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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1091069
`10/26/2020
`
`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
`
`Oracle America, Inc.
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`10/25/2020
`
`500 ORACLE PARKWAY
`REDWOOD SHORES, CA 94065
`UNITED STATES
`
`LIAN B. ERNETTE
`HOLLAND & HART LLP
`P.O. BOX 8749
`DENVER, CO 80201
`UNITED STATES
`Primary Email: docket@hollandhart.com
`Secondary Email(s): lhtronco@hollandhart.com, lbernette@hollandhart.com,
`ceradoci@hollandhart.com, anmarston@hollandhart.com
`No phone number provided.
`
`Docket Number
`
`Applicant Information
`
`Application No.
`
`88595845
`
`Publication date
`
`04/28/2020
`
`Opposition Filing
`Date
`
`Applicant
`
`10/26/2020
`
`Opposition Peri-
`od Ends
`
`10/25/2020
`
`Jala Group Inc.
`1300 POST OAK BLVD, SUITE 2400
`HOUSTON, TX 77056
`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: Office automation systems comprised of
`computer hardware, wireless and wired electrical controllers, downloadable software and recorded
`software for controlling appliances, audio-visual equipment, lighting, HVAC, security, electrical power,
`and/or networked devices in the internet of things (IoT); downloadable networkmanagement software;
`and downloadable simulation software for simulating network traffic
`
`Class 042. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Developing customized software for others;
`and technical consulting services inthe fields of office automation, software development, datacenter
`architecture,public and private cloud computing solutions, and evaluation and implementationof inter-
`net technology and services
`
`

`

`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`Other
`
`Trademark Act Sections 2 and 43(c)
`
`False Designation of Origin under Section 2(a).
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`2178784
`
`Registration Date
`
`08/04/1998
`
`Application Date
`
`02/07/1995
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`JAVA
`
`NONE
`
`Class 009. First use: First Use: 1996/01/00 First Use In Commerce: 1996/01/00
`computer programs for use in developingand executing other computer pro-
`grams on computers, computer networks, and global communications networks,
`and instruction manuals sold therewith; computer programs for use in navigat-
`ing, browsing, transferring information, and distributing and viewing other com-
`puter programs oncomputers, computer networks and globalcommunications
`networks, and instruction manuals sold therewith
`
`U.S. Registration
`No.
`
`1516265
`
`Registration Date
`
`12/13/1988
`
`Application Date
`
`04/14/1988
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`JAVA
`
`NONE
`
`Class 009. First use: First Use: 1987/09/24 First Use In Commerce: 1987/12/10
`COMPUTER PROGRAMS AND USER MANUALS SOLDAS A UNIT FOR USE
`IN MEASUREMENT AND ANALYSIS OF VIDEO IMAGES FROM COMPOSITE
`VIDEO SOURCES AND PRE-DIGITIZED FORMATS INTHE FIELD OF SCI-
`ENCE, ENGINEERING AND INDUSTRIAL RESEARCH
`
`U.S. Registration
`No.
`
`2298389
`
`Registration Date
`
`12/07/1999
`
`Application Date
`
`03/23/1995
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`JAVA
`
`NONE
`
`Class 038. First use: First Use: 1999/08/04 First Use In Commerce: 1999/08/04
`electronic transmission of data over a global communication network
`
`U.S. Registration
`No.
`
`2501545
`
`Application Date
`
`02/14/2000
`
`

`

`Registration Date
`
`10/30/2001
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`JAVA COMMUNITY PROCESS
`
`NONE
`
`Class 042. First use: First Use: 1998/12/00 First Use In Commerce: 1999/06/00
`information technology development and consulting services and software de-
`velopment and consulting services
`
`U.S. Registration
`No.
`
`2582470
`
`Registration Date
`
`06/18/2002
`
`Application Date
`
`09/25/1995
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`JAVA COMPATIBLE
`
`NONE
`
`Class 009. First use: First Use: 2000/05/23 First Use In Commerce: 2000/05/23
`computer software for use in connectionwith computer networks, and global
`communications networks and instruction manuals sold as a unit therewith
`
`U.S. Registration
`No.
`
`2277260
`
`Registration Date
`
`09/14/1999
`
`Application Date
`
`10/29/1997
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`JAVA COMPATIBLE
`
`NONE
`
`Class 009. First use: First Use: 1996/03/00 First Use In Commerce: 1996/03/00
`computer programs for use in developing, compiling and executing other com-
`puterprograms on computers, computer networks, and global communications
`networks; [computer programs for use in navigating, browsing, transferring in-
`formation, and distributing and viewing other computer programs on computers,
`computer networks, and global communications networks; ] and computer oper-
`ating systems programs
`
`U.S. Registration
`No.
`
`2137780
`
`Registration Date
`
`02/17/1998
`
`Application Date
`
`02/20/1996
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`JAVAONE
`
`NONE
`
`Class 035. First use: First Use: 1996/05/00 First Use In Commerce: 1996/05/00
`arranging and conducting trade shows inthe fields of computer and information
`technology
`Class 041. First use: First Use: 1996/05/00 First Use In Commerce: 1996/05/00
`
`

`

`arranging and conducting educational conferences
`
`U.S. Registration
`No.
`
`2416017
`
`Registration Date
`
`12/26/2000
`
`Application Date
`
`12/01/1995
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`JAVASCRIPT
`
`NONE
`
`Class 009. First use: First Use: 1996/06/00 First Use In Commerce: 1996/06/00
`computer programs, namely, utility programs, language processors and inter-
`preters
`Class 042. First use: First Use: 1996/06/00 First Use In Commerce: 1996/06/00
`providing computer programs, namely, utility programs, language processors
`and interpreters, that may be downloaded from a global computer network
`
`U.S. Registration
`No.
`
`3681468
`
`Registration Date
`
`09/08/2009
`
`Application Date
`
`11/01/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`JAVA
`
`NONE
`
`Class 009. First use: First Use: 2009/06/08 First Use In Commerce: 2009/06/08
`Computer peripherals; [ television set top boxes; ] compact disc players [ ; inter-
`net television hardware, namely, digital television receivers, programmable digit-
`al television recorders, and television decoders; television sets ]
`
`Attachments
`
`NOO JALA 2020.10.26.pdf(123180 bytes )
`
`Signature
`
`Name
`
`Date
`
`/Lian B. Ernette/
`
`Lian B. Ernette
`
`10/26/2020
`
`

`

`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`ORACLE AMERICA, INC.,
`
`
`Opposer,
`
`
`v.
`
`JALA GROUP INC.,
`
`
`Applicant.
`
`Opposition No.:
`
`Mark: JALA
`
`Serial No. 88595845
`
`
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`Oracle America, Inc. (“Opposer”), a Delaware corporation, having a principal place of
`
`business at 500 Oracle Parkway, Redwood Shores, California 94065, believes it will be damaged
`
`by registration of the mark JALA shown in U.S. Trademark Application Serial No. 88595845
`
`(the “Application”), filed by the Applicant on August 28, 2019 for “office automation systems
`
`comprised of computer hardware, wireless and wired electrical controllers, downloadable
`
`software and recorded software for controlling appliances, audio-visual equipment, lighting,
`
`HVAC, security, electrical power, and/or networked devices in the internet of things (IoT);
`
`downloadable network management software; and downloadable simulation software for
`
`simulating network traffic” in Class 09, “distributorship services in the fields of office
`
`automation, computer software, and computer hardware” in Class 35, “charitable services,
`
`namely, providing training in the fields of computer software and computer hardware” in Class
`
`41, and “developing customized software for others; and technical consulting services in the
`
`fields of office automation, software development, datacenter architecture, public and private
`
`cloud computing solutions, and evaluation and implementation of internet technology and
`
`services” in Class 42 and herby opposes the Application in Classes 09 and 42 only. As grounds
`
`
`
`

`

`
`
`for its opposition, Opposer alleges that, upon actual knowledge with respect to itself and its own
`
`actions, and upon information and belief as to other matters:
`
`1.
`
`Since at least as early as January 1996, Opposer adopted and began using JAVA
`
`as a mark in connection with computer software and related services. Opposer’s JAVA products
`
`and services represent a technological breakthrough, which enables computers with previously
`
`incompatible operating systems to communicate with each other, i.e. operate together.
`
`Opposer’s JAVA technology has proven enormously popular, creating a virtual overnight
`
`sensation in the computing field. In addition to the JAVA mark, Opposer has adopted and uses
`
`numerous JAVA-based marks (“JAVA Marks”) in connection with computer hardware and
`
`software products, internet related products and services, and mobile devices (“JAVA
`
`Technologies”). Since its first use in 1996, the JAVA mark has now appeared on billions of
`
`computer screens and mobile communication devices throughout the world.
`
`2.
`
`All of Opposer’s JAVA-based registrations were filed and/or registered on the
`
`Principal Register prior to the date Applicant filed its application for the JALA mark. The
`
`following registered marks of Opposer are valid, subsisting and incontestable by operation of
`
`law: Registration Nos. 2,178,784; 1,516,265; 2,298,389; 2,501,545; 2,582,470; 2,277,260;
`
`2,137,780; 2,416,017; and 3,681,468. They are prima facie evidence of Opposer’s exclusive
`
`right to use its marks in commerce in connection with the goods and services specified in
`
`Oracle’s federal registrations.
`
`3.
`
`As a consequence of Opposer’s extensive use, promotion, licensing and
`
`distribution activity in interstate commerce, the JAVA Marks have become well known in the
`
`computer and technology industry and beyond, identifying Opposer as the exclusive provider of
`
`
`
`2
`
`

`

`
`
`the JAVA Technologies. As a result, Opposer’s family of JAVA Marks has become an
`
`invaluable asset of Opposer and a principal symbol of its goodwill and reputation.
`
`
`
`
`
`COUNT 1
`Likelihood of Confusion
`15 U.S.C. §1052(d)
`
`4.
`
`Since well before the filing date of the Application, Opposer and its predecessors
`
`have used the JAVA Marks in connection with computer-related goods and services. Indeed,
`
`Opposer’s first registration for JAVA issued more than twenty (20) years before the filing date of
`
`the Application.
`
`5.
`
`Applicant’s JALA mark so resembles Opposer’s prior used and registered JAVA
`
`Marks as to be likely, when used in connection with the goods and services set forth in Classes
`
`09 and 42 of the Application, to cause confusion, or to cause mistake, or to deceive under
`
`Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d).
`
`COUNT II
`False Designation of Origin
`15 U.S.C. §1052(a)
`
`
`6.
`
`Opposer’s JAVA Marks convey to consumers the source of Opposer’s high
`
`quality and well-known goods and services.
`
`7.
`
`In view of the similarity of the respective marks, the related nature of the goods
`
`and services of the respective parties, and the well-known nature of Opposer’s JAVA Marks,
`
`Applicant’s registration of the JALA mark, which so closely resembles Opposer’s JAVA Marks,
`
`would falsely suggest a connection between Applicant and Opposer.
`
`8.
`
`Applicant is not connected with or otherwise affiliated with Opposer and
`
`registration should be refused pursuant to Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a).
`
`
`
`
`
`3
`
`

`

`
`
`
`9.
`
`COUNT III
`Likelihood of Dilution
`15 U.S.C. §1125(c)
`
`Opposer’s JAVA Marks have become well-known and famous as a designation of
`
`Opposer’s goods and services.
`
`10.
`
`Opposer’s JAVA Marks became famous well before the filing date of the
`
`Application.
`
`11.
`
`Applicant’s JALA mark so resembles Opposer’s prior used and registered JAVA
`
`Marks as to dilute the distinctive quality of Opposer's marks under Section 43(c) of the Lanham
`
`Act, as amended, 15 U.S.C. 1125(c).
`
`WHEREFORE, Opposer believes that it will be damaged by registration of the mark
`
`shown in Application Serial No. 88595845 and respectfully requests that the opposition be
`
`sustained, and that the registration to Applicant be refused in Classes 09 and 42.
`
`The filing fee of $800 is submitted electronically with this filing. Should this payment
`
`method fail, please charge this fee to Deposit Account No. 08-2623.
`
`Dated: October 26, 2020
`
`
`
`
`
`
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`Respectfully submitted,
`
`
`
`
`
`
`
`/s/ Lian B. Ernette
`Larry H. Tronco
`Lian B. Ernette
`Amanda N. Marston
`HOLLAND & HART LLP
`1800 Broadway Plaza, Suite 300
`Boulder, CO 80302
`Phone: 303-473-2870
`
`Attorneys for Opposer,
`Oracle America, Inc.
`
`
`
`
`
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`4
`
`

`

`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Consistent with the Trademark Trial and Appeal Board Manual of Procedure Rule
`
`309.02(c)(1) (amended June 2018), service of the above NOTICE OF OPPOSITION will
`
`be effected by the Board. To facilitate the Board, the following physical address and email
`
`addresses are available for the Applicant’s Attorney of Record via TSDR:
`
`Matthew Goode
`Chamberlain, Hrdlicka, White, Williams & Aughtry
`1200 Smith Street, Suite 1400
`Houston, Texas 77002
`matthew.goode@chamberlainlaw.com
`dossa.ip@chamberlainlaw.com
`trademarks@chamberlainlaw.com
`aly.dossa@chamberlainlaw.com
`
`15618663_v1
`
`
`
`5
`
`

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