throbber
Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1159781
`09/15/2021
`
`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
`
`Microsoft Corporation
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Correspondence
`information
`
`09/15/2021
`
`ONE MICROSOFT WAY
`REDMOND, WA 98052
`UNITED STATES
`
`APRIL L. BESL
`DINSMORE & SHOHL LLP
`255 E. FIFTH ST, SUITE 1900
`CINCINNATI, OH 45202
`UNITED STATES
`Primary Email: april.besl@dinsmore.com
`Secondary Email(s): govinda.davis@dinsmore.com,
`jaci.overmann@dinsmore.com, jessica.goedel@dinsmore.com, er-
`ick.rivera@dinsmore.com, DSMSTrademarks@dinsmore.com
`5139778200
`
`Applicant Information
`
`Application No.
`
`90023914
`
`Publication date
`
`05/18/2021
`
`Opposition Filing
`Date
`
`International Re-
`gistration No.
`
`Applicant
`
`09/15/2021
`
`NONE
`
`Opposition Peri-
`od Ends
`
`International Re-
`gistration Date
`
`09/15/2021
`
`NONE
`
`LONG TECH NETWORK LIMITED
`FLAT/RM 603 06/F, LAWS COMMERCIAL
`PLAZA 788, CHEUNG SHA WAN ROAD
`CHEUNG SHA WAN, KL, 999077
`HONG KONG
`
`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: Computer game programmes download-
`able via the Internet; Computer game software downloadable from a global computer network; Down-
`loadable computer game programs; Downloadable computer game software; Downloadable com-
`puter game software via aglobal computer network and wireless devices; Downloadable electronic
`game software for handheld electronic devices; Downloadable electronic game software for use on
`mobile and cellular phones; Downloadable electronic game software for useon handheld computers;
`Downloadable interactive multimedia computer game programs; Recorded computer game programs;
`Recorded computer game software; Downloadable computer game software for use on mobile and
`
`

`

`cellular phones
`
`Applicant Information
`
`Application No.
`
`90023918
`
`Publication date
`
`06/01/2021
`
`Opposition Filing
`Date
`
`International Re-
`gistration No.
`
`Applicant
`
`09/15/2021
`
`NONE
`
`Opposition Peri-
`od Ends
`
`International Re-
`gistration Date
`
`NONE
`
`LONG TECH NETWORK LIMITED
`FLAT/RM 603 06/F, LAWS COMMERCIAL
`PLAZA 788, CHEUNG SHA WAN ROAD
`CHEUNG SHA WAN, KL, 999077
`HONG KONG
`
`Goods/Services Affected by Opposition
`
`Class 042. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Computer programming; Computer soft-
`wareconsultancy; Computer software design; Design, maintenance, development and updating of
`computer software; Designing and developing computer game software and video game software for
`use with computers, video game program systems and computer networks; Electronic data storage;
`Maintenance of computer software; Updating of computer software
`
`Applicant Information
`
`Application No.
`
`90023967
`
`Publication date
`
`05/18/2021
`
`Opposition Filing
`Date
`
`International Re-
`gistration No.
`
`Applicant
`
`09/15/2021
`
`NONE
`
`Opposition Peri-
`od Ends
`
`International Re-
`gistration Date
`
`NONE
`
`LONG TECH NETWORK LIMITED
`FLAT/RM 603 06/F, LAWS COMMERCIAL
`788, CHEUNG SHA WAN ROAD
`CHEUNG SHA WAN, KL, 999077
`HONG KONG
`
`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: Computer game programmes download-
`able via the Internet; Computer game software downloadable from a global computer network; Down-
`loadable computer game programs; Downloadable computer game software; Downloadable com-
`puter game software via aglobal computer network and wireless devices; Downloadable electronic
`game software for handheld electronic devices; Downloadable electronic game software for use on
`mobile and cellular phones; Downloadable electronic game software for useon handheld computers;
`Downloadable interactive multimedia computer game programs; Recorded computer game programs;
`Recorded computer game software; Downloadable computer game software for use on mobile and
`cellular phones
`
`Applicant Information
`
`Application No.
`
`90023969
`
`Publication date
`
`05/18/2021
`
`Opposition Filing
`Date
`
`International Re-
`gistration No.
`
`09/15/2021
`
`NONE
`
`Opposition Peri-
`od Ends
`
`International Re-
`gistration Date
`
`NONE
`
`

`

`Applicant
`
`LONG TECH NETWORK LIMITED
`FLAT/RM 603 06/F, LAWS COMMERCIAL
`788, CHEUNG SHA WAN ROAD
`CHEUNG SHA WAN, KL, 999077
`HONG KONG
`
`Goods/Services Affected by Opposition
`
`Class 042. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Computer programming; Computer soft-
`wareconsultancy; Computer software design; Design, maintenance, development and updating of
`computer software; Designing and developing computer game software and video game software for
`use with computers, video game program systems and computer networks; Electronic data storage;
`Maintenance of computer software; Updating of computer software
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`Dilution by tarnishment
`
`False suggestion of a connection with persons,
`living or dead, institutions, beliefs, or national
`symbols, or brings them into contempt, or disrep-
`ute
`
`Deceptiveness
`
`Other
`
`Trademark Act Sections 2 and 43(c)
`
`Trademark Act Sections 2 and 43(c)
`
`Trademark Act Section 2(a)
`
`Trademark Act Section 2(a)
`
`Misrepresentation of Source under Section 14(3)
`of the Trademark Act
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`2137862
`
`Registration Date
`
`02/17/1998
`
`Application Date
`
`05/22/1996
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`AGE OF EMPIRES
`
`NONE
`
`Class 028. First use: First Use: 1997/10/12 First Use In Commerce: 1997/10/12
`computer programs, namely, game software
`
`U.S. Registration
`No.
`
`3006358
`
`Registration Date
`
`10/11/2005
`
`Application Date
`
`10/08/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`AGE OF EMPIRES
`
`NONE
`
`Class 009. First use: First Use: 1997/10/12 First Use In Commerce: 1997/10/12
`computer programs, namely, game software for use on computers [ ; and video
`game players; prerecorded CDs and DVDs featuring sound and video in the
`fields of music, live action programs ]
`
`

`

`U.S. Registration
`No.
`
`3325564
`
`Registration Date
`
`10/30/2007
`
`Application Date
`
`07/18/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`AGE OF EMPIRES
`
`NONE
`
`Class 028. First use: First Use: 2007/04/15 First Use In Commerce: 2007/04/15
`toys and games, namely, board games
`
`Attachments
`
`Notice of Opposition.pdf(2615639 bytes )
`
`Signature
`
`/April L. Besl/
`
`Name
`
`Date
`
`APRIL L. BESL
`
`09/15/2021
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`In the Matter of Application Serial No.: 90023914
`Mark: RISE OF EMPIRE
`Published for Opposition on May 18, 2021
`
`In the Matter of Application Serial No.: 90023918
`Mark: RISE OF EMPIRE
`Published for Opposition on June 1, 2021
`
`In the Matter of Application Serial No.: 90023967
`
`
`Mark:
`Published for Opposition on May 18, 2021
`
`In the Matter of Application Serial No.: 90023969
`
`
`Mark:
`Published for Opposition on May 18, 2021
`
`
`MICROSOFT CORPORATION
`
`
`
`
`
`
`
`Opposer,
`
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`v.
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`
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`
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`LONG TECH NETWORK LIMITED
`
`
`
`
`
`
`Applicant.
`
`
`
`
`
`
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`
`
`
`
`
`│
`│
`│
`│ Opposition No.
`│
`│
`│
`│
`│
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`
`
`NOTICE OF OPPOSITION
`
`Microsoft Corporation (“Opposer” or “Microsoft”) believes that it will be damaged by
`
`registration of the marks RISE OF EMPIRE and RISE OF EMPIRES (Stylized) (collectively the
`
`“RISE OF EMPIRES Marks” or “Opposed Marks”) shown in Application Serial Nos. 90023914,
`
`
`
`
`
`1
`
`

`

`90023918, 90023967, and 90023969 (collectively the “Applications”) and hereby opposes same,
`
`and opposes registration for the goods and serves set forth therein, namely:
`
`
` Class 9: Computer game programmes downloadable via the Internet; Computer game
`software downloadable from a global computer network; Downloadable computer game
`programs; Downloadable computer game software; Downloadable computer game
`software via a global computer network and wireless devices; Downloadable electronic
`game software for handheld electronic devices; Downloadable electronic game software
`for use on mobile and cellular phones; Downloadable electronic game software for use on
`handheld computers; Downloadable interactive multimedia computer game programs;
`Recorded computer game programs; Recorded computer game software; Downloadable
`computer game software for use on mobile and cellular phones
`
` Class 42: Computer programming; Computer software consultancy; Computer software
`design; Design, maintenance, development and updating of computer software; Designing
`and developing computer game software and video game software for use with computers,
`video game program systems and computer networks; Electronic data storage;
`Maintenance of computer software; Updating of computer software
`
`
`
`Applicant’s RISE OF EMPIRES Marks were each filed on June 27, 2020 under Sections
`
`1(b) and 44(d) of the Trademark Act. Application Serial Nos. 90023914, 90023967, and
`
`90023969 were published in the Official Gazette on May 18, 2021 and Application Serial No.
`
`90023918 was published in the Official Gazette on June 1, 2021. Microsoft obtained valid
`
`extensions of time to file oppositions against each application, up to and including September 15,
`
`2021 and September 29, 2021 (for Serial No. 90023918). Thus, this consolidated Notice of
`
`Opposition is timely filed.
`
`As grounds for the opposition, it is alleged that:
`
`The Parties
`
`
`
`
`
`1.
`
`Microsoft is a corporation organized under the laws of Washington with its
`
`principle place of business at One Microsoft Way, Redmond, Washington 98052. Microsoft is a
`
`global technology company that develops, manufactures, licenses, supports, and sells computer
`
`
`
`
`
`2
`
`

`

`hardware and software solutions, among many other computer and software-related products and
`
`services.
`
`2.
`
`Upon information and belief, Applicant is a limited company organized under the
`
`laws of Hong Kong, with a place of business at Flat/Rm 603 06/F, Laws Commerical, Plaza 788,
`
`Cheung Sha Wan Road, Cheung Shaw Wan, KL Hong Kong 999077.
`
`Microsoft’s History and Strong Rights
`
`3.
`
`Among its unparalleled brands, since at least as early as 1997, Microsoft has
`
`continuously used the mark AGE OF EMPIRES in connection with a medieval real-time strategy
`
`video game and board games, among other goods and services.
`
`4.
`
`Microsoft has established rights, title, and interest in and to a family of trademarks
`
`consisting of multiple registrations for AGE OF EMPIRES for computer programs, game software,
`
`and related toys and games in multiple Classes. In particular:
`
`a. Microsoft is the owner of United States Trademark Registration No. 2137862,
`
`registered on February 17, 1998 for the mark AGE OF EMPIRES for use in
`
`connection with “computer programs, namely, game software” in International
`
`Class 28, which claims a first use date of October 12, 1997. This registration is
`
`valid, subsisting, unrevoked, uncancelled, and is prima facie evidence of
`
`Microsoft’s exclusive right to use said mark in commerce on the identified services.
`
`Further, this registration has become incontestable under 15 U.S.C. § 1605.
`
`b. Microsoft is the owner of United States Trademark Registration No. 3006358,
`
`registered on October 11, 2005 for the mark AGE OF EMPIRES for use in
`
`connection with “computer programs, namely, game software for use on
`
`computers” in International Class 9, which claims a first use date of October 12,
`
`
`
`
`
`3
`
`

`

`1997. This registration is valid, subsisting, unrevoked, uncancelled, and is prima
`
`facie evidence of Microsoft’s exclusive right to use said mark in commerce on the
`
`identified services. Further, this registration has become incontestable under 15
`
`U.S.C. § 1605.
`
`c. Microsoft is the owner of United States Trademark Registration No. 3325564,
`
`registered on October 30, 2007 for the mark AGE OF EMPIRES for use in
`
`connection with “toys and games, namely, board games” in International Class 28,
`
`which claims a first use date of April 15, 2007. This registration is valid, subsisting,
`
`unrevoked, uncancelled, and is prima facie evidence of Microsoft’s exclusive right
`
`to use said mark in commerce on the identified services. Further, this registration
`
`has become incontestable under 15 U.S.C. § 1605.
`
`5.
`
`True and correct copies of the Certificates of Registration and TSDR pages for the
`
`above-identified marks are attached hereto as Exhibit A and accordingly are made of record in
`
`connection with all of the goods and services contained therein. Collectively the registrations and
`
`all common law rights thereto as hereinafter referred to as the “AGE OF EMPIRES Marks”).
`
`6.
`
`Microsoft has expended a substantial amount of time and money in advertising,
`
`marketing, and promoting the AGE OF EMPIRES Marks, including but not limited to at the
`
`website https://www.ageofempires.com/.
`
`7.
`
`As a result of these efforts, Microsoft is estimated to have sold over 25 million
`
`copies of the AGE OF EMPIRES game with a total revenue surpassing $1 billion. In addition to
`
`the significant number of sales, Microsoft’s AGE OF EMPIRES game has amassed a following of
`
`over 840,000 followers on Facebook, over 76,000 followers on Twitter and over 46,000 followers
`
`
`
`
`
`4
`
`

`

`on Steam. See Exhibit B. After being on the market for over two decades, it is estimated that over
`
`1 million players still play Microsoft’s Age Of Empires II game alone each month.
`
`8.
`
`As a result of Microsoft’s longstanding and widespread use, continuous sales, and
`
`extensive advertising and promotion of goods and services under the AGE OF EMPIRES Marks,
`
`consumers have come to recognize and associate the AGE OF EMPIRES Marks with Microsoft,
`
`Microsoft has acquired substantial goodwill in the AGE OF EMPIRES Marks, and owns extensive
`
`common law rights in the AGE OF EMPIRES Marks.
`
`9.
`
`As a result of Microsoft’s substantial consumer recognition of AGE OF EMPIRES-
`
`branded products and services, the AGE OF EMPIRES Marks have become famous and well-
`
`known marks within the meaning of Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c).
`
`10.
`
`The AGE OF EMPIRES Marks and the goodwill associated thereto, are invaluable
`
`assets of substantial and inestimable worth to Microsoft.
`
`Applicant’s Applications to Register the Opposed Marks
`
`11.
`
`Notwithstanding Microsoft’s prior established rights, Applicant filed Application
`
`Serial Nos. 90023914 and 90023918 for the mark RISE OF EMPIRE and Application Serial Nos.
`
`90023967 and 90023969 for the mark RISE OF EMPIRES on June 27, 2020 on an intent-to-use
`
`basis under Section 1(b) and Section 44(d) of the Trademark Act in connection with the goods and
`
`services identified above in International Classes 9 and 42.
`
`12.
`
`There is no issue as to priority. Microsoft’s longstanding use, registration, and
`
`priority date of its AGE OF EMPIRES Marks, as described above, are all well prior to Applicant’s
`
`filing date.
`
`13.
`
`As explained above, Microsoft’s AGE OF EMPIRES Marks have been widely
`
`used, advertised, and disseminated in the United States and throughout the world, and as a result
`
`
`
`
`
`5
`
`

`

`have become well-known and famous as distinctive symbols of Microsoft’s goodwill. In fact,
`
`Microsoft’s AGE OF EMPIRES Marks obtained the status of being famous well before Applicant
`
`filed the Applications.
`
`14. Moreover, Applicant had constructive notice of Microsoft’s ownership of federally
`
`registered rights to the AGE OF EMPIRES Marks under 15 U.S.C. § 1072 at least as early as 1998.
`
`15.
`
`Upon information and belief, Applicant has also demonstrated actual notice of
`
`Microsoft’s AGE OF EMPIRES Marks by copying screenshots of Microsoft’s own software
`
`incorporating the AGE OF EMPIRES Marks in Applicant’s own advertising. A true and accurate
`
`screenshot of advertising by Applicant is attached hereto as Exhibit C.
`
`16.
`
`As shown in Exhibit C attached hereto, Applicant has not only explicitly and
`
`blatantly used screenshots from Microsoft’s game to trade off of its goodwill, but also explicitly
`
`used Microsoft’s AGE OF EMPIRES Marks and referenced Microsoft’s Age of Empires-branded
`
`goods and services by using the abbreviation “AOE” for “Age of Empires”. See Exhibit C.
`
`17.
`
`As a result of Applicant’s blatant use of Microsoft’s AGE OF EMPIRES Marks,
`
`references to AOE to call upon the AGE OF EMPIRES Marks, and screenshots of Microsoft’s
`
`actual game software in use, actual confusion has already begun to occur with consumers believing
`
`that Applicant’s RISE OF EMPIRES game is related to, sponsored by, affiliated with, and/or
`
`otherwise is Microsoft’s game under the AGE OF EMPIRES Marks.
`
`18.
`
`Upon information and belief, consumers have left numerous negative reviews of
`
`Applicant’s RISE OF EMPIRES game due to the poor quality of the game and the business
`
`practices behind the offering of the games. Because actual consumer confusion already begun with
`
`consumers believing that Applicant’s RISE OF EMPIRES game is related to, sponsored by,
`
`
`
`
`
`6
`
`

`

`affiliated with, and/or otherwise is Microsoft’s game under the AGE OF EMPIRES Marks,
`
`consumers are therefore likely to have the same negative views of Microsoft.
`
`19.
`
`Applicant is not entitled to use or register as a trademark the RISE OF EMPIRES
`
`Marks for which it seeks registration in the Applications, either on June 27, 2020, the filing date
`
`of said Applications, or on June 1, 2021 or May 18, 2021, the dates of publication in the Official
`
`Gazette.
`
`
`
`COUNT I: LIKELIHOOD OF CONFUSION UNDER 15 U.S.C. § 1052(d)
`
`20. Microsoft incorporates all allegations above as if made herein.
`
`21.
`
`Applicant’s RISE OF EMPIRES Marks are substantially and highly similar to
`
`Microsoft’s AGE OF EMPIRES Marks in sound, appearance and commercial impression and is
`
`intended to be used in connection with services that are identical and related to, and overlapping
`
`with the goods and services covered by Microsoft’s RISE OF EMPIRES Marks.
`
`22.
`
`Applicant’s use of the RISE OF EMPIRES Marks in connection with its medieval
`
`strategy war game is substantially similar to Microsoft’s use of the AGE OF EMPIRES Marks in
`
`connection with its medieval real-time strategy video game for the past two decades. See Exhibit
`
`D.
`
`23. Microsoft’s longstanding prior use and longstanding prior registration of its AGE
`
`OF EMPIRES Marks as described above is prior to Applicant’s filing date of the Applications.
`
`24.
`
`The goods and services listed in the Applications are substantial similar, closely
`
`related, and/or identical to those protected by Microsoft’s AGE OF EMPIRES Marks and are
`
`promoted to the same or a similar class of consumers, and are available through the same or similar
`
`channels of trade.
`
`
`
`
`
`7
`
`

`

`25.
`
`Use and registration of the Applications is likely to cause confusion, mistake and
`
`deception by creating the erroneous impression that Applicant’s goods and services under the
`
`Applications originate with or come from Microsoft, or are authorized, licensed, endorsed,
`
`sponsored by, or are connected in some way with Microsoft, and therefore, the registration thereof
`
`by Applicant would injure and damage Microsoft and the goodwill and reputation symbolized by
`
`Microsoft’s AGE OF EMPIRES Marks.
`
`26.
`
`Likelihood of confusion is enhanced by the fact that the parties’ goods and services
`
`overlap or are highly related, and by the fact that consumer confusion already exists.
`
`27.
`
`Applicant knew or should have known of Microsoft’s AGE OF EMPIRES Marks
`
`when Applicant applied to register the RISE OF EMPIRES Marks as identified in the Applications.
`
`Indeed, actual confusion has already occurred and, upon information and belief, is directly known
`
`by Applicant to have occurred.
`
`28.
`
`Applicant’s adoption of the RISE OF EMPIRES Marks as identified in the
`
`Applications is without the license or permission of Microsoft.
`
`29.
`
`Registration of the Applicant’s RISE OF EMPIRES Marks is barred by the
`
`provisions of 15 U.S.C. § 1052(d) because the RISE OF EMPIRES Marks consist of or comprise
`
`marks which so resemble Microsoft’s famous AGE OF EMPIRES Marks as to be likely, when
`
`used in connection with the Applicant’s goods and services, to cause confusion, mistake, or to
`
`deceive, and cause the public to believe that the goods and services offered under the Applicant’s
`
`RISE OF EMPIRES Marks emanate from or are otherwise sponsored or endorsed by Microsoft,
`
`in violation of Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d).
`
`30.
`
`By reason of the foregoing, Microsoft will be damaged by the registration of
`
`Applicant’s RISE OF EMPIRES Marks and registration should be refused.
`
`
`
`
`
`8
`
`

`

`
`
`COUNT II: DILUTION UNDER 15 U.S.C. § 1125(c), 1063(a)
`
`31. Microsoft incorporates all allegations above as if made herein
`
`32. Microsoft’s AGE OF EMPIRES Marks have been widely used, advertised, and
`
`disseminated in the United States and throughout the world, and as a result have become well-
`
`known and famous as distinctive symbols of Microsoft’s goodwill.
`
`33. Microsoft’s AGE OF EMPIRES Marks became well-known and famous well
`
`before Applicant applied to register the Applications.
`
`34.
`
`If Applicant is permitted to use and register the Applications in connection with the
`
`goods and services identified in the Applications, dilution by blurring and by tarnishing the
`
`distinctive quality and reputation of Microsoft’s famous AGE OF EMPIRES Marks would result
`
`in irreparable damage and injury to Microsoft.
`
`35.
`
`Upon information and belief, Applicant’s RISE OF EMPIRES game has received
`
`numerous negative reviews due the poor quality of the game and the perception of the business
`
`practice behind the offering of the game. Because consumers are likely to believe Applicant’s
`
`RISE OF EMPIRE game emanates from or is otherwise sponsored or endorsed by, Microsoft,
`
`consumers are thus likely to have the same, but baseless, negative views of Microsoft.
`
`36.
`
`Use and registration of the Applications will lessen the capacity of Microsoft to
`
`identify and distinguish Microsoft’s goods and services.
`
`37.
`
`Applicant’s attempted registration of the Applications will deprive Microsoft of the
`
`ability to protect its reputation and goodwill. Therefore, registration should be denied pursuant to
`
`15 U.S.C. § 1125(c) and 15 U.S.C. § 1063(a).
`
`
`
`
`
`
`
`9
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`

`

`COUNT III: MISREPRESENTATION OF SOURCE
`
`38. Microsoft incorporates all allegations above as if made herein.
`
`39.
`
`Applicant’s use of the RISE OF EMPIRES Marks and actual images of Microsoft’s
`
`software under the RISE OF EMPIRES Marks in advertising for Applicant’s medieval strategy
`
`war game is a blatant, willful, and deliberate attempt to trade on the residual goodwill associated
`
`with Microsoft’s use of the AGE OF EMPIRES Marks in connection with its medieval real-time
`
`strategy video game and lure Microsoft’s customers into purchasing Applicant’s goods and
`
`services.
`
`40.
`
`Applicant has incorporated Microsoft’s AGE OF EMPIRES Marks in online
`
`advertisements for Applicant’s goods and services, which is a deliberate and blatant attempt to
`
`trade on Microsoft’s goodwill and reputation. Moreover, Applicant has also copied imagery
`
`incorporating Microsoft’s AGE OF EMPIRE Marks taken directly from Microsoft’s Age of
`
`Empire video games that Applicant advertised as being offered by Applicant. See Exhibit C
`
`41.
`
`Applicant’s ownership of a federal registration for the marks identified in the
`
`Applications would falsely or misleadingly represent that Applicant’s purported goods and
`
`services are those of Microsoft.
`
`42.
`
`Applicant has engaged in blatant misuse of the RISE OF EMPIRES Marks in a
`
`manner calculated to trade on the goodwill and reputation of Microsoft and the AGE OF EMPIRES
`
`Marks.
`
`43.
`
`Applicant’s attempt to register the RISE OF EMPIRES Marks amounts to a
`
`misrepresentation of source that is likely to cause confusion, to cause mistake, or to deceive as to
`
`the affiliation, connection, or association of Applicant with Microsoft as to the origin, sponsorship,
`
`or approval of Applicant’s goods and services.
`
`10
`
`
`
`
`
`

`

`
`
`COUNT IV: DECEPTION AND FALSE SUGGESTION OF CONNECTION
`UNDER 15 U.S.C. § 1052(a)
`
`
`44. Microsoft incorporates all allegations above as if made herein.
`
`45.
`
`Applicant’s RISE OF EMPIRES Marks are highly similar to Microsoft’s AGE OF
`
`EMPIRES Marks such that it is likely to cause deception in violation of Section 2(a) of the
`
`Trademark Act and materially alter purchasers’ decisions to acquire Applicant’s goods and
`
`services.
`
`46.
`
`Applicant’s RISE OF EMPIRES Marks are deceptive in that they falsely suggest a
`
`connection and/or affiliation with or approval by Microsoft.
`
`47. Microsoft is widely known within the parties’ fields of operations.
`
`48.
`
`Due to the emphasis of the word “EMPIRES” in the Applications, Applicant’s
`
`RISE OF EMPIRES Marks as set forth in the Applications falsely suggest a connection with
`
`Microsoft in violation of Section 2(a) of the Lanham Act, because Microsoft’s famous AGE OF
`
`EMPIRES Marks point uniquely to Microsoft and purchasers will assume that goods and services
`
`offered under Applicant’s RISE OF EMPIRES Marks are connected with Microsoft when they are
`
`not.
`
`49. When Applicant’s RISE OF EMPIRES Marks are used in connection with goods
`
`and services of the type described in its Applications, Applicant’s use of the RISE OF EMPIRES
`
`Marks and registration of the Applications will cause purchasers to mistakenly assume that
`
`Microsoft is endorsing, attempting to promote, or encouraging the sale of Applicant’s goods and
`
`services by permitting Applicant to use the applied for marks on such goods and services.
`
`
`
`
`
`11
`
`

`

`50. Microsoft’s fame and reputation is such that when Applicant’s RISE OF EMPIRES
`
`Marks are used in connection with the applied-for goods and services, a connection with Microsoft
`
`would be presumed.
`
`51.
`
`Therefore, registration of the Applications will damage Microsoft within the
`
`meaning of 15 U.S.C. § 1063, and should be denied pursuant to 15 U.S.C. § 1052(a).
`
`52.
`
`The opposition fee in the amount of $2,400.00 is filed herewith. The Commissioner
`
`is authorized to charge any underpayment to Deposit Account No. 04-1133 in case of any
`
`deficiency.
`
`
`
`PRAYER FOR RELIEF
`
`
`
`WHEREFORE, Microsoft prays that Application Serial Nos. 90023914, 90023918,
`
`90023967, and 90023969 be rejected, that registration of the RISE OF EMPIRES Marks as a
`
`trademark to Applicant be refused and denied, and that this opposition be sustained in Microsoft’s
`
`favor.
`
`Microsoft requests such other and further relief as the Board may deem just and proper.
`
`
`
`
`Date: September 15, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`DINSMORE & SHOHL LLP
`
`By: /April L. Besl/
`April L. Besl
`Jaci L. Overmann
`Govinda M. Davis
`Jessica M. Goedel
`Dinsmore & Shohl LLP
`255 East Fifth Street, Suite 1900
`Cincinnati, OH 45202
`Phone: (513) 977-8527
`Facsimile: (513) 977-8141
`april.besl@dinsmore.com
`jaci.overmann@dinsmore.com
`
`12
`
`
`
`
`
`
`
`

`

`govinda.davis@dinsmre.com
`jessica.goedel@dinsmore.com
`DSMSTrademarks@dinsmore.com
`
`Attorneys for Microsoft Corporation
`
`13
`
`
`
`
`
`
`
`
`
`
`

`

`
`
`
`
`EXHIBIT A
`EXHIBIT A
`
`

`

`Int. Cl.: 28
`
`Prior U.S. Cls.: 22, 23, 38, and 50
`
`United States Patent and Trademark Office
`
`Reg. No. 2,137,862
`Registered Feb. 17, 1998
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`AGE OF EMPIRES
`
`MICROSOFT CORPORATION (WASHINGTON
`CORPORATION)
`ONE MICROSOFT WAY
`REDMOND, WA 980525399
`
`FOR: COMPUTER PROGRAMS, NAMELY,
`GAME SOFTWARE,IN CLASS 28 (U.S. CLS. 22,
`23, 38 AND 50).
`
`FIRST USE
`10-12-1997.
`
`10-12-1997;
`
`IN COMMERCE
`
`SN 75-108,153, FILED 5-22-1996.
`
`SCHUYLA GOODSON, EXAMINING ATTOR-
`NEY
`
`

`

`Generated on: This page was generated by TSDR on 2021-09-14 17:50:49 EDT
`
`Mark: AGE OF EMPIRES
`
`US Serial Number: 75108153
`
`US Registration
`Number:
`
`2137862
`
`Register: Principal
`
`Mark Type: Trademark
`
`TM5 Common Status
`Descriptor:
`
`Status: The registration has been renewed.
`
`Status Date: Jan. 06, 2018
`
`Publication Date: Feb. 18, 1997
`

`
`Mark Literal
`Elements:
`
`AGE OF EMPIRES
`
`Standard Character
`Claim:
`
`No
`
`Application Filing
`Date:
`
`May 22, 1996
`
`Registration Date: Feb. 17, 1998
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Notice of
`Allowance Date:
`
`May 13, 1997
`
`Mark Information
`
`Mark Drawing
`Type:
`
`1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
`
`Goods and Services
`
`Note:
`The following symbols indicate that the registrant/owner has amended the goods/services:
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: computer programs, namely, game software
`
`International
`Class(es):
`
`028 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`U.S Class(es): 022, 023, 038, 050
`
`First Use: Oct. 12, 1997
`
`Use in Commerce: Oct. 12, 1997
`
`Basis Information (Case Level)
`
`Filed Use: No
`
`Filed ITU: Yes
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`

`

`Filed No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: Microsoft Corporation
`
`Owner Address: ONE MICROSOFT WAY
`REDMOND, WASHINGTON UNITED STATES 98052
`
`Legal Entity Type: CORPORATION
`
`State or Country
`Where Organized:
`
`WASHINGTON
`
`Attorney/Correspondence Information
`
`Attorney Name: April L. Besl
`
`Attorney Primary
`Email Address:
`
`april.besl@dinsmore.com
`
`Correspondent
`Name/Address:
`
`April L. Besl
`Dinsmore & Shohl LLP
`255 East Fifth Street Suite 1900
`Cincinnati, OHIO UNITED STATES 45202
`
`Attorney of Record
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Phone:
`
`(513) 977-8527
`
`Fax: 513-977-8141
`
`Correspondent e-
`mail:
`
`april.besl@dinsmore.com DSMSTrademarks@din
`smore.com MSDocketing@Dinsmore.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`Oct. 10, 2020
`
`APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED
`
`Proceeding
`Number
`
`88888
`
`Oct. 10, 2020
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`
`Oct. 10, 2020
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`
`Oct. 10, 2020
`
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`
`Oct. 10, 2020
`
`TEAS CHANGE OF OWNER ADDRESS RECEIVED
`
`Dec. 13, 2018
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`
`Dec. 13, 2018
`
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`
`Jan. 06, 2018
`
`NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
`
`Jan. 06, 2018
`
`REGISTERED AND RENEWED (SECOND RENEWAL - 10 YRS)
`
`Jan. 06, 2018
`
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`
`Jan. 02, 2018
`
`TEAS SECTION 8 & 9 RECEIVED
`
`Feb. 17, 2017
`
`COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED
`
`Dec. 22, 2014
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`
`Dec. 22, 2014
`
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`
`Sep. 15, 2010
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`
`Sep. 18, 2007
`
`REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS)
`
`Sep. 18, 2007
`
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`
`Aug. 27, 2007
`
`ASSIGNED TO PARALEGAL
`
`Aug. 10, 2007
`
`REGISTERED - COMBINED SECTION 8 (10-YR) & SEC. 9 FILED
`
`Aug. 10, 2007
`
`TEAS SECTION 8 & 9 RECEIVED
`
`Apr. 17, 2007
`
`CASE FILE IN TICRS
`
`Dec. 29, 2006
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`
`Jun. 28, 2003
`
`REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
`
`Mar. 25, 2003
`
`REGISTERED - SEC. 8 (6-YR) & SEC. 15 FILED
`
`Mar. 25, 2003
`
`REGISTERED - SEC. 8 (6-YR) & SEC. 15 FILED
`
`Mar. 25, 2003
`
`REGISTERED - SEC. 8 (6-YR) & SEC. 15 FILED
`
`Mar. 25, 2003
`
`TEAS SECTION 8 & 15 RECEIVED
`
`Feb. 17, 1998
`
`REGISTERED-PRINCIPAL REGISTER
`
`68335
`
`68335
`
`68335
`
`68335
`
`

`

`Dec. 22, 1997
`
`ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED
`
`Dec. 20, 1997
`
`ASSIGNED TO EXAMINER
`
`Dec. 16, 1997
`
`STATEMENT OF USE PROCESSING COMPLETE
`
`Nov. 06, 1997
`
`USE AMENDMENT FILED
`
`May 13, 1997
`
`NOA MAILED - SOU REQUIRED FROM APPLICANT
`
`Feb. 18, 1997
`
`PUBLISHED FOR OPPOSITION
`
`Jan. 17,

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