ESTTA Tracking number:
`
`Filing date:
`
`ESTTA1388625
`10/09/2024
`
`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
`
`Microsoft Corporation
`
`Granted to date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`10/09/2024
`
`ONE MICROSOFT WAY
`REDMOND, WA 98052
`UNITED STATES
`
`JOHN L. KRIEGER
`DICKINSON WRIGHT PLLC
`3883 HOWARD HUGHES PARKWAY, SUITE 800
`LAS VEGAS, NV 89169
`UNITED STATES
`Primary email: jkrieger@dickinson-wright.com
`Secondary email(s): trademarkslv@dickinson-wright.com, cvil-
`lanueva@dickinson-wright.com
`702-550-4400
`
`Docket no.
`
`26008-30015
`
`Applicant information
`
`Application no.
`
`98160385
`
`10/09/2024
`
`Opposition filing
`date
`
`Applicant
`
`Publication date
`
`06/11/2024
`
`Opposition period
`ends
`
`10/09/2024
`
`Thoth Holdings, LLC
`20333 STATE HWY 249 STE 200 HOUSTON
`HOUSTON, TX 77070
`UNITED STATES
`
`Goods/services affected by opposition
`
`Class 025. First Use: Jan 30, 2020 First Use In Commerce: Jan 30, 2020
`All goods and services in the class are opposed, namely: Aprons; Blouses; Bras; Cardigans; Cravats;
`Dresses; Footwear; Gloves; Gowns; Hats; Headwear; Insoles; Mantillas; Nightwear; Shoes; Sleep-
`wear; Socks; Sweaters; Underwear; Ankle boots; Ankle socks; Anti-sweat underwear; Athletic appar-
`el, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Athletic pants; Athletic
`shirts; Athletic sweaters; Ballet shoes; Baseball caps; Bath robes; Bath slippers; Bathing suits; Bow
`ties; Briefs as underwear; Children's headwear; Cloaks; Clothing layettes; Clothing wraps; Denim
`pants; Down coats; Ear muffs; Evening dresses; Head sweatbands; Infant wear; Knitted gloves;
`Leather shoes; Leg-warmers; Neckties; Overcoats; Scarfs; Shirts; Silk scarves; Sun visors being
`headwear; Bolo ties; Clothing belts; Infant wearable blankets
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`

`

`Dilution by blurring
`
`Trademark Act Sections 2 and 43(c)
`
`Marks cited by opposer as basis for opposition
`
`U.S. registration
`no.
`
`6322488
`
`Register
`
`Principal
`
`Registration date
`
`04/13/2021
`
`Word mark
`
`Design mark
`
`X
`
`Application date
`
`09/01/2017
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`The mark consists of a sphere with an "x" shape cut into it.
`
`Class 025. First use: First Use: Apr 30, 2019 First Use In Commerce: Apr 30,
`2019
`Tops as clothing, tee shirts, shirts, sweatshirts, hoodies, socks, sweaters,
`gloves, mittens, scarves, pajamas, sweat pants, footwear, hats, caps, jackets,
`pants
`
`U.S. application
`no.
`
`90466813
`
`Application date
`
`01/14/2021
`
`Registration date
`
`NONE
`
`Word mark
`
`Design mark
`
`SERIES X|S
`
`Foreign priority
`date
`
`07/20/2020
`
`Description of
`mark
`
`Goods/services
`
`The mark consists of The word "SERIES" vertically placed adjacent to an "X"
`design with gaps in the middle followed by a vertical line and an "S" design with
`a gap in the middle.
`
`Class 009. First use: First Use: None First Use In Commerce: None
`Downloadable video and computer game programs; downloadable and recorded
`software for operating game controllers; electronic devices for accessing global
`computer and communication networks; computer hardware and peripherals
`Class 016. First use: First Use: None First Use In Commerce: None
`Printed matter, namely, books and manuals in the fields of video and computer
`game industries, general video game and computer game information, and
`video and computer game hardware, software and accessories; publications,
`namely, magazines and newsletters in the fields of video and computer game in-
`dustries, general video game and computer game information, and video and
`computer game hardware, software and accessories; posters, calendars, books
`about video games, computer games, software and accessories, stationery,
`school supplies, namely, notebooks, agendas, pencil cases, magazines, news-
`letters, manuals and periodicals in the fields of video and computer game indus-
`tries, general video game and computer game information, and video and com-
`
`

`

`puter game hardware, software and accessories; printed trading cards other
`than for games; writing implements, graphic art reproductions, art pictures on
`canvas; framed art pictures; art pictures in the nature of paintings; art pictures in
`the nature of drawings; art pictures in the nature of printed photographs
`Class 018. First use: First Use: None First Use In Commerce: None
`Sports bags; backpacks; luggage; travel bags; tote bags; all-purpose athletic
`bags; attache cases; business cases; duffel bags; fanny packs; school bags;
`wallets, purses, messenger bags, gym bags, rucksacks
`Class 025. First use: First Use: None First Use In Commerce: None
`Headwear; footwear; shoes; clothing, namely, shirts, vests, sweatshirts, sweat-
`ers, sweatpants, shorts, jackets, caps being headwear, bathrobes, night shirts,
`suspenders, coats, sweatbands, scarves, gloves, mittens, socks, ties, visors be-
`ing headwear, wrist bands as clothing, pajamas
`Class 028. First use: First Use: None First Use In Commerce: None
`Video game consoles; interactive video game devices, namely, video game con-
`soles and controllers for game consoles; video game consoles for use with an
`external display screen or monitor; video game interactive remote control units;
`game controllers in the nature of keyboards for computer games; controllers for
`game consoles; home video game machines; video game machines for use with
`televisions; arcade games; video game machines; games, toys and playthings,
`namely, electronic action toys, molded toy figures, toy action figures, model toy
`vehicles, stuffed and plush toys, and accessories and playsets thereof; toys,
`games and sporting goods, namely, playground balls, sport balls, basketballs,
`action skill games, board games, card games, golf balls, golf ball markers, ten-
`nis balls, baseballs, rubber action balls, rubber sports balls, and rubber playing
`balls, squeezable stress relief exercise balls, kites, plush toys, soft sculptured
`toys, dolls, action figures; bags specially adapted for sports equipment, namely,
`golf, basketball, baseball and tennis equipment; flying disc toys, yo-yos, jigsaw
`puzzles, manipulative puzzles, construction toys
`Class 041. First use: First Use: None First Use In Commerce: None
`Entertainment services, namely, providing online video games; providing tem-
`porary use of non-downloadable game software; Providing online non-
`downloadable game software; entertainment services, namely, providing online
`electronic interactive multiplayer game services for games played over computer
`networks and global communications networks; providing online computer
`games and video games that can be accessed, played and downloaded over
`computer networks and global communications networks; and providing enter-
`tainment information online on the video game and computer game industries,
`general video game and computer game information, and providing entertain-
`ment information online on computer games, video games and related products
`in the nature of hardware, software and accessories
`Class 042. First use: First Use: None First Use In Commerce: None
`Video game development services; designing and developing computer game
`software and video game software for use with computers, video game program
`systems, and computer networks
`
`U.S. registration
`no.
`
`2693757
`
`Register
`
`Principal
`
`Registration date
`
`03/04/2003
`
`Word mark
`
`Design mark
`
`X
`
`Application date
`
`05/03/2000
`
`Foreign priority
`date
`
`NONE
`
`

`

`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 038. First use: First Use: Aug 23, 2002 First Use In Commerce: Aug 23,
`2002
`Providing on-line chat rooms for transmission of messages among computer
`users concerning video and computer games; providing on-line electronic bullet-
`in boards for transmission of messages among computer users concerning
`video and computer games
`Class 041. First use: First Use: Aug 23, 2002 First Use In Commerce: Aug 23,
`2002
`Entertainment services, namely, providing interactive multiplayer game services
`for games played over computer networks and global communications networks;
`providing computer games and video games downloadable over computer glob-
`al communications networks; providing information on the video game and com-
`puter game industries via the Internet; and providing information on computer
`games, video games, video game consoles and accessories therefor via the In-
`ternet
`
`U.S. registration
`no.
`
`7087346
`
`Register
`
`Principal
`
`Registration date
`
`06/20/2023
`
`Word mark
`
`Design mark
`
`SERIES X
`
`Application date
`
`04/16/2020
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`The mark consists of the word "SERIES" in a vertical formation to the right of
`which appears a stylized letter "X".
`
`Class 009. First use: First Use: Nov 10, 2020 First Use In Commerce: Nov 10,
`2020
`Downloadable video and computer game programs; downloadable and recorded
`software for operating game controllers; electronic devices, namely, computer
`hardware for accessing global computer and communication networks; com-
`puter hardware and peripherals
`Class 014. First use: First Use: Mar 4, 2022 First Use In Commerce: Mar 4,
`2022
`Jewelry
`Class 028. First use: First Use: Nov 10, 2020 First Use In Commerce: Nov 10,
`2020
`Video game consoles; interactive video game devices comprised of video game
`consoles and controllers for game consoles; video game consoles for use with
`an external display screen or monitor; video game interactive remote control
`units; game controllers in the nature of keyboards for computer games; control-
`lers for game consoles; home video game machines; video game machines for
`use with televisions; arcade games and board games; video games machines
`Class 041. First use: First Use: Nov 10, 2020 First Use In Commerce: Nov 10,
`2020
`Providing temporary use of non-downloadable game software; providing online
`non-downloadable game software; entertainment services, namely, providing
`
`

`

`electronic interactive multiplayer games services for games played over com-
`puter networks and global communications networks; providing online computer
`games; entertainment services, namely, providing online video games; and
`providing entertainment information in the fields of video game and computer
`game industries, general video game and computer game information, and
`providing entertainment information about computer games and video games
`Class 042. First use: First Use: Nov 10, 2020 First Use In Commerce: Nov 10,
`2020
`Video game development services; designing and developing computer game
`software and video game software for use with computers, video game program
`systems, and computer networks
`
`U.S. registration
`no.
`
`3240776
`
`Register
`
`Principal
`
`Registration date
`
`05/08/2007
`
`Word mark
`
`Design mark
`
`X
`
`Application date
`
`05/05/2005
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`The mark consists of a sphere with an x shape cut into it. Color is not claimed as
`part of the mark.
`
`Class 009. First use: First Use: Nov 25, 2005 First Use In Commerce: Nov 25,
`2005
`interactive video game machines for use with televisions and computers com-
`prised of computer hardware and software and accessories, namely, game con-
`soles, game controllers and software for operating game controllers; electronic
`devices, namely, computer hardware for accessing global computer and com-
`munication networks; computer hardware and computer peripherals; cameras;
`computer software for playing video games and computer games with others via
`a global computer or communication network and for accessing and browsing
`global computer and communication networks; computer software for compress-
`ing and decompressing data and video images, word text editing and for com-
`posing, transmitting and receiving email; operating system software programs
`and utility programs for use with the above referenced machines; user manuals
`sold with all the above goods as a unit therewith; computer programs, namely,
`game software for use on computers and video game players
`
`U.S. registration
`no.
`
`5059633
`
`Register
`
`Principal
`
`Registration date
`
`10/11/2016
`
`Word mark
`
`X
`
`Application date
`
`05/02/2016
`
`Foreign priority
`date
`
`NONE
`
`

`

`Design mark
`
`Description of
`mark
`
`Goods/services
`
`The mark consists of a sphere with an "x" shape cut into it.
`
`Class 028. First use: First Use: Nov 25, 2005 First Use In Commerce: Nov 25,
`2005
`Video game consoles; video game consoles for use with an external display
`screen or monitor; video game interactive remote control units
`
`U.S. registration
`no.
`
`3392912
`
`Register
`
`Principal
`
`Registration date
`
`03/04/2008
`
`Word mark
`
`Design mark
`
`NONE
`
`Application date
`
`05/05/2005
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`The mark consists of a sphere with an x shape cut into it.
`
`Class 041. First use: First Use: Nov 22, 2005 First Use In Commerce: Nov 22,
`2005
`entertainment services, namely, providing interactive multiplayer game services
`for games played over computer networks and global communications networks;
`providing computer games and video games for on-line play over computer net-
`works and global communications networks; providing entertainment information
`on the video game and computer game industries; arranging and conducting
`competitions for video game players and computer game players; and publica-
`tion of electronic magazines
`
`U.S. registration
`no.
`
`5064438
`
`Register
`
`Principal
`
`Registration date
`
`10/18/2016
`
`Word mark
`
`X
`
`Application date
`
`05/19/2016
`
`Foreign priority
`date
`
`NONE
`
`

`

`Design mark
`
`Description of
`mark
`
`Goods/services
`
`The mark consists of a sphere in the colors silver and gray with a green "X"
`shape cut into it.
`
`Class 009. First use: First Use: Nov 22, 2005 First Use In Commerce: Nov 22,
`2005
`Game software
`Class 028. First use: First Use: Nov 22, 2005 First Use In Commerce: Nov 22,
`2005
`Video game consoles; controllers for video and computer games
`Class 041. First use: First Use: Nov 22, 2005 First Use In Commerce: Nov 22,
`2005
`Entertainment services, namely, providing interactive multiplayer game services
`for games played over computer networks and global communications networks;
`providing computer games and video games for on-line play over computer net-
`works and global communications networks; [ providing entertainment informa-
`tion on the video game and computer game industries ]
`
`Attachments
`
`87594035#TMSN.png( bytes )
`90466813#TMSN.png( bytes )
`76041368#TMSN.png( bytes )
`88875546#TMSN.png( bytes )
`78978044#TMSN.png( bytes )
`87022087#TMSN.png( bytes )
`78624349#TMSN.png( bytes )
`87043836#TMSN.png( bytes )
`2024-10-09 Notice of Opposition re X Ser. No. 98160385.pdf(254005 bytes )
`Exhibit A - Thoth Opposition 98160385.pdf(1005873 bytes )
`
`Signature
`
`/John L. Krieger/
`
`Name
`
`Date
`
`JOHN L. KRIEGER
`
`10/09/2024
`
`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`v.
`
`
`
`Microsoft Corporation,
`
`
`
`
`
`Thoth Holdings, LLC,
`
`
`
`
`
`
`
`
`Opposer,
`
`Applicant.
`
`
`
`
`
`Mark: X & Design
`Ser. No.: 98/160,385
`Published: Jun. 11, 2024
`Class: 025
`
`
`
`NOTICE OF OPPOSITION
`
`Pursuant to 15 U.S.C. § 1063 and 37 C.F.R. §§ 2.101 and 2.104(a), Microsoft Corporation
`
`(“Microsoft” or “Opposer”), a corporation organized and existing under the laws of the State of
`
`Washington, believes it will be damaged by the registration of the mark X & Design
`
`
`
`(“Applicant’s Mark”) set forth in Application Serial No. 98/160,385 (the “Application”) filed by
`
`Thoth Holdings, LLC (“Applicant”) in International Class 025 for “Aprons; Blouses; Bras;
`
`Cardigans; Cravats; Dresses; Footwear; Gloves; Gowns; Hats; Headwear; Insoles; Mantillas;
`
`Nightwear; Shoes; Sleepwear; Socks; Sweaters; Underwear; Ankle boots; Ankle socks; Anti-sweat
`
`underwear; Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic
`
`uniforms; Athletic pants; Athletic shirts; Athletic sweaters; Ballet shoes; Baseball caps; Bath
`
`robes; Bath slippers; Bathing suits; Bow ties; Briefs as underwear; Children's headwear; Cloaks;
`
`Clothing layettes; Clothing wraps; Denim pants; Down coats; Ear muffs; Evening dresses; Head
`
`sweatbands; Infant wear; Knitted gloves; Leather shoes; Leg-warmers; Neckties; Overcoats;
`
`Scarfs; Shirts; Silk scarves; Sun visors being headwear; Bolo ties; Clothing belts; Infant wearable
`
`blankets,” and hereby opposes the same.
`
`

`

`Commissioner for Trademarks
`Serial No. 98/160,385
`
`
`As grounds for its opposition, Opposer states as follows:
`
`FACTS COMMON TO ALL CLAIMS
`
`I.
`
`Opposer and Its Famous X Marks
`
`1.
`
`Microsoft is a leading global technology company that develops and offers a wide
`
`variety of computer hardware and software, including downloadable gaming software used for
`
`playing interactive multiplayer games.
`
`2.
`
`One of Microsoft’s most popular video game consoles is its famous XBOX®
`
`console, which it launched in 2001.
`
`3.
`
`In 2002, Microsoft introduced XBOX LIVE®, which allows consumers to play
`
`XBOX games against other online players, among other benefits.
`
`4.
`
`Microsoft also started providing interactive multiplayer game services under the
`
`trademark X® in 2002.
`
`5.
`
`In 2005, Microsoft introduced its second generation gaming console and platform
`
`under the trademark XBOX 360®, followed by the release of its third generation gaming console
`
`and platform under the trademark XBOX ONE®.
`
`6.
`
`Simultaneously with the introduction of the XBOX 360® console in 2005,
`
`Microsoft started providing goods and services under the trademarks
`
`® and
`
`®.
`
`7.
`
`8.
`
`On November 10, 2020, Microsoft launched its XBOX Series X® game console.
`
`In addition to its common law rights, Microsoft owns numerous U.S. trademark
`
`registrations for X, SERIES X (stylized), and X (stylized), and a pending application for SERIES
`
`X|S (stylized) (collectively, the “X Marks”), including the following marks covering the following
`
`goods and services:
`
`
`
`2
`
`

`

`Commissioner for Trademarks
`Serial No. 98/160,385
`
`
`Mark
`X
`
`Class & Goods
`Reg. No. & Info. Reg. Date
`April 13, 2021 Class 25: Tops as clothing, tee
`Reg. No. 6322488
`
`shirts,
`shirts,
`sweatshirts,
`Filed: Sep. 01, 2017
`hoodies,
`socks,
`sweaters,
`gloves, mittens,
`scarves,
`pajamas, sweat pants, footwear,
`hats, caps, jackets, pants
`
`DFU: 04/30/2019
`
`
`
`SERIES X|S
`
`Ser. No. 90/466813
`
`Filed: Jan. 14, 2021
`
`
`
`
`
`
`
`
`
`3
`
`Class 9: Downloadable video
`and computer game programs;
`downloadable and
`recorded
`software for operating game
`controllers; electronic devices
`for accessing global computer
`and communication networks;
`computer
`hardware
`and
`peripherals
`
`Class 25: Headwear; footwear;
`shoes; clothing, namely, shirts,
`vests,
`sweatshirts,
`sweaters,
`sweatpants, shorts, jackets, caps
`being headwear, bathrobes,
`night shirts, suspenders, coats,
`sweatbands, scarves, gloves,
`mittens, socks, ties, visors being
`headwear, wrist bands
`as
`clothing, pajamas
`
`Class 28: Video game consoles;
`interactive video game devices,
`namely, video game consoles
`and
`controllers
`for game
`consoles; video game consoles
`for use with an external display
`screen or monitor; video game
`interactive remote control units;
`game controllers in the nature
`of keyboards
`for computer
`games; controllers for game
`consoles; home video game
`machines;
`video
`game
`
`

`

`Commissioner for Trademarks
`Serial No. 98/160,385
`
`
`
`
`4
`
`use with
`for
`machines
`arcade
`games;
`televisions;
`video game machines; games,
`toys and playthings, namely,
`electronic action toys, molded
`toy figures, toy action figures,
`model toy vehicles, stuffed and
`plush toys, and accessories and
`playsets thereof; toys, games
`and sporting goods, namely,
`playground balls, sport balls,
`basketballs, action skill games,
`board games, card games, golf
`balls, golf ball markers, tennis
`balls, baseballs, rubber action
`balls, rubber sports balls, and
`rubber playing balls, squeezable
`stress relief exercise balls, kites,
`plush toys, soft sculptured toys,
`dolls, action
`figures; bags
`specially adapted for sports
`equipment,
`namely,
`golf,
`basketball, baseball and tennis
`equipment; flying disc toys, yo-
`yos,
`jigsaw
`puzzles,
`manipulative
`puzzles,
`construction toys
`
`Entertainment
`41:
`Class
`services, namely, providing
`online video games; providing
`temporary
`use
`of
`non-
`downloadable game software;
`Providing
`online
`non-
`downloadable game software;
`entertainment services, namely,
`providing online
`electronic
`interactive multiplayer game
`services for games played over
`computer networks and global
`communications
`networks;
`providing
`online
`computer
`games and video games that can
`
`

`

`Commissioner for Trademarks
`Serial No. 98/160,385
`
`
`and
`played
`accessed,
`be
`downloaded over computer
`networks
`and
`global
`communications networks; and
`providing
`entertainment
`information online on the video
`game and computer game
`industries, general video game
`and
`computer
`game
`information,
`and providing
`entertainment
`information
`online on computer games,
`video
`games
`and
`related
`products
`in
`the nature of
`hardware,
`software
`and
`accessories
`
`game
`42: Video
`Class
`development
`services;
`designing
`and
`developing
`computer game software and
`video game software for use
`with computers, video game
`program systems, and computer
`networks
`
`X
`
`Reg. No. 2693757
`
`Filed: May 03, 2000
`
`DFU: 08/23/2002
`
`
`March 4, 2003 Class 38: Providing on-line chat
`rooms
`for
`transmission of
`messages
`among
`computer
`users concerning video and
`computer games; providing on-
`line electronic bulletin boards
`for transmission of messages
`among
`computer
`users
`concerning video and computer
`games
`
`Entertainment
`41:
`Class
`services, namely, providing
`interactive multiplayer game
`services for games played over
`computer networks and global
`communications
`networks;
`providing computer games and
`
`
`
`5
`
`

`

`Commissioner for Trademarks
`Serial No. 98/160,385
`
`
`video games downloadable
`over
`computer
`global
`communications
`networks;
`providing information on the
`video game and computer game
`industries via the Internet; and
`providing
`information
`on
`computer games, video games,
`video game
`consoles
`and
`accessories
`therefor via
`the
`Internet
`
`SERIES X
`
`Reg. No. 7087346
`
`Filed: Apr. 16, 2020
`
`DFU: 11/10/2020
`
`
`
`
`
`
`
`June 20, 2023 Class 9: Downloadable video
`and computer game programs;
`downloadable and
`recorded
`software for operating game
`controllers; electronic devices,
`namely, computer hardware for
`accessing global computer and
`communication
`networks;
`computer
`hardware
`and
`peripherals
`
`Class 28: Video game consoles;
`interactive video game devices
`comprised of video game
`consoles and controllers for
`game consoles; video game
`consoles
`for use with an
`external display
`screen or
`monitor; video game interactive
`remote control units; game
`controllers in the nature of
`keyboards for computer games;
`controllers for game consoles;
`home video game machines;
`video game machines for use
`with televisions; arcade games
`and board games; video games
`machines
`
`Class 41: Providing temporary
`use of non-downloadable game
`software; providing online non-
`
`
`
`6
`
`

`

`Commissioner for Trademarks
`Serial No. 98/160,385
`
`
`downloadable game software;
`entertainment services, namely,
`providing electronic interactive
`multiplayer games services for
`games played over computer
`networks
`and
`global
`communications
`networks;
`providing
`online
`computer
`games; entertainment services,
`namely, providing online video
`games;
`and
`providing
`entertainment
`information
`in
`the fields of video game and
`computer
`game
`industries,
`general
`video
`game
`and
`computer game
`information,
`and providing entertainment
`information about computer
`games and video games
`
`game
`42: Video
`Class
`development
`services;
`designing
`and
`developing
`computer game software and
`video game software for use
`with computers, video game
`program systems, and computer
`networks
`
`X
`
`Reg. No. 3240776
`
`Filed: May 05, 2005
`
`DFU: 11/25/2005
`
`
`
`
`May 08, 2007 Class 9: interactive video game
`machines
`for
`use with
`televisions
`and
`computers
`comprised
`of
`computer
`hardware and software and
`accessories,
`namely,
`game
`consoles, game controllers and
`software for operating game
`controllers; electronic devices,
`namely, computer hardware for
`accessing global computer and
`communication
`networks;
`computer
`hardware
`and
`computer peripherals; cameras;
`
`
`
`7
`
`

`

`Commissioner for Trademarks
`Serial No. 98/160,385
`
`
`X
`
`Reg. No. 5059633
`
`Filed: May 02, 2016
`
`October 11,
`2016
`
`DFU: 11/25/2005
`
`Reg. No. 3392912
`
`Filed: May 05, 2005
`
`March 04,
`2008
`
`DFU: 11/22/2005
`
`
`
`
`
`
`
`8
`
`computer software for playing
`video games and computer
`games with others via a global
`computer or communication
`network and for accessing and
`browsing global computer and
`communication
`networks;
`computer
`software
`for
`compressing
`and
`decompressing data and video
`images, word text editing and
`for composing, transmitting and
`receiving
`email;
`operating
`system software programs and
`utility programs for use with the
`above
`referenced machines;
`user manuals sold with all the
`above goods as a unit therewith;
`computer programs, namely,
`game software for use on
`computers and video game
`players
`
`Class 28: Video game consoles;
`video game consoles for use
`with an external display screen
`or monitor;
`video
`game
`interactive remote control units
`
`services,
`entertainment
`41:
`namely, providing interactive
`multiplayer game services for
`games played over computer
`networks
`and
`global
`communications
`networks;
`providing computer games and
`video games for on-line play
`over computer networks and
`global
`communications
`networks;
`providing
`entertainment information on
`
`

`

`Commissioner for Trademarks
`Serial No. 98/160,385
`
`
`X
`
`Reg. No. 5064438
`
`Filed: May 19, 2016
`
`October 18,
`2016
`
`DFU: 11/22/2005
`
`
`
`the video game and computer
`game industries; arranging and
`conducting competitions
`for
`video
`game
`players
`and
`computer game players; and
`publication
`of
`electronic
`magazines
`
`Class 9: Game software
`
`Class 28: Video game consoles;
`controllers
`for video
`and
`computer games
`
`Entertainment
`41:
`Class
`services, namely, providing
`interactive multiplayer game
`services for games played over
`computer networks and global
`communications
`networks;
`providing computer games and
`video games for on-line play
`over computer networks and
`global
`communications
`networks
`
`Copies of the USPTO’s TSDR records for the above registrations and application showing the
`
`current title and status are attached hereto as Exhibit A.
`
`9.
`
`Microsoft’s rights in the X Marks predate the filing of the Application as well as
`
`the alleged date of first use of Applicant’s Mark.
`
`10.
`
`Over the past two decades, Microsoft has invested significant time and resources in
`
`building its reputation in the marketplace, and its extensive use and advertising of the X Marks has
`
`generated substantial goodwill with consumers.
`
`11. Microsoft has sold hundreds of millions of game consoles and related products
`
`under the X Marks since the first console was introduced in 2001, and with each generation of
`
`game console Microsoft releases, the fame of the X Marks continues to increase.
`
`
`
`9
`
`

`

`Commissioner for Trademarks
`Serial No. 98/160,385
`
`
`12. Microsoft has also sold related products under the X Marks, including apparel.
`
`13. Many of the goods listed in the Application are identical to goods Microsoft offers
`
`under the X Marks, including shirts, pants, sweaters, jackets, socks, hats, caps, scarves, and gloves.
`
`14.
`
`In addition, Microsoft’s broad recitation for “headwear,” “footwear,” “shoes,” and
`
`“clothing” encompasses the narrower product listings identified in the Application.
`
`15.
`
`Through its unprecedented commercial success and substantially exclusive use for
`
`over two decades, Opposer’s X Marks have become famous and were famous long before
`
`Applicant filed the Application or first used Applicant’s Mark.
`
`II.
`
`Applicant and Applicant’s Mark
`
`16.
`
`Upon information and belief, Applicant is a Texas limited liability company with
`
`an address of 20333 State Hwy 249 Ste. 200, Houston, Texas 77070.
`
`17.
`
`On August 18, 2023, Applicant, without Opposer’s consent or authorization, filed
`
`the Application.
`
`18.
`
`The Application is a use-based application in Class 25 for the following goods:
`
`“Aprons; Blouses; Bras; Cardigans; Cravats; Dresses; Footwear; Gloves; Gowns; Hats; Headwear;
`
`Insoles; Mantillas; Nightwear; Shoes; Sleepwear; Socks; Sweaters; Underwear; Ankle boots;
`
`Ankle socks; Anti-sweat underwear; Athletic apparel, namely, shirts, pants, jackets, footwear, hats
`
`and caps, athletic uniforms; Athletic pants; Athletic shirts; Athletic sweaters; Ballet shoes;
`
`Baseball caps; Bath robes; Bath slippers; Bathing suits; Bow ties; Briefs as underwear; Children's
`
`headwear; Cloaks; Clothing layettes; Clothing wraps; Denim pants; Down coats; Ear muffs;
`
`Evening dresses; Head sweatbands; Infant wear; Knitted gloves; Leather shoes; Leg-warmers;
`
`Neckties; Overcoats; Scarfs; Shirts; Silk scarves; Sun visors being headwear; Bolo ties; Clothing
`
`belts; Infant wearable blankets,” with an alleged date of first use of January 30, 2020.
`
`
`
`10
`
`

`

`Commissioner for Trademarks
`Serial No. 98/160,385
`
`
`19.
`
`The USPTO published the Application for opposition on June 11, 2024.
`
`20.
`
`Opposer timely filed a 30-day request for an extension of time to oppose the
`
`Application on July 9, 2024. The Trademark Trial and Appeal Board (“TTAB”) granted the request
`
`and extended the deadline to oppose to August 10, 2024.
`
`21.
`
`Opposer timely filed an additional 60-day request for an extension of time to oppose
`
`the Application on August 9, 2024. The TTAB granted the request and extended the deadline to
`
`oppose to October 9, 2024.
`
`22.
`
`This Opposition is timely filed.
`
`23.
`
`Opposer has a good faith belief that it will be damaged by the registration of the
`
`Applicant’s Mark, and therefore, has established its entitlement to a statutory cause of action to
`
`bring this Opposition.
`
`COUNT I
`LIKELIHOOD OF CONFUSION
`
`24.
`
`Opposer hereby re-adopts and re-alleges the allegations contained in the preceding
`
`paragraphs as though fully set forth herein.
`
`25.
`
`Based on its existing registrations and many years of use, Opposer has priority of
`
`use over Applicant in the X Marks.
`
`26.
`
`Applicant’s Mark is confusingly similar to Opposer’s X Marks in sight, sound,
`
`meaning and overall commercial impression, particularly when applied to Applicant’s goods.
`
`27.
`
`Applicant’s Mark is a stylized “X” which is highly similar to the stylized “X” in
`
`Opposer’s X Marks.
`
`28.
`
`The letter “X” is the dominant element of Opposer’s X Marks.
`
`29.
`
`The letter “X” is the dominant element of Applicant’s Mark.
`
`
`
`11
`
`

`

`Commissioner for Trademarks
`Serial No. 98/160,385
`
`
`30.
`
`The stylization used on the letter “X” in Applicant’s Mark is similar to the
`
`stylization used in many of Opposer’s X Marks.
`
`31.
`
`The goods identified in the Application are identical and/or closely related to the
`
`goods and services offered by Opposer under Opposer’s X Marks.
`
`32. Many of the goods listed in the Application are identical to goods Microsoft offers
`
`under the X Marks, including shirts, pants, sweaters, jackets, socks, hats, caps, scarves, and gloves,
`
`and Microsoft’s broad recitation for “headwear,” “footwear,” “shoes,” and “clothing”
`
`encompasses the narrower product listings identified in the Application.
`
`33.
`
`Upon information and belief, Applicant’s goods will be marketed, advertised and
`
`sold to the same class of purchasers and in the same channels of trade as the goods and services
`
`marketed, advertised and sold under Opposer’s X Marks.
`
`34.
`
`The similarities in the marks, the overlap and/or relatedness of the goods and
`
`services, and the overlap of the parties’ respective trade channels and customer bases are so great
`
`as to create a likelihood of confusion among consumers as to the source of Applicant’s goods
`
`and/or Applicant’s affiliation with, or endorsement or sponsorship by, Opposer.
`
`35.
`
`Registration of Applicant’s Mark would be inconsistent with and damaging to
`
`Opposer’s rights in and to its X Marks.
`
`36.
`
`Applicant’s Mark should be barred from registration, pursuant to 15 U.S.C.
`
`§ 1052(d), because it so res