Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA620656
`ESTTA Tracking number:
`08/11/2014
`
`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 ex-
`tension
`Address
`
`Navis, Inc.
`08/10/2014
`
`31029 Center Ridge Rd.
`Westlake, OH 44145
`UNITED STATES
`
`Attorney informa-
`tion
`
`Thomas A. Walsh
`Ice Miller LLP
`One American SquareSuite 2900
`Indianapolis, IN 46282
`UNITED STATES
`ipdocket@icemiller.com, thomas.walsh@icemiller.com, maur-
`ine.knutsson@icemiller.com Phone:3172362100
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85971004
`08/11/2014
`
`Publication date
`Opposition Peri-
`od Ends
`
`02/11/2014
`08/10/2014
`
`Qualcomm Incorporated
`5775 Morehouse Drive
`San Diego, CA 921211714
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: portable electronic devices for transmitting
`and reviewing text, data, image, and audio files; hands free devices for mobile phones; battery char-
`gers
`Class 014. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Smart watches; a wristwatch featuring
`apersonal communication hub
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Application
`No.
`
`86211724
`
`Application Date
`
`03/05/2014
`
`
`ESTTA620656
`ESTTA Tracking number:
`08/11/2014
`
`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 ex-
`tension
`Address
`
`Navis, Inc.
`08/10/2014
`
`31029 Center Ridge Rd.
`Westlake, OH 44145
`UNITED STATES
`
`Attorney informa-
`tion
`
`Thomas A. Walsh
`Ice Miller LLP
`One American SquareSuite 2900
`Indianapolis, IN 46282
`UNITED STATES
`ipdocket@icemiller.com, thomas.walsh@icemiller.com, maur-
`ine.knutsson@icemiller.com Phone:3172362100
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85971004
`08/11/2014
`
`Publication date
`Opposition Peri-
`od Ends
`
`02/11/2014
`08/10/2014
`
`Qualcomm Incorporated
`5775 Morehouse Drive
`San Diego, CA 921211714
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: portable electronic devices for transmitting
`and reviewing text, data, image, and audio files; hands free devices for mobile phones; battery char-
`gers
`Class 014. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Smart watches; a wristwatch featuring
`apersonal communication hub
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Application
`No.
`
`86211724
`
`Application Date
`
`03/05/2014
`
`
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`TOQ
`
`NONE
`
`Class 014. First use: First Use: 2013/01/31 First Use In Commerce: 2013/01/31
`Watches and jewelry
`
`Related Proceed-
`ings
`
`91215277
`
`Attachments
`
`86211724#TMSN.png( bytes )
`004.PDF(24037 bytes )
`
`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.
`
`Certificate of Service
`
`Signature
`Name
`Date
`
`/thomasawalsh/
`Thomas A. Walsh
`08/11/2014
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Trademark Serial No. 85/971,004
`
`For the Mark QUALCOMM TOQ
`Filed on June 26, 2013
`Published in Oflicial Gazette: February 11, 2014
`
`Navis, Inc.,
`
`Opposer
`
`V.
`Qualcomm Incorporated,
`Applicant
`
`Opposition No.:
`
`)
`
`3
`j
`j
`3
`
`NOTICE OF OPPOSITION
`
`Navis, Inc., an Ohio corporation, having a place of business at 31029 Center Ridge Rd.,
`
`Westlake, OH 44145 ("Opposer"), believes that it will be damaged by the registration of the
`
`above-identified QUALCOMM TOQ mark, and hereby opposes the same. The application for
`
`the QUALCOMM TOQ mark is owned by Qualcomm Incorporated, which is a Delaware
`
`corporation, having a place of business at 5775 Morehouse Drive, San Diego, California 92121-
`
`1714 ("Applicant"). The grounds for opposition are as follows:
`
`1.
`
`Opposer produces and sells a variety of incentive products including watches and
`
`jewelry. Opposer's products are sold throughout the United States.
`2.
`Opposer is the owner of the TOQ trademark, which Opposer uses in connection with
`
`several products, including watches and jewelry.
`
`3.
`
`Opposer is the owner of U.S. Trademark Application Serial No. 86/211,724, which
`
`Opposer filed with the United States Patent and Trademark Office on March 5, 2014, for the
`
`trademark TOQ in Class 14 for "watches and jewelry."
`
`I/365261l.1
`
`
`
`4.
`
`Opposer has been using the TOQ mark to identify the source of its products in
`
`commerce since at least as early as January 2013. Since that time, Opposer has established
`
`substantial goodwill in the TOQ mark.
`
`5.
`
`The TOQ mark has come to indicate and stand for the high quality products offered
`
`by Opposer.
`
`6.
`
`As a result of the extensive use of the TOQ mark by Opposer, the TOQ mark has
`
`become, and continues to be, a valuable property right of Opposer.
`
`7.
`
`The description of goods for the QUALCOMM TOQ application indicates that
`
`Applicant has a bona fide intent
`
`to sell “portable electronic devices for transmitting and
`
`reviewing text, data, image, and audio files; hands free devices for mobile phones; battery
`
`chargers” and “Smart watches; a wristwatch featuring a personal communication hub” in
`
`connection with the QUALCOMM TOQ mark.
`
`8.
`
`The QUALCOMM TOQ application was filed by Applicant under Section 1(b) and
`
`Applicant did not provide the USPTO with evidence of its use of the QUALCOMM TOQ mark
`
`in commerce. However, upon information and belief, Applicant
`
`is currently using the
`
`QUALCOMM TOQ mark in commerce.
`
`9.
`
`Upon information and belief, Opposer‘s actual, continuous, and continuing use of the
`
`TOQ mark began before Applicantbegan using its QUALCOMM TOQ mark in commerce.
`
`10.
`
`Because of the similarities between the TOQ mark and the QUALCOMM TOQ mark
`
`(as well as the similarities between Opposer‘s and Applicant's products and target markets), the
`
`use and registration of the QUALCOMM TOQ mark is likely to result in confusion and
`
`substantial damage and injury to Opposer. Persons familiar with Opposer‘s TOQ mark are _likely
`
`to buy Applicant's products under the mistaken belief that they originate with, or are licensed,
`
`I/365261 1.1
`
`
`
`sponsored or approved by Opposer. Any such confusion would inevitably result in loss of sales
`
`to Opposer, and tarnish Opposer's goodwill and reputation established in the TOQ mark.
`
`WHEREFORE, Opposer prays that the application for Trademark Serial No. 85/971,004
`
`be rejected.
`
`Dated this 11th day of August 2014.
`
`Respectfully submitted,
`
`By: s/Thomas A. Walsh
`Attorney for Opposer
`Thomas A. Walsh
`
`ICE MILLER LLP
`
`One American Square
`Suite 2900
`
`Indianapolis, Indiana 46282-0200
`(317) 236-2100
`
`I/365261 1.1
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on August 11, 2014 the foregoing Notice of
`Opposition was served by first-class United States mail, postage prepaid upon the following:
`
`N. Christopher Norton
`Arent Fox LLP
`
`1717 K St NW
`
`Washington, District Of Columbia 20036-5342
`
`By: s/Thomas A. Walsh
`Thomas A. Walsh
`
`Attorneyfor Opposer
`
`I/365261 1.1
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