Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA809807
`03/27/2017
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`
`Opposer Information
`
`Name
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`Square, Inc.
`
`03/26/2017
`
`1455 Market Street, Suite 600
`San Francisco, CA 94103
`UNITED STATES
`
`Alicia Matusheski
`Perkins Coie LLP
`1201 Third Avenue, Suite 4900
`Seattle, WA 98101
`UNITED STATES
`pctrademarks@perkinscoie.com, amatusheski@perkinscoie.com, GStan-
`ton@perkinscoie.com, thanson@perkinscoie.com, ajagarcia@perkinscoie.com
`Phone:2063598000
`
`Applicant Information
`
`Application No
`
`86961440
`
`Publication date
`
`09/27/2016
`
`Opposition Filing
`Date
`
`Applicant
`
`03/27/2017
`
`Papazian, Vatche
`16551 Calneva Drive
`Encino, CA 91436
`UNITED STATES
`
`Opposition Peri-
`od Ends
`
`03/26/2017
`
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Downloadable software application for the
`transmittal of information; downloadable software application for the transmittal of text messages;
`downloadable software application for the transmittal of email; downloadable software applicationfor
`the transmittal of anonymous information; downloadable software applicationfor generating two di-
`mensional data code for the transmittal of information; downloadable software application for generat-
`ing two dimensional data code for thetransmittal of anonymous information; downloadable software
`application for generating barcode for the transmittal of information; downloadable software applica-
`tion for generating barcode for the transmittal of anonymous information
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`False suggestion of a connection with persons,
`living or dead, institutions, beliefs, or national
`
`Trademark Act Sections 2 and 43(c)
`
`Trademark Act Section 2(a)
`
`

`

`symbols, or brings them into contempt, or disrep-
`ute
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`3917735
`
`Registration Date
`
`02/08/2011
`
`Word Mark
`
`Design Mark
`
`SQUARE
`
`Application Date
`
`08/05/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2009/07/00 First Use In Commerce: 2009/07/00
`Hardware and software for processing credit card, debit card, and gift card
`transactions via mobile devices
`
`U.S. Registration
`No.
`
`3962489
`
`Registration Date
`
`05/17/2011
`
`Word Mark
`
`Design Mark
`
`SQUARE
`
`Application Date
`
`08/05/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2009/07/00 First Use In Commerce: 2009/07/00
`Reconciling credit card, debit card, and gift card accounts transactions via a
`global computer network
`Class 036. First use: First Use: 2009/07/00 First Use In Commerce: 2009/07/00
`Reconciling, namely, processing credit card, debit card, and gift card transac-
`tions via a global computer network
`Class 038. First use: First Use: 2009/07/00 First Use In Commerce: 2009/07/00
`Providing electronic transmission of credit card, debit card, and gift card transac-
`
`

`

`tion data, namely, charges
`
`U.S. Registration
`No.
`
`4818628
`
`Registration Date
`
`09/22/2015
`
`Word Mark
`
`Design Mark
`
`SQUARE
`
`Application Date
`
`12/16/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 042. First use: First Use: 2012/02/14 First Use In Commerce: 2012/02/14
`Providing temporary use of on-line non-downloadable computer software for
`payment processing, authentication, management and tracking; providing tem-
`porary use of on-line non-downloadable computer software for businesses,
`namely, software for use in enabling, facilitating, operating, and managing cus-
`tomer relations andloyalty programs; providing temporary use of online non-
`downloadable software for use in collecting, storing, analyzing, and providing
`data and information regarding electronic payment transactions; providing an in-
`teractive web site featuring technology that enables users to enter, access,
`track, manage, monitor, and generate information and reports regarding sales of
`products and services of others; enabling individuals and businessesto create
`web presences, namely, onlinedemographic business profiles, that summarize
`purchasing history, preferences, payment history and methods, and other in-
`formation regarding online and mobile commercial transactions; providing tem-
`porary use of on-line non-downloadable computer software for business optimiz-
`ation,planning and administration; providing a website featuring technology that
`enables users to create shopping lists, and back-order items for future delivery;
`providing temporary use of on-line non-downloadable computer software for
`making reservations and bookings for entertainment, sporting and cultural
`events, for accommodations, meals, spa appointments and for other personal
`care appointments; computer services, namely, creating an on-line community
`for registered users toparticipate in discussions, share ratings, reviews, recom-
`mendations, suggestions, favorites and product and service purchase history,
`get feedback from their peers, form virtual communities, and engage in social
`networking regarding the products and services of others; providingon-line non-
`downloadable geographic information system (GIS) software; online mapping
`services regarding the physical location of merchants and the products and ser-
`vices of interest to consumers; mapping services; providing a website featuring
`a search engine for users to determine the location of sellers and items for sale
`or purchase; computer services, namely, providing information and graphical
`displays regarding the physical location of merchants and their products and
`services on an internet website
`
`Related Proceed-
`ings
`
`Applicant and Square Inc. are involved in TTAB proceeding 91231340 regarding
`applicant's application for SHARESQUARE (Serial No. 86803898).
`
`

`

`Attachments
`
`77798169#TMSN.png( bytes )
`77798170#TMSN.png( bytes )
`86144480#TMSN.png( bytes )
`Sharesquare - Notice of Opp.PDF(209829 bytes )
`
`Signature
`
`/Alicia Matusheski/
`
`Name
`
`Date
`
`Alicia Matusheski
`
`03/27/2017
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`SQUARE, INC.,
`
`Opposer,
`
`V.
`
`VATCHE PAPAZIAN
`
`Opposition No.:
`
`
`
`Mark;
`
`EHFIFEEEDLJFIEE
`
`86/961,440 Applicant.
`
`App. Ser. No.:
`
`NOTICE OF OPPOSITION
`
`Square, Inc. (“Opposer”) believes that it will be damaged by registration of the mark S
`
`SHARESQUARE (Stylized) as shown above (“SHARESQUARE Mar ”), Application Serial
`
`No. 86/961,440 (“Application”), filed on April 1, 2016 and hereby opposes the Application. As
`
`grounds for this opposition (“Opposition”), Opposer alleges as follows:
`
`I.
`
`PARTIES
`
`1.
`
`Square, Inc. is a Delaware corporation, having a principal place of business in San
`
`Francisco, California.
`
`2.
`
`Upon information and belief, Vatche Papazian (“Applicant”) is an individual with
`
`an address at 16551 Calneva Drive, Encino, California, 91436.
`
`II.
`
`OPPOSER’S MARKS
`
`3.
`
`Opposer is one of the world’s leading providers of payment processing services and
`
`related hardware, software, and software development services (“Opposer’s Goods and Services”).
`
`4.
`
`Opposer owns the following U.S. trademark registrations, covering Opposer’s
`
`Goods and Services (“Opposer’s Registrations”):
`
`
`
`
`
`Goods/Services
`
`—
`
`Class 9: Hardware and software {for processing
`
`Trademark App. Date &
`i
`Ser. No.
`
`1'
`SQUARE
`
`l34909443.2
`
`Reg. Date "
`&
`V
`Re 5. N0. 1
`February 8,
`
`6
`
`
`
`

`

`2009
`
`2011
`
`
`
`
`May 17,
`2011
`
`
`
`77/798,169
`
`3,917,735
`
`
`
`
`
`
`credit card, debit card, and gift card transactions
`via mobile devices
`
`
`August 5,
`Class 35: Reconciling credit card, debit card,
`2009
`and gift card accounts transactions via a global
`
`computer network
`
`
`77/798,170
`3,962,489
`
`
`Class 36: Reconciling, namely, processing credit
`
`card, debit card, and gift card transactions via a
`
`global computer network
`
`
`
`
`Class 38: Providing electronic transmission of
`credit card, debit card, and gift card transaction
`data, namely, chares
`Class 42: Providing temporary use of on-line
`non-downloadable computer software for
`payment processing, authentication,
`
`
`management and tracking; providing temporary
`use of on-line non-downloadable computer
`
`software for businesses, namely, software for
`
`use in enabling, facilitating, operating, and
`managing customer relations and loyalty
`
`programs; providing temporary use of online
`
`non-downloadable software for use in collecting,
`
`storing, analyzing, and providing data and
`
`information regarding electronic payment
`
`transactions; providing an interactive web site
`
`featuring technology that enables users to enter,
`
`access, track, manage, monitor, and generate
`
`information and reports regarding sales of
`
`products and services of others; enabling
`
`individuals and businesses to create web
`
`
`presences, namely, online demographic business
`profiles, that summarize purchasing history,
`
`preferences, payment history and methods, and
`
`other information regarding online and mobile
`
`commercial transactions; providing temporary
`
`use of on-line non-downloadable computer
`
`software for business optimization, planning and
`
`administration; providing a Website featuring
`
`technology that enables users to create shopping
`
`lists, and back-order items for future delivery;
`
`providing temporary use of on-line non-
`
`downloadable computer software for making
`
`reservations and bookings for entertainment,
`
`sporting and cultural events, for
`
`
`
`
`
`
`
`September
`22, 2015
`
`December 16,
`2013
`
`86/144,480
`
`4,818,628
`
`134909443 .2
`
`

`

`accommodations, meals, spa appointments and
`for other personal care appointments; computer
`services, namely, creating an on-line community
`for registered users to participate in discussions,
`share ratings, reviews, recommendations,
`suggestions, favorites and product and service
`purchase history, get feedback from their peers,
`form virtual communities, and engage in social
`networking regarding the products and services
`of others; providing on-line non-downloadable
`geographic information system (GIS) software;
`online mapping services regarding the physical
`location of merchants and the products and
`services of interest to consumers; mapping
`services; providing a website featuring a search
`engine for users to determine the location of
`sellers and items for sale or purchase; computer
`services, namely, providing information and
`graphical displays regarding the physical
`location of merchants and their products and
`services on an internet website
`
`5.
`
`Opposer’s trademarks listed in Opposer’s Registrations and established by common
`
`law use shall collectively be referred to as the “SQUARE Marks.”
`
`6.
`
`Opposer’s Registrations are valid and subsisting and constitute primafacie
`
`evidence of the validity of the SQUARE Marks and of Opposer’s ownership of and exclusive right
`
`to use the SQUARE Marks in connection with the goods and services covered in Opposer’s
`
`Registrations.
`
`7.
`
`Opposer’s SQUARE Marks have achieved widespread and substantial recognition
`
`in association with Opposer’s Goods and Services as a result of Opposer’s continuous use of
`
`Opposer’s SQUARE Marks in connection with Opposer’s Goods and Services and as a result of
`
`the significant commercial success of Opposer’s Goods and Services.
`
`8.
`
`At no time has Opposer granted permission, written or otherwise, to Applicant to
`
`use or register any form of Opposer’s SQUARE Marks.
`
`134909443 .2
`
`

`

`III.
`
`APPLICANT, APPLICANT’S SHARESQUARE MARK, AND THE
`APPLICATION
`
`9.
`
`The Application covers the mark EHHEFWE.
`
`
`
`10.
`
`The Application includes the following goods in class 9: “Downloadable software
`
`application for the transmittal of information; downloadable software application for the
`
`transmittal of text messages; downloadable software application for the transmittal of email;
`
`downloadable software application for the transmittal of anonymous information; downloadable
`software application for generating two dimensional data code for the transmittal of information;
`
`downloadable software application for generating two dimensional data code for the transmittal of
`
`anonymous information; downloadable software application for generating barcode for the
`
`transmittal of information; downloadable software application for generating barcode for the
`
`transmittal of anonymous information” (“Applicant’s Goods”).
`
`11.
`
`Applicant filed the Application on April 1, 2016, based upon Section l(b) of the
`
`Lanham Act, 15 U.S.C. § 1051(b).
`
`IV.
`
`PRIORITY
`
`12.
`
`13.
`
`There is no issue as to priority.
`
`Opposer’s first and continuous use of its SQUARE Marks in connection with
`
`Opposer’s Goods and Services was well prior to the Application’s filing date of April 1, 2016, on
`
`information and belief, any other date of priority upon which Applicant may rely in this
`
`Opposition.
`
`V.
`
`CLAIMS
`
`A.
`
`LIKELIHOOD OF CONFUSION
`
`14.
`
`Opposer realleges and incorporates by reference the preceding allegations of this
`
`Opposition.
`
`134909443 .2
`
`

`

`15.
`
`Applicant’s SHARESQUARE Mark is nearly identical to Opposer’s SQUARE
`
`Marks, wholly incorporating Opposer’s SQUARE Marks and merely adding a stylized “s” and the
`
`term “share”.
`
`16.
`
`Applicant’s SHARESQUARE Mark conveys an overall commercial impression that
`
`is similar to that conveyed by Opposer’s SQUARE Marks.
`
`17.
`
`Applicant’s Goods overlap with or are highly related to Opposer’s Goods and
`
`Services.
`
`18.
`
`The Application does not restrict the channels of trade for Applicant’s Goods and
`
`Applicant’s Goods will be presumed to travel within the same charmels of trade as Opposer’s
`
`Goods and Services.
`
`19.
`
`Applicant’s Goods are likely to be marketed to the same or similar consumers as are
`
`Opposer’s Goods and Services.
`
`20.
`
`Applicant’s SHARESQUARE Mark so resembles Opposer’s SQUARE Marks as to
`
`be likely, when used in connection with Applicant’s Services, to cause confusion, to cause
`
`mistake, and to deceive the public with consequent injury to Opposer, the trade, and the public.
`
`21.
`
`Opposer will be damaged if the Application is allowed to proceed to registration
`
`because consumers and prospective consumers are likely to be confused, misled, or deceived into
`
`believing that Applicant or Applicant’s Goods offered under the SHARESQUARE Mark are
`
`connected with, sponsored by, or approved by Opposer.
`
`22.
`
`Any defect, objection or fault with Applicant’s Goods marketed or sold in
`
`connection with the SHARESQUARE Mark will reflect upon and seriously injure the valuable
`
`reputation and goodwill that Opposer has established for Opposer’s SQUARE Marks.
`
`23.
`
`Registration of the SHARESQUARE Mark will also damage Opposer because such
`
`registration would grant a statutory, exclusive right to Applicant in violation of the prior and
`
`superior rights of Opposer, and would unduly narrow the scope of protection afforded to Opposer’s
`
`SQUARE Marks, in contravention of Section 2(d) of the Lanham Act, 15 U.S.C. §1052(d).
`
`134909443.2
`
`

`

`24.
`
`As Opposer’s rights in the SQUARE Marks are senior to Applicant’s rights in the
`
`SHARESQUARE Mark, the Application should be refused.
`
`B.
`
`LIKELIHOOD OF DILUTION
`
`25.
`
`Opposer realleges and incorporates by reference the preceding allegations of this
`
`Opposition.
`
`26.
`
`As a result of Opposer’s exclusive and extensive advertising of its SQUARE Marks,
`
`as well as the tremendous commercial success of Opposer’s Goods and Services, Opposer’s
`
`SQUARE Marks have become famous.
`
`27.
`
`Opposer’s SQUARE Marks achieved fame well prior to the filing date of the
`
`Application, and any other priority date upon which Applicant may rely.
`
`28.
`
`The registration of the SHARESQUARE Mark in connection with Applicant’s
`
`Goods is likely to cause dilution of the distinctive quality of Opposer’s famous SQUARE Marks
`
`by blurring under Section 43(c) of the Lanham Act, 15 U.S.C. § ll25(c).
`
`C.
`
`FALSE ASSOCIATION
`
`29.
`
`Opposer realleges and incorporates by reference the preceding allegations of this
`
`Opposition.
`
`30.
`
`As a result of the similarity of the SHARESQUARE Mark and the SQUARE Marks
`
`and the overlapping and highly related services covered in the Application, consumers may falsely
`
`believe that Applicant’s Goods are provided by, sponsored by, or otherwise affiliated or connected
`
`with Opposer.
`
`31.
`
`Registration of the SHARESQUARE Mark in connection with Applicant’s Goods
`
`creates a false association with Opposer and will be a source of damage to Opposer under Section
`
`2(a) ofthe Lanharn Act, 15 U.S.C. § lO52(a).
`
`1349094432
`
`VI.
`
`REQUEST FOR RELIEF
`
`- 6 _
`
`

`

`WHEREFORE, Opposer believes that it will be damaged by registration of the
`
`SHARESQUARE Mark as set forth in Application Serial No. 86/961,440 and respectfully
`
`requests that this Opposition be sustained and that registration to Applicant be refused. The
`
`filing fee in the amount of $400 is being transmitted electronically with this submission.
`
`DATED: March 27, 2017
`
`Respectfully submitted,
`
`PERKINS COIE LLP
`
`
` By:
`
`GRACE HAN STANTON
`
`ALICIA MATUSHESKI
`
`1201 3RD AVE., STE 4900
`SEATTLE, WASHINGTON 98101-3099
`
`ATTORNEYS FOR OPPOSER
`
`SQUARE, INC.
`
`1349094432
`
`