Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1075724
`08/18/2020
`
`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
`
`Google LLC
`
`08/19/2020
`
`1600 AMPHITHEATRE PARKWAY
`MOUNTAIN VIEW, CA 94043
`UNITED STATES
`
`DORI ANN HANSWIRTH
`ARNOLD & PORTER KAYE SCHOLER LLP
`250 WEST 55TH STREET
`NEW YORK, NY 10019-9710
`UNITED STATES
`Primary Email: trademarkdocketing@arnoldporter.com
`Secondary Email(s): dori.hanswirth@arnoldporter.com,
`palak.mayani@arnoldporter.com, jennifer.worksman@arnoldporter.com
`212-836-8000
`
`Docket Number
`
`0026064-0085
`
`Applicant Information
`
`Application No.
`
`88732565
`
`Publication date
`
`04/21/2020
`
`Opposition Filing
`Date
`
`Applicant
`
`08/18/2020
`
`Opposition Peri-
`od Ends
`
`08/19/2020
`
`GM Photo
`300 SUNSET AVE
`ENGLEWOOD, NJ 07631
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 2019/08/13 First Use In Commerce: 2019/08/13
`All goods and services in the class are opposed, namely: Camera tripods; Camera flashes; Connec-
`tion cables; Camera lens mounts; Lenses for cameras; Camera handles; Underwater cameras; Mi-
`crophones; Camera filters; Camera mounts and supports; Dashboard cameras; Camera hoods; Cam-
`era lens adapters; Wearable cameras; Lens hoods
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`No bona fide intent to use mark in commerce for
`identified goods or services
`
`Trademark Act Section 2(d)
`
`Trademark Act Section 1(b)
`
`

`

`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Application
`No.
`
`87643989
`
`Application Date
`
`10/12/2017
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`PIXEL
`
`NONE
`
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`Computer hardware; computers; tablet computers; smartphones; mobile
`phones; electronic devices for browsing computers and the Internet, providing
`access to theInternet, viewing information on globalcomputer networks, voice
`command and recognition, speech-to-text conversion, personal information
`management, voice anddata transmission, and hands-free use and remote con-
`trol of electronic devices;multifunctional electronic devices for voice and data
`transmission; handheld digital electronic devices for recording, organizing, trans-
`mitting, manipulating, and reviewing text, data, image, and audio files; wireless
`communication devicesfor voice, data and image transmission including voice,
`text and picture messaging, video and still image camera; wireless communica-
`tion device for providing real-time translation, for browsing the internet, for trans-
`mitting voice and data, for providing and managing personal information, and for
`providing hands-free use and control of computers, tablets, phones, and PDAs;
`computer and hardware microprocessor chips; computer and hardware chips for
`mobile devices, namely, laptops, handheld computers, tablets, wearable head-
`sets, mobile phones, and smartphones; data processing and machine learning
`systems composed of computer chips, computer hardware, and software; com-
`puteroperating software; computer application software for use with smart-
`phones, tablets, handheld computers, audio/video equipment, cameras, wear-
`able computers, smartwatches, and wearable computing devices, namely, for al-
`lowing the user to interact with, exchange data with, remotelycontrol and make
`optimal use of the features of all aforesaid mobile computing devices and for the
`retrieval, download,storage, transmission, and display of digital content, com-
`puter software, computer games, audio works, visual works, audiovisual works,
`electronic publications, books, movies, and music; computer software for voice
`command and recognition,speech-to-text conversion, personal information man-
`agement, and accessing, browsing, searching, downloading, and manipulating
`online databases, audio, video, and multimedia content; audio speakers; ear-
`buds; earphones; headphones; microphones; power adapters, battery chargers,
`electric charging cables, and cases specifically adapted for and used for char-
`gingearbuds, earphones, and headphones; cushions, pads, cases, covers, and
`protective covers specially adapted for mobile phones, smartphones, and elec-
`tronic devices; computer peripherals, namely, hands-free devices, headsets,
`keyboards, chargers, batteries, power adapters, stylusesand cables, all for use
`with computers,tablets, mobile phones, and smartphones
`Class 042. First use: First Use: 0 First Use In Commerce: 0
`Design, development, and testing services for others in the fields of integrated
`circuits, semiconductors, microprocessors, and computer hardware for signal
`processing, signal conversion, signal filtering, wireless communication, and au-
`dio, visual, and data processing
`
`U.S. Registration
`No.
`
`5091394
`
`Registration Date
`
`11/29/2016
`
`Application Date
`
`02/21/2013
`
`Foreign Priority
`Date
`
`10/12/2012
`
`

`

`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`PIXEL
`
`NONE
`
`Class 009. First use: First Use: 2015/12/08 First Use In Commerce: 2015/12/08
`Computers; laptop computers; tablet computers; mobile phones
`Class 042. First use: First Use: 2015/12/08 First Use In Commerce: 2015/12/08
`Technical support services, namely, troubleshooting in the nature of diagnosing-
`computer hardware
`
`U.S. Registration
`No.
`
`5537266
`
`Registration Date
`
`08/07/2018
`
`Application Date
`
`10/03/2017
`
`Foreign Priority
`Date
`
`09/11/2017
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`GOOGLE PIXEL BUDS
`
`NONE
`
`Class 009. First use: First Use: 2017/10/04 First Use In Commerce: 2017/11/00
`Audio speakers; earbuds; earphones; headphones; accessory ear cushions for
`earbuds, earphones, and headphones; accessory ear pads for earbuds,
`earphones, and headphones; microphones; remote controls for controlling mo-
`bile phones and tabletcomputers; remote controls for mobile phones and tablet
`computers for controlling volume, music, phone calls, and transmitting data; ap-
`paratus for recording, transmitting, recognizing, processing, and reproduction of
`sound; carrying cases and protective cases featuring battery charging devices,
`specially adapted for use with earbuds, earphones, and headphones; battery
`chargers for earbuds, earphones, and headphones; electric charging cables for
`earphones, earbuds, headphones, and charging cases; specially adapted carry-
`ing and charging cases featuring power supply connectors and battery charging
`devices for charging earphones and earbuds; power adapters for earphones,
`earbuds, and charging case
`
`U.S. Registration
`No.
`
`5097177
`
`Registration Date
`
`12/06/2016
`
`Application Date
`
`02/05/2016
`
`Foreign Priority
`Date
`
`08/13/2015
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`PIXEL C
`
`NONE
`
`Class 009. First use: First Use: 2015/12/08 First Use In Commerce: 2015/12/08
`Computer hardware; computers; laptop computers; tablet computers
`
`U.S. Registration
`No.
`
`5596276
`
`Registration Date
`
`10/30/2018
`
`Word Mark
`
`Design Mark
`
`G PIXEL
`
`Application Date
`
`10/03/2016
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`
`The mark consists of a stylized letter "G" in the colors red, yellow, green andblue
`
`

`

`Mark
`
`Goods/Services
`
`and the word "PIXEL" below in grey. The color white shown in the mark is back-
`ground only and is not claimed as a feature of the mark.
`
`Class 009. First use: First Use: 2016/10/04 First Use In Commerce: 2016/10/04
`Cases and protective covers for mobile phones and smartphones; computer
`hardware; computers; entertainment devices, namely, digital media streaming
`devices; computer peripherals, namely, hands-free devices, headsets, head-
`phones, chargers, batteries, power adapters, and cables
`
`U.S. Application
`No.
`
`87589996
`
`Application Date
`
`08/30/2017
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`GOOGLE PIXEL
`
`NONE
`
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`Computer software, namely user interface software for the customized and per-
`sonalized design of home screens for mobilephones, smartphones, tablet com-
`puters, laptops, and computers; computer operating software; computer brows-
`ing software,namely user interface software for the customized and personalized
`design of home screens for mobile phones, smartphones, tablet computers,
`laptops, and computers; computer software for providing access to the Internet;
`computer hardware; computers; desktop computers; laptop computers; tablet
`computers; smartphones; mobile phones; personal handheld devices,namely,
`computers, tablet computers, laptops, mobile phones, and smartphones for
`viewing information on global computernetworks, voice command and recogni-
`tion, speech-to-text conversion, personal information management, voice and
`data transmission, and hands-free use and remotecontrol of electronic devices;
`computerperipherals, namely, speakers, headsets, headphones, earbuds, key-
`boards, battery chargers, batteries, power adapters, styluses and cables
`
`Attachments
`
`BLUE PIXEL Notice of Opposition Final.pdf(24735 bytes )
`
`Signature
`
`/Dori Ann Hanswirth/
`
`Name
`
`Date
`
`Dori Ann Hanswirth
`
`08/18/2020
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`
`Opposer,
`
`v.
`
`GM PHOTO LLC,
`
`Applicant.
`
`Opposition No. __________
`
`Serial No. 88732565
`
`Mark: BLUE PIXEL
`
`Google LLC (“Google” or “Opposer”), a Delaware limited liability corporation with
`
`offices at 1600 Amphitheatre Parkway, Mountain View, California, 94043, believes it will
`
`be damaged by registration of the standard character word mark BLUE PIXEL (the “BLUE
`
`PIXEL Mark”), applied for by GM Photo, LLC (“Applicant”) for the goods in International
`
`Classes 9 as shown in Application Serial No. 88732565 (the “Application”), and having
`
`been granted an extension of time to oppose up to and including August 19, 2020, hereby
`
`opposes the same.
`
`As grounds for opposition, Google alleges that:
`
`Opposer and Its PIXEL Marks
`
`1.
`
`In 1998, Google introduced breakthrough technology enabling users to search
`
`and organize the vast quantities of information available on the internet. Eighteen years
`
`later, www.google.com remains an extremely popular search engine worldwide, and Google
`
`itself has become a leading technology company offering a wide variety of products and
`
`services.
`
`

`

`2.
`
`Among its array of innovative products and services, Google offers a variety
`
`of goods under the well-known mark PIXEL (the “PIXEL Mark”). Google launched the
`
`CHROMEBOOK PIXEL, its first touchscreen-enabled laptop, on February 21, 2013, and the
`
`mark has been in continuous use ever since. The second version of the CHROMEBOOK
`
`PIXEL was launched two years later on March 11, 2015. In the same year, Google expanded
`
`its PIXEL brand to include the PIXEL C tablet device, and in October 2016, Google
`
`launched two PIXEL smartphones, which were described by Forbes as “The Best
`
`Smartphone of 2016.” In the years since, Google has continued to expand its PIXEL brand
`
`with the additions of new PIXEL smartphones (including the PIXEL 2, PIXEL 3, PIXEL 3a,
`
`PIXEL 4, PIXEL 4a, and PIXEL 5), tablets (including the PIXEL SLATE), laptops
`
`(including the PIXELBOOK and the PIXELBOOK GO) and related accessories (including
`
`PIXEL BUDS, PIXELBOOK PEN, PIXEL STAND).
`
`3.
`
`Within the United States, Google owns, inter alia, U.S. trademark App. No.
`
`87643989, applied for on October 12, 2017, for the inherently distinctive PIXEL mark, in
`
`standard character form. This application covers “wireless communication devices for
`
`voice, data and image transmission including voice, text and picture messaging, video and
`
`still image camera”, “computer application software for use with smartphones, tablets,
`
`handheld computers, audio/video equipment, cameras, wearable computers, smartwatches,
`
`and wearable computing devices”, and “microphones” in International Class 9 (the “PIXEL
`
`Application”). Google also owns Reg. No. 5091394, registered on November 29, 2016, for
`
`the PIXEL Mark. This registration, which has an application filing date of February 21,
`
`2013 and a priority date of October 12, 2012, and is based on a date of first use in
`
`2
`
`

`

`commerce on December 8, 2015, covers “Computers; laptop computers; tablet computers;
`
`mobile phones” in International Class 9 (together with the PIXEL Application, the “PIXEL
`
`Marks”).
`
`4.
`
`In addition to the PIXEL Marks, Google has a number of additional
`
`trademark registrations and applications using the PIXEL formative, which collectively
`
`comprise a family of PIXEL marks and which cover a wide variety of consumer goods and
`
`services including software, peripherals, and accessories for use with portable and hand-
`
`held electronic devices. For example, Google owns Reg. No. 5097177 for the mark PIXEL
`
`C for “Computer hardware; computers; laptop computers; tablet computers” in
`
`International Class 9, which has an application filing date of February 5, 2016, based on a
`
`first use in commerce of December 8, 2015, and a priority date of August 13, 2015; Reg.
`
`No. 5596276 for the design mark G PIXEL for “Cases and protective covers for mobile
`
`phones and smartphones; computer hardware; computers; entertainment devices, namely,
`
`digital media streaming devices; computer peripherals, namely, hands-free devices,
`
`headsets, headphones, chargers, batteries, power adapters, and cables” in International
`
`Class 9, which has an application filing date of October 3, 2016, and is based on a first use
`
`in commerce of October 4, 2016; Reg. No. 5537266 for the mark GOOGLE PIXEL BUDS
`
`for inter alia, “microphones” in International Class 9, filed on October 3, 2017; and
`
`application Serial No. 87589996 for the mark GOOGLE PIXEL for “Computer software,
`
`namely user interface software for the customized and personalized design of home screens
`
`for mobile phones, smartphones, tablet computers, laptops, and computers; computer
`
`operating software; computer browsing software, namely user interface software for the
`
`3
`
`

`

`customized and personalized design of home screens for mobile phones, smartphones,
`
`tablet computers, laptops, and computers; computer software for providing access to the
`
`Internet; computer hardware; computers; desktop computers; laptop computers; tablet
`
`computers; smartphones; mobile phones; personal handheld devices, namely, computers,
`
`tablet computers, laptops, mobile phones, and smartphones for viewing information on
`
`global computer networks, voice command and recognition, speech-to-text conversion,
`
`personal information management, voice and data transmission, and hands-free use and
`
`remote control of electronic devices; computer peripherals, namely, speakers, headsets,
`
`headphones, earbuds, keyboards, battery chargers, batteries, power adapters, styluses and
`
`cables” in International Class 9, filed on August 30, 2017 (together with the PIXEL Marks,
`
`the “PIXEL Family”).
`
`Applicant and Its Confusingly Similar BLUE PIXEL Mark
`
`5.
`
`On December 18, 2019, Applicant filed an application to register the “BLUE
`
`PIXEL Mark.
`
`6.
`
`Applicant seeks registration of BLUE PIXEL for the following goods and
`
`services: “Camera tripods; Camera flashes; Connection cables; Camera lens mounts; Lenses
`
`for cameras; Camera handles; Underwater cameras; Microphones; Camera filters; Camera
`
`mounts and supports; Dashboard cameras; Camera hoods; Camera lens adapters; Wearable
`
`cameras; Lens hoods” in International Class 9.
`
`7.
`
`On information and belief, Applicant had knowledge of Google’s PIXEL
`
`Marks prior to filing and selecting the BLUE PIXEL Mark, and intended to trade off of
`
`Google’s well-known PIXEL Marks and reputation. The marks are similar as to appearance,
`
`4
`
`

`

`sound, and meaning. Applicant’s BLUE PIXEL Mark utilizes the entire PIXEL formative of
`
`Google’s PIXEL Marks, resulting in similar appearance and sound.
`
`8.
`
`Applicant’s description of goods and services overlaps substantially with
`
`Google’s. For example, both the PIXEL Application and the BLUE PIXEL Mark cover
`
`“microphone” goods. Further, Applicant’s Identification of “wearable cameras”
`
`encompasses or is related to wireless technologies that can be worn on the body, which
`
`overlap with the “wireless communication devices for voice, data and image transmission
`
`including . . . video and still image camera” goods covered by Google’s PIXEL Application.
`
`Google’s larger PIXEL Family likewise encompasses both computer hardware generally as
`
`well as computers, laptop computers, tablet computers, mobile phones, and cables.
`
`Particularly in light of Google’s PIXEL Family of marks, consumers are likely to perceive
`
`these goods as being closely related to the “wearable camera”, “microphone”, “connection
`
`cables”, “dashboard cameras” and other camera-related accessory goods identified in
`
`Applicant’s filing.
`
`9.
`
`For all of these reasons, consumers would be likely to believe that
`
`Applicant’s products emanate from the same source as the products that Google offers under
`
`the PIXEL brand.
`
`10.
`
`All of the above is likely to suggest to consumers that the BLUE PIXEL
`
`Mark identifies a Google or Google-endorsed product, when that is not so. Google is not the
`
`source of Applicant’s intended goods and services; is not affiliated with Applicant; and has
`
`not endorsed or sponsored Applicant or its goods and services.
`
`5
`
`

`

`Applicant’s Lack of Use of the Applied-For Mark
`
`11.
`
`Applicant filed its application under Section 1(a) of the Lanham Act on
`
`December 18, 2019, claiming that the BLUE PIXEL Mark was in use in commerce in
`
`connection with all of the applied-for goods and had been in use in commerce since at least
`
`as early as August 13, 2019.
`
`12.
`
`The specimens submitted with the application, described in the application as
`
`“some of our products and a webpage that has our products displayed”
`
`(www.bluepixelusa.com), show the BLUE PIXEL Mark used in connection with only a one
`
`of the applied-for goods, namely, “camera tripods”. The other submitted specimens show
`
`the BLUE PIXEL Mark used on a backpack, an SD microchip, a lens cloth, and a lithium
`
`ion battery pack, none of which are covered in the subject application’s identification of
`
`goods.
`
`13.
`
`Upon information and belief, at the time the application was filed, and as of
`
`the current time, Applicant has not used and was not using the BLUE PIXEL Mark in
`
`commerce in connection with the remaining “Camera flashes; Connection cables; Camera
`
`lens mounts; Lenses for cameras; Camera handles; Underwater cameras; Microphones;
`
`Camera filters; Camera mounts and supports; Dashboard cameras; Camera hoods; Camera
`
`lens adapters; Wearable cameras; Lens hoods” goods covered by the subject application.
`
`Indeed, many of these goods, including wearable cameras and microphones, are not pictured
`
`on Applicant’s website. Despite reasonable requests, Applicant has thus far refused to
`
`supply Google with examples of any uses in commerce for these goods.
`
`6
`
`

`

`FIRST CLAIM FOR RELIEF
`
`Likelihood Of Confusion
`
`14.
`
`Google incorporates by reference Paragraphs 1 through 13, inclusive, as if
`
`fully set forth herein.
`
`15.
`
`Google began using its PIXEL Marks in commerce at least as early as
`
`February 2013. It filed applications for the PIXEL Marks on October 12, 2017 (App. No.
`
`87643989) and February 21, 2013 (Reg. No. 5091394), and its GOOGLE PIXEL BUDS
`
`Mark (Reg. No. 5537266) on October 3, 2017. Each of these marks has priority over
`
`Applicant’s December 18, 2019 filing date.
`
`16.
`
`Google’s PIXEL Marks are strong and well known.
`
`17.
`
`The BLUE PIXEL Mark is similar in sight, sound, meaning, and commercial
`
`impression to the PIXEL Family of marks.
`
`18.
`
`The products covered by the BLUE PIXEL Mark are identical or closely
`
`related to the products that Google offers in connection with its PIXEL Family of marks.
`
`19.
`
`Applicant’s goods and services are offered through the same or substantially
`
`similar channels of trade and to the same or substantially similar classes of consumers as the
`
`goods and services that Google offers in connection with its PIXEL Family of marks.
`
`20.
`
`Applicant’s BLUE PIXEL Mark and its commercial impression suggest an
`
`affiliation or connection between Applicant and Google where none exists.
`
`21.
`
`Google is not affiliated or connected with Applicant or its products, nor has
`
`Google endorsed or sponsored Applicant or its products.
`
`7
`
`

`

`22.
`
`Registration of Applicant’s BLUE PIXEL Mark is likely to cause confusion
`
`among the relevant consuming public and will likely cause the relevant consuming public to
`
`mistakenly conclude that Applicant’s products are associated with Google, when they are
`
`not.
`
`23.
`
`Registration of Applicant’s BLUE PIXEL Mark will damage Google because
`
`Applicant’s BLUE PIXEL Mark is likely, when used on or in connection with the applied-
`
`for goods, to cause confusion or to cause mistake or to deceive and because registration
`
`would be inconsistent with Google’s trademark rights. Thus, Applicant’s BLUE PIXEL
`
`Mark is unregistrable under 15 U.S.C. §§ 1052, 1063, and 1125 and should be refused
`
`registration.
`
`SECOND CLAIM FOR RELIEF
`
`Lack of Bona Fide Use
`
`24.
`
`Opposer repeats and realleges the allegations of Paragraphs 1 through 13
`
`above as if fully set forth herein.
`
`25.
`
`Upon information and belief, Applicant has not made a bona fide use in
`
`commerce of all of the goods covered by the BLUE PIXEL Mark at the time the subject
`
`application was filed, or at the time that a specimen of use was submitted to the Office.
`
`26.
`
`In particular, on information and belief, Applicant was and is not using the
`
`BLUE PIXEL Mark in connection with the “Camera flashes; Connection cables; Camera
`
`lens mounts; Lenses for cameras; Camera handles; Underwater cameras; Microphones;
`
`Camera filters; Camera mounts and supports; Dashboard cameras; Camera hoods; Camera
`
`8
`
`

`

`lens adapters; Wearable cameras; Lens hoods” goods in the ordinary course of trade within
`
`the meaning of 15 U.S.C. § 1127.
`
`WHEREFORE, Opposer respectfully requests that this Opposition be sustained, and
`
`the registration of the mark BLUE PIXEL in Application Serial No. 88732565 refused.
`
`Dated: New York, New York
`
`Respectfully submitted,
`
`August 18, 2019
`
`/s/ Dori Ann Hanswirth /
`Dori Ann Hanswirth
`Palak Mayani Parikh
`ARNOLD & PORTER
`KAYE SCHOLER LLP
`250 West 55th Street
`New York, New York 10019-9710
`Telephone: (212) 836-8000
`Email: dori.hanswirth@arnoldporter.com
`Email: palak.mayani@arnoldporter.com
`
`Attorneys for Opposer Google LLC
`
`9
`
`