Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1073730
`08/10/2020
`
`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
`
`Take-Two Interactive Software, Inc.
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`08/09/2020
`
`110 WEST 44TH STREET
`NEW YORK, NY 10036
`UNITED STATES
`
`ANDREA L. CALVARUSO
`KELLEY DRYE & WARREN
`101 PARK AVENUE
`NEW YORK, NY 10178
`UNITED STATES
`Primary Email: trademarks@kelleydrye.com
`2128087800
`
`Docket Number
`
`Applicant Information
`
`Application No.
`
`88367377
`
`Publication date
`
`02/11/2020
`
`Opposition Filing
`Date
`
`Applicant
`
`08/10/2020
`
`Opposition Peri-
`od Ends
`
`08/09/2020
`
`Kyra Solutions, Inc.
`4454 FLORIDA NATIONAL DRIVE
`LAKELAND, FL 33813
`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: Downloadable software for use as a web-
`browser based application for automatingthe collection, organization, inventoryand display of data re-
`lating to geological surveys; downloadable computer software for development of a web-browser
`based application and establishing communication between the web-browser based application and a
`server
`
`Class 042. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Online, non-downloadable web-browser
`based applications for automating the collection, organization, inventory and display of data relating
`to geological surveys; online, non-downloadable web-browserbased applications for establishing
`communications between web-browsers and servers relating to geological surveys, natural re-
`sources, governmental regulatory compliance and governmental regulatory processes
`
`

`

`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.
`
`2456387
`
`Registration Date
`
`05/29/2001
`
`Application Date
`
`11/15/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`ROCKSTAR GAMES
`
`NONE
`
`Class 009. First use: First Use: 1999/04/01 First Use In Commerce: 1999/04/01
`COMPUTER GAMES SOFTWARE AND VIDEO GAME PROGRAMS
`
`U.S. Registration
`No.
`
`3905775
`
`Registration Date
`
`01/11/2011
`
`Application Date
`
`01/05/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`ROCKSTAR FILMS
`
`NONE
`
`Class 009. First use: First Use: 2010/10/19 First Use In Commerce: 2010/10/19
`Computer game programs and software
`Class 041. First use: First Use: 2010/05/15 First Use In Commerce: 2010/05/15
`entertainment services in the nature ofa live-action and/or animated television
`program series
`
`U.S. Registration
`No.
`
`4034064
`
`Registration Date
`
`10/04/2011
`
`Application Date
`
`12/21/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`ROCKSTAR FILMS
`
`NONE
`
`Class 009. First use: First Use: 2010/10/19 First Use In Commerce: 2010/10/19
`Animated motion picture films featuringentertainment, namely, action, adven-
`ture, dramatic, comedic, children's and documentary themes; pre-recorded video
`discs and other pre-recorded digital and electronic media in the field of live ac-
`tion programs, motion pictures, or animation featuring entertainment, namely,
`action, adventure, dramatic, comedic, children's and documentary themes
`
`U.S. Registration
`No.
`
`4037654
`
`Registration Date
`
`10/11/2011
`
`Application Date
`
`12/22/2010
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`ROCKSTAR GAMES
`
`NONE
`
`Class 009. First use: First Use: 1999/04/01 First Use In Commerce: 1999/04/01
`Animated motion picture films featuringentertainment, namely, action, adven-
`ture, dramatic, comedic, children's and documentary themes; computer and
`video gamesoftware, and related programs and software, namely, screensavers,
`digital music files, videos, films and other multimedia materials, all featuring en-
`tertainment, namely, action, adventure, dramatic,comedic, children's and docu-
`mentary themes, all delivered via pre-recorded discs and other pre-recorded
`media and via downloadable delivery on global computer networks and wireless
`networks; pre-recorded discs and other pre-recorded digital and electronic me-
`dia in the field of live action programs, motion pictures, oranimation featuring en-
`tertainment, namely, action, adventure, dramatic, comedic, children's and docu-
`mentary themes
`Class 041. First use: First Use: 1999/04/01 First Use In Commerce: 1999/04/01
`Entertainment services, namely, providing a website featuring use of non-
`downloadable computer and video games, and news, information, tips, hints,
`contests, computer interface themes and enhancements, audio-visual content,
`music, films, videos, television programs, animated series, and other multimedia
`materials, allnon-downloadable and all in the field of computer games and video
`games; providing information, news and commentary in the field of computer
`games and video games
`
`U.S. Registration
`No.
`
`4274517
`
`Registration Date
`
`01/15/2013
`
`Application Date
`
`02/22/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`ROCKSTAR NORTH
`
`NONE
`
`Class 009. First use: First Use: 2002/10/31 First Use In Commerce: 2002/10/31
`Computer and video game programs and software; downloadable computer and
`video game programs and software; downloadabledigital materials namely,
`videos, films, multimedia files, animated films in the field of video games and
`computer games, all delivered via global computer networks and wireless net-
`works; pre-recorded digital media featuring computer gamesand video games,
`graphics, videos, films, multimedia files, animated films in the field of video
`games and computer games; and pre-recorded video discs and other pre-
`recorded digital and electronic media in the field of live action programs, motion
`pictures, or animation featuring entertainment, namely, action, adventure, dra-
`matic, comedic, children's and documentary themes
`Class 041. First use: First Use: 2002/10/31 First Use In Commerce: 2002/10/31
`Entertainment services, namely, providing online games, providing a website
`featuring news and information in the fieldof computer games and video games;
`providing information, news and commentary in the field of computer games and
`video games; and animated motion picture filmsfeaturing entertainment, namely,
`action, adventure, dramatic, comedic, children's and documentary themes
`
`U.S. Registration
`No.
`
`4171931
`
`Application Date
`
`03/28/2008
`
`Registration Date
`
`07/10/2012
`
`Foreign Priority
`
`NONE
`
`

`

`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`ROCKSTAR GAMES SOCIAL CLUB
`
`Date
`
`NONE
`
`Class 041. First use: First Use: 2008/03/31 First Use In Commerce: 2008/03/31
`Entertainment services, namely, production of computer programs and software
`for entertainment purposes; and providing information in the fields of computer
`games and entertainment via the Internet
`
`U.S. Registration
`No.
`
`4303689
`
`Registration Date
`
`03/19/2013
`
`Application Date
`
`11/17/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`ROCKSTAR GAMES
`
`NONE
`
`Class 028. First use: First Use: 2003/10/31 First Use In Commerce: 2003/10/31
`Games, toys, and playthings, namely, toy action figures and accessories there-
`for
`
`U.S. Registration
`No.
`
`4519873
`
`Registration Date
`
`04/29/2014
`
`Application Date
`
`10/07/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`ROCKSTAR PASS
`
`NONE
`
`Class 009. First use: First Use: 2011/05/30 First Use In Commerce: 2011/05/30
`Computer game software downloadable from a global computer network
`Class 041. First use: First Use: 2011/05/30 First Use In Commerce: 2011/05/30
`Entertainment services, namely, providing a website featuring information in the
`field of video games
`
`U.S. Registration
`No.
`
`4773125
`
`Registration Date
`
`07/14/2015
`
`Application Date
`
`02/12/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`ROCKSTAR TV
`
`NONE
`
`Class 041. First use: First Use: 2015/05/01 First Use In Commerce: 2015/05/01
`entertainment services, namely, providing audio-visual content, films, videos,
`television programs, animated series, and other multimedia materials in the field
`of computer games and video games; entertainment services in the form of
`providing a series of animated television programs featuring comedy
`
`

`

`U.S. Registration
`No.
`
`4832117
`
`Registration Date
`
`10/13/2015
`
`Application Date
`
`02/09/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`ROCKSTAR TV
`
`NONE
`
`Class 009. First use: First Use: 2015/05/01 First Use In Commerce: 2015/05/01
`animated motion picture films featuringentertainment, namely, action, adventure,
`dramatic, comedic, children's and documentary themes
`
`U.S. Registration
`No.
`
`5715643
`
`Registration Date
`
`04/02/2019
`
`Application Date
`
`09/09/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`ROCKSTAR STUDIOS
`
`NONE
`
`Class 009. First use: First Use: 2012/05/15 First Use In Commerce: 2012/05/15
`Computer and video game programs and software; downloadable computer and
`video game programs and software; downloadabledigital materials, namely, ring
`tones, wallpapers, screensavers, digital music files, and graphics, videos, films,
`multimedia files, and animated films in the field of video games and computer
`games,all delivered via global computer networks and wireless networks; pre-
`recorded digital media featuring computer games and video games, ring tones,
`wallpapers, screensavers, digital music files, and graphics, videos, films, multi-
`media files, and animated films in the field of video games and computer games;
`and pre-recorded video discs and other pre-recordeddigital and electronic media
`in the field of live action programs, motion pictures, or animation featuring enter-
`tainment, namely, action, adventure, dramatic, comedic, children's and docu-
`mentary themes; animated motion picture films featuring entertainment, namely,
`action, adventure, dramatic, comedic, children's and documentary themes
`Class 016. First use: First Use: 2012/05/15 First Use In Commerce: 2012/05/15
`Printed materials, namely, books, pamphlets, and manuals in the field of video
`games; posters
`Class 041. First use: First Use: 2011/09/14 First Use In Commerce: 2011/09/14
`Providing a website featuring non-downloadable computer and video games,
`news, information, films, animated films, and other multimedia materials in the
`field of computer games and video games; providing information, news and
`commentary inthe field of computer games and video games
`
`U.S. Registration
`No.
`
`4843249
`
`Registration Date
`
`11/03/2015
`
`Application Date
`
`05/18/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`ROCKSTAR WAREHOUSE
`
`NONE
`
`Goods/Services
`
`Class 035. First use: First Use: 2001/08/08 First Use In Commerce: 2001/08/08
`
`

`

`online retail store services featuring computer games, dvds, and apparel,
`namely, shirts, t-shirts, sweatshirts, casualand leisure jackets; headgear,
`namely, hats and caps
`
`U.S. Registration
`No.
`
`5639907
`
`Registration Date
`
`01/01/2019
`
`Application Date
`
`03/28/2007
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`U.S. Application
`No.
`
`ROCKSTAR
`
`NONE
`
`Class 025. First use: First Use: 2001/08/21 First Use In Commerce: 2001/08/21
`Clothing, namely, shirts, t-shirts, sweatshirts, casual and leisure jackets;
`headgear, namely, hats and caps
`
`77614881
`
`Application Date
`
`11/14/2008
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`ROCKSTAR GAMES
`
`NONE
`
`Class 041. First use: First Use: 1999/04/30 First Use In Commerce: 1999/04/30
`Entertainment services, namely, providing online computer games and video
`games, providing a website featuring online non-downloadable computer games
`and videogames, and news, information, tips, hints, contests, computer interface
`themes,enhancements, audio-visual content, music, films, videos, television pro-
`grams, animated series, and multimedia entertainment content; providing in-
`formation, news and commentary in the field of computer games and video
`games
`Class 042. First use: First Use: 1999/04/30 First Use In Commerce: 1999/04/30
`Design and production of computer game software, video game software, and
`software for entertainment purposes; computerprogramming services
`
`U.S. Application
`No.
`
`86617422
`
`Application Date
`
`05/01/2015
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`ROCKSTAR TV
`
`NONE
`
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`Computer game programs and software; animated motion picture films featuring
`entertainment, namely, action, adventure, dramatic, comedic, children's and
`documentary themes; pre-recorded video discs and other pre-recorded digital
`and electronic media in the nature of optical discs, DVDs, Blu-Ray Discs, HD-
`DVDs, and downloadable files in the field of live action programs, motion pic-
`tures, or animation featuring entertainment, namely, action, adventure, dramatic,
`comedic, children's and documentary themes
`
`

`

`Class 041. First use: First Use: 0 First Use In Commerce: 0
`Entertainment services, namely, providing online games and providing a website
`featuring use of non-downloadable computer games and video games, and
`news, information, tips, hints, contests, non-downloadable computer interface
`themes, non-downloadable game enhancements, and non-downloadable music
`all in the field of or relating to computer games and video games; providing in-
`formation, news and commentary in the field of computer games and video
`games; providing digital video, audio and multimedia entertainment publishing
`services via the Internet and other communication and wireless networks
`
`U.S. Application
`No.
`
`77715935
`
`Application Date
`
`04/17/2009
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`ROCKSTAR
`
`The mark consists of the word "ROCKSTAR" with a star connected to the bot-
`tom right of the final "R".
`
`Class 025. First use: First Use: 2001/10/01 First Use In Commerce: 2001/10/01
`clothing, namely, shirts, t-shirts, sweatshirts, casual and leisure jackets;
`headgear, namely, caps
`
`U.S. Registration
`No.
`
`3695041
`
`Registration Date
`
`10/13/2009
`
`Application Date
`
`11/18/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`R
`
`NONE
`
`Class 041. First use: First Use: 1999/10/30 First Use In Commerce: 1999/10/30
`Arranging and conducting special eventsand parties
`
`U.S. Registration
`No.
`
`3843554
`
`Registration Date
`
`09/07/2010
`
`Application Date
`
`11/14/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`R
`
`The mark consists of a stylized "R" with a star on the right.
`
`Class 041. First use: First Use: 1999/04/30 First Use In Commerce: 1999/04/30
`entertainment services, namely, providing online games, providing a website
`featuring computer games and video games, and news, information, tips, hints,
`contests, computer interface themes, enhancements, audio-visual content, mu-
`sic, films, videos, television programs, animated series, and other multimedia
`materials in the field of computer games and video games; providing informa-
`tion, news and commentary in the field of computer gamesand video games
`
`U.S. Registration
`No.
`
`3992563
`
`Application Date
`
`09/02/2010
`
`Registration Date
`
`07/12/2011
`
`Foreign Priority
`
`NONE
`
`

`

`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`Date
`
`R
`
`NONE
`
`Class 041. First use: First Use: 1999/11/17 First Use In Commerce: 1999/11/17
`Entertainment services, namely, providing on-line prerecorded nondownload-
`able, music, films, and movies via a global computer network
`
`U.S. Registration
`No.
`
`4034074
`
`Registration Date
`
`10/04/2011
`
`Application Date
`
`12/22/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`R
`
`NONE
`
`Class 009. First use: First Use: 2010/10/19 First Use In Commerce: 2010/10/19
`Animated motion picture films featuringentertainment, namely, action, adven-
`ture, dramatic, comedic, children's and documentary themes; computer and
`video gameprograms and software, and related programs and software, namely,
`screensavers,digital music files, videos, films and other multimedia materials, all
`featuring entertainment, namely, action, adventure, dramatic, comedic, chil-
`dren's and documentary themes, all delivered via pre-recorded discs and other
`pre-recorded media and via downloadable delivery on global computer networks
`and wireless networks; pre-recorded discs and other pre-recorded digital and
`electronic media in the field of live action programs, motionpictures, or animation
`featuring entertainment, namely, action, adventure, dramatic, comedic, chil-
`dren's and documentary themes
`Class 041. First use: First Use: 1999/04/30 First Use In Commerce: 1999/04/30
`Entertainment services, namely, providing online computer and video games,
`providing a website featuring use of non-downloadable computer and video
`games, and news, information, tips, hints, contests, computer interface themes
`and enhancements, audio-visual content, music, films, videos, television pro-
`grams, animated series, and other multimedia materials, all non-downloadable
`and all in the field of computer games and video games; providing information,
`news and commentary in the field of computer games and videogames
`
`U.S. Registration
`No.
`
`3619405
`
`Registration Date
`
`05/12/2009
`
`Application Date
`
`11/18/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`R
`
`NONE
`
`Class 009. First use: First Use: 2006/12/13 First Use In Commerce: 2006/12/13
`Downloadable music, ringtones, graphics, and wallpaper via the Internet and
`mobile devices
`Class 035. First use: First Use: 2006/12/13 First Use In Commerce: 2006/12/13
`On-line retail store services featuringdownloadable sound, music, image,
`videoand game files
`
`

`

`U.S. Registration
`No.
`
`2855543
`
`Registration Date
`
`06/22/2004
`
`Application Date
`
`05/14/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`R ROCKSTAR GAMES
`
`NONE
`
`Class 009. First use: First Use: 1999/04/01 First Use In Commerce: 1999/04/01
`Computer game software and video game programs
`
`U.S. Registration
`No.
`
`2391635
`
`Registration Date
`
`10/03/2000
`
`Application Date
`
`11/15/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`R
`
`NONE
`
`Class 009. First use: First Use: 1999/04/01 First Use In Commerce: 1999/04/01
`COMPUTER GAMES SOFTWARE AND VIDEO GAME PROGRAMS
`
`U.S. Registration
`No.
`
`3351855
`
`Registration Date
`
`12/11/2007
`
`Application Date
`
`05/04/2007
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`R
`
`The mark consists of a stylized R with a star on the right.
`
`Class 009. First use: First Use: 1999/10/31 First Use In Commerce: 1999/10/31
`Entertainment software, namely, game discs and downloadable game software
`for use with personal computers, video game consoles, hand held gaming
`devices
`
`U.S. Registration
`No.
`
`3616037
`
`Registration Date
`
`05/05/2009
`
`Application Date
`
`12/18/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`R
`
`NONE
`
`Class 016. First use: First Use: 1999/11/09 First Use In Commerce: 1999/11/09
`printed matter, namely books, pamphlets, strategy guides and manuals in the
`field of video games; posters; stickers
`
`U.S. Registration
`No.
`
`3950918
`
`Application Date
`
`09/02/2010
`
`

`

`Registration Date
`
`04/26/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`R
`
`NONE
`
`Class 009. First use: First Use: 2000/11/28 First Use In Commerce: 2000/11/28
`sound recordings featuring music and digital music downloadable from the Inter-
`net and wireless devices
`
`U.S. Registration
`No.
`
`4216755
`
`Registration Date
`
`10/02/2012
`
`Application Date
`
`11/17/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`R
`
`NONE
`
`Class 028. First use: First Use: 2003/10/31 First Use In Commerce: 2003/10/31
`Games, toys, and playthings, namely, dolls, toy action figures and accessories
`therefor
`
`U.S. Registration
`No.
`
`3631311
`
`Registration Date
`
`06/02/2009
`
`Application Date
`
`11/18/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`R
`
`NONE
`
`Class 025. First use: First Use: 2001/08/21 First Use In Commerce: 2001/08/21
`Men, women and children's clothing, namely, shirts, t-shirts, sweatshirts, casual
`and leisure jackets; headgear, namely, hats and caps
`
`U.S. Registration
`No.
`
`3956410
`
`Registration Date
`
`05/10/2011
`
`Application Date
`
`12/05/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`R EST. 1998
`
`The mark consists of a design element of a double gryphon with a crown above
`and the wording "EST. 1998" below. At the center of the double gryphon is the
`letter "R" and a five point star at the bottom right of the "R".
`
`Class 035. First use: First Use: 2001/08/08 First Use In Commerce: 2001/08/08
`online retail store services featuring computer games, DVDs, posters, printed
`publications, bags, toys and apparel, namely, shirts, t-shirts, sweatshirts, casual
`and leisure jackets, and headgear, namely, hats and caps
`
`Attachments
`
`FINAL Notice of Opposition - ROCSTAR - Kyra - US App
`
`

`

`88367377.pdf(1192184 bytes )
`
`Signature
`
`/Andrea L. Calvaruso/
`
`Name
`
`Date
`
`ANDREA L. CALVARUSO
`
`08/10/2020
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`IN THE MATTER OF TRADEMARK APPLICATION SERIAL NO. 88/367,377
`PUBLISHED IN THE OFFICIAL GAZETTE ON FEBRUARY 11, 2020
`
`
`TAKE-TWO INTERACTIVE
`SOFTWARE, INC.,
`
`
`
`Opposer,
`
`
`
`v.
`
`KYRA SOLUTIONS, INC.,
`
`Applicant.
`
`MARK: ROCSTAR
`
`
`
`
`
`
`
`
`
`OPPOSITION NO.:
`
`
`
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`Take-Two Interactive Software, Inc. (“Take-Two” or “Opposer”) is a corporation
`
`organized under the laws of Delaware with a principal place of business at 110 West 44th Street,
`
`New York, New York 10036. Opposer believes its trademark and/or service mark rights will be
`
`damaged by the registration of the mark ROCSTAR (the “Disputed Mark”) by Applicant Kyra
`
`Solutions, Inc. (“Applicant”) for “Downloadable software for use as a web-browser based
`
`application for automating the collection, organization, inventory and display of data relating to
`
`geological surveys; downloadable computer software for development of a web-browser based
`
`application and establishing communication between the web-browser based application and a
`
`server” in Class 9 and “Online, non-downloadable web-browser based applications for
`
`automating the collection, organization, inventory and display of data relating to geological
`
`surveys; online, non-downloadable web-browser based applications
`
`for establishing
`
`communications between web-browsers and servers relating to geological surveys, natural
`
`
`
`
`
`1
`
`

`

`resources, governmental regulatory compliance and governmental regulatory processes” in Class
`
`42 (collectively, “Applicant’s Goods and Services”) covered by the above-identified application
`
`serial no. 88/367,377 (the “Application”) and, having been granted a first extension of time to
`
`oppose the Application up to and including June 10, 2020, and a further extension of time to
`
`oppose the Application with Applicant’s consent up to and including August 9, 2020, hereby
`
`opposes the same.
`
`The grounds for opposition are as follows:
`
`1.
`
`Opposer is a leading worldwide developer, marketer, and publisher of interactive
`
`entertainment, including software, video games, computer games, mobile games, tablet games,
`
`multimedia content, interactive video and online entertainment services, and a wide array of
`
`related goods and services (together with the goods and services in Paragraphs 5-6 below,
`
`collectively referred to as, “Opposer’s Goods and Services”). Opposer’s Goods and Services are
`
`marketed and sold to consumers throughout the world, including the United States.
`
`2.
`
`As set forth in detail below, Opposer’s Goods and Services are marketed and sold
`
`under trade names, trademarks, and service marks comprising or containing the term
`
`ROCKSTAR and/or prominently featuring the letter “R” combined with a star design, used alone
`
`or with other words or designs (collectively, “Opposer’s ROCKSTAR Marks”). The iteration of
`
`Opposer’s ROCKSTAR Marks combining an R and a star design denotes and is understood by
`
`consumers to stand for the word “Rockstar”:
`
`3.
`
`Opposer is the parent company of the world famous video game publishing label
`
`Rockstar Games, Inc. (“Rockstar”). Rockstar has conducted business under the ROCKSTAR
`
`
`
`
`
`
`
`2
`
`

`

`house mark since 1998, long prior to April 2, 2019, the filing date of the Application. Rockstar
`
`uses the ROCKSTAR house mark in conjunction with additional words for a variety of goods
`
`and services. For example, Rockstar uses the marks ROCKSTAR TV, ROCKSTAR STUDIOS,
`
`and ROCKSTAR FILMS in connection with the development, production, marketing, offering,
`
`provision, and/or sale of numerous and diverse content, including television programs, across
`
`various mediums of promotion and distribution. Rockstar marks all of its software with the
`
`ROCKSTAR GAMES mark and each of its subsidiary development studios uses ROCKSTAR as
`
`a formative mark, including Rockstar North, Rockstar London, Rockstar Leeds, Rockstar
`
`Lincoln, Rockstar San Diego, Rockstar Toronto, Rockstar New England, and Rockstar India. In
`
`addition, Rockstar offers software users the opportunity to purchase the ROCKSTAR PASS
`
`subscription software package, entitling them to download add-on content for a particular game.
`
`Similarly, Rockstar offers extensive social networking and data services to its software users and
`
`website visitors under the ROCKSTAR GAMES SOCIAL CLUB mark. Rockstar also sells
`
`ROCKSTAR and R & Star branded goods, including apparel and other products, through the
`
`ROCKSTAR WAREHOUSE website.
`
`4.
`
`Beginning in 1999, Opposer, through its Rockstar subsidiary, has continuously
`
`used Opposer’s ROCKSTAR Marks to designate its world famous entertainment software,
`
`computer and video games, and related products and services. Opposer’s Goods and Services
`
`include some of the best-selling video games in the world, including the GRAND THEFT
`
`AUTO, RED DEAD REDEMPTION, MIDNIGHT CLUB, and MAX PAYNE series of video
`
`games. The GRAND THEFT AUTO series of games alone has collectively sold well over 300
`
`million copies, and Rockstar is one of the best-recognized and most successful game developers
`
`in the world. Grand Theft Auto V grossed over $1 billion in retail sales in only three days after
`
`
`
`
`
`3
`
`

`

`its September 2013 release, and has sold over 120 million units to date. In 2018, MarketWatch
`
`declared that Grand Theft Auto V is “the most financially successful media title of all time.” Red
`
`Dead Redemption II grossed over $725 million in retail sales in its opening weekend in October
`
`2018, at the time the biggest opening weekend for any entertainment release. Red Dead
`
`Redemption II has sold over 29 million units to date, and was the best-selling video game of
`
`2018 based on physical and digital sales in the United States. As an example of how popular
`
`Rockstar is—and how well known Opposer’s ROCKSTAR Marks are—a Google search for the
`
`phrase “ROCKSTAR GAMES” performed on August 7, 2020 yielded approximately
`
`109,000,000 results.
`
`5.
`
`Since adopting Opposer’s ROCKSTAR Marks, Opposer has expanded use of
`
`such marks to a broad variety of products and services, including without limitation, clothing,
`
`including but not limited to, hats, t-shirts, sweatshirts, and jackets; television programs; websites
`
`featuring news, information, animated films and other multimedia materials; animated motion
`
`picture films; games, toys, and playthings; special events and parties; magazines; manuals;
`
`guides; periodicals; books; pre-recorded video discs; pre-recorded digital music files and sound
`
`recordings; retail services featuring music; online streaming of music; music publishing services;
`
`providing downloadable music, ringtones, graphics, and wallpaper for mobile phones; online
`
`retail store services featuring computer games, DVDs, posters, printed publications, bags, toys
`
`and apparel; downloadable image, video and game files; and retail services featuring clothing.
`
`6.
`
`Opposer also operates an online store designated ROCKSTAR WAREHOUSE.
`
`Through this store, located at www.rockstarwarehouse.com, Opposer sells and distributes
`
`apparel and other products bearing Opposer’s ROCKSTAR Marks.
`
`
`
`
`
`4
`
`

`

`7.
`
`Opposer has continuously and prominently used Opposer’s ROCKSTAR Marks
`
`since their adoption. Opposer has extensively advertised and promoted Opposer’s ROCKSTAR
`
`Marks in connection with the many goods and services described above, and has achieved
`
`significant sales, exposure, and recognition of Opposer’s Goods and Services bearing or offered
`
`in connection with Opposer’s ROCKSTAR Marks.
`
`8.
`
`By virtue of Opposer’s longstanding use, advertisement, and promotion of
`
`Opposer’s ROCKSTAR Marks in connection with Opposer’s Goods and Services, these marks
`
`have developed enormous goodwill in the trade and among consumers and have become famous
`
`and associated in the mind of the public with Opposer’s Goods and Services.
`
`9.
`
`Opposer owns numerous federal trademark registrations and applications for
`
`Opposer’s ROCKSTAR Marks, including without limitation:
`
`A.
`
`B.
`
`C.
`
`D.
`
`Registration No. 2,456,387 for ROCKSTAR GAMES for “computer
`games software and video game programs” (Class 9), which issued May
`29, 2001, and has achieved incontestable status;
`
`Registration No. 3,905,775 for ROCKSTAR FILMS for “computer game
`programs and software” (Class 9); and “entertainment services in the
`nature of a live-action and/or animated television program series” (Class
`41), which issued on January 11, 2011, and has achieved incontestable
`status;
`
`Registration No. 4,034,064 for ROCKSTAR FILMS for “animated motion
`picture films featuring entertainment, namely, action, adventure, dramatic,
`comedic, children’s and documentary themes; pre-recorded video discs
`and other pre-recorded digital and electronic media in the field of live
`action programs, motion pictures, or animation featuring entertainment,
`namely, action, adventure, dramatic, comedic, children's and documentary
`themes” (Class 9), which issued on October 4, 2011, and has achieved
`incontestable status;
`
`Registration No. 4,037,654 for ROCKSTAR GAMES for
`“animated motion picture films featuring entertainment, namely, action,
`adventure, dramatic, comedic, children's and documentary themes;
`computer and video game software, and related programs and software,
`namely, screensavers, digital music files, videos, films and other
`multimedia materials, all featuring entertainment, namely, action,
`
`
`
`
`
`5
`
`

`

`adventure, dramatic, comedic, children's and documentary themes, all
`delivered via pre-recorded discs and other pre-recorded media and via
`downloadable delivery on global computer networks and wireless
`networks; pre-recorded discs and other pre-recorded digital and electronic
`media in the field of live action programs, motion pictures, or animation
`featuring entertainment, namely, action, adventure, dramatic, comedic,
`children's and documentary themes” (Class 9); and “entertainment
`services, namely, providing a website featuring use of non-downloadable
`computer and video games, and news, information, tips, hints, contests,
`computer interface themes and enhancements, audio-visual content, music,
`films, videos, television programs, animated series, and other multimedia
`materials, all non-downloadable and all in the field of computer games and
`video games; providing information, news and commentary in the field of
`computer games and video games” (Class 41), which issued October 11,
`2011, and has achieved incontestable status;
`
`Registration No. 4,