Trek 2000 International Ltd.

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

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Applicant: Trek 2000 International Ltd.

Mark: THUMBDRIVE Karen P. Severson, Esq.
: Trademark Examining Attorney
Serial No. 77/099,785 : Law Of?ce 117

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OFFICE ACTION RESPONSE

BOX RESPONSES
NO FEE
Commissioner for Trademarks
PO. Box 1451
Arlington, Virginia 22313-1451

This submission is in response to Of?ce Action No. I mailed June 5, 2007 in connection with the

above-captioned application by Trek 2000 International, Ltd. (hereinafter, the “Applicant”) for the

THUMBDRIVE mark (the “Mark”).

CLAIM OF OWNERSHIP OF PRIOR REGISTRATION

The Applicant is the owner of US. Registration No. 3,175,651.

THE THUMBDRIVE MARK IS SUGGESTIVE AND NOT DESCRIPTIVE

The Applicant respectfully submits that its THUMBDRIVE mark is not merely descriptive of the

nature of its goods, because it does not directly and immediately describe the goods. Where a “mental

leap between the word and the product’s attribute” is required, suggestiveness is “strongly indicated,” and

“not direct descriptiveness.” The Nautilus Group, Inc. v. Icon Health & Fitness, Inc, 372 F.3d 1330,

1340 (Fed. Cir. 2004).

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The Exa min ing Att orn ey cite s In re Stee lbui ldin g.co m, 415 F.3 d 129 3 (Fed . Cir. 2005 ), but the

mark in the present case is diff eren t in cha rac ter fro m the mar k at issu e in In re Stee lbui ldin g. com . In In

re Steelbuilding.com, the app lic ant ’s mar k was to be use d in con nec tio n wit h met al bui ldi ngs and roo ?ng

systems. “Ste el buil ding s” desc ribe s met al buil ding s. Here , in cont rast , “Th ume riv e” doe s not desc ribe

portable USB stor age devi ces, and the Mar k is cert ainl y less desc ript ive than the mar ks in

Stee lbui ldin g.c0 m (“S TEE LBU ILD ING COM ”), Min e Safe ty (“W ORK MAS K”) , and SRO Man age men t

(“THE CONTINENTAL RESTAURANT AND MARTINI BAR”).

The Applicant has combined two words into one coined, albeit suggestive mark for its portable

USB storage devices. The individual word “thumb” does not immediately or even readily describe

portable items, but rather is more commonly and readily associated with a digit of the human hand, or, if

used as a verb , the act of pagi ng thro ugh a book , play ing a guit ar or othe r stri nged inst rume nt, or

hitchhiking. The individual word “drive,” likewise, does not automatically or only describe a USB

storage devi ce, but has mor e com mon defin ition s, incl udin g mov ing some thin g by forc e or guid ing such

movement; energy, initiative, or motivation; or causing a run to be scored in baseball or hitting a golf ball

from a tee. Nor are these individual words typically associated with one another. The word “thumb” is
9’ ‘E
more readily associated and logically combined with “green, print,” or even “war” (i.e., green thumb,

thumbprint, and thumb war). The word “drive” is more readily associated and logically combined with

“hard,” “line,” “over,” or even “warp” (i.e., hard drive, line drive, overdrive, and warp drive). The

Applicant respectfully submits that it would be ironic and unfair to deny registration to the Applicant’s

THUMBDRIVE mark when the eminently equivalent suggestive marks of its competitors, such as QUIK

DRIVE of US. Modular, LLC and JUMPDRIVE of Lexar Media, have readily been granted registration

on the Principal Register (as the Examining Attorney may take judicial notice). The Applicant suspects

that each mark has, at one time or another, in the short space of years since portable USB storage devices

?rst became popular, seen some level of misuse before consumers became familiar with the ubiquitous

generics now in common use: ?ash drive, USB card, USB drive, portable drive. Such occasional misuse

PALOALTO 82564 (2K) ‘2’
is hardly evidence of descripti ven ess , part icul arly whe n the use is occ asi ona l, ext end s ove r suc h a shor t

period of time, and has been the sub jec t of app rop ria te and rea son abl e cor rec tiv e act ion , suc h as tha t

described further in Section IV. The App lic ant als o not es tha t a goo d dea l of the thi rd par ty use of the

Mark is by the App lic ant ’s lice nsee s, and is use that is bot h aut hor ize d and con tro lle d by the App lic ant , as

will also be discussed further in Section IV.

The term “THUMBDRIVE” is both coined and suggestive. Consumers encountering the

Applicant’s Mark in con nec tio n wit h the App lic ant ’s goo ds mus t use thei r ima gin ati on to det erm ine the

meaning of the mark in rela tion to the goo ds and serv ices . Con sum ers mus t mak e one or mor e “me nta l

leaps” in order to associat e “TH UMB DRI VE” with port able USB stor age devi ces. See The Deal , LLC v.

Korangy Publ ’g, Inc. , 309 F. Sup p. 2d 512, 524 (S. D.N .Y. 200 4) (?n din g that THE DEA L and THE

DAILY DE AL “do not imm edi ate ly con vey to the purc hase r that the prod uct is a new s publ icat ion

dedicated to the coverage of ?nan cial and lega l news ”); US. Wes t Inc. v. Bell Sout h Cor p, 18 U.S .P. Q.2 d

1307, 131 2 (T.T .A.B . 1990 ) (?n din g THE REA L YE LL OW PAG ES to be sugg esti ve and not

descriptive). Consumers wou ld nee d to (1) thin k ?rst of the digi t on the han d next to the inde x ?nge r; (2)

then think of that digi t as smal l (not easy , sinc e the pin ky ?ng er may be tho ugh t to be smal ler as it is ofte n

called “the little ?nge r”); (3) then asso ciat e “sma ll” with “por tabl e”; and (4) then unde rsta nd “dri ve” to

refer to USB stor age devi ces. Thus , not only must mor e than one ment al leap be made , but one or more

of those leaps is signi?cant.

The Trad emar k Tria l and Appe al Boar d has stat ed that its prac tice “[w] hen doub ts exist as to

whet her a term is desc ript ive as appl ied to the good s or serv ices for whic h regis trati on is soug ht” is “to

resolve doubts in favor of the applicant and pass the mark to publication with the knowledge that a

competitor of applicant can come forth and initiate an opposition proceeding in which a more complete

record can be established.” In re The Stroh Brewery C0., 34 U.S.P.Q.2d 1796, 1797 (T.T.A.B. 1994); see

also In re Micro Instrument Corp, 222 U.S.P.Q. 252, 255 (T.T.A.B. 1984) (stating that “the

suggestive/descriptive dichotomy can require the drawing of ?ne lines in a process where doubts are to be

PALOALTO 82564 (2K) ‘3 ‘
ati on omi tte d). “T HU MB DR IV E” is a coi ned wo rd tha t, at
resolved in favor of applicants”) (internal cit

most, suggests a connection between a thumb, or thu mbi ng, and the goo ds, por tab le US B sto rag e dev ice s.

However, even if the Examining Attorn ey mai nta ins dou bts as to the sug ges tiv ene ss of the App lic ant ’s

Mark, the Applicant respectfully submit s tha t tho se dou bts sho uld be res olv ed in fav or of the App lic ant ,

especially when comparable mar ks suc h as QU IK DR IV E and JU MP DR IV E alr ead y res ide on the

Principal Register without such doubts.

APPLICANT’S MARK HAS ACQUIRED DISTINCTIVENESS

Even if the Exa min ing Att orn ey con sid ers the Mar k to be des cri pti ve and not sug ges tiv e, and

decides, contrary to the abo ve pre ced ent , not to res olv e the dou bts as to sug ges tiv ene ss in fav or of the

Applicant, the App lic ant res pec tfu lly sub mit s that the Mar k has acq uir ed dis tin cti ven ess ove r the pas t

seven years. The Applicant her eby sub mit s add iti ona l evi den ce to sup por t its cla im of the Mar k’s

distinctiveness, including a Dec lar ati on exe cut ed by Gur cha ran Sin gh, the Chi ef Fin anc ial Of? cer and

Executive Director for Tre k 200 0 Inte rnat iona l, Ltd. (the “Si ngh Decl arat ion” ), incl uded in this Res pon se.

The Applicant’s use of the Mar k on or in conn ecti on with the goo ds in Inte rnat iona l Clas s 09 has

been substantially exc lus ive and con tin uou s sin ce at leas t Feb rua ry 200 0. Thr oug h suc h ext ens ive and

established use, as deta iled here in and in the Sin gh Decl arat ion, the Appl ican t resp ect? illy subm its that

the acqu ired dist inct iven ess of the Mar k in conn ecti on with thos e serv ices has bee n esta blis hed in the

minds of the Applicant’s targ et con sum ers and dist ribu tors , as well as in the info rmat ion tec hno log y

community beyond the con?nes of the Applicant’s company.

The federal courts have considered several non-exclusive factors when determining whether a

mark has acqu ired seco ndar y mean ing, incl udin g adve rtis ing expe ndit ures , sales succ ess, unso lici ted

media coverage of the product, attempts to plagiarize the mark, and length and exclusivity of use of the

mark. Thompson Medical Co. v. P?zer, 753 F.2d 208, 217 (Fed. Cir. 1985); Int’l Bancorp, LLC v.

Soci ete des Bain s de Mer et du Cerc le des Etra nger s a Mona co, 329 F.3d 359, 370 (4th Cir. 2003 )

(affirming District Court’s “finding that SBM provided proof of substantial advertising expenditures;

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signi?cant sales success wit hin the Uni ted Sta tes ; sub sta nti al uns oli cit ed med ia cov era ge of the cas ino ;

frequent attempts by oth ers to pla gia riz e the mar k; and a lon g his tor y of con tin uou s, if not exc lus ive , use

of the mark” evidenced acquisition of sec ond ary mea nin g). The bel ow exa min ati on of the App lic ant ’s

investment in advertising and mar ket ing the TH UM BD RI VE -b ra nd ed pro duc ts; the App lic ant ’s sal es

success; unsolicited media cov era ge of pro duc ts bea rin g the Mar k; the len gth and exc lus ivi ty of the

Applicant’s use of the Mar k; pos ses sio n of int eme t dom ain nam es usi ng the Mar k; the App lic ant ’s

enforcement efforts wit h res pec t to the Mar k, inc lud ing act ion s tak en aga ins t dom ain na me reg ist ran ts

using the Mark wit hou t aut hor iza tio n; and use of the “TM ” sym bol , dem ons tra te the acq uir ed

distinctiveness of the Mark.

I. Advertising Expenditures

When assessing sec ond ary mea nin g, cou rts typi call y ass ign gre at wei ght to the ext ent of use of

the mark in adve rtis ing. See, e. g., Fre edo m Call s Fou nd. v. Buks tel, No. 05C V54 60, 200 6 WL 845 509 , at

*6 (E.D.N.Y. Mar. 3, 2006) (?n din g pla int iff s adv ert isi ng exp end itu res wei gh in fav or of a ?nd ing of

secondary mea nin g whe re plai ntif f spen t app rox ima tel y $10 0,0 00 in adve rtis ing and “con sist entl y

directed its market ing effo rts tow ard s the targ et con sum er grou p”); Best Vac uum , Inc. v. Ian Desi gn, Inc. ,

No. 04 C 224 9, 200 5 WL 118 581 7, at *5 (ND . 111. Jan. 18, 200 5) (pla inti ff inve sted in prin t, radi o,

television, and inte met adve rtis ing, and the cour t note d that “[e] vide nce of [the ] amo unt and man ner of

advertising is rele vant to the seco ndar y mean ing inqu iry” ); TCP IP Hold ing Co., Inc. v. Haa r

Comm unic atio ns, Inc., 244 F.3d 88, 96 (2d Cir. 2001 ) (hol ding that plai ntif f 3 adve rtis ing expe ndit ures of

tens of mill ions of doll ars over a deca de esta blis hed seco ndar y mean ing) ; Harl equi n Ente rs. Ltd. v. Gulf

& Western Corp, 644 F.2d 946, 949 (2d Cir. 1981) (holding that plaintiff’s extensive national advertising

indicated consumers associated plaintiffs mark with the source of plaintiff’s products). Courts recognize

that intemet advertising can effectively raise consumer awareness without large expenditures, giving it an

advantage over traditional advertising and allowing companies to advertise extensively without incurring

high costs. See Classified Ventures, L.L.C. v. Softcell Mktg., Inc., 109 F. Supp. 2d 898, 899 (ND. 111.

PALOALTO 82564 (2K) ‘5’
2000) (?nding CARS.COM ser vic e ma rk s acq uir ed str ong sec ond ary me an in g thr oug h ext ens ive

promotion, advertising, and int eme t exp osu re) ; Ste elb uil din g.c om, 415 F.3 d at 130 2—0 3 (Li nn, J.,

dissenting) (?nding that inteme t adv ert isi ng is an ef? cie nt wa y to rea ch a tar get aud ien ce) .

The Applicant has invested a gre at dea l of mo ne y and oth er res our ces in adv ert isi ng the por tab le

USB storage devices bearing its Ma rk in the Uni ted Sta tes sin ce at lea st as ear ly as Feb rua ry 200 0, usi ng

both print media and inteme t adv ert ise men ts. Sin gh Dec lar ati on 1111 3—5 . The App lic ant als o eng age d a

public relations consulting ?rm to assist the App lic ant wit h the mar ket ing and pro mot ion of its por tab le

USB storage devices branded with the Mark. Singh Declaration 1] 4. The Applicant has, further,

promoted its Mark-branded pro duc ts at pre mie r ind ust ry tra des how s, inc lud ing CO MD EX in Chi cag o in

Spring 2000, PC EXPO in Ne w Yor k, and the Con sum er Ele ctr oni cs Sh ow (“C ES” ). Sin gh Dec lar ati on

1] 4.

A portion of these advert isi ng doll ars has bee n dev ote d to adv ert isi ng the TH UM BD RI VE –

branded portable digital ele ctr oni c dev ice s on the int eme t, inc lud ing on the App lic ant ’s web sit e,

www.thumbdrive.com , dis cus sed furt her bel ow. Sin gh Dec lar ati on ‘? 5. Giv en that a larg e seg men t of the

consumers of port able digi tal elec tron ic devi ces is inte met- savv y and the perv asiv enes s of the Appl ican t’s

advertising on the inte met, whi ch deno tes the App lic ant as th_e sour ce of the THU MBD RIV E-b ran ded

devices, the Appl ican t has rea che d the majo rity of its con sum ers and com mun ica ted its bran ding of the

portable digital electronic devices with its THUMBDRIVE mark.

By so permeating the market with advertising connecting the THUMBDRIVE mark to its source,

Trek 2000, the Applicant has successfully linked the two such that the Mark has acquired distinctiveness.

Moreover, promotional materials can serve as evidence of advertising to establish secondary

meaning. In Re Mine Safety Appliances Ca, 66 U.S.P.Q.2d 1694, 1697—98 n.6 (T.T.A.B. 2002). In Mine

Safety, the court held that the applicant’s use of its trademark WORKMASK in its promotional materials

-— including data sheets, bulletins, and equipment catalogs — and product literature served as evidence that

applicant’s proposed mark had acquired secondary meaning. Id. at 1698, 1700. The applicant in Mine

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Safety did not present evidence of larg e adv ert isi ng exp end itu res , but the cou rt did not dee m this fata l to

the applicant’s claim of secondary meaning. Id. at 1700 (“[T]he record herein demonstrates that

applicant, for ove r six year s, has con sis ten tly util ized the ter m ‘W OR KM AS K, ’ on its spe cim ens of use

and in its advertising and pro mot ion al mat eri als and acti viti es, in a man ner cal cul ate d to proj ect a sing le

source or orig in for its goo ds to cus tom ers and mem ber s of the trad e ther efor e ….” ); see also Fre edo m

Calls Found, 200 6 WL 845 509 , at *6 (?n din g plai ntif f’s adve rtis ing expe ndit ures wei gh in favo r of a

?nding of sec ond ary mea nin g whe re plai ntif f spen t app rox ima tel y $10 0,0 00 in adve rtis ing and

“consistently directed its marketing efforts towards the target consumer group”).

Like the appl ican t in Alin e Safe ty, the Appl ican t has use d its TH UM BD RI VE mar k on its

promotional materials, product literature, and product packaging in a manner that is meant to and d_oe_s

project a si_ngl_e source of origin for THUMBDRIVE-branded products. Singh Declaration 1] 11, Exh. D.

The Applican t has used the Mar k on its prod uct pack agin g and prom otio nal mate rial as a sour ce iden ti?e r

for more than seven year s, sinc e 2000 . Sin gh Decl arat ion 1] 11. As disc usse d in grea ter deta il in Sect ion

V below, subs tant iall y excl usiv e and cont inuo us use of the mar k in com mer ce for ?ve year s is a fact or

that weights in favor of a ?nding of acquired distinctiveness. These facts further support a ?nding of

acquired distinctiveness for the THUMBDRIVE mark.

II. Sales Success

Another factor in considering whether a mark has acquired distinctiveness is the sales success

associated with products branded with the mark at issue. See Thompson, 753 F.2d at 217; Int ’1 Bancorp,

LLC, 329 F.3d at 370. Where an applicant has had commercial success with products branded with the

mark at issue, Examining Attorneys should ?nd that that mark has acquired distinctiveness and developed

a secondary meaning. See, e.g., Perfumania, Inc. v. Perfulandia, Inc., 279 F. Supp. 2d 86, 103 (D.P.R.

2003) (?nding plaintiff‘s mark was strengthened by its national sales volume of more than $1.4 million in

products over 15 years); TCPIP Holding Co., Inc., 244 F.3d at 96 (holding that plaintiff’s $280 million in

sales established secondary meaning); Harlequin Enters. Ltd, 644 F.2d at 950 n.1 (holding that plaintiff’s

PALOALTO 82564 (2K) ‘7’
sale of 20 million books established secondary meaning).

Like the plai ntif fs in Per fum ani a, TCP IP Hol din g Com pan y, and Har leq uin Ent erp ris es, the

Applicant has enjoyed sign ific ant sale s suc ces s wit h its THU MBD RIV E-b ran ded pro duc ts. The

Applicant has rec ord ed sale s of its THU MBD RIV E-b ran ded pro duc ts in exc ess of $4. 3 mil lio n in the

United States in the past ?ve year s, wit h inc rea sed OE M sale s in eac h of tho se year s. Sin gh Dec lar ati on

‘? 6, Exh. A. The Appl ican t’s sale s succ ess with its THU MBD RIV E-b ran ded prod ucts serv e as furt her

evidence of acquired distinctiveness.

III. Unsolicited Media Coverage of the Product

Unsolicited media coverage also serves as evidence of acquired distinctiveness. See Thompson,

753 F.2d at 217; Air Car go New s, Inc. v. Tab mag Publ ’g, Ltd , No. 07- CV- 480 , 200 7 WL 110 118 3, at *9

(E.D.N.Y. Apr. 11, 2007) (noting that plaintiff “received extensive media coverage within the air cargo

industry, includin g num ero us awa rds and app ear anc es on tele visi on and in the news ”). The Appl ican t’s

THUMBDRIV E-b ran ded prod ucts have been cove red by seve ral new s outle ts, incl udin g The Wall Stree t

Jour nal, The New Yor k Time s, Busi ness Wee k, Wire d Maga zine , CNE T, MacW orld , and Smar t

Computin g. Sing h Decl arat ion 11 7, Exh. B (exa mple s of artic les publ ishe d in the Unit ed Stat es cove ring

the Applicant’s THUMBDRIVE-branded products). The Applicant’s THUMBDRIVE-branded products

have also been covered by ?nancial analysts, such as Kim Eng, Asia’s leading securities and investment

broker, whose international presence includes a New York branch. Exh. E. Moreover, the Applicant’s

THUMBDRIVE-branded portable USB storage devices have received recognition and awards in the

United States for excellence in technology, including Design & Engineering Showcase Honors at the

2003 Consumer Electronics Show. Singh Declaration 1] 8. This coverage serves as additional evidence of

the THUMBDRIVE mark’s acquired distinctiveness.

IV. Attempts to Plagiarize THUMBDRIVE

Attempts to plagiarize a mark also weigh in favor of a ?nding of acquired distinctiveness. Int ’1

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Ban cor p, LLC , 329 F.3 d at 370 ; Air Car go New s, Inc. , 200 7 WL 110 118 3, at *8, *9.

Numerous domain na me reg ist ran ts hav e att emp ted to use the TH UM BD RI VE mar k to dri ve

traf?c to their websites by using the Ma rk itse lf or som e der iva tio n the reo f, inc lud ing “th umb dri v,”

“thumbdriving,” “trekthumbdrive,” and “bl uet oot hth umb dri ve. ” Tho se pla gia riz ing the Mar k are free –

riding on the streng th of and goo dwi ll ass oci ate d wit h the Mar k, whi ch are at leas t in part attr ibut able to

the Applicant pio nee rin g the des ign and man ufa ctu re of por tab le US B sto rag e dev ice s. Sin gh Dec lar ati on

11 2. By using the Mark, thos e thir d part ies are atte mpti ng to ben e?t fro m asso ciat ion with the Appl ican t,

confusing potential and actu al con sum ers into beli evin g that thei r goo ds and/ or serv ices are asso ciat ed

with or orig inat e fro m the pri mar y dev elo per and man ufa ctu rer of the goo ds soug ht, nam ely , port able

USB storage devi ces. The App lic ant has take n and cont inue s to take reas onab le step s, by and thr oug h its

trademar k coun sel, to addr ess misu se of the Mar k by doma in owne rs and other s, and to stop any

infringing uses of the Mark. Singh Declaration 1] 12. As part of this effort, the Applicant subscribes to

Trademark and Dom ain Nam e Wat ch Noti ce serv ices that repo rt all inst ance s of use of the Mark , or

misspellings ther eof, in trad emar k appl icat ions and doma in name s, and issu es ceas e and desis t lette rs to

all domain name owners misusing or misappropriating the Applicant’s Mark. Singh Declaration 11 12.

The presence of domain name registrants attempting to plagiarize the Mark in order to bene?t

from the strength of and goodwill associated with the Mark, combined with the Applicant’s vigilant

protection of its THUMBDRIVE mark against such misuse and the Applicant’s control over the proper

usage of same by licensees, weighs in favor of a ?nding of acquired distinctiveness.

Additionally, not all third party uses of the THUMBDRIVE mark are unauthorized. The

Applicant has authorized certain companies to manufacture portable USB storage devices bearing the

THUMBDRIVE mark for sale in the United States, and some of those licensees — including Memorex,

Creative Technology Ltd., Imation, Iomega, and TEAC — are authorized by the Applicant to co-brand

those devices with the THUMBDRIVE mark and their own house mark. Singh Declaration 1] 9. These

relationships are governed by license agreements, which include quality control measures that allow the

PALOALTO 82564 (2K) ‘9-
Applicant to ensure that the goodwill associated with the Mark is preserved and that the Mark is used

correctly, as a source identi?er. Singh Declaration 1] 9. The willingness of third party companies active

in the ?eld to obtain licenses of the mark surely is strong evidence of its recognition among sellers and

consumers of these products as a distinctive brand ~ why would important companies such as Memorex,

Creative Technology Ltd., Irnation, and Iomega take licenses otherwise?

V. Length and Exclusivig of Use of THUMBDRIVE by Trek 2000

The length of use of a mark, including the continuity and exclusivity of such use, also may

evidence acquired distinctiveness of that mark. Jewish Sephardic Yellow Pages, Ltd. v. DAG Media, Inc.,

478 F. Supp. 2d 340, 374 (E.D.N.Y. 2007) (“the length and exclusivity of a mark’s use is evaluated in

light of the product and its consumers”); Perfumania, Inc. v. Perfulandia, Inc., 279 F. Supp. 2d 86, 103

(D.P.R. 2003) (noting plaintiff’s mark “achieved additional strength by means of the length of time the

mark has been used”). In the Jewish Sephardic Yellow Pages, Ltd. case, the court found that, while

“plaintiff used its mark exclusively from at least 2000, when it published its ?rst (annual) edition of the

‘Kosher Yellow Pages,” within the “context of the published industry, this mark ‘does not have a

particularly long history,”’ citing the example of Science Magazine, which had been published since

1880. Jewish Sephardic Yellow Pages, Ltd, 478 F. Supp. 2d at 374—75.

In this instance, the Applicant was a pioneer in the design and manufacture of, and the ?rst

company to sell portable USB storage devices, in early 2000. Singh Declaration 1] 2; see also USB Flash

Drive, Wikipedia, available at http://en.wikipedia.org/wiki/USB_?ash_drive (last viewed 30 November

2007). The Applicant coined the THUMBDRIVE term as its brand name for its line of portable USB

storage devices in 2000, and has consistently and continuously used the THUMBDRIVE mark to

advertise, market, and brand such products since 2000. Singh Declaration 1H] 2, 3, 5, 11. Such continuous

and consistent use over the past seven years is further evidence of the THUMBDRIVE mark’s acquired

distinctiveness and secondary meaning.

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VI. Additional Factors

In addition to the fact ors set fort h in the Tho mps on case , cou rts rec ent ly hav e con sid ere d

possession of intemet domains and use of the “T M” sym bol to edu cat e con sum ers , to be rel eva nt to the

determination of acquired distinctiveness and secondary meaning. PACAAR Inc. v. Telescan Techs.,

L.L.C., 319 F.3d 243, 250 (6t h Cir. 200 3) (“W ord s in man y dom ain nam es can and do com mun ica te

information as to the sou rce or spo nso r of the web site ”); Bro okj ’ie ld Com mun ica tio ns, Inc. v. Wes t Coa st

Entm ’t Cor p, 174 F.3 d 103 6, 105 5 (9th Cir. 199 9) (“T he dom ain nam e is mor e tha n a mer e add res s: like

trademarks, second -le vel dom ain nam es com mun ica te inf orm ati on as to sou rce ”); In re Min e Saf ety

Appliances Co. , 66 U.S .P. Q.2 d 169 4, 170 0 (T. T.A .B. 200 2) (“[ T]h e use [of the ‘TM ’ sym bol ] by

applicant in connecti on with its adve rtis ing and pro mot ion al mate rial s for its ‘WO RKM ASK ’ self –

contained brea thin g appa ratu s is evid ence of appl ican t’s atte mpts and inte nt to educ ate the trad e and

purchasing publ ic that it rega rds the ter m ‘WO RKM ASK ’ as its tra dem ark for such goo ds” ).

A. Internet Presence

Courts recognize that intemet presence can make consumers aware of a brand, widespread

presence on the intemet can support a ?nding of secondary meaning, and intemet domain names can

serve as powerful source identi?ers. See In re My Virtual Model Inc., 2005 WL 1822537, * 5 (T.T.A.B.

July 21, 2005 ) (“Gi ven the year s of usag e of this term by appl ican t on the Inter net, acco mpan ied by a

showing of adve rtis ing expe ndit ures of near ly a mill ion doll ars a year over a peri od of year s, we conc lude

that applicant has proven acquired distinctiveness by a preponderance of the evidence”); PACCAR Inc.,

319 F.3d at 250; Broolrjield Communications, Inc., 174 F .3d at 1055; Panavision Int ’1, LP. v. Toeppen,

141 F.3d 1316, 1327 (9th Cir. 1998) (“A signi?cant purpose of a domain name is to identify the entity

that owns the web site”); Steelbuilding.com, 415 F.3d at 1301 (Linn, J., dissenting) (“In the Internet

world, domain-name recognition is a form of source identi?cation and may even evidence acquired

distinctiveness. . . ..”).

PALOALTO 82564 (2K) ‘1 1’
The Applicant owns the domain name associated with the Mark, www.thumbdrive.com, which it

registered on February 11, 2000. Singh Declaration 11 10, Exh. C; WHOIS domain registration

information results for thumbdrive.com from Network Solutions, available at

http://www.networksolutions.com/whois/results.jsp?domain=thumbdrive.com (last viewed Nov. 27,

2007). The Applicant’s thumbdrive.com domain serves as a way to inform the public that

THUMBDRIVE identi?es the source of the product, Trek 2000, and not the product itself. Internet users

that visit the thumbdrive.com website will quickly realize that Trek 2000 owns the THUMBDRIVE mark

and uses it only in connection with portable USB devices. Singh Declaration 11 10, Exh. C. Moreover,

the Applicant has consistently and continuously protected its mark and its domain name against

cybersquatting, trademark infringement, and trademark dilution by issuing cease and desist letters and

engaging in other protective action. Singh Declaration 11 12.

B. Consistent and Continuous Use of the “TM” Symbol

Use of a mark with the “TM” symbol may also support a ?nding of acquired distinctiveness. In

re Aline Safety Appliances C0., 66 U.S.P.Q.2d at 1700. In Mine Safety, the court considered that the

applicant had used its proposed mark on its advertising and promotional materials in conjunction with the

“TM” symbol. Id. at 1698. The court found that applicant’s use of the symbol established that the

applicant intended to educate the public that WORKMASK was a source identi?er. Id. at 1700. The

court noted that the applicant’s intent, combined with its manner of use and sales numbers, was enough

evidence to establish acquired distinctiveness for the applicant’s mark. Id. The court therefore did not

require the applicant to submit additional evidence of secondary meaning. Id.

Like the applicant in Mine Safety, and since 2000, the Applicant has used the “TM” symbol and

the “®” symbol in conjunction with the mark THUMBDRIVE consistently and continuously on its

products, product packaging, posters, advertising, and other promotional materials, in the United States

and on the intemet. Singh Declaration W 10—11, Exhs. C & D. The Applicant has used the

THUMBDRIVE mark and the “TM” and “®” symbols in a manner that expresses and represents the mark

PALOALTO 82564 (2K) ’12-
as an identi?er of origin . See id. If the Exa min ing Att orn ey fol low s the cou rt’ s ana lys is in Min e Saf ety ,

the Applicant’s use of the “TM” symbol wit h its TH UM BD RI VE mar k sho uld be suf ?ci ent to est abl ish

the Mark’s acquired distinctiveness. See id. at 1699—700.

VIII. The Weight of Evidence Reg uired

Acquired distin cti ven ess is a que sti on of fact ; the exa ct amo unt of evi den ce req uir ed vari es fro m

case to case. Yamaha Int ’1 Cor p. v. Hos hin o Gak ki Ca, 840 F.2 d 157 2, 158 1 (Fe d. Cir. 198 8). The mor e

descriptive a term, the higher the evi den tia ry bur den to esta blis h sec ond ary mea nin g. Id. The evi den tia ry

burden plac ed on the appl ican t vari es with the degr ee of desc ript iven ess of the pro pos ed mar k. In re .Min e

Safety Appliances Co., 66 U.S .P. Q.2 d at 1697 . For exa mpl e, in Min e Safe ty, alth ough the cour t fou nd that

the applicant’s WO RK MA SK mar k for brea thin g mas ks was “hig hly desc ript ive, ” it held that the

applicant had sati s?ed its evid enti ary bur den by sho win g that it had use d its mar k on its prod uct lite ratu re

for ?ve year s, and did not requ ire the appl ican t to sub mit furt her evid ence of adve rtis ing or con sum er

reco gnit ion. Id. at 169 8—7 00. In In re SRO Man age men t, the cour t fou nd that the appl ican t had sati s?ed

its evidentiary burden for its THE CON TIN ENT AL RE ST AU RA NT AN D MAR TIN I BA R mar k by

subm itti ng evid ence indi cati ng its rest aura nt had been ment ione d in two maga zine artic les and on one

television broadcast. 72 U.S.P.Q.2d 1060, 1061—62 (T.T.A.B. 2004).

The Applicant has continuously and consistently used the THUMBDRIVE mark, in conjunction

with the “TM” symb ol, for over 7 year s on its prod ucts , prod uct pack agin g, and prom otio nal mate rial s

(both in print and on the intemet, including on its own webpage, thumbdrivecom), achieving successful

and increasing sales that exceeds $4.3 million over the past ?ve years. Moreover, the Applicant has

received unsolicited media coverage and defended its Mark against third parties attempting to bene?t

from misappropriation and infringement of the Mark. The Applicant has established and continues to

establish consumer awareness of its Mark and its role as a source identi?er for portable USB storage

devices manufactured by the Applicant. The Applicant has met and exceeded the evidentiary thresholds

applied in Aline Safety and SRO Management, and registration of the Mark on the Principal Register

PALOALTO 82564 (2K) ’13 ‘
should be allowed.

CONCLUSION

Based on the fore goin g, the Appl ican t resp ectf ully requ ests that the Exa min ing Atto rney allo w

the present application to move forward to publication on the Principal Register.
* * *

Dated: Palo Alto, California
December 5, 2007

Respectfully submitted,

WHITE & CASE LLP

– – ’ . Hisc
M
Cynthia-Clar t . ey, Esq.
Jennifer L. Co, Esq.
3000 El Camino Real
5 Palo Alto Square, 9th Floor
Palo Alto, California 94306
650-213-0300
Attorneys for Applicant

PALOALTO 82564 (2K) ’14-