Cooley Godward LLP
`
`April 20, 2005
`
`Commissioner for Trademarks
`
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Broomfield, CO
`720 566-4000
`
`Reston, VA
`703 456-8000
`
`San Diego, CA
`858 550-6000
`
`San Francisco, CA
`415 693-2000
`
`ATTORNEYS AT LAW
`
`Five Palo Alto Square
`3000 El Camino Real
`Palo Alto, CA
`94306-2155
`Main
`650 843-5000
`Fax
`650 857-0663
`
`www. cooley.com
`BRITT L. ANDERSON
`
`(650) 843-5535
`banderson@cooley.com
`
`Re:
`
`Notice of Opposition to App]. No. 78/379,001 (INNOVIDIA)
`
`Dear Sir/Madam:
`
`Enclosed please find, in triplicate form, a Notice of Opposition (with Exhibits 1-13) by NVIDIA
`Corporation regarding Application Serial Number 78/379,001 for the mark INNOVIDIA.
`
`Please charge Deposit Account No. 03-3118 in the amount of $300.00 which represents payment
`of the filing fee associated with this opposition. A duplicate copy of this letter as authorization is
`attached hereto for your convenience.
`
`Very truly yours,
`
`Cooley Godward LLP
`
`ea/V
`
`Britt L. Anderson
`
`BLA/cd
`
`Enclosure
`
`702507 vl/PA
`04/20/05 4:36 PM
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`ll
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`04-25-2005
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`US. Patent & TM01'c/TM Mail ficpt D1, #54
`
`

`
`
`
`Cooley Godward ELP
`
`April 20, 2005
`
`Commissioner for Trademarks
`
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Broomfield, CO
`720 566-4000
`
`Reston, VA
`703 456-8000
`
`San Diego, CA
`858 550-6000
`
`San Francisco, CA
`415 693-2000
`
`ATTORNEYS AT LAW
`
`Five Palo Alto Square
`3000 El Camino Real
`Palo Alto, CA
`94306-2155
`Main
`650 843-5000
`Fax
`650 857-0663
`
`www. cooley.com
`BRITT L. ANDERSON
`(650) 843-5535
`banderson@cooley.com
`
`Re:
`
`Notice of Opposition to App]. No. 78/379,000 (INNOVIDIA)
`
`Dear Sir/Madam:
`
`Enclosed please find, in triplicate form, a Notice of Opposition (with Exhibits 1-13) by NVIDIA
`Corporation regarding Application Serial Number 78/379,000 for the mark INNOVIDIA.
`
`Please charge Deposit Account No. 03-3118 in the amount of $300.00 which represents payment
`of the filing fee associated with this opposition. A duplicate copy of this letter as authorization is
`attached hereto for your convenience.
`
`Very truly yours,
`
`Cooley Godward LLP
`
`Britt L. Anderson
`
`BLA/cd
`
`Enclosure
`
`702506 vl/PA
`
`

`
`
`
`Certificate of Mailing
`
`I hereby certify that this correspondence is being deposited with the United
`States Postal Service as First Class Mail, postage prepaid in an envelope
`addressed to: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA
`22313-1451.
`
`
`
`
`
`M
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`jg
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`1/ « «>2&’' 05’
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`
`
`
`
`(Name)
`(Date)
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application Serial No. 78/379,001
`For the trademark INNOVIDIA
`
`Published in the Official Gazette at TM 577 on December 21, 2004
`
`Opposition No.
`
`)
`
`) )
`
`) )
`
`) )
`
`) )
`
`NVIDIA CORPORATION
`
`Opposer,
`
`V.
`
`INNOVIDIA, INC.
`
`)
`Applicant.
`_____j__:______)
`
`NOTICE OF OPPOSITION
`
`Opposer NVIDIA Corporation (“NVIDIA”), a Delaware corporation having its principal
`
`place of business at 2701 San Tomas Expressway, Santa Clara, California 95050, believes that it
`
`will be damaged by registration of the mark INNOVIDIA, as applied for in Application Serial
`
`No. 78/379,001, filed on March 4, 2004 by Innovidia, Inc. (“Applicant”) and, having been
`
`granted an extension of time to oppose until April 20, 2005, NVIDLA hereby opposes the same.
`
`As grounds for opposition, NVIDIA alleges:
`
`o4/as/zoos zcurnn oooooooe oaam 70379001
`01 rcmoe
`3oo,oo M
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`702314 v1/PA
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`l
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`

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`
`
`NVIDIA Corporation v. Innovidia, Inc.
`Serial No. 78/379,001
`
`Notice of Opposition
`
`1.
`
`NVIDIA, founded in 1993, is a worldwide leader in the design and development
`
`of advanced computer graphics hardware, software and related services.
`
`2.
`
`NVIDIA’s product
`
`line enhances three-dimensional,
`
`two—dimensiona1, video,
`
`audio, communications, broadband connectivity, and high-definition digital video and television
`
`for every audience and platform including desktop personal computers, game consoles,
`
`workstations, Intemet-enabled appliances, Macintosh, and mobile personal computers.
`
`3.
`
`Since at least as early as February 1993 and since well prior to Applicant’s March
`
`4, 2004 intent-to-use application filing date, NVIDIA has continuously used, and is now using,
`
`the trade name, trademark and service mark NVIDIA (the “NVIDIA Name and Mar ”) in the
`
`United States in connection with its goods and services.
`
`In addition, NVIDIA has actively used
`
`other marks featuring its NVIDIA Name and Mark, such as NVIDIA & Design, NVIDIA
`
`NFORCE, NVIDIA PERSONAL CINEMA, NVIDIA QUADRO, NVIDIA SOUNDSTORM,
`
`NVIDIA THE WAY IT’S MEANT TO BE PLAYED & Design, NVIDIA VANTA, NVIDIA
`
`PUREVIDEO, NVIDIA SLI, NVIDIA SL1 Badge, NVIDIA SLI READY and NVIDIA SL1
`
`READY Badge, (collectively, the “NVIDIA-based Marks”), to identify and promote its goods
`
`and services.
`
`4.
`
`NVIDIA has expended considerable effort and expense in advertising and
`
`promoting its NVIDIA Name and Mark and NVIDIA-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 NVIDIA’s goods and services by such
`
`marks.
`
`In the past five years alone, NVIDIA has spent tens of millions of dollars in advertising
`
`and promotion of its products and services.
`
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`

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`
`
`NVIDIA Corporation v. Innovidia, Inc.
`Serial No. 78/379,001
`
`Notice of Opposition
`
`5.
`
`As a result of NVIDLA’s continuous use of, and substantial investment in, the
`
`NVIDIA Name and Mark and NVIDIA-based Marks, the public has come to know, rely on and
`
`associate the NVIDIA Name and Mark and NVIDLA-based Marks with NVIDIA and its goods
`
`and services. By virtue of its activities and expenditures and by virtue of the excellence of its
`
`goods and services, NVIDIA has gained for its NVIDIA Name and Mark and NVIDIA-based
`
`Marks an exceedingly valuable reputation and substantial goodwill.
`
`6.
`
`On May 23, 1995, the United States Patent and Trademark Office (the “PTO”)
`
`issued to NVIDIA a registration for the mark NVIDIA (Reg. No. 1,895,559) for “integrated
`
`circuits” in International Class 9. This registration is incontestable, valid and subsisting,
`
`unrevoked and uncancelled, and provides conclusive evidence of NVIDIA’s exclusive right to
`
`use its mark with the goods specified in the registration. A true and correct copy of the
`
`certificate of registration is attached as Exhibit 1.
`
`7.
`
`On April 11, 2000,
`
`the PTO issued to NVIDIA a registration for the mark
`
`NVIDIA & Design (Reg. No. 2,341,815) for “integrated circuits; integrated circuit components
`
`for graphics and video systems, namely, multimedia accelerators, graphic accelerators and
`
`peripheral units; and computer software for operating and managing the said integrated circuit
`
`components” in International Class 9. This registration is valid and subsisting, unrevoked and
`
`uncancelled, and provides primafacie evidence of NVIDIA’s exclusive right to use its mark with
`
`the goods specified in the registration. A true and correct copy of the certificate of registration is
`
`attached as Exhibit 2.
`
`8.
`
`On April 11, 2000,
`
`the PTO issued to NVIDIA a registration for the mark
`
`NVIDIA (Reg. No. 2,341,814) for “integrated circuit components for graphics and video
`
`systems, namely, multimedia accelerators, graphic accelerators and peripheral units; and
`
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`3
`
`

`
`NVIDIA Corporation v. Innovidia, Inc.
`Serial No. 78/379,001
`
`Notice of Opposition
`
`computer software for operating and managing the said integrated circuit components” in
`
`International Class 9. This registration is valid and subsisting, unrevoked and uncancelled, and
`
`provides prima facie evidence of NVlDIA’s exclusive right to use its mark with the goods
`
`specified in the registration. A true and correct copy of the certificate of registration is attached
`
`as Exhibit 3.
`
`9.
`
`On August 22, 2000, the PTO issued to NVIDIA a registration for the mark
`
`NVIDIA (Reg. No. 2,379,910) for “design of computer hardware, software and peripherals for
`
`others” in International Class 42. This registration is valid and subsisting, unrevoked and
`
`uncancelled, and provides primafacie evidence of NVlDIA’s exclusive right to use its mark with
`
`the services specified in the registration. A true and correct copy of the certificate of registration
`
`is attached as Exhibit 4.
`
`10.
`
`On September 12, 2000, the PTO issued to NVIDIA a registration for the mark
`
`NVIDIA & Design (Reg. No. 2,386,115) for “design of computer hardware, software, and
`
`peripherals for others” in International Class 42. This registration is valid and subsisting,
`
`unrevoked and uncancelled, and provides prima facie evidence of NVIDIA’s exclusive right to
`
`use its mark with the services specified in the registration. A true and correct copy of the
`
`certificate of registration is attached as Exhibit 5.
`
`11.
`
`On June 19, 2001, the PTO issued to NVIDIA a registration for the mark NVIDIA
`
`QUADRO (Reg. No. 2,461,368) for “integrated circuits,
`
`integrated circuit components for
`
`graphics and video systems; multimedia accelerators, graphic accelerators and computer
`
`software for operating and managing integrated circuit components” in International Class 9.
`
`This registration is valid and subsisting, unrevoked and uncancelled, and provides prima facie
`
`702314 vl/PA
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`4
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`

`
`NVIDIA Corporation v. Innovidia, Inc.
`Serial No. 78/379,001
`
`Notice of Opposition
`
`evidence of NVIDIA’s exclusive right to use its mark with the goods specified in the registration.
`
`A true and correct copy of the certificate of registration is attached as Exhibit 6.
`
`12.
`
`On October 26, 2004, the PTO issued to NVIDIA a registration for the mark
`
`NVIDIA (Reg. No. 2,897,658) for “clothing; namely, jackets, shirts, sweat shirts, polo shirts, t-
`
`shirts, overalls, and baseball caps; cloth bibs” in International Class 25. This registration is valid
`
`and subsisting, unrevoked and uncancelled, and provides prima facie evidence of NVIDIA’s
`
`exclusive right to use its mark with the goods specified in the registration. A true and correct
`
`copy of the certificate of registration is attached as Exhibit 7.
`
`13.
`
`On November 25, 2003, the PTO issued to NVIDIA a registration for the mark
`
`NVIDIA & Design (Reg. No. 2,787,120) for “clothing; namely, jackets, shirts, sweat shirts, polo
`
`shirts, t-shirts, overalls, and baseball caps; cloth bibs” in International Class 25. This registration
`
`is valid and subsisting, unrevoked and uncancelled, and provides prima facie evidence of
`
`NVIDIA’s exclusive right to use its mark with the goods specified in the registration. A true and
`
`correct copy of the certificate of registration is attached as Exhibit 8.
`
`14.
`
`On June 1, 2004, the PTO issued to NVIDIA a registration for the mark NVIDIA
`
`NFORCE (Reg. No. 2,848,043)
`
`for “integrated circuits” in International Class 9.
`
`This
`
`registration is valid and subsisting, unrevoked and uncancelled, and provides prima facie
`
`evidence of NVIDIA’s exclusive right to use its mark with the goods specified in the registration.
`
`A true and correct copy of the certificate of registration is attached as Exhibit 9.
`
`15.
`
`On July 15, 2003, the PTO issued to NVIDIA a registration for the mark NVIDIA
`
`PERSONAL CINEMA (Reg. No. 2,737,963)
`
`for “computer hardware, namely graphics
`
`processing units and associated computer software and hardware for operating the same” in
`
`International Class 9. This registration is valid and subsisting, unrevoked and uncancelled, and
`
`702314 vl/PA
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`5
`
`

`
`NVIDIA Corporation v. Innovidia, Inc.
`Serial No. 78/379,001
`
`Notice of Opposition
`
`provides prima facie evidence of NVIDIA’s exclusive right to use its mark with the goods
`
`specified in the registration. A true and correct copy of the certificate of registration is attached
`
`as Exhibit 10.
`
`16.
`
`On June 10, 2003, the PTO issued to NVIDIA a registration for the mark NVIDLA
`
`SOUNDSTORM (Reg. No. 2,725,464) for “computer hardware” in International Class 9. This
`
`registration is valid and subsisting, unrevoked and uncancelled, and provides prima facie
`
`evidence of NVIDIA’s exclusive right to use its mark with the goods specified in the registration.
`
`A true and correct copy of the certificate of registration is attached as Exhibit 11.
`
`17.
`
`On October 21, 2003, the PTO issued to NVIDIA a registration for the mark
`
`NVIDIA THE WAY IT’S MEANT TO BE PLAYED & Design (Reg. No. 2,776,598) for
`
`“computer hardware; computer game sofiware; multimedia software for authoring, capturing,
`
`creating,
`
`distributing,
`
`editing,
`
`hosting,
`
`processing,
`
`producing,
`
`recording,
`
`uploading,
`
`downloading, manipulating, and on-line viewing of digital images, digital video, digital audio,
`
`and interactive digital presentations; multimedia software for digital content creation; multimedia
`
`software for digital video recording, editing and playback; and multimedia software for DVD
`
`recording, editing and playback” in International Class 9.
`
`This registration is valid and
`
`subsisting, unrevoked and uncancelled, and provides prima facie evidence of NVIDIA’s
`
`exclusive right to use its mark with the goods specified in the registration. A true and correct
`
`copy of the certificate of registration is attached as Exhibit 12.
`
`18.
`
`On July 29, 2003, the PTO issued to NVIDIA a registration for the mark NVIDIA
`
`VANTA (Reg. No. 2,742,261)
`
`for “integrated circuit components for graphics and video
`
`systems, namely, multimedia accelerators, graphic accelerators; and associated computer
`
`software for operating same” in International Class 9. This registration is valid and subsisting,
`
`702314 vl/PA
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`6
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`

`
`NVIDIA Corporation v. Innovidia, Inc.
`Serial No. 78/379,001
`
`Notice of Opposition
`
`unrevoked and uncancelled, and provides prima facie evidence of NVlDIA’s exclusive right to
`
`use its mark with the goods specified in the registration. A true and correct copy of the
`
`certificate of registration is attached as Exhibit 13.
`
`19.
`
`NVIDIA also owns a variety of other pending and allowed applications for
`
`registrations in the United States of NVIDIA-based marks, namely, NVIDIA (App. Ser. No.
`
`78/606,777) for “computer software for use in performance and display of digital media;
`
`computer software for management, storage and network management of digital media, and
`
`enhancement of graphical and video display” in International Class 9; NVIDIA (App. Ser. No.
`
`78/606,780) for “electronic publications in the nature of newsletters delivered by electronic mail
`
`containing information regarding electronics, software programming and computer gaming” in
`
`International Class 16; NVIDIA CINEFX (App. Ser. No. 76/434,276) for “computer hardware,
`
`namely, integrated circuits, semiconductors and chipsets, and associated computer software and
`
`hardware for operating the same” in International Class 9; NVIDIA GEFORCE (App. Ser. No.
`
`78/419,677) for “computer hardware, namely, graphics processing units,
`
`integrated circuits,
`
`semiconductors and chip sets” in International Class 9; NVIDIA PUREVIDEO (App. Ser. No.
`
`78/485,620) for “computer hardware, namely, integratedcircuits, semiconductors, chipsets, and
`
`related hardware systems; computer rendering software” in International Class 9; NVIDIA SL1
`
`(App. Ser. No. 78/511,793) for “computer hardware, namely, integrated circuits, semiconductors
`
`and chipsets, and associated computer software and hardware for operating the same” in
`
`lntemational Class 9; NVIDIA SLI & Design (App. Ser. No. 78/512,166) for “computer
`
`hardware, namely, integrated circuits, semiconductors and chipsets, and associated computer
`
`software and hardware for operating the same” in International Class 9; NVIDIA SLI READY
`
`(App. Ser. No. 78/511,794) for “computer hardware, namely, integrated circuits, semiconductors
`
`702314 vl/PA
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`7
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`

`
`NVIDIA Corporation v. Innovidia, Inc.
`Serial No. 78/379,001
`
`Notice of Opposition
`
`and chipsets, and associated computer software and hardware for operating the same” in
`
`International Class 9; and NVIDIA SLI READY & Design (App. Ser. No. 78/512,171) for
`
`“computer hardware, namely, integrated circuits, semiconductors and chipsets, and associated
`
`computer software and hardware for operating the same” in International Class 9.
`
`20.
`
`NVIDIA currently has numerous other registrations and pending and allowed
`
`applications for registration throughout the world for the NVIDIA Name and Mark, as well as
`
`other marks featuring the NVIDLA Name and Mark.
`
`21.
`
`By the Application herein opposed, Applicant seeks to register the mark
`
`INNOVIDIA for use in connection with “Preparation of advertising, marketing and promotional
`
`materials and campaigns and consumer-directed digital content for others; market research and
`
`analysis; conducting marketing studies; marketing consulting services; compiling, analyzing and
`
`monitoring the performance, effectiveness and results of advertising, marketing and promotional
`
`materials and campaigns and consumer-directed digital content; providing business marketing
`
`information” in International Class 35 (“Applicant’s Mark” or “INNOVIDIA”).
`
`22.
`
`There is no issue of priority of use. Upon information and belief, Applicant filed
`
`its intent-to-use application for Applicant’s Mark more than six years after NVIDIA first used its
`
`NVIDIA Name and Mark in interstate commerce.
`
`FIRST GROUND FOR OPPOSITION:
`
`LIKELIHOOD OF CONFUSION
`
`23.
`
`Applicant incorporates by reference paragraphs 1 through 22, inclusive, as if fully
`
`set forth here.
`
`24.
`
`Applicant’s Mark is likely to be confused with and mistaken for the NVIDIA
`
`Name and Mark and NVIDIA-based marks because, among other reasons, Applicant’s Mark
`
`702314 vl/PA
`
`8
`
`

`
`NVIDIA Corporation v. Innovidia, Inc.
`Serial No. 78/379,001
`
`Notice of Opposition
`
`INNOVIDIA is almost identical to NVIDIA and is proposed for use in connection with services
`
`which are similar and/or related to those goods and services offered by NVIDIA in connection
`
`with the NVIDIA Name and Mark and NVIDIA-based Marks.
`
`25.
`
`On information and belief, Applicant and NVIDIA would provide their services
`
`through the same trade channels.
`
`26.
`
`If Applicant is permitted to register INNOVIDIA for its services, as specified in
`
`the Application herein opposed, confiision resulting in damage and injury to NVIDIA would
`
`occur. Persons familiar with the NVIDIA Name and Mark and NVIDIA-based Marks would be
`
`likely to perceive Applicant’s services as associated or affiliated with or sponsored by NVIDIA.
`
`Such confusion inevitably would result
`
`in damage to NVIDIA.
`
`Furthermore, any defect,
`
`objection or
`
`fault
`
`found with Applicant’s services marketed under
`
`INNOVIDIA would
`
`necessarily reflect upon and seriously injure the reputation that NVIDIA has established for its
`
`business, goods and services.
`
`27.
`
`If Applicant is permitted to obtain the registration herein opposed, Applicant will
`
`receive prima facie exclusive right to use in commerce the INNOVIDIA mark on services that
`
`are similar and/or related to the goods and services that are or may be offered by NVIDIA. Such
`
`registration would be a source of damage and injury to NVIDIA.
`
`28.
`
`For the reasons set forth herein, registration of the Applicant’s Mark should be
`
`denied pursuant to Sections 2(d) and 3 of the Lanharn Act, 15 U.S.C. §§ 1052 and 1053.
`
`SECOND GROUND FOR OPPOSITION:
`
`DILUTION OF A FAMOUS MARK
`
`29.
`
`Applicant incorporates by reference paragraphs 1 through 22, inclusive, as if fiilly
`
`set forth here.
`
`7023l4vl/PA
`
`9
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`

`
`NVIDIA Corporation v. Innovidia, Inc.
`Serial No. 78/379,001
`
`Notice of Opposition
`
`30.
`
`As a result of the distinctive nature of the NVIDIA Name and Mark;
`
`the
`
`tremendous success of NVIDIA’s goods and services; the extensive advertising of the distinctive
`
`NVIDIA Name and Mark in commerce throughout the United States;
`
`the high degree of
`
`consumer recognition of the NVIDIA Name and Mark; the strong and loyal base of customers
`
`that NVIDIA enjoys for the goods and services offered under the NVIDIA Name and Mark; and
`
`the absence of any material use of any highly similar mark by others, among other factors, the
`
`NVIDIA Name and Mark is distinctive and famous within the meaning of Section 43(c) of the
`
`Lanham Act, 15 U.S.C. § 1125 (c).
`
`31.
`
`The NVIDLA Name and Mark became famous before the date of filing of the
`
`Applicant’s intent-to-use application, March 4, 2004. To the extent that Applicant has used the
`
`INNOVIDIA mark in commerce, the NVIDIA Name and Mark became famous before the
`
`commencement of such use.
`
`32.
`
`The mark Applicant proposes to register, INNOVIDIA, is substantially similar
`
`and, in fact, nearly identical to the NVIDIA Name and Mark, and its use will cause erosion of the
`
`distinctiveness and prestige of the NVIDIA Name and Mark. Alternatively, if Applicant and
`
`others are permitted to use marks similar to the NVIDIA Name and Mark, the proliferation of
`
`such marks will deprive the NVIDIA Name and Mark of its distinctiveness and commercial
`
`impact.
`
`33.
`
`Accordingly,
`
`registration of the mark herein opposed will
`
`further damage
`
`NVIDIA by causing dilution of the distinctive quality of NVIDIA’s famous NVIDIA Name and
`
`Mark. Thus Applicant’s mark is unregistrable pursuant to Sections 2(f), 3, 13, and 43(c) of the
`
`Lanham Act, as amended, 15 U.S.C. §§1052(f), 1053, 1063, 1125, and should be refused
`
`registration.
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`702314 vl/PA
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`

`
`
`
`NVIDIA Corporation v. Innovidia, Inc.
`Serial No. 78/379,001
`
`Notice of Opposition
`
`34. Wherefore, NVIDIA prays that this Opposition be sustained, and that Application
`
`Serial No. 76/122,834 be denied and refused.
`
`35.
`
`In accordance with 37 C.F.R. §2.lO4, a duplicate copy of this Notice of
`
`Opposition, attached exhibits, and the fee required by §2.6(a)(l7) are submitted herewith.
`
`36.
`
`Please recognize the following as attorneys for NVIDIA in this proceeding: Britt
`
`L. Anderson, John W. Crittenden, Janet L. Cullum, Andrew Hartman, Anne H. Peck, Kent M.
`
`Walker, Peter J. Willsey, Adam L. Barea, Keith J. Berets, Susan D. Bemey-Key, Todd S.
`
`Bontemps, Francine M. Hanson, Lisa K. Koenig and Gretchen R. Stroud, and the firm of Cooley
`
`Godward LLP, Five Palo Alto Square, 4th Floor, 3000 El Camino Real, Palo Alto, California
`
`94306-2155.
`
`37.
`
`Please address all communications to Britt L. Anderson at the address below.
`
`Date: April 20, 2005
`
`Respectfully submitted,
`COOLEY GODWARD LLP
`
`B)‘.
`
`,
`
`‘
`
`Iitt L. Anderson
`Five Palo Alto Square, 4th Floor
`3000 El Camino Real
`
`Palo Alto, California 94306-2155
`Telephone: (650) 843-5000
`Facsimile: (650) 857-0663
`
`Attorneys for Opposer NVIDIA Corporation
`
`702314 vl/PA
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`
`

`
`:3:av321:.SR:E8w§c8Emw3mafi
`
`

`
`
`
`0
`
`Int. Cl.: 9
`
`Prior U.S. Cl.: 21
`
`Reg. No. 1,895,559
`United States Patent and Trademark Office Registered May 23,1995
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`NVIDIA
`
`NVIDIA CORPORATION (CALIFORNIA con-
`PORATION)
`4052 KETTERING TERRACE
`FREMON-r' CA 94536
`FOR: INTEGRATED CIRCUITS, 1N CLASS 9
`(U.S. CL. 21).
`
`FIRST use
`l0—6—l993.
`
`4-5-1993;
`
`IN COMMERCE
`
`SN 74-381,207, FILED 4-20-I993.
`
`JESSIE B. BILLINGS, EXAMINING ATTORNEY
`
`

`
`
`
`:5:mmStwtimmasfl...§8am.mm:._m“
`
`
`
`

`
`
`
`Int. Cl.: 9
`
`Prior U.S. CIs.: 21, 23, 26, 36, _and 38
`
`Reg. No. 2,341,815
`United States Patent and Trademark Office
`Registered Apr. 11, 2000
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`
`
`7¢VIDIA
`
`NVIDIA CORPORATION (CALIFORNIA COR-
`PORATION)
`I226 TIROS WAY
`SUNNYVALE, CA 94086
`
`FOR: INTEGRATED CIRCUITS; INTEGRAT-
`ED CIRCUIT COMPONENTS FOR GRAPHICS
`AND VIDEO SYSTEMS, NAMELY, MULTIME-
`DIA ACCELERATORS, GRAPHIC ACCELERA-
`TORS AND PERIPHERAL UNITS; AND COM-
`PUTER SOFTWARE FOR OPERATING AND
`
`MANAGING THE SAID INTEGRATED CIR-
`CUIT COMPONENTS, IN CLASS 9 (U.S. CLS. 2|,
`23, 26, 36 AND 38).
`FIRST USE
`6-] —I993.
`
`IN COMMERCE
`
`4-1-1993;
`
`OWNER OF U.S. REG. NO. I.895,5S9.
`
`SN 75-445,382, FILED 3-5-I998.
`
`MICHAEL BAIRD. EXAMINING ATTORNEY
`
`

`
`

`
`Int. Cl.: 9
`
`Prior U.S. CIs.: 21, 23, 26, 36, and 38
`
`United States Patent and Trademark Office
`
`Reg. No. 2,341,814
`
`Registered Apr. 11, 2000
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`NVIDIA
`
`NVIDIA CORPORATION (CALIFORNIA COR-
`PORATION)
`1226 TIROS WAY
`SUNNYVALE. CA 94086
`
`INTEGRATED CIRCUIT COMPO-
`FOR:
`NENTS FOR GRAPHICS AND VIDEO SYS-
`TEMS. NAMELY, MULTIMEDIA ACCELERA-
`TORS, GRAPHIC ACCELERATORS AND PE-
`RIPHERAL UNITS; AND COMPUTER SOFT-
`WARE FOR OPERATING AND MANAGING
`
`THE SAID INTEGRATED CIRCUIT COMPO-
`NENTS.
`IN cuxss 9 (us. CLS. 2:, 23, 26, 35
`AND 38).
`FIRST USE
`6-1-I993.
`OWNER or u.s. REG. No. |.895,559.
`
`IN COMMERCE
`
`44-1993;
`
`SN 75-44-1,998. FILED 3-5-I998.
`
`MICHAEL BAIRD. EXAMINING ATTORNEY
`
`

`
`

`
`Int. Cl.:- 42
`
`Reg. No. 2,379,910
`Pnor U.S. Cls.: 100 and 101
`Registered Aug. 22, zooo
`United States Patent and Trademark Office
`
`
`SERVICE MARK
`
`PRINCIPAL REGISTER
`
`NVIDIA
`
`NVIDIA CORPORA'DON (CALIFORNIA CORPORA-
`'2;-£96-q')‘os WAY
`SUNNYVALE, CA 94086
`
`FOR: DESIGN OF COMPUIEI HARDWARE.
`SOFTWARE AND PERIPHERALS FOR OTHERS, IN
`CLASS 42 (U.S. CLS. 100 AND 101).
`
`IN COMMERCE 6-l—l993.
`FIRST USE 4-l—l993;
`OWNER OF US. REG. NO. 1.895.559.
`
`5-
`,3 4,
`—
`SN 75 445 9 FILED 3-
`
`1998
`
`.
`
`ANDREW BENZMILLER, EXAMINING ATTORNEY
`
`

`
`

`
`Int. CL: 42
`
`Prior U.S. Cls.: 100 and 101
`
`Reg. No. 2,386,115
`United States Patent and Trademark Office Registered Sep. 12,2000
`
`
`
`SERVICE MARK
`PRINCIPAL REGISTER
`
`
`
`7/ZVIDIA
`
`NVIDIA CORPORATION (CALIFORNIA CORPORA-
`TION)
`I226 TIROS WAY
`SUNNYVALE, CA 94086
`
`FOR: DESIGN OF COMPUTER HARDWARE,
`SOFTWARE AND PERIPHERALS FOR OTHERS,
`IN
`CLASS 42 (U.S. CLS. I00 AND 101).
`
`FIRST USE 4-I—-I993;
`
`IN COMMERCE 6-l—I993.
`
`OWNER OF U.S. REG. NO. 1,895,559.
`
`SN 75—444,995, FILED 3-5-1998.
`
`ANDREW BENZMILLER, EXAMINING ATTORNEY
`
`

`
`

`
`Int. Cl.: 9
`
`Prior U.S. Cls.: 21, 23, 26, 36 and 38
`
`Reg. No. 2,461,368
`United States Patent and Trademark Office
`Registered June 19, zoo:
`
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`NVIDIA QUADRO
`
`NVIDIA CORPORATION (CALIFORNIA COR-
`PORATION)
`3535 MONROE STREE'T
`SANTA CLARA. CA 9505]
`
`FOR: INTEGRATED CIRCUITS, INTEGRATED
`CIRCUIT COMPONENTS FOR GRAPHICS AND
`VIDEO SYSTEMS; MULTIMEDIA ACCELERA-
`TORS, GRAPHIC AOCELERATORS AND COMPU-
`TER SOFTWARE FOR OPERATING AND
`MANAGING INTEGRATED CIRCUIT COMPO-
`NENTS, IN CLASS 9 (U.S. CLS. 21, 23, 26, 36 AND 38).
`
`FIRST USE 9-I5-1999; IN COMMERCE 9-IS-I999.
`
`OWNER OF U.S. REG. NOS. 2,34I,8l4 AND
`2,341,815.
`
`THE ENGLISH TRANSLATION OF "QUADRO" IS
`"CANVAS".
`
`SER. NO. 75-932,413, FILED 3-I-2000.
`
`MELVIN AXILBUND, EXAMINING ATTORNEY
`
`
`
`

`
`

`
`Int. CI.: 25
`
`Prior U.S. Cls.: 22 and 39
`
`United States Patent and Trademark Office
`
`Reg. No. 2,897,658
`Regbtaed Oct. 25, 2004
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`NVIDIA
`
`NVIDIA CORPORATION (DELAWARE COR-
`PORATION)
`270! SAN TOMAS EXPRESSWAY
`SANTA CLARA, CA 95050
`
`FOR: CLOTHING: NAMELY, JACKETS; SHIRTS,
`SWEAT SHIRTS, POLO SHIRTS, T-SHIRTS, OVER-
`ALLS, AND BASEBALL CAPS; CLOTH BIBS, IN
`CLASS 25 (U.S. CLS. 22 AND 39).
`'
`
`FIRST USE I0-0-200l;INCOMMERCE l0«0-200].
`
`SN 76-326,419, FILED I0-I8-2001.
`
`J. TINGLEY, EXAMINING ATTORNEY
`
`

`
`

`
`Int. CL: 25
`
`Prior U.S. Cls.: 22 and 39
`Reg. No. 2,787,120
`_
`Registered Nov. 25, 2003
`Umted States Patent and Trademark Office
`_______________________________
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`
`
`7¢VIDIA
`
`NVIDIA CORPORATION (DELAWARE COR-
`PORATION)
`2701 SAN TOMAS EXPRESSWAY
`SANTA CLARA. CA 95050
`
`FOR: CLOTI-IING, NAMELY, JACKETS, SHIRTS,
`SWEAT SHIRTS, POLO SHIRTS, T~SHIRTS, OVER-
`ALLS, AND BASEBALL CAPS; CLOTH BIBS, IN
`CLASS 25 (U.S. CLS. 22 AND 39).
`
`FIRST USE 12-1-2002; IN COMMERCE 12-1-2002.
`.
`
`SN 76-326,420, FILED 10-18-2001.
`
`J. TINGLEY, EXAMINING ATTORNEY
`
`

`
`

`
`
`
`Int. CL: 9
`
`Prior U.S. Cls.: 21, 23, 26, 36, and 33
`
`United States Patent and Trademark Office
`
`Reg. No. 2,848,043
`negmaed June 1, 2004
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`NVIDIA NFORCE
`
`NVIDIA CORPORATION (DELAWARE COR-
`PORATION)
`2701 SAN TOMAS EXPRESSWAY
`SANTA CLARA, CA 95050
`
`FIRST USE 6-0-2001; IN COMMERCE 6-0-2001.
`
`SN 76-265,890, FILED 6-1-2001.
`
`FOR: INTEGRATED CIRCUITS, IN CLASS 9 (U.S.
`CLS. 21, 23, 26, 36 AND 38).
`
`J. TINGLEY, EXAMINING ATTORNEY
`
`

`
`

`
`
`
`Int. Cl.: 9
`
`Prior U.S. CIs.: 21, 23, 26, 36, and 38
`
`United States Patent and Trademark Office,
`
`Reg. No. 2,737,963
`Registered July [5, 2003
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`NVIDIA PERSONAL CINEMA
`
`NVIDIA CORPORATION (DELAWARE COR-
`PORATION)
`3535 MONROE STREET
`SANTA CLARA, CA 95051 '
`
`FOR: COMPUTER HARDWARE, NAMELY GRA-
`PHICS PROCESSING UNITS AND ASSOCIATED
`COMPUTER SOFTWARE AND HARDWARE FOR
`OPERATING THE SAME. IN CLASS 9 (U.S. CLS. 2I,
`23, 26, 36 AND 38).
`
`FIRST USE 8-27-200|; IN COMMERCE I2-31-2001.
`
`NO CLAIM IS MADE TO THE EXCLUSIVE
`RIGHT TO USE "PERSONAL CINEMA". APART
`FROM THE MARK AS SHOWN.
`
`SN 76-232,I7l, FILED 3-28—200l.
`
`J. TINGLEY. EXAMINING ATTORNEY
`
`

`
`

`
`
`
`Int. CL: 9
`
`I i
`
`Prior U.S..Cls.: 21, 23, 26, 36, and 38
`
`Reg. No. 2,725,464
`United States Patent and Trademark Office
`Registered June 10, 2003
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`NVIDIA SOUNDSTORM
`
`NVIDIA CORPORATION (DELAWARE COR-
`PORATION)
`_
`2701 SAN TOMAS EXPRESSWAY
`SANTA CLARA, CA 95050
`
`FIRST USE I0-I-2002; IN COMMERCE I0-I-2002.
`
`SN 76-295.472, FILED 8~7-200l.
`
`FOR: COMPUTER HARDWARE, IN CLASS 9 (U.S.
`CLS. 21, 23. 26, 36 AND 38).
`
`J. TINGLEY, EXAMINING ATTORNEY
`
`

`
`

`
`
`
`Int. Cl.: 9
`
`Prior U.S. CIs.: 21, 23, 26, 36, and 38
`‘Reg. No. 2,776,598
`
` United States Patent and Trademark Office Registered Oct. 21,2003
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`
`
`NVIDIA CORPORATION (DELAWARE COR-
`PORATION)
`2701 SAN TOMAS EXPRESSWAY
`SANTA CLARA, CA 95050
`
`FOR: COMPUTER HARDWARE; COMPUTER
`GAME SOFTWARE; MULTIMEDIA SOFTWARE
`FOR AUTI-IORING, CAPTURING, CREATING, DIS-
`TRIBUTING, EDITING, HOSFING, PROCESSING,
`PRODUCING, RECORDING, UPLOADING, DOWN-
`LOADING, MANIPULATING, AND ON-LINE
`VIEWING OF DIGITAL IMAGES, DIGITAL VIDEO,
`DIGITAL AUDIO. AND INTERACTIVE DIGITAL
`
`PRESENTATIONS; MULTIMEDIA SOFTWARE FOR
`DIGITAL CONTENT CREATION; MULTIMEDIA
`SOFTWARE FOR DIGITAL VIDEO RECORDING.
`EDITING AND PLAYBACK-; AND MULTIMEDIA
`SOFTWARE FOR DVD RECORDING, EDITING
`AND PLAYBACK, IN CLASS 9 (U.S. CLS. 2|, 23, 26,
`36 AND 38).
`
`FIRST USE 6-0-2002; IN COMMERCE 6-0-2002.
`
`SN 76-386,506, FILED 3-22-2002.
`
`J. TINGLEY, EXAMINING ATTORNEY
`
`

`
`

`
`Int. CL: 9
`
`Prior U.S. Cls.: 21, 23, 26, 36, and 38
`
`Reg. No. 2,742,261
`United States Patent and Trademark Office
`Registered July 29. 2003
`
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`NVIDIA VANTA
`
`NVIDIA CORPORATION (CALIFORNIA COR-
`PORATION)
`270! SAN TOMAS EXPRESSWAY
`
`SOFTWARE FOR OPERATING SAME. IN CLASS 9
`(U.S. CLS. 2|. 23. 26, 36 AND 38).
`
`SANTA C'*ARA~ CA 95°50
`FOR:
`INTEGRATED CIRCUIT COMPONENTS
`FOR GRAPHICS AND vIDEo SYSTEMS, NAM ELY.
`MULTIMEDIA AccELERAToRs. GRAPHIC AC-
`CELERATORS: AND ASSOCIATED COMPUTER
`
`FIRST USE 3-0-I999; IN coMMERcE 4-0-I999.
`
`SN 75-537»'°‘- F"-ED "-'2-'993-
`
`TRACY CROSS, EXAMINING ATTORNEY
`
`

`
`NVIDIA Corporation v. Innovidia, Inc.
`Serial No. 78/379,001
`
`Notice of Opposition
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on April 20, 2005, Opposer NVIDIA’s Notice of Opposition
`
`(Serial No. 78/379,001) (with Exhibits 1-13) was sent via first class mail, postage prepaid, to
`
`counsel for Applicant at the following address:
`
`Lynne E. Graybeal
`Perkins Coie LLP
`
`1201 Third Avenue, Suite 4800
`Seattle, WA 98101
`
`Cheryll DTL71?/‘g
`
`702314 vl/PA
`
`.
`
`12