Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA926708
`10/05/2018
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`ESTTA Tracking number:
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`Filing date:
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`Proceeding
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91240167
`
`Plaintiff
`Hong Kong Betaa Technology Limited
`
`KATHLEEN A RHEINTGEN
`HUSCH BLACKWELL LLP
`120 SOUTH RIVERSIDE PLAZA 22ND FLOOR
`CHICAGO, IL 60606
`UNITED STATES
`kathleen.rheintgen@huschblackwell.com
`312-655-1500
`
`Other Motions/Papers
`
`Kathleen A. Rheintgen
`
`kathleen.rheintgen@huschblackwell.com, carol.milton@huschblackwell.com
`
`/kar/
`
`10/05/2018
`
`Opposers Memo in Support of Mot for SJ.pdf(854069 bytes )
`Exhibit 1 - Declaraton of Zhao Tong Fei.pdf(2963622 bytes )
`Exhibit 2 - Declaration of Frank Norton.pdf(3164269 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Opposition No. 91240167
`
`
`
`
`OPPOSER’S MEMORANDUM IN
`SUPPORT OF MOTION FOR
`SUMMARY JUDGMENT
`
`VS.
`
`APPLICANT.
`
`
`In re: Application No.: 87/642,623
`Mark: WORD CROSSY
`Filed: October 12, 2017
`
`
`Hong Kong Betaa Technology Limited,
`
`
`OPPOSER,
`
`
`
`
`HI STUDIO LIMITED,
`
`
`
`
`
`
`I.
`
`
`INTRODUCTION
`
`Pursuant to Rule 56 Hong Kong Betaa Technology Limited (“Opposer”) moves the
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`Board for entry of summary judgment denying registration of Applicant Hi Studio Limited’s
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`U.S. Application Serial No. 87/642,623 for the mark WORD CROSSY. Opposer moves for
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`summary judgment that: (1) it has standing to maintain the proceeding; (2) it is the prior user of
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`WORD CROSSY mark; and (3) Applicant’s continued use of the WORD CROSSY mark in
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`connection with its identical product is likely to cause confusion, mistake or to deceive
`
`consumers.
`
`
`
`II.
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`STATEMENT OF UNDISPUTED FACTS
`
`1.
`
`Hong Kong Betaa Technology Limited (“Opposer”) is a limited liability company
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`formed in Hong Kong, with a business address at Room 06 13a/F South Tower World Finance
`
`Center, Harbour City 17 Canton Road Tst Kl Hong Kong. Declaration of Zhao Tongfei (赵桐菲
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`). (“Zhao Dec.”) ¶ 1. The Zhao Declaration and its Exhibits are attached hereto as Exhibit 1.
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`
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`1
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`

`

`2.
`
`Opposer is the owner of U.S. Application Serial No. 87/853,808 for the mark
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`WORD CROSSY, which recites as its goods “video game software” (the ’808 Application).
`
`Declaration of Frank Norton (“Norton Dec.”) ¶ 1, Exhibit A. The Norton Declaration and its
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`Exhibits are attached hereto as Exhibit 2.
`
`3.
`
`Opposer’s ‘808 Application has alleged a date of first use in commerce of June
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`29, 2017. Id. ¶ 1, Exhibit A.
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`4.
`
`Applicant filed a trademark application for the WORD CROSSY mark, Serial No.
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`87/642,623 (“Opposed Application”) on October 24, 2017 for “video game software” and
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`claimed a date of first use of August 24, 2017. Id. ¶3, Exhibit C.
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`5.
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`The Examiner in charge of Opposer’s ’808 Application issued an office action on
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`July 20, 2018. In that office action the Examiner has cited the Opposed Application as a
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`potential bar to registration of Opposer’s ’808 Application. Id. ¶ 2, Exhibit B.
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`6.
`
`Beginning on June 29, 2017, Opposer launched an app for a word puzzle video
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`game to be played on smart phones and other electronic devices (the “App”) at Google Play app
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`stores. Opposer used the mark WORD CROSSY for the App on both the initialization screen of
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`the App itself and in connection with advertising for the App. Zhao Dec. ¶ 2, Exhibit A.
`
`7.
`
`Opposer has used the WORD CROSSY mark on or in connection with its word
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`puzzle App continuously since the date of first use to the present. Zhao Dec. ¶ 3. Details
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`regarding this use are as follows.
`
`
`
`8.
`
`The WORD CROSSY mark was first used by Opposer on the Google Play
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`platform on June 29, 2017. The documents attached as Exhibit B to the Zhao Dec. is a report
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`from a software reporting service called App Annie from June 29, 2017 that shows Opposer’s
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`
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`2
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`

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`release of the WORD CROSSY App on Google Play starting on June 29, 2017. Zhao Dec. ¶ 4,
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`Exhibit B.
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`9.
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`Exhibit C to the Zhao Declaration shows use of the WORD CROSSY mark in an
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`ad for Opposer’s downloadable puzzle game App on the iOS platform for iPhone and iPad on
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`August 23, 2017. This ad included a link to download the game. Zhao Dec. ¶5, Exhibit C.
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`10.
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`The document attached as Exhibit D to the Norton Declaration is a screenshot
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`from Google Play that shows use of the WORD CROSSY mark by players of the App on the
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`Google Play platform since the introduction of the App from August 2017 to the present. The
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`version information on the last page shows version 1.0.7 with a release date of August 3, 2017.
`
`Norton Dec. ¶ 4, Exhibit D.
`
`11.
`
`Opposer began use of the WORD CROSSY mark on its Facebook page on June
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`29, 2017. The documents attached as Exhibit D to the Zhao Dec. are dated screenshots from
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`Facebook showing Opposer’s use of WORD CROSSY mark for the dates between June 29, 2017
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`and August of 2017. The App could be downloaded directly from Opposer’s Facebook page by
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`clicking the “install now” button on the interactive advertisement. Zhao Dec. ¶ 6, Exhibit D.
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`12.
`
`On September 14, 2017, Opposer opened a new Facebook account for the WORD
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`CROSSY App and the WORD CROSSY mark has been used on this Facebook page from that
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`date to the present. Zhao Dec. ¶7.
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`13.
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`Exhibit E to the Norton Declaration contains dated screen shots from the new
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`Facebook account showing use of the WORD CROSSY mark from September 2017 to the
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`present. Norton Dec. ¶5, Exhibit E.
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`14.
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`The table in Exhibit E to the Zhao Declaration also shows the total number of
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`Facebook ads that were sent by Opposer for the WORD CROSSY App and how many were
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`
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`3
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`

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`opened by users for the months of July and August 2017. These ads used the WORD CROSSY
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`mark and included a link to allow for the WORD CROSSY game to be downloaded. Zhao Dec. ¶
`
`7. Exhibit E.
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`15.
`
`Opposer began use of the WORD CROSSY mark on games for PC (Windows and
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`Mac) at least as early as September 28, 2017. Exhibit F to the Norton Declaration shows a copy
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`of an ad for Opposer’s WORD CROSSY App for games for PC (Windows and Mac) dated
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`September 28, 2017. This ad includes a link to allow the game to be downloaded. Norton Dec.
`
`¶6, Exhibit F.
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`16.
`
`Opposer’s WORD CROSSY App is also advertised on YouTube. Exhibit F to the
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`Zhao Declaration shows the opening screen of a YouTube video published on September 26,
`
`2017 using the WORD CROSSY mark on or in connection with Opposer’s word puzzle games.
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`Zhao Dec. ¶9, Exhibit F.
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`17.
`
`As shown on Exhibit G to the Zhao Declaration, by June 30, 2017 Opposer’s
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`WORD CROSSY App had been downloaded onto at least 3,752 devices. Zhao Dec. ¶10, Exhibit
`
`G.
`
`18.
`
`Opposer’s WORD CROSSY App has had continuous downloads from the date of
`
`first use to the present. Exhibit G to the Zhao Declaration shows the number of downloads by
`
`month of Opposer’s WORD CROSSY puzzle games from the date of first use to the present.
`
`Zhao Dec. ¶11, Exhibit G.
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`19.
`
`On or about July 4, 2017 Opposer began experimenting with search terms on the
`
`Google Play platform using “crossword” to drive more search traffic to the App. Opposer
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`continued to use the WORD CROSSY mark during this time. Exhibit H to the Zhao Declaration
`
`
`
`4
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`

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`shows use by Opposer in August 2017 of “Crossword” together with the WORD CROSSY mark.
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`Zhao Dec. ¶13, Exhibit H.
`
`20.
`
`During the market testing of CROSSWORD, Opposer’s Facebook page continued
`
`to display the WORD CROSSY mark in connection with the offering of the App for download.
`
`The Facebook page included a link to download the Opposer’s word puzzle App. Zhao Dec.
`
`¶14, and See Exhibit D to the Zhao Declaration.
`
`21.
`
`Opposer has since the date of first use continuously used the WORD CROSSY
`
`mark in its email address (wordcrossy@outlook.com) for correspondence with consumers of
`
`Opposer’s WORD CROSSY puzzle games. Zhao Dec. ¶15.
`
`22.
`
`The WORD CROSSY mark has been used by Opposer and by consumers and
`
`business partners in correspondence regarding the WORD CROSSY App from at least as early
`
`as July 5, 2017 thru at least August 25, 2017. Documents consisting of correspondence to/from
`
`the wordcrossy@outlook.com email address are attached as Exhibit H to the Zhao Declaration.
`
`Zhao Dec. ¶16, Exhibit J.
`
`23.
`
`Exhibit G to the Norton Declaration contains copies of the search results for the
`
`WORD CROSSY mark using the Google search engine for the dates between July 1, 2017 and
`
`August 31, 2017. These results show Opposer’s WORD CROSSY mark for word puzzle games
`
`available on various platforms. Norton Dec. ¶7, Exhibit G.
`
`24.
`
`Exhibit D to the Norton Declaration shows Opposer was using the mark WORD
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`CROSSY together with a stylized version of CROSSWORD as shown below as of June 29,
`
`2017. Norton Dec. ¶8, Exhibit D.
`
`
`
`5
`
`

`

`25.
`
` As shown in Exhibit H to the Norton Declaration , Applicant was also using a
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`stylized version of CROSSWORD with its WORD CROSSY mark. Norton Dec. ¶9, Exhibit H.
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`26.
`
`Opposer’s WORD CROSSY App is a word puzzle game where players join
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`letters from a pre-existing set of letters to form words and fill in a crossword puzzle
`
`configuration. Zhao Dec. ¶17.
`
`27.
`
`Applicant’s WORD CROSSY game is also a word puzzle game where players
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`join letters from a pre-existing set of letters to form words and fill in a crossword puzzle
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`configuration. Applicant’s WORD CROSSY word puzzle game uses the same game format and
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`word play as found in Opposer’s WORD CROSSY word puzzle game. Applicant’s WORD
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`CROSSY game competes directly with Opposer’s WORD CROSSY game. Zhao Dec. ¶18.
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`28. Exhibit H to the Norton Declaration shows copies of online advertisements that
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`display both Opposer and Applicant’s WORD CROSSY games. Norton Dec. ¶10, Exhibit H.
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`29.
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`After the filing of this Opposition, Applicant offered to sell the WORD CROSSY
`
`Opposed Application to Opposer for $1 million dollars, notwithstanding Opposer’s first use of
`
`such mark in commerce. Zhao Declaration ¶19.
`
`
`
`6
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`

`

`III.
`
`THE BOARD SHOULD GRANT SUMMARY JUDGMENT DENYING
`REGISTRATION OF THE OPPOSED MARK BASED ON OPPOSER’S PRIOR
`USE OF THE SAME MARK AND THAT THE LIKELIHOOD OF CONFUSION
`BETWEEN APPLICANT’S AND OPPOSER’S MARKS
`
`Summary judgment is appropriate when there is no genuine issue of material fact and the
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`moving party is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56(c). A genuine
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`dispute with respect to a material fact only exists if sufficient evidence is presented that a
`
`reasonable fact finder could decide the question in favor of the non-moving party. See Opryland
`
`USA Inc. v. Great American Music Show Inc., 970 F.2d 847, 23 U.S.P.Q.2d 1471 (Fed. Cir.
`
`1992). Any doubts as to whether any particular factual issues are genuinely in dispute must be
`
`resolved in the light most favorable to the non-moving party. See Olde Tyme Foods Inc. v.
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`Roundy's Inc., 961 F.2d 200, 22 U.S.P.Q.2d 1542 (Fed. Cir. 1992).
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`A party moving for summary judgment in its favor on a claim of priority and likelihood
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`of confusion must establish that there is no genuine dispute that (1) it has standing to maintain
`
`the proceeding; (2) it is the prior user of its pleaded mark or marks; and (3) contemporaneous use
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`of the parties’ respective marks in connection with their respective goods or services would be
`
`likely to cause confusion, mistake or to deceive consumers. See Hornblower & Weeks, Inc. v.
`
`Hornblower &Weeks, Inc., 60 U.S.P.Q.2d 1733 (TTAB 2001); see also, King Candy Co., Inc. v.
`
`Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 U.S.P.Q. 108 (CCPA 1974). As explained
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`below, all three elements are satisfied here.
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`A.
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`Opposer has Standing.
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`Applicant’s Opposed Application has been cited as a potential bar to registration of the
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`WORD CROSSY mark in Opposer’s pending ’808 Application. The Examining Attorney has
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`stated that “[i]f the mark in the referenced application registers, applicant’s mark may be refused
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`registration under Trademark Act Section 2(d) because of a likelihood of confusion between the
`
`
`
`7
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`

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`two marks.” Accordingly, there is no genuine dispute as to any fact related to standing. Fiat
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`Group Automobiles S.p.A. v. ISM, Inc. 94 U.S.P.Q.2d 1111 TTAB 2010); 15 U.S.C. § 1063
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`(authorizing any person who believes he would be damaged by the registration of a mark on
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`Principal Register to file an opposition).
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`
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`B.
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`Opposer has Priority.
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`To establish priority Opposer needs to show that, as compared to the Applicant, Opposer
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`owns a “mark or trade name previously used in the United States…” Trademark Act §2, 15
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`U.S.C.§1052. If there is no existing registration, the Opposer must show that it had used the
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`mark earlier in time then the Applicant.
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`
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`Opposer began use of the WORD CROSSY mark on June 29, 2018. Applicant, in its
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`application, claims a date of first use of August 24, 2017. The evidence set out in the statement
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`of uncontested facts and supported by the accompanying declarations and Exhibits shows that
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`Opposer used the WORD CROSSY mark continuously from June 29, 2017, the date of first use,
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`to the present date. Opposer thus has prior use of the WORD CROSSY mark and is the senior
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`user.
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`Exhibit B to the Zhao Declaration is a report from an app reporting service called App
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`Annie that show the release of version 1.0.0 of Opposer’s App as June 28, 2017 at 10:43 PM and
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`version 1.0.1 on June 29, 2017 at 10:42 PM. The opening screen for the App showed the WORD
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`CROSSY mark as shown here. See Zhao Dec. ¶2, Exhibit A
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`
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`8
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`

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`Further, the screenshot below from Opposer’s Facebook page dated June 29, 2017 shows
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`use of the WORD CROSSY word for Opposer’s App. The App can be downloaded from this
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`
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`Facebook page.
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`9
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`

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`This and other dated Facebook screenshots are shown in Exhibit D to the Zhao
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`Declaration and Exhibit E to the Norton Declaration.
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`This uncontroverted evidence shows that Opposer’s date of first use is at least as early as
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`June 29, 2017 as stated in the ‘808 Application, and that Opposer’s date of first use is prior to
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`that of Applicant.
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`Between the dates of Opposer’s first use and the date that Applicant purportedly began its
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`use of the identical WORD CROSSY mark of the same type of game app, there were 37,973
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`device installs of Opposer’s WORD CROSSY App. Zhao Dec. ¶ 12, Exhibit H (HK0000123).
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`
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`Opposer’s WORD CROSSY App has been continuously available for download or
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`purchase by consumers from the date of first use until the present. The WORD CROSSY App
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`has been available for download on several platforms, including Google Play, Facebook, and the
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`iOS platform for the iPhone and iPad. Declarations of Zhao Tongfei (赵桐菲) and Frank Norton
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`and Exhibits attached thereto.
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`The ad below shows Opposer’s use of the WORD CROSSY mark on August 23, 2017 in
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`an online ad for the App that includes a link to download the App. The full page is shown at
`
`Exhibit C in the Zhao Declaration.
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`
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`10
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`

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`
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`This ad is a point of purchase display using the mark in connection with the sale of the
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`goods, as it provides a link to download the App to the consumer’s iPad or iPhone.
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`
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`Opposer’s WORD CROSSY App has been continuously available for download on
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`Opposer’s Facebook page from the date of first use, as shown in the screen shots in Exhibit D to
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`the Zhao Declaration and Exhibit E to the Norton Declaration. This use on Facebook is further
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`use of the WORD CROSSY mark on point of purchase displays in connection with the goods, as
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`there is a link to install the App on the Facebook page.
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`11
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`

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`31 Comments
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`And the ad below shows use of the WORD CROSSY mark with the Wordcross logo, on
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`the Google Play platform.
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`
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`As seen in the full ad shown in Exhibit D to the Norton Declaration, the ad has an “Updated”
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`date of August 3, 2017 and includes comments from users from August and September 2017.
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`
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`There is no question of fact that Opposer was using WORD CROSSY mark on video
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`game software, before the earliest alleged first use date in the Opposed Application. Opposer
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`was using the WORD CROSSY mark well prior to Applicant’s earliest date of use and has
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`continued that use to the present. Opposer therefore has priority.
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`C. There is a likelihood of confusion between the marks.
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`A mark must be denied registration if it “[c]onsists of or comprises a mark which so
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`resembles a mark registered in the Patent and Trademark Office, or a mark or trade name
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`previously used in the United States by another and not abandoned, as to be likely, when used on
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`or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to
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`deceive.” 15 U.S.C. § 1052(d). Whether a likelihood of confusion exists between marks is
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`“determined as a matter of law” and is “decided upon the particular facts of the case.” In re Shell
`
`
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`13
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`

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`Oil Co., 992 F.2d 1204, 1206, 26 U.S.P.Q.2d 1687 (Fed. Cir. 1993). Any reasonable doubt as to
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`likelihood of confusion must be resolved against the junior user in favor to the senior user, “for
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`the newcomer has the opportunity of avoiding confusion, and is charged with the obligation to do
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`so.” In re Mighty Leaf Tea, 601 F.3d at 1346 (quoting Shell Oil, 992 F.2d at 1209).
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`
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`In the present case the marks are identical and the goods are identical. Applicant has
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`copied Opposer’s entire WORD CROSSY mark and is using it on identical goods—video game
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`software. Applicant is further using the mark for the exact same type of video game software—
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`word puzzle games where players join letters from a pre-existing set of letters to form words and
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`fill in a crossword puzzle configuration.
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`When the marks are identical and the goods are identical, the only possible finding is a
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`likelihood of confusion. Moreover, because the goods are identical, there can be no dispute that
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`they are presumably promoted through the same channels of trade and to the same prospective
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`consumers. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1268, 62 U.S.P.Q.2d
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`1001, 1005 (Fed. Cir. 2002) ("[A]bsent restrictions in the application and registration, goods and
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`services are presumed to travel in the same channels of trade to the same class of purchasers.").
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`In the case at bar, the undisputed evidence shows the two games being advertised on same screen
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`on the internet. Norton Dec. ¶ 10, Exhibit H.
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`14
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`

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`In addition, there is evidence of copying and bad faith on the part of the Applicant.
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`Applicant not only copied the exact mark WORD CROSSY, but also copied a version of
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`Opposer’s logo that uses CROSSWORD in a stylized logo. Further, after this Opposition was
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`filed, Applicant contacted Opposer and offered to sell them the WORD CROSSY mark for the
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`extortionate amount of $1 million dollars. This evidence of copying also supports a finding of a
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`likelihood of confusion. My-T Fine Corp. v. Samuels, 69 F.2d 76 (2d Cir 1934).
`
`As set forth herein, Opposer has established that there is no genuine issue of fact as to
`
`standing, priority, or likelihood of confusion. Consequently, pursuant to 15 U.S.C. § 1052(d),
`
`Fed. R. Civ. P. 56, 37 C.F.R. § 2.116 and 37 C.F.R. § 2.127, summary judgment should be
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`entered in favor of Opposer and Applicant's application should be refused registration on the
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`Principal Register.
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`October 5, 2018
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`Respectfully Submitted,
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`
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`
`
`/s/ Kathleen A. Rheintgen
`Kathleen A. Rheintgen, Esq.
`Husch Blackwell LLP
`120 S. Riverside Plaza, 22nd Floor
`Chicago, IL 60606
`(312) 655-1500
`kathleen.rheintgen@huschblackwell.com
`
`Counsel for Opposer
`
`
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`15
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`

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`PROOF OF SERVICE
`
`The undersigned certifies service of the foregoing Opposer’s Memorandum in Support of
`
`Motion for Summary Judgment on the Applicant by electronic mail on counsel for the Applicant
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`and via the TTAB Filing System on the date indicated below:
`
`Thomas P. Howard
`Thomas P. Howard LLC
`842 W. South Boulder Road, Suite 100
`Louisville, CO 80027
`thoward@thowardlaw.com
`
`
`
`
`October 5, 2018
`
`
`
`
`
`
`
`
`
`/s/ Kathleen A. Rheintgen
`
`
`
`
`
`
`
`16
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`Opposition No. 91240167
`
`
`
`
`
`
`In re: Application No.: 87/642,623
`Mark: WORD CROSSY
`Filed: October 12, 2017
`
`
`Hong Kong Betaa Technology Limited,
`
`
`OPPOSER,
`
`
`
`
`HI STUDIO LIMITED,
`
`
`
`
`
`
`APPLICANT.
`
`VS.
`
`
`
`EXHIBIT 1
`
`DECLARATION OF ZHAO TONG FEI
`
`IN SUPPORT OF OPPOSER’S MOTION FOR
`SUMMARY
`
`
`
`
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re: Application No.: 87642623
`Mark: WORD CROSSY
`Filed: October 12. 2017
`
`Hong Kong Betm Technology Limited.
`OPPOSER,
`
`VS‘
`HI STUDIO Lm,
`
`APPLICANT.
`
`Opposition No. 91240167
`
`ZHAO TONG FEI
`Declaration of ZHAO TONG FEI
`In Support of Opposcr‘s Motion for
`Summary Judgment
`
`
`
`I, Mdeclam under penalty of perjury under the laws of the
`
`United States of America that I am an employee of Hong Kong Betaa Technology Limited, that I
`
`have knowledge of the facts in this declaration and that the following statements are true and
`
`correct.
`
`1.
`
`Hong Kong Betaa Technology Limited (“Opposer”) is a limited liability company
`
`formed in Hong Kong, with a business address at Room 06 13afF South Tower World Finance
`
`Center, Harbour City 17 Canton Road Tst K1 Hong Kong.
`
`2.
`
`Beginning on June 29, 201?, Opposer launched a computer app for a word puzzle
`
`video game to be played on smart phones and other electronic devices (the “App") at Google
`
`Play app stores. Opposer used the mark WORD CROSSY for the App on both the initialization
`
`screen of the App itself (Exhibit A) and in connection with advertising for the App.
`
`3.
`
`The WORD CROSBY mark has been used continuously on or in connection with
`
`the promotion and offerings of the App for download since the date of first use to the present.
`
`4.
`
`The WORD CROSSY mark was first used by Opposer on the Google Play
`
`platform on June 29, 2017. The document attached as Exhibit B is a true and correct copy of a
`
`CHI-21‘26'Ll
`
`

`

`report from a software reporting service called App Annie from June 29. 2017 that shows
`
`Opposer‘s first use of the WORD CROSSY mark on Google Play.
`
`5.
`
`Exhibit C contains a true and correct copy of an ad for the WORD CROSSY mark
`
`.
`for downloadable puzzle games on the iOS platform for iPhone and iPad dated August 23. 2017.
`
`This ad included a link to download the game.
`
`6.
`
`Opposer began use of the WORD CROSSY mark on its Facebook page on June
`
`29. 2017. The documents attached as Exhibit D are dated sc reenshots from Facebook showing
`
`Opposer’s use of WORD CROSSY mark for the dates between June 29. 201 "I and August of
`
`2017.
`
`The App could be downloaded directly from Opposer‘s Facebook
`
`page by clicking the “install now“ button.
`
`7.
`
`On September 14. 2017, a new Facebook account was set up for the WORD
`
`CROSSY App and the WORD CROSSY mark has been in use on that Facebook page from that
`
`date to the present.
`
`8.
`
`Opposer also sent out ads on Facebook for the WORD CROSSY App. The table
`
`in Exhibit E also shows the total number of Facebook ads that were sent and how many were
`
`opened by users for the months of July and August 2017. These ads used the WORD CROSSY
`
`mark and included a link to allow for the WORD CROSSY game to be downloaded.
`
`9.
`
`Opposer’s WORD CROSSY App was also advertised on YouTube. Exhibit F
`
`shows the opening screen of a YouTube video published on September 26. 2017 using the
`
`WORD CROSSY mark on or in connection with Opposer’s word puzzle games.
`
`10.
`
`As shown on Exhibit G, by June 30., 2017 Opposer’s WORD CROSSY App had
`
`been downloaded onto at least 3,752 devices.
`
`CHI-”42614
`
`

`

`ll.
`
`Opposer’s WORD CROSSY App has had continuous downloads from the date of
`
`H
`first use to the present. Exhibit H shows the number of downloads by month of Opposer‘s
`
`WORD CROSSY puzzle games from the date of first use to the present.
`
`12.
`
`Between Opposer’s date of first use and when Applicant first used the WORD
`
`CROSSY mark on August 24, 2017 there were 37,923 downloads of Opposer’s WORD
`
`CROSSY App. See Exhibit H.
`
`13.
`
`On or about July 4, 2017 Opposer began experimenting with search terms on the
`
`Google Play platform using “crossword" to drive more search traffic to the App. Opposer
`
`continued to use the WORD CROSSY mark during this time. Exhibit 1 shows use by Opposer in
`
`August 201'?r of “Crossword” together with the WORD CROSSY mark.
`
`14.
`
`During the market testing of CROSSWORD. Opposer's Facebook page continued
`
`to display the WORD CROSSY mark in connection with the offering of the App for download.
`
`The Facebook page included a link to download the Opposer’s word puzzle App. See Exhibit E.
`
`15.
`
`Opposer has since the date of first use continuously used the WORD CROSSY
`
`mark in its email address (wordcrossy@outlook.com) for correspondence with consumers of
`
`Opposer‘s WORD CROSSY puzzle games.
`
`16.
`
`The WORD CROSSY mark has been used by Opposer and by consumers and
`
`business partners in correspondence regarding the WORD CROSSY puzzle games from at least
`
`as early as July 5, 20] 7 thru at least August 25, 2017. True and correct copies of
`
`correspondence to/from the worderossy§moutlookcom email address are attached as Exhibit .1.
`
`17.
`
`Opposer‘s WORD CROSBY App is a word puzzle game where players join
`
`letters from a pre-existing set of letters to form words and fill in a crossword puzzle
`
`configuration.
`
`CHI-1142674
`
`

`

`18.
`
`Applicant‘s WORD CROSSY game is also a word puzzle game where players
`
`join letters from a pre-cxisting set of letters to form words and fill in a crossword puzzle
`
`configuration. Applicant’s WORD CROSSY word puzzle game uses the same game format and
`
`word play as found in Opposer’s WORD CROSSY word puzzle game. Applicant’s WORD
`
`CROSSY game competes directly with Opposer's WORD CROSSY game.
`
`19.
`
`After the filing of this Opposition. Applicant offered to sell its WORD CROSSY
`
`application to Opposer for $1 million dollars, notwithstanding Opposer’s first use of such mark
`
`in commerce.
`
`Execmedon gtfl ~50 Hg
`
`339.9 lQflG 71:1
`
`Name
`
`fiflfl
`
`CI-I-Zlm'I-I
`
`
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`Opposition No. 91240167
`
`
`
`
`
`
`In re: Application No.: 87/642,623
`Mark: WORD CROSSY
`Filed: October 12, 2017
`
`
`Hong Kong Betaa Technology Limited,
`
`
`OPPOSER,
`
`
`
`
`HI STUDIO LIMITED,
`
`
`
`
`
`
`APPLICANT.
`
`VS.
`
`
`
`EXHIBIT A
`
`TO DECLARATION OF ZHAO TONG FEI
`
`FILED IN SUPPORT OF OPPOSER’S MOTION
`FOR SUMMARY
`
`
`
`
`
`

`

`
`
`HK0000147
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`Opposition No. 91240167
`
`
`
`
`
`
`In re: Application No.: 87/642,623
`Mark: WORD CROSSY
`Filed: October 12, 2017
`
`
`Hong Kong Betaa Technology Limited,
`
`
`OPPOSER,
`
`
`
`
`HI STUDIO LIMITED,
`
`
`
`
`
`
`APPLICANT.
`
`VS.
`
`
`
`EXHIBIT B
`
`TO DECLARATION OF ZHAO TONG FEI
`
`FILED IN SUPPORT OF OPPOSER’S MOTION
`FOR SUMMARY
`
`(PUBLIC VERSION)
`
`
`
`
`
`

`

`REDACTED
`
`Confidential Attorneys Eyes Only
`
`HK0000005
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`Opposition No. 91240167
`
`
`
`
`
`
`In re: Application No.: 87/642,623
`Mark: WORD CROSSY
`Filed: October 12, 2017
`
`
`Hong Kong Betaa Technology Limited,
`
`
`OPPOSER,
`
`
`
`
`HI STUDIO LIMITED,
`
`
`
`
`
`
`APPLICANT.
`
`VS.
`
`
`
`EXHIBIT C
`
`TO DECLARATION OF ZHAO TONG FEI
`
`FILED IN SUPPORT OF OPPOSER’S MOTION
`FOR SUMMARY
`
`
`
`
`
`

`

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`HK0000096
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`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`