Match Group, LLCv.RLP Ventures LLC

Trademark Trial and Appeal Board

Nov 20, 2018

No. 91230917 (T.T.A.B. Nov. 20, 2018)

Baxley
November 20, 2018

Opposition No. 91230917

Match Group, LLC

v.
RLP Ventures, LLC

Before Taylor, Hightower and Lynch,
Administrative Trademark Judges.

By the Board:

This case comes up for consideration of (1) Match Group, LLC’s (“Opposer”) motion
(filed May 15, 2018) for summary judgment on the ground of no bona fide use when
Applicant filed its use-based application, 27-28 TTABVUE; and (2) RLP Ventures,
LLC’s (“Applicant”) cross-motion for summary judgment (filed June 14, 2018) on
Opposer’s likelihood of confusion and dilution claims, 29 TTABVUE.
I. Background
Applicant seeks to register the mark POLITICAL TINDER in standard characters
for a variety of services in International Classes 35 and 41.1 On November 1, 2016,

1 Application Serial No. 86334642, filed July 11, 2014, based on an assertion of use in
commerce under Trademark Act Section 1(a), 15 U.S.C. § 1051(a), and alleging July 10, 2014
as the date of first use anywhere and as the date of first use in commerce. The application
includes a disclaimer of POLITICAL. The full recitation of services in the application follows,
with certain services bolded for emphasis:
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
General Email: TTABInfo@uspto.gov
This decision is not a
precedent of the TTAB.
Opposition No. 91230917

2
Tinder, Inc. (“Tinder”) filed a notice of opposition to registration of Applicant’s mark
on the grounds of (1) likelihood of confusion under Trademark Act Section 2(d), 15

Advertising and marketing services provided by means of indirect methods of
marketing communications, namely, social media, search engine marketing,
inquiry marketing, internet marketing, mobile marketing, blogging and other
forms of passive, sharable or viral communications channels; Advertising by
transmission of on-line publicity for third parties through electronic
communications networks; Advertising services, namely, promoting and
marketing the goods and services of others through all public communication
means; Conducting business and market research surveys; Conducting
business research and surveys; Consumer survey services; Design of business
surveys; Design of marketing surveys; Design of public opinion surveys;
Development of marketing strategies, concepts and tactics, namely, audience
development, brand awareness, online community building and digital word of
mouth communications; Dissemination of advertising for others via an on-line
communications network on the internet; Marketing services, namely,
providing informational web pages designed to generate sales traffic via
hyperlinks to other web sites; Online advertising via a computer
communications network; Providing a website featuring information
about political issues; Providing advertising, marketing and promotional
services, namely, development of advertising campaigns for politics; Providing
an internet website featuring news and information in the field of national and
international politics; Providing an on-line searchable database featuring
information on political campaigns; Providing consumer information and
related news in the field of politics; Providing demand creation and lead
generation activities and services; Providing information about political
elections; Providing information regarding political issues, knowing how to
vote and knowing how to register to vote; Public opinion surveys in
International Class 35; and
Entertainment and education services in the nature of a series of short shows
featuring politics distributed to mobile handsets, which may include video,
text, photos, illustrations or hypertext; News agencies, namely, gathering and
dissemination of news; News reporter services in the nature of news analysis
and news commentary; News reporters services; News syndication reporting;
Providing an Internet news portal featuring links to news stories and articles
in the field of current events; Providing an Internet website portal featuring
entertainment news and information specifically in the field of politics;
Providing current event news via a global computer network; Providing
information and news in the field of current events relating to politics;
Providing information, news and commentary in the field of current
events relating to politics; Providing news in the nature of current event
reporting relating to politics via the Internet in International Class 41.

Opposition No. 91230917

3
U.S.C. § 1052(d), with its previously used mark TINDER for a “social media mobile
phone app that is a highly interactive platform through which users can create, share,
and read short profiles and communicate online” and four registered marks that
include the word TINDER,2 and (2) dilution of “the distinctive quality of the famous
TINDER® Mark and TINDER trade name” under Trademark Act Section 43(c), 15
U.S.C. § 1125(c). 1 TTABVUE 8 and 12. Applicant denied the salient allegations of
the notice of opposition in its answer. 5 TTABVUE.

2 Tinder submitted printouts from the USPTO’s Trademark Electronic Search System (TESS)
of its four pleaded registrations as exhibits to both the original and the amended notices of
opposition. Those registrations are:
Registration No. 3998405, issued July 19, 2011, for the mark TINDER in
standard characters for “hosting computer software applications for others” in
International Class 42. Section 8 declaration accepted. The registration has a
July 13, 2007 constructive use date and alleges February 23, 2010 as the date
of first use anywhere and as the date of first use in commerce.
Registration No. 4479131, issued February 4, 2014, for the mark TINDER in
standard characters for “Downloadable software in the nature of a mobile
application for internet-based dating and matchmaking; downloadable
software in the nature of a mobile application in the field of social media,
namely, for sending status updates to subscribers of web feeds, uploading and
downloading electronic files to share with others” in International Class 9. The
registration has an August 2, 2012 constructive use date and alleges August 2,
2012 as the date of first use anywhere and as the date of first use in commerce.
Registration No. 4907511, issued March 1, 2016, for the mark TINDER PLUS
in standard characters for “Downloadable software in the nature of a mobile
application for internet-based dating and matchmaking; downloadable
software in the nature of a mobile application in the field of social media,
namely, for sending status updates to subscribers of web feeds, uploading and
downloading electronic files to share with others” in International Class 9. The
registration has an April 23, 2015 constructive use date and alleges March 2,
2015 as the date of first use anywhere and as the date of first use in commerce.
Registration No. 4976225, issued June 14, 2016, for the mark TINDER in
standard characters for “Dating services; internet-based social networking,
introduction and dating services” in International Class 45. The registration
has an April 23, 2015 constructive use date and alleges August 2, 2012 as the
date of first use anywhere and as the date of first use in commerce.
Opposition No. 91230917

4
On June 30, 2017, prior to the close of discovery, Tinder filed a motion for leave to
file an amended notice of opposition, wherein it repeats its likelihood of confusion and
dilution by blurring claims and adds a claim of no bona fide use when Applicant filed
its involved application, 8 TTABVUE 16-17. In a November 15, 2017 order, 15
TTABVUE, the Board granted leave to amend.
On January 10, 2018, Match Group, LLC (“Opposer”) filed a motion to be
substituted as party plaintiff herein, 16 TTABVUE. In an April 30, 2018 order, 26
TTABVUE, the Board granted that motion. The cross-motions for summary judgment
followed.
II. Opposer’s dilution claim is based on dilution by blurring only
In the ESTTA cover form, Opposer indicated an intent to pursue claims of dilution
by blurring and dilution by tarnishment. 1 TTABVUE 1. Although not expressly
stated in the notice of opposition, we find that Opposer’s dilution allegations set forth
only a claim of dilution by blurring, i.e., “association arising from the similarity
between a mark or trade name and a famous mark that impairs the distinctiveness
of the famous mark.” Trademark Act Section 43(c)(2)(B), 15 U.S.C. § 1125(c)(2)(B).
Dilution by tarnishment is an “association arising from the similarity between a
mark or trade name and a famous mark that harms the reputation of the famous
mark.” Trademark Act Section 43(c)(2)(C), 15 U.S.C. § 1125(c)(2)(C). Because Opposer
did not allege in the text of either the original or the amended notice of opposition
that Applicant’s involved mark would damage its reputation, we find that there is no
Opposition No. 91230917

5
pleaded claim of dilution by tarnishment in this case.3 See Embarcadero Techs. Inc.
v. RStudio Inc., 105 USPQ2d 1825, 1827 n.2 (TTAB 2013) (mere mention of a ground
on the ESTTA cover form of a complaint is insufficient).
III. Opposer’s motion for summary judgment granted only as to standing
Summary judgment is appropriate only when there is no genuine dispute as to
any material fact and the moving party is entitled to judgment as a matter of law.
See Fed. R. Civ. P. 56(a). In deciding a motion for summary judgment, the Board may
not resolve issues of material fact; it may only ascertain whether a genuine dispute
regarding a material fact exists. See Lloyd's Food Products, Inc. v. Eli's, Inc., 987
F.2d 766, 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993); Old Tyme Foods, Inc. v.
Roundy's, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992). The nonmoving
party must be given the benefit of all reasonable doubt as to whether genuine issues
of material fact exist, and the evidentiary record on summary judgment, and all
inferences to be drawn from the undisputed facts, must be viewed in the light most
favorable to the nonmoving party. See Opryland USA, Inc. v. Great American Music
Show, Inc., 970 F. 2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992).
A. Opposer’s standing and priority
To prevail on its motion for summary judgment on its claim of no bona fide use as
of the application filing date, Opposer must establish that there is no genuine dispute
that (1) it has standing to maintain this proceeding, and (2) Applicant did not have

3 Because Opposer did not plead dilution by tarnishment, Applicant’s motion for summary
judgment on that claim is denied. See Trademark Board Manual of Procedure (TBMP) §§ 314
and 528.07 (2018).
Opposition No. 91230917

6
bona fide use in commerce of the involved mark POLITICAL TINDER as of the
application filing date, July 11, 2014. We turn first to the issue of Opposer’s standing.
Standing is a threshold issue that must be proven by the plaintiff in every inter
partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014). To establish standing in an opposition
proceeding, a plaintiff must prove that it has a “real interest,” i.e., a “reasonable”
basis for its belief of damage. See Empresa Cubana, 111 USPQ2d at 1062; Ritchie v.
Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999).
As exhibits to both the original and amended notices of opposition, Tinder
submitted copies of its pleaded registrations for the marks TINDER and TINDER
PLUS which were obtained from the USPTO’s Trademark Electronic Search System
(TESS) database showing then-current status and title of those registrations, 1
TTABVUE 15-25 and 8 TTABVUE 19-29. See Trademark Rule 2.122(d)(1). Opposer
has established that it now owns the pleaded registrations. See 20 TTABVUE 9-25;
26 TTABVUE. Opposer’s standing to oppose registration of Applicant’s mark is
established by its pleaded registrations, which the record shows to be valid and
subsisting, and owned by Opposer. See, e.g., Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); N.Y. Yankees P’ship v. IET Prods.
& Servs., Inc., 114 USPQ2d 1497, 1501 (TTAB 2015). Accordingly, we hereby enter
summary judgment in Opposer’s favor on the issue of its standing to maintain this
proceeding.
Opposition No. 91230917

7
Also, because Opposer’s pleaded registrations are of record, priority is not at issue
with respect to the marks, goods, and services identified in those registrations. See
King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109-10
(CCPA 1974). Accordingly, we hereby sua sponte enter summary judgment in favor
of Opposer, the nonmovant, on the priority element of its likelihood of confusion
claim. See Clorox Co. v. Chem. Bank, 40 USPQ2d 1098, 1106 (TTAB 1996) (Board
may sua sponte enter summary judgment for non-moving party if there are no
material facts in dispute and judgment is appropriate as a matter of law); Tonka
Corp. v. Tonka Tools, Inc., 229 USPQ 857, 858-59 (TTAB 1986) (summary judgment
granted to nonmovant as to its standing).
Because Opposer has established its standing, we turn to Opposer’s motion for
summary judgment on its Section 1(a) claim.
B. Opposer’s claim of no bona fide use
Opposer moves for summary judgment on its claim that the application is void ab
initio because Applicant had made no bona fide use of its mark in commerce “for any
of the services recited” when it filed its used-based application. 27 TTABVUE 2. “[A]n
applicant may not claim a Section 1(a) filing basis unless the mark was in use in
commerce on or in connection with all the goods or services covered by the Section
1(a) basis as of the application filing date.” Hachette Filipacchi Presse v. Elle Belle
LLC, 85 USPQ2d 1090, 1093 (TTAB 2007) (citing Trademark Rule 2.34(a)(1)(i)).
The following criteria have evolved for determining what constitutes a service:
(1) a service must be a real activity; (2) a service must be performed to the order of,
Opposition No. 91230917

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or for the benefit of, someone other than the applicant; and (3) the activity performed
must be qualitatively different from anything necessarily done in connection with the
sale of the applicant’s goods or the performance of another service. In re Canadian
Pac. Ltd., 754 F.2d 992, 224 USPQ 971 (Fed. Cir. 1985); In re Betz Paperchem, Inc.,
222 USPQ 89 (TTAB 1984); In re Integrated Res., Inc., 218 USPQ 829 (TTAB 1983);
In re Landmark Commc'ns, Inc., 204 USPQ 692 (TTAB 1979); Trademark Manual of
Examining Procedure (“TMEP”) § 1301.01 (October 2018).
Trademark Act Section 45, 15 U.S.C. § 1127, states in relevant part that a mark
shall be deemed to be in use in commerce for services
when it is used or displayed in the sale or advertising of services and the
services are rendered in commerce, or the services are rendered in more
than one State or in the United States and a foreign country and the
person rendering the services is engaged in commerce in connection with
the services.

“Use in commerce” means “bona fide use of a mark in the ordinary course of trade.”
Id.
Bearing in mind that, in deciding a motion for summary judgment, we cannot
decide disputed facts, and that Applicant, as the nonmoving party, must be given the
benefit of all reasonable doubt as to whether genuine disputes of material fact exist,
we find that disposition of the no bona fide use claim by summary judgment is
inappropriate. Applicant’s May 14, 2016 specimens show the involved mark displayed
on Applicant’s website in connection with the dissemination of news articles relating
to politics, and Applicant averred that those specimens were in use as of the
application filing date. In addition, Ramona Prioleau, Applicant’s principal and
Opposition No. 91230917

9
witness in its Fed. R. Civ. P. 30(b)(6) discovery deposition, stated that she uploaded
content on July 10, 2014, the day before the application was filed, and “contacted
people to check out the site that [she] had launched on July 10th so that they could go
and check it out and register and take surveys and things of that sort.”4 28 TTABVUE
28. In view of these specimens and statements, we find that there is a genuine dispute
as to whether Applicant was rendering at least some of the recited services under the
involved mark in commerce as of the application filing date. At a minimum, those
specimens indicate that there is a genuine dispute as to whether Applicant was using
the mark in connection with “[p]roviding a website featuring information about
political issues” in International Class 35 and “[p]roviding information, news and
commentary in the field of current events relating to politics” in International Class
41 as of the application filing date.5 Accordingly, Opposer’s motion for summary
judgment on the no bona fide use claim is denied.
IV. Applicant’s cross-motion for summary judgment denied
As a party moving for summary judgment in its favor on a Section 2(d) claim,
Applicant must establish that there is no genuine dispute that (1) Opposer is neither
the prior user of its pleaded mark(s) nor the owner of a valid and subsisting

4 Applicant’s attendance in May and June 2014 at events hosted by the Small Business
Administration and the New York City Department of Small Business Services related to
doing business with the government and registration with the System for Award
Management at most indicate activities in preparation for use of the mark in commerce.
5 Applicant’s specimens, on which both parties relied in connection with Opposer’s motion for
summary judgment, will not be evidence at trial unless introduced pursuant to Trademark
Rule 2.122(b)(2); see also TBMP § 704.03(a). Internet materials may be admitted as trial
evidence under a notice of reliance only if the date they were accessed and their source (e.g.,
URL) are provided pursuant to Trademark Rule 2.122(e)(2); see also TBMP § 704.08(b).
Opposition No. 91230917

10
registration for those marks; and (2) contemporaneous use of the parties’ respective
marks on their respective goods and services would not be likely to cause confusion,
mistake or to deceive consumers. See Trademark Act Section 2(d); King Candy Co.,
182 USPQ at, 109-10; Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., 60
USPQ2d 1733, 1735 (TTAB 2001).
Regarding the first Section 2(d) element, as explained above, because Opposer’s
pleaded registrations are of record, priority is not at issue with respect to the marks,
goods, and services identified in those pleaded registrations.
Turning to the likelihood of confusion issue, two key factors are the degree of
similarity of the parties’ marks and the degree of similarity of their respective goods
and services. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976). Although we must consider the marks in their entireties,
In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012), descriptive
matter like the term POLITICAL disclaimed from Applicant’s mark is generally less
dominant in creating the commercial impression of a mark. See Citigroup Inc. v.
Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1257 (Fed. Cir. 2011).
Further, likelihood of confusion is not necessarily avoided between otherwise
confusingly similar marks merely by adding a term that is descriptive of the recited
goods or services. See In re Computer Sys. Ctr. Inc., 5 USPQ2d 1378, 1381 (TTAB
1987); In re Equitable Bancorporation, 229 USPQ 709, 711 (TTAB 1986). Accordingly,
we find that, in view of the parties’ common use of the word TINDER, there is a
genuine dispute as to whether the marks, when considered in their entireties, are
Opposition No. 91230917

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confusingly similar. We further note that there are genuine disputes as to the scope
of protection to which Opposer’s pleaded marks are entitled, and whether the parties’
goods and services are related in some manner or that the conditions surrounding
their marketing are such that they are likely to be encountered by the same persons
under circumstances that, because of the marks used in connection therewith, would
lead to the mistaken belief that they originate from the same source.6 See In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). Based
on the foregoing, Applicant’s cross-motion for summary judgment on the pleaded
likelihood of confusion claim is denied.
V. Summary
In sum, Opposer’s motion for summary judgment is granted as to standing, but
denied on the no bona fide use claim, and Applicant’s cross-motion for summary
judgment is denied on Opposer’s Section 2(d) and dilution claims. However, we have
sua sponte entered partial summary judgment for Opposer on the issue of priority.
This case will go forward to trial on the issues of no bona fide use, likelihood of
confusion, and dilution by blurring only. The parties are strongly urged to focus their
trial preparation accordingly.
VI. Proceedings resumed
Proceedings herein are resumed. Remaining dates are reset as follows.

6 The parties should not infer that these are the only issues remaining for trial. Any evidence
submitted with the parties’ cross-motions for summary judgment is of record for
consideration of that motion only. If the case goes to trial, the summary judgment evidence
may not form part of the evidentiary record to be considered at final hearing unless it is
properly introduced in evidence during the appropriate testimony period. However, the
parties may stipulate that any or all of the summary judgment evidence be treated as
properly of record for purposes of final decision. TBMP § 528.05(a)(1).
Opposition No. 91230917

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Plaintiff's Pretrial Disclosures Due 12/20/2018
Plaintiff's 30-day Trial Period Ends 2/3/2019
Defendant's Pretrial Disclosures Due 2/18/2019
Defendant's 30-day Trial Period Ends 4/4/2019
Plaintiff's Rebuttal Disclosures Due 4/19/2019
Plaintiff's 15-day Rebuttal Period Ends 5/19/2019
Plaintiff's Opening Brief Due 7/18/2019
Defendant's Brief Due 8/17/2019
Plaintiff's Reply Brief Due 9/1/2019
Request for Oral Hearing (optional) Due 9/11/2019

Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony is
taken and introduced out of the presence of the Board during the assigned testimony
periods. The parties may stipulate to a wide variety of matters, and many
requirements relevant to the trial phase of Board proceedings are set forth in
Trademark Rules 2.121 through 2.125. These include pretrial disclosures, the
manner and timing of taking testimony, matters in evidence, and the procedures for
submitting and serving testimony and other evidence, including affidavits,
declarations, deposition transcripts and stipulated evidence. Trial briefs shall be
submitted in accordance with Trademark Rules 2.128(a) and (b). Oral argument at
final hearing will be scheduled only upon the timely submission of a separate notice
as allowed by Trademark Rule 2.129(a).