Petition for Cancellation Petitioner Information
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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA851312 Filing date: 10/10/2017 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Petition for Cancellation Notice is hereby given that the following party has filed a petition to cancel the registration indicated below. Petitioner Information Name James T Smith Entity Individual Citizenship UNITED STATES Address c/o LL Cool J, Inc. 6311 Romaine Street, Suite 7219 Los Angeles, CA 90038 UNITED STATES Attorney informa- Jill M. Pietrini tion Sheppard Mullin Richter & Hampton LLP 1901 Avenue of the Stars Suite 1600 Los Angeles, CA 90067 UNITED STATES Email: [email protected], [email protected], [email protected], [email protected], [email protected], [email protected], [email protected] Phone: 3102283700 Registration Subject to Cancellation Registration No. 3917468 Registration date 02/08/2011 International Re- NONE International Re- NONE gistration No. gistration Date Registrant GUERILLA UNION, INC. 101 WEST MISSION, SUITE 110-367 POMONA, CA 91766 UNITED STATES Goods/Services Subject to Cancellation Class 009. First Use: 2006/12/31 First Use In Commerce: 2006/12/31 All goods and services in the class are subject to cancellation, namely: computer storage devices, namely, flashdrives containing prerecorded audio andaudiovisual content; audio and audiovisual re- cordings featuring music and musical entertainment; pre-recorded audio andvideo discs, DVDs, all featuring music;motion picture films featuring musical performances Class 016. First Use: 2007/12/31 First Use In Commerce: 2007/12/31 All goods and services in the class are subject to cancellation, namely: Printed materials, namely, printed souvenir programs and guides related to livemusical concerts and events; posters; stickers; tour schedules, namely, printedinformational cards featuring a list oflive concert performance dates for a live musical festival and tour Class 025. First Use: 2004/12/31 First Use In Commerce: 2004/12/31 All goods and services in the class are subject to cancellation, namely: Headgear, namely, hats, caps, bandanas;men's, women's, and children's clothing, namely, t-shirts, tank tops, sweatshirts Class 038. First Use: 2006/08/03 First Use In Commerce: 2006/08/03 All goods and services in the class are subject to cancellation, namely: streaming of audio and audi- ovisual material on the Internet; transmission of audio and audiovisual recordings featuringmusic and musical based entertainment via telecommunications networks; digital transmission of musical sound and video recordings via telecommunications networks Class 041. First Use: 2003/12/31 First Use In Commerce: 2003/12/31 All goods and services in the class are subject to cancellation, namely: entertainment in the nature of live musical performances; organization of exhibitions for cultural or educational purposes; entertain- ment services, namely, live music concerts and events featuring live musical performances; arranging and conducting of concerts and live music events; concert booking; production of musical audio and audiovisual recordings; music production; television production; record production; production of au- dio and audiovisual recordings featuring live musical performances; production of reality and docu- mentary television programs featuring live musical performances; providing a website featuring enter- tainmentinformation on musical artists, musicalconcert tours and events, sound recordings, and other music-based entertainmentcontent and information Grounds for Cancellation Abandonment Trademark Act Section 14(3) False suggestion of a connection with persons, Trademark Act Sections 14(3) and 2(a) living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrep- ute Fraud on the USPTO Trademark Act Section 14(3); In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009) Attachments Petition for Cancellation.pdf(223717 bytes ) Smith v Guerilla Union Exhibits A through C.pdf(5867855 bytes ) Smith v Guerilla Union Exhibits D through G Reduced.pdf(5067862 bytes ) Smith v. Guerilla Exhibits H through O.pdf(3913857 bytes ) Signature /Jill M. Pietrini/ Name Jill M. Pietrini Date 10/10/2017 Docket No. 30DR-254614 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD In re Registration No. 3,917,468 for the Cancellation No. _______________ trademark ROCK THE BELLS in Classes 9, 16, 25, 38 and 41 PETITION FOR CANCELLATION JAMES TODD SMITH, Petitioner, vs. GUERILLA UNION, INC., Registrant Commissioner for Trademarks ATTN: Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 Dear Commissioner: Petitioner James Todd Smith, pka LL Cool J, a United States citizen (“Petitioner”), having a place of business at c/o LL Cool J, Inc., 6311 Romaine Street, Suite 7219, Los Angeles CA 90038, believes that he will be damaged by Reg. No. 3,917,468 of ROCK THE BELLS in Classes 9, 16, 25, 38 and 41 (the “Registration”) owned by Registrant Guerilla Union, Inc. (“Registrant”), and hereby petitions to cancel such registration on the following grounds: BACKGROUND AND PETITIONER’S ALLEGATIONS 1. Petitioner James Todd Smith, known professionally as LL Cool J, is a globally recognized rapper, musician, actor, and author. He is known for numerous hit songs, including “Rock The Bells”, which was released in 1985 and continues to be offered for sale and sold to date. “Rock the Bells,” co-written by Petitioner and Rick Rubin, was the third single from -1- Petitioner’s 1985 debut album, "Radio." Petitioner’s “Radio” album was certified Gold by the Recording Industry Association of America (“RIAA”) in 1986, and Platinum in 1988. “Rock the Bells” is also included on Petitioner’s “Best of” albums “All World: The Greatest Hits” and “All World 2,” the former of which was certified Platinum in 2001. “Rock The Bells” was designated as one of “The 50 Greatest Hip-Hop Songs of All Time” in Rolling Stone magazine. “Rock The Bells” was also sampled in one of Petitioner’s biggest songs, “Mama Said Knock You Out.” The introduction of “Rock the Bells” was famously parodied by English soccer player John Barnes for his 1988 single “Anfield Rap”. The song was also featured in the 2002 video game Mat Hoffman's Pro BMX 2, the 2008 video game Skate It, and the 2009 video game Skate 2. The song was used in the video game DJ Hero in which it was mixed with The Verve's "Bittersweet Symphony." Attached as Exhibit A are true and correct printouts from numerous websites evidencing the fame of Petitioner’s “Rock The Bells” song, and Petitioner as a multi- talented entertainer with more than 30 years in the music, film and television businesses. Because of Petitioner’s tremendous success and acclaim the world over, the public has come to associate Petitioner’s ROCK THE BELLS trademark with Petitioner and his goods and services. 2. Petitioner has filed the following applications to register the trademarks ROCK THE BELLS MUSIC GROUP and ROCK THE BELLS RADIO for the following goods and services (“Petitioner’s Applications”): Mark Serial No. Goods and Services/Class ROCK THE BELLS 86/488,672 Computer storage devices, namely, flash drives sold MUSIC GROUP blank and with pre-recorded content featuring music; digital media, namely, pre-recorded DVDs and CDs, downloadable audio recordings, and downloadable video recordings, all featuring music or performances by musicians; downloadable electronic publications in the nature of books, booklets, magazines, journals, brochures, pamphlets and newsletters, all in the field of music; electronic game programs; eyewear; eyewear cases; headphones; earphones; musical sound recordings; musical video recordings in Class 9 ROCK THE BELLS 86/488,674 Entertainment services in the nature of live musical MUSIC GROUP performances; entertainment services in the nature of -2- providing information regarding musical groups, musicians, musical sound recordings, music videos, and music via a website; entertainment, namely, personal appearances by musicians, musical groups, or actors; music publishing services; production and distribution of musical audio and video recordings; music composition services for others; song writing services; providing a website featuring live musical performances, music, and entertainment festivals; organization and production of entertainment festivals; fan club services; and blogs in the fields of music, musicians, films, television programs, and entertainment events; record production services in Class 41 ROCK THE BELLS 87/415,875 Radio communications; radio broadcasting; radio RADIO broadcasting information; mobile radio communication; telephone broadcasting services; radio broadcasting of information; transmission of radio and television programs by satellite; cable, mobile devices, and internet in Class 38 ROCK THE BELLS 87/415,930 Radio entertainment production; radio program RADIO syndication; production and distribution of radio programs; production and distribution of television programs; entertainment in the nature of live radio personality performances; provision of information relating to television, motion picture film, audio and radio productions; entertainment services, namely, providing an ongoing radio program in the field of music and entertainment in Class 41 3. Petitioner’s Applications have been refused by the Office on the grounds of likelihood of confusion with the Registration. 4. Registrant obtained the Registration under Section