Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1106770
`01/08/2021
`
`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
`
`Entity
`
`Address
`
`eBay Inc.
`
`Corporation
`
`2025 HAMILTON AVENUE
`SAN JOSE, CA 95125
`UNITED STATES
`
`Citizenship
`
`Delaware
`
`Attorney informa-
`tion
`
`AMY J. TINDELL
`HOLLAND & HART LLP
`P.O. BOX 8749
`ATTN: TRADEMARK DOCKETING
`DENVER, CO 80201
`UNITED STATES
`Primary Email: docket@hollandhart.com
`Secondary Email(s): ebay@hollandhart.com, ajtindell@hollandhart.com, anmar-
`ston@hollandhart.com, hihamilton@hollandhart.com,
`mamoore@hollandhart.com
`(303) 473-2735
`
`Docket Number
`
`78143.2044
`
`Applicant Information
`
`Application No.
`
`90076450
`
`Publication date
`
`12/29/2020
`
`Opposition Filing
`Date
`
`Applicant
`
`01/08/2021
`
`Afrebay, Inc.
`8256 DAISY LANE
`RIVERSIDE, CA 92508
`UNITED STATES
`
`Opposition Peri-
`od Ends
`
`01/28/2021
`
`Goods/Services Affected by Opposition
`
`Class 035. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Advertising and marketing services,
`namely, promoting the goods and services ofothers; Advertising, marketing and promotion services;
`On-line retail store services featuring a wide variety of consumer goods of others; General business
`networking referral services, namely, promoting the goods and services of others bypassing business
`leads and referrals among group members; Providing business information regarding charitable or
`humanitarian organizations; Providing an on-line searchable database featuring business information
`and business contacts
`
`Class 036. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Credit card payment processing services;
`Debit card transaction processing services; Payment processing services, namely, credit card and
`debit card transaction processing services; Processing of credit card payments; Processing of debit
`
`

`

`card payments
`
`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.
`
`2218732
`
`Registration Date
`
`01/19/1999
`
`Application Date
`
`11/17/1997
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`EBAY
`
`NONE
`
`Class 035. First use: First Use: 1995/09/04 First Use In Commerce: 1995/09/04
`on-line trading services in which seller posts items to be auctioned and bidding
`is done electronically, and providing evaluative feedback and ratings of sellers'
`goods and services, the value and prices of sellers' goods, buyers' and sellers'
`performance, delivery, and overall trading experience in connection therewith
`
`U.S. Registration
`No.
`
`2367932
`
`Registration Date
`
`07/18/2000
`
`Application Date
`
`01/13/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`EBAY
`
`NONE
`
`Class 028. First use: First Use: 1998/12/15 First Use In Commerce: 1998/12/15
`Christmas tree ornaments and soft sculpture toys
`
`U.S. Registration
`No.
`
`2501043
`
`Registration Date
`
`10/23/2001
`
`Application Date
`
`01/13/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`EBAY
`
`NONE
`
`Class 014. First use: First Use: 1998/05/13 First Use In Commerce: 1998/05/13
`clocks and watches
`
`U.S. Registration
`No.
`
`2518652
`
`Registration Date
`
`12/11/2001
`
`Word Mark
`
`Design Mark
`
`EBAY
`
`Application Date
`
`01/20/1999
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 1998/05/13 First Use In Commerce: 1998/12/00
`Clothing, namely, t-shirts, caps and sweatshirts
`
`U.S. Registration
`No.
`
`2522630
`
`Registration Date
`
`12/25/2001
`
`Application Date
`
`06/06/2001
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`EBAY
`
`NONE
`
`Class 020. First use: First Use: 2000/07/00 First Use In Commerce: 2000/07/00
`plastic key chain tags[ and plastic novelty license plate frames]
`
`U.S. Registration
`No.
`
`2578260
`
`Registration Date
`
`06/11/2002
`
`Application Date
`
`06/12/2001
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`EBAY
`
`NONE
`
`Class 018. First use: First Use: 1999/04/00 First Use In Commerce: 1999/04/00
`[ duffel bags,] tote bags, backpacks [ and briefcases ]
`
`U.S. Registration
`No.
`
`2592515
`
`Registration Date
`
`07/09/2002
`
`Application Date
`
`04/10/2000
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`EBAY
`
`NONE
`
`Class 038. First use: First Use: 1999/05/15 First Use In Commerce: 1999/05/15
`Telecommunications services, namely, the electronic transmission of data and
`information; paging services
`
`U.S. Registration
`No.
`
`2604374
`
`Registration Date
`
`08/06/2002
`
`Application Date
`
`06/12/2001
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`EBAY
`
`NONE
`
`Class 021. First use: First Use: 1999/04/00 First Use In Commerce: 1999/04/00
`mugs, tumblers, and water bottles sold empty; containers for food or bever-
`ages,namely, lunch containers made of vinyl or nylon
`
`

`

`U.S. Registration
`No.
`
`2666767
`
`Registration Date
`
`12/24/2002
`
`Application Date
`
`01/20/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`EBAY
`
`NONE
`
`Class 025. First use: First Use: 2000/11/28 First Use In Commerce: 2000/11/28
`Clothing, namely, jackets
`
`U.S. Registration
`No.
`
`2700675
`
`Registration Date
`
`03/25/2003
`
`Application Date
`
`01/13/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`EBAY
`
`NONE
`
`Class 009. First use: First Use: 2001/03/01 First Use In Commerce: 2001/03/01
`Computer e-commerce software to allow users to perform electronic business
`transactions conducted in the form of an auction via a global computer network
`and computer database software featuring information in the field of hobbies,
`collectibles and a wide variety of products
`
`U.S. Registration
`No.
`
`2700836
`
`Registration Date
`
`03/25/2003
`
`Application Date
`
`01/13/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`EBAY
`
`NONE
`
`Class 016. First use: First Use: 1999/11/00 First Use In Commerce: 1999/11/00
`PUBLICATIONS, NAMELY, A SERIES OF NONFICTION BOOKS, CONCERN-
`ING HOBBIES, COLLECTIBLES, AUCTIONS, AND A WIDE VARIETY OF
`PRODUCTS RELATING TO ANTIQUES, ART LITERATURE, CULTURE,
`TECHNOLOGY, TRAVEL, SPORTS, ENTERTAINMENT, HOME FURNISH-
`INGS, GARDEN ITEMS, MUSICAL INSTRUMENTS, MOTOR VEHICLES,
`TOYS AND GAMES, FASHION, JEWELRY,ELECTRONICS, PHOTOGRAPHY,
`HOLIDAY RELATED ITEMS, FILM AND VIDEO; PAPER AND STATIONERY
`ITEMS, NAMELY, MEMO PADS, [ PAPERPOSTCARDS, BUMPER STICKERS,
`CALENDARS, DECORATIVE STICKERS AND DECALS ]
`
`U.S. Registration
`No.
`
`2744717
`
`Registration Date
`
`07/29/2003
`
`Word Mark
`
`Design Mark
`
`EBAY
`
`Application Date
`
`04/10/2000
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 038. First use: First Use: 1996/05/00 First Use In Commerce: 1996/05/00
`Providing an online, interactive bulletin board for the transmission of messages
`among computer users concerning hobbies, collectibles, trading, and the sale of
`items via a global computer network
`
`U.S. Registration
`No.
`
`2810863
`
`Registration Date
`
`02/03/2004
`
`Application Date
`
`01/13/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`EBAY
`
`NONE
`
`Class 016. First use: First Use: 2002/12/10 First Use In Commerce: 2002/12/10
`PUBLICATIONS, namely, A SERIES OF NONFICTION BOOKS CONCERNING
`HOBBIES, COLLECTIBLES, AUCTIONS, AND A WIDE VARIETY OF
`PRODUCTS RELATING TO ANTIQUES, ART, LITERATURE, CULTURE,
`TECHNOLOGY, TRAVEL, SPORTS, ENTERTAINMENT, HOME FURNISH-
`INGS, GARDEN ITEMS, MUSICAL INSTRUMENTS, MOTOR VEHICLES,
`TOYS AND GAMES, FASHION, JEWELRY,ELECTRONICS, PHOTOGRAPHY,
`HOLIDAY RELATED ITEMS, FILM AND VIDEO; PAPER AND STATIONERY
`ITEMS, NAMELY, [ GREETING CARDS, ]MEMORANDUM BOARDS, MEMO
`PADS, [PAPER POSTCARDS ], STATIONERY, PENS, [ BUMPER STICKERS,
`] CALENDARS[ AND DECORATIVE STICKERS AND DECALS]
`
`U.S. Registration
`No.
`
`2913401
`
`Registration Date
`
`12/21/2004
`
`Application Date
`
`03/15/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`EBAY
`
`NONE
`
`Class 041. First use: First Use: 1999/01/00 First Use In Commerce: 1999/01/00
`Providing sweepstakes, games of chance and contests via the internet
`
`U.S. Registration
`No.
`
`2926481
`
`Registration Date
`
`02/15/2005
`
`Application Date
`
`04/10/2000
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`EBAY
`
`NONE
`
`Class 041. First use: First Use: 2003/06/26 First Use In Commerce: 2003/06/26
`Entertainment services, namely, providing a radio program in the fields of hob-
`bies, collectibles, trading and auctions
`
`U.S. Registration
`No.
`
`4408423
`
`Application Date
`
`09/12/2012
`
`

`

`Registration Date
`
`09/24/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`EBAY
`
`The mark consists of the letters "ebay"all in lower case, each in the color red,
`blue, yellow and green respectively.
`
`Class 035. First use: First Use: 2012/10/10 First Use In Commerce: 2012/10/10
`Online trading services, namely, operating online marketplaces for sellers and
`buyers of goods and services; online trading services in which sellers post
`products or services to be offered for sale,and purchasing or bidding is done via
`the Internet in order to facilitate the sale of goods and services by others via a
`computer network; providing evaluativefeedback and ratings of sellers' goods
`and services, the value and prices of sellers' goods and services, buyers' and
`sellers' performance, delivery, and overall trading experience in connection
`therewith; providing a searchable online advertising guide featuring the goods
`and services of online vendors; providing a searchable online evaluation data-
`base forbuyers and sellers; advertising and advertisement services; business
`services in the nature of intellectual property claims management, namely, pro-
`cessing and administration of claims of intellectualproperty owners against third
`party sellers; identification verification services, namely, confirming authenticity
`of environmentally friendly products, producers and sellers for the purposes of
`helping consumers make informed purchasing decisions
`Class 036. First use: First Use: 2012/10/10 First Use In Commerce: 2012/10/10
`Real estate listing services; classified real estate listings of apartment rentals,
`housing rentals and vacation rentals; providing purchase protection services in
`the field of online trading of goods and services by others via a global computer
`network; charitable fundraising services
`Class 038. First use: First Use: 2012/10/10 First Use In Commerce: 2012/10/10
`Telecommunications services, namely, the electronic transmission of data and
`information; electronic messaging; providing an online, interactive bulletin board-
`for the transmission of messages among computer users concerning hobbies,
`collectibles, trading, and the sale of goods and services via a global computer
`network
`
`U.S. Registration
`No.
`
`5008322
`
`Registration Date
`
`07/26/2016
`
`Application Date
`
`09/12/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`EBAY
`
`The mark consists of the letters "ebay"all in lower case, each in the color red,
`blue, yellow and green respectively.
`
`Class 009. First use: First Use: 2012/10/10 First Use In Commerce: 2012/10/10
`Mouse pads; computer e-commerce software to allow users to conduct electron-
`ic business transactions in online marketplaces via a global computer network;
`computer database software featuring information in the field of hobbies, collect-
`ibles and a wide variety of products; computer software and software develop-
`ment tools for use in developing further software and software applications in the
`fieldof e-commerce
`Class 016. First use: First Use: 2012/11/01 First Use In Commerce: 2012/11/01
`Publications, namely, a series of nonfiction books concerning hobbies, collect-
`ibles, auctions, online marketplaces, anda wide variety of products relating to
`antiques, art, literature, culture, technology, travel, sports, entertainment, home
`furnishings, garden items, musical instruments, motor vehicles, toys and games,
`
`

`

`fashion, jewelry, electronics, photography, holiday related items, film and video;
`paper and stationery items, namely, memo pads, paper postcards, stationery,
`pens and pencils
`Class 018. First use: First Use: 2012/11/01 First Use In Commerce: 2012/11/01
`Duffel bags, tote bags, backpacks and briefcases
`Class 020. First use: First Use: 2012/11/01 First Use In Commerce: 2012/11/01
`Plastic key chain tags
`Class 021. First use: First Use: 2012/11/01 First Use In Commerce: 2012/11/01
`Mugs; tumblers; water bottles sold empty
`Class 025. First use: First Use: 2012/11/01 First Use In Commerce: 2012/11/01
`Clothing, namely, t-shirts, sweatshirts, caps, jackets, and visors
`Class 028. First use: First Use: 2014/11/27 First Use In Commerce: 2014/11/27
`bean bag toys
`Class 041. First use: First Use: 2012/10/10 First Use In Commerce: 2012/10/10
`Providing sweepstakes, games of chance and contests via the internet; enter-
`tainment services, namely, providing an ongoing radio program in the fields of
`hobbies, collectibles, trading, buying, selling, and online auctions and market-
`places; educational services, namely, conducting classes in the field of informa-
`tion security and providing corporate education courses in the field of informa-
`tion security; educational services, namely, providing courses, classes and sem-
`inars inthe fields of buying and selling via online marketplaces, as well as estab-
`lishing and operating online marketplace businesses
`Class 042. First use: First Use: 2012/10/10 First Use In Commerce: 2012/10/10
`Design and development of computer software, software applications, and ap-
`plication programming interfaces; providing temporary use of on-line, non-
`downloadable computer software and software development tools for use in de-
`veloping furthersoftware and software applications in the field of e-commerce;
`providing temporary use of online, non-downloadable e-commerce software to
`allow users to conduct electronic business transactions in online marketplaces
`via a global computer network; maintenance and updating of computer software
`for others; providing a website that gives users the ability to create customized
`web pages featuring user-defined information in the field of intellectual property
`rights and intellectual property enforcement policies, in order to assist program
`participants with inquiries and requests regarding use of intellectual property by
`others in an online marketplace
`Class 045. First use: First Use: 2012/10/10 First Use In Commerce: 2012/10/10
`Online social networking services; providing information regarding intellectual-
`property owners and their enforcement policies, all in order to assist program
`participants with inquiries and requestsregarding use of intellectual property by
`others in an online marketplace
`
`U.S. Application
`No.
`
`88051156
`
`Application Date
`
`07/24/2018
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`EBAY
`
`The mark consists of the letters "ebay"all in lower case, each in the color red,
`blue, yellow and green respectively.
`
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`Computer software for processing electronic payments to and from others; au-
`thentication software for controlling accessto and communications with com-
`puters and computer networks
`
`

`

`Class 036. First use: First Use: 0 First Use In Commerce: 0
`Financial services, namely, clearing and reconciling financial transactions;
`providing a wide variety of payment and financial services, namely, electronic
`payment services involving electronic processing and subsequent transmission
`of payment data, all conducted via a global communications network; credit card
`and debit card transaction processing services; providing purchase protection
`servicesfor goods and services purchased by others via a global computer net-
`work and wireless networks; providing business loans and business lines of
`credit
`Class 042. First use: First Use: 0 First Use In Commerce: 0
`Providing temporary use of on-line non-downloadable software for processing
`electronic payments; providing temporary use of on-line non-downloadable au-
`thentication software for controlling access to and communications with com-
`puters and computer networks
`
`U.S. Application
`No.
`
`88051135
`
`Application Date
`
`07/24/2018
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`EBAY
`
`NONE
`
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`Computer software for processing electronic payments to and from others; au-
`thentication software for controlling accessto and communications with com-
`puters and computer networks
`Class 036. First use: First Use: 0 First Use In Commerce: 0
`Financial services, namely, clearing and reconciling financial transactions;
`providing a wide variety of payment and financial services, namely, electronic
`payment services involving electronic processing and subsequent transmission
`of payment data, all conducted via a global communications network; credit card
`and debit card transaction processing services; providing purchase protection
`servicesfor goods and services purchased by others via a global computer net-
`work and wireless networks; providing business loans and business lines of
`credit
`Class 042. First use: First Use: 0 First Use In Commerce: 0
`Providing temporary use of on-line non-downloadable software for processing
`electronic payments; providing temporary use of on-line non-downloadable au-
`thentication software for controlling access to and communications with com-
`puters and computer networks
`
`Attachments
`
`Notice of Opposition.pdf(2547261 bytes )
`
`Signature
`
`Name
`
`Date
`
`/Amy J. Tindell/
`
`Amy J. Tindell
`
`01/08/2021
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Opposer,
`
`
`EBAY INC.,
`
`
`
`v.
`
`AFREBAY, INC.,
`
`
`
`
`Applicant.
`
`
`Opposition No.:
`
`
`
` (AFREBAY
`Trademark:
`REACH THE SOURCE & Design)
`
`
`Serial No.: 90076450
`
`
`
`
`NOTICE OF OPPOSITION
`
`eBay Inc. (“eBay”), a Delaware corporation with its principal place of business at 2025
`
`Hamilton Avenue, San Jose, California 95125, believes that it will be damaged by the
`
`registration of the mark
`
` (AFREBAY REACH THE SOURCE & Design) (the
`
`“AFREBAY Mark”) shown in U.S. Trademark Application Serial No. 90076450 (the
`
`“Application”) for the following goods and hereby opposes it:
`
`• Advertising and marketing services, namely, promoting the goods and
`
`services of others; Advertising, marketing and promotion services; On-
`
`line retail store services featuring a wide variety of consumer goods of
`
`others; General business networking referral services, namely,
`
`promoting the goods and services of others by passing business leads
`
`and referrals among group members; Providing business information
`
`regarding charitable or humanitarian organizations; Providing an on-
`
`line searchable database featuring business information and business
`
`contacts in Class 35
`
`
`
`1
`
`

`

`
`
`• Credit card payment processing services; Debit card transaction
`
`processing services; Payment processing services, namely, credit card
`
`and debit card transaction processing services; Processing of credit
`
`card payments; Processing of debit card payments in Class 36.
`
`As grounds for its opposition, eBay alleges that, upon actual knowledge with respect to
`
`itself and its own actions, and upon information and belief as to other matters:
`
`EBAY’S BUSINESS AND MARKS
`
`1.
`
`eBay is one of the world’s leading online marketplaces, serving millions of users
`
`worldwide, and featuring over a billion goods and services offered for sale on its website at
`
`http://www.ebay.com at any given time.
`
`2.
`
`Since its online marketplace was launched in September 1995, eBay has
`
`continuously used the mark EBAY in interstate commerce in the United States and in commerce
`
`between the United States and foreign countries in connection with its goods and services.
`
`3.
`
`eBay is the owner of numerous U.S. registrations and applications for the mark
`
`EBAY on the Principal Register (in word form and in design form), the earliest of which was
`
`issued January 19, 1999:
`
`
`
`2
`
`

`

`
`
`
`
`TRADEMARK
`
`REG./APP.
`NO.
`
`REG./FILING DATE
`
`CLASS(ES)
`
`EBAY
`
`EBAY
`
`EBAY
`
`EBAY
`
`EBAY
`
`EBAY
`
`EBAY
`
`EBAY
`
`EBAY
`
`EBAY
`
`EBAY
`
`EBAY
`
`EBAY
`
`EBAY
`
`EBAY
`
`2,218,732
`
`January 19, 1999
`
`2,367,932
`
`July 18, 2000
`
`2,501,043
`
`October 23, 2001
`
`2,518,652
`
`December 11, 2001
`
`2,522,630
`
`December 25, 2001
`
`2,578,260
`
`June 11, 2002
`
`2,592,515
`
`July 9, 2002
`
`2,604,374
`
`August 6, 2002
`
`2,666,767
`
`December 24, 2002
`
`2,700,675
`
`March 25, 2003
`
`2,700,836
`
`March 25, 2003
`
`2,744,717
`
`July 29, 2003
`
`2,810,863
`
`February 3, 2004
`
`2,913,401
`
`December 21, 2004
`
`2,926,481
`
`February 15, 2005
`
`35
`
`28
`
`14
`
`25
`
`20
`
`18
`
`38
`
`21
`
`25
`
`9
`
`16
`
`38
`
`16
`
`41
`
`41
`
`
`
`
`
`
`
`4,408,423
`
`September 24, 2013
`
`35, 36, 38
`
`5,008,322
`
`July 26, 2016
`
`9, 16, 18, 20, 21,
`25, 28, 41, 42, 45
`
`88051156
`
`July 24, 2018
`
`9, 36, 42
`
`EBAY
`
`88051135
`
`July 24, 2018
`
`9, 36, 42
`
`4.
`
`The registrations and applications noted above cover various goods and services,
`
`including advertising, marketplace, and payment services in Classes 9, 35, 36, and 42, which are
`
`related to or overlap with the services in the Application. Each of the registrations above is also
`
`valid and subsisting, and many are now incontestable under the provisions of 15 U.S.C. § 1065.
`
`(See Exhibit A for copies of TSDR records for these marks.)
`
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`3
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`5.
`
`eBay also has extensive common law rights in its EBAY and EBAY (Stylized)
`
`marks and uses these marks in connection with a wide variety of goods and services throughout
`
`the United States and abroad, including, of particular relevance to this opposition, debit and
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`credit card and payment management services. All of eBay’s marks that consist of or
`
`incorporate the term EBAY, including its registrations and applications, are hereafter referred to
`
`as the “EBAY Marks.”
`
`6.
`
`EBAY is an invented, fanciful mark that is highly distinctive. The term EBAY
`
`has no meaning as applied to marketplace services or to any of the other goods and services
`
`covered by eBay’s registrations or in connection with which it uses the EBAY Marks.
`
`7.
`
`eBay has expended considerable money and effort in promoting the EBAY Marks
`
`and the goods and services offered in connection with these marks, both in the United States and
`
`internationally.
`
`8.
`
`In addition to its own advertising efforts, eBay has been the subject of thousands
`
`of unsolicited stories in television, radio, and print media that highlight eBay’s innovative and
`
`successful efforts in online, person-to-person trading and sales.
`
`9.
`
`eBay and its brand have also received numerous awards and recognitions and
`
`been acclaimed by the media worldwide.
`
`10.
`
`As a result of eBay’s widespread use of the EBAY Marks worldwide, extensive
`
`Internet, television, and print advertising and promotion, continuous and unsolicited media
`
`coverage, the high degree of consumer recognition of the EBAY Marks, the large base of loyal
`
`customers that eBay enjoys for its services, numerous trademark registrations, and the absence of
`
`any material use of any highly similar mark by others, among other factors, the EBAY Marks are
`
`famous within the meaning of Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c).
`
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`4
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`
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`DISTINCTIVENESS OF THE TERM “BAY”
`
`11.
`
`The dominant component of the famous EBAY Marks is the term BAY, which is
`
`arbitrary and highly distinctive of the goods and services covered by eBay’s registrations and in
`
`connection with which it uses the EBAY Marks.
`
`12.
`
`Following on the fame and success of eBay, many entities have attempted to
`
`adopt names and marks that combine the generic or descriptive term for what the particular
`
`service or website offers or provides with the distinctive BAY suffix of the EBAY Marks, to
`
`create a “generic/descriptive term plus BAY” mark. Examples of such marks, the use of which
`
`eBay has successfully stopped, include: PERFUMEBAY (for a website relating to the sale of
`
`perfumes); STREEBAY (an online marketplace); PREMOBAY (online store for various
`
`collector items); TRADEBAY (an online marketplace); MYGEEKBAY.COM (online
`
`marketplace), CONSULTANTS BAY (networking services), REALBAY (online real estate
`
`listing, marketplace and auction website), ALTERNABAY (site offering goods related to
`
`alternative lifestyles), AUTOBAY (site advertising automobiles for sale), BOATBAY (site
`
`offering a “nautical search portal”), BRICKBAY (site offering Lego® bricks), CARBAY (site
`
`advertising automobiles for sale), EGGBAY (site offering items for egg farmers),
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`COINBAY.BIZ (site offering auctions of collectible coins), EMERGENCYBAY (site offering
`
`emergency rescue goods), EVENTSBAY (online events guide), JEWELRYBAY (site offering
`
`diamonds and fine jewelry), MILITARYBAY (site offering military goods), NAZIBAY (site
`
`offering Nazi memorabilia), NIXBAY (an online auction and classified website that charged
`
`“nix” or nothing to list items), SELLINGBAY (site listing auctions, classifieds, and want ads),
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`XBAY (site offering sexually-oriented material); WEEDBAY (computer e-commerce software);
`
`and THE BUYERS BAY (online marketplace), among others.
`
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`13.
`
`The United States Patent and Trademark Office (“PTO”) has recognized that the
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`dominant component of the EBAY Marks is the term BAY, refusing third-party registrations on
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`the ground that the use of BAY combined with a generic or descriptive term is likely to cause
`
`confusion with the EBAY Marks.
`
`14.
`
`For example, the PTO refused registration of Application Serial No. 78516920 for
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`the mark FLEABAY for “flea markets” because “applicant’s mark, when used on or in
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`connection with the identified goods or services, so resembles the marks in U.S. Registration
`
`Nos. 2218732, 2420512, 2218732, 2514362, 2555505 and 2913227 (all owned by [eBay]) as to
`
`be likely to cause confusion, to cause mistake, or to deceive.”
`
`15.
`
`Similarly, the PTO refused registration of Application Serial No. 78552094 for
`
`the mark BAY BAZAAR for “business management assistance and particularly carrying out
`
`tasks necessary for the smooth conduct of sales by auction” because of a “likelihood of
`
`confusion with the marks in U.S. Registration Nos. 2555505, 2218732, 2410023 and 2420512,”
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`all of which are owned by eBay.
`
`16.
`
`The PTO has also recognized the distinctiveness of the BAY component in
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`refusing registration of the following marks in light of the EBAY Marks: BAYRU & Design
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`(Serial No. 85075519), BAYRU (Serial No. 85/086,853), IBAY (Serial No. 76195016) and
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`TBAYAUCTION (Serial No. 78059732).
`
`17.
`
`Likewise, the Ninth Circuit in Perfumebay.com Inc. v. eBay Inc., 506 F.3d 1165
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`(9th Cir. 2007), recognized the distinctiveness of the BAY component of the EBAY Marks, held
`
`that the term “BAY” is the dominant aspect of the EBAY Marks, and found that use of the mark
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`PERFUMEBAY in connection with an online marketplace specializing in perfume would dilute
`
`the EBAY Marks. Id. at 1181 (noting that the mark PERFUMEBAY may cause consumers to
`
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`6
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`
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`“no longer associate the usage of the ‘Bay’ suffix with eBay’s unique services”; consequently
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`“the uniqueness of eBay’s mark is diluted in direct proportion to the extent consumers,
`
`particularly internet users, disassociate the eBay mark with eBay’s services.”).
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`18.
`
`If others could freely use “generic/descriptive term plus BAY” marks to offer or
`
`advertise their goods or services, the term BAY could become generic for “marketplace” or
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`“service to connect buyers and sellers” or “location providing items for sale” or “location where
`
`goods and services are offered online,” diluting the distinctiveness of the famous EBAY Marks
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`to the point that they cease to function as unique and distinctive identifiers of eBay’s goods or
`
`services, to eBay’s severe detriment.
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`APPLICANT AND ITS PENDING APPLICATION
`
`19.
`
`Applicant seeks to register the AFREBAY Mark in connection with: “Advertising
`
`and marketing services, namely, promoting the goods and services of others; Advertising,
`
`marketing and promotion services; On-line retail store services featuring a wide variety of
`
`consumer goods of others; General business networking referral services, namely, promoting the
`
`goods and services of others by passing business leads and referrals among group members;
`
`Providing business information regarding charitable or humanitarian organizations; Providing an
`
`on-line searchable database featuring business information and business contacts” in Class 35,
`
`and “Credit card payment processing services; Debit card transaction processing services;
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`Payment processing services, namely, credit card and debit card transaction processing services;
`
`Processing of credit card payments; Processing of debit card payments” in Class 36.
`
`20.
`
`The application date for the Application is July 27, 2020, and the Application
`
`published in the Official Gazette of the PTO on December 29, 2020.
`
`21.
`
`The AFREBAY Mark is confusingly similar to the EBAY Marks because it
`
`simply combines the descriptive acronym for “Africa,” AFR, with the distinctive term BAY to
`
`
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`7
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`
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`create a mark that emulates and calls to mind EBAY, especially given the AFREBAY Mark
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`phonetically and/or visually encompasses the entire EBAY Mark. The descriptiveness of the
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`AFR element is highlighted by Applicant’s use of an image of the Africa continent, leading
`
`consumers to interpret “AFR” as descriptive of or related to Africa.
`
`22.
`
`In addition, the services identified in the Application for the AFREBAY Mark are
`
`identical to, highly similar to, and/or overlap with eBay’s goods and services.
`
`23.
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`Upon information and belief, Applicant selected the AFREBAY Mark with
`
`knowledge of and intent to cause confusion with, and/or create a purposeful association with, the
`
`EBAY Marks.
`
`24.
`
`eBay is not affiliated or connected with Applicant or its services, nor has eBay
`
`endorsed or sponsored Applicant or its services.
`
`25.
`
`eBay began using its EBAY Marks and enjoys priority as a result of the filing
`
`dates of its trademark registrations, which are well prior to the filing date of the Application and
`
`well prior to any use by Applicant of the AFREBAY Mark.
`
`COUNT I
`Likelihood of Confusion
`15 U.S.C. § 1052(d)
`
`26.
`
`eBay realleges and incorporates by reference the preceding allegations of this
`
`Notice of Opposition.
`
`27.
`
`Registration of the AFREBAY Mark will injure eBay by causing the public to be
`
`confused or to believe, erroneously, that the services provided by Applicant are endorsed or
`
`sponsored by eBay. eBay has no control over the nature and quality of the services offered by
`
`Applicant under the confusingly similar AFREBAY Mark, and eBay’s reputation and goodwill
`
`will be damaged and the value of the EBAY Marks jeopardized, all to eBay’s detriment.
`
`
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`8
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`
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`28.
`
`Since well prior to the filing date of the Application, any claimed date of first use
`
`of the AFREBAY Mark, or any priority date upon which Applicant may rely, eBay has used one
`
`or more of the EBAY Marks.
`
`29.
`
`Registration of the mark herein opposed will damage eBay because the
`
`AFREBAY Mark is likely, when used on or in connection with the services described in the
`
`Application, to cause confusion, or to cause mistake, or to deceive. Thus, the AFREBAY Mark
`
`is unregistrable under Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), and should be
`
`refused registration.
`
`COUNT II
`Likelihood of Dilution
`15 U.S.C. § 1125(c)
`
`eBay realleges and incorporates by reference the preceding allegations of this
`
`30.
`
`Notice of Opposition.
`
`31.
`
`EBAY is a fanciful mark that is highly distinctive of eBay’s goods and services.
`
`eBay has used the EBAY Marks since at least September 1995 for online marketplace and
`
`trading services and associated goods and services, includ