Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA997226
`
`Filing date:
`
`08/23/2019
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Petition for Cancellation
`
`Notice is hereby given that the following party has filed a petition to cancel the registration indicated below.
`
`Petitioner Information
`
`Name
`
`Entity
`
`Address
`
`Attorney informa-
`tion
`
`Beats Electronics, LLC
`
`Corporation
`
`Citizenship
`
`Delaware
`
`8600 Hayden Place
`Culver City, CA 90232
`UNITED STATES
`
`MICHAEL G. KELBER
`Neal, Gerber & Eisenberg LLP
`2 N. LaSalle, Suite 1700
`Chicago, IL 60602
`UNITED STATES
`afraker@nge.com, mkelber@nge.com, afuelleman@nge.com, fwest-
`brown@nge.com
`3122698000
`
`Registration Subject to Cancellation
`
`Registration No.
`
`5390762
`
`Registration date
`
`01/30/2018
`
`Registrant
`
`Shenzhen Detong Electronics Co., Ltd.
`Room 502, Unit 3, Building 46, Majialong
`No.83, Yiyuan Rd., Nanshan District
`Shenzhen, Guangdong
`CHINA
`Email: libra@szkmtr.com
`
`Goods/Services Subject to Cancellation
`
`Class 009. First Use: 2017/05/20 First Use In Commerce: 2017/05/20
`All goods and services in the class are subject to cancellation, namely: Alarm monitoring systems;
`Batteries, electric; Cabinets for loudspeakers; Cell phone straps; Chargers for electric batteries; Com-
`puter peripheral devices; Dataprocessing apparatus; Electric wires and cables; Electrical inductors;
`Electrical plugs and sockets; Electro-dynamic apparatus for the remote control of signals; Electronic
`animal confinement system;Electronic control systems for machines; Integrated circuits; Optical
`lamps; Sleeves for laptops; Transmitters of electronic signals; USB card readers; Video recorders;
`Voltage regulators for vehicles
`
`Grounds for Cancellation
`
`Priority and likelihood of confusion
`
`Trademark Act Sections 14(1) and 2(d)
`
`Dilution by blurring
`
`Dilution by tarnishment
`
`Trademark Act Sections 14(1) and 43(c)
`
`Trademark Act Sections 14(1) and 43(c)
`
`

`

`Marks Cited by Petitioner as Basis for Cancellation
`
`U.S. Registration
`No.
`
`3532627
`
`Registration Date
`
`11/11/2008
`
`Word Mark
`
`Design Mark
`
`BEATS
`
`Application Date
`
`06/07/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2008/07/01 First Use In Commerce: 2008/07/01
`Audio equipment, namely, headphones
`
`U.S. Registration
`No.
`
`3862142
`
`Registration Date
`
`10/12/2010
`
`Word Mark
`
`Design Mark
`
`BEATS
`
`Application Date
`
`06/03/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2008/07/01 First Use In Commerce: 2008/07/01
`headphones
`
`U.S. Registration
`No.
`
`4035777
`
`Registration Date
`
`10/04/2011
`
`Word Mark
`
`BEATS
`
`Application Date
`
`06/03/2008
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2010/09/07 First Use In Commerce: 2010/09/07
`Audio speakers; loudspeakers
`
`U.S. Registration
`No.
`
`4361690
`
`Registration Date
`
`07/02/2013
`
`Word Mark
`
`Design Mark
`
`BEATS
`
`Application Date
`
`02/05/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2010/09/07 First Use In Commerce: 2010/09/07
`loudspeakers, audio speakers, car audiospeakers [, media players for automo-
`biles, CD players for automobiles ]
`Class 025. First use: First Use: 2011/11/05 First Use In Commerce: 2011/11/05
`[ T-shirts ]
`
`U.S. Registration
`No.
`
`4537908
`
`Registration Date
`
`05/27/2014
`
`Word Mark
`
`BEATS
`
`Application Date
`
`02/05/2009
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2012/08/00 First Use In Commerce: 2012/08/00
`Carrying cases for headphones
`
`U.S. Registration
`No.
`
`4529746
`
`Registration Date
`
`05/13/2014
`
`Word Mark
`
`Design Mark
`
`BEATS
`
`Application Date
`
`07/21/2009
`
`Foreign Priority
`Date
`
`06/17/2009
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2008/07/01 First Use In Commerce: 2008/07/01
`electronic cables, namely, audio electric cables and cable connectors; power
`cables and cable connectors; audio speakers for home theater systems
`Class 025. First use: First Use: 2011/11/05 First Use In Commerce: 2011/11/05
`headgear, namely, caps, hats
`Class 041. First use: First Use: 2013/12/05 First Use In Commerce: 2013/12/05
`Provision of live entertainment and recorded entertainment, namely, live musical
`performances by musical bands and DJs;musical entertainment in the nature of
`live visual and audio performances by musical groups and DJs; exhibitions,
`namely, exhibitions concerning music; musicalentertainment in the nature of live
`visual and audio performances by musical groups and DJs; exhibitions, namely,
`exhibitions concerning music
`
`U.S. Registration
`No.
`
`5448731
`
`Registration Date
`
`04/17/2018
`
`Word Mark
`
`BEATS
`
`Application Date
`
`02/03/2014
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2011/12/31 First Use In Commerce: 2011/12/31
`Speaker stands; Protective cases for speakers; Remote controls for speakers;
`Plug adaptors; Chargers for use with headphones and speakers; Carrying cases
`for headphones and portable speakers; Portable speaker mount for bicycles;
`Computer software, namely, software for updating wireless speakers and head-
`phones; Handheld devices for controlling speakers; Computer software for use
`in controlling speakers, amplifiers; Downloadable audio and video recordings
`featuring music, music performances, and music videos; Prerecorded music,
`namely, digital downloads; Computer software for use in the delivery, distribution
`and transmission of digital music and entertainment- related audio, video, text
`and multimedia content
`
`U.S. Registration
`No.
`
`4177191
`
`Registration Date
`
`07/17/2012
`
`Word Mark
`
`Design Mark
`
`BEATS PRO
`
`Application Date
`
`06/08/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2010/10/14 First Use In Commerce: 2010/10/14
`Headphones; personal headphones for usewith sound transmitting systems
`
`U.S. Registration
`No.
`
`4314478
`
`Registration Date
`
`04/02/2013
`
`Word Mark
`
`BEATS STUDIO
`
`Application Date
`
`02/27/2012
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2012/07/01 First Use In Commerce: 2012/07/01
`Headphones
`
`U.S. Registration
`No.
`
`5387883
`
`Registration Date
`
`01/23/2018
`
`Word Mark
`
`Design Mark
`
`BEATS X
`
`Application Date
`
`11/09/2016
`
`Foreign Priority
`Date
`
`05/25/2016
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the stylized word "beats" with a broken line stylized letter
`"x" in superscript.
`
`Class 009. First use: First Use: 2016/09/07 First Use In Commerce: 2017/02/10
`Earphones; audio cables; battery chargers, charging cables, and power ad-
`aptors for use with earphones; carrying cases for earphones
`
`U.S. Registration
`No.
`
`4314930
`
`Registration Date
`
`04/02/2013
`
`Word Mark
`
`Design Mark
`
`URBEATS
`
`Application Date
`
`03/09/2012
`
`Foreign Priority
`Date
`
`09/12/2011
`
`Description of
`Mark
`
`NONE
`
`

`

`Goods/Services
`
`Class 009. First use: First Use: 2011/11/00 First Use In Commerce: 2011/11/00
`Headphones
`
`U.S. Registration
`No.
`
`4314931
`
`Registration Date
`
`04/02/2013
`
`Word Mark
`
`Design Mark
`
`BEATS PILL
`
`Application Date
`
`01/09/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2012/10/16 First Use In Commerce: 2012/10/16
`audio speakers; loudspeakers
`
`U.S. Registration
`No.
`
`5188070
`
`Registration Date
`
`04/18/2017
`
`Word Mark
`
`Design Mark
`
`BEATS EP
`
`Application Date
`
`04/04/2016
`
`Foreign Priority
`Date
`
`10/15/2015
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2016/09/00 First Use In Commerce: 2016/09/00
`audio speakers; loud speakers; earphones; headphones; microphones; electric-
`al and electronic connectors, couplers, wires, cables, chargers, docks, docking
`stations, interfaces, and adapters for use with all of the aforesaid goods; covers,
`bags and cases adapted or shaped to contain audio players
`
`U.S. Registration
`No.
`
`4564379
`
`Registration Date
`
`07/08/2014
`
`Word Mark
`
`BEATSAUDIO
`
`Application Date
`
`03/16/2010
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2010/01/17 First Use In Commerce: 2010/01/17
`Cell phones; smart phones; laptop computers; computer accessories, namely,
`computer monitors; media players for automobiles, DVD players for automo-
`biles, CD players for automobiles, digital audio players for automobiles; digital
`video players for automobiles
`
`U.S. Registration
`No.
`
`5428637
`
`Registration Date
`
`03/20/2018
`
`Word Mark
`
`Design Mark
`
`BEATSAUDIO
`
`Application Date
`
`04/21/2014
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2012/06/30 First Use In Commerce: 2012/06/30
`Computers; car speakers
`
`U.S. Registration
`No.
`
`4572603
`
`Registration Date
`
`07/22/2014
`
`Word Mark
`
`BEATS BY DR. DRE
`
`Application Date
`
`07/21/2009
`
`Foreign Priority
`Date
`
`06/17/2009
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2012/10/16 First Use In Commerce: 2012/10/16
`Audio speakers for home theater systems
`
`U.S. Registration
`No.
`
`4455269
`
`Registration Date
`
`12/24/2013
`
`Word Mark
`
`Design Mark
`
`BEATS BY DR. DRE
`
`Application Date
`
`07/21/2009
`
`Foreign Priority
`Date
`
`06/17/2009
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2008/07/01 First Use In Commerce: 2008/07/01
`Electronic cables, namely, audio cablesand cable connectors
`
`U.S. Registration
`No.
`
`4176105
`
`Registration Date
`
`07/17/2012
`
`Word Mark
`
`Design Mark
`
`BEATS BY DR. DRE
`
`Application Date
`
`07/21/2009
`
`Foreign Priority
`Date
`
`06/17/2009
`
`

`

`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2010/10/14 First Use In Commerce: 2010/10/14
`[ media players for automobiles; DVD players for automobiles; CD players for
`automobiles; digital audio players for automobiles; ] audio speakers; car audio
`speakers; loudspeakers; [ loudspeaker cabinets; horns for loudspeakers;] head-
`phones ; personal headphones for use with sound transmitting systems [ ; media
`players for automobiles]
`Class 025. First use: First Use: 2011/11/05 First Use In Commerce: 2011/11/05
`[ T-shirts ]
`
`U.S. Registration
`No.
`
`4937568
`
`Registration Date
`
`04/12/2016
`
`Word Mark
`
`Design Mark
`
`POWERBEATS
`
`Application Date
`
`09/09/2014
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`Attachments
`
`NONE
`
`Class 009. First use: First Use: 2010/09/00 First Use In Commerce: 2010/09/00
`Earphones, audio cables
`
`78902543#TMSN.png( bytes )
`77980257#TMSN.png( bytes )
`77982434#TMSN.png( bytes )
`77983303#TMSN.png( bytes )
`77664171#TMSN.png( bytes )
`77786522#TMSN.png( bytes )
`86183164#TMSN.png( bytes )
`85976944#TMSN.png( bytes )
`85554241#TMSN.png( bytes )
`87231872#TMSN.png( bytes )
`85978526#TMSN.png( bytes )
`85978529#TMSN.png( bytes )
`86963179#TMSN.png( bytes )
`77960477#TMSN.png( bytes )
`86258414#TMSN.png( bytes )
`77786492#TMSN.png( bytes )
`77983608#TMSN.png( bytes )
`77983185#TMSN.png( bytes )
`86390009#TMSN.png( bytes )
`20190823 Petition to Cancel Beatunes 29690422_1.pdf(115015 bytes )
`20190823 Exhibit A to Beatunes Petition to Cancel.PDF(4416233 bytes )
`
`

`

`Signature
`
`/Michael G. Kelber/
`
`Name
`
`Date
`
`Michael G. Kelber
`
`08/23/2019
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Petitioner,
`
`
`
`BEATS ELECTRONICS, LLC
`
`
`
` v.
`
`SHENZHEN DETONG ELECTRONICS CO.,
`LTD.
`
`
` Registrant.
`
`
`
`
`Cancellation No.
`
`
`
`
`
`
`
`
`
`PETITION FOR CANCELLATION
`
`Beats Electronics, LLC (“Beats”), a limited liability company organized under the laws
`
`of Delaware with a place of business at 8600 Hayden Place, Culver City, CA 90232, believes
`
`that it will be damaged by the continued registration of the mark BEATUNES in International
`
`Class 09, as shown in Registration No. 5390762 (the “Registration”) owned by Shenzhen Detong
`
`Electronics Co., Ltd. (“Shenzhen Detong”), and therefore hereby challenges the same and
`
`requests that the Registration be cancelled.
`
`The grounds for Beats’ Petition for Cancellation are as follows:
`
`1.
`
`Beats is the owner of numerous trademarks consisting of or incorporating the term
`
`BEATS (the “Beats Family of Marks”) that have been utilized in connection with well-known,
`
`high-quality audio- and music-related products and services. Products sold under Beats’
`
`trademarks are among the most popular audio-related products in the United States, have been
`
`extensively promoted and advertised, and have been the subject of extensive unsolicited
`
`publicity resulting from their high-quality, innovative design and well-received marketing
`
`campaigns.
`
`

`

`Beats’ Prior Rights
`
`2.
`
`Since substantially prior to the acts of Shenzhen Detong alleged herein, Beats has
`
`used the Beats Family of Marks in connection with the distribution and sale of audio-related
`
`products, technology, and entertainment services.
`
`3.
`
`Beats owns multiple U.S. federal registrations for its Beats Family of Marks,
`
`including the following:
`
`MARK
`
`GOODS
`
`REG. NUMBER
`
`3532627
`
`3862142
`
`4035777
`
`PRIORITY
`FILING DATE
`June 7, 2006
`
`June 3, 2008
`
`June 3, 2008
`
`BEATS
`
`BEATS
`
`BEATS
`
`BEATS
`
`BEATS
`
`BEATS
`
`
`
`International Class 9:
`Audio equipment, namely,
`headphones
`
`International Class 9:
`Headphones
`
`International Class 9:
`Audio speakers,
`loudspeakers
`
`International Class 9:
`Loudspeakers, audio
`speakers, car audio
`speakers
`
`International Class 9:
`Carrying cases for
`headphones
`
`International Class 9:
`Electronic cables, namely,
`audio electric cables and
`cable connectors; power
`cables and cable
`connectors; audio speakers
`for home theater systems
`
`International Class 25:
`Headgear, namely, caps,
`hats
`
`International Class 41:
`
`2
`
`4361690
`
`February 5, 2009
`
`4537908
`
`February 5, 2009
`
`4529746
`
`July 21, 2009
`
`

`

`5448731
`
`February 3, 2014
`
`Provision of live
`entertainment and recorded
`entertainment, namely, live
`musical performances by
`musical bands and DJs;
`musical entertainment in
`the nature of live visual and
`audio performances by
`musical groups and DJs;
`exhibitions, namely,
`exhibitions concerning
`music; musical
`entertainment in the nature
`of live visual and audio
`performances by musical
`groups and DJs;
`exhibitions, namely,
`exhibitions concerning
`music
`
`International Class 9:
`Speaker stands; Protective
`cases for speakers; Remote
`controls for speakers; Plug
`adaptors; Chargers for use
`with headphones and
`speakers; Carrying cases
`for headphones and
`portable speakers; Portable
`speaker mount for bicycles;
`Computer software,
`namely, software for
`updating wireless speakers
`and headphones; Handheld
`devices for controlling
`speakers; Computer
`software for use in
`controlling speakers,
`amplifiers; Downloadable
`audio and video recordings
`featuring music, music
`performances, and music
`videos; Prerecorded music,
`namely, digital downloads;
`Computer software for use
`in the delivery, distribution
`
`3
`
`BEATS
`
`
`
`

`

`BEATS PRO
`
`and transmission of digital
`music and entertainment-
`related audio, video, text
`and multimedia content
`
`International Class 9:
`Headphones; personal
`headphones for use with
`sound transmitting systems
`
`BEATS STUDIO
`
`International Class 9:
`Headphones
`
`BEATS X (stylized)
`
`URBEATS
`
`BEATS PILL
`
`BEATS EP
`
`BEATSAUDIO
`
`
`
`International Class 9:
`Earphones; audio cables;
`battery chargers, charging
`cables, and power adaptors
`for use with earphones;
`carrying cases for
`earphones
`
`International Class 9:
`Headphones
`
`International Class 9:
`Audio speakers,
`loudspeakers
`
`International Class 9:
`Audio speakers; loud
`speakers; earphones;
`headphones; microphones;
`electrical and electronic
`connectors, couplers, wires,
`cables, chargers, docks,
`docking stations, interfaces,
`and adapters for use with
`all of the aforesaid goods;
`covers, bags and cases
`adapted or shaped to
`contain audio players
`
`International Class 9: Cell
`phones; smart phones;
`laptop computers; computer
`accessories, namely,
`computer monitors; media
`
`4
`
`4177191
`
`June 8, 2010
`
`4314478
`
`5387883
`
`February 27,
`2012
`
`November 9,
`2016
`
`4314930
`
`4314931
`
`March 9, 2012
`
`January 9, 2012
`
`5188070
`
`April 4, 2016
`
`4564379
`
`March 16, 2010
`
`

`

`players for automobiles,
`DVD players for
`automobiles, CD players
`for automobiles, digital
`audio players for
`automobiles; digital video
`players for automobiles
`
`International Class 9:
`Computers, car speakers
`
`BEATSAUDIO
`
`BEATS BY DR. DRE International Class 9:
`Audio speakers for home
`theater systems
`
`BEATS BY DR. DRE International Class 9:
`Electronic cables, namely,
`audio cables and cable
`connectors
`
`BEATS BY DR. DRE International Class 9:
`Audio speakers; car audio
`speakers; loudspeakers;
`headphones ; personal
`headphones for use with
`sound transmitting systems
`
`5428637
`
`4572603
`
`April 21, 2014
`
`July 21, 2009
`
`4455269
`
`July 21, 2009
`
`4176105
`
`July 21, 2009
`
`POWERBEATS
`
`International Class 9:
`Earphones, audio cables
`
`4937568
`
`September 9,
`2014
`
`
`
`4.
`
`The following registrations listed above have become incontestable pursuant to 15
`
`U.S.C. § 1065: 4537908; 4361690; 4314931; 4314930; 4314478; 4177191; 4176105; 4035777;
`
`3862142; and 3532627.
`
`5.
`
`Through the common law use, application, and registration of the Beats Family of
`
`Marks, consumers have become accustomed to seeing and therefore recognizing products and
`
`services with the Beats Family of Marks as originating from Beats.
`
`6.
`
`Beats has devoted substantial resources, time, and effort to developing, marketing,
`
`and promoting its Beats Family of Marks. Through these efforts, and long before the filing date
`
`
`
`5
`
`

`

`of the Registration, Beats built up and established extensive and valuable goodwill in the Beats
`
`Family of Marks. As a result, the public has come to know, identify, and recognize products and
`
`services bearing or marketed in association with the Beats Family of Marks as originating with
`
`or authorized by Beats.
`
`7.
`
`Furthermore, through Beats’ efforts, the Beats Family of Marks has become
`
`famous and had become famous prior to Shenzhen Detong’s filing of the application that
`
`matured into Registration No. 5390762 and Shenzhen Detong’s claim of first use in commerce.
`
`8.
`
`It is well known that Beats is owned by Apple Inc., which also owns the famous
`
`ITUNES family of marks. See, e.g., Reg. Nos. 2653465, 3398242 and 4851462 for ITUNES;
`
`Reg. No. 4047650 for ITUNES U; and Reg. No. 4478514 for ITUNES MATCH. Products
`
`bearing the Beats Family of Marks are marketed alongside and in close proximity to the ITUNES
`
`mark, as well as other Apple products and marks, on Apple’s website.
`
`
`
`Beats Will Be Harmed by the Continued Registration of Shenzhen Detong’s Mark
`
`9.
`
`On information and belief, Shenzhen Detong is a Chinese limited company with
`
`an address of record at Room 502, Unit 3, Building 46, Majialong No. 83, Yiyuan Rd., Nanshan
`
`District, Shenzhen, Guangdong, China. Shenzhen Detong’s correspondent of record is Libra Lu,
`
`No. 3019, Chunfeng Road, Luohu District, Room 1401-03, Block A, Lushan Building,
`
`Shenzhen, China. Shenzhen Detong’s correspondent did not provide an email address of record.
`
`10.
`
`On June 22, 2017, notwithstanding Beats’ prior rights in and to the Beats Family
`
`of Marks, Shenzhen Detong filed an application to register the BEATUNES mark for use in
`
`connection with “Alarm monitoring systems; Batteries, electric; Cabinets for loudspeakers; Cell
`
`phone straps; Chargers for electric batteries; Computer peripheral devices; Data processing
`
`apparatus; Electric wires and cables; Electrical inductors; Electrical plugs and sockets; Electro-
`
`dynamic apparatus for the remote control of signals; Electronic animal confinement system;
`
`
`
`6
`
`

`

`Electronic control systems for machines; Integrated circuits; Optical lamps; Sleeves for laptops;
`
`Transmitters of electronic signals; USB card readers; Video recorders; Voltage regulators for
`
`vehicles” in International Class 09. On January 30, 2018, that application matured into
`
`Registration No. 5390762 (the “Registration”). The Registration was filed under Lanham Act
`
`§1(a), based on Shenzhen Detong’s alleged use of the mark in commerce at least as early as May
`
`20, 2017.
`
`11.
`
`There is no issue of priority. Each of the foregoing registrations for the Beats
`
`Family of Marks reflects a priority date preceding the filing date of the Registration (June 22,
`
`2017) and claimed use in commerce date of May 20, 2017.
`
`12.
`
`The goods set forth in the Registration are identical and/or complementary and
`
`related to the products marketed under the Beats Family of Marks. For example, Beats’
`
`registrations cover “audio speakers” and “loudspeakers” (Reg. Nos. 40357777, 4176105,
`
`4261690, 4314931, and 5188070) and various accessories for speakers (Reg. No. 5448731). The
`
`Registration covers “Cabinets for loudspeakers,” which are also complementary speaker
`
`accessories. Beats’ registrations cover “Electronic cables, namely, audio cables and cable
`
`connectors” (Reg. Nos. 4455269 and 4529746) and “audio cables” (Reg. Nos. 4937568 and
`
`5387883). The Registration covers “Electric wires and cables.” Finally, Beats’ registrations
`
`cover “laptop computers” and “computer accessories, namely, computer monitors” (Reg No.
`
`4564379. The Registration covers computer accessories such as “Computer peripheral devices,”
`
`“Sleeves for laptops,” and “USB card readers.”
`
`13.
`
`Shenzhen Detong’s advertising and use of the BEATUNES mark as contemplated
`
`in the Registration will inevitably reach the same consumers that Beats targets with the use of its
`
`Beats Family of Marks.
`
`
`
`7
`
`

`

`14.
`
`Consumers, upon seeing the BEATUNES used in connection with Shenzhen
`
`Detong’s goods, are likely to mistakenly believe that the BEATUNES mark, and the goods
`
`provided in connection with it, originated from or are connected with, sponsored by, associated
`
`with, or licensed or approved by Beats.
`
`15.
`
`In addition to including the same dominant “Beat” element as the Beats Family of
`
`Marks, the BEATUNES mark is a portmanteau of Beats’ famous BEATS mark and Beats’ parent
`
`corporation’s famous ITUNES mark. As a result, consumers knowing the corporate relationship
`
`between Apple and Beats, and accustomed to seeing the products marketed alongside each other,
`
`will undoubtedly be confused. Moreover, Shenzhen Detong’s selection of this particular mark
`
`suggests an intent to create an association with, and to trade on the goodwill of, both the Beats
`
`Family of Marks and the ITUNES mark.
`
`16.
`
`The specimens of use submitted by Shenzhen Detong for registration of the
`
`BEATUNES mark, attached hereto as Exhibit A, further show Shenzhen Detong’s intent to
`
`create an association with Apple and, by implication, with Beats and the Beats Family of Marks.
`
`Shenzhen Detong’s specimens show the BEATUNES mark on packaging for a hard-shell case
`
`expressly described as being for use with Apple’s MacBook laptop computer.
`
`17.
`
`Accordingly, the BEATUNES mark is confusingly similar to the Beats Family of
`
`Marks, and therefore, Shenzhen Detong’s continued registration of the BEATUNES mark in
`
`Class 9 would likely cause confusion, mistake, or deception among consumers concerning the
`
`origin, source or sponsorship of Shenzhen Detong’s products in violation of 15 U.S.C. § 1052(d),
`
`1114(1), and 1125(a).
`
`18.
`
`The confusion caused by the continued registration of the BEATUNES mark
`
`would result in damage and injury to Beats and to the public.
`
`
`
`8
`
`

`

`19.
`
`Given Beats’ considerable reputation, continued registration of the BEATUNES
`
`mark is likely to cause dilution of the distinctiveness of the Beats Family of Mark in violation of
`
`15 U.S.C. § 1125(c). In addition, if Shenzhen Detong’s goods lack quality, Shenzhen Detong’s
`
`use of the BEATUNES mark may also tarnish the Beats Family of Marks, resulting in harm to
`
`Beats’ reputation in violation of 15 U.S.C. §1125(c).
`
`20.
`
`Beats will continue to be irreparably damaged by registration of Shenzhen
`
`Detong’s confusingly similar mark. Deficiencies or faults in the quality of Shenzhen Detong’s
`
`products are likely to reflect negatively upon, tarnish and seriously injure the reputation which
`
`Beats has established for its products and services marketed under its Beats Family of Marks.
`
`This likelihood of confusion and dilution is likely to result in loss of revenues to Beats and
`
`damage to its reputation.
`
`21.
`
`In the alternative, upon information and belief, Shenzhen Detong has ceased use
`
`of the BEATUNES mark in U.S. commerce without intent to resume such use.
`
`22.
`
`Shenzhen Detong’s specimens included a screenshot purporting to show a hard-
`
`shell computer case bearing the BEATUNES mark as being available on Amazon.com. See Ex.
`
`A. However, upon information and belief, no such products, nor any others bearing the
`
`BEATUNES mark that is the subject of the Registration, are currently available on Amazon.com
`
`or through any other channel of trade in U.S. commerce.
`
`23.
`
`Shenzhen Detong has therefore abandoned the BEATUNES mark within the
`
`meaning of 15 U.S.C. § 1127.
`
`WHEREFORE, Beats Electronics, LLC requests that this Petition for Cancellation be
`
`sustained and that the Registration be cancelled in due course.
`
`
`
`9
`
`

`

`Beats authorizes the T.T.A.B. to charge the fees for the cancellation in one class and any
`
`additional fees related to this matter to the deposit account of Neal, Gerber & Eisenberg LLP.
`
`
`
`Respectfully submitted,
`
`Dated: August 23, 2019
`
`
`
`
`29690422.1
`
`/Michael G. Kelber/
`One of the Attorneys for
`BEATS ELECTRONICS, LLC
`Michael G. Kelber
`Andrea S. Fuelleman
`Andrew S. Fraker
`NEAL, GERBER & EISENBERG LLP
`2 North LaSalle Street, Suite 1700
`Chicago, Illinois 60602
`
`
`
`10
`
`

`

`
`
`
`Exhibit A
`
`Exhibit A
`
`

`

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`' Protect your MacBook agamsl scratches and scufls‘
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