IN the UNITED STATES PATENT and TRADEMARK OFFICE BEFORE the TRADEMARK TRIAL and APPEAL BOARD Notice of Opposition

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1096782 Filing date: 11/20/2020

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 parties oppose registration of the indicated application. Opposers Information

Name Jimmy Buffett Granted to Date 11/21/2020 of previous ex- tension Address 256 WORTH AVE., SUITE Q-R PALM BEACH, FL 33480 UNITED STATES

Name Margaritaville Enterprises, LLC Granted to Date 11/21/2020 of previous ex- tension Address 256 WORTH AVE., SUITE Q-R PALM BEACH, FL 33480 UNITED STATES

Attorney informa- JOEL R. FELDMAN tion GREENBERG TRAURIG, LLP 3333 PIEDMONT RD. NE, SUITE 2500 ATLANTA, GA 30305 UNITED STATES Primary Email: [email protected] Secondary Email(s): [email protected], [email protected] 678-553-4778

Docket Number 101885010500 Applicant Information

Application No. 88907008 Publication date 09/22/2020 Opposition Filing 11/20/2020 Opposition Peri- 11/21/2020 Date od Ends Applicant Trident Coffee Roasters LLC 536 13TH STREET, SUITE 6 IMPERIAL BEACH, CA 91932 UNITED STATES Goods/Services Affected by Opposition

Class 030. First Use: 2017/09/24 First Use In Commerce: 2017/09/24 All goods and services in the class are opposed, namely: Coffee; Coffee beans; Coffee drinks; Ground coffee beans; Prepared coffee and coffee-based beverages; Roasted coffee beans 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 disrepute Mark Cited by Opposer as Basis for Opposition

U.S. Application/ Registra- NONE Application Date NONE tion No. Registration Date NONE Word Mark SON OF A SON OF A SAILOR Goods/Services T-shirts, tumblers, headwear, and decal stickers

Attachments Notice of Opposition - SON OF A SON OF A SAILOR.pdf(233905 bytes )

Signature /jrf/ Name Joel R. Feldman Date 11/20/2020

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In the Matter of Application Serial No. 88907008: SON OF A SON OF A SAILOR Published in the Official Gazette on September 22, 2020

) MARGARITAVILLE ENTERPRISES, ) LLC ) ) and ) ) JIMMY BUFFETT, ) ) Opposers, ) ) v. ) Opposition No. ) TRIDENT COFFEE ROASTERS LLC, ) ) Applicant. ) )

NOTICE OF OPPOSITION

Margaritaville Enterprises, LLC (“Margaritaville”) and Jimmy Buffett (collectively,

“Opposers”) oppose Trident Coffee Roasters LLC’s application to register SON OF A SON OF

A SAILOR (the “Application”) because Opposers will be damaged by the registration of the

Application.

The grounds for the opposition are:

BACKGROUND

1. Applicant seeks to register the standard character mark SON OF A SON OF A

SAILOR in Class 30 for coffee; coffee beans; coffee drinks; ground coffee beans; prepared coffee and coffee-based beverages; roasted coffee beans (the “Class 30 Goods”).

2. Applicant filed the Application on May 8, 2020, based on Applicant’s alleged use of the applied-for mark in interstate commerce since September 24, 2017.

OPPOSERS’ USE AND REGISTRATION OF SON OF A SON OF A SAILOR

3. Jimmy Buffett is an internationally-famous musician, songwriter, and entertainer.

4. Margaritaville is a Delaware limited liability company with a principal address at

256 Worth Avenue, Suite Q-R, Palm Beach, Florida 33480.

5. Jimmy Buffett is an owner of Margaritaville’s parent company, Margaritaville

Holdings LLC.

6. Margaritaville is the successor-in-interest to trademarks used and registered by

Jimmy Buffett, and has the right to commercialize Jimmy Buffett’s album titles, song titles, and song lyrics.

“SON OF A SON OF A SAILOR” SONG AND ALBUM

7. In 1978 Jimmy Buffett released an album named Son of a Son of a Sailor featuring a hit song by the same name.

8. The Son of a Son of a Sailor album reached number ten on the Billboard 200 album chart.

9. The Son of a Son of a Sailor album reached number six on the Billboard Top

Country Albums chart.

10. The Son of a Son of a Sailor album was certified Platinum by the Recording

Industry Association of America (RIAA).

11. “Son of a Son of a Sailor” is one of Jimmy Buffett’s most-famous songs and is featured on Jimmy Buffett’s septuple-Platinum Songs You Know By Heart album, as well as his

Live in Auburn, WA (2003), Live in Cincinnati, OH (2003), Live in Mansfield, MA (2004), Live in Hawaii (2005), Live at Fenway Park (2006), and Live in Anguilla (2007) albums.

2 12. Jimmy Buffett has played “Son of a Son of a Sailor” at nearly all of his hundreds of live performances since 1978 and his 2018 – 2019 tour was named the Son of a Son of a

Sailor tour.

MARGARITAVILLE’S TRADEMARK USE OF SON OF A SON OF A SAILOR

13. At least as early as 2010, Margaritaville has continuously sold souvenir goods featuring the phrase SON OF A SON OF A SAILOR in a manner that indicates Jimmy Buffett’s

Margaritaville as a secondary source of the goods. Although the types of goods have varied over time, they have included t-shirts, tumblers, headwear, and decal stickers (collectively, the

“Souvenir Goods”).

14. Margaritaville owns common-law rights in the SON OF A SON OF A SAILOR mark for each of the Souvenir Goods on which it has used the phrase as an indicator of secondary source.

15. Through its widespread and exclusive use in commerce, Margaritaville’s SON OF

A SON OF A SAILOR mark has achieved substantial recognition among the consuming public and has come to symbolize Margaritaville’s goodwill and reputation.

FALSE SUGGESTION OF A CONNECTION

16. Lanham Act Section 2(a) prohibits registration on the Principal Register of a mark that falsely suggests a connection with persons or which bring them into contempt or disrepute.

17. “Son of a Son of a Sailor” is such an iconic Jimmy Buffett song title and song lyric that the general public uniquely and unmistakably associates “Son of a Son of a Sailor” with Jimmy Buffett.

18. Upon information and belief, Applicant intentionally selected SON OF A SON

OF A SAILOR for its coffee because of the phrase’s unique and unmistakable association with

Jimmy Buffett.

19. Applicant’s Instagram page includes a post quoting Jimmy Buffett’s “Son of a

Son of a Sailor” song and advertising its location as “Margaritaville”:

20. Applicant’s use of SON OF A SON OF A SAILOR on coffee falsely suggests to consumers that the coffee is connected to Jimmy Buffett and/or his business ventures, within the meaning of Trademark Act Section 2(a).

21. Jimmy Buffett is not connected to Applicant or its coffee.

22. Jimmy Buffett has not consented to Applicant’s registration of SON OF A SON

OF A SAILOR.

PRIORITY AND LIKELIHOOD OF CONFUSION

23. Margaritaville used the SON OF A SON OF A SAILOR mark for the Souvenir

Goods, including t-shirts, decals, tumblers, and headwear before Applicant filed the Application.

24. Margaritaville used the SON OF A SON OF A SAILOR mark for some of the

Souvenir Goods, including t-shirts and decals, before Applicant allegedly began using the applied-for mark for the Class 30 Goods.

25. Although Margaritaville began using the SON OF A SON OF A SAILOR mark for tumblers and headwear after Applicant began using the SON OF A SON OF A SAILOR mark for coffee, tumblers and headwear are within the zone of natural expansion of t-shirts and decals and, therefore, Margaritaville’s rights are prior.

26. As a result of Margaritaville’s efforts, long before Applicant filed the Application or used the applied-for mark in commerce, Margaritaville’s SON OF A SON OF A SAILOR mark was substantially recognized by the public as a strong indicator of Margaritaville’s goods.

27. Applicant’s applied-for SON OF A SON OF A SAILOR mark is identical to

Margaritaville’s SON OF A SON OF A SAILOR mark.

28. The applied-for Class 30 Goods are related to the t-shirts, decals, tumblers, and headwear on which Margaritaville has used the SON OF A SON OF A SAILOR mark because coffee is a common souvenir and gift item and coffee and beverageware often originate from the same source.

29. Applicant’s Class 30 Goods branded with the applied-for mark will be offered to the same types of consumers that purchase Margaritaville’s SON OF A SON OF A SAILOR- branded goods.

30. Based on the identity of Applicant’s and Margaritaville’s marks and the relatedness of Applicant’s Class 30 Goods and Margaritaville’s Souvenir Goods, the public is likely to incorrectly believe that Applicant’s Class 30 Goods are connected to Margaritaville.

This confusion will cause irreparable harm to Margaritaville.

31. Any dissatisfaction with Applicant’s Class 30 Goods would reflect negatively upon and irreparably damage Margaritaville’s reputation and the goodwill embodied in its SON

OF A SON OF A SAILOR mark.

32. Applicant’s use and registration of the applied-for mark is likely to cause confusion, mistake, and deception as to the source of Applicant’s Class 30 Goods within the meaning of 15 U.S.C. §§ 1114 and 1125(a).

33. Applicant’s use and registration of the applied-for mark will injure and damage

Margaritaville and the goodwill and reputation symbolized by Margaritaville’s SON OF A SON

OF A SAILOR mark within the meaning of 15 U.S.C. § 1063(a).

34. Applicant’s applied-for mark is not registrable under 15 U.S.C. § 1052(d), because it resembles marks previously used in the United States by Margaritaville and is likely to cause confusion, mistake, or to deceive.

Conclusion

35. Opposers respectfully request that the Board sustain this opposition and refuse registration of the Application.

Date: November 20, 2020

Respectfully submitted, GREENBERG TRAURIG, LLP

Joel R. Feldman Sabina A Vayner Alexandra A. Holt

3333 Piedmont Road, NE Suite 2500 Atlanta, Georgia 30305 (678) 553-4778

Attorneys for Opposers Margaritaville Enterprises, LLC and Jimmy Buffett