Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA832767
`ESTTA Tracking number:
`07/12/2017
`
`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
`
`Apple Inc.
`07/12/2017
`
`1 Infinite Loop
`Cupertino, CA 95014
`UNITED STATES
`
`Attorney informa-
`tion
`
`Joseph Petersen
`Kilpatrick Townsend & Stockton LLP
`1080 Marsh Road
`Menlo Park, CA 94025
`UNITED STATES
`Email: jpetersen@ktslaw.com, agarcia@ktslaw.com, tmadmin@ktslaw.com,
`aroach@kilpatricktownsend.com
`Phone: 6503262400
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`87232969
`07/12/2017
`
`Publication date
`Opposition Peri-
`od Ends
`
`03/14/2017
`07/12/2017
`
`Ora Inc.
`Anjialou Chaoyang Dist.
`Room 205 2 floors Building No.6
`Beijing, 100125
`CHINA
`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: Chargers for electric batteries; Computer
`gaming software for recreational gameplaying purposes; Computer operating programs, recorded;
`Data processing apparatus; Downloadable electronic publications in the nature of magazines in the
`field of computers; Downloadable image file containing artwork, text, audio, video, games and Inter-
`net Web links relating tosporting and cultural activities; Downloadable music files; Headphones; Note-
`book computers; Smart watches; Wearable activity trackers; Wearable computer peripherals; Wire-
`less routers
`Class 042. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Computer programming; Computer soft-
`waredesign; Consulting services in the field of cloud computing; Conversion of dataor documents
`from physical to electronic media; Data conversion of computer programs and data, not physical con-
`version;Digitization of documents; Electronic data storage; Industrial design; Monitoring of computer
`systems by remote access to ensure proper functioning; Off-site data backup; Providing search en-
`gines forthe internet; Software as a service (SAAS) services featuring software for use in database
`
`

`

`management; Technical support services, namely, troubleshooting of computer software problems
`Class 045. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Chaperoning; Dating services; Escort ser-
`vices; Monitoring burglar and security alarms; On-line social networking services
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution by blurring
`
`Trademark Act Section 2(d)
`Trademark Act Sections 2 and 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`1114431
`
`03/06/1979
`
`Word Mark
`Design Mark
`
`NONE
`
`Application Date
`
`03/20/1978
`
`Foreign Priority
`Date
`
`NONE
`
`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.
`Registration Date
`
`2715578
`
`05/13/2003
`
`Word Mark
`
`NONE
`
`Application Date
`
`07/01/2002
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`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.
`Registration Date
`
`3679056
`
`09/08/2009
`
`Word Mark
`Design Mark
`
`NONE
`
`Application Date
`
`01/13/2009
`
`Foreign Priority
`Date
`
`NONE
`
`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
`
`U.S. Registration
`No.
`Registration Date
`
`2753069
`
`08/19/2003
`
`Word Mark
`Design Mark
`
`NONE
`
`Application Date
`
`07/23/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of the design of an apple with a bite removed.
`
`Class 042. First use: First Use: 1980/09/00 First Use In Commerce: 1980/09/00
`[ Application service provider (ASP), namely, hosting computer software applica-
`tions of others; ]computer services, namely, displaying the [ web sites and ] im-
`ages of others on a computer server; computer diagnostic services; installation
`of computer software; updating of computer software; maintenance of computer
`software; computer hardware development; integration of computer systems and
`networks; monitoring the computer systems of others for technical purposes and
`providing back-up computer programs and facilities; computer consultation,
`design, and testing services; consulting services inthe field of design, selection,
`implementation and use of computer hardware andsoftware systems for others;
`computer data recovery; computer programming for others; research and devel-
`opment of computer hardware and software; website design, creation [ and host-
`ing services ] ; computer services, namely, designing [ and implementing ] web
`sites for others; computer services, namely, providing search engines for obtain-
`ing data on a global computer network; providing use of on-line non-
`downloadable software for communications via local or global communications
`networks, including the Internet, intranets, and extranets; computer consultation,
`namely, analyzing data to detect, eradicate, and prevent the occurrence of com-
`puter viruses; computer consultation, namely, services relating to the protection
`of computer hardware, computer software, computer networks and computer
`systems against computer viruses, attacks, or failures; computer consultation,
`namely, services for optimizing the performance and functionality of computer
`
`

`

`software and communications networks; technical support services, namely,
`troubleshooting of computers, computer software, telecommunications, and the
`Internet systems; leasing of computers, computer peripherals and computer
`software; leasing computer facilities; providing information in a wide variety of
`fields over computer networks and global communication networks; computer
`services, namely, creating indexes of information, web sites and other informa-
`tion sources available on computer networks; providing information concerning a
`wide range of text, electronic documents, databases, graphics and audiovisual
`information
`
`U.S. Registration
`No.
`Registration Date
`
`4206562
`
`09/11/2012
`
`Word Mark
`Design Mark
`
`NONE
`
`Application Date
`
`08/31/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of the design of an apple with a bite removed.
`
`Class 045. First use: First Use: 2010/09/01 First Use In Commerce: 2010/09/01
`Personal and social services rendered by others to meet the needs of individu-
`als, namely, online social networking and introduction services; online social net-
`working services, namely, facilitating social interaction among individuals, social
`introductions, and for finding persons with particular hobbies, interests and back-
`grounds; providing a social networking website for entertainment pur-
`poses;security services for the protection ofproperty, namely, monitoring of com-
`puterized data for security purposes
`
`U.S. Registration
`No.
`Registration Date
`
`4885796
`
`01/12/2016
`
`Word Mark
`
`NONE
`
`Application Date
`
`06/10/2015
`
`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 014. First use: First Use: 2014/09/09 First Use In Commerce: 2015/04/10
`Horological and chronometric instruments; watches; timepieces; chronographs
`foruse as timepieces; chronometers; watchstraps; watch bands; cases for
`watches, and horological and chronometric instruments; parts for watches, and
`horological and chronometric instruments
`
`U.S. Registration
`No.
`Registration Date
`
`2926853
`
`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.
`Registration Date
`
`1078312
`
`11/29/1977
`
`Application Date
`
`03/25/1977
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`APPLE
`
`NONE
`
`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.
`
`3317089
`
`Application Date
`
`06/04/2004
`
`

`

`Registration Date
`
`10/23/2007
`
`Word Mark
`Design Mark
`
`APPLE
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`Musical sound records; sound records featuring entertainment; sound records
`featuring music, musicians, documentaries, biographies, interviews, perform-
`ances, reviews, drama and fiction; musical videorecords; video records featuring
`entertainment; video records featuring music, musicians, caricatures, cartoons,
`animation, documentaries, biographies, interviews, performances, reviews,
`drama and fiction; cinematographic films; musical sound recordings; musical
`video recordings; audio and visual recordings featuring or relating to music, en-
`tertainment and films; pre-recorded compact discs, [ audio tapes, ] gramophone
`records, [ video tapes, ] video discs, DVDs, CD-ROMs (( and interactive com-
`pact discs, )) all featuring or relating to music and films; digitally recorded sound
`and video records; (( downloadable musical sound and video records; down-
`loadable sound and videorecords featuring or relating to music,entertainment
`and films ))
`
`U.S. Registration
`No.
`Registration Date
`
`3928818
`
`03/08/2011
`
`Word Mark
`
`APPLE
`
`Application Date
`
`05/03/2007
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`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.
`Registration Date
`
`2808567
`
`01/27/2004
`
`Application Date
`
`10/02/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`APPLE
`
`NONE
`
`Class 042. First use: First Use: 1980/09/00 First Use In Commerce: 1980/09/00
`COMPUTER CONSULTATION, DESIGN, TESTING,RESEARCH AND ADVIS-
`ORY SERVICES; RESEARCH AND DEVELOPMENT OF COMPUTER HARD-
`WARE AND SOFTWARE; MAINTENANCE AND REPAIR OF COMPUTER
`SOFTWARE APPLICATIONS; UPDATING OF COMPUTER SOFTWARE;
`COMPUTER PROGRAMMING SERVICES; PROVIDING INFORMATION CON-
`CERNING COMPUTERS AND COMPUTER SOFTWARE OVER COMPUTER
`NETWORKS AND GLOBAL COMMUNICATION NETWORKS; [ COMPUTER
`SERVICES, NAMELY, HOSTING WEB SITES AND PROVIDING WEBSITE
`OPERATION AND MANAGEMENT SERVICES TO OTHERS; ] COMPUTER
`SERVICES, NAMELY, PROVIDING SEARCH ENGINES FOR OBTAINING
`DATA ON COMPUTER NETWORKS AND GLOBAL COMMUNICATION NET-
`WORKS; LEASING OF COMPUTERS, COMPUTER PERIPHERALS AND
`COMPUTER SOFTWARE
`
`U.S. Registration
`No.
`Registration Date
`
`4913886
`
`03/08/2016
`
`Application Date
`
`08/31/2010
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Word Mark
`Design Mark
`
`APPLE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 045. First use: First Use: 2011/10/13 First Use In Commerce: 2011/10/13
`Personal and social services rendered by others to meet the needs of individu-
`als, namely, online social networking and introduction services; online social net-
`working services, namely, facilitating social interaction among individuals, social
`introductions, and for finding persons with particular hobbies, interests and back-
`grounds; providing a social networking website for entertainment pur-
`poses;security services for the protection ofproperty, namely, monitoring of com-
`puterized data for security purposes
`
`U.S. Registration
`No.
`Registration Date
`
`5161497
`
`03/14/2017
`
`Word Mark
`Design Mark
`
`WATCH
`
`Application Date
`
`09/10/2014
`
`Foreign Priority
`Date
`
`07/24/2014
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of the design of an apple with a bite removed and the word
`"WATCH".
`Class 010. First use: First Use: 2014/09/09 First Use In Commerce: 2015/04/10
`General wellness instruments, namely, health, fitness, exercise, and wellness
`sensors, monitors and displays sold as a unit in the form of a wrist-wearable
`computerized device for measuring, displaying, tracking, monitoring, storing, and
`transmitting biometric data, heart rate, body movement, and calories burned;
`general wellness apparatus and devices sold as a unit in the form of a wrist-
`wearable computerized device to measure, display, track, monitor, store, and
`transmit biometric data, heart rate, body movement, and calories burned
`
`U.S. Registration
`No.
`Registration Date
`
`4783440
`
`07/28/2015
`
`Word Mark
`
`WATCH
`
`Application Date
`
`09/10/2014
`
`Foreign Priority
`Date
`
`07/24/2014
`
`

`

`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of the design of an apple with a bite removed and the word
`"WATCH".
`Class 014. First use: First Use: 2014/09/09 First Use In Commerce: 2015/04/10
`Horological and chronometric instruments; watches; timepieces; chronographs
`foruse as timepieces; chronometers; watchstraps; watch bands; cases for
`watches, and horological and chronometric instruments; parts for watches, and
`horological and chronometric instruments
`
`Attachments
`
`73162799#TMSN.png( bytes )
`76426501#TMSN.png( bytes )
`77648705#TMSN.png( bytes )
`78146716#TMSN.png( bytes )
`85120250#TMSN.png( bytes )
`86658546#TMSN.png( bytes )
`78155188#TMSN.png( bytes )
`78430230#TMSN.png( bytes )
`77172511#TMSN.png( bytes )
`85120231#TMSN.png( bytes )
`86390818#TMSN.png( bytes )
`86390853#TMSN.png( bytes )
`U.S. Notice of Opposition -NOO - to Ora Inc._s Fruit Design Application -Cls. 9
`42 45.pdf(99336 bytes )
`EXHIBITS 1-3.pdf(1230387 bytes )
`EXHIBITS 4-5 - Part 1 of 2.pdf(2107821 bytes )
`EXHIBITS 4-5 - Part 2 of 2.pdf(5573615 bytes )
`-EXHIBIT 6.pdf(2114664 bytes )
`
`Signature
`Name
`Date
`
`/s/ Joseph Petersen
`Joseph Petersen
`07/12/2017
`
`