Trademark Trial and Appeal Board Electronic Filing System. htfQJ/estta.usQto.gov
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`
`Notice of Opposition
`
`Opposer Information
`
`zvngaInc-
`11/04/2012
`
`Granted to Date
`
`of previous
`extension
`
`Address
`
`San Francisco, CA 94103‘ UNITED STATES
`
`699 Eighth Street
`
`|itigation@ip|a.com Phone:8582720220
`
`
`Attorney
`information
`
`John M. Kim and Joshua J. Richman
`IP Legal Advisors, P.C.
`4445 Eastgate Mall Suite 200
`San Diego, CA 92121
`UNITED STATES
`
`Applicant Information
`
`Application No
`
`85378263
`
`Publication date
`
`05/08/2012
`
`Opposition Filing
`Date
`
`1 1/05/2012
`
`Opposition
`Period Ends
`
`1 1/04/2012
`
`Applicant
`
`Card Ape, Inc.
`1134 Kline Street
`La Jolla, CA 92037
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 009.
`
`All goods and services in the class are opposed, namely: Computer application software for mobile
`devices, namely, software for consumers to send messages to others, organize events, and invite
`others to events; computer application software for mobile devices, namely, software for providing
`advertising services, promoting the goods and services of others, and delivering rea|—time, local offers
`to consumers
`
`Class 045.
`
`Class 035.
`
`All goods and services in the class are opposed, namely: Advertising services; advertising services,
`namely, providing advertising via online applications; advertising and marketing services, namely,
`promoting the goods and services of others; advertising services, namely, delivering rea|—time, local
`offers to consumers; advertising services, namely, providing advertising to mobile devices;
`advertising services, namely, providing advertising through social networks; advertising services,
`namely, delivering brand promotions and offers to consumers
`Class 042.
`
`All goods and services in the class are opposed, namely: Application service provider featuring
`application programming interface (API) software for providing advertising of goods and services
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA503676
`ESTTA Tracking number:
`11/05/2012
`
`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
`extension
`Address
`
`Zynga Inc.
`11/04/2012
`
`699 Eighth Street
`San Francisco, CA 94103
`UNITED STATES
`
`Attorney
`information
`
`John M. Kim and Joshua J. Richman
`IP Legal Advisors, P.C.
`4445 Eastgate Mall Suite 200
`San Diego, CA 92121
`UNITED STATES
`litigation@ipla.com Phone:8582720220
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85378263
`11/05/2012
`
`Publication date
`Opposition
`Period Ends
`
`05/08/2012
`11/04/2012
`
`Card Ape, Inc.
`1134 Kline Street
`La Jolla, CA 92037
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 009.
`All goods and services in the class are opposed, namely: Computer application software for mobile
`devices, namely, software for consumers to send messages to others, organize events, and invite
`others to events; computer application software for mobile devices, namely, software for providing
`advertising services, promoting the goods and services of others, and delivering real-time, local offers
`to consumers
`Class 035.
`All goods and services in the class are opposed, namely: Advertising services; advertising services,
`namely, providing advertising via online applications; advertising and marketing services, namely,
`promoting the goods and services of others; advertising services, namely, delivering real-time, local
`offers to consumers; advertising services, namely, providing advertising to mobile devices;
`advertising services, namely, providing advertising through social networks; advertising services,
`namely, delivering brand promotions and offers to consumers
`Class 042.
`All goods and services in the class are opposed, namely: Application service provider featuring
`application programming interface (API) software for providing advertising of goods and services
`Class 045.
`
`

`
`All goods and services in the class are opposed, namely: On-line social networking services where
`
`customers can send messages to others, organize events, and invite others to events
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Other
`
`
`
`Trademark Act section 2(d)
`Trademark Act section 43(6)
`Applicant lacked a bona fide intent to use its
`mark in interstate commerce at the time it filed its
`
`Application
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`3704619
`
`Application Date
`
`02/09/2009
`
`Word Mark
`
`CHESS WITH FRIENDS
`
`Design Mark
`
`Date
`
`Description of
`Mark
`
`Goods/Services
`
`Class 009. First use: First Use: 2008/11/06 First Use In Commerce: 2008/11/06
`
`Game software
`
`U.S. Registration
`
`3704620
`
`Application Date
`
`02/09/2009
`
`Registration Date
`
`1 1/03/2009
`
`Foreign Priority
`Date
`
`Word Mark
`
`GAMES WITH FRIENDS
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`Class 009. First use: First Use: 2008/11/06 First Use In Commerce: 2008/11/06
`
`All goods and services in the class are opposed, namely: On-line social networking services where
`customers can send messages to others, organize events, and invite others to events
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution
`Other
`
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`Applicant lacked a bona fide intent to use its
`mark in interstate commerce at the time it filed its
`Application
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`3704619
`
`11/03/2009
`
`Word Mark
`Design Mark
`
`CHESS WITH FRIENDS
`
`Application Date
`
`02/09/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2008/11/06 First Use In Commerce: 2008/11/06
`Game software
`
`U.S. Registration
`No.
`Registration Date
`
`3704620
`
`11/03/2009
`
`Word Mark
`Design Mark
`
`GAMES WITH FRIENDS
`
`Application Date
`
`02/09/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2008/11/06 First Use In Commerce: 2008/11/06
`
`

`
`‘ 3
`
`Application Date
`
`09/04/2009
`
`U.S. Registration
`.°
`
`924543
`
`Registration Date
`
`03/01/201 1
`
`Foreign Priority
`Date
`
`Word Mark
`
`WORDS WITH FRIENDS
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`Class 009. First use: First Use: 2009/07/19 First Use In Commerce: 2009/07/19
`
`Electronic game software for wireless devices; electronic game software for
`handheld electronic devices; computer software platforms for social networking
`
`U.S. Registration
`
`4211214
`
`Application Date
`
`06/23/2011
`
`Registration Date
`
`09/18/2012
`
`Foreign Priority
`Date
`
`05/10/201 1
`
`Word Mark
`
`HANGING WITH FRIENDS
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`Class 009. First use: First Use: 2011/06/09 First Use In Commerce: 2011/06/09
`
`Computer game software; video game programs; and computer software
`platforms for social networking; interactive video game programs; downloadable
`electronic game programs and computer software platforms for social
`networking that may be accessed via the Internet, computers and wireless
`devices; computer software to enable uploading, posting, showing, displaying,
`tagging, blogging, sharing or othenlvise providing electronic media or information
`in the fields of virtual communities, electronic gaming, entertainment, and
`general interest via the Internet or other communications networks with third
`parties
`
`Game software
`
`U.S. Registration
`No.
`Registration Date
`
`3924543
`
`03/01/2011
`
`Word Mark
`Design Mark
`
`WORDS WITH FRIENDS
`
`Application Date
`
`09/04/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2009/07/19 First Use In Commerce: 2009/07/19
`Electronic game software for wireless devices; electronic game software for
`handheld electronic devices; computer software platforms for social networking
`
`U.S. Registration
`No.
`Registration Date
`
`4211214
`
`09/18/2012
`
`Word Mark
`Design Mark
`
`HANGING WITH FRIENDS
`
`Application Date
`
`06/23/2011
`
`Foreign Priority
`Date
`
`05/10/2011
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2011/06/09 First Use In Commerce: 2011/06/09
`Computer game software; video game programs; and computer software
`platforms for social networking; interactive video game programs; downloadable
`electronic game programs and computer software platforms for social
`networking that may be accessed via the Internet, computers and wireless
`devices; computer software to enable uploading, posting, showing, displaying,
`tagging, blogging, sharing or otherwise providing electronic media or information
`in the fields of virtual communities, electronic gaming, entertainment, and
`general interest via the Internet or other communications networks with third
`parties
`
`

`
`Class 041. First use: First Use: 2011/06/09 First Use In Commerce: 2011/06/09
`
`Computer and electronic games provided online, enhancements within online
`computer and electronic games, and game applications within online computer
`and electronic games; virtual environments in which users can interact through
`social games for recreational, leisure or entertainment purposes
`
`U.S. Registration
`No.
`
`4207352
`
`Registration Date
`
`09/11/2012
`
`Application Date
`
`06/23/2011
`
`Foreign Priority
`Date
`
`Word Mark
`
`HANG NG WITH FRIENDS
`
`Design Mark
`
`Description of
`
`Goods/Services
`
`The mark consists of the letters "hang" followed by a shadow image of a person
`holding four balloons followed by the letters "ng" followed by the word "with" over
`the word "friends" within a thought bubble.
`Class 009. First use: First Use: 2011/06/08 First Use In Commerce: 2011/06/08
`
`Computer game software; computer game programs; electronic game programs;
`interactive video game programs; computer software platforms for social
`networking; computer software to enable uploading, posting, showing,
`displaying, tagging, blogging, sharing or otherwise providing electronic media or
`information in the fields of virtual communities, electronic gaming, entertainment,
`and general interest via the Internet or other communications networks with third
`parties
`Class 041. First use: First Use: 2011/06/08 First Use In Commerce: 2011/06/08
`
`Computer and electronic games provided online, enhancements within online
`computer and electronic games; information relating to computer games
`provided online; virtual environments in which users can interact through social
`games for recreational, leisure or entertainment purposes
`
`U.S. Registration
`No.
`
`4161430
`
`Registration Date
`
`06/19/2012
`
`Application Date
`
`01/05/2012
`
`Foreign Priority
`Date
`
`11/02/2011
`
`Word Mark
`
`SCRAMBLE WITH FRIENDS
`
`Class 041. First use: First Use: 2011/06/09 First Use In Commerce: 2011/06/09
`Computer and electronic games provided online, enhancements within online
`computer and electronic games, and game applications within online computer
`and electronic games; virtual environments in which users can interact through
`social games for recreational, leisure or entertainment purposes
`
`U.S. Registration
`No.
`Registration Date
`
`4207352
`
`09/11/2012
`
`Word Mark
`Design Mark
`
`HANG NG WITH FRIENDS
`
`Application Date
`
`06/23/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the letters "hang" followed by a shadow image of a person
`holding four balloons followed by the letters "ng" followed by the word "with" over
`the word "friends" within a thought bubble.
`Class 009. First use: First Use: 2011/06/08 First Use In Commerce: 2011/06/08
`Computer game software; computer game programs; electronic game programs;
`interactive video game programs; computer software platforms for social
`networking; computer software to enable uploading, posting, showing,
`displaying, tagging, blogging, sharing or otherwise providing electronic media or
`information in the fields of virtual communities, electronic gaming, entertainment,
`and general interest via the Internet or other communications networks with third
`parties
`Class 041. First use: First Use: 2011/06/08 First Use In Commerce: 2011/06/08
`Computer and electronic games provided online, enhancements within online
`computer and electronic games; information relating to computer games
`provided online; virtual environments in which users can interact through social
`games for recreational, leisure or entertainment purposes
`
`U.S. Registration
`No.
`Registration Date
`
`4161430
`
`06/19/2012
`
`Application Date
`
`01/05/2012
`
`Foreign Priority
`Date
`
`11/02/2011
`
`Word Mark
`
`SCRAMBLE WITH FRIENDS
`
`

`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`Class 009. First use: First Use: 2012/01/04 First Use In Commerce: 2012/01/05
`
`Computer game software; computer game programs; electronic game programs;
`interactive video game programs; computer software platforms for social
`networking; computer software to enable uploading, posting, showing,
`displaying, tagging, blogging, sharing or otherwise providing electronic media or
`information in the fields of virtual communities, electronic gaming, entertainment,
`and general interest via the Internet or other communications networks with third
`parties; magnetic encoded gift cards
`Class 041. First use: First Use: 2012/01/04 First Use In Commerce: 2012/01/05
`
`Computer and electronic games provided online, enhancements within online
`computer and electronic games; information relating to computer games
`provided online; virtual environments in which users can interact through social
`games for recreational, leisure or entertainment purposes
`
`page ) bytes )
`
`1 1
`
`Attachments
`
`77666163#TMSN.jpeg
`
`77666193#TMSN.jpeg E
`
`page) bytes)
`1 page) bytes)
`77820321#TMSN.jpeg (
`85354857#TMSN.jpeg 1page) bytes)
`85354841#TMSN.jpeg 1page) bytes)
`85509326#TMSN.jpeg ( 1 page) bytes)
`2012-11-05 — Notice of Opposition (BENEFITS WITH FR|ENDS).pdf ( 7 pages
`)(113313 bytes)
`Exhibit A (WITH FRIENDS).pdf (25 pages )(5796643 bytes)
`
`( (
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Certificate of Service
`
`was/2012
`
`/Gregory T. Bradford/
`Gregory T. Bradford
`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2012/01/04 First Use In Commerce: 2012/01/05
`Computer game software; computer game programs; electronic game programs;
`interactive video game programs; computer software platforms for social
`networking; computer software to enable uploading, posting, showing,
`displaying, tagging, blogging, sharing or otherwise providing electronic media or
`information in the fields of virtual communities, electronic gaming, entertainment,
`and general interest via the Internet or other communications networks with third
`parties; magnetic encoded gift cards
`Class 041. First use: First Use: 2012/01/04 First Use In Commerce: 2012/01/05
`Computer and electronic games provided online, enhancements within online
`computer and electronic games; information relating to computer games
`provided online; virtual environments in which users can interact through social
`games for recreational, leisure or entertainment purposes
`
`Attachments
`
`77666163#TMSN.jpeg ( 1 page )( bytes )
`77666193#TMSN.jpeg ( 1 page )( bytes )
`77820321#TMSN.jpeg ( 1 page )( bytes )
`85354857#TMSN.jpeg ( 1 page )( bytes )
`85354841#TMSN.jpeg ( 1 page )( bytes )
`85509326#TMSN.jpeg ( 1 page )( bytes )
`2012-11-05 - Notice of Opposition (BENEFITS WITH FRIENDS).pdf ( 7 pages
`)(113313 bytes )
`Exhibit A (WITH FRIENDS).pdf ( 25 pages )(5796643 bytes )
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Certificate of Service
`
`Signature
`Name
`Date
`
`/Gregory T. Bradford/
`Gregory T. Bradford
`11/05/2012
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Opposition No. __________
`
`
`
`Mark: BENEFITS WITH FRIENDS
`Serial No. 85378263
`Filing Date: July 22, 2011
`Published: May 8, 2012
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`Zynga Inc.,
`
`
`v.
`
`Card Ape, Inc.,
`
`
`Opposer,
`
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`
`
`
`
`Opposer Zynga Inc., (“Opposer”), a Delaware corporation with its principal place
`
`of business at 699 Eighth Street, San Francisco, CA 94103, believes that it would be
`
`damaged by issuance of a registration for the trademark BENEFITS WITH FRIENDS as
`
`applied for in Application Serial No. 85378263 (the “Application”), by Card Ape, Inc.
`
`(the “Applicant”). Accordingly, Opposer, by and through its attorneys, hereby opposes
`
`the Application on the following grounds:
`
`1.
`
`Opposer is the world’s leading developer of online social games playable
`
`on computers and wireless devices. Over 290 million people from over 175 countries
`
`play Opposer’s games each month. It is estimated that over 10% of the world’s internet
`
`population plays Opposer’s games each month. Since the launch of its first online game
`
`in 2007, Opposer has continued to bring new games to market with great success.
`
`
`
`1
`
`

`
`2.
`
`Opposer is the owner of the following U.S. trademark registrations
`
`(“Opposer’s Registrations”):
`
`Mark
`CHESS WITH FRIENDS
`GAMES WITH FRIENDS
`WORDS WITH FRIENDS
`
`Reg. No.
`3704619
`3704620
`3924543
`
`HANGING WITH FRIENDS
`
`4211214
`
`Filing Date
`February 9, 2009
`February 9, 2009
`September 4, 2009
`June 23, 2011
`
`Registration Date
`November 3, 2009
`November 3, 2009
`March 1, 2011
`September 18, 2012
`
`4207352
`
`June 23, 2011
`
`September 11, 2012
`
`(HANGING WITH FRIENDS
`Stylized)
`SCRAMBLE WITH FRIENDS 4161430
`
`January 5, 2012
`
`June 19, 2012
`
`
`Copies of Opposer’s Registrations are enclosed as Exhibit A, along with print-outs from
`
`the Trademark Office’s electronic database showing the current status and title of the
`
`registrations.
`
`3.
`
`Opposer is also the owner of the following U.S. pending trademark
`
`applications (“Opposer’s Applications”):
`
`Mark
`ZYNGA WITH FRIENDS
`
`Ser. No.
`85187566
`
`Filing Date
`November 30, 2010
`
`
`(CHESS WITH FRIENDS Stylized)
`
`
`(GAMES WITH FRIENDS Stylized)
`
`85216482
`
`January 12, 2011
`
`85216480
`
`January 12, 2011
`
`85216471
`
`January 12, 2011
`
`
`(WITH FRIENDS Stylized)
`
`
`
`2
`
`

`
`
`(WORDS WITH FRIENDS Stylized)
`WORDS WITH FRIENDS
`WITH FRIENDS
`WITH FRIENDS
`
`
`
`85216483
`
`January 12, 2011
`
`85223713
`85296482
`85361265
`
`January 21, 2011
`April 15, 2011
`June 30, 2011
`
`4.
`
`The games that Opposer offers under its WITH FRIENDS marks comprise
`
`a family of distinctive and well recognized trademarks, sharing the common suffix WITH
`
`FRIENDS. These games are played by millions of people each day on computers and
`
`wireless devices throughout the United States and the world and the success and
`
`popularity of the games has resulted in significant media coverage.
`
`5.
`
`Through extensive sales, advertising, promotion and unsolicited media
`
`coverage, Opposer’s WITH FRIENDS marks are famous and became famous before
`
`Applicant filed the Application. Furthermore, Opposer’s family of WITH FRIENDS
`
`marks is famous and became famous before Applicant filed the Application.
`
`6.
`
`On July 22, 2011, Applicant filed the Application to register the following
`
`trademark on the Principal Register:
`
`Mark
`BENEFITS WITH FRIENDS
`
`Ser. No.
`85378263
`
`
`
`3
`
`Class/Goods
`Class 9: Computer application software
`for mobile devices, namely, software for
`consumers to send messages to others,
`organize events, and invite others to
`events; computer application software
`for mobile devices, namely, software for
`providing
`advertising
`services,
`promoting the goods and services of
`others, and delivering real-time, local
`offers to consumers
`
`
`

`
`services;
`35: Advertising
`Class
`advertising services, namely, providing
`advertising via online applications;
`advertising and marketing
`services,
`namely, promoting
`the goods and
`services of others; advertising services,
`namely, delivering real-time, local offers
`to consumers; advertising
`services,
`namely, providing advertising to mobile
`devices; advertising services, namely,
`providing advertising
`through social
`networks; advertising services, namely,
`delivering brand promotions and offers
`to consumers
`
`Class 42: Application service provider
`featuring
`application
`programming
`interface (API) software for providing
`advertising of goods and services
`
`Class 45: On-line social networking
`services where customers can send
`messages to others, organize events, and
`invite others to events
`
`
`Applicant’s Application was published for opposition in the Official Gazette on May 8,
`
`2012.
`
`7.
`
`Opposer’s rights are senior to any rights that Applicant may allege to have
`
`in its BENEFITS WITH FRIENDS mark because (a) Opposer’s Registrations registered
`
`before Applicant’s Application registered; (b) Opposer’s Applications were filed before
`
`the filing date of Applicant’s Application; and/or (c) on information and belief, Applicant
`
`did not use its mark in commerce prior to the filing dates of Opposer’s Registrations
`
`and/or the filing dates of Opposer’s Applications.
`
`
`
`4
`
`

`
`8.
`
`Applicant’s registration and use of BENEFITS WITH FRIENDS is likely
`
`to cause confusion or mistake or to deceive, or to create the false impression that
`
`Applicant’s goods are provided by, related to, endorsed by, or associated with Opposer,
`
`or otherwise cause injury to Opposer’s rights in its individual WITH FRIENDS marks,
`
`and its family of WITH FRIENDS marks, in violation of Lanham Act §2(d) (15 U.S.C.
`
`§1052(d)), with consequent damage to Opposer and the public.
`
`9.
`
`Upon information and belief, Applicant lacked a bona fide intent to use its
`
`BENEFITS WITH FRIENDS mark in interstate commerce at the time it filed its
`
`Application because on the date the Application was filed, Applicant possessed no
`
`documentary evidence showing that it had an intent to use the mark in United States
`
`commerce.
`
`10.
`
`That games that Opposer offers under its WITH FRIENDS marks have
`
`millions of daily active users, and have been the subject of significant third party media
`
`coverage. Opposer’s WITH FRIENDS marks, and its family of WITH FRIENDS marks,
`
`have therefore become well-known and/or famous among the relevant consuming public.
`
`As a result, Applicant’s BENEFITS WITH FRIENDS mark causes, or will likely cause,
`
`dilution of the distinctive quality of each of Opposer’s well-known and/or famous WITH
`
`FRIENDS marks, as well as its family of WITH FRIENDS marks, in violation of
`
`Lanham Act §43(c) (15 U.S.C. §1125(c)), with consequent damage to Opposer and the
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`public.
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`5
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`WHEREFORE, it is respectfully requested that this opposition be sustained and
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`that Applicant’s Application be denied registration.
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`Dated: November 5, 2012
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`
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`Respectfully submitted,
`
`
` .
`
`/Gregory T. Bradford/
`John M. Kim
`jkim@ipla.com
`Joshua J. Richman
`jrichman@ipla.com
`Gregory T. Bradford
`gbradford@ipla.com
`IP Legal Advisors, P.C.
`4445 Eastgate Mall, Suite 200
`San Diego, CA 92121
`Phone: (858) 272-0220
`Attorneys for Opposer, Zynga Inc.
`
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`6
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`Certificate of Service
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`I hereby certify that on November 5, 2012, a copy of the foregoing was sent by
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`
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`U.S. mail to the following correspondent of record:
`
` .
`
`MARTIN R. BADER
`SHEPPARD MULLIN RICHTER & HAMPTON LLP
`12275 EL CAMINO REAL STE 200
`SAN DIEGO, CALIFORNIA 92130-4092
`
`
`/Eunice Yu/
`Eunice Yu
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`7
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`

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`EXHIBIT A
`
`
`
`EXHIBIT A
`
`

`
`“figb étatnzs’ Hf gm“.
`flutter: étatez ifiatent ant: fltrahemark Qfiffine
`
`CHESS WITH FRIENDS
`
`Reg_ No_ 3,704,619 NE_wTOY, TNC. (TEXAS CORPORATION)
`Registered NOV. 3, 2009 903 IUCI ‘R SIR ‘E1
`MCKINNEY, TX 75069
`
`Int. CL: 9 FOR: GAME SOFTWARE, IN CLASS 9 (US. CLS. 21, 23, 26, 36 AND 38).
`
`FIRST USE 11-6-2008; IN COMMERCE 11-6-2008.
`
`TRADEMARK
`PRINCIPAL REGISTER THE MARK CONSISTS OF STANDARD CHARACTERS WTTHOUT CLAIM TO ANY PAR-
`TICILAR FONT, STYLE, SIZE, OR COLOR.
`
`I\O CAM IS MADE TO TH * *XCLUSIVE RIGHT TO USE "CH3SS“, APART FROM TH
`MARK AS SHOWN.
`
`SER. NO. 77-666,163, FILED 2-9-2009.
`
`IULIE WATSON, EXAMTNTNG ATTORN
`
`Director Ofme United Slates Pulem and I':'ademLu'1< Office
`
`

`
`STATUS
`
`DOCUM BITS
`
`
`
`Generated on: This page was generated byTSDR on 2012-10-10 17:58:40 EST
`Mark: CHESS WITH FRIENDS
`
`US Serial Number: 77666163
`
`US Registration Number: 3704619
`
`Register: Principal
`
`Mark Type: Trademark
`
`CHESS WIT]-I FRIENDS
`
`Application l-'I|ing Date: Feb. 09,2009
`
`Registration Date: Nov. 03,2009
`
`Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.
`Status Date: Nov. 03, 2009
`
`Publication Date: Aug. 18,2009
`
`Mark Information
`
`Mark Literal Elements: CHESS WITH FRIENDS
`
`Standard Character Claim: Yes. The mark consists ofstandard characters without claim to any particular font style, size, or color.
`
`Mark Drawing Type: 4 - STANDARD CHARACTER MARK
`Disclaimer: "CHESS"
`
`Goods and Services
`
`Note:
`
`The following symbols indicate thatthe registrant/owner has amended the goods/services:
`- Brackets [..] indicate deleted goods/services;
`- Double parenthesis ((..)) identify anygoods/services not claimed in a Section 15 affidavit ofincontestability; and
`- Asterisks *..* identify additional (new) wording in the goods/services.
`For: Game software
`
`International Class: 009 - Primary Class
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`I-'irst Use: Nov. 06, 2008
`
`Basis Information (Case Level)
`
`I-‘lied Use: Yes
`
`l-‘I|ed|TU: No
`
`I-"lied 44D: No
`
`l-‘lied 44E: No
`
`I-‘lied 66A: No
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently44D: No
`
`Current|y44E: No
`
`Currently 66A: No
`
`I-‘lied No Basis: No
`
`Currently No Basis: No
`
`U.S Class: 021, 023,026,036, 038
`
`Use in Commerce: Nov. 06,2008
`
`Amended Use: No
`
`Amended ITU: No
`
`Amended 44D: No
`
`Amended 44E: No
`
`Current Owner(s) Information
`
`Owner Name: ZYNGA, INC.
`
`Owner Address: 699 Eighth Street
`San Francisco, CALIFORNIA 941 03
`UNITED STATES
`
`Legal Entity Type: CORPORATION
`
`State or Country Where DELAWARE
`Organized:
`
`

`
`Attorneylcorrespondence Information
`
`Attorney of Record
`
`Attorney Name: John M. Kim
`
`Correspondent
`
`Correspondent John M. Kim
`NameIAddress: IP Legal Advisors, P.C.
`1940 GarnetAvenue
`Suite 230
`
`San Diego, CAL|FORN|A92109
`UNITED STATES
`
`Phone: 8582720220
`
`Correspondent e-mail: trademarks@ip|a.com
`
`Domestic Representative - Not Found
`
`Prosecution History
`
`Date
`
`Description
`
`Fax: 8582720221
`
`Correspondent e-mail Yes
`Authorized:
`
`Proceeding Number
`
`May24, 2012
`
`APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED
`
`88888
`
`May24, 2012
`
`TEAS CHANGE OF OWNER ADDRESS RECEIVED
`
`Aug. 02,2011
`
`ATTORNEY REVOKED AND/OR APPOINTED
`
`Aug. 02,2011
`
`TEAS REVOKE/APPOINT ATTORNEY RECEIVED
`
`Mar. 02, 2011
`
`AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP
`
`Jan. 19,2011
`
`AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP
`
`Nov. 03, 2009
`
`REGISTERED-PRINCIPAL REGISTER
`
`Aug. 18, 2009
`
`PUBLISHED FOR OPPOSITION
`
`Jul. 29, 2009
`
`NOTICE OF PUBLICATION
`
`Jul. 15,2009
`
`Jul. 15,2009
`
`LAW OFFICE PUBLICATION REVIEW COMPLETED
`
`ASSIGNED TO LIE
`
`Jul. 06, 2009
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`Ju|.06,2009
`
`ASSIGNED TO EXAMINER
`
`Jun. 30, 2009
`
`TEAS/EMAIL CORRESPONDENCE ENTERED
`
`Jun. 29, 2009
`
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`
`Jun. 29, 2009
`
`TEAS RESPONSE TO OFFICE ACTION RECEIVED
`
`Apr. 29, 2009
`
`NON-FINAL ACTION MAILED
`
`Apr. 28, 2009
`
`NON-F|NAI_ ACTION WRITTEN
`
`Apr. 28, 2009
`
`ASSIGNED TO EXAMINER
`
`Feb. 12,2009
`
`NEWAPPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
`
`Feb. 12,2009
`
`NEWAPPLICATION ENTERED IN TRAI\/I
`
`TM Staff and Location Information
`
`TM Staff Information - None
`
`I-'|Ie Location
`
`Current Location: PUBLICATION AND ISSUE SECTION
`
`Date in Location: Nov. 03,2009
`
`Assignment Abstract of Title Information
`
`Summary
`
`Total Assignments: 2
`
`Assinment1 of 2
`
`Conveya nce Filter
`
`Registrant: NewToy, Inc.
`
`

`
`10/10/12
`
`United States Patent & Trademark Office
`
`Conveyance: ASSIGNS THE ENTIRE INTEREST
`
`Reel/Frame: 4451/0868
`
`Date Recorded: Jan. 12, 2011
`
`Supporting Documents: assignment-tm-4451-0868.@
`
`Assignor
`
`
`Name: NENTOY INC.
`
`Legal Entity Type: CORPORATION
`
`Assignee
`
`
`Name: NEWTOY LLC
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`Address: 365 VERMONT STREET
`SAN FRANCISCO, CAL|FORNIA94103
`
`Correspondent
`
`Correspondent Name: JOHN M. KIM
`
`Correspondent Address: 1940 GARN ET AVEN UE
`SUITE 230
`SAN DIEGO, CA 921 09
`
`Domestic Representative - Not Found
`
`Assignment 2 of 2
`
`Conveyance: ASSIGNS THE ENTIRE INTEREST
`
`Reel/Frame: 4484/0315
`Date Recorded: Feb. 22, 2011
`
`Supporting Documents: assignment-tm-4484-0315.fi
`
`Assignor
`
`
`Name: NEWTOY LLC
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`Assignee
`
`Name: ZYN
`
`INC.
`
`Legal EntityType: CORPORATION
`
`Address: 365 VERMONT STREET
`SAN FRANCISCO, CAL|FORN|A94103
`
`Correspondent
`
`Correspondent Name:
`
`IP LEGAL ADVISORS, P.C.
`
`Correspondent Address: 1940 GARNET AVENUE
`SUITE 230
`SAN DIEGO, CA92109
`
`Domestic Representative - Not Found
`
`Pages: 3
`
`Execution Date: Nov. 22, 2010
`
`State or Country Where TEXAS
`Organized:
`
`State or Country Where DELAWARE
`Organized:
`
`Pages: 3
`
`Execution Date: Jan. 03, 2011
`
`State or Country Where DELAWARE
`Organized:
`
`State or CountryWhere DELAWARE
`Organized:
`
`tsdr.uspto.gov/#caseNumber=3704619&caseType=US_REGISTRATION_NO&searchType=statusSearch
`
`

`
`“figb étatnzs’ Hf gm“.
`flutter: étatez ifiatent ant: fltrahemark Qfiffine
`
`GAMES WITH FRIENDS
`
`Reg_ No_ 3,704,620 NE_wTOY, TNC. (TEXAS CORPORATION)
`Registered NOV. 3, 2009 903 IUCI ‘R SIR ‘E1
`MCKINNEY, TX 75069
`
`Int. CL: 9 FOR: GAME SOFTWARE, IN CLASS 9 (US. CLS. 21, 23, 26, 36 AND 38).
`
`FIRST USE 11-6-2008; TN COMMERCE 11-6-2008.
`
`TRADEMARK
`PRINCIPAL REGISTER THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PAR-
`TICILAR FONT, STYLE, SIZE, OR COLO 2.
`
`NO CEAIM IS MADE TO THE EXCLUSIVE RIGHT TO US
`MARK AS SHOWN.
`
`* S", APART FROM TH
`
`SER. NO. 77-666,193, FILED 2-9-2009.
`
`IULIE WATSON, EXAMTNTNG ATTORN
`
`Director Ofme United Slates Pulem and I':'ademLu'1< Office
`
`

`
`STAT US
`
`DOCUM ENTS
`
` earch
`
`Generated on: This page was generated byTSDR on 2012-10-10 18:10:03 EST
`Mark: GAMES WITH FRIENDS
`
`US Serial Number: 77666193
`
`US Registration Number: 3704620
`
`Register: Principal
`
`Mark Type: Trademark
`
`GAMES WITH FRIENDS
`
`Application l-'I|ing Date: Feb. 09,2009
`
`Registration Date: Nov. 03,2009
`
`Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.
`Status Date: Nov. 03, 2009
`
`Publication Date: Aug. 18,2009
`
`Mark Information
`
`Mark Literal Elements: GAMES WITH FRIENDS
`
`Standard Character Claim: Yes. The mark consists ofstandard characters without claim to any particular font style, size, or color.
`
`Mark Drawing Type: 4 - STANDARD CHARACTER MARK
`Disclaimer: "GAMES"
`
`Goods and Services
`
`Note:
`
`The following symbols indicate thatthe registrant/owner has amended the goods/services:
`- Brackets [..] indicate deleted goods/services;
`- Double parenthesis ((..)) identifyanygoods/services not claimed in a Section 15 affidavit ofincontestability; and
`- Asterisks *..* identify additional (new) wording in the goods/services.
`For: Game software
`
`International Class: 009 - Primary Class
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`I-'irst Use: Nov. 06, 2008
`
`Basis Information (Case Level)
`
`I-‘lied Use: Yes
`
`l-‘I|ed|TU: No
`
`l-"lied 44D: No
`
`l-‘lied 44E: No
`
`I-‘lied 66A: No
`
`Currently Use: Yes
`
`Current|y|TU: No
`
`Currently44D: No
`
`Current|y44E: No
`
`Currently 66A: No
`
`I-‘lied No Basis: No
`
`Currently No Basis: No
`
`U.S Class: 021, 023,026,036, 038
`
`Use in Commerce: Nov. 06,2008
`
`Amended Use: No
`
`Amended ITU: No
`
`Amended 44D: No
`
`Amended 44E: No
`
`Current Owner(s) Information
`
`Owner Name: ZYNGA, INC.
`
`Owner Address: 699 Eighth Street
`San Francisco, CALIFORNIA 941 03
`UNITED STATES
`
`Legal Entity Type: CORPORATION
`
`State or Country Where DELAWARE
`Organized:
`
`

`
`Attorneylcorrespondence Information
`
`Attorney of Record
`
`Attorney Name: John M. Kim
`
`Correspondent
`
`Correspondent John M. Kim
`NameIAddress: IP Legal Advisors, P.C.
`1940 GarnetAvenue
`Suite 230
`
`San Diego, CAL|FORN|A92109
`UNITED STATES
`
`Phone: 8582720220
`
`Correspondent e-mail: trademarks@ip|a.com
`
`Domestic Representative - Not Found
`
`Prosecution History
`
`Date
`
`Description
`
`Fax: 8582720221
`
`Correspondent e-mail Yes
`Authorized:
`
`Proceeding Number
`
`May24, 2012
`
`APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED
`
`88888
`
`May24, 2012
`
`TEAS CHANGE OF OWNER ADDRESS RECEIVED
`
`Aug. 02,2011
`
`ATTORNEY REVOKED