Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1146362
`07/13/2021
`
`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
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`Spotify AB
`
`07/14/2021
`
`REGERINGSGATAN 19
`STOCKHOLM, 111 53
`SWEDEN
`
`CHRISTINE K. AU-YEUNG
`WILSON SONSINI GOODRICH & ROSATI
`650 PAGE MILL ROAD
`PALO ALTO, CA 94304-1050
`UNITED STATES
`Primary Email: trademarks@wsgr.com
`650-493-9300
`
`Docket Number
`
`41204.570
`
`Applicant Information
`
`Application No.
`
`90196971
`
`Publication date
`
`03/16/2021
`
`Opposition Filing
`Date
`
`Applicant
`
`07/13/2021
`
`Opposition Peri-
`od Ends
`
`07/14/2021
`
`Opstify
`3658 WAYNESFIELD DR
`NEWTOWN SQUARE, PA 19073
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 035. First Use: 2020/09/21 First Use In Commerce: 2020/09/21
`All goods and services in the class are opposed, namely: Business management consulting
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`3561218
`
`Registration Date
`
`01/13/2009
`
`Application Date
`
`01/04/2007
`
`Foreign Priority
`Date
`
`08/08/2006
`
`

`

`Word Mark
`
`Design Mark
`
`SPOTIFY
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`Computer software for use in the delivery, distribution and transmission of digital
`music and entertainment-related audio, [ video, ] text and multimedia content;
`computer software for enabling transmission, storage, sharing, collection, edit-
`ing, organizing and modifying audio, [ video, ] messages, images and other data
`for use in social networking, online chats*, * [ and interactive gaming, for use in ]
`creating social networking databases and for use in social networking database
`management; computer software for creating searchable databases of informa-
`tion and data for peer-to-peer social networking databases [ ; pre-recorded CDs
`featuring music ]
`Class 035. First use: First Use: 0 First Use In Commerce: 0
`Providing advertising space on the Internet
`Class 038. First use: First Use: 0 First Use In Commerce: 0
`Sound and television broadcasting of music and films via the Internet, telephony,
`or satellite broadcasting; providing on-line chat rooms and discussion forumsfor
`transmission of messages and digital pictures among users in the field of gener-
`al interest; telecommunications on the Internet, namely, audio and video trans-
`mission
`Class 041. First use: First Use: 0 First Use In Commerce: 0
`Entertainment, namely, providing music,film [ and gaming ] to users online viaa
`communication network; providing an online database via a communication net-
`work featuring music, films, [ online gaming ] and entertainment data [ ; music
`production; providing online computer games; rental of films, video and com-
`puter games and music via a communication network ]
`
`U.S. Registration
`No.
`
`5794869
`
`Registration Date
`
`07/02/2019
`
`Word Mark
`
`Design Mark
`
`SPOTIFY
`
`Application Date
`
`07/19/2016
`
`Foreign Priority
`Date
`
`07/01/2016
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 2012/03/05 First Use In Commerce: 2012/03/05
`Clothing, namely, shirts, sweatshirts, jackets; footwear; headgear, namely, hats
`
`

`

`U.S. Registration
`No.
`
`6038543
`
`Registration Date
`
`04/21/2020
`
`Word Mark
`
`Design Mark
`
`SPOTIFY TECHBYTES
`
`Application Date
`
`04/04/2019
`
`Foreign Priority
`Date
`
`04/01/2019
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2019/07/30 First Use In Commerce: 2019/07/30
`entertainment services, namely, providing podcasts in the fields of music and
`technology; conducting educational seminars, conferences, workshops, lectures,
`webcasts, videos, and radio programs in the fields of music and technology
`
`Attachments
`
`79037568#TMSN.png( bytes )
`87108365#TMSN.png( bytes )
`88371301#TMSN.png( bytes )
`Notice of Opposition OPSTIFY.pdf(162700 bytes )
`
`Signature
`
`/Christine K. Au-Yeung/
`
`Name
`
`Date
`
`Christine K. Au-Yeung
`
`07/13/2021
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.:
`
`NOTICE OF OPPOSITION
`
`) )
`
`
`)
`)
`)
`)
`)
`)
`)
`
`SPOTIFY AB,
`
`Opposer,
`
`v.
`
`OPSTIFY CORPORATION,
`
`Applicant.
`
`OPSTIFY
`Re: Mark:
`Serial No.: 90/196,971
`Filed:
`September 21, 2020
`Published: March 16, 2021
`
`Opposer Spotify AB (“Opposer”), a corporation located at Regeringsgatan 19, SE-111
`
`53, Stockholm, Sweden, believes that it will be damaged by the registration of the mark shown in
`
`application Serial No. 90/196,971 (the “Application”), and hereby opposes the Application.
`
`As grounds for the opposition, Opposer alleges that:
`
`1.
`
`2.
`
`Opposer timely files this Notice of Opposition.
`
`Opposer was founded in 2006 to develop and offer software and services for
`
`streaming music and other multimedia content.
`
`3.
`
`In 2008, Opposer launched its website at <spotify.com>, through which Opposer
`
`has promoted and offered software for streaming and managing music, podcasts, and videos.
`
`Users can access music, podcasts and other content at the website or by downloading Opposer’s
`
`software to a computer, tablet, or mobile device such as a phone.
`
`4.
`
`Opposer’s first use of the SPOTIFY mark to promote its software and services
`
`was at least as early as 2008.
`
`5.
`
`Opposer has offered its software and services under the SPOTIFY mark
`
`throughout the United States and has developed valuable goodwill with respect to the mark.
`
`1
`
`

`

`6.
`
`Demand for Opposer’s software and services has grown at a rapid pace, and as a
`
`result the software and services now have approximately over 350 million active users.
`
`7.
`
`Opposer’s music library includes more than 70 million songs that are available to
`
`users in approximately over 170 countries around the world.
`
`8.
`
`Opposer’s SPOTIFY mark has been covered extensively by prominent
`
`publications such as The New York Times, The Washington Post, The Chicago Tribune, The Los
`
`Angeles Times, USA Today, Rolling Stone, Fortune, People, US Weekly, and TIME. Opposer’s
`
`mark has also received significant coverage in online media as well as on television and radio.
`
`9.
`
`One measure of Opposer’s extraordinary success is the popularity of its mobile
`
`software application (“app”) relative to the millions of other apps that are available via online
`
`marketplaces such as iTunes and Google Play. In July 2021, Opposer’s app was ranked as the
`
`top app in the music category of iTunes’ Top Charts as well as as one of Google Play’s top free
`
`apps.
`
`10.
`
`As a result of Opposer’s success, the SPOTIFY mark is widely recognized and
`
`considered distinctive and famous by the general consuming public.
`
`11.
`
`Opposer’s SPOTIFY mark is protected by federal trademark registrations:
`
`Mark
`
`Status
`
`Registration No.
`
`Int.’l Class
`
`Filing Date
`
`SPOTIFY
`
`Registered
`
`3561218
`
`9, 35, 38, 41
`
`01/04/2007
`
`SPOTIFY
`
`Registered
`
`5794869
`
`SPOTIFY
`TECHBYTES
`
`Registered
`
`6038543
`
`25
`
`41
`
`07/19/2016
`
`04/04/2019
`
`12.
`
`Opposer’s registrations for the SPOTIFY mark include the following goods and
`
`services:
`
`International Class 9: Computer software for use in the delivery, distribution and
`transmission of digital music and entertainment-related audio, text and multimedia
`
`2
`
`

`

`content; computer software for enabling transmission, storage, sharing, collection,
`editing, organizing and modifying audio, messages, images and other data for use in
`social networking, online chats, creating social networking databases and for use in
`social networking database management; computer software for creating searchable
`databases of information and data for peer-to-peer social networking databases
`
`International Class 38: Sound and television broadcasting of music and films via the
`Internet, telephony, or satellite broadcasting; providing on-line chat rooms and
`discussion forums for transmission of messages and digital pictures among users in the
`field of general interest; telecommunications on the Internet, namely, audio and video
`transmission
`
`International Class 41: Entertainment, namely, providing music, film to users online via
`a communication network; providing an online database via a communication network
`featuring music, films, and entertainment data
`
`13.
`
`Each of the registrations for the SPOTIFY mark is in all respects valid and
`
`subsisting and is presumptive evidence of distinctiveness as well as of Opposer’s ownership and
`
`exclusive nationwide right to use the registered marks in commerce with the goods and services
`
`recited therein.
`
`14.
`
`By virtue of the expenditure of considerable sums for promotional and advertising
`
`activities and the excellence of its software and services, Opposer has gained for its SPOTIFY
`
`mark considerable fame and has created in the minds of the public a strong association between
`
`the mark and Opposer’s software and services.
`
`15.
`
`On information and belief, Opstify Corporation (“Applicant”) is a Pennsylvania
`
`corporation with an address at 3658 Waynesfield Drive, Newton Square, Pennsylvania 19073.
`
`16.
`
`On information and belief, Applicant was on actual notice of Opposer’s SPOTIFY
`
`mark prior to the time when Applicant adopted its OPSTIFY mark and prior to the time when it
`
`filed the Application.
`
`17.
`
`Applicant had constructive notice of Opposer’s SPOTIFY mark prior to the time
`
`when Applicant adopted its OPSTIFY mark and prior to the time when it filed the Application.
`
`3
`
`

`

`18.
`
`On September 21, 2020, Applicant filed the Application based on actual use,
`
`claiming first use in commerce on September 21, 2020.
`
`19.
`
`According to the public records of the United States Patent and Trademark Office,
`
`the Application includes the following information:
`
`Word Mark:
`Serial Number:
`Applicant/Owner:
`Listed Address:
`
`Filing Date:
`Correspondent:
`
`Correspondent E-mail:
`
`OPSTIFY
`90/196,971
`Opstify Corporation
`3658 Waynesfield Drive
`Newton Square, Pennsylvania 19073
`September 21, 2020
`Opstify
`3658 Waynesfield Drive
`Newton Square, Pennsylvania 19073
`kalikasawant@gmail.com
`
`20.
`
`The Application was published in the Official Gazette on March 16, 2021, with
`
`the following recitation of services:
`
`International Class 35: Business management consulting.
`
`21.
`
`The OPSTIFY mark which Applicant uses and seeks to register so resembles
`
`Opposer’s SPOTIFY mark that the use or registration of the OPSTIFY mark is likely to impair
`
`the distinctiveness of Opposer’s mark.
`
`22.
`
`The OPSTIFY mark which Applicant uses and seeks to register so resembles
`
`Opposer’s SPOTIFY mark as to be likely to cause consumer confusion or mistake as to the
`
`source or origin of Applicant’s goods and services.
`
`23.
`
`As a result of the use or registration of Applicant’s OPSTIFY mark, the public is
`
`likely to be confused or to assume erroneously that Applicant is in some way connected with,
`
`sponsored by, or affiliated with Opposer.
`
`4
`
`

`

`24.
`
`In fact, Applicant is not affiliated or connected with Opposer and has not
`
`otherwise been endorsed or sponsored by Opposer, nor has Opposer approved any of the services
`
`offered or sold or intended to be sold by Applicant under its OPSTIFY mark.
`
`WHEREFORE, Opposer prays that Application Serial No. 90/196,971 be rejected, that
`
`no registration be issued to Applicant, and that this opposition be sustained in favor of Opposer.
`
`Please address all U.S.P.T.O. communications regarding this Notice of Opposition to:
`
`John L. Slafsky
`Christine K. Au-Yeung
`Wilson Sonsini Goodrich & Rosati
`650 Page Mill Road
`Palo Alto, California 94304-1050
`Tel: (650) 493-9300
`trademarks@wsgr.com
`
`Date: July 13, 2021
`
`Respectfully Submitted,
`
`WILSON SONSINI GOODRICH & ROSATI
`Professional Corporation
`
`By: _______________________________
`John L. Slafsky
`Christine K. Au-Yeung
`
`Attorneys for Opposer
`Spotify AB
`
`5
`
`