Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA357472
`ESTTA Tracking number:
`07/12/2010
`
`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.
`07/11/2010
`
`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@kilpatrickstockton.com, JPeterse@kilpatrickstockton.com,
`agarcia@kilpatrickstockton.com, NYTrademarks@kilpatrickstockton.com
`Phone:212-775-8700
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`77779673
`07/12/2010
`
`Publication date
`Opposition
`Period Ends
`
`01/12/2010
`07/11/2010
`
`Affinity Labs Inc.
`799 Market Street, Suite 500
`San Francisco, CA 94103
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 035. First Use: 2002/06/30 First Use In Commerce: 2002/06/30
`All goods and services in the class are opposed, namely: Providing news and information on job
`opportunities and career counseling
`Class 041. First Use: 2009/06/30 First Use In Commerce: 2009/06/30
`All goods and services in the class are opposed, namely: Providing news and information on matters
`of interest to persons in the field of education
`Class 045. First Use: 2002/06/30 First Use In Commerce: 2002/06/30
`All goods and services in the class are opposed, namely: Providing online social networking services
`to those in the field of education
`
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`
`77779664
`07/12/2010
`
`Publication date
`Opposition
`Period Ends
`
`01/12/2010
`
`

`
`Applicant
`
`Affinity Labs Inc.
`799 Market Street, Suite 500
`San Francisco, CA 94103
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 035. First Use: 2002/06/30 First Use In Commerce: 2002/06/30
`All goods and services in the class are opposed, namely: Providing news and information on job
`opportunities and career counseling
`Class 041. First Use: 2002/06/30 First Use In Commerce: 2002/06/30
`All goods and services in the class are opposed, namely: Providing news and information on matters
`of interest to persons in the field of education
`Class 045. First Use: 2002/06/30 First Use In Commerce: 2002/06/30
`All goods and services in the class are opposed, namely: Providing online social networking services
`to those in the field of education
`
`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
`
`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
`Design Mark
`
`NONE
`
`Application Date
`
`03/20/1978
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`THE MARK CONSISTS OF A SILHOUETTE OF AN APPLE WITH A BITE
`REMOVED.
`
`

`
`Goods/Services
`
`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
`Design Mark
`
`THE APPLE STORE
`
`Application Date
`
`11/23/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 1997/11/00 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
`
`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: 1997/11/01 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
`
`NONE
`
`Application Date
`
`07/01/2002
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`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
`
`2808567
`
`01/27/2004
`
`Word Mark
`
`APPLE
`
`Application Date
`
`10/02/2002
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`Description of
`Mark
`Goods/Services
`
`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
`
`3108652
`
`06/27/2006
`
`Word Mark
`Design Mark
`
`NONE
`
`Application Date
`
`04/27/2004
`
`Foreign Priority
`Date
`
`11/04/2003
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of a design of an apple with a bite removed.
`
`Class 045. First use: First Use: 2000/01/05 First Use In Commerce: 2000/01/05
`(Based on Use in Commerce) providing a selection of on-line electronic greeting
`cards; (Based on 44(e)) computer dating services; providing a selection on-line
`electronic greeting cards
`
`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
`
`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
`
`

`
`Attachments
`
`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
`
`73162799#TMSN.jpeg ( 1 page )( bytes )
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`78943482#TMSN.jpeg ( 1 page )( bytes )
`77388365#TMSN.jpeg ( 1 page )( bytes )
`2010-7-12- Notice of Opposition-without Exh.[Apple v. Affinity Labs].pdf ( 15
`pages )(71033 bytes )
`2010-7-12- Exhibits 1-6 to NOO [Apple v. Affinity Labs].pdf ( 71 pages
`)(15288038 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
`
`/Alicia Grahn Jones/
`Alicia Grahn Jones
`07/12/2010
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the Matter of Application Serial No. 77/779,673
`For the mark: THEAPPLE & Design
`
`
`
`Filed: July 13, 2009
`Published: January 12, 2010
`
`and
`
`In the Matter of Application Serial No. 77/779,664
`For the mark: THEAPPLE
`Filed: July 13, 2009
`Published: January 12, 2010
`
`
`Opposer,
`
`
` v.
`
`
`---------------------------------------------------------X
`
`APPLE INC.,
`
`:
`
`
`: Opposition No.
`
`:
`
`
`:
`: CONSOLIDATED NOTICE OF
`OPPOSITION
`
`
`:
`
`
`
`
`:::::
`
`
`AFFINITY LABS, INC.
`
`
`
`
`
`
`
`
`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 registrations for the trademarks shown
`
`in Application Serial Nos. 77/779,673 and 77/779,664 for certain services in Classes 35, 41, and
`
`45 and hereby opposes the same.
`
`1
`
`
`
`

`
`
`
`As grounds for its opposition, Opposer alleges as follows, with knowledge concerning its
`
`own acts, and on information and belief as to all other matters:
`
`1.
`
`Opposer is the world-famous designer, manufacturer and distributor of a wide
`
`variety of goods and services, and Opposer’s APPLE brand is one of the best known brands in
`
`the world. Opposer designs, manufactures and/or markets in interstate and international
`
`commerce, among many other things, personal computers, portable digital music players, mobile
`
`communication devices and applications for use thereon, and a variety of related software,
`
`services, peripherals and networking solutions.
`
`2.
`
`Since at least as early as 1977, Opposer has extensively promoted, marketed,
`
`advertised, distributed and sold goods and services in connection with a family of trademarks
`
`consisting, in whole or in part, of the word APPLE and a visual equivalent of the word, to wit a
`
`logo depicting a stylized apple, as shown below:
`
`(the “Apple Logo”).
`
`
`
`3.
`
`Opposer’s family of APPLE-based word marks and its Apple Logo (collectively,
`
`the “Apple Marks”) have achieved an extraordinary level of fame and consumer recognition. As
`
`a result of Opposer’s extensive advertising, promotion and use of the Apple Marks in connection
`
`with a variety of goods and services, the Apple Marks have acquired enormous goodwill, and
`
`have come to be identified immediately with Opposer as the source of goods and services.
`
`4.
`
`The Apple Marks are famous under the Lanham Act, specifically 15 U.S.C.
`
`§ 1125 et seq., and are among the most valuable trademarks in the world. The extraordinary
`
`2
`
`
`
`

`
`level of fame and consumer recognition that the Apple Marks currently enjoy cannot be seriously
`
`disputed.
`
`5.
`
`For many years, Opposer’s APPLE brand (including the Apple Logo) has
`
`consistently been recognized as one of the top brands in the United States and throughout the
`
`world. For example, Harris Interactive Inc., one of the world’s largest market research firms,
`
`found Opposer’s APPLE brand to be one of the 10 most recognized brands in the United States
`
`in its 2006 and 2007 Harris Polls of “best brands,” which are based upon consumer responses.
`
`Attached as Exhibit 1 is a printout of The Harris Poll #71, July 17, 2007 of “Best Brands.”
`
`6.
`
`In addition, Interbrand has consistently recognized Opposer’s APPLE brand as
`
`belonging in the top 50 of the world’s most valuable brands. Attached as Exhibit 2 are copies of
`
`the rankings, in reverse chronological order from 2009 through 2001, as compiled by Interbrand.
`
`Interbrand has given the APPLE brand the following rankings and U.S. dollar values over the
`
`past eight years:
`
`i.
`
`ii.
`
`iii.
`
`iv.
`
`v.
`
`vi.
`
`vii.
`
`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 brand worth of U.S. $7.985 billion.
`
`2004: valuing the APPLE brand as the 43rd most valuable brand in the entire
`world, with an estimated brand worth of U.S. $6.871 billion.
`
`2003: valuing the APPLE brand as the 50th most valuable brand in the entire
`world, with an estimated brand worth of U.S. $5.55 billion.
`
`3
`
`
`
`

`
`viii.
`
`ix.
`
`2002: valuing the APPLE brand as the 50th most valuable brand in the entire
`world, with an estimated brand worth of U.S. $5.32 billion.
`
`2001: valuing the APPLE brand as the 49th most valuable brand in the entire
`world, with an estimated brand worth of U.S. $5.46 billion.
`
`7.
`
`Furthermore, over the past four years, Millward Brown Optimor (“MBO”), a
`
`
`
`leading market research and brand valuation and management company, has found APPLE to be
`
`one of the top 100 brands in its annual assessment of the 100 most valuable brands in the world,
`
`entitled “Brandz – Top 100 Brand Rankings.” Opposer’s APPLE brand was ranked 29th in
`
`2006, 16th in 2007, and 7th in MBO’s 2008 rankings. In MBO’s 2009 rankings, Opposer’s
`
`APPLE brand was assessed as the 6th most valuable brand in the world, with an estimated value
`
`of over US $63 billion. Attached as Exhibit 3 are copies of relevant pages of MBO’s rankings
`
`in reverse chronological order from 2009 through 2006.
`
`8.
`
`Additionally, each year since 2006, Fortune Magazine has published its list of
`
`“Most Admired Companies.” Apple has featured prominently in these rankings each year, and in
`
`both 2010 and 2009 was named the “World’s Most Admired Company” for the year. Prior to
`
`2009, Fortune’s list was limited to “America’s Most Admired Companies,” and Apple also
`
`topped this list in 2008, and placed 7th in 2007 and 11th in 2006. Attached as Exhibit 4 are true
`
`and correct copies of printouts of Fortune Magazine’s “Most Admired Company” rankings in
`
`reverse chronological order from 2010 through 2006.
`
`9.
`
`Moreover, in 2010, 2009, 2008 and 2006, Business Week magazine named Apple
`
`as the world’s most innovative company in its article on “The World’s Most Innovative
`
`Companies.” Attached as Exhibit 5 are true and correct printouts from Business Week’s web site
`
`naming Apple as the world’s most innovative company in 2010, 2009, 2008 and 2006.
`
`10.
`
`For decades, Opposer has extensively used the Apple Marks in connection with
`
`goods and services in the field of education. Opposer has made an enormous commitment to
`
`4
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`

`
`inspiring children and their educators through its various Apple Education programs, as detailed
`
`on its website at www.apple.com/education. For example, Opposer offers a variety of
`
`educational services online, including online seminars and tutorials, such as tutorials on how
`
`educators can electronically share lesson plans with students and electronically manage
`
`classroom workflow. Opposer also offers a variety of software, programs, and applications for
`
`educators and students of every level from elementary to post-secondary school education.
`
`Opposer also offers technology for educators of and students with cognitive disabilities. By way
`
`of example, the MAC is equipped with Text-to-Speech (TTS) technology that can speak a
`
`selection of text or an entire document aloud. Opposer also offers a wide variety of computers
`
`and hardware for educators, such as the MAC computer, IPHONE, IPAD, and mobile Learning
`
`Labs for Opposer’s computers and devices. These are just a few examples of Opposer’s
`
`extensive goods and services in the field of education that are offered under the Apple Marks.
`
`As a result of Opposer’s longstanding use of the Apple Marks in connection with educational
`
`goods and services, the Apple Marks have become symbolic of the extensive goodwill and
`
`recognition enjoyed by Apple in the eyes of its consumers, including educators and students.
`
`11.
`
`Opposer is the owner of numerous United States Registrations on the Principal
`
`Register for the Apple Marks, including, without limitation, the following registrations:
`
`TRADEMARK
`
`REG. NO.
`
`APPLE
`
`1,078,312
`
`FILING DATE/
`REG. DATE
`March 25, 1977
`Nov. 29, 1977
`
`March 20, 1978
`March 6, 1979
`
`GOODS/SERVICES (FIRST USE)
`Class 9: Computers and computer
`programs recorded on paper and tape
`(April 1976)
`Class 9: Computers and computer
`programs recorded on paper and tape
`(January 1977)
`
`1,114,431
`
`
`
`5
`
`
`
`

`
`GOODS/SERVICES (FIRST USE)
`Class 36: extension of retail credit
`services for the purchase of computers
`and related accessories (July 1983)
`Class 38: communication
`filed by
`computer,
`namely,
`electronic
`transmission of data and documents via
`computer, delivery of messages by
`electronic transmission (April 9, 1994)
`Class 35: online retail store services
`provided via a global computer network
`featuring computers, computer hardware,
`computer systems, computer software,
`computer peripherals and accessories
`(November 1997)
`Class 35: online retail store services
`provided via a global computer network
`featuring computers, computer hardware,
`computer systems, computer software,
`computer peripherals and accessories
`(November 1, 1997)
`Class 35: 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 (November 1,
`1997)
`Class 9: Computers hardware; computer
`hardware, namely,
`server, desktop,
`laptop,
`notebook
`and
`subnotebook
`computers; hand held and mobile
`computers; computer monitors; personal
`digital assistants; portable digital audio
`players; electronic organizers; computer
`keyboards,
`cables, modems;
`audio
`speakers; computer video control devices,
`namely, computer mice, a full line of
`computer software for business, home,
`education, and developer use; computer
`programs
`for
`personal
`information
`management;
`database management
`software; electronic mail and messaging
`software;
`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
`
`TRADEMARK
`
`REG. NO.
`
`APPLE
`
`1,895,326
`
`APPLE
`
`2,079,765
`
`THE APPLE STORE
`
`2,424,976
`
`APPLE STORE
`
`2,462,798
`
`APPLE STORE
`
`2,683,410
`
`FILING DATE/
`REG. DATE
`May 23, 1994
`May 23, 1995
`
`April 7, 1995
`July 15, 1997
`
`November 23, 1999
`January 30, 2001
`
`November 23, 1999
`June 19, 2001
`
`April 25, 2002
`February 4, 2003
`
`July 1, 2002
`May 13, 2003
`
`2,715,578
`
`
`
`6
`
`
`
`

`
`GOODS/SERVICES (FIRST USE)
`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; 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 (January 1,
`1977)
`Class 42: 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
`
`TRADEMARK
`
`REG. NO.
`
`FILING DATE/
`REG. DATE
`
`October 2, 2002
`January 27, 2004
`
`APPLE
`
`2,808,567
`
`7
`
`
`
`

`
`TRADEMARK
`
`REG. NO.
`
`FILING DATE/
`REG. DATE
`
`May 29, 2003
`March 2, 2004
`
`2,820,066
`
`August 22, 2002
`August 3, 2004
`
`2,870,477
`
`2,926,853
`
`August 16, 2002
`February 15, 2005
`
`
`
`
`
`
`
`GOODS/SERVICES (FIRST USE)
`networks and global communication
`networks; computer services, namely,
`hosting web sites and providing web site
`o