Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA855725
`11/01/2017
`
`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
`
`Facebook, Inc.
`
`11/01/2017
`
`1601 Willow Road
`Menlo Park, CA 94025
`UNITED STATES
`
`Tywanda Harris Lord
`Kilpatrick Townsend & Stockton LLP
`1100 Peachtree Street, Suite 2800
`Atlanta, GA 30309
`UNITED STATES
`Email: tlord@ktslaw.com, rdthomas@ktslaw.com, jfindley@ktslaw.com, kteil-
`haber@ktslaw.com, tmadmin@ktslaw.com
`
`Applicant Information
`
`Application No
`
`86856415
`
`Publication date
`
`07/04/2017
`
`Opposition Filing
`Date
`
`Applicant
`
`11/01/2017
`
`Opposition Peri-
`od Ends
`
`11/01/2017
`
`ELEVITY, INC.
`4207 S DALE MABRY HWY, UNIT #8201
`Tampa, FL 33611
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 2016/04/27 First Use In Commerce: 2016/04/27
`All goods and services in the class are opposed, namely: Computer software providing a social net-
`work to users for uploading, downloading, accessing, posting, displaying, editing, tagging, linking,
`and sharing digital images via computer and communication networks
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`Trademark Act Sections 2 and 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`3881770
`
`Registration Date
`
`11/23/2010
`
`Application Date
`
`06/29/2006
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Word Mark
`
`Design Mark
`
`FACEBOOK
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2004/02/04 First Use In Commerce: 2004/04/00
`Advertising and information distribution services, namely, providing classifiedad-
`vertising space via the global computer network; promoting the goods and ser-
`vices of others over the Internet; providing on-line computer databases and on-
`line searchable databases in the field of classifieds
`Class 038. First use: First Use: 2004/02/04 First Use In Commerce: 2004/02/04
`Providing online chat rooms and electronic bulletin boards for registered
`usersfor transmission of messages concerningcollegiate life, general interest,
`classifieds, virtual community, social networking, photo sharing, and transmis-
`sion of photographic images; provision of on-line forums for the transmission of
`photographic images; provision of on-line forums for communications on topics
`of general interest
`Class 041. First use: First Use: 2004/02/04 First Use In Commerce: 2004/02/04
`Providing on-line computer databases and on-line searchable databases in the
`field of collegiate life concerning college athletics, concerts, entertainment
`events, art, performing arts, music, dance and academics; providing on-line
`computer databases and on-line searchable databases featuring collegiate stu-
`dent groupsconcerning subjects in the fields of academics and entertainment
`Class 042. First use: First Use: 2004/02/04 First Use In Commerce: 2004/02/04
`Computer services, namely, hosting online web facilities for others for organizing
`and conducting online meetings, gatherings, and interactive discussions; and-
`computer services in the nature of customized web pages featuring user-defined
`information, personal profiles and information; computer services, namely, creat-
`ing an on-line community for registered users to participate in discussion, get
`feedback from their peers, form virtual communities, and engage in social net-
`working; peer-to-browser photo sharing services, namely, providing a website
`featuring technology enabling users to upload,view and download digital photos
`Class 045. First use: First Use: 2004/02/04 First Use In Commerce: 2004/02/04
`Internet based introduction and social networking services; providing on-line
`computer databases and on-line searchabledatabases in the field of social net-
`working
`
`U.S. Registration
`No.
`
`3122052
`
`Registration Date
`
`07/25/2006
`
`Word Mark
`
`FACEBOOK
`
`Application Date
`
`02/24/2005
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2004/11/16 First Use In Commerce: 2004/11/16
`[ providing an online directory information service featuring information regard-
`ing, and in the nature of, collegiate life, classifieds, virtual community and social
`networking ]
`Class 038. First use: First Use: 2004/11/16 First Use In Commerce: 2004/11/16
`providing online chat rooms for registered users for transmission of messages
`concerning collegiate life, classifieds, virtual community and social networking
`
`U.S. Registration
`No.
`
`3041791
`
`Registration Date
`
`01/10/2006
`
`Word Mark
`
`Design Mark
`
`FACEBOOK
`
`Application Date
`
`02/24/2005
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2004/02/04 First Use In Commerce: 2004/02/04
`[ providing an online directory information service featuring information regard-
`ing, and in the nature of, collegiate life, classifieds, virtual community and social
`networking ]
`Class 038. First use: First Use: 2004/02/04 First Use In Commerce: 2004/02/04
`providing online chat rooms for registered users for transmission of messages
`
`

`

`concerning collegiate life, classifieds, virtual community and social networking
`
`U.S. Registration
`No.
`
`3734637
`
`Registration Date
`
`01/05/2010
`
`Word Mark
`
`Design Mark
`
`FACEBOOK
`
`Application Date
`
`05/24/2007
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2006/08/00 First Use In Commerce: 2006/08/00
`Software to enable uploading, posting, showing, displaying, tagging, blogging,
`sharing or otherwise providing electronic media or information over the Internet-
`or other communications network
`Class 038. First use: First Use: 2004/02/00 First Use In Commerce: 2004/02/00
`Audio and video broadcasting services over the Internet or other communica-
`tionsnetwork, namely, uploading, posting, showing, displaying, tagging and elec-
`tronically transmitting information, audio, and video clips; providing on-line chat
`rooms, listservers, and on-line forums for transmission of messages among
`computer users concerning user-defined content;providing on-line chat rooms
`and electronic bulletin boards for transmission ofmessages among users in the
`field of general interest
`Class 041. First use: First Use: 2004/02/00 First Use In Commerce: 2004/02/00
`On-line journals, namely, blogs featuring user-defined content
`Class 042. First use: First Use: 2004/02/00 First Use In Commerce: 2004/02/00
`Application service provider (ASP) featuring software to enable uploading, post-
`ing, showing, displaying, tagging, blogging, sharing or otherwise providing elec-
`tronic media or information over the Internet or other communications network
`
`U.S. Registration
`No.
`
`3814888
`
`Registration Date
`
`07/06/2010
`
`Word Mark
`
`FACEBOOK
`
`Application Date
`
`11/07/2006
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 042. First use: First Use: 2007/06/00 First Use In Commerce: 2007/06/00
`Providing temporary use of non-downloadable software applications for video
`sharing
`
`U.S. Registration
`No.
`
`3801147
`
`Registration Date
`
`06/08/2010
`
`Word Mark
`
`Design Mark
`
`FACEBOOK
`
`Application Date
`
`11/07/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2006/08/00 First Use In Commerce: 2006/08/00
`Computer software development tools forsocial networking, building social net-
`working applications and for allowing data retrieval, upload, access and man-
`agement; application programming interface (API) for third-party software and
`online services for social networking, buildingsocial networking applications and
`for allowing data retrieval, upload, access and management
`Class 038. First use: First Use: 2004/02/00 First Use In Commerce: 2004/02/00
`providing access to computer databases;electronic transmission of instant mes-
`sages and data
`Class 041. First use: First Use: 2004/02/00 First Use In Commerce: 2004/02/00
`Electronic publishing services, namely,publishing of online works of others fea-
`turing user-created text, audio, video,and graphics; providing on-line journals
`and web logs featuring user-created content
`Class 042. First use: First Use: 2004/02/00 First Use In Commerce: 2004/02/00
`Providing temporary use of non-downloadable software applications for classi-
`fieds, virtual community, social networking, photo sharing, and transmission of
`photographic images
`
`

`

`U.S. Registration
`No.
`
`4392662
`
`Registration Date
`
`08/27/2013
`
`Word Mark
`
`Design Mark
`
`FACEBOOK
`
`Application Date
`
`10/07/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 045. First use: First Use: 2004/02/04 First Use In Commerce: 2004/02/04
`Social introduction, networking and dating services; providing social services
`and information in the field of personaldevelopment, namely, self-improvement,
`self-fulfillment, charitable, philanthropic, volunteer, public and community ser-
`vices, and humanitarian activities; Identification verification services, namely,
`providing authentication of personal identification information
`
`U.S. Registration
`No.
`
`4491419
`
`Registration Date
`
`03/04/2014
`
`Word Mark
`
`Design Mark
`
`FACEBOOK
`
`Application Date
`
`10/07/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2004/02/04 First Use In Commerce: 2004/02/04
`compiling of information into computer databases; marketing, advertising and
`promotion services; market research services, namely, research in the fields of
`collegiate life, virtual community and social networking; advertising services,
`namely, promoting the goods and services of others via computer and commu-
`nication networks; operating on-line marketplacesfor sellers of goods and/or ser-
`vices; online retail store services featuring digital media, namely, pre-recorded
`digital sound, video and data recordings featuring music, text, video, games,
`comedy, drama, action, adventure or animation; charitable services, namely,
`promoting public awareness about charitable, philanthropic, volunteer, public
`and community service and humanitarian activities
`
`

`

`U.S. Registration
`No.
`
`4471161
`
`Registration Date
`
`01/21/2014
`
`Word Mark
`
`Design Mark
`
`FACEBOOK
`
`Application Date
`
`10/07/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2004/02/00 First Use In Commerce: 2004/02/00
`Providing computer, electronic and online databases in the field of cultural com-
`mentary, social entertainment events, art, performing arts, music, dance, and
`education; on-line journals, namely, blogs in the fields of cultural commentary,
`social entertainment events, art, performing arts, music, dance, education, polit-
`ics, culture, economics, and science; electronic publishing services, namely,
`publication of text and graphic works of others via computer and communica-
`tions networks in the fields of cultural commentary, social entertainment events,
`art, performing arts, music, dance, education, politics, culture, economics, and
`science; publishing of electronic publications; entertainment services, namely,
`providing temporary use of interactive, multiplayer and single player games for
`games played via computer or communication networks; providing information
`about online non-downloadable computer games and video games via computer
`or communication networks; contest and incentive award programs designed to
`recognize, reward and encourage individuals and groups which engage in self-
`improvement, self-fulfillment, charitable, philanthropic, volunteer, public and
`community service and humanitarian activities and sharing of creative work
`product
`
`U.S. Registration
`No.
`
`4339123
`
`Registration Date
`
`05/21/2013
`
`Word Mark
`
`Design Mark
`
`FACEBOOK
`
`Application Date
`
`10/07/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`
`NONE
`
`

`

`Mark
`
`Goods/Services
`
`Class 042. First use: First Use: 2004/02/00 First Use In Commerce: 2004/02/00
`computer services, namely, creating on-line virtual communities for registered
`users to organize groups and events, participate in discussions, and engage in
`social, business and community networking; computer services, namely, hosting
`on-line web facilities for others for organizing and conducting meetings, events
`and interactive discussions via communication networks; application service pro-
`vider (ASP) services, namely, hosting computer software applications of others;
`application service provider (ASP) featuring software to enable or facilitate the
`uploading, downloading, streaming, posting, displaying, blogging, linking, shar-
`ing of audio and video content, photographic images, text, graphics and data;
`providing an online network service that enables users to transfer personal iden-
`titydata to and share personal identity data with and among multiple websites;
`providing a web site featuring technology that enables online users to create
`personal profiles featuring social networking information and to transfer and
`share such information among multiple websites; computer services, namely,
`creating indexes of information, sites and other resources available on computer
`networks; providing temporary use of non-downloadable software applications
`for enabling, facilitating, or enhancing social networking, creating a virtual com-
`munity, and transmission of audio, video, photographicimages, text, graphics
`and data; computer services in the nature of customized web pages featuring
`user-defined or specified information, personal profiles, audio and video content,
`photographic images, text, graphics and data; peer-to-browser photo sharing
`services, namely, providing a website featuring technology enabling users to up-
`load, view, and download digital photos; providing a web site featuring techno-
`logy that enables users to upload and share video, photos, text,graphics and
`data; creating and maintaining blogs for others; providing a web hosting platform
`for use of non-downloadable software for enabling, facilitating or enhancing in-
`teractive, multiplayer and single player games for third parties
`
`U.S. Registration
`No.
`
`3935447
`
`Registration Date
`
`03/22/2011
`
`Word Mark
`
`Design Mark
`
`FACEBOOK
`
`Application Date
`
`12/17/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the word "FACEBOOK" in white letters with a blue back-
`ground.
`
`Class 009. First use: First Use: 2006/08/00 First Use In Commerce: 2006/08/00
`Computer software development tools; Computer software for use as an applic-
`ation programming interface (API); Application programming interface (API) for
`computer software which facilitates online services for social networking, build-
`ing social networking applications and for allowing data retrieval, upload, down-
`load,access and management; Computer software to enable uploading, down-
`loading, accessing, posting, displaying, tagging, blogging, streaming, linking,
`sharing or otherwise providing electronic media or information via computer and
`communicationnetworks
`
`U.S. Registration
`No.
`
`4129126
`
`Application Date
`
`12/17/2009
`
`Registration Date
`
`04/17/2012
`
`Foreign Priority
`
`NONE
`
`

`

`Word Mark
`
`Design Mark
`
`FACEBOOK
`
`Date
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the word "FACEBOOK" in white letters with a blue back-
`ground.
`
`Class 035. First use: First Use: 2004/02/04 First Use In Commerce: 2004/02/04
`Marketing, advertising and promotion services; market research and information
`services; advertising services, namely, promoting the goods and services of oth-
`ers via computer and communication networks; operating on-line marketplaces
`for sellers of goods and/or services; online retail store services featuring digital
`media, namely, pre-recorded digital sound, video and data recordings featuring
`music, text, video, games, comedy, drama,action, adventure or animation; char-
`itable services, namely, promoting public awareness about charitable, philan-
`thropic, volunteer, public and community service and humanitarian activities
`Class 038. First use: First Use: 2009/04/00 First Use In Commerce: 2009/04/00
`Delivery of digital music by electronictransmission
`Class 041. First use: First Use: 2007/09/00 First Use In Commerce: 2007/09/00
`Contest and incentive award programs designed to recognize, reward and en-
`courage individuals and groups which engage inself-improvement, self-ful-
`fillment, charitable, philanthropic, volunteer, public and community service and
`humanitarianactivities and sharing of creative workproduct
`
`U.S. Registration
`No.
`
`4099518
`
`Registration Date
`
`02/14/2012
`
`Word Mark
`
`Design Mark
`
`FACEBOOK
`
`Application Date
`
`12/17/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the word "FACEBOOK" in white letters with a blue back-
`ground.
`
`Class 038. First use: First Use: 2005/08/00 First Use In Commerce: 2005/08/00
`Providing access to computer, electronic and online databases; telecommunica-
`tions services, namely, electronic transmission of data, messages and informa-
`tion; providing online forums for communication on topics of general interest;
`providing online communications links which transfer web site users to other loc-
`al and global web pages; providing access to web sites for others hosted on
`computer servers accessible via a global computer network; providing access to
`third party web sites by enabling users to log in through a universal username
`
`

`

`and password via a global computer network and other communication net-
`works; providing onlinechat rooms and electronic bulletin boards for transmis-
`sion of messages among users in the field of general interest; audio, text and
`video broadcasting services over the Internet or other communications networks
`featuring the uploaded, posted and tagged audio, text and video content of oth-
`ers; audio, text and video broadcasting services over the Internet orother com-
`munications networks, namely, electronically transmitting audio clips,text and
`video clips of others
`Class 045. First use: First Use: 2008/12/00 First Use In Commerce: 2008/12/00
`Identification verification services, namely, providing authentication of personal
`identification information
`
`U.S. Registration
`No.
`
`4102822
`
`Registration Date
`
`02/21/2012
`
`Word Mark
`
`Design Mark
`
`FACEBOOK
`
`Application Date
`
`12/17/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the word "FACEBOOK" in white letters with a blue back-
`ground.
`
`Class 038. First use: First Use: 2005/08/00 First Use In Commerce: 2005/08/00
`Peer-to-peer photo sharing services, namely, electronic transmission of digital-
`photo files among internet users
`Class 041. First use: First Use: 2005/08/00 First Use In Commerce: 2005/08/00
`Providing computer, electronic and online databases in the field of entertainment
`and in the fields of secondary, collegiate, social and community interest groups;
`on-line journals, namely, blogs in the fields of entertainment, education, social,
`political, cultural, economic, scientific and general interest; electronic publishing
`services, namely, publication of text and graphic works of others via computer
`and communications networksin the fields of entertainment, education, social,
`political, cultural, economic, scientific and general interest; publishing of elec-
`tronic publications; entertainment services, namely, providing temporary use of
`interactive, multiplayer and single player games for games played via computer
`or communication networks; providing information about online computer games
`and video games via computer or communication networks; arranging and con-
`ducting competitions for video gamersand computer game players
`Class 042. First use: First Use: 2005/08/00 First Use In Commerce: 2005/08/00
`Peer-to-browser photo sharing services,namely, providing a website featuring
`technology enabling users to upload, view, and download digital photos;
`providinga web site featuring technology that enables users to upload and share
`video, photos, text, graphics and data; creatingand maintaining blogs for others;
`providing a web hosting platform for use of non-downloadable software in con-
`nection with interactive, multiplayer and single player games for third parties
`
`U.S. Registration
`No.
`
`4102823
`
`Application Date
`
`12/17/2009
`
`Registration Date
`
`02/21/2012
`
`Foreign Priority
`
`NONE
`
`

`

`Word Mark
`
`Design Mark
`
`FACEBOOK
`
`Date
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the word "FACEBOOK" in white letters with a blue back-
`ground.
`
`Class 035. First use: First Use: 2005/08/00 First Use In Commerce: 2005/08/00
`Compiling of information into computer databases
`Class 042. First use: First Use: 2005/08/00 First Use In Commerce: 2005/08/00
`Computer services, namely, creating on-line virtual communities for registered
`users to organize groups and events, participate in discussions, and engage in
`social, business and community networking; computer services, namely, hosting
`electronic facilities for others for organizing and conducting meetings, events
`andinteractive discussions via communication networks; application service pro-
`vider (ASP) services, namely, hosting computer software applications of others;
`application service provider (ASP) featuringsoftware to enable or facilitate the
`uploading, downloading, streaming, posting, displaying, blogging, linking,
`sharingor otherwise providing electronic mediaor information over communica-
`tion networks; providing an online network servicethat enables users to transfer
`personalidentity data to and share personal identity data with and among mul-
`tiple websites; providing a web site featuring technology that enables online
`users to create personal profiles featuring social networking information and to
`transfer andshare such information among multiple websites; computer services,
`namely, creating indexes of information, sites and other resources available on
`computer networks; providing temporary use of non-downloadable software ap-
`plications for social networking, creating a virtual community, and transmission
`of audio, video, photographic images, text, graphics and data; computer ser-
`vices in the nature ofcustomized web pages featuring user-defined or specified
`information, personal profiles, audio, video, photographic images, text, graphics
`and data
`
`U.S. Registration
`No.
`
`4102824
`
`Registration Date
`
`02/21/2012
`
`Word Mark
`
`Design Mark
`
`FACEBOOK
`
`Application Date
`
`12/17/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`The mark consists of the word "FACEBOOK" in white letters with a blue back-
`ground.
`
`Goods/Services
`
`Class 038. First use: First Use: 2005/08/00 First Use In Commerce: 2005/08/00
`
`

`

`Providing access to computer databases in the fields of social networking, social
`introduction and dating
`Class 045. First use: First Use: 2005/08/00 First Use In Commerce: 2005/08/00
`Social introduction, networking and dating services; providing social services
`and information in the field of personaldevelopment, namely, self-improvement,
`self-fulfillment, charitable, philanthropic, volunteer, public and community ser-
`vices, and humanitarian activities
`
`Attachments
`
`78920322#TMSN.png( bytes )
`78574730#TMSN.png( bytes )
`78574726#TMSN.png( bytes )
`77189479#TMSN.png( bytes )
`77039123#TMSN.png( bytes )
`77979375#TMSN.png( bytes )
`85147955#TMSN.png( bytes )
`85147898#TMSN.png( bytes )
`85147937#TMSN.png( bytes )
`85147950#TMSN.png( bytes )
`77896312#TMSN.png( bytes )
`77896315#TMSN.png( bytes )
`77896318#TMSN.png( bytes )
`77896322#TMSN.png( bytes )
`77896323#TMSN.png( bytes )
`77896325#TMSN.png( bytes )
`2017.11.01 Notice of Opposition (FLIPBOOK).pdf(3682537 bytes )
`
`Signature
`
`/Jennifer R. Findley/
`
`Name
`
`Date
`
`Jennifer R. Findley
`
`11/01/2017
`
`

`

`
`
`
`
`
`
`FACEBOOK, INC.,
`
`
`
`v.
`
`ELEVITY, INC. d/b/a FLIPBOOK,
`
`
`
`Opposer,
`
`Applicant.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`
`
`
`
` Opposition No.________
`
`
`
`
`
`
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the matter of Application Serial No. 86/856,415
`For the Trademark FLIPBOOK
`Published in the Official Gazette on July 4, 2017
`
`
`NOTICE OF OPPOSITION
`
`Opposer Facebook, Inc. (“Facebook” or “Opposer”), a Delaware corporation having its
`
`principal place of business at 1601 Willow Rd., Menlo Park, California 94025, believes that it will
`
`be damaged by the issuance of a registration for the mark FLIPBOOK (“Applicant’s Mark”) as
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`identified in Application Serial No. 86/856,415 (the “Subject Application”) filed by Elevity, Inc.
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`d/b/a FLIPBOOK (“Applicant”), with a mailing address of 4207 S. Dale Mabry Hwy, Unit #8201,
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`Tampa, Florida 33611. Facebook filed and was granted an extension of time to oppose the Subject
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`Application. Facebook now timely opposes the Subject Application.
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`As grounds for opposition, Facebook alleges that:
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`1.
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`Facebook has validly and continuously used the FACEBOOK mark and marks
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`incorporating the element FACEBOOK in connection with a variety of goods and services,
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`including, but not limited to, online networking services, since at least as early as February, 2004.
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`2.
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`Since launching its online networking service under the FACEBOOK mark,
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`Facebook has continued to use and expand its use of the FACEBOOK mark for a variety of goods
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`and services including, without limitation:
`
`
`
`1
`
`

`

`
`
`
`
`
`
`
`
` Software to enable uploading, posting, showing, displaying, tagging, blogging,
`sharing, or otherwise providing electronic media or information over the Internet
`or other communications network;
`
` Software applications for enabling, facilitating, or enhancing social networking,
`creating a virtual community, and transmission of audio, video, photographic
`images, text, graphics and data;
`
` computer services in the nature of customized web pages featuring user-defined or
`specified information, personal profiles, audio and video content, photographic
`images, text, graphics and data;
`
` Peer-to-browser photo sharing services, namely, providing a website featuring
`technology enabling users to upload, view, and download digital photos;
`
` Providing a web site featuring technology that enables users to upload and share
`video, photos, text, graphics and data;
`
`Internet based introduction and social networking services; providing on-line
`computer databases and on-line searchable databases in the field of social
`networking;
`
`
`
`
`
` Online chat functions for transmission of messages, photographs, videos, and other
`user-defined content;
`
` Peer-to-peer photo sharing services, namely, electronic transmission of digital
`photo files among internet users;
`
` Providing access to computer databases in the fields of social networking, social
`introduction and dating;
`
` Creating an on-line community for registered users to participate in discussion, get
`feedback from their peers, form virtual communities, and engage in social
`networking;
`
` Marketing, advertising and promotion services; market research and information
`services; advertising services, namely, promoting the goods and services of others
`via computer and communication networks; operating on-line marketplaces for
`sellers of goods and/or services;
`
` Audio and video broadcasting services over the Internet or other communications
`network, namely, uploading, posting, showing, displaying,
`tagging and
`electronically transmitting information, audio, and video clips; providing on-line
`chat rooms, listservers, and on-line forums for transmission of messages among
`computer users concerning user-defined content;
`
`
`2
`
`

`

`interactive,
`temporary use of
` Entertainment services, namely, providing
`multiplayer and single player games for games played via computer or
`communication networks;
`
` Providing online chat rooms and electronic bulletin boards for registered users for
`transmission of messages concerning collegiate life, general interest, classifieds,
`virtual community, social networking, photo sharing, and transmission of
`photographic images;
`
` Provision of on-line forums for the transmission of photographic images;
`provisions of on-line forums for communications on topics of general interest; and
`
` 
`
` Providing computer, electronic and online databases in the field of entertainment
`and in the fields of secondary, collegiate, social, and community interest groups;
`electronic publishing services, namely, publication of text and graphic works of
`others via computer and communications networks in the fields of entertainment,
`education, social, political, cultural, economic, scientific, and general interest;
`publishing of electronic publications.
`
`3.
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`In addition to the common law rights Facebook owns in the FACEBOOK mark, it
`
`
`
`
`
`
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`also owns the following federal registrations for marks comprised of, or incorporating, the
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`FACEBOOK mark (collectively the “FACEBOOK Marks”):
`
`Mark
`
`Registration
`
`FACEBOOK
`FACEBOOK
`FACEBOOK
`FACEBOOK
`FACEBOOK
`FACEBOOK
`FACEBOOK
`FACEBOOK
`FACEBOOK
`FACEBOOK
`
`3,881,770
`3,122,052
`3,041,791
`3,734,637
`3,814,888
`3,801,147
`4,392,662
`4,491,419
`4,471,161
`4,339,123
`
`3,935,447
`
`4,129,126
`
`
`
`3
`
`

`

`
`
`
`
`4,099,518
`
`4,102,822
`
`4,102,823
`
`4,102,824
`
`4.
`
`True and correct copies of registrations for the above FACEBOOK Marks are
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`attached hereto as Exhibit A, and are incorporated by reference as though fully set forth herein.
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`5.
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`The FACEBOOK Marks are highly distinctive with regard to social media and
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`online networking goods and services, among others. Moreover, through Facebook’s widespread
`
`use of the FACEBOOK Marks, extensive and continuous media coverage, the high degree of
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`consumer recognition of the FACEBOOK Marks, Facebook’s enormous and loyal user base, its
`
`numerous trademark registrations and pending applications, and other factors, the FACEBOOK
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`Marks have become famous within the meaning of Section 43(c) of the United States Trademark
`
`Act, 15 U.S.C. § 1125(c).
`
`6.
`
`On December 21, 2015, Applicant filed the Subject Application on the basis of
`
`Applicant’s intended use of the mark under 15 U.S.C. § 1051(b), and on June 23, 2016, Applicant
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`amended the Subject Application on the basis of Applicant’s alleged use of the mark in commerce
`
`pursuant to 15 U.S.C. § 1051(a).
`
`7.
`
`On July 4, 2017, the United States Patent and Trademark Office published the
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`Subject Application in the Official Gazette in connection with the following goods in International
`
`
`
`4
`
`

`

`
`
`Class 9: “Computer software providing a social network to users for uploading, downloading,
`
`accessing, posting, displaying, editing, tagging, linking, and sharing digital images via computer
`
`and communication networks.”
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`FIRST GROUND FOR OPPOSITION:
`LIKELIHOOD OF CONFUSION
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`Facebook incorporates by reference Paragraphs 1 through 7, inclusive, as if fully
`
`
`8.
`
`set forth herein.
`
`9.
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`Facebook began using the FACEBOOK Marks at least as early as February, 2004,
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`and filed applications resulting in federal registrations for the FACEBOOK Marks well prior to
`
`when Applicant filed the Subject Application and, on information and belief, well prior to any
`
`actual use of Applicant’s Mark, if any such use has been made.
`
`10.
`
`11.
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`The FACEBOOK Marks are strong and famous.
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`Applicant’s Mark is highly similar in sight, sound, and commercial impression to
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`the FACEBOOK Marks.
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`12.
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`Applicant’s goods in International Class 9 are similar or highly related to
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`Facebook’s goods and services.
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`13.
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`On information and belief, Applicant’s goods will be offered through the same
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`channels of trade as Facebook’s goods and services.
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`14.
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`Facebook is informed and believes, and based thereon alleges, that Applicant filed
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`the Subject Application with knowledge of, and the intent to call to mind, create a likelihood of
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`confusion with regard to, and/or trade off the fame of, Facebook and the FACEBOOK Marks.
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`15.
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`Applicant’s Mark suggests an affiliation or connection between Applicant and
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`Facebook where none exists.
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`
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`5
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`

`

`
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`16.
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`Facebook is not affiliated or connected with Applicant or Applicant’s goods, nor
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`has Facebook endorsed or sponsored Applicant or Applicant’s goods.
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`17.
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`Facebook has no control over the nature and quality of the goods that are, and/or
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`will be, offered under Applicant’s Mark, and the value of Facebook’s FACEBOOK Marks would
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`be jeopardized by the registration of Applicant’s Mark. Because of the li