`ESTTA990115
`07/24/2019
`
`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
`
`Space Exploration Technologies Corp.
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`07/24/2019
`
`1 ROCKET ROAD
`HAWTHORNE, CA 90250
`UNITED STATES
`
`BRENDAN J. HUGHES
`COOLEY LLP
`1299 PENNSYLVANIA AVE., NW, SUITE 700
`WASHINGTON, DC 20004
`UNITED STATES
`jlauter@cooley.com, bhughes@cooley.com, trademarks@cooley.com
`no phone number provided
`
`Applicant Information
`
`Application No
`
`87940172
`
`Publication date
`
`03/26/2019
`
`Opposition Filing
`Date
`
`Applicant
`
`07/24/2019
`
`Opposition Peri-
`od Ends
`
`07/24/2019
`
`Mathieu, William
`16184 Pole Pine Point
`Colorado Springs, CO 80908
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 035. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Management services for Project (Gov
`Classified Program ) management and peoplemanagement of work relating to DOD government ser-
`vice contracts
`
`Class 042. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Application service provider, namely, host-
`ing, managing, developing, and maintaining applications, software, and web sites, in the fields of per-
`sonal productivity, wireless communication, mobile information access, and remote data manage-
`ment for wireless delivery of content to handheld computers, laptops and mobile electronic devices
`
`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.
`
`3066872
`
`Registration Date
`
`03/07/2006
`
`Application Date
`
`09/16/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`SPACEX
`
`NONE
`
`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
`
`SPACEX
`
`Foreign Priority
`Date
`
`02/24/2017
`
`
`
`Design Mark
`
`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, satellite receivers,
`satellite receiver modules, transmitters of electronic signals, multiplexers, decod-
`ing boxes, data processors, integrated circuits; computer operating hardware
`and software for use in the aforementioned goods, satellite terminals, and satel-
`lite 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 computer information net-
`works; telecommunications services, namely, transmission of voice, data, graph-
`ics, images,audio and video by means of telecommunications networks, wireless
`communicationnetworks, and the Internet; providing awebsite featuring informa-
`tion in the field of satellite telecommunications services; providing a website fea-
`turing information in the field of providing internet access via satellite; providing
`access to electronic databases; consulting services in the field of satellite tele-
`communications
`Class 042. First use: First Use: 0 First Use In Commerce: 0
`Research and development of technology in the field of satellite communica-
`tions; engineering services in the field of satellite communications; scientific re-
`search; scientific and technological services, namely, scientific research and
`analysis of data in the fields of meteorology, climatology, geography, topo-
`graphy, and oceanography; electronic monitoring of environmental and atmo-
`spheric conditions using satellites and sensors; remotesensing services,
`namely, aerial surveying through the use of satellites; searching and retrieving
`information, sites, and other resources available on computer networks for oth-
`ers in relation to satellite data, recordings, and measurements
`
`Attachments
`
`85602036#TMSN.png( bytes )
`87576981#TMSN.png( bytes )
`SpaceX -- Notice of Opposition re SPACEFX.pdf(232774 bytes )
`
`Signature
`
`Name
`
`Date
`
`/Judd D. Lauter/
`
`Judd D. Lauter
`
`07/24/2019
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 87/940,172
`For the Trademark SPACEFX
`Published in the Official Gazette on March 26, 2019
`
`SPACE EXPLORATION TECHNOLOGIES
`CORP.,
`
`
`Opposer,
`
`v.
`
`
`
`
`WILLIAM MATHIEU,
`
`
`
`
`Applicant.
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`
`Opposition No.
`
`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 SPACEFX (the “SPACEFX Mark”) in
`
`connection with the goods identified in Application Serial No. 87/940,172 (the “Subject
`
`Application”) filed by Applicant William Mathieu (“Applicant”), an individual with an address
`
`of record located at 16184 Pole Pine Point, Colorado Springs, Colorado 80908. 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 famous
`
`within the meaning of Section 43(c) of the United States Trademark Act, 15 U.S.C. §1125(c).
`
`APPLICANT AND THE SUBJECT APPLICATION
`
`6.
`
`Through the Subject Application, Applicant seeks to register the SPACEFX Mark
`
`in connection with “Management services for Project (Gov Classified Program ) management
`
`and people management of work relating to DOD government service contracts” in Class 35 and
`
`“Application service provider, namely, hosting, managing, developing, and maintaining
`
`applications, software, and web sites, in the fields of personal productivity, wireless
`
`communication, mobile information access, and remote data management for wireless delivery
`
`of content to handheld computers, laptops and mobile electronic devices” in Class 42.
`
`7.
`
`Applicant filed the Subject Application on May 29, 2018. On March 26, 2019,
`
`the U.S. Patent & Trademark Office published the Subject Application for opposition in the
`
`Official Gazette. On April 24, 2019, SpaceX requested a 30-day extension of time to oppose the
`
`Subject Application, which was granted the same day. On May 24, 2019, SpaceX requested a
`
`further 60-day extension of time to oppose the Subject Application, which was also granted.
`
`This Notice of Opposition is timely filed.
`
`8.
`
`On information and belief, Applicant was aware of the SPACEX Mark at the time
`
`Applicant selected the SPACEFX Mark, and at the time the Subject Application was filed.
`
`
`
`3
`
`
`
`9.
`
`The commercial impression created by the SPACEFX Mark is highly similar to
`
`the commercial impression created by the SPACEX Mark. Applicant has merely added the letter
`
`“F” to the SPACEX Mark.
`
`10.
`
`By modifying the SPACEX Mark by one letter, 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.
`
`FIRST 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 SPACEFX Mark by Applicant.
`
`13.
`
`Applicant’s SPACEFX 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. In particular, SpaceX provides goods and services to the
`
`United States government through government contracts, and is engaged in the development of
`
`the Internet services covered by Application Serial No. 87/576,981.
`
`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 SPACEFX Mark will
`
`be used in all accepted channels of trade, including those overlapping with SpaceX.
`
`
`
`4
`
`
`
`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 services that Applicant
`
`offers or intends to offer under the SPACEFX Mark.
`
`19.
`
`Registration of the SPACEFX Mark will damage SpaceX because the SPACEFX
`
`Mark, when used in connection with the services identified in the Subject Application, 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 SPACEFX Mark should not be registered
`
`under 15 U.S.C. §§ 1052, 1063, and 1125.
`
`SECOND GROUND FOR OPPOSITION
`DILUTION OF A FAMOUS MARK
`
`20.
`
`SpaceX incorporates by reference paragraphs 1 through 19, inclusive, as if fully
`
`set forth here.
`
`21.
`
`22.
`
`The SPACEX Mark is highly distinctive of SpaceX’s services.
`
`SpaceX has used the SPACEX Mark since at least as early as 2002 for its
`
`industry-defining launch services and transportation offerings.
`
`23.
`
`SpaceX has extensively advertised and promoted the SPACEX Mark. SpaceX
`
`and the SPACEX Mark have also enjoyed extensive media attention, and have developed a large
`
`and devoted following across the United States and throughout the world.
`
`24.
`
`As a result of the considerable publicity accorded the SPACEX Mark and the
`
`company’s large and dedicated following, the SPACEX Mark has a high degree of consumer
`
`recognition.
`
`
`
`5
`
`
`
`25.
`
`Apart from unauthorized infringing uses of such marks, SpaceX is not aware of
`
`any material use of any highly similar mark by others.
`
`26.
`
`Accordingly, when the public encounters the term SPACEX, it immediately
`
`associates the term with SpaceX, and thus the SPACEX Mark is famous.
`
`27.
`
`The SPACEX Mark became famous before Applicant filed its application for the
`
`SPACEFX Mark on August 21, 2017.
`
`28.
`
`The SPACEFX Mark is highly similar to the SPACEX Mark, and it is likely to
`
`cause dilution of the famous SPACEX Mark, including dilution by blurring, all to SpaceX’s
`
`damage.
`
`29.
`
`Registration of the mark herein opposed is likely to dilute SpaceX’s famous
`
`SPACEX Mark by creating an association between the marks that impairs the distinctiveness of
`
`the SPACEX Mark. Thus, Applicant’s SPACEFX Mark is unregistrable pursuant to Sections
`
`2(a)(d), 3, 13, and 43(c) of the United States Trademark Act.
`
`
`
`WHEREFORE, SpaceX respectfully requests that the Board sustain this Opposition and
`
`refuse the registration of the Subject Application (Serial No. 87/940,172).
`
`Respectfully submitted,
`
`
`Date: July 24, 2019
`
`
`
`
`
`
`
` 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.
`
`
`
`6
`
`