ESTTA Tracking number:
`
`Filing date:
`
`ESTTA1397138
`11/20/2024
`
`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
`
`Activision Publishing, Inc.
`
`Granted to date
`of previous ex-
`tension
`
`Address
`
`Party who filed
`extension of time
`to oppose
`
`Relationship to
`party who filed
`extension of time
`to oppose
`
`11/20/2024
`
`3100 OCEAN PARK BOULEVARD
`SANTA MONICA, CA 90405
`UNITED STATES
`
`Microsoft Corporation
`
`Activision is a wholly-owned subsidiary of Microsoft Corporation ("Microsoft")
`and exclusively owns rights in the trademark SPACE QUEST in connection with
`computer games, as addressed in this Opposition. Activision's parent company,
`Microsoft, timely filed a 90-day request for an extension of time to oppose the
`Application on August 22, 2024. The Trademark Trial and Appeal Board granted
`the request and extended the deadline to oppose to November 20, 2024. The
`Board has previously recognized "parent- subsidiary" relationships as having
`sufficient privity between an opposer and third party that filed a request for an
`extension of time to oppose. Activision, as a wholly-owned subsidiary, is in priv-
`ity with Microsoft and is entitled to file this Opposition. See TFSR 2.102(b) (37
`C.F.R. § 2.102(b)) (acknowledging proceeding may be filed by party in priv-
`ity); TBMP 303.05(b) ("A party in privity with a potential opposer may step into
`the potential opposer's shoes and file a notice of opposition."). Likewise, as the
`parent company of Activision, Microsoft was entitled to file the request for an ex-
`tension of time to oppose the Application because it is in privity with Activision.
`Moreover, Activision and Microsoft are "related companies" within the meaning
`of Sections 5 and 45 of the Trademark Act, 15 U.S.C. §§ 1055 and
`1127. Additionally and/or in the alternative, Activision is entitled to a statutory
`cause of action because it was misidentified through mistake. TFSR 2.102(b)
`(37 C.F.R. § 2.102(b)) (acknowledging proceeding may be filed by the per-
`son in whose name the extension was requested was misidentified through mis-
`take). Counsel for both Microsoft and Activision mistakenly filed the request for
`an extension of time in the name of Microsoft instead of Activision, which should
`have been named. Activision, as a wholly-owned subsidiary of Microsoft, is not a
`wholly independent legal entity, and therefore it is entitled to bring a statutory
`cause of action.
`
`Attorney informa-
`tion
`
`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, amor-
`etto@dickinson-wright.com, BBathke@dickinson-wright.com
`
`

`

`Docket no.
`
`702-550-4400
`
`26008-30022
`
`Applicant information
`
`Application no.
`
`98046988
`
`Opposition filing
`date
`
`Applicant
`
`11/20/2024
`
`MMMera, Inc.
`12 COMO DRIVE
`SOMERSET, NJ 08873
`UNITED STATES
`
`Goods/services affected by opposition
`
`Publication date
`
`07/23/2024
`
`Opposition period
`ends
`
`11/20/2024
`
`Class 009. First Use: Jun 15, 2023 First Use In Commerce: Jun 15, 2023
`All goods and services in the class are opposed, namely: Video game cartridges and discs; Down-
`loadable video game programs; Downloadable video game software; Downloadable video and com-
`puter game programs; Downloadable multiplayer video game software; all of the foregoing goods in-
`tended for mature adult audiences and none of the foregoing goods intended for nor relating in any
`manner to education or children's education
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`Fraud on the USPTO
`
`Trademark Act Sections 2 and 43(c)
`
`In re Bose Corp., 580 F.3d 1240, 91 USPQ2d
`1938 (Fed. Cir. 2009)
`
`Mark cited by opposer as basis for opposition
`
`U.S. application/ registration
`no.
`
`Register
`
`Registration date
`
`Mark
`
`Goods/services
`
`NONE
`
`NONE
`
`NONE
`
`SPACE QUEST
`
`computer games
`
`Application date
`
`NONE
`
`Attachments
`
`2024-11-20 Notice of Opposition re SPACE QUEST.pdf(157143 bytes )
`
`Signature
`
`/John L. Krieger/
`
`Name
`
`Date
`
`JOHN L. KRIEGER
`
`11/20/2024
`
`

`

`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`v.
`
`
`
`Activision Publishing, Inc.,
`
`
`
`
`
`MMMera, Inc.,
`
`
`
`
`
`
`
`
`
`Mark: SPACE QUEST
`Ser. No.: 98/046,988
`Published: Jul. 23, 2024
`Class: 009
`
`
`
`Opposer,
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`Pursuant to 15 U.S.C. § 1063 and 37 C.F.R. §§ 2.101 and 2.104(a), Activision Publishing,
`
`Inc. (“Activision” or “Opposer”), a corporation organized and existing under the laws of the State
`
`of Delaware, believes it will be damaged by the registration of the mark SPACE QUEST
`
`(“Applicant’s Mark”) set forth in Application Serial No. 98/046,988 (the “Application”) filed by
`
`MMMera, Inc. (“Applicant”) in International Class 009 for “Video game cartridges and discs;
`
`Downloadable video game programs; Downloadable video game software; Downloadable video
`
`and computer game programs; Downloadable multiplayer video game software; all of the
`
`foregoing goods intended for mature adult audiences and none of the foregoing goods intended for
`
`nor relating in any manner to education or children’s education,” and hereby opposes the same.
`
`As grounds for its opposition, Opposer states as follows:
`
`/ / /
`
`/ / /
`
`/ / /
`
`/ / /
`
`/ / /
`
`
`
`

`

`Commissioner for Trademarks
`Serial No. 98/046,988
`
`
`FACTS COMMON TO ALL CLAIMS
`
`I.
`
`Opposer and Its Space Quest Mark
`
`A.
`
`Activision Is Entitled to a Statutory Cause of Action
`
`1.
`
`Activision, a wholly-owned subsidiary of Microsoft Corporation (“Microsoft”), is
`
`a leading worldwide developer, publisher, and distributor of interactive entertainment and
`
`products, including video and computer games for consoles, mobile devices, and PCs, and
`
`exclusively owns rights in the trademark SPACE QUEST in connection with computer games, as
`
`addressed further below.
`
`2.
`
`Opposer’s parent company, Microsoft, timely filed a 90-day request for an
`
`extension of time to oppose the Application on August 22, 2024. The Trademark Trial and Appeal
`
`Board (“TTAB”) granted the request and extended the deadline to oppose to November 20, 2024.
`
`3.
`
`The Board has previously recognized “parent-subsidiary” relationships as having
`
`sufficient privity between an opposer and third party that filed a request for an extension of time
`
`to oppose.
`
`4.
`
`Activision, as a wholly-owned subsidiary, is in privity with Microsoft and is
`
`entitled to file this Opposition. See TFSR 2.102(b) (37 C.F.R. § 2.102(b)) (acknowledging
`
`proceeding may be filed by party in privity); TBMP 303.05(b) (“A party in privity with a potential
`
`opposer may step into the potential opposer’s shoes and file a notice of opposition.”).
`
`5.
`
`Likewise, as the parent company of Activision, Microsoft was entitled to file the
`
`request for an extension of time to oppose the Application because it is in privity with Activision.
`
`6.
`
`Moreover, Activision and Microsoft are “related companies” within the meaning
`
`of Sections 5 and 45 of the Trademark Act, 15 U.S.C. §§ 1055 and 1127.
`
`
`
`2
`
`

`

`Commissioner for Trademarks
`Serial No. 98/046,988
`
`
`7.
`
`Additionally and/or in the alternative, Activision is entitled to a statutory cause of
`
`action because it was misidentified through mistake. TFSR 2.102(b) (37 C.F.R. § 2.102(b))
`
`(acknowledging proceeding may be filed by the person in whose name the extension was requested
`
`was misidentified through mistake).
`
`8.
`
`Counsel for both Microsoft and Activision mistakenly filed the request for an
`
`extension of time in the name of Microsoft instead of Activision, which should have been named.
`
`9.
`
`Activision, as a wholly-owned subsidiary of Microsoft, is not a wholly independent
`
`legal entity, and therefore it is entitled to bring a statutory cause of action.
`
`B.
`
`Use of the Mark by Opposer
`
`10.
`
`Since the 1980s, Activision and its predecessors-in-interest have used the
`
`trademark SPACE QUEST (the “SPACE QUEST Mark”) throughout the world in connection with
`
`computer games.
`
`11.
`
`Specifically, Activision’s predecessor, Sierra On-Line, Inc. (“Sierra On-Line”),
`
`under license from The Children’s Museum of Indianapolis, Inc. (“TCMI”), released a series of
`
`games using the SPACE QUEST Mark, starting in 1986 with Space Quest: Chapter I – The Sarien
`
`Encounter.
`
`12.
`
`In addition to its common law rights, Activision owns registered rights in the
`
`SPACE QUEST Mark in several territories, including in the EU, UK, Japan, and Australia.
`
`13.
`
`Activision’s rights in the SPACE QUEST Mark predate the filing of the
`
`Application, as well as the alleged date of first use of Applicant’s Mark.
`
`14.
`
`Over the past several decades, Activision and its predecessors-in-interest have
`
`invested significant time and resources promoting the Space Quest series of games in the
`
`
`
`3
`
`

`

`Commissioner for Trademarks
`Serial No. 98/046,988
`
`
`marketplace, and its extensive use and advertising of the SPACE QUEST Mark has generated
`
`substantial goodwill with consumers, all of which has inured to Activision’s benefit.
`
`15.
`
`Since the first release of the Space Quest series of games in 1986, Activision and
`
`its predecessors-in-interest have sold millions of copies of the Space Quest series of games.
`
`16.
`
`Activision is currently publishing and selling the Space Quest series of games under
`
`the SPACE QUEST Mark.
`
`17.
`
`Activision and its predecessors-in-interest, have continually used the SPACE
`
`QUEST Mark since its inception and there has been no abandonment of said rights.
`
`18.
`
`Further TCMI recently assigned to Activision all rights in the SPACE QUEST
`
`Mark TCMI held either by way of registration or common law right.
`
`19.
`
`Through its unprecedented commercial success and substantially exclusive use for
`
`several decades, Opposer’s SPACE QUEST Mark has become famous and was famous long before
`
`Applicant filed the Application or first used Applicant’s Mark.
`
`II.
`
`Applicant and Applicant’s Mark
`
`20.
`
`Upon information and belief, Applicant is a New Jersey corporation with an address
`
`of 12 Como Drive, Somerset, New Jersey 08873.
`
`21.
`
`Applicant is well aware of the Space Quest series of video games, and upon
`
`information and belief, Applicant’s principal Marcus Mera (“Mera”), has a working relationship
`
`with the original owners of Sierra On-Line.
`
`22.
`
`In 2021, Applicant began filing numerous trademark applications for many of
`
`Sierra On-Line’s old games titles, including SPACE QUEST.
`
`23.
`
`However, Applicant ignored the fact that Activision, as the successor-in-interest to
`
`Sierra On-Line, still actively uses several of these marks to publish and sell computer games,
`
`
`
`4
`
`

`

`Commissioner for Trademarks
`Serial No. 98/046,988
`
`
`including under the SPACE QUEST mark, and owns all common law rights associated therewith,
`
`all of which predate any rights that Applicant could possibly claim in these marks.
`
`24.
`
`Applicant’s trademark filings, including the Application, therefore, were made in
`
`bad faith.
`
`25.
`
`On June 16, 2023, Applicant, without Opposer’s consent or authorization, filed the
`
`Application.
`
`26.
`
`The Application is a use-based application in Class 9 for the following goods:
`
`“Video game cartridges and discs; Downloadable video game programs; Downloadable video
`
`game software; Downloadable video and computer game programs; Downloadable multiplayer
`
`video game software; all of the foregoing goods intended for mature adult audiences and none of
`
`the foregoing goods intended for nor relating in any manner to education or children’s education,”
`
`with an alleged date of first use of June 15, 2023.
`
`27.
`
`The USPTO published the Application for opposition on July 23, 2024, and
`
`pursuant to the request for extension of time to oppose, the opposition deadline is November 20,
`
`2024.
`
`28.
`
`Therefore, this Opposition is timely filed.
`
`29.
`
`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
`
`30.
`
`Opposer hereby re-adopts and re-alleges the allegations contained in the preceding
`
`paragraphs as though fully set forth herein.
`
`
`
`5
`
`

`

`Commissioner for Trademarks
`Serial No. 98/046,988
`
`
`31.
`
`Based on its existing registrations and many years of continuous and exclusive use,
`
`Opposer has priority of use over Applicant in the SPACE QUEST Mark.
`
`32.
`
`Applicant’s Mark is identical to Opposer’s SPACE QUEST Mark and is thus,
`
`confusingly similar in sight, sound, meaning, and overall commercial impression.
`
`33.
`
`The goods identified in the Application are identical and/or closely related to the
`
`goods offered by Opposer under Opposer’s SPACE QUEST Mark.
`
`34.
`
`Applicant’s goods are marketed, advertised, and sold to the same class of
`
`purchasers and in the same channels of trade as the goods marketed, advertised, and sold under
`
`Opposer’s SPACE QUEST Mark.
`
`35.
`
`The similarities in the marks, the overlap and/or relatedness of the goods, 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.
`
`36.
`
`Registration of Applicant’s Mark would be inconsistent with and damaging to
`
`Opposer’s rights in and to its SPACE QUEST Mark.
`
`37.
`
`Applicant’s Mark should be barred from registration, pursuant to 15 U.S.C.
`
`§ 1052(d), because it so resembles Opposer’s SPACE QUEST Mark in appearance, sound,
`
`connotation, and commercial impression, as to be likely, when applied to Applicant’s goods, to
`
`cause confusion, or to cause mistake, or to deceive.
`
`COUNT II
`FRAUD IN THE PROCUREMENT
`
`
`Opposer hereby re-adopts and re-alleges the allegations contained in the preceding
`
`38.
`
`paragraphs as though fully set forth herein.
`
`39.
`
`Upon information and belief, Applicant made material misrepresentations of fact
`
`
`
`6
`
`

`

`Commissioner for Trademarks
`Serial No. 98/046,988
`
`
`to the USPTO in connection with the Application, which Applicant knew were false and its
`
`misrepresentations were made with the intent to deceive the USPTO into issuing a registration for
`
`Applicant’s Mark.
`
`40.
`
`Upon information and belief, Applicant is well aware of the Space Quest series of
`
`video games based on the prior working relationship between its principal, Marcus Mera, and the
`
`original owners of Sierra On-Line.
`
`41.
`
`Upon information and belief, Applicant was fully aware of Activision’s and its
`
`predecessors-in-interest’s rights in the SPACE QUEST Mark and that the mark was continually in
`
`use for the Space Quest series of video games when Applicant filed its Application.
`
`42.
`
`Upon information and belief, Applicant was also aware that some of the
`
`registrations for old Sierra On-Line game titles had lapsed, including TCMI’s US Registration No.
`
`1723972 for SPACE QUEST, which was subsequently assigned to Activision.
`
`43.
`
`Upon information and belief, Applicant sought to capitalize on the fact that TCMI’s
`
`US Registration lapsed on April 28, 2023, by filing the Application less than two months later on
`
`June 16, 2023.
`
`44.
`
`Upon information and belief, Applicant knowingly made false, material
`
`misrepresentations of fact in the Application when Applicant falsely declared that it was unaware
`
`of any other persons that have the right to use the applied-for mark in commerce in the identical
`
`form or in such near resemblance as to be likely, when used on or in connection with the
`
`goods/services of such other persons, to cause confusion or mistake, or to deceive.
`
`45.
`
`Upon information and belief, Applicant knowingly made false, material
`
`misrepresentations of fact in the Application when Applicant falsely declared that, after an inquiry
`
`
`
`7
`
`

`

`Commissioner for Trademarks
`Serial No. 98/046,988
`
`
`reasonable under the circumstances, the allegations and other factual contentions made [in the
`
`Application] have evidentiary support.
`
`46.
`
`Although Opposer asserts that Applicant had knowledge of Opposer’s rights in and
`
`to the SPACE QUEST Mark prior to filing the Application based on Mera’s working relationship
`
`with the prior owners of Sierra On-Line, even a cursory online search would have revealed
`
`Opposer’s continued use of the SPACE QUEST Mark in commerce in connection with the Space
`
`Quest series of video games.
`
`47.
`
`Accordingly, Applicant knowingly, intentionally, and with the intent to deceive the
`
`USPTO into issuing a registration for Applicant’s Mark, signed a declaration under oath containing
`
`patently false and misleading statements of material fact.
`
`48.
`
`Upon information and belief, Applicant knew the statements made in the
`
`declaration submitted with the Application were false.
`
`49.
`
`Upon information and belief, Applicant’s fraudulent declaration was made in bad
`
`faith for ulterior purposes, namely to deceive the USPTO into issuing a registration to Applicant
`
`for Applicant’s Mark.
`
`50.
`
`Based on the foregoing, Opposer is informed and believes and thereupon alleges
`
`the false and material representations of fact made by Applicant in the Application constitute a
`
`fraud on the USPTO and the Application should be refused.
`
`51.
`
`Opposer has a good faith belief that it will suffer damage if the Application for
`
`Applicant’s Mark is not denied.
`
`COUNT III
`DILUTION
`
`52.
`
`Opposer hereby re-adopts and re-alleges the allegations contained in the preceding
`
`paragraphs as though fully set forth herein.
`
`
`
`8
`
`

`

`Commissioner for Trademarks
`Serial No. 98/046,988
`
`
`53.
`
`Opposer’s SPACE QUEST Mark is strong and distinctive, has been in use for many
`
`years, and has achieved enormous and widespread public recognition.
`
`54.
`
`Opposer has a strong and loyal base of customers who enjoy the goods offered by
`
`Opposer under Opposer’s SPACE QUEST Mark.
`
`55.
`
`Opposer’s SPACE QUEST Mark is famous within the meaning of 15 U.S.C.
`
`§ 1125(c), and was famous before Applicant filed its Application or began to use Applicant’s
`
`Mark.
`
`56.
`
`Applicant’s use and registration of Applicant’s Mark is likely to impair the
`
`distinctive qualities of the SPACE QUEST Mark.
`
`57.
`
`Upon information and belief, Applicant’s acts of dilution are willful, deliberate, and
`
`in bad faith.
`
`58.
`
`Opposer is likely to be damaged by Applicant’s registration of a mark that dilutes
`
`the distinctive qualities of its famous SPACE QUEST Mark through blurring.
`
`RELIEF REQUESTED
`
`WHEREFORE, Opposer requests that its Opposition be sustained, that registration of
`
`Applicant’s Mark be refused, and that Application Serial No. 98/046,988 be rejected in its entirety.
`
`Dated: November 20, 2024.
`
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`Respectfully submitted,
`
`DICKINSON WRIGHT PLLC
`
`By: /John L. Krieger/
`John L. Krieger
`Brady A. Bathke
`3883 Howard Hughes Parkway, Suite 800
`Las Vegas, Nevada 89169
`Telephone: (702) 550-4400
`trademarkslv@dickinsonwright.com
`jkrieger@dickinsonwright.com
`bbathke@dickinsonwright.com
`
`Attorneys for Opposer
`
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`9
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