Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA996584
`
`Filing date:
`
`08/21/2019
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91240541
`
`Party
`
`Correspondence
`Address
`
`Defendant
`Faraway Connections, LLC
`
`RADHIKA P RAJU
`WILKINSON BARKER KNAUER LLP
`1800 M STREET NW
`WASHINGTON, DC 20036
`UNITED STATES
`trademark@wbklaw.com, rraju@wbklaw.com, mstabbe@wbklaw.com
`202-383-3370
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Other Motions/Papers
`
`MItchell H. Stabbe
`
`mstabbe@wbklaw.com, trademark@wbklaw.com
`
`/Mitchell H. Stabbe/
`
`08/21/2019
`
`Applicants Reply to Opposers Opposition to Motion to Amend COS and Attach-
`ments A-D.pdf(2800058 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91240541
`
`)
`
`) )
`
`)
`)
`)
`)
`
`CREATIVE TECHNOLOGY, LTD.,
`Opposer,
`
`V.
`
`FARAWAY CONNECTIONS, LLC,
`Applicant
`
`APPLICANT'S REPLY TO OPPOSER’S OPPOSITION TO APPLICANT’S
`MOTION TO AMEND ANSWER TO ADD COUNTERCLAIM
`
`Pursuant
`
`to 37 CPR.
`
`§ 2.127(e)(1) and TBMP § 502.02(b), Applicant Faraway
`
`Connections, Ltd. hereby replies to the Opposition to Applicant’s Motion to Amend Its Answer
`
`to Add A Counterclaim (“Response”) filed by Opposer Creative Technology, Ltd.
`
`I.
`
`The Argument that Partial Cancellation Would Be Futile Fails Because It Does Not
`Address the Services in Classes 38, 41 and 42 and Most of the Goods in Class 9.
`
`Opposer Creative claims priority based on registrations for X-FI and X-FI (Stylized) in
`
`Class 91 and SOUND BLASTER X-FI in Class 9.2 It argues that a partial cancellation of these
`
`registrations to limit the scope of “hardware” and/or “peripherals,” would be futile because
`
`Applicant’s wireless gateway routers and extenders would still be sufficiently related to
`
`Opposer’s goods to find a likelihood of confusion. However, Opposer does not argue or attempt
`
`to explain why a limitation of goods would be futile in terms of avoiding a likelihood of
`
`confusion between Opposer’s X-FI goods and Applicant’s other xFi proposed goods in Class 9,
`
`much less its proposed xFi services in Classes 38, 41 and 42, all of which Creative has opposed.
`
`By failing to address this issue, Opposer has admitted that a limitation on its goods would not be
`
`futile in terms of defending this opposition to the registration of Applicant’s Mark for its other
`
`goods and its services. For this reason alone, Applicant’s Motion to Amend should be granted.
`
`1 Reg. Nos. 3,999,214 and 3,325,431.
`
`2 Reg. No. 3,151,814.
`
`

`

`II.
`
`Limiting the Registration To “Hardware, Namely Sound Cards” and “Peripherals”
`Is Not Futile Because It Eliminates Any Potential for A Likelihood of Confusion
`Between Opposer’s and Applicant’s Products.
`
`A. The TTAB Has the Authority to Limit Creative’s Registration to “hardware, namely
`sound cards” and/or “peripherals, namely sound cards.”
`
`In the actual marketplace, Opposer’s contention that its sound cards are related in the
`
`minds of consumers with Applicant’s goods employed with its home WiFi management portal is
`
`meritless. However, because of the vagueness of terms such as “computer hardware,” Applicant
`
`seeks to have the TTAB restrict or modify Creative’s identification of goods by identifying them
`
`with greater specificity. This authority was recognized by the express addition of partial
`
`cancellation as a remedy in the 1988 amendments to the Lanham Act.3
`
`The amendments “to Section 18 were intended to give the Board greater ability to decide
`
`cases on the basis of the evidence of actual use.”4 Indeed, Congress intended to allow the TTAB
`
`to make likelihood of confusion determinations
`
`based on “marketplace realities rather than on
`
`hypothetical facts.”5 Hence, this remedy was codified because “certain product identifications,
`
`although accurate and acceptable for purposes of registration, may appear on paper to give rise to
`
`likelihood of confusion, but would not give rise to confusion in the marketplace due to
`
`distinctions between the actual products and how they are marketed and consumed.”6 Limiting
`
`vague and/or overbroad descriptions such as “computer hardware” is among the type of
`
`restrictions permissible.7
`
`
`
`3 Trademark Act § 18, codified at 15 U.S.C. § 1068; see also DAK Indus. v. Daiichi Kosho Co., 35 USPQ2d 1434,
`1437 (TTAB 1994) (the TTAB will entertain counterclaims to modify — both through addition of words to identify
`goods with greater particularity and deletion - an opposer’s identification of goods); TBMP § 309.03(d).
`4 Eurostar, Inc. v. “Euro—Star” Reitmoden GmbH & Co. KG, Spezialfabrik Fur Reitbekleidung, 34 USPQ2d 1266,
`1268 (TTAB 1994) (emphasis added).
`5 Id.
`15, 1988)
`(September
`Second Session at p. 35
`100th Congress,
`100-515,
`6 Senate Report No.
`(httpszfltransitionfcc.gov/Bureaus/OSEC/library/legislative histories/1365pdf). Accord PC Club v. Primex Techs,
`Inc., 32 Fed. Appx. 576, 578 (Fed. Cir. 2002).
`7 Cf In re Cook Medical Technologies LLC, 105 USPQ2d 1377, 1384 (TTAB 2012) (“Such a claim can be used to
`
`-2-
`
`

`

`B. Such A Limitation Is Appropriate Here Because Creative’s Own Discovery
`Demonstrates That the Only Goods Sold Under the X—FI Mark Are Sound Cards.
`
`The documentation provided by Creative during the discovery process showed that, at
`
`most, the only products being offered by Creative under its X-FI registered marks over the last
`
`three years (or longer) may be sound cards. Thus, limiting Creative’s identification of goods to
`9
`
`“hardware, namely, sound cards” and/or “peripherals, namely, sound cards ’
`
`is appropriate8
`
`because it accurately reflects the nature of the X-FI goods that Creative has actually been selling
`
`over the last three years (or longer).9 As discussed in detail below, Faraway’s proposed
`
`limitation in its proposed Counterclaim will eliminate any conceivable potential for consumer
`
`confusion as between those goods.
`
`C. Such a Limitation Will Eliminate Any Potential for Consumer Confusion Because
`Sound Cards and Peripherals and Wireless Gateway Routers are Plainly Not Related.
`
`Assuming, arguendo,
`
`that both sound cards and wireless routers and/or wireless
`
`networking products are “computer hardware,” sharing this common definition does not, on its
`
`own, give rise to the conclusion that the goods are related. Whether or not two products are
`
`related does not revolve around the question of whether a common term can be used that
`
`describes them both, or whether both can be classified under the same general category.10 This is
`
`_______—_—_.—_———-—-—
`79
`
`modify overly broad identification of goods (for example, ‘computer programs.’)
`8 In preparing its proposed Counterclaim, Applicant did not imagine that Opposer would try to argue that sound
`cards were both computer hardware and peripherals. Accordingly, it did not specify limiting the term “peripherals”
`as part of its prayer for relief, but such a remedy is permissible under the request for such other relief as the Board
`may deem appropriate. However, now that Opposer has raised this argument, assuming that this motion is granted,
`Applicant would amend its prayer for relief to provide as an additional alternate remedy that the reference to
`“computer peripherals” be limited as well.
`9 In addition, Applicant is willing to withdraw Count II, which is based on non-use at the time that use was claimed.
`A Second Amended Answer and Counter-Claim Petition for Cancellation, reflecting the foregoing amendments is
`attached for the Board’s consideration as Attachment A. Cf DLR Licensing, LLC v. Carnival Corp., 2014 TTAB
`Lexis 451 (TTAB Oct. 22, 2014) h
`://ttabvue.us to. ov/ttabvue/v? no=92057150& —CAN&eno=25 (where in
`response to a motion to dismiss a counterclaim, an amended counterclaim was submitted, it was accepted and treated
`as filed).
`'0 See, e.g., Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1310 (Fed. Cir. 2002) (“A
`broad general market category is not a generally reliable test of relatedness of products”); Cooper Indus., Inc. v.
`Repcoparts USA, Inc., 218 USPQ 81, 84 (TTAB 1983) (“the mere fact that
`any products with significant
`
`-3-
`
`

`

`particularly so with respect to computer products. Given “the ubiquitous use of computers in the
`
`United States today, the TTAB and its reviewing Court have rejected the View that a relationship
`
`exists between goods and services simply because each involves the use of computers.”11 There
`
`is no per se rule mandating that likelihood of confusion is to be found in all cases where the
`
`goods or services in question involve computer software and/or hardware. 12 As the Board has
`
`stated, “[A] per se rule relating to source confusion vis-a-Vis computer hardware and software is
`
`simply too rigid and restrictive an approach and fails to consider the realities of the
`
`marketplace.”13
`
`Indeed,
`
`the TTAB has previously found that different types of computer
`
`hardware are not sufficiently related to support a finding of a likelihood of confusion.14
`
`Here, marketplace realities readily demonstrate the complete lack of a logical nexus
`
`between Opposer’s sound cards and Applicant’s networking devices. Their functionality serves
`
`completely different purposes. Sound cards are used to improve audio quality in computers and
`
`other devices that emit sound, while wireless routers, gateways and extenders are used to
`
`facilitate the connectivity, range and signal strength of WiFi networks.15
`
`
`
`are sold in the same industry does not of itself provide an adequate basis to find the
`differences in character
`required 'relatedness'”); Harvey Hubbell Inc. v. Tokyo Seimitsu Co., Ltd., 188 USPQ 517, 520 (TTAB 1975) (“The
`mere fact that the term ‘electronic’ can be used to describe any product that includes an electronic device does not
`make a television set similar to an electronic microscope, or an electronic automotive ignition system similar to
`telemetering devices”).
`11 Electronic Data Sys. v. EDSA Micro Corp. 23 USPQ2d 1460, 1463 (TTAB 1992). See also In re Massey—
`Ferguson Inc., 222 USPQ 367 (TTAB 1983).
`‘2 See, e.g., In re Press Information Services, 6 USPQ2d 1034, 1038 (TTAB 1988).
`13 In re Quadram Corp., 228 USPQ 863, 865 (TTAB 1985). Accord Information Resources, Inc. v. X*Press
`Information Services, 6 USPQ2d 1034, 1038 (TTAB 1988).
`‘4 See, e.g., In re Casino Data Systems, 1998 TTAB LEXIS 338, at *13-14 (TTAB Sept. 22, 1998) (Attachment B)
`(finding no likelihood of confusion between DATAPORT for computer hardware, namely, a microcontroller for
`monitoring a bank of slot machines in a casino, and DATAPORT for modems). See also Nartron Corp. v. Hewlett-
`Packard Development Co. LR,
`2012 TTAB LEXIS
`356
`at
`*20
`(TTAB Sept.
`13,
`2012)
`(http://ttabvue.uspto.gov/ttabvue/v?pno=92050789&pty:—CAN&eno=54) (“Based on the evidence of record, we
`cannot definitively find that the identification “computer hardware” encompasses "electronic proximity sensors and
`switching devices")
`‘5 See Computer Hope, Sound Cards (Nov. 13, 2018) thttpszl/www.computerhopecom/jargon/s/souncard.htm);
`Lifewire, What Is a Router and How Does It Work? (July 28, 2019) (https://www.lifewire.com/what-is-a-router—
`2618162); Linksys, What is a WiFi Extender or WiFi Booster? (Apr. 7, 2017).
`
`-4-
`
`

`

`Put
`
`simply,
`
`sound card manufacturers
`
`are
`
`in the
`
`audio business,
`
`not
`
`the
`
`telecommunications business. Opposer points to no evidence that demonstrates otherwise.
`
`It
`
`does, however, point to an odd assortment of sources to support its claim that sound cards are
`
`related to wireless routers, wireless gateways and wireless extenders because they both
`
`purportedly fall under the extremely broad category of “computer hardware.” Today, however,
`
`users distinguish between computer hardware and networking hardware (also referred to network
`
`equipment, network devices or networking devices).16 Wireless routers, wireless gateways and
`
`wireless extenders are not deemed to be computer hardware. Rather, they fall under the separate
`
`category of networking hardware. Thus, the cited sources are either outdated or inapposite and
`
`consequently these efforts must fail.
`
`First, to support its position that computer hardware includes equipment such as modems,
`
`Opposer cites to dicta in In re Eyefluence, Inc., Response at 8. This case is irrelevant for several
`
`reasons. First, it involves computer software and hardware involving eye tracking, on the one
`
`hand, and eyeglasses and eyewear accessories on the other.
`
`It does not remotely hinge on the
`
`definition of hardware. Moreover, the decision merely refers to a 2002 definition for “hardware”
`
`fi'om the Microsoft Computer Dictionary (5th ed.), which, given the rapid pace of technological
`
`innovation,” should be given no weight.
`
`Second, Opposer points to a description of goods that was deemed acceptable by the
`
`USPTO in 2005, which characterizes gateway routers as “computer control hardware.”
`
`
`‘6 See, e.g., EDUCBA, Computer Hardware vs Networking (2019), ht_tps://www.educba.com/computer-hardware-vs-
`networkingl (comparing the type of hardware used in a computer operating system and in computer networking and
`including routers and modems among the most important components of the latter); Netsys, What Is An Ethernet
`Extender
`(2019), ht_tps://www.netsys-direct.com/pages/what-are-ethernet-extenders
`(describing an extender as
`“networking equipment,” a modem as a “network hardware device” and a router as a “networking device”); Online
`CMag, Wireless
`Network
`Hardware
`—
`Routers,
`Adapters,
`Repeaters
`and more
`(2019),
`ht_tp://www.onlinecmag.com/wireless-network-hardware/; Wikipedia, the Free Encyclopedia, Networking hardware,
`at hflps://en.wikipedia.org/wiki/Networking hardware (“Networking devices may include gateways,
`routers,
`network bridges, modems ....”).
`
`‘7 See n.13, supra.
`
`

`

`Response at 10. Opposer fails to explain or otherwise define the phrase “computer control
`
`hardware” (emphasis added) and how it relates, if at all, to “computer hardware.” Moreover, the
`
`definition was accepted in 2005 — before the iPhone was even introduced, and long before the
`
`dawn of the Internet of Things. Accordingly, it is antiquated and should be given little, if any,
`
`weight.
`
`Finally, Creative also points to a definition of computer hardware set forth in a section of
`
`Pennsylvania’s tax code, which was enacted in 1997.18 Opposer’s reliance on an obscure, 22-
`
`year old reference in the Pennsylvania tax code to demonstrate that sound cards and routers both
`
`fall under the definition of computer hardware should carry no weight whatsoever.
`
`In reality, as
`
`stated above, a basic Internet search readily shows that WiFi routers and extenders are generally
`
`considered to be network hardware -- not computer hardware — and have no association with
`
`sound cards.
`
`III.
`
`Creative’s Attempt to Avoid Cancellation of Other Goods and Services Covered By
`Its Registrations Also Fails.
`
`A. Sound Cards Are Neither “Electronic Audio and Video Components” Nor “Sound
`Systems” as Defined in Opposer’s Registrations.
`
`Creative argues that Faraway’s purported admission that Creative has not abandoned its
`
`marks for “sound cards” is “fatal to its proposed counterclaim that Opposer has abandoned its
`
`marks for ‘electronic audio and video components’ and ‘sound systems.” This argument is, at
`
`best, disingenuous.
`
`Opposer's X-FI
`
`registrations do not cover either “electronic audio and video
`
`components” or “sound systems” in general. Rather, its registrations are limited to “electronic
`
`audio and video components, namely, sound systems comprised of receivers, amplifiers,
`
`tuners, sound mixers, equalizers, audio and video recorders and players, and radios” (emphasis
`
`18 61 Pa. Code § 60.19 (Apr. 27, 2019).
`
`

`

`added). Thus, to support its argument that Applicant’s supposed admission that Opposer’s X-FI
`
`marks have been used for sound cards, Creative takes the phrasing in its registrations out of
`
`context and leaves out key elements to create a false impression of what the registrations cover.
`
`Accordingly, Creative’s argument that “electronic audio and video components” has not
`
`been abandoned must fail because that phrase is restricted to specific types of “sound systems” in
`
`its registrations. Creative does not have a registration for everything that might be considered to
`
`constitute a “sound system.”19 Its marks are registered only for sound systems that include the
`
`listed components. Manifestly, looking to the definition of “sound systems” as set forth in
`
`Opposer’s registrations, Opposer cannot allege that the continued use of its marks for sound
`
`cards means that it is using the marks for “sound systems” that are “comprised of receivers,
`
`amplifiers, tuners, sound mixers, equalizers, audio and Video recorders and players, and radios.”
`
`Further, “sound cards” and “sound systems” are distinguishable based on their commonly
`
`understood meanings. A sound system is “a set of equipment for playing recorded music, or for
`
`making a band’s music able to be heard by everyone at a concert.”20 The definitions in other
`
`1
`common dictionaries is similar.2 A typical sound system is a system made up of many parts,
`
`e.g.,
`
`the sum total of receivers, amplifiers, tuners, and so forth. A sound card cannot be
`
`considered to be the equivalent of all these components combined into one product. Thus,
`
`Creative’s argument that sound cards are a sound system fails.
`
`‘9 The fact that Opposer does not contend it has made use of its mark for sound systems, other than by virtue of
`selling sound cards, is an implicit admission that it has not made use of its mark for sound systems, as set forth in its
`X-FI registrations.
`
`2° Collins English Dictionary (hm;s://www.collinsdictionag[.com/us/dictionag/english/sound—system).
`
`2‘ See, e.g., Cambridge Dictionary (“a piece or several pieces of electronic equipment that can be used to play music
`from recordings, radio broadcasts, etc.” (https://dictionag.cambridge.org/dictionag/english/sound-system); The
`Free Dictionary (“(Electronics) integrated equipment for producing amplified sound, as in a hi-fi or a mobile disco,
`or as a public-address system on stage” (ht_tps://www.thefreedictionag.com/sound+system); Merriam—Webster
`Dictionary
`(“equipment
`that
`is
`used
`to
`play music
`through
`speakers”)
`(httpsz/lwwwmerriam-
`webster.com/dictionag/sound%20system).
`
`

`

`

`

`identity separate and apart from the sound cards themselves. Rather,
`
`they are merely a
`
`supporting component that is integrated with the sound cards.
`
`As such, Creative’s attempt to
`
`27
`
`bar a claim to cancel its registration for software must fail.28
`
`C. Any Remaining Questions Regarding Whether Creative’s Computer Hardware and
`Peripherals Encompass Sound Cards Should Only Be Addressed at Trial.
`
`Opposer is asking the Board to decide on the merits what goods are encompassed under
`99
`
`the terms “computer hardware” and “peripherals.
`
`The cases it cites are not dispositive of the
`
`question.29 Moreover, there is case law to the contrary.30
`
`Accordingly, where, as here, “the description of the goods only provides basic
`
`information and the goods are technical,” Applicant should be allowed to offer and the Board
`
`should “consider extrinsic evidence
`
`to determine the specific meaning of the description of
`
`Opposer’s goods.”3’1 Such a finding simply cannot and should not be made in the context of this
`
`motion. Rather, these issues of fact are a question for trial.
`
`IV.
`
`Applicant’s Claim for Cancellation of Opposer’s Registrations in Their Entirety,
`Based on Abandonment, is Not Futile.
`
`Contrary to Opposer’s contention, Applicant has not “admitted” that sound cards are
`
`27 See Nartron Corp. v. Hewlett-Packard Development Co., L.P., supra (“Computer hardware is not related to an
`automobile despite the fact that it is incorporated into the final product. Thus, without more, we cannot conclude that
`because one item, petitioner's proximity device, may be a component part of another, respondent's computer
`hardware, it is related”).
`
`23 As Creative states, it also licenses its software to OEMs, which integrate the software code with their products,
`but it has offered no evidence that show use of its mark in a way that would qualify for registration. See TMEP
`§ 904.03(e).
`
`29 The first case cited by Creative provides a definition of a sound card. Response at 8. However, that definition is
`not binding because it appears in dicta. The cited reference in the second case, involving patent infringement, did
`not make a finding that either “hardware” or “computer peripherals” include sound cards. Rather, it found certain
`testimony sufficient to support a finding that the accused products’ a structure was essentially identical to the
`structure of the plaintiff’s paten .” This case simply has no bearing on this proceeding.
`3° In another case in which Creative was the plaintiff (but was not cited in Opposer’s Brief), the Court distinguished
`sound cards from hardware, stating that sound cards are “devices that interact with computer hardware and software
`to create sound effects.” Creative Labs, Inc. v. Cyrix Corp., 42 USPQ2d 1872 (N.D. Cal. TTAB 1997).
`In Shaw v.
`Toshiba Am. Info Sys., 9] F. Supp. 2d 926, 928 (ED. Tex. 1999), the court described sound cards as a “common
`DMA [Direct Memory Access] device”, but not as computer hardware.
`
`v. Mobility Corp., 2018 TTAB LEXIS 290 (TTAB Aug.
`31 Microsoft Technology Inc.
`(hgp ://ttabvue.uspto.gov/ttabvue/v?pno=9 12303 1 5&p§5—OPP&eno=14).
`
`12, 2018)
`
`-9-
`
`

`

`hardware.
`
`It merely included that possibility as an alternate claim for relief.
`
`If Applicant
`
`succeeds on its primary claim that the registrations for “hardware” and “computer peripherals”
`
`do not cover sound cards, Applicant’s claim that Opposer has not used its mark for any of the
`
`goods, as registered, will prevail and is certainly not futile.
`
`V.
`
`The Evidence Supporting the Counterclaim Was Made Available to Applicant Only
`After Months of Repeated Requests to Opposer.
`
`Opposer contends that it had previously produced some documents reflecting use of X-FI
`
`for software and asserts that Applicant has not adequately explained why it waited to file this
`
`motion. As explained above in Section III.B, those documents did not reflect use of Opposer’s
`
`marks on a software product that would support registration.
`
`Indeed, as set forth in detail in
`
`Applicant’s Brief at pp. 2-3, the fact that Faraway had to repeatedly request proof of use of the
`
`mark for all of Creative’s goods covered by its registrations belies Creative’s intimations.32
`
`CONCLUSION
`
`For the foregoing reasons and those set forth in Applicant’s Motion to Amend and
`
`supporting Brief, Applicant’s motion should be granted.
`
`Respectfully submitted,
`
`Wilkinson Barker Knauer, LLP
`
`By: /Mitchell H. Stabbe/
`Mitchell H. Stabbe
`
`Kelly A. Donohue
`Radhika P. Raju
`1800 M Street, NW, Suite 800N
`Washington, DC. 20036
`(202) 783-4141
`trademark@wbklaw.com
`Attorneys for Applicant
`
`Dated: August 21, 2019
`
`32 Cf. Mitek Corp. v. Woods Industries, Inc., 41 U.S.P.Q.2d 1307, 1309 (TTAB 1996) (the fact that Opposer was not
`forthcoming with information requested in discovery was factor supporting grant of motion for leave to amend
`answer to assert a counterclaim).
`
`-10-
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`CREATIVE TECHNOLOGY, LTD.,
`
`Opposer,
`
`v.
`
`FARAWAY CONNECTIONS, LLC,
`Applicant
`
`VVVVVVV
`
`Opposition No. 91240541
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that, on August 21, 2019,
`
`I caused true and correct copies of the
`
`Applicant’s Reply to Opposition to Motion to Amend Answer to Add Counterclaim to be served
`
`on the persons listed below via electronic mail at the e-mail addresses shown below:
`
`Katie Bukrinsky, Esq. (kbukrinsky@mwe.com)
`John J. Dabney, Esq. (jdabney@mwe.com)
`McDermott Will & Emery LLP (dciplit@mwe.com,
`mhallerman@mwe.com, hpmorrison@mwe.com)
`The McDermott Building
`500 North Capitol Street, NW
`Washington, DC 20001
`
`/Mitchell H. Stabbe/
`
`Mitchell H. Stabbe
`
`

`

`ATTACHMENT A
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`CREATIVE TECHNOLOGY, LTD.,
`
`Opposer,
`
`V.
`
`FARAWAY CONNECTIONS, LLC,
`
`Applicant
`************************************
`
`FARAWAY CONNECTIONS, LLC,
`
`Counter—Claim Petitioner,
`
`V.
`
`CREATIVE TECHNOLOGY, LTD. ,
`
`Counter-Claim Respondent
`
`VVVVVVVVV
`vvvvvvvvv
`
`Opposition No. 91240541
`
`Serial No. 87/257,670
`
`Mark: XFI
`
`Reg. Nos. 3,151,814, 3,325,431 and
`3,999,214
`SOUND BLASTER XFI,
`
`Marks:
`
`X-Fi (Stylized) and XFI
`
`SECOND AMENDED ANSWER AND COUNTER-CLAIM PETITION FOR
`CANCELLATION
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`Applicant, Faraway Connections, LLC, by its attorneys, as its Answer to the Notice of
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`Opposition filed herein, states:
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`1.
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`Applicant lacks sufficient knowledge or information to form a belief as to the
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`truth of the allegations of Paragraph 1 of the Notice of Opposition.
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`2.
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`3.
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`Applicant admits the allegations of Paragraph 2 of the Notice of Opposition.
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`Applicant lacks sufficient knowledge or information to form a belief as to the
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`truth of the allegations of Paragraph 3 of the Notice of Opposition.
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`4.
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`Applicant lacks sufficient knowledge or information to form a belief as to the
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`truth of the allegations of Paragraph 4 of the Notice of Opposition.
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`

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`5.
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`Applicant lacks sufficient knowledge or information to form a belief as to the
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`truth of the allegations of Paragraph 5 of the Notice of Opposition.
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`6.
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`Applicant lacks sufficient knowledge or information to form a belief as to the
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`truth of the allegations of Paragraph 6 of the Notice of Opposition.
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`7.
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`Applicant lacks sufficient knowledge or information to form a belief as to the
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`truth of the allegations of Paragraph 7 of the Notice of Opposition.
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`8.
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`The registrations described in Paragraph 8 of the Notice of Opposition speak for
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`themselves and, to the extent the allegations in Paragraph 8 vary therewith, Applicant denies the
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`truth thereof.
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`9.
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`The applications described in Paragraph 9 of the Notice of Opposition speak for
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`themselves and, to the extent the allegations in Paragraph 9 vary therewith, Applicant denies the
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`truth thereof.
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`10.
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`Applicant lacks sufficient knowledge or information to form a belief as to the
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`truth of the allegations of Paragraph 10 of the Notice of Opposition.
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`11.
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`The application described in Paragraph 11 of the Notice of Opposition speaks for
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`itself. and to the extent the allegations in Paragraph 11 vary therewith, Applicant denies them.
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`12.
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`Paragraph 12 of the Notice of Opposition sets forth conclusions of law to which
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`no response is required. To the extent that a response is deemed required, Applicant denies the
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`allegations of Paragraph 12 of the Notice of Opposition.
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`13.
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`Applicant lacks sufficient knowledge or information to form a belief as to the
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`truth of the allegations of Paragraph 13 of the Notice of Opposition.
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`

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`14.
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`Paragraph 14 of the Notice of Opposition sets forth conclusions of law to which
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`no response is required. To the extent that a response is deemed required, Applicant denies the
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`allegations of Paragraph 14 of the Notice of Opposition.
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`15.
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`Applicant lacks sufficient knowledge or information to form a belief as to the
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`truth of the allegations of Paragraph 15 of the Notice of Opposition.
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`FIRST AFFIRMATIVE DEFENSE
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`The Notice of Opposition fails to state a claim upon which relief may be granted.
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`WHEREFORE, Applicant prays that this opposition be dismissed with prejudice and that
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`a registration for the XFI mark be issued to Applicant.
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`COUNTER-CLAIM PETITION FOR CANCELLATION
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`Applicant/Counter—Claim Petitioner Faraway Connections, LLC (“Faraway”), a Delaware
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`limited liability company, with a mailing address of 0/0 The Corporation Trust Company, 1209
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`Orange Street Wilmington, Delaware 19801, believing that it will be damaged by Registration
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`Nos. 3,151,814 for SOUND BLASTER XFI in Class 9, 3,325,431 for X-Fi (Stylized) in Class 9,
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`and 3,999,214 for X—FI in Class 9 (collectively, the “X—Fi® Marks”), hereby petitions to cancel
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`and/or or to restrict the registrations for those marks for certain of the goods.
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`As grounds therefor, it is alleged:
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`1.
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`On December 5, 2016, Applicant/Counter-Claim Petitioner Faraway filed an
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`application to register the mark XFI (the “XFI Mark”), Serial No. 87/257,670, for the following
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`goods and services:
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`Downloadable mobile applications that enable subscribers to utilize, manage and
`control home appliances, on/off light switches, electric light dimmers, sequencers
`and timers, window blind and shade operating systems, carbon monoxide
`detectors, garage door openers, hot water heaters, electronic thermostats, HVAC,
`video and audio systems, and home monitoring systems; and wireless routers and
`wireless networking products, namely, wireless gateway routers and extenders, in
`International Class 9;
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`

`

`Providing access to the Internet; providing high-speed Internet access services;
`providing multiple user access to the Internet; providing multiple user wireless
`access to the Internet; providing multiple user access to the Internet for the
`transfer and dissemination of a wide range of information in the fields of
`entertainment, sports, music, news and general interest topics; Internet service
`provider (ISP); Internet service provider (ISP) services; web Internet service
`provider
`(WISP); web Internet service provider
`(WISP) services; wireless
`broadband communication services; wireless communication services, namely,
`electronic transmission of voice signals, data, images and information by means
`of wireless networks to multiple computers, computer tablets, handheld electronic
`devices, portable electronic devices, computer game machines, and other
`consumer electronic devices in the same home; broadcasting services and
`provision of telecommunication access to video and audio content provided via a
`video-on-demand
`service;
`broadcasting
`services
`and
`provision
`of
`telecommunication access to films, movies, and television programs provided via
`a video-on-demand service; video broadcasting services via wireless broadband,
`wireless communications networks,
`the Internet and other global
`information
`networks;
`telecommunication services, namely,
`transmission of voice, data,
`graphics,
`images,
`audio
`and
`video
`via wireless
`broadband, wireless
`communications networks, the Internet and other global information networks;
`wireless video-on-demand transmission services; provision of telecommunication
`access to video and audio content provided via a video-on-demand service via
`wireless broadband, wireless communications networks, the Internet and other
`global information networks; streaming of audio, visual and audiovisual material
`via wireless broadband, wireless communications networks, the Internet and other
`global information networks; providing electronic transmission of electronic mail,
`e-mail; providing instant messaging, web messaging and wireless,
`text and
`numeric wireless digital messaging services; wireless digital messaging, paging
`services, and electronic mail services in the nature of transmission of electronic
`mail; telecommunication services, namely, providing e-mail notification alerts
`wireless broadband, wireless communications networks, the Internet and other
`global
`information networks;
`telecommunication services, namely, providing
`electronic message alerts via wireless broadband, wireless communications
`networks, the Internet and other global information networks; telecommunication
`services, namely, wireless telephone services; wireless communications services,
`namely,
`transmission of graphics to mobile telephones; wireless telephone
`telecommunications services, namely, wireless mobile telephone calling plans;
`and providing video-on-demand service transmission services via a website for
`viewing video and audio content, in International Class 38;
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`broadband, wireless
`via wireless
`information
`entertainment
`Providing
`communications networks, the Internet and other global information networks;
`provision of on-downloadable films, movies and television programs via a
`wireless video-on-demand service; and entertainment services, namely, providing
`temporary use of non-downloadable videos, TV programs, music, photographs,
`non-downloadable video games, movies,
`and other
`entertainment-related
`multimedia content to users of mobile devices, mobile phones, smart phones, cell
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`-4-
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`

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`televisions, computers, computer tablets, handheld
`televisions, smart
`phones,
`electronic devices, portable electronic devices, computer game machines and
`other
`consumer
`electronic
`devices
`via wireless
`broadband, wireless
`communications networks, the Internet and other global information networks, in
`International Class 41;
`
`Remote contro