Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1055553 Filing date: 05/14/2020 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91244449 Party Plaintiff Lucasfilm Entertainment Company Ltd. LLC Correspondence LINDA K MCLEOD Address KELLY IP LLP 1300 19TH STREET NW, SUITE 300 WASHINGTON, DC 20036 UNITED STATES [email protected], [email protected], [email protected] 202-808-3570 Submission Plaintiff's Notice of Reliance Filer's Name Clint A. Taylor Filer's email [email protected], [email protected], [email protected], [email protected], [email protected] Signature /Clint A. Taylor/ Date 05/14/2020 Attachments Opposers Notice of Reliance 4 _Part1.pdf(4813318 bytes ) Opposers Notice of Reliance 4 _Part2.pdf(5200285 bytes ) Opposers Notice of Reliance 4 _Part3.pdf(847035 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD LUCASFILM ENTERTAINMENT COMPANY LTD. LLC, Opposition No.: 91244449 Opposer, Mark: MILLENNIAL FALCON Application No.: 87066540 v. Filed: June 9, 2016 ILAN MOSKOWITZ AKA CAPTAIN CONTINGENCY, Applicant. OPPOSER’S NOTICE OF RELIANCE NO. 4 UNDER 37 CFR § 2.122(e) Lucasfilm Entertainment Company Ltd. LLC, (“Opposer” or “Lucasfilm”) submits of record in connection with this opposition proceeding a representative sample of printed publications available to the general public online, as well as printed publications of general circulation among members of the public, under Paragraph 6 of the parties’ Stipulation for Accelerated Case Resolution (Dkt. 16), Trademark Rule 2.122(e)(2), and In re Cell Therapeutics, Inc., 67 USPQ2d 1795, 1798 (TTAB 2003). In addition, Lucasfilm also submits of record in connection with this opposition proceeding representative samples of Internet websites displaying the use of Lucasfilm’s MILLENNIUM FALCON Mark and/or spaceship for: (a) museum exhibitions at the Smithsonian Air and Space Museum in Washington, DC, and the Boston Museum of Science, (b) Christmas holiday window displays at Bloomingdale’s flagship location in New York City, and (c) promotional materials for Star Wars concerts. Such Internet materials are admissible by Notice of Reliance under Paragraph 6 of the parties’ Stipulation for Accelerated Case Resolution (Dkt. 16), Trademark Rule 2.122(e)(2), and Safer Inc. v. OMS Investments, Inc., 94 USPQ2d 1031 (TTAB 2010). This evidence is relevant to Lucasfilm’s likelihood-of-confusion claim and dilution claim, and shows, among other things: the nature and extent of the public exposure to Lucasfilm’s MILLENNIUM FALCON Mark for entertainment services; the strength and fame of Lucasfilm’s MILLENNIUM FALCON Mark for entertainment services; the media attention of Lucasfilm’s MILLENNIUM FALCON Mark for entertainment services; and the recognition of Lucasfilm’s MILLENNIUM FALCON Mark by the media and the general public as a Lucasfilm brand. The attached articles appeared between 2015 and 2017 in various U.S. publications and websites. Articles EX. PUB AUTHOR, ARTICLE TITLE, PUBLICATION NAME, NO. DATE AND RELEVANT EXCERPTS 1. 2-3-2015 Richard Tribou, “Star Wars the star of new Disney Dream enhancements,” Orlando Sentinel, Section: Travel; https://www.orlandosentinel.com/travel/attractions/the-daily-disney/os- disney-dream-star-wars-dry-dock-20151103-story.html; website. “The force is strong with this ship. Disney Cruise Line has brought the Star Wars universe to Disney Dream in a big way with the Millennium Falcon. One of two new interactive play areas in the five-year-old ships Oceaneer Club, the installation simulates the inside of the iconic spaceship flown by Han Solo a long time ago in a galaxy far, far away… The end result is an eye-catching marvel with more than 1,000 LED lights, hundreds of buttons, levers, and switches and detail- oriented touches that will make any Star Wars fan smile with nostalgia. The big draw is the two seats of the cockpit that lets little pilots make the jump to hyperspace and pilot the Millennium Falcon through a variety of scenes from both outer space such as battle scenes with Imperial Star Destroyers and planets such as Tatooine. Most of the scenes are culled from the Star Tours attractions at theme parks, although some are unique to the Dream. Fans of the theme park ride may notice the 2 EX. PUB AUTHOR, ARTICLE TITLE, PUBLICATION NAME, NO. DATE AND RELEVANT EXCERPTS original Star Tours video making a cameo among many options.” 2. 4-22-2015 Bonnie Burton, “Set sail on Millennium Falcon? Disney cruise ship snags ‘Star Wars’ upgrade,” CNet, Section: Culture, https://www.cnet.com/news/set-sail-on-the-millennium-falcon-disney- cruises-get-star-wars-upgrade/; website. “Who says you need to be a Wookie or a sarcastic space smuggler to fly the Millennium Falcon? This week, Disney Cruise Line announced tweaks to a ship, including an epic ‘Star Wars’ area. The retooled area on the cruise ship Disney Dream will place young guests of Disney’s Oceaneer Club aboard the Millennium Falcon in a play zone inspired by the interiors of Han Solo’s famous ship from ‘Star Wars.’ Kids (and hopefully us adults as well) can sit in the cockpit, assist with navigation, and pilot the Falcon through hyperspace to jump to light speed in a galaxy far, far away.” 3. 11-25-2015 Jonamarie Macias, “‘Star Wars: The Force Awakens’ Costume Displays at Bloomingdale’s,” The Wookie Gunner, https://thewookieegunner.com/2015/11/24/star-wars-the-force-awakens- costume-displays-at-bloomingdales/; website. “As part of the ‘Force 4 Fashion’ initiative recently announced between Bloomingdale’s and Lucasfilm, the Star Wars: The Force Awakens displays are now available for viewing in Bloomingdale’s flagship store on Third Avenue in New York City. The windows are decorated with costumes, props, and sets from the movie… Millennium Falcon: An extensively modified Corellian light freighter, the Millennium Falcon is a legend in smuggler circles and is coveted by many for being the fastest hunk of junk in the galaxy.” 3 EX. PUB AUTHOR, ARTICLE TITLE, PUBLICATION NAME, NO. DATE AND RELEVANT EXCERPTS 4. 12-1-2015 “@Bloomingdales Set Up Impressive #StarWars #TheForceAwakens Window Displays #Force4Fashion,” Action Figure Insider, http://www.actionfigureinsider.com/bloomingdales-set-up-impressive- starwars-theforceawakens-window-displays- %E2%80%8Eforce4fashion%E2%80%AC/; website. “This past week Bloomingdale’s department store in New York City has been showing off an impressive display of costumes and props from the upcoming release of Star Wars: The Force Awakens in their flagship store. Bloomingdale’s has a long history of impressive window displays, and these are equally impressive. The displays were installed back on November 24th.” 5. 9-6-2016 Russ Burlingame, “Star Wars Hits the High Seas As Disney Cruise Ship Gets a Millennium Falcon Theme,” Comicbook.com, https://comicbook.com/news/star-wars-hits-the-high-seas-as-disney- cruise-ship-gets-a-millen/; website. “Disney now owning Lucasfilm and making fistfuls of Star Wars movies, it was only a matter of time before we started to see the lucrative Star Wars license reaching out to some of the more esoteric parts of the Mouse’s empire. Now it’s happened. CNet reports that a retooled area on the cruise ship called Disney Dream will place young guests of Disney’s Oceaneer Club aboard the Millennium Falcon in a play zone inspired by the interiors of the Millennium Falcon.” 6. 3-9-2017 Richard Tribou, “Disney Fantasy upgrades to include new Star Wars, Marvel spaces,” The Orlando Sentinel, Section: Florida cruise guide, travel; https://www.orlandosentinel.com/travel/florida-cruise-guide/os- disney-fantasy-upgrades-disney-marvel-20170309-story.html; website. “The Star Wars space is the second on a Disney ship, following the debut of the Millennium Falcon play space on board Disney Dream. This new space will let children train to take on the First Order, as introduced in 2015's ‘The Force Awakens.’ A unique feature of the space will be a holotable that projects 3-D images of famous Star Wars ships such as the Millennium Falcon as well as the Death Star. Character interactions will include meeting members of the Resistance and of course, learning how to use the Force.” 4 EX. PUB AUTHOR, ARTICLE TITLE, PUBLICATION NAME, NO. DATE AND RELEVANT EXCERPTS 7. 5-17-2017 Suzanne Rowan Kelleher, “Peek Inside: Star Wars’ Millennium Falcon on the Disney Dream,” tripsavvy, Section: cruise lines; https://www.tripsavvy.com/millennium-falcon-on-disney-dream- 3266281; website. “The Disney Dream, one of four ships in the Disney Cruise Line fleet, emerged from dry dock in 2016 with some fun new spaces. Fans of Star Wars are in for a huge treat. The Oceaneer Club for kids age 3 to 12 now includes a replica of the interior of the Millennium Falcon, Han Solo’s iconic spaceship. The highly themed space is surrounded by interactive panels with over one thousand LED lights and hundreds of buttons and levers… During an open house at the Oceaneer Club, moms, dads, and teens can explore the Millennium Falcon along with younger kids.” Websites EX. NO. DESCRIPTION 8. Internet printouts from the website for the Smithsonian Air and Space Museum (https://airandspace.si.edu/) accessed on May 14, 2019 showing use of the MILLENNIUM FALCON Mark and spaceship for a museum exhibition. “*ARTIFACTS* Millennium Falcon Production model” 9. Internet printouts from the website for the Smithsonian Institution (https://www.si.edu/) accessed on May 14, 2019 showing use of the MILLENNIUM FALCON Mark as part of a museum exhibition called Star Wars: The Magic of Myth.