Notice of Opposition Opposers Information Applicant Information

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1002360 Filing date: 09/16/2019

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 parties oppose registration of the indicated application. Opposers Information

Name Plantronics, Inc. Entity Corporation Citizenship Delaware Address 345 Encinal Street Santa Cruz, CA 95060 UNITED STATES

Name Polycom, Inc. Entity Corporation Citizenship Delaware Address 345 Encinal Street Santa Cruz, CA 95060 UNITED STATES

Attorney informa- Marie Lavalleye tion Covington and Burling LLP One CityCenter, 850 Tenth Street, NW Washington, DC 20001 UNITED STATES [email protected], [email protected], [email protected] 2026625439

Applicant Information

Application No 88351159 Publication date 08/27/2019 Opposition Filing 09/16/2019 Opposition Peri- 09/26/2019 Date od Ends Applicant Performance Designed Products LLC 9179 Aero Drive San Diego, CA 92123 UNITED STATES Goods/Services Affected by Opposition

Class 009. First Use: 2019/01/30 First Use In Commerce: 2019/01/30 All goods and services in the class are opposed, namely: Audio headsets for use with computers Class 028. First Use: 2019/01/30 First Use In Commerce: 2019/01/30 All goods and services in the class are opposed, namely: Audio headsets for use with gaming consoles; audio headsets for use with video game systems Applicant Information

Application No 88351167 Publication date 08/27/2019 Opposition Filing 09/16/2019 Opposition Peri- 09/26/2019 Date od Ends Applicant Performance Designed Products LLC 9179 Aero Drive San Diego, CA 92123 UNITED STATES Goods/Services Affected by Opposition

Class 009. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Batteries for use with video game systems; battery chargers for use with video game systems; headphones; audio headset stands, namely, headset stands for audioheadsets for use with computers and stands for audio headsets for virtual reality games; audio network systems comprising audio speakers, audio amplifiers, audio receivers, audio mixers, and also including electronic controllers for video game systems that connect voice and audio for multiple players; downloadable computer software for use with video game controllers, video game consoles and video game equipment for customizing and adjusting appearance, settings, layout and functionality; downloadable computer software applications for use with video game controllers, video game consoles and video game equipment for customizing andadjusting appearance, settings, layout and functionality; downloadable computersoftware applications that allow for customization and modification of input controls, lighting, audio and communication signals associated with video game controllers or audio headsets; downloadablevideo game computer software and downloadable video game software applications Class 028. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Video game equipment, namely, controllers adapted for game consoles that utilize light signals; video game controllers;controllers adapted for game consoles; audio controllers adapted for video gamemachines; cover plates plate covers for- game controllers, namely, cover plates in the nature of plate covers for controllers for game consoles and game controllers for computer games; audio headset stands, namely, headset stands for audio headsets adapted for use in playing video games; video game interactive remote control units in the nature of guns for video games; protective carrying cases specially adapted for video game systems equipment in connection with video game machines, video game consoles and headsets adapted for playing video games; headsets adapted for playing video games Grounds for Opposition

Priority and likelihood of confusion Trademark Act Section 2(d) No use of mark in commerce before application Trademark Act Sections 1(a) and (c) or amendment to allege use was filed No bona fide intent to use mark in commerce for Trademark Act Section 1(b) identified goods or services Fraud on the USPTO In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009) Marks Cited by Opposer as Basis for Opposition

U.S. Application 88320811 Application Date 02/28/2019 No. Registration Date NONE Foreign Priority NONE Date Word Mark PPP Design Mark

Description of The mark consists of a triangular design formed by three lowercase letter "P"'s, Mark the upper portions of which are joinedtogether to form a circle with the three stems protruding equidistantly from the circle. The three protruding stems create an equilateral-triangular shape surrounding the circle, thus appearing like a propeller and reminiscent of a three-legged speakerphone. Goods/Services Class 009. First use: First Use: 0 First Use In Commerce: 0 Computer software, namely, downloadableor recorded software for scheduling, controlling, enhancing, and managing video, voice and data communications and monitoring, managing and maintaining voice, video and data devices; Com- puter hardware and downloadable or recorded software for telecommunications, teleconferencingand video conferencing, communicating audio, video and data between computers via a global computer network, wide-area computer networks, and peer-to-peer computer networks manipulating and controlling images from web cameras and digital cameras; Computer hardware; Computer hardware and downloadable or recorded computer software programs for the integ- rationof text, audio, graphics, still images and moving pictures into an interactive delivery for multimedia applications; Computer software in the nature of downloadable or recorded software for downloading, transmitting, receiving, processing,reading, watching, and controlling applications, electronic data, images, audioand video files; Computer software in the nature of downloadable or recorded software for reproducing, processing and streaming audio, video and multimedia content and for audio calling, video calling and remote collaborating; computer software in the nature of downloadable or recorded software for controlling the operation of audio and video apparatus and for viewing, searching and/or reading sound, video, television, films, photographs and other digital images and other multimedia content; computer software in the nature of downloadable or recorded software for sharing multimedia; communications and telecommunications software inthe nature of downloadable or recorded software for audio and video conferencing, data sharing, and real-time collaboration; Internet Protocol phone software in the nature of downloadable or recordedsoftware for conduct- ing VOIP conferencecalls; downloadable or recorded computer software for the management of audio and video communications equipment; downloadable or recorded computer software for the connection and co-ordination of multiple communications devices; downloadable or recorded computer software for use in the operation and management of telecommunications contact centers for scheduling, controlling, enhancing, and managing video, voice and data communications; downloadable or recorded computer software for access to cloud- based computing and cloud-based computer resources; downloadable or recorded computer softwarefor the management of background noise;downloadable or recorded noise and echocancellation software for controlling and operating noise and echo cancellationheadphones and speakers; downloadable or recorded computer software for the control of sound levels; downloadable or recorded sound files reproducing background noise; electronic interactive whiteboards; video cameras; web cameras; audio speakers; headphones; telephone and computer headsets; earbuds; microphones; video-conferencing equipment, namely, telephones, speakerphones, monitors, cameras, telephone and computer headsets, wireless presenter remote pointers, and computer peripheral devices for audio and videoconferencing and collaboration; video-conferencing cameras, speakerphones, computer monitors, televisions; docking stations and adapters, namely, electronic docking stations and electrical adapters for char- ging mobile devices and batteries, connecting telecommunications devices,mobile devices, display devices, computers, mice and keyboards; apparatus for the transmission or reproduction of soundor images; noise and echo cancellation equipment, namely, audio speakers and noise and echo cancelling headphones; Speakerphones; electronic sound generation and sound masking equipment, masking noise generators, and electronic control units for masking and controlling sound, namely, computer hardware and downloadableor recorded software for sound generation, noise cancelling, echo cancelling and sound masking; Wireless audio and videodata transmission equipment, namely, computer hardware and downloadable or recorded software for the transmission or reproduction of sound or images; downloadable or recorded computer software featuring algorithms for use with sound generation and sound masking equipment; visual display screens in the nature of computer screens, computer monitors and televisions; electronic visual display screens for use with sound generation and sound masking equipment; remote controls foraudio and video communications equipment; battery packs for audio and video communications equipment; electric and electronic cables for audio and video communications equipment, and downloadable instruction manuals for the audio and videocommunic- ations equipment; computer peripherals; USB connectable computer peripherals; Telephones Class 037. First use: First Use: 0 First Use In Commerce: 0 Installation and maintenance of office equipment, computer hardware, audio- visual communication equipment, and equipment to control sounds within work- places; Installation, optimization in the nature of customization, repair, and maintenance of sound generation and sound masking equipment relating to workplace sound masking Class 038. First use: First Use: 0 First Use In Commerce: 0 Communications services, namely, providing facilities and equipment for audio and video conferencing, data exchange, telepresence conferencing, and real- time collaboration; Telecommunications services, namely, electronic transmission of voice signals, data, facsimiles, images and information Class 041. First use: First Use: 0 First Use In Commerce: 0 Provision of education and training in the nature of classes, seminars, and individual instruction in the field of audio and video communications, data sharing, and real-time collaborations; provision of training in the use of the telecommunications equipment, hardware and software; provision of training in the use ofoffice equipment in the nature of computers, computer software, telecommunications equipment, audio and video conferencing equipment, video monitors, speakers,and headsets Class 042. First use: First Use: 0 First Use In Commerce: 0 Technical research, analysis and designservices, namely, technical research inthe field of acoustics and new product design in the fields of audio and video conferencing, data sharing, and real-time collaboration; Design of office computers, furniture, telecommunications equipment, audio and video conferencing equipment, video monitors, speakers, and headsets, and technological product researchin the aforementioned fields; Design ofaudio-visual communication and teleconferencing equipment, and technological research in the aforementioned fields; Technical research, test, evaluation and design services, namely, technical research in the field of acoustics, interior design, and product quality testing to test the operations and effectiveness of sound equipment relating to workplace sound masking; Installation and maintenance of computer software; Installation and maintenance of communications computer software; Software-as-a-Service (SaaS) services featuring software for controllingaudio and video communications equipment, conferencing equipment, collaborationequipment, and also for controlling other communications or operational software applications associated with the foregoing equipment; Providing online non-downloadable communication software for voice and video conferencing, data sharing,and real-time collaboration; IT consultancy; Interior design to optimize sound masking

U.S. Application 88343345 Application Date 03/17/2019 No. Registration Date NONE Foreign Priority NONE Date Word Mark PPP POLY Design Mark

Description of The mark consists of three lowercase letter "P"'s forming a triangular design to Mark the left of the word "POLY". The upperportions of the first three letter "P"'s are joined together to form a circle with the three stems protruding equidistantly from the circle. The three protruding stems create an equilateral-triangular shape surrounding the circle, thus appearing like a propeller and reminiscent of Applicant's three-legged speakerphone. Goods/Services Class 009. First use: First Use: 0 First Use In Commerce: 0 Computer software, namely, downloadableor recorded software for scheduling, controlling, enhancing, and managing video, voice and data communications and monitoring, managing and maintaining voice, video and data devices; Com- puter hardware and downloadable or recorded software for telecommunications, teleconferencingand video conferencing, communicating audio, video and data between computers via a global computer network, wide-area computer networks, and peer-to-peer computer networks manipulating and controlling images from web cameras and digital cameras; Computer hardware; Computer hardware and downloadable or recorded computer software programs for the integ- rationof text, audio, graphics, still images and moving pictures into an interactive delivery for multimedia applications; Computer software in the nature of downloadable or recorded software for downloading, transmitting, receiving, processing,reading, watching, and controlling applications, electronic data, images, audioand video files; Computer software in the nature of downloadable or recorded software for reproducing, processing and streaming audio, video and multimedia content and for audio calling, video calling and remote collaborating; computer software in the nature of downloadable or recorded software for controlling the operation of audio and video apparatus and for viewing, searching and/or reading sound, video, television, films, photographs and other digital images and other multimedia content; computer software in the nature of downloadable or recorded software for sharing multimedia; communications and telecommunications software inthe nature of downloadable or recorded software for audio and video conferencing, data sharing, and real-time collaboration; Internet Protocol phone software in the nature of downloadable or recordedsoftware for conduct- ing VOIP conferencecalls; downloadable or recorded computer software for the management of audio and video communications equipment; downloadable or recorded computer software for the connection and co-ordination of multiple communications devices; downloadable or recorded computer software for use in the operation and management of telecommunications contact centers for scheduling, controlling, enhancing, and managing video, voice and data communications; downloadable or recorded computer software for access to cloud- based computing and cloud-based computer resources; downloadable or recorded computer softwarefor the management of background noise;downloadable or recorded noise and echocancellation software for controlling and operating noise and echo cancellationheadphones and speakers; downloadable or recorded computer software for the control of sound levels; downloadable or recorded sound files reproducing background noise; electronic interactive whiteboards; video cameras; web cameras; audio speakers; headphones; telephone and computer headsets; earbuds; microphones; video-conferencing equipment, namely, telephones, speakerphones, monitors, cameras, telephone and computer headsets, wireless presenter remote pointers, and computer peripheral devices for audio and videoconferencing and collaboration; video-conferencing cameras, speakerphones, computer monitors, televisions; docking stations and adapters, namely, electronic docking stations and electrical adapters for char- ging mobile devices and batteries, connecting telecommunications devices,mobile devices, display devices, computers, mice and keyboards; apparatus for the transmission or reproduction of soundor images; noise and echo cancellation equipment, namely, audio speakers and noise and echo cancelling headphones; Speakerphones; electronic sound generation and sound masking equipment, masking noise generators, and electronic control units for masking and controlling sound, namely, computer hardware and downloadableor recorded software for sound generation, noise cancelling, echo cancelling and sound masking; Wireless audio and videodata transmission equipment, namely, computer hardware and downloadable or recorded software for the transmission or reproduction of sound or images; downloadable or recorded computer software featuring algorithms for use with sound generation and sound masking equipment; visual display screens in the nature of computer screens, computer monitors and televisions; electronic visual display screens for use with sound generation and sound masking equipment; remote controls foraudio and video communications equipment; battery packs for audio and video communications equipment; electric and electronic cables for audio and video communications equipment, and downloadable instruction manuals for the audio and videocommunic- ations equipment; computer peripherals; USB connectable computer peripherals; Telephones

Attachments 88320811#TMSN.png( bytes ) 88343345#TMSN.png( bytes ) Notice of Opposition.pdf(273561 bytes )

Signature /Marie A. Lavalleye/ Name Marie A. Lavalleye Date 09/16/2019 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In the Matter of: Ser. Nos. 88/351,159 and 88/351,167 Date of Filing: March 21, 2019 Mark: PDP Gaming Logo Date of Publication: August 27, 2019

) PLANTRONICS, INC. and ) POLYCOM, INC. ) ) Opposers, ) ) v. ) Opposition No.: ______) PERFORMANCE DESIGNED ) PRODUCTS LLC, ) ) Applicant. )

CONSOLIDATED NOTICE OF OPPOSITION

Opposers Plantronics, Inc. (“Plantronics”) and its subsidiary Polycom, Inc. (“Polycom”)

(collectively, the “Opposers” or “Poly”), each a Delaware corporation having an address of 345

Encinal Street, Santa Cruz, California 95060, believe that they will be damaged by registration of the design mark reflected in Application Ser. Nos. 88/351,159 and 88/351,167, filed by

Applicant Performance Designed Products, LLC (“Applicant” or “PDP”), in connection with

“audio headsets for use with computers” in International Class 9 (Ser. No. 88/351,159) and

“headphones,” “audio headset stands, namely, headset stands for audio headsets for use with

computers,” “audio network systems comprising audio speakers, audio amplifiers, audio

receivers, [and] audio mixers,”1 and “downloadable computer software applications that allow

1 Poly believes that the wording “audio network systems comprising audio speakers, audio amplifiers, audio receivers, audio mixers, and also including electronic controllers” is limited to for customization and modification of input controls, lighting, audio and communication signals

associated with . . . audio headsets”2 in International Class 9 (Ser. No. 88/351,167). Poly hereby

opposes the same pursuant to 15 U.S.C. §§ 1063, 1068 and 37 C.F.R. § 2.101.

As grounds for the opposition, Poly states:

A. Poly and Its Propeller Logo

1. Opposer Plantronics was founded in the 1960s by two pilots seeking to address

the need for lightweight, acoustically advanced headsets for pilots and Federal Aviation

Administration (“FAA”) communication towers.

2. Over the course of five decades, Opposer Plantronics has been the leading maker

of technically sophisticated and industry leading business/enterprise headset communications products; the sole source supplier of headsets to the FAA; the headset supplier for NASA, including those worn by the Apollo 11 astronauts to communicate the first words from the moon—“That’s one small step for a man, one giant leap for mankind” announced from the

Apollo 11 moon landing—and Apollo 13’s “Houston, we’ve had a problem”; and the headset

supplier for virtually every Fortune 500 company.

audio network systems “for video game systems that connect voice and audio for multiple players.” However, to the extent that “audio network systems comprising audio speakers, audio amplifiers, audio receivers, audio mixers” is not limited to audio network systems “for video game systems that connect voice and audio for multiple players,” then Poly hereby objects to such wording as overbroad. 2 Poly believes that “audio headsets” in the description “downloadable computer software applications that allow for customization and modification of input controls, lighting, audio and communication signals associated with video game controllers or audio headsets,” is intended to be modified by “video game” so that the description should be read as “downloadable computer software applications that allow for customization and modification of input controls, lighting, audio and communication signals associated with video game controllers or [video game] audio headsets.” However, to the extent that such wording is not so modified by “video game,” then Poly hereby objects to such wording as overbroad.

2 3. In 2018, Plantronics acquired Polycom, a leading global provider of open,

standards-based technology for voice, video, and content sharing solutions. Polycom’s history

has not been making or selling headsets, but instead centers around its introduction roughly 30

years ago of speakerphone technology. Since then, Polycom’s iconic, triangular speakerphones have become an indispensable business tool used in conference rooms around the globe.

Polycom’s original speakerphone, the triangular SoundStation, is featured in the Smithsonian

Museum of National History. Throughout its long history, Polycom has continued to use triangular or three-legged shapes in designing its speakerphones.

4. Business/enterprise products, which allow integrated video and audio conferencing, desktop, and mobile communications, make up the overwhelming majority of

Poly’s business. In Poly’s most recent quarter, business/enterprise products and services accounted for approximately 90% of revenue, while its consumer headset segment and gaming headset segment3 comprised approximately 10% of revenue combined (with the consumer headset portion constituting the larger portion of such revenue).

5. Poly sells its enterprise products virtually exclusively to distributors, who then sell to end customers like IT and procurement managers. Buyers in a voice or video transaction will shop for an entire portfolio of Poly’s products. An order can include hundreds, or thousands, of desk phones, or audio and videoconferencing solutions for dozens of conference rooms in a variety of sizes. Poly’s business/enterprise products do not compete with consumer or gaming headsets.

3 As explained below, Poly’s gaming headset segment is sold exclusively under Poly’s RIG branding.

3 6. Business/enterprise headsets are intended for a wide range of business environments, none of which overlap with the intended environments for gaming headsets.

Examples include customer service call center workers, who take customer support calls from wired work stations; individuals moving between spaces in an office setting, which calls for wireless technology and protection against transmission interference, including through highly secure digital enhanced cordless telecommunications (“DECT”) technology; and mobile professionals, who spend much of their time outside the office and need a headset that can be used with a variety of mobile devices, including cell phones, tablets, and laptops. Because the focus is on business communications, not entertainment, speaker technologies in business/enterprise headsets are specially designed with state-of-the-art, patented technology to provide clear acoustic transmission of speech. They are not optimized or designed for music, sound effects, or gaming consoles.

7. Wireless headsets in office environments require specialized technology that is highly secure, avoids interference with WiFi networks, and allows the user to move about an office—concerns that are largely unique to business environments. Such headsets must provide reliable performance for many hours a day, typically over a four-year product life.

8. The recommended retail price for Poly’s business/enterprise headsets average approximately $400. Consistent with their design and intended use, marketing for business/enterprise headsets focuses on the products’ ability to enable business communications.

Among other features, Poly’s marketing highlights the products’ interoperability with various devices; smart software features; and certifications, which require rigorous testing and satisfaction of third-party specifications and requirements related to integration, compatibility,

4 product life, and durability. These tests require much more product development time than is

required for gaming products.

9. Poly’s non-gaming consumer headsets are also intended for various different

environments, each distinct from the video gaming context. These headsets include mono

Bluetooth headsets (i.e., headsets with one ear) traditionally used by drivers and others needing a

hands-free environment; stereo Bluetooth headsets for music and entertainment; and stereo

Bluetooth headsets for sports and exercise. All are “music-first” products that focus on immersive listening, including noise-reduction and noise-cancellation technology, as well as portability and, in the case of sports headsets, lightweight durability. Poly’s non-gaming consumer headsets all use Bluetooth technology for wireless connectivity.

10. DECT technology is not used in gaming products, and Bluetooth technology is used infrequently in such products.

11. Following Plantronics’s July 2018 acquisition of Polycom, the companies drew on their respective legacies to develop a new combined corporate identity under the trade name

“Poly”4 with a new graphic element (the graphical element alone referred to as the “Propeller

Logo” and, together with the name Poly, the “Propeller + Poly Logo”), as shown below:

12. The Propeller Logo consists of three intertwined “P”s—reflecting the individual legacies of Plantronics (P) and Polycom (P), as well as the new identity of the combined company trading under the name Poly (P). The design of the Propeller Logo further combines

4 Polycom, Inc. is now a subsidiary of Plantronics, Inc. The new combined business goes by the name, and therefore is referred to herein as, “Poly.”

5 the rotating shape of a propeller—reflecting Plantronics’s aviation lineage—with the triangular shape and 60-degree angles of Polycom’s iconic speakerphone, as well as Plantronics’s signature

lava red color.5

13. On February 28, 2019, Opposer Plantronics filed an application (Ser. No.

88/320,811) seeking registration of the Propeller Logo for a variety of non-gaming

communications equipment, including non-gaming headsets, in International Class 9, as well as

related installation, maintenance, communications, educational, training, and technical services

in International Classes 37, 38, 41, and 42.

14. On March 17, 2019, Opposer Plantronics filed an application (Ser. No.

88/343,345) seeking registration of the Propeller + Poly Logo (without color as shown below)

for a variety of communications equipment, i.e., communications products used by businesses,

including non-gaming headsets, in International Class 9 (collectively, with Ser. No. 88/320,811,

the “Propeller Logo Applications”).6

5 In contrast, PDP describes its design mark (which is the subject of Application Ser. Nos. 88/351,159 and 88/351,167), not as consisting of three “P”s, but instead as “the stylized letters ‘PDP’ consisting of a circle with three bars stemming from it, specifically a vertical downward stemming bar forming the stem in the letter ‘P’, a diagonal right stemming bar on the center right of the circle forming the letter ‘D’, and a diagonal left stemming bar at the top of the circle forming the second letter ‘P’.” 6 On March 17, 2019, Opposer Plantronics also filed applications to register the Propeller Logo or Propeller + Poly Logo in connection with a variety of installation, maintenance, communication, and technical services associated with its business/enterprise goods and services (Ser. Nos. 88/343,346, 88/343,347, and 88/343,349).

6 15. The Propeller Logo Applications did not seek registration of the Propeller Logo or

the Propeller + Poly Logo for gaming headsets or for any other gaming-related accessories or

apparatuses (which would have been categorized under International Class 28).

16. Indeed, Poly did not seek registration of the Propeller Logo or the Propeller +

Poly Logo for gaming headsets (or for any other gaming apparatus) because Poly does not use,

and does not intend to use, the Propeller Logo or the Propeller + Poly Logo in connection with

any of its gaming headsets. Those gaming headsets always have been sold under the well- established and specialized RIG gaming brand and Poly has no intention of using the Propeller

Logo or the Propeller + Poly Logo with its RIG-branded gaming headsets in the future. On May

7, 2019, Poly publicly announced that it is considering strategic alternatives for its gaming headset line.7

17. On March 18, 2019, Poly unveiled its new merged corporate trade name and the

Propeller + Poly Logo, launching a nationwide branding effort that has included use of the

Propeller + Poly Logo in a national press release and on Poly’s website at https://www.poly.com/us/en, among other places. Poly’s Chief Marketing Officer published a blog post explaining how the company arrived at its new name and logo, including a graphic showing the “Logo Story,” reproduced below:

7 See Poly Announces Fourth Quarter and Fiscal Year 2019 Financial Results, Poly, available at http://investor.poly.com/Cache/1500120186.PDF?O=PDF&T=&Y=&D=&FID=1500120186&ii d=4611682.

18. The U.S. Patent and Trademark Office (USPTO) examined, approved for

publication, and scheduled for publication on September 17, 2019 each of the Propeller Logo

Applications.

B. PDP and Its PDP Gaming Logo

19. On information and belief, Applicant is a California limited liability company

with a principal place of business at 9179 Aero Drive, San Diego, California 92123.

20. On its website located at https://www.pdp.com/en/about-us/ (as of September 16,

2019), Applicant describes itself as “the #1 video game accessory company in North America.”

8 21. Similarly, PDP described itself as a “video game accessory provider” in a

complaint filed against Poly on July 19, 2019 in the United States District Court for the Southern

District of California (the “District Court Proceeding”).8

22. On its Facebook page, PDP claims that, since its founding in the 1990s, it has been exclusively in the business of “designing and manufacturing peripherals for all major video game platforms.”9

23. According to PDP’s Facebook page, PDP’s recent product range has included peripherals for the “Sony PS3, PS4, PSP, PS Vita and Play[S]tation Move, Nintendo Wii, Wii U and DS, and Microsoft XBOX 360, Xbox One and Kinect.”10

24. On information and belief, PDP’s gaming peripherals include gaming headsets, video game controllers, video game chargers and charge systems, cartoon figurines, and other accessories for video games and video game systems, and are designed for and marketed to gamers.

25. On information and belief, PDP has designed and marketed its gaming peripherals, including headsets, specifically for use with particular gaming consoles. For example, PDP has explained in online product support pages for its gaming headsets: “[Y]ou can inform customers that they could try directly plugging in the [gaming headset] into the 3.5

8 Performance Designed Products LLC v. Plantronics, Inc., Case No. 3:19-cv-00536-GPC-LL – Dkt. 43 ¶ 2 (S.D. Cal. 2019). 9 See Company Overview, PDP Performance Designed Products, https://www.facebook.com/pg /PDPGaming/about/?ref=page_internal (last visited September 16, 2019). 10 See id.

9 mm AUX port on the computer or Laptop,” but “if this doesn’t work, there’s not much else we

can recommend as this is not the headset’s purpose or what it was designed or marketed for.”11

26. On information and belief, PDP has never designed, manufactured, marketed or

sold business/enterprise communications equipment, such as business/enterprise headsets,

enterprise voice and video products (e.g., speakerphones or videoconferencing equipment), or

any consumer products apart from gaming accessories. Business/enterprise consumers do not shop for gaming headsets for business environments, and the marketing channels for gaming headsets and business/enterprise solutions do not overlap.

27. On information and belief, Applicant is not in, and has never intended to enter, the business/enterprise communications equipment business or the non-gaming consumer

products business.

28. As Applicant itself makes clear on the homepage of its website (e.g.,“the #1 video

game accessory company in North America”)12 it is in the gaming accessories business.

C. PDP’s Applications and Prior Knowledge of Poly’s Propeller Logo

29. According to PDP’s statements on its website located at https://www.pdp.com/en/

(last visited September 16, 2019) and in the District Court Proceeding, PDP learned of Poly’s

Propeller Logo on March 18, 2019, when Poly announced it to the world.

11 Is My Headset Compatible with PC?, PDP.com, https://support.pdp.com/hc/en- us/articles/115015543588-Is-my-Headset-compatible-with-PC-; see, e.g., Why Doesn’t My Controller Work on a PC?, PDP.com, https://support.pdp.com/hc/en-us/articles/204608098- Why-doesn-t-my-controller-work-on-a-PC- (“This controller was designed and marketed for use with the PS3 console. We do not guarantee or support use with a PC.”); Does This Headset Work on a PC/Mac?, PDP.com, https://support.pdp.com/hc/en-us/articles/115003717328-Does- this-headset-work-on-a-PC-Mac- (“Unfortunately, the AG9+ is not designed nor supported for use with a PC or Mac.”) (each, last visited September 16, 2019). 12 See https://www.pdp.com/en/about-us/ (last visited September 16, 2019).

10 30. Three days later, on March 21, 2019, PDP filed two applications (Ser. Nos.

88/351,159 and 88/351,167) seeking registration of the following design mark (the “PDP

Gaming Logo”) in connection with a range of goods in International Classes 9 and 28:

Notably, PDP described its design mark in its filings in the District Court Proceeding as the

“PDP Gaming Logo.”

31. PDP did not start using the so-called “PDP Gaming Logo” on its social media accounts until March 20, 2019—just one day before it sued Poly and filed the aforementioned applications.

32. Application Ser. No. 88/351,159, which PDP filed on March 21, 2019, on the basis of use in commerce, sought registration of the PDP Gaming Logo for “audio headsets for use with gaming consoles, audio headsets for use with video game systems; and audio headsets for use with computers” in International Class 9 and for “audio headsets for use in playing video games; gaming headsets adapted for use in playing video games; headsets for use with video game consoles; headsets for use with controllers for game consoles, namely, audio and visual headsets for use in playing video games and gaming headsets adapted for use in playing video games; headsets for use with video gaming systems, namely, gaming headsets adapted for use in playing video games and audio and visual headsets for use in playing video games; and headsets for use with hand-held units for playing video games other than those adapted for use with an external display screen or monitor” in International Class 28.

11 33. At the time it filed Application Ser. No. 88/351,159 on March 21, 2019, PDP claimed, under oath via a signed declaration, that it was already using the PDP Gaming Logo in commerce on each of the goods listed in the application.

34. In support of its claim of use for the Class 9 goods in Ser. No. 88/351,159, PDP

submitted with its application a specimen of use consisting of a “Website printout of product

with add to cart feature” with an image of the PDP Gaming Logo appearing on PDP’s LVL 50

gaming headset.

35. The specimen repeatedly describes PDP’s LVL 50 gaming headset as designed

specifically “for Xbox One.” Moreover, the specimen identifies the depicted gaming headset as

the “LVL50 Wired Stereo Headset for Xbox One” and offers the following descriptions: “Stay

at the top of your game and communicate clearly with your team with the LVL50 Wired Headset

for Xbox One. The 3.5mm audio connector plugs directly into the Xbox One controller for a

simple setup. Play at a high level and anticipate your enemy’s next move with crystal clear

sound”; “This wired stereo headset delivers dynamic sound through a pair of powerful 50mm

High-Definition drivers. Hear your games the way you’re supposed to and make sure your

commands are received loud and clear through the flexible noise-cancelling mic. Make volume

adjustments on the fly with convenient on-ear audio controls”; and “With breathable nylon-mesh

over-the-ear cushions and an adjustable lightweight headband, this headset keeps you

comfortable during long gaming sessions. Reduce pressure and fatigue so you can focus all your

attention on leading your teammates to victory.”

36. On May 1, 2019, the USPTO examining attorney assigned to Ser. No. 88/351,159

issued an Office Action: (i) objecting to the inclusion of “headsets” in Class 28 because it was

“too broad and could include goods in other international classes,” such as “‘audio headsets for

12 computer’ in Class 9 and ‘gaming headsets adopted for use in playing video games’ in Class 28”;

(ii) objecting to the classification of “audio headsets for use with gaming consoles” and “audio

headsets for use with video game systems” as not properly within Class 9, and requiring PDP to

move such goods to Class 28 (the correct class for gaming apparatuses); and (iii) refusing

registration of the mark for the remaining goods in Class 9 for failure to have submitted an

appropriate specimen for such remaining goods and requiring PDP to submit a new specimen

“showing the applied-for mark in use in commerce [on the remaining goods, namely, “audio

headsets for computer”] in International Class 9.”

37. In its June 6, 2019 response to the May 1, 2019 Office Action, PDP moved “audio headsets for use with gaming consoles” and “audio headsets for use with video game systems”

from Class 9 to Class 28,13 leaving only “audio headsets for use with computers” in Class 9.

38. With respect to the examining attorney’s request for a substitute specimen for

Class 9, PDP stated in its June 6, 2019 response that “a substitute specimen for Class 9 is not

required because the headset depicted in the specimen submitted in Class 9 is compatible for use

with computers.” PDP did not elaborate on what it meant by “compatible,” or why it thought

such “compatibility” obviated the need for a more appropriate specimen for Class 9. To the

13 In the same response, PDP deleted all of the goods it had previously listed in Class 28 when filing its use-based application for the PDP Gaming Logo, namely, “audio headsets for use in playing video games; gaming headsets adapted for use in playing video games; headsets for use with video game consoles; headsets for use with controllers for game consoles, namely, audio and visual headsets for use in playing video games and gaming headsets adapted for use in playing video games; headsets for use with video gaming systems, namely, gaming headsets adapted for use in playing video games and audio and visual headsets for use in playing video games; and headsets for use with hand-held units for playing video games other than those adapted for use with an external display screen or monitor,” even though it had previously claimed that all such Class 28 goods were shipped or sold in commerce under the PDP Gaming Logo at the time PDP filed its application.

13 contrary, PDP has often stated that its products are not designed or marketed for use other than

with specific gaming consoles.14

39. Moreover, the LVL 50 gaming headsets sold through PDP’s online store at its website, https://www.pdp.com/shop/headset (last visited September 16, 2019), make clear that

such headsets are specifically designed and sold for PlayStation 4 or Xbox One.

40. Around the same time, PDP argued in the District Court Proceeding, in its failed

opposition to Poly’s motion to dismiss the first amended complaint, that a likelihood of

confusion existed between PDP’s gaming headsets and Poly’s business/enterprise and consumer

headsets, including because both parties’ products fell under the broad category of “headsets”

and certain headsets were “compatible” for use across different devices. The district court was

14 See, e.g., Is My Headset Compatible with PC?, PDP.com, https://support.pdp.com/hc/en- us/articles/115015543588-Is-my-Headset-compatible-with-PC- (“[Y]ou can inform customers that they could try directly plugging in the [gaming headset] into the 3.5 mm AUX port on the computer or Laptop,” but “if this doesn’t work, there’s not much else we can recommend as this is not the headset’s purpose or what it was designed or marketed for.”); Why Doesn’t My Controller Work on a PC?, PDP.com, https://support.pdp.com/hc/en-us/articles/204608098- Why-doesn-t-my-controller-work-on-a-PC- (“This controller was designed and marketed for use with the PS3 console. We do not guarantee or support use with a PC.”); Does This Headset Work on a PC/Mac?, PDP.com, https://support.pdp.com/hc/en-us/articles/115003717328-Does- this-headset-work-on-a-PC-Mac- (“Unfortunately, the AG9+ is not designed nor supported for use with a PC or Mac.”) (each last visited September 16, 2019).

14 unpersuaded by PDP’s reasoning and dismissed its first amended complaint. Citing Sleekcraft,

the district court observed that “[i]f a boat is not a boat, then a headset is not a headset.”

41. Application Ser. No. 88/351,167, which PDP filed on March 21, 2019, on the

basis of an intent to use, sought registration of the PDP Gaming Logo for, among other goods

specifically limited to gaming, the following goods not expressly limited to gaming:

“headphones,” “audio headset stands, namely, headset stands for audio headsets for use with

computers,” “audio network systems comprising audio speakers, audio amplifiers, audio

receivers, [and] audio mixers,” and “computer software applications that allow for

customization and modification of input controls, lighting, audio and communication signals

associated with . . . audio headsets” in International Class 9.15

42. Both applications were published for opposition on August 27, 2019, with “audio

headsets for use with computers” in Class 9 included in the identification for Ser. No. 88/351,159

and “headphones,” “audio headset stands, namely, headset stands for audio headsets for use

with computers,” “audio network systems comprising audio speakers, audio amplifiers, audio

receivers, [and] audio mixers,” and “downloadable computer software applications that allow

for customization and modification of input controls, lighting, audio and communication signals

associated with . . . audio headsets” in Class 9 included in the identification for Ser. No.

88/351,159.

43. The present Notice of Opposition is timely filed; the deadline for filing a Notice

of Opposition is September 26, 2019.

15 On June 6, 2019, PDP amended certain of its goods descriptions, in response to a May 1, 2019 Office Action requesting, among other things, that PDP clarify certain of its goods, including by clarifying that the “computer software applications that allow for customization and modification of input controls, lighting, audio and communication signals associated with . . . audio headsets” consisted of “downloadable computer software . . . .”

15 D. PDP’s Failed District Court Challenge

44. On March 21, 2019, three days after learning of Poly’s Propeller Logo and after

Poly had filed several trademark applications for the Propeller Logo or the Propeller + Poly Logo

(Ser. Nos. 88/320,811, 88/343,345, 88/343,346, 88/343,347, and 88/343,349) for a variety of communications equipment and related services, PDP filed its own applications, Ser. Nos.

88/351,159 and 88/351,167, and on the same day initiated the aforementioned District Court

Proceeding against Poly in the Southern District of California, Case No. 3:19-cv-00536-GPC-

LL. In the District Court Proceeding, PDP claimed to have “developed” its new logo exactly one year before filing its lawsuit. Yet, a year after this purported development, PDP did not have a standard image of its logo, as evidenced by the discrepancy between images used in the initial complaint and first amended complaint; had not come up with a consistent narrative about what its logo represented, as evidenced by the discrepancy between the mark description which PDP submitted with its initial Ser. No. 88/351,159 application and its subsequent amendment thereof16; and had not bothered to file a trademark application until the day it sued Poly.

45. Among other things, PDP asserted in the District Court Proceeding that it

“believes that it will be damaged by the registration of [the Propeller Logo] that is the subject of

U.S. Application Serial No. 88/320,811, and hereby seeks denial of federal registration of the

mark on the grounds that it is likely to cause confusion, mistake or deception as to the affiliation,

connection, or association of [PDP] with [Poly], or with regard to the origin, sponsorship or

approval by [PDP] of [Poly’s] goods, services or commercial activities.”

16 When it filed Ser. No. 88/351,159 on March 21, 2019, PDP initially described its design mark as “The mark consists of a stylized P consisting of a circle with three flanges” (emphasis added). Seven days later, on March 28, 2019, PDP submitted an amendment mark description which described its design mark as “The mark consists of the stylized letters PDP consisting of a circle with three flanges” (emphasis added).

16 46. On July 15, 2019, the district court dismissed PDP’s first amended complaint.

Among other things, the district court (i) “reject[ed] [PDP]’s suggestion that a pleading which merely alleges the shared use (or intended use) of a similar mark with respect to the same general type of good, i.e., headsets, suffices to allege competitiveness”; and (ii) determined that controlling precedent finding no competitiveness between boats “for the ‘highly skilled enthusiast’” and boats “designed for . . . family fun” “refutes, rather than supports, [PDP’s] claim that a cursory reference to [Poly’s] ‘headsets’ is sufficient to plausibly state a relationship of competition. If a boat is not a boat, then a headset is not a headset.”17

47. Although the district court granted PDP leave to amend its complaint with respect

to some claims, it dismissed with prejudice PDP’s claim for “denial of federal registration” of

Plantronics’s pending application for registration of the Propeller Logo.

48. The Court explained: “[PDP] has indicated that it does not oppose dismissal of its

request to enjoin registration of [Poly’s] pending trademark application. (ECF No. 21, at 23).

For that reason, the Court will grant that part of [Poly’s] motion to dismiss which pertains to

[PDP’s] fourth cause of action with prejudice.”18

49. On July 19, 2019, PDP filed a second amended complaint in the District Court

Proceeding, in which PDP alleged use of the PDP Gaming Logo solely in connection with a

single product—PDP’s LVL 50 gaming headsets. The same gaming headset that is the subject of

the specimen of use that PDP submitted in support of its use-based application for the PDP

Gaming Logo, Ser. No. 88/351,159.

17 Performance Designed Products LLC v. Plantronics, Inc., Case No. 3:19-cv-00536-GPC-LL – Dkt. 39 at 12 (S.D. Cal. 2019). 18 Id. at 6 n.3.

17 50. Poly moved to dismiss the second amended complaint on the basis that its

allegations, taken as a whole, affirmatively disproved PDP’s claims of likelihood of confusion between PDP’s gaming products and Poly’s business/enterprise and consumer products. PDP initially opposed the motion, but it did not wait for the court’s ruling. On the day the parties completed briefing the motion to dismiss—the day Poly’s reply brief was due—PDP voluntarily dismissed its case.

51. Based on PDP’s challenges against Poly in the District Court Proceeding and

PDP’s public threats to oppose the Propeller Logo Applications based on PDP’s purported rights in the PDP Gaming Logo, as well as Poly’s earlier rights for non-gaming headsets and other non-

gaming communication equipment established through the pending Propeller Logo Applications and common law rights in the Propeller Logo and Propeller + Poly Logo described above, Poly

has standing to bring this proceeding.

First Ground for Opposition Void Ab Initio for Non-Use

52. Poly repeats and incorporates by reference the foregoing paragraphs.

53. PDP filed Application Ser. No. 88/351,159 on March 21, 2019 on the basis of use

under Section 1(a) of the Lanham Act, 15 U.S.C. § 1051(a).

54. At the time PDP filed Application Ser. No. 88/351,159, PDP represented to the

USPTO, under oath via a signed declaration signed by PDP’s Executive Vice President and

General Counsel, John M. Alpay, that all statements made therein were true and that the PDP

Gaming Logo was in use in commerce on each of the goods identified in Ser. No. 88/351,159,

including “audio headsets for use with computers” in International Class 9.

55. In its June 6, 2019 response to the May 1, 2019 Office Action requiring PDP to move all gaming-specific portions of its Class 9 goods from Class 9 to Class 28, PDP moved

18 “audio headsets for use with gaming consoles” and “audio headsets for use with video game systems” from Class 9 to Class 28, but did not delete “audio headsets for use with computers” from Class 9. Furthermore, PDP represented to the USPTO that “a substitute specimen for Class

9 [for the remaining goods therein] is not required because the headset depicted in the specimen submitted in Class 9 is compatible for use with computers.”

56. The foregoing representations were false and/or misleading at the time such representations were made and, on information and belief and the facts pleaded herein, were known by PDP to be false and/or misleading at such time.

57. On information and belief and the facts pleaded herein, at the time of filing

Application Ser. No. 88/351,159, and separately at the time that PDP amended its application on

June 6, 2019 to move “audio headsets for use with gaming consoles” and “audio headsets for use with video game systems” from Class 9 to Class 28, PDP was not using, and knew it was not using, the PDP Gaming Logo in commerce on non-gaming headsets—namely, “audio headsets for use with computers” in International Class 9. PDP further knew that it was not offering any headsets designed for use other than for gaming purposes and, as described in greater detail with respect to Opposer’s second ground for opposition, had no bona fide intent to offer any headsets designed for use other than for gaming purposes. Indeed, PDP has often stated that its products are not designed or marketed for use other than with specific gaming consoles.19 Notably, the

19 See, e.g., Is My Headset Compatible with PC?, PDP.com, https://support.pdp.com/hc/en- us/articles/115015543588-Is-my-Headset-compatible-with-PC- (“[Y]ou can inform customers that they could try directly plugging in the [gaming headset] into the 3.5 mm AUX port on the computer or Laptop,” but “if this doesn’t work, there’s not much else we can recommend as this is not the headset’s purpose or what it was designed or marketed for.”); Why Doesn’t My Controller Work on a PC?, PDP.com, https://support.pdp.com/hc/en-us/articles/204608098- Why-doesn-t-my-controller-work-on-a-PC- (“This controller was designed and marketed for use with the PS3 console. We do not guarantee or support use with a PC.”); Does This Headset

19 LVL 50 headsets sold through PDP’s online store at its website,

https://www.pdp.com/shop/headset (last visited September 16, 2019), make clear that such headsets are specifically designed and sold for PlayStation 4 or Xbox One.

58. On information and belief and the facts pleaded herein, at the time that PDP amended its application on June 6, 2019 to move “audio headsets for use with gaming consoles”

and “audio headsets for use with video game systems” from Class 9 to Class 28, PDP was not

using, and knew that it was not using, the PDP Gaming Logo in commerce on non-gaming headsets—namely, “audio headsets for use with computers” in International Class 9—and knew that the specimen of use submitted with Application Ser. No. 88/351,159 did not support use of the PDP Gaming Logo on non-gaming headsets—namely, “audio headsets for use with computers” in International Class 9.

59. The specimen of use submitted with Application Ser. No. 88/351,159 shows use

of the PDP Gaming Logo solely in connection with the LVL 50 gaming headset, which the

specimen describes as intended specifically for use with the Xbox One video game console.

Work on a PC/Mac?, PDP.com, https://support.pdp.com/hc/en-us/articles/115003717328-Does- this-headset-work-on-a-PC-Mac- (“Unfortunately, the AG9+ is not designed nor supported for use with a PC or Mac.”) (each last visited September 16, 2019).

20 Accordingly, that specimen of use does not support use of the PDP Gaming Logo on “audio

headsets for use with computers” in International Class 9.

60. Indeed, as PDP acknowledged and conceded when it agreed to move “audio

headsets for use with gaming consoles” and “audio headsets for use with video game systems”

from Class 9 to Class 28, gaming headsets are in a category of goods distinct from non-gaming

headsets, such as business/enterprise headsets or “audio headsets for use with computers,” and

are classified separately from non-gaming headsets.

61. On information and belief, PDP was aware that gaming headsets are

technologically distinct from, and designed for different purposes than, enterprise or other non-

gaming headsets, the latter of which call for different capabilities and technologies, such as

robust interoperability, DECT technology, and rigorous third-party testing and certification.

62. In addition, on its website located at https://www.pdp.com/en/, PDP makes clear

that its headsets have been designed for, and are manufactured, marketed and sold specifically

for use with, gaming consoles.20 For example, on a support page for one its gaming headsets

entitled “Is my Headset compatible with PC?,” PDP explained, “[Y]ou can inform customers that

they could try directly plugging in the [gaming headset] into the 3.5 mm AUX port on the

20 See, e.g., Why Doesn’t My Controller Work on a PC?, PDP.com, https://support.pdp.com/hc/en-us/articles/204608098-Why-doesn-t-my-controller-work-on-a-PC- (“This controller was designed and marketed for use with the PS3 console. We do not guarantee or support use with a PC.”); Does This Headset Work on a PC/Mac?, PDP.com, https://support.pdp.com/hc/en-us/articles/115003717328-Does-this-headset-work-on-a-PC-Mac- (“Unfortunately, the AG9+ is not designed nor supported for use with a PC or Mac.”) (each last visited September 16, 2019).

21 computer or Laptop,” but “if this doesn’t work, there’s not much else we can recommend as this

is not the headset’s purpose or what it was designed or marketed for.”21

63. Moreover, the LVL 50 headsets which PDP sells through its online store,

https://www.pdp.com/shop/headset, make clear that such headsets are specifically designed and

sold for PlayStation 4 or Xbox One.

64. Thus, despite PDP’s false and/or misleading representations at the time it filed

Application Ser. No. 88/351,159 on March 21, 2019 and separately at the time it amended

Application Ser. No, 88/351,159 on June 6, 2019, the PDP Gaming Logo was not in, had never

been in, and was not intended to be put into, use on all of the goods listed in Application Ser. No,

88/351,159 and, in particular, was not, and has never been, in use in commerce on “audio headsets for use with computers” in International Class 9.

65. For these reasons, the Board should declare Application Ser. No. 88/351,159

invalid, void ab initio, and incapable of resulting in a registration (or, alternatively, denied

registration with respect to “audio headsets for use with computers” in Class 9 at least).

66. Absent such a determination, Opposers will be damaged because their continued

and legal use of the Propeller Logo and Propeller + Poly Logo based on its earlier rights for non-

gaming headsets and other non-gaming communication equipment established through the

pending Propeller Logo Applications and common law rights will be threatened by registration

of Application Ser. No. 88/351,159, including by PDP’s ongoing attempts and threats to exclude

Opposers from their lawful use and registration of the Propeller Logo.

21 Is My Headset Compatible with PC?, PDP.com, https://support.pdp.com/hc/en- us/articles/115015543588-Is-my-Headset-compatible-with-PC- (last visited September 16, 2019).

22 Second Ground for Opposition Abandonment Based on Non-Use

67. Opposer repeats and incorporates by reference the foregoing paragraphs.

68. On information and belief and the facts pleaded herein, PDP is not currently

using, and has never used, the PDP Gaming Logo in commerce on “audio headsets for use with computers” in Class 9.

69. On information and belief and the facts pleaded herein, PDP has had no intent to resume, or begin, use of the PDP Gaming Logo in commerce on “audio headsets for use with computers” in Class 9.

70. PDP’s non-use does not constitute excusable non-use.

71. Ser. No. 88/351,159, therefore, should be denied registration (or, alternatively, denied registration with respect to “audio headsets for use with computers” in Class 9 at least) because PDP has abandoned its rights in the PDP Gaming Logo as alleged in that application (or, alternatively, with respect to such goods in Class 9).

72. Absent such a determination, Opposers will be damaged because their continued and legal use of the Propeller Logo and Propeller + Poly Logo based on its earlier rights for non- gaming headsets and other non-gaming communication equipment established through the pending Propeller Logo Applications and common law rights will be threatened by registration of Application Ser. No. 88/351,159, including by PDP’s ongoing attempts and threats to exclude

Opposers from their lawful use and registration of the Propeller Logo.

Third Ground for Opposition Lack of Bona Fide Intent to Use in Commerce

73. Opposer repeats and incorporates by reference the foregoing paragraphs.

23 74. PDP filed Application Ser. No. 88/351,167 on March 21, 2019 on the basis of an intent-to-use under Section 1(b) of the Lanham Act, 15 U.S.C. § 1051(b).

75. At the time PDP filed Application Ser. No. 88/351,167 on March 21, 2019, PDP represented to the USPTO, under oath via a signed declaration signed by PDP’s Executive Vice

President and General Counsel, John M. Alpay, that all statements made therein were true, and that PDP “ha[d] a bona fide intention to use the mark in commerce on or in connection with the goods/services in the application,” including on “headphones,” “audio headset stands, namely, headset stands for audio headsets for use with computers,” “audio network systems comprising audio speakers, audio amplifiers, audio receivers, [and] audio mixers,” and “[downloadable] computer software applications that allow for customization and modification of input controls, lighting, audio and communication signals associated with . . . audio headsets” in International

Class 9.

76. On information belief and the facts pleaded herein, such representations were false and/or misleading at the time PDP filed Application Ser. No. 88/351,167 on March 21,

2019 and were known by PDP to be false and/or misleading at such time, to the extent such goods are not limited to gaming.

77. Despite PDP’s history of exclusively designing and marketing gaming peripherals

(including gaming headsets) for use in connection with video games, Application Ser. No.

88/351,167 sought registration of the PDP Gaming Logo in connection with not only gaming headsets, but also “headphones,” “audio headset stands, namely, headset stands for audio headsets for use with computers,” “audio network systems comprising audio speakers, audio amplifiers, audio receivers, [and] audio mixers,” and “[downloadable] computer software

24 applications that allow for customization and modification of input controls, lighting, audio and

communication signals associated with . . . audio headsets” in International Class 9.

78. On information and belief and the facts pleaded herein, at the time of filing

Application Ser. No. 88/351,167, PDP intended, at most, to use the PDP Gaming Logo in

commerce on or in connection with “gaming headsets.”

79. On information and belief and the facts pleaded herein, at the time of filing

Application Ser. No. 88/351,167, PDP did not have a bona fide intent to use the PDP Gaming

Logo in commerce on any non-gaming peripherals.

80. Accordingly, on information and belief and the facts pleaded herein, at the time of

filing Application Ser. No. 88/351,167, PDP did not have a bona fide intent to use the PDP

Gaming Logo with respect to any “headphones,” or “audio headset stands, namely, headset

stands for audio headsets for use with computers,” or “audio network systems comprising audio

speakers, audio amplifiers, audio receivers, [and] audio mixers,” or “downloadable computer software applications that allow for customization and modification of input controls, lighting, audio and communication signals associated with . . . audio headsets” in International Class 9, to

the extent such goods are not limited to gaming.

81. Instead, on information and belief and the facts pleaded herein, PDP intentionally

rushed to file an overly broad application in an attempt to reserve a right to register the PDP

Gaming Logo in connection with all categories of headsets and headphones, and to preempt or

circumvent Poly’s establishment of rights through its lawful application to register the Propeller

Logo through its earlier-filed Application Ser. Nos. 88/320,811 and 88/343,345.

82. PDP filed Application Ser. No. 88/351,167 on March 21, 2019, a full year after

PDP claimed to have “developed” its logo, just three days after PDP purportedly learned of

25 Poly’s use and intended use of the Propeller + Poly Logo in connection with its non-gaming business/enterprise products and non-gaming consumer products, and the same day that PDP

filed a bare-bones complaint against Poly in the District Court Proceeding that was later

dismissed for failure to state a claim.

83. As reflected in PDP’s separate listing in Application Ser. No. 88/351,167 of

“headsets adapted for playing video games” and “audio headset stands, namely, headset stands

for audio headsets adapted for use in playing video games” in International Class 28, PDP was

aware that gaming headsets are a distinct category of good from “headphones” and “audio

headset stands, namely, headset stands for audio headsets for use with computers.” Similarly,

PDP was aware that gaming headsets are distinct category of good from business/enterprise

headsets.

84. Further, over the course of the District Court Proceeding, PDP acknowledged that,

even as recently as July 2019, it had not used the PDP Gaming Logo on products other than the

LVL 50 gaming headset. PDP also failed to present documentation reflecting a bona fide intent,

as of March 21, 2019, to use the PDP Gaming Logo other than in connection with gaming

peripherals.

85. Accordingly, on information and belief, PDP’s inclusion of “headphones,” “audio

headset stands, namely, headset stands for audio headsets for use with computers,” “audio

network systems comprising audio speakers, audio amplifiers, audio receivers, [and] audio

mixers,” and “downloadable computer software applications that allow for customization and

modification of input controls, lighting, audio and communication signals associated with . . .

audio headsets” in International Class 9 in Application Ser. No. 88/351,167, to the extent such

26 goods are not limited to gaming, was not based on a bona fide, good faith intent to use the PDP

Gaming Logo in connection with those goods as of March 21, 2019.

86. Therefore, at the time that PDP filed Application Ser. No. 88/351,167, it lacked a bona fide, good faith intent to use the PDP Gaming Logo on all of the goods described in the application, including in particular “headphones,” “audio headset stands, namely, headset stands for audio headsets for use with computers,” “audio network systems comprising audio speakers, audio amplifiers, audio receivers, [and] audio mixers,” and “downloadable computer software applications that allow for customization and modification of input controls, lighting, audio and communication signals associated with . . . audio headsets” in International Class 9.

87. Accordingly, at the time that Application Ser. No. 88/351,167 was filed, it was invalid, void ab initio, and incapable of resulting in a registration.

88. For these reasons, the Board should declare Application Ser. No. 88/351,167 invalid, void ab initio, and incapable of resulting in a registration (or, alternatively, denied registration with respect to “headphones,” “audio headset stands, namely, headset stands for audio headsets for use with computers,” “audio network systems comprising audio speakers, audio amplifiers, audio receivers, [and] audio mixers,” and “downloadable computer software applications that allow for customization and modification of input controls, lighting, audio and communication signals associated with . . . audio headsets” in Class 9 at least).

89. Absent such a determination, Opposers will be damaged because their continued and legal use of the Propeller Logo and Propeller + Poly Logo based on its earlier rights for non- gaming headsets and other non-gaming communication equipment established through the pending Propeller Logo Applications and common law rights will be threatened by registration

27 of Application Ser. No. 88/351,167, including by PDP’s ongoing attempts and threats to exclude

Opposers from their lawful use and registration of the Propeller Logo.

Fourth Ground for Opposition Fraud on the U.S. Patent and Trademark Office

90. Opposer repeats and incorporates by reference the foregoing paragraphs.

91. As described above, PDP filed Ser. Nos. 88/351,159 and 88/351,167 knowing that it had not used or had no bona fide intent to use the PDP Gaming Logo on all the identified

goods therein in commerce.

92. Accordingly, PDP’s claim in Ser. Nos. 88/351,159 of its use of the PDP Gaming

Logo on non-gaming “audio headsets for use with computers” in International Class 9 and claim

in Ser. No. 88/351,167 of its bona fide intent to use the PDP Gaming Logo in commerce on non-

gaming “headphones,” “audio headset stands, namely, headset stands for audio headsets for use

with computers,” “audio network systems comprising audio speakers, audio amplifiers, audio

receivers, [and] audio mixers,” or “downloadable computer software applications that allow for

customization and modification of input controls, lighting, audio and communication signals

associated with . . . audio headsets” in International Class 9 were knowingly false and

misleading.

93. Further, PDP’s representation to the USPTO that the specimen submitted

88/351,159 supported use of the PDP Gaming Logo on non-gaming “audio headsets for use with

computers” was knowingly false and misleading.

94. Rather than include accurate identifications, PDP intentionally rushed to file

overly broad applications in an attempt to reserve a right to register the PDP Gaming Logo in

connection with all categories of headsets and headphones, including categories of headsets and

headphones (and other non-gaming products) that PDP had not offered or sold, and had no

28 intention of ever offering or selling, under the PDP Gaming Logo, and to preempt or circumvent

Poly’s establishment of rights through its lawful application to register the Propeller Logo for its non-gaming, business/enterprise headsets and other communication equipment through its earlier-filed Application Ser. Nos. 88/320,811 and 88/343,345.

95. PDP intentionally described its identifications in overly broad terms in order to deceive the USPTO into accepting and approving the applications for publication and registration in connection with all categories of headsets and headphones, including categories of headsets and headphones that PDP had not offered or sold and had no intention of ever offering or selling.

96. At the time of filing its filed Ser. Nos. 88/351,159 and 88/351,167, PDP’s business was to design and market products for use specifically in connection with video games, and it made clear on its own website and on its own social media accounts that its gaming peripherals were designed and marketed specifically for use with gaming consoles.

97. Further, PDP knew at the time of filing Ser. Nos. 88/351,159 and 88/351,167 that gaming headsets and other gaming apparatuses, and non-gaming headsets and other non-gaming apparatuses, were distinct categories of goods in distinct classifications (Class 9 for non-gaming headsets and other non-gaming apparatuses v. Class 28 for gaming headsets and other gaming apparatuses), as reflected in PDP’s own listing of gaming headsets separately in its applications under International Class 28.

98. Nevertheless, on March 21, 2019, three days after learning of Poly’s use and intended use of the Propeller Logo in connection with business/enterprise products, and the same day that it filed a bare-bones complaint against Poly in the District Court Proceeding that was later dismissed for failure to state a claim, PDP filed Ser. Nos. 88/351,159 and 88/351,167 with

29 overly broad identifications, even claiming use of its PDP Gaming Logo in commerce on a non-

gaming headset when filing Ser. No. 88/351,159, knowing that such claim of use for such goods was false and/or misleading.

99. Based on the foregoing, as well as on information and belief, PDP’s claim of use

of its PDP Gaming Logo on non-gaming headsets and PDP’s inclusion of these overly broad

categories of goods in its applications filed immediately after learning of Poly’s Propeller Logo

were not the results of an innocent mistake, but instead were intended to secure rights outside the

gaming headset space and to materially expand the presumptive scope of goods covered by Ser.

Nos. 88/351,159 and 88/351,167, as well as to use the resulting registrations to preempt or circumvent Poly’s establishment of rights through its lawful application to register the Propeller

Logo through its earlier-filed Application Ser. Nos. 88/320,811 and 88/343,345 for non-gaming headsets and other business/enterprise communication equipment (and related services).

100. PDP’s false statements were therefore willfully—or at least recklessly—made with the intent to deceive the USPTO regarding PDP’s rights in its PDP Gaming Logo and the scope of PDP’s goods, and to induce the USPTO to grant registration of Ser. Nos. 88/351,159 and 88/351,167 with materially overbroad identifications and, thereafter, to supplant Poly’s rights lawfully established through its earlier filed Application Ser. Nos. 88/351,159 and

88/351,167.

101. The USPTO, relying on the truth of PDP’s knowingly false statements, did, in fact, accept PDP’s representations regarding PDP’s claim in Ser. Nos. 88/351,159 of use of the

PDP Gaming Logo on non-gaming “audio headsets for use with computers” in International

Class 9 and PDP’s claim in Ser. No. 88/351,167 of bona fide intent to use the PDP Gaming Logo in commerce on non-gaming “headphones,” “audio headset stands, namely, headset stands for

30 audio headsets for use with computers,” “audio network systems comprising audio speakers,

audio amplifiers, audio receivers, [and] audio mixers,” or “downloadable computer software

applications that allow for customization and modification of input controls, lighting, audio and

communication signals associated with . . . audio headsets” in International Class 9, scheduling

Ser. Nos. 88/351,159 and 88/351,167 for publication with materially false use claims and/or materially overbroad identifications.

102. Registration of Application Ser. Nos. 88/351,159 and 88/351,167 thus should be denied because the registrations would be premised on fraud.

103. Absent such a determination, Opposers will be damaged because their continued and legal use of the Propeller Logo and Propeller + Poly Logo based on its earlier rights for non-

gaming headsets and other non-gaming communication equipment established through the

pending Propeller Logo Applications and common law rights will be threatened by registration

of Application Ser. Nos. 88/351,159 and 88/351,167, including by PDP’s ongoing attempts and

threats to exclude Opposers from their lawful use and registration of the Propeller Logo.

Fifth Ground for Opposition Priority and Likelihood of Confusion for Business/Enterprise Headsets

104. Opposer repeats and incorporates by reference the foregoing paragraphs.

105. If the Board does not, based on Counts I-IV above, deny registration of

Application Ser. Nos. 88/351,159 and 88/351,167 altogether, or limit those applications to exclude any goods and services not specific to the video game market, PDP’s registration of the

PDP Gaming Logo in connection with “audio headsets for use with computers,” “headphones,”

“audio headset stands, namely, headset stands for audio headsets for use with computers” or

“audio network systems comprising audio speakers, audio amplifiers, audio receivers, [and] audio mixers,” or “downloadable computer software applications that allow for customization

31 and modification of input controls, lighting, audio and communication signals associated

with . . . audio headsets” in International Class 9 would be likely to cause confusion based on

Poly’s earlier rights—as established at least as early as Poly’s constructive use dates based on the

Propeller Logo Applications—in its Propeller Logo used in connection with non-gaming

headsets.

106. Despite the actual limitations on PDP’s actual use of, and intent to use, the PDP

Gaming Logo, Ser. Nos. 88/351,159 and 88/351,167 do not explicitly limit PDP’s rights to goods