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Estta1107690 01/13/2021 in the United States Patent And Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1107690 Filing date: 01/13/2021 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91243941 Party Plaintiff Viacom International Inc. Correspondence SANDRA EDELMAN Address DORSEY & WHITNEY LLP 51 WEST 52ND STREET NEW YORK, NY 10019 UNITED STATES Primary Email: [email protected] Secondary Email(s): [email protected], [email protected], sun- [email protected], [email protected] 212-415-9200 Submission Testimony For Plaintiff Filer's Name Bruce Ewing Filer's email [email protected], [email protected], [email protected] Signature /Bruce Ewing/ Date 01/13/2021 Attachments REDACTED Declaration of Thomas Kingsley.pdf(175496 bytes ) Kingsley PUBLIC Exhibits 1 through 14.pdf(2140321 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD In the Matter of Application Serial No. 87/766,798 Mark: DOUBLE DARE VIACOM INTERNATIONAL INC., Opposition No. 91243941 Opposer, v. ARMSTRONG INTERACTIVE, INC., Applicant. DECLARATION OF THOMAS KINGSLEY I, Thomas Kingsley, hereby declare and state as follows: 1. I am Director, Nickelodeon Experience at Viacom International Inc. (“Viacom”). I make this declaration based on personal knowledge of the matters stated herein and the business records of Viacom, except to the extent the context indicates otherwise. 2. I have been employed by Viacom since March 2013 and have worked on a wide variety of live shows, tours, and other in-person experiences. Prior to joining Viacom, I was the Marketing Coordinator for Blue Man Productions, and before that, I was International Production Assistant for Disney Theatrical Group. 3. Since 1986, Viacom has aired various iterations of DOUBLE DARE shows, including Double Dare, Super Sloppy Double Dare, Family Double Dare, Double Dare 2000, and a 2018 reboot of Double Dare (collectively “DOUBLE DARE Programming”). In addition, Viacom has used the DOUBLE DARE trademark in connection with live events, touring shows, consumer goods, and has made the DOUBLE DARE Programming available for download. As part of my job responsibilities, I have become very familiar with Viacom’s use of the DOUBLE DARE trademark in relation to live shows and consumer goods, as well as digital downloads of DOUBLE DARE Programming. DOUBLE DARE Live Events 4. In addition to DOUBLE DARE Programming, Viacom hosts various live performances, events, and activities incorporating the DOUBLE DARE trademark. For example, Double Dare Live, a touring gameshow that followed the general format of the DOUBLE DARE Programming, toured the United States from 1992 to 1994. 5. In May 2012, Viacom began hosting a live DOUBLE DARE event, Double Dare Live, at Nickelodeon Suites Resort in Orlando, Florida (the “Nick Hotel”). Specifically, Studio Nick at the Nick Hotel featured the Double Dare Live show, in which participants from the crowd were selected to play the game popularized through DOUBLE DARE Programming, featuring rounds of trivia questions and messy physical challenges. 6. 2 7. In addition to hosting Double Dare Live events at the Nick Hotel, Viacom hosted a number of live DOUBLE DARE events at various venues across the country. Some live DOUBLE DARE events were private events for advertising sales clients, while others were open to the public. Below are examples of live DOUBLE DARE events. 8. Viacom hosted a series of live activations at sporting events involving ’90s Nickelodeon properties, including DOUBLE DARE. As an example, attached hereto as Exhibit 2 is a true and correct copy of a flyer for a Double Dare LIVE! show that occurred at a Brooklyn Cyclones v. Staten Island Yankees game on August 27, 2014 in Coney Island, NY. This flyer was created and kept in the regular course of Viacom’s business by individuals whose responsibilities encompassed the creation and dissemination of such materials. As the schedule of the event shows, in addition to the Double Dare LIVE! show, Viacom aired clips from DOUBLE DARE Programming during the second, third, sixth and eighth innings. Each player 3 on the Brooklyn Cyclones team wore a custom DOUBLE DARE-themed jersey and Viacom made custom trophies for the winners of the Double Dare LIVE! show. This event was used to promote the late-night programming block on TeenNick (a television network owned and operated by Viacom) called “The ’90s Are All That,” which was on air at the time and featured Nickelodeon’s iconic 1990s hits, including DOUBLE DARE Programming. This document is Bates-numbered VIA_00000101-107 and was produced by Viacom in this action. 9. In addition to the Double Dare LIVE! event at the Brooklyn Cyclones game, Viacom hosted other events using the DOUBLE DARE trademark in 2014. Attached hereto as Exhibit 3 is a true and correct copy of the 2014 Nickelodeon Event Calendar. The calendar is kept in the regular course of Viacom’s business to track the date of scheduled events, the groups within Viacom who are responsible for each event, the location of each event, and the client for whom each event is being conducted by individuals with responsibilities for such events. As shown in the calendar, in 2014, Viacom hosted live DOUBLE DARE events in New York and Chicago in the months of July, August and October. This 2014 Events Calendar is Bates- numbered VIA_00006465-6468 and was produced by Viacom in this action. 10. In 2015, Viacom continued to host private and public DOUBLE DARE events. As an example, attached hereto as Exhibit 4 is a true and correct copy of an executed agreement relating to a DOUBLE DARE event that occurred at The Edison Ball Room in New York City on July 29, 2015 that was created and executed in the regular course of Viacom’s business. This agreement is Bates-numbered VIA_00008001-8016 and was produced by Viacom in this action. As another example, attached hereto as Exhibit 5 is a true and correct copy of a script for a Double Dare LIVE! event that occurred at the Chicago House of Blues on October 1, 2015. This document is Bates-numbered VIA_00000121-137, was created and kept in the regular course of 4 Viacom’s business by individuals with responsibility for such events and was produced by Viacom in this action. 11. Starting in 2016, Viacom used the DOUBLE DARE Mark in connection with recurring live DOUBLE DARE events at the Mall of America in Bloomington, Minnesota. The Mall of America features Nickelodeon Universe, a theme park featuring several of Nickelodeon’s most recognized brands, including DOUBLE DARE. From June to August 2016, the Mall of America hosted “DOUBLE DARE Challenge,” a live version of the iconic Double Dare gameshow, at Nickelodeon Universe. DOUBLE DARE Challenge events have occurred at Nickelodeon Universe in the Mall of America at least once a year since then. In 2017, the DOUBLE DARE Challenge ran from June to September. In 2018, to celebrate the ten-year anniversary of the Nickelodeon Universe and the Double Dare reboot, the DOUBLE DARE Challenge was held from March to April, again from June to August, and then in October Viacom hosted a special “Double Scare Edition” of the DOUBLE DARE Challenge. In 2019, the Mall of America hosted the DOUBLE DARE Challenge from March to April and June to August. In 2020, DOUBLE DARE Challenge events were scheduled to occur in March to April, June to August, and in September and October, but the events were cancelled due to the COVID- 19 pandemic. 12. Also in 2016, For example, Attached hereto as Exhibit 6 is a true and correct copy of an email thread between me and a production company, dating back to March 30, 2016, in which we discussed 5 This email thread is Bates-numbered VIA_0000645-660, was created and/or sent in the regular course of Viacom’s business and was produced by Viacom in this action. The email thread also shows that in April 2018, 13. On July 22, 2016, Viacom hosted a Double Dare Live event at Fluxx Nightclub in San Diego California as part of San Diego Comic-Con. The event was a live gameshow that followed the same structure as the DOUBLE DARE Programming, but performed in front of a live audience. The original host of the DOUBLE DARE Programming, Marc Summers, even hosted the event. The event was also streamed on Facebook through Viacom’s account associated with The Splat, a late-night programming block on TeenNick that was airing episodes of DOUBLE DARE Programming at the time. 14. Following the success of the San Diego Comic-Con Double Dare Live event, Around the same time, Viacom was successfully marketing other live tours based on intellectual property rights that it owned or licensed exclusively and was looking for opportunities to expand its live tour offerings. Attached hereto as Exhibit 7 is a true and correct copy of a presentation from July 25, 2017 I prepared the presentation as part of my regular responsibilities at Viacom; it 6 was kept in the regular course of Viacom’s business This presentation is Bates-numbered VIA_00000165 and was produced by Viacom in this action. 15. Attached hereto as Exhibit 8 is a true and correct copy of the executed agreement The agreement is Bates-numbered VIA_00001940-1987 and was produced by Viacom in this action. Viacom’s Licensing of the DOUBLE DARE Mark for Use on Consumer Products 16. Viacom routinely licenses its DOUBLE DARE trademark for use on a variety of consumer goods. Under a typical license, Viacom will authorize a licensee to use the DOUBLE DARE mark on goods defined in a license agreement in exchange for compensation from the licensee.
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