Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1001231
`09/11/2019
`
`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
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`Snap Inc.
`
`09/11/2019
`
`2772 Donald Douglas Loop North
`Santa Monica, CA 90405
`UNITED STATES
`
`John M. Kim
`IPLA, LLP
`4445 Eastgate Mall
`Suite 200
`San Diego, CA 92121
`UNITED STATES
`litigation@ipla.com, trademarks@ipla.com
`8582720220
`
`Applicant Information
`
`Application No
`
`87800659
`
`Publication date
`
`05/14/2019
`
`Opposition Filing
`Date
`
`International Re-
`gistration No.
`
`Applicant
`
`09/11/2019
`
`NONE
`
`Opposition Peri-
`od Ends
`
`International Re-
`gistration Date
`
`09/11/2019
`
`NONE
`
`Panasonic Corporation
`1006 Oaza Kadoma, Kadoma-shi
`Osaka, 571-8501
`JAPAN
`
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Home security monitoring cameras; Home
`security monitoring cameras for indoor use; Home security monitoring cameras foroutdoor use; Mon-
`itoring cameras for intercoms; Security camera; Wireless video cameras; Network monitoring camer-
`as; Computer application software for mobile phones, personal computers and other wireless
`devices, namely, software for use inrecording, viewing, storing, sharing and analyzing digital images
`and sounds; Home security monitoring alarm sensors; Sensors for detecting opening and closingof
`doors and windows; Motion sensors; Sensors for detecting water leakage; Homesecurity alarms;
`Home security sirens; Home security sirens for indoor use; Home security sirens for outdoor use;
`Computer network hubs for home security monitoring systems; Electrical connectors, plugs and sock-
`ets; Telephone handsets for use in the operation and control of homesecurity monitoring systems;
`Telephone handsets for use in the power control ofhome electric appliances; Computer software for
`
`

`

`use in the operation and control of home security monitoring systems; Computer software for use in
`the power control of home electric appliances; (Based on Intent to Use) Motion sensitive security
`lights
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`5235702
`
`Registration Date
`
`07/04/2017
`
`Word Mark
`
`Design Mark
`
`NONE
`
`Application Date
`
`10/21/2016
`
`Foreign Priority
`Date
`
`04/28/2016
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a circle formed byan outer circle and an inner circle, the in-
`ner circle has a small cut out semi-circle on the upper left side.
`
`Class 009. First use: First Use: 2016/11/10 First Use In Commerce: 2016/11/10
`Computer hardware; computer peripherals; wearable computer hardware; wear-
`able computer peripherals; computer hardware and peripherals for remotely ac-
`cessing, capturing, transmitting and displaying pictures, video, audio and data;
`downloadable computer software, namely, software for setting up, configuring,
`and controlling wearable computer hardware and peripherals; downloadable
`computer software and software applications for use in uploading, downloading,
`capturing, editing,storing, distributing and sharing photographic and video con-
`tent and other digital data via global and local computer networks and via mobile
`devices; downloadable multimedia files containing digitalaudio and video files
`featuring user generated images, videos, multimedia files, and other digital data,
`all in the fields of entertainment and photography; computer software for access-
`ing and transmitting data and content among consumer electronics devices and
`displays
`
`Attachments
`
`87211985#TMSN.png( bytes )
`
`

`

`Notice of Opposition 09-11-2019.pdf(138978 bytes )
`
`Signature
`
`/John M. Kim/
`
`Name
`
`Date
`
`John M. Kim
`
`09/11/2019
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Snap Inc.,
`
`
`Opposer,
`
`
`v.
`
`Panasonic Corporation,
`
`
`Applicant.
`
`
`
`
`
`
`Mark:
`Serial No.: 87800659
`Filing Date: February 16, 2018
`Published: May 14, 2019
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`NOTICE OF OPPOSITION
`
`Opposer Snap Inc., a Delaware corporation with an address of 2772 Donald Douglas Loop
`
`North, Santa Monica, CA 90405 (“Snap”), believes that it will be damaged by the registration of
`
` (the “Applicant’s Logo”), as set forth in Application Serial No. 87800659 (the
`
`“Application”) owned by Panasonic Corporation, with an address of 1006 Oaza Kadoma,
`
`Kadoma-shi, Osaka, Japan 571-8501 (“Applicant”). Snap alleges as follows:
`
`SNAP’S BUSINESS
`
`1.
`
`Snap is a world-famous camera, communications, and content distribution
`
`company that has developed and currently markets software and peripherals, including the
`
`SNAPCHAT photo/video-sharing and messaging platform and SPECTACLES wearable cameras.
`
`2.
`
`In 2011, Snap launched a photo-messaging software application for mobile devices
`
`called SNAPCHAT. Since its launch in 2011, the SNAPCHAT mobile application has become
`
`one of the most popular smartphone applications in the world and with substantially expanded
`
`1
`
`

`

`functionality. As of Q2 2019, approximately 203 million people, on average, used the
`
`SNAPCHAT application every day. Snap’s many millions of registered users have shared billions
`
`and billions of photo and video messages. Approximately 10 billion images and videos were
`
`viewed daily via the SNAPCHAT application and over 3.5 billion Snaps were created each day as
`
`of mid-2019. On average, more than 60% of daily active users of the SNAPCHAT application
`
`created Snaps with the camera every day. The SNAPCHAT application was one of the top three
`
`most downloaded apps on the Apple App Store for three years running (2016-2018).
`
`3.
`
`The SNAPCHAT application has won various awards, has been the subject of
`
`significant unsolicited media publicity, and is consistently used by many high-profile celebrities,
`
`athletes, musicians, politicians, and actors. As a result of its widespread adoption, SNAPCHAT
`
`has achieved a high degree of consumer recognition and has become a strong and famous
`
`trademark that consumers recognize as the source of high quality products and services offered by
`
`Snap.
`
`4.
`
`In September 2016, Snap announced that it was broadening its product and service
`
`offerings by developing and offering for sale a wearable camera housed in a pair of fashionable
`
`sunglasses. The wearable camera would be called SPECTACLES and would bear a new logo (the
`
`“Spectacles Logo”), as shown below.
`
`
`
`The SPECTACLES camera product bearing the Spectacles Logo was designed to integrate with
`
`Snap’s popular SNAPCHAT mobile application by allowing users to record and directly upload
`
`video to the SNAPCHAT mobile application. The September 2016 press release announcing
`
`Snap’s SPECTACLES product received significant and widespread media attention.
`
`2
`
`

`

`5.
`
`On November 10, 2016, Snap’s SPECTACLES product bearing the Spectacles
`
`Logo was officially released for consumer purchase.
`
`6.
`
`The dramatic growth of Snap’s SNAPCHAT application and sale of its
`
`SPECTACLES product made Snap’s stock market debut in early 2017 one of the most anticipated
`
`and publicized IPOs of any U.S.-based technology company in history.
`
`SNAP’S TRADEMARK RIGHTS
`
`7.
`
`Snap is the owner of the following trademark registration on the USPTO Principal
`
`Register:
`
`Mark
`
`Serial No.
`
`Filing Date
`
`Registration Date
`
`87211985
`
`October 21, 2016
`
`July 4, 2017
`
`
`
`Snap’s registration of the Spectacles Logo shown above covers the following
`
`
`
`8.
`
`goods:
`
`Class 009: Computer hardware; computer peripherals; wearable computer
`hardware; wearable computer peripherals; computer hardware and peripherals for
`remotely accessing, capturing, transmitting and displaying pictures, video, audio
`and data; downloadable computer software, namely, software for setting up,
`configuring, and controlling wearable computer hardware and peripherals;
`downloadable computer software and software applications for use in uploading,
`downloading, capturing, editing, storing, distributing and sharing photographic and
`video content and other digital data via global and local computer networks and via
`mobile devices; downloadable multimedia files containing digital audio and video
`files featuring user generated images, videos, multimedia files, and other digital
`data, all in the fields of entertainment and photography; computer software for
`accessing and transmitting data and content among consumer electronics devices
`and displays
`
`9.
`
`Since at least as early as November 10, 2016, Snap has used and the public has
`
`recognized the Spectacles Logo in conjunction with Snap’s SPECTACLES product. The
`
`3
`
`

`

`Spectacles Logo is inherently distinctive in this context. Snap also owns common law trademark
`
`rights in the Spectacles Logo since at least as early as November 2016.
`
`APPLICANT AND ITS APPLICATION
`
`10.
`
`On February 16, 2018, Applicant filed its Application to register Applicant’s Logo
`
`in connection with the following goods:
`
`Class 009: Home security monitoring cameras; Home security monitoring cameras
`for indoor use; Home security monitoring cameras for outdoor use; Monitoring
`cameras for intercoms; Security camera; Wireless video cameras; Network
`monitoring cameras; Computer application software for mobile phones, personal
`computers and other wireless devices, namely, software for use in recording,
`viewing, storing, sharing and analyzing digital images and sounds; Home security
`monitoring sensors; Sensors for detecting opening and closing of doors and
`windows; Motion sensors; Sensors for detecting water leakage; Home security
`alarms; Home security sirens; Home security sirens for indoor use; Home security
`sirens for outdoor use; Network hubs for home security monitoring systems;
`Electrical connectors, plugs and sockets; Telephone handsets for use in the
`operation and control of home security monitoring systems; Telephone handsets for
`use in the power control of home electric appliances; Computer software for use in
`the operation and control of home security monitoring systems; Computer software
`for use in the power control of home electric appliances; Motion sensitive security
`lights
`
`
`The Application was filed based on Lanham Act Sections 1(b) and 44 (d).
`
`11.
`
`On information and belief, Applicant began using Applicant’s Logo after both
`
`Snap’s first use in commerce on November 10, 2016 and after the registration date of the
`
`Spectacles Logo on July 4, 2017.
`
`COUNT 1
`Likelihood of Confusion
`(15 U.S.C. § 1052(d) and 15 U.S.C. §1125(a))
`
`Snap realleges and incorporates by reference the preceding allegations of this
`
`12.
`
`Notice of Opposition.
`
`13.
`
`Snap’s trademark rights are senior to any rights that Applicant may allege to have
`
`in its Application or Applicant’s Logo because Snap’s trademark registration for the Spectacles
`
`4
`
`

`

`Logo, appended to this Notice of Opposition as Exhibit A, was filed before the filing date of
`
`Applicant’s Application.
`
`14.
`
`Snap’s trademark rights are senior to any rights that Applicant may allege to have
`
`in its Application or Applicant’s Logo because, on information and belief, Applicant did not use
`
`Applicant’s Logo in commerce for the goods claimed in the Application prior to the filing date or
`
`first use in commerce date of Snap’s trademark registration, alleged herein.
`
`15.
`
`Snap’s trademark rights are senior to any rights that Applicant may allege to have
`
`in its Application or Applicant’s Logo because Snap owns common law trademark rights to the
`
`Spectacles Logo that predate the filing date of Applicant’s Application.
`
`16.
`
`Applicant’s Logo is confusingly similar to the Spectacles Logo. For ease of
`
`reference, Applicant’s Logo and the Spectacles Logo appear as follows:
`
`Applicant’s Logo
`
`Spectacles Logo
`
`
`
`
`
`
`
`The color element in Applicant’s Logo is immaterial because Snap’s black and white trademark
`
`registration for the Spectacles Logo is presumed to contemplate the use of its logo in any color,
`
`without limitation.
`
`17.
`
`The goods claimed in Applicant’s Application are either similar or closely related
`
`to the goods claimed in Snap’s trademark registration for the Spectacles Logo. Also, the goods
`
`claimed in Applicant’s Application are either similar or closely related to the goods that Snap
`
`5
`
`

`

`actually offered in United States commerce in connection with the Spectacles Logo prior to the
`
`filing date of Applicant’s Application.
`
`18.
`
`Applicant had constructive knowledge and, on information and belief, had actual
`
`knowledge of Snap’s trademark rights in and to the Spectacles Logo before it filed its Application.
`
`19.
`
`Applicant’s Application to register Applicant’s Logo in connection with the goods
`
`claimed in the Application is likely to cause confusion or mistake, to deceive, or to create the false
`
`impression that Applicant’s goods are provided by, related to, endorsed by, or associated with
`
`Snap, or otherwise would cause injury to Snap’s rights in its Spectacles Logo, in violation of
`
`Lanham Act § 2(d), with consequent damage to Snap and the public.
`
`WHEREFORE, it is respectfully requested that this opposition be sustained and that the
`
`Application be denied registration.
`
`DATED THIS 11th day of September, 2019.
`
`
`
`
`Respectfully submitted,
`
`/John M. Kim/
`John M. Kim
`IPLA, LLP
`4445 Eastgate Mall, Suite 200
`San Diego, CA 92121
`Phone: 858-272-0220
`Fax: 858-272-0221
`Email: litigation@ipla.com
`
`6
`
`

`

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

`

`Reg. No. 5,235,702
`
`Registered Jul. 04, 2017
`
`Snap Inc. (DELAWARE CORPORATION)
`63 Market Street
`Venice, CA 90291
`
`Int. Cl.: 9
`
`Trademark
`
`Principal Register
`
`CLASS 9: Computer hardware; computer peripherals; wearable computer hardware; wearable
`computer peripherals; computer hardware and peripherals for remotely accessing, capturing,
`transmitting and displaying pictures, video, audio and data; downloadable computer software,
`namely, software for setting up, configuring, and controlling wearable computer hardware
`and peripherals; downloadable computer software and software applications for use in
`uploading, downloading, capturing, editing, storing, distributing and sharing photographic
`and video content and other digital data via global and local computer networks and via
`mobile devices; downloadable multimedia files containing digital audio and video files
`featuring user generated images, videos, multimedia files, and other digital data, all in the
`fields of entertainment and photography; computer software for accessing and transmitting
`data and content among consumer electronics devices and displays
`
`FIRST USE 11-10-2016; IN COMMERCE 11-10-2016
`
`The mark consists of a circle formed by an outer circle and an inner circle, the inner circle has
`a small cut out semi-circle on the upper left side.
`
`SER. NO. 87-211,985, FILED 10-21-2016
`APRIL K ROACH, EXAMINING ATTORNEY
`
`