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Notice of Opposition Opposer Information Applicant Information Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA614649 Filing date: 07/09/2014 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 STF Productions, Inc. Granted to Date 07/09/2014 of previous ex- tension Address 10201 West Pico Blvd. Los Angeles, CA 90035 UNITED STATES Attorney informa- Linda K. McLeod tion Kelly IP, LLP 1330 Connecticut Avenue, N.W., Suite 300 Washington, DC 20036 UNITED STATES [email protected], [email protected], jac- [email protected] Applicant Information Application No 85893015 Publication date 03/11/2014 Opposition Filing 07/09/2014 Opposition Peri- 07/09/2014 Date od Ends Applicants Blueprint Group II, LLC One Presidential Boulevard, Suite 320 Bala Cynwyd, PA 19004 UNITED STATES SEFG Entertainment, LLC One Presidential Boulevard, Suite 320 Bala Cynwyd, PA 19004 UNITED STATES Goods/Services Affected by Opposition Class 041. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Entertainment in the nature of visual and audio performances by musical bands; Entertainment in the nature of visual and audio performances, and musical, variety, news and comedy shows; Entertainmentin the nature of visual and audio per- formances, namely, musical band, rock group, gymnastic, dance, and ballet performances; Entertain- ment in the nature of live musical bands; Entertainment services in the nature of live musical perform- ances; Entertainment services in the natureof presenting live musical performances; Entertainment services in the nature of live musical performances; Entertainment, namely, live music concerts; En- tertainment, namely, live performances by musical bands Applicant Information Application No 85892986 Publication date 03/11/2014 Opposition Filing 07/09/2014 Opposition Peri- Date od Ends Applicants Blueprint Group II, LLC One Presidential Boulevard, Suite 320 Bala Cynwyd, PA 19004 UNITED STATES SEFG Entertainment, LLC One Presidential Boulevard, Suite 320 Bala Cynwyd, PA 19004 UNITED STATES Goods/Services Affected by Opposition Class 041. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Entertainment in the nature of visual and audio performances by musical bands; Entertainment in the nature of visual and audio performances, and musical, variety, news and comedy shows; Entertainmentin the nature of visual and audio per- formances, namely, musical band, rock group, gymnastic, dance, and ballet performances; Entertain- ment in the nature of live musical bands; Entertainment services in the nature of live musical perform- ances; Entertainment services in the natureof presenting live musical performances; Entertainment services in the nature of live musical performances; Entertainment, namely, live music concerts; En- tertainment, namely, live performances by musical bands Grounds for Opposition Priority and likelihood of confusion Trademark Act section 2(d) Dilution Trademark Act section 43(c) Marks Cited by Opposer as Basis for Opposition U.S. Registration 1795330 Application Date 07/24/1992 No. Registration Date 09/28/1993 Foreign Priority NONE Date Word Mark AMERICA'S MOST WANTED Design Mark Description of NONE Mark Goods/Services Class 041. First use: First Use: 1987/10/19 First Use In Commerce: 1987/10/19 entertainment services in the form of an on-going television series U.S. Registration 1791699 Application Date 07/24/1992 No. Registration Date 09/07/1993 Foreign Priority NONE Date Word Mark AMERICA'S MOST WANTED Design Mark Description of NONE Mark Goods/Services Class 025. First use: First Use: 1988/09/30 First Use In Commerce: 1988/09/30 T-shirts, sweatshirts, hats U.S. Registration 2130242 Application Date 11/26/1996 No. Registration Date 01/20/1998 Foreign Priority NONE Date Word Mark AMERICA'S MOST WANTED AMERICA FIGHTS BACK Design Mark Description of NONE Mark Goods/Services Class 041. First use: First Use: 1996/10/19 First Use In Commerce: 1996/10/19 production and distribution of an on-going television series featuring crimes and criminals U.S. Registration 2135529 Application Date 12/17/1996 No. Registration Date 02/10/1998 Foreign Priority NONE Date Word Mark AMERICA'S MOST WANTED AMERICA FIGHTS BACK Design Mark Description of NONE Mark Goods/Services Class 041. First use: First Use: 1996/10/19 First Use In Commerce: 1996/10/19 production and distribution of an on-going television crime series U.S. Registration 3179312 Application Date 12/16/2004 No. Registration Date 12/05/2006 Foreign Priority NONE Date Word Mark AMERICA'S MOST WANTED Design Mark Description of NONE Mark Goods/Services Class 041. First use: First Use: 1996/11/30 First Use In Commerce: 1996/11/30 Entertainment services in the nature ofan on-going radio program featuring crimes and criminals; production and distribution of an on-going radio program featuring crimes and criminals; providing online information via the Internet in thefield of crimes and criminals Attachments 74297884#TMSN.gif( bytes ) 74297883#TMSN.gif( bytes ) 75214893#TMSN.gif( bytes ) 78534142#TMSN.jpeg( bytes ) Notice of Opposition with Exhibit A.pdf(118384 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 /Linda K. McLeod/ Name Linda K. McLeod Date 07/09/2014 Attorney Docket No. 10210.1241 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD STF PRODUCTIONS, INC., Opposition No.: Opposer. Mark: AMERICAS MOST WANTED TOUR v. Serial No.: 85893015 Filed: 04/02/2013 BLUEPRINT GROUP II, LLC AND SEFG ENTERTAINMENT, LLC, Mark: AMERICAS MOST WANTED MUSIC FESTIVAL Applicants. Serial No.: 85892986 Filed: 04/02/2013 NOTICE OF OPPOSITION STF Productions, Inc. (“Opposer”), a corporation of the State of Delaware, having a place of business at 10201 West Pico Blvd., Los Angeles, CA 90035, believes that is being and will be damaged by the registration of the marks shown in Application Serial Nos. 85893015 and 85892986, and hereby opposes the same. As grounds for its opposition, Opposer alleges the following, upon actual knowledge with respect to itself and its own acts, and upon information and belief as to other matters: Opposer and Its Business 1. Opposer, by and through its predecessors and related companies (collectively “Opposer”), is engaged in the business of producing and distributing television programming. 2. Since as early as 1987, Opposer has made extensive use of its AMERICA’S MOST WANTED trademark in commerce in connection with its nationally broadcast, hour-long television series under the same name. 1 Application Serial Nos. 85893015 and 85892986 3. Opposer’s AMERICA’S MOST WANTED television series has been broadcast on major television networks, including Fox and Lifetime. 4. Opposer’s AMERICA’S MOST WANTED television series has been immensely successful, and has attracted many millions of viewers for decades. 5. Opposer’s AMERICA’S MOST WANTED television series has received significant unsolicited media attention in, among other sources, CNN, Variety, The New York Daily News, The New York Times, The Boston Globe, The Chicago Tribune, The New York Post, Newsday, The Detroit News, The Baltimore Sun, The Washington Post, The Hollywood Reporter, The Denver Post, The San Francisco Chronicle, The Columbus Dispatch, The Indianapolis Star, The Los Angeles Times, The Associated Press, and PR Newswire. 6. Further, since as early as 1988, Opposer has used its AMERICA’S MOST WANTED mark in connection with collateral merchandise, including clothing and hats. 7. Through its extensive use of AMERICA’S MOST WANTED mark over the years, and substantial nationwide advertising and promotion, publicity, and commercial success, Opposer has developed substantial goodwill in its AMERICA’S MOST WANTED mark, and the AMERICA’S MOST WANTED mark has been distinctive and famous for many years. Opposer’s Registrations for its AMERICA’S MOST WANTED Marks 8. Opposer owns the following valid and subsisting Federal registrations for its AMERICA’S MOST WANTED marks (printouts from the PTO TSDR database, including Assignment information, are attached as Exhibit A): 2 Application Serial Nos. 85893015 and 85892986 REG. NO. MARK GOODS/SERVICES DATE ISSUED Reg. No. 1795330 Entertainment services in the form of AMERICA’S MOST an on-going television series in Class WANTED & Design Issued: Sept. 28, 1993 41. Reg. No. 1791699 AMERICA’S MOST T-shirts, sweatshirts, hats in Class WANTED & Design 25. Issued: Sept. 7, 1993 AMERICA’S MOST Reg. No. 2130242 Production and distribution of an on- WANTED FIGHTS going television series featuring BACK Issued: Jan. 20, 1998 crimes and criminals in Class 41. AMERICA’S MOST Reg. No. 2135529 Production and distribution of an on- WANTED FIGHTS going television crimes series in BACK & Design Issued: Feb. 10, 1998 Class 41. Entertainment services in the nature of an on-going radio program featuring crimes and criminals; Reg. No. 3179312 AMERICA’S MOST production and distribution of an on- WANTED & Design going radio program featuring crimes Issued: Dec. 5, 2006 and criminals; providing online information via the Internet in the field of crimes and criminals in Class 41. 9. The registrations above constitute prima facie evidence of the validity of the marks and registrations, and of Opposer’s ownership of and exclusive right to use those marks in commerce for the goods and services identified in those registrations. (The marks set forth in Paragraphs 2 through 8 above are collectively referred to as “Opposer’s AMERCIA’S MOST WANTED Marks” and the goods and services set forth in Paragraphs 2 through 8 above are collectively referred to as “Opposer’s Goods and Services”). 10. In addition, Opposer owns U.S. Application Serial No.
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