Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA531527 Filing date: 04/10/2013 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 McKernan Sports and Entertainment Granted to Date 04/10/2013 of previous extension Address 9414 Cordova Ave. NE Albuquerque, NM 87112 UNITED STATES Attorney Rod D. Baker information Law Office of Rod D. Baker 707 State Highway 333 Suite B Tijeras, NM 87059 UNITED STATES [email protected] Phone:505-286-9700 Applicant Information Application No 85669473 Publication date 12/11/2012 Opposition Filing 04/10/2013 Opposition 04/10/2013 Date Period Ends Applicant Matteucci, Fred J. PO Box 91782 Albuquerque, NM 87199 UNITED STATES Goods/Services Affected by Opposition Class 014. First Use: 2005/02/11 First Use In Commerce: 2005/02/11 All goods and services in the class are opposed, namely: Ornamental pins Grounds for Opposition False suggestion of a connection Trademark Act section 2(a) Other The matter sought to be registered should be refused registration because it is merely ornamentation and, therefore, does not function as a trademark, as required by §§ 1, 2, and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1052 and 1127. Related Notice of Opposition filed 03 April 2013, against Application Serial No. Proceedings 85/669,503 (ESSTA Tracking No. 530212); Opposition No. 91210099 against Application Serial No. 85/669,525 (ESTTA Tracking No. 530228); Notice of Opposition filed 03 April 2013, against Application Serial No. 85/669,538 (ESTTA Tracking No. 530238); Notice of Opposition filed 03 April 2013, against Application Serial No. 85/669,559 (ESTTA Tracking No. 530247); Notice of Opposition filed 03 April 2013, against Application Serial No. 85/669,566 (ESTTA Tracking No. 530285); Notice of Opposition filed 10 April 2013, against Application Serial No. 85/669,493 (ESTTA Tracking No. 531522) Attachments Notice-allegations.pdf ( 10 pages )(215301 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 //Rod D. Baker// Name Rod D. Baker Date 04/10/2013 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD : McKernan Sports & Entertainment, Inc., : Opposer, : : Opposition No. v. : : Fred J. Matteucci, : Application Ser. No. 85/669,473 Applicant, : _____________________________ : Opposer McKernan Sports and Entertainment, Inc., a New Mexico corporation, reasonably believes that it will be damaged by the registration of the mark shown in Application Serial No. 85/669,473, and hereby opposes the same under provisions of the Trademark Act of 1946. In further support of this Notice of Opposition, the Opposer states and claims as follows: 1. Applicant is Fred J. Matteucci, an individual residing in Albuquerque, New Mexico. 2. The Application opposed hereby is Application Serial No. 85/669,473 (the ÐCrrnkecvkqpÑ+0 3. During the period approximately 1972-2000, Albuquerque Professional Baseball, Inc. *ÐCRDÑ+ owned and operated a Triple-A professional baseball franchise in Albuquerque, New Mexico. 4. During the period 1972-2000, the APB franchise was known generally by, and fkf"dwukpguu"cu"cpf"wpfgt."vjg"pcog"qt"vtcfg"pcog"ÐCndwswgtswg"Fwmgu0Ñ" 5. P. Patrick OeMgtpcp."Ut0"*ÐRcv"OeMgtpcpÑ+."c"Pgy"Ogzkeq"tgukfgpv"pqy" deceased, had a legal or beneficial interest in APB during most or all the period approximately 1979-1999. 6. Pat McKernan was the president and/or general manager of the APB baseball franchise during the period 1979-2000. 1 of 10 7. During the period approximately 1972-2000, the APB baseball franchise played its home games in Albuquerque Sports Stadium in Albuquerque, New Mexico, and APB had a principal place of business in Albuquerque. 8. On 27 April 1982, APB obtained U.S. certificate of trademark registration No. 1,194,453 for a graphical device consisting of a caricature of a Spanish eqpswkuvcfqt"ykvj"vjg"ngvvgt"ÐCÑ"qp"vjg"jgnogv."kp"eqppgevkqp"ykvj" entertainment services, namely the presentation of baseball games. The registration, for a trademark substantially the same as the applied-for mark of this Application, was subsequently cancelled for lack of a declaration under Section 8 of the Trademark Law of 1946. 9. On 13 April 1993, APB obtained U.S. certificate of trademark registration No. 1,764,626 for a graphical device consisting of a caricature of a Spanish eqpswkuvcfqt"ykvj"vjg"ngvvgt"ÐCÑ"qp"vjg"jgnogv."kp"eqppgevkqp"ykvj"enqvjkpi." pcogn{."yqqn"ecru."dcugdcnn"ecru."rckpvgtÓu"ecru."ujqtvu."cpf"v-shirts; the registration recited a date of first use in commerce of 11 April 1984. The registration, for a trademark substantially the same as the applied-for mark of this Application, was subsequently cancelled for lack of a declaration under Section 8 of the Trademark Law of 1946. 10. On 13 April 1993, APB obtained U.S. certificate of trademark registration No. 3.986.6:6"hqt"vjg"yqtfu"ÐCndwswgtswg"FwmguÑ"kp"eqppgevkqp"ykvj."coqpi" other goods, clothing, namely caps, wind-resistant jackets, T-shirts, tank tops, wristbands, shorts, sweatshirts, shirts, and sweatbands, the registration reciting a date of first use in commerce of 13 April 1972. The registration was subsequently cancelled for lack of a declaration under Section 8 of the Trademark Law of 1946. 11. Upon information and belief, during the period 1984 to at least 2000, APB sold and distributed a variety of goods bearing the trademarks of the afore- mentioned Registration Nos. 1,764,626 and 1,764,484, and other similar or substantially related trademarks, such goods including but not limited to ice cream helmet cups, beverage tumblers, fabric patches, baseball cards, coffee cups, hats, jerseys, batting helmets, stir-ups, t-shirts, jackets, and socks. 2 of 10 12. The graphical device consisting of a caricature of a Spanish conquistador with vjg"ngvvgt"ÐCÑ"qp"vjg"jgnogv."cpf"vjg"yqtf"ÐFwmgu.Ñ"dgecog."cpf"ctg."ykfgn{" recognized in professional baseball nationally and in New Mexico as indicative of the Albuquerque Dukes baseball franchise and the presentation of baseball games by the Albuquerque Dukes baseball team, and continue to be associated in the minds of a relevant portion of the public with that franchise. 13. In 1999, APB was acquired by Portland Family Entertainment, Inc. After the 2000 Triple-A baseball season the APB franchise was relocated to Portland, Qtgiqp."cpf"ycu"tgpcogf"cpf"cuuwogf"vjg"vtcfg"pcog"ÐRqtvncpf"Dgcxgtu0Ñ 14. Upon information and belief, Portland Family Entertainment, Inc. was the corporate successor-in-interest to APB. 15. Upon information and belief, MountainStar Sports Group, Inc., is and presently remains the corporate successor-in-interest to Portland Family Entertainment, Inc. 16. Upon information and belief, goods, including but not limited to various clothing items such as hats, caps, T-shirts and coffee mugs or cups bearing the yqtfu"ÐCndwswgtswg"Fwmgu.Ñ"qt"vjg"yqtf"ÐFwmgu.Ñ"cpf1qt"vjg"itcrjkecn" fgxkeg"eqpukuvkpi"qh"c"ectkecvwtg"qh"c"Urcpkuj"eqpswkuvcfqt"ykvj"vjg"ngvvgt"ÐCÑ" on the helmet, continued to be manufactured and/or sold and/or distributed by persons, other than APB or Applicant, after the year 2000, and upon information and belief such sales continue to the present day. 17. Prior to its departure from Albuquerque in 2000, the Albuquerque Dukes baseball franchise was successful by nearly any standard, and popular among a wide and diverse base of devoted fans in Albuquerque and the American West. 18. The success and popularity of the Albuquerque Dukes franchise was and is widely attributed, in substantial part, to the management and day-to-day operation of the franchise by Pat McKernan. 19. As general manager of the Albuquerque Dukes franchise for approximately 21 years, Pat McKernan became widely associated with, and recognized as the 3 of 10 public face of, the Albuquerque Dukes, in the minds of fans of the team and franchise, and among professional baseball aficionados generally. 20. As a result of his management of and intimate association with the Albuquerque Dukes franchise, Pat McKernan became widely known and respected by persons involved in national and regional professional baseball leagues and associations. 21. Rcv"OeMgtpcp"ycu"tghgttgf"vq"cu"ÐOt0"DcugdcnnÑ"kp"vjg"Pgy"Ogzkeq"urqtvu" press and media due to his tremendous influence on and successful management of the Albuquerque Dukes franchise. 22. Local Albuquerque sports press has referref"kp"ytkvkpi"vq"Ðvjg"OeMgtpcp" family that has become synonymous with the Dukes . 0Ñ 23. Albuquerque Sports Stadium was renamed Isotopes Park and is now the home of the Albuquerque Isotopes Triple-A baseball franchise. 24. As a tribute to Pat McKernan, Isotopes Park presently contains a dedicated ÐOeMgtpcp"JcnnÑ"pcogf"chvgt"Rcv"OeMgtpcp"cpf"tgeqipk¦kpi"jku"tqng"kp" building successful professional baseball in New Mexico through his management of and devotion to the Albuquerque Dukes franchise. 25. The departure of the Albuquerque Dukes franchise from Albuquerque was a blow to community pride, and fans both inside and outside New Mexico continue to harbor feelings of loyalty and fondness to the Albuquerque Dukes baseball team and its accomplishments during the period 1979-2000. There presently are devotees of the former Albuquerque Dukes baseball franchise and traditions who recognize the trademarks used by the franchise and associate those marks with the franchise. 26. As recently as 2 April 2013, the first page of the sports section of the Albuquerque Journal featured a photograph of Pat McKernan, and an associated article contains quotes from a prominent local sports figure complimentary of Pat McKernan, his legacy in the Albuquerque community, and his contribution to and association with the success of the Albuquerque Dukes franchise and the ongoing success of professional baseball in Albuquerque.