Notice of Opposition Opposer Information Applicant Information
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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA496408 Filing date: 09/25/2012 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 A&E Television Networks, LLC Granted to Date 09/26/2012 of previous extension Address 235 East 45th Street New York, NY 10017 UNITED STATES Attorney Monica B. Richman information SNR Denton US LLP P.O. Box #061080 Chicago, IL 60606-1080 UNITED STATES [email protected],[email protected],martin.michael@snrden ton.com,[email protected] Phone:(212) 768-5367 Applicant Information Application No 85479486 Publication date 05/29/2012 Opposition Filing 09/25/2012 Opposition 09/26/2012 Date Period Ends Applicant Hester, David 1941 Newport Blvd Costa Mesa, CA 92627 UNITED STATES Goods/Services Affected by Opposition Class 041. First Use: 2011/08/19 First Use In Commerce: 2011/09/22 All goods and services in the class are opposed, namely: Entertainment in the nature of live performances by a television personality; Entertainment services, namely, live, televised, radio, and movie appearances by a television personality; Entertainment services, namely, personal appearances by a television personality Grounds for Opposition Priority and likelihood of confusion Trademark Act section 2(d) Dilution Trademark Act section 43(c) Mark Cited by Opposer as Basis for Opposition U.S. Registration 3959849 Application Date 07/09/2010 No. Registration Date 05/10/2011 Foreign Priority NONE Date Word Mark STORAGE WARS Design Mark Description of NONE Mark Goods/Services Class 009. First use: First Use: 2010/12/02 First Use In Commerce: 2010/12/02 Multimedia goods, namely, prerecorded digital video discs and DVDs about purchasing mystery boxes and other unknown items; digital media, namely, downloadable audio and video files about purchasing mystery boxes and other unknown items; downloadable webcasts about purchasing mystery boxes and other unknown items; and downloadable on-line discussion boards about purchasing mystery boxes and other unknown items Class 041. First use: First Use: 2010/12/01 First Use In Commerce: 2010/12/01 Entertainment services, namely, a multimedia program series about purchasing mystery boxes and other unknown items distributed via various platforms across multiple forms of transmission media Attachments 85081430#TMSN.jpeg ( 1 page )( bytes ) THE STORAGE WARRIOR - Notice of Opposition.pdf ( 7 pages )(23763 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 /martin p. michael/ Name Martin P. Michael Date 09/25/2012 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD In the matter of trademark application: Serial No. 85/479486 Mark: THE STORAGE WARRIOR Class: 41 Filed: November 22, 2011 Applicant: David Hester Published: May 29, 2012 A&E Television Networks, LLC ) ) Opposer, ) ) v. ) Opposition No.________ ) David Hester ) Applicant. NOTICE OF OPPOSITION Opposer, A&E Television Networks, LLC, a Delaware limited liability company, with an address at 235 East 45th Street, New York, NY 10017 (“Opposer”), believes that it would be damaged by registration of Application 85/479486 for mark, THE STORAGE WARRIOR (the “Opposed Application”), and hereby opposes that application. The United States Patent and Trademark Office published the Opposed Application for opposition on May 29, 2012. Opposer timely filed with the Trademark Trial and Appeal Board (the “TTAB”) a request for an extension of time to September 26, 2012 to oppose the Application. The TTAB granted Opposer’s request. Accordingly, Opposer has timely filed this Opposition. As grounds of opposition, Opposer hereby alleges: OPPOSER’S NAMES AND MARKS 1. Opposer owns the nationally- and internationally-known cable television channel commonly referred to as “A&E.” 2. Opposer owns the hugely successful television series named STORAGE WARS, which was launched on Opposer’s nationwide cable television network in 2010 and which airs currently on A&E. The STORAGE WARS series is A&E’s number one series of all time and the number four non-fiction program on cable television among adult viewers 25 to 54 years old. In its second season, the STORAGE WARS series averaged about 4.4 million total viewers per episode. 3. In Opposer’s advertising and promotion of the STORAGE WARS series, Opposer frequently uses the names STORAGE WARRIOR and STORAGE WARRIORS to refer to the performers appearing in the series. 4. Opposer owns exclusive federal and/or common law rights to the names and marks STORAGE WARS, STORAGE WARRIOR and STORAGE WARRIORS, including, U.S. trademark registration for the STORAGE WARS mark (Reg. No. 3959849 dated May 10, 2011 and filed on January 9, 2010) for “multimedia goods, namely, prerecorded digital video discs and DVDs about purchasing mystery boxes and other unknown items; digital media, namely, downloadable audio and video files about purchasing mystery boxes and other unknown items; downloadable webcasts about purchasing mystery boxes and other unknown items; and downloadable on-line discussion boards about purchasing mystery boxes and other unknown items” in International Class 9 and for “entertainment services, namely, a multimedia program series about purchasing mystery boxes and other unknown items distributed via various platforms across multiple forms of transmission media” in International Class 41; and - 2 - 5. Opposer has been extensively and continuously using, advertising and promoting the names and marks STORAGE WARS, STORAGE WARRIOR and STORAGE WARRIORS in interstate commerce on and in connection with its STORAGE WARS series and other goods and services specified in its U.S. trademark registration for the mark since prior to the filing date of the Opposed Application and the date of first use claimed in the Opposed Application. 6. Opposer has been using the STORAGE WARS mark in interstate commerce in connection with merchandise related to its STORAGE WARS series since prior to the filing date of the Opposed Application and the date of first use claimed in the Opposed Application. 7. By reason of Opposer’s extensive use, advertisement and promotion of the names and marks STORAGE WARS, STORAGE WARRIOR and STORAGE WARRIORS, the public closely associates these names and marks with Opposer and its highly successful STORAGE WARS television series and is likely to believe that any products or services bearing or using any of these names or marks originate from or are associated with Opposer and/or its STORAGE WARS television series. 8. By reason of Opposer’s extensive use, advertisement and promotion of Opposer’s series name and mark, STORAGE WARS, STORAGE WARS has become a strong and famous mark and has been a strong and famous mark since prior to the filing date of the Opposed Application and the date of first use claimed in the Opposed Application. 9. The names and marks STORAGE WARS, STORAGE WARRIOR and STORAGE WARRIORS are assets of substantial value to Opposer as a symbol of Opposer, its highly successful STORAGE WARS series and the valuable goodwill associated therewith. APPLICANT’S INFRINGEMENT AND DILUTION 10. On information and belief, Applicant, David Hester (“Applicant”), is a natural person having an address at 1941 Newport Blvd., Costa Mesa, California 92627. - 3 - 11. Applicant, pursuant to written agreement with Opposer, has been a principal performer in Opposer’s STORAGE WARS series since its launch in 2010. Pursuant to that agreement, Applicant acknowledged and agreed that he has no rights to the results or proceeds of his performances in the series nor in any of the “names, trademarks and logos” associated with the series. 12. Despite Opposer’s senior rights to the names and marks, STORAGE WARS, STORAGE WARRIOR and STORAGE WARRIORS, and Applicant’s contractual obligations, on November 22, 2011, Applicant filed the Opposed Application with the United States Patent and Trademark Office (the “USPTO”) seeking to register the mark THE STORAGE WARRIOR for “entertainment in the nature of live performances by a television personality; entertainment services, namely, live, televised, radio, and movie appearances by a television personality; entertainment services, namely, personal appearances by a television personality” in International Class 41 alleging a date of first use of August 19, 2011 and a date of first use in interstate commerce of September 22, 2011. 13. Upon information and belief, at and prior to the time he filed the Opposed Application, Applicant was well aware of Opposer’s senior rights to the names and marks STORAGE WARS, STORAGE WARRIOR and STORAGE WARRIORS and Applicant’s contractual acknowledgment that he has no rights to these names and marks. In addition, at and prior to the time he filed the Opposed Application, Applicant had constructive notice of Opposer’s U.S. trademark registration for STORAGE WARS. 14. It is likely that Applicant’s claimed mark THE STORAGE WARRIOR, when used in connection with the services specified in the Opposed Application will cause confusion, or cause mistake or deception with Opposer’s names and marks STORAGE WARS, STORAGE WARRIOR and STORAGE WARRIORS because Applicant’s claimed mark THE STORAGE WARRIOR is confusingly similar to, and indeed virtually identical to, Opposer’s names and marks and because the services specified in the Opposed Application are closely related to the goods and services in connection with which Opposer has used and is using its names and marks and which are specified in Opposer’s U.S. trademark registration for the STORAGE WARS mark. - 4 - DAMAGE TO OPPOSER 15. If Applicant were permitted to use or register the mark, THE STORAGE WARRIOR, for the services specified in the Opposed Application, it would cause damage and injury to Opposer's business reputation and goodwill and would injure and impair Opposer's senior rights in its names and marks STORAGE WARS, STORAGE WARRIOR and STORAGE WARRIORS.