Registrations Subject to the Submission Goods/Services Subject To
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Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov ESTTA Tracking number: ESTTA1141608 Filing date: 06/21/2021 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 92075258 Party Defendant Shenzhen UFactory Technology Co., Ltd. Correspondence ERIC P. MIRABEL, JD, LLM Address 3783 DARCUS HOUSTON, TX 77005 UNITED STATES Primary Email: [email protected] Secondary Email(s): [email protected] 281-772-3794 Submission Answer and Counterclaim Filer's Name Eric Mirabel Filer's email [email protected] Signature /Eric Mirabel/ Date 06/21/2021 Attachments 4thCLEANAmendedanswercounterclaim.pdf(192292 bytes ) Registrations Subject to the submission Registration No. 4980649 Registration date 06/21/2016 International Re- NONE International Re- NONE gistration No. gistration Date Registrant ARM Limited 110 FULBOURN ROAD CAMBRIDGE, CB19NJ UNITED KINGDOM Goods/Services Subject to the submission Class 009. First Use: 0 First Use In Commerce: 0 All goods and services in the class are requested, namely: Electronic data processing equipment; computer hardware; integrated circuits; memory circuits for system-on-chip devices; microprocessors; Computer chips; RISC-based instruction set architectures, namely, software instructions designed to function with particular microprocessors; data processors; interfaces for computers; printed circuit boards; electronic circuit boards; telephones; mobile computing devices, namely, portable computers, laptop computers, notebook computers, subnotebook computers, ultra-mobile computers, tablet com- puters, Internet tabletcomputers, personal portable computers,personal digital assistants, personal di- gital assistants with integrated mobiletelephone functionality, mobile telephones, smart phones, handheld computers, GPS navigation devices and personal mediaplayers; Internet servers; electronic sensors for sensing light, pressure, smells, touch, movement, moisture, temperature, sounds and electronic signals; smartdevices, namely, Blank smart cards, smart card readers, smart water meters, smart remote controllers, smart phone watch; wearable mobile devices, namely, devices for hands- free use of mobile phones; wearable computers, namely, computers that can be worn on the human body or on the clothing and are always in strict contact with the user; set top boxes; modems; video encoders and transcoders; electronic book readers; Mobile data terminals; data processing equip- ment; televisions; smart televisions; horizontal surfacecomputers; mp3 players; mp4 players; elec- tronic data storage devices, namely, computer servers; electronic devices thatsend and receive data in a connected network, namely, computers; computer software for the design, development, model- ling, simulation, compiling, de-bugging, verification, construction and interfacing of integrated circuits, microprocessors, microprocessor cores, semiconductor intellectual property cores, macro cells,microcontrollers, bus interfaces and printed circuit boards; computer software for the design, de- velopment, modelling, simulation, compiling, de-bugging, verification, construction and interfacing ofapplication software and operating system software to run on integrated circuitbased devices; Downloadable electronic data files featuring microprocessor design file software; operating system software; security and cryptographic software; electronic publications, downloadable,in the nature of instruction manuals, user manuals, technical manuals, development manuals, datasheets, brochures, articles, newsletters, books, magazines, journals, research papers and white papers in the field of in- struction set architectures, RISC-based instruction set architectures, electronic data processing equipment, microprocessors, computer hardware, computer software, integrated circuitbased devices and electronic devices that send and receive data in a connected network Registration No. 4980650 Registration date 06/21/2016 International Re- NONE International Re- NONE gistration No. gistration Date Registrant ARM Limited 110 FULBOURN ROAD CAMBRIDGE, CB19NJ UNITED KINGDOM Goods/Services Subject to the submission Class 009. First Use: 0 First Use In Commerce: 0 All goods and services in the class are requested, namely: Electronic data processing equipment; computer hardware; integrated circuits; memory circuits for system-on-chip devices; microprocessors; Computer chips; RISC-based instruction set architectures, namely, software instructions designed to function with particular microprocessors; data processors; interfaces for computers; printed circuit boards; electronic circuit boards; telephones; mobile computing devices, namely, portable computers, laptop computers, notebook computers, subnotebook computers, ultra-mobile computers, tablet com- puters, Internet tabletcomputers, personal portable computers,personal digital assistants, personal di- gital assistants with integrated mobiletelephone functionality, mobile telephones, smart phones, handheld computers, GPS navigation devices and personal mediaplayers; Internet servers; electronic sensors for sensing light, pressure, smells, touch, movement, moisture, temperature, sounds and electronic signals; smartdevices, namely, Blank smart cards, smart card readers, smart water meters, smart remote controllers, smart phone watch; wearable mobile devices, namely, devices for hands- free use of mobile phones; wearable computers, namely, computers that can be worn on the human body or on the clothing and are always in strict contact with the user; set top boxes; modems; video encoders and transcoders; electronic book readers; Mobile data terminals; data processing equip- ment; televisions; smart televisions; horizontal surfacecomputers; mp3 players; mp4 players; elec- tronic data storage devices, namely, computer servers; electronic devices thatsend and receive data in a connected network, namely, computers; computer software for the design, development, model- ling, simulation, compiling, de-bugging, verification, construction and interfacing of integrated circuits, microprocessors, microprocessor cores, semiconductor intellectual property cores, macro cells,microcontrollers, bus interfaces and printed circuit boards; computer software for the design, de- velopment, modelling, simulation, compiling, de-bugging, verification, construction and interfacing ofapplication software and operating system software to run on integrated circuitbased devices; Downloadable electronic data files featuring microprocessor design file software; operating system software; security and cryptographic software; electronic publications, downloadable,in the nature of instruction manuals, user manuals, technical manuals, development manuals, datasheets, brochures, articles, newsletters, books, magazines, journals, research papers and white papers in the field of in- struction set architectures, RISC-based instruction set architectures, electronic data processing equipment, microprocessors, computer hardware, computer software, integrated circuitbased devices and electronic devices that send and receive data in a connected network IN THE UNITED STATES PATENT AND TRADEMARK OFFICE Before the Trademark Trial and Appeal Board Registration Nos. 4900858 & 5610021 Marks: UARM and XARM, respectively ARM Limited, Petitioner v. Shenzhen UFactory Technology Co., Ltd., Registrant Cancellation No. 92075258 Fourth Substitute Answer & Affirmative Defenses; Counterclaim Pursuant to the Board’s Order of June 11, 2021 (Document 20), Registrant Shenzhen UFactory Technology Co., Ltd. (“UFactory”) seeks leave to file this fourth substitute Answer and Affirmative Defenses,1 to substitute for the third substitute Answer and Affirmative Defenses [Documents 14]. The only difference between this filing and Document 14 is that in this filing, the prior counterclaim for cancellation of Petitioner ARM Limited’s Reg. No. 2332930 is not asserted. The counterclaim for cancellation of Petitioner ARM Limited’s Reg. Nos. 4980649 and 4980650, neither of which is incontestable, is maintained, and the fee for both counterclaims is paid herewith, pursuant to the Order of June 11, 2021 (Document 20). Substitute Answer 1. Registrant lacks sufficient information to admit or deny the allegations in this paragraph. 2. Registrant lacks sufficient information to admit or deny the allegations in this paragraph. 3. Registrant lacks knowledge and information sufficient to admit or deny the allegations in this paragraph 3. 4. Registrant lacks sufficient information to admit or deny the allegations in this paragraph. 5. Registrant lacks sufficient information to admit or deny the allegations in this paragraph. 6. Registrant lacks sufficient information to admit or deny the allegations in this paragraph. 7. Registrant admits the allegations in this paragraph 8. Registrant lacks sufficient information to admit or deny the allegations in this paragraph. 1 9. Registrant denies the allegations of this paragraph as not stating accurately the law set forth in 15 U.S.C. § 1052(d). 10. Registrant denies all allegations of this paragraph. 11. Registrant denies all allegations of this paragraph. 12. Registrant denies all allegations of this paragraph. 13. Registrant denies all allegations of this paragraph. 14. Registrant denies all allegations of this paragraph. 15. Registrant denies all allegations of this paragraph. 16. Registrant denies all allegations of this paragraph. 17. Registrant denies all allegations of this paragraph.