Notice of Opposition Opposer Information Applicant Information

Trademark Trial and Appeal Board Electronic Filing System. <a href="/goto?url=http://estta.uspto.gov" target="_blank">http://estta.uspto.gov </a>ESTTA Tracking number: ESTTA683224 Filing date: 07/13/2015 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 <ul style="display: flex;"><li style="flex:1">Name </li><li style="flex:1">CCA & B, LLC </li></ul><ul style="display: flex;"><li style="flex:1">07/11/2015 </li><li style="flex:1">Granted to Date </li></ul>of previous extension <ul style="display: flex;"><li style="flex:1">Address </li><li style="flex:1">3350 Riverwood ParkwaySuite 300 </li></ul>Atlanta, GA 30339 UNITED STATES Attorney information James H. Johnson, Jr. Sutherland Asbill and Brennan LLP 999 Peachtree Street NESuite 2300 Atlanta, GA 30309 UNITED STATES [email protected], [email protected], [email protected], [email protected] Phone:404-853-8395 Applicant Information <ul style="display: flex;"><li style="flex:1">Application No </li><li style="flex:1">86472166 </li><li style="flex:1">Publication date </li><li style="flex:1">05/12/2015 </li></ul><ul style="display: flex;"><li style="flex:1">07/11/2015 </li><li style="flex:1">Opposition Filing </li></ul>Date <ul style="display: flex;"><li style="flex:1">07/13/2015 </li><li style="flex:1">Opposition Peri- </li></ul>od Ends Applicant Ardwin Products LLC 3017 Prairie Ave Royal Oak, MI 48073 UNITED STATES Goods/Services Affected by Opposition Class 028. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Plush dolls Grounds for Opposition <ul style="display: flex;"><li style="flex:1">False suggestion of a connection </li><li style="flex:1">Trademark Act section 2(a) </li></ul><ul style="display: flex;"><li style="flex:1">Trademark Act section 2(d) </li><li style="flex:1">Priority and likelihood of confusion </li></ul>Dilution Other Trademark Act section 43(c) Lack of bona fide intent to use the mark Marks Cited by Opposer as Basis for Opposition U.S. Registration No. <ul style="display: flex;"><li style="flex:1">3533459 </li><li style="flex:1">Application Date </li><li style="flex:1">01/10/2008 </li></ul><ul style="display: flex;"><li style="flex:1">NONE </li><li style="flex:1">Registration Date </li><li style="flex:1">11/18/2008 </li><li style="flex:1">Foreign Priority </li></ul>Date <ul style="display: flex;"><li style="flex:1">Word Mark </li><li style="flex:1">THE ELF ON THE SHELF </li></ul>Design Mark Description of Mark NONE <ul style="display: flex;"><li style="flex:1">Goods/Services </li><li style="flex:1">Class 016. First use: First Use: 2005/10/01 First Use In Commerce: 2005/10/01 </li></ul>Children's activity books; Children's books Class 028. First use: First Use: 2005/10/01 First Use In Commerce: 2005/10/01 Dolls and children's books, sold as a unit U.S. Registration No. <ul style="display: flex;"><li style="flex:1">3553223 </li><li style="flex:1">Application Date </li><li style="flex:1">03/18/2008 </li></ul><ul style="display: flex;"><li style="flex:1">NONE </li><li style="flex:1">Registration Date </li><li style="flex:1">12/30/2008 </li><li style="flex:1">Foreign Priority </li></ul>Date <ul style="display: flex;"><li style="flex:1">Word Mark </li><li style="flex:1">THE ELF ON THE SHELF </li></ul>Design Mark Description of Mark The mark consists of the words the ELF on the SHELF". The word "the" appears in red lower-case lettering. Directly below the word "the" appears the word "ELF" which consists of yellow upper-case lettering outlined in red. Directly belowthe word "ELF" appears the words "on the" which consist of red lower-case lettering. Directly below the words "on the"appears the word "SHELF" which appears in yellow upper-case lettering outlined in red. <ul style="display: flex;"><li style="flex:1">Goods/Services </li><li style="flex:1">Class 016. First use: First Use: 2005/09/01 First Use In Commerce: 2005/09/01 </li></ul>Children's activity books; Children's books Class 028. First use: First Use: 2005/09/01 First Use In Commerce: 2005/09/01 Dolls and children's books, sold as a unit U.S. Registration No. <ul style="display: flex;"><li style="flex:1">4626171 </li><li style="flex:1">Application Date </li><li style="flex:1">10/15/2013 </li></ul><ul style="display: flex;"><li style="flex:1">NONE </li><li style="flex:1">Registration Date </li><li style="flex:1">10/21/2014 </li><li style="flex:1">Foreign Priority </li></ul>Date <ul style="display: flex;"><li style="flex:1">Word Mark </li><li style="flex:1">THE ELF ON THE SHELF </li></ul>Design Mark Description of Mark NONE <ul style="display: flex;"><li style="flex:1">Goods/Services </li><li style="flex:1">Class 003. First use: First Use: 2013/09/01 First Use In Commerce: 2013/09/01 </li></ul>Cosmetics U.S. Application No. <ul style="display: flex;"><li style="flex:1">86276531 </li><li style="flex:1">Application Date </li><li style="flex:1">05/09/2014 </li></ul><ul style="display: flex;"><li style="flex:1">NONE </li><li style="flex:1">Registration Date </li><li style="flex:1">NONE </li><li style="flex:1">Foreign Priority </li></ul>Date <ul style="display: flex;"><li style="flex:1">Word Mark </li><li style="flex:1">THE ELF ON THE SHELF </li></ul>Design Mark Description of Mark NONE <ul style="display: flex;"><li style="flex:1">Goods/Services </li><li style="flex:1">Class 011. First use: First Use: 0 First Use In Commerce: 0 </li></ul>Flameless candles Class 014. First use: First Use: 0 First Use In Commerce: 0 Jewelry, namely, bracelets, earrings, necklaces and watches Class 016. First use: First Use: 0 First Use In Commerce: 0 Window decor, namely, window cling decals Class 020. First use: First Use: 0 First Use In Commerce: 0 Decorative pillows Class 021. First use: First Use: 0 First Use In Commerce: 0 Vases Class 024. First use: First Use: 0 First Use In Commerce: 0 Blankets, namely, bedding blankets and throw blankets Class 025. First use: First Use: 0 First Use In Commerce: 0 Clothing, namely, sleepwear, underwear,shirts, pants, socks, dresses, hats, hooded blankets, hooded ponchos, wearable throws in the nature of throws with sleeves, headbands, head wraps Class 026. First use: First Use: 0 First Use In Commerce: 0 Hair accessories, namely, hair ties, hair pins and hair clips U.S. Application No. <ul style="display: flex;"><li style="flex:1">86688571 </li><li style="flex:1">Application Date </li><li style="flex:1">07/09/2015 </li></ul><ul style="display: flex;"><li style="flex:1">NONE </li><li style="flex:1">Registration Date </li><li style="flex:1">NONE </li><li style="flex:1">Foreign Priority </li></ul>Date <ul style="display: flex;"><li style="flex:1">Word Mark </li><li style="flex:1">THE ELF ON THE SHELF </li></ul>Design Mark Description of Mark NONE <ul style="display: flex;"><li style="flex:1">Goods/Services </li><li style="flex:1">Class 014. First use: First Use: 0 First Use In Commerce: 0 </li></ul>Jewelry U.S. Application No. <ul style="display: flex;"><li style="flex:1">86688533 </li><li style="flex:1">Application Date </li><li style="flex:1">07/09/2015 </li></ul><ul style="display: flex;"><li style="flex:1">NONE </li><li style="flex:1">Registration Date </li><li style="flex:1">NONE </li><li style="flex:1">Foreign Priority </li></ul>Date <ul style="display: flex;"><li style="flex:1">Word Mark </li><li style="flex:1">THE ELF ON THE SHELF </li></ul>Design Mark Description of Mark NONE <ul style="display: flex;"><li style="flex:1">Goods/Services </li><li style="flex:1">Class 011. First use: First Use: 2011/05/00 First Use In Commerce: 2011/05/00 </li></ul>Electric night lights; Electrically-lighted yard decorations Class 016. First use: First Use: 2013/10/01 First Use In Commerce: 2013/10/01 Gift bags; Gift wrap; Gift tags; Gift boxes; Stickers; Calendars; Art pictures Class 020. First use: First Use: 2013/08/01 First Use In Commerce: 2013/08/01 Picture frames; Outdoor inflatable decorations; Plastic cake toppers and decorations Class 021. First use: First Use: 2011/08/01 First Use In Commerce: 2011/08/01 Candy boxes; Drinking cups; Ceramic plates and bowls; Cookie pans, cake molds Class 024. First use: First Use: 2011/08/01 First Use In Commerce: 2011/08/01 Placemats; Table runners; Cotton and polyester fabric; Textile wall hangings; Fabric elf characters Class 025. First use: First Use: 2014/09/01 First Use In Commerce: 2014/09/01 Costumes for use in dress-up play Class 026. First use: First Use: 2014/09/30 First Use In Commerce: 2014/09/30 Shoe ornaments Class 028. First use: First Use: 2009/09/04 First Use In Commerce: 2009/09/04 Playing cards; Memory games; Board games; Party games; Puzzles; Christmas tree skirts; Plush dolls; Christmas tree ornaments; Snow globes; Toy miniature buildings; Figurines; Craft kits for making Christmas stockings Class 030. First use: First Use: 2013/08/01 First Use In Commerce: 2013/08/01 Hot chocolate; Cookies; Gingerbread houses; Candy decorations for cakes; Chocolate <ul style="display: flex;"><li style="flex:1">Attachments </li><li style="flex:1">77368580#TMSN.png( bytes ) </li></ul>77424678#TMSN.png( bytes ) 86092146#TMSN.png( bytes ) 86276531#TMSN.png( bytes ) 86688571#TMSN.png( bytes ) 86688533#TMSN.png( bytes ) Notice of Opposition - MONSTER ON THE SHELF1.pdf(5931587 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 Name /James H. Johnson, Jr./ James H. Johnson, Jr. <ul style="display: flex;"><li style="flex:1">07/13/2015 </li><li style="flex:1">Date </li></ul>IN THE UNITED STATES PATENT AND TRADEMARK OFFICE TRADEMARK TRIAL AND APPEAL BOARD CCA and B, LLC OPPOSITION NUMBER: Opposer, v. Ardwin Products LLC Applicant. ____________________________________ Attn: Trademark Trial & Appeal Board Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451 NOTICE OF OPPOSITION CCA and B, LLC, a Georgia limited liability company with a principal place of business at 3350 Riverwood Parkway, Atlanta, Georgia, 30339 (“CCA&B” or “Opposer”) believes it would be damaged by the registration of the mark THE MONSTER ON THE SHELF for “plush dolls” shown in Application Serial No. 86/472,166 by Ardwin Products LLC (“Ardwin Products” or “Applicant”) and hereby opposes the same. As grounds for opposition, Opposer alleges as follows: -1- PROCEDURAL HISTORY 1. Applicant filed a trademark application assigned Application Serial No. 86/472,166 (the “Application)” in the United States Patent and Trademark Office to register the mark THE MONSTER ON THE SHELF for use in connection with the sale of “plush dolls” in International Class 28 on December 5, 2014. 2. The Application was based on Applicant’s alleged intent to use the mark THE MONSTER ON THE SHELF in connection with the sale of Applicant’s goods in interstate commerce; by and through the Application, Applicant seeks registration for THE MONSTER ON THE SHELF as a mark for Applicant’s goods. 3. The Application was published for Opposition in the Official Gazette of May 11, 2015. 4. On May 12, 2015, Opposer timely filed a request for a 30-day extension of time to oppose the Application for Applicant’s mark. The Trademark Trial and Appeal Board granted Opposer an extension of time to oppose until July 11, 2015. July 13, 2015, is the first business day following July 11, 2015, which was a Saturday. BACKGROUND OF OPPOSER 5. CCA&B is a family owned and operated publishing company, founded by Carol Aebersold with her daughters Chanda Bell and Christa Pitts. 6. In 2005, Aebersold and Bell co-authored a children’s book entitled “The Elf on the Shelf: A Christmas Tradition,” which continues to be published, marketed, and sold throughout the United States. 7. “The Elf on the Shelf: A Christmas Tradition” is always sold alongside a plush “Scout Elf” doll. -2- 8. In connection with continued sale of its Scout Elf dolls and children’s book, CCA&B obtained a registration from the United States Patent and Trademark Office for the word mark THE ELF ON THE SHELF, No. 3533459, on November 18, 2008. 9. The registration for THE ELF ON THE SHELF word mark is valid and incontestable pursuant to 15 U.S.C. §§ 1065 and 1115(b). 10. CCA&B owns a second registration from the United States Patent and Trademark Office for the design plus word mark for the stylized version of its THE ELF ON THE SHELF trademark, No. 3553223, registered on December 30, 2008. 11. The registration for THE ELF ON THE SHELF design mark is valid and incontestable pursuant to 15 U.S.C. §§ 1065 and 1115(b). 12. Registrations 3533459 and 3553223 for THE ELF ON THE SHELF are for goods in international classes 16 and 28, covering “children’s activity books; children’s books; and dolls and children’s books, sold as a unit.” 13. In November 2013, CCA&B launched a new THE ELF ON THE SHELF children’s book entitled “The Elf on the Shelf: A Birthday Tradition.” 14. Since launching the Christmas book and doll, CCA&B has been continually expanding its THE ELF ON THE SHELF brand. CCA&B is actively licensing THE ELF ON THE SHELF trademark for use on more than a hundred different licensed products. 15. CCA&B holds a valid trademark registration for THE ELF ON THE SHELF word mark in international class 3 for cosmetics, Reg. no. 4,626,171, and has pending applications for the same mark in classes 11, 14, 16, 20, 21, 24, 25, 26, 28, and 30 (Apps. -3- 86/276,5311; 86/688,571; and 86/688,533) for a wide variety of other goods and services, including “plush dolls.” 16. CCA&B has sold “plush dolls” in connection with THE ELF ON THE SHELF trademark since at least September 4, 2009. A true and correct screenshot of CCA&B’s plush doll offered for sale through an authorized Internet retailer is attached hereto as Exhibit A. 17. CCA&B has expended substantial time, effort, and money to advertise and publicize THE ELF ON THE SHELF, and to foster the public’s identification of its THE ELF ON THE SHELF mark with CCA&B’s products. 18. Opposer’s THE ELF ON THE SHELF brand is primary marketed to families with small children. 19. Products bearing THE ELF ON THE SHELF marks are sold through both brick and mortar retail stores and via the Internet. 20. For the past three years, CCA&B’s Scout Elf doll giant balloon character has directly preceded Santa Claus in the Annual Macy’s Thanksgiving Day Parade, watched by more than 3.5 million live spectators and more than 50 million additional television viewers all over the world. A true and correct copy of NBC Universal’s press release for the 88th Annual Macy’s Thanksgiving Day Parade® is attached hereto as Exhibit B. 21. In December 2014, “The Elf on the Shelf: A Christmas Tradition” reached number one on USA Today’s bestseller list for the second year in a row. USA Today has called THE ELF ON THE SHELF “as ubiquitous as Santa himself.” A true and correct copy of the USA Today article is attached hereto as Exhibit C. 1 App. 86/276,531 has published, received a notice of allowance, and Opposer has filed a Statement of Use with accompanying specimens. Opposer believes the registration for this application will issue during the pendency of the Opposition. -4- 22. As a result of the extensive promotion by CCA&B, and CCA&B’s careful attention to quality, CCA&B has created substantial goodwill and value in THE ELF ON THE SHELF trademark. 23. By virtue of extensive advertising, promotion and sales in interstate commerce, THE ELF ON THE SHELF has become widely recognized by the general consuming public of the United States as a designation of source of CCA&B’s products. 24. THE ELF ON THE SHELF is a famous mark. BACKGROUND ON OPPOSER CCA & B 25. Upon information and belief, Applicant is primarily in the business of manufacturing, marketing, and selling pet toys. 26. Applicant’s pet toys are primarily distributed via direct sales over the Internet, and also at several brick and mortar independent retailers. 27. Applicant is the owner of two registered trademarks, UNBREAKOBALL (Reg. No. 3,940,901) and GOT BALLS? (Reg. No. 4,629,821), both registered in international class 28 for pet toys. 28. Applicant <a href="/goto?url=http://www.unbreakoball.com>, selling" target="_blank">operates a website at <www.unbreakoball.com>, selling its signature </a> UNBREAKOBALL2 along with various other types of toys, including plush dolls. A true and correct screenshot of Applicant’s website is attached hereto as Exhibit D. 29. Upon information and belief, Applicant is not yet selling any product under the designation THE MONSTER ON THE SHELF. 2 Opposer expresses concern over the fact that Applicant claims on its website that “Unbreakoball is patent pending” when the date of first use in Reg. 3,940,901 is in 2010, and no patent application naming Ardwin Products as assignee, or Thor Ardwin as inventor, has ever published. -5- 30. Applicant’s priority date for THE MONSTER ON THE SHELF can only go back as early as December 5, 2014, many years after Opposer’s THE ELF ON THE SHELF mark was first used, registered, and became famous. STANDING 31. Opposer alleges it has a direct stake in the outcome of the present proceeding, and will suffer injury in fact through the registration of the Application. ARGUMENTS Likelihood of Confusion – Lanham Act § 2(d) – 15 U.S.C. § 1052(d) 32. Paragraphs 1–31 are incorporated herein by reference. 33. Numberous factors establish the likelihood that Applicant’s proposed mark will cause confusion as prohibited under 15 U.S.C. § 1052(d). 34. Applicant’s mark is in the same format as Opposer’s mark, namely, “THE [SUBJECT] ON THE SHELF” and shares four of the same five words, presented in identical order. 35. There are no registered trademarks for any other goods in the format of “THE [SUBJECT] ON THE SHELF” other than those belonging to Opposer. 36. The dominant portion of both Applicant’s and Opposer’s multi-word mark is the arbitrary use of “ON THE SHELF.” 37. The only difference between Applicant’s mark and Opposer’s mark is the use of the word “monster” instead of the word “elf.” 38. Merriam-Webster dictionary defines a “monster” as “a strange or horrible imaginary creature.” A true and correct copy of the Merriam-Webster definition of “monster” is attached hereto as Exhibit E. -6- 39. Similarly, the Oxford English Dictionary defines “elf” as “a class of supernatural beings . . . [that] possess formidable magical powers for the benefit or the injury of mankind.” A true and correct copy of the Oxford English Dictionary definition of “elf” is attached hereto as Exhibit F. 40. Dungeons and Dragons, the world’s most popular role-playing game, recognizes an “elf” is one kind of “monster.” The Dungeons and Dragons “Monster Manual” lists “elf” as one of the many “monsters” one might encounter in the game. A true and correct reproduction of the relevant entry in the “Dungeons and Dragons® Monster Manual Core Rulebook III v.3.5” is attached hereto as Exhibit G. 41. “Monsters” are part of a broad group of imaginary creatures, of which an “elf” is one typical kind. 42. THE MONSTER ON THE SHELF conveys to consumers the same overall meaning as THE ELF ON THE SHELF. 43. Applicant’s mark and Opposer’s mark are similar as to appearance, sound, connotation, and overall commercial impression. 44. Opposer is entitled to a wide latitude of protection for its famous THE ELF ON THE SHELF mark, which may be “the dominant factor in the likelihood of confusion analysis . . . independent of the relatedness of the goods.” Recot, Inc. v. M.C. Benton, 214 F.3d 1322, 1328, 54 USPQ2d 1894, 1989 (Fed. Cir. 2000). 45. Applicant proposes to use the applied-for mark in connection with the sale of “plush dolls,” which is a similar and/or related (if not identical) good to which Opposer affixes its marks. -7- 46. Upon information and belief, Applicant offers its current goods, at least in part, to the same, substantially the same, or related classes of purchasers as Opposer, namely families with small children. 47. Upon information and belief, Applicant intends to market its “plush dolls” to the same, substantially the same, or related classes of purchasers as Opposer, namely, families with small children. 48. Applicant’s current goods and Opposer’s goods travel in the same or similar established trade channels, namely, over the Internet. 49. Applicant’s use of THE MONSTER ON THE SHELF is intended to trade off of the goodwill associated with Opposer’s THE ELF ON THE SHELF mark and is intended to evoke Opposer’s mark. 50. Opposer’s THE ELF ON THE SHELF is a strong mark. 51. Upon information and belief, Applicant is unable to establish priority of use or priority of rights in the United States over Opposer in regards to its trademark application. 52. Applicant’s THE MONSTER ON THE SHELF mark so resembles Opposer’s registered marks as to be likely, when used on or in connection with plush dolls, to cause confusion or mistake, or to deceive consumers as to the source or origin of the goods. False Association or Endorsement – Lanham Act § 2(a) – 15 U.S.C. § 1052(a) 53. Paragraphs 1–52 of the Opposition are incorporated herein by reference. 54. Applicant’s mark is the same or is a close approximation of Opposer’s registered trademarks. 55. Upon information and belief, consumers will immediately recognize Applicant’s mark as a close approximation of Opposer’s mark, its business, and products. -8- 56. Opposer’s registered trademarks are sufficiently famous such that Applicant’s registration and/or use of the applied-for mark is likely to create a presumed connection to Opposer, its business, and products in the minds of consumers. 57. Opposer has no affiliation, association, or connection, past or present, with the Applicant, and has not authorized Applicant to use its trademark, nor does Applicant have the consent, sponsorship, approval or certification of Opposer. 58. Applicant’s use of a mark substantially similar to Opposer’s mark is likely to create a false impression of sponsorship, affiliation, and/or connection between Applicant’s and Opposer’s businesses and/or products. Dilution by Blurring – Lanham Act § 13(a) & 43(c) – 15 U.S.C. § 1063(a) & 1125(c)

Notice of Opposition Opposer Information Applicant Information

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