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Notice of Opposition Opposer Information Applicant Information Goods/Services Affected by Opposition Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1099150 Filing date: 12/02/2020 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 Redbox Automated Retail, LLC Granted to Date 12/02/2020 of previous ex- tension Address ONE TOWER LANE, SUITE 900 OAKBROOK TERRACE, IL 60181 UNITED STATES Attorney informa- JAMES P. MURAFF tion MCDONALD HOPKINS LLC 300 NORTH LASALLE STREET SUITE 1400 CHICAGO, IL 60654 UNITED STATES Primary Email: [email protected] Secondary Email(s): [email protected] 3126421480 Docket Number 49021-00085 Applicant Information Application No. 88910121 Publication date 08/04/2020 Opposition Filing 12/02/2020 Opposition Peri- 12/02/2020 Date od Ends Applicant Box, Inc. 900 JEFFERSON AVE. REDWOOD CITY, CA 94063 UNITED STATES Goods/Services Affected by Opposition Class 009. First Use: 2005/01/01 First Use In Commerce: 2005/01/01 All goods and services in the class are opposed, namely: Downloadable computer software for en- abling users to convert native document file formats to web-based file format for embedding conver- ted documents in web applications and to enable users to access,upload, download, create, view, edit, print, store, exchange, publish, distribute, transfer, secure, share, transmit, control access to and manage those documents collaboratively on line and offline,for tracking changes and modifications to software and for managing software development projects; downloadable computer software for use as a tool for automating, personalizing, designing and updating web sites, website templates, web site graphics, text and animation for a global computer network, internal and external computer net- works, and local and wide area computer networks; downloadable computer software and computer software applications for use on electronic devices and over global, mobile, and local computer net- works to access, upload, download, create, view, edit, print, store, exchange, publish, distribute, transfer, secure, share, transmit, control access to and manage digital media and information, data, documents, files, text, graphics, images, photographs, and electronic messages; Downloadable com- puter softwareto provide content, mobile application,mobile device, desktop computer and desktop application management; Downloadable computer software for enabling users to upload and store files to computer storages in the cloud and enable users to access, upload, download, create, view, edit, print, store, exchange, publish, distribute, transfer, secure, share, transmit, control access to and manage those documents collaboratively on line and offline Class 042. First Use: 2005/01/01 First Use In Commerce: 2005/01/01 All goods and services in the class are opposed, namely: Providing on-line non-downloadable soft- ware for enabling users to convert native document file formats to web-based file format for embed- ding converted documents in web applications and to enable users to access, upload, download, cre- ate, view, edit, print, store, exchange, publish, distribute, transfer, secure, share, transmit, control ac- cess to and managethose documents collaboratively on lineand offline, for tracking changes and modifications to software and for managing software development projects; Providing on-line non- downloadable software forautomating, personalizing, designing and updating web sites, website tem- plates,web site graphics, text and animation for a global computer network, internal and external computer networks, and localand wide area computer networks; Providing on-line non-downloadable software for use on electronic devices and over global, mobile, and local computer networksto ac- cess, upload, download, create, view, edit, print, store, exchange, publish, distribute, transfer, secure, share, transmit, control access to and manage digital media and information, data, documents, files, text, graphics, images, photographs, and electronic messages; Providing on-line non-downloadable computer software to provide content, mobile application, mobile device, desktop computerand desktop application management; Providing on-line non-downloadable softwarefor enabling users to upload and store files to computer storages in the cloud and enable users to access, upload, down- load, create, view, edit, print, store, exchange, publish, distribute, transfer,secure, share, transmit, control accessto and manage those documents collaboratively on line and offline Grounds for Opposition Priority and likelihood of confusion Trademark Act Section 2(d) Marks Cited by Opposer as Basis for Opposition U.S. Application 88472715 Application Date 06/13/2019 No. Registration Date NONE Foreign Priority NONE Date Word Mark REDBOX EXCLUSIVE Design Mark Description of NONE Mark Goods/Services Class 007. First use: First Use: 0 First Use In Commerce: 0 Vending machines Class 009. First use: First Use: 0 First Use In Commerce: 0 Downloadable computer application software for mobile phones, portable media players, and handheld computers, namely, software for viewing and renting en- tertainment content in the nature of movies and television programs and for re- serving entertainment content in the nature of video games, movies and televi- sion programs at a vending machine Class 035. First use: First Use: 0 First Use In Commerce: 0 Providing vending machines featuring video games, movies, and television pro- grams; Providing automated retail vending machine kiosks featuring movies, television programs, and video games; Providing vending machine services rendered through automated kiosks featuring movies, television programs, and video games; Providing automated retail vending machine kiosk services featur- ing DVDs, movies, prerecorded electronic media featuring entertainment con- tent, and video games for purchase; online retail store services featuring DVDs, movies, prerecorded electronic media featuring entertainment content, and video games for purchase; computerized online retail store services featuring pre-recorded videos; distributorship services in the field of entertainment content in the nature of DVDs, movies,video games, and digital content and pre-re- corded media featuring entertainmentcontent Class 038. First use: First Use: 0 First Use In Commerce: 0 Video-on-demand transmission services, video broadcasting, and transmission of voice, data, images, data signals, messages and information by electronic communications networks Class 041. First use: First Use: 0 First Use In Commerce: 0 Rental of video recordings by means of communications networks; providing in- formation in the field of entertainment by means of communications networks; rentalof DVDs, video discs, video games, movies and prerecorded electronic media featuring entertainment content; Production,presentation, and rental of films, motion pictures, television and radio programs, sound and video record- ings, via all types of media, including, inter alia, television, cable and satellite television, Internet, and electronic display devices; production, presentation, and rental of images, video games, excerpts, and video and sound recordings via all typesof media, including, inter alia, television, cable and satellite television, In- ternet, and electronic display devices; production of entertainment television and audio-visual shows and interactive television and audio-visual programs for dis- tribution via television, cable, satellite, audio and video media, the Internet, elec- tronic display devices, laser discs, computer discs, and electronic media; pro- duction of audio-visual entertainment content, television and audio-visual news shows, and television and audio-visual shows featuring information for perform- ance and presentation in the field ofmotion pictures, television programs, docu- mentaries, television series, learning programs, comedy shows, sports shows, news programs, political shows, special events, talk shows, weather shows, and entertainment content via and to all types of media, including, inter alia, televi- sion, cable and satellite television, Internet, electronic display devices, andcom- puter and communication networks; production and recording of films, motion pictures, and shows; provision of information relating to lists of television, cable, and broadcasting programs; gaming services in the nature of providing online video games via the Internet and computer networks; none of the aforesaid be- ing for gambling purposes Class 042. First use: First Use: 0 First Use In Commerce: 0 Computerized online search service in the field of entertainment, namely, provid- ing a search engine for obtaining entertainment information on a global com- puter network U.S. Registration 5857987 Application Date 07/28/2017 No. Registration Date 09/10/2019 Foreign Priority NONE Date Word Mark REDBOX. Design Mark Description of The mark consists of the word "redbox" in red with a purple period. Mark Goods/Services Class 007. First use: First Use: 2018/02/19 First Use In Commerce: 2018/02/19 Vending machines Class 009. First use: First Use: 2018/08/17 First Use In Commerce: 2018/08/17 Computer application software for mobile phones, portable media players, and handheld computers, namely, software for viewing and renting entertainment contentin the nature of movies and television programs and for reserving enter-
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