Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1027765 Filing date: 01/09/2020 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91252348 Party Plaintiff Charter Communications Holding Company, LLC Correspondence JENNIFER A. VISINTINE Address THOMPSON COBURN LLP ONE US BANK PLAZA ST. LOUIS, MO 63131 UNITED STATES [email protected], [email protected], [email protected], [email protected] 3145526000 Submission Motion to Amend Pleading/Amended Pleading Filer's Name Thomas A. Polcyn Filer's email [email protected], [email protected], ipdock- [email protected], [email protected] Signature /TAP/ Date 01/09/2020 Attachments Notice of Amended NOO.pdf(53550 bytes ) Amended NOO.pdf(198864 bytes ) Exhibit.pdf(1392200 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Charter Communications Holding ) Company, LLC, ) ) Opposer, ) Opp. No. 91252348 ) v. ) Directed to U.S. Ser. No. 88283985 ) JDS Creative Academy, ) Mark: SPECTRUM OF INNOVATION ) Applicant. ) OPPOSER’S NOTICE OF FIRST AMENDED NOTICE OF OPPOSITION Pursuant to Rule 15(a)(1)(B) of the Federal Rules of Civil Procedure, Opposer Charter Communications Holding Company, LLC submits the attached first amended notice of opposition. Opposer’s amended pleading is being filed and served within 21 days of service of Applicant’s answer. Respectfully submitted, By: /s/ Thomas A. Polcyn Thomas A. Polcyn Jennifer A. Visintine Hadi S. Al-Shathir Justin P. Mulligan THOMPSON COBURN LLP One US Bank Plaza St. Louis, MO 63101 (314) 552-6000 [email protected] [email protected] [email protected] [email protected] [email protected] Attorneys for Opposer, Charter Communications Holding Company, LLC 7509896 Certificate of Service I hereby certify that on January 9, 2020, a copy of Opposer’s Notice of First Amended Notice of Opposition was served via email on the following attorneys for Applicant: Robert B. Rosenstein Jenny Shin Rosenstein & Associates 28600 Mercedes Street, Ste. 100 Temecula, California 92590 [email protected] [email protected] /s/ Thomas A. Polcyn 7509896 - 2 - IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Charter Communications Holding ) Company, LLC, ) ) Opposer, ) Opp. No. 91252348 ) v. ) Directed to U.S. Ser. No. 88283985 ) JDS Creative Academy, ) Mark: SPECTRUM OF INNOVATION ) Applicant. ) FIRST AMENDED NOTICE OF OPPOSITION Charter Communications Holding Company, LLC (“Charter” or “Opposer”) hereby files its First Amended Notice of Opposition against U.S. Serial No. 88283985 filed by JDS Creative Academy (“JDS” or “Applicant”). In support of its First Amended Notice of Opposition, Charter states as follows. Charter will be damaged by registration of the mark SPECTRUM OF INNOVATION for Entertainment services, namely, providing webcasts in the field of community interest and news; Entertainment, namely, a continuing community interest and news show broadcast over internet; Providing an Internet news portal featuring links to news stories and articles in the field of current events; Providing information, news, and commentary in the field of current events via the Internet; Providing news in the nature of current event reporting relating to community interest and news shows via the Internet; Television show production; Entertainment in the nature of television news shows; Entertainment services in the nature of production of television news and community interest shows.; Entertainment, namely, television news shows; Entertainment, namely, a continuing news show broadcast over television, satellite, audio, and video media; Production and distribution of television shows and movies; Production of television programs; Production of cable television programs; and Production of radio or television programs (collectively, “Applicant’s Services”) in International Class 041 as shown in U.S. Ser. No. 88283985 filed by Applicant. Charter, therefore, opposes registration of the mark. PARTIES AND BACKGROUND 1. Charter is a limited liability company organized and existing under the laws of Delaware, with a principal place of business at 12405 Powerscourt Drive, St. Louis, Missouri 63131. 2. Applicant is a corporation organized and existing under the laws of California, with a principal place of business at 28069 Diaz Rd., Temecula, California 92590. On information and belief, Applicant is the owner of U.S. Ser. No. 88283985 for the mark SPECTRUM OF INNOVATION for Applicant’s Services. 3. Applicant alleges a date of first use for the SPECTRUM OF INNOVATION mark of May 30, 2018 for certain of Applicant’s Services, and alleges an intent to use the SPECTRUM OF INNOVATION mark for the remainder of Applicant’s Services. 4. Prior to the filing date of U.S. Ser. No. 88283985 and any use by Applicant of the mark SPECTRUM OF INNOVATION, Charter and its related entities began using, and have continuously used in interstate commerce, trademarks including the designation SPECTRUM in connection with various goods and services. Certain of Charter’s SPECTRUM trademarks and the relevant goods/services are summarized below in ¶ 7, and may be referred to as “Opposer’s marks” (or the “SPECTRUM marks”) and “Opposer’s Services”, respectively. Charter and its related entities have continuously used the term SPECTRUM as a trademark since 2014, with substantial sales and marketing expenditures in connection with the SPECTRUM marks. As a result of such use, Charter has developed substantial goodwill and common law rights in the SPECTRUM marks. 5. Each of Opposer’s marks shares the common distinctive characteristic SPECTRUM. Before any alleged priority date claimed by Applicant, Opposer’s SPECTRUM- formative marks have been used and promoted in such a manner as to create common - 2 - exposure and thereafter recognition amongst consumers such that the SPECTRUM element itself is indicative of a single source. Opposer, therefore, owns a family of SPECTRUM marks. 6. As a result of substantial and extensive sales and marketing of Opposer’s Services under Opposer’s family of SPECTRUM marks, the family element SPECTRUM and the individual marks have become well known and famous to consumers. 7. In addition to its common law rights in the SPECTRUM marks, Charter owns the following U.S. trademark registrations for marks incorporating the term “Spectrum”: Trademark Design Reg. Date Reg. No. International First Use in Class: Services Comm. Date(s) SPECTRUM n/a March 26, 5706650 41: November NEWS NY1 2019 Providing an 15, 2016 Internet website featuring information in the fields of current events via the Internet; Providing an Internet website portal featuring entertainment news and information specifically in the field of arts, sports, and theater 42: Providing an Internet website featuring information in the field of weather SPECTRUM August 5538282 41: November NEWS NY1 14, 2018 Entertainment 15, 2016 logo services in the nature of a continuous running cable television program specializing in news and current - 3 - events SPECTRUM April 2, 5713632 (Int'l Class: 41) November NOTICIAS NY 2019 Providing news in 15, 2016 1N and Design the nature of current events reporting and news reporters services via an internet website; entertainment in the nature of an ongoing cable television program featuring news and current events; cable television programming specializing in news and current events (Int'l Class: 42) providing weather reports via an online website SPECTRUM n/a July 17, 5516672 (Int'l Class: 41) November NOTICIAS 2018 providing news in 15, 2016 NY1N the nature of current events reporting and news reporters services via an internet website; entertainment in the nature of an ongoing cable television program featuring news and current events; cable television programming specializing in news and current - 4 - events (Int'l Class: 42) providing weather reports via an online website SPECTRUM August 6, 5828878 (Int'l Class: 41) September, NEWS BAY 2019 Entertainment 2017 NEWS 9 and services, namely, Design television news shows; Providing information, news, and commentary in the field of current events via the Internet; Entertainment in the nature of ongoing television programs in the field of news and current events; News reporter services in the nature of news analysis and news commentary SPECTRUM August 6, 5828879 (Int'l Class: 42) September, NEWS BAY 2019 Weather reporting 2017 NEWS 9 and Design SPECTRUM n/a Dec. 13, 5101071 35: May 1, 2015 REACH 2016 Media placement advice and media buying advice, namely, advising the client how much media time to purchase, the types of media in which it should be placing advertisements, and at what times the client should be purchasing advertising from applicant; rental of advertising time on applicant's cable - 5 - television networks, digital media and communications media 41: Video production services SPECTRUM March 19, 5702777 41: August 31, REACH 2019 Video production 2017 services KERNEL August 7, 5536597 (Int'l Class: 35) January 20, CREATED BY 2018 creation of 2017 SPECTRUM advertising for REACH and others; production Design of advertising for others, namely, production of video, on-air, online and on demand advertising; preparing and placing advertising for others across multiple platforms inclusive of on-air, online