UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
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` Mailed: December 7, 2011
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` Opposition No. 91197815
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`Apple Inc.
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`v.
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`Tesco Stores Ltd.
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`vw/al
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`On October 28, 2011, applicant filed a proposed amendment
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`to its application Serial No. 77044437, with opposer's written
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`consent, and opposer's withdrawal without prejudice of the
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`opposition, contingent upon entry of the amendment. By the
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`proposed amendment, applicant seeks to delete the goods and
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`services in International Classes 9 and 38 in their entirety
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`and change the identification of goods and services in
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`International Classes 16, 35 and 36 only as follows:
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`International Class 16
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`from:1
`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
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`1 Underlined portions of original identification signify terms deleted.
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`

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`Opposition No. 91197815
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`magazines; and magazines featuring food, lifestyles and a
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`wide variety of consumer goods.
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`to:
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`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.
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`International Class 35
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`from:
`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.
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`to:
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`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
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`2
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`Opposition No. 91197815
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`variety stores; 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.
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`International Class 36
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`from:
`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
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`to:
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`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; 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
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`The identification of goods in classes 3, 5, 8, 21, 25, 29,
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`30, 31, 32 and 41 remains unchanged.
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`Upon consideration of the proposed amendment to the
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`identification of the goods and services in International
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`3
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`Opposition No. 91197815
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`Classes 16, 35 and 36, the Board finds that the amendment is
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`clearly limiting in nature as required by Trademark Rule
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`2.71(b), and because opposer consents thereto, it is approved
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`and entered. See Trademark Rule 2.133(a).
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`With regard to the goods and services in International
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`Classes 9 and 38, applicant seeks to delete International
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`Classes 9 and 38 in its entirety. In an opposition to an
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`application having multiple classes, if the applicant files a
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`request to amend the application to delete an opposed class,
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`the request for amendment is, in effect, an abandonment of
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`the application with respect to that class, and is governed
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`by Trademark Rule 2.135. In view thereof, and because
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`opposer consents thereto, application Serial No. 77044437
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`stands abandoned with respect to International Classes 9
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`and 38.
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`The contingency in opposer's withdrawal having now been
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`met, the opposition is dismissed without prejudice.
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`By the Trademark Trial
`and Appeal Board
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`4