Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA697851 Filing date: 09/23/2015 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 Twentieth Century Fox Film Corporation Granted to Date 09/23/2015 of previous ex- tension Address 10201 West Pico Blvd. Los Angeles, CA 90035 UNITED STATES Attorney informa- David M. Kelly tion Kelly IP, LLP 1919 M Street, N.W. Suite 610 Washington, DC 20036 UNITED STATES [email protected], [email protected], [email protected] Applicant Information Application No 86325966 Publication date 05/26/2015 Opposition Filing 09/23/2015 Opposition Peri- 09/23/2015 Date od Ends International Re- NONE International Re- NONE gistration No. gistration Date Applicant Allied Domecq Spirits & Wine Limited 72 Chancellors Road London, W69RS UNITED KINGDOM Goods/Services Affected by Opposition Class 033. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Alcoholic beverages except beers, namely, wines; spirits; liqueurs Grounds for Opposition Priority and likelihood of confusion Trademark Act section 2(d) Dilution Trademark Act section 43(c) Marks Cited by Opposer as Basis for Opposition U.S. Registration 4566718 Application Date 06/05/2013 No. Registration Date 07/15/2014 Foreign Priority NONE Date Word Mark DUFF Design Mark Description of NONE Mark Goods/Services Class 032. First use: First Use: 2013/06/01 First Use In Commerce: 2013/06/01 Beers U.S. Registration 3486187 Application Date 12/03/2004 No. Registration Date 08/12/2008 Foreign Priority NONE Date Word Mark DUFF Design Mark Description of NONE Mark Goods/Services Class 032. First use: First Use: 2007/08/30 First Use In Commerce: 2007/08/30 Carbonated soft drinks U.S. Registration 4570986 Application Date 06/05/2013 No. Registration Date 07/22/2014 Foreign Priority NONE Date Word Mark DUFF BEER Design Mark Description of NONE Mark Goods/Services Class 032. First use: First Use: 2013/06/01 First Use In Commerce: 2013/06/01 Beers U.S. Registration 4616295 Application Date 10/17/2013 No. Registration Date 10/07/2014 Foreign Priority NONE Date Word Mark DUFF LITE Design Mark Description of NONE Mark Goods/Services Class 032. First use: First Use: 2013/06/01 First Use In Commerce: 2013/06/01 Beers U.S. Registration 4616296 Application Date 10/17/2013 No. Registration Date 10/07/2014 Foreign Priority NONE Date Word Mark DUFF DRY Design Mark Description of NONE Mark Goods/Services Class 032. First use: First Use: 2013/06/01 First Use In Commerce: 2013/06/01 Beers U.S. Application 86094728 Application Date 10/17/2013 No. Registration Date NONE Foreign Priority NONE Date Word Mark CAN'T GET ENOUGH OF THAT WONDERFUL DUFF Design Mark Description of NONE Mark Goods/Services Class 032. First use: First Use: 2013/06/01 First Use In Commerce: 2013/06/01 Beers Attachments 85979743#TMSN.png( bytes ) 78527050#TMSN.png( bytes ) 85979742#TMSN.png( bytes ) 86094726#TMSN.png( bytes ) 86094727#TMSN.png( bytes ) 86094728#TMSN.png( bytes ) MILTONDUFF Notice of Opposition.pdf(5404850 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 /David M. Kelly/ Name David M. Kelly Date 09/23/2015 Attorney Docket No. 10210.8073 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD TWENTIETH CENTURY FOX FILM CORPORATION, Opposition No.: Opposer Mark: MILTONDUFF Serial No.: 86325966 v. Filed: July 1, 2014 ALLIED DOMECQ SPIRITS & WINE LIMITED, Applicant. NOTICE OF OPPOSITION Twentieth Century Fox Film Corporation, a Delaware corporation, having a place of business at 10201 West Pico Boulevard, Los Angeles, California 90035 (“Opposer” or “Fox”), believes that it will be damaged by the registration of the mark MILTONDUFF shown in Application Serial No. 86325966, and hereby opposes the same. As grounds for its opposition, Fox alleges the following, upon actual knowledge with respect to itself and its own acts, and upon information and belief as to other matters: Fox and Its Services and Products 1. Fox, through itself and its related companies and licensees (“Fox”), is one of the world’s leading producers and providers of entertainment, including films and television programming, and a wide variety of related services and products. 2. Fox produces the animated television series THE SIMPSONS, which depicts the fictional world of the Simpsons, a family of five comprised of Homer, Marge, Bart, Lisa, and Maggie, as well as numerous supporting characters. The show also Application Serial No. 86325966 features an array of fictional elements such as places, businesses, and products as well as distinctive catchphrases. 3. Fox’s THE SIMPSONS show premiered on December 17, 1989 and has aired on the Fox television network for more than 25 years. Since its debut, Fox’s THE SIMPSONS show has attracted tens of millions of devoted fans. 4. Now in its 27th season and after more than 574 episodes, THE SIMPSONS show is the longest running scripted show in television history, as well as the longest running sitcom and the longest-running animated program. The show holds a world record from the Guinness Book of World Records for Longest-Running Primetime Animated Television Series, among other records. 5. Fox’s THE SIMPSONS series has for many years enjoyed substantial critical success and received numerous awards, including 31 Emmy awards, 6 People’s Choice Awards, 11 Writers Guild of America Awards, 30 Annie Awards, 7 Environmental Media Awards, 6 Genesis Awards, and a Peabody Award, among others. THE SIMPSONS show also has a Star on the Hollywood Walk of Fame. 6. In addition, THE SIMPSONS is routinely ranked as one of the greatest shows of all time. For example, TV Guide ranked the show, in 2002 and in 2013, in the top 10 of the 50 Greatest TV Shows of All Time, and ranked the show in 2013 the greatest TV cartoon of all time. In other examples, Time included the show in 2007 in its list of the “100 Best TV Shows of All Time,” and Entertainment Weekly in 2008 placed the show first in its “Top 100 Shows of the Past 25 Years.” 7. In 2007, Fox released THE SIMPSONS MOVIE, which grossed more than $527,000,000, and received wide critical acclaim including a Golden Globe nomination. 2 Application Serial No. 86325966 8. In addition to its commercial success on air and in theaters, Fox’s THE SIMPSONS show has had substantial commercial success in DVD format. Fox has sold many millions of DVDs featuring seasons of THE SIMPSONS series and THE SIMPSONS MOVIE. 9. In addition to DVDs, Fox offers, and has offered for many years, a wide array of merchandise relating to THE SIMPSONS show, including beverages, candy, clothing, costumes, accessories, toys, computer and video games, board games, dolls, comic books, and greeting cards. The commercial success of these product lines has been tremendous. Fox has sold billions of dollars-worth of products in connection with THE SIMPSONS show. 10. In addition to television distribution and DVD sales, Fox offers clips of episodes of THE SIMPSONS show online via its websites located at the domain names THESIMPSONS.COM, SIMPSONSWORLD.COM and FOX.COM. Fox also offers additional online services under THE SIMPSONS mark such as social media services, online community forum services, and online downloads. Fox’s Facebook page for THE SIMPSONS show, which has nearly 70,000,000 fans, was ranked as the largest entertainment-related page on Facebook in February 2014. 11. Fox has extensively and widely advertised and promoted THE SIMPSONS show and related products and services for over two decades, and has spent many millions of dollars on such advertising and promotional activities. 12. Fox also licenses its THE SIMPSONS mark and other trademarks relating to the show to various partners, including theme parks. For example, Fox licenses its mark THE SIMPSONS to Universal Studios for amusement park rides at its parks 3 Application Serial No. 86325966 Universal Studios Florida and Universal Studios Hollywood, and has done so for many years. These rides are highly popular, and THE SIMPSONS ride at Universal Studios Florida earned the distinction of reaching 1,000,000 riders in the fastest time for that theme park. 13. Because of the commercial success and iconic stature of THE SIMPSONS series and its characters, a number of fictional elements of the show have permeated popular culture and have become well-known and famous, including Homer Simpsons’ catchphrase “D’oh!”. The catchphrase has been listed as number six on TV Land’s list of the 100 greatest television catchphrases. Fox has also registered a sound trademark for “D’OH” on the Principal Register (Registration No. 3411881). Fox’s THE SIMPSONS Show and the DUFF Trademarks 14. For decades, the trademarks DUFF, DUFF BEER, and variations thereof (collectively, the “DUFF Marks”) have been prominently and extensively featured in Fox’s THE SIMPSONS series as the beer of choice of Homer Simpson, the show’s main character. 15. The DUFF Marks appeared for the first time in episode three of season one of THE SIMPSONS show, which aired on January 21, 1990. The DUFF Marks have been featured in numerous episodes since that date, as well as in the film THE SIMPSONS MOVIE. 16. Representative images of the DUFF Marks as displayed in THE SIMPSONS shows are displayed below.