throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA873910
`01/29/2018
`
`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
`
`Space Exploration Technologies Corp.
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`01/27/2018
`
`1 Rocket Road
`Hawthorne, CA 90250
`UNITED STATES
`
`Judd Lauter
`Cooley LLP
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20001
`UNITED STATES
`Email: jlauter@cooley.com, bhughes@cooley.com, trademarks@cooley.com
`
`Applicant Information
`
`Application No
`
`87040508
`
`Publication date
`
`11/28/2017
`
`Opposition Filing
`Date
`
`Applicant
`
`01/29/2018
`
`Opposition Peri-
`od Ends
`
`01/27/2018
`
`Hawk House LLC
`c/o Stubbs Alderton & Markiles, LLP
`15260 Ventura Boulevard, 20th Floor
`Sherman Oaks, CA 91403
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 012. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Land vehicles and structural parts therefor;
`Robotic transport vehicles
`
`Applicant Information
`
`Application No
`
`87040522
`
`Publication date
`
`11/28/2017
`
`Opposition Filing
`Date
`
`Applicant
`
`01/29/2018
`
`Opposition Peri-
`od Ends
`
`Hawk House LLC
`c/o Stubbs Alderton & Markiles, LLP
`15260 Ventura Boulevard, 20th Floor
`Sherman Oaks, CA 91403
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`

`

`Class 039. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Transport, delivery and shipping of goods
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`5176643
`
`Registration Date
`
`04/04/2017
`
`Word Mark
`
`Design Mark
`
`HYPERLOOP
`
`Application Date
`
`08/02/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`U.S. Application
`No.
`
`NONE
`
`Class 039. First use: First Use: 2017/01/00 First Use In Commerce: 2017/01/00
`transportation services, namely, high-speed transportation of goods in tubes
`
`86617512
`
`Application Date
`
`05/01/2015
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`HYPERLOOP
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 039. First use: First Use: 0 First Use In Commerce: 0
`Consulting and advisory services in thefield of transportation; Providing a web-
`site featuring information in the fieldof transportation; Providing information in
`the field of transportation
`Class 042. First use: First Use: 0 First Use In Commerce: 0
`Research, development, engineering and design services in the field of high
`
`

`

`speed transportation of passengers and goods in tubes; Testing of high speed
`transportation systems of others to assure theviability of system designs; Con-
`sultingand advisory services in the field of transportation engineering and trans-
`portation technology
`
`Attachments
`
`86027442#TMSN.png( bytes )
`86617512#TMSN.png( bytes )
`SpaceX -- Notice of Opposition re LOOP.pdf(228724 bytes )
`
`Signature
`
`Name
`
`Date
`
`/Judd Lauter/
`
`Judd Lauter
`
`01/29/2018
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 87/040,508
`For the Trademark LOOP
`Published in the Official Gazette on November 28, 2017
`
`In the Matter of Application Serial No. 87/040,522
`For the Trademark LOOP
`Published in the Official Gazette on November 28, 2017
`
`
`
`
`Opposition No.
`
`
`SPACE EXPLORATION TECHNOLOGIES
`CORP.,
`
`
`Opposer,
`
`v.
`
`
`
`
`HAWK HOUSE LLC,
`
`
`
`
`Applicant.
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`CONSOLIDATED NOTICE OF OPPOSITION
`
`Opposer Space Exploration Technologies Corp. (“SpaceX”), a Delaware corporation
`
`having its principal place of business at 1 Rocket Road, Hawthorne, California 90250, believes
`
`that it will be damaged by the registration of the mark LOOP (the “LOOP Mark”) in connection
`
`with the goods and services identified in Application Serial Nos. 87/040,508 and 87/040,522 (the
`
`“Subject Applications”) filed by Applicant Hawk House LLC (“Applicant”), a Delaware limited
`
`liability company with an address of record at c/o Stubbs Alderton & Markiles, LLP, 15260
`
`Ventura Boulevard, 20th Floor, Sherman Oaks, California 91403. As grounds for its opposition,
`
`SpaceX alleges as follows.
`
`SPACEX AND THE HYPERLOOP MARK
`
`1.
`
`Founded
`
`in 2002, SpaceX has revolutionized aerospace and
`
`terrestrial
`
`transportation by designing, manufacturing, and launching advanced rockets and spacecrafts, as
`
`
`
`

`

`
`
`well as developing innovative high-speed terrestrial transportation solutions.
`
`2.
`
`In August 2013, Elon Musk, the founder, CEO and lead designer of SpaceX,
`
`published his vision for a high-speed public transportation system using low-pressure tubes
`
`under the mark HYPERLOOP (the “HYPERLOOP Mark”). That month, SpaceX filed its first
`
`U.S. application to register the mark, and then subsequently began using the mark in commerce
`
`at least as early as 2017.
`
`3.
`
`In addition to owning common law rights in the HYPERLOOP Mark, SpaceX
`
`owns the following U.S. trademark filings:
`
` HYPERLOOP (Reg. No. 5,176,643), registered on April 4, 2017, for “transportation
`services, namely, high-speed transportation of goods in tubes” in International Class 39;
`and
`
`
` HYPERLOOP (Serial No. 86/617,512), filed on May 1, 2015, for “consulting and
`advisory services in the field of transportation; providing a website featuring information
`in the field of transportation; providing information in the field of transportation” in
`International Class 39, and “research, development, engineering and design services in
`the field of high speed transportation of passengers and goods in tubes; testing of high
`speed transportation systems of others to assure the viability of system designs;
`consulting and advisory services in the field of transportation engineering and
`transportation technology” in International Class 42.
`
`4.
`
`SpaceX has devoted substantial efforts and resources in promoting the services
`
`provided under the HYPERLOOP Mark.
`
`5.
`
`As a result, the HYPERLOOP Mark has come to embody the valuable reputation
`
`and goodwill that SpaceX has earned in the marketplace for its innovative high-speed
`
`transportation services and technology.
`
`APPLICANT AND THE SUBJECT APPLICATIONS
`
`6.
`
`Through the Subject Applications, Applicant seeks to register the LOOP Mark in
`
`connection with the following goods and services: “land vehicles and structural parts therefor;
`
`robotic transport vehicles” in International Class 12; and “transport, delivery and shipping of
`
`
`
`2
`
`

`

`
`
`goods” in International Class 39.
`
`7.
`
`Applicant filed the Subject Applications on May 17, 2016. On November 28,
`
`2017, the U.S. Patent & Trademark Office published the Subject Applications for opposition in
`
`the Official Gazette. SpaceX subsequently sought and timely obtained extensions of time to
`
`oppose the Subject Applications.
`
`8.
`
`On information and belief, Applicant was aware of the HYPERLOOP Mark when
`
`Applicant selected the LOOP Mark for use in connection with the goods and services identified
`
`in the Subject Applications.
`
`9.
`
`The commercial impression created by the LOOP Mark is highly similar to the
`
`commercial impression created by the HYPERLOOP Mark.
`
`10.
`
`By subsuming elements of the HYPERLOOP Mark, Applicant falsely suggests to
`
`consumers that there is some sort of affiliation between SpaceX and Applicant or that
`
`Applicant’s offerings emanate from SpaceX or are endorsed by SpaceX.
`
`GROUND FOR OPPOSITION – LIKELIHOOD OF CONFUSION
`
`11.
`
`SpaceX incorporates by reference Paragraphs 1 through 10 above, as if fully set
`
`forth here.
`
`12.
`
`SpaceX owns trademark rights in the HYPERLOOP Mark that predate
`
`Applicant’s filing of the Subject Applications and, on information and belief, any actual use of
`
`the LOOP Mark by Applicant.
`
`13.
`
`Applicant’s LOOP Mark is substantially similar in appearance, sound, meaning,
`
`and overall commercial impression to SpaceX’s HYPERLOOP Mark.
`
`14.
`
`The goods and services identified in the Subject Applications are competitive
`
`with, or at least highly related to, the services offered by SpaceX under the HYPERLOOP Mark.
`
`
`
`3
`
`

`

`
`
`15.
`
`Applicant, on information and belief, intends to offer the goods and services
`
`identified in the Subject Applications through the same channels of trade as the services offered
`
`by SpaceX under the HYPERLOOP Mark.
`
`16.
`
`SpaceX is not affiliated or connected with Applicant or its goods and services, nor
`
`has SpaceX endorsed or sponsored Applicant or its goods and services.
`
`17.
`
`SpaceX has no control over the nature and quality of the goods and services that
`
`Applicant offers or intends to offer under the LOOP Mark.
`
`18.
`
`Registration of the LOOP Mark will damage SpaceX because the LOOP Mark,
`
`when used in connection with the goods and services identified in the Subject Applications, is
`
`likely to cause confusion, mistake, or deception as to the affiliation, connection, or association of
`
`Applicant with SpaceX, or as to the origin, sponsorship, or approval of Applicant’s offerings and
`
`commercial activities by SpaceX. Thus, Applicant’s LOOP Mark should not be registered under
`
`15 U.S.C. §§ 1052, 1063, and 1125.
`
`WHEREFORE, SpaceX respectfully requests that the Board sustain this Consolidated
`
`Opposition and refuse the registration of the Subject Applications (Serial Nos. 87/040,508 and
`
`87/040,522).
`
`
`Date: January 29, 2018
`
`
`
`Respectfully submitted,
`
`
`
`
`
` By: /Brendan J. Hughes/
`Brendan J. Hughes
`Judd D. Lauter
`COOLEY LLP
`1299 Pennsylvania Ave., NW, Ste. 700
`Washington, DC 20004
`Tel: 202-842-7800
`Emails: bhughes@cooley.com
`jlauter@cooley.com
`
`Counsel for Opposer SpaceX
`
`
`
`
`
`4
`
`

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