Notice of Opposition Opposer Information Applicant Information

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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 extension 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

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;

● 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.

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.

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. Opposer spent substantial time, effort, and money promoting the sale of products under the JOE LOUIS Marks. Moreover, Opposer, the JOE LOUIS Marks, and associated products and services have received and continue to receive widespread media attention. Therefore, through

Joe Louis’ extensive use of the JOE LOUIS Marks, continuous and immense media coverage, the high degree of consumer recognition of the JOE LOUIS Marks, Joe Louis' enormous and loyal fan base, its trademarks and pending trademark applications with the USPTO, and other factors, the

JOE LOUIS Marks have become famous within the meaning of Section 43(c) of the United States

Trademark Act, 15 U.S.C. § 1125(c).

10. On July 23, 2020, Applicant Dudak filed the Subject Application on the basis of

Applicant’s alleged intent-to-use the mark in commerce pursuant to 15 U.S.C. § 1051(b).

11. On February 2, 2021, the USPTO published the Subject Application in the Official

Gazette in connection with the following goods: “Hats; Sweatshirts; T-shirts; Graphic T-shirts;

Hooded sweatshirts; Short-sleeved or long-sleeved t-shirts” in International Class 25.

12. JOE LOUIS Marks became famous and were in continuous use long before the July

23, 2020 filing date of Applicant's Subject Application and remains so to this day.

FIRST GROUND FOR OPPOSITION—LIKELIHOOD OF CONFUSION

13. Opposer repeats and realleges paragraphs 1-12 as if set forth fully herein.

14. Joe Louis began using the JOE LOUIS Marks at least as early as 1981 well prior to when Applicant Dudak filed the Subject Application, and on information and belief, well prior to any actual or constructive use of Applicant’s mark.

15. The JOE LOUIS Marks are strong and famous.

16. Upon information and belief, Applicant was aware of Opposer’s JOE LOUIS

Marks and the famous persona represented thereby at the time that Applicant filed the Subject

Application for the J. LOUIS Mark.

17. Applicant’s Mark is highly similar in sight, sound, and commercial impression to the JOE LOUIS Marks. All literal elements of Applicant’s Mark, J. LOUIS, are identical to the literal elements of the JOE LOUIS Marks.

18. The goods set forth in the Subject Application are identical to the merchandise for which the JOE LOUIS Marks have been and are being used, in that various goods as set forth in the Subject Application encompass products for the same or similar indications as the JOE LOUIS products, or could reasonably be expected to originate from the same source, such that consumers

who encounter Applicant’s Mark, J. LOUIS, in connection with such products are likely to think that Applicant’s products are authorized by, sponsored by, licensed by, affiliated with, or related to Opposer’s JOE LOUIS name, goods, and services.

19. On information and belief, Applicant’s goods are offered through the same channels of trade or in the same manner as Joe Louis goods, such as the Internet.

20. On information and belief, Applicant filed the Subject Application with knowledge of and intent to call to mind, create an association with regard to, and/or trade off the fame of Joe

Louis and the JOE LOUIS Marks.

21. Joe Louis is not affiliated or connected with Applicant or Applicant’s goods, nor has Joe Louis endorsed, licensed, or sponsored Applicant or Applicant’s goods.

22. Joe Louis has no control over the nature and quality of the goods that are, and/or will be, offered under Applicant’s Mark, and the value of Opposer’s JOE LOUIS Marks would be jeopardized by the registration of Applicant’s Mark. Because of the likelihood of confusion between the parties’ marks, any defects, improprieties, or faults found with Applicant’s goods marketed under Applicant’s Mark would negatively reflect upon Joe Louis and injure the reputation that Joe Louis has established for the goods and services offered in connection with the

JOE LOUIS Marks.

23. Accordingly, registration of Applicant’s Mark in connection with the applied-for goods will damage Joe Louis because Applicant’s Mark is likely, when used on or in connection with such goods, to cause confusion, cause mistake, or deceive relevant consumers within the meaning of Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d).

SECOND GROUND FOR OPPOSITION—DILUTION OF A FAMOUS MARK

24. Opposer repeats and realleges paragraphs 1 - 23 as if set forth fully herein.

25. The JOE LOUIS Marks are inherently distinctive in relation to apparel, among other goods and services, as opined above.

26. Joe Louis has used the JOE LOUIS Marks since at least as early as 1981 in connection with goods, such as T-shirts, hoodies, shirts, and sweaters, and has expanded use of the

JOE LOUIS Marks to many other goods and services since that time.

27. Joe Louis has continuously used the JOE LOUIS Marks throughout the United

States.

28. As a result of the enormous publicity afforded to Joe Louis and the Joe Louis

Marks, and the strong and loyal fan base of the athlete, the JOE LOUIS Marks have a high degree of consumer recognition, are widely recognized by the general consuming public of the United

States as a designation of Joe Louis’ goods and services, and are famous.

29. Opposer’s Marks became famous prior to the filing date of the Subject Application, before any use of the Applicant’s Mark by Applicant, or any other priority date on which the

Applicant may rely.

30. The degree of similarity between Applicant’s Mark and the JOE LOUIS Marks is so great as to be likely to cause an association between the parties’ respective marks that impairs the distinctiveness of the JOE LOUIS Marks and weakens the connection in the public’s mind between the JOE LOUIS Marks and Joe Louis' goods and services.

31. Applicant’s Mark is likely to cause dilution by blurring based on a number of relevant considerations, including:

(a) Applicant’s Mark is highly similar to the JOE LOUIS Marks and shares literal elements with the JOE LOUIS Marks;

(b) The JOE LOUIS Marks are inherently distinctive in relation to the goods and services with which Opposer uses its marks;

(c) Joe Louis has made substantially exclusive use of the JOE LOUIS Marks in connection with the goods and services set forth in ¶ 7 above;

(d) The JOE LOUIS Marks are widely recognized by the general consuming public; and

(e) On information and belief, Applicant selected and intends to use Applicant’s Mark with the intention of creating an association with the JOE LOUIS Marks.

32. Applicant’s Mark is unregistrable in connection with the goods identified in the

Subject Application due to a likelihood of confusion with, and dilution of, the JOE LOUIS Marks under 15 U.S.C. §§ 1052(d) and 1125(c).

THIRD GROUND FOR OPPOSITION—FALSE SUGGESTION OF A CONNECTION

33. Opposer repeats and realleges paragraphs 1 - 32 as if set forth fully herein.

34. As one of the most celebrated boxers and philanthropists in the United States and around the world, Joe Louis is well-known to the general public and consumers readily associate the JOE LOUIS Marks with him.

35. Applicant’s Mark, J. LOUIS, when used in connection with the sale of Applicant’s applied-for goods, suggests a connection with Joe Louis, his international fame as a boxing star, and his reputation as an avid philanthropist.

36. Joe Louis is not now, nor has he ever been, connected with the activities performed or goods sold by the Applicant.

37. Applicant has no connection with Joe Louis or the Estate of Joe Louis.

38. The Estate of Joe Louis does not now and has never authorized Applicant’s use of the confusingly similar J. LOUIS mark or any other trademark associated with Applicant.

39. Consumers strongly associate J. Louis and Opposer’s JOE LOUIS Marks with Joe

Louis’ famous name and persona. Accordingly, Applicant’s Mark for the goods covered in the

Subject Application would be recognized by American consumers as pointing uniquely to Joe

Louis, and such consumers would presume Applicant’s Mark is indeed associated with Joe Louis.

40. Applicant’s J. LOUIS Mark for goods (long associated by consumers with

Opposer) consists of and comprises matter which falsely suggests a connection with Joe Louis, from whom the JOE LOUIS Marks are derived. As such, Applicant’s Mark is unregistrable in connection with the goods identified in the Subject Application due to a likelihood of confusion with, dilution of, and false suggestion of a connection with the JOE LOUIS Marks under 15 U.S.C.

§§ 1052(d), 1125(c), and 1052(a).

WHEREFORE, Opposer prays that this opposition be sustained, and that registration of the Subject Application be refused.

Dated: June 1, 2021 IVKO LLC

By: /Polina Ivko/ Polina Ivko Ivko LLC 424 W 33rd Street, Floors 7-9 New York, NY 10001 Telephone: 332-203-3347 Email: [email protected]

Counsel for Opposer Estate of Joe Louis

Enclosures: Exhibit A, Exhibit B, Exhibit C, Exhibit D, Exhibit E, and Exhibit F.

EXHIBIT A

Joe Louis, Britannica, https://www.britannica.com/biography/Joe-Louis (last visited Mar. 30, 2021). - Browse . Search Quizzes Games On This Day Subscribe Now Login /

JOE LOUIS , Home ! Sports & Recreation ! Olympic Sports ' ENCYCLOPEDIA ARTICLE TEST YOUR KNOWLEDGE Joe Louis Gods, Goddesses, and Greek Introduction & Quick Facts American boxer Mythology Quiz

World War I Quiz ( LEARNING GUIDES ) " Print # Cite $ Share % More World Capitals Quiz Quotes WRITTEN BY Countries of the World Quiz The Editors of Encyclopaedia Britannica MEDIA * ) Encyclopaedia Britannica's editors oversee subject areas in which they have extensive knowledge, whether from years of experience gained by working on that content or via study for an advanced degree.... Images Last Updated: Apr 8, 2021 See Article History

+ ADDITIONAL INFO ) Alternative Titles: Joseph Louis Barrow, the Brown Bomber

More Articles On This Topic Joe Louis, byname of Joseph Louis Barrow, also called the Brown Contributors Bomber, (born May 13, 1914, Lafayette, Alabama, U.S.—died April 12, 1981, Article History Las Vegas, Nevada), American boxer who was world heavyweight champion from June 22, 1937, when he knocked out James J. Braddock in eight rounds in Chicago, until March 1, 1949, when he briefly retired. During his reign, the longest in the history of any weight division, he successfully defended his title 25 times, more than any other champion in any division, scoring 21 knockouts (his service in the U.S. Army from 1942 to 1945 no doubt prevented him from defending his title many more times). He was known as an extremely accurate and economical knockout puncher.

Joe Louis BRITANNICA QUIZ QUICK FACTS Boxing Quiz Boxing first appeared as a formal Olympic event in the 23rd Olympiad (688 BCE). Take a jab at this quiz to learn about the sport’s interesting history.

Louis’s father, a sharecropper, was committed to a state mental hospital when Louis was about two years old. After his mother remarried, the family, which included eight children, moved to Detroit, Michigan, where Louis took up

amateur boxing. He won the U.S. Amateur Athletic Union 175-pound View Media Page championship in 1934 and also was a Golden Gloves titleholder; of 54 amateur fights, Louis won 50 and lost 4. His first professional fight took place BORN May 13, 1914 on July 4, 1934, and within 12 months he had knocked out Primo Carnera, the Lexington, Alabama first of six previous or subsequent heavyweight champions who would become his victims; the others were Max Baer, Jack Sharkey, Braddock, the German DIED April 12, 1981 (aged 66) champion Max Schmeling, and Jersey Joe Walcott. Louis sustained his first Las Vegas, Nevada professional loss in 1936 at the hands of Schmeling. In 1938, after having

beaten Braddock and taken the title, Louis met Schmeling in a rematch that AWARDS AND HONORS the American media portrayed as a battle between Nazism and democracy Golden Gloves (though Schmeling himself was not a Nazi). Louis’s dramatic knockout victory in the first round made him a national hero. He was perhaps the first Black American to be widely admired by whites, a fact attributable not only to his extraordinary pugilistic skills but also to his sportsmanlike behaviour in the ring (he did not gloat over his white opponents), his perceived humility and soft-spoken demeanour, and his discretion in his private life.

Joe Louis and Max Schmeling Joe Louis (left) and Max Schmeling at a photo session prior to their heavyweight world championship bout in 1938. Image: AP Images

Louis was at his peak in the period 1939–42. From December 1940 through June 1941 he defended the championship seven times. After enlisting in the U.S. Army in 1942, he served in a segregated unit with Jackie Robinson, who later became the first African American to play major league baseball. Louis did not see combat but fought in 96 exhibition matches before some two million troops; he also donated more than $100,000 to Army and Navy relief funds. After the war he was less active, and in 1949 he retired as the undefeated champion long enough to allow Ezzard Charles to earn recognition as his successor.

Although Louis earned nearly $5 million as a fighter, he spent or gave away nearly all of it. When the Internal Revenue Service demanded more than $1 million in back taxes and penalties, he was forced to return to the ring to pay off his debts. He fought Charles for the championship on September 27, 1950, but lost a 15-round decision. In his last fight of consequence, against future champion Rocky Marciano on October 26, 1951, he was knocked out in eight rounds. From 1934 to 1951, Louis had 71 bouts, winning 68, 54 by knockouts. A Hollywood movie about his life, The Joe Louis Story, was made in 1953.

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After his second retirement Louis continued to be plagued by money problems, and he was briefly forced to work as a professional wrestler. Later he became a greeter for Caesar’s Palace, a resort and casino in Las Vegas, Nevada. Upon his death in 1981 he was buried in Arlington National Cemetery; one of the pallbearers at his funeral was Schmeling. Louis remained a Detroit icon after his death: the Joe Louis Arena was home to the Detroit Red Wings of the National Hockey League from 1979 to 2017, and a well-known public monument to Louis (a 24-foot [7.3-metre] arm with a clenched fist suspended in pyramidal frame) was erected in downtown Detroit in 1986. Louis was inducted into the Ring Magazine Boxing Hall of Fame in 1954 and the International Boxing Hall of Fame in 1990. He was posthumously awarded the Congressional Gold Medal in 1982.

EXHIBIT B

Joe Louis, Outside the Ring, The Obsidian Collection Archives (last visited May 24, 2021), https://artsandculture.google.com/exhibit/joe-louis-outside-the-ring-the-obsidian-collection- archives/JgKCub3M8kauLg?hl=en. Home Explore Nearby Favorites Sign in

Joe Louis was committed to mentoring young Black boys. Here, he takes the time to be photographed with local awestruck children. Joe and the boys by Chicago Defender Archives The Obsidian Collection Archives