The trademark WITH was filed by With Labs, Inc., a U.S. corporation (the "Applicant"). The application was published for oppositions on May 4, 2021, and received one opposition filed on August 4, 2021 by IMVU, Inc. on (a) Likelihood of confusion, (b) Unfair advantage and detriment to distinctiveness or repute. the opponent was represented by Osborne Clarke Rechtsanwälte Steuerberater Partnerschaft mbB and proceedings were handled in English, and the oppositon was dismissed by the Euorpean Union Intellectual Property Office with decision issued August 4, 2021
The application was filed in Danish, and Danish was also language of all opposition proceedings (English was selected as the second language).
Goods And Services
The mark was filed in class 9 with following description of goods:
Downloadable computer software platform for collaborating on team projects with multiple simultaneous users, communicating with others, video conferencing, messaging, sharing documents and information, watching and sharing video content, managing team projects, playing games, listening to music, and accessing third-party web services and applications
Downloadable software in the nature of a mobile application for collaborating on team projects with multiple simultaneous users, communicating with others, video conferencing, messaging, sharing documents and information, watching and sharing video content, managing team projects, playing games, listening to music, and accessing third-party web services and applications
Downloadable computer software platform for interacting with colleagues, friends, and family members
Downloadable computer software for live digital communications, namely, live video and audio conferencing with multiple simultaneous users, web conferencing, and instant messaging
Downloadable application programming interface (API) for use in building software applications
Downloadable mobile application and desktop software for collaboration and group communications services, namely, software for use in messaging, posting, file sharing, calendaring, audio conferencing, video conferencing, telephone call processing and communications, internet telephony (VoIP) services, voicemail, facsimile services and telemedicine
Downloadable computer software for integrating collaboration and group communication software with external telecommunications service provider equipment and software
Downloadable computer software using machine learning or artificial intelligence, namely, software for processing text and data
Downloadable computer software for assisting users with messaging, posting, file sharing, calendaring, audio conferencing, video conferencing, telephone call processing and communications, internet telephony (VoIP) services, voicemail, and facsimile services
Downloadable mobile application and computer software for telecommunications, namely, software for use in messaging, posting, file sharing, calendaring, audio conferencing, video conferencing, telephone call processing, recording and transmitting text and data files, internet telephony (VoIP) services, voicemail and facsimile services, and telemedicine services
Cloud servers
Cloud computing software
Cloud server software
Downloadable cloud computing software
Application software for cloud computing services
Cloud network monitoring software
Software
Telecommunications software
Application software
Software applications
Collaboration software platforms [software]
Computer software
Software for computers
Communication software
Communications software
Enterprise software
Bioinformatics software
Entertainment software
Collaboration software
Downloadable videos
Video recordings
Downloadable video recordings
Interactive video software
Telecommunications networks
Downloadable digital music
Software for Digital Distributed Storage
Content management software
Data recorded electronically
Content control software
Information technology and audio-visual, multimedia and photographic devices
Wireless communication devices for the transmission of multimedia content.
The mark was filed in class 38 with following description of goods:
Audio teleconferencing
Video conferencing services
Video teleconferencing
Web conferencing services
Online private chat rooms
Instant messaging services
Web messaging
Teleconferencing and video conferencing services
Communication services, namely, transmission of data, audio, messages, and information by electronic communications networks
Telephony communication services
Telecommunications services, namely, collaboration and group communications services in the nature of electronic transmission of data, namely, messages, posts, file sharing data, calendaring data, audio and video data, telephony data and data from other telecommunications service providers
Voice over internet protocol (VOIP) services
Voicemail services
Telecommunications services, namely, providing to business enterprises telephony services in the nature of local and long distance telephony services, local phone numbers, voice mail services, call forwarding services, caller ID services, call waiting services, 3-way calling services, extension-to-extension dialing, telephony call routing services, call analytics, number porting, call recording and storage services
Telecommunications routing services, namely, domain name system routing services to enable electronic devices to find the nearest set of geographically dispersed servers
Internet fax services, namely, internet facsimile communication and facsimile transmission by internet
Multimedia conferencing services in the nature of web conferencing services and video conferencing services
Chat room services
Operating chat rooms
Providing Internet chat rooms
Providing Internet chat lines
Providing voice chat services
Forums [chat rooms] for social networking
Electronic communication by means of chatrooms, chat lines and Internet forums
Chat room services for social networking
Provision of telecommunications connections for telephone chat lines
Providing chat lines utilising the internet
Electronic exchange of messages via chat lines, chatrooms and Internet forums
Providing on-line chat rooms for social networking
Providing online chat rooms and electronic bulletin boards
Chatroom services
Providing on-line chat rooms for transmission of messages among computer users
Providing on-line electronic bulletin board services and chat rooms
Chatroom services for social networking
Providing Internet chatrooms and Internet forums
Video teleconferencing
Video broadcasting
Video conferencing
Telecommunications
Telecommunication
Information about telecommunication
Telecommunication of information
Telecommunication (Information about -)
Information about telecommunications
Telecommunications information
Telephone and telecommunication services
Electronic and telecommunication transmission services
Transmission of digital information
Interactive transmission of video over digital networks
Digital communications services
Electronic transmission of messages, data and documents
Transmission of computerised documents
Transmission of data
Data transmission
Electronic data communications
Electronic transmission of data
Electronic data transmission.
The mark was filed in class 42 with following description of goods:
Providing temporary use of online non-downloadable computer software for collaborating on team projects with multiple simultaneous users, communicating with others, video conferencing, messaging, sharing documents and information, watching and sharing video content, managing team projects, playing games, listening to music, accessing third-party web services and applications, and interacting with colleagues, friends, and family members
Providing temporary use of online non-downloadable computer software for live digital communications, namely, live video and audio conferencing with multiple simultaneous users, web conferencing, and instant messaging
Computer services, namely, hosting electronic facilities for others for organizing and conducting meetings and discussions via the Internet
Unified communications as a Service (UCaaS) services featuring software platforms for providing telephony and telecommunications services
Software as a service (SaaS) services featuring software for contact center interaction management
Providing on-line non-downloadable software and applications for the transmission, recording, reproduction, display, organization, management, manipulation, and review of electronic messages, e-mails, instant messages, text messages, text, facsimiles for the facilitation of communications between two or multiple users via computer networks, the internet, communication networks and global information networks, virtual private networks (VPNs), wide-area networks (WANs), and local area networks (LANs)
Providing on-line non-downloadable software and applications for the transmission, recording, reproduction, display, organization, management, manipulation, and review of graphics, pictures, images, files, documents, presentations for the facilitation of communications between two or multiple users via computer networks, the internet, communication networks and global information networks, virtual private networks (VPNs), wide-area networks (WANs), and local area networks (LANs)
Providing on-line non-downloadable software and applications for the transmission, recording, reproduction, display, organization, management, manipulation, and review of business and project tasks, calendar appointments, voice messages and audio clips for the facilitation of communications between two or multiple users via computer networks, the internet, communication networks and global information networks, virtual private networks (VPNs), wide-area networks (WANs), and local area networks (LANs)
Providing on-line non-downloadable software and applications for the transmission, recording, reproduction, display, organization, management, manipulation, and review of video messages and video clips, audio, video, and audiovisual content, and other data for the facilitation of communications between two or multiple users via computer networks, the internet, communication networks and global information networks, virtual private networks (VPNs), wide-area networks (WANs), and local area networks (LANs)
Providing on-line non-downloadable software and applications for sending and receiving electronic messages, e-mails, instant messages, text messages, text, facsimiles, graphics, pictures, images, files, documents, presentations, business and project tasks, calendar appointments, voice messages and audio clips, video messages and video clips, audio, video, and audiovisual content, and other data
Providing on-line non-downloadable software and applications for enabling and managing simultaneous, multiple modes of communication via computer networks, the internet, communications networks and global information networks, virtual private networks (VPNs), wide-area networks (WANs), and local area networks (LANs)
Application service provider featuring customer experience management software for use in contact center communications, operations, and management, namely, software for use in predictive dialing, operating cloud hosted interactive voice response systems, operating voice response systems, do-not-call management that prevents the calling of certain individuals, and for use in transaction processing in interactive transaction processing systems
Cloud computing
Cloud computing services
Cloud storage services for electronic data
Providing virtual computer environments through cloud computing
Cloud storage services for electronic files
Providing virtual computer systems through cloud computing
Consulting services in the field of cloud computing
Consulting in the field of cloud computing networks and applications
Cloud-based data protection services
Design and development of operating software for cloud computing networks
Private cloud hosting provider service
Software development
Development of software
Development of computer hardware and software
Installation of software
Software installation
Programming of software for Internet portals, chatrooms, chat lines and Internet forums
Cross-platform conversion of digital content into other forms of digital content
Hosting of digital content online
Electronic storage of digital images
Hosting of digital content on the Internet
Electronic storage of entertainment media content
Hosting of digital content
Electronic storage of digital music
Electronic storage of digital photographs
Research relating to data processing
Digitization of documents
Development of application software for delivery of multimedia content
Development of software for processing and distribution of multimedia contents
Development of software for compression and decompression of multimedia contents
Development of hardware for processing and distribution of multimedia contents
Design of software for processing and distribution of multimedia contents
Design of software for compression and decompression of multimedia contents
Design of hardware for processing and distribution of multimedia contents
Development of hardware for compression and decompression of multimedia contents
Hosting multimedia educational content
Design of hardware for compression and decompression of multimedia contents
Platform as a service [PaaS] featuring software platforms for transmission of images, audio-visual content, video content and messages