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deutsche telekom t mobile trademark suit
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Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 1 of 127 PageID #:1
THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
DEUTSCHE TELEKOM AG, a German )
corporation, )
)
Plaintiff, ) Civil Action No. ____________
v. )
)
T-SYSTEM, INC., a Texas corporation, )
)
Defendant. )
COMPLAINT
Plaintiff Deutsche Telekom AG (“DTAG” or “Plaintiff”), by and through its attorneys,
alleges as follows against Defendant T-System, Inc. (“Defendant”):
NATURE OF THE ACTION
1. This action arises as a result of Defendant’s unauthorized, improper, and willful
adoption and use of DTAG’s registered trademarks for “T-SYSTEM,” “T-MOBILE,” and
various “T” formatives (collectively, the “DTAG Marks”).
2. The famous DTAG Marks have become exclusively associated with Plaintiff in
the United States and worldwide after many years of use and promotion by Plaintiff and its
wholly owned affiliates in connection with, inter alia, telecommunications and information
technology services.
3. Defendant’s improper adoption and use of marks confusingly similar to the
DTAG Marks for highly similar, if not identical, services is likely to cause consumer confusion,
dilution, and unfairly compete with DTAG.
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4. Defendant’s improper adoption and use of these marks is also in direct violation
of the terms of the Trademark Use and Registration Agreement entered into between the parties
on March 3, 2004.
PARTIES
5. Plaintiff Deutsche Telekom AG is a corporation organized under the laws of the
Federal Republic of Germany, with its principal place of business located at Friedrich-Ebert-
Allee 140, 53113 Bonn.
6. Upon information and belief, Defendant T-System, Inc. is a corporation organized
under the laws of Texas, with its principal place of business located at 4020 McEwen Drive,
Suite 281, Dallas, Texas 75244.
JURISDICTION AND VENUE
7. This Court has subject matter jurisdiction pursuant to 15 U.S.C. § 1121 and
28 U.S.C. § 1331 and because this action arises under federal law, namely 15 U.S.C. §§ 1051, et
seq. (the “Lanham Act”). The Court has supplemental jurisdiction over DTAG’s state law
pendent claims under 28 U.S.C. § 1367. This court also has subject matter jurisdiction over this
matter pursuant to 28 U.S.C. § 1332 due to diversity of citizenship and an amount in controversy
in excess of $75,000.
8. This Court has personal jurisdiction over Defendant because, upon information
and belief: (1) the infringing activities complained of occurred, at least in part, in this district; (2)
defendant offers for sale, and has sold, its products in this judicial district; and (3) Defendant
availed itself of this judicial district by obtaining a registration to do business in Illinois with the
Illinois Secretary of State as well as actively advertising its services for sale consumers in this
judicial district.
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9. Venue is proper in this district under 28 U.S.C. §§ 1391(b) and (c) because
Defendant is subject to personal jurisdiction and because, upon information and belief: (1) the
infringing activities complained of occurred, at least in part, in this district; (2) defendant offers
for sale, and has sold, its products in this judicial district; and (3) Defendant availed itself of this
judicial district by obtaining a registration to do business in Illinois with the Illinois Secretary of
State as well as actively advertising its services for sale to consumers in this judicial district.
BACKGROUND
10. DTAG and its affiliates are one of the world’s largest telecommunication and
information technology service providers. Both DTAG and its wholly owned affiliates under
common control, including T-Systems North America, Inc.. and T-Mobile USA, Inc., offer a
broad range of telecommunication and information technology goods and services under
DTAG’s family of “T” marks, including the DTAG Marks, in the United States and throughout
the world. These DTAG Marks are among DTAG’s core brands and are integral to its corporate
identity. In this regard, DTAG has extensively used and promoted the DTAG Marks in the
United States and international commerce. Indeed, these marks have been widely used and
registered by DTAG on a worldwide basis for many years in a stand alone “T” form, as a stand
alone design element, in combination with additional words, numbers, designs and/or device
elements, in numerous colors, and in black and white. (See Exhibit A for a non-exhaustive,
representative sample of the DTAG Marks in the U.S.). In addition, DTAG’s “T-SYSTEM”
brand has been widely registered and/or used as trademarks, domain names, company names,
and in various other mediums both in singular and plural form.
11. DTAG has engaged in numerous national and international advertising and
publicity campaigns utilizing the DTAG Marks for telecommunications and information
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technology goods and services and has invested substantial resources in such campaigns. As a
result, the DTAG Marks have gained substantial recognition for not only telecommunication and
information technology goods and services but with the public at large.
12. Through this longstanding, continuous, and extensive use and advertising of the
“T” form alone and in a variety of patterns and formatives, the DTAG Marks have reached a
level of fame in U.S. commerce.
13. Through this longstanding, continuous, and extensive use and advertising of the
“T” form alone and in a variety of patterns and formatives, the DTAG Marks have come to
constitute a series or family of marks that are owned by and are in the name of DTAG or its
affiliates. This family of DTAG Marks are inherently distinctive and are subject to a number of
trademark applications and registrations worldwide, some of which are now incontestable in the
United States under 15 U.S.C. § 1065. (See Exhibit A.) This family of DTAG Marks provides
DTAG with extensive rights to the “T” and “T”-type formatives in connection with
telecommunication and information technology goods and services.
14. On information and belief, Defendant is an information technology solutions
company. Defendant has a principal place of business in Houston, Texas but has operations
and/or sales that extend across the United States, including in this judicial district.
15. Effective as of March 29, 2004, the parties entered into a valid, enforceable,
written contract titled the Trademark Use and Registration Agreement (hereinafter, the
“Agreement”) concerning, in relevant part, Defendants’ use of the “T” and “T-SYSTEM” marks
in the United States and worldwide. A true and correct copy of the Agreement is attached as
Exhibit B. This Agreement superseded and replaced a 1998 Trademark Agreement entered into
between the parties regarding similar subject matter.
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16. greement, D
Pursuant to the Ag reed to use a a tradema the “T-
Defendant agr as ark
SYSTEM phrase on in connec
M” nly he icitly depicte in the Agr
ction with th logo expli ed reement:
hibit B at ¶ 1.) Defendan also agree that any fu
(See Exh 1 nt ed ions of the “T
future variati M”
T-SYSTEM
pted endant woul require DT
logo adop by Defe ld it
TAG’s written consent. (See Exhibi B at ¶ 1.)
17. greement, D
Pursuant to the Ag reed not to f any trade
Defendant agr file emark
ons e tes nd k USPTO”) con
applicatio with the United Stat Patent an Trademark Office (“U ntaining the
T-SYSTEM” in block le
phrase “T ” See
etter form. (S Exhibit B at ¶ 1.)
18. greement, D
Pursuant to the Ag reed to restrict all future application for
Defendant agr e ns
ks nd SYSTEM EV to contain the follow
the mark “THE T-SYSTEM” an “THE T-S V” wing limiting
e: ributed exclu
language “to be distr ealthcare pro
usively to he See
oviders.” (S Exhibit B at ¶ 2.)
19. greement, D
Pursuant to the Ag reed to restrict all use of and
Defendant agr f
ons type marks t “charts for medical inf
applicatio for its T-SYSTEM-t to ystems and t
nformation sy to
r s eating, main
computer programs solely for cre d ormation sys
ntaining and organizing medical info stem
” bit
records.” (See Exhib B at ¶ 3.)
20. formation an belief, an despite the parties’ Ag
On inf nd nd e efendant beg
greement, De gan
e ently display
using the following logo promine on nformation
ying the “T” in connectio with its in
gy ed s 29, reement
technolog and relate products and services years after the March 2 2004 Agr
fter, the “New TSI Logo”):
(hereinaf w
5
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An example of Defendant’s current usage of the New TSI Logo is attached hereto as Exhibit C
and is available at <www.tsystem.com>.
21. Contrary to the terms of the Agreement, Defendant did not obtain DTAG’s
permission to adopt the New TSI Logo, and DTAG did not consent to Defendant’s use of this
New TSI Logo.
22. On information and belief, and despite the parties’ Agreement, Defendant filed a
trademark application with the USPTO for T SYSTEMDS in block letter form on October 11,
2010 on an intent to use basis (pursuant to 15 U.S.C. § 1051(b)) for use in connection with
“digital record keeping systems comprising digital pens coupled with computer software that
provides web-based access to applications and online services through a web operating system
or portal interface for emergency rooms, urgent care centers, and first response units” in
International Class 09. This application was designated U.S. Serial No. 85/149,368. A copy of
this application is attached as Exhibit D.
23. On information and belief, and despite the parties’ Agreement, Defendant filed a
trademark application with the USPTO for THE T SYSTEM EV in block letter form on April
19, 2011 for use in connection with “computer programs for creating, maintaining and
organizing emergency room medical records to be distributed exclusively to health care
providers” in International Class 09. This application was designated U.S. Serial No.
85/298,588. A copy of this application is attached as Exhibit E.
24. On information and belief, and despite the parties’ Agreement, Defendant filed a
trademark application with the USPTO for T SYSTEMEV STAT in block letter form on April
27, 2011 on an intent to use basis (pursuant to 15 U.S.C. § 1051(b)) for use in connection with
“computer software used to analyze medical emergency department data for use by clinicians
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and hospital administration” in International Class 09. This application was designated U.S.
Serial No. 85/305,952 (collectively with U.S. Serial Nos. 85/149,368 and 85/298,588, the “TSI
Applications”). A copy of this application is attached as Exhibit F.
25. DTAG did not consent to Defendant’s use of or filings for the TSI Applications.
26. DTAG filed formal Notices of Opposition against each of the TSI Applications
with the Trademark Trial and Appeal Board (TTAB) of the USPTO. Opposition No. 91201618
was filed against U.S. Serial No. 85/149,368 on September 14, 2011. Opposition No. 91203319
was filed against U.S. Serial No. 85/298,588 on January 11, 2012. Opposition No. 91203318
was filed against U.S. Serial No. 85/305,952 on January 11, 2012. Copies of all three Notices of
Opposition are attached hereto as Exhibit G.
27. The New TSI Logo and the TSI Applications wholly incorporate and are
dominated by Plaintiff’s family of “T” marks and claim services confusingly similar, if not
identical, to DTAG’s core products and services. On information and belief, Defendant
continues to make use of the New TSI Logo and TSI Applications as its own without regard for
DTAG’s rights or its duties under the Agreement.
28. At the time Defendant adopted and began use of the New TSI Logo and TSI
Applications, DTAG’s Marks were registered with the USPTO. The DTAG Marks remain in
force. As a result, Defendant could not have performed even the most rudimentary search before
making use of the New TSI Logo and TSI Applications, thereby failing to meet any reasonable
standards in the selection of its marks. Furthermore, based on the March 29, 2004 Agreement it
entered into with DTAG, Defendant had actual knowledge of the family of DTAG Marks when it
adopted the New TSI Logo and TSI Applications.
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29. The use of the New TSI Logo and TSI Applications by Defendant in connection
with information technology and related products and services is likely to cause confusion as to
the ultimate source of its services, is likely to imply a false affiliation, sponsorship, or other
connection between DTAG and Defendant, and is likely to dilute DTAG’s famous DTAG
Marks, thereby causing DTAG irreparable harm.
30. In view of the actions by Defendant and its continued and blatant disregard of
DTAG’s rights and the parties’ prior Agreement, DTAG now brings this action.
FIRST CLAIM FOR RELIEF
(Trademark Infringement [15 U.S.C. § 1114(1)])
31. DTAG re-alleges and incorporates by reference the allegations of Paragraphs 1
through 30 above.
32. DTAG’s rights in its DTAG Marks date back to at least as early as April 23, 1996,
the filing dates for U.S. Reg. Nos. 2,448,571 and 2,460,631 for “T-SYSTEM.” (See Exhibit A).
Since this time, DTAG has continuously used its DTAG Marks, and formatives of the same, in
U.S. and international commerce.
33. Many of the DTAG Marks have reached incontestable status pursuant to
15 U.S.C. § 1065.
34. On information and belief, Defendant began using the New TSI Logo and TSI
Applications years after March 29, 2004.
35. DTAG therefore has priority based on its prior use and valid and subsisting
DTAG Marks and registrations. Such incontestable registrations are prima facie evidence of
Plaintiff’s rights.
36. Plaintiff has not provided authorization or granted permission of any type to
Defendant to use the New TSI Logo and TSI Applications.
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37. Defendant’s New TSI Logo and TSI Applications are highly similar, if not
identical, to the DTAG Marks, wholly incorporate the “T” portion of DTAG’s Marks, and are
used for information technology and related products and services, which are highly similar, if
not identical, to Plaintiff’s core products and services. The New TSI Logo prominently displays
DTAG’s “T” mark as its dominant feature. Such use by Defendant of the DTAG Marks in
commerce in connection with these services is likely to cause consumer confusion, mistake, or
deception as to the affiliation, connection, or association with Plaintiff.
38. As evidenced by the Agreement, Defendant had actual and/or constructive
knowledge of DTAG’s trademark rights prior to using, or continuing to use, the New TSI Logo
and TSI Applications.
39. Defendant’s use of the DTAG Marks constitutes trademark infringement of
DTAG’s registrations in violation of 15 U.S.C. § 1114.
40. The willful and intentional nature by Defendant—which had actual knowledge of
Plaintiff’s rights due to the parties’ prior Agreement—makes this trademark infringement an
exceptional case pursuant to 15 U.S.C. § 1117(a).
41. The reckless disregard of the most basic level of diligence by Defendant makes
this trademark infringement an exceptional case pursuant to 15 U.S.C. § 1117(a).
42. As a result of Defendant’s trademark infringement, DTAG has suffered damages
in an amount to be determined at trial.
43. As a result of Defendant’s trademark infringement, DTAG has also suffered
irreparable injury to its business, reputation, and goodwill. DTAG will continue to suffer
irreparable injury unless Defendant’s misconduct is enjoined by the Court.
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44. As a result of Defendant’s willful and reckless conduct, DTAG is entitled to
trebled damages, reasonable attorneys’ fees, and the costs of the action.
SECOND CLAIM FOR RELIEF
(Trademark Dilution [15 U.S.C. § 1125(c)])
45. DTAG re-alleges and incorporates by reference the allegations of Paragraphs 1
through 44 above.
46. DTAG’s use of its DTAG Marks in connection with telecommunication and
information technology goods and services does not impart an immediate conveyance or describe
the actual goods and services sold under the DTAG Marks. As a result, DTAG Marks are
inherently distinctive.
47. In addition to the inherent distinctiveness of the DTAG Marks, DTAG’s
prominent and consistent use of the DTAG Marks in the advertising and sale of
telecommunication and information technology goods and services in both U.S. and international
commerce for over a decade has led the DTAG Marks to acquire additional distinctiveness.
48. DTAG has engaged in numerous national and international advertising and
publicity campaigns utilizing the DTAG Marks for telecommunication and information
technology goods and services and has invested substantial resources in such campaigns. As a
result, the DTAG Marks have gained substantial recognition for not only telecommunication and
information technology goods and services but with the public at large.
49. On information and belief, Defendant adopted its New TSI Logo and TSI
Applications years after DTAG’s established worldwide use and promotion of its DTAG Marks
for telecommunication and information technology goods and services and modeled its
trademark filings after the branding strategy established by DTAG for the DTAG Marks.
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50. Defendant’s use of an identical branding strategy and a highly similar, if not
identical, mark will inevitably lead to a blurring in the mind of consumers between DTAG’s
famous DTAG Marks and DTAG’s goods and services in violation of DTAG’s rights in its
family of DTAG Marks.
51. Defendant’s unauthorized use of the New TSI Logo and TSI Applications
constitutes dilution of DTAG’s famous DTAG Marks under 15 U.S.C. § 1125(c).
52. Defendant had actual knowledge of DTAG’s trademark rights prior to using, or
continuing to use, the New TSI Logo and TSI Applications.
53. The willful and intentional nature by Defendant—which had actual knowledge of
Plaintiff’s rights due to the parties’ prior Agreement—makes this trademark infringement an
exceptional case pursuant to 15 U.S.C. § 1117(a).
54. The reckless disregard of the most basic level of diligence by Defendant makes
this trademark infringement an exceptional case pursuant to 15 U.S.C. § 1117(a).
55. As a result of Defendant’s dilution, DTAG has suffered damages in an amount to
be determined at trial.
56. As a result of Defendant’s dilution, DTAG has also suffered irreparable injury to
its business, reputation, and goodwill. DTAG will continue to suffer irreparable injury unless
Defendant’s misconduct is enjoined by the Court.
57. As a result of Defendant’s willful and reckless conduct, DTAG is entitled to
trebled damages, reasonable attorneys’ fees, and the costs of the action.
THIRD CLAIM FOR RELIEF
(False Designation of Origin [15 U.S.C. § 1125(a)])
58. DTAG re-alleges and incorporates by reference the allegations of Paragraphs 1
through 57 above.
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59. Based on its prior and continued use of the DTAG Marks in United States
commerce, DTAG has rights prior to the New TSI Logo and TSI Applications.
60. Defendant’s use of the New TSI Logo and TSI Applications in connection with
information technology and related products and services falsely suggests that these services are
connected with, sponsored by, affiliated with, or related to DTAG.
61. DTAG has not consented to Defendant’s use of the New TSI Logo and TSI
Applications.
62. Defendant’s use of the New TSI Logo and TSI Applications is likely to cause
confusion, mistake, or deception as to the affiliation, connection or association with Plaintiff.
63. Defendant’s unauthorized use of the New TSI Logo and TSI Applications
constitutes a false designation of origin in violation of 15 U.S.C. § 1125(a).
64. Defendant had actual knowledge of DTAG’s trademark rights prior to using, or
continuing to use, the New TSI Logo and TSI Applications.
65. The willful and intentional nature by Defendant—which had actual knowledge of
Plaintiff’s rights due to the parties’ prior Agreement—makes this trademark infringement an
exceptional case pursuant to 15 U.S.C. § 1117(a).
66. The reckless disregard of the most basic level of diligence by Defendant makes
this trademark infringement an exceptional case pursuant to 15 U.S.C. § 1117(a).
67. As a result of Defendant’s false designation of origin, DTAG has suffered
damages in an amount to be determined at trial.
68. As a result of Defendant’s false designation of origin, DTAG has also suffered
irreparable injury to its business, reputation, and goodwill. DTAG will continue to suffer
irreparable injury unless Defendant’s misconduct is enjoined by the Court.
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69. As a result of Defendant’s willful and reckless conduct, DTAG is entitled to
trebled damages, reasonable attorneys’ fees, and the costs of the action.
FOURTH CLAIM FOR RELIEF
(Breach of Contract)
70. DTAG re-alleges and incorporates by reference the allegations of Paragraphs 1
through 69 above.
71. The Agreement between DTAG and Defendant is a valid, enforceable, written
contract, with definite and certain terms, under which DTAG has performed all of its required
obligations.
72. Defendant’s use of the New TSI Logo—which was never submitted to DTAG for
approval—is a direct violation of the Agreement requiring Defendant to only use the “T-
SYSTEM” logo contained in the Agreement or otherwise agreed upon by the parties.
73. Defendant’s TSI Applications are a direct violation of the Agreement prohibiting
the Defendant from applying to register any trademark containing the phrase T-SYSTEM in
block letter form and restricting the scope of claimed goods and services in Defendant’s
applications.
FIFTH CLAIM FOR RELIEF
(Unfair Competition [Illinois Deceptive Trade Practices Act 815 ILCS 510 et seq.])
74. DTAG re-alleges and incorporates by reference the allegations of Paragraphs 1
through 73 above.
75. Based on its prior and continued use of the DTAG Marks in United States
commerce, DTAG has rights prior to the New TSI Logo and TSI Applications.
76. DTAG has not consented to Defendant’s use of the New TSI Logo and TSI
Applications.
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77. Defendant’s conduct, namely, its intentional unauthorized use of the DTAG
Marks in a manner that is likely to cause consumer confusion and/or false designation of origin,
constitutes unfair and/or deceptive practice under the Illinois Uniform Deceptive Trade Practices
Act 815 ILCS 510 et seq.
78. Defendant had actual knowledge of DTAG’s trademark rights prior to using, or
continuing to use, the New TSI Logo and TSI Applications, resulting in willful and intentional
conduct.
79. Defendant’s actions were unlawful, unfair and/or fraudulent.
80. As a result of Defendant’s unfair competition, DTAG has suffered damages in an
amount to be determined at trial.
81. As a result of Defendant’s unfair competition, DTAG has suffered irreparable
injury to its business, reputation, and goodwill. DTAG will continue to suffer irreparable injury
unless Defendant’s misconduct is enjoined by the Court.
82. As a result of Defendant’s willful and reckless conduct, DTAG is entitled to
reasonable attorneys’ fees and the costs of the action.
SIXTH CLAIM FOR RELIEF
(Common Law Unfair Competition)
83. DTAG re-alleges and incorporates by reference the allegations of Paragraphs 1
through 82 above.
84. Based on its prior and continued use of the DTAG Marks in United States
commerce, DTAG has rights prior to the New TSI Logo and TSI Applications.
85. DTAG has not consented to Defendant’s use of the New TSI Logo and TSI
Applications.
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86. Defendant’s use of the New TSI Logo and TSI Applications is being conducted
with the intent to deceive the public into believing Defendant’s services are affiliated with
DTAG. Defendant’s unauthorized use of the New TSI Logo and TSI Applications constitutes
passing off and unfair competition in violation of the common law of Illinois.
87. Defendant had actual knowledge of DTAG’s trademark rights prior to using, or
continuing to use the New TSI Logo and TSI Applications, resulting in willful and intentional
conduct.
88. As a result of Defendant’s common law unfair competition, DTAG has suffered
damages in an amount to be determined at trial.
89. As a result of Defendant’s common law unfair competition, DTAG has suffered
irreparable injury to its business, reputation, and goodwill. DTAG will continue to suffer
irreparable injury unless Defendant’s misconduct is enjoined by the Court.
90. As a result of Defendant’s willful and reckless conduct, DTAG is entitled to
reasonable attorneys’ fees and the costs of the action.
PRAYER FOR RELIEF
Wherefore, DTAG prays for relief as follows:
1. A judgment that Defendant has improperly infringed the DTAG Marks.
2. A judgment that Defendant has improperly diluted the DTAG Marks.
3. A judgment that Defendant has unfairly competed with DTAG and the DTAG
Marks.
4. A judgment that Defendant’s conduct was willful and intentional and amounts to
an exceptional case pursuant to 15 U.S.C. § 1117.
5. A judgment that Defendant breached the parties’ valid, enforceable, written
Trademark Use and Registration Agreement.
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6. An order enjoining Defendant, and all of its officers, directors, employees,
licensees, agents, and representatives, from: (1) using the DTAG Marks, the New TSI Logo, the
TSI Applications, or any other trademark that wholly incorporates or is confusingly similar to the
DTAG Marks; and (2) doing any act or thing likely to confuse or to deceive consumers into
believing that there is some connection between Defendant and DTAG;
7. An order requiring Defendant, pursuant to 15 U.S.C. § 1116(a), to file with this
Court and serve upon DTAG within thirty (30) days after entry of the injunction, a report in
writing under oath setting forth in detail the manner and form in which Defendant has complied
with the injunction and implemented adequate and effective means to discontinue services under
the DTAG Marks, the New TSI Logo, the TSI Applications, or any other trademark that wholly
incorporates or is confusingly similar to the DTAG Marks;
8. An order requiring Defendant, pursuant to 15 U.S.C. § 1118, to deliver up for
destruction all brochures, flyers, signs, stationary, insignia, premiums, marketing materials, and
advertisements, whether electronic, in hardcopy, or otherwise in Defendant’s possession or under
Defendant’s control bearing the DTAG Marks, the New TSI Logo, the TSI Applications, or any
other trademark that wholly incorporates or is confusingly similar to the DTAG Marks;
9. An order requiring Defendant to account for and disgorge to DTAG all of the
profits realized by Defendant, or others acting in concert or participating with Defendant,
resulting from Defendant’s acts of trademark infringement and false designation of origin
relating to Defendant’s use of the DTAG Marks, the New TSI Logo, the TSI Applications, or
any other trademark that wholly incorporates or is confusingly similar to the DTAG Marks;
10. An award to DTAG of compensatory damages, plus interest, in an amount to be
determined at trial;
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11. An award to DTAG of three times Defendant’s profits from its use of the DTAG
Marks, the New TSI Logo, the TSI Applications, or any other trademark that wholly incorporates
or is confusingly similar to the DTAG Marks, or three times DTAG’s damages, whichever is
greater;
12. An award to DTAG of the costs of the action plus interest pursuant to 15 U.S.C. §
1117(a) based on Defendant’s exceptional, willful, and intentional actions;
13. An award to DTAG of reasonable attorneys’ fees pursuant to 15 U.S.C. § 1117(a)
and (b) based on Defendant’s exceptional, willful, and intentional actions;
14. An order permanently enjoining Defendant to perform its obligations under the
Trademark Use and Registration Agreement—including, but not limited to, abandonment of the
TSI Applications Serial Nos. 85/305,952, 85/149,368 and 85/298,588—and to immediately cease
breaching the agreement; and
15. Such other and further relief as the Court deems just and proper.
Dated: October 3, 2012 Respectfully submitted,
By: /Michael D. Adams/ .
Michael D. Adams
Jason L. White
MAYER BROWN LLP
71 South Wacker Drive
Chicago, Illinois 60606-4637
(312) 782-0600
Attorneys for Plaintiff Deutsche Telekom AG
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EXHIBIT A
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Representative Sample of DTAG Marks
Mark Image Registration Registration Class(es)
No. Date
T System T-System 2448571 5-8-2001 9, 16, 36, 37, 38,
41, 42
T System 2460631 6-19-2001 9, 16, 36, 37, 38,
41, 42
T 2472584 7-31-2001 9, 36, 37, 38, 41
T 3538688 11-25-2008 42
T 2508277 11-20-2001 9, 16, 25, 36, 38,
42
T 3216527 3-6-2007 42
T Mobile 3076000 4-4-2006 42
T Mobile 2941016 4-19-2005 9, 16, 36, 37, 38,
41, 42
T Mobile 2284387 10-12-1999 9, 14, 16, 18, 25,
28, 36, 37, 38, 41,
42
T-Mobile T-Mobile 2282432 10-5-1999 9, 14, 16, 18, 25,
28, 36, 37, 38, 41,
42
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EXHIBIT D
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Page
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Word Mark T SYSTEMDS
Goods and IC 009. US 021 023 026 036 038. G & S: digital record keeping systems comprising digital pens
Services coupled with computer software that provides web-based access to applications and online
services through a web operating system or portal interface for emergency rooms, urgent care
centers, and first response units
Standard
Characters
Claimed
Mark Drawing
(4) STANDARD CHARACTER MARK
Code
Serial Number 85149368
Filing Date October 11, 2010
Current Basis 1B
Original Filing
1B
Basis
Published for
May 17, 2011
Opposition
Owner (APPLICANT) T-SYSTEM, INC. CORPORATION TEXAS Suite 281 4020 McEwen Drive Dallas
TEXAS 75244
Attorney of
John M. Cone
Record
Prior
2207936;2552310;2569735
Registrations
Type of Mark TRADEMARK
Register PRINCIPAL
Live/Dead LIVE
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Page
Indicator
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EXHIBIT E
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Word Mark THE T SYSTEM EV
Goods and IC 009. US 021 023 026 036 038. G & S: computer programs for creating, maintaining and
Services organizing emergency room medical records to be distributed exclusively to health care
providers. FIRST USE: 20001000. FIRST USE IN COMMERCE: 20001000
Standard
Characters
Claimed
Mark Drawing
(4) STANDARD CHARACTER MARK
Code
Serial Number 85298588
Filing Date April 19, 2011
Current Basis 1A
Original Filing
1A
Basis
Published for
September 13, 2011
Opposition
Owner (APPLICANT) T-SYSTEM, INC. CORPORATION TEXAS Suite 281 4020 McEwen Drive Dallas
TEXAS 752445091
Attorney of
John M. Cone
Record
Prior
2207936;2552310;2569735
Registrations
Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "SYSTEM" APART FROM THE
MARK AS SHOWN
Type of Mark TRADEMARK
Register PRINCIPAL
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Page
Live/Dead
LIVE
Indicator
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EXHIBIT F
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Word Mark T SYSTEMEV STAT
Goods and Services IC 009. US 021 023 026 036 038. G & S: computer software used to analyze medical
emergency department data for use by clinicians and hospital administration
Standard Characters
Claimed
Mark Drawing Code (4) STANDARD CHARACTER MARK
Serial Number 85305952
Filing Date April 27, 2011
Current Basis 1B
Original Filing Basis 1B
Published for
September 13, 2011
Opposition
Owner (APPLICANT) T-SYSTEM, INC. CORPORATION TEXAS Suite 281 4020 McEwen Drive
Dallas TEXAS 75244
Attorney of Record John M. Cone
Prior Registrations 2207936;2552310;2569735
Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "STAT" APART FROM THE
MARK AS SHOWN
Type of Mark TRADEMARK
Register PRINCIPAL
Live/Dead Indicator LIVE
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EXHIBIT G
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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
ESTTA Tracking number: ESTTA430435
Filing date: 09/14/2011
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 Deutsche Telekom AG
Granted to Date 09/14/2011
of previous
extension
Address Friedrich-Ebert-Allee 140
Bonn, 53113
GERMANY
Attorney Michael D. Adams
information Mayer Brown LLP
P.O. Box 2828
Chicago, IL 60690-2828
UNITED STATES
ipdocket@mayerbrown.com
Applicant Information
Application No 85149368 Publication date 05/17/2011
Opposition Filing 09/14/2011 Opposition 09/14/2011
Date Period Ends
Applicant T-SYSTEM, INC.
Suite 281 4020 McEwen Drive
Dallas, TX 75244
UNITED STATES
Goods/Services Affected by Opposition
Class 009.
All goods and services in the class are opposed, namely: digital record keeping systems comprising
digital pens coupled with computer software that provides web-based access to applications and
online services through a web operating system or portal interface for emergency rooms, urgent care
centers, and first response units
Grounds for Opposition
Priority and likelihood of confusion Trademark Act section 2(d)
Marks Cited by Opposer as Basis for Opposition
U.S. Registration 2448571 Application Date 04/23/1996
No.
Registration Date 05/08/2001 Foreign Priority NONE
Date
Word Mark T-SYSTEM
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Design Mark
Description of NONE
Mark
Goods/Services Class 009. First use:
electric, electronic, optical, measuring, signalling, controlling or teaching
apparatus and instruments, all for use with telecommunications, namely,
apparatus for producing sound, images or data, magnetic and optical data
carriers, data processors and computers, namely, microcomputers,
minicomputers, computer central processors, computer monitors, computer
keyboards, computer terminals, computer interface boards, computer memories,
computer laser printers, computer impact printers, computer dot matrix printers,
computer operating systems, computers and instructional manuals sold as a
unit, computer interface apparatus, namely, computer modems, computer
mouse and mouse pad, computer peripherals and parts thereof; computer
programs and data bases for use in operating telecommunications and business
management systems and related instruction manuals sold as a unit; optical
cables, optic filters, optical scanners, optical character readers, optical discs,
optical fibers, optical glass for signal transmission, optic transmitters, optic
receivers, optical signal processing apparatus, optic switches, optical networks
comprising communication transmission switching and reception apparatus,
optical attenuators, optical amplifiers, optical character recognition apparatus,
and parts thereof; audio, video and data communications systems, namely,
digital and analogue signal transmitters, receivers and converters, radio and
telephone transmitters, receivers and servers, stationary, wireless and cellular
telephone systems and answering machines, telecommunication transmission,
receiving and storage apparatus, telecommunications transmitting sets, data
transmitters, facsimile machines, electronic mail apparatus for electronic
exchange of data images and messages, remote controls and set-top units,
cinematographic television and amusement equipment, namely, signal decoders
and interactive audio and video equipment to facilitate interaction between
consumers and providers of goods and services; electrical wire, electrical wire
connectors, integrated circuits, printed circuits, electric circuits, circuit breakers,
printed circuit boards, electric circuit boards, circuit connectors, electrical
controllers, electrical converters, electrical fuses, electric luminescent display
panels, electrical switch plates, electric plugs, antennas, electrical cables,
computer cables, computer chips, silicon chips, chronographs for use as
specialized time recording apparatus, electric coils, computer buffers, blank
computer discs, blank computer floppy disks, computer hard discs, electrical
conductors, acoustic conduits, electrical conduits, fiber optic conduits and parts
thereof; compact disc players, audio and video tape recorders, audio and video
tape players, audio and video cassette recorders, audio and video cassette
players, blank audio and video tapes, cassettes, discs and microfiche; audio and
video tapes, cassettes, discs and microfiche featuring information concerning
telecommunications, personal and business management systems; video
monitors, automatic vending machines and timing mechanisms therefor, and
parts thereof; data processors and readers, word processors, magnetic coded
card readers, magnetic cards, electronic encryption units, lasers, light emitting
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diodes, light emitting diode displays, microprocessors, blank magnetic data
carriers, demagnetizers for magnetic tapes, and parts thereof; communications
and video transmission switching and reception apparatus; computer, data and
video networking and conferencing equipment, namely, teleconferencing
equipment, audiovisual teaching equipment, overhead film, photographic and
slide projectors, projection screens, computer based information display
equipment, namely, computers which display information on an overhead
screen, intercoms; telephones, telephone answering machines, telephone
transmitters, telephone networks, telephone wires, teleprinters, teletypewriters,
and parts thereof, namely, caller identification boxes, radio telephone equipment
and accessories, namely, call boxes and systems, dialing assembiles, telephone
units, audio operated relays, signalling devices, receiving devices, termination
equipment, filters, protectors and automatic signalling and control equipment,
telemeters, wireless and cellular telephones, pagers, paging equipment,
portable computer devices, facsimile transmitters and receivers, wireless fax
machines, personal communications equipment, namely, Personal Digital
Assistants (PDA), calculators and related peripherals; satellite processors,
satellites and satellite communication earth stations both stationary and
moveable, prerecorded compact discs, audio cassette tapes, video cassette
tapes, digital audio tapes and digital video discs featuring musical, variety, news
and comedy shows; and computer game programs for children and adults
Class 016. First use:
printed matter, namely, books or magazines on telecommunications; printed
instructional and teaching material on telecommunications; stationery
Class 036. First use:
financing services; real estate brokerage; real estate appraisal, real estate
investment; real estate listing; real estate management
Class 037. First use:
custom construction and building renovation; construction planning, construction
supervision; maintenance and repair of telecommunications networks, apparatus
and instruments; installation of telecommunications networks, apparatus and
instruments; installation, maintenance and repair of computer networks and
computer hardware
Class 038. First use:
telecommunication services, namely, electronic mail services; audio and video
teleconferencing; electronic, electric and digital transmission of voice, data,
information, images, signals and messages; rental of apparatus for
telecommunications, namely, rental of electronic access, transmission, receiver,
recording and monitoring equipment comprised of telecommunications hardware
and software including components and peripherals thereof for use in the
telecommunications industry; audio and video broadcasting featuring
entertainment in the nature of visual and audio performances, and musical,
variety, news and comedy shows
Class 041. First use:
education in the nature of classes and seminars in the fields of business,
telecommunications and computers, and the distribution of course materials
therewith; entertainment in the nature of visual and audio performances, namely,
musical band, rock group, gymnastic, dance, and ballet performances;
entertainment services, namely, providing musical, variety, news and comedy
shows via a global computer information network; entertainment services,
namely, providing on-line computer games for children and adults; organization
of community sporting and cultural events; publication of books, magazines,
journals, manuals, brochures, and leaflets
Class 042. First use:
computer programming for others; leasing access time to a computer data base
in the field of telecommunications; rental of data processing equipment; rental of
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computer hardware and software; design for others in the field of
telecommunications equipment; installation, maintenance and repair of
computer software
U.S. Registration 2460631 Application Date 04/23/1996
No.
Registration Date 06/19/2001 Foreign Priority NONE
Date
Word Mark T SYSTEM
Design Mark
Description of NONE
Mark
Goods/Services Class 009. First use:
electric, electronic, optical, measuring, signalling, controlling or teaching
apparatus and instruments, all for use with telecommunications, namely,
apparatus for producing sound, images or data, [magnetic and optical data
carriers, data processors and computers, namely, microcomputers,
minicomputers, computer central processors, computer monitors, computer
keyboards, computer terminals, computer interface boards, computer memories,
computer laser printers, computer impact printers, computer dot matrix printers,
computer operating systems, computers and instructional manuals sold as a
unit, computer interface apparatus, namely, computer modems, computer
mouse and mouse pad, computer peripherals and parts thereof; ]computer
programs and data bases for use in operating telecommunications and business
management systems and related instruction manuals sold as a unit; [optical
cables, optic filters, optical scanners, optical character readers, optical discs,
optical fibers, optical glass for signal transmission, optic transmitters, optic
receivers, optical signal processing apparatus, optic switches, optical networks
comprising communication transmission switching and reception apparatus,
optical attenuators, optical amplifiers, optical character recognition apparatus,
and parts thereof;] audio, video and data communications systems, namely,
digital and analogue signal transmitters, receivers and converters, radio and
telephone transmitters, receivers and servers, stationary, wireless and cellular
telephone systems [and answering machines, ]telecommunication transmission,
receiving and storage apparatus, telecommunications transmitting sets, data
transmitters,[ facsimile machines] electronic mail apparatus for electronic
exchange of data images and messages,[ remote controls and set-top units,]
cinematographic television and amusement equipment, namely, signal decoders
and interactive audio and video equipment to facilitate interaction between
consumers and providers of goods and services; [electrical wire, electrical wire
connectors, integrated circuits, printed circuits, electric circuits, circuit breakers,
printed circuit boards, electric circuit boards, circuit connectors, electrical
controllers, electrical converters, electrical fuses, electric luminescent display
panels, electrical switch plates, electric plugs, antennas, electrical cables,
computer cables, computer chips, silicon chips, chronographs for use as
specialized time recording apparatus, electric coils, computer buffers, blank
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computer discs, blank computer floppy disks, computer hard discs, electrical
conductors, acoustic conduits, electrical conduits, fiber optic conduits and parts
thereof; compact disc players, audio and video tape recorders, audio and video
tape players, audio and video cassette recorders, audio and video cassette
players, blank audio and video tapes, cassettes, discs and microfiche; audio and
video tapes, cassettes, discs and microfiche featuring information concerning
telecommunications, personal and business management systems; video
monitors, automatic vending machines and timing mechanisms therefor, and
parts thereof; data processors and readers, word processors, magnetic coded
card readers, magnetic cards, electronic encryption units, lasers, light emitting
diodes, light emitting diode displays, microprocessors, blank magnetic data
carriers, demagnetizers for magnetic tapes, and parts thereof;] communications
and video transmission switching and reception apparatus; computer, data and
video networking and conferencing equipment, namely, teleconferencing
equipment, [audiovisual teaching equipment, overhead film, photographic and
slide projectors, projection screens, computer based information display
equipment, namely, computers which display information on an overhead
screen, intercoms;] telephones,[ telephone answering machines,] telephone
transmitters, telephone networks,[ telephone wires, teleprinters, teletypewriters,]
and parts thereof, namely, [caller identification boxes,] radio telephone
equipment and accessories, namely, [call boxes and systems, dialing
assemblies, telephone units,] audio operated relays, signalling devices,
receiving devices, termination equipment, filters, protectors and automatic
signalling and control equipment, telemeters, wireless and cellular telephones,
pagers, paging equipment, portable computer devices, [facsimile transmitters
and receivers, wireless fax machines, personal communications equipment,
namely, Personal Digital Assistants (PDA), calculators and related peripherals;]
satellite processors, satellites and satellite communication earth stations both
stationary and moveable,[ prerecorded compact discs, audio cassette tapes,
video cassette tapes, digital audio tapes and digital video discs featuring
musical, variety, news and comedy shows; and computer game programs for
children and adults]
Class 016. First use:
printed matter, namely, books or magazines on telecommunications [; printed
instructional and teaching material on telecommunications; stationery]
Class 036. First use:
financing services[; real estate brokerage; real estate appraisal, real estate
investment; real estate listing; real estate management]
Class 037. First use:
[custom construction and building renovation; construction planning,
construction supervision;] maintenance and repair of telecommunications
networks, apparatus and instruments; installation of telecommunications
networks, apparatus and instruments; installation, maintenance and repair of
computer networks and computer hardware
Class 038. First use:
telecommunication services, namely, electronic mail services; audio and video
teleconferencing; electronic, electric and digital transmission of voice, data,
information, images, signals and messages [; rental of apparatus for
telecommunications, namely, rental of electronic access, transmission, receiver,
recording and monitoring equipment comprised of telecommunications hardware
and software including components and peripherals thereof for use in the
telecommunications industry; audio and video broadcasting featuring
entertainment in the nature of visual and audio performances, and musical,
variety, news and comedy shows]
Class 041. First use:
[education in the nature of classes and seminars in the fields of business,
telecommunications and computers, and the distribution of course materials
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 48 of 127 PageID #:48
therewith;] entertainment in the nature of visual and audio performances,
namely, musical band, rock group, gymnastic, dance, and ballet performances;
entertainment services, namely, providing musical, variety, news and comedy
shows via a global computer information network; entertainment services,
namely, providing on-line computer games for children and adults;[ organization
of community sporting and cultural events; publication of books, magazines,
journals, manuals, brochures, and leaflets]
Class 042. First use:
computer programming for others; [leasing access time to a computer data base
in the field of telecommunications; rental of data processing equipment; rental of
computer hardware and software;] design for others in the field of
telecommunications equipment; installation, maintenance and repair of
computer software
U.S. Registration 2472584 Application Date 08/24/1995
No.
Registration Date 07/31/2001 Foreign Priority NONE
Date
Word Mark T
Design Mark
Description of NONE
Mark
Goods/Services Class 009. First use:
[ electric, electronic, optical, measuring, signalling, controlling or teaching
apparatus and instruments, all for use with telecommunications, namely,
apparatus for producing sound, images or data, magnetic and optical data
carriers, data processors and computers, namely, microcomputers,
minicomputers, computer central processors, computer monitors, computer
keyboards, computer terminals, computer interface boards, computer memories,
computer laser printers, computer impact printers, computer dot matrix printers,
computer operating systems, computers and instructional manuals sold as a
unit, computer interface apparatus, namely, computer modems, computer
mouse and mouse pad, computer peripherals and parts thereof; ] computer
programs and data bases for use in operating telecommunications; [ and
business management systems and related instruction manuals sold as a unit;
optical cables, optic filters, optical scanners, optical character readers, optical
discs, optical fibers, optical glass for signal transmission, optic transmitters, optic
receivers, optical signal processing apparatus, optic switches, optical networks
comprising communication transmission switching and reception apparatus,
optical attenuators, optical amplifiers, optical character recognition apparatus,
and parts thereof; ] audio, video and data communications systems, namely,
digital and analogue signal transmitters, receivers and converters, radio and
telephone transmitters, receivers and servers, stationary, wireless and cellular
telephone systems, [ and answering machines, ] telecommunication
transmission, receiving and storage apparatus, telecommunications transmitting
sets, data transmitters, [ facsimile machines, ] electronic mail apparatus for
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 49 of 127 PageID #:49
electronic exchange of data images and messages, [ remote controls and set-
top units, cinematographic television and amusement equipment, namely, signal
decoders and interactive audio and video equipment to facilitate interaction
between consumers and providers of goods and services; electrical wire,
electrical wire connectors, integrated circuits, printed circuits, electric circuits,
circuit breakers, printed circuit boards, electric circuit boards, circuit connectors,
electrical controllers, electrical converters, electrical fuses, electric luminescent
display panels, electrical switch plates, electric plugs, antennas, electrical
cables, computer cables, computer chips, silicon chips, chronographs for use as
specialized time recording apparatus, electric coils, computer buffers, blank
computer discs, blank computer floppy disks, computer hard discs, electrical
conductors, acoustic conduits, electrical conduits, fiber optic conduits and parts
thereof; compact disc players, audio and video tape recorders, audio and video
tape players, audio and video cassette recorders, audio and video cassette
players, blank audio and video tapes, cassettes, discs and microfiche; audio and
video tapes, cassettes, discs and microfiche featuring information concerning
telecommunications, personal and business management systems; video
monitors, automatic vending machines and timing mechanisms therefor, and
parts thereof; data processors and readers, word processors, magnetic coded
card readers, magnetic cards, electronic encryption units, lasers, light emitting
diodes, light emitting diode displays, microprocessors, blank magnetic data
carriers, demagnitizers for magnetic tapes, and parts thereof; communications
and video transmission switching and reception apparatus; computer, data and
video networking and conferencing equipment, namely, teleconferencing
equipment, audiovisual teaching equipment, overhead film, photographic and
slide projectors, projection screens, computer based information display
equipment, namely, computers which display information on an overhead
screen, intercoms;] telephones, [ telephone answering machines, ] telephone
transmitters, * AND * telephone networks; [ telephone wires, teleprinters,
teletypewriters, and parts thereof, namely, caller identification boxes, radio
telephone equipment and accessories, namely, call boxes and systems, dialing
assemblies, telephone units, audio operated relays, signalling devices, receiving
devices, termination equipment, filters, protectors and automatic signalling and
control equipment, telemeters, ] wireless and cellular telephones, pagers, paging
equipment, portable computer devices, [ facsimile transmitters and receivers,
wireless fax machines, ] personal communications equipment, namely, Personal
Digital Assistants (PDA), [ calculators ] and related peripherals; [ satellite
processors, satellites and satellite communication earth stations both stationary
and moveable; baseball batting helmets; prerecorded compact discs, audio
cassette tapes, video cassette tapes, digital audio tapes and digital video discs
featuring musical, variety, news and comedy shows; and ] computer game
programs for children and adults
Class 014. First use:
[ jewelry, horological instruments, namely, clocks and watches; chronometers
and chronographs ]
Class 016. First use:
[ printed matter, namely, books or magazines on telecommunications; printed
instructional and teaching material on telecommunications; stationery ]
Class 018. First use:
[ umbrellas; parasols, goods made of leather and imitations of leather, namely,
wallets, valises, carrying cases for credit cards, tickets, in particular, air travel
tickets, or pocket calculators, purses, writing cases, namely, briefcase type
portfolios, suitcases, travelling bags, and briefcases; trunks for travel and travel
bags ]
Class 025. First use:
[ clothing, namely, shirts, dresses, pants, jackets, coats, T-shirts, shorts,
headwear, footwear ]
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Class 028. First use:
[ video and computer game cartridges; board games, parlor games, card games,
toy action figures, wind-up toys, stuffed toys, electrical and mechanical action
toys, children's multiple activity toys; gymnastic apparatus; sporting articles,
namely, cycling equipment and accessories, namely, stationary cycles, football
equipment and accessories, namely, footballs, football shoulder pads, football
girdles, football protectors, football knee, elbow, chest and leg pads, soccer
equipment and accessories, namely, soccer balls, soccer ball goal nets, soccer
ball knee pads, baseball equipment and accessories, namely, baseballs,
baseball bats, baseball bases, baseball mitts, baseball gloves, baseball bats,
basket ball equipment and accessories, namely, basket balls, basket ball goals,
basket ball nets, and all parts related thereto ]
Class 036. First use:
financing services *, namely, FINANCING OF WIRELESS
TELECOMMUNICATION SERVICE PLANS AND PREPAID WIRELESS
TELECOMMUNICATIONS SERVICE PLANS * [ ; real estate brokerage; real
estate appraisal, real estate investment; real estate listing; real estate
management ]
Class 037. First use:
[ custom construction and building renovation; construction planning,
construction supervision;] maintenance and repair of telecommunications
networks, apparatus and instruments; installation of telecommunications
networks, apparatus and instruments; [ installation, maintenance and repair of
computer networks and computer hardware ]
Class 038. First use:
telecommunication services, namely, electronic mail services; [ audio and video
teleconferencing; ] electronic, electric and digital transmission of voice, data,
information, images, signals and messages; [ rental of apparatus for
telecommunications, namely, rental of electronic access, transmission, receiver,
recording and monitoring equipment comprised of telecommunications hardware
and software including components and peripherals thereof for use in the
telecommunications industry; ] audio [ and video ] broadcasting featuring
entertainment in the nature of [ visual ] * music * and audio performances [, and
musical, variety, news and comedy shows ]
Class 041. First use:
[ education in the nature of classes and seminars in the fields of business,
telecommunications and computers, and the distribution of course materials
therewith; entertainment in the nature of visual and audio performances, namely,
musical band, rock group, gymnastic, dance, and ballet performances; ]
entertainment services, namely, providing * music * [ musical, variety, news and
comedy shows ] via a global computer information network; entertainment
services, namely, providing on-line computer games for children and adults [ ;
organization of community sporting and cultural events; publication of books,
magazines, journals, manuals, brochures, and leaflets ]
Class 042. First use:
[ computer programming for others; leasing access time to a computer data
base in the field of telecommunications; rental of data processing equipment;
rental of computer hardware and software; design for others in the field of
telecommunications equipment; installation, maintenance and repair of
computer software ]
U.S. Registration 3538688 Application Date 08/16/2005
No.
Registration Date 11/25/2008 Foreign Priority 02/17/2005
Date
Word Mark T
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 51 of 127 PageID #:51
Design Mark
Description of NONE
Mark
Goods/Services Class 042. First use: First Use: 2002/06/00 First Use In Commerce: 2002/06/00
Computer programming services for others; application service provider,
namely, hosting computer software applications for others, hosting of digital
content on the Internet; hosting the websites of others on a computer server for
a global computer network; computer services, namely, creating indexes of
information available on computer networks; providing information via the
telephone and the global communication networks in the field of information
technology; installation, maintenance and repair of computer software; providing
information at the specific request of end-users by means of telephone or global
communications networks; providing temporary use of online non-downloadable
telecommunications software for providing multiple user access to the global
computer network
U.S. Registration 2508277 Application Date 08/24/1995
No.
Registration Date 11/20/2001 Foreign Priority NONE
Date
Word Mark T
Design Mark
Description of NONE
Mark
Goods/Services Class 009. First use:
electric, electronic, [optical, measuring, signalling, controlling or teaching]
apparatus and instruments , all for use with telecommunications, namely,
apparatus for producing sound, images or data, [magnetic and optical data
carriers, data processors and computers, namely, microcomputers,
minicomputers, computer central processors, computer monitors, computer
keyboards, computer terminals, computer interface boards, computer memories,
computer laser printers, computer impact printers, computer dot matrix printers,
computer operating systems, computers and instructional manuals sold as a
unit, computer interface apparatus, namely, computer modems, computer
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 52 of 127 PageID #:52
mouse and mouse pad, computer peripherals and parts thereof; computer
programs and data bases for use in operating telecommunications and business
management systems and related instruction manuals sold as a unit; optical
cables, optic filters, optical scanners, optical character readers, optical discs,
optical fibers, optical glass for signal transmission, optic transmitters, optic
receivers, optical signal processing apparatus, optic switches, optical networks
comprising communication transmission switching and reception apparatus,
optical attenuators, optical amplifiers, optical character recognition apparatus,
and parts thereof; ] audio, video and data communications systems, namely,
[digital and analogue signal transmitters, receivers and converters, radio and
telephone transmitters, receivers and servers, stationary,] wireless and cellular
telephone systems [ and answering machines, ] telecommunication
transmission,[ receiving and storage apparatus,] telecommunications
transmitting sets, [ data transmitters, facsimile machines, ] electronic mail
apparatus for electronic exchange of data images and messages, [remote
controls and set-top units, cinematographic television and amusement
equipment, namely, signal decoders and interactive audio and video equipment
to facilitate interaction between consumers and providers of goods and services;
electrical wire, electrical wire connectors, integrated circuits, printed circuits,
electric circuits, circuit breakers, printed circuit boards, electric circuit boards,
circuit connectors, electrical controllers, electrical converters, electrical fuses,
electric luminescent display panels, electrical switch plates, electric plugs,
antennas, electrical cables, computer cables, computer chips, silicon chips,
chronographs for use as specialized time recording apparatus, electric coils,
computer buffers, blank computer discs, blank computer floppy disks, computer
hard discs, electrical conductors, acoustic conduits, electrical conduits, fiber
optic conduits and parts thereof; compact disc players, audio and video tape
recorders, audio and video tape players, audio and video cassette recorders,
audio and video cassette players, blank audio and video tapes, cassettes, discs
and microfiche; audio and video tapes, cassettes, discs and microfiche featuring
information concerning telecommunications, personal and business
management systems; video monitors, automatic vending machines and timing
mechanisms therefor, and parts thereof; data processors and readers, word
processors, magnetic coded card readers, magnetic cards, electronic encryption
units, lasers, light emitting diodes, light emitting diode displays,
microprocessors, blank magnetic data carriers, demagnitizers for magnetic
tapes, and parts thereof; communications and video transmission switching and
reception apparatus; computer, data and video networking and conferencing
equipment, namely, teleconferencing equipment, audiovisual teaching
equipment, overhead film, photographic and slide projectors, projection screens,
computer based information display equipment, namely, computers which
display information on an overhead screen, intercoms; telephones, telephone
answering machines, telephone transmitters, telephone networks, telephone
wires, teleprinters, teletypewriters, and parts thereof, namely, caller identification
boxes,] radio telephone equipment and accessories, namely, [ call boxes and
systems, dialing assemblies,] telephone units, [audio operated relays, signalling
devices, receiving devices, termination equipment, filters, protectors and
automatic signalling and control equipment, telemeters,] wireless and cellular
telephones[ , pagers, paging equipment,] portable computer devices, [ facsimile
transmitters and receivers, wireless fax machines, personal communications
equipment, namely, Personal Digital Assistants (PDA), calculators and related
peripherals; satellite processors, satellites and satellite communication earth
stations both stationary and moveable; baseball batting helmets; prerecorded
compact discs, audio cassette tapes, video cassette tapes, digital audio tapes
and digital video discs featuring musical, variety, news and comedy shows;] and
computer game programs for children and adults
Class 014. First use:
[ jewelry, horological instruments, namely, clocks and watches; chronometers
and chronographs ]
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 53 of 127 PageID #:53
Class 016. First use:
[ printed matter, namely, books or magazines on telecommunications; printed
instructional and teaching material on telecommunications;] stationery
Class 018. First use:
[ umbrellas; parasols, goods made of leather and imitations of leather, namely,
wallets, valises, carrying cases for credit cards, tickets, in particular, air travel
tickets, or pocket calculators, purses, writing cases, namely, briefcase type
portfolios, suitcases,] travelling bags, and briefcases [; trunks for travel and
travel bags ]
Class 025. First use:
clothing, namely, shirts, [ dresses, pants,] jackets, coats, T-shirts, [ shorts,
headwear footwear ]
Class 028. First use:
[ video and computer game cartridges; board games, parlor games, card games,
toy action figures, wind-up toys, stuffed toys, electrical and mechanical action
toys, children's multiple activity toys; gymnastic apparatus; sporting articles,
namely, cycling equipment and accessories, namely, stationary cycles, football
equipment and accessories, namely, footballs, football shoulder pads, football
girdles, football protectors, football knee, elbow, chest and leg pads, soccer
equipment and accessories, namely, soccer balls, soccer ball goal nets, soccer
ball knee pads, baseball equipment and accessories, namely, baseballs,
baseball bats, baseball bases, baseball mitts, baseball gloves, baseball bats,
basket ball equipment and accessories, namely, basket balls, basket ball goals,
basket ball nets, and all parts related thereto ]
Class 036. First use:
financing services [ ; real estate brokerage; real estate appraisal, real estate
investment; real estate listing; real estate management ]
Class 037. First use:
[ custom construction and building renovation; construction planning,
construction supervision; maintenance and repair of telecommunications
networks, apparatus and instruments; installation of telecommunications
networks, apparatus and instruments; installation, maintenance and repair of
comuter networks and computer hardware ]
Class 038. First use:
telecommunication services, namely, electronic mail services; [audio and video
teleconferencing;] electronic, electric and digital transmission of voice, data,
information, images, signals and messages [; rental of apparatus for
telecommunications, namely, rental of electronic access, transmission, receiver,
recording and monitoring equipment comprised of telecommunications hardware
and software including components and peripherals thereof for use in the
telecommunications industry; audio and video broadcasting featuring
entertainment in the nature of visual and audio performances, and musical,
variety, news and comedy shows ]
Class 041. First use:
[ education in the nature of classes and seminars in the fields of business,
telecommunications and computers, and the distribution of course materials
therewith; entertainment in the nature of visual and audio performances, namely,
musical band, rock group, gymnastic, dance, and ballet performances;
entertainment services, namely, providing musical, variety, news and comedy
shows via a global computer information network; entertainment services,
namely, providing on-line computer games for children and adults; organization
of community sporting and cultural events; publication of books, magazines,
journals, manuals, brochures, and leaflets ]
Class 042. First use:
computer programming for others; [ leasing access time to a computer data
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 54 of 127 PageID #:54
base in the field of telecommunications; rental of data processing equipment;
rental of computer hardware and software; design for others in the field of
telecommunications equipment; installation, maintenance and repair of
computer software ]
U.S. Registration 3216527 Application Date 08/16/2005
No.
Registration Date 03/06/2007 Foreign Priority NONE
Date
Word Mark T
Design Mark
Description of NONE
Mark
Goods/Services Class 042. First use: First Use: 2006/01/01 First Use In Commerce: 2006/01/01
Computer programming services for others; rental of computer software and
hardware for online access; data encryption services; application service
provider, namely, hosting computer software applications for others, hosting of
digital content on the internet; hosting the websites of others on a computer
server for a global computer network; computer services, namely, creating
indexes of information available on computer networks; providing information via
the telephone and the global communication networks in the field of information
technology; consulting services in the field of design, selection, implementation
and use of computer hardware and software systems for others; installation,
maintenance and repair of computer software; technical project planning
services related to telecommunications equipment; providing information at the
specific request of end-users by means of telephone or global communications
networks; providing temporary use of online non-downloadable
telecommunications software for providing multiple user access to the global
computer network
U.S. Registration 3076000 Application Date 10/15/2004
No.
Registration Date 04/04/2006 Foreign Priority NONE
Date
Word Mark T MOBILE
Design Mark
Description of NONE
Mark
Goods/Services Class 042. First use:
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 55 of 127 PageID #:55
Application service provider, namely, hosting computer software applications for
others, hosting of digital content on the internet; hosting the websites of others
on a computer server for a global computer network, all for advertising purposes
U.S. Registration 2941016 Application Date 04/23/1996
No.
Registration Date 04/19/2005 Foreign Priority NONE
Date
Word Mark T MOBILE
Design Mark
Description of NONE
Mark
Goods/Services Class 009. First use:
Electric, electronic, optical, measuring, signalling, controlling or teaching
apparatus and instruments, all for use with telecommunications, namely,
apparatus for producing sound, images or data, magnetic and optical data
carriers, data processors and computers, namely, microcomputers,
minicomputers, computer central processors, computer monitors, computer
keyboards, computer terminals, computer interface boards, computer memories,
computer laser printers, computer impact printers, computer dot matrix printers,
computer operating systems, computers and instructional manuals sold as a
unit, computer interface apparatus, namely, computer modems, computer
mouse and mouse pad, computer peripherals and parts thereof; computer
programs and data bases for use in operating telecommunications and business
management systems and related instruction manuals sold as a unit; optical
cables, optic filters, optical scanners, optical character readers, optical discs,
optical fibers, optical glass for signal transmission, optic transmitters, optic
receivers, optical signal processing apparatus, optic switches, optical networks
comprising communication transmission switching and reception apparatus,
optical attenuators, optical amplifiers, optical character recognition apparatus,
and parts thereof; audio, video and data communications systems, namely,
digital and analogue signal transmitters, receivers and converters, radio and
telephone transmitters, receivers and servers, stationary, wireless and cellular
telephone systems and answering machines, telecommunication transmission,
receiving and storage apparatus, telecommunications transmitting sets, data
transmitters, facsimile machines, electronic mail apparatus for electronic
exchange of data images and messages, remote controls and set-top units,
cinematographic television and amusement equipment, namely, signal decoders
and interactive audio and video equipment to facilitate interaction between
consumers and providers of goods and services; electrical wire, electrical wire
connectors, integrated circuits, printed circuits, electric circuits, circuit breakers,
printed circuit boards, electric circuit boards, circuit connectors, electrical
controllers, electrical converters, electrical fuses, electric luminescent display
panels, electrical switch plates, electric plugs, antennas, electrical cables,
computer cables, computer chips, silicon chips, chronographs for use as
specialized time recording apparatus, electric coils, computer buffers, blank
computer discs, blank computer floppy disks, computer hard discs, electrical
conductors, acoustic conduits, electrical conduits, fiber optic conduits and parts
thereof; compact disc players, audio and video tape recorders, audio and video
tape players, audio and video cassette recorders, audio and video cassette
players, blank audio and video tapes, cassettes, discs and microfiche; audio and
video tapes, cassettes, discs and microfiche featuring information concerning
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 56 of 127 PageID #:56
telecommunications, personal and business management systems; video
monitors, automatic vending machines and timing mechanisms therefor, and
parts thereof; data processors and readers, word processors, magnetic coded
card readers, magnetic cards, electronic encryption units, lasers, light emitting
diodes, light emitting diode displays, microprocessors, blank magnetic data
carriers, demagnetizers for magnetic tapes, and parts thereof; communications
and video transmission switching and reception apparatus; computer, data and
video networking and conferencing equipment, namely, teleconferencing
equipment, audiovisual teaching equipment, overhead film, photographic and
slide projectors, projection screens, computer based information display
equipment, namely, computers which display information on an overhead
screen, intercoms; telephones, telephone answering machines, telephone
transmitters, telephone networks, telephone wires, teleprinters, teletypewriters,
and parts thereof, namely, caller identification boxes, radio telephone equipment
and accessories, namely, call boxes and systems, dialing assemblies, telephone
units, audio operated relays, signalling devices, receiving devices, termination
equipment, filters, protectors and automatic signalling and control equipment,
telemeters, wireless and cellular telephones, pagers, paging equipment,
portable computer devices, facsimile transmitters and receivers, wireless fax
machines, personal communications equipment, namely, Personal Digital
Assistants (PDA), calculators and related peripherals; satellite processors,
satellites and satellite communication earth stations both stationary and
moveable; prerecorded compact discs, audio cassette tapes, video cassette
tapes, digital audio tapes and digital video discs featuring musical, variety, news
and comedy shows; and computer game programs for children and adults
Class 016. First use:
Printed matter, namely, books or magazines on telecommunications; printed
instructional and teaching material on telecommunications; stationery
Class 036. First use:
Financing services; real estate brokerage; real estate appraisal, real estate
investment; real estate listing; real estate management
Class 037. First use:
Custom construction and building renovation; construction planning,
construction supervision; maintenance and repair of telecommunications
networks, apparatus and instruments; installation of telecommunications
networks, apparatus and instruments; installation, maintenance and repair of
computer networks and computer hardware
Class 038. First use:
Telecommunication services, namely, electronic mail services; audio and video
teleconferencing; electronic, electric and digital transmission of voice, data,
information, images, signals and messages; rental of apparatus for
telecommunications, namely, rental of electronic access, transmission, receiver,
recording and monitoring equipment comprised of telecommunications hardware
and software including components and peripherals thereof for use in the
telecommunications industry; audio and video broadcasting featuring
entertainment in the nature of visual and audio performances, and musical,
variety, news and comedy shows
Class 041. First use:
Education in the nature of classes and seminars in the fields of business,
telecommunications and computers, and the distribution of course materials
therewith; entertainment in the nature of visual and audio performances, namely,
musical band, rock group, gymnastic, dance, and ballet performances;
entertainment services, namely, providing musical, variety, news and comedy
shows via a global computer information network; entertainment services,
namely, providing on-line computer games for children and adults; organization
of community sporting and cultural events; publication of books, magazines,
journals, manuals, brochures, and leaflets
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 57 of 127 PageID #:57
Class 042. First use:
Computer programming for others; leasing access time to a computer data base
in the field of telecommunications; rental of data processing equipment; rental of
computer hardware and software; design for others in the field of
telecommunications equipment; installation, maintenance and repair of
computer software
U.S. Registration 2284387 Application Date 02/27/1997
No.
Registration Date 10/12/1999 Foreign Priority NONE
Date
Word Mark T-MOBILE
Design Mark
Description of NONE
Mark
Goods/Services Class 009. First use:
Telecommunications equipment, namely, computer programs for operating
telecommunications systems, computer programs for providing multiple-user
access to the global communications network for the transfer and dissemination
of a wide range of information, magnetic, electric and optical networks
comprising of data transmitters consisting of digital and instruments that convert
user information into data signals for transmission or reconvert the received data
signals into user information and equipment that transfers data between data
terminals, storage apparatus, signaling devices, namely, equipment that
generates, transfers and receives information over a communications network
by electrical or optical means, termination equipment, namely, components that
connect an appropriate bridge, normally of the characteristic impedance, across
a circuit to provide stability; word processors, computers, namely,
microcomputers, minicomputers, computer central processors, microprocessors,
computer monitors, computer keyboards, computer terminals, computer
interface boards, computer laser printers, computer impact printers, computer
dot matrix printers, computer operating systems, computers and instructional
manuals sold as a unit, computer interface apparatus, namely, computer
modems, computer mouse and mouse pad, computer peripherals and parts
thereof; computer programs for use in operating business management systems
and related instruction manuals sold as a unit; audio, video and data
communications equipment, namely, digital and analogue signal transmitters,
receivers and converters, radio and telephone transmitters, receivers and
servers, electronic mail hardware and software for electronic exchange of data
images and messages, remote controls and set-top units for televisions,
cinematographic television and amusement equipment, namely, signal decoders
and interactive audio and video conferencing equipment to facilitate interaction
between consumers and providers of goods and services; chronographs for use
as specialized time recording apparatus, blank computer discs, blank computer
floppy disks, blank computer hard discs; compact disc players, audio and video
tape recorders, audio and video tape players, audio and video cassette
recorders, audio and video cassette players, blank audio and video tapes,
cassettes, discs and microfiche; audio and video tapes, cassettes, discs and
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 58 of 127 PageID #:58
microfiche featuring information concerning telecommunications; video monitors,
automatic vending machines and timing mechanisms therefor, and parts thereof;
magnetic coded card readers, magnetic cards, blank magnetic data carriers,
demagnitizers for magnetic tapes, and parts thereof; computer, data and video
networking and conferencing equipment, namely, teleconferencing equipment,
audiovisual teaching equipment, namely, overhead film, photographic and slide
projectors, projection screens, computers that display information on an
overhead screen, intercoms; telephones, telephone answering machines,
teleprinters, teletypewriters, caller identification boxes, radio operated telephone
equipment, audio operated relays, wireless and cellular telephones and
answering machines, pagers, portable computers, facsimile machines, wireless
fax machines, personal communications equipment, namely, personal digital
assistants (PDA), calculators and related peripherals, namely, cases for carrying
pocket calculators, satellites and satellite communication earth stations both
stationary and moveable; prerecorded compact discs, audio cassette tapes,
video cassette tapes, digital audio tapes and digital video discs featuring
musical, variety, news and comedy shows; and computer game programs for
children and adults
Class 014. First use:
jewelry, horological instruments, namely, clocks and watches; chronometers and
chronographs
Class 016. First use:
printed matter, namely, books or magazines on telecommunications; printed
instructional and teaching material on telecommunications; stationery
Class 018. First use:
Umbrellas; parasols, goods made of leather and imitations of leather, namely,
wallets, valises, carrying cases for credit cards, tickets, in particular, air travel
tickets, purses, writing cases, namely, briefcase type portfolios, suitcases,
traveling bags, and briefcases; trunks for travel and travel bags
Class 025. First use:
clothing, namely, shirts, dresses, pants, jackets, coats, T-shirts, shorts;
headwear; footwear
Class 028. First use:
Video and computer game cartridges; board games, parlor games, card games,
toy action figures, wind-up toys, stuffed toys, electrical and mechanical action
toys, children's multiple activity toys; gymnastic apparatus; sporting articles,
namely, cycling equipment and accessories, namely, stationary cycles, football
equipment and accessories, namely, footballs, football shoulder pads, football
girdles, football body protectors, football knee, elbow, chest and leg pads,
soccer equipment and accessories, namely, soccer balls, soccer ball goal nets,
soccer ball knee pads, baseball equipment and accessories, namely, baseballs,
baseball bats, baseball bases, baseball mitts, baseball gloves, basketball
equipment and accessories, namely, basketballs, basketball goals, basketball
nets
Class 036. First use:
financing services; real estate brokerage; real estate appraisal, real estate
investment; real estate listing; real estate management
Class 037. First use:
custom construction and building renovation; construction planning, construction
supervision; maintenance and repair of telecommunications networks, apparatus
and instruments; installation of telecommunications networks, apparatus and
instruments; maintenance and repair of computer networks and computer
hardware; installation of computer networks and computer hardware
Class 038. First use:
Telecommunication services, namely, electric, digital, cellular and wireless
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 59 of 127 PageID #:59
transmission of voice, data, information, images, signals and messages, namely,
providing telecommunications connections over a global communications
network, electronic mail, voice mail and messaging services, audio and video
teleconferencing, rental of telecommunications equipment, namely, equipment
for electronic access to global telecommunications network, equipment for
transmitting, receiving, recording and monitoring voice, data, information,
images, signals, messages, data and word processors, computer programs for
use in operating and accessing telecommunications systems; audio and video
broadcasting featuring entertainment in the nature of live visual and audio
performances, and musical, variety, news and comedy shows
Class 041. First use:
education in the nature of classes and seminars in the fields of business,
telecommunications and computers, and the distribution of course materials
therewith; entertainment in the nature of live visual and audio performances,
namely, musical band, rock group, gymnastic, dance, and ballet performances;
entertainment services, namely, providing musical, variety, news and comedy
shows via global computer information network; entertainment services, namely,
providing on-line computer games for children and adults; organization of
community sporting and cultural events; publication of books, magazines,
journals, manuals, brochures, and leaflets
Class 042. First use:
computer programming for others; rental of data processing equipment; rental of
computer hardware and software; design for others in the field of
telecommunications equipment; maintenance and repair of computer software;
installation of computer software
U.S. Registration 2282432 Application Date 02/27/1997
No.
Registration Date 10/05/1999 Foreign Priority 08/31/1996
Date
Word Mark T-MOBILE
Design Mark
Description of NONE
Mark
Goods/Services Class 009. First use:
Telecommunications equipment, namely, computer programs for operating
telecommunications systems, computer programs for providing multiple-user
access to the global communications network for the transfer and dissemination
of a wide range of information, magnetic, electric and optical networks
comprising of data transmitters consisting of digital end instruments that convert
user information into data signals for transmission or reconvert the received data
signals into user information and equipment that transfers data between data
terminals, storage apparatus, signaling devices, namely, equipment that
generates, transfers and receives information over a communications network
by electrical or optical means, termination equipment, namely, components that
connect an appropriate bridge, normally of the characteristic impedance, across
a circuit to provide stability; word processors, computers, namely,
microcomputers, minicomputers, computer central processors, microprocessors,
computer monitors, computer keyboards, computer terminals, computer
interface boards, computer laser printers, computer impact printers, computer
dot matrix printers, computer operating systems, computers and instructional
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 60 of 127 PageID #:60
manuals sold as a unit, computer interface apparatus, namely, computer
modems, computer mouse and mouse pad, computer peripherals and parts
thereof; computer programs for use in operating business management systems
and related instruction manuals sold as a unit; audio, video and data
communications equipment, namely, digital and analogue signal transmitters,
receivers and converters, radio and telephone transmitters, receivers and
servers, electronic mail hardware and software for electronic exchange of data
images and messages, remote controls and set-top units for televisions,
cinematographic television and amusement equipment, namely, signal decoders
and interactive audio and video conferencing equipment to facilitate interaction
between consumers and providers of goods and services; chronographs for use
as specialized time recording apparatus, blank computer discs, blank computer
floppy disks, blank computer hard discs; compact disc players, audio and video
tape recorders, audio and video tape players, audio and video cassette
recorders, audio and video cassette players, blank audio and video tapes,
cassettes, discs and microfiche; audio and video tapes, cassettes, discs and
microfiche featuring information concerning telecommunications; video monitors,
automatic vending machines and timing mechanisms therefor, and parts thereof;
magnetic coded card readers, magnetic cards, blank magnetic data carriers,
demagnitizers for magnetic tapes, and parts thereof; computer, data and video
networking and conferencing equipment, namely, teleconferencing equipment,
audiovisual teaching equipment, namely, overhead film, photographic and slide
projectors, projection screens, computers that display information on an
overhead screen, intercoms; telephones, telephone answering machines,
teleprinters, teletypewriters, caller identification boxes, radio operated telephone
equipment, audio operated relays, wireless and cellular telephones and
answering machines, pagers, portable computers, facsimile machines, wireless
fax machines, personal communications equipment, namely, personal digital
assistants (PDA), calculators and related peripherals, namely, cases for carrying
pocket calculators, satellites and satellite communication earth stations both
stationary and moveable; prerecorded compact discs, audio cassette tapes,
video cassette tapes, digital audio tapes and digital video discs featuring
musical, variety, news and comedy shows; and computer game programs for
children and adults
Class 014. First use:
jewelry, horological instruments, namely, clocks and watches; chronometers and
chronographs
Class 016. First use:
printed matter, namely, books or magazines on telecommunications; printed
instructional and teaching material on telecommunications; stationery
Class 018. First use:
Umbrellas; parasols, goods made of leather and imitations of leather, namely,
wallets, valises, carrying cases for credit cards, tickets, in particular, air travel
tickets, purses, writing cases, namely, briefcase type portfolios, suitcases,
traveling bags, and briefcases; trunks for travel and travel bags
Class 025. First use:
clothing, namely, shirts, dresses, pants, jackets, coats, T-shirts, shorts;
headwear; footwear
Class 028. First use:
Video and computer game cartridges; board games, parlor games, card games,
toy action figures, wind-up toys, stuffed toys, electrical and mechanical action
toys, children's multiple activity toys; gymnastic apparatus; sporting articles,
namely, cycling equipment and accessories, namely, stationary cycles, football
equipment and accessories, namely, footballs, football shoulder pads, football
girdles, football body protectors, football knee, elbow, chest and leg pads,
soccer equipment and accessories, namely, soccer balls, soccer ball goal nets,
soccer ball knee pads, baseball equipment and accessories, namely, baseballs,
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 61 of 127 PageID #:61
baseball bats, baseball bases, baseball mitts, baseball gloves, basketball
equipment and accessories, namely, basketballs, basketball goals, basketball
nets
Class 036. First use:
financing services; real estate brokerage; real estate appraisal, real estate
investment; real estate listing; real estate management
Class 037. First use:
custom construction and building renovation; construction planning, construction
supervision; maintenance and repair of telecommunications networks, apparatus
and instruments; installation of telecommunications networks, apparatus and
instruments; maintenance and repair of computer networks and computer
hardware; installation of computer networks and computer hardware
Class 038. First use:
Telecommunication services, namely, electric, digital, cellular and wireless
transmission of voice, data, information, images, signals and messages, namely,
providing telecommunications connections over a global communications
network, electronic mail, voice mail and messaging services, audio and video
teleconferencing, rental of telecommunications equipment, namely, equipment
for electronic access to global telecommunications network, equipment for
transmitting, receiving, recording and monitoring voice, data, information,
images, signals, messages, data and word processors, computer programs for
use in operating and accessing telecommunications systems; audio and video
broadcasting featuring entertainment in the nature of live visual and audio
performances, and musical, variety, news and comedy shows; providing
information in the field of telecommunications via global computer networks
Class 041. First use:
education in the nature of classes and seminars in the fields of business,
telecommunications and computers, and the distribution of course materials
therewith; entertainment in the nature of live visual and audio performances,
namely, musical band, rock group, gymnastic, dance, and ballet performances;
entertainment services, namely, providing musical, variety, news and comedy
shows via a global computer information network; entertainment services,
namely, providing on-line computer games for children and adults; organization
of community sporting and cultural events; publication of books, magazines,
journals, manuals, brochures, and leaflets
Class 042. First use:
computer programming for others; rental of data processing equipment; rental of
computer hardware and software; design for others in the field of
telecommunications equipment; maintenance and repair of computer software;
installation of computer software
U.S. Application/ NONE Application Date NONE
Registration No.
Registration Date NONE
Word Mark T-SYSTEMS
Goods/Services telecommunication and information technology goods and services
U.S. Application/ NONE Application Date NONE
Registration No.
Registration Date NONE
Word Mark T-SYSTEM
Goods/Services telecommunication and information technology goods and services
U.S. Application/ NONE Application Date NONE
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 62 of 127 PageID #:62
Registration No.
Registration Date NONE
Word Mark T
Goods/Services telecommunication and information technology goods and services
U.S. Application/ NONE Application Date NONE
Registration No.
Registration Date NONE
Word Mark T-MOBILE
Goods/Services telecommunication and information technology goods and services
Attachments 75093059#TMSN.gif ( 1 page )( bytes )
75095185#TMSN.gif ( 1 page )( bytes )
74720652#TMSN.gif ( 1 page )( bytes )
78693813#TMSN.jpeg ( 1 page )( bytes )
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75095186#TMSN.gif ( 1 page )( bytes )
75248964#TMSN.gif ( 1 page )( bytes )
75248963#TMSN.gif ( 1 page )( bytes )
Notice of Opposition.pdf ( 9 pages )(44305 bytes )
Certificate of Service
The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
record by Overnight Courier on this date.
Signature /Jason L. White/
Name Jason L. White
Date 09/14/2011
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 63 of 127 PageID #:63
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
In the matter of trademark application Serial No. 85/149,368
Filed: October 11, 2010
For the mark: T SYSTEMDS
Published in the Official Gazette on: May 17, 2011
DEUTSCHE TELEKOM AG, )
)
Opposer, )
)
v. ) Opposition No.: Pending
)
T-SYSTEM, INC., )
)
Applicant. )
NOTICE OF OPPOSITION
Opposer, Deutsche Telekom AG (hereinafter “DTAG” ), believes that it is being and will
be damaged by registration of the mark T SYSTEMDS in application 85/149,368 for use in
connection with “digital record keeping systems comprising digital pens coupled with computer
software that provides web-based access to applications and online services through a web
operating system or portal interface for emergency rooms, urgent care centers, and first
response units” in International Class 09. DTAG hereby opposes the same pursuant to Section
13(a) of the Trademark Act of 1946, as amended (the “Lanham Act”), 15 U.S.C. § 1063(a).
The Parties and the Marks
1. DTAG is a corporation organized under the laws of the Federal Republic of
Germany, with its principal place of business located at Friedrich-Ebert-Allee 140, Bonn, 53113.
2. DTAG and its affiliates are one of the world’s largest telecommunication and
information technology service providers. Both DTAG and its affiliates, including T-Systems,
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 64 of 127 PageID #:64
U.S.A. and T-Mobile, U.S.A., offer a broad range of telecommunication and information
technology goods and services under DTAG’s family of “T” marks, including the marks “T-
SYSTEMS,” “T-MOBILE,” and other “T” formatives (collectively, the “DTAG Marks”). These
DTAG Marks are among DTAG’s core brands and are integral to its corporate identity. In this
regard, DTAG has extensively used and promoted the DTAG Marks in domestic and
international commerce. Indeed, these marks have been widely used and registered by DTAG on
a worldwide basis for many years in a stand alone form, as a stand alone design element, in
combination with additional words, numbers, designs and/or device elements, in numerous
colors, and in black and white. (See Exhibit A for a non-exhaustive, representative sample of the
DTAG Marks in the U.S.). As part of its family of DTAG Marks, the “T-SYSTEMS” brand has
been widely registered and/or used as trademarks, domain names, company names, and in
various other mediums both in singular and plural form (collectively, the “T-SYSTEMS
Marks”). As a result of this extensive use, advertising, and promotion, the T-SYSTEMS Marks
have become well-known as distinctive indicators of the origin of DTAG’s goods and services
and have become a valuable symbol of DTAG’s goodwill.
3. The DTAG Marks constitute a series or family of marks that are owned by and
are in the name of DTAG or its affiliates, are well-known trademarks, and are subject to a
number of trademark applications and registrations worldwide, some of which are now
incontestable under 15 U.S.C. § 1065. (See Exhibit A).
4. The T-SYSTEMS Marks are well-known trademarks and are subject to a number
of trademark applications and registrations worldwide, some of which are now incontestable
under 15 U.S.C. § 1065. (See the first two entries in Exhibit A for the earliest U.S. registrations
depicting the T-SYSTEMS Marks).
2
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5. Upon information and belief, applicant T-System, Inc. (“TSI”) is a corporation
organized under the laws of Texas, with its principal place of business located at 4020 McEwen
Drive, Suite 281, Dallas, Texas 75244.
6. Despite the existence of a “Trademark Use and Registration Agreement” entered
into by DTAG and TSI on March 3, 2004, prohibiting TSI from registering certain T-SYSTEM-
type marks, TSI’s application Serial No. 85/149,368 fully incorporates, is dominated in both
sight and sound by, and creates a clear commercial impression of the words “T SYSTEM”
(“TSI’s Application”).
Likelihood of Confusion With DTAG’s Prior Registrations
Section 2(d), 15 U.S.C. § 1052(d)
7. DTAG repeats and realleges each and every allegation set forth in Paragraphs 1-6.
8. DTAG’s rights in its T-SYSTEMS Marks date back to at least as early as April
23, 1996, the filing dates for U.S. Reg. Nos. 2,448,571 and 2,460,631. (See Exhibit A). Since
this time, DTAG continuously has used its T-SYSTEMS Marks, and formatives of the same, in
U.S. and international commerce. The filing date of TSI’s Application is October 11, 2010, and
is based on an intent to use in U.S. commerce. DTAG therefore has priority based on its prior
use and valid and subsisting T-SYSTEMS Marks and registrations.
9. TSI’s Application consists of the letter “T” followed by the word “SYSTEMDS.”
DTAG’s T-SYSTEMS Marks make use of and predominantly feature the letter “T” followed by
“SYSTEM” or “SYSTEMS.” The respective marks are therefore highly similar, if not identical,
in sight and sound as well as identical in commercial impression.
10. The DTAG Marks as a whole consist of and predominantly feature the letter “T”
and often include various other words, such as “SYSTEMS” and “MOBILE.” The TSI
3
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Application follows the same distinct pattern as the DTAG Marks and is thus highly similar, if
not identical, in sight and sound as well as identical in commercial impression.
11. The identical nature of the DTAG Marks and the TSI Application in sight and
commercial impression is particularly pronounced given the nature of the claimed goods and
services in the TSI Application, namely, computer software providing web-based access to
applications and online services in International Class 09.
12. The DTAG Marks claim numerous telecommunication and information
technology goods and services in many International Classes, but focus heavily on
telecommunication goods and services in International Classes 09, 38, and 42, as set forth in
more detail in Exhibit A. As a result, the goods and services, as well as relevant consumers and
channels of trade, of the DTAG Marks and subsequent TSI Application are identical.
13. On information and belief, TSI adopted its mark years after DTAG’s established
worldwide use and promotion of the DTAG Marks for its telecommunication and information
technology goods and services, and TSI modeled its trademark filings after the branding strategy
established by DTAG for the DTAG Marks.
14. TSI’s junior use of an identical branding strategy and a highly similar, if not
identical mark, for use in connection with identical telecommunication and information
technology goods and services overlaps and duplicates the DTAG Marks, as well as the goods
and services, and will inevitably lead consumers to believe that DTAG is the source of the
products, or that TSI is affiliated, endorsed or sponsored by DTAG, all in violation of DTAG’s
rights in the DTAG Marks.
15. For the foregoing reasons, DTAG believes and alleges that it is being and will be
damaged by the registration of TSI’s Application Serial No. 85/149,368.
4
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 67 of 127 PageID #:67
Likelihood of Confusion With DTAG’s Common Law Rights
Section 2(d), 15 U.S.C. § 1052(d)
16. DTAG repeats and realleges each and every allegation set forth in Paragraphs 1-
15.
17. Based on its continuous use of the DTAG Marks in U.S. commerce, these marks
have become distinctive source indicators of the various telecommunication and information
technology goods and services offered by DTAG, and DTAG has not abandoned these common
law rights.
18. DTAG’s rights in the DTAG Marks are well prior to the filing date of TSI’s
Application, October 11, 2010. DTAG therefore has priority based on its prior and subsisting
use of the DTAG Marks.
19. TSI’s Application consists of the letter “T” followed by the word “SYSTEMDS.”
DTAG’s T-SYSTEMS Marks make use of and predominantly feature the letter “T” followed by
“SYSTEM” or “SYSTEMS.” The respective marks are therefore highly similar, if not identical,
in sight and sound as well as identical in commercial impression.
20. The DTAG Marks as a whole consist of and predominantly feature the letter “T”
and often include various other words, such as “SYSTEMS” and “MOBILE.” The TSI
Application follows the same distinct pattern as the DTAG Marks and is thus highly similar, if
not identical, in sight and sound as well as identical in commercial impression.
21. The identical nature of the DTAG Marks and the TSI Application in sight and
commercial impression is particularly pronounced given the nature of the claimed goods and
services in the TSI Application, namely, computer software providing web-based access to
applications and online services in International Class 09.
5
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22. The DTAG Marks are used in connection with various telecommunication and
information technology goods and services. As a result, the goods and services, as well as
relevant consumers and channels of trade, of the senior DTAG Marks and subsequent TSI
Application are identical.
23. On information and belief, TSI adopted its mark years after DTAG’s established
worldwide use and promotion of the DTAG Marks for its telecommunication and information
technology goods and services and modeled its trademark filings after the branding strategy
established by the DTAG Marks.
24. TSI’s junior use of an identical branding strategy and a highly similar, if not
identical mark, for use in connection with identical telecommunication and information
technology goods and services overlaps and duplicates the DTAG Marks, as well as the goods
and services, and will inevitably lead consumers to believe that DTAG is the source of the
products, or that TSI is affiliated, endorsed or sponsored by DTAG, all in violation of DTAG’s
rights in the DTAG Marks.
25. For the foregoing reasons, DTAG believes and alleges that it is being and will be
damaged by the registration of TSI’s Application Serial No. 85/149,368.
WHEREFORE, DTAG respectfully requests that application Serial No. 85/149,368 be
refused registration and judgment in the present opposition be entered in favor of the DTAG and
against TSI, with prejudice.
6
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 69 of 127 PageID #:69
Respectfully submitted,
DEUTSCHE TELEKOM AG
By: /Jason L. White/ .
Michael D. Adams
Jason L. White
MAYER BROWN, LLP
P.O. Box 2828
Chicago, IL 60690-2828
(312) 701-8713
Attorney for Opposer
7
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 70 of 127 PageID #:70
Exhibit A
Deutsche Telekom’s Registrations
Mark Image Registration Registration Class(es)
No. Date
T System T-System 2448571 5-8-2001 9, 16, 36, 37, 38, 41,
42
T System 2460631 6-19-2001 9, 16, 36, 37, 38, 41,
42
T 2472584 7-31-2001 9, 36, 37, 38, 41
T 3538688 11-25-2008 42
T 2508277 11-20-2001 9, 16, 25, 36, 38, 42
T 3216527 3-6-2007 42
T Mobile 3076000 4-4-2006 42
T Mobile 2941016 4-19-2005 9, 16, 36, 37, 38, 41,
42
T Mobile 2284387 10-12-1999 9, 14, 16, 18, 25, 28,
36, 37, 38, 41, 42
T-Mobile T-Mobile 2282432 10-5-1999 9, 14, 16, 18, 25, 28,
36, 37, 38, 41, 42
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 71 of 127 PageID #:71
CERTIFICATE OF MAILING
I hereby certify that, on this 14th day of September, 2011, this Notice of Opposition is
being sent via UPS Overnight and email to:
JOHN M. CONE
HITCHCOCK EVERT LLP
PO BOX 131709
DALLAS, TX 75313-1709
By: /Jason L. White/ .
Jason L. White
700570957 11148473
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 72 of 127 PageID #:72
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
ESTTA Tracking number: ESTTA450523
Filing date: 01/11/2012
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 Deutsche Telekom AG
Granted to Date 01/11/2012
of previous
extension
Address Friedrich-Ebert-Allee 140
Bonn,, 53113
GERMANY
Attorney Michael D. Adams
information Mayer Brown LLP
P.O. Box 2828
Chicago, IL 60690-2828
UNITED STATES
ipdocket@mayerbrown.com Phone:312-701-8713
Applicant Information
Application No 85305952 Publication date 09/13/2011
Opposition Filing 01/11/2012 Opposition 01/11/2012
Date Period Ends
Applicant T-SYSTEM, INC.
Suite 281 4020 McEwen Drive
Dallas, TX 75244
UNITED STATES
Goods/Services Affected by Opposition
Class 009.
All goods and services in the class are opposed, namely: computer software used to analyze medical
emergency department data for use by clinicians and hospital administration
Grounds for Opposition
Priority and likelihood of confusion Trademark Act section 2(d)
Marks Cited by Opposer as Basis for Opposition
U.S. Registration 2448571 Application Date 04/23/1996
No.
Registration Date 05/08/2001 Foreign Priority NONE
Date
Word Mark T-SYSTEM
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 73 of 127 PageID #:73
Design Mark
Description of NONE
Mark
Goods/Services Class 009. First use:
electric, electronic, optical, measuring, signalling, controlling or teaching
apparatus and instruments, all for use with telecommunications, namely,
apparatus for producing sound, images or data, magnetic and optical data
carriers, data processors and computers, namely, microcomputers,
minicomputers, computer central processors, computer monitors, computer
keyboards, computer terminals, computer interface boards, computer memories,
computer laser printers, computer impact printers, computer dot matrix printers,
computer operating systems, computers and instructional manuals sold as a
unit, computer interface apparatus, namely, computer modems, computer
mouse and mouse pad, computer peripherals and parts thereof; computer
programs and data bases for use in operating telecommunications and business
management systems and related instruction manuals sold as a unit; optical
cables, optic filters, optical scanners, optical character readers, optical discs,
optical fibers, optical glass for signal transmission, optic transmitters, optic
receivers, optical signal processing apparatus, optic switches, optical networks
comprising communication transmission switching and reception apparatus,
optical attenuators, optical amplifiers, optical character recognition apparatus,
and parts thereof; audio, video and data communications systems, namely,
digital and analogue signal transmitters, receivers and converters, radio and
telephone transmitters, receivers and servers, stationary, wireless and cellular
telephone systems and answering machines, telecommunication transmission,
receiving and storage apparatus, telecommunications transmitting sets, data
transmitters, facsimile machines, electronic mail apparatus for electronic
exchange of data images and messages, remote controls and set-top units,
cinematographic television and amusement equipment, namely, signal decoders
and interactive audio and video equipment to facilitate interaction between
consumers and providers of goods and services; electrical wire, electrical wire
connectors, integrated circuits, printed circuits, electric circuits, circuit breakers,
printed circuit boards, electric circuit boards, circuit connectors, electrical
controllers, electrical converters, electrical fuses, electric luminescent display
panels, electrical switch plates, electric plugs, antennas, electrical cables,
computer cables, computer chips, silicon chips, chronographs for use as
specialized time recording apparatus, electric coils, computer buffers, blank
computer discs, blank computer floppy disks, computer hard discs, electrical
conductors, acoustic conduits, electrical conduits, fiber optic conduits and parts
thereof; compact disc players, audio and video tape recorders, audio and video
tape players, audio and video cassette recorders, audio and video cassette
players, blank audio and video tapes, cassettes, discs and microfiche; audio and
video tapes, cassettes, discs and microfiche featuring information concerning
telecommunications, personal and business management systems; video
monitors, automatic vending machines and timing mechanisms therefor, and
parts thereof; data processors and readers, word processors, magnetic coded
card readers, magnetic cards, electronic encryption units, lasers, light emitting
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 74 of 127 PageID #:74
diodes, light emitting diode displays, microprocessors, blank magnetic data
carriers, demagnetizers for magnetic tapes, and parts thereof; communications
and video transmission switching and reception apparatus; computer, data and
video networking and conferencing equipment, namely, teleconferencing
equipment, audiovisual teaching equipment, overhead film, photographic and
slide projectors, projection screens, computer based information display
equipment, namely, computers which display information on an overhead
screen, intercoms; telephones, telephone answering machines, telephone
transmitters, telephone networks, telephone wires, teleprinters, teletypewriters,
and parts thereof, namely, caller identification boxes, radio telephone equipment
and accessories, namely, call boxes and systems, dialing assembiles, telephone
units, audio operated relays, signalling devices, receiving devices, termination
equipment, filters, protectors and automatic signalling and control equipment,
telemeters, wireless and cellular telephones, pagers, paging equipment,
portable computer devices, facsimile transmitters and receivers, wireless fax
machines, personal communications equipment, namely, Personal Digital
Assistants (PDA), calculators and related peripherals; satellite processors,
satellites and satellite communication earth stations both stationary and
moveable, prerecorded compact discs, audio cassette tapes, video cassette
tapes, digital audio tapes and digital video discs featuring musical, variety, news
and comedy shows; and computer game programs for children and adults
Class 016. First use:
printed matter, namely, books or magazines on telecommunications; printed
instructional and teaching material on telecommunications; stationery
Class 036. First use:
financing services; real estate brokerage; real estate appraisal, real estate
investment; real estate listing; real estate management
Class 037. First use:
custom construction and building renovation; construction planning, construction
supervision; maintenance and repair of telecommunications networks, apparatus
and instruments; installation of telecommunications networks, apparatus and
instruments; installation, maintenance and repair of computer networks and
computer hardware
Class 038. First use:
telecommunication services, namely, electronic mail services; audio and video
teleconferencing; electronic, electric and digital transmission of voice, data,
information, images, signals and messages; rental of apparatus for
telecommunications, namely, rental of electronic access, transmission, receiver,
recording and monitoring equipment comprised of telecommunications hardware
and software including components and peripherals thereof for use in the
telecommunications industry; audio and video broadcasting featuring
entertainment in the nature of visual and audio performances, and musical,
variety, news and comedy shows
Class 041. First use:
education in the nature of classes and seminars in the fields of business,
telecommunications and computers, and the distribution of course materials
therewith; entertainment in the nature of visual and audio performances, namely,
musical band, rock group, gymnastic, dance, and ballet performances;
entertainment services, namely, providing musical, variety, news and comedy
shows via a global computer information network; entertainment services,
namely, providing on-line computer games for children and adults; organization
of community sporting and cultural events; publication of books, magazines,
journals, manuals, brochures, and leaflets
Class 042. First use:
computer programming for others; leasing access time to a computer data base
in the field of telecommunications; rental of data processing equipment; rental of
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 75 of 127 PageID #:75
computer hardware and software; design for others in the field of
telecommunications equipment; installation, maintenance and repair of
computer software
U.S. Registration 2460631 Application Date 04/23/1996
No.
Registration Date 06/19/2001 Foreign Priority NONE
Date
Word Mark T SYSTEM
Design Mark
Description of NONE
Mark
Goods/Services Class 009. First use:
electric, electronic, optical, measuring, signalling, controlling or teaching
apparatus and instruments, all for use with telecommunications, namely,
apparatus for producing sound, images or data, [magnetic and optical data
carriers, data processors and computers, namely, microcomputers,
minicomputers, computer central processors, computer monitors, computer
keyboards, computer terminals, computer interface boards, computer memories,
computer laser printers, computer impact printers, computer dot matrix printers,
computer operating systems, computers and instructional manuals sold as a
unit, computer interface apparatus, namely, computer modems, computer
mouse and mouse pad, computer peripherals and parts thereof; ]computer
programs and data bases for use in operating telecommunications and business
management systems and related instruction manuals sold as a unit; [optical
cables, optic filters, optical scanners, optical character readers, optical discs,
optical fibers, optical glass for signal transmission, optic transmitters, optic
receivers, optical signal processing apparatus, optic switches, optical networks
comprising communication transmission switching and reception apparatus,
optical attenuators, optical amplifiers, optical character recognition apparatus,
and parts thereof;] audio, video and data communications systems, namely,
digital and analogue signal transmitters, receivers and converters, radio and
telephone transmitters, receivers and servers, stationary, wireless and cellular
telephone systems [and answering machines, ]telecommunication transmission,
receiving and storage apparatus, telecommunications transmitting sets, data
transmitters,[ facsimile machines] electronic mail apparatus for electronic
exchange of data images and messages,[ remote controls and set-top units,]
cinematographic television and amusement equipment, namely, signal decoders
and interactive audio and video equipment to facilitate interaction between
consumers and providers of goods and services; [electrical wire, electrical wire
connectors, integrated circuits, printed circuits, electric circuits, circuit breakers,
printed circuit boards, electric circuit boards, circuit connectors, electrical
controllers, electrical converters, electrical fuses, electric luminescent display
panels, electrical switch plates, electric plugs, antennas, electrical cables,
computer cables, computer chips, silicon chips, chronographs for use as
specialized time recording apparatus, electric coils, computer buffers, blank
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 76 of 127 PageID #:76
computer discs, blank computer floppy disks, computer hard discs, electrical
conductors, acoustic conduits, electrical conduits, fiber optic conduits and parts
thereof; compact disc players, audio and video tape recorders, audio and video
tape players, audio and video cassette recorders, audio and video cassette
players, blank audio and video tapes, cassettes, discs and microfiche; audio and
video tapes, cassettes, discs and microfiche featuring information concerning
telecommunications, personal and business management systems; video
monitors, automatic vending machines and timing mechanisms therefor, and
parts thereof; data processors and readers, word processors, magnetic coded
card readers, magnetic cards, electronic encryption units, lasers, light emitting
diodes, light emitting diode displays, microprocessors, blank magnetic data
carriers, demagnetizers for magnetic tapes, and parts thereof;] communications
and video transmission switching and reception apparatus; computer, data and
video networking and conferencing equipment, namely, teleconferencing
equipment, [audiovisual teaching equipment, overhead film, photographic and
slide projectors, projection screens, computer based information display
equipment, namely, computers which display information on an overhead
screen, intercoms;] telephones,[ telephone answering machines,] telephone
transmitters, telephone networks,[ telephone wires, teleprinters, teletypewriters,]
and parts thereof, namely, [caller identification boxes,] radio telephone
equipment and accessories, namely, [call boxes and systems, dialing
assemblies, telephone units,] audio operated relays, signalling devices,
receiving devices, termination equipment, filters, protectors and automatic
signalling and control equipment, telemeters, wireless and cellular telephones,
pagers, paging equipment, portable computer devices, [facsimile transmitters
and receivers, wireless fax machines, personal communications equipment,
namely, Personal Digital Assistants (PDA), calculators and related peripherals;]
satellite processors, satellites and satellite communication earth stations both
stationary and moveable,[ prerecorded compact discs, audio cassette tapes,
video cassette tapes, digital audio tapes and digital video discs featuring
musical, variety, news and comedy shows; and computer game programs for
children and adults]
Class 016. First use:
printed matter, namely, books or magazines on telecommunications [; printed
instructional and teaching material on telecommunications; stationery]
Class 036. First use:
financing services[; real estate brokerage; real estate appraisal, real estate
investment; real estate listing; real estate management]
Class 037. First use:
[custom construction and building renovation; construction planning,
construction supervision;] maintenance and repair of telecommunications
networks, apparatus and instruments; installation of telecommunications
networks, apparatus and instruments; installation, maintenance and repair of
computer networks and computer hardware
Class 038. First use:
telecommunication services, namely, electronic mail services; audio and video
teleconferencing; electronic, electric and digital transmission of voice, data,
information, images, signals and messages [; rental of apparatus for
telecommunications, namely, rental of electronic access, transmission, receiver,
recording and monitoring equipment comprised of telecommunications hardware
and software including components and peripherals thereof for use in the
telecommunications industry; audio and video broadcasting featuring
entertainment in the nature of visual and audio performances, and musical,
variety, news and comedy shows]
Class 041. First use:
[education in the nature of classes and seminars in the fields of business,
telecommunications and computers, and the distribution of course materials
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 77 of 127 PageID #:77
therewith;] entertainment in the nature of visual and audio performances,
namely, musical band, rock group, gymnastic, dance, and ballet performances;
entertainment services, namely, providing musical, variety, news and comedy
shows via a global computer information network; entertainment services,
namely, providing on-line computer games for children and adults;[ organization
of community sporting and cultural events; publication of books, magazines,
journals, manuals, brochures, and leaflets]
Class 042. First use:
computer programming for others; [leasing access time to a computer data base
in the field of telecommunications; rental of data processing equipment; rental of
computer hardware and software;] design for others in the field of
telecommunications equipment; installation, maintenance and repair of
computer software
U.S. Registration 2472584 Application Date 08/24/1995
No.
Registration Date 07/31/2001 Foreign Priority NONE
Date
Word Mark T
Design Mark
Description of NONE
Mark
Goods/Services Class 009. First use:
[ electric, electronic, optical, measuring, signalling, controlling or teaching
apparatus and instruments, all for use with telecommunications, namely,
apparatus for producing sound, images or data, magnetic and optical data
carriers, data processors and computers, namely, microcomputers,
minicomputers, computer central processors, computer monitors, computer
keyboards, computer terminals, computer interface boards, computer memories,
computer laser printers, computer impact printers, computer dot matrix printers,
computer operating systems, computers and instructional manuals sold as a
unit, computer interface apparatus, namely, computer modems, computer
mouse and mouse pad, computer peripherals and parts thereof; ] computer
programs and data bases for use in operating telecommunications; [ and
business management systems and related instruction manuals sold as a unit;
optical cables, optic filters, optical scanners, optical character readers, optical
discs, optical fibers, optical glass for signal transmission, optic transmitters, optic
receivers, optical signal processing apparatus, optic switches, optical networks
comprising communication transmission switching and reception apparatus,
optical attenuators, optical amplifiers, optical character recognition apparatus,
and parts thereof; ] audio,(( video)) and data ((communications systems,))
namely, digital and analogue signal transmitters, receivers and converters, radio
((and telephone)) transmitters, receivers and ((servers,)) ((stationary,)) wireless
and cellular ((telephone systems,)) [ and answering machines, ]
telecommunication transmission, receiving and storage apparatus,
telecommunications transmitting sets, data transmitters, [ facsimile machines, ]
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 78 of 127 PageID #:78
electronic mail apparatus for electronic exchange of data images and messages,
[ remote controls and set-top units, cinematographic television and amusement
equipment, namely, signal decoders and interactive audio and video equipment
to facilitate interaction between consumers and providers of goods and services;
electrical wire, electrical wire connectors, integrated circuits, printed circuits,
electric circuits, circuit breakers, printed circuit boards, electric circuit boards,
circuit connectors, electrical controllers, electrical converters, electrical fuses,
electric luminescent display panels, electrical switch plates, electric plugs,
antennas, electrical cables, computer cables, computer chips, silicon chips,
chronographs for use as specialized time recording apparatus, electric coils,
computer buffers, blank computer discs, blank computer floppy disks, computer
hard discs, electrical conductors, acoustic conduits, electrical conduits, fiber
optic conduits and parts thereof; compact disc players, audio and video tape
recorders, audio and video tape players, audio and video cassette recorders,
audio and video cassette players, blank audio and video tapes, cassettes, discs
and microfiche; audio and video tapes, cassettes, discs and microfiche featuring
information concerning telecommunications, personal and business
management systems; video monitors, automatic vending machines and timing
mechanisms therefor, and parts thereof; data processors and readers, word
processors, magnetic coded card readers, magnetic cards, electronic encryption
units, lasers, light emitting diodes, light emitting diode displays,
microprocessors, blank magnetic data carriers, demagnitizers for magnetic
tapes, and parts thereof; communications and video transmission switching and
reception apparatus; computer, data and video networking and conferencing
equipment, namely, teleconferencing equipment, audiovisual teaching
equipment, overhead film, photographic and slide projectors, projection screens,
computer based information display equipment, namely, computers which
display information on an overhead screen, intercoms;] telephones, [ telephone
answering machines, ] telephone transmitters, * AND * telephone networks; [
telephone wires, teleprinters, teletypewriters, and parts thereof, namely, caller
identification boxes, radio telephone equipment and accessories, namely, call
boxes and systems, dialing assemblies, telephone units, audio operated relays,
signalling devices, receiving devices, termination equipment, filters, protectors
and automatic signalling and control equipment, telemeters, ] wireless and
cellular telephones,(( pagers, paging equipment,)) portable computer devices, [
facsimile transmitters and receivers, wireless fax machines, ] personal
communications equipment, namely, Personal Digital Assistants (PDA), [
calculators ] and related peripherals; [ satellite processors, satellites and satellite
communication earth stations both stationary and moveable; baseball batting
helmets; prerecorded compact discs, audio cassette tapes, video cassette
tapes, digital audio tapes and digital video discs featuring musical, variety, news
and comedy shows; and ] computer game programs for children and adults
Class 014. First use:
[ jewelry, horological instruments, namely, clocks and watches; chronometers
and chronographs ]
Class 016. First use:
[ printed matter, namely, books or magazines on telecommunications; printed
instructional and teaching material on telecommunications; stationery ]
Class 018. First use:
[ umbrellas; parasols, goods made of leather and imitations of leather, namely,
wallets, valises, carrying cases for credit cards, tickets, in particular, air travel
tickets, or pocket calculators, purses, writing cases, namely, briefcase type
portfolios, suitcases, travelling bags, and briefcases; trunks for travel and travel
bags ]
Class 025. First use:
[ clothing, namely, shirts, dresses, pants, jackets, coats, T-shirts, shorts,
headwear, footwear ]
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 79 of 127 PageID #:79
Class 028. First use:
[ video and computer game cartridges; board games, parlor games, card games,
toy action figures, wind-up toys, stuffed toys, electrical and mechanical action
toys, children's multiple activity toys; gymnastic apparatus; sporting articles,
namely, cycling equipment and accessories, namely, stationary cycles, football
equipment and accessories, namely, footballs, football shoulder pads, football
girdles, football protectors, football knee, elbow, chest and leg pads, soccer
equipment and accessories, namely, soccer balls, soccer ball goal nets, soccer
ball knee pads, baseball equipment and accessories, namely, baseballs,
baseball bats, baseball bases, baseball mitts, baseball gloves, baseball bats,
basket ball equipment and accessories, namely, basket balls, basket ball goals,
basket ball nets, and all parts related thereto ]
Class 036. First use:
financing services *, namely, FINANCING OF WIRELESS
TELECOMMUNICATION SERVICE PLANS AND PREPAID WIRELESS
TELECOMMUNICATIONS SERVICE PLANS * [ ; real estate brokerage; real
estate appraisal, real estate investment; real estate listing; real estate
management ]
Class 037. First use:
[ custom construction and building renovation; construction planning,
construction supervision;] ((maintenance and repair of telecommunications
networks,)) apparatus and instruments; ((installation of telecommunications
networks, apparatus and instruments;)) [ installation, maintenance and repair of
computer networks and computer hardware ]
Class 038. First use:
telecommunication services, namely, electronic mail services; [ audio and video
teleconferencing; ] electronic, electric and digital transmission of voice, data,
information, images, signals and messages; [ rental of apparatus for
telecommunications, namely, rental of electronic access, transmission, receiver,
recording and monitoring equipment comprised of telecommunications hardware
and software including components and peripherals thereof for use in the
telecommunications industry; ] audio [ and video ] broadcasting featuring
entertainment in the nature of [ visual ] * music * and audio performances [, and
musical, variety, news and comedy shows ]
Class 041. First use:
[ education in the nature of classes and seminars in the fields of business,
telecommunications and computers, and the distribution of course materials
therewith; entertainment in the nature of visual and audio performances, namely,
musical band, rock group, gymnastic, dance, and ballet performances; ]
entertainment services, namely, providing * music * [ musical, variety, news and
comedy shows ] via a global computer information network; entertainment
services, namely, providing on-line computer games for children and adults [ ;
organization of community sporting and cultural events; publication of books,
magazines, journals, manuals, brochures, and leaflets ]
Class 042. First use:
[ computer programming for others; leasing access time to a computer data
base in the field of telecommunications; rental of data processing equipment;
rental of computer hardware and software; design for others in the field of
telecommunications equipment; installation, maintenance and repair of
computer software ]
U.S. Registration 3538688 Application Date 08/16/2005
No.
Registration Date 11/25/2008 Foreign Priority 02/17/2005
Date
Word Mark T
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 80 of 127 PageID #:80
Design Mark
Description of NONE
Mark
Goods/Services Class 042. First use: First Use: 2002/06/00 First Use In Commerce: 2002/06/00
Computer programming services for others; application service provider,
namely, hosting computer software applications for others, hosting of digital
content on the Internet; hosting the websites of others on a computer server for
a global computer network; computer services, namely, creating indexes of
information available on computer networks; providing information via the
telephone and the global communication networks in the field of information
technology; installation, maintenance and repair of computer software; providing
information at the specific request of end-users by means of telephone or global
communications networks; providing temporary use of online non-downloadable
telecommunications software for providing multiple user access to the global
computer network
U.S. Registration 3076000 Application Date 10/15/2004
No.
Registration Date 04/04/2006 Foreign Priority NONE
Date
Word Mark T MOBILE
Design Mark
Description of NONE
Mark
Goods/Services Class 042. First use:
Application service provider, namely, [ hosting computer software applications
for others, ] hosting of digital content on the internet; hosting the websites of
others on a computer server for a global computer network, all for advertising
purposes
U.S. Registration 2941016 Application Date 04/23/1996
No.
Registration Date 04/19/2005 Foreign Priority NONE
Date
Word Mark T MOBILE
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 81 of 127 PageID #:81
Design Mark
Description of NONE
Mark
Goods/Services Class 009. First use:
Electric, electronic, optical, measuring, signalling, controlling or teaching
apparatus and instruments, all for use with telecommunications, namely,
apparatus for producing sound, images or data, [ magnetic and optical data
carriers, ] data processors and computers, namely, microcomputers,
minicomputers, [ computer central processors, computer monitors, computer
keyboards, computer terminals, computer interface boards, computer memories,
computer laser printers, computer impact printers, computer dot matrix printers, ]
computer operating systems, computers and instructional manuals sold as a
unit, computer interface apparatus, namely, computer modems, computer
mouse and mouse pad, computer peripherals and parts thereof; computer
programs and data bases for use in operating telecommunications and business
management systems and related instruction manuals sold as a unit; [ optical
cables, optic filters, optical scanners, optical character readers, optical discs,
optical fibers, optical glass for signal transmission, optic transmitters, optic
receivers, optical signal processing apparatus, optic switches, optical networks
comprising communication transmission switching and reception apparatus,
optical attenuators, optical amplifiers, optical character recognition apparatus,
and parts thereof; ] audio, video and data communications systems, namely,
digital and analogue signal transmitters, receivers and converters, radio and
telephone transmitters, receivers and servers, stationary, wireless and cellular
telephone systems and answering machines, telecommunication transmission,
receiving and storage apparatus, telecommunications transmitting sets, data
transmitters, [ facsimile machines, ] electronic mail apparatus for electronic
exchange of data images and messages, [ remote controls and set-top units,
cinematographic television and amusement equipment, namely, signal decoders
and interactive audio and video equipment to facilitate interaction between
consumers and providers of goods and services; electrical wire, electrical wire
connectors, integrated circuits, printed circuits, electric circuits, circuit breakers,
printed circuit boards, electric circuit boards, circuit connectors, electrical
controllers, electrical converters, electrical fuses, electric luminescent display
panels, electrical switch plates, electric plugs, antennas, electrical cables,
computer cables, computer chips, silicon chips, chronographs for use as
specialized time recording apparatus, electric coils, computer buffers, blank
computer discs, blank computer floppy disks, computer hard discs, electrical
conductors, acoustic conduits, electrical conduits, fiber optic conduits and parts
thereof; compact disc players, audio and video tape recorders, audio and video
tape players, audio and video cassette recorders, audio and video cassette
players, blank audio and video tapes, cassettes, discs and microfiche; audio and
video tapes, cassettes, discs and microfiche featuring information concerning
telecommunications, personal and business management systems; video
monitors, automatic vending machines and timing mechanisms therefor, and
parts thereof; data processors and readers, word processors, magnetic coded
card readers, magnetic cards, electronic encryption units, lasers, light emitting
diodes, light emitting diode displays, microprocessors, blank magnetic data
carriers, demagnetizers for magnetic tapes, and parts thereof; communications
and video transmission switching and reception apparatus; computer, data and
video networking and conferencing equipment, namely, teleconferencing
equipment, audiovisual teaching equipment, overhead film, photographic and
slide projectors, projection screens, computer based information display
equipment, namely, computers which display information on an overhead
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 82 of 127 PageID #:82
screen, intercoms; ] telephones, [ telephone answering machines, ] telephone
transmitters, [ telephone networks, telephone wires, teleprinters, teletypewriters,
andparts thereof, namely, caller identification boxes, radio telephone equipment
and accessories, namely, call boxes and systems, dialing assemblies, ]
telephone units, [ audio operated relays, signalling devices, receiving devices,
termination equipment, filters, protectors and automatic signalling and control
equipment, telemeters, ] wireless and cellular telephones, [ pagers, paging
equipment, ] portable computer devices, [ facsimile transmitters and receivers,
wireless fax machines, ] personal communications equipment, namely, Personal
Digital Assistants (PDA), [ calculators ] and related peripherals; [ satellite
processors, satellites and satellite communication earth stations both stationary
and moveable; prerecorded compact discs, audio cassette tapes, video cassette
tapes, digital audio tapes and digital video discs featuring musical, variety, news
and comedy shows; and computer game programs for children and adults ]
Class 016. First use:
Printed matter, namely, [ books ] or magazines on telecommunications; printed
instructional and teaching material on telecommunications; stationery
Class 036. First use:
Financing services; [ real estate brokerage; real estate appraisal, real estate
investment; real estate listing; real estate management ]
Class 037. First use:
[ Custom construction and building renovation; construction planning,
construction supervision; ] maintenance and repair of telecommunications [
networks, ] apparatus and instruments; [ installation of telecommunications
networks, apparatus and instruments; installation, ] maintenance and repair of
computer [ networks and computer ] hardware
Class 038. First use:
Telecommunication services, namely, electronic mail services; audio and video
teleconferencing; electronic, electric and digital transmission of voice, data,
information, images, signals and messages; [ rental of apparatus for
telecommunications, namely, rental of electronic access, transmission, receiver,
recording and monitoring equipment comprised of telecommunications hardware
and software including components and peripherals thereof for use in the
telecommunications industry; ] audio and video broadcasting featuring
entertainment in the nature of visual and audio performances, and musical,
variety, news and comedy shows
Class 041. First use:
[ Education in the nature of classes and seminars in the fields of business,
telecommunications and computers, and the distribution of course materials
therewith; ] entertainment in the nature of visual and audio performances,
namely, musical band, rock group, [ gymnastic, dance, and ballet ]
performances; entertainment services, namely, providing musical, variety, news
and comedy shows via a global computer information network; entertainment
services, namely, providing on-line computer games for children and adults;
organization of community sporting and cultural events; publication of [ books, ]
magazines, journals, manuals, brochures, and leaflets
Class 042. First use:
[ Computer programming for others; ] leasing access time to a computer data
base in the field of telecommunications; [ rental of data processing equipment;
rental of computer hardware and software; design for others in the field of
telecommunications equipment; ] installation, maintenance and repair of
computer software
U.S. Registration 2284387 Application Date 02/27/1997
No.
Registration Date 10/12/1999 Foreign Priority NONE
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 83 of 127 PageID #:83
Date
Word Mark T-MOBILE
Design Mark
Description of NONE
Mark
Goods/Services Class 009. First use:
Telecommunications equipment, namely, computer programs for operating
telecommunications systems, computer programs for providing multiple-user
access to the global communications network for the transfer and dissemination
of a wide range of information, magnetic, electric and optical networks
comprising of data transmitters consisting of digital and instruments that convert
user information into data signals for transmission or reconvert the received data
signals into user information and equipment that transfers data between data
terminals, storage apparatus, signaling devices, namely, equipment that
generates, transfers and receives information over a communications network
by electrical or optical means, termination equipment, namely, components that
connect an appropriate bridge, normally of the characteristic impedance, across
a circuit to provide stability; word processors, computers, namely,
microcomputers, minicomputers, computer central processors, microprocessors,
computer monitors, computer keyboards, computer terminals, computer
interface boards, computer laser printers, computer impact printers, computer
dot matrix printers, computer operating systems, computers and instructional
manuals sold as a unit, computer interface apparatus, namely, computer
modems, computer mouse and mouse pad, computer peripherals and parts
thereof; computer programs for use in operating business management systems
and related instruction manuals sold as a unit; audio, video and data
communications equipment, namely, digital and analogue signal transmitters,
receivers and converters, radio and telephone transmitters, receivers and
servers, electronic mail hardware and software for electronic exchange of data
images and messages, remote controls and set-top units for televisions,
cinematographic television and amusement equipment, namely, signal decoders
and interactive audio and video conferencing equipment to facilitate interaction
between consumers and providers of goods and services; chronographs for use
as specialized time recording apparatus, blank computer discs, blank computer
floppy disks, blank computer hard discs; compact disc players, audio and video
tape recorders, audio and video tape players, audio and video cassette
recorders, audio and video cassette players, blank audio and video tapes,
cassettes, discs and microfiche; audio and video tapes, cassettes, discs and
microfiche featuring information concerning telecommunications; video monitors,
automatic vending machines and timing mechanisms therefor, and parts thereof;
magnetic coded card readers, magnetic cards, blank magnetic data carriers,
demagnitizers for magnetic tapes, and parts thereof; computer, data and video
networking and conferencing equipment, namely, teleconferencing equipment,
audiovisual teaching equipment, namely, overhead film, photographic and slide
projectors, projection screens, computers that display information on an
overhead screen, intercoms; telephones, telephone answering machines,
teleprinters, teletypewriters, caller identification boxes, radio operated telephone
equipment, audio operated relays, wireless and cellular telephones and
answering machines, pagers, portable computers, facsimile machines, wireless
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 84 of 127 PageID #:84
fax machines, personal communications equipment, namely, personal digital
assistants (PDA), calculators and related peripherals, namely, cases for carrying
pocket calculators, satellites and satellite communication earth stations both
stationary and moveable; prerecorded compact discs, audio cassette tapes,
video cassette tapes, digital audio tapes and digital video discs featuring
musical, variety, news and comedy shows; and computer game programs for
children and adults
Class 014. First use:
jewelry, horological instruments, namely, clocks and watches; chronometers and
chronographs
Class 016. First use:
printed matter, namely, books or magazines on telecommunications; printed
instructional and teaching material on telecommunications; stationery
Class 018. First use:
Umbrellas; parasols, goods made of leather and imitations of leather, namely,
wallets, valises, carrying cases for credit cards, tickets, in particular, air travel
tickets, purses, writing cases, namely, briefcase type portfolios, suitcases,
traveling bags, and briefcases; trunks for travel and travel bags
Class 025. First use:
clothing, namely, shirts, dresses, pants, jackets, coats, T-shirts, shorts;
headwear; footwear
Class 028. First use:
Video and computer game cartridges; board games, parlor games, card games,
toy action figures, wind-up toys, stuffed toys, electrical and mechanical action
toys, children's multiple activity toys; gymnastic apparatus; sporting articles,
namely, cycling equipment and accessories, namely, stationary cycles, football
equipment and accessories, namely, footballs, football shoulder pads, football
girdles, football body protectors, football knee, elbow, chest and leg pads,
soccer equipment and accessories, namely, soccer balls, soccer ball goal nets,
soccer ball knee pads, baseball equipment and accessories, namely, baseballs,
baseball bats, baseball bases, baseball mitts, baseball gloves, basketball
equipment and accessories, namely, basketballs, basketball goals, basketball
nets
Class 036. First use:
financing services; real estate brokerage; real estate appraisal, real estate
investment; real estate listing; real estate management
Class 037. First use:
custom construction and building renovation; construction planning, construction
supervision; maintenance and repair of telecommunications networks, apparatus
and instruments; installation of telecommunications networks, apparatus and
instruments; maintenance and repair of computer networks and computer
hardware; installation of computer networks and computer hardware
Class 038. First use:
Telecommunication services, namely, electric, digital, cellular and wireless
transmission of voice, data, information, images, signals and messages, namely,
providing telecommunications connections over a global communications
network, electronic mail, voice mail and messaging services, audio and video
teleconferencing, rental of telecommunications equipment, namely, equipment
for electronic access to global telecommunications network, equipment for
transmitting, receiving, recording and monitoring voice, data, information,
images, signals, messages, data and word processors, computer programs for
use in operating and accessing telecommunications systems; audio and video
broadcasting featuring entertainment in the nature of live visual and audio
performances, and musical, variety, news and comedy shows
Class 041. First use:
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 85 of 127 PageID #:85
education in the nature of classes and seminars in the fields of business,
telecommunications and computers, and the distribution of course materials
therewith; entertainment in the nature of live visual and audio performances,
namely, musical band, rock group, gymnastic, dance, and ballet performances;
entertainment services, namely, providing musical, variety, news and comedy
shows via global computer information network; entertainment services, namely,
providing on-line computer games for children and adults; organization of
community sporting and cultural events; publication of books, magazines,
journals, manuals, brochures, and leaflets
Class 042. First use:
computer programming for others; rental of data processing equipment; rental of
computer hardware and software; design for others in the field of
telecommunications equipment; maintenance and repair of computer software;
installation of computer software
U.S. Registration 2282432 Application Date 02/27/1997
No.
Registration Date 10/05/1999 Foreign Priority 08/31/1996
Date
Word Mark T-MOBILE
Design Mark
Description of NONE
Mark
Goods/Services Class 009. First use:
Telecommunications equipment, namely, computer programs for operating
telecommunications systems, computer programs for providing multiple-user
access to the global communications network for the transfer and dissemination
of a wide range of information, magnetic, electric and optical networks
comprising of data transmitters consisting of digital end instruments that convert
user information into data signals for transmission or reconvert the received data
signals into user information and equipment that transfers data between data
terminals, storage apparatus, signaling devices, namely, equipment that
generates, transfers and receives information over a communications network
by electrical or optical means, termination equipment, namely, components that
connect an appropriate bridge, normally of the characteristic impedance, across
a circuit to provide stability; word processors, computers, namely,
microcomputers, minicomputers, computer central processors, microprocessors,
computer monitors, computer keyboards, computer terminals, computer
interface boards, computer laser printers, computer impact printers, computer
dot matrix printers, computer operating systems, computers and instructional
manuals sold as a unit, computer interface apparatus, namely, computer
modems, computer mouse and mouse pad, computer peripherals and parts
thereof; computer programs for use in operating business management systems
and related instruction manuals sold as a unit; audio, video and data
communications equipment, namely, digital and analogue signal transmitters,
receivers and converters, radio and telephone transmitters, receivers and
servers, electronic mail hardware and software for electronic exchange of data
images and messages, remote controls and set-top units for televisions,
cinematographic television and amusement equipment, namely, signal decoders
and interactive audio and video conferencing equipment to facilitate interaction
between consumers and providers of goods and services; chronographs for use
as specialized time recording apparatus, blank computer discs, blank computer
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 86 of 127 PageID #:86
floppy disks, blank computer hard discs; compact disc players, audio and video
tape recorders, audio and video tape players, audio and video cassette
recorders, audio and video cassette players, blank audio and video tapes,
cassettes, discs and microfiche; audio and video tapes, cassettes, discs and
microfiche featuring information concerning telecommunications; video monitors,
automatic vending machines and timing mechanisms therefor, and parts thereof;
magnetic coded card readers, magnetic cards, blank magnetic data carriers,
demagnitizers for magnetic tapes, and parts thereof; computer, data and video
networking and conferencing equipment, namely, teleconferencing equipment,
audiovisual teaching equipment, namely, overhead film, photographic and slide
projectors, projection screens, computers that display information on an
overhead screen, intercoms; telephones, telephone answering machines,
teleprinters, teletypewriters, caller identification boxes, radio operated telephone
equipment, audio operated relays, wireless and cellular telephones and
answering machines, pagers, portable computers, facsimile machines, wireless
fax machines, personal communications equipment, namely, personal digital
assistants (PDA), calculators and related peripherals, namely, cases for carrying
pocket calculators, satellites and satellite communication earth stations both
stationary and moveable; prerecorded compact discs, audio cassette tapes,
video cassette tapes, digital audio tapes and digital video discs featuring
musical, variety, news and comedy shows; and computer game programs for
children and adults
Class 014. First use:
jewelry, horological instruments, namely, clocks and watches; chronometers and
chronographs
Class 016. First use:
printed matter, namely, books or magazines on telecommunications; printed
instructional and teaching material on telecommunications; stationery
Class 018. First use:
Umbrellas; parasols, goods made of leather and imitations of leather, namely,
wallets, valises, carrying cases for credit cards, tickets, in particular, air travel
tickets, purses, writing cases, namely, briefcase type portfolios, suitcases,
traveling bags, and briefcases; trunks for travel and travel bags
Class 025. First use:
clothing, namely, shirts, dresses, pants, jackets, coats, T-shirts, shorts;
headwear; footwear
Class 028. First use:
Video and computer game cartridges; board games, parlor games, card games,
toy action figures, wind-up toys, stuffed toys, electrical and mechanical action
toys, children's multiple activity toys; gymnastic apparatus; sporting articles,
namely, cycling equipment and accessories, namely, stationary cycles, football
equipment and accessories, namely, footballs, football shoulder pads, football
girdles, football body protectors, football knee, elbow, chest and leg pads,
soccer equipment and accessories, namely, soccer balls, soccer ball goal nets,
soccer ball knee pads, baseball equipment and accessories, namely, baseballs,
baseball bats, baseball bases, baseball mitts, baseball gloves, basketball
equipment and accessories, namely, basketballs, basketball goals, basketball
nets
Class 036. First use:
financing services; real estate brokerage; real estate appraisal, real estate
investment; real estate listing; real estate management
Class 037. First use:
custom construction and building renovation; construction planning, construction
supervision; maintenance and repair of telecommunications networks, apparatus
and instruments; installation of telecommunications networks, apparatus and
instruments; maintenance and repair of computer networks and computer
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 87 of 127 PageID #:87
hardware; installation of computer networks and computer hardware
Class 038. First use:
Telecommunication services, namely, electric, digital, cellular and wireless
transmission of voice, data, information, images, signals and messages, namely,
providing telecommunications connections over a global communications
network, electronic mail, voice mail and messaging services, audio and video
teleconferencing, rental of telecommunications equipment, namely, equipment
for electronic access to global telecommunications network, equipment for
transmitting, receiving, recording and monitoring voice, data, information,
images, signals, messages, data and word processors, computer programs for
use in operating and accessing telecommunications systems; audio and video
broadcasting featuring entertainment in the nature of live visual and audio
performances, and musical, variety, news and comedy shows; providing
information in the field of telecommunications via global computer networks
Class 041. First use:
education in the nature of classes and seminars in the fields of business,
telecommunications and computers, and the distribution of course materials
therewith; entertainment in the nature of live visual and audio performances,
namely, musical band, rock group, gymnastic, dance, and ballet performances;
entertainment services, namely, providing musical, variety, news and comedy
shows via a global computer information network; entertainment services,
namely, providing on-line computer games for children and adults; organization
of community sporting and cultural events; publication of books, magazines,
journals, manuals, brochures, and leaflets
Class 042. First use:
computer programming for others; rental of data processing equipment; rental of
computer hardware and software; design for others in the field of
telecommunications equipment; maintenance and repair of computer software;
installation of computer software
U.S. Registration 3216527 Application Date 08/16/2005
No.
Registration Date 03/06/2007 Foreign Priority NONE
Date
Word Mark T
Design Mark
Description of NONE
Mark
Goods/Services Class 042. First use: First Use: 2006/01/01 First Use In Commerce: 2006/01/01
Computer programming services for others; rental of computer software and
hardware for online access; data encryption services; application service
provider, namely, hosting computer software applications for others, hosting of
digital content on the internet; hosting the websites of others on a computer
server for a global computer network; computer services, namely, creating
indexes of information available on computer networks; providing information via
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 88 of 127 PageID #:88
the telephone and the global communication networks in the field of information
technology; consulting services in the field of design, selection, implementation
and use of computer hardware and software systems for others; installation,
maintenance and repair of computer software; technical project planning
services related to telecommunications equipment; providing information at the
specific request of end-users by means of telephone or global communications
networks; providing temporary use of online non-downloadable
telecommunications software for providing multiple user access to the global
computer network
U.S. Application/ NONE Application Date NONE
Registration No.
Registration Date NONE
Word Mark T-SYSTEMS
Goods/Services telecommunication and information technology goods and services
U.S. Application/ NONE Application Date NONE
Registration No.
Registration Date NONE
Word Mark T-SYSTEM
Goods/Services telecommunication and information technology goods and services
U.S. Application/ NONE Application Date NONE
Registration No.
Registration Date NONE
Word Mark T
Goods/Services telecommunication and information technology goods and services
U.S. Application/ NONE Application Date NONE
Registration No.
Registration Date NONE
Word Mark T-MOBILE
Goods/Services telecommunication and information technology goods and services
Related 91201618
Proceedings
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THE TSYSTEMEV STAT 85305952.pdf ( 9 pages )(44025 bytes )
Certificate of Service
The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
record by Overnight Courier on this date.
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 89 of 127 PageID #:89
Signature /Jason L. White/
Name Jason L. White
Date 01/11/2012
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 90 of 127 PageID #:90
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
In the matter of trademark application Serial No. 85/305,952
Filed: April 27, 2011
For the mark: T SYSTEMEV STAT
Published in the Official Gazette on: September 13, 2011
DEUTSCHE TELEKOM AG, )
)
Opposer, )
)
v. ) Opposition No.: Pending
)
T-SYSTEM, INC., )
)
Applicant. )
NOTICE OF OPPOSITION
Opposer, Deutsche Telekom AG (hereinafter “DTAG” ), believes that it is being and will
be damaged by registration of the mark T SYSTEMEV STAT in application 85/305,952 for use
in connection with “computer software used to analyze medical emergency department data for
use by clinicians and hospital administration” in International Class 09. DTAG hereby opposes
the same pursuant to Section 13(a) of the Trademark Act of 1946, as amended (the “Lanham
Act”), 15 U.S.C. § 1063(a).
The Parties and the Marks
1. DTAG is a corporation organized under the laws of the Federal Republic of
Germany, with its principal place of business located at Friedrich-Ebert-Allee 140, Bonn, 53113.
2. DTAG and its affiliates are one of the world’s largest telecommunication and
information technology service providers. Both DTAG and its affiliates, including T-Systems,
U.S.A. and T-Mobile, U.S.A., offer a broad range of telecommunication and information
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 91 of 127 PageID #:91
technology goods and services under DTAG’s family of “T” marks, including the marks “T-
SYSTEMS,” “T-MOBILE,” and other “T” formatives (collectively, the “DTAG Marks”). These
DTAG Marks are among DTAG’s core brands and are integral to its corporate identity. In this
regard, DTAG has extensively used and promoted the DTAG Marks in domestic and
international commerce. Indeed, these marks have been widely used and registered by DTAG on
a worldwide basis for many years in a stand alone form, as a stand alone design element, in
combination with additional words, numbers, designs and/or device elements, in numerous
colors, and in black and white. (See Exhibit A for a non-exhaustive, representative sample of the
DTAG Marks in the U.S.). As part of its family of DTAG Marks, the “T-SYSTEMS” brand has
been widely registered and/or used as trademarks, domain names, company names, and in
various other mediums both in singular and plural form (collectively, the “T-SYSTEMS
Marks”). As a result of this extensive use, advertising, and promotion, the T-SYSTEMS Marks
have become well-known as distinctive indicators of the origin of DTAG’s goods and services
and have become a valuable symbol of DTAG’s goodwill.
3. The DTAG Marks constitute a series or family of marks that are owned by and
are in the name of DTAG or its affiliates, are well-known trademarks, and are subject to a
number of trademark applications and registrations worldwide, some of which are now
incontestable under 15 U.S.C. § 1065. (See Exhibit A).
4. The T-SYSTEMS Marks are well-known trademarks and are subject to a number
of trademark applications and registrations worldwide, some of which are now incontestable
under 15 U.S.C. § 1065. (See the first two entries in Exhibit A for the earliest U.S. registrations
depicting the T-SYSTEMS Marks).
2
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5. Upon information and belief, applicant T-System, Inc. (“TSI”) is a corporation
organized under the laws of Texas, with its principal place of business located at 4020 McEwen
Drive, Suite 281, Dallas, Texas 75244.
6. Despite the existence of a “Trademark Use and Registration Agreement” entered
into by DTAG and TSI on March 3, 2004, prohibiting TSI from registering certain T-SYSTEM-
type marks, TSI’s application Serial No. 85/305,952 fully incorporates, is dominated in both
sight and sound by, and creates a clear commercial impression of the words “T SYSTEM”
(“TSI’s Application”).
Likelihood of Confusion With DTAG’s Prior Registrations
Section 2(d), 15 U.S.C. § 1052(d)
7. DTAG repeats and realleges each and every allegation set forth in Paragraphs 1-6.
8. DTAG’s rights in its T-SYSTEMS Marks date back to at least as early as April
23, 1996, the filing dates for U.S. Reg. Nos. 2,448,571 and 2,460,631. (See Exhibit A). Since
this time, DTAG continuously has used its T-SYSTEMS Marks, and formatives of the same, in
U.S. and international commerce. The filing date of TSI’s Application is April 27, 2011, and it
is based on an intent to use in U.S. commerce. DTAG therefore has priority based on its prior
use and valid and subsisting T-SYSTEMS Marks and registrations.
9. TSI’s Application consists of the letter “T” followed by the term “SYSTEMEV
STAT.” DTAG’s T-SYSTEMS Marks make use of and predominantly feature the letter “T”
followed by “SYSTEM” or “SYSTEMS.” The respective marks are therefore highly similar, if
not identical, in sight and sound as well as identical in commercial impression.
10. The DTAG Marks as a whole consist of and predominantly feature the letter “T”
and often include various other words, such as “SYSTEMS” and “MOBILE.” The TSI
3
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Application follows the same distinct pattern as the DTAG Marks and is thus highly similar, if
not identical, in sight and sound as well as identical in commercial impression.
11. The identical nature of the DTAG Marks and the TSI Application in sight and
commercial impression is particularly pronounced given the nature of the claimed goods and
services in the TSI Application, namely, computer software in International Class 09.
12. The DTAG Marks claim numerous telecommunication and information
technology goods and services in many International Classes, but focus heavily on
telecommunication goods and services in International Classes 09, 38, and 42, as set forth in
more detail in Exhibit A. As a result, the goods and services, as well as relevant consumers and
channels of trade, of the DTAG Marks and subsequent TSI Application are identical.
13. On information and belief, TSI adopted its mark years after DTAG’s established
worldwide use and promotion of the DTAG Marks for its telecommunication and information
technology goods and services, and TSI modeled its trademark filings after the branding strategy
established by DTAG for the DTAG Marks.
14. TSI’s junior use of an identical branding strategy and a highly similar, if not
identical mark, for use in connection with identical telecommunication and information
technology goods and services overlaps and duplicates the DTAG Marks, as well as the goods
and services, and will inevitably lead consumers to believe that DTAG is the source of the
products, or that TSI is affiliated, endorsed or sponsored by DTAG, all in violation of DTAG’s
rights in the DTAG Marks.
15. For the foregoing reasons, DTAG believes and alleges that it is being and will be
damaged by the registration of TSI’s Application Serial No. 85/305,952.
4
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Likelihood of Confusion With DTAG’s Common Law Rights
Section 2(d), 15 U.S.C. § 1052(d)
16. DTAG repeats and realleges each and every allegation set forth in Paragraphs 1-
15.
17. Based on its continuous use of the DTAG Marks in U.S. commerce, these marks
have become distinctive source indicators of the various telecommunication and information
technology goods and services offered by DTAG, and DTAG has not abandoned these common
law rights.
18. DTAG’s rights in the DTAG Marks are well prior to the filing date of TSI’s
Application, April 27, 2011. DTAG therefore has priority based on its prior and subsisting use
of the DTAG Marks.
19. TSI’s Application consists of the letter “T” followed by the term “SYSTEMEV
STAT.” DTAG’s T-SYSTEMS Marks make use of and predominantly feature the letter “T”
followed by “SYSTEM” or “SYSTEMS.” The respective marks are therefore highly similar, if
not identical, in sight and sound as well as identical in commercial impression.
20. The DTAG Marks as a whole consist of and predominantly feature the letter “T”
and often include various other words, such as “SYSTEMS” and “MOBILE.” The TSI
Application follows the same distinct pattern as the DTAG Marks and is thus highly similar, if
not identical, in sight and sound as well as identical in commercial impression.
21. The identical nature of the DTAG Marks and the TSI Application in sight and
commercial impression is particularly pronounced given the nature of the claimed goods and
services in the TSI Application, namely, computer software in International Class 09.
22. The DTAG Marks are used in connection with various telecommunication and
information technology goods and services. As a result, the goods and services, as well as
5
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relevant consumers and channels of trade, of the senior DTAG Marks and subsequent TSI
Application are identical.
23. On information and belief, TSI adopted its mark years after DTAG’s established
worldwide use and promotion of the DTAG Marks for its telecommunication and information
technology goods and services and modeled its trademark filings after the branding strategy
established by the DTAG Marks.
24. TSI’s junior use of an identical branding strategy and a highly similar, if not
identical mark, for use in connection with identical telecommunication and information
technology goods and services overlaps and duplicates the DTAG Marks, as well as the goods
and services, and will inevitably lead consumers to believe that DTAG is the source of the
products, or that TSI is affiliated, endorsed or sponsored by DTAG, all in violation of DTAG’s
rights in the DTAG Marks.
25. For the foregoing reasons, DTAG believes and alleges that it is being and will be
damaged by the registration of TSI’s Application Serial No. 85/305,952.
WHEREFORE, DTAG respectfully requests that application Serial No. 85/305,952 be
refused registration and judgment in the present opposition be entered in favor of the DTAG and
against TSI, with prejudice.
6
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Respectfully submitted,
DEUTSCHE TELEKOM AG
By: /Jason L. White/ .
Michael D. Adams
Jason L. White
MAYER BROWN, LLP
P.O. Box 2828
Chicago, IL 60690-2828
(312) 701-8713
Attorney for Opposer
7
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Exhibit A
Deutsche Telekom’s Registrations
Mark Image Registration Registration Class(es)
No. Date
T System T-System 2448571 5-8-2001 9, 16, 36, 37, 38, 41,
42
T System 2460631 6-19-2001 9, 16, 36, 37, 38, 41,
42
T 2472584 7-31-2001 9, 36, 37, 38, 41
T 3538688 11-25-2008 42
T 2508277 11-20-2001 9, 16, 25, 36, 38, 42
T 3216527 3-6-2007 42
T Mobile 3076000 4-4-2006 42
T Mobile 2941016 4-19-2005 9, 16, 36, 37, 38, 41,
42
T Mobile 2284387 10-12-1999 9, 14, 16, 18, 25, 28,
36, 37, 38, 41, 42
T-Mobile T-Mobile 2282432 10-5-1999 9, 14, 16, 18, 25, 28,
36, 37, 38, 41, 42
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CERTIFICATE OF SERVICE
I hereby certify that, on this 11th day of January, 2012, this Notice of Opposition is being
sent via UPS Overnight and email to:
JOHN M. CONE
HITCHCOCK EVERT LLP
PO BOX 131709
DALLAS, TX 75313-1709
By: /Jason L. White/ .
Jason L. White
700993665
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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
ESTTA Tracking number: ESTTA450524
Filing date: 01/11/2012
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 Deutsche Telekom AG
Granted to Date 01/11/2012
of previous
extension
Address Friedrich-Ebert-Allee 140
Bonn, 53113
GERMANY
Attorney Michael D. Adams
information Mayer Brown LLP
P.O. Box 2828
Chicago, IL 60690-2828
UNITED STATES
ipdocket@mayerbrown.com Phone:312-701-8713
Applicant Information
Application No 85298588 Publication date 09/13/2011
Opposition Filing 01/11/2012 Opposition 01/11/2012
Date Period Ends
Applicant T-SYSTEM, INC.
Suite 281 4020 McEwen Drive
Dallas, TX 752445091
UNITED STATES
Goods/Services Affected by Opposition
Class 009. First Use: 2000/10/00 First Use In Commerce: 2000/10/00
All goods and services in the class are opposed, namely: computer programs for creating,
maintaining and organizing emergency room medical records to be distributed exclusively to health
care providers
Grounds for Opposition
Priority and likelihood of confusion Trademark Act section 2(d)
Marks Cited by Opposer as Basis for Opposition
U.S. Registration 2448571 Application Date 04/23/1996
No.
Registration Date 05/08/2001 Foreign Priority NONE
Date
Word Mark T-SYSTEM
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Design Mark
Description of NONE
Mark
Goods/Services Class 009. First use:
electric, electronic, optical, measuring, signalling, controlling or teaching
apparatus and instruments, all for use with telecommunications, namely,
apparatus for producing sound, images or data, magnetic and optical data
carriers, data processors and computers, namely, microcomputers,
minicomputers, computer central processors, computer monitors, computer
keyboards, computer terminals, computer interface boards, computer memories,
computer laser printers, computer impact printers, computer dot matrix printers,
computer operating systems, computers and instructional manuals sold as a
unit, computer interface apparatus, namely, computer modems, computer
mouse and mouse pad, computer peripherals and parts thereof; computer
programs and data bases for use in operating telecommunications and business
management systems and related instruction manuals sold as a unit; optical
cables, optic filters, optical scanners, optical character readers, optical discs,
optical fibers, optical glass for signal transmission, optic transmitters, optic
receivers, optical signal processing apparatus, optic switches, optical networks
comprising communication transmission switching and reception apparatus,
optical attenuators, optical amplifiers, optical character recognition apparatus,
and parts thereof; audio, video and data communications systems, namely,
digital and analogue signal transmitters, receivers and converters, radio and
telephone transmitters, receivers and servers, stationary, wireless and cellular
telephone systems and answering machines, telecommunication transmission,
receiving and storage apparatus, telecommunications transmitting sets, data
transmitters, facsimile machines, electronic mail apparatus for electronic
exchange of data images and messages, remote controls and set-top units,
cinematographic television and amusement equipment, namely, signal decoders
and interactive audio and video equipment to facilitate interaction between
consumers and providers of goods and services; electrical wire, electrical wire
connectors, integrated circuits, printed circuits, electric circuits, circuit breakers,
printed circuit boards, electric circuit boards, circuit connectors, electrical
controllers, electrical converters, electrical fuses, electric luminescent display
panels, electrical switch plates, electric plugs, antennas, electrical cables,
computer cables, computer chips, silicon chips, chronographs for use as
specialized time recording apparatus, electric coils, computer buffers, blank
computer discs, blank computer floppy disks, computer hard discs, electrical
conductors, acoustic conduits, electrical conduits, fiber optic conduits and parts
thereof; compact disc players, audio and video tape recorders, audio and video
tape players, audio and video cassette recorders, audio and video cassette
players, blank audio and video tapes, cassettes, discs and microfiche; audio and
video tapes, cassettes, discs and microfiche featuring information concerning
telecommunications, personal and business management systems; video
monitors, automatic vending machines and timing mechanisms therefor, and
parts thereof; data processors and readers, word processors, magnetic coded
card readers, magnetic cards, electronic encryption units, lasers, light emitting
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diodes, light emitting diode displays, microprocessors, blank magnetic data
carriers, demagnetizers for magnetic tapes, and parts thereof; communications
and video transmission switching and reception apparatus; computer, data and
video networking and conferencing equipment, namely, teleconferencing
equipment, audiovisual teaching equipment, overhead film, photographic and
slide projectors, projection screens, computer based information display
equipment, namely, computers which display information on an overhead
screen, intercoms; telephones, telephone answering machines, telephone
transmitters, telephone networks, telephone wires, teleprinters, teletypewriters,
and parts thereof, namely, caller identification boxes, radio telephone equipment
and accessories, namely, call boxes and systems, dialing assembiles, telephone
units, audio operated relays, signalling devices, receiving devices, termination
equipment, filters, protectors and automatic signalling and control equipment,
telemeters, wireless and cellular telephones, pagers, paging equipment,
portable computer devices, facsimile transmitters and receivers, wireless fax
machines, personal communications equipment, namely, Personal Digital
Assistants (PDA), calculators and related peripherals; satellite processors,
satellites and satellite communication earth stations both stationary and
moveable, prerecorded compact discs, audio cassette tapes, video cassette
tapes, digital audio tapes and digital video discs featuring musical, variety, news
and comedy shows; and computer game programs for children and adults
Class 016. First use:
printed matter, namely, books or magazines on telecommunications; printed
instructional and teaching material on telecommunications; stationery
Class 036. First use:
financing services; real estate brokerage; real estate appraisal, real estate
investment; real estate listing; real estate management
Class 037. First use:
custom construction and building renovation; construction planning, construction
supervision; maintenance and repair of telecommunications networks, apparatus
and instruments; installation of telecommunications networks, apparatus and
instruments; installation, maintenance and repair of computer networks and
computer hardware
Class 038. First use:
telecommunication services, namely, electronic mail services; audio and video
teleconferencing; electronic, electric and digital transmission of voice, data,
information, images, signals and messages; rental of apparatus for
telecommunications, namely, rental of electronic access, transmission, receiver,
recording and monitoring equipment comprised of telecommunications hardware
and software including components and peripherals thereof for use in the
telecommunications industry; audio and video broadcasting featuring
entertainment in the nature of visual and audio performances, and musical,
variety, news and comedy shows
Class 041. First use:
education in the nature of classes and seminars in the fields of business,
telecommunications and computers, and the distribution of course materials
therewith; entertainment in the nature of visual and audio performances, namely,
musical band, rock group, gymnastic, dance, and ballet performances;
entertainment services, namely, providing musical, variety, news and comedy
shows via a global computer information network; entertainment services,
namely, providing on-line computer games for children and adults; organization
of community sporting and cultural events; publication of books, magazines,
journals, manuals, brochures, and leaflets
Class 042. First use:
computer programming for others; leasing access time to a computer data base
in the field of telecommunications; rental of data processing equipment; rental of
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computer hardware and software; design for others in the field of
telecommunications equipment; installation, maintenance and repair of
computer software
U.S. Registration 2460631 Application Date 04/23/1996
No.
Registration Date 06/19/2001 Foreign Priority NONE
Date
Word Mark T SYSTEM
Design Mark
Description of NONE
Mark
Goods/Services Class 009. First use:
electric, electronic, optical, measuring, signalling, controlling or teaching
apparatus and instruments, all for use with telecommunications, namely,
apparatus for producing sound, images or data, [magnetic and optical data
carriers, data processors and computers, namely, microcomputers,
minicomputers, computer central processors, computer monitors, computer
keyboards, computer terminals, computer interface boards, computer memories,
computer laser printers, computer impact printers, computer dot matrix printers,
computer operating systems, computers and instructional manuals sold as a
unit, computer interface apparatus, namely, computer modems, computer
mouse and mouse pad, computer peripherals and parts thereof; ]computer
programs and data bases for use in operating telecommunications and business
management systems and related instruction manuals sold as a unit; [optical
cables, optic filters, optical scanners, optical character readers, optical discs,
optical fibers, optical glass for signal transmission, optic transmitters, optic
receivers, optical signal processing apparatus, optic switches, optical networks
comprising communication transmission switching and reception apparatus,
optical attenuators, optical amplifiers, optical character recognition apparatus,
and parts thereof;] audio, video and data communications systems, namely,
digital and analogue signal transmitters, receivers and converters, radio and
telephone transmitters, receivers and servers, stationary, wireless and cellular
telephone systems [and answering machines, ]telecommunication transmission,
receiving and storage apparatus, telecommunications transmitting sets, data
transmitters,[ facsimile machines] electronic mail apparatus for electronic
exchange of data images and messages,[ remote controls and set-top units,]
cinematographic television and amusement equipment, namely, signal decoders
and interactive audio and video equipment to facilitate interaction between
consumers and providers of goods and services; [electrical wire, electrical wire
connectors, integrated circuits, printed circuits, electric circuits, circuit breakers,
printed circuit boards, electric circuit boards, circuit connectors, electrical
controllers, electrical converters, electrical fuses, electric luminescent display
panels, electrical switch plates, electric plugs, antennas, electrical cables,
computer cables, computer chips, silicon chips, chronographs for use as
specialized time recording apparatus, electric coils, computer buffers, blank
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computer discs, blank computer floppy disks, computer hard discs, electrical
conductors, acoustic conduits, electrical conduits, fiber optic conduits and parts
thereof; compact disc players, audio and video tape recorders, audio and video
tape players, audio and video cassette recorders, audio and video cassette
players, blank audio and video tapes, cassettes, discs and microfiche; audio and
video tapes, cassettes, discs and microfiche featuring information concerning
telecommunications, personal and business management systems; video
monitors, automatic vending machines and timing mechanisms therefor, and
parts thereof; data processors and readers, word processors, magnetic coded
card readers, magnetic cards, electronic encryption units, lasers, light emitting
diodes, light emitting diode displays, microprocessors, blank magnetic data
carriers, demagnetizers for magnetic tapes, and parts thereof;] communications
and video transmission switching and reception apparatus; computer, data and
video networking and conferencing equipment, namely, teleconferencing
equipment, [audiovisual teaching equipment, overhead film, photographic and
slide projectors, projection screens, computer based information display
equipment, namely, computers which display information on an overhead
screen, intercoms;] telephones,[ telephone answering machines,] telephone
transmitters, telephone networks,[ telephone wires, teleprinters, teletypewriters,]
and parts thereof, namely, [caller identification boxes,] radio telephone
equipment and accessories, namely, [call boxes and systems, dialing
assemblies, telephone units,] audio operated relays, signalling devices,
receiving devices, termination equipment, filters, protectors and automatic
signalling and control equipment, telemeters, wireless and cellular telephones,
pagers, paging equipment, portable computer devices, [facsimile transmitters
and receivers, wireless fax machines, personal communications equipment,
namely, Personal Digital Assistants (PDA), calculators and related peripherals;]
satellite processors, satellites and satellite communication earth stations both
stationary and moveable,[ prerecorded compact discs, audio cassette tapes,
video cassette tapes, digital audio tapes and digital video discs featuring
musical, variety, news and comedy shows; and computer game programs for
children and adults]
Class 016. First use:
printed matter, namely, books or magazines on telecommunications [; printed
instructional and teaching material on telecommunications; stationery]
Class 036. First use:
financing services[; real estate brokerage; real estate appraisal, real estate
investment; real estate listing; real estate management]
Class 037. First use:
[custom construction and building renovation; construction planning,
construction supervision;] maintenance and repair of telecommunications
networks, apparatus and instruments; installation of telecommunications
networks, apparatus and instruments; installation, maintenance and repair of
computer networks and computer hardware
Class 038. First use:
telecommunication services, namely, electronic mail services; audio and video
teleconferencing; electronic, electric and digital transmission of voice, data,
information, images, signals and messages [; rental of apparatus for
telecommunications, namely, rental of electronic access, transmission, receiver,
recording and monitoring equipment comprised of telecommunications hardware
and software including components and peripherals thereof for use in the
telecommunications industry; audio and video broadcasting featuring
entertainment in the nature of visual and audio performances, and musical,
variety, news and comedy shows]
Class 041. First use:
[education in the nature of classes and seminars in the fields of business,
telecommunications and computers, and the distribution of course materials
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therewith;] entertainment in the nature of visual and audio performances,
namely, musical band, rock group, gymnastic, dance, and ballet performances;
entertainment services, namely, providing musical, variety, news and comedy
shows via a global computer information network; entertainment services,
namely, providing on-line computer games for children and adults;[ organization
of community sporting and cultural events; publication of books, magazines,
journals, manuals, brochures, and leaflets]
Class 042. First use:
computer programming for others; [leasing access time to a computer data base
in the field of telecommunications; rental of data processing equipment; rental of
computer hardware and software;] design for others in the field of
telecommunications equipment; installation, maintenance and repair of
computer software
U.S. Registration 2472584 Application Date 08/24/1995
No.
Registration Date 07/31/2001 Foreign Priority NONE
Date
Word Mark T
Design Mark
Description of NONE
Mark
Goods/Services Class 009. First use:
[ electric, electronic, optical, measuring, signalling, controlling or teaching
apparatus and instruments, all for use with telecommunications, namely,
apparatus for producing sound, images or data, magnetic and optical data
carriers, data processors and computers, namely, microcomputers,
minicomputers, computer central processors, computer monitors, computer
keyboards, computer terminals, computer interface boards, computer memories,
computer laser printers, computer impact printers, computer dot matrix printers,
computer operating systems, computers and instructional manuals sold as a
unit, computer interface apparatus, namely, computer modems, computer
mouse and mouse pad, computer peripherals and parts thereof; ] computer
programs and data bases for use in operating telecommunications; [ and
business management systems and related instruction manuals sold as a unit;
optical cables, optic filters, optical scanners, optical character readers, optical
discs, optical fibers, optical glass for signal transmission, optic transmitters, optic
receivers, optical signal processing apparatus, optic switches, optical networks
comprising communication transmission switching and reception apparatus,
optical attenuators, optical amplifiers, optical character recognition apparatus,
and parts thereof; ] audio,(( video)) and data ((communications systems,))
namely, digital and analogue signal transmitters, receivers and converters, radio
((and telephone)) transmitters, receivers and ((servers,)) ((stationary,)) wireless
and cellular ((telephone systems,)) [ and answering machines, ]
telecommunication transmission, receiving and storage apparatus,
telecommunications transmitting sets, data transmitters, [ facsimile machines, ]
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electronic mail apparatus for electronic exchange of data images and messages,
[ remote controls and set-top units, cinematographic television and amusement
equipment, namely, signal decoders and interactive audio and video equipment
to facilitate interaction between consumers and providers of goods and services;
electrical wire, electrical wire connectors, integrated circuits, printed circuits,
electric circuits, circuit breakers, printed circuit boards, electric circuit boards,
circuit connectors, electrical controllers, electrical converters, electrical fuses,
electric luminescent display panels, electrical switch plates, electric plugs,
antennas, electrical cables, computer cables, computer chips, silicon chips,
chronographs for use as specialized time recording apparatus, electric coils,
computer buffers, blank computer discs, blank computer floppy disks, computer
hard discs, electrical conductors, acoustic conduits, electrical conduits, fiber
optic conduits and parts thereof; compact disc players, audio and video tape
recorders, audio and video tape players, audio and video cassette recorders,
audio and video cassette players, blank audio and video tapes, cassettes, discs
and microfiche; audio and video tapes, cassettes, discs and microfiche featuring
information concerning telecommunications, personal and business
management systems; video monitors, automatic vending machines and timing
mechanisms therefor, and parts thereof; data processors and readers, word
processors, magnetic coded card readers, magnetic cards, electronic encryption
units, lasers, light emitting diodes, light emitting diode displays,
microprocessors, blank magnetic data carriers, demagnitizers for magnetic
tapes, and parts thereof; communications and video transmission switching and
reception apparatus; computer, data and video networking and conferencing
equipment, namely, teleconferencing equipment, audiovisual teaching
equipment, overhead film, photographic and slide projectors, projection screens,
computer based information display equipment, namely, computers which
display information on an overhead screen, intercoms;] telephones, [ telephone
answering machines, ] telephone transmitters, * AND * telephone networks; [
telephone wires, teleprinters, teletypewriters, and parts thereof, namely, caller
identification boxes, radio telephone equipment and accessories, namely, call
boxes and systems, dialing assemblies, telephone units, audio operated relays,
signalling devices, receiving devices, termination equipment, filters, protectors
and automatic signalling and control equipment, telemeters, ] wireless and
cellular telephones,(( pagers, paging equipment,)) portable computer devices, [
facsimile transmitters and receivers, wireless fax machines, ] personal
communications equipment, namely, Personal Digital Assistants (PDA), [
calculators ] and related peripherals; [ satellite processors, satellites and satellite
communication earth stations both stationary and moveable; baseball batting
helmets; prerecorded compact discs, audio cassette tapes, video cassette
tapes, digital audio tapes and digital video discs featuring musical, variety, news
and comedy shows; and ] computer game programs for children and adults
Class 014. First use:
[ jewelry, horological instruments, namely, clocks and watches; chronometers
and chronographs ]
Class 016. First use:
[ printed matter, namely, books or magazines on telecommunications; printed
instructional and teaching material on telecommunications; stationery ]
Class 018. First use:
[ umbrellas; parasols, goods made of leather and imitations of leather, namely,
wallets, valises, carrying cases for credit cards, tickets, in particular, air travel
tickets, or pocket calculators, purses, writing cases, namely, briefcase type
portfolios, suitcases, travelling bags, and briefcases; trunks for travel and travel
bags ]
Class 025. First use:
[ clothing, namely, shirts, dresses, pants, jackets, coats, T-shirts, shorts,
headwear, footwear ]
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 106 of 127 PageID #:106
Class 028. First use:
[ video and computer game cartridges; board games, parlor games, card games,
toy action figures, wind-up toys, stuffed toys, electrical and mechanical action
toys, children's multiple activity toys; gymnastic apparatus; sporting articles,
namely, cycling equipment and accessories, namely, stationary cycles, football
equipment and accessories, namely, footballs, football shoulder pads, football
girdles, football protectors, football knee, elbow, chest and leg pads, soccer
equipment and accessories, namely, soccer balls, soccer ball goal nets, soccer
ball knee pads, baseball equipment and accessories, namely, baseballs,
baseball bats, baseball bases, baseball mitts, baseball gloves, baseball bats,
basket ball equipment and accessories, namely, basket balls, basket ball goals,
basket ball nets, and all parts related thereto ]
Class 036. First use:
financing services *, namely, FINANCING OF WIRELESS
TELECOMMUNICATION SERVICE PLANS AND PREPAID WIRELESS
TELECOMMUNICATIONS SERVICE PLANS * [ ; real estate brokerage; real
estate appraisal, real estate investment; real estate listing; real estate
management ]
Class 037. First use:
[ custom construction and building renovation; construction planning,
construction supervision;] ((maintenance and repair of telecommunications
networks,)) apparatus and instruments; ((installation of telecommunications
networks, apparatus and instruments;)) [ installation, maintenance and repair of
computer networks and computer hardware ]
Class 038. First use:
telecommunication services, namely, electronic mail services; [ audio and video
teleconferencing; ] electronic, electric and digital transmission of voice, data,
information, images, signals and messages; [ rental of apparatus for
telecommunications, namely, rental of electronic access, transmission, receiver,
recording and monitoring equipment comprised of telecommunications hardware
and software including components and peripherals thereof for use in the
telecommunications industry; ] audio [ and video ] broadcasting featuring
entertainment in the nature of [ visual ] * music * and audio performances [, and
musical, variety, news and comedy shows ]
Class 041. First use:
[ education in the nature of classes and seminars in the fields of business,
telecommunications and computers, and the distribution of course materials
therewith; entertainment in the nature of visual and audio performances, namely,
musical band, rock group, gymnastic, dance, and ballet performances; ]
entertainment services, namely, providing * music * [ musical, variety, news and
comedy shows ] via a global computer information network; entertainment
services, namely, providing on-line computer games for children and adults [ ;
organization of community sporting and cultural events; publication of books,
magazines, journals, manuals, brochures, and leaflets ]
Class 042. First use:
[ computer programming for others; leasing access time to a computer data
base in the field of telecommunications; rental of data processing equipment;
rental of computer hardware and software; design for others in the field of
telecommunications equipment; installation, maintenance and repair of
computer software ]
U.S. Registration 3538688 Application Date 08/16/2005
No.
Registration Date 11/25/2008 Foreign Priority 02/17/2005
Date
Word Mark T
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 107 of 127 PageID #:107
Design Mark
Description of NONE
Mark
Goods/Services Class 042. First use: First Use: 2002/06/00 First Use In Commerce: 2002/06/00
Computer programming services for others; application service provider,
namely, hosting computer software applications for others, hosting of digital
content on the Internet; hosting the websites of others on a computer server for
a global computer network; computer services, namely, creating indexes of
information available on computer networks; providing information via the
telephone and the global communication networks in the field of information
technology; installation, maintenance and repair of computer software; providing
information at the specific request of end-users by means of telephone or global
communications networks; providing temporary use of online non-downloadable
telecommunications software for providing multiple user access to the global
computer network
U.S. Registration 2508277 Application Date 08/24/1995
No.
Registration Date 11/20/2001 Foreign Priority NONE
Date
Word Mark T
Design Mark
Description of NONE
Mark
Goods/Services Class 009. First use:
electric, electronic, [optical, measuring, signalling, controlling or teaching]
apparatus and instruments , all for use with telecommunications, namely,
apparatus for producing sound, images or data, [magnetic and optical data
carriers, data processors and computers, namely, microcomputers,
minicomputers, computer central processors, computer monitors, computer
keyboards, computer terminals, computer interface boards, computer memories,
computer laser printers, computer impact printers, computer dot matrix printers,
computer operating systems, computers and instructional manuals sold as a
unit, computer interface apparatus, namely, computer modems, computer
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 108 of 127 PageID #:108
mouse and mouse pad, computer peripherals and parts thereof; computer
programs and data bases for use in operating telecommunications and business
management systems and related instruction manuals sold as a unit; optical
cables, optic filters, optical scanners, optical character readers, optical discs,
optical fibers, optical glass for signal transmission, optic transmitters, optic
receivers, optical signal processing apparatus, optic switches, optical networks
comprising communication transmission switching and reception apparatus,
optical attenuators, optical amplifiers, optical character recognition apparatus,
and parts thereof; ] audio, video and data communications systems, namely,
[digital and analogue signal transmitters, receivers and converters, radio and
telephone transmitters, receivers and servers, stationary,] wireless and cellular
telephone systems [ and answering machines, ] telecommunication
transmission,[ receiving and storage apparatus,] telecommunications
transmitting sets, [ data transmitters, facsimile machines, ] electronic mail
apparatus for electronic exchange of data images and messages, [remote
controls and set-top units, cinematographic television and amusement
equipment, namely, signal decoders and interactive audio and video equipment
to facilitate interaction between consumers and providers of goods and services;
electrical wire, electrical wire connectors, integrated circuits, printed circuits,
electric circuits, circuit breakers, printed circuit boards, electric circuit boards,
circuit connectors, electrical controllers, electrical converters, electrical fuses,
electric luminescent display panels, electrical switch plates, electric plugs,
antennas, electrical cables, computer cables, computer chips, silicon chips,
chronographs for use as specialized time recording apparatus, electric coils,
computer buffers, blank computer discs, blank computer floppy disks, computer
hard discs, electrical conductors, acoustic conduits, electrical conduits, fiber
optic conduits and parts thereof; compact disc players, audio and video tape
recorders, audio and video tape players, audio and video cassette recorders,
audio and video cassette players, blank audio and video tapes, cassettes, discs
and microfiche; audio and video tapes, cassettes, discs and microfiche featuring
information concerning telecommunications, personal and business
management systems; video monitors, automatic vending machines and timing
mechanisms therefor, and parts thereof; data processors and readers, word
processors, magnetic coded card readers, magnetic cards, electronic encryption
units, lasers, light emitting diodes, light emitting diode displays,
microprocessors, blank magnetic data carriers, demagnitizers for magnetic
tapes, and parts thereof; communications and video transmission switching and
reception apparatus; computer, data and video networking and conferencing
equipment, namely, teleconferencing equipment, audiovisual teaching
equipment, overhead film, photographic and slide projectors, projection screens,
computer based information display equipment, namely, computers which
display information on an overhead screen, intercoms; telephones, telephone
answering machines, telephone transmitters, telephone networks, telephone
wires, teleprinters, teletypewriters, and parts thereof, namely, caller identification
boxes,] radio telephone equipment and accessories, namely, [ call boxes and
systems, dialing assemblies,] telephone units, [audio operated relays, signalling
devices, receiving devices, termination equipment, filters, protectors and
automatic signalling and control equipment, telemeters,] wireless and cellular
telephones[ , pagers, paging equipment,] portable computer devices, [ facsimile
transmitters and receivers, wireless fax machines, personal communications
equipment, namely, Personal Digital Assistants (PDA), calculators and related
peripherals; satellite processors, satellites and satellite communication earth
stations both stationary and moveable; baseball batting helmets; prerecorded
compact discs, audio cassette tapes, video cassette tapes, digital audio tapes
and digital video discs featuring musical, variety, news and comedy shows;] and
computer game programs for children and adults
Class 014. First use:
[ jewelry, horological instruments, namely, clocks and watches; chronometers
and chronographs ]
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 109 of 127 PageID #:109
Class 016. First use:
[ printed matter, namely, books or magazines on telecommunications; printed
instructional and teaching material on telecommunications;] stationery
Class 018. First use:
[ umbrellas; parasols, goods made of leather and imitations of leather, namely,
wallets, valises, carrying cases for credit cards, tickets, in particular, air travel
tickets, or pocket calculators, purses, writing cases, namely, briefcase type
portfolios, suitcases,] travelling bags, and briefcases [; trunks for travel and
travel bags ]
Class 025. First use:
clothing, namely, shirts, [ dresses, pants,] jackets, coats, T-shirts, [ shorts,
headwear footwear ]
Class 028. First use:
[ video and computer game cartridges; board games, parlor games, card games,
toy action figures, wind-up toys, stuffed toys, electrical and mechanical action
toys, children's multiple activity toys; gymnastic apparatus; sporting articles,
namely, cycling equipment and accessories, namely, stationary cycles, football
equipment and accessories, namely, footballs, football shoulder pads, football
girdles, football protectors, football knee, elbow, chest and leg pads, soccer
equipment and accessories, namely, soccer balls, soccer ball goal nets, soccer
ball knee pads, baseball equipment and accessories, namely, baseballs,
baseball bats, baseball bases, baseball mitts, baseball gloves, baseball bats,
basket ball equipment and accessories, namely, basket balls, basket ball goals,
basket ball nets, and all parts related thereto ]
Class 036. First use:
financing services [ ; real estate brokerage; real estate appraisal, real estate
investment; real estate listing; real estate management ]
Class 037. First use:
[ custom construction and building renovation; construction planning,
construction supervision; maintenance and repair of telecommunications
networks, apparatus and instruments; installation of telecommunications
networks, apparatus and instruments; installation, maintenance and repair of
comuter networks and computer hardware ]
Class 038. First use:
telecommunication services, namely, electronic mail services; [audio and video
teleconferencing;] electronic, electric and digital transmission of voice, data,
information, images, signals and messages [; rental of apparatus for
telecommunications, namely, rental of electronic access, transmission, receiver,
recording and monitoring equipment comprised of telecommunications hardware
and software including components and peripherals thereof for use in the
telecommunications industry; audio and video broadcasting featuring
entertainment in the nature of visual and audio performances, and musical,
variety, news and comedy shows ]
Class 041. First use:
[ education in the nature of classes and seminars in the fields of business,
telecommunications and computers, and the distribution of course materials
therewith; entertainment in the nature of visual and audio performances, namely,
musical band, rock group, gymnastic, dance, and ballet performances;
entertainment services, namely, providing musical, variety, news and comedy
shows via a global computer information network; entertainment services,
namely, providing on-line computer games for children and adults; organization
of community sporting and cultural events; publication of books, magazines,
journals, manuals, brochures, and leaflets ]
Class 042. First use:
computer programming for others; [ leasing access time to a computer data
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 110 of 127 PageID #:110
base in the field of telecommunications; rental of data processing equipment;
rental of computer hardware and software; design for others in the field of
telecommunications equipment; installation, maintenance and repair of
computer software ]
U.S. Registration 3216527 Application Date 08/16/2005
No.
Registration Date 03/06/2007 Foreign Priority NONE
Date
Word Mark T
Design Mark
Description of NONE
Mark
Goods/Services Class 042. First use: First Use: 2006/01/01 First Use In Commerce: 2006/01/01
Computer programming services for others; rental of computer software and
hardware for online access; data encryption services; application service
provider, namely, hosting computer software applications for others, hosting of
digital content on the internet; hosting the websites of others on a computer
server for a global computer network; computer services, namely, creating
indexes of information available on computer networks; providing information via
the telephone and the global communication networks in the field of information
technology; consulting services in the field of design, selection, implementation
and use of computer hardware and software systems for others; installation,
maintenance and repair of computer software; technical project planning
services related to telecommunications equipment; providing information at the
specific request of end-users by means of telephone or global communications
networks; providing temporary use of online non-downloadable
telecommunications software for providing multiple user access to the global
computer network
U.S. Registration 3076000 Application Date 10/15/2004
No.
Registration Date 04/04/2006 Foreign Priority NONE
Date
Word Mark T MOBILE
Design Mark
Description of NONE
Mark
Goods/Services Class 042. First use:
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Application service provider, namely, [ hosting computer software applications
for others, ] hosting of digital content on the internet; hosting the websites of
others on a computer server for a global computer network, all for advertising
purposes
U.S. Registration 2941016 Application Date 04/23/1996
No.
Registration Date 04/19/2005 Foreign Priority NONE
Date
Word Mark T MOBILE
Design Mark
Description of NONE
Mark
Goods/Services Class 009. First use:
Electric, electronic, optical, measuring, signalling, controlling or teaching
apparatus and instruments, all for use with telecommunications, namely,
apparatus for producing sound, images or data, [ magnetic and optical data
carriers, ] data processors and computers, namely, microcomputers,
minicomputers, [ computer central processors, computer monitors, computer
keyboards, computer terminals, computer interface boards, computer memories,
computer laser printers, computer impact printers, computer dot matrix printers, ]
computer operating systems, computers and instructional manuals sold as a
unit, computer interface apparatus, namely, computer modems, computer
mouse and mouse pad, computer peripherals and parts thereof; computer
programs and data bases for use in operating telecommunications and business
management systems and related instruction manuals sold as a unit; [ optical
cables, optic filters, optical scanners, optical character readers, optical discs,
optical fibers, optical glass for signal transmission, optic transmitters, optic
receivers, optical signal processing apparatus, optic switches, optical networks
comprising communication transmission switching and reception apparatus,
optical attenuators, optical amplifiers, optical character recognition apparatus,
and parts thereof; ] audio, video and data communications systems, namely,
digital and analogue signal transmitters, receivers and converters, radio and
telephone transmitters, receivers and servers, stationary, wireless and cellular
telephone systems and answering machines, telecommunication transmission,
receiving and storage apparatus, telecommunications transmitting sets, data
transmitters, [ facsimile machines, ] electronic mail apparatus for electronic
exchange of data images and messages, [ remote controls and set-top units,
cinematographic television and amusement equipment, namely, signal decoders
and interactive audio and video equipment to facilitate interaction between
consumers and providers of goods and services; electrical wire, electrical wire
connectors, integrated circuits, printed circuits, electric circuits, circuit breakers,
printed circuit boards, electric circuit boards, circuit connectors, electrical
controllers, electrical converters, electrical fuses, electric luminescent display
panels, electrical switch plates, electric plugs, antennas, electrical cables,
computer cables, computer chips, silicon chips, chronographs for use as
specialized time recording apparatus, electric coils, computer buffers, blank
computer discs, blank computer floppy disks, computer hard discs, electrical
conductors, acoustic conduits, electrical conduits, fiber optic conduits and parts
thereof; compact disc players, audio and video tape recorders, audio and video
tape players, audio and video cassette recorders, audio and video cassette
players, blank audio and video tapes, cassettes, discs and microfiche; audio and
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 112 of 127 PageID #:112
video tapes, cassettes, discs and microfiche featuring information concerning
telecommunications, personal and business management systems; video
monitors, automatic vending machines and timing mechanisms therefor, and
parts thereof; data processors and readers, word processors, magnetic coded
card readers, magnetic cards, electronic encryption units, lasers, light emitting
diodes, light emitting diode displays, microprocessors, blank magnetic data
carriers, demagnetizers for magnetic tapes, and parts thereof; communications
and video transmission switching and reception apparatus; computer, data and
video networking and conferencing equipment, namely, teleconferencing
equipment, audiovisual teaching equipment, overhead film, photographic and
slide projectors, projection screens, computer based information display
equipment, namely, computers which display information on an overhead
screen, intercoms; ] telephones, [ telephone answering machines, ] telephone
transmitters, [ telephone networks, telephone wires, teleprinters, teletypewriters,
andparts thereof, namely, caller identification boxes, radio telephone equipment
and accessories, namely, call boxes and systems, dialing assemblies, ]
telephone units, [ audio operated relays, signalling devices, receiving devices,
termination equipment, filters, protectors and automatic signalling and control
equipment, telemeters, ] wireless and cellular telephones, [ pagers, paging
equipment, ] portable computer devices, [ facsimile transmitters and receivers,
wireless fax machines, ] personal communications equipment, namely, Personal
Digital Assistants (PDA), [ calculators ] and related peripherals; [ satellite
processors, satellites and satellite communication earth stations both stationary
and moveable; prerecorded compact discs, audio cassette tapes, video cassette
tapes, digital audio tapes and digital video discs featuring musical, variety, news
and comedy shows; and computer game programs for children and adults ]
Class 016. First use:
Printed matter, namely, [ books ] or magazines on telecommunications; printed
instructional and teaching material on telecommunications; stationery
Class 036. First use:
Financing services; [ real estate brokerage; real estate appraisal, real estate
investment; real estate listing; real estate management ]
Class 037. First use:
[ Custom construction and building renovation; construction planning,
construction supervision; ] maintenance and repair of telecommunications [
networks, ] apparatus and instruments; [ installation of telecommunications
networks, apparatus and instruments; installation, ] maintenance and repair of
computer [ networks and computer ] hardware
Class 038. First use:
Telecommunication services, namely, electronic mail services; audio and video
teleconferencing; electronic, electric and digital transmission of voice, data,
information, images, signals and messages; [ rental of apparatus for
telecommunications, namely, rental of electronic access, transmission, receiver,
recording and monitoring equipment comprised of telecommunications hardware
and software including components and peripherals thereof for use in the
telecommunications industry; ] audio and video broadcasting featuring
entertainment in the nature of visual and audio performances, and musical,
variety, news and comedy shows
Class 041. First use:
[ Education in the nature of classes and seminars in the fields of business,
telecommunications and computers, and the distribution of course materials
therewith; ] entertainment in the nature of visual and audio performances,
namely, musical band, rock group, [ gymnastic, dance, and ballet ]
performances; entertainment services, namely, providing musical, variety, news
and comedy shows via a global computer information network; entertainment
services, namely, providing on-line computer games for children and adults;
organization of community sporting and cultural events; publication of [ books, ]
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 113 of 127 PageID #:113
magazines, journals, manuals, brochures, and leaflets
Class 042. First use:
[ Computer programming for others; ] leasing access time to a computer data
base in the field of telecommunications; [ rental of data processing equipment;
rental of computer hardware and software; design for others in the field of
telecommunications equipment; ] installation, maintenance and repair of
computer software
U.S. Registration 2284387 Application Date 02/27/1997
No.
Registration Date 10/12/1999 Foreign Priority NONE
Date
Word Mark T-MOBILE
Design Mark
Description of NONE
Mark
Goods/Services Class 009. First use:
Telecommunications equipment, namely, computer programs for operating
telecommunications systems, computer programs for providing multiple-user
access to the global communications network for the transfer and dissemination
of a wide range of information, magnetic, electric and optical networks
comprising of data transmitters consisting of digital and instruments that convert
user information into data signals for transmission or reconvert the received data
signals into user information and equipment that transfers data between data
terminals, storage apparatus, signaling devices, namely, equipment that
generates, transfers and receives information over a communications network
by electrical or optical means, termination equipment, namely, components that
connect an appropriate bridge, normally of the characteristic impedance, across
a circuit to provide stability; word processors, computers, namely,
microcomputers, minicomputers, computer central processors, microprocessors,
computer monitors, computer keyboards, computer terminals, computer
interface boards, computer laser printers, computer impact printers, computer
dot matrix printers, computer operating systems, computers and instructional
manuals sold as a unit, computer interface apparatus, namely, computer
modems, computer mouse and mouse pad, computer peripherals and parts
thereof; computer programs for use in operating business management systems
and related instruction manuals sold as a unit; audio, video and data
communications equipment, namely, digital and analogue signal transmitters,
receivers and converters, radio and telephone transmitters, receivers and
servers, electronic mail hardware and software for electronic exchange of data
images and messages, remote controls and set-top units for televisions,
cinematographic television and amusement equipment, namely, signal decoders
and interactive audio and video conferencing equipment to facilitate interaction
between consumers and providers of goods and services; chronographs for use
as specialized time recording apparatus, blank computer discs, blank computer
floppy disks, blank computer hard discs; compact disc players, audio and video
tape recorders, audio and video tape players, audio and video cassette
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 114 of 127 PageID #:114
recorders, audio and video cassette players, blank audio and video tapes,
cassettes, discs and microfiche; audio and video tapes, cassettes, discs and
microfiche featuring information concerning telecommunications; video monitors,
automatic vending machines and timing mechanisms therefor, and parts thereof;
magnetic coded card readers, magnetic cards, blank magnetic data carriers,
demagnitizers for magnetic tapes, and parts thereof; computer, data and video
networking and conferencing equipment, namely, teleconferencing equipment,
audiovisual teaching equipment, namely, overhead film, photographic and slide
projectors, projection screens, computers that display information on an
overhead screen, intercoms; telephones, telephone answering machines,
teleprinters, teletypewriters, caller identification boxes, radio operated telephone
equipment, audio operated relays, wireless and cellular telephones and
answering machines, pagers, portable computers, facsimile machines, wireless
fax machines, personal communications equipment, namely, personal digital
assistants (PDA), calculators and related peripherals, namely, cases for carrying
pocket calculators, satellites and satellite communication earth stations both
stationary and moveable; prerecorded compact discs, audio cassette tapes,
video cassette tapes, digital audio tapes and digital video discs featuring
musical, variety, news and comedy shows; and computer game programs for
children and adults
Class 014. First use:
jewelry, horological instruments, namely, clocks and watches; chronometers and
chronographs
Class 016. First use:
printed matter, namely, books or magazines on telecommunications; printed
instructional and teaching material on telecommunications; stationery
Class 018. First use:
Umbrellas; parasols, goods made of leather and imitations of leather, namely,
wallets, valises, carrying cases for credit cards, tickets, in particular, air travel
tickets, purses, writing cases, namely, briefcase type portfolios, suitcases,
traveling bags, and briefcases; trunks for travel and travel bags
Class 025. First use:
clothing, namely, shirts, dresses, pants, jackets, coats, T-shirts, shorts;
headwear; footwear
Class 028. First use:
Video and computer game cartridges; board games, parlor games, card games,
toy action figures, wind-up toys, stuffed toys, electrical and mechanical action
toys, children's multiple activity toys; gymnastic apparatus; sporting articles,
namely, cycling equipment and accessories, namely, stationary cycles, football
equipment and accessories, namely, footballs, football shoulder pads, football
girdles, football body protectors, football knee, elbow, chest and leg pads,
soccer equipment and accessories, namely, soccer balls, soccer ball goal nets,
soccer ball knee pads, baseball equipment and accessories, namely, baseballs,
baseball bats, baseball bases, baseball mitts, baseball gloves, basketball
equipment and accessories, namely, basketballs, basketball goals, basketball
nets
Class 036. First use:
financing services; real estate brokerage; real estate appraisal, real estate
investment; real estate listing; real estate management
Class 037. First use:
custom construction and building renovation; construction planning, construction
supervision; maintenance and repair of telecommunications networks, apparatus
and instruments; installation of telecommunications networks, apparatus and
instruments; maintenance and repair of computer networks and computer
hardware; installation of computer networks and computer hardware
Class 038. First use:
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Telecommunication services, namely, electric, digital, cellular and wireless
transmission of voice, data, information, images, signals and messages, namely,
providing telecommunications connections over a global communications
network, electronic mail, voice mail and messaging services, audio and video
teleconferencing, rental of telecommunications equipment, namely, equipment
for electronic access to global telecommunications network, equipment for
transmitting, receiving, recording and monitoring voice, data, information,
images, signals, messages, data and word processors, computer programs for
use in operating and accessing telecommunications systems; audio and video
broadcasting featuring entertainment in the nature of live visual and audio
performances, and musical, variety, news and comedy shows
Class 041. First use:
education in the nature of classes and seminars in the fields of business,
telecommunications and computers, and the distribution of course materials
therewith; entertainment in the nature of live visual and audio performances,
namely, musical band, rock group, gymnastic, dance, and ballet performances;
entertainment services, namely, providing musical, variety, news and comedy
shows via global computer information network; entertainment services, namely,
providing on-line computer games for children and adults; organization of
community sporting and cultural events; publication of books, magazines,
journals, manuals, brochures, and leaflets
Class 042. First use:
computer programming for others; rental of data processing equipment; rental of
computer hardware and software; design for others in the field of
telecommunications equipment; maintenance and repair of computer software;
installation of computer software
U.S. Registration 2282432 Application Date 02/27/1997
No.
Registration Date 10/05/1999 Foreign Priority 08/31/1996
Date
Word Mark T-MOBILE
Design Mark
Description of NONE
Mark
Goods/Services Class 009. First use:
Telecommunications equipment, namely, computer programs for operating
telecommunications systems, computer programs for providing multiple-user
access to the global communications network for the transfer and dissemination
of a wide range of information, magnetic, electric and optical networks
comprising of data transmitters consisting of digital end instruments that convert
user information into data signals for transmission or reconvert the received data
signals into user information and equipment that transfers data between data
terminals, storage apparatus, signaling devices, namely, equipment that
generates, transfers and receives information over a communications network
by electrical or optical means, termination equipment, namely, components that
connect an appropriate bridge, normally of the characteristic impedance, across
a circuit to provide stability; word processors, computers, namely,
microcomputers, minicomputers, computer central processors, microprocessors,
computer monitors, computer keyboards, computer terminals, computer
interface boards, computer laser printers, computer impact printers, computer
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 116 of 127 PageID #:116
dot matrix printers, computer operating systems, computers and instructional
manuals sold as a unit, computer interface apparatus, namely, computer
modems, computer mouse and mouse pad, computer peripherals and parts
thereof; computer programs for use in operating business management systems
and related instruction manuals sold as a unit; audio, video and data
communications equipment, namely, digital and analogue signal transmitters,
receivers and converters, radio and telephone transmitters, receivers and
servers, electronic mail hardware and software for electronic exchange of data
images and messages, remote controls and set-top units for televisions,
cinematographic television and amusement equipment, namely, signal decoders
and interactive audio and video conferencing equipment to facilitate interaction
between consumers and providers of goods and services; chronographs for use
as specialized time recording apparatus, blank computer discs, blank computer
floppy disks, blank computer hard discs; compact disc players, audio and video
tape recorders, audio and video tape players, audio and video cassette
recorders, audio and video cassette players, blank audio and video tapes,
cassettes, discs and microfiche; audio and video tapes, cassettes, discs and
microfiche featuring information concerning telecommunications; video monitors,
automatic vending machines and timing mechanisms therefor, and parts thereof;
magnetic coded card readers, magnetic cards, blank magnetic data carriers,
demagnitizers for magnetic tapes, and parts thereof; computer, data and video
networking and conferencing equipment, namely, teleconferencing equipment,
audiovisual teaching equipment, namely, overhead film, photographic and slide
projectors, projection screens, computers that display information on an
overhead screen, intercoms; telephones, telephone answering machines,
teleprinters, teletypewriters, caller identification boxes, radio operated telephone
equipment, audio operated relays, wireless and cellular telephones and
answering machines, pagers, portable computers, facsimile machines, wireless
fax machines, personal communications equipment, namely, personal digital
assistants (PDA), calculators and related peripherals, namely, cases for carrying
pocket calculators, satellites and satellite communication earth stations both
stationary and moveable; prerecorded compact discs, audio cassette tapes,
video cassette tapes, digital audio tapes and digital video discs featuring
musical, variety, news and comedy shows; and computer game programs for
children and adults
Class 014. First use:
jewelry, horological instruments, namely, clocks and watches; chronometers and
chronographs
Class 016. First use:
printed matter, namely, books or magazines on telecommunications; printed
instructional and teaching material on telecommunications; stationery
Class 018. First use:
Umbrellas; parasols, goods made of leather and imitations of leather, namely,
wallets, valises, carrying cases for credit cards, tickets, in particular, air travel
tickets, purses, writing cases, namely, briefcase type portfolios, suitcases,
traveling bags, and briefcases; trunks for travel and travel bags
Class 025. First use:
clothing, namely, shirts, dresses, pants, jackets, coats, T-shirts, shorts;
headwear; footwear
Class 028. First use:
Video and computer game cartridges; board games, parlor games, card games,
toy action figures, wind-up toys, stuffed toys, electrical and mechanical action
toys, children's multiple activity toys; gymnastic apparatus; sporting articles,
namely, cycling equipment and accessories, namely, stationary cycles, football
equipment and accessories, namely, footballs, football shoulder pads, football
girdles, football body protectors, football knee, elbow, chest and leg pads,
soccer equipment and accessories, namely, soccer balls, soccer ball goal nets,
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 117 of 127 PageID #:117
soccer ball knee pads, baseball equipment and accessories, namely, baseballs,
baseball bats, baseball bases, baseball mitts, baseball gloves, basketball
equipment and accessories, namely, basketballs, basketball goals, basketball
nets
Class 036. First use:
financing services; real estate brokerage; real estate appraisal, real estate
investment; real estate listing; real estate management
Class 037. First use:
custom construction and building renovation; construction planning, construction
supervision; maintenance and repair of telecommunications networks, apparatus
and instruments; installation of telecommunications networks, apparatus and
instruments; maintenance and repair of computer networks and computer
hardware; installation of computer networks and computer hardware
Class 038. First use:
Telecommunication services, namely, electric, digital, cellular and wireless
transmission of voice, data, information, images, signals and messages, namely,
providing telecommunications connections over a global communications
network, electronic mail, voice mail and messaging services, audio and video
teleconferencing, rental of telecommunications equipment, namely, equipment
for electronic access to global telecommunications network, equipment for
transmitting, receiving, recording and monitoring voice, data, information,
images, signals, messages, data and word processors, computer programs for
use in operating and accessing telecommunications systems; audio and video
broadcasting featuring entertainment in the nature of live visual and audio
performances, and musical, variety, news and comedy shows; providing
information in the field of telecommunications via global computer networks
Class 041. First use:
education in the nature of classes and seminars in the fields of business,
telecommunications and computers, and the distribution of course materials
therewith; entertainment in the nature of live visual and audio performances,
namely, musical band, rock group, gymnastic, dance, and ballet performances;
entertainment services, namely, providing musical, variety, news and comedy
shows via a global computer information network; entertainment services,
namely, providing on-line computer games for children and adults; organization
of community sporting and cultural events; publication of books, magazines,
journals, manuals, brochures, and leaflets
Class 042. First use:
computer programming for others; rental of data processing equipment; rental of
computer hardware and software; design for others in the field of
telecommunications equipment; maintenance and repair of computer software;
installation of computer software
U.S. Application/ NONE Application Date NONE
Registration No.
Registration Date NONE
Word Mark T-SYSTEMS
Goods/Services telecommunication and information technology goods and services
U.S. Application/ NONE Application Date NONE
Registration No.
Registration Date NONE
Word Mark T-SYSTEM
Goods/Services telecommunication and information technology goods and services
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 118 of 127 PageID #:118
U.S. Application/ NONE Application Date NONE
Registration No.
Registration Date NONE
Word Mark T
Goods/Services telecommunication and information technology goods and services
U.S. Application/ NONE Application Date NONE
Registration No.
Registration Date NONE
Word Mark T-MOBILE
Goods/Services telecommunication and information technology goods and services
Related 91201618
Proceedings
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THE T SYSTEM EV 85298588.pdf ( 9 pages )(152716 bytes )
Certificate of Service
The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
record by Overnight Courier on this date.
Signature /Jason L. White/
Name Jason L. White
Date 01/11/2012
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 119 of 127 PageID #:119
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
In the matter of trademark application Serial No. 85/298,588
Filed: April 19, 2011
For the mark: THE T SYSTEM EV
Published in the Official Gazette on: September 13, 2011
DEUTSCHE TELEKOM AG, )
)
Opposer, )
)
v. ) Opposition No.: Pending
)
T-SYSTEM, INC., )
)
Applicant. )
NOTICE OF OPPOSITION
Opposer, Deutsche Telekom AG (hereinafter “DTAG” ), believes that it is being and will
be damaged by registration of the mark THE T SYSTEM EV in application 85/298,588 for use
in connection with “computer programs for creating, maintaining and organizing emergency
room medical records to be distributed exclusively to health care providers” in International
Class 09. DTAG hereby opposes the same pursuant to Section 13(a) of the Trademark Act of
1946, as amended (the “Lanham Act”), 15 U.S.C. § 1063(a).
The Parties and the Marks
1. DTAG is a corporation organized under the laws of the Federal Republic of
Germany, with its principal place of business located at Friedrich-Ebert-Allee 140, Bonn, 53113.
2. DTAG and its affiliates are one of the world’s largest telecommunication and
information technology service providers. Both DTAG and its affiliates, including T-Systems,
U.S.A. and T-Mobile, U.S.A., offer a broad range of telecommunication and information
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 120 of 127 PageID #:120
technology goods and services under DTAG’s family of “T” marks, including the marks “T-
SYSTEMS,” “T-MOBILE,” and other “T” formatives (collectively, the “DTAG Marks”). These
DTAG Marks are among DTAG’s core brands and are integral to its corporate identity. In this
regard, DTAG has extensively used and promoted the DTAG Marks in domestic and
international commerce. Indeed, these marks have been widely used and registered by DTAG on
a worldwide basis for many years in a stand alone form, as a stand alone design element, in
combination with additional words, numbers, designs and/or device elements, in numerous
colors, and in black and white. (See Exhibit A for a non-exhaustive, representative sample of the
DTAG Marks in the U.S.). As part of its family of DTAG Marks, the “T-SYSTEMS” brand has
been widely registered and/or used as trademarks, domain names, company names, and in
various other mediums both in singular and plural form (collectively, the “T-SYSTEMS
Marks”). As a result of this extensive use, advertising, and promotion, the T-SYSTEMS Marks
have become well-known as distinctive indicators of the origin of DTAG’s goods and services
and have become a valuable symbol of DTAG’s goodwill.
3. The DTAG Marks constitute a series or family of marks that are owned by and
are in the name of DTAG or its affiliates, are well-known trademarks, and are subject to a
number of trademark applications and registrations worldwide, some of which are now
incontestable under 15 U.S.C. § 1065. (See Exhibit A).
4. The T-SYSTEMS Marks are well-known trademarks and are subject to a number
of trademark applications and registrations worldwide, some of which are now incontestable
under 15 U.S.C. § 1065. (See the first two entries in Exhibit A for the earliest U.S. registrations
depicting the T-SYSTEMS Marks).
2
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5. Upon information and belief, applicant T-System, Inc. (“TSI”) is a corporation
organized under the laws of Texas, with its principal place of business located at 4020 McEwen
Drive, Suite 281, Dallas, Texas 75244.
6. Despite the existence of a “Trademark Use and Registration Agreement” entered
into by DTAG and TSI on March 3, 2004, prohibiting TSI from registering certain T-SYSTEM-
type marks, TSI’s application Serial No. 85/298,588 fully incorporates, is dominated in both
sight and sound by, and creates a clear commercial impression of the words “T SYSTEM”
(“TSI’s Application”).
Likelihood of Confusion With DTAG’s Prior Registrations
Section 2(d), 15 U.S.C. § 1052(d)
7. DTAG repeats and realleges each and every allegation set forth in Paragraphs 1-6.
8. DTAG’s rights in its T-SYSTEMS Marks date back to at least as early as April
23, 1996, the filing dates for U.S. Reg. Nos. 2,448,571 and 2,460,631. (See Exhibit A). Since
this time, DTAG continuously has used its T-SYSTEMS Marks, and formatives of the same, in
U.S. and international commerce. The filing date of TSI’s Application is April 19, 2011, and it
claims a first use date of January 2000. DTAG therefore has priority based on its prior use and
valid and subsisting T-SYSTEMS Marks and registrations.
9. TSI’s Application consists predominantly of the letter “T” followed by the term
“SYSTEM EV.” DTAG’s T-SYSTEMS Marks make use of and predominantly feature the letter
“T” followed by “SYSTEM” or “SYSTEMS.” The respective marks are therefore highly
similar, if not identical, in sight and sound as well as identical in commercial impression.
10. The DTAG Marks as a whole consist of and predominantly feature the letter “T”
and often include various other words, such as “SYSTEMS” and “MOBILE.” The TSI
3
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Application follows the same distinct pattern as the DTAG Marks and is thus highly similar, if
not identical, in sight and sound as well as identical in commercial impression.
11. The identical nature of the DTAG Marks and the TSI Application in sight and
commercial impression is particularly pronounced given the nature of the claimed goods and
services in the TSI Application, namely, computer programs in International Class 09.
12. The DTAG Marks claim numerous telecommunication and information
technology goods and services in many International Classes, but focus heavily on
telecommunication goods and services in International Classes 09, 38, and 42, as set forth in
more detail in Exhibit A. As a result, the goods and services, as well as relevant consumers and
channels of trade, of the DTAG Marks and subsequent TSI Application are identical.
13. On information and belief, TSI adopted its mark years after DTAG’s established
worldwide use and promotion of the DTAG Marks for its telecommunication and information
technology goods and services, and TSI modeled its trademark filings after the branding strategy
established by DTAG for the DTAG Marks.
14. TSI’s junior use of an identical branding strategy and a highly similar, if not
identical mark, for use in connection with identical telecommunication and information
technology goods and services overlaps and duplicates the DTAG Marks, as well as the goods
and services, and will inevitably lead consumers to believe that DTAG is the source of the
products, or that TSI is affiliated, endorsed or sponsored by DTAG, all in violation of DTAG’s
rights in the DTAG Marks.
15. For the foregoing reasons, DTAG believes and alleges that it is being and will be
damaged by the registration of TSI’s Application Serial No. 85/298,588.
4
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Likelihood of Confusion With DTAG’s Common Law Rights
Section 2(d), 15 U.S.C. § 1052(d)
16. DTAG repeats and realleges each and every allegation set forth in Paragraphs 1-
15.
17. Based on its continuous use of the DTAG Marks in U.S. commerce, these marks
have become distinctive source indicators of the various telecommunication and information
technology goods and services offered by DTAG, and DTAG has not abandoned these common
law rights.
18. DTAG’s rights in the DTAG Marks are well prior to the filing date of TSI’s
Application, April 19, 2011, and its claimed first use date of January 2000. DTAG therefore has
priority based on its prior and subsisting use of the DTAG Marks.
19. TSI’s Application predominantly consists of the letter “T” followed by the term
“SYSTEM EV.” DTAG’s T-SYSTEMS Marks make use of and predominantly feature the letter
“T” followed by “SYSTEM” or “SYSTEMS.” The respective marks are therefore highly
similar, if not identical, in sight and sound as well as identical in commercial impression.
20. The DTAG Marks as a whole consist of and predominantly feature the letter “T”
and often include various other words, such as “SYSTEMS” and “MOBILE.” The TSI
Application follows the same distinct pattern as the DTAG Marks and is thus highly similar, if
not identical, in sight and sound as well as identical in commercial impression.
21. The identical nature of the DTAG Marks and the TSI Application in sight and
commercial impression is particularly pronounced given the nature of the claimed goods and
services in the TSI Application, namely, computer programs in International Class 09.
22. The DTAG Marks are used in connection with various telecommunication and
information technology goods and services. As a result, the goods and services, as well as
5
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relevant consumers and channels of trade, of the senior DTAG Marks and subsequent TSI
Application are identical.
23. On information and belief, TSI adopted its mark years after DTAG’s established
worldwide use and promotion of the DTAG Marks for its telecommunication and information
technology goods and services and modeled its trademark filings after the branding strategy
established by the DTAG Marks.
24. TSI’s junior use of an identical branding strategy and a highly similar, if not
identical mark, for use in connection with identical telecommunication and information
technology goods and services overlaps and duplicates the DTAG Marks, as well as the goods
and services, and will inevitably lead consumers to believe that DTAG is the source of the
products, or that TSI is affiliated, endorsed or sponsored by DTAG, all in violation of DTAG’s
rights in the DTAG Marks.
25. For the foregoing reasons, DTAG believes and alleges that it is being and will be
damaged by the registration of TSI’s Application Serial No. 85/298,588.
WHEREFORE, DTAG respectfully requests that application Serial No. 85/298,588 be
refused registration and judgment in the present opposition be entered in favor of the DTAG and
against TSI, with prejudice.
6
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Respectfully submitted,
DEUTSCHE TELEKOM AG
By: /Jason L. White/ .
Michael D. Adams
Jason L. White
MAYER BROWN, LLP
P.O. Box 2828
Chicago, IL 60690-2828
(312) 701-8713
Attorney for Opposer
7
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Exhibit A
Deutsche Telekom’s Registrations
Mark Image Registration Registration Class(es)
No. Date
T System T-System 2448571 5-8-2001 9, 16, 36, 37, 38, 41,
42
T System 2460631 6-19-2001 9, 16, 36, 37, 38, 41,
42
T 2472584 7-31-2001 9, 36, 37, 38, 41
T 3538688 11-25-2008 42
T 2508277 11-20-2001 9, 16, 25, 36, 38, 42
T 3216527 3-6-2007 42
T Mobile 3076000 4-4-2006 42
T Mobile 2941016 4-19-2005 9, 16, 36, 37, 38, 41,
42
T Mobile 2284387 10-12-1999 9, 14, 16, 18, 25, 28,
36, 37, 38, 41, 42
T-Mobile T-Mobile 2282432 10-5-1999 9, 14, 16, 18, 25, 28,
36, 37, 38, 41, 42
Case: 1:12-cv-07932 Document #: 1 Filed: 10/03/12 Page 127 of 127 PageID #:127
CERTIFICATE OF SERVICE
I hereby certify that, on this 11th day of January, 2012, this Notice of Opposition is being
sent via UPS Overnight and email to:
JOHN M. CONE
HITCHCOCK EVERT LLP
PO BOX 131709
DALLAS, TX 75313-1709
By: /Jason L. White/ .
Jason L. White
700993634
