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No. 6 - Microsoft Corporation Motion for Ext with Consent

Document BitDefender IPR Management Ltd. v. Microsoft Corporation, 91291588, No. 6 (T.T.A.B. Jul. 17, 2024)
Proceeding No. 91291588 Filing Party Other Party Defendant Microsoft Corporation Plaintiff BitDefender IPR Management Ltd.
Consent Motion to Extend The Deadline for Discovery Conference is currently set to close on 07/29/2024.
Microsoft Corporation re- quests that such date be extended for 60 days, or until 09/27/2024, and that all subsequent dates be reset accordingly.
Time to Answer Deadline for Discovery Conference Discovery Opens Initial Disclosures Due Expert Disclosures Due Discovery Closes Plaintiff's Pretrial Disclosures Due Plaintiff's 30-day Trial Period Ends Defendant's Pretrial Disclosures Due Defendant's 30-day Trial Period Ends Plaintiff's Rebuttal Disclosures Due Plaintiff's 15-day Rebuttal Period Ends Plaintiff's Opening Brief Due Defendant's Brief Due Plaintiff's Reply Brief Due Request for Oral Hearing (optional) Due
09/27/2024 09/27/2024 10/27/2024 02/24/2025 03/26/2025 05/10/2025 06/24/2025 07/09/2025 08/23/2025 09/07/2025 10/07/2025 12/06/2025 01/05/2026 01/20/2026 01/30/2026 The grounds for this request are as follows: - Parties are engaged in settlement discussions Microsoft Corporation has secured the express consent of all other parties to this proceeding for the exten- sion and resetting of dates requested herein.
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No. 5 - Answer

Document BitDefender IPR Management Ltd. v. Microsoft Corporation, 91291588, No. 5 (T.T.A.B. Jun. 28, 2024)
responds to the Notice of Opposition filed by BitDefender IPR Management Ltd. (“Opposer”), opposing registration of the mark MICROSOFT DEFENDER (“Applicant’s Mark”), which is the subject of application Serial No. 97/620590 in connection with the goods and services listed in Classes 09, 38 and 42 (the “Challenged Application”).
The Opposition is based on the misguided notion Opposer owns exclusive trademark rights to the term “defender” for computer security software.
Applicant denies it has a business address located at 255 East Fifth Street, Suite 1900, Cincinnati, Ohio 45202, as well as the recitation of any information inconsistent with the USPTO record.
Exhibit A to the Notice of Opposition contains documents of independent legal significance and Applicant denies any and all allegations inconsistent therewith.
To the extent a response is required, Applicant denies the allegations in Paragraph 18.
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No. 1 - Filed and Fee

Document BitDefender IPR Management Ltd. v. Microsoft Corporation, 91291588, No. 1 (T.T.A.B. May. 20, 2024)
Applicant 05/20/2024 NONE Opposition period ends International re- gistration date 05/19/2024 NONE Microsoft Corporation 255 EAST FIFTH STREET, SUITE 1900 CINCINNATI, OH 45202 UNITED STATES Goods/services affected by ...
... none of the aforementioned goods for use in or in relation to vehicles ...
... none of the aforementioned services for use in or in relation to vehicles ...
none of the aforementioned ser- vices for use in or in relation to vehicles, and residential and commercial security systems, home automation systems, and security for physical premises 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. 2927133 Register Principal Registration date 02/22/2005 Application date 09/17/2001 Foreign priority date 09/07/2001 Word mark Design mark Description of mark Goods/services BITDEFENDER ...
First use: First Use: None First Use In Commerce: None Anti-malware software applications, computer software for providing network, In- ternet, and computer security, computer software for providing online identity protection and ...
First use: First Use: None First Use In Commerce: None Downloadable or recorded anti-malware software applications ...
First use: First Use: None First Use In Commerce: None Conversion of the computer code for others ...
Register Registration date Mark Goods/services Application date NONE NONE NONE NONE BITDEFENDER Common law rights of BITDEFENDER since at least as early as 2004 for services, SAAS and computer software and services ...
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No. 12 - Withdraw of Opposition

Document BitDefender IPR Management Ltd. v. Microsoft Corporation, 91291588, No. 12 (T.T.A.B. Dec. 24, 2024)
Opposer Bitdefender IPR Management Ltd., hereby withdraws the Opposition, and requests that the Trademark Trial and Appeal Board dismiss the proceedings with prejudice pursuant to Trademark Rule 2.106(c), 37 C.F.R. §2,106(c).
Dated: December 24, 2024
Respectfully Submitted,
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No. 4 - Microsoft Corporation Appearance / Power of Attorney

Document BitDefender IPR Management Ltd. v. Microsoft Corporation, 91291588, No. 4 (T.T.A.B. Jun. 24, 2024)
The law firm of Dickinson Wright PLLC has been appointed by Microsoft Corporation as new counsel in the captioned proceedings and should be substituted for prior counsel in all matters pertaining to this action.
John L. Krieger and Cindy A. Villanueva hereby appear as counsel in this Opposition action and request that all further correspondence in this proceeding be directed to them at the business and email addresses provided below.
Wherefore, Applicant respectfully requests entry of this requested change in the correspondence address and attorneys of record.
Dated: June 24, 2024
Respectfully submitted,
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