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

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EXHIBIT A

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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. • At 3 p.m. ET (noon PT), Tina Sinatra will join Postal Service Governor James Bilbray in dedicating the stamp in Las Vegas at the Bellagio fountains main alcove on Las Vegas Boulevard. Frank Sinatra stamp artist Kazuhiko Sano will also participate in this first-day-of-issue ceremony. • At 3 p.m. ET, Frank Sinatra, Jr., will join Rep. Albio Sires (D-NJ) and USPS Northern New Jersey District Manager Maria Morse in a first-day-of-sale ceremony in Hoboken, NJ, Sinatra’s hometown. The event takes place at Pier A Park at 1st Street and Frank Sinatra Drive. The park is located near the Hoboken Post Office, which was renamed the Frank Sinatra Post Office in 2002. They will unveil a 10-ft. image of the stamp with the New York City skyline in the background.

Art director Richard Sheaff of Scottsdale, AZ, worked with stamp artist Kazuhiko Sano of Mill Valley, CA, to create the image based on a 1950s photograph of the entertainment icon. The stamp depicts Sinatra’s charismatic smile, trademark fedora and cobalt blue eyes that earned him the nickname “Ol’ Blue Eyes.” Sinatra’s autograph also appears on the stamp.

In a 60-year career studded with accolades, Sinatra won several Grammys, received the Jean Hersholt Humanitarian Award in 1971, and was recognized at the Kennedy Center Honors in 1983. Sinatra gave generously to many charities http://www.usps.com/communications/newsroom/2008/sr08_050.htm Page 1 of 3 and was noted for his philanthropy. President Reagan awarded him the Presidential Medal of Freedom in 1985. Sinatra was born in Hoboken, NJ, in 1915. He died in 1998.

Frank Sinatra Backgrounder

An Oscar-winning actor who appeared in more than 60 motion pictures, Frank Sinatra was even more celebrated as a singer, admired the world over as a supreme interpreter of American popular song.

The son of Italian immigrants, Francis Albert Sinatra was born Dec. 12, 1915, in Hoboken, NJ. As a boy he would sit on the docks, staring across the Hudson River at New York City’s skyline, pondering his future. Decades later, when he first sang the theme from “New York, New York,” Sinatra might have remembered those times as he belted the line, “If I can make it there, I’ll make it anywhere.” By then, he had long since become an iconic figure, known as much for his visual image — particularly the jauntily cocked fedora and loosened collar of his classic album covers — as for his music.

Street Corner Singer Inspired by Bing Crosby, a major vocalist of the 1930s, the youthful Sinatra set his sights on a career in music and began singing on street corners with friends. In 1935, he and three others auditioned for Major Bowes’ Amateur Hour, a popular radio program of its day. They performed as the “Hoboken Four” and won the talent contest.

After touring for a season with the Hoboken Four, Sinatra decided to go it alone. In 1939, he was singing at a roadhouse in New Jersey when trumpeter and bandleader Harry James hired him to sing with his orchestra. He made his first appearance with the James band in June 1939 and soon made his first commercial recording, “From the Bottom of My Heart.”

Months after signing with James, Sinatra was invited by Tommy Dorsey to sing with his band. He sang with the famous trombonist, who then led one of the top swing bands in the country, from January 1940 to September 1942. Six months after joining the Dorsey orchestra, he hit number one with “I’ll Never Smile Again.” Other hits with Dorsey included “Polka Dots and Moonbeams” and “The Song Is You.”

America’s First Pop Icon Sinatra made his breakthrough appearance as a solo performer on Dec. 30, 1942, when he debuted in New York at the Paramount Theater. The hysteria set off by his fans made headlines, and within weeks he had signed recording, movie and radio contracts.

In this phase of his career, Sinatra was known primarily as a sensitive crooner whose musical style was perfect for the World War II era, when many couples were separated by circumstance. He worked hard at making his singing as conversational as possible and giving the melody and lyrics a flowing, surprisingly unbroken quality.

His wholehearted embrace of the technology of sound recording enhanced Sinatra’s talent. He effectively used the microphone, which brought intimacy and articulation to the forefront of the art of popular singing, as a prop to convey emotion and to expand his dynamic range.

Academy Award Winner Highlights among Sinatra’s early musical films include Anchors Aweigh (1945) and On the Town (1949). In 1946, he received a special Academy Award for The House I Live In, a short film arguing in favor of racial and religious tolerance. In 1953, Sinatra’s popularity soared to new heights with the release of From Here to Eternity, in which he proved that he was an outstanding dramatic actor, winning an Academy Award for his supporting role as Maggio, a scrappy Italian-American soldier. For his dramatic performance in The Man With the Golden Arm (1955), Sinatra received a Best Actor nomination. Other highlights of his film career include the musicals Young at Heart (1955), Guys and Dolls (1955), High Society (1956), Pal Joey (1957), and Can-Can (1960). He also excelled in non-singing roles in films such as the crime caper Ocean’s Eleven (1960) and The Manchurian Candidate (1962), a political thriller that addressed the Cold War.

Darker, Emotional Singer Musically, Sinatra had entered another phase in the 1950s, an era that is generally considered his greatest period. The boyish crooner evolved into a deeper, more personal interpreter of pop songs who conveyed the meaning of a lyric with intensity and remarkable nuance. Sinatra had begun to express darker emotions that had not been previously acceptable, thus paving the way for the aggressive style of singers in the rock era. At the same time, his rhythmic acuity intensified, so that he sang with finger-snapping confidence that made him seem the essence of “cool” — a shift that mirrored postwar America’s newfound swagger.

“Concept Album” Pioneer Sinatra did much to establish and preserve the great American songbook. He gave the classic songs new life by almost single-handedly inventing the pop album format. As the new medium of the long-playing record developed, Sinatra http://www.usps.com/communications/newsroom/2008/sr08_050.htm Page 2 of 3 pioneered what was later known as the “concept album” — a musical album created entirely around a single concept. Collaborating with such legendary arrangers as Nelson Riddle, Billy May and Gordon Jenkins, as well as personally choosing the songs for each album, the order in which they would appear, the microphone placement for the instruments — and in some cases even conducting the orchestra himself — Sinatra made some of his most important and inspired musical works.

From 1955 to 1958, he released several albums now considered classics, including In the Wee Small Hours (1955), a selection of torch songs; Songs for Swingin’ Lovers! (1956), containing “I’ve Got You Under My Skin,” a favorite of many fans; A Swingin’ Affair! (1957); and Frank Sinatra Sings for Only the Lonely (1958). Sinatra said the latter collection of moody ballads, including his signature “saloon songs,” “Angel Eyes” and “One for My Baby (and One More for the Road),” was his favorite.

Sinatra formed his own recording company, Reprise, in late 1960, and around this time became known as the “Chairman of the Board.” Now in his late 40s, Sinatra was famous not only for his musical talent and acting ability, but as the central figure in the so-called “Rat Pack,” a professional and personal circle that included Dean Martin, Peter Lawford, Sammy Davis, Jr. and Joey Bishop. During this period, Sinatra became closely identified with Las Vegas, which he helped to popularize as an entertainment center.

Versatile Performer In the 1960s, Sinatra worked in almost every conceivable setting, from the great jazz orchestras of Count Basie (It Might as Well Be Swing, 1964) and Duke Ellington (Francis A. & Edward K., 1967) to the semi-symphonic settings of Sinatra & Strings (1962) and The Concert Sinatra (1963) to the gentle bossa nova of Francis Albert Sinatra & Antonio Carlos Jobim (1967) and the jukebox pop of Strangers in the Night (1966) and My Way (1969).

Later in his career, Sinatra became an elder statesman on the music scene, and was known by the nickname “Ol’ Blue Eyes.” In 1985, he was awarded the Presidential Medal of Freedom by President Ronald Reagan. He had a number- one selling hit with Duets (1993), a collection of 13 standards pairing him with singers such as Tony Bennett, Gloria Estefan and Bono of U2.

Sinatra is widely regarded by singers, musicians, critics and fans as the single most important and influential performer of the American popular song. In a career studded with accolades, he won several Grammys, received the Jean Hersholt Humanitarian Award in 1971 and was recognized at the Kennedy Center Honors in 1983. Sinatra gave generously to many charities and was noted for his philanthropy. He died May 14, 1998, at age 82.

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Please Note: For broadcast quality video and audio, photo stills and other media resources, visit the USPS Newsroom at www.usps.com/communications/newsroom/welcome.htm/. A high-resolution image of the Frank Sinatra stamp is available for media use only at: http://www.usps.com/communications/newsroom/2008stamps/downloadcenter.htm

An independent federal agency, the U.S. Postal Service is the only delivery service that visits every address in the nation — 146 million homes and businesses. It has 37,000 retail locations and relies on the sale of postage, products and services to pay for operating expenses, not tax dollars. The Postal Service has annual revenues of $75 billion and delivers nearly half the world’s mail.

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EXHIBIT B

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Previous Next Latest Martin Scorsese Set to Direct Frank Sinatra Biopic 5/14/09, 9:27 am EST

Photo: Stogle/Michael Ochs Archive/Getty

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. “We have dreamt of making a movie about Frank Sinatra, and Marty Scorsese is undeniably the perfect vision keeper for this project,” Mandalay chairman Peter Guber said in a statement.

The Sinatra biopic is one of many high-profile music projects Oscar-winning director Scorsese has tackled in his illustrious career. Scorsese has previously helmed live -music spectacles like the Band’s The Last Waltz and the Rolling Stones’ Shine A Light, as well as the Bob Dylan http://www.rollingstone.com/rockdaily/index.php/2009/05/14/martin-scorsese-set-to-direct-frank... Page 1 of 2 documentary No Direction Home and a planned 2010 doc about the Beatles’ George Harrison. Scorsese was also originally attached to a Bob Marley documentary but was replaced by Jonathan Demme. Plus, as Peter Travers has pointed out, Scorsese knows a thing or two about soundtracking a film. The script will be written by Phil Alden Robinson, who also served as both screenwriter and director of Field of Dreams and Sneakers.

“My father had great admiration for the talent of the people he chose to work with, and the talented people who worked with my father had great admiration for him,” said Tina Sinatra in a statement. “It is personally pleasing to me that this paradigm continues with Marty Scorsese at the helm of the Sinatra film.” No casting decisions have been announced as yet, but given that Scorsese has collaborated with Leonardo DiCaprio on four consecutive films including the upcoming Shutter Island, it seems conceivable the Titanic star will be the frontrunner for the Sinatra role. No estimated release date has been announced for the film, as Scorsese currently has his hands full with the aforementioned Harrison doc, plus “in development” films like The Rise of Theodore Roosevelt (also with DiCaprio, according to IMDB) and Silence.

So what do you think, can the actor who has portrayed Howard Hughes in The Aviator and a master con man in Catch Me If You Can pull off playing the debonair Ol’ Blue Eyes? If not, who would you cast as Sinatra? The conversation continues here: Your Frank Sinatra Shortlist: Leonardo DiCaprio? Chris Pine?