Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1062258
`
`Filing date:
`
`06/16/2020
`
`Proceeding
`
`Party
`
`Correspondence
`Address
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`91255707
`
`Defendant
`Apple Inc.
`
`DALE M CENDALI
`KIRKLAND & ELLIS LLP
`601 LEXINGTON AVENUE, 44TH FLOOR
`NEW YORK, NY 10022
`UNITED STATES
`dale.cendali@kirkland.com, mary.mazzello@kirkland.com,
`erika.dillon@kirkland.com, karina.patel@kirkland.com
`no phone number provided
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Answer
`
`Dale M. Cendali
`
`dale.cendali@kirkland.com, mary.mazzello@kirkland.com,
`erika.dillon@kirkland.com, karina.patel@kirkland.com
`
`Signature
`
`Date
`
`/Dale M. Cendali/
`
`06/16/2020
`
`Attachments
`
`Answer to Notice of Opposition.pdf(104990 bytes )
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`GANG CAO,
`
`
`
`v.
`
`APPLE INC.,
`
`
`Opposer,
`
`Applicant.
`
`
`
`
`
`
`
`Opposition No. 91255707
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`
`ANSWER TO NOTICE OF OPPOSITION
`
`Applicant Apple Inc. (“Apple” or “Applicant”) hereby submits its Answer in response to
`
`the Notice of Opposition (the “Notice”) filed by Gang Cao (“Opposer”).
`
`1.
`
`Applicant admits that a Mr. Gang Cao is listed as the registrant for the domain
`
`names LIVEPHOTO.COM and LIVEPHOTO.CA and that Mr. Cao produced documents in
`
`Opposition Proceeding No. 91239006 suggesting that he purchased these domain names in 2011,
`
`but denies knowledge or information sufficient to form a belief as to the allegations set forth in
`
`Paragraph 1 of the Notice of Opposition, and therefore denies the same.
`
`2.
`
`Applicant denies knowledge or information sufficient to form a belief as to the
`
`allegations set forth in Paragraph 2 of the Notice of Opposition, and therefore denies the same.
`
`3.
`
`To the extent Paragraph 3 of the Notice of Opposition refers to Applicant’s
`
`August 22, 2017 application bearing U.S. Serial No. 87/579,714 (the “Application”) to register
`
`
`
`

`

`
`
`the stylized LIVEPHOTOSKIT mark (“Applicant’s Mark”) with the U.S. Patent and Trademark
`
`Office (the “USPTO”), Applicant admits that it filed the Application, which speaks for itself.
`
`4.
`
`Applicant states that the allegations set forth in Paragraph 4 of the Notice of
`
`Opposition consist of legal conclusions to which no response is required, but to the extent any
`
`response is required, denies the same.
`
`5.
`
`Applicant states that the allegations set forth in Paragraph 5 of the Notice of
`
`Opposition consist of legal conclusions to which no response is required, but to the extent any
`
`response is required, denies the same, except admits that TMEP Section 1209.01(c)(i) states that
`
`a mark is generic “if its primary significance to the relevant public is the class or category of
`
`goods or services on or in connection with which it is used.”
`
`6.
`
`Applicant states that the allegations set forth in Paragraph 6 of the Notice of
`
`Opposition consist of legal conclusions to which no response is required, but to the extent any
`
`response is required, denies the same. Applicant further states that the relevant purchasing
`
`public does not understand Applicant’s Mark primarily to be the common or class name for the
`
`goods and services described in the Application—that “Live photos” and “kit” are not widely
`
`used generically to identify a key aspect or part of the genus of goods or services identified in the
`
`opposed Application—and further states that Applicant’s Mark denotes a unique source of such
`
`goods and services.
`
`7.
`
`Applicant states that the allegations set forth in Paragraph 7 of the Notice of
`
`Opposition consist of legal conclusions to which no response is required, but to the extent any
`
`response is required, denies the same.
`
`8.
`
`Applicant denies knowledge or information sufficient to form a belief as to the
`
`allegations set forth in Paragraph 8 of the Notice of Opposition, and therefore denies the same,
`
`
`
`2
`
`

`

`
`
`except admits that the document annexed as Exhibit 1 to the Notice of Opposition purports to
`
`consist of a March 29, 2015 posting on analogindex.com/review/philips-xenium-i908-review-
`
`solid-build-good-camera-but-also-high-temperature-and-long-charge-video-_217136.html, but
`
`denies knowledge or information sufficient to form a belief as to the authenticity or accuracy of
`
`the document annexed as Exhibit 1 to the Notice of Opposition.
`
`9.
`
`Applicant denies knowledge or information sufficient to form a belief as to the
`
`allegations set forth in Paragraph 9 of the Notice of Opposition, and therefore denies the same,
`
`except admits that the document annexed as Exhibit 2 to the Notice of Opposition purports to
`
`consist of a January 2015 posting on https://phonesword.blogspot.com/2016/01/BlackBerry-Priv-
`
`WITH-5.4-INCH-DISPLAY.html, but denies knowledge or information sufficient to form a
`
`belief as to the authenticity or accuracy of the document annexed as Exhibit 2 to the Notice of
`
`Opposition.
`
`10.
`
`Applicant denies knowledge or information sufficient to form a belief as to the
`
`allegations set forth in Paragraph 10 of the Notice of Opposition, and therefore denies the same,
`
`except admits that the document annexed as Exhibit 3 to the Notice of Opposition purports to
`
`consist of a May 2015 posting on androidbigz.blogspot.com/2015/05/specification-lenovo-
`
`p70.html, but denies knowledge or information sufficient to form a belief as to the authenticity or
`
`accuracy of the document annexed as Exhibit 3 to the Notice of Opposition.
`
`11.
`
`Applicant denies knowledge or information sufficient to form a belief as to the
`
`allegations set forth in Paragraph 11 of the Notice of Opposition, and therefore denies the same,
`
`except admits that the document annexed as Exhibit 4 to the Notice of Opposition purports to
`
`consist of an August 6, 2014 posting on https://www.gsmarena.com/htc_desire_616_dual_sim-
`
`
`
`3
`
`

`

`
`
`review-1111p8.php, but denies knowledge or information sufficient to form a belief as to the
`
`authenticity or accuracy of the document annexed as Exhibit 4 to the Notice of Opposition.
`
`12.
`
`Applicant denies knowledge or information sufficient to form a belief as to the
`
`allegations set forth in Paragraph 12 of the Notice of Opposition, and therefore denies the same,
`
`except admits that the document annexed as Exhibit 5 to the Notice of Opposition purports to
`
`consist of a February 22, 2015 posting on https://www.gadgetdiary.com/htc-desire-526g-review-
`
`affordable-quality-device.html, but denies knowledge or information sufficient to form a belief
`
`as to the authenticity or accuracy of the document annexed as Exhibit 5 to the Notice of
`
`Opposition.
`
`13.
`
`Applicant denies knowledge or information sufficient to form a belief as to the
`
`allegations set forth in Paragraph 13 of the Notice of Opposition, and therefore denies the same,
`
`except admits that the document annexed as Exhibit 6 to the Notice of Opposition purports to
`
`consist of a February 24, 2015 posting on https://gavinsgadgets.com/2015/02/24/honor-holly-
`
`review-part-2/, but denies knowledge or information sufficient to form a belief as to the
`
`authenticity or accuracy of the document annexed as Exhibit 6 to the Notice of Opposition.
`
`14.
`
`Applicant denies knowledge or information sufficient to form a belief as to the
`
`allegations set forth in Paragraph 14 of the Notice of Opposition, and therefore denies the same,
`
`except admits that the document annexed as Exhibit 7 to the Notice of Opposition purports to
`
`consist of a June 16, 2014 posting on https://www.notebookcheck.net/Lenovo-Tab-A8-Tablet-
`
`Review.118596.0.html, but denies knowledge or information sufficient to form a belief as to the
`
`authenticity or accuracy of the document annexed as Exhibit 7 to the Notice of Opposition.
`
`15.
`
`Applicant denies knowledge or information sufficient to form a belief as to the
`
`allegations set forth in Paragraph 15 of the Notice of Opposition, and therefore denies the same,
`
`
`
`4
`
`

`

`
`
`except admits that the document annexed as Exhibit 8 to the Notice of Opposition purports to
`
`consist of a November 2, 2015 posting on https://www.releasedateportal.com/gadgets/xperia-z5-
`
`premium-release-date/, but denies knowledge or information sufficient to form a belief as to the
`
`authenticity or accuracy of the document annexed as Exhibit 8 to the Notice of Opposition.
`
`16.
`
`Applicant denies knowledge or information sufficient to form a belief as to the
`
`allegations set forth in Paragraph 16 of the Notice of Opposition, and therefore denies the same,
`
`except admits that the document annexed as Exhibit 11 to the Notice of Opposition purports to
`
`consist of an August 18, 2015 posting on https://www.androidheadlines.com/2015/08/featured-
`
`review-lenovo-tab-2-a10-budget-friendly-tablet.html, but denies knowledge or information
`
`sufficient to form a belief as to the authenticity or accuracy of the document annexed as Exhibit
`
`11 to the Notice of Opposition.
`
`17.
`
`Applicant denies knowledge or information sufficient to form a belief as to the
`
`allegations set forth in Paragraph 17 of the Notice of Opposition, and therefore denies the same,
`
`except admits that the document annexed as Exhibit 12 to the Notice of Opposition purports to
`
`consist of a January 15, 2015 posting on bhaskarinfo.blogspot.com/2015/01/budget-android-
`
`phone-under-7000.html, but denies knowledge or information sufficient to form a belief as to the
`
`authenticity or accuracy of the document annexed as Exhibit 12 to the Notice of Opposition.
`
`18.
`
`Applicant denies knowledge or information sufficient to form a belief as to the
`
`allegations set forth in Paragraph 18 of the Notice of Opposition, and therefore denies the same,
`
`except admits that the document annexed as Exhibit 13 to the Notice of Opposition purports to
`
`consist of a February 25, 2015 posting on https://techniglobal.blogspot.com/2015/02/samsung-
`
`galaxy-s6.html, but denies knowledge or information sufficient to form a belief as to the
`
`authenticity or accuracy of the document annexed as Exhibit 13 to the Notice of Opposition.
`
`
`
`5
`
`

`

`
`
`19.
`
`Applicant denies knowledge or information sufficient to form a belief as to the
`
`allegations set forth in Paragraph 19 of the Notice of Opposition, and therefore denies the same,
`
`except admits that the document annexed as Exhibit 14 to the Notice of Opposition purports to
`
`consist of an August 14, 2015 posting on https://www.androidwikihow.com/2015/08/samsung-
`
`galaxy-note-5-specifications-release-date-and-price, but denies knowledge or information
`
`sufficient to form a belief as to the authenticity or accuracy of the document annexed as Exhibit
`
`14 to the Notice of Opposition.
`
`20.
`
`Applicant denies knowledge or information sufficient to form a belief as to the
`
`allegations set forth in Paragraph 20 of the Notice of Opposition, and therefore denies the same,
`
`except admits that the document annexed as Exhibit 15 to the Notice of Opposition purports to
`
`consist of a December 7, 2014 posting on https://www.androidwikihow.com/2014/12/samsung-
`
`galaxy-s6-preliminary-specifications-and-release-date, but denies knowledge or information
`
`sufficient to form a belief as to the authenticity or accuracy of the document annexed as Exhibit
`
`15 to the Notice of Opposition.
`
`21.
`
`Applicant denies knowledge or information sufficient to form a belief as to the
`
`allegations set forth in Paragraph 21 of the Notice of Opposition, and therefore denies the same,
`
`except admits that the document annexed as Exhibit 19 to the Notice of Opposition purports to
`
`consist of a November 17, 2014 posting on https://www.youtube.com/watch?v=bqCI9Z5eq9o,
`
`but denies knowledge or information sufficient to form a belief as to the authenticity or accuracy
`
`of the document annexed as Exhibit 19 to the Notice of Opposition.
`
`22.
`
`Applicant denies knowledge or information sufficient to form a belief as to the
`
`allegations set forth in Paragraph 22 of the Notice of Opposition, and therefore denies the same,
`
`except admits that the document annexed as Exhibit 20 to the Notice of Opposition purports to
`
`
`
`6
`
`

`

`
`
`consist of an August 11, 2014 posting on https://www.youtube.com/watch?v=1DIxd9OaNXM,
`
`but denies knowledge or information sufficient to form a belief as to the authenticity or accuracy
`
`of the document annexed as Exhibit 20 to the Notice of Opposition.
`
`23.
`
`Applicant denies knowledge or information sufficient to form a belief as to the
`
`allegations set forth in Paragraph 23 of the Notice of Opposition, and therefore denies the same,
`
`except admits that the document annexed as Exhibit 21 to the Notice of Opposition purports to
`
`consist of a July 17, 2014 posting on
`
`https://www.facebook.com/249464175220316/photos/a.249786405188093/314178012082265/?t
`
`ype=1&theater, but denies knowledge or information sufficient to form a belief as to the
`
`authenticity or accuracy of the document annexed as Exhibit 21 to the Notice of Opposition.
`
`24.
`
`Applicant denies knowledge or information sufficient to form a belief as to the
`
`allegations set forth in Paragraph 24 of the Notice of Opposition, and therefore denies the same,
`
`except admits that the document annexed as Exhibit 22 to the Notice of Opposition purports to
`
`consist of a January 2, 2015 posting on
`
`https://www.facebook.com/713514892077640/posts/symphony-xplorer-ziv-smartphone-with-
`
`2gb-ram-13-mp-5-mp-camera-smartphone-price-/719222378173558/, but denies knowledge or
`
`information sufficient to form a belief as to the authenticity or accuracy of the document annexed
`
`as Exhibit 22 to the Notice of Opposition.
`
`25.
`
`Applicant states that the allegations set forth in Paragraph 25 of the Notice of
`
`Opposition consist of legal conclusions to which no response is required, but to the extent any
`
`response is required, denies the same.
`
`26.
`
`Applicant denies knowledge or information sufficient to form a belief as to the
`
`allegations set forth in Paragraph 26 of the Notice of Opposition, and therefore denies the same,
`
`
`
`7
`
`

`

`
`
`except admits that the document annexed as Exhibit 9 to the Notice of Opposition purports to
`
`consist of pages from a document titled “ZTE BGH_Joy_Smart_A4G LTE/WCDMA/GSM
`
`Mobile Phone Quick Start Guide” with an “Edition Time” of “2014.12,” but denies knowledge
`
`or information sufficient to form a belief as to the authenticity or accuracy of the document
`
`annexed as Exhibit 9 to the Notice of Opposition.
`
`27.
`
`Applicant denies knowledge or information sufficient to form a belief as to the
`
`allegations set forth in Paragraph 27 of the Notice of Opposition, and therefore denies the same,
`
`except admits that the document annexed as Exhibit 10 to the Notice of Opposition purports to
`
`consist of pages from a document titled “User Manual and Safety Information” for ZTE Obsidian
`
`with an “Edition Time” of “April, 2015,” but denies knowledge or information sufficient to form
`
`a belief as to the authenticity or accuracy of the document annexed as Exhibit 10 to the Notice of
`
`Opposition.
`
`28.
`
`Applicant denies knowledge or information sufficient to form a belief as to the
`
`allegations set forth in Paragraph 28 of the Notice of Opposition, and therefore denies the same,
`
`except admits that the document annexed as Exhibit 16 to the Notice of Opposition purports to
`
`consist of a document titled “7.85″ Wi-Fi Android™ Tablet” with a 2015 copyright notice, but
`
`denies knowledge or information sufficient to form a belief as to the authenticity or accuracy of
`
`the document annexed as Exhibit 16 to the Notice of Opposition.
`
`29.
`
`Applicant denies knowledge or information sufficient to form a belief as to the
`
`allegations set forth in Paragraph 29 of the Notice of Opposition, and therefore denies the same,
`
`except admits that the document annexed as Exhibit 17 to the Notice of Opposition purports to
`
`consist of an Amazon listing for an “unavailable” product titled “Jiayu G5S Smart Phone
`
`Android 4.2.1 MTK6592, 1.7GHz Octa Core, RAM: 2GB, ROM: 16GB, 4.5 inch 3G Smart
`
`
`
`8
`
`

`

`
`
`Phone Dual SIM, WCDMA & GSM Network” and a comment from an unknown source
`
`purportedly dated October 21, 2014 asking whether this product was available “only for China,”
`
`from the website https://uedata.amazon.com/Jiayu-G5S-Android-MTK6592-1-
`
`7GHz/dp/B00K67HM5I?ie=UTF8&dpID=41LeEESO0p, but denies knowledge or information
`
`sufficient to form a belief as to the authenticity or accuracy of the document annexed as Exhibit
`
`17 to the Notice of Opposition.
`
`30.
`
`Applicant denies knowledge or information sufficient to form a belief as to the
`
`allegations set forth in Paragraph 30 of the Notice of Opposition, and therefore denies the same,
`
`except admits that the document annexed as Exhibit 18 to the Notice of Opposition purports to
`
`consist of a posting related to a product titled “BLU Studio G - Unlocked - White” from the
`
`website https://www.amazon.com/BLU-Studio-G-Unlocked-White/product-
`
`reviews/B00SZEFDRI/ref=cm_cr_arp_d_paging_btm_next_2?pageNumber=2, but denies
`
`knowledge or information sufficient to form a belief as to the authenticity or accuracy of the
`
`document annexed as Exhibit 18 to the Notice of Opposition.
`
`31.
`
`Applicant states that the allegations set forth in Paragraph 31 of the Notice of
`
`Opposition consist of legal conclusions to which no response is required, but to the extent any
`
`response is required, denies the same.
`
`32.
`
`Applicant denies knowledge or information sufficient to form a belief as to the
`
`allegations set forth in Paragraph 32 of the Notice of Opposition, and therefore denies the same,
`
`except admits that the document annexed as Exhibit 23 to the Notice of Opposition purports to
`
`consist of a July 14, 2015 posting on
`
`https://twitter.com/cric_rakesh/status/620915130075881472, but denies knowledge or
`
`
`
`9
`
`

`

`
`
`information sufficient to form a belief as to the authenticity or accuracy of the document annexed
`
`as Exhibit 23 to the Notice of Opposition.
`
`33.
`
`Applicant denies knowledge or information sufficient to form a belief as to the
`
`allegations set forth in Paragraph 33 of the Notice of Opposition, and therefore denies the same,
`
`except admits that the document annexed as Exhibit 24 to the Notice of Opposition purports to
`
`consist of a September 4, 2015 posting on https://www.instagram.com/p/7NV5i3wEEE/, but
`
`denies knowledge or information sufficient to form a belief as to the authenticity or accuracy of
`
`the document annexed as Exhibit 24 to the Notice of Opposition.
`
`34.
`
`Applicant denies knowledge or information sufficient to form a belief as to the
`
`allegations set forth in the first sentence of Paragraph 34 of the Notice of Opposition and
`
`therefore denies the same, except admits that the document annexed as Exhibit 1 purports to
`
`consist of a review dated March 29, 2015, the document annexed as Exhibit 2 purports to consist
`
`of a review dated January 2016, the document annexed as Exhibit 3 purports to consist of a
`
`review dated May 2015, the document annexed as Exhibit 4 purports to consist of a review dated
`
`August 6, 2014, the document annexed as Exhibit 5 purports to consist of a review dated
`
`February 22, 2015, the document annexed as Exhibit 6 purports to consist of a review dated
`
`February 24, 2015, the document annexed as Exhibit 7 purports to consist of a review dated June
`
`16, 2014, the document annexed as Exhibit 8 purports to consist of a review dated November 2,
`
`2015, the document annexed as Exhibit 9 purports to consist of a guide dated 2014, the document
`
`annexed as Exhibit 10 purports to consist of excerpts from a user manual dated April 2015, the
`
`document annexed as Exhibit 11 purports to consist of a review dated August 18, 2015 the
`
`document annexed as Exhibit 12 purports to consist of a review dated January 15, 2015, the
`
`document annexed as Exhibit 13 purports to consist of a review dated February 25, 2015, the
`
`
`
`10
`
`

`

`
`
`document annexed as Exhibit 14 purports to consist of a review dated August 14, 2015, the
`
`document annexed as Exhibit 15 purports to consist of an overview dated December 7, 2014, the
`
`document annexed as Exhibit 16 purports to consist of excerpts from a user guide with the
`
`copyright notice dated 2015, the document annexed as Exhibit 17 purports to consist of an
`
`undated Amazon listing, the document annexed as Exhibit 18 purports to consist of a review
`
`dated June 7, 2015, the document annexed as Exhibit 19 purports to consist of a screenshot of a
`
`YouTube video dated November 17, 2014, the document annexed as Exhibit 20 purports to
`
`consist of a screenshot of a YouTube video dated August 11, 2014, the document annexed as
`
`Exhibit 21 purports to consist of an overview of “Hacking Tips and Tricks” dated July 17, 2014,
`
`the document annexed as Exhibit 22 purports to consist of a Facebook post dated January 2,
`
`2015, the document annexed as Exhibit 23 purports to consist of a Tweet dated July 14, 2015, the
`
`document annexed as Exhibit 24 purports to consist of an Instagram post dated September 4,
`
`2015, but denies knowledge or information sufficient to form a belief as to the authenticity or
`
`accuracy of the documents annexed as Exhibits 1–24 to the Notice of Opposition. Applicant
`
`states that the allegations set forth in the second sentence of Paragraph 34 are conclusions of law
`
`to which no response is required, but to the extent any response is required, denies the same.
`
`35.
`
`Applicant states that the allegations set forth in Paragraph 35 of the Notice of
`
`Opposition consist of legal conclusions to which no response is required, but to the extent any
`
`response is required, denies the same.
`
`36.
`
`As to the first and second sentences set forth in Paragraph 36 of the Notice of
`
`Opposition, Applicant denies the allegations and states that the relevant purchasing public does
`
`not understand Applicant’s Mark primarily to be the common or class name for the goods and
`
`services described in the Application and Applicant’s Mark denotes a unique source of such
`
`
`
`11
`
`

`

`
`
`goods and services. As to the third sentence set forth in Paragraph 36 of the Notice of
`
`Opposition, Applicant states that the allegations set forth in Paragraph 36 of the Notice of
`
`Opposition consist of legal conclusions to which no response is required, but to the extent any
`
`response is required, denies the same.
`
`37.
`
`Applicant states that the allegations set forth in Paragraph 37 of the Notice of
`
`Opposition consist of legal conclusions to which no response is required, but to the extent any
`
`response is required, denies the same, except admits that TMEP Section 1209.01(c)(i) states that
`
`a mark is generic “if its primary significance to the relevant public is the class or category of
`
`goods or services on or in connection with which it is used.”
`
`38.
`
`Applicant states that the allegations set forth in Paragraph 38 of the Notice of
`
`Opposition consist of legal conclusions to which no response is required, but to the extent any
`
`response is required, denies the same.
`
`39.
`
`Applicant admits that it submitted a response to an Office Action regarding its
`
`application for LIVE PHOTOS (U.S. Ser. No. 86/868,731) and Applicant responded to the
`
`Office Action in a filing on October 5, 2016, which speaks for itself. Apple also admits that the
`
`USPTO withdrew its refusal based on mere descriptiveness of the mark on February 1, 2017, in a
`
`filing that also speaks for itself.
`
`40.
`
`Applicant denies the allegations set forth in Paragraph 40 of the Notice of
`
`Opposition, except admits that Apple held an event announcing Live Photos that is available at
`
`https://www.youtube.com/watch?v=PTEj8Gfe144, and that video speaks for itself.
`
`41.
`
`Applicant denies knowledge or information sufficient to form a belief as to the
`
`allegations set forth in the first sentence of Paragraph 41 of the Notice of Opposition and
`
`therefore denies the same, except admits that the document annexed as Exhibit 1 purports to
`
`
`
`12
`
`

`

`
`
`consist of a review dated March 29, 2015, the document annexed as Exhibit 2 purports to consist
`
`of a review dated January 2016, the document annexed as Exhibit 3 purports to consist of a
`
`review dated May 2015, the document annexed as Exhibit 4 purports to consist of a review dated
`
`August 6, 2014, the document annexed as Exhibit 5 purports to consist of a review dated
`
`February 22, 2015, the document annexed as Exhibit 6 purports to consist of a review dated
`
`February 24, 2015, the document annexed as Exhibit 7 purports to consist of a review dated June
`
`16, 2014, the document annexed as Exhibit 8 purports to consist of a review dated November 2,
`
`2015, the document annexed as Exhibit 9 purports to consist of a guide dated 2014, the document
`
`annexed as Exhibit 10 purports to consist of excerpts from a user manual dated April 2015, the
`
`document annexed as Exhibit 11 purports to consist of a review dated August 18, 2015 the
`
`document annexed as Exhibit 12 purports to consist of a review dated January 15, 2015, the
`
`document annexed as Exhibit 13 purports to consist of a review dated February 25, 2015, the
`
`document annexed as Exhibit 14 purports to consist of a review dated August 14, 2015, the
`
`document annexed as Exhibit 15 purports to consist of an overview dated December 7, 2014, the
`
`document annexed as Exhibit 16 purports to consist of excerpts from a user guide with the
`
`copyright notice dated 2015, the document annexed as Exhibit 17 purports to consist of an
`
`undated Amazon listing, the document annexed as Exhibit 18 purports to consist of a review
`
`dated June 7, 2015, the document annexed as Exhibit 19 purports to consist of a screenshot of a
`
`YouTube video dated November 17, 2014, the document annexed as Exhibit 20 purports to
`
`consist of a screenshot of a YouTube video dated August 11, 2014, the document annexed as
`
`Exhibit 21 purports to consist of an overview of “Hacking Tips and Tricks” dated July 17, 2014,
`
`the document annexed as Exhibit 22 purports to consist of a Facebook post dated January 2,
`
`2015, the document annexed as Exhibit 23 purports to consist of a Tweet dated July 14, 2015, the
`
`
`
`13
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`

`

`
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`document annexed as Exhibit 24 purports to consist of an Instagram post dated September 4,
`
`2015, but denies knowledge or information sufficient to form a belief as to the authenticity or
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`accuracy of the documents annexed as Exhibits 1–24 to the Notice of Opposition.. Applicant
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`states that the allegations set forth in the second sentence of Paragraph 41 are conclusions of law
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`to which no response is required, but to the extent any response is required, denies the same.
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`42.
`
`Applicant denies the allegations set forth in Paragraph 42 of the Notice of
`
`Opposition.
`
`43.
`
`Applicant states that the allegations set forth in Paragraph 43 of the Notice of
`
`Opposition consist of legal conclusions to which no response is required, but to the extent any
`
`response is required, denies the same.
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`44.
`
`Applicant denies the allegations in the first sentence of Paragraph 44 of the Notice
`
`of Opposition. Applicant denies knowledge or information sufficient to form a belief as to the
`
`allegations set forth in the second sentence of Paragraph 44 of the Notice of Opposition, and
`
`therefore denies the same.
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`45.
`
`Applicant states that the allegations set forth in Paragraph 45 of the Notice of
`
`Opposition consist of legal conclusions to which no response is required, but to the extent any
`
`response is required, denies the same.
`
`46.
`
`47.
`
`Applicant denies the allegations in Paragraph 46 of the Notice of Opposition.
`
`Applicant states that the allegations set forth in Paragraph 47 of the Notice of
`
`Opposition consist of legal conclusions to which no response is required, but to the extent any
`
`response is required, denies the same.
`
`
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`14
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`
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`AFFIRMATIVE DEFENSES
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`Applicant sets forth below its affirmative defenses. Each defense is asserted as to all
`
`claims asserted in the Notice of Opposition. By setting forth these affirmative defenses,
`
`Applicant does not assert or admit that it has the burden of proof and/or persuasion with respect
`
`to any of these defenses.
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`FIRST DEFENSE
`
`(Failure to State a Claim)
`
`The Notice of Opposition fails, in whole or part, because Opposer fails to state a claim on
`
`which relief may be granted.
`
`SECOND DEFENSE
`
`(Lack of Standing)
`
`The Notice of Opposition fails, in whole or part, because Opposer lacks standing to assert
`
`the claims alleged in the Notice of Opposition.
`
`THIRD DEFENSE
`
`(Suggestiveness)
`
`The Notice of Opposition fails, in whole or in part, because Applicant’s Mark is
`
`suggestive and thus inherently distinctive.
`
`
`
`15
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`

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`FOURTH DEFENSE
`
`(Secondary Meaning)
`
`The Notice of Opposition fails, in whole or in part, because Applicant’s Mark has
`
`attained secondary meaning among consumers and has thus acquired distinctiveness.
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`FIFTH DEFENSE
`
`(Unclean Hands)
`
`The Notice of Opposition fails, in whole or in part, because Opposer has unclean hands.
`
`Dated: June 16, 2020
`
`KIRKLAND & ELLIS LLP
`
` /s/ Dale M. Cendali
`Dale M. Cendali
`Mary Mazzello
`KIRKLAND & ELLIS LLP
`601 Lexington Avenue
`44th Floor
`New York, NY 10022
`UNITED STATES
`dale.cendali@kirkland.com
`mary.mazzello@kirkland.com
`
`Attorneys for Applicant
`Apple Inc.
`
`16
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`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on June 16, 2020, I caused copies of the foregoing ANSWER TO
`
`NOTICE OF OPPOSITION to be served via e-mail as follows:
`
`Marc C. Levy
`Seed IP Law Group, LLP
`701 Fifth Avenue, Suite 5400
`Seattle, WA 98105
`MarcL@seedip.com
`BrigidM@seedip.com
`LitCal@seedip.com
`
`
`
`
`Dated: June 16, 2020
`
`
`
`
`
`Erika Dillon
`
`
`
`
`
`17
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`