Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1067841
`07/13/2020
`
`ESTTA Tracking number:
`
`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
`
`Attorney informa-
`tion
`
`LEGO Juris A/S
`
`07/12/2020
`
`KOLDINGVEJ 2
`BILLUND, DK-7190
`DENMARK
`
`LAURA POPP-ROSENBERG
`FROSS ZELNICK LEHRMAN & ZISSU, P.C.
`151 WEST 42ND STREET, 17TH FLOOR
`NEW YORK, NY 10036
`UNITED STATES
`Primary Email: lpopp-rosenberg@fzlz.com
`Secondary Email(s): dnuzzaci@fzlz.com, ttabfiling@fzlz.com, skipen@fzlz.com
`212-813-5900
`
`Docket Number
`
`Applicant Information
`
`Application No.
`
`88363121
`
`Publication date
`
`01/14/2020
`
`Opposition Filing
`Date
`
`Applicant
`
`07/13/2020
`
`Opposition Peri-
`od Ends
`
`07/12/2020
`
`GETCOO S.R.L.
`VIA BANDOLI, 7
`48012 BAGNACAVALLO (RA, 48012
`ITALY
`
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: downloadable, recorded web and mobile
`software and applications, namely, software for inventory management; light boxesbeing electrical
`lights for use in professional quality photography; image capture devices, namely, digital cameras;
`downloadable web applications for displaying images and videos, capturing images, inventory man-
`agement
`
`Class 042. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: providing temporary use of non-
`downloadable web and mobile software and applications for inventory management
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`
`ESTTA1067841
`07/13/2020
`
`ESTTA Tracking number:
`
`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
`
`Attorney informa-
`tion
`
`LEGO Juris A/S
`
`07/12/2020
`
`KOLDINGVEJ 2
`BILLUND, DK-7190
`DENMARK
`
`LAURA POPP-ROSENBERG
`FROSS ZELNICK LEHRMAN & ZISSU, P.C.
`151 WEST 42ND STREET, 17TH FLOOR
`NEW YORK, NY 10036
`UNITED STATES
`Primary Email: lpopp-rosenberg@fzlz.com
`Secondary Email(s): dnuzzaci@fzlz.com, ttabfiling@fzlz.com, skipen@fzlz.com
`212-813-5900
`
`Docket Number
`
`Applicant Information
`
`Application No.
`
`88363121
`
`Publication date
`
`01/14/2020
`
`Opposition Filing
`Date
`
`Applicant
`
`07/13/2020
`
`Opposition Peri-
`od Ends
`
`07/12/2020
`
`GETCOO S.R.L.
`VIA BANDOLI, 7
`48012 BAGNACAVALLO (RA, 48012
`ITALY
`
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: downloadable, recorded web and mobile
`software and applications, namely, software for inventory management; light boxesbeing electrical
`lights for use in professional quality photography; image capture devices, namely, digital cameras;
`downloadable web applications for displaying images and videos, capturing images, inventory man-
`agement
`
`Class 042. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: providing temporary use of non-
`downloadable web and mobile software and applications for inventory management
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`
`
`The mark is merely descriptive
`
`Trademark Act Section 2(e)(1)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Application/ Registra-
`tion No.
`
`Registration Date
`
`Word Mark
`
`Goods/Services
`
`Application Date
`
`NONE
`
`NONE
`
`NONE
`
`PICK A BRICK
`
`Retail store services featuring toy building blocks
`
`Attachments
`
`F3600192.pdf(50669 bytes )
`
`Signature
`
`Name
`
`Date
`
`/Sydney Kipen/
`
`Sydney Kipen
`
`07/13/2020
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`LEGO JURIS A/S,
`
`
`
`
`
`GETCOO S.R.L.,
`
`
`
`
`Opposer,
`
`-against-
`
`Applicant.
`
`
`
`
`
`
`
`
`
`Opposition No. ____________
`
`NOTICE OF OPPOSITION
`
`Opposer LEGO Juris A/S (“Opposer”) believes that it will be damaged by the issuance of
`
`a registration for the mark as applied for in Application Serial No.
`
`88363121, and therefore opposes the same. As grounds for the opposition, Opposer, by its
`
`attorneys Fross Zelnick Lehrman & Zissu, P.C., alleges as follows:
`
`1.
`
`Opposer is a Danish corporation with an address of Koldingvej 2, Billund, DK-
`
`7190, Denmark.
`
`2.
`
`Opposer has long sold in the United States and around the world construction toys
`
`and construction toy playsets containing interlocking plastic blocks in various configurations
`
`under the famous trademark LEGO.
`
`3.
`
`For more than a decade, Opposer has used in commerce, and today continues to
`
`use in commerce, the mark PICK A BRICK for retail store services featuring toy building
`
`blocks. Opposer’s PICK A BRICK walls in LEGO stores are a popular feature that allow
`
`consumers to select and purchase individual LEGO elements. Opposer also offers corresponding
`
`{F3598584.1 }
`
`
`
`PICK A BRICK retail store services on its website. Opposer has sold millions of bricks through
`
`its PICK A BRICK service.
`
`4.
`
`Through years of extensive promotion and use, consumers have come to
`
`recognize Opposer’s PICK A BRICK mark as distinctive and as exclusively and uniquely
`
`identifying Opposer’s goods and services. As a result, Opposer has garnered strong common law
`
`trademark rights in the PICK A BRICK mark, and the mark represents enormous goodwill to
`
`Opposer.
`
`B.
`
`Applicant and Its Application
`
`5.
`
`Upon information and belief, and according to the records of the U.S. Patent and
`
`Trademark Office (the “USPTO”), Applicant is an Italian liability company with an address of
`
`Via Bandoli, 7, 48012 Bagnacavallo BAGNACAVALLO (RA), Italy 48012.
`
`6.
`
`Upon information and belief, and according to the records of the USPTO, on
`
`March 29, 2019, Applicant filed with the USPTO Trademark Application Serial No. 88363121
`
`(the “Application”) to register the mark PIQABRICK in the following design format
`
` (“PIQABRICK Mark”) in International Class 9 for “downloadable,
`
`recorded web and mobile software and applications, namely, software for inventory
`
`management; light boxes being electrical lights for use in professional quality photography;
`
`image capture devices, namely, digital cameras; downloadable web applications for displaying
`
`images and videos, capturing images, inventory management” and in International Class 42 for
`
`“providing temporary use of non-downloadable web and mobile software and applications for
`
`inventory management.” The Application was filed based on a claimed intent to use the mark in
`
`commerce under Section 1(b) of the Lanham Act, 15 U.S.C. § 1051(b).
`
`{F3598584.1 }
`
`2
`
`
`
`7.
`
`According to information available on Applicant’s website
`
`(https://box.piqabrick.com/), Applicant applies the PIQABRICK Mark to a product composed of
`
`hardware and software components, the primary purpose of which is to scan, identify and catalog
`
`LEGO elements such as blocks and Minifigure figurines.
`
`FIRST GROUND FOR RELIEF
`
`Opposer repeats the allegations contained in paragraphs 1 through 7 above as if
`
`8.
`
`fully set forth herein.
`
`9.
`
`Upon information and belief, Opposer’s rights in the PICK A BRICK mark pre-
`
`exist any date on which Applicant can rely for its claim of rights in the PIQABRICK Mark.
`
`Accordingly, Opposer’s rights in the PICK A BRICK mark are prior and superior to any rights
`
`Applicant may claim in Applicant’s Mark.
`
`10.
`
`The PIQABRICK Mark is highly similar to Opposer’s PICK A BRICK mark in
`
`terms of sight, sound and commercial impression.
`
`11.
`
`The goods and services identified in the Application are related to goods and
`
`services sold by Opposer, including services offered under Opposer’s PICK A BRICK mark.
`
`12.
`
`Applicant is not connected to Opposer in any way and has not been authorized by
`
`Opposer to register or use the PIQABRICK Mark.
`
`13.
`
`Based on the close similarity of the PIQABRICK Mark to Opposer’s PICK A
`
`BRICK mark, the relatedness of the parties’ respective goods and services, and other factors,
`
`consumers are likely to be deceived into falsely believing that the goods and services proposed to
`
`be offered by Applicant under the PIQABRICK Mark originate from or are otherwise associated
`
`with or endorsed by Opposer, or that there is some relationship between Applicant and Opposer
`
`or the goods and services of Applicant and Opposer, all to Opposer’s injury and harm.
`
`{F3598584.1 }
`
`3
`
`
`
`14.
`
`Thus, registration of Applicant’s Mark as applied for in the Application is likely
`
`to cause confusion, to cause mistake, or to deceive the public into the false belief that the goods
`
`offered by Applicant under the PIQABRICK Mark come from or are otherwise sponsored by or
`
`connected with Opposer, in violation of Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d).
`
`SECOND GROUND FOR RELIEF
`
`
`Opposer repeats the allegations contained in paragraphs 1 through 14 above as if
`
`15.
`
`fully set forth herein.
`
`16.
`
`Upon information and belief, the goods and services intended to be offered under
`
`the PIQABRICK Mark are directed to identifying and cataloging interlocking toy blocks.
`
`17.
`
`Upon information and belief, the pictorial representation in the PIQABRICK
`
`Mark is intended to show an interlocking toy block of the type that is intended to be used with
`
`the goods and services offered under the PIQABRICK mark and sold by Opposer (as well as
`
`other third parties).
`
`18.
`
`The pictorial representation in the PIQABRICK Mark cannot function as part of a
`
`trademark because it is representative of an interlocking toy block.
`
`19.
`
`In fact, Opposer uses a very similar pictorial representation of a block in
`
`connection with its own PICK A BRICK service:
`
`
`
`{F3598584.1 }
`
`4
`
`
`
`20.
`
`If the Application is allowed to mature to registration without a disclaimer of the
`
`pictorial representation of an interlocking toy block, Applicant will be granted rights in a
`
`common design that should be freely available for use by Opposer as well as others.
`
`21.
`
`Registration to Applicant of the PIQABRICK Mark without a disclaimer of the
`
`pictorial representation of a block deign would violate 15 U.S.C. § 1052(e) and harm Opposer by
`
`giving Applicant presumptive exclusivity in and to a design widely in use by others, including
`
`Opposer, thereby impairing Opposer’s and others ability to use block designs in connection with
`
`their products and businesses.
`
`22.
`
`By reason of the foregoing, Opposer is likely to be harmed by registration of the
`
`PIQABRICK Mark without disclaimer of the block design.
`
`WHEREFORE, it is respectfully requested that this Opposition be sustained and that
`
`registration of the mark sought by Applicant in Application Serial No. 88363121 be denied.
`
`
`
`FROSS ZELNICK LEHRMAN & ZISSU, P.C.
`
`
`By: /Laura Popp-Rosenberg/
` Laura Popp-Rosenberg
` Sydney Kipen
`151 W. 42nd Street, 17th Floor
`New York, NY 10036
`Phone: (212) 813-5900
`Email: lpopp-rosenberg@fzlz.com
` skipen@fzlz.com
`
`Attorneys for Opposer LEGO Juris A/S
`
`
`
`Dated: New York, New York
`
`July 13, 2020
`
`
`
`
`
`
`
`
`
`{F3598584.1 }
`
`5
`
`
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