Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA421605
`ESTTA Tracking number:
`07/25/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91198009
`Plaintiff
`Acer Incorporated
`ROBERT W SACOFF
`PATTISHALL MCAULIFFE NEWBURY HILLIARD ET AL
`311 S WACKER DRIVE, SUITE 5000
`CHICAGO, IL 60606
`UNITED STATES
`rws@pattishall.com; susan.hollander@klgates.com;
`diane.mason@bullivant.com; smeleen@pirkeybarber.com;
`rweisbein@foley.com; dmb@pattishall.com; felica.
`Other Motions/Papers
`Ian J. Block
`rws@pattishall.com, ijb@pattishall.com
`/Ian Block/
`07/25/2011
`!!! Opposition to Motion to Stay Proceedings -- 2011.07.25.pdf ( 15 pages
`)(968586 bytes )
`0 -- exA.PDF ( 1 page )(11477 bytes )
`0.5 -- Decl. of Britt Anderson ISO Opposition Motion to Stay.pdf ( 2 pages
`)(19742 bytes )
`1 -- ex1.PDF ( 1 page )(8855 bytes )
`2 -- Exhibit 1 Apple v. Samsung Complaint.pdf ( 39 pages )(3770397 bytes )
`3 -- ex2.PDF ( 1 page )(8997 bytes )
`4.1.PDF ( 22 pages )(1964284 bytes )
`4.2.PDF ( 22 pages )(2217203 bytes )
`4.3.PDF ( 20 pages )(1035968 bytes )
`5 -- ex3.PDF ( 1 page )(8921 bytes )
`6 --Exhibit 3 HTC Amended Opp.pdf ( 5 pages )(148166 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`ACER INCORPORATED
`V_
`
`APPLE INC.
`
`HTC CORPORATION
`V_
`
`APPLE INC.
`
`SAMSUNG ELECTRONICS CO., LTD.
`V_
`
`APPLE INC.
`
`DELL INC.
`V,
`
`APPLE INC.
`
`NOKIA CORPORATION
`V.
`
`APPLE INC.
`
`\_/$/§/$/&/\./\_/$/&/"s/$/\2§/\J\J\J\.J\)\2\/\/&/\/\./\/
`
`Opposition Nos. 91 198009 (Parent)
`91 1 9801 5
`
`Opposition Nos. 91198990
`91 199025
`
`Opposition Nos. 91199013
`91 199027
`
`Opposition Nos. 91 198992
`91 199024
`
`Opposition No. 91 199026
`
`OPPOSITION TO OPPOSER SAMSUNG ELECTRONICS CO. LTD.’S
`
`MOTION TO STAY THE PROCEEDINGS
`
`Opposers Acer Incorporated, Dell Inc., HTC Corporation and Nokia Corporation (the
`
`“Anti-Stay Opposers”) oppose Samsung Electronics Co. Ltd.’s (“Samsung”) Motion to Stay the
`
`Proceedings,
`
`filed on July 8, 2011 (“Motion to Stay”).
`
`This brief is supported by the
`
`accompanying declaration of Britt Anderson in Opposition to Samsung’s Motion to Suspend the
`
`Proceedings (the “Anderson Dec1.”).
`
`

`
`OPPOSITION No. 91 198009, ET AL.
`OPPOSITION TO MOTION TO STAY
`
`PRELIMINARY STATEMENT
`
`The recently filed Civil Actionl
`
`in the United States District Court for the Northern
`
`District of California (the “District Court”) on which Samsung bases its Motion to Stay has no
`
`bearing on the two-dimensional design marks opposed herein in Consolidated Opposition No.
`
`91198009 (the “Consolidated Opposition”) and does not provide a basis to stay this proceeding.
`
`First, none of the four Anti-Stay Opposers is a party to the Civil Action. As a
`
`consequence, no Anti-Stay Opposer would be bound by an adjudication by the District Court, no
`
`facts regarding the Anti-Stay Opposers will be decided by the District Court, and no issue
`
`decided by the District Court will have preclusive effect in this proceeding. Furthermore, it
`
`would be fundamentally unfair to the Anti-Stay Opposers to delay determination of their
`
`oppositions indefinitely, awaiting the outcome of a lawsuit between Samsung and Apple Inc.
`
`(“Apple”) to which they are not parties.
`
`Second, App1e’s trademark and trade dress allegations in the Civil Action do not
`
`encompass the design marks in the opposed applications under Serial Nos. 85/040,770 or
`
`85/025,647 (the “Opposed Marks”). Apple has not pled in the Civil Action either of the two-
`
`dimensional design marks at issue in the Consolidated Opposition. Nor does Apple assert in the
`
`Civil Action any product depiction which has meaningful resemblance to either of the Opposed
`
`Marks.
`
`To try to provide the missing nexus, Samsung relies on Apple’s claim of ownership, as
`
`required by the Trademark Rules, of certain prior three-dimensional trademark registrations in
`
`the applications for the Opposed Marks. However, nothing in the Trademark Rules provides that
`
`such a claim is anything more than an administrative requirement to avoid a § 2(d) refusal.
`
`It
`
`certainly does not demonstrate that the same marks are at issue in both the Civil Action and the
`
`Consolidated Opposition.
`
`1 Apple Inc. v. Samsung Electronics C0,, Ltd, Case No. 11-cv—l846, now pending in the
`Northern District of California (the “Civil Action”).
`
`

`
`OPPOSITION NO. 91 198009, ET AL.
`OPPOSITION To MOTION TO STAY
`
`Third,
`
`in addition to material differences in parties and subject matter, the Anti-Stay
`
`Opposers’ claims that the Opposed Marks comprise non-distinctive, descriptive and functional
`
`designs are fundamentally different
`
`from the claims of unfair competition,
`
`trademark
`
`infringement, and dilution advanced in the Civil Action. The Consolidated Opposition involves
`
`Opposers’ claims that Apple is not entitled to registration of the Opposed Marks because that
`
`would interfere with Opposers’ rights to use similar descriptive or functional designs. By
`
`contrast, the Civil Action is concerned with a showing of likelihood of consumer confusion
`
`regarding the source, sponsorship or affiliation of Samsung’s mobile devices.
`
`Based upon the foregoing, the Consolidated Opposition should not be stayed.
`
`I.
`
`FACTUAL BACKGROUND
`
`On or before March 16, 2011, the Opposers under consolidated Opposition No. 91198009
`
`made timely filing of their notices of opposition to the Opposed Marks shown below:2
`
`
`
`
`
`Application Serial No. 85/040,770
`
`Application Serial No. 85/025,647
`
`Each Opposer opposed registration on the grounds that “the involved marks are functional and
`
`that the marks constitute non-distinctive product configurations of one or more products sold by
`
`applicant.”3
`
`2 Opposer Nokia Corporation filed a Notice of Opposition only with respect to Application Serial
`No. 85/040,770, and not Application Serial No. 85/025 ,647.
`
`3 See Board’s May 18, 2011 Order memorializing the May 11, 2011 Telephonic Discovery
`Conference held between the Board and all parties to consolidated Opposition No. 91198009 at
`(“Board’s May 18 Order”).
`
`

`
`OPPOSITION N0. 9 1 198009, ET AL.
`OPPOSITION TO MOTION TO STAY
`
`On April 15, 2011, Apple filed its original complaint in the Civil Action (“Original
`
`Complaint”).4 The Original Complaint described an alleged “Apple Trade Dress” based upon a
`
`set of purportedly non-functional elements associated with Apple’s iPhone,
`
`iPod, and iPad
`
`products and related packaging as well as three federal trademark registrations.5
`
`On May 11, 2011, the Board conducted a meeting among all parties to the Consolidated
`
`Opposition to discuss a plan to facilitate opposition proceedings.6 Based upon party agreement,
`
`the Board ordered consolidation of the oppositions, invited all party plaintiffs, except Samsung,
`
`to amend their oppositions to advance claims identical to Samsung’s, and ordered streamlined
`
`discovery, testimony and brief1ng.7 The Anti-Stay Opposers all filed Amended Notices of
`
`Opposition. Each of the amended Notices of Opposition alleges that the opposer has “a present
`
`and prospective right to use designs similar to Applicant’s Mark for Opposer’s mobile phones
`
`and mobile digital electronics communications devices.”8
`
`On June 16, 2011, Apple filed an amended complaint in the Civil Action (“Amended
`
`Complaint”).9 Like the Original Complaint, the Amended Complaint describes alleged Apple
`
`trade dress based upon a set of purportedly non—functional elements associated with Apple’s
`
`iPhone, iPod, and iPad products and related packaging.” Apple asserts several sets of trade
`
`dress elements with minor variations applicable to Various of its iPhone and iPad product lines.
`
`4 A copy of the Original Complaint (without exhibits) in the Civil Action is attached as Exhibit 1
`to the Anderson Declaration filed herewith.
`
`5 Original Complaint atfi 26-43, Anderson Decl., Exh. 1.
`
`6 See Board’s May 18 Order at 5.
`
`7 Id. at 7-11.
`
`8 See, e. g., First Amended Notice of Opposition, by opposer HTC, to Application Serial No.
`85/025,647 1] 8.
`
`9 Amended Complaint (without exhibits), dated June 16, 2011, Anderson Decl. Exh. 2.
`
`‘O Amended Complaint at 1111 30-47, Anderson Decl., Exh. 2.
`
`

`
`OPPOSITION N0. 91 198009, ET AL.
`OPPOSITION T0 MOTION TO STAY
`
`The trade dress elements advanced by Apple in the Civil Action are summarized in these listed
`
`features of the “iPhone Trade Dress at Issue” and “iPad Trade Dress at Issue”:
`
`iPhone Trade Dress in Civil Action”
`
`iPad Trade Dress in Civil Action”
`
`a rectangular product with four evenly rounded
`corners;
`
`a rectangular product with four evenly rounded
`corners;
`
`a flat clear surface covering the front of the
`product;
`
`a flat clear surface covering the front of the
`product;
`
`the appearance of a metallic bezel around the
`flat clear surface;
`
`the appearance of a metallic rim around the flat
`clear surface;
`
`a display screen under the clear surface;
`
`a display screen under the clear surface;
`
`under
`the clear
`surface,
`substantial black
`borders above and below the display screen
`and narrower black borders on either side of
`
`substantial neutral
`the clear surface,
`under
`(black or white) borders on all sides of the
`display screen; and
`
`the screen;
`
`when the device is on, a matrix of colorful
`square icons with evenly rounded corners
`within the display screen.
`
`when the device is on, a matrix of colorful
`square icons with evenly rounded corners
`within the display screen; and
`
`when the device is on, a bottom dock of
`colorful
`square icons with evenly rounded
`corners set off from the other icons on the
`
`display, which does not change as other pages
`of the user interface are viewed.
`
`
`In addition to the three federal trademark registrations alleged in the Original Complaint,
`
`the Amended Complaint adds allegations regarding four other trade dress applications now
`
`pending with the Patent and Trademark Office.” But none of these additional applications bear
`
`upon the current proceeding before the Board and Apple does not even mention the Opposed
`
`Marks in the Civil Action.
`
`11 Amended Complaint at 1] 57, Anderson Decl., Exh. 2.
`
`12 Amended Complaint at 1] 65, Anderson Decl., Exh. 2.
`
`13 Amended Complaint at W 48-56, Anderson Decl., Exh. 2.
`
`

`
`OPPOSITION NO. 91 198009, ET AL.
`OPPOSITION TO MOTION TO STAY
`
`II.
`
`ARGUMENT
`
`Trademark Rule 2.1 l7(a) provides that the Board may suspend proceedings where a civil
`
`action may have a bearing on the case. Under this rule the Board has suspended oppositions
`
`when “[a] review of the complaint in the civil action indicate[s] that a decision by the district
`
`court will be dispositive of the issues” in the Opposition. See General Motors Corp. v. Cadillac
`
`Club Fashions, Inc., 22 U.S.P.Q.2d 1933, 1936 (TTAB 1992). Here by contrast, because the
`
`parties, marks, and issues are different, the Civil Action will not dispose of or have a bearing on
`
`the issues in the Consolidated Opposition.
`
`Samsung’s Motion to Stay also fails to establish facts or circumstances which have been
`
`required to stay other similar proceedings. Samsung relies on The Other Telephone Co. v.
`
`Connecticut National Telephone C0,, Inc., 181 U.S.P.Q. 125 (Comm’r of Patents 1974),” but
`
`that decision was based on a civil action involving identical parties and their respective rights to
`
`use the identical mark. See The Other Telephone Co. at 126-27. Likewise, the other case cited
`
`by Samsung, Townley Clothes, Inc. v. Goldring, Inc.,15 was suspended because the civil action
`
`and opposition involved the same parties, each claiming the exclusive right to use the same
`
`mark. See 100 U.S.P.Q. 57, 58 (Comm’r ofPatents 1953).
`
`0
`
`0
`
`0
`
`This case thus differs materially from prior Board cases granting suspension:
`
`The Anti-Stay Opposers are not parties to and therefore will not have opportunity to
`litigate any issue before the District Court in the Civil Action.
`
`Neither of the Opposed Marks or any similar design is even alleged to be at issue by
`Apple or Samsung in the Civil Action.
`
`Opposers’ claims that the Opposed Marks are non-distinctive, descriptive and functional
`designs go to the question of registrability rather than matters of infringement and
`likelihood of confusion raised by Apple based on Samsung’s products.
`
`14 See Motion to Stay at 2.
`
`15 See id.
`
`

`
`OPPOSITION No. 91 198009, ET AL.
`OPPOSITION To MOTION TO STAY
`
`A.
`
`NONE OF THE ANTI-STAY OPPOSERS Is A PARTY To THE CIVIL ACTION.
`
`Preclusion in a Board proceeding can be directed to either a claim or an issue. See Jet,
`
`Inc. v. Sewage Aeration Systems, 223 F.3d 1360, 1362, 1366 (Fed. Cir. 2000). Both forms of
`
`preclusion require commonality of parties. See id. (“... a second suit will barred by claim
`
`preclusion if:
`
`there is an identity of parties (or their privies” and “[t]he doctrine of issue
`
`preclusion
`
`requires
`
`the party defending against preclusion had a full and fair opportunity to
`
`litigate the issues”).
`
`Here, none of the Anti-Stay Opposers is a party to the Civil Action. Each Opposer has its
`
`own products and makes a separate allegation that it has “a present and prospective right to use
`
`designs similar to Applicant’s Mark for Opposer’s mobile phones and mobile digital electronics
`
`communications devices.”16 Accordingly, the Civil Action cannot be dispositive of Anti-Stay
`
`Opposers’ claims that the Opposed Marks comprise non-distinctive, descriptive and functional
`
`designs.
`
`Further, each Opposer is entitled to present unique facts and evidence supporting its
`
`claims. Because each Anti-Stay Opposer has its own products, documents, and potential
`
`witnesses, the Consolidated Opposition will necessarily include findings based on facts and
`
`evidence not present in the Civil Action. Accordingly, staying these proceedings would not
`
`achieve the judicial economy that often justifies a stay where the same parties are involved in a
`
`civil suit. Moreover, it would be unfair to the Anti-Stay Opposers to delay adjudication of their
`
`claims based on litigation in which they are not parties and over which they have no control.
`
`B.
`
`1.
`
`APPLE HAS NOT ALLEGED THE OPPOSED MARKS IN THE CIVIL ACTION.
`
`The Opposed Marks Are Not Identified in the Civil Action and Apple’s
`Federal Filings Asserted in the Case Are Different from the Opposed Marks.
`
`Both Opposed Marks consist of simple, two-dimensional thickened line drawings of one
`
`rectangle inside of another.” Apple does not rely on these marks in the Civil Action, even in its
`
`16 See, e. g., First Amended Notice of Opposition, by Opposer HTC, to Application Serial No.
`85/025,647 fl 8, Anderson Decl., Exh. 3.
`
`17 See supra, Section I.
`
`

`
`OPPOSITION NO. 91 198009, ET AL.
`OPPOSITION To MOTION TO STAY
`
`recent Amended Complaint.
`
`Instead, Apple alleges in its lawsuit a different set of three
`
`registrations and four pending applications for marks consisting of the three-dimensional product
`
`designs shown below.”
`Federal Trademark Registrations Alleged in the Civil Action
`
`U.S. Reg. No. 3,470,983
`
`U.S. Reg. No. 3,457,218
`
`U.S. Reg. No. 3,475,327
`
`
`
`Federal Trademark Applications Alleged in the Civil Action
`
`Ser. No. 77/921,838
`
`Ser. No. 77/921,829
`
`
`
`These registrations and applications differ from the Opposed Marks in numerous ways.
`
`First, all of the federal filings alleged by Apple in the Civil Action involve three-dimensional
`
`designs, five of which are displayed with oblique Views to depict depth of the relevant product
`
`and side panel feature placement.
`
`In contrast, the Opposed Marks consist of simplified two-
`
`dimensional, thickened line drawings of one rectangle inside of another.
`
`Apple’s two federal design filings that are not displayed in an oblique manner consist of
`
`brightly colored images that make extensive black, silver and other color claims.
`
`The
`
`applications to register the Opposed Marks make no color claims.
`
`18 Amended Complaint at W 48-56, Anderson Decl., Exh. 2.
`
`

`
`OPPOSITION N0. 91198009, ET AL.
`OPPOSITION TO MOTION To STAY
`
`To bridge these differences, Samsung is forced to rely on the irrelevant fact that Apple
`
`claimed ownership of the three registrations in the Civil Action as “prior registrations” in its
`
`applications to register the Opposed Marks.” However, Apple's claims of ownership of “prior
`
`registrations” do not demonstrate that those registrations will be adjudicated in the Consolidated
`
`Opposition or that the Civil Action will have any bearing on this proceeding.
`
`In fact, on several
`
`occasions the Federal Circuit has considered the effect of the Board’s decisions upon “prior
`
`registrations” listed in applications. These resulting opinions clearly establish that “[e]ach
`
`application for registration must be considered on its own merits.” See, e.g., In re Merrill Lynch,
`
`Pierce, Fenner, and Smith, Inc., 828 F.2d 1567, 1568-69 (Fed. Cir. 1987) (refusal of a broader
`
`registration for mark was not an attack on an existing incontestable registration for the same
`
`mark); In re L0ew’s Theatres, Inc., 769 F.2d 764, 769 (Fed. Cir. 1985) (applicant’s prior
`
`registration for mark in connection with cigars unaffected by Board’s ruling with respect to same
`
`mark for chewing tobacco).
`
`Here,
`
`the Opposed Marks differ from any mark at
`
`issue in the Civil Action, and
`
`Samsung’s argument that Apple has put the Opposed Marks at issue in the Civil Action by virtue
`
`of its claim of “prior registrations” is not supported by law or precedent. Accordingly, the
`
`Board’s decision regarding the Opposed Marks will not affect the “prior registrations,” just as
`
`the District Court’s adjudication will not have any preclusive effect on the Consolidated
`
`Opposition.
`
`2.
`
`Samsung’s Reliance on “Rounded Corners’ to Establish Overlapping Issues
`Is Misplaced Because Trade Dress is Considered In Its Entirety
`
`The issue in the Consolidated Opposition is whether Apple is entitled to register the
`
`Opposed Marks, which consist primarily of simplified two-dimensional, thickened line drawings
`
`of one rectangle inside of another, in view of the opposers’ claims of non—distinctive, descriptive
`
`and functional product designs. By contrast, Apple’s “Trade Dress at Issue” in the Civil Action
`
`19 See Mot. to Stay t 5.
`
`

`
`OPPOSITION NO. 9 1 198009, ET AL.
`OPPOSITION TO MOTION TO STAY
`
`is a combination of seven discrete elements in the case of the iPhone product and six discrete
`
`trade dress elements in the case of the iPad product.” The District Court must consider the
`
`entirety of these two combinations, determine whether Apple’s relevant trade dress as a whole is
`
`valid, and then decide whether what Samsung is doing is infringement. See, e. g., August Storck
`
`KG. v. Nabisco, Inc., 59 F.3d 616 (7th Cir. 1995) (“Doubtless the overall appearance is what
`
`matters.
`
`Dissecting a product or package into components can cause a court to miss an overall
`
`similarity”); “[I]n an action for trade dress infringement each aspect should be viewed in
`
`relation to the entire trade dress.” See, e. g., Bristol-Myers Squibb Co., v. McNeil-P.P.C., Inc., 24
`
`U.S.P.Q.2d 1161, 1167 (2d Cir. 1992). This is entirely different from the question Board must
`
`address in the Consolidated Opposition: whether or not the Opposed Marks, which are not at
`
`issue in the Civil Action, consist of non-distinctive, descriptive and functional product designs.
`
`Samsung makes repeated references to — and seeks to make much of — the “rounded
`
`corners” feature mentioned in the descriptions of the mark in several Apple trademarks and trade
`
`dresses, all in an attempt to establish an issues overlap. 21 However, the current, operative
`
`descriptions for the Opposed Marks say nothing about “rounded corners.” Therefore, Samsung's
`
`reliance on these descriptions is misplaced.
`
`Of Apple’s Application Ser. No. 85/040,770, Samsung correctly states that the original
`
`description of the mark, when the application was first filed, was: “The mark consists of a
`
`rectangle below an oval and above a circle, all inside of a rectangle with rounded comers.”22
`
`Samsung also correctly notes that an Examiner’s Amendment/Priority Action was entered on
`
`August 4, 2010.23 Samsung says that EXa.miner’s Amendment “added” the following description
`
`20 See Amended Complaint at fl 57, 65; Anderson Decl., Exh. 2; see also infla at 5 (Apple’s
`iPhone and iPad “Trade Dress at Issue”).
`_
`
`21 See Mot. to Stay at 7-8.
`
`22 Mot. to Stay at 7.
`
`23 Id. at 7-8.
`
`-10-
`
`

`
`OPPOSITION N0. 91198009, ET AL.
`OPPOSITION TO MOTION TO STAY
`
`of the mark for each application at issue: “The mark consists of a simplified drawing of a mobile
`
`digital electronic communication device.
`
`”24
`
`The reality, however,
`
`is that
`
`the EXaminer’s
`
`Amendment substituted this new description for the mark’s old description, thereby superseding
`
`the original. Thus, the current, operative description of the mark in Opposed Application Ser.
`
`No. 85/040,770 contains no reference to rounded comers.
`
`Similarly, in Opposed Application Ser. No. 85/025,647, the original description of the
`
`mark was: “The mark consists of a stylized depiction of Applicant’s device.” By Examiner's
`
`Amendment/Priority Action dated August 4, 2010, Apple agreed to the following amended
`
`description of the mark:
`
`“The mark consists of a simplified drawing of a mobile digital
`
`electronic communication device.” Neither description for Opposed Application Serial No.
`
`85/025,647, original or currently effective, says anything about rounded corners.
`
`But even more fundamentally, it is incorrect and irrelevant for Samsung to rely upon one
`
`isolated trade dress element such as rounded corners in this way. See Bristol-Myers Squibb Co,
`
`24 U.S.l’.Q.2d at 1167. Apple does not allege infringement of any one independent, trade dress
`
`element. Rather, it asserts infringement of its trade dress as a whole. Apple’s First, Second, and
`
`Fourth Claims in the Civil Action all assert that Samsung “mimic[s] a combination of several
`
`elements” of the Apple trade dress.” As a result, Apple’s claims for unfair competition,
`
`infringement and dilution must be based on the totality of its asserted trade dress combinations.
`
`No such adjudication will bear upon the Consolidated Opposition merely because the designs
`
`under the Opposed Marks share a “rounded corner” element with the asserted trade dress.26
`
`C.
`
`APPLE’s INFRINGEMENT ALLEGATIONS HAVE No BEARING ON OPPOSERS’
`
`CLAIMS HERE THAT THE OPPOSED MARKS COMPRISE NON-DISTINCTIVE,
`DESCRIPTIVE AND FUNCTIONAL PRODUCT DESIGNS.
`
`24
`
`25 See Amended Complaint at W 115-16, 129-30, 154; Anderson Dec1., Exh. 2.
`
`26 Especially an element so non-distinctive as rounded corners.
`
`-11-
`
`

`
`OPPOSITION N0. 91198009, ET AL.
`OPPOSITION To MOTION To STAY
`
`Apple trade dress and related claims in the Civil Action rest on broad infringement and
`
`unfair competition charges against Samsung’s Galaxy line of phone and tablet computer
`
`products. For example, in its First Claim for Relief for Federal False Designation of Origin &
`
`Unfair Competition under 15 U.S.C. § 1125(a), Apple alleges infringement based upon:
`
`Samsung’s manufacture and distribution of the Samsung Galaxy phone and tablet
`computer products with product design and product user interface features that
`mimic a combination of several elements of Apple iPhone Trade Dress, Apple
`iPhone 3G Trade Dress, Apple iPhone 4 Trade Dress, Apple iPad Trade Dress,
`and Apple iPad 2 Trade Dress, coupled with Samsung’s use of a packaging style
`that copies the unique Apple packaging,
`is likely to cause confusion, cause
`mistake, or deceive consumers as to the affiliation, connection, or association of
`Samsung with Apple, or as to its origin, sponsorshp, or approval by Apple of
`Samsung’s goods, services, or commercial activities?
`
`Rather than infringement of Apple’s multi-element product and packaging style trade
`
`dress definition, the issues before the Board here concern whether the Opposed Marks, are “not
`
`distinctive,”
`
`“substantially common design[s],”
`
`“merely descriptive,”
`
`and “functional
`
`conf1guration[s] incapable of trademark significance.”28 Facts required to establish infringement
`
`are fundamentally different
`
`from and will not be determinative of non-distinctiveness,
`
`descriptiveness and functionality. See, e.g., Otto Roth & Co. v. Universal Food Corp., 209
`
`U.S.P.Q. 40 (C.C.P.A. 1981), on remand, 215 U.S.P.Q. 1140 (T.T.A.B. 1982) (difference
`
`between Section 2(e)(1) and 2(d) claim).
`
`Samsung attempts
`
`to circumvent
`
`these substantive differences between Apple’s
`
`infringement claims in the Civil Action and Opposers’ claims in the opposition by arguing that
`
`allegations regarding “secondary meaning” cause the grounds in the respective proceedings to
`
`27 See Amended Complaint at 1] 115; Anderson Decl., Exh. 2 (emphases added). Paragraphs 116,
`129-30, and 154, found in the First Claim, Second Claim (Federal Trade Dress Infringement, 15
`U.S.C. § 1114), and Fourth Claim for Relief (Federal Dilution, 15 U.S.C. § l125(c)) all
`identically allege as bases for infringement that Samsung “mimic[s] a combination of several
`elements” “coupled wit ” Samsung’s “use of a packaging style that copies Apple’s unique
`packaging.”
`
`28 See, e. g., First Amended Notice of Opposition, by opposer HTC, to Application Serial No.
`85/025,647 W 4-7, Anderson Decl., Exh. 3.
`
`-12-
`
`

`
`OPPOSITION N0. 91198009, ET AL.
`OPPOSITION TO MOTION To STAY
`
`overlap.” This assertion is incorrect. Apple’s allegations that its trade dress as embodied in the
`
`iPhone and iPad products “enjoys secondary meaning among consumers” and “is not merely
`
`functional” pertains to Apple’s trade dress permutations in their entirety.” This assertion is not
`
`directed to any one trade dress element in isolation, and certainly does not pertain to the Opposed
`
`Marks.
`
`Further, because the Amended Complaint does not encompass the Opposed Marks, Apple
`
`cannot even attempt to demonstrate secondary meaning in the Civil Action in regard to the
`
`Opposed Marks.
`
`It is therefore also irrelevant that any Opposer in this proceeding alleges lack of
`
`secondary meaning with respect to the Opposed Marks.
`
`Similarly, Sarnsung’s counterclaims before the District Court do not create issues which
`
`overlap between the Civil Action and Consolidated Opposition.
`
`31 Samsung seeks declaratory
`
`relief in regard to Apple’s charges of infringement and dilution based on the totality of Apple’s
`
`asserted trade dress combinations pled in the Civil Action, and not based upon subject matter
`
`pertaining to the Opposed Marks.”
`
`Samsung also seeks a declaration of invalidity or
`
`cancellation with respect to federal trade dress registrations or applications which are not at issue
`
`in this proceeding. Like Apple, Samsung makes no allegations in the Civil Action concerning
`
`the Opposed Marks. As with Apple’s claims, adjudication of the Samsung’s counterclaims thus
`
`cannot affect the Board’s decision in the consolidated opposition.
`
`III.
`
`CONCLUSION
`
`Because the Anti-Stay Opposers are not parties to the Civil Action, because there can be
`
`no preclusion, and because the issues in the Civil Action can have no bearing on the issues in the
`
`29 See Mot. to Stay at 9.
`
`30 See, e. g., Amended Complaint at W 111-112; Anderson Decl., Exh. 2.
`
`31 See Mot. to Stay at 10.
`
`32 See Samsung Entities’ Answer, Affirmative Defenses, and Counterclaims to Apple, Inc.’s
`Amended Complaint at M 129-150; Anderson Decl., Exh. 2.
`
`-13-
`
`

`
`OPPOSITION N0. 91198009, ET AL.
`OPPOSITION To MOTION TO STAY
`
`Consolidated Opposition, the Board should not delay its decision whether the Opposed Marks
`
`are registrable. The Board has defined an efficient course for adjudication of the issue by
`
`consolidating the oppositions. Accordingly, the Anti-Stay Opposers respectfully request that
`
`Sa1nsung’s Motion to Stay the Opposition be denied.
`
`Date: July 25, 2011
`
`Respectfully submitted,
`
`PATTISHALL MCAULIFFE NEWBURY
`
`HILLIARD GERALDSON LLP
`
`( ud §
`
`Robert W. Sacoff
`
`311 S. Wacker Drive, Suite 500
`Chicago, IL 60606
`Attorneys for Opposer Acer Incorporated
`Lead Plaintififs’ Counsel in Consolidated
`Opposition
`
`Robert S. Weisbein
`
`Kelly M. Weiner
`FOLEY & LARDNER LLP
`
`90 Park Avenue
`
`New York, NY 10016
`Attorneysfor Opposer Nokia Corporation
`
`Stephen P. Meleen
`Wendy C. Larson
`PIRKEY BARBER LLP
`
`600 Congress Avenue, Suite 2120
`Austin, TX 78701
`Attorneys for Opposer Dell Inc.
`
`Susan E. Hollander
`
`Britt L. Anderson
`
`K&L GATES LLP
`
`630 Hansen Way
`Palo Alto, CA 94306
`Attorneys for Opposer HTC Corporation
`
`

`
`Certificate of Electronic Transmission
`
`I hereby certify that this OPPOSITION TO SAMSUNG ELECTRONICS CO., LTD.’S
`
`MOTION TO STAY is being electronically transmitted to the United States Patent and
`
`Trademark Office on July 25, 2011.
`
`fidww3%
`
`Certificate of Service
`
`I hereby certify that a copy of the foregoing OPPOSITION TO SAMSUNG
`
`ELECTRONICS CO., LTD.’S MOTION TO STAY was served on Applicant’s counsel of
`
`record, Glenn A. Gundersen and Christine Hernandez, Dechert LLP, Cira Centre, 2929 Arch
`
`Street, Philadelphia, PA 19104-2808, Via electronic mail at glenn.gundersen@dechert.com,
`
`christine.hernandez@dechert.com, trademarks@dechert.com, and on Samsung Electronics C0,,
`
`Ltd.'s counsel of record, Diane J. Mason, LeC1air Ryan, 44 Montgomery Street, 18th Floor, San
`
`Francisco CA 94104, at Diane.Mason@leclairryan.com and on the other opposers' counsel listed
`
`below Via electronic mail, as agreed among the parties, on July 25, 2011.
`
`gm,
`
`michae1.je.smith@nokia.com
`rweisbein@foley.com
`smeleen@pirkeybarber.com
`britt.anderson@klgates.com
`susan.ho11ander@k1gates.com
`
`PL-55267 V3
`
`

`
`EXHIBIT A
`
`DECLARATION OF BRITT L. ANDERSON
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`ACER INCORPORATED
`
`
`
`v.
`
`APPLE INC.
`
`HTC CORPORATION
`
`SAMSUNG ELECTRONICS CO., LTD.
`
`
`
`v.
`
`APPLE INC.
`
`
`
`
`
`v.
`
`APPLE INC.
`
`DELL INC.
`
`
`
`v.
`
`APPLE INC.
`
`Opposition Nos. 91198009 (Parent)
`91198015
`
`Opposition Nos. 91198990
`91199025
`
`Opposition Nos. 91199013
`91199027
`
`Opposition Nos. 91198992
`91199024
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`DECLARATION OF BRITT L. ANDERSON IN SUPPORT OF
`
`NOKIA CORPORATION
`
`Opposition No. 91199026
`
`
`
`v.
`
`APPLE INC.
`
`ANTI-STAY OPPOSERS’ OPPOSITION TO SAMSUNG’S MOTION TO STAY
`
`I, Britt L. Anderson, declare:
`
`1.
`
`I am a member of the State Bar of California and am counsel for HTC
`
`Corporation in these proceedings. I have personal knowledge of the facts stated herein and, if
`
`sworn as a witness, could and would testify competently thereto. I submit this declaration in
`
`support of the Anti-Stay Opposers’ Opposition to Samsung Electronic Co. Ltd.’s Motion to Stay.
`
`2.
`
`Attached hereto as Exhibit 1 is a true and correct copy of the body of the Original
`
`Complaint in the Civil Action without the exhibits to the Complaint.
`
`3.
`
`Attached hereto as Exhibit 2 is a true and correct copy of the body of the
`
`

`
`Amended Complaint in the Civil Action without the exhibits to the Amended Complaint.
`
`4.
`
`Attached hereto as Exhibit 3 is a true and correct copy of Opposer HTC
`
`Corporation’s First Amended Notice of Opposition to Application Serial No. 85/025,647.
`
`I declare under penalty of perjury under the laws of the United States of America that the
`
`foregoing is true and correct and that this declaration was executed in Palo Alto, California.
`
`
`Dated: July 25, 2011
`
`
`
`
`
`/s/ Britt L. Anderson
`BRITT L. ANDERSON
`
`
`
`PL-55528 v1
`
`
`
`- 2 -
`
`

`
`EXHIBIT 1
`
`

`
`0R1
`
`INAL
`
`..
`
`
`
`..;.
`
`1
`
`Ix)
`
`UJ
`
`4
`
`U:
`
`6
`
`7
`8
`
`9
`
`10
`
`1 1
`
`12
`13
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`32
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`HAROLD J. MCELHINNY (CA SBN 66781)
`I-TMcE1hinny@mofo.com
`MICHAEL A. JACOBS (CA SBN 111664)
`MJacobs@mofo.com
`JENNIFER LEE TAYLOR (CA SBN 161368)
`JTaylor.@mofo.corn
`JASON R. BARTLETT (CA SBN 214530)
`JasonBartlett@mofo.com
`MORRISON & FOERSTER LLP
`425 Market Street
`
`San Francisco, California 94105-2482
`Telephone: 415.268.7000
`Facsimile: 415.268.7522
`Attorneys for Plaintiff
`APPLE INC.
`
`1:70
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`
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`
`
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`APPLE INC., aCalifornia corporation,
`v.
`
`Plaintiff,
`
`E“ 1 8 %
`*~‘f§fiseNi
`JURY TRIAL DEMAND
`COMPLAINT FOR PATENT
`
`SAMSUNG ELECTRONICS CO., LTD., a
`Korean corporation; SAMSUNG
`ELECTRONICS AMERICA, INC., a New
`York corporation; SAMSUNG
`TELECOMMUNICATIONS AMERICA,
`LLC, a Delaware limited liability company.
`
`Defendants.
`
`
`
`INFRINGEMENT, FEDERAL FALSE
`DESIGNATION OF ORIGIN AND
`UNFAIR COMPETITION, FEDERAL
`TRADEMARK INFRINGEMENT,
`STATE UNFAIR COMPETITION,
`COMMON LAW TRADEMARK
`INFRINGEMENT, AND UNJUST
`ENRICHMENT
`
`33,: Fax
`
`APPLE INC. '5 COMPLAINT
`sf—298 I 926
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