Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA Tracking number:
`ESTTA763825
`08/10/2016
`
`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
`
`Domestic Rep-
`resentative
`
`BlackBerry Limited
`08/10/2016
`
`2200 University Avenue East
`Waterloo, ON N2K0A7
`CANADA
`
`G. Roxanne Elings
`Davis Wright Tremaine LLP
`1251 Avenue of the Americas
`New York, NY 10020-1104
`UNITED STATES
`roxanneelings@dwt.com, orrinfalby@dwt.com, lisakeith@dwt.com, daniel-
`letoaltoan@dwt.com, blackberry@dwt.com, blackberryrecords@dwt.com
`Phone:2126036416
`
`Publication date
`Opposition Peri-
`od Ends
`
`04/12/2016
`08/10/2016
`
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicants
`
`86806266
`08/10/2016
`
`Fowler, Stuart
`#140
`Melbourne, FL 32935
`UNITED STATES
`
`Starler, David
`#140
`Melbourne, FL 32935
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 2015/06/16 First Use In Commerce: 2015/06/16
`All goods and services in the class are opposed, namely: Computer software and hardware for
`streaming content media
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution by blurring
`Dilution by tarnishment
`False suggestion of a connection with persons,
`
`Trademark Act Section 2(d)
`Trademark Act Sections 2 and 43(c)
`Trademark Act Sections 2 and 43(c)
`Trademark Act Section 2(a)
`
`

`
`living or dead, institutions, beliefs, or national
`symbols, or brings them into contempt, or disrep-
`ute
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`3102687
`
`06/13/2006
`
`Word Mark
`Design Mark
`
`BLACKBERRY
`
`Application Date
`
`09/03/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2004/06/23 First Use In Commerce: 2004/06/23
`Electronic handheld units and accessories therefore, namely, batteries, cases,
`battery chargers, holsters and antennas,for the wireless receipt and/or transmis-
`sion of data and which may also have the capability to transmit and receive
`voice communications, namely handheld computers and personal digital assist-
`ants; computer communications software for the transmission and/or reception
`of messages, global computer network e-mail, and/orother data between one or
`more electronic handheld units and a data store on orassociated with a personal
`computer or a server; computer communication software for the synchronization
`of data between a remote station or unit and a fixed or remote station or unit and
`software which enables and provides one-way and/or two-way wireless con-
`nectivity to data, including corporate data
`Class 038. First use: First Use: 2004/06/23 First Use In Commerce: 2004/06/23
`e-mail service; wireless data messagingservices, particularly services that en-
`able a user to send and/or receive messages through a wireless data network;
`one-way and two-way paging services; transmission and reception of voice com-
`munication services
`Class 041. First use: First Use: 2004/06/23 First Use In Commerce: 2004/06/23
`consulting and educational services namely, classes, seminars and conferences
`for the purpose of providing information to third parties to assist them in develop-
`ing and integrating one way or two waywireless connectivity to data, including
`corporate data, and/or voice communications
`
`U.S. Registration
`No.
`Registration Date
`
`3715717
`
`11/24/2009
`
`Word Mark
`Design Mark
`
`BLACKBERRY
`
`Application Date
`
`03/27/2007
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`NONE
`
`

`
`Goods/Services
`
`Class 035. First use: First Use: 2007/12/31 First Use In Commerce: 2009/03/02
`retail store services in the field of telecommunication equipment
`
`U.S. Registration
`No.
`Registration Date
`
`2844340
`
`05/25/2004
`
`Word Mark
`Design Mark
`
`BLACKBERRY
`
`Application Date
`
`11/26/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 1998/07/14 First Use In Commerce: 1999/01/19
`Electronic handheld units for the wireless receipt and/or transmission of data
`that enable the user to keep track of ormanage personal information and which
`may also have the capacity to transmit and receive voice communications; soft-
`warefor the redirection of messages, globalcomputer network e-mail, and other
`datato one or more electronic handheld units from a data store on or associated
`with a personal computer or a server; software for the synchronization of data
`between a remote station or unit and a fixedor remote station or unit and soft-
`ware which enables and provides one-way and two-way wireless connectivity to
`data, including corporate data
`Class 038. First use: First Use: 1998/07/14 First Use In Commerce: 1999/01/19
`E-mail service; wireless data messagingservices, particularly services that en-
`able a user to send and/or receive messages through a wireless data network;
`one-way and two-way paging services; transmission and reception of voice com-
`munication services; consultation on the topicsof developing and integrating
`one-way or two-way wireless connectivity to data,including corporate data, and/
`or communications
`Class 041. First use: First Use: 1998/07/14 First Use In Commerce: 1999/01/19
`Educational services, namely, classes, seminars and conferences for the pur-
`poseof providing information to third parties to assist them in developing and in-
`tegrating one-way or two-way wireless connectivity to data, including corporate
`data, and voice communications
`
`U.S. Registration
`No.
`Registration Date
`
`3715716
`
`11/24/2009
`
`Word Mark
`
`BLACKBERRY
`
`Application Date
`
`03/27/2007
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2007/12/31 First Use In Commerce: 2009/03/02
`retail store services in the field of telecommunication equipment
`
`U.S. Registration
`No.
`Registration Date
`
`2700671
`
`03/25/2003
`
`Application Date
`
`12/28/1998
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`BLACKBERRY
`
`NONE
`
`Class 038. First use: First Use: 1998/07/14 First Use In Commerce: 1999/01/19
`E-mail service; wireless data messagingservices, particularly services that en-
`able a user to send and/or receive messages through a wireless data network;
`one-way and two-way paging services
`
`U.S. Registration
`No.
`Registration Date
`
`2672464
`
`01/07/2003
`
`Application Date
`
`12/28/1998
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`BLACKBERRY
`
`NONE
`
`Class 009. First use: First Use: 1998/07/14 First Use In Commerce: 1999/01/19
`Electronic handheld units for the wireless receipt and/or transmission of
`data,that enable the user to keep track of or manage personal information; soft-
`ware for the redirection of messages, global computer network e-mail, and/or
`other data to one or more electronic handheld units from a data store on or as-
`sociated with a personal computer or a server; andsoftware for the synchroniza-
`tion of data between a remote station or unit and afixed or remote station or unit
`
`U.S. Registration
`No.
`Registration Date
`
`3098588
`
`05/30/2006
`
`Application Date
`
`03/02/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`BLACKBERRY CONNECTION
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 016. First use: First Use: 2001/00/00 First Use In Commerce: 2001/00/00
`Newsletter relating to internet e-mail services and wireless data messaging ser-
`vices and voice communication services and technical support services for hard-
`ware and software for wireless data network services and voice communication
`services
`
`U.S. Registration
`No.
`Registration Date
`
`3836417
`
`08/24/2010
`
`Word Mark
`Design Mark
`
`BLACKBERRY
`
`Application Date
`
`09/03/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of a shaded quadrilateral with the wording BLACKBERRY be-
`low astylized geometric design of the letters BBBB.
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`Electronic handheld units and accessories therefor, namely, batteries, chargers,
`headsets, cases, covers, and docking stations, for the wireless receipt and
`transmission of data and which may also have the capability to transmit and re-
`ceive voice communications, namely, handheldcomputers and personal digital
`assistants; computer communications software forthe transmission and recep-
`tion of messages, global computer network e-mail and other data between one
`or more electronic handheld units and a data store on or associated with a per-
`sonal computer or aserver; computer communication softwarefor the synchroniz-
`ation of data betweena remote station or unit and a fixed orremote station or unit
`and software which enables and provides one-way and two-way wireless con-
`nectivity to data, namely, corporate data
`
`

`
`Class 038. First use: First Use: 0 First Use In Commerce: 0
`e-mail service; wireless data messagingservices, particularly services that en-
`able a user to send and receive messagesthrough a wireless data network; one-
`way and two-way paging services; transmission and reception of voice commu-
`nicationservices
`Class 041. First use: First Use: 0 First Use In Commerce: 0
`Conducting educational classes, seminars workshops and on line training
`classesin the nature of providing information to third parties to assist them in de-
`veloping and integrating one way or two waywireless connectivity to data, includ-
`ing corporate data, voice communications
`
`U.S. Registration
`No.
`Registration Date
`
`4400318
`
`09/10/2013
`
`Word Mark
`Design Mark
`
`BLACKBERRY CURVE
`
`Application Date
`
`09/26/2007
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 018. First use: First Use: 2007/05/01 First Use In Commerce: 2007/05/18
`Bags, namely, backpacks, sport bags, duffle bags, casual bags, namely, casual
`all-purpose carrying bags, casual bags inthe nature of purses, unique leather
`cases in the nature of carrying cases and key cases, luggage and carry-all bags,
`beach bags, handbags, clutch bags, shoulder bags, wallets, purses, briefcases,
`briefcase type portfolio cases, attaché cases, key cases, bill folds, coin
`purses,bum bags, wallets with compartments forpassports, travel bags, haver-
`sacks, luggage, trunks; umbrellas; luggage bag tags
`
`U.S. Registration
`No.
`Registration Date
`
`4615742
`
`10/07/2014
`
`Word Mark
`Design Mark
`
`BLACKBERRY TRAFFIC
`
`Application Date
`
`11/09/2010
`
`Foreign Priority
`Date
`
`05/14/2010
`
`

`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`wireless handheld devices, namely, personal digital assistants, wireless phones,
`mobile phones, cellular phones, smartphones and video phones; computer soft-
`ware to enable the transmission of mapping,navigation, traffic, weather and
`point-of-interest information to telecommunications networks; wireless handheld
`devices, namely, electronic handheld units in the nature of mobile, slate, and
`tablet computers, and navigation devices; computer software to be used for
`viewing and downloading electronic maps; computer software for operating
`route planners
`Class 038. First use: First Use: 0 First Use In Commerce: 0
`Telecommunication carrier services, namely, providing access to third-party
`electronic databases by means of one-way ortwo-way wireless connectivity, in-
`cluding corporate and home/personal data, and providing access to GPS
`(Global Positioning System) navigation services
`Class 039. First use: First Use: 0 First Use In Commerce: 0
`Providing GPS (Global Positioning System) navigation services; providing navig-
`ation, traffic and point-of-interest-navigation information via telecommunication-
`networks, mobile phones, telephones, smartphones, electronic handheld units
`andnavigation devices
`Class 042. First use: First Use: 0 First Use In Commerce: 0
`providing mapping and point-of-interest-mapping information via telecommunica-
`tion networks, mobile phones, telephones, smartphones, electronic handheld
`units and navigation devices; software as a service (SAAS) services, namely,
`hosting third-party software and applications for personal digital assistants
`(PDAs), wireless phones, mobile phones, cellular phones, smart phones, mobile
`computers and tablet computers, all for use by others;providing search engines
`for obtaining data via communications networks
`
`U.S. Registration
`No.
`Registration Date
`
`4403721
`
`09/17/2013
`
`Application Date
`
`03/24/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`
`BLACKBERRY WEBWORKS
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2011/04/00 First Use In Commerce: 2011/04/00
`Computer software development tools fordeveloping software for web-based ap-
`plications
`
`U.S. Registration
`No.
`
`4532194
`
`Application Date
`
`05/08/2013
`
`

`
`Registration Date
`
`05/20/2014
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`
`BLACKBERRY WORLD
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2013/02/20 First Use In Commerce: 2013/02/20
`Computer software for accessing, displaying, browsing, transmitting and down-
`loading software, mobile application software, computer game software, music,
`and multimedia, audio, and video files; downloadable computer software for ac-
`cessing,displaying, browsing, transmitting and downloading software, mobile ap-
`plicationsoftware, computer game software, music, and multimedia, audio, and
`video files
`Class 035. First use: First Use: 2013/02/20 First Use In Commerce: 2013/02/20
`Retail store services featuring computer software, downloadable software, mo-
`bile application software, downloadable computer game software, downloadable
`music,and downloadable multimedia, audio, andvideo files; and online retail
`store services featuring computer software, downloadable software, mobile ap-
`plication software, downloadable computer game software, downloadable music,
`and downloadable multimedia, audio, and video files
`
`U.S. Registration
`No.
`Registration Date
`
`4732984
`
`05/05/2015
`
`Word Mark
`Design Mark
`
`BLACKBERRY CLASSIC
`
`Application Date
`
`03/28/2014
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2014/12/00 First Use In Commerce: 2014/12/00
`Mobile phones; smartphones
`
`U.S. Registration
`No.
`
`4676913
`
`Application Date
`
`09/04/2008
`
`

`
`Registration Date
`
`01/27/2015
`
`Word Mark
`Design Mark
`
`BLACKBERRY BOLD
`
`Foreign Priority
`Date
`
`03/06/2008
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`Apparatus for recording, transmission or reproduction of data, sound or im-
`ages,namely, electronic handheld units, mobile phones, telephones, smart-
`phones, personal digital assistants (PDAs) for the wireless transmission of data
`and/or voice signals; electronic handheld units, mobile phones, telephones,
`smartphones, personal digital assistants (PDAs), with capabilities of e-mail,
`pager, fax, radio, personal organizer, cellular connectivity, wireless Internet con-
`nectivity, mp3player, satellite navigational system, GPS (Global Positioning Sys-
`tem) receiver, global positioning system data logger for recording and classifica-
`tion of trips, digital camera, digital video camera and/or computer operating sys-
`tem; electronic handheld units for recording, organizing, transmitting, playing
`and reviewing text, data, video and audio files, and accessories for electronic
`handheld units, telephones, mobile phones, smartphones, and personal digital
`assistants (PDAs) for the wireless transmission of data and/or voice signals,
`namely, batteries, battery chargers, speakers, headsets,microphones, belt clips,
`speciality holsters, carrying cases, battery covers, battery doors, charging pods,
`docking/charging cradles, holders, desktop stands, data cables, electric adapter
`cables andelectrical wires; car kits for the adaptation of portable communication
`apparatus and instruments for use in vehicles, comprising antennas, antenna
`transmission wires, antenna adapters, cables, car phones, handsfree micro-
`phones, phone holders, speakers, car chargers for mobile telephone batteries,
`handsfree holders; computer software, namely, software for the transmission
`and/or reception of messages, global computer network e-mail, and/or other
`data between one or more electronic handheld units and a data store on or as-
`sociated with a personal computeror a server, software for the synchronization
`of data between a remote station or unit and a fixed or remote station orunit and
`software which enables and provides one way and/or two-way wireless con-
`nectivity to data, namely, corporate data; computer communication software for
`the synchronization, transmission and sharing of data, calendar, content and
`messaging between one or more electronic handheld units and data stored on
`or associated with a computer
`Class 038. First use: First Use: 0 First Use In Commerce: 0
`Telecommunication services, namely, thesynchronization, transmission and
`sharing of voice, sound, image and/or data signals through a wireless data net-
`work; providing access to the Internet; providing access to electronic databases;
`providing access to global positioning system(GPS) navigation services; provid-
`ing e-mail services; wireless data messaging services, particularly services that
`enable a user to send and/or receive messages through a wireless data net-
`work; one-way and two-way paging services; transmission and reception of
`voice communication services via the internet and other computer and electronic
`communication networks and wireless devices; telecommunications consulta-
`
`

`
`tion, namely, providing information to third parties to assist them in developing
`and integrating one-way or two-way wireless connectivity to data, namely, cor-
`porate and home/personal data, and/or voice communications
`Class 042. First use: First Use: 0 First Use In Commerce: 0
`Consultancy and technical support services, namely, diagnosing computer hard-
`ware and software problems for telecommunication and Global Positioning Sys-
`tem (GPS) services; technical support services, namely, updating and mainten-
`ance of computer software and troubleshooting support programs for diagnosis
`and resolution of wireless connectivity devices and related computer software
`and hardware problems
`
`Attachments
`
`76610159#TMSN.png( bytes )
`77141641#TMSN.png( bytes )
`76469782#TMSN.png( bytes )
`77141621#TMSN.png( bytes )
`76578564#TMSN.png( bytes )
`76610160#TMSN.png( bytes )
`77289919#TMSN.png( bytes )
`85172152#TMSN.png( bytes )
`85275562#TMSN.png( bytes )
`85926329#TMSN.png( bytes )
`86235056#TMSN.png( bytes )
`77562872#TMSN.png( bytes )
`2016 08 10 Dongleberrytv Notice of Opposition.pdf(87352 bytes )
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by Overnight Courier on this date.
`
`Signature
`Name
`Date
`
`/GRE/
`G. Roxanne Elings
`08/10/2016
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`Opposition No.:
`
`
`
`
`In the matter of Application Serial No. 86806266
`
`
`Mark:
`Published in the Official Gazette on April 12, 2016
`
`
`
`BlackBerry Limited,
`
`
`
`
`
`
`
`Opposer,
`
`
`
`
`
`v.
`
`Stuart Fowler and David Starler,
`
`
`
`
`
`
`
`Applicants.
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`NOTICE OF OPPOSITION
`
`BlackBerry Limited (hereinafter referred to as “BlackBerry” or “Opposer”) believes that
`
`it will be damaged by registration of the above-identified trademark and hereby opposes the
`
`registration thereof:
`
`FACTS
`
`1.
`
`Upon information and belief, individuals Stuart Fowler and David Starler,
`
`(“Applicants”) are located at 540 N. Wickham Rd., #140, Melbourne, FL USA 32935.
`
`2.
`
`On or about November 2, 2015, Applicants filed Trademark Application Serial
`
`No. 86806266 (the “Application”) pursuant to Section 1(a) of the Lanham Act, 15 U.S.C. §
`
`1051(a), to register the
`
`trademark (“Applicants’ Mark”), for the following
`
`1
`DWT 30173674v1 0085000-000879
`
`

`
`goods in International Class 9: “Computer software and hardware for streaming content media”
`
`(“Applicants’ Goods”).
`
`3.
`
`On or about April 12, 2016, Applicants’ Mark was published for opposition in the
`
`Official Trademark Gazette.
`
`4.
`
`Upon information and belief, Applicants’ Goods stream copyrighted video and
`
`music content (the “Streaming Content”) from the Internet to the consumer’s television.
`
`5.
`
`Upon information and belief, Applicants are not authorized, licensed or permitted
`
`to distribute or reproduce the Streaming Content, and, therefore are infringing certain exclusive
`
`rights granted to the copyright holders of the Streaming Content.
`
`6.
`
`BlackBerry is a corporation duly organized and existing under the laws of the
`
`Province of Ontario, Canada, having a place of business at 2200 University Avenue East,
`
`Waterloo, Ontario N2K 0A7, Canada.
`
`7.
`
`BlackBerry, including its predecessors-in-interest, is a global leader in the
`
`research, development, design, manufacture, promotion and marketing of innovative mobile
`
`communications technology solutions. In 1999, BlackBerry revolutionized the mobile
`
`communications industry when it launched its first mobile handheld communications device. By
`
`the year 2005, BLACKBERRY mobile devices had become ubiquitous throughout the world and
`
`an important tool for business executives, government officials, and many other professionals as
`
`a means for round-the-clock mobile communications.
`
`8.
`
`Since at least as early as 1999, BlackBerry has used its BLACKBERRY house
`
`mark and other related trademarks (collectively, the “BLACKBERRY Marks”) to identify its
`
`mobile handheld communication devices (mobile phones, smartphones, PDAs, computer
`
`2
`DWT 30173674v1 0085000-000879
`
`

`
`tablets), mobile applications, accessories, computer software, systems software applications, and
`
`mobile device management services (collectively “BlackBerry’s Goods/Services”).
`
`9.
`
`The BLACKBERRY Marks are the subject of numerous valid and subsisting
`
`United States trademark registrations on the Principal Register, some of which are incontestable,
`
`pursuant to Section 15 of the Lanham Act, 15 U.S.C. § 1065, including but not limited to the
`
`marks depicted in the chart attached hereto as Exhibit A.
`
`10.
`
`BlackBerry markets and sells its goods and services, including accessories and
`
`services bearing the BLACKBERRY Marks, in the United States and throughout the world
`
`through all of the major wireless telecommunications service providers, including AT&T,
`
`Verizon, Sprint, and T-Mobile and through electronic and computer stores and outlets such as
`
`Best Buy, Costco, Amazon, Walmart, and Target -- just to name a few. BlackBerry also operates
`
`websites located at the following URLs: <shopblackberry.com> and <us.blackberry.com>,
`
`through which it markets and sells its mobile handheld devices and accessories and distributes
`
`and promotes its software applications and services.
`
`11.
`
`BlackBerry markets and sells mobile applications through its official store
`
`BlackBerry World, which is available at the following URL: <appworld.blackberry.com>.
`
`BlackBerry’s mobile applications can also be purchased directly on a user’s BlackBerry device.
`
`12.
`
`BlackBerry’s Goods/Services are used by some of the world’s largest and most
`
`successful organizations, companies, and governmental institutions. Blackberry has also
`
`partnered with premier sports leagues and media outlets such as the MLB, the NHL, PGA Tour,
`
`ESPN, UFC, and CBS Sports to build applications for BlackBerry platforms.
`
`13.
`
`BlackBerry has invested significant time, energy, and resources in the advertising,
`
`promotion, and distribution of its BlackBerry Goods/Services in media advertising, including
`
`3
`DWT 30173674v1 0085000-000879
`
`

`
`television ads, the Internet, printed trade publications, magazines of general circulation, and
`
`point-of-sale displays. Additionally, BlackBerry has been the official sponsor of the Mercedes
`
`AMG Formula One Racing Team, Barclays Center and the Brooklyn Nets, the Toronto
`
`International Film Festival, the 2011 Rugby World Cup, and has sponsored the tours of various
`
`well-known musical artists, including Alicia Keys, U2, and the Black Eyed Peas.
`
`14.
`
`The success of BlackBerry’s marketing and promotional efforts have not gone
`
`unnoticed, and BlackBerry benefits from the publicity garnered from unsolicited media coverage
`
`of its goods and services. For example, it is widely known that the President of the United States,
`
`Barack Obama, has used a BLACKBERRY device during most of his presidency. Multiple
`
`media outlets have often referred to President Obama as the “BlackBerry president.”
`
`Additionally, celebrities, including Justin Timberlake, Martha Stewart, Paris Hilton, will.i.am,
`
`Lindsay Lohan, Kanye West, Jay-Z, Katy Perry, Drake, Nick Cannon, Sarah Jessica Parker, Puff
`
`Daddy, Christina Aguilera, and Kim Kardashian – just to name a few, have all been
`
`photographed with or been reported to use BLACKBERRY devices.
`
`15.
`
`As a result of BlackBerry’s marketing efforts and success, combined with its
`
`attention to quality, design, and performance of its products, the goods and services sold under
`
`the BLACKBERRY Marks have generated hundreds of millions of dollars in sales each year.
`
`16.
`
`By virtue of the extensive distribution and success of BlackBerry’s
`
`Goods/Services, the BLACKBERRY Marks are recognized and relied upon by the public and
`
`trade as identifying BlackBerry’s Goods/Services and distinguishing them from the goods and
`
`services of others. Further, the BLACKBERRY Marks have come to represent and symbolize the
`
`extremely valuable goodwill and widespread reputation belonging exclusively to BlackBerry.
`
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`DWT 30173674v1 0085000-000879
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`
`17.
`
`By virtue of the extensive distribution and success of the BLACKBERRY
`
`branded goods and related services, Opposer’s BLACKBERRY Marks are distinctive and
`
`famous.
`
`COUNT I
`LIKELIHOOD OF CONFUSION
`
`Opposer repeats and realleges each and every allegation set forth in paragraphs 1
`
`18.
`
`through 17 herein.
`
`world.
`
`19.
`
`20.
`
`The BLACKBERRY Marks are famous in the United States and throughout the
`
`Opposer commenced use of the BLACKBERRY Marks well before Applicants
`
`filed the Application and/or commenced use of Applicants’ Mark in commerce.
`
`21.
`
`Applicants’ Mark is similar to the BLACKBERRY Marks in sight, sound,
`
`connotation, and overall commercial impression.
`
`22.
`
`The goods identified in the Application are identical, complementary, similar
`
`and/or related to the goods with which Opposer is using the BLACKBERRY Marks.
`
`23.
`
`The goods identified in the Application are identical, complementary, similar,
`
`and/or related to the goods for which the BLACKBERRY Marks are registered.
`
`24.
`
`Registration of Applicants’ Mark is likely to cause confusion, mistake, or
`
`deception as to the source of Applicants’ Goods in violation of Section 2(d) of the Lanham Act,
`
`15 U.S.C. § 1052(d).
`
`
`
`COUNT II
`DILUTION
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`
`25.
`
`Opposer repeats and realleges each and every allegation set forth in paragraphs 1
`
`through 24 herein.
`
`26.
`
`Through Opposer’s extensive advertisement and promotion and substantial sales,
`
`the BLACKBERRY Marks have become famous in the United States and throughout the world.
`
`27.
`
`Any use by Applicants of Applicants’ Mark has occurred after the
`
`BLACKBERRY Marks became famous.
`
`28.
`
`Relevant consumers are likely to make an association between Applicants’ Mark
`
`and Opposer’s BLACKBERRY Marks.
`
`29.
`
`Applicants’ Mark is likely to impair the distinctiveness of Opposer’s
`
`BLACKBERRY Marks.
`
`30.
`
`31.
`
`Applicants are likely engaged in illegal copyright infringement.
`
`Applicants’ Mark is likely to blur and tarnish the positive associations with
`
`Opposer’s BLACKBERRY Marks.
`
`32.
`
`Thus, Applicants’ registration and/or use of Applicants’ Mark is likely to cause
`
`dilution of the distinctive quality of Opposer’s BLACKBERRY Marks in violation of Section 43
`
`of the Lanham Act, 15 U.S.C. § 1125(c).
`
`COUNT III
`FALSE SUGGESTION OF CONNECTION
`
`33.
`
`Opposer repeats and realleges each and every allegation set forth in paragraphs 1
`
`through 32 herein.
`
`34.
`
`Opposer’s BLACKBERRY Marks are famous in the United States and throughout
`
`the world.
`
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`35.
`
`Applicants’ Mark creates the same or similar commercial impression as, or is a
`
`close approximation of, the BLACKBERRY Marks and falsely suggests a connection with
`
`BlackBerry.
`
`36.
`
`37.
`
`BlackBerry is not connected in any way with the goods of Applicants.
`
`Due to the fame of Opposer and the BLACKBERRY Marks, when Applicants’
`
`Mark is used in commerce, a connection with Opposer is presumed by the consuming public.
`
`38.
`
`Thus, Applicants’ registration and/or use of Applicants’ Mark is likely to create a
`
`false sense of connection to Opposer in violation of Section 2(a) of the Lanham Act, 15 U.S.C.
`
`§ 1052(a).
`
`
`
`WHEREFORE, Opposer prays that this Opposition be sustained and that Application
`
`Serial No. 86806266 be rejected, and that registration of the designation sought therein be denied
`
`and refused.
`
`Dated: New York, NY
`August 10, 2016
`
`
`
`
`
`
`
`
`
`
` Respectfully submitted,
` DAVIS WRIGHT TREMAINE LLP
`
`
`
`
`
`
`
`/GRE/
`
`
`By: G. Roxanne Elings
`Lisa Keith
`L. Danielle Toaltoan
`1251 Avenue of the Americas
`21st Floor
`New York, NY 10020
`(212) 489-8230
`Attorneys for Opposer
`
`
`
`
`
`
`
`
`
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`EXHIBIT A
`
`TRADEMARK
`
`REG. NO. REG. DATE GOODS/SERVICES
`
`3102687
`
`
`
`June 13, 2006 Class 9: Electronic handheld units and
`accessories therefore, namely, batteries, cases,
`battery chargers, holsters and antennas, for the
`wireless receipt and/or transmission of data
`and which may also have the capability to
`transmit and receive voice communications,
`namely handheld computers and personal
`digital assistants; computer communications
`software for the transmission and/or reception
`of messages, global computer network e-mail,
`and/or other data between one or more
`electronic handheld units and a data store on
`or associated with a personal computer or a
`server; computer communication software for
`the synchronization of data between a remote
`station or unit and a fixed or remote station or
`unit and software which enables and provides
`one-way and/or two-way wireless connectivity
`to data, including corporate data.
`
`Class 38: e-mail service; wireless data
`messaging services, particularly services that
`enable a user to send and/or receive messages
`through a wireless data network; one-way and
`two-way paging services; transmission and
`reception of voice communication services.
`
`Class 41: consulting and educational services
`namely, classes, seminars and conferences for
`the purpose of providing information to third
`parties to assist them in developing and
`integrating one way or two way wireless
`connectivity to data, including corporate data,
`and/or voice communications.
`
`
`
`3715717
`
`November 24,
`2009
`
`Class 35: retail store services in the field of
`telecommunication equipment.
`
`BLACKBERRY
`
`2844340
`
`May 25, 2004 Class 9: Electronic handheld units for the
`wireless receipt and/or transmission of data
`that enable the user to keep track of or manage
`personal information and which may also have
`the capacity to transmit and receive voice
`communications; software for the redirection
`of messages, global computer network e-mail,
`and other data to one or more electronic
`
`DWT 30173674v1 0085000-000879
`
`8
`
`

`
`TRADEMARK
`
`REG. NO. REG. DATE GOODS/SERVICES
`handheld units from a data store on or
`associated with a personal computer or a
`server; software for the synchronization of
`data between a remote station or unit and a
`fixed or remote station or unit and software
`which enables and provides one-way and two-
`way wireless connectivity to data, including
`corporate data.
`
`Class 38: E-mail service; wireless data
`messaging services, particularly services that
`enable a user to send and/or receive messages
`through a wireless data network; one-way and
`two-way paging services; transmission and
`reception of voice communication services;
`consultation on the topics of developing and
`integrating one-way or two-way wireless
`connectivity to data, including corporate data,
`and/or communications.
`
`Class 41: Education