Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA Tracking number:
`ESTTA1200200
`03/31/2022
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92068983
`Plaintiff
`Buzz Media, Inc.
`KHALID MIAN
`BUZZ MEDIA INC
`1245 HEWLETT PLAZA, #433
`HEWLETT, NY 11557
`UNITED STATES
`Primary email: legal@buzznbeat.com
`516-304-9595
`Other Motions/Submissions
`KHALID MIAN
`legal@buzznbeat.com
`/Khalid Mian/
`03/31/2022
`Motion for Entry of Judgement Under 37 CFR Section 2-134 b.pdf(104415 bytes
`
`)E
`
`xhibit J - Declaration of Khalid Mian.pdf(47620 bytes )
`Exhibit J-1.pdf(1654476 bytes )
`Exhibit J-2.pdf(715388 bytes )
`Exhibit J-3.pdf(1089060 bytes )
`Exhibit J-4.PDF(327865 bytes )
`Exhibit J-5.pdf(455091 bytes )
`Exhibit J-6.PDF(162799 bytes )
`Exhibit J-7.pdf(475624 bytes )
`Exhibit J-8.PDF(152268 bytes )
`Exhibit J-9.pdf(473926 bytes )
`
`Proceeding no.
`Party
`
`Correspondence
`address
`
`Submission
`Filer's name
`Filer's email
`Signature
`Date
`Attachments
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In Re: Trademark Registrations No. 4814904 & 4814905
`
`Buzz Media, Inc.
`
`
`
`V
`
`
`Beats Electronics, LLC
`
`
`
`
`Petitioner
`
`
`Respondent
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Consolidated Cancellations No.:
`
`
`92068983 (Parent)
`92068985
`
`
`
`MOTION FOR ENTRY OF JUDGEMENT UNDER 37 C.F.R. § 2.134(b)
`
`37 C.F.R. § 2.134(a) & § 2.134(b) AND TBMP § 535 & 602.02
`
`
`
`1. Petitioner Buzz Media, Inc. hereby invokes the provisions contained in 37 C.F.R. §
`
`2.134(a), 37 C.F.R. § 2.134(b), TBMP § 535 and TBMP §602.02 AND moves for entry of
`
`judgement against the defendant on all counts in the Petition for Cancellation, i.e.
`
`Count 1: FRAUD; Count 3: FRAUD; Count 4: LACK OF OWNERSHIP OF THE MARK; Count
`
`5: MARK NOT IN USE IN COMMERCE AS OF THE STATEMENT OF USE and Count 6:
`
`ABANDONMENT.
`
`2. The status of Trademark Registrations No. 4814904 & 4814905 in the TSDR shows that
`
`both registrations were cancelled on March 25, 2022 for failure to file an acceptable
`
`declaration under §8 of the Trademark Act 1946.
`
`

`

`3. 37 C.F.R. § 2.134(b) provides that in case a respondent in a cancellation proceeding
`
`lets
`
`its
`
`trademark
`
`registration
`
`to be cancelled
`
`for non-filing of §8
`
`affidavit/deceleration, the Board may order the respondent to show cause why such
`
`cancellation should not be deemed to be the equivalent of a cancellation by request
`
`of respondent without the consent of the adverse party and should not result in
`
`entry of judgment against respondent as provided by 37 C.F.R. § 2.134(a). In case the
`
`respondent fails to show good and sufficient cause, the Board may enter judgment
`
`against the respondent under 37 C.F.R. § 2.134(a).
`
`4. In the application of 37 C.F.R. § 2.134((cid:358)), the Board has held that the term “good and
`
`sufficient cause” refers to cases where the failure to file §8 deceleration is the result
`
`of inadvertence or mistake.
`
`Jill E Peterson v. Awshucks SC, LLC (When it comes to the attention of the
`
`Board that a registration that is the subject of a cancellation proceeding
`
`lapses during the proceeding, the Board will usually, pursuant to
`
`Trademark Rule 2.134(b), 37 C.F.R. § 2.134(b), issue an order allowing the
`
`respondent time to show cause why the cancellation of such
`
`registration should not be deemed the equivalent of a cancellation by
`
`request of the respondent without the consent of the petitioner and
`
`should not result in entry of judgment against the respondent. See
`
`Marshall Field & Co. v. Mrs. Fields Cookies, 11 USPQ2d 1154, 1155 (TTAB
`
`1989); C.H. Guenther & Son Inc. v. Whitewing Ranch Co., 8 USPQ2d 1450
`
`

`

`(TTAB 1988); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF
`
`PROCEDURE (TBMP) § 602.02(b) (2020).)
`
`(The purpose of an order to show cause in that situation is to prevent a
`
`respondent from intentionally mooting a cancellation (thereby avoiding
`
`judgment), and to give the respondent an opportunity to submit a
`
`showing that the cancellation of that registration was the result of
`
`inadvertence or mistake, in which case judgment would not be entered
`
`against it.) See, e.g., Marshall Field, 11 USPQ2d at 1156 (where registrant
`
`stated that failure to file a Section 8 affidavit was result of deliberate
`
`business decision made prior to commencement of proceeding and not
`
`to avoid judgment, judgment was not entered as to that ground); C.H.
`
`Guenther & Son, 8 USPQ2d at 1452 (failure to renew was unintentional
`
`and not due to a(cid:358)andonment); A(cid:358)raham’s Seed v. John One Ten, 1
`
`USPQ2d 1230, 1232 (TTAB 1986) (respondent’s (cid:358)elief that it was improper to
`
`file a Section 8 affidavit since “the cancellation action had priority,”
`
`while erroneous, was treated as sufficient showing of cause to avoid
`
`entry of judgment.) Id
`
`5. In the instant case, however, respondent’s act of non-filing of §8 Deceleration was
`
`neither a mistake nor an inadvertent lapse. It’s rather a deliberate and planned
`
`a(cid:358)stention aimed at avoiding Board’s judgment on Petitioner’s allegations and the
`
`grounds/counts for cancellation.
`
`

`

`6. As the Board considers any explanation proffered by the respondent, the petitioner
`
`draws Board’s attention to the following facts which rule out the possibility of any
`
`inadvertence or mistake on the part of the respondent:
`
`i.
`
`From September 15, 2020 to March 15, 2022, the respondent had 18 months to
`
`file §8 decelerations In Re: Trademark Registrations No. 4814904 & 4814905.
`
`During this period of time, the respondent filed Declarations under §8 and
`
`§9/§15 in at least three of its Trademark Registrations, i.e. 3881677, 4937568
`
`and 5028678 on 11/16/2020, 5/17/2021 and 8/23/2021 respectively [Exhibit J-1,
`
`Exhibit J-2 and Exhibit J-3 respectively]. In the normal course of things,
`
`filing of each of these declarations serves as a check point and a reminder
`
`regarding every other trademark registration which may be due for
`
`maintenance declaration. In this situation, forgetting not one but both the
`
`registrations which are subject of Cancellation Proceedings, i.e. Registrations
`
`No. 4814904 & 4814905 takes some serious deliberation and planning and not
`
`a mistake or inadvertence.
`
`ii.
`
`USPTO record of Trademark Registrations No. 4814904 & 4814905 shows that
`
`the respondent has Ms. Kimberly Eckhart Esq, a licensed attorney, taking
`
`care of both the subject registrations as Attorney of Record. On the other
`
`hand, the TTAB record shows that the respondent is being represented in the
`
`instant cancellation proceedings by at least four senior licensed attorneys,
`
`i.e. Mr. Michael G. Kelber Esq, Ms. Andrea S. Fuelleman Esq, Ms. Katherine
`
`Dennis Nye Esq and Mr. Andrew S. Fraker Esq; all of the reputed law firm,
`
`

`

`NEAL, GERBER & EISENBERG LLP. A plea of inadvertence or mistake by the
`
`respondent would be tantamount to an allegation of negligence and
`
`professional incompetence against its own attorneys which is obviously far-
`
`fetched and incorrect; hence, unconvincing and unacceptable.
`
`iii.
`
`Extremely apprehensive of the legal and logical consequences of its
`
`fraudulent and tortious acts and conduct, the respondent improperly used
`
`its discovery requests to explore the possibility of eliciting answers from the
`
`petitioner which could be possibly misinterpreted to claim a consented
`
`cancellation of fraudulently procured, invalid and void ab initio Trademark
`
`Registrations No. 4814904 & 4814905 on one hand and which could be
`
`arguably twisted, misconstrued and used out of context to evade the
`
`anticipated civil liability.
`
`iv.
`
`After a failed attempt of tricking the petitioner by discovery, the non-filing
`
`of §8 deceleration is clearly and undoubtedly a deliberate and considered
`
`step in frustration and not, in any way, an inadvertence or a mistake.
`
`Respondent’s following discovery requests and petitioner’s responses fully
`
`support this inference:
`
`In respondent’s “First Set of Requests for Admission” [Exhibit J-4]
`
`Request for Admission No. 17 read as under:
`
`
`
`17. Admit that the only relief Petitioner is seeking in this proceeding is the
`
`cancellation of Beats’ Trademark Registration Nos. 4,814,904 and 4,814,905.
`
`

`

`
`
`
`
`In its response [Exhibit J-5] to the above mentioned Request for Admission, the
`
`petitioner wrote:
`
`
`
`Admitted to the extent that, in view of the fact that the scope of cancellation
`
`proceedings and the jurisdiction of the TTAB is limited to the determination of
`
`the validity and/or cancelability of trademark registrations, in the subject
`
`Cancellation Petitions, the Petitioner is seeking cancellation of Beats’ Trademark
`
`Registration Nos. 4,814,904 and 4,814,905. However, the Petitioner specifically and
`
`unambiguously maintains that this admission doesn’t in any way effect
`
`Petitioner’s statutory and common law rights including (cid:358)ut not limited to the
`
`rights declared and protected by §38 (15 U.S.C. §1120) Fraud; civil liability, which
`
`provides as under:
`
`Any person who shall procure registration in the Patent and Trademark
`
`Office of a mark by a false or fraudulent declaration or representation,
`
`oral or in writing, or by any false means, shall be liable in a civil action
`
`by any person injured thereby for any damages sustained in consequence
`
`thereof.
`
`Of course, if any such action is initiated, it has to be determined and decided by
`
`a court of competent jurisdiction.
`
`

`

`Request for Admission No. 18 read as under:
`
`
`
`
`
`18. Admit that the only relief Petitioner is entitled to in this proceeding is the
`
`cancellation of Beats’ Trademark Registration Nos. 4,814,904 and 4,814,905.
`
`In its response [Exhibit J-5] to the above mentioned Request for Admission, the
`
`petitioner wrote:
`
`
`
`Admitted to the extent that, in view of the fact that the scope of cancellation
`
`proceedings and the jurisdiction of the TTAB is limited to the determination of
`
`the validity and/or cancelability of trademark registrations, in the subject
`
`Cancellation Petitions, the Petitioner is seeking cancellation of Beats’ Trademark
`
`Registration Nos. 4,814,904 and 4,814,905. However, the Petitioner specifically and
`
`unam(cid:358)iguously maintains that this admission doesn’t in any way effect
`
`Petitioner’s statutory and common law rights including but not limited to the
`
`rights declared and protected by §38 (15 U.S.C. §1120) Fraud; civil liability which
`
`provides as under:
`
`Any person who shall procure registration in the Patent and Trademark
`
`Office of a mark by a false or fraudulent declaration or representation,
`
`oral or in writing, or by any false means, shall be liable in a civil action
`
`by any person injured thereby for any damages sustained in consequence
`
`thereof.
`
`

`

`
`
`
`
`Of course, if any such action is initiated, it has to be determined and decided by
`
`a court of competent jurisdiction.
`
`Request for Admission No. 19 read as under:
`
`
`
`19. Admit that the cancellation of Beats’ Trademark Registration Nos. 4,814,904 and
`
`4,814,905 will enable Petitioner to obtain a trademark registration for the Buzz
`
`Media B Logo Mark.
`
`In its response [Exhibit J-5] to the above mentioned Request for Admission, the
`
`petitioner wrote:
`
`
`
`Admitted to the extent that since the Petitioner’s trademark registration has
`
`(cid:358)een refused on the (cid:358)asis of perceived confusion of likelihood with Beats’
`
`Trademark Registration Nos. 4,814,904 and 4,814,905, therefore; the cancellation
`
`of Beats’ Trademark Registration Nos. 4,814,904 and 4,814,905 will remove that
`
`hurdle and the Petitioner is expected to obtain trademark registration for the
`
`Buzz Media’s B Logo Mark. However,
`
`the Petitioner specifically and
`
`unam(cid:358)iguously maintains that the registration of its trademark doesn’t in any
`
`way effect Petitioner’s statutory and common law rights including (cid:358)ut not
`
`limited to the rights declared and protected by §38 (15 U.S.C. §1120) Fraud; civil
`
`liability which provides as under:
`
`

`

`Any person who shall procure registration in the Patent and Trademark
`
`Office of a mark by a false or fraudulent declaration or representation,
`
`oral or in writing, or by any false means, shall be liable in a civil action
`
`by any person injured thereby for any damages sustained in consequence
`
`thereof.
`
`Of course, if any such action is initiated, it has to be determined and decided by
`
`a court of competent jurisdiction.
`
`
`
`In respondent’s “First Set of Interrogatories” [Exhibit J-6]
`
`Interrogatory No. 25 read as under:
`
`25. Describe in detail how the cancellation of Trademark Registration Nos.
`
`4,814,904 and 4,814,905 would remedy or otherwise cure Petitioner’s purported
`
`damage.
`
`
`
`
`
`As part of its response [Exhibit J-7] to the above mentioned interrogatory the
`
`petitioner wrote:
`
`
`
`However, the words “Petitioner’s purported damage” in this interrogatory appear
`
`to have been included to refer to matters beyond cancellation and registration of
`
`trademarks in issue. With regard to these well intended but undeclared
`
`

`

`meanings, the Petitioner specifically and unambiguously maintains that the
`
`registration of its trademark doesn’t in any way effect Petitioner’s statutory and
`
`common law rights including but not limited to the rights declared and
`
`protected by §38 (15 U.S.C. §1120) Fraud; civil liability which provides as under:
`
`Any person who shall procure registration in the Patent and Trademark
`
`Office of a mark by a false or fraudulent declaration or representation,
`
`oral or in writing, or by any false means, shall be liable in a civil action
`
`by any person injured thereby for any damages sustained in consequence
`
`thereof.
`
`Of course, if any such action is initiated, it has to be determined and decided by
`
`a court of competent jurisdiction.
`
`
`
`In respondent’s “First Set of Document Requests” [Exhibit J-8]
`
`Document Request No. 15 read as under:
`
`15. All documents relating to Petitioner’s claimed harm by the purported business
`
`disruption and loss of market capitalization, and any other damages Petitioner
`
`alleges that it is entitled to.
`
`
`
`
`
`As part of its response [Exhibit J-9 ] to the above mentioned document request the
`
`petitioner wrote:
`
`

`

` Buzz Media o(cid:358)jects to this document request on the ground that it’s hypothetical.
`
`As detailed in the Cancellation Petitions, immediately after its acquisition by
`
`Apple, Inc., the defendant’s Human Resources were put to an end. Some
`
`employees and officers were moved to Apple’s payroll and the rest were laid off.
`
`In this way the defendant lost its very existence as a separate and independent
`
`business entity. Although the defendant Beats Electronics, LLC was practically
`
`put to an end (cid:358)ut its parent company Apple, Inc. continued to use defendant’s
`
`name and trademarks as rubber stamp on its own products which were
`
`manufactured by Apple, Inc. to the complete exclusion of the defendant. Now,
`
`the unauthorized users of defendant’s name and trademarks are apprehensive
`
`of the operation of §38 (15 U.S.C. §1120) Fraud; civil liability which provides as
`
`under:
`
`Any person who shall procure registration in the Patent and Trademark
`
`Office of a mark by a false or fraudulent declaration or representation,
`
`oral or in writing, or by any false means, shall be liable in a civil action
`
`by any person injured thereby for any damages sustained in consequence
`
`thereof.
`
`However, the current Cancellation Proceedings are not the right time and
`
`platform to start gathering information to pre-emptively start preparing for
`
`such potential future proceedings. The discovery in the current Cancellation
`
`Petitions has to be restricted to the subject matter of the petitions and the issues
`
`

`

`and questions involved in the current proceedings.
`
`
`
`7. Parts of discovery cited above very clearly shows that the respondent was extremely
`
`concerned about a judgement in the instant cancellation petitions as well as the
`
`anticipated civil action by the petitioner. This situation completely rules out the
`
`possibility of any inadvertence or mistake.
`
`8. DECLARATION of KHALID MIAN, President of the Petitioner, is submitted as Exhibit J.
`
`
`
`In view of the above submissions, the Petitioner respectfully requests that the Board may
`
`kindly enter judgement under 37 C.F.R. § 2.134(a) & § 2.134(b) against the defendant on all
`
`counts in the Petition for Cancellation, i.e. Count 1: FRAUD; Count 3: FRAUD; Count 4: LACK
`
`OF OWNERSHIP OF THE MARK; Count 5: MARK NOT IN USE IN COMMERCE AS OF THE
`
`STATEMENT OF USE and Count 6: ABANDONMENT.
`
`
`
`Respectfully submitted,
`
`/Khalid Mian/
`
`Khalid Mian
`
`President, Buzz Media, Inc.
`
`1245 Hewlett Plaza # 433
`
`Hewlett, New York 11557
`
`Phone: +1-516-304-9595
`
`Dated: March 31, 2022
`
`
`
`
`
`Email: legal@buzznbeat.com
`
`
`
`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing Motion for Entry of
`
`Judgement Under 37 C.F.R. § 2.134(b), including the accompanying Exhibits, has been served
`
`on the respondent Beats Electronics, LLC by forwarding the said copy on 3/31/2022, via
`
`email to the respondent's Attorneys Mr. Michael G. Kelber and Ms. Andrea S. Fuelleman at
`
`mkelber@nge.com and afuelleman@nge.com respectively.
`
`/Khalid Mian/
`
`Khalid Mian
`
`President,
`
`Buzz Media, Inc.
`
`1245 Hewlett Plaza # 433
`
`Hewlett, New York 11557
`
`Phone: +1-516-304-9595
`
`Email: legal@buzznbeat.com
`
`Dated: March 31, 2022
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In Re: Trademark Registrations No. 4814904 & 4814905
`
`Buzz Media, Inc.
`
`
`
`V
`
`
`Beats Electronics, LLC
`
`
`
`
`Petitioner
`
`
`Respondent
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Consolidated Cancellations No.:
`
`
`92068983 (Parent)
`92068985
`
`DECLARATION OF KHALID MIAN
`
`In Re: Motion for Entry of Judgement Under 37 C.F.R. § 2.134(b)
`
`I, Khalid Mian, declare as follows, under penalty of perjury under the laws of the United
`
`States:
`
`1. My name is KHALID MIAN. I am President of the Petitioner, Buzz Media, Inc. and in
`
`my official capacity, I have knowledge of the communication and documents
`
`mentioned in this declaration.
`
`2. A true and correct copy of the TSDR report of Trademark Registration No. 3881677 is
`
`attached as Exhibit J-1 to this declaration.
`
`3. A true and correct copy of the TSDR report of Trademark Registration No. 4937568 is
`
`attached as Exhibit J-2 to this declaration.
`
`

`

`4. A true and correct copy of the TSDR report of Trademark Registration No. 5028678 is
`
`attached as Exhibit J-3 to this declaration.
`
`5. A true and correct copy of respondent’s “First Set of Requests For Admission” is
`
`attached as Exhibit J-4 to this declaration.
`
`6. A true and correct copy of “Petitioner Buzz Media, Inc.’s Responses to respondent’s
`
`First Set of Requests For Admission” is attached as Exhibit J-5 to this declaration.
`
`7. A true and correct copy of respondent’s “First Set of Interrogatories” is attached as
`
`Exhibit J-6 to this declaration.
`
`8. A true and correct copy of “Petitioner Buzz Media, Inc.’s Responses to respondent’s
`
`First Set of Interrogatories” is attached as Exhibit J-7 to this declaration.
`
`9. A true and correct copy of respondent’s “First Set of Document Requests” is attached
`
`as Exhibit J-8 to this declaration.
`
`10. A true and correct copy of “Petitioner Buzz Media, Inc.’s Responses to respondent’s
`
`First Set of Document Requests” is attached as Exhibit J-9 to this declaration.
`
`I make this Declaration having been advised of the penalties for perjury under the laws of
`
`the United States, on this 31st day of March 2022, in Hewlett, New York.
`
`
`
`/Khalid Mian/
`
`Khalid Mian (Declarant)
`
`President,
`
`Buzz Media, Inc. (Petitioner)
`
`

`

`Generated on: This page was generated by TSDR on 2022-03-30 23:39:05 EDT
`
`Mark: B
`
`US Serial Number: 77980339
`
`US Registration
`Number:
`
`3881677
`
`Register: Principal
`
`Mark Type: Trademark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Jun. 04, 2008
`
`Registration Date: Nov. 23, 2010
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status: The registration has been renewed.
`
`Status Date: Feb. 24, 2021
`
`Publication Date:Jun. 09, 2009Notice of Allowance Date:Feb. 02, 2010
` 
`
`Mark Information
`
`Mark Literal
`Elements:
`
`Standard Character
`Claim:
`
`B
`
`No
`
`Mark Drawing
`Type:
`
`Description of
`Mark:
`
`3 - AN ILLUSTRATION DRAWING WHICH INCLUDES WORD(S)/ LETTER(S)/NUMBER(S)
`
`The mark consists of the mark consists of the lower case letter "b" in a circle.
`
`Color(s) Claimed: Color is not claimed as a feature of the mark.
`
`Design Search
`Code(s):
`
`26.01.02 - Circles, plain single line; Plain single line circles
`26.01.17 - Concentric circles, two; Circles, two concentric; Two concentric circles
`
`Related Properties Information
`
`1303774
`
`A0058120/1303774
`
`International
`Registration
`Number:
`
`International
`Application(s)
`/Registration(s)
`Based on this
`Property:
`
`Child Of: 77490869
`
`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: Headphones
`
`International 009 - Primary Class
`
`U.S Class(es): 021, 023, 026, 036, 038
`
`

`

`Class(es):
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: Jul. 01, 2008
`
`Filed Use: No
`
`Filed ITU: Yes
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Filed No Basis: No
`
`Use in Commerce: Jul. 01, 2008
`
`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: BEATS ELECTRONICS, LLC
`
`Owner Address: 8600 Hayden Place
`Culver City, CALIFORNIA UNITED STATES 90232
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Attorney/Correspondence Information
`
`Attorney of Record - None
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`BEATS ELECTRONICS, LLC
`8600 HAYDEN PLACE
`CULVER CITY, CALIFORNIA UNITED STATES 90232
`
`Correspondent e-
`mail:
`
`trademarkdocket@apple.com
`keckhart@apple.com aroodzant@apple.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`Feb. 24, 2021
`Feb. 24, 2021
`Feb. 24, 2021
`Feb. 24, 2021
`Nov. 16, 2020
`Nov. 23, 2019
`Apr. 25, 2016
`Apr. 25, 2016
`Apr. 25, 2016
`Feb. 24, 2016
`Feb. 24, 2016
`Nov. 23, 2015
`Mar. 18, 2015
`Mar. 18, 2015
`Jan. 15, 2015
`Nov. 06, 2014
`Sep. 24, 2014
`Sep. 18, 2014
`Jun. 27, 2014
`Jun. 26, 2014
`
`NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
`REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS)
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`TEAS SECTION 8 & 9 RECEIVED
`COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED
`NOTICE OF ACCEPTANCE OF SEC. 8 & 15 - E-MAILED
`REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`TEAS SECTION 8 & 15 RECEIVED
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`NOTICE OF SUIT
`NOTICE OF SUIT
`NOTICE OF SUIT
`NOTICE OF SUIT
`NOTICE OF SUIT
`NOTICE OF SUIT
`
`Proceeding
`Number
`
`70187
`70187
`70187
`
`76874
`76874
`
`

`

`Jun. 23, 2014
`Jun. 23, 2014
`May 13, 2014
`May 13, 2014
`May 13, 2014
`May 13, 2014
`May 09, 2014
`May 09, 2014
`May 07, 2014
`May 07, 2014
`May 07, 2014
`Apr. 28, 2014
`Apr. 22, 2014
`Dec. 17, 2013
`Dec. 17, 2013
`Nov. 06, 2013
`Oct. 02, 2013
`Jul. 24, 2013
`May 12, 2012
`May 12, 2012
`Nov. 23, 2010
`Oct. 19, 2010
`Oct. 18, 2010
`Oct. 13, 2010
`Sep. 14, 2010
`Sep. 13, 2010
`Jul. 30, 2010
`Sep. 13, 2010
`Jul. 30, 2010
`Sep. 09, 2010
`Jul. 30, 2010
`Jul. 30, 2010
`Jul. 28, 2010
`Jul. 17, 2010
`Jul. 17, 2010
`Jul. 21, 2010
`Feb. 02, 2010
`Dec. 22, 2009
`Jun. 18, 2009
`Jun. 09, 2009
`May 20, 2009
`May 04, 2009
`May 03, 2009
`Mar. 04, 2009
`Mar. 04, 2009
`Mar. 04, 2009
`Sep. 15, 2008
`Sep. 13, 2008
`Sep. 12, 2008
`Aug. 04, 2008
`Jul. 24, 2008
`Jul. 23, 2008
`Jun. 10, 2008
`Jun. 09, 2008
`
`NOTICE OF SUIT
`NOTICE OF SUIT
`APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED
`TEAS CHANGE OF OWNER ADDRESS RECEIVED
`NOTICE OF SUIT
`NOTICE OF SUIT
`NOTICE OF SUIT
`NOTICE OF SUIT
`NOTICE OF SUIT
`NOTICE OF SUIT
`NOTICE OF SUIT
`NOTICE OF SUIT
`NOTICE OF SUIT
`NOTICE OF SUIT
`NOTICE OF SUIT
`ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY
`NOTICE OF SUIT
`ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY
`APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED
`TEAS CHANGE OF OWNER ADDRESS RECEIVED
`REGISTERED-PRINCIPAL REGISTER
`NOTICE OF ACCEPTANCE OF STATEMENT OF USE E-MAILED
`LAW OFFICE REGISTRATION REVIEW COMPLETED
`ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED
`NOTICE OF DESIGN SEARCH CODE MAILED
`STATEMENT OF USE PROCESSING COMPLETE
`USE AMENDMENT FILED
`DIVISIONAL PROCESSING COMPLETE
`DIVISIONAL REQUEST RECEIVED
`CASE ASSIGNED TO INTENT TO USE PARALEGAL
`TEAS STATEMENT OF USE RECEIVED
`TEAS REQUEST TO DIVIDE RECEIVED
`AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY
`NOA MAILED - SOU REQUIRED FROM APPLICANT
`EXTENSION OF TIME TO OPPOSE PROCESS - TERMINATED
`EXTENSION OF TIME TO OPPOSE RECEIVED
`PUBLISHED FOR OPPOSITION
`NOTICE OF PUBLICATION
`LAW OFFICE PUBLICATION REVIEW COMPLETED
`APPROVED FOR PUB - PRINCIPAL REGISTER
`TEAS/EMAIL CORRESPONDENCE ENTERED
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`TEAS RESPONSE TO OFFICE ACTION RECEIVED
`NON-FINAL ACTION MAILED
`NON-FINAL ACTION WRITTEN
`ASSIGNED TO EXAMINER
`PRELIMINARY/VOLUNTARY AMENDMENT - ENTERED
`ASSIGNED TO LIE
`TEAS VOLUNTARY AMENDMENT RECEIVED
`NOTICE OF DESIGN SEARCH CODE MAILED
`NEW APPLICATION ENTERED IN TRAM
`TM Staff and Location Information
`
`88888
`
`88888
`
`68123
`
`65362
`65362
`
`65362
`
`68123
`
`88889
`88889
`
`76503
`76503
`68123
`68123
`
`

`

`Current Location: GENERIC WEB UPDATE
`
`Date in Location: Feb. 24, 2021
`
`Assignment Abstract Of Title Information
`
`TM Staff Information - None
`
`File Location
`
`Summary
`
`Total Assignments: 3
`
`Assignment 1 of 3
`
`Registrant: BEATS ELECTRONICS, LLC
`
` 
`
`Conveyance: TRADEMARK SECURITY AGREEMENT
`
`Reel/Frame: 5069/0187
`
`Date Recorded: Jul. 15, 2013
`
`Supporting
`Documents:
`
`assignment-tm-5069-0187.pdf
`
`Pages: 12
`
`Name: BEATS ELECTRONICS, LLC
`
`Execution Date: Jun. 28, 2013
`
`Assignor
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`Name: CITIBANK, N.A.
`
`Legal Entity Type: BANK
`
`Address: 388 GREENWICH STREET
`NEW YORK, NEW YORK 10013
`
`Correspondent
`Name:
`
`VINDRA RICHTER C/O WEIL ET AL
`
`Correspondent
`Address:
`
`767 FIFTH AVE
`NEW YORK, NY 10153
`
`State or Country
`Where Organized:
`
`Assignee
`
`No Place Where Organized Found
`
`State or Country
`Where Organized:
`
`NEW YORK
`
`Correspondent
`
`Domestic Representative - Not Found
`
`Assignment 2 of 3
`
`Conveyance: TERMINATION OF SECURITY INTEREST IN TRADEMARKS ON REEL 5069 AND FRAME 0187
`
`Reel/Frame: 5142/0903
`
`Date Recorded: Oct. 31, 2013
`
`Supporting
`Documents:
`
`assignment-tm-5142-0903.pdf
`
`Pages: 7
`
`Name: CITIBANK, N.A.
`
`Execution Date: Oct. 31, 2013
`
`Assignor
`
`Legal Entity Type: BANK
`
`Name: BEATS ELECTRONICS, LLC
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`Address: 1601 CLOVERFIELD BLVD, SUITE 5000N
`SANTA MONICA, CALIFORNIA 90404
`
`Correspondent
`Name:
`
`Correspondent
`Address:
`
`TOM HASHAGEN
`
`WEIL, GOTSHAL & MANGES LLP
`767 FIFTH AVENUE
`NEW YORK, NY 10153
`
`State or Country
`Where Organized:
`
`Assignee
`
`No Place Where Organized Found
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Correspondent
`
`Domestic Representative - Not Found
`
`Assignment 3 of 3
`
`

`

`Conveyance: SECURITY INTEREST
`
`Reel/Frame: 5145/0610
`
`Date Recorded: Nov. 04, 2013
`
`Supporting
`Documents:
`
`assignment-tm-5145-0610.pdf
`
`Pages: 11
`
`Name: BEATS ELECTRONICS, LLC
`
`Execution Date: Oct. 31, 2013
`
`Assignor
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`Name: CITIBANK, N.A.
`
`Legal Entity Type: BANK
`
`Address: 388 GREENWICH STREET
`NEW YORK, NEW YORK 10013
`
`Correspondent
`Name:
`
`Correspondent
`Address:
`
`TOM HASHAGEN
`
`WEIL, GOTSHAL & MANGES LLP
`767 FIFTH AVENUE
`NEW YORK, NY 10153
`
`State or Country
`Where Organized:
`
`Assignee
`
`No Place Where Organized Found
`
`State or Country
`Where Organized:
`
`NEW YORK
`
`Correspondent
`
`Domestic Representative - Not Found
`
`

`

`Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`PTO Form 1963 (Rev 05/2006)
`
`OMB No. 0651-0055 (Exp 10/31/2021)
`
`Combined Declaration of Use and/or Excusable Nonuse/Application for Renewal of
`Registration of a Mark under Sections 8 & 9
`
`Input Field
`
`REGISTRATION NUMBER
`
`REGISTRATION DATE
`
`SERIAL NUMBER
`
`MARK SECTION
`
`MARK
`
`The table below presents the data as entered.
`
`Entered
`
`3881677
`
`11/23/2010
`
`77980339
`
`B (stylized and/or with design, see mark)
`
`CORRESPONDENCE INFORMATION (current)
`
`NAME
`
`PRIMARY EMAIL ADDRESS FOR
`CORRESPONDENCE
`
`BEATS ELECTRONICS, LLC
`
`trademarkdocket@apple.com
`
`SECONDARY EMAIL ADDRESS(ES) (COURTESY
`COPIES)
`
`keckhart@apple.com
`
`CORRESPONDENCE INFORMATION (proposed)
`
`NAME
`
`PRIMARY EMAIL ADDRESS FOR
`CORRESPONDENCE
`
`BEATS ELECTRONICS, LLC
`
`trademarkdocket@apple.com
`
`SECONDARY EMAIL ADDRESS(ES) (COURTESY
`COPIES)
`
`keckhart@apple.com; aroodzant@apple.com
`
`GOODS AND/OR SERVICES SECTION
`
`INTERNATIONAL CLASS
`
`GOODS OR SERVICES
`
`       SPECIMEN FILE NAME(S)
`
`       ORIGINAL PDF FILE
`
`       CONVERTED PDF FILE(S)
`       (1 page)
`
`       ORIGINAL PDF FILE
`
`       CONVERTED PDF FILE(S)
`       (1 page)
`
`SPECIMEN DESCRIPTION
`
`OWNER SECTION (current)
`
`NAME
`
`MAILING ADDRESS
`
`009
`
`Headphones
`
`SPN0-260164150073802552a2 7cb4d952e9-20201115205632
`296570_._Reg._No._3881677 _-_Specimen_of_Use_No._1.pdf
`
`\\TICRS\EXPORT18\IMAGEOUT 18\779\803\77980339\xml1\
`S890002.JPG
`
`SPN0-260164150073802552a2 7cb4d952e9-20201115205632
`296570_._Reg._No._3881677 _Specimen_of_Use_No._2.pdf
`
`\\TICRS\EXPORT18\IMAGEOUT 18\779\803\77980339\xml1\
`S890003.JPG
`
`Screen shot of Registrant's websites taken on November 15, 2020 showing
`the mark as used on the goods at point of sale
`
`BEATS ELECTRONICS, LLC
`
`8600 Hayden Place
`
`

`

`CITY
`
`STATE
`
`ZIP/POSTAL CODE
`
`COUNTRY/REGION/JURISDICTION/U.S.
`TERRITORY
`
`EMAIL
`
`OWNER SECTION (proposed)
`
`Culver City
`
`California
`
`90232
`
`United States
`
`XXXX
`
`NAME
`
`MAILING ADDRESS
`
`CITY
`
`STATE
`
`ZIP/POSTAL CODE
`
`COUNTRY/REGION/JURISDICTION/U.S.
`TERRITORY
`
`EMAIL
`
`LEGAL ENTITY SECTION (current)
`
`BEATS ELECTRONICS, LLC
`
`8600 Hayden Place
`
`Culver City
`
`California
`
`90232
`
`United States
`
`XXXX
`
`TYPE
`
`limited liability company
`
`STATE/COUNTRY/REGION/JURISDICTION/U.S.
`TERRITORY WHERE LEGALLY ORGANIZED
`
`Delaware
`
`PAYMENT SECTION
`
`NUMBER OF CLASSES
`
`NUMBER OF CLASSES PAID
`
`COMBINED §§ 8 & 9 DECLARATION/APPLICATION
`FILING FEE
`
`TOTAL FEE PAID
`
`SIGNATURE SECTION
`
`SIGNATURE
`
`SIGNATORY'S NAME
`
`1
`
`1
`
`425
`
`425
`
`/Kimberly Eckhart/
`
`Kimberly Eckhart
`
`SIGNATORY'S POSITION
`
`Attorney of record, California bar member
`
`DATE SIGNED
`
`SIGNATORY'S PHONE NUMBER
`
`PAYMENT METHOD
`
`11/16/2020
`
`(408) 783-6811
`
`DA
`
`FILING INFORMATION
`
`SUBMIT DATE
`
`Mon Nov 16 12:31:06 ET 2020
`
`TEAS STAMP
`
`USPTO/S08N09-XXXX:XXX:XXX
`:XXXX:XXXX:XXXX:XXXX:XXXX
`-20201116123106774470-388
`1677-750cf52fe804e1ae7ca2
`8115acebb21bad1f7cee4cc7f
`967392957443cf9b752f8-DA-
`31063484-2020111520563229
`6570
`
`

`

`

`

`Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`PTO Form 1963 (Rev 05/2006)
`
`OMB No. 0651-0055 (Exp 10/31/2021)
`
` 
`
`Combined Declaration of Use and/or Excusable Nonuse/Application for Renewal of Registration of a Mark under
`Sections 8 & 9
`
`To the Commissioner for Trademarks:
`
`REGISTRATION NUMBER: 3881677
`REGISTRATION DATE: 11/23/2010
`
`MARK: (Stylized and/or with Design, B (see, mark))
`
`Current: The owner, BEATS ELECTRONICS, LLC, a limited liability company legally organized under the laws of Delaware, having an
`address of
`      8600 Hayden Place
`      Culver City, California 90232
`      United States
`      XXXX
`
`Proposed: The owner, BEATS ELECTRONICS, LLC, a limited liability company legally organized under the laws of Delaware, having an
`address of
`      8600 Hayden Place
`      Culver City, California 90232
`      United States
`      XXXX
`is filing a Combined Declaration of Use and/or Excusable Nonuse/Application for Renewal of Registration of a Mark under Sections 8 & 9.
`
`For International Class 009, the mark is in use in commerce on or in connection with all goods/services, or to