Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1010665 Filing date: 10/23/2019

IN THE 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 IMG Universe, LLC Granted to Date 10/23/2019 of previous ex- tension Address 11 MADISON AVENUE , NY 10010 UNITED STATES

Attorney informa- ANDREA L. CALVARUSO tion KELLEY DRYE & WARREN LLP 101 PARK AVENUE NEW YORK, NY 10178 UNITED STATES [email protected] 2128087800

Applicant Information

Application No 88280941 Publication date 06/25/2019 Opposition Filing 10/23/2019 Opposition Peri- 10/23/2019 Date od Ends Applicant TRUNG TAM MY LIEN HUONG USA, LLC 6021 SUNDIAL CREST CT , NV 89120 UNITED STATES Goods/Services Affected by Opposition

Class 041. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Entertainment in the nature of beauty pa- geants 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 620557 Application Date 07/19/1952 No. Registration Date 01/31/1956 Foreign Priority NONE Date Word Mark Design Mark

Description of NONE Mark Goods/Services Class U101 (International Class 035, 036, 038, 041, 042). First use: First Use: 1950/10/01 First Use In Commerce: 1950/10/01 PROMOTING THE SALE OF GOODS AND SERVICES BY OTHERS THROUGH THE MEDIUM OF A BEAUTY CONTEST CONDUCTED ON A NA- TIONAL AND REGIONAL BASIS

U.S. Registration 720283 Application Date 11/25/1958 No. Registration Date 08/22/1961 Foreign Priority NONE Date Word Mark MISS UNIVERSE Design Mark Description of NONE Mark Goods/Services Class 028. First use: First Use: 1958/10/29 First Use In Commerce: 1958/10/29 Dolls

U.S. Registration 1146211 Application Date 01/31/1979 No. Registration Date 01/20/1981 Foreign Priority NONE Date Word Mark MISS UNIVERSE Design Mark Description of NONE Mark Goods/Services Class 025. First use: First Use: 1978/06/01 First Use In Commerce: 1978/06/01 [(( LADIES' BLOUSES, ))] SHIRTS,[ (( BATHING SUITS,] SHOES, [BEACH JACKETS, PANTS, ] SWEATERS,[ SKIRTS, ))] T-SHIRTS [,(( SLIPS, PETTI- COATS, NIGHTGOWNS, ROBES, GLOVES, HOSIERY, AND PANTIES ))]

U.S. Registration 1182063 Application Date 03/07/1980 No. Registration Date 12/15/1981 Foreign Priority NONE Date Word Mark MISS UNIVERSE Design Mark Description of NONE Mark Goods/Services Class 016. First use: First Use: 1952/06/00 First Use In Commerce: 1952/06/00 Magazine Concerning the Schedule and Participants in Beauty Pageants

U.S. Registration 1597876 Application Date 10/13/1989 No. Registration Date 05/22/1990 Foreign Priority NONE Date Word Mark MISS UNIVERSE Design Mark Description of NONE Mark Goods/Services Class 041. First use: First Use: 1950/10/01 First Use In Commerce: 1950/10/01 ENTERTAINMENT SERVICES - NAMELY, PRESENTATION OF PAGEANTS AND CONTESTS

U.S. Registration 3796093 Application Date 09/27/2007 No. Registration Date 06/01/2010 Foreign Priority NONE Date Word Mark MISS UNIVERSE GUAM Design Mark

Description of NONE Mark Goods/Services Class 041. First use: First Use: 2009/03/00 First Use In Commerce: 2009/03/00 Entertainment services in the nature ofbeauty pageants

U.S. Registration 3894421 Application Date 10/01/2008 No. Registration Date 12/21/2010 Foreign Priority NONE Date Word Mark MISS UNIVERSE U.S. VIRGIN ISLANDS Design Mark

Description of NONE Mark Goods/Services Class 041. First use: First Use: 2010/06/06 First Use In Commerce: 2010/06/06 Entertainment services in the nature ofbeauty pageants

U.S. Registration 4063798 Application Date 07/22/2009 No. Registration Date 11/29/2011 Foreign Priority NONE Date Word Mark MISS CONGENIALITY UNIVERSE Design Mark

Description of NONE Mark Goods/Services Class 041. First use: First Use: 2011/09/08 First Use In Commerce: 2011/09/08 Entertainment services in the nature ofbeauty pageants

U.S. Registration 4698910 Application Date 06/26/2014 No. Registration Date 03/10/2015 Foreign Priority NONE Date Word Mark MISS UNIVERSE Design Mark

Description of NONE Mark Goods/Services Class 003. First use: First Use: 2014/04/22 First Use In Commerce: 2014/04/22 Hair care preparations, namely, hair gels, hair sprays, hair shampoo and condi- tioner; dry shampoo, hair blow-dry spray,hair shine spray, hair care oils, hair mousse, hair curling preparations, hair straightening preparations Class 008. First use: First Use: 2014/04/22 First Use In Commerce: 2014/04/22 Electric irons for styling hair, namely, curling irons, flat irons, straightening irons; hair waving implements, volumizing irons Class 011. First use: First Use: 2014/04/22 First Use In Commerce: 2014/04/22 Electric hair blow dryers, hand-held electric hair blow dryers, and hair dryer dif- fusers

U.S. Application 87685323 Application Date 11/15/2017 No. Registration Date NONE Foreign Priority NONE Date Word Mark MRS. UNIVERSE Design Mark

Description of NONE Mark Goods/Services Class 041. First use: First Use: 0 First Use In Commerce: 0 Entertainment in the nature of beauty pageants

U.S. Application 88488569 Application Date 06/25/2019 No. Registration Date NONE Foreign Priority NONE Date Word Mark MISS TEEN UNIVERSE Design Mark

Description of NONE Mark Goods/Services Class 041. First use: First Use: 0 First Use In Commerce: 0 Entertainment services in the nature ofbeauty pageants

Attachments 71632789#TMSN.png( bytes ) 77290472#TMSN.png( bytes ) 77583483#TMSN.png( bytes ) 77786978#TMSN.png( bytes ) 86320916#TMSN.png( bytes ) 87685323#TMSN.png( bytes ) 88488569#TMSN.png( bytes ) MISS-MRS-MISTER-TRANSGENDER CHARM UNIVERSE BEAUTY PA- GEANT Notice of Opposition.pdf(62530 bytes )

Signature /Andrea L. Calvaruso/ Name Andrea L. Calvaruso Date 10/23/2019

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

IN THE MATTER OF TRADEMARK APPLICATION SERIAL NO. 88/280,941 PUBLISHED IN THE OFFICIAL GAZETTE ON JUNE 25, 2019

MARK: MISS-MRS-MISTER-TRANSGENDER CHARM UNIVERSE

IMG UNIVERSE, LLC,

Opposer, OPPOSITION NO.: v.

TRUNG TAM MY LIEN HUONG USA, LLC,

Applicant.

NOTICE OF OPPOSITION

IMG Universe, LLC (“Opposer”) is a limited liability company organized under the laws

of Delaware with a principal place of business at 11 Madison Avenue, New York, New York

10010. Opposer believes it will be damaged by the registration of the mark MISS-MRS-MISTER-

TRANSGENDER CHARM UNIVERSE BEAUTY PAGEANT (the “Disputed Mark”) by

Applicant Trung Tam My Lien Huong USA, LLC (“Applicant”) for “Entertainment in the nature

of beauty pageants” in Class 41 (“Applicant’s Services”) covered by the above-identified

application (the “Application”) and, having been granted an extension of time to oppose up to and

including October 23, 2019, hereby opposes the same.

The grounds for opposition are as follows:

1. Since at least as early as 1950, Opposer and its predecessors-in-interest have used

the mark MISS UNIVERSE in connection with its world-famous beauty pageants and related

goods and services (collectively, “Opposer’s Goods and Services”).

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2. Opposer is an internationally prominent organizer and promoter of beauty pageants in the United States and throughout the world. Opposer widely advertises its pageants to the public throughout the United States by all means and types of advertising media, including but not limited to, newspapers, magazines, television, Internet, social media, trade publications and personal appearances of its titleholders. Opposer’s pageants are televised in the United States and throughout the world and it receives millions of dollars in revenue from telecast right fees, site fees and personal appearance fees.

3. In the annual MISS UNIVERSE beauty pageant, women from over 90 countries worldwide, including the United States, compete for the title MISS UNIVERSE. The winner of

Opposer’s national MISS USA pageant is selected to represent the United States in the MISS

UNIVERSE pageant. Opposer also licenses the use of the MISS UNIVERSE mark and variant marks, such as MISS UNIVERSE SPAIN, to its licensees in approximately 100 countries and territories worldwide who conduct pageants in their respective country to select the contestant who will represent that country in the international MISS UNIVERSE pageant. In 2018, Angela Ponce, the contestant selected to represent Spain, became the first transgender woman to compete for the title of MISS UNIVERSE. Ms. Ponce’s participation in the 2018 MISS UNIVERSE pageant was the subject of significant unsolicited media and press attention in the United States and worldwide praising her representation.

4. Opposer and its predecessors-in-interest have continuously and prominently used

MISS UNIVERSE and other MISS UNIVERSE variant marks since their adoption in connection with beauty pageants and related goods and services, and many are the subject of federal trademark registrations, including without limitation the following registrations on the Principal Register,

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which are hereafter collectively referred to together with Opposer’s common law rights as the

“MISS UNIVERSE Marks”:

a. Registration No. 620,557 for MISS UNIVERSE for “promoting the sale of goods and services by others through the medium of a beauty contest conducted on a national and regional basis” in Class 35, which issued January 31, 1956 and has achieved incontestable status;

b. Registration No. 720,283 for MISS UNIVERSE for “dolls” in Class 28, which issued August 22, 1961 and has achieved incontestable status;

c. Registration No. 1,146,211 for MISS UNIVERSE for “magazine concerning the schedule and participants in beauty pageants” in Class 16, which December 15, 1981 and has achieved incontestable status;

d. Registration No. 1,182,063 for MISS UNIVERSE for “shirts, shoes, sweaters, t- shirts” in Class 25, which January 20, 1981 and has achieved incontestable status;

e. Registration No. 1,597,876 for MISS UNIVERSE for “entertainment services namely, presentation of pageants and contests” in Class 41, which May 22, 1990 and has achieved incontestable status;

f. Registration No. 3,796,093 for MISS UNIVERSE GUAM for “entertainment services in the nature of beauty pageants” in Class 41, which issued June 1, 2010 and has achieved incontestable status;

g. Registration No. 3,894,421 for MISS UNIVERSE U.S. VIRGIN ISLANDS for “entertainment services in the nature of beauty pageants” in Class 41, which issued December 21, 2010 and has achieved incontestable status;

h. Registration No. 4,063,798 for MISS CONGENIALITY UNIVERSE for “entertainment services in the nature of beauty pageants” in Class 41, which issued November 29, 2011 and has achieved incontestable status;

i. Registration No. 4,698,910 for MISS UNIVERSE for “hair care preparations, namely, hair gels, hair sprays, hair shampoo and conditioner; dry shampoo, hair blow-dry spray, hair shine spray, hair care oils, hair mousse, hair curling preparations, hair straightening preparations” in Class 3; “electric irons for styling hair, namely, curling irons, flat irons, straightening irons; hair waving implements, volumizing irons” in Class 8; and “electric hair blow dryers, hand-held electric hair blow dryers, and hair dryer diffusers” in Class 11, which issued on March 10, 2015.

j. Application Serial No. 87/685,323 for MRS. UNIVERSE for “entertainment in the nature of beauty pageants” in Class 41, which was filed on November 15, 2017; and

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k. Application Serial No. 88/488,569 for MISS TEEN UNIVERSE for “entertainment services in the nature of beauty pageants” in Class 41, which was filed on June 25, 2019.

5. The registrations listed above are valid and subsisting, are in full force and effect, and are owned by Opposer.

6. Pageants organized and promoted by Opposer in connection with Opposer’s MISS

UNIVERSE Marks, by reason of their quality and professionalism, have come to be known to the

public in the United States and throughout the world as being expertly presented under the best

production conditions.

7. By virtue of Opposer’s longstanding use, advertisement, and promotion of the

MISS UNIVERSE Marks and the goods and services they designate, these marks have developed

enormous reputation and goodwill in the trade and among consumers, and are exclusively

associated in the mind of the public with Opposer’s Goods and Services. As a result of Opposer’s

extensive use and promotion of the marks for nearly seventy years, Opposer’s MISS UNIVERSE

Marks and the goodwill associated with Opposer’s pageants are of inestimable value to Opposer,

and the MISS UNIVERSE Marks have acquired distinctiveness and become famous as a matter of

law.

8. On January 29, 2019, Applicant filed Application Serial No. 88/280,941 based

upon its alleged intent to use the Disputed Mark for “Entertainment in the nature of beauty

pageants” in Class 41.

9. Upon information and belief, Applicant did not use the Disputed Mark in United

States commerce in connection with Applicant’s Services prior to January 29, 2019, the filing date

of the Application.

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10. By virtue of Opposer’s prior use and promotion of, and registrations for, the MISS

UNIVERSE Marks, which became famous long before Applicant’s filing date of January 29, 2019,

Opposer has prior rights in the MISS UNIVERSE Marks that are superior to any alleged rights of

Applicant in the Disputed Mark covered by the Application.

11. The services covered by the Application are identical and/or closely related to goods and services bearing or offered in connection with Opposer’s MISS UNIVERSE Marks.

Upon information and belief, Applicant’s Services and Opposer’s Goods and Services bearing or offered in connection with Opposer’s MISS UNIVERSE Marks will be offered, marketed and/or sold through the same and/or similar channels of trade and to the same classes of consumers.

12. The Disputed Mark MISS-MRS-MISTER-TRANSGENDER CHARM

UNIVERSE BEAUTY PAGEANT is confusingly similar in appearance, sound and meaning to

Opposer’s MISS UNIVERSE Marks. The Disputed Mark contains the entirety of Opposer’s famous MISS UNIVERSE mark. The other terms in the Disputed Mark, “TRANSGENDER”,

“CHARM”, and “BEAUTY PAGEANT”, are merely descriptive of Applicant’s Services. As such, the terms “MISS-MRS-MISTER” and “UNIVERSE”, which are identical and/or confusingly similar to Opposer’s MISS UNIVERSE Marks, are the dominant terms in Applicant’s Mark. The

Disputed Mark therefore makes the same commercial impression as Opposer’s MISS UNIVERSE

Marks, such that consumers are likely to mistakenly believe the Disputed Mark refers to or is otherwise associated with Opposer and Opposer’s MISS UNIVERSE Goods and Services.

13. The Disputed Mark so resembles Opposer’s MISS UNIVERSE Marks as to be likely, when used in connection with Applicant’s Services, to cause confusion, mistake, or deceive the trade and public, who are likely to believe that Applicant’s Services originate with Opposer and/or are in some way sponsored, endorsed, licensed, associated or otherwise authorized by or

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connected with Opposer and Opposer’s MISS UNIVERSE Goods and Services. Such confusion would irreparably harm and damage Opposer because Opposer has no control over the nature or quality of the services provided or produced by Applicant under the Disputed Mark.

14. Opposer’s MISS UNIVERSE Marks are distinctive and famous and enjoyed such fame well prior to January 29, 2019, the filing date of the Application. Opposer would therefore be further damaged by the registration of the Disputed Mark, because such mark is likely to dilute the distinctive quality and strength of Opposer’s MISS UNIVERSE Marks as a source designation for Opposer’s famous pageants and pageant services.

WHEREFORE, Opposer believes that it will be damaged by registration of the Application and respectfully requests that this Opposition be sustained and that the Application for the registration of the mark MISS-MRS-MISTER-TRANSGENDER CHARM UNIVERSE

BEAUTY PAGEANT be refused.

Dated: October 23, 2019 KELLEY DRYE & WARREN LLP New York, New York Attorneys for Opposer

By: /Andrea L. Calvaruso/ Andrea L. Calvaruso Kelli D. Ortega 101 Park Avenue New York, NY 10178 (212) 808-7800

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