Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA68178
`ESTTA Tracking number:
`02/26/2006
`
`Filing date:
`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
`Granted to Date
`of previous
`extension
`Address
`
`ZIH CORP
`02/26/2006
`
`55 E. Monroe Street, Suite 4300
`Chicago, IL 60603
`UNITED STATES
`
`Attorney
`information
`
`HAROLD V. STOTLAND
`SEYFARTH SHAW LLP
`55 E. MONROE STREET, SUITE 4300
`CHICAGO, IL 60603-5803
`UNITED STATES
`hstotland@seyfarth.com Phone:312-346-8000
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`International
`Registration No.
`Applicant
`
`78282660
`02/26/2006
`
`NONE
`
`Publication date
`Opposition
`Period Ends
`International
`Registration Date
`
`12/27/2005
`02/26/2006
`
`NONE
`
`ZEBRA CO., LTD.
`2-9,Higashi-gokencho, Shinjuku-ku
`Tokyo, 162
`JAPAN
`Goods/Services Affected by Opposition
`
`Class 009.
`All goods and sevices in the class are opposed, namely: Electronic pens with visual display units,
`namely handwriting input devices; Computer programs and computer peripherals, namely device
`driver for handwriting input devices, and handwriting recognition software; computer hardware,
`namely a wireless electronic pen and receiver for capturing and transmitting digital information to a
`personal computer or laptop computer
`
`Attachments
`
`zebrawing.pdf ( 6 pages )
`
`Signature
`Name
`Date
`
`/Bruce Haraguchi/
`Bruce Haraguchi
`02/26/2006
`
`
`ESTTA68178
`ESTTA Tracking number:
`02/26/2006
`
`Filing date:
`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
`Granted to Date
`of previous
`extension
`Address
`
`ZIH CORP
`02/26/2006
`
`55 E. Monroe Street, Suite 4300
`Chicago, IL 60603
`UNITED STATES
`
`Attorney
`information
`
`HAROLD V. STOTLAND
`SEYFARTH SHAW LLP
`55 E. MONROE STREET, SUITE 4300
`CHICAGO, IL 60603-5803
`UNITED STATES
`hstotland@seyfarth.com Phone:312-346-8000
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`International
`Registration No.
`Applicant
`
`78282660
`02/26/2006
`
`NONE
`
`Publication date
`Opposition
`Period Ends
`International
`Registration Date
`
`12/27/2005
`02/26/2006
`
`NONE
`
`ZEBRA CO., LTD.
`2-9,Higashi-gokencho, Shinjuku-ku
`Tokyo, 162
`JAPAN
`Goods/Services Affected by Opposition
`
`Class 009.
`All goods and sevices in the class are opposed, namely: Electronic pens with visual display units,
`namely handwriting input devices; Computer programs and computer peripherals, namely device
`driver for handwriting input devices, and handwriting recognition software; computer hardware,
`namely a wireless electronic pen and receiver for capturing and transmitting digital information to a
`personal computer or laptop computer
`
`Attachments
`
`zebrawing.pdf ( 6 pages )
`
`Signature
`Name
`Date
`
`/Bruce Haraguchi/
`Bruce Haraguchi
`02/26/2006
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re Trademark Application Serial Number: 78/282660
`
`Opposition No.
`
`) )
`
`) )
`
`)
`
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`
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`
`)
`
`ZIH CORP.
`
`V.
`
`ZEBRA CO., LTD.
`
`Opposer,
`
`Applicant.
`
`Commissioner for Trademarks
`
`P.O. Box 1451
`
`Alexandria, Virginia 22313-1451
`
`NOTICE OF OPPOSITION
`
`Reference is made to Application Serial No. 78/282660 for ZEBRA in International Class
`
`9, published in the Official Gazette on December 27, 2005. Opposer, ZIH Corp. (“ZIH”),
`
`obtained an extension of time until February 26, 2006 to file a notice of opposition. ZIH
`
`believes it would be damaged by the registration of the mark in Serial No. 78/282660, and
`
`hereby opposes the same.
`
`GROUNDS FOR OPPOSITION
`
`1.
`
`Opposer, ZIH, is a corporation organized and existing under the laws of
`
`Delaware, with its principal place of business at Pearman Building, 3 Gorham Road, Third Floor,
`
`Hamilton, HM08 Bermuda.
`
`2.
`
`For many years ZIH and its predecessors, related companies and licensees have
`
`used the trademarks ZEBRA and a Zebra Head Design in connection with bar code printers,
`
`computer printers, handheld mobile printers, and related equipment and supplies, including
`
`CH1 11025797.1
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`
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`software and devices with wireless networking capability.
`
`3.
`
`ZIH owns U.S. trademark registration no. 1274816 for ZEBRA in connection
`
`with “machines for printing labels, tags and tickets with optically scannable bar codes,
`
`alphanumeric characters and graphics,” with a filing date of November 10, 1982 and a first use
`
`date of September 9, 1982. This registration issued on April 24, 1984 and has attained
`
`incontestable status.
`
`4.
`
`ZIH owns U.S. trademark registration no. 1360141 for Zebra Head Design in
`
`connection with “label printer device for printing labels, tags, tickets and the like with optically
`
`scannable bar codes, alphanumeric characters and graphics,” with a filing date of March 7, 1985
`
`and a first use date of September 9, 1982. This registration issued on September 17, 1985 and
`
`has attained incontestable status.
`
`5.
`
`ZIH owns U.S. trademark registration no. 1566752 for ZEBRA in connection
`
`with “label printing machines,” “blank or partially printed labels, tags and tickets to be imprinted
`
`by machine; ribbons for label printing machines” and “label printer repair services,” with a filing
`
`date of January 4, 1988. This registration issued on November 21, 1989 and has attained
`
`incontestable status.
`
`6.
`
`ZIH owns U.S. trademark registration no. 1561793 for Zebra Head Design in
`
`connection with “label printing machines,” “blank or partially printed labels, tags and tickets to
`
`be imprinted by machine; ribbons for label printing machines” and “label printer repair services,”
`
`with a filing date of January 4, 1988. This registration issued on October 24, 1989 and has
`
`attained incontestable status.
`
`7.
`
`ZIH owns U.S. trademark registration no. 2173307 for ZEBRA in connection
`
`with “software for enabling a general—purpose computer to print and/or read bar code,” with a
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`CH1 ll025797.l
`
`
`
`filing date of July 10, 1995 and a first use date of October 1995. This registration issued on July
`
`14, 1998 and a Section 15 declaration of incontestability has been filed with the Patent and
`
`Trademark Office.
`
`8.
`
`ZIH owns U.S. trademark registration no. 2059897 for Zebra Head Design in
`
`connection with “software for enabling a general—purpose computer to print and/or read bar
`
`code,” with a filing date of July 10, 1995 and a first use date of October 24, 1995. This
`
`registration issued on May 6, 1997 and has attained incontestable status.
`
`9.
`
`ZIH owns U.S. trademark registration no. 2120347 for ZEBRANET in connection
`
`with “connector to connect printers and computers,” with a filing date of November 16, 1995 and
`
`a first use date of February 1996. This registration issued on December 9, 1997 and has attained
`
`incontestable status.
`
`10.
`
`Prior to the filing of U.S. Application Serial No. 78/282660 which is the subject
`
`of this opposition, ZIH began using its ZEBRA and Zebra Head Design marks in connection
`
`with products in the field of radio frequency identification.
`
`11.
`
`ZIH’s incontestable registrations of ZEBRA and Zebra Head Design provide
`
`conclusive evidence of the validity of the marks, ZIH’s ownership of the marks, and ZIH’s
`
`exclusive right to use the marks in commerce in connection with the specified goods and
`
`services. ZIH also owns substantial use—based rights in those marks.
`
`12.
`
`By virtue of its longstanding use in commerce and extensive advertising, ZIH’s
`
`ZEBRA and Zebra Head Design marks have become well—known in the relevant industry, and
`
`ZIH owns considerable goodwill in these marks in connection with bar code printers, computer
`
`printers, handheld mobile printers, and related equipment and supplies, including software and
`
`devices with wireless networking capability.
`
`CH1 ll025797.l
`
`
`
`13.
`
`On information and belief, Applicant, Zebra Co., Ltd. (“Applicant”), is a Japanese
`
`corporation with its principal place of business at 2-9, Higashi—gokencho, Shinjuku—ku Tokyo
`
`JAPAN 162.
`
`14.
`
`Applicant owns Serial No. 78/282660 (“Serial No. 78/282660”), which seeks to
`
`register ZEBRA WING (“Applicant’s mark”) for “Electronic pens with visual display units,
`
`namely handwriting input devices; Computer programs and computer peripherals, namely device
`
`driver for handwriting input devices, and handwriting recognition software; computer hardware,
`
`namely a wireless electronic pen and receiver for capturing and transmitting digital information
`
`to a personal computer or laptop computer” in International Class 9 (“Amended Goods”), as
`
`evidenced by the publication of the mark on December 27, 2005.
`
`15.
`
`On information and belief, Applicant filed Serial No. 78/282660 on August 4,
`
`2003 based on an intent to use the mark in commerce in connection with a wide range of
`79 46
`
`products (“Original Goods”), including, but not lin1ited to, “bar code readers,
`79 £6
`79 46
`
`computers,”
`
`“computer peripheral devices,
`
`printers for use with computers,
`
`teleprinters” and “computer
`
`software.”
`
`16.
`
`During the course of examination, Applicant deleted a number of products from
`
`Serial No. 78/282660, and amended the identification of goods to list only the Amended Goods.
`
`17.
`
`On information and belief, Applicant’s Original Goods included some products
`
`for which Applicant did not have a bonafide intent to use the claimed mark, within the meaning
`
`of Sections l(b) and 44(e) of the Trademark Act.
`
`18.
`
`On information and belief, Applicant has registered ZEBRA WING as a
`
`trademark in Japan. Japanese trademark registration no. 2002—l03692 for ZEBRA WING issued
`
`on December 6, 2002, and Applicant is relying on that registration as its filing and registration
`
`CH1 ll025797.l
`
`
`
`basis for Serial No. 78/282660.
`
`19.
`
`On information and belief, Applicant’s Japanese trademark registration no. 2002-
`
`103692 for ZEBRA WING covers all of the Original Goods, including, but not limited to, “bar
`79 £6
`79 £6
`79 46
`
`code readers,
`
`computers,
`
`computer peripheral devices,
`
`printers for use with computers,”
`
`“teleprinters” and “computer software.”
`
`20.
`
`On information and belief, Applicant has not yet begun using ZEBRA WING in
`
`commerce in connection with the Amended Goods.
`
`21.
`
`On information and belief, Applicant has not yet begun using ZEBRA WING
`
`anywhere in connection with the Amended Goods.
`
`22.
`
`On information and belief, Applicant has not yet begun using ZEBRA WING in
`
`commerce in connection with the Original Goods.
`
`23.
`
`On information and belief, Applicant has not yet begun using ZEBRA WING
`
`anywhere in connection with the Original Goods.
`
`24.
`
`ZIH’s incontestable registrations of the ZEBRA and Zebra Head Design
`
`trademarks predate the filing date of Serial No. 78/282660.
`
`25.
`
`Since many years prior to Applicant’s application, ZIH’s ZEBRA and Zebra Head
`
`Design trademarks have been in continuous use in commerce for some of the same products that
`
`were listed in Applicant’s Original Goods.
`
`26.
`
`The ZEBRA element in Applicant’s mark is identical to ZIH’s registered ZEBRA
`
`mark.
`
`27.
`
`Applicant’s mark is confusingly similar to ZIH’s ZEBRA and Zebra Head Design
`
`trademarks.
`
`28.
`
`On information and belief, the intended customer markets for ZIH’s products and
`
`CH1 11025797.1
`
`
`
`Applicant’s products are likely to overlap.
`
`29.
`
`On information and belief, the Amended Goods are closely related to goods
`
`offered by ZIH in connection with its ZEBRA and Zebra Head Design trademarks, including
`
`products for which ZIH owns incontestable registrations.
`
`30.
`
`If Applicant were permitted to register ZEBRA WING for the goods listed in
`
`Applicant’s application, the trade and customers would likely be confused as to the source,
`
`sponsorship, or affiliation of such goods, thereby causing damage and injury to ZIH. Persons
`
`already familiar with ZIH's products would be likely to be confused as to whether Applicant's
`
`goods are authorized or sponsored by ZIH, and such confusion in the trade and among customers
`
`inevitably would result in damage to ZIH. Furthermore, any defect, objection or fault found with
`
`Applicant's goods would likely reflect upon and injure the good reputation ZIH has established
`
`for its products.
`
`WHEREFORE, ZIH respectfully requests that this opposition be sustained, and
`
`that Applicant’s application to register ZEBRA be denied.
`
`Dated: February 26, 2006
`
`Respectfully submitted,
`
`Harold V. Stotland
`
`Bruce Haraguchi
`SEYFARTH SHAW LLP
`
`Attorneys for Opposer
`55 East Monroe Street, Suite 4300
`
`Chicago, Illinois 60603
`Tel:
`(312) 346-8000
`
`Fax:
`
`(312) 269-8869
`
`CH1 ll025797.l
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