at
`
`
`Certificate Under 37 CFR 1.8 a
`I hereby certify that this correspondence is being deposited
`with the United States Postal as first-class mail in an envelope
`addressed to: The Assistant Commissioner for Trademarks,
`Box TTAB — No Fee, 2900 Crystal Drive, Arlington,
`VA 22202-3513 on September 18, 2002.
`
`b\vsa.B.\¥o.uiii\_
`
`Lisa D. Harden
`
` ‘
`111111111111111111111111111111"llllllllllllllllll
`
`09-23-2002
`US. Patent 5 TMO1c/TM Mall Hep: D1 #53
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`ECHELON CORPORATION
`
`Opposer,
`
`v.
`
`FANIMATION DESIGN & MANUFACTURING, INC.,
`
`Applicant.
`
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`OPPOSITION NO. 91 152397 7"’
`
`SERIAL NO. 76/345,510
`
`ANSWER TO NOTICE OF OPPOSITION
`
`Applicant, Fanimation Design & Manufacturing,
`
`Inc.
`
`(“Fanimation”), by counsel,
`
`in
`
`response to a Notice of Opposition filed in the United States Patent and Trademark Office on May
`
`20, 2002, by Opposer Echelon Corporation (“Echelon”), in answer thereto states 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.
`
`
`
`
`Certificate Under 37 CFR 1.8 a
`I hereby certify that this correspondence is being deposited
`with the United States Postal as first-class mail in an envelope
`addressed to: The Assistant Commissioner for Trademarks,
`Box TTAB — No Fee, 2900 Crystal Drive, Arlington,
`VA 22202-3513 on September 18, 2002.
`
`b\vsa.B.\¥o.uiii\_
`
`Lisa D. Harden
`
` ‘
`111111111111111111111111111111"llllllllllllllllll
`
`09-23-2002
`US. Patent 5 TMO1c/TM Mall Hep: D1 #53
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`ECHELON CORPORATION
`
`Opposer,
`
`v.
`
`FANIMATION DESIGN & MANUFACTURING, INC.,
`
`Applicant.
`
`\J\J%§/\./&/\2\J%
`
`.53
`Q)
`""
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`m
`U1
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`‘C7
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`
`OPPOSITION NO. 91 152397 7"’
`
`SERIAL NO. 76/345,510
`
`ANSWER TO NOTICE OF OPPOSITION
`
`Applicant, Fanimation Design & Manufacturing,
`
`Inc.
`
`(“Fanimation”), by counsel,
`
`in
`
`response to a Notice of Opposition filed in the United States Patent and Trademark Office on May
`
`20, 2002, by Opposer Echelon Corporation (“Echelon”), in answer thereto states 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.
`
`
`
`ANSWER:
`
`Fanimation lacks knowledge or infonnation sufficient to form a belief as to this allegation
`
`and must, therefore, deny the same.
`
`2.
`
`Upon information and belief, Applicant is an Indiana Corporation based in Lebanon,
`
`Indiana.
`
`ANSWER:
`
`Admitted.
`
`3.
`
`Applicant seeks to register the mark ECHELON (hereinafter “Applicant’s Mark”)
`
`for “electric fans for non-industrial use” (hereinafier “Applicant’s Goods”).
`
`ANSWER:
`
`Admitted.
`
`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 ECHELON as a
`
`trademark, service mark and corporate name to promote its products and services.
`
`ANSVVER:
`
`Fanimation lacks knowledge or information sufficient to form a belief as to this allegation
`
`and must, therefore, deny the same.
`
`
`
`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 U.S.
`
`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).
`
`ANSWER:
`
`(a)
`
`Fanimation is not advised, saved by the Notice of Opposition, as to any U.S.
`
`trademark registrations applied for and received by Opposer and must, therefore, deny the same.
`
`(b)
`
`Fanimation is not advised, saved by the Notice of Opposition, as to any U.S.
`
`trademark registrations applied for and received by Opposer and must, therefore, deny the same.
`
`(c)
`
`Fanimation is not advised, saved by the Notice of Opposition, as to any U.S.
`
`trademark registrations applied for and received by Opposer and must, therefore, deny the same.
`
`
`
`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.
`
`ANSWER:
`
`Fanimation admits that it filed the subject application on November 28, 2001, based on an
`
`intent to use, and, that as of the date of this Notice of Opposition, had not filed an Amendment to
`
`Allege Use, but otherwise denies the remaining allegations of paragraph 6.
`
`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.
`
`ANSWER:
`
`Fanimation lacks knowledge or information sufficient to form a belief as to this allegation
`
`and must, therefore, deny the same.
`
`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.
`
`
`
`ANSWER:
`
`Fanimation lacks knowledge or information sufficient to form a belief as to this allegation
`
`and must, therefore, deny the same.
`
`9.
`
`By virtue of its efforts, and the expenditure of considerable sums for advertising and
`
`other forms or 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.
`
`ANSWER:
`
`Fanimation lacks knowledge or information sufficient to form a belief as to this allegation
`
`and must, therefore, deny the same.
`
`10. When applied to the Applicant’s Goods, Applicant’s Mark is identical to Opposer’s
`
`marks, and as such is likely to be confiised therewith and mistaken therefor.
`
`ANSWER:
`
`Fanimation admits that its applied-for mark is identical to Opposer’s marks, but otherwise
`
`denies the remaining allegations of paragraph 10.
`
`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 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.
`
`ANSWER:
`
`Denied.
`
`
`
`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.
`
`ANSWER:
`
`Denied.
`
`13.
`
`Furthermore, any defect, objection or fault found with Applicant’s Goods marketed
`
`under its mark would necessarily reflect upon and serious injure the reputation which Opposer has
`
`established for high-quality technology products and services.
`
`ANSWER:
`
`Denied.
`
`14.
`
`An additional basis for confusion exists in that Opposer’s technology is employed
`
`by numerous customers in many fields relating to automation and control from remote locations in
`
`homes and commercial buildings, thus increasing the relatedness of the goods and services of the
`
`parties, and Opposer closely scrutinizes and polices its marks in connection with such end products
`
`so as to prevent a wrongful belief as to the affiliation or sponsorship, and in this instance,
`
`Applicant’s services under the mark would likely be seen as being sponsored by or affiliated with
`
`Opposer or its goods and services.
`
`ANSVVER:
`
`Denied.
`
`
`
`WHEREFORE, Fanimation prays that the Notice of Opposition be dismissed and that
`
`Fanimation be granted registration of its trademark and for such other relief as deemed appropriate.
`
`Date: September 18, 2002
`
`Respectfully submitted,
`
`
`
` Daniel
`. Boots
`
`Tara J. Stapleton
`
`Attorneys for Applicant,
`Fanimation Design & Manufacturing, Inc.
`
`BINGHAM MCHALE, LLP
`10 West Market Street
`
`2700 Market Street
`
`Indianapolis, Indiana 46204
`(317) 635-8900
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing was served on this 18”‘ day
`
`of September, 2002, via U.S. Mail, first—class postage pre-paid, to the addressed to the following
`
`counsel of record:
`
`Dax Alvarez
`
`BLAKELY SOKOLOFF TAYLOR & ZAFMAN LLP
`12400 Wilshire Boulevard
`
`Seventh Floor
`
`Los Angeles, California 90025
`
`
`
`643780
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