Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1287134
`05/24/2023
`
`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
`
`TCL Technology Group
`
`Granted to date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`06/17/2023
`
`TCL TECHNOLOGY BLDG, 17 HUIFENG 3RD RD,
`ZHONGKAI HIGH TECH DEVELOPMENT DISTRICT
`HUIZHOU, GUANGDONG, n/a
`CHINA
`
`DAVID SILVER
`BAYRAMOGLU LAW OFFICES LLC
`1540 WEST WARM SPRINGS ROAD, SUITE 100,
`HENDERSON, NV 89014
`UNITED STATES
`Primary email: tm@bayramoglu-legal.com
`Secondary email(s): david@bayramoglu-legal.com,
`nazly@bayramoglu-legal.com, alex@bayramoglu-legal.com,
`gokalp@bayramoglu-legal.com
`7024625973
`
`Docket no.
`
`Applicant information
`
`Application no.
`
`90642679
`
`Opposition filing
`date
`
`Applicant
`
`05/24/2023
`
`Publication date
`
`04/18/2023
`
`Opposition period
`ends
`
`06/17/2023
`
`TACTICAL COMBAT LEAGUE LLC
`253 SACRED FIRE ROAD
`LOUISBURGH, NC 27549
`UNITED STATES
`
`Goods/services affected by opposition
`
`Class 009. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Downloadable computer programs for video
`and computer games; downloadable mobile application computer programs for video and computer
`games; downloadable posters; downloadable collectible trading cards; downloadable electronic pub-
`lications in the nature of event programs in the field of combat sports
`
`Class 041. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Entertainment services, namely, organizing
`and conducting entertainment exhibitions, tournaments and competitions in the field of combat
`sports; education services relating to the professional combat industry, namely, providing classes,
`seminars and workshops in the field of combat sports; organizing and conducting sporting and cultur-
`al activities in the professional combat industry, namely, competitions and tournaments; entertain-
`
`

`

`ment services, namely, providing online video games; entertainment services in the nature of fantasy
`sports leagues; Entertainment services in the nature of conducting, organizing, and arranging fantasy
`sports competitions; Online gaming services in the nature of computer game tournaments; Gaming
`services in the nature of conducting online computer game tournaments; Providing on-line computer
`games; providing online computer sports gaming in the nature of providing online computer games,
`organizing, arranging, and conducting sports competitions; Providing online non-downloadable game
`software; Entertainment services, namely, providing on-line computer games; Providing a web-based
`system and on-line portal for customers to participate in online gaming, operation and coordination of
`game tournaments, leagues and tours for recreational computer game playing purposes; Entertain-
`ment services, namely, providing online multiplayer video games
`
`Class 042. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Video game development services
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`No bona fide intent to use mark in commerce for
`identified goods or services
`
`Trademark Act Section 1(b), 44(e) or 66(a)
`
`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.
`
`3298181
`
`Register
`
`Principal
`
`Registration date
`
`09/25/2007
`
`Application date
`
`03/18/2005
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`TCL
`
`NONE
`
`Class 007. First use: First Use: None First Use In Commerce: None
`Electromechanical food preparation machines, namely, food processor; elec-
`tromechanical beverage preparation machines, namely, electric mixers for
`household purposes; power operated coffee grinders; electric kitchen machines,
`namely, mixers; dry cleaning machines; electric motors for refrigerators; com-
`pressors for machines; electric shoe polishers; electric food processors; washing
`machines for clothes; electric dishwashers; vacuum cleaners
`Class 009. First use: First Use: None First Use In Commerce: None
`Modems; portable computer memories; electronic agendas; walkie-talkies; an-
`swering machines; intercommunication apparatus, namely, intercoms; tele-
`phones; program-controlled telephone exchange apparatus; camcorders; televi-
`sion sets; amplifiers; loudspeakers; optical disc players; MP3 players; compact
`disc players; set top boxes; sound reproduction apparatus; earphones; tele-
`phone wires and cables; remote control apparatus; electric relays; low-voltage
`power supply; electric plugs and sockets; electricity distribution consoles; electri-
`city control panels; electric switches; current rectifiers; electric flat irons; camer-
`as; electricity transformers; integrated circuits; computers; computer monitors;
`computer peripherals; telephone apparatus; optical communication apparatus;
`radios; electronic burglar alarms; batteries
`Class 011. First use: First Use: None First Use In Commerce: None
`Electric lighting fixtures; water heaters for domestic and commercial use; gas
`burners for domestic use; electric griddles; electric coffee percolators; electric
`coffee makers; microwave ovens for cooking; electric cooking ovens; electric
`
`

`

`kettles; electronic refrigerating cabinets for wines; ice cream making machines;
`ventilating exhaust fans; electric fans for personal use; hand-held electric hair
`dryers; ventilating hoods for kitchens; electric laundry dryers; air purifiers; air hu-
`midifiers; hair drying machines for beauty salon use; Electric radiant heaters for
`household purposes; drinking water purifiers; water purification units; sockets for
`electric lights; refrigerators; air conditioners; sterilizers not for medical use; elec-
`tric hand warmers; electric hand dryers for washrooms
`
`U.S. registration
`no.
`
`6172023
`
`Register
`
`Principal
`
`Registration date
`
`10/13/2020
`
`Application date
`
`12/05/2019
`
`Foreign priority
`date
`
`07/04/2019
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`TCL
`
`NONE
`
`Class 007. First use: First Use: None First Use In Commerce: None
`Electromechanical food preparation machines, namely, food processors; juice
`extractors, electric; dishwashers; electric kitchen machines, namely, mixers,
`electric fruit juicers; electric food blenders for household purposes; coffee
`grinders, other than hand-operated; dry-cleaning machines; laundry washing
`machines; wringing machines for laundry; compressed air machines; com-
`pressors for refrigerators; door openers, electric; window openers, electric; elec-
`tric machines and apparatus for cleaning, namely, floor cleaning machines, car-
`pet cleaning machines; vacuum cleaners; curtain drawing devices electrically
`operated; 3D printers; vending machines; motors, electric, for refrigerators; elec-
`tric beverage preparation machines, namely, household bean milk makers; elec-
`tric openers for rolling doors
`Class 009. First use: First Use: None First Use In Commerce: None
`Data processing apparatus; computers; computer peripheral devices; computer
`monitors; tablet computers; computer hardware; blank USB flash drives; inter-
`active touch screen terminals; humanoid robots with artificial intelligence; elec-
`tronic interactive whiteboards; network servers; electronic security tokens in the
`nature of a fob-like device used by an authorized user of a computer system to
`facilitate authentication; electronic pocket translators; encoded identification
`bracelets, magnetic; biometric fingerprint scanners; flash memory card adapters;
`downloadable computer software applications, namely, for mobile phones, port-
`able media players, handheld computers, televisions, namely, software for use
`in database management, use in electronic storage of data, controlling or oper-
`ating televisions and mobile phones; electronic agendas; pedometers; facsimile
`machines; bathroom scales; electronic notice boards; digital signs; telephone
`apparatus; video telephones; cellular phones; electric navigational instruments;
`intercoms; wearable activity trackers; computer network switches; computer net-
`work hubs; antennas; transponders; television apparatus, namely, television
`sets; loudspeakers; cabinets for loudspeakers; horns for loudspeakers; mega-
`phones; audio mixers; monitoring apparatus, other than for medical purposes,
`namely, electric digital signal monitors; audio- and video-receivers; sound trans-
`mitting apparatus; sound recording apparatus; sound reproduction apparatus;
`camcorders; portable media players; electronic book readers; headphones; mi-
`crophones; virtual reality headsets; security surveillance robots; wearable video
`display monitors; personal stereos; audio amplifiers; stereo tuners; audio inter-
`faces; equalizers being audio apparatus; photographic cameras; video project-
`ors; audiovisual teaching apparatus, namely, computer hardware; surveying ap-
`paratus and instruments; electrical inductors; thermometers, not for medical pur-
`poses; hygrometers; air analysis apparatus; water meters; gas meters; lasers,
`
`

`

`not for medical purposes; diagnostic apparatus, not for medical purposes,
`namely, diagnostic apparatus for testing food; optical apparatus and instru-
`ments, namely, optical character recognition apparatus, optical inspection ap-
`paratus; scientific and technical apparatus, namely, optical mirrors; cables, elec-
`tric; wires, electric; integrated circuit chips; light-emitting diodes (LEDs);
`switches, electric; electric plugs; video screens; touch screens; amplifiers; re-
`mote controls, namely, remote controls for televisions; electrical adapters; power
`adapters; temperature sensors; climate control digital thermostats; ultrasonic
`sensors; x-ray apparatus not for medical purposes; electric theft alarms; electric
`door bells; locks, electric; fire alarms; smoke detectors; electronic access control
`systems for interlocking doors; magnifying peepholes for doors; eyeglasses; bat-
`teries, electric; chargers for electric batteries; electrostatic copying machines;
`mobile phones; radios; smartwatches; smartglasses; downloadable computer
`application software for cellular phones, namely, software for database manage-
`ment, use in electronic storage of data; face recognition device comprised of
`computer hardware and downloadable operating software therefor; data cables;
`rechargeable batteries; electronic pens; network routers; light-emitting diode
`(LED) televisions; digital signal processors; in-car telephone handset cradles;
`apparatus for the recording, transmission, amplification and reproduction of
`sound; infrared detectors; electricity meters; data processing equipment,
`namely, couplers; electric sockets; AC/DC power supplies; converters for elec-
`tric plugs; measurement apparatus, namely, electric sensors, other than for
`medical use
`Class 011. First use: First Use: None First Use In Commerce: None
`Lamps; electric cooking utensils, namely, cooking ovens, griddles, induction
`cooktops, induction ranges, rice cookers; cooking apparatus and installations,
`namely, electric cooking pots, cooking stoves; electric cooking grills; gas burn-
`ers; coffee machines, electric; kettles, electric; microwave ovens; bread-making
`machines; coffee percolators, electric; coffee roasters; refrigerators; freezers;
`air-conditioning installations; air-conditioning apparatus; air purifying apparatus
`and machines; extractor hoods for kitchens; dehumidifiers for household pur-
`poses; electric fans for personal use; fabric steamers; heating apparatus,
`namely, heating boilers, heat generators; heating installations; water heaters for
`baths; electric hand drying apparatus for washrooms; toilets, namely, water-
`closets; toilet seats; water purifying apparatus and machines; radiators, electric;
`food steamers, electric; pressure cookers, electric; wine cellars, electric; laundry
`dryers, electric; humidifiers; electrical air driers; electric bath water heaters; wa-
`ter dispensers, namely, water coolers; sterilized cupboard, namely, sterilizers
`
`U.S. registration
`no.
`
`5947030
`
`Register
`
`Principal
`
`Registration date
`
`12/31/2019
`
`Application date
`
`04/25/2019
`
`Foreign priority
`date
`
`11/23/2018
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`TCL
`
`NONE
`
`Class 007. First use: First Use: None First Use In Commerce: None
`Electric juice extractors; dishwashers; kitchen machines, namely, electric mix-
`ers; electric food blenders for household purposes; electric milking machines for
`household use, namely, soybean milk makers; coffee grinders, other than hand-
`operated; dry-cleaning machines; washing machines for laundry; wringing ma-
`chines for laundry; electric motors for refrigerators; compressed air machines;
`compressors for refrigerators; door openers, electric; electric window openers;
`machines and apparatus for cleaning, namely, electric floor cleaning machines;
`
`

`

`vacuum cleaners; electrically operated curtain drawing devices; electric openers
`for rolling doors; 3D printers; vending machines
`Class 009. First use: First Use: None First Use In Commerce: None
`Data processing apparatus; computers; computer programs being downloadable
`software used on television sets for playing feature films, television programs,
`videos, audio, games and presenting pictures, text and other digital media; com-
`puter peripheral devices; monitors being computer hardware; tablet computers;
`blank USB flash drives; computer hardware; smartwatches; smartglasses; inter-
`active touch screen terminals; humanoid robots with artificial intelligence; down-
`loadable mobile phone applications used for displaying feature films, television
`programs, videos, audio, games and presenting pictures, text and other digital
`media; network cards; network servers; computer keyboards; computer mouse
`being a computer peripheral device; electronic agendas; face recognition equip-
`ment consisting of computer hardware and software therefor; apparatus for
`checking hand lines being fingerprint scanners; photocopiers; facsimile ma-
`chines; electronic notice boards; telephone apparatus; video telephones; cellular
`phones; electric navigational instruments; network communication equipment,
`namely, computer hardware; network routers; intercoms; wearable activity track-
`ers; television apparatus namely, TV sets; cabinets for loudspeakers; horns for
`loudspeakers; megaphones; audio mixers; monitoring apparatus, other than for
`medical purposes, namely, alarm monitoring systems; audio- and video-re-
`ceivers; sound transmitting apparatus; sound recording apparatus; sound repro-
`duction apparatus; camcorders; portable media players; electronic book readers;
`electronic LCD advertisement display unit with multi-networking (TCP/IP) capab-
`ilities; earphones; headphones; microphones; virtual reality headsets; tacho-
`graphs in the nature of electronic measuring device that displays a manual
`wheelchair user's propulsion activity, namely, number of pushes, distance
`traveled, speed, and cadence; set-top boxes; security surveillance robots; wear-
`able video display monitors; photographic cameras; video projectors; audiovisu-
`al teaching apparatus, namely, computer hardware; surveying instruments; elec-
`tricity meters; infrared detectors; materials for electricity mains being wires and
`cables; chips being integrated circuits; light-emitting diodes (LED); electric
`switches; electric plugs, sockets and other contacts being electric connections;
`voltage stabilizing power supply; video screens; fluorescent screens; household
`remote controllers for radios, televisions, stereos but excluding gaming apparat-
`us; power distribution boxes; power adapters; electric theft prevention installa-
`tions comprised of burglar alarms, computer hardware for IP video surveillance;
`electric door bells; locks, electric; electronic access control systems for interlock-
`ing doors; biometric fingerprint door locks; digital door locks; eyeglasses; batter-
`ies, electric; portable power source being rechargeable batteries
`Class 011. First use: First Use: None First Use In Commerce: None
`Lamps; cooking utensils, namely, electric cooking ovens and griddles; cooking
`apparatus and installations, namely, electric cooking pots and stoves for house-
`hold purposes; barbecue grills being cooking appliances; gas burners; electric
`pressure cookers; electric coffee machines; electric kettles; microwave ovens
`being cooking apparatus; bread-making machines; electric coffee percolators;
`coffee roasters; electric food steamers; refrigerators; freezers; electric wine cel-
`lars; air-conditioning installations; air-conditioning apparatus; air purifying appar-
`atus and machines; drying apparatus and installations, namely, wet-cleaning
`drying machines; extractor hoods for kitchens; dehumidifiers for household pur-
`poses; electric fans for personal use; laundry dryers, electric; fabric steamers;
`humidifiers; electrical hair driers; apparatus for heating purposes, namely, elec-
`tric heating fans and heating furnaces; heating installations; bathroom heaters;
`electric bathroom heaters; toilets being water-closets; toilet seats; water dis-
`pensers in the nature of water fountains; water purifying apparatus and ma-
`chines; sterilized cupboard in the nature of sterilizers not for medical purposes;
`electric radiators
`
`

`

`U.S. registration
`no.
`
`4452514
`
`Register
`
`Principal
`
`Registration date
`
`12/17/2013
`
`Application date
`
`01/04/2013
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`TCL
`
`The mark consists of stylized wording "TCL".
`
`Class 021. First use: First Use: Jan 4, 2013 First Use In Commerce: Jan 4, 2013
`Cups; mugs; drinking glasses; dishes; coasters not of paper and not being table
`linen [ ; glass, porcelain and earthenware figurines ]
`Class 025. First use: First Use: Jan 4, 2013 First Use In Commerce: Jan 4, 2013
`Clothing, namely, [ shirts, ] t-shirts, sweatshirts, [ golf shirts, jogging outfits,
`trousers, jeans, shorts, tank tops, rainwear, cloth bibs, skirts, blouses, dresses,
`suspenders, sweaters, jackets, bomber jackets, ] coats, [ raincoats, snow suits,
`ties, robes, ] hats, caps [, sun visors, belt, scarves, sleepwear, pajamas, lingerie,
`underwear, boots, shoes, sneakers, sandals, booties, slippers, swimwear and
`masquerade costumes comprised of body suits and face mask ]
`Class 041. First use: First Use: Jan 4, 2013 First Use In Commerce: Jan 4, 2013
`Entertainment services, namely, organization and conducting exhibitions in the
`field of motion picture films and movies
`
`U.S. registration
`no.
`
`4544412
`
`Register
`
`Principal
`
`Registration date
`
`06/03/2014
`
`Application date
`
`01/09/2013
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`TCL
`
`The mark consists of stylized wording "TCL".
`
`Class 016. First use: First Use: Jan 11, 2013 First Use In Commerce: Jan 11,
`2013
`Coloring books; children's activity books; envelopes; notebooks, diaries; erasers;
`crayons; colored pencils; chalk and chalkboards for school and home use;
`decals; heat transfer paper; mounted and unmounted photographs; book covers;
`bookmarkers; calendars; gift wrapping paper, paper party favors and paper party
`decorations, namely, paper napkins, paper doilies, paper place mats, crepe pa-
`per, paper hats, printed invitations, paper table cloths, and paper cake decora-
`tions; printed patterns for costumes, pajamas, sweatshirts and t-shirts
`
`U.S. registration
`no.
`
`4757423
`
`Register
`
`Principal
`
`Registration date
`
`06/16/2015
`
`Application date
`
`05/21/2014
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`TCL
`
`The mark consists of stylized word "TCL".
`
`

`

`Goods/services
`
`Class 009. First use: First Use: Jun 10, 1986 First Use In Commerce: Jun 10,
`1986
`Television receivers; amplifiers; audio speakers; personal stereos; telephone
`sets; mobile telephones; tablet personal computer; computer peripherals; down-
`loadable electronic publications, namely, books, and newsletters, reports, bro-
`chures, pamphlets, journals, magazines in the field of entertainment and con-
`sumer goods and services, accessible via mobile phone applications; recorded
`computer software for use in database management, use as a spreadsheet,
`word processing; downloadable computer game and music program; computer
`application programs for downloading games and music to mobile phones
`
`U.S. registration
`no.
`
`4717469
`
`Register
`
`Principal
`
`Registration date
`
`04/07/2015
`
`Application date
`
`11/22/2013
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`TCL
`
`The mark consists of stylized word "TCL".
`
`Class 038. First use: First Use: Jun 7, 1997 First Use In Commerce: Jun 7, 1997
`Television broadcasting; cellular telephone communication; communications by
`computer terminals; satellite transmission; telephone communication services;
`communication by Fiber Optic Network; electronic bulletin board services;
`providing telecommunication connections to a global computer network; provid-
`ing user access to a global computer network; voice mail services; teleconferen-
`cing services; message sending and receiving services; providing access to
`databases
`Class 042. First use: First Use: Jun 7, 1997 First Use In Commerce: Jun 7, 1997
`Research and development services for electronic products; industrial design;
`computer software design; maintenance of computer software; conversion of
`data or documents from physical to electronic media; technical research for
`electronic products; packaging design; quality control for others; product re-
`search; [ design of interior decor; dress designing; ] consultancy for design and
`development for computer hardware; creating and maintaining websites for oth-
`ers; computer programming; computer virus protection services
`
`Attachments
`
`20230524 Notice of Opposition re TCLHQ.pdf(102663 bytes )
`
`Signature
`
`Name
`
`Date
`
`/David Silver/
`
`David Silver
`
`05/24/2023
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`TCL Technology Group Corporation, a
`Chinese Corporation,
`
`
`
`
`
`
`
`Opposer,
`
`Opposition No. ______
`
`Application No. 90642679
`
`vs.
`
`
`
`TACTICAL COMBAT LEAGUE LLC, a
`Delaware Limited Liability Company,
`
`
`
`
`
`
`Applicant.
`
`PARTIAL NOTICE OF OPPOSITION
`
`Opposer, TCL Technology Group Corporation (“Opposer”), hereby requests the
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Trademark Trial and Appeal Board deny registration of United States Trademark Application No.
`
`90642679, filed by TACTICAL COMBAT LEAGUE LLC (“Applicant”) for the word mark
`
`“TCLHQ” (“Applicant’s Mark”) in Classes 009, 041, and 042. Opposer seeks the Opposition of
`
`Applicant’s Mark pursuant to the provisions of 15 U.S.C. § 1063.
`
`ENTITLEMENT TO A STATUTORY CAUSE OF ACTION
`
`1.
`
`Opposer is the owner of U.S. Trademark Registration No. 3298181 and International
`
`Registration No. 0871353, U.S. Trademark Registration No. 6172023 and International
`
`Registration No. 1512532, U.S. Trademark Registration No. 5947030 and International
`
`Registration No. 1478084, U.S. Trademark Registration No. 4452514, U.S. Trademark
`
`Registration No. 4544412, U.S. Trademark Registration No. 4757423, U.S. Trademark
`
`Registration No. 4717469, all for the mark “TCL”, which all were registered prior to Applicant’s
`
`filing date for Applicant’s Mark.
`
`2.
`
`In total, Opposer is the owner of forty-six active United States trademark registrations and
`
`applications that are entirely comprised of or begin with “TCL” (“Opposer’s Marks”).
`
`

`

`3.
`
`4.
`
`Applicant’s Mark is a standard character mark beginning with “TCL”.
`
`Applicant filed the application for Applicant’s Mark on April 13, 2021 under a 1(b) intent-
`
`to-use basis including goods and services in International Classes 009, 041, and 042, among others.
`
`5.
`
`Opposer’s Marks include goods and services in International Classes 009, 041, 042, among
`
`others.
`
`6.
`
`7.
`
`Opposer’s Marks all have priority over Applicant’s Mark.
`
`There is a likelihood of confusion that Applicant’s Mark will be confused with or
`
`associated with Opposer’s Marks or authorized by Opposer, which is not the case. Opposer
`
`therefore has a real interest in seeking the opposition of Applicant’s Mark and standing to bring
`
`this action.
`
`BACKGROUND FACTS
`
`8.
`
`Applicant filed its trademark application for Applicant’s Mark on April 13, 2021 under a
`
`1(b) intent-to-use filing basis.
`
`9.
`
`Applicant’s Mark is for various goods and services, including but not limited to the goods
`
`and services “Downloadable computer programs for video and computer games; downloadable
`
`mobile application computer programs for video and computer games; downloadable posters;
`
`downloadable collectible trading cards; downloadable electronic publications in the nature of event
`
`programs in the field of combat sports” in International Class 009; “Entertainment services,
`
`namely, organizing and conducting entertainment exhibitions, tournaments and competitions in
`
`the field of combat sports; education services relating to the professional combat industry, namely,
`
`providing classes, seminars and workshops in the field of combat sports; organizing and
`
`conducting sporting and cultural activities in the professional combat industry, namely,
`
`competitions and tournaments; entertainment services, namely, providing online video games;
`
`

`

`entertainment services in the nature of fantasy sports leagues; Entertainment services in the nature
`
`of conducting, organizing, and arranging fantasy sports competitions; Online gaming services in
`
`the nature of computer game tournaments; Gaming services in the nature of conducting online
`
`computer game tournaments; Providing on-line computer games; providing online computer sports
`
`gaming in the nature of providing online computer games, organizing, arranging, and conducting
`
`sports competitions; Providing online non-downloadable game software; Entertainment services,
`
`namely, providing on-line computer games; Providing a web-based system and on-line portal for
`
`customers to participate in online gaming, operation and coordination of game tournaments,
`
`leagues and tours for recreational computer game playing purposes; Entertainment services,
`
`namely, providing online multiplayer video games” in International Class 041; and “Video game
`
`development services” in International Class 042.
`
`10. Opposer’s Marks include, but are not limited to, “downloadable computer software
`
`applications, namely, for mobile phones, portable media players, handheld computers, televisions,
`
`namely, software for use in database management, use in electronic storage of data, controlling or
`
`operating televisions and mobile phones; computer programs being downloadable software used
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`on television sets for playing feature films, television programs, videos, audio, games and
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`presenting pictures, text and other digital media; downloadable mobile phone applications used
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`for displaying feature films, television programs, videos, audio, games and presenting pictures,
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`text and other digital media” in International Class 009; “Entertainment services, namely,
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`organization and conducting exhibitions in the field of motion picture films and movies” in
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`International Class 041; and “Research and development services for electronic products” in
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`International Class 042.
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`

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`11. Applicant’s goods and services in Applicant’s Mark are directly overlapping or
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`substantially related to Opposer’s goods and services in Opposer’s Marks.
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`12. Opposer has been using Opposer’s Marks using “TCL” as a source identifier for Opposer
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`since approximately 1985.
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`13. Opposer is a large, well-established, and well-known company in the electronics industry.
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`14. Opposer has its own webpage, which identifies a number of prominent partners, including
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`prominent sports and video game franchises, including but not limited to the NFL, the NBA’s
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`Minnesota Timberwolves, the NHL’s Anaheim Ducks, the Call of Duty video game franchise, and
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`the world-famous TCL Chinese Theatre in Hollywood.
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`15. Opposer has its own Forbes profile and its own Amazon store, further showing Opposer’s
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`prominence and availability for public recognition.
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`16. Consumers will see Opposer’s Marks and recognize “TCL” as belonging to Opposer and
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`Opposer’s family of “TCL” marks.
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`17. Many of Opposer’s Marks were already in use, registered, and/or applied for well before
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`April 13, 2021, giving Opposer priority rights over Applicant’s Mark.
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`18. Applicant’s Mark uses “TCL” in the beginning of Applicant’s Mark, which is identical to
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`the “TCL” in Opposer’s Marks that Opposer has been using for decades.
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`19. Applicant’s goods and services and Opposer’s goods and services would travel through the
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`same trade channels and target the same consumers.
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`GROUND I
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`LIKELIHOOD OF CONFUSION
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`Opposer hereby incorporates by reference the allegations of Paragraphs 1-19 hereof as is fully set
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`forth herein.
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`

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`20.
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`Opposer is the owner of Opposer’s Marks that solely or predominantly use “TCL”, which
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`were filed and/or registered prior the filing date of Applicant’s Mark.
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`21.
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`Opposer’s goods and services and Applicant’s goods and services are directly overlapping
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`and substantially similar as both provide downloadable computer programs, entertainment
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`services, and development services for electronic products.
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`22.
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`Opposer’s goods and services and Applicant’s goods and services are intended to travel
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`through the same trade channels, including but not limited to online marketing and sales.
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`23.
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`Opposer has become a leading company in the electronics industry that consumers in the
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`United States will associate “TCL” goods and services with Opposer.
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`24.
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`Consumers have come to recognize “TCL” as belonging exclusively to Opposer as the
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`source of the goods and services.
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`25.
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`Applicant’s use of “TCL” in the beginning of Applicant’s Mark is identical to the “TCL”
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`as used by Opposer in Opposer’s Marks.
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`26.
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`Applicant’s Mark is likely to cause confusion, mistake, and/or deceive consumers
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`concerning an affiliation, connection, association, or sponsorship with the source of goods and
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`services.
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`27.
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`Registration of Applicant’s Mark on the Principal Register would be inconsistent with
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`Opposer’s rights in Opposer’s Marks and should therefore be denied registration.
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`GROUND II
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`NO BONA FIDE INTENT TO USE
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`Opposer hereby incorporates by reference the allegations of Paragraphs 1-27 hereof as is fully set
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`forth herein.
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`

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`28.
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`A verified statement that the applicant has a bona fide intention to use the mark in
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`commerce must be included in U.S. trademark applications that are filed under §1(b) of the
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`Trademark Act. 15 U.S.C. §1051(b); TMEP §804.02.
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`29.
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`On information and belief, Applicant did not have a bona fide intention to use
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`Applicant’s Mark in U.S. commerce for all of the goods and services identified in the
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`Applicant’s application for Applicant’s Mark when the application was filed.
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`30.
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`Applicant identifies a wide range of goods and services, including downloadable
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`software, posters, and trading cards, entertainment services, and video game development
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`services of which Applicant did not have the bona fide intent to use or provide all of the goods
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`and services for others when filing the application for Applicant’s Mark.
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`31.
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`On information and belief, though Applicant knew a bona fide intent to use
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`Applicant’s Mark in U.S. commerce for all of the goods and services identified in the
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`application at the time the application was filed was required, Applicant did not have a bona
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`fide intent to so use Applicant’s Mark when the Applications were filed.
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`32.
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`As Opposer will be damaged by the registration of Applicant’s Mark. Opposer prays that
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`Applicant’s Mark be denied registration.
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`GROUND III
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`DILUTION
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`Opposer hereby incorporates by reference the allegations of Paragraphs 1-32 hereof as is fully set
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`forth herein.
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`33.
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`Opposer’s Marks have become famous by virtue of: the duration and extent of the use of
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`the marks by Opposer in connection with the goods and services with which the marks are used;
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`the duration and extent of publicity of the marks; the geographical extent of the use of the marks;
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`

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`the channels of trade for the goods or services which the marks are used; the degree of recognition
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`of the marks in the trading areas and c