Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA336131 Filing date: 03/08/2010 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 Chicago Blackhawk Hockey Team, Inc. Granted to Date 03/07/2010 of previous extension Address The United Center 1901 West Madison Street Chicago, IL 60612 UNITED STATES

Attorney David H. Bernstein information Debevoise & Plimpton LLP 919 Third Avenue New York, NY 10022 UNITED STATES [email protected], [email protected] Phone:212-909-6000 Applicant Information

Application No 77739725 Publication date 09/08/2009 Opposition Filing 03/08/2010 Opposition 03/07/2010 Date Period Ends Applicant Chicago Tribune Company 435 N. Michigan Avenue` Chicago, IL 60611 UNITED STATES Goods/Services Affected by Opposition

Class 016. All goods and services in the class are opposed, namely: Newspapers Class 035. All goods and services in the class are opposed, namely: Advertising, marketing and promotion services Class 041. All goods and services in the class are opposed, namely: Entertainment services, namely, providing a web site featuring photographic, video and prose presentations featuring sports Grounds for Opposition

False suggestion of a connection Trademark Act section 2(a) Priority and likelihood of confusion Trademark Act section 2(d) Marks Cited by Opposer as Basis for Opposition

U.S. Registration 893052 Application Date 05/26/1969 No. Registration Date 06/16/1970 Foreign Priority NONE Date Word Mark BLACKHAWKS Design Mark Description of NONE Mark Goods/Services Class U107 (International Class 041). First use: First Use: 1926/09/25 First Use In Commerce: 1926/09/25 ENTERTAINMENT SERVICES IN THE NATURE OF PROFESSIONAL EXHIBITIONS

U.S. Registration 1959134 Application Date 02/21/1992 No. Registration Date 02/27/1996 Foreign Priority NONE Date Word Mark BLACK HAWKS CHICAGO Design Mark

Description of NONE Mark Goods/Services Class 025. First use: First Use: 1992/08/00 First Use In Commerce: 1992/08/00 clothing, namely jerseys, T-shirts, jackets, sweat shirts and caps

U.S. Registration 1708836 Application Date 11/08/1991 No. Registration Date 08/18/1992 Foreign Priority NONE Date Word Mark HAWK TALK Design Mark Description of NONE Mark Goods/Services Class 041. First use: First Use: 1990/04/00 First Use In Commerce: 1990/04/00 entertainment services consisting of telephone call-in services whereby members of the public may call a telephone number to hear information about applicant's professional hockey team, interviews with members of applicant's professional hockey team, hockey match scores, hockey match update information and the like; and radio programming consisting of interviews with members of applicant's professional hockey team, hockey match scores, hockey match update information, and information about applicant's professional hockey team

U.S. Registration 3183623 Application Date 01/27/2006 No. Registration Date 12/12/2006 Foreign Priority NONE Date Word Mark HAWKCAST Design Mark

Description of NONE Mark Goods/Services Class 009. First use: First Use: 2005/08/29 First Use In Commerce: 2005/08/29 Downloadable electronic audio and video publications featuring news, information and interviews regarding the Chicago Blackhawks Hockey Team

U.S. Registration 1779861 Application Date 11/08/1991 No. Registration Date 06/29/1993 Foreign Priority NONE Date Word Mark HAWKVISION Design Mark Description of NONE Mark Goods/Services Class 041. First use: First Use: 1992/02/24 First Use In Commerce: 1992/02/25 entertainment services consisting of telecasts of professional hockey exhibitions and hockey related television programming

U.S. Registration 2043639 Application Date 04/26/1996 No. Registration Date 03/11/1997 Foreign Priority NONE Date Word Mark STREETHAWKS Design Mark Description of NONE Mark Goods/Services Class 041. First use: First Use: 1995/10/03 First Use In Commerce: 1995/10/03 organizing and administering community based street hockey programs and competitions for youths

U.S. Registration 3335075 Application Date 07/14/2006 No. Registration Date 11/13/2007 Foreign Priority NONE Date Word Mark CHICAGO BLACKHAWK CHARITIES Design Mark

Description of The mark consists of the words Chicago Blackhawk Charities in a stylized font in Mark combination with a stylized design of an indian head. Goods/Services Class 036. First use: First Use: 1994/01/01 First Use In Commerce: 1994/01/01 Charitable services, namely, charitable fund raising by conducting special events and providing aid through financial grants for youth, the homeless, ill or disabled and providing financial grants which support health programs for the same

U.S. Registration 1671824 Application Date 10/19/1990 No. Registration Date 01/14/1992 Foreign Priority NONE Date Word Mark BLACKHAWKS Design Mark Description of NONE Mark Goods/Services Class 025. First use: First Use: 1972/00/00 First Use In Commerce: 1972/00/00 clothing; namely, shirts, jerseys, sweaters, jackets, sweatshirts, T-shirts, pants, sweatpants, warm-up suits, [ wristbands, headbands, ] shorts, caps, hats, socks, [ nightshirts, ] mittens and cloth bibs

U.S. Application/ NONE Application Date NONE Registration No. Registration Date NONE Word Mark HAWKS Goods/Services Hockey-related goods and services.

U.S. Application 77584449 Application Date 10/02/2008 No. Registration Date NONE Foreign Priority NONE Date Word Mark BLACKHAWKS STORE Design Mark

Description of NONE Mark Goods/Services Class 035. First use: Retail store services, on-line retail store services and mail order catalog services featuring sports-related clothing, hats, novelty items, gift items, and sports memorabilia

Attachments 74248556#TMSN.gif ( 1 page )( bytes ) 78801258#TMSN.jpeg ( 1 page )( bytes ) 78929571#TMSN.jpeg ( 1 page )( bytes ) Chicago_Blackhawk_Notice_of_Opposition.pdf ( 8 pages )(21862 bytes ) 77584449#TMSN.jpeg ( 1 page )( bytes )

Certificate of Service

The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address record by First Class Mail on this date.

Signature /S. Zev Parnass/ Name S. Zev Parnass Date 03/08/2010 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In the matter of trademark application Serial No. 77/739,725 Published in the Official Gazette on September 8, 2009 ______CHICAGO BLACKHAWK HOCKEY TEAM, : INC., : : Opposer, : Opposition No. ______: v. : NOTICE OF OPPOSITION : CHICAGO TRIBUNE COMPANY, : : Applicant. : ______:

Chicago Blackhawk Hockey Team, Inc., an Illinois corporation with its principal place of

business at 1901 West Madison Street, Chicago, Illinois 60612, believes that it will be damaged by registration of the mark shown in intent-to-use Application No. 77/739,725 filed by Chicago

Tribune Company (“Applicant”) for HAWKEY TOWN in connection with “Newspapers” (in

International Class 16), “Advertising, marketing and promotion services” (in International Class

35), and “Entertainment services, namely, providing a web site featuring photographic, video and prose presentations featuring sports” (in International Class 41) (the “Application”), and hereby opposes the same.

The grounds for opposition are as follows:

1. Opposer Chicago Blackhawk Hockey Team, Inc. (“Opposer”) is the owner of the well-known professional ice hockey team, the Chicago Blackhawks (the “Blackhawks”). The

Blackhawks have been a member club of the (“NHL”) since 1926 and have consistently attracted a large following, both in the United States and worldwide. The

Blackhawks have won the Stanley Cup Championship 3 times in their history.

2. Opposer is the owner of the following registrations on the Principal Register in the United States Patent and Trademark Office:

Mark Registration Filing Date/ Goods/Services Date of First Number Registration Use/First Use Date in Commerce BLACKHAWKS 893,052 May 26, 1969/ Entertainment services September June 16, 1970 in the nature of 25, 1926/ professional ice hockey September exhibitions. 25, 1926 BLACK HAWKS 1,959,134 February 21, Clothing, namely August 1992/ CHICAGO & 1992/ jerseys, T-shirts, August 1992 Design February 27, jackets, sweat shirts and 1996 caps. BLACKHAWKS 1,671,824 October 19, Clothing, namely, 1972/ 1990/ shirts, jerseys, sweaters, 1972 January 14, jackets, sweatshirts, T- 1992 shirts, pants, sweatpants, warm-up suits, shorts, caps, hats, socks, mittens and cloth bibs. HAWK TALK 1,708,836 November 8, Entertainment services April 1990/ 1991/ consisting of telephone April 1990 August 18, call-in services whereby 1992 members of the public may call a telephone number to hear information about applicant’s professional hockey team, interviews with members of applicant’s professional hockey team, hockey match scores, hockey match update information and the like; and radio programming consisting

2 of interviews with members of applicant’s professional hockey team, hockey match scores, hockey match update information and information about applicant’s professional hockey team. HAWKCAST 3,183,623 January 27, Downloadable August 29, 2006/ electronic audio and 2005/ December 12, video publications August 29, 2006 featuring news, 2005 information and interviews regarding the Chicago Blackhawks Hockey Team. HAWKVISION 1,779,861 November 8, Entertainment services February 24, 1991/ consisting of television 1992/ June 29, 1993 telecasts of professional February 25, hockey exhibitions and 1992 hockey related television programming. STREETHAWKS 2,043,639 April 26, 1996/ Organizing and October 3, March 11, administering 1995/ 1997 community based street October 3, hockey programs and 1995 competitions for youths. CHICAGO 3,335,075 July 14, 2006/ Charitable services, January 1, BLACKHAWK November 13, namely, charitable fund 1994/ CHARITIES & 2007 raising by conducting January 1, Design special events and 1994 providing aid through financial grants for youth, the homeless, ill or disabled and providing financial grants which support health programs for the same.

3 Opposer also is the owner of application Serial Number 77/584,449 for BLACKHAWKS

STORE for “Retail store services, on-line retail store services and mail order catalog services featuring sports-related clothing, hats, novelty items, gift items, and sports memorabilia” in

International Class 35, which was filed on October 2, 2008.

3. Opposer identifies itself and is known by the aforementioned marks, as well as the common law mark HAWKS and a family of related marks (collectively, the “Blackhawks

Marks”).

4. Opposer has been using the Blackhawks Marks for many years, and in some cases, for many decades, and long before the May 18, 2009, filing date of the Application, in connection with, among other things, (namely, ice hockey) services, including in connection with the advertising, marketing and promotion of such services. In addition, Opposer has been using the Blackhawks Marks in connection with a wide variety of related goods and services, including, among other things, publications, radio programming, and television telecasts.

5. The registrations referenced above are valid, subsisting, and in full force and effect, and the majority of the registrations are incontestable pursuant to the provisions of

Section 15 of the Lanham Act, 15 U.S.C. § 1065. The registrations referenced above constitute conclusive evidence (in the case of incontestable registrations) or prima facie evidence (in the case of those registrations that are not yet incontestable) of Opposer’s exclusive right to use the marks in commerce in connection with the goods and services specified in the registrations.

6. During their longstanding, widespread and continuous use of the Blackhawks

Marks, Opposer and its authorized business partners, sponsors, and licensees have expended

4 considerable time, effort and money in advertising and publicizing the sale of goods and services

bearing these marks. These marks are symbolic of the extensive goodwill and consumer

recognition that Opposer has established through substantial expenditures of time, effort and

other resources in the advertising and promotion of the goods and services Opposer offers and

sells under these marks.

7. On May 18, 2009, Applicant filed the Application, on an intent-to-use basis, to

register the mark HAWKEY TOWN (no allegation of use has yet been filed). This filing took

place just one day after the first game of the NHL’s Western Conference Finals between the

Blackhawks and the (“Red Wings”), a fellow NHL member club and a

historic rival of the Blackhawks.

8. The Red Wings are also known by the trademark HOCKEYTOWN and its owner,

Detroit Red Wings, Inc., maintains federal trademark registrations for that mark. Based on,

among other things, the timing of the Application, it is apparent that Applicant derived its

HAWKEY TOWN designation by integrating the Blackhawks’ HAWKS trademark into the Red

Wings’ registered trademark HOCKEYTOWN.

9. The goods and services set forth in the Application are closely related to the

goods and services in connection with which Opposer has registered and uses the Blackhawks

Marks.

10. Based on the similarities of the parties’ respective marks and goods/services, the public is likely to falsely associate Applicant’s goods or services under the HAWKEY TOWN designation with Opposer or with Opposer’s goods or services, falsely believe that Applicant’s

5 goods or services emanate from or are sponsored, endorsed or licensed by Opposer, or falsely believe that there is some relationship between Applicant and Opposer.

11. Applicant’s Application and the presumption of exclusivity that would arise from a registration to Applicant of the HAWKEY TOWN designation are inconsistent with Opposer’s prior rights in the Blackhawks Marks and the rights flowing from Opposer’s federal trademark registrations for the Blackhawks Marks.

12. 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 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.

13. Opposer believes it will be damaged by registration of Applicant’s HAWKEY

TOWN designation under Section 13 of the Lanham Act, 15 U.S.C. § 1063, on the ground that

Applicant’s use and registration of the subject designation will falsely suggest a connection between Applicant and Opposer to the damage of Opposer, in violation of Section 2(a) of the

Lanham Act, 15 U.S.C. § 1052(a).

14. Opposer believes it will be damaged by registration of Applicant’s HAWKEY

TOWN designation under Section 13 of the Lanham Act, 15 U.S.C. § 1063, on the ground that the subject designation so resembles the Blackhawks Marks used by Opposer in the United

States as to be likely, when used on or in connection with the goods/services identified in the application for HAWKEY TOWN, 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).

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

HAWKEY TOWN shown in Application Serial No. 77/739,725 and respectfully requests that the Opposition be sustained, registration of said mark be denied, and that the Trademark Trial and Appeal Board grant such other and further relief as it deems just and appropriate.

Payment has been provided in the requisite amount to cover the statutory filing fee for filing a Notice of Opposition. All communications should be addressed to Opposer’s counsel,

Debevoise & Plimpton, LLP, at the below stated address.

Dated: March 8, 2010 Respectfully submitted,

By: /S. Zev Parnass/ David H. Bernstein S. Zev Parnass Debevoise & Plimpton LLP 919 Third Avenue New York, New York 10022 Tel: (212) 909-6000 Fax: (212) 909-6896

Attorneys for Opposer Chicago Blackhawk Hockey Team, Inc.

7 CERTIFICATE OF SERVICE

I hereby certify that a copy of the foregoing Notice of Opposition has been sent via first class mail (certified and return receipt requested), postage prepaid, on this 8th day of March,

2010 to:

Salvador K. Karottki 435 N. Michigan Ave. Chicago, IL 60611-4066

Attorney of Record for Applicant

/S. Zev Parnass/ S. Zev Parnass

8