Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA345391
`ESTTA Tracking number:
`05/03/2010
`
`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
`
`Apple Inc.
`05/02/2010
`
`1 Infinite Loop
`Cupertino, CA 95014
`UNITED STATES
`
`Attorney
`information
`
`Joseph Petersen
`Kilpatrick Stockton LLP
`31 West 52nd Street, 14th Floor
`New York, NY 10019
`UNITED STATES
`AlJones@kilstock.com, ipfilings@kilstock.com, JPetersen@kilstock.com,
`JVogel@kilstock.com, agarcia@kilstock.com Phone:212-775-8700
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`77079913
`05/03/2010
`
`Publication date
`Opposition
`Period Ends
`
`11/03/2009
`05/02/2010
`
`Tesco Stores Ltd.
`Tesco House, Delamare Road
`Cheshunt Hertfordshire, EN89SL
`UNITED KINGDOM
`Goods/Services Affected by Opposition
`
`Class 009.
`All goods and services in the class are opposed, namely: Pre-paid telephone calling cards,
`magnetically encoded; telephone apparatuses; telephones; cellular telephones; cellular telephone
`apparatuses; mobile telephones; and magnetically encoded credit cards
`Class 016.
`All goods and services in the class are opposed, namely: Pre-paid telephone calling cards, not
`magnetically encoded; parchment paper; paper napkins; paper tablecloths; paper doilies; paper filters
`for coffee makers; paper towels; toilet paper; disposable diapers; paper tissues; paper handkerchiefs;
`paint brushes; paper coasters; glue for stationery or household use; calendars; writing paper;
`envelopes; pens; pencils; non-electric erasers; plastic sandwich bags; general feature magazines;
`and magazines featuring food, lifestyles and a wide variety of consumer goods
`Class 035.
`All goods and services in the class are opposed, namely: Retail store services featuring a wide
`variety of consumer goods; Retail store services featuring pre-paid telephone cards and gift cards,
`magnetically encoded and not magnetically encoded, clothing, food, beverages and groceries; Retail
`store services, available through computer communications and interactive television, featuring a
`wide variety of consumer goods, pre-paid telephone cards and gift cards, magnetically encoded and
`
`

`
`not magnetically encoded, clothing, food, beverages and groceries; supermarkets; retail store
`services featuring a wide variety of consumer goods of others; retail variety stores; retail store
`services featuring telecommunications service plans and telecommunications service activation;
`subscription to a telephone service; subscription to a computer service, namely, the Internet;
`promoting the sale of credit card accounts through the administration of incentive award programs;
`promoting the sale of goods and services of others by awarding purchase points for credit card use;
`promotion of financial and insurance services, on behalf of third parties
`Class 036.
`All goods and services in the class are opposed, namely: Insurance agencies in the field of home,
`accident, life, health and car; financial Services, namely, banking, credit, mortgage, investment, loan,
`estate, savings programs; assisting others with the completion of financial transactions for stocks,
`bonds, securities and equities; credit card services; prepaid telecommunications calling card
`services; telephone calling card services; wireless telephone payment services, namely, wireless
`mobile telephone rate plans; financial services, namely, money lending; savings account services;
`savings and loan services; banking services; administration of savings accounts; financial services,
`namely, savings programs; cash card services; issuing credit cards; insurance administration;
`insurance carrier services; and insurance services, namely, writing property and casualty insurance
`Class 038.
`All goods and services in the class are opposed, namely: providing access to telecommunication
`networks; providing telecommunications connections to a global computer network; providing third
`party users with access to telecommunication infrastructure; wireless telephone telecommunications
`services, namely, wireless mobile telephone calling plans; cellular telephone services; international
`telephone services; interstate telephone services; intrastate telephone services; local and long
`distance telephone services; prepaid long distance telephone services; Internet service provider
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`1078312
`
`11/29/1977
`
`Application Date
`
`03/25/1977
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`APPLE
`
`NONE
`
`Class 009. First use: First Use: 1976/04/00 First Use In Commerce: 1976/04/00
`COMPUTERS AND COMPUTER PROGRAMS RECORDED ON PAPER AND
`TAPE
`
`U.S. Registration
`No.
`Registration Date
`
`1114431
`
`03/06/1979
`
`Word Mark
`
`NONE
`
`Application Date
`
`03/20/1978
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`THE MARK CONSISTS OF A SILHOUETTE OF AN APPLE WITH A BITE
`REMOVED.
`Class 009. First use: First Use: 1977/01/00 First Use In Commerce: 1977/01/00
`COMPUTERS AND COMPUTER PROGRAMS RECORDED ON PAPER AND
`TAPE
`
`U.S. Registration
`No.
`Registration Date
`
`1895326
`
`05/23/1995
`
`Application Date
`
`05/23/1994
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`APPLE
`
`NONE
`
`Class 036. First use: First Use: 1983/07/00 First Use In Commerce: 1983/07/00
`extension of retail credit services for the purchase of computers and related
`accessories
`
`U.S. Registration
`No.
`Registration Date
`
`2079765
`
`07/15/1997
`
`Application Date
`
`04/07/1995
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`APPLE
`
`NONE
`
`Class 038. First use: First Use: 1994/04/09 First Use In Commerce: 1994/04/09
`communication filed by computer, namely, electronic transmission of data and
`documents via computer, delivery of messages by electronic transmission
`
`U.S. Registration
`No.
`Registration Date
`
`2424976
`
`01/30/2001
`
`Word Mark
`
`THE APPLE STORE
`
`Application Date
`
`11/23/1999
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 1997/11/00 First Use In Commerce: 1997/11/00
`online retail store services provided via a global computer network featuring
`computers, computer hardware, computer systems, computer software,
`computer peripherals and accessories
`
`U.S. Registration
`No.
`Registration Date
`
`2462798
`
`06/19/2001
`
`Word Mark
`Design Mark
`
`APPLE STORE
`
`Application Date
`
`11/23/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 1997/11/01 First Use In Commerce: 1997/11/01
`online retail store services provided via a global computer network featuring
`computers, computer hardware, computer systems, computer software,
`computer peripherals and accessories
`
`U.S. Registration
`No.
`Registration Date
`
`2683410
`
`02/04/2003
`
`Word Mark
`Design Mark
`
`APPLE STORE
`
`Application Date
`
`04/25/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 1997/11/01 First Use In Commerce: 1997/11/01
`Retail store services featuring computers, computer software, computer
`peripherals and consumer electronics, and demonstration of products relating
`thereto; online retail store services provided via a global computer network
`
`

`
`featuring computers, computer software, computer peripherals and consumer
`electronics, and demonstration of products relating thereto
`
`U.S. Registration
`No.
`Registration Date
`
`2715578
`
`05/13/2003
`
`Word Mark
`Design Mark
`
`NONE
`
`Application Date
`
`07/01/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 1977/01/01 First Use In Commerce: 1977/01/01
`Computers hardware; computer hardware, namely, server, desktop, laptop,
`notebook and subnotebook computers; hand held and mobile computers;
`computer [ terminals and ] monitors; personal digital assistants; portable digital
`audio players; electronic organizers; computer keyboards, cables, modems;
`audio speakers; computer video control devices, namely, computer mice, [
`trackballs, joysticks and gamepads; ] a full line of computer software for
`business, home, education, and developer use; computer programs for personal
`information management; database management software; [ character
`recognition software; telephony management software; ] electronic mail and
`messaging software; [ telecommunications software, namely for paging; ]
`database synchronization software; computer programs for accessing, browsing
`and searching online databases; operating system software; application
`development tool programs; blank computer storage media; fonts, typefaces,
`type designs and symbols recorded on magnetic media; 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 software for use as a programming interface;
`computer software for use in network server sharing; local and wide area
`networking software; computer software for matching, correction, and
`reproduction of color; computer software for use in digital video and audio
`editing; computer software for use in enhancing text and graphics; computer
`software for use in font justification and font quality; computer software for use to
`navigate and search a global computer information network, as well as to
`organize and summarize the information retrieved; computer software for use in
`word processing and database management; word processing software
`incorporating text, spreadsheets, still and moving images, sounds and clip art;
`computer software for use in authoring, downloading, transmitting, receiving,
`editing, extracting, encoding, decoding, playing, storing and organizing audio,
`video, still images and other digital data; computer software for analyzing and
`troubleshooting other computer software; children's educational software;
`computer game software; Computer graphics software; [ Computer search
`engine software; ] Web site development software; computer program which
`provides remote viewing, remote control, communications and software
`distribution within personal computer systems and across computer network;
`
`

`
`computer programs for file maintenance and data recovery; computer
`peripherals; instructional manuals packaged in association with the above
`
`U.S. Registration
`No.
`Registration Date
`
`2753069
`
`08/19/2003
`
`Word Mark
`Design Mark
`
`NONE
`
`Application Date
`
`07/23/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of the design of an apple with a bite removed.
`
`Class 042. First use: First Use: 1980/09/00 First Use In Commerce: 1980/09/00
`Application service provider (ASP), namely, hosting computer software
`applications of others; computer services, namely, displaying the web sites and
`images of others on a computer server; computer diagnostic services;
`installation of computer software; updating of computer software; maintenance
`of computer software; computer hardware development; integration of computer
`systems and networks; monitoring the computer systems of others for technical
`purposes and providing back-up computer programs and facilities; computer
`consultation, design, and testing services; consulting services in the field of
`design, selection, implementation and use of computer hardware and software
`systems for others; computer data recovery; computer programming for others;
`research and development of computer hardware and software; website design,
`creation and hosting services; computer services, namely, designing and
`implementing web sites for others; computer services, namely, providing search
`engines for obtaining data on a global computer network; providing use of on-
`line non-downloadable software for communications via local or global
`communications networks, including the Internet, intranets, and extranets;
`computer consultation, namely, analyzing data to detect, eradicate, and prevent
`the occurrence of computer viruses; computer consultation, namely, services
`relating to the protection of computer hardware, computer software, computer
`networks and computer systems against computer viruses, attacks, or failures;
`computer consultation, namely, services for optimizing the performance and
`functionality of computer software and communications networks; technical
`support services, namely, troubleshooting of computers, computer software,
`telecommunications, and the Internet systems; leasing of computers, computer
`peripherals and computer software; leasing computer facilities; providing
`information in a wide variety of fields over computer networks and global
`communication networks; computer services, namely, creating indexes of
`information, web sites and other information sources available on computer
`networks; providing information concerning a wide range of text, electronic
`documents, databases, graphics and audiovisual information
`
`U.S. Registration
`No.
`Registration Date
`
`2808567
`
`01/27/2004
`
`Application Date
`
`10/02/2002
`
`Foreign Priority
`
`NONE
`
`

`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`Date
`
`APPLE
`
`NONE
`
`Class 042. First use: First Use: 1980/09/00 First Use In Commerce: 1980/09/00
`COMPUTER CONSULTATION, DESIGN, TESTING, RESEARCH AND
`ADVISORY SERVICES; RESEARCH AND DEVELOPMENT OF COMPUTER
`HARDWARE AND SOFTWARE; MAINTENANCE AND REPAIR OF
`COMPUTER SOFTWARE APPLICATIONS; UPDATING OF COMPUTER
`SOFTWARE; COMPUTER PROGRAMMING SERVICES; PROVIDING
`INFORMATION CONCERNING COMPUTERS AND COMPUTER SOFTWARE
`OVER COMPUTER NETWORKS AND GLOBAL COMMUNICATION
`NETWORKS; COMPUTER SERVICES, NAMELY, HOSTING WEB SITES AND
`PROVIDING WEB SITE OPERATION AND MANAGEMENT SERVICES TO
`OTHERS; COMPUTER SERVICES, NAMELY, PROVIDING SEARCH
`ENGINES FOR OBTAINING DATA ON COMPUTER NETWORKS AND
`GLOBAL COMMUNICATION NETWORKS; LEASING OF COMPUTERS,
`COMPUTER PERIPHERALS AND COMPUTER SOFTWARE
`
`U.S. Registration
`No.
`Registration Date
`
`2820066
`
`03/02/2004
`
`Word Mark
`Design Mark
`
`NONE
`
`Application Date
`
`05/29/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of the design of an apple with a bite removed.
`
`Class 036. First use: First Use: 1983/07/00 First Use In Commerce: 1983/07/00
`Consumer lending services; retail credit services; retail credit services for the
`purchase of computers, computer software, consumer electronics and related
`accessories; providing information in the fields of investment and finance over
`computer networks and global communication networks; financial services,
`namely, installment loans, lease-purchase financing and loans, and loan
`financing
`
`U.S. Registration
`No.
`Registration Date
`
`2870477
`
`08/03/2004
`
`Word Mark
`
`NONE
`
`Application Date
`
`08/22/2002
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of the design of an apple with a bite removed.
`
`Class 038. First use: First Use: 1994/04/09 First Use In Commerce: 1994/04/09
`Telecommunication services, namely, electronic transmission of data and
`images via computer networks; electronic mail services; providing on-line
`electronic bulletin boards for transmission of messages among computer users
`in the fields of business, creative design, education, computers, information
`technology, word processing, database management, entertainment, electronic
`commerce and telecommunications; telecommunications consultation; delivery
`of messages by electronic transmission; electronic transmission of data and
`information by computer, radio, mail, providing Internet access
`
`U.S. Registration
`No.
`Registration Date
`
`2926853
`
`02/15/2005
`
`Word Mark
`Design Mark
`
`NONE
`
`Application Date
`
`08/16/2002
`
`Foreign Priority
`Date
`
`02/26/2002
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of the design of an apple with a bite removed.
`
`Class 035. First use: First Use: 1983/00/00 First Use In Commerce: 1983/00/00
`analysis and consultation in the field of business information management,
`namely, the selection, adoption and operation of computers and computer
`information management systems; providing information in the fields of business
`and commerce over computer networks and global communication networks;
`business services, namely, providing computer databases regarding the
`purchase and sale of a wide variety of products and services of others; business
`services, namely, dissemination of advertising for others via computer networks
`and global communication networks; retail store services featuring computers,
`computer software, computer peripherals and consumer electronics, and
`demonstration of products relating thereto; online retail store services provided
`via computer networks and global communication networks featuring computers,
`computer software, computer peripherals and consumer electronics, and
`
`

`
`demonstration of products relating thereto
`Class 039. First use: First Use: 1985/00/00 First Use In Commerce: 1985/00/00
`computerized data storage services; data storage relating to business
`
`U.S. Registration
`No.
`Registration Date
`
`3084491
`
`04/25/2006
`
`Word Mark
`Design Mark
`
`NONE
`
`Application Date
`
`04/26/2004
`
`Foreign Priority
`Date
`
`11/04/2003
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use:
`electronic apparatus and software therefor for downloading, transmitting,
`receiving, playing, storing and organizing audio, video and navigation data for
`use in automobiles, railway cars and engines, ships and planes; sound effect
`generators and instruments comprised of computer hardware and software
`Class 012. First use:
`automobiles
`Class 015. First use:
`Electric and electronic musical instruments; musical instruments adapted to
`programmed system sequences; electronic pianos, electronic keyboard
`instruments; electric or electronic percussion or drum systems comprised of
`computer hardware and software; music and sound synthesizers; electronic tone
`generators; musical instruments controlled by computer software
`
`U.S. Registration
`No.
`Registration Date
`
`3298028
`
`09/25/2007
`
`Word Mark
`Design Mark
`
`NONE
`
`Application Date
`
`08/02/2006
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 1981/03/01 First Use In Commerce: 1981/03/01
`Arranging and conducting trade shows, and trade show expositions and
`exhibitions in the fields of computers, computer software, online services,
`information technology, and consumer electronics
`Class 041. First use: First Use: 1981/03/01 First Use In Commerce: 1981/03/01
`Education and training services, namely, conducting classes, workshops,
`conferences and seminars in the field of computers, computer software, online
`services, information technology, internet website design, video products and
`consumer electronics; arranging of exhibitions, seminars and conferences;
`arranging professional workshop and training courses; computer education
`training services; training in the use and operation of computers and computer
`software; providing a website for the uploading, sharing, viewing and posting of
`photographs, digital images, movies, videos, online journals, namely web blogs
`in general interest fields, and other related multimedia entertainment materials
`over a global computer network; providing fitness and exercise facilities;
`Physical fitness consultation and instruction; providing on-line publications in the
`nature of newsletters in the field of computers and education; providing
`information in the field of education via the internet; providing information in the
`field of entertainment via the Internet concerning movies, music, videos,
`television, celebrities, sports, news, history, science, politics, comedy, children's
`entertainment, animation, culture, current events
`
`U.S. Registration
`No.
`Registration Date
`
`3317089
`
`10/23/2007
`
`Word Mark
`Design Mark
`
`APPLE
`
`Application Date
`
`06/04/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use:
`Musical sound records; sound records featuring entertainment; sound records
`featuring music, musicians, documentaries, biographies, interviews,
`performances, reviews, drama and fiction; musical video records; video records
`featuring entertainment; video records featuring music, musicians, caricatures,
`cartoons, animation, documentaries, biographies, interviews, performances,
`reviews, drama and fiction; cinematographic films; musical sound recordings;
`musical video recordings; audio and visual recordings featuring or relating to
`music, entertainment and films; pre-recorded compact discs, audio tapes,
`gramophone records, video tapes, video discs, DVDs, CD-ROMs and interactive
`compact discs, all featuring or relating to music and films; digitally recorded
`sound and video records; downloadable musical sound and video records;
`downloadable sound and video records featuring or relating to music,
`
`

`
`entertainment and films
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`3359045
`
`12/25/2007
`
`APPLE TV
`
`Application Date
`
`04/09/2007
`
`Foreign Priority
`Date
`
`11/13/2006
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2007/03/21 First Use In Commerce: 2007/03/21
`Computer hardware; computer networking hardware; set top boxes; digital
`electronic devices for recording, organizing, transmitting, receiving,
`manipulating, playing and reviewing text, data, image, audio and video files;
`computer software for use in organizing, transmitting, receiving, manipulating,
`playing and reviewing text, data, image, audio, and video files; computer
`hardware and computer software for the reproduction, processing and streaming
`of audio, video and multimedia content; computer hardware and software for
`controlling the operation of audio and video devices and for viewing, searching
`and/or playing audio, video, television, movies, photographs and other digital
`images, and other multimedia content
`
`U.S. Registration
`No.
`Registration Date
`
`3679056
`
`09/08/2009
`
`Word Mark
`Design Mark
`
`NONE
`
`Application Date
`
`01/13/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of the design of an apple with a bite removed.
`
`Class 009. First use: First Use: 1977/01/31 First Use In Commerce: 1977/01/31
`Computers; computer hardware; computer peripherals; handheld computers;
`handheld mobile digital electronic devices for recording, organizing, transmitting,
`
`

`
`manipulating, and reviewing text, data, image, audio, and audiovisual files, for
`the sending and receiving of telephone calls, electronic mail, and other digital
`data, for use as a digital format audio player, handheld computer, personal
`digital assistant, electronic organizer, electronic notepad, camera, and global
`positioning system (GPS) electronic navigation device; digital audio and video
`recorders and players; personal digital assistants; electronic organizers;
`cameras; telephones; mobile phones; satellite navigational systems, namely,
`global positioning systems (GPS); electronic navigational devices, namely,
`global positioning satellite (GPS) based navigation receivers; computer game
`machines for use with external display screens, monitors, or televisions; a full
`line of accessories and parts for the aforementioned goods; stands, covers,
`cases, holsters, power adaptors, and wired and wireless remote controls for the
`aforementioned goods; computer memory hardware; computer disc drives;
`optical disc drives; computer networking hardware; computer monitors; flat panel
`display monitors; computer keyboards; computer cables; modems; computer
`mice; electronic docking stations; set top boxes; batteries; battery chargers;
`electrical connectors, wires, cables, and adaptors; devices for hands-free use;
`headphones; earphones; ear buds; audio speakers; microphones; and
`headsets; a full line of computer software for business, home, education, and
`developer use; user manuals for use with, and sold as a unit with, the
`aforementioned goods; downloadable audio and video files, movies, ring tones,
`video games, television programs, pod casts and audio books via the internet
`and wireless devices featuring music, movies, videos, television, celebrities,
`sports, news, history, science, politics, comedy, children's entertainment,
`animation, culture, current events and topics of general interest
`
`U.S. Registration
`No.
`Registration Date
`
`3710912
`
`11/17/2009
`
`Word Mark
`Design Mark
`
`APPLE STORE
`
`Application Date
`
`02/04/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 037. First use: First Use: 2001/05/19 First Use In Commerce: 2001/05/19
`Maintenance, installation and repair of computer hardware, computer
`peripherals and consumer electronic devices
`Class 038. First use: First Use: 2007/06/29 First Use In Commerce: 2007/06/29
`Technical consulting in the field of consumer electronics, namely, telephones,
`cellular telephones and wireless telecommunications devices; consulting
`services in the field of selection, implementation and use of consumer electronic
`systems for others, namely, telecommunications systems featuring telephones,
`cellular telephones and wireless telecommunications devices
`Class 041. First use: First Use: 2001/05/19 First Use In Commerce: 2001/05/19
`Education and training services, namely, conducting classes, workshops, and
`
`

`
`seminars in the field of computers, computer software, online services,
`information technology, internet website design, music, photography and video
`products and consumer electronics; arranging professional workshop and
`training courses; computer education training services; training in the use and
`operation of computers, computer software and consumer electronics;
`entertainment services, namely, providing a facility for live concerts and special
`events in the nature of live musical performances; technical consulting in the
`field of consumer electronics, namely, audio, audiovisual and home and portable
`entertainment systems and devices; consulting services in the field of selection,
`implementation and use of computer hardware, computer software and
`consumer electronic systems for others, namely, audio, audiovisual and home
`and portable entertainment systems and devices
`Class 042. First use: First Use: 2001/05/19 First Use In Commerce: 2001/05/19
`Technical support services, namely, troubleshooting computer hardware,
`computer peripheral, computer software and consumer electronic devices;
`installation, updating, maintenance and repair of computer software; technical
`consulting in the field of computers and computer-based consumer electronics;
`computer and consumer electronic diagnostic services; consulting services in
`the field of selection, implementation and use of computer hardware, computer
`software and computer-based consumer electronic systems for others; computer
`data recovery; consulting services in the field of selection, implementation and
`use of computer hardware and computer software for the operation of consumer
`electronic systems for others in the nature of audio, audiovisual and home and
`portable entertainment systems and devices
`
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`Apple v. Tesco Stores- NOO with Exhibits[5-3-10].pdf ( 96 pages )(17213669
`bytes )
`
`Certificate of Service
`
`Attachments
`
`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
`
`/Alicia Grahn Jones/
`Alicia Grahn Jones
`05/03/2010
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the Matter of Application Serial No. 77/079,913
`For the mark: FRESH & EASY and Design
`
`
`
`
`
`Filed: January 10, 2007
`Published: November 3, 2009
`
`
`
`---------------------------------------------------------X
`
`APPLE INC.,
`
`:
`
`
`: Opposition No.
`
`:
`
`
`:
`: NOTICE OF OPPOSITION
`:
`
`
`Opposer,
`
`
`
`
`
`
`::
`
`:
`
`
` v.
`
`
`
`TESCO STORES LTD.,
`
`
`
`
`Applicant.
`---------------------------------------------------------X
`
`APPLE INC. (“Opposer” or “Apple”), a corporation organized and existing under the
`
`
`
`laws of California with a principal place of business at 1 Infinite Loop, Cupertino, California
`
`95014, believes that it will be damaged by the issuance of a registration for the trademark shown
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`in Application Serial No. 77/079,913 for certain goods and services in Classes 9, 16, 35, 36, and
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`38, and hereby opposes the same.
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`
`
`As grounds for its opposition, Opposer alleges as follows, with knowledge concerning its
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`own acts, and on information and belief as to all other matters:
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`1.
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`Opposer is the world-famous designer, manufacturer and distributor of a wide
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`variety of goods and services, and Opposer’s APPLE brand is one of the best known brands in
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`the world. Opposer designs, manufactures and/or markets in interstate and international
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`1
`
`
`
`

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`commerce, among many other things, personal computers, portable digital music players, mobile
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`communication devices and applications for use thereon, and a variety of related software,
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`services, peripherals and networking solutions.
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`2.
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`Since at least as early as 1977, Opposer has extensively promoted, marketed,
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`advertised, distributed and sold goods and services in connection with a family of trademarks
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`consisting, in whole or in part, of the word APPLE and a visual equivalent of the word, to wit a
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`logo depicting a stylized apple, as shown below:
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`(the “Apple Logo”).
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`
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`3.
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`Opposer’s family of APPLE-based word marks and its Apple Logo (collectively,
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`“Opposer’s Marks”) have achieved an extraordinary level of fame and consumer recognition. As
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`a result of Opposer’s extensive advertising, promotion and use of Opposer’s Marks in connection
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`with a variety of goods and services, Opposer’s Marks have acquired enormous goodwill, and
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`have come to be identified immediately with Opposer as the source of goods and services.
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`4.
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`Opposer’s Marks are famous under the Lanham Act, specifically 15 U.S.C.
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`§ 1125 et seq., and are among the most valuable trademarks in the world. The extraordinary
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`level of fame and consumer recognition that Opposer’s Marks currently enjoy cannot be
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`seriously disputed.
`
`5.
`
`For many years, Opposer’s APPLE brand (including the Apple Logo) has
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`consistently been recognized as one of the top brands in the United States and throughout the
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`world. For example, Harris Interactive Inc., one of the world’s largest market research firms,
`
`2
`
`
`
`

`
`found Opposer’s APPLE brand to be one of the 10 most recognized brands in the United States
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`in its 2006 and 2007 Harris Polls of “best brands,” which are based upon consumer responses.
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`Attached as Exhibit 1 is a printout of The Harris Poll #71, July 17, 2007 of “Best Brands.”
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`6.
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`In addition, Interbrand has consistently recognized Opposer’s APPLE brand as
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`belonging in the top 50 of the world’s most valuable brands. Attached as Exhibit 2 are copies of
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`the rankings, in reverse chronological order from 2009 through 2001, as compiled by Interbrand.
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`Interbrand has given the APPLE brand the following rankings and U.S. dollar values over the
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`past eight years:
`
`i.
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`ii.
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`iii.
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`iv.
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`v.
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`vi.
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`vii.
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`viii.
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`ix.
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`2009: valuing the APPLE brand as the 20th most valuable brand in the entire
`world, with an estimated brand worth of U.S. $15.433 billion.
`
`2008: valuing the APPLE brand as the 24th most valuable brand in the entire
`world, with an estimated brand worth of U.S. $13.724 billion.
`
`2007: valuing the APPLE brand as the 33rd most valuable brand in the entire
`world, with an estimated brand worth of U.S. $11.037 billion.
`
`2006: valuing the APPLE brand as the 39th most valuable brand in the entire
`world, with an estimated brand worth of U.S. $9.130 billion.
`
`2005: valuing the APPLE brand as the 41st most valuable brand in the entire
`world, with an estimated bra