/C
`
`
`
`hibits
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Our Ref. No. 069740.M003
`
`Trademark
`Serial No.2
`Filing Date:
`Published:
`
`PEERLESS
`76/ 185894
`December 22, 2000
`June 11, 2002
`
`llllllllllllllllllllllllllllllllllllllllllllllllll
`
`o7_o8_2oo2
`U.s'P‘WUMWTM M_”mW,5,,
`
`Opposition No. __________
`
`_
`
`2.»
`
`L.
`E
`- ii}
`U1
`5'“ .‘if
`E‘:
`1? 3
`r§
`,:;§
`g; D»
`
`) ) )
`
`))
`
`)
`)
`)
`)
`)
`)
`
`Peerless Systems Corporation,
`
`Opposer,
`
`v.
`
`Iomega Corporation,
`
`Applicant.
`
`G7/‘ii/E803 TSZIITH
`
`{)1 H3237?
`
`00086007 ?6‘l6’5S9I':
`BOOQ 00 8?
`
`NOTICE OF OPPOSITION
`
`Opposer, Peerless Systems Corporation (hereinafter ”Opposer"), which has its
`
`principal place of business at 2381 Rosecrans Avenue, El Segundo, California 90245,
`
`believes that it would be damaged by registration of the mark PEERLESS shown in
`
`United States Trademark Application Serial No. 76/ 185894, filed by Iomega
`
`Corporation (hereinafter ”Applicant”) and published for opposition in the Official
`
`Gazette dated June 11, 2002, and therefore Opposer opposes such application for
`
`registration. The application as published in the Official Gazette may be
`
`summarized as follows:
`
`In re Trademark Application Serial No.: 76/ 185894
`
`Filed:
`
`December 22, 2000
`
`Applicant:
`
`Iomega Corporation
`
`69740.MOO3
`
`1
`
`
`
`
`
`hibits
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Our Ref. No. 069740.M003
`
`Trademark
`Serial No.2
`Filing Date:
`Published:
`
`PEERLESS
`76/ 185894
`December 22, 2000
`June 11, 2002
`
`llllllllllllllllllllllllllllllllllllllllllllllllll
`
`o7_o8_2oo2
`U.s'P‘WUMWTM M_”mW,5,,
`
`Opposition No. __________
`
`_
`
`2.»
`
`L.
`E
`- ii}
`U1
`5'“ .‘if
`E‘:
`1? 3
`r§
`,:;§
`g; D»
`
`) ) )
`
`))
`
`)
`)
`)
`)
`)
`)
`
`Peerless Systems Corporation,
`
`Opposer,
`
`v.
`
`Iomega Corporation,
`
`Applicant.
`
`G7/‘ii/E803 TSZIITH
`
`{)1 H3237?
`
`00086007 ?6‘l6’5S9I':
`BOOQ 00 8?
`
`NOTICE OF OPPOSITION
`
`Opposer, Peerless Systems Corporation (hereinafter ”Opposer"), which has its
`
`principal place of business at 2381 Rosecrans Avenue, El Segundo, California 90245,
`
`believes that it would be damaged by registration of the mark PEERLESS shown in
`
`United States Trademark Application Serial No. 76/ 185894, filed by Iomega
`
`Corporation (hereinafter ”Applicant”) and published for opposition in the Official
`
`Gazette dated June 11, 2002, and therefore Opposer opposes such application for
`
`registration. The application as published in the Official Gazette may be
`
`summarized as follows:
`
`In re Trademark Application Serial No.: 76/ 185894
`
`Filed:
`
`December 22, 2000
`
`Applicant:
`
`Iomega Corporation
`
`69740.MOO3
`
`1
`
`
`
`
`
`II
`
`For:
`
`Computer peripheral hardware devices containing memory
`
`storage; computer memory storage devices, namely, hard disk
`
`drives, removable hard disk drives, magnetic disk drives; blank
`
`hard disks and removable hard disks, blank magnetic disks or
`
`cartridges; computer memory storage controllers; computer
`
`peripherals for use in data storage, playback, recording and
`
`editing digital audio or video, computer disaster recovery, file
`
`backup and retrieval; user manuals sold as a unit with any of the
`
`foregoing goods.
`
`International Class 9
`
`Published:
`
`June 11, 2002
`
`The grounds for this opposition are as follows:
`
`1.
`
`Opposer is a California corporation in the business of providing
`
`embedded imaging and networking systems to manufacturers of color,
`
`monochrome and multi-function office products and digital appliances. Opposer’s
`
`broad line of scalable software, silicon offerings and delivery products are used by
`
`customers such as Canon, IBM, Kyocera, Minolta, Ricoh, Seiko, Epson and Xerox.
`
`2.
`
`Upon information and belief, Applicant is a Delaware corporation
`
`having a principal place of business at 1821 West Iomega Way, Roy, Utah 84067.
`
`3.
`
`Applicant seeks to register the mark PEERLESS (hereinafter
`
`”Applicant’s Mark”) for ”computer peripheral hardware devices containing
`
`memory storage; computer memory storage devices, namely, hard disk drives,
`
`69740.M0O3
`
`2
`
`
`
`u\
`
`removable hard disk drives, magnetic disk drives; blank hard disks and removable
`
`hard disks, blank magnetic disks or cartridges; computer memory storage
`
`controllers; computer peripherals for use in data storage, playback, recording and
`
`editing digital audio or video, computer disaster recovery, file backup and retrieval;
`
`user manuals sold as a unit with any of the foregoing goods” (hereinafter
`
`”Applicant’s Goods”).
`
`4.
`
`Commencing as early as 1982, well prior to the December 22, 2000 filing
`
`date of Applicant's application and May 24, 2001, Applicant's claimed date of first use
`
`in commerce of Applicant's Mark, Opposer used and has continued to use
`
`PEERLESS as a trademark, service mark and corporate name to promote its products
`
`and services.
`
`5.
`
`Opposer owns the following U.S. trademark registrations (hereinafter
`
`collectively referred to as ”Opposer’s Marks”):
`
`a.
`
`PEERLESS SYSTEMS for data processing services to financial
`
`institutions in International Class 35 registered as U.S. Trademark Registration No.
`
`1,720,657 (attached hereto as Exhibit "1" and incorporated herein by reference);
`
`b.
`
`PEERLESS SYSTEMS (and Design) for data processing to financial
`
`institutions in International Class 35 registered as U.S. Trademark Registration No.
`
`1,720,656 (attached hereto as Exhibit ”2” and incorporated herein by reference);
`
`c.
`
`PEERLESS SYSTEMS for computer software used by financial
`
`institutions for processing account and loan information in International Class 9
`
`69740.MO03
`
`3
`
`
`
`"J
`
`I)
`
`registered as U.S. Trademark Registration No. 1,862,378 (attached hereto as Exhibit
`
`”3” and incorporated herein by reference);
`
`d.
`
`PEERLESSPRINT for printer controllers and computer software for
`
`printer drivers in International Class 9 registered as U.S. Trademark Registration
`
`No. 2,226,395 (attached hereto as Exhibit ”4” and incorporated herein by reference);
`
`e.
`
`PEERLESSCU for computer software for use in data processing for
`
`financial institutions in International Class 9 registered as U.S. Trademark
`
`Registration No. 2,092,618 (attached hereto as Exhibit "5" and incorporated herein by
`
`reference);
`
`f.
`
`PEERLESS GROUP (and Design) for data processing services for
`
`financial institutions in International Class 35 registered as U.S. Trademark
`
`Registration No. 2,320,193 (attached hereto as Exhibit "6" and incorporated herein by
`
`reference);
`
`g.
`
`PEERLESS GROUP for data processing services for financial
`
`institutions in International Class 35 registered as U.S. Trademark Registration No.
`
`2,374,201 (attached hereto as Exhibit "7" and incorporated herein by reference); and
`
`h.
`
`PEERLESSPOWERED for software for use with laser printers in
`
`International Class 9 registered as U.S. Trademark Registration No. 2,272,238
`
`(attached hereto as Exhibit "8" and incorporated herein by reference).
`
`6.
`
`Upon information and belief, Applicant filed the application for
`
`registration of Applicant's Mark on December 22, 2000 based on an intent to use and
`
`filed an amendment to allege use on September 21, 2001 identifying a first use in
`
`69740.M003
`
`4
`
`
`
`-‘J
`
`53
`
`Commerce date of May 24, 2001, and therefore priority of use is resolved in Opposer’s
`
`favor.
`
`7.
`
`Opposer has offered its technology products and its technical consulting
`
`services described above throughout the United States under its aforesaid marks.
`
`Opposer is a leading provider of imaging and networking systems and markets said
`
`products directly to a wide variety of domestic and international corporations as
`
`well as hold strategic partnerships with Adobe, IBM Microeletronics, Novell and
`
`other technology leaders. As a result of its strong presence in the marketplace,
`
`Opposer has developed valuable good will with respect to the marks covered by the
`
`above identified registrations.
`
`8.
`
`Opposer has further developed extensive common law rights in all of
`
`the marks referenced above in addition to rights extended by federal registrations
`
`thereof.
`
`9.
`
`By virtue of its efforts and the expenditure of considerable sums for
`
`advertising and other forms of promotion, and by virtue of the consistent excellence
`
`of the services and products, Opposer has earned an extremely valuable reputation
`
`of the above identified marks.
`
`10. When applied to the Applicant's Goods, Applicant's Mark is identical
`
`to Opposer’s Marks and as such is likely to be confused therewith and mistaken
`
`therefor.
`
`11.
`
`Due to the identical appearance of Applicant's Mark and Opposer’s
`
`Marks and due further to the closely related nature of the goods offered under
`
`69740.MO03
`
`5
`
`
`
`Applicant's Mark and presently offered under Opposer’s Marks and the consumer
`
`recognition of Opposer’s PEERLESS marks, it is alleged that Applicant's Mark so
`
`resembles Opposer’s family of PEERLESS marks as to be likely to cause confusion or
`
`to cause mistake or to deceive.
`
`12.
`
`If Applicant is permitted to use and register Applicant's Mark for
`
`Applicant's Goods, confusion, deception or mistake in the trade would likely occur,
`
`thereby causing damage and injury to Opposer. Persons familiar with Opposer’s
`
`marks would be likely to believe that Applicant's Goods are sponsored by or
`
`associated therewith.
`
`13.
`
`Furthermore, any defect, objection or fault found with Applicant's
`
`Goods marketed under its mark would necessarily reflect upon and seriously injure
`
`the reputation which Opposer has established for high-quality technology products
`
`and services.
`
`14.
`
`An additional basis for confusion exists in that Opposer’s products and
`
`technology are employed by numerous customers in many fields relating to
`
`computers and networking thus increasing the relatedness of the goods and services
`
`of the parties, and Opposer closely scrutinizes and polices its marks in connection
`
`with such products so as to prevent a wrongful belief as to affiliation of sponsorship,
`
`and in this instance Applicant's Goods under the Applicant's Mark would likely be
`
`J seen as being sponsored by or affiliated with Opposer or its goods and services.
`
`WHEREFORE, Opposer prays that U.S. Trademark Application Serial No.
`
`76/ 185894 be rejected and that the mark sought for the goods therein specified in
`
`International Class 9 be denied and refused.
`
`69740.M0O3
`
`6
`
`
`
`g
`
`'i
`
`Opposer hereby submits this Notice of Opposition in triplicate along with the
`
`filing fee in the amount of $300.00. Please charge any additional fees or credit any
`
`overpayment to our Deposit Account No. 02-2666.
`
`Respectfully submitted,
`
`PEERLESS SYSTEMS CORPORATION
`
`Dated: July 3, 2002
`
`By:
`
`. oatright
`Lori
`Dax Alvarez
`
`Attorneys for Opposer
`
`BLAKELY SOKOLOFF TAYLOR & ZAFMAN LLP
`12400 Wllshlre Boulevard
`S€V€I1th
`F1001‘
`Log Angelesl California 90025
`(310) 2076800
`
`CERTIFICATE OF MAILING
`I hereby certify that this corres ondence is being deposited
`with the United States Postal ervice as first class mail in
`an envelope addressed to: Box TTAB / FEE, Assistant
`Com issioner for Trademarks, 2900 Cr stal Drive,
`Arlin 911 Virginia 22 02-3513 on uly3 2002.
`
`
`
`69740.MOO3
`
`7
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true and correct copy of the foregoing
`
`document entitled:
`
`NOTICE OF OPPOSITION
`
`was served on Applicant in a sealed envelope addressed as follows:
`
`Iomega Corporation
`1821 West Iomega Way
`Roy, Utah 84067
`
`by U.S. first class mail, postage prepaid on the 3rd day of July, 2002, at Los Angeles,
`
`California.
`
` ictoria Haynes
`
`69740.MOO3
`
`8
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
