Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA819448 Filing date: 05/08/2017 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 Hanna-Barbera Productions, Inc. Granted to Date 05/07/2017 of previous ex- tension Address 4000 Warner Boulevard Burbank, CA 91522 UNITED STATES Attorney informa- Michael A. Grow tion Arent Fox LLP 1717 K Street, NW Washington,, DC 20006 UNITED STATES [email protected], [email protected], [email protected], [email protected], [email protected] Phone:202.857.6389 Applicant Information Application No 87046153 Publication date 11/08/2016 Opposition Filing 05/08/2017 Opposition Peri- 05/07/2017 Date od Ends Applicant BAM BAM BROTH L.L.C. 935 Highway 34 Ste 2D Matawan, NJ 07747 UNITED STATES Goods/Services Affected by Opposition Class 029. First Use: 2014/12/16 First Use In Commerce: 2015/03/25 All goods and services in the class are opposed, namely: Broth; Broth concentrates; Frozen broth; Preparations for making broths Grounds for Opposition Priority and likelihood of confusion Trademark Act Section 2(d) Marks Cited by Opposer as Basis for Opposition U.S. Registration 4656752 Application Date 11/02/2012 No. Registration Date 12/16/2014 Foreign Priority NONE Date Word Mark BAMM-BAMM Design Mark Description of NONE Mark Goods/Services Class 025. First use: First Use: 2010/09/01 First Use In Commerce: 2010/09/01 Clothing for men, women and children. namely, shirts, t-shirts, sweatshirts, ties, hats, caps and Halloween costumes U.S. Registration 1969786 Application Date 04/03/1995 No. Registration Date 04/23/1996 Foreign Priority NONE Date Word Mark BAMM-BAMM Design Mark Description of NONE Mark Goods/Services Class 028. First use: First Use: 1962/00/00 First Use In Commerce: 1962/00/00 toys, namely, [ play weight sets, ] plush toys, dolls, action figures and accessor- ies therefor, board games, jigsaw puzzles [, toy pails and buckets, small PVCwind-up toys and bop bags ] Attachments 85770777#TMSN.png( bytes ) Notice of Opposition - BAM BAM BROTH 2.pdf(245248 bytes ) Signature /Michael A. Grow/ Name Michael A. Grow Date 05/08/2017 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD In re Application No. 87/046153 for BAM BAM BROTH HANNA-BARBERA PRODUCTIONS, INC. : : Opposer : : v. : Opp. No. ________ : BAM BAM BROTH L.L.C. : : Applicant : NOTICE OF OPPOSITION Opposer Hanna-Barbera Productions, Inc. (“Opposer”) believes it will be damaged by the registration of the above identified mark and hereby opposes registration under the provisions of Section 13 of the Trademark Act of 1946, 15 U.S.C. §1063. As grounds for the opposition, Opposer alleges that: 1. Opposer is the owner of all right, title and interest in and to the word mark BAMM-BAMM and related design marks such as and ("Opposer’s BAMM-BAMM Marks") and several other trademarks and service marks derived from the famous FLINTSTONES television series. 2. Opposer’s BAMM-BAMM Marks and other FLINTSTONES Marks are used in connection with an extensive nationwide licensing program through which the marks have become well known as distinctive indicators of the origin of a wide variety of goods and services. AFDOCS/14923428.1 3. The Patent and Trademark Office has recognized Opposer’s exclusive right to use its BAMM BAMM Marks by issuing the following registrations: Registration No. 4656752, BAMM BAMM, in class 25, issued December 16, 2014 Registration No. 1969786, BAMM BAMM, in class 28, issued April 23, 1996 4. The foregoing registrations are valid and subsisting and provide prima facie evidence of Opposer's ownership of and exclusive right to use Opposer’s BAMM-BAMM Marks in commerce. 5. Registration No. 1969786 is incontestable and, therefore, it is conclusive evidence of Opposer's ownership of the Mark BAMM-BAMM and its exclusive right to use said Mark in commerce. 6. Since long prior to the filing date of Applicant’s application, or any date of first use that Applicant may allege, Opposer’s BAMM-BAMM Marks have been the subject of extensive publicity and advertising and Opposer has used and licensed others to use the Marks in interstate commerce in connection with a variety of goods and services. 7. Because of said advertising, publicity and use, Opposer’s BAMM-BAMM Marks have become strong and famous and they are entitled to a broad scope of protection. 8. Opposer’s BAMM-BAMM Marks have been used since at least as early as 1962 and they are derived from the name and image of an exceptionally strong child featured in the famous series of animated television programs distributed nationwide under the mark THE FLINTSTONES. 9. The series portrays a Stone Age family facing the problems of contemporary working class life in a fictitious town known as BEDROCK. - 2 - AFDOCS/14923428.1 10. Opposer has established trademark rights in the names of characters contained in THE FLINTSTONES series, including FRED FLINTSTONE, WILMA FLINTSTONE, and their daughter PEBBLES; and BARNEY RUBBLE, BETTY RUBBLE and their son BAMM- BAMM. 11. Since the 1960s, the fame of Opposer’s BAMM-BAMM Marks has been considerably enhanced through extensive advertising and publicity associated with THE FLINTSTONES television series and a later animated spin-off entitled THE PEBBLES AND BAMM BAMM SHOW, in which actor Jay North and actress Sally Struthers provided the voices for the BAMM-BAMM and PEBBLES character. 12. The fame of Opposer's Marks was further enhanced in 1994 when a full-length motion picture starring John Goodman and Rosie O’Donnell was released under the mark THE FLINTSTONES. The Bamm Bamm and Pebbles characters appear in this motion picture. 13. That same year a full length animated movie was released under the mark A FLINTSTONES CHRISTMAS CAROL. The Pebbles and Bamm-Bamm characters appear in this movie also. 14. And in 2000 a full length motion picture starring Steven Baldwin was released under the mark THE FLINTSTONES IN VIVA ROCK VEGAS. 15. The FLINTSTONES television series and motion pictures have been disseminated through television and through DVD and/or streaming formats continuously since their release. 16. The BAMM BAMM and PEBBLES marks have been used on food products such as breakfast cereal and the FLINTSTONES mark has been used on vitamins. - 3 - AFDOCS/14923428.1 17. On information and belief, Applicant has never sought permission to use Opposer’s famous mark BAMM-BAMM. 18. Notwithstanding the fact that Opposer's BAMM-BAMM Marks became well known and famous many years ago, and that Applicant never obtained Opposer’s permission to use that mark, Applicant recently applied to register the nearly identical mark for “broth concentrates, frozen broth and preparation for making broths.” 19. Upon information and belief, Applicant made no use of its alleged mark in connection with the sale of any products or services prior to the filing date of its application. 20. Upon information and belief, Applicant was aware of Opposer’s BAMM-BAMM Marks when Applicant applied to register its alleged mark. 21. Applicant has attempted to mislead customers into believing that its mark is licensed, approved, or sponsored by or otherwise affiliated with Opposer by displaying an unauthorized image of the Fred Flintstone character on its Facebook website. See https://www.facebook.com/bambambroth/photos/a.338935056303931.1073741829.3247 09367726500/356921241171979/?type=3&theater - 4 - AFDOCS/14923428.1 22. Applicant has also attempted to cause confusion and to suggest a false connection with Opposer by using a stone age meets modern theme in its own website as shown in the excerpt below See https://www.bambambroth.com/ 23. The foregoing examples, show that Applicant is trying to cause confusion among prospective purchasers. LIKELIHOOD OF CONFUSION - §2(d) 24. The mark that Applicant seeks to register so resembles Opposer’s BAMM BAMM Marks that the use and registration thereof is likely to cause confusion, mistake and deception as to the source or origin of Applicant’s goods and will injure and damage Opposer and the goodwill and reputation symbolized by Opposer’s Mark. 25. Applicant has disclaimed exclusive rights in the generic word “broth,” and this word is of no value in distinguishing Applicant’s mark from Opposer’s marks. 26. The goods of Applicant are so closely related to the goods and services of Opposer that the public is likely to be confused, to be deceived, and to assume erroneously that Applicant’s goods are those of Opposer, or that Applicant has been licensed to use the mark by Opposer, or that Applicant is in some way connected with, sponsored by, or affiliated with Opposer. 27. Likelihood of confusion is enhanced by the fact that Applicant’s BAM BAM broth could be eaten from the same bowls in which Opposer’s BAMM BAMM and PEBBLES cereal could be consumed by the same prospective purchasers. - 5 - AFDOCS/14923428.1 .