Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA248600
`ESTTA Tracking number:
`11/12/2008
`
`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
`
`Intel Corporation
`11/12/2008
`
`2200 Mission College Blvd.
`Santa Clara, CA 95054
`UNITED STATES
`
`Attorney
`information
`
`Yuka Sugar
`Howrey LLP
`550 South Hope Street, Suite 1100
`Los Angeles, CA 90071
`UNITED STATES
`sugary@howrey.com, ghajarb@howrey.com, renojor@howrey.com,
`ipdocketing@howrey.com Phone:213-892-1800
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`International
`Registration No.
`Applicant
`
`77016054
`11/12/2008
`
`NONE
`
`Publication date
`Opposition
`Period Ends
`International
`Registration Date
`
`07/15/2008
`11/12/2008
`
`NONE
`
`Chipworks, Inc.
`3685 Richmond Road, Suite 500
`Ottowa, K2H5B7
`CANADA
`Goods/Services Affected by Opposition
`
`Class 009.
`All goods and services in the class are opposed, namely: design analysis software for use in
`semiconductor, electronics and system reverse engineering
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution
`
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`1702463
`
`07/21/1992
`
`Application Date
`
`04/22/1991
`
`Foreign Priority
`
`NONE
`
`

`
`Word Mark
`Design Mark
`
`INTEL INSIDE
`
`Date
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 1992/01/00 First Use In Commerce: 1992/01/00
`microprocessors
`
`U.S. Registration
`No.
`Registration Date
`
`1705796
`
`08/04/1992
`
`Application Date
`
`04/22/1991
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`INTEL INSIDE
`
`NONE
`
`Class 009. First use: First Use: 1992/01/00 First Use In Commerce: 1992/01/00
`microprocessors
`
`2155197
`
`Application Date
`
`08/08/1995
`
`05/05/1998
`
`Foreign Priority
`Date
`INTEL INSIDE PENTIUM PROCESSOR
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 1993/05/00 First Use In Commerce: 1993/05/00
`computer hardware, namely, microprocessors
`
`U.S. Registration
`
`2179209
`
`Application Date
`
`09/04/1996
`
`

`
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`08/04/1998
`
`INTEL INSIDE
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Class 009. First use: First Use: 1992/01/00 First Use In Commerce: 1992/01/00
`computer operating system software; computer operating programs; computer
`system[ extensions, tools and] utilities in the field of application software for
`connecting personal computers, networks, telecommunications apparatus and
`global computer network applications; [audio and video graphics for real time
`information and image transfer, transmission, reception, processing and
`digitizing;] computer firmware; computer hardware; [computer peripherals;]
`integrated circuits; integrated circuit chips; semiconductor processors;
`semiconductor processor chips; microprocessors; printed circuit boards;
`electronic circuit boards; computer memory devices; semiconductor memory
`devices; video circuit boards; audio circuit boards; audio-video circuit boards;
`[video graphic accelerators; multimedia accelerators; video processors; fax/
`modems; computer hardware and software for the transmission and receipt of
`facsimiles;] computer hardware and software for the development, maintenance,
`and use of local and wide area computer networks; computer hardware and
`software for the development, maintenance, and use of interactive audio-video
`computer conference systems; computer hardware and software for the receipt,
`display, and use of broadcast video, audio, and digital data signals
`
`U.S. Registration
`No.
`Registration Date
`
`2188280
`
`09/08/1998
`
`Word Mark
`Design Mark
`
`INTEL INSIDE
`
`Application Date
`
`09/04/1996
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 1992/01/00 First Use In Commerce: 1992/01/00
`computer operating system software; computer operating programs; computer
`system extensions, tools and utilities in the field of application software for
`connecting personal computers, networks, telecommunications apparatus and
`global computer network applications; audio and video graphics for real time
`information and image transfer, transmission, reception, processing and
`digitizing; computer firmware; computer hardware; computer peripherals;
`integrated circuits; integrated circuit chips; semiconductor processors;
`semiconductor processor chips; microprocessors; printed circuit boards;
`electronic circuit boards; computer memory devices; semiconductor memory
`
`

`
`devices; video circuit boards; audio circuit boards; audio-video circuit boards;
`video graphic accelerators; multimedia accelerators; video processors; fax/
`modems; computer hardware and software for the transmission and receipt of
`facsimiles; computer hardware and software for the development, maintenance,
`and use of local and wide area computer networks; computer hardware and
`software for the development, maintenance, and use of interactive audio-video
`computer conference systems; computer hardware and software for the receipt,
`display, and use of broadcast video, audio, and digital data signals
`
`U.S. Registration
`No.
`Registration Date
`
`2978463
`
`07/26/2005
`
`Word Mark
`Design Mark
`
`INTEL INSIDE CENTRINO
`
`Application Date
`
`12/30/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2003/03/00 First Use In Commerce: 2003/03/00
`COMPUTERS, COMPUTER HARDWARE; SEMICONDUCTORS;
`MICROPROCESSORS AND SEMICONDUCTOR DEVICES; INTEGRATED
`CIRCUITS; COMPUTER CHIPSETS; COMPUTER MOTHERBOARDS AND
`DAUGHTERBOARDS; MICROCOMPUTERS; COMPUTER WORKSTATIONS,
`NAMELY, PROCESSORS, CENTRAL PROCESSING UNITS, COMPUTER
`FURNITURE, COMPUTER MONITORS, KEYBOARDS, COMPUTER
`PERIPHERALS, COMPUTER PRINTERS; SOFTWARE PROGRAMMABLE
`MICROPROCESSORS; NOTEBOOK AND LAPTOP COMPUTERS;
`PORTABLE COMPUTERS; HANDHELD COMPUTERS; COMPUTER
`PERIPHERALS; PERSONAL DIGITAL ASSISTANTS; COMPUTER
`SOFTWARE FOR USE IN PROVIDING MULTIPLE USER ACCESS TO A
`GLOBAL COMPUTER INFORMATION NETWORK FOR SEARCHING,
`RETRIEVING, TRANSFERRING, MANIPULATING AND DISSEMINATING A
`WIDE RANGE OF INFORMATION; COMPUTER FIRMWARE, NAMELY,
`COMPUTER UTILITY SOFTWARE AND OTHER COMPUTER SOFTWARE
`USED TO MAINTAIN AND OPERATE COMPUTER SYSTEM ALL STORED IN
`A COMPUTER'S READ-ONLY MEMORY (ROM) OR ELSEWHERE IN THE
`COMPUTER'S CIRCUITRY, AND OPERATING SYSTEM SOFTWARE;
`COMPUTER AND TELECOMMUNICATIONS NETWORKING HARDWARE;
`COMPUTER AND TELECOMMUNICATIONS NETWORKING SOFTWARE
`FOR WIRELESS NETWORK COMMUNICATIONS AND CONNECTIVITY;
`NETWORKING SERVERS; COMPUTER NETWORK ADAPTERS, SWITCHES,
`ROUTERS AND HUBS; WIRELESS AND WIRED MODEMS AND
`COMMUNICATION CARDS; MOBILE TELEPHONES; PARTS THEREFOR
`
`U.S. Registration
`No.
`Registration Date
`
`2547565
`
`03/12/2002
`
`Application Date
`
`12/31/1997
`
`Foreign Priority
`
`NONE
`
`

`
`Word Mark
`Design Mark
`
`INTEL INSIDE
`
`Date
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 042. First use: First Use: 1994/01/00 First Use In Commerce: 1994/01/00
`COMPUTER-RELATED AND COMMUNICATIONS-RELATED SERVICES,
`NAMELY, SUPPORT AND CONSULTING SERVICES FOR COMPUTER-
`RELATED AND COMMUNICATIONS-RELATED GOODS; PROVIDING
`INFORMATION IN THE FIELD OF COMPUTER TECHNOLOGY VIA THE
`GLOBAL COMPUTER NETWORK; PROVIDING ON-LINE PUBLICATIONS,
`NAMELY, BOOKS, BROCHURES, WHITE PAPERS, CATALOGS AND
`PAMPHLETS IN THE FIELDS OF COMPUTER AND INFORMATION
`TECHNOLOGY; DESIGNING AND DEVELOPING STANDARDS FOR OTHERS
`IN THE DESIGN AND IMPLEMENTATION OF COMPUTER SOFTWARE,
`COMPUTER HARDWARE AND TELECOMMUNICATIONS EQUIPMENT;
`COMPUTER SOFTWARE, COMPUTER HARDWARE AND NETWORK
`DESIGN SERVICES
`
`U.S. Registration
`No.
`Registration Date
`
`2194122
`
`10/06/1998
`
`Word Mark
`Design Mark
`
`INTEL INSIDE
`
`Application Date
`
`09/04/1996
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 016. First use: First Use: 1992/01/00 First Use In Commerce: 1992/01/00
`printed materials, namely, books, magazines, newsletters, journals, operating
`manuals, users guides, pamphlets, and brochures about, for use with and
`directed to users of, computer operating system software; computer operating
`programs; computer system extensions; computer system tools; computer
`system utilities; computer application software; computer firmware; computer
`
`

`
`hardware; computer peripherals; computer components; integrated circuits;
`integrated circuit chips; semiconductor processors; semiconductor processor
`chips; microprocessors; printed circuit boards; electronic circuit boards;
`computer memory devices; semiconductor memory devices; video circuit
`boards; audio circuit boards; audio-video circuit boards; video graphic
`accelerators; multimedia accelerators; video processors; fax/modems; computer
`hardware and software for the transmission and receipt of facsimiles; computer
`hardware and software for the development, maintenance, and use of local and
`wide area computer networks; computer hardware and software for the
`development, maintenance, and use of interactive audio-video computer
`conference systems; computer hardware and software for the receipt, display,
`and use of broadcast video, audio, and digital data signals; and computer
`hardware and software for development, testing, programming, and production
`of hardware and software
`
`U.S. Registration
`No.
`Registration Date
`
`2198880
`
`10/20/1998
`
`Application Date
`
`09/04/1996
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`INTEL INSIDE
`
`NONE
`
`Class 016. First use: First Use: 1992/01/00 First Use In Commerce: 1992/01/00
`printed materials, namely, books, magazines, newsletters, journals, operating
`manuals, users guides, pamphlets, and brochures about, for use with, and
`directed to users of, computer operating system software; computer operating
`programs; computer system extensions; computer system tools; computer
`system utilities; computer application software; computer firmware; computer
`hardware; computer peripherals; computer components; integrated circuits;
`integrated circuit chips; semiconductor processors; semiconductor processor
`chips; microprocessors; printed circuit boards; electronic circuit boards;
`computer memory devices; semiconductor memory devices; video circuit
`boards; audio circuit boards; audio-video circuit boards; video graphic
`accelerators; multimedia accelerators; video processors; fax/modems; computer
`hardware and software for the transmission and receipt of facsimiles; computer
`hardware and software for the development, maintenance, and use of local and
`wide area computer networks; computer hardware and software for the
`development, maintenance, and use of interactive audio-video computer
`conference systems; computer hardware and software for the receipt, display,
`and use of broadcast video, audio, and digital data signals; and computer
`hardware and software for development, testing, programming, and production
`of hardware and software
`
`U.S. Registration
`No.
`Registration Date
`
`2252046
`
`06/08/1999
`
`Application Date
`
`10/10/1997
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`INTEL INSIDE
`
`NONE
`
`Class 025. First use: First Use: 1993/12/00 First Use In Commerce: 1993/12/00
`T-shirts, shirts, [beachwear, loungewear, sweatshirts, sweat suits, coveralls,
`jackets, ties, ] headwear, [cardigans, gym suits, hats, jogging suits, neckties,
`
`

`
`polo shirts, infant rompers]
`
`U.S. Registration
`No.
`Registration Date
`
`2256061
`
`06/22/1999
`
`Application Date
`
`10/10/1997
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`INTEL INSIDE
`
`NONE
`
`Class 021. First use: First Use: 1993/12/00 First Use In Commerce: 1993/12/00
`Mugs, sports bottles
`
`U.S. Registration
`No.
`Registration Date
`
`2261580
`
`07/13/1999
`
`Word Mark
`Design Mark
`
`INTEL INSIDE
`
`Application Date
`
`10/10/1997
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 028. First use: First Use: 1995/10/00 First Use In Commerce: 1995/10/00
`toys, namely, stuffed toys, plush toys, dolls, bean bags, games, namely, [ board
`games, stand alone video games, and Christmas ornaments ]
`
`U.S. Registration
`No.
`Registration Date
`
`2289657
`
`10/26/1999
`
`Word Mark
`Design Mark
`
`INTEL INSIDE
`
`Application Date
`
`10/10/1997
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 016. First use: First Use: 1993/12/00 First Use In Commerce: 1993/12/00
`[ binders, boxes for pens, tablets, note cards and playing cards, self-adhesive
`pads, ] desk pads, [ and calendar pads, ] pens, pencils, [ folders, photograph
`stands, rulers, markers ]
`
`

`
`U.S. Registration
`No.
`Registration Date
`
`2446347
`
`04/24/2001
`
`Word Mark
`Design Mark
`
`THE JOURNEY INSIDE
`
`Application Date
`
`03/31/2000
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 1994/08/00 First Use In Commerce: 1994/08/00
`Educational services, namely, conducting classes, seminars, conferences, and
`hosting online educational forums in the field of computer and software use,
`navigation over global computer networks, computer science and technology,
`computer management, and distributing course materials in connection
`therewith developing and disseminating educational materials designed to
`increase technology literacy among students,
`
`U.S. Registration
`No.
`Registration Date
`
`2431749
`
`02/27/2001
`
`Word Mark
`Design Mark
`
`THE JOURNEY INSIDE
`
`Application Date
`
`04/10/2000
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 016. First use: First Use: 1994/08/00 First Use In Commerce: 1994/08/00
`Educational materials, namely, educational kits for teaching and learning
`computer skills and understanding technology, consisting of teacher and student
`materials, namely, books, manuals, posters, lesson plans, [ overhead projection
`slides, ] teacher resource materials, printed guidelines for use by teachers and
`parents to assess student learning and prerecorded videocassettes for teacher
`and student training sold as a unit therefor
`
`Attachments
`
`74159672#TMSN.gif ( 1 page )( bytes )
`74716085#TMSN.gif ( 1 page )( bytes )
`75160100#TMSN.gif ( 1 page )( bytes )
`78198753#TMSN.gif ( 1 page )( bytes )
`75412488#TMSN.gif ( 1 page )( bytes )
`75160174#TMSN.gif ( 1 page )( bytes )
`75371544#TMSN.gif ( 1 page )( bytes )
`
`

`
`75978352#TMSN.gif ( 1 page )( bytes )
`76015052#TMSN.gif ( 1 page )( bytes )
`76022892#TMSN.gif ( 1 page )( bytes )
`ICInside NOO.pdf ( 43 pages )(1117499 bytes )
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Signature
`Name
`Date
`
`/Yuka Sugar/
`Yuka Sugar
`11/12/2008
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`§
`Intel Corporation,
`§ Opposition No.:
`
`
`
`
`
`§ Serial No. 77/016,054
`
`
`
`Opposer,
`§ Mark: ICInside
`
`
`
`
`
`Chipworks, Inc. § International Class: 9
`
`
`
`
`
`§ Published: July 15, 2008
`
`Applicant.
`
`
`§
`
`
`
`
`Box TTAB FEE
`Commissioner for Trademarks
`P. O. Box 1451
`Alexandria, VA 22313-1451
`
`NOTICE OF OPPOSITION
`
`Application Serial No. 77/016,054 for the mark ICInside, filed on October 6, 2006, was
`
`
`
`
`
`published for opposition on July 15, 2008 with the identification of goods reading: “design
`
`analysis software for use in semiconductor, electronics and system reverse engineering” in
`
`International Class 9.
`
`Intel Corporation, a Delaware corporation, having its principal place of business at 2200
`
`Mission College Blvd., Santa Clara, California 95052, believes that it will be damaged by the
`
`registration of the mark ICInside shown in Application Serial No. 77/016,054 and hereby
`
`opposes the same.
`
`Intel Corporation has applied for and obtained the necessary extensions of time in which
`
`to oppose Application Serial No. 77/016,054 following its publication. Opposer requests that the
`
`filing fee of $300 for online opposition submissions and any other fees required for this
`
`proceeding be withdrawn from its Deposit Account, No. 08-3038.
`
`
`
`As grounds for the opposition, Opposer alleges:
`
`
`DM_US:21595604_1
`
`

`
`BACKGROUND
`
`1.
`
`In 1971, Intel Corporation (“Intel” or “Opposer”) created and introduced the
`
`world’s first microprocessor. Intel’s microprocessors were an enormous success and are now
`
`used within virtually all types of computerized applications, including computers, mainframes,
`
`desktops, laptops, handheld devices and cellular phones. A microprocessor is considered to be
`
`the “brain” of a computer, as it manages the flow of information and data.
`
`2.
`
`Since its introduction by Intel, the utility of the microprocessor has expanded into
`
`virtually all types of consumer electronic products, from home appliances and automobiles, to
`
`mobile devices and consumer electronics. In addition to processors, Intel expanded its business
`
`to include a wide range of products and services related to software, communications, the
`
`internet, e-commerce, graphics, gaming, and imaging.
`
` THE INTEL INSIDE MARKS
`
`3.
`
`In 1991, Intel coined the term "INTEL INSIDE" when it launched its
`
`revolutionary INTEL INSIDE program, a logo licensing and co-operative advertising program.
`
`Under this program, computer manufacturers (such as IBM, Dell, Hewlett-Packard, Compaq)
`
`that sold personal computers containing Intel microprocessors (such as the renowned
`
`PENTIUM® processor) were licensed to use Intel's INTEL INSIDE logo on their computers and
`
`in their advertising and promotional materials. Through this program, the INTEL INSIDE logo
`
`appears on the front bezel of millions of computers around the world and the mark was
`
`extensively promoted in various forms of media, both by Intel and its computer manufacturer
`
`licensees.
`
`4.
`
`The INTEL INSIDE program was revolutionary because this was the first time
`
`that an "ingredient" manufacturer in the computer industry reached out directly to the end
`
`consumer, instead of marketing solely to the computer manufacturers, convincing the consumer
`
`
`DM_US:21595604_1
`
`2
`
`

`
`to look for personal computers containing Intel designed microprocessors. The INTEL INSIDE
`
`program was and is regarded as “one of the more magnificent campaigns of the century.”
`
`5.
`
`The INTEL INSIDE mark is a creative linguistic construction because it follows a
`
`non-standard English format that is effective in suggesting that all the things associated with
`
`Intel Corporation--safety, quality, workmanship, reliability, integrity, and cutting edge
`
`technology--are part of the personal computer by way of the processor. The use of this creative
`
`“{word}INSIDE” format as a trademark did not exist prior to its creation by Intel, and over the
`
`years of promotion and successful use, garnered considerable secondary meaning.
`
`6.
`
`Since at least as early as January of 1992, Intel began manufacturing and selling,
`
`in commerce, computer hardware products under the fanciful INTEL INSIDE and INTEL
`
`INSIDE and Design Marks (collectively “the INTEL INSIDE Marks”).
`
`7.
`
`Intel is the owner of record of numerous class 9 trademark registrations for its
`
`INTEL INSIDE Marks in the United States Patent and Trademark Office for a wide variety of
`
`computer hardware, software and other products. Among these registrations are the following:
`
`Exh. Reg. No.
`
`Class
`
`Registered
`
`Mark
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`1,702,463
`
`1,705,796
`
`2,155,197
`
`2,179,209
`
`2,188,280
`
`2,978,463
`
`2,547,565
`
`
`
`9
`
`9
`
`9
`
`9
`
`9
`
`9
`
`9
`
`July 21, 1992
`
`INTEL INSIDE & Swirl Design
`
`August 4, 1992
`
`INTEL INSIDE
`
`May 5, 1998
`
`INTEL INSIDE & Swirl Design, PENTIUM
`PROCESSOR
`
`August 4, 1998
`
`INTEL INSIDE
`
`September 8,
`1998
`
`INTEL INSIDE & Swirl Design
`
`July 26, 2005
`
`INTEL INSIDE CENTRINO and Design
`
`March 12, 2002
`
`INTEL INSIDE & Design
`
`
`DM_US:21595604_1
`
`3
`
`

`
`8.
`
`Copies of these registrations are appended to this Notice of Opposition as Exhibits
`
`A through G. These registrations are currently valid and subsisting with Registration Numbers
`
`1,702,463; 1,705,796; 2,155,197; 2,179,209 and 2,188,280 being incontestable.
`
`9.
`
`Since at least as early as 1993, Intel sold consumer products bearing the INTEL
`
`INSIDE Marks, including products such as clothing and accessories, pens, pencils, stationery,
`
`mugs, water bottles, and toys.
`
`10.
`
`Intel is the owner of numerous U.S. registrations for the INTEL INSIDE Marks
`
`for these branded consumer goods as well as printed materials. Among these registrations are
`
`the following:
`
`Exh. Reg. No.
`
`Class
`
`Registered
`
`Mark
`
`H.
`
`2,194,122
`
`I.
`
`J.
`
`K.
`
`L
`
`2,198,880
`
`2,252,046
`
`2,256,061
`
`2,261,580
`
`M.
`
`2,289,657
`
`16
`
`16
`
`25
`
`21
`
`28
`
`16
`
`October 6, 1998
`
`INTEL INSIDE & Swirl Design
`
`October 20, 1998 INTEL INSIDE
`
`June 8, 1999
`
`INTEL INSIDE
`
`June 22, 1999
`
`INTEL INSIDE
`
`July 13, 1999
`
`INTEL INSIDE
`
`October 26, 1999 INTEL INSIDE
`
`
`
`
`
`
`
`11.
`
`Copies of these registrations are appended to this Notice of Opposition as Exhibits
`
`H through M. All of these registrations are currently valid, subsisting, and incontestable.
`
`12.
`
`Intel has invested billions of dollars in advertising and promoting its products
`
`under the INTEL INSIDE Marks and has garnered considerable goodwill and consumer
`
`recognition under this mark. Intel’s advertising has extended to all media, including but not
`
`limited to radio, magazines, newspapers, print ads, trade shows, the internet, primetime
`
`television, on billboards in malls, and outdoor kiosks. The uniqueness of the INTEL INSIDE
`
`mark, and the innovation and quality it represents, made it into the cultural icon it is today.
`
`
`DM_US:21595604_1
`
`4
`
`

`
`Indeed, the fame and success of the INTEL INSIDE mark has been featured in several marketing
`
`case studies and publications.
`
`13.
`
`It is estimated that since the program’s inception in 1991, advertisements carrying
`
`the INTEL INSIDE mark have most likely created billions of impressions upon the general
`
`consuming public.
`
`14.
`
`The INTEL INSIDE Marks are well-known, famous and recognized by
`
`consumers to be Intel’s marks, and are famous pursuant to 15 U.S.C. § 1125(c)(1).
`
`
`
`15.
`
`In addition to Intel’s extensive use and registration of the INTEL INSIDE Marks,
`
`Intel owns and has used other marks in the distinctive “{word}INSIDE” format.
`
`
`
`16.
`
`At least as early as 1994, Intel inaugurated a national education program entitled
`
`“The Journey Inside” to help teach school children how computers work. Intel has used the
`
`designation THE JOURNEY INSIDE for this educational program and owns the following
`
`United States Trademark Registrations for THE JOURNEY INSIDE:
`
`Exh. Registration No.
`
`Class
`
`Registered
`
`Mark
`
`2,446,347
`
`2,431,749
`
`41
`
`16
`
`April 24, 2001
`
`THE JOURNEY INSIDE
`
`February 27, 2001
`
`THE JOURNEY INSIDE
`
`17.
`
`Copies of these registrations are appended to this Notice of Opposition as Exhibits
`
`N.
`
`O
`
`
`
`N and O. These registrations are currently valid and subsisting.
`
`18.
`
`Because of Intel's extensive investment and efforts in promoting its INTEL
`
`INSIDE Marks, together with the extensive advertising and promotional efforts of Opposer's
`
`licensees under the INTEL INSIDE program, and Intel’s use of THE JOURNEY INSIDE mark
`
`on its services, the “{word}INSIDE” format – especially in the field of computers – continues
`
`to generate valuable goodwill and is widely recognized and uniquely associated with and
`
`belonging to Opposer.
`
`
`DM_US:21595604_1
`
`5
`
`

`
`
`
`
`
`CHIPWORKS’ “ICInside” APPLICATION
`
`19.
`
`Applicant Chipworks is in the business of semiconductor design technology and
`
`software.
`
`
`
`20.
`
`In October 2006, Applicant filed an intent-to-use application to register the mark
`
`ICInside for “design analysis software for use in semiconductor, electronics and system reverse
`
`engineering” in International Class 9. Attached as Exhibit P to this Notice of Opposition is a
`
`datasheet explaining the features of Applicant’s ICInside product downloaded from Applicant’s
`
`website at www.chipworks.com. Also attached as Exhibit Q is a screen shot from Applicant’s
`
`website at www.chipworks.com/icinsidebrowser/aspx. Both Exhibits illustrate how the
`
`Applicant markets its software product as a tool that can analyze, reverse engineer, and
`
`reconstruct semiconductors and other electronic products.
`
`
`
`21.
`
`There is no issue as to priority. Intel’s first use and its filing dates for the above-
`
`referenced registrations long precede Applicant’s October 6, 2006 application to register the
`
`mark ICInside. Moreover, Intel’s INTEL INSIDE Marks were famous among the general
`
`consuming public prior to Applicant’s filing and alleged first use of the ICInside mark.
`
`22.
`
`The marks INTEL INSIDE and ICInside are conceptually and visually similar.
`
`Both the ICInside mark and Intel’s INTEL INSIDE Marks are separated into two elements, the
`
`first of which begins with the letter “I” and the second of which is the identical term “INSIDE.”
`
`Moreover, given Intel’s fame and renown in the field of semiconductors over the past several
`
`decades, consumers are likely to assume that “ICInside” is a further extension of Intel’s growing
`
`line of products, in particular because the acronym “IC” is used and perceived in the computer
`
`industry as an abbreviation for “integrated circuit” – one of Intel’s core products.
`
`
`DM_US:21595604_1
`
`6
`
`

`
`
`
`23.
`
`Applicant’s software is designed for use with semiconductors, such as those
`
`manufactured by Intel. This software is highly-related to Intel’s wide range of semiconductor,
`
`integrated circuit, and software products.
`
`24.
`
`Given the similarities between the marks, overlap between the parties’ products
`
`and marketing channels, and the fame and strength of Intel’s INTEL INSIDE Marks, Applicant's
`
`ICInside mark -- which copies the same distinctive “{word}INSIDE” format as Intel’s INTEL
`
`INSIDE Marks -- is likely to cause confusion as to the source of Applicant’s products.
`
`25.
`
`Consumers are likely to mistakenly presume that there is a connection between
`
`Applicant and Intel that does not exist, or that Applicant’s integrated circuit software analysis
`
`product is affiliated with, licensed or sponsored by Intel.
`
`26.
`
`Any defect or fault found with Applicant’s goods will necessarily reflect upon and
`
`seriously injure the reputation that Intel has established for its products marketed under the
`
`famous INTEL INSIDE Marks.
`
`27.
`
`Independently, Applicant’s actual or intended use of the alleged ICInside mark
`
`will and is likely to dilute the distinctive quality of Intel’s famous INTEL INSIDE Marks.
`
`28.
`
`Applicant’s actual or intended use of the alleged ICInside mark will and is likely
`
`to blur and whittle away at the distinctiveness and identity-evoking quality of the famous INTEL
`
`INSIDE marks.
`
`29.
`
`The registration of Applicant's alleged ICInside mark on the Principal Register
`
`would be inconsistent with Opposer's rights under the aforementioned registrations and common
`
`law, and would be damaging to Opposer.
`
`
`
`
`
`
`DM_US:21595604_1
`
`7
`
`

`
`WHEREFORE, Opposer requests that Application Serial No. 77/016,054 be rejected, and
`
`that no registration be issued in connection with this application, and that this opposition be
`
`sustained in favor of Opposer. Date: November 12, 2008
`
`By:
`
` obby A. Ghajar
`
`Yuka Sugar
`HOWREY LLP
`
`550 South Hope Street, Suite 1100
`Los Angeles, CA 90071
`(213) 892~1800
`
`, ATTORNEYS FOR OPPOSER
`
`Of counsel:
`
`Christopher E. George, Esq.
`Intel Corporation
`2200 Mission College Boulevard
`Mailstop RNB-4-151
`Santa Clara, California 95052-81 19
`
`DATE OF DEPOSIT: November 12, 2008
`
`CERTIFICATE OF ELECTRONIC TRANSMISSION
`
`date indicated above.
`
`I hereby certify that this correspondence is being transmitted to the United States Patent and Trademark Office
`Trademark Trial and Appeal Board using the Electronic System for Trademark Trials and Appeals (ESTTA) on the
`
`Certificate of Service Via First Class Mail
`
`I, Yuka Sugar, of Howrey LLP, attorneys for Opposer Intel Corporation hereby certify
`that a true and complete copy of the foregoing Notice of Opposition was served on Robert L.
`Powley, Powley & Gibson, P.C., 304 Hudson St. Fl. 2 New York, NY 10013-1015, counsel for
`
`Chipworks, Inc., via postage prepaid first-class mail on November 12, 2008.
` Yuka Sug r
`
`DM_US:21595604__1
`
`8
`
`

`
`
`
`EXHIBIT AEXHIBIT A
`
`

`
`Int. Cl.: 9
`
`I
`b
`Prior U.S. Cl.: 26
`Reg. No. 1,702,463
`_
`‘
`-
`United States Patent and Trademark Offlce Registered July 21,1992
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`
`
`INTEL CORPORATION (DELAWARE CORPO—
`RATION)
`3065 BOWERS AVENUE
`SANTA CLARA, CA 9505!
`
`FOR: MICROPROCESSORS, IN CLASS 9 (U.S.
`CL. 26).
`I
`FIRST USE
`1-O~1992;
`l—O—l992.
`
`IN COMMERCE
`
`OWNER OF U.S. REG. NOS. 914,978, 1,022,563,
`AND OTHERS.
`
`SN 74—159,672, FILED 4-22-I991.
`
`A
`TODD BRAVERMAN, EXAMINING ATTOR-
`NEY
`
`

`
`
`
`EXHIBIT BEXHIBIT B
`
`

`
`Int. Cl.: 9
`
`Prior US. Cl.: 26
`Reg. No. 1,705,796
`_
`.
`_
`
`Umted States Patent and Trademark Offlce Registered Aug. 4, 1992
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`INTEL INSIDE
`
`INTEL CORPORATION (DELAWARE CORPO-
`RATION)
`3065 BOWERS AVENUE
`SANTA CLARA, CA 9505:
`
`1-0-1992;
`
`FIRST USE
`l—0~1992.
`OWNER OF U.s. REG. NOS. 914,973, 1,022,563,
`AND OTHERS.
`
`IN COMMERCE
`
`FOR: MICROPROCESSORS. IN CLASS 9 (U.S.
`CL. 26).
`
`GLENN CLARK, EXAMINING ATTORNEY
`
`SN 74—-159,673, FILED 4-22-1991.
`
`

`
`
`
`EXHIBIT CEXHIBIT C
`
`

`
`Int. CL:
`
`Prior U.S. Cls.: 21, 23, 26, 36, and 38
`United States Patent and Trademark Office
`
`Reg. NO. 2,155,197
`Registered May 5,1998
`
`TRADEMARK
`PRINCIPAL REGISTER
`
` I
`
`|$’flOCE55OR
`
`INTEL CORPORATION (DELAWARE CORPO-
`RATION)
`2200 MISSION COLLEGE BOULEVARD
`SANTA CLARA’ CA 950523119
`
`«
`
`FOR: COMPUTER HARDWARE, NAMELY,
`MICROPROCESSORS, IN CLASS 9 (U.S. CLS. 21.
`23, 26, 36 AND 33)
`FIRST USE
`5—0—1993.
`
`IN COMMERCE
`
`5—0-1993;
`
`OWNER OF» U.S. REG. NOS.
`1,705,796, AND 1,941,172.
`NO CLAIM IS MADE To THE EXCLUSIVE
`RIGHT TO USE “PROCESSOR", APART FROM
`THE MARK AS SHOWN.
`‘
`
`1,702,463,
`
`SN 74—7l6,085, FILED 8—8~1995.
`
`K. MARGARET LE, EXAMINING ATTORNEY
`
`

`
`
`
`EXHIBIT DEXHIBIT D
`
`

`
`Int. Cl.: 9
`
`Prior U.S. Cls.: 21, 23, 26, 36, and 38
`
`United States Patent and Trademark Office
`
`Reg. No. 2,179,209
`Registered Aug. 4, 1998
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`INTEL INSIDE
`
`INTEL CORPORATION (DELAWARE CORPO-
`RATION)
`2200 MISSION COLLEGE BOULEVARD
`SANTA CLARA, CA 950528119 INTEL CORPO-
`RATION (DELAWARE CORPORATION)
`
`2200 MISSION COLLEGE BOULEVARD
`SANTA CLARA, CA 950528] I9
`
`FOR: COMPUTER OPERATING SYSTEM
`SOFTWARE; COMPUTER OPERATING PRO-
`GRAMS; COMPUTER SYSTEM EXTENSIONS,
`TOOLS AND UTILITIES IN THE FIELD OF
`APPLICATION SOFTWARE FOR CONNECT-
`ING PERSONAL COMPUTERS, NETWORKS,
`TELECOMMUNICATIONS APPARATUS AND
`GLOBAL COMPUTER NETWORK APPLICA-
`TIONS; AUDIO AND VIDEO GRAPHICS FOR
`REAL TIME INFORMATION AND IMAGE
`TRANSFER,
`TRANSMISSION, RECEPTION,
`PROCESSING AND DIGITIZING; COMPUTER
`FIRMWARE; COMPUTER HARDWARE; COM-
`PUTER PERIPHERALS;
`INTEGRATED CIR-
`CUITS; INTEGRATED CIRCUIT CHIPS; SEMI-
`CONDUCTOR PROCESSORS; SEMICONDUC-
`TOR PROCESSOR CHIPS; MICROPROCES-
`SORS; PRINTED CIRCUIT BOARDS; ELEC-
`TRONIC CIRCUIT
`BOARDS;
`COMPUTER
`MEMORY
`DEVICES;
`SEMICONDUCTOR
`
`CIRCUIT
`VIDEO
`DEVICES;
`MEMORY
`BOARDS; AUDIO CIRCUIT BOARDS; AUDIO-
`VIDEO CIRCUIT BOARDS; VIDEO GRAPHIC
`ACCELERATORS; MULTIMEDIA ACCELERA-
`TORS; VIDEO PROCESSORS; FAX/MODEMS;
`COMPUTER HARDWARE AND SOFTWARE
`FOR THE TRANSMISSION AND RECEIPT OF
`FACSIMILES; COMPUTER HARDWARE AND
`SOFTWARE
`FOR
`THE DEVELOPMENT,
`MAINTENANCE, AND USE OF‘ LOCAL AND
`WIDE AREA COMPUTER NETWORKS; COM-
`PUTER HARDWARE AND SOFTWARE FOR
`THE DEVELOPMENT, MAINTENANCE, AND
`USE OF INTERACTIVE AUDIO-VIDEO COM-
`PUTER CONFERENCE SYSTEMS; COMPUTER
`HARDWARE AND SOFTWARE FOR THE RE-
`CEIPT, DISPLAY. AND USE OF BROADCAST
`VIDEO, AUDIO. AND DIGITAL DATA SIG-
`NALS, IN CLASS 9 (U.S. CLS. 21, 23, 26, 36 AND
`33).
`FIRST USE
`1-0-1992.
`OWNER OF U.S. REG. NOS. 1,702,463 AND
`1,705,796.
`
`IN COMMERCE
`
`l~0-I992;
`
`SN 75460, I03, FILED 9-4-4996.
`
`'
`
`SOPHIA S. KIM, EXAMINING ATTORNEY
`
`

`
`
`
`EXHIBIT EEXHIBIT E
`
`

`
`Int. CL: 9
`
`Prior U.S. Cls.: 21, 23, 26, 36, and 38
`
`Reg. No. 2,188,280
`
`United States Patent and Trademark Office
`. Registered Sep. 8, 199
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`
`
`INTEL CORPORATION (DELAWARE CORPO-
`RATION)
`2200 MISSION COLL