Notice of Opposition Opposer Information Applicant

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1121082 Filing date: 03/17/2021

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 Disney Enterprises, Inc. Entity Corporation Citizenship Delaware Address 500 SOUTH BUENA VISTA STREET BURBANK, CA 91521 UNITED STATES

Attorney informa- LINDA K. MCLEOD tion KELLY IP, LLP 1300 19TH STREET, NW, SUITE 300 WASHINGTON, DC 20036 UNITED STATES Primary Email: [email protected] Secondary Email(s): [email protected], [email protected] No phone number provided.

Docket Number Applicant Information

Application No. 90167345 Publication date 02/16/2021 Opposition Filing 03/17/2021 Opposition Peri- 03/18/2021 Date od Ends Applicant Li Guoyang FAN VILLAGE, BAIHE TOWN, MENGJIN COUNTY HENAN PROVINCE, 471100 CHINA Goods/Services Affected by Opposition

Class 024. First Use: 2020/08/12 First Use In Commerce: 2020/08/12 All goods and services in the class are opposed, namely: Bedspreads; Coverlets; Pillowcases; Quilts; Baby buntings; Banners of textile or plastic; Bath towels; Bed blankets; Bed covers; Bed linen; Bed sheets of plastic, not being incontinence sheets; Bed skirts; Blankets for household pets; Coasters of textile; Cotton fabric; Curtain holders of textile material; Curtains oftextile or plastic; Door curtains; Drugget fabric; Felts; Flags of textile or plastic; Household linen; Linen for household purposes; Mat- tress covers; Moistureabsorbent microfiber towels for floor use; Mosquito nets; Net curtains; Oilcloth for use as tablecloths; Pillow covers;Pillow shams; Place mats of textile; Printers' blankets of textile; Quilt covers; Shower curtains of textile or plastic; Silk blankets; Silk fabrics; Silk fabrics for printing patterns; Sleeping bags; Sleeping bags for babies; Table runners of textile; Tablecloths, not of paper;Tablemats of textile; Tapestries of textile; Towels of textile; Travelling rugs; Wall hangings of textile; Woollen blankets; Bed sheets; Bed sheets, fitted bedsheet covers, bed flat sheets, and pillow cases used in the bedding, health care, home-health care and nursing home industries made of biodegradable film created from renewable bio-polymer resources;Canvas for tapestry or embroidery; Handspun silk fabrics; Natural and synthetic fabrics and textiles, namely, cotton, silk, polyester and nylon fabrics; Non-woven fabrics and felts; Silk bed blankets; Spun silk fabrics Grounds for Opposition

Priority and likelihood of confusion Trademark Act Section 2(d) Dilution by blurring Trademark Act Sections 2 and 43(c) Other Void ab Initio 15 U.S.C. 1051(a), 1127 Marks Cited by Opposer as Basis for Opposition

U.S. Application/ Registra- NONE Application Date NONE tion No. Registration Date NONE Word Mark TIM BURTONÂ#S THE NIGHTMARE BEFORE CHRISTMAS Goods/Services Entertainment services, motion picture films, posters, digital media, namely, pre-recorded downloadable audio and video recordings, CDs, DVDs, Blu-rays, apparel, pins, backpacks, chopping boards, lunch plates, slow cookers, shower curtains, pillows, comforters, blankets, bedding, and all the goods and services set forth in the Notice of Op- position.

U.S. Application/ Registra- NONE Application Date NONE tion No. Registration Date NONE Word Mark THE NIGHTMARE BEFORE CHRISTMAS Goods/Services Entertainment services, motion picture films, posters, digital media, namely, pre-recorded downloadable audio and video recordings, CDs, DVDs, Blu-rays, apparel, pins, backpacks, chopping boards, lunch plates, slow cookers, shower curtains, pillows, comforters, blankets, bedding, and all the goods and services set forth in the Notice of Op- position.

Attachments NIGHTMARE BEFORE CHRISTMAS - NOO_Part1.pdf(4890572 bytes ) NIGHTMARE BEFORE CHRISTMAS - NOO_Part2.pdf(4003807 bytes )

Signature /Linda K. McLeod/ Name LINDA K. MCLEOD Date 03/17/2021

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

DISNEY ENTERPRISES, INC., Opposition No.: Opposer Mark: NIGHTMARE BEFORE v. CHRISTMAS Serial No.: 90167345 LI GUOYANG, Filed: September 9, 2020

Applicant.

NOTICE OF OPPOSITION

Opposer, Disney Enterprises, Inc. (“Opposer”), a corporation of the State of

Delaware, having a principal place of business at 500 South Buena Vista Street,

Burbank, California, 91521, believes that it is being damaged, and will be damaged, by the registration of Li Guoyang’s (“Applicant”) NIGHTMARE BEFORE CHRISTMAS mark shown in Application Serial No. 90167345, and hereby opposes the same. As grounds for opposition, Opposer alleges that, upon actual knowledge with respect to Opposer’s own acts, and upon information and belief as to other matters:

Opposer and its Business

1. Opposer, Disney Enterprises, Inc., is a corporation of the State of

Delaware, having a principal place of business at 500 South Buena Vista Street,

Burbank, California, 91521.

2. Opposer, through its related companies and licensees, is one of the world’s leading producers and providers of entertainment, films, music, and consumer products. Opposer engages in a vast licensing program under which it uses or licenses the use of its properties and characters in connection with a wide variety of products

Application Serial No. 90167345

and services including, but not limited to, entertainment services, motion picture films,

posters, household textiles, paper products, toys, apparel, jewelry, food items, music,

and mobile applications, among many other things.

Opposer’s THE NIGHTMARE BEFORE CHRISTMAS Film and Rights in Its NIGHTMARE BEFORE CHRISTMAS Mark

3. Since as early as 1993, Opposer has used the trademark THE

NIGHTMARE BEFORE CHRISTMAS, TIM BURTON’S THE NIGHTMARE BEFORE

CHRISTMAS and variations thereof (collectively, the “NIGHTMARE BEFORE

CHRISTMAS Mark”) in commerce in connection with a wide variety of products and services.

4. Opposer’s NIGHTMARE BEFORE CHRISTMAS Mark first appeared in

connection with Opposer’s 1993 stop-motion animation feature film Tim Burton’s The

Nightmare Before Christmas, originally released under Opposer’s feature film label

Touchstone Pictures, as shown below. The film tells the story of Jack Skellington, the

Pumpkin King of Halloween Town, who accidentally finds Christmas Town and becomes obsessed with celebrating Christmas. The film has been enormously successful, earning over 91 million dollars worldwide since its initial 1993 release, winning major awards, including the Saturn Award for Best Fantasy Film, and garnering nominations for Academy Award for Best Visual Effects and Golden Globe Award for

Best Original Score, among others. The film also received significant unsolicited media attention in, among other sources, Los Angeles Times, Variety, Rolling Stone, and The

New York Times.

Application Serial No. 90167345

5. Opposer subsequently released prerecorded films under the NIGHTMARE

BEFORE CHRISTMAS Mark for several years between 1997 and 2018.

6. Since well before the September 9, 2020 filing date of the opposed application, Applicant’s claimed August 12, 2020 date of first use, and any dates of first use that may be proven by Applicant, Opposer and/or its licenses have offered and promoted a wide variety of consumer products under the NIGHTMARE BEFORE

CHRISTMAS Mark including, but not limited to, DVDs, Blu-Rays, apparel, pins, backpacks, chopping boards, lunch plates, and slow cookers, as shown in the representative examples below.

Application Serial No. 90167345

7. Since well before the September 9, 2020 filing date of the opposed application, Applicant’s claimed August 12, 2020 date of first use, and any dates of first use that may be proven by Applicant, Opposer has used its NIGHTMARE BEFORE

CHRISTMAS Mark in connection with a wide variety of household textile products including shower curtains, pillows, comforters, blankets, and bedding, as shown in the representative examples below.

Application Serial No. 90167345

(The goods and services identified in Paragraphs 5-7 are collectively referred to as

“Opposer’s Goods and Services.”)

8. Opposer and/or its licensees and related companies have spent considerable effort and resources advertising and promoting Opposer’s NIGHTMARE

BEFORE CHRISTMAS Mark in connection with Opposer’s Goods and Services. As a result of these efforts, Opposer has established a strong association and identification in the minds of the public between Opposer, Opposer’s Goods and Services, and

Opposer’s NIGHTMARE BEFORE CHRISTMAS Mark.

9. Through its long use of Opposer’s NIGHTMARE BEFORE CHRISTMAS

Mark for more than a decade, enormous commercial success of Opposer’s

NIGHTMARE BEFORE CHRISTMAS film and entertainment franchise, substantial advertising, and extensive media attention and publicity, Opposer has developed substantial and valuable goodwill in Opposer’s NIGHTMARE BEFORE CHRISTMAS

Mark, and it has long been well-known and famous.

Applicant and Its NIGHTMARE BEFORE CHRISTMAS Mark

10. Applicant Li Guoyang (“Applicant”) is an individual with an address of Fan

Village, Baihe Town, Mengjin County Henan Province, China 471100.

Application Serial No. 90167345

11. Applicant is the listed owner of Application No. 90167345 (the

“Application”), filed on September 9, 2020 under Section 1(a), 15 U.S.C. § 1051(a), for the mark NIGHTMARE BEFORE CHRISTMAS (“Applicant’s Mark”) for “Bedspreads;

Coverlets; Pillowcases; Quilts; Baby buntings; Banners of textile or plastic; Bath towels;

Bed blankets; Bed covers; Bed linen; Bed sheets of plastic, not being incontinence sheets; Bed skirts; Blankets for household pets; Coasters of textile; Cotton fabric;

Curtain holders of textile material; Curtains of textile or plastic; Door curtains; Drugget fabric; Felts; Flags of textile or plastic; Household linen; Linen for household purposes;

Mattress covers; Moisture absorbent microfiber towels for floor use; Mosquito nets; Net curtains; Oilcloth for use as tablecloths; Pillow covers; Pillow shams; Place mats of textile; Printers' blankets of textile; Quilt covers; Shower curtains of textile or plastic; Silk blankets; Silk fabrics; Silk fabrics for printing patterns; Sleeping bags; Sleeping bags for babies; Table runners of textile; Tablecloths, not of paper; Tablemats of textile;

Tapestries of textile; Towels of textile; Travelling rugs; Wall hangings of textile; Woollen blankets; Bed sheets; Bed sheets, fitted bed sheet covers, bed flat sheets, and pillow cases used in the bedding, health care, home-health care and nursing home industries made of biodegradable film created from renewable bio-polymer resources; Canvas for tapestry or embroidery; Hand spun silk fabrics; Natural and synthetic fabrics and textiles, namely, cotton, silk, polyester and nylon fabrics; Non-woven fabrics and felts;

Silk bed blankets; Spun silk fabrics” in Class 24 (“Applicant’s Goods”). Applicant claims a date of first use of August 12, 2020.

12. Applicant filed the NIGHTMARE BEFORE CHRISTMAS Application on

September 9, 2020 with a specimen (“Applicant’s Specimen”) showing screenshots

Application Serial No. 90167345

from an Amazon.com webpage with images of beaded curtains. Applicant stated that

“The attached picture is the applicant’s product “Door curtain” with the logo on it. It has been sold to consumers.” Representative images from Applicant’s Specimen are shown below:

Application Serial No. 90167345

13. Applicant’s Specimen includes images of beaded curtains that can be found on third-party websites and Amazon.com webpages including the following: (1) https://item.jd.com/10090489288.html, where the curtains are listed under the “小雏菊” or “Daisy” brand and customer reviews are listed from as early as June 10, 2017, (2) https://www.amazon.co.uk/Crystal-Curtain-Living-Partition-Decoration/dp/B07XT84HNS, where the curtains are listed under the “JINRONG” brand, and the date the curtains were first available is listed as September 12, 2019. Below are representative product images and annotated screenshots from the above-listed websites, which are also attached as Exhibit A with images from other third-party websites.

Application Serial No. 90167345

14. On February 16, 2021, the Application was published for opposition in the

Trademark Official Gazette (TMOG).

Likelihood of Confusion, 15 U.S.C. § 1052(d)

15. Opposer repeats and realleges each and every allegation set forth in

Paragraphs 1 to 14 above.

16. Opposer has priority based on its prior, continuous use in commerce of the NIGHTMARE BEFORE CHRISTMAS Mark for Opposer’s Goods and Services since before the filing date of the Application, the date of first use claimed by Applicant, and any dates of first use that may be alleged by Applicant.

17. Applicant’s Mark is identical in appearance, sound, connotation and overall commercial impression to Opposer’s NIGHTMARE BEFORE CHRISTMAS

Mark.

18. Further, Opposer’s NIGHTMARE BEFORE CHRISTMAS Mark became

Application Serial No. 90167345

famous before the filing date of the Application, the date of first use claimed by

Applicant, and any date of first use that Applicant can prove. The fame and distinctiveness of Opposer’s NIGHTMARE BEFORE CHRISTMAS Mark increases a likelihood of confusion in this case.

19. In addition, Applicant’s Goods are identical and related to Opposer’s

Goods and Services advertised, promoted, offered, and/or sold by Opposer in connection with Opposer’s NIGHTMARE BEFORE CHRISTMAS Mark. Indeed, as set forth above, Opposer has used and/or licensed its NIGHTMARE BEFORE CHRISTMAS

Mark in connection with a wide range of household textile products, including shower curtains, pillows, comforters, blankets, and bedding.

20. Further, given the fame of Opposer’s NIGHTMARE BEFORE

CHRISTMAS Mark and extensive merchandising and licensing under such mark, consumers are more likely to be confused and to mistakenly believe there is a relationship between the parties, the involved marks, and the parties’ respective goods and services.

21. Applicant’s Mark so resembles Opposer’s prior used NIGHTMARE

BEFORE CHRISTMAS Mark as to be likely, when used in connection with Applicant’s

Goods, to cause confusion, or to cause mistake, or to deceive under Section 2(d) of the

Lanham Act, as amended, 15 U.S.C. § 1052(d).

Dilution, 15 U.S.C. § 1125(c)(1)

22. Opposer repeats and realleges each and every allegation set forth in

Paragraphs 1 to 21 above.

23. Opposer has engaged in extensive nationwide advertising, promotion, and

Application Serial No. 90167345

use of Opposer’s NIGHTMARE BEFORE CHRISTMAS Mark. In addition, Opposer has had substantial sales of goods and services under Opposer’s NIGHTMARE BEFORE

CHRISTMAS Mark for decades.

24. Further, as detailed above, Opposer’s NIGHTMARE BEFORE

CHRISTMAS Mark is distinctive and has for many years received extensive unsolicited media attention nationwide. Such media attention has had a substantial impact on the public and has long created an association in the minds of consumers between those marks and Opposer.

25. As a result, Opposer’s NIGHTMARE BEFORE CHRISTMAS Mark is famous and became famous well before the filing date of Application Serial No.

90167345, and any date of first use that may be proved by Applicant.

26. Applicant’s Mark so closely resembles the previously used Opposer’s

NIGHTMARE BEFORE CHRISTMAS Mark as to be likely to cause dilution of the distinctive quality of Opposer’s Marks in violation of Section 43(c) of the Lanham Act, as amended, 15 U.S.C. § 1125(c).

Void ab Initio, 15 U.S.C. §§ 1051(a), 1127

27. Opposer repeats and realleges each and every allegation set forth in

Paragraphs 1 to 26 above.

28. Upon information and belief, Applicant’s Specimen comprises images of curtains copied from third-party websites that offered the curtains under different brand names before the September 9, 2020 filing date of the Application and before the claimed date of first use of August 12, 2020.

29. Upon information and belief, Applicant has not used Applicant’s Mark in

Application Serial No. 90167345

commerce on or in connection with any of the goods identified in the Application and/or has not used Applicant’s Mark in the ordinary course of trade as of the September 9,

2020 filing date of the Application as required under Trademark Act Sections 1(a) and

45, 15 U.S.C. §§ 1051(a) and 1127.

30. Accordingly, Application Serial No. 90167345 is void ab initio, and

Applicant’s Mark should be refused registration.

WHEREFORE, Opposer believes that it is being damaged by the Application and will be damaged by the registration of the mark shown in U.S. Application Serial No.

90167345, and requests that the opposition be sustained, and that registration to

Applicant be refused.

The filing fee has been submitted electronically. Any deficiency in the fee should be charged to Deposit Account No. 506154.

Respectfully submitted,

DISNEY ENTERPRISES, INC.

Dated: March 17, 2021 By: /Linda K. McLeod / Linda K. McLeod [email protected] Justin S. Chay [email protected] Kelly IP, LLP 1300 19th Street, N.W., Suite 300 Washington, D.C. 20036 Telephone: 202-808-3570 Facsimile: 202-354-5232 Attorneys for Opposer Disney Enterprises, Inc.

EXHIBIT A https://item.jd.com/10090489288.html

https://translate.google.com/translate?sl=auto&tl=en&u=https://item.jd.com/10090489288.html

https://www.amazon.co.uk/Crystal-Curtain-Living-Partition-Decoration/dp/B07XT84HNS

https://www.amazon.es/Cortina-Cuentas-Cristal-Decoraci%C3%B3n-21article-W/dp/B07XWSYNQD

https://www.amazon.de/Kristallperlenvorhang-Wohnraumtrennwand-H%C3%A4ngender-Decoration-21article- W/dp/B07XWSYNQD