`
`ESTTA Tracking number:
`
`ESTTA890693
`
`Filing date:
`
`04/18/2018
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91199897
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Plaintiff
`Samsung Electronics, Ltd.
`
`MICHAEL T ZELLER
`QUINN EMANUEL URQUHART SULLIVAN LLP
`865 SOUTH FIGUEROA STREET, 10TH FLOOR
`LOS ANGELES, CA 90017-2543
`UNITED STATES
`Email: michaelzeller@quinnemanuel.com, margretcaruso@quinnemanuel.com
`
`Other Motions/Papers
`
`Michael T. Zeller
`
`michaelzeller@quinnemanuel.com, margretcaruso@quinnemanuel.com, jessi-
`carose@quinnemanuel.com
`
`Signature
`
`Date
`
`/Michael T. Zeller/
`
`04/18/2018
`
`Attachments
`
`4.18.18 Samsing Status Update to TTAB.pdf(50996 bytes )
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In re Application Serial No.: 85041463
`
`
`
`
`
`
`Opposition No. 91199897
`
`
`
`
`
`
`
`
`May 18, 2010
`April 19, 2011
`
`(cid:1)
`
`(cid:1) F
`
`
`iled:
`Date Published:
`
`
`
`SAMSUNG ELECTRONICS CO. LTD.,
`
`
`
` Opposer,
`
`v.
`
`
`APPLE INC.
`
` Applicant.
`
`
`
`
`
`
`
`OPPOSER’S STATUS UPDATE AS TO THE CIVIL ACTION
`
`
`
`Opposer Samsung Electronics Co. Ltd. (“Samsung”) respectfully submits this status
`
`update as to the civil action that occasioned the suspension of this proceeding, as directed by the
`
`Board’s Order dated April 11, 2018.
`
`
`
`Proceedings in this matter were stayed pending the resolution of Apple, Inc. v. Samsung
`
`Electronics Co., Ltd. et al., Case No. 11-cv-1846, in the United States District Court for the
`
`Northern District of California (the “Civil Action”). On March 6, 2014, the District Court in the
`
`Civil Action issued a final judgment, from which both parties appealed. These appeals were
`
`heard by the United States Court of Appeals for the Federal Circuit under docket numbers 14-
`
`
`
`
`
`
`
`1335 and 14-1368. On May 18, 2015, after briefing and oral argument, the Federal Circuit
`
`issued its decision. Apple Inc. v. Samsung Electronics Co., Ltd., 786 F.3d 983 (2015). The
`
`Federal Circuit held, among other things, that Apple’s asserted registered and unregistered
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`iPhone trade dresses, which included square icons with rounded edges, were functional and
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`therefore unprotectable. Id. at 990-96. This ruling of unprotectability on functionality grounds
`
`extended specifically to Apple’s icons (id. at 993-96) — the same element at issue in this
`
`Opposition proceeding.
`
`
`
`Although neither Apple nor Samsung has sought further review of the Federal Circuit’s
`
`relevant trade dress rulings, Samsung filed a petition for a writ of certiorari in the U.S. Supreme
`
`Court seeking review of the Federal Circuit’s judgment regarding design patent infringement and
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`damages. The U.S. Supreme Court granted Samsung’s petition with respect to design patent
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`damages. See Samsung Elecs. Co. v. Apple Inc., 136 S. Ct. 1453 (Mar. 21, 2016).
`
`
`
`On December 6, 2016, the Supreme Court issued its opinion, reversing the judgment of
`
`the Federal Circuit and remanding for further proceedings. Samsung Elecs. Co. v. Apple Inc.,
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`137 S. Ct. 429 (2016). On February 7, 2017, the Federal Circuit in turn remanded the case to the
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`District Court for further proceedings. See Civil Action, ECF No. 3483 (Opinion and Judgment
`
`of Federal Circuit). The Civil Action is still pending in the District Court. The District Court
`
`has set trial on issues relating to design-patent damages for May 14, 2018.
`
`
`
`Because the Civil Action that occasioned the suspension of the instant Opposition
`
`proceedings is still ongoing, Samsung respectfully suggests that these proceedings remain
`
`suspended until all matters associated with the Civil Action are finally and fully concluded.
`
`
`
`2
`
`
`
`
`
`Dated: April 18, 2018 Los Angeles, California
`
`
`
`
`
`
`
`Quinn Emanuel Urquhart & Sullivan, LLP
`
`
`
`
`
`/s/ Michael T. Zeller
`By:
`Michael T. Zeller
`michaelzeller@quinnemanuel.com
`865 South Figueroa Street, 10th Floor
`Los Angeles, California 90017-2543
`Phone: (213) 443-3000
`Fax: (213) 443-3100
`
`
`Attorneys For Opposer
`SAMSUNG ELECTRONICS CO., LTD.
`
`
`
`3
`
`
`
`
`
`Certificate of Service
`
`I, Jessica Rose, hereby certify that a true and correct copy of the foregoing Opposer’s
`
`Status Update As To The Civil Action has been duly served by mailing such a copy first class,
`postage paid to Glenn A. Gunderson, Dechert LLP, Cira Centre, 2929 Arch Street, Philadelphia,
`PA 19104-2808 on April 18, 2018.
`
`
`
`Dated: April 18, 2018
`
`
`
`
`By: ________________________
`
`Jessica Rose
`
`
`
`
`
`
`
`4
`
`
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