Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA867123
`12/22/2017
`
`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.
`
`12/24/2017
`
`1 Infinite Loop
`Cupertino, CA 95014
`UNITED STATES
`
`Glenn A. Gundersen
`Dechert LLP
`Cira Centre
`2929 Arch Street
`Philadelphia, PA 19104-2808
`UNITED STATES
`Email: trademarks@dechert.com, glenn.gundersen@dechert.com
`
`Applicant Information
`
`Application No
`
`87340382
`
`Publication date
`
`06/27/2017
`
`Opposition Filing
`Date
`
`Applicant
`
`12/22/2017
`
`Opposition Peri-
`od Ends
`
`12/24/2017
`
`The Cartoon Network, Inc.
`c/o Turner Broadcasting System, Inc.
`One CNN Center
`Atlanta, GA 30303
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Audio visual recordings featuring filmsand
`entertainment programs featuring animation targeted primarily to children and young adults; decorat-
`ive magnets; digital photo frames; protective helmets for sports; eyeglasses, sunglasses, framesand
`cases therefor; downloadable audiovisual files featuring animation targetedprimarily to children and
`young adults;video game cartridges; video game software; downloadable software for games featur-
`ing animation targeted primarily to children and young adults; downloadable electronic books featur-
`ing comedy, actionand adventure targeted primarily to children and young adults; all aforementioned
`goods are only in connection with animated entertainment series programming targeted primarily to
`children and young adults
`
`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.
`
`3317089
`
`Registration Date
`
`10/23/2007
`
`Word Mark
`
`Design Mark
`
`APPLE
`
`Application Date
`
`06/04/2004
`
`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.
`
`4088195
`
`Registration Date
`
`01/17/2012
`
`Word Mark
`
`APPLE
`
`Application Date
`
`03/22/2008
`
`Foreign Priority
`Date
`
`09/28/2007
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 1981/03/01 First Use In Commerce: 1981/03/01
`Education and training services, namely, arranging and conducting personal
`training, classes, workshops, conferences and seminars in the field of com-
`puters, computer software, online services, information technology, website
`design, and consumer electronics; arranging professional workshop and training
`courses; computer education training services; trainingin the use and operation
`of computers, computer software and consumer electronics; online journals,
`namely, blogs featuring general interest topics covering a wide variety of topics
`and subject matter; providing on-line publications in thenature of magazines,
`newsletter and journals in the field of computers, computer software and con-
`sumer electronics; providing information, podcasts and webcasts in the field of
`entertainment via the Internet concerning movies, music, videos, television,
`sports, news, history, science, politics, comedy, children's entertainment, anima-
`tion, culture, and current events; digital video, audio and multimedia publishing
`services; providing entertainment information regarding movies, music, videos,
`television, sports, news, history, science, politics, comedy, children's entertain-
`ment, animation, culture, and current events; providing information, reviews and
`personalized recommendations of movies, music, videos, television, sports,
`news, history, science, politics, comedy, children's entertainment, animation, cul-
`ture, and current events in the field of entertainment; entertainment services,
`namely, production of live musical performances; entertainment services,
`namely, providing live musicalperformances online via a global computer net-
`work; rental of digital entertainment content in the nature of movies, music,
`videos, television, sports, news, history, science, politics, comedy, children's en-
`tertainment, animation, culture, and current events, by means of communica-
`tions networks, namely, provision of non-downloadable audio and audiovisual
`programs via an online video-on-demand service; providing a database of digital
`entertainment content in the nature of movies, music, videos, television, sports,
`news, history, science, politics, comedy,children's entertainment, animation, cul-
`ture, and current events via electroniccommunication networks; entertainment
`services, namely, providing prerecorded audio and audiovisual content, informa-
`tion and commentary in the fields of music,concerts, videos, movies, television,
`books, news, sports, games and cultural events all via a global computer net-
`work
`
`U.S. Registration
`No.
`
`3621571
`
`Registration Date
`
`05/19/2009
`
`Word Mark
`
`APPLE
`
`Application Date
`
`02/05/2008
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 028. First use: First Use: 0 First Use In Commerce: 0
`Toys, games and playthings, namely, hand-held units for playing electronic
`games; hand-held units for playing video games; stand alone video game ma-
`chines; electronic games other than those adapted for use with television receiv-
`ers only; LCD game machines; electronic educationalgame machines for chil-
`dren; toys, namely, battery-powered computer games with display screens
`which feature animation and sound effects
`
`U.S. Registration
`No.
`
`5330141
`
`Registration Date
`
`11/07/2017
`
`Word Mark
`
`Design Mark
`
`APPLE MUSIC
`
`Application Date
`
`06/10/2015
`
`Foreign Priority
`Date
`
`05/18/2015
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2015/06/08 First Use In Commerce: 2015/06/30
`Computer software for use in generatingcustomized recommendations of audio,
`video, data, text and other multimedia content, including music, concerts,
`videos,radio, television, cultural events and entertainment-related programs de-
`termined from an analysis of user preferences; computer software for creating
`and sharing playlists of audio and multimedia files; computer software for use in
`connection with an online music subscription service; database synchronization
`software; database management software; computersoftware for use in playing,
`organizing, downloading, transmitting, manipulating, and reviewing audio files,
`and media files; computer software for use in the delivery, distribution and trans-
`mission of digital music and entertainment-related audio, video, text and multi-
`media content; computer software for creating searchable databases of informa-
`tion and data for peer-to-peer social networking databases; computer software
`to enable users to program and distribute audio, video, data, text and other mul-
`timedia content, including music, concerts, videos, radio, television, cultural
`events, and entertainment-related and educational programs via communication
`networks; computer software for accessing, browsing and searching online data-
`bases; computer software for setting up, configuring, operating and controlling
`mobile devices, wearable devices, mobile phones, computers, and computer
`peripherals, and audio and video players; downloadable audio and video record-
`ings featuring music, music performances, and music videos
`
`U.S. Registration
`No.
`
`3359045
`
`Application Date
`
`04/09/2007
`
`

`

`Registration Date
`
`12/25/2007
`
`Word Mark
`
`Design Mark
`
`APPLE TV
`
`Foreign Priority
`Date
`
`11/13/2006
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2007/03/21 First Use In Commerce: 2007/03/21
`Computer hardware; computer networking hardware; set top boxes; digital elec-
`tronic devices for recording, organizing, transmitting, receiving, manipulating,
`playing and reviewing text, data, image, audio and video files; computer soft-
`ware for use in organizing, transmitting, receiving, manipulating, playing and re-
`viewing text, data, image, audio, and video files; computer hardware and com-
`puter software for the reproduction, processing and streaming of audio, video
`and multimedia content; computer hardware and software for controlling the op-
`eration of audio and video devices and for viewing, searching and/or playing au-
`dio, video, television, movies, photographs and other digital images, and other
`multimedia content
`
`U.S. Registration
`No.
`
`5291678
`
`Registration Date
`
`09/19/2017
`
`Word Mark
`
`Design Mark
`
`APPLE NEWS
`
`Application Date
`
`11/13/2015
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`Attachments
`
`NONE
`
`Class 041. First use: First Use: 2015/06/08 First Use In Commerce: 2016/04/05
`Providing web pages featuring information in the field of entertainment, mu-
`sic,sports, current events news, and arts and culture
`
`78430230#TMSN.png( bytes )
`77428980#TMSN.png( bytes )
`77388864#TMSN.png( bytes )
`86658508#TMSN.png( bytes )
`77152380#TMSN.png( bytes )
`86819705#TMSN.png( bytes )
`APPLE AND ONION Notice of Opposition Apple v. Cartoon Network.pdf(57280
`bytes )
`Exhibit 1.pdf(479970 bytes )
`Exhibit 2.pdf(4818393 bytes )
`Exhibit 3.pdf(1276967 bytes )
`
`

`

`Exhibit 4.pdf(2585833 bytes )
`Exhibit 5.pdf(769089 bytes )
`
`Signature
`
`Name
`
`Date
`
`/glenn a. gundersen/
`
`Glenn A. Gundersen
`
`12/22/2017
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.
`
`: :
`
`: :
`
`: NOTICE OF OPPOSITION
`:
`
`: : :
`
`:
`
`In the Matter of Application Serial No.87/340,382
`For the mark: APPLE & ONION
`Filed: February 17, 2017
`Published: June 27, 2017
`
`---------------------------------------------------------X
`APPLE INC.,
`
`Opposer,
`
`v.
`
`The Cartoon Network, Inc.,
`
`Applicant.
`---------------------------------------------------------X
`
`APPLE INC. (“Apple”), a corporation organized and existing under the 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 for the mark APPLE & ONION (“Applicant’s
`
`Mark”) shown in Application Serial No. 87/340,382 (the “Application”) for the goods identified
`
`in Class 9 and hereby opposes the same.
`
`1.
`
`As grounds for its opposition, Apple alleges as follows, with knowledge
`
`concerning its own acts, and on information and belief as to all other matters: Apple is the world-
`
`famous designer, manufacturer, and distributor of personal computers, mobile communication and
`
`media devices, digital media players, and sells a variety of related software, services, accessories,
`
`networking solutions, and third-party digital content and applications. Apple sells and delivers
`
`digital content and applications through the iTunes Store ®, App Store ®, Mac App Store, TV
`
`

`

`App Store, iBooks Store ®, and Apple Music ® services, and Apple’s APPLE brand is one of the
`
`best-known brands in the world.
`
`2.
`
`Apple designs, manufactures, and/or markets in interstate and international
`
`commerce a broad line of technology-related goods and services, including computers, computer
`
`software, mobile phones, consumer electronics, home automation systems, and a variety of
`
`peripherals and accessories for computers and electronic devices.
`
`3.
`
`Since at
`
`least as early as 1977, Apple has extensively promoted, marketed,
`
`advertised, distributed, and sold goods and services in connection with a family of trademarks
`
`consisting, in whole or in part, of the word APPLE or the Apple Logo (shown below) (collectively,
`
`the “Apple Marks”).
`
`4.
`
`Apple’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 Apple’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 Apple as the source of its goods and services.
`
`5.
`
`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.
`
`2
`
`

`

`6.
`
`For many years, Apple’s APPLE brand (including the Apple Logo) has consistently
`
`been recognized as one of the world’s most famous brands. In May 2017, Forbes magazine ranked
`
`the APPLE brand as the world’s most valuable brand for the seventh year in a row, with an
`
`estimated valuation of $170 billion, 67% 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
`
`2017, 2016, 2015, 2014, 2013, 2012, and 2011, obtained from its website.
`
`7.
`
`In 2017, for the sixth consecutive year, Apple won the Harris Interactive “Brand
`
`of the Year” award in the tablet computer category, beating out its competitors. Apple was also
`
`named the #1 brand in the categories of smart watch and smart phone, and #2 in computer
`
`manufacturers. Attached as Exhibit 2 is a printout of the Harris Interactive report obtained from
`
`the website at http://www.theharrispoll.com/equitrend-rankings/2017.
`
`8.
`
`In addition, Interbrand has consistently recognized Apple’s APPLE brand in the
`
`top 50 of the world’s most valuable brands, increasing in value each year.
`
`In 2013, Interbrand
`
`named the APPLE brand the most valuable brand in the world, and it has maintained the top
`
`position for the 2014, 2015, 2016, and 2017 rankings. Apple’s rise to the number one position
`
`followed a jump 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 2017 through 2010. Interbrand has given the APPLE brand
`
`the following rankings and U.S. dollar values over the past seven years:
`
`i.
`
`2017: valuing the APPLE brand as the most valuable brand in the world, with an
`estimated brand worth of U.S. $184.154 billion.
`
`3
`
`

`

`ii.
`
`iii.
`
`iv.
`
`v.
`
`vi.
`
`vii.
`
`viii.
`
`2016: valuing the APPLE brand as the most valuable brand in the world, with an
`estimated brand worth of U.S. $178.12 billion.
`
`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.
`
`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.
`
`9.
`
`Over the past nine 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 its “Brandz™ Top 100 Most Valuable Global Brands,” an annual assessment
`
`of the 100 most valuable brands in the world. In MBO’s 2017 rankings, Apple’s APPLE brand
`
`was ranked the second most valuable brand in the world with a value of $234.67 billion. In the
`
`2016 rankings, Apple’s APPLE brand was also ranked the second most valuable brand in the world
`
`with a value of $228.5 billion. In 2015, MBO named Apple the world’s most valuable brand, a
`
`rank it also held in 2011, 2012, and 2013. Apple’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 2017 through 2008.
`
`4
`
`

`

`10.
`
`Apple 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.” Apple has featured prominently in these rankings each year, and for nine
`
`years in a row from 2009 to 2017, 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 Apple also topped this list in 2008. Attached as Exhibit 5 are true and correct
`
`copies of printouts of relevant pages of Fortune Magazine’s “Most Admired Companies” rankings
`
`in reverse chronological order from 2017 through 2008.
`
`11.
`
`Apple is the owner of numerous United States registrations on the Principal
`
`Register for the Apple Marks, covering a wide range of entertainment and video game goods and
`
`services, including children’s entertainment and animation.
`
`12.
`
`Notwithstanding Apple’s prior rights, and well after Apple’s Apple Marks
`
`became distinctive and/or famous, on February 17, 2017 The Cartoon Network, Inc.
`
`(“Applicant”) filed the Application to register Applicant’s Mark.
`
`13.
`
`The Application covers the following Class 9 goods (“Applicant’s Goods”):
`
`Audio visual recordings featuring films and entertainment programs featuring animation
`
`targeted primarily to children and young adults; decorative magnets; digital photo frames;
`
`protective helmets for sports; eyeglasses, sunglasses,
`
`frames and cases therefor;
`
`downloadable audiovisual files featuring animation targeted primarily to children and
`
`young adults; video game cartridges; video game software; downloadable software for
`
`games featuring animation targeted primarily to children and young adults; downloadable
`
`electronic books featuring comedy, action and adventure targeted primarily to children and
`
`5
`
`

`

`young adults; all aforementioned goods are only in connection with animated entertainment
`
`series programming targeted primarily to children and young adults.
`
`14.
`
`Apple is timely filing this Notice of Opposition.
`
`Likelihood of Confusion
`
`15.
`
`There is no issue as to priority. Apple began using the Apple Marks in commerce
`
`at least as early as 1977, well prior to the February 17, 2017 filing date of the Application. The
`
`Application was filed on the basis of Applicant’s intent to use Applicant’s Mark under Section
`
`1(b) of the Trademark Act and, on information and belief, Applicant has not yet made use in
`
`commerce of Applicant’s Mark for the goods set forth in the Application.
`
`16.
`
`Applicant’s Mark incorporates Apple’s APPLE mark in its entirety. Consumers
`
`encountering Applicant’s Mark in connection with Applicant’s Goods are likely to assume that it
`
`is an extension of Apple’s brand, and mistakenly associate the mark with Apple.
`
`17.
`
`The Application covers recorded films and entertainment programs, animation,
`
`video games, and electronic books.
`
`18.
`
`Since long before Applicant’s filing date, Apple has offered under its Apple
`
`Marks goods that are identical, highly related, and complementary to Applicant’s Goods. Apple
`
`owns U.S. registrations of and applications for APPLE, APPLE MUSIC, APPLE TV, and
`
`APPLE NEWS for identical and closely-related services, including the following registrations,
`
`each of which is valid and in full force and effect:
`
`-- U.S. Reg. No. 3,317,089 for APPLE covering, inter alia, various types of Class 9 recorded
`
`entertainment, films, cartoons, and animation;
`
`-- U.S. Reg. No. 4,088,195 for APPLE covering, inter alia, children’s entertainment, animation,
`
`and other entertainment services provided through a variety of means and media, prerecorded
`
`6
`
`

`

`audio and audiovisual content, information and commentary in the fields of movies, games and
`
`books;
`
`-- U.S. Reg. No. 3,621,571 for APPLE covering, inter alia, electronic games, electronic
`
`educational game machines for children, computer games featuring animation, and various
`
`devices for playing electronic and video games;
`
`-- U.S. Reg. No. 5,330,141 for APPLE MUSIC covering, inter alia, various types of Class 9
`
`recorded entertainment;
`
`-- U.S. Reg. No. 3,359,045 for APPLE TV covering, inter alia, devices and software for
`
`viewing, playing and streaming video content; and
`
`-- U.S. Reg. No. 5,291,678 for APPLE NEWS covering, inter alia, web pages featuring
`
`information in the field of entertainment.
`
`Affidavits have been filed pursuant to Sections 8 and 15 of the Lanham Act for Registration Nos.
`
`3,317,089, 3,359,045, and 3,621,571, rendering such registrations incontestable.
`
`19.
`
`In addition, consumers regularly use Apple’s consumer electronics, such as
`
`Apple’s MAC computers, IPOD digital media players, and APPLE WATCH, IPHONE, and
`
`IPAD devices, to view the recorded films and entertainment programs, animation, and electronic
`
`books, and play the video games covered by the Application.
`
`20.
`
`In light of the fame of the Apple Marks in connection with identical, highly related,
`
`and complementary goods and services, consumers encountering Applicant’s Mark, which
`
`incorporates Apple’s famous APPLE mark in its entirety, would be likely to believe Applicant’s
`
`Goods offered under Applicant’s Mark are associated with, or approved, endorsed, or provided by
`
`Apple.
`
`7
`
`

`

`21.
`
`Lending further support to a finding of a likelihood of consumer confusion is the
`
`fact that Applicant’s Goods are not limited to any particular channel of trade, and, therefore, it may
`
`be presumed that Applicant’s Goods will be offered through the same channels of trade as the
`
`goods and services covered by Apple’s prior registrations. Consumers, upon seeing Applicant’s
`
`Mark used in connection with Applicant’s Goods, are likely to be confused as to Apple’s approval
`
`of, or affiliation or association with, those goods.
`
`22.
`
`Apple would be damaged by the registration of Applicant’s Mark in connection
`
`with Applicant’s Goods because Applicant’s Mark so closely resembles the Apple Marks as to be
`
`likely to cause confusion, mistake, or deception in the minds of consumers as to the origin or
`
`source of Applicant’s Goods or the affiliation between Applicant and Apple, in violation of Section
`
`2(d) of the Lanham Act, 15 U.S.C. § 1052(d). Furthermore, if consumers have complaints about
`
`Applicant’s Goods offered under Applicant’s Mark (such as inferior quality or defects) and believe
`
`those goods are associated with Apple, Apple would suffer injury to its reputation.
`
`Likelihood of Dilution
`
`23.
`
`Apple also would be damaged by registration of Applicant’s Mark because the
`
`mark is likely to cause dilution of the distinctiveness of the famous Apple Marks by eroding
`
`consumers’ exclusive identification of the Apple Marks with Apple, and by otherwise lessening
`
`the capacity of the Apple Marks to identify and distinguish the goods and services of Apple, in
`
`violation of Section 43(c)(1) of the Lanham Act, 15 U.S.C. § 1125(c)(1).
`
`24.
`
`Specifically, Applicant’s Mark is likely to cause dilution by blurring of the famous
`
`Apple Mark based on a number of relevant considerations including, without limitation, the
`
`following:
`
`8
`
`

`

`(a)
`
`Applicant’s Mark is highly similar both visually and aurally to Apple’s
`
`famous APPLE mark;
`
`(b)
`
`The Apple Marks are inherently distinctive in relation to Apple’s goods and
`
`services and, due to Apple’s extensive use and promotion, the Apple Marks also had become
`
`famous prior to the filing date of Applicant’s use-based application and any claimed first use;
`
`(c)
`
`(d)
`
`Apple has engaged in substantially exclusive use of the Apple Marks; and
`
`As detailed above at paragraphs 3 through 10, the Apple Marks are famous
`
`and widely recognized and have been so long before the filing date of Applicant’s use-based
`
`application and any claimed first use.
`
`WHEREFORE, Apple requests that this opposition be sustained and that the registration
`
`of Applicant’s Mark pursuant to the Application in connection with the Applicant’s Goods be
`
`denied.
`
`The opposition fee in the amount of $400.00 for an opposition in one class is filed herewith.
`
`This paper is filed electronically.
`
`Dated: December 22, 2017
`
`Respectfully submitted,
`
`DECHERT LLP
`
`By: /s/ Jacob Bishop
`
`Glenn A. Gundersen
`Jacob Bishop
`Cira Centre
`2929 Arch Street
`Philadelphia PA 19104
`Telephone: (215) 994-2183
`Facsimile: (215) 655-2183
`
`Attorneys for Opposer Apple Inc.
`
`9
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.
`
`: :
`
`: :
`
`: NOTICE OF OPPOSITION
`:
`
`: : :
`
`:
`
`In the Matter of Application Serial No.87/340,382
`For the mark: APPLE & ONION
`Filed: February 17, 2017
`Published: June 27, 2017
`
`---------------------------------------------------------X
`APPLE INC.,
`
`Opposer,
`
`v.
`
`The Cartoon Network, Inc.,
`
`Applicant.
`---------------------------------------------------------X
`
`CERTIFICATE OF TRANSMITTAL
`
`I hereby certify that a true copy of the foregoing NOTICE OF OPPOSITION is being filed
`
`electronically with the TTAB via ESTTA on this day, December 22, 2017.
`
`/s/ Jacob Bishop
`Dechert LLP
`
`10
`
`

`

`
`
`
`
`
`
`EXHIBIT 1
`EXHIBIT 1
`
`

`

`The World's Most Valuable Brands List
`
`Page 1 of 3
`
`
`
`
`
`The World's Most Valuable Brands The World's Most Valuable Brands The World's Most Valuable Brands
`
`
`
`
`
`2017 RANKI2017 RANKI2017 RANKI
`
`2 Free I ssues of Forbes
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`The World's Most Valuable
`Brands
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`Tweet
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`The List
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`Spreadsheet
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`Logo Licensing
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`Filter list by:
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`Rank
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`Company
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`All industries
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`Search by brand name
`
`
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`Rank
`
`Brand
`
`Brand Value
`
`1-Yr Value Change
`
`Brand Revenue
`
`Company Advertising
`
`Industry
`
`# 1 Apple
`
`$ 170 B
`
`10 %
`
`$ 214.2 B
`
`$ 1.8 B
`
`Technology
`
`# 2 Google
`
`$ 10 1.8 B
`
`23%
`
`$ 8 0 .5 B
`
`$ 3.9 B
`
`Techn ology
`
`# 3 Microsoft
`
`$ 8 7 B
`
`16%
`
`$ 8 5.3 B
`
`$ 1.6 B
`
`Technology
`
`# 4
`
`Facebook
`
`$ 73.5 B
`
`40 %
`
`$ 25.6 B
`
`$ 310 M
`
`Technology
`
`# 5 Coca-Cola
`
`$ 56.4 B
`
`-4%
`
`$ 23 B
`
`$ 4 B
`
`Beverages
`
`# 6 Am azon
`
`$ 54.1 B
`
`54%
`
`$ 133 B
`
`$ 5 B
`
`Techn ology
`
`$ 43.9 B
`
`11%
`
`$ 30 .7 B
`
`$ 2.9 B
`
`Leisure
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`https://www.forbes.com/powerful-brands/list/
`
`6/28/2017
`
`

`

`The World's Most Valuable Brands List
`
`Page 2 of 3
`
`Rank
`Brand
`# 7 Disney
`
`Brand Value
`
`1-Yr Value Change
`
`Brand Revenue
`
`Company Advertising
`
`Industry
`
`# 8 Toyota
`
`$ 41.1 B
`
`-2%
`
`$ 168 .8 B
`
`$ 4.3 B
`
`Autom otive
`
`# 9 McDonald's
`
`$ 40 .3 B
`
`3%
`
`$ 85 B
`
`$ 646 M
`
`Restauran ts
`
`# 10 Sam sung
`
`$ 38 .2 B
`
`6%
`
`$ 166.7 B
`
`$ 3.7 B
`
`Techn ology
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`Inside Forbes
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`Russian Billionaires Got
`$ 29B Since Trum p's Win
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`Trum p Adm in Hasn't Asked
`Palantir To Build Registry
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`A Troll Is Helping To Pick
`Your Next Governm ent
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`Internet troll Charles "Chuck" J ohnson is helping to pick
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`m em bers of the incom ing adm inistration.
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`Inside The 10 Most
`Stressful J obs In 20 17
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`https://www.forbes.com/powerful-brands/list/
`
`6/28/2017
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`

`

`The World's Most Valuable Brands List
`
`Page 3 of 3
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`20 17 Forbes SH OOK Top Advisors
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`https://www.forbes.com/powerful-brands/list/
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`6/28/2017
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`

`

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`
`(cid:46)urt BadenhausenForbes Staff
`
`I cover sports business w ith rare dips in education & local econom ies
`
`(cid:41)(cid:50)RB(cid:40)(cid:54)
`
`(cid:24)/11/201(cid:25) (cid:35) (cid:28):(cid:23)(cid:24)AM 17(cid:22)(cid:15)(cid:23)21 views
`
`Apple, Google Top The World's Most
`Valuable Brands Of 20 16
`
`Apple’s 13-year run of quarterly revenue growth
`cam e to a crashing halt last m onth when the tech
`giant reported revenue of $ 50 .6 billion, off 13%
`thanks to soft iPhone sales and a slowdown in
`China. The gloom -and-doom sentim ent around
`the com pany has reached a zenith with the stock
`off 30 % from its all-tim e peak 12 m onths ago.
`
`(AP Photo/ Matthias Schrader, File)
`
`But Forbes’ annual study of the world’s m ost
`valuable brands shows that Apple is still in a class
`by itself with a value of $ 154.1 billion, 8 7% m ore
`than second-ranked Google. It is the sixth straight
`tim e Apple has finished first since Forbes began
`valuing the richest brands in 20 10 .
`
`“Brands get their value from how custom ers
`perceive them ,” says David Reibstein, a professor
`of m arketing and branding expert at the
`University of Pennsylvania’s Wharton School.
`“What m akes it valuable from a com pany
`perspective is that custom ers are willing to pay a
`higher price or are m ore likely to buy.”
`
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