§
`:
`‘i
`A HATS
`
`WRITER
`
`UNWEDSTATESDEPARTMENTOFCOMMERCE
`Patent and Trademark Office
`
`Trademark Trial and Appeal Board
`2900 Crystal Drive
`Arlington, Virginia" 22202-3513
`
`Mailed:
`
`February 12, 2004
`
`Cancellation No. 91156578
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`LOGITECH INTERNATIONAL S.A.
`AND
`
`LOGITECH,
`INC.
`
`V.
`
`’
`
`,
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`Ogitech Ltd.
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`LATRICIA HARRISON, LEGAL ASSISTANT:
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`'
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`o2-2o-2004
`u.s.Paunza.‘rMotc/1'MMauncptmm
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`The Board inadvertently forwarded the notice
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`instituting this proceeding and a copy of the petition to
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`cancel that was intended for registrant to an incorrect
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`address.
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`The error is regretted.
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`Accordingly,
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`the above notice, with enclosure,
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`is
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`remailed to registrant at
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`the correct address: YAIR ESTLINE,
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`292 MADISON AVENUE NEW YORK, NY
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`10017.
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`If there has been any transfer of interest in the
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`involved registration, registrant must so advise the Board
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`and registrant must submit copies of the appropriate
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`documents.
`
`See Section 10 of the Trademark Act and Patent
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`and Trademark Rules 3.71 and 3.73.
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`

`
`i
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`In view of the circumstances herein,
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`the time for
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`filing an answer to the petition to cancel is extended to
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`forty days from the mailing date of this order. Any
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`discovery requests or notices served that remain unanswered
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`as of the mailing date of this order must be reserved in
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`accordance with the rules, unless otherwise agreed to by
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`the parties.
`
`In accordance with the Trademark Rules of Practice,
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`discovery is open, and the close of discovery and testimony
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`dates are set as indicated below.
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`In each instance, a copy
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`of the transcript of testimony,
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`together with copies of
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`documentary exhibits, must be served on the adverse party
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`within thirty days after Completion of the taking of
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`testimony.
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`Trademark Rule 2.125.
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`Discovery period to close:
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`AUGUST 30, 2004
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`30-day testimony period for party
`in position of plaintiff to close:
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`NOVEMBER 28, 2004
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`30-day testimony period for party
`in position of defendant
`to close:
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`‘
`
`JANUARY 27, 2005
`
`15-day rebuttal testimony period to close:
`MARCH 13, 2005
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`Briefs shall be filed in accordance with Trademark
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`Rule l.l28(a) and (b).
`
`An oral hearing will be set only
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`upon request filed as provided by Trademark Rule 2.129.
`
`

`
`
`
`
`
`In the Matter of Application Serial No. 76/330,138
`Published in the Ofttcial Gazette on December 31, 2002
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`WYE
`
`Logitech International S.A.
`
`and
`
`.
`
`Logitech, Inc.
`
`V.
`
`Ogitech Ltd.
`
`Opposers,
`
`A 1‘
`pp ican
`
`
`t.
`
`‘
`
`NOTICE OF OPPOSITION
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`Opposer, Logitech International S.A., a Switzerland corporation, having its principal
`
`place of business at CH 1143 Apples, Switzerland (“LISA”) believes that it has been and/or will
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`be damaged by the registration of Application Serial No. 76/330,138 for OGITECH and hereby
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`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. 76/330,138 for OGITECH and hereby
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`opposes the same.
`
`LISA and Logitech (collectively, “Opposers") file this Notice of Opposition jointly under
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`TMBP Sec. 304. LISA is the parent company of Logitech and Logitech is a subsidiary of LISA.
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`As grounds for opposition, Opposers allege that:
`
`Gray Cary\PA\10297273. 1
`l 120625-900103
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`

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`
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`l. Opposer obtained two extensions of time to file a Notice of Opposition to the registration of
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`Applicant’s mark, up to and including April 30, 2003.
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`. According to the Trademark Office records, on or about October 25, 2001, Applicant
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`Ogitech Ltd. (“Applicant”) applied to register its trademark OGITECH (the “Proposed
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`Mark”) for “. . .machine parts, namely, camera, electric power supplies, laser diod and lenses
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`for laser marketing of diamonds, other precious stones, lenses, glass and jewelry; machine
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`parts, namely laser, lenses, camera, dop holder, frame grabber, tracking ball, stepper motor
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`and linear shafi for sorting, cutting, bruting, centering, polishing, designing, appraising,
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`analyzing and processing diamonds and other precious stones; computerized systems
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`comprised of frame grabber, stepper motor sofiware driver device for stepper motor, laser,
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`safety alarm and input output device for laser marking of diamonds, other precious stones,
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`lenses, glass and jewelry; computerized systems comprised of laser, lenses, camera, dop
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`holders, frame-grabber, tracking ball, stepper motor software driver device for stepper motor
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`and linear shaft for sorting, cutting, bruting centering, polishing, designing, appraising,
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`measuring, weighing, analyzing and processing diamonds and other precious stones;
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`apparatus and tools, namely lenses, camera, frame grabber, stepper motor controllers, drive
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`device for stepper motor for use in science, research and optometry with regard to diamonds
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`and other precious stones; computerized systems comprised of camera, cpu, frame-grabber,
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`cad cam animation for building a three dimensional model for artificial sight,
`
`three dimensional, with contact or contactless; equipment, namely camera, lenses, frame
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`grabber, lights, cpu, line laser diod for structure light trigonolation (SLT), laser diod for
`
`enscribing for data processing and computers”, based on use the mark in commerce since
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`July 31, 2001. This application was published on page 128 ofthe December 31, 2002 edition
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`of the O(['icial Gazette.
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`Gray Cary\PA\l0297273.l
`I l20625—90OIO3
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`2
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`3. Opposer Logitech is the owner of the following trademarks for which it has registrations
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`before the U.S. Patent and Trademark Office:
`
`Trademark
`
`Number
`
`
`
`Date of
`Re istration
`
`computer software and instruction
`LOGITECH &
`November 13,
`2507301
`manuals therefor sold as a unit,
`Design
`2001
`
`
`
`namely, computer programs for use in
`connection with image manipulation
`and desktop publishing; computer
`programs for producing speech;
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`computer operating programs for
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`image scanners; computer programs
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`for optical character recognition;
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`computer programs and database
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`containing clip art; computer programs
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`for use in computer graphics;
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`computer audio equipment and
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`instruction manuals therefor sold as a
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`unit, namely synthesizers and speech
`recognition hardware; hand—held
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`scanners and facsimile hardware
`Clothing; Hamel)’. T-Shirts, Shorts,
`pants, jackets, hats, sweatshirts, dress
`shirts, ties, sweaters, socks
`
`
`
`
`
`
`
`
`
`
`
`
`
`LOGITECH &
`Design
`
`
`
`217041 3
`
`June 3 0, 1998
`
`025
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`4. The marks identified in Paragraph 2 above are hereinafter referred to collectively as the
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`“Logitech Marks.;’
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`5. Opposer LISA is the owner of the following trademarks, for which it has registrations and/or
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`pending applications before the U.S. Patent and Trademark Office:
`
`Trademark
`
`
`Number
`Date of
`
`Class Goods
`
`A 0 ./Reg.
`Computer software and instruction manuals
`LOGITECH 76/344,616 December 3,
`packaged as a unit therewith, namely, computer
`(Status:
`
`programs for use in- connectioniwith image
`publication
`
`manipulation and desktop publishing, computer
`
`programs for producing sound, computer
`3/18/03)
`programs for controlling images, computer
`
`programs for use in connection with image
`
`manipulation for digital cameras, computer
`programs for optical character recognition,
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`computer programs to provide an interface
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`between a personal computer or workstation
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`and peripherals therefore and computer
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`programs for use in computer graphics;
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`computer programs, computer hardware and
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`instruction manuals acka ed as a unit
`
`
`
`
`
`
`
`
`
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`1120625-900103
`Gray Cary\PA\10297273.l
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`3
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`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, namelyjoysticks, video
`game controllers, remote controls, keyboards,
`mice, trackballs and digital cameras; telephony
`equipment, namely microphones, headsets and
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`head bones
`
`
`
`
`
`
`
`
`
`
`April23, 1996 w
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`computer peripherals and computer programs,
`namely electronic mice
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`
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`LOGITECH 1969025
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`6. The marks identified in Paragraph 4 above are hereinafter referred to collectively as the
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`“LISA Marks.”
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`7. Opposers have extensively advertised and marketed their goods and have created widespread
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`goodwill under the Logitech Marks and the LISA Marks (C-ollectively, “Opposers’ Marks”)
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`throughout the United States. The Opposers’ Marks have become a valuable asset of
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`Opposers and a principal symbol of their extensive goodwill. By reason of widespread use of
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`the marks, the trade and purchasing public have come to recognize Opposers’ Marks as
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`signifying Opposers and as identifying Opposers as the source of goods offered under
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`Opposers’ Marks.
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`8. Opposer Logitech is also the registered owner of the domain name logitech.com, which is an
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`integral part of its business. Logitech uses Opposers’ Marks extensively on its 1ogitech.com
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`web site.
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`9. Opposer Logitech has continuously used the trade name Logitech, Inc. and the mark
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`LOGITECH since at least as early as 1982 to identify its goods, which use predates
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`Applicant’s filing date, specifically, October 25, 2001, for its Application Serial
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`Gray Cary\PA\l 0297273.]
`1120625-900103
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`4
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`
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`No. 76/130,481, and which use predates the date on which Applicant claims to have first
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`used its mark in commerce, specifically, July 31, 2001.
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`10.
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`Opposer LISA, through its predecessor, has continuously used the trade name Logitech
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`International and the mark LOGITECH since at least as early as 1981 to identify its goods,
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`which use predates Applicant’s filing date, specifically, October 25, 2001,, for its Application
`Serial No. 76/ 130,481, and which use predates the date on which Applicant claims to have
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`first used its mark in commerce, specifically, July 31, 2001.
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`The goods identified in Application Serial No. 76/330,138 and the goods offered by
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`Opposers overlap and/or are closely related, and are of the type which could be offered in the
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`same channels of trade and to the same prospective customers.
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`If Application Serial No. 76/330,138 is registered, the public will reasonably believe that
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`Applicant's goods are goods provided by Opposers, all to the detriment of consumers and
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`Opposers.
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`Applicant's Proposed Mark is virtually identical to Opposers’ Marks and is confusingly
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`similar to Opposers’ Marks and is likely to be confused therewith. Such confusion, mistake,
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`and deception regarding the origin of Applicant's goods is likely to cause irreparable harm to
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`Opposers.
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`Applicant’s Proposed Mark dilutes the distinctive quality of Opposers’ famous Logitech
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`Marks and LISA Marks, and is likely to cause irreparable harm to Opposers.
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`In addition to any rights arising from the registrations and applications for Opposers’ Marks,
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`Opposers have, with respect to their goods, valid common law rights in the trademarks as set
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`ll.
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`12.
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`13.
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`14.
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`15.
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`forth above.
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`Gray Cary\PA\l0297273.l
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`16. Applicant’s proposed mark is in violation and derogation of those common law rights and is
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`likely to cause confusion, mistake and deception among purchasers and users as to the source
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`or origin of the goods, thereby causing loss, damage, and injury to Opposers and the public.
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`17. If Applicant is granted the registration herein opposed, it would thereby obtain a primafacie
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`exclusive right to its mark.‘ Such registration would be a source of damage and injury to
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`Opposers.
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`WHEREFORE, Opposers pray that Application Serial No. 76/330,] 38 be rejected, that no
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`registration be issued thereon, and that this Opposition be sustained in favor of Opposers.
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`Please charge the filing fees of this Notice of Opposition to Deposit Acct. No. 07-1907. Please
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`charge any additional fees, or credit any overpayment, to Deposit Acct. No. 07-1907. A
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`duplicate of this Notice of Opposition is filed herewith.
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`Dated: April 30, 2003 '
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`CERTIFICATE OF EXPRESS MAILING
`
`I 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 EL832967375US addressed to:
`Assistant Commissioner for Trademarks
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`
`
`Respectfully submitted,
`
`GRAY CARY WARE & FREIDENRICH LLP
`
`By_
`
`T
`3)’
`An
`Attorneys for Opposer
`400 Hamilton Avenue
`
`Palo Alto, CA 94301-1833
`(415) 836-2170
`ata lor
`ra ca
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`l 120625-9001 O3
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