Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA113625
`ESTTA Tracking number:
`12/07/2006
`
`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
`Entity
`Address
`
`eBay Inc.
`Corporation
`2145 Hamilton Avenue
`San Jose, CA 95125
`UNITED STATES
`
`Citizenship
`
`Delaware
`
`Attorney
`information
`
`Frank B. Goldberg
`Cooley Godward Kronish LLP
`101 California Street, 5th Floor
`San Francisco, CA 94111-5800
`UNITED STATES
`trademarks@cooley.com, youngml@cooley.com, fgoldberg@cooley.com
`Phone:(415) 693-2000
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`78536113
`12/07/2006
`
`Publication date
`Opposition
`Period Ends
`
`11/07/2006
`12/07/2006
`
`KANATARA, LLC
`PO Box 11
`Prairie View, KS 67664
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 035. First Use: 2004/09/10 First Use In Commerce: 2004/09/24
`All goods and sevices in the class are opposed, namely: Providing an Internet web site at which
`users can give away free items they no longer need or request free items needed
`
`Attachments
`
`FREE-BAY.pdf ( 166 pages )(4239385 bytes )
`
`Signature
`Name
`Date
`
`/Frank B. Goldberg/
`Frank B. Goldberg
`12/07/2006
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of application Serial No. 78/536,113
`For the Trademark FREE-BAY
`'
`
`Published in the Official Gazette
`
`on November 7, 2006
`
`EBAY lNC.,
`
`Opposer,
`
`-
`
`V.
`
`KANATARA, LLC
`
`Applicant.
`.‘
`
`Opposition No.
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`\.-/\2\—/\J%/%/\&\u/\./\./
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`’
`
`NOTICE 014* OPPOSITION
`
`Opposer eBay Inc.‘ (“eBay”), a Delaware corporation having its principal place of
`business at .2145 Hamilton Avenue, San Jose, California 95125, believes that it will be damaged
`by the issuance of a registration for the mark FREE-BAY, in Application Serial No. 78/536,113,
`
`filed December 21, 2004 by Applicant Kanatara, LLC (“Applicant”).
`
`eBay_ hereby opposes
`
`Applicant’s application, pursuant to Section 13 of the United.States Trademark Act, as amended,
`
`15 U.S.C. §1063.
`
`As grounds for opposition, eBay alleges that:
`
`EBAY’S BUSINESS
`
`1.
`
`eBay is the world's leading on-line marketplace. eBay currently has over 210
`
`million registered users and hosts an on-line service featuring over 105 million items offered for
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`Notice of Opposition
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`sale or bid on its Web site at www.ebay.corn at any given time. Each day, approximately 6
`
`million new items are listed for sale in over 50,000 different categories of goods and services,
`
`ranging from telecommunications equipment to computers to collectibles to cars to jewelry.
`I
`2.
`eBay makes available a variety of free products through listings on its Web site.
`
`For example, the eBay site has listings for free coins, free cosmetic bags, free clothing and
`
`accessories, free music, coupons for free consumer products, free cellu1ar—phone accessories, and
`
`numerous other free products. Copies of printouts from eBay’s Web site showing use of its mark
`
`in association with such free products, as they appeared as of November 30, 2006, are attached
`
`hereto as Exhibit A.
`
`3.
`
`Since its on-line marketplace was launched in September 1995, eBay has
`
`EBAY’S MARKS
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`continuously used the mark EBAY in interstate commerce in the United States in connection
`
`with its goods and services.
`
`4.
`
`eBay is the owner of numerous U.S. registrations for the mark EBAY on the
`
`Principal Register (in word form and in design form), the earliest of which was issued on January
`
`19, 1999, and which has obtained incontestable status under 15 U.S.C. § 1065. These
`
`-registrations -cover various goods and services.
`
`Each of these registrations is valid and
`
`subsisting. These registrations include the following (copies of the eBay registrations cited
`
`herein are attached hereto as Exhibit B):
`
`EBAY word mark (Registration No. 2,218,732) registered January 19, 1999 in International
`Class 35.
`
`EBAY word mark (Registration No. 2,367,932) registered July 18, 2000 in International Class
`28.
`
`EBAY and Design (Registration No. 2,367,895) registered July 18, 2000 in International
`Class 28.
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`0
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`I
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`0
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`EBAY and Design (claiming color) (Registration No. 2,410,023) registered December 5, 2000
`in International Class 35.
`
`EBAY and Design (Registration No. 2,420,512) registered January 16, 2001 in International
`Class 35.
`
`EBAY and Design (Registration No. 2,468,781) registered July 17, 2001 in International
`Class 9.
`
`EBAY word mark (Registration No. 2,501,043) registered October 23, 2001 in International
`Class 14.
`
`EBAY word mark (Registration No. 2,518,652) registered December 11, 2001 in International
`Class 25.
`-
`
`EBAY word mark (Registration No. 2,522,630) registered December 25, 2001 in International
`Class 20.
`I
`
`0 EBAY and Design (Registration No. 2,522,632)
`International Class 20.
`
`registered December 25, 2001 in
`
`0
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`0
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`0
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`0
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`0
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`0
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`0
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`0
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`0
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`0
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`EBAY and Design (claiming color) (Registration No. 2,526,027) registered January 1, 2002
`in International Class 25.
`‘
`
`EBAY and Design (Registration No. 2,553,773) registered March 26, 2002 in International
`Class 14.
`
`EBAY word mark (Registration No. 2,578,260) registered June 11, 2002 in International
`Class 18.
`
`EBAY and Design (Registration No. 2,578,259) registered June 11, 2002 in International
`Class 18.
`-
`
`EBAY and Design (Registration No. 2,583,312) registered June 18, 2002 in International
`Class 28.
`
`EBAY word mark (Registration No. 2,592,515) registered July 9, 2002 in International Class
`38.
`
`EBAY and Design (Registration No. 2,592,514) registered July 9, 2002 in International Class
`38.
`-
`
`EBAY word mark (Registration No. 2,604,374) registered August 6, 2002 in International
`Class 21.
`
`EBAY and Design (Registration No. 2,604,375) registered August 6, 2002 in International
`Class 21.
`
`EBAY and ‘Design (Registration No. 2,662,118)
`International Class 28.
`
`registered December
`
`17, 2002 in
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`0
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`0
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`0
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`0
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`0
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`EBAY word mark (Registration No. 2,662,130) registered December 17, 2002 in International
`Class 28.
`
`EBAY word mark (Registration No. 2,666,767) registered December 24, 2002 in International
`Class 25 .
`
`EBAY and Design (Registration No. 2,672,470) registered January 7, 2003 in International
`Class 25.
`
`EBAY word mark (Registration No. 2,700,675) registered March 25, 2003 in International
`Class 9.
`
`EBAY word mark (Registration No. 2,700,836) registered, March 25, 2003 in International
`Class 16.
`
`I 0
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`EBAY and Design (Registration No. 2,729,649) registered June 24, 2003 in International
`Class 16.
`s
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`I
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`0
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`-
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`0
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`0
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`I
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`I
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`0
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`0
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`0
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`0
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`EBAY and Design (Registration No. 2,735,542) registered July 8, 2003 in International Class
`38.
`'
`
`EBAY word mark (Registration No. 2,737,342) registered July 15, 2003 in International Class
`6 28.
`
`EBAY word mark (Registration No. 2,744,717) registered July 29, 2003 in International Class
`38.
`
`EBAY and Design (Registration No. 2,759,145)
`International Class 14 (jewelry).
`
`'
`
`registered September 2, 2003
`
`in
`
`EBAY and Design (Registration No. 2,759,146) registered September 2, 2003 in International
`-Class 9.
`
`EBAY word mark (Registration No. 2,759,150) registered September 2, 2003 in International
`Class 9.
`'
`
`EBAY word mark (Registration No. 2,791,591) registered December 9, 2003 in International
`Class 14.
`
`EBAY word mark (Registration No. 2,810,863) registered February 3, 2004 in International
`Class 16.
`
`EBAY and Design (Registration No. 2,840,471) registered May 11,2004 in International
`Class 16.
`
`EBAY and Design (Registration No. 2,840,569) registered May 11, 2004 in International
`Class 41.
`
`EBAY and Design (Registration No. 2,840,738) registered May 11, 2004 in International _
`Class 30.
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`0
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`0
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`0
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`0
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`0
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`EBAY word mark (Registration No. 2,847,996) registered June 1, 2004 in International Class.
`30.
`.
`'
`
`.
`
`EBAY word mark (Registration No. 2,913,352) registered December 21, 2004 in International
`Class 6.
`'
`1
`
`EBAY word mark (Registration.No. 2,913,401) registered December 21, 2004 in Intemational
`Class 41.
`
`EBAY and Design (Registration No. 2,913,355) Registered December 21, 2004 in
`International Class 6.
`
`EBAY word mark (Registration No. 2,926,481) registered February 15, 2005 in International
`Class 41.
`
`5.
`
`eBay also has common law rights in its EBAY and EBAY and Design marks, and
`
`uses these marks in connection with a wide variety of goods‘ and services, including making
`available free items through listings on the eBas site.
`
`6.
`
`In addition, eBay owns a number of U.S.
`
`registrations and pending U.S.
`
`applications to register marks that incorporate the EBAY or EBAY and Design marks, including
`
`the marks EBAY ADCONTEXT (Application Nos. 78/869,309, 78/869,318 and 78/869,323);
`
`EBAY EXPRESS (Application Nos. 78/795,222, 78/795,231, 78/829,199; 78/829,200 and
`
`78/829,203); EBAY EXPRESS ._& Design (Application Nos. 78/829,163, 78/829,195 and
`
`78/829,198); EBAY LIVE! (Registration Nos. 2,933,021, 2,913,397, 2,913,227, and 2,913,229);
`
`EBAY POWER SELLERS & Design (Registration No. 2,514,362); EBAY PREMIER & Design
`
`(Registration No. 2,555,505); EBAY.COM (Registration No. 2,700,834); YOU CAN GET IT
`
`ON EBAY (Application No. 78/733,648); and YOU CAN SELL IT ON EBAY (Application No. ‘
`
`78/766,592. All of eBay,’s marks that consist of or incorporate the term EBAY will hereafter be
`
`referred to as the “EBAY Marks.”
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`7.
`
`EBAY is a fanciful mark, and thus highly distinctive. The term EBAY has no
`
`descriptive meaning as applied to an online marketplace or any of the other goods and services
`
`covered by eBay’s registrations or in connection with which it uses the EBAY Marks.
`
`8.
`
`eBay has expended considerable effort and expense in promoting the EBAY
`
`Marks,
`
`goods and services offered in connection with these marks, both in the United States
`
`and internationally, typically spending hundreds of millions of dollars in advertising per year.
`
`9.
`
`In addition to its own advertising efforts, eBay has been the subject of thousands
`
`of unsolicited stories in television, radio, and print media, highlighting eBay’s innovative and
`
`successful efforts in online person-togperson trading. eBay has also received numerous awards
`
`and recognitions, including a listing in BusinessWeek’s “The Global Brand Scoreboard’s The
`Top 100 Brands” — ranking eBay’s brand as 60”‘, 55”‘ and 47"‘ strongestbrand in the world — in
`
`August 2004, August 2005, and August 2006 respectively; Fortune magazine’s “Top 100 Fastest
`
`Growing Companies” (ranking eBay as 8”‘) in August 2003; BusinessWeek Online, “The eBay
`
`Economy” in August 2003; Red Herring magazine’s “The Top 100 Companies Most'Likely to
`
`Change the World” in May 2001; Harvard Business Schoo1’s “Entrepreneurial Company of the
`
`Year” in May 2000; Forbes magazine’s “Favorite Auction Site” in December 1999; Business
`Week magazine’s “Info Tech 100” in July 1999; Ad Week magazine’s “Top Marketers of the
`Year” in May 1999; and The Webby Award’s “Top E-Commerce Site’.’ in March 1999.
`
`10.
`
`The enthusiasm for eBay’s services ‘abroad has been so overwhelming that eBay
`
`maintains separate, country-specific Web sites for Australia, Austria, Belgium, Canada, China,
`
`France, Germany, Hong Kong, Ireland, Italy, Japan, Korea, Malaysia, the Netherlands, New
`
`Zealand, Singapore, Spain, Sweden, Switzerland, Taiwan, and the U.K., and it has related Web
`
`sites in Argentina, Brazil, Chile, Colombia, Ecuador, Mexico, Peru, Uruguay, Venezuela, India
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`and Korea. eBay’s services are not limited to these foreign countries, however, as eBay serves
`
`customers in many other countries as well.
`
`11.
`
`As a result of eBay’s widespread use of the EBAY Marks worldwide, extensive
`
`Internet, television, and print advertising and promotion, continuous and unsolicited media
`
`coverage, the high degree of consumer recognition of the EBAY Marks, the strong and loyal
`
`base of customers that eBay enjoys for its services, numerous trademark registrations, and the
`
`absence of any material use of any highly similar mark by others, among other factors, the
`
`EBAY Marks are famous within the meaning of Section 43(c) of the United States Trademark
`
`Act, 15 U.S.C. §1125(c).
`
`DISTINCTIVENESS OF THE TERM “BAY”
`
`12.
`
`The dominant component of the famous EBAY Marks is the term BAY, which is
`
`arbitrary and highly distinctive of the goods and services covered by eBay’s registrations or in
`
`connection with which it uses the EBAY Marks.
`
`13.
`
`Following on the fame and success of eBay, a number of entities have attempted
`
`to adopt names and marks that combine the generic term for what the particular service or Web
`
`site offers or provides with the distinctive BAY suffix of the EBAY Marks, to create a “generic
`
`plus BAY” mark. Examples of such marks, the use of which eBay has successfully put a stop to,
`include: AL'l‘ERNABAY (site offering goods related to alternative lifestyles), AUTOBAY (site
`
`advertising automobiles for sale), BOATBAY (site offering a “nautical search portal”),
`
`BRICKBAY (site offering Lego® bricks), CARBAY (site advertising automobiles for sale),
`
`EGGBAY (site offering items for egg farmers), EMERGENCYBAY (site offering emergency
`
`rescue goods), EVENTSBAY (online events guide), FOTOBAY (site offering photography-
`
`related services); FREEBAY (sitemaking available free goods and services); JEWELRYBAY
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`(site offering diamonds and fine jewelry), MEXBAY (Mexican-themed site), MILITARYBAY
`(site offering military goods), NAZIBHAY (site offering Nazi memorabilia), SELLINGIBAY (site
`listing auctions, classifieds, and want ads), RENTBAY (site offering rental listings), XBAY (site
`
`offering sexually-oriented material), among others.
`
`14.
`
`The United States Patent and Trademark Office (“PTO”) has recognized that the
`
`dominant component of the EBAY Marks is the term BAY, refusing third—party registrations on
`
`the ground that the use of BAY combined with a generic or descriptive term is likely to cause
`
`confusion with the EBAY "Marks.
`
`15.
`For example, in an Office Action dated June 21,2005, in Application Serial No.
`78/516,920 for the mark FLEABAY for “flea markets,” the PTO refused registration because
`“applicant’s mark, when used on or i11 connection with the identified goods or "services, so
`
`resembles the marks in U.S. Registration Nos. 2218732, 2420512, 2218732, 2514362, 2555505
`and 2913227 (all owned, by [eBay]) as to be likely _to cause confusion, to cause mistake, or to
`
`deceive.” A true and correct copy of that Office Action is attached hereto as Exhibit C.
`
`16.
`
`Similarly, in an Office Action dated August 24, 2005, in Application Serial No.
`
`78/552,094 for the mark BAY BAZAAR for “[b]usiness management assistance and particularly
`
`carrying out tasks necessary for the smooth conduct of sales by auction,” the PTO refused
`
`registration “because of a likelihood of confusion with the marks in U.S. Registration Nos.
`
`2555505, 2218732, 2410023 and 2420512,” all of which similarly are owned by eBay. A true
`
`and correct copy of that Office Action is attached hereto as Exhibit D.
`
`17.
`
`The PTO has also recognized the distinctiveness of the BAY component
`
`in
`
`refusing registration to the following marks in light of the EBAY- mark:
`
`IBAY (Serial No.
`
`76/ 195,016) and TBAY AUCTION (Serial No. 78/059,732).
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`18.
`
`If others could freely use “generic plus BAY” marks for entities that offer or
`
`advertise their goods or services, the suffix BAY could become a generic term for “marketplace”
`or “location providing items for sale.” That would dilute the distinctiveness of the famous
`
`EBAY Marks to the point that they cease to function as unique and distinctive identifiers of
`eBay’s goods or services, to eBay’s severe detriment.
`.
`B
`
`APPLICANT AND ITS PENDING APPLICATION
`
`19.
`
`Applicant seeks to register the word mark FREE-BAY in connection with
`
`“providing an Internet web site at which users can give away free items they no longer need or
`
`request free items needed” in International Class 35., This application was published in the
`
`Official Gazette of the PTO on November 7, 2006.
`
`20.
`
`As Applicant explains on its Web site, Applicant is using the FREE-BAY Mark in
`
`connection with services whereby users may “Post free items to GIVE and free items you
`
`NEED.” Attached hereto as Exhibit E is a true and correct copy of Applicant’s Web site at the
`
`Uniform Resource Locator http://www.ka'natara.com/free—bay/freebay.php, as it appeared as of
`
`November 30, 2006.
`
`21.
`
`The FREE-BAY Mark is substantially similar to the EBAY Marks. Specifically,
`
`Applicant’s Mark follows the same pattern as the many “generic plus BAY” marks that surfaced
`
`following the success of eBay; the term FREE is generic or descriptive of Applicant’s services
`
`(the provision of free products and services), while the term BAY is completely arbitrary as
`
`applied to eBay’s various services. Thus, by combining the generic term FREE with the I
`
`arbitrary term BAY — the dominant and most distinctive part of the famous mark EBAY -
`
`Applicant has created a “generic plus BAY” mark, which calls to mind eBay.
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`22.
`
`The services offered under the FREE—BAY Mark are similar to those provided by
`
`eBay. For example, just as eBay makes available a variety of free products through listings on
`its Web site, Applicant similarly purports to provide an Internet Web site where users can obtain
`
`or give away free items. See Exhibit E.
`
`23.
`
`' Upon information and belief, Applicant selected the FREE—BAY Mark with
`
`knowledge of and intent to cause confusion with the EBAY Marks.
`
`24.
`
`Applicant’s depiction of the FREE~BAY Mark with a hyphen between the words
`
`FREE and BAY increases the false suggestion of a connection with eBay and the EBAY Marks,
`
`because it emphasizes the "arbitrary BAY component of the EBAY mark and suggests that the
`
`FREE—BAY Mark is intended to be seen as a “free eBay.” Moreover, it is extrernelycommon
`for the eBay mark to be displayed on the Internet
`a hyphen, i.e., “e-Bay” or “e—bay.” A
`
`search for “e—bay” from the Google® Web site,
`in quotes so that this exact punctuation is
`searched, returns over 2,700,000 search results in which that term was contained in the text, or
`hidden data, for numerous Web pages. Printouts of thelfirst five results pages of these searches,
`
`as they appeared as of November 30,2006, are attached as Exhibit F.
`
`25.
`
`26.
`
`eBay is not affiliated or connected with Applicant or its services.
`
`There is no issue as to priority of use. eBay began using its EBAY.mark, and
`
`enjoys priority as a result of the filing dates of its trademark registrations, well prior to the filing
`
`date of the application for the FREE—BAY Mark (December .21, 2004).
`
`FIRST GROUND FOR OPPOSITION:
`
`LIKELIHOOD or CONFUSION
`
`27.
`
`eBay incorporates by reference paragraphs 1 through 26, inclusive, as if fully set
`
`forth here.
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`28.
`
`The mark Applicant proposes to register, FREE—BAY,
`
`is highly similar to the
`
`EBAY Marks
`
`in appearance,_ sound, meaning, and commercial
`
`impression, because it
`
`incorporates the whole of the EBAY mark and includes a highly descriptive or generic term,
`
`“free,” that merely serves to emphasize the dominant and most distinctive part of the EBAY
`
`Marks, “bay.” Moreover, the dominant “EE-BAY” portion of Applicant’s FREE-BAY mark is
`
`phonetically identical to eBay’s EBAY Mark. Furthermore, when spoken aloud, Applicant’s
`
`Mark, FREE—BAY, rhymes with eBay’s mark, EBAY, further emphasizing the similarity
`between Applican_t’s Mark and the EBAYiMarks.
`
`29.
`
`The services offered by each party are closely related. According to the
`
`identification of services in the application, Applicant uses the FREE~BAY mark in connection
`
`with the provision of others’ free goods on the Internet. eBay similarly makes available a variety
`
`of free goods through listings on its Web site, including free coins, free cosmetic bags, free
`
`clothing and accessories, free music, coupons for free consumer products, and free cellular-
`
`phone accessories.
`
`30.
`
`Both eBay and Applicant offer their services-through the same channel of trade —
`
`the Internet. The instantaneous nature of Internet navigation, the speed at which people navigate
`
`and are presented with advertisements, images and/or data on the Internet, and the speed at
`
`which consumers perform transactions on the Internet, all tend to increase the risk of confusion
`
`or mistake about the source of a product or service.
`
`31.
`
`Upon information and belief, Applicant chose the FREE-BAY Mark with
`
`knowledge "of, and the intent to call to mind or create a likelihood of‘confusion with regard to,
`
`the eBay Web site and the EBAY Marks.
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`32.
`
`Registration of Applicant’s Mark will injure eBay by causing the public to be
`
`confused or mistaken into believing that the services provided by Applicant are endorsed or
`
`sponsored by eBay. eBay has no control over the ‘nature and quality of the services offered by
`
`Applicant under the FREE-BAY Mark, and eBay’s reputation and goodwill will be damaged and
`
`the value of the EBAY Marks jeopardized, all to eBay’s damage. Further, any defect, objection
`
`or fault found with Applicant’s services marketed under the FREE-BAY name would necessarily
`
`reflect upon and seriously injure the reputation that eBay has established for the goods and
`
`services it offers in connection with the EBAY Marks.
`
`33.
`
`Accordingly, registration of the mark herein opposed will damage eBay because _
`
`Applicant’s Mark is likely, when used on or in connection with the services described in the
`
`opposedapplication, to cause confusion, or to cause mistake or to deceive. Thus Applicant’s
`
`Mark is unregistrable under Sections 2(d) and 3 of the United States Trademark Act, as
`
`amended, 15 U.S.C. §§1052 and 1053, and should be refused registration.
`
`SECOND GROUND FOR OPPOSITION:
`FALSE SUGGESTION OF A CONNECTION WITH AN INSTITUTION
`
`34.
`
`eBay incorporates by reference paragraphs 1 through 33, inclusive, as if fully set
`
`forth here.
`
`'35.
`
`EBAY is the name of an “institutiori” within the meaning of Section 2(a) of the
`
`United States Trademark Act, 15 U.S.C. §1052(a).
`
`36.
`
`The public would recognize Applicant’s FREE—BAY mark as
`
`a close
`
`approximation of the name EBAY because it (1) incorporates all of the EBAY name, and (2) is
`
`sought to be registered and is used for services related to those of eBay.
`
`IOE6437 v3lSF
`
`

`
`Notice of Opposition
`Serial No. 78/536,113
`Opposition No.
`
`37.
`
`eBay is not affiliated or connected with Applicant, or with the services for which
`
`Applicant seeks registration of the FREE-BAY mark.
`
`38.
`
`I The fame and reputation of eBay is such that, when Applicant’s Mark is used with
`
`Applicant’s services, a connection with eBay would be presumed. The Patent and Trademark
`
`Office has determined that the EBAY name is sufficiently famous that Section 2(a) of the
`
`Trademark Act prohibits the registration of a mark that is similar" to EBAY. See Office Action
`
`No. 1 in the application of Ebay Securities for the mark EBAYSECURITIESCOM, Serial No.
`
`75/825,185, at page 4, attached hereto as Exhibit G.
`
`39.
`
`Accordingly, registration of the mark herein opposed will further damage eBay
`
`because Applicant’s Mark falsely suggests a connection with eBay. Thus Applicant’s Mark is
`unregistrable under Sections‘ 2(a) and 3 of the United States Trademark Act, as amended, 15
`
`U.S.C. §§1052 and 1053, and should be refused registration.
`
`THIRD GROUND FOR OPPOSITION:
`
`'
`
`~
`
`DILUTION or A FAMOUS MARK
`
`40.
`
`eBay incorporates by reference paragraphs 1 through 39, inclusive, as if fully set
`
`forth here.
`
`41.
`
`Applicant uses the FREE-BAY Mark in commerce, as stated in the application
`
`herein opposed.
`
`42.
`
`EBAY is a fanciful mark and is thus highly distinctive of eBay’s goods and
`
`services.
`
`43.
`
`eBay has used the EBAY Marks since at least September 1995 for on—line trading
`
`services, and has expanded use of the EBAY Marks to many other goods and services, as
`
`alleged.
`
`l0l6437 V3/SF
`
`

`
`Notice of Opposition
`Serial No. 78/536,113
`Opposition No.
`
`44.
`
`eBay has advertised and promoted the EBAY Marks through extensivelntemet,
`
`radio, television, and print advertising and promotion. eBay and the EBAY Marks have enjoyed
`
`extensive media attention.
`
`45.
`
`eBay has used the EBAY Marks throughout the United States'and many places
`
`around the World, via the global Internet.
`
`46.
`
`_As a result of the considerable publicity afforded the EBAY Marks, and the strong
`
`and loyal base of customers that eBay enjoys for its goods and services, the EBAY Marks have a
`high degree of consumer recognition.
`
`47.
`
`eBay is the owner of numerous U.S. registrations for the EBAY Marks.
`
`48.
`
`Apart from unauthorized infringing uses of such marks, which eBay actively and
`
`_ diligently polices through its enforcement program, there is no material use of any highly similar
`
`mark by others.
`
`49.
`Accordingly, when the public encounters the term EBAY,
`associates the term with eBay, and thus the EBAY Marks are famous.
`
`it
`
`immediately
`-
`
`50.
`
`The EBAY Marks became famous before Applicant filed its application for the
`
`FREE—BAY Mark on December 21, 2004.
`
`51.
`
`l The FREE—BAY Mark incorporates the most distinctive part of the EBAY Marks,
`
`“bay,” and its use is likely to cause dilution of the famous EBAY Marks. If Applicant and others
`
`are permitted to register marks similar to the EBAY Marks, the proliferation of such marks will
`
`blur and weaken the connection in consumers’ minds between the EBAY Marks and eBay’s
`
`goods and services. _
`
`52.
`
`Accordingly, registration of the mark herein opposed will further damage eBay by
`
`continuing to cause dilution of the distinctive quality of eBay’s famous EBAY Marks. Thus
`
`1016437 v3lSF
`
`14
`
`

`
`Notice of Opposition
`Serial No. 78/536,113
`Opposition No.
`
`Applicant’s Mark is unregistrable pursuant to Sections 2(a)(d), 3, 13, and 43(c) of the United
`
`States Trademark Act, as amended, 15 U.S.C. §§1052(a)(d), 1053, 1063, 1125, and should be
`
`refused registration.
`
`53. Wherefore, eBay prays thatthis Opposition be sustained, and that Application
`
`Serial No. 78/536,113 be refused.
`
`Please recognize the following as attorneys for eBay in this proceeding: Britt L.
`
`Anderson, Adam Barea, Keith J. Berets, Susan D. Bemey-Key, Todd S. Bontemps, John W.
`Crittenden, Janet L. Cullum,'FrankB. Goldberg, Andrew Hartman, Lisa K. Koenig, Kristin K.
`
`Manley, Anne H. Peck, Gretchen R. Stroud, and Peter J. Willsey (members of the Bar of the
`
`States of California, Colorado, Illinois or Virginia), and the firm of Cooley Godward Kronish
`
`LLP, 101 California Street, 5"‘ Floor, San Francisco, California 94111.
`
`Please address all communications to Frank B. Goldberg at the address below.
`
`In accordance with 37 C.F.R. §§ 2.101 and 2.104, a duplicate copy of this Notice of
`
`Opposition and the fee of $300.00 for one International Class are submitted herewith.
`
`Date: DecemberE,2006
`
`-
`
`'
`
`Respectfully submitted,
`
`COOLEY GODWARD KRONISH LLP
`
`Frank B. Goldberg
`
`Frank B. Goldberg
`Attorneys for Opposer
`101 California Street, 5th Floor
`San Francisco, California 94111
`
`(415) 693-2072
`
`l0l6437 v3iSF
`
`

`
`%Exhibit A
`
`

`
`eBay: 1 1979 SUSAN B ANTHONY DOLLAR & 1 BONUS
`
`COIN (item 250053...
`
`Page 1 of 3
`
` Sell
`
`I pay I registeri Signrin I siterman
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`My 123any
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`Community
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`Start new search
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`Help
`*5g—"5§fl9—§9-I--§§§-[93
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`
`' 1 1979 SUSAN B ANTHONY DOLLAR & 1 BONUS
`
`FREE COIN
`
`Hem number:250053671273 I
`
`Bidder or seller of this item? Sign in for your status
`
`Watch this item in My eBay | Email to a friend
`
`C“"e”t bid:
`
`'
`
`Seller:
`
`- 9tan.ni_e§<..:9.ins_
`
`Meet the seller
`
`E”d time?
`
`7 hours 13 mins
`( Nov-30-06 19:20:00 PST)
`Shipping costs: Check item description and-
`payment instructions or
`°°"*a°* 36"” *0’ defaiis
`United States
`Ships 102
`Item location: . SEE ALL MY ITEMS,
`United States
`‘
`5554443863 ( 153 % )
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`HI5t0|'V5
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`You can also:
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`IM or §fll._9_I1QfJ.E.2.
`
`Se one like this
`
`Feedback: 96.0% Positiv
`
`.
`
`Member:
`
`since Sep-20-I
`United States
`B—@§§§i§%@9_9.§9JS..Q9m.EE‘J
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`as Ask selier a guestion
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`§£ie_w___|_a.rg..e_.r. pi.ct.u_re.
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`
`Listing and payment details: SL935:
`
`Description
`
`1979 SUSAN B ANTHONY DOLLAR!!
`PERFECT CONDITION! I WILL SHIP IN
`PADDED MAILER TO INSURE PERFECT
`
`SHIPPING! GOOD LUCK!! PLEASE SEE
`
`
`
`Powered by eBay Turbo Lister
`
`I-ui+n-Hun: nkaxr nnn»-.11 T070 Q'I'TQA'I\T ‘D /\T\T'TT_‘l'(\i\TV" T\('\T 1' AD 1 DIWRTTTQ FDED (“fTF|\T
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`1 1 nnmnnc
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`
`eBay: 1 1979 SUSAN B ANTHONY DOLLAR & 1 BONUS FREE COIN (item 250053.‘...
`
`Page 2 of 3
`
`
`
`T_iJ_e..p9.wer of Proteactiaonfiimm__AQ_L__a.nd_eBaya.aaLaearnl..m<2re
`
`08008
`
`Shipping, payment details and return policy
`Services available
`
`Check item description and payment instructions or contact seller for details.
`
`Ships to
`United States
`
`Seller's payment instructions
`Paypal or Money Order only, I can not ship to apo's or fpo's, E will only ship to a confirmed address, I can not sl
`shiping 8. handling is $5.49 8. insurance is $1.55 If you would like insurance. I will take $1 off S & H on all order
`that are combined on the invoice with this order, thank you & have a great day.
`
`Payment methods accepted
`@ This seller, granniescoins, prefers PayPa|.
`
`
`
`a Money order/Cashiers check
`L_earn_at2.out payment ranaaeathods.
`
`Ready to bid?
`1 1979 SUSAN B ANTHONY DOLLAR & 1 BONUS FREE cow
`
`Item title:
`
`1 1979 SUSAN ANTHONY DOLLAR & 1 BONUS FREE COIN
`
`Current bid:
`
`US $0.99
`
`Your maximum bid:
`
`(Enter US $1.04 or more)
` You will confirm in the next step.
`
`eBay automatically bids on your behalf up to your maximum bid.
`Learnaaabout hiddiang-
`
`i1ff11'//001' pl-mv r-nrn/1_10'70_QTTQ Al\T_R_ A l\l'TT—l'Pll'\T'V..T\(\T T A 'D_l _Df\l\Tl TQ_l.T‘DLT'lI.‘,,("('\T'l\T
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`

`
`eBay: 1 1979 SUSAN B ANTHONY DOLLAR & 1 BONUS FREE COIN (item 2.50053...
`
`Page 3 of 3
`
`What else can you do?
`
`_i§_:_ofstem | £iajl_e_r__a_question | Add to Caiendar I figort this item 1 Printer Version | Ema
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`'
`
`Seller assumes all responsibility for listing this item.
`
`I eaaysaefieyus I
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`About eBay I Announcements I Security Center| Poiicies I Site Magi Help_
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`Copyright © 1995-2006 eBay Inc. AII Rights Reserved. Designated trademarks andbrands are the property of their respective 0‘
`Web site constitutes acceptance of the eBay LI_5e_[_Agceement,‘and l?rjyacy”,|?oi_i,cy_.
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`

`
`

`
`eBay: 6 Fantastic Clinique Items Plus Free Cosmetic Bag (item 230058109400 end time
`
`Page 1 of 7
`
`
`
`‘fihome i may i r_.ee..i.s.te_£i sigma: i siteiimap.
`Sell
`My eBay
`Commu nity
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`Start new search
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`Help
`'
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`FDUJEREU B‘!
`7“
`tegemt ease»:
`
`
`"Z B/QQKIQ list
`6 Fantastic Clinique Items Plus Free Cosmetic Bag
`
`Listed in category: Health 8: Beauty > Fragrances > Women's Fragrances > Mixed Lots
`
`Item number: 230058109400‘
`
`Seller of this item? Sign in for your status
`
`Watch this item in My eBay | Email to a friend
`
`(Approximately US $21.42)
`
`Feedback: 99.7% Positiv
`
`Seller:
`
`iQve_§_!a_ri§_e. ( ¥
`
`
`
`
`End time:
`
`‘E1 mins 37 secs
`
`Member:
`
`
`
`since Aug-06-(
`United Kingdoi
`Registered as
`private seller
`
`
`
`( Nov-30-06 12:19:09 PST)
`
`
`
`Europe, United States,
`Australia. Canada
`
`Item location: Selby, United Kingdom
`
`History:
`.i1._bi.ds
`
`Ships to:
`
`at R