Estta1046871 04/03/2020 in the United States Patent And
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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1046871 Filing date: 04/03/2020 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91247058 Party Plaintiff World Wrestling Entertainment, Inc. Correspondence CHRISTOPHER M. VERDINI Address K&L GATES LLP 210 SIXTH AVENUE, GATES CENTER PITTSBURGH, PA 15222 UNITED STATES [email protected], [email protected], [email protected] 412-355-6766 Submission Motion for Summary Judgment Yes, the Filer previously made its initial disclosures pursuant to Trademark Rule 2.120(a); OR the motion for summary judgment is based on claim or issue pre- clusion, or lack of jurisdiction. The deadline for pretrial disclosures for the first testimony period as originally set or reset: 04/07/2020 Filer's Name Christopher M. Verdini Filer's email [email protected], [email protected], [email protected] Signature /Christopher M. Verdini/ Date 04/03/2020 Attachments Motion for Summary Judgment.pdf(125069 bytes ) Sister Abigail - LDM Declaration.pdf(219571 bytes ) LDM Dec Ex 1.pdf(769073 bytes ) Verdini Decl. in Support of MSJ.pdf(38418 bytes ) Exhibit 1 CMV dec.pdf(103265 bytes ) Exhibit 2 CMV dec.pdf(350602 bytes ) Exhibit 3 CMV dec.pdf(1065242 bytes ) Exhibit 4 CMV dec.pdf(754131 bytes ) Exhibit 5 CMV dec.pdf(4294048 bytes ) Exhibit 6 CMV dec.pdf(3128613 bytes ) Exhibit 7 CMV dec.pdf(1120363 bytes ) Exhibit 8 CMV dec.pdf(515439 bytes ) Exhibit 9 CMV dec.pdf(703158 bytes ) Exhibit 10 CMV dec.pdf(1033240 bytes ) Exhibit 11 CMV dec.pdf(323927 bytes ) Exhibit 12 CMV dec.pdf(344433 bytes ) Exhibit 13 CMV dec.pdf(923293 bytes ) Exhibit 14 CMV dec.pdf(1290062 bytes ) Exhibit 15 CMV dec.pdf(632066 bytes ) Exhibit 16 CMV dec.pdf(656955 bytes ) Exhibit 17 CMV dec.pdf(814467 bytes ) Exhibit 18 CMV dec.pdf(191571 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD ____________________________________ WORLD WRESTLING ) ENTERTAINMENT, INC., ) ) Opposer, ) ) Opposition No. 91/247,058 v. ) ) TATEVIK HUNANYAN, ) ) Applicant. ) ____________________________________) OPPOSER’S MOTION FOR SUMMARY JUDGMENT AND BRIEF IN SUPPORT THEREOF Pursuant to Trademark Rule of Practice 2.127 and Rule 56 of the Federal Rules of Civil Procedure, Opposer World Wrestling Entertainment, Inc. (“Opposer” or “WWE”), by its undersigned counsel, respectfully moves the Board for an order granting summary judgment in its favor and sustaining its opposition against Tatevik Hunanyan (“Applicant”) and her Trademark Application Serial No. 87/949,834 for “Sister Abigail.” This Motion is supported by the points and authority cited in the Brief herein and the Declarations of Lauren Dienes-Middlen (“Dienes-Middlen Decl.”) and Christopher M. Verdini (“Verdini Decl.”) and exhibits attached thereto. Pursuant to Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) §§ 510.3(a) and 528.03, WWE also requests that the Board suspend the Opposition pending the Board’s consideration and ruling on this Motion. 1 BRIEF IN SUPPORT OF SUMMARY JUDGMENT I. INTRODUCTION WWE is a world famous wrestling entertainment services provider with a fanbase that stretches across the United States and across the globe. As part of its business, WWE invests large amounts of time, effort and money to conceive of and develop unique wrestling characters and storylines that WWE protects under intellectual property laws, including trademark law. The fame and notoriety of WWE and its unique characters and storylines, however, unfortunately attracts individuals and entities who attempt to usurp and unfairly benefit from WWE’s investment. Applicant is one such individual. Starting in late-2015, Applicant contacted WWE on multiple occasions to request a tryout to become a WWE wrestler. WWE never invited Applicant for a tryout but did use Applicant as an extra at several WWE events between 2016-2018. In conjunction with Applicant’s repeated requests to work for WWE, she expressed a desire to portray one of WWE’s trademarked characters. That character was SISTER ABIGAIL -- introduced by WWE in 2013 as part of an on-going and evolving storyline involving one of WWE’s most prominent characters -- Bray Wyatt. After it became clear to Applicant that she would never portray the WWE SISTER ABIGAIL character after multiple unsuccessful requests of WWE, and despite knowing that the SISTER ABIGAIL name and character had been created and continually used by WWE not Applicant, Applicant nonetheless filed an application to register Sister Abigail in connection with wrestling entertainment services. WWE opposed Applicant’s application and now moves for summary judgment that its opposition should be granted and Applicant’s application should be denied registration with prejudice. The undisputed facts establish, as a matter of law, that WWE owns the trademark Sister 2 Abigail in connection with wrestling entertainment services by virtue of its years of use of the mark in commerce. In contrast, Applicant has admitted she has never used Sister Abigail as a trademark in commerce. The undisputed facts also establish, as a matter of law, that Applicant’s attempt to register the identical mark for the identical services is likely to cause confusion. Accordingly, even when viewing all of the facts in Applicant’s favor, those facts compel the Board to grant summary judgment in favor of WWE and deny registration of Applicant’s Sister Abigail application. II. FACTUAL BACKGROUND A. WWE’s Use of Sister Abigail WWE is an integrated media and entertainment company that has been involved in the sports entertainment business for approximately four decades and has developed WWE into one of the most recognized and popular brands in global entertainment today. See Dienes-Middlen Decl. at ¶¶ 4-5 and Ex. 1. At the heart of WWE’s success are the athletic and entertainment skills and appeal of its wrestlers, known as “WWE Superstars,” and the consistently innovative and multifaceted storylines WWE creates for its Superstars. Id. at ¶ 6. WWE’s unique content, for which it coined the term “sports entertainment,” is perhaps best described as an action- adventure episodic drama that is akin to an ongoing, ever-developing soap opera based around WWE’s Superstars. Id. at ¶ 7. WWE creates colorful characters that generally wrestle under a trademarked name and are distinctively delineated with unique persona, history, relationships, music, visual appearance, and behavior. Id. at ¶ 8. WWE provides the public with its wrestling entertainment services through, inter alia, television, online, and live events. Id. at ¶ 9. For example, WWE produces nationally televised wrestling programs under its “RAW®”, “SMACKDOWN®” and “NXT®” brands. Id. In 3 addition, in or around February 2014, WWE launched the WWE Network, a 24/7 direct-to- consumer online video-streaming network with scheduled programming and a massive video-on- demand library. Id. at ¶ 10. Currently, the WWE Network is available in over 180 countries and territories and currently has over 1 million paid subscribers that can access over 10,000 hours of WWE programming. Id. at ¶ 11. Ancillary to its sports entertainment programming, WWE engages in an extensive licensing program to create and sell products featuring its trademarks, copyrighted works, copyrighted characters and other intellectual property in diverse categories including, among other things, apparel, video games, toys and DVDs. Id. at ¶ 12. In 2019, WWE earned over $90 million in revenues from its licensing and sale of consumer products. Id. Windham Rotunda is a WWE Superstar. Id. at ¶ 14. Since 2012, Mr. Rotunda has performed for WWE under the trademarked ring name Bray Wyatt. Id. Beginning in 2013, WWE created a storyline for Bray Wyatt that included him and a group of wrestlers known as the Wyatt Family. Id. at ¶ 15. As part of that storyline, WWE created and introduced to the public the SISTER ABIGAIL character. Id. Specifically, beginning in 2013, Bray Wyatt introduced SISTER ABIGAIL in a taped speech or “promo” that aired on WWE’s televised programming. See id.; see also Verdini Decl. at ¶¶ 3-4 and Ex. 1. In that promo, Bray Wyatt explained how SISTER ABIGAIL led the Wyatt Family before she died and appointed Bray Wyatt as the leader of the family. In addition, as more fully described in the videos WWE has submitted concurrently herewith (see Verdini Decl. at Ex. 1), the storyline included elements of the supernatural and that SISTER ABIGAIL would continue her involvement in the Wyatt Family from the afterlife. 4 After the initial introduction of the SISTER ABIGAIL character, WWE used SISTER ABIGAIL in its nationally televised broadcasts as the name of Bray Wyatt’s finishing wrestling move. See Dienes-Middlen Decl. at ¶ 16; Verdini Decl. at Ex. 1. WWE continues to use SISTER ABIGAIL in this manner. Id. WWE also has sold merchandise that prominently displayed SISTER ABIGAIL as shown below: Dienes-Middlen Decl. at ¶ 18. The merchandise sales for just these two designs totaled over $71,000. Id. WWE’s SISTER ABIGAIL storyline continued in 2015 when a new member of the Wyatt Family was introduced as a gift from SISTER ABIGAIL. See Verdini Decl. at ¶¶ 3-4 and Ex. 1. From 2015 through the present, WWE has continued to use SISTER ABIGAIL as a trademark in its wrestling programming that is nationally-televised and available on the WWE Network and other WWE online platforms such as YouTube. Id. WWE’s uses of SISTER ABIGAIL include live promos by Bray Wyatt in storylines that include SISTER ABIGAIL, taped vignettes or promos that aired on WWE programming, identifying Bray Wyatt’s finishing wrestling move as SISTER ABIGAIL and use on merchandise including clothing and in video 5 games such as WWE 2K15. See Dienes-Middlen Decl. at ¶¶ 15-18; Verdini Decl. at Ex. 1.