Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA896173 Filing date: 05/11/2018 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 Emmanuel Gazmey-Santiago Granted to Date 05/12/2018 of previous ex- tension Address 149 Calle CM3Jardines de Country Club Carolina, PR 00983 UNITED STATES Attorney informa- Javier Villar-Rosa tion Prado, Nunez & Associates, PSC 403 Calle del Parque 8th Floor San Juan, PR 00912 UNITED STATES Email: [email protected], [email protected] Phone: 7879771411 Applicant Information Application No 87455709 Publication date 03/13/2018 Opposition Filing 05/11/2018 Opposition Peri- 05/12/2018 Date od Ends Applicant TIME IS MONEY PRODUCTION INC. 6326 Kearce St. Orlando, FL 32807 UNITED STATES Goods/Services Affected by Opposition Class 009. First Use: 2016/04/00 First Use In Commerce: 2016/04/00 All goods and services in the class are opposed, namely: Sound recordings, video recordings, andau- dio-visual recordings featuring music; Digital music and video featuring music and musical perform- ances downloadable from the Internet; Sound recording, video recordings, and audio-visual record- ings featuring artistic performances Class 041. First Use: 2016/03/00 First Use In Commerce: 2016/03/00 All goods and services in the class are opposed, namely: Entertainment services in the nature oflive performances by a musical artist Grounds for Opposition Fraud on the USPTO In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009) Related Proceed- Gazmey-Santiago et al. v. Suarez et al., Civil Case No. 17-01650-ADC, now ings pending before the United States District Court for the District of Puerto Rico. Attachments Notice of Opposition - Real Hasta La Muerte Anuel AA.pdf(65690 bytes ) Exhibit 1 - SS Anuel AA.pdf(253129 bytes ) Exhibit 2 - PRTO Real Hasta La Muerte TM Application.pdf(93890 bytes ) Exhibit 3 - SS Jose Gazmey.pdf(176016 bytes ) Exhibit 4 - Amended Federal Complaint PR.pdf(152245 bytes ) Exhibit 5 - Docket Report Federal Complaint PR.pdf(214849 bytes ) Exhibit 6 - SS Ramon Luis Otero Lopez.pdf(148626 bytes ) Signature /jvr/ Name Javier Villar-Rosa Date 05/11/2018 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Emmanuel Gazmey-Santiago p/k/a Anuel AA Opposer Opposition No. v. Re: Fraudulent Application Time Is Money Production Inc. Applicant Notice of Opposition COMES NOW, Emmanuel Gazmey-Santiago, before this Honorable United States Trademark Trial and Appeal Board and, through the undersigned counsel, respectfully opposes the application for trademark registration Serial No. 87455709 under 37 CFR PART 2 § 2104 and § 13 of the Lanham Act,15 U.S.C. § 1063. In the matter of the application for registration of the mark "Real Hasta La Muerte" for Sound recordings, video recordings, and audio-visual recordings featuring music; Digital music and video featuring music and musical performances downloadable from the Internet; Sound recording, video recordings, and audio-visual recordings featuring artistic performances, in International Class 41, and for Entertainment services in the nature of live performances by a musical artist, in International Class 9, filed on May 18, 2017 by Applicant, Time Is Money Production, Inc., and published for opposition in the Official Gazette on March, 13, 2018, Opposer, Emmanuel Gazmey-Santiago, believes that he would be damaged by such registration, and hereby opposes such registration. -1- I. Synopsis: Opposition is filed on the basis that Mr. Emmanuel Gazmey-Santiago is the lawful owner of the trademark at issue, while applicant Time is Money Production Inc. has fraudulently alleged entitlement to ownership. II. Brief statement of factual allegations: 1. Opposer Emmanuel Gazmey-Santiago is an internationally recognized artist that goes by the stage name "Anuel AA" and who was born on November 26, 1992. See the link: https://youtu.be/4DZ4YLsICqQ, including Opposer’s use of the trademark “Real Hasta La Muerte” at 17 seconds. 2. Emmanuel Gazmey-Santiago created and first used the trademark / slogan phrase "Real Hasta La Muerte" since at least the year January 1, 2009 in connection with the promotion and furtherance of his musical career. See Exhibit 1 - Sworn statement by Anuel AA and internet link above. 3. Mr. Gazmey-Santiago is prepared to present this Honorable Board with substantial and robust proof of his continued and exclusive use in commerce of the trademark and slogan phrase "Real Hasta La Muerte" since its creation to this day. Such evidence includes, but is not limited to, Opposer’s application number 218273-41- 1 for the local trademark registration of the phrase “Real Hasta La Muerte” pending before the Puerto Rico Department of State Trademark Office or (PRTO). See Exhibit 2 – Summary of Opposer’s trademark application before the PRTO. -2- 4. On or around the year 2019 and when he was still a minor, Mr. Gazmey-Santiago was approached by Mr. Carlos Suárez who offered to promote his music and help improve his career. 5. Upon information and belief, Mr. Carlos Suárez is the president and/or director and officer of the entity Maybach Music Latino (“MML”) which is a sub-division of Maybach Music Group, L.L.C., a record label imprint founded by artist William Leonard Roberts, II (“Rick Ross”). 6. Upon information and belief, Time is Money Production Inc. is a corporation somehow affiliated to and controlled by Mr. Carlos Suárez and MML. 7. Currently, Emmanuel Gazmey-Santiago and Mr. Carlos Suárez are not business associates, and Opposer moreover alleges they never were. 8. Emmanuel Gazmey-Santiago has no affiliation whatsoever with trademark Applicant Time is Money Production Inc. 9. Emmanuel Gazmey-Santiago has never authorized applicant Time is Money Production Inc. to prosecute trademark applications on his behalf. 10. There was no enforceable contract between Mr. Gazmey-Santiago and Mr. Carlos Suárez prior to the filing date of the trademark application at issue. Any alleged agreement along those lines was merely the object of non-binding pronouncements that took place while Opposer was a minor and without the approval of his parents. However, and this fact notwithstanding, Applicant has not and cannot produce any authentic material contract signed by Opposer. 11. Emmanuel Gazmey-Santiago can establish this fact by way of the sworn testimony of his father, José Gazmey, who is also his current business associate, and the -3- expert testimony of a professional calligraphist willing to testify in this proceeding. Also, see Exhibit 3 – Sworn Statement by José Gazmey. 12. Notwithstanding the lack of existence of an enforceable contract, Mr. Gazmey- Santiago and Mr. Carlos Suárez and MML have engaged in a legal dispute based upon accounting and copyright infringement matters. 13. Moreover, Mr. José Gazmey has made a timely notice of such claims, including protesting the fact that Mr. Carlos Suárez is making an unlawful appropriation of his son’s trademarks. See Exhibit 3, paragraph 4 through 12. 14. These matters became obvious when on May 16, 2017, Mr. Gazmey-Santiago and his father, (henceforth the “Gazmeys”), filed a lawsuit which is now pending before the United States District Court for the District of Puerto Rico, Gazmey-Santiago et al. v. Suarez et al., Civil Case No. 17-01650-ADC (PRDC). 15. The Amended Complaint in that case is attached herein as Exhibit 4 and the docket report for the case as of this month as Exhibit 5. 16. Notice Cause of Action C of the Amended Complaint which alleges misappropriation of image and likeness. See Exhibit 4, Pg. 13. 17. This Honorable Board should take notice that the present application was filed two days after the filing of the aforementioned lawsuit. 18. On top of that, applicant Time Is Money Production Inc. made an unsuccessful attempt to register Mr. Gazmey-Santiago's artistic name "Anuel AA" under trademark application serial number 87455638. -4- 19. Given trademark application was abandoned on February 22, 2018, when applicant was unable to respond to an office action requesting submission of the required sworn statement by Mr. Gazmey-Santiago. 20. In the scope of the legal dispute described above, Mr. Carlos Suárez has produced a contract which the Gazmeys’ have already alleged affirmatively before federal court is void as it includes a forged signature. See Exhibit 5, pg. 5, document 33 filed on February 9, 2018 and entitled “Opposition to Motion to Dismiss”. 21. Conscious of his precarious legal position, Mr. Carlos Suárez has unsuccessfully resorted to pleading with some of the Gazmeys' friends and associates, so that they may serve him to establish the validity of certain alleged contractual terms. One such example can be corroborated with the sworn statement submitted by author and musician Ramón Luis Otero López, which is attached herein as Exhibit 6. Notice how Mr. Otero López rejected Mr. Carlos Suárez’ pretensions. 22. Mr. Carlos Suárez’ has also failed to succeed with his false claim before the Federal District Court in Puerto Rico that he has a contractual right over Anuel AA’s career, since even by his own admission and assuming, arguendo, that there was once an enforceable contract between the parties, said alleged contract has long since expired by virtue of its own terms. See Exhibit 3, paragraph 5. III. Applicable Law: Federal law does not create trademarks; trademarks and their precursors have ancient origins, and trademarks were protected at common law and in equity at the time of the founding of our country. Matal v. Tam, 137 S. Ct. 1744, 198 L. Ed. 2d 366 (2017). Without federal registration, a valid trademark may still be used in commerce and can be -5- enforced against would-be infringers in several ways, the most important of which is that, even if a trademark is not federally registered, it may still be enforceable under the Lanham Act, which creates a federal cause of action for trademark infringement.