Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1122280
`03/23/2021
`
`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
`
`BlackBerry Limited
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`04/07/2021
`
`2200 UNIVERSITY AVENUE EAST
`WATERLOO, ONT N2K0A7
`CANADA
`
`G. ROXANNE ELINGS
`DAVIS WRIGHT TREMAINE LLP
`1251 AVENUE OF THE AMERICAS, 21ST FL.
`NEW YORK, NY 10020
`UNITED STATES
`Primary Email: blackberry@dwt.com
`Secondary Email(s): roxanneelings@dwt.com, orrinfalby@dwt.com, emilybor-
`ich@dwt.com, faithrobinson@dwt.com, koriturrubiate@dwt.com, BlackBerryRe-
`cords@dwt.com
`(212) 489-8230
`
`Docket Number
`
`101994.805
`
`Applicant Information
`
`Application No.
`
`90062388
`
`Publication date
`
`12/08/2020
`
`Opposition Filing
`Date
`
`Applicant
`
`03/23/2021
`
`Opposition Peri-
`od Ends
`
`04/07/2021
`
`Qumulex, Inc.
`9059 TECHNOLOGY LANE
`FISHERS, IN 46038
`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: Computer hardware and camera hardware
`systems for video surveillance; downloadable software in the nature of a mobile application for ac-
`cessing, configuring, managing, and controlling video surveillance
`
`Class 042. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Platform as a service (PAAS) featuring
`computer software platform for accessing, configuring, managing, and controllingvideo surveillance;
`providing online non-downloadable computer software for accessing configuring, managing, and con-
`trolling video surveillance
`
`

`

`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`Dilution by tarnishment
`
`Trademark Act Sections 2 and 43(c)
`
`Trademark Act Sections 2 and 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`2542411
`
`Registration Date
`
`02/26/2002
`
`Application Date
`
`04/27/2000
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`QNX
`
`NONE
`
`Class 009. First use: First Use: 1983/03/00 First Use In Commerce: 1983/03/00
`Computer operating systems software, namely, software controlling the opera-
`tionof a computer and the execution of programs; computer software which facil-
`itates the creation and execution of visual programs, namely, execution of
`graphical user interfaces; software development software, namely, computer
`software development tools; networking software, namely, software for connect-
`ing computer networks, for distributed computing on local area networks, and for
`use in the transfer of information between computers; webbrowsers; computer
`software for use in the transfer of information and the conduct of commercial
`transactions across local, national and worldwide information networks; multime-
`dia software, namely, computer software to enhance the audio-visual capabilit-
`ies of multimedia applications, namely, for the integration of text, audio, graph-
`ics, still images and moving pictures; and instructional books and guides sold as
`a unit with the software referred to above; downloadable electronic publications,
`namely, book guides and manuals featuring software, computer programming
`and education
`Class 016. First use: First Use: 1983/03/00 First Use In Commerce: 1983/03/00
`Printed books, guides and manuals related to software, computer programming
`andeducation in the field of computers andcomputer software
`Class 041. First use: First Use: 1996/09/00 First Use In Commerce: 1996/09/00
`Computer education training services, namely conducting classes of instruction
`for employees and users of operating system software in the field of computer
`programming
`Class 042. First use: First Use: 1990/00/00 First Use In Commerce: 1990/00/00
`Computer software design and development for others; computer consultations;
`computer programming for others; computer software design for others
`
`U.S. Application
`No.
`
`88716136
`
`Application Date
`
`12/05/2019
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`QNX
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Goods/Services
`
`Class 042. First use: First Use: 0 First Use In Commerce: 0
`
`

`

`Design and development of computer software; Providing temporary use of non-
`downloadable computer software for measuring, assessing, identifying, detect-
`ing, analyzing, preventing, and responding to cybersecurity threats, attacks,
`risks, and vulnerabilities; custom software design and development of real-time
`embedded computer systems for use with automobiles, medical devices, military
`defense systems, industrial process control and automation systems and manu-
`facturing robotics; providing online non-downloadable computer software devel-
`opment tools, namely, computer software development platforms for develop-
`ment of embedded computer systems; design, development and software main-
`tenance of computer systems and software for operation and control of
`autonomous-driving vehicles; providing temporary use of online non-
`downloadable software for operation and control of autonomous-driving
`vehicles; providing temporary use of online non-downloadable software develop-
`ment platforms for developing software applications for use in the automotive
`and transportation sectors, namely, telematics, Advanced Driver Assistance
`Systems comprising electronic sensors, cameras, software and hardware that
`monitor a motor vehicle and its various systems for the purpose of the provision-
`ing of automated driver assistance, and speed control equipment, instrument
`clusters, namely, automotive head-up display, automotive navigation systems,
`vehicle dashboard gauges, engine sound enhancement, hands-free vehicle con-
`trol systems, infotainment systems, and autonomous driving vehicles; providing
`temporary use ofonline non-downloadable software development platforms for
`developing software applications for medical devices; providing temporary use
`of non-downloadable software applications, software development platforms and
`software development tools that enable software developers to program and
`users to build and configure software applications that work in conjunction with
`such non-downloadable software applications, and platforms and development
`tools and to transfer, share, format, manipulate and integrate data, information
`and such developer software applications, platforms and development tools-
`working in conjunction with and betweensuch non-downloadable software ap-
`plications, and platforms and development tools and third party services; provid-
`ing temporary use of online non-downloadable software applications, software
`development platforms, software developer kits (sdks) and software develop-
`ment tools thatenable software developers to design, test, deploy, manage, and
`monitor endpoint devices; computer software services, namely, development,
`maintenance, repair,installation, troubleshooting of problems, support in the
`nature of diagnosing problems, upgrade and updating, authoring, provision of in-
`formation, consultation, design and customization of computer software and
`middleware; computer security consultancy
`
`Attachments
`
`QX U.S. Ser. No. 90062388 - Notice of Opposition.pdf(26007 bytes )
`
`Signature
`
`/GRE/
`
`Name
`
`Date
`
`G. ROXANNE ELINGS
`
`03/23/2021
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application No. 90062388
`Mark: QX
`Published in the Official Gazette on: December 8, 2020
`
`BlackBerry Limited,
`
`v.
`
`Qumulex, Inc.,
`
`Opposer
`
`Applicant.
`
`Opposition No.:
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`NOTICE OF OPPOSITION
`
`BlackBerry Limited (hereinafter referred to as “BlackBerry” or “Opposer”) believes that
`
`it will be damaged by registration of the above-identified trademark and hereby opposes the
`
`registration thereof: As grounds thereof, Opposer is alleged as follows:
`
`Applicant’s Mark
`
`FACTS
`
`1.
`
`Upon information and belief, Qumulex, Inc. (”Applicant”) is a corporation
`
`organized and existing under the laws of the State of Indiana, having a place of business located
`
`at 9059 Technology Lane, Fishers, IN 46038.
`
`2.
`
`On or about July 20, 2020, Applicant filed Trademark Application Serial No.
`
`90062388 (the “Application”), pursuant to Section 1(b) of the Lanham Act, 15 U.S.C. § 1051(b),
`
`to register the trademark QX in standard character format on the Principal Register (“Applicant’s
`
`Mark”).
`
`4840-4196-0927v.1 0101994-000556
`
`

`

`3.
`
`On or about December 8, 2020, Applicant’s Mark was published for opposition in
`
`the Official Trademark Gazette in connection with the following specification of goods and
`
`services (“Applicant’s Goods and Services”):
`
`Class 9: Computer hardware and camera hardware systems for video surveillance;
`downloadable software in the nature of a mobile application for accessing, configuring,
`managing, and controlling video surveillance.
`
`Class 42: Platform as a service (PAAS) featuring computer software platform for
`accessing, configuring, managing, and controlling video surveillance; providing online
`non-downloadable computer software for accessing configuring, managing, and
`controlling video surveillance.
`
`Opposer’s Marks and Business
`
`4.
`
`BlackBerry is a corporation duly organized and existing under the laws of the
`
`Province of Ontario, Canada, having a place of business at 2200 University Avenue East,
`
`Waterloo, Ontario N2K 0A7, Canada.
`
`5.
`
`BlackBerry, including its predecessors-in-interest, is a global leader in the
`
`research, development, design, manufacture, promotion and marketing of innovative technology
`
`and software solutions. BlackBerry’s reputation and distinctive image has been consistently
`
`developed across an expanding number of innovative technology solutions and international
`
`markets. Today, BlackBerry is a leading developer of, inter alia, innovative computer software,
`
`cyber security solutions, computer/device/Internet security and connectivity solutions; embedded
`
`software, operating systems and middleware; cloud computing software; software for use in
`
`managing device-to-device, device-to-cloud and cloud-to-device communications; computer
`
`software for machine-to-machine (M2M) communication; Internet of Things (IoT)
`
`communication integration; software development platforms; Enterprise Mobility Management;
`
`Mobile Device Management; Mobile Applications Management; and automation and process
`
`control solutions (collectively “BlackBerry’s Goods/Services”).
`
`2
`
`

`

`6.
`
`BlackBerry’s expansion and growth over the years is due in large part to the
`
`success of its QNX technology. Since at least as early as 1982, BlackBerry, its predecessor-in-
`
`interest and through its subsidiary, QNX Software Systems, Inc., has used the trademark QNX
`
`(the “QNX Mark”) to identify its goods and services, inter alia, computer/device/Internet
`
`security and connectivity solutions; software development platforms and embedded software,
`
`and operating systems and middleware.
`
`7.
`
`The QNX Mark is used in connection with real-time operating systems,
`
`middleware, development tools, and professional services for connected embedded systems for
`
`developing, inter alia, solutions for indoor home and in-vehicle infotainment, consumer
`
`electronics, navigation, building automation, video surveillance, network switches & routers, and
`
`data center products.
`
`8.
`
`With the QNX Operating System architecture, embedded systems designers can
`
`create compelling, safe, and secure devices built on a highly reliable Operating System serving
`
`as the foundation that helps guard against system malfunctions, malware, and cyber security
`
`breaches.
`
`9.
`
`In 2013, BlackBerry QNX technology encompassed a market share of around
`
`53%, while its closest competitor, Microsoft owned a market share of 27%. According to IHS
`
`Automotive, “QNX has the largest coverage of processors, and all the major MCUs used in
`
`automotive can use the QNX software platform. Safety-critical platforms ... In general, QNX has
`
`the largest portfolio of OS and middleware features compared to its competitors. QNX tends to
`
`be the first to implement for emerging infotainment features; this happens because QNX hears
`
`the requirements early because of its large customer base and can quickly react to customer
`
`requests.”
`
`3
`
`

`

`10.
`
`For more than 35 years, QNX software and services have become inextricably
`
`intertwined in everyday life. The public encounters QNX-controlled systems whenever they
`
`drive, shop, watch TV, use the Internet, or even turn on a light. Due to its ultra-reliable nature,
`
`QNX software is the preferred choice for life-critical systems such as air traffic control systems,
`
`surgical equipment, and nuclear power plants. Due to its unique multimedia features, QNX
`
`software is used in everything from in-dash radios, communications and infotainment systems to
`
`the latest casino gaming terminals.
`
`11.
`
`QNX technologies serve the automotive, industrial, medical, networking and
`
`telecommunication, security and defense, and rail safety markets through distributors and
`
`resellers worldwide and include strategic partnerships with Terralogic Solutions Inc., Apple,
`
`Cybercom Group, Elektrobit Automotive, OpenSynergy, Nuance, Pandora, Red Bend Software,
`
`Rightware Oy, NXP Semiconductors N.V., Altera, Intel, NVIDIA Corporation, Qualcomm,
`
`Renesas Electronics America Inc., Texas Instruments, Xilinx, Advantech, Kontron, and MEN
`
`Mikro Elektronik. Global leaders such as Audi, Cisco, General Electric, Lockheed Martin, and
`
`Siemens depend on QNX technology for building automation and video surveillance, vehicle
`
`infotainment units, network routers, medical devices, industrial automation systems, security and
`
`defense systems, and other mission- or life-critical applications.
`
`12.
`
`As BlackBerry looks to the future, QNX software is paving the way for the
`
`realization of autonomous driving vehicles. As of 2017, BlackBerry software is being use as the
`
`platform for autonomous driving vehicles by at least one OEM systems manufacturer.
`
`4
`
`

`

`13.
`
`The QNX Mark is the subject of the following valid and subsisting United States
`
`trademark application and incontestable registration on the Principal Register:
`
`MARK PARTICULARS
`
`GOODS/SERVICES
`
`QNX
`
`Reg. No: 2542411
`
`Reg. Date: February 26, 2002
`
`QNX
`
`App. No: 88716136
`
`Reg. Date: December 5, 2019
`
`Class 9: Computer operating systems software, namely,
`software controlling the operation of a computer and the
`execution of programs; computer software which facilitates
`the creation and execution of visual programs, namely,
`execution of graphical user interfaces; software development
`software, namely, computer software development tools;
`networking software, namely, software for connecting
`computer networks, for distributed computing on local area
`networks, and for use in the transfer of information between
`computers; web browsers; computer software for use in the
`transfer of information and the conduct of commercial
`transactions across local, national and worldwide
`information networks; multimedia software, namely,
`computer software to enhance the audio-visual capabilities
`of multimedia applications, namely, for the integration of
`text, audio, graphics, still images and moving pictures; and
`instructional books and guides sold as a unit with the
`software referred to above; downloadable electronic
`publications, namely, book guides and manuals featuring
`software, computer programming and education.
`
`Class 16: Printed books, guides and manuals related to
`software, computer programming and education in the field
`of computers and computer software.
`
`Class 41: Computer education training services, namely
`conducting classes of instruction for employees and users of
`operating system software in the field of computer
`programming.
`
`Class 42: Computer software design and development for
`others; computer consultations; computer programming for
`others; computer software design for others.
`
`Class 42: Design and development of computer software;
`Providing temporary use of non-downloadable computer
`software for measuring, assessing, identifying, detecting,
`analyzing, preventing, and responding to cybersecurity
`threats, attacks, risks, and vulnerabilities; custom software
`design and development of real-time embedded computer
`systems for use with automobiles, medical devices, military
`defense systems, industrial process control and automation
`
`5
`
`

`

`MARK PARTICULARS
`
`GOODS/SERVICES
`
`systems and manufacturing robotics; providing online non-
`downloadable computer software development tools,
`namely, computer software development platforms for
`development of embedded computer systems; design,
`development and software maintenance of computer systems
`and software for operation and control of autonomous-
`driving vehicles; providing temporary use of online non-
`downloadable software for operation and control of
`autonomous-driving vehicles; providing temporary use of
`online non-downloadable software development platforms
`for developing software applications for use in the
`automotive and transportation sectors, namely, telematics,
`Advanced Driver Assistance Systems comprising electronic
`sensors, cameras, software and hardware that monitor a
`motor vehicle and its various systems for the purpose of the
`provisioning of automated driver assistance, and speed
`control equipment, instrument clusters, namely, automotive
`head-up display, automotive navigation systems, vehicle
`dashboard gauges, engine sound enhancement, hands-free
`vehicle control systems, infotainment systems, and
`autonomous driving vehicles; providing temporary use of
`online non-downloadable software development platforms
`for developing software applications for medical devices;
`providing temporary use of non-downloadable software
`applications, software development platforms and software
`development tools that enable software developers to
`program and users to build and configure software
`applications that work in conjunction with such non-
`downloadable software applications, and platforms and
`development tools and to transfer, share, format, manipulate
`and integrate data, information and such developer software
`applications, platforms and development tools working in
`conjunction with and between such non-downloadable
`software applications, and platforms and development tools
`and third party services; providing temporary use of online
`non-downloadable software applications, software
`development platforms, software developer kits (sdks) and
`software development tools that enable software developers
`to design, test, deploy, manage, and monitor endpoint
`devices; computer software services, namely, development,
`maintenance, repair, installation, troubleshooting of
`problems, support in the nature of diagnosing problems,
`upgrade and updating, authoring, provision of information,
`consultation, design and customization of computer software
`and middleware; computer security consultancy
`
`6
`
`

`

`14.
`
`BlackBerry operates a website located at the following URL: <www.qnx.com>,
`
`through which it promotes markets and sells its QNX goods and services.
`
`15.
`
`The success of BlackBerry’s QNX software and services has not gone unnoticed
`
`and it benefits from the publicity garnered from unsolicited media coverage. QNX goods and
`
`services have been featured in some of the world’s most widely circulated publications among
`
`the general public and trade, in print and on the Internet.
`
`16.
`
`For more than 30 years, QNX software has been at the forefront of technological
`
`innovation – from inventing the world’s first protected-mode RTOS to creating the first
`
`comprehensive software platform for embedded multi-core processors. This ability to break new
`
`ground and expand the design horizons of embedded developers has led to numerous awards for
`
`innovation, quality, and industry advancement.
`
`17.
`
`By virtue of the extensive distribution and success of the goods and services sold
`
`and rendered thereunder, the QNX Mark is recognized and relied upon by the public and trade
`
`and has come to represent and symbolize the extremely valuable goodwill and widespread
`
`reputation belonging exclusively to BlackBerry.
`
`COUNT I
`LIKELIHOOD OF CONFUSION
`
`18.
`
`Opposer repeats and realleges each and every allegation set forth in paragraphs 1
`
`through 17 herein.
`
`19.
`
`The QNX Mark is famous in the United States and throughout the world.
`
`20.
`
`Opposer commenced use of the QNX Mark well before Applicant filed the
`
`Application and/or commenced use of Applicant’s Mark in United States Commerce in
`
`connection with Applicant’s Goods.
`
`21.
`
`Applicant’s Mark is identical or highly similar to the QNX Mark in sight, sound,
`
`connotation, and overall commercial impression.
`
`7
`
`

`

`22.
`
`Applicant’s Goods are identical, complementary, similar and/or related to the
`
`goods and services with which Opposer is using the QNX Mark.
`
`23.
`
`Applicant’s Goods are identical, complementary, similar, and/or related to the
`
`goods and services for which the QNX Mark is registered.
`
`24.
`
`Applicant’s Mark is likely to cause confusion, mistake, or deception as to the
`
`source of Applicant’s Goods in violation of Section 2(d) of the Lanham Act, 15 U.S.C. §
`
`1052(d).
`
`COUNT II
`DILUTION
`
`25.
`
`Opposer repeats and realleges each and every allegation set forth in paragraphs 1
`
`through 24 herein.
`
`26.
`
`Through Opposer’s extensive advertisement and promotion and substantial sales,
`
`the QNX Mark has become famous in the United States and throughout the world.
`
`27.
`
`Any use by Applicant of Applicant’s Mark has occurred after the QNX Mark
`
`became famous.
`
`28.
`
`Relevant consumers are likely to make an association between Applicant’s Mark
`
`and Opposer’s QNX Mark.
`
`29.
`
`Applicant’s Mark is likely to impair the distinctiveness of Opposer’s QNX Mark.
`
`30.
`
`Applicant’s Mark is likely to blur and/or tarnish the positive associations with
`
`Opposer’s QNX Mark.
`
`31.
`
`Thus, Applicant’s registration and/or use of Applicant’s Mark is likely to cause
`
`dilution of the distinctive quality of Opposer’s QNX Mark in violation of Section 43 of the
`
`Lanham Act, 15 U.S.C. § 1125(c).
`
`8
`
`

`

`WHEREFORE, Opposer prays that this proceeding be sustained and that Application is
`
`refused.
`
`Dated: New York, NY
`March 23, 2021
`
`Respectfully submitted,
`DAVIS WRIGHT TREMAINE LLP
`
`By:
`
`/GRE/
`G. Roxanne Elings
`1251 Avenue of the Americas, 21st Fl.
`New York, NY 10020-1104
`(212) 489-8230 Phone
`(212) 489-8340 Fax
`
`9
`
`