Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA937760
`11/28/2018
`
`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
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`DIRECTV, LLC
`
`11/28/2018
`
`2260 East Imperial Highway
`El Segundo, CA 90245
`UNITED STATES
`
`TIFFANY FERRIS
`HAYNES AND BOONE LLP
`2323 VICTORY AVENUE SUITE 700
`DALLAS, TX 75219
`UNITED STATES
`tiffany.ferris@haynesboone.com, ipdocketing@haynesboone.com, tami-
`ka.adams@haynesboone.com
`214-651-5152
`
`Applicant Information
`
`Application No
`
`87746083
`
`Publication date
`
`07/31/2018
`
`Opposition Filing
`Date
`
`Applicant
`
`11/28/2018
`
`Opposition Peri-
`od Ends
`
`11/28/2018
`
`Shenzhen Kaya Fashional Technology Co.,Ltd
`9B HAITANGJU, YUSHENGHUATING
`WANAN ROAD, SHAJING, BAOAN
`ShenZhenCity Guangdong, 518104
`CHINA
`
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 2017/12/06 First Use In Commerce: 2017/12/06
`All goods and services in the class are opposed, namely: 3D spectacles; Audio speakers; Battery
`chargers; Computer keyboards; Computer mouse; Data cables; Digital audio and video recorders
`and players; Digital video recorders; Headphones; Mounting devices for cameras and monitors;
`Movie projectors; Set-top boxes; Smart watches; Tabletcomputer; Televisions; Video projectors
`
`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.
`
`2503432
`
`Registration Date
`
`11/06/2001
`
`Application Date
`
`02/15/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`DIRECTV
`
`NONE
`
`Class 009. First use: First Use: 1998/10/01 First Use In Commerce: 1998/10/01
`Telecommunications products, namely, receivers, receiver modules, decoder
`boxes, satellite dishes, remote controllers, video display devices, namely, televi-
`sion sets and video monitors, antennas, computer controlling hardware and soft-
`ware for use in the aforementioned goods, installation kits primarily comprising
`cables, phone cords, cable ties, cable clips, ground wire, phone adapters, and
`partsfor the aforesaid goods, and accessories, namely, telephone jacks, chim-
`ney mounts, surge protectors, all for use in thedirect-to-home satellite broad-
`casting industry
`Class 016. First use: First Use: 1994/06/17 First Use In Commerce: 1994/06/17
`Cardboard floor display units for merchandising products, instruction manuals
`for use in connection with direct-to-homesatellite equipment and services,
`magazines, brochures, books, and printed programming guides in the field of
`direct-to-home satellite services, writing paper,binders, posters, note pads,
`pens, pencils, address books, appointment books, book marks, stationery
`boxes, calendars, gift cards, decals, desk sets, diaries, stationery-type portfolios,
`bumper stickers
`Class 025. First use: First Use: 1994/06/17 First Use In Commerce: 1994/06/17
`Clothing, namely, shirts, golf shirts, jackets, wind-resistant jackets, sweatshirts,
`t-shirts, caps, and hats
`
`U.S. Registration
`No.
`
`2418301
`
`Registration Date
`
`01/02/2001
`
`Word Mark
`
`Design Mark
`
`DIRECTV PLUS
`
`Application Date
`
`08/25/1998
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 1999/09/00 First Use In Commerce: 1999/09/00
`ELECTRONIC EQUIPMENT FOR RECEIVING DIRECT BROADCAST SATEL-
`LITE SIGNALS, NAMELY, RECEIVERS, SATELLITE DISHES, ANTENNAS
`AND REMOTE CONTROLLERS THEREFORE SOLD TOGETHER AS A UNIT
`
`U.S. Registration
`No.
`
`2698197
`
`Application Date
`
`12/04/1998
`
`Registration Date
`
`03/18/2003
`
`Foreign Priority
`
`NONE
`
`

`

`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`Date
`
`DIRECTV
`
`NONE
`
`Class 009. First use: First Use: 1994/06/17 First Use In Commerce: 1994/06/17
`TELECOMMUNICATIONS PRODUCTS, NAMELY, RECEIVERS, RECEIVER
`MODULE, MODULATORS, TRANSMITTERS, MULTIPLEXERS, DECODER
`BOXES,[ DATA PROCESSORS, INTEGRATED CIRCUITS,] SET-TOP BOXES
`PRIMARILY COMPRISED OF A RECEIVER AND CIRCUITRY, COMPUTER
`CONTROLLING HARDWARE AND SOFTWARE FOR USE IN THE AFORE-
`MENTIONED GOODS, SATELLITE DISHES, REMOTE CONTROLLERS,
`VIDEO DISPLAY DEVICES, NAMELY, TELEVISION SETS, [ VIDEO PRO-
`JECTORS, AND VIDEO MONITORS, ] ANTENNAS, INSTALLATION KITS
`PRIMARILY COMPRISING CABLES, [PHONE CORDS,] CABLE TIES, CABLE
`CLIPS, GROUND WIRE, [PHONE ADAPTERS,] AND PARTS FOR THE
`AFORESAID GOODS, VIDEO DISTRIBUTION EQUIPMENT, NAMELY, [ AMP-
`LIFIERS, PRE-AMPLIFIERS, BLOCK SIGNAL CONVERTERS, ] ROUTERS, [
`ELECTRICAL SWITCHES, ] ENCODERS, DECODERS, AND ACCESSORIES,
`NAMELY, TELEPHONE JACKS, CHIMNEY MOUNTS, SURGE PROTECTORS,
`CABLES, CONNECTORSAND FITTINGS ALL FOR USE IN THE DIRECT-
`TO-HOME SATELLITE BROADCASTING INDUSTRY
`Class 025. First use: First Use: 1994/06/17 First Use In Commerce: 1994/06/17
`CLOTHING, NAMELY, SHIRTS, GOLF SHIRTS, JACKETS, WIND-RESISTANT
`JACKETS, SWEATSHIRTS, T-SHIRTS, CAPS, HATS, SWEATERS, SWEAT
`PANTS[, SLEEPWEAR, SHORTS, RAINWEAR][, WRIST BANDS ]
`Class 038. First use: First Use: 1994/06/17 First Use In Commerce: 1994/06/17
`SATELLITE TELEVISION BROADCASTING SERVICES, BROADCASTING
`PROGRAMS VIA A GLOBAL COMPUTER NETWORK, PROVIDING AND
`PROCESSING INTERACTIVE ACCESS TO INFORMATION VIAAN ELEC-
`TRONIC COMMUNICATION NETWORK, [ ELECTRONIC MAIL SERVICES, ]
`ELECTRONIC TRANSMISSION OF MESSAGES AND DATA, PAY-PER-VIEW
`TRANSMISSION SERVICES, DELIVERY OF MESSAGES BY ELECTRONIC
`TRANSMISSION; [VIDEO BROADCASTING AND MESSAGING SERVICES, ]
`VIDEO-ON-DEMAND TRANSMISSION SERVICES, PROVIDING MULTIPLE-
`USER ACCESS TO AGLOBAL COMPUTER INFORMATION NETWORK
`Class 041. First use: First Use: 1994/06/17 First Use In Commerce: 1994/06/17
`TELEVISION PROGRAMMING [AND PRODUCTION SERVICES,] PROGRAM-
`MING ON A GLOBAL COMPUTER NETWORK, DISTRIBUTION OF TELEVI-
`SION PROGRAMS FOR OTHERS, PROVIDING ON-LINE INTERACTIVE
`COMPUTER DATABASES OF INFORMATION IN THE FIELDS OF ENTER-
`TAINMENT NEWS, FINANCIAL NEWS, CURRENT EVENTS, SPORTS, AND
`PROVIDING ON-LINE INTERACTIVE COMPUTER DATABASES OF INFORM-
`ATION ON SATELLITE TELEVISION PROGRAMMING LISTS AND SCHED-
`ULES OF OTHERS
`
`U.S. Registration
`No.
`
`2939061
`
`Registration Date
`
`04/12/2005
`
`Word Mark
`
`DIRECTV
`
`Application Date
`
`11/21/2001
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a curve in a rectangle with rounded corners and the text
`"DIRECTV" below the rectangle.
`
`Class 009. First use: First Use: 1998/10/01 First Use In Commerce: 1998/10/01
`Telecommunications products, namely, receivers, receiver modules, decoder
`boxes, satellite dishes; remote controllers; video display devices, namely, televi-
`sion sets and video monitors, antennas, computer controlling hardware and soft-
`ware for use in the aforementioned goods, installation kits primarily comprising
`cables, phone cords, cable ties, cable clips, ground wire, phone adapters, and
`partsfor the aforesaid goods, and accessories, namely, telephone jacks, chim-
`ney mounts, surge protectors, all for use in thedirect-to-home satellite broad-
`casting industry, decorative refrigerator magnets, calculators
`
`U.S. Registration
`No.
`
`4318660
`
`Registration Date
`
`04/09/2013
`
`Word Mark
`
`Design Mark
`
`DIRECTV
`
`Application Date
`
`03/27/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of cyclone design adjacent and to the left of "DIRECTV" in
`overall horizontal orientation.
`
`Class 009. First use: First Use: 2010/10/07 First Use In Commerce: 2010/10/07
`Telecommunications products, namely, set-top boxes primarily comprised of a
`receiver and circuitry; Telecommunications products, namely, digital video re-
`corders; Computer software for use with telecommunications products, namely,
`set-top boxes primarily comprised of a receiver and circuitry; Computer software
`for use with telecommunications products, namely, digital video recorders; Com-
`puter software for use in accessing and viewing interactive television program
`guides via global computer networks, wireless networks and electronic commu-
`nication networks; Computer software for the remote programming of audio and
`video devices via global computer networks, wireless networks and electronic
`communication networks; Computer software for the reproduction, processing
`and streaming of audio, video and multimedia content; remote controls; Tele-
`
`

`

`communications products, namely,computer hardware and software for receiv-
`ing, converting, transmitting, streaming, and reviewing audio, video, graphics,
`images, data and information recorded on digital video recorders; Download-
`ablecomputer software for operating telecommunications products; Download-
`able software in the nature of a mobile application for operating telecommunica-
`tions products
`
`U.S. Registration
`No.
`
`4614770
`
`Registration Date
`
`09/30/2014
`
`Word Mark
`
`Design Mark
`
`DIRECTV GENIE
`
`Application Date
`
`05/15/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2012/11/30 First Use In Commerce: 2012/11/30
`Set-top boxes; digital video recorders and players; computer operating software-
`for use with set-top boxes and digital video recorders and players
`
`U.S. Registration
`No.
`
`2639279
`
`Registration Date
`
`10/22/2002
`
`Word Mark
`
`Design Mark
`
`DIRECTV
`
`Application Date
`
`11/21/2001
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`NONE
`
`

`

`Goods/Services
`
`Class 038. First use: First Use: 1994/06/17 First Use In Commerce: 1994/06/17
`Satellite television transmission and broadcasting services; pay-per-view televi-
`sion transmission services
`
`U.S. Registration
`No.
`
`2618102
`
`Registration Date
`
`09/10/2002
`
`Word Mark
`
`Design Mark
`
`DIRECTV
`
`Application Date
`
`11/21/2001
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 1994/06/17 First Use In Commerce: 1994/06/17
`Television programming and production services; distribution of television pro-
`grams for others
`
`U.S. Registration
`No.
`
`2740757
`
`Registration Date
`
`07/22/2003
`
`Word Mark
`
`DIRECTV
`
`Application Date
`
`11/28/2001
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 1994/06/17 First Use In Commerce: 1994/06/17
`Television programming [ and productionservices ], programming on a global
`computer network, distribution of television programs for others, providing on-
`line interactive computer databases of information in the fields of entertainment
`news, current events, sports, and providing on-line interactive computer data-
`bases of information on satellite televisionprogramming lists and schedules of
`others
`
`U.S. Registration
`No.
`
`4226186
`
`Registration Date
`
`10/16/2012
`
`Word Mark
`
`Design Mark
`
`DIRECTV CINEMA
`
`Application Date
`
`07/08/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 038. First use: First Use: 2012/05/31 First Use In Commerce: 2012/05/31
`Streaming of audio and video content via the Internet, other computer net-
`works,wireless networks and electronic communication networks
`
`U.S. Registration
`No.
`
`4250511
`
`Registration Date
`
`11/27/2012
`
`Application Date
`
`07/08/2010
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Word Mark
`
`Design Mark
`
`DIRECTV CINEMA
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the design of a segment of film strip containing the
`words"DIRECTV" and "CINEMA".
`
`Class 038. First use: First Use: 2012/05/31 First Use In Commerce: 2012/05/31
`Streaming of audio and video content via the Internet, other computer net-
`works,wireless networks and electronic communication networks
`
`U.S. Registration
`No.
`
`4021477
`
`Registration Date
`
`09/06/2011
`
`Word Mark
`
`Design Mark
`
`DIRECTV CINEMA
`
`Application Date
`
`07/08/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 038. First use: First Use: 2009/05/20 First Use In Commerce: 2009/05/20
`Satellite television broadcasting; Satellite transmission services; Broadcasting
`programs via a global computer network; Video-on-demand transmission ser-
`vices;Pay-per-view television transmission services; Electronic transmission of
`data via global computer networks, wireless networks and electronic communic-
`ation networks
`
`U.S. Registration
`No.
`
`4021476
`
`Registration Date
`
`09/06/2011
`
`Word Mark
`
`DIRECTV CINEMA
`
`Application Date
`
`07/08/2010
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the design of a segment of film strip containing the
`words"DIRECTV" and "CINEMA".
`
`Class 038. First use: First Use: 2009/05/20 First Use In Commerce: 2009/05/20
`Satellite television broadcasting; satellite transmission services; broadcasting
`programs via a global computer network; video-on-demand transmission ser-
`vices;pay-per-view television transmission services; electronic transmission of
`data via global computer networks, wireless networks and electronic communic-
`ation networks
`
`U.S. Registration
`No.
`
`4198618
`
`Registration Date
`
`08/28/2012
`
`Word Mark
`
`Design Mark
`
`DIRECTV
`
`Application Date
`
`03/27/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of cyclone design adjacent and to the left of the word "DIR-
`ECTV" in an overall horizontal configuration.
`
`Class 038. First use: First Use: 2010/10/07 First Use In Commerce: 2010/10/07
`Satellite television broadcasting; Satellite transmission services; Broadcasting
`programs via a global computer network; Video-on-demand transmission ser-
`vices;Pay-per-view television transmission services; Streaming of audio and
`video content on the internet; Electronic transmission of data via global com-
`puter networks, wireless networks and electronic communication networks;
`Providing access toglobal computer networks, wireless networks and telecom-
`munication networks for transmission or receipt of data; Satellite television
`broadcasting and transmission services featuring interactive television viewing
`functions that permit users to view and share audio files, video files, photo-
`graphs, images and other multimedia content between and among computers,
`set-top-boxes, and other audiovisualdevices, all of the aforementioned services
`excluding the transmission of gamesover satellite, broadcast and global com-
`puter networks, cellular-based entertainment services, and gaming services
`
`

`

`Class 041. First use: First Use: 2010/10/07 First Use In Commerce: 2010/10/07
`Distribution of television programs forothers; television programming; program-
`ming on a global computer network; entertainment services, namely, providing
`ongoing television programs featuring music, musical entertainment, information
`about music and entertainment in the field of music, all via satellite; providing
`on-line interactive computer databases inthe field of entertainment information
`featuring television programming lists, program schedules and program- related
`information; providing on-line interactive computer databases featuring enter-
`tainment information and schedules about television programming, movies, and
`other digital images, audio, video and other multimedia materials; Entertainment
`services, namely, providing on-line computer games; providing computer games
`via satellite transmission; providing a computer game for use network-wide by
`network users; Entertainment services, namely, providing ongoing television
`programs featuring general news and local news that also include interactive
`functions that permit viewers to view multiple images and sources of television
`programming simultaneously; Entertainment services, namely, providing ongo-
`ing television programs featuring general news and local news aswell as a vari-
`ety of information of interest to specific geographic areas that also include inter-
`active components thatlet viewers choose what to watch at various times, to ob-
`tain information about popular programs in their local viewing area and to more
`narrowly define the types of related information they receive and programs they
`view; Entertainment services, namely, ongoing television programs in the field of
`geographical, categorical, real-time programming ratings thatalso include inter-
`active components that let viewers more narrowly define the types of related in-
`formation they receiveand programs they view. Entertainment services, namely,
`providing ongoing television programs featuring general information relating to
`satellite television service, satellite television equipment and hardware, satellite
`television programming and audio, visual and other multimedia content that also
`include interactive components that allow users to define their viewing prefer-
`ence; On-line, nondownloadable newsletters featuring generalinformation relat-
`ing to entertainment, namely, television, movies and other multimedia entertain-
`ment-related content; On-line, nondownloadable newsletters featuring general
`information relating to satellite telecommunication services and satellite telecom-
`munications hardware; and entertainment services, namely, providing ongoing
`television programs in a wide variety of fields that also feature interactive televi-
`sion viewing functions that permit viewers to view and use computer applications
`simultaneously while viewing television programs
`
`U.S. Registration
`No.
`
`2802621
`
`Registration Date
`
`01/06/2004
`
`Application Date
`
`04/01/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`DIRECTV AIRBORNE
`
`NONE
`
`Class 038. First use: First Use: 1999/04/01 First Use In Commerce: 1999/04/01
`SATELLITE TELEVISION TRANSMISSION AND BROADCASTING SERVICES
`Class 041. First use: First Use: 1999/04/01 First Use In Commerce: 1999/04/01
`TELEVISION PROGRAMMING AND PRODUCTION SERVICES; DISTRIBU-
`TION OF TELEVISION PROGRAMS FOR OTHERS
`
`U.S. Registration
`No.
`
`4095285
`
`Registration Date
`
`02/07/2012
`
`Application Date
`
`07/08/2010
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Word Mark
`
`Design Mark
`
`DIRECTV CINEMA
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2009/05/20 First Use In Commerce: 2009/05/20
`Distribution of television programs forothers; television programming; program-
`ming on a global computer network; pay-per-view television programming;
`video-on-demand television programming; providing on-line interactive computer
`databasesfeaturing television program lists, schedules and related information
`about thecontent of said programs; providing on-line interactive computer data-
`bases featuring information about television shows, movies and other digital im-
`ages, audio, video and multimedia content, all in the field of entertainment
`
`U.S. Registration
`No.
`
`4095284
`
`Registration Date
`
`02/07/2012
`
`Word Mark
`
`Design Mark
`
`DIRECTV CINEMA
`
`Application Date
`
`07/08/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the design of a segment of film strip containing the
`words"DIRECTV" and "CINEMA".
`
`Class 041. First use: First Use: 2009/05/20 First Use In Commerce: 2009/05/20
`Distribution of television programs forothers; television programming; program-
`ming on a global computer network; pay-per-view television programming;
`
`

`

`Attachments
`
`video-on-demand television programming; providing on-line interactive computer
`databasesfeaturing television program lists, schedules and related information
`about thecontent of said programs; providing on-line interactive computer data-
`bases featuring information about television shows, movies and other digital im-
`ages, audio, video and multimedia content, all in the field of entertainment
`
`75652711#TMSN.png( bytes )
`76340810#TMSN.png( bytes )
`85581007#TMSN.png( bytes )
`85982626#TMSN.png( bytes )
`76341049#TMSN.png( bytes )
`76341175#TMSN.png( bytes )
`76342844#TMSN.png( bytes )
`85080833#TMSN.png( bytes )
`85080827#TMSN.png( bytes )
`85080836#TMSN.png( bytes )
`85080829#TMSN.png( bytes )
`85580882#TMSN.png( bytes )
`85080838#TMSN.png( bytes )
`85080831#TMSN.png( bytes )
`Notice of Opposition - LIVETV DIRECT 4823-6548-7745_1.pdf(246562 bytes )
`Exhibit A - TESS Printouts of DIRECTV Marks.pdf(362806 bytes )
`Exhibit B - TESS Printouts of Opposed Mark.pdf(185093 bytes )
`
`Signature
`
`/Tiffany Ferris/
`
`Name
`
`Date
`
`TIFFANY FERRIS
`
`11/28/2018
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`DIRECTV, LLC,
`
`
`
`
`
`
`Opposer
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`
`
`Shenzhen Kaya Fashional Technology
`Co., Ltd.
`
`
`
`
`Applicant.
`
`
`
`
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`Mark: LIVETV.DIRECT
`Serial No.: 87/746,083
`
`
`
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`Opposer DIRECTV, LLC, (“Opposer”) believes that it will be damaged by registration of the
`
`above-captioned trademark application (the “Opposed Application”) filed by Shenzhen Kaya Fashional
`
`Technology Co., Ltd (“Applicant”), and hereby opposes the same.
`
`As grounds for opposition, Opposer alleges as follows:
`
`1. Opposer DIRECTV, LLC is a California limited liability company having an address at 2260 East
`
`Imperial Highway, El Segundo, California 90245.
`
`2. Upon information and belief, Applicant Shenzhen Kaya Fashional Technology Co., Ltd is a
`
`limited company organized under the laws of China, having an address at 9B Haitangju, Yushenghuating
`
`Wanan Road, Shajing, Baoan ShenZhen Guangdong China 518104.
`
`3. Opposer DIRECTV, LLC is one of the world’s leading providers of digital television
`
`entertainment services and has been providing services under its well-known DIRECTV trademark since
`
`at least as early as 1994. For more than twenty-three years prior to the filing date or alleged first use date
`
`of the Opposed Application, Opposer has been known as a leading satellite television service provider,
`
`offering digital television service to millions of customers worldwide. Additionally, Opposer offers,
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`distributes, and installs satellite television dish receivers, digital video recording devices, set-top boxes,
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`and other products and services related to the delivery of digital television services.
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`4. Opposer is the owner of multiple federal trademark registrations for DIRECTV and similar
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`marks, including the following:
`
`Mark and Filing
`Information
`DIRECTV
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`U.S. Reg. No.: 2,503,432
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`Filing Date: February 15,
`1999
`Registration
`November 6, 2001
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`Date:
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`DIRECTV PLUS
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`U.S. Reg. No.: 2,418,301
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`Filing Date: August 25,
`1998
`Registration Date: January
`2, 2001
`DIRECTV
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`U.S. Reg. No.: 2,698,197
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`Filing Date: December 4,
`1998
`Registration Date: March
`18, 2003
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`International Classes / Goods and Services
`
`Class 9: Telecommunications products, namely, receivers, receiver
`modules, decoder boxes, satellite dishes, remote controllers, video display
`devices, namely, television sets and video monitors, antennas, computer
`controlling hardware and software for use in the aforementioned goods,
`installation kits primarily comprising cables, phone cords, cable ties, cable
`clips, ground wire, phone adapters, and parts for the aforesaid goods, and
`accessories, namely, telephone jacks, chimney mounts, surge protectors,
`all for use in the direct-to-home satellite broadcasting industry.
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`Class 16: Cardboard floor display units for merchandising products,
`instruction manuals for use in connection with direct-to-home satellite
`equipment and services, magazines, brochures, books, and printed
`programming guides in the field of direct-to-home satellite services,
`writing paper, binders, posters, note pads, pens, pencils, address books,
`appointment books, book marks, stationery boxes, calendars, gift cards,
`decals, desk sets, diaries, stationery-type portfolios, bumper stickers.
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`Class 25: Clothing, namely, shirts, golf shirts, jackets, wind-resistant
`jackets, sweatshirts, t-shirts, caps, and hats.
`Class 9: Electronic equipment for receiving direct broadcast satellite
`signals, namely, receivers, satellite dishes, antennas and remote controllers
`therefore sold together as a unit.
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`Class 9: Telecommunications products, namely, receivers, receiver
`module, modulators, transmitters, multiplexers, decoder boxes, [data
`processors, integrated circuits,] set-top boxes primarily comprised of a
`receiver and circuitry, computer controlling hardware and software for use
`in the aforementioned goods, satellite dishes, remote controllers, video
`display devices, namely, television sets, [ video projectors, and video
`monitors, ] antennas, installation kits primarily comprising cables, [phone
`cords,] cable ties, cable clips, ground wire, [phone adapters,] and parts for
`the aforesaid goods, video distribution equipment, namely, [ amplifiers,
`pre-amplifiers, block signal converters, ] routers, [ electrical switches, ]
`encoders, decoders, and accessories, namely, telephone jacks, chimney
`mounts, surge protectors, cables, connectors and fittings all for use in the
`direct-to-home satellite broadcasting industry.
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`Class 25: Clothing, namely, shirts, golf shirts, jackets, wind-resistant
`jackets, sweatshirts, t-shirts, caps, hats, sweaters, sweat pants, [sleepwear,
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`Mark and Filing
`Information
`
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`U.S. Reg. No.: 2,939,061
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`Filing Date: November 21,
`2001
`Registration Date: April 12,
`2005
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`U.S. Reg. No.: 4,318,660
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`Filing Date: March 27,
`2012
`Registration Date: April 9,
`2013
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`International Classes / Goods and Services
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`shorts, rainwear] [, wrist bands].
`
`Class 38: Satellite television broadcasting services, broadcasting programs
`via a global computer network, providing and processing interactive access
`to information via an electronic communication network, [electronic mail
`services,] electronic transmission of messages and data, pay-per-view
`transmission services, delivery of messages by electronic transmission;
`[video broadcasting and messaging services,
`] video-on-demand
`transmission services, providing multiple-user access to a global computer
`information network.
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`services,]
`[and production
`Class 41: Television programming
`programming on a global computer network, distribution of television
`programs for others, providing on-line interactive computer databases of
`information in the fields of entertainment news, financial news, current
`events, sports, and providing on-line interactive computer databases of
`information on satellite television programming lists and schedules of
`others.
`Class 9: Telecommunications products, namely, receivers, receiver
`modules, decoder boxes, satellite dishes; remote controllers; video display
`devices, namely, television sets and video monitors, antennas, computer
`controlling hardware and software for use in the aforementioned goods,
`installation kits primarily comprising cables, phone cords, cable ties, cable
`clips, ground wire, phone adapters, and parts for the aforesaid goods, and
`accessories, namely, telephone jacks, chimney mounts, surge protectors,
`all for use in the direct-to-home satellite broadcasting industry, decorative
`refrigerator magnets, calculators.
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`Class 9: Telecommunications products, namely, set-top boxes primarily
`comprised of a receiver and circuitry; Telecommunications products,
`namely, digital video recorders; Computer software for use with
`telecommunications products, namely, set-top boxes primarily comprised
`of a
`receiver and circuitry; Computer software
`for use with
`telecommunications products, namely, digital video recorders; Computer
`software for use in accessing and viewing interactive television program
`guides via global computer networks, wireless networks and electronic
`communication networks; Computer software for the remote programming
`of audio and video devices via global computer networks, wireless
`networks and electronic communication networks; Computer software for
`the reproduction, processing and streaming of audio, video and multimedia
`content; remote controls; Telecommunications products, namely, computer
`hardware and software for receiving, converting, transmitting, streaming,
`and reviewing audio, video, graphics, images, data and information
`recorded on digital video recorders; Downloadable computer software for
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`Mark and Filing
`Information
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`DIRECTV GENIE
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`U.S. Reg. No.: 4,614,770
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`Filing Date: May 15, 2012
`Registration
`Date:
`September 30, 2014
`
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`U.S. Reg. No.: 2,639,279
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`Filing Date: November 21,
`2001
`Registration Date: October
`22, 2002
`
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`U.S. Reg. No.: 2,618,102
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`Filing Date: November 21,
`2001
`Registration
`September 10, 2002
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`Date:
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`U.S. Reg. No.: 2,740,757
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`Filing Date: November 28,
`2001
`Registration Date: July 22,
`2003
`DIRECTV CINEMA
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`
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`International Classes / Goods and Services
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`operating telecommunications products; Downloadable software in the
`nature of a mobile application for operating telecommunications products.
`Class 9: Set-top boxes; digital video recorders and players; computer
`operating software for use with set-top boxes and digital video recorders
`and players.
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`Class 38: Satellite television transmission and broadcasting services; pay-
`per-view television transmission services.
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`Class 41: Television programming and production services; distribution of
`television programs for others.
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`Class 41: Television programming [ and production services ],
`programming on a global computer network, distribution of television
`programs for others, providing on-line interactive computer databases of
`information in the fields of entertainment news, current events, sports, and
`providing on-line interactive computer databases of information on
`satellite television programming lists and schedules of others.
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`Class 38: Streaming of audio and video content via the Internet, other
`computer networks, wireless networks and electronic communication
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`Mark and Filing
`Information
`U.S. Reg. No.: 4,226,186
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`Filing Date: July 8, 2010
`Registration Date: October
`16, 2012
`
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`U.S. Reg. No.: 4,250,511
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`Filing Date: July 8, 2010
`Registration
`Date:
`November 27, 2012
`DIRECTV CINEMA
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`U.S. Reg. No.: 4,021,477
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`Filing Date: July 8, 2010
`Registration
`Date:
`September 6, 2011
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`U.S. Reg. No.: 4,021,476
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`Filing Date: July 8, 2010
`Registration
`Date:
`September 6, 2011
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`U.S. Reg. No.: 4,198,618
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`Filing Date: March 27,
`2012
`Registration Date: August
`28, 2012
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`International Classes / Goods and Services
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`networks.
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`Class 38: Streaming of audio and video content via the Internet, other
`computer networks, wireless networks and electronic communication
`networks.
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`Class 38: Satellite television broadcasting; Satellite transmission services;
`Broadcasting programs via a global computer network; Video-on-demand
`transmission services; Pay-per-view television transmission services;
`Electronic transmission of data via global computer networks, wireless
`networks and electronic communication networks.
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`Class 38: Satellite television broadcasting; satellite transmission services;
`broadcasting programs via a global computer network; video-on-demand
`transmission services; pay-per-view television transmission services;
`electronic transmission of data via global computer networks, wireless
`networks and electronic communication networks.
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`Class 38: Satellite television broadcasting; Satellite transmission services;
`Broadcasting programs via a global computer network; Video-on-demand
`transmission services; Pay-per-view television transmission services;
`Streaming of audio and video content on the internet; Electronic
`transmission of data via global computer networks, wireless networks and
`electronic communication networks; Providing access to global computer
`networks, wireless networks and
`telecommunication networks for
`transmission or receipt of data; Satellite television broadcasting and
`transmission services featuring interactive television viewing functions
`that permit users to view and share audio files, video files, photographs,
`images and other multimedia content between and among computers, set-
`top-boxes, and other audiovisual devices, all of the aforementioned
`services excluding the transmission of games over satellite, broadcast and
`global computer networks, cellular-based entertainment services, and
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`Mark and Filing
`Information
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`DIRECTV AIRBORNE
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`U