Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA861990 Filing date: 12/01/2017 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91231132 Party Plaintiff Dweezil Zappa Correspondence MARIA CRIMI SPETH Address JABURG & WILK PC 3200 NORTH CENTRAL AVE STE 2000 PHOENIX, AZ 85012 UNITED STATES Email: [email protected] Submission Other Motions/Papers Filer's Name Maria Crimi Speth Filer's email [email protected] Signature /mariacrimispeth/ Date 12/01/2017 Attachments Zappa Amended Notice of Opposition.pdf(42171 bytes ) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Dweezil Zappa, ) ) Opposition No. 91231132 Opposer, ) ) Mark: ZAPPA v. ) Serial No. 86918908 ) International Class: 041 Trustees of the Zappa Family Trust, ) Filed: February 24, 2016 ) Published: July 12, 2016 Applicant ) ) ) AMENDED NOTICE OF OPPOSITION Pursuant to the Board’s Order mailed November 1, 2017 granting Opposer Dweezil Zappa (“Opposer”) leave to file and serve an amended notice of opposition, Opposer, an individual with an address of 101 West Elm, Suite 500, Conshohocken, PA 19428, submits the following Amended Notice of Opposition. Opposer believes he will be damaged by the registration of the above identified mark filed by The Trustees of the Zappa Family Trust Administrative Trust (“Applicant”), comprised of Ahmet Zappa, an individual, and Diva Zappa and individual (together, “Trustees”), with an address of 3940 Laurel Canyon Blvd., Suite 859, Studio City, CA 91604, and hereby opposes such registration. As grounds for the opposition, it is alleged that: 1. ZAPPA is the legal surname of Opposer and Trustees, all of whom are siblings. 2. ZAPPA is also the legal surname of Opposer’s and Trustees’ father, Frank Zappa, a famous American musician, songwriter, composer, guitarist, record producer, actor and filmmaker who passed away on December 4, 1993. 1 19046-19046-00001\MCS\MCS\2927705.1 3. Because ZAPPA is the legal surname of Opposer, Trustees, and Frank Zappa, it identifies each of them and not only Frank Zappa. 4. Opposer has acquired certain legal rights in and to the name ZAPPA insofar as it identifies him and is his legal surname. 5. Opposer has also acquired certain trademark rights in and to ZAPPA due to his multi- decade use of ZAPPA in commerce in connection with live musical performances, recorded music, acting, composing, music instruction, and public speaking. 6. In 1982, Opposer used DWEEZIL ZAPPA in connection with a live musical performance. 7. In the 1990’s, Opposer used DWEEZIL ZAPPA in connection with international live musical performances, including a North American tour from 1993-1998. 8. Since 2006, Opposer has continuously used ZAPPA as part of his name to identify himself in connection with live musical performances. 9. Since 2006, Opposer has continuously used DWEEZIL ZAPPA in connection with live musical performances. 10. One of the trademarks used by Opposer that included the ZAPPA name was ZAPPA PLAYS ZAPPA in connection with live musical performances. These live musical performances featured the music of his father, Frank Zappa. 11. The first reference to “Zappa” in this mark is understood by the public to refer to Opposer. 12. For the above reasons, the name ZAPPA has come to be associated with Opposer in the minds of relevant consumers in connection with live musical performances, recorded music, and public appearances. 2 19046-19046-00001\MCS\MCS\2927705.1 13. For all the above reasons, Opposer has acquired common law trademark rights in and to ZAPPA in connection with live musical performances and related uses. 14. During the past two years, Opposer and Trustees have been involved in a contentious “family feud” over a number of business and legal issues related to Frank Zappa’s estate. 15. Among these issues is Opposer’s past use and legal rights in and to ZAPPA in connection with live musical performances, recorded music, and related uses. 16. On February 24, 2016, Applicant filed an application for ZAPPA, Serial No. 86918908 (the “Application”) in the United States Patent and Trademark Office (“PTO”) based upon an intent to use ZAPPA in commerce under Section 1(b). 17. Applicant filed for the Application in International Class 041 in connection with “Entertainment services namely, live music performances, theatrical performances, and conducting karaoke contests and competitions; entertainment services namely, live visual and audio performances by artists; personal appearances by musical performers, theatrical performers, and celebrities; entertainment, namely, live music concerts; entertainment, namely, live performances by a musical band or group or individual; entertainment namely, production of music and music video recordings and entertainment related films; entertainment services, namely, providing non-downloadable playback of music via global communications networks; providing a web site featuring information in the field of entertainment; publishing of magazines and newsletters; providing online magazines and newsletters in the fields of music, and celebrities and providing entertainment information in the nature of a calendar of entertainment events; providing a web site where users can post ratings, reviews and recommendations on events and activities in the field of entertainment; entertainment, namely, conducting private parties; conception, creation, production, arranging, planning and conducting special events for social entertainment purposes; conception, creation, production, arranging, 3 19046-19046-00001\MCS\MCS\2927705.1 planning and conducting nightclub entertainment events; entertainment services, namely, discothèques, cabarets; entertainment services, namely, live presentation of music performances and prerecorded music performances viewed on a big screen; entertainment services, namely, presentation of entertainment exhibitions and concerts; entertainment services, namely, planning and conducting music festivals; organizing music festivals for entertainment purposes; production of music; production of sound and music video recordings; providing an internet website portal featuring links to musical artist websites and music performance ticket information; music-halls; music venues; music publishing services.” 18. In the Application, Applicant claims ZAPPA in Class 009 for “Phonograph Records, Pre- Recorded Tapes and Tape Cassettes” (Reg. No. 1179890), along with several other ZAPPA registrations, as prior registrations. 19. However, many of the entertainment services listed in the Application are not covered by any prior ZAPPA registration and have never been offered or provided in commerce by Applicant or by Frank Zappa. 20. Frank Zappa last provided live musical performances in 1988. 21. Applicant has no prior rights in ZAPPA in connection with some or all of the services listed in the Application. 22. Applicant did not have the requisite bona fide intent to use ZAPPA in connection with “live music performances,” “live visual and audio performances by artists,” “live music concerts,” “live performances by a musical band or group or individual” or “live presentation of music performances” as of the application filing date because Frank Zappa died in 1993, he cannot provide any of these “live” services, and no one with the Zappa name other than Opposer will provide these services. 4 19046-19046-00001\MCS\MCS\2927705.1 23. Upon information and belief, Applicant’s intention in filing the Application was only to block Opposer from legitimately and legally using ZAPPA in connection with the above specified services, and to improperly use any resulting registration against Applicant in the ongoing family feud between Applicant and Opposer. 24. If the Application should register, Applicant would gain prima facie exclusivity to use ZAPPA in connection with the listed services which are adverse to Opposer’s prior rights in and to ZAPPA as specified herein. 25. For at least the reasons set forth in Paragraphs 4 –12 above, Opposer asserts that he has priority of use over Applicant in and to ZAPPA in connection with “live music performances,” “live visual and audio performances by artists,” “live music concerts,” “live performances by a musical band or group or individual” or “live presentation of music performances.” 26. Applicant’s mark, ZAPPA in connection with entertainment services namely, live music performances, so resembles ZAPPA as previously used in the United States by Opposer in connection with live musical performances, as to be likely to cause confusion, or to cause mistake or to deceive. 27. In addition, Applicant has repeatedly alleged that ZAPPA as applied for in the Application so resembles Opposer’s DWEEZIL ZAPPA mark as to be likely to cause confusion. 28. On January 28, 2016, Applicant, through its attorney, sent a cease and desist letter to Opposer in which it stated, “The legal situation therefore is that in order for Dweezil or any other Family member to use the name "Zappa Plays Zappa" or ZPZ or the name, image and likeness of Frank, and to play Frank's music under that name or any other name, the consent of the Trust is needed” (emphasis added). 29. On June 14, 2016, Applicant, through its attorney, sent a cease and desist letter to Opposer in which it stated, “As Dweezil is well aware, [Applicant] has gone to great lengths to develop goodwill and consumer recognition in the ZAPPA mark and formatives thereof (hereinafter 5 19046-19046-00001\MCS\MCS\2927705.1