Notice of Opposition Opposer Information Applicant Information
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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1039693 Filing date: 03/03/2020 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 party opposes registration of the indicated application. Opposer Information Name Nightmare Productions, Inc. Granted to Date 03/04/2020 of previous ex- tension Address 1000 4TH STREET, SUITE 375 SAN RAFAEL, CA 94901 UNITED STATES Attorney informa- DANIEL J. SCHACHT, ANDREW S. MACKAY, AND PADMINI CHERUVU tion DONAHUE FITZGERALD LLP 1999 HARRISON STREET, 26TH FLOOR OAKLAND, CA 94612 UNITED STATES [email protected], [email protected], [email protected], [email protected] 5104513300 Applicant Information Application No 88250911 Publication date 11/05/2019 Opposition Filing 03/03/2020 Opposition Peri- 03/04/2020 Date od Ends International Re- NONE International Re- NONE gistration No. gistration Date Applicant Schon Productions, Inc. 4640 Admiralty Way, Suite 500 Marina Del Rey, CA 90292 UNITED STATES Goods/Services Affected by Opposition Class 009. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Digital media, namely, pre-recorded CDs, pre-recorded DVDs, and downloadable audio and video recordings, featuring music; Audio and visual recordings featuringmusic and live performances Class 014. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Necklaces; Bracelets; Rings; Key chains Class 025. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: T-Shirts; Long-sleeved shirts; Tank tops; Sweaters; Jackets; Hooded sweatshirts; Hats; Headwear, namely, caps; Beanies Class 041. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Entertainment services in the nature oflive musical performances Grounds for Opposition Priority and likelihood of confusion Trademark Act Section 2(d) Dilution by blurring Trademark Act Sections 2 and 43(c) Marks Cited by Opposer as Basis for Opposition U.S. Registration 3168509 Application Date 12/20/2005 No. Registration Date 11/07/2006 Foreign Priority NONE Date Word Mark JOURNEY Design Mark Description of NONE Mark Goods/Services Class 041. First use: First Use: 1975/12/31 First Use In Commerce: 1975/12/31 Entertainment namely, live performancesby a musical band U.S. Registration 3189220 Application Date 12/20/2005 No. Registration Date 12/26/2006 Foreign Priority NONE Date Word Mark JOURNEY Design Mark Description of NONE Mark Goods/Services Class 009. First use: First Use: 1975/12/31 First Use In Commerce: 1975/12/31 Musical sound recordings; and pre-recorded compact discs, audio cassettes, videotapes and laser discs, all featuring music Attachments 78777366#TMSN.png( bytes ) 78777185#TMSN.png( bytes ) Notice of Opposition.pdf(1290397 bytes ) Signature /Padmini Cheruvu/ Name DANIEL J. SCHACHT, ANDREW S. MACKAY, AND PADMINI CHERUVU Date 03/03/2020 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD In the matter of application Serial No. 88/250,911 For the Trademark: NEAL SCHON JOURNEY THROUGH TIME Published in the Official Gazette on November 5, 2019 Nightmare Productions, Inc., Opposer, Opposition No.: v. Schon Productions, Inc., Applicant. NOTICE OF OPPOSITION Nightmare Productions, Inc., a corporation organized under the laws of California whose business address is 1000 4th Street, Suite 375, San Rafael, California 94901 (“Opposer”) and intellectual property holder for the band Journey (“Journey”), believes that it will be damaged by registration of the word mark NEAL SCHON JOURNEY THROUGH TIME (“Applicant’s Mark”), Application Serial No. 88/250,911, filed on behalf of Schon Productions, Inc., a California corporation located at 4640 Admiralty Way, Suite 500, Marina Del Rey, California 90292 (“Applicant”). This Opposition is properly and timely filed, as Applicant’s Mark was published in the Official Gazette on November 5, 2019, and Opposer filed a 90-day Request to Extend Time to Oppose, which was granted on December 4, 2019 and extended Opposer’s time to oppose to March 4, 2020. As grounds of opposition, Opposer alleges that: 1. Opposer is the owner of the U.S. Trademark Registrations listed below Notice of Opposition Application No. 88/250,911 Mark: NEAL SCHON JOURNEY THROUGH TIME 1 (“Opposer’s Marks”). Attached as Exhibit A are true and correct copies of the registrations of Opposer’s Marks. a) Registration No. 3,168,509 (“‘509 Registration”) for the word mark JOURNEY in International Class 41 for “Entertainment namely, live performances by a musical band” (“‘509 Services”) registered on November 7, 2006; b) Registration No. 3,189,220 (“‘220 Registration” and collectively with 509 Registration, “Opposer’s Registrations”) for the word mark JOURNEY in International Class 9 for “Musical sound recordings; and pre-recorded compact discs, audio cassettes, videotapes and laser discs, all featuring music” (“‘220 Goods”) registered on December 26, 2006; 2. In addition, Opposer owns common law rights in its Opposer’s Marks, and the marks incorporate JOURNEY in connection with other goods such as jewelry, key fobs, glasses, stickers, posters, bags, clothing and apparel (“Opposer’s Other Goods” and collectively with 509 Services, and 220 Goods, “Opposer’s Goods and Services”). Attached as Exhibit B, and incorporated by reference as though fully set forth herein, are webpage screen examples of Opposer’s common law use of Opposer’s Marks. 3. Opposer’s Marks are subsisting and not abandoned. 4. Opposer has continuously used Opposer’s Marks in interstate commerce since at least as early as 1975. 5. Opposer, along with its authorized licensees and sublicesees, has invested time, money, and effort in marketing, advertising, and promotion of Opposer’s Marks in connection with the sale of Opposer’s Goods and Services. 6. As a consequence of Opposer’s long and continuous use, and its and its authorized licensees’ and sublicesees’ investment in marketing, advertising, and promotion of Opposer’s Marks in connection with Opposer’s Goods and Services, Opposer’s Marks have acquired a high degree of distinctiveness indicating source in Opposer, and Opposer has Notice of Opposition Application No. 88/250,911 Mark: NEAL SCHON JOURNEY THROUGH TIME 2 established significant and valuable goodwill in Opposer’s Marks. 7. Opposer’s Marks are highly distinctive with regard to, by way of example, live musical performances, musical recordings, apparel and other accessories. Moreover, through Journey’s widespread use of Opposer’s Marks, extensive and continuous media coverage, the high degree of consumer recognition of Opposer’s Marks, Journey’s enormous and loyal fans and consumer base, Opposer’s incontestable trademark registrations, common law use, and other factors, Opposer’s Marks have become famous within the meaning of Section 43(c) of the United States Trademark Act, 15 U.S.C. § 1125(c). Opposer’s Marks emerged on the world-wide stage in 1973 in connection with Journey, an American rock band. Journey’s commercial success was highlighted by its 1981 hit “Don’t Stop Believin” which by 2005 reached number three on iTunes downloads, and later in 2009 became the top-selling track in iTunes history among songs released in the prior millennium. The band’s success has resulted in eight multi-platinum albums, two gold albums, eighteen Top 40 singles in the US, and hits on Billboard and UK Singles Charts. Under Opposer’s Marks, the band has sold tens of millions of records and reached millions of fans at concerts and music festivals worldwide. Journey’s 2019 co-headlining tour with Def Leppard sold over one million tickets and grossed nearly $100 million, according to figures reported by Billboard Boxscore. Journey was inducted into the Rock and Roll Hall of Fame in 2017. 8. In 1992, Journey released a CD box set called “Journey Time3,” which includes three CDs and a 63-page booklet that showcase the history of Journey through time from 1975 to 1992 (“Opposer’s Album”). Attached as Exhibit C, and incorporated by reference as though fully set forth herein, is a screenshot of Journey’s website showing and describing Opposer’s Album. 9. Applicant’s CEO, Neal Schon, is the co-founder and lead guitarist of Journey. The only consistent member of the band since it was created in 1973, Mr. Schon has been a member of the band for 46 years, substantially longer than any of the other members of Journey. As a result of his long and consistent career with Journey, Mr. Schon has become synonymous Notice of Opposition Application No. 88/250,911 Mark: NEAL SCHON JOURNEY THROUGH TIME 3 with Journey to the band’s enormous and loyal fans and consumer base. Mr. Schon was inducted into the Rock and Roll Hall of Fame as a member of Journey in 2017. 10. Applicant applied to register Applicant’s Mark on January 5, 2019, Application Serial No. 88/250,911 (“Applicant’s Application”), in International Class 9 for “Digital media, namely, pre-recorded CDs, pre-recorded DVDs, and downloadable audio and video recordings, featuring music; Audio and visual recordings featuring music and live performances;” International Class 14 for “Necklaces; Bracelets; Rings; Key chains;” International Class 25 for “T-Shirts; Long-sleeved shirts; Tank tops; Sweaters; Jackets; Hooded sweatshirts; Hats; Headwear, namely, caps; Beanies;” and International Class 41 for “Entertainment services in the nature of live musical performances” (“Applicant’s Goods and Services”). 11. Applicant’s initially applied for registration of Applicant’s Mark on the following basis: (1) section 1(b) intent to use; and (2) section 44(d) foreign application. In his September 10, 2019 response to an office action issued by the USPTO, Applicant withdrew his section 44(d) basis for filing and stated that he “does not intend to rely on Section 44(e) as the basis for registration.” As such, Applicant’s Application is solely an intent-to-use application.