Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA946503 Filing date: 01/09/2019

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 Portland Mavericks Baseball Club, Inc. Granted to Date 01/09/2019 of previous ex- tension Address 942 Windmere Drive NW Salem, OR 97304 UNITED STATES

Attorney informa- Frank J. Bonini, Jr. tion Hardin, Earley, Follmer & Frailey P.O. Box 750 Valley Forge, PA 19482 UNITED STATES [email protected] 610-935-2300 x335

Applicant Information

Application No 87407131 Publication date 09/11/2018 Opposition Filing 01/09/2019 Opposition Peri- 01/09/2019 Date od Ends Applicant The National Association of Professional Baseball Leagues, Inc. 9550 16th Street N. St. Petersburg, FL 33716 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 services in the nature of- baseball games and exhibitions Grounds for Opposition

Priority and likelihood of confusion Trademark Act Section 2(d) No bona fide intent to use mark in commerce for Trademark Act Section 1(b) identified goods or services 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 Other Intent to misrepresent that Applicant's marks were registered, when they were not. Mark Cited by Opposer as Basis for Opposition

U.S. Application/ Registra- NONE Application Date NONE tion No. Registration Date NONE Word Mark PORTLAND MAVERICKS and PORTLAND MAVERICKS with bull design; Trade names: PORTLAND MAVERICKS and PORTLAND MAVERICKS BASEBALL CLUB Goods/Services entertainment services, namely, services relating to providing players to appear at events, including baseball games; business and activities in connection with a baseball team

Related Proceed- Opposer has filed a Notice of Opposition against Applicant's application serial ings no. 87407047 (on this same day)

Attachments NoticeOfOppositionDesignMark.pdf(63586 bytes ) EXHIBITA.pdf(4093243 bytes ) EXHIBITB.pdf(1335850 bytes ) EXHIBITC.pdf(342805 bytes )

Signature /Frank J. Bonini, Jr./ Name Frank J. Bonini, Jr. Date 01/09/2019 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In re Application No. 87/407131 for the mark PORTLAND MAVERICKS and design filed on April 11, 2017 and published on September 11, 2018.

) Portland Mavericks Baseball Club, Inc., ) ) ) Opposition No. ______Opposer ) ) Applicant’s Mark: v. ) PORTLAND MAVERICKS ) and design ) The National Association of ) Professional Baseball Leagues, Inc., ) ) Applicant. ) )

NOTICE OF OPPOSITION

Portland Mavericks Baseball Club, Inc. (“Opposer”), a corporation duly organized and existing under the laws of Oregon and having a principal business address of 942 Windmere Drive NW, Salem, Oregon 97304, believes that it will be damaged by the registration of the mark PORTLAND MAVERICKS and design (U.S. Application Serial No. 87/407131) by The National Association of

Professional Baseball Leagues, Inc. (“Applicant”). Opposer hereby opposes registration of the mark PORTLAND MAVERICKS and design that is the subject of U.S. Application Serial no. 87/407131 under the provisions of Lanham Act §13,

15 U.S.C. §1063, and requests that registration to Applicant be refused.

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As grounds for the opposition, Opposer alleges as follows:

1. Applicant has filed an application to register the mark PORTLAND

MAVERICKS and design for “entertainment services in the nature of baseball games and exhibitions.” That application was filed on April 11, 2017, and was assigned Serial No. 87/407131.

2. Upon information and belief, Applicant has not made any valid service mark use of the mark PORTLAND MAVERICKS and design prior to

April 11, 2017.

3. Opposer, prior to Applicant’s application filing date of April 11,

2017, has been, and is now, using the mark PORTLAND MAVERICKS in interstate commerce in connection with providing entertainment services, namely services relating to providing players to appear at events, including, baseball games. Said use has been valid and continuous to the present, since prior to April

11, 2017, the date of filing of Applicant’s application, and has not been abandoned. Said mark of Opposer is symbolic of extensive goodwill and consumer recognition built up by Opposer through substantial amounts of time and effort in advertising and promotion. In view of the similarity of the respective marks and the related nature of the services of the respective parties, it is alleged that Applicant’s mark so resembles Opposer’s previously used mark PORTLAND

MAVERICKS, when applied to the services set forth in Applicant’s application, as to be likely to cause confusion, or to cause mistake, or to deceive.

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4. Opposer, prior to Applicant’s application filing date of April 11,

2017, has been, and is now, using the trade names Portland Mavericks Baseball

Club and Portland Mavericks (“Opposer’s trade names”) in connection with

Opposer’s business and activities, including the services identified in Paragraph 3, above.

5. In conjunction with the activities described herein, Opposer also has commenced preparations for assembling a baseball team to play as the

PORTLAND MAVERICKS.

6. Opposer operates a Portland Mavericks Facebook Page, a Portland

Mavericks Twitter account, and a Portland Mavericks web site www.portlandmavericks.net. Opposer’s mark PORTLAND MAVERICKS is also used with the image of a bull.

7. Attached as Exhibit A hereto are screen print captures of Opposer’s

Portland Mavericks web site, www.portlandmavericks.net.

8. Attached as Exhibit B hereto are representative screen print captures of Opposer’s Portland Mavericks Twitter stream (@PortlandMavs).

9. Attached as Exhibit C hereto is a screen print capture of the home page of Opposer’s Portland Mavericks Facebook Page.

10. Applicant’s services are identical or closely related to the services of

Opposer and are likely to be encountered by the same purchasers and users as those of Opposer.

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11. Registration of the mark PORTLAND MAVERICKS and design to

Applicant is likely to cause confusion or mistake or deceive, as to the respective mark or ownership thereof, and also to the source, origin, and sponsorship of these services.

12. Opposer asserts that by reason of the similarity of Applicant’s mark and Opposer’s mark and Opposer’s trade names, and the nature of the services offered by the parties, purchasers and prospective purchasers will assume that the services provided by Applicant under the mark PORTLAND MAVERICKS and design are being provided by Opposer or under its sponsorship or license, or that

Applicant and Opposer are in some way related, and thereby immeasurably damage Opposer as a result of the likelihood of confusion, mistake or deception of purchasers and the trade.

COUNT I

Likelihood of Confusion, Trademark Act §2(d), 15 § U.S.C. 1052(d)

13. Opposer repeats and realleges the allegations set forth in the preceding paragraphs.

14. The mark that Applicant seeks to register is identical or closely similar in sound, connotation, and appearance to Opposer’s PORTLAND

MAVERICKS mark and/or Opposer’s trade names, and the primary and dominant portion of Opposer’s PORTLAND MAVERICKS mark and/or Opposer’s trade names. The dominant portion of the mark that Applicant seeks to register is

4 closely similar or identical to Opposer’s PORTLAND MAVERICKS mark and

Opposer’s trade names. The use and registration of Applicant’s mark are likely to cause confusion, mistake, and deception as to the source or origin of Applicant’s goods and services and will injure and damage Opposer and the goodwill and reputation symbolized by Opposer’s PORTLAND MAVERICKS mark and

Opposer’s trade names.

15. Applicant’s services are identical or so closely related to the services of Opposer that consumers are likely to be confused, to be deceived, and to assume erroneously that Applicant’s services are those of Opposer, or that

Applicant has been licensed by Opposer to use Opposer’s mark PORTLAND

MAVERICKS and/or Opposer’s trade names, or that Applicant is in some way connected with, sponsored by, or affiliated with Opposer, all of which will cause

Opposer irreparable damage.

16. Applicant’s services are identical or so closely related to Opposer’s services and the field in which Opposer operates that the public is likely to be confused, to be deceived, and to assume erroneously that Applicant’s services are those of Opposer, or that Applicant has been licensed by Opposer to use Opposer’s mark PORTLAND MAVERICKS and/or Opposer’s trade names, or that

Applicant is in some way connected with, sponsored by, or affiliated with

Opposer, all of which will cause Opposer irreparable damage.

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17. Likelihood of confusion is enhanced by the fact that purchasers of

Applicant’s services are prospective purchasers of Opposer’s services, and vice versa.

18. By reason of the foregoing, Opposer will be damaged by the registration of Applicant’s mark, and registration should be refused.

COUNT II

False Suggestion with Opposer’s Identity and Name, and False Representation, Trademark Act §2(a), 15 § U.S.C. 1052(a)

19. Opposer repeats and realleges the allegations set forth in the preceding paragraphs.

20. Applicant’s mark falsely suggests a connection with Opposer, including a false connection with Opposer’s name and identity.

21. Applicant during the prosecution of U.S. Application Serial no.

87/407131 made false representations that Applicant owned the Portland

Mavericks baseball club, when Applicant did not:

Applicant, The National Association of Professional Baseball Leagues, Inc. d/b/a “Minor League Baseball”, respectfully submits that the Applied-for-Mark, as used for the services described in the Application, represents Applicant’s historic baseball club, the Portland Mavericks, which was one of Applicant’s professional baseball clubs from 1973 to 1977.

* * *

Response Signature

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Signature: /robert fountain/ Date: 01/05/2018 Signatory's Name: Robert Fountain Signatory's Position: Attorney of record, Florida bar member

(Applicant’s January 5, 2018, “Response to Office Action”, Serial no. 87/407131, in part)

22. Applicant’s false representations were made to the United

States Patent and Trademark Office (“USPTO”) in the prosecution of

U.S. Application Serial no. 87/407131 in an attempt to have the

USPTO register Applicant’s mark.

23. Accordingly, Applicant’s mark must be refused registration.

COUNT III

Lack of Bona Fide Intent to Use, Trademark Act § 1(b), 15 U.S.C. § 1051(b)

24. Opposer repeats and realleges the allegations set forth in the preceding paragraphs.

25. Upon information and belief, Applicant did not have a bona fide intent to use the mark of Applicant’s application in United States commerce on or in connection with the services that Applicant identified in its application, namely,

“Entertainment services in the nature of baseball games and exhibitions,” when

Applicant filed Application no. 87/407131 on April 11, 2017.

26. Applicant’s Application no. 87/407131 is therefore void ab initio, pursuant to 15 U.S.C. §1051(b) and the Applicant’s application should be refused accordingly.

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COUNT IV

Intent to Misrepresent

27. Opposer repeats and realleges the allegations set forth in the preceding paragraphs.

28. On information and belief, Applicant has negated any right to register the mark PORTLAND MAVERICKS and design because Applicant improperly used the registration symbol, and/or made misrepresentations that

PORTLAND MAVERICKS marks were registered with the United States Patent and Trademark Office and owned by Applicant, when Applicant never possessed registrations for PORTLAND MAVERICKS marks.

29. Applicant indicated that it owned PORTLAND MAVERICKS marks, and that PORTLAND MAVERICKS marks are registered with the United

States Patent and Trademark Office.

30. Applicant’s representation that Applicant owned PORTLAND

MAVERICKS marks, and that PORTLAND MAVERICKS marks are registered with the United States Patent and Trademark Office is false.

31. Applicant intended to deceive the purchasing public or others in the trade that the marks were registered when they were not registered.

32. Applicant sought to benefit from Applicant’s false statements made to others that indicated to others that Applicant owned PORTLAND

MAVERICKS marks, and that PORTLAND MAVERICKS marks were registered when they were not.

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33. On information and belief, Applicant stated to a prospective licensee, in an attempt to have the prospective licensee enter into a licensing agreement with Applicant, that Applicant owned PORTLAND MAVERICKS marks, and that PORTLAND MAVERICKS marks that Applicant was offering to license are registered with the United States Patent and Trademark Office, when in fact, they were not.

34. Applicant at all times relevant to circumstances alleged in the foregoing paragraphs knew that PORTLAND MAVERICKS marks are not registered with the United States Patent and Trademark Office.

35. Improper use of the registration symbol and/or representing that a mark is registered when it is not, negates Applicant's right to registration because

Applicant’s misuse and/or false statements were intended to deceive the purchasing public or others in the trade, including a prospective licensee, that

PORTLAND MAVERICKS marks were registered, when they were not. See

Copeland's Enters. Inc. v. CNV Inc., 20 USPQ2d 1295 (Fed. Cir. 1991).

WHEREFORE, Opposer requests that Applicant’s Application Serial No.

87/407131 be rejected, that registration of the mark of Applicant’s Application

Serial No. 87/407131 be denied, and that this Opposition to registration of the mark be sustained.

Respectfully Submitted,

PORTLAND MAVERICKS BASEBALL CLUB, INC.

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Dated: January 9, 2019 /Frank J. Bonini, Jr./ Frank J. Bonini, Jr., Reg. No. 35,452 John F. A. Earley III, Reg. No. 31,350 Harding, Earley, Follmer & Frailey, P.C. 86 The Commons at Valley Forge East 1288 Valley Forge Road Post Office Box 750 Valley Forge, PA 19482-0750 Phone: 610-935-2300 Fax: 610-935-0600

Attorneys for Opposer Portland Mavericks Baseball Club, Inc.

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