Free Answer to Complaint - District Court of California - California

Case 5:08-cv-01036-RS

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TERRNCE P. McMAHON (SBN: 71910) tmcmahon(£mwe.com DAVID H. DOLKAS (SBN: 111080) ddolkas(£mwe.com TERRY W. AHEARN (SBN: 216543) tahearn(£mwe.com
McDERMOTT WILL & EMERY LLP 3150 Porter Drive Palo Alto, CA 94304-1212
Telephone: 650.813.5000 Facsimile: 650.813.5100

Attorneys for Defendant QUALCOMM INCORPORATED

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA

OMNIVISION TECHNOLOGIES, INC."
Plaintiff,
v.

CASE NO. CV 08 1036 (RS)

QUALCOMM INCORPORATED,
Defendant.

QUALCOMM INCORPORATED'S ANSWER TO OMNIVISION TECHNOLOGIES, INC.'S COMPLAINT FOR TRADEMARK INFRINGEMENT, TRADEMARK DILUTION AND UNFAIR COMPETITION

DEMAND FOR JURY TRIAL
QUALCOMM'S ANSWER

In response to Omnivision Technologies, Inc.'s ("OVT") Complaint for Trademark
Infringement, Trademark Dilution and Unfair Competition ("Complaint") filed in this action,
Qualcomm Incorporated ("Qualcomm"), through its attorneys, submit its Answer and Affirmative
Defenses to the Complaint.
GENERAL DENIAL

Except as expressly admitted herein, Qualcomm DENIES each and every allegation in the
Complaint.
INTRODUCTION TO COMPLAINT

1. Qualcomm DENIES the allegations against Qualcomm contained in paragraph 1 to

Qualcomm's Answer and Affrmative Defenses

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the Complaint.
JURISDICTION AND VENUE; INTRADIsTRICT ASSIGNMENT

2. Qualcomm ADMITS that OVT asserts subject matter jurisdiction is proper
pursuant to 28 U.S.C. §§ 133 1 and 1338. To the extent paragraph 2 alleges anything other than

the aforementioned, Qualcomm DENIES the allegations contained in paragraph 2.
3. Qualcomm ADMITS that OVT asserts venue is proper in the Northern District of

California pursuant to 28 U.S.C. §1391(b)(1) - (3). To the extent paragraph 3 alleges anything
other than the aforementioned, Qualcomm DENIES the allegations contained in paragraph 3.
4. Qualcomm ADMITS that intradistrict assignment to any division of

the Northern

District is proper under Local Rule 3-2(c) and the Assignment Plan of

this Cour as an

"Intellectual Property Action." To the extent paragraph 4 alleges anything other than the
aforementioned, Qualcomm DENIES the allegations contained in paragraph 4.
GENERAL ALLEGATIONS

5. Qualcomm is without sufficient knowledge or information to form a belief as to

the allegations contained in paragraph 5. For this reason, Qualcomm DENIES the allegations
contained in paragraph 5.
6. Qualcomm is without sufficient knowledge or information tö form a belief as to

the allegations contained in paragraph 6. For this reason, Qualcomm DENIES the allegations
contained in paragraph 6.
7. Qualcomm is without suffici¡:,mt knowledge or information to form a belief as to

the allegations contained in paragraph 7. For this reason, Qualcomm DENIES the allegations
contained in paragraph 7.
8. Qualcomm is without sufficient knowledge or information to form a belief as to

the allegations contained in paragraph 8. For this reason, Qualcomm DENIES the allegations
contained in paragraph 8.

9. Qualcomm ADMITS that OVT owns a federal trademark registration for the word

mark OMNIVISION at Reg. No. 2,429,766. To the extent paragraph 9 alleges anything other

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than the aforementioned, Qualcomm is without suffcient knowledge or information to form a
belief as to these allegations and DENIES such allegations contained in paragraph 9.
10. Qualcomm ADMITS that OVT owns a federal trademark registration for the word

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mark and design OMNIVISION at Reg. No. 2,429,765. To the extent paragraph 10 alleges
anything other than the aforementioned, Qualcomm is without sufficient knowledge or

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information to form a belief as to these allegations and DENIES such allegations contained in
paragraph 10.

11. Qualcomm ADMITS that OVT owns a federaÌ trademark registration for the word

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mark and design OMNIVISION at Reg. No. 3,229,932. To the extent paragraph 11 alleges
anything other than the aforementioned, Qualcomm is without sufficient knowledge or
information to form a belief as to these allegations and DENIES

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such allegations contained in

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12. Qualcomm ADMITS that OVT owns a federal trademark registration for the word

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mark and design OMNIVISION at Reg. No. 3,227,857. To the extent paragraph 12 alleges
anything other than the aforementioned, Qualcomm is without sufficient knowledge or

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information to form a belief as to these allegations and DENIES such allegations contained in
paragraph 12.

13. Qualcomm ADMITS that a federal trademark registration provides a presumption
of

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trademark validity. To the extent paragraph 13 alleges anything other than the aforementioned,

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Qualcomm is without suffcient knowledge or information to form a belief as to these allegations
and DENIES such allegations contained in paragraph 13.
14. Qualcomm ADMITS that it is a Delaware Corporation with its principal place of

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business in San Diego, CA.
15. Qualcomm is without sufficient knowledge or information to form a belief as to
the allegations contained in this paragraph. For this reason, Qualcomm DENIES the allegations
contained in paragraph 1 5;

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16. Qualcomm ADMITS that a division or divisions of Qualcomm that are unelated

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to this dispute have purchased products from OVT. To the extent paragraph 16 alleges anything
other than the aforementioned, Qualcomm is without sufficient knowledge or information to form
a belief as to these allegations and DENIES such allegations contained in paragraph 16.

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17. Qualcomm ADMITS that representatives of Qualcomm have attended some of the
trade shows listed in paragraph 17. To the extent paragraph 17 alleges anything other than the
aforementioned, Qualcomm is without sufficient knowledge or information to form a belief as to
these allegations and DENIES such allegations contained in paragraph 17.

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18. Qualcomm ADMITS it filed trademark applications on August 22, 2005 bearing

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serial numbers 78/697,428 and 78/697,430 in international classes 9 and 35/39 respectively for its

trademark OMNIVISION. To the extent paragraph 18 alleges anything other than the
aforementioned, Qualcomm DENIES the allegations contained in paragraph 18.
19. Qualcomm ADMITS that the United States Patent and Trademark Office

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("USPTO") published Qualcomm's applications for its trademark OMNIVISION bearing serial

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numbers 78/697,428 and 78/697,430 for opposition in May 2, 2006. Qualcomm ADMITS OVT
filed oppositions to Qualcomm's trademark applications bearing serial numbers 78/697,428 and

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78/697,430 on June 1,2006. To the extent paragraph 19 alleges anything other than the
aforementioned, Qualcomm DENIES the allegations contained in paragraph 19.
20. Qualcomm ADMITS that it filed two intent-to-use applications for its
OMNIVISION trademark. Qualcomm ADMITS that at the time of the filing of

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its intent-to-use

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applications Qualcomm had not met the requirements for federal trademark applications based on
use. To the extent paragraph 20 alleges anything other than the aforementioned, Qualcomm

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DENIES the allegations contained in paragraph 20.
21. Qualcomm ADMITS its Qualcomm Enterprise Services ("QES") division is using

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its OMNIVISION trademark on mobile computing systems that offer a broad range of services to
help enhance the efficiency, productivity, and safety of

fleet operations for the transportation and

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logistics markets. To the extent paragraph 21 alleges anything other than the aforementioned,
Qualcomm DENIES the allegations contained in paragraph 21.

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22. Qualcomm is without sufficient knowledge or information to form a belief as to
the allegations contained in paragraph 22. For this reason, Qualcomm DENIES the allegations

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containèd in paragraph 22.
23. Qualcomm DENIES.

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the allegations contained in paragraph 23.

24. Qualcomm DENIES the allegations contained in paragraph 24. 25. Qualcomm DENIES the allegations contained in paragraph 25. 26. Qualcomm DENIES the allegations contained in paragraph 26.
FIRST CAUSE OF ACTION

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Infringement of Federally Registered Trademarks (Lanham Act §32/15 U.S.C. §1114)
27. Qualcomm incorporates by reference its specific responses

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to paragraphs 1

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SECOND CAUSE OF ACTION

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False Designation of Orgin/Trademark Infringement
(Lanham Act §43(a)(1)(A)/15 U.S.C. §1125(a)(1)(A))

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29. Qualcomm incorporates by reference its specific responses to paragraphs 1
through 28 above.

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30. Qualcomm DENIES the allegations contained in paragraph 30.
THIRD CAUSE OF ACTION

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Trademark Dilution under Federal Law
(Lanham Act §43(c)/15 U.S.c. §1125(c))

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3 1. Qualcomm incorporates by reference its specific responses to paragraphs 1
through30 above.

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32. Qualcomm DENIES the allegatiòns contained in paragraph 32.
33. Qualcomm DENIES the allegations contained in paragraph 33. 34. Qualcomm DENIES the allegations contained in paragraph 34.
FOURTH CAUSE OF ACTION

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Trademark Dilution Under California Law
(CaL. Bus. & Prof. Code §14247)

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35. Qualcomm incorporates by reference its specific responses to paragraphs 1
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FIFTH CAUSE OF ACTION

Trademark Infringement and Unfair Competition (California Common Law)

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38. Qualcomm incorporates by reference its responses to paragraphs 1 through 37
above.
39. Qualcomm DENIES the allegations contained in paragraph 39.
SIXTH CAUSE OF ACTION

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Declaratory Relief and Rectification of Trademark Register

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40. Qualcomm incorporates by reference its responses to paragraphs 1 through 39
above.
41. Qualcomm DENIES the allegations contained in paragraph 41.
42. Qualcomm DENIES the allegations contained in paragraph 42.
AFFIRMATIVE DEFENSES AS TO ALL CAUSES OF ACTION

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As separate and distinct affirmative defenses to the Complaint, and to each and every

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purorted cause of action therein, Qualcomm is inforned and believe, and thereon alleges, as
follows:

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First Affirmative Defense (Failure to State a Claim)
43. The allegations of

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the Complaint fail to state a claim upon which relief can be

granted. For this reason, the Complaint should be dismissed.

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Second Affirmative Defense (No Likelihood of Confusion Under Federal Law)
44. OVT is not entitled to any relief against Qualcomm because use of

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the

OMNIVISION mark is notlikely to cause confusion in violation of 15 U.S.C. §1 1 14.

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Third Affirmative Defense
(Not Distinctive/No Secondary Meaning)

45. OVT is not entitled to any relief against Qualcomm because OVT's mark is not

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inherently distinctive and has not obtained secondary meaning.
Fourth Affrmative Defense

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(No Unfair Competition Under Federal Law)

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46. OVT is not entitled to any relief against Qualcomm because Qualcomm has not
used, and does not use, words, names, terms, marks, symbols, devices, false designations of
. origin, false and misleading descriptions and representations of facts which are likely to cause
confusion or to cause mistake or to deceive in violation of 15 U.S.C. § 1 125(a)(1)(A).

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Fifth Affirmative Defense (Lack of Dilution Under Federal Law)
47. OVT is not entitled to any relief against Qualcomm because Qualcomm has not
diluted OVT's trademark in violation of 15 U.S.C. §1125(c).

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Sixth Affrmative Defense (Lack of Dilution Under California Law)
48. OVT is not entitled to any relief against Qualcomm because Qualcomm has not
. diluted OVT's trademark in violation of California Bus. & Prof. Code § 14247.
Seventh Affrmative Defense

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(Lack of Fame/Lack of Distinctiveness)
49. OVT is not entitled to any relief against Qualcomm for dilution under federal or

state law because OVT's mark is neither famous nor distinctive.
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Ei2hth Affrmative Defense

(No Infringement or Unfair Competition Under California Common Law)
50. OVT is not entitled to any relief against Qualcomm because OVT's mark is not
distinctive and Qualcomm has not engaged in trademark infringement or unfair competition of
OVT's trademark in violation of

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California Common Law.
Ninth Affrmative Defense

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(No Declaratory Relief or Rectification)
51. OVT is not entitled to any declaratory relief or rectification of the Trademark

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Register because Qualcomm has not infringed, diluted or unfairly competed with OVT's
trademark in violation of any law.

. Qualcomm's Answer and Affrmative Defenses

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Tenth Affirmative Defense

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(Laches and Waiver)
52. On information and belief, OVT's claims for relief are barred, in whole or in part,
by the doctrine of

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laches or waiver, or both.
Eleventh Affrmative Defense

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(Estoppel)
53. Upon information and belief, OVT's claims for relief are barred, in whole or in

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part, by the application of the doctrine of equitable estoppel.

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Twelfth Affirmative Defense (Acquiescence)
54. Upon information and belief, OVT's claims for relief are barred, in whole or in

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part, by the application of the equitable doctrine of acquiescence.

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Thirteenth Affirmative Defense (Failure of Mark to Indicate Source)
55. OVT is not entitled to any relief against Qualcomm because OVT does not use the
mark at issue as an indicator of source.
PRA YER FOR RELIEF

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WHEREFORE, Qualcomm prays for the following relief against OVT:

1. OVT take nothing by the Complaint;
2. The Complaint be dismissed with prejudice;
3. Judgment be entered against OVT and in favor of

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the Qualcomm;

4. For costs of suit incurred herein, including reasonable attorneys' fees; and
5. For such other and further relief as is just and proper.

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DEMAND FOR JURY TRIAL
Pursuant to Rule 38 of the Federal Rules of

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Civil Procedure, Qualcomm hereby demands a

trial by jury as to all issues so triable in the Complaint.

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