Notice of Opposition Opposer Information Applicant

Home , Bondage hood, International Fetish Day, Kink (sexuality), Spreader bar

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA763985 Filing date: 08/11/2016 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 Cybernet Entertainment LLC Entity Limited Liability Company Citizenship California Address 799 Castro Street San Francisco, CA 94114 UNITED STATES

Attorney informa- Julien Swanson tion Austin Law Group 799 Castro Street San Francisco, CA 94114 UNITED STATES [email protected] Phone:415-282-4511 Applicant Information

Application No 86908580 Publication date 07/12/2016 Opposition Filing 08/11/2016 Opposition Peri- 08/11/2016 Date od Ends Applicant Atlantic Innovations, LLC Suite 22 Nashua, NH 03063 UNITED STATES Goods/Services Affected by Opposition

Class 035. First Use: 2015/03/23 First Use In Commerce: 2015/03/23 All goods and services in the class are opposed, namely: Retail store services and wholesale stores services featuring adult sexual stimulation aids in the nature of bondage goods, penile toys, vibrators, glass sex toys, nipple toys, suction devices, prostate massagers, body massagers, erotic furniture, improvised sex toys, flesh-likesex toys, g-spot vibrators, vibrator wands, bullet vibrators, anal toys, couples kits comprised of adult novelties, general penetrative toys, artificial vaginas, cock rings, cock harness, penis extensions, butt plugs, anal beads, dildo, dongs, latex sex toys, silicone sex toys, lotions, lubricants, creams, massage creams, condoms, edible undergarments, latex clothing, clitoral vibrators, and massagers, dual stimulation sex toys, hand and finger vibrators, lingerie, panties, underwear, hosiery, clothing, shoes, restraints, bondage tape, cuffs, belts, neck bands, leather cuffs, leather belts, leather neck bands, latex belts, latex neck bands, latex cuffs, leather restraints, latex restraints, polish restraints, leather lingerie, leather panties, leather underwear, leather clothing, latex lingerie, latex panties, latex underwear, latex clothing, handcuffs, legcuffs, thumbcuffs, hooks, chains, Ball gag, Ball lock, bit gag, Bondage bed, Bondage cuffs, Bondage mittens, Bondage harness, Bond- age belt, Bondage hood, Bondage tape, bondage furniture, Bondage yoke, Breast binder, Butt hook, Chastity belts, Cling film, Cock ring, Collar, Corsets, D-rings, Dental forceps, Diapers, Elbow harness, Funnel gag, Head harness, Hobble skirt, Human pony harness, Humbler, Inflatable gag, Spreader bar, Lip loop, Medical restraints, Monoglove, Mouthguard gag, Muzzle gag, Panic snaps, Penis gag, Penis Displays, Posture collar, Ring gag, Rope, Shackles and fetters, Sleepsacks, Stocks, Straitjack- ets, Suspension cuffs; Branding services, namely, consulting, development, management and marketing of brands for businesses and/or individuals inthe fields of adult sexual stimulation aids in the nature of bondage goods, penile toys, vibrators, glass sex toys, nipple toys, suction devices, prostate massagers, body massagers, erotic furniture,improvised sex toys, flesh-like sex toys, g-spot vibrators, vibrator wands, bullet vibrators, anal toys, couples kits comprised of adult novelties, general penetrative toys, artificial vaginas, cock rings, cock harness, penis extensions, butt plugs, anal beads, dildo, dongs, latex sex toys, silicone sex toys, lotions,lubricants, creams, massage creams, condoms, edible undergarments, latex clothing, clitoral vibrators, and massagers, dual stimulation sex toys, hand and finger vibrators, lingerie, panties, underwear, hosiery, clothing, shoes, restraints,bondage tape, cuffs, belts, neck bands,leather cuffs, leather belts, leather neck bands, latex belts, latex neck bands, latex cuffs, leather restraints, latexrestraints, polish restraints, leather lingerie, leather panties, leather underwear, leather clothing, latex lingerie, latex panties, latex underwear, latex clothing, handcuffs, legcuffs, thumbcuffs,hooks, chains, Ball gag, Ball lock, bitgag, Bondage bed, Bondage cuffs, Bondage mittens, Bondage harness, Bondage belt, Bondage hood, Bondage tape, bondage furniture, Bondage yoke, Breast binder, Butt hook, Chastity belts, Cling film, Cock ring, Collar, Cor- sets, D-rings, Dentalforceps, Diapers, Elbow harness, Funnelgag, Head harness, Hobble skirt, Hu- man pony harness, Humbler, Inflatable gag, Spreader bar, Lip loop, Medical restraints, Monoglove, Mouthguard gag, Muzzle gag, Panic snaps, Penis gag, Penis Displays, Posture collar, Ring gag, Rope, Shackles and fetters, Sleepsacks, Stocks, Straitjackets, Suspension cuffs Class 040. First Use: 2015/03/23 First Use In Commerce: 2015/03/23 All goods and services in the class are opposed, namely: Custom manufacture of adult sexual stimulation aids in the nature of bondage goods, penile toys, vibrators, glass sex toys, nipple toys, suction devices, prostate massagers, body massagers, erotic furniture, improvised sex toys, flesh-likesex toys, g-spot vibrators, vibrator wands, bullet vibrators, anal toys, couples kits comprised of adult novelties, general penetrative toys, artificial vaginas, cock rings, cock harness, penis extensions, butt plugs, anal beads, dildo, dongs, latex sex toys, silicone sex toys, lotions, lubricants, creams, massage creams, condoms, edible undergarments, latex clothing, clitoral vibrators, and massagers, dual stimulation sex toys, hand and finger vibrators, lingerie, panties, underwear, hosiery, clothing, shoes, restraints, bondage tape, cuffs, belts, neck bands, leather cuffs, leather belts, leather neck bands, latex belts, latex neck bands, latex cuffs, leather restraints, latex restraints, polish restraints, leather lingerie, leather panties, leather underwear, leather clothing, latex lingerie, latex panties, latex underwear, latex clothing, handcuffs, legcuffs, thumbcuffs, hooks, chains, Ball gag, Ball lock, bit gag, Bond- age bed, Bondage cuffs, Bondage mittens, Bondage harness, Bondage belt, Bondage hood, Bond- age tape, bondage furniture, Bondage yoke, Breast binder, Butt hook, Chastity belts, Cling film, Cock ring, Collar, Corsets, D-rings, Dental forceps, Diapers, Elbow harness, Funnel gag, Head harness, Hobble skirt, Human pony harness, Humbler, Inflatable gag, Spreader bar, Lip loop, Medical restraints, Monoglove, Mouthguard gag, Muzzle gag, Panic snaps, Penis gag, Penis Displays, Posture collar, Ring gag, Rope, Shackles and fetters, Sleepsacks, Stocks, Straitjackets, Suspension cuffs Grounds for Opposition

Priority and likelihood of confusion Trademark Act Section 2(d) Marks Cited by Opposer as Basis for Opposition

U.S. Registration 4996416 Application Date 09/22/2015 No. Registration Date 07/12/2016 Foreign Priority NONE Date Word Mark KINK Design Mark

Description of NONE Mark Goods/Services Class 041. First use: First Use: 2006/01/01 First Use In Commerce: 2006/02/10 Entertainment and educational services,namely, providing a web site featuring photographic, audio, video and prose presentations, educational workshops, seminars and tutorial sessions, and non-downloadable videos, all of the foregoing in the field of adult entertainment

U.S. Registration 3379745 Application Date 09/18/2006 No. Registration Date 02/05/2008 Foreign Priority NONE Date Word Mark KINK.COM Design Mark

Description of NONE Mark Goods/Services Class 041. First use: First Use: 2006/01/01 First Use In Commerce: 2006/02/10 Entertainment Services namely providinga website featuring, photographic, audio, video and prose presentations featuring adult entertainment

U.S. Registration 4758649 Application Date 05/12/2014 No. Registration Date 06/23/2015 Foreign Priority NONE Date Word Mark KINK.COM Design Mark

Description of NONE Mark Goods/Services Class 041. First use: First Use: 2006/01/01 First Use In Commerce: 2006/02/10 Entertainment services, namely, providing a web site featuring photographic, audio, video and prose presentations featuring adult entertainment

Attachments 86764985#TMSN.png( bytes ) 77001285#TMSN.png( bytes ) 86279026#TMSN.png( bytes ) 2016.08.11 Master Kink - Notice of Opposition.pdf(47803 bytes )

Certificate of Service

The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address record by First Class Mail on this date.

Signature /Julien Swanson/ Name Julien Swanson Date 08/11/2016 ALEX AUSTIN (SBN JULIEN SWANSON (SBN 193957) AUSTIN LAW GROUP 799 Castro Street San Francisco CA 94114 [email protected] [email protected]

Attorneys for CYBERNET ENTERTAINMENT LLC

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

CYBERNET ENTERTAINMENT, LLC Opposition No. ______

Opposer; In re App. No: 86908580 v. For the Mark: MASTER KINK ATLANTIC INNOVATIONS, LLC App. Filed: February 16, 2016 Applicant. Applicant: Atlantic Innovations, LLC

Published: July 12, 2016

Opposer: Cybernet Entertainment LLC 799 Castro Street San Francisco CA 94114

Applicant: Atlantic Innovations, LLC 4 Bud Way, Suite 22 Nashua, New Hampshire, 03063

Represented by: Brendan M. Shortell Lambert & Associates 92 State Street, Suite 200 Boston, Massachusetts, 02109 I. NOTICE OF OPPOSITION

Cybernet Entertainment LLC (" Opposer"), reasonably believes it will be damaged by registration of the mark shown in the above-identified application, and hereby opposes the same. The statutory grounds for opposition are: the likelihood of confusion with a registered mark "KINK" registration number 4996416, a mark that enjoys priority of first use. Opposer hereby respectfully requests that registration of the mark be denied based thereon.

II. FACTS IN SUPPORT OF OPPOSITION

1. Opposer, organized in 1998, has dedicated its business to goods and services related to

alternative sexuality, specifically, the fetish and BDSM communities, and makes adult entertainment and

educational materials and goods available to consumers through its longstanding website at

www.Kink.com, and through its production studio in San Francisco.

2. Opposer (through its managing member) registered the domain www.kink.com on May

13, 1994, and this domain, with its multiple subpages, continues to be the platform for consumers to

access Opposer's goods and services.

3. On February 5, 2008. the Standard Character mark "KINK.COM" was registered on the

supplemental registry with the United States Patent and Trademark Office ("USPTO"), Reg. No.

3379745, with first use on January 2006, and first use in commerce on February 10, 2006.

4. On July 23, 2014, a USPTO examiner, during an application by opposer for its mark

"KINK UNIVERSITY," Serial Number. 86246402 (otherwise unrelated to the present opposition) ruled

"[t]he claim of acquired distinctiveness [made by opposer] in part as to the term “KINK” based on prior

U.S. Registration No. 3379745 [KINK.COM] is accepted and made of record."

5. On June 23, 2015, the USPTO registered "KINK.COM" on the principal registry, Reg.

No. 4758649, reflecting first use on January 2006, and first use in commerce on February 10, 2006.

6. On July 12, 2016, the USPTO issued Reg. No. 4996416 to Opposer, for the Standard

Character Mark "KINK" for International Class 041, for the following goods and services:

Entertainment and educational services, namely, providing a web site featuring photographic, audio, video and prose presentations, educational workshops, seminars and tutorial sessions, and non- downloadable videos, all of the foregoing in the field of adult entertainment.

7. Opposer's standalone mark "KINK" was registered with first use on January 2006, and first use in commerce on February 10, 2006.

8. On June 11, 2016, Opposer applied for registration of its longstanding mark "KINK,"

Serial No. 87068240, in the following classes and relating to its goods and services as follows: (a)

Class: 028, Adult novelty, play toys and games of an erotic, sensual or sexual nature; and (b) Class:

035, Online retail and retail store services in the fields of adult entertainment and human sexuality products, namely, products of an erotic, sensual or sexual nature.

9. Opposer alleges first use on Jan. 01, 2006, with first use in commerce in commerce on

February 10, 2006 for each of the above classes.

10. The June 11, 2016 application (Serial No. 87068240) has been accepted and is pending examination.

Applicant’s Mark and Application

11. On February 16, 2016, Applicant filed for registration of the mark "Master Kink," Serial

No. 86908580, alleging first use and first use, and first use in commerce on March 23, 2015.

12. Applicant's mark seeks registration in two classes as follows:

(a) Class 35, identifying goods and services that are related to adult and alternative sexuality, as

follows:

Retail store services and wholesale stores services featuring adult sexual stimulation aids in the nature of bondage goods, penile toys, vibrators, glass sex toys, nipple toys, suction devices, prostate massagers, body massagers, erotic furniture, improvised sex toys, flesh- like sex toys, g-spot vibrators, vibrator wands, bullet vibrators, anal toys, couples kits comprised of adult novelties, general penetrative toys, artificial vaginas, cock rings, cock harness, penis extensions, butt plugs, anal beads, dildo, dongs, latex sex toys, silicone sex toys, lotions, lubricants, creams, massage creams, condoms, edible undergarments, latex clothing, clitoral vibrators, and massagers, dual stimulation sex toys, hand and finger vibrators, lingerie, panties, underwear, hosiery, clothing, shoes, restraints, bondage tape, cuffs, belts, neck bands, leather cuffs, leather belts, leather neck bands, latex belts, latex neck bands, latex cuffs, leather restraints, latex restraints, polish restraints, leather lingerie, leather panties, leather underwear, leather clothing, latex lingerie, latex panties, latex underwear, latex clothing, handcuffs, legcuffs, thumbcuffs, hooks, chains, Ball gag, Ball lock, bit gag, Bondage bed, Bondage cuffs, Bondage mittens, Bondage harness, Bondage belt, Bondage hood, Bondage tape, bondage furniture, Bondage yoke, Breast binder, Butt hook, Chastity belts, Cling film, Cock ring, Collar, Corsets, D-rings, Dental forceps, Diapers, Elbow harness, Funnel gag, Head harness, Hobble skirt, Human pony harness, Humbler, Inflatable gag, Spreader bar, Lip loop, Medical restraints, Monoglove, Mouthguard gag, Muzzle gag, Panic snaps, Penis gag, Penis Displays, Posture collar, Ring gag, Rope, Shackles and fetters, Sleepsacks, Stocks, Straitjackets, Suspension cuffs; Branding services, namely, consulting, development, management and marketing of brands for businesses and/or individuals in the fields of adult sexual stimulation aids in the nature of bondage goods, penile toys, vibrators, glass sex toys, nipple toys, suction devices, prostate massagers, body massagers, erotic furniture, improvised sex toys, flesh-like sex toys, g-spot vibrators, vibrator wands, bullet vibrators, anal toys, couples kits comprised of adult novelties, general penetrative toys, artificial vaginas, cock rings, cock harness, penis extensions, butt plugs, anal beads, dildo, dongs, latex sex toys, silicone sex toys, lotions, lubricants, creams, massage creams, condoms, edible undergarments, latex clothing, clitoral vibrators, and massagers, dual stimulation sex toys, hand and finger vibrators, lingerie, panties, underwear, hosiery, clothing, shoes, restraints, bondage tape, cuffs, belts, neck bands, leather cuffs, leather belts, leather neck bands, latex belts, latex neck bands, latex cuffs, leather restraints, latex restraints, polish restraints, leather lingerie, leather panties, leather underwear, leather clothing, latex lingerie, latex panties, latex underwear, latex clothing, handcuffs, legcuffs, thumbcuffs, hooks, chains, Ball gag, Ball lock, bit gag, Bondage bed, Bondage cuffs, Bondage mittens, Bondage harness, Bondage belt, Bondage hood, Bondage tape, bondage furniture, Bondage yoke, Breast binder, Butt hook, Chastity belts, Cling film, Cock ring, Collar, Corsets, D-rings, Dental forceps, Diapers, Elbow harness, Funnel gag, Head harness, Hobble skirt, Human pony harness, Humbler, Inflatable gag, Spreader bar, Lip loop, Medical restraints, Monoglove, Mouthguard gag, Muzzle gag, Panic snaps, Penis gag, Penis Displays, Posture collar, Ring gag, Rope, Shackles and fetters, Sleepsacks, Stocks, Straitjackets, Suspension cuffs.

(b) and Class 40, with goods and services as follows:

Custom manufacture of adult sexual stimulation aids in the nature of bondage goods, penile toys, vibrators, glass sex toys, nipple toys, suction devices, prostate massagers, body massagers, erotic furniture, improvised sex toys, flesh-like sex toys, g-spot vibrators, vibrator wands, bullet vibrators, anal toys, couples kits comprised of adult novelties, general penetrative toys, artificial vaginas, cock rings, cock harness, penis extensions, butt plugs, anal beads, dildo, dongs, latex sex toys, silicone sex toys, lotions, lubricants, creams, massage creams, condoms, edible undergarments, latex clothing, clitoral vibrators, and massagers, dual stimulation sex toys, hand and finger vibrators, lingerie, panties, underwear, hosiery, clothing, shoes, restraints, bondage tape, cuffs, belts, neck bands, leather cuffs, leather belts, leather neck bands, latex belts, latex neck bands, latex cuffs, leather restraints, latex restraints, polish restraints, leather lingerie, leather panties, leather underwear, leather clothing, latex lingerie, latex panties, latex underwear, latex clothing, handcuffs, legcuffs, thumbcuffs, hooks, chains, Ball gag, Ball lock, bit gag, Bondage bed, Bondage cuffs, Bondage mittens, Bondage harness, Bondage belt, Bondage hood, Bondage tape, bondage furniture, Bondage yoke, Breast binder, Butt hook, Chastity belts, Cling film, Cock ring, Collar, Corsets, D-rings, Dental forceps, Diapers, Elbow harness, Funnel gag, Head harness, Hobble skirt, Human pony harness, Humbler, Inflatable gag, Spreader bar, Lip loop, Medical restraints, Monoglove, Mouthguard gag, Muzzle gag, Panic snaps, Penis gag, Penis Displays, Posture collar, Ring gag, Rope, Shackles and fetters, Sleepsacks, Stocks, Straitjackets, Suspension cuffs 13. Although application alleges first use in commerce for both classes on March 23, 2015, in a previous application, filed by this Applicant, for the exact same mark, this Applicant declared that it intended to use the mark, and did not indicate at any point through the proceeding that the mark was put into use. Indeed, that intent to use application was approved by the USPTO on April 28, 2015, however, a notice of abandonment issued to Applicant on November 30, 2015, and Applicant failed to either revive the application or file a statement of use so the mark was abandoned.

14. Accordingly, Applicant's present claim that its mark was in use in commerce on March

23, 2015, a time that predates the November 30, 2015 abandonment of a previous intent to use application and a failure to provide a statement of use, is in conflict with its previous application and declarations.

III. GROUNDS FOR OPPOSITION

A. Likelihood Of Confusion

15. The Trademark Act at Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods of the applicant and registrant. See 15 U.S.C. §1052(d).

16. A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ

563, 567 (C.C.P.A. 1973) aid in this determination. Citigroup Inc. v. Capital City Bank Grp., Inc., 637

F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011).

17. Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v.

Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315

F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co.,

476 F.2d at 1361-62, 177 USPQ at 567.

18. The du Pont factors used to evaluate likelihood of confusion are: (1) the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression; (2) the similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use; (3) the similarity or dissimilarity of established, likely-to-continue trade channels; (4) the conditions under which and buyers to whom sales are made, i.e., "impulse" vs. careful, sophisticated purchasing; (5) the fame of the prior mark (sales, advertising, length of use); (6) the number and nature of similar marks in use on similar goods; (7) the nature and extent of any actual confusion; (8) the length of time during and conditions under which there has been concurrent use without evidence of actual confusion; (9) the variety of goods on which a mark is or is not used (house mark, "family" mark, product mark); (10) the market interface between applicant and the owner of a prior mark; (11) the extent to which applicant has a right to exclude others from use of its mark on its goods; (12) the extent of potential confusion, i.e., whether de minimis or substantial; and (13) any other established fact probative of the effect of use. Recot, Inc. v.

Becton, 214 F.3d 1322, 2000 U.S. App. LEXIS 12329, 54 U.S.P.Q.2D (BNA) 1894 (Fed. Cir. 2000).

19. In the present case, the relevant du Pont factors overwhelmingly weigh in favor of a finding of confusion, as follows.

Similarity of the Marks:

20. Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321,

110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin

Maison Fondee En 1772, 396 F. 3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP

§1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty

Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535

(TTAB 1988)); TMEP §1207.01(b).

21. In this instance, Applicant’s mark incorporates the whole of Opposer's mark.

Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section

2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A.

1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca- Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A.

1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); Hunter Indus., Inc. v. Toro Co., 110 USPQ2D 1651, 1660-61 (TTAB 2014) (finding PRECISION and PRECISION

DISTRIBUTION CONTROL confusingly similar); TMEP §1207.01(b)(iii).

22. Accordingly, the two marks are identical in critical part, creating strong similarities in sound, appearance and overall commercial impression. Indeed, the dominant component of the

Applicant's mark is "KINK," a verbatim replica of the entire registered mark of the Opposer. The added work "Master" to Applicant's word as a prefix to the work KINK, works to indicate either a status, or a high level of skill relating to any noun that follows it, and as such, requires and describes the noun KINK while doing nothing to distinguish KINK from Opposer's mark.

Similarity of the Goods:

23. The goods of the parties need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475

(Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000)

(“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP

§1207.01(a)(i). The respective goods need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101

USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724

(TTAB 2007)); TMEP §1207.01(a)(i). Here, the nature of the goods and the target audiences are virtually indistinguishable, as the goods and services of both marks are squarely marketed to and designed for an alternative sexuality defined community that is considered "kinky."

Similarity of Trade Channels:

24. Absent restrictions in an application and/or registration, the identified goods are

“presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v.

Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).

25. Here, no assumption need me bade, as the applications evidence that the trade channels are identical. The Applicant's mark includes three specimens showing its goods for sale online and through its website at www.masterkink.com. This is identical to the channel used by Opposer to sell its goods and services, its website at www.kink.com and store.kink.com/, a method used by Opposer successfully since 2006. Buyers will very likely and mistakenly land at Applicant's sale page for its goods based on the reputation and name of the Opposer's site and products, Kink.Com , a longstanding, well known and respected provider of Kink-related goods and services.

Fame of Opposer and its Registered Mark:

26. The fame of the Opposer's mark is evidenced by the fact that Opposer acquired secondary meaning over an otherwise descriptive mark, "KINK" based directly on its longstanding use of that mark.

27. In sum, the marks are similar in sound, appearance and overall commercial impression as applicant’s mark incorporates the entirety of registrant’s mark, and the dominant component of

Applicant's mark is Opposer's property. The underlying goods are similar in that applicant’s broadly worded identification encompasses registrant’s goods. Where the goods of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods. In re J.M.

Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d

1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b). Lastly, the overriding concern is not only to prevent buyer confusion as to the source of the goods, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co.,

992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the Registered owner, here, the Opposer.

TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6

USPQ2d 1025, 1026 (Fed. Cir. 1988).

28. Taking the relevant factors into account, consumers encountering the marks together in the marketplace are likely to incur source confusion and registration of the applied-for mark should therefore be refused under Section 2(d) of the Trademark Act.

IV. RELIEF SOUGHT 29. This opposition should be sustained and registration of the Applicant’s proposed mark should be denied.

Dated: August 11, 2016 AUSTIN LAW GROUP

By: _/Julien Swanson/______JULIEN SWANSON (SBN 193957) AUSTIN LAW GROUP 779 Castro Street San Francisco CA 94114 [email protected] [email protected] Attorneys for CYBERNET ENTERTAINMENT LLC CERTIFICATE OF MAILING

I hereby certify that on August 11, 2015, the following NOTICE OF OPPOSITION for Application Serial No: 86908580 is being deposited in the United States Postal Service with sufficient postage as first class mail, using normal business practices, in an envelope addressed to:

Brendan M. Shortell Lambert & Associates 92 State Street, Suite 200 Boston, Massachusetts, 02109

Executed this 11th day of 2016, at San Francisco, California.

By:/ ______Julien Swanson