Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1121082 Filing date: 03/17/2021 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 Disney Enterprises, Inc. Entity Corporation Citizenship Delaware Address 500 SOUTH BUENA VISTA STREET BURBANK, CA 91521 UNITED STATES Attorney informa- LINDA K. MCLEOD tion KELLY IP, LLP 1300 19TH STREET, NW, SUITE 300 WASHINGTON, DC 20036 UNITED STATES Primary Email: [email protected] Secondary Email(s): [email protected], [email protected] No phone number provided. Docket Number Applicant Information Application No. 90167345 Publication date 02/16/2021 Opposition Filing 03/17/2021 Opposition Peri- 03/18/2021 Date od Ends Applicant Li Guoyang FAN VILLAGE, BAIHE TOWN, MENGJIN COUNTY HENAN PROVINCE, 471100 CHINA Goods/Services Affected by Opposition Class 024. First Use: 2020/08/12 First Use In Commerce: 2020/08/12 All goods and services in the class are opposed, namely: Bedspreads; Coverlets; Pillowcases; Quilts; Baby buntings; Banners of textile or plastic; Bath towels; Bed blankets; Bed covers; Bed linen; Bed sheets of plastic, not being incontinence sheets; Bed skirts; Blankets for household pets; Coasters of textile; Cotton fabric; Curtain holders of textile material; Curtains oftextile or plastic; Door curtains; Drugget fabric; Felts; Flags of textile or plastic; Household linen; Linen for household purposes; Mat- tress covers; Moistureabsorbent microfiber towels for floor use; Mosquito nets; Net curtains; Oilcloth for use as tablecloths; Pillow covers;Pillow shams; Place mats of textile; Printers' blankets of textile; Quilt covers; Shower curtains of textile or plastic; Silk blankets; Silk fabrics; Silk fabrics for printing patterns; Sleeping bags; Sleeping bags for babies; Table runners of textile; Tablecloths, not of pa- per;Tablemats of textile; Tapestries of textile; Towels of textile; Travelling rugs; Wall hangings of tex- tile; Woollen blankets; Bed sheets; Bed sheets, fitted bedsheet covers, bed flat sheets, and pillow cases used in the bedding, health care, home-health care and nursing home industries made of bio- degradable film created from renewable bio-polymer resources;Canvas for tapestry or embroidery; Handspun silk fabrics; Natural and synthetic fabrics and textiles, namely, cotton, silk, polyester and nylon fabrics; Non-woven fabrics and felts; Silk bed blankets; Spun silk fabrics Grounds for Opposition Priority and likelihood of confusion Trademark Act Section 2(d) Dilution by blurring Trademark Act Sections 2 and 43(c) Other Void ab Initio 15 U.S.C. 1051(a), 1127 Marks Cited by Opposer as Basis for Opposition U.S. Application/ Registra- NONE Application Date NONE tion No. Registration Date NONE Word Mark TIM BURTONÂ#S THE NIGHTMARE BEFORE CHRISTMAS Goods/Services Entertainment services, motion picture films, posters, digital media, namely, pre-recorded downloadable audio and video recordings, CDs, DVDs, Blu-rays, apparel, pins, backpacks, chopping boards, lunch plates, slow cookers, shower curtains, pillows, comforters, blankets, bedding, and all the goods and services set forth in the Notice of Op- position. U.S. Application/ Registra- NONE Application Date NONE tion No. Registration Date NONE Word Mark THE NIGHTMARE BEFORE CHRISTMAS Goods/Services Entertainment services, motion picture films, posters, digital media, namely, pre-recorded downloadable audio and video recordings, CDs, DVDs, Blu-rays, apparel, pins, backpacks, chopping boards, lunch plates, slow cookers, shower curtains, pillows, comforters, blankets, bedding, and all the goods and services set forth in the Notice of Op- position. Attachments NIGHTMARE BEFORE CHRISTMAS - NOO_Part1.pdf(4890572 bytes ) NIGHTMARE BEFORE CHRISTMAS - NOO_Part2.pdf(4003807 bytes ) Signature /Linda K. McLeod/ Name LINDA K. MCLEOD Date 03/17/2021 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD DISNEY ENTERPRISES, INC., Opposition No.: Opposer Mark: NIGHTMARE BEFORE v. CHRISTMAS Serial No.: 90167345 LI GUOYANG, Filed: September 9, 2020 Applicant. NOTICE OF OPPOSITION Opposer, Disney Enterprises, Inc. (“Opposer”), a corporation of the State of Delaware, having a principal place of business at 500 South Buena Vista Street, Burbank, California, 91521, believes that it is being damaged, and will be damaged, by the registration of Li Guoyang’s (“Applicant”) NIGHTMARE BEFORE CHRISTMAS mark shown in Application Serial No. 90167345, and hereby opposes the same. As grounds for opposition, Opposer alleges that, upon actual knowledge with respect to Opposer’s own acts, and upon information and belief as to other matters: Opposer and its Business 1. Opposer, Disney Enterprises, Inc., is a corporation of the State of Delaware, having a principal place of business at 500 South Buena Vista Street, Burbank, California, 91521. 2. Opposer, through its related companies and licensees, is one of the world’s leading producers and providers of entertainment, films, music, and consumer products. Opposer engages in a vast licensing program under which it uses or licenses the use of its properties and characters in connection with a wide variety of products Application Serial No. 90167345 and services including, but not limited to, entertainment services, motion picture films, posters, household textiles, paper products, toys, apparel, jewelry, food items, music, and mobile applications, among many other things. Opposer’s THE NIGHTMARE BEFORE CHRISTMAS Film and Rights in Its NIGHTMARE BEFORE CHRISTMAS Mark 3. Since as early as 1993, Opposer has used the trademark THE NIGHTMARE BEFORE CHRISTMAS, TIM BURTON’S THE NIGHTMARE BEFORE CHRISTMAS and variations thereof (collectively, the “NIGHTMARE BEFORE CHRISTMAS Mark”) in commerce in connection with a wide variety of products and services. 4. Opposer’s NIGHTMARE BEFORE CHRISTMAS Mark first appeared in connection with Opposer’s 1993 stop-motion animation feature film Tim Burton’s The Nightmare Before Christmas, originally released under Opposer’s feature film label Touchstone Pictures, as shown below. The film tells the story of Jack Skellington, the Pumpkin King of Halloween Town, who accidentally finds Christmas Town and becomes obsessed with celebrating Christmas. The film has been enormously successful, earning over 91 million dollars worldwide since its initial 1993 release, winning major awards, including the Saturn Award for Best Fantasy Film, and garnering nominations for Academy Award for Best Visual Effects and Golden Globe Award for Best Original Score, among others. The film also received significant unsolicited media attention in, among other sources, Los Angeles Times, Variety, Rolling Stone, and The New York Times. 2 Application Serial No. 90167345 5. Opposer subsequently released prerecorded films under the NIGHTMARE BEFORE CHRISTMAS Mark for several years between 1997 and 2018. 6. Since well before the September 9, 2020 filing date of the opposed application, Applicant’s claimed August 12, 2020 date of first use, and any dates of first use that may be proven by Applicant, Opposer and/or its licenses have offered and promoted a wide variety of consumer products under the NIGHTMARE BEFORE CHRISTMAS Mark including, but not limited to, DVDs, Blu-Rays, apparel, pins, backpacks, chopping boards, lunch plates, and slow cookers, as shown in the representative examples below. 3 Application Serial No. 90167345 4 Application Serial No. 90167345 5 Application Serial No. 90167345 7. Since well before the September 9, 2020 filing date of the opposed application, Applicant’s claimed August 12, 2020 date of first use, and any dates of first use that may be proven by Applicant, Opposer has used its NIGHTMARE BEFORE CHRISTMAS Mark in connection with a wide variety of household textile products including shower curtains, pillows, comforters, blankets, and bedding, as shown in the representative examples below. 6 Application Serial No. 90167345 7 Application Serial No. 90167345 (The goods and services identified in Paragraphs 5-7 are collectively referred to as “Opposer’s Goods and Services.”) 8. Opposer and/or its licensees and related companies have spent considerable effort and resources advertising and promoting Opposer’s NIGHTMARE BEFORE CHRISTMAS Mark in connection with Opposer’s Goods and Services. As a result of these efforts, Opposer has established a strong association and identification in the minds of the public between Opposer, Opposer’s Goods and Services, and Opposer’s NIGHTMARE BEFORE CHRISTMAS Mark. 9. Through its long use of Opposer’s NIGHTMARE BEFORE CHRISTMAS Mark for more than a decade, enormous commercial success of Opposer’s NIGHTMARE BEFORE CHRISTMAS film and entertainment franchise, substantial advertising, and extensive media attention and publicity, Opposer has developed substantial and valuable goodwill in Opposer’s NIGHTMARE BEFORE CHRISTMAS Mark, and it has long been well-known and famous. Applicant and Its NIGHTMARE BEFORE CHRISTMAS Mark 10. Applicant Li Guoyang (“Applicant”) is an individual with an address of Fan Village, Baihe Town, Mengjin County Henan Province, China 471100. 8 Application Serial No. 90167345 11. Applicant is the listed owner of Application No. 90167345 (the “Application”), filed on September 9, 2020 under Section 1(a), 15 U.S.C. § 1051(a), for the