Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1068370
`07/15/2020
`
`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
`
`Facebook, Inc.
`
`07/15/2020
`
`1601 WILLOW ROAD
`MENLO PARK, CA 94025
`UNITED STATES
`
`TYWANDA HARRIS LORD
`KILPATRICK TOWNSEND & STOCKTON LLP
`1100 PEACHTREE STREET NE, SUITE 2800
`ATLANTA, GA 30309
`UNITED STATES
`Primary Email: tlord@ktslaw.com
`Secondary Email(s): rdthomas@ktslaw.com, aroderick@ktslaw.com, kteil-
`haber@ktslaw.com, tmadmin@ktslaw.com
`4048156500
`
`Docket Number
`
`Applicant Information
`
`Application No.
`
`88679961
`
`Publication date
`
`03/17/2020
`
`Opposition Filing
`Date
`
`Applicant
`
`07/15/2020
`
`Opposition Peri-
`od Ends
`
`07/15/2020
`
`Keepface Global, Inc.
`220 HIGHLAND BOULEVARD APART B
`NEW CASTLE, DE 19720
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 035. First Use: 2016/10/01 First Use In Commerce: 2016/10/01
`All goods and services in the class are opposed, namely: Marketing and branding services, namely,
`providing customized communication programs to obtain consumer insights and develop branding
`strategies; Marketing plan development; Marketing services; Marketing services in the nature of pro-
`motionof third-party goods and services by brand ambassadors; Advertising agencies specializing in
`influencer marketing; Advertising agencies specializing in digitalmarketing; Advertising agencies spe-
`cializing in social media marketing; Business consultation and management regarding marketing
`activities and launching of new products; Development of marketing strategies, concepts and tactics,
`namely, audience development, brand awareness, online community building and digital wordof
`mouth communications; On-line customer-based social media brand marketing services; Planning,
`design, development, maintenance, tracking and reporting of online marketing activities for third
`parties; Promoting the goods and services ofothers by means of word-of-mouth and nontraditional
`
`

`

`marketing programs; Promoting, advertising and marketing the on-line databases and electronic pub-
`lications of others; Providing promotional marketing services to businesses in the broadband and me-
`dia industries; Social media strategy and marketing consultancy focusing on helping clients create
`and extend their product and brand strategies by building virally engaging marketing solutions
`
`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.
`
`3881770
`
`Registration Date
`
`11/23/2010
`
`Word Mark
`
`Design Mark
`
`FACEBOOK
`
`Application Date
`
`06/29/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2004/02/04 First Use In Commerce: 2004/04/00
`Advertising and information distribution services, namely, providing classifiedad-
`vertising space via the global computer network; promoting the goods and ser-
`vices of others over the Internet; providing on-line computer databases and on-
`line searchable databases in the field of classifieds
`Class 038. First use: First Use: 2004/02/04 First Use In Commerce: 2004/02/04
`Providing online chat rooms and electronic bulletin boards for registered
`usersfor transmission of messages concerningcollegiate life, general interest,
`classifieds, virtual community, social networking, photo sharing, and transmis-
`sion of photographic images; provision of on-line forums for the transmission of
`photographic images; provision of on-line forums for communications on topics
`of general interest
`Class 041. First use: First Use: 2004/02/04 First Use In Commerce: 2004/02/04
`Providing on-line computer databases and on-line searchable databases in the
`field of collegiate life concerning college athletics, concerts, entertainment
`events, art, performing arts, music, dance and academics; providing on-line
`computer databases and on-line searchable databases featuring collegiate stu-
`dent groupsconcerning subjects in the fields of academics and entertainment
`Class 042. First use: First Use: 2004/02/04 First Use In Commerce: 2004/02/04
`Computer services, namely, hosting online web facilities for others for organizing
`and conducting online meetings, gatherings, and interactive discussions; and-
`computer services in the nature of customized web pages featuring user-defined
`information, personal profiles and information; computer services, namely, creat-
`ing an on-line community for registered users to participate in discussion, get
`feedback from their peers, form virtual communities, and engage in social net-
`
`

`

`working; peer-to-browser photo sharing services, namely, providing a website
`featuring technology enabling users to upload,view and download digital photos
`Class 045. First use: First Use: 2004/02/04 First Use In Commerce: 2004/02/04
`Internet based introduction and social networking services; providing on-line
`computer databases and on-line searchabledatabases in the field of social net-
`working
`
`U.S. Registration
`No.
`
`3122052
`
`Registration Date
`
`07/25/2006
`
`Word Mark
`
`Design Mark
`
`FACEBOOK
`
`Application Date
`
`02/24/2005
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2004/11/16 First Use In Commerce: 2004/11/16
`[ providing an online directory information service featuring information regard-
`ing, and in the nature of, collegiate life, classifieds, virtual community and social
`networking ]
`Class 038. First use: First Use: 2004/11/16 First Use In Commerce: 2004/11/16
`providing online chat rooms for registered users for transmission of messages
`concerning collegiate life, classifieds, virtual community and social networking
`
`U.S. Registration
`No.
`
`3041791
`
`Registration Date
`
`01/10/2006
`
`Word Mark
`
`FACEBOOK
`
`Application Date
`
`02/24/2005
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2004/02/04 First Use In Commerce: 2004/02/04
`[ providing an online directory information service featuring information regard-
`ing, and in the nature of, collegiate life, classifieds, virtual community and social
`networking ]
`Class 038. First use: First Use: 2004/02/04 First Use In Commerce: 2004/02/04
`providing online chat rooms for registered users for transmission of messages
`concerning collegiate life, classifieds, virtual community and social networking
`
`U.S. Registration
`No.
`
`3734637
`
`Registration Date
`
`01/05/2010
`
`Word Mark
`
`Design Mark
`
`FACEBOOK
`
`Application Date
`
`05/24/2007
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2006/08/00 First Use In Commerce: 2006/08/00
`Software to enable uploading, posting, showing, displaying, tagging, blogging,
`sharing or otherwise providing electronic media or information over the Internet-
`or other communications network
`Class 038. First use: First Use: 2004/02/00 First Use In Commerce: 2004/02/00
`Audio and video broadcasting services over the Internet or other communica-
`tionsnetwork, namely, uploading, posting, showing, displaying, tagging and elec-
`tronically transmitting information, audio, and video clips; providing on-line chat
`rooms, listservers, and on-line forums for transmission of messages among
`computer users concerning user-defined content;providing on-line chat rooms
`and electronic bulletin boards for transmission ofmessages among users in the
`field of general interest
`Class 041. First use: First Use: 2004/02/00 First Use In Commerce: 2004/02/00
`On-line journals, namely, blogs featuring user-defined content
`Class 042. First use: First Use: 2004/02/00 First Use In Commerce: 2004/02/00
`Application service provider (ASP) featuring software to enable uploading, post-
`
`

`

`ing, showing, displaying, tagging, blogging, sharing or otherwise providing elec-
`tronic media or information over the Internet or other communications network
`
`U.S. Registration
`No.
`
`3814888
`
`Registration Date
`
`07/06/2010
`
`Word Mark
`
`Design Mark
`
`FACEBOOK
`
`Application Date
`
`11/07/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 042. First use: First Use: 2007/06/00 First Use In Commerce: 2007/06/00
`Providing temporary use of non-downloadable software applications for video
`sharing
`
`U.S. Registration
`No.
`
`3801147
`
`Registration Date
`
`06/08/2010
`
`Word Mark
`
`Design Mark
`
`FACEBOOK
`
`Application Date
`
`11/07/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2006/08/00 First Use In Commerce: 2006/08/00
`Computer software development tools forsocial networking, building social net-
`working applications and for allowing data retrieval, upload, access and man-
`agement; application programming interface (API) for third-party software and
`online services for social networking, buildingsocial networking applications and
`for allowing data retrieval, upload, access and management
`Class 038. First use: First Use: 2004/02/00 First Use In Commerce: 2004/02/00
`providing access to computer databases;electronic transmission of instant mes-
`sages and data
`Class 041. First use: First Use: 2004/02/00 First Use In Commerce: 2004/02/00
`
`

`

`Electronic publishing services, namely,publishing of online works of others fea-
`turing user-created text, audio, video,and graphics; providing on-line journals
`and web logs featuring user-created content
`Class 042. First use: First Use: 2004/02/00 First Use In Commerce: 2004/02/00
`Providing temporary use of non-downloadable software applications for classi-
`fieds, virtual community, social networking, photo sharing, and transmission of
`photographic images
`
`U.S. Registration
`No.
`
`4339123
`
`Registration Date
`
`05/21/2013
`
`Word Mark
`
`Design Mark
`
`FACEBOOK
`
`Application Date
`
`10/07/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 042. First use: First Use: 2004/02/00 First Use In Commerce: 2004/02/00
`computer services, namely, creating on-line virtual communities for registered
`users to organize groups and events, participate in discussions, and engage in
`social, business and community networking; computer services, namely, hosting
`on-line web facilities for others for organizing and conducting meetings, events
`and interactive discussions via communication networks; application service pro-
`vider (ASP) services, namely, hosting computer software applications of others;
`application service provider (ASP) featuring software to enable or facilitate the
`uploading, downloading, streaming, posting, displaying, blogging, linking, shar-
`ing of audio and video content, photographic images, text, graphics and data;
`providing an online network service that enables users to transfer personal iden-
`titydata to and share personal identity data with and among multiple websites;
`providing a web site featuring technology that enables online users to create
`personal profiles featuring social networking information and to transfer and
`share such information among multiple websites; computer services, namely,
`creating indexes of information, sites and other resources available on computer
`networks; providing temporary use of non-downloadable software applications
`for enabling, facilitating, or enhancing social networking, creating a virtual com-
`munity, and transmission of audio, video, photographicimages, text, graphics
`and data; computer services in the nature of customized web pages featuring
`user-defined or specified information, personal profiles, audio and video content,
`photographic images, text, graphics and data; peer-to-browser photo sharing
`services, namely, providing a website featuring technology enabling users to up-
`load, view, and download digital photos; providing a web site featuring techno-
`logy that enables users to upload and share video, photos, text,graphics and
`data; creating and maintaining blogs for others; providing a web hosting platform
`for use of non-downloadable software for enabling, facilitating or enhancing in-
`teractive, multiplayer and single player games for third parties
`
`U.S. Registration
`
`3935447
`
`Application Date
`
`12/17/2009
`
`

`

`No.
`
`Registration Date
`
`03/22/2011
`
`Word Mark
`
`Design Mark
`
`FACEBOOK
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the word "FACEBOOK" in white letters with a blue back-
`ground.
`
`Class 009. First use: First Use: 2006/08/00 First Use In Commerce: 2006/08/00
`Computer software development tools; Computer software for use as an applic-
`ation programming interface (API); Application programming interface (API) for
`computer software which facilitates online services for social networking, build-
`ing social networking applications and for allowing data retrieval, upload, down-
`load,access and management; Computer software to enable uploading, down-
`loading, accessing, posting, displaying, tagging, blogging, streaming, linking,
`sharing or otherwise providing electronic media or information via computer and
`communicationnetworks
`
`U.S. Registration
`No.
`
`4129126
`
`Registration Date
`
`04/17/2012
`
`Word Mark
`
`Design Mark
`
`FACEBOOK
`
`Application Date
`
`12/17/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of an outline of the term "FACEBOOK" in stylized lettering.
`
`Class 035. First use: First Use: 2004/02/04 First Use In Commerce: 2004/02/04
`Marketing, advertising and promotion services; market research and information
`services; advertising services, namely, promoting the goods and services of oth-
`ers via computer and communication networks; operating on-line marketplaces
`for sellers of goods and/or services; online retail store services featuring digital
`media, namely, pre-recorded digital sound, video and data recordings featuring
`music, text, video, games, comedy, drama,action, adventure or animation; char-
`itable services, namely, promoting public awareness about charitable, philan-
`thropic, volunteer, public and community service and humanitarian activities
`Class 038. First use: First Use: 2009/04/00 First Use In Commerce: 2009/04/00
`Delivery of digital music by electronictransmission
`Class 041. First use: First Use: 2007/09/00 First Use In Commerce: 2007/09/00
`Contest and incentive award programs designed to recognize, reward and en-
`courage individuals and groups which engage inself-improvement, self-ful-
`fillment, charitable, philanthropic, volunteer, public and community service and
`humanitarianactivities and sharing of creative workproduct
`
`U.S. Registration
`No.
`
`4099518
`
`Application Date
`
`12/17/2009
`
`

`

`Registration Date
`
`02/14/2012
`
`Word Mark
`
`Design Mark
`
`FACEBOOK
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of an outline of the term "FACEBOOK" in stylized lettering.
`
`Class 038. First use: First Use: 2005/08/00 First Use In Commerce: 2005/08/00
`Providing access to computer, electronic and online databases; telecommunica-
`tions services, namely, electronic transmission of data, messages and informa-
`tion; providing online forums for communication on topics of general interest;
`providing online communications links which transfer web site users to other loc-
`al and global web pages; providing access to web sites for others hosted on
`computer servers accessible via a global computer network; providing access to
`third party web sites by enabling users to log in through a universal username
`and password via a global computer network and other communication net-
`works; providing onlinechat rooms and electronic bulletin boards for transmis-
`sion of messages among users in the field of general interest; audio, text and
`video broadcasting services over the Internet or other communications networks
`featuring the uploaded, posted and tagged audio, text and video content of oth-
`ers; audio, text and video broadcasting services over the Internet orother com-
`munications networks, namely, electronically transmitting audio clips,text and
`video clips of others
`Class 045. First use: First Use: 2008/12/00 First Use In Commerce: 2008/12/00
`Identification verification services, namely, providing authentication of personal
`identification information
`
`U.S. Registration
`No.
`
`4102822
`
`Registration Date
`
`02/21/2012
`
`Word Mark
`
`Design Mark
`
`FACEBOOK
`
`Application Date
`
`12/17/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of an outline of the term "FACEBOOK" in stylized lettering
`isinserted.
`
`Class 038. First use: First Use: 2005/08/00 First Use In Commerce: 2005/08/00
`Peer-to-peer photo sharing services, namely, electronic transmission of digital-
`photo files among internet users
`Class 041. First use: First Use: 2005/08/00 First Use In Commerce: 2005/08/00
`Providing computer, electronic and online databases in the field of entertainment
`and in the fields of secondary, collegiate, social and community interest groups;
`on-line journals, namely, blogs in the fields of entertainment, education, social,
`political, cultural, economic, scientific and general interest; electronic publishing
`
`

`

`services, namely, publication of text and graphic works of others via computer
`and communications networksin the fields of entertainment, education, social,
`political, cultural, economic, scientific and general interest; publishing of elec-
`tronic publications; entertainment services, namely, providing temporary use of
`interactive, multiplayer and single player games for games played via computer
`or communication networks; providing information about online computer games
`and video games via computer or communication networks; arranging and con-
`ducting competitions for video gamersand computer game players
`Class 042. First use: First Use: 2005/08/00 First Use In Commerce: 2005/08/00
`Peer-to-browser photo sharing services,namely, providing a website featuring
`technology enabling users to upload, view, and download digital photos;
`providinga web site featuring technology that enables users to upload and share
`video, photos, text, graphics and data; creatingand maintaining blogs for others;
`providing a web hosting platform for use of non-downloadable software in con-
`nection with interactive, multiplayer and single player games for third parties
`
`U.S. Registration
`No.
`
`4102823
`
`Registration Date
`
`02/21/2012
`
`Word Mark
`
`Design Mark
`
`FACEBOOK
`
`Application Date
`
`12/17/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of an outline of the term "FACEBOOK" in stylized lettering.
`
`Class 035. First use: First Use: 2005/08/00 First Use In Commerce: 2005/08/00
`Compiling of information into computer databases
`Class 042. First use: First Use: 2005/08/00 First Use In Commerce: 2005/08/00
`Computer services, namely, creating on-line virtual communities for registered
`users to organize groups and events, participate in discussions, and engage in
`social, business and community networking; computer services, namely, hosting
`electronic facilities for others for organizing and conducting meetings, events
`andinteractive discussions via communication networks; application service pro-
`vider (ASP) services, namely, hosting computer software applications of others;
`application service provider (ASP) featuringsoftware to enable or facilitate the
`uploading, downloading, streaming, posting, displaying, blogging, linking,
`sharingor otherwise providing electronic mediaor information over communica-
`tion networks; providing an online network servicethat enables users to transfer
`personalidentity data to and share personal identity data with and among mul-
`tiple websites; providing a web site featuring technology that enables online
`users to create personal profiles featuring social networking information and to
`transfer andshare such information among multiple websites; computer services,
`namely, creating indexes of information, sites and other resources available on
`computer networks; providing temporary use of non-downloadable software ap-
`plications for social networking, creating a virtual community, and transmission
`of audio, video, photographic images, text, graphics and data; computer ser-
`vices in the nature ofcustomized web pages featuring user-defined or specified
`information, personal profiles, audio, video, photographic images, text, graphics
`and data
`
`U.S. Registration
`
`4102824
`
`Application Date
`
`12/17/2009
`
`

`

`No.
`
`Registration Date
`
`02/21/2012
`
`Word Mark
`
`Design Mark
`
`FACEBOOK
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consist of an outline of the term "FACEBOOK" in stylized lettering.
`
`Class 038. First use: First Use: 2005/08/00 First Use In Commerce: 2005/08/00
`Providing access to computer databases in the fields of social networking, social
`introduction [ and dating ]
`Class 045. First use: First Use: 2005/08/00 First Use In Commerce: 2005/08/00
`Social introduction, networking [ and dating ] services; providing social services
`and information in the field of personal development, namely, self-improvement,
`self-fulfillment, charitable, philanthropic, volunteer, public and communityser-
`vices, and humanitarian activities
`
`U.S. Application/ Registra-
`tion No.
`
`Registration Date
`
`Word Mark
`
`Goods/Services
`
`U.S. Application/ Registra-
`tion No.
`
`Registration Date
`
`Word Mark
`
`Goods/Services
`
`U.S. Application/ Registra-
`tion No.
`
`Registration Date
`
`Word Mark
`
`Goods/Services
`
`U.S. Application/ Registra-
`tion No.
`
`Registration Date
`
`Word Mark
`
`Goods/Services
`
`U.S. Application/ Registra-
`tion No.
`
`Application Date
`
`NONE
`
`NONE
`
`NONE
`
`FACEBOOK
`
`identified in Registration No. 3881770 and first use date identified in
`Registration No. 3881770
`
`Application Date
`
`NONE
`
`NONE
`
`NONE
`
`FACEBOOK
`
`identified in Registration No. 3122052 and first use date identified in
`Registration No. 3122052
`
`Application Date
`
`NONE
`
`NONE
`
`NONE
`
`FACEBOOK
`
`identified in Registration No. 3041791 and first use date identified in
`Registration No. 3041791
`
`Application Date
`
`NONE
`
`NONE
`
`NONE
`
`FACEBOOK
`
`identified in Registration No. 3734637 and first use date identified in
`Registration No. 3734637
`
`NONE
`
`Application Date
`
`NONE
`
`

`

`Registration Date
`
`Word Mark
`
`Goods/Services
`
`U.S. Application/ Registra-
`tion No.
`
`Registration Date
`
`Word Mark
`
`Goods/Services
`
`U.S. Application/ Registra-
`tion No.
`
`Registration Date
`
`Word Mark
`
`Goods/Services
`
`NONE
`
`FACEBOOK
`
`identified in Registration No. 3814888 and first use date identified in
`Registration No. 3814888
`
`Application Date
`
`NONE
`
`NONE
`
`NONE
`
`FACEBOOK
`
`identified in Registration No. 3801147 and first use date identified in
`Registration No. 3801147
`
`Application Date
`
`NONE
`
`NONE
`
`NONE
`
`FACEBOOK
`
`identified in Registration No. 4339123 and first use date identified in
`Registration No. 4339123
`
`U.S. Application/ Registra-
`tion No.
`
`Registration Date
`
`Design Mark
`
`NONE
`
`NONE
`
`Application Date
`
`NONE
`
`Goods/Services
`
`identified in Registration No. 3935447 and first use date identified in
`Registration No. 3935447
`
`U.S. Application/ Registra-
`tion No.
`
`NONE
`
`Application Date
`
`NONE
`
`

`

`Registration Date
`
`NONE
`
`Design Mark
`
`Goods/Services
`
`identified in Registration No. 4129126 and first use date identified in
`Registration No. 4129126
`
`U.S. Application/ Registra-
`tion No.
`
`Registration Date
`
`NONE
`
`NONE
`
`Application Date
`
`NONE
`
`

`

`Design Mark
`
`Goods/Services
`
`identified in Registration No. 4099518 and first use date identified in
`Registration No. 4099518
`
`U.S. Application/ Registra-
`tion No.
`
`Registration Date
`
`NONE
`
`NONE
`
`Application Date
`
`NONE
`
`

`

`Design Mark
`
`Goods/Services
`
`identified in Registration No. 4102822 and first use date identified in
`Registration No. 4102822
`
`U.S. Application/ Registra-
`tion No.
`
`Registration Date
`
`NONE
`
`NONE
`
`Application Date
`
`NONE
`
`

`

`Design Mark
`
`Goods/Services
`
`identified in Registration No. 4102823 and first use date identified in
`Registration No. 4102823
`
`U.S. Application/ Registra-
`tion No.
`
`Registration Date
`
`NONE
`
`NONE
`
`Application Date
`
`NONE
`
`

`

`Design Mark
`
`Goods/Services
`
`identified in Registration No. 4102824 and first use date identified in
`Registration No. 4102824
`
`Attachments
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`78920322#TMSN.png( bytes )
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`77896325#TMSN.png( bytes )
`FACEBOOK_BLUE BACKGROUND.JPG
`FACEBOOK_BLUE BACKGROUND1.JPG
`FACEBOOK_BLUE BACKGROUND2.JPG
`FACEBOOK_BLUE BACKGROUND3.JPG
`FACEBOOK_BLUE BACKGROUND4.JPG
`FACEBOOK_BLUE BACKGROUND5.JPG
`2020.07.15 Notice of Opposition (KEEPFACE).pdf(218814 bytes )
`Segment 001 of Exhibit A .pdf(3784220 bytes )
`Segment 002 of Exhibit A .pdf(3893194 bytes )
`Segment 003 of Exhibit A .pdf(4232584 bytes )
`Segment 004 of Exhibit A .pdf(3736391 bytes )
`Segment 005 of Exhibit A .pdf(1347043 bytes )
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`Signature
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`/Tywanda H. Lord/
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`

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`Name
`
`Date
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`TYWANDA H. LORD
`
`07/15/2020
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of application Serial No. 88/679,961
`For the Trademark KEEPFACE
`Published in the Official Gazette on March 17, 2020
`
` Opposition No.________
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`FACEBOOK, INC.,
`
`Opposer,
`
`v.
`
`KEEPFACE GLOBAL, INC.,
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`Opposer Facebook, Inc. (“Facebook” or “Opposer”), a Delaware corporation having its
`
`principal place of business at 1601 Willow Rd., Menlo Park, California 94025, believes that it
`
`will be damaged by the issuance of a registration for the mark KEEPFACE (“Applicant’s Mark”)
`
`in International Class 35 as identified in Application Serial No. 88/679,961 (the “Subject
`
`Application”) filed by Keepface Global, Inc. (“Applicant”), with a mailing address of 220
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`Highland Boulevard, Apart B, New Castle, Delaware 19720. The Subject Application published
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`on March 17, 2020, and Facebook timely requested and received one thirty-day extension of time
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`and one sixty-day extension of time to oppose. Accordingly, Facebook timely opposes the
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`Subject Application.
`
`As grounds for opposition, Facebook states the following:
`
`1.
`
`Facebook has validly and continuously used the FACEBOOK mark and marks
`
`incorporating the element FACEBOOK in connection with a variety of goods and services,
`
`1
`
`

`

`including, but not limited to, online networking services, since at least as early as February,
`
`2004.
`
`2.
`
`Since launching its online networking service under the FACEBOOK mark,
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`Facebook has continued to use and expand its use of the FACEBOOK mark for a variety of
`
`goods and services including, without limitation:
`
` Creating an on-line community for registered users to participate in discussion,
`get feedback from their peers, form virtual communities, and engage in social
`networking;
`
` Marketing, advertising and promotion services; advertising services, namely,
`promoting the goods and services of others via computer and communication
`networks
`
` Providing social services and information in the field of personal development,
`namely, self-improvement, self-fulfillment, charitable, philanthropic, volunteer,
`public and community services, and humanitarian activities;
`
` Providing computer, electronic and online databases in the field of entertainment
`and in the fields of secondary, collegiate, social, and community interest groups;
`
` Electronic publishing services, namely, publication of text and graphic works of
`others via computer and communications networks in the fields of entertainment,
`education, social, political, cultural, economic, scientific, and general interest;
`
` Providing computer, electronic and online databases in the field of cultural
`commentary, social entertainment events, art, performing arts, music, dance, and
`education;
`
` On-line journals, namely, blogs in the fields of cultural commentary, social
`entertainment events, art, performing arts, music, dance, education, politics,
`culture, economics, and science;
`
` Electronic publishing services, namely, publication of text and graphic works of
`others via computer and communications networks in the fields of cultural
`commentary, social entertainment events, art, performing arts, music, dance,
`education, politics, culture, economics, and science;
`
` Publishing of electronic publications;
`
`2
`
`

`

` Software to enable uploading, posting, showing, displaying, tagging, blogging,
`sharing, or otherwise providing electronic media or information over the Internet
`or other communications networks;
`
` Audio and video broadcasting services over the Internet or other communications
`networks, namely, uploading, posting, showing, displaying,
`tagging and
`electronically transmitting information, audio, and video clips;
`
` Providing on-line chat rooms, listservers, and on-line forums for transmission of
`messages among computer users concerning user-defined content;
`
`
`
`Internet based introduction and social networking services;
`
` Providing on-line computer databases and on-line searchable databases in the
`field of social networking;
`
` Providing online chat rooms and electronic bulletin boards for registered users for
`transmission of messages concerning collegiate life, general interest, classifieds,
`virtual community, social networking, photo sharing, and transmission of
`photographic images;
`
` Provision of on-line forums for the transmission of photographic images;
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` Provisions of on-line forums for communications on topics of general interest;
`and
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` Online chat functions for transmission of messages, photographs, videos, and
`other user-defined content.
`
`3.
`
`In addition to the common law rights Facebook owns in the FACEBOOK mark, it
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`also owns the following federal registrations for marks comprised of or incorporating the
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`FACEBOOK mark (collectively the “FACEBOOK Marks”):
`
`Mark
`
`Registration
`
`FACEBOOK
`
`FACEBOOK
`
`FACEBOOK
`
`FACEBOOK
`
`FACEBOOK
`
`FACEBOOK
`
`FACEBOOK
`
`3
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`3,881,770
`
`3,122,052
`
`3,041,791
`
`3,734,637
`
`3,814,888
`
`3,801,147
`
`4,339,123
`
`

`

`Mark
`
`Registration
`
`3,935,447
`
`4,129,126
`
`4,099,518
`
`4,102,822
`
`4,102,823
`
`4,102,824
`
`4.
`
`True and correct copies of registrations for the above FACEBOOK Marks are
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`attached hereto as Exhibit A and are incorporated by reference as though fully set forth herein.
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`5.
`
`The FACEBOOK Marks are highly distinctive with regard to social media,
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`electronic publications, and online networking goods and services, among others. Moreover,
`
`through Facebook’s widespread use of the FACEBOOK Marks, extensive and continuous media
`
`coverage, the high degree of consumer recognition of the FACEBOOK Marks, Facebook’s
`
`enormous and loyal user base, its numerous trademark registrations and pending applications,
`
`and other factors, the FACEBOOK Marks have become famous within the meaning of Section
`
`43(c) of the United States Trademark Act, 15 U.S.C. § 1125(c).
`
`6.
`
`On November 5, 2019, Applicant filed the Subject Application on the basis of
`
`Applicant’s alleged use of the mark in commerce pursuant to 15 U.S.C. § 1051(a).
`
`4
`
`

`

`7.
`
`On March 17, 2020 the United States Patent and Trademark Office published the
`
`Subject Application in the Official Gazette in connection with the following services
`
`(“Applicant’s Services”) in International Class 35: “Marketing and branding services, namely,
`
`providing customized communication programs to obtain consumer insights and develop
`
`branding strategies; Marketing plan development; Marketing services; Marketing services in the
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`nature of promotion of third-party goods and services by brand ambassadors; Advertising
`
`agencies specializing in influencer marketing; Advertising agencies specializing in digital
`
`marketing; Advertising agencies specializing in social media marketing; Business consultation
`
`and management regarding marketing activities and launching of new products; Development of
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`marketing strategies, concepts and tactics, namely, audience development, brand awareness,
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`online community building and digital word of mouth communications; On-line customer-based
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`social media brand marketing services; Planning, design, development, maintenance, tracking
`
`and reporting of online marketing activities for third parties; Promoting the goods and services
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`of others by means of word-of-mouth and nontraditional marketing programs; Promoting,
`
`advertising