
Nov. 08, 2012 TEAS EXTENSION RECEIVED
Jun. 01, 2012 NOTICE OF APPROVAL OF EXTENSION REQUEST E- MAILED
May 31, 2012 EXTENSION 1 GRANTED 65362
May 08, 2012 EXTENSION 1 FILED 65362
May 31, 2012 CASE ASSIGNED TO INTENT TO USE PARALEGAL 65362
May 08, 2012 TEAS EXTENSION RECEIVED
Nov. 08, 2011 NOA E-MAILED - SOU REQUIRED FROM APPLICANT
Sep. 13, 2011 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E- MAILED
Sep. 13, 2011 PUBLISHED FOR OPPOSITION
Aug. 09, 2011 LAW OFFICE PUBLICATION REVIEW COMPLETED 65581
Aug. 09, 2011 ASSIGNED TO LIE 65581
Jul. 27, 2011 APPROVED FOR PUB - PRINCIPAL REGISTER
http://tsdr.uspto.gov/ 4/22/2019 Status Search SN 4354348 Page 5 of 8
Jul. 20, 2011 TEAS/EMAIL CORRESPONDENCE ENTERED 88889
Jul. 19, 2011 CORRESPONDENCE RECEIVED IN LAW OFFICE 88889
Jul. 19, 2011 TEAS RESPONSE TO OFFICE ACTION RECEIVED
Jan. 19, 2011 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325
Jan. 19, 2011 NON-FINAL ACTION E-MAILED 6325
Jan. 19, 2011 NON-FINAL ACTION WRITTEN 83706
Jan. 12, 2011 ASSIGNED TO EXAMINER 83706
Oct. 22, 2010 NOTICE OF DESIGN SEARCH CODE MAILED
Oct. 21, 2010 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
Oct. 19, 2010 NEW APPLICATION ENTERED IN TRAM
TM Staff and Location Information
TM Staff Information - None File Location
Current Location: PUBLICATION AND ISSUE SECTION Date in Location: May 13, 2013
Assignment Abstract Of Title Information - None recorded
Proceedings
Summary Party type Proceeding type
Number of Proceedings: 4
Type of Proceeding: Opposition
Proceeding Number: 91247626 Filing Date: Apr 17, 2019
Status: Pending Status Date: Apr 17, 2019
Interlocutory Attorney: REBECCA J STEMPIEN COYLE
Defendant
Name: Integrity Risk International LLC
Correspondent Address: GREGORY P BRUMMETT BRUMMETT TECHLAW PLLC 2201 COOPERATIVE DR, STE 600 HERNDON VA , 20171
Correspondent e-mail: [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
INTEGRITYRISK IMPACT Opposition Pending 88014720
Plaintiff(s)
Name: Symantec Corporation
Correspondent Address: SALLY M. ABEL, ESQ. AND RANDI RADER, ESQ. FENWICK & WEST LLP 801 CALIFORNIA STREET SILICON VALLEY CENTER MOUNTAIN VIEW CA UNITED STATES , 94041
Correspondent e-mail: [email protected] , [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
Section 8 and 15 - Accepted and 76607897 3861132 Acknowledged
Registered 85154143 4354348
NORTON BY SYMANTEC Registered 85163095 4368939
http://tsdr.uspto.gov/ 4/22/2019 Status Search SN 4354348 Page 6 of 8
SYMANTEC Registered 85163091 4368938
SYMANTEC.CLOUD Registered 85185160 4672009
SYMANTEC Registered 86150175 4690810
NORTON LIFELOCK Non-Final Action - Mailed 88126071
New Application - NORTON 88289816 Assigned to Examiner
New Application - LIFELOCK WITH NORTON 88352424 Assigned to Examiner
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Apr 17, 2019
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Apr 17, 2019 May 27, 2019
3 INSTITUTED Apr 17, 2019
Type of Proceeding: Opposition
Proceeding Number: 91247631 Filing Date: Apr 17, 2019
Status: Pending Status Date: Apr 17, 2019
Interlocutory Attorney: MARY B MYLES
Defendant
Name: Integrity Risk International LLC
Correspondent Address: GREGORY P BRUMMETT BRUMMETT TECHLAW PLLC 2201 COOPERATIVE DR, STE 600 HERNDON VA , 20171
Correspondent e-mail: [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
INTEGRITYRISK WEALTH Opposition Pending 88014674
Plaintiff(s)
Name: Symantec Corporation
Correspondent Address: SALLY M. ABEL, ESQ. AND RANDI RADER, ESQ. FENWICK & WEST LLP 801 CALIFORNIA STREET SILICON VALLEY CENTER MOUNTAIN VIEW CA UNITED STATES , 94043
Correspondent e-mail: [email protected] , [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
Section 8 and 15 - Accepted and 76607897 3861132 Acknowledged
Registered 85154143 4354348
NORTON BY SYMANTEC Registered 85163095 4368939
SYMANTEC Registered 85163091 4368938
SYMANTEC.CLOUD Registered 85185160 4672009
SYMANTEC Registered 86150175 4690810
NORTON LIFELOCK Non-Final Action - Mailed 88126071
New Application - NORTON 88289816 Assigned to Examiner
New Application - LIFELOCK WITH NORTON 88352424 Assigned to Examiner
Prosecution History
Entry Number History Text Date Due Date
http://tsdr.uspto.gov/ 4/22/2019 Status Search SN 4354348 Page 7 of 8
1 FILED AND FEE Apr 17, 2019
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Apr 17, 2019 May 27, 2019
3 INSTITUTED Apr 17, 2019
Type of Proceeding: Opposition
Proceeding Number: 91245781 Filing Date: Jan 10, 2019
Status: Pending Status Date: Jan 10, 2019
Interlocutory Attorney: WINSTON T FOLMAR
Defendant
Name: UAV Recon
Correspondent Address: EDWARD C SCHEWE COTMAN IP LAW GROUP PLC 35 HUGUS ALLEY, SUITE 210 PASADENA CA UNITED STATES , 91103
Correspondent e-mail: [email protected] , [email protected] , [email protected] , [email protected] , [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
VOLT VISUAL ONLINE LINEMAN TEAM Opposition Pending 87861687
Plaintiff(s)
Name: Symantec Corporation
Correspondent Address: RANDI RADER FENWICK & WEST LLP 801 CALIFORNIA STREET, SILICON VALLEY CENTER MOUNTAIN VIEW CA UNITED STATES , 94041
Correspondent e-mail: [email protected] , [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
Section 8 and 15 - Accepted and 76607897 3861132 Acknowledged
Registered 85154143 4354348
NORTON BY SYMANTEC Registered 85163095 4368939
SYMANTEC Registered 85163091 4368938
SYMANTEC.CLOUD Registered 85185160 4672009
SYMANTEC Registered 86150175 4690810
NORTON LIFELOCK Non-Final Action - Mailed 88126071
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Jan 10, 2019
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Jan 10, 2019 Feb 19, 2019
3 PENDING, INSTITUTED Jan 10, 2019
4 MOT TO AMEND APPLICATION Feb 13, 2019
5 P MOT FOR EXT W/ CONSENT Feb 14, 2019
6 RESPONSE DUE 30 DAYS (DUE DATE) Mar 05, 2019 Apr 04, 2019
7 MOT TO AMEND APPLICATION Mar 25, 2019
8 RESPONSE DUE 30 DAYS (DUE DATE) Apr 04, 2019 May 04, 2019
9 MOT TO AMEND APPLICATION Apr 10, 2019
Type of Proceeding: Opposition
Proceeding Number: 91243581 Filing Date: Sep 12, 2018
Status: Terminated Status Date: Oct 24, 2018
http://tsdr.uspto.gov/ 4/22/2019 Status Search SN 4354348 Page 8 of 8
Interlocutory Attorney: ANDREW P BAXLEY
Defendant
Name: Transunion Interactive, Inc.
Correspondent Address: JULIE NICHOLS MATTHEWS LATHROP GAGE LLP 155 NORTH WACKER DRIVE, SUITE 3000 CHICAGO IL UNITED STATES , 60606-1787
Correspondent e-mail: [email protected] , [email protected] , [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
Abandoned - After Inter- TRUECREDIT 87687220 Partes Decision
Plaintiff(s)
Name: Symantec Corporation
Correspondent Address: SALLY M ABEL FENWICK & WEST LLP 801 CALIFORNIA STREET, SILICON VALLEY CENTER MOUNTAIN VIEW CA UNITED STATES , 94041
Correspondent e-mail: [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
Section 8 and 15 - Accepted and 76607897 3861132 Acknowledged
Registered 85154143 4354348
NORTON BY SYMANTEC Registered 85163095 4368939
SYMANTEC Registered 85163091 4368938
SYMANTEC.CLOUD Registered 85185160 4672009
SYMANTEC Registered 86150175 4690810
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Sep 12, 2018
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Sep 12, 2018 Oct 22, 2018
3 PENDING, INSTITUTED Sep 12, 2018
4 W/DRAW OF APPLICATION Oct 22, 2018
5 BD DECISION: OPP DISMISSED W/O PREJ Oct 24, 2018
6TERMINATED Oct 24, 2018
http://tsdr.uspto.gov/ 4/22/2019 Status Search SN 4368939 Page 1 of 7
Due to high-volume usage, you may experience intermittent issues on the Trademark Status and Document Retrieval (TSDR) system between 6 – 8 a.m. ET. Refreshing your web browser should resolve the issue. If you still need assistance accessing a document, email [email protected] and include your serial number, the document you are looking for, and a screenshot of any error messages you have received.
Starting Oct. 4, 2018, bulk data customers should no longer obtain direct access to TSDR data through tsdrsec.uspto.gov. There are two alternative ways to receive bulk data from TSDR.
STATUS DOCUMENTS MAINTENANCE Back to Search Print
Generated on: This page was generated by TSDR on 2019-04-22 18:51:59 EDT
Mark: NORTON BY SYMANTEC
US Serial Number: 85163095 Application Filing Date: Oct. 27, 2010
US Registration Number: 4368939 Registration Date: Jul. 16, 2013
Register: Principal
Mark Type: Trademark, Service Mark
TM5 Common Status LIVE/REGISTRATION/Issued and Active Descriptor: 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: Jul. 16, 2013
Publication Date: Oct. 04, 2011 Notice of Allowance Date: Nov. 29, 2011
Mark Information
Mark Literal Elements: NORTON BY SYMANTEC
Standard Character Claim: No
Mark Drawing Type: 3 - AN ILLUSTRATION DRAWING WHICH INCLUDES WORD(S)/ LETTER(S)/NUMBER(S)
Description of Mark: The mark consists of a circle with a checkmark in the center of the circle appearing next to the words "NORTON BY SYMANTEC".
Color(s) Claimed: Color is not claimed as a feature of the mark.
Design Search Code(s): 24.17.15 - Check marks 26.01.02 - Plain single line circles; Circles, plain single line
Related Properties Information
Claimed Ownership of US 1508960, 1560627, 1654777 and others Registrations:
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 antivirus software; computer software for providing network, Internet, and computer security; computer software for providing online identity protection and parental control; computer software for providing intrusion detection and prevention; computer software for scanning, detecting, and removing viruses, worms, Trojan horses, adware, spyware, and other malware; Internet security software, including computer software for use in the monitoring and control of computer and online activity; computer software for providing online transaction security; fraud protection software; computer optimization software; computer software to prevent, diagnose, and repair computer problems; computer maintenance software; computer software for the back-up, storage, restoration and recovery of data, folders, and files; firewall software; privacy control software; content filtering software; downloadable electronic publications in the nature of reference, user, technical and instructional manuals and data sheets for use with computer software, and firmware and downloadable electronic publications in the nature of manuals, blogs, instructional materials, teaching materials, newsletters, magazines, newspapers, books and pamphlets in the fields of computer software and computer and on-line security
http://tsdr.uspto.gov/ 4/22/2019 Status Search SN 4368939 Page 2 of 7
International Class(es): 009 - Primary Class U.S Class(es): 021, 023, 026, 036, 038
Class Status: ACTIVE
Basis: 1(a)
First Use: Oct. 2010 Use in Commerce: Oct. 2010
For: Computer user manuals in the field of computers, computer software, computer security, computer services, and computer networks; printed matter and publications, namely, books in the field of computers and computer software
International Class(es): 016 - Primary Class U.S Class(es): 002, 005, 022, 023, 029, 037, 038, 050
Class Status: ACTIVE
Basis: 1(a)
First Use: Jun. 2011 Use in Commerce: Jun. 2011
For: Electronic storage of data files for clients to store and retrieve data via a global computer network
International Class(es): 039 - Primary Class U.S Class(es): 100, 105
Class Status: ACTIVE
Basis: 1(a)
First Use: Oct. 2010 Use in Commerce: Oct. 2010
For: Computer consultation; computer consultation in the field of computer security; computer diagnostic services; computer services, namely, data recovery services; technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems; technical support services, namely, providing back-up computer programs and facilities; computer virus protection services; computer software installation services; technical consultation in the field of computer software installation and maintenance; development, updating, publishing and maintenance of software for networks and standalone computers in the fields of security, database management, and anti-virus protection and monitoring security systems; providing information in the field of computer network and Internet security; providing technical information in the field of computer software applications; providing information concerning encryption of electronic data for website and e-commerce transaction security; computer and software consultancy services in the fields of digital media, data encryption, computer security, communication security and computer software; encryption and decryption of data and communications; providing security threat management systems, namely, monitoring and tracking of security vulnerabilities and problems in computer software products, the Internet, and computer networks; providing information about assessing computer security, preventing computer threats and design and development of computer security hardware and software applications
International Class(es): 042 - Primary Class U.S Class(es): 100, 101
Class Status: ACTIVE
Basis: 1(a)
First Use: Oct. 2010 Use in Commerce: Oct. 2010
For: Monitoring of computer systems for security purposes; monitoring computer networks for security purposes; providing information concerning authentication of user identification data for e-commerce transaction security
International Class(es): 045 - Primary Class U.S Class(es): 100, 101
Class Status: ACTIVE
Basis: 1(a)
First Use: Oct. 2010 Use in Commerce: Oct. 2010
Basis Information (Case Level)
Filed Use: No Currently Use: Yes
Filed ITU: Yes Currently ITU: No
Filed 44D: No Currently 44E: No
Filed 44E: No Currently 66A: No
Filed 66A: No Currently No Basis: No
Filed No Basis: No
Current Owner(s) Information
Owner Name: Symantec Corporation
Owner Address: 350 Ellis Street
http://tsdr.uspto.gov/ 4/22/2019 Status Search SN 4368939 Page 3 of 7
Mountain View, CALIFORNIA UNITED STATES 94043
Legal Entity Type: CORPORATION State or Country Where DELAWARE Organized:
Attorney/Correspondence Information
Attorney of Record
Attorney Name: Sally M. Abel, Esq. Docket Number: 25389-70165
Attorney Primary Email [email protected] Attorney Email Authorized: No Address:
Correspondent
Correspondent SALLY M. ABEL, ESQ. Name/Address: FENWICK & WEST LLP 801 CALIFORNIA ST MOUNTAIN VIEW, CALIFORNIA UNITED STATES 94041-1990
Phone: (650) 988-8500 Fax: (650) 938-5200
Correspondent e-mail: [email protected] Correspondent e-mail Yes Authorized:
Domestic Representative - Not Found
Prosecution History
Date Description Proceeding Number
Jul. 16, 2018 COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED
Jul. 16, 2013 REGISTERED-PRINCIPAL REGISTER
Jun. 13, 2013 NOTICE OF ACCEPTANCE OF STATEMENT OF USE E- MAILED
Jun. 12, 2013 LAW OFFICE REGISTRATION REVIEW COMPLETED 68552
Jun. 08, 2013 ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED
Jun. 05, 2013 STATEMENT OF USE PROCESSING COMPLETE 66230
May 29, 2013 USE AMENDMENT FILED 66230
May 29, 2013 TEAS STATEMENT OF USE RECEIVED
Jan. 09, 2013 NOTICE OF APPROVAL OF EXTENSION REQUEST E- MAILED
Jan. 08, 2013 EXTENSION 2 GRANTED 66230
Nov. 28, 2012 EXTENSION 2 FILED 66230
Nov. 28, 2012 TEAS EXTENSION RECEIVED
Jun. 22, 2012 NOTICE OF APPROVAL OF EXTENSION REQUEST E- MAILED
Jun. 21, 2012 EXTENSION 1 GRANTED 66230
May 29, 2012 EXTENSION 1 FILED 66230
Jun. 20, 2012 CASE ASSIGNED TO INTENT TO USE PARALEGAL 66230
May 29, 2012 TEAS EXTENSION RECEIVED
Nov. 29, 2011 NOA E-MAILED - SOU REQUIRED FROM APPLICANT
Oct. 04, 2011 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E- MAILED
Oct. 04, 2011 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E- MAILED
Oct. 04, 2011 PUBLISHED FOR OPPOSITION
Aug. 30, 2011 LAW OFFICE PUBLICATION REVIEW COMPLETED 68552
Aug. 25, 2011 ASSIGNED TO LIE 68552
Aug. 11, 2011 APPROVED FOR PUB - PRINCIPAL REGISTER
Aug. 11, 2011 EXAMINER'S AMENDMENT ENTERED 88888
Aug. 11, 2011 NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED 6328
http://tsdr.uspto.gov/ 4/22/2019 Status Search SN 4368939 Page 4 of 7
Aug. 11, 2011 EXAMINERS AMENDMENT E-MAILED 6328
Aug. 11, 2011 EXAMINERS AMENDMENT -WRITTEN 83706
Jul. 20, 2011 TEAS/EMAIL CORRESPONDENCE ENTERED 88889
Jul. 19, 2011 CORRESPONDENCE RECEIVED IN LAW OFFICE 88889
Jul. 19, 2011 TEAS RESPONSE TO OFFICE ACTION RECEIVED
Jan. 19, 2011 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325
Jan. 19, 2011 NON-FINAL ACTION E-MAILED 6325
Jan. 19, 2011 NON-FINAL ACTION WRITTEN 83706
Jan. 12, 2011 ASSIGNED TO EXAMINER 83706
Nov. 03, 2010 NOTICE OF DESIGN SEARCH CODE MAILED
Nov. 02, 2010 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
Oct. 30, 2010 NEW APPLICATION ENTERED IN TRAM
TM Staff and Location Information
TM Staff Information - None File Location
Current Location: PUBLICATION AND ISSUE SECTION Date in Location: Jun. 12, 2013
Assignment Abstract Of Title Information - None recorded
Proceedings
Summary Party type Proceeding type
Number of Proceedings: 4
Type of Proceeding: Opposition
Proceeding Number: 91247626 Filing Date: Apr 17, 2019
Status: Pending Status Date: Apr 17, 2019
Interlocutory Attorney: REBECCA J STEMPIEN COYLE
Defendant
Name: Integrity Risk International LLC
Correspondent Address: GREGORY P BRUMMETT BRUMMETT TECHLAW PLLC 2201 COOPERATIVE DR, STE 600 HERNDON VA , 20171
Correspondent e-mail: [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
INTEGRITYRISK IMPACT Opposition Pending 88014720
Plaintiff(s)
Name: Symantec Corporation
Correspondent Address: SALLY M. ABEL, ESQ. AND RANDI RADER, ESQ. FENWICK & WEST LLP 801 CALIFORNIA STREET SILICON VALLEY CENTER MOUNTAIN VIEW CA UNITED STATES , 94041
Correspondent e-mail: [email protected] , [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
Section 8 and 15 - Accepted and 76607897 3861132 Acknowledged
http://tsdr.uspto.gov/ 4/22/2019 Status Search SN 4368939 Page 5 of 7
Registered 85154143 4354348
NORTON BY SYMANTEC Registered 85163095 4368939
SYMANTEC Registered 85163091 4368938
SYMANTEC.CLOUD Registered 85185160 4672009
SYMANTEC Registered 86150175 4690810
NORTON LIFELOCK Non-Final Action - Mailed 88126071
New Application - NORTON 88289816 Assigned to Examiner
New Application - LIFELOCK WITH NORTON 88352424 Assigned to Examiner
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Apr 17, 2019
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Apr 17, 2019 May 27, 2019
3 INSTITUTED Apr 17, 2019
Type of Proceeding: Opposition
Proceeding Number: 91247631 Filing Date: Apr 17, 2019
Status: Pending Status Date: Apr 17, 2019
Interlocutory Attorney: MARY B MYLES
Defendant
Name: Integrity Risk International LLC
Correspondent Address: GREGORY P BRUMMETT BRUMMETT TECHLAW PLLC 2201 COOPERATIVE DR, STE 600 HERNDON VA , 20171
Correspondent e-mail: [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
INTEGRITYRISK WEALTH Opposition Pending 88014674
Plaintiff(s)
Name: Symantec Corporation
Correspondent Address: SALLY M. ABEL, ESQ. AND RANDI RADER, ESQ. FENWICK & WEST LLP 801 CALIFORNIA STREET SILICON VALLEY CENTER MOUNTAIN VIEW CA UNITED STATES , 94043
Correspondent e-mail: [email protected] , [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
Section 8 and 15 - Accepted and 76607897 3861132 Acknowledged
Registered 85154143 4354348
NORTON BY SYMANTEC Registered 85163095 4368939
SYMANTEC Registered 85163091 4368938
SYMANTEC.CLOUD Registered 85185160 4672009
SYMANTEC Registered 86150175 4690810
NORTON LIFELOCK Non-Final Action - Mailed 88126071
New Application - NORTON 88289816 Assigned to Examiner
New Application - LIFELOCK WITH NORTON 88352424 Assigned to Examiner
http://tsdr.uspto.gov/ 4/22/2019 Status Search SN 4368939 Page 6 of 7
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Apr 17, 2019
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Apr 17, 2019 May 27, 2019
3 INSTITUTED Apr 17, 2019
Type of Proceeding: Opposition
Proceeding Number: 91245781 Filing Date: Jan 10, 2019
Status: Pending Status Date: Jan 10, 2019
Interlocutory Attorney: WINSTON T FOLMAR
Defendant
Name: UAV Recon
Correspondent Address: EDWARD C SCHEWE COTMAN IP LAW GROUP PLC 35 HUGUS ALLEY, SUITE 210 PASADENA CA UNITED STATES , 91103
Correspondent e-mail: [email protected] , [email protected] , [email protected] , [email protected] , [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
VOLT VISUAL ONLINE LINEMAN TEAM Opposition Pending 87861687
Plaintiff(s)
Name: Symantec Corporation
Correspondent Address: RANDI RADER FENWICK & WEST LLP 801 CALIFORNIA STREET, SILICON VALLEY CENTER MOUNTAIN VIEW CA UNITED STATES , 94041
Correspondent e-mail: [email protected] , [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
Section 8 and 15 - Accepted and 76607897 3861132 Acknowledged
Registered 85154143 4354348
NORTON BY SYMANTEC Registered 85163095 4368939
SYMANTEC Registered 85163091 4368938
SYMANTEC.CLOUD Registered 85185160 4672009
SYMANTEC Registered 86150175 4690810
NORTON LIFELOCK Non-Final Action - Mailed 88126071
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Jan 10, 2019
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Jan 10, 2019 Feb 19, 2019
3 PENDING, INSTITUTED Jan 10, 2019
4 MOT TO AMEND APPLICATION Feb 13, 2019
5 P MOT FOR EXT W/ CONSENT Feb 14, 2019
6 RESPONSE DUE 30 DAYS (DUE DATE) Mar 05, 2019 Apr 04, 2019
7 MOT TO AMEND APPLICATION Mar 25, 2019
8 RESPONSE DUE 30 DAYS (DUE DATE) Apr 04, 2019 May 04, 2019
9 MOT TO AMEND APPLICATION Apr 10, 2019
Type of Proceeding: Opposition
Proceeding Number: 91243581 Filing Date: Sep 12, 2018
http://tsdr.uspto.gov/ 4/22/2019 Status Search SN 4368939 Page 7 of 7
Status: Terminated Status Date: Oct 24, 2018
Interlocutory Attorney: ANDREW P BAXLEY
Defendant
Name: Transunion Interactive, Inc.
Correspondent Address: JULIE NICHOLS MATTHEWS LATHROP GAGE LLP 155 NORTH WACKER DRIVE, SUITE 3000 CHICAGO IL UNITED STATES , 60606-1787
Correspondent e-mail: [email protected] , [email protected] , [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
Abandoned - After Inter- TRUECREDIT 87687220 Partes Decision
Plaintiff(s)
Name: Symantec Corporation
Correspondent Address: SALLY M ABEL FENWICK & WEST LLP 801 CALIFORNIA STREET, SILICON VALLEY CENTER MOUNTAIN VIEW CA UNITED STATES , 94041
Correspondent e-mail: [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
Section 8 and 15 - Accepted and 76607897 3861132 Acknowledged
Registered 85154143 4354348
NORTON BY SYMANTEC Registered 85163095 4368939
SYMANTEC Registered 85163091 4368938
SYMANTEC.CLOUD Registered 85185160 4672009
SYMANTEC Registered 86150175 4690810
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Sep 12, 2018
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Sep 12, 2018 Oct 22, 2018
3 PENDING, INSTITUTED Sep 12, 2018
4 W/DRAW OF APPLICATION Oct 22, 2018
5 BD DECISION: OPP DISMISSED W/O PREJ Oct 24, 2018
6TERMINATED Oct 24, 2018
http://tsdr.uspto.gov/ 4/22/2019 Status Search SN 4368938 Page 1 of 8
Due to high-volume usage, you may experience intermittent issues on the Trademark Status and Document Retrieval (TSDR) system between 6 – 8 a.m. ET. Refreshing your web browser should resolve the issue. If you still need assistance accessing a document, email [email protected] and include your serial number, the document you are looking for, and a screenshot of any error messages you have received.
Starting Oct. 4, 2018, bulk data customers should no longer obtain direct access to TSDR data through tsdrsec.uspto.gov. There are two alternative ways to receive bulk data from TSDR.
STATUS DOCUMENTS MAINTENANCE Back to Search Print
Generated on: This page was generated by TSDR on 2019-04-22 18:53:46 EDT
Mark: SYMANTEC
US Serial Number: 85163091 Application Filing Date: Oct. 27, 2010
US Registration Number: 4368938 Registration Date: Jul. 16, 2013
Register: Principal
Mark Type: Trademark, Service Mark
TM5 Common Status LIVE/REGISTRATION/Issued and Active Descriptor: 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: Jul. 16, 2013
Publication Date: Sep. 13, 2011 Notice of Allowance Date: Nov. 08, 2011
Mark Information
Mark Literal Elements: SYMANTEC
Standard Character Claim: No
Mark Drawing Type: 3 - AN ILLUSTRATION DRAWING WHICH INCLUDES WORD(S)/ LETTER(S)/NUMBER(S)
Description of Mark: The mark consists of a circle with a checkmark in the center of the circle next to the word "SYMANTEC".
Color(s) Claimed: Color is not claimed as a feature of the mark.
Design Search Code(s): 24.17.15 - Check marks 26.01.02 - Plain single line circles; Circles, plain single line
Related Properties Information
Claimed Ownership of US 3009890, 3097024, 3274187 and others Registrations:
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 antivirus software; computer software for providing network, Internet, and computer security; computer software for providing online identity protection and parental control; computer software for providing intrusion detection and prevention; computer software for scanning, detecting, and removing viruses, worms, Trojan horses, adware, spyware, and other malware; Internet security software, including computer software for use in the monitoring and control of computer and online activity; computer software for providing online transaction security; fraud protection software; computer optimization software; computer software to prevent, diagnose, and repair computer problems; computer maintenance software; computer software for the back-up, storage, restoration and recovery of data, folders, and files; enterprise security software; fire wall software; privacy control software; content filtering software; cloning software, namely, software for cloning computer hard drives, software for cloning computer operating systems, software for cloning data files, software reconfiguring personal computers; computer software for the creation of virtual private network; computer utility software; computer utility software for removal of computer applications and software; utility software for facilitating computer use at remote locations and for facilitating communications among mobile users over networks; computer software, namely, middleware for interfacing
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client applications and networked or host based databases; computer software for use in updating other computer software; computer software for connecting and managing remote computers, for synchronization of files through e-mail, for providing security to remote computer users, for implementing computer, software and network security measures for remote computer users; computer software for file management and transfer; computer software for telecommuting, namely, for connecting to and use of a remote computer network, a remote computer and mobile devices; computer software for use with a home or remote office for connecting computer network users to global networks; computer software and recorded databases for use in diagnosis, repair and configuration of computers, computer software and computer peripherals; computer software, hardware, firmware and peripherals for network and Internet security data and system protection, and storage, server, client, and application performance management; computer hardware; computer hardware appliances that provide firewall, content filtering, intrusion alert, virus protection, virtual private networking and other security functions and file serving storage management; computer software for use in file, disk and systems management; computer software for use in data storage management and storage area networks; computer software for backing up and restoring computer data; computer software for use in disaster recovery; computer software for use in removable storage media management; computer software for monitoring, identifying, and rectifying file, disk, system, and computer network problems and errors; computer software for use in the field of enterprise information management; computer software for use in the field of online analytical processing (OLAP); computer software for generating reports from databases; computer software for scheduling automated processes; computer software for use in the central management of computer attached to a computer network; computer software for replicating and archiving files from one data store to another; computer software for metering the use of the other computer software; computer software for use in developing data analysis applications and other computer software; computer programs for data security for use with data communications applications, and for the encryption and authentication of electronic information; computer programs for use in the field of computer system administration, namely, programs for the administration and management of computer programs and electronic data about computer systems; computer programs for managing the software configurations of computer systems and computer networks; computer programs for the sending and receiving of computer software across a computer network to accomplish software distribution and computer programs for installing and upgrading other computer software without manual user intervention; computer programs for copying data from one electronic storage medium to another electronic storage medium; computer programs for remotely monitoring, evaluating, demonstrating and controlling other computer programs or computer processes; computer programs for locking-down one or more computers on a computer network; computer hardware and software for authenticating users and maintaining and managing access to computer data, computer content, electronic communications, and computer networks; embedded software for network monitoring and security; embedded software for authenticating users and maintaining and managing access to computer data, computer content, electronic communications, and computer networks; computer software, namely, content management software which filters, monitors, reports on and controls use of and access to locations on computer systems and networks and on global communication networks; electronic mail and news group filtering software which prevents or shunts delivery of defined categories or origins of electronic mail messages and news postings; protection software which detects electronic inquiries for information from computer systems or of users of computer systems and organizes, monitors, controls and prevents provision of such information; privacy management software which prevents, monitors, certifies, aggregates and reports on the distribution and use of personal identification information on computer systems and networks and on global communications networks; file transfer filtering software which prevents, monitors, reports on or shunts delivery of defined categories, origins, volumes, or timeframes of electronic files; and chat filtering software which prevents, monitors, reports on, analyzes, or shunts delivery of defined categories, senders, recipients, origins, volumes or timeframes of conversations transmitted or stored electronically; downloadable electronic publications in the nature of reference, user, technical and instructional manuals and data sheets for use with computer software, hardware, peripherals and firmware and downloadable electronic publications in the nature of manuals, blogs, instructional materials, teaching materials, newsletters, magazines, newspapers, books and pamphlets in the fields of computer software and computer and on-line security
International Class(es): 009 - Primary Class U.S Class(es): 021, 023, 026, 036, 038
Class Status: ACTIVE
Basis: 1(a)
First Use: Oct. 2010 Use in Commerce: Oct. 2010
For: Computer user manuals in the field of computers, computer software, computer peripherals, computer security, computer services, and computer networks; printed matter and publications, namely, magazines and conference materials in the field of computers, computer software, computer peripherals, and computer networks; paper labels and paper printed hologram labels
International Class(es): 016 - Primary Class U.S Class(es): 002, 005, 022, 023, 029, 037, 038, 050
Class Status: ACTIVE
Basis: 1(a)
First Use: Oct. 2010 Use in Commerce: Oct. 2010
For: Transmittal of anti-virus scanning and other network security software via a global computer network; information and consultancy with regard to aforementioned services
International Class(es): 038 - Primary Class U.S Class(es): 100, 101, 104
Class Status: ACTIVE
Basis: 1(a)
First Use: Oct. 2010 Use in Commerce: Oct. 2010
For:
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Electronic storage of data files for clients to store and retrieve data via a global computer network; electronic document and email archiving services
International Class(es): 039 - Primary Class U.S Class(es): 100, 105
Class Status: ACTIVE
Basis: 1(a)
First Use: Oct. 2010 Use in Commerce: Oct. 2010
For: Development of software for network and Internet security and data encryption; computer consultation; computer consultation in the field of computer security; computer diagnostic services; computer services, namely, data recovery services; computer services, namely, filtering of unwanted and unsolicited email; technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems; technical support services, namely, providing back-up computer programs and facilities; computer virus protection services; computer software installation services; technical consultation in the field of computer software installation and maintenance; development, updating, publishing and maintenance of software for networks and standalone computers in the fields of security, database management, and anti-virus protection and monitoring security systems; providing information in the field of computer network and Internet security; providing technical information in the field of computer software applications; application service provider services, namely, providing on-line, non-downloadable software for computer security testing in the fields of computer and Internet security; updating computer software; providing information in the field of computer database, software, hardware and network operation, design and development; providing information about accessing computer security, preventing computer threats and design and development of computer security hardware and software applications; computer monitoring services in the nature of tracking hardware and software performance and processes and sending reports thereof; monitoring the computer systems of others for technical purposes and providing back-up computer programs and facilities; integration of computer systems and networks; computer services, namely, providing information concerning the encryption and authentication of electronic data for website and e-commerce transaction security; computer and software consultancy services in the fields of digital media, data encryption, computer security, communication security and computer software; encryption and decryption of data and communications; creating indexes of information available on websites and filtering unwanted electronic transmissions from websites; providing security threat management systems, namely, monitoring and tracking of security vulnerabilities and problems in computer software products, the Internet, and computer networks
International Class(es): 042 - Primary Class U.S Class(es): 100, 101
Class Status: ACTIVE
Basis: 1(a)
First Use: Oct. 2010 Use in Commerce: Oct. 2010
For: Monitoring of computer systems for security purposes; monitoring computer networks for security purposes; providing user authentication services in e-commerce transactions; providing information about computer and Internet security in the nature of administering digital keys and certificates
International Class(es): 045 - Primary Class U.S Class(es): 100, 101
Class Status: ACTIVE
Basis: 1(a)
First Use: Oct. 2010 Use in Commerce: Oct. 2010
Basis Information (Case Level)
Filed Use: No Currently Use: Yes
Filed ITU: Yes Currently ITU: No
Filed 44D: No Currently 44E: No
Filed 44E: No Currently 66A: No
Filed 66A: No Currently No Basis: No
Filed No Basis: No
Current Owner(s) Information
Owner Name: Symantec Corporation
Owner Address: 350 Ellis Street Mountain View, CALIFORNIA UNITED STATES 94043
Legal Entity Type: CORPORATION State or Country Where DELAWARE Organized:
Attorney/Correspondence Information
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Attorney of Record
Attorney Name: Sally M. Abel, Esq. Docket Number: 25389-70160
Attorney Primary Email [email protected] Attorney Email Authorized: No Address:
Correspondent
Correspondent SALLY M. ABEL, ESQ. Name/Address: FENWICK & WEST LLP 801 CALIFORNIA ST MOUNTAIN VIEW, CALIFORNIA UNITED STATES 94041-1990
Phone: (650) 988-8500 Fax: (650) 938-5200
Correspondent e-mail: [email protected] Correspondent e-mail Yes Authorized:
Domestic Representative - Not Found
Prosecution History
Date Description Proceeding Number
Jul. 16, 2018 COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED
Jul. 16, 2013 REGISTERED-PRINCIPAL REGISTER
Jun. 12, 2013 NOTICE OF ACCEPTANCE OF STATEMENT OF USE E- MAILED
Jun. 11, 2013 LAW OFFICE REGISTRATION REVIEW COMPLETED 66213
Jun. 08, 2013 ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED
May 17, 2013 STATEMENT OF USE PROCESSING COMPLETE 76538
May 07, 2013 USE AMENDMENT FILED 76538
May 07, 2013 TEAS STATEMENT OF USE RECEIVED
Nov. 14, 2012 NOTICE OF APPROVAL OF EXTENSION REQUEST E- MAILED
Nov. 13, 2012 EXTENSION 2 GRANTED 76538
Nov. 08, 2012 EXTENSION 2 FILED 76538
Nov. 08, 2012 TEAS EXTENSION RECEIVED
Jun. 01, 2012 NOTICE OF APPROVAL OF EXTENSION REQUEST E- MAILED
May 31, 2012 EXTENSION 1 GRANTED 76538
May 08, 2012 EXTENSION 1 FILED 76538
May 31, 2012 CASE ASSIGNED TO INTENT TO USE PARALEGAL 76538
May 08, 2012 TEAS EXTENSION RECEIVED
Nov. 08, 2011 NOA E-MAILED - SOU REQUIRED FROM APPLICANT
Sep. 13, 2011 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E- MAILED
Sep. 13, 2011 PUBLISHED FOR OPPOSITION
Aug. 09, 2011 LAW OFFICE PUBLICATION REVIEW COMPLETED 66213
Aug. 09, 2011 ASSIGNED TO LIE 66213
Jul. 27, 2011 APPROVED FOR PUB - PRINCIPAL REGISTER
Jul. 20, 2011 TEAS/EMAIL CORRESPONDENCE ENTERED 88889
Jul. 19, 2011 CORRESPONDENCE RECEIVED IN LAW OFFICE 88889
Jan. 19, 2011 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325
Jan. 19, 2011 NON-FINAL ACTION E-MAILED 6325
Jan. 19, 2011 NON-FINAL ACTION WRITTEN 83706
Jan. 12, 2011 ASSIGNED TO EXAMINER 83706
Nov. 03, 2010 NOTICE OF DESIGN SEARCH CODE MAILED
Nov. 02, 2010
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NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
Oct. 30, 2010 NEW APPLICATION ENTERED IN TRAM
TM Staff and Location Information
TM Staff Information - None
File Location
Current Location: PUBLICATION AND ISSUE SECTION Date in Location: Jun. 11, 2013
Assignment Abstract Of Title Information - None recorded
Proceedings
Summary Party type Proceeding type
Number of Proceedings: 4
Type of Proceeding: Opposition
Proceeding Number: 91247626 Filing Date: Apr 17, 2019
Status: Pending Status Date: Apr 17, 2019
Interlocutory Attorney: REBECCA J STEMPIEN COYLE
Defendant
Name: Integrity Risk International LLC
Correspondent Address: GREGORY P BRUMMETT BRUMMETT TECHLAW PLLC 2201 COOPERATIVE DR, STE 600 HERNDON VA , 20171
Correspondent e-mail: [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
INTEGRITYRISK IMPACT Opposition Pending 88014720
Plaintiff(s)
Name: Symantec Corporation
Correspondent Address: SALLY M. ABEL, ESQ. AND RANDI RADER, ESQ. FENWICK & WEST LLP 801 CALIFORNIA STREET SILICON VALLEY CENTER MOUNTAIN VIEW CA UNITED STATES , 94041
Correspondent e-mail: [email protected] , [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
Section 8 and 15 - Accepted and 76607897 3861132 Acknowledged
Registered 85154143 4354348
NORTON BY SYMANTEC Registered 85163095 4368939
SYMANTEC Registered 85163091 4368938
SYMANTEC.CLOUD Registered 85185160 4672009
SYMANTEC Registered 86150175 4690810
NORTON LIFELOCK Non-Final Action - Mailed 88126071
New Application - NORTON 88289816 Assigned to Examiner
New Application - LIFELOCK WITH NORTON 88352424 Assigned to Examiner
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Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Apr 17, 2019
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Apr 17, 2019 May 27, 2019
3 INSTITUTED Apr 17, 2019
Type of Proceeding: Opposition
Proceeding Number: 91247631 Filing Date: Apr 17, 2019
Status: Pending Status Date: Apr 17, 2019
Interlocutory Attorney: MARY B MYLES
Defendant
Name: Integrity Risk International LLC
Correspondent Address: GREGORY P BRUMMETT BRUMMETT TECHLAW PLLC 2201 COOPERATIVE DR, STE 600 HERNDON VA , 20171
Correspondent e-mail: [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
INTEGRITYRISK WEALTH Opposition Pending 88014674
Plaintiff(s)
Name: Symantec Corporation
Correspondent Address: SALLY M. ABEL, ESQ. AND RANDI RADER, ESQ. FENWICK & WEST LLP 801 CALIFORNIA STREET SILICON VALLEY CENTER MOUNTAIN VIEW CA UNITED STATES , 94043
Correspondent e-mail: [email protected] , [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
Section 8 and 15 - Accepted and 76607897 3861132 Acknowledged
Registered 85154143 4354348
NORTON BY SYMANTEC Registered 85163095 4368939
SYMANTEC Registered 85163091 4368938
SYMANTEC.CLOUD Registered 85185160 4672009
SYMANTEC Registered 86150175 4690810
NORTON LIFELOCK Non-Final Action - Mailed 88126071
New Application - NORTON 88289816 Assigned to Examiner
New Application - LIFELOCK WITH NORTON 88352424 Assigned to Examiner
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Apr 17, 2019
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Apr 17, 2019 May 27, 2019
3 INSTITUTED Apr 17, 2019
Type of Proceeding: Opposition
Proceeding Number: 91245781 Filing Date: Jan 10, 2019
Status: Pending Status Date: Jan 10, 2019
Interlocutory Attorney: WINSTON T FOLMAR
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Defendant
Name: UAV Recon
Correspondent Address: EDWARD C SCHEWE COTMAN IP LAW GROUP PLC 35 HUGUS ALLEY, SUITE 210 PASADENA CA UNITED STATES , 91103
Correspondent e-mail: [email protected] , [email protected] , [email protected] , [email protected] , [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
VOLT VISUAL ONLINE LINEMAN TEAM Opposition Pending 87861687
Plaintiff(s)
Name: Symantec Corporation
Correspondent Address: RANDI RADER FENWICK & WEST LLP 801 CALIFORNIA STREET, SILICON VALLEY CENTER MOUNTAIN VIEW CA UNITED STATES , 94041
Correspondent e-mail: [email protected] , [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
Section 8 and 15 - Accepted and 76607897 3861132 Acknowledged
Registered 85154143 4354348
NORTON BY SYMANTEC Registered 85163095 4368939
SYMANTEC Registered 85163091 4368938
SYMANTEC.CLOUD Registered 85185160 4672009
SYMANTEC Registered 86150175 4690810
NORTON LIFELOCK Non-Final Action - Mailed 88126071
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Jan 10, 2019
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Jan 10, 2019 Feb 19, 2019
3 PENDING, INSTITUTED Jan 10, 2019
4 MOT TO AMEND APPLICATION Feb 13, 2019
5 P MOT FOR EXT W/ CONSENT Feb 14, 2019
6 RESPONSE DUE 30 DAYS (DUE DATE) Mar 05, 2019 Apr 04, 2019
7 MOT TO AMEND APPLICATION Mar 25, 2019
8 RESPONSE DUE 30 DAYS (DUE DATE) Apr 04, 2019 May 04, 2019
9 MOT TO AMEND APPLICATION Apr 10, 2019
Type of Proceeding: Opposition
Proceeding Number: 91243581 Filing Date: Sep 12, 2018
Status: Terminated Status Date: Oct 24, 2018
Interlocutory Attorney: ANDREW P BAXLEY
Defendant
Name: Transunion Interactive, Inc.
Correspondent Address: JULIE NICHOLS MATTHEWS LATHROP GAGE LLP 155 NORTH WACKER DRIVE, SUITE 3000 CHICAGO IL UNITED STATES , 60606-1787
Correspondent e-mail: [email protected] , [email protected] , [email protected]
Associated marks
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Mark Application Status Serial Number Registration Number
Abandoned - After Inter- TRUECREDIT 87687220 Partes Decision
Plaintiff(s)
Name: Symantec Corporation
Correspondent Address: SALLY M ABEL FENWICK & WEST LLP 801 CALIFORNIA STREET, SILICON VALLEY CENTER MOUNTAIN VIEW CA UNITED STATES , 94041
Correspondent e-mail: [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
Section 8 and 15 - Accepted and 76607897 3861132 Acknowledged
Registered 85154143 4354348
NORTON BY SYMANTEC Registered 85163095 4368939
SYMANTEC Registered 85163091 4368938
SYMANTEC.CLOUD Registered 85185160 4672009
SYMANTEC Registered 86150175 4690810
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Sep 12, 2018
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Sep 12, 2018 Oct 22, 2018
3 PENDING, INSTITUTED Sep 12, 2018
4 W/DRAW OF APPLICATION Oct 22, 2018
5 BD DECISION: OPP DISMISSED W/O PREJ Oct 24, 2018
6TERMINATED Oct 24, 2018
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STATUS DOCUMENTS MAINTENANCE Back to Search Print
Generated on: This page was generated by TSDR on 2019-04-22 18:55:55 EDT
Mark: SYMANTEC.CLOUD
US Serial Number: 85185160 Application Filing Date: Nov. 24, 2010
US Registration Number: 4672009 Registration Date: Jan. 13, 2015
Register: Principal
Mark Type: Service Mark
TM5 Common Status LIVE/REGISTRATION/Issued and Active Descriptor: 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: Jan. 13, 2015
Publication Date: Oct. 04, 2011 Notice of Allowance Date: Nov. 29, 2011
Mark Information
Mark Literal Elements: SYMANTEC.CLOUD
Standard Character Claim: No
Mark Drawing Type: 3 - AN ILLUSTRATION DRAWING WHICH INCLUDES WORD(S)/ LETTER(S)/NUMBER(S)
Description of Mark: The mark consists of a circle with a checkmark in the center of the circle next to the words "SYMANTEC.CLOUD".
Color(s) Claimed: Color is not claimed as a feature of the mark.
Design Search Code(s): 24.17.15 - Check marks 26.01.02 - Plain single line circles; Circles, plain single line
Related Properties Information
Claimed Ownership of US 1683688, 3009890, 3274187 and others Registrations:
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: Electronic storage of data files for clients to store and retrieve data via a global computer network; electronic document and email archiving services
International Class(es): 039 - Primary Class U.S Class(es): 100, 105
Class Status: ACTIVE
Basis: 1(a)
First Use: Jun. 01, 2011 Use in Commerce: Jun. 01, 2011
For: Development of software for network and Internet security and data encryption; publishing of software for networks and standalone computers in the fields of security, database management, and anti-virus protection and monitoring security systems; application service
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provider services, namely, providing on-line, non-downloadable software for computer security testing in the fields of computer and Internet security; creating indexes of information available on websites and filtering unwanted electronic transmissions from websites; computer services, namely, filtering of unwanted and unsolicited email
International Class(es): 042 - Primary Class U.S Class(es): 100, 101
Class Status: ACTIVE
Basis: 1(a)
First Use: Dec. 31, 2010 Use in Commerce: Dec. 31, 2010
Basis Information (Case Level)
Filed Use: No Currently Use: Yes
Filed ITU: Yes Currently ITU: No
Filed 44D: No Currently 44E: No
Filed 44E: No Currently 66A: No
Filed 66A: No Currently No Basis: No
Filed No Basis: No
Current Owner(s) Information
Owner Name: Symantec Corporation
Owner Address: 350 Ellis Street Mountain View, CALIFORNIA UNITED STATES 94043
Legal Entity Type: CORPORATION State or Country Where DELAWARE Organized:
Attorney/Correspondence Information
Attorney of Record
Attorney Name: Sally M. Abel, Esq. Docket Number: 25389-70171
Attorney Primary Email [email protected] Attorney Email Authorized: Yes Address:
Correspondent
Correspondent SALLY M. ABEL, ESQ. Name/Address: FENWICK & WEST LLP 801 CALIFORNIA ST MOUNTAIN VIEW, CALIFORNIA UNITED STATES 94041-1990
Phone: (650) 988-8500 Fax: (650) 938-5200
Correspondent e-mail: [email protected] Correspondent e-mail Yes Authorized:
Domestic Representative - Not Found
Prosecution History
Date Description Proceeding Number
Jan. 13, 2015 REGISTERED-PRINCIPAL REGISTER
Dec. 12, 2014 NOTICE OF ACCEPTANCE OF STATEMENT OF USE E- MAILED
Dec. 11, 2014 ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED
Dec. 06, 2014 STATEMENT OF USE PROCESSING COMPLETE 66230
Nov. 26, 2014 USE AMENDMENT FILED 66230
Nov. 26, 2014 TEAS STATEMENT OF USE RECEIVED
May 30, 2014 NOTICE OF APPROVAL OF EXTENSION REQUEST E- MAILED
May 28, 2014 EXTENSION 5 GRANTED 98765
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May 28, 2014 EXTENSION 5 FILED 98765
May 28, 2014 TEAS EXTENSION RECEIVED
Nov. 27, 2013 NOTICE OF APPROVAL OF EXTENSION REQUEST E- MAILED
Nov. 25, 2013 EXTENSION 4 GRANTED 98765
Nov. 25, 2013 EXTENSION 4 FILED 98765
Nov. 25, 2013 TEAS EXTENSION RECEIVED
Jun. 05, 2013 NOTICE OF APPROVAL OF EXTENSION REQUEST E- MAILED
Jun. 04, 2013 EXTENSION 3 GRANTED 66230
May 28, 2013 EXTENSION 3 FILED 66230
May 28, 2013 TEAS EXTENSION RECEIVED
Nov. 27, 2012 NOTICE OF APPROVAL OF EXTENSION REQUEST E- MAILED
Nov. 26, 2012 EXTENSION 2 GRANTED 66230
Nov. 21, 2012 EXTENSION 2 FILED 66230
Nov. 21, 2012 TEAS EXTENSION RECEIVED
Jun. 22, 2012 NOTICE OF APPROVAL OF EXTENSION REQUEST E- MAILED
Jun. 21, 2012 EXTENSION 1 GRANTED 66230
May 29, 2012 EXTENSION 1 FILED 66230
Jun. 20, 2012 CASE ASSIGNED TO INTENT TO USE PARALEGAL 66230
May 29, 2012 TEAS EXTENSION RECEIVED
Nov. 29, 2011 NOA E-MAILED - SOU REQUIRED FROM APPLICANT
Oct. 04, 2011 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E- MAILED
Oct. 04, 2011 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E- MAILED
Oct. 04, 2011 PUBLISHED FOR OPPOSITION
Aug. 29, 2011 LAW OFFICE PUBLICATION REVIEW COMPLETED 68552
Aug. 25, 2011 ASSIGNED TO LIE 68552
Aug. 11, 2011 APPROVED FOR PUB - PRINCIPAL REGISTER
Aug. 11, 2011 EXAMINER'S AMENDMENT ENTERED 88888
Aug. 11, 2011 NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED 6328
Aug. 11, 2011 EXAMINERS AMENDMENT E-MAILED 6328
Aug. 11, 2011 EXAMINERS AMENDMENT -WRITTEN 83706
Jul. 20, 2011 TEAS/EMAIL CORRESPONDENCE ENTERED 88889
Jul. 19, 2011 CORRESPONDENCE RECEIVED IN LAW OFFICE 88889
Jul. 19, 2011 TEAS RESPONSE TO OFFICE ACTION RECEIVED
Jan. 19, 2011 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325
Jan. 19, 2011 NON-FINAL ACTION E-MAILED 6325
Jan. 19, 2011 NON-FINAL ACTION WRITTEN 83706
Jan. 12, 2011 ASSIGNED TO EXAMINER 83706
Dec. 01, 2010 NOTICE OF DESIGN SEARCH CODE MAILED
Nov. 30, 2010 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
Nov. 27, 2010 NEW APPLICATION ENTERED IN TRAM
TM Staff and Location Information
TM Staff Information - None
File Location
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Current Location: PUBLICATION AND ISSUE SECTION Date in Location: Dec. 11, 2014
Assignment Abstract Of Title Information - None recorded
Proceedings
Summary Party type Proceeding type
Number of Proceedings: 4
Type of Proceeding: Opposition
Proceeding Number: 91247626 Filing Date: Apr 17, 2019
Status: Pending Status Date: Apr 17, 2019
Interlocutory Attorney: REBECCA J STEMPIEN COYLE
Defendant
Name: Integrity Risk International LLC
Correspondent Address: GREGORY P BRUMMETT BRUMMETT TECHLAW PLLC 2201 COOPERATIVE DR, STE 600 HERNDON VA , 20171
Correspondent e-mail: [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
INTEGRITYRISK IMPACT Opposition Pending 88014720
Plaintiff(s)
Name: Symantec Corporation
Correspondent Address: SALLY M. ABEL, ESQ. AND RANDI RADER, ESQ. FENWICK & WEST LLP 801 CALIFORNIA STREET SILICON VALLEY CENTER MOUNTAIN VIEW CA UNITED STATES , 94041
Correspondent e-mail: [email protected] , [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
Section 8 and 15 - Accepted and 76607897 3861132 Acknowledged
Registered 85154143 4354348
NORTON BY SYMANTEC Registered 85163095 4368939
SYMANTEC Registered 85163091 4368938
SYMANTEC.CLOUD Registered 85185160 4672009
SYMANTEC Registered 86150175 4690810
NORTON LIFELOCK Non-Final Action - Mailed 88126071
New Application - NORTON 88289816 Assigned to Examiner
New Application - LIFELOCK WITH NORTON 88352424 Assigned to Examiner
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Apr 17, 2019
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Apr 17, 2019 May 27, 2019
3 INSTITUTED Apr 17, 2019
Type of Proceeding: Opposition
Proceeding Number: 91247631 Filing Date: Apr 17, 2019
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Status: Pending Status Date: Apr 17, 2019
Interlocutory Attorney: MARY B MYLES
Defendant
Name: Integrity Risk International LLC
Correspondent Address: GREGORY P BRUMMETT BRUMMETT TECHLAW PLLC 2201 COOPERATIVE DR, STE 600 HERNDON VA , 20171
Correspondent e-mail: [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
INTEGRITYRISK WEALTH Opposition Pending 88014674
Plaintiff(s)
Name: Symantec Corporation
Correspondent Address: SALLY M. ABEL, ESQ. AND RANDI RADER, ESQ. FENWICK & WEST LLP 801 CALIFORNIA STREET SILICON VALLEY CENTER MOUNTAIN VIEW CA UNITED STATES , 94043
Correspondent e-mail: [email protected] , [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
Section 8 and 15 - Accepted and 76607897 3861132 Acknowledged
Registered 85154143 4354348
NORTON BY SYMANTEC Registered 85163095 4368939
SYMANTEC Registered 85163091 4368938
SYMANTEC.CLOUD Registered 85185160 4672009
SYMANTEC Registered 86150175 4690810
NORTON LIFELOCK Non-Final Action - Mailed 88126071
New Application - NORTON 88289816 Assigned to Examiner
New Application - LIFELOCK WITH NORTON 88352424 Assigned to Examiner
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Apr 17, 2019
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Apr 17, 2019 May 27, 2019
3 INSTITUTED Apr 17, 2019
Type of Proceeding: Opposition
Proceeding Number: 91245781 Filing Date: Jan 10, 2019
Status: Pending Status Date: Jan 10, 2019
Interlocutory Attorney: WINSTON T FOLMAR
Defendant
Name: UAV Recon
Correspondent Address: EDWARD C SCHEWE COTMAN IP LAW GROUP PLC 35 HUGUS ALLEY, SUITE 210 PASADENA CA UNITED STATES , 91103
Correspondent e-mail: [email protected] , [email protected] , [email protected] , [email protected] , [email protected]
Associated marks
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Mark Application Status Serial Number Registration Number
VOLT VISUAL ONLINE LINEMAN TEAM Opposition Pending 87861687
Plaintiff(s)
Name: Symantec Corporation
Correspondent Address: RANDI RADER FENWICK & WEST LLP 801 CALIFORNIA STREET, SILICON VALLEY CENTER MOUNTAIN VIEW CA UNITED STATES , 94041
Correspondent e-mail: [email protected] , [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
Section 8 and 15 - Accepted and 76607897 3861132 Acknowledged
Registered 85154143 4354348
NORTON BY SYMANTEC Registered 85163095 4368939
SYMANTEC Registered 85163091 4368938
SYMANTEC.CLOUD Registered 85185160 4672009
SYMANTEC Registered 86150175 4690810
NORTON LIFELOCK Non-Final Action - Mailed 88126071
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Jan 10, 2019
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Jan 10, 2019 Feb 19, 2019
3 PENDING, INSTITUTED Jan 10, 2019
4 MOT TO AMEND APPLICATION Feb 13, 2019
5 P MOT FOR EXT W/ CONSENT Feb 14, 2019
6 RESPONSE DUE 30 DAYS (DUE DATE) Mar 05, 2019 Apr 04, 2019
7 MOT TO AMEND APPLICATION Mar 25, 2019
8 RESPONSE DUE 30 DAYS (DUE DATE) Apr 04, 2019 May 04, 2019
9 MOT TO AMEND APPLICATION Apr 10, 2019
Type of Proceeding: Opposition
Proceeding Number: 91243581 Filing Date: Sep 12, 2018
Status: Terminated Status Date: Oct 24, 2018
Interlocutory Attorney: ANDREW P BAXLEY
Defendant
Name: Transunion Interactive, Inc.
Correspondent Address: JULIE NICHOLS MATTHEWS LATHROP GAGE LLP 155 NORTH WACKER DRIVE, SUITE 3000 CHICAGO IL UNITED STATES , 60606-1787
Correspondent e-mail: [email protected] , [email protected] , [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
Abandoned - After Inter- TRUECREDIT 87687220 Partes Decision
Plaintiff(s)
Name: Symantec Corporation
Correspondent Address: SALLY M ABEL FENWICK & WEST LLP
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801 CALIFORNIA STREET, SILICON VALLEY CENTER MOUNTAIN VIEW CA UNITED STATES , 94041
Correspondent e-mail: [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
Section 8 and 15 - Accepted and 76607897 3861132 Acknowledged
Registered 85154143 4354348
NORTON BY SYMANTEC Registered 85163095 4368939
SYMANTEC Registered 85163091 4368938
SYMANTEC.CLOUD Registered 85185160 4672009
SYMANTEC Registered 86150175 4690810
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Sep 12, 2018
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Sep 12, 2018 Oct 22, 2018
3 PENDING, INSTITUTED Sep 12, 2018
4 W/DRAW OF APPLICATION Oct 22, 2018
5 BD DECISION: OPP DISMISSED W/O PREJ Oct 24, 2018
6TERMINATED Oct 24, 2018
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Due to high-volume usage, you may experience intermittent issues on the Trademark Status and Document Retrieval (TSDR) system between 6 – 8 a.m. ET. Refreshing your web browser should resolve the issue. If you still need assistance accessing a document, email [email protected] and include your serial number, the document you are looking for, and a screenshot of any error messages you have received.
Starting Oct. 4, 2018, bulk data customers should no longer obtain direct access to TSDR data through tsdrsec.uspto.gov. There are two alternative ways to receive bulk data from TSDR.
STATUS DOCUMENTS MAINTENANCE Back to Search Print
Generated on: This page was generated by TSDR on 2019-04-22 18:57:06 EDT
Mark: SYMANTEC
US Serial Number: 86150175 Application Filing Date: Dec. 20, 2013
US Registration Number: 4690810 Registration Date: Feb. 24, 2015
Register: Principal
Mark Type: Trademark, Service Mark
TM5 Common Status LIVE/REGISTRATION/Issued and Active Descriptor: 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: Feb. 24, 2015
Publication Date: Dec. 09, 2014
Mark Information
Mark Literal Elements: SYMANTEC
Standard Character Claim: No
Mark Drawing Type: 3 - AN ILLUSTRATION DRAWING WHICH INCLUDES WORD(S)/ LETTER(S)/NUMBER(S)
Description of Mark: The mark consists of a circle with a checkmark in the center of the circle next to the word "SYMANTEC".
Color(s) Claimed: Color is not claimed as a feature of the mark.
Design Search Code(s): 24.17.15 - Check marks 26.01.02 - Plain single line circles; Circles, plain single line
Related Properties Information
Claimed Ownership of US 3274187, 4358366, 4368938 and others Registrations:
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 for cryptographic network security and data security functions; computer software for integration of information logic and data between computer networks; computer software for automating a process for authentication of identity using existing databases in connection with the issuance and management of digital certificates used for authentication or encryption of digital communications, or authentication of a digital signature in an electronic transaction or communication, over the Internet and other computer networks; computer software, namely, encryption software to enable secure transmission of digital information, namely, confidential, financial and credit card information over the Internet, as well as over other modes of communication between computing devices; computer software to integrate managed security services, namely, public key infrastructure (PKI) services, digital certificate issuance, verification, management and enterprise software integration, with existing communications networks, software and services; computer software for use in analysis and reporting of firewall log data; computer software for identity security; computer software for authentication and identity management information security; computer software for digital information and data access; computer software for detecting identity fraud; computer software and firmware for the management, transmission, and storage of data and information; computer software for
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use in networking computers; computer software for use in monitoring computers for security purposes; computer software for use with computer servers for controlling and managing server applications; downloadable electronic publications in the nature of manuals, white papers, articles, and technical documentation manuals in the fields of computer hardware and software, digital telecommunications, consumer electronics, and information technologies
International Class(es): 009 - Primary Class U.S Class(es): 021, 023, 026, 036, 038
Class Status: ACTIVE
Basis: 1(a)
First Use: Oct. 2010 Use in Commerce: Oct. 2010
For: Providing authentication of website operator identity, namely, IP address verification services; providing technical and customer support services, namely encryption of a digital communication and technical support in the nature of computer help desk services for issuance and management of digital certificates for digital communication and digital signature authentication and encryption, over the Internet and other computer network; development, design, implementation, testing, analysis, and consulting services in the field of security, access, authorization, authentication encryption, and identification systems for computers, computer hardware and computer networks; development, integration and operation of computer systems to support issuance and management of digital certificates; creating and implementing software for issuing and managing digital certificates; computer consulting services in the field of security integration, network security, network architecture, encryption technology, and computer security; security verification of computer network firewalls, servers and other network devices from unauthorized access, namely, analyzing global computer information network and internal computer network vulnerability; providing electronic data storage services; application service provider services, namely, providing on- line, non-downloadable software for computer security testing in the fields of computer and Internet security
International Class(es): 042 - Primary Class U.S Class(es): 100, 101
Class Status: ACTIVE
Basis: 1(a)
First Use: Oct. 2010 Use in Commerce: Oct. 2010
For: Managed public key infrastructure services, namely, authentication, issuance and validation of digital certificates; providing user authentication services in e-commerce transactions; issuance of digital certificates for authentication; providing authentication of identity in the nature of authentication of personal identification information; identification verification services, namely, providing authentication of personal identification information; security consulting about creating and implementing procedures and practices for issuing and managing digital certificates
International Class(es): 045 - Primary Class U.S Class(es): 100, 101
Class Status: ACTIVE
Basis: 1(a)
First Use: Oct. 2010 Use in Commerce: Oct. 2010
Basis Information (Case Level)
Filed Use: Yes Currently Use: Yes
Filed ITU: No Currently ITU: No
Filed 44D: No Currently 44E: No
Filed 44E: No Currently 66A: No
Filed 66A: No Currently No Basis: No
Filed No Basis: No
Current Owner(s) Information
Owner Name: Symantec Corporation
Owner Address: 350 Ellis Street Mountain View, CALIFORNIA UNITED STATES 94043
Legal Entity Type: CORPORATION State or Country Where DELAWARE Organized:
Attorney/Correspondence Information
Attorney of Record
Attorney Name: Sally M. Abel Docket Number: 25389-70160
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Attorney Primary Email [email protected] Attorney Email Authorized: Yes Address:
Correspondent
Correspondent SALLY M. ABEL Name/Address: FENWICK & WEST LLP 801 CALIFORNIA ST MOUNTAIN VIEW, CALIFORNIA UNITED STATES 94041-1990
Phone: (650) 988-8500 Fax: (650) 938-5200
Correspondent e-mail: [email protected] [email protected] Correspondent e-mail Yes Authorized:
Domestic Representative - Not Found
Prosecution History
Date Description Proceeding Number
Feb. 24, 2015 REGISTERED-PRINCIPAL REGISTER
Dec. 09, 2014 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E- MAILED
Dec. 09, 2014 PUBLISHED FOR OPPOSITION
Nov. 19, 2014 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
Nov. 05, 2014 LAW OFFICE PUBLICATION REVIEW COMPLETED 77312
Nov. 05, 2014 ASSIGNED TO LIE 77312
Oct. 21, 2014 APPROVED FOR PUB - PRINCIPAL REGISTER
Oct. 21, 2014 EXAMINER'S AMENDMENT ENTERED 88888
Oct. 21, 2014 NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED 6328
Oct. 21, 2014 EXAMINERS AMENDMENT E-MAILED 6328
Oct. 21, 2014 EXAMINERS AMENDMENT -WRITTEN 76464
Sep. 30, 2014 TEAS/EMAIL CORRESPONDENCE ENTERED 88889
Sep. 29, 2014 CORRESPONDENCE RECEIVED IN LAW OFFICE 88889
Sep. 29, 2014 TEAS RESPONSE TO OFFICE ACTION RECEIVED
Mar. 28, 2014 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325
Mar. 28, 2014 NON-FINAL ACTION E-MAILED 6325
Mar. 28, 2014 NON-FINAL ACTION WRITTEN 76464
Mar. 27, 2014 ASSIGNED TO EXAMINER 76464
Jan. 09, 2014 NOTICE OF DESIGN SEARCH CODE E-MAILED
Jan. 08, 2014 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
Dec. 24, 2013 NEW APPLICATION ENTERED IN TRAM
TM Staff and Location Information
TM Staff Information - None File Location
Current Location: PUBLICATION AND ISSUE SECTION Date in Location: Feb. 24, 2015
Assignment Abstract Of Title Information - None recorded
Proceedings
Summary Party type Proceeding type
Number of Proceedings: 4
Type of Proceeding: Opposition
Proceeding Number: 91247626 Filing Date: Apr 17, 2019
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Status: Pending Status Date: Apr 17, 2019
Interlocutory Attorney: REBECCA J STEMPIEN COYLE
Defendant
Name: Integrity Risk International LLC
Correspondent Address: GREGORY P BRUMMETT BRUMMETT TECHLAW PLLC 2201 COOPERATIVE DR, STE 600 HERNDON VA , 20171
Correspondent e-mail: [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
INTEGRITYRISK IMPACT Opposition Pending 88014720
Plaintiff(s)
Name: Symantec Corporation
Correspondent Address: SALLY M. ABEL, ESQ. AND RANDI RADER, ESQ. FENWICK & WEST LLP 801 CALIFORNIA STREET SILICON VALLEY CENTER MOUNTAIN VIEW CA UNITED STATES , 94041
Correspondent e-mail: [email protected] , [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
Section 8 and 15 - Accepted and 76607897 3861132 Acknowledged
Registered 85154143 4354348
NORTON BY SYMANTEC Registered 85163095 4368939
SYMANTEC Registered 85163091 4368938
SYMANTEC.CLOUD Registered 85185160 4672009
SYMANTEC Registered 86150175 4690810
NORTON LIFELOCK Non-Final Action - Mailed 88126071
New Application - NORTON 88289816 Assigned to Examiner
New Application - LIFELOCK WITH NORTON 88352424 Assigned to Examiner
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Apr 17, 2019
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Apr 17, 2019 May 27, 2019
3 INSTITUTED Apr 17, 2019
Type of Proceeding: Opposition
Proceeding Number: 91247631 Filing Date: Apr 17, 2019
Status: Pending Status Date: Apr 17, 2019
Interlocutory Attorney: MARY B MYLES
Defendant
Name: Integrity Risk International LLC
Correspondent Address: GREGORY P BRUMMETT BRUMMETT TECHLAW PLLC 2201 COOPERATIVE DR, STE 600 HERNDON VA , 20171
Correspondent e-mail: [email protected]
Associated marks
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Mark Application Status Serial Number Registration Number
INTEGRITYRISK WEALTH Opposition Pending 88014674
Plaintiff(s)
Name: Symantec Corporation
Correspondent Address: SALLY M. ABEL, ESQ. AND RANDI RADER, ESQ. FENWICK & WEST LLP 801 CALIFORNIA STREET SILICON VALLEY CENTER MOUNTAIN VIEW CA UNITED STATES , 94043
Correspondent e-mail: [email protected] , [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
Section 8 and 15 - Accepted and 76607897 3861132 Acknowledged
Registered 85154143 4354348
NORTON BY SYMANTEC Registered 85163095 4368939
SYMANTEC Registered 85163091 4368938
SYMANTEC.CLOUD Registered 85185160 4672009
SYMANTEC Registered 86150175 4690810
NORTON LIFELOCK Non-Final Action - Mailed 88126071
New Application - NORTON 88289816 Assigned to Examiner
New Application - LIFELOCK WITH NORTON 88352424 Assigned to Examiner
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Apr 17, 2019
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Apr 17, 2019 May 27, 2019
3 INSTITUTED Apr 17, 2019
Type of Proceeding: Opposition
Proceeding Number: 91245781 Filing Date: Jan 10, 2019
Status: Pending Status Date: Jan 10, 2019
Interlocutory Attorney: WINSTON T FOLMAR
Defendant
Name: UAV Recon
Correspondent Address: EDWARD C SCHEWE COTMAN IP LAW GROUP PLC 35 HUGUS ALLEY, SUITE 210 PASADENA CA UNITED STATES , 91103
Correspondent e-mail: [email protected] , [email protected] , [email protected] , [email protected] , [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
VOLT VISUAL ONLINE LINEMAN TEAM Opposition Pending 87861687
Plaintiff(s)
Name: Symantec Corporation
Correspondent Address: RANDI RADER FENWICK & WEST LLP 801 CALIFORNIA STREET, SILICON VALLEY CENTER MOUNTAIN VIEW CA UNITED STATES , 94041
Correspondent e-mail: [email protected] , [email protected]
Associated marks
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Mark Application Status Serial Number Registration Number
Section 8 and 15 - Accepted and 76607897 3861132 Acknowledged
Registered 85154143 4354348
NORTON BY SYMANTEC Registered 85163095 4368939
SYMANTEC Registered 85163091 4368938
SYMANTEC.CLOUD Registered 85185160 4672009
SYMANTEC Registered 86150175 4690810
NORTON LIFELOCK Non-Final Action - Mailed 88126071
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Jan 10, 2019
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Jan 10, 2019 Feb 19, 2019
3 PENDING, INSTITUTED Jan 10, 2019
4 MOT TO AMEND APPLICATION Feb 13, 2019
5 P MOT FOR EXT W/ CONSENT Feb 14, 2019
6 RESPONSE DUE 30 DAYS (DUE DATE) Mar 05, 2019 Apr 04, 2019
7 MOT TO AMEND APPLICATION Mar 25, 2019
8 RESPONSE DUE 30 DAYS (DUE DATE) Apr 04, 2019 May 04, 2019
9 MOT TO AMEND APPLICATION Apr 10, 2019
Type of Proceeding: Opposition
Proceeding Number: 91243581 Filing Date: Sep 12, 2018
Status: Terminated Status Date: Oct 24, 2018
Interlocutory Attorney: ANDREW P BAXLEY
Defendant
Name: Transunion Interactive, Inc.
Correspondent Address: JULIE NICHOLS MATTHEWS LATHROP GAGE LLP 155 NORTH WACKER DRIVE, SUITE 3000 CHICAGO IL UNITED STATES , 60606-1787
Correspondent e-mail: [email protected] , [email protected] , [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
Abandoned - After Inter- TRUECREDIT 87687220 Partes Decision
Plaintiff(s)
Name: Symantec Corporation
Correspondent Address: SALLY M ABEL FENWICK & WEST LLP 801 CALIFORNIA STREET, SILICON VALLEY CENTER MOUNTAIN VIEW CA UNITED STATES , 94041
Correspondent e-mail: [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
Section 8 and 15 - Accepted and 76607897 3861132 Acknowledged
Registered 85154143 4354348
NORTON BY SYMANTEC Registered 85163095 4368939
SYMANTEC Registered 85163091 4368938
http://tsdr.uspto.gov/ 4/22/2019 Status Search SN 4690810 Page 7 of 7
SYMANTEC.CLOUD Registered 85185160 4672009
SYMANTEC Registered 86150175 4690810
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Sep 12, 2018
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Sep 12, 2018 Oct 22, 2018
3 PENDING, INSTITUTED Sep 12, 2018
4 W/DRAW OF APPLICATION Oct 22, 2018
5 BD DECISION: OPP DISMISSED W/O PREJ Oct 24, 2018
6TERMINATED Oct 24, 2018
http://tsdr.uspto.gov/ 4/22/2019
Exhibit B
Status Search SN 88126071 Page 1 of 6
Due to high-volume usage, you may experience intermittent issues on the Trademark Status and Document Retrieval (TSDR) system between 6 – 8 a.m. ET. Refreshing your web browser should resolve the issue. If you still need assistance accessing a document, email [email protected] and include your serial number, the document you are looking for, and a screenshot of any error messages you have received.
Starting Oct. 4, 2018, bulk data customers should no longer obtain direct access to TSDR data through tsdrsec.uspto.gov. There are two alternative ways to receive bulk data from TSDR.
STATUS DOCUMENTS Back to Search Print
Generated on: This page was generated by TSDR on 2019-04-22 19:39:37 EDT
Mark: NORTON LIFELOCK
US Serial Number: 88126071 Application Filing Date: Sep. 20, 2018
Filed as TEAS RF: Yes Currently TEAS RF: Yes
Register: Principal
Mark Type: Trademark, Service Mark
TM5 Common Status LIVE/APPLICATION/Under Examination Descriptor: The trademark application has been accepted by the Office (has met the minimum filing requirements) and that this application has been assigned to an examiner.
Status: A non-final Office action has been sent (issued) to the applicant. This is a letter from the examining attorney requiring additional information and/or making an initial refusal. The applicant must respond to this Office action. To view all documents in this file, click on the Trademark Document Retrieval link at the top of this page.
Status Date: Jan. 10, 2019
Mark Information
Mark Literal Elements: NORTON LIFELOCK
Standard Character Claim: No
Mark Drawing Type: 3 - AN ILLUSTRATION DRAWING WHICH INCLUDES WORD(S)/ LETTER(S)/NUMBER(S)
Description of Mark: The mark consists of a circle with a checkmark in the center of the circle next to a design consisting of the word NORTON appearing on top of a box with rounded edges with a lock shape and a keyhole in the center next to the word LIFELOCK.
Color(s) Claimed: Color is not claimed as a feature of the mark.
Design Search Code(s): 14.11.08 - Locks; Locks and key holes; padlocks; combination locks; Locks, combination; Padlocks 24.17.15 - Check marks 26.01.01 - Circles as carriers or as single line borders 26.09.21 - Squares that are completely or partially shaded
Related Properties Information
Claimed Ownership of US 3346847, 3700317, 4734286 and others Registrations:
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; computer hardware; computers; computer application software for use in electronic storage of data, documents and receipts; computer application software to assist in tracking, managing, and reporting expenses, credit scores, account information, and commercial transactions; computer application software for providing alerts and notifications regarding potential identity theft, and for providing tips and information concerning identity theft
International Class(es): 009 - Primary Class U.S Class(es): 021, 023, 026, 036, 038
Class Status: ACTIVE
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Basis: 1(b)
For: Credit reporting services; providing credit reporting data maintained by others; credit risk management and consultation services, namely, assistance with restoring and analyzing credit damaged by identity theft; tracking and reporting regarding consumer credit reports and changes thereto; providing advice and consultation in the field of credit reports and credit scores; fraud resolution assistance, namely, assistance with restoring credit damaged by identity theft; providing reimbursement of costs associated with identity theft; providing financial information via a web site; financing services; financial services; financial services, namely, credit repair and restoration; credit risk management, credit risk consultation, and analyzing credit damaged by identity theft
International Class(es): 036 - Primary Class U.S Class(es): 100, 101, 102
Class Status: ACTIVE
Basis: 1(b)
For: Software as a service (SaaS) featuring software for use in electronic storage of data, documents and receipts; software as a service (SaaS) featuring software to assist in tracking, managing, and reporting expenses, credit scores, account information, and commercial transactions; software as a service (SaaS) featuring software for providing alerts and notifications regarding potential identity theft, and for providing tips and information concerning identity theft; electronic monitoring of personally identifying information to detect identity theft via the internet; electronic monitoring of credit card activity to detect fraud via the internet; data security consultancy; identity theft detection and protection services in the nature of arranging secure authentication of personal data in requests to open banking, credit, credit card, loan, financial, telecommunications and utility accounts; fraud and identity theft protection services; monitoring the internet, public records, credit reports, private and public electronic databases, and unregulated global computer networks to facilitate the detection of and protection against identity theft and fraud; providing a secure interactive website concerning notifications of potential fraud and potential identity theft; providing information on potential fraud and potential identity theft via e-mail alerts and notifications; resolution assistance, namely, providing advice and consultation in the field of data theft and identity theft; consultation in the field of data theft and identity theft; tracking, monitoring, and reporting regarding consumer credit reports and changes thereto for purposes of protecting against data theft, identity theft and fraud; prevention of unsolicited commercial communications, namely, removal from pre- approved credit offer lists; fraud and identity theft protection services consisting of credit card and debit card cancellation services in the event of loss or theft, namely, registering credit and debit cards for cancellation; fraud and identity theft protection services consisting of assisting others with replacing personal identification cards, driver's licenses, Social Security cards, insurance cards, checkbooks and travelers checks in the event of loss or theft; monitoring personal financial account activities for fraud protection purposes; providing alerts and notification information concerning possible fraud and identity theft for fraud protection purposes; monitoring public reports concerning larger scale consumer data security breaches for fraud protection purposes; providing alerts and notification information concerning possible fraud and identity theft related to such events for fraud protection purposes; monitoring personal financial account activities for atypical activities for fraud protection services; computer technology consultancy; computer programming; rental of computer software; computer system design
International Class(es): 042 - Primary Class U.S Class(es): 100, 101
Class Status: ACTIVE
Basis: 1(b)
For: Providing consultation to third parties in the field of prevention of data theft, identity theft, and prevention of unsolicited commercial electronic mail, namely, removal from junk mail lists and offers for pre-approved credit
International Class(es): 045 - Primary Class U.S Class(es): 100, 101
Class Status: ACTIVE
Basis: 1(b)
Basis Information (Case Level)
Filed Use: No Currently Use: No
Filed ITU: Yes Currently ITU: Yes
Filed 44D: No Currently 44E: No
Filed 44E: No Currently 66A: No
Filed 66A: No Currently No Basis: No
Filed No Basis: No
Current Owner(s) Information
Owner Name: Symantec Corporation
Owner Address: 350 Ellis Street Mountain View, CALIFORNIA UNITED STATES 94043
Legal Entity Type: CORPORATION DELAWARE
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State or Country Where Organized:
Attorney/Correspondence Information
Attorney of Record
Attorney Name: Sally M. Abel, Esq. Docket Number: 25389-70402
Attorney Primary Email [email protected] Attorney Email Authorized: Yes Address:
Correspondent
Correspondent SALLY M. ABEL, ESQ. Name/Address: FENWICK & WEST LLP 801 CALIFORNIA STREET SILICON VALLEY CENTER MOUNTAIN VIEW, CALIFORNIA UNITED STATES 94041
Phone: 650-988-8500 x7212 Fax: (650) 938-5200
Correspondent e-mail: [email protected] [email protected] Correspondent e-mail Yes Authorized:
Domestic Representative - Not Found
Prosecution History
Date Description Proceeding Number
Jan. 10, 2019 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325
Jan. 10, 2019 NON-FINAL ACTION E-MAILED 6325
Jan. 10, 2019 NON-FINAL ACTION WRITTEN 92823
Jan. 02, 2019 ASSIGNED TO EXAMINER 92823
Sep. 28, 2018 NOTICE OF DESIGN SEARCH CODE E-MAILED
Sep. 27, 2018 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
Sep. 24, 2018 NEW APPLICATION ENTERED IN TRAM
TM Staff and Location Information
TM Staff Information
TM Attorney: BEDNARZ, DUSTIN THOMAS Law Office Assigned: LAW OFFICE 121
File Location
Current Location: TMO LAW OFFICE 121 - EXAMINING ATTORNEY Date in Location: Jan. 10, 2019 ASSIGNED
Assignment Abstract Of Title Information - None recorded
Proceedings
Summary Party type Proceeding type
Number of Proceedings: 3
Type of Proceeding: Opposition
Proceeding Number: 91247626 Filing Date: Apr 17, 2019
Status: Pending Status Date: Apr 17, 2019
Interlocutory Attorney: REBECCA J STEMPIEN COYLE
Defendant
Name: Integrity Risk International LLC
Correspondent Address: GREGORY P BRUMMETT BRUMMETT TECHLAW PLLC
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2201 COOPERATIVE DR, STE 600 HERNDON VA , 20171
Correspondent e-mail: [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
INTEGRITYRISK IMPACT Opposition Pending 88014720
Plaintiff(s)
Name: Symantec Corporation
Correspondent Address: SALLY M. ABEL, ESQ. AND RANDI RADER, ESQ. FENWICK & WEST LLP 801 CALIFORNIA STREET SILICON VALLEY CENTER MOUNTAIN VIEW CA UNITED STATES , 94041
Correspondent e-mail: [email protected] , [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
Section 8 and 15 - Accepted and 76607897 3861132 Acknowledged
Registered 85154143 4354348
NORTON BY SYMANTEC Registered 85163095 4368939
SYMANTEC Registered 85163091 4368938
SYMANTEC.CLOUD Registered 85185160 4672009
SYMANTEC Registered 86150175 4690810
NORTON LIFELOCK Non-Final Action - Mailed 88126071
New Application - NORTON 88289816 Assigned to Examiner
New Application - LIFELOCK WITH NORTON 88352424 Assigned to Examiner
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Apr 17, 2019
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Apr 17, 2019 May 27, 2019
3 INSTITUTED Apr 17, 2019
Type of Proceeding: Opposition
Proceeding Number: 91247631 Filing Date: Apr 17, 2019
Status: Pending Status Date: Apr 17, 2019
Interlocutory Attorney: MARY B MYLES
Defendant
Name: Integrity Risk International LLC
Correspondent Address: GREGORY P BRUMMETT BRUMMETT TECHLAW PLLC 2201 COOPERATIVE DR, STE 600 HERNDON VA , 20171
Correspondent e-mail: [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
INTEGRITYRISK WEALTH Opposition Pending 88014674
Plaintiff(s)
Name: Symantec Corporation
Correspondent Address: SALLY M. ABEL, ESQ. AND RANDI RADER, ESQ. FENWICK & WEST LLP
http://tsdr.uspto.gov/ 4/22/2019 Status Search SN 88126071 Page 5 of 6
801 CALIFORNIA STREET SILICON VALLEY CENTER MOUNTAIN VIEW CA UNITED STATES , 94043
Correspondent e-mail: [email protected] , [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
Section 8 and 15 - Accepted and 76607897 3861132 Acknowledged
Registered 85154143 4354348
NORTON BY SYMANTEC Registered 85163095 4368939
SYMANTEC Registered 85163091 4368938
SYMANTEC.CLOUD Registered 85185160 4672009
SYMANTEC Registered 86150175 4690810
NORTON LIFELOCK Non-Final Action - Mailed 88126071
New Application - NORTON 88289816 Assigned to Examiner
New Application - LIFELOCK WITH NORTON 88352424 Assigned to Examiner
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Apr 17, 2019
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Apr 17, 2019 May 27, 2019
3 INSTITUTED Apr 17, 2019
Type of Proceeding: Opposition
Proceeding Number: 91245781 Filing Date: Jan 10, 2019
Status: Pending Status Date: Jan 10, 2019
Interlocutory Attorney: WINSTON T FOLMAR
Defendant
Name: UAV Recon
Correspondent Address: EDWARD C SCHEWE COTMAN IP LAW GROUP PLC 35 HUGUS ALLEY, SUITE 210 PASADENA CA UNITED STATES , 91103
Correspondent e-mail: [email protected] , [email protected] , [email protected] , [email protected] , [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
VOLT VISUAL ONLINE LINEMAN TEAM Opposition Pending 87861687
Plaintiff(s)
Name: Symantec Corporation
Correspondent Address: RANDI RADER FENWICK & WEST LLP 801 CALIFORNIA STREET, SILICON VALLEY CENTER MOUNTAIN VIEW CA UNITED STATES , 94041
Correspondent e-mail: [email protected] , [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
Section 8 and 15 - Accepted and 76607897 3861132 Acknowledged
Registered 85154143 4354348
NORTON BY SYMANTEC Registered 85163095 4368939
http://tsdr.uspto.gov/ 4/22/2019 Status Search SN 88126071 Page 6 of 6
SYMANTEC Registered 85163091 4368938
SYMANTEC.CLOUD Registered 85185160 4672009
SYMANTEC Registered 86150175 4690810
NORTON LIFELOCK Non-Final Action - Mailed 88126071
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Jan 10, 2019
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Jan 10, 2019 Feb 19, 2019
3 PENDING, INSTITUTED Jan 10, 2019
4 MOT TO AMEND APPLICATION Feb 13, 2019
5 P MOT FOR EXT W/ CONSENT Feb 14, 2019
6 RESPONSE DUE 30 DAYS (DUE DATE) Mar 05, 2019 Apr 04, 2019
7 MOT TO AMEND APPLICATION Mar 25, 2019
8 RESPONSE DUE 30 DAYS (DUE DATE) Apr 04, 2019 May 04, 2019
9 MOT TO AMEND APPLICATION Apr 10, 2019
http://tsdr.uspto.gov/ 4/22/2019 Status Search SN 88289816 Page 1 of 5
Due to high-volume usage, you may experience intermittent issues on the Trademark Status and Document Retrieval (TSDR) system between 6 – 8 a.m. ET. Refreshing your web browser should resolve the issue. If you still need assistance accessing a document, email [email protected] and include your serial number, the document you are looking for, and a screenshot of any error messages you have received.
Starting Oct. 4, 2018, bulk data customers should no longer obtain direct access to TSDR data through tsdrsec.uspto.gov. There are two alternative ways to receive bulk data from TSDR.
STATUS DOCUMENTS Back to Search Print
Generated on: This page was generated by TSDR on 2019-04-22 19:41:02 EDT
Mark: NORTON
US Serial Number: 88289816 Application Filing Date: Feb. 05, 2019
Filed as TEAS RF: Yes Currently TEAS RF: Yes
Register: Principal
Mark Type: Trademark, Service Mark
TM5 Common Status LIVE/APPLICATION/Under Examination Descriptor: The trademark application has been accepted by the Office (has met the minimum filing requirements) and that this application has been assigned to an examiner.
Status: New application assigned to an examining attorney for examination.
Status Date: Apr. 17, 2019
Mark Information
Mark Literal Elements: NORTON
Standard Character Claim: No
Mark Drawing Type: 3 - AN ILLUSTRATION DRAWING WHICH INCLUDES WORD(S)/ LETTER(S)/NUMBER(S)
Description of Mark: The mark consists of a circle with a checkmark in the center of the circle appearing next to the word "NORTON".
Color(s) Claimed: Color is not claimed as a feature of the mark.
Design Search Code(s): 24.17.15 - Check marks 26.01.02 - Plain single line circles; Circles, plain single line
Related Properties Information
Claimed Ownership of US 3700317, 4368939, 5420041 Registrations:
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 antivirus software; computer software for database management in the field of cryptographic network security and data security functions; computer software for providing network, Internet, and computer security; computer software for providing online identity protection and parental control; computer software for providing intrusion detection and prevention; computer software for scanning, detecting, and removing viruses, worms, Trojan horses, adware, spyware, and other malware; Internet security software, including computer software for use in the monitoring and control of computer and online activity; computer software for providing online transaction security; fraud protection software; computer optimization software; computer software to prevent, diagnose, and repair computer problems; computer maintenance software; computer software for the back-up, storage, restoration and recovery of data, folders, and files; enterprise security software; firewall software; privacy control software; content filtering software; computer hardware; computer peripherals; computer hardware appliances that provide fire wall, content filtering, intrusion alert, virus protection, virtual private networking and other security functions; computer software; computer software in the field of cryptographic network security and data security functions; computer software for integration of information logic and data between computer networks; computer software for automating a process for authentication of identity using existing databases in connection with the issuance and management of digital certificates used for authentication or encryption of digital communications, or authentication of a digital signature in an electronic
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transaction or communication, over the Internet and other computer networks; computer software, namely, encryption software to enable secure transmission of digital information, namely, confidential, financial and credit card information over the Internet, as well as over other modes of communication between computing devices; computer software to integrate managed security services, namely, public key infrastructure (PKI) services, digital certificate issuance, verification, management and enterprise software integration, with existing communications networks, software and services; computer software for use in analysis and reporting of firewall log data; computer software for detecting, blocking, and intercepting malware and other threats to computer hardware and software; computer software for encrypting and authenticating data; computer software for encryption; computer software for use in the encryption and decryption of digital files, including audio, video, text, binary, still images, graphics and multimedia files; computer software platform for bridging Internet and telephony services and enabling users to communicate and transact business faster across multiple networks via wire line phones, mobile phones, personal computers, PDAs and other personal electronic devices; computer software platform for providing faster Internet connections, website resolution and e-mail deliveries; cloning software, namely, software for cloning computer hard drives, software for cloning computer operating systems, software for cloning data files, software reconfiguring personal computers; computer software for the creation of virtual private network; computer software and downloadable computer software, namely, utility software; computer utility software for removal of computer applications and software; utility software for facilitating computer use at remote locations and for facilitating communications among mobile users over networks; computer software, namely, middleware for interfacing client applications and networked or host based databases; computer software and downloadable computer software for use in updating other computer software; computer software for use in networking applications; computer software for sending and receiving facsimile transmissions from computers and notebook computers; computer software for connecting and managing remote computers, for synchronization of files through e-mail, for providing security to remote computer users, for implementing computer, software and network security measures for remote computer users; computer software for file management and transfer; computer software for telecommuting, namely, for connecting to and use of a remote computer network, a remote computer and mobile devices; computer communications software for use with a home or remote office for connecting computer network users to global networks; computer software and databases for use in diagnosis, repair and configuration of computers, computer software and computer peripherals; computer programs for data communications applications, and for the encryption and authentication of electronic information; computer software for identity security; computer software for authentication and identity management information security; computer software for digital information and data access; computer software for detecting identity fraud; computer software and firmware for the management, transmission, and storage of data and information; computer software for use in networking computers; computer software for use in operating electronic mail; computer software for use in monitoring computers for security purposes; computer software for use in vulnerability scanning of networks and websites; computer software for use in detecting malware computer software for use with computer servers for controlling and managing server applications; computer software for use in accessing databases; user manuals and instructional guides supplied with all of the foregoing; downloadable electronic publications
International Class(es): 009 - Primary Class U.S Class(es): 021, 023, 026, 036, 038
Class Status: ACTIVE
Basis: 1(b)
For: Computer services; Internet security services; electronic storage of data; computer consultation; computer consultation regarding computer networks and internal computer networks, security services for computer networks and internal computer networks, namely, installation, design and customization; on-line technical support services, namely, troubleshooting of computer hardware and software problems; technical and customer support services, namely, troubleshooting of computer software problems; computer services, namely, detection of viruses and threats; design and implementation of software and technology solutions for the purposes of protecting against counterfeiting, tampering and diversion, and to ensure the integrity of genuine websites; technical support services, namely, providing back-up computer programs and facilities; updating of computer software for others; computer virus protection services; computer consultation in the field of computer security; computer diagnostic services; computer services, namely, data recovery services; computer software installation services; computer programming; notification and delivery of software updates; research services relating to computer hardware and computer software; technical consultation in the field of computer software installation and maintenance; development, updating, publishing and maintenance of software for networks and standalone computers in the fields of security, databases management, and anti-virus protection and monitoring security systems; providing information in the field of network and Internet security; providing technical information in the field of computer software applications; computer services, namely, providing information concerning the encryption and authentication of electronic data; providing information concerning authentication of user identification data for e-commerce transaction security; consultancy services in the fields of digital media, data encryption, computer security, communication security and computer software; encryption and decryption of data and communications; computer support services, namely, technical support and software update services; computer consulting services related to computer products and services; application service provider services, namely, providing on-line, non-downloadable software for computer security testing in the fields of computer and Internet security; software as a service for use in scanning networks and websites to detect and identify vulnerabilities and malware; providing consultants to help deploy, supervise and manage information technology projects; providing information in the field of information technology relating to communications devices, computers, computer hardware, computer software, computer peripherals, and computer networks; providing hosted electronic mail and instant messaging services; computer services, namely, providing search engines for obtaining data on a global computer network; computer consulting services in the field of security integration, network security, network architecture, encryption technology, and computer security; security verification of computer network firewalls, servers and other network devices from unauthorized access, namely, analyzing global computer information network and internal computer network vulnerability; application hosting; web hosting; and turnkey e-commerce services; providing authentication of identity; issuance and management of digital certificates for authentication or encryption of a digital communication, or authentication of a digital signature in an electronic transaction or communication, over the Internet and other computer network and providing technical and customer support in connection therewith; development, design, implementation, testing, analysis, and consulting services in the field of security, access, authorization, authentication encryption, and identification systems for computers, computer hardware and computer networks; computer systems analysis in the field of security, access, authorization, authentication encryption, and identification systems for computers and computer networks; development, integration and operation of computer systems to support issuance and
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management of digital certificates; creation and implementation of procedures and practices for issuance and management of digital certificates; computer related services, namely, managed computer network and Internet security services, namely, public key infrastructure (PKI) verification, authentication, distribution and management, digital certificate issuance, verification and management, and enterprise software integration; providing user authentication services in e-commerce transactions; monitoring of computer systems for security purposes; monitoring of computer networks for security purposes; providing security threat management systems, namely, monitoring and tracking of security vulnerabilities and problems in computer software products, the Internet, and computer networks; providing information in the fields of global computer network and local area network Internet security, preventing computer viruses, preventing computer threats, computer hardware and software applications in security; identity theft protection services, namely, fraud prevention in the form of personal and financial information monitoring
International Class(es): 042 - Primary Class U.S Class(es): 100, 101
Class Status: ACTIVE
Basis: 1(b)
For: Authentication, issuance and validation of digital certificates; identification verification services, namely, providing authentication of business identification information; computer security services in the nature of providing an internet trust center, namely, computer security assurance and administration of digital keys and digital certificates; providing user identity authentication services in ecommerce transactions; providing authentication of identity; personal background investigation services in order to authenticate identity
International Class(es): 045 - Primary Class U.S Class(es): 100, 101
Class Status: ACTIVE
Basis: 1(b)
Basis Information (Case Level)
Filed Use: No Currently Use: No
Filed ITU: Yes Currently ITU: Yes
Filed 44D: No Currently 44E: No
Filed 44E: No Currently 66A: No
Filed 66A: No Currently No Basis: No
Filed No Basis: No
Current Owner(s) Information
Owner Name: Symantec Corporation
Owner Address: 350 Ellis Street Mountain View, CALIFORNIA UNITED STATES 94043
Legal Entity Type: CORPORATION State or Country Where DELAWARE Organized:
Attorney/Correspondence Information
Attorney of Record
Attorney Name: Sally M. Abel, Esq. Docket Number: 25389-70404
Attorney Primary Email [email protected] Attorney Email Authorized: Yes Address:
Correspondent
Correspondent SALLY M. ABEL, ESQ. Name/Address: FENWICK & WEST LLP 801 CALIFORNIA STREET SILICON VALLEY CENTER MOUNTAIN VIEW, CALIFORNIA UNITED STATES 94041
Phone: 650-988-8500 x7212 Fax: (650) 938-5200
Correspondent e-mail: [email protected] [email protected] Correspondent e-mail Yes Authorized:
Domestic Representative - Not Found
Prosecution History
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Date Description Proceeding Number
Apr. 17, 2019 ASSIGNED TO EXAMINER 94346
Mar. 21, 2019 NOTICE OF DESIGN SEARCH CODE E-MAILED
Feb. 27, 2019 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
Feb. 08, 2019 NEW APPLICATION ENTERED IN TRAM
TM Staff and Location Information
TM Staff Information
TM Attorney: BROWNING, LUKE CASH Law Office Assigned: LAW OFFICE 127
File Location
Current Location: TMO LAW OFFICE 127 Date in Location: Apr. 17, 2019
Assignment Abstract Of Title Information - None recorded
Proceedings
Summary Party type Proceeding type
Number of Proceedings: 2
Type of Proceeding: Opposition
Proceeding Number: 91247626 Filing Date: Apr 17, 2019
Status: Pending Status Date: Apr 17, 2019
Interlocutory Attorney: REBECCA J STEMPIEN COYLE
Defendant
Name: Integrity Risk International LLC
Correspondent Address: GREGORY P BRUMMETT BRUMMETT TECHLAW PLLC 2201 COOPERATIVE DR, STE 600 HERNDON VA , 20171
Correspondent e-mail: [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
INTEGRITYRISK IMPACT Opposition Pending 88014720
Plaintiff(s)
Name: Symantec Corporation
Correspondent Address: SALLY M. ABEL, ESQ. AND RANDI RADER, ESQ. FENWICK & WEST LLP 801 CALIFORNIA STREET SILICON VALLEY CENTER MOUNTAIN VIEW CA UNITED STATES , 94041
Correspondent e-mail: [email protected] , [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
Section 8 and 15 - Accepted and 76607897 3861132 Acknowledged
Registered 85154143 4354348
NORTON BY SYMANTEC Registered 85163095 4368939
SYMANTEC Registered 85163091 4368938
SYMANTEC.CLOUD Registered 85185160 4672009
SYMANTEC Registered 86150175 4690810
NORTON LIFELOCK Non-Final Action - Mailed 88126071
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NORTON New Application - 88289816 Assigned to Examiner
New Application - LIFELOCK WITH NORTON 88352424 Assigned to Examiner
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Apr 17, 2019
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Apr 17, 2019 May 27, 2019
3 INSTITUTED Apr 17, 2019
Type of Proceeding: Opposition
Proceeding Number: 91247631 Filing Date: Apr 17, 2019
Status: Pending Status Date: Apr 17, 2019
Interlocutory Attorney: MARY B MYLES
Defendant
Name: Integrity Risk International LLC
Correspondent Address: GREGORY P BRUMMETT BRUMMETT TECHLAW PLLC 2201 COOPERATIVE DR, STE 600 HERNDON VA , 20171
Correspondent e-mail: [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
INTEGRITYRISK WEALTH Opposition Pending 88014674
Plaintiff(s)
Name: Symantec Corporation
Correspondent Address: SALLY M. ABEL, ESQ. AND RANDI RADER, ESQ. FENWICK & WEST LLP 801 CALIFORNIA STREET SILICON VALLEY CENTER MOUNTAIN VIEW CA UNITED STATES , 94043
Correspondent e-mail: [email protected] , [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
Section 8 and 15 - Accepted and 76607897 3861132 Acknowledged
Registered 85154143 4354348
NORTON BY SYMANTEC Registered 85163095 4368939
SYMANTEC Registered 85163091 4368938
SYMANTEC.CLOUD Registered 85185160 4672009
SYMANTEC Registered 86150175 4690810
NORTON LIFELOCK Non-Final Action - Mailed 88126071
New Application - NORTON 88289816 Assigned to Examiner
New Application - LIFELOCK WITH NORTON 88352424 Assigned to Examiner
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Apr 17, 2019
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Apr 17, 2019 May 27, 2019
3 INSTITUTED Apr 17, 2019
http://tsdr.uspto.gov/ 4/22/2019 Status Search SN 88352424 Page 1 of 5
Due to high-volume usage, you may experience intermittent issues on the Trademark Status and Document Retrieval (TSDR) system between 6 – 8 a.m. ET. Refreshing your web browser should resolve the issue. If you still need assistance accessing a document, email [email protected] and include your serial number, the document you are looking for, and a screenshot of any error messages you have received.
Starting Oct. 4, 2018, bulk data customers should no longer obtain direct access to TSDR data through tsdrsec.uspto.gov. There are two alternative ways to receive bulk data from TSDR.
STATUS DOCUMENTS Back to Search Print
Generated on: This page was generated by TSDR on 2019-04-22 19:42:37 EDT
Mark: LIFELOCK WITH NORTON
US Serial Number: 88352424 Application Filing Date: Mar. 22, 2019
Filed as TEAS RF: Yes Currently TEAS RF: Yes
Register: Principal
Mark Type: Trademark, Service Mark
TM5 Common Status LIVE/APPLICATION/Under Examination Descriptor: The trademark application has been accepted by the Office (has met the minimum filing requirements) and that this application has been assigned to an examiner.
Status: New application assigned to an examining attorney for examination.
Status Date: Apr. 17, 2019
Mark Information
Mark Literal Elements: LIFELOCK WITH NORTON
Standard Character Claim: No
Mark Drawing Type: 3 - AN ILLUSTRATION DRAWING WHICH INCLUDES WORD(S)/ LETTER(S)/NUMBER(S)
Description of Mark: The mark consists of a box with rounded edges with a lock shape and keyhole in the center appearing to the left of the words "LIFELOCK WITH NORTON", with a circle with a checkmark in the center of the circle design appearing between the words "WITH" and "NORTON".
Color(s) Claimed: Color is not claimed as a feature of the mark.
Design Search Code(s): 02.01.34 - Monsters (not robots); Other grotesque including men formed by plants or objects 04.07.02 - Objects forming a person; Person formed by objects 14.11.08 - Locks, combination; Locks and key holes; padlocks; combination locks; Locks; Padlocks 24.17.15 - Check marks 26.01.02 - Plain single line circles; Circles, plain single line 26.09.21 - Squares that are completely or partially shaded
Related Properties Information
Claimed Ownership of US 3346847, 3700317, 4734286 Registrations:
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; computer hardware; computers; computer application software for use in electronic storage of data, documents and receipts; computer application software to assist in tracking, managing, and reporting expenses, credit scores, account information, and commercial transactions; computer application software for providing alerts and notifications regarding potential identity theft, and for providing tips and information concerning identity theft
International Class(es): 009 - Primary Class U.S Class(es): 021, 023, 026, 036, 038
Class Status: ACTIVE
Basis: 1(b)
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For: Credit reporting services; providing credit reporting data maintained by others; credit risk management and consultation services, namely, assistance with restoring and analyzing credit damaged by identity theft; tracking and reporting regarding consumer credit reports and changes thereto; providing advice and consultation in the field of credit reports and credit scores; fraud resolution assistance, namely, assistance with restoring credit damaged by identity theft; providing reimbursement of costs associated with identity theft; providing financial information via a web site; financing services; financial services; financial services, namely, credit repair and restoration; credit risk management, credit risk consultation, and analyzing credit damaged by identity theft
International Class(es): 036 - Primary Class U.S Class(es): 100, 101, 102
Class Status: ACTIVE
Basis: 1(b)
For: Software as a service (SaaS) featuring software for use in electronic storage of data, documents and receipts; software as a service (SaaS) featuring software to assist in tracking, managing, and reporting expenses, credit scores, account information, and commercial transactions; software as a service (SaaS) featuring software for providing alerts and notifications regarding potential identity theft, and for providing tips and information concerning identity theft; electronic monitoring of personally identifying information to detect identity theft via the internet; electronic monitoring of credit card activity to detect fraud via the internet; data security consultancy; identity theft detection and protection services in the nature of arranging secure authentication of personal data in requests to open banking, credit, credit card, loan, financial, telecommunications and utility accounts; fraud and identity theft protection services; monitoring the internet, public records, credit reports, private and public electronic databases, and unregulated global computer networks to facilitate the detection of and protection against identity theft and fraud; providing a secure interactive website concerning notifications of potential fraud and potential identity theft; providing information on potential fraud and potential identity theft via e-mail alerts and notifications; resolution assistance, namely, providing advice and consultation in the field of data theft and identity theft; consultation in the field of data theft and identity theft; tracking, monitoring, and reporting regarding consumer credit reports and changes thereto for purposes of protecting against data theft, identity theft and fraud; prevention of unsolicited commercial communications, namely, removal from preapproved credit offer lists; fraud and identity theft protection services consisting of credit card and debit card cancellation services in the event of loss or theft, namely, registering credit and debit cards for cancellation; fraud and identity theft protection services consisting of assisting others with replacing personal identification cards, driver's licenses, Social Security cards, insurance cards, checkbooks and travelers checks in the event of loss or theft; monitoring personal financial account activities for fraud protection purposes; providing alerts and notification information concerning possible fraud and identity theft for fraud protection purposes; monitoring public reports concerning larger scale consumer data security breaches for fraud protection purposes; providing alerts and notification information concerning possible fraud and identity theft related to such events for fraud protection purposes; monitoring personal financial account activities for atypical activities for fraud protection services; computer technology consultancy; computer programming; rental of computer software; computer system design
International Class(es): 042 - Primary Class U.S Class(es): 100, 101
Class Status: ACTIVE
Basis: 1(b)
For: Providing consultation to third parties in the field of prevention of data theft, identity theft, and prevention of unsolicited commercial electronic mail, namely, removal from junk mail lists and offers for pre-approved credit
International Class(es): 045 - Primary Class U.S Class(es): 100, 101
Class Status: ACTIVE
Basis: 1(b)
Basis Information (Case Level)
Filed Use: No Currently Use: No
Filed ITU: Yes Currently ITU: Yes
Filed 44D: No Currently 44E: No
Filed 44E: No Currently 66A: No
Filed 66A: No Currently No Basis: No
Filed No Basis: No
Current Owner(s) Information
Owner Name: Symantec Corporation
Owner Address: 350 Ellis Street Mountain View, CALIFORNIA UNITED STATES 94043
Legal Entity Type: CORPORATION State or Country Where DELAWARE Organized:
http://tsdr.uspto.gov/ 4/22/2019 Status Search SN 88352424 Page 3 of 5
Attorney/Correspondence Information
Attorney of Record
Attorney Name: Sally M. Abel, Esq. Docket Number: 25389-70410
Attorney Primary Email [email protected] Attorney Email Authorized: Yes Address:
Correspondent
Correspondent SALLY M. ABEL, ESQ. Name/Address: FENWICK & WEST LLP 801 CALIFORNIA STREET SILICON VALLEY CENTER MOUNTAIN VIEW, CALIFORNIA UNITED STATES 94041
Phone: 650-988-8500 Fax: (650) 938-5200
Correspondent e-mail: [email protected] [email protected] Correspondent e-mail Yes Authorized:
Domestic Representative - Not Found
Prosecution History
Date Description Proceeding Number
Apr. 17, 2019 ASSIGNED TO EXAMINER 94346
Apr. 11, 2019 NOTICE OF DESIGN SEARCH CODE E-MAILED
Apr. 10, 2019 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
Mar. 26, 2019 NEW APPLICATION ENTERED IN TRAM
TM Staff and Location Information
TM Staff Information
TM Attorney: BROWNING, LUKE CASH Law Office Assigned: LAW OFFICE 127
File Location
Current Location: TMO LAW OFFICE 127 Date in Location: Apr. 17, 2019
Assignment Abstract Of Title Information - None recorded
Proceedings
Summary Party type Proceeding type
Number of Proceedings: 2
Type of Proceeding: Opposition
Proceeding Number: 91247626 Filing Date: Apr 17, 2019
Status: Pending Status Date: Apr 17, 2019
Interlocutory Attorney: REBECCA J STEMPIEN COYLE
Defendant
Name: Integrity Risk International LLC
Correspondent Address: GREGORY P BRUMMETT BRUMMETT TECHLAW PLLC 2201 COOPERATIVE DR, STE 600 HERNDON VA , 20171
Correspondent e-mail: [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
INTEGRITYRISK IMPACT Opposition Pending 88014720
Plaintiff(s)
http://tsdr.uspto.gov/ 4/22/2019 Status Search SN 88352424 Page 4 of 5
Name: Symantec Corporation
Correspondent Address: SALLY M. ABEL, ESQ. AND RANDI RADER, ESQ. FENWICK & WEST LLP 801 CALIFORNIA STREET SILICON VALLEY CENTER MOUNTAIN VIEW CA UNITED STATES , 94041
Correspondent e-mail: [email protected] , [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
Section 8 and 15 - Accepted and 76607897 3861132 Acknowledged
Registered 85154143 4354348
NORTON BY SYMANTEC Registered 85163095 4368939
SYMANTEC Registered 85163091 4368938
SYMANTEC.CLOUD Registered 85185160 4672009
SYMANTEC Registered 86150175 4690810
NORTON LIFELOCK Non-Final Action - Mailed 88126071
New Application - NORTON 88289816 Assigned to Examiner
New Application - LIFELOCK WITH NORTON 88352424 Assigned to Examiner
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Apr 17, 2019
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Apr 17, 2019 May 27, 2019
3 INSTITUTED Apr 17, 2019
Type of Proceeding: Opposition
Proceeding Number: 91247631 Filing Date: Apr 17, 2019
Status: Pending Status Date: Apr 17, 2019
Interlocutory Attorney: MARY B MYLES
Defendant
Name: Integrity Risk International LLC
Correspondent Address: GREGORY P BRUMMETT BRUMMETT TECHLAW PLLC 2201 COOPERATIVE DR, STE 600 HERNDON VA , 20171
Correspondent e-mail: [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
INTEGRITYRISK WEALTH Opposition Pending 88014674
Plaintiff(s)
Name: Symantec Corporation
Correspondent Address: SALLY M. ABEL, ESQ. AND RANDI RADER, ESQ. FENWICK & WEST LLP 801 CALIFORNIA STREET SILICON VALLEY CENTER MOUNTAIN VIEW CA UNITED STATES , 94043
Correspondent e-mail: [email protected] , [email protected]
Associated marks
Mark Application Status Serial Number Registration Number
Section 8 and 15 - Accepted and 76607897 3861132 Acknowledged
http://tsdr.uspto.gov/ 4/22/2019 Status Search SN 88352424 Page 5 of 5
Registered 85154143 4354348
NORTON BY SYMANTEC Registered 85163095 4368939
SYMANTEC Registered 85163091 4368938
SYMANTEC.CLOUD Registered 85185160 4672009
SYMANTEC Registered 86150175 4690810
NORTON LIFELOCK Non-Final Action - Mailed 88126071
New Application - NORTON 88289816 Assigned to Examiner
New Application - LIFELOCK WITH NORTON 88352424 Assigned to Examiner
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Apr 17, 2019
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Apr 17, 2019 May 27, 2019
3 INSTITUTED Apr 17, 2019
http://tsdr.uspto.gov/ 4/22/2019