Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA883478
`03/15/2018
`
`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
`
`Entity
`
`Address
`
`Attorney informa-
`tion
`
`Space Exploration Technologies Corp.
`
`Corporation
`
`Citizenship
`
`Delaware
`
`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
`Phone: 6508435960
`
`Applicant Information
`
`Application No
`
`87368820
`
`Publication date
`
`02/13/2018
`
`Opposition Filing
`Date
`
`Applicant
`
`03/15/2018
`
`Opposition Peri-
`od Ends
`
`03/15/2018
`
`Detroit Aircraft Corporation
`11499 Conner Rd Level - 2
`Detroit, MI 48213
`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: Unmanned, electrically-powered, vertical-
`takeoff-and-landing (eVTOL) aircraft that can carry modular payloads for localand regional taxi opera-
`tions
`
`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.
`
`3066872
`
`Registration Date
`
`03/07/2006
`
`Word Mark
`
`Design Mark
`
`SPACEX
`
`Description of
`
`NONE
`
`Application Date
`
`09/16/2002
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Mark
`
`Goods/Services
`
`Class 012. First use: First Use: 2005/05/27 First Use In Commerce: 2005/05/27
`AEROSPACE VEHICLES, NAMELY, LAUNCH VEHICLES AND ROCKETS
`Class 039. First use: First Use: 2003/09/25 First Use In Commerce: 2003/09/25
`LAUNCH AND PLACEMENT IN SPACE OF SATELLITES [AND SPACE-
`CRAFT] OF OTHERS
`
`U.S. Registration
`No.
`
`4267520
`
`Registration Date
`
`01/01/2013
`
`Word Mark
`
`Design Mark
`
`SPACEX
`
`Application Date
`
`04/19/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`U.S. Application
`No.
`
`NONE
`
`Class 039. First use: First Use: 2004/00/00 First Use In Commerce: 2004/00/00
`Launch services, namely, launching the payloads of others into space
`
`87576981
`
`Application Date
`
`08/21/2017
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`SPACEX
`
`Foreign Priority
`Date
`
`02/24/2017
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`Satellites for scientific and commercial purposes; equipment for receiving, pro-
`cessing, and transmitting voice, video, data and information via telecommunica-
`tions and wireless signals, satellites, and computers, namely, receivers, receiv-
`ermodules, modulators, transmitters, multiplexers, decoder boxes, data pro-
`cessors, integrated circuits; computer operating hardware and software for use
`in the aforementioned goods, satellite terminals, and satellite earth stations
`
`

`

`Class 038. First use: First Use: 0 First Use In Commerce: 0
`Satellite communication and transmission services; wireless broadband commu-
`nication services; transmission of data, voice and video via satellite; interactive
`satellite communication services; delivery of messages by electronic transmis-
`sion; providing telecommunications connections to the Internet; telecommunica-
`tions gateway services; providing high-speed wireless internet access; providing
`multiple-user access to the internet, global computer networks, and electronic
`communications networks; providing access to global information networks; tele-
`communications services via satellite; providinga website featuring information
`in the field of satellite communications; providing a website featuring information
`in the field of internet access via satellite; providing access to electronic data-
`bases and online information for use in retrieving satellite data, recordings, and
`measurements; satellite photography services
`Class 042. First use: First Use: 0 First Use In Commerce: 0
`Research and development services in the field of satellite communications;
`consulting services in the field of satellite communications; engineering services
`in the field of satellite communications; scientific and technological ser-
`vices,namely, research, analysis, and monitoring of data captured via remote
`sensors and satellites; remote sensing services,namely, aerial surveying
`through the use of satellites
`
`Attachments
`
`85602036#TMSN.png( bytes )
`87576981#TMSN.png( bytes )
`Notice of Opposition re AIRSPACEX.pdf(228321 bytes )
`
`Signature
`
`Name
`
`Date
`
`/Judd Lauter/
`
`Judd Lauter
`
`03/15/2018
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 87/368,820
`For the Trademark AIRSPACEX
`Published in the Official Gazette on November February 13, 2018
`
`
`
`
`Opposition No.
`
`SPACE EXPLORATION TECHNOLOGIES
`CORP.,
`
`
`Opposer,
`
`v.
`
`
`
`
`DETROIT AIRCRAFT CORPORATION,
`
`
`Applicant.
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`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 AIRSPACEX (the “AIRSPACEX Mark”)
`
`in connection with the goods identified in Application Serial No. 87/368,820 (the “Subject
`
`Application”) filed by Applicant Detroit Aircraft Corporation (“Applicant”), a Michigan
`
`corporation with an address of record at 11499 Conner Rd., Level 2, Detroit, Michigan 48213.
`
`As grounds for its opposition, SpaceX alleges as follows.
`
`SPACEX AND THE SPACEX 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 transportation solutions and communications technologies. Since
`
`that time, SpaceX has been using the trademark SPACEX (the “SPACEX Mark”) in connection
`
`with its offerings.
`
`

`

`2.
`
`In addition to owning common law rights in the SPACEX Mark, SpaceX owns
`
`the following U.S. trademark filings for the mark:
`
` SPACEX (Reg. No. 3,066,872), registered on March 7, 2006, and covering “launch
`and placement in space of satellites of others” in International Class 39;
`
` SPACEX (Reg. No. 4,267,520), registered on January 1, 2013, and covering “Launch
`services, namely, launching the payloads of others into space” in International Class
`39; and
`
` SPACEX (Serial No. 87/576,981), filed on August 21, 2017, with a priority date of
`February 24, 2017, for “Satellites for scientific and commercial purposes; equipment
`for receiving, processing, and transmitting voice, video, data and information via
`telecommunications and wireless signals, satellites, and computers, namely, receivers,
`receiver modules, modulators, transmitters, multiplexers, decoder boxes, data
`processors, integrated circuits; computer operating hardware and software for use in
`the aforementioned goods, satellite terminals, and satellite earth stations” in
`International Class 9, “Satellite communication and transmission services; wireless
`broadband communication services; transmission of data, voice and video via
`satellite; interactive satellite communication services; delivery of messages by
`electronic transmission; providing telecommunications connections to the Internet;
`telecommunications gateway services; providing high-speed wireless internet access;
`providing multiple-user access to the internet, global computer networks, and
`electronic communications networks; providing access to global information
`networks; telecommunications services via satellite; providing a website featuring
`information in the field of satellite communications; providing a website featuring
`information in the field of internet access via satellite; providing access to electronic
`databases and online information for use in retrieving satellite data, recordings, and
`measurements; satellite photography services” in International Class 38, and
`“Research and development services in the field of satellite communications;
`consulting services in the field of satellite communications; engineering services in
`the field of satellite communications; scientific and technological services, namely,
`research, analysis, and monitoring of data captured via remote sensors and satellites;
`remote sensing services, namely, aerial surveying through the use of satellites” in
`International Class 42.
`
`
`3.
`
`SpaceX has expended considerable effort and expense in promoting the SPACEX
`
`Mark and the services offered in connection with the mark, both in the United States and
`
`internationally. The SPACEX Mark has thus come to embody the substantial and valuable
`
`reputation and goodwill that SpaceX has earned in the marketplace for its innovative offerings.
`
`
`
`2
`
`

`

`4.
`
`In addition to its own advertising efforts, SpaceX has been the subject of
`
`countless unsolicited stories in the media, highlighting SpaceX and its industry-defining
`
`innovations.
`
`5.
`
`Because of SpaceX’s continuous use of the SPACEX Mark, its extensive
`
`advertising and promotion of its services, unsolicited media coverage, and the large and devoted
`
`following of fans and customers that SpaceX enjoys, the SPACEX Mark has become well-
`
`known throughout the United States.
`
`APPLICANT AND THE SUBJECT APPLICATION
`
`6.
`
`Through the Subject Application, Applicant seeks to register the AIRSPACEX
`
`Mark
`
`in connection with “unmanned, electrically-powered, vertical-takeoff-and-landing
`
`(eVTOL) aircraft that can carry modular payloads for local and regional taxi operations” in
`
`International Class 12.
`
`7.
`
`Applicant filed the Subject Application on March 13, 2017. On February 13,
`
`2018, the U.S. Patent & Trademark Office published the Subject Application for opposition in
`
`the Official Gazette.
`
`8.
`
`On information and belief, Applicant was aware of the SPACEX Mark at the time
`
`Applicant selected the AIRSPACEX Mark, and at the time the Subject Application was filed.
`
`9.
`
`The commercial impression created by the AIRSPACEX Mark is highly similar
`
`to the commercial impression created by the SPACEX Mark. Applicant has merely added the
`
`descriptive term “AIR-” as a prefix to the SPACEX Mark.
`
`10.
`
`By subsuming the entirety of the SPACEX Mark within the AIRSPACEX Mark,
`
`Applicant falsely suggests to consumers that there is an affiliation between SpaceX and
`
`Applicant or that Applicant’s offerings emanate from SpaceX or are endorsed by SpaceX.
`
`
`
`3
`
`

`

`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 SPACEX Mark that predate Applicant’s
`
`filing of the Subject Application and any actual use of the AIRSPACEX Mark by Applicant.
`
`13.
`
`Applicant’s AIRSPACEX Mark is substantially similar in appearance, sound,
`
`meaning, and overall commercial impression to SpaceX’s SPACEX Mark.
`
`14.
`
`The goods identified in the Subject Application are related to the services offered
`
`by SpaceX under the SPACEX Mark. SpaceX is engaged in a wide range of technological
`
`innovations in transportation, including space travel and terrestrial travel. Applicant is similarly
`
`engaged in developing technology for the purpose of air travel.
`
`15.
`
`On information and belief, the parties target related classes of consumers for their
`
`respective services.
`
`16.
`
`As Applicant’s description of goods contains no restrictions or limitations as to
`
`Applicant’s channels of trade, the Board and SpaceX may assume that the AIRSPACEX Mark
`
`will be used in all accepted channels of trade, including those overlapping with SpaceX.
`
`17.
`
`SpaceX is not affiliated or connected with Applicant or its goods, nor has SpaceX
`
`endorsed or sponsored Applicant or its goods.
`
`18.
`
`SpaceX has no control over the nature and quality of the goods that Applicant
`
`offers or intends to offer under the AIRSPACEX Mark.
`
`19.
`
`Registration of the AIRSPACEX Mark will damage SpaceX because the
`
`AIRSPACEX Mark, when used in connection with the goods identified in the Subject
`
`Application, is likely to cause confusion, mistake, or deception as to the affiliation, connection,
`
`
`
`4
`
`

`

`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 AIRSPACEX
`
`Mark should not be registered under 15 U.S.C. §§ 1052, 1063, and 1125.
`
`
`
`WHEREFORE, SpaceX respectfully requests that the Board sustain this Opposition and
`
`refuse the registration of the Subject Application (Serial No. 87/368,820).
`
`Respectfully submitted,
`
`
`Date: March 15, 2018
`
`
`
`
`
`
`
`
`
`
`
`
` 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 Space Exploration
`Technologies Corp.
`
`5
`
`