J.T. Colby & Company, Inc. et al v. Apple, Inc.

Filing 89

DECLARATION of Partha P. Chattoraj in Support re: 87 MOTION for Partial Summary Judgment.. Document filed by Ipicturebooks LLC, J.Boyston & Company, J.T. Colby & Company, Inc., Publishers LLC. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8, # 9 Exhibit 9, # 10 Exhibit 10, # 11 Exhibit 11, # 12 Exhibit 12, # 13 Exhibit 13, # 14 Exhibit 14, # 15 Exhibit 15, # 16 Exhibit 16, # 17 Exhibit 17, # 18 Exhibit 18, # 19 Exhibit 19, # 20 Exhibit 20, # 21 Exhibit 21, # 22 Exhibit 22, # 23 Exhibit 23, # 24 Exhibit 24, # 25 Exhibit 25, # 26 Exhibit 26, # 27 Exhibit 27, # 28 Exhibit 28, # 29 Exhibit 29, # 30 Exhibit 30, # 31 Exhibit 31, # 32 Exhibit 32, # 33 Exhibit 33, # 34 Exhibit 34, # 35 Exhibit 35, # 36 Exhibit 36, # 37 Exhibit 37, # 38 Exhibit 38, # 39 Exhibit 39, # 40 Exhibit 40, # 41 Exhibit 41, # 42 Exhibit 42, # 43 Exhibit 43, # 44 Exhibit 44, # 45 Exhibit 45, # 46 Exhibit 46, # 47 Exhibit 47, # 48 Exhibit 48, # 49 Exhibit 49, # 50 Exhibit 50, # 51 Exhibit 51, # 52 Exhibit 52, # 53 Exhibit 53, # 54 Exhibit 54, # 55 Exhibit 55, # 56 Exhibit 56, # 57 Exhibit 57, # 58 Exhibit 58, # 59 Exhibit 59, # 60 Exhibit 60, # 61 Exhibit 61, # 62 Exhibit 62, # 63 Exhibit 63, # 64 Exhibit 64, # 65 Exhibit 65, # 66 Exhibit 66, # 67 Exhibit 67, # 68 Exhibit 68, # 69 Exhibit 69, # 70 Exhibit 70, # 71 Exhibit 71, # 72 Exhibit 72, # 73 Exhibit 73, # 74 Exhibit 74, # 75 Exhibit 75, # 76 Exhibit 76, # 77 Exhibit 77, # 78 Exhibit 78, # 79 Exhibit 79, # 80 Exhibit 80, # 81 Exhibit 81, # 82 Exhibit 82, # 83 Exhibit 83, # 84 Exhibit 84, # 85 Exhibit 85, # 86 Exhibit 86, # 87 Exhibit 87, # 88 Exhibit 88, # 89 Exhibit 89, # 90 Exhibit 90)(Chattoraj, Partha)

EXHIBIT 11·

'RAI:<EMAF<I< L~1W OFFICE 12
·serial Number~
75/584233
JV!a t" k :
I BOO!<
**Please Place on Upper Right Corner**
**of Response to Office Action ONLY **

\IUIIIIUUIIBIIIIIII"IIIIBIIII~IlllllmiHI
07-22-1999
u.s.Pawnt&TMOfciTMMaiiRcptt>~l6

4

HE UNITED STATES PATENT AND TRADEMARK

fu re application of:

)

Apple Computer, fuc.

)

Serial No.: 75/584233

)

Filed: November 6, 1998

)
)
)

)
)
)
For: ffiOOK

Examining Attorney:
Mary Boagni
Trademark Law Office 112

------------------------>.
RESPONSE TO OFFICE ACTION
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Assistant Commissioner for Trademarks
Box Responses
No Fee
2900 Crystal Drive
Arlington, VA 22202-3513

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Dear Ms. Boagni:
This communication is responsive to the outstanding Office Action mailed
on June 23, 1999.
CONSENT AGREEMENT
The Examining Attorney has suspended prosecution of the above application
based upon the existence of prior application number 75-182820 for the mark ffiOOK
as filed by Family Systems Limited Company. fu response thereto, the Applicant
hereby submits a duly executed consent agreement between these parties which
defines the respective trade channels, stylizations, goods the marks will be used

APPLE-IBOOKS0000123

upon and provides details of the parties on-going efforts to avoid any likelihood of
confusion between their respective uses of the mark IBOOK. As such, it is
respectfully submitted that the present application should be removed from
suspension at the Examining Attorney's earliest convenience, thus allowing the
mark to proceed to publication.
CONCLUSION
It is respectfully submitted that as all the outstanding requirements have been

addressed, the present application is in condition for publication.
If the Examining Attorney has any further questions, she is urged to

telephone the undersigned.

Respectfully submitted,
APPLE COMPUTER, INC.

Dated:

7e-/?J C\

1 Infinite Loop
MS: 38-TM
Cupertino, CA 95014
[phone]

Michael W. Hicks

2

APPLE-IBOOKS0000124

'.

CONSENT AGREEMENT
This Agreement is made as of this 7th day of May, 1999, by and between Apple
Computer, Inc., a California corporation, with its principal place of business at 1 Infinite Loop,
Cupertino, California 95014(hereinafter referred to as "APPLE"), and Family Systems Limited, a
United Kingdom company, located and doing business at 8 St. George's Street, Douglas, Isle of
Man IMI lAH, (hereinafter referred to as "FAMILY SYSTEMS").
WHEREAS, prior to APPLE's adoption and use ofiBOOK, FAMILY SYSTEMS
adopted and used the mark IBOOK for computer software used to support and create interactive,
user-modifiable electronic books and related goods and services and has filed trademark
applications for and intends to use the mark IBOOK for computer hardware and software or
specifically computer hardware and software used to support and create interactive, usermodifiable electronic books, in the United States and in many other countries; and
WHEREAS, APPLE has adopted and is using the trademark !BOOK in connection with
computer hardware, namely, notebook computers and has filed trademark applications therefor;
and
WHEREAS, the parties to this Agreement are desirous of entering into an agreement that
sets forth both parties' rights to use and register their marks for the identified goods and services.
NOW, THEREFORE, in view of the foregoing and in consideration ofthe mutual covenants
hereinafter set forth and other good and valuable consideration including that specified in

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APPLE-IBOOKS0000125

·'

Appendix A attached hereto, the receipt and sufficiency of which is hereby acknowledged, the
parties hereby agree as follows:
1.

APPLE uses "or intends to use the mark IBOOK in association with computer

hardware, namely, notebook computers and related goods and services used in connection with
said notebook computers bearing APPLE's IBOOK mark, excluding software and software
related goods and services.
2.

The products and services provided or to be provided by FAMILY SYSTEMS

under the mark IBOOK are computer hardware and software used to support and create
interactive, user-modifiable electronic books and related goods and services.
3.

APPLE shall limit its use of the mark IBOOK to the following two stylizations:

(1) the "I" component of the mark in lowercase and the "BOOK" component of the mark in

uppercase or (2) the "I" component of the mark in lowercase, the "B" component of the mark in
uppercase and the "OOK"·component ofthe mark in lowercase. APPLE shall ensure that any
notebook computer or goods or services used in connection therewith displaying the !BOOK
mark will also display, somewhere on said product and in the advertising of said product or
service, the word APPLE or a design of an apple. APPLE shall further limit its use of the mark
to products and services that come within the description in Paragraph 1 above and will
specifically not use or attempt to register the mark !BOOK, or any mark similar thereto, on any
products or services coming within the description in Paragraph 2 above. APPLE shall limit its
registration of the !BOOK mark or any mark similar thereto to notebook computers and related

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APPLE-IBOOKS0000126

computer hardware and peripherals used in connection with the notebook computers and users
manuals sold therewith.
4.

FAMILY SYSTEMS shall limit its use of the mark !BOOK to products and

services that come within the description in Paragraph 2 above. Additionally, Family Systems
shall specifically not use or attempt to register the mark !BOOK, or any mark similar thereto, on
any products or services coming within the description in Paragraph 1 above.
5.

APPLE shall provide a link on the IBOOK portion of the APPLE Internet web-

site to the FAMILY SYSTEMS web-site which will identify FAMILY SYSTEMS as the owner
of the !BOOK mark in connection with the FAMILY SYSTEMS' goods and services. as
specified in Paragraph 2 above.
6.

The parties shall not object to, contest, seek cancellation of, or in any way

interfere with, directly or indirectly, the other's use and/or registration of their respective !BOOK
marks, provided that such use and/or registration is in accordance with the terms of this
Agreement. In addition, the parties expressly consent to the concurrent use and/or registration of
their respective marks, provided that the marks are used and/or registered in accordance with the
terms ofthis Agreement.
7.

APPLE and FAMILY SYSTEMS shall notify the other of any violation of rights

pertaining to the !BOOK marks that comes to such party's attention and which such party deems
to be a violation of one or both of the parties' rights in their respective !BOOK marks. Each
party shall promptly cooperate with the other, at the other's expense, in any action brought by the

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APPLE-I BOOKS0000127

other against a third party seeking to enforce and/or protect one or both of the parties' rights in
their respective IBOOK marks.
8.

Either party shall have the right, but not the obligation, at its own expense, to join

the other party in any action or proceeding taken against a third party to enforce or protect the
parties' rights in their respective IBOOK marks. In the event that either party, after receiving
notice of any infringement or violation, declines to take action against the alleged infringing third
party, the other party may elect to take legal action against such third party.

9.

The parties agree that their respective products and services, as defined in

Paragraphs 1 and 2 of this Agreement, are distinctly different and, if used in accordance with this
Agreement, the parties' use of their respective IBOOK marks are not likely to create a likelihood
of confusion. Should actual confusion arise between the parties' use of their respective marks,
the parties agree to cooperate and find ways to eliminate or further reduce the likelihood of
confusion.
10.

This Agreement shall not be changed, modified or discharged in whole or in part

except by an instrument in writing duly signed by authorized individuals of both parties. A
waiver of any provision hereof under any circumstances will not constitute a general waiver of
any rights hereunder. Nothing herein shall be deemed to prevent either or both of the respective
parties from pursuing any remedies available to it in case of a material breach of this Agreement.
However, if one party believes that the other party has materially breached this Agreement, said

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APPLE-I BOOKS0000128

one party shall provide written notice of such breach to said other party and said other party shall
be afforded thirty days to correct such breach.
11.

This Agreement shall be binding upon the parties hereto and each of them, and

will inure to the benefit of, and will be binding upon the agents, representatives, heirs, partners,
directors, officers, employees, affiliates, subsidiaries, predecessors, successors and assigns of the
parties to this Agreement. The parties agree that it is in their commercial interest to be bound by
the terms of this Agreement. This Agreement will be governed by the laws of the State of
California.
12.

If any provision of this Agreement is or becomes or is deemed invalid, illegal or

unenforceable under the applicable laws or regulations of any jurisdiction, either such provision
will be deemed amended to conform to such laws or regulations without materially altering the
intention of the parties or it will be stricken and the remainder of this Agreement will remain in
full force and effect.
13.

All notices shall be sent to the addresses set forth above, and if to APPLE to the

attention of Trademark counsel, and if to FAMILY SYSTEMS, to the attention ofTrademark
Counsel. All notices shall be sent by certified mail, return receipt requested.
14.

Notwithstanding the foregoing provisions, APPLE recognizes and acknowledges

that FAMILY SYSTEMS has filed or may file applications for registration of the IBOOK mark
in many countries and that certain applications may have an identification of goods and/or
services which is broader in scope than is provided for elsewhere in this Agreement. In the

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APPLE-I BOOKS0000129

event, however, that APPLE is unable to obtain registration of its !BOOK mark in any country
for goods which conform to the restrictions to which it has agreed in this Agreement, FAMILY
SYSTEMS agrees to amend its application or registration in that country to conform to the
restrictions to which it has agreed in the foregoing paragraphs, and, so long as APPLE does not
materially breach this Agreement, FAMILY SYSTEMS agrees to take no action against APPLE
applications and registrations for !BOOK which conform to the restrictions to which APPLE has
agreed in the foregoing paragraphs. APPLE agrees to restrict the identification of goods in any

application for !BOOK which it files or has filed as provided in the foregoing paragraphs and,
under all circumstances, to amend the identifications of goods in its applications and registrations
in any country however as may be necessary for FAMILY SYSTEMS to obtain registration of its
!BOOK mark for goods and/or services which conform to the restrictions to which FAMILY
SYSTEMS has agreed in the foregoing paragraphs. APPLE hereby further states and agrees that
it has taken no action and, so long as FAMILY SYSTEMS does not materially breach this
Agreement, will take no action which would interfere in any way with the FAMILY SYSTEMS
applications and registrations for its !BOOK mark.
15.

This Agreement shall be considered worldwide in effect.

This Agreement has been executed on behalf of each party by a duly authorized
representative of such party, on the dates hereinafter indicated, in duplicate, each of which shall

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APPLE-IBOOKS0000130

be considered an original, and this Agreement shall be deemed effective as of the date the
transfer referred to in Appendix A attached hereto is completed.
APPLE COMPUTER, INC.

Date: May,

By~~-l;)r

"7f 1999

Michael C. Wyatt

Name: ____________________
Title:

Associate General Counsel & Assistant Secretar:

FAMILY SYSTEMS LIMITED
Date: May, -2 1999

By:

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Name: La · e.. .-.GC"
Title:

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APPLE-IBOOKS0000131