ESTTA Tracking number:
`
`Filing date:
`
`ESTTA1338250
`02/05/2024
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer information
`
`Name
`Granted to date
`of previous ex-
`tension
`Address
`
`Attorney informa-
`tion
`
`Docket no.
`
`J.D. Power
`02/17/2024
`
`320 E. BIG BEAVER ROAD
`SUITE 500
`TROY, MI 48083
`UNITED STATES
`
`KOURTNEY A. MULCAHY
`AKERMAN LLP
`777 SOUTH FLAGLER DRIVE
`SUITE 1100 WEST TOWER
`WEST PALM BEACH, FL 33401
`UNITED STATES
`Primary email: masterdocketlit@akerman.com
`Secondary email(s): kourtney.mulcahy@akerman.com,
`stephanie.cason@akerman.com
`312-870-8075
`13071-0204
`
`Applicant information
`
`Application no.
`Opposition filing
`date
`Applicant
`
`97788994
`02/05/2024
`
`Publication date
`Opposition period
`ends
`Shenzhen Oulian Technology Co., Ltd.
`A702, ZHUOYUEMEILIN CENTRAL PLAZA (SOUTH
`ZONE), NO.126 ZHONGKANG RD, FUTIAN DIST,
`SHENZHEN, GUANGDONG, 518000
`CHINA
`Goods/services affected by opposition
`
`12/19/2023
`02/17/2024
`
`Class 009. First Use: Jan 18, 2023 First Use In Commerce: Jan 18, 2023
`All goods and services in the class are opposed, namely: Batteries; Adapter plugs; Battery boxes;
`Battery charge devices; Battery chargers for mobile phones; Battery chargers for use with vehicle
`batteries, mobile phones; Inverters for power supply; Solar-powered battery chargers; Uninterruptible
`electrical power supplies; USB charging ports; Voltage stabilizing power supply
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`Deceptiveness
`
`Trademark Act Section 2(d)
`Trademark Act Section 2(a)
`
`

`

`Other
`
`Section 2(f) dilution
`
`Marks cited by opposer as basis for opposition
`
`U.S. registration
`no.
`Register
`Registration date
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`1619003
`
`Application date
`
`10/06/1989
`
`Principal
`10/23/1990
`
`Foreign priority
`date
`J.D. POWER AND ASSOCIATES
`
`NONE
`
`NONE
`
`Class 035. First use: First Use: Feb 7, 1969 First Use In Commerce: Feb 7,
`1969
`MARKET RESEARCH SERVICES
`
`U.S. registration
`no.
`Register
`Registration date
`
`2486839
`
`Principal
`09/11/2001
`
`Application date
`
`11/05/1999
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`J.D. POWER
`
`NONE
`
`Class 009. First use: First Use: Jun 1995 First Use In Commerce: Jun 1995
`[COMPUTER SOFTWARE IN THE FIELD OF MARKETING RESEARCH,
`NAMELY SOFTWARE FOR USE IN ANALYZING, REPORTING AND TRACK-
`ING INFORMATION RECEIVED FROM CONSUMERS WITH RESPECT TO A
`MANUFACTURER'S OR SERVICE PROVIDER'S PRODUCT QUALITY AND
`SALES AND CUSTOMER SATISFACTION]
`Class 035. First use: First Use: Jun 1995 First Use In Commerce: Jun 1995
`MARKET RESEARCH SERVICES; AND MARKET RESEARCH SERVICES VIA
`A GLOBAL COMPUTER NETWORK
`Class 041. First use: First Use: Jun 1995 First Use In Commerce: Jun 1995
`global computer network website in the field of market research
`
`U.S. registration
`no.
`Register
`Registration date
`
`6921891
`
`Principal
`12/13/2022
`
`Application date
`
`10/19/2021
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`J.D. POWER
`
`NONE
`
`Class 009. First use: First Use: 1993 First Use In Commerce: 1993
`Downloadable computer software in the field of marketing research and data
`analytics, namely, software for use in analyzing, reporting and tracking informa-
`tion received from consumers with respect to a manufacturer's or product pro-
`
`

`

`vider's or service provider's product or service quality and sales and customer
`satisfaction; Downloadable mobile applications featuring market research, busi-
`ness information, business survey data and statistics, data analytics, bench-
`marks, business opinions and real-time data for business purposes; Download-
`able mobile applications featuring artificial intelligence that allows consumers to
`complete the entire product purchase online
`Class 016. First use: First Use: Dec 1968 First Use In Commerce: Dec 1968
`Printed reports and guides featuring market research and business information
`Class 035. First use: First Use: Feb 1969 First Use In Commerce: Feb 1969
`Market research and business information services; Conducting surveys regard-
`ing opinions, business information, and market research; Analyzing and compil-
`ing business data from surveys regarding business opinions, business informa-
`tion, and market research; Analysis of business survey data and statistics;
`Providing business data analytics, market research, compilation
`of statistics, business information, and analyses of business data for busi-
`ness purposes; providing benchmarks in the nature of compilation and ana-
`lyses of business data to measure business performance for business pur-
`poses; compilation of real-time data for business purposes; Providing a
`website on global computer networks featuring information in the fields of busi-
`ness research, market research services, business data and statistics, market-
`ing or demographic data and digital retailing; Business consulting ser-
`vices;Â Organizing, promoting and conducting exhibitions, tradeshows and
`events for business, commercial or advertising purposes; Providing commercial
`information and advice for consumers in the choice of products and services; In-
`fomediary services, namely, providing buyers with information about sellers,
`goods, and/or services in order to facilitate transactions between buyers and
`sellers
`Class 036. First use: First Use: 1993 First Use In Commerce: 1993
`Vehicle valuation services; Providing information related to the automotive deal-
`ership industry, namely, financing and insurance in the field of automotive deal-
`erships; Providing insurance information and consultancy; Insurance underwrit-
`ing consultation; Financial evaluation for insurance purposes
`Class 041. First use: First Use: Jan 1984 First Use In Commerce: Jan 1984
`Providing recognition and incentives by way of awards to demonstrate excel-
`lence in the field of customer satisfaction or product quality;Â providing awards
`programs for businesses that achieve excellence in the fields of customer satis-
`faction or product quality
`Class 042. First use: First Use: 1993 First Use In Commerce: 1993
`Providing on-line non-downloadable computer software for accessing data ana-
`lytics, market research, statistics, business information, analyses, benchmarks,
`and real-time data; Software as a service (SAAS) services for accessing data
`analytics, market research, statistics, business information, analyses, bench-
`marks, and real-time data; Platform as a service (PAAS) featuring computer
`software platforms for accessing data analytics, market research, statistics, busi-
`ness information, analyses, benchmarks, and real-time data; Software as a ser-
`vice (SAAS) services featuring artificial intelligence that allows consumers to
`complete the entire product purchase online
`
`U.S. registration
`no.
`Register
`Registration date
`
`Word mark
`Design mark
`
`6309637
`
`Application date
`
`04/25/2019
`
`Principal
`03/30/2021
`
`Foreign priority
`date
`J.D. POWER PASSENGER VIEW
`
`NONE
`
`

`

`Description of
`mark
`Goods/services
`
`NONE
`
`Class 035. First use: First Use: Feb 2019 First Use In Commerce: Feb 2019
`Market research and business information services; conducting surveys regard-
`ing opinions, business information, and market research; Analyzing and compil-
`ing business data from surveys regarding business opinions, business informa-
`tion, and market research; Analysis of business survey data and statistics;
`Providing data analytics, market research, statistics, business information, ana-
`lyses, benchmarks, and real-time data for business purposes
`Class 042. First use: First Use: Feb 2019 First Use In Commerce: Feb 2019
`Providing on-line non-downloadable computer software for accessing data ana-
`lytics, market research, statistics, business information, analyses, benchmarks,
`and real-time data; providing a website featuring on-line non-downloadable com-
`puter software that enables the user to access data analytics, market research,
`statistics, business information, analyses, benchmarks, and real-time data for
`business purposes
`
`U.S. registration
`no.
`Register
`Registration date
`
`6505366
`
`Principal
`10/05/2021
`
`Application date
`
`07/24/2020
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`J.D. POWER SMARTDIGITAL
`
`NONE
`
`Class 042. First use: First Use: Jul 22, 2020 First Use In Commerce: Jul 22,
`2020
`Providing on-line non-downloadable computer software for the automotive in-
`dustry for automotive data analysis, conducting market research, displaying stat-
`istics, providing business information that features data analytics, market re-
`search, statistics, business information, analyses, benchmarks, real-time data,
`vehicle and equipment pricing information, sales data, warranty specifications,
`leasing information, and management and tracking of vehicle history; Software
`as a service (SAAS) services featuring software for the automotive industry for
`automotive data analysis, conducting market research, displaying statistics,
`providing business information that features data analytics, market research,
`statistics, business information, analyses, benchmarks, real-time data, vehicle
`and equipment pricing information, sales data, warranty specifications, leasing
`information, and management and tracking of vehicle history; Platform as a ser-
`vice (PAAS) featuring computer software platforms for the automotive industry
`for automotive data analysis, conducting market research, displaying statistics,
`providing business information that features data analytics, market research,
`statistics, business information, analyses, benchmarks, real-time data, vehicle
`and equipment pricing information, sales data, warranty specifications, leasing
`information, and management and tracking of vehicle history
`
`U.S. registration
`no.
`Register
`Registration date
`
`2389394
`
`Principal
`09/26/2000
`
`Word mark
`Design mark
`
`JDPOWER.COM
`
`Application date
`
`03/12/1999
`
`Foreign priority
`date
`
`NONE
`
`

`

`Description of
`mark
`Goods/services
`
`U.S. registration
`no.
`Register
`Registration date
`
`Word mark
`
`Design mark
`Description of
`mark
`Goods/services
`
`U.S. registration
`no.
`Register
`Registration date
`
`Word mark
`
`Design mark
`Description of
`mark
`Goods/services
`
`NONE
`
`Class 035. First use: First Use: Dec 29, 1997 First Use In Commerce: Dec 29,
`1997
`providing a website on global computer networks featuring information in the
`fields of business research and market research services, relating to information
`about automobiles, tires, airlines, healthcare, phone services and credit cards;
`providing a website on global computer networks featuring information in the
`fields of commercial information, business information, and marketing or demo-
`graphic data
`
`3367957
`
`Application date
`
`02/27/2007
`
`Principal
`01/15/2008
`
`Foreign priority
`date
`J.D. POWER AND ASSOCIATES CUSTOMER SATISFACTION SINCE 1968
`THE VOICE OF THE CUSTOMER
`
`NONE
`
`NONE
`
`Class 035. First use: First Use: Aug 14, 2001 First Use In Commerce: Aug 14,
`2001
`Conducting business and market research surveys
`
`3367958
`
`Application date
`
`02/27/2007
`
`Principal
`01/15/2008
`
`Foreign priority
`date
`J.D. POWER AND ASSOCIATES 1 CUSTOMER SATISFACTION SINCE 1968
`THE VOICE OF THE CUSTOMER
`
`NONE
`
`NONE
`
`Class 035. First use: First Use: Feb 25, 2002 First Use In Commerce: Feb 25,
`2002
`Conducting business and market research surveys
`
`Attachments
`
`Notice of Opposition to YD POWER Serial No. 97788994.pdf(475226 bytes )
`
`Signature
`Name
`Date
`
`/Kourtney A. Mulcahy/
`KOURTNEY A. MULCAHY
`02/05/2024
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of
`Trademark Application Serial No. 97788994
`Published: December 19, 2023
`Mark: YDPOWER
`
`J.D. POWER
`
`
`Opposer,
`
`vs.
`
`SHENZHEN OULIAN TECHNOLOGY CO.,
`LTD
`
`
`
`
`
`
`
`
`
`
`
`OPPOSITION NO.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Applicant.
`
`
`Commissioner of Trademarks
`Post Office Box 1451
`Alexandria, VA 22313-1451
`
`
`Opposer, J.D. POWER (“Opposer”), is a Delaware corporation with its principal place of
`business located in Troy, Michigan and believes it will be damaged by the registration of the mark
`shown in Application Serial No. 97788994 filed by SHENZHEN OULIAN TECHNOLOGY CO.,
`LTD. with its principal place of business currently located in Shenzhen, Guangdong, China
`(“Applicant”).
`
`Opposer hereby opposes the application, alleging as grounds for the opposition as follows:
`
`Opposer is a global marketing information services company founded in 1968.
`1.
`Opposer conducts surveys of customer satisfaction, product quality, and buyer behavior for
`industries ranging from automotive to technology, electronics, utilities and home improvement. Its
`service offerings include industry-wide syndicated studies, proprietary research, consulting,
`training, and data analytics.
`
`Companies that have used Opposer’s surveys to measure customer satisfaction
`2.
`range from Ford, Amazon.com, Samsung, Ace Hardware, GE Appliances and Dyson (to name a
`few). In that regard, Opposer has been using the mark J.D. POWER AND ASSOCIATES in
`connection with such market research services since February 7, 1969 and obtained U.S. Reg. No.
`1619003 on October 23, 1990 for said services.
`
`Opposer has used the mark J.D. POWER for market research services; market
`3.
`research services via a global computer network; and a global computer network website in the
`field of market research since June 1995 and obtained U.S. Reg. No. 2486839 on September 11,
`2001 for said services.
`
`
`
`

`

`
`
`Opposer also uses the mark J.D. POWER for downloadable computer software in
`4.
`the field of marketing research and data analytics, namely, software for use in analyzing, reporting
`and tracking information received from consumers with respect to a manufacturer’s or product
`provider’s or service provider’s product or service quality and sales and customer satisfaction in
`Class 9; printed reports and guides featuring market research and business information in Class
`16; providing commercial information and advice for consumers in the choice of products and
`services; Infomediary services, namely, providing buyers with information about sellers, goods,
`and/or services in order to facilitate transactions between buyers and sellers in Class 35; vehicle
`valuation services in Class 36; providing recognition and incentives by way of awards to
`demonstrate excellence in the field of customer satisfaction or product quality in Class 41; and
`Software as a service (SAAS) services featuring artificial intelligence that allows consumers to
`complete the entire product purchase online in Class 42 (among other things). Opposer has used
`the aforementioned mark in connection with the Class 9 goods since 1993; the Class 16 goods
`since 1968; the Class 35 services since 1969; the Class 36 services since 1993; the Class 41
`services since 1984; and the Class 42 services since 1993. Opposer obtained U.S. Reg. No.
`6921891 on December 13, 2022 for said goods and services.
`
`Opposer has used the mark J.D. POWER PASSENGER VIEW for “market
`5.
`research and business information services; conducting surveys regarding opinions, business
`information, and market research; Analyzing and compiling business data from surveys regarding
`business opinions, business information, and market research; Analysis of business survey data
`and statistics; Providing data analytics, market research, statistics, business information, analyses,
`benchmarks, and real-time data for business purposes” and “providing on-line non-downloadable
`computer software for accessing data analytics, market research, statistics, business information,
`analyses, benchmarks, and real-time data; providing a website featuring on-line non-downloadable
`computer software that enables the user to access data analytics, market research, statistics,
`business information, analyses, benchmarks, and real-time data for business purposes” since
`February 2019 and obtained U.S. Reg. No. 6309637 on March 30, 2021.
`
`Opposer has used the mark J.D. POWER SMARTDIGITAL for “Providing on-line
`6.
`non-downloadable computer software for the automotive industry for automotive data analysis,
`conducting market research, displaying statistics, providing business information that features data
`analytics, market research, statistics, business information, analyses, benchmarks, real-time data,
`vehicle and equipment pricing information, sales data, warranty specifications, leasing
`information, and management and tracking of vehicle history; Software as a service (SAAS)
`services featuring software for the automotive industry for automotive data analysis, conducting
`market research, displaying statistics, providing business information that features data analytics,
`market research, statistics, business information, analyses, benchmarks, real-time data, vehicle and
`equipment pricing information, sales data, warranty specifications, leasing information, and
`management and tracking of vehicle history; Platform as a service (PAAS) featuring computer
`software platforms for the automotive industry for automotive data analysis, conducting market
`research, displaying statistics, providing business information that features data analytics, market
`research, statistics, business information, analyses, benchmarks, real-time data, vehicle and
`equipment pricing information, sales data, warranty specifications, leasing information, and
`management and tracking of vehicle history” since July 22, 2020 and obtained U.S. Reg. No.
`6505366 on October 5, 2021.
`
`
`
`2
`
`

`

`
`
`Further, Opposer advertises and promotes its services through various print and
`7.
`electronic media, including its website located at http://www.jdpower.com/ and obtained U.S. Reg.
`No. 2389394 on September 26, 2000 for the service mark JDPOWER.COM in connection with
`“providing a website on global computer networks featuring information in the fields of business
`research and market research services, relating to information about automobiles, tires, airlines,
`healthcare, phone services and credit cards; providing a website on global computer networks
`featuring information in the fields of commercial information, business information, and marketing
`or demographic data.” Opposer has been using the mark JDPOWER.COM for these services since
`December 29, 1997.
`
` (J.D. POWER AND
`In addition, Opposer has used the mark
`8.
`ASSOCIATES CUSTOMER SATISFACTION SINCE 1968 THE VOICE OF THE
`
` (J.D. POWER AND
`CONSUMER) since August 14, 2001 and the mark
`ASSOCIATES 1 CUSTOMER SATISFACTION SINCE 1968 THE VOICE OF THE
`CUSTOMER) since February 25, 2002 in relation to its business and market research surveys.
`Opposer obtained U.S. Reg. Nos. 3367957 and 3367958 respectively for these marks on January
`15, 2008. Each of these marks is a depiction of a trophy with the J.D. Power Circle Ratings emblem
`contained therein.
`
`The J.D. Power Circle Rating relates to a consumer satisfaction award that is given
`9.
`by the Opposer to a company that has products and services ranked highest in the J.D. Power
`Consumer Studies. The J.D. Power Circle Ratings are based upon opinions of consumers from a
`variety of industries who have used or owned the product or service being rated. Such industries
`include automotive, technology, electronics, utilities, homes, and telecommunications, to name a
`few.
`
`Each of the aforementioned trade and service marks establish that Opposer has
`10.
`obtained a family of J.D. POWER Marks and uses each of them to identify its services and
`distinguish them from others. Opposer has invested substantial time, effort and financial resources
`in the promotion of its trade and service marks. Through its longstanding use of its J.D. POWER
`
`
`
`3
`
`

`

`
`
`Marks and substantial promotion of said marks, Opposer has become a multi-billion dollar
`company. In that regard, Opposer has established a considerable reputation, fame and goodwill in
`the J.D. POWER Marks within its field and with the public in general. In other words, there is a
`strong general consumer association between the family of J.D. POWER Marks and Opposer.
`
`The Opposer also owns numerous trade and service marks registrations for marks
`11.
`that include J.D. POWER in multiple foreign jurisdictions, including China.
`
`The Opposer’s research surveys have been conducted using local languages in
`12.
`several countries across five continents, including: China, Singapore, Taiwan, Thailand, Japan,
`Europe, Brazil, India, South Korea, Canada, Mexico, Australia, Germany, and the United
`Kingdom..
`
`Opposer’s clients use their rankings in the J.D. Power syndicated studies to promote
`13.
`their products/services through various advertisements, such as television commercials, YouTube
`videos, online and print media. For example, Chevrolet uses its J.D. Power Awards in various
`YouTube videos to promote its goods at https://www.youtube.com/watch?v=jbcZ3b67UkA (last
`visited January 15, 2024). Such proliferation of advertisements featuring the J.D. Power Awards
`has made the Opposer an international household name.
`
`Authors write articles for Opposer on product quality and cost, customer
`14.
`satisfaction and buyer behavior of a variety of consumer products, including vehicle batteries. For
`example, an author wrote an article about the costs and battery life of EV batteries and said article
`is featured on the Opposer website. See https://www.jdpower.com/cars/shopping-guides/how-
`much-do-ev-batteries-cost (last visited January 25, 2024). The J.D. POWER mark is prominently
`featured in connection with this article.
`
`Also, Opposer and PlugShare are collaborating on a series of studies covering
`15.
`multiple aspects of the EV experience, including the overall ownership experience, charging at
`home, and charging in public. PlugShare has research strength in the emobility category, especially
`in public EV charging infrastructure and EV driver insights. Opposer also publishes its J.D. Power
`Benchmark Awards for EV charging networks. See https://company.plugshare.com/jdpower-
`collab-qa.html (last visited January 25, 2024).
`
`Further, Opposer conducts market research, data analysis and surveys on electronic
`16.
`vehicles, their batteries and charging stations. As a result, Opposer licenses the use of their J.D.
`POWER awards to battery charging networks, such as Volta. Volta is a member of the Shell Group
`and ranked #1 in Customer Satisfaction in the J.D. Power 2023 Electric Vehicle Experience Public
`Charging Satisfaction Study.
`
`Applicant is a Chinese company based in Shenzhen, Guangdong, China. Because
`17.
`Opposer owns several Chinese registrations for marks that include J.D. POWER and their research
`surveys are conducted in China, it is upon information and belief that the Applicant was aware of
`the Opposer and the fame of the J.D. POWER Marks prior to the filing of Appl. No. 97788994
`which includes words substantially similar to “J.D. Power”.
`
`
`
`4
`
`

`

`
`
` in
`As is evidenced by the publication of the stylized mark
`18.
`connection with Applicant’s Appl. No. 97788994 in the Official Gazette on December 19, 2023,
`Applicant seeks to register the stylized mark YDPOWER as a trademark for “Batteries; Adapter
`plugs; Battery boxes; Battery charge devices; Battery chargers for mobile phones; Battery chargers
`for use with vehicle batteries, mobile phones; Inverters for power supply; Solar-powered battery
`chargers; Uninterruptible electrical power supplies; USB charging ports; Voltage stabilizing power
`supply” in Class 9 (the “YDPower Mark”). Although Applicant’s mark is a stylized mark, the
`literal component of the mark and how consumers will refer to the mark is “YDPower”, which is
`only a one-letter difference from Opposer’s famous J.D. POWER mark.
`
`Applicant’s Appl. No. 97788994 was filed on or about February 9, 2023 with a
`19.
`claimed date of first use in commerce as January 18, 2023. Applicant is currently selling one of
`the
`identified products
`through an online
`retail store
`found at https://www.olink-
`tech.com/products/ydpower-20w-pd-fast-charger. (last visited January 15, 2024). Such goods are
`used in the automotive, technology, electronics and home goods industries.
`
`Because Opposer provides surveys and offers articles of customer satisfaction,
`20.
`product quality and cost, and buyer behavior for batteries and battery charging stations and
`industries ranging from automotive to technology, electronics, utilities and home improvement
`under the family of J.D. POWER Marks, consumers may believe that Applicant’s products are
`those of Opposer or products that have been surveyed by Opposer for customer satisfaction. In that
`regard, consumers are likely to be confused, deceived and/or misled into believing that the goods
`offered under the Applicant’s YDPower Mark are sponsored, approved or endorsed by Opposer.
`
`The goods identified in Applicant’s Appl. No. 97788994 are identical, overlapping
`21.
`and/or highly related to the goods that are reviewed as part of Opposer’s customer satisfaction,
`product quality and buyer behavior surveys under the family of J.D. POWER Marks and, upon
`information and belief, will be offered to the same, substantially similar and/or overlapping classes
`of consumers as those to which Opposer caters to and through the same, substantially similar
`and/or overlapping channels of trade.
`
`The word portion of the mark in Applicant’s Appl. No. 97788994 is so highly
`22.
`similar to the Opposer’s family of J.D. POWER Marks and the goods identified in Applicant’s
`application are so highly related to the goods that are surveyed by Opposer as part of their market
`research services that registration of the Applicant’s mark would result in likelihood of confusion
`among relevant consumers.
`
`Applicant’s application for its YDPower Mark was filed on a “use” basis with a
`23.
`claimed date of first use on or about January 18, 2023. Therefore, any use of the Applicant’s mark
`would be several decades after Opposer began use of its family of J.D. POWER marks and several
`years after the majority of registrations were issued for the Opposer’s marks. Opposer thus has
`priority of use over Applicant.
`
`Opposer has not consented to or authorized Applicant’s use or registration of the
`24.
`YDPower Mark in connection with the goods identified in Appl. No. 97788994.
`
`
`
`5
`
`

`

`
`
`Opposer has spent substantial amounts of money and other resources in marketing,
`25.
`advertising and promoting its family of J.D. POWER Marks in connection with its goods and
`services.
`
`By reason of its extensive use, marketing, publicity, advertising and promotion of
`26.
`its goods and services in connection with its marks, and the high quality of those goods and
`services, Opposer has created extremely valuable good-will in connection with its family of J.D.
`POWER Marks long prior to Applicant’s filing of its Appl. No. 97788994.
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`The family of J.D. POWER Marks are famous and distinctive as meant in the
`27.
`Lanham Act and are entitled to protection of the anti-dilution provisions of the Lanham Act.
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`Applicant’s Appl. No. 97788994 was filed after the time that Opposer’s family of
`28.
`J.D. POWER Marks became famous and distinctive.
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`Registration of Applicant’s Appl. No. 97788994 for the YDPower Mark will dilute,
`29.
`tarnish and blur Opposer’s rights in its family of J.D. POWER Marks in violation of Section 2(f)
`of the Trademark Act of 1946, 15 U.S.C. §1052(f).
`
`Applicant’s YDPower Mark is likely to cause confusion, mistake or deception in
`30.
`that consumers are likely to believe that Applicant’s goods are related to the Opposer’s goods and
`services or the goods and services of a company that is sponsored, authorized or licensed by, or in
`some other way legitimately connected with Opposer in violation of Section 2(d) of the Trademark
`Act of 1946, 15 U.S.C. §1052(d).
`
`Applicant’s use of the YDPower Mark is likely to disparage and falsely suggest a
`31.
`connection with Opposer in violation of Section 2(a) of the Trademark Act of 1946, 15 U.S.C.
`§1052(a), thereby causing loss, damage and injury to Opposer.
`
`Applicant’s use of the YDPower Mark is likely to interfere with Opposer’s use of
`32.
`its family of J.D. POWER Marks and Opposer’s ability to avail itself of present and future
`commercial benefit resulting from its sustained financial investment in the development of the
`marks, thereby causing loss, damage and injury to Opposer.
`
`Applicant’s registration of the YDPower Mark in connection with the goods
`33.
`identified in Appl. No. 97788994 would be damaging to Opposer.
`
`If Applicant is granted registration of the YDPower Mark as shown in Applicant’s
`34.
`Appl. No. 97788994, Applicant will thereby obtain the prima facie exclusive right to use such
`mark, and such registration will impair, diminish and dilute Opposer’s good-will and rights in its
`marks, in violation of the Trademark Act of 1946, 15 U.S.C. §§ 1052(f) and 1125(c), thereby
`causing loss, damage and irreparable injury to Opposer.
`
`WHEREFORE, Opposer prays that this Notice of Opposition be sustained, that
`Application Serial No. 97788994 be rejected, and that Applicant be denied registration.
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`AKERMAN LLP
`71 South Wacker Drive, 47th Floor
`Chicago, IL 60606
`Telephone: 312-870-8075
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`Respectfully submitted,
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`/s/ Kourtney A. Mulcahy
`KOURTNEY A. MULCAHY
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`Attorney for: Opposer
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