Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1130117
`04/28/2021
`
`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 parties oppose registration of the indicated application.
`
`Opposers Information
`
`Name
`
`Entity
`
`Address
`
`Name
`
`Entity
`
`Address
`
`Attorney informa-
`tion
`
`Lenovo PC International Limited
`
`Limited company
`
`Citizenship
`
`Hong Kong
`
`23/F LINCOLN HOUSE
`979 KING'S ROAD
`QUARRY BAY, 0
`HONG KONG
`
`Lenovo (Singapore) Pte. Ltd.
`
`Private Limited Company
`
`Citizenship
`
`Singapore
`
`151 LORONG CHUAN #02-01
`NEW TECH PARK, 556741
`SINGAPORE
`
`ELIZABETH Z. BAUMHART
`TAFT STETTINIUS & HOLLISTER LLP
`ONE INDIANA SQUARE, SUITE 3500
`INDIANAPOLIS, IN 46204
`UNITED STATES
`Primary Email: ebaumhart@taftlaw.com
`Secondary Email(s): pbautista@taftlaw.com, awilcox@taftlaw.com, dock-
`et@taftlaw.com
`3177133500
`
`Docket Number
`
`LEN02-00104
`
`Applicant Information
`
`Application No.
`
`90212872
`
`Publication date
`
`03/30/2021
`
`Opposition Filing
`Date
`
`Applicant
`
`04/28/2021
`
`Opposition Peri-
`od Ends
`
`04/29/2021
`
`Guilin Kushim Trading Co., Ltd.
`RM.312,INFORMATION INCUBATION BUILD A
`INFORMATION IP D-12,HI-TECH ZONE
`QIXING,GUILIN, 541100
`CHINA
`
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 2020/07/27 First Use In Commerce: 2020/07/27
`Opposed goods and services in the class: Smartwatches; Cell phones; Electronic pens; Electronic
`security andsurveillance devices, namely, electronic security tags and labels, acoustic tags, magnetic
`tags; Headsets for mobile telephones; Headsets for virtual reality games; Integrated circuits, integ-
`rated circuit chips, and integrated circuit modules for digital video compression and decompression;
`
`

`

`Personal stereos; Virtual reality glasses; Wireless chargers; Wireless headsets for smartphones
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`1738861
`
`Registration Date
`
`12/08/1992
`
`Application Date
`
`06/29/1990
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`THINK PAD
`
`NONE
`
`Class 009. First use: First Use: 1992/04/16 First Use In Commerce: 1992/07/31
`computers, computer adapter boards, computer peripheral devices and manuals
`supplied therewith
`Class 016. First use: First Use: 1992/04/16 First Use In Commerce: 1992/07/31
`instruction manuals for use with computers, computer adapter boards and com-
`puter peripheral devices
`
`U.S. Registration
`No.
`
`2934258
`
`Registration Date
`
`03/15/2005
`
`Application Date
`
`08/26/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`THINKCENTRE
`
`NONE
`
`Class 009. First use: First Use: 2003/06/13 First Use In Commerce: 2003/06/13
`COMPUTER HARDWARE; COMPUTER WORKSTATIONS COMPRISING A
`CENTRAL PROCESSING UNIT, DISPLAY MONITOR, KEYBOARD, HARD
`AND FLOPPY DISKETTE DRIVES AND OPTIONAL COMPUTERPERIPHER-
`ALS; AND INSTRUCTIONAL MANUALS SOLD THEREWITH
`
`U.S. Registration
`No.
`
`2550628
`
`Registration Date
`
`03/19/2002
`
`Word Mark
`
`THINKLIGHT
`
`Application Date
`
`09/13/1999
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 1999/10/00 First Use In Commerce: 1999/10/00
`COMPUTER HARDWARE; COMPUTER HARDWARE, NAMELY, AN ILLUMIN-
`ATION DEVICE FOR COMPUTER KEYBOARDS AND TERMINALS IN THE
`NATUREOF A LIGHT THAT ILLUMINATES THE COMPUTER KEYBOARD
`AND COMPUTER TERMINAL, AND COMPUTER MANUALS SOLD THERE-
`WITH
`
`U.S. Registration
`No.
`
`1977221
`
`Registration Date
`
`05/28/1996
`
`Application Date
`
`05/18/1994
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`THINKPAD
`
`NONE
`
`Class 009. First use: First Use: 1994/05/00 First Use In Commerce: 1994/05/00
`carrying cases for computers
`Class 018. First use: First Use: 1994/05/00 First Use In Commerce: 1994/05/00
`all purpose carrying cases in the nature of a tote bag
`
`U.S. Registration
`No.
`
`2194267
`
`Registration Date
`
`10/06/1998
`
`Application Date
`
`02/26/1997
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`THINKPAD
`
`NONE
`
`Class 025. First use: First Use: 1997/01/27 First Use In Commerce: 1997/01/30
`sweatshirts, polo shirts, T-shirts, jackets, shirts, clothing caps, visers
`
`U.S. Registration
`No.
`
`3541810
`
`Application Date
`
`03/31/2005
`
`

`

`Registration Date
`
`12/02/2008
`
`Word Mark
`
`Design Mark
`
`THINKPLUS
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2005/03/31 First Use In Commerce: 2005/03/31
`COMPUTER PERIPHERALS
`Class 035. First use: First Use: 2005/03/31 First Use In Commerce: 2005/03/31
`[OUTSOURCING IN THE FIELD OF COMPUTER SOFTWARE AND HARD-
`WARE AND INFORMATION TECHNOLOGY]
`Class 037. First use: First Use: 2005/03/31 First Use In Commerce: 2005/03/31
`REPAIR AND MAINTENANCE OF COMPUTER HARDWARE AND PROVID-
`ING AND PERFORMING WARRANTY REPAIR AND MAINTENANCE OF
`COMPUTER HARDWARE UNDER WARRANTY CONTRACTS
`Class 042. First use: First Use: 2005/03/31 First Use In Commerce: 2005/03/31
`COMPUTER SYSTEM ANALYSIS; REPAIR AND MAINTENANCE OF COM-
`PUTER SOFTWARE; DATA ENCRYPTION SERVICES; PROVIDING AND
`PERFORMING WARRANTY SERVICE AND SUPPORT CONTRACTS ON
`COMPUTER SOFTWARE; CONSULATION IN THE FIELD OF COMPUTER
`SECURITY
`
`U.S. Registration
`No.
`
`3800025
`
`Registration Date
`
`06/08/2010
`
`Word Mark
`
`THINKSERVER
`
`Application Date
`
`01/21/2008
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2008/09/30 First Use In Commerce: 2008/09/30
`Computers, namely, computer servers; computer software, namely, application
`system software for use in controlling the operation and execution of programs
`and network functions on a computer server; documentation and instruction
`manuals recorded on machine readable media, namely, CDs, DVDs and down-
`loadable files relating to computer servers and associated computer programs
`
`U.S. Registration
`No.
`
`3731901
`
`Registration Date
`
`12/29/2009
`
`Word Mark
`
`Design Mark
`
`THINKSTATION
`
`Application Date
`
`09/25/2007
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2008/01/17 First Use In Commerce: 2008/01/17
`Computers; computer hardware; computer software, namely, operating system
`software and application system software for use in controlling the operation and
`execution of programs and network functionson a computer workstation; com-
`puter workstations comprising a central processing unit, display monitor, key-
`board, and optional peripherals and components for computers; documentation
`and instruction manuals recorded on machine readable media and relating to
`computers or computerprograms
`Class 016. First use: First Use: 2008/01/17 First Use In Commerce: 2008/01/17
`Printed documentation and publications directed to users of computer hardware
`and software for computer workstations, namely, user manuals, instructional
`materials, warranty forms, and setup instructions
`
`U.S. Registration
`No.
`
`3009301
`
`Application Date
`
`08/26/2002
`
`Registration Date
`
`10/25/2005
`
`Foreign Priority
`
`NONE
`
`

`

`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`Date
`
`THINKVANTAGE
`
`NONE
`
`Class 009. First use: First Use: 2002/11/00 First Use In Commerce: 2004/02/00
`COMPUTER HARDWARE; COMPUTER SOFTWARE FOR USE AS A COM-
`PUTER OPERATING SYSTEM; [ COMPUTER WORKSTATIONS COMPRIS-
`ING CENTRALPROCESSING UNIT, DISPLAY MONITOR, KEYBOARD, HARD
`AND FLOPPY DISKETTE DRIVES ANDOPTIONAL COMPUTER PERIPHER-
`ALS; ] AND INSTRUCTION MANUALS SOLD AS A UNIT THEREWITH
`Class 016. First use: First Use: 2002/11/00 First Use In Commerce: 2004/02/00
`[ PRINTED MATTER AND PRINTED MATERIALS,namely, MAGAZINES, PERI-
`ODICALS, NEWSPAPERS, BOOKS, BROCHURES, INSTRUCTIONAL, EDU-
`CATIONAL AND TEACHING MATERIAL DIRECTEDTO USERS OF COM-
`PUTER HARDWARE AND SOFTWARE FOR COMPUTER WORKSTATIONS ]
`
`U.S. Registration
`No.
`
`2931692
`
`Registration Date
`
`03/08/2005
`
`Application Date
`
`12/12/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`THINKVISION
`
`NONE
`
`Class 009. First use: First Use: 2003/05/00 First Use In Commerce: 2003/05/00
`COMPUTER HARDWARE; COMPUTER MONITORS; VIDEO PROJECTORS;
`DATA PROJECTORS; DATA/VIDEO PROJECTORS; HAND HELD VIDEO/
`DATA PROJECTORS; AND INSTRUCTION MANUALS SOLD AS A UNIT
`THEREWITH
`Class 016. First use: First Use: 2003/05/00 First Use In Commerce: 2003/05/00
`PRINTED MATTER, NAMELY, BOOKS, BROCHURES, MAGAZINES, IN-
`STRUCTIONAL MANUALS, WRITTEN PRESENTATIONS AND TEACHING
`MATERIALS, ALL IN THE FIELD OF COMPUTERS
`
`U.S. Registration
`No.
`
`5503764
`
`Registration Date
`
`06/26/2018
`
`Word Mark
`
`Design Mark
`
`THINKSYSTEM
`
`Application Date
`
`08/17/2016
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`
`NONE
`
`

`

`Mark
`
`Goods/Services
`
`Class 009. First use: First Use: 2017/07/00 First Use In Commerce: 2017/07/00
`Computer servers; computer storage apparatus; Data storage systems and ac-
`cessories, namely, electronic information storage server systems for use in en-
`terprisestorage applications, network storage, network attached storage and
`storage area networks, consisting of computer hardware, computer peripherals,
`and operatingsystem software; network interface modules for servers, switch
`modules, transceivers and computer accessories; computerswitches that enable
`enhanced input/output (I/O) for an entire rack of computerservers; computer
`switches consisting of hardware and software and capable of facilitating or en-
`abling virtual servers and virtual computers through software or hardware
`design; electrical and electronic connectors, couplers, wires, cables, chargers,
`docks, docking stations, interfaces and adapters for use with all the aforesaid
`goods; transceivers; racks for servers; mounting racks for computer hardware
`and related installation kits; ethernet switches; computer communications soft-
`ware for connecting computer network users and global computer networks;
`computer software for use in database management; computer software devel-
`opment tools; computer software for applicationand database integration; com-
`puter software and hardware for the management, control and networking of
`servers; computer software for use with computer servers, data storage devices
`and computer memory devices; operating systems software; computer software
`for systems administration; software for managing the network configurations of
`a network entity basedon the location of a computational entity in the network;
`computer software forperforming automatic communications switching in com-
`puter networks; computer systems composed of servers, storage and network-
`ing software for the development of virtual computing environments; software for
`telecommunication and communication via local or global communications net-
`works, including the internet, intranets, extranets, mobile communication, cellu-
`lar and satellite networks; user manuals in electronically readable, machine
`readable or computer readable form for usewith and sold as a unit with all the
`aforementioned goods
`
`U.S. Registration
`No.
`
`5863523
`
`Registration Date
`
`09/17/2019
`
`Word Mark
`
`Design Mark
`
`THINKAGILE
`
`Application Date
`
`02/28/2017
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2016/01/01 First Use In Commerce: 2016/01/01
`Computer servers; computer storage apparatus, namely, external computer hard
`drives, blank flash drives, high-speed storage sub-systems for storage and
`backup of electronic data either locally or viaa telecommunications network;
`Data storage systems and accessories, namely, electronic information storage
`server systems for use in enterprise storage applications, network storage, net-
`
`

`

`work attachedstorage and storage area networks, consisting of computer hard-
`ware, computer peripherals, and computer operating systemsoftware; network
`interface modules forservers, network switch modules and transceivers; com-
`puter switches that enableenhanced input/output (I/O) for an entire rack of com-
`puter servers; computer switches consisting of hardware and software used for
`facilitating and enabling virtual servers and virtual computers through the soft-
`ware or hardware design; electrical and electronic connectors, couplers, wires,
`connection cables, computer chargers, computer docks and docking stations,
`computer network interface devices and power adapters for use with all the
`aforesaid goods; transceivers; portable digital electronic devices, namely, port-
`able digital electronic devices for recording, organizing, transmitting, manipulat-
`ing, and reviewing text, data, images, and audio files and software related
`thereto; racks for computer servers; Ethernet switches; computer communica-
`tions software for connecting computer networkusers and global computer net-
`works; computer software for use in database management; computer software
`development tools; computer software for application and database integration;
`computer software and hardware for the management, control and networking of
`computer servers; computer software for use with computer servers, data stor-
`age devices and computer memory devices for database management; com-
`puter operating systems software; computer software for systems administration
`of computer local area networks; computer software for managing the network
`configurations of a network entity basedon the location of a computational entity
`in the network; computer software forperforming automatic communications
`switching in computer networks; virtualization and infrastructure software,
`namely,software used to consolidate applications, servers, and storage media
`and software for automating the provisioning and management of IT infrastruc-
`ture; computer software for database management for use in the telecommunic-
`ation and communication industries and instructional user manuals in electronic-
`ally readable, machine readable or computer readable form for use with and
`sold as a unit with all the aforementioned goods
`
`U.S. Registration
`No.
`
`6059401
`
`Registration Date
`
`05/19/2020
`
`Word Mark
`
`Design Mark
`
`THINKSHIELD
`
`Application Date
`
`07/24/2018
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2018/09/00 First Use In Commerce: 2018/09/00
`Recorded computer software, namely, device security solutions for data protec-
`tion, identity protection, online securityand device security
`
`U.S. Registration
`No.
`
`6119755
`
`Application Date
`
`12/07/2018
`
`Registration Date
`
`08/04/2020
`
`Foreign Priority
`
`NONE
`
`

`

`Word Mark
`
`Design Mark
`
`THINKREALITY
`
`Date
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2020/02/00 First Use In Commerce: 2020/02/00
`Virtual reality headsets; augmented reality headsets; mixed reality headsets,
`namely, headsets with combined virtual reality and augmented reality techno-
`logy; downloadable virtual reality computer software for business management
`and for assisting in the development of advanced AR/VR business software ap-
`plications; downloadable augmented reality computer software for business
`management and for assisting in the development of advanced AR/VR business
`software applications; mixed reality computer software, namely, downloadable
`computer software containingvirtual reality and augmented reality technology for
`business management and for assisting in the development of advanced AR/VR
`business software applications
`
`Attachments
`
`75797819#TMSN.png( bytes )
`78599717#TMSN.png( bytes )
`77376883#TMSN.png( bytes )
`77288252#TMSN.png( bytes )
`87141752#TMSN.png( bytes )
`87352286#TMSN.png( bytes )
`88050824#TMSN.png( bytes )
`88221149#TMSN.png( bytes )
`Notice of Opposition - TAOSTHINK.pdf(2149485 bytes )
`
`Signature
`
`/Elizabeth Z. Baumhart/
`
`Name
`
`Date
`
`Elizabeth Z. Baumhart
`
`04/28/2021
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`LENOVO PC INTERNATIONAL LIMITED
`
`OPPOSITION NO. _____________
`
`SERIAL NO. 90212872
`
`MARK: TAOSTHINK
`
`PUBLISHED: MARCH 30, 2021
`
`
`and
`
`LENOVO (SINGAPORE) PTE. LTD.,
`
`Opposers
`
`vs.
`
`GUILIN KUSHIM TRADING CO., LTD.,
`
` Applicant.
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`Opposers Lenovo PC International Limited and Lenovo (Singapore) Pte. Ltd. (hereinafter,
`
`“Lenovo”) will be damaged by the registration of the mark TAOSTHINK, as applied for by
`
`Applicant Guilin Kushim Trading Co., Ltd. (“Applicant”) in the United States Patent and
`
`Trademark Office (“USPTO”) application no. 90212872. As a result, Lenovo opposes registration
`
`of TAOSTHINK on the USPTO’s Principal Register, on the following grounds:
`
`THE PARTIES
`
`1.
`
`Lenovo PC International Limited is a company organized under the laws of Hong
`
`Kong, having an address and principal place of business of 23/F Lincoln House, 979 King's Road,
`
`Quarry Bay, Hong Kong.
`
`2.
`
`Lenovo (Singapore) Pte. Ltd. is a company organized under the laws of Singapore,
`
`having an address and principal place of business of 151 Lorong Chuan #02-01, New Tech Park,
`
`Singapore 556741.
`
`
`
`1
`
`

`

`3.
`
`Lenovo, with its affiliated Lenovo entities (collectively, “Lenovo”), comprise a
`
`global and well-known technology business with customers located in over 160 countries and with
`
`over 52 thousand employees, worldwide.
`
`4.
`
`Lenovo offers a wide array of technology-related products and services to
`
`consumers, including but not limited to, servers, computer hardware, server storage, networking,
`
`and software products and services; virtual reality and smart device products and services;
`
`smartphones and related accessories; work stations; electrical and electronic connectors, wires,
`
`couplers, chargers, docks, and other computer peripherals, and computers, tablets, laptops,
`
`notebooks and ultrabooks, and related products and services.
`
`5.
`
`Based upon information and belief and USPTO records, Applicant is a Chinese
`
`limited company with an address of Room 312, Information Incubation Build A, Information IP
`
`D-12, Hi-tech Zone, Qixing, Guilin China 518000.
`
`LENOVO’S FAMILY OF THINK MARKS AND APPLICABLE REGISTRATIONS
`
`6.
`
` By way of valid assignment and for adequate consideration (Exhibit A, Trademark
`
`Assignment Abstracts of Title), Lenovo is the assignee and/or owner of a family of federally
`
`registered trademarks that contain the word THINK as a dominant word element (collectively,
`
`“THINK Marks”) and the goodwill associated with those marks.
`
`7.
`
`Lenovo uses the THINK Marks in connection with the advertising, promotion, and
`
`sale of its computer hardware and other computer and technology-related goods in international
`
`classes 009 [IC 009] and 042 [IC 042], as well as in other classes containing computer and
`
`technology-related goods and services, as described below.
`
`
`
`
`
`
`
`2
`
`

`

`
`
`
`
`MARK
`
`REG. NO.
`
`GOODS/SERVICES
`
`THINK PAD
`
`1738861
`
`THINKCENTRE
`
`2934258
`
`THINKLIGHT
`
`2550628
`
`THINKPAD
`
`1977221
`
`THINKPAD
`
`2194267
`
`THINKPLUS
`
`3541810
`
`THINKSERVER
`
`3800025
`
`computers, computer adapter boards, computer
`peripheral devices and manuals supplied therewith
`[IC 009]
`
`instruction manuals for use with computers, computer
`adapter boards and computer peripheral devices [IC
`016]
`computer workstations
`hardware;
`computer
`comprising a central processing unit, display monitor,
`keyboard, hard and floppy diskette drives and
`optional computer peripherals; and instructional
`manuals sold therewith [IC 009]
`
`computer hardware; computer hardware, namely, an
`illumination device for computer keyboards and
`terminals in the nature of a light that illuminates the
`computer keyboard and computer terminal, and
`computer manuals sold therewith [IC 009]
`carrying cases for computers [IC 009]
`
`all purpose carrying cases in the nature of a tote bag
`[IC 018]
`
`
`sweatshirts, polo shirts, T-shirts, jackets, shirts,
`clothing caps, visors [IC 025]
`
`computer peripherals [IC 009]
`
`repair and maintenance of computer hardware and
`providing and performing warranty repair and
`maintenance of computer hardware under warranty
`contracts [IC 037]
`
`
`computer system analysis; repair and maintenance of
`computer
`software; data encryption
`services;
`providing and performing warranty service and
`support contracts on computer software; consulation
`(sic) in the field of computer security [IC 042]
`
`computers, namely, computer servers; computer
`software, namely, application system software for use
`in controlling
`the operation and execution of
`programs and network functions on a computer
`server; documentation and
`instruction manuals
`recorded on machine readable media, namely, CDs,
`DVDs and downloadable files relating to computer
`servers and associated computer programs [IC 009]
`
`
`EXHIBIT
`(TESS
`FORM)
`B
`
`C
`
`D
`
`E
`
`F
`
`G
`
`H
`
`3
`
`

`

`THINKSTATION
`
`3731901
`
`
`
`
`
`
`
`
`THINKVANTAGE
`
`3009301
`
`THINKVISION
`
`2931692
`
`THINKSYSTEM
`
`5503764
`
`I
`
`J
`
`K
`
`L
`
`computers; computer hardware; computer software,
`namely, operating system software and application
`system software for use in controlling the operation
`and execution of programs and network functions on
`a computer workstation; computer workstations
`comprising a central processing unit, display
`monitor, keyboard, and optional peripherals and
`components for computers; documentation and
`instruction manuals recorded on machine readable
`media and relating to computers or computer
`programs [IC 009]
`
`printed documentation and publications directed to
`users of computer hardware and software for
`computer workstations, namely, user manuals,
`instructional materials, warranty forms, and setup
`instructions [IC 016]
`
`computer hardware; computer software for use as a
`computer operating system; [computer workstations
`comprising central processing unit, display monitor,
`keyboard, hard and floppy diskette drives and
`optional computer peripherals;] (sic) and instruction
`manuals sold as a unit therewith [IC 009]
`
`computer hardware; computer monitors; video
`projectors; data projectors; data/video projectors;
`hand held video/data projectors; and instruction
`manuals sold as a unit therewith [IC 009]
`
`printed matter, namely, books, brochures, magazines,
`instructional manuals, written presentations and
`teaching materials, all in the field of computers [IC
`016]
`Computer servers; computer storage apparatus; Data
`storage systems and accessories, namely, electronic
`information storage server systems for use in
`enterprise storage applications, network storage,
`network attached storage and storage area networks,
`consisting of
`computer hardware,
`computer
`peripherals, and operating system software; network
`interface modules for servers, switch modules,
`transceivers and computer accessories; computer
`switches that enable enhanced input/output (I/O) for
`an entire rack of computer servers; computer switches
`consisting of hardware and software and capable of
`facilitating or enabling virtual servers and virtual
`computers through software or hardware design;
`electrical and electronic connectors, couplers, wires,
`cables, chargers, docks, docking stations, interfaces
`and adapters for use with all the aforesaid goods;
`transceivers; racks for servers; mounting racks for
`computer hardware and related installation kits;
`ethernet
`switches;
`computer
`communications
`software for connecting computer network users and
`global computer networks; computer software for use
`in database management; computer
`software
`development tools; computer software for application
`and database integration; computer software and
`hardware
`for
`the management, control and
`networking of servers; computer software for use with
`computer servers, data storage devices and computer
`memory devices; operating systems software;
`computer software
`for systems administration;
`software for managing the network configurations of
`a network entity based on the location of a
`computational entity in the network; computer
`software for performing automatic communications
`switching in computer networks; computer systems
`composed of servers, storage and networking
`
`
`
`4
`
`

`

`THINKAGILE
`
`5863523
`
`M
`
`software for the development of virtual computing
`environments; software for telecommunication and
`communication via local or global communications
`networks, including the internet, intranets, extranets,
`mobile communication, cellular and
`satellite
`networks; user manuals in electronically readable,
`machine readable or computer readable form for use
`with and sold as a unit with all the aforementioned
`goods [IC 009]
`Computer servers; computer storage apparatus,
`namely, external computer hard drives, blank flash
`drives, high-speed storage sub-systems for storage
`and backup of electronic data either locally or via a
`telecommunications network; Data storage systems
`and accessories, namely, electronic
`information
`storage server systems for use in enterprise storage
`applications, network storage, network attached
`storage and storage area networks, consisting of
`computer hardware, computer peripherals, and
`computer operating system software; network
`interface modules for servers, network switch
`modules and transceivers; computer switches that
`enable enhanced input/output (I/O) for an entire rack
`of computer servers; computer switches consisting of
`hardware and software used for facilitating and
`enabling virtual servers and virtual computers
`through the software or hardware design; electrical
`and
`electronic
`connectors,
`couplers, wires,
`connection cables, computer chargers, computer
`docks and docking stations, computer network
`interface devices and power adapters for use with all
`the aforesaid goods; transceivers; portable digital
`electronic devices, namely, portable digital electronic
`devices for recording, organizing,
`transmitting,
`manipulating, and reviewing text, data, images, and
`audio files and software related thereto; racks for
`computer servers; Ethernet switches; computer
`communications software for connecting computer
`network users and global computer networks;
`computer software for use in database management;
`computer software development tools; computer
`software for application and database integration;
`computer software and hardware for the management,
`control and networking of computer servers;
`computer software for use with computer servers,
`data storage devices and computer memory devices
`for database management; computer operating
`systems software; computer software for systems
`administration of computer local area networks;
`computer software for managing
`the network
`configurations of a network entity based on the
`location of a computational entity in the network;
`computer
`software
`for performing automatic
`communications switching in computer networks;
`virtualization and infrastructure software, namely,
`software used to consolidate applications, servers,
`and storage media and software for automating the
`provisioning and management of IT infrastructure;
`computer software for database management for use
`in
`the
`telecommunication and communication
`industries and
`instructional user manuals
`in
`electronically
`readable, machine
`readable or
`computer readable form for use with and sold as a unit
`with all the aforementioned goods [IC 009]
`
`
`
`5
`
`

`

`N
`
`O
`
`THINKSHIELD
`
`6059401
`
`Recorded computer software, namely, device security
`solutions for data protection, identity protection,
`online security and device security [IC 009]
`
`THINKREALITY
`
`6119755
`
`Virtual reality headsets; augmented reality headsets;
`mixed reality headsets, namely, headsets with
`combined virtual reality and augmented reality
`technology; downloadable virtual reality computer
`software for business management and for assisting in
`the development of advanced AR/VR business
`software applications; downloadable augmented
`reality computer software for business management
`and for assisting in the development of advanced
`AR/VR business software applications; mixed reality
`computer software, namely, downloadable computer
`software containing virtual reality and augmented
`reality technology for business management and for
`assisting in the development of advanced AR/VR
`business software applications [IC 009]
`
`
`
`(collectively, the “THINK Registrations”).
`
`8.
`
`Since at least as early as the “first use” and “use in commerce” dates set forth in
`
`each of the THINK Registrations, there has been continuous use in interstate commerce for each
`
`THINK mark through the prior owners of those registrations and/or Lenovo, in connection with
`
`the goods and services described in the THINK Registrations.
`
`9.
`
`Based upon this continuous use, Lenovo owns the exclusive right to use each
`
`THINK Mark since the priority date for each, in connection with the goods and services described
`
`in the THINK Registrations and any natural expansions of those goods and services.
`
`10.
`
`Based upon this continuous use, Lenovo also owns common law rights to the
`
`THINK Marks in connection with the goods and services described in the THINK Registrations
`
`and any natural expansions of those goods or services.
`
`APPLICANT’S APPLIED-FOR MARK
`
`11.
`
`According to USPTO records, on September 26, 2020, Applicant applied for
`
`registration of TAOSTHINK pursuant to use based application, serial no. 90212872 (the
`
`“Application”). (See Exhibit P, TESS Form on the Application).
`
`
`
`6
`
`

`

`12.
`
`Applicant claims to use TAOSTHINK in connection with technology and
`
`computer-related goods in IC 009 namely “Headphones; Smartwatches; Cell phones; Electronic
`
`pens; Electronic security and surveillance devices, namely, electronic security tags and labels,
`
`acoustic tags, magnetic tags; Headsets for mobile telephones; Headsets for virtual reality games;
`
`Integrated circuits, integrated circuit chips, and integrated circuit modules for digital video
`
`compression and decompression; Personal stereos; Protective cases for audio equipment in the
`
`nature of speakers; Stereo headphones; Sunglasses and spectacles; Virtual reality glasses; Wireless
`
`charges; Wireless headsets for smartphones” (hereinafter, the “Applicant’s Goods”).
`
`13.
`
`Applicant’s Goods, in particular, “smartwatches; cell phones; electronic pens;
`
`electronic security and surveillance devices, namely, electronic security tags and labels, acoustic
`
`tags, magnetic tags; headsets for mobile telephones; headsets for virtual reality games; integrated
`
`circuits, integrated circuit chips, and integrated circuit modules for digital video compression and
`
`decompression; personal stereos; virtual reality glasses; wireless chargers; wireless headsets for
`
`smartphones,” are highly related to the goods and services that Lenovo and its predecessors have
`
`been advertising, promoting, and selling under the THINK Marks for years, particularly the IC
`
`009 goods covered under THINK Registration Nos. 1738861, 2934258, 2550628, 1977221,
`
`3541810, 3800025, 3731901, 3009301, 2931692, and 5863523.
`
`14.
`
`15.
`
`Applicant claims it first used TAOSTHINK in commerce on July 27, 2020.
`
`July 27, 2020 is after the dates of first use in interstate commerce for each of the
`
`THINK Registrations and as a result, Lenovo has priority over Applicant with respect to its THINK
`
`Registrations.
`
`COUNT I—OPPOSITION OF APPLICATION BASED UPON LIKELIHOOD OF
`CONFUSION
`
`16.
`
`Lenovo re-alleges paragraphs 1-15 of this Complaint as if fully rewritten herein.
`
`
`
`7
`
`

`

`17.
`
`TAOSTHINK is confusingly similar in appearance, sound, and commercial
`
`impression to each of Lenovo’s registered THINK Marks, which contain the dominant element
`
`“think” in connection with a secondary word element.
`
`18. Moreover, and as also described above, Applicant applied for registration of and
`
`claims it is using TAOSTHINK in connection with computer, technology and virtual reality related
`
`goods in IC 009.
`
`19.
`
`Applicant’s Goods are so similar to Lenovo’s computer and technology-related
`
`goods and services in IC 009, IC 016, IC 037, and IC 042, which Lenovo and its predecessors have
`
`been advertising, marketing, promoting, and selling under the THINK Marks for many years that
`
`there is a high likelihood of consumer confusion. Consumers are likely to mistakenly believe that
`
`Applicant’s Goods emanate from Lenovo because of the wide array of computer and technology-
`
`related goods and services offered by Lenovo.
`
`20.
`
`Because of these confusing similarities, Applicant’s registration of TAOSTHNK
`
`will cause Lenov