Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA515193
`ESTTA Tracking number:
`01/09/2013
`
`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, sia@pattishall.com
`Opposition/Response to Motion
`Seth I. Appel
`rws@pattishall.com, sia@pattishall.com, lkn@pattishall.com
`/Seth I. Appel/
`01/09/2013
`Opposition to Motion to Suspend.pdf ( 14 pages )(42127 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`____________________________________
`ACER INCORPORATED
`
`
`
`) Opposition Nos. 91198009 (Parent)
`)
` 91198015
`)
`)
`)
`APPLE INC.
`____________________________________)
`HTC CORPORATION
`) Opposition Nos. 91198990
`) 91199025
`
`v.
`
`))
`
`v.
`
`)
`APPLE INC.
`____________________________________)
`SAMSUNG ELECTRONICS CO., LTD.
`) Opposition Nos. 91199013
`) 91199027
`
`))
`
`v.
`
`)
`APPLE INC.
`____________________________________)
`DELL INC.
`) Opposition Nos. 91198992
`)
`91199024
`
`))
`
`v.
`
`)
`APPLE INC.
`____________________________________)
`NOKIA CORPORATION
`) Opposition No. 91199026
`)
`
`))
`
`v.
`
`)
`APPLE INC.
`____________________________________)
`
`OPPOSERS’ OPPOSITION TO APPLICANT’S MOTION TO SUSPEND
`
`Opposers Acer Incorporated, HTC Corporation, Dell Inc., and Nokia Corporation
`
`(“Opposers”) hereby oppose the motion to suspend filed by Applicant Apple Inc. (“Apple”).
`
`I.
`
`INTRODUCTION
`
`Apple has applied to register the following designs (the "Applied-For Designs") for
`
`accessories for smartphones and tablet computers:
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`1
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`

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`The four above-mentioned Opposers, as well as Samsung Electronics Co., Ltd. ("Samsung"),
`
`which does not join in this brief, have opposed both Apple applications, except that Nokia has
`
`opposed only the Apple smartphone-design application .
`
`Apple moves to suspend these oppositions based on civil litigation between Apple and
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`Samsung that has been pending for twenty months. Apple now contends that the final
`
`determination of that litigation may have a bearing on this opposition. However, the Board
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`already rejected this exact argument when it denied Samsung's motion to stay in August, 2011.
`
`At that time Apple opposed Samsung's motion, arguing that the Applied-For Designs "are not at
`
`issue in the District Court Litigation, and so any decision by the District Court will not have a
`
`bearing on the registrability of the Marks."
`
`There have been no relevant changes in the pleadings or otherwise since the Board denied
`
`Samsung's motion to stay that should produce a different outcome on Apple's motion to suspend.
`
`The Board's order denying Samsung's motion is equally applicable today as it was then. As
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`stated in the Board's August, 2011, order, suspension would be improper because: (1) the
`
`Applied-For Designs are different from the marks involved in the Apple-Samsung litigation, and
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`the respective goods to be sold under the marks are also different; (2) the applications at issue in
`
`this opposition proceeding are not at issue in the Apple-Samsung litigation, and therefore the
`
`district court will not make any findings regarding these applications; (3) whether or not Apple's
`
`trade dress for smartphones and tablet computers is functional or descriptive or non-distinctive is
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`2
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`

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`not determinative of whether the two-dimensional Applied-For Designs are functional or
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`descriptive or non-distinctive of the goods listed in the applications; and (4) the four Opposers
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`other than Samsung are not even parties to the Apple-Samsung litigation.
`
`In attempting to escape the above reasoning – and the law of the case doctrine – Apple
`
`hangs its hat on the Board's recent discovery order finding that certain information regarding
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`three-dimensional smartphones and computer tablets is discoverable. Apple argues that because
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`this information is also relevant to its litigation with Samsung, that litigation must have a bearing
`
`on the present case. This is a logical fallacy. The fact that certain discovery may be relevant to
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`both a civil litigation and a T.T.A.B. opposition does not mean that the former has a bearing on
`
`the latter.
`
`The Board's recent discovery order does not change the marks or accessory products at
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`issue in this consolidated opposition proceeding. The parties, the pleadings and the issues in the
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`case remain the same. The Apple-Samsung litigation did not have a bearing on this proceeding
`
`in August, 2011, and it does not have a bearing on this proceeding now, regardless of the scope
`
`of discovery.
`
`The Board should deny Apple's motion to suspend, just as it previously denied Samsung's
`
`motion to stay.
`
`II.
`
`FACTS
`
`Apple filed its applications to register the Applied-For Designs in April and May of 2010.
`
`All five Opposers timely opposed and have alleged that these designs are functional, merely
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`descriptive, and non-distinctive.
`
`On April 15, 2011, Apple filed a complaint against Samsung in the U.S. District Court
`
`for the Northern District of California. In that action (the "Civil Action"), Apple asserts various
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`3
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`

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`infringement claims involving Samsung's Galaxy smartphones and tablet computers. None of
`
`the other Opposers are parties to the Civil Action.1
`
`In the Civil Action, Apple charged Samsung with infringement of trade dress associated
`
`with Apple's iPhone, iPod, and iPad products, and also alleged infringement of several patents
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`that are not relevant to the present oppositions. Apple alleges a laundry list of elements
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`comprising its purported trade dress, such as "a flat clear surface covering the front of the
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`product" and "a matrix of colorful square icons with evenly rounded corners within the display
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`screen." [See Amended Complaint, ¶ 57] In its Amended Complaint, Apple points to three U.S.
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`trademark registrations, and four U.S. trademark applications, that it maintains cover elements of
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`its purported trade dress: U.S. Registration Nos. 3,470,983; 3,457,218; and 3,475,327, and U.S.
`
`Application Serial Nos. 77/921,838; 77/921,829; 77/921,869; and 85/299,118. All of the
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`foregoing registrations and applications cover three-dimensional product configurations, which
`
`are different from the Applied-For Designs. In the Civil Action, Apple does not allege
`
`infringement of the Applied-For Designs.
`
`On July 8, 2011, Samsung filed a motion to stay this opposition proceeding pending
`
`disposition of the Civil Action. [Docket No. 18] Samsung pointed to Apple's allegations in the
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`Civil Action that it "holds trade dress protection in the design, appearance, and distinctive user
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`interface of the iPhone, the iPod touch, and the iPad products," and that Samsung had
`
`misappropriated elements of Apple's purported trade dress, including a rectangular product with
`
`four evenly rounded corners. [Docket No. 18, at 3-4]
`
`Apple opposed Samsung's motion to stay. [Docket No. 20]. In its opposition, Apple
`
`stated:
`
`
`
`1 Apple filed an amended complaint in the Civil Action (the "Amended Complaint") on June 16,
`2011.
`
`4
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`

`
`[In the Civil Action] Applicant has not cited the marks shown in the applications
`which are being opposed in this proceeding (the "Marks"). The Marks are two-
`dimensional representations of Applicant's iPhone and iPad devices, and the
`applications for the Marks do not seek to register a configuration of Applicant's
`devices.
`
`[Docket No. 20, at 2] Apple continued:
`
`Opposer has failed to demonstrate that the District Court Litigation has a bearing
`on the instant proceedings. Applicant asserts claims of trademark, trade dress
`and design patent infringement in the District Court Litigation. The Marks are
`not at issue in the District Court Litigation, and so any decision by the District
`Court will not have a bearing on the registrability of the Marks.
`
`[Docket No. 20, at 3-4]
`
`All the other four Opposers also opposed Samsung's motion to stay.
`
`On August 5, 2011, the Board ruled in favor of Apple and the non-Samsung Opposers
`
`and denied Samsung's motion to stay, [Docket No. 22], for no fewer than four distinct reasons:
`
`[T]he Board finds that a decision by the district court will not have a
`bearing on, or be dispositive of, the issues in these consolidated proceedings for
`the following reasons:
`
`First, … the marks at issue in the civil action do not have the same
`descriptions as the marks at issue in these proceedings. The descriptions of the
`marks in the civil action are for three-dimensional configurations of the goods
`identified in the registrations and pending applications. By contrast, the
`description of the marks in these proceedings, as provided by applicant, state that
`the marks consist of “a simplified drawing of a mobile digital electronic
`communication device.” Further, the goods identified in the involved
`applications are not for smart phones or computer tablets but accessories used in
`connection with such electronic devices. Accordingly, the marks at issue in the
`civil action are of a different nature and are used in association for different
`goods than the marks subject to these consolidated proceedings.
`
`Second, … applicant has not pleaded ownership of the applications
`subject to these consolidated proceedings in its civil complaint nor has Samsung
`asserted a counterclaim seeking any type of relief regarding the involved
`applications. Accordingly, since the applications involved herein, and the marks
`subject thereto and goods associated therewith, are not at issue in the district
`court proceeding, the district court will not be issuing any specific findings and/or
`decisions directly concerning the registrability of applicant’s involved marks
`
`5
`
`

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`and/or in connection with the claims being asserted by opposers in this
`consolidated case vis-à-vis applicant’s subject applications.
`
`Third, even assuming arguendo, that the district court finds that
`applicant’s pleaded marks are functional, nondistinctive trade dress and/or
`generic configurations of applicant’s smart phones and/or computer tablets, such
`a finding would not be determinative or have a bearing on whether applicant’s
`marks involved herein, which are used or intended to be used in association with
`accessories for applicant’s smart phone and/or computer tablets and not for the
`electronic devices themselves, are functional, nondistinctive configurations of
`one or more of applicant’s goods or merely descriptive of the goods identified in
`applicant’s subject applications.
`
`Finally, while the Board recognizes that applicant and Samsung are both
`parties to the civil action, the four remaining opposers of these consolidated
`proceedings are not. Therefore, to suspend this consolidated case where the
`decision of the district would not have a bearing on or be dispositive of the issues
`presented in these consolidated proceedings or have any preclusive effect on the
`remaining opposers, would not only inconvenience the remaining opposers but
`would also not serve judicial economy.
`
`Following Samsung's unsuccessful motion to stay, the Civil Action and this T.T.A.B. proceeding
`
`each continued without any difficulties.
`
`In August 2012, the jury in the Civil Action returned a verdict, and apparently in light of
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`that development, Apple has changed its tune. Sixteen months after arguing that the Civil Action
`
`has no bearing on this proceeding, Apple now takes the diametrically opposite position and
`
`argues, yes, this proceeding should be suspended due to the same Civil Action Samsung pointed
`
`to the first time around, unsuccessfully.
`
`Under the law of the case doctrine, the Board should not reconsider its earlier decision
`
`not to suspend. And if the Board is inclined to reexamine the issue, it should deny Apple's
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`motion for the same reasons that it denied Samsung's motion in 2011.
`
`6
`
`

`
`II.
`
`ARGUMENT
`
`A.
`
`The Law of the Case Doctrine Dictates that the Board Should Not
`Reexamine Suspension.
`
`Under the well-established law of the case doctrine, the Board "should not reopen issues
`
`decided in earlier stages of the same litigation." Treshold.TV, Inc. and Blackbelt TV, Inc. v.
`
`Metronome Enterprises, Inc., 96 U.S.P.Q.2d 1031, 1038, n. 16 (T.T.A.B. 2010) (citing Agostini
`
`v. Felton, 521 U.S. 203, 236 (1997)). "The doctrine of law of the case was 'created to ensure
`
`judicial efficiency and to prevent the possibility of endless litigation.'" Toro Co. v. White
`
`Consolidated Industries, 383 F3d 1326, 1335 (Fed. Cir. 2004) (quoting Central Soya Co. v. Geo.
`
`A. Hormel & Co., 723 F.2d 1573, 1580 (Fed. Cir. 1983)).
`
`The Board has already ruled that the Civil Action does not have a bearing on this
`
`proceeding, and therefore suspension is inappropriate. The Board should not revisit that
`
`conclusion now.
`
`B.
`
`There is No Valid Basis for Suspending this Proceeding.
`
`There was no valid basis for suspending this proceeding in response to Samsung's motion
`
`to stay, and there is no valid basis for suspending this proceeding now.
`
`1.
`
`The Trade Dress as Issue in the Civil Action is Different from the
`Marks at Issue in This Proceeding.
`
`As the Board recognized in denying Samsung's motion to stay, "the marks at issue in the
`
`civil action do not have the same descriptions as the marks at issue in these proceedings."
`
`[Docket No. 22] In its Amended Complaint in the Civil Action, Apple identified the following
`
`elements of its iPhone and iPad trade dress:
`
`7
`
`

`
`Apple iPhone Trade Dress in Civil Action2
`
`Apple iPad Trade Dress in Civil Action3
`
`• 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 displayscreen under the clear surface;
`
`• a displayscreen under the clear surface;
`
`• under the clear surface, substantial neutral
`(black or white) borders on all sides of
`the display screen; and
`
`• when the device is on, a matrix of colorful
`square icons with evenly rounded corners
`within the display screen.
`
`• under the clear surface, substantial black
`borders above and below the display
`screen and narrower black borders on either
`side of the 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 contrast to the three-dimensional product configurations at issue in the Civil Action,
`
`this proceeding involves two-dimensional line drawings of mobile devices. Apple's designs at
`
`issue in this proceeding, as described in Apple's applications, consist of "a simplified drawing of
`
`a mobile digital electronic communication device."
`
`
`
`2 Amended Complaint, ¶ 57. Apple alleges variations and additional elements with respect to its
`newer versions of its iPhone.
`
`3 Amended Complaint, ¶ 65. Apple alleges variations and additional elements with respect to its
`newer versions of its iPad.
`
`8
`
`

`
`Moreover, the goods at issue in the Civil Action are entirely different from the goods at
`
`issue in this T.T.A.B. proceeding. The Civil Action involves Apple's and Samsung's
`
`smartphones and computer tablets. By contrast, this proceeding involves only accessories for
`
`such products.
`
`2.
`
`The Civil Action Does Not Address or Involve the Designs Sought to
`be Registered, and which are Opposed, in This Proceeding.
`
`Neither Apple nor Samsung raised the Applied-For Designs in its pleadings in the Civil
`
`Action. Therefore, the district and appellate courts in the Civil Action have not made – and will
`
`not make – any rulings with respect to the Applied-For Designs. As the Board already
`
`recognized in denying Samsung's motion to stay, "since the applications involved herein, and the
`
`marks subject thereto and goods associated therewith, are not at issue in the district court
`
`proceeding, the district court will not be issuing any specific findings and/or decisions directly
`
`concerning the registrability of applicant’s involved marks and/or in connection with the claims
`
`being asserted by opposers in this consolidated case vis-à-vis applicant’s subject applications."
`
`[Docket No. 22]
`
`3.
`
`The Validity of Apple's Trade Dress Asserted in the Civil Action is
`Irrelevant to the Validity of the Designs at Issue in This Proceeding.
`
`As the Board stated in its order denying Samsung's motion to stay: "[E]ven assuming
`
`arguendo, that the district court finds that applicant’s pleaded marks are functional, nondistintive
`
`trade dress and/or generic configurations of applicant’s smart phones and/or computer tablets,
`
`such a finding would not be determinative or have a bearing on whether applicant’s marks
`
`involved herein, which are used or intended to be used in association with accessories for
`
`applicant’s smart phone and/or computer tablets and not for the electronic devices themselves,
`
`are functional, nondistinctive configurations of one or more of applicant’s goods or merely
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`9
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`

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`descriptive of the goods identified in applicant’s subject applications." [Docket No. 22] In other
`
`words, any determination the courts make in the Civil Action regarding the validity of Apple's
`
`trade dress has no bearing on this proceeding.
`
`In its motion, Apple contends: "In its determination that Apple's U.S. Registration Nos.
`
`3,470,983 of its iPhone trade dress and its unregistered trade dress as embodied in its iPhone 3G
`
`device are protectable, the jury necessarily found that such trade dress was not functional."
`
`[Mot. at 6] This contention illustrates the flaw in Apple's position. Whether or not Apple's
`
`purported three-dimensional trade dress in the Civil Action is functional for smartphones is
`
`irrelevant to the T.T.A.B. proceeding. The question here is whether the two-dimensional, black
`
`and white, simplified line drawings shown in the Applied-For Designs are functional or
`
`descriptive or non-distinctive for mobile device accessories.
`
`4.
`
`Four Opposers are Not Parties to the Civil Action.
`
`Each of the Opposers makes its own electronics products and independently alleges that
`
`it will be harmed by Apple's registration of the Applied-For Designs. Each is entitled to present
`
`unique facts and evidence supporting its claims. However, Opposers Acer Incorporated, HTC
`
`Corporation, Dell Inc., and Nokia Corporation are not parties to the Civil Action.
`
`Any decision by the courts in the Civil Action can have no preclusive effect on the non-
`
`Samsung Opposers. Both claim preclusion and issue preclusion require identity of the parties.
`
`See Jet, Inc. v. Sewage Aeration Systems, 223 F.3d 1360, 1362 (Fed. Cir. 2000) ("[A judgment
`
`on the merits in a prior suit bars a second suit involving the same parties or their privies based on
`
`the same cause of action."); id. at 1366 ("The doctrine of issue preclusion … requires … the
`
`party defending against preclusion had a full and fair opportunity to litigate the issues.").
`
`10
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`
`Therefore, as the Board recognized in denying Samsung's motion to stay, suspending this
`
`proceeding would not serve judicial economy. It would simply inconvenience Opposers and
`
`delay resolution of the present dispute, which has already been pending for over two years.
`
`Argo & Co v. Carpetsheen Mfg., Inc., 187 U.S.P.Q. 366 (T.T.A.B. 1975), cited by Apple,
`
`is easily distinguishable. The Board suspended that opposition proceeding, involving the
`
`CARPETSHEEN mark, pending the outcome of litigation between the applicant's incorporators
`
`involving the incorporators' respective rights to CARPETSHEEN. The Board found that the
`
`outcome of the litigation may have a "direct bearing" on the applicant's right of registration: "If
`
`it is determined in the civil action that applicant's interest in the mark was insufficient to clothe it
`
`with the authority and right to file the application, same will be declared void ab initio." Id. at
`
`367. In the present case, by contrast, the courts' rulings in the Civil Action will have no impact
`
`on the registrability of the Applied-For Designs.
`
`As stated in Apple's motion, it is the policy of the Board to suspend a proceeding if the
`
`final determination of another proceeding may have a bearing on the case. 37 C.F.R. § 2.117(a).
`
`For all of the foregoing reasons, the final determination of the Civil Action will have no bearing
`
`on this T.T.A.B. proceeding.
`
`C.
`
`Apple's Reliance on the Board's Recent Discovery Order is
`Inapposite.
`
`Apple argues the Board should ignore the law of the case – and the numerous reasons
`
`militating against suspension – in view of the Board's November 14, 2012, discovery order. The
`
`discovery order is a red herring. It relates only to discovery, it does not alter the pleadings, and it
`
`does not suggest that the Civil Action has any bearing on this proceeding.
`
`Apple uses the Board's discovery order as an excuse to reassert the arguments that
`
`Samsung put forward, Apple itself contested, and the Board rejected in 2011.
`
`11
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`

`
`Apple points out that the Board has permitted discovery regarding electronic devices used
`
`by Opposers and third-parties. As discussed in Opposers' Motion to Compel [Docket No. 35],
`
`such information relates directly to the functionality, descriptiveness and non-distinctiveness of
`
`the Applied-For Designs. The Applied-For Designs consist of four basic elements, which
`
`Opposers contend are nearly universal features of smart phones and tablet computers. The fact
`
`that myriad companies offer smartphones and tablet computers comprising these same elements
`
`indicates that the Applied-For Designs are functional, descriptive and non-distinctive for
`
`accessories for such smartphones and tablets.
`
`The Board properly ruled that third-party use is relevant to this proceeding. However,
`
`even if Samsung raised third-party use in the Civil Action – to challenge the validity of different
`
`Apple designs for different products – the Board's discovery ruling by no means suggests that the
`
`Civil Action itself has a bearing on this proceeding. The mere fact that certain discovery may be
`
`relevant to both the Civil Action and this T.T.A.B. proceeding is no basis for suspending this
`
`proceeding, which involves different marks, different goods, different issues, and different
`
`parties.
`
`Apple does not cite any authority for its position that the Board's discovery order
`
`provides a valid basis for suspension, which the Board has already ruled is improper given the
`
`numerous differences between the Civil Action and this proceeding.
`
`III.
`
`CONCLUSION
`
`For the reasons discussed above – and in the Board's August 5, 2011, order denying
`
`Samsung's motion to stay – the Board should deny Apple's motion.
`
`//
`
`//
`
`12
`
`

`
`Date: January 9, 2013
`
`Respectfully submitted,
`
`PATTISHALL, McAULIFFE, NEWBURY,
`HILLIARD & GERALDSON LLP
`
`/Robert W. Sacoff/
`_________________________
`Robert W. Sacoff
`Seth I. Appel
`311 S. Wacker Drive, Suite 5000
`Chicago, IL 60606
`Attorneys for Opposer Acer Incorporated
`Lead Opposers’ Counsel in Consolidated
`Opposition
`
`Robert S. Weisbein
`Kelly M. Weiner
`FOLEY & LARDNER LLP
`90 Park Avenue
`New York, NY 10016
`Attorneys for 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
`
`13
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy of the foregoing OPPOSERS’ OPPOSITION TO
`
`APPLICANT’S MOTION TO SUSPEND was served upon Applicant Apple Inc. and Opposer
`
`Samsung Electronics Co., Ltd., via electronic mail to the following attorneys of record, as agreed
`
`among the parties, on January 9, 2013.
`
`Glenn A. Gundersen
`Christine Hernandez
`Dechert LLP
`Cira Centre
`2929 Arch Street
`Philadelphia, PA 19104
`glenn.gundersen@dechert.com, christine.hernandez@dechert.com, trademarks@dechert.com
`Attorneys for Applicant Apple Inc.
`
`Diane J. Mason
`LeClairRyan LLP
`44 Montgomery Street, Eighteenth Floor
`San Francisco, CA 94104
`Diane.Mason@leclairryan.com
`Attorneys for Opposer Samsung Electronics Co., Ltd.
`
`/Seth I. Appel/
`
`CERTIFICATE OF ELECTRONIC TRANSMISSION
`
`I hereby certify that the foregoing OPPOSERS’ OPPOSITION TO APPLICANT’S
`
`MOTION TO SUSPEND is being electronically transmitted to the United States Patent and
`
`Trademark Office on January 9, 2013.
`
`/Seth I. Appel/
`
`14