Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1131710
`05/05/2021
`
`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
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`GoPro, Inc.
`
`05/05/2021
`
`3025 CLEARVIEW WAY
`SAN MATEO, CA 94402
`UNITED STATES
`
`CONNIE ELLERBACH
`FENWICK & WEST LLP
`801 CALIFORNIA STREET
`MOUNTAIN VIEW, CA 94041
`UNITED STATES
`Primary Email: trademarks@fenwick.com
`Secondary Email(s): lwilliams@fenwick.com
`650-988-8500
`
`Docket Number
`
`23769-70005
`
`Applicant Information
`
`Application No.
`
`90100241
`
`Publication date
`
`01/05/2021
`
`Opposition Filing
`Date
`
`Applicant
`
`05/05/2021
`
`Opposition Peri-
`od Ends
`
`05/05/2021
`
`Chen, Meifeng
`ROOM 601,LADDER 1,NO.4,LANE 145,LIUYI
`EAST ROAD,HANDONG STREET,HANJIANG DIST.
`PUTIAN, 361023
`CHINA
`
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 2020/04/22 First Use In Commerce: 2020/04/22
`All goods and services in the class are opposed, namely: Cameras; Megaphones; Scanners; Baby
`monitors; Car video recorders; Computer hardware and peripheral devices; Computer monitors; Elec-
`tric sensors; Electrical plugs and sockets; Electronic timers; Laser rangefinders; Loudspeakers, head-
`phones, microphones and CD players; Portable digital electronic scales; Portable videocameras with
`built-in videocassette recorders; Protective films adapted for smartphones; Protective industrial face
`masks; Smartwatch straps; Soundbar speakers; Wireless cellular phone headsets; Wireless chargers
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`Trademark Act Sections 2 and 43(c)
`
`

`

`False suggestion of a connection with persons,
`living or dead, institutions, beliefs, or national
`symbols, or brings them into contempt, or disrep-
`ute
`
`Trademark Act Section 2(a)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`3308141
`
`Registration Date
`
`10/09/2007
`
`Word Mark
`
`Design Mark
`
`HERO
`
`Application Date
`
`02/18/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2004/09/15 First Use In Commerce: 2004/09/15
`Photographic equipment, namely, [ film cameras and ] digital camera, camera
`housings and cases, and camera straps
`
`U.S. Registration
`No.
`
`5375974
`
`Registration Date
`
`01/09/2018
`
`Word Mark
`
`HERO
`
`Application Date
`
`08/26/2013
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2004/09/15 First Use In Commerce: 2004/09/15
`Photographic equipment, namely, cameras, digital cameras, video cameras;
`portable handheld electronic devices for recording, storage, transmission or re-
`production of photographic, video and multimedia content
`
`U.S. Registration
`No.
`
`5341604
`
`Registration Date
`
`11/21/2017
`
`Word Mark
`
`Design Mark
`
`HEROCAST
`
`Application Date
`
`03/23/2015
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2015/04/13 First Use In Commerce: 2015/04/13
`portable handheld electronic devices for recording, storage, transmission or re-
`production of photographic, video and multimedia content; cases, housings, and
`accessories for cameras, namely, batteries, wireless adapters, power adapters,
`adapter rings for attaching objects to cameras, mounting devices for photo-
`graphic equipment; cases for photographic apparatus
`
`U.S. Registration
`No.
`
`4993752
`
`Registration Date
`
`07/05/2016
`
`Word Mark
`
`GOPRO BE A HERO.
`
`Application Date
`
`08/26/2013
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the large words "GoPro" positioned above the smaller
`terms"Be a HERO." to the left of four small rectangles.
`
`Class 009. First use: First Use: 2008/07/17 First Use In Commerce: 2008/07/17
`Photographic equipment, namely, cameras, digital cameras, video cameras;
`portable handheld electronic devices for recording, storage, transmission or re-
`production of photographic, video and multimedia content; cases, housings, and
`accessories for cameras, namely, batteries, lenses, wireless adapters, power
`adapters, adapter rings for attaching objects to cameras, remote controls, micro-
`phones, SD cards, photographic flash units, mounting devices for photographic
`equipment, tripods and camera straps; cases and bags for photographic appar-
`atus; computer software for use in connection with photographic and video
`equipment and cameras, namely, software for taking, capturing, managing, pro-
`cessing, operating, viewing,storing, editing, arranging, combining,sharing, ma-
`nipulating, modifying, commenting on, transmitting and displaying data, images,
`videos, multimedia files, and other digital data; desktop and mobilephoto and
`video editing software; computer software and software applications for use in
`uploading, downloading, editing, storing, distributing and sharing photographic
`and video content via global and local computer networks and via mobile
`devices; downloadable multimedia filescontaining digital audio and video files
`featuring user generated images, videos, multimedia files, and other digital data
`Class 038. First use: First Use: 2009/03/11 First Use In Commerce: 2009/03/11
`Video broadcasting; streaming of video material on the internet; broadcasting of
`audio and video content and programming over the internet; electronic deliveryof
`images and photographs via a global computer network and via mobile electron-
`ic devices; electronic transmission and streaming of digital media content for
`others via global and local computer networks and via mobile electronic devices;
`streaming user generated photographic and video content via a website on the
`internet and via mobile electronic devices
`Class 041. First use: First Use: 2006/03/00 First Use In Commerce: 2006/03/00
`Photographic and video services, namely, photographic and video capture;
`providing non-downloadable online audio, audiovisual, multimedia, picture and
`video content, for educational purposes in the field of media, news, politics, edu-
`cation, entertainment, sports, culture, comedy, business, healthy living and life-
`style, wellness, fashion, personal beauty, current events, environmental conser-
`vationand sustainability issues, food, finance, technology, travel, books, fine
`arts,music, art, science, literature, leisure, gaming, religion, performing arts an-
`dphilanthropy; providing educational services, namely, conducting classes in
`thefields of photography, videography, computer hardware and software applica-
`tions; providing training, instruction, instructional tips and advice in the field of-
`photography, videography; providing content retrievable via the internet, namely,
`online non-downloadable photos and video content for educational and enter-
`tainment purposes in the fields of media, news, politics, education, entertain-
`ment,sports, culture, comedy, business, healthy living and lifestyle, wellness,
`fashion, personal beauty, current events, environmental conservation and sus-
`tainability issues, food, finance, technology, travel, books, fine arts, music, art,
`science, literature, leisure, gaming, religion, performing arts and philanthropy;
`providing online audio, audiovisual, multimedia, picture and video content for en-
`tertainment and educational purposes in the fields of media, news, politics, edu-
`cation, entertainment, sports, culture, comedy, business, healthy living and life-
`
`

`

`style, wellness, fashion, personal beauty, current events, environmental conser-
`vation and sustainability issues, food, finance, technology, travel, books, fin-
`earts, music, art, science, literature, leisure, gaming, religion, performing arts
`and philanthropy, via a wireless network, providing electronic entertainment con-
`tent, namely, providing online non-downloadable educational audio, audiovisual,
`multimedia and video content in the fields of media, news, politics, education,
`entertainment, sports, culture, comedy, business, healthy living and lifestyle,
`wellness, fashion, personal beauty, current events, environmental conservation
`and sustainability issues, food, finance, technology, travel, books, fine arts, mu-
`sic, art, science, literature, leisure, gaming, religion, performing arts and philan-
`thropy, and providing a web sitefeaturing non-downloadable photographs and
`videos featuring images, videos, multimedia files, and other digital data for edu-
`cational and entertainment purposesin the fields of media, news, polit-
`ics,education, entertainment, sports, culture, comedy, business, healthy living
`andlifestyle, wellness, fashion, personal beauty, current events, environmental
`conservation and sustainability issues, food, finance, technology, travel, books,
`fine arts, music, art, science, literature, leisure, gaming, religion, performing arts
`and philanthropy; organizing community sporting and cultural events, and organ-
`izing regional, state-wide and national sporting events, namely, cycling, moun-
`tain biking, motorcycle and car racing, skateboard, skiing, ski jumping, snow-
`boarding, skydiving, surfing, diving, swimming, rafting, kayaking, rock climbing,
`and running; entertainment services, namely, providing a website featuring non-
`downloadable photographic, audio, videoand multimedia presentations in the
`fields of technology, travel, entertainmentnews, sports, fitness, recreational
`activities, current events news, special interest features in the fields of
`nature,people in entertainment, art, pop culture, adventure sports, music and
`photography; providing a website featuring non-downloadable audio and video
`content for entertainment and educational purposes in the fields of technology,
`travel, entertainment, sports, fitness, recreationalactivities, news, special interest
`features in the field of science, nature, entertainment, art, pop culture, adven-
`turesports, music and photography; providing an online searchable database in
`the fields of photography and videography foreducational and entertainment pur-
`poses featuring instructional information, images, videos, multimedia files, and
`otherdigital data in the fields of photography and videography for subject matter
`related to technology, travel, entertainment, sports, fitness, recreation, news,
`special interest features in the fields of science, nature, people, art, pop culture,
`adventure sports, music and photography; on-line library services, namely,
`providing electronic library services which feature photographs and videos via
`an on-line computer network; photography and videography services, namely,
`providing photographic and video content for third parties to use in the creation
`of television programs, television commercials, motion pictures and films;
`providingonline journals, namely, blogs, for sharing thoughts, ideas, experi-
`ences, comments, tips, techniques, and advice in thefield of photography and
`videography; providing conferences, seminars, workshops and tutorials in the
`field of photography and videography for entertainment and educational pur-
`poses
`Class 042. First use: First Use: 2011/03/28 First Use In Commerce: 2011/03/28
`Providing a web hosting platform for uploading, downloading, storing, man-
`aging,distributing, editing and sharing photographic, video and multimedia con-
`tent ofthird parties; providing temporary use of online non-downloadable soft-
`ware for use in uploading, downloading, storing, distributing, managing, editing
`and sharing photographic, video and multimedia content via local and global
`computer networks and via mobile devices; Providing temporary use of on-line
`non-downloadable cloud computing software for use in uploading, downloading,
`storing, distributing, managing, editing and sharing photographic, video and mul-
`timedia content via local and global computer networks andvia mobile devices;
`Peer-to-browser photo sharing services, namely, providing awebsite featuring
`technology enabling users to upload, view, and download digital photos and
`videos; Providing a web site featuring temporary use of non-downloadable soft-
`
`

`

`ware allowing web site users to upload on-line videos for sharing with others for
`entertainment purposes; Providing a web site that gives computer users the abil-
`ity to upload, exchange and share photos, videos and video logs; Computer ser-
`vices, namely, providing searchplatforms to allow users to locate, access, copy,
`transmit, edit, and share photographic, video and multimedia content;file sharing
`services, namely, providing a website featuring technology enabling users to
`download electronic files containing user generated photos and videosin the
`field of general interest; hosting on-line web facilities for others fordatabases and
`libraries of third parties in the field of photography and videography
`
`U.S. Application
`No.
`
`86746671
`
`Application Date
`
`09/03/2015
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`HERO
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`Attachments
`
`NONE
`
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`Camera accessories, namely, mounts, smart mounts, straps, rigs, holders, har-
`nesses, brackets; related equipment for holding, mounting, positioning and man-
`euvering cameras, namely, stabilizers and harnesses
`
`78369578#TMSN.png( bytes )
`86978246#TMSN.png( bytes )
`86983166#TMSN.png( bytes )
`86048215#TMSN.png( bytes )
`86746671#TMSN.png( bytes )
`HIGHERO-Meifeng Chen-Notice of Opposition.pdf(178343 bytes )
`Exhibits.pdf(4860254 bytes )
`
`Signature
`
`/CLE1087/
`
`Name
`
`Date
`
`CONNIE ELLERBACH
`
`05/05/2021
`
`

`

` 
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the matter of
`Trademark App. Ser. No. 90/100241
`Filed: August 7, 2020
`Published: January 5, 2021
`Mark: HIGHERO
`
`
`GoPro, Inc.,
`
`
` vs.
`
`Meifeng Chen,
`
`Applicant.
`
`
`
`
`Opposer,
`
`
`)
`)
`) Opposition No. ______________________
`)
`)
`)
`)
`)
`
`
`
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`GoPro, Inc., a Delaware Corporation, having its principal place of business at
`
`3000 Clearview Way, San Mateo, CA 94402, (“Opposer”), believes that it will be damaged by
`
`the registration of the mark shown in Application Serial Number 90/100241, and hereby opposes
`
`that application, alleging as grounds for the opposition that:
`
`1.
`
`As evidenced by the publication of the HIGHERO application in the January 5,
`
`2021 issue of the Official Gazette, Meifeng Chen (“Applicant”) seeks to register HIGHERO for
`
`“cameras; megaphones; scanners; baby monitors; car video recorders; computer hardware and
`
`peripheral devices; computer monitors; electric sensors; electrical plugs and sockets; electronic
`
`timers; laser rangefinders; loudspeakers, headphones, microphones and CD players; portable
`
`digital electronic scales; portable video cameras with built-in videocassette recorders; protective
`
`films adapted for smartphones; protective industrial face masks; smartwatch straps; soundbar
`
`speakers; wireless cellular phone headsets; wireless chargers” in Class 9. (“the Application”).
`
`1
`
`

`

` 
`
`2.
`
`GoPro, Inc. (“GoPro”), a Delaware corporation, is the owner of trademark
`
`registrations for HERO and several HERO-based marks, as well as common law rights in its
`
`various HERO and HERO-based marks (the “HERO Marks”). GoPro’s rights in the HERO
`
`Marks predate the Application’s filing date. Consumers are likely to be confused as to source by
`
`Applicant’s registration and use of such a similar mark for identical and related goods and
`
`services. Furthermore, Applicant’s registration and use of HIGHERO would dilute the
`
`distinctive quality of GoPro’s famous mark. Thus, GoPro, its partners, and the general public
`
`will be damaged by the registration of Applicant’s HIGHERO mark.
`
`3.
`
`GoPro requested and was granted an extension of the deadline to oppose the
`
`Application until May 5, 2021. This Notice of Opposition is timely filed.
`
`As further grounds for opposition GoPro alleges:
`
`4.
`
`Since at least as early as 2004, GoPro has used HERO to provide and market a
`
`family of cameras. GoPro provides and markets these cameras alongside camera accessories and
`
`equipment, as well as related software. GoPro offers these goods throughout the United States
`
`and in many other countries.
`
`5.
`
`GoPro uses and is the owner of the following U.S. trademark registrations for
`
`HERO and HERO-based marks:
`
`Full Goods and Services Descriptions
`9: Photographic equipment, namely, digital camera, camera
`housings and cases, and camera straps
`
`
`Filing Date
`February 18,
`2004
`
`August 26, 2013
`
`Reg. Date
`October 9,
`2007
`
`January 9,
`2018
`
`Trademark
`HERO
`
`Reg. No.
`3,308,141
`
`HERO
`
`5,375,974
`
`HEROCAST
`
`5,341,604
`
`9: Photographic equipment, namely, cameras, digital
`cameras, video cameras; portable handheld electronic devices
`for recording, storage, transmission or reproduction of
`photographic, video and multimedia content
`
`9: portable handheld electronic devices for recording,
`storage, transmission or reproduction of photographic, video
`and multimedia content; cases, housings, and accessories for
`cameras, namely, batteries, wireless adapters, power adapters,
`adapter rings for attaching objects to cameras, mounting
`devices for photographic equipment; cases for photographic
`apparatus
`
`2
`
`March 23, 2015
`
`November
`21, 2017
`
`

`

` 
`
`4,993,752
`
`
`
`August 26, 2013
`
`July 5,
`2016
`
`09: Photographic equipment, namely, cameras, digital
`cameras, video cameras; portable handheld electronic devices
`for recording, storage, transmission or reproduction of
`photographic, video and multimedia content; cases, housings,
`and accessories for cameras, namely, batteries, lenses,
`wireless adapters, power adapters, adapter rings for attaching
`objects to cameras, remote controls, microphones, SD cards,
`photographic flash units, mounting devices for photographic
`equipment, tripods and camera straps; cases and bags for
`photographic apparatus; computer software for use in
`connection with photographic and video equipment and
`cameras, namely, software for taking, capturing, managing,
`processing, operating, viewing, storing, editing, arranging,
`combining, sharing, manipulating, modifying, commenting
`on, transmitting and displaying data, images, videos,
`multimedia files, and other digital data; desktop and mobile
`photo and video editing software; computer software and
`software applications for use in uploading, downloading,
`editing, storing, distributing and sharing photographic and
`video content via global and local computer networks and via
`mobile devices; downloadable multimedia files containing
`digital audio and video files featuring user generated images,
`videos, multimedia files, and other digital data
`
`38: Video broadcasting; streaming of video material on the
`internet; broadcasting of audio and video content and
`programming over the internet; electronic delivery of images
`and photographs via a global computer network and via
`mobile electronic devices; electronic transmission and
`streaming of digital media content for others via global and
`local computer networks and via mobile electronic devices;
`streaming user generated photographic and video content via
`a website on the internet and via mobile electronic devices
`
`41: Photographic and video services, namely, photographic
`and video capture; providing non-downloadable online audio,
`audiovisual, multimedia, picture and video content, for
`educational purposes in the field of media, news, politics,
`education, entertainment, sports, culture, comedy, business,
`healthy living and lifestyle, wellness, fashion, personal
`beauty, current events, environmental conservation and
`sustainability issues, food, finance, technology, travel, books,
`fine arts, music, art, science, literature, leisure, gaming,
`religion, performing arts and philanthropy; providing
`educational services, namely, conducting classes in the fields
`of photography, videography, computer hardware and
`software applications; providing training, instruction,
`instructional tips and advice in the field of photography,
`videography; providing content retrievable via the internet,
`namely, online non-downloadable photos and video content
`for educational and entertainment purposes in the fields of
`media, news, politics, education, entertainment, sports,
`culture, comedy, business, healthy living and lifestyle,
`wellness, fashion, personal beauty, current events,
`
`3
`
`

`

` 
`
`environmental conservation and sustainability issues, food,
`finance, technology, travel, books, fine arts, music, art,
`science, literature, leisure, gaming, religion, performing arts
`and philanthropy; providing online audio, audiovisual,
`multimedia, picture and video content for entertainment and
`educational purposes in the fields of media, news, politics,
`education, entertainment, sports, culture, comedy, business,
`healthy living and lifestyle, wellness, fashion, personal
`beauty, current events, environmental conservation and
`sustainability issues, food, finance, technology, travel, books,
`fine arts, music, art, science, literature, leisure, gaming,
`religion, performing arts and philanthropy, via a wireless
`network, providing electronic entertainment content, namely,
`providing online non-downloadable educational audio,
`audiovisual, multimedia and video content in the fields of
`media, news, politics, education, entertainment, sports,
`culture, comedy, business, healthy living and lifestyle,
`wellness, fashion, personal beauty, current events,
`environmental conservation and sustainability issues, food,
`finance, technology, travel, books, fine arts, music, art,
`science, literature, leisure, gaming, religion, performing arts
`and philanthropy, and providing a web site featuring non-
`downloadable photographs and videos featuring images,
`videos, multimedia files, and other digital data for
`educational and entertainment purposes in the fields of
`media, news, politics, education, entertainment, sports,
`culture, comedy, business, healthy living and lifestyle,
`wellness, fashion, personal beauty, current events,
`environmental conservation and sustainability issues, food,
`finance, technology, travel, books, fine arts, music, art,
`science, literature, leisure, gaming, religion, performing arts
`and philanthropy; organizing community sporting and
`cultural events, and organizing regional, state-wide and
`national sporting events, namely, cycling, mountain biking,
`motorcycle and car racing, skateboard, skiing, ski jumping,
`snowboarding, skydiving, surfing, diving, swimming, rafting,
`kayaking, rock climbing, and running; entertainment services,
`namely, providing a website featuring non-downloadable
`photographic, audio, video and multimedia presentations in
`the fields of technology, travel, entertainment news, sports,
`fitness, recreational activities, current events news, special
`interest features in the fields of nature, people in
`entertainment, art, pop culture, adventure sports, music and
`photography; providing a website featuring non-
`downloadable audio and video content for entertainment and
`educational purposes in the fields of technology, travel,
`entertainment, sports, fitness, recreational activities, news,
`special interest features in the field of science, nature,
`entertainment, art, pop culture, adventure sports, music and
`photography; providing an online searchable database in the
`fields of photography and videography for educational and
`entertainment purposes featuring instructional information,
`images, videos, multimedia files, and other digital data in the
`fields of photography and videography for subject matter
`
`4
`
`

`

` 
`
`
`
`related to technology, travel, entertainment, sports, fitness,
`recreation, news, special interest features in the fields of
`science, nature, people, art, pop culture, adventure sports,
`music and photography; on-line library services, namely,
`providing electronic library services which feature
`photographs and videos via an on-line computer network;
`photography and videography services, namely, providing
`photographic and video content for third parties to use in the
`creation of television programs, television commercials,
`motion pictures and films; providing online journals, namely,
`blogs, for sharing thoughts, ideas, experiences, comments,
`tips, techniques, and advice in the field of photography and
`videography; providing conferences, seminars, workshops
`and tutorials in the field of photography and videography for
`entertainment and educational purposes
`
`42: Providing a web hosting platform for uploading,
`downloading, storing, managing, distributing, editing and
`sharing photographic, video and multimedia content of third
`parties; providing temporary use of online non-downloadable
`software for use in uploading, downloading, storing,
`distributing, managing, editing and sharing photographic,
`video and multimedia content via local and global computer
`networks and via mobile devices; Providing temporary use of
`on-line non-downloadable cloud computing software for use
`in uploading, downloading, storing, distributing, managing,
`editing and sharing photographic, video and multimedia
`content via local and global computer networks and via
`mobile devices; Peer-to-browser photo sharing services,
`namely, providing a website featuring technology enabling
`users to upload, view, and download digital photos and
`videos; Providing a web site featuring temporary use of non-
`downloadable software allowing web site users to upload on-
`line videos for sharing with others for entertainment
`purposes; Providing a web site that gives computer users the
`ability to upload, exchange and share photos, videos and
`video logs; Computer services, namely, providing search
`platforms to allow users to locate, access, copy, transmit,
`edit, and share photographic, video and multimedia content;
`file sharing services, namely, providing a website featuring
`technology enabling users to download electronic files
`containing user generated photos and videos in the field of
`general interest; hosting on-line web facilities for others for
`databases and libraries of third parties in the field of
`photography and videography
`
`6.
`
`GoPro’s registrations for HERO, HEROCAST, and
`
` are valid
`
`and are evidence of GoPro’s exclusive rights to use the marks in commerce in connection with
`
`5
`
`

`

` 
`
`the goods and services specified therein. GoPro hereby gives notice that it will rely on said
`
`registrations in this proceeding. Attached to this Notice of Opposition as Exhibit A, are current
`
`printouts of information from the electronic database record of the U.S. Patent and Trademark
`
`Office showing the current status and title of the aforementioned trademark registrations
`
`7.
`
`GoPro’s Registration No. 3,308,141 for HERO is incontestable. As such, it
`
`constitutes conclusive evidence of the validity of the registered mark, GoPro’s ownership of the
`
`registered mark, and GoPro’s exclusive right to use the registered mark in commerce as provided
`
`in Section 33 of the Lanham Act, 15 U.S.C. § 1115.
`
`8.
`
`There is no issue as to priority. The filing dates, first use dates, and registration
`
`dates of GoPro’s registrations for HERO, HEROCAST, and
`
` are before the
`
`filing date listed in the Application.
`
`9.
`
`GoPro also owns the following U.S. trademark applications for HERO-based
`
`marks:
`
`Trademark
`HERO
`
`Serial No.
`86/746671
`
`BE A HERO
`
`87/642291
`
`Full Goods and Services Descriptions
`9: Camera accessories, namely, mounts, smart mounts,
`straps, rigs, holders, harnesses, brackets; related equipment
`for holding, mounting, positioning and maneuvering
`cameras, namely, stabilizers and harnesses
`
`Filing Date
`September 3, 2015
`
`Status
`Pending
`(Allowed)
`
`October 11, 2017
`
`Pending
`(Allowed)
`
`
`
`9: Photographic equipment, namely, cameras, digital
`cameras, video cameras; portable handheld electronic
`devices for recording, storage, transmission or
`reproduction of photographic, video and multimedia
`content; cases, housings, and accessories for cameras,
`namely, batteries, lenses, digital photo viewers, wireless
`adapters, power adapters, adapter rings for attaching
`objects to cameras, remote controls, microphones, SD
`cards, photographic flash units, mounting devices for
`photographic equipment, tripods and camera straps; cases
`and bags for photographic apparatus; computer software
`for use in connection with photographic and video
`equipment and cameras, namely, software for taking,
`capturing, managing, processing, operating, viewing,
`
`6
`
`

`

` 
`
`storing, editing, arranging, combining, sharing,
`manipulating, modifying, commenting on, transmitting and
`displaying data, images, videos, multimedia files, and
`other digital data; desktop and mobile photo and video
`editing software; computer software and software
`applications for use in uploading, downloading, editing,
`storing, distributing and sharing photographic and video
`content via global and local computer networks and via
`mobile devices; downloadable multimedia files containing
`digital audio and video files featuring user generated
`images, videos, multimedia files, and other digital data
`
`38: Video broadcasting; streaming of video material on the
`internet; broadcasting of audio and video content and
`programming over the internet; electronic delivery of
`images and photographs via a global computer network
`and via mobile electronic devices; electronic transmission
`and streaming of digital media content for others via global
`and local computer networks and via mobile electronic
`devices; streaming user generated photographic and video
`content via a website on the internet and via mobile
`electronic devices
`
`41: Photographic and video services, namely, photographic
`and video capture; rental of photographic equipment,
`namely, cameras, digital cameras, video cameras, camera
`cases, housings, and accessories for cameras, namely,
`batteries, lenses, digital photo viewers, wireless adapters,
`power adapters, adapter rings for attaching objects to
`cameras, remote controls, microphones, SD cards,
`photographic flash units, mounting devices for
`photographic equipment, tripods and camera straps;
`providing non-downloadable online audio, audiovisual,
`multimedia, picture and video content, for educational
`purposes in the field of media, news, politics, education,
`entertainment, sports, culture, comedy, business, healthy
`living and lifestyle, wellness, fashion, personal beauty,
`current events, environmental conservation and
`sustainability issues, food, finance, technology, travel,
`books, fine arts, music, art, science, literature, leisure,
`gaming, religion, performing arts and philanthropy;
`providing educational services, namely, conducting classes
`in the fields of photography, videography, computer
`hardware and software applications; providing training,
`instruction, instructional tips and advice in the field of
`photography, videography; providing content retrievable
`via the internet, namely, online non-downloadable photos
`and video content for educational and entertainment
`purposes in the fields of media, news, politics, education,
`entertainment, sports, culture, comedy, business, healthy
`living and lifestyle, wellness, fashion, personal beauty,
`current events, environmental conservation and
`sustainability issues, food, finance, technology, travel,
`books, fine arts, music, art, science, literature, leisure,
`
`7
`
`

`

` 
`
`gaming, religion, performing arts and philanthropy;
`providing online audio, audiovisual, multimedia, picture
`and video content for entertainment and educational
`purposes in the fields of media, news, politics, education,
`entertainment, sports, culture, comedy, business, healthy
`living and lifestyle, wellness, fashion, personal beauty,
`current events, environmental conservation and
`sustainability issues, food, finance, technology, travel,
`books, fine arts, music, art, science, literature, leisure,
`gaming, religion, performing arts and philanthropy, via a
`wireless network; providing electronic entertainment
`content, namely, providing online non-downloadable
`educational audio, audiovisual, multimedia and video
`content in the fields of media, news, politics, education,
`entertainment, sports, culture, comedy, business, healthy
`living and lifestyle, wellness, fashion, personal beauty,
`current events, environmental conservation and
`susta