Notice of Opposition Opposer Information Applicant Information

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA932034 Filing date: 10/31/2018

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 National Hockey League Granted to Date 10/31/2018 of previous ex- tension Address 1185 Avenue of the Americas 15th Floor New York, NY 10036 UNITED STATES

Correspondence Thomas H. Prochnow information NHL Enterprises, L.P. 1185 Avenue of the Americas 15th Floor New York, NY 10036 UNITED STATES [email protected], [email protected], [email protected], [email protected], [email protected], [email protected] 2127892000

Applicant Information

Application No 87771224 Publication date 07/03/2018 Opposition Filing 10/31/2018 Opposition Peri- 10/31/2018 Date od Ends Applicant Loretto Holdings, LLC Suite 1500 5956 Sherry Lane Dallas, TX 75225 UNITED STATES Goods/Services Affected by Opposition

Class 009. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Audio and video recordings featuring the sport of hockey; Electronic database in the field of hockey information and statistics recorded on computer media Class 016. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Calendars; Flags and pennants of paper;Magazines in the field of hockey; Notepads; Posters; Printed pamphlets, brochures, manuals, books, booklets, leaflets, informational flyers, informational sheets and newsletters, adhesive backed stickers, and kits comprised solely of one or more of the foregoing materials in thefield of hockey Class 025. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Belts; Gloves; Jackets; Jerseys; Men's and women's jackets, coats, trousers, vests; Sweaters; Wristbands as clothing Class 035. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Computerized on-line retail store services in the field of hockey apparel, printed material, and novelty items Class 041. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Entertainment services in the nature of- hockey exhibitions; Entertainment services, namely, providing a web site featuring photographic, audio, video and prosepresentations featuring hockey; Fan clubs Grounds for Opposition

Priority and likelihood of confusion Trademark Act Section 2(d) False suggestion of a connection with persons, Trademark Act Section 2(a) living or dead, institutions, beliefs, or national symbols, or brings them into contempt, or disrep- ute Mark Cited by Opposer as Basis for Opposition

U.S. Application/ Registra- NONE Application Date NONE tion No. Registration Date NONE Word Mark KANSAS CITY SCOUTS Goods/Services Hats, caps, socks, shirts, t-shirts, and other apparel, retail services, and other goods and services in commemoration of a professional hockey team.

Attachments Notice of Opposition - Serial. No. 87771224 - 10.31.2018.pdf(928051 bytes )

Signature /Thomas H. Prochnow/ Name Thomas H. Prochnow Date 10/31/2018 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In the Matter of Trademark Application Serial No. 87/771,224 Mark: KANSAS CITY SCOUTS ______x : NATIONAL HOCKEY LEAGUE : : Opposer, : Opposition No. ______: v. : : NOTICE OF OPPOSITION LORETTO HOLDINGS, LLC : : Applicant. : : ______x

The National Hockey League (“NHL”), an unincorporated association organized as a joint venture and having a business address of 1185 Avenue of the Americas, New York, New

York 10036 (“Opposer”), believes it will be damaged by the registration of the subject mark of

Application Serial No. 87/771,224, KANSAS CITY SCOUTS, (the “Application”) filed on an intent-to-use basis by Loretto Holdings, LLC (“Applicant”), and hereby opposes the Application.

The grounds for opposition are as follows:

1. The NHL is the world’s foremost professional ice hockey league. Founded in

1917, the NHL is an association of member clubs that compete against each other during an approximately nine-month-long season. Since the NHL’s founding, more than 50 separate clubs have been members of the NHL as a result of expansion, merger, reorganization, relocation, and re-branding. Although some of these NHL member clubs have moved or changed names, fans continue to recognize all of the NHL’s current and former member clubs and associate them with the NHL.

2. From 1974 to 1976, the member club then known as the Kansas City Scouts used the KANSAS CITY SCOUTS trademark to identify itself with a wide variety of goods and services related to the sport of ice hockey.

3. The Kansas City Scouts relocated to Denver, Colorado in 1976 and changed the name of the club to the Colorado Rockies. In 1982, the Rockies relocated to New Jersey and changed the name of the club to the New Jersey Devils who remain in the NHL today.

4. The NHL and its affiliates have continued to use the KANSAS CITY SCOUTS mark in connection with the sport of ice hockey, including through the NHL Vintage Hockey program that commemorates historic NHL member clubs through the sale of licensed merchandise bearing the names and logos of such historic NHL member clubs. As part of this program, the NHL engages in a collateral licensing program featuring the mark. Licensed apparel and merchandise featuring the KANSAS CITY SCOUTS mark are sold through the online stores of NHL licensees and third party retailers. Examples of licensed KANSAS CITY

SCOUTS apparel and merchandise available for sale online include the items depicted on the following pages:

5. The KANSAS CITY SCOUTS mark is symbolic of the extensive goodwill and consumer recognition that Opposer and its predecessors have acquired through substantial expenditures of time, effort, and other resources in the promotion of the goods and services offered and sold under the mark. Consequently, the public associates the KANSAS CITY

SCOUTS mark uniquely and unmistakably with the goods and services of Opposer.

6. Applicant filed the Application to register the KANSAS CITY SCOUTS mark on

January 25, 2018 on an intent-to-use basis for a variety of hockey- and hockey team-related goods and services, long after Opposer had acquired significant recognition and goodwill in the same KANSAS CITY SCOUTS mark. The Application claims an intent to use the mark in connection with audio and video recordings featuring the sport of hockey, electronic database in the field of hockey information and statistics recorded on computer media, calendars, flags and pennants of paper, magazines in the field of hockey, notepads, posters, printed pamphlets, brochures, manuals, books, booklets, leaflets, informational flyers, informational sheets and newsletters, adhesive backed stickers, and kits comprised solely of one or more of the foregoing materials in the field of hockey, athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms, belts, gloves, jackets, jerseys, men's and women's jackets, coats, trousers, vests, sweaters, wristbands as clothing, computerized on-line retail store services in the field of hockey apparel, printed material, and novelty items, entertainment services in the nature of hockey exhibitions, entertainment services, namely, providing a web site featuring photographic, audio, video and prose presentations featuring hockey, and fan clubs.

7. In a letter dated August 8, 2018, Opposer’s counsel contacted Applicant to object to the Application, setting forth the history of the NHL’s ongoing use of the KANSAS CITY

SCOUTS trademark.

8. Upon information and belief, in September 2018, a representative of Applicant stated in an open letter to the Kansas City Youth Hockey Association that “Kansas City has a rich history of Hockey and we couldn’t think of a better name [than KANSAS CITY SCOUTS] to help inspire our young players.”

9. Upon information and belief, this statement reflects Applicant’s intent to use the

KANSAS CITY SCOUTS mark purposefully to trade off the goodwill of the public’s association of the KANSAS CITY SCOUTS mark with Opposer and/or with NHL hockey.

10. The goods set forth in the Application are identical and/or closely related to the goods and services offered by Opposer and its licensees in connection with the KANSAS CITY

SCOUTS mark.

11. The public is likely to be misled into believing that Applicant’s goods and services are associated with Opposer or with Opposer’s goods and services, that Applicant’s goods emanate from or are sponsored, endorsed or licensed by Opposer, or that there is some relationship between Applicant and Opposer.

12. The Application and the presumption of exclusivity that would arise to Applicant from registration of the designation set forth therein are inconsistent with Opposer’s prior rights in the mark.

13. Opposer will be damaged by the registration sought by Applicant because such registration will support and assist Applicant in the confusing and misleading use of the mark

8 sought to be registered and will give color of exclusive statutory rights to Applicant in violation and derogation of the prior and superior rights of Opposer.

14. Opposer believes it will be damaged by the registration sought by Applicant under

Section 13 of the Lanham Act, 15 U.S.C. § 1063, on the ground that Applicant’s use and registration of the mark will falsely suggest a connection between Applicant and Opposer to the detriment of Opposer in violation of Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a).

15. Opposer believes it will be damaged by the registration sought by Applicant under

Section 13 of the Lanham Act, 15 U.S.C. § 1063, on the ground that the subject designation so resembles the mark used by Opposer in the United States as to be likely, when used on or in connection with the goods and services identified in the Application, to cause confusion, mistake or to deceive consumers with consequent injury to Opposer and to the public in violation of

Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d).

WHEREFORE, Opposer believes it will be damaged by registration of the KANSAS

CITY SCOUTS mark shown in Application Serial No. 87/771,224 and respectfully requests that the Opposition be sustained, registration of said mark denied, and the Trademark Trial and

Appeal Board grant such other and further relief as it deems just and appropriate.

Please recognize the undersigned (all members of the Bar of New York) as counsel for

Opposer. All communication should be addressed to Opposer’s counsel NHL Enterprises, L.P., at the below stated address.

Dated: New York, New York October 31, 2018

Respectfully submitted,

By: ______

Thomas H. Prochnow Kelley A. Lynch Jia Wang Anna Rosenblatt NHL Enterprises, L.P. 1185 Avenue of the Americas, 15th Floor New York, New York 10036 (212) 789-2000 Attorneys for Opposer, National Hockey League