Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA246423 Filing date: 11/03/2008 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 Source Interlink Magazines, LLC Granted to Date 11/05/2008 of previous extension Address 261 Madison Avenue Samantha Favitta New York, NY 10016 UNITED STATES Attorney Scott J. Spooner information Source Interlink Companies, Inc. 6420 Wilshire Boulevard Los Angeles, CA 90048 UNITED STATES [email protected], [email protected] Phone:323.782.2127 Applicant Information Application No 77394587 Publication date 07/08/2008 Opposition Filing 11/03/2008 Opposition 11/05/2008 Date Period Ends Applicant American Hot Rod Racer LLC 3050 Monmouth Rd. Cleveland Heights, OH 44118 UNITED STATES Goods/Services Affected by Opposition Class 028. First Use: 2006/10/30 First Use In Commerce: 2006/10/30 All goods and services in the class are opposed, namely: Model cars; Radio controlled model vehicles; Toy model cars; Toy model kit cars; Toy model hobbycraft kits Grounds for Opposition Deceptiveness Trademark Act section 2(a) 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 2645266 Application Date 01/12/2001 No. Registration Date 11/05/2002 Foreign Priority NONE Date Word Mark HOT ROD Design Mark Description of NONE Mark Goods/Services Class 008. First use: First Use: 1998/06/01 First Use In Commerce: 1998/06/01 COLLECTOR POCKET KNIVES Class 009. First use: First Use: 1997/07/07 First Use In Commerce: 1997/07/07 VIDEO GAME CARTRIDGES; CD-ROM COMPUTER GAME DISCS AND COMPUTER GAME SOFTWARE; PRERECORDED COMPACT DISCS AND AUDIO CASSETTES FEATURING MUSIC; CAR BATTERIES Class 027. First use: First Use: 1998/06/24 First Use In Commerce: 1998/06/24 Car floor mats; area rugs Class 028. First use: First Use: 1997/01/30 First Use In Commerce: 1997/01/30 TOYS AND GAMES, NAMELY, DIE CAST TOY CARS Class 030. First use: First Use: 1999/10/01 First Use In Commerce: 1999/10/01 Liquid and hard ball candies; salsa and hot sauce Class 032. First use: First Use: 1998/12/01 First Use In Commerce: 1998/12/01 Carbonated non-alcoholic beverages U.S. Registration 572151 Application Date 07/31/1950 No. Registration Date 03/17/1953 Foreign Priority NONE Date Word Mark HOT ROD Design Mark Description of NONE Mark Goods/Services Class U038 (International Class 016). First use: First Use: 1947/12/31 First Use In Commerce: 1948/01/01 MAGAZINES U.S. Registration 2372437 Application Date 04/06/1999 No. Registration Date 08/01/2000 Foreign Priority NONE Date Word Mark HOT ROD Design Mark Description of NONE Mark Goods/Services Class 016. First use: First Use: 1947/12/31 First Use In Commerce: 1948/01/01 MAGAZINES SPECIFICALLY FEATURING AUTOMOBILES, AUTOMOBILE PARTS, AUTOMOBILE ASSEMBLY, AUTOMOBILE RACING AND OTHER MATTERS DEALING WITH AUTOMOBILES U.S. Registration 3316211 Application Date 01/08/2007 No. Registration Date 10/23/2007 Foreign Priority NONE Date Word Mark HOT ROD Design Mark Description of NONE Mark Goods/Services Class 041. First use: First Use: 1998/10/01 First Use In Commerce: 1998/10/01 COMPUTER SERVICES, NAMELY, PROVIDING ON-LINE MAGAZINES AND ARCHIVED MAGAZINE ARTICLES IN THE FIELD OF CARS AND THE AUTOMOTIVE INDUSTRY Attachments 76192999#TMSN.gif ( 1 page )( bytes ) 71601506#TMSN.gif ( 1 page )( bytes ) 75675907#TMSN.gif ( 1 page )( bytes ) 77078305#TMSN.jpeg ( 1 page )( bytes ) Opposition-american hot rod racer-10-31-08.pdf ( 7 pages )(34841 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 /Scott J. Spooner/ Name Scott J. Spooner Date 11/03/2008 Applicant: American Hot Rod Racer LLC Application Serial Number: 77/394,587 Application Filing Date: 02/12/2008 Mark: AMERICAN HOT ROD RACER Date of Publication: 07/08/2008 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD RE: U.S. Trademark Application Serial No. 77/394,587 Published in the Official Gazette on July 8, 2008 SOURCE INTERLINK MAGAZINES, LLC ) ) Opposer ) ) Opposition No. ___________ ) -v- ) ) AMERICAN HOT ROD RACER LLC ) ) Applicant ) ) __________________________________________) NOTICE OF OPPOSITION Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22314 Commissioner: In the matter of Application Serial No. 77/394,587 filed February 12, 2008 by American Hot Rod Racer LLC (“Applicant”), to register the mark AMERICAN HOT ROD RACER for goods described as "Model cars; Radio controlled model vehicles; Toy model cars; Toy model kit cars; Toy model hobbycraft kits” in International Class 28 (“Applicant’s Goods”), which was published in the Official Gazette on July 8, 2008, Source Interlink Magazines, LLC (“Opposer”), believes it will be damaged by the registration of the AMERICAN HOT ROD RACER mark and opposes same. The grounds for this opposition are as follows: U.S. Trademark Application Serial No. 77/394,587 Published in the Official Gazette on July 8, 2008 1. Upon information and belief, Applicant is a Delaware Limited Liability Company having an address at 3050 Monmouth Rd., Cleveland Heights, OH 44118. On February 12, 2008, Applicant filed Application Serial No. 77/394,587 for the mark AMERICAN HOT ROD RACER for Applicant's Goods based on Applicant's use of the mark in commerce in association with such goods. 2. Opposer Source Interlink Magazines, LLC owns and publishes Hot Rod Magazine, a well known and widely read magazine in the automotive enthusiast industry. Source Interlink Magazines, LLC is one of the largest U.S. publishers of magazines targeted to enthusiast audiences, including automotive enthusiasts. Source Interlink Magazines, LLC also distributes its copyrighted magazine content, including the content contained in Hot Rod Magazine, via popular web sites such as www.hotrod.com (Hot Rod Magazine). 4. Opposer will rely upon ownership of its federal trademark registrations for the HOT ROD Mark and the common law rights it has obtained through its long prior and continuous use of the HOT ROD Mark in commerce throughout the United States. 5. Opposer owns the following United States trademark registrations for the mark HOT ROD (hereinafter referred to collectively as the “Registrations”): (a) Registration No. 2,645,266 for the mark HOT ROD in the following classes: (i) International Class 8 covering “collector pocket knives” with a date of first use in interstate commerce of June 1, 1998; (ii) in International Class 9 covering “video game cartridges; cd-rom computer game discs and computer game software; prerecorded compact discs and audio cassettes featuring music; car batteries” with a date of first use in interstate commerce of July 7, 1997; (iii) in International Class 27 covering “car floor mats; area rugs” with a date of first use in interstate commerce of June 24, 1998; (iv) in International Class 28 2 U.S. Trademark Application Serial No. 77/394,587 Published in the Official Gazette on July 8, 2008 covering “toys and games, namely, die cast toy cars “ with a date of first use in interstate commerce of January 30, 1997; (v) in International Class 30 covering “liquid and hard ball candies; salsa and hot sauce” with a date of first use in interstate commerce of October 1, 1999; and (vi) in International Class 32 covering “carbonated non-alcoholic beverages” with a date of first use in interstate commerce of December 1, 1998. (b) Registration No. 572,151 for the mark HOT ROD covering “magazines” in International Class 16; and (c) Registration No. 2,372,437 for the mark HOT ROD covering “magazines specifically featuring automobiles, automobile parts, automobile assembly, automobile racing and other matters dealing with automobiles” in International Class 16 with a date of first use in interstate commerce of January 1, 1948; (d) Registration No. 3,316,211 for the mark HOT ROD covering “computer services, namely, providing on-line magazines and archived magazine articles in the field of cars and the automotive industry” in International Class 41 with a date of first use in interstate commerce of October 1, 1998. 6. The Registrations are not limited by channels of trade or classes of purchasers. Opposer's Registrations are valid and subsisting, and are prima facie evidence of the validity of: (a) the registered mark set forth in and protected by the Registrations; (b) the registrations of the registered mark set forth therein; and (c) Opposer's exclusive right to use the registered mark set forth therein in connection with the goods or services specified in the Registrations. 7. Opposer itself, or through its related companies or licensees, makes use of the HOT ROD mark protected by the Registrations. Such use includes, without limitation: (a) placing the HOT ROD mark on the widely circulated publication entitled Hot Rod Magazine; (b) 3 U.S. Trademark Application Serial No. 77/394,587 Published in the Official Gazette on July 8, 2008 displaying the HOT ROD mark on the web site located at www.hotrod.com in connection with the dissemination of on-line magazine content relating to Hot Rod Magazine and of interest to the automotive enthusiast community; and (c) placing the HOT ROD mark on a variety of goods, such as die cast toy cars, to exploit the substantial good will and brand recognition of the HOT ROD mark. 8. Many of Opposer’s magazine titles, such as Hot Rod, Motor Trend, and Automobile, serve as valuable brands that are exploited by Opposer through extensive licensing relationships in the United States and abroad.