Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1264341
`02/06/2023
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`
`Opposer information
`
`Name
`
`Granted to date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`id Software LLC
`
`02/05/2023
`
`1500 NORTH GREENVILLE AVENUE, SUITE 700
`RICHARDSON, TX 75081
`UNITED STATES
`
`JULIANNE A HENLEY
`SPARROW IP PLLC
`1567 HIGHLANDS DRIVE NE, SUITE 110-290
`ISSAQUAH, WA 98029
`UNITED STATES
`Primary email: docket@sparrowip.com
`Secondary email(s): julianne@sparrowip.com, gillian@sparrowip.com, sa-
`chi@sparrowip.com, intertm@microsoft.com
`No phone number provided
`
`Docket no.
`
`Applicant information
`
`Application no.
`
`97152770
`
`Opposition filing
`date
`
`Applicant
`
`02/06/2023
`
`Novomatic AG
`WIENER STRASSE 158
`GUMPOLDSKIRCHEN, 2352
`AUSTRIA
`
`Goods/services affected by opposition
`
`Publication date
`
`08/09/2022
`
`Opposition period
`ends
`
`02/05/2023
`
`Class 009. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Recorded computer game software; Recor-
`ded computer gaming software for gambling; Recorded game software; Recorded video game soft-
`ware
`
`Class 028. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Amusement game machines; Arcade game
`machines; Arcade video game machines; Electronic gaming machines, namely, devices which accept
`a wager; Gaming machines for gambling; Stand alone video game machines; Video game machines
`
`Class 041. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Entertainment services, namely, providing
`games of chance via the Internet; Entertainment services, namely, providing online electronic games;
`Entertainment services, namely, providing online video games; Gaming services in the nature of
`
`

`

`providing online casino games and games of chance; Providing on-line computer games; Provision of
`information relating to electronic computer games provided via the Internet
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Marks cited by opposer as basis for opposition
`
`U.S. registration
`no.
`
`2032587
`
`Register
`
`Principal
`
`Registration date
`
`01/21/1997
`
`Application date
`
`07/05/1994
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`QUAKE
`
`NONE
`
`Class 028. First use: First Use: Aug 2, 1996 First Use In Commerce: Aug 2,
`1996
`computer software games and computer game programs
`
`U.S. registration
`no.
`
`2248229
`
`Register
`
`Principal
`
`Registration date
`
`05/25/1999
`
`Application date
`
`07/25/1997
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`QUAKE II
`
`NONE
`
`Class 009. First use: First Use: Dec 9, 1997 First Use In Commerce: Dec 9,
`1997
`computer game programs [ and instructional manuals sold as a unit ]
`
`U.S. registration
`no.
`
`2254868
`
`Register
`
`Principal
`
`Registration date
`
`06/22/1999
`
`Application date
`
`08/14/1997
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`QUAKE
`
`NONE
`
`Class 016. First use: First Use: Nov 1996 First Use In Commerce: Nov 1996
`printed matter, namely, books in the field of computer software game strategy
`and game playing hints
`
`U.S. registration
`no.
`
`2265714
`
`Register
`
`Principal
`
`Application date
`
`01/07/1998
`
`

`

`Registration date
`
`07/27/1999
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`QUAKE II MISSION PACK: THE RECKONING
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 009. First use: First Use: May 1998 First Use In Commerce: May 1998
`computer software games and computer software game programs [ with user
`manuals sold as a unit]
`
`U.S. registration
`no.
`
`2336765
`
`Register
`
`Principal
`
`Registration date
`
`03/28/2000
`
`Word mark
`
`Design mark
`
`QUAKE III ARENA
`
`Application date
`
`07/27/1998
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 009. First use: First Use: Nov 15, 1999 First Use In Commerce: Nov 15,
`1999
`computer software games and computer software game programs for entertain-
`ment uses with user manuals sold as a unit; and computer mouse pads
`
`U.S. registration
`no.
`
`3477095
`
`Register
`
`Principal
`
`Registration date
`
`07/29/2008
`
`Application date
`
`06/03/2005
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`ENEMY TERRITORY: QUAKE WARS
`
`NONE
`
`Class 009. First use: First Use: Oct 31, 2007 First Use In Commerce: Oct 31,
`2007
`computer software games, and computer software game programs for entertain-
`ment uses with user manuals sold as a unit
`
`

`

`U.S. registration
`no.
`
`3128560
`
`Register
`
`Principal
`
`Registration date
`
`08/15/2006
`
`Word mark
`
`Design mark
`
`QUAKECON
`
`Application date
`
`08/31/2005
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 035. First use: First Use: Feb 28, 1999 First Use In Commerce: Feb 28,
`1999
`arranging and conducting trade show exhibitions in the field of computers and
`computer software
`
`U.S. registration
`no.
`
`3213821
`
`Register
`
`Principal
`
`Registration date
`
`02/27/2007
`
`Word mark
`
`Design mark
`
`QUAKE 4
`
`Application date
`
`06/03/2005
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 009. First use: First Use: Nov 1, 2005 First Use In Commerce: Nov 1,
`2005
`computer software games, and computer software game programs for entertain-
`ment uses with user manuals sold as a unit
`Class 016. First use: First Use: Nov 1, 2005 First Use In Commerce: Nov 1,
`2005
`[ posters, ] printed guides featuring strategy for playing computer software
`games, and books featuring hints for playing computer software games
`
`U.S. registration
`no.
`
`3941007
`
`Register
`
`Principal
`
`Registration date
`
`04/05/2011
`
`Word mark
`
`Design mark
`
`QUAKELIVE
`
`Application date
`
`11/30/2007
`
`Foreign priority
`date
`
`NONE
`
`

`

`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 009. First use: First Use: Feb 24, 2009 First Use In Commerce: Feb 24,
`2009
`Computer software games and computer software game programs for entertain-
`ment uses [with user manuals sold as a unit]
`
`U.S. registration
`no.
`
`2640422
`
`Register
`
`Principal
`
`Registration date
`
`10/22/2002
`
`Application date
`
`05/10/2000
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`Attachments
`
`QUAKE III: TEAM ARENA
`
`NONE
`
`Class 009. First use: First Use: Jan 1, 2001 First Use In Commerce: Jan 1, 2001
`computer software games and computer software game programs for entertain-
`ment uses with manuals sold as a unit [ ; and computer mouse pads ]
`
`75414792#TMSN.png( bytes )
`75525453#TMSN.png( bytes )
`76645959#TMSN.png( bytes )
`76978430#TMSN.png( bytes )
`id Software - Novomatic - FRUITQUAKE Notice of Opposition US 2-6-23.p
`df(186741 bytes )
`Annex A - FRUITQUAKE - 97152770 - TSDR Report.pdf(29381 bytes )
`Annex B - QUAKE marks TSDR Report .pdf(251630 bytes )
`Annex C - QUAKE marks - CoR .pdf(637381 bytes )
`Annex D - Wikipedia Wepgage - id Software.pdf(428140 bytes )
`Annex E - Wikipedia Wepgage - Quake video game.pdf(488075 bytes )
`Annex F - Novomatic US Portfolio.pdf(98086 bytes )
`
`Signature
`
`/Julianne A. Henley/
`
`Name
`
`Date
`
`JULIANNE A HENLEY
`
`02/06/2023
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`id Software LLC
`
`
`
`
`
`Novomatic AG
`
`
`
`
`v.
`
`Opposer,
`
`Applicant.
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`Mark: FRUITQUAKE
`Application Serial No.: 97/152,770
`Filing Date:
`
`December 2, 2021
`Publication Date: August 9, 2022
`Extension Granted: September 7, 2022
`Extension Granted: December 5, 2022
`
`
`
`id Software LLC, a Delaware limited liability company with an address at 1500 North
`
`Greenville Avenue, Suite 700, Richardson, Texas 75081, United States of America (“Opposer”)
`
`believes it would be damaged by registration of the FRUITQUAKE trademark (“Applicant's
`
`Mark”) by Novomatic AG, an Austrian aktiengesellschaft with an address at Wiener Strasse 158,
`
`Gumpoldskirchen, Austria 2352 (“Applicant”) with the goods and services set forth in Classes 9,
`
`28, and 41 below (“Applicant’s Offerings” or “Offerings”) as listed in Application Serial No.
`
`97/152,770 (“Application”), and hereby opposes the Application (“Opposition”).
`
`The grounds for this Opposition are as follows:
`
`
`
`I. APPLICANT’S OFFERINGS
`
`1. Applicant’s Application seeks registration of Applicant’s Mark in the United States in
`
`connection with the following Offerings, which are collectively defined as “Applicant’s
`
`Offerings” and shown in a February 6, 2023 TSDR Report attached as Annex A:
`
`Class 9: Recorded computer game software; Recorded computer gaming software for
`
`gambling; Recorded game software; Recorded video game software
`
`
`
`
`
`
`
`

`

`
`
`Class 28: Amusement game machines; Arcade game machines; Arcade video game
`
`machines; Electronic gaming machines, namely, devices which accept a wager; Gaming
`
`machines for gambling; Stand alone video game machines; Video game machines
`
`
`
`Class 41: Entertainment services, namely, providing games of chance via the Internet;
`
`Entertainment services, namely, providing online electronic games; Entertainment
`
`services, namely, providing online video games; Gaming services in the nature of
`
`providing online casino games and games of chance; Providing on-line computer games;
`
`Provision of information relating to electronic computer games provided via the Internet
`
`
`
`II.
`
`OPPOSER’S REGISTRATION AND BUSINESS
`
`2. Opposer owns ten (10) active United States Patent and Trademark Office (“Trademark
`
`Office”) Registrations for QUAKE and QUAKE formative marks (collectively,
`
`“Mark(s),” “Opposer’s Mark(s),” or “Registration(s)”) in Classes 9, 16, 28, and 35
`
`covering a variety of video game offerings, as detailed below and in February 6, 2023
`
`TSDR Reports for Opposer’s Registrations attached as Annex B and Opposer’s
`
`Certificates of Registration for its Registrations, which are attached as Annex C.
`
`
`
`Mark
`QUAKE
`QUAKE
`QUAKE II
`QUAKE 4
`QUAKE III ARENA
`QUAKE III: TEAM ARENA
`QUAKECON
`QUAKELIVE
`QUAKE II MISSION PACK: THE RECKONING
`ENEMY TERRITORY: QUAKE WARS
`
`Class(es) Registration No.
`28
`2032587
`16
`2254868
`9
`2248229
`9, 16
`3213821
`9
`2336765
`9
`2640422
`35
`3128560
`9
`3941007
`9
`2265714
`9
`3477095
`
`
`
`
`
`
`
`-2-
`
`

`

`
`
`
`
`3. Opposer is a leading video game developer.
`
`
`
`4. Opposer’s offerings include “computer software games and computer game programs,”
`
`“books in the field of computer software game strategy and game playing hints,” “trade
`
`show exhibitions in the field of computers and computer software,” and other similar
`
`game-focused identifications, as set forth in Annex B (collectively, “Registered
`
`Offerings”).
`
`
`
`5. On information and belief, Opposer is the only video game development company to be
`
`honored twice by the National Academy of Television Arts & Sciences for its QUAKE
`
`franchise and related 3D technology. See Annex D.
`
`
`
`6. Opposer’s QUAKE video game franchise began in 1996. See Annex E.
`
`
`
`7. By 2021, Opposer’s QUAKE video game franchise expanded to include releases for
`
`Mirosoft Windows, Nintendo Switch, PlayStation 4, PlayStation 5, XBOX One, and
`
`XBOX Series X/S. Id.
`
`
`
`8. Opposer's Registrations are endowed with statutory rights and constructive use rights
`
`dating back to Opposer’s earliest application date of July 5, 1994 for QUAKE in
`
`connection with “computer software games and computer game programs.” See Annexes
`
`B and C.
`
`
`
`9. Opposer has used its QUAKE Mark since at least as early as August 2, 1996 in interstate
`
`commerce in the United States. Id.
`
`
`
`
`
`-3-
`
`

`

`
`
`
`
`10. Opposer’s earliest Registration for QUAKE issued on January 21, 1997. Id.
`
`
`
`11. All of Opposer’s Registrations have achieved Incontestability status. See Annex B.
`
`
`
`12. Opposer has developed valuable goodwill and consumer recognition in its Marks and
`
`Registrations.
`
`13. The Trademark Trial and Appeal Board (“Board”) granted Opposer two extension
`
`requests to oppose Applicant’s Application and Opposer now wishes to formally initiate
`
`the Opposition before the final opposition deadline.
`
`III. APPLICANT'S APPLICATION AND BUSINESS
`
`
`
`14. On information and belief, Applicant is not using FRUITQUAKE and its Application
`
`was filed on an intent-to-use basis in connection with all Offerings. See Annex A.
`
`
`
`15. Applicant filed its Application on December 2, 2021 ("Filing Date").
`
`
`
`16. Applicant’s Application specifically targets computer game software, video game
`
`machines, electronic games, online video games, and other video game-focused offerings
`
`that directly conflict with Opposer’s Registered Offerings. See Annex A.
`
`
`
`17. Applicant is a prolific producer of games, including electronic games, and owns two
`
`hundred and four (204) active Trademark Office filings in Classes 9, 16, 28, 35, or 41 as
`
`of February 6, 2023. See Annex F.
`
`
`
`-4-
`
`
`
`
`
`
`
`

`

`
`
`18. However, Applicant’s only Trademark Office filing for a mark containing the letterstring
`
`QUAKE is its Application. Id.
`
`
`
`19. Applicant’s Application was filed twenty-seven (27) years after Opposer’s first QUAKE
`
`Registration was filed before the Trademark Office. Compare Annex A with Annex B.
`
`
`
`A.
`
`LIKELIHOOD OF CONFUSION
`
`IV. CLAIMS
`
`20. Opposer's constructive use date, and actual use date, for its Registrations predate
`
`Applicant’s Application filing date.
`
`
`
`
`
`
`
`
`
`
`
`21. Applicant had constructive notice of Opposer’s Registrations on the date it filed its
`
`Application on an intent-to-use basis before the United States Patent and Trademark
`
`Office.
`
`22. Applicant's Mark is similar in sight, sound, and meaning to Opposer's Marks and
`
`Registrations, in particular, its QUAKE exact mark and Registrations.
`
`23. Applicant's Offerings directly overlap with Opposer's Registered Offerings.
`
`
`
`24. Applicant’s Offerings are targeted to the same industry, the computer, video, and
`
`electronic gaming industry, as Opposer’s Registered Offerings.
`
`25. Applicant’s target consumers, which are comprised of computer, video, and electronic
`
`gaming players and enthusiasts, are the same target consumers as Opposer’s target
`
`consumers.
`
`
`
`-5-
`
`

`

`
`
`
`
`26. Applicant’s Offerings are intended to travel in the same channels of trade as Opposer’s
`
`Registered Offerings.
`
`27. In view of the similarity between the parties' respective marks and offerings, Applicant's
`
`Mark in connection with Applicant’s Offerings is likely to cause confusion, or to cause
`
`mistake, or to deceive as to the origin of Applicant's Offerings, and is likely to suggest an
`
`affiliation, connection, or association of Applicant and Applicant's Offerings with
`
`Opposer, Opposer’s Marks, Opposer's Registered Offerings, and Opposer’s Registrations
`
`with consequent injury to Opposer, to the trade, and to the public.
`
`28. The registration of Applicant's Mark would prevent Opposer from exercising exclusive
`
`control over the goodwill and reputation associated with Opposer's Marks and
`
`Registrations. Therefore, registration of Applicant's Mark would damage and injure
`
`Opposer.
`
`
`
`29. Opposer also will be damaged by the registration of Applicant's Mark because such
`
`registration will yield confusion as to source or affiliation and will support statutory
`
`rights for Applicant in violation and derogation of Opposer's prior, superior, and
`
`exclusive rights in Opposer’s Marks and Registrations.
`
`
`
`30. Because Opposer's rights in Opposer's Mark and Opposer's Registration are prior and
`
`senior to Applicant's rights in Applicant's Mark and the Application, and there exists a
`
`likelihood of confusion between these marks, registration of Applicant's Mark and
`
`Application should be denied.
`
`
`
`
`
`-6-
`
`
`
`
`
`
`
`

`

`
`
`
`
`
`
`V. REQUEST FOR RELIEF
`
`WHEREFORE, Opposer requests that this opposition be sustained, and that registration
`
`of Applicant's Mark as reflected in the Application be refused registration.
`
`
`
`DATED: February 6, 2023
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I certify that on February 6, 2023, a
`true and complete copy of the
`foregoing NOTICE OF
`OPPOSITION has been served by
`electronic email to the counsel of
`record for Applicant at the
`following email addresses:
`
`trademark@cll.com
`jks@cll.com
`jik@cll.com
`lrm@cll.com
`
`Signature: /Julianne A. Henley/
`Printed Name: Julianne A. Henley
`
`
`
`
`
`
`Respectfully submitted,
`
`SPARROW IP PLLC
`
`
`By: /Julianne A. Henley/
` Julianne A. Henley
` Attorney for Opposer
` Sparrow IP PLLC
` 1567 Highlands Drive NE
` Suite 110-290
` Issaquah, Washington 98029
` julianne@sparrowip.com
`
`
`
`
`
`
`-7-
`
`

`

`Generated on: This page was generated by TSDR on 2023-02-06 13:54:49 EST
`
`Mark: FRUITQUAKE
`
`US Serial Number: 97152770
`
`Filed as TEAS
`Plus:
`
`Yes
`
`Register: Principal
`
`Mark Type: Trademark, Service Mark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Dec. 02, 2021
`
`Currently TEAS
`Plus:
`
`Yes
`
`LIVE/APPLICATION/Published for Opposition
`
`A pending trademark application has been examined by the Office and has
`been published in a way that provides an opportunity for the public to oppose
`its registration.
`
`Status: A request for an extension of time to file an opposition has been filed with the Trademark Trial and Appeal Board. For further
`information, see TTABVUE on the Trademark Trial and Appeal Board web page.
`
`Status Date: Sep. 07, 2022
`
`Publication Date:Aug. 09, 2022
` 
`
`Mark Literal
`Elements:
`
`FRUITQUAKE
`
`Mark Information
`
`Standard Character
`Claim:
`
`Mark Drawing
`Type:
`
`Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
`
`4 - STANDARD CHARACTER MARK
`
`Goods and Services
`
`Note:
`The following symbols indicate that the registrant/owner has amended the goods/services:
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: Recorded computer game software; Recorded computer gaming software for gambling; Recorded game software; Recorded video
`game software
`
`International
`Class(es):
`
`009 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(b)
`
`U.S Class(es): 021, 023, 026, 036, 038
`
`For: Amusement game machines; Arcade game machines; Arcade video game machines; Electronic gaming machines, namely, devices
`which accept a wager; Gaming machines for gambling; Stand alone video game machines; Video game machines
`
`International
`Class(es):
`
`028 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(b)
`
`U.S Class(es): 022, 023, 038, 050
`
`For: Entertainment services, namely, providing games of chance via the Internet; Entertainment services, namely, providing online
`electronic games; Entertainment services, namely, providing online video games; Gaming services in the nature of providing online
`casino games and games of chance; Providing on-line computer games; Provision of information relating to electronic computer games
`provided via the Internet
`
`

`

`International
`Class(es):
`
`041 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(b)
`
`Filed Use: No
`
`Filed ITU: Yes
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Filed No Basis: No
`
`U.S Class(es): 100, 101, 107
`
`Basis Information (Case Level)
`
`Currently Use: No
`
`Currently ITU: Yes
`
`Currently 44E: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: Novomatic AG
`
`Owner Address: Wiener Strasse 158
`Gumpoldskirchen AUSTRIA 2352
`
`Legal Entity Type: aktiengesellschaft
`
`State or Country
`Where Organized:
`
`AUSTRIA
`
`Attorney/Correspondence Information
`
`Attorney Name: Joel Karni Schmidt
`
`Docket Number: 32015.190/JS
`
`Attorney of Record
`
`Attorney Primary
`Email Address:
`
`trademark@cll.com
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`Joel Karni Schmidt
`COWAN, LIEBOWITZ & LATMAN, P.C.
`114 WEST 47TH STREET, 21ST FLOOR
`NEW YORK, NEW YORK UNITED STATES 10036-1525
`
`Phone: 212-790-9200
`
`Fax: 212-575-0671
`
`Correspondent e-
`mail:
`
`trademark@cll.com jks@cll.com jik@cll.com lrm@
`cll.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`Jan. 30, 2023
`
`TEAS POST PUBLICATION AMENDMENT RECEIVED
`
`Sep. 07, 2022
`
`EXTENSION OF TIME TO OPPOSE RECEIVED
`
`Aug. 09, 2022
`
`OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
`
`Aug. 09, 2022
`
`PUBLISHED FOR OPPOSITION
`
`Jul. 20, 2022
`
`NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
`
`Jul. 05, 2022
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`Jun. 21, 2022
`
`ASSIGNED TO EXAMINER
`
`Dec. 06, 2021
`
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED
`
`Dec. 06, 2021
`
`NEW APPLICATION ENTERED
`TM Staff and Location Information
`
`TM Attorney: ANKRAH, NAAKWAMA S
`
`TM Staff Information
`
`Law Office
`Assigned:
`
`LAW OFFICE 109
`
`File Location
`
`Current Location: PUBLICATION AND ISSUE SECTION
`
`Date in Location: Jul. 06, 2022
`
`Proceeding
`Number
`
`1111
`
`76833
`
`

`

`Summary
`
`Number of
`Proceedings:
`
`1
`
`Proceedings
`
`Type of Proceeding: Extension of Time
`
` 
`
`Proceeding
`Number:
`
`97152770
`
`Filing Date: Sep 07, 2022
`
`Status: Extension of Time to Oppose Filed
`
`Status Date: Sep 07, 2022
`
`Interlocutory
`Attorney:
`
`Name: Novomatic AG
`
`Correspondent
`Address:
`
`JOEL KARNI SCHMIDT
`COWAN, LIEBOWITZ & LATMAN, P.C.
`114 WEST 47TH STREET, 21ST FLOOR
`NEW YORK NY UNITED STATES , 10036-1525
`
`Defendant
`
`Correspondent e-
`mail:
`
`Associated marks
`
`Mark
`
`FRUITQUAKE
`
`trademark@cll.com , jks@cll.com , jik@cll.com , lrm@cll.com
`
`Application Status
`
`Serial
`Number
`
`Registration
`Number
`
`Request For Extension of Time to File Opposition
`
`97152770
`
`Potential Opposer(s)
`
`Name:
`
`id Software LLC
`
`Correspondent
`Address:
`
`JULIANNE A HENLEY
`SPARROW IP PLLC
`1567 HIGHLANDS DRIVE NE, SUITE 110-290
`ISSAQUAH WA UNITED STATES , 98029
`
`Correspondent e-
`mail:
`
`docket@sparrowip.com , julianne@sparrowip.com , gillian@sparrowip.com , sachi@sparrowip.com , intertm@microsoft.com
`
`Prosecution History
`
`Entry Number
`
`History Text
`
`EXT GRANTED
`
`FINAL 60-DAY REQUEST TO EXT TIME TO OPPOSE
`
`EXT GRANTED
`
`FIRST 90-DAY REQUEST TO EXT TIME TO OPPOSE
`
`4
`
`3
`
`2
`
`1
`
`Due Date
`
`Date
`
`Dec 05, 2022
`
`Dec 05, 2022
`
`Sep 07, 2022
`
`Sep 07, 2022
`
`

`

`Generated on: This page was generated by TSDR on 2023-02-06 14:13:57 EST
`
`Mark: QUAKE
`
`US Serial Number: 74545680
`
`US Registration
`Number:
`
`2032587
`
`Register: Principal
`
`Mark Type: Trademark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Jul. 05, 1994
`
`Registration Date: Jan. 21, 1997
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status: The registration has been renewed.
`
`Status Date: Mar. 16, 2017
`
`Publication Date:Mar. 21, 1995Notice of Allowance Date:Jun. 13, 1995
` 
`
`Mark Information
`
`Mark Literal
`Elements:
`
`QUAKE
`
`Standard Character
`Claim:
`
`No
`
`Mark Drawing
`Type:
`
`1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
`
`Goods and Services
`
`Note:
`The following symbols indicate that the registrant/owner has amended the goods/services:
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: computer software games and computer game programs
`
`International
`Class(es):
`
`028 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`U.S Class(es): 022, 023, 038, 050
`
`First Use: Aug. 02, 1996
`
`Use in Commerce: Aug. 02, 1996
`
`Basis Information (Case Level)
`
`Filed Use: No
`
`Filed ITU: Yes
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Filed No Basis: No
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`

`

`Owner Name: ID SOFTWARE LLC
`
`Owner Address: 1500 North Greenville Avenue, Suite 700
`Richardson, TEXAS UNITED STATES 75081
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Attorney/Correspondence Information
`
`Attorney Name: April L. Besl
`
`Attorney Primary
`Email Address:
`
`April.Besl@Dinsmore.com
`
`Correspondent
`Name/Address:
`
`April L. Besl
`Dinsmore & Shohl LLP
`255 East Fifth Street, Suite 1900
`Cincinnati, OHIO UNITED STATES 45202
`
`Phone: 5139778527
`
`Attorney of Record
`
`Docket Number: TM-8713
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Correspondent e-
`mail:
`
`April.Besl@Dinsmore.com DSMSTrademarks@di
`nsmore.com MSDocketing@Dinsmore.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`Oct. 18, 2022
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`
`Oct. 18, 2022
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`
`Oct. 18, 2022
`
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`
`Jun. 15, 2020
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`
`Jun. 15, 2020
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`
`Jun. 15, 2020
`
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`
`Proceeding
`Number
`
`Jun. 10, 2020
`
`APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED
`
`88888
`
`Jun. 10, 2020
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`
`Jun. 10, 2020
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`
`Jun. 10, 2020
`
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`
`Jun. 10, 2020
`
`TEAS CHANGE OF OWNER ADDRESS RECEIVED
`
`Jul. 18, 2019
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`
`Mar. 16, 2017
`
`NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
`
`Mar. 16, 2017
`
`REGISTERED AND RENEWED (SECOND RENEWAL - 10 YRS)
`
`Mar. 16, 2017
`
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`
`Mar. 16, 2017
`
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`
`Jan. 19, 2017
`
`TEAS SECTION 8 & 9 RECEIVED
`
`Jul. 15, 2009
`
`AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP
`
`Mar. 27, 2007
`
`REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS)
`
`Mar. 27, 2007
`
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`
`Mar. 26, 2007
`
`ASSIGNED TO PARALEGAL
`
`Jan. 11, 2007
`
`REGISTERED - COMBINED SECTION 8 (10-YR) & SEC. 9 FILED
`
`Jan. 11, 2007
`
`PAPER RECEIVED
`
`Jan. 03, 2007
`
`CASE FILE IN TICRS
`
`Aug. 30, 2002
`
`REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
`
`Jul. 18, 2002
`
`REGISTERED - SEC. 8 (6-YR) & SEC. 15 FILED
`
`Jul. 18, 2002
`
`PAPER RECEIVED
`
`Jul. 16, 2002
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`
`Jan. 21, 1997
`
`REGISTERED-PRINCIPAL REGISTER
`
`Nov. 26, 1996
`
`ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED
`
`Oct. 31, 1996
`
`STATEMENT OF USE PROCESSING COMPLETE
`
`75461
`
`75461
`
`75461
`
`60132
`
`60132
`
`

`

`Aug. 22, 1996
`
`USE AMENDMENT FILED
`
`Oct. 15, 1996
`
`SOU EXTENSION 2 GRANTED
`
`Jun. 07, 1996
`
`SOU EXTENSION 2 FILED
`
`Feb. 20, 1996
`
`SOU EXTENSION 1 GRANTED
`
`Dec. 06, 1995
`
`SOU EXTENSION 1 FILED
`
`Jun. 13, 1995
`
`NOA MAILED - SOU REQUIRED FROM APPLICANT
`
`Mar. 21, 1995
`
`PUBLISHED FOR OPPOSITION
`
`Feb. 17, 1995
`
`NOTICE OF PUBLICATION
`
`Dec. 01, 1994
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`Nov. 30, 1994
`
`ASSIGNED TO EXAMINER
`
`70427
`
`TM Staff and Location Information
`
`TM Staff Information - None
`
`File Location
`
`Current Location: GENERIC WEB UPDATE
`
`Date in Location: Mar. 16, 2017
`
`Assignment Abstract Of Title Information
`
`Summary
`
`Total Assignments: 3
`
`Registrant: Id Software, Inc.
`
`Assignment 1 of 3
`
` 
`
`Conveyance: ASSIGNS THE ENTIRE INTEREST
`
`Reel/Frame: 4016/0868
`
`Date Recorded: Jul. 03, 2009
`
`Supporting
`Documents:
`
`assignment-tm-4016-0868.pdf
`
`Pages: 8
`
`Name:
`
`ID SOFTWARE, INC.
`
`Execution Date: Jun. 23, 2009
`
`Assignor
`
`Legal Entity Type: CORPORATION
`
`Name: ZMI ACQUISITION SUB, LLC
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`State or Country
`Where Organized:
`
`TEXAS
`
`Assignee
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Address: 3819 TOWNE CROSSING BOULEVARD, SUITE 222
`MESQUITE, TEXAS 75150-6123
`
`Correspondent
`
`Correspondent
`Name:
`
`D. WADE CLOUD, JR.
`
`Correspondent
`Address:
`
`15303 DALLAS PARKWAY, SUITE 700
`ADDISON, TX 75001
`
`Domestic Representative - Not Found
`
`Assignment 2 of 3
`
`Pages: 9
`
`Conveyance: ASSIGNS THE ENTIRE INTEREST
`
`Reel/Frame: 4017/0016
`
`Date Recorded: Jul. 06, 2009
`
`Supporting
`Documents:
`
`assignment-tm-4017-0016.pdf
`
`Name:
`
`ID SOFTWARE, INC.
`
`Execution Date: Jun. 23, 2009
`
`Assignor
`
`Legal Entity Type: CORPORATION
`
`Name: ZMI ACQUISITION SUB, LLC
`
`State or Country
`Where Organized:
`
`TEXAS
`
`Assignee
`
`

`

`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Address: 1370 PICCARD DRIVE
`ROCKVILLE, MARYLAND 20850
`
`Correspondent
`Name:
`
`RYAN C. COMPTON
`
`Correspondent
`Address:
`
`500 EIGHTH STREET, NW
`WASHINGTON, DC 20004
`
`Conveyance: CHANGE OF NAME
`
`Reel/Frame: 4016/0876
`
`Date Recorded: Jul. 03, 2009
`
`Supporting
`Documents:
`
`assignment-tm-4016-0876.pdf
`
`Correspondent
`
`Domestic Representative - Not Found
`
`Assignment 3 of 3
`
`Pages: 5
`
`Name: ZMI ACQUISITION SUB, LLC
`
`Execution Date: Jun. 24, 2009
`
`Assignor
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`Name:
`
`ID SOFTWARE LLC
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Assignee
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Address: 3819 TOWNE CROSSING BOULEVARD, SUITE 222
`MESQUITE, TEXAS 75150-6123
`
`Correspondent
`
`Correspondent
`Name:
`
`D. WADE CLOUD, JR.
`
`Correspondent
`Address:
`
`15303 DALLAS PARKWAY, SUITE 700
`ADDISON, TX 75001
`
`Domestic Representative - Not Found
`
`

`

`Generated on: This page was generated by TSDR on 2023-02-06 14:19:05 EST
`
`Mark: QUAKE
`
`US Serial Number: 75341213
`
`US Registration
`Number:
`
`2254868
`
`Register: Principal
`
`Mark Type: Trademark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Aug. 14, 1997
`
`Registration Date: Jun. 22, 1999
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status: The registration has been renewed.
`
`Status Date: Jul. 24, 2019
`
`Publication Date:Mar. 30, 1999
` 
`
`Mark Literal
`Elements:
`
`QUAKE
`
`Standard Character
`Claim:
`
`No
`
`Mark Information
`
`Mark Drawing
`Type:
`
`1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
`
`Goods and Services
`
`Note:
`The following symbols indicate that the registrant/owner has amended the goods/services:
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: printed matter, namely, books in the field of computer software game strategy and game playing hints
`
`International
`Class(es):
`
`016 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: Nov. 1996
`
`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Filed No Basis: No
`
`U.S Class(es): 002, 005, 022, 023, 029, 037, 038, 050
`
`Use in Commerce: Nov. 1996
`
`Basis Information (Case Level)
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`

`

`Owner Name: ID SOFTWARE LLC
`
`Owner Address: 1500 North Greenville Avenue, Suite 700
`Richardson, TEXAS UNITED STATES 75081
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Attorney/Correspondence Information
`
`Attorney Name: April L. Besl
`
`Attorney Primary
`Email Address:
`
`April.Besl@Dinsmore.com
`
`Correspondent
`Name/Address:
`
`April L. Besl
`Dinsmore & Shohl LLP
`255 East Fifth Street, Suite 1900
`Cincinnati, OHIO UNITED STATES 45202
`
`Phone: 5139778527
`
`Attorney of Record
`
`Docket Number: TM-8715
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Correspondent e-
`mail:
`
`April.Besl@Dinsmore.com DSMSTrademarks@di
`nsmore.com MSDocketing@Dinsmore.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`Oct. 18, 2022
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`
`Oct. 18, 2022
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`
`Oct. 18, 2022
`
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`
`Jun. 15, 2020
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`
`Jun. 15, 2020
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`
`Jun. 15, 2020
`
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`
`Proceeding
`Number
`
`Jun. 10, 2020
`
`APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED
`
`88888
`
`Jun. 10, 2020
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`
`Jun. 10, 2020
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`
`Jun. 10, 2020
`
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`
`Jun. 10, 2020
`
`TEAS CHANGE OF OWNER ADDRESS RECEIVED
`
`Jul. 24, 2019
`
`NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
`
`Jul. 24, 2019
`
`REGISTERED AND RENEWED (SECOND RENEWAL - 10 YRS)
`
`Jul. 24, 2019
`
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`
`Jul. 24, 2019
`
`CASE ASSIGNED TO PO