Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA677029
`ESTTA Tracking number:
`06/09/2015
`
`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 ex-
`tension
`Address
`
`ARDUINO S.R.L.
`06/10/2015
`
`VIA ROMANO 12
`SCARMAGNO (TO), 10010
`ITALY
`
`Domestic Rep-
`resentative
`
`Paolo A. Strino
`Attorney for Potential Opposer
`Gibbons PC
`37th Floor
`New York, NY 10119
`UNITED STATES
`ipdocket@gibbonslaw.com, pstrino@gibbonslaw.com,
`TOwens@gibbonslaw.com Phone:2126132023
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`86393928
`06/09/2015
`
`Publication date
`Opposition Peri-
`od Ends
`
`02/10/2015
`06/10/2015
`
`Zilog, Inc.
`1590 Buckeye Drive
`Milpitas, CA 95035
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Integrated circuits; microcontrollers; micro-
`controllers on evaluation circuit boards with support and development software tools for developing
`microcontrollerarchitectures and with software simulators of circuit designs
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Application
`No.
`Registration Date
`
`86400350
`
`NONE
`
`Application Date
`
`09/19/2014
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Word Mark
`Design Mark
`
`ARDUINO
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2005/09/21 First Use In Commerce: 2005/10/31
`Computer peripheral devices; stand-alone, general purpose micro controller
`boards used for calculation and interface tolow voltage electronic components,
`electromechanical components and electronic systems like personal computers,
`modems and wireless devices
`
`U.S. Application/ Registra-
`tion No.
`Registration Date
`Word Mark
`
`Goods/Services
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`ARDUINO (common law trademark) used in U.S. commerce since at
`least as early as 2015
`computer peripheral devices; stand-alone, general purpose micro
`controller boards used for calculation and interface tolow voltage elec-
`tronic components, electromechanical components and electronic
`systems like personal computers, modems and wireless devices
`
`Attachments
`
`86400350#TMSN.png( bytes )
`ZIDUINO Notice of Opposition.pdf(67076 bytes )
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Signature
`Name
`Date
`
`/PAS/
`Paolo A. Strino
`06/09/2015
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In re U.S. Ser. No.: 86/393,928
`Trademark: ZIDUINO
`Filed on: September 12, 2014
`Published on: February 10, 2015
`
`-----------------------------------------------------x
`
`
`
`
`
`
`:
`Arduino S.r.l.
`
`
`
`:
`
`
`
`
`
`
`:
`Opposer,
`:
`
`
`:
`
`
`:
`
`
`:
`
`
`:
`
`
`:
`Applicant.
`:
`
`
`:
`-----------------------------------------------------x
`
`
`
`
`
`
`
`Zilog, Inc.
`
`
`
`
`v.
`
`
`
`
`
`
`
`
`
`
`Opposition No. _________________
`
`NOTICE OF OPPOSITION
`
`Honorable Commissioner for Trademarks
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`In the matter of Trademark Application Ser. No. 86/393,928 for the mark ZIDUINO filed
`
`on September 12, 2014 and published for opposition on February 10, 2015:
`
`Arduino S.r.l., a company organized under the laws of Italy and having address at Via
`
`Romano 12, Scarmagno (TO) 10010, ITALY ("Opposer"), believes that it will be damaged by
`
`the registration of the above-identified mark, and hereby opposes the same.
`
`The grounds for opposition are as follows:
`
`Notice of Opposition
`Arduino S.r.l. v. Zilog, Inc.
`Page 1
`
`

`
`COUNT I
`
`1.
`
`To the best of Opposer’s knowledge, Zilog, Inc., a corporation organized under
`
`the laws of Delaware, and having an address at 1590 Buckeye Drive, Milpitas, CA 95035
`
`(“Applicant”), filed an application on September 12, 2014 seeking to register the trademark
`
`ZIDUINO (sometimes “Applicant’s Trademark”). The particulars of this application are included
`
`Mark
`
`Ser. No.
`
`Goods
`
`Filing Basis
`
`below:
`
`
`
`
`1(b), intent to use
`in commerce
`
`
`ZIDUINO
`
`
`86/393,928
`
`
`Integrated circuits;
`microcontrollers;
`microcontrollers on evaluation
`circuit boards with support and
`development software tools for
`developing microcontroller
`architectures and with software
`simulators of circuit designs in
`International Class 9.
`
`The above-referenced information is evidenced by the publication of said mark in the
`
`Official Gazette on February 10, 2015. Opposer sought and obtained a 90-day extension of time
`
`to file a Notice of Opposition in this matter. Therefore, the current filing is timely.
`
`2.
`
`Opposer is and has been engaged, by itself, and through companies operating
`
`under its direct supervision or control, in the design, manufacture and sale of a wide range of
`
`computer hardware including a variety of microcontroller boards and their accessories intended
`
`to make building interactive objects or environments more accessible, as well as printed circuit
`
`expansion boards that provide or enable, inter alia, GSM connectivity, wireless modules, SD
`
`cards, and Bluetooth. For various years, Opposer has been selling, distributing and providing
`
`such goods and services under the mark ARDUINO throughout the United States, and in many
`
`Notice of Opposition
`Arduino S.r.l. v. Zilog, Inc.
`Page 2
`
`

`
`countries across the world. Opposer’s products are regarded as some of the best devices in their
`
`class.
`
`3.
`
`As a result of the widespread use in interstate commerce, Opposer’s trademark
`
`has acquired extensive goodwill, and is well known and recognized by the public.
`
`4.
`
`Petitioner has filed, inter alia, the following U.S. trademark application:
`
`Mark
`
`Ser. No.
`
`Goods
`
`Filing Basis
`
`
`86/400,350
`Filed on
`September
`19, 2014
`
`
`
`ARDUINO
`
`
`1(a), use in
`commerce
`
`
`Peripheral devices(computer);
`stand alone general purpose micro
`controller boards used for
`calculation and interface to low
`voltage electronic components,
`electromechanical components and
`electronic systems like personal
`computers, modems and wireless
`devices in International Class 9
`
`Printouts of the PTO summary page for this application are attached as Exhibit A.
`
`
`
`5.
`
`For the reasons set forth herein, registration of the proposed mark would damage
`
`Opposer’s exclusive rights in its trademark ARDUINO (sometimes “Opposer’s Trademark”).
`
`Thus, Opposer has a “real interest” in the proceeding as well as a “reasonable basis” that it would
`
`be damaged if the proposed mark registered. Accordingly, Opposer’s standing is not at issue.
`
`6.
`
`For many years, since at least as early as 2005, Opposer has been designing,
`
`manufacturing, and selling its products under the mark ARDUINO throughout the United States
`
`and is currently manufacturing and selling them in U.S. commerce under the mark. Accordingly,
`
`Opposer has acquired common law rights in Opposer’s Trademarks through the exclusive and
`
`continuous use of the mark in U.S. commerce on the products identified under 2. above and in
`
`App. Ser. No.: 86/400,350. Opposer’s trademark rights precede the date of Applicant’s intent to
`
`use application for ZIDUINO.
`
`Notice of Opposition
`Arduino S.r.l. v. Zilog, Inc.
`Page 3
`
`

`
`7.
`
`Applicant is seeking registration for the mark ZIDUINO in the same class as
`
`Opposer’s mark ARDUINO and in connection with substantially similar and related goods, i.e.
`
`microcontrollers, and integrated circuits.
`
`8.
`
`It is clear that the persons encountering them under their respective marks are
`
`likely to assume that they originate at the same source or that there is some association between
`
`their sources. In fact, Applicant's proposed mark and Opposer’s trademark are similar in sound,
`
`appearance, meaning, and commercial impression.
`
`9.
`
`For these reasons, when applied to Applicant’s goods, the ZIDUINO trademark is
`
`likely to cause confusion, to cause mistake, and to deceive the trade and public, who are likely to
`
`believe that Opposer is the source of Applicant’s goods or that such goods are approved,
`
`endorsed, sponsored, produced under license, or somehow associated with Opposer.
`
`10.
`
`The relevant consuming public might also be misled or deceived into believing
`
`that there is an affiliation, connection, or association between Applicant and Opposer, or as to the
`
`origin, sponsorship, or approval of their goods, services, or commercial activities.
`
`11.
`
`Therefore, the Board should find that there is likelihood of confusion under
`
`Section 2(d) between Applicant’s trademark and Opposer’s Marks.
`
`12.
`
`If Applicant is granted a registration for the mark herein opposed, it would obtain
`
`thereby at least a prima facie exclusive right to use the mark for the goods identified in the
`
`registration. Such registration would be a source of damage and injury to Opposer.
`
`13.
`
`Further, Opposer would be injured by the registration of the applied-for mark
`
`ZIDUINO since any defect, objection to, or fault found with Applicant's products sold under the
`
`ZIDUINO mark might reflect on and seriously injure the reputation that Opposer has established
`
`for its goods and business.
`
`Notice of Opposition
`Arduino S.r.l. v. Zilog, Inc.
`Page 4
`
`

`
`14. WHEREFORE, Opposer prays that registration of the mark ZIDUINO in
`
`Application Serial No. 86/393,928 be refused and that this opposition be sustained.
`
`15.
`
`A fee in the amount of $300 as required by 37 C.F.R. §2.6(a)(17) has been
`
`submitted electronically. The Commissioner is authorized to draw on the Deposit Account of
`
`Gibbons P.C., Account No. 03-3839, with reference to file 113217-90285, if the accompanying
`
`fee is insufficient or inadvertently omitted.
`
`Respectfully Submitted,
`
`Dated: June 9, 2015
`
`
`
`
`
`
`
`By:
`
`
`
`Paolo A. Strino, Esq.
`Wendy R. Stein
`Gibbons P.C.
`One Pennsylvania Plaza
`New York, NY 10119
`(212) 613-2023
`ipdocket@gibbonslaw.com
`
`Attorneys for Opposer
`
`
`
`
`
`
`
`Notice of Opposition
`Arduino S.r.l. v. Zilog, Inc.
`Page 5
`
`

`
`CERTIFICATE OF SERVICE AND FILING
`
`
`
`I hereby certify that a true and complete copy of the foregoing NOTICE OF
`
`OPPOSITION, including any exhibits thereof, has been served on Applicant, by mailing said
`
`copy to Applicant’s Attorney of record on June 9, 2015, via First Class Mail, postage prepaid, as
`
`well as e-mail:
`
`Darien K. Wallace
`Imperium Patent Works
`Po Box 607
`Pleasanton, CA 94566-0861
`Email: darien@imperiumpw.Com
`
`
`
`
`
`
`
`A courtesy copy has been mailed to Applicant’s address of record, at 1590 Buckeye
`
`Drive, Milpitas, CA 95035.
`
`The undersigned further certifies that this correspondence is being transmitted
`
`electronically to the Commissioner for Trademarks on June 9, 2015, by filing the same
`
`electronically at http://estta.uspto.gov/filing-type.jsp
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`By
`
`
`
`
`Paolo A. Strino, Esq.
`Gibbons P.C.
`One Pennsylvania Plaza
`New York, NY 10119
`(212) 613-2023
`ipdocket@gibbonslaw.com
`
`
`
`
`
`
`
`Notice of Opposition
`Arduino S.r.l. v. Zilog, Inc.
`Page 6
`
`

`
`
`
`EXHIBIT A
`
`Notice of Opposition
`Arduino S.r.l. v. Zilog, Inc.
`Page 7
`
`

`
`Generated on: This page was generated by TSDR on 2015-06-08 12:07:48 EDT
`
`Mark: ARDUINO
`
`US Serial Number: 86400350
`
`Register: Principal
`
`Mark Type: Trademark
`
`Application Filing Date: Sep. 19, 2014
`
`Status: Applicant's response to a non-final Office action has been entered. The application is being returned to the examining attorney for
`further review. To view all documents in this file, click on the Trademark Document Retrieval link at the top of this page.
`
`Status Date: Jun. 08, 2015
`
`
`
`Mark Literal Elements: ARDUINO
`
`Mark Information
`
`Standard Character Claim: Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
`
`Mark Drawing Type: 4 - STANDARD CHARACTER MARK
`Goods and Services
`
`Note: The following symbols indicate that the registrant/owner has amended the goods/services:
`
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: Computer peripheral devices; stand-alone, general purpose micro controller boards used for calculation and interface to low voltage
`electronic components, electromechanical components and electronic systems like personal computers, modems and wireless
`devices
`
`International Class(es): 009 - Primary Class
`
`U.S Class(es): 021, 023, 026, 036, 038
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: Sep. 21, 2005
`
`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Filed No Basis: No
`
`Use in Commerce: Oct. 31, 2005
`Basis Information (Case Level)
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44D: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Amended Use: No
`
`Amended ITU: No
`
`Amended 44D: No
`
`Amended 44E: No
`
`Currently No Basis: No
`Current Owner(s) Information
`
`Owner Name: ARDUINO S.R.L.
`
`Owner Address: VIA ROMANO 12
`SCARMAGNO (TO) 10010
`ITALY
`
`Legal Entity Type: SOCIETÀ A RESPONSABILITÀ LIMITATA (SRL)
`
`State or Country Where
`Organized:
`Attorney/Correspondence Information
`
`ITALY
`
`Attorney Name: PAOLO A. STRINO
`
`Attorney Primary Email
`Address:
`
`info@lmiplaw.com
`
`Correspondent
`Name/Address:
`
`PAOLO A. STRINO
`Gibbons P.C.
`One Penn Plaza, 37th Floor
`New York, NEW YORK 10119-3701
`
`Attorney of Record
`Docket Number: BUZZ-1001-TM
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`

`
`Proceeding
`Number
`68171
`68171
`68171
`
`6325
`6325
`83182
`
`83182
`
`UNITED STATES
`
`Phone: 212.613.2023
`
`Correspondent e-mail: ipdocket@gibbonslaw.com
`
`Domestic Representative
`Name:
`
`PAOLO A. STRINO
`
`Fax: 212-661-8002
`
`Domestic Representative
`e-mail:
`
`info@lmiplaw.com
`
`Fax: 212.554.9623
`
`Correspondent e-mail
`Authorized:
`
`Yes
`
`Domestic Representative
`
`Phone: 212-661-8000
`
`Domestic Representative
`e-mail Authorized:
`Prosecution History
`
`Yes
`
`Date
`
`Description
`
`Jun. 08, 2015
`Jun. 08, 2015
`May 29, 2015
`May 21, 2015
`Jan. 20, 2015
`Jan. 16, 2015
`Jan. 16, 2015
`Jan. 16, 2015
`Jan. 14, 2015
`Jan. 06, 2015
`Sep. 29, 2014
`Sep. 23, 2014
`
`TEAS/EMAIL CORRESPONDENCE ENTERED
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`ASSIGNED TO LIE
`TEAS RESPONSE TO OFFICE ACTION RECEIVED
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`NOTIFICATION OF NON-FINAL ACTION E-MAILED
`NON-FINAL ACTION E-MAILED
`NON-FINAL ACTION WRITTEN
`AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP
`ASSIGNED TO EXAMINER
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
`NEW APPLICATION ENTERED IN TRAM
`TM Staff and Location Information
`
`TM Attorney: TOOLEY, DAVID E
`
`TM Staff Information
`Law Office Assigned: LAW OFFICE 112
`
`File Location
`
`Current Location: TMEG LAW OFFICE 101
`Date in Location: Jun. 08, 2015
`Assignment Abstract Of Title Information
`
`Summary
`
`Total Assignments: 1
`
`Conveyance: CHANGE OF NAME
`
`Reel/Frame: 5436/0672
`
`Date Recorded: Jan. 08, 2015
`
`Supporting Documents: assignment-tm-5436-0672.pdf
`
`Assignment 1 of 1
`
`
`
`Applicant: Smart Projects S.r.l.
`
`Pages: 8
`
`Name: SMART PROJECTS S.R.L.
`
`Execution Date: Nov. 05, 2014
`
`Legal Entity Type: SOCIETÀ A RESPONSABILITÀ LIMITATA (SRL)
`
`State or Country Where
`Organized:
`
`ITALY
`
`Assignor
`
`Name: ARDUINO S.R.L.
`
`Assignee
`
`Legal Entity Type: SOCIETÀ A RESPONSABILITÀ LIMITATA (SRL)
`
`State or Country Where
`Organized:
`
`ITALY
`
`Address: VIA ROMANO 12
`SCARMAGNO (TO), ITALY 10010
`
`Correspondent
`
`Correspondent Name: PAOLO A. STRINO OF GIBBONS P.C.
`
`Correspondent Address: 37TH FLOOR
`ONE PENNSYLVANIA PLAZA
`NEW YORK, NY 10119
`
`

`
`Domestic Representative - Not Found
`Proceedings
`
`Summary
`
`Number of Proceedings: 2
`
`Type of Proceeding: Opposition
`
`
`
`Filing Date: May 13, 2015
`
`Status Date: May 13, 2015
`
`Defendant
`
`Application Status
`
`Opposition Pending
`Plaintiff(s)
`
`Serial
`Number
`86392678
`
`Registration
`Number
`
`Proceeding Number: 91221913
`
`Status: Pending
`
`Interlocutory Attorney: YONG OH (RICHARD) KIM
`
`Name: Arduino, LLC
`
`Correspondent Address: MARTIN SCHWIMMER
`LEASON ELLIS LLP
`1 BARKER AVE FL 5
`WHITE PLAINS NY , 10601-1523
`
`Correspondent e-mail: tmdocket@leasonellis.com
`
`Associated marks
`
`Mark
`
`ARDUINO YÚN
`
`Name: Arduino S.r.l.
`
`Correspondent Address: Paolo A. Strino
`Gibbons PC
`One Penn Plaza, 37th Floor
`New York NY , 10119
`UNITED STATES
`
`Correspondent e-mail: ipdocket@gibbonslaw.com
`
`Associated marks
`
`Mark
`
`ARDUINO
`
`Entry
`Number
`
`1
`2
`3
`
`Application Status
`
`Response After Non-Final Action - Entered
`Prosecution History
`
`Date
`
`History Text
`
`FILED AND FEE
`
`Serial
`Number
`86400350
`
`Registration
`Number
`
`Due Date
`
`Jun 22, 2015
`
`NOTICE AND TRIAL DATES SENT; ANSWER DUE:
`
`PENDING, INSTITUTED
`
`Proceeding Number: 92060077
`
`Status: Pending
`
`Interlocutory Attorney: ANN LINNEHAN VOGLER
`
`May 13, 2015
`May 13, 2015
`May 13, 2015
`Type of Proceeding: Cancellation
`Filing Date: Oct 03, 2014
`
`Status Date: Oct 03, 2014
`
`Defendant
`
`Name: Arduino, LLC
`
`Correspondent Address: MARTIN B SCHWIMMER
`LEASON ELLIS LLP
`ONE BARKER AVENUE, FIFTH FLOOR
`WHITE PLAINS NY , 10601
`UNITED STATES
`
`Correspondent e-mail: schwimmer@leasonellis.com , levin@leasonellis.com , tmdocket@leasonellis.com
`
`Associated marks
`
`Mark
`
`ARDUINO
`
`ARDUINO
`
`Application Status
`
`Cancellation Pending
`Cancellation Pending
`Plaintiff(s)
`
`Serial
`Number
`77708806
`85144567
`
`Registration
`Number
`3931675
`4113794
`
`Name: Arduino S.r.l.
`
`Correspondent Address: PAOLO A STRINO
`GIBBONS PC
`ONE PENNSYLVANIA PLAZA, 37TH FLOOR
`NEW YORK NY , 10119-3701
`
`

`
`Correspondent e-mail: ipdocket@gibbonslaw.com , pstrino@gibbonslaw.com , paolostrino@gmail.com , TOwens@gibbonslaw.com
`
`UNITED STATES
`
`Application Status
`
`Suspension Letter - Mailed
`Response After Non-Final Action - Entered
`Prosecution History
`
`Registration
`Number
`
`Serial
`Number
`86402315
`86400350
`
`Due Date
`
`Nov 15, 2014
`
`Associated marks
`
`Mark
`
`ARDUINO
`
`Entry
`Number
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`
`History Text
`
`FILED AND FEE
`
`NOTICE AND TRIAL DATES SENT; ANSWER DUE:
`
`PENDING, INSTITUTED
`
`D MOT FOR EXT W/O CONSENT
`
`CHANGE OF CORRESP ADDRESS
`
`P OPP/RESP TO MOTION
`
`ANSWER
`
`EXTENSION OF TIME GRANTED
`
`P CHANGE OF NAME
`
`TRIAL DATES REMAIN AS SET
`
`D MOT TO SUSP PEND DISP CIV ACTION
`
`P OPP/RESP TO MOTION
`
`PAPER RECEIVED AT TTAB
`
`Date
`
`Oct 03, 2014
`Oct 06, 2014
`Oct 06, 2014
`Nov 17, 2014
`Nov 30, 2014
`Nov 30, 2014
`Dec 15, 2014
`Jan 05, 2015
`Jan 12, 2015
`Jan 24, 2015
`Apr 22, 2015
`May 12, 2015
`May 13, 2015