Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1134635
`05/18/2021
`
`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
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`Apple Inc.
`
`05/19/2021
`
`ONE APPLE PARK WAY
`CUPERTINO, CA 95014
`UNITED STATES
`
`J. DAVID MAYBERRY
`KILPATRICK TOWNSEND & STOCKTON LLP
`1114 AVENUE OF THE AMERICAS
`21ST FLOOR
`NEW YORK, NY 10036
`UNITED STATES
`Primary Email: dmayberry@kilpatricktownsend.com
`Secondary Email(s): dmayberry@kilpatricktownsend.com,
`sstadler@kilpatricktownsend.com, agarcia@kilpatricktownsend.com, tmad-
`min@kilpatricktownsend.com
`212-775-8700
`
`Docket Number
`
`Applicant Information
`
`Application No.
`
`90040778
`
`Publication date
`
`01/19/2021
`
`Opposition Filing
`Date
`
`Applicant
`
`05/18/2021
`
`Opposition Peri-
`od Ends
`
`05/19/2021
`
`Shenzhen Guardian Bao Communication Co., Ltd.
`203, BLOCK A, SHENNAN GARDEN SKIRT BLDG.
`KEYUAN ROAD, YUEHAI STREET, NANSHAN DIST
`SHENZHEN, 518000
`CHINA
`
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 2020/06/29 First Use In Commerce: 2020/06/29
`All goods and services in the class are opposed, namely: Cameras; Computers; Eyeglasses; Radi-
`os;Scales; Batteries; Earphones and headphones; Electronic collars to train animals; Protective films
`adapted for smartphones; Rechargeable batteries; Smartphones; Smartwatches; USB cables; USB
`chargingports; USB hubs; Burglar alarms; Mobilephones
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`

`

`No use of mark in commerce before application
`or amendment to allege use was filed
`
`Trademark Act Sections 1(a) and (c)
`
`Dilution by blurring
`
`Trademark Act Sections 2 and 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`3669402
`
`Registration Date
`
`08/18/2009
`
`Word Mark
`
`Design Mark
`
`IPHONE
`
`Application Date
`
`09/26/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2007/01/09 First Use In Commerce: 2007/01/29
`handheld mobile digital electronic devices for the sending and receiving of tele-
`phone calls, electronic mail, and otherdigital data, for use as a digital format au-
`dio player, and for use as a handheld computer, personal digital assist-
`ant,electronic organizer, electronic notepad, and camera
`
`U.S. Registration
`No.
`
`3736978
`
`Registration Date
`
`01/12/2010
`
`Word Mark
`
`Design Mark
`
`IPHONE
`
`Application Date
`
`01/08/2007
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 038. First use: First Use: 2007/06/29 First Use In Commerce: 2007/06/29
`Telecommunication access services; communication by computer; transmission
`of data and of information by electronic means; provision of telecommunications
`connections to computer databases and the Internet; electronic transmission of
`streamed and downloadable audio and video files via computer and other com-
`municationsnetworks; delivery of messages by electronic transmission; provision
`
`

`

`of telecommunications connections to electronic communications networks, for
`transmission or reception of audio, video or multimedia content
`
`U.S. Registration
`No.
`
`3746840
`
`Registration Date
`
`02/09/2010
`
`Word Mark
`
`Design Mark
`
`IPHONE
`
`Application Date
`
`12/15/2007
`
`Foreign Priority
`Date
`
`06/22/2007
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a design of an apple with a bite removed.
`
`Class 009. First use: First Use: 2007/06/29 First Use In Commerce: 2007/06/29
`Handheld mobile digital electronic devices for the sending and receiving of tele-
`phone calls, electronic mail, and otherdigital data, for use as a digital format au-
`dio player, and for use as a handheld computer, personal digital assist-
`ant,electronic organizer, electronic notepad, and camera
`Class 028. First use: First Use: 2007/06/29 First Use In Commerce: 2007/06/29
`Handheld unit for playing electronic games
`Class 038. First use: First Use: 2007/06/29 First Use In Commerce: 2007/06/29
`Telecommunication access services; communication by computer; transmission
`of data and of information by electronic means; provision of telecommunications
`connections to computer databases and the Internet; electronic transmission of
`streamed and downloadable audio and video files via computer and other com-
`municationsnetworks; delivery of messages by electronic transmission; provision
`of telecommunications connections to electronic communications networks, for
`transmission or reception of audio, video or multimedia content
`
`U.S. Registration
`No.
`
`3870782
`
`Registration Date
`
`11/02/2010
`
`Word Mark
`
`Design Mark
`
`IPHONE
`
`Application Date
`
`01/08/2007
`
`Foreign Priority
`Date
`
`09/27/2006
`
`Description of
`
`NONE
`
`

`

`Mark
`
`Goods/Services
`
`Class 009. First use: First Use: 2007/06/29 First Use In Commerce: 2007/06/29
`Full line of parts for mobile telephones; mobile phone accessories, namely, mo-
`bile telephone covers, mobile telephone cases, batteries, rechargeable batter-
`ies,battery chargers, chargers for electricbatteries, headphones, stereo head-
`phones, in-ear headphones, stereo speakers, audio speakers for home, person-
`al stereo speaker apparatus, microphones, car audio adapters, headsets, re-
`mote controls, connection cables, power adapters, docking stations, and adapter
`plugs
`
`U.S. Registration
`No.
`
`3870783
`
`Registration Date
`
`11/02/2010
`
`Word Mark
`
`Design Mark
`
`IPHONE
`
`Application Date
`
`01/08/2007
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2007/06/29 First Use In Commerce: 2007/06/29
`Retail store services and retail store services provided via communications net-
`works all featuring handheld mobile digital electronic devices and other con-
`sumer electronics, computer software, accessories, and carrying cases for such
`devices; product demonstrations provided via communications networks
`
`U.S. Registration
`No.
`
`3877185
`
`Registration Date
`
`11/16/2010
`
`Word Mark
`
`Design Mark
`
`IPHONE
`
`Application Date
`
`09/26/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`NONE
`
`Goods/Services
`
`Class 009. First use: First Use: 2007/06/29 First Use In Commerce: 2007/06/29
`
`

`

`Computer gaming machines, videophones, prerecorded computer programs for
`personal information management, database management software, electronic
`mail and messaging software, database synchronization software, computer
`programs for accessing, browsing and searching online databases, computer
`software and firmware, namely, operating system programs, data synchroniza-
`tion programs, and application development computer software programs for
`personal and handheld computers; software for the redirection of messages, In-
`ternet e-mail, and/or other data to one or more electronic handheld services
`from a data store on or associated with personal computer or a server; software
`forthe synchronization of data between a remote station or device and a fixed or
`remote station or device
`Class 028. First use: First Use: 2008/07/10 First Use In Commerce: 2008/07/10
`Hand-held unit for playing electronic games
`
`U.S. Registration
`No.
`
`4368745
`
`Registration Date
`
`07/16/2013
`
`Word Mark
`
`Design Mark
`
`IPHONE
`
`Application Date
`
`01/08/2007
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 039. First use: First Use: 2007/06/29 First Use In Commerce: 2007/06/29
`Computerized data storage and retrievalservices for digital text, data, im-
`age,audio, and video works; information andconsultation in connection therewith
`
`U.S. Registration
`No.
`
`4372727
`
`Registration Date
`
`07/23/2013
`
`Word Mark
`
`Design Mark
`
`IPHONE
`
`Application Date
`
`01/08/2007
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`NONE
`
`

`

`Goods/Services
`
`Class 009. First use: First Use: 2007/06/29 First Use In Commerce: 2007/06/29
`Downloadable audio files and multimediafiles featuring musical, video, and au-
`dio-video entertainment [ and pamphlets, brochures, newsletters, journals, and
`magazines, ] on [ the subjects of sportingand cultural activities and ] a wide
`range of topics of general interest
`Class 041. First use: First Use: 2007/06/29 First Use In Commerce: 2007/06/29
`Entertainment services, namely, providing non-downloadable pre-recorded mu-
`sic, audio, video, and graphics via a global computer network and wireless net-
`works, and providing non-downloadable electronic publications for browsing
`over computer networks, namely, [ books, pamphlets, brochures, newsletters,
`journals, and ] magazines, on the subjects of computer hardware and software
`applications and a wide range of topics of general interest; providing consulta-
`tion services relating to all of the aforesaid
`
`U.S. Registration
`No.
`
`4425780
`
`Registration Date
`
`10/29/2013
`
`Word Mark
`
`Design Mark
`
`IPHONE
`
`Application Date
`
`12/15/2007
`
`Foreign Priority
`Date
`
`06/22/2007
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a design of an apple with a bite removed.
`
`Class 009. First use: First Use: 2007/06/29 First Use In Commerce: 2007/06/29
`Computer gaming machines, videophones, and computer peripherals
`
`U.S. Registration
`No.
`
`4913876
`
`Registration Date
`
`03/08/2016
`
`Word Mark
`
`Design Mark
`
`IPHONE
`
`Application Date
`
`01/08/2007
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`NONE
`
`Goods/Services
`
`Class 042. First use: First Use: 2007/06/29 First Use In Commerce: 2007/06/29
`
`

`

`computer hardware and software consulting services; multimedia and audio-
`visualsoftware consulting services; providingtechnical troubleshooting support
`for computer systems, databases and applications; providing consultation ser-
`vices fordeveloping computer systems, databases and applications; information
`relating to computer technology provided on-line from a global computer network
`or the Internet; providing search engines for obtaining data via communications
`networks; providing search engines for obtaining data on a global computer net-
`work; computer services, namely, creating indexes ofinformation, and other re-
`sources available on global computer networks for others; customized searching
`at the specificrequest of end users, allowing the end user to browse and retrieve
`information,sites, and other resources available onglobal computer networks;
`and consultation services relating to all the aforesaid
`
`U.S. Registration
`No.
`
`5015541
`
`Registration Date
`
`08/09/2016
`
`Word Mark
`
`Design Mark
`
`IPHONE
`
`Application Date
`
`01/13/2015
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`Attachments
`
`NONE
`
`Class 037. First use: First Use: 2007/06/29 First Use In Commerce: 2007/06/29
`Installation, maintenance, repair, and servicing of consumer electronic devices,
`digital audio and video players, handheld computers, personal digital assistants,
`electronic organizers and electronicnotepads; providing technical support ser-
`vices, namely, technical advice in thefield of installation, maintenance, repair,
`and servicing of consumer electronic devices and accessories therefor; technical
`support services, namely, troubleshooting in the nature of repair of computer
`hardware and electronics problems; information relating to installation, mainten-
`ance, repair, and servicing of computers
`
`77975076#TMSN.png( bytes )
`77977745#TMSN.png( bytes )
`77976400#TMSN.png( bytes )
`77078484#TMSN.png( bytes )
`77078485#TMSN.png( bytes )
`77007808#TMSN.png( bytes )
`77078490#TMSN.png( bytes )
`77078493#TMSN.png( bytes )
`77353055#TMSN.png( bytes )
`77078496#TMSN.png( bytes )
`86501899#TMSN.png( bytes )
`NOTICE OF OPPOSTION - AIFONX.pdf(281981 bytes )
`Exhibits to Notice of Opposition - AIFONX.pdf(3929179 bytes )
`
`Signature
`
`Name
`
`Date
`
`/Sara K. Stadler/
`
`Sara K. Stadler
`
`05/18/2021
`
`

`

`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re Application Serial No.: 90/040,778
`
`Mark:
`
`Filing Date: July 8, 2020
`Publication Date: January 19, 2021
`
`APPLE INC.,
`
`Opposer,
`
`v.
`
`Opposition No. ____________
`
`SHENZHEN GUARDIAN BAO
`COMMUNICATION CO., LTD.,
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`Opposer Apple Inc. (“Apple”), a corporation organized and existing under the laws of
`
`California with a principal place of business at One Apple Park Way, Cupertino, California 95014,
`
`will be damaged by registration of the mark shown below (“Applicant’s Mark”) in Application
`
`Serial No. 90/040,778 (the “Application”) and published in the Official Gazette on January 19,
`
`2021, and accordingly, Apple opposes the Application.
`
`As grounds for this Notice of Opposition, Apple alleges as follows:
`
`1.
`
`Apple designs, manufactures and markets mobile communication and media
`
`devices and personal computers, sells a variety of related software, services, and accessories, and
`
`

`

`offers a wide range of digital content and applications created by third parties. Apple’s products
`
`include the iPhone mobile device and a range of iPhone accessories.
`
`2.
`
`Upon its introduction in 2007, the iPhone line of smartphones achieved an
`
`immediate and extraordinary level of commercial success. By July 2016, just before the device’s
`
`tenth anniversary, Apple sold its one billionth iPhone device, and during a January 2021 earnings
`
`call, Apple recently announced an installed base of more than one billion iPhone devices
`
`worldwide.
`
`3.
`
`Since the introduction of the iPhone device in 2007, Apple has extensively
`
`promoted, marketed and advertised its iPhone smartphone and related products and services in a
`
`variety of media using the IPHONE mark, both alone and in combination with other words and
`
`designs (collectively, the “IPHONE Marks”). Apple prominently features the IPHONE Marks in
`
`television advertisements airing on major television networks, in digital and print advertising in
`
`leading publications, and other digital media
`
`including on Apple’s website at
`
`https://www.apple.com, and in outdoor advertising, among other outlets. Apple also works with its
`
`authorized resellers and its authorized mobile carriers such as Verizon and T-Mobile to
`
`prominently feature the IPHONE Marks in those outlets. Apple also features a subsite dedicated
`
`to the iPhone device and accessories at https://www.apple.com/iphone/.
`
`4.
`
`Among the mobile devices bearing Apple’s IPHONE mark are the iPhone X device,
`
`which Apple introduced on November 3, 2017, and continues to offer for sale; the iPhone XS
`
`device, which Apple introduced on September 21, 2018, and continues to offer for sale; and the
`
`iPhone XR device (presented as
`
`), which Apple introduced on September 12, 2018,
`
`2
`
`

`

`and continues to offer for sale. Select printouts of Apple’s website featuring the iPhone X, iPhone
`
`Xs, and iPhone XR devices are attached as Exhibit A.
`
`5.
`
`As a result of Apple’s substantial and extensive use, advertising and promotion of
`
`the IPHONE Marks, and the extraordinary success of the products and services sold under those
`
`marks, the IPHONE Marks have acquired enormous goodwill and are recognized immediately as
`
`identifying Apple’s IPHONE goods and services.
`
`6.
`
`Due to the long duration, extensive amount and nationwide reach of advertising and
`
`publicity of Apple’s IPHONE mark, the extensive amount, volume and geographic reach of sales
`
`of products and related services sold under that mark, and the high degree of recognition that mark
`
`enjoys, Apple’s IPHONE mark is famous and has been famous since long prior to the filing date
`
`of the Application and the first use date cited therein.
`
`7.
`
`Apple has vigorously and consistently sought to protect and enforce its rights in the
`
`IPHONE Marks, including by registering those rights with the United States Patent and Trademark
`
`Office (the “Office”). Apple owns numerous United States registrations on the Principal Register
`
`for its IPHONE Marks including, without limitation, the following:
`
`Mark
`
`Reg. No.
`
`Dates
`
`Goods and Services
`
`IPHONE
`
`3,669,402*
`
`Class 9: Handheld mobile digital
`electronic devices for the sending and
`receiving of telephone calls, electronic
`mail, and other digital data, for use as a
`digital format audio player, and for use as
`a handheld computer, personal digital
`assistant, electronic organizer, electronic
`notepad, and camera.
`
`Priority date:
`Mar. 27, 2006
`
`Application date:
`Sep. 26, 2006
`
`First use date:
`Jan. 29, 2007
`
`Registration date:
`Aug. 18, 2009
`
`IPHONE
`
`3,736,978*
`
`Application date:
`Jan. 8, 2007
`
`Class 38: Telecommunication access
`services; communication by computer;
`
`3
`
`

`

`Mark
`
`Reg. No.
`
`Dates
`
`First use date:
`Jun. 29, 2007
`
`Registration date:
`Jan. 12, 2010
`
`3,746,840*
`
`Priority date:
`Jun. 22, 2007
`
`First use date:
`Jun. 29, 2007
`
`Filing date:
`Dec. 15, 2007
`
`Goods and Services
`transmission of data and of information by
`electronic means; provision of
`telecommunications connections to
`computer databases and the internet;
`electronic transmission of streamed and
`downloadable audio and video files via
`computer and other communications
`networks; delivery of messages by
`electronic transmission; provision of
`telecommunications connections to
`electronic communications networks, for
`transmission or reception of audio, video
`or multimedia content.
`
`Class 9: Handheld mobile digital
`electronic devices for the sending and
`receiving of telephone calls, electronic
`mail, and other digital data, for use as a
`digital format audio player, and for use as
`a handheld computer, personal digital
`assistant, electronic organizer, electronic
`notepad, and camera.
`
` Registration date:
`Feb. 9, 2010
`
`Class 28: Handheld unit for playing
`electronic games.
`
`Class 38: Telecommunication access
`services; communication by computer;
`transmission of data and of information by
`electronic means; provision of
`telecommunications connections to
`computer databases and the Internet;
`electronic transmission of streamed and
`downloadable audio and video files via
`computer and other communications
`networks; delivery of messages by
`electronic transmission; provision of
`telecommunications connections to
`electronic communications networks, for
`transmission or reception of audio, video
`or multimedia content.
`
`4
`
`

`

`Mark
`
`Reg. No.
`
`Dates
`
`Goods and Services
`
`IPHONE
`
`3,870,782*
`
`IPHONE
`
`3,870,783*
`
`IPHONE
`
`3,877,185*
`
`Priority date:
`Sep. 27, 2006
`
`Application date:
`Jan. 8, 2007
`
`First use date:
`Jun. 29, 2007
`
`Registration date:
`Nov. 2, 2010
`
`Application date:
`Jan. 8, 2007
`
`First use date:
`Jun. 29, 2007
`
`Registration date:
`Nov. 2, 2010
`
`Priority date:
`Mar. 27, 2006
`
`Application date:
`Sep. 26, 2006
`
`First use date:
`Jun. 29, 2007
`
`Registration date:
`Nov. 16, 2010
`
`Class 9: Full line of parts for mobile
`telephones; mobile phone accessories,
`namely, mobile telephone covers, mobile
`telephone cases, batteries, rechargeable
`batteries, battery chargers, chargers for
`electric batteries, headphones, stereo
`headphones, in-ear headphones, stereo
`speakers, audio speakers for home,
`personal stereo speaker apparatus,
`microphones, car audio adapters, headsets,
`remote controls, connection cables, power
`adapters, docking stations, and adapter
`plugs.
`
`Class 35: Retail store services and retail
`store services provided via
`communications networks all featuring
`handheld mobile digital electronic devices
`and other consumer electronics, computer
`software, accessories, and carrying cases
`for such devices; product demonstrations
`provided via communications networks.
`
`Class 9: Computer gaming machines,
`videophones, prerecorded computer
`programs for personal information
`management, database management
`software, electronic mail and messaging
`software, database synchronization
`software, computer programs for
`accessing, browsing and searching online
`databases, computer software and
`firmware, namely, operating system
`programs, data synchronization programs,
`and application development computer
`software programs for personal and
`handheld computers; software for the
`redirection of messages, Internet e-mail,
`and/or other data to one or more electronic
`handheld services from a data store on or
`associated with personal computer or a
`server; software for the synchronization of
`data between a remote station or device
`and a fixed or remote station or device.
`
`IPHONE
`
`4,368,745*
`
`Application date:
`Jan. 8, 2007
`
`Class 39: Computerized data storage and
`retrieval services for digital text, data,
`image, audio, and video works;
`
`5
`
`

`

`Mark
`
`Reg. No.
`
`Dates
`First use date:
`Jun. 29, 2007
`
`Goods and Services
`information and consultation in
`connection therewith.
`
`IPHONE
`
`4,372,727*
`
`Registration date:
`Jul. 16, 2013
`
`Application date:
`Jan. 8, 2007
`
`First use date:
`Jun. 29, 2007
`
`Registration date:
`Jul. 23, 2013
`
`Class 9: Downloadable audio files and
`multimedia files featuring musical, video,
`and audio-video entertainment and
`pamphlets, brochures, newsletters,
`journals, and magazines, on the subjects
`of sporting and cultural activities and a
`wide range of topics of general interest.
`
`Class 41: Entertainment services, namely,
`providing non-downloadable pre-recorded
`music, audio, video, and graphics via a
`global computer network and wireless
`networks, and providing non-
`downloadable electronic publications for
`browsing over computer networks,
`namely, books, pamphlets, brochures,
`newsletters, journals, and magazines, on
`the subjects of computer hardware and
`software applications and a wide range of
`topics of general interest; providing
`consultation services relating to all of the
`aforesaid.
`
`4,425,780*
`
`Priority date:
`Jun. 22, 2007
`
`Class 9: Computer gaming machines,
`videophones, and computer peripherals
`
`IPHONE
`
`4,913,876
`
`Application date:
`Dec. 15, 2007
`
`First use date:
`Jun. 29, 2007
`
`Registration date:
`Oct. 29, 2013
`
`Application date:
`Jan. 8, 2007
`
`First use date:
`Jun. 29, 2007
`
`6
`
`Class 42: Computer hardware and
`software consulting services; multimedia
`and audio-visual software consulting
`services; providing technical
`troubleshooting support for computer
`systems, databases and applications;
`providing consultation services for
`
`

`

`Mark
`
`Reg. No.
`
`Dates
`Registration date:
`Mar. 8, 2016
`
`IPHONE
`
`5,015,541
`
`First use date:
`Jun. 29, 2007
`
`Application date:
`Jan. 13, 2015
`
`Registration date:
`Aug. 9, 2016
`
`Goods and Services
`developing computer systems, databases
`and applications; information relating to
`computer technology provided on-line
`from a global computer network or the
`Internet; providing search engines for
`obtaining data via communications
`networks; providing search engines for
`obtaining data on a global computer
`network; computer services, namely,
`creating indexes of information, and other
`resources available on global computer
`networks for others; customized searching
`at the specific request of end users,
`allowing the end user to browse and
`retrieve information, sites, and other
`resources available on global computer
`networks; and consultation services
`relating to all the aforesaid.
`
`Class 37: Installation, maintenance,
`repair, and servicing of consumer
`electronic devices, digital audio and video
`players, handheld computers, personal
`digital assistants, electronic organizers and
`electronic notepads; providing technical
`support services, namely, technical advice
`in the field of installation, maintenance,
`repair, and servicing of consumer
`electronic devices and accessories
`therefor; technical support services,
`namely, troubleshooting in the nature of
`repair of computer hardware and
`electronics problems; information relating
`to installation, maintenance, repair, and
`servicing of computers.
`
`The foregoing registrations (collectively, the “IPHONE Registrations”) are valid and in full force
`
`and effect, and the registrations marked with an asterisk have become incontestable. Apple’s
`
`IPHONE Registrations constitute prima facie or conclusive evidence of Apple’s exclusive right to
`
`use the registered marks in connection with the goods and services specified in the registrations.
`
`7
`
`

`

`Pursuant to 37 C.F.R. § 2.122(d), printouts from the Office’s electronic TSDR database, showing
`
`the current status and title for each of the IPHONE Registrations, are attached as Exhibit B.
`
`8.
`
`Notwithstanding Apple’s prior rights, and long after Apple’s IPHONE Marks
`
`became well known among the consuming public, Applicant filed the Application on July 8, 2020,
`
`under Section 1(a), 15 U.S.C. § 1051(a), to register Applicant’s Mark for “Cameras; Computers;
`
`Eyeglasses; Radios; Scales; Batteries; Earphones and headphones; Electronic collars to train
`
`animals; Protective films adapted for smartphones; Rechargeable batteries; Smartphones;
`
`Smartwatches; USB cables; USB charging ports; USB hubs; Burglar alarms; Mobile phones” in
`
`Class 9 (“Applicant’s Goods”), citing June 29, 2020, as its date of first use anywhere and in United
`
`States commerce.
`
`9.
`
`Applicant submitted a specimen of use, which purports to show USB cables bearing
`
`Applicant’s Mark for sale on eBay. A true and correct copy of Applicant’s specimen is attached
`
`as Exhibit C.
`
`10.
`
`The URL listed under the eBay listing on Page 3 of Applicant’s specimen
`
`(https://www.ebay.com/itm/aifonx-USB-3-0-Cables/363028055375?hash=item548628854f:g:14
`
`UAAOSwLIJe8Hq0), however, does not correspond to a functioning page, and a search of
`
`eBay.com for “aifonx” does not yield any results. See Exhibit D.
`
`11.
`
`Applicant’s Mark is nearly identical to Apple’s IPHONE Marks visually, aurally,
`
`conceptually, and in overall commercial impression. Applicant’s Mark merely adds the letter “A”
`
`to the beginning of the mark, creating the “AI” prefix, which is pronounced the same as the “I”
`
`(“eye”) prefix in IPHONE. See Exhibit E. Applicant’s Mark also contains “FON,” the phonetic
`
`equivalent of and common shorthand for “phone” (see Exhibit F); and ends in “X”, which is
`
`8
`
`

`

`identical to the X model name in Apple’s iPhone X, iPhone XS, and iPhone XR mobile devices.
`
`Indeed, Applicant filed the AIFONX mark in the same stylized font that Apple uses for its
`
`IPHONE Marks. The comparison below highlights the visual similarities between Applicant’s
`
`Mark and Apple’s IPHONE Marks:
`
`Applicant’s Mark
`
`Apple’s Mark
`
`12.
`
`The goods in the Application are identical, closely related, and complementary to
`
`the goods and services on which Apple has used and registered its IPHONE Marks.
`
`13.
`
`Applicant intentionally selected Applicant’s Mark to cause consumers to associate
`
`that mark with Apple and Apple’s line of IPHONE devices and accessories, including the iPhone
`
`X device.
`
`FIRST GROUND FOR OPPOSITION
`LACK OF BONA FIDE USE IN COMMERCE
`15 U.S.C. § 1051(a)
`
`14.
`
`Apple hereby incorporates each of the preceding paragraphs as if fully set forth
`
`herein.
`
`15.
`
`The Application cites June 29, 2020, as Applicant’s date of first use of Applicant’s
`
`Mark anywhere and in United States commerce.
`
`16.
`
`On information and belief, Applicant is not using, was not using at the time it filed
`
`the Application, and has never used Applicant’s Mark in United States commerce in connection
`
`with Applicant’s Goods.
`
`9
`
`

`

`17.
`
`Accordingly, on information and belief, Applicant’s description of goods in the
`
`Application extends beyond any actual, bona fide use of Applicant’s Mark in United States
`
`commerce in violation of Section 1(a), and the Application is therefore void ab initio.
`
`18.
`
`Alternatively, on information and belief, Applicant has not used Applicant’s Mark
`
`in United States commerce in connection with all of Applicant’s Goods at the time Applicant filed
`
`the Application. Because registration under Section 1(a) is allowed only as to goods in connection
`
`with which the mark is actually being used, registration should be refused as to those goods for
`
`which Applicant had not used Applicant’s Mark in United States commerce as of the filing date
`
`of the Application, namely, July 8, 2020.
`
`SECOND GROUND FOR OPPOSITION
`LIKELIHOOD OF CONFUSION
`15 U.S.C. § 1052(d)
`
`19.
`
`Apple hereby incorporates each of the preceding paragraphs as if fully set forth
`
`herein.
`
`20.
`
`Applicant’s Mark is confusingly similar in appearance, sound, and commercial
`
`impression to Apple’s IPHONE Marks.
`
`21.
`
`Because the prefix AI is pronounced as the I (“eye”) prefix in IPHONE and FON
`
`is common shorthand for “phone,” Applicant’s AIFONX mark is phonetically identical to, is
`
`visually and conceptually highly similar to, and conveys the same commercial impression as
`
`Apple’s IPHONE Marks and iPhone X model name.
`
`22.
`
`Applicant’s Goods are identical, closely related, or complementary to those sold by
`
`Apple under its IPHONE Marks. For example, Apple offers smartphones under its IPHONE
`
`10
`
`

`

`Marks, including the IPHONE X mark; and Applicant claims to offer “smartphones” and “mobile
`
`phones” under Applicant’s Mark.
`
`23.
`
`Applicant’s use of a highly-similar mark for identical, highly-related, and
`
`complementary goods is likely to lead consumers mistakenly to believe that Applicant’s Goods
`
`are associated with, endorsed by, connected with, or affiliated with Apple.
`
`24.
`
`Apple will be damaged by the registration of Applicant’s Mark because Applicant’s
`
`Mark so closely resembles Apple’s previously used and registered IPHONE Marks as to be likely
`
`to cause confusion, mistake, or deception in the minds of consumers as to the origin or source of
`
`Applicant’s Goods or the affiliation between Applicant and Apple, in violation of Section 2(d) of
`
`the Lanham Act, 15 U.S.C. § 1052(d).
`
`THIRD GROUND FOR OPPOSITION
`LIKELIHOOD OF DILUTION
`15 U.S.C. § 1125(c)
`
`25.
`
`Apple hereby incorporates each of the preceding paragraphs as if fully set forth
`
`herein.
`
`26.
`
`Apple’s IPHONE mark is distinctive in relation to Apple’s goods and services
`
`under the mark.
`
`27.
`
`Apple’s IPHONE mark also is widely recognized by the general consuming public
`
`of the United States as designating Apple as the source of its goods and services under the mark.
`
`Apple’s IPHONE mark therefore is famous and distinctive within the meaning of Section 43(c) of
`
`the Lanham Act, 15 U.S.C. § 1125(c).
`
`11
`
`

`

`28.
`
`Apple’s IPHONE mark has been famous within the meaning of Section 43(c) since
`
`prior to the filing date of the Application and any first date of bona fide use in United States
`
`commerce that Applicant may be able to establish.
`
`29.
`
`Apple also has engaged in substantially exclusive use of its IPHONE mark.
`
`30.
`
`Applicant’s Mark is highly similar to Apple’s IPHONE mark, in that AIFONX
`
`combines (a) an initial A with (b) IFON, the phonetic equivalent of IPHONE, and (c) X, Apple’s
`
`model designation for its iPhone X, iPhone XS, and iPhone XR devices.
`
`31.
`
`Applicant’s use of Applicant’s Mark in connection with Applicant’s Goods likely
`
`would cause consumers to associate Applicant’s Mark with Apple’s IPHONE mark.
`
`32.
`
`Applicant’s Mark therefore is likely to dilute the distinctiveness of Apple’s
`
`IPHONE mark by eroding consumers’ identification of that mark with Apple, and by otherwise
`
`lessening the capacity of that mark to identify and distinguish Apple’s goods and services, in
`
`violation of Section 43(c)(1).
`
`33.
`
`If the Application matured into a registration, Applicant would obtain a prima facie
`
`exclusive right to use Applicant’s Mark in connection with Applicant’s Goods, thus causing
`
`damage and injury to Apple.
`
`34.
`
`Apple therefore asks the Board to sustain this proceeding in Apple’s favor by
`
`refusing registration to the mark underlying Application Serial No. 90/040,778.
`
`The required opposition fee is being electronically processed in connection with this Notice
`
`of Opposition.
`
`/ /
`
`/ /
`
`12
`
`

`

`This 18th day of May, 2021.
`
`Respectfully submitted,
`
`/Sara K. Stadler/
`J. David Mayberry
`Sara K. Stadler
`KILPATRICK TOWNSEND & STOCKTON LLP
`The Grace Building
`1114 Avenue of the Americas
`New York, New York 10036
`Telephone: (212) 775-8700
`Facsimile: (212) 775-8800
`dmayberry@kilpatricktownsend.com
`sstadler@kilpatricktownsend.com
`
`Attorneys for Opposer Apple Inc.
`
`13
`
`

`

`EXHIBIT A
`EXHIBIT A
`
`

`

`5/17/2021
`
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