Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov ESTTA Tracking number: ESTTA1137509 Filing date: 06/01/2021 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 Joe L Barrow II Granted to Date 06/02/2021 of previous ex- tension Address 9229 SUNSET BLVD., STE 950 WEST HOLLYWOOD, CA 90069 UNITED STATES Attorney informa- POLINA IVKO tion IVKO LLC 424 WEST 33RD STREET, FLOORS 7-9 NEW YORK, NY 10001 UNITED STATES Primary Email: [email protected] 332-203-2111 Docket Number Applicant Information Application No. 90069753 Publication date 02/02/2021 Opposition Filing 06/01/2021 Opposition Peri- 06/02/2021 Date od Ends Applicant Dudak, Jackson L 705 WOODLAND HILLS BLVD VICTORIA, MN 55386 UNITED STATES Goods/Services Affected by Opposition Class 025. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Hats; Sweatshirts; T-shirts; Graphic T- shirts; Hooded sweatshirts; Short-sleeved or long-sleeved t-shirts Grounds for Opposition Priority and likelihood of confusion Trademark Act Section 2(d) Dilution by blurring Trademark Act Sections 2 and 43(c) 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 Marks Cited by Opposer as Basis for Opposition U.S. Application 90131308 Application Date 08/23/2020 No. Registration Date NONE Foreign Priority NONE Date Word Mark JOE LOUIS Design Mark Description of NONE Mark Goods/Services Class 025. First use: First Use: 1994/01/01 First Use In Commerce: 1994/01/01 T-shirts; Hoodies U.S. Application 90131415 Application Date 08/23/2020 No. Registration Date NONE Foreign Priority NONE Date Word Mark JOE LOUIS Design Mark Description of NONE Mark Goods/Services Class 025. First use: First Use: 0 First Use In Commerce: 0 Hats; Shorts; Sweaters; Boxer briefs; Boxer shorts; Polo knit tops; Polo shirts; Headwear, namely, hats, caps and beanies U.S. Application 90147614 Application Date 08/30/2020 No. Registration Date NONE Foreign Priority NONE Date Word Mark JOE LOUIS SOUTHERN KITCHEN Design Mark Description of NONE Mark Goods/Services Class 021. First use: First Use: 0 First Use In Commerce: 0 Mugs; Coffee mugs U.S. Application 90134345 Application Date 08/24/2020 No. Registration Date NONE Foreign Priority NONE Date Word Mark JOE LOUIS SOUTHERN KITCHEN Design Mark Description of NONE Mark Goods/Services Class 043. First use: First Use: 0 First Use In Commerce: 0 Bar services; Catering services; Restaurant services, including sit-down service of food and take-out restaurant services Attachments 90131308#TMSN.png( bytes ) 90131415#TMSN.png( bytes ) 90147614#TMSN.png( bytes ) 90134345#TMSN.png( bytes ) J. Louis Mark_Notice of Opposition_Estate of Joe Louis.pdf(4092758 bytes ) Signature /Polina Ivko/ Name POLINA IVKO Date 06/01/2021 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD In the Matter of Trademark Applicant Jackson Dudak Mark: J. LOUIS Serial No.: 90069753 Filed: July 23, 2020 Published in the Official Gazette on February 2, 2021 ESTATE OF JOE LOUIS, ) c/o CMG WORLDWIDE, INC. ) ) Opposer, ) ) v. ) Opposition No. _______________ ) JACKSON DUDAK ) ) Applicant. ) ) ) NOTICE OF OPPOSITION The Estate of Joe Louis (“Opposer” or “Joe Louis”), a Michigan State estate with the mailing address of ℅ CMG Worldwide, Inc., 9229 Sunset Blvd., STE 950, West Hollywood, CA 90069, believes that it will be damaged by the issuance of a registration for the mark J. LOUIS (the “Applicant’s Mark” or “J. LOUIS Mark”) in International Class 25, as identified in Application Serial No. 900069753 (the “Subject Application”) filed by Jackson Dudak (“Applicant”), with a mailing address of 705 Woodland Hills Blvd., Victoria, MN 55386, on July 23, 2020. The Subject Application was published on February 2, 2021, and Joe Louis timely 1 requested and received one 30-day extension of time to oppose and one additional 60-day extension of time to oppose. Accordingly, Joe Louis timely opposes the Subject Application. The grounds for opposition are as follows: 1. Opposer has validly and continuously used the JOE LOUIS mark and marks incorporating the elements of JOE LOUIS (collectively the “JOE LOUIS Marks”) in connection with a variety of goods related to Joe Louis’ persona as a famous boxer, American cultural icon and philanthropist as early as 1930s. In connection with his career as a professional boxer, Joe Louis and his estate have continued to use and expand the use of the JOE LOUIS Marks (as well as the marks bearing the infamous Brown Bomber nickname of Joe Louis) for a variety of goods and services including, but not limited to: ● T-shirts, sweaters, shirts, and hoodies; ● Dairy-based beverages; ● Bourbon and whiskey; ● Fruit drinks; ● Hair pomades; ● Restaurant services; ● Sneakers; ● Photographic prints; ● Cinematographic films; ● Wine; ● Internet, television, and printed advertising; ● Books; ● Theatrical shows; 2 ● Sculptures; ● Trading cards; ● Art exhibitions; ● Video games; ● Bar services; ● Entertainment services in the nature of boxing and golfing events; and ● Household kitchen goods.” 2. Joe Louis was a legendary heavyweight boxing champion, whose JOE LOUIS Marks and persona are extremely famous worldwide. Holding the world heavyweight title from 1937 to 1949, Joe Louis had the single longest title reign “in the history of any weight division, [and] successfully defended his title 25 times, more than any other champion in any division, scoring 21 knockouts.” See Joe Louis, Britannica, https://www.britannica.com/biography/Joe-Louis (last visited Mar. 30, 2021) and Ex. A. In 1938, “in a rematch that the American media portrayed as a battle between Nazism and democracy,” Joe Louis defeated German boxer Max Schmeling with a “dramatic knockout victory in the first round [that] made him a national hero.” See Ex. A. In fact, Joe Louis is considered one of the greatest boxers of all time and a revered public figure in the Black community. He is known not only as a boxer, but also as a man of the people, a mentor, a philanthropist, a patriot, an army man, an entrepreneur, and a golfer. See Ex. B. 3. Boxing superstar Joe Louis’ fame spans well beyond his active years in the sport. Aside from his boxing career, Joe Louis also served his country by enlisting in the U.S. Army from 1942 to 1945 and becoming one of the most well-known servicemen in World War II. See Ex. C. Even after retiring from professional boxing, Joe Louis continued to break barriers in other sports, becoming “the first black golfer to compete in a PGA-sanctioned event on Jan. 17, 1952.” See Ex. 3 D. Joe Louis was also known for his generous philanthropic work, donating “over $1.2 million in today’s money to support the army and the navy” during World War II. His efforts in the integration of golf led to the founding of The First Tee, a charity helping underprivileged children become acquainted with the game of golf. See Ex. E. Now, both through a collaboration with renowned agency CMG Worldwide and independently, the Estate of Joe Louis’ extensive and successful business of licensing the use of his name and image carries on Joe Louis’ legacy as one of the greatest American athletes and patriots of the twentieth century. 4. In connection with its business, Opposer has applied for U.S. Trademark App. No. 90131308 on the Principal Register for the trademark JOE LOUIS covering "T-shirts and Hoodies" in International Class 25. 5. Opposer has also applied for the following marks on the Principal Register of the USPTO: ● U.S. Trademark App. No. 90131415 for the mark JOE LOUIS covering "Hats; Shorts; Sweaters; Boxer briefs; Boxer shorts; Polo knit tops; Polo shirts; Headwear, namely, hats, caps and beanies" in International Class 25; ● U.S. Trademark App. No. 90134010 for the mark BROWN BOMBER, Joe Louis’ infamous nickname, covering “T-Shirts” in International Class 25; ● U.S. Trademark App. No. 90134045 for mark BROWN BOMBER, covering “Hats; Shorts; Sweaters; Boxer briefs; Boxer shorts; Polo knit tops; Polo shirts; Headwear, namely, hats, caps and beanies" in International Class 25; ● U.S. Trademark App. No. 90147614 for the mark JOE LOUIS SOUTHERN KITCHEN covering “Mugs; Coffee mugs” in International Class 21. 4 6. U.S. Trademark Application Nos. 90131308, 90131415, 90134010, 90134045, and 90147614 are included in the JOE LOUIS Marks referred to above. 7. For decades, Opposer has extensively and continuously used the JOE LOUIS Marks in interstate commerce in connection with the sale and marketing of a wide variety of goods and services including, but not limited to the ones set forth in the list set forth in Paragraph 1 above. Attached hereto are copies of representative samples showing Joe Louis’ use in commerce of the JOE LOUIS Marks in connection with these goods and services. See Ex. B and Ex. F. 8. As a result of its widespread, continuous, and exclusive use of the JOE LOUIS Marks to identify its various goods including apparel since at least 1994, Joe Louis is the senior user of the JOE LOUIS Marks and has priority over Applicant with respect to J. LOUIS Mark. 9. The JOE LOUIS Marks are distinctive with regard to the consuming public, as the general public associates the famous JOE LOUIS Marks only with the iconic heavyweight boxer, Joe Louis, and various products and services associated with his name. Joe Louis has sold and continues to sell substantial quantities of JOE LOUIS-branded products in the United States as set forth in ¶ 7 above.