Notice of Opposition Opposer Information Applicant Information

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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1099141 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 Hubbard Media Group, LLC Granted to Date 12/02/2020 of previous ex- tension Address 3415 UNIVERSITY AVE. SAINT PAUL, MN 55114 UNITED STATES

Attorney informa- ANN K. FORD tion DLA PIPER LLP (US) 500 EIGHTH STREET, NW WASHINGTON, DC 20004 UNITED STATES Primary Email: [email protected] Secondary Email(s): [email protected], [email protected], [email protected], [email protected] 2027994000

Docket Number Applicant Information

Application No. 88519526 Publication date 08/04/2020 Opposition Filing 12/02/2020 Opposition Peri- 12/02/2020 Date od Ends Applicant Rodeo Internet LLC 1397 PORT DRIVE CLARKSTON, WA 99403 UNITED STATES Goods/Services Affected by Opposition

Class 038. First Use: 2019/06/17 First Use In Commerce: 2019/06/17 All goods and services in the class are opposed, namely: Television programme broadcasting Class 041. First Use: 2019/06/17 First Use In Commerce: 2019/06/17 All goods and services in the class are opposed, namely: Distribution of television programming to cable television systems; Entertainment services in the nature of creation, development, and production of televisionprogramming; Production of television programs Grounds for Opposition

Priority and likelihood of confusion Trademark Act Section 2(d) Marks Cited by Opposer as Basis for Opposition

U.S. Registration 4094182 Application Date 01/14/2010 No. Registration Date 01/31/2012 Foreign Priority NONE Date Word Mark REELZ Design Mark Description of NONE Mark Goods/Services Class 038. First use: First Use: 2011/12/05 First Use In Commerce: 2011/12/05 Television, digital television, cable television, and satellite television broadcasting and transmission services; broadcasting and transmission of television programs via the Internet Class 041. First use: First Use: 2011/12/05 First Use In Commerce: 2011/12/05 Television, digital television, cable television, and satellite television programming; programming on a global computer network, namely, programming on the Internet; production of television programs; distribution of television programs for others; providing entertainment information and television programs in the field of movies and cinema over a global computer network

U.S. Registration 4400190 Application Date 03/01/2013 No. Registration Date 09/10/2013 Foreign Priority NONE Date Word Mark REELZ Design Mark Description of The mark consists of four circles to the left of the word "REELZ". Mark Goods/Services Class 038. First use: First Use: 2011/12/05 First Use In Commerce: 2011/12/05 Television, digital television, cable television, and satellite television broadcasting and transmission services; broadcasting and transmission of television programs via the Internet Class 041. First use: First Use: 2011/12/05 First Use In Commerce: 2011/12/05 Television, digital television, cable television, and satellite television programming; programming on a global computer network, namely, programming on the Internet; production of television programs; distribution of television programs for others; providing entertainment information and ongoing television programs in the field of movies and cinema over a global computer network

U.S. Registration 3264014 Application Date 09/15/2006 No. Registration Date 07/17/2007 Foreign Priority NONE Date Word Mark REELZ CHANNEL Design Mark Description of NONE Mark Goods/Services Class 038. First use: First Use: 2006/09/27 First Use In Commerce: 2006/09/27 Television, digital television, cable television, and satellite television broadcasting and transmission services; broadcasting and transmission of television programs via the Internet Class 041. First use: First Use: 2006/09/27 First Use In Commerce: 2006/09/27 Television, digital television, cable television, and satellite television programming; programming on a global computer network, namely, programming on the Internet; production of television programs; distribution of television programs for others; providing entertainment information and television programs in the field of movies and cinema over a global computer network

U.S. Registration 3264198 Application Date 11/03/2006 No. Registration Date 07/17/2007 Foreign Priority NONE Date Word Mark REELZ CHANNEL Design Mark Description of NONE Mark Goods/Services Class 038. First use: First Use: 2006/09/27 First Use In Commerce: 2006/09/27 Television, digital television, cable television, and satellite television broadcasting and transmission services; broadcasting and transmission of television programs via the Internet Class 041. First use: First Use: 2006/09/27 First Use In Commerce: 2006/09/27 Television, digital television, cable television, and satellite television programming; programming on a global computer network, namely, programming on the Internet; production of television programs; distribution of television programs for others; providing entertainment information and television programs in the field of movies and cinema over a global computer network

U.S. Registration 3610239 Application Date 07/07/2008 No. Registration Date 04/21/2009 Foreign Priority NONE Date Word Mark REELZ CHANNEL TV ABOUT MOVIES Design Mark Description of NONE Mark Goods/Services Class 038. First use: First Use: 2008/10/29 First Use In Commerce: 2008/10/29 Television, digital television, cable television, and satellite television broadcasting and transmission services; broadcasting and transmission of television programs via the Internet Class 041. First use: First Use: 2008/10/29 First Use In Commerce: 2008/10/29 Television, digital television, cable television, and satellite television programming; programming on a global computer network, namely, programming on the Internet; production of television programs; distribution of television programs for others; providing entertainment information and television programs in the field of movies and cinema over a global computer network

U.S. Registration 5209740 Application Date 10/02/2014 No. Registration Date 05/23/2017 Foreign Priority NONE Date Word Mark REELZ NOW Design Mark Description of NONE Mark Goods/Services Class 009. First use: First Use: 2017/03/31 First Use In Commerce: 2017/03/31 Computer software application for mobile devices for use in the delivery and viewing of video recordings, audio recordings, television programs, and movies Class 038. First use: First Use: 2017/03/31 First Use In Commerce: 2017/03/31 Television and digital television broadcasting and transmission services; broadcasting and transmission of television programs via the internet Class 041. First use: First Use: 2017/03/31 First Use In Commerce: 2017/03/31 Television and digital television programming; programming on a global com- puternetwork, namely, programming on the Internet; production of television programs; distribution of television programs for others

U.S. Registration 3337236 Application Date 05/22/2006 No. Registration Date 11/13/2007 Foreign Priority NONE Date Word Mark REELZCHANNEL Design Mark Description of NONE Mark Goods/Services Class 038. First use: First Use: 2006/09/27 First Use In Commerce: 2006/09/27 Television, digital television, cable television, and satellite television broadcasting and transmission services; broadcasting and transmission of television programs via the Internet Class 041. First use: First Use: 2006/09/27 First Use In Commerce: 2006/09/27 Television, digital television, cable television, and satellite television programming; programming on a global computer network, namely, programming on the Internet; production of television programs; distribution of television programs for others; providing entertainment information and television programs in the field of movies and cinema over a global computer network

Attachments Notice of Opposition to CLASSIC REELS TV.pdf(1243070 bytes )

Signature /Ann K. Ford/ Name ANN K. FORD Date 12/02/2020

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In the matter of Trademark Application Serial No. 88/519,526 Filing Date: July 17, 2019 Mark: CLASSIC REELS TV & Design Published for Opposition: August 4, 2020

) HUBBARD MEDIA GROUP, LLC, ) ) Opposer, ) ) v. ) Opposition No. ______) RODEO INTERNET LLC ) ) ) Applicant. ) )

NOTICE OF OPPOSITION

Opposer Hubbard Media Group, LLC (hereinafter “Opposer”) believes that it is or will be damaged by the registration of United States Trademark Application Serial No. 88/519,526 as filed with the United States Patent and Trademark Office (hereinafter “USPTO”) on July 17,

2019, by Rodeo Internet LLC (hereinafter “Applicant”), for the trademark CLASSIC REELS TV

& Design (“CLASSIC REELS TV” as pictured below) in connection with: “Television programme broadcasting” in International Class 38 and “Distribution of television programming to cable television systems; Entertainment services in the nature of creation, development, and production of television programming; Production of television programs” in International Class

41 (hereinafter “Applicant’s Services”).

Opposer hereby opposes said application under the provisions of Section 13 of the

Trademark Act of 1946 (hereinafter “Lanham Act”), 15 U.S.C. § 1063.

As grounds for the Opposition, Opposer alleges the following:

(1) Opposer is a Delaware Limited Liability Company with a principal place of

business at 3415 University Avenue, St. Paul, Minnesota 55114.

(2) Opposer is part of the family-owned and family-operated Hubbard Broadcasting,

Inc. group of media companies. Opposer, together with its subsidiaries and affiliates (collectively

“Hubbard”), offers various media, entertainment, and video and audio content broadcast and

distribution services throughout the United States

(3) In connection therewith, Opposer owns the distinctive trademarks REELZ, REELZ

CHANNEL, REELZ CHANNEL TV ABOUT MOVIES, and REELZ NOW, as well as other

REELZ-formative trademarks, including the following U.S. trademark registrations:

Trademark / Registration Full Goods/Services Date of Trademark App. Date First Use No. & Reg. No. / Disclaimer REELZ Registered: (Int'l Class: 38) First Use: RN: 4094182 January 31, television, digital television, cable December 5, SN: 77912084 2012 television, and satellite television 2011 broadcasting and transmission services; broadcasting and transmission of television programs via the internet (Int'l Class: 41) television, digital television, cable television, and satellite television programming; programming on a global

Trademark / Registration Full Goods/Services Date of Trademark App. Date First Use No. & Reg. No. / Disclaimer computer network, namely, programming on the internet; production of television programs; distribution of television programs for others; providing entertainment information and television programs in the field of movies and cinema over a global computer network

REELZ and Design Registered: (Int'l Class: 38) First Use: September 10, television, digital television, cable December 5, 2013 television, and satellite television 2011 broadcasting and transmission services;

broadcasting and transmission of RN: 4400190 television programs via the internet SN: 85864312 (Int'l Class: 41)

television, digital television, cable television, and satellite television programming; programming on a global computer network, namely, programming on the internet; production of television programs; distribution of television programs for others; providing entertainment information and ongoing television programs in the field of movies and cinema over a global computer network

REELZ CHANNEL Registered: (Int'l Class: 38) First Use: and Design July 17, 2007 television, digital television, cable September television, and satellite television 27, 2006 broadcasting and transmission services; broadcasting and transmission of

television programs via the internet RN: 3264014 (Int'l Class: 41) SN: 77000908 television, digital television, cable Disclaimer: television, and satellite television "CHANNEL" programming; programming on a global computer network, namely, programming on the internet; production of television programs; distribution of television

Trademark / Registration Full Goods/Services Date of Trademark App. Date First Use No. & Reg. No. / Disclaimer programs for others; providing entertainment information and television programs in the field of movies and cinema over a global computer network

television, and satellite television RN: 3264198 programming; programming on a global SN: 77035989 computer network, namely, programming Disclaimer: on the internet; production of television "CHANNEL" programs; distribution of television programs for others; providing entertainment information and television programs in the field of movies and cinema over a global computer network

REELZ CHANNEL Registered: (Int'l Class: 38) First Use: TV ABOUT April 21, 2009 television, digital television, cable October 29, MOVIES television, and satellite television 2008 RN: 3610239 broadcasting and transmission services; SN: 77515498 broadcasting and transmission of Disclaimer: television programs via the internet "CHANNEL" (Int'l Class: 41) television, digital television, cable television, and satellite television programming; programming on a global computer network, namely, programming on the internet; production of television programs; distribution of television programs for others; providing entertainment information and television programs in the field of movies and cinema over a global computer network

Trademark / Registration Full Goods/Services Date of Trademark App. Date First Use No. & Reg. No. / Disclaimer

REELZ NOW Registered, (Int'l Class: 09) First Use: RN: 5209740 May 23, 2017 computer software application for mobile March 31, SN: 86413329 devices for use in the delivery and 2017 viewing of video recordings, audio recordings, television programs, and movies (Int'l Class: 38) television and digital television broadcasting and transmission services; broadcasting and transmission of television programs via the internet (Int'l Class: 41) television and digital television programming; programming on a global computer network, namely, programming on the internet; production of television programs; distribution of television programs for others

REELZCHANNEL Registered: (Int'l Class: 38) First Use: RN: 3337236 November 13, television, digital television, cable September SN: 78888571 2007 television, and satellite television 27, 2006 broadcasting and transmission services; broadcasting and transmission of television programs via the internet (Int'l Class: 41) television, digital television, cable television, and satellite television programming; programming on a global computer network, namely, programming on the internet; production of television programs; distribution of television programs for others; providing entertainment information and television programs in the field of movies and cinema over a global computer network

The above-referenced trademark registrations (collectively, the “REELZ Marks”) are valid and subsisting, and provide conclusive evidence of Hubbard’s right to use the trademarks in commerce. Attached hereto as Exhibit A and made part of the record are true and correct copies of the United States Certificates of Registration for the above-referenced trademark registrations.

(4) Since as early as 2006, Hubbard has continuously used the REELZ Marks in interstate commerce to promote its cable and satellite general entertainment network and associated media and video content, and other related goods and services (hereinafter, the

“Hubbard Goods & Services”).

(5) The REELZ Marks clearly establish that Hubbard has senior trademark rights in its family of REELZ Marks and consequently there is no question of priority of rights, as such priority clearly belongs to Hubbard.

(6) Hubbard’s United States Trademark Registration Nos. 4094182, 4400190,

3264014, 3264198, 3610239, and 3337236 are valid and incontestable under Section 15 of the

Lanham Act, 15 U.S.C. § 1065 and are, therefore, conclusive evidence of the validity of the registered marks and of the registration of the marks, of Hubbard’s ownership of the marks, and of Hubbard’s exclusive right to use the registered marks in commerce under Section 33 of the

Lanham Act, 15 U.S.C. § 1115.

(7) Hubbard has extensively used the REELZ Marks and has advertised, promoted, and offered the Hubbard Goods & Services under the REELZ Marks in interstate commerce through various channels of trade. Hubbard has, thus, built up extensive and invaluable goodwill in connection with the offering of its goods and services offered under its REELZ Marks.

(8) Notwithstanding Hubbard’s exclusive and long-standing rights in and to the

REELZ Marks on July 17, 2019, Applicant, a limited liability company having an address at

1397 Port Drive, Washington, 99403, filed a use-based application under Section 1(a) of the

Lanham Act, 15 U.S.C. § 1051(a), with the USPTO for registration of the trademark CLASSIC

REELS TV (hereinafter the “Application”). The Application was assigned Serial No. 88519526, and asserted a date of first use in United States commerce of June 17, 2019. Hubbard’s federal registrations for the REELZ Marks issued as early as July 17, 2007, with a date of first use at least as early as 2006; therefore, there is no issue as to priority as Hubbard has prior rights.

(9) Upon information and belief, Applicant knew or had reason to know of Hubbard’s

REELZ Marks when Applicant filed the Application.

(10) Hubbard has used its REELZ Marks continuously on or in connection with the

Hubbard Goods & Services in interstate commerce prior to the filing date of Applicant’s

Application.

LIKELIHOOD OF CONFUSION Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d)

(11) Hubbard re-alleges the allegations contained in Paragraphs 1 through 10 of this Notice of

Opposition.

(12) Applicant’s mark CLASSIC REELS TV resembles Hubbard’s REELZ Marks in

appearance, sound, meaning, and commercial impression, such that use and registration

thereof is likely to cause confusion, mistake, and deception as to the source or origin of

Applicant’s Services in violation of Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d),

and will injure and damage Hubbard and the goodwill and reputation symbolized by

Hubbard’s REELZ Marks.

(13) Likelihood of confusion is enhanced by the fact that the REELZ Marks are strong and

well-known, and entitled to a broad scope of protection.

(14) Likelihood of confusion is also enhanced by the fact that Applicant’s mark CLASSIC

REELS TV is allegedly in use in United States commerce in connection with services in

Class 38 for television broadcasting services and services in Class 41 for television

programming services, which are identical, highly similar to, and closely related to, the

Hubbard Goods & Services. As such, the public is likely to be confused, deceived, and to

assume erroneously that Applicant’s Services are those of Hubbard or that Applicant is in

some way connected with, licensed, or sponsored by or affiliated with Hubbard, all to

Hubbard’s irreparable damage.

(15) Applicant is not affiliated or connected with Hubbard and has not been endorsed or

sponsored by Hubbard, nor has Hubbard approved any of the services offered or sold or

intended to be sold by Applicant under its purported CLASSIC REELS TV mark.

(16) Applicant has never sought or obtained Hubbard’s permission to use the mark CLASSIC

REELS TV, nor has Hubbard approved any of the services offered by Applicant under the

mark CLASSIC REELS TV.

(17) Hubbard’s United States Trademark Registrations identified above provide, at the very

least, constructive notice to Applicant of Hubbard’s rights in and to the REELZ Marks.

If Applicant obtains such rights as conferred under the Principal Register of the Lanham

Act, it will obtain at least a prima facie exclusive right to use its trademark, and Hubbard will be subjected to great and irreparable damage, and Applicant will enjoy unlawful gain and advantage to which it is not entitled under the Lanham Act.

WHEREFORE, Hubbard believes and avers that it is being, and will continue to be, damaged by the registration of the Application, and respectfully requests that the Application be rejected, that no registration be issued thereon to Applicant, and that the Opposition be sustained in favor of Hubbard.

Hubbard hereby appoints Ann K. Ford, a member of the Bar of the District of Columbia;

Thomas E. Zutic, a member of the Bar of the District of Columbia; John M. Nading, a member of the Bar of the District of Columbia; David M. Kramer, a member of the Bar of the District of

Columbia; Ryan C. Compton, a member of the Bar of the District of Columbia; Eunice R.

Chung, a member of the Bar of the District of Columbia; James K.S. Stewart, a member of the

Bar of the District of Columbia; Naomi E. Abraham, a member of the Bar of the District of

Columbia; Devika Persaud, a member of the Bar of the District of Columbia; and all of the law firm of DLA Piper LLP (US), 500 8th Street, N.W., Washington, D.C. 20004, telephone number

(202) 799-4000, to transact all business in the USPTO in connection with this Opposition

Proceeding and hereby revokes all previous powers of attorney herein.

Please address all correspondence to:

Ann K. Ford, Esq. DLA Piper LLP (US) 500 8th Street, N.W. Washington, D.C. 20004 [email protected]

The filing fee for this opposition in the amount of $800.00 is hereby electronically transferred with the submission of the Notice of Opposition.

The undersigned, registered agent for Hubbard herein, states that she is authorized to prosecute this Opposition, that she has read and signed the foregoing Notice of Opposition and knows the contents thereof, and that all statements made on information and belief are believed to be true; and further that these statements were made with the knowledge that willful false

statements and the like so made are punishable by fine or imprisonment, or both, under Section

1001 of Title 18 of the United States Code and that willful false statements may jeopardize the validity of this Opposition and any decision resulting therefrom.

Dated: December 2, 2020 Respectfully submitted,

DLA PIPER LLP (US)

By: __/Ann K. Ford/_____

Ann K. Ford Ryan C. Compton 500 8th Street, N.W. Washington, D.C. 20004 Tel. 202-799-4000 Fax 202-799-5000

Attorneys for Opposer Hubbard Media Group, LLC

EXHIBIT A

Reg. No. 5,209,740 Hubbard Media Group, LLC (DELAWARE LIMITED LIABILITY COMPANY) 3415 University Ave. Registered May 23, 2017 Saint Paul, MN 55114 CLASS 9: Computer software application for mobile devices for use in the delivery and Int. Cl.: 9, 38, 41 viewing of video recordings, audio recordings, television programs, and movies

Service Mark FIRST USE 3-31-2017; IN COMMERCE 3-31-2017 Trademark CLASS 38: Television and digital television broadcasting and transmission services; broadcasting and transmission of television programs via the internet Principal Register FIRST USE 3-31-2017; IN COMMERCE 3-31-2017

CLASS 41: Television and digital television programming; programming on a global computer network, namely, programming on the Internet; production of television programs; distribution of television programs for others

FIRST USE 3-31-2017; IN COMMERCE 3-31-2017

THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PARTICULAR FONT STYLE, SIZE OR COLOR

OWNER OF U.S. REG. NO. 3264014, 4094182, 4400190

SER. NO. 86-413,329, FILED 10-02-2014 DAVID T MURRAY, EXAMINING ATTORNEY