Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1107510
`01/13/2021
`
`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
`
`Attorney informa-
`tion
`
`Beats Electronics, LLC
`
`Limited Liability Company
`
`Citizenship
`
`Delaware
`
`8600 HAYDEN PLACE
`CULVER CITY, CA 90232
`UNITED STATES
`
`MICHAEL G. KELBER
`NEAL, GERBER & EISENBERG LLP
`TWO NORTH LASALLE STREET, SUITE 1700
`CHICAGO, IL 60602
`UNITED STATES
`Primary Email: trademarks@nge.com
`Secondary Email(s): docketmail@nge.com, mekelber@nge.com,
`afraker@nge.com, afuelleman@nge.com, marden@nge.com
`312-269-8000
`
`Docket Number
`
`022552.3747
`
`Applicant Information
`
`Application No.
`
`88941082
`
`Publication date
`
`12/15/2020
`
`Opposition Filing
`Date
`
`Applicant
`
`01/13/2021
`
`Opposition Peri-
`od Ends
`
`01/14/2021
`
`SUPER MEGATRONIX LLC
`STE L
`9305 HARWIN DR
`HOUSTON, TX 770361821
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Audio equipment for vehicles, namely, loud
`speakers for automotive audio systems; Audio mixers; Audio mixing consoles; Cabinets for loud-
`speakers; Car stereos; Equalizers being audio apparatus; Megaphones; Microphones; Subwoofers;
`Woofers
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`
`3862142
`
`Application Date
`
`06/03/2008
`
`

`

`No.
`
`Registration Date
`
`10/12/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`BEATS
`
`NONE
`
`Class 009. First use: First Use: 2008/07/01 First Use In Commerce: 2008/07/01
`headphones
`
`U.S. Registration
`No.
`
`4035777
`
`Registration Date
`
`10/04/2011
`
`Application Date
`
`06/03/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`BEATS
`
`NONE
`
`Class 009. First use: First Use: 2010/09/07 First Use In Commerce: 2010/09/07
`Audio speakers; loudspeakers
`
`U.S. Registration
`No.
`
`4361690
`
`Registration Date
`
`07/02/2013
`
`Application Date
`
`02/05/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`BEATS
`
`NONE
`
`Class 009. First use: First Use: 2010/09/07 First Use In Commerce: 2010/09/07
`loudspeakers, audio speakers, car audiospeakers [, media players for automo-
`biles, CD players for automobiles ]
`Class 025. First use: First Use: 2011/11/05 First Use In Commerce: 2011/11/05
`[ T-shirts ]
`
`U.S. Registration
`No.
`
`4529746
`
`Registration Date
`
`05/13/2014
`
`Application Date
`
`07/21/2009
`
`Foreign Priority
`Date
`
`06/17/2009
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`BEATS
`
`NONE
`
`Class 009. First use: First Use: 2008/07/01 First Use In Commerce: 2008/07/01
`electronic cables, namely, audio electric cables and cable connectors; power
`cables and cable connectors; audio speakers for home theater systems
`Class 025. First use: First Use: 2011/11/05 First Use In Commerce: 2011/11/05
`headgear, namely, caps, hats
`Class 041. First use: First Use: 2013/12/05 First Use In Commerce: 2013/12/05
`
`

`

`Provision of live entertainment and recorded entertainment, namely, live musical
`performances by musical bands and DJs;musical entertainment in the nature of
`live visual and audio performances by musical groups and DJs; exhibitions,
`namely, exhibitions concerning music; musicalentertainment in the nature of live
`visual and audio performances by musical groups and DJs; exhibitions, namely,
`exhibitions concerning music
`
`U.S. Registration
`No.
`
`4537908
`
`Registration Date
`
`05/27/2014
`
`Application Date
`
`02/05/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`BEATS
`
`NONE
`
`Class 009. First use: First Use: 2012/08/00 First Use In Commerce: 2012/08/00
`Carrying cases for headphones
`
`U.S. Registration
`No.
`
`5448731
`
`Registration Date
`
`04/17/2018
`
`Application Date
`
`02/03/2014
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`BEATS
`
`NONE
`
`Class 009. First use: First Use: 2011/12/31 First Use In Commerce: 2011/12/31
`Speaker stands; Protective cases for speakers; Remote controls for speakers;
`Plug adaptors; Chargers for use with headphones and speakers; Carrying cases
`for headphones and portable speakers; Portable speaker mount for bicycles;
`Computer software, namely, software for updating wireless speakers and head-
`phones; Handheld devices for controlling speakers; Computer software for use
`in controlling speakers, amplifiers; Downloadable audio and video recordings
`featuring music, music performances, and music videos; Prerecorded music,
`namely, digital downloads; Computer software for use in the delivery, distribution
`and transmission of digital music and entertainment- related audio, video, text
`and multimedia content
`
`U.S. Registration
`No.
`
`4177191
`
`Registration Date
`
`07/17/2012
`
`Application Date
`
`06/08/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`BEATS PRO
`
`NONE
`
`Class 009. First use: First Use: 2010/10/14 First Use In Commerce: 2010/10/14
`Headphones; personal headphones for usewith sound transmitting systems
`
`U.S. Registration
`No.
`
`4176105
`
`Application Date
`
`07/21/2009
`
`Registration Date
`
`07/17/2012
`
`Foreign Priority
`
`06/17/2009
`
`

`

`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`Date
`
`BEATS BY DR. DRE
`
`NONE
`
`Class 009. First use: First Use: 2010/10/14 First Use In Commerce: 2010/10/14
`[ media players for automobiles; DVD players for automobiles; CD players for
`automobiles; digital audio players for automobiles; ] audio speakers; car audio
`speakers; loudspeakers; [ loudspeaker cabinets; horns for loudspeakers;] head-
`phones ; personal headphones for use with sound transmitting systems [ ; media
`players for automobiles]
`Class 025. First use: First Use: 2011/11/05 First Use In Commerce: 2011/11/05
`[ T-shirts ]
`
`U.S. Registration
`No.
`
`4572603
`
`Registration Date
`
`07/22/2014
`
`Application Date
`
`07/21/2009
`
`Foreign Priority
`Date
`
`06/17/2009
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`BEATS BY DR. DRE
`
`NONE
`
`Class 009. First use: First Use: 2012/10/16 First Use In Commerce: 2012/10/16
`Audio speakers for home theater systems
`
`U.S. Registration
`No.
`
`4314478
`
`Registration Date
`
`04/02/2013
`
`Application Date
`
`02/27/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`BEATS STUDIO
`
`NONE
`
`Class 009. First use: First Use: 2012/07/01 First Use In Commerce: 2012/07/01
`Headphones
`
`U.S. Registration
`No.
`
`4314930
`
`Registration Date
`
`04/02/2013
`
`Application Date
`
`03/09/2012
`
`Foreign Priority
`Date
`
`09/12/2011
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`URBEATS
`
`NONE
`
`Class 009. First use: First Use: 2011/11/00 First Use In Commerce: 2011/11/00
`Headphones
`
`U.S. Registration
`No.
`
`5387883
`
`Application Date
`
`11/09/2016
`
`Registration Date
`
`01/23/2018
`
`Foreign Priority
`
`05/25/2016
`
`

`

`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`BEATS X
`
`Date
`
`The mark consists of the stylized word "beats" with a broken line stylized letter
`"x" in superscript.
`
`Class 009. First use: First Use: 2016/09/07 First Use In Commerce: 2017/02/10
`Earphones; audio cables; battery chargers, charging cables, and power ad-
`aptors for use with earphones; carrying cases for earphones
`
`U.S. Registration
`No.
`
`5188070
`
`Registration Date
`
`04/18/2017
`
`Application Date
`
`04/04/2016
`
`Foreign Priority
`Date
`
`10/15/2015
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`BEATS EP
`
`NONE
`
`Class 009. First use: First Use: 2016/09/00 First Use In Commerce: 2016/09/00
`audio speakers; loud speakers; earphones; headphones; microphones; electric-
`al and electronic connectors, couplers, wires, cables, chargers, docks, docking
`stations, interfaces, and adapters for use with all of the aforesaid goods; covers,
`bags and cases adapted or shaped to contain audio players
`
`U.S. Registration
`No.
`
`4937568
`
`Registration Date
`
`04/12/2016
`
`Application Date
`
`09/09/2014
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`POWERBEATS
`
`NONE
`
`Class 009. First use: First Use: 2010/09/00 First Use In Commerce: 2010/09/00
`Earphones, audio cables
`
`U.S. Registration
`No.
`
`6054617
`
`Registration Date
`
`05/12/2020
`
`Application Date
`
`04/03/2019
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`POWERBEATS PRO
`
`NONE
`
`Class 009. First use: First Use: 2019/04/03 First Use In Commerce: 2019/05/10
`Headphones; earphones; earbuds; batterychargers, charging cables for use with
`headphones, earphones, and earbuds; carrying cases for headphones,
`earphones, and earbuds; protective cases for headphones, earphones, and ear-
`buds; protective covers, bags and cases adapted and shapedfor holding head-
`phones, earphones, and earbuds
`
`U.S. Registration
`No.
`
`4314931
`
`Application Date
`
`01/09/2012
`
`

`

`Registration Date
`
`04/02/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`BEATS PILL
`
`NONE
`
`Class 009. First use: First Use: 2012/10/16 First Use In Commerce: 2012/10/16
`audio speakers; loudspeakers
`
`U.S. Registration
`No.
`
`5428637
`
`Registration Date
`
`03/20/2018
`
`Application Date
`
`04/21/2014
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`BEATSAUDIO
`
`NONE
`
`Class 009. First use: First Use: 2012/06/30 First Use In Commerce: 2012/06/30
`Computers; car speakers
`
`U.S. Registration
`No.
`
`5396184
`
`Registration Date
`
`02/06/2018
`
`Application Date
`
`07/19/2017
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`BEATS SOLO
`
`NONE
`
`Class 009. First use: First Use: 2009/10/13 First Use In Commerce: 2009/10/13
`Headphones
`
`U.S. Registration
`No.
`
`6203699
`
`Registration Date
`
`11/24/2020
`
`Application Date
`
`11/14/2019
`
`Foreign Priority
`Date
`
`10/15/2019
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`BEATS SOLO PRO
`
`NONE
`
`Class 009. First use: First Use: 2019/10/15 First Use In Commerce: 2019/10/30
`Headphones; earphones; microphones; audio cables; chargers, electric char-
`ging cables for use with headphones and earphones; carrying cases for head-
`phones and earphones; protective cases for headphoneand earphones; protect-
`ive covers, bags and cases specially adapted for headphones and earphones;
`headphone and earphoneaccessories, namely, straps and headphone,
`earphone, and audio cable clips; allof the foregoing to exclude cameras, video
`cameras, image recording apparatus, and products for use in underground in-
`spection
`
`

`

`Attachments
`
`Notice of Opposition - MUSICY BEAT by Super Megatronix.pdf(161227 bytes )
`
`Signature
`
`/Michael G. Kelber/
`
`Name
`
`Date
`
`Michael G. Kelber
`
`01/13/2021
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`BEATS ELECTRONICS, LLC
`
`
`
` v.
`
`SUPER MEGATRONIX LLC
`
`
`
`
`
`
`
`
`
`
`
`
`Opposer,
`
`Applicant.
`
`
`
`
`Opposition No.
`
`
`
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`Beats Electronics, LLC (“Beats”), a limited liability company organized under the laws of
`
`Delaware with a place of business at 8600 Hayden Place, Culver City, CA 90232, believes that it
`
`will be damaged by the registration of the marks MUSICY BEAT & Design
`
`in
`
`International Class 09, as shown in Application Serial No. 88/941,082 (the “Application”) filed by
`
`Super Megatronix LLC (“Applicant”), and therefore hereby opposes the same and requests that
`
`registration to Applicant be refused.
`
`The grounds for Beats’ Opposition are as follows:
`
`1.
`
`Beats is the owner of numerous trademarks consisting of or incorporating
`
`“BEATS” that have been utilized in connection with well-known, high-quality audio- and music-
`
`related products and services. Products – notably including headphones – sold under Beats’
`
`trademarks are among the most popular audio-related products in the United States, have been
`
`extensively promoted and advertised, and have been the subject of extensive unsolicited publicity
`
`resulting from their high-quality, innovative design and well-received marketing campaigns.
`
`

`

`
`
`
`
`Beats’ Prior Rights
`
`2.
`
`Since substantially prior to the acts of Applicant alleged herein, Beats has owned a
`
`variety of marks consisting of or incorporating “BEATS,” which have been utilized in connection
`
`with the distribution and sale of audio-related products, technology, and entertainment services.
`
`3.
`
`Beats owns multiple U.S. federal registrations for marks consisting of or
`
`incorporating “BEATS,” including the following:
`
`REGISTRATION
`NUMBER
`3,862,142
`4,035,777
`4,361,690
`
`PRIORITY DATE
`
`June 3, 2008
`June 3, 2008
`February 5, 2009
`
`4,529,746
`
`July 21, 2009
`
`4,537,908
`5,448,731
`
`February 5, 2009
`February 3, 2014
`
`MARK
`
`BEATS
`BEATS
`BEATS
`
`BEATS
`
`BEATS
`BEATS
`
`
`
`INTERNATIONAL CLASS:
`GOODS & SERVICES
`IC 9: Headphones
`IC 9: Audio speakers; loudspeakers
`IC 9: Loudspeakers, audio speakers,
`car audio speakers
`IC 9: Electronic cables, namely,
`audio electric cables and cable
`connectors; power cables and cable
`connectors; audio speakers for home
`theater systems.
`IC 25: Headgear, namely, caps, hats.
`IC 41: Provision of live
`entertainment and recorded
`entertainment, namely, live musical
`performances by musical bands and
`DJs; musical entertainment in the
`nature of live visual and audio
`performances by musical groups and
`DJs; exhibitions, namely,
`exhibitions concerning music;
`musical entertainment in the nature
`of live visual and audio
`performances by musical groups and
`DJs; exhibitions, namely,
`exhibitions concerning music.
`IC 9: Carrying cases for headphones
`IC 9: Speaker stands; Protective
`cases for speakers; Remote controls
`for speakers; Plug adaptors;
`Chargers for use with headphones
`and speakers; Carrying cases for
`
`2
`
`

`

`MARK
`
`BEATS PRO
`
`BEATS BY DR.
`DRE
`
`BEATS BY DR.
`DRE
`BEATS STUDIO
`URBEATS
`BEATS X
`(stylized)
`
`BEATS EP
`
`POWERBEATS
`POWERBEATS
`PRO
`
`
`
`INTERNATIONAL CLASS:
`GOODS & SERVICES
`headphones and portable speakers;
`Portable speaker mount for bicycles;
`Computer software, namely,
`software for updating wireless
`speakers and headphones; Handheld
`devices for controlling speakers;
`Computer software for use in
`controlling speakers, amplifiers;
`Downloadable audio and video
`recordings featuring music, music
`performances, and music videos;
`Prerecorded music, namely, digital
`downloads; Computer software for
`use in the delivery, distribution and
`transmission of digital music and
`entertainment- related audio, video,
`text and multimedia content
`IC 9: Headphones; personal
`headphones for use with sound
`transmitting systems.
`IC 9: Audio speakers, car audio
`speakers, loudspeakers, headphones,
`personal headphones for use with
`sound transmitting systems.
`IC 9: Audio speakers for home
`theater systems
`IC 9: Headphones
`IC 9: Headphones
`IC 9: Earphones; audio cables;
`battery chargers, charging cables,
`and power adaptors for use with
`earphones; carrying cases for
`earphones
`IC 9: Audio speakers; loud speakers;
`earphones; headphones;
`microphones; electrical and
`electronic connectors, couplers,
`wires, cables, chargers, docks,
`docking stations, interfaces, and
`adapters for use with all of the
`aforesaid goods; covers, bags and
`cases adapted or shaped to contain
`audio players
`IC9: Earphones, audio cables
`IC9: Headphones; earphones;
`earbuds; battery chargers, charging
`cables for use with headphones,
`earphones, and earbuds; carrying
`
`3
`
`REGISTRATION
`NUMBER
`
`PRIORITY DATE
`
`4,177,191
`
`June 8, 2010
`
`4,176,105
`
`July 29, 2009
`
`4,572,603
`
`4,314,478
`4,314,930
`5,387,883
`
`July 21, 2009
`
`February 27, 2012
`March 9, 2012
`November 9, 2016
`
`5,188,070
`
`April 4, 2016
`
`4,937,568
`6,054,617
`
`March 9, 2014
`April 3, 2019
`
`

`

`MARK
`
`BEATS PILL
`BEATSAUDIO
`
`INTERNATIONAL CLASS:
`GOODS & SERVICES
`cases for headphones, earphones,
`and earbuds; protective covers, bags,
`and cases adapted and shaped for
`holding headphones, earphones, and
`earbuds
`IC 9: Audio speakers; loudspeakers
`IC 9: Computers; car speakers
`
`REGISTRATION
`NUMBER
`
`PRIORITY DATE
`
`4,314,931
`5,428,637
`
`January 9, 2012
`April 21, 2014
`
`BEATS SOLO
`
`IC 9: Headphones
`
`5,396,184
`
`July 19, 2017
`
`6,203,699
`
`November 14, 2019
`
`IC 9: Headphones; earphones;
`microphones; audio cables;
`chargers, electric charging cables for
`use with headphones and earphones;
`carrying cases for headphones and
`earphones; protective cases for
`headphone and earphones;
`protective covers, bags and cases
`specially adapted for headphones
`and earphones; headphone and
`earphone accessories, namely, straps
`and headphone, earphone, and audio
`cable clips; all of the foregoing to
`exclude cameras, video cameras,
`image recording apparatus, and
`products for use in underground
`inspection
`
`BEATS SOLO
`PRO
`
`
`
`4.
`
`Many of Beats’ registrations for marks consisting of or incorporating “BEATS”
`
`have become incontestable, including Reg. Nos. 3,862,142; 4,035,777; 4,177,191; 4,176,105;
`
`4,314,478; 4,314,930; 4,314,931; 4,361,690; and 4,572,603.
`
`5.
`
`Through the common law use and registration of various marks consisting of or
`
`incorporating “BEATS,” Beats has created a family of marks such that consumers have become
`
`accustomed to seeing and therefore recognizing products and services with BEATS-based marks
`
`as originating from Beats (hereinafter referred to as the “family of BEATS marks” or “the BEATS
`
`Marks”). The public has come to recognize the common characteristic of the family of BEATS
`
`marks (the term BEATS in each of them) as indicating the source of these goods, namely, Beats.
`
`
`
`4
`
`

`

`6.
`
`Beats has devoted substantial resources, time, and effort to develop, market, and
`
`promote its BEATS Marks. Through these efforts, and long before the filing of the Applications,
`
`Beats built up and established extensive and valuable goodwill in the BEATS Marks. As a result,
`
`the public has come to know, identify, and recognize products and services bearing or marketed in
`
`association with marks incorporating the term “BEATS” as originating with or authorized by
`
`Beats.
`
`7.
`
`Furthermore, through Beats’ efforts, the BEATS Marks, both individually and
`
`collectively, have become famous and had become famous prior to Applicant’s filing of the
`
`Application.
`
`Beats Will Be Harmed If Applicant’s Mark Registers
`
`8.
`
`On information and belief, Applicant is a Texas limited liability company with an
`
`address of record at 9305 Harwin Dr., Ste. L, Houston, Texas 77036-1821.
`
`9.
`
`On May 30, 2020, notwithstanding Beats’ prior rights in and to the BEATS Marks,
`
`Applicant filed Application Ser. No. 88/941,082 to register
`
`(“Applicant’s Mark”)
`
`for use in connection with “Audio equipment for vehicles, namely, loud speakers for automotive
`
`audio systems; Audio mixers; Audio mixing consoles; Cabinets for loudspeakers; Car stereos;
`
`Equalizers being audio apparatus; Megaphones; Microphones; Subwoofers; Woofers” in
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`International Class 09. The Application was filed under Lanham Act §1(b) based on Applicant’s
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`intent to use the mark.
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`10.
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`The Applications were published in the Official Gazette (Trademarks) of the United
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`States Patent and Trademark Office on December 15, 2020. This Opposition is timely pursuant to
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`15 U.S.C. § 1063(a).
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`11.
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`There is no issue of priority. Each of the foregoing registrations for the BEATS
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`Marks has been in actual use or has a constructive use date prior to Applicant’s filing date of May
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`30, 2020.
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`12.
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`The goods set forth in the Application are identical, similar, or complementary and
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`related to the products and services marketed under the BEATS Marks. For example, the
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`Application covers “loud speakers for automotive audio systems,” which are identical to the “car
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`speakers” and “car audio speakers” covered by Beats’ Reg. Nos. 4,361,690; 4,176,105; and
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`5,428,637. They are also a subset of the “audio speakers” and “loudspeakers” covered by several
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`of Beats’ registrations. The Application covers “cabinets for loudspeakers,” which are
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`complementary to the speakers covered by Beats’ registrations. Beats’ Reg. No. 5,448,731
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`similarly covers various speaker accessories. The Application covers “subwoofers” and “woofers,”
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`which are also subsets of loudspeakers. The application also covers “microphones,” which are
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`covered by Beats’ Reg. Nos. 5,188,070 and 6,203,699. Finally, all of the goods covered by the
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`Application are closely related and complementary to the “headphones” and “earphones” covered
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`by ten of Beats’ registrations set forth above.
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`13.
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`Applicant’s advertising and use of Applicant’s Mark as contemplated in the
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`Application will inevitably reach the same consumers that Beats targets with the use of its family
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`of Beats Marks.
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`14.
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`Consumers, upon seeing Applicant’s Mark used in connection with Applicant’s
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`goods, are likely to mistakenly believe that Applicant’s Mark, and the goods provided in
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`connection with it, originated from or are connected with, sponsored by, associated with, or
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`licensed or approved by Beats.
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`15.
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`The BEATS Marks and Applicant’s Mark share the virtually and phonetically
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`identical element “beat/beats.” Moreover, multiple of the BEATS Marks combine the term “beats”
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`preceded by an additional term – e.g., URBEATS, POWERBEATS and POWERBEATS PRO.
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`Thus, the BEATS Marks, both individually and collectively, are substantially similar in sight,
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`sound, and meaning to Applicant’s Mark. The prominent depiction of headphones in the
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` mark further increases the likelihood of confusion, as the BEATS Marks have
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`become famous based on their long-standing use with headphones, among other audio goods.
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`16.
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`Accordingly, Applicant’s Mark is confusingly similar to the previously used
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`BEATS Marks, both individually and collectively, and therefore, if Applicant’s Mark were
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`allowed to register for the goods covered by the Application in International Class 09, such
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`registration would likely cause confusion, mistake, or deception among consumers concerning the
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`origin, source or sponsorship of Applicant’s products in violation of 15 U.S.C. §§ 1052(d),
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`1114(1), and 1125(a).
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`17.
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`If Applicant’s Mark were allowed to register, the confusion with the BEATS
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`Marks, both individually and collectively, would result in damage and injury to Beats and to the
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`public.
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`18.
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`Given Beats’ considerable reputation, registration of Applicant’s Mark is likely to
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`cause dilution of the distinctiveness of the BEATS Marks, both individually and collectively, in
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`violation of 15 U.S.C. § 1125(c).
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`WHEREFORE, Beats Electronics, LLC requests that the registration sought by Applicant
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`be refused and that this Notice of Opposition be sustained.
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`Beats authorizes the TTAB to charge the fees for opposition in one class and any additional
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`fees related to this matter to the deposit account of Neal, Gerber & Eisenberg LLP.
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`Respectfully submitted,
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`/Michael G. Kelber/_
`One of the Attorneys for
`BEATS ELECTRONICS, LLC
`Michael G. Kelber
`Andrea S. Fuelleman
`Andrew S. Fraker
`NEAL, GERBER & EISENBERG LLP
`2 North LaSalle Street, Suite 1700
`Chicago, Illinois 60602
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`Dated: January 13, 2021
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