Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA820134
`05/10/2017
`
`ESTTA Tracking number:
`
`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
`
`Attorney informa-
`tion
`
`Apple Inc.
`
`05/10/2017
`
`1 Infinite Loop
`Cupertino, CA 95014
`UNITED STATES
`
`Matthew W. Walch
`LATHAM & WATKINS LLP
`330 North Wabash Avenue, Suite 2800
`Chicago, IL 60611
`UNITED STATES
`matthew.walch@lw.com, patrick.justman@lw.com, ipdocket@lw.com
`Phone:(312) 876-7700
`
`Applicant Information
`
`Application No
`
`86884662
`
`Publication date
`
`01/10/2017
`
`Opposition Filing
`Date
`
`Applicant
`
`05/10/2017
`
`Opposition Peri-
`od Ends
`
`05/10/2017
`
`SINGH, ROHIT
`114, Pocket H-17, Sector 7, Rohini
`New Delhi, 110085
`INDIA
`
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 2005/08/23 First Use In Commerce: 2005/08/31
`All goods and services in the class are opposed, namely: Graphical user interface software
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`The mark is merely descriptive
`
`Trademark Act Section 2(e)(1)
`
`The mark is not inherently distinctive and has not
`acquired distinctiveness
`
`Trademark Act Sections 1, 2 and 45; and Section
`2(f)
`
`Applicant not rightful owner of mark for identified
`goods or services
`
`Trademark Act Section 1
`
`Fraud on the USPTO
`
`In re Bose Corp., 580 F.3d 1240, 91 USPQ2d
`1938 (Fed. Cir. 2009)
`
`Marks Cited by Opposer as Basis for Opposition
`
`

`

`U.S. Application/ Registra-
`tion No.
`
`Registration Date
`
`Word Mark
`
`Goods/Services
`
`U.S. Application/ Registra-
`tion No.
`
`Registration Date
`
`Word Mark
`
`Goods/Services
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`
`SplitView
`
`graphical user interface software
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`
`Split View
`
`graphical user interface software
`
`Attachments
`
`Notice of Opposition - Splitview.pdf(158465 bytes )
`Ex. A- Appl.pdf(108653 bytes )
`Ex. B.pdf(109177 bytes )
`Ex. C.pdf(102009 bytes )
`Ex. D.pdf(111643 bytes )
`Ex. E.pdf(95871 bytes )
`Exhibit F.pdf(219020 bytes )
`Exhibit G.pdf(518048 bytes )
`Exhibit H.pdf(236416 bytes )
`Ex. I - Microsoft Dictionary.pdf(173438 bytes )
`Exhibit J.pdf(545334 bytes )
`Exhibit K.pdf(285210 bytes )
`Exhibit L.pdf(125755 bytes )
`Exhibit M.pdf(5586681 bytes )
`Ex. N -Office Action.pdf(654553 bytes )
`Ex. O -Condensed Response to Office Action.pdf(38067 bytes )
`Exibit P - Next Evid.pdf(407461 bytes )
`Exhibit Q.pdf(446701 bytes )
`Exhibit - R.pdf(5892553 bytes )
`
`Signature
`
`/Matthew W. Walch/
`
`Name
`
`Date
`
`Matthew W. Walch
`
`05/10/2017
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`Mark:
`
`Serial Nos.:
`
`Published in the Official Gazette dated January 10, 2017
`
`APPLE INC.
`
`
`
`
`
`
`
`
`
`
`
`v.
`
`
`
`ROHIT SINGH
`
`
`
`
`
`
`
`SPLITVIEW
`
`86/884,662
`
`
`
`
`
`Opposer,
`
`
`
`
`
`
`
`
`
`
`Applicant.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`:
`:
`:
`:
`:
`:
`:
`:
`:
`
`Opposition No.
`
`
`
`NOTICE OF OPPOSITION
`
`Opposer Apple Inc. (“Apple”), with an address at 1 Infinite Loop, Cupertino, CA 95014,
`
`believes that it will be damaged by the registration of the term SPLITVIEW, as shown in
`
`Application Serial No. 86/884,662 (the “Application”) filed by Applicant Rohit Singh
`
`(“Applicant”), and therefore opposes such application for registration.
`
`The grounds for this opposition are as follows:
`
`1.
`
`Applicant is seeking to register the term SPLITVIEW on the Principal Register of
`
`the U.S. Patent & Trademark Office (“PTO”) for “graphical user interface software” in
`
`International Class 9. As explained in more detail below, the Application should be refused
`
`registration and the opposition sustained because: (1) the Applicant does not have any ownership
`
`rights in the SPLITVIEW term; (2) the term SPLITVIEW is inherently descriptive and
`
`unregisterable under 15 U.S.C. § 1052(e); (3) the Applicant cannot establish acquired
`
`

`

`distinctiveness in the SPLITVIEW term under 15 U.S.C. § 1052(f); and (4) the Applicant has
`
`committed fraud on the PTO in connection with its efforts to register the SPLITVIEW term.
`
`In the alternative and to the extent the Application is not refused based on the foregoing grounds,
`
`Apple opposes the Application pursuant to 15 U.S.C. § 1052(d) because Opposer Apple has
`
`senior and superior rights based on its use and the use of its predecessor-in-interest of the
`
`“SplitView” term and “Split View” phrase and the registration of Applicant’s mark for
`
`“graphical user interface software” would be likely to cause confusion with such rights.
`
`I.
`
`The Applicant Lacks Any Ownership Rights in the SPLITVIEW Term
`
`2.
`
`The Application identifies Applicant as an individual with an address at 114,
`
`Pocket H-17, Sector 7, Rohini, New Delhi, India 110085.
`
`3.
`
`Applicant filed the Application on January 24, 2016 under Section 1(a) of the
`
`Trademark Act, and claimed a date of first use of August 23, 2005 and a date of first use in
`
`commerce of August 31, 2005.
`
`4.
`
`The specimen of use submitted with the Application (the “Specimen of Use”)
`
`consists of a page from a website at www.splitview.com (the “splitview.com Website”).
`
`(Exhibit A)
`
`5.
`
`The “About Us” page on the splitview.com Website refers to Vyooh, which is
`
`described as “an innovative software technology company.” The splitview.com Website also
`
`lists the SplitView software product at issue under the heading “Our Products.” (Exhibit B).
`
`The relevant portion of the splitview.com Website appears as follows:
`
`
`
`- 2 -
`
`

`

`
`
`6.
`
`The software described in the Specimen of Use is also described on another
`
`website at www.vyooh.com (the “vyooh.com Website”). The vyooh.com Website refers to
`
`Vyooh as “an innovative software technology company” and lists the SplitView software product
`
`under the heading “Our Products.” (Exhibit C). The relevant portion of the vyooh.com Website
`
`
`
`appears as follows:
`
`
`
`- 3 -
`
`

`

`
`
`7.
`
`On information and belief, Vyooh refers to Vyooh LLC, a California limited
`
`
`
`liability company. (Exhibit D)
`
`8.
`
`The splitview.com Website and the www.vyooh.com Website identify Vyooh as
`
`the source of the SplitView software, not Applicant. In fact, the websites at issue include no
`
`reference to the Applicant. (See Exhibits A-B)
`
`9.
`
`The “Contact Us” page on the splitview.com Website gives an address of “17146
`
`NE Sandy Blvd #INW-CQR, Portland, OR 97230,” and not the Address of Applicant. (Exhibit
`
`E)
`
`10.
`
`The Application contains no explanation of Applicant’s relationship to Vyooh and
`
`no assertion or evidence of any relationship between Applicant and Vyooh.
`
`
`
`- 4 -
`
`

`

`11.
`
`The Application contains no explanation, assertion, or evidence as to how
`
`Applicant can claim trademark rights in the SPLITVIEW term based on Vyooh’s purported use
`
`of the term shown in the Specimen of Use.
`
`12. Moreover, Vyooh is currently suspended from operating within California for a
`
`failure to pay taxes. (Exhibit D)
`
`13.
`
`As a result, Vyooh’s powers, rights, and privileges, including the ability to
`
`operate within California or assign any of its rights, have been suspended and anyone purporting
`
`to act on its behalf is subject to criminal penalties and fines. See Cal. Rev. & Tax Code §§
`
`23301, 19719. Thus, during such suspension, Vyooh could not have assigned any rights to
`
`Applicant, Applicant cannot act on Vyooh’s behalf and continue to sell the “SplitView” product
`
`in commerce, and all contracts entered into by Vyooh are voidable.
`
`14.
`
`In sum, Applicant is not entitled to register the SPLITVIEW term as a trademark
`
`because the Specimen of Use shows that Vyooh, and not Applicant, is the purported source of
`
`the SplitView software and Vyooh is not permitted to conduct business in California, its state of
`
`organization. See 15 U.S.C. § 1051(a)(1).
`
`II.
`
`The SPLITVIEW Term Is Inherently Descriptive And Unregisterable Pursuant to
`15 U.S.C. § 1052(e).
`
`15.
`
`The Specimen of Use provides that the software purportedly identified using the
`
`term SPLITVIEW allows a user to “[s]plit your monitor” into one of “[m]ultiple window
`
`configurations” and “transforms a large single monitor system into a multi-monitor system”.
`
`The relevant portion from the Specimen of Use is displayed below:
`
`
`
`- 5 -
`
`

`

`
`
`
`
`
`
`16.
`
`As reflected by the Specimen of Use’s description of the purported product
`
`identified by the SPLITVIEW term, that term is devoid of any distinctive character and merely
`
`
`
`- 6 -
`
`

`

`descriptive of the goods or characteristics, functions, features, purposes or uses of the specified
`
`goods or services. TMEP § 1209.01(b).
`
`17.
`
`The descriptive nature of the SPLITVIEW term is further established through
`
`consideration of dictionary definitions of the composite elements of the SPLITVIEW term and
`
`widespread industry usage of the analogous “split view” phrase in a descriptive manner. (The
`
`term “SplitView” is a combination of the descriptive words “split” and “view.” In fact, the PTO
`
`recognized as much by assigning the pseudo mark “SPLIT VIEW” to the Application.)
`
`18.
`
`The Shorter Oxford English Dictionary explains that the term “split” means
`
`“made or formed in two or more narrowly separated parts. (Exhibit F)
`
`19.
`
`The Oxford English Dictionary explains that the term “view” means “visual
`
`appearance or aspect,” the “area covered by the eye from one point” and “range of sight or
`
`vision.” (Exhibit G)
`
`20. Within the technology industry, the term “view” is commonly understood to refer
`
`to a display, screen window, viewing device or a graphical user interface for a particular
`
`computer program. For example, the Computer Desktop Encyclopedia, a self-described
`
`“Indispensable Reference on Computers,” defines “view” as follows: “To display and look at
`
`data on screen.” (Exhibit H) Moreover, the Microsoft Computer Dictionary, Fifth Edition
`
`defines view as follows: “The display of data or an image from a given perspective or location”
`
`and “To cause an application to display information on a computer screen.” (Exhibit I)
`
`21.
`
`Consistent with this understanding, many prominent companies, such as
`
`Microsoft Corporation, Samsung Electro-Mechanics Co. Ltd., Oracle Corporation, Apache
`
`Software Foundation, LG Electronics, IBM (International Business Machines), Canon, Inc.,
`
`
`
`- 7 -
`
`

`

`Innero S.A.S., NQR Productions, have used the term “splitview” or phrase “split view” to
`
`describe multi-windowing functionality. For example:
`
`a.
`
`Microsoft has published programming code, referred to as “SplitView class,” to
`
`allow developers to build a control application that “[r]epresents a container with
`
`two views; one for the main content and another view that is typically used for
`
`navigation commands.” Microsoft has also published guidelines that describe this
`
`control application as a “split view control.” Further, a Microsoft user support
`
`article related to certain software products instructs users how to “[s]plit a view to
`
`see two different types of project information—two views—on your screen at the
`
`same time.” In that user support article, Microsoft descriptively refers to this
`
`feature as “a split view.” (Exhibit J)
`
`Samsung has used the phrase “split view” to describe the function performed by
`
`its MultiWindow functionality available on its Galaxy Tab S2 devices. This
`
`functionality allows the user to split the screen of the Samsung device into two
`
`parts and simultaneously work on both applications displayed within the two parts
`
`of the screen. (Exhibit K)
`
`IBM uses the phrase “split view” to describe functional features of many of its
`
`products, such as Rich Page Editor and the IBM Clarity Studio. Regarding its
`
`Rich Page Editor, IBM states that “[t]he Split view combines the Source and
`
`Design views in a split screen view. Changes that you make in one part of the
`
`split screen are automatically updated in the other part. You can split the view
`
`horizontally or vertically.” (Exhibit L)
`
`b.
`
`c.
`
`
`
`- 8 -
`
`

`

`22.
`
`Similarly, Opposer Apple uses the phrase “Split View” to describe a feature in its
`
`OS X El Capitan operating system software for Mac computers, which “lets you fill your Mac
`
`screen with two apps, without having to manually move and resize windows.” Apple also uses
`
`the phrase “Split View” to describe a feature in the iOS 9 operating system software for its iPad
`
`device, which lets users “have two apps open and active at the same time.” (Exhibit M)
`
`23.
`
`Notwithstanding the descriptive nature of this use, Applicant has attempted to rely
`
`on its purported trademark rights in the SPLITVIEW term in India to try to enjoin Opposer from
`
`using the “Split View” descriptive phrase in India. Presumably, Applicant has filed the
`
`Application here to do the same in the United States. To date, Applicant’s legal efforts in India
`
`have been rejected by the Indian courts.
`
`24.
`
`The PTO recognized the descriptive nature of the SPLITVIEW term when it
`
`issued an office action on the Application on May 11, 2016 (the “Office Action”), refusing
`
`registration of SPLITVIEW “because the applied-for mark merely describes a
`
`feature/characteristic/purpose or intended use for applicant’s goods.” (Exhibit N)
`
`25.
`
`The Office Action stated as follows:
`
`In this case, the enclosed evidence from a Google.com search as
`well as the specimen of use in the application record clearly shows
`the use or purpose for applicant’s software is to create a spilt view
`on a computer monitor screen. Specifically, the software allows a
`screen to be divided one or more times to create multiple smaller
`screens within a single monitor screen commonly referred to as a
`split view screen. Further, the enclosed evidence indicates a
`splitview or split view to be a common term of art in the computer
`trade or industry. Therefore, the examining attorney must find the
`proposed mark merely descriptive of the intended use or purpose
`for applicant’s graphic user interface software.
`
`26.
`
`In light of the acknowledged use of the “SplitView” term in a descriptive manner
`
`in the Specimen of Use, the dictionary definitions of the “split” and “view” terms, and the well-
`
`
`
`- 9 -
`
`

`

`established usage of the “splitview” term and “split view” phrase by other parties in the industry,
`
`Applicant cannot claim any trademark rights in the purported mark that is the subject of his
`
`Application pursuant to 15 U.S.C. § 1052(e).
`
`III.
`
`The Applicant Cannot Establish Acquired Distinctiveness in the SPLITVIEW Term
`
`27.
`
`In an effort to avoid the rejection of his application on descriptive grounds,
`
`Applicant filed a response to the Office Action referred to in Paragraphs 24 and 25 on
`
`November 2 and 10, 2016 (collectively, the “Office Action Responses”), asserting a Section 2(f)
`
`claim of acquired distinctiveness and stating that “[t]he mark has become distinctive of the
`
`goods/services through the applicant’s substantially exclusive and continuous use of the mark in
`
`commerce that the U.S. Congress may lawfully regulate for at least the five years immediately
`
`before the date of this statement.” (Exhibit O)
`
`28.
`
`The evidence attached to the November 2 response consists of (a) pages from the
`
`splitview.com Website that refer to the SplitView software and Vyooh, (b) pages with the
`
`heading “Campaign Management – Google AdWords,” and (c) a document captioned “Account
`
`Snapshot Vyooh LLC” which lists “SplitView” under the heading “My Products.”
`
`29.
`
`The evidence attached to the November 10 response consists of (a) a three-page
`
`list with the heading “Representative Sampling of Customers of Applicant” and the notation
`
`“Please refer to the attached Purchase Orders and confirmations,” followed by (b) a series of
`
`emails addressed to sales@vyooh.com, none of which references Applicant.
`
`30.
`
`The evidence attached to the Office Action Responses is collectively referred to
`
`hereinafter as the “Office Action Evidence.” The Office Action Evidence is deficient in several
`
`regards.
`
`
`
`- 10 -
`
`

`

`31.
`
`First, the Office Action Evidence purports to show communications between
`
`purchasers and Vyooh, not Applicant.
`
`32.
`
`Second, the Office Action Evidence purports to show that advertising for the
`
`SplitView software was purchased by Vyooh LLC, not Applicant.
`
`33.
`
`Third, the Office Action Responses and Office Action Evidence contain no
`
`explanation of Applicant’s relationship to Vyooh and no evidence of any relationship between
`
`Applicant and Vyooh.
`
`34.
`
`Fourth, the pages in the Office Action Evidence with the heading “Campaign
`
`Management – Google AdWords” do not list the product being advertised or the purchaser of
`
`advertising. Further, this evidence does not establish any advertising or promotion of a product
`
`identified by the term SPLITVIEW or use of that term in advertising. To the contrary, the
`
`evidence shows that Applicant purchased a variety of generic and descriptive terms, such as “two
`
`monitors, dual monitors, multi monitor,” and “remote desktop,” to advertise the software and
`
`that the “SplitView” term was not even used in the Google AdWords program.
`
`35.
`
`Fifth, all of the alleged purchase orders submitted with the Office Action
`
`Evidence are addressed to sales@vyooh.com.
`
`36.
`
`Sixth, Applicant improperly claimed that the revenues associated with the
`
`SplitView software product established acquired distinctiveness in the “SplitView” term. In the
`
`Office Action Responses, Applicant did not establish any connection between such revenues and
`
`the source identifying nature of the “SplitView” term (as opposed to other functional features of
`
`the software program). In addition, Applicant did not establish such revenues had actually been
`
`generated within the United States. To the contrary, the submitted evidence shows that many of
`
`Vyooh’s (not Applicant’s) sales occurred outside of the United States with persons or entities
`
`
`
`- 11 -
`
`

`

`based in foreign countries, such as Germany. Further, some of these alleged “sales” generated
`
`no revenue for Vyooh, as they only represent customers signing up for a free trial of the
`
`software.
`
`37.
`
`Seventh, the Office Action Evidence contains no evidence showing media
`
`recognition of the term SplitView in association with Applicant. Similarly, even as to Vyooh,
`
`the Office Action Evidence does not demonstrate any meaningful media recognition of that term
`
`in association with the company.
`
`38.
`
`In sum, Applicant’s purported evidence of acquired distinctiveness does not
`
`establish any causal nexus between the “SplitView” term and Vyooh’s advertising expenditures
`
`or the revenues associated with the software product purportedly offered in connection with the
`
`“SplitView” term.
`
`39.
`
`As a consequence of the foregoing, the Office Action Evidence does not support a
`
`finding that U.S. consumers recognize or associate the term SPLITVIEW with Applicant (or
`
`even Vyooh).
`
`40.
`
`Further, and as described in more detail above and below, Applicant is not
`
`entitled to register the term SPLITVIEW under Section 2(f) of the Lanham Act (15 U.S.C. §
`
`1052(f)) because many third parties, including Opposer Apple, used the term prior to and/or
`
`simultaneously with any purported use of the term by Applicant or Vyooh in connection with
`
`computer software. Such third-party use demonstrates that U.S. consumers could not have
`
`exclusively associated the use of that term with Applicant.
`
`41.
`
`Therefore, Applicant has not established acquired distinctiveness in the
`
`SPLITVIEW term pursuant to 15 U.S.C. § 1052(f) because the evidence he has submitted does
`
`not demonstrate that he has engaged in substantially exclusive and continuous use of the term in
`
`
`
`- 12 -
`
`

`

`the United States. Moreover, in light of the extensive third-party use of that descriptive term and
`
`the analogous “split view” phrase as set forth herein, Applicant cannot establish such
`
`substantially exclusive use as required by 15 U.S.C. § 1052(f).
`
`IV.
`
`The Applicant Committed Fraud on the PTO.
`
`42.
`
`As detailed above, many third parties, including Opposer Apple, have used the
`
`“SplitView” term or “Split View” phrase prior to or simultaneously to the time Applicant claims
`
`to have used the same term.
`
`43.
`
`In fact, Apple’s predecessor-in-use NeXT Computer, Inc. (“NeXT”) began using
`
`the term “SplitView” or phrase “Split View” in connection with multi-windowing features in its
`
`products since at least as early as 1993. (Exhibit P)
`
`44.
`
`In 2006, Apple began using the term “SplitView” in relation to Xcode, its
`
`developer environment for its OS X and iOS operating systems. (Exhibit Q)
`
`45.
`
`Apple also has used the “SplitView” term in connection with an application
`
`program interface, called “UISplitViewController”, in the first iPad software development kit in
`
`2010. (Exhibit R)
`
`46.
`
`On information and belief, Applicant was aware of at least certain of Apple’s use
`
`of the “Split View” phrase and certain of the various third parties use of the term “SplitView”
`
`term and “Split View” phrase described in Paragraph 21 prior to his filing of the Application on
`
`January 24, 2016.
`
`47.
`
`Notwithstanding this knowledge, Applicant signed the declaration in the
`
`Application stating that “[t]he signatory believes that to the best of the signatory’s knowledge
`
`and belief, no other persons, except, if applicable, concurrent users, have the right to use the
`
`mark in commerce, either in the identical form or in such near resemblance as to be likely, when
`
`
`
`- 13 -
`
`

`

`used on or in connection with the goods/services of such other persons, to cause confusion or
`
`mistake, or to deceive.”
`
`48.
`
`On information and belief, Applicant’s statement in the Application is not true.
`
`Applicant knew it was not true at the time of submitting the Application, and Applicant stated
`
`this for the purpose of inducing the PTO to approve registration of the Application.
`
`49.
`
`Similarly, Applicant’s statement in the Office Action Responses that he made
`
`“substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may
`
`lawfully regulate for at least the five years immediately before” November 2, 2016 is inaccurate
`
`and Applicant knew as much, because his purported use of the term SPLITVIEW was not
`
`substantially exclusive.
`
`50.
`
`Indeed, Applicant was well aware of Opposer Apple’s prior and simultaneous use
`
`of the “SplitView” term and “Split View” phrase at least as early as November 2, 2016 as a
`
`result of Apple’s submissions to a court in India in the litigation referenced in Paragraph 23 in
`
`the spring of 2016. Applicant also knew of the many third party uses referenced in Paragraphs
`
`21 herein because such uses were cited in Apple’s submissions to the court in India in the spring
`
`of 2016.
`
`51.
`
`Finally, as noted in Paragraphs 12 and 13, Vyooh is suspended from activity in its
`
`purported state of organization as a result of its failure to pay taxes. As a result, it is prohibited
`
`from prosecuting any legal action, such as applying to register a trademark. Applicant appears to
`
`have attempted to circumvent this prohibition by fraudulently filing the Application in his name
`
`and making false statements in connection with his Application, which Applicant knew were
`
`false at the time of submitting his application and were made for the purpose of inducing the
`
`PTO to approve registration of the application.
`
`
`
`- 14 -
`
`

`

`52.
`
`As a consequence of the foregoing, the Application is void as a result of
`
`Applicant’s fraud on the PTO.
`
`IV. Alternative Grounds for Opposition: Applicant’s Use of the “SplitView” Term in
`Connection with the Applied for Goods Is Likely to Cause Confusion, Mistake, or
`Deception with respect to Apple’s Senior and Superior Rights in the “SplitView”
`term and/or “Split View” Phrase.
`53.
`
`In the alternative, and only to the extent that the Board rejects Apple’s position
`
`that: (1) the Applicant does not have any ownership rights in the SPLITVIEW term; (2) the term
`
`SPLITVIEW is inherently descriptive and unregisterable under 15 U.S.C. § 1052(e); (3) the
`
`Applicant cannot establish acquired distinctiveness in the SPLITVIEW term under 15 U.S.C. §
`
`1052(f); and (4) the Applicant has committed fraud on the PTO in connection with its efforts to
`
`register the SPLITVIEW term, Apple opposes the registration of the “SplitView” term for the
`
`goods identified in the Application on likelihood of confusion grounds pursuant to 15 U.S.C. §
`
`1052(d). Apple asserts such grounds in the alternative based on the prior use by Apple and its
`
`predecessor-in-interest of the “SplitView” term and “Split View” phrase for computer software
`
`that provides graphic user interface functionality.
`
`54.
`
`To be clear, Applicant should not be granted any rights to the Split View term for
`
`use with the broad set of goods identified by Applicant – namely, “graphical user interface
`
`software” – for the various grounds set forth above in Paragraphs 1 through 52. However, if the
`
`Board disagrees, Apple asserts, in the alternative, that it or its predecessor-in-interest should be
`
`found to be the senior user of the “SplitView” term and the analogous “Split View” phrase as
`
`detailed in Paragraphs 22 and 42-45. Given this senior use and the fact that Applicant has
`
`applied to register the identical “SplitView” term for such a broad set of goods, Applicant’s
`
`registration of the SPLITVIEW term for “graphical user interface software” is likely to cause
`
`
`
`- 15 -
`
`

`

`confusion, mistake, or deception as to the source, origin, or sponsorship of the parties’ respective
`
`goods and services.
`
`WHEREFORE, Apple prays that U.S. Application Serial No. 86/884,662 be refused
`
`registration and that this opposition be sustained.
`
`Dated: May 10, 2017
`
`
`
`
`
`
`
`Respectfully submitted,
`LATHAM & WATKINS LLP
`
`
`
`
`
`
`
`By:_______________________
`Matthew W. Walch
`330 North Wabash Avenue, Suite 2800
`Chicago, Illinois 60611
`matthew.walch@lw.com
`
`Patrick Justman
`12670 High Bluff Drive
`San Diego, California 92130
`patrick.justman@lw.com
`
`Attorneys for Opposer
`Apple, Inc.
`US-DOCS\87319027
`
`
`
`
`- 16 -
`
`

`

`
`
`
`
`EXHIBIT A
`EXHIBIT A
`
`
`
`
`
`

`

`Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`PTO Form 1478 (Rev 09/2006)
`
`OMB No. 0651-0009 (Exp 02/28/2018)
`
`Trademark/Service Mark Application, Principal Register
`
`TEAS Plus Application
`
`Serial Number: 86884662
`Filing Date: 01/24/2016
`
`NOTE: Data fields with the * are mandatory under TEAS Plus. The wording "(if applicable)" appears where the field is only mandatory
`under the facts of the particular application.
`
`The table below presents the data as entered.
`
`Input Field
`
`Entered
`
`TEAS Plus
`
`MARK INFORMATION
`
`*MARK
`
`*STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`LITERAL ELEMENT
`
`*MARK STATEMENT
`
`REGISTER
`
`YES
`
`SplitView
`
`YES
`
`YES
`
`SplitView
`
`The mark consists of standard characters, without claim to any
`particular font, style, size, or color.
`
`Principal
`
`APPLICANT INFORMATION
`
`*OWNER OF MARK
`
`SINGH, ROHIT
`
`*STREET
`
`*CITY
`
`*COUNTRY
`
`*ZIP/POSTAL CODE
`(Required for U.S. applicants)
`
`PHONE
`
`EMAIL ADDRESS
`
`114, Pocket H-17, Sector 7, Rohini
`
`New Delhi
`
`India
`
`110085
`
`+919013241280
`
`rxsingh@gmail.com
`
`AUTHORIZED TO COMMUNICATE VIA EMAIL
`
`Yes
`
`WEBSITE ADDRESS
`
`http://www.splitview.com
`
`LEGAL ENTITY INFORMATION
`
`*TYPE
`
`* COUNTRY OF CITIZENSHIP
`
`INDIVIDUAL
`
`United States
`
`GOODS AND/OR SERVICES AND BASIS INFORMATION
`
`* INTERNATIONAL CLASS
`
`*IDENTIFICATION
`
`009 
`
`Graphical user interface software
`
`

`

`*FILING BASIS
`
`       FIRST USE ANYWHERE DATE
`
`       FIRST USE IN COMMERCE DATE
`
`       SPECIMEN
`       FILE NAME(S)
`
`       SPECIMEN DESCRIPTION
`
`SECTION 1(a)
`
`At least as early as 08/23/2005
`
`At least as early as 08/31/2005
`
`\\TICRS\EXPORT16\IMAGEOUT
`16\868\846\86884662\xml1\ FTK0003.JPG
`
`Website giving description of the product associated with the
`mark and means to order the product via the Buy Now link.
`
`ADDITIONAL STATEMENTS INFORMATION
`
`*TRANSLATION
`(if applicable)
`
`*TRANSLITERATION
`(if applicable)
`
`*CLAIMED PRIOR REGISTRATION
`(if applicable)
`
`*CONSENT (NAME/LIKENESS)
`(if applicable)
`
`*CONCURRENT USE CLAIM
`(if applicable)
`
`CORRESPONDENCE INFORMATION
`
` 
`
` 
`
` 
`
` 
`
` 
`
`*NAME
`
`*STREET
`
`*CITY
`
`*COUNTRY
`
`*ZIP/POSTAL CODE
`
`PHONE
`
`*EMAIL ADDRESS
`
`SINGH, ROHIT
`
`114, Pocket H-17, Sector 7, Rohini
`
`New Delhi
`
`India
`
`110085
`
`+919013241280
`
`rxsingh@gmail.com
`
`*AUTHORIZED TO COMMUNICATE VIA EMAIL
`
`Yes
`
`FEE INFORMATION
`
`APPLICATION FILING OPTION
`
`NUMBER OF CLASSES
`
`FEE PER CLASS
`
`*TOTAL FEE PAID
`
`SIGNATURE INFORMATION
`
`* SIGNATURE
`
`* SIGNATORY'S NAME
`
`* SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`* DATE SIGNED
`
`TEAS Plus
`
`1
`
`225
`
`225
`
`/rohit singh/
`
`Rohit Singh
`
`Owner
`
`+91 9013241280
`
`01/24/2016
`
`

`

`Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`PTO Form 1478 (Rev 09/2006)
`
`OMB No. 0651-0009 (Exp 02/28/2018)
`
`Trademark/Service Mark Application, Principal Register
`
`TEAS Plus Application
`
`Serial Number: 86884662
`Filing Date: 01/24/2016
`
`To the Commissioner for Trademarks:
`
`MARK: SplitView (Standard Characters, see mark)
`The literal element of the mark consists of SplitView.
`The mark consists of standard characters, without claim to any particular font, style, size, or color.
`
`The applicant, ROHIT SINGH, a citizen of United States, having an address of
`      114, Pocket H-17, Sector 7, Rohini
`      New Delhi 110085
`      India
`      +919013241280(phone)
`      rxsingh@gmail.com
`
`requests registration of the trademark/service mark identified above in the United States Patent and Trademark Office on the Principal Register
`established by the Act of July 5, 1946 (15 U.S.C. Section 1051 et seq.), as amended, for the following:
`
`For specific filing basis information for each item, you must view the display within the Input Table.
`       International Class 009:  Graphical user interface software
`
`Use in Commerce: The applicant is using the mark in commerce on or in connection with the identified goods/services. The applicant attaches, or
`will later submit, one specimen as a JPG/PDF image file showing the mark as used in commerce on or in connection with any item in the class of
`listed goods/services, regardless of whether the mark itself is in the standard character format or is a stylized or design mark. The specimen image
`file may be in color, and the image must be in color if color is being claimed as a feature of the mark.
`
`In International Class 009, the mark was first used by the applicant or the applicant's related company or licensee predecessor in interest at least
`as early as 08/23/2005, and first used in commerce at least as early as 08/31/2005, and is now in use in such commerce. The applicant is
`submitting one(or more) specimen(s) showing the mark as used in commerce on or in connection with any item in the class of listed
`goods/services, consisting of a(n) Website giving description of the product associated with the mark and means to order the product via the Buy
`Now link..
`Specimen File1
`
`For informational purposes only, applicant's website address is: http://www.splitview.com
`The applicant's current Correspondence Information:
`
`      SINGH, ROHIT
`
`      114, Pocket H-17, Sector 7, Rohini
`
`      New Delhi 110085, India
`
`      +919013241280(phone)
`
`      rxsingh@gmail.com (authorized)
`E-mail Authorization: I authorize the USPTO to send e-mail correspondence concerning the application to the applicant or applicant's attorney
`at the e-mail address provided above. I understand that a valid e-mail address must be maintained and that the applicant or the applicant's
`attorney must file the relevant subsequent application-related submissions via the Trademark Electronic Application System (TEAS). Failure to
`do so will result in an additional processing fee of $50 per international class of goods/services.
`
`A fee payment in the amount of $225 has been submitted with the application, representing payment for 1 class(es).
`
`Declaration
`
`

`

`The signatory believes that: if the applicant is filing the application under 15 U.S.C. § 1051(a), the applicant is the owner of the
`trademark/service mark sought to be registered; the ap