Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1103635
`12/22/2020
`
`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
`
`12/27/2020
`
`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
`
`0026064-0088
`
`Applicant Information
`
`Application No.
`
`88814241
`
`Publication date
`
`06/30/2020
`
`Opposition Filing
`Date
`
`Applicant
`
`12/22/2020
`
`Opposition Peri-
`od Ends
`
`12/27/2020
`
`pixelRo Co., Ltd.
`A-724, 40, IMI-RO, UIWANG-SI
`GYEONGGI-DO, 16006
`REPUBLIC OF KOREA
`
`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: Clear protective covers specially adapted
`for personal electronic devices, namely, cell phones and smart phones; Protective cases for cell
`phones; Protective cases for smartphones; Protective films adapted for computer screens; Protective
`films adapted for smartphones; Protective covers and cases for cell phones; Anti-glare filters for tele-
`visions and computer monitors
`
`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.
`
`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.
`
`6190279
`
`Registration Date
`
`11/03/2020
`
`Application Date
`
`10/12/2017
`
`Foreign Priority
`Date
`
`NONE
`
`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
`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;
`earbuds; earphones; headphones; microphones; power adapters, battery char-
`gers, electric charging cables, and cases specifically adapted for andused for
`charging earbuds, earphones, and headphones; cushions, pads, cases, covers,
`and protective covers specially adapted for mobile phones, smartphones, and
`electronic devices; computer peripherals, namely, hands-free devices, headsets,
`keyboards, chargers, batteries, power adapters, styluses and cables, all for use
`with computers, tablets, mobile phones, and smartphones
`
`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
`Mark
`
`Goods/Services
`
`The mark consists of a stylized letter "G" in the colors red, yellow, green andblue
`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. Registration
`No.
`
`6164461
`
`Registration Date
`
`09/29/2020
`
`Application Date
`
`10/03/2017
`
`Foreign Priority
`Date
`
`07/04/2017
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`PIXELBOOK
`
`NONE
`
`Class 009. First use: First Use: 2017/10/04 First Use In Commerce: 2017/10/04
`Computer hardware; computers; laptop computers; tablet computers; computer
`peripherals, namely, battery chargers, poweradapters, and power cables; com-
`puter accessories, namely, protective cases, protective bumper cases, protect-
`ive covers for tablet computers, computer bags, protective sleeves for laptop
`computers, and screen protectors comprised of tempered glass and plastic ad-
`apted for use withportable electronic devices
`
`U.S. Registration
`No.
`
`5906770
`
`Registration Date
`
`11/12/2019
`
`Application Date
`
`11/13/2018
`
`Foreign Priority
`Date
`
`05/24/2018
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`GOOGLE PIXEL SLATE
`
`NONE
`
`Class 009. First use: First Use: 2018/10/09 First Use In Commerce: 2018/10/09
`Computer hardware; computers; laptop computers; tablet computers; computer
`peripherals, namely, keyboards, battery chargers, batteries, power adapters,
`and power cables; computer accessories, namely,protective cases, protective
`bumper cases, protective covers for tablet computers, computer bags, protective
`sleeves for laptop computers, and screen protectors comprised of tempered
`glass and plastic adapted for use with portable electronic devices; keyboard cov-
`ers for computerhardware, computers, and tablet computers
`
`U.S. Registration
`No.
`
`5906787
`
`Registration Date
`
`11/12/2019
`
`Application Date
`
`11/19/2018
`
`Foreign Priority
`Date
`
`05/24/2018
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`PIXEL SLATE
`
`NONE
`
`Class 009. First use: First Use: 2018/10/09 First Use In Commerce: 2018/10/09
`Computer hardware; computers; laptop computers; tablet computers; computer
`
`

`

`peripherals, namely, keyboards, battery chargers, batteries, power adapters,
`and power cables; computer accessories, namely,protective cases, protective
`bumper cases, protective covers for tablet computers, computer bags, protective
`sleeves for laptop computers, and screen protectors comprised of tempered
`glass and plastic adapted for use with portable electronic devices; keyboard cov-
`ers for computerhardware, computers, and tablet computers
`
`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
`
`Attachments
`
`PIXELRO Notice of Opposition.pdf(21490 bytes )
`
`Signature
`
`/Dori Ann Hanswirth/
`
`Name
`
`Date
`
`Dori Ann Hanswirth
`
`12/22/2020
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`GOOGLE LLC,
`
`Opposer,
`
`v.
`
`PIXELRO CO., LTD.,
`
`Applicant.
`
`Opposition No. ___________
`
`Serial No. 88814241
`
`Mark: PIXELRO
`
`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 PIXELRO (the “PIXELRO
`
`Mark”), applied for by pixelRo Co., Ltd. (“Applicant”) for the goods in International Class 9
`
`as shown in Application Serial No. 88814241 (the “Application”), and having been granted
`
`an extension of time to oppose up to and including December 27, 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. Twenty-two 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 Brand”). 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 U.S. Trademark Registration No.
`
`6190279 for the inherently distinctive PIXEL mark, in standard character form, which was
`
`applied for on October 12, 2017, and is based on a date of first use in commerce of December
`
`8, 2015. This registration covers, inter alia, “Cases specifically adapted for and used for
`
`charging earbuds, earphones, and headphones; cushions, pads, cases, covers, and protective
`
`covers specially adapted for mobile phones, smartphones, and electronic devices; computer
`
`peripherals, namely, hands-free devices, headsets, keyboards, chargers, batteries, power
`
`adapters, styluses and cables, all for use with computers, tablets, mobile phones, and
`
`smartphones” in International Class 9. Google also owns Reg. No. 5091394, which was
`
`applied for on February 21, 2013 with a priority date of October 12, 2012, and is based on a
`
`2
`
`

`

`date of first use in commerce of December 8, 2015. This registration covers “Computers;
`
`laptop computers; tablet computers; mobile phones” in International Class 9 (together with
`
`Registration No. 6190279, 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 electronic hardware, peripherals, and accessories for use with portable
`
`and hand-held electronic devices. For example, Google owns Registration No. 5596276 for
`
`the 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;
`
`Registration No. 6164461 for the mark PIXELBOOK for, inter alia, “Computer
`
`accessories, namely, protective cases, protective bumper cases, protective covers for tablet
`
`computers, computer bags, protective sleeves for laptop computers, and screen protectors
`
`comprised of tempered glass and plastic adapted for use with portable electronic devices”
`
`in International Class 9, which has an application filing date of October 3, 2017, based on a
`
`first use in commerce of October 4, 2017, and a priority date of July 4, 2017; Registration
`
`No. 5906770 for the mark GOOGLE PIXEL SLATE, for, inter alia, “Computer
`
`accessories, namely, protective cases, protective bumper cases, protective covers for tablet
`
`computers, computer bags, protective sleeves for laptop computers, and screen protectors
`
`3
`
`

`

`comprised of tempered glass and plastic adapted for use with portable electronic devices”
`
`in International Class 9, which has an application filing date of November 13, 2018, based
`
`on a first use in commerce of October 9, 2018 and a priority date of May 24, 2018;
`
`Registration No. 5906787 for the mark PIXEL SLATE for, inter alia, “Computer
`
`accessories, namely, protective cases, protective bumper cases, protective covers for tablet
`
`computers, computer bags, protective sleeves for laptop computers, and screen protectors
`
`comprised of tempered glass and plastic adapted for use with portable electronic devices”
`
`in International Class 9, which has an application filing date of November 19, 2018, based
`
`on a first use in commerce of October 9, 2018 and a priority date of May 24, 2018; and
`
`Registration No. 5537266 for the mark GOOGLE PIXEL BUDS for, inter alia, “Carrying
`
`cases and protective cases featuring battery charging devices, specially adapted for use with
`
`earbuds, earphones, and headphones” in International Class 9, which has an application
`
`filing date of October 3, 2017, based on a first use in commerce of October 4, 2017 and a
`
`priority date of September 11, 2017 (together with the PIXEL Marks, the “PIXEL
`
`Family”).
`
`Applicant and Its Confusingly Similar PIXELRO Mark
`
`5.
`
`On February 28, 2020, Applicant filed an application to register the mark
`
`PIXELRO (the “PIXELRO Mark”).
`
`6.
`
`Applicant seeks registration of PIXELRO for the following goods and
`
`services: “Clear protective covers specially adapted for personal electronic devices, namely,
`
`cell phones and smart phones; Protective cases for cell phones; Protective cases for
`
`smartphones; Protective films adapted for computer screens; Protective films adapted for
`
`4
`
`

`

`smartphones; Protective covers and cases for cell phones; Anti-glare filters for televisions and
`
`computer monitors” in International Class 9.
`
`7.
`
`On information and belief, Applicant had knowledge of Google’s PIXEL
`
`Marks prior to filing and selecting the PIXELRO Mark, and intended to trade off of Google’s
`
`well-known PIXEL Marks and reputation. The marks are similar as to appearance, sound, and
`
`meaning. Applicant’s PIXELRO Mark utilizes the entire PIXEL formative of Google’s
`
`PIXEL Marks, resulting in similar appearance and sound. Applicant further uses the
`
`PIXELRO Mark with the “Pixel” and “Ro” elements separated, thereby increasing the
`
`potential for a likelihood of confusion between the PIXELRO Mark and Google’s PIXEL
`
`Marks.
`
`8.
`
`Applicant’s description of goods and services overlaps substantially with
`
`Google’s. For example, Google’s PIXEL Registration No. 6190279, G PIXEL Registration
`
`No. 5596276, and the PIXELRO Mark all cover cases, covers, and protective covers
`
`specially adapted for mobile phones, and smartphones. Further, Google’s PIXELBOOK
`
`Registration No. 6164461, PIXEL SLATE Registration No. 5906787, and GOOGLE PIXEL
`
`SLATE Registration No. 5906770 all cover “screen protectors comprised of tempered glass
`
`and plastic adapted for use with portable electronic devices”, while Google’s GOOGLE
`
`PIXEL BUDS Registration No. 5537266 additionally covers “Carrying cases and protective
`
`cases featuring battery charging devices”. All of these goods are highly related to the
`
`“Protective films adapted for computer screens; Protective films adapted for smartphones”
`
`goods identified in Applicant’s filing.
`
`5
`
`

`

`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 PIXELRO 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.
`
`CLAIM FOR RELIEF
`
`Likelihood Of Confusion
`
`11.
`
`Google incorporates by reference Paragraphs 1 through 10, inclusive, as if
`
`fully set forth herein.
`
`12.
`
`Google began using its PIXEL Marks in commerce at least as early as
`
`February 2013. It filed applications for the PIXEL Marks on February 21, 2013 (Reg. No.
`
`5091394) and October 12, 2017 (Reg. No. 6190279); its G PIXEL mark on October 3, 2016;
`
`its GOOGLE PIXEL BUDS mark on October 3, 2017; its PIXELBOOK mark on October 3,
`
`2017; its GOOGLE PIXEL SLATE mark on November 13, 2018; and its PIXEL SLATE
`
`mark on November 19, 2018. Each of these marks has priority over Applicant’s February
`
`28, 2020 filing date.
`
`13.
`
`Google’s PIXEL Marks are strong and well known.
`
`14.
`
`The PIXELRO Mark is similar in sight, sound, meaning, and commercial
`
`impression to the PIXEL Family of marks.
`
`6
`
`

`

`15.
`
`The products covered by the PIXELRO Mark are identical or closely related
`
`to the products that Google offers in connection with its PIXEL Family of marks.
`
`16.
`
`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.
`
`17.
`
`Applicant’s PIXELRO Mark and its commercial impression suggest an
`
`affiliation or connection between Applicant and Google where none exists.
`
`18.
`
`Google is not affiliated or connected with Applicant or its products, nor has
`
`Google endorsed or sponsored Applicant or its products.
`
`19.
`
`Registration of Applicant’s PIXELRO 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.
`
`20.
`
`Registration of Applicant’s PIXELRO Mark will damage Google because
`
`Applicant’s PIXELRO 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 PIXELRO Mark is
`
`unregistrable under 15 U.S.C. §§ 1052, 1063, and 1125 and should be refused registration.
`
`WHEREFORE, Opposer respectfully requests that this Opposition be sustained, and
`
`the registration of the mark PIXELRO in Application Serial No. 88814241 refused.
`
`Dated: New York, New York
`
`Respectfully submitted,
`
`7
`
`

`

`December 22, 2020
`
`/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
`
`8
`
`