Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA602961
`ESTTA Tracking number:
`05/07/2014
`
`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
`
`Zynga Inc.
`05/07/2014
`
`699 Eighth Street
`San Francisco, CA 94103
`UNITED STATES
`
`Correspondence
`information
`
`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
`
`85799121
`05/07/2014
`
`Publication date
`Opposition Peri-
`od Ends
`
`01/07/2014
`05/07/2014
`
`JVP Legacy Inc
`753 Tramway Lane NE
`Albuqueruqe, NM 87122
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 041. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Providing a website that features blogsin
`the fields of cooking and recipes
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`3704619
`
`11/03/2009
`
`Word Mark
`
`CHESS WITH FRIENDS
`
`Application Date
`
`02/09/2009
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`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
`Game software
`
`U.S. Registration
`No.
`Registration Date
`
`3924543
`
`03/01/2011
`
`Word Mark
`
`WORDS WITH FRIENDS
`
`Application Date
`
`09/04/2009
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`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 plat-
`forms for social networking; interactive video game programs; downloadable
`electronic game programs and computer software platforms for social network-
`ing 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 in-
`terest via the Internet orother 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.
`Registration Date
`
`4207352
`
`09/11/2012
`
`Application Date
`
`06/23/2011
`
`Foreign Priority
`
`NONE
`
`

`
`Word Mark
`Design Mark
`
`HANG NG WITH FRIENDS
`
`Date
`
`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 net-
`working; 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 gener-
`al 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
`Design Mark
`
`SCRAMBLE WITH FRIENDS
`
`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 net-
`working; 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 gener-
`al 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
`
`U.S. Registration
`No.
`Registration Date
`
`4266412
`
`01/01/2013
`
`Word Mark
`Design Mark
`
`WAR WITH FRIENDS
`
`Application Date
`
`10/27/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2010/08/31 First Use In Commerce: 2010/08/31
`Computer game software downloadable from a global computer network; Com-
`puter game software for use on mobile and cellular phones
`
`U.S. Registration
`No.
`Registration Date
`
`4348667
`
`06/11/2013
`
`Word Mark
`Design Mark
`
`CHESS WITH FRIENDS
`
`Application Date
`
`01/12/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the letters "c", "h", "e", "s" and "s" inside of squares; the
`letters "c", "e" and the last "s" are in shaded squares; the letters are followed by
`the word "with" over the word "friends" in a thought bubble; the term "friends"
`has a shaded wave running through it.
`Class 009. First use: First Use: 2009/11/21 First Use In Commerce: 2009/11/21
`Computer game software; video game software programs; computer software
`platforms for social networking, namely, for uploading, posting, showing, display-
`ing, tagging, blogging, sharing or providing electronic media or information in the
`fields of virtual communities, electronic gaming, entertainment, and general in-
`terest via the Internet or other communications networks with third parties; inter-
`
`

`
`active video game programs; downloadable electronic game programs and com-
`puter software platforms for social networking, namely, for uploading, posting,
`showing,displaying, tagging, blogging, sharing or providing electronic media or
`information in the fields of virtual communities, electronic gaming, entertainment,
`andgeneral interest via the Internet or other communications networks with third
`parties, that may be accessed via the Internet, computers, mobile phones, smart
`phones and tablet computers; computer software to enable uploading, posting,
`showing, displaying, tagging, blogging, sharing or providing electronic media or
`information in the fields of virtual communities, electronic gaming, entertain-
`ment,and general interest via the Internet or other communications networks
`with third parties
`Class 041. First use: First Use: 2009/11/21 First Use In Commerce: 2009/11/21
`Providing online computer and electronic games, providing online reviews of
`computer games; providing online information relating to computer games;
`providing an Internet website portal in the field of computer games and online
`gaming; providing virtual environments in which users can interact through so-
`cial games forrecreational, leisure or entertainment purposes
`
`U.S. Registration
`No.
`Registration Date
`
`4348666
`
`06/11/2013
`
`Word Mark
`Design Mark
`
`WITH FRIENDS
`
`Application Date
`
`01/12/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of the word "with" over the word "friends" in a thought bubble;
`the term "friends" has a shaded wave running through it.
`Class 009. First use: First Use: 2010/12/03 First Use In Commerce: 2010/12/03
`Computer game software; video game software programs; computer software
`platforms for social networking, namely, for uploading, posting, showing, display-
`ing, tagging, blogging, sharing or providing electronic media or information in the
`fields of virtual communities, electronic gaming, entertainment, and general in-
`terest via the Internet or other communications networks with third parties; inter-
`active video game programs; downloadable electronic game programs for social
`networking, namely, for uploading, posting, showing, displaying, tagging, blog-
`ging, sharing or providing electronic media orinformation in the fields of virtual
`communities, electronic gaming, entertainment, and general interest via the In-
`ternet or other communications networks withthird parties that may be accessed
`via the Internet, computers, mobile phones, smart phones and tablet computers
`Class 041. First use: First Use: 2010/12/03 First Use In Commerce: 2010/12/03
`Providing online computer and electronic games; providing online reviews of
`computer games; providing online information relating to computer games;
`providing an Internet website portal in the field of computer games and online
`gaming; providing virtual environments in which users can interact through so-
`cial games forrecreational, leisure or entertainment purposes
`
`

`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`4348668
`
`Application Date
`
`01/12/2011
`
`06/11/2013
`
`Foreign Priority
`Date
`5 1 1 2 1 WORDS WITH FRIENDS
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the letters "w", "o", "r", "d" and "s" and the numerals "5",
`"1", "1", "2", and "1" corresponding with the order of the letters inside five
`squares; the letters are followed by the word "with" over the word "friends" in a
`thought bubble; the term "friends" has a shaded wave running through it.
`Class 009. First use: First Use: 2009/07/19 First Use In Commerce: 2009/07/19
`Computer game software; video game software programs; interactive video
`game programs; downloadable electronic game programs for social networking,
`namely, forposting, showing, or displaying information in the field of electronic
`gaming via the Internet or other communications networks with third parties that
`may be accessed via the Internet, computers, mobile phones, smart phones and
`tablet computers
`Class 041. First use: First Use: 2009/07/19 First Use In Commerce: 2009/07/19
`Providing online computer and electronic games; providing virtual environments
`in which users can interact through social games for recreational, leisure or en-
`tertainment purposes
`
`U.S. Registration
`No.
`Registration Date
`
`4348670
`
`06/11/2013
`
`Word Mark
`Design Mark
`
`WORDS WITH FRIENDS
`
`Application Date
`
`01/21/2011
`
`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
`Computer game software; video game software programs; interactive video
`game programs; downloadable electronic game programs for social networking,
`namely, forposting, showing, or displaying information in the field of electronic
`gaming via the Internet or other communications networks with third parties that
`may be accessed via the Internet, computers, mobile phones, smart phones and
`
`

`
`tablet computers
`Class 041. First use: First Use: 2009/07/19 First Use In Commerce: 2009/07/19
`Entertainment services, namely, providing online computer and electronic
`games;Entertainment services, namely, providing virtual environments in which
`users can interact through social games for recreational, leisure or entertain-
`ment purposes
`
`U.S. Registration
`No.
`Registration Date
`
`4354444
`
`06/18/2013
`
`Word Mark
`Design Mark
`
`WITH FRIENDS
`
`Application Date
`
`04/15/2011
`
`Foreign Priority
`Date
`
`03/07/2011
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2010/12/03 First Use In Commerce: 2010/12/03
`Computer game software; computer game programs; electronic game programs;
`interactive video game programs; computer software to enable posting, show-
`ing, or displaying information in the field of electronic gaming via the Internet or
`other communications networks with third parties
`Class 041. First use: First Use: 2010/12/03 First Use In Commerce: 2010/12/03
`Entertainment services, namely, providing online computer and electronic
`games,enhancements within online computer andelectronic games; entertain-
`ment services, namely, providing on-line virtual environments in which users can
`interact through social games for recreational, leisure or entertainment purposes
`
`U.S. Registration
`No.
`Registration Date
`
`4521259
`
`04/29/2014
`
`Application Date
`
`09/03/2013
`
`Foreign Priority
`Date
`
`03/28/2013
`
`Word Mark
`Design Mark
`
`SCRAMBLE WITH FRIENDS
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the stylized word "Scramble", in which the letters "S"
`and"m" both include arrows, followed by the stylized words "with friends" in a
`speech bubble.
`Class 009. First use: First Use: 2012/01/04 First Use In Commerce: 2012/01/04
`Computer game software; Computer game programs; Electronic game pro-
`grams; Interactive video game programs
`Class 041. First use: First Use: 2012/01/04 First Use In Commerce: 2012/01/04
`Computer and electronic games provided online and enhancements within on-
`line computer and electronic games; Virtual environments in which users can in-
`teract through social games for recreational, leisure or entertainment purposes
`
`

`
`U.S. Application
`No.
`Registration Date
`
`85187566
`
`NONE
`
`Word Mark
`Design Mark
`
`ZYNGA WITH FRIENDS
`
`Application Date
`
`11/30/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2011/03/31 First Use In Commerce: 2011/03/31
`Computer software platforms for social networking
`
`U.S. Application
`No.
`Registration Date
`
`85361265
`
`NONE
`
`Word Mark
`Design Mark
`
`WITH FRIENDS
`
`Application Date
`
`06/30/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 0 First Use In Commerce: 0
`Providing an online portal for computergames, video games, and gaming applic-
`ations; providing information about computer games, video games, and gaming
`applications via the Internet
`
`U.S. Application
`No.
`Registration Date
`
`85648957
`
`NONE
`
`Application Date
`
`06/11/2012
`
`Foreign Priority
`Date
`
`03/26/2012
`
`Word Mark
`
`MATCHING WITH FRIENDS
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2012/06/27 First Use In Commerce: 2012/06/27
`Computer game software; computer game programs; electronic game programs;
`interactive video game programs
`Class 041. First use: First Use: 2012/06/27 First Use In Commerce: 2012/06/27
`Entertainment services, namely, providing online computer and electronic
`games and enhancements within online computer and electronic games; Enter-
`tainment services, namely, providing virtual environments in which users can in-
`teract throughsocial games for recreational, leisure or entertainment purposes
`
`U.S. Application
`No.
`Registration Date
`
`85645173
`
`NONE
`
`Application Date
`
`06/06/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`
`MATCHING WITH FRIENDS
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2012/06/27 First Use In Commerce: 2012/06/27
`Computer and electronic game software
`Class 041. First use: First Use: 2012/06/27 First Use In Commerce: 2012/06/27
`Computer and electronic games provided online
`
`U.S. Application
`No.
`Registration Date
`
`85690637
`
`NONE
`
`Word Mark
`
`WORDS WITH FRIENDS
`
`Application Date
`
`07/30/2012
`
`Foreign Priority
`Date
`
`02/09/2012
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`Cases for mobile phones; Computer, video game and electronic equipment and
`accessories, namely, computer game disks, and computer game software
`Class 025. First use: First Use: 0 First Use In Commerce: 0
`Clothing, namely, tops, t-shirts, sweatshirts, hooded pullovers, bottoms, head-
`wear, baseball caps and hats
`Class 028. First use: First Use: 0 First Use In Commerce: 0
`Board games; puzzles; card games
`
`U.S. Application
`No.
`Registration Date
`
`85691546
`
`NONE
`
`Application Date
`
`07/31/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`
`SCRAMBLE WITH FRIENDS
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`Cases for mobile phones; Computer, video game and electronic equipment and
`accessories, namely, computer game disks, and computer game software
`Class 028. First use: First Use: 0 First Use In Commerce: 0
`Board games; puzzles; card games
`
`U.S. Application
`No.
`Registration Date
`
`85700949
`
`NONE
`
`Word Mark
`
`GEMS WITH FRIENDS
`
`Application Date
`
`08/10/2012
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2012/09/06 First Use In Commerce: 2012/09/06
`Computer and electronic game software
`Class 041. First use: First Use: 2012/09/06 First Use In Commerce: 2012/09/06
`Computer and electronic games provided online
`
`U.S. Application
`No.
`Registration Date
`
`85720965
`
`NONE
`
`Word Mark
`Design Mark
`
`GEMS WITH FRIENDS
`
`Application Date
`
`09/05/2012
`
`Foreign Priority
`Date
`
`03/23/2012
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2012/09/06 First Use In Commerce: 2012/09/06
`Computer game software; computer game programs; electronic game programs;
`interactive video game programs
`Class 041. First use: First Use: 2012/09/06 First Use In Commerce: 2012/09/06
`Entertainment services, namely, providing online computer and electronic
`games and enhancements within online computer and electronic games; Enter-
`tainment services, namely, providing virtual environments in which users can in-
`teract throughsocial games for recreational, leisure or entertainment purposes
`
`U.S. Application
`No.
`Registration Date
`
`85829443
`
`NONE
`
`Word Mark
`
`RUNNING WITH FRIENDS
`
`Application Date
`
`01/22/2013
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2013/05/09 First Use In Commerce: 2013/05/09
`Computer and electronic game software
`Class 041. First use: First Use: 2013/05/09 First Use In Commerce: 2013/05/09
`Computer and electronic games provided online
`
`U.S. Application
`No.
`Registration Date
`
`85837003
`
`NONE
`
`Word Mark
`Design Mark
`
`RUNNING WITH FRIENDS
`
`Application Date
`
`01/30/2013
`
`Foreign Priority
`Date
`
`11/01/2012
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2013/05/09 First Use In Commerce: 2013/05/09
`Computer game software; computer game programs; electronic game programs;
`interactive video game programs
`Class 041. First use: First Use: 2013/05/09 First Use In Commerce: 2013/05/09
`Entertainment services, namely, providing online computer and electronic
`games
`
`U.S. Application
`No.
`Registration Date
`
`Word Mark
`
`85851691
`
`Application Date
`
`02/15/2013
`
`NONE
`
`Foreign Priority
`Date
`WHAT'S THE PHRASE WITH FRIENDS
`
`12/05/2012
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`Attachments
`
`NONE
`
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`Computer game software; computer game programs; electronic game programs;
`interactive video game programs; computer software for providing access to
`computer games through online social networking websites; magnetic encoded
`gift cards
`Class 041. First use: First Use: 0 First Use In Commerce: 0
`Entertainment services, namely, providing online computer and electronic
`games;providing online information in the field of computer games
`
`77666163#TMSN.jpeg( bytes )
`77666193#TMSN.jpeg( bytes )
`77820321#TMSN.jpeg( bytes )
`85354857#TMSN.jpeg( bytes )
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`85691546#TMSN.jpeg( bytes )
`85700949#TMSN.jpeg( bytes )
`85720965#TMSN.jpeg( bytes )
`85829443#TMSN.jpeg( bytes )
`85837003#TMSN.jpeg( bytes )
`85851691#TMSN.jpeg( bytes )
`2014-05-07 - NOO (FRIDAY NIGHTS WITH FRIENDS).pdf(190584 bytes )
`Exhibit A [WITH FRIENDS]_Part1.pdf(4320153 bytes )
`Exhibit A [WITH FRIENDS]_Part2_Part1_Part1.pdf(4167673 bytes )
`Exhibit A [WITH FRIENDS]_Part2_Part1_Part2.pdf(3461911 bytes )
`Exhibit A [WITH FRIENDS]_Part2_Part2.pdf(2438633 bytes )
`
`Certificate of Service
`
`

`
`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.
`
`Signature
`Name
`Date
`
`/Renee A. Keen/
`Renee A. Keen
`05/07/2014
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Opposition No. __________
`
`
`
`Mark: FRIDAY NIGHTS WITH FRIENDS
`Serial No. 85799121
`Filing Date: December 10, 2012
`Published: January 7, 2014
`
`
`
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`Zynga Inc.,
`
`
`Opposer,
`
`
`v.
`
`JVP Legacy Inc.,
`
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`Opposer Zynga Inc., (“Opposer”), a Delaware corporation with its principal place of
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`
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`
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`business at 699 Eighth Street, San Francisco, CA 94103, believes that it would be damaged by
`
`issuance of a registration for the trademark FRIDAY NIGHTS WITH FRIENDS as applied for
`
`in Application Serial No. 85799121 (the “Application”), by JVP Legacy Inc. (“JVP Legacy”).
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`Accordingly, Opposer, by and through its attorneys, hereby opposes the Application on the
`
`following grounds:
`
`1.
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`Opposer is a leading developer of online social games playable on computers and
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`wireless devices. Opposer’s games are accessible on Facebook® and other social networks,
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`mobile platforms and Zynga.com. Since the launch of its first online game in 2007, Opposer has
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`continued to bring new games to market with great success.
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`1
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`

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`2.
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`Opposer owns the following U.S. trademark registrations that incorporate or
`
`consist of the term WITH FRIENDS (“Opposer’s Registrations”):
`
`Mark
`CHESS WITH FRIENDS
`GAMES WITH FRIENDS
`WORDS WITH FRIENDS
`HANGING WITH FRIENDS
`
`Reg. No.
`3704619
`3704620
`3924543
`
`4211214
`
`Registration Date
`Filing Date
`February 9, 2009 November 3, 2009
`February 9, 2009 November 3, 2009
`September 4, 2009
`March 1, 2011
`September 18,
`2012
`
`June 23, 2011
`
`(HANGING WITH FRIENDS
`Stylized)
`SCRAMBLE WITH FRIENDS
`WAR WITH FRIENDS
`
`
`(CHESS WITH FRIENDS Stylized)
`
`
`(WITH FRIENDS Stylized)
`
`(WORDS WITH FRIENDS Stylized)
`WORDS WITH FRIENDS
`WITH FRIENDS
`
`
`(SCRAMBLE WITH FRIENDS
`Stylized)
`
`
`
`
`
`4207352
`
`June 23, 2011
`
`September 11,
`2012
`
`4161430
`4266412
`
`January 5, 2012
`October 27, 2010
`
`June 19, 2012
`January 1, 2013
`
`4348667
`
`January 12, 2011
`
`June 11, 2013
`
`4348666
`
`January 12, 2011
`
`June 11, 2013
`
`4348668
`
`January 12, 2011
`
`June 11, 2013
`
`4348670
`4354444
`
`January 21, 2011
`April 15, 2011
`
`June 11, 2013
`June 18, 2013
`
`4521259
`
`September 3, 2013
`
`April 29, 2014
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`2
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`

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`True and correct copies of Opposer’s Registrations are attached hereto as Exhibit A, along with
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`true and correct print-outs from the Trademark Office’s electronic database showing the current
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`status and title of the registrations.
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`3.
`
`Opposer is also the owner of the following U.S. pending trademark applications
`
`that incorporate or consist of the term WITH FRIENDS (“Opposer’s Applications”):
`
`Mark
`ZYNGA WITH FRIENDS
`WITH FRIENDS
`MATCHING WITH FRIENDS
`MATCHING WITH FRIENDS
`WORDS WITH FRIENDS
`SCRAMBLE WITH FRIENDS
`GEMS WITH FRIENDS
`GEMS WITH FRIENDS
`RUNNING WITH FRIENDS
`RUNNING WITH FRIENDS
`WHAT’S THE PHRASE WITH
`FRIENDS
`
`Ser. No.
`85187566
`85361265
`85648957
`85645173
`85690637
`85691546
`85700949
`85720965
`85829443
`85837003
`
`85851691
`
`Filing Date
`November 30, 2010
`June 30, 2011
`June 11, 2012
`June 6, 2012
`July 30, 2012
`July 31, 2012
`August 10, 2012
`September 5, 2012
`January 22, 2013
`January 30, 2013
`
`February 15, 2013
`
`
`
`4.
`
`The games that Opposer offers under its WITH FRIENDS marks comprise a
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`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
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`has resulted in significant media coverage.
`
`5.
`
`On December 10, 2012, JVP Legacy filed the Application to register the
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`following trademark on the Principal Register:
`
`Mark
`FRIDAY NIGHTS WITH
`FRIENDS
`
`JVP Legacy’s Application was published for opposition in the Official Gazette on January 7,
`
`Class/Services
`Class 41: Providing a website that features
`blogs in the fields of cooking and recipes
`
`Ser. No.
`85799121
`
`2014.
`
`
`
`3
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`

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`6.
`
`FRIDAY NIGHTS WITH FRIENDS is identical in sight, sound, and meaning to
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`Opposer’s WITH FRIENDS family of marks, in that it incorporates the distinctive component
`
`WITH FRIENDS in its entirety and without modification. Moreover, Applicant’s FRIDAY
`
`NIGHTS WITH FRIENDS is substantively identical to or, at a minimum, confusingly similar in
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`sight, sound, and meaning to Opposer’s standalone WITH FRIENDS registration and application
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`(i.e., Opposer’s filings that do not include a generic or descriptive modifier before the term
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`WITH FRIENDS), in that it again incorporates the entirety of Opposer’s standalone WITH
`
`FRIENDS trademarks. Finally, the FRIDAY NIGHTS WITH FRIENDS mark is substantively
`
`identical or, at a minimum, confusingly similar in sight, sound, and meaning to the remainder of
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`Opposer’s individual WITH FRIENDS marks in that it consists solely of a generic or descriptive
`
`term (i.e., FRIDAY NIGHTS) coupled with the distinctive WITH FRIENDS suffix. Applicant’s
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`mark therefore follows the same naming structure of several of Opposer’s individual WITH
`
`FRIENDS marks (e.g., WORDS WITH FRIENDS, SCRAMBLE WITH FRIENDS, CHESS
`
`WITH FRIENDS, MATCHING WITH FRIENDS, GEMS WITH FRIENDS, etc.).
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`7.
`
`The services listed in the Application are highly similar to those listed in
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`Opposer’s Registrations and Opposer’s Applications, and may be offered in the same
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`commercial channels, virtual environments, online portals and social networks as the goods and
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`services offered by Opposer under Opposer’s WITH FRIENDS marks.
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`8.
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`Opposer’s rights are senior to any rights that JVP Legacy may allege to have in its
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`FRIDAY NIGHTS WITH FRIENDS mark because (a) Opposer’s Registrations registered before
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`JVP Legacy’s Application achieved registration; (b) Opposer’s Applications were filed before
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`the filing date of JVP Legacy’s Application; and/or (c) on information and belief, JVP Legacy
`
`
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`4
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`

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`did not use its mark in commerce prior to the effective filing dates of Opposer’s Registrations or
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`the effective filing dates of Opposer’s Applications.
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`9.
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`Registration and use of FRIDAY NIGHTS WITH FRIENDS by JVP Legacy is
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`likely to cause confusion or mistake or to deceive, or to create the false impression that JVP
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`Legacy’s services are provided by, related to, endorsed by, or associated with Opposer, or
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`otherwise cause injury to Opposer’s rights in its individual WITH FRIENDS marks and its
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`family of WITH FRIENDS marks, as identified by Opposer’s Registrations and Opposer’s
`
`Applications, in violation of Lanham Act §2(d) (15 U.S.C. §1052(d)), with consequent damage
`
`to Opposer and the public.
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`10.
`
`The games that Opposer offers under its family of WITH FRIENDS marks, as
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`identified by Opposer’s Registrations and Opposer’s Applications, have millions of daily active
`
`users and have been the subject of significant third party media coverage. Opposer’s WORDS
`
`WITH FRIENDS and SCRAMBLE WITH FRIENDS marks, in particular, became well-known
`
`and/or famous among the relevant consuming public before JVP Legacy filed the Application
`
`and/or before it began using its mark. As a result, JVP Legacy’s FRIDAY NIGHTS WITH
`
`FRIENDS mark causes, or will likely cause, dilution of the distinctive quality of Opposer’s well-
`
`known and/or famous WORDS WITH FRIENDS and SCRAMBLE WITH FRIENDS marks, in
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`violation of Lanham Act §43(c) (15 U.S.C. §1125(c)), with consequent damage to Opposer and
`
`the public.
`
`WHEREFORE, it is respectfully requested that this opposition be sustained and that JVP
`
`Legacy’s Application be denied registration.
`
`5
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`

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`Respectfully submitted,
`
`
` .
`
`/Joshua J. Richman/
`
`John M. Kim
`Joshua J. Richman
`Renee A. Keen
`IP Legal Advisors, P.C.
`4445 Eastgate Mall, Suite 200
`San Diego, CA 92121
`Phone: (858) 272-0220
`Attorneys for Opposer, Zynga Inc.
`litigation@ipla.com
`
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`Dated: May 7, 2014
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`Certificate of Service
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`I hereby certify that on May 7, 2014, a copy of the foregoing was sent by U.S. mail to the
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`
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`following correspondent of record:
`
`JVP LEGACY INC
`753 TRAMWAY LN NE
`ALBUQUERQUE, NEW MEXICO 87122-1601
`UNITED STATES
`
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` /Eunice Yu/
`
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` .
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`7
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`EXHIBIT A
`EXHIBITA
`
`

`
`“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; TN 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 VVIATSON, EXAMTNTNG ATTORN
`
`Direutur Ofme United Slates ]’ulem and I':'.udemLu'1< Office
`
`

`
`5/7/2014
`
`Status Search RN 3704619
`
`STATUS
`
`DOCUMENTS
`
`Back to Search
`
`Print
`
`Generated on: This page was generated by TSDR on 2014-05-07 12:31:32 EDT
`
`Mark: CHESS WITH FRIENDS
`
`US Serial Number: 77666163
`
`US Registration Number: 3704619
`
`Register: Principal
`
`Mark Type: Trademark
`
`Application Filing 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 of standard 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 that the registrant/owner has amended the goods/services:
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of
`Asterisks *..* identify additional (new) wording in the goods/services.
`For: Game software
`
`
`
`http://tsdr.uspto.gov/#caseNumber=3704619&caseType=US_REGISTRATION_NO&searchType=statusSearch
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`1/4
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`5/7/2014
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`Status Search RN 3704619
`
`International Class(es): 009 - Primary Class
`
`U.S Class(es): 021, 023, 026, 036, 038
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: Nov. 06, 2008
`
`Basis Information (Case Level)
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`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Use in Commerc