Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA942873 Filing date: 12/20/2018 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 Sam Rosenthal Granted to Date 01/02/2019 of previous ex- tension Address 1410 SE 30th Avenue Portland, OR 97214 UNITED STATES Attorney informa- Simon J. Rosen, Esq. tion Law Office of Simon Rosen, PLLC 2019 Walnut Street Philadelphia, PA 19103 UNITED STATES [email protected] 215-564-0212 Applicant Information Application No 79975398 Publication date 09/04/2018 Opposition Filing 12/20/2018 Opposition Peri- 01/02/2019 Date od Ends International Re- 1368617 International Re- 01/26/2017 gistration No. gistration Date Applicant CD PROJEKT SA ul. Jagiellonska 74 PL-03-301 Warszawa POLAND Goods/Services Affected by Opposition Class 025. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Clothing, namely, shirts, t-shirts, tank tops, halter tops, sweatshirts, blouses, sweaters, cardigans, jackets, sweat jackets, vests, jumpers, pants, sweatpants, overalls, shorts, dresses, sleepwear,swimwear, beachwear, skirts, undergarments, bowties, neckties, gloves, scarves,socks, leather belts, masquerade costumes and Halloween cos- tumes; footwear; headwear; underwear Class 041. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Providing on-line non-downloadable gamesoftware; providing online computer games via computer networks and global communication networks; provision of on-linecomputer games; provision of on-line games by means of a computer based system;game services provided on-line from a computer network; providing a computer game that may be accessed network-wide by network users; non-downloadable electronic games provided by means of the internet; information relating to computer gaming entertainment provided online from acomputer database or a global communication network; providing information on-line relating to computer games and computer enhancements for games; production of television programs and cinema films; production of television series; providing a website featuring non-downloadable on-line films and series in the fields of fantasy, action, adventure, video games and video game develop- ment; organisingand conducting events for social entertainment purposes; entertainment services, namely, arranging and conducting live show performances, competitions, awards,and games in the field of computer games and video games; arranging and conducting competitions for video gamers and computer game players; arranging online computer and video game competitions for interactive game players; amusement and theme park services; providing entertainment services in the nature of amusement centers; children's entertainment and amusement centers, namely, interactive play areas; organization of exhibitions forcultural or educational purposes; education and training services relating to computer games and other forms of online entertainment, namely, computer education training; on-line publications, namely, on-line magazines featuring information, news and commentary in the field of video games Grounds for Opposition Priority and likelihood of confusion Trademark Act Section 2(d) Dilution by blurring Trademark Act Sections 2 and 43(c) Dilution by tarnishment Trademark Act Sections 2 and 43(c) Marks Cited by Opposer as Basis for Opposition U.S. Registration 2999725 Application Date 11/20/2003 No. Registration Date 09/27/2005 Foreign Priority NONE Date Word Mark PROJEKT Design Mark Description of NONE Mark Goods/Services Class 009. First use: First Use: 1983/06/01 First Use In Commerce: 1983/06/01 Compact Discs, phonograph records, prerecorded audio cassettes, prerecorded video cassettes and DVDs all featuring music U.S. Application 87914458 Application Date 05/09/2018 No. Registration Date NONE Foreign Priority NONE Date Word Mark PROJEKT Design Mark Description of NONE Mark Goods/Services Class 009. First use: First Use: 1996/12/01 First Use In Commerce: 1999/04/23 Digital materials, namely, downloadableaudio files featuring music; digital music downloadable from the Internet Class 038. First use: First Use: 1999/04/23 First Use In Commerce: 1999/04/23 Streaming of audio material on the Internet; streaming of audio, visual and audi- ovisual material on the Internet Class 042. First use: First Use: 1996/12/01 First Use In Commerce: 2001/06/28 Providing a website that gives users the ability to purchase downloadable music Attachments 76563141#TMSN.png( bytes ) 87914458#TMSN.png( bytes ) PROJECT V CD PROJEKT-OPPOSITION PET-12-20-18.pdf(112692 bytes ) PROJEKT-IC 9-EXHIBIT TO OPPOSITION PETITION.pdf(191716 bytes ) PROJEKT-TM-EXHIBIT- IC 9 AND 38 AND 42- TO OPPOSITION PETI- TION.pdf(171508 bytes ) PROJEKT-EXHIBIT TO OPPOSITION-PROOF OF USAGES.pdf(509142 bytes ) PROJEKT-EXHIBIT TO OPPOSITION- PROOF OF USAGES-2.pdf(2266606 bytes ) Signature /Simon J. Rosen, Esq./ Name Simon J. Rosen, Esq. Date 12/20/2018 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD In the Matter of Application Serial No. 79217943, 79975398 For the mark: CD PROJEKT Published: AUGUST 31, 2016 __________________________________________ SAM ROSENTHAL d/b/a PROJEKT 1410 S.E. 30th Avenue Portland, OR 97214 Opposition No.:____________________ Opposer, v. CD PROJEKT S.A. JOINT STOCK COMPANY ul. Jagiellonska 74, Building E 03-301 Warszwawa, Poland Applicant. 2222222222222222222222222222222222222222222 NOTICE OF OPPOSITION Sam Rosenthal, an individual residing in Portland, Oregon with mailing address at 1410 S.E. 30th Avenue, Portland, OR 97214, and d5b5a Projekt, Projekt Records, Projekt Archive, Projekt Darkwave, and Darkwave (hereinafter “OpposerA) believes that it will be damaged by the issuance of a registration for the alleged marks shown in a. Application Serial No. 79217943, for the mark CD PROJE(T in International Class 09 for Games software; virtual reality game software; downloadable computer game programs; recorded computer game software; video games and computer games in the form of computer programs recorded on data carriers; computer game software, namely, video games on disc; computer software platforms for social networking and social interaction; computer programs for video and computer games; computer games programs downloaded via the internet; cases for tablets and smartphones; liquid crystal protective films for smartphones; mouse pads; sunglasses; headphones; spectacle cases; video films in the fields of fantasy, action, adventure, video games and video game development; cinematographic films in the fields of fantasy, action, adventure, video games and video game development; downloadable movies in the fields of fantasy, action, adventure, video games and video game development provided via a video-on-demand services (hereinafter “CD PROJE(T Mark IA)D and b. Application Serial No. 79975398, for the mark CD PROJE(T in International Class 025 for clothing, namely, shirts, t-shirts, tank tops, halter tops, sweatshirts, blouses, sweaters, cardigans, jackets, sweat jackets, vests, jumpers, pants, sweatpants, overalls, shorts, dresses, sleepwear, swimwear, beachwear, skirts, undergarments, bowties, neckties, gloves, scarves, socks, leather belts, masquerade costumes and Halloween costumes; footwear; headwear; underwear, and International Class 041 for Providing on-line non-downloadable game software; providing online computer games via computer networks and global communication networks; provision of on-line computer games; provision of on-line games by means of a computer based system; game services provided on-line from a computer network; providing a computer game that may be accessed network-wide by network users; non-downloadable electronic games provided by means of the internet; information relating to computer gaming entertainment provided online from a computer database or a global communication network; providing information on-line relating to computer games and computer enhancements for games; production of television programs and cinema films; production of television series; providing a website featuring non-downloadable on-line films and series in the fields of fantasy, action, adventure, video games and video game development; organi ing and conducting events for social entertainment purposes; entertainment services, namely, arranging and conducting live show performances, competitions, awards, and games in the field of computer games and video games; arranging and conducting competitions for video gamers and computer game players; arranging online computer and video game competitions for interactive game players; amusement and theme park services; providing entertainment services in the nature of amusement centers; children's entertainment and amusement centers, namely, interactive play areas; organi ation of exhibitions for cultural or educational purposes; education and training services relating to computer games and other forms of online entertainment, namely, computer education training; on-line publications, namely, on-line maga ines featuring information, news and commentary in the field of video games (hereinafter “CD PROJE(T Mark II,A and together with CD PROJE(T Mark I, “CD PROJE(T MarksA). Opposer hereby opposes same pursuant to Section