`ATTORNEYS AT LAW
`
`TTAB
`
`February 1, 2008
`
`\X/RlTER’S DIRECT DIAL NUMBER
`
`(650) 812-3416
`jscher@carrferrel1.com
`
`VIA FIRST CLASS MAIL
`
`Trademark Trial and Appeal Board
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Re:
`
`Notice of Opposition —
`Title: Trend Micro Kabushiki Kaisha V. Deutsche Telekom AG
`
`Mark:
`Serial No.:
`
`T (word only)
`76 252 927
`
`Dear Sir:
`
`(1) Notice of Opposition; (2) a
`Enclosed with this letter are the following:
`check in the amount of $900.00; (3) Proof of Service by Mail; and (4) Acknowledgement
`Card.
`
`Please file the Notice of Opposition, and stamp and return the
`Acknowledgement Card.
`
`02/06/2006 SUILSDH1 00000004 76358927
`01 rc:e-102
`900.00 00
`
`_
`1 °ere1y'
`
`]FS:sph
`Enclosures
`
`cc: Ms. Ioan L. Long
`
`]e ferson F. Scher
`
`CERTIFICATE OF MAILING
`
`I hereby certify that this paper and/ or fee is being deposited with the United States Postal Service with sufficient postage as first-
`class mail in an envelope addressed to: Trademark Trial and Appeal Board, P.O. Box 1451, Alexandria, VA 22313—1451 on
`
`February 1, 2008.
`
`Deposited by: Suehay P. Hernandez
`
`{00286808v1}
`
`2200 GENG ROAD, PALO ALTO, CALIFORNIA 94303
`TELEPHONE (650) 812-3400, FACSIMILE (650) 812-3444
`CarrFerrell.com
`
`mmmmmmmmmm
`U2-04-2008
`
`._. 5
`
`Patent
`
`:. ‘mgr;/Tr. ,4,” R,“ m P)
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`IN THE
`
`BEFORE THE TRADEMARK TRIAL
`
`AND APPEAL BOARD
`
`Opposition No.
`
`In the Matter of
`
`Trademark Application Serial No. 76/ 252,927
`Published: August 7, 2007
`Mark: T (word only)
`Opposed Classes: 9, 35, and 42 only
`
`) ) )
`
`) )
`
`)
`)
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`) )
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`) )
`
`Trend Micro Kabushiki Kaisha,
`
`Opposer,
`
`V.
`
`Deutsche Telekom AG,
`
`Applicant.
`
`Trademark Trial and Appeal Board
`P.O. Box 1451
`
`Alexandria, Virginia 22313-1451
`
`NOTICE OF OPPOSITION
`
`Sir:
`
`Opposer Trend Micro Kabushiki Kaisha, a Iapanese corporation having its
`
`principal place of business at Shinjuku MAYNDS Tower, 2-1-1, Yoyogi, Shibuya-ku
`
`Tokyo, 151-0053, Japan, believes it will be damaged by registration of the mark shown
`
`
`
`in Application Serial Number 76/ 252,927:
`
`T
`
`”T" (word only)
`
`Opposer was granted an extension of time up to and including
`
`February 3, 2008, within which to file this Notice of Opposition. Opposer hereby
`
`opposes Applicant's application for T (word only) with respect to the goods and
`
`services in Classes 9, 35 and 42, alleging as grounds for its opposition that:
`
`1.
`
`As is evidenced by the publication of the T (word only) mark in the
`
`Official Gazette on August 7, 2007, Applicant Deutsche Telekom AG seeks to register a
`
`mark consisting of an upper case letter T, with no stylization or color claim. The
`
`Application encompasses a very wide variety of goods and services in Classes 9, 16, 35,
`
`36, 38, 41 and 42, including, among other goods, computers, computer programs, data
`
`bases, networking equipment, licensing of computer software and hardware, and
`
`programming services. Applicant filed its application on May 7, 2001.
`
`2.
`
`Opposer is the parent corporation of wholly owned subsidiary,
`
`Trend Micro Incorporated, a California corporation (”Trend Micro California”). Trend
`
`Micro California is responsible for Trend Micro-branded products and services in the
`
`United States. Opposer and Trend Micro California offer a wide variety of computer
`
`and network security products in connection with a mark consisting of a lower case
`
`letter T with an extended ” tail" curving counter-clockwise on a circle design:
`
`
`
`”T Ball Logo”
`
`The T Ball Logo is and has been used in connection with software and
`
`hardware for a variety of computing and communication platforms, including servers,
`
`desktop computers, laptop computers, personal digital assistants and mobile phones, as
`
`well as other goods and services.
`
`
`
`3.
`
`Opposer owns United States Trademark Registration No. 2,913,480,
`
`for computer antivirus and related software in Class 9 and related computer services in
`
`Class 42, for the T Ball Logo:
`
`'
`
`”T Ball Logo”
`
`The T Ball Logo application was filed April 24, 2001, and the mark has
`
`been in continuous use in commerce for the majority of the applied-for goods and
`
`services since March 1998. The Registration is Valid and in good standing, and
`
`Opposer’s use of the T Ball Logo pre-dates the earliest priority of Applicant's T
`
`(word only) Application. The Registration is not limited to any particular colors. In
`
`addition, the "common law” rights of Opposer and Trend Micro California in the T Ball
`
`Logo pre-date the Application.
`
`4.
`
`Opposer and Trend Micro California use a logo combining the
`
`T Ball Logo with the TREND MICRO mark in connection with software and hardware
`
`for a variety of computing and communication platforms, including servers, desktop
`
`computers, laptop computers, personal digital assistants and mobile phones, as well as
`
`other goods and services:
`
`MIC R0
`
`TREND
`T‘!
`
`”Composite Logo”
`
`5.
`
`Trend Micro California owns United States Trademark Registration
`
`No. 2,402,444 for the Composite Logo, in connection with ”computer utility software;
`
`computer antivirus software; computer network security software; computer software
`
`for use with electronic mail, local area network, internal corporate network, file,
`
`
`
`groupware application and proxy servers; computer software for filtering information
`
`retrieved from computer networks, including global computer information networks;
`
`computer software for diagnosing and repairing computers and computer software;
`
`instruction manuals supplied as a unit with the foregoing,” in International Class 9.
`
`
`
`TR E N D Itcomposmogoii
`MICRO
`
`The Composite Logo Registration is valid and in good standing, and has
`
`the priority of its February 23, 1998 filing date, prior to the earliest priority of the
`
`Applicant's T (word only) Application. The Registration is not limited to any particular
`
`colors and a Declaration of Incontestability was acknowledged by the U.S. Trademark
`
`Office on February 3, 2006. In addition, the ”common law" rights of Opposer and
`
`Trend Micro California in the Composite Logo pre-date the Application.
`
`6.
`
`Opposer and Trend Micro California are in the business of
`
`providing computer and network security solutions and services for business and home
`
`use. Beginning at least as early as 1998, Opposer has used the T Ball Logo and
`
`Composite Logo marks in connection with its goods and services. Opposer’s
`nationwide use of its marks has been valid and continuous since their respective dates
`
`of first use, and said marks have not been abandoned. Opposer’s T Ball Logo and
`
`Composite Logo marks have become well-known as identifying Opposer’s goods and
`
`services, and as a result, have become valuable assets of Opposer and the principal
`
`symbols of its goodwill.
`
`7.
`
`In view of the similarity of Opposer’s and Applicant's respective
`
`marks and the related nature of the parties’ goods and services, it is alleged that
`
`Applicant's T (word only) mark so resembles Opposer’s marks previously used in the
`
`
`
`United States, and not abandoned, as to be likely to cause confusion or mistake or to
`
`deceive, thereby causing loss, damage and injury to Opposer and the purchasing public.
`
`8.
`
`Registration of the mark depicted in the drawing may damage
`
`Opposer and Trend Micro California by preventing them from making further
`
`registrations for the T Ball Logo and Combination Logo in connection with the applied-
`
`for goods, by casting doubt on the permissibility of their use of those marks in
`
`connection with the applied-for goods, and by misleading third parties as to the scope
`
`of their exclusive rights in relation to the T Ball Logo and Combination Logo.
`
`9.
`
`The Application was filed on a Section 1(b) basis, requiring
`
`Applicant to aver that it has a bona fide intention to use the applied-for mark in
`
`commerce in connection with all of the goods in the Application. On information and
`
`belief, the scope of the identification of goods in the Application far exceeds the current
`
`business of the Applicant, and any realistic plans for the applied-for mark. The
`
`Application thus was infected by fraud from the time of filing, is void, and also should
`
`be denied registration on these grounds.
`
`10.
`
`Registration of the mark for goods on which Applicant has no bona
`
`fide intention to use its mark may damage Opposer and Trend Micro California by
`
`preventing them from making further registrations for the T Ball Logo and
`
`Combination Logo in connection with the applied-for goods by casting doubt on the
`
`permissibility of their use of those marks in connection with the applied-for goods and
`
`by misleading third parties as to the scope of their exclusive rights in relation to the
`
`T Ball Logo and Combination Logo.
`
`WHEREFORE, Opposer prays that this Notice of Opposition be sustained,
`
`that Applicant's Trademark Application Serial Number 76/ 252,927 be rejected, and that
`
`Applicant be denied registration of its T (word only) as a trademark for the goods in
`
`Classes 9, 35 and 42 as specified in that application.
`
`
`
`Please address all correspondence regarding this matter to
`
`Jefferson F. Scher, Carr & Ferrell LLP, 2200 Geng Road, Palo Alto, California, 94303.
`
`The required fee under 37 C.F.R.§2.6(a)(17) of $900.00 is enclosed
`
`herewith. Should any additional fees be required to oppose the goods and services in
`
`Classes 9, 35 and 42 only, please charge such necessary fees to our Deposit Account
`
`No. 50-3937.
`
`Respectfully submitted,
`
`Dated: February 1, 2008
`
`]oi A. White, Esq.
`Christine 5. Watson, Esq.
`CARR & FERRELL LLP
`
`2200 Geng Road
`Palo Alto, California 94303
`
`Phone: (650) 812-3400
`Fax: (650) 812-3444
`
`CERTIFICATE OF MAILING
`
`I hereby certify that this paper and/ or fee is being deposited with the United States Postal Service with sufficient postage as first-
`class mail in an envelope addressed to: P.O. Box 1451, Alexandria, VA 22313-14514 on February 1, 2008.
`/I
`
`Deposited by: Suehay P. Hernandez
`
`rson mailingpaper and/ or fee)
`
`
`
`
`
`
`(Signature of
`
`
`
`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 2200 Geng Road, Palo Alto, California 94303. On February 1, 2008, I
`
`served the within NOTICE OF OPPOSITION, on the interested party in said cause, by
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`placing true copies thereof enclosed in a sealed envelope and placing the envelope for
`
`collection and mailing at the above address, following ordinary business practices,
`
`addressed as follows:
`
`Ioan L. Long
`Mayer Brown LLP
`P.O. Box 2828
`
`Chicago, Illinois 60690-2828
`
`I am readily familiar with this business’ practice for collection and
`
`processing of correspondence for mailing with the U.S. Postal Service. This
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`correspondence would be deposited with the U.S. Postal Service this same day in the
`
`ordinary course of business.
`
`I declare under penalty of perjury that the foregoing is true and correct,
`
`and that this declaration was executed at Palo Alto, California, this 1st day of February,
`
`2008.
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