Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1069424
`07/20/2020
`
`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
`
`Beats Electronics, LLC
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`07/19/2020
`
`8600 HAYDEN PLACE
`CULVER CITY, CA 90232
`UNITED STATES
`
`MICHAEL G. KELBER
`NEAL, GERBER & EISENBERG LLP
`TWO NORTH LASALLE STREET
`SUITE 1700
`CHICAGO, IL 60602
`UNITED STATES
`Primary Email: trademarks@nge.com
`Secondary Email(s): mkelber@nge.com, afraker@nge.com, marden@nge.com,
`docketmail@nge.com
`312-269-8000
`
`Docket Number
`
`022552.3738
`
`Applicant Information
`
`Application No.
`
`88410084
`
`Publication date
`
`01/21/2020
`
`Opposition Filing
`Date
`
`International Re-
`gistration No.
`
`Applicant
`
`07/20/2020
`
`NONE
`
`Opposition Peri-
`od Ends
`
`International Re-
`gistration Date
`
`07/19/2020
`
`NONE
`
`Microsoft Corporation
`ONE MICROSOFT WAY
`REDMOND, WA 980526399
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Apparatus and instruments for conducting,
`switching, transforming, accumulating, regulating or controlling electricity;apparatus for recording,
`transmission or reproduction of sound or images; blankmagnetic data carriers in the nature ofrecord-
`ing discs; calculating machines; satellites for scientific purposes; computers; computer hardware, ro-
`bots, peripheral devices and downloadable computer software for collecting, processing, monitoring,
`analyzing, transmitting, storingand managing data relating to agriculture and farming and for making
`predictions about farming trends, yields, diseases, pests, and other threats to agricultural production;
`electronic devices, namely, mobile phones, cameras, aerial machines in the nature of meteorological
`
`

`

`balloons, weather balloons and helium balloons, and sensors for collecting, processing, monitoring,
`analyzing, transmitting, storing and managing data relating to agriculture and farming; robots, com-
`puter hardware and downloadable software for connecting, operating and managing farms and agri-
`cultural projects using technologies that include the Internet of Things(IoT), blockchain, Software as a
`Service (SaaS), Platforms as a Service (PaaS) and artificial intelligence; wireless communication
`devices for voice, data, or image transmission; sensors and detectors for analyzing water, nutrients,
`crops,disease, farming methods and productionthreats relating to agriculture and farming; aerial and
`ground based plant-imaging machines for agricultural use, namely, cameras and imaging sensors;
`solar panels for the production of electricity; solar batteries
`
`Applicant Information
`
`Application No.
`
`88411078
`
`Publication date
`
`01/21/2020
`
`Opposition Filing
`Date
`
`International Re-
`gistration No.
`
`Applicant
`
`07/20/2020
`
`NONE
`
`Opposition Peri-
`od Ends
`
`International Re-
`gistration Date
`
`NONE
`
`Microsoft Corporation
`ONE MICROSOFT WAY
`REDMOND, WA 980526399
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Apparatus and instruments for conducting,
`switching, transforming, accumulating, regulating or controlling electricity;apparatus for recording,
`transmission or reproduction of sound or images; blankmagnetic data carriers in the nature ofrecord-
`ing discs; calculating machines; satellites for scientific purposes; computers; computer hardware, ro-
`bots, peripheral devices and downloadable computer software for collecting, processing, monitoring,
`analyzing, transmitting, storingand managing data relating to agriculture and farming and for making
`predictions about farming trends, yields, diseases, pests, and other threats to agricultural production;
`electronic devices, namely, mobile phones, cameras, aerial machines in the nature of meteorological
`balloons, weather balloons and helium balloons, and sensors for collecting, processing, monitoring,
`analyzing, transmitting, storing and managing data relating to agriculture and farming; robots, com-
`puter hardware and downloadable software for connecting, operating and managing farms and agri-
`cultural projects using technologies that include the Internet of Things(IoT), blockchain, Software as a
`Service (SaaS), Platforms as a Service (PaaS) and artificial intelligence; wireless communication
`devices for voice, data, or image transmission; sensors and detectors for analyzing water, nutrients,
`crops,disease, farming methods and productionthreats relating to agriculture and farming; aerial and
`ground based plant-imaging machines for agricultural use, namely, cameras and imaging sensors;
`solar panels for the production of electricity; solar batteries
`
`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.
`
`3862142
`
`Registration Date
`
`10/12/2010
`
`Word Mark
`
`BEATS
`
`Application Date
`
`06/03/2008
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2008/07/01 First Use In Commerce: 2008/07/01
`headphones
`
`U.S. Registration
`No.
`
`4035777
`
`Registration Date
`
`10/04/2011
`
`Word Mark
`
`Design Mark
`
`BEATS
`
`Application Date
`
`06/03/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2010/09/07 First Use In Commerce: 2010/09/07
`Audio speakers; loudspeakers
`
`U.S. Registration
`No.
`
`4361690
`
`Registration Date
`
`07/02/2013
`
`Word Mark
`
`Design Mark
`
`BEATS
`
`Application Date
`
`02/05/2009
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2010/09/07 First Use In Commerce: 2010/09/07
`loudspeakers, audio speakers, car audiospeakers [, media players for automo-
`biles, CD players for automobiles ]
`Class 025. First use: First Use: 2011/11/05 First Use In Commerce: 2011/11/05
`[ T-shirts ]
`
`U.S. Registration
`No.
`
`4529746
`
`Registration Date
`
`05/13/2014
`
`Word Mark
`
`Design Mark
`
`BEATS
`
`Application Date
`
`07/21/2009
`
`Foreign Priority
`Date
`
`06/17/2009
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2008/07/01 First Use In Commerce: 2008/07/01
`electronic cables, namely, audio electric cables and cable connectors; power
`cables and cable connectors; audio speakers for home theater systems
`Class 025. First use: First Use: 2011/11/05 First Use In Commerce: 2011/11/05
`headgear, namely, caps, hats
`Class 041. First use: First Use: 2013/12/05 First Use In Commerce: 2013/12/05
`Provision of live entertainment and recorded entertainment, namely, live musical
`performances by musical bands and DJs;musical entertainment in the nature of
`live visual and audio performances by musical groups and DJs; exhibitions,
`namely, exhibitions concerning music; musicalentertainment in the nature of live
`visual and audio performances by musical groups and DJs; exhibitions, namely,
`exhibitions concerning music
`
`U.S. Registration
`No.
`
`4537908
`
`Registration Date
`
`05/27/2014
`
`Word Mark
`
`BEATS
`
`Application Date
`
`02/05/2009
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2012/08/00 First Use In Commerce: 2012/08/00
`Carrying cases for headphones
`
`U.S. Registration
`No.
`
`5448731
`
`Registration Date
`
`04/17/2018
`
`Word Mark
`
`Design Mark
`
`BEATS
`
`Application Date
`
`02/03/2014
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2011/12/31 First Use In Commerce: 2011/12/31
`Speaker stands; Protective cases for speakers; Remote controls for speakers;
`Plug adaptors; Chargers for use with headphones and speakers; Carrying cases
`for headphones and portable speakers; Portable speaker mount for bicycles;
`Computer software, namely, software for updating wireless speakers and head-
`phones; Handheld devices for controlling speakers; Computer software for use
`in controlling speakers, amplifiers; Downloadable audio and video recordings
`featuring music, music performances, and music videos; Prerecorded music,
`namely, digital downloads; Computer software for use in the delivery, distribution
`and transmission of digital music and entertainment- related audio, video, text
`and multimedia content
`
`U.S. Registration
`No.
`
`4177191
`
`Registration Date
`
`07/17/2012
`
`Word Mark
`
`BEATS PRO
`
`Application Date
`
`06/08/2010
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2010/10/14 First Use In Commerce: 2010/10/14
`Headphones; personal headphones for usewith sound transmitting systems
`
`U.S. Registration
`No.
`
`4176105
`
`Registration Date
`
`07/17/2012
`
`Word Mark
`
`Design Mark
`
`BEATS BY DR. DRE
`
`Application Date
`
`07/21/2009
`
`Foreign Priority
`Date
`
`06/17/2009
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2010/10/14 First Use In Commerce: 2010/10/14
`[ media players for automobiles; DVD players for automobiles; CD players for
`automobiles; digital audio players for automobiles; ] audio speakers; car audio
`speakers; loudspeakers; [ loudspeaker cabinets; horns for loudspeakers;] head-
`phones ; personal headphones for use with sound transmitting systems [ ; media
`players for automobiles]
`Class 025. First use: First Use: 2011/11/05 First Use In Commerce: 2011/11/05
`[ T-shirts ]
`
`U.S. Registration
`No.
`
`4572603
`
`Registration Date
`
`07/22/2014
`
`Word Mark
`
`BEATS BY DR. DRE
`
`Application Date
`
`07/21/2009
`
`Foreign Priority
`Date
`
`06/17/2009
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2012/10/16 First Use In Commerce: 2012/10/16
`Audio speakers for home theater systems
`
`U.S. Registration
`No.
`
`4314478
`
`Registration Date
`
`04/02/2013
`
`Word Mark
`
`Design Mark
`
`BEATS STUDIO
`
`Application Date
`
`02/27/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2012/07/01 First Use In Commerce: 2012/07/01
`Headphones
`
`U.S. Registration
`No.
`
`4314930
`
`Registration Date
`
`04/02/2013
`
`Word Mark
`
`Design Mark
`
`URBEATS
`
`Application Date
`
`03/09/2012
`
`Foreign Priority
`Date
`
`09/12/2011
`
`

`

`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2011/11/00 First Use In Commerce: 2011/11/00
`Headphones
`
`U.S. Registration
`No.
`
`5387883
`
`Registration Date
`
`01/23/2018
`
`Word Mark
`
`Design Mark
`
`BEATS X
`
`Application Date
`
`11/09/2016
`
`Foreign Priority
`Date
`
`05/25/2016
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the stylized word "beats" with a broken line stylized letter
`"x" in superscript.
`
`Class 009. First use: First Use: 2016/09/07 First Use In Commerce: 2017/02/10
`Earphones; audio cables; battery chargers, charging cables, and power ad-
`aptors for use with earphones; carrying cases for earphones
`
`U.S. Registration
`No.
`
`5188070
`
`Registration Date
`
`04/18/2017
`
`Word Mark
`
`Design Mark
`
`BEATS EP
`
`Application Date
`
`04/04/2016
`
`Foreign Priority
`Date
`
`10/15/2015
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2016/09/00 First Use In Commerce: 2016/09/00
`audio speakers; loud speakers; earphones; headphones; microphones; electric-
`al and electronic connectors, couplers, wires, cables, chargers, docks, docking
`stations, interfaces, and adapters for use with all of the aforesaid goods; covers,
`bags and cases adapted or shaped to contain audio players
`
`U.S. Registration
`No.
`
`4937568
`
`Registration Date
`
`04/12/2016
`
`Word Mark
`
`POWERBEATS
`
`Application Date
`
`09/09/2014
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2010/09/00 First Use In Commerce: 2010/09/00
`Earphones, audio cables
`
`U.S. Registration
`No.
`
`6054617
`
`Registration Date
`
`05/12/2020
`
`Word Mark
`
`Design Mark
`
`POWERBEATS PRO
`
`Application Date
`
`04/03/2019
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2019/04/03 First Use In Commerce: 2019/05/10
`Headphones; earphones; earbuds; batterychargers, charging cables for use with
`headphones, earphones, and earbuds; carrying cases for headphones,
`earphones, and earbuds; protective cases for headphones, earphones, and ear-
`buds; protective covers, bags and cases adapted and shapedfor holding head-
`phones, earphones, and earbuds
`
`U.S. Registration
`No.
`
`4314931
`
`Registration Date
`
`04/02/2013
`
`Word Mark
`
`BEATS PILL
`
`Application Date
`
`01/09/2012
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2012/10/16 First Use In Commerce: 2012/10/16
`audio speakers; loudspeakers
`
`U.S. Registration
`No.
`
`5428637
`
`Registration Date
`
`03/20/2018
`
`Word Mark
`
`Design Mark
`
`BEATSAUDIO
`
`Application Date
`
`04/21/2014
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2012/06/30 First Use In Commerce: 2012/06/30
`Computers; car speakers
`
`U.S. Registration
`No.
`
`5396184
`
`Registration Date
`
`02/06/2018
`
`Word Mark
`
`Design Mark
`
`BEATS SOLO
`
`Application Date
`
`07/19/2017
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2009/10/13 First Use In Commerce: 2009/10/13
`Headphones
`
`U.S. Registration
`No.
`
`5028678
`
`Registration Date
`
`08/23/2016
`
`Word Mark
`
`Design Mark
`
`BEATS 1
`
`Application Date
`
`07/01/2015
`
`Foreign Priority
`Date
`
`04/29/2015
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 038. First use: First Use: 2015/06/30 First Use In Commerce: 2015/06/30
`Broadcasting of voice, music, audio, video, multimedia via radio by means of
`telecommunications networks; broadcast andtransmission of streamed music,
`audio, video, and multimedia content by means of telecommunications networks
`
`U.S. Registration
`No.
`
`5715751
`
`Registration Date
`
`04/02/2019
`
`Word Mark
`
`Design Mark
`
`BEATS 1
`
`Application Date
`
`07/01/2015
`
`Foreign Priority
`Date
`
`04/29/2015
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 038. First use: First Use: 2015/07/02 First Use In Commerce: 2015/07/02
`Providing access to digital music websites on the internet, on-line forums for
`transmission of messages among computer users concerning music, streaming
`audio material on the internet
`
`U.S. Registration
`No.
`
`5715752
`
`Application Date
`
`07/01/2015
`
`

`

`Registration Date
`
`04/02/2019
`
`Word Mark
`
`Design Mark
`
`BEATS 1
`
`Foreign Priority
`Date
`
`04/29/2015
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2015/06/30 First Use In Commerce: 2015/06/30
`Entertainment competitions in the fieldof music, and music contests, provid-
`ingnon-downloadable playback of pre-recorded music via a global computer net-
`work; providing an Internet website portal featuring links to musical artist web-
`sites and music performance and event information; providing a website featur-
`ing the ratings, reviews, and personal recommendations of users on events and
`activities in the field of music and music concerts, live performances, fairs, fest-
`ivals, exhibition, expositions; providing non-downloadable pre-recorded music,
`and musicvideos for use on mobile communicationsdevices via a global com-
`puter network and wireless networks
`
`U.S. Registration
`No.
`
`5387349
`
`Registration Date
`
`01/23/2018
`
`Word Mark
`
`Design Mark
`
`BEATS 1
`
`Application Date
`
`07/01/2015
`
`Foreign Priority
`Date
`
`04/29/2015
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2015/06/30 First Use In Commerce: 2015/06/30
`Arranging, organizing, conducting, and presenting concerts, live music perform-
`ances, music special events; production, distribution, and presentation of radio
`programs and sound recordings in the fields of entertainment news, music;
`providing ongoing radio and audio programs in the fields of entertainment news,
`music;providing radio, internet, and satellite music programming by means of
`telecommunications networks, computer networks, the Internet, satellite, radio,
`and wireless communications networks; provision of live entertainment, namely,
`musical performances; providing websites featuring information in the field of
`
`

`

`Attachments
`
`music; entertainment services, namely, providing on-line music reviews
`
`77980257#TMSN.png( bytes )
`77982434#TMSN.png( bytes )
`77983303#TMSN.png( bytes )
`77786522#TMSN.png( bytes )
`77664171#TMSN.png( bytes )
`86183164#TMSN.png( bytes )
`85976944#TMSN.png( bytes )
`77983185#TMSN.png( bytes )
`77786492#TMSN.png( bytes )
`85554241#TMSN.png( bytes )
`85978526#TMSN.png( bytes )
`87231872#TMSN.png( bytes )
`86963179#TMSN.png( bytes )
`86390009#TMSN.png( bytes )
`88370153#TMSN.png( bytes )
`85978529#TMSN.png( bytes )
`86258414#TMSN.png( bytes )
`87533284#TMSN.png( bytes )
`86979579#TMSN.png( bytes )
`86680856#TMSN.png( bytes )
`86680928#TMSN.png( bytes )
`86983438#TMSN.png( bytes )
`Notice of Opposition - FARMBEATS and MICROSOFT FARMBEATS by Mi-
`crosoft SN 88410084 and 88411078.pdf(118633 bytes )
`
`Signature
`
`/Michael G. Kelber/
`
`Name
`
`Date
`
`Michael G. Kelber
`
`07/20/2020
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`BEATS ELECTRONICS, LLC
`
`
`
` v.
`
`MICROSOFT CORPORATION.
`
`
`
`Applicant.
`
`
`Opposer,
`
`
`
`
`Opposition No.
`
`
`
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`Beats Electronics, LLC (“Beats”), a limited liability company organized under the laws of
`
`Delaware with a place of business at 8600 Hayden Place, Culver City, CA 90232, believes that it
`
`will be damaged by the registration of the marks FARMBEATS and MICROSOFT FARMBEATS
`
`in International Class 09, as shown in Application Serial Nos. 88/410,084 and 88/411,078 (the
`
`“Applications”) filed by Microsoft Corporation (“Applicant”), and therefore hereby opposes the
`
`same and requests that registration to Applicant be refused.
`
`The grounds for Beats’ Opposition are as follows:
`
`1.
`
`Beats is the owner of numerous trademarks consisting of or incorporating
`
`“BEATS” that have been utilized in connection with well-known, high-quality audio- and music-
`
`related products and services. Products sold under Beats’ trademarks are among the most popular
`
`audio-related products in the United States, have been extensively promoted and advertised, and
`
`have been the subject of extensive unsolicited publicity resulting from their high-quality,
`
`innovative design and well-received marketing campaigns.
`
`
`
`
`
`

`

`Beats’ Prior Rights
`
`2.
`
`Since substantially prior to the acts of Applicant alleged herein, Beats has owned a
`
`variety of marks consisting of or incorporating “BEATS,” which have been utilized in connection
`
`with the distribution and sale of audio-related products, technology, and entertainment services.
`
`3.
`
`Beats owns multiple U.S. federal registrations for marks consisting of or
`
`incorporating “BEATS,” including the following:
`
`MARK
`
`BEATS
`BEATS
`BEATS
`
`BEATS
`
`BEATS
`BEATS
`
`
`
`INTERNATIONAL CLASS:
`GOODS & SERVICES
`IC 9: Headphones
`IC 9: Audio speakers; loudspeakers
`IC 9: Loudspeakers, audio speakers,
`car audio speakers
`
`REGISTRATION
`NUMBER
`3,862,142
`4,035,777
`4,361,690
`
`PRIORITY DATE
`
`June 3, 2008
`June 3, 2008
`February 5, 2009
`
`4,529,746
`
`July 21, 2009
`
`4,537,908
`5,448,731
`
`February 5, 2009
`February 3, 2014
`
`
`IC 9: Electronic cables, namely,
`audio electric cables and cable
`connectors; power cables and cable
`connectors; audio speakers for home
`theater systems.
`IC 25: Headgear, namely, caps, hats.
`IC 41: Provision of live
`entertainment and recorded
`entertainment, namely, live musical
`performances by musical bands and
`DJs; musical entertainment in the
`nature of live visual and audio
`performances by musical groups and
`DJs; exhibitions, namely,
`exhibitions concerning music;
`musical entertainment in the nature
`of live visual and audio
`performances by musical groups and
`DJs; exhibitions, namely,
`exhibitions concerning music.
`IC 9: Carrying cases for headphones
`IC 9: Speaker stands; Protective
`cases for speakers; Remote controls
`for speakers; Plug adaptors;
`Chargers for use with headphones
`and speakers; Carrying cases for
`headphones and portable speakers;
`
`2
`
`

`

`REGISTRATION
`NUMBER
`
`PRIORITY DATE
`
`4,177,191
`
`June 8, 2010
`
`4,176,105
`
`July 29, 2009
`
`4,572,603
`
`4,314,478
`4,314,930
`5,387,883
`
`July 21, 2009
`
`February 27, 2012
`March 9, 2012
`November 9, 2016
`
`5,188,070
`
`April 4, 2016
`
`4,937,568
`6,054,617
`
`March 9, 2014
`April 3, 2019
`
`MARK
`
`BEATS PRO
`
`BEATS BY DR.
`DRE
`
`BEATS BY DR.
`DRE
`BEATS STUDIO
`URBEATS
`BEATS X
`(stylized)
`
`BEATS EP
`
`POWERBEATS
`POWERBEATS
`PRO
`
`
`
`INTERNATIONAL CLASS:
`GOODS & SERVICES
`Portable speaker mount for bicycles;
`Computer software, namely,
`software for updating wireless
`speakers and headphones; Handheld
`devices for controlling speakers;
`Computer software for use in
`controlling speakers, amplifiers;
`Downloadable audio and video
`recordings featuring music, music
`performances, and music videos;
`Prerecorded music, namely, digital
`downloads; Computer software for
`use in the delivery, distribution and
`transmission of digital music and
`entertainment- related audio, video,
`text and multimedia content
`IC 9: Headphones; personal
`headphones for use with sound
`transmitting systems.
`IC 9: Audio speakers, car audio
`speakers, loudspeakers, headphones,
`personal headphones for use with
`sound transmitting systems.
`IC 9: Audio speakers for home
`theater systems
`IC 9: Headphones
`IC 9: Headphones
`IC 9: Earphones; audio cables;
`battery chargers, charging cables,
`and power adaptors for use with
`earphones; carrying cases for
`earphones
`IC 9: Audio speakers; loud speakers;
`earphones; headphones;
`microphones; electrical and
`electronic connectors, couplers,
`wires, cables, chargers, docks,
`docking stations, interfaces, and
`adapters for use with all of the
`aforesaid goods; covers, bags and
`cases adapted or shaped to contain
`audio players
`IC9: Earphones, audio cables
`IC9: Headphones; earphones;
`earbuds; battery chargers, charging
`cables for use with headphones,
`earphones, and earbuds; carrying
`cases for headphones, earphones,
`
`3
`
`

`

`MARK
`
`BEATS PILL
`BEATSAUDIO
`
`INTERNATIONAL CLASS:
`GOODS & SERVICES
`and earbuds; protective covers, bags,
`and cases adapted and shaped for
`holding headphones, earphones, and
`earbuds
`IC 9: Audio speakers; loudspeakers
`IC 9: Computers; car speakers
`
`REGISTRATION
`NUMBER
`
`PRIORITY DATE
`
`4,314,931
`5,428,637
`
`January 9, 2012
`April 21, 2014
`
`BEATS SOLO
`
`IC 9: Headphones
`
`5,396,184
`
`July 19, 2017
`
`5,028,678
`
`July 1, 2015
`
`5,715,751
`
`July 1, 2015
`
`5,715,752
`
`April 29, 2015
`
`
`
`BEATS 1
`
`BEATS 1
`
`BEATS 1
`
`IC 38: Broadcasting of voice, music,
`audio, video, multimedia via radio
`by means of telecommunications
`networks; broadcast and
`transmission of streamed music,
`audio, video, and multimedia
`content by means of
`telecommunications networks
`IC 38: Providing access to digital
`music websites on the internet,
`online forums for transmission of
`messages among computer users
`concerning music, streaming audio
`material on the internet
`IC 41: Entertainment competitions
`in the field of music, and music
`contests, providing non-
`downloadable playback of pre-
`recorded music via a global
`computer network; providing an
`Internet website portal featuring
`links to musical artist websites and
`music performance and event
`information; providing a website
`featuring the ratings, reviews, and
`personal recommendations of users
`on events and activities in the field
`of music and music concerts, live
`performances, fairs, festivals,
`exhibition, expositions; providing
`non-downloadable pre-recorded
`music, and music videos for use on
`mobile communications devices via
`a global computer network and
`wireless networks.
`
`
`
`
`4
`
`

`

`MARK
`
`BEATS 1
`
`
`
`4.
`
`REGISTRATION
`NUMBER
`5,387,349
`
`
`
`PRIORITY DATE
`
`April 29, 2015
`
`INTERNATIONAL CLASS:
`GOODS & SERVICES
`IC 41: Arranging, organizing,
`conducting, and presenting concerts,
`live music performances, music
`special events; production,
`distribution, and presentation of
`radio programs and sound
`recordings in the fields of
`entertainment news, music;
`providing ongoing radio and audio
`programs in the fields of
`entertainment news, music;
`providing radio, internet, and
`satellite music programming by
`means of telecommunications
`networks, computer networks, the
`Internet, satellite, radio, and wireless
`communications networks;
`provision of live entertainment,
`namely, musical performances;
`providing websites featuring
`information in the field of music;
`entertainment services, namely,
`providing on-line music reviews
`
`
`Many of Beats’ registrations for marks consisting of or incorporating “BEATS”
`
`have become incontestable, including Reg. Nos. 3,862,142; 4,035,777; 4,177,191; 4,176,105;
`
`4,314,478; 4,314,930; 4,314,931; 4,361,690; and 4,572,603.
`
`5.
`
`Through the common law use and registration of various marks consisting of or
`
`incorporating “BEATS,” Beats has created a family of marks such that consumers have become
`
`accustomed to seeing and therefore recognizing products and services with BEATS-based marks
`
`as originating from Beats (hereinafter referred to as the “family of BEATS marks” or “the BEATS
`
`Marks”). The public has come to recognize the common characteristic of the family of BEATS
`
`marks (the term BEATS in each of them) as indicating the source of these goods, namely, Beats.
`
`6.
`
`Beats has devoted substantial resources, time, and effort to develop, market, and
`
`promote its BEATS Marks. Through these efforts, and long before the filing of the Applications,
`
`
`
`5
`
`

`

`Beats built up and established extensive and valuable goodwill in the BEATS Marks. As a result,
`
`the public has come to know, identify, and recognize products and services bearing or marketed in
`
`association with marks incorporating the term “BEATS” as originating with or authorized by
`
`Beats.
`
`7.
`
`Furthermore, through Beats’ efforts, the BEATS Marks, both individually and
`
`collectively, have become famous and had become famous prior to Applicant’s filing of the
`
`Application.
`
`Beats Will Be Harmed If Applicant’s Mark Registers
`
`8.
`
`On information and belief, Applicant is a corporation organized under the laws of
`
`Washington with an address of record at One Microsoft Way, Redmond, Washington 98052.
`
`9.
`
`On April 30, 2019, notwithstanding Beats’ prior rights in and to the BEATS Marks,
`
`Applicant filed Application Ser. No. 88/410,084 to register FARMBEATS (“Applicant’s Mark”)
`
`for use in connection with, in relevant part, “ Apparatus and instruments for conducting, switching,
`
`transforming, accumulating, regulating or controlling electricity; apparatus for recording,
`
`transmission or reproduction of sound or images; blank magnetic data carriers in the nature of
`
`recording discs; calculating machines; satellites for scientific purposes; computers; computer
`
`hardware, robots, peripheral devices and downloadable computer software for collecting,
`
`processing, monitoring, analyzing, transmitting, storing and managing data relating to agriculture
`
`and farming and for making predictions about farming trends, yields, diseases, pests, and other
`
`threats to agricultural production; electronic devices, namely, mobile phones, cameras, aerial
`
`machines in the nature of meteorological balloons, weather balloons and helium balloons, and
`
`sensors for collecting, processing, monitoring, analyzing, transmitting, storing and managing data
`
`relating to agriculture and farming; robots, computer hardware and downloadable software for
`
`
`
`6
`
`

`

`connecting, operating and managing farms and agricultural projects using technologies that
`
`include the Internet of Things (IoT), blockchain, Software as a Service (SaaS), Platforms as a
`
`Service (PaaS) and artificial intelligence; wireless communication devices for voice, data, or image
`
`transmission; sensors and detectors for analyzing water, nutrients, crops, disease, farming methods
`
`and production threats relating to agriculture and farming; aerial and ground based plant-imaging
`
`machines for agricultural use, namely, cameras and imaging sensors; solar panels for the
`
`production of electricity; solar batteries” in International Class 09. On May 1, 2019, Applicant
`
`filed Application Ser. No. 88/411,078 to register MICROSOFT FARMBEATS in connection with
`
`the same goods in International Class 09. The Applications were filed under Lanham Act §§1(b)
`
`and 44(d) but are now based only on Applicant’s intent to use the marks.
`
`10.
`
`The Applications were published in the Official Gazette (Trademarks) of the United
`
`States Patent and Trademark Office on January 21, 2020. This Opposition is timely pursuant to 15
`
`U.S.C. § 1063(a) and the Board’s orders dated February 19, 2020, granting Beats’ request for a
`
`90-day extension of time to oppose, and May 20, 2020, granting Beats’ consented request for a
`
`further 60-day extension until July 19, 2020 to file a Notice of Opposition.
`
`11.
`
`There is no issue of priority. Each of the foregoing registrations for the BEATS
`
`Marks has been in actual use or has a constructive use date prior to Applicant’s filing dates of
`
`April 30, 2020 and May 1, 2019.
`
`12.
`
`The goods set forth in the Applications in International Class 09 are identical,
`
`similar, or complementary and related to the products and services marketed under the BEATS
`
`Marks. For example, the Applications cover “apparatus for recording, transmission or reproduction
`
`of sound or images,” which encompasses the “headphones” and “earphones” covered by many of
`
`Beats’ registrations, including Reg. Nos. 3,862,142 and 4,177,191, as well as the “audio speakers”
`
`
`
`7
`
`

`

`and “loudspeakers” covered by Beats’ registrations such as Reg. Nos. 4,035,777 and 4,361,690.
`
`These goods are also related and complementary to goods and services covered by Beats’
`
`registrations, including “production, distribution, and presentation of radio programs and sound
`
`recordings in the fields of entertainment news, music; providing ongoing radio and audio programs
`
`in the fields of entertainment news, music; providing radio, internet, and satellite music
`
`programming by means of telecommunications networks, computer networks, the Internet,
`
`satellite, radio, and wireless communications networks” (Reg. No. 5,387,349) and “providing non-
`
`downloadable playback of pre-recorded music via a global computer network” (Reg. No.
`
`5,715,752). The Applications also cover “computers,” which are also covered by Beats’ Reg. Nos.
`
`5,428,637, and which are complementary to the “Computer software, namely, software for
`
`updating wireless speakers and headphones; Handheld devices for controlling speakers; Computer
`
`software for use in controlling speakers, amplifiers; Downloadable audio and video recordings
`
`featuring music, music performances, and music videos; Prerecorded music, namely, digital
`
`downloads; Computer software for use in the delivery, distribution and transmission of digital
`
`music and entertainment- related audio, video, text and multimedia content” covered by Beats’
`
`Reg. No. 5,448,731.
`
`13.
`
`Applicant’s advertising and use of Applicant’s Mark as contemplated in the
`
`Application will inevitably reach the same consumers that Beats targets with the use of its family
`
`of Beats Marks.
`
`14.
`
`Consumers, upon seeing Applicant’s Mark used in connection with Applicant’s
`
`goods, are likely to mistakenly believe that Applicant’s Mark, and the goods provided in
`
`connection with it, originated from or are connected with, sponsored by, associated with, or
`
`licensed or approved by Beats.
`
`
`
`8
`
`

`

`
`
`15.
`
`The BEATS Marks and Applicant’s Mark share the virtually and phonetically
`
`identical element “beats.” Moreover, multiple of the BEATS Marks combine the term “beats”
`
`preceded by additional terms – e.g., URBEATS and POWERBEATS. Thus, the BEATS Marks,
`
`both individually and collectively, are substantially similar in sight, sound, and meaning to
`
`Applicant’s Marks.
`
`16.
`
`Accordingly, Applicant’s Marks are confusingly similar to the previously used
`
`BEATS Marks, both individually and collectively, and therefore, if Applicant’s Marks were
`
`allowed to register for the goods covered by the Applications in International Class 09, such
`
`registration would likely cause confusion, mistake, or deception among consumers concerning the
`
`origin, source or sponsorship of Ap