Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA767360
`
`Filing date:
`
`08/29/2016
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91225088
`
`Party
`
`Correspondence
`Address
`
`Defendant
`Lowenstein and Associates, PC
`
`DALE HEAD
`PHILLIPS & REITER, PLLC
`1300 W SAM HOUSTON PKWY S STE 340
`HOUSTON, TX 77042-2552
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`dhead@outsourcegc.com, info@dmiplaw.com
`
`Withdrawal Of Application
`
`Tanya Taylor
`
`dhead@outsourcegc.com, info@dmiplaw.com
`
`/Tanya Taylor/
`
`08/29/2016
`
`Attachments
`
`Lowenstein Undertaking_Executed.pdf(1061414 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 86f3 56,551
`For the mark: LOANGRADER £5 Design
`Filed: August 4, 2014
`Published: June 2, 2015
`_________________________________________________________“X
`
`APPLE INC ,
`
`:
`
`Opposer,
`
`v.
`
`LOWENSTEIN AND ASSOCIATES, PC,
`
`Applicant.
`_________________________________________________________"X
`
`Opposition No. 91225088
`
`ABANDONMENT OF
`APPLICATION WITH PREJUDICE
`AND MOTION FOR DISMISSAL
`
`ABANDONMENT OF APPLICATION WITH PREJUDICE
`AND MOTION FOR DISMISSAL
`
`Applicant, Lowenstein and Associates, PC, hereby expressly abandons application Serial
`
`No. 86/356,551 for LOANGRADER & Design and moves for the dismissal of this Opposition.
`
`Oppose-r Apple Inc. has not consented to this abandonment with prejudice.
`
`
`
`1 00 W Sam Houston " S Ste 340
`Houston, TX 77042-2552
`Counselfor Applicant
`
`

`

`-
`
`2‘
`
`CONFIDENTIAL UNDERTAKING
`
`A
`") is effective as ofthis L—
`This CONFIDENTIAL UNDERTAKING (the “Undertaking
`11 and Associates, PC, a
`day of
`113qu
`, 2016 (the “EffectiveDate”) by Lowenstei
`corporation rganized and existingunderthelaws ofMissouri andhaving aplace ofbusiness at
`309NorthMain Street, Cameron,Missoriri 64429 (hereinafter, “Lowenstein”) infavor ofApple
`lnc., acorporationorganizedandexistingunderthelaws ofCalifornia andhaving aplaceof
`business at 1 Infinite Loop, Cupertino, California 95104 (hereinafter, “Apple”).
`ensively promot
`red its goods and services
`in connection withApple’s famous APPLE and APPLE-based marks, hich include a logo
`WHEREAS, Apple has ext
`(1 apple with aright-facing detached leafas shown below (collectively, Apple’s
`'
`
`I
`
`WHEREAS, Lowenstein has adopted andhas begunusingthe logo LOANGRADER &
`Apple Design depicted below (the “LOANGRADER & Apple DesignMark") and filed U.S.
`“Application”) on August 4, 2014 to register the
`Trademark Application No. 86/356,551 (the
`and services in
`LOANGRADER & Apple Design Mark in connection with various goods
`'thout limitation, retail and downloadable software and providing
`online non-downloadable software, as set forth inthe Application, areproduction ofwhich is
`Classes 9 and 42, including, W1
`annexed hereto as Exhibit A to this Undertaking;
`
`\I
`
`
`
`LOANGRADER
`
`on of the Applicationat theU.S. Trademark
`WHEREAS, Apple has opposed registrati
`91225088 (the “Oppositi011”);
`Trial and Appeal Board (“TTAB”)by filing Opposition No.
`WHEREAS, Applicant has designed th b l
`'
`mark (the“Amended LOANGRADERDesigiieIi/Igrigiramended LOANGRADER&Begign
`
`v
`
`LOAN G RAD E R"
`
`WHEREAS, Apple and Lowenstein are desirous of resolving this dispute amicably; and
`
`

`

`
`
`NOW, THEREFORE, for good and valuable consideration,the receipt and sufficiency of
`which is hereby acknowledged,and based on the understanding that Apple will not petition to
`cancel or oppose any future application or registration for the Amended LOANGRADER Design
`Mark in connection with “loan portfolio analysis tool that calculates loan loss reserves for
`financial institutions” contingent upon Lowenstein’s compliance with the terms of this
`Undertaking, Lowenstein undertakes to Apple as follows:
`
`Abandonment of the LOANGRADER & Apple Design Mark Application.
`1.
`Lowensteinagrees to sign, date, and file with the TTABthe abandonment and motion paper found
`in Exhibit B to this Undertaking (the “Abandonment and Motion Paper”) and serve a copy ofthe
`Abandonment and Motion i’aper on Apple’s counsel within six '(6) days of the Effective Date.
`
`No Future Applications to Register the LOANGRADER & Apple Design
`2.
`Mark. Lowenstein agrees not to apply for or otherwise seek registration in any jurisdiction for
`
`the LOANGRADER & Apple Design Mark. Lowenstein expressly warrants that it has no
`pending applications and no registrations in any jurisdiction other than the United States for the
`LOANGRADER 8:: Apple Design Mark.
`
`Cessation of Use of the LOANGRADER & Apple Desifl Mark. Lowenstein
`3.
`agrees to permanently remove the LOANGRADER & Apple Design Mark from all websites
`where Lowenstein has posted-or otherwise used the LOANGRADER & Apple Design Mark
`within two (2) weeks of the Effective Date. Lowenstein agrees to permanently cease any and
`allreniaining uses of the LOANGRADER & Apple Design Mark, including any and all uses of
`the LOANGRADER & Apple Design Mark’s apple graphic standing alone (i.e., Lowenstein will
`cease any and all use ofthe apple graphic ofthe LOANGRADER & Apple Design Mark without
`use of the word LOANGRADER), within six (6) months of the Effective Date.
`
`Destruction of Materials Bearing the LOANGRADER & Apple Design
`4.
`Mark. Lowenstein agrees and warrants that within six (6) months of the Effective Date,
`Lowenstein will destroy, or cause to be destroyed, all physical materials, including but not
`limited to, marketing brochures, business cards, letter heads, etc., bearing the LOANGRADER &
`Apple Design o1the LOANGRADER & Apple Design Mark’s apple graphic standing alone.
`
`Future Applications for the Amended LOANGRADER Design Mark.
`5.
`Lowenstein agrees not to use, apply for, or otherwise seek registration in any jurisdiction for the
`Amended LOANGRADER Design Mark except in connection with the following limited goods:
`“loan portfolio analysis tool that calculates loan loss reserves for financial institutions.”
`
`Use of the Amended LOANGRADER Design Mark.Lowenstein agrees not to
`6.
`use the apple graphic element of the Amended LOANGRADER Design Mark except within the
`Amended LOANGRADER Design Mark, which, for the sake of clarity, means Lowenstein
`always will use the apple graphic element ofthe Amended LOANGRADER Design Mark
`together with the term LOANGRADER and never will use the apple element standing alone.
`
`_ Future Marks. Lowenstein agrees not to use, apply for, or otherwise seek
`7.
`registration in anyjurisdiction for any mark that is confusingly similar to any ofApple’s Apple
`Marks.
`
`

`

`3rzz
`
`r
`
`
`
`N0 Ob'ection to A le’s Use or Re ’str‘ation. Lowenstcin consents and
`8.
`undertakes not to oppose or otherwise object to Apple’s use, application, registration, re-
`registration, renewal, or modification ofany and all ofits Apple Marks in connection with any
`
`goods and services.
`cknowleclges and
`9.
`Express Acknowledgement. Lowenstein expressly a
`hall be deemed to constitute Apple’s consent to
`understands that nothing in this Undertaking 5
`Mark by Lowenstein, or any current or
`any prior use of the LOANGRADER & Apple Design
`future use by Lowenstein ofany mark ofany kind, including the Amended LOANGRADER
`
`Design Mark.
`
`Lowenstein shall not state, suggest, or imply in
`No Sponsorship or Affiliation.
`10.
`services are sponsored, licensed, or in any
`any manner that Lowenstein or any of its products or
`Way authorized by, affiliated with, or related to Apple.
`Confidentiality. Lowenstein agrees to keep the terms and previsions ofthis
`1 1 .
`'
`if and the circumstances that led to
`stence of the Undertaking itse
`Undertaking, as Well as the exi
`lawful process or court order. In the
`its eXecution, strictly confidential, except as required by
`event that Lowenstein is required to disclose the terms ofthis Undertaking pursuant to lawful
`process or court order, Lowenstein shall give promptwritten notice to Apple prior to such
`disclosureln addition, Lowenstein may provide its present or future attorneys and accountants
`with copies ofthis Undertaking, and their respective” auditors shall not be precluded from making
`ndertaking to the extent reasonably necessary to comply with
`reference to the terms of this U
`generally accepted auditing standards or generally accepted accounting principles.
`12.
`Entire Agreement. Lowenstein hereby represents, warrants, and undertakes that,
`upon executing and entering this Undertaking, it is not relying upon and has not relied upon any
`representation, promise, or statement made by anyone which is not recited, contained, or
`embodied in this Undertaking and understands that this Undertaking supersedes all prior
`agreements and understandings relating thereto. Lowenstein further agrees that this Undertaking
`shall be binding on Lowenstein’spredecessors, successors, assigns, affiliates, members, officers,
`managers, agents, servants, employees, representatives, and all other persons or entities in active
`concert or participation with any of them.
`13.
`.Opportunity to Consult Counsel. Lowenstein acknowledges that it understands
`the terms ofthis Undertaking and that it has been given the opportunity to engage and consult
`independent counsel regarding its terms.
`14.
`Governing Law. The interpretation and enforcement of this Undertaking shall be
`governed by the laws ofthe State of California. Any disputes arising from this Undertaking shall
`be resolyes in the state or federal courts located in Santa Clara, State of California, United States
`of America. Lowenstem consents to the jurisdiction and venue of such courts.
`
`1.5. Modification. This Undertaking may not be modified in any way except by a
`.
`I
`writing Signed by the party proposing the modification and Apple.
`
`

`

`16.
`
`Territog. This Undertaking shall be effective worldwide.
`
`Authority to Sign. The person signing this Undertaking represents and warrants
`1?.
`that he or she has full and complete authority and authorization to bind Lowenstein and execute
`this Undertaking and to take 01' cause to be taken all acts contemplated by this Undertaking.
`
`Angle’s Reservation of Rights. Lowenstein acknowledges that Apple reserves
`18.
`all rights not expressly granted herein, including, but not limited to, the right to object to any use
`of the Amended LOANGRADER Design Mark that Apple concludes is likely to cause
`confusion, dilution or otherwise Violate Apple’s rights.
`
`Execution.This Undertaking may be executed and exchanged in multiple
`19.
`originals, and photocopies, facsimile and email transmissions, and other reproductions of this
`executed original (with a reproduced signature) shall have the same effect as an original.
`
`IN WITNESS WI-IEREOF this Undertaking is executed as of the date first written
`
`above by or on behalf of Lowenstein.
`
`Lowe
`
`em nd As oeia s, C
`
`By:
`Namezbé U
`Title: REES lbiW
`
`'
`
`4
`
`

`

`
`
`EXHIBIT A
`
`
`
`LOAN G RAD E R
`
`Word Mark LOANGRADER
`Goods and
`1C 009. US 021 023 026 036 038. G & S: Retail and downloadabie softWare for
`Services
`reviewing loans against a comprehensive set of objective and consistent review
`criteria to provide professionals in the banking and accounting industry
`information required to identify problem loans and predict potential impairment.
`FIRST USE: 19910101. FIRST USE IN COMMERCE: 19910101
`
`IC 042. US 100 101. G & S: Providing online non-downloadable software for
`reviewing loans against a comprehensive set of obj ective and consistent review
`criteria to provide professionals in the banking and accounting industry
`information required to identify probiem loans and predict potential impairment.
`FIRST USE: 19910101. FIRST USE IN COMMERCE: 19910101
`
`Mark
`Drawing
`Code
`
`(3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS
`
`Design Search
`Code
`Serial
`
`Number
`
`05.09.05 - Apples
`
`86356551
`
`August 4, 2014
`Filing Date
`Current Basis 1A
`
`Original
`1A
`Filing Basis
`P“bl'si“?d f“ June 2, 2015
`Oppesmon
`Owner
`
`(APPLICANT) Lowenstein and Associates, PC Sub Chapter S Corporation
`MISSOURI 309 North Main Street Cameron MISSOURI 64429
`
`Attorney of
`Record
`Disclaimer
`
`Dale Head
`NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "LOAN
`GRADER" APART FROM THE MARK AS SHOWN
`Description of Color is not claimed as a feature of the mark. The mark consists of an image of
`Mark
`an apple situated just above the words "LOANGRADE ".7
`
`Type of Mark TRADEMARK. SERVICE MARK
`
`

`

`BTIWE
`
`
`
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the Matter of Application Serial No. 86/356,551
`For the mark: LOANGRADER & Design
`Filed: August 4, 2014
`Published: June 2, 2015
`-----------------------------------------------------------X
`APPLE INC.,
`
`
`
`
`
`Opposer,
`
`
` v.
`
`
`LOWENSTEIN AND ASSOCIATES, PC,
`
`
`:
`:
`:
`:
`:
`:
`:
`:
`:
`:
`
`
`
`
`
`Applicant.
`-----------------------------------------------------------X
`
`CERTIFICATE OF MAILING
`
`
`
`
`
`
`
`Opposition No. 91225088
`
`
`
`
`
`
`
`
`
`
`
`
`I hereby certify that this correspondence is being deposited electronically with the
`
`Trademark Trial and Appeal Board, via the Electronic System for Trademark Trials and Appeals
`(ESTTA) on this the 29th day of August 2016.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Tanya Taylor/
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`This is to certify that a copy of the foregoing ABANDONMENT OF APPLICATION
`
`WITH PREJUDICE AND MOTION FOR DISMISSAL has been served upon Opposer’s
`Counsel Joseph Petersen, at the email address provided below on this the 29th day of August
`2016:
`
`
`
`Joseph Petersen, Esq.
`Kilpatrick Townsend & Stockton LLP
`1080 Marsh Road
`Menlo Park, California 94025
`Email: JPetersen@kilpatricktownsend.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Tanya Taylor/
`
`
`
`
`
`
`
`
`
`