Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1053934 Filing date: 05/07/2020 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 Gang Cao Granted to Date 05/10/2020 of previous ex- tension Address P.O. BOX 93053 WEST VANCOUVER, BC V7W 3G4 CANADA Attorney informa- MARC C. LEVY tion SEED IP LAW GROUP LLP 701 FIFTH AVENUE, SUITE 5400 SEATTLE, WA 98104 UNITED STATES [email protected], [email protected], [email protected] 206-622-4900 Applicant Information Application No 87579714 Publication date 11/12/2019 Opposition Filing 05/07/2020 Opposition Peri- 05/10/2020 Date od Ends International Re- NONE International Re- NONE gistration No. gistration Date Applicant Apple Inc. One Apple Park Way Cupertino, CA 95014 UNITED STATES Goods/Services Affected by Opposition Class 009. First Use: 2017/04/20 First Use In Commerce: 2017/04/20 All goods and services in the class are opposed, namely: Computer software used in developing oth- er software applications; application development software; website developmentsoftware; multime- dia development software Class 042. First Use: 2017/04/20 First Use In Commerce: 2017/04/20 All goods and services in the class are opposed, namely: Computer programming; design and devel- opment of computer software; computer software consulting services; support services in the nature of consultation services for developing software applications;providing computer software informa- tiononline; application service provider featuring application programming interface (api) software for website, software and multimedia development Grounds for Opposition The mark is merely descriptive Trademark Act Section 2(e)(1) The mark is generic Trademark Act Sections 1, 2 and 45 Related Proceed- 91239006 ings Attachments Notice of Opposition LIVEPHOTOSKIT.pdf(363888 bytes ) LIVEPHOTOSKIT_Exhibits_01-12.PDF(4906276 bytes ) LIVEPHOTOSKIT_Exhibits_13-26.PDF(5985340 bytes ) Signature /Marc C. Levy/ Name MARC C. LEVY Date 05/07/2020 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD GANG CAO, ) Opposition No. ___________ ) Opposer, ) Serial No. 87579714 ) v. ) ) APPLE INC., ) Docket No. 191201.802 ) Applicant. ) ) NOTICE OF OPPOSITION Mr. Gang Cao (“Opposer”) believes he would be damaged by registration of the mark LIVEPHOTOSKIT (Design) in International Classes 009 and 042, as shown in U.S. Trademark Application Serial No. 87579714 filed by Apple Inc. (“Applicant”), and published for opposition on November 12, 2019. Opposer requested, and was granted, a first extension of time to file his Opposition through March 11, 2020. Opposer then requested, and was granted, a final extension of time to file his Opposition through May 10, 2020. Opposer timely opposes the Application. The grounds for this Opposition are as follows: 1. Opposer Mr. Gang Cao owns the domain names LIVEPHOTO.COM and LIVEPHOTO.CA, and has owned these domains since purchasing them in 2011. 2. Opposer is a computer engineer and inventor, and he has developed interactive software designed to display and bring life to still photo images. Opposer plans to use the LIVEPHOTO.COM and LIVEPHOTO.CA websites, and the terms “live photo” and/or “livephoto” in connection with the websites, to identify and describe the key feature of his software, namely, adding animation to still photos. 1 3. On Aug. 22, 2017, Applicant applied to register the LIVEPHOTOSKIT Design mark in International Class 009 for “Computer software used in developing other software applications; application development software; website development software; multimedia development software,” and International Class 042 for “Computer programming; design and development of computer software; computer software consulting services; support services in the nature of consultation services for developing software applications; providing computer software information online; application service provider featuring application programming interface (api) software for website, software and multimedia development,” on a use-in- commerce basis under Section 1(a) of the Lanham Act (15 U.S.C. § 1051(a)), asserting a first use date of April 20, 2017. 4. Generic terms or merely descriptive terms do not function as trademarks and are not registrable. 15 U.S.C. § 1052(e)(1). The Applied-for Mark is not registrable as a trademark because it is generic and, alternatively, because it is merely descriptive of the goods claimed in the Application. 15 U.S.C. § 1052(e)(1). 5. A mark is generic “if its primary significance to the relevant public is the class or category of goods or services on or in connection with which it is used.” TMEP § 1209.01(c)(i). When a mark is a compound word, the mark is generic if each of its constituent terms is generic and those terms retain their generic significance when joined to form a compound that has “a meaning identical to the meaning common usage would ascribe to those words as a compound.” In re Gould Paper Corp., 834 F.2d 1017, 1018, 5 USPQ2d 1110, 1111–1112 (Fed. Cir. 1987) (SCREENWIPE held generic as applied to premoistened antistatic cloths for cleaning computer and television screens); In re Wm. B. Coleman Co., Inc., 93 USPQ2d 2019 (TTAB 2010) (Board held that ELECTRIC CANDLE COMPANY is the combination of two generic terms joined to create a compound). 6. In this case, “live photos” and “kit” are both generic terms and the joining of those terms lends no additional meaning to the terms. “Live photos” and “kit” are widely used generically to identify a key aspect or part of the genus of goods or services identified in the 2 opposed Application, and consumers will primarily understand the compound term “live photos kit” to be the generic name or identifier of a key aspect or part of the genus of goods or services identified in the opposed Application. 7. As demonstrated by Exhibits 1-8, 11-15, and 19-22, “live photo(s)” is widely used generically in product reviews and product overviews to identify a camera mode feature that creates photo images incorporating motion or animation. 8. Exhibit 1 is a March 29, 2015 review of the Philips Xenium i908, which highlights the device’s “Live Photo” camera feature. 9. Exhibit 2 is a January 2016 review of the BlackBerry Priv, announced in October 2015 and released in November 2015, which highlights the device’s “live photo mode” camera feature. 10. Exhibit 3 is a May, 2015 overview of Lenovo P70 Specs, which highlights the device’s “Live Photo mode” camera feature. 11. Exhibit 4 is an August 6, 2014 review of HTC Desire 616 dual sim, which highlights the device’s “Live photo” camera feature. 12. Exhibit 5 is a February 22, 2015 review of HTC Desire 526G+, which highlights the device’s “live photo” camera feature. 13. Exhibit 6 is a February 24, 2015 review of the Honor Holly camera app, which highlights the app’s “live photo mode” feature. 14. Exhibit 7 is a June 16, 2014 review of Lenovo Tab A8 Tablet, which highlights the device’s “live photo” camera feature. 15. Exhibit 8 is a November 2, 2015 overview of Sony Xperia Z5 Premium, which highlights the device’s “live photo mode” camera feature. 16. Exhibit 11 is an August 18, 2015 review of Lenovo Tab 2 A10, which highlights the device’s “Live Photo” camera mode. 17. Exhibit 12 is a January 15, 2015 overview of Motorola Moto E, which highlights the device’s “Live Photo Mode” camera feature. 3 18. Exhibit 13 is a February 25, 2015 overview of Samsung Galaxy S6, which highlights the device’s “Live Photo Mode” camera feature. 19. Exhibit 14 is an August 14, 2015 overview of Samsung Galaxy Note 5, highlighting the device’s “Live photo mode” camera feature. 20. Exhibit 15 is a December 7, 2014 overview of Samsung Galaxy S6, which highlights the device’s “Live photo mode” camera feature. 21. Exhibit 19 is a webpage linking to a November 17, 2014 YouTube video review of Micromax Unite 2, highlighting the device’s “live photo mode.” 22. Exhibit 20 is a webpage linking to an August 11, 2014 YouTube video demonstration of HTC Desire 616 dual sim, testing the device’s “Live photo feature.” 23. Exhibit 21 is a July 17, 2014 Facebook post overview of Micromax Unite 2 A106, highlighting the device’s “Live Photo Mode” camera feature. 24. Exhibit 22 is a January 2, 2015 Facebook post overview of Symphony Xplorer ZIV, highlighting the device’s “live photo mode” camera feature. 25. As demonstrated by Exhibits 9-10 and 16-18, “live photo(s)” is widely used generically by competitors to identify a camera mode feature of their devices. 26. Exhibit 9 is a 2014 Quick Start Guide for ZTE BGH Joy Smart A4G, which provides instructions on how to switch to the device’s “live Photo mode” camera feature. 27. Exhibit 10 is a 2015 User Manual and Safety Information guide for ZTE Obsidian, which provides instructions on how to switch to the device’s “Live photo mode” camera feature. 28. Exhibit 16 is a 2015 User Guide for BestBuy Insignia 7.85" Wi-Fi Android Tablet, which provides instructions on how to select the device’s “Live Photo mode” camera feature. 29. Exhibit 17 is an Amazon.com listing for Jiayu G5S Smart Phone Android 4.2.1, which highlights the device’s “Live photo mode” camera feature, and includes an October 21, 2014 product review from a customer in the United States. 4 30. Exhibit 18 is an Amazon.com listing for BLU Studio G, with a customer review from June 7, 2015 highlighting the device’s “live photo mode” camera feature.