Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1116395 Filing date: 02/24/2021 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91254336 Party Plaintiff Flex Ltd. Correspondence PAMELA N HIRSCHMAN Address SHERIDAN ROSS PC 1560 BROADWAY STE 1200 DENVER, CO 80202 UNITED STATES Primary Email: [email protected] Secondary Email(s): [email protected] 303-863-2967 Submission Plaintiff's Notice of Reliance Filer's Name Autumn R. Hartman Filer's email [email protected], [email protected], ahart- [email protected] Signature /Autumn R. Hartman/ Date 02/24/2021 Attachments Opposers Notice of Reliance.pdf(58875 bytes ) Exhibit A.1.pdf(79580 bytes ) Exhibit A.2.pdf(921101 bytes ) Exhibit A.3.pdf(99402 bytes ) Exhibit B.1.pdf(34359 bytes ) Exhibit B.2.pdf(69046 bytes ) Exhibit C.1.pdf(38767 bytes ) Exhibit C.2.pdf(38192 bytes ) Exhibit C.3.pdf(46994 bytes ) Exhibit C.4.pdf(154030 bytes ) Exhibit C.5.pdf(42376 bytes ) Exhibit C.6.pdf(43491 bytes ) Exhibit C.7.pdf(112323 bytes ) Exhibit C.8.pdf(36914 bytes ) Exhibit C.9.pdf(691392 bytes ) Exhibit C.10.pdf(42444 bytes ) Exhibit C.11.pdf(41746 bytes ) Exhibit C.12.pdf(46841 bytes ) Exhibit C.13.pdf(73369 bytes ) Exhibit C.14.pdf(67342 bytes ) Exhibit C.15.pdf(40473 bytes ) Exhibit C.16.pdf(43158 bytes ) Exhibit C.17.pdf(44319 bytes ) Exhibit C.18.pdf(78334 bytes ) Exhibit C.19.pdf(50108 bytes ) Exhibit C.20.pdf(39694 bytes ) Exhibit C.21.pdf(39426 bytes ) Exhibit C.22.pdf(42755 bytes ) Exhibit C.23.pdf(35868 bytes ) Exhibit C.24.pdf(38281 bytes ) Exhibit C.25.pdf(45450 bytes ) Exhibit C.26.pdf(51358 bytes ) Exhibit C.27.pdf(47799 bytes ) Exhibit C.28.pdf(46069 bytes ) Exhibit C.29.pdf(37928 bytes ) Exhibit C.30.pdf(297784 bytes ) Exhibit D.1.pdf(912006 bytes ) Exhibit D.2.pdf(650870 bytes ) Exhibit D.3 part 1.pdf(1068045 bytes ) Exhibit D.3 part 2.pdf(1493574 bytes ) Exhibit D.4 part 1.pdf(930772 bytes ) Exhibit D.4 part 2.pdf(1286519 bytes ) Exhibit E.1.pdf(172896 bytes ) Exhibit E.2.pdf(351040 bytes ) Exhibit E.3.pdf(59932 bytes ) Exhibit F.1.pdf(524389 bytes ) Exhibit F.2.pdf(347006 bytes ) Exhibit F.3.pdf(786428 bytes ) Exhibit F.4.pdf(519723 bytes ) Exhibit F.5.pdf(530625 bytes ) Exhibit F.6 part 1.pdf(512956 bytes ) Exhibit F.6 part 2.pdf(326891 bytes ) Exhibit F.7.pdf(308414 bytes ) Exhibit F.8.pdf(177257 bytes ) Exhibit F.9 part 1.pdf(314386 bytes ) Exhibit F.9 part 2.pdf(550347 bytes ) Exhibit F.10.pdf(562091 bytes ) Exhibit F.11.pdf(502988 bytes ) Exhibit F.12.pdf(424617 bytes ) Exhibit F.13.pdf(327268 bytes ) Exhibit F.14.pdf(342756 bytes ) Exhibit F.15.pdf(493074 bytes ) Exhibit F.16.pdf(445824 bytes ) Exhibit F.17.pdf(771903 bytes ) Exhibit F.18.pdf(672375 bytes ) Exhibit F.19.pdf(152426 bytes ) Exhibit F.20.pdf(876800 bytes ) IN THE UNITED STATE PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEALS BOARD In the Matter of U.S. Trademark Application Serial No. 88/486,090 Filed on June 24, 2019 For the mark “FLEX” Published in the Official Gazette on October 29, 2019 _______________________________________________ FLEX LTD., ) ) Opposer, ) ) v. ) Opposition No. 91254336 ) BAD ELF, LLC, ) ) Applicant. ) ________________________________________________) OPPOSER'S NOTICE OF RELIANCE Pursuant to 37 C.F.R. § 2.122(g), Opposer Flex Ltd. (“Opposer”) hereby submits and gives notice that it intends to rely on the following documents, official records and internet materials in connection with this proceeding: A. Opposer’s Trademark Registrations In accordance with Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) § 704.03(b)(1)(A), Opposer may rely on the trademark/service mark registrations listed below, identified in its Notice of Opposition, filed February 26, 2020. Printouts of information from the USPTO Trademark Status and Document Retrieval (“TSDR”) system, showing the current status of each mark and listing Opposer as the current owner, are attached hereto and marked as Opposer’s Exhibits A.1 to A.3. Opposer may rely on these documents to show, for example, standing, priority, relatedness of the parties’ goods and services, and similarities of the parties’ marks. 1 1. Opposer’s Exhibit A.1 – U.S. Registration No. 4995935 for FLEX for “supply chain management services; transportation logistics services, namely, arranging the transportation of goods for others; logistics management in the field of electronics; procurement, namely, purchasing electronics for others and inventory management services for others; wholesale distributorship services in the field of electronics” in Class 35, “packaging articles to the order and specification of others” in Class 39, “manufacturing services for others in the field of electronics to order and/or specification of others; custom manufacture of electronics for others; technical support services, namely, providing technical advice related to the manufacture of electronics,” in Class 40 and “engineering services, consulting services in the fields of new product development and electronics; new product design services; research and development of new products” in Class 42. 2. Opposer’s Exhibit A.2 – U.S. Registration No. 4930741 for FLEX (Stylized) for “Supply chain management services; transportation logistics services, namely, arranging the transportation of goods for others; logistics management in the field of electronics; procurement, namely, purchasing electronics for others and inventory management services for others; packaging articles to the order and specification of others; wholesale distributorship services in the field of electronics” in Class 35, “manufacturing services for others in the field of electronics to order and/or specification of others; custom manufacture of electronics for others; technical support services, namely, providing technical advice related to the manufacture of electronics,” in Class 40 and “engineering services, consulting services in the fields of new product development and electronics; new product design services; research and development of new products” in Class 42. 2 3. Opposer’s Exhibit A.3 – U.S. Registration No. 5352889 for FLEX PULSE for “computers; computer software for use in supply chain management, logistics and operations management, quality control, inventory management, and scheduling of transportation and delivery; Computer software in the nature of downloadable mobile applications for use in supply chain management, logistics and operation management, quality control, inventory management, and scheduling of transportation and delivery,” in Class 9, “supply chain management services; logistics management in the field of electronics; procurement, namely, purchasing of electronics, computer hardware and computer software, purchasing and sourcing of computers, computer systems and components and inventory management services for others; wholesale distributorship and ordering services and wholesale services via direct solicitation by sales agents, in the field of electronics; inventory control and inventory management services,” in Class 35, and “engineering services; product development services; product design, engineering, research, development and testing services in the field of electronics; design and testing for new product development; information, consultancy and advisory services relating to all the aforementioned services; providing temporary use of non-downloadable computer software for supply chain management, logistics and operation, inventory control, inventory management and tracking of documents and products over computer networks, intranets and the internet in the field of supply chain management,” in Class 42. B. Applicant’s Discovery Responses Pursuant to TBMP § 704.10, Opposer may rely on various statements, answers and admissions provided by Applicant in Applicant’s Discovery responses. Opposer may rely on these documents to show, for example, standing, priority, and likelihood of confusion. 1. Attached hereto, and marked as Opposer’s Exhibit B.1, is a copy of “Applicant’s 3 Responses To Opposer’s First Requests For Admission (Nos. 1 - 46),” dated August 18, 2020. 2. Attached hereto, and marked as Opposer’s Exhibit B.2, is a copy of “Applicant’s Objections And Responses To Opposer’s First Set Of Interrogatories (Nos. 1 - 40),” dated August 18, 2020. C. Official USPTO Records for Third-Party Trademark/Service Mark Registrations Pursuant to TBMP §704.03(b)(1)(B), Opposer may rely on the following third-party trademark/service mark registrations. Opposer may rely on these registrations to demonstrate that registrations commonly issue for both tracking software and devices in Class 9, and supply chain and logistics services in Classes 35, 39 and 42, and that such goods and services are closely related and often emanate from a single source. Further, Opposer may rely on these registrations to demonstrate that registrations covering tracking software and devices in Class 9 commonly specify that such software and devices are also used for supply chain and logistics purposes. Attached hereto, and marked as Opposer’s Exhibits C.1 to C.30 are Registration Certificates for the following marks: 1. Opposer’s Exhibit C.1 – INSTAFREIGHT, U.S. Reg. No. 5552736 (current owner: Instafreight GmbH) 2. Opposer’s Exhibit C.2 – CARGOSTEPS & Design, U.S. Reg. No. 5624637 (current owner: T World Service GmbH) 3. Opposer’s Exhibit C.3 – POLE STAR, U.S. Reg. No. 5483017 (current owner: Pole Star Space Applications Limited) 4. Opposer’s Exhibit C.4 – GEOFORCE, U.S. Reg. No. 4442244 (current owner: Geoforce, Inc.) 5. Opposer’s Exhibit C.5 – LOGWIN, U.S. Reg. No. 5557729 (current owner: 4 Logwin AG) 6. Opposer’s Exhibit C.6 – SINTECO & Design, U.S. Reg. No. 5521687 (current owner: Bucci Automations S.P.A.) 7. Opposer’s Exhibit C.7 – TOKYO 2020 & Design, U.S. Reg. No. 5216935 (current owner: United States Olympic Committee) 8. Opposer’s Exhibit C.8 – ODYN, U.S.