Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA841480 Filing date: 08/23/2017 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 Crowhaven Productions, LLC Granted to Date 08/23/2017 of previous ex- tension Address 5803 Skylane Blvd., Ste C Windsor, CA 95492 UNITED STATES
Attorney informa- Warren L. Dranit tion Spaulding McCullough & Tansil LLP 90 South E Street Suite 200 Santa Rosa, CA 95404 UNITED STATES Email: [email protected] Phone: 707 524 1900 Applicant Information
Application No 87245127 Publication date 04/25/2017 Opposition Filing 08/23/2017 Opposition Peri- 08/23/2017 Date od Ends Applicant Currie, James 708 Gravenstien Hwy. N. #59 Sebastopol, CA 95472 UNITED STATES Goods/Services Affected by Opposition
Class 041. First Use: 2010/01/01 First Use In Commerce: 2010/01/01 All goods and services in the class are opposed, namely: Entertainment services in the nature ofpro- duction of a television show Applicant Information
Application No 87281506 Publication date 05/09/2017 Opposition Filing 08/23/2017 Opposition Peri- Date od Ends Applicant Currie, James 708 Gravenstien Hwy. N. #59 Sebastopol, CA 95472 UNITED STATES Goods/Services Affected by Opposition Class 041. First Use: 2011/01/01 First Use In Commerce: 2011/01/01 All goods and services in the class are opposed, namely: Entertainment services, namely, a continu- ing horror show broadcast over television and the internet Grounds for Opposition
The mark is merely descriptive Trademark Act Section 2(e)(1) The mark is generic Trademark Act Sections 1, 2 and 45 The mark is not inherently distinctive and has not Trademark Act Sections 1, 2 and 45; and Section acquired distinctiveness 2(f) Other No lawful use of designation in commerce (Trademark Act Section 1). Designations are merely informational matter (Trademark Act Sec- tion 1).
Attachments Notice of Opposition - Creature Features.pdf(209652 bytes )
Signature /wld/ Name Warren L. Dranit Date 08/23/2017 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
In the matter of Application Serial No. 87245127 For the mark: CREATURE FEATURES Published in the Official Gazette on April 25, 2017
In the matter of Application Serial No. 87281506 For the mark: WATCH HORROR FILMS KEEP AMERICA STRONG! Published in the Official Gazette on May 9, 2017
CROWHAVEN PRODUCTIONS LLC,
Opposer, Opposition No. ______
v.
JAMES CURRIE
Applicant.
NOTICE OF OPPOSITION
Crowhaven Productions LLC, a limited liability company organized and existing
under the laws of the State of California, (hereinafter "Opposer" or “Crowhaven
Productions”) believes it will be damaged by registration on the Principal Register of the mark CREATURE FEATURES (Ser. No. 87245127) and the mark WATCH HORROR
FILMS KEEP AMERICA STRONG! (Ser. No. 87281506), and hereby opposes the same.
As grounds of opposition it is alleged that:
1. Since the 1960s, broadcasters throughout the United States and the world have
broadcast a genre of show referred to as “Creature Features” where the host of the
-1- show plays a known horror, fantasy or science fiction movie and provides
commentary about the movie, either individually or along with guests on the show.
2. On information and belief, the Creature Features genre of shows have been broadcast
in many locations throughout the United States including, without limitation, the
following cities:
a. WNEW-Channel 5 (New York City)
b. WKBG-Channel 56 (Boston)
c. WUTV-Channel 29 (Buffalo)
d. WKBS-Channel 48 (Philadelphia)
e. WGN-Channel 9 and WFLD-Channel 32 (Chicago)
f. KBSI-Channel 23 (Cape Girardeau,Missouri)
g. WTOG-Channel 44 (Tampa/St.Petersburg)
h. WCIX-Channel 6 (Miami/Ft. Lauderdale)
i. KTVU-Channel 2 (Oakland)
j. WDCA-Channel 20 (Washington, D.C.)
k. KMTV-Channel 3 (Omaha)
l. WQAD-Channel 8 (Quad Cities)
m. KSHB-Channel 41 (Kansas City)
n. WSJV-Channel 28 (South Bend, Indiana)
o. WKBD-Channel 50 (Detroit)
3. Current “Creature Features” programming includes, without limitation, the following:
a. WGN-TV – Channel 9 (Chicago)
b. WOWT – NBC –Channel 6 (Omaha) Dr. Sanguninary
-2- c. OSI74 – (North Carolina) Ormon Gromsby
d. OSI74 – (Missouri) Misty Brew
e. Vimeo – (Washington DC) Count Gore De Vol
f. KOFY – Channel 20 (San Francisco)
g. IFC Films – IFC Midnight (Cable)
h. PBS – Nationwide – PBS Kids – Chris & Martin
i. ABC27 – Channel 27 (Harrisburg) Weekly news special
4. The Creature Features genre is one of the most popular formats for horror shows in
the United States. Creature Features programming has been televised in almost 100
cities nationwide, throughout the 1960s to the 1990s, with more than 6,000 broadcasts
aired, and more than 4,500 movies shown. This makes Creature Features
programming the most prolific horror show format in U.S. television history.
5. In the 1970s, the Creature Features production on Channel 2 in Oakland, CA was
hosted by Bob Wilkins. Mr. Wilkins’ show was successful and built a large audience
in Northern California. For many consumers of horror, fantasy and science-fiction
movies, Mr. Wilkins remains associated with the Creature Features genre.
6. For the show, Mr. Wilkins coined the phrase: WATCH HORROR FILMS, KEEP
AMERICA STRONG! It was a key element of the production including a sign which
was regularly viewable by the audience:
-3- This slogan was, and remains, associated by consumers with the Creature Features
genre.
7. Both CREATURE FEATURES and WATCH HORROR FILMS KEEP AMERICA
STRONG! continue to be well known to consumers of horror, fantasy and science
fiction shows as a designation for a genre or type of entertainment production.
8. Consistent with this ongoing popularity, in 2008 a documentary was created about the
Creature Features genre of programming with a focus on Mr. Wilkins and his show
broadcast from Oakland, California. The title of the documentary is "Watch Horror
Films, Keep America Strong! - A Journey Into Creature Feature" and features
interviews with Mr. Wilkins and other key figures close to the show, as well as
classic clips:
The documentary continues to be regularly broadcast to this day.
9. Opposer Crowhaven Productions is a company based in Windsor, California that
produces a wide variety of entertainment programming.
-4- 10. Since 2016, Crowhaven Productions has been producing a series of shows that are
broadcast on television and available for streaming on the internet where
CREATURE FEATURES and WATCH HORROR FILMS KEEP AMERICA
STRONG! is used to describe the program it broadcasts to viewers. Use of each of
these terms or phrases allows consumers of horror, fantasy and science fiction shows
to readily identify the nature and format of the programming.
11. That is, along with other broadcast channels and the many fans of the genre
throughout the United States, Crowhaven Productions uses both CREATURE
FEATURES and WATCH HORROR FILMS KEEP AMERICA STRONG! to
describe and identify its programming.
12. On information and belief, James Currie is an individual living in Sonoma County,
California, with a mailing address of 708 Gravenstien Hwy. N. #59, Sebastopol,
California 95472 (“Applicant”).
13. On November 22, 2016, Applicant filed an application to register CREATURE
FEATURES on the U.S. Principal Register for use in connection with “Entertainment
services in the nature of production of a television show” (the “CF Application”).
The CF Application has been assigned Serial No. 87245127.
14. On December 27, 2016, Applicant filed an application to register WATCH HORROR
FILMS KEEP AMERICA STRONG! on the U.S. Principal Register for use in
connection with “Entertainment services, namely, a continuing horror show broadcast
over television and the internet” (the “WHF Application”). The WHF Application
has been assigned Serial No. 87281506.
-5- 15. The CF Application and the WHF Application are collectively referred to as
“Applicant’s Applications” in this Notice of Opposition.
16. Applicant is using both the CREATURE FEATURES designation and the WATCH
HORROR FILMS KEEP AMERICA STRONG! designation in connection with a
production that follows the Creature Features genre of productions (collectively,
“Applicant’s Programming”).
17. The CF Application was published for opposition on April 25, 2017.
18. Opposer timely obtained two extensions of time to oppose the CF Application. The
deadline to oppose was extended to August 23, 2017.
19. The WHF Application was published for opposition on May 9, 2017.
20. Opposer timely obtained two extensions of time to oppose the CF Application. The
deadline to oppose was extended to September 6, 2017.
21. Opposer has timely filed the instant opposition against Applicant’s Applications.
Applicant’s Designations are Generic 15 U.S.C. §1052(e)(1)
22. Opposer repeats and re-alleges each and every allegation contained in paragraphs 1-
21, inclusive, as if fully recited in this paragraph.
23. On information and belief, both CREATURE FEATURES and WATCH HORROR
FILMS KEEP AMERICA STRONG!, both individually and together, have a readily
apparent meaning of identifying a genre of show.
24. On information and belief, CREATURE FEATURES and WATCH HORROR
FILMS KEEP AMERICA STRONG! are each perceived by the relevant consuming
public, namely, those who watch horror, fantasy or science fiction movies, as a
generic name for a type of entertainment production.
-6- 25. On information and belief, CREATURE FEATURES and WATCH HORROR
FILMS KEEP AMERICA STRONG! are each generic and are not capable of
functioning as a designation of source.
26. Because both of Applicant’s designations are generic and do not function as a mark,
each of Applicant’s Applications should be refused registration.
27. Opposer will be damaged if either the CF Application or the WHF Application is
allowed to register in that such registration will support and assist Applicant in
preventing Opposer from using the generic term or phrase CREATURE FEATURES
and WATCH HORROR FILMS KEEP AMERICA STRONG!, and will give
impermissible, colorable, exclusive, statutory rights to Applicant or a potential
assignee in violation of the Lanham Act and in derogation of the rights of Opposer to
be allowed to use such a generic term or phrase to accurately describe or reference its
own services.
Applicant’s Designations Are Merely Descriptive and Have Not Acquired Distinctiveness 15 U.S.C. §1052(e)(1)
28. Opposer repeats and re-alleges each and every allegation contained in paragraphs 1-
27, inclusive, as if fully recited in this paragraph.
29. On information and belief, CREATURE FEATURES and WATCH HORROR
FILMS KEEP AMERICA STRONG!, if not generic as Opposer alleges, is merely
descriptive because CREATURE FEATURES and WATCH HORROR FILMS
KEEP AMERICA STRONG! each immediately convey knowledge of a quality,
feature, function, purpose or characteristic of Applicant’s services to the consumer,
namely, that Applicant’s services are a type or kind of entertainment production
-7- where the host of the show plays a known existing horror, fantasy or science fiction
movie and provides commentary about the movie, either individually or along with
guests on the show.
30. On information and belief, CREATURE FEATURES and WATCH HORROR
FILMS KEEP AMERICA STRONG! are descriptive of Applicant’s services, if not
generic.
31. On information and belief, neither of Applicant’s designations has acquired
distinctiveness as a mark.
32. On information and belief, neither of Applicant’s designations has acquired
distinctiveness as a mark through “substantially exclusive and continuous use in
commerce.”
33. Opposer will be damaged if either the CF Application or the WHF Application is
allowed to register in that each such registration will support and assist Applicant in
preventing Opposer from using the generic term or phrase CREATURE FEATURES
and WATCH HORROR FILMS KEEP AMERICA STRONG!, and will give
impermissible, colorable, exclusive, statutory rights to Applicant or a potential
assignee in violation of the Lanham Act and in derogation of the rights of Opposer to
be allowed to use such a generic term or phrase to accurately describe or reference its
own services.
Applicant’s Designations Are Merely Informational Matter 15 U.S.C. §1051
34. Opposer repeats and re-alleges each and every allegation contained in paragraphs 1-
33, inclusive, as if fully recited in this paragraph.
-8- 35. On information and belief, CREATURE FEATURES and WATCH HORROR
FILMS KEEP AMERICA STRONG!, if not generic as Opposer alleges, is merely
information matter because the wording for both CREATURE FEATURES and
WATCH HORROR FILMS KEEP AMERICA STRONG! will be perceived as
imparting general information about Applicant’s services rather than as indicating
source and distinguishing Applicant’s services from those of others. Specifically,
each term or phrase conveys to the consumer that Applicant’s services are an
entertainment production where the host of the show plays a known existing horror,
fantasy or science fiction movie and provides commentary about the movie, either
individually or along with guests on the show.
36. Opposer will be damaged if either the CF Application or the WHF Application is
allowed to register in that each such registration will support and assist Applicant in
preventing Opposer from using the generic term or phrase CREATURE FEATURES
and WATCH HORROR FILMS KEEP AMERICA STRONG!, and will give
impermissible, colorable, exclusive, statutory rights to Applicant or a potential
assignee in violation of the Lanham Act and in derogation of the rights of Opposer to
be allowed to use such a generic term or phrase to accurately describe or reference its
own services.
Applicant Has Not Used Its Designations in Lawful Commerce 15 U.S.C. §1051
37. Opposer repeats and re-alleges each and every allegation contained in paragraphs 1-
36, inclusive, as if fully recited in this paragraph.
38. On information and belief, Applicant has not used CREATURE FEATURES and
WATCH HORROR FILMS KEEP AMERICA STRONG! in lawful commerce.
-9- Specifically, Opposer is informed and believes that Applicant was often not
authorized to broadcast the horror, fantasy or science fiction movie used in
connection with Applicant’s Programming.
39. For example, Opposer is informed and believes the following are termination notices
associated with YouTube channels that were used for Applicant’s Programming:
-10- 40. Applicant’s failure to use the designations in lawful commerce prevents him from
acquiring trademark rights.
41. Opposer will be damaged if either the CF Application or the WHF Application is
allowed to register in that each such registration will support and assist Applicant
in preventing Opposer from using the generic term or phrase CREATURE
FEATURES and WATCH HORROR FILMS KEEP AMERICA STRONG!, and
will give impermissible, colorable, exclusive, statutory rights to Applicant or a
potential assignee in violation of the Lanham Act and in derogation of the rights
of Opposer to be allowed to use such a generic term or phrase to accurately
describe or reference its own services.
WHEREFORE, Opposer requests that registration of the mark CREATURE
FEATURES (Ser. No. 87245127) and the mark WATCH HORROR FILMS KEEP
AMERICA STRONG! (Ser. No. 87281506) be denied and that this opposition be sustained.
Respectfully submitted,
Dated: August 23, 2017 SPAULDING MCCULLOUGH & TANSIL LLP
By: /wld/ Warren L. Dranit Spaulding McCullough & Tansil LLP 90 South E Street, Suite 200 Santa Rosa, CA 95402 t: (707) 524-1900 f: (707) 524-1906 e: [email protected]
-11-