Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA968280
`04/19/2019
`
`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
`
`eBay Inc.
`
`04/27/2019
`
`2025 Hamilton Avenue
`San Jose, CA 95125
`UNITED STATES
`
`Hope Hamilton
`HOLLAND & HART LLP
`P.O. Box 8749
`__Attn: Trademark Docketing
`Denver, CO 80201
`UNITED STATES
`anmarston@hollandhart.com, hihamilton@hollandhart.com,
`ebay@hollandhart.com, docket@hollandhart.com
`(303) 473-4822
`
`Applicant Information
`
`Application No
`
`88109975
`
`Publication date
`
`02/26/2019
`
`Opposition Filing
`Date
`
`Applicant
`
`04/19/2019
`
`Opposition Peri-
`od Ends
`
`04/27/2019
`
`Barter Bay
`1238 west 48th avenue
`Vancouver, B.C, V6M2N7
`CANADA
`
`Goods/Services Affected by Opposition
`
`Class 035. First Use: 2018/02/07 First Use In Commerce: 2018/02/07
`All goods and services in the class are opposed, namely: Providing a website featuring an online-
`marketplace for exchanging goods and services with other users; Provision of anon-line marketplace
`for buyers and sellers of goods and services
`
`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
`
`2218732
`
`Application Date
`
`11/17/1997
`
`

`

`No.
`
`Registration Date
`
`01/19/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`EBAY
`
`NONE
`
`Class 035. First use: First Use: 1995/09/04 First Use In Commerce: 1995/09/04
`on-line trading services in which seller posts items to be auctioned and bidding
`is done electronically, and providing evaluative feedback and ratings of sellers'
`goods and services, the value and prices of sellers' goods, buyers' and sellers'
`performance, delivery, and overall trading experience in connection therewith
`
`U.S. Registration
`No.
`
`2367932
`
`Registration Date
`
`07/18/2000
`
`Word Mark
`
`Design Mark
`
`EBAY
`
`Application Date
`
`01/13/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 028. First use: First Use: 1998/12/15 First Use In Commerce: 1998/12/15
`Christmas tree ornaments and soft sculpture toys
`
`U.S. Registration
`No.
`
`2501043
`
`Registration Date
`
`10/23/2001
`
`Application Date
`
`01/13/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`EBAY
`
`NONE
`
`Class 014. First use: First Use: 1998/05/13 First Use In Commerce: 1998/05/13
`clocks and watches
`
`U.S. Registration
`No.
`
`2518652
`
`Registration Date
`
`12/11/2001
`
`Word Mark
`
`Design Mark
`
`EBAY
`
`Application Date
`
`01/20/1999
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 1998/05/13 First Use In Commerce: 1998/12/00
`Clothing, namely, t-shirts, caps and sweatshirts
`
`U.S. Registration
`No.
`
`2522630
`
`Registration Date
`
`12/25/2001
`
`Word Mark
`
`Design Mark
`
`EBAY
`
`Application Date
`
`06/06/2001
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 020. First use: First Use: 2000/07/00 First Use In Commerce: 2000/07/00
`plastic key chain tags[ and plastic novelty license plate frames]
`
`U.S. Registration
`No.
`
`2578260
`
`Registration Date
`
`06/11/2002
`
`Word Mark
`
`Design Mark
`
`EBAY
`
`Application Date
`
`06/12/2001
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 018. First use: First Use: 1999/04/00 First Use In Commerce: 1999/04/00
`[ duffel bags,] tote bags, backpacks [ and briefcases ]
`
`U.S. Registration
`
`2578260
`
`Application Date
`
`06/12/2001
`
`

`

`No.
`
`Registration Date
`
`06/11/2002
`
`Word Mark
`
`Design Mark
`
`EBAY
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 018. First use: First Use: 1999/04/00 First Use In Commerce: 1999/04/00
`[ duffel bags,] tote bags, backpacks [ and briefcases ]
`
`U.S. Registration
`No.
`
`2592515
`
`Registration Date
`
`07/09/2002
`
`Word Mark
`
`Design Mark
`
`EBAY
`
`Application Date
`
`04/10/2000
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 038. First use: First Use: 1999/05/15 First Use In Commerce: 1999/05/15
`Telecommunications services, namely, the electronic transmission of data and
`information; paging services
`
`U.S. Registration
`No.
`
`2604374
`
`Registration Date
`
`08/06/2002
`
`Word Mark
`
`EBAY
`
`Application Date
`
`06/12/2001
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 021. First use: First Use: 1999/04/00 First Use In Commerce: 1999/04/00
`mugs, tumblers, and water bottles sold empty; containers for food or bever-
`ages,namely, lunch containers made of vinyl or nylon
`
`U.S. Registration
`No.
`
`2666767
`
`Registration Date
`
`12/24/2002
`
`Application Date
`
`01/20/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`EBAY
`
`NONE
`
`Class 025. First use: First Use: 2000/11/28 First Use In Commerce: 2000/11/28
`Clothing, namely, jackets
`
`U.S. Registration
`No.
`
`2700675
`
`Registration Date
`
`03/25/2003
`
`Application Date
`
`01/13/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`EBAY
`
`NONE
`
`Class 009. First use: First Use: 2001/03/01 First Use In Commerce: 2001/03/01
`Computer e-commerce software to allow users to perform electronic business
`transactions conducted in the form of an auction via a global computer network
`and computer database software featuring information in the field of hobbies,
`collectibles and a wide variety of products
`
`U.S. Registration
`No.
`
`2700836
`
`Registration Date
`
`03/25/2003
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`EBAY
`
`NONE
`
`Application Date
`
`01/13/1999
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Goods/Services
`
`Class 016. First use: First Use: 1999/11/00 First Use In Commerce: 1999/11/00
`PUBLICATIONS, NAMELY, A SERIES OF NONFICTION BOOKS, CONCERN-
`ING HOBBIES, COLLECTIBLES, AUCTIONS, AND A WIDE VARIETY OF
`PRODUCTS RELATING TO ANTIQUES, ART LITERATURE, CULTURE,
`TECHNOLOGY, TRAVEL, SPORTS, ENTERTAINMENT, HOME FURNISH-
`INGS, GARDEN ITEMS, MUSICAL INSTRUMENTS, MOTOR VEHICLES,
`TOYS AND GAMES, FASHION, JEWELRY,ELECTRONICS, PHOTOGRAPHY,
`HOLIDAY RELATED ITEMS, FILM AND VIDEO; PAPER AND STATIONERY
`ITEMS, NAMELY, MEMO PADS, [ PAPERPOSTCARDS, BUMPER STICKERS,
`CALENDARS, DECORATIVE STICKERS AND DECALS ]
`
`U.S. Registration
`No.
`
`2744717
`
`Registration Date
`
`07/29/2003
`
`Word Mark
`
`Design Mark
`
`EBAY
`
`Application Date
`
`04/10/2000
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 038. First use: First Use: 1996/05/00 First Use In Commerce: 1996/05/00
`Providing an online, interactive bulletin board for the transmission of messages
`among computer users concerning hobbies, collectibles, trading, and the sale of
`items via a global computer network
`
`U.S. Registration
`No.
`
`2810863
`
`Registration Date
`
`02/03/2004
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`EBAY
`
`NONE
`
`Application Date
`
`01/13/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Goods/Services
`
`Class 016. First use: First Use: 2002/12/10 First Use In Commerce: 2002/12/10
`
`

`

`PUBLICATIONS, namely, A SERIES OF NONFICTION BOOKS CONCERNING
`HOBBIES, COLLECTIBLES, AUCTIONS, AND A WIDE VARIETY OF
`PRODUCTS RELATING TO ANTIQUES, ART, LITERATURE, CULTURE,
`TECHNOLOGY, TRAVEL, SPORTS, ENTERTAINMENT, HOME FURNISH-
`INGS, GARDEN ITEMS, MUSICAL INSTRUMENTS, MOTOR VEHICLES,
`TOYS AND GAMES, FASHION, JEWELRY,ELECTRONICS, PHOTOGRAPHY,
`HOLIDAY RELATED ITEMS, FILM AND VIDEO; PAPER AND STATIONERY
`ITEMS, NAMELY, [ GREETING CARDS, ]MEMORANDUM BOARDS, MEMO
`PADS, [PAPER POSTCARDS ], STATIONERY, PENS, [ BUMPER STICKERS,
`] CALENDARS[ AND DECORATIVE STICKERS AND DECALS]
`
`U.S. Registration
`No.
`
`2913401
`
`Registration Date
`
`12/21/2004
`
`Word Mark
`
`Design Mark
`
`EBAY
`
`Application Date
`
`03/15/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 1999/01/00 First Use In Commerce: 1999/01/00
`Providing sweepstakes, games of chance and contests via the internet
`
`U.S. Registration
`No.
`
`2926481
`
`Registration Date
`
`02/15/2005
`
`Word Mark
`
`Design Mark
`
`EBAY
`
`Application Date
`
`04/10/2000
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2003/06/26 First Use In Commerce: 2003/06/26
`Entertainment services, namely, providing a radio program in the fields of hob-
`bies, collectibles, trading and auctions
`
`

`

`U.S. Registration
`No.
`
`4408423
`
`Registration Date
`
`09/24/2013
`
`Word Mark
`
`Design Mark
`
`EBAY
`
`Application Date
`
`09/12/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the letters "ebay"all in lower case, each in the color red,
`blue, yellow and green respectively.
`
`Class 035. First use: First Use: 2012/10/10 First Use In Commerce: 2012/10/10
`Online trading services, namely, operating online marketplaces for sellers and
`buyers of goods and services; online trading services in which sellers post
`products or services to be offered for sale,and purchasing or bidding is done via
`the Internet in order to facilitate the sale of goods and services by others via a
`computer network; providing evaluativefeedback and ratings of sellers' goods
`and services, the value and prices of sellers' goods and services, buyers' and
`sellers' performance, delivery, and overall trading experience in connection
`therewith; providing a searchable online advertising guide featuring the goods
`and services of online vendors; providing a searchable online evaluation data-
`base forbuyers and sellers; advertising and advertisement services; business
`services in the nature of intellectual property claims management, namely, pro-
`cessing and administration of claims of intellectualproperty owners against third
`party sellers; identification verification services, namely, confirming authenticity
`of environmentally friendly products, producers and sellers for the purposes of
`helping consumers make informed purchasing decisions
`Class 036. First use: First Use: 2012/10/10 First Use In Commerce: 2012/10/10
`Real estate listing services; classified real estate listings of apartment rentals,
`housing rentals and vacation rentals; providing purchase protection services in
`the field of online trading of goods and services by others via a global computer
`network; charitable fundraising services
`Class 038. First use: First Use: 2012/10/10 First Use In Commerce: 2012/10/10
`Telecommunications services, namely, the electronic transmission of data and
`information; electronic messaging; providing an online, interactive bulletin board-
`for the transmission of messages among computer users concerning hobbies,
`collectibles, trading, and the sale of goods and services via a global computer
`network
`
`U.S. Registration
`No.
`
`4338835
`
`Registration Date
`
`05/21/2013
`
`Application Date
`
`11/13/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`EBAY CLASSIFIEDS GROUP
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the stylized colormark "EBAY" comprised of a red "E", a
`blue "B", a yellow "A", and a green "Y", and the words "CLASSIFIEDS GROUP"
`appearing in gray and partially surrounded by a gray border. All of the foregoing
`appears on a white background.
`
`Class 035. First use: First Use: 2012/11/10 First Use In Commerce: 2012/11/10
`On line advertising on computer communication networks; classified advertising
`services
`
`U.S. Registration
`No.
`
`5008322
`
`Registration Date
`
`07/26/2016
`
`Application Date
`
`09/12/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`EBAY
`
`The mark consists of the letters "ebay"all in lower case, each in the color red,
`blue, yellow and green respectively.
`
`Class 009. First use: First Use: 2012/10/10 First Use In Commerce: 2012/10/10
`Mouse pads; computer e-commerce software to allow users to conduct electron-
`ic business transactions in online marketplaces via a global computer network;
`computer database software featuring information in the field of hobbies, collect-
`ibles and a wide variety of products; computer software and software develop-
`ment tools for use in developing further software and software applications in the
`fieldof e-commerce
`Class 016. First use: First Use: 2012/11/01 First Use In Commerce: 2012/11/01
`Publications, namely, a series of nonfiction books concerning hobbies, collect-
`ibles, auctions, online marketplaces, anda wide variety of products relating to
`antiques, art, literature, culture, technology, travel, sports, entertainment, home
`furnishings, garden items, musical instruments, motor vehicles, toys and games,
`fashion, jewelry, electronics, photography, holiday related items, film and video;
`paper and stationery items, namely, memo pads, paper postcards, stationery,
`pens and pencils
`Class 018. First use: First Use: 2012/11/01 First Use In Commerce: 2012/11/01
`Duffel bags, tote bags, backpacks and briefcases
`Class 020. First use: First Use: 2012/11/01 First Use In Commerce: 2012/11/01
`Plastic key chain tags
`Class 021. First use: First Use: 2012/11/01 First Use In Commerce: 2012/11/01
`Mugs; tumblers; water bottles sold empty
`Class 025. First use: First Use: 2012/11/01 First Use In Commerce: 2012/11/01
`Clothing, namely, t-shirts, sweatshirts, caps, jackets, and visors
`Class 028. First use: First Use: 2014/11/27 First Use In Commerce: 2014/11/27
`bean bag toys
`
`

`

`Class 041. First use: First Use: 2012/10/10 First Use In Commerce: 2012/10/10
`Providing sweepstakes, games of chance and contests via the internet; enter-
`tainment services, namely, providing an ongoing radio program in the fields of
`hobbies, collectibles, trading, buying, selling, and online auctions and market-
`places; educational services, namely, conducting classes in the field of informa-
`tion security and providing corporate education courses in the field of informa-
`tion security; educational services, namely, providing courses, classes and sem-
`inars inthe fields of buying and selling via online marketplaces, as well as estab-
`lishing and operating online marketplace businesses
`Class 042. First use: First Use: 2012/10/10 First Use In Commerce: 2012/10/10
`Design and development of computer software, software applications, and ap-
`plication programming interfaces; providing temporary use of on-line, non-
`downloadable computer software and software development tools for use in de-
`veloping furthersoftware and software applications in the field of e-commerce;
`providing temporary use of online, non-downloadable e-commerce software to
`allow users to conduct electronic business transactions in online marketplaces
`via a global computer network; maintenance and updating of computer software
`for others; providing a website that gives users the ability to create customized
`web pages featuring user-defined information in the field of intellectual property
`rights and intellectual property enforcement policies, in order to assist program
`participants with inquiries and requests regarding use of intellectual property by
`others in an online marketplace
`Class 045. First use: First Use: 2012/10/10 First Use In Commerce: 2012/10/10
`Online social networking services; providing information regarding intellectual-
`property owners and their enforcement policies, all in order to assist program
`participants with inquiries and requestsregarding use of intellectual property by
`others in an online marketplace
`
`Attachments
`
`75621219#TMSN.png( bytes )
`76267752#TMSN.png( bytes )
`76271424#TMSN.png( bytes )
`76022871#TMSN.png( bytes )
`76271411#TMSN.png( bytes )
`76975318#TMSN.png( bytes )
`78384624#TMSN.png( bytes )
`76022893#TMSN.png( bytes )
`85727676#TMSN.png( bytes )
`85778230#TMSN.png( bytes )
`85727672#TMSN.png( bytes )
`Notice of Opposition.pdf(5877524 bytes )
`
`Signature
`
`Name
`
`Date
`
`/Hope Hamilton/
`
`Hope Hamilton
`
`04/19/2019
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Opposer,
`
`Applicant.
`
`Opposition No.:
`
`
`Trademark: BARTER BAY
`
`
`Serial No.: 88109975
`
`
`
`
`EBAY, INC.,
`
`
`
`v.
`
`BARTER BAY,
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`eBay, Inc. (“eBay”), a Delaware corporation with its principal place of business at 2025
`
`Hamilton Avenue, San Jose, California 95125, believes that it will be damaged by the
`
`registration of the mark BARTER BAY shown in U.S. Trademark Application Serial No.
`
`88109975 for “Providing a website featuring an online marketplace for exchanging goods and
`
`services with other users; Provision of an on-line marketplace for buyers and sellers of goods and
`
`services” in International Class 35 (“the Application”), and hereby opposes it.
`
`As grounds for its opposition, eBay alleges that, upon actual knowledge with respect to
`
`itself and its own actions, and upon information and belief as to other matters:
`
`EBAY’S BUSINESS AND MARKS
`
`1.
`
`eBay is one of the world’s leading online marketplaces, serving millions of users
`
`worldwide, and featuring over a billion goods and services offered for sale on its website at
`
`http://www.ebay.com at any given time.
`
`2.
`
`Since its online marketplace was launched in September 1995, eBay has
`
`continuously used the mark EBAY in interstate commerce in the United States and in commerce
`
`between the United States and foreign countries in connection with its goods and services.
`
`

`

`3.
`
`eBay is the owner of numerous U.S. registrations for the mark EBAY on the
`
`Principal Register (in word form and in design form), the earliest of which was issued January
`
`19, 1999:
`
`TRADEMARK
`EBAY
`EBAY
`EBAY
`EBAY
`EBAY
`EBAY
`EBAY
`EBAY
`EBAY
`EBAY
`EBAY
`EBAY
`EBAY
`EBAY
`EBAY
`
`REG. NO.
`2,218,732
`2,367,932
`2,501,043
`2,518,652
`2,522,630
`2,578,260
`2,592,515
`2,604,374
`2,666,767
`2,700,675
`2,700,836
`2,744,717
`2,810,863
`2,913,401
`2,926,481
`
`REG. DATE
`January 19, 1999
`July 18, 2000
`October 23, 2001
`December 11, 2001
`December 25, 2001
`June 11, 2002
`July 9, 2002
`August 6, 2002
`December 24, 2002
`March 25, 2003
`March 25, 2003
`July 29, 2003
`February 3, 2004
`December 21, 2004
`February 15, 2005
`
`CLASS(ES)
`35
`28
`14
`25
`20
`18
`38
`21
`25
`9
`16
`38
`16
`41
`41
`
`
`
`
`
`
`
`4,408,423
`
`September 24, 2013
`
`35, 36, 38
`
`4,338,835
`
`May 21, 2013
`
`5,008,322
`
`July 26, 2016
`
`35
`9, 16, 18, 20, 21,
`25, 28, 41, 42,
`45
`
`4.
`
`The registrations noted above cover various goods and services, including online
`
`
`
`marketplace services in Class 35, which directly overlap with the Application. Each of the
`
`registrations above is also valid and subsisting, and many are now incontestable under the
`
`2
`
`

`

`provisions of 15 U.S.C. § 1065. (See Exhibit A for copies of TSDR records and registrations for
`
`each of these marks).
`
`5.
`
`eBay also has extensive common law rights in its EBAY and EBAY (Stylized)
`
`marks and uses these marks in connection with a wide variety of goods and services throughout
`
`the United States and abroad. All of eBay’s marks that consist of or incorporate the term EBAY,
`
`including its registrations, are hereafter referred to as the “EBAY Marks.”
`
`6.
`
`EBAY is an invented, fanciful mark that is highly distinctive. The term EBAY
`
`has no meaning as applied to marketplace services, or to any of the other goods and services
`
`covered by eBay’s registrations or in connection with which it uses the EBAY Marks.
`
`7.
`
`eBay has expended considerable money and effort in promoting the EBAY Marks
`
`and goods and services offered in connection with these marks, both in the United States and
`
`internationally.
`
`8.
`
`In addition to its own advertising efforts, eBay has been the subject of thousands
`
`of unsolicited stories in television, radio, and print media that highlight eBay’s innovative and
`
`successful efforts in online person-to-person trading and sales.
`
`9.
`
`eBay and its brand have also received numerous awards and recognitions and
`
`been acclaimed by the media worldwide.
`
`10.
`
`As a result of eBay’s widespread use of the EBAY Marks worldwide, extensive
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`Internet, television, and print advertising and promotion, continuous and unsolicited media
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`coverage, the high degree of consumer recognition of the EBAY Marks, the large base of loyal
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`customers that eBay enjoys for its services, numerous trademark registrations, and the absence of
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`any material use of any highly similar mark by others, among other factors, the EBAY Marks are
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`famous within the meaning of Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c).
`
`3
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`

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`DISTINCTIVENESS OF THE TERM “BAY”
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`11.
`
`The dominant component of the famous EBAY Marks is the term BAY, which is
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`arbitrary and highly distinctive of the goods and services covered by eBay’s registrations and in
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`connection with which it uses the EBAY Marks.
`
`12.
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`Following on the fame and success of eBay, many entities have attempted to
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`adopt names and marks that combine the generic or descriptive term for what the particular
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`service or website offers or provides with the distinctive BAY suffix of the EBAY Marks, to
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`create a “generic/descriptive term plus BAY” mark. Examples of such marks, the use of which
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`eBay has successfully stopped, include: MYGEEKBAY.COM (online marketplace),
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`CONSULTANTS BAY (networking services), REALBAY (online real estate listing,
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`marketplace and auction website), ALTERNABAY (site offering goods related to alternative
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`lifestyles), AUTOBAY (site advertising automobiles for sale), BOATBAY (site offering a
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`“nautical search portal”), BRICKBAY (site offering Lego® bricks), CARBAY (site advertising
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`automobiles for sale), EGGBAY (site offering items for egg farmers), COINBAY.BIZ (site
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`offering auctions of collectible coins), EMERGENCYBAY (site offering emergency rescue
`
`goods), EVENTSBAY (online events guide), JEWELRYBAY (site offering diamonds and fine
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`jewelry), MILITARYBAY (site offering military goods), NAZIBAY (site offering Nazi
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`memorabilia), NIXBAY (an online auction and classified website that charged “nix” or nothing
`
`to list items), SELLINGBAY (site listing auctions, classifieds, and want ads), XBAY (site
`
`offering sexually-oriented material), and THE BUYERS BAY (online marketplace), among
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`others.
`
`13.
`
`The United States Patent and Trademark Office (“PTO”) has recognized that the
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`dominant component of the EBAY Marks is the term BAY, refusing third-party registrations on
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`4
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`

`

`the ground that the use of BAY combined with a generic or descriptive term is likely to cause
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`confusion with the EBAY Marks.
`
`14.
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`For example, the PTO refused registration of Application Serial No. 78516920 for
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`the mark FLEABAY for “flea markets” because “applicant’s mark, when used on or in
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`connection with the identified goods or services, so resembles the marks in U.S. Registration
`
`Nos. 2218732, 2420512, 2218732, 2514362, 2555505 and 2913227 (all owned by [eBay]) as to
`
`be likely to cause confusion, to cause mistake, or to deceive.”
`
`15.
`
`Similarly, the PTO refused registration of Application Serial No. 78552094 for
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`the mark BAY BAZAAR for “business management assistance and particularly carrying out
`
`tasks necessary for the smooth conduct of sales by auction” because of a “likelihood of
`
`confusion with the marks in U.S. Registration Nos. 2555505, 2218732, 2410023 and 2420512,”
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`all of which are owned by eBay.
`
`16.
`
`The PTO has also recognized the distinctiveness of the BAY component in
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`refusing registration of the following marks in light of the EBAY Marks: BAYRU & Design
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`(Serial No. 85075519), BAYRU (Serial No. 85/086,853), IBAY (Serial No. 76195016) and
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`TBAYAUCTION (Serial No. 78059732).
`
`17.
`
`Likewise, the Ninth Circuit in Perfumebay.com Inc. v. eBay Inc., 506 F.3d 1165
`
`(9th Cir. 2007), recognized the distinctiveness of the BAY component of the EBAY Marks, held
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`that the term “BAY” is the dominant aspect of the EBAY Marks, and found that use of the mark
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`PERFUMEBAY in connection with an online marketplace specializing in perfume would dilute
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`the EBAY Marks. Id. at 1181 (noting that the mark PERFUMEBAY may cause consumers to
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`“no longer associate the usage of the “Bay” suffix with eBay’s unique services”; consequently
`
`5
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`

`

`“the uniqueness of eBay’s mark is diluted in direct proportion to the extent consumers,
`
`particularly internet users, disassociate the eBay mark with eBay’s services.”).
`
`18.
`
`If others could freely use “generic/descriptive term plus BAY” marks to offer or
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`advertise their goods or services, the term BAY could become generic for “marketplace” or
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`“location providing items for sale” or “location where goods and services are offered online,”
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`diluting the distinctiveness of the famous EBAY Marks to the point that they cease to function as
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`unique and distinctive identifiers of eBay’s goods or services, to eBay’s severe detriment.
`
`APPLICANT AND ITS PENDING APPLICATION
`
`19.
`
`Applicant seeks to register the mark BARTER BAY in connection with
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`marketplace services in International Class 35, namely, “ Providing a website featuring an online
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`marketplace for exchanging goods and services with other users; Provision of an on-line
`
`marketplace for buyers and sellers of goods and services.”
`
`20.
`
`This Application was filed on September 9, 2018 and published in the Official
`
`Gazette of the PTO on February 26, 2019.
`
`21.
`
`The BARTER BAY mark is highly similar to the EBAY Marks and follows the
`
`same pattern as the many “descriptive/generic term plus BAY” marks that surfaced following the
`
`success of eBay. By combining the descriptive term BARTER with the dominant, arbitrary, and
`
`distinctive term BAY, Applicant has created a “descriptive term plus BAY” mark that emulates
`
`and calls to mind EBAY.
`
`22.
`
`In addition, the services identified in the Application for BARTER BAY are
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`identical to eBay’s services. eBay’s core services are marketplace services. The opposed
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`services in the Application are identical to eBay’s services and are likely to be marketed in the
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`same manner and through the same channels of trade.
`
`6
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`

`

`23.
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`Upon information and belief, Applicant selected the BARTER BAY mark with
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`knowledge of and intent to cause confusion with, and/or create a purposeful association with, the
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`EBAY Marks.
`
`24.
`
`eBay is not affiliated or connected with Applicant or its services, nor has eBay
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`endorsed or sponsored Applicant or its services.
`
`25.
`
`eBay began using its EBAY mark and enjoys priority as a result of the filing dates
`
`of its trademark registrations, well prior to the September 9, 2018 filing date of the application
`
`for BARTER BAY and well prior to any use by Applicant of BARTER BAY.
`
`COUNT I
`Likelihood of Confusion
`15 U.S.C. § 1052(d)
`
`26.
`
`eBay realleges and incorporates by reference the preceding allegations of this
`
`
`
`Notice of Opposition.
`
`27.
`
`Registration of the BARTER BAY mark will injure eBay by causing the public to
`
`be confused or to believe, erroneously, that the services provided by Applicant are endorsed or
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`sponsored by eBay. eBay has no control over the nature and quality of the services offered by
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`Applicant under the confusingly similar BARTER BAY mark, and eBay’s reputation and
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`goodwill will be damaged and the value of the EBAY Marks jeopardized, all to eBay’s
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`detriment.
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`28.
`
`Since well prior to the filing date of the Application, any claimed date of first use
`
`of the BARTER BAY mark, or any priority date upon which Applicant may rely, eBay has used
`
`one or more of the EBAY Marks.
`
`29.
`
`Registration of the mark herein opposed will damage eBay because the BARTER
`
`BAY mark is likely, when used on or in connection with the services described in the
`
`7
`
`

`

`Application, to cause confusion, or to cause mistake, or to deceive. Thus, the BARTER BAY
`
`mark is unregistrable under Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), and should be
`
`refused registration.
`
`COUNT II
`Likelihood of Dilution
`15 U.S.C. § 1125(c)
`
`eBay realleges and incorporates by reference the preceding allegations of this
`
`30.
`
`Notice of Opposition.
`
`31.
`
`32.
`
`EBAY is a fanciful mark that is highly distinctive of eBay’s goods and services.
`
`eBay has used the EBAY Marks since at least September 1995 for online
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`marketplace and trading services and associated goods and services and has expanded use of the
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`EBAY Marks to many other goods and services. eBay has used and continues to use the EBAY
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`Marks throughout the United States and many countries worldwide.
`
`33.
`
`eBay has advertised and promoted the EBAY Marks through extensive internet,
`
`radio, television, and print advertising and promotion. eBay and the EBAY Marks have enjoyed
`
`extensive media attention. Because of the considerable publicity afforded the EBAY Marks, and
`
`the large base of loyal customers that eBay enjoys for its goods and services, the EBAY Marks
`
`have an extremely high degree of consumer recognition.
`
`34.
`
`Accordingly, when the public encounters the term EBAY, it immediately
`
`associates the term with eBay.
`
`35.
`
`The EBAY Marks are therefore famous and well-known under 15 U.S.C.
`
`§ 1125(c), and the EBAY Marks were famous and well-known well prior to the filing date of the
`
`Application, any claimed date of first use of the BARTER BAY mark, or any priority date upon
`
`which Applicant could rely.
`
`8
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`

`

`36.
`
`The BARTER BAY mark incorporates the distinctive and dominant part of the
`
`EBAY Marks, the “BAY” suffix, and its use is likely to cause dilution of the famous EBAY
`
`Marks. If Applicant and others are permitted to register marks similar to the EBAY Marks, the
`
`proliferation of such marks will blur, tarnish, and/or weaken the connection in consumers’ minds
`
`between the EBAY Marks and eBay’s goods and services.
`
`37.
`
`Thus, registration of the mark herein opposed is likely to dilute the distinctive
`
`quality of eBay’s famous EBAY Marks. The BARTER BAY mark is therefore unregistrable
`
`under Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c), and should be refused registration.
`
`WHEREFORE, eBay believes that it will be damaged by registration of the mark shown
`
`in the Application and requests that Application Serial No. 88109975 be rejected, that no
`
`registration be issued in connection with the Application, and that this Opposition be sustained in
`
`favor of eBay.
`
`The filing fee in the amount of $400 is being transmitted electronically with this
`
`submission. Any deficiency in the fee should be charged to Deposit Account No. 08-2623.
`
`April 19, 2019
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`/Hope Hamilton/
`Hope Hamilton
`Amanda N. Marston
`HOLLAND & HART LLP
`P.O. Box 8749
`Denver, Colorado 80201
`(303) 473-4822
`hihamilton@hollandhart.com
`anmarston@hollandhart.com
`docket@hollandhart.com
`ebay@hollandhart.com
`
`Attorneys for Opposer
`eBay, Inc.
`
`
`9
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`

`

`
`
`NOTICE REGARDING SERVICE
`
`Consistent with the Trademark Trial and Appeal Board Manual of Procedure Rule
`
`309.02(c)(1) (amended January 14, 2017), service of the above NOTICE OF OPPOSITION will
`
`be effected by the Board. To facilitate the Board, the following physical address(s) and email
`
`address(es) are available for the Applicant via TSDR:
`
`
`Hua Ran Liu
`Barter Bay
`1238 West 48th Avenue
`Vancouver, B.C. Canada V6M2N7
`barterbayexchange@gmail.com; Hrliu@barterbay.ca
`
`
`
`12376681_1
`
`
`/Hope Hamilton/
`Hope Hamilton
`
`
`
`
`
`10
`
`

`

`Exhibit A 
`
`Exhibit A
`
`

`

`
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`
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`
`
`Due to high-volume usage, you may experience intermittent issues on the Trademark Status and Document Retiieval (TSDR) system between 6 — 8 am. ET.
`Refreshing your web browser should resolve the issue. If you still need assistance accessing a document, email bagQuspfigg and include your serial
`number, the document you are looking for, and a screenshot of any error messages you have received.
`
`Starting Oct. 4, 2018, bu k data customers should no longer obtain direct access to TSDR data through tsdrsec.uspto.gov. There are two alternative ways to
`receive bulk data from TSDR.
`
`I
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`STATUS
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`‘
`
`MAINTENANCE
`DOCUMENTS
`Generated on: This page was generated by TSDR on 2019-04-18 13:28:47 EDT
`
`m E Pli'lt
`
`Mark: EBAY
`
`No Image exists for this case.
`
`US Serial Number: 75391661
`
`US Registration Number: 2218732
`
`Register: Principal
`
`Mark Type: Service Mark
`
`TM5 Common Status
`
`Descriptor:
`
`Application Filing Date: Nov. 17, 1997
`
`Registration Date: Jan. 19, 1999
`
`LlVE/REGISTRATIONIlssued and Active
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`The trademark application has been registered with the Office.
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`Status: The registration has been renewed.
`
`Status Date: Feb. 10, 2019
`
`Publication Date: Oct. 27, 1998
`
`v Mark Information
`
`Mark Literal Elements: EBAY
`
`Standard Char