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`Attorney's Reference No.: O20820.G192
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`:’V_ _
`
`Echelon Corporation,
`
`Opposer,
`
`V.
`
`Fanimation Design & Mfg., Inc.
`I
`Applicant.
`
`%\./\./\./\/\y\/\./\y\J\/
`
`Opposition No.2
`
`Serial No.:
`
`76/345,510
`
`_ __i,_.r_ ________r__
`
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`NOTICE or OPPOSITION
`
`BOX TTAB / FEE
`Assistant Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`Opposer, Echelon Corporation (hereinafter "Opposer" or "Echelon"), which has
`
`its principal place of business at 550 Meridian Avenue, San Jose, California 95126,
`
`believes that it would be damaged by registration of the mark ECHELON shown in
`
`United States Trademark Application Serial No. 76 / 345,510, filed by Fanimation
`
`Design & Mfg., Inc. (hereinafter "Applicant") and published for opposition in the
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`Official Gazette dated May 7, 2002, and therefore Opposer opposes such application for
`
`registration. The application as published in the Oflicial Gazette may be summarized
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`as follows:
`
`05/29/2002 KBEQCH
`01 FC:377
`
`00000183 75345510
`3oo.oo up
`
`
`
`’<
`
`Attorney's Reference No.: O20820.G192
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`:’V_ _
`
`Echelon Corporation,
`
`Opposer,
`
`V.
`
`Fanimation Design & Mfg., Inc.
`I
`Applicant.
`
`%\./\./\./\/\y\/\./\y\J\/
`
`Opposition No.2
`
`Serial No.:
`
`76/345,510
`
`_ __i,_.r_ ________r__
`
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`
`NOTICE or OPPOSITION
`
`BOX TTAB / FEE
`Assistant Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`Opposer, Echelon Corporation (hereinafter "Opposer" or "Echelon"), which has
`
`its principal place of business at 550 Meridian Avenue, San Jose, California 95126,
`
`believes that it would be damaged by registration of the mark ECHELON shown in
`
`United States Trademark Application Serial No. 76 / 345,510, filed by Fanimation
`
`Design & Mfg., Inc. (hereinafter "Applicant") and published for opposition in the
`
`Official Gazette dated May 7, 2002, and therefore Opposer opposes such application for
`
`registration. The application as published in the Oflicial Gazette may be summarized
`
`as follows:
`
`05/29/2002 KBEQCH
`01 FC:377
`
`00000183 75345510
`3oo.oo up
`
`
`
`
`-1
`,
`1
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`
`.
`
`In re trademark application:
`
`76/ 345,510
`
`Filed:
`
`Applicant:
`
`For:
`
`November 28, 2001
`
`Fanimation Design & Mfg., Inc.
`
`electric fans for non-industrial use
`
`International Class:
`
`11
`
`Published:
`
`May 7, 2002
`
`The grounds for this opposition are as follows:
`
`1.
`
`Opposer is a Delaware corporation in the business of developing and
`
`distributing communications and computer goods and services, including electronic
`
`and computer network systems which provide identification, sensing,
`
`communications, and control of traditional products in homes, buildings and factories.
`
`The network control technologies and products of Opposer are utilized by the
`
`construction and real estate development industries and home owners to establish
`
`operational systems in all types of buildings and residences.
`
`2.
`
`Upon information and belief, Applicant is an Indiana Corporation based
`
`in Lebanon, Indiana.
`
`3.
`
`Applicant seeks to register the mark ECHELON (hereinafter "Applicant's
`
`Mark") for "electric fans for non-industrial use" (hereinafter ”Applicant's Goods").
`
`4.
`
`Commencing as early as December 1988, well prior to the November 28,
`
`2001 filing date in the Applicant's application, Opposer used and has continued to use
`
`20820.G192
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`2
`
`
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`.
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`‘
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`.
`
`c
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`ECHELON as a trademark, service mark and corporate name to promote its products
`
`and services.
`
`5.
`
`Opposer applied for and received the following U.S. Trademark
`
`Registrations:
`
`(a)
`
`ECHELON for computer programs for use in developing computer
`
`programs and instructions manuals therefor, in class 9, registered as US.
`
`Registration No. 1,535,141 (attached hereto as Exhibit "1" and incorporated
`
`herein by reference); and
`
`(b)
`
`ECHELON for electronic circuits, electronic circuit boards, and electrical
`
`circuit components for a network which provides identification, sensing,
`
`communications and control, and computer programs for use in developing
`
`computer programs in class 9, registered as U.S. registration No. 1,536,275
`
`(attached hereto as. Exhibit ”2” and incorporated herein by reference).
`
`(c)
`
`ECHELON for electronic circuits, integrated circuits, electronic circuit
`
`boards, and electronic circuit components for a network which provides
`
`identification, sensing, communications or control; computer programs for use
`
`in developing computer programs in Class 9, registered as U.S. Registration
`
`No. 1,783,245 (attached hereto as Exhibit ”3” and incorporated herein by
`
`reference).
`
`20820.G192
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`3
`
`
`
` .
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`K
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`A
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`I
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`6.
`
`Upon information and belief, Applicant filed the application for
`
`registration of Applicant's Mark on November 28, 2001, based on an intent to use, and,
`
`as of the date of this Notice of Opposition, has not filed an Amendment to Allege Use,
`
`and 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 developer and distributor of building and home automation and
`
`intelligence products, and markets said products directly to the construction and real
`
`estate development industries as well as homeowners. As a result of its strong
`
`presence in the marketplace, Opposer has developed valuable goodwill in respect to
`
`the marks covered by the above—identified registrations.
`
`8.
`
`Opposer has further developed common—law rights in all of the marks
`
`referenced in Paragraph 5 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
`
`its services and products, Opposer has earned an extremely valuable reputation for 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.
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`20820.G192
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`4
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`11.
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`Due to the identical appearance of Applicant's Mark and Opposer’s
`
`marks, and due further to the closely related nature of the goods intended to be offered
`
`under Applicant's Mark and presently offered under Opposer’s marks, and the
`
`consumer recognition of Opposer’s "ECHELON“ marks, it is alleged that Applicant's
`
`mark so resembles Opposer’s family of ”ECHELON” 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
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`would be likely to believe that Applicant's Goods are sponsored by or associated
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`therewith.
`
`13.
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`Furthermore, any defect, objection or fault found with Applicant's Goods
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`marketed under its mark would necessarily reflect upon and seriously injure the
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`reputation which Opposer has established for high-quality technology products and
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`services.
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`14.
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`An additional basis for confusion exists in that Opposer's technology is
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`employed by numerous customers in many fields relating to automation and control
`
`from remote locations in homes and commercial buildings, thus increasing the
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`relatedness of the goods and services of the parties, and Opposer closely scrutinizes and
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`polices its marks in connection with such end products so as to prevent a wrongful
`
`belief as to affiliation or sponsorship, and in this instance, Applicant's services under
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`20820.G192
`
`5
`
`
`
` I
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`.
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`‘
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`.
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`the mark would likely be seen as being sponsored by or affiliated with Opposer or its
`
`goods and services.
`
`WHEREFORE, the Opposer prays that U.S. Trademark Application Serial No.
`
`76/345,510 be rejected, and that the mark sought for the goods therein specified in
`
`Class 11 be denied and refused.
`
`Opposer herewith submits this Notice of Opposition in triplicate along with the
`
`requisite filing fee in the amount of $300. Please charge any additional fees or credit
`
`any overpayment to our Deposit Account No. 02-2666.
`
`Respectfully submitted,
`
`BLAKELY SOKOLOFF TAYLOR & ZAFMAN LLP
`
`Dated: May 16, 2002
`
`By:
`
`Dax Alvarez
`
`1
`
`.
`.
`2400 Wllshlre Boulevard
`Seventh Floor
`Los Angeles, California 90025
`(310) 207_3800
`
`CERTIFICATE OF MAILING:
`I hereby certify that this correspondence is being deposited with the
`.
`_
`.
`_
`_
`United States Postal Service as first class mail in an envelope addressed
`to: BOX TTAB / FEE, Assistant Commissioner for Trademarks, 2900
`Cry tal Drive, Arlin ton, Virginia 22202-3513 on May 16, 2002.
`
`
`
`
`
` Signature
`
`20820.G192
`
`6
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` F
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`D
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`l
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`/.
`6
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true and correct copy of the foregoing
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`document entitled:
`
`NOTICE OF OPPOSITION
`
`was served on counsel for the Applicant in a sealed envelope addressed as follows:
`
`Daniel L. Boots
`
`BINGHAM & MCHALE LLP
`
`2700 Market Tower
`
`10 West Market Street
`
`Indianapolis, Indiana 46204
`
`by U.S. first class mail, postage prepaid on the 16th day of May, 2002, at Los Angeles,
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`California.
`
`
` V ctoria Haynes
`
`20820.G192
`
`7
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