Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA962419 Filing date: 03/25/2019
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Petition for Cancellation
Notice is hereby given that the following party has filed a petition to cancel the registration indicated below. Petitioner Information
Name Alexander D. Norris Entity Individual Citizenship UNITED KINGDOM Address 2 Homerton Grove London, E9 6BX UNITED KINGDOM
Attorney informa- FRANCELINA M. PERDOMO tion Chinta Perdomo Berks & Fratangelo LLP 17 State Street suite 4000 New York, NY 10004 UNITED STATES [email protected], [email protected] 2122741261
Registration Subject to Cancellation
Registration No. 5629281 Registration date 12/11/2018 Registrant Golden Bell Entertainment, LLC. 15 Peacock Drive Roslyn, NY 11576 UNITED STATES Email: [email protected]
Goods/Services Subject to Cancellation
Class 028. First Use: 2016/07/26 First Use In Commerce: 2017/07/12 All goods and services in the class are subject to cancellation, namely: Board games; Card games; Game cards; Party games; Plush dolls; Plush toys; Stuffed dolls and animals; Stuffed toy animals; Tabletop games; Soft sculpture plushtoys; Stuffed and plush toys Grounds for Cancellation
Priority and likelihood of confusion Trademark Act Sections 14(1) and 2(d) No use of mark in commerce before application, Trademark Act Sections 14(1) and 1(a), (c), and amendment to allege use, or statement of use (d) was filed Registrant not rightful owner of mark for identi- Trademark Act Sections 14(1) and 1 fied goods or services False suggestion of a connection with persons, Trademark Act Sections 14(3) and 2(a) living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrep- ute Fraud on the USPTO Trademark Act Section 14(3); In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009)
Mark Cited by Petitioner as Basis for Cancellation
U.S. Application 88216127 Application Date 12/04/2018 No. Registration Date NONE Foreign Priority NONE Date Word Mark WEBCOMIC NAME Design Mark
Description of NONE Mark Goods/Services Class 016. First use: First Use: 0 First Use In Commerce: 0 Comic books; Comic strips and comic strip's comic features, appearing in print media, namely, comic books, books, newspapers, magazines Class 041. First use: First Use: 2016/07/26 First Use In Commerce: 2016/07/26 Providing online non-downloadable webcomics and comic strips, books, re- views, periodicals and magazines
Attachments 88216127#TMSN.png( bytes ) 20190325_A_Petition to Cancel Webcomic Name.pdf(250947 bytes )
Signature /Francelina M. Perdomo/ Name Francelina M. Perdomo Date 03/25/2019 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Alexander D. Norris
Petitioner, Cancellation Proceeding No.:
v. Registration No: 5,629,281
Golden Bell Entertainment, LLC
Registrant.
PETITION TO CANCEL
Alexander D. Norris is a citizen and resident of the United Kingdom and the owner and president of Webcomic Name Ltd., a United Kingdom limited liability company with registered
office at 22 Heartspace, Hackney Downs Studios, Amhurst Terrace, London, United Kingdom,
E8 2B, hereinafter referred to as “Petitioner.”
Petitioner is being damaged by Registration No: 5,629,281 for “Webcomic Name” in international class 028 for Board games; Card games; Game cards; Party games; Plush dolls;
Plush toys; Stuffed dolls and animals; Stuffed toy animals; Tabletop games; Soft sculpture plush toys; Stuffed and plush toys, (the “Registered Mark”), and hereby petitions to cancel the same.
FACTUAL BACKGROUND
1. Alexander D. Norris is the creator of the very famous and internationally acclaimed “Webcomic Name” comic strip which has been featured on various webcomic sites such as Comics Blog, Bored Panda, GoComics, It’s Nice That and The Nib. Mr. Norris’ work is also well known in the United States.
2. Mr. Norris conceived the mark “Webcomic Name” in 2016 and acquired the domain name webcomicname.com to promote his works and related workshops. Webcomic
Name is a weekly comic strip featuring a character which ultimately delivers the punchline “Oh
No.” Mr. Norris also owns the copyright on the Webcomic Name comic strip and its underlying characters under registration No. VA 2-128-773.
3. In addition to Webcomic Name, Mr. Norris is also known as the creative mind behind “Dorris McComics”, a pseudonym under which he shares highly entertaining and witty humor with the public through social media.
4. Mr. Norris signed publishing agreement with a United States based publisher in
connection to several or his comics including, without limitation, Webcomic Name. The first
book is scheduled to launch in April 2019.
5. In 2017, Mr. Norris co-created a game with his friend and collaborator Jason
Wiseman which at the time was tentatively entitled Webcomic Name Game (the “Game”). The
Game became the subject of a Purchase Agreement between Mr. Wiseman (as co-creator) and
the Registrant, Golden Bell Entertainment, LLC, a New York based company (“Golden Bell”).
6. Under the Purchase Agreement, Golden Bell agreed to become the exclusive
publisher for the Game as a collective work in exchange for the payment of advances and
royalties to the creator.
7. Shortly after the Purchase Agreement was executed, Golden Bell approached Mr.
Norris insisting that he signed a Collaboration Agreement to purportedly assign additional rights
2 to Golden Bell solely in connection to the Game1. At the time Mr. Norris signed the
Collaboration Agreement the Game did not have a definite but was tentatively entitled
“Webcomic Name Game.” Mr. Norris was not represented by counsel at the time he executed the
Collaboration Agreement with Golden Bell.
8. A quick review of the Collaboration Agreement shows that it is inadequate, particularly as a vehicle to transfer any rights on the Mark “Webcomic Name.” The Agreement
fails to mention numerous material terms, including without limitation, valid consideration and a
final and definite trademark that could potentially be subject to licensing of additional rights the
“works” subject to the agreement had tentative names and thus, Mr. Norris could have not transferred the rights on a trademark that was not clearly identified in the Agreement. The terms embodied in the Agreement were not sufficiently definite, by any stretch, to create a binding contract between the parties that would ultimately transfer additional rights in the Game.
9. Moreover, Golden Bell Entertainment, LLC fails to provide for valid consideration that would secure a purported transfer of additional rights in the Game for the benefit of Golden Bell.
10. Nonetheless, even if the Agreement is binding, which it is not, the Purchase
Agreement from which the Collaboration Agreement emanates is currently being challenged in the case Jason Wiseman d/b/a Jason Anarchy Games and Wiseman Innovation v. Marc Goldner,
Golden Bell Entertainment LLC, and Golden Bell Studios LLC, Case 1:19-cv-01282-AJN, pending in the Southern District of New York.
1 The Purchase Agreement assigns the rights to the game Webcomic Name Game to Golden Bell as a collective work provided Golden Bell acts as publisher, commercially exploits the work, pays royalties to the creators and overall acts in the best interest of all parties.
3
11. More importantly, the Collaboration Agreement did not assign the “Webcomic
Name” trademark to Registrant, but acknowledged that Petitioner is “known as Alex Norris of
Webcomic Name” and that the transfer of Petitioner’s interest in the game tentatively named
“Webcomic Name Game” would not impact Petitioner’s rights “to pursue his comic ‘Webcomic name’ outside of the context of this agreement.”
12. Since at least 2016, Mr. Norris has been using the “Webcomic Name” mark
(“Petitioner’s Mark”), which has become an integral part of his presence and has been consistently used in connection to his artwork, comic strips, pins, workshops and Webcomic
Name Facebook, Twitter and Instagram pages as well as at various conventions throughout the country. Petitioner’s Mark has been associated with Mr. Norris and his work for close to three years and is recognized by his increasing half a million followers in social media alone.
13. Petitioner is the sole and exclusive owners of Mark “Webcomic Name” and have been using it in commerce since at the latest July 26, 2016.
14. Examples of such uses in commerce of Petitioner’s Mark include but are not limited to:
a. Conventions: Petitioner had sold pins and prints of the comic strips, including
Webcomic Name at the Boston Comic Con, held between August 13-14th, 2016
and at the Planet Comic Con in Kansas City, held between April 28-30th, 2017.
b. Print and newspapers: In February 2018, a “Webcomic Name” comic by Mr.
Norris was featured in the New York Times, Sunday Times magazine.
c. Conferences and festivals: On September 8th 2018 and November 8th 2018,
Petitioner, Mr. Norris distributed pins and gave talks, marking his mark
4
Webcomic Name at the XOXO Festival in Portland, Oregon and at the
Pictoplasma Conference in New York City.
15. Through Petitioner’s advertising and promotion of their products and services,
Petitioner’s Mark has acquired valuable recognition and consequently, good will.
16. Even if the agreement is considered valid, which is not, it is at best a failed attempt on behalf of Golden Bell to obtain limited license of the name “Webcomic Name Game” for use in connection with the table card game that Mr. Norris co-created with Jason Wiseman.
17. Petitioner believes that as no identifiable mark was licensed since the agreement refers only to the assignment of copyrights to a tentatively named “Webcomic Name Game” and tentatively named “Webcomic Name Stuffed Animals”, said limited trademark license, if any, is invalid.
18. Petitioner has continued to develop the “Webcomic Name” trademark and to use it in connection to his web works, comic-making workshops at conventions and fairs in the
United States and abroad, and has been preparing the publication of his comic works in a book format under the mark “Webcomic Name”. Prior to signing the Collaboration Agreement Mr.
Norris informed Marc Goldner of Golden Bell that Petitioner had no interest in any general assignments besides the copyright in the game.
19. On November 30, 2017, without Mr. Norris’ knowledge and consent, Golden Bell applied for the registration of the trademark “Webcomic Name”.
20. The mark is identical to Petitioner’s Mark and the goods covered are highly related to Petitioner’s current commercialization and marketing of his artwork, comic strips and workshops. The targeted consumers and distribution channels are the same or closely related.
5
21. In November 2018, Mr. Norris learned for the first time back that Golden Bell had
pursued this application without Mr. Norris’ knowledge and consent.
22. Petitioner has applied for the registration of Webcomic Name with the USPTO for
the services of providing online non-downloadable webcomics and comic strips, books, reviews,
periodicals and magazines in international class 041 and for comic books; comic strips and
comic strip's comic features, appearing in print media, namely, comic books, books, newspapers,
magazines in international class 016, Application Serial No. 88/216,127. The application is
currently pending.
GROUNDS FOR CANCELLATION
I. Priority and Likelihood of Confusion
23. The targeted customers and existing customers of both Registrant and Petitioner
are the same. The registered mark, “Webcomic Name”, is identical to Petitioner’s Mark,
“Webcomic Name.”
24. Registrant’s use of the Mark will create confusion, mistake, or deception resulting in damage and injury to Petitioner. Under the Purchase Agreement, Registrant at best has a license as publisher of the Game to use Petitioner’s Mark, “Webcomic Name” solely in connection with Registrant’s commercialization activities regarding the Game.
25. Petitioner Norris is a well-known artist with hundreds of thousands social media
followers. Consumers all over the world, including in the United States associate Mr. Norris with the Mark “Webcomic Name” and would likely perceive Registrant’s Mark and any underlying comics, books, plush animals, stickers, etc. to be associated with, offered by, or sponsored by
Petitioner. Such confusion would inevitably result in damage to Petitioner.
6
26. Registrant’s Mark so resembles Petitioner’s Mark as, when applied to artwork, comics, books, plush toys, etc., to cause confusion, or to cause mistake, or to deceive in violation of 15 U.S.C. §1052(d).
Therefore, to avoid consumers’ confusion Registrant’s mark should be canceled.
II. No Use of Mark in Commerce Before Application
27. Registrant’s application for Registrant’s Mark in Class 28 was based on actual use in commerce of Applicant’s Mark on board games; plush dolls; plush toys; stuffed dolls and animals; stuffed toy animals; tabletop games; stuffed and plush toys; and trading card games.
28. Upon information and belief, Registrant’s has not used the Mark in commerce prior to the filing of the application in connection to the applied for goods.
29. Specifically, upon information and belief, at the time Registrant filed the required specimens of use, Registrant was not selling the goods in commerce and it had not printed the game and/or mass produced the plush toys for sale. Upon information and belief, Registrant merely uploaded a picture of the game prompting consumers to “pre-order” as well as a single plushie of the main character in the Game; however, these goods were not and are currently not being sold in commerce.
III. Applicant is Not the Rightful Owner of the Mark
30. Petitioner is the rightful owner of the mark “Webcomic Name”, which Mr. Norris has been using in commerce for close to three years. Petitioner Norris never made a blanket assignment of rights in the Mark “Webcomic Name” to Registrant. Registrant is not and never was the rightful owner of the Mark “Webcomic Name.” Therefore, Golden Bell’s Webcomic
Name registration should be canceled.
IV. Fraudulent Specimen and Declaration
7
31. In its trademark application, Mr. Goldner as the principal of Registrant made a number of fraudulent statements and submissions to the USPTO, including:
i. Registrant submitted a declaration by Marc Goldner which falsely states that Mr.
Goldner is the owner of the trademark sought to be registered. Marc Goldner
made this statement knowing that Petitioner never assigned Petitioner’s Mark
“Webcomic Name” to Registrant.
ii. Registrant submitted a declaration by Marc Goldner falsely stating that to the best
of Goldner’s “knowledge and belief, no other persons, except, if applicable,
concurrent users, have the right to use the mark in commerce, either in the
identical form or in such near resemblance as to be likely, when used on or in
connection with the goods/services of such other persons, to cause confusion or
mistake, or to deceive.” Petitioner asserts that the declarant made this statement
knowing that Petitioner had the right to use and was using the identical mark in
commerce on goods that would cause confusion.
iii. Registrant submitted a declaration by Marc Goldner falsely stating that all of the
facts recited in the application were accurate. Yet declarant knew this to be
untrue.
32. In Registrant’s Statement of Use filed on October 9, 2018, Registrant and
Declarant, Marc Goldner, made a number of false and fraudulent statements and submissions to the USPTO, including:
i. Registrant falsely stated that its first use of the Mark (or that of its related company or
licensee predecessor in interest) was as early as June 26, 2016 and that he first use in
8
commerce was on July 12, 2017. Petitioner asserts that Registrant made this statement
fraudulently, knowing that no predecessor or licensee of Registrant has used the mark.
ii. Registrant falsely stated that the mark was in use in commerce at the time of the
application in connection with all the goods/services in the application. iii. Registrant submitted a declaration by Marc Goldner falsely stating that he is the
owner of the trademark sought to be registered. On information and belief, Petitioner
asserts that Registrant submitted this statement fraudulently, knowing that Petitioner is
the rightful owner of the mark Webcomic Name and that he never assigned Petitioner’s
Mark to Registrant. iv. Registrant submitted a declaration by Marc Goldner falsely stating that all of the facts
recited in the application are accurate. On information and belief, Petitioner asserts that
the declarant made this statement fraudulently, knowing the facts identified in Sections
21(a), (b) and (c) are false.
v. Petitioner submitted a declaration by Marc Goldner falsely stating that to the best
of Goldner’s “knowledge and belief, no other persons, except, if applicable, concurrent
users, have the right to use the mark in commerce, either in the identical form or in such
near resemblance as to be likely, when used on or in connection with the goods/services
of such other persons, to cause confusion or mistake, or to deceive.” On information and
belief, Petitioner asserts that the declarant made this statement fraudulently, knowing that
the Petitioner had the right to use and was using the identical mark in commerce on goods
that would cause confusion.
Registrant’s mark should be canceled due to Registrant’s fraudulent submissions.
9
WHEREFORE, Petitioner believes that he will be damaged by Registrant’s Mark and prays that the Registrant’s Mark be cancelled.
Dated: New York, NY March 25, 2019 Respectfully submitted, /Francelina M. Perdomo/ Chinta Perdmo Berks & Fratangelo LLP 17 State Street, Suite 4000 New York, NY 10004 [email protected] Attorneys for Petitioner
10
Certificate of Service
Pursuant to C.R.F. § 2.111, I hereby certify that on March 25, 2019 a true and correct copy of the foregoing Petition to Cancel was served on Registrant Golden Bell Entertainment, LLC, by depositing same in a properly sealed, postpaid envelope, in an official depository under the exclusive care and custody of the United States Postal Services within the State of New York addressed to:
Golden Bell Entertainment, LLC c/o Marc Goldner 15 Peacock Drive Roslyn, NY 11576
Dated: March 25, 2019
/Antoaneta V. Tarpanova/
Chinta Perdmo Berks & Fratangelo LLP 17 State Street, Suite 4000 New York, NY 10004 [email protected] Attorneys for Petitioner
11