Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA978871 Filing date: 06/06/2019
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 World Wrestling Entertainment, Inc. Granted to Date 06/19/2019 of previous ex- tension Address 1241 East Main Street Stamford, CT 06902 UNITED STATES
Attorney informa- Christopher M. Verdini tion K&L Gates LLP 210 Sixth Avenue Pittsburgh, PA 15222 UNITED STATES [email protected], [email protected], [email protected] 412-355-6766
Applicant Information
Application No 88100032 Publication date 02/19/2019 Opposition Filing 06/06/2019 Opposition Peri- 06/19/2019 Date od Ends Applicant Xiamen Yuheng trading Co., Ltd. Room 1901, no.25 ninghai yi li jimei dist Xiamen, Fujian, 361000 CHINA Goods/Services Affected by Opposition
Class 025. First Use: 2018/02/15 First Use In Commerce: 2018/03/01 All goods and services in the class are opposed, namely: Coats; Dresses; Jumper dresses; Outer jackets; Pajamas; Petticoats; Shirts; Skirts; Skorts; Sweaters; Swimming costumes; Swimming trunks; T-shirts; Trousers; Working overalls Grounds for Opposition
Priority and likelihood of confusion Trademark Act Section 2(d) Marks Cited by Opposer as Basis for Opposition
U.S. Registration 3538710 Application Date 10/03/2005 No. Registration Date 11/25/2008 Foreign Priority NONE Date Word Mark WWE Design Mark
Description of NONE Mark Goods/Services Class 025. First use: First Use: 2002/05/31 First Use In Commerce: 2002/05/31 Clothing, namely, tank tops, t-shirts, shirts, sport shirts, dress shirts, poloshirts, undershirts, sweatshirts, sweaters, pullovers, blouses, jackets, raincoats, over- coats, topcoats, trousers, pants, jean pants, jogging suits, exercise pants, exer- cise suits, sweatpants, shorts, underwear, boxer shorts, socks, clothing ties, pa- jamas, belts, gloves, Halloween and masquerade costumes, wrist bands,bandannas; footwear, namely, shoes, sneakers, boots, slippers; head- wear, namely, hats, caps
U.S. Registration 4045760 Application Date 09/03/2008 No. Registration Date 10/25/2011 Foreign Priority NONE Date Word Mark WWE AUTHENTIC WEAR Design Mark
Description of NONE Mark Goods/Services Class 025. First use: First Use: 2008/08/31 First Use In Commerce: 2008/08/31 Clothing, namely, tank tops, t-shirts, shirts, sport shirts, polo shirts, undershirts, sweatshirts, sweaters, pullovers, blouses, jackets, raincoats, pants, jean pants, jogging suits, exercise pants,exercise suits, sweatpants, shorts, underwear, box- er shorts, socks, clothing ties, pajamas, belts, gloves, wrist bands,bandannas; footwear, namely, shoes, sneakers, slippers; headwear, namely, hats,caps
U.S. Registration 4621480 Application Date 09/19/2011 No. Registration Date 10/14/2014 Foreign Priority NONE Date Word Mark WWE NETWORK Design Mark
Description of NONE Mark Goods/Services Class 025. First use: First Use: 2014/03/30 First Use In Commerce: 2014/03/30 Clothing, namely, tops, jackets, bottoms, underwear, pajamas; footwear, namely,shoes, sneakers, slippers; headwear, namely, hats
U.S. Registration 5176635 Application Date 07/22/2013 No. Registration Date 04/04/2017 Foreign Priority NONE Date Word Mark WWE BATTLEGROUND Design Mark
Description of NONE Mark Goods/Services Class 025. First use: First Use: 2013/10/06 First Use In Commerce: 2013/10/06 Clothing, namely, tops, shirts; headwear, namely, hats; bandannas
U.S. Registration 5261353 Application Date 05/15/2013 No. Registration Date 08/08/2017 Foreign Priority NONE Date Word Mark WWE NXT Design Mark
Description of NONE Mark Goods/Services Class 025. First use: First Use: 2017/06/16 First Use In Commerce: 2017/06/16 Clothing, namely, tops; headwear, namely, hats
U.S. Registration 2772683 Application Date 05/07/2002 No. Registration Date 10/07/2003 Foreign Priority NONE Date Word Mark WWE Design Mark Description of NONE Mark Goods/Services Class 041. First use: First Use: 2002/05/06 First Use In Commerce: 2002/05/06 Entertainment services, namely, the production and exhibition of professional wrestling events rendered live and through the medium of television; providing wrestling news and information via a global computer network
U.S. Registration 3442191 Application Date 04/20/2004 No. Registration Date 06/03/2008 Foreign Priority NONE Date Word Mark THE WWE EXPERIENCE Design Mark
Description of NONE Mark Goods/Services Class 041. First use: First Use: 2004/05/02 First Use In Commerce: 2004/05/02 Entertainment services, namely, a television show about professional wrest- ling;providing wrestling news and information via a global computer network
U.S. Registration 3541956 Application Date 03/10/2006 No. Registration Date 12/02/2008 Foreign Priority NONE Date Word Mark WWE Design Mark
Description of NONE Mark Goods/Services Class 041. First use: First Use: 2007/03/08 First Use In Commerce: 2007/03/08 Entertainment services, namely, providing prerecorded popular music to be in- corporated into media platforms, namely, film, television, radio, the Internet, ring tones, video games, and emerging digital technologies; Entertainment ser- vices,namely, producing music to be incorporated into media platforms, namely, film, television, radio, the Internet, ring tones, video games, and emerging digital technologies
U.S. Registration 3778789 Application Date 06/09/2008 No. Registration Date 04/20/2010 Foreign Priority NONE Date Word Mark WWE UNIVERSE Design Mark
Description of NONE Mark Goods/Services Class 041. First use: First Use: 2008/06/09 First Use In Commerce: 2008/06/09 Entertainment services, namely, the production and exhibition of professional wrestling events rendered live and through the media of television; providing wrestling news and information via a globalcomputer network; information relat- ing to entertainment, provided on-line from a computer database or the internet; providing on-line chat rooms and electronicbulletin boards for transmission of messages among users in the field of general interest; mobile media services in thenature of electronic transmission of entertainment media content
U.S. Registration 4632692 Application Date 09/06/2011 No. Registration Date 11/04/2014 Foreign Priority NONE Date Word Mark WWE NETWORK Design Mark
Description of NONE Mark Goods/Services Class 038. First use: First Use: 2014/02/24 First Use In Commerce: 2014/02/24 Television broadcasting services; cabletelevision broadcasting; satellite televi- sion broadcasting; mobile media services in the nature of electronic transmis- sion of entertainment media content; podcasting services; webcasting services; video-on-demand transmission services; providing on-line chat rooms and elec- tronicbulletin boards for transmission of messages among users in the field of general interest Class 041. First use: First Use: 2014/02/24 First Use In Commerce: 2014/02/24 Entertainment services, namely, the production and exhibition of professional wrestling events rendered live and through the media of television or pay- per-view; providing wrestling news and information via a global computer net- work; the production and distribution of a television series, featuring sports en- tertainment; production of television programs; Entertainment services, namely, multimediaprograms in the field of general human interest, distributed via vari- ous platforms across multiple forms of transmission media; providing entertain- ment information regarding ongoing television programs via a global computer network; entertainment services, namely, a production and distribution of televi- sion programs featuring sports, news and current affairs rendered through the media of television, cable, satellite, radio, telephone and broadband systems, and via the internet and portable and wireless communication devices; providing information in thefield of entertainment rendered via theInternet, and portable and wireless communication devices; Interactive entertainment services, provid- ing personalized television programming; providing online and on-screen guide to personalized and interactive television programming; production and distribu- tion of television entertainment and sports programs
Attachments 78725297#TMSN.png( bytes ) 77561301#TMSN.png( bytes ) 85426280#TMSN.png( bytes ) 86016427#TMSN.png( bytes ) 85932497#TMSN.png( bytes ) 78404717#TMSN.png( bytes ) 78834732#TMSN.png( bytes ) 77494333#TMSN.png( bytes ) 85415295#TMSN.png( bytes ) TRUWWE Notice of Opposition.pdf(114523 bytes )
Signature /Christopher M. Verdini/ Name Christopher M. Verdini Date 06/06/2019
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Applicant: Xiamen Yuheng Trading Co. Serial No.: 88/100,032 Mark: TRUWWE Class: 25 Filing Date: August 31, 2018 Publication Date: February 19, 2019
______WORLD WRESTLING ) ENTERTAINMENT, INC., ) ) Opposer, ) ) Opposition No. ______v. ) ) XIAMEN YUHENG ) TRADING CO., ) ) Applicant. ) ______)
NOTICE OF OPPOSITION
World Wrestling Entertainment, Inc. (“Opposer” or “WWE”), a Delaware corporation
with its principal place of business at 1241 East Main Street, Stamford, Connecticut 06902, believes that it will be damaged by registration of TRUWWE, which is the subject of
Application Serial No. 88/100,032 (“TRUWWE Application”). As such, WWE opposes the
TRUWWE Application and requests that registration be refused. The TRUWWE Application
was filed by Xiamen Yuheng Trading Co., a China limited liability company with an address of
Jimei Dist, Room 1901, No. 25 Ninghai Yi Li Xiamen, Fujian China 361000 and authorized e-
mail addresses of [email protected] and [email protected] (“Applicant”).
As grounds in support of its opposition, Opposer asserts as follows:
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I. Introduction
1. WWE is an integrated media and entertainment company that has been involved in the sports entertainment business for over 35 years and has developed “WWE” into one of the most recognized and popular brands in global entertainment today. WWE develops unique and creative content centered around its wrestlers and presents that content under its famous “WWE” brand via its subscription network (WWE Network), television, online, and its live events.
2. At the heart of WWE’s success are the athletic and entertainment skills and appeal of its wrestlers and the consistently innovative and multifaceted storylines WWE creates for its wrestlers. WWE also licenses and sells consumer products that prominently display, among other things, its WWE trademark.
3. WWE’s unique content, for which it coined the term “sports entertainment,” is perhaps best described as an action-adventure episodic drama that is akin to an ongoing, ever- developing soap opera based around WWE’s wrestlers. WWE creates colorful characters that generally wrestle under a trademarked name and are distinctively delineated with unique persona, history, relationships, music, visual appearance, and behavior.
4. WWE promotes hundreds of “WWE” live events each year that take place in arenas and stadiums in cities around the world.
5. WWE also produces pay-per-view events, which are extensively promoted and widely attended and viewed. For example, in 2018, WWE’s marquee pay-per-view event,
WrestleMania®, took place at the Superdome in New Orleans, Louisiana, drew over 75,000
spectators from all 50 states and 67 countries, and grossed approximately $14.1 million. On
April 7, 2019, WrestleMania® took place at MetLife Stadium in East Rutherford, New Jersey, drew over 82,000 fans from all 50 states and 68 countries, and grossed approximately $16.9 million.
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6. In addition to its pay-per-view events, WWE produces television and online programs under various WWE “brands,” including “RAW®”, “Smackdown® and “NXT®”.
7. In or around February 2014, WWE launched the WWE Network, the first-ever
24/7 direct-to-consumer online video-streaming network, available in over 180 countries and territories. Currently, the WWE Network has over 1.5 million paid subscribers.
8. The WWE Network carries all of WWE’s pay-per-view events as well as
original programming. WWE also provides WWE Network subscribers with “on demand” access
to a massive and continuously growing video library of historical pay-per-view events and
television programs from WWE and its predecessors as well as footage that WWE has acquired
from third party wrestling promotions.
9. Each year, more than 7,000 hours of WWE programming can be seen in 650
million homes in more than 180 countries and territories and 35 languages.
10. Ancillary to its sports entertainment programming, WWE engages in an extensive
licensing program to create and sell products featuring its trademarks, including its WWE
trademark, copyrighted works, copyrighted characters and other intellectual property in diverse
categories including, among other things, apparel, video games, toys and DVDs. In 2018, WWE
earned over $100 million in revenues from its licensing and sale of consumer products.
II. Opposer’s WWE Marks
11. Opposer is the owner of numerous common law and registered trademarks n connection with its wrestling entertainment services and related goods and services, including clothing.
12. In particular, Opposer owns common law rights and hundreds of U.S. and international applications and registrations for “WWE” marks that are comprised of or begin
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with WWE in typed or stylized form and with or without design elements (collectively, the
“WWE Marks”). Opposer’s WWE Marks include, but are not limited to, U.S. Registration Nos.
3,538,710, 4,045,760, 4,621,480, 5,176,635, 5,261,353 in Class 25 for clothing and U.S.
Registration Nos. 2,772,683, 3,442,191, 3,541,956, 3,778,789, 4,632,692 in Class 41 for a wide variety of sports entertainment services.
13. Opposer’s WWE Marks are among WWE’s most, if not the most, recognized and valuable intellectual property assets.
14. The popularity, success, and recognition of the goods and services offered by
Opposer under its WWE Marks are the direct result of the substantial time and money invested by WWE in development, marketing and promotion of the marks. The WWE Marks are
uniquely and exclusively associated with WWE and have become indelibly linked in the public’s
mind in exclusive association with and in exclusive sponsorship by WWE.
15. WWE has continually used its WWE Marks in connection with its wrestling
entertainment services and related consumer products since at least 2002—well prior to any date
of first use upon which Applicant can rely.
16. Despite Opposer’s long and widespread use and worldwide recognition of its
WWE Marks, Applicant has filed an application to register TRUWWE in International Class 25
for “Coats; Dresses; Jumper dresses; Outer jackets; Pajamas, Petticoats; Shirts; Skirts; Skorts;
Sweaters; Swimming costumes; Swimming trunks; T-shirts; Trousers; Working overalls.”
Applicant filed the TRUWWE Application on August 31, 2018 and the Application was assigned
Serial No. 88/100,032.
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III. The Application Should Be Dismissed Because A Likelihood Of Confusion Exists
17. As described herein, Opposer’s WWE Marks are among its most recognized and
valuable intellectual property assets.
18. Applicant’s TRUWWE mark: (a) incorporates Opposer’s WWE Marks in their entirety; (b) descriptively uses the term “TRU” before incorporating Opposer’s WWE Marks which confusingly connotes that Applicant’s goods are “true” WWE goods, which they are not;
(c) is similar in sight, sound and/or commercial meaning to Opposer’s WWE Marks; and (d) is likely, when used on or in connection with the goods set forth in the TRUWWE Application, to cause confusion, or to cause mistake, or to deceive relative to Opposer’s WWE Marks within the meaning of Section 2(d) of the Lanham Act.
19. By applying for a mark that so resembles Opposer’s WWE Marks, Applicant’s
TRUWWE mark is likely to cause confusion among consumers as to Opposer’s affiliation and/or sponsorship of Applicant’s goods.
20. Accordingly, Opposer, as the owner of the WWE Marks, will be damaged if
Applicant’s TRUWWE Application matures into a registration.
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WHEREFORE, Opposer prays that the Notice of Opposition be sustained and that registration of U.S. Trademark Application Serial No. 88/100,032 be refused.
Respectfully submitted,
/s/ Christopher M. Verdini Curtis B. Krasik, Esquire Christopher M. Verdini, Esquire K&L GATES LLP K&L Gates Center 210 Sixth Avenue Pittsburgh, PA 15222 (412) 355-6500 (Telephone) (412) 355-6501 (Facsimile)
Attorneys for Opposer World Wrestling Entertainment, Inc.
June 6, 2019
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