Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA179529
`ESTTA Tracking number:
`12/07/2007
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91179197
`Plaintiff
`VUTEk Inc.
`ALEX K. GRAB, ESQ.
`303 VELOCITY WAY
`FOSTER CITY, CA 94404
`UNITED STATES
`alex.grab@efi.com
`Opposition/Response to Motion
`Alex K. Grab, Esq.
`alex.grab@efi.com
`/s/ Alex K. Grab
`12/07/2007
`Opposition to BioWare's Motion to Dismiss.pdf ( 22 pages )(430725 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of trademark application Serial No. 76636906
`For the mark BIOWARE CORP.
`
`Published in the Oflicial Gazette on April 24, 2007
`
`VUTEK INC., a Delaware corporation,
`
`Opp0Siti0I1 N0. 91179197
`
`Oppaser,
`
`.................................................................................................................
`
`VS’
`
`BIOWARE CORP., a Canadian
`corporation,
`
`OPPOSITION TO APPLICANT
`BIOWARE CORP.°S MOTION TO
`
`DISMISS PURSUANT TO FED. R. CIV.
`P- 12(b)(6)
`
`Applicant.
`
`
`United States Patent and Trademark Office
`
`Trademark Trial and Appeal Board
`P.O. Box 1451
`
`Alexandria, VA 223 13-145 1
`
`

`
`TABLE OF CONTENTS
`
`Introduction ........................................................................................................................ .. l
`
`BioWare’s Motion To Dismiss Should Be Denied Because It Was
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`Not Timely Served On VUTEk’s Counsel. ....................................................................... ..l
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`III.
`
`BioWare’s Motion Should Be Denied On The Merits ....................................................... ..2
`
`A.
`
`B.
`
`VUTEk Pleaded Proper Grounds For Denying Registration ................................. ..2
`
`VUTEk Has Standing to Challenge BioWare’s Application ................................. ..6
`
`IV.
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`At Worst, VUTEk should be Granted Leave To Amend ................................................... ..7
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`Conclusion ......................................................................................................................... ..8
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`

`
`TABLE OF AUTHORITIES
`
`CASES
`
`Allen v. City ofBeverly Hills,
`
`911 F. 2d 367 (9th Cir. 1990) ........................................................................................... .. 7
`
`Cardinal Engineering Corp. v. Champion Mfg. Co.,
`300 F.2d 957, 133 U.S.P.Q. 197 (C.C.P.A. 1962) ............................................................ .. 2
`
`DeLiixe Reading Corp. v. Rexall Drug and Chemical Co.,
`
`147 U.S.P.Q. 54 (TTAB 1995) ......................................................................................... .. 5
`
`Intellimedia Sports Inc. v. Intellimedia Corp.,
`43 U.S.P.Q. 1203 (T.T.A.B. 1997) ................................................................................... .. 7
`
`Lipton Indas., Inc. v. Ralston Purina Co.,
`
`670 F.2d 1024, 213 U.S.P.Q. 185 (C.C.P.A. 1982) .......................................................... .. 6
`
`M. Aron Corp. v. Remington Products, Inc.,
`222 U.S.P.Q. 93 (TTAB 1990) ......................................................................................... .. 3
`
`Morton Foods, Inc. v. The Frito Co.,
`
`314 F.2d 822, 50 C.C.P.A. 1105 (C.C.P.A. 1963) ........................................................ .. 4, 5
`
`Richard Gregg Mfg. Co. v La Maar, Inc.,
`166 U.S.P.Q. 568 (TTAB 1970) ................................................................................... .. 5, 6
`
`Ritchie v. Simpson,
`170 F.3d 1092, 50 U.S.P.Q.2d 1023 (Fed. Cir. 1999) ...................................................... .. 6
`
`Selva & Sons, Inc. v. Nina Footwear, Inc.,
`
`705 F.2d 1316, 217 U.S.P.Q. 641 (Fed. Cir. 1983) .......................................................... .. 6
`
`Wilson v. Delaiinay,
`245 F.2d 877, 114 U.S.P.Q. 339 (C.C.P.A. 1957) ............................................................ .. 6
`
`RULES
`
`Fed. R. Civ. P. 15(a) ..................................................................................................................... .. 7
`
`TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE
`
`§ 113 .................................................................................................................................. .. 2
`
`§ 309.03 ............................................................................................................................. .. 4
`
`§309.03(b) ............................................................................................................ .. 1, 3, 5, 6
`
`

`
`§ 502.02(a) .................................................................................................................... .. 1, 2
`§ 503.03 ............................................................................................................................. .. 7
`
`TREATISES
`
`3 MCCARTHY ON TRADEMARKS & UNFAIR COMPETITION (2007 ed.)
`§ 20.13 ............................................................................................................................... .. 2
`
`REGULATIONS
`
`37 C.F.R. § 2.119(b) ..................................................................................................................... .. 2
`
`-111-
`
`

`
`I.
`
`INTRODUCTION
`
`Applicant BioWare Corp.’s motion to dismiss Opposer VUTEk, Inc.’s Opposition should
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`be denied. As an initial matter, BioWare failed to timely serve the motion on VUTEk’s counsel
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`of record in violation of the Board’s rules. Under the Board’s rules, that alone requires that the
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`motion be denied. Even if the Board were to ignore BioWare’s transgression, its motion should
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`nonetheless be denied on the merits.
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`BioWare offers two arguments to support its motion to dismiss: First, BioWare argues
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`that VUTEk has not alleged sufficient “damages” caused by BioWare’s application for the mark
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`BIOWARE CORP. Second, it argues that VUTEk lacks standing to challenge the application.
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`Neither argument has merit. First, contrary to BioWare’s argument, VUTEk has pleaded proper
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`grounds for denying the registration: The opposition is based on TBMP § 309.03(b), which
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`expressly allows an opposition where the applicant, like BioWare here, “has asserted a likelihood
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`of confusion in another proceeding between the parties involving the same marks.” Second,
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`VUTEk has standing. As an applicant itself for the mark “BIOWARE,” VUTEk has a real
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`interest in the application at issue here, and a reasonable basis for its belief of damage should the
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`mark issue. Indeed, the same rule that establishes VUTEk’s damages confirms that VUTEk has
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`standing. Accordingly, if the Board reaches the motion’s merits, the Board should deny
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`BioWare’s motion to dismiss in its entirety.
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`II.
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`BIOWARE’S MOTION TO DISMISS SHOULD BE DENIED BECAUSE IT WAS
`NOT TIMELY SERVED ON VUTEK’S COUNSEL.
`
`The Board should BioWare’s motion without even considering its merits because
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`BioWare failed to timely or properly served the motion on VUTEk’s counsel in this proceeding.
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`TBMP § 502.02(a) requires that every motion must be served, and proof of service must
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`be shown, “before the motion will be considered by the Board.” TBMP § 502.02(a). 37 C.F.R.
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`

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`§ 2.1 19(b), which is recited in TBMP § 113, requires service on a party’s attorney of record. See
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`TBMP§ 113; 37 C.F.R. § 2.119(b).
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`Here, as BioWare’s moving papers show, BioWare failed to serve its motion to dismiss
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`on VUTEk’s counsel in this proceeding.
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`[M0t. to Dismiss at 11.] Instead, BioWare served its
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`motion on October 5, 2007 on Greenberg Traurig LLP.
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`[Id.] Although that law firm represents
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`VUTEk in another proceeding, that firm does not represent VUTEk in this one. VUTEk’ s
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`diligence in obtaining the motion to dismiss cannot and should not excuse BioWare from
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`complying with the Board’s rules. Because BioWare failed to properly serve VUTEk,
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`BioWare’s motion should not even “be considered by the Board.” See TBMP § 502.02(a).
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`III.
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`BIOWARE’S MOTION SHOULD BE DENIED ON THE MERITS.
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`Even if the Board were to consider the merits, BioWare’ s motion should nevertheless be
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`denied. A motion to dismiss pursuant to Rule l2(b)(6) of the Federal Rules of Civil Procedure
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`must be denied unless it is certain that the opposer cannot, under any circumstances, prevail on
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`its opposition. See Cardinal Engineering Corp. v. Champion Mfg. Co., 300 F.2d 957, 133
`
`U.S.P.Q. 197 (C.C.P.A. 1962). By contrast, a party opposing a trademark application need only
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`plead “any legal defect or deficiency in the application” to demonstrate a valid ground for
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`denying the registration. See 3 MCCARTHY ON TRADEMARKS & UNFAIR COMPETITION § 20.13
`
`(2007 ed.). Because VUTEk’s Opposition is based on a specific TTAB rule authorizing
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`oppositions like it, BioWare’s motion must be denied.
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`A.
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`VUTEK PLEADED PROPER GROUNDS FOR DENYING REGISTRATION.
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`BioWare argues that VUTEk has failed to plead sufficient grounds for denying
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`registration of the mark. Not so. Rule 309.09(b) specifically provides for damages claims based
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`on facts asserted in VUTEk’s Opposition. According to that rule:
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`

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`A real interest in the proceeding and a reasonable belief of damage may be
`found, for example, where plaintiff [Opposer] pleads (and later proves):
`Defendant [Applicant] has relied on its ownership of its application or registration
`in another proceeding between the parties, or [the applicant] has asserted a
`likelihood of confusion in another proceeding between the parties involving
`the same marks.
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`TBMP § 309.03(b) (emphasis added).
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`The Board has considered oppositions that involve a trademark applicant’s actions in
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`another proceeding—just as VUTEk has alleged here. See also M. Aron Corp. v. Remington
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`Products, Inc., 222 U.S.P.Q. 93, 96 (TTAB 1990). In M. Aron, M. Aron petitioned to cancel a
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`registration sought by Remington, relying on Remington’s previous opposition to its trademark
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`application. Id. at 94. In denying Remington’s motion to dismiss the petition, the Board held
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`that “it is well settled that where a counterclaim to cancel an opposer’s pleaded registration [in
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`the other proceeding] is filed in an opposition which itself is based upon opposer’s allegation of
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`likelihood of confusion [in the other proceeding], it is clear from counter—claimant’s position as
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`defendant in the opposition that he has a personal stake in the controversy, and it is unnecessary
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`for the counterclaimant to allege likelihood of confusion.” Id. at 95. After citing this rule, the
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`Board specifically denied Remington’s argument that the same rule should not extend to separate
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`proceedings. Id. As the Board recognized, “once a party has established its real interest in the
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`proceeding and demonstrates that it is not a mere intermeddler, it may raise any ground for
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`cancellation that exists under the Act. What is necessary to demonstrate a real interest in the
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`proceeding may vary from case to case.” Id.
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`Here, as in M. Aron, BioWare has alleged a likelihood of confusion in a separate
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`proceeding involving the same core mark. In opposing VUTEk’s application for International
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`Class 2 registration of the mark BIOWARE in TTAB Proceeding No. 91 174133, BioWare
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`asserted that there is a likelihood of confusion between VUTEk’s mark in Class 2 and BioWare’s
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`

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`marks in other classes.
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`[See BioWare’s Notice of Opposition ‘]]‘]] 10-11, 15-16, Oppo. No.
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`91174133, a true and correct copy of which is attached hereto as Exhibit A.] Based upon
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`BioWare’s own litigation position, therefore, VUTEk will be damaged by BioWare’s application
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`at issue here: If the mark is registered, BioWare will use this mark to argue further that there is a
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`likelihood of confusion between its marks and VUTEk’s. That is a sufficient damage to support
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`VUTEk’s opposition here. TBMP § 309.03 and M. Aron are thus the beginning and the end of
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`the analysis of BioWare’s motion.
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`Rather than confront the TTAB rule and applicable case law, however, BioWare insists
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`that VUTEk’s damages allegations—despite falling squarely within Rule 309.03—are
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`insufficient.
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`[Motion at 4.] To reach this conclusion, BioWare distorts VUTEk’s allegations in
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`an effort to pigeonhole its argument into otherwise inapplicable case law. As discussed above,
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`both BioWare’s registrations and VUTEk’s application are based on the word “BIOWARE.”
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`[VUTEk’s Opposition, ‘]]‘]] 3-6.] VUTEk has applied for that mark in International Class 2
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`[0pposition, ‘]] 3], and BioWare has applied for it in International Classes 9, 16, 25, 41 and 42,
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`and has registered it in International Classes 9 and 16 [0pposition, ‘]]‘]] 4, 6]. If BioWare’s
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`application for the BIOWARE CORP. mark at issue here is registered, BioWare will—as it has
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`already done before—use that registration as evidence of “likelihood of confusion” against
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`VUTEk’s application for BIOWARE in Class 2. VUTEk’s allegations are thus not based upon
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`the mere filing of an opposition or perceived procedural disadvantage, but upon the actual
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`damage to VUTEk that would result from the registration of the mark at issue here.
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`Ignoring Rule 309.03(b) and the M. Aron case, BioWare instead relies on a line of cases
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`following Morton Foods, Inc. v. The Frito Co. Those cases are inapposite. In a two page
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`opinion, the Morton court held only that an application that creates a “mere tactical advantage”
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`

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`in pending civil litigation does not alone constitute sufficient damages to oppose registration of a
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`mark sin1ilar to that in the civil litigation. Morton, 314 F.2d 822, 823-24, 50 C.C.P.A. 1105,
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`1106 (C.C.P.A. 1963). That conclusion does not help BioWare here because, as discussed
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`above, VUTEk has not sought to create a “mere tactical advantage.” VUTEk alleged real
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`damages, including those specifically identified by the TTAB Rules as a basis for opposing a
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`registration.
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`The other cases BioWare cited are equally unpersuasive. DeLaxe Reading Corp. v.
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`Rexall Drug and Chemical Co. and the cases it cites only stand for the proposition that the filing
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`of an opposition to a trademark application does not alone constitute legal injury. See, e. g.,
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`DeLuxe, 147 U.S.P.Q. 54 (TTAB 1995). In Richard Gregg Mfg. Co. v La Maar, Inc., 166
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`U.S.P.Q. 568 (TTAB 1970), the petitioner never even responded to the motion to dismiss. The
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`Board simply held that neither the filing of an opposition, as in DeLaxe Reading, nor the threat
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`of an infringement suit, is sufficient by itself to constitute legal damage.
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`In contrast to these cases, BioWare did not merely oppose VUTEk’s application for
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`BIOWARE. As discussed above ,it also asserted a likelihood of confusion between the marks.
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`BioWare’s assertion lands the Opposition at issue here squarely within TBMP § 309.03(b), and
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`outside the reach of the cases BioWare cited. The Morton line of cases also does not apply here
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`because VUTEk has alleged damages in this action—not just tactical disadvantages or
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`opposition in another action. Morton is further inapplicable because it is BioWare that has
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`asserted that there is a likelihood of confusion between the different BIOWARE marks.
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`Indeed, BioWare’s assertion of likelihood of confusion is tantamount to an
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`acknowledgement that VUTEk will be damaged—as VUTEk alleges in its Opposition here—if
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`the application here issues. As suggested in BioWare’s own cases, BioWare is effectively
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`

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`asserting that its right to use its mark is inconsistent with VUTEk’s right to use its mark. See,
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`e. g., Richard Gregg, 166 U.S.P.Q. at 569. Having insisted on that likelihood of confusion,
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`BioWare cannot assert the contrary here. For these reasons, the Board should deny BioWare’s
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`motion to dismiss on the ground that VUTEk has not alleged sufficient damages.
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`B.
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`VUTEK HAS STANDING TO CHALLENGE BIoWARE’s APPLICATION.
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`BioWare also argues that VUTEk lacks standing to oppose BioWare’s application. This
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`argument, too, lacks merit. There are two requirements for standing in inter partes cases. An
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`opposer or petitioner must have: (1) a “real interest” in the proceedings; and (2) a reasonable
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`basis for the belief of damage. Ritchie v. Simpson, 170 F.3d 1092, 50 U.S.P.Q.2d 1023 (Fed. Cir.
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`1999). “This ‘real interest’ requirement stems from a policy of preventing ‘mere intermeddlers’
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`who do not raise a real controversy from bringing oppositions or cancellation proceedings in the
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`PTO.” Id., 50 U.S.P.Q.2d at 1025; see also Lipton Indus, Inc. v. Ralston Purina Co., 670 F.2d
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`1024, 213 U.S.P.Q. 185 (C.C.P.A. 1982) (purpose of standing is to weed out “intermeddlers”
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`from those with “a personal interest in the outcome beyond that of the general public”); Selva &
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`Sons, Inc. v. Nina Footwear, Inc., 705 F.2d 1316, 217 U.S.P.Q. 641 (Fed. Cir. 1983) (only the
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`basis for a reasonable belief in damage that is examined).
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`The issue is not whether the opposer owns the mark or is entitled to register it, but merely
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`whether it is likely that he would be somehow damaged if a registration were granted to the
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`applicant. Wilson v. Delaunay, 245 F.2d 877, 114 U.S.P.Q. 339 (C.C.P.A. 1957). As the
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`Board’s rules make clear: “All that is necessary .
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`.
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`. is that the ‘person’ bringing the opposition
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`establish conditions and circumstances from which damage to it from the opposed mark can be
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`assumed.” TBMP § 309.03(b). A party has standing to oppose an application where it “pleads
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`[the applicant] has asserted a likelihood of confusion in another proceeding between the
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`parties involving the same marks.” Id.
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`

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`There is no question that VUTEk has standing to oppose BioWare’s application. As the
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`applicant for the BIOWARE mark in Class 2, VUTEk has a real interest in this proceeding, and a
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`reasonable basis for its belief it will be damaged if BioWare’s application is granted. As
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`discussed above, this proceeding and the ‘4133 proceeding on VUTEk’s application are both
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`mark containing the core term “BIOWARE.” BioWare has opposed VUTEk’s application on the
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`ground that there is a likelihood of confusion between BioWare’ s registrations and VUTEk’ s
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`application. If BioWare’s position is adopted, then VUTEk will be damaged in its application
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`for its own mark. This is precisely the sort of “real interest” in the outcome and damages that the
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`Board’s rules recognize. As a matter of law, therefore, VUTEk has standing to challenge
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`BioWare’s application. Accordingly, the Board should deny BioWare’s motion to dismiss on the
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`ground that VUTEk lacks standing.
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`IV.
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`AT WORST, VUTEK SHOULD BE GRANTED LEAVE TO AMEND.
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`Even if the Board were to conclude that BioWare’s motion should be granted, VUTEk
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`should be granted leave to amend its Opposition. As in federal courts, the Board’s normal course
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`when granting a motion to dismiss is to allow the Opposer “an opportunity to file an amended
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`pleading.” See TBMP § 503.03; Intellimedia Sports Inc. v. Intellimedia C0rp., 43 U.S.P.Q. 1203
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`(T.T.A.B. 1997) (granting motion with leave to amend of twenty days). Such leave is routinely
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`granted; indeed, the Federal Rules of Civil Procedure require it “be freely given when justice so
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`requires.” Fed. R. Civ. P. 15(a); Allen v. City 0fBeverly Hills, 911 F. 2d 367, 372 (9th Cir.
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`1990). Here, assuming the Board excuses BioWare for failing to properly serve VUTEk with its
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`motion, and then also concludes that VUTEk’s pleading is deficient, the Board should allow
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`VUTEk to amend its Opposition.
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`

`
`V.
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`CONCLUSION
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`BioWare’s motion to dismiss is replete with adverbs and adjectives, but it ultimately
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`lacks merits. VUTEk has standing to oppose BioWare’s application to register the mark, and has
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`asserted proper grounds for its Opposition. Accordingly, BioWare’s motion to dismiss should be
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`denied in its entirety. At worst, VUTEk should be granted leave to amend its Opposition.
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`Dated:
`
`December 7, 2007
`
`Respectfully submitted,
`
`By /s/ Alex K. Grab
`ALEX K. GRAB
`
`Attorney for Opposer
`VUTEK INC.
`
`

`
`CERTIFICATE OF FILING
`
`The undersigned hereby certifies that this pleading, VUTEk Inc’s OPPOSITION TO
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`APPLICANT BIOWARE CORP.’S MOTION TO DISMISS PURSUANT TO FED. R. CIV. P.
`
`l2(b)(6), was electronically filed with the United States Patent and Trademark Office,
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`Trademark Trial and Appeal Board, on December 7, 2007.
`
`/s/ Alex K. Grab
`
`ALEX K. GRAB
`
`

`
`PROOF OF SERVICE
`
`1, Alex K. Grab, declare that I am a resident of the State of California, over the age of
`eighteen years, and not a party to the within action. My business address is 303 Velocity Way,
`CA 94404.
`
`On December 7, 2007, I served the following document(s):
`
`OPPOSITION TO APPLICANT BIOWARE CORP.’S MOTION TO DISMISS
`
`PURSUANT TO FED. R. CIV. P. l2(b)(6)
`
`on the parties listed below as follows:
`
`Paul N. Tauger
`Bryan Cave LLP
`120 Broadway, Suite 300
`Santa Monica, CA 90401-2386
`
`Attorneys for Applicant
`BIOWARE CORP.
`
`IX] By fir st class mail by placing a true copy thereof in a sealed envelope with postage
`thereon fully prepaid and placing the envelope in the company’ s daily mail processing
`center for mailing in the United States mail at Foster City, California.
`
`D By facsimile machine (FAX) by personally transmitting a true copy thereof via an
`electronic facsimile machine.
`
`D By personal service by causing to be personally delivered a true copy thereof to the
`address(es) listed herein at the location listed herein.
`
`D By Federal Express or overnight courier.
`
`I declare under penalty of perjury under the laws of the State of California that the
`foregoing is true and correct.
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`Executed on December 7, 2007, at Foster City, California.
`
`/s/ Alex K. Grab
`
`

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`VUTEk’S OPPOSITION
`
`EXHIBIT A
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`

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`Trademark Trial and Appeal Board Electronic Filing System. _.fz;‘_t_I:_9_:_.{.Z_:§_.§_i‘_:g,_LJ_;_:,z_3_g‘_.'g_._z_3;g_ig
`ESTTA Tracking number:
`ESTTA11125O
`
`Filing date:
`
`11/22/2006
`
`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.
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`Opposer Information
`
`Name
`Entity
`Address
`
`BioWare Corp.
`
`4445 Calgary Trail, Suite 200
`Edmonton, ALB T6H5R7
`CANADA
`
`Citizenship
`
`Canada
`
`Paul N. Tauger
`Schnader Harrison Segal & Lewis LLP
`One Montgomery Street, Suite 2200
`San Francisco, CA 94104-5501
`UNITED STATES
`
`ptauger@schnader.com Phone:(415) 364-6700
`UNITED STATES
`
`Applicant Information
`
`Application No
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`78841029
`
`Publication date
`
`10/31/2006
`
`Opposition Filing
`Date
`
`11/22/2006
`
`Opposition
`Period Ends
`
`11/30/2006
`
`Applicant
`
`VUTEk Inc.
`One Vutek Place
`Meredith, NH 03253
`
`Goods/Services Affected by Opposition
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`Class 002.
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`All goods and sevices in the class are opposed, namely: Inkjet printer ink
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`NtcOpposition.pdf ( 6 pages )(142875 bytes)
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`ii/22/2006
`
`/Paul N.Tauger/
`iauiw-Tauger
`
`VUTEk's Opposition
`EXHIBIT A
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`

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`BOX: TTAB FEE
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Before the Trademark Trial and Appeal Board
`
`IN RE:
`
`Application No. 78/841,029
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`Trademark:
`
`BIOWARE
`
`Opposer:
`
`BioWare Corp.
`
`Applicant:
`
`Vutek, Inc.
`
`Published:
`
`October 31, 2006
`
`Attorney Docket No:
`
`30063 4S—O00O/ 1 OUS/OP3
`
`NOTICE OF OPPOSITION
`
`Commissioner for Trademarks
`
`BOX: TTAB FEE
`
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Dear Sir or Madam:
`
`BioWare Corp., a corporation of Canada, located and doing business at 4445
`
`Calgary Trail, Suite 200, Edmonton, Alberta T61-I5R7 Canada believes it will be
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`damaged by the registration of the BIOWARE mark, Application Serial No. 78/431,095,
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`published October 25, 2005 (hereinafter, “Applicant’s Mark”) and having sought and
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`obtained an extension of the time to file a Notice of Opposition, hereby opposes the
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`same.
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`The grounds for the opposition are as follows:
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`1.
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`BioWare Corp. (hereinafter, “Opposer”) is an internationally renowned
`
`electronic entertainment company specializing in the creation of computer and console
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`Video games.
`
`2.
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`Opposer was founded in 1995. Since that time, it has developed an
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`outstanding international reputation for the high quality and success of its Video games.
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`Its games have sold many millions of copies in the U.S. and in many countries
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`throughout the world. Opposer is universally acknowledged as one of the leading
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`developers of computer and console games. Opposer has received over 100 industry
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`awards for games that it has authored and developed, including Billboard Digital
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`Entertainment’s Game Developer of the Year, as Well as many other business awards.
`
`3.
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`Opposer’s games have been translated into many languages, including
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`French, Italian, German, Spanish, Polish, Chinese, and Japanese.
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`4.
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`Opposer and LucasArts Entertainment collaborated to produce the first
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`role playing game in the Star Wars® universe, titled Star Wars: Knights of the Old
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`Republic. The game has accumulated over 100 awards, including acknowledgments for
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`its excellence in story telling, technology and sound. The game has garnered over 45
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`Games of the Year Awards as well as three Academy of Interactive Arts and Science
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`Awards and one British Academy of Film and Television Arts Award.
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`5.
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`Microsoft Corp. has released Opposer’s newest game, Jade Empire,
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`named “Game of the Year” by numerous publications and reviewers. Jade Empire
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`received “Best of Show” awards at the 2004 Electronic Entertainment Expo (E3) from
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`GameSpy, GameSpot, Gamelnformer, 1UP, Yahoo! Games Domain and other industry
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`leaders. CNN described Jade Empire as, “a gripping and intense single—player magnum
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`opus. Its rich story, memorable characters and clever combat system make this title a
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`must-have for your Xbox collection.” USA Today said, “Overall “Jade Empire” is a
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`gripping and intense single—player magnum opus. Its rich story, memorable characters
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`and clever combat system make this title a must-have for your Xbox collection.”
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`GameSpy published the following: “BioWare combines excellent storytelling, exciting
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`combat, and gorgeous visuals to create the best RPG ever to hit the Xbox.”
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`6.
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`Opposer has partnered with Interplay Entertainment on the Baidur is‘ Gate
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`game series, which is now in its second sequel.
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`7.
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`Opposer is responsible for the popular role—playing game, NeverWinter
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`Nights, which is distributed by Atari and has accumulated over 90 industry awards.
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`8.
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`Opposer and Microsoft Game Studios have announced Opposer’s latest
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`game, Mass Eflect.
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`9.
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`Opposer licenses its game engine technology which has powered a number
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`of critically acclaimed role—playing games.
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`10.
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`Opposer is the owner of the following trademark registrations:
`
`Registration Mark
`No.
`
`Type
`
`First Use
`in
`
`Commerce
`
`Class Filing
`Date
`
`2,615,576
`
`BIOWARE CORP
`
`Words in
`
`8/1/1998
`
`9, 16
`
`10/31/2001
`
`Stylized
`Form
`
`ENGINE
`
`Drawing
`
`IODYSSEY ENGINE
`
`Drawing
`
`2,733,351
`
`THE BIOWARE
`INFINITY ENGINE
`
`2,454,474
`
`BIOWARE
`
`2,460,807
`
`BIOWARE CORP
`
`3,172,886
`
`BIOWARE
`
`Typed
`Drawing
`
`Typed
`Drawing
`
`Typed
`Drawing
`Standard
`
`Character
`
`Mark
`
`12/1998
`
`3/6/2001
`
`2/1/1995
`
`2/24/1999
`
`8/1/1998
`
`9, 16
`
`2/24/1999
`
`1A
`
`9, 16,
`
`4/21/2005
`
`25,
`
`41,
`42
`
`11.
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`Opposer has pending the following trademark registrations:
`
`Application
`N0.
`
`76/653517
`76/636724
`
`76/63 6906
`
`7'6/594456
`
`Type
`
`STUDIOS
`
`Character Mark
`
`BIOWARE/PANDEMIC Standard
`Standard
`
`ENGINE
`
`Character Mark
`
`iling
`ate
`
`/17/2006
`4/21/2005
`
`113
`1B
`
`1A
`
`Character Mark
`
`BIOWARE CORP
`
`Words, Letter
`and/or Number
`
`in Stylized Form
`
`BIOWARE ECLIPSE
`
`Standard
`
`ENGINE
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`12.
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`Opposer’s trademark is inherently distinctive in the context of the goods
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`and services to which it is applied and has been used in commerce.
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`13.
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`Opposer’s long-term and extensive use, sales, distribution, advertising and
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`promotion of its trademark throughout the United States, Canada and Europe renders it a
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`famous mark within the meaning of 15 U.S.C. § ll25(c) (Section 43 (c) of the Lanham
`
`Act).
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`14.
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`011 information and belief, Applicant’s contemplated use of the identical
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`mark will result in dilution of the distinctive quality of Opposer’s famous mark.
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`15.
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`Notwithstanding the international and U.S. classes claimed by Applicant’s
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`pending application, Opposer is informed and believes that App1icant’s goods and
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`services are sufficiently related to Opposer’s goods and services so as to result in a
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`likelihood of confusion of the consumer demographic for Opposer and Applicant as to
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`source, sponsorship, affiliation of endorsement of Applicant's and/or Opposer’s goods.
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`16.
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`Applicant’s use and registration of Applicant’s mark for the goods and
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`services of the application herein opposed will lead to confusion, to mistake, or to
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`deception of the public within the meaning of 15 U.S.C. § 1052(d) (Section 2(d) of the
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`Trademark Act of 1946).
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`17.
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`If Applicant is permitted to register its mark, the registration would give
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`Applicant a prima facie exclusive right to the use of BIOWARE for the goods and
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`services of the application. Such registration may preclude Opposer from marketing
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`BIOWARE—identified goods that are based on and related to its computer and console
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`video games and ancillary and other goods and services.
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`18.
`
`By reason of the foregoing, Applicant’s registration of BIOWARE for the
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`goods and services of the application herein opposed would cause injury and damage to
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`Opposer and its BIOWARE marks.
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`WHEREFORE, Opposer prays that its opposition be sustained and that
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`Application Serial No. 78/841,029 be refused.
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`A duplicate copy of this Notice of Opposition is enclosed.
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`Please address all correspondence to Paul N. Tauger, Esq. at the address below.
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`Respectfully submitted,
`
`SCHNADER HARRISON SEGAL & LEWIS LLP
`
`Dated: November 22, 2006
`
`By:
`
`»
`PAUL N. AUGER
`
`Address:
`
`One Montgomery Street, Suite 2200
`San Francisco, CA 94104-5501
`(415) 364-6700
`Phone:
`(415) 364-6785
`Fax:
`ptauger@schI1ader.com (e~mail authorized)
`
`ATTORNEYS FOR OPPOSER
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`Certification Under 37 CFR 1.8
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`I hereby certify that this paper or fee is being deposited with the United States
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`Postal Service with sufficient postage as first-class mail under 37 CFR 1.8 on the date
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`indicated above and is addressed to:
`
`Commissioner for Tradernarks
`Box TTAB FEE
`
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
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`With a copy also sent by Federal Express service to:
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`Vutek, Inc.
`One Vutek Place
`
`Meredith, NH 03253
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`With a copy also sent by first-class mail to:
`
`Susan L. Heller
`
`Greenberg Traurig, LLP
`2450 Colorado Avenue, Suite 400E
`
`Santa Monica, CA 90404
`
` Dated: November 22, 2006
`
`teven G. Davenport
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