Trademark Trial and Appeal Board Electronic Filing System. 39145
`
`ESTTA Tracking number: ESTTA11430
`
`Filing d9-t33
`
`07/09/2004
`
`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
`
`Creative Technology, Ltd
`
`Granted to
`
`D3“?
`of previous
`extension
`
`Address
`
`07/1 1/2004
`
`Creative Technology, Ltd
`31 International Business Park Creative Resource
`
`Singapore, 609921
`SINGAPORE
`
`Gretchen R. Stroud
`
`Cooley Godward LLP
`
`Attorney
`information
`
`Five Palo Alto Square 3000 El Camino Real
`Palo Alto, CA 94306-2155
`UNITED STATES
`
`trademarks@cooley.com Phone:(650) 843-5000
`
`Applicant Information
`
`Application No 76196971
`
`P“b::;‘i°“
`
`ioi/13/2004
`
`Opposition
`Filing Date
`
`07/09/2004
`
`Opposition
`Period Ends
`
`§
`107/11/2004
`
`
`
`ESTTA Tracking number: ESTTA11430
`
`Filing d9-t33
`
`07/09/2004
`
`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
`
`Creative Technology, Ltd
`
`Granted to
`
`D3“?
`of previous
`extension
`
`Address
`
`07/1 1/2004
`
`Creative Technology, Ltd
`31 International Business Park Creative Resource
`
`Singapore, 609921
`SINGAPORE
`
`Gretchen R. Stroud
`
`Cooley Godward LLP
`
`Attorney
`information
`
`Five Palo Alto Square 3000 El Camino Real
`Palo Alto, CA 94306-2155
`UNITED STATES
`
`trademarks@cooley.com Phone:(650) 843-5000
`
`Applicant Information
`
`Application No 76196971
`
`P“b::;‘i°“
`
`ioi/13/2004
`
`Opposition
`Filing Date
`
`07/09/2004
`
`Opposition
`Period Ends
`
`§
`107/11/2004
`
`
`
`Goods! Services Affected by Opposition
`
`Class 009. First Use: First Use In Commerce:
`
`All goods and sevices in the class are opposed, namely: AUDIO AND VIDEO
`EQUIPMENT, NAMELY, AMPLIFIERS, LOUDSPEAKERS, CROSSOVER
`FILTERS, TWEETERS, SUB WOOFER BOXES, CABLES, FUSES, TFT LCD
`
`SCREENS, CAPACITORS, MULTIMEDIA LOUD SPEAKER BOXES,
`
`MULTIMEDIA HEADSETS, MULTIMEDIA MICROPHONES, AND ALL KINDS OF
`
`GOLD ACCESSORIES, NAMELY, DISTRIBUTION BLOCKS, BATTERY
`
`CONNECTORS, FUSES, CONNECTOR BLOCKS, TERMINAL COVERS AND LINE
`
`COUPLERS; SOFTWARE FOR USE IN CONNECTION WITH AUDIO APPARATUS
`
`TO CONTROL SOUND, VOLUME AND QUALITY
`
`Attachments
`
`Zennex Opposition.pdf ( 10 pages )
`
`Signature
`
`/Gretchen R. Stroud/
`
`Name
`
`Gretchen R. Stroud
`
`Date
`
`07f09/2004
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of application Serial No. 76/196,971
`For the Trademark U.S. BLASTER
`
`Published in the Official Gazette on January 13, 2004
`
`CREATIVE TECHNOLOGY LTD.,
`
`Opposer,
`
`V.
`
`ZENNEX B.V.,
`
`Applicant.
`
`g/\./g/\./g/\./g/\./g/\J
`
`Opposition No.
`
`NOTICE OF OPPOSITION
`
`Opposer Creative Technology Ltd.
`
`(“Creative”), a Singapore corporation having its
`
`principal place of business at 31 International Business Park, Creative Resource, Singapore
`
`609921, Republic of Singapore, and owner of a family of BLASTER marks including the famous
`
`SOUND BLASTER® mark, will be damaged by the issuance of a registration for the mark U.S.
`
`BLASTER (the “Applicant’s Mark”), as applied for in Application Serial No. 76/ 196,971 filed
`
`on January 19, 2001 by Applicant Zennex B.V. (“Applicant”). Creative, having previously been
`
`granted an extension of time to oppose Applicant’s Mark, hereby opposes the same.
`
`As grounds for opposition, Creative alleges:
`
`1.
`
`Creative, founded in 1981,
`
`is a leader in the development, marketing, and
`
`distribution of digital entertainment products for use with personal computers, and is well known
`
`682151 v1/PA
`#MCN01!.DOC
`
`
`
`Notice of Opposition Against Serial No. 76/196,971
`Published January 13, 2004
`
`for its award—winning SOUND BLASTER® line of sound cards. Creative sells and markets its
`
`products and provides support to its customers in North and South America through its wholly-
`
`owned subsidiary, Creative Labs, Inc., a California corporation.
`
`2.
`
`Creative develops, manufactures, markets, advertises, distributes, and sells a line
`
`of products known as the SOUND BLASTER® sound card. A sound card is a device that
`
`permits a PC to receive and transmit sound, including voices and music. Consumers purchase
`
`sound cards to improve the sound quality generated by their computers. Creative’s SOUND
`
`BLASTER® sound cards are renowned for the premium quality of sound that they produce.
`
`Creative and its subsidiaries have sold more than 150 million SOUND BLASTER® units
`
`worldwide since their introduction in 1989, and a large majority of all PC audio systems have
`
`been built on the technology incorporated in Creative’ s SOUND BLASTER® platform.
`
`3.
`
`In addition to its SOUND BLASTER® line of sound cards, Creative’s
`
`BLASTER® family of products includes other consumer devices related to audio equipment,
`
`loudspeakers, graphics cards, DVD, computer telephony integration, communications, and
`
`videoconferencing computer hardware, as well as a number of accompanying software products.
`
`4.
`
`Creative has expended considerable effort and expense in advertising and
`
`promoting its SOUND BLASTER® marks and BLASTER—based marks and the goods and
`
`services provided in connection with each both in the United States and internationally, with the
`
`result that the public has come to know, rely on, and recognize Creative’s goods and services by
`
`such marks. By virtue of its efforts and expenditures and by virtue of the excellence of its goods
`
`and services, Creative has gained for its SOUND BLASTER® marks and BLASTER—based
`
`marks an exceedingly valuable reputation and a substantial amount of goodwill.
`
`682151 v1/PA
`#MCN01 1. DOC2
`
`
`
`Notice of Opposition Against Serial No. 76/196,971
`Published January 13, 2004
`
`5.
`
`Creative owns numerous federal
`
`registrations which incorporate the mark
`
`BLASTER, including the following:
`
`a.
`
`Incontestable Registration No. 1,977,549 for BLASTER in connection
`
`with “computer software and computer hardware for analog and digital video display and
`
`combining text, video, audio and graphics on computers, and user manual therefore sold as a
`
`unit” in Class 9;
`
`b.
`
`Incontestable Registration No. 2,030,886 for 3D BLASTER in connection
`
`with “computer hardware, namely add—on circuit board for personal computers” in Class 9;
`
`c.
`
`Incontestable Registration No. 1,921,569 for
`
`in
`
`BLASTER
`
`connection with “computer hardware, computer peripherals and computer programs for the
`
`integration of text, data, audio graphics, still images, animation and moving pictures into a
`
`computer controlled interactive audio visual delivery and instruction manual therefor” in Class 9;
`
`d.
`
`Registration No. 2,492,865 for BLASTER PC in connection with
`
`“computer hardware, computer peripherals, and computer software to enhance the audio—visual
`
`capabilities of multimedia applications, namely for the integration of text, audio, graphics, still
`
`images and moving pictures into a computer—controlled and interactive audio—visual delivery for
`
`use with a personal computer for multimedia applications and manuals sold as a unit” in Class 9;
`
`e.
`
`Registration No. 2,474,443 for
`
`in connection with
`
`“computer hardware, computer peripherals, and computer software to enhance the audio—visual
`
`capabilities of multimedia applications, namely for the integration of text, audio, graphics, still
`
`682151 v1/PA
`#MCN01 1. DOC3
`
`
`
`Notice of Opposition Against Serial No. 76/196,971
`Published January 13, 2004
`
`images and moving pictures into a computer—controlled and interactive audio—visual delivery for
`
`use with a personal computer for multimedia applications and manuals sold as a unit” in Class 9;
`
`f.
`
`Registration No. 2,164,371 for BLASTERCD—R in connection with
`
`“computer hardware; peripherals for computers, namely, CD—ROM drives and recordable units
`
`for compact disks; computer software for pre—mastering and recording” in Class 9;
`
`g.
`
`Registration No. 2,446,645 for BLASTERKEY in connection with
`
`“computer hardware, computer peripherals, computer operating programs, computer software for
`
`electronic keyboard instruction and for controlling electronic keyboards” in class 9; “electronic
`
`musical instruments, namely, midi (musical instruments digital interface) keyboards” in class 15;
`
`h.
`
`Incontestable Registration No. 2,109,394 for BLASTERWARE in
`
`connection with “prerecorded CD—ROM software featuring interactive and non—interactive
`
`information and images containing sing along music and songs (karaoke), documentaries,
`
`cartoons, art, history and literature for use with a personal computer having sound generation
`
`capabilities” in class 9; “computer game software” in class 28;
`
`i.
`
`Registration No. 2,044,054 for GAME BLASTER in connection with “add
`
`on 16 bit stereo sound card, internal CD—ROM drive, stereo speakers and joystick sold in kit
`
`form with computer game software and utility software for rendering sound mixing, wave
`
`editing, object linking and embedding, speech recognition and recording and text—to—speech” in
`
`class 9;
`
`j.
`
`Incontestable Registration No. 2,151,194 for GRAPHICS BLASTER in
`
`4‘
`
`connection with
`
`computer hardware and peripherals for personal computers; computer
`
`programs to enhance the performance of multimedia video and graphics displays” in class 9;
`
`682151 v1/PA
`#MCN01 1. DOC4
`
`
`
`Notice of Opposition Against Serial No. 76/196,971
`Published January 13, 2004
`
`k.
`
`Incontestable Registration No. 2,109,425 for MODEM BLASTER in
`
`connection with “computer hardware for data communication via telephone line; computer
`
`operating software; computer application software for data communication, namely,
`
`for
`
`operating fax machines, for connecting computers to telephone lines, for switching and routing
`
`telecommunication signals, for accessing service providers, and for accessing global computer
`
`communications networks” in class 9;
`
`l.
`
`Incontestable Registration No. 1,862,271 for SOUND BLASTER in
`
`connection with “circuit board which produces sound for computers” in class 9;
`
`m.
`
`Incontestable Registration No. 1,837,760 for
`
`in connection
`
`with “Computer circuit boards and computer programs for use in producing sound on computers,
`
`and user manuals therefor sold as a unit” in Class 9;
`
`n.
`
`Registration No. 2,159,787 for SOUND BLASTER EDUTAINMENT CD
`
`in connection with “computer hardware, computer peripherals, and computer software for the
`
`integration of text, audio, graphics, still image and moving pictures into a computer—controlled
`
`and interactive audio—visual delivery, and user reference manual therefore sold as a unit” in Class
`
`9;
`
`o.
`
`Registration No. 2,409,066 for
`
`
`
`in connection with
`
`“computer hardware, computer peripherals, and computer software to enhance the audio—visual
`
`capabilities of multimedia applications, namely, for the integration of text, audio, graphics, still
`
`682151 v1/PA
`#MCN01 1. DOC5
`
`
`
`Notice of Opposition Against Serial No. 76/196,971
`Published January 13, 2004
`
`images and moving pictures into a computer—controlled and interactive audio—visual delivery for
`
`use with a personal computer for multimedia applications and manuals sold as a unit” in class 9;
`
`p.
`
`Registration No. 2,093,471 for SOUND BLASTER PERFORMANCE in
`
`connection with “computer hardware; computer peripherals; personal computer operating
`
`programs; and personal computer software for the integration of audio graphics, still images, and
`
`moving pictures into a computer controlled audio visual delivery” in class 9;
`
`q.
`
`Incontestable Registration No. 1,989,377 for VIDEO BLASTER in
`
`connection with “Computer hardware and computer operating software programs; and computer
`
`application software programs for creating multimedia presentations that synchronize audio
`
`output with video and graphics displayed on a computer digital video display; and user reference
`
`manual therefor sold as a unit” in class 9;
`
`Vi cl e 0
`
`r.
`
`Incontestable Registration No. 2,074,104 for
`
`in connection
`
`with “computer hardware and computer operating software programs; and computer application
`
`software programs for creating multimedia presentations that synchronize audio output with
`
`video and graphics displayed on a computer digital video display; and user reference manual
`
`therefor sold as a unit” in class 9;
`
`s.
`
`Registration No. 2,732,841 for SOUND BLASTER AUDIGY in
`
`connection with “computer hardware, computer software programs and computer hardware
`
`connectivity devices relating to audio production, re—production and enhancement for use with
`
`personal computers for multimedia applications or as a standalone device, and also relating to
`
`682151 v1/PA
`#MCN01 1. DOC6
`
`
`
`Notice of Opposition Against Serial No. 76/196,971
`Published January 13, 2004
`
`internet and networking connectivity; computer peripherals, consumer electronic device used for
`
`audio production, re—production and/or processing” in class 9;
`
`t.
`
`Registration No. 2,802,485 for
`
`T7'L.flSTER*Safari
`
`in connection with
`
`“Computer hardware; computer peripherals;
`
`loudspeakers; amplifiers; computer
`
`software
`
`relating to audio production, reproduction, processing and enhancement, and internet and
`
`networking
`
`connectivity; microprocessors;
`
`integrated
`
`circuits;
`
`digital
`
`audio
`
`players;
`
`reverberators; equalizers; manuals distributed therewith” in class 9;
`
`
`
`'
`
`:
`
`'3L45TE13___f_
`
`u.
`
`Registration No. 2,840,210 for
`
`I
`
`(color) in connection with
`
`“Computer hardware; computer peripherals;
`
`loudspeakers; amplifiers; computer
`
`software
`
`relating to audio production, reproduction, processing and enhancement, and internet and
`
`networking
`
`connectivity; microprocessors;
`
`integrated
`
`circuits;
`
`digital
`
`audio
`
`players;
`
`reverberators; equalizers; manuals distributed therewith” in class 9.
`
`6.
`
`Creative currently has other pending applications for registration in the United
`
`States of marks consisting of or featuring the mark BLASTER, namely the following:
`
`a.
`
`Application No. 76/390,265 for NETWORK BLASTER in connection
`
`with “computer hardware;
`
`computer peripherals; modems;
`
`computer
`
`interface
`
`cables;
`
`microprocessors;
`
`telecommunications equipment namely,
`
`routers, switches, splitters, hubs,
`
`encoders, adapters, media converters, transceivers, repeaters, cables, connectors and integrated
`
`circuits; computer software for the transmission, distribution, manipulation and retrieval of data,
`
`682151 v1/PA
`#MCN01 1. DOC7
`
`
`
`Notice of Opposition Against Serial No. 76/196,971
`Published January 13, 2004
`
`images, video, and sound over computer networks; computer software for connecting, managing
`
`and operating computer networks; computer software for wireless network communications;
`
`computer operating system software; computer software for remote access and confirguration of
`
`computer hardware, peripherals and telecommunications equipment and instructional manuals
`
`distributed therewith” in class 9; and
`
`b.
`
`Application Serial No. 78/181,026 for
`
`the mark BROADBAND
`
`BLASTER in connection with “computer hardware; computer peripherals; modems; computer
`
`interface cables; microprocessors;
`
`telecommunications equipment namely,
`
`routers, bridges,
`
`switches, splitters, hubs, encoders, adapters, media converters, transceivers, repeaters, cables,
`
`connectors and integrated circuits; computer software for
`
`the transmission, distribution,
`
`manipulation and retrieval of data, images, video, and sound over computer networks; computer
`
`software for connecting, managing and operating computer networks; computer software for
`
`wireless network communications; computer operating system software; computer software for
`
`providing single computer or computer network security and protection from unauthorized
`
`electronic intrusion; computer software for remote access and configuration of computer
`
`hardware and instructional manuals distributed therewit ” in Class 9.
`
`7.
`
`Creative currently has numerous other registrations and pending and allowed
`
`applications for registration throughout the world for other marks consisting of or featuring the
`
`mark BLASTER.
`
`8.
`
`Upon information and belief, Creative alleges that Applicant filed an application
`
`to register the mark U.S. BLASTER on January 19, 2001 under section 44(e) on the basis of a
`
`Benelux trademark registration. Applicant seeks registration of Applicant’s mark in connection
`
`682151 v1/PA
`#MCN01 1. DoC8
`
`
`
`Notice of Opposition Against Serial No. 76/196,971
`Published January 13, 2004
`
`with “audio and video equipment, namely, amplifiers, loudspeakers, crossover filters, tweeters,
`
`sub woofer boxes, cables, fuses, TFT LCD screens, capacitors, multimedia loud speaker boxes,
`
`multimedia headsets, multimedia microphones, and all kinds of gold accessories, namely,
`
`distribution blocks, battery connectors,
`
`fuses, connector blocks,
`
`terminal covers and line
`
`couplers; software for use in connection with audio apparatus to control sound, volume and
`
`quality.”
`
`9.
`
`There is no issue of priority of use. Upon information and belief, Applicant filed
`
`its application for Applicant’s Mark more than eleven years after Creative first used its
`
`BLASTER marks in interstate commerce.
`
`10.
`
`Applicant’s Mark is likely to be confused with and mistaken for Creative’s
`
`BLASTER marks and BLASTER—based marks because, among other reasons, Applicant’s Mark
`
`contains the word BLASTER as does Creative’s BLASTER and BLASTER—based marks.
`
`Applicant’s Mark is also used on computer software products related to the control of sound,
`
`volume and quality, as well as related audio and video equipment, as does the computer
`
`hardware, loudspeakers and software sold by Creative in connection with the BLASTER and
`
`BLASTER—based marks and is therefore confusingly similar to Creative’s BLASTER and
`
`BLASTER—based marks.
`
`11.
`
`If Applicant is permitted to register Applicant’s Mark for the goods specified in
`
`the Application herein opposed, continued confusion resulting in damage and injury to Creative
`
`would occur. Persons familiar with Creative’s marks would be likely to perceive Applicant’s
`
`goods as associated or affiliated with or sponsored by Creative. Such confusion inevitably
`
`would result in damage to Creative.
`
`682151 v1/PA
`#MCN01 1. DOC9
`
`
`
`Notice of Opposition Against Serial No. 76/196,971
`Published January 13, 2004
`
`12.
`
`Registration of Applicant’s Mark would give Applicant prima facie evidence of
`
`the validity and ownership of Applicant’s Mark and of Applicant’s exclusive right to use
`
`Applicant’s Mark, all to the detriment of Creative.
`
`13. Wherefore, Creative prays that this Opposition be sustained and that Application
`
`Serial No. 76/ 196,971 be denied and refused..
`
`682151 v1/PA
`#MCN01!. DoC10
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