Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1118939
`03/08/2021
`
`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
`
`WeWork Companies LLC
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`03/10/2021
`
`115 WEST 18TH STREET
`NEW YORK, NY 10011
`UNITED STATES
`
`LAURA POPP-ROSENBERG
`FROSS ZELNICK LEHRMAN & ZISSU, P.C.
`151 W. 42ND STREET, 17TH FLOOR
`NEW YORK, NY 10036
`UNITED STATES
`Primary Email: lpopp-rosenberg@fzlz.com
`Secondary Email(s): lkittay@fzlz.com, dnuzzaci@fzlz.com, ttabfiling@fzlz.com
`2128135900
`
`Docket Number
`
`WEWO 2009601
`
`Applicant Information
`
`Application No.
`
`90023772
`
`Publication date
`
`11/10/2020
`
`Opposition Filing
`Date
`
`Applicant
`
`03/08/2021
`
`Opposition Peri-
`od Ends
`
`03/10/2021
`
`QIU CHAOYI
`ROOM 501, WEST TOWER, XINCHENG BUILDING
`SHENNAN MIDDLE ROAD, FUTIAN DISTRICT
`SHENZHEN, GUANGDONG, 518000
`CHINA
`
`Goods/Services Affected by Opposition
`
`Class 035. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Accounting services; Advertising services;
`Commercial administration of the licensing of the goods and services of others; Import-export agency
`services; Marketing services; Personnel management consultancy; Providing business information
`via a web site; Provision of an online marketplace for buyers and sellers of goods and services; Publi-
`city agency services; Sales promotion for others
`
`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.
`
`4453874
`
`Registration Date
`
`12/24/2013
`
`Application Date
`
`03/22/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`WEWORK
`
`NONE
`
`Class 035. First use: First Use: 2010/02/00 First Use In Commerce: 2011/10/00
`Providing co-working facilities equipped with private offices, office equipment,
`mailroom, printing center, receptionist, kitchen, meeting rooms, telecommunica-
`tions equipment and other office amenities; Business information services; in-
`cubation services, namely, providing work space containing business equipment
`and other amenities to emerging, start-up andexisting companies; Business de-
`velopment services, namely, providing start-up support for businesses of others;
`providing office support services; online business networking services; Adminis-
`tering group purchasing programs and other discount programs, namely negoti-
`ating with providers of insurance, banking, credit card processing, travel and
`transportationservices, to enable participant membersof a business community
`to obtain discounts on the purchase of those services from others; computer-as-
`sisted business information and research services; assistance and advice re-
`garding business location; arranging and conducting special events, parties,
`camps, concerts and travel for business purposes
`Class 041. First use: First Use: 2010/02/00 First Use In Commerce: 2011/10/00
`Entertainment and educational services,namely, organizing, conducting and ar-
`ranging training, classes, seminars, workshops, conferences and exhibitions in
`thefields of business, technology and social networking; electronic publication
`ofblogs, brochures, magazines, and newsletters on a wide variety of topics; ar-
`ranging, organizing, conducting and hostingsocial entertainment events
`Class 042. First use: First Use: 2013/02/00 First Use In Commerce: 2013/03/22
`Computer services, namely, creating an on-line community for registered users
`to participate in discussions, get feedback from their peers, form virtual com-
`munities, and engage in business and socialnetworking; platforms for providing
`a web-based on-line portal for customers toparticipate in business and social
`networking, engage in virtual communities, manage membership in a co-working
`and private office facilities service, request and manage office assignments, re-
`serve conference rooms, control employees' useraccess, order printing services,
`and sign up and pay for vendor services such as catering, benefits and health
`insurance; computer services, namely, hosting on-line web facilities for others
`for organizing and conducting online introductions, meetings, gatherings and in-
`teractivediscussions; computer services, namely,interactive hosting services
`which allow the user to publish and share their own content and images, and in-
`teract with others, on-line; computer services, namely, cloud hosting provider
`services; computer services, namely, on-site and remote management of IT sys-
`tems; installation [, updating and maintenance ] of computer software; [ rental of
`web servers; ]server hosting; technical support services, namely, troubleshoot-
`ing of computersoftware problems; technical support services, namely,
`troubleshooting in the nature of diagnosing computer hardware and software
`problems
`Class 045. First use: First Use: 2013/02/00 First Use In Commerce: 2013/03/22
`Online social networking services; social networking services in the field of busi-
`ness provided via a website
`
`

`

`U.S. Registration
`No.
`
`5276604
`
`Registration Date
`
`08/29/2017
`
`Application Date
`
`11/12/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`WEWORK
`
`NONE
`
`Class 035. First use: First Use: 2011/04/02 First Use In Commerce: 2011/04/02
`Providing on-line employment information in the field of careers, job listings,job
`resources and resumes; providing career information; business networking ser-
`vices
`
`U.S. Registration
`No.
`
`5380816
`
`Registration Date
`
`01/16/2018
`
`Application Date
`
`10/07/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`WELIVE
`
`NONE
`
`Class 009. First use: First Use: 2016/04/04 First Use In Commerce: 2016/04/04
`Computer application software for mobile phones and handheld computers,
`namely,software for members of a residential community to participate in social
`networking, engage in virtual communities, manage their community member-
`ship
`Class 038. First use: First Use: 2016/04/04 First Use In Commerce: 2016/04/04
`Digital network telecommunications services; providing multiple user wireless
`access to the Internet
`Class 042. First use: First Use: 2016/04/04 First Use In Commerce: 2016/04/04
`Computer services, namely, creating an on-line community for registered users
`to participate in discussions, get feedback from their peers, form virtual com-
`munities, and engage in social networking; providing a web hosting platform for
`members of a residential community to participate in social networking, engage
`in virtual communities, manage community membership; computer services,
`namely, on-site and remote management of IT systems;technical support ser-
`vices, namely, troubleshooting of computer software problems; technical support
`services, namely, troubleshooting in the nature of diagnosing computer hard-
`ware and software problems
`Class 043. First use: First Use: 2016/04/04 First Use In Commerce: 2016/04/04
`Providing community centers for social gatherings and meetings; providing of
`drink
`Class 045. First use: First Use: 2016/04/04 First Use In Commerce: 2016/04/04
`online social networking services; personal concierge services for others com-
`prising making requested personal arrangements and reservations, running er-
`rands and providing customer specific information to meet individual needs, all
`rendered in residential complexes
`
`U.S. Registration
`No.
`
`5868965
`
`Registration Date
`
`09/24/2019
`
`Application Date
`
`10/12/2017
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`WE
`
`The mark consists of the letters "WE" inside of a circle.
`
`Class 035. First use: First Use: 2019/05/00 First Use In Commerce: 2019/05/00
`Incubation services, namely, business development services for others; incuba-
`tion services, namely, providing start-up support for businesses of others; incub-
`ation services, namely, providing business networking events; providing facilities
`for business meetings; business operation of offices and office space
`
`U.S. Registration
`No.
`
`5980652
`
`Registration Date
`
`02/11/2020
`
`Application Date
`
`07/30/2018
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`WEWORK
`
`The mark consists of the stylized wording "WEWORK" in lowercase letters.
`
`Class 035. First use: First Use: 2012/01/00 First Use In Commerce: 2012/01/00
`Incubation services, namely, providing work space containing business equip-
`mentand other office amenities in the nature of a receptionist, meeting rooms, a
`mailroom, printing center, kitchen, and telecommunications equipment, all for
`business purposes to emerging, start-up and existing companies; providing facil-
`itiesfor business meetings and business events; business operation of commer-
`cial real estate, offices and office space for others; providing shared office space
`containing business equipment and other office amenities in the nature of a re-
`ceptionist, meeting rooms, a mailroom, printing center, kitchen, and telecommu-
`nications equipment, all for business purposes to emerging, start-up and existing
`companies; providing coworking facilities forbusiness meeting purposes
`Class 036. First use: First Use: 2012/01/00 First Use In Commerce: 2012/01/00
`Real estate services, namely, leasing of office space and real estate; Rental of
`office space; rental of shared office space
`Class 043. First use: First Use: 2012/01/00 First Use In Commerce: 2012/01/00
`Providing food and beverage services; providing meeting room services in the
`nature of rental of meeting rooms and conference rooms
`
`Attachments
`
`F3942298.PDF(119224 bytes )
`
`Signature
`
`/Laura Popp-Rosenberg/
`
`Name
`
`Date
`
`LAURA POPP-ROSENBERG
`
`03/08/2021
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`WEWORK COMPANIES LLC,
`
`
`Opposer,
`
`
`
`-against-
`
`
`QIU CHAOYI,
`
`
`Applicant.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`WeWork Companies LLC believes that it will be damaged by the issuance of a
`
`registration for the trademark WEWOOD as applied for in U.S. Trademark Application Serial
`
`No. 90023772, and therefore opposes the same. As grounds for this opposition, Opposer alleges
`
`as follows:
`
`1.
`
`WeWork Companies LLC (“Opposer”) is a Delaware limited liability company
`
`with an address of 45 West 18th Street, 6th Floor, New York, New York, 10011.
`
`2.
`
`Opposer, the acknowledged leader in the shared office space industry in the
`
`United States, has provided businesses and individuals with workspace, commercial real estate,
`
`residential real estate, community, education, and related goods and services since at least as
`
`early as 2010 under a family of marks that includes WE, WEWORK, WELIVE, and many other
`
`WE-formatives (collectively, “Opposer’s Marks”).
`
`3.
`
`Opposer’s Marks all contain the distinctive WE term and have been used and
`
`advertised in such a manner that the public associates not only the individual marks, but the
`
`common WE term, with a single source – namely, Opposer.
`
`{F3733193.1 }
`
`
`
`

`

`4.
`
`Among Opposer’s myriad offerings are shared office space and coworking
`
`facilities (including private offices, meeting rooms, office support staff and other office
`
`amenities), real estate management services, incubation services, event hosting and
`
`entertainment services, and business information services, all of which are promoted and offered
`
`under Opposer’s Marks.
`
`5.
`
`As a result of Opposer’s reputation, substantial sales success, inestimable
`
`popularity, and significant investment in advertising and promotion, Opposer’s Marks – both
`
`individually and collectively – have become well-known throughout the United States and the
`
`world. Opposer’s Marks represent enormous goodwill and are extremely valuable assets to
`
`Opposer.
`
`6.
`
`Opposer’s Marks – both individually and collectively – have become uniquely
`
`identified with Opposer and have come to identify the goods and services of Opposer
`
`exclusively.
`
`7.
`
`In addition to its strong common law trademark rights in Opposer’s Marks
`
`developed through many years of use and promotion, Opposer owns federal trademark
`
`registrations for certain of Opposer’s Marks, including but not limited to:
`
`Mark
`
`Reg. No.
`
`Reg. Date
`
`International Class(es)
`
`WEWORK
`
`WEWORK
`
`WELIVE
`
`4453874
`
`5276604
`
`5380816
`
`12/24/2013
`
`35, 41, 42, 45
`
`8/29/2017
`
`35
`
`1/16/2018
`
`9, 38, 42, 43, 45
`
`
`
`
`
`
`
`
`
`{F3733193.1 }
`
`
`5868965
`
`9/24/2019
`
`35
`
`5980652
`
`2/11/2020
`
`35, 36, 43
`
`2
`
`

`

`8.
`
`According to the online records of the United States Patent and Trademark Office
`
`(“USPTO”), Applicant Qiu Chaoyi (“Applicant”) is a Chinese individual with an address of
`
`Room 501, West Tower, Xincheng Building, Shennan Middle Road, Futian District, Shenzhen,
`
`Guangdong, China 518000.
`
`9.
`
`According to the online records of the USPTO, on June 27, 2020, Applicant filed
`
`U.S. Trademark Application Serial No. 90023772 (the “Application”) to register the trademark
`
`WEWOOD (“Applicant’s Mark”) in International Class 35 for use in connection with
`
`“Accounting services; Advertising services; Commercial administration of the licensing of the
`
`goods and services of others; Import-export agency services; Marketing services; Personnel
`
`management consultancy; Providing business information via a web site; Provision of an online
`
`marketplace for buyers and sellers of goods and services; Publicity agency services; Sales
`
`promotion for others.” The Application was filed based on an alleged intent to use the mark in
`
`U.S. commerce under Section 1(b) of the Lanham Act, 15 U.S.C. § 1051(b).
`
`10.
`
`Upon information and belief, the earliest date upon which Applicant can rely is
`
`long after the Opposer’s acquisition of rights in each of Opposer’s Marks. As such, Opposer’s
`
`rights in Opposer’s Marks are prior and superior to any rights Applicant may claim in
`
`Applicant’s Mark.
`
`11.
`
`Applicant’s Mark is highly similar to Opposer’s Marks – both individually and
`
`collectively – in appearance, sound, and commercial impression, including because Applicant’s
`
`Mark comprises the term WE attached to the term WOOD in exactly the same fashion that
`
`Applicant’s Marks use the common term WE, and differs from the WEWORK mark by only the
`
`two final letters.
`
`{F3733193.1 }
`
`
`3
`
`

`

`12.
`
`The services identified in the Application are in part identical and otherwise
`
`highly related to the goods and services offered by Opposer under Opposer’s Marks and to the
`
`goods and services identified in the registrations for Opposer’s Marks.
`
`13.
`
`Based on the strength of Opposer’s Marks, the similarity between the parties’
`
`respective marks, the identity or relatedness of the parties’ goods and services, and other factors,
`
`consumers are likely to be deceived into falsely believing that the services offered by Applicant
`
`under Applicant’s Mark originate from or are otherwise associated with 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.
`
`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
`
`services offered by Applicant under Applicant’s Mark come from or are otherwise sponsored or
`
`connected with Opposer, in violation of Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d).
`
`15.
`
`By reason of the foregoing, Opposer is likely to be harmed by the registration of
`
`the Application for Applicant’s Mark.
`
`
`
`THEREFORE, Opposer respectfully requests that this opposition be sustained and
`
`that registration of Applicant’s Mark as applied for in the Application be refused in its entirety.
`
`
`
`{F3733193.1 }
`
`
`4
`
`

`

`Dated: New York, New York
`
`March 8, 2021
`
`
`
`
`
`
`
`
`FROSS ZELNICK LEHRMAN & ZISSU, P.C.
`
`
`By: /Laura Popp-Rosenberg/
`Laura Popp-Rosenberg
`Leo Kittay
` Daniel M. Nuzzaci
`151 West 42nd Street, 17th Floor
`New York, New York 10036
`Phone: (212) 813-5900
`Email: lpopp-rosenberg@fzlz.com
` lkittay@fzlz.com
` dnuzzaci@fzlz.com
`
`Attorneys for Opposer WeWork Companies LLC
`
`
`
`{F3733193.1 }
`
`
`5
`
`