Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA956095
`
`Filing date:
`
`02/22/2019
`
`Proceeding
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`91230218
`
`Plaintiff
`GoPro, Inc.
`
`RAFFI V ZEROUNIAN
`HANSON BRIDGETT LLP
`425 MARKET STREET 26TH FLOOR
`SAN FRANCISCO, CA 94105
`UNITED STATES
`ttabfilings@hansonbridgett.com, rzerounian@hansonbridgett.com, ipfil-
`ings@hansonbridgett.com, jthompson@hansonbridgett.com
`415-777-3200
`
`Motion to Suspend for Civil Action
`
`Raffi Zerounian
`
`rzerounian@hansonbridgett.com, ttabfilings@hansonbridgett.com
`
`/rvz/
`
`02/22/2019
`
`Attachments
`
`Motion to Suspend.pdf(1081709 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`In re Application for: PRO-MOUNTS (& design)
`Applicant Name: Allied Sunny Ltd.
`Serial No.: 86/832,346
`Filing Date: November 25, 2015
`Date of Publication: June 21, 2016
`
`
`GoPro, Inc.,
`
`
`Opposer,
`
` Opposition No. 91230218
`
`OPPOSER GOPRO INC.’S MOTION TO
`SUSPEND PROCEEDINGS PURSUANT TO
`TBMP SECTION 510.02
`
`v.
`
`
`Allied Sunny, Ltd.,
`
`
`Applicant.
`
`
`
`Pursuant to Section 510.02 of the Trademark Board Manual of Procedure (“TBMP”),
`
`Opposer GoPro, Inc. (“GoPro”) hereby requests that these proceedings be suspended by the
`
`Board pending the outcome of Case No. 3-19-cv-01004 filed by GoPro against Applicant Allied
`
`Sunny, Ltd. (“Applicant”) in the United States District Court for the Northern District of California.
`
`A copy of the complaint in the referenced case is attached hereto as Exhibit A.
`
`Section 510.02(a) of the TBMP states: “Whenever it comes to the attention of the Board
`
`that a party or parties to a case pending before it are involved in a civil action which may have a
`
`bearing on the Board case, proceedings before the Board may be suspended until final
`
`determination of the civil action.” See also Trademark Rule 2.117(a), 37 C.F.R. § 2.117(a).
`
`GoPro opposed Application Serial No. 86/832,346 on the basis that Applicant’s PRO-
`
`MOUNTS Mark is likely to be confused with Opposer’s GOPRO Marks under Section 2(d) of the
`
`Lanham Act. As indicated in the attached complaint, GoPro’s federal action for trademark
`
`infringement alleges that, among other things, Applicant’s use and registration of the PRO-
`
`MOUNTS Mark constitutes trademark infringement in violation of Section 2(d) of the Lanham
`
`1
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`15270993.1
`
`

`

`
`
`Act. GoPro’s federal court complaint seeks to permanently enjoin Applicant’s use of the PRO-
`
`MOUNTS Mark in the United States. Accordingly, both actions directly involve the issue of
`
`likelihood of confusion concerning the PRO-MOUNTS Mark and the GOPRO Marks.
`
`In light of the foregoing, GoPro respectfully requests that the opposition proceeding be
`
`suspended pending the outcome of the federal action, Case No. 3-19-cv-01004, pending in the
`
`Northern District of California.
`
`
`
`Date: February 22, 2019
`
`
`
`
`
`
`
`Respectfully submitted,
`
`GOPRO, INC.
`
`
`/s/ Raffi V. Zerounian
`By
`Raffi Zerounian
`Janie Thompson
`Attorneys for Opposer GoPro, Inc.
`Hanson Bridgett LLP
`425 Market Street, 26th Floor
`San Francisco, CA 94105
`Tel.: (415) 777-3200
`E-mail: rzerounian@hansonbridgett.com
`E-mail: jthompson@hansonbridgett.com
`
`
`
`
`
`
`
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`2
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`15270993.1
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`
`
`CERTIFICATE OF SERVICE
`
`I, Laura Prongos, hereby certify that a true and complete copy of the foregoing OPPOSER
`GOPRO INC.’S MOTION TO SUSPEND PROCEEDINGS PURSUANT TO TBMP SECTION
`510.02 was served on the parties listed below on February 22, 2019 via email to:
`Applicant’s Attorney/Applicant of Record:
`
`Robert DeWitty
`DeWitty and Associates
`330 Pennsylvania Avenue, #302
`Washington, DC 20003
`rmdewitty@dewittyip.com
`admin@dewittyip.com
`msills@dewittyip.com
`
`
`Dated: February 22, 2019
`
`
`
`
`/s/ Laura Prongos
`Laura Prongos
`
`
`
`
`
`3
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`15270993.1
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`

`

`EXHIBIT A
`
`EXHIBITA
`
`

`

`Case 3:19-cv-01004 Document 1 Filed 02/22/19 Page 1 of 53
`
`
`
`HANSON BRIDGETT LLP
`RAFFI V. ZEROUNIAN, SBN 236388
`rzerounian@hansonbridgett.com
`777 S. Figueroa St., Suite 4200
`Los Angeles, California 90017
`Telephone:
`(213) 395-7621
`Facsimile:
`(213) 395-7615
`
`HANSON BRIDGETT LLP
`JANIE L. THOMPSON, SBN 291622
`jthompson@hansonbridgett.com
`425 Market Street, 26th Floor
`San Francisco, California 94105
`Telephone:
`(415) 777-3200
`Facsimile:
`(415) 541-9366
`
`Attorneys for Plaintiff
`GOPRO, INC.
`
`
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
` Case No. 19-1004
`
`COMPLAINT FOR TRADEMARK
`INFRINGEMENT, DILUTION, UNFAIR
`COMPETITION, AND FALSE
`ADVERTISING
`
`GOPRO, INC.,
`
`Plaintiff,
`
`v.
`
`ALLIED SUNNY LTD.; F.E.N.S. KIDDY
`TRENDS B.V.; PRO-MOUNTS
`INTERNATIONAL B.V.; and MIKE REED,
`
`Defendants.
`
`
`
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`Plaintiff GoPro, Inc. (“Plaintiff” or “GoPro”) alleges, upon personal knowledge with
`respect to itself and its own acts, and upon information and belief as to all other matters, as
`follows:
`
`PARTIES
`GoPro is a Delaware corporation with its principal place of business at 3000
`1.
`Clearview Way, San Mateo, California.
`Defendant Allied Sunny Ltd. is a Hong Kong corporation with its principal place of
`2.
`business at 148 Connaught Road, 22nd Floor, Office A, Guangdong Investment Tower, Hong
`Kong.
`
`15278994.1
`
`Case No. 19-1004
`-1-
`
`COMPLAINT FOR TRADEMARK INFRINGEMENT, DILUTION, UNFAIR COMPETITION, AND FALSE ADVERTISING
`
`
`
`

`

`Case 3:19-cv-01004 Document 1 Filed 02/22/19 Page 2 of 53
`
`
`
`Defendant F.E.N.S. Kiddy Trends B.V. is a Dutch corporation with its principal
`3.
`place of business at Kikkertweg 16, 1521 RG Wormerveer, Netherlands.
`Defendant PRO-mounts International B.V. is a Dutch corporation with its principal
`4.
`place of business at Kikkertweg 16, 1521 RG Wormerveer, Netherlands.
`Defendant Mike Reed is the sole director and sole shareholder of Allied Sunny
`5.
`Ltd., F.E.N.S. Kiddy Trends B.V., and PRO-mounts International B.V., and a resident of the
`Netherlands. Mr. Reed—who was a GoPro reseller—individually developed the PRO-MOUNTS
`trademark with the intent to trade upon GoPro’s goodwill. He is the active and moving conscious
`force behind Defendants’ infringing conduct described in this complaint. (Defendants Allied
`Sunny Ltd, F.E.N.S. Kiddy Trends B.V., PRO-mounts International B.V., and Mike Reed shall be
`referred to collectively herein as “Allied Sunny” or “Defendants”).
`At all times herein mentioned, each defendant was the agent, employee, partner,
`6.
`joint venturer, aider and abetter, alter ego, and co-conspirator of or with each of the remaining
`defendants, and in doing the things hereinafter alleged, was acting within the course and scope of
`such agency, employment, partnership, joint venture, and conspiracy, and each defendant ratified
`and approved the acts of the remaining defendants.
`JURISDICTION AND VENUE
`This Court has jurisdiction because (i) this action arises under the Trademark Act
`7.
`of 1946, as amended, 15 U.S.C. §§ 1051 et seq. (the “Lanham Act”), and jurisdiction is
`specifically conferred by 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331 and 1338(a) and (b), and (ii)
`this is an action between citizens of different states in which the value of the amount in
`controversy exceeds seventy-five thousand dollars ($75,000.00), exclusive of interest and costs,
`jurisdiction being conferred in accordance with 28 U.S.C. § 1332. Jurisdiction for the California
`state statutory and common law claims is conferred in accordance with the principles of
`supplemental jurisdiction pursuant to 28 U.S.C. § 1367(a).
`Defendants, either directly or through their agents, transacted business in the State
`8.
`of California and within this judicial district, including offering goods for sale, attending trade
`shows promoting the marks at issue in this litigation, and meeting with a representative for GoPro,
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`
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`Case 3:19-cv-01004 Document 1 Filed 02/22/19 Page 3 of 53
`
`
`
`and expected or should reasonably have expected their acts to have consequence in the United
`States, the State of California, and within this judicial district.
`Venue is proper in this Court under 28 U.S.C. § 1391(b)(2) in that Defendants are
`9.
`doing business in this judicial district and therefore may be found in this district, and/or a
`substantial part of the events or omissions giving rise to the claims occurred in this judicial
`district, and/or the infringement occurred in this judicial district. Venue is also proper under 28
`U.S.C. § 1391(c) as Plaintiff resides in and is subject to jurisdiction in this district.
`Intradistrict Assignment
`Pursuant to Civil L.R. 3-5, this is an intellectual property matter that is assigned on
`10.
`a district-wide basis.
`
`FACTUAL BACKGROUND
`GoPro and Its Famous GoPro Marks
` GoPro is an award-winning producer of cameras, accessories, and technology that
`11.
`helps the world celebrate and share itself in immersive and exciting ways. GoPro’s branded
`content is shared and enjoyed by millions of people online via the www.gopro.com website.
`GoPro sells its cameras, accessories, and related products—including mounts—through more than
`25,000 stores in over 100 countries worldwide and direct via its website. Since at least 2004,
`GoPro has prominently used the GOPRO mark in connection with its sale of cameras, accessories,
`and related products. In the last three years alone, GoPro’s revenues have exceeded $4 billion.
`GoPro is the owner of numerous U.S. trademark registrations consisting of and
`12.
`including the GOPRO mark (collectively, the “GoPro Marks”), including the following:
`
`Trademark
`GOPRO
`
`Reg. No.
`3,032,989
`
`GOPRO
`
`5,008,425
`
`Full Goods Description
`(Int’l Class 9) Photographic
`equipment, namely film cameras
`and digital cameras, cases and
`housings for cameras and camera
`straps
`(Int’l Class 9) Photographic
`equipment, namely cameras,
`digital cameras, video cameras;
`portable handheld electronic
`devices for recording, storage,
`transmission or reproduction of
`
`Filing
`Date
`February
`17, 2004
`
`Reg. Date
`December
`20, 2005
`
`August
`26, 2013
`
`July 26,
`2016
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`Case 3:19-cv-01004 Document 1 Filed 02/22/19 Page 4 of 53
`
`Filing
`Date
`
`Reg. Date
`
`Full Goods Description
`photographic. video and
`multimedia content; cases,
`housings, and accessories for
`cameras, namely, batteries,
`lenses, digital photo viewers,
`wireless adapters, power adapters,
`adapter rings for attaching objects
`to cameras, remote controls,
`microphones, SD cards,
`photographic flash units,
`mounting devices for
`photographic equipment, tripods
`and camera straps; cases and bags
`for photographic apparatus;
`computer software for use in
`connection with photographic and
`video equipment and cameras;
`desktop and mobile photo and
`video editing software; computer
`software and software
`applications for use in uploading,
`downloading, editing, storing,
`distributing and sharing
`photographic and video content
`via global and local computer
`networks and via mobile devices;
`downloadable user generated
`photos and videos in the field of
`general interest.
`
`(lnt’I Class 38) Video
`broadcasting; streaming of video
`material on the internet;
`broadcasting or audio and video
`content and programming over
`the internet; electronic delivery of
`images and photographs via a
`global computer network and via
`mobile electronic devices;
`electronic transmission and
`streaming of digital media content
`for others via global and local
`computer networks and via
`mobile electronic devices;
`streaming user generated
`photographic and video content
`via a website on the internet and
`via mobile electronic devices.
`
`(Int’l Class 41) Photographic and
`video services, namely,
`photographic and video capture;
`rental of photographic equipment,
`
`
`
`Trademark
`
`Reg. No.
`
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`Case 3:19-cv-01004 Document 1 Filed 02/22/19 Page 5 of 53
`
`Filing
`Date
`
`Reg. Date
`
`Full Goods Description
`namely cameras, digital cameras,
`video cameras, camera cases,
`housings, and accessories for
`cameras, namely, batteries,
`lenses, digital photo viewers,
`wireless adapters, power adapters,
`adapter rings for attaching objects
`to cameras, remote controls,
`microphones, SD cards,
`photographic flash units,
`mounting devices for
`photographic equipment, tripods
`and camera straps; education;
`providing training, education,
`instruction, tips and advice in the
`field of photography and
`videography; providing
`photographic and video content
`on a website on the internet and
`via mobile devices for
`educational and entertainment
`purposes; entertainment; sporting
`and cultural activities;
`entertainment services, namely,
`providing a website featuring
`photographic, audio, video and
`multimedia presentations;
`provision of audio and video in
`the nature of digital images and
`videos; provision of
`downloadable multimedia files
`containing audio and video
`content; hosting and providing a
`database/ library in the field of
`photography and videography;
`providing photographic and video
`content for the creation of
`television programs, television
`commercials, motion pictures and
`films; providing online journals,
`namely blogs, for sharing
`thoughts, ideas, experiences,
`comments, tips, techniques, and
`advice in the field of photography
`and videography; providing
`conferences, trade shows,
`seminars, workshops and tutorials
`in the field of photography and
`videography.
`
`(lnt’I Class 42) Providing a web
`hosting platform for uploading,
`downloading, stmi.ng,
`
`
`
`Trademark
`
`Reg. No.
`
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`Case 3:19-cv-01004 Document 1 Filed 02/22/19 Page 6 of 53
`
`Filing
`Date
`
`Reg. Date
`
`February
`12, 2016
`
`April 18,
`2017
`
`Full Goods Description
`distributing, editing and sharing
`photographic, video and
`multimedia content; providing
`temporary use of online non-
`downloadable software for use in
`uploading, downloading, storing,
`distributing, editing and sharing
`photographic, video and
`multimedia content via local and
`global computer networks and via
`mobile devices; providing
`temporary use of on-line non-
`cloud computing software for use
`in uploading, downloading,
`storing, distributing, editing and
`sharing photographic, video and
`multimedia content via local and
`global computer networks and via
`mobile devices; peer-to-browser
`photo sharing services, namely,
`providing a website featuring
`technology enabling users to
`upload, view, and download
`digital photos and videos;
`providing a web site featuring
`temporary use of non-down
`loadable software allowing web
`site users to upload on-line videos
`for sharing with others for
`entertainment purposes; providing
`a web site that gives computer
`users the ability to upload,
`exchange and share photos,
`videos and video logs; computer
`services, namely, providing
`search platforms to allow users to
`locate, access, copy, transmit,
`edit, and share photographic,
`video and multimedia content.
`(Int’l Class 9) spherical photo and
`video capture cameras; cameras
`for producing 360 views;
`panoramic cameras; central array
`boards and related hardware and
`software for spherical photo and
`video capture cameras; software
`tools and applications to support
`spherical video content; computer
`software for taking, capturing,
`managing, processing, operating,
`viewing, storing, editing,
`arranging, combining, sharing,
`manipulating, modifying,
`
`
`
`Trademark
`
`Reg. No.
`
`GOPRO
`
`5,187,830
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`Case 3:19-cv-01004 Document 1 Filed 02/22/19 Page 7 of 53
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`Filing
`Date
`
`Reg. Date
`
`September
`3, 2015
`
`May 30,
`2017
`
`Full Goods Description
`commenting on, transmitting and
`displaying spherical and
`panoramic photo and video
`content; power solutions for
`spherical photo and video capture
`cameras, including batteries,
`wireless adaptors, power
`adaptors, and chargers; custom
`camera hardware solutions;
`custom integrated platform
`solutions; selfie sticks, namely,
`hand-held monopods; camera
`fixing bands, namely, head bands,
`straps, shoulder bands, and chest
`bands; mounting brackets for
`cameras; bases for cameras;
`clamps for cameras; floats for
`cameras; floatable hand grips for
`cameras; storage bags for
`cameras; waterproof and non-
`waterproof protective cases for
`cameras; protective lens covers
`for cameras; protective films
`adapted for camera screens;
`windshields made of plastic;
`filters for photographic
`equipment; wires and cables for
`camera electricity mains; wall
`chargers; car-mounted chargers
`(Int’l Class 9) Camera
`accessories, namely, mounts,
`smart mounts, straps, rigs,
`holders, harnesses, brackets;
`related equipment for holding,
`mounting, positioning and
`maneuvering cameras, namely,
`stabilizers and harnesses
`
`(Int’l Class 12) Unmanned aerial
`vehicles (UAVs), remote
`controlled UAVs, aircraft,
`helicopters, quad copters and
`drones, and related structural
`components, namely, the body,
`arms, routers, motors, propellers,
`landing struts, stabilizers, and
`vibration isolators; robotic
`transport vehicles, and related
`structural components namely,
`the body, arms, routers, motors,
`propellers, landing struts,
`stabilizers, vibration isolators
`
`
`
`
`Trademark
`
`Reg. No.
`
`GOPRO
`
`5,214,644
`
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`Case 3:19-cv-01004 Document 1 Filed 02/22/19 Page 8 of 53
`
`Filing
`Date
`
`Reg. Date
`
`June 28,
`2013
`
`January 9,
`2018
`
`Full Goods Description
`(Int’l Class 28) Remote control
`and computer controlled flying
`devices for recreational use,
`namely, airplanes, helicopters,
`quad copters, and drones
`(Int’l Class 9) Photographic
`equipment, namely, cameras,
`digital cameras, video cameras;
`portable handheld electronic
`devices for recording, storage,
`transmission or reproduction of
`photographic, video and
`multimedia content; cases,
`housings, and accessories for
`cameras, namely, batteries,
`lenses, digital photo viewers,
`wireless adapters, power adapters,
`adapter rings for attaching objects
`to cameras, remote controls,
`microphones, SD cards,
`photographic flash units,
`mounting devices for
`photographic equipment, tripods
`and camera straps; cases and bags
`for photographic apparatus;
`computer software for use in
`connection with photographic and
`video equipment and cameras,
`namely, software for taking,
`capturing, managing, processing,
`operating, viewing, storing,
`editing, arranging, combining,
`sharing, manipulating, modifying,
`commenting on, transmitting and
`displaying data, images, videos,
`multimedia files, and other digital
`data; desktop and mobile photo
`and video editing software;
`computer software and software
`applications for use in uploading,
`downloading, editing, storing,
`distributing and sharing
`photographic and video content
`via global and local computer
`networks and via mobile devices;
`downloadable multimedia files
`containing digital audio and video
`files featuring user generated
`images, videos, multimedia files,
`and other digital data
`
`(Int’l Class 38) Video
`broadcasting; streaming of video
`
`
`
`Trademark
`
`Reg. No.
`
`5,375,510
`
`GOPRO (&
`design)
`
`
`
`
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`Case 3:19-cv-01004 Document 1 Filed 02/22/19 Page 9 of 53
`
`Filing
`Date
`
`Reg. Date
`
`Full Goods Description
`material on the internet;
`broadcasting of audio and video
`content and programming over
`the internet; electronic delivery of
`images and photographs via a
`global computer network and via
`mobile electronic devices;
`electronic transmission and
`streaming of digital media content
`for others via global and local
`computer networks and via
`mobile electronic devices;
`streaming user generated
`photographic and video content
`via a website on the internet and
`via mobile electronic devices
`
`(Int’l Class 41) Photographic and
`video services, namely,
`photographic and video capture;
`rental of photographic equipment,
`namely, cameras, digital cameras,
`video cameras, camera cases,
`housings, and accessories for
`cameras, namely, batteries,
`lenses, digital photo viewers,
`wireless adapters, power adapters,
`adapter rings for attaching objects
`to cameras, remote controls,
`microphones, SD cards,
`photographic flash units,
`mounting devices for
`photographic equipment, tripods
`and camera straps; providing non-
`downloadable online audio,
`audiovisual, multimedia, picture
`and video content, for educational
`purposes in the field of media,
`news, politics, education,
`entertainment, sports, culture,
`comedy, business, healthy living
`and lifestyle, wellness, fashion,
`personal beauty, current events,
`environmental conservation and
`sustainability issues, food,
`finance, technology, travel,
`books, fine arts, music, art,
`science, literature, leisure,
`gaming, religion, performing arts
`and philanthropy; providing
`educational services, namely,
`conducting classes in the fields of
`photography, videography,
`
`
`
`Trademark
`
`Reg. No.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
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`19
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`15278994.1
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`-9-
`
`Case No. 19-1004
`COMPLAINT FOR TRADEMARK INFRINGEMENT, DILUTION, UNFAIR COMPETITION, AND FALSE ADVERTISING
`
`
`
`

`

`Case 3:19-cv-01004 Document 1 Filed 02/22/19 Page 10 of 53
`
`Filing
`Date
`
`Reg. Date
`
`Full Goods Description
`computer hardware and software
`applications; providing training,
`instruction, instructional tips and
`advice in the field of
`photography, videography;
`providing content retrievable via
`the internet, namely, online
`nondownloadable photos and
`video content for educational and
`entertainment purposes in the
`fields of media, news, politics,
`education, entertainment, sports,
`culture, comedy, business,
`healthy living and lifestyle,
`wellness, fashion, personal
`beauty, current events,
`environmental conservation and
`sustainability issues, food,
`finance, technology, travel,
`books, fine arts, music, art,
`science, literature, leisure,
`gaming, religion, performing arts
`and philanthropy; providing
`online audio, audiovisual,
`multimedia, picture and video
`content for entertainment and
`educational purposes in the fields
`of media, news, politics,
`education, entertainment, sports,
`culture, comedy, business,
`healthy living and lifestyle,
`wellness, fashion, personal
`beauty, current events,
`environmental conservation and
`sustainability issues, food,
`finance, technology, travel,
`books, fine arts, music, art,
`science, literature, leisure,
`gaming, religion, performing arts
`and philanthropy, via a wireless
`network; providing electronic
`entertainment content, namely,
`providing online non-
`downloadable educational audio,
`audiovisual, multimedia and
`video content in the fields of
`media, news, politics, education,
`entertainment, sports, culture,
`comedy, business, healthy living
`and lifestyle, wellness, fashion,
`personal beauty, current events,
`environmental conservation and
`sustainability issues, food,
`
`
`
`Trademark
`
`Reg. No.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`15278994.1
`
`-10-
`
`Case No. 19-1004
`COMPLAINT FOR TRADEMARK INFRINGEMENT, DILUTION, UNFAIR COMPETITION, AND FALSE ADVERTISING
`
`
`
`

`

`Case 3:19-cv-01004 Document 1 Filed 02/22/19 Page 11 of 53
`
`Filing
`Date
`
`Reg. Date
`
`Full Goods Description
`finance, technology, travel,
`books, fine arts, music, art,
`science, literature, leisure,
`gaming, religion, performing arts
`and philanthropy, and providing a
`web site featuring non-
`downloadable photographs and
`videos featuring images, videos,
`multimedia files, and other digital
`data for educational and
`entertainment purposes in the
`fields of media, news, politics,
`education, entertainment, sports,
`culture, comedy, business,
`healthy living and lifestyle,
`wellness, fashion, personal
`beauty, current events,
`environmental conservation and
`sustainability issues, food,
`finance, technology, travel,
`books, fine arts, music, art,
`science, literature, leisure,
`gaming, religion, performing arts
`and philanthropy; organizing
`community sporting and cultural
`events, and organizing regional,
`state-wide and national sporting
`events, namely, cycling,
`motocross, mountain biking,
`motorcycle and car racing, soccer,
`skateboard, skating, skiing, ski
`jumping, snowboarding, hang
`gliding, skydiving, surfing,
`diving, swimming, rafting,
`kayaking, rock climbing, running,
`track and field and extreme sports
`exhibitions and competitions;
`entertainment services, namely,
`providing a website featuring
`non-downloadable photographic,
`audio, video and multimedia
`presentations in the fields of
`technology, travel, entertainment
`news, sports, fitness, recreational
`activities, current events news,
`special interest features in the
`fields of nature, people in
`entertainment, art, pop culture,
`adventure sports, music and
`photography; providing a website
`featuring non-downloadable
`audio and video content for
`entertainment and educational
`
`
`
`Trademark
`
`Reg. No.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`15278994.1
`
`-11-
`
`Case No. 19-1004
`COMPLAINT FOR TRADEMARK INFRINGEMENT, DILUTION, UNFAIR COMPETITION, AND FALSE ADVERTISING
`
`
`
`

`

`Case 3:19-cv-01004 Document 1 Filed 02/22/19 Page 12 of 53
`
`Filing
`Date
`
`Reg. Date
`
`Full Goods Description
`purposes in the fields of
`technology, travel, entertainment,
`sports, fitness, recreational
`activities, news, special interest
`features in the field of science,
`nature, entertainment, art, pop
`culture, adventure sports, music
`and photography; providing an
`online searchable database in the
`fields of photography and
`videography for educational and
`entertainment purposes featuring
`instructional information, images,
`videos, multimedia files, and
`other digital data in the fields of
`photography and videography for
`subject matter related to
`technology, travel, entertainment,
`sports, fitness, recreation, news,
`special interest features in the
`fields of science, nature, people,
`art, pop culture, adventure sports,
`music and photography; on-line
`library services, namely,
`providing electronic library
`services which feature
`photographs and videos via an
`on-line computer network;
`photography and videography
`services, namely, providing
`photographic and video content
`for third parties to use in the
`creation of television programs,
`television commercials, motion
`pictures and films; providing
`online journals, namely, blogs,
`for sharing thoughts, ideas,
`experiences, comments, tips,
`techniques, and advice in the field
`of photography and videography;
`providing conferences, seminars,
`workshops and tutorials in the
`field of photography and
`videography for entertainment
`and educational purposes
`
`(Int’l Class 42) Providing a web
`hosting platform for uploading,
`downloading, storing, managing,
`distributing, editing and sharing
`photographic, video and
`multimedia content of third
`parties; providing temporary use
`
`
`
`Trademark
`
`Reg. No.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`15278994.1
`
`-12-
`
`Case No. 19-1004
`COMPLAINT FOR TRADEMARK INFRINGEMENT, DILUTION, UNFAIR COMPETITION, AND FALSE ADVERTISING
`
`
`
`

`

`Case 3:19-cv-01004 Document 1 Filed 02/22/19 Page 13 of 53
`
`Full Goods Description
`of online non-downloadable
`software for use in uploading,
`downloading, storing,
`distributing, managing, editing
`and sharing photographic, video
`and multimedia content via local
`and global computer networks
`and via mobile devices; Providing
`temporary use of on-line non-
`downloadable cloud computing
`software for use in uploading,
`downloading, storing,
`distributing, managing, editing
`and sharing photographic, video
`and multimedia content via local
`and global computer networks
`and via mobile devices; Peer-to-
`browser photo sharing services,
`namely, providing a website
`featuring technology enabling
`users to upload, view, and
`download digital photos and
`videos; Providing a web site
`featuring temporary use of non-
`downloadable software allowing
`web site users to upload on-line
`videos for sharing with others for
`entertainment purposes;
`Providing a web site that gives
`computer users the ability to
`upload, exchange and share
`photos, videos and video logs;
`Computer services, namely,
`providing search platforms to
`allow users to locate, access,
`copy, transmit, edit, and share
`photographic, video and
`multimedia content; file sharing
`services, namely, providing a
`website featuring technology
`enabling users to download
`electronic files containing user
`generated photos and videos in
`the field of general interest;
`hosting on-line web facilities for
`others for databases and libraries
`of third parties in the field of
`photography and videography
`(Int’l Class 9) Photographic
`equipment, namely, cameras,
`digital cameras, video cameras;
`portable handheld electronic
`devices for recording, storage,
`
`Filing
`Date
`
`Reg. Date
`
`August
`26, 2013
`
`July 5,
`2016
`
`
`
`Trademark
`
`Reg. No.
`
`4,993,752
`
`GOPRO BE A
`HERO (&
`design)
`
`
`
`
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`15278994.1
`
`-13-
`
`Case No. 19-1004
`COMPLAINT FOR TRADEMARK INFRINGEMENT, DILUTION, UNFAIR COMPETITION, AND FALSE ADVERTISING
`
`
`
`

`

`Case 3:19-cv-01004 Document 1 Filed 02/22/19 Page 14 of 53
`
`Filing
`Date
`
`Reg. Date
`
`Full Goods Description
`transmission or reproduction of
`photographic, video and
`multimedia content; cases,
`housings, and accessories for
`cameras, namely, batteries,
`lenses, wireless adapters, power
`adapters, adapter rings for
`attaching objects to cameras,
`remote controls, microphones, SD
`cards, photographic flash units,
`mounting devices for
`photographic equipment, tripods
`and camera straps; cases and bags
`for photographic apparatus;
`computer software for use in
`connection with photographic and
`video equipment and cameras,
`namely, software for taking,
`capturing, managing, processing,
`operating, viewing, storing,
`editing, arranging, combining,
`sharing, manipulating, modifying,
`commenting on, transmitting and
`displaying data, images, videos,
`multimedia files, and other digital
`data; desktop and mobile photo
`and video editing software;
`computer software and software
`applications for use in uploading,
`downloading, editing, storing,
`distributing and sharing
`photographic and video content
`via global and local computer
`networks and via mobile devices;
`downloadable multimedia files
`containing digital audio and video
`files featuring user generated
`images, videos, multimedia files,
`and other digital data.
`
`(lnt’I Class 38) ViVideo
`broadcasting; streaming of video
`material on the internet;
`broadcasting of audio and video
`content and programming over
`the internet; electronic delivery of
`images and photographs via a
`global computer network and via
`mobile electronic devices;
`electronic transmission and
`streaming of digital media content
`for others via global and local
`computer networks and via
`
`
`
`Trademark
`
`
`Reg. No.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`15278994.1