• Abstract and Figures
• Public Full-text

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA855790 Filing date: 11/01/2017 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 MaryAnn Santos Vieira Entity Individual Citizenship UNITED STATES Address 115 Pocono Road #813 Brookfield, CT 06804 UNITED STATES Attorney informa- William R. Samuels tion Scarinci Hollenbeck 3 Park Avenue, 15th Floor New York, NY 10016 UNITED STATES Email: [email protected] Applicant Information Application No 87213864 Publication date 10/03/2017 Opposition Filing 11/01/2017 Opposition Peri- 11/02/2017 Date od Ends Applicant Butler, Ishmael 815 30th Avenue Seattle, WA 98122 UNITED STATES Goods/Services Affected by Opposition Class 025. First Use: 1993/01/01 First Use In Commerce: 1993/01/01 All goods and services in the class are opposed, namely: Bottoms; Eyeshades; Head wraps; Head- bands for clothing; Headwear for men, womenand children including caps; Hooded sweatshirts for men, women and children; Hoods; Jackets; Jackets for men, women andchildren; Jerseys; Pajamas for men, women and children; Shirts for men, women and children; Sweaters for men, women and- children; Sweatpants for men and women;Sweatshirts for men and women; T-shirtsfor men, women and children; Ties; Tops; Wearable garments and clothing, namely, shirts; Women's clothing, namely, shirts, dresses, skirts, blouses; Wristbands Grounds for Opposition Fraud on the USPTO In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009) Attachments Digable Planets_Opposition 11.1.17.pdf(107722 bytes ) Signature /William R. Samuels/ Name William R. Samuels Date 11/01/2017 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD ) MaryAnn Santos Vieira p/k/a “Ladybug ) Mecca” ) Opposition No. __________________ ) Opposer, ) In the matter of trademark application ) Serial No. 87213864 v. ) ) For the mark DIGABLE PLANETS Ishmael Butler ) (standard character mark) ) Applicant. ) Published in the Official Gazette: October ) 3, 2017 NOTICE OF OPPOSITION MaryAnn Santos Vieira p/k/a “Ladybug Mecca” (“Ms. Vieira”, or “Opposer”), an individual having an address at 115 Pocono Road #813, Brookfield, Connecticut 06804, hereby brings this opposition against Application Serial No. 87213864 for the mark DIGABLE PLANETS (standard character mark, the “Mark”), published in the Official Gazette on October 3, 2017 and filed by Ishmael Butler (“Mr. Butler”), an individual having an address at 815 30th Avenue, Seattle, Washington 98122. Opposer believes it will be damaged by the registration of the Mark and therefore opposes the same and alleges the following: 1. Ms. Vieira is, together with Mr. Butler and Craig Irving p/k/a “Doodlebug” (“Mr. Irving”), a member of a hip hop group “DIGABLE PLANETS” (the “Group”), formed in the late 1980s. 2. The Group’s debut album “Reachin’ (A New Refutation of Time and Space)” was released in 1993. 3. Since 1993, the Group recorded another studio album (“Blowout Comb” in 1994), one compilation album (“Beyond the Spectrum: The Creamy Spy Chronicles” in 2005), one live 1 album (“Digable Planets Live” in 2017), and 6 singles (“Rebirth of Slick (Cool Like Dat)”, in 1992; “Where I'm From” in 1993; “Nickel Bags” in 1993; “9th Wonder (Blackitolism)”, in 1994; “9th Wonder (Slicker This Year)(Mad Slicker Remixes)” in 1994; and “Dial 7 (Axioms of Creamy Spies)” in 1995). 4. Upon information and belief, Ms. Vieira, Mr. Irving, and Mr. Butler together first used the Mark in commerce. 5. Upon information and belief, Ms. Vieira, Mr. Irving, and Mr. Butler are all co- owners of the Mark. 6. Upon information and belief, Ms. Vieira, Mr. Irving, and Mr. Butler used the Mark in commerce in a variety of ways, including Class 41 for entertainment, and Class 25 for clothing. 7. Upon information and belief, Ms. Vieira, Mr. Irving, and Mr. Butler sold merchandize, including clothing, at their concerts, using the Mark. 8. Upon information and belief, Ms. Vieira and Mr. Irving never assigned or otherwise transferred their rights in the Mark to Mr. Butler. 9. On or about October 24, 2016, unbeknownst to Ms. Vieira and Mr. Irving, and without their permission, Mr. Butler as an individual identifying himself as the sole owner, filed US Trademark Application Ser. No. 87/213,864 (the “’864 Application”) for the Mark, in International Class 25 for “Bottoms; Eyeshades; Head wraps; Headbands for clothing; Headwear for men, women and children including caps; Hooded sweatshirts for men, women and children; Hoods; Jackets; Jackets for men, women and children; Jerseys; Pajamas for men, women and children; Shirts for men, women and children; Sweaters for men, women and children; Sweatpants for men and women; Sweatshirts for men and women; T-shirts for men, women and 2 children; Ties; Tops; Wearable garments and clothing, namely, shirts; Women's clothing, namely, shirts, dresses, skirts, blouses; Wristbands”. 10. Mr. Butler has made several false or fraudulent declarations or representations to the United States Patent and Trademark Office (“USPTO”), oral or in writing, or otherwise by false means. 11. The following statements were made by declaration under 18 U.S.C. §1001 by Mr. Butler, on or about October 24, 2016, as submitted to the USPTO in the ’864 Application: The signatory believes that: if the applicant is filing the application under 15 U.S.C. § 1051(a), the applicant is the owner of the trademark/service mark sought to be registered; the applicant is using the mark 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/or if the applicant filed an application under 15 U.S.C. § 1051(b), § 1126(d), and/or § 1126(e), the applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the goods/services in the application. The signatory believes that 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. 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 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. 12. In the above-mentioned statement in this paragraph 8, the following statement is false: “the applicant is the owner of the trademark/service mark sought to be registered”. 13. In the above-mentioned statement in this paragraph 8, the following statement is false: “the applicant or the applicant’s related company or licensee is using the mark in commerce on or in connection with the goods/services in the application, and such use by the applicant's related company or licensee inures to the benefit of the applicant”. 3 14. In the above-mentioned statement in this paragraph 8, the following statement is false: “the specimen(s) shows the mark as used on or in connection with the goods/services in the application”. 15. In the above-mentioned statement in this paragraph 8, the following statement is false: “the applicant is entitled to use the mark in commerce”. 16. In the above-mentioned statement in this paragraph 8, the following statement is false: “the applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the goods/services in the application”. 17. In the above-mentioned statement in this paragraph 8, the following statement is false: “The signatory believes that to the best of the signatory’s knowledge and belief, no other person has 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 person, to cause confusion or mistake, or to deceive”. 18. In the above-mentioned statement in this paragraph 8, the following statement is false: “all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true”. 19. In addition, the noted document containing the above-mentioned declaration in this paragraph 8 also falsely states “In International Class 025, the mark was first used by the applicant or the applicant’s related company or licensee predecessor in interest at least as early as 01/01/1993, and first used in commerce at least as early as 01/01/1993, and is now in use in such commerce. The applicant is submitting one (or more) specimen(s) showing the mark as used in 4 commerce on or in connection with any item in the class of listed goods and/or services, consisting of a(n)digital images of a website currently used in commerce”. 20. The foregoing false statements were known by their maker to be false in that Mr. Butler, at the time of filing the ’864 Application, knew that he was not the sole owner of the Mark and that Ms.

Load more

  9

Copy Link