Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA250848
`ESTTA Tracking number:
`11/24/2008
`
`Filing date:
`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
`Granted to Date
`of previous
`extension
`Address
`
`Brightpoint, Inc.
`11/22/2008
`
`7635 Interactive Way, Ste. 200
`Indianapolis, IN 46278
`UNITED STATES
`
`Attorney
`information
`
`Daniel J. Lueders
`Woodard Emhardt Moriarty McNett & Henry LLP
`111 Monument Circle, Suite 3700
`Indianapolis, IN 46204-5137
`UNITED STATES
`docketdept@uspatent.com, lsweet@uspatent.com, lueders@uspatent.com
`Phone:317-634-3456
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`77457871
`11/24/2008
`
`Publication date
`Opposition
`Period Ends
`
`09/23/2008
`11/22/2008
`
`BrightPoint Management, LLC
`Suite A-260 187 Ballardvale Street
`Wilmington, MA 01887
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 036.
`All goods and services in the class are opposed, namely: investment services in the fields of venture
`capital and private equity
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution
`Other
`
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`Lanham Act section 1(b) no bona fide intent to
`use
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`2170782
`
`07/07/1998
`
`Application Date
`
`10/16/1996
`
`Foreign Priority
`
`NONE
`
`

`
`Word Mark
`Design Mark
`
`BRIGHTPOINT
`
`Date
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 1995/09/15 First Use In Commerce: 1995/09/15
`distributorships in the field of wireless communications equipment, namely,
`distributorships for wireless telephones and wireless telephone battery chargers,
`battery eliminators, replacement batteries, wattage boosters, hands free
`headsets and kits, holders and cradles, carrying cases and bags, earphones,
`microphones, cigarette lighter adapters, antennae, hang-ups, handset extension
`cables, power cables, and data cables
`
`U.S. Registration
`No.
`Registration Date
`
`2353363
`
`05/30/2000
`
`Word Mark
`Design Mark
`
`BRIGHTPOINT
`
`Application Date
`
`11/10/1998
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 1995/09/15 First Use In Commerce: 1995/09/15
`distributorships in the field of wireless communications equipment, namely,
`distributorships for wireless telephones and wireless telephone battery chargers,
`battery eliminators, replacement batteries, wattage boosters, hands free
`headsets and kits, holders and cradles, carrying cases and bags, earphones,
`microphones, cigarette lighter adapters, antennae, hang-up cups, handset
`extension cables, power cables and data cables to order and specification;
`management of inventory
`Class 036. First use: First Use: 1996/07/13 First Use In Commerce: 1996/07/13
`financial services relating to wireless communication equipment, namely
`accounts receivable management, credit and collection processing, and credit
`risk retention
`Class 037. First use: First Use: 1996/07/13 First Use In Commerce: 1996/07/13
`repair and refurbishing of wireless communication equipment
`Class 039. First use: First Use: 1996/07/13 First Use In Commerce: 1996/07/13
`inventory storage and management of wireless communication equipment for
`others
`Class 042. First use: First Use: 1996/07/13 First Use In Commerce: 1996/07/13
`
`

`
`packaging design for wireless communications equipment for others
`
`U.S. Registration
`No.
`Registration Date
`
`2729911
`
`06/24/2003
`
`Word Mark
`Design Mark
`
`BRIGHTPOINT ONLINE
`
`Application Date
`
`12/22/2000
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2001/05/08 First Use In Commerce: 2001/05/08
`Distributorships in the field of wireless communication equipment, namely,
`distributorships for wireless telephones and wireless telephone battery chargers,
`battery eliminators, replacement batteries, wattage boosters, hands free
`headsets and kits, holders and cradles, carrying cases and bags, earphones,
`microphones, cigarette lighter adapters, antennae, hang-up cups, handset
`extension cables, power cables and data cables; mail order catalog services
`featuring wireless communication equipment and accessories therefor;
`computerized on-line ordering and product order fulfillment services in the field
`of wireless communication equipment and accessories therefor; inventory
`management of wireless communication equipment and accessories therefor for
`others; packaging wireless communication equipment and accessories therefor
`to the order and specification of others; accounts receivable management
`services in the field of wireless communication equipment and accessories
`therefore
`Class 036. First use: First Use: 2001/05/08 First Use In Commerce: 2001/05/08
`Financial services relating to wireless communication equipment and
`accessories therefor, namely, credit and debt recovery collection services, and
`credit risk management services
`Class 037. First use: First Use: 2001/05/08 First Use In Commerce: 2001/05/08
`Repair and refurbishing of wireless communication equipment and accessories
`therefor
`Class 039. First use: First Use: 2001/05/08 First Use In Commerce: 2001/05/08
`Inventory storage services, namely, storage of wireless communication
`equipment and accessories therefor for others
`Class 042. First use: First Use: 2001/05/08 First Use In Commerce: 2001/05/08
`Packaging design for wireless communication equipment and accessories
`therefor to the order and specification of others
`
`Attachments
`
`75182057#TMSN.gif ( 1 page )( bytes )
`75591726#TMSN.gif ( 1 page )( bytes )
`76185967#TMSN.gif ( 1 page )( bytes )
`Opposition BRIGHTPOINT Management LLC.pdf ( 12 pages )(398759 bytes )
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`
`Certificate of Service
`
`

`
`record by First Class Mail on this date.
`
`Signature
`Name
`Date
`
`/Daniel J. Lueders/
`Daniel J. Lueders
`11/24/2008
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND ‘APPEAL BOARD
`
`In re application Serial No. 77/457,871
`Published in the Office Gazette of
`
`September 23, 2008
`
`Brightpoint, Inc.
`
`Opposer
`
`V.
`
`Brightpoint Management, LLC
`
`Applicant
`
`\./\/\/g/\_/g/\/\_/\_/\/\/\/
`
`Opposition No.
`
`NOTICE OF OPPOSITION
`
`Application for registration of the service mark BRIGHTPOINT for “investment
`services in the fields of venture capital and private equity” in International Class 36 was
`
`filed in the U.S. Patent and Trademark Office on April 25, 2008 naming as Applicant
`
`Brightpoint Management, LLC, 187 Ballardvale St., Ste. A—260, Wilmington, MA 01887
`
`(hereinafter “Applicant”), and was assigned Serial No. 77/457,871. The mark of this
`
`application was published for opposition in the Official Gazette dated September 23,
`
`2008. The time period within which this Notice of Opposition may be filed by the
`
`undersigned Opposer has been previously extended to and including November 22, 2008 a
`
`by order of the U.S. Trademark Trial and Appeal Board.
`
`Biightpoint, Inc., an Indiana corporation with a post office address of 7635
`
`Interactive Way, Ste. 200, Indianapolis, Indiana 46278, believes that it will be damaged
`
`

`
`by registration of the BRIGHTPOINT mark for the above recited services in International
`
`Classes 36, and hereby opposes federal registration for the mark for those services.
`
`STANDING I
`
`1.
`
`Brightpoint, Inc. (Opposer) owns trade names and service marks that have
`
`been registered in the U.S. Trademark Office having as the predominant portion thereof
`
`the word BRIGHTPOINT.
`
`2.
`
`Brightpoint, Inc. adopted and began using the mark BRIGHTPOINT in
`
`connection with its services at least as early as 1995 and has been using the mark in
`
`interstate commerce since at least as early as that date.
`
`3.
`
`Brightpoint, Inc., is the owner of record of and is using the incontestable
`
`U.S. Service Mark Registration 2,170,782 issuing July 7, 1998 for the mark
`
`BRIGHTPOINT and Design for the following services:
`
`Distributorships in the field of wireless communication equipment,
`
`namely, distributorships for wireless telephones and wireless telephone
`
`battery chargers, battery elirninators, replacement batteries, wattage
`
`boosters, hands free headsets and kits, holders and cradles, carrying cases
`
`and bags, earphones, microphones, cigarette lighter adapters, antennae,
`
`hangups, handset extension cables, power cables, and data cables in Class
`
`35 with the date of first use of September 15, 1995.
`
`4.
`
`Brightpoint, Inc., is the owner of record of and is using the incontestable
`
`U.S. Service Mark Registration 2,353,363 issuing May 30, 2000 for the mark
`
`BRIGHTPOINT for the following services:
`
`

`
`Distributorships in the field of wireless communication equipment,
`
`namely, distributorships for wireless telephones and wireless telephone
`
`battery chargers, battery eliminators, replacement batteries, wattage
`
`boosters, hands free headsets and kits, holders and cradles, carrying cases
`
`and bags, earphones, Inicrophones, cigarette lighter adapters, antennae,
`
`hang—up cups, handset extension cables, power cables, and data cables to
`
`order and specification; management of inventory in Class 35 with the
`
`date of first use of September 15, 1995;
`
`Financial services relating to wireless communication equipment, namely
`
`accounts receivable management, credit and collection processing, and
`
`credit risk retention in Class 36 with a first use date of July 13, 1996.
`
`Repair and refurbishing of wireless communication equipment in Class 37
`
`with a first use date of July 13, 1996;
`
`Inventory storage and management of wireless communication equipment
`
`for others in Class 39 with a first use date of July 13, 1996;
`
`Packaging design for wireless communications equipment for others in
`
`Class 42 with a first use date of July 13, 1996
`
`1 5.
`
`Brightpoint, Inc. is the owner of record of and is using the uncontestable
`
`U.S. Service Mark Registration 2,729,911 issuing June 24, 2003 for the mark
`
`BRIGHTPOINT ONLINE for the following services:
`
`Distributorships in the field of wireless communication equipment,
`
`namely, distributorships for wireless telephones and wireless telephone
`
`battery chargers, battery eliminators, replacement batteries, wattage
`
`

`
`boosters, hands free headsets and kits, holders and cradles, carrying cases
`
`and bags, earphones, microphones, cigarette lighter adapters, antennae,
`
`hang-up cups, handset extension cables, power cables and data cables;
`
`mail order catalog services featuring wireless communication equipment
`
`and accessories therefore; computerized on-line ordering and product
`
`order fulfillment services in the field of wireless communication
`
`equipment and accessories therefore; inventory management of wireless
`
`communication equipment and accessories therefore for others; packaging
`
`wireless communication equipment and accessories therefore to the order
`
`and specification of others; accounts receivable management services in
`
`the field of wireless communication equipment and accessories therefore
`
`in Class 35 with the date of first use of May 8, 2001;
`
`-
`
`Financial services relating to wireless communication equipment, and
`
`accessories therefore, namely, credit and debt recovery collection services,
`
`and credit risk management services in Class 36 with a first use date of
`
`May 8, 2001;
`
`Repair and refurbishing of wireless communication equipment and
`
`accessories therefore in Class 37 with a first use date of May 8, 2001;
`
`Inventory storage services, namely, storage of wireless communication
`
`equipment and accessories therefore for others Class 39 with a first use
`
`date of May 8, 2001;
`
`

`
`Packaging design for wireless communications equipment and accessories
`
`therefore to the order and specification of others in Class 42 with a first
`
`use date of May 8, 2001.
`
`6.
`
`Brightpoint, Inc. has extensively used its trade name and the Service
`
`Marks BRIGHTPOINT and Design; BRIGHTPOINT; and BRIGHTPOINT ONLINE
`which have become nationally recognized service marks. Brightpoint, Inc. markets a
`
`variety of services under many service marks having the predominant portion thereof
`
`being the word BRIGHTPOINT.
`
`7.
`
`As a result, the public knows and understands Brightpoint, Inc. to be the
`
`source of many services including thoserecited above.
`
`8.
`
`Brightpoint, Inc. has so used its BRIGHTPOINT marks and name in
`
`connection its services that the public has come to associate Brightpoint, Inc.’s marks and
`
`name only with the ghtpoint, Inc. and the public recognizes the marks and name as
`
`indicating that the services so marketed originate with Brightpoint, Inc.
`
`9.
`
`Brightpoint, Inc.’s marks and name are symbolic of the extensive and
`
`valuable goodwill and customer recognition built up through long term use and very
`
`substantial_amounts of advertising and promotional expenditures. By virtue of these
`
`efforts and excellence of its services Brightpoint, Inc. has gained for the BRIGHTPOINT
`
`marks a reputation of considerable value.
`
`10.
`
`Brightpoint, Inc. has a large number of customers in the U.S. and around‘
`
`the world, and last year handled 83 million wireless devices for its customers—an
`
`estimated 8% of the world-wide market. Brightpoint, Inc.’s revenue in 2007 exceeded $4
`
`

`
`billion. Brightpoint, Inc. regularly advertises its name and marks, including its website,
`
`www.brightpoint.com.
`
`11.
`
`In 2007 Brightpoint, Inc. vvas listed last year in the top 5 in its category on
`
`the Fortune® List of America’s Most Admired Companies.
`
`12.
`
`The instant application seeks registration for the mark BRIGHTPOINT for
`
`“investment services in the fields of venture capital and private equity” in International
`
`Class 36.
`
`13:
`
`Brightpoint, Inc.’s stock is publicly traded on NASDAQ under the
`
`symbol, “cell.” Brightpoint, Inc. makes stock offerings and interacts with the
`
`professional investment community.
`
`14.
`
`Upon information and belief, Applicant is either not using or has only
`
`recently begun to use the mark BRIGHTPOINT for the services in International Class 36,
`
`subsequent to Brightpoint, Inc.’s usage.
`
`15.
`
`As set forth in the Notice Counts below, registration and use of the
`
`applied-for mark would create a likelihood of confusion with Opposer’s service marks
`
`and tradename, and Opposer has statutory grounds for opposing registration.
`
`16.
`
`In view of the foregoing, Brightpoint, Inc. is a juristic person that has a
`
`direct and personal interest in the outcome of the proceeding in Application No.
`
`77/457,871, and a reasonable basis for its belief that it will be damaged if the application
`
`issues as a registration.
`
`

`
`LIKELIHOOD OF CONFUSION WITH OPPOSER’S SERVICE MARKS
`
`NOTICE COUNT NO. I:
`
`17.
`
`Brightpoint, Inc. (Opposer) incorporates by reference the prior paragraphs
`
`1-16 and reaffirms same.
`
`18.
`
`Applicant seeks registration of the mark BRIGHTPOINT in International
`
`Class 36 for “investment services in the fields of venture capital and private equity.”
`
`19.
`
`The applied-for mark BRIGHTPOJNT is identical to and confusingly
`
`similar to Opposer’s registered BRIGHTPOINT service marks.
`
`\
`
`20.
`
`The services associated with the BRIGHTPOINT mark as recited by the
`
`applicant are confusingly similar or identical to those services offered by Brightpoint,
`Inc. Especially relevant, for example, is the similarity between, “financial services,”
`
`which are recited among the fields of use in Brightpoint, Inc.’s incontestable
`
`registrations, and “investment services,” which are recited in the field of use in the instant
`
`application.
`
`21.
`
`Likelihood of confusion, under Lanham Act §2(d), exists between
`
`Brightpoint, Inc.’s service mark[s] BRIGHTPOINT and Design; BRIGI-ITPOINT; and
`
`BRIGHTPOINT ONLINE and the Applicant’s mark BRIGHTPOINT when used with
`
`“investment services in the fields of venture capital and private equity.”
`
`22.
`
`In addition, likelihood of confusion under Lanham Act §2(d) exists
`
`between Brightpoint, Inc.’s service mark[s] BRIGHTPOINT and Design;
`
`BRIGHTPOINT; and BRIGHTPOINT ONLINE and Applicant’s mark BRIGHTPOINT
`
`because the marks are used for services that are similar or identical.
`
`

`
`23.
`
`Due to the similarity of Applicant’s mark to Brightpoint, Inc.’s name and
`
`service mark[s], and the commercial and marketing channels for the services offered
`
`under those marks, consumers could reasonably believe, and would be likely to believe,
`
`that Applicant’s services are affiliated with, endorsed or sponsored by Brightpoint, Inc. or
`
`that Brightpoint and Applicant are affiliated or associated entities, all to the considerable
`
`detriment of Brightpoint, Inc..
`
`24.
`
`As a result, persons would be likely to use or seek Applicant’s services
`
`believing the services are provided by Brightpoint, Inc. Such persons would also be
`
`likely to mistakenly believe there to be an affiliation between the parties, or an
`
`endorsement of one by the other. Such confusion would damage Brightpoint, Inc.
`
`LIKELIHOOD OF CONFUSION WITH OPPOSER’S TRADE NAME
`
`' NOTICE COUNT NO. II:
`
`25.
`
`Brightpoint, Inc. (Opposer) incorporates by reference the prior paragraphs
`
`1-24 and reaffirms same.
`
`26.
`
`The applied—for mark BRIGHTPOINT is confusingly similar to Opposer’s
`
`trade names.
`
`27.
`
`The services associated with the BRIGHTPOINT mark as recited by the
`
`applicant are confusingly similar or identical to those services offered by Brightpoint, ’
`
`Inc. in association with its trade names.
`
`28.
`
`Likelihood of confusion, under Lanham Act §2(d), exists between
`
`Brightpoint, Inc.’s trade names and the Applicant’s mark BRIGHTPOINT when used
`
`with “investment services in the fields of venture capital and private equity.”
`
`

`
`29.
`
`In addition, likelihood of confusion under Lanham Act §2(d) exists
`
`between Brightpoint, Inc.’s trade names and Applicant’s mark BRIGHTPOINT because
`
`the marks are used for services and channels of trade that are similar or identical.
`
`30.
`
`Due to the similarity of Applicant’s mark to Brightpoint, Inc.’s name and
`
`marks, and the commercial and marketing channels for the services offered under those
`
`marks, consumers could reasonably believe Applicant’s services are affiliated with,
`
`endorsed or sponsored by Brightpoint, Inc. or that Brightpoint and Applicant are
`affiliated or associated entities, allto the considerable detriment of Brightpoint, Inc..
`
`31.
`
`As a result, persons familiar with Brightpoint, Inc.’s name or marks would
`
`be likely to use Applicant’s services believing the services are provided by Brightpoint,
`
`Inc.. Such persons would also be likely to mistakenly believe there to be an affiliation
`
`between the parties, or an endorsement of one by the other. Such confusion would
`
`damage Brightpoint, Inc.
`
`NOTICE COUNT NO. III:
`
`DILUTION
`
`32.
`
`Brightpoint, Inc. (Opposer) incorporates by reference the prior paragraphs
`
`1-31 and reaffirms same.
`33.
`Brightpoint, Inc.’s BRIGHTPOINT marks had become famous
`
`nationwide, and internationally, for its services and its business, before Applicant filed its
`
`application for BRIGHTPOINT for investment services in the fields of “venture capital
`
`and private equity.”
`
`34.
`
`Brightpoint, Inc.’s BRIGHTPOINT marks are inherently distinctive, and
`
`are unique. Brightpoint is engaged in substantially exclusive use of the marks.
`
`

`
`35.
`
`Applicant’s intended use of the BRIGHTPOINT mark, or a similar mark,
`
`in interstate commerce, will cause dilution of and blur the distinctive quality of
`
`Brightpoint, Inc.’s famous BRIGHTPOINT marks in violation of Title 15 U.S.C. §
`
`1 125 (c).
`
`36.
`
`If the Applicant were granted the registration herein opposed for the mark
`
`BRIGHTPOINT for its services, it would thereby obtain a prima facia exclusive right to
`
`the use of its mark. Such registration would be a source of damage and injury to
`
`Brightpoint, Inc.
`
`37.
`
`Registration of BRIGHTPOINT would seriously impair the uniqueness of
`
`Brightpoint, Inc.’s name and marks, would diminish the strength of its mark, and would
`
`blur the distinctiveness of its mark.
`
`NOTICE COUNT NO. IV:
`
`ABSENCE OF A BONA FIDE INTENT TO USE
`
`38.
`
`Brightpoint, Inc. (Opposer) incorporates by reference the prior paragraphs
`
`1-37 and reaffirms same.
`
`39.
`
`A search for the purported entity, Brightpoint Management, LLC, named
`
`as Applicant failed to discover any business entity with the indicated name, either at the
`
`address indicated or elsewhere.
`
`40.
`
`A search with the Delaware Secretary of State, the state in which
`
`Applicant is purportedly organized according to its oath to the Trademark Office records,
`
`found no such‘ entity.
`
`41.
`
`An internet search for Opposer failed to locate the existence of the
`
`purported Applicant.
`
`10
`
`

`
`42.
`
`A Dun & Bradstreet® search did not find reference to the existence of the
`
`purported Applicant.
`
`43.
`
`Repeated attempts to contact the purported Applicant as well as its counsel
`
`of record to discuss resolution of the dispute have gone unanswered.
`
`44.
`
`Upon. information and belief, the purported Applicant has not begun using
`
`the applied-for mark, either in interstate commerce or otherwise.
`
`45.
`
`Upon information and belief, the purported Applicant has taken no
`
`specific actions in preparation to use the applied—for mark in interstate commerce.
`
`46.
`
`The only indication that the purported Applicant intended to use the
`
`applied—for mark is Applicant’s mere statement of subjective intention. Under a fair,
`
`objective determination based on all the circumstances, on information and belief there
`
`did not exist at the time the application was filed a bona fide intent to use the mark in
`
`interstate commerce by the purported Applicant.
`
`47.
`
`Even had the purported Applicant had a bona fide intent to use the
`
`applied—for mark in interstate commerce at the time of the application, on information and
`
`belief, such a bona fide intent to use ceased to exist during the pendency of the
`
`application, and does not now exist.
`
`WHEREFORE, Brightpoint, Inc. respectfully requests that the Opposition to
`BRIGHTPOINT be sustained and Application Serial No. 77/457,871 be rejected and
`
`denied and not be allowed to issue as a registration.
`
`The fee required in Lanham Act Section 2.6(1) is submitted herewith.
`
`Respectfully submitted,
`
`Brightpoint, Inc.
`
`11
`
`

`
`November 24, 2008
`
`By:
`
`20215565804
`
`9
`
`Daniel J. Lueders
`
`Its Attorney
`Woodard, Emhardt, Moriarty,
`McNett & Henry LLP
`111 Monument Circle, Suite 3700
`
`Indianapolis, Indiana 46204-5137
`(317) 634-3456