On Wednesday, action camera and video-editing software company GoPro filed a notice of opposition before the Trademark Trial and Appeal Board against applicant Chengdu Corntree Technology Co. Ltd.’s application for the MAXHEROES mark, alleging a likelihood of consumer confusion and a dilution of its marks.
According to the opposition, the applicant seeks to register the MAXHEROES mark in International Class 9 for “Data and word processors; Downloadable computer game software via a global computer network and wireless devices…Downloadable mobile applications for…editing photos…”
Meanwhile, GoPro asserted that it owns the trademark registrations for HERO and several HERO-based marks as well as common law rights in the same. GoPro claimed that its rights in the HERO Marks predate the filing date of the application. Specifically, GoPro stated that since at least 2004, it has used the HERO Marks “to provide and market a family of cameras…alongside proprietary software for creating and editing media content and integrating that content into mobile internet applications. This software includes features for accessing and managing databases of photographs and videos, and word processing features that allow users to add text to photographs and videos.” Additionally, GoPro alleged that its marketing and promotion with the HERO Marks has garnered goodwill and the widespread use and popularity have made the HERO Marks famous.
GoPro averred that the similarities between its HERO Marks and the applicant’s MAXHEROES Mark and the similarities between their goods and services are likely to cause consumer confusion as to the source of the related goods and services. In particular, consumers are allegedly “likely to believe that the goods sold under Applicant’s mark are related to GoPro’s goods.” Specifically, GoPro pointed to the fact that the applicant’s “MAXHEROES mark incorporates GoPro’s HERO mark.” Consequently, GoPro claimed that this is likely to cause consumer confusion, mistake, or deception, by, for example, suggesting a false connection or association.
GoPro proffered that the registration and use of MAXHEROES would “dilute the distinctive quality of GoPro’s famous mark.” Therefore, GoPro alleged that “the ability of GoPro’s HERO mark to identify GoPro’s goods and services is weakened, thereby causing loss, damage, and injury to GoPro.” As a result, GoPro claimed that it will be damaged by the registration of the applicant’s MAXHEROES mark.
GoPro requests for its opposition to be sustained and for the applicant’s application to register the MAXHEROES mark to be denied. GoPro is represented by Fenwick & West LLP.
