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Martin Scorsese Set to Direct Frank Sinatra Biopic 5/14/09, 9:27 Am EST

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Martin Scorsese Set to Direct Frank Sinatra Biopic 5/14/09, 9:27 Am EST Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA326568 Filing date: 01/13/2010 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 Frank Sinatra Enterprises, LLC Granted to Date 01/13/2010 of previous extension Address 3400 West Olive Ave Burbank, CA 91505 UNITED STATES Attorney James D. Weinberger information Fross Zelnick Lehrman & Zissu, P.C. 866 United Nations Plaza6th Floor New York, NY 10017 UNITED STATES [email protected], [email protected] Phone:212-813-5900 Applicant Information Application No 77717940 Publication date 09/15/2009 Opposition Filing 01/13/2010 Opposition 01/13/2010 Date Period Ends Applicant Oliveira, Michael 8471 SW 100 Street Miami, FL 33156 UNITED STATES Goods/Services Affected by Opposition Class 041. First Use: 2008/08/21 First Use In Commerce: 2008/08/21 All goods and services in the class are opposed, namely: Entertainment services, namely, participation in boxing contests Grounds for Opposition False suggestion of a connection Trademark Act section 2(a) Mark Cited by Opposer as Basis for Opposition U.S. Application/ NONE Application Date NONE Registration No. Registration Date NONE Word Mark CHAIRMAN OF THE BOARD Goods/Services Entertainment services Attachments Notice of Opposition (FILED) (F0566135).PDF ( 12 pages )(593057 bytes ) Certificate of Service The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address record by First Class Mail on this date. Signature /s/ James D. Weinberger Name James D. Weinberger Date 01/13/2010 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD In the Matter of Application Serial No. 77/717,940 Mark: CHAIRMAN OF THE BOARD Published in the Official Gazette on September 15, 2009 Filed: April 20, 2009 FRANK SINATRA ENTERPRISES, LLC Opposer, -against- MICHAEL OLIVEIRA, Applicant. NOTICE OF OPPOSITION Frank Sinatra Enterprises, LLC (“Opposer”), a Delaware limited liability company, believes that it will be damaged by the issuance of a registration for the mark CHAIRMAN OF THE BOARD to Michael Oliveira (“Applicant”), applied for in Application Serial No. 77/717,940 for entertainment services in International Class 41 and therefore opposes the same pursuant to Section 13(a) of the Lanham Trademark Act of 1946, 15 U.S.C. § 1063(a). As grounds therefor, Opposer alleges as follows: A. OPPOSER AND THE “CHAIRMAN OF THE BOARD” NAME 1. Frank Sinatra, who began his career in the entertainment industry in 1935, is among the most influential and renowned musical artists and actors in history, having recorded more than 1,300 songs, acted in more than 50 motion pictures, and received a large number of awards and tributes, including an Academy Award and numerous Grammy Awards. 2. Opposer—which is owned in part by Mr. Sinatra’s three children, Tina, Nancy and Frank, Jr.—holds the exclusive right to commercially exploit Mr. Sinatra’s name and {F0564272.1 } likeness and has exclusive control over his Sinatra-related trademarks. In addition, Opposer owns and/or controls the majority of Mr. Sinatra’s audio and video recordings, including many live performances by Mr. Sinatra all over the world. 3. For over forty years, Mr. Sinatra has been referred to as “The Chairman of the Board” in connections with many projects and media outlets, including motion pictures, music, television appearances, publicity tours, merchandise, press releases, press articles, interviews, and the like. As a result, Mr. Sinatra has become synonymous with his famous nickname, “The Chairman of the Board.” 4. By way of example only, when the United States Postal Service immortalized Mr. Sinatra on a postal stamp in 2008, its press release stated that it was “celebrating the return of the ‘Chairman of the Board’—Frank Sinatra.” See Exhibit A. A May 2009 article in Rolling Stone magazine (Exhibit B) noted how acclaimed director Martin Scorsese would be directing biographical motion picture about Mr. Sinatra. The article states: Director Martin Scorsese has been handed the reigns of a biopic about legendary singer Frank Sinatra. Universal Pictures and Mandalay Pictures will produce the film; the companies acquired both the life rights and music rights of the Chairman of the Board. 5. In light of the duration and wide-spread nature of Mr. Sinatra’s association with the name “The Chairman of the Board,” there can be no question that the name is famous in connection with Mr. Sinatra. Moreover, the “Chairman of the Board” name is uniquely and unmistakably associated with Mr. Sinatra, such that it constitutes his name or identity. B. APPLICANT AND HIS “CHAIRMAN OF THE BOARD” APPLICATION 6. Upon information and belief, Applicant is an individual residing at 8471 SW 100 Street, Miami, Florida 33156, who participates in boxing competitions under the name “Chairman of the Board.” {F0564272.1 } 2 7. On April 20, 2009, Applicant filed an application with the U.S. Patent and Trademark Office to register the mark CHAIRMAN OF THE BOARD in International Class 41 for “Entertainment services, namely participation in boxing contests,” based on first use date of August 21, 2008. 8. Upon information and belief, Applicant is using (and seeking to register) the mark CHAIRMAN OF THE BOARD for the purposes of falsely suggesting a connection with Mr. Sinatra. Indeed, the homepage for Applicant’s website, www.michaeloliveira.com, plays an audio recording of Mr. Sinatra singing “This Town” as it provides photographs and links for information concerning Applicant’s boxing career. 9. Opposer has no connection to the activities performed by Applicant under the “Chairman of the Board” name. FIRST CLAIM FOR RELIEF UNDER LANHAM ACT SECTION 2(a) (FALSE SUGGESTION WITH PERSONS, LIVING OR DEAD) 10. Opposer repeats and re-alleges each and every allegation contained in Paragraphs 1 through 9 as if fully set forth herein. 11. Since the late 1960s, Mr. Sinatra has been known throughout the world as “The Chairman of the Board,” in connection with his legendary entertainment career. “The Chairman of the Board” name is famous in connection with Mr. Sinatra and is uniquely and unmistakably associated with Mr. Sinatra such that it constitutes his name or identity. 12. Applicant seeks to use the same name or identity—“Chairman of the Board”—in connection with his “entertainment services,” namely boxing contests. 13. Upon information and belief, when Applicant uses the name “Chairman of the Board” in connection with his entertainment services, the public presumes a connection to Mr. {F0564272.1 } 3 Sinatra. But Opposer has no connection to the activities performed by Applicant under the “Chairman of the Board” name. 14. Thus, Applicant’s mark CHAIRMAN OF THE BOARD falsely suggests a connection with persons, living or dead, namely, Frank Sinatra. 15. Registration of the CHAIRMAN OF THE BOARD mark in connection with the services set forth in Application Serial No. 77/717,940 therefore violates Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a). 16. By reason of the foregoing, Opposer is likely to be harmed by a registration of Application serial No. 77/717,940 for the mark CHAIRMAN OF THE BOARD. THEREFORE, it is respectfully requested that this Opposition be sustained and that registration of the mark shown in Application Serial No. 77/717,940 be refused in its entirety. Dated: New York, New York FROSS ZELNICK LEHRMAN & ZISSU, P.C. January 13, 2010 By:___________________________________ James D. Weinberger Jason D. Jones 866 United Nations Plaza New York, New York 10017 Tel: (212) 813-5900 Email: [email protected] [email protected] Attorneys for Opposer Frank Sinatra Enterprises, LLC {F0564272.1 } 4 EXHIBIT A {F0564272.1 } 5 EMBARGOED FOR RELEASE Media Contacts: Mark Saunders 2 p.m. ET, May 7, 2008 (O) 202-268-6524 (C) 202-320-0782 [email protected] Roy Betts (0) 202-268-3207 (C 202 256-4176 [email protected] usps.com/news Release No. 08-050 Postal Chairman of the Board to Deliver ‘The’ Chairman of the Board Frank Sinatra Stamp to be issued May 13 Special Ceremonies in New York City, Las Vegas and Hoboken, NJ WASHINGTON, DC—Frank Sinatra’s children will join U.S. Postal Service Board of Governors Chairman Alan Kessler May 13 to celebrate the return of the “Chairman of the Board” — Frank Sinatra — as he is immortalized on 120 million 42-cent First-Class stamps. The Frank Sinatra commemorative stamp will be available nationwide that day with the younger Sinatras participating in dedication ceremonies taking place in New York City, Las Vegas and Hoboken, NJ. The events take place on the eve of the 10th anniversary of Sinatra’s death and are free and open to the public. “The Postal Service is proud to honor a legendary American and one of the world’s greatest entertainers,” said Kessler. “Frank Sinatra was our nation’s first modern entertainment superstar. He was, as they say, ‘the complete package.’ He had looks and charm, talent and skill, creativity, tenacity and style. His music and movies reflected — and helped to shape — the passion and fighting spirit of our nation. From concert performer, to recording artist, to motion picture star, Sinatra set the standard for excellence in his day and for generations to come.” • Beginning at 10 a.m. ET, Nancy Sinatra, her daughter A.J. Lambert and Frank Sinatra, Jr., will join Kessler and Rep. José E. Serrano (D-NY) in a first-day-of-issue ceremony at Gotham Hall, 1356 Broadway in New York City. Serrano has a close connection to “Ol’ Blue Eyes,” as he learned to speak English from listening to his father’s Sinatra records.
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