throbber
TTAB
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of
`
`Trademark Application Serial Nos. 76/035,136 and 76/ 035,135
`Marks: INTUITOUCH and INTUIVISION
`
`Intuit Inc.
`
`Opposer,
`
`vs.
`
`Interlink Electronics, Inc.
`
`‘&%-/\—/V--—’
`
`Consolidated Opposition Nos.
`91/ 124,742 and 91 / 124,758
`
`Applicant
`__m_____m)
`
`\../%t
`
`Express Mailmailin label No. 51/51 Z 22? 3/1 Q5
`Date of Deposit 25/55 0 6
`I hereby cerl:i.fy that this paper or fee is being deposited with the United States Postal Service
`"Express Mail Post Office to Addressee" service under 37 CPR 1.10 on the date indicated
`above and is addressed to: Commissioner for Trademark, P.O. Box 1451, Alexandria, Virginia
`2233-1451.
`,
`,
`_
`/1 //2'
`'/zucrr
`
` Si ture of Person Mailin Pa er or Fee
`
`‘
`
`BOX TTAB NO FEE
`
`Commissioner For Trademarks
`
`P.O. Box 1451
`
`Alexandria, Virginia 22313-1451
`
`OPPOSER’S NOTICE OF RELIANCE
`
`PURSUANT TO RULE 2.120(e) ON OFFICIAL RECORDS
`
`Pursuant to Rule 2.122(e) of the Trademark Rules of Practice, Intuit Inc.
`
`("Opposer") hereby submits this Notice of Reliance in regard to Opposer's rebuttal
`
`testimony. Opposer hereby makes of record in this proceeding the following notices and
`
`orders from proceedings at the Trademark Trial and Appeal Board which are official U.S.
`
`Patent and Trademark Office records and are relevant in this proceeding:
`
`Tab Description of Materials
`1
`Stipulated Motion to Extend and Reset Testimony Periods Pursuant to Settlement
`Agreement in Opposition No. 94,134.
`
`08-14-2006
`U3‘ Pam‘ 5‘ "“°“°"TM Mail Rant 01. i ':
`
`

`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`Withdrawal of Notice of Opposition Pursuant to Settlement Agreement in
`Opposition No. 94,134.
`Request for Second Extension of Time to File Notice of Opposition against
`Application Serial No. 76/ 273,264.
`Order Granting Request to Extend Time to Oppose Application Serial No.
`76/ 273264.
`First 90 Day Request for Extension of Time to Oppose for Good Cause Against
`Application Serial No. 78265513.
`Order Granting Request to Extend Time to Oppose Application Serial No.
`78265513.
`
`Order Denying Applicant's Motion for Partial Summary Judgment (to dispute
`fame of INTUIT mark) in Opposition No. 91/ 157414
`
`The foregoing materials are relevant evidence of the facts alleged in the
`
`Notice of Opposition including, without limitation, the facts alleged in Paragraphs 2 and 3,
`
`and are relevant evidence to counter Applicant's Notice of Reliance Pursuant to Rule
`
`2.122(e) on Printed Publications and Applicant's Notice of Reliance Pursuant to Rule
`
`2.122(e) on Official Records. In particular, the materials underscore the strength of
`
`Opposer’s mark and that a likelihood of confusion exists between Opposer’s INTUIT mark
`
`and App1icant’s INTUITOUCH and INTUIVISION marks. Accordingly, the materials are
`
`admissible pursuant to Rule 2.122(e).
`
`Opposer’s submission of the foregoing material is without prejudice to
`
`Opposer’s right to object to its use by Applicant pursuant to the Federal Rules of Evidence,
`
`Board rules and procedures, Board precedent, and general federal common law.
`
`Dated: August ti, 2006
`
`1'
`
`' da G. Henry, Esq.
`Attorneys for Opposer
`FENWICK & WEST
`
`Silicon Valley Center
`801 California Street
`
`Mountain View, CA 94041
`
`(650) 988-8500
`
`Marks: INTUITOUCH and INTUIVISION
`Consolidated Opposition Nos.: 91/124,742 and 91/1124,7758
`Applicant: Interlink Electronics, Inc.
`
`

`
`PROOF OF SERVICE BY MAIL
`
`I declare that:
`
`I am employed in the County of Santa Clara, California.
`
`I am over the age of
`
`eighteen years and not a party to the within cause; my business address is Silicon Valley
`
`Center, 801 California Street, Mountain View, CA 94041. On August _1_g, 2006, I served the
`
`within OPPOSER’S NOTICE OF RELIANCE PURSUANT RULE 2.120(e) ON OFFICIAL
`
`RECORDS, on the interested parties in said cause, by placing a true copy thereof enclosed in
`
`a sealed envelope with postage thereon fully prepaid, in the United States mail at Mountain
`
`View, California, addressed as follows:
`
`Mark A. Cantor, Esq.
`Anessa O. Kramer, Esq.
`Brooks 8: Kushman P.C.
`
`1000 Town Center
`
`Twenty—Second Floor
`Southfield, Michigan 48075
`
`I declare under penalty of perjury that the foregoing is true and correct, and
`
`that this declaration was executed at Mountain View, California, thisfl day of August,
`
`2006.
`
`-~
`p
`(9%
`P yllis O'Sullivan
`
`'
`
`-
`r/£.‘:z
`
`20797100070/DOCSl1648086.I
`
`Marks: INTUITOUCH and INTUIVISION
`
`Consolidated Opposition Nos.: 91/124,742 and 91/l24,7758
`Applicant: Interlink Electronics, Inc.
`
`

`
`TAB 1
`
`

`
`,.._..-r-u
`
`)1
`
`3%
`
`UNITED STATES PATENT AND TRADEMARK OFFI
`
`CE
`
`BEFORE THE TRADEMARK TRIAL
`
`IN THE
`
`AND APPEAL BOARD
`
`
` £8=8NV2E]V 1124*.09.
`
`.—._:..
`
`illlifliilfliiiilililliiiiiiiililiiilillm
`07-24-2002 4:
`
`mi. Pauntl momm M." R,“ D,_ ,
`
`'l‘J33ddVawivzsiH>-J\.2'H3flVHi
`
`In the matter of
`
`Trademark Application Serial No. 7_4I410,846
`Mark: INTUITY
`
`)
`
`) )
`
`Opposer,
`
`INTUIT INC.
`
`-
`
`vs.
`
`) Opposition No. 94,134
`J
`)
`AVAYA INC.
`)
`(by assignment from Lucent Technologies, Inc.)
`)
`Applicant.
`*_
`Box TTAB NO FEE
`
`Assistant Commissioner for Trademarks
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`
`
` Express Mail mailing label No. EL 95? 9655 25’ U5
`
`0 57-
`E
`Date ofbeposil
`I hereby certify that this paper or fcc is being dcpositcd with lhc United States Postal Service "Express
`Mail Post Office to Addrcsscc" service under 37 CFR 1.10 on ihc date indicated above and is addressed
`
`
`
`
`5 isumt Commissioner/for Trademark. 2900 Crystal Dr., Arlington, VA 222024513.
`L
`/I
`(Tygc r Pint Namg gt" Person Mailing Pnpcr or Fcc)
`
`(Sign
`re of Person Mailing Paper or Fee)
`
`
`
`
`Sir:
`
`,STIPULATED MOTION TO EXTEND AND RESET
`TESTIMONY PERIODS
`
`Opposer, INTUIT INC., by and through its attorneys, hereby moves the
`
`Trademark Trial and Appeal Board for an order that the discovery and testimony
`
`periods set in the above—entitl_ed matter be extended for a period of sixty (60) days and
`
`reset as follows:
`
`Testimony period for party in position
`of plaintiff to close (opening 30 days
`
`

`
`Testimony period for party in position
`of defendant to close (opening 30 days
`Prior thereto)
`
`November 20, 2002
`
`Rebuttal testimony period to close
`(opening 15 days prior thereto)
`
`Ianuary 4, 2003
`
`This request is made in good faith and not for the purpose of unduly
`
`delaying proceedings in the Patent and Trademark Office. The parties have executed a
`
`Settlement Agreement dated January 22, 2002 that would obviate the need for a formal
`opposition proceeding. In such Settlement Agreement, the parties have agreed to
`
`extensions of time in this opposition proceeding to allow the Patent and Trademark
`
`Office sufficient time to review and rule on Applicant's Motion to Amend the
`
`Identification of Goods, filed in compliance with the terms of the Settlement Agreement
`
`and for Opposer to be informed that Applicant's amendment to the specification has
`
`been accepted by the Patent and Trademark Office. Additional time is necessary before
`
`Opposer can withdraw the opposition.
`
`This motion is being submitted in triplicate.
`
`Dated: }u1y.Q2, 2002
`
`Respectfully submitted,
`
`
`
`.
`-
`ally M. Abel, Esq.
`Linda G. Henry, Esq.
`Attorney for Opposer
`Fenwick 8: West LLP
`
`Two Palo Alto Square
`Palo Alto, California 94306
`(650) 494-1417
`
`MARK: INTUITY
`OPP. NO.: 94,134
`
`-2—
`
`

`
`PROOF OF SERVICE BY MAIL
`
`I am employed in the County of Santa Clara, California. I am over the age of
`
`eighteen years and not a party to the within cause; my business address is Two Palo
`
`Alto Square, Palo Alto, CA 94306. On the date set forth below, I served the
`
`following: STIPULATED MOTION TO EXTEND AND RESET TESTIMONY
`
`PERIODS on the interested parties in this action by placing a copy thereof in a
`
`sealed envelope and placing the envelope for collection and mailing at the above
`
`address, following ordinary business practices, addressed as follows:
`
`Joan T. Pinaire
`
`Avaya Inc.
`Corporate Counsel
`Trademarks & Copyrights
`211 Mount Airy Road
`Basking Ridge, New Jersey 07920
`
`Joan T. Pinaire, Esq.
`McCarter & English, LLP
`Four Gateway Center
`P.O. Box 652
`
`Mulberry Street
`Newark, NJ 07101-0652
`
`I am readily familiar with this business’ practice for collection and processing
`
`of correspondence for mailing with the U.S. Postal Service. This correspondence
`
`would be deposited with the U.S. Postal Service this same day in the ordinary
`
`course of business. I declare under the penalties of perjury that the above is true
`
`and correct, and that this declaration was executed at Palo Alto, California this
`
`find day of July 2002.
`
`2079'H00070IDOCS.v'l 2479 I 8.1
`
`Phyllis 0’Sul1ivan
`
`MARK: INTUITY
`OPP. NO.: 94,134
`
`-3-
`
`

`
`TAB 2
`
`

`
`....
`?;°_.
`
`,
`
`3
`E
`G‘?
`'5’;
`
`3 c
`
`o 21
`L‘
`— g
`-V-'
`:7
`
`at
`
`/i iv“ 040
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of
`
`Trademark Application Serial No. 74/410,846
`Published: February 1, 1994
`Mark: INTUITY
`
`INTUIT INC.
`
`Opposer,
`
`v.
`
`AVAYA INC.
`(by assignment),
`Applicant,
`
`Box 'I'I‘AB NO FEE
`Assistant Commissioner for Trademarks
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`)
`)
`)
`)
`)
`)
`)
`
`Opposition No. 94,134
`
`WITHDRAWAL OF
`NOTICE OF OPPOSITION
`
`
`
`u.a. Pm:-at a. TMDfcJ'TM Man Rent. or :57
`llllllllllllllllllllllllllllllllllllllllllllllllll
`08435-2002
`
`9 5 Z 9 Q 5 5
`
`Express Mail mailing label No.
`Date ofDeposit
`93 5/0 Q
`I hereby certify that this paper or fee is being deposited with the United States Postal Service “Express
`Mail Post Office to Addressce" service under 37 CFR L10 on the date indicated above and is addressed
`to: Assistant Commissioner for Trademark, 2900 Crystal Dr., Arlington, VA 22202-35l3.
`:5
`“Jo 1'9’
`iling Paper or Fee)
`
`(Type r Print Name of Person
`
`Pursuant to a Settlement and Coexistence Agreement reached by the parties,
`
`Opposer, intuit Inc. hereby withdraws with prejudice its Notice of Opposition to registration of the
`
`mark identified by Application Serial No. 74l4l0,846. This Withdrawal of Notice of Opposition is
`
`being submitted in triplicate. A copy has been served on counsel for Applicant via first class mail
`
`pursuant to the Certificate of Service by Mail attached hereto.
`Respectfully submitted,
`
`Dated:(
`
`By:
`
`
`
`1y M. Abel, Esq.
`Linda G. Henry, Esq.
`Attorneys for Opposer
`FENWICK & WEST LLP
`
`Two Palo Alto Square, Suite 800
`Palo Alto, CA 94306
`(650) 494-0500
`
`

`
`PROOF OF SERVICE BY MAIL
`
`I am employed in the County of Santa Clara, California.
`
`I am over the age of eighteen years
`
`and not a party to the within cause; my business address is Two Palo Alto Square, Palo Alto, CA
`
`94306. On the date set forth below, I served the following: WITHDRAWAL OF NOTICE OF
`
`OPPOSITION on the interested parties in this action by placing a copy thereof in a sealed
`
`envelope and placing the envelope for collection and mailing at the above address, following
`
`ordinary business practices, addressed as follows:
`
`Joan T. Pinaire, Esq.
`McCaner & English, LLP
`Four Gateway Center
`P.O. Box 652
`
`Mulberry Street
`Newark, NJ 07101-0652
`
`I am readily familiar with this business‘ practice for collection and processing of
`
`correspondence for mailing with the U.S. Postal Service. This correspondence would be deposited
`
`with the U.S. Postal Service this same day in the ordinary course of business.
`
`I declare under the
`
`penalties of perjury that the above is true and correct, and that this declaration was executed at Palo
`A
`Alto, California this 5 if day of August 2002.
`
`I 0‘
`P
`Phy s 0’Sullivan
`
`20797100070.‘DOCS! 1 238403. I
`
`

`
`TAB 3
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`Linda G. Henry
`Fenwick & West, LLP
`
`Two Palo Alto Square, Suite 800
`Palo Alto, CA 94306
`
`Mailed: August 2, 2002
`
`Serial No.: 76273264
`
`TAMMY LOGAN, LEGAL ASSISTANT
`
`to extend time to oppose is granted until
`The request
`7/17/02 on behalf of potential opposer Intuit Inc.
`
`Please do not hesitate to Contact
`
`the Trademark Trial and
`
`Appeal Board for any questions relating to this extension.
`
`

`
`TAB 4
`
`

`
`7235-r:"tn“""
`‘
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE TH1a‘Ji‘1%E!i*1i.I°-iI~2i,E1§i<3‘iRIAL
` AND APPEAL BOARD
`
`NO‘:
`
`Filed:
`
`June 18, 2001
`
`Trademark:
`
`INTUICOM
`
`Published: March 19, 2002
`
`lllllllillllIllllllllliilllllllilllllliiililllllll
`
`U3. PIN“ I TMOTDITM Mfll
`
`. of Person Mailing Paper or Fee)
`
`Express Mail mailing label No.
`Date of Deposit
`/3/0*;
`I hereby certify that this paper or fee is being deposited with the United States Pasta! Service "Express
`Mail Post Oflicc to Addresses" service under 37 CFR LID on the date indicated above and is
`
`addressed to: Assistnpt Commissioner for Trademark. 2900 Crystal Dr.. Arlington. VA 22202-35:3.
`‘
`I I V
`
`(Type or Pri
`1‘
`
`tNnmc plgcriun Maijing Paper or Fee)
`v_
`_1_‘_
`
`TFAB BOX NO FEE
`Assistant Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`REQUEST FOR SECOND EXTENSION OF TIME TO FILE
`NOTICE OF OPPOSITION
`
`Intuit Inc., a Delaware corporation having its principal place of business at
`
`2535 Garcia Avenue, Mountain View, California 94043, by and through its attorneys
`
`hereby requests that the Board grant a thirty (30) day extension of time to file a Notice
`
`of Opposition to registration of the INTUICOM trademark by applicantin the above-
`
`referenced case. The opposition period is presently set to expire June 17, 2002, and the
`
`20797/00070lDOCSa"l 260 l 54.!
`
`

`
`requested extension of time would re-set the opposition deadline to July 17, 2002 for
`
`Intuit Inc.
`
`This request is not made to unduly delay proceedings in the Patent and
`
`Trademark Office. The extension is required to provide additional time for the
`
`potential opposer to gather information concerning the applicant's use of the mark in
`
`question so thatla decision can be made as to whether opposition should be filed. It is
`
`believed that this constitutes good cause for the request.
`
`This request is being submitted in triplicate as required by 37 C.F.R.
`
`§2.102(d).
`
`Dated: June LL 2002
`
`Respectfully submitted,
`
`By:
`
`
`
`M. Abel, Esq.
`Linda G. Henry, Esq.
`Attorneys for Potential Opposer
`FENWICK & WEST LLP
`
`Two Palo Alto Square, Suite 800
`‘Palo Alto, CA 94306
`‘
`(650) 494-0600
`
`Applicant: Intuicom, Inc.
`Serial No.: 76f273,264
`Trademark: INTUICOM
`
`-2-
`
`Req. for 2nd Ext. of Time to File Notice of Opp.
`
`2079?I'O0070/DOCS/I 260154.!
`
`
`
`

`
`TAB 5
`
`

`
`Trademark Triai and Appeal Board Electronic Filing System. 111113;/[esr_ig._:is;gto_. gg
`
`ESTTA Tracking number: ESTTA49760
`
`Filing date?
`
`10120/2005
`
`]N THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Applicant:
`
`CHILDRE, DOC
`
`Application Serial Number: 78265513
`
`Application Filing Date:
`
`()5/2 1 /2 003
`
`Mark:
`
`INTULTECHNOLOGY
`
`Date ofPublication
`
`09/20/2005
`
`First 90 Day Request for Extension of Time to Oppose for Good Cause
`
`Pursuant to 37 C.F.R. Section 2.102, Intuit Inc., 2535 Garcia Avenue, Mountain View,
`CA94043, UNITED STATES, a corporation organized under the laws of Delaware,
`respectfiilly requests that it be granted a 90-day extension of time to file a notice of
`opposition against the above-identified mark for cause shown .
`
`Potential opposer believes that good cause is established for this request by:
`
`c
`
`The extension is required to provide time for the potential opposer to consider the
`matter. gather information and confer with counsel so that a decision can be
`made as to whether an opposition should be filed.
`
`The time within which to file a notice of opposition is set to expire on 10/20/2005. Intuit
`Inc. respectfully requests that the time period within which to file an opposition be
`extended until 01/ I 8/2006.
`
`Respectfully submitted,
`lighl
`10/202'2005
`
`Linda G. Henry, Esq.
`
`Fenwick & VVest LLP
`
`Silicon Valley Center801 California Street
`
`Mountain View, CA94041—2008
`
`UNITED STATES
`
`trademark@fenwick.com
`
`

`
`(650) 988-8500
`
`

`
`TAB 6
`
`

`
`UNWEDSTATESPATENTANDTRADEMARKOFHCE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`LINDA G. HENRY
`FENWICK & WEST LLP
`
`SILICON VALLEY CENTER,
`801 CALIFORNIA STREET
`
`MOUNTAIN VIEW, CA 941041-2008
`
`Mailed: October 21, 2005
`Serial No.: 78265513
`
`HAROLD ROSS: LEGAL ASSISTANT
`
`The request to extend time to oppose is granted until
`1/18/06 on behalf of potential opposer INTUIT INC.
`
`Please do not hesitate to contact the Trademark Trial and
`
`Appeal Board for any questions relating to this extension.
`
`New Develogments at the Trademark Trial and Appeal Board
`
`TTAB forms for electronic filing of extensions of time to
`oppose, notices of opposition, and inter partes filings are now
`available at http://estta.uspto.gov.
`Images of TTAB proceeding
`files can be viewed using TTABVue at http://ttabvue.uspto.gov.
`
`Parties should also be aware of changes in the rules affecting
`trademark matters,
`including rules of practice before the TTAB.
`See Rules of Practice for Trademark—Related Filings Under the
`Madrid Protocol Implementation Act, 68 Fed. R. 55,748 (September
`26, 2003)
`(effective November 2, 2003) Reorganization of
`Correspondence and Other Provisions, 68 Fed. Reg. 48,286 (August
`13, 2003)
`(effective September 12, 2003). Notices concerning the
`rules changes are available at www.uspto.gov.
`
`

`
`TAB 7
`
`

`
` THIS OPINION IS NOT
`
`CFTABLE
`ASPRECEDENTOF
`THETTAB
`
`Greenbaum
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Trademark Trial and Appeal Board
`2900 Crystal Drive
`Arlington, Virginia 22202-3514
`
`Mailed: August 31, 2004
`
`Opposition No. 91157414
`
`INTUIT INC.
`
`V.
`
`ROSEMOUNT OFFICE SYSTEMS,
`
`INC.
`
`Before Seeherman, Hairston and Drost, Administrative
`Trademark Judges.
`
`By the Board.
`
`This case now comes up on applicant's motion for
`
`partial summary judgment on the issue of dilution.
`
`The
`
`parties have fully briefed the issue, and we have considered
`
`applicant's reply brief.
`
`See Trademark Rule 2.l27(a).
`
`For purposes of this order, we presume the parties’
`
`familiarity with the pleadings,
`
`the history of the
`
`proceeding and the arguments and evidence submitted with
`
`respect to the partial summary judgment motion.
`
`A party is entitled to summary judgment when it has
`
`demonstrated that there are no genuine issues as to any
`
`material facts, and that it is entitled to judgment as a
`
`matter of law.
`
`Fed. R. Civ. P. 56(c).
`
`The evidence must be
`
`viewed in a light favorable to the nonmoving party, and all
`
`justifiable inferences are to be drawn in the nonmovant‘s
`
`

`
`favor. Opryland USA Inc. v. The Great American Music Show,
`
`InC., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992).
`
`Upon careful consideration of the arguments and
`
`evidence presented by the parties, and drawing all
`
`inferences with respect
`
`to the motion in favor of opposer as
`
`the nonmoving party, we find that applicant has not
`
`demonstrated the absence of a genuine issue of material fact
`
`for trial. At a minimum, applicant has failed to show the
`
`absence of genuine issues as to whether opposer's mark is
`
`famous and distinctive.
`
`In view thereof, applicant's partial summary judgment
`
`motion is denied.
`
`The parties should note that evidence submitted in
`
`support of or in opposition to a motion for summary judgment
`
`is of record only for consideration of that motion. Any
`
`such evidence to be considered at final hearing must be
`
`properly introduced during the appropriate trial period.
`
`See, for example, Levi Strauss & Co. v. R. Joseph Sportswear
`
`Ino., 28 USPQ2d 1464 (TTAB 1993).
`
`In view of the fact that
`
`opposer has furnished supplemental discovery to applicant
`
`prior to trial, we will not entertain a motion to strike
`
`said materials on the basis that they were not previously
`
`furnished in response to discovery requests.1
`
`1 Of course, opposer must properly make these materials of record
`during its testimony period.
`
`

`
`Inasmuch as applicant's motion for partial summary
`
`judgment is the only motion before us, and because discovery
`
`has closed, proceedings are resumed according to the
`
`following schedule:
`
`DISCOVERY PERIOD TO CLOSE:
`
`CLOSED
`
`Thirty-day testimony period for party in position of plaintiff to close:
`
`December 1, 2004
`
`Thirty-day testimony period for party in position of defendant to close: January 30, 2005
`
`Fifteen-day rebuttal testimony period to close:
`
`March 16, 2005
`
`In each instance, a copy of the transcript of testimony
`
`together with copies of documentary exhibits, must be served
`
`on the adverse party within thirty days after completion of
`
`the taking of testimony. Trademark Rule 2.125.
`
`Briefs shall be filed in accordance with Trademark Rule
`
`2.l28(a) and (b).
`
`An oral hearing will be set only upon
`
`request filed as provided by Trademark Rule 2.129.
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of
`
`Trademark Application Serial Nos. 76/ 035,136 and 76/ 035,135
`Marks: INTUITOUCH and INTUIVISION
`
`Consolidated Opposition Nos.
`91 /124,742 and 91 /124,758
`
`)
`)
`)
`)
`
`)
`
`) )
`
`Intuit Inc.
`
`Opposer,
`
`vs.
`
`Interlink Electronics, Inc.
`Applicant
`
`Express Mail mailing la?el No. £ V5 1 & 2
`
`E 2 Z
`
`0
`/
`Date of Deposit
`I hereby certify that this paper or fee is being deposited with the United States Postal Service
`"Express Mail Post Office to Acldressee" service under 37 CFR 1.10 on the date indicated
`above and is addressed to: Commissioner for Trademark, P.O. Box 1451, Alexandria, Virginia
`13-1451.
`-
`1%‘; 0, fig/[ft/r/4
`
`(T 'pe or Print Nafne of Person__Mailing Paper or Fee) Si ; ature of Person Mailin Pa er or Fee
`
`BOX TTAB NO FEE
`
`Commissioner For Trademarks
`
`P.O. Box 1451
`
`Alexandria, Virginia 22313-1451
`
`0PPOSER’S NOTICE OF RELIANCE
`
`PURSUANT TO RULE 2.120(j) ON ADMISSIONS
`
`Pursuant to Rule 2.122(j) of the Trademark Rules of Practice, Intuit Inc.
`
`("Opposer") hereby submits this Notice of Reliance in regard to Opposer’s rebuttal
`
`testimony. Opposer hereby makes of record in this proceeding the following requests for
`
`admissions. Applicant failed to respond thereto.
`
`Tab Description of Materials
`Opposer’s First Set of Requests for Admission in Opposition No. 124,742
`Opposer’s First Set of Requests for Admission in Opposition No. 124,758
`
`1 2
`
`

`
`The foregoing materials are relevant evidence of the facts alleged in the
`
`Notice of Opposition including, without limitation, the facts alleged in Paragraphs 2 and 3,
`
`and are relevant evidence to counter Applicant's Notice of Reliance Pursuant to Rule
`
`2.122(e) on Printed Publications and Applicant's Notice of Reliance Pursuant to Rule
`
`2.122(e) on Official Records.
`
`in particular, the materials underscore the strength of
`
`Opposer's mark and that a likelihood of confusion exists between Opposer’s INTUIT mark
`
`and Applicant's INTUITOUCH and INTUIVISION marks. Accordingly, the materials are
`
`admissible pursuant to Rule 2.122(j).
`
`Opposer’s submission of the foregoing material is without prejudice to
`
`Opposer’s right to object to its use by Applicant pursuant to the Federal Rules of Evidence,
`
`Board rules and procedures, Board precedent, and general federal common law.
`
`Dated: August L‘) 2006
`
`
`
`da G. Henry, Esq.
`Attorneys for Opposer
`FENWICK & WEST
`
`Silicon Valley Center
`801 California Street
`
`Mountain View, CA 94041
`(650) 988-8500
`
`Marks: INTUITOUCH and INTUIVISION
`
`Consolidated Opposition N05,: 91/124,742 and |24,758
`Applicant: Interlink Electronics, Inc.
`
`

`
`PROOF OF SERVICE BY MAIL
`
`I declare that:
`
`I am employed in the County of Santa Clara, California.
`
`I am over the age of
`
`eighteen years and not a party to the within cause; my business address is Silicon Valley
`
`Center, 801 California Street, Mountain View, CA 94041. On August 14, 2006, I served the
`
`within OPPOSER’S NOTICE OF RELIANCE PURSUANT RULE 2.120(2) ON ADMISSIONS,
`
`on the interested parties in said cause, by placing a true copy thereof enclosed in a sealed
`
`envelope with postage thereon fully prepaid, in the United States mail at Mountain View,
`
`California, addressed as follows:
`
`Mark A. Cantor, Esq.
`Anessa O. Kramer, Esq.
`Brooks «St Kushrnan PC.
`
`1000 Town Center
`
`Twenty-Second Floor
`Southfield, Michigan 48075
`
`I declare under penalty of perjury that the foregoing is true and correct,
`
`and that this declaration was executed at Mountain View, California, this fl day of
`
`August, 2006.
`
`20797100070/DOCS!1648060.I
`
`PM 0%,, @_,_gfl ,
`
`Phyllis O'Sullivan
`
`Marks: INTUITOUCH and INTUIVISION
`Consolidated Opposition Nos.: 9|/l24,7-42 and l24,758
`Applicant: Interlink Electronics, Inc.
`
`

`
`TAB 1
`
`

`
`IN THE
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL
`
`AND APPEAL BOARD
`
`In the matter of
`
`Trademark Application Serial No. 76/035,136
`Published: July 31, 2001
`Mark: INTUITOUCH
`
`Intuit Inc.
`
`Opposer,
`
`vs.
`
`Interlink Electronics, Inc.
`
`Applicant.
`
`\-../\_/"~._l\_/\;‘-.&'\.J%/%/\-_J\u_J\../\u._/
`
`Opposition No. 124, 742
`
`OPPOSER’S FIRST SET OF
`
`REQUESTS FOR ADMISSION
`
`Pursuant to Rule 36 of the Federal Rules of Civil Procedure and Rule
`
`2.120 of the Trademark Rules of Practice, Opposer Intuit Inc. (“Opposer”) requests
`
`that Applicant Interlink Electronic, Inc. (“Applicant”) answer separately and fully,
`
`in writing, under oath, the following requests for admission within thirty-five (35)
`
`days of the date of service, as noted on the Proof of Service by Mail.
`
`DEFINITIONS
`
`The following terms, as used herein, have the following meanings:
`
`1. “:i’o_u,” “__\Lc_>g_I_"’ or “Applicant” means the named Applicant Interlink
`
`Electronics, Inc. and its present and former agents, employees, officers, directors,
`
`

`
`attorneys, investigators, consultants, experts, and all other persons acting on
`
`Applicant’s behalf.
`
`2.
`
`“ pposer” means the named Opposer Intuit Inc., its predecessors in
`
`interest, its present and former officers, directors, agents, representatives and
`
`employees.
`
`3. “Egg” or “Persons” includes, but is not limited to, any natural
`
`persons, companies, corporations, sole proprietorships, governmental entities,
`
`partnerships, associations, banks and other financial institutions, and all other
`
`entities similar to any of the foregoing, however denominated.
`
`4.
`
`“_l\_/l_a_1;l;_” means any word, name, symbol, design, shape, number, slogan
`
`or device, or any combination thereof, that is used by a Person to identify and
`
`distinguish the Person’s goods and services from the goods and services of others.
`
`5. The terms “refigq,” “relate to,” “relating” and “_r_e_lz§” shall mean
`
`comprising, constituting, containing, embodying, identifying, stating, dealing With,
`
`directly or indirectly mentioning or describing, pertaining or referring to, being
`
`connected with, reflecting upon or resulting from the stated subject matter.
`
`6. “INTUITOUCH” means the mark used or intended to be used by
`
`Applicant on or in connection with goods andfor services, including as set forth in
`
`U.S. Application Serial No. 76/035,136.
`
`7. “INTUITOUCH Product” refers to any and all goods, services,
`
`solutions, and systems that Applicant has advertised, marketed, distributed, offered
`
`for sale, sold or otherwise caused to be provided or that Applicant intends to
`
`advertise, market, distribute, offer for sale, sell or otherwise cause to be provided in
`
`the United States under or in connection with the designation INTUITOUCH.
`
`8. Each paragraph herein shall be construed independently and not by
`
`reference to any other paragraph for the purpose of limitation.
`
`Mark: INTUITOUCH
`Serial No.: 76/035,136
`Opposefs First Set of Requests for Admission
`
`2
`
`

`
`INSTRUCTIONS
`
`1. If any of the following requests for admission cannot be answered fully
`
`and completely after you have made reasonable inquiries of your agents, employees,
`
`attorneys, investigators, consultants, experts and others acting on your behalf,
`
`answer such requests for admission to the fullest extent possible, specifying the
`
`reasons for your inability to answer the remainder of such requests for admission,
`
`and stating whatever information or knowledge you possess concerning the
`
`unanswered portions thereof.
`
`2. If you object to any of the following requests for admission or portions
`
`thereof, please state fully the grounds of such objection and identify any person,
`
`document or communication upon which you rely in support of such objection. If
`
`you object only to a portion of a request, in addition to the foregoing, please answer
`
`fully the portion of the request to which no objection is made-
`
`3. If in answering these requests for admission you claim that there is
`
`any ambiguity in either a particular request for admission or a definition or
`
`instruction applicable thereto, such claim shall not be used by you as a basis for
`
`refusing to respond, but you shall set forth as part of your response the language
`
`deemed to be ambiguous and the interpretation chosen or used in responding to the
`
`particular request for admission.
`
`4. If you assert a claim of privilege with respect to the information
`
`requested by any of the following requests for admission or portions thereof, which
`
`Mark: INTUITOUCH
`Serial No.: 76/035,136
`
`3
`
`Opposer’s First Set of Requests for Admission
`
`

`
`prevents your responding to such request for admission either in whole or in part,
`
`please state fully the grounds of the privilege with sufficient particularity that
`
`existence of the privilege may be determined on a motion to compel responses under
`
`Rule 37(a) of the Federal Rules of Civil Procedure and identify any person,
`
`document or communication upon which you rely in support of the assertion of said
`
`privilege. If only a portion of the information requested by a request for admission
`
`is claimed to be privileged, in addition to the foregoing, please answer fully the
`
`portion of the request for admission to which no privilege is asserted.
`
`RE UE STS
`
`REQUEST NO. 1: Admit that Opposer’s rights in the INTUIT mark
`
`predate any rights Applicant claims in the INTUITOUCH mark.
`
`REQUEST NO. 2: Admit that at the time of the filing date of Applicant’s
`
`Application Serial No. 76/035,136, Applicant was aware of the INTUIT mark.
`
`REQUEST NO. 3: Admit that Applicant markets or plans to market the
`
`INTUITOUCH Product to companies in the financial industry.
`
`REQUEST NO. 4: Admit that Applicant provides or plans to provide
`
`goods under INTUITOUCH to companies in the financial industry.
`
`REQUEST NO. 5: Admit that Applicant markets the INTUITOUCH
`
`Product as enabling financial transactions, including but not limited to the
`
`purchasing of other parties’ goods and services, and the payment of bills.
`
`Mark: INTUITOUCH
`Serial No.: 76/035,136
`
`4
`
`Opposer’s First Set of Requests for Admission
`
`

`
`REQUEST N0. 6: Admit that the INTUITOUCH Product can be used to
`
`enable electronic banking.
`
`REQUEST NO. 7: Admit that the INTUITOUCH Product can be used to
`
`enable payment by checks.
`
`REQUEST NO. 8: Admit that the INTUITOUCH Product can be used by
`
`End-Users to access information and news regarding financial services or the
`
`financial markets, including but not limited to stock quotes, public company news,
`
`calculation tools for investors, and other financial information.
`
`Dated: July P) , 2002
`
`Respectfully submitted,
`
`
`
`Linda G. Henry, Esq.
`Attorneys for Opposer
`FENWICK & WEST LLP
`
`Two Palo Alto Square, Suite 800
`Palo Alto, CA 94306
`
`(415) 494-0600
`
`Mark: INTUITOUCH
`Serial No.: 76/035,136
`
`5
`
`Opposer’s First Set of Requests for Admission
`
`

`
`PROOF OF SERVICE BY MAIL
`
`I declare that:
`
`D
`
`I am employed in the County of Santa Clara, California.
`
`I am over the
`
`age of eighteen years and not a party to the within cause; my business address is
`
`Two Palo Alto Square, Suite 800, Palo Alto, California 94306. On the date set forth
`
`below, I served the within 0PPOSER’S FIRST SET OF REQUESTS FOR
`
`ADMISSION, on the interested parties in this action by placing a true copy thereof
`
`in a sealed envelope with postage thereon fully prepaid, and causing it to be placed
`
`for U.S. Express Mail delivery by the U.S. Postal Service, which envelope was
`
`addressed as follows:
`
`Mark A. Cantor
`
`Anessa Owen Kramer
`
`Brooks 8: Kushman P.C.
`
`1000 Town Center, 22'” Floor
`Southfield, MI 48075
`
`I declare under the penalties of perjury that the above is true and
`
`correct, and that this declaration was executed at Palo Alto, California this 33%
`
`day of July, 2002.
`
`' z;7‘8a,6(wM'
`fl
`Phyllis O’Sullivan
`
`20797/00070/DOCSJI280962. I
`
`Mark: INTUITOUCH
`Serial No.: 76/035,136
`Opposer’s First Set of Requests for Admission
`
`6
`
`

`
`TAB 2
`
`

`
`IN THE
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL
`
`AND APPEAL BOARD
`
`In the matter of
`
`Trademark Application Serial No. 76/035,135
`Published: July 31, 2001
`Mark: INTUIVISION
`
`
`
`Intuit Inc.
`
`Opposer,
`
`vs.
`
`Interlink Electronics, Inc.
`
`Applicant.
`
`\-/\I-—/\-..F%\-./‘I..O'\-/\../\—/'\./\é\_/\../
`
`Opposition No. 124,758
`
`OPPOSER’S FIRST SET OF
`
`REQUESTS FOR ADMISSION
`
`Pursuant to Rule 36 of the Federal Rules of Civil Procedure and Rule
`
`2.120 of the Trademark Rules of Pract

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