Notice of Opposition Opposer Information Applicant Information Goods/Services Affected by Opposition

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA942873 Filing date: 12/20/2018

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 Sam Rosenthal Granted to Date 01/02/2019 of previous ex- tension Address 1410 SE 30th Avenue Portland, OR 97214 UNITED STATES

Attorney informa- Simon J. Rosen, Esq. tion Law Office of Simon Rosen, PLLC 2019 Walnut Street Philadelphia, PA 19103 UNITED STATES [email protected] 215-564-0212

Applicant Information

Application No 79975398 Publication date 09/04/2018 Opposition Filing 12/20/2018 Opposition Peri- 01/02/2019 Date od Ends International Re- 1368617 International Re- 01/26/2017 gistration No. gistration Date Applicant CD PROJEKT SA ul. Jagiellonska 74 PL-03-301 Warszawa POLAND Goods/Services Affected by Opposition

Class 025. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Clothing, namely, shirts, t-shirts, tank tops, halter tops, sweatshirts, blouses, sweaters, cardigans, jackets, sweat jackets, vests, jumpers, pants, sweatpants, overalls, shorts, dresses, sleepwear,swimwear, beachwear, skirts, undergarments, bowties, neckties, gloves, scarves,socks, leather belts, masquerade costumes and Halloween costumes; footwear; headwear; underwear Class 041. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Providing on-line non-downloadable gamesoftware; providing online computer games via computer networks and global communication networks; provision of on-linecomputer games; provision of on-line games by means of a computer based system;game services provided on-line from a computer network; providing a computer game that may be accessed network-wide by network users; non-downloadable electronic games provided by means of the internet; information relating to computer gaming entertainment provided online from acomputer database or a global communication network; providing information on-line relating to computer games and computer enhancements for games; production of television programs and cinema films; production of television series; providing a website featuring non-downloadable on-line films and series in the fields of fantasy, action, adventure, video games and video game development; organisingand conducting events for social entertainment purposes; entertainment services, namely, arranging and conducting live show performances, competitions, awards,and games in the field of computer games and video games; arranging and conducting competitions for video gamers and computer game players; arranging online computer and video game competitions for interactive game players; amusement and theme park services; providing entertainment services in the nature of amusement centers; children's entertainment and amusement centers, namely, interactive play areas; organization of exhibitions forcultural or educational purposes; education and training services relating to computer games and other forms of online entertainment, namely, computer education training; on-line publications, namely, on-line magazines featuring information, news and commentary in the field of video games Grounds for Opposition

Priority and likelihood of confusion Trademark Act Section 2(d) Dilution by blurring Trademark Act Sections 2 and 43(c) Dilution by tarnishment Trademark Act Sections 2 and 43(c) Marks Cited by Opposer as Basis for Opposition

U.S. Registration 2999725 Application Date 11/20/2003 No. Registration Date 09/27/2005 Foreign Priority NONE Date Word Mark PROJEKT Design Mark

Description of NONE Mark Goods/Services Class 009. First use: First Use: 1983/06/01 First Use In Commerce: 1983/06/01 Compact Discs, phonograph records, prerecorded audio cassettes, prerecorded video cassettes and DVDs all featuring music

U.S. Application 87914458 Application Date 05/09/2018 No. Registration Date NONE Foreign Priority NONE Date Word Mark PROJEKT Design Mark

Description of NONE Mark Goods/Services Class 009. First use: First Use: 1996/12/01 First Use In Commerce: 1999/04/23 Digital materials, namely, downloadableaudio files featuring music; digital music downloadable from the Internet Class 038. First use: First Use: 1999/04/23 First Use In Commerce: 1999/04/23 Streaming of audio material on the Internet; streaming of audio, visual and audiovisual material on the Internet Class 042. First use: First Use: 1996/12/01 First Use In Commerce: 2001/06/28 Providing a website that gives users the ability to purchase downloadable music

Attachments 76563141#TMSN.png( bytes ) 87914458#TMSN.png( bytes ) PROJECT V CD PROJEKT-OPPOSITION PET-12-20-18.pdf(112692 bytes ) PROJEKT-IC 9-EXHIBIT TO OPPOSITION PETITION.pdf(191716 bytes ) PROJEKT-TM-EXHIBIT- IC 9 AND 38 AND 42- TO OPPOSITION PETI- TION.pdf(171508 bytes ) PROJEKT-EXHIBIT TO OPPOSITION-PROOF OF USAGES.pdf(509142 bytes ) PROJEKT-EXHIBIT TO OPPOSITION- PROOF OF USAGES-2.pdf(2266606 bytes )

Signature /Simon J. Rosen, Esq./ Name Simon J. Rosen, Esq. Date 12/20/2018

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In the Matter of Application Serial No. 79217943, 79975398 For the mark: CD PROJEKT Published: AUGUST 31, 2016

______SAM ROSENTHAL d/b/a PROJEKT 1410 S.E. 30th Avenue Portland, OR 97214 Opposition No.:______

Opposer, v.

CD PROJEKT S.A. JOINT STOCK COMPANY ul. Jagiellonska 74, Building E 03301 Warszwawa, Poland

Applicant. ______

NOTICE OF OPPOSITION

Sam Rosenthal, an individual residing in Portland, Oregon with mailing address at 1410 S.E. 30th

Avenue, Portland, OR 97214, and d/b/a Projekt, Projekt Records, Projekt: Archive, Projekt: Darkwave, and Darkwave (hereinafter “Opposer”) believes that it will be damaged by the issuance of a registration

for the alleged marks shown in:

a. Application Serial No. 79217943, for the mark CD PROJEKT in International Class 09 for

Games software; virtual reality game software; downloadable computer game programs;

recorded computer game software; video games and computer games in the form of computer programs recorded on data carriers; computer game software, namely, video

games on disc; computer software platforms for social networking and social interaction;

computer programs for video and computer games; computer games programs downloaded

via the internet; cases for tablets and smartphones; liquid crystal protective films for

smartphones; mouse pads; sunglasses; headphones; spectacle cases; video films in the fields

of fantasy, action, adventure, video games and video game development; cinematographic

films in the fields of fantasy, action, adventure, video games and video game development;

downloadable movies in the fields of fantasy, action, adventure, video games and video game

development provided via a video-on-demand services (hereinafter “CD PROJEKT Mark I”);

and b. Application Serial No. 79975398, for the mark CD PROJEKT in International Class 025 for

clothing, namely, shirts, t-shirts, tank tops, halter tops, sweatshirts, blouses, sweaters,

cardigans, jackets, sweat jackets, vests, jumpers, pants, sweatpants, overalls, shorts, dresses,

sleepwear, swimwear, beachwear, skirts, undergarments, bowties, neckties, gloves, scarves,

socks, leather belts, masquerade costumes and Halloween costumes; footwear; headwear;

underwear, and International Class 041 for Providing on-line non-downloadable game

software; providing online computer games via computer networks and global

communication networks; provision of on-line computer games; provision of on-line games

by means of a computer based system; game services provided on-line from a computer

network; providing a computer game that may be accessed network-wide by network users;

non-downloadable electronic games provided by means of the internet; information relating

to computer gaming entertainment provided online from a computer database or a global

communication network; providing information on-line relating to computer games and computer enhancements for games; production of television programs and cinema films;

production of television series; providing a website featuring non-downloadable on-line films

and series in the fields of fantasy, action, adventure, video games and video game

development; organizing and conducting events for social entertainment purposes;

entertainment services, namely, arranging and conducting live show performances,

competitions, awards, and games in the field of computer games and video games; arranging

and conducting competitions for video gamers and computer game players; arranging online

computer and video game competitions for interactive game players; amusement and theme

park services; providing entertainment services in the nature of amusement centers;

children's entertainment and amusement centers, namely, interactive play areas;

organization of exhibitions for cultural or educational purposes; education and training

services relating to computer games and other forms of online entertainment, namely,

computer education training; on-line publications, namely, on-line magazines featuring

information, news and commentary in the field of video games (hereinafter “CD PROJEKT

Mark II,” and together with CD PROJEKT Mark I, “CD PROJEKT Marks”).

Opposer hereby opposes same pursuant to Section 13(a) of the Lanham Trademark Act of 1946

(”Lanham Act”), 15 U.S.C. § 1063(a).

As grounds for opposition, Opposer alleges as follows:

1. Opposer is a record label specializing in passionately intense introspective music across a variety of genres (ambient, ethereal, goth, dark cabaret, rock, darkwave, minimal electronic & more). Opposer has been in business for over 35 years and has both a profound national and international

reputation in the music industry and among consumers.

2. Opposer is the owner of valid and subsisting United States Trademark Registration No.

76563141 on the Principal Register in the United States Patent and Trademark Office for the trademark

PROJEKT in International Class 09 for compact discs, phonograph records, prerecorded audio cassettes, prerecorded video cassettes and DVDs all featuring music, which issued on September 27, 2005 and has become incontestable within the meaning of Section 15 of the Lanham Act, 15 U.S.C. § 1065

(hereinafter “PROJEKT Mark I”). Attached as Exhibit 1 is a true and correct printout from the United

States Patent and Trademark Office electronic database showing the current status and title of the

registrations as of the date of this Notice of Opposition.

3. Opposer is the owner of registration pending trademark, Application Serial No. 87914458

on the Principal Register in the United States Patent and Trademark Office for the trademark PROJEKT

in International Class 009 for digital materials, namely, downloadable audio files featuring music;

digital music downloadable from the Internet; and in International Class 038 for streaming of audio

material on the Internet; streaming of audio, visual and audiovisual material on the Internet; and in

International Class 042 for providing a website that gives users the ability to purchase downloadable

music (hereinafter “PROJEKT Mark II,” and together with PROJEKT Mark I, “PROJEKT Marks”).

Attached as Exhibit 1 is a true and correct printout from the United States Patent and Trademark Office

electronic database showing the current status and title of the registrations as of the date of this Notice of

Opposition.

4. Opposer has used PROJEKT Mark I in interstate commerce in the United States

continuously since June 1, 1983 in connection with the manufacture, distribution, provision, offering for

sale, sale, marketing, advertising and promotion of compact discs, phonograph records, prerecorded

audio cassettes, prerecorded video cassettes and DVDs all featuring music. Opposer has used PROJEKT

Mark II in interstate commerce in the United States continuously since April, 23 1999 in connection

with the manufacture, distribution, provision, offering for sale, sale, marketing, advertising and promotion of digital materials, namely, downloadable audio files featuring music, digital music

downloadable from the Internet, and streaming of audio material on the Internet, streaming of audio,

visual and audiovisual material on the Internet. Opposer has used PROJEKT Mark II in interstate

commerce in the United States continuously since June, 06 2001 in connection with the manufacture, provision, marketing, advertising and promotion of a website that gives users the ability to purchase

downloadable music. Attached hereto as Exhibit 2 are copies of representative samples of product packaging, product labels, and marketing, advertising, and promotional materials showing Opposer’s use of the PROJEKT Marks in connection with the good and services provided under the PROJEKT

Marks.

5. As a result of its widespread, continuous, and exclusive use of the PROJEKT Marks to identify its goods and services and Opposer as their source, Opposer owns valid and subsisting federal statutory and common law rights to the PROJEKT Marks.

6. Opposer’s PROJEKT Marks are distinctive to both the consuming public and Opposer’s trade.

7. Opposer has expended substantial time, money, and other resources in connection with

their provision of goods and services under the PROJEKT Marks, as well as the marketing, advertising,

and promotion of the goods and services Opposer provides under the PROJEKT Marks.

8. Opposer has a catalogue of goods of more than 400 music albums, comprised of more

than eightyfive (85) different renowned goth, ambient, darkwave, rock, and ethereal artists.

9. Opposer has marketed, advertised, and promoted the goods and services provided under

the PROJEKT Marks through multiple channels, including, but not limited to, print and mail advertising,

radio, television, social media, and other Internet promotion, concert tours, displays, stalls, and stores at

tours, and independent and large music distributors.

10. Opposer’s sale of goods and services provided under the PROJEKT Marks since 1983 have earned average annual net revenues of approximately $336,000, with annual revenues as high as

$605,000. Opposer sells its goods and services through Opposer’s website, and has its goods and services distributed in North America, South America, and Asia through Amplified Distribution, distributed in Europe with Audioglobe, and digitally distributed worldwide with eOne.

11. The PROJEKT Marks are recognized worldwide as the gold standard for goth, ambient, darkwave, and similar genres of music, and Opposer’s record labels’ artists that produce music and are promoted in connection the PROJEKT Marks garner, in the aggregate, approximately 7.2 millions fans

and followers on social media.

12. Opposer’s use of the PROJEKT Marks in connection with Opposer’s record label has

resulted in numerous achievements and accolades in the music industry. Artists under the PROJEKT

record label such as Steve Roach, Aurelio Voltaire, Erik Wollo, Black Tape For A Blue Girl, Lycia,

Forrest Fang, and Erik Wollo, to name a few, have gained widespread notoriety in the

electronic/ambient and goth/darkwave genre realms. Steve Roach was nominated for a Grammy best

New Age Album for his electronic/ambient album, Spiral Revelations.

13. Opposer’s use of the PROJEKT Marks in connection with Opposer’s record label to

establish “Projektfest,” a festival celebrating ambient and goth music and connecting music fans to the

artists, has had continuous success in the industry and resulted in increased sales of the goods and

services provided under the PROJECT Marks. Projektfest has been held since 1997 and has continued as

a traditional event of Opposer’s PROJEKT record label.

14. As a result of the PROJEKT Marks’ distinctiveness and widespread use and promotion

throughout the United States, Opposer’s PROJEKT Marks are famous trademarks within the meaning of

Section 43(c) of the Lanham Act, 15 U.S.C. 1125(c), and became famous prior to the filing date of the

opposed application or any other priority date on which the applicant may rely.

15. Upon information and belief, Applicant, CD PROJEKT S.A. Joint Stock Company, with

an address at ul. Jagiellońska 74, Building E, 03301 Warszawa, Poland on January 26, 2017, filed

trademark Application Serial No. 79217943 to register the proposed mark CD PROJEKT in

International Class 009 for the goods and services stated in Paragraph 1.a., above; and filed trademark

Application Serial No. 79217943 to register the proposed mark CD PROJEKT in International Classes 025 and 041 for the goods and services stated in Paragraph 1.b., above.

16. Applicant allegedly began using the proposed marks on August 31, 2016, approximately

33 years after Opposer began using Opposer’s PROJEKT Mark I, and around 19 years after Opposer began using Opposer’s PROJEKT Mark II.

17. Opposer’s PROJEKT Marks have priority over the proposed mark because Opposer’s use and registration dates predate the Applicant’s filing date or any other date on which the Applicant may rely for purposes of priority.

18. Applicant’s proposed CD PROJEKT Marks are nearly identical, and thus confusingly similar to Opposer’s PROJEKT Marks. Both sets of marks utilize the incorrect spelling of the work

“Project” by replacing the letter “C” with a “K.” Additionally, the “CD” portion of Applicant’s marks creates confusion among consumers familiar with the goods and services provided under the PROJEKT

Marks because the term “CD” is an acronym for compact disc, which is one type of goods provided under the PROJEKT Marks.

19. The goods and services provided by Applicant, which are purported to be covered under

Applicant’s Application Serial No. 79217943 and Application Serial No. 79975398, including, but not limited to such music compositions available for purchase by DVD, digital download, or through

Internet streaming are similar to the goods and services Opposer offers under its PROJEKT Marks.

Opposer is known for the provision of multiple genres of music, and Applicant’s provision of music comprised goods are a similar good to that of Opposers. While the genres of music may vary between Opposer and Applicant, Opposer’s customers and followers have indicated their confusion as to why

Opposer is allegedly producing Applicant’s goods.

COUNT I

LIKELIHOOD OF CONFUSION

20. Opposer repeats and realleges each and every allegation contained in paragraphs 119 of the Notice of Opposition as if fully set forth herein.

21. The proposed marks are barred from registration because they consist of or comprises a mark which so resembles Opposer’s previously used and registered PROJEKT Marks as to be likely, when used in connection with the alleged goods and services of Applicant, to cause confusion, mistake, or deception within the meaning of 15 U.S.C. § 1052(d).

COUNT II

DILUTION

22. Opposer repeats and realleges each and every allegation contained in paragraphs 121 of

the Notice of Opposition as if fully set forth herein.

23. Opposer’s PROJEKT Marks are distinctive and are “famous marks” within the meaning

of Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c).

24. Opposer’s PROJEKT Marks became distinctive and famous prior to the filing date of

Applicant’s application or any other date on which Applicant may seek to rely for purposes of priority.

25. Registration by Applicant of the proposed CD PROJEKT Marks for Applicant’s proposed goods and services would be likely to impair the distinctiveness, and cause dilution by blurring, of Opposer’s famous PROJEKT Marks in violation of 15 U.S.C. § 1125(c). Accordingly, pursuant to 15 U.S.C. § 1063, the proposed CD PROJEKT Marks are not entitled to registration.

26. Registration by Applicant of the proposed CD PROJEKT Marks for Applicant’s proposed goods and services would be likely to tarnish the reputation, and cause dilution by tarnishment,

of Opposer’s famous PROJEKT Marks in violation of 15 U.S.C. § 1125(c). Accordingly, pursuant to 15

U.S.C. § 1063, the proposed CD PROJEKT Marks are not entitled to registration.

WHEREFORE, Opposer respectfully prays that its opposition be sustained and that registration to

Applicant be refused.

Respectfully submitted,

Law Office of Simon Rosen, PLLC

By:

/Simon Rosen, Esq./ ATTY ID NO. 38603 2019 Walnut St. Philadelphia, PA 19103 O: (215) 5640212 F: (215) 8933900 [email protected]

Dated: December 20, 2018 Attorney for OPPOSER

Philadelphia, PA

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Word Mark PROJEKT Goods and IC 009. US 021 023 026 036 038. G & S: Compact Discs, phonograph records, prerecorded Services audio cassettes, prerecorded video cassettes and DVDs all featuring music. FIRST USE: 19830601. FIRST USE IN COMMERCE: 19830601 Mark Drawing (5) WORDS, LETTERS, AND/OR NUMBERS IN STYLIZED FORM Code Serial Number 76563141 Filing Date November 20, 2003 Current Basis 1A Original Filing 1A Basis Published for July 5, 2005 Opposition Registration 2999725 Number Registration September 27, 2005 Date Owner (REGISTRANT) Rosenthal, Sam INDIVIDUAL UNITED STATES 1410 SE 30th Avenue Portland OREGON 97214 Attorney of Thomas Dover Record Description of Color is not claimed as a feature of the mark. Mark Type of Mark TRADEMARK

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Register PRINCIPAL Affidavit Text SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20141222. Renewal 1ST RENEWAL 20141222 Live/Dead LIVE Indicator

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Word Mark PROJEKT Goods and IC 009. US 021 023 026 036 038. G & S: Digital materials, namely, downloadable audio files Services featuring music; digital music downloadable from the Internet. FIRST USE: 19961201. FIRST USE IN COMMERCE: 19990423

IC 038. US 100 101 104. G & S: Streaming of audio material on the Internet; streaming of audio, visual and audiovisual material on the Internet. FIRST USE: 19990423. FIRST USE IN COMMERCE: 19990423

IC 042. US 100 101. G & S: Providing a website that gives users the ability to purchase downloadable music. FIRST USE: 19961201. FIRST USE IN COMMERCE: 20010628 Standard Characters Claimed Mark Drawing Code (4) STANDARD CHARACTER MARK Serial Number 87914458 Filing Date May 9, 2018 Current Basis 1A Original Filing 1A Basis Published for October 23, 2018 Opposition Owner (APPLICANT) Sam Rosenthal INDIVIDUAL UNITED STATES 1410 SE 30th Avenue Portland OREGON 97214 Attorney of Record Thomas Dover

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Prior Registrations 2999725 Type of Mark TRADEMARK. SERVICE MARK Register PRINCIPAL Live/Dead Indicator LIVE

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