Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1092872
`11/03/2020
`
`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
`
`Waymo LLC
`
`11/04/2020
`
`1600 AMPHITHEATRE PARKWAY
`MOUNTAIN VIEW, CA 94043
`UNITED STATES
`
`FABRICIO VAYRA AND CRAIG A. BEAKER
`PERKINS COIE LLP
`1201 THIRD AVENUE, SUITE 4900
`SEATTLE, WA 98101
`UNITED STATES
`Primary Email: pctrademarks@perkinscoie.com
`Secondary Email(s): cbeaker@perkinscoie.com, eunicelee@perkinscoie.com
`303-291-2300
`
`Docket Number
`
`125595-7047
`
`Applicant Information
`
`Application No.
`
`88821677
`
`Publication date
`
`07/07/2020
`
`Opposition Filing
`Date
`
`Applicant
`
`11/03/2020
`
`Opposition Peri-
`od Ends
`
`11/04/2020
`
`Viracle Co., Limited
`FAYUEN COMM BLDG
`NO.76-77 FA YUEN STREET KL
`HK, 999077
`CHINA
`
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 2019/12/05 First Use In Commerce: 2019/12/05
`All goods and services in the class are opposed, namely: Car video recorders; Car videorecorders;
`Dashboard cameras; LCD monitors for security purposes; Rearview cameras for vehicles; Theft
`alarms; Ultrasonic object detectors for use on vehicles; Vehicle locating, tracking and security system
`comprised of an antenna and radio transmitter to be placed in a vehicle; Vehicle locator and recovery
`device programmed touse global positioning systems (GPS) and cellular telecommunications;
`Vehicle mounted GPS sensor for determining the rate of motion for a vehicle; Vehicle safety equip-
`ment, namely, back-up sensors and cameras; Vehicle safety equipment, namely, electronic tire pres-
`sure monitors; Vehicle safety equipment, namely, electronic vibration, shock, motion, angle, temper-
`ature and voltage monitors; Vehicle safety equipment, namely, an on-board vehicular surveillance
`system comprised ofcameras and monitors for exposing and eliminating the blind spots on both
`sidesof the vehicle
`
`

`

`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`5908535
`
`Registration Date
`
`11/12/2019
`
`Application Date
`
`01/23/2017
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`WAYMO
`
`NONE
`
`Class 009. First use: First Use: 2019/03/06 First Use In Commerce: 2019/03/06
`Radar apparatus; lasers, not for medical purpose; laser device for sensing dis-
`tance to objects; laser equipment for non-medical purposes; laser measuring
`systems; laser object detectors for use on vehicles; lasers for measuring pur-
`poses; lidar (light detection and ranging apparatus)
`
`U.S. Registration
`No.
`
`6119762
`
`Registration Date
`
`08/04/2020
`
`Application Date
`
`12/10/2018
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`WAYMO
`
`NONE
`
`Class 009. First use: First Use: 2017/08/22 First Use In Commerce: 2017/08/22
`Eyewear
`Class 018. First use: First Use: 2019/10/28 First Use In Commerce: 2019/10/28
`Bags, namely, all-purpose carrying bags
`Class 021. First use: First Use: 2019/06/21 First Use In Commerce: 2019/06/21
`Mugs; water bottles sold empty
`Class 022. First use: First Use: 2017/00/00 First Use In Commerce: 2017/00/00
`Lanyards for holding badges
`Class 025. First use: First Use: 2017/07/00 First Use In Commerce: 2017/07/00
`Apparel, namely, t-shirts, shirts, jackets, sweatshirts, vests, hats, scarves, one
`piece garments and playsuits for infants, toddlers, and children
`
`U.S. Application
`No.
`
`87265179
`
`Application Date
`
`12/12/2016
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`11/16/2016
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`WAYMO
`
`NONE
`
`Class 009. First use: First Use: 2018/12/05 First Use In Commerce: 2018/12/05
`Computer hardware; computer software for operating an autonomous vehicle;
`
`

`

`computer software for vehicle navigation; computer software for vehicle fleet
`management; computer software for coordinating,scheduling, booking, and dis-
`patching vehicles for passenger and freight transport; computer software for
`managing freight transportation by truck and autonomous vehicles; navigation
`apparatus for vehicles; electric and optical navigationalinstruments; steering ap-
`paratus, automatic, for vehicles, namely, computer hardware and operational
`software for steering vehicles
`Class 012. First use: First Use: 2018/12/05 First Use In Commerce: 2018/12/05
`Land vehicles; automobiles; autonomous cars; autonomous land vehicles;
`steeringapparatus, automatic, for vehicles, namely, electric steering gears
`Class 038. First use: First Use: 2018/12/05 First Use In Commerce: 2018/12/05
`Telecommunication services, namely, telecommunication access services; tele-
`communication services, namely, routing calls and messages to passengers
`Class 039. First use: First Use: 2018/12/05 First Use In Commerce: 2018/12/05
`Passenger transportation services; transportation services, namely, making re-
`servations and bookings for transportation; transportation of passengers by
`vehicle; transportation services, namely, providing temporary use of vehicles;
`transportation services, namely, providing vehicle fleet management in the
`nature of fuel management services for vehicles, vehicle management, business
`management relating to vehicles, and tracking, locating, and monitoring services
`related to vehicles; passenger transportation services, namely, travel by
`autonomous vehicles; transport reservation services; freighting services; freight
`transportation bytrucks and autonomous vehicles; transportation of passengers
`and freight; passenger transport; providing a website featuring information re-
`garding autonomous car transportation services and scheduling transportation
`services
`Class 042. First use: First Use: 2016/12/13 First Use In Commerce: 2016/12/13
`Providing online non-downloadable software services for transportation services,
`namely, coordinating, booking, and dispatching autonomous vehicles; providing
`online non-downloadable software services for coordinating freight transporta-
`tion by truck and autonomous vehicles; research and development into
`autonomous vehicles
`
`U.S. Application
`No.
`
`87534077
`
`Application Date
`
`07/19/2017
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`WAYMO
`
`NONE
`
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`Downloadable mobile applications for coordinating transportation services;
`downloadable mobile applications for coordinating, scheduling, booking, and dis-
`patching vehicles for passenger and freight transport and delivery services;
`computersoftware and hardware for vehicle fleetlaunching, coordination, calib-
`rating, direction, and management; vehicle safetyand detection equipment and
`hardware, namely, cellular radio modules, temperature and environmental
`sensors for measuring the presence of objects in the environment and the
`speed, trajectory, and heading of objects, sensor covers, indicators for detecting
`speed, objects, and thespeed, trajectory, and heading of objects, transmitters
`and receivers of electronic signals, brake controller; vehicle detection equipment
`in the nature of monitoring devices for vehicles, namely, cameras, global posi-
`tioning system (GPS) receivers, and devices for monitoring vehicle functions,
`the presence of objects in the environment, and the speed, trajectory, and head-
`
`

`

`ing of objects
`Class 012. First use: First Use: 0 First Use In Commerce: 0
`Vehicle parts and fittings, namely, structural parts for automobiles and steering
`units for land vehicles and parts thereof; vehicle equipment and hardware,
`namely, roof boxes for vehicles; vehicle anti-theft and security equipment,
`namely, anti-theft devices for vehicles
`Class 039. First use: First Use: 0 First Use In Commerce: 0
`Freight logistics management; leasing of vehicles; leasing of automobiles; trans-
`port and delivery of goods; supply chain logistics and reverse logistic services,
`namely, storage, transportation, and delivery of goods for others by land; trans-
`portation services, namely, coordinating the pickup and dropoff of passengersat
`designated or directed locations by land
`
`U.S. Application
`No.
`
`88358906
`
`Application Date
`
`03/27/2019
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`10/22/2018
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`WAYMO ONE
`
`NONE
`
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`(Based on 44(d) Priority Application) (Based on Intent to Use) Downloadable
`mobile applications for coordinating transportation services; downloadable mo-
`bile applications for coordinating, scheduling, booking, and dispatching vehicles
`for passenger transport and delivery services; downloadable computer software
`and hardware for vehicle coordination, navigation, steering, calibrating, direction,
`scheduling, booking, dispatching, and management
`Class 035. First use: First Use: 0 First Use In Commerce: 0
`(Based on 44(d) Priority Application) (Based on Intent to Use) Freight logistics
`management
`Class 039. First use: First Use: 0 First Use In Commerce: 0
`(Based on 44(d) Priority Application) (Based on Intent to Use) Transportation
`services, namely, making reservations andbookings for transportation; transport-
`ation services, namely, coordinating the pickup and dropoff of passengers at
`designated or directed locations; transportation of passengers by vehicle; pas-
`sengertransportation services, namely, travelby autonomous vehicles; freighting
`services; freight transportation by trucks and autonomous vehicles; transport
`and delivery of goods; providing a website featuring information regarding
`autonomous car transportation and delivery servicesand scheduling transporta-
`tion services
`Class 042. First use: First Use: 0 First Use In Commerce: 0
`(Based on 44(d) Priority Application) (Based on Intent to Use) Providing on-
`linesoftware services, namely, providing online non-downloadable software for
`transportation services, namely, coordinating, booking, and dispatching
`autonomous vehicles; research and development into autonomous vehicles
`
`U.S. Application
`No.
`
`88441095
`
`Application Date
`
`05/22/2019
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`11/29/2018
`
`Word Mark
`
`Design Mark
`
`WAYMO HONEYCOMB
`
`

`

`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`Lasers, not for medical purpose; laser device for sensing distance to objects;
`laser equipment for non-medical purposes; laser measuring systems; laser ob-
`ject detectors; lasers for measuring purposes; lidar (light detection and ranging
`apparatus); laser device for sensing objects; laser device for sensing indoor
`and/or outdoor terrain
`Class 042. First use: First Use: 0 First Use In Commerce: 0
`Research, design, and development of lasers for sensing objects and distance
`toobjects, lasers for sensing indoor and outdoor terrain, lasers for measuring
`purposes, laser measuring systems, lidar (light detection and ranging apparat-
`us), and laser equipment
`
`U.S. Application
`No.
`
`90031216
`
`Application Date
`
`07/01/2020
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`01/06/2020
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`WAYMO VIA
`
`NONE
`
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`Computer hardware; downloadable computer software for operating an
`autonomous vehicle; downloadable computer software for vehicle navigation;
`downloadable computer software for vehicle fleet management; downloadable
`computer software for coordinating, scheduling, booking, and dispatching
`vehicles for passenger and freight transport; downloadable computer software
`for managing freight transportation by truck and autonomous vehicles; down-
`loadable computer software for coordinating the transport and delivery of goods;
`navigation apparatus for vehicles; navigational instruments for vehicles; steering
`apparatus, automatic, for vehicles,namely, computer hardware and download-
`able operational software for steering vehicles; radar apparatus; lasers, not
`formedical purpose; laser device for sensing distance to objects; laser equip-
`ment for non-medical purposes; laser measuring systems; laser object detectors
`for use on vehicles; lasers for measuring purposes; lidar apparatus; temperature
`and environmental sensors for measuring the presence of objects in the environ-
`ment and the speed, trajectory, and heading of objects; vehicle sensors, namely,
`temperature and environmental sensors for measuring the presence of objects
`in the environment and the speed, trajectory, and heading of objects; sensors for
`determining position, velocity, direction, and acceleration; downloadable mobile
`applications for coordinating transportation services; software for use as an ap-
`plication programming interface (API); downloadable computer software and
`hardware for vehicle fleet launching, coordination, calibrating, direction, and
`management; cameras; cameras for use with vehicles; computer hardware and
`downloadable software for use with vehicle cameras; downloadable computer
`programs and downloadablesoftware for artificial intelligence (AI), machine
`learning, and deep learning;downloadable computer programs and download-
`able software for intelligent data services using artificial intelligence (AI), ma-
`chine learning, and deep learning;downloadable computer programs and down-
`loadable software for artificial intelligence (AI), machine learning, and deep
`learning and for contextual prediction, personalization, and predictive analytics;
`downloadable computer programs and downloadable software for artificial intelli-
`gence (AI), machine learning, and deep learning for processing large volumes
`ofdata; downloadable computer software for use as an application programming
`interface (API); downloadable software development kits (SDK); downloadable
`
`

`

`computersoftware and hardware for use in connection with autonomous sys-
`tems, devices, and machinery; vehicle safety and detection equipment, namely,
`cellular radio modules, sensor covers, indicators for detecting speed, objects,
`and the speed, trajectory, and heading of objects, transmitters and receivers of
`electronic signals, and brake controllers; vehicle detection equipment in the
`nature of monitoring devices for vehicles, namely, global positioning system
`(GPS) receivers and devices for monitoring vehicle functions, the presence of
`objects in the environment, and the speed, trajectory, and heading of objects
`Class 012. First use: First Use: 0 First Use In Commerce: 0
`Land vehicles; automobiles; trucks; freight vehicles, namely, trucks and vans;
`mass transit vehicles; autonomous cars; autonomous land vehicles; vehicle
`parts and fittings, namely, structural parts for automobiles and steering units for
`land vehicles and parts thereof; vehicle equipment and hardware, namely, roof
`boxes for vehicles; vehicle anti-theft and security equipment, namely, anti-theft
`devices for vehicles
`Class 035. First use: First Use: 0 First Use In Commerce: 0
`Transportation services, namely, fuel management services in the field of truck-
`ing and vehicle fleets; transportation services, namely, business management
`relating to vehicles; transportation services, namely, tracking, locating, and mon-
`itoring of vehicles for commercial purposes; freight logistics management
`Class 039. First use: First Use: 0 First Use In Commerce: 0
`Passenger transportation services; transportation services, namely, making re-
`servations and bookings for transportation; transportation of passengers by
`vehicle; transportation services, namely, providing temporary use of vehicles;
`passenger transportation services, namely, travel by autonomous vehicles; car
`rental services; transport reservation services; freighting services; freight trans-
`portation by trucks and autonomous vehicles; transportation of passengers and
`freight by trucks and autonomous vehicles; passenger transport; providing a
`website featuring information regarding autonomous car transportation services
`and scheduling transportation services; leasing of vehicles; leasing of automo-
`biles; transport and delivery of goods; supply chain logistics and reverse logist-
`ics services, namely, storage, transportation, and delivery of goods for others by
`land; transportation services, namely, coordinatingthe pickup and dropoff of pas-
`sengers atdesignated or directed locations
`Class 042. First use: First Use: 0 First Use In Commerce: 0
`Providing online software services, namely, providing non-downloadable soft-
`warefor transportation services, namely, coordinating, scheduling, booking, and
`dispatching autonomous vehicles; providing online software services for coordin-
`ating freight transportation by truck and autonomous vehicles; providing online
`software services for vehicle fleet management; providing online software ser-
`vices for tracking, locating, and monitoring vehicles; providing online software
`services for coordinating the transport and delivery of goods; research and de-
`velopment into autonomous vehicles; research, design, and development of
`computer hardware and software for use with vehicle on-board computers for
`monitoring and controlling motor vehicle operation; research, design, and devel-
`opment of computer hardware and software for vehicle coordination, navigation,
`calibrating, direction, and management; installation, updating, and maintenance
`of computer hardware and software for use with vehicle on-board computers for
`monitoring and controlling motor vehicle operation; research, design, and devel-
`opment of sensors and forstructural parts thereof; software as aservice (SaaS)
`services featuring computer software for use as an application programming in-
`terface (API); advanced product research, design, and development in the field
`of artificial intelligence
`
`U.S. Application
`No.
`
`90031224
`
`Application Date
`
`07/01/2020
`
`Registration Date
`
`NONE
`
`Foreign Priority
`
`01/09/2020
`
`

`

`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`Date
`
`WAYMO DRIVER
`
`NONE
`
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`Computer hardware; downloadable computer software for operating an
`autonomous vehicle; downloadable computer software for vehicle navigation;
`downloadable computer software for vehicle fleet management; downloadable
`computer software for coordinating, scheduling, booking, and dispatching
`vehicles for passenger and freight transport; downloadable computer software
`for managing freight transportation by truck and autonomous vehicles; down-
`loadable computer software for coordinating the transport and delivery of goods;
`navigation apparatus for vehicles; navigational instruments for vehicles; steering
`apparatus, automatic, for vehicles,namely, computer hardware and download-
`able operational software for steering vehicles; radar apparatus; lasers, not
`formedical purpose; laser device for sensing distance to objects; laser equip-
`ment for non-medical purposes; laser measuring systems; laser object detectors
`for use on vehicles; lasers for measuring purposes; lidar apparatus; temperature
`and environmental sensors for measuring the presence of objects in the environ-
`ment and the speed, trajectory, and heading of objects; vehicle sensors, namely,
`temperature and environmental sensors for measuring the presence of objects
`in the environment and the speed, trajectory, and heading of objects; sensors for
`determining position, velocity, direction, and acceleration; downloadable mobile
`applications for coordinating transportation services; software for use as an ap-
`plication programming interface (API); downloadable computer software and
`hardware for vehicle fleet launching, coordination, calibrating, direction, and
`management; cameras; cameras for use with vehicles; computer hardware and
`downloadable software for use with vehicle cameras; downloadable computer
`programs and downloadablesoftware for artificial intelligence (AI), machine
`learning, and deep learning;downloadable computer programs and download-
`able software for intelligent data services using artificial intelligence (AI), ma-
`chine learning, and deep learning;downloadable computer programs and down-
`loadable software for artificial intelligence (AI), machine learning, and deep
`learning and for contextual prediction, personalization, and predictive analytics;
`downloadable computer programs and downloadable software for artificial intelli-
`gence (AI), machine learning, and deep learning for processing large volumes
`ofdata; downloadable computer software for use as an application programming
`interface (API); downloadable software development kits (SDK); downloadable
`computersoftware and hardware for use in connection with autonomous sys-
`tems, devices, and machinery; vehicle safety and detection equipment, namely,
`cellular radio modules, sensor covers, indicators for detecting speed, objects,
`and the speed, trajectory, and heading of objects, transmitters and receivers of
`electronic signals, and brake controllers; vehicle detection equipment in the
`nature of monitoring devices for vehicles, namely, global positioning system
`(GPS) receivers and devices for monitoring vehicle functions, the presence of
`objects in the environment, and the speed, trajectory, and heading of objects
`Class 012. First use: First Use: 0 First Use In Commerce: 0
`Land vehicles; automobiles; trucks; freight vehicles, namely, trucks and vans;
`mass transit vehicles; autonomous cars; autonomous land vehicles; vehicle
`parts and fittings, namely, structural parts for automobiles and steering units for
`land vehicles and parts thereof; vehicle equipment and hardware, namely, roof
`boxes for vehicles; vehicle anti-theft and security equipment, namely, anti-theft
`devices for vehicles
`Class 035. First use: First Use: 0 First Use In Commerce: 0
`Transportation services, namely, fuel management services in the field of truck-
`ing and vehicle fleets; transportation services, namely, business management
`
`

`

`relating to vehicles; transportation services, namely, tracking, locating, and mon-
`itoring of vehicles for commercial purposes; freight logistics management
`Class 039. First use: First Use: 0 First Use In Commerce: 0
`Passenger transportation services; transportation services, namely, making re-
`servations and bookings for transportation; transportation of passengers by
`vehicle; transportation services, namely, providing temporary use of vehicles;
`passenger transportation services, namely, travel by autonomous vehicles; car
`rental services; transport reservation services; freighting services; freight trans-
`portation by trucks and autonomous vehicles; transportation of passengers and
`freight by trucks and autonomous vehicles; passenger transport; providing a
`website featuring information regarding autonomous car transportation services
`and scheduling transportation services; leasing of vehicles; leasing of automo-
`biles; transport and delivery of goods; supply chain logistics and reverse logist-
`ics services, namely, storage, transportation, and delivery of goods for others by
`land; transportation services, namely, coordinatingthe pickup and dropoff of pas-
`sengers atdesignated or directed locations
`Class 042. First use: First Use: 0 First Use In Commerce: 0
`Providing online software services, namely, providing non-downloadable soft-
`warefor transportation services, namely, coordinating, scheduling, booking, and
`dispatching autonomous vehicles; providing online software services for coordin-
`ating freight transportation by truck and autonomous vehicles; providing online
`software services for vehicle fleet management, providing online software ser-
`vices for tracking, locating, and monitoring vehicles; providing online software
`services for coordinating the transport and delivery of goods; research and de-
`velopment into autonomous vehicles; research, design, and development of
`computer hardware and software for use with vehicle on-board computers for
`monitoring and controlling motor vehicle operation; research, design, and devel-
`opment of computer hardware and software for vehicle coordination, navigation,
`calibrating, direction, and management; installation, updating, and maintenance
`of computer hardware and software for use with vehicle on-board computers for
`monitoring and controlling motor vehicle operation; research, design, and devel-
`opment of sensors and forstructural parts thereof; software as aservice (SaaS)
`services featuring computer software for use as an application programming in-
`terface (API); advanced product research, design, and development in the field
`of artificial intelligence
`
`U.S. Application/ Registra-
`tion No.
`
`Registration Date
`
`Word Mark
`
`Goods/Services
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`
`WAYMO
`
`Technology for autonomous vehicles, LiDAR, vehicle sensors, and
`other related products and services
`
`Attachments
`
`WAYPRO Notice of Opposition.pdf(366734 bytes )
`
`Signature
`
`/Craig A. Beaker/
`
`Name
`
`Date
`
`CRAIG A. BEAKER
`
`11/03/2020
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Opposer,
`
`
`
`v.
`
`WAYMO LLC,
`
`
`
`
`
`VIRACLE CO., LIMITED,
`
`
`
`
`
`
`
`Applicant.
`
`
`Opposition No.:
`
`
`Mark:
`
`App. Ser. No.: 88/821,677
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`Waymo LLC (“Waymo” or “Opposer”), through its attorneys Perkins Coie LLP, hereby
`
`files a Notice of Opposition against Viracle Co., Limited’s (“Applicant”) U.S. Application Serial
`
`No. 88/821,677 for WAYPRO (Stylized) (“Applicant’s Mark”) because it will be damaged by
`
`the registration of Applicant’s Mark. Waymo hereby opposes registration of Applicant’s Mark
`
`on the grounds of likelihood of confusion under Section 2(d) of the Lanham Act, 15 U.S.C.
`
`§ 1052(d).
`
`As grounds for this opposition, Waymo alleges as follows:
`
`PARTIES
`
`1.
`
`Waymo is a Delaware limited liability company with a place of business at 1600
`
`Amphitheatre Parkway, Mountain View, California 94043, United States of America.
`
`2.
`
`Upon information and belief, Applicant is a Chinese limited company with a
`
`business address at Fayuen Comm Bldg, No. 76-77 Fa Yuen Street KL, HK, China 999077.
`
`
`
`

`

`WAYMO & THE WAYMO MARKS
`
`3.
`
`Waymo reasserts and incorporates Paragraphs 1 and 2 above as if fully set forth
`
`herein. Waymo is currently developing technology for autonomous vehicles, LiDAR, vehicle
`
`sensors, and other related products and services.
`
`4.
`
`Since as early as 2016, Waymo has used the mark WAYMO in connection with
`
`autonomous vehicles and related offerings (the “WAYMO Common Law Mark”).
`
`5.
`
`Waymo owns trademark filings for a family of marks consisting of or incorporating
`
`WAYMO on the Principal Register of the United States Patent and Trademark Office (“PTO”),
`
`including the registrations and applications listed below (the “WAYMO Registrations and
`
`Applications”). Copies of the registration certificates for U.S. Registration Nos. 5,908,535 and
`
`6,119,762 and true and correct copies of the current Trademark Status and Document Retrieval
`
`(“TSDR”) status pages for the WAYMO Registrations and Applications are attached as Exhibit A.
`
`The WAYMO Registrations and Applications and WAYMO Common Law Mark are collectively
`
`referred to as the “WAYMO Mark.”
`
`Mark
`
`Status & Filing Info.
`
`Goods and Services
`
`WAYMO
`
`
`Registered
`
`App 87310350
`
`App 23-JAN-2017
`
`Reg 5908535
`
`Reg 12-NOV-2019
`
`INT. CL. 9 RADAR APPARATUS; LASERS, NOT FOR MEDICAL
`PURPOSE; LASER DEVICE FOR SENSING DISTANCE TO
`OBJECTS; LASER EQUIPMENT FOR NON-MEDICAL PURPOSES;
`LASER MEASURING SYSTEMS; LASER OBJECT DETECTORS FOR
`USE ON VEHICLES; LASERS FOR MEASURING PURPOSES;
`LIDAR (LIGHT DETECTION AND RANGING APPARATUS)
`
`WAYMO
`
`Registered
`
`INT. CL. 9 EYEWEAR
`
`
`
`App 88223320
`
`INT. CL. 18 BAGS, NAMELY, ALL-PURPOSE CARRYING BAGS
`
`App 10-DEC-2018
`
`INT. CL. 21 MUGS; WATER BOTTLES SOLD EMPTY
`
`Reg 6119762
`
`INT. CL. 22 LANYARDS FOR HOLDING BADGES
`
`Reg 04-AUG-2020
`
`INT. CL. 25 APPAREL, NAMELY, T-SHIRTS, SHIRTS, JACKETS,
`SWEATSHIRTS, VESTS, HATS, SCARVES, ONE PIECE GARMENTS
`AND PLAYSUITS FOR INFANTS, TODDLERS, AND CHILDREN
`
`WAYMO
`
`Allowed
`
`
`
`App 87265179
`
`App 12-DEC-2016
`
`INT. CL. 9 COMPUTER HARDWARE; COMPUTER SOFTWARE
`FOR OPERATING AN AUTONOMOUS VEHICLE; COMPUTER
`SOFTWARE FOR VEHICLE NAVIGATION; COMPUTER
`SOFTWARE FOR VEHICLE FLEET MANAGEMENT; COMPUTER
`SOFTWARE FOR COORDINATING, SCHEDULING, BOOKING,
`
`2
`
`

`

`AND DISPATCHING VEHICLES FOR PASSENGER AND FREIGHT
`TRANSPORT; COMPUTER SOFTWARE FOR MANAGING FREIGHT
`TRANSPORTATION BY TRUCK AND AUTONOMOUS VEHICLES;
`NAVIGATION APPARATUS FOR VEHICLES; ELECTRIC AND
`OPTICAL NAVIGATIONAL INSTRUMENTS; STEERING
`APPARATUS, AUTOMATIC, FOR VEHICLES, NAMELY,
`COMPUTER HARDWARE AND OPERATIONAL SOFTWARE FOR
`STEERING VEHICLES
`
`INT. CL. 12 LAND VEHICLES; AUTOMOBILES; AUTONOMOUS
`CARS; AUTONOMOUS LAND VEHICLES; STEERING
`APPARATUS, AUTOMATIC, FOR VEHICLES, NAMELY, ELECTRIC
`STEERING GEARS
`
`INT. CL. 38 TELECOMMUNICATION SERVICES, NAMELY,
`TELECOMMUNICATION ACCESS SERVICES;
`TELECOMMUNICATION SERVICES, NAMELY, ROUTING CALLS
`AND MESSAGES TO PASSENGERS
`
`INT. CL. 39 PASSENGER TRANSPORTATION SERVICES;
`TRANSPORTATION SERVICES, NAMELY, MAKING
`RESERVATIONS AND BOOKINGS FOR TRANSPORTATION;
`TRANSPORTATION OF PASSENGERS BY VEHICLE;
`TRANSPORTATION SERVICES, NAMELY, PROVIDING
`TEMPORARY USE OF VEHICLES; TRANSPORTATION SERVICES,
`NAMELY, PROVIDING VEHICLE FLEET MANAGEMENT IN THE
`NATURE OF FUEL MANAGEMENT SERVICES FOR VEHICLES,
`VEHICLE MANAGEMENT, BUSINESS MANAGEMENT RELATING
`TO VEHICLES, AND TRACKING, LOCATING, AND MONITORING
`SERVICES RELATED TO VEHICLES; PASSENGER
`TRANSPORTATION SERVICES, NAMELY, TRAVEL BY
`AUTONOMOUS VEHICLES; TRANSPORT RESERVATION
`SERVICES; FREIGHTING SERVICES; FREIGHT
`TRANSPORTATION BY TRUCKS AND AUTONOMOUS VEHICLES;
`TRANSPORTATION OF PASSENGERS AND FREIGHT;
`PASSENGER TRANSPORT; PROVIDING A WEBSITE FEATURING
`INFORMATION REGARDING AUTONOMOUS CAR
`TRANSPORTATION SERVICES AND SCHEDULING
`TRANSPORTATION SERVICES
`
`INT. CL. 42 PROVIDING ONLINE NON-DOWNLOADABLE
`SOFTWARE SERVICES FOR TRANSPORTATION SERVICES,
`NAMELY, COORDINATING, BOOKING, AND DISPATCHING
`AUTONOMOUS VEHICLES; PROVIDING ONLINE NON-
`DOWNLOADABLE SOFTWARE SERVICES FOR COORDINATING
`FREIGHT TRANSPORTATION BY TRUCK AND AUTONOMOUS
`VEHICLES; RESEARCH AND DEVELOPMENT INTO
`AUTONOMOUS VEHICLES
`
`INT. CL. 9 DOWNLOADABLE MOBILE APPLICATIONS FOR
`COORDINATING TRANSPORTATION SERVICES;
`DOWNLOADABLE MOBILE APPLICATIONS FOR
`COORDINATING, SCHEDULING, BOOKING, AND DISPATCHING
`VEHICLES FOR PASSENGER AND FREIGHT TRANSPORT AND
`DELIVERY SERVICES; COMPUTER SOFTWARE AND HARDWARE
`FOR VEHICLE FLEET LAUNCHING, COORDINATION,
`
`3
`
`WAYMO
`
`Allowed
`
`
`
`App 87534077
`
`App 19-JUL-2017
`
`

`

`CALIBRATING, DIRECTION, AND MANAGEMENT; VEHICLE
`SAFETY AND DETECTION EQUIPMENT AND HARDWARE,
`NAMELY, CELLULAR RADIO MODULES, TEMPERATURE AND
`ENVIRONMENTAL SENSORS FOR MEASURING THE PRESENCE
`OF OBJECTS IN THE ENVIRONMENT AND THE SPEED,
`TRAJECTORY, AND HEADING OF OBJECTS, SENSOR COVERS,
`INDICATORS FOR DETECTING SPEED, OBJECTS, AND THE
`SPEED, TRAJECTORY, AND HEADING OF OBJECTS,
`TRANSMITTERS AND RECEIVERS OF ELECTRONIC SIGNALS,
`BRAKE CONTROLLER; VEHICLE DETECTION EQUIPMENT IN
`THE NATURE OF MONITORING DEVICES FOR VEHICLES,
`NAMELY, CAMERAS, GLOBAL POSITIONING SYSTEM (GPS)
`RECEIVERS, AND DEVICES FOR MONITORING VEHICLE
`FUNCTIONS, THE PRESENCE OF OBJECTS IN THE
`ENVIRONMENT, AND THE SPEED, TRAJECTORY, AND HEADING
`OF OBJECTS
`
`INT. CL. 12 VEHICLE PARTS AND FITTINGS, NAMELY,
`STRUCTURAL PARTS FOR AUTOMOBILES AND STEERING
`UNITS FOR LAND VEHICLES AND PARTS THEREOF; VEHICLE
`EQUIPMENT AND HARDWARE, NAMELY, ROOF BOXES FOR
`VEHICLES; VEHICLE ANTI-THEFT AND SECURITY EQUIPMENT,
`NAMELY, ANTI-THEFT DEVICES FOR VEHICLES
`
`INT. CL. 39 FREIGHT LOGISTICS MANAGEMENT; LEASING OF
`VEHICLES; LEASING OF AUTOMOBILES; TRANSPORT AND
`DELIVERY OF GOODS; SUPPLY CHAIN LOGISTICS AND
`REVERSE LOGISTIC SERVICES, NAMELY, STORAGE,
`TRANSPORTATION, AND DELIVERY OF GOODS FOR OTHERS
`BY LAND; TRANSPORTATION SERVICES, NAMELY,
`COORDINATING THE PICKUP AND DROPOFF OF PASSENGERS
`AT DESIGNATED OR DIRECTED LOCATIONS BY LAND
`
`INT. CL. 9 DOWNLOADABLE MOBILE APPLICATIONS FOR
`COORDINATING TRANSPORTATION SERVICES;
`DOWNLOADABLE MOBILE APPLICATIONS FOR
`COORDINATING, SCHEDULING, BOOKING, AND DISPATCHING
`VEHICLES FOR PASSENGER TRANSPORT AND DELIVERY
`SERVICES; DOWNLOADABLE COMPUTER SOFTWARE AND
`HARDWARE FOR VEHICLE COORDINATION, NAVIGATION,
`STEERING, CALIBRATING, DIRECTION, SCHE