Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA763179
`08/08/2016
`
`ESTTA Tracking number:
`
`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
`
`Attorney informa-
`tion
`
`Apple Inc.
`
`08/07/2016
`
`1 Infinite Loop
`Cupertino, CA 95014
`UNITED STATES
`
`Joseph Petersen
`Kilpatrick Townsend & Stockton LLP
`1080 Marsh Road
`Menlo Park, CA 94025
`UNITED STATES
`cgenteman@kilpatricktownsend.com, JPetersen@ktslaw.com, agar-
`cia@ktslaw.com, tmadmin@ktslaw.com Phone:650-326-2400
`
`Applicant Information
`
`Application No
`
`86614768
`
`Publication date
`
`02/09/2016
`
`Opposition Filing
`Date
`
`Applicant
`
`08/08/2016
`
`Opposition Peri-
`od Ends
`
`08/07/2016
`
`Compare.com Insurance Agency LLC
`201 Concourse Blvd., Suite 200
`Glen Allen, VA 23059
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 036. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Providing a website which provides accur-
`ate insurance rate quotes from multipleinsurance companies
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`Trademark Act Sections 2 and 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`1895326
`
`Registration Date
`
`05/23/1995
`
`Word Mark
`
`APPLE
`
`Application Date
`
`05/23/1994
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 036. First use: First Use: 1983/07/00 First Use In Commerce: 1983/07/00
`extension of retail credit services forthe purchase of computers and related ac-
`cessories
`
`U.S. Registration
`No.
`
`3894316
`
`Registration Date
`
`12/21/2010
`
`Word Mark
`
`Design Mark
`
`APPLECARE
`
`Application Date
`
`06/16/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 036. First use: First Use: 1992/12/31 First Use In Commerce: 1992/12/31
`Insurance and warranty services, namely, underwriting warranty and extended
`warranty contracts relating to the maintenance, repair, installation and updating
`of computer hardware, computer peripherals, computer networks and consumer
`electronic devices; Insurance and warranty services, namely, underwriting war-
`ranty andextended warranty contracts relating tothe maintenance, installation
`and updating of computer software; providing extended warranties on computer
`hardware, computer peripherals, computer networks, consumer electronic
`devices and computer software
`
`U.S. Registration
`No.
`
`2820066
`
`Registration Date
`
`03/02/2004
`
`Word Mark
`
`NONE
`
`Application Date
`
`05/29/2003
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the design of an apple with a bite removed.
`
`Class 036. First use: First Use: 1983/07/00 First Use In Commerce: 1983/07/00
`Consumer lending services; retail credit services; retail credit services for the
`purchase of computers, computer software, consumer electronics and related
`accessories; providing information in the fields of investment and finance over
`computer networks and global communicationnetworks; financial services,
`namely, installment loans, lease-purchase financing and loans, and loan finan-
`cing
`
`U.S. Registration
`No.
`
`2683410
`
`Registration Date
`
`02/04/2003
`
`Word Mark
`
`Design Mark
`
`APPLE STORE
`
`Application Date
`
`04/25/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 1997/11/01 First Use In Commerce: 1997/11/01
`Retail store services featuring computers, computer software, computer peri-
`pherals and consumer electronics, and demonstration of products relating
`thereto; online retail store services provided via a global computer network fea-
`turing computers, computer software, computer peripherals and consumer elec-
`tronics, and demonstration of products relating thereto
`
`U.S. Registration
`
`2462798
`
`Application Date
`
`11/23/1999
`
`

`
`No.
`
`Registration Date
`
`06/19/2001
`
`Word Mark
`
`Design Mark
`
`APPLE STORE
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 1997/11/01 First Use In Commerce: 1997/11/01
`online retail store services provided via a global computer network featuring
`computers, computer hardware, computer systems, computer software, com-
`puter peripherals and accessories
`
`U.S. Registration
`No.
`
`2424976
`
`Registration Date
`
`01/30/2001
`
`Word Mark
`
`Design Mark
`
`THE APPLE STORE
`
`Application Date
`
`11/23/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 1997/11/00 First Use In Commerce: 1997/11/00
`online retail store services provided via a global computer network featuring
`computers, computer hardware, computer systems, computer software, com-
`puter peripherals and accessories
`
`U.S. Registration
`No.
`
`2926853
`
`Registration Date
`
`02/15/2005
`
`Word Mark
`
`NONE
`
`Application Date
`
`08/16/2002
`
`Foreign Priority
`Date
`
`02/26/2002
`
`

`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the design of an apple with a bite removed.
`
`Class 035. First use: First Use: 1983/00/00 First Use In Commerce: 1983/00/00
`analysis and consultation in the field of business information management,
`namely, the selection, adoption and operation of computers and computer in-
`formation management systems; providing information in the fields of business
`and commerceover computer networks and global communication networks;
`business services, namely, providing computer databases regarding the pur-
`chase and sale of a wide variety of products and services of others;business
`services, namely, dissemination of advertising for others via computernetworks
`and global communication networks; retail store services featuring computers,
`computer software, computer peripherals and consumer electronics, and
`demonstration of products relating thereto; online retail store services provided
`via computer networks and global communication networks featuring computers,
`computer software, computer peripherals andconsumer electronics, and demon-
`strationof products relating thereto
`Class 039. First use: First Use: 1985/00/00 First Use In Commerce: 1985/00/00
`computerized data storage services; data storage relating to business
`
`U.S. Registration
`No.
`
`3298028
`
`Registration Date
`
`09/25/2007
`
`Word Mark
`
`NONE
`
`Application Date
`
`08/02/2006
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 1981/03/01 First Use In Commerce: 1981/03/01
`Arranging and conducting trade shows, and trade show expositions and exhibi-
`tions in the fields of computers, computer software, online services, information
`technology, and consumer electronics
`Class 041. First use: First Use: 1981/03/01 First Use In Commerce: 1981/03/01
`Education and training services, namely, conducting classes, workshops, con-
`ferences and seminars in the field of computers, computer software, online ser-
`vices,information technology, internet website design, video products and con-
`sumer electronics; arranging of exhibitions, seminars and conferences; arran-
`ging professional workshop and training courses; computer education training
`services; training in the use and operation of computers and computer software;
`providing a website for the uploading, sharing, viewingand posting of photo-
`graphs, digital images, movies, videos, online journals, namely web blogs in
`general interest fields, and other related multimedia entertainment materials
`over a global computer network; providing fitness and exercise facilities; Physic-
`al fitness consultationand instruction; providing on-line publications in the nature
`of newsletters inthe field of computers and education; providing information in
`the field of education via the internet; providing information in the field of enter-
`tainment viathe Internet concerning movies, music, videos, television, celebrit-
`ies, sports,news, history, science, politics, comedy, children's entertainment, an-
`imation, culture, current events
`
`U.S. Registration
`No.
`
`1078312
`
`Registration Date
`
`11/29/1977
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`APPLE
`
`NONE
`
`Application Date
`
`03/25/1977
`
`Foreign Priority
`Date
`
`NONE
`
`Goods/Services
`
`Class 009. First use: First Use: 1976/04/00 First Use In Commerce: 1976/04/00
`
`

`
`COMPUTERS AND COMPUTER PROGRAMS RECORDED ON PAPER AND
`TAPE
`
`U.S. Registration
`No.
`
`3928818
`
`Registration Date
`
`03/08/2011
`
`Word Mark
`
`Design Mark
`
`APPLE
`
`Application Date
`
`05/03/2007
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 1976/04/01 First Use In Commerce: 1976/04/01
`Computer hardware; computer hardware, namely, server, desktop, laptop and
`notebook computers; computer memory hardware;computer disc drives; optical
`disc drives; computer hardware, software and computer peripherals for commu-
`nication between multiple computers and between computers and local and
`global computer networks; computer networking hardware; set top boxes; com-
`puter hardware and computer software for the reproduction, processing and
`streaming of audio, video and multimedia content; computer hardware and soft-
`ware for controlling the operation of audio and video devices and for view-
`ing,searching and/or playing audio, video, television, movies, photographs and
`other digital images, and other multimedia content; computer monitors; liquid
`crystal displays; flat panel display monitors;computer keyboards, cables, mo-
`dems; computer mice; electronic docking stations;stands specially designed for
`holding computer hardware and portable and handheld digital electronic
`devices; batteries; rechargeable batteries; battery chargers; battery packs;
`power adapters for computers; electrical connectors, wires, cables, and ad-
`aptors; wired and wireless remote controls for computers and portable and
`handheld digital electronic devices; headphones and earphones; stereo head-
`phones; in-ear headphones; microphones;audio equipment for vehicles, namely,
`MP3 players; sound systems comprising remote controls, amplifiers, loudspeak-
`ers and components thereof; audio recorders; radio receivers; radio transmitters;
`personal digital assistants; portable digital audio and video players; electronic
`organizers; cameras; telephones; mobile phones; videophones; computer gam-
`ing machines, namely, stand-alone video gaming machines; handheld and mo-
`bile digital electronic devices for the sending and receiving of telephone calls,
`electronic mail and other digital media; MP3 and otherdigital format audio and
`video players;portable and handheld digital electronic devices for recording, or-
`ganizing, transmitting, receiving, manipulating, playing and reviewing text, data,
`image, audio and video files; a full line of electronic and mechanical parts and
`fitting for portable and handheld digital electronic devices for recording, organiz-
`ing, transmitting, receiving, manipulating, playing and reviewing text, data, im-
`age, audio and video files, namely, headphones, microphones, remote controls,
`batteries, battery chargers, devices for hands-free use, keyboards, adapters;
`parts and accessories for mobile telephones, namely, mobile telephone covers,
`mobile telephone cases, mobile telephone covers madeof cloth or textile materi-
`als, mobile telephone batteries, mobile telephone battery chargers, headsets for
`
`

`
`mobile telephones, devices for hands-free use of mobile telephones; carrying
`cases, sacks, and bags, all for use with computers and portable and handheld
`digital electronicdevices; operating system programs; computer utility programs
`for computer operating systems; a full line of computer software for business,
`home, education, and developer use; computer software for use in organizing,
`transmitting, receiving, manipulating, playing and reviewing text, data, image,
`audio, and video files; computer programs for personal information manage-
`ment; database management software; character recognition software; electron-
`ic mail and messaging software; telecommunications software for connecting
`wireless devices, mobile telephones, handheld digital electronic devices, com-
`puters, laptop computers, computer network users, global computer networks;
`database synchronization software; computer programs for accessing, browsing
`and searching online databases; computer software to develop other computer
`software; computer software for use as a programming interface; computer soft-
`ware for use in network server sharing; local and widearea networking software;
`computer software for matching, correction, and reproduction of color; computer
`software for use in digital video and audio editing; computer software for use in
`enhancing text and graphics; computer software for use in font justification and
`font quality; computer software for use to navigate and search a global computer
`information network; computer software for use inword processing and database
`management; word processing software incorporatingtext, spreadsheets, still
`and moving images, sounds and clip art; computer software for use in authoring,
`downloading, transmitting, receiving, editing, extracting, encoding, decoding,
`playing, storing and organizing audio, video, still images and other digital media;
`computer software for analyzing and troubleshooting other computer software;
`computer graphics software; computer search engine software; website devel-
`opment software; computer software for remote viewing, remote control, com-
`munications and software distribution within personal computer systems and
`across computer networks; computer programs for file maintenance and data re-
`covery; computer software for recording and organizing calendars and sched-
`ules, to-do lists, and contact information; computer software for clock and alarm
`clock functionality; computer softwareand prerecorded computer programs for
`personal information management; electronic mail and messaging software;
`computerprograms for accessing, browsing and searching online databases;
`computer software and firmware for operating system programs; blank computer
`storage media; user manuals in electronically readable, machine readable or
`computer readable form for use with, and sold as a unit with,all the aforemen-
`tioned goods; instructional manuals packaged in association with the above
`
`U.S. Registration
`No.
`
`1114431
`
`Registration Date
`
`03/06/1979
`
`Word Mark
`
`NONE
`
`Application Date
`
`03/20/1978
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`THE MARK CONSISTS OF A SILHOUETTE OF ANAPPLE WITH A BITE RE-
`MOVED.
`
`Class 009. First use: First Use: 1977/01/00 First Use In Commerce: 1977/01/00
`COMPUTERS AND COMPUTER PROGRAMS RECORDED ON PAPER AND
`TAPE
`
`U.S. Registration
`No.
`
`2715578
`
`Registration Date
`
`05/13/2003
`
`Word Mark
`
`Design Mark
`
`NONE
`
`Application Date
`
`07/01/2002
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 1977/01/01 First Use In Commerce: 1977/01/01
`Computers hardware; computer hardware, namely, server, desktop, laptop,
`notebook and subnotebook computers; hand held and mobile computers; com-
`puter [ terminals and ] monitors; personal digital assistants; portable digital audio
`players; electronic organizers; computer keyboards, cables, [ modems; ] audio
`speakers; computer video control devices, namely, computer mice, [ trackballs,
`joysticks andgamepads; ] a full line of computer software for business, home,
`education, anddeveloper use; computer programs for personal information man-
`agement; database management software; [ character recognition software;
`telephony management software; ] electronic mail and messaging software; [
`telecommunications software, namely, for paging; ] database synchronization
`software; computer programs for accessing, browsing and searching online
`databases; operating system software; application development tool programs;
`blank computer storage media; fonts, typefaces, type designs and symbols re-
`corded onmagnetic media; computer software for use in providing multiple user
`access to a global computer information network for searching, retrieving, trans-
`ferring, manipulating and disseminating a wide range of information; computer
`software foruse as a programming interface; computer software for use in net-
`work server sharing; local and wide area networking software; computer soft-
`ware for matching, correction, and reproduction of color; computer software for
`use in digital videoand audio editing; computer software for use in enhancing
`text and graphics; computer software for use in font justification and font quality;
`computer software for use to navigate and search a global computer information
`network, as well as to organize and summarize the information retrieved; com-
`puter software for use in word processing and database management; word pro-
`cessing software incorporating text, spreadsheets, still and moving images,
`sounds and clip art; computer software for use in authoring, downloading, trans-
`mitting, receiving, editing, extracting, encoding, decoding, playing, storing and
`organizing audio, video, still images and other digital data; computer software for
`analyzing and troubleshooting other computer software; children'seducational
`software; computer game software; Computer graphics software; [ Computer
`search engine software; ] Web sitedevelopment software; computer program
`which provides remote viewing, remote control, communications and software
`distribution within personal computer systemsand across computer network;
`computer programs for file maintenance and data recovery; computer peripher-
`als; instructional manuals packaged in association withthe above
`
`U.S. Registration
`No.
`
`3679056
`
`Registration Date
`
`09/08/2009
`
`Word Mark
`
`NONE
`
`Application Date
`
`01/13/2009
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the design of an apple with a bite removed.
`
`Class 009. First use: First Use: 1977/01/31 First Use In Commerce: 1977/01/31
`Computers; computer hardware; computer peripherals; handheld computers;
`handheld mobile digital electronic devices for recording, organizing, transmitting,
`manipulating, and reviewing text, data, image, audio, and audiovisual files, for
`the sending and receiving of telephone calls, electronic mail, and other digital
`data, for use as a digital format audio player, handheld computer, personal digit-
`al assistant, electronic organizer, electronic notepad, camera, and global posi-
`tioning system (GPS) electronic navigation device; digital audio and video re-
`corders and players; personal digital assistants; electronic organizers; cameras;
`telephones; mobile phones; satellite navigational systems, namely, global posi-
`tioning systems (GPS); electronic navigational devices, namely, global position-
`ing satellite (GPS) based navigation receivers; computer game machines for use
`with external display screens, monitors, or televisions; a full line of accessories
`and parts for the aforementioned goods; stands, covers, cases, holsters, power
`adaptors, and wired and wireless remote controls for the aforementioned goods;
`computer memory hardware; computer disc drives; optical disc drives; computer
`networking hardware; computer monitors; flat panel display monitors; computer
`keyboards; computer cables; modems; computer mice; electronic docking sta-
`tions; set top boxes; batteries; battery chargers; electrical connectors, wires,
`cables, and adaptors; devices for hands-free use; headphones; earphones; ear
`buds; audio speakers; microphones; and headsets; a full line of computer soft-
`ware for business, home, education, and developer use; user manuals for use
`with, and sold as a unitwith, the aforementioned goods; downloadable audio and
`video files, movies, ring tones, video games, television programs, pod casts and
`audio books via the internet and wireless devices featuring music, movies,
`videos, television, celebrities, sports, news, history, science, politics, comedy,
`children's entertainment,animation, culture, current events and topics of general
`interest
`
`Attachments
`
`77499807#TMSN.png( bytes )
`78255986#TMSN.png( bytes )
`76400649#TMSN.png( bytes )
`
`

`
`75857151#TMSN.png( bytes )
`75857191#TMSN.png( bytes )
`78155188#TMSN.png( bytes )
`78943482#TMSN.png( bytes )
`77172511#TMSN.png( bytes )
`73162799#TMSN.png( bytes )
`76426501#TMSN.png( bytes )
`77648705#TMSN.png( bytes )
`Notice of Opposition NOO - APPLES TO APPLESm - Ser. No.
`86614768.pdf(71168 bytes )
`Exhibit 1 - to NOO -APPLES TO APPLES - Ser. No. 86614768.pdf(852437
`bytes )
`Exhibit 2 - to NOO - APPLES TO APPLES - Ser. No. 86614768.pdf(1970266
`bytes )
`Exhibit 3 - to NOO - APPLES TO APPLES - Ser. No. 86614768.pdf(2156066
`bytes )
`Exhibit 4 - to NOO - APPLES TO APPLES - Ser. No. 86614768.pdf(4143505
`bytes )
`Exhibit 5 - to NOO - APPLES TO APPLES - Ser. No. 86614768.pdf(1518642
`bytes )
`Exhibit 6 - to NOO - APPLES TO APPLES - Ser. No. 86614768.pdf(3069357
`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
`
`/Joseph Petersen/
`
`Joseph Petersen
`
`08/08/2016
`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Application Serial Nos. 86/614,768
`For the mark: APPLES TO APPLES
`
`Filed: April 29, 2015 and April 29, 2015
`Published: February 16, 2016 and February 9, 2016
`
`--------------------------------------------------------------X
`
`APPLE INC.,
`
`:
`
`
`: Opposition No.
`
`:
`
`:
`
`:
`NOTICE OF OPPOSITION
`:
`:
`:
`:
`:
`:
`
`Applicant.
`--------------------------------------------------------------X
`
`APPLE INC. (“Apple” or “Opposer”), a corporation organized and existing under the
`
`
`
`
`
`
`
`
`
`
`
`
`
`Opposer,
`
`
` v.
`
`
`Compare.com Insurance Agency LLC,
`
`
`
`
`laws of California with a principal place of business at 1 Infinite Loop, Cupertino, California
`
`95014, believes that it will be damaged by the issuance of a registration in Class 36 for the
`
`APPLES TO APPLES trademark underlying Application Serial No. 86/614,768, filed by
`
`Compare.com Insurance Agency LLC (“Applicant”) and covering “providing a website which
`
`provides accurate insurance rate quotes from multiple insurance companies” (the “Application”),
`
`and hereby opposes the same.
`
`
`
`As grounds for its opposition, Opposer alleges as follows, with knowledge concerning its
`
`own acts, and on information and belief as to all other matters:
`
`1.
`
`Opposer is the world-famous designer, manufacturer, and distributor of personal
`
`computers, mobile communication and media devices, digital media players, and many other
`
`goods and services, and Opposer’s APPLE brand is one of the best known brands in the world.
`
`Opposer designs, manufactures, renders, and/or markets in interstate and international commerce
`
`
`
`

`
`
`
`a broad line of technology-related goods and services. Opposer sells its products worldwide
`
`through its retail stores, online retail platforms, and direct sales force, as well as through third-
`
`party cellular network carriers, wholesalers, retailers, and value-added resellers. Opposer also
`
`has long offered credit, lending, insurance, and warranty services.
`
`2.
`
`Since at least as early as 1977, Opposer has extensively promoted, marketed,
`
`advertised, distributed, sold and/or rendered goods and services in connection with a family of
`
`trademarks consisting, in whole or in part, of the word APPLE and/or a visual equivalent of the
`
`word, to wit a logo depicting a stylized apple with a “bite” and a detached leaf, as shown below:
`
`(the “Apple Logo”) (collectively, the “Apple Marks”).
`
`
`
`3.
`
`Opposer’s family of Apple Marks are distinctive, arbitrary and fanciful marks that
`
`have achieved an extraordinary level of fame and consumer recognition. As a result of
`
`Opposer’s extensive advertising, promotion, and use of the Apple Marks in connection with a
`
`variety of goods and services, the Apple Marks have acquired enormous goodwill, and have
`
`come to be identified immediately with Opposer as the source of its goods and services.
`
`4.
`
`The Apple Marks are famous under the Lanham Act, specifically 15 U.S.C.
`
`§ 1125 et seq., and are among the most valuable trademarks in the world. The extraordinary
`
`level of fame and consumer recognition that the Apple Marks currently enjoy cannot be seriously
`
`disputed.
`
`5.
`
`For many years, Opposer’s APPLE brand (including the Apple Logo) has
`
`consistently been recognized as one of the world’s most famous brands. In May 2016, Forbes
`
`
`
`2
`
`

`
`
`
`magazine ranked the APPLE brand as the world’s most valuable brand for the sixth year in a
`
`row, with an estimated valuation of $154.1 billion, 87% more than second-ranked Google.
`
`Attached as Exhibit 1 are printouts of Forbes magazine’s articles regarding its list of the most
`
`valuable brands from 2016, 2015, 2014, 2013, 2012, and 2011, obtained from its website.
`
`6.
`
`In 2016, for the fifth consecutive year, Apple won the Harris Interactive “Brand
`
`of the Year” award in the tablet computer category, beating out its competitors, and was also
`
`named the #1 brand in the categories of computer manufacturer, mobile operating system,
`
`operating system, smartphones, and online computer retailer. Attached as Exhibit 2 is a printout
`
`of
`
`the
`
`Harris
`
`Interactive
`
`report
`
`obtained
`
`from
`
`the
`
`website
`
`at
`
`http://www.theharrispoll.com/business/2016-Brands-of-the-Year.html.
`
`7.
`
`In addition, Interbrand has consistently recognized Opposer’s APPLE brand as
`
`belonging in the top 50 of the world’s most valuable brands, increasing in value each year. In
`
`2013, the APPLE brand took the top spot for the first time as the most valuable brand in the
`
`world, and has maintained this number one position for the 2014 and 2015 rankings. The rise to
`
`the number one position came after an increase in Apple’s position in 2012 from 8th (2011) to 2nd
`
`(2012), with the biggest growth in estimated brand value in Interbrand’s 2012 rankings: 129%.
`
`Previously, the APPLE brand rose nine spots in Interbrand’s rankings—from 17th (2010) to 8th
`
`(2011)—and increased in estimated brand value by 58%. Attached as Exhibit 3 are copies of
`
`relevant pages of Interbrand’s “Best Global Brands” rankings, in reverse chronological order
`
`from 2015 through 2010. Interbrand has given the APPLE brand the following rankings and
`
`U.S. dollar values over the past five years:
`
`i.
`
`ii.
`
`2015: valuing the APPLE brand as the most valuable brand in the world, with an
`estimated brand worth of U.S. $170.28 billion.
`
`2014: valuing the APPLE brand as the most valuable brand in the world, with an
`estimated brand worth of U.S. $118.86 billion.
`
`
`
`3
`
`

`
`
`
`iii.
`
`iv.
`
`v.
`
`vi.
`
`
`8.
`
`
`2013: valuing the APPLE brand as the most valuable brand in the world, with an
`estimated brand worth of U.S. $98.316 billion.
`
`2012: valuing the APPLE brand as the 2nd most valuable brand in the world,
`with an estimated brand worth of U.S. $76.568 billion.
`
`2011: valuing the APPLE brand as the 8th most valuable brand in the world, with
`an estimated brand worth of U.S. $33.492 billion.
`
`2010: valuing the APPLE brand as the 17th most valuable brand in the world,
`with an estimated brand worth of U.S. $21.143 billion.
`
`Over the past eight years, Millward Brown Optimor (“MBO”), a leading market
`
`research and brand valuation and management company, has found APPLE to be one of the
`
`world’s top brands in MBO’s “Brandz™ Top 100 Most Valuable Global Brands,” an annual
`
`assessment of the 100 most valuable brands in the world. In MBO’s 2016 rankings, Opposer’s
`
`APPLE brand was ranked as the world’s second most valuable brand with a value of $228.5
`
`billion. In 2015, Apple ranked as the world’s most valuable brand, a rank it also held in 2011,
`
`2012, and 2013. Opposer’s APPLE brand ranked 2nd in 2014, 3rd in 2010, 6th in 2009, and 7th
`
`in 2008, clearly demonstrating that the APPLE brand has been recognized as one of the world’s
`
`most valuable brands for nearly a decade. Attached as Exhibit 4 are copies of relevant pages of
`
`MBO’s rankings in reverse chronological order from 2016 through 2008.
`
`9.
`
`Opposer also has been widely recognized as an extremely valuable, innovative,
`
`and admired company. Each year since 2006, Fortune Magazine has published its list of “Most
`
`Admired Companies.” Opposer has featured prominently in these rankings each year, and for
`
`eight years in a row from 2009 to 2016, it was named the “World’s Most Admired Company” for
`
`the year. Before 2009, Fortune Magazine’s list was limited to “America’s Most Admired
`
`Companies,” and Opposer also topped this list in 2008. Attached as Exhibit 5 are true and
`
`
`
`4
`
`

`
`
`
`correct copies of printouts of relevant pages of Fortune Magazine’s “Most Admired Companies”
`
`rankings in reverse chronological order from 2016 through 2008.
`
`10.
`
`Opposer is the owner of numerous United States registrations on the Principal
`
`Register for the Apple Marks, including, without limitation, the following registrations:
`
`TRADEMARK
`
`REG. NO.
`
`APPLE
`
`1,895,326
`
`APP. DATE/
`REG. DATE
`
`May 23, 1994/
`May 23, 1995
`
`APPLECARE
`
`3,894,316
`
`June 16, 2008/
`Dec. 21, 2010
`
`2,820,066
`
`May 29, 2003/
`March 2, 2004
`
`
`
`APPLE STORE
`
`2,683,410
`
`Apr. 25, 2002/
`Feb. 4, 2003
`
`APPLE STORE
`
`2,462,798
`
`THE APPLE STORE
`
`2,424,976
`
`Nov. 23, 1999/
`Jun. 19, 2001
`
`Nov. 23, 1999/
`Jan. 30, 2001
`
`
`
`5
`
`GOODS/SERVICES
`(FIRST USE/PRIORITY DATE)
`Class 36: extension of retail credit services for
`the purchase of computers and related
`accessories (first used July 1983)
`Class 36: Insurance and warranty services,
`namely, underwriting warranty and extended
`warranty contracts relating to the maintenance,
`repair, installation and updating of computer
`hardware, computer peripherals, computer
`networks and consumer electronic devices;
`Insurance and warranty services, namely,
`underwriting warranty and extended warranty
`contracts relating to the maintenance,
`installation and updating of computer software;
`providing extended warranties on computer
`hardware, computer peripherals, computer
`networks, consumer electronic devices and
`computer software. (first used July 1983)
`Class 36: Consumer lending services; retail
`credit services; retail credit services for the
`purchase of computers, computer software,
`consumer electronics and related accessories;
`providing information in the fields of investment
`and finance over computer networks and global
`communication networks; financial services,
`namely, installment loans, lease-purchase
`financing and loans, and loan financing (first
`used July 1983).
`Class 35: Retail store services featuring
`computers, computer software, computer
`peripherals and consumer electronics, and
`demonstration of products relating thereto;
`online retail store services provided via a global
`computer network featuring computers,
`computer software, computer peripherals and
`consumer electronics, and demonstration of
`products relating thereto (first used Nov. 1,
`1997)
`Class 35: Online retail store services provided
`via a global computer network featuring
`computers, computer hardware, computer
`systems, computer software, computer
`peripherals and accessories (first used Nov. 1,
`1997)
`Class 35: Online retail store services provided
`via a global computer network featuring
`
`

`
`GOODS/SERVICES
`(FIRST USE/PRIORITY DATE)
`computers, computer hardware, computer
`systems, computer software, computer
`peripherals and accessories (first used Nov.
`1997)
`Class 35: Analysis and consultation in the field of
`business information management, namely, the
`selection, adoption and operation of computers and
`computer information management systems;
`providing information in the fields of business and
`commerce over computer networks and global
`communication networks; business services,
`namely, providing computer databases
`regarding the purchase and sale of a wide
`variety of products and services of others;
`business services, namely, dissemination of
`advertising for others via computer networks
`and global communication networks; retail
`store services featuring computers, computer
`software, computer peripherals and consumer
`electronics, and demonstration of products
`relating thereto; online retail store services
`provided via computer networks and global
`communication netwo