Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1229623
`08/17/2022
`
`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
`
`Advance Magazine Publishers Inc.
`
`Granted to date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`08/17/2022
`
`ONE WORLD TRADE CENTER
`NEW YORK, NY 10007
`UNITED STATES
`
`JORDAN A. LAVINE
`FLASTER/GREENBERG P.C.
`ONE TOWER BRIDGE
`100 FRONT STREET, SUITE 100
`CONSHOHOCKEN, PA 19428
`UNITED STATES
`Primary email: jordan.lavine@flastergreenberg.com
`Secondary email(s): eric.clendening@flastergreenberg.com, tm-
`dock@flastergreenberg.com
`2152799389
`
`Docket no.
`
`A1092
`
`Applicant information
`
`Application no.
`
`90788402
`
`Opposition filing
`date
`
`Applicant
`
`08/17/2022
`
`Top Flight, Inc.
`1300 CENTRAL AVENUE
`CHATTANOOGA, TN 37408
`UNITED STATES
`
`Goods/services affected by opposition
`
`Publication date
`
`04/19/2022
`
`Opposition period
`ends
`
`08/17/2022
`
`Class 016. First Use: Oct 31, 2019 First Use In Commerce: Oct 31, 2019
`All goods and services in the class are opposed, namely: Stationery goods, namely, notebooks, top
`wire notebooks, portfolio notebooks, personal notebooks
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`Dilution by tarnishment
`
`Trademark Act Sections 2 and 43(c)
`
`Trademark Act Sections 2 and 43(c)
`
`Marks cited by opposer as basis for opposition
`
`

`

`U.S. registration
`no.
`
`1853612
`
`Register
`
`Principal
`
`Registration date
`
`09/13/1994
`
`Application date
`
`06/23/1992
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`WIRED
`
`NONE
`
`Class 016. First use: First Use: Apr 1991 First Use In Commerce: Dec 1991
`magazines relating to the digital revolution
`
`U.S. registration
`no.
`
`1967076
`
`Register
`
`Principal
`
`Registration date
`
`04/09/1996
`
`Application date
`
`06/13/1995
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`WIRED
`
`NONE
`
`Class 016. First use: First Use: Dec 1992 First Use In Commerce: Dec 1992
`magazines about culture, lifestyle and technology
`
`U.S. registration
`no.
`
`1997802
`
`Register
`
`Principal
`
`Registration date
`
`09/03/1996
`
`Application date
`
`12/10/1993
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`WIRED
`
`NONE
`
`Class 038. First use: First Use: May 27, 1992 First Use In Commerce: May 27,
`1992
`transmission of messages and data via access to an interactive computer
`
`U.S. registration
`no.
`
`2125872
`
`Register
`
`Principal
`
`Registration date
`
`12/30/1997
`
`Application date
`
`05/05/1993
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`WIRED
`
`NONE
`
`Class 041. First use: First Use: Nov 2, 1996 First Use In Commerce: Nov 2,
`1996
`[television programming services; cabletelevision programming services] audio
`
`

`

`recording and production services [ ; videotape production services; and publica-
`tion of magazines for others]
`
`U.S. registration
`no.
`
`2150960
`
`Register
`
`Principal
`
`Registration date
`
`04/14/1998
`
`Application date
`
`05/23/1997
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`WIRED
`
`NONE
`
`Class 016. First use: First Use: Apr 1991 First Use In Commerce: Dec 1991
`books and magazines in the fields of culture, lifestyle and technology
`
`U.S. registration
`no.
`
`2781551
`
`Register
`
`Principal
`
`Registration date
`
`11/11/2003
`
`Application date
`
`09/30/2002
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`WIRED
`
`NONE
`
`Class 035. First use: First Use: May 27, 1992 First Use In Commerce: May 27,
`1992
`Operating an Internet site which allowsconsumers to subscribe to consumer
`magazines and allows advertisers to promote their goods and services on the
`Internet
`
`U.S. registration
`no.
`
`3078104
`
`Register
`
`Principal
`
`Registration date
`
`04/11/2006
`
`Word mark
`
`Design mark
`
`WIRED
`
`Application date
`
`11/28/2003
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`NONE
`
`Goods/services
`
`Class 035. First use: First Use: May 27, 1992 First Use In Commerce: May 27,
`
`

`

`1992
`Providing information about business and politics via a global computer network
`Class 042. First use: First Use: May 27, 1992 First Use In Commerce: May 27,
`1992
`Providing information about the digitalrevolution, technology, electronics
`andscience via a global computer network
`
`U.S. registration
`no.
`
`3277604
`
`Register
`
`Principal
`
`Registration date
`
`08/07/2007
`
`Word mark
`
`Design mark
`
`WIRED STORE
`
`Application date
`
`11/21/2005
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 035. First use: First Use: Nov 1, 2005 First Use In Commerce: Nov 1,
`2005
`Retail store services featuring electronics, high-tech, and technology-related
`products including computer software andhardware; retail store services featur-
`ing electronics, high-tech, and technology-related products including computer
`software and hardware, available through interactive computer networks, wire-
`less, mobile and satellite connections
`
`U.S. registration
`no.
`
`3330206
`
`Register
`
`Principal
`
`Registration date
`
`11/06/2007
`
`Application date
`
`06/09/2006
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`WIRED
`
`NONE
`
`Class 035. First use: First Use: Sep 1, 2006 First Use In Commerce: Sep 1,
`2006
`Promoting the goods and services of others via wireless and mobile devices
`Class 038. First use: First Use: Sep 1, 2006 First Use In Commerce: Sep 1,
`2006
`Provision of information via wireless and mobile devices, satellite and cable and
`other means of digital and electronictransmissions, transmission of information
`via digital networks and electronic communications networks
`
`

`

`U.S. registration
`no.
`
`4349717
`
`Register
`
`Principal
`
`Registration date
`
`06/11/2013
`
`Application date
`
`10/09/2012
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`WIRED SCIENCE
`
`NONE
`
`Class 041. First use: First Use: Nov 22, 2006 First Use In Commerce: Nov 22,
`2006
`blogs and non-downloadable publicationsin the nature of articles and journals in
`the fields of science
`
`U.S. registration
`no.
`
`5007970
`
`Register
`
`Principal
`
`Registration date
`
`07/26/2016
`
`Application date
`
`12/17/2015
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`WIRED BY DESIGN
`
`NONE
`
`Class 041. First use: First Use: Sep 29, 2014 First Use In Commerce: Sep 29,
`2014
`Arranging and conducting educational conferences; organizing exhibitions for
`educational purposes in the field of design; Entertainment services in the nature
`of non-downloadable video series in the fields of technology, design and innova-
`tion, culture and science
`
`U.S. registration
`no.
`
`5696105
`
`Register
`
`Principal
`
`Registration date
`
`03/12/2019
`
`Application date
`
`07/11/2018
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`WIRED AUTOCOMPLETE INTERVIEW
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 041. First use: First Use: Mar 1, 2016 First Use In Commerce: Mar 1,
`2016
`
`

`

`Education and entertainment services, namely, a continuing web-based non-
`downloadable video series focused on celebrities answering the internet's most
`searched questions in the fields of celebrities, entertainment, and popular cul-
`ture
`
`U.S. registration
`no.
`
`5740310
`
`Register
`
`Principal
`
`Registration date
`
`04/30/2019
`
`Application date
`
`03/01/2017
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`WIRED
`
`The mark consists of the stylized wording "WIRED" set against square blocks.
`
`Class 035. First use: First Use: Dec 12, 2004 First Use In Commerce: Dec 12,
`2004
`retail store services and online retailstore services in the field of consumerelec-
`tronics, household appliances, hometheater equipment, photographic equip-
`ment, cellular phones, telecommunications products and services, information
`technology products, video equipment, audio equipment, portable electronic
`devices and related accessories, personal computers and other home office
`products, imaging equipment, digital equipment, video and electronic games,
`video and electronicgame equipment and accessories, entertainment furniture,
`computer software, entertainment software, compact discs, dvds, audio and
`video recordings, ring tones, gift cards, books, magazines, batteries, automotive
`audio equipment, luggage, tote bags, travel accessories, apparel; retail store
`services featuring a wide variety of consumer goods; retail store services featur-
`ing electronics, high-tech, and technology-related products including computer
`software and hardware
`
`U.S. registration
`no.
`
`5808547
`
`Register
`
`Principal
`
`Registration date
`
`07/16/2019
`
`Word mark
`
`Design mark
`
`WIRED MASTERMINDS
`
`Application date
`
`09/20/2018
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 041. First use: First Use: Nov 12, 2018 First Use In Commerce: Nov 12,
`2018
`Education and entertainment services, namely, a continuing web-based non-
`downloadable video series focused on creators and experts demonstrating and
`explainingvarious aspects of their work
`
`

`

`U.S. registration
`no.
`
`6268283
`
`Register
`
`Principal
`
`Registration date
`
`02/09/2021
`
`Word mark
`
`Design mark
`
`GET WIRED
`
`Application date
`
`03/25/2020
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 041. First use: First Use: Jul 20, 2020 First Use In Commerce: Jul 20,
`2020
`Entertainment services, namely, providing podcasts in the field of technology
`
`U.S. registration
`no.
`
`6280638
`
`Register
`
`Principal
`
`Registration date
`
`03/02/2021
`
`Application date
`
`05/28/2020
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`WIRED TRADECRAFT
`
`NONE
`
`Class 041. First use: First Use: Apr 23, 2019 First Use In Commerce: Apr 23,
`2019
`entertainment services, namely, an ongoing video series featuring experts ex-
`plaining techniques used to excel in their respective fields of activity delivered by
`the internet
`
`U.S. application
`no.
`
`88699397
`
`Application date
`
`11/20/2019
`
`Registration date
`
`NONE
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`WIRED
`
`The mark consists of the stylized wording "WIRED", with the letters "W", "R" and
`"D" encased in shaded squares.
`
`Class 009. First use: First Use: None First Use In Commerce: None
`computer carrying cases
`Class 014. First use: First Use: None First Use In Commerce: None
`key chains
`
`

`

`Class 018. First use: First Use: None First Use In Commerce: None
`tote bags, gym bags, messenger bags, luggage, luggage tags, brief cases, wal-
`lets; leather goods, namely, leather bags, wallets, and umbrellas
`
`U.S. application
`no.
`
`97125507
`
`Application date
`
`11/15/2021
`
`Registration date
`
`NONE
`
`Word mark
`
`Design mark
`
`WIRED STUDIOS
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 041. First use: First Use: None First Use In Commerce: None
`ENTERTAINMENT AND EDUCATIONAL SERVICES,namely, ONGOING MUL-
`TIMEDIA PROGRAMS IN THE FIELD OF GENERAL INTEREST, namely, IN
`THE FIELDS OF RELATIONSHIPS, HOME, DESIGN, LIFESTYLE, POLITICS,
`BEAUTY, COOKING, FOOD, TRAVEL, ARCHITECHTURE, ADVENTURE,
`FASHION, COUTURE, LIFESTYLES, CULTURE, SCIENCE, SPACE, TECH-
`NOLOGY, BUSINESS, FITNESS, NUTRITION, EXERCISE, CURRENT
`EVENTS, DISTRIBUTED VIA VARIOUS PLATFORMS ACROSS MULTIPLE
`FORMS OF TRANSMISSION MEDIA; PROVIDING ONGOING VIDEO SERIES,
`namely, IN THE FIELDS OF RELATIONSHIPS, HOME, DESIGN, LIFESTYLE,
`POLITICS, COOKING,FOOD, TRAVEL, ARCHITECHTURE, ADVEN-
`TURE,FASHION, COUTURE, LIFESTYLES, CULTURE, SCIENCE, SPACE,
`TECHNOLOGY, BUSINESS, FITNESS, NUTRITION, EXERCISE, CURRENT
`EVENTS; PROVIDING OVER THE TOP (OTT) ENTERTAINMENT PROGRAM-
`MING IN THE FIELDS OF RELATIONSHIPS, HOME, DESIGN, LIFESTYLE,
`POLITICS, COOKING, FOOD, TRAVEL, ARCHITECHTURE, ADVENTURE,
`FASHION, COUTURE, LIFESTYLES, CULTURE, SCIENCE, SPACE, TECH-
`NOLOGY, BUSINESS, FITNESS, NUTRITION, EXERCISE, CURRENT
`EVENTS; PODCASTING SERVICES, namely, PROVIDING PODCASTS FEA-
`TURING RELATIONSHIPS, HOME, DESIGN, LIFESTYLE, POLITICS, COOK-
`ING, FOOD, TRAVEL, ARCHITECHTURE, ADVENTURE, FASHION, COU-
`TURE, LIFESTYLES, CULTURE, SCIENCE, SPACE, TECHNOLOGY, BUSI-
`NESS, FITNESS, NUTRITION, EXERCISE, CURRENT EVENTS; MEDIA PRO-
`DUCTION SERVICES, namely, VIDEO AND FILM PRODUCTION; MULTIME-
`DIA ENTERTAINMENT SERVICES IN THENATURE OF DEVELOPMENT,
`PRODUCTION, POST-PRODUCTION AND DISTRIBUTION SERVICES INTHE
`FIELDS OF VIDEO AND FILMS; TELEVISION, FILM AND AUDIOVISUAL STU-
`DIOS
`
`U.S. application
`no.
`
`97183972
`
`Application date
`
`12/22/2021
`
`Registration date
`
`NONE
`
`Word mark
`
`WIRED
`
`Foreign priority
`date
`
`NONE
`
`

`

`Design mark
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 035. First use: First Use: None First Use In Commerce: None
`retail services in relation to works ofart; advertising and marketing service-
`sprovided by means of social media; advertising and marketing services; online
`marketing; planning of marketing strategies; product marketing; providing online
`marketplaces for sellers of goods and orservices; artists (business management
`of performing -); arranging and conducting of exhibitions for business pur-
`poses;arranging and conducting of commercial exhibitions and shows; arranging
`and conducting auctions; arranging and conducting of internet auctions; auction-
`eering; auctioneering services; on-line auction bidding for others; on-line auc-
`tioneering services via the internet; organisation of internet auctions; electronic
`publication of printed matter for advertisingpurposes; non-fungible tokens
`(NFTs), non-fungible tokens (NFTS) relating with digital art, collectibles, photo-
`graphs, videos, or audio recordings, digital tokens based on blockchain techno-
`logy, digital collectibles, software for the sale and purchase of digital media and
`collectibles, including non-fungible tokens (NFTs), computer software for man-
`aging andvalidating non-fungible tokens (NFTs) transactions using blockchain-
`based smartcontracts, computer software for non-fungible tokens (NFTs) trans-
`actions using blockchain technology, computer softwarefor managing and verify-
`ing non-fungibletokens (NFTs) transactions on a blockchain, digital collectibles
`software usingblockchain-based software technology and smart contracts,
`downloadable computersoftware for managing digital collectible services, a mar-
`ket for transactions, and a registry using blockchain-based software technology
`and smart contracts for digital collectibles, digital materials, namely, non-fungible
`tokens (NFTs), digital materials, namely, non-fungible tokens (NFTs), download-
`able virtual goods, namely, downloadable content featuringclothing, design, life-
`style, fashion, couture, culture, technology, food, cooking, travel, current events,
`health and fitness for use online and in the online virtual worlds; retail and online
`retailservices in relation to publications, clothing, footwear, headgear; providing
`an online marketplace for display, exhibition, sale, purchase, exchange, and
`transfer of non-fungible tokens (NFTs) and digital collectibles; retail and online
`retail store services featuring virtual goods; retail and online store services fea-
`turing virtual goods, namely, downloadable content featuring clothing,
`design,lifestyle, fashion, couture, culture, technology, food, cooking, travel, cur-
`rent events, health and fitness; online retail store services featuring virtual mer-
`chandise in the fields of clothing, design, lifestyle, fashion, couture, culture, tech-
`nology, food, cooking, travel, current events, health and fitness; information, ad-
`visory and consultancy services relating to the aforesaid
`
`Related proceed-
`ings
`
`TTAB Opposition No. 91277552 concerning the mark "WIRED" in standard char-
`acters.
`
`Attachments
`
`76564367#TMSN.png( bytes )
`78757880#TMSN.png( bytes )
`88033108#TMSN.png( bytes )
`88125396#TMSN.png( bytes )
`88847203#TMSN.png( bytes )
`97125507#TMSN.png( bytes )
`Notice of Opposition - WIRED stylized - 8.17.22.pdf(235034 bytes )
`
`Signature
`
`/Jordan LaVine/
`
`Name
`
`Date
`
`JORDAN A. LAVINE
`
`08/17/2022
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`Advance Magazine Publishers, Inc.,
`
`
`
`
`Opposer,
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`
`
`Top Flight, Inc.,
`
`
`
`
`
`
`
`
`Applicant.
`
`
`
`
`
`
`
`:
`:
`:
`:
`:
`:
`:
`:
`:
`
`
`
`
`
`Re: Application No. 90/788,402
`Mark: WIRED (stylized)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`Opposer, Advance Magazine Publishers Inc., a New York corporation with an address of
`
`One World Trade Center, New York, NY 10007 (“Opposer’), hereby opposes registration of the
`
`mark “WIRED” (in a stylized form), which is the subject of Application Serial No. 90/788,402,
`
`and requests that registration be refused to Applicant. Opposer believes that it will be damaged if
`
`the registration issues for the goods and services identified therein.
`
`
`
`In support of its opposition, Opposer asserts as follows:
`
`1.
`
`Opposer is an American media company owned by the descendants of S.I.
`
`Newhouse, Sr., Donald Newhouse, and S.I. Newhouse, Jr. Through its subsidiary, Condé Nast,
`
`Opposer publishes such well-known publications as Vogue, Wired, GQ, Vanity Fair, Allure, and
`
`Glamour.
`
`2.
`
`Wired’s first magazine issue launched in January 1993, covering topics related to
`
`the digital revolution, and has been published continuously since then.
`
`3.
`
`Today, Wired is an American monthly magazine that covers topics such as
`
`technology, climate, personal health and fitness, global public health, cyber security, the economy,
`
`culture, politics, technology business, and the future of cities.
`
`10096426 v1
`
`1
`
`

`

`
`
`4.
`
`Wired seeks to be a leader and authority on covering the challenges facing humanity
`
`through not just its print and digital publications, but through its current use of its Wired mark in
`
`videos, podcasts, social media engagement, sponsorships, partnerships, workshops, conferences,
`
`panels, software applications, membership programs, restaurants, and e-commerce.
`
`5.
`
`Wired has approximately 3.5 million print readers, 18 million unique digital users,
`
`20.3 million social media followers, and Wired videos have over 87 million views.
`
`6.
`
`Wired’s YouTube channel has approximately 8.31 million subscribers and its
`
`videos have accumulated over 2.6 billion video views.
`
`7.
`
`Opposer’s use of its “WIRED” trademark and WIRED-formative trademarks are
`
`used in connection with goods and services that are identical or highly similar to the goods
`
`identified in the Application opposed herein.
`
`8.
`
`As a result of Opposer’s longstanding and continuous use of its “WIRED”
`
`trademark for a wide range of goods and services, the popularity of Opposer’s goods and services
`
`offered in connection with its “WIRED” mark, and its extensive advertising and promotion of
`
`products and services provided under its “WIRED” mark, Opposer’s “WIRED” mark has acquired
`
`substantial goodwill and reputation and has become a “famous” trademark.
`
`9.
`
` Opposer owns more than 20 active trademark registrations in the U.S. Patent and
`
`Trademark Office for marks than contain its “WIRED” trademark. These registrations include
`
`registrations for the trademark “WIRED” by itself and registrations for marks that combine
`
`Opposer’s “WIRED” mark with other wording or that otherwise include Opposer’s “WIRED”
`
`trademark as a root term. Some examples of Opposer’s registered marks are the following:
`
`“WIRED,” “WIRED STORE,” “WIRED CAFE,” “WIRED SCIENCE,” “WIRED BY DESIGN,”
`
`10096426 v1
`
`2
`
`

`

`
`
`“WIRED AUTOCOMPLETE INTERVIEW,” “WIRED MASTERMINDS,” “GET WIRED,”
`
`“WIRED TRADECRAFT,” and “WIRED” in a stylized/logo format.
`
`10.
`
`As noted above, in addition to using in commerce the “WIRED” standard character
`
`trademark, Opposer has long used the “WIRED” trademark in commerce in a distinctive logo and
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`font presentation for its “WIRED” trademark, as shown below:
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`Opposer’s “WIRED” trademark is inherently distinctive.
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`To the extent that Opposer’s “WIRED” trademark is not inherently distinctive,
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`11.
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`12.
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`Opposer’s “WIRED” trademark has acquired distinctiveness through Opposer’s long and
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`exclusive use of the trademark.
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`13.
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`By virtue of its long and exclusive use of the “WIRED” trademark and the success
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`of the products and services provided under the “WIRED” trademark, Opposer’s “WIRED”
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`trademark has become a famous trademark.
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`14.
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`On June 22, 2021, Applicant filed a trademark application for the mark “WIRED”
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`(in a stylized form) for “Stationery goods, namely, notebooks, top wire notebooks, portfolio
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`notebooks, personal notebooks.” in International Class 16. The application alleges a first use date
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`and first use in commerce date of October 31, 2019.
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`15.
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`The goods identified in the application herein opposed are identical or highly
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`similar to Opposer's goods and services, including the goods and services identified in Opposer’s
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`registrations and applications claimed herein for its “WIRED” trademark. In addition, the marks
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`at issue are identical.
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`COUNT I: PRIORITY AND LIKELIHOOD OF CONFUSION
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`16.
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`Opposer re-alleges and incorporates by reference the facts and allegations
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`contained in the preceding paragraphs, as set forth in their entirety herein.
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`17.
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`Opposer has used its “WIRED” trademarks in commerce since long prior to the
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`alleged date of first use and alleged date of first use in commerce identified in Application No.
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`90/788,402.
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`18.
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`Some of Opposer’s subsisting registrations claimed in this proceeding issued prior
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`to the date that Application began using the mark at issue in Application No. 90/788,402.
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`19.
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`Applicant’s mark is identical to Opposer’s previously used and registered mark,
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`“WIRED.” When applied to the goods set forth in Applicant’s application, Applicant’s mark is
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`likely to cause confusion, mistake, or deception within the meaning of Section 2(d) of the
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`Trademark Act.
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`20.
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`Applicant’s registration and use of its mark will falsely suggest an association with,
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`or approval by, Opposer of Applicant’s goods and services, and will inevitably create confusion
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`in the marketplace. Such confusion will cause irreparable harm to Opposer.
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`21.
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`Applicant’s goods are identical or highly similar and related to Opposer’s goods
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`and services identified in its Registration Nos. 1853612, 1967076, 1997802, 2125872, 2150960,
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`2781551, 3078104, 3277604, 3330206, 4349717, 5007970, 5696105, 5740310, 5808547,
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`6268283, and 6280638, and Application Nos. 88699397, 97125507, and 97183972. Therefore,
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`registration of Applicant’s mark for related products is likely to cause confusion, mistake, or
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`deception.
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`22.
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`Registration of Applicant’s mark is likely to cause Opposer to lose control over the
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`good and valuable reputation of its “WIRED” marks.
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`23.
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`For the reasons stated above, Applicant’s application should be refused under
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`Section 2(d) of the Trademark Act.
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`COUNT II: DILUTION – 15 U.S.C. § 1125(c)
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`24.
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`Opposer re-alleges and incorporates by reference the facts and allegations
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`contained in the preceding paragraphs, as set forth in their entirety herein.
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`25.
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`Through Opposer’s long use, considerable investment, and based upon the success
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`of the products and services provided by Opposer under the “WIRED” trademark, Opposer’s
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`trademark has become famous for Opposer’s products and services.
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`26.
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`Because Applicant’s mark is identical to the Opposer’s mark, its registration is
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`likely to trade on the considerable goodwill associated therewith and dilute its distinctiveness.
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`27.
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`For the reasons stated above, Applicant’s application for registration and use of the
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`mark shown in Application Serial No. 90/788,402 should be refused under Section 43(c) of the
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`Trademark Act.
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`28.
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`If Applicant is granted a registration for the mark herein opposed, it would obtain
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`thereby at least a prima facie exclusive right to use the mark. For all of the reasons discussed
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`above, such registration would cause damage to Opposer. Accordingly, Opposer requests that
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`Application Serial No. 90/788,402 be refused and that this opposition be sustained.
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`WHEREFORE, Opposer respectfully requests that the opposition be sustained and that
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`registration of the “WIRED” mark be refused.
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`Opposer’s undersigned counsel states that he is a member in good standing of the
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`Pennsylvania bar, Bar No. 78503, admitted in 1996.
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`August 17, 2022
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`Respectfully submitted,
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`FLASTER GREENBERG P.C.
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`Jordan A. LaVine
`Eric Clendening
`FLASTER/GREENBERG P.C.
`One Tower Bridge
`100 Front Street, Suite 100
`Conshohocken, PA 19428
`856.382.2210
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`ATTORNEYS FOR OPPOSER
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