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Notice of Opposition Opposer Information Applicant Information 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 ICE HOCKEY 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 television 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 National Hockey League (“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
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