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Notice of Opposition Opposer Information Applicant Information Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA435077 Filing date: 10/11/2011 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 Equifax Inc. Granted to Date 10/12/2011 of previous extension Address 1550 Peachtree Street, N.W. Atlanta, GA 30309 UNITED STATES Attorney Christine P. James information Kilpatrick Townsend & Stockton LLP 1100 Peachtree Street, Suite 2800 Atlanta, GA 30309 UNITED STATES [email protected], [email protected], [email protected], [email protected], [email protected] Applicant Information Application No 85179322 Publication date 06/14/2011 Opposition Filing 10/11/2011 Opposition 10/12/2011 Date Period Ends Applicant Antoine Pierre-Louis 255 West 36th Street 8th Fl New York, NY 10018 UNITED STATES Goods/Services Affected by Opposition Class 035. First Use: 2008/01/01 First Use In Commerce: 2008/01/01 All goods and services in the class are opposed, namely: Financial records management Grounds for Opposition Priority and likelihood of confusion Trademark Act section 2(d) Dilution Trademark Act section 43(c) Marks Cited by Opposer as Basis for Opposition U.S. Registration 1027544 Application Date 03/10/1975 No. Registration Date 12/16/1975 Foreign Priority NONE Date Word Mark EQUIFAX Design Mark Description of NONE Mark Goods/Services Class 036. First use: First Use: 1975/02/28 First Use In Commerce: 1975/03/04 INSURANCE RISK INFORMATION REPORTING SERVICES CONCERNING POTENTIAL POLICY HOLDERS U.S. Registration 1045574 Application Date 07/09/1975 No. Registration Date 08/03/1976 Foreign Priority NONE Date Word Mark EQUIFAX Design Mark Description of NONE Mark Goods/Services Class 035. First use: First Use: 1975/02/28 First Use In Commerce: 1975/03/04 CONDUCTING INVESTIGATIONS AND REPORTING ON INDIVIDUALS AND FIRMS CONCERNING CREDIT, CHARACTER AND FINANCES IN CONNECTION WITH INSURANCE, CREDIT, EMPLOYMENT AND CLAIMS REPORTING SERVICES U.S. Registration 1644585 Application Date 02/09/1990 No. Registration Date 05/14/1991 Foreign Priority NONE Date Word Mark EQUIFAX Design Mark Description of NONE Mark Goods/Services Class 035. First use: First Use: 1975/02/28 First Use In Commerce: 1975/03/04 commercial information agency services for businesses in the areas of real estate, property valuations, pre-employment screening, energy utilization, motor vehicle reports, consumer marketing, credit information, and life, health, property and casualty insurance; marketing services, namely, market research, market data analysis, consulting services in the area of marketing programs, conducting and analyzing survey research, providing mailing lists, and direct mail advertising services; target marketing services,namely, providing demographic, socioeconomic and financial information for target marketing purposes, and market analysis; data processing services in the field of account billing, monitoring and collecting; and business management services, namely, account billing, monitoring and collecting Class 036. First use: First Use: 1975/02/28 First Use In Commerce: 1975/03/04 consulting services in the field of life, health, property and casualty insurance; credit information services, namely, providing credit information relating to consumer or commercial applicants for credit, mortgage loans, utility services and employment, and to fraud prevention; providing credit application processing; credit inquiry and consulting services; and real estate appraisal services Class 042. First use: First Use: 1975/00/00 First Use In Commerce: 1975/00/00 providing on-line access to computer databases containing information relating to applicants for insurance, credit, mortgage loans, and employment, and relating to motor vehicle reports, to debt servicing, and to demographic, socioeconomic and financial data for target marketing; conducting and analyzing safety and loss control surveys; collection and provision of medical histories, physical measurements and other health information; and consulting services in the field of effective energy utilization U.S. Registration 2179258 Application Date 09/30/1996 No. Registration Date 08/04/1998 Foreign Priority NONE Date Word Mark EQUIFAX DECISION POWER Design Mark Description of NONE Mark Goods/Services Class 036. First use: First Use: 1997/04/01 First Use In Commerce: 1997/04/01 evaluation of consumer credit data, namely, providing customers with point of sale consumer information and consumer identification U.S. Registration 2615711 Application Date 09/07/1999 No. Registration Date 09/03/2002 Foreign Priority NONE Date Word Mark EQUIFAX RAPIDRESOLVE Design Mark Description of NONE Mark Goods/Services Class 036. First use: First Use: 2000/02/00 First Use In Commerce: 2000/02/00 financial services, namely providing credit grantors with updated consumer credit information U.S. Registration 2714088 Application Date 08/31/2000 No. Registration Date 05/06/2003 Foreign Priority NONE Date Word Mark EQUIFAX ID ADVISOR Design Mark Description of NONE Mark Goods/Services Class 036. First use: First Use: 2000/09/00 First Use In Commerce: 2000/09/00 Financial services, namely, providing financial risk reduction advice and information in the field to financial risk reduction to credit grantors U.S. Registration 2896013 Application Date 06/19/2000 No. Registration Date 10/19/2004 Foreign Priority NONE Date Word Mark EQUIFAX EPORT Design Mark Description of NONE Mark Goods/Services Class 036. First use: First Use: 2000/05/00 First Use In Commerce: 2000/05/00 information services, namely, providing credit information via a global computer network U.S. Registration 3010379 Application Date 08/27/2004 No. Registration Date 11/01/2005 Foreign Priority NONE Date Word Mark EQUIFACTS Design Mark Description of NONE Mark Goods/Services Class 036. First use: First Use: 2004/06/00 First Use In Commerce: 2004/06/00 Providing credit information and statistics to consumers via a global information network Attachments 75793456#TMSN.gif ( 1 page )( bytes ) 76120012#TMSN.gif ( 1 page )( bytes ) 76072976#TMSN.gif ( 1 page )( bytes ) 76610262#TMSN.gif ( 1 page )( bytes ) 2011.10.11 Notice of Opposition (Equitix).pdf ( 10 pages )(36006 bytes ) Exhibit A - Information Week Articles.pdf ( 10 pages )(195395 bytes ) Exhibit B Fintech.pdf ( 12 pages )(154575 bytes ) Exhibit C - Equifax Registrations.pdf ( 10 pages )(268931 bytes ) Exhibit D Equitix Home Page.pdf ( 9 pages )(542722 bytes ) Certificate of Service The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address record by First Class Mail on this date. Signature /Sabina A. Vayner/ Name Sabina A. Vayner Date 10/11/2011 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD EQUIFAX INC., ) ) Opposition No. _____________ Opposer, ) ) Application Serial No. 85/179,322 v. ) ) Mark: EQUITIX ANTOINE PIERRE-LOUIS, ) ) Applicant. ) NOTICE OF OPPOSITION Opposer Equifax Inc. (“Equifax”), a Georgia corporation with a principal place of business at 1550 Peachtree Street, N.W., Atlanta, Georgia 30309, believes that it will be damaged by registration of the EQUITIX mark set forth in application Serial No. 85/179,322 (the “Application”), owned by Applicant Antoine Pierre-Louis, an individual residing at 255 West 36th Street, 8th Floor, New York, New York 10018 (“Applicant”), and states the following for its opposition to that Application, in accordance with the provisions of 15 U.S.C. § 1063: 1. Equifax is a global leader in information solutions, leveraging one of the largest sources of consumer and commercial data with advanced analytics and proprietary technology to provide businesses and consumers with credit intelligence, portfolio management, fraud detection, decisioning technology, identity protection, financial management, and marketing services, among others. 2. Equifax is the owner of the EQUIFAX trademark, which it continually has used in United States commerce in connection with a wide range of financial-related information and consulting services since at least as early as 1975, and which it continues to use today (the “EQUIFAX Mark”). 3. Considered one of the three largest credit agencies in the United States, Equifax generated $1.86 billion dollars in revenue in 2010 alone. Today, Equifax operates in the United States and in fifteen other countries throughout North America, Latin America, Europe, and Asia, is a member of Standard & Poor’s (S&P) 500® Index, and is publicly- traded on the New York Stock Exchange. 4. For nearly a decade, Equifax has been listed on the InformationWeek 500, a prestigious listing of the nation’s largest and most innovative providers of information technology. In 2007, Equifax was named one of InformationWeek’s “Magnificent Seven,” placing it among the top seven companies to have achieved the highest scores on the InformationWeek 500 list within the preceding five years, with Equifax as the only information solutions company on the “Magnificent Seven” list. In 2010, Equifax was ranked #29 on the InformationWeek 500 list and was named a finalist in the banking and financial services category. True and correct printouts from InformationWeek’s website and Equifax’s website, reflecting these honors, are attached as Exhibit A. 5. Among other accolades recently received by Equifax, Equifax was honored for the
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