Notice of Opposition Opposer Information Applicant Information

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA990092 Filing date: 07/24/2019

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 David E Chavarri Granted to Date 08/21/2019 of previous ex- tension Address 7017 STEPHANIE COURT NORTH RICHLAND HILLS, TX 76182 UNITED STATES

Attorney informa- DAVID LISCH tion GRAY REED & MCGRAW LLP 1601 ELM STREET, SUITE 4600 DALLAS, TX 75201 UNITED STATES [email protected], [email protected], [email protected], [email protected] 4693206183

Applicant Information

Application No 88184103 Publication date 04/23/2019 Opposition Filing 07/24/2019 Opposition Peri- 08/21/2019 Date od Ends Applicant Ill Nino LLC Apt 2R 123 Madison St. Hoboken, NJ 07030 UNITED STATES Goods/Services Affected by Opposition

Class 041. First Use: 1999/07/07 First Use In Commerce: 2000/02/02 All goods and services in the class are opposed, namely: Entertainment, namely, live performances by a musical band Grounds for Opposition

Priority and likelihood of confusion Trademark Act Section 2(d) Applicant not rightful owner of mark for identified Trademark Act Section 1 goods or services Fraud on the USPTO In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009) Mark Cited by Opposer as Basis for Opposition

U.S. Application 88184112 Application Date 11/06/2018 No. Registration Date NONE Foreign Priority NONE Date Word Mark ILL NIÃ#O Design Mark

Description of NONE Mark Goods/Services Class 041. First use: First Use: 1999/01/31 First Use In Commerce: 1999/01/31 Entertainment services in the nature oflive musical performances; Entertainment services, namely, providing information about a recording artist via an onlinenet- work

Related Proceed- DAVID E. CHAVARRI V. CHRISTIAN MACHADO, ET AL., Civil Action No. ings 3:19-cv-03607-M, in the Northern District of Texas, Dallas Division.

Attachments 88184112#TMSN.png( bytes ) Notice of Opposition re 103 TM App. [FINAL].pdf(1431889 bytes )

Signature /David Lisch/ Name DAVID LISCH Date 07/24/2019 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In the matter of Application Serial No. 88/184,103 For the Mark: Ill Niño Published in the Official Gazette: April 23, 2019

DAVID E. CHAVARRI,

Opposer,

v. Opposition No. ______

ILL NINO, LLC

Applicant.

NOTICE OF OPPOSITION

Opposer David E. Chavarri will be damaged by registration of the trademark “Ill Niño” as applied for in Application Serial No. 88/184,103 (the “ ’103 Trademark Application”). A true and correct copy of the ’103 Trademark Application is attached hereto as Exhibit 1. The ’103

Trademark Application was filed on November 6, 2018, for “Entertainment, namely, live performances by a musical band.” Ex. 1 at 2, 4. The ’103 Trademark Application was published on April 23, 2019.

By and through its attorneys, the undersigned, Opposer Chavarri obtained extensions of time to oppose the ’103 Trademark Application, the last of which expires on August 21, 2019.

Opposer hereby opposes registration of the ’103 Trademark Application for “Ill Niño” on the following grounds:

OPPOSER’S NOTICE OF OPPOSITION 1 I. PARTIES

1. Opposer David E. Chavarri is an individual and member of Applicant, Ill Niño,

LLC. Opposer Chavarri is a resident of North Richland Hills, Texas.

2. Applicant Ill Niño, LLC is a limited liability company registered in the State of

New Jersey. A true and correct copy of Ill Niño, LLC’s certificate of formation is attached hereto as Exhibit 2. Ill Niño, LLC is comprised of five members: Lazaro Pina, Opposer David Chavarri,

Christian Machado, Ahrue Luster, and Diego Verduzco. Ex. 2 at 1. Messrs. Machado, Luster, and

Verduzco each signed the ’103 Trademark Application purporting to act as a “Principal” on behalf

of Applicant, Ill Niño, LLC.

II. STANDING

3. The below facts demonstrate that Opposer Chavarri is the owner of the ILL NIÑO

mark and has continuously used the ILL NIÑO mark in interstate commerce since 1999 in

connection with entertainment services, including live performances by a musical band.

Specifically, the facts show that Opposer Chavarri created a musical band he named Ill Niño

approximately twenty years ago, which has become internationally recognized.

4. The ’103 Trademark Application filed by Applicant asserts ownership of the Ill

Niño mark for “Entertainment, namely, live performances by a musical band.” Ex. 1 at 2, 4.

5. As described below, on November 6, 2018, Opposer Chavarri filed an application to register his mark ILL NIÑO for “Entertainment services in the nature of live musical performances; Entertainment services, namely, providing information about a recording artist via an online network,” under Serial No. 88/184,112 (the “ ’112 Trademark Application”). The examiner of Opposer Chavarri’s ’112 Trademark Application suspended the application based on

the ’103 Trademark Application on grounds that, if the mark in the ’103 Trademark Application

OPPOSER’S NOTICE OF OPPOSITION 2 registers, Opposer Chavarri’s mark may be refused registration under Section 2(d) because of a likelihood of confusion with that registered mark.

6. Accordingly, Opposer Chavarri possesses a real interest in the opposition proceeding beyond that of a mere intermeddler, and has a reasonable basis for its belief of damage as the issuance of a registration to Applicant will damage Opposer Chavarri at least by preventing

Opposer Chavarri’s registration of its mark. Therefore, Opposer has standing to bring this opposition proceeding.

III. SUMMARY OF THE OPPOSITION

7. Opposer opposes registration of the ’103 Trademark Application for at least the following reasons:

1) Under the Trademark Act Section 1 because Applicant is not the owner of the ILL NIÑO mark, and/or does not have all rights in ILL NIÑO mark, and the ’103 Trademark Application is therefore void;

2) Because the signatories to the ’103 Trademark Application committed multiple counts of fraud on the USPTO; and

3) Under the Trademark Act Section 2(d) as Opposer’s use of the ILL NIÑO mark has priority over Applicant’s alleged use of the ILL NIÑO mark, and there is a likelihood of confusion between Opposer’s ILL NIÑO mark and Applicant’s applied for ILL NIÑO mark.

IV. FACTS

Opposer Chavarri’s Management and Control of Band Members and His Ill Niño Band

8. Opposer Chavarri conceived of and formed a band he named “El Niño” in 1998

(the “Band”). Opposer Chavarri determined the nature and character of the Band to be Latin Metal.

9. To accomplish Opposer Chavarri’s desired sound for the Band, Opposer Chavarri hired Cristian Machado to play bass guitar, Jorge Rosado to be the lead singer, and Daniel Gomez to be a guitarist.

OPPOSER’S NOTICE OF OPPOSITION 3 10. In an effort to fine-tune the Band’s sound and control the quality and character of the Band and associated mark, shortly after the formation of the Band, Opposer Chavarri replaced

Mr. Gomez with Marc Rizzo. This action was performed unilaterally by Opposer Chavarri, without permission or approval from any other Band members. No other Band member voiced any objection to Opposer Chavarri’s actions or his right to make such decisions.

11. Around early 1999, Opposer Chavarri changed the name of the Band to “Ill Niño.”1

This action was performed unilaterally, without the need to obtain consent from any other Band members. No Band member voiced any objection to Opposer Chavarri’s right to take such action.

At the same time, Opposer Chavarri also substantially changed Mr. Machado’s position from bass to vocalist. Mr. Machado did not object or voice issue with this change. Opposer Chavarri performed these unilateral measures to establish the unique reputation and quality of the music associated with the ILL NIÑO mark.

12. In late 1999 or early 2000, Opposer Chavarri expanded his Band by auditioning and hiring Lazaro Pina on bass. Opposer Chavarri also hired Jardel Paisante as a rhythm guitarist, and Roger Vasquez as a percussionist. Opposer Chavarri hired these talented individuals to broaden the Band’s character and sound in order to obtain Opposer Chavarri’s desired unique musical impression associated with the ILL NIÑO mark.

13. The Band did not have an official manager or promoter from its inception until approximately July 2001. During that time, Opposer Chavarri acted as the Band’s de facto manager. As such, and in order for Opposer Chavarri to maintain his desired musical reputation of the Band and quality and characteristics of the ILL NIÑO mark, Opposer Chavarri controlled the

1 See, e.g., Ill Niño, SPOTIFY, https://open.spotify.com/artist/1xJ6l1VXgGuyZ0uhu27caF/about (“ILL NIÑO . . . Formed in 1999 by drummer Dave Chavarri.”)

OPPOSER’S NOTICE OF OPPOSITION 4 Band’s song recording efforts, controlled the Band’s advertising, obtained gigs for the Band, determined which gigs the Band would play, and eventually selected a fulltime manager for the

Band. To further ensure the quality and character of the Band’s sound, which is associate with the

ILL NIÑO mark, Opposer Chavarri spearheaded efforts for the Band to record its first EP in mid to late 1999. Opposer Chavarri produced and engineered the EP, which was released in early 2000 under Opposer Chavarri’s own record label, CIA Recordings.

14. In mid-2000, Opposer Chavarri began to shop for record labels in an effort to further publicize the Band. To ensure increased public exposure for the Band and to enhance the

ILL NIÑO mark, Opposer Chavarri met with Mike Gitter, Artists & Repertoire of Roadrunner

Records. Opposer Chavarri then organized a gig for the Band at the Snow.Core Festival in New

Jersey and invited Mr. Gitter to attend. Shortly thereafter, Mr. Gitter offered Opposer Chavarri a record deal with Roadrunner Records for the Band, which Opposer Chavarri accepted. No Band member objected to or voiced concern regarding Opposer Chavarri’s unilateral right and decision to accept the Roadrunner Records recording contract.

15. Mr. Gitter suggested Opposer Chavarri obtain an entertainment law attorney for the

Band and recommended Mr. Nick Ferrara, a well-respected entertainment lawyer. To safeguard the Band’s reputation and the ILL NIÑO mark, Opposer Chavarri met with Mr. Ferrara and then hired him. No other Band members were invited to join this meeting. After informing the Band of this decision, no Band member objected or voiced concern with Opposer Chavarri’s unilateral right to make this decision.

16. Opposer Chavarri once again spearheaded and controlled the Band’s recording of its next songs, eventually resulting in the Band’s debut full-length album “Revolution,

Revolución.” Opposer Chavarri controlled and protected the Band and the ILL NIÑO mark by

OPPOSER’S NOTICE OF OPPOSITION 5 researching and selecting a recording studio, coordinating rehearsals, paying for rehearsal rooms,

choosing which songs would and would not be included on the album, and created the album title.

Opposer Chavarri was also part composer and producer of the album.

17. To further increase the Band’s publicity and notoriety of the ILL NIÑO mark,

Opposer Chavarri next set out to obtain a booking agency for his Band. On or around the beginning

to mid-2001, Opposer Chavarri setup a meeting with Dave Kirby and Mike Monterulo at The

Agency Group (“TAG”). TAG offered to represent the Band. Opposer Chavarri informed the other

Band members of this and then signed with TAG for representation. No Band member objected or

opposed.

18. Opposer Chavarri also started to search for an official Band manager. Opposer

Chavarri interviewed and signed with Andy Gould of AGM. No other Band member objected or opposed. After Mr. Gould was hired, Mr. Gould deferred to Opposer Chavarri for all decisions.

Mr. Gould would then execute Band management based on Opposer Chavarri’s instructions.

19. Due to Opposer Chavarri’s leadership, the Band released their debut album

“Revolution, Revolución” around September 2001. Afterwards, Opposer Chavarri arranged for his

Band to tour intensively for twenty straight months throughout America, Europe, and Japan, notably being a part of the U.S. Road Rage Tour with Fear Factory and Machine Head, and landing prestigious tours such as Ozzfest, Jägermeister tour, Germany’s Rock Am Ring/ Rock Im Park,

Spain’s Festimad Festival, the UK’s Download Festival, Holland’s Dynamo Festival, and

Belgium's Graspop Metal Meeting. The album’s single, “What Comes Around,” received significant airplay on MTV and enjoyed a long shelf life in the top 20 Active Rock radio charts.

The song topped at number one on the Mediabase Active Rock radio charts for five weeks.

“Revolution, Revolución” went on to sell over 450,000 copies worldwide. Opposer Chavarri had

OPPOSER’S NOTICE OF OPPOSITION 6 sole control and discretion of which tours and shows the Band played, and relayed those decisions through Mr. Kirby and Mr. Gould to ensure the Band’s reputation and goodwill of the ILL NIÑO mark were maintained.

20. Around mid-2003, Roger Vasquez and Mr. Rizzo, the Band’s percussionist, parted ways with the Band. Opposer Chavarri auditioned and hired Daniel Couto for the percussionist role. Shortly thereafter, (still around mid-2003), Opposer Chavarri reached out to Ahrue Ilustre to audition for the lead guitarist position. Opposer Chavarri auditioned and hired Mr. Ilustre to be a guitarist in the Band.

21. On information and belief, still around mid-2003, Opposer Chavarri decided to upgrade the Band’s manager. Opposer Chavarri contacted and hired Paul Geary to manage the

Band. No other Band member had any input as to the management change, and no Band member voiced an objection.

22. Opposer Chavarri’s direction continued to bring fame and success to his Band and the ILL NIÑO mark as the Band’s second album, “Confession,” was released around September

2003. Opposer Chavarri both played drums in all songs on the album and co-produced the album.

The lead album single “How Can I Live” was featured on the Freddy vs. Jason soundtrack and was the Band’s first single to break into the “Billboard” charts, peaking at number 26 on the mainstream rock charts. The Band also performed on an 18-month World Tour, including headlining the Road

Rage Tour in Europe with Chimaira and Spineshank, as well as headlining stages in South

America, such as the Vive Latino Festival in Mexico twice, and stages in Europe, the UK,

Australia, and Japan. The “Confession” album sold more than 550,000 copies worldwide. In order to maintain the quality and nature of the Band and the ILL NIÑO mark, Opposer Chavarri

OPPOSER’S NOTICE OF OPPOSITION 7 controlled and had sole discretion over which tours and shows the Band played and relayed those decisions through Mr. Geary.

23. The Band released a third album, “One Nation Underground,” around September

2005. Again, Opposer Chavarri both played drums in all songs on the album and co-produced the album. On information and belief, the album debuted at No. 101 on the “Billboard” 200 charts, and the song “What You Deserve” became the most added track at Active Rock radio, and reached the Top 20 on the Active Rock charts.

24. In early 2006, Opposer Chavarri decided the Band and the ILL NIÑO mark would be best served if the Band parted ways with Mr. Geary. Afterwards, to protect the well-established

ILL NIÑO mark, Opposer Chavarri and his management company, Collective International Artists

Management (“CIA Management”), managed the Band. CIA Management was to be paid a 10%

commission on all gross earnings of the Band. No other Band member opposed or voiced issue

with this change in management.

25. Opposer Chavarri succeeded in his management efforts as, around mid-2006,

Opposer Chavarri obtained a new record deal for the Band with Cement Shoes Records (CSR),

distributed by Universal Music, which could provide more focused efforts on the Band and further

its successes. Once again, no other Band member opposed this decision or Opposer Chavarri’s right to make such decisions.

26. On information and belief, around the same time (mid-2006), then-rhythm guitarist

Jardel Paisante left the Band to be closer with family. To replace Mr. Paisante, Opposer Chavarri reached out to Ill Niño fan and acquaintance, Raul Diego Verduzco. In order to guarantee the

Band’s sound, quality, and the Ill NINO mark’s reputation were maintained, Opposer Chavarri first had Mr. Verduzco audition for the rhythm guitarist spot. The audition took place in front of

OPPOSER’S NOTICE OF OPPOSITION 8 all Band members. Afterwards, all Band members, except Opposer Chavarri, were opposed to

hiring Mr. Verduzco to join the Band. Despite this, Opposer Chavarri hired Mr. Verduzco to join

the Band as a rhythm guitarist. No Band member opposed Opposer Chavarri’s right to make this

decision.

27. The Band released various albums over the next few years under Opposer

Chavarri’s direction.

28. In early 2010, Opposer Chavarri and the Band’s attorney negotiated and signed a

new and even better record deal with Victory Records. Opposer Chavarri was the sole decision

maker in this election and no other Band members voiced opposition or disagreement with

Opposer Chavarri’s decision or his right to make this decision.

29. The Band release additional records through 2013. On information and belief, then

percussionist Daniel Couto departed the Band to spend more time with family. Opposer Chavarri

auditioned and hired Oscar Santiago to replace Mr. Couto as percussionist. Yet again, no other

Band members voiced opposition or disagreement with Opposer Chavarri’s right to make the

decision.

30. The Band released additional music in mid-2014, and continued to tour until mid-

2017.

31. Ill Niño, LLC (the Applicant) was formed in late 2015. No assignment of any right,

title, or interest in or to the ILL NIÑO mark and associated goodwill was ever assigned to Ill Niño,

LLC, in writing, orally, implied, or otherwise. Thus, Ill Niño, LLC is not the owner of the ILL

NIÑO mark.

OPPOSER’S NOTICE OF OPPOSITION 9 32. Unfortunately, in recent years, Mr. Machado’s musical abilities and performances substantially declined to the extent that fans commented on social media outlets, such as YouTube, regarding Mr. Machado’s poor performance.

33. Moreover, Mr. Machado and Mr. Ilustre had significant personal financial and family issues that negatively affected the Band. For example, such issues led to Mr. Ilustre not attending four shows of the “There Goes the Neighborhood” European Tour the Band was performing in. The devastating result was that the Band performed these shows one guitar short, which is an embarrassment in the music industry.

34. Similarly, Mr. Machado also had substantial financial and family issues that resulted in Band hardships.

35. Opposer Chavarri attempted to resolve internal Band conflicts caused by the issues described above and move the Band forward. Rather than reconcile their differences, Messrs.

Machado, Ilustre, and Verduzco departed the Band. Opposer Chavarri moved the Band forward without them. Opposer Chavarri’s actions were necessary in order to protect the quality, character, and sound of the Band and the goodwill associated with the ILL NIÑO mark.

36. Opposer Chavarri moved the Band forward with Mr. Pina, and hired Daniel Couto

(percussionist), Marcos Leal (lead singer), Sal Dominguez (rhythm guitarist), and Jess Dehoyos

(lead guitarist). On Jan 17, 2019, with these Band members, Opposer Chavarri released the Band’s first song in nearly 5 years—SANGRE.

Applicant’s Violation of The Trademark Act Section 1

37. Applicant violated the Trademark Act Section 1 because Applicant is not the rightful owner of the ILL NIÑO mark, and the ’103 Trademark Application is void. Accordingly, the opposition should be sustained and registration should be refused.

OPPOSER’S NOTICE OF OPPOSITION 10 38. Opposer Chavarri owns all rights in and to the ILL NIÑO mark. The

aforementioned demonstrates Opposer Chavarri’s origination and continuous use of the ILL NIÑO

mark. The aforementioned also demonstrates Opposer Chavarri’s meticulous control over the

quality and characteristics of the ILL NIÑO mark.

39. Opposer Chavarri has never assigned, in writing, orally, implied, or otherwise, the

ILL NIÑO mark and goodwill associated with in the mark to any person or entity. Additionally,

Opposer Chavarri never expressly granted either Applicant (Ill Niño, LLC) or Messrs. Machado,

Verduzco, and Ilustre any right to use his ILL NIÑO mark. And, any implied right that may have been granted to any of Messrs. Machado, Verduzco, and Ilustre was expressly revoked by Opposer

Chavarri in a November 5, 2018 letter from Opposer Chavarri’s attorney to Messrs. Machado,

Verduzco, and Ilustre’s attorney.

40. Accordingly, Opposer Chavarri owns all rights and goodwill in the ILL NIÑO mark.

41. Therefore, because Applicant does not own any rights in the ILL NIÑO mark, the

’103 Trademark Application does not meet the requirements of Trademark Act Section 1 and is void. Thus, the opposition should be sustained and registration should be refused.

42. The signatories to the ’103 Trademark Application are Messrs. Machado, Ilustre, and Verduzco (hereinafter, the “Signatories”). These Signatories are also members of Applicant

(Ill Niño, LLC). See Ex. 2. Assuming, arguendo, that in addition to Opposer Chavarri having rights in the ILL NIÑO mark, one or more of Messrs. Machado, Ilustre, and Verduzco also have any rights in the ILL NIÑO mark, on information and belief, at least at the time the ’103 Trademark

Application was filed, the signatories had not assigned their own rights in the ILL NIÑO mark to

Applicant either.

OPPOSER’S NOTICE OF OPPOSITION 11 43. Therefore, because Applicant does not own any rights in the ILL NIÑO mark, or in the alternative, Applicant does not own all rights in the ILL NIÑO mark, Applicant violated

Trademark Act Section 1 and the ’103 Trademark Application was void ab initio. Thus, the opposition should be sustained and registration should be refused.

The Signatories to The ’103 Trademark Application Committed Fraud on the USPTO

44. The opposition should be sustained and registration should be refused because the

Signatories to the ’103 Trademark Application—Messrs. Machado, Ilustre, and Verduzco— committed numerous counts of fraud on the USPTO in filling the ’103 Trademark Application.

45. First, the Signatories to the ’103 Trademark Application declared to believe “that the applicant is the owner of the trademark.” Ex. 1 at 5. However, as demonstrated above, Opposer

Chavarri is the owner of the ILL NIÑO mark and the Signatories knew this fact. Such an act of the

Signatories evidences their willful intent to deceive the USPTO of the rightful owner of the ILL

NIÑO mark, and amounts to fraud on the USPTO.

46. The Signatories are each a member of Applicant (Ill Niño, LLC) in combination with Opposer Chavarri. Accordingly, the Signatories, each purporting to act as a “Principal” on behalf of Applicant (Ill Niño, LLC),2 knew that Opposer Chavarri had not assigned any rights or goodwill in the ILL NIÑO mark to Applicant (Ill Niño, LLC). Thus, the Signatories intended to deceive the USPTO of who the proper owner of the ILL NIÑO mark is by listing Ill Niño, LLC as the ’103 Trademark Application Applicant instead properly listing Opposer Chavarri.

47. Alternatively, even if the Signatories subjectively believed they had rights in the

ILL NIÑO mark, the Signatories knew that they had not assigned any of their rights, if any, in the

ILL NIÑO mark to Applicant (Ill Niño, LLC). The Signatories also knew that Opposer Chavarri

2 See Ex. 1 at 5.

OPPOSER’S NOTICE OF OPPOSITION 12 had rights in the ILL NIÑO mark and that Opposer Chavarri had not assigned any of his rights in the ILL NIÑO mark to Applicant (Ill Niño, LLC). Accordingly, the Signatories knew that

Applicant (Ill Niño, LLC) did not own all rights in the ILL NIÑO mark and was not the proper owner of the ILL NIÑO mark. Hence, the Signatories intended to deceive the USPTO with their statements in the ’103 Trademark Application as to the proper owner of the ILL NIÑO mark.

48. For the same reasons, the Signatories violated 15 U.S.C. § 1051(a)(3), which requires, inter alia, the Signatories to make a verified statement in the ’103 Trademark Application that “no other person has the right to use such mark in commerce . . . .” Signatories knew, at a minimum, Opposer Chavarri had the right to use the ILL NIÑO mark in commerce.

49. Second, the Signatories to the ’103 Trademark Application declared that “the mark was first used by the applicant or the applicant’s related company or licensee predecessor in interest at least as early as 07/07/1999, and first used in commerce at least as early as 02/02/2000.”

Ex. 1 at 4. Applicant (Ill Niño, LLC), however, was formed on December 16, 2015. Ex. 2 at 1.

Applicant’s formation date is over 15 years after the Signatories declared that “the mark was first use by the applicant.” Therefore, it is impossible that the Applicant (Ill Niño, LLC) first used the

ILL NIÑO mark on the alleged date of first use (07/07/1999).

50. The Signatories, all of which are members of Applicant (Ill Niño, LLC), had first- hand knowledge that Applicant (Ill Niño, LLC) was not formed until December 16, 2015. Yet, the

Signatories asserted that Applicant’s (Ill Niño, LLC’s) first date of use was over 15 years prior, on

07/07/1999. Such evidence demonstrates the Signatories willful intent to deceive the USPTO regarding the first use date, the correct applicant, or both. Additionally, the Signatories knew that

Applicant (Ill Niño, LLC) did not have any “related company or licensee predecessor in interest,” and therefore cannot rely on this portion of their declaration.

OPPOSER’S NOTICE OF OPPOSITION 13 51. Third, the Signatories to the ’103 Trademark Application committed fraud on the

USPTO by knowingly falsely attesting that “[t]o the best of the signatory’s knowledge, information, and belief, formed after an inquiry reasonable under the circumstances, the

allegations and other factual contentions made above have evidentiary support.” Ex. 1 at 5

(emphasis added). There is no plausible explanation as to how the Signatories could declare the

statements discussed above—“that the applicant is the owner of the trademark” and “the mark was

first used by the applicant . . . at least as early as 07/07/1999, and first used in commerce at least

as early as 02/02/2000”—after performing “an inquiry reasonable under the circumstances.”

52. Again, the Signatories were all members of Applicant (Ill Niño, LLC) and each

purported to act as a “Principal” on behalf of Applicant (Ill Niño, LLC).3 Accordingly, the

Signatories knew, or would have discovered after a reasonable inquiry under the circumstances,

that Opposer Chavarri owned the ILL NIÑO mark, either by himself or, alternatively, was a joint

owner with one or more of the Signatories. Additionally, the Signatories knew, or would have

discovered after a reasonable inquiry under the circumstances, that Opposer Chavarri never

assigned his rights or goodwill in the ILL NIÑO mark to anyone, including to Applicant (Ill Niño,

LLC). Moreover, the Signatories knew—without needing to perform any reasonably inquiry under

the circumstances—that none of the Signatories (Messrs. Machado, Ilustre, and Verduzco) had

assigned any of their alleged rights in the ILL NIÑO mark to Applicant (Ill Niño, LLC).

53. Similarly, there is no plausible explanation as to the Signatories attestation that “the

mark was first used by the applicant . . . at least as early as 07/07/1999, and first used in commerce

at least as early as 02/02/2000.” The Signatories have each been a member of Applicant (Ill Niño,

LLC) since its inception on December 16, 2015. See Ex. 2. No reasonably inquiry under the

3 See Ex. 1 at 5.

OPPOSER’S NOTICE OF OPPOSITION 14 circumstances was necessary to determine that Applicant (Ill Niño, LLC) had not been formed as

of the alleged date of first use of 07/07/1999 because each of the Signatories had personal

knowledge of this fact. Therefore, the Signatories also had personal knowledge that the Applicant

(Ill Niño, LLC) could not have been using the ILL NIÑO mark on the alleged date of first use.

Thus, the Signatories committed fraud on the USPTO by attesting that a reasonable inquiry under

the circumstances was performed regarding the statements declared in the ’103 Trademark

Application when it is clear that a reasonably inquiry under the circumstances was not performed.

54. Such numerous fraudulent actions by the Signatories that were false material

representations intended to deceive the USPTO, were made for the purpose of inducing the USPTO

to issue a trademark registration that the Signatories intend to use against Opposer in their ongoing

dispute, and cannot be allowed to stand. The opposition should be sustained and registration should

be refused.

Opposer Chavarri Has Priority And There Is A Likelihood Of Confusion

55. The opposition should be sustained, and the USPTO should refuse to register the

’103 Trademark Application because Opposer Chavarri’s use of the ILL NIÑO mark has priority over Applicant’s alleged use of the ILL NIÑO mark, and further because there is a likelihood of

confusion between Opposer Chavarri’s ILL NIÑO mark and Applicant’s applied for Ill Niño mark.

56. First, as described at length above, Opposer Chavarri owns the ILL NIÑO mark

and has continuously used the ILL NIÑO mark in interstate commerce since 1999, controlling its

quality and characteristics. Applicant (Ill Niño, LLC) was not formed until December 16, 2015,

and could not have used the ILL NIÑO mark prior to its formation date. Additionally, Applicant

(Ill Niño, LLC) did not have any related company or licensee predecessor in interest. Accordingly,

Opposer Chavarri has priority over Applicant (Ill Niño, LLC) for the ILL NIÑO mark due to

OPPOSER’S NOTICE OF OPPOSITION 15 Opposer Chavarri’s use of the ILL NIÑO mark more than 15 years prior to Applicant’s alleged use of the ILL NIÑO mark. Even accepting Applicant’s claimed first use dates in the ’103

Trademark Application, Opposer’s first use of the mark predates Applicant’s alleged first use.

57. Second, there is a likelihood of confusion between Opposer Chavarri’s ILL NIÑO

mark and Applicant’s applied for Ill Niño mark.

58. Opposer Chavarri has also filed a trademark application with the USPTO for the for ILL NIÑO mark, application no. 88/184,112 (the “ ’112 Trademark Application”), attached hereto as Exhibit 3. Opposer Chavarri filed the ’112 Trademark Application later on the same day as Messrs. Machado, Verduzco, and Ilustre’s filling—November 6, 2018. Opposer Chavarri filed the ’112 Trademark Application for, inter alia, “Entertainment services in the nature of live musical performances; Entertainment services, namely, providing information about a recording artist via an online network.” Ex. 3 at 2, 4. But, the ’112 Trademark Application properly states the owner of the ILL NIÑO mark to be David E. Chavarri. Id. at 1, 4

59. A likelihood of confusion is evidenced by the fact that the ’103 Trademark

Application is currently blocking Opponent Chavarri’s ’112 Trademark application. The ’112

Trademark Application is currently suspended from proceeding to publication, in part, because the

examiner states “If the mark in the [’103 Trademark Application] registers, applicant’s mark may

be refused registration under Section 2(d) because of a likelihood of confusion with that registered

mark.” Exhibit 4. Additionally, Applicant’s proposed Ill Niño mark is confusingly similar to

Opposer Chavarri’s ILL NIÑO mark in appearance, sound, and commercial impression as to be

likely, when applied to Applicant’s services, to cause confusion, to cause mistake, or to deceive

so that registration of Applicant’s proposed Ill Niño mark would damage Opposer Chavarri within

the meaning of 15 U.S.C. § 1063.

OPPOSER’S NOTICE OF OPPOSITION 16 60. For at least the reasons above, Applicant is not entitled to registration pursuant to the Trademark Act, 15 U.S.C. § 1052(d). The opposition should be sustained and the USPTO should refuse to register the ’103 Trademark Application.

PRAYER FOR RELIEF

WHEREFORE, Opposer Chavarri respectfully requests that registration sought in the

’103 Trademark Application for the mark Ill Niño be refused, that the Notice of Opposition be sustained, and that the Trademark Trial and Appeal Board grant such other relief as it deems just and proper. The required opposition fee is submitted herewith.

Dated: July 24, 2019 Respectfully submitted,

/David Lisch/ Eric S. Tautfest Texas Bar No. 24028534 [email protected] David M. Lisch Texas Bar No. 24077179 [email protected] GRAY REED & MCGRAW LLP 1601 Elm Street, Suite 4600 Dallas, Texas 75201 Telephone: (214) 954-4135 Facsimile: (469) 320-6901

ATTORNEYS FOR OPPOSER DAVID E. CHAVARRI

OPPOSER’S NOTICE OF OPPOSITION 17 EXHIBIT 1 Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1478 (Rev 09/2006) OMB No. 0651-0009 (Exp 02/28/2021) Trademark/Service Mark Application, Principal Register TEAS Plus Application

Serial Number: 88184103 Filing Date: 11/06/2018

NOTE: Data fields with the * are mandatory under TEAS Plus. The wording "(if applicable)" appears where the field is only mandatory under the facts of the particular application.

The table below presents the data as entered.

Input Field Entered TEAS Plus YES MARK INFORMATION

*MARK Ill Niño

*STANDARD CHARACTERS YES USPTO-GENERATED IMAGE YES LITERAL ELEMENT Ill Niño The mark consists of standard characters, without claim to any *MARK STATEMENT particular font style, size, or color. REGISTER Principal APPLICANT INFORMATION *OWNER OF MARK Ill Nino LLC INTERNAL ADDRESS Apt 2R *STREET 123 Madison St. *CITY Hoboken

*STATE (Required for U.S. applicants) New Jersey

*COUNTRY United States

*ZIP/POSTAL CODE (Required for U.S. and certain international addresses) 07030

PHONE

EMAIL ADDRESS @gmail.com AUTHORIZED TO COMMUNICATE VIA EMAIL Yes LEGAL ENTITY INFORMATION *TYPE LIMITED LIABILITY COMPANY * STATE/COUNTRY WHERE LEGALLY ORGANIZED New Jersey GOODS AND/OR SERVICES AND BASIS INFORMATION *INTERNATIONAL CLASS 041

Ex. 1, Page 1 *IDENTIFICATION Entertainment, namely, live performances by a musical band *FILING BASIS SECTION 1(a) FIRST USE ANYWHERE DATE At least as early as 07/07/1999 FIRST USE IN COMMERCE DATE At least as early as 02/02/2000

SPECIMEN \\TICRS\EXPORT17\IMAGEOUT FILE NAME(S) 17\881\841\88184103\xml1\ FTK0003.JPG

SPECIMEN DESCRIPTION Ill Niño US tour poster from from 2017. ADDITIONAL STATEMENTS INFORMATION

*TRANSLATION (if applicable)

*TRANSLITERATION (if applicable)

*CLAIMED PRIOR REGISTRATION (if applicable)

*CONSENT (NAME/LIKENESS) (if applicable)

*CONCURRENT USE CLAIM (if applicable) CORRESPONDENCE INFORMATION *NAME Ill Nino LLC FIRM NAME Ill Nino LLC INTERNAL ADDRESS Apt 2R *STREET 123 Madison St. *CITY Hoboken

*STATE (Required for U.S. addresses) New Jersey

*COUNTRY United States *ZIP/POSTAL CODE 07030

PHONE

*EMAIL ADDRESS

*AUTHORIZED TO COMMUNICATE VIA EMAIL Yes FEE INFORMATION APPLICATION FILING OPTION TEAS Plus NUMBER OF CLASSES 1 FEE PER CLASS 225 *TOTAL FEE PAID 225 SIGNATURE INFORMATION * SIGNATURE /cristian machado/ * SIGNATORY'S NAME Christian Machado * SIGNATORY'S POSITION Principal

SIGNATORY'S PHONE NUMBER

Ex. 1, Page 2 * DATE SIGNED 11/06/2018 * SIGNATURE /Raul Verduzco/ * SIGNATORY'S NAME Raul Verduzco * SIGNATORY'S POSITION Principal

SIGNATORY'S PHONE NUMBER

* DATE SIGNED 11/06/2018 * SIGNATURE /Ahrue Ilustre/ * SIGNATORY'S NAME Ahrue Ilustre * SIGNATORY'S POSITION Principal

SIGNATORY'S PHONE NUMBER

* DATE SIGNED 11/06/2018

Ex. 1, Page 3 Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1478 (Rev 09/2006) OMB No. 0651-0009 (Exp 02/28/2021)

Trademark/Service Mark Application, Principal Register

TEAS Plus Application

Serial Number: 88184103 Filing Date: 11/06/2018 To the Commissioner for Trademarks:

MARK: Ill Niño (Standard Characters, see mark) The mark in your application is Ill Niño.

The applicant, Ill Nino LLC, a limited liability company legally organized under the laws of New Jersey, having an address of Apt 2R 123 Madison St. Hoboken, New Jersey 07030 United States (phone) @gmail.com requests registration of the trademark/service mark identified above in the United States Patent and Trademark Office on the Principal Register established by the Act of July 5, 1946 (15 U.S.C. Section 1051 et seq.), as amended, for the following:

For specific filing basis information for each item, you must view the display within the Input Table. International Class 041: Entertainment, namely, live performances by a musical band

Use in Commerce: The applicant is using the mark in commerce on or in connection with the identified goods/services. The applicant attaches, or will later submit, one specimen as a JPG/PDF image file showing the mark as used in commerce on or in connection with any item in the class of listed goods/services, regardless of whether the mark itself is in the standard character format or is a stylized or design mark. The specimen image file may be in color, and the image must be in color if color is being claimed as a feature of the mark.

In International Class 041, the mark was first used by the applicant or the applicant's related company or licensee predecessor in interest at least as early as 07/07/1999, and first used in commerce at least as early as 02/02/2000, and is now in use in such commerce. The applicant is submitting one(or more) specimen(s) showing the mark as used in commerce on or in connection with any item in the class of listed goods/services, consisting of a(n) Ill Niño US tour poster from from 2017.. Specimen File1

The applicant's current Correspondence Information: Ill Nino LLC Ill Nino LLC Apt 2R 123 Madison St. Hoboken, New Jersey 07030 phone) @gmail.com (authorized) E-mail Authorization: I authorize the USPTO to send e-mail correspondence concerning the application to the applicant or the applicant's attorney, or the applicant's domestic representative at the e-mail address provided in this application. I understand that a valid e-mail address must be maintained and that the applicant or the applicant's attorney must file the relevant subsequent application-related submissions via the Trademark Electronic Application System (TEAS). Failure to do so will result in the loss of TEAS Plus status and a requirement to submit an additional processing fee of $125 per international class of goods/services.

A fee payment in the amount of $225 has been submitted with the application, representing payment for 1 class(es).

Ex. 1, Page 4 Declaration

Basis: If the applicant is filing the application based on use in commerce under 15 U.S.C. § 1051(a):

The signatory believes that the applicant is the owner of the trademark/service mark sought to be registered; The mark is in use in commerce on or in connection with the goods/services in the application; The specimen(s) shows the mark as used on or in connection with the goods/services in the application; and To the best of the signatory's knowledge and belief, the facts recited in the application are accurate.

AND/OR If the applicant is filing the application based on an intent to use the mark in commerce under 15 U.S.C. § 1051(b), § 1126(d), and/or § 1126(e):

The signatory believes that the applicant is entitled to use the mark in commerce; The applicant has a bona fide intention to use the mark in commerce on or in connection with the goods/services in the application; and To the best of the signatory's knowledge and belief, the facts recited in the application are accurate. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive. To the best of the signatory's knowledge, information, and belief, formed after an inquiry reasonable under the circumstances, the allegations and other factual contentions made above have evidentiary support. The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true. Declaration Signature

Signature: /cristian machado/ Date: 11/06/2018 Signatory's Name: Christian Machado Signatory's Position: Principal Signatory's Phone Number:

Signature: /Raul Verduzco/ Date: 11/06/2018 Signatory's Name: Raul Verduzco Signatory's Position: Principal Signatory's Phone Number:

Signature: /Ahrue Ilustre/ Date: 11/06/2018 Signatory's Name: Ahrue Ilustre Signatory's Position: Principal Signatory's Phone Number: Payment Sale Number: 88184103 Payment Accounting Date: 11/07/2018

Serial Number: 88184103 Internet Transmission Date: Tue Nov 06 20:23:34 EST 2018 TEAS Stamp: USPTO/FTK-XX.XXX.XX.X-201811062023347343 77-88184103-610f0481574aec61031739d59c07 d314f51a844a6d26ac671343e39d3843c574f-CC -5973-20181106192947227221

Ex. 1, Page 5 Ex. 1, Page 6 Ex. 1, Page 7 EXHIBIT 2 Ex. 2, Page 1 Ex. 2, Page 2 Ex. 2, Page 3 EXHIBIT 3 Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1478 (Rev 09/2006) OMB No. 0651-0009 (Exp 02/28/2021) Trademark/Service Mark Application, Principal Register TEAS Plus Application

Serial Number: 88184112 Filing Date: 11/06/2018

NOTE: Data fields with the * are mandatory under TEAS Plus. The wording "(if applicable)" appears where the field is only mandatory under the facts of the particular application.

The table below presents the data as entered.

Input Field Entered TEAS Plus YES MARK INFORMATION

*MARK ILL NIÑO

*STANDARD CHARACTERS YES USPTO-GENERATED IMAGE YES LITERAL ELEMENT ILL NIÑO The mark consists of standard characters, without claim to any *MARK STATEMENT particular font style, size, or color. REGISTER Principal APPLICANT INFORMATION *OWNER OF MARK CHAVARRI, DAVID, E DBA/AKA/TA/FORMERLY AKA ILL NIÑO

*STREET

*CITY

*STATE (Required for U.S. applicants) Texas

*COUNTRY United States

*ZIP/POSTAL CODE (Required for U.S. and certain international addresses) 76182

PHONE

EMAIL ADDRESS

AUTHORIZED TO COMMUNICATE VIA EMAIL Yes WEBSITE ADDRESS www.illnino.com LEGAL ENTITY INFORMATION *TYPE INDIVIDUAL * COUNTRY OF CITIZENSHIP United States GOODS AND/OR SERVICES AND BASIS INFORMATION

Ex. 3, Page 1 *INTERNATIONAL CLASS 035 Providing an Internet website portal featuring links to music- *IDENTIFICATION related merchandise for retail purposes *FILING BASIS SECTION 1(b) *INTERNATIONAL CLASS 041 Entertainment services in the nature of live musical *IDENTIFICATION performances; Entertainment services, namely, providing information about a recording artist via an online network *FILING BASIS SECTION 1(b) ADDITIONAL STATEMENTS INFORMATION

*TRANSLATION (if applicable)

*TRANSLITERATION (if applicable)

*CLAIMED PRIOR REGISTRATION (if applicable)

*CONSENT (NAME/LIKENESS) (if applicable)

*CONCURRENT USE CLAIM (if applicable) CORRESPONDENCE INFORMATION *NAME CHAVARRI, DAVID, E DOCKET/REFERENCE NUMBER 1-619438330

*STREET

*CITY

*STATE (Required for U.S. addresses) Texas

*COUNTRY United States *ZIP/POSTAL CODE 76182

PHONE

*EMAIL ADDRESS

*AUTHORIZED TO COMMUNICATE VIA EMAIL Yes FEE INFORMATION APPLICATION FILING OPTION TEAS Plus NUMBER OF CLASSES 2 FEE PER CLASS 225 *TOTAL FEE PAID 450 SIGNATURE INFORMATION * SIGNATURE /David Chavarri/ * SIGNATORY'S NAME David Chavarri * SIGNATORY'S POSITION Owner, Creator

SIGNATORY'S PHONE NUMBER

Ex. 3, Page 2 * DATE SIGNED 11/06/2018

Ex. 3, Page 3 Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1478 (Rev 09/2006) OMB No. 0651-0009 (Exp 02/28/2021)

Trademark/Service Mark Application, Principal Register

TEAS Plus Application

Serial Number: 88184112 Filing Date: 11/06/2018 To the Commissioner for Trademarks:

MARK: ILL NIÑO (Standard Characters, see mark) The mark in your application is ILL NIÑO.

The applicant, DAVID, E CHAVARRI, AKA ILL NIÑO, a citizen of United States, having an address of

, Texas 76182 United States (phone) @gmail.com requests registration of the trademark/service mark identified above in the United States Patent and Trademark Office on the Principal Register established by the Act of July 5, 1946 (15 U.S.C. Section 1051 et seq.), as amended, for the following:

For specific filing basis information for each item, you must view the display within the Input Table. International Class 035: Providing an Internet website portal featuring links to music-related merchandise for retail purposes Intent to Use: The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified goods/services. (15 U.S.C. Section 1051(b)).

For specific filing basis information for each item, you must view the display within the Input Table. International Class 041: Entertainment services in the nature of live musical performances; Entertainment services, namely, providing information about a recording artist via an online network Intent to Use: The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified goods/services. (15 U.S.C. Section 1051(b)).

For informational purposes only, applicant's website address is: www.illnino.com The applicant's current Correspondence Information: CHAVARRI, DAVID, E

, Texas 76182 (phone) @gmail.com (authorized) E-mail Authorization: I authorize the USPTO to send e-mail correspondence concerning the application to the applicant or the applicant's attorney, or the applicant's domestic representative at the e-mail address provided in this application. I understand that a valid e-mail address must be maintained and that the applicant or the applicant's attorney must file the relevant subsequent application-related submissions via the Trademark Electronic Application System (TEAS). Failure to do so will result in the loss of TEAS Plus status and a requirement to submit an additional processing fee of $125 per international class of goods/services. The docket/reference number is 1-619438330. A fee payment in the amount of $450 has been submitted with the application, representing payment for 2 class(es).

Declaration

Basis: If the applicant is filing the application based on use in commerce under 15 U.S.C. § 1051(a):

Ex. 3, Page 4 The signatory believes that the applicant is the owner of the trademark/service mark sought to be registered; The mark is in use in commerce on or in connection with the goods/services in the application; The specimen(s) shows the mark as used on or in connection with the goods/services in the application; and To the best of the signatory's knowledge and belief, the facts recited in the application are accurate.

AND/OR If the applicant is filing the application based on an intent to use the mark in commerce under 15 U.S.C. § 1051(b), § 1126(d), and/or § 1126(e):

Signature: /David Chavarri/ Date: 11/06/2018 Signatory's Name: David Chavarri Signatory's Position: Owner, Creator Signatory's Phone Number: 682-256-4179 Payment Sale Number: 88184112 Payment Accounting Date: 11/07/2018

Serial Number: 88184112 Internet Transmission Date: Tue Nov 06 20:33:05 EST 2018 TEAS Stamp: USPTO/FTK-XXX.XX.XXX.XX-2018110620330543 9955-88184112-610e6a7f67cd4eedd06cf96467 dfdef6154147179f83fcc3c2f941f735349b21-C C-6024-20181106190058451941

Ex. 3, Page 5 Ex. 3, Page 6 EXHIBIT 4 To: CHAVARRI, DAVID, E ([email protected]) Subject: U.S. TRADEMARK APPLICATION NO. 88184112 - ILL NIÑO - 020452.01 Sent: 1/25/2019 6:35:46 PM Sent As: [email protected] Attachments: Attachment - 1 Attachment - 2

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO) OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

U.S. APPLICATION SERIAL NO. 88184112

MARK: ILL NIÑO *88184112* CORRESPONDENT ADDRESS: GENERAL TRADEMARK David Lisch INFORMATION: GRAY REED & http://www.uspto.gov/trademarks/index.jsp MCGRAW LLP 1601 Elm Street, Suite VIEW YOUR APPLICATION FILE 4600 Dallas, TX, 75201

APPLICANT: CHAVARRI, DAVID, E

CORRESPONDENT’S REFERENCE/DOCKET NO: 020452.01 CORRESPONDENT E- MAIL ADDRESS: [email protected]

SUSPENSION NOTICE: NO RESPONSE NEEDED

ISSUE/MAILING DATE: 1/25/2019

This application was approved for publication on January 23, 2019. See 37 C.F.R. §2.80. However, approval of the application has been withdrawn to address the issue below. See TMEP §706.01.

The trademark examining attorney is suspending action on the application for the reasons stated below. See 37 C.F.R. §2.67; TMEP §§716 et seq.

PRIOR-FILED PENDING APPLICATION FOUND: The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d). However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.

The effective filing date of the pending application identified below precedes the filing date of applicant’s application. If the mark in the referenced application registers, applicant’s mark may be refused registration under Section 2(d) because of a likelihood of confusion with that registered mark. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, action on this application is suspended until the earlier-filed referenced application is either registered or abandoned. 37 C.F.R. §2.83(c). A copy of information relevant to this referenced application is attached.

- Application Serial No. 88184103

Ex. 4, Page 1 The USPTO will periodically conduct a status check of the application to determine whether suspension remains appropriate, and the trademark examining attorney will issue as needed an inquiry letter to applicant regarding the status of the matter on which suspension is based. TMEP §§716.04, 716.05. Applicant will be notified when suspension is no longer appropriate. See TMEP §716.04.

No response to this notice is necessary; however, if applicant wants to respond, applicant should use the “Response to Suspension Inquiry or Letter of Suspension” form online at http://teasroa.uspto.gov/rsi/rsi.

/Sarah E. Kunkleman/ Trademark Examining Attorney Law Office 105 571-272-6151 [email protected]

PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at [email protected] or call 1-800-786-9199. For more information on checking status, see http://www.uspto.gov/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the Trademark Electronic Application System (TEAS) form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.

Ex. 4, Page 2 Ex. 4, Page 3 Ex. 4, Page 4 To: CHAVARRI, DAVID, E ([email protected]) Subject: U.S. TRADEMARK APPLICATION NO. 88184112 - ILL NIÑO - 020452.01 Sent: 1/25/2019 6:35:47 PM Sent As: [email protected] Attachments:

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

IMPORTANT NOTICE REGARDING YOUR U.S. TRADEMARK APPLICATION

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED ON 1/25/2019 FOR U.S. APPLICATION SERIAL NO.88184112

Please follow the instructions below:

(1) TO READ THE LETTER: Click on this link or go to http://tsdr.uspto.gov/, enter the U.S. application serial number, and click on “Documents.”

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

(2) QUESTIONS: For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney. For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail [email protected].

WARNING

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION: Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations. These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document. Many solicitations require that you pay “fees.”

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation. All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.” For more information on how to handle private company solicitations, see http://www.uspto.gov/trademarks/solicitation_warnings.jsp.

Ex. 4, Page 5