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`
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`
`UNWEDSTATESDEPA
`
`TTAB
`
`Patent and Trademark (
`Trademark Trial and Appeal Board
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`Mailed: August 31, 2004
`
`Opposition No. 91156578 Ooasoiag‘
`
`LOGITECH INTERNATIONAL S.A.
`
`AND LOGITECH,
`
`INC.
`
`V.
`
`O9’ i te Ch Lt d _
`
`HflfllllllllllllIllllllllllllllIIIIIIIIIJIHHIII
`
`Angela Campbell, Paralegal Specialist:
`
`09-O9-2004
`usnmmnwmmmmmmmma
`
`The Board inadvertently forwarded the notice
`
`instituting this proceeding and a copy of the notice of
`
`opposition that was intended for applicant to an incorrect
`
`address.
`
`The error is regretted.
`
`Accordingly,
`
`the above notice, with enclosure,
`
`is
`
`remailed to applicant at the correct address: YAIR ESTLINE,
`
`ZYSMAN AHARONI GAYER LLP. , 1290 AVENUE OF THE AMERICAS, NEW
`
`YORK, NY 10104.
`
`In View of the circumstances herein,
`
`the time for
`
`filing an answer to the notice of opposition is extended to
`
`forty days from the mailing date of this order. Any
`
`discovery requests or notices served that remain unanswered
`
`as of the mailing date of this order must be reserved in
`
`

`
`accordance with the rules, unless otherwise agreed to by the
`
`parties.
`
`In accordance with the Trademark Rules of Practice,
`
`discovery is open, and the close of discovery and testimony
`
`dates are set as indicated below.
`
`In each instance, a copy
`
`of the transcript of testimony,
`
`together with copies of
`
`documentary exhibits, must be served on the adverse party
`
`within thirty days after completion of the taking of
`
`testimony. Trademark Rule 2.l25.
`
`Discovery period to close:
`
`March 22, 2005
`
`30-day testimony period for party
`in position of plaintiff to close: June 20, 2005
`
`30-day testimony period for party
`in position of defendant to close: August 19, 2005
`
`15-day rebuttal testimony period
`to Close:
`
`October 3, 2005
`
`Briefs shall be filed in accordance with Trademark
`
`Rule l.128(a) and (b).
`
`An oral hearing will be set only
`
`upon request filed as provided by Trademark Rule 2.129.
`
`

`
`LH
`
`UNITED STATES DEPARTMENT OF COMMERCE
`Patent and Trademark Office
`
`Trademark Trial and Appeal Board
`2900 Crystal Drive
`Arlington. Virginia 22202-3513
`
`Mailed: May 19, 2004
`
`Opposition No. 91156578
`
`LOGITECH INTERNATIONAL S.A.
`
`AND LOGITECH:
`INC .
`
`V.
`
`Ogitech Ltd.
`
`I
`
`}
`
`_
`
`LATRICIA HARRISON, LEGAL ASSISTANT:
`
`The Board inadvertently forwarded the notice
`
`instituting this proceeding and a copy of the notice of
`
`opposition that was intended for applicant to an incorrect
`
`address.
`
`The error is regretted.
`
`Accordingly,
`
`the above notice, with enclosure,
`
`is
`
`remailed to applicant at the correct address: YAIR ESTLINE,
`
`ZYSMAN AHARONI GAYER LLP. 292 MADISON AVE. NEW YORK, NY
`
`10017.
`
`In View of the circumstances herein,
`
`the time for
`
`filing an answer to the notice of opposition is extended to
`
`forty days from the mailing date of this order. Any
`
`discovery requests or notices served that remain unanswered
`
`
`
`' —'' ' ' I in-
`
`
`
`
`
`
`
`
`
`‘
`
`‘
`
`o5-27-2004
`u.B.vuuMlTM°‘°”“ W“ "°“‘°‘“ '3’
`
`

`
`as of the mailing date of this order must be reserved in
`
`accordance with the rules, unless otherwise agreed to by the
`
`parties.
`
`In accordance with the Trademark Rules of Practice,
`
`discovery is open, and the close of discovery and testimony
`
`dates are set as indicated below.
`
`In each instance,
`
`a copy
`
`of the transcript of testimony,
`
`together with copies of
`
`documentary exhibits, must be served on the adverse party
`
`within thirty days after completion of the taking of
`
`testimony. Trademark Rule 2.125.
`
`Discovery period to close:
`
`12/05/04
`
`30-day testimony period for party
`in position of plaintiff to close:
`
`30-day testimony period for party
`in position of defendant
`to close:
`
`3/5/05
`
`5/4/05
`
`15-day rebuttal testimony period
`to close:
`
`6/18/05
`
`Briefs shall be filed in accordance with Trademark
`
`Rule 1.128(a) and (b).
`
`An oral hearing will be set only
`
`upon request filed as provided by Trademark Rule 2.129.
`
`

`
`
`
`In the Matter of Application Serial No. 76/330,138
`Published in the Qfiicial Gazette on December 31, 2002
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Logitech International S.A.
`
`Opposition No.9_
`
`and
`
`Logitech, Inc.
`
`V.
`
`Ogitech Ltd.
`
`osers,
`
`Opp
`
`Applicant.
`
`
`
`NOTICE OF OPPOSITION
`
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`
`Opposer, Logitech International S.A., :1 Switzerland corporation, having its principal
`
`place of business at CH 1143 Apples, Switzerland (“LISA") believes that it has been and/or will
`
`be damaged by the registration of Application Serial No. 76/330,138 for OGITECH and hereby
`
`opposes the same.
`
`Opposer, Logitech, Inc., a Delaware corporation, having its principal place of business at
`
`6505 Kaiser Drive, Fremont, California 94555 (“Logitech"), believes that it has been and/or will
`
`be damaged by the registration of Application Serial No. 761330.138 for OGITECH and hereby
`
`opposes the same.
`
`LISA and Logitech (collectively, “Opposers”) file this Notice of Opposition jointly under
`
`TMBP Sec. 304. LISA is the parent company of Logitech and Logitech is a subsidiary of LISA.
`
`As grounds for opposition, Opposers allege that:
`
`Gray Ca:-y\PA\l 0291213.!
`I 120525-900103
`
`

`
`
`
`

`
`
`
`1. Opposer obtained two extensions of time to file a Notice of Opposition to the registration of
`
`Applicant's mark. up to and including April 30, 2003.
`
`. According to the Trademark Office records, on or about October 25, 2001, Applicant
`
`Ogitech Ltd. (“Applicant”) applied to register its trademark OGITECH (the “Proposed
`
`Mar ”) for “. . machine parts, namely, camera, electric power supplies, laser died and lenses
`
`for laser marketing of diamonds, other precious stones, lenses, glass and jewelry; machine
`
`parts, namely laser, lenses, camera, dop holder, frame grabber, tracking ball, stepper motor
`
`and linear shaft for sorting, cutting, bruting, centering, polishing, designing, appraising,
`
`analyzing and processing diamonds and other precious stones; computerized systems
`
`comprised of frame grabber, stepper motor sofiware driver device for stepper ‘motor, laser,
`
`safety alarm and input output device for laser marking of diamonds, other precious stones,
`
`lenses, glass and jewelry; computerized systems comprised of laser, lenses, camera, dop
`
`holders, frame-grabber, tracking ball, stepper motor software driver device for stepper motor
`
`and linear shaft for sorting, cutting, bruting centering, polishing, designing, appraising,
`
`measuring, weighing, analyzing and processing diamonds and other precious stones;
`
`apparatus and tools, namely lenses, camera, frame grabber, stepper motor controllers, drive
`
`device for stepper motor for use in science, research and optometry with regard to diamonds
`
`and other precious stones; computerized systems comprised of camera, cpu, frame-grabber,
`
`cad cam animation for building a three dimensional model for artificial sight,
`
`three dimensional, with contact or contactless; equipment, na.mely camera, lenses, frame
`
`grabber, lights, cpu, line laser died for structure light trigonolation (SLT), laser died for
`
`enscribing for data processing and computers", based on use the mark in commerce since
`
`July 31, 2001. This application was published on page 128 of the December 31, 2002 edition
`
`of the Qfltcigl Qazegte.
`
`Guy Cuy\PA\l029727J.l
`I 120625-900103
`
`2
`
`

`
`
`
`3. Opposer Logitcch is the owner of the following trademarks for which it has registrations
`
`before the U.S. Patent and Trademark Office:
`
`
`
`
`
`computer software and instruction
`manuals therefor sold as a unit,
`namely, computer programs for use in
`connection with image manipulation
`and desktop publishing; computer
`programs for producing speech;
`computer operating programs for
`image scanners; computer programs
`for optical character recognition;
`computer programs and database
`containing clip art; computer programs
`for use in computer graphics;
`computer audio equipment and
`instruction manuals therefor sold as a
`
`
`
`
`
`
`
`
`
`
`unit, namely synthesizers and speech
`
`recognition hardware; hand-held
`scanners and facsimile hardware
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Clmhingr namely. T-Skids, Shorts.
`pants, jackets. hats, sweatshirts, dress
`shirts, tics sweaters socks
`
`
`
`
`Number
`
`2507301
`
`LOGITECH &
`
`Design
`
`Re : istration
`November 13,
`
`2001
`
`
`
`LOGITECH &
`Design
`
`2170413
`
`June 30, 1998
`
`025
`
`4. The marks identified in Paragraph 2 above are hereinafter referred to collectively as the
`
`"Logitcch Marks.”
`
`5. Opposer LISA is the owner of the following trademarks, for which it has registrations andfor
`
`pending applications before the U.S. Patent and Trademark Office:
`
`Trademark
`
`LOGITECI-I
`
`Date ofA I ./R6.
`
`76I344,616 December 3,
`(status:
`publication
`3/18/03)
`
`
`
`Computer software and instruction manuals
`packaged as a unit therewith, namely, computer
`programs for use in connection with image
`manipulation and desktop publishing, computer
`programs for producing sound, computer
`programs for controlling images, computer
`programs for use in connection with image
`manipulation for digital cameras, computer
`programs for optical character recognition.
`computer programs to provide an interface
`between a personal computer or workstation
`and peripherals therefore and computer
`programs for use in computer graphics;
`computer programs, computer hardware and
`instruction manuals aclra ed as a unit
`
`Only CM'y\PA\l 0297273. I
`I l2D62S-900lO3
`
`3
`
`

`
`I
`
`I
`
`therewith, namely, microphones, headsets,
`headphones. multimedia speakers; computer
`hardware, computer programs and instruction
`manuals packaged as a unit therewith for use in
`connection with electronic transmission of
`video, audio and data across local area. wide
`area and global computer networks; computer
`peripherals and instruction manuals packaged
`as a unit therewith, namely joysticks, video
`game controllers, remote controls, keyboards,
`mice, traclrballs and digital cameras; telephony
`equipment, namely microphones, headsets and
`head hones
`
`computer peripherals and computer programs.
`
`namelyelectronicmice
`
`6. The marks identified in Paragraph 4 above are hereinafter referred to collectively as the
`
`“LISA Marks."
`
`7. Opposers have extensively advertised and marketed their goods and have created widespread
`
`goodwill under the Logitech Marks and the LISA Marks (collectively, “0pposers’ Marks”)
`
`throughout the United States. The Opposers’ Marks have become a valuable asset of
`
`Opposers and a principal symbol of their extensive goodwill. By reason ofwidespread use of
`
`the marks, the trade and purchasing public have come to recognize Opposers’ Marks as
`
`signifying Opposers and as identifying Opposers as the source of goods offered under
`
`0pposers' Marks.
`
`8. Opposer Logitech is also the registered owner ofthe domain name logjtecheom, which is an
`
`integral part of its business. Logitech uses Opposers‘ Marks extensively on its log1_'tech.com
`
`web site.
`
`9. Opposer Logitech has continuously used the trade name Logitech, Inc. and the mark
`
`LOGITECH since at least as early as 1982 to identify its goods, which use predates
`
`Applicant's filing date, specifically, October 25, 200l, for its Application Serial
`
`Guy Cory\PA\l 0291213.:
`I R0625-900 ma
`
`4
`
`

`
`No. 76/130,481, and which use predates the date on which Applicant claims to have first
`
`used its mark in commerce. specifically, July 31, 2001.
`
`10. Opposer LISA. through its predecessor, has continuously used the trade name Logitech
`
`International and the mark LOGITECH since at least as early as 1981 to identify its goods,
`
`which use predates Applicant's filing date, specifically, October 25, 2001, for its Application
`
`Serial No. 76/ 130,48 1, and which use predates the date on which Applicant claims to have
`
`first used its mark in commerce, specifically. July 31, 2001.
`
`11. The goods identified in Application Serial No. 76/330,138 and the goods offered by
`
`Opposers overlap andfor are closely related, and are of the type which could be offered in the
`
`same channels of trade and to the same prospective customers.
`
`12. If Application Serial No. 7683 0,138 is registered, the public will reasonably believe that
`
`Applicant's goods are goods provided by Opposers, all to the detriment of consumers and
`
`Opposers.
`
`13. Applicant's Proposed Mark is virtually identical to 0pposers' Marks and is confusingly
`
`similar to Opposers' Marks and is likely to be confused therewith. Such confusion, mistake,
`
`and deception regarding the origin of Applicant's goods is likely to cause irreparable harm to
`
`Opposers.
`
`l4. Applicant’s Proposed Mark dilutes the distinctive quality of 0pposers' famous Logitech
`
`Marks and LISA Marks, and is likely to cause irreparable harm to Opposers.
`
`15. In addition to any rights arising from the registrations and applications for Opposers’ Marks,
`
`Opposers have, with respect to their goods, valid common law rights in the trademarks as set
`
`forth above.
`
`Gray Cery\.PA\l0297213.l
`I l20625-900103
`
`5
`
`

`
`
`
`16. Appiicant’s proposed mark is in violation and derogation ofthose common law rights and is
`
`likely to cause confusion, mistake and deception among purchasers and users as to the source
`
`or origin of the goods, thereby causing loss, damage, and injury to Opposers and the public.
`
`17. If Applicant is granted the registration herein opposed, it would thereby obtain a prr'-mafacie
`
`exclusive right to its mark. Such registration would be a source of damage and injury to
`
`Opposers.
`
`WHEREFORE, Opposers pray that Application Serial No. 76/330,138 be rejected, that no
`
`registration be issued thereon, and that this Opposition be sustained in favor of Opposers.
`
`Please charge the filing fees of this Notice of Opposition to Deposit Acct. No. 07-1907. Please
`
`charge any additional fees, or credit any overpayment, to Deposit Acct. No. 07-1907. A
`
`duplicate of this Notice of Opposition is filed herewith.
`
`Dated: April 30, 2003
`
`CERTIFICATE 01-‘ EXPRESS MAILING
`
`Respectfully submitted,
`
`1 do hereby certify that this document is being deposited with
`the United States Postal Service as Express Mail on April 30,
`2003 in an envelope numbered EL8J2961375US addressed to:
`
`AssistantCommissionerforTrademarks
`
`F1900 CYYW“ WV‘
`AT tngton,
`
`Gray Cal‘)/I-PAll0297273.l
`I 120625-900103
`
`5
`
`gtaylor@gi_'ayca1y.ccm
`
`GRAY CARY WARE & FREIDENRICH LLP
`
`BY
`
`Aug?ayé
`
`‘
`
`Attorneys for Opposer
`Avenue
`Palo Alto, CA 94301-1833
`(415) 836-2170
`
`

`
`

`
`

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