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Ttabvue-91237441-OPP-4.Pdf Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA856177 Filing date: 11/03/2017 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91237441 Party Defendant Mad Dog Software Corp. Correspondence MAD DOG SOFTWARE CORP. Address MAD DOG SOFTWARE CORP. 1261 ALBION LANE SUNNYVALE, CA 94087 Email: [email protected] Submission Answer and Counterclaim Filer's Name Danielle Fujii Filer's email [email protected] Signature /Danielle Fujii/ Date 11/03/2017 Attachments Answer_11032017.pdf(4306321 bytes ) Registration Subject to the filing Registration No. 4971934 Registration date 06/07/2016 Registrant SNAP INC. 63 MARKET STREET VENICE, CA 90291 UNITED STATES Goods/Services Subject to the filing Class 009. First Use: 2011/09/00 First Use In Commerce: 2011/09/00 All goods and services in the class are requested, namely: Software for modifying the appearance and enabling transmission of photographs and videos; software for use in taking and editing photo- graphs and recording andediting videos; software to enable the transmission of photographs and videos to mobile telephones; software for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information; computer software for use as an application program- ming interface (API); software to enable uploading, downloading, accessing, posting, displaying, tag- ging, streaming, linking, sharing or otherwise providing electronic media or information via computer and communication networks; software for streaming audio-visual media content via a global com- puter network and to mobile and digital electronic devices; computer software which allows users to build and access social network information including address book, friend lists, profiles, preferences and personal data; software for managing contact information in mobile device address books; elec- tronic database in the field of entertainment recorded on computer media IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD SNAP, INC., ) ) Opposer, ) ) v. ) Opposition No. 91237441 ) Serial No. 87344309 MAD DOG SOFTWARE CORP., ) ) Applicant. ) ) ____________________________________) ANSWER TO NOTICE OF OPPOSITION MAD DOG SOFTWARE CORP., with an address at 1261 Albion Lane, Sunnyvale, California 94087 (“Applicant”) hereby replies to the numbered grounds for opposition set forth in the Notice of Opposition of SNAP, INC., a Delaware corporation with a principal place of business at 63 Market Street, Venice, California 90291 (“Opposer”) as follows: 1. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 1, and therefore denies those allegations. 2. Applicant admits that Opposer used marks incorporating “snap” in Opposer’s snapchat application. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the remaining allegations in paragraph 2, and therefore denies those allegations. 3. Applicant admits that Opposer owns numerous federal registrations, collectively the “SNAP Registrations.” Applicant lacks knowledge or information sufficient to form a belief as to the truth of the remaining allegations in paragraph 3, and therefore denies those allegations. 4. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 4, and therefore denies those allegations. 5. Applicant denies that Oppressor’s efforts to promote and distribute the snapchat mobile application and related goods and services have been extraordinarily successful. Numerous websites record the disappointing quarterly results and slowing active daily user growth. The recent stock price, well below its IPO price, seems to reflect that. See Exhibit A. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the remaining allegations in paragraph 5, and therefore denies those allegations. 6. Applicant submits that paragraph 6 helps prove Applicant’s position with regard to Applicant’s answer to paragraph 5. Applicant admits only a minor segment of the population (ages 18-24) seems interested in the snapchat application, and such an outcome cannot be deemed “extraordinarily successful.” Applicant lacks knowledge or information sufficient to form a belief as to the truth of the remaining allegations in paragraph 5, and therefore denies those allegations. 7. Applicant denies that “Snap’s SNAPCHAT application growth and development have skyrocketed.” Indeed, recent news reports suggest the opposite. See Exhibit A. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the remaining allegations in paragraph 7, and therefore denies those allegations. 8. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 8, and therefore denies those allegations. 9. Applicant denies that Opposer has extensively used and promoted all of the SNAP marks. Many of the marks have been purchased by Opposer recently, and these marks are not extensively used or promoted by Opposer. Similarly, Applicant denies that there is a high degree of consumer recognition of all the SNAP marks. Indeed, Opposer’s own Form S-1 lists Opposer’s products as 1) snapchat, 2) “publisher tools,” to the extent that can be understood from such an unintelligible description, and 3) spectacles. Aside from snapchat, Opposer makes no mention of any of the SNAP Marks in its list of products on its own Form S-1. See Exhibit B. Wikipedia, a community maintained encyclopedia, further states that “[Opposer] has four products: Snapchat, Spectacles, Bitmoji, and Zenly.” See Exhibit C. A lack of mentioning on a community maintained encyclopedia would strongly suggest that there is no consumer recognition of the SNAP marks, aside from snapchat. Applicant denies the remaining allegations in paragraph 9 as those allegations state legal conclusions rather than facts. 10. Applicant admits that it Applicant filed an intent-to-use Application with the USPTO to register the MAPSNAPS mark on the Principal Register, for “Computer software for communicating with users of hand-held computers; Computer software for organizing and viewing digital images and photographs; Downloadable cloud-based software for taking photos of locations, sharing said photos with other users, and identifying locations of photos taken by other users; Downloadable mobile applications for taking photos of locations, sharing said photos with other users, and identifying locations of photos taken by other users” in Class 9. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the remaining allegations in paragraph 10, and therefore denies those allegations. 11. Applicant admits there is no issue as to priority. 12. Applicant denies the allegations in paragraph 12, as those allegations state legal conclusions rather than facts. 13. Applicant admits that MAPSNAPS includes the letters S, N, A, and P in sequence. Applicant denies the remaining allegations in paragraph 13, as those allegations state legal conclusions rather than facts. 14. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 14, and therefore denies those allegations. 15. Applicant denies the allegations in paragraph 15, as those allegations state legal conclusions rather than facts. 16. Applicant denies that consumers exclusively identify the SNAP marks with Opposer. There are numerous notorious uses of the “snap” mark that, one would hope (see below Applicant’s answer to paragraph 17), Opposer does not wish to be identified with. These include www.snapsex.co, www.snapfuck.me, www.snapfuck.nl , the SNAPFUCK App, and the Twitter handle SNAPFUCK, among others. These notorious uses of the “snap” mark can be easily found by doing a google search with the search terms “snap sexting,” followed by the next and obvious search term “snapfuck.” These appear on the first page of search results. See Exhibits D and E. Such prominent search results would seem to suggest that consumers do not exclusively identify the “snap” mark with Opposer. Applicant denies the remaining allegations in paragraph 16, as those allegations state legal conclusions rather than facts. 17. Applicant denies that there is invaluable goodwill and reputation symbolized in the SNAP marks. “For better or worse, Snapchat has changed sexting forever.” See Exhibit F. As stated in the article in Exhibit F, “Snapchat’s launch has taken sexting – the consensual act of sharing intimate photos – from a stigmatized and seedy activity, to a mainstream and widely-accepted practice.” There are several further “sinister” consequences described in the article. Furthermore, the emails sent from Opposer’s CEO and Co-Founder, Evan Spiegel, near the time the snapchat application was created, cement the impression that Opposer is associated with unwholesome and base characteristics. See Exhibit G. This does not strike Applicant as having “invaluable goodwill and reputation.” Indeed, Applicant’s goodwill and reputation will likely be tarnished if consumers were to associate Applicant with Opposer’s seedy and immoral business, via Opposer’s confusingly similar Snap Map feature or other products and services. See Exhibit H. Applicant denies the remaining allegations in paragraph 17, as those allegations state
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