Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA997610
`08/26/2019
`
`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
`
`Correspondence
`information
`
`Apple Inc.
`
`08/25/2019
`
`One Apple Park Way
`Cupertino, CA 95014
`UNITED STATES
`
`Joseph Petersen
`Kilpatrick Townsend & Stockton LLP
`1080 Marsh Road
`Menlo Park, CA 94025
`UNITED STATES
`jpetersen@kilpatricktownsend.com, LMcAndrews@kilpatricktownsend.com, ag-
`arcia@kilpatricktownsend.com, tmadmin@kilpatricktownsend.com
`650-326-2400
`
`Applicant Information
`
`Application No
`
`88109645
`
`Publication date
`
`02/26/2019
`
`Opposition Filing
`Date
`
`Applicant
`
`08/26/2019
`
`Opposition Peri-
`od Ends
`
`08/25/2019
`
`Bennett, Rohan
`123 Drake Avenue
`New Rochelle, NY 10805
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 035. First Use: 2018/07/15 First Use In Commerce: 2018/07/17
`All goods and services in the class are opposed, namely: On-line retail store services featuringa vari-
`ety of consumer electronic products
`
`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.
`
`2926853
`
`Application Date
`
`08/16/2002
`
`Registration Date
`
`02/15/2005
`
`Foreign Priority
`
`02/26/2002
`
`

`

`Word Mark
`
`Design Mark
`
`NONE
`
`Date
`
`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.
`
`2424976
`
`Registration Date
`
`01/30/2001
`
`Word Mark
`
`Design Mark
`
`THE APPLE STORE
`
`Application Date
`
`11/23/1999
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 1997/11/00 First Use In Commerce: 1997/11/00
`online retail store services provided via a global computer network featuring
`computers, computer hardware, computer systems, computer software, com-
`puter peripherals and accessories
`
`U.S. Registration
`No.
`
`2462798
`
`Registration Date
`
`06/19/2001
`
`Word Mark
`
`Design Mark
`
`APPLE STORE
`
`Application Date
`
`11/23/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 1997/11/01 First Use In Commerce: 1997/11/01
`online retail store services provided via a global computer network featuring
`computers, computer hardware, computer systems, computer software, com-
`puter peripherals and accessories
`
`U.S. Registration
`No.
`
`2683410
`
`Registration Date
`
`02/04/2003
`
`Word Mark
`
`Design Mark
`
`APPLE STORE
`
`Application Date
`
`04/25/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 1997/11/01 First Use In Commerce: 1997/11/01
`Retail store services featuring computers, computer software, computer peri-
`pherals and consumer electronics, and demonstration of products relating
`thereto; online retail store services provided via a global computer network fea-
`turing computers, computer software, computer peripherals and consumer elec-
`tronics, and demonstration of products relating thereto
`
`U.S. Registration
`No.
`
`2715578
`
`Registration Date
`
`05/13/2003
`
`Application Date
`
`07/01/2002
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Word Mark
`
`Design Mark
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 1977/01/01 First Use In Commerce: 1977/01/01
`Computers hardware; computer hardware, namely, server, desktop, laptop,
`notebook and subnotebook computers; hand held and mobile computers; com-
`puter [ terminals and ] monitors; personal digital assistants; portable digital audio
`players; electronic organizers; computer keyboards, cables, [ modems; ] audio
`speakers; computer video control devices, namely, computer mice, [ trackballs,
`joysticks andgamepads; ] a full line of computer software for business, home,
`education, anddeveloper use; computer programs for personal information man-
`agement; database management software; [ character recognition software;
`telephony management software; ] electronic mail and messaging software; [
`telecommunications software, namely, for paging; ] database synchronization
`software; computer programs for accessing, browsing and searching online
`databases; operating system software; application development tool programs;
`blank computer storage media; fonts, typefaces, type designs and symbols re-
`corded onmagnetic media; computer software for use in providing multiple user
`access to a global computer information network for searching, retrieving, trans-
`ferring, manipulating and disseminating a wide range of information; computer
`software foruse as a programming interface; computer software for use in net-
`work server sharing; local and wide area networking software; computer soft-
`ware for matching, correction, and reproduction of color; computer software for
`use in digital videoand audio editing; computer software for use in enhancing
`text and graphics; computer software for use in font justification and font quality;
`computer software for use to navigate and search a global computer information
`network, as well as to organize and summarize the information retrieved; com-
`puter software for use in word processing and database management; word pro-
`cessing software incorporating text, spreadsheets, still and moving images,
`sounds and clip art; computer software for use in authoring, downloading, trans-
`mitting, receiving, editing, extracting, encoding, decoding, playing, storing and
`organizing audio, video, still images and other digital data; computer software for
`analyzing and troubleshooting other computer software; children'seducational
`software; computer game software; Computer graphics software; [ Computer
`search engine software; ] Web sitedevelopment software; computer program
`
`

`

`which provides remote viewing, remote control, communications and software
`distribution within personal computer systemsand across computer network;
`computer programs for file maintenance and data recovery; computer peripher-
`als; instructional manuals packaged in association withthe above
`
`U.S. Registration
`No.
`
`1078312
`
`Registration Date
`
`11/29/1977
`
`Word Mark
`
`Design Mark
`
`APPLE
`
`Application Date
`
`03/25/1977
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`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 ] (( * COMPUTER PROGRAMS, NAMELY, COMPUTER OPERATING
`SOFTWARE, COMPUTER SOFTWARE DEVELOPMENT TOOLS, GAME
`SOFTWARE, AND COMPUTER SOFTWARE FOR CREATING AND EDITING
`TEXT AND GRAPHICS * ))
`
`U.S. Registration
`No.
`
`1114431
`
`Registration Date
`
`03/06/1979
`
`Word Mark
`
`NONE
`
`Application Date
`
`03/20/1978
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`THE MARK CONSISTS OF A SILHOUETTE OF ANAPPLE WITH A BITE RE-
`MOVED.
`
`Class 009. First use: First Use: 1977/01/00 First Use In Commerce: 1977/01/00
`COMPUTERS [ AND COMPUTER PROGRAMS RECORDED ON PAPER AND
`TAPE]
`
`U.S. Registration
`No.
`
`2951270
`
`Registration Date
`
`05/17/2005
`
`Word Mark
`
`Design Mark
`
`NONE
`
`Application Date
`
`08/16/2002
`
`Foreign Priority
`Date
`
`02/26/2002
`
`

`

`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the design of an apple with a bite removed.
`
`Class 028. First use: First Use: 0 First Use In Commerce: 0
`Stand alone video game machines; [pinball and arcade game machines;] hand-
`held unit for playing electronic games; [coin-operated video games; toy com-
`puters; electronic action toys;] electronic educational game machines for chil-
`dren; musical toys[; battery operated remote controlled toy vehicles; toys and
`games, namely, action figures and accessories therefore; board games; card
`games; playing cards]
`
`U.S. Registration
`No.
`
`3621571
`
`Registration Date
`
`05/19/2009
`
`Word Mark
`
`Design Mark
`
`APPLE
`
`Application Date
`
`02/05/2008
`
`Foreign Priority
`Date
`
`NONE
`
`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.
`
`3679056
`
`Registration Date
`
`09/08/2009
`
`Word Mark
`
`NONE
`
`Application Date
`
`01/13/2009
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the design of an apple with a bite removed.
`
`Class 009. First use: First Use: 1977/01/31 First Use In Commerce: 1977/01/31
`Computers; computer hardware; computer peripherals; handheld computers;
`handheld mobile digital electronic devices for recording, organizing, transmitting,
`manipulating, and reviewing text, data, image, audio, and audiovisual files, for
`the sending and receiving of telephone calls, electronic mail, and other digital
`data, for use as a digital format audio player, handheld computer, personal digit-
`al assistant, electronic organizer, electronic notepad, camera, and global posi-
`tioning system (GPS) electronic navigation device; digital audio and video re-
`corders and players; personal digital assistants; electronic organizers; cameras;
`telephones; mobile phones; satellite navigational systems, namely, global posi-
`tioning systems (GPS); electronic navigational devices, namely, global position-
`ing satellite (GPS) based navigation receivers; computer game machines for use
`with external display screens, monitors, or televisions; a full line of accessories
`and parts for the aforementioned goods; stands, covers, cases, holsters, power
`adaptors, and wired and wireless remote controls for the aforementioned goods;
`computer memory hardware; computer disc drives; optical disc drives; computer
`networking hardware; computer monitors; flat panel display monitors; computer
`keyboards; computer cables; modems; computer mice; electronic docking sta-
`tions; set top boxes; batteries; battery chargers; electrical connectors, wires,
`cables, and adaptors; devices for hands-free use; headphones; earphones; ear
`buds; audio speakers; microphones; and headsets; a full line of computer soft-
`ware for business, home, education, and developer use; user manuals for use
`with, and sold as a unitwith, the aforementioned goods; downloadable audio and
`video files, movies, ring tones, video games, television programs, pod casts and
`audio books via the internet and wireless devices featuring music, movies,
`videos, television, celebrities, sports, news, history, science, politics, comedy,
`children's entertainment,animation, culture, current events and topics of general
`interest
`
`U.S. Registration
`No.
`
`3928818
`
`Registration Date
`
`03/08/2011
`
`Application Date
`
`05/03/2007
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Word Mark
`
`Design Mark
`
`APPLE
`
`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
`
`Attachments
`
`78155188#TMSN.png( bytes )
`75857191#TMSN.png( bytes )
`75857151#TMSN.png( bytes )
`76400649#TMSN.png( bytes )
`76426501#TMSN.png( bytes )
`73120444#TMSN.png( bytes )
`73162799#TMSN.png( bytes )
`78155196#TMSN.png( bytes )
`77388864#TMSN.png( bytes )
`77648705#TMSN.png( bytes )
`77172511#TMSN.png( bytes )
`NOO - Rohan Bennett 88109645.pdf(194525 bytes )
`Exhibit 1.pdf(4193905 bytes )
`Exhibit 2.pdf(251028 bytes )
`Exhibit 3.pdf(2388276 bytes )
`Exhibit 4.pdf(2840309 bytes )
`Exhibit 5.pdf(3712593 bytes )
`Exhibit 6.pdf(2176416 bytes )
`Exhibit 7.pdf(2232740 bytes )
`
`Signature
`
`Name
`
`Date
`
`/Joseph Petersen/
`
`Joseph Petersen
`
`08/26/2019
`
`

`

`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Application Serial No. 88/109645
`
`For the Mark:
`Filed: September 8, 2018
`Published: February 26, 2019
`
`
`APPLE INC.,
`
`
`
` v.
`
`ROHAN BENNETT
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`
`
`
`Opposer,
`
`Applicant.
`
`
`
`
`
`APPLE INC. (“Opposer” or “Apple”), a California corporation with a principal place of
`
`business at One Apple Park Way, Cupertino, California 95014, will be damaged by the issuance
`
`of a registration for the trademark shown in Application Serial No. 88/109645 (“Applicant’s
`
`Mark”) for the services identified in Class 35 and hereby opposes the same.
`
`
`
`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:
`
`A.
`
`Apple and Its World-Famous Apple Marks
`
`FACTS
`
`1.
`
`Apple is the world-famous designer, manufacturer, and marketer of mobile
`
`communication and media devices and personal computers, and seller of a variety of related
`
`software, services, accessories, and third-party digital content and applications. Apple’s APPLE
`
`brand is one of the best-known brands in the world.
`
`
`
`1
`
`

`

`
`
`2.
`
`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 its graphic equivalent, the Apple Logo
`
`(shown below) depicting a stylized apple with a detached leaf (collectively, the “Apple Marks”).
`
`
`
`3.
`
`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 are recognized immediately
`
`as identifying Apple’s APPLE-branded goods and services.
`
`4.
`
`The Apple Marks are famous and distinctive within the meaning of Section 43(c)
`
`of the Lanham Act, 15 U.S.C. § 1125(c). The extraordinary level of fame and consumer
`
`recognition that the Apple Marks currently enjoy cannot be seriously disputed.
`
`5.
`
`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 2019, Forbes magazine ranked
`
`the APPLE brand as the world’s most valuable brand for the ninth year in a row, with an estimated
`
`valuation of $206 billion. Copies of Forbes magazine articles concerning its most valuable brands
`
`rankings from 2011 through 2019 are attached as Exhibit 1.
`
`6.
`
`In 2019, for the eighth consecutive year, Apple won the Harris Interactive “Brand
`
`of the Year” award in the tablet computer category. Apple was also named the #1 brand in the
`
`smart phone category, and tied for #1 in the virtual personal assistant category. Attached as
`
`
`
`2
`
`

`

`
`
`Exhibit 2 is a printout of the Harris Interactive report obtained from the website at:
`
`https://theharrispoll.com/the-harris-poll-announces-this-years-brands-of-the-year/.
`
`7.
`
`Additionally, Interbrand has consistently recognized the APPLE brand in the top
`
`50 of its “Best Global Brands” annual rankings, increasing in value each year. After being named
`
`the second most valuable brand in the world in 2012, the next year the APPLE brand was ranked
`
`as the most valuable, and Apple has maintained that top position every year since (2013-2018).
`
`Attached as Exhibit 3 are copies of relevant pages of Interbrand’s “Best Global Brands” rankings
`
`from 2010 through 2018, in reverse chronological order. Interbrand has awarded the APPLE brand
`
`the following rankings and brand valuations over the past nine years:
`
`(a) 2018: valuing the APPLE brand as the most valuable brand in the world, with an
`estimated worth of U.S. $214.48 billion;
`
`(b) 2017: valuing the APPLE brand as the most valuable brand in the world, with an
`estimated worth of U.S. $184.15 billion;
`
`(c) 2016: valuing the APPLE brand as the most valuable brand in the world, with an
`estimated worth of U.S. $178.12 billion;
`
`(d) 2015: valuing the APPLE brand as the most valuable brand in the world, with an
`estimated worth of U.S. $170.28 billion;
`
`(e) 2014: valuing the APPLE brand as the most valuable brand in the world, with an
`estimated worth of U.S. $118.86 billion;
`
`(f) 2013: valuing the APPLE brand as the most valuable brand in the world, with an
`estimated worth of U.S. $98.32 billion;
`
`(g) 2012: valuing the APPLE brand as the 2nd most valuable brand in the world, with
`an estimated worth of U.S. $76.57 billion;
`
`(h) 2011: valuing the APPLE brand as the 8th most valuable brand in the world, with
`an estimated worth of U.S. $33.49 billion; and
`
`(i) 2010: valuing the APPLE brand as the 17th most valuable brand in the world, with
`an estimated worth of U.S. $21.14 billion.
`
`3
`
`
`
`
`
`

`

`
`
`8.
`
`This year, leading market research and brand valuation company Millward Brown
`
`Optimor (“MBO”) named APPLE as the most valuable brand in the United States in its “Brandz™
`
`Top 100 Most Valuable U.S. Brands” annual rankings. Last year, the inaugural year of MBO’s
`
`U.S. rankings, APPLE was named the second most valuable brand in the United States. Copies of
`
`MBO’s 2019 and 2018 “Brandz™ Top 100 Most Valuable U.S. Brands” annual rankings are
`
`attached as Exhibit 4.
`
`9.
`
`Moreover, over the past twelve years, MBO has named APPLE as one of the
`
`world’s top brands in its “Brandz™ Top 100 Most Valuable Global Brands” annual rankings. In
`
`MBO’s 2019 rankings, Apple’s APPLE brand was ranked the second most valuable brand in the
`
`world with a value of $309.5 billion. In MBO’s 2018 rankings, Apple’s APPLE brand was ranked
`
`the second most valuable brand in the world with a value of $300.6 billion. 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. The 2016 rankings also ranked Apple’s APPLE brand the second most
`
`valuable brand in the world with a value of $228.46 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 recognition
`
`of the APPLE brand as one of the world’s most valuable for more than a decade. Attached as
`
`Exhibit 5 are copies of relevant pages of MBO’s rankings in reverse chronological order from
`
`2019 through 2008.
`
`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 10
`
`years in a row from 2009 to 2019, Apple has been named the “World’s Most Admired Company”
`
`
`
`4
`
`

`

`
`
`for the year. Before 2009, Fortune Magazine’s list was limited to “America’s Most Admired
`
`Companies,” and Apple also topped that list in 2008. Attached as Exhibit 6 are copies of printouts
`
`of relevant pages of Fortune Magazine’s “Most Admired Companies” rankings in reverse
`
`chronological order from 2019 through 2008.
`
`11.
`
`Further, Apple is extraordinarily well-known among consumers for its retail
`
`services offering a wide variety of products for sale on its Apple.com website and through its
`
`APPLE STORE online and brick-and-mortar stores. For example, on Apple’s www.apple.com
`
`website, consumers may view and purchase a wide variety of consumer electronics products.
`
`12.
`
`Apple owns numerous United States registrations on the Principal Register for the
`
`Apple Marks, including, without limitation, the following:
`
`TRADEMARK
`
`APP. NO/
`REG. NO.
`
`APP. DATE/
`REG. DATE
`
`2,926,853
`
`Aug. 16, 2002/
`Feb. 15, 2005
`
`
`
`2,424,976
`
`Nov. 23, 1999/
`Jan. 30, 2001
`
`2,462,798
`
`Apr. 23, 1999/
`Jun. 19, 2001
`
`
`
`
`
`5
`
`
`
`GOODS/SERVICES
`(FIRST USE/PRIORITY DATE)
`Class 35: analysis and consultation in the field of
`business information management, namely, the
`selection, adoption and operation of computers and
`computer information management systems;
`providing information in the fields of business and
`commerce over computer networks and global
`communication networks; business services, namely,
`providing computer databases regarding the purchase
`and sale of a wide variety of products and services of
`others; business services, namely, dissemination of
`advertising for others via computer networks and
`global communication networks; retail store services
`featuring computers, computer software, computer
`peripherals and consumer electronics, and
`demonstration of products relating thereto; online
`retail store services provided via computer
`networks and global communication networks
`featuring computers, computer software, computer
`peripherals and consumer electronics, and
`demonstration of products relating thereto (first
`use: 1983)
`Class 35: online retail store services provided via a
`global computer network featuring computers,
`computer hardware, computer systems, computer
`software, computer peripherals and accessories
`(first use: Nov., 1997)
`Class 35: online retail store services provided via a
`global computer network featuring computers,
`computer hardware, computer systems, computer
`
`

`

`
`
`
`
`TRADEMARK
`
`APP. NO/
`REG. NO.
`
`APP. DATE/
`REG. DATE
`
`2,683,410
`
`Apr. 25, 2002/
`Feb. 4, 2003
`
`
`
`2,715,578
`
`Jul. 1, 2002 /
`May 13, 2003
`
`
`
`6
`
`GOODS/SERVICES
`(FIRST USE/PRIORITY DATE)
`software, computer peripherals and accessories
`(first use: Nov. 1, 1997)
`Class 35: retail store services featuring computers,
`computer software, computer peripherals and
`consumer electronics, and demonstration of
`products relating thereto; online retail store
`services provided via a global computer network
`featuring computers, computer software, computer
`peripherals and consumer electronics, and
`demonstration of products relating thereto (first
`use: Nov. 1, 1997)
`Class 9: computers hardware; computer
`hardware, namely, server, desktop, laptop,
`notebook and subnotebook computers; hand held
`and mobile computers; computer [ 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 and gamepads;
`] a full line of computer software for business,
`home, education, and developer use; computer
`programs for personal information management;
`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 recorded on magnetic media;
`computer software for use in providing multiple user
`access to a global computer information network for
`searching, retrieving, transferring, manipulating and
`disseminating a wide range of information; computer
`software for use as a programming interface;
`computer software for use in network server sharing;
`local and wide area 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, as well as to organize and
`summarize the information retrieved; computer
`software for use in word processing and database
`management; word processing software incorporating
`text, spreadsheets, still and moving images, sounds
`and clip art; computer software for use in authoring,
`downloading, transmitting, receiving, editing,
`
`

`

`
`
`
`
`TRADEMARK
`
`APP. NO/
`REG. NO.
`
`APP. DATE/
`REG. DATE
`
`
`
`
`
`
`
`
`
`
`
`
`
`1,078,312
`
`Mar. 25, 1977 /
`Nov. 29, 1977
`
`1,114,431
`
`Mar. 20, 1978 /
`Mar. 6, 1979
`
`2,951,270
`
`Aug. 16, 2002 /
`May 17, 2005
`
`3,621,571
`
`Feb. 5, 2005 /
`May 16, 2009
`
`3,679,056
`
`Jan. 13, 2009 /
`Sep. 8, 2009
`
`7
`
`GOODS/SERVICES
`(FIRST USE/PRIORITY DATE)
`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's
`educational software; computer game software;
`computer graphics software; [ computer search engine
`software; ] web site development software; computer
`program which provides remote viewing, remote
`control, communications and software distribution
`within personal computer systems and across
`computer network; computer programs for file
`maintenance and data recovery; computer
`peripherals; instructional manuals packaged in
`association with the above (first use: Jan. 1, 1977)
`Class 9: computers; [ and computer programs
`recorded on paper and tape ] * computer programs,
`namely, computer operating software, computer
`software development tools, game software, and
`computer software for creating and editing text and
`graphics *(first use: Apr., 1976)
`Class 9: computers [ and computer programs
`recorded on paper and tape] (first use: Jan., 1977)
`
`Class 28: stand alone video game machines;
`[pinball and arcade game machines;] hand-held unit
`for playing electronic games; [coin-operated video
`games; toy computer