IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`/-—-—g
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`2 /2%
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`In the matter of trademark application Serial No. 281 lQ3fl4
`Filed on: _Efl
`For the mark
`Published in the Official Gazette on
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`Joe J. Alfaro, Jr.
`v
`Guy A. Hoffrnarm
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`Opposition No.
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`mmmmmmmmmmi
`01 -1 5-2003
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`U.S. Faun: & TMOfcITM Mail ficpt. D1. #40
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`I
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` DN
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`Joe J. Alfaro, Jr., Owner of the band “The Superfreaks”
`481 W. Blaine Street, Riverside, CA 92507
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`The above-identified Opposer believes that he will be damaged by registration of the mark
`shown in the above—identif1ed application, and hereby opposes the same.
`5 i
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`The grounds for opposition are as follows:
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`1) Joe J. Alfaro, Jr, Opposer, asserts that
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`because the Applicant was well aware of Opposer’s superior rights in the mark, and purposely
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`failed to disclose the existence of Opposer’s prior use, Applicant"s application cannot be found to
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`be a bona fide offering of goods or services. The Applicant used to perform with Opposer’s
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`band “The Superfreaks” but was dismissed in late 2001. Applicant became very disgruntled
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`swearing to get “PAYBACK” from the Opposer. Excerpt from an e-mail that Applicant sent on
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`September 10, 2002 (wording is exactly as it appears in e-mail) to Opposer’s friend
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`David W. Hickam Gulley (please see affidavit authenticating e-mail),
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`“BUT DON’T THINK I’M DONE WITH JOE BY A LONG SHOT. F*** NO!!!
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`LOSING THE CRAZYHORSE IS ONLY THE BEGINNING OF HIS PAYBACK FROM
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`ME”, .
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`. . “WHEN I’M DONE, HE WON’T HAVE TIME TO WORRY ABOUT DISCO
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`AT ALL ‘CAUSE HE’LL BE WORRYING ABOUT WHERE TO LIVE & HOW TO EAT
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`(JUST LIKE HE MADE ME DO) OH, WELL !!!”
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`0E/06/2003 TSHITH
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`00000116 73110344
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`01 FC:640E
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`300.00 09
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`Since his dismissal, Applicant submitted this unauthorized “Intent to Use” application with the
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`United States Patent & Trademark Office. Four days later, Applicant filed a small claims suit in
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`Superior Court of Califom.ia, in the County of Riverside, against the Opposer for an alleged
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`“breach of contract” concerning his participation in Opposer’s band “The Superfreaks” - the very
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`service mark name that is the subject of this opposition. The judge ruled in favor of the Opposer.
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`Applicant’s case was so frivolous and without merit that the judge told the Opposer that he did
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`not have to hear from him at all because there was nothing to defend. The judge also strongly
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`suggested to the Applicant that he just “move on” (Please see judgement). Prior to the small
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`claims court hearing, Applicant had harassed the Opposer, band members, and third party
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`venues, which prompted the Opposer to file a counter claim for Applicant’s “intentional
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`interference” with the Opposer’s livelihood (see Opposer’s counter claim). The judge told the
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`Opposer that he could only rule in Opposer’s favor when the Opposer actually lost a job due to
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`Applicant’s interference. In other words, there were no actual monetary damages, at that time, as
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`a result of Applicant’s intentional interference with third parties. After losing his case in small
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`claims court, Applicant harassed some of Opposer’s new clients. Applicant harassed members of
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`the band by showing up to a venue where the band was performing. Applicant also committed
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`fraud upon the office of the USPTO, and upon Opposer’s clients, by falsely claiming to be the
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`owner of a Federal Registration of the Service Mark “The Superfreaks” (please see affidavit from
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`Timmy Daniels). Through all of these actions, Applicant has shown malicious intent. Applicant
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`has been persistent in his attempts to disrupt, defame, and cause injury to the Opposer’s band
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`because Applicant wants, in his own words, “PAY BACK” from Opposer for being dismissed
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`from the band.
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`2)
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`Applicant has filed his application in bad faith. The
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`Opposer contends that the applicant’s malicious conduct evidences bad faith registration and use
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`of the disputed mark. Specifically, Applicant’s bad faith is evidenced by:
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`(a) the applicant’s filing of a false oath in his USPTO “Intent to Use” Federal Registration
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`application by purposely failing to identify the conflicting rights of Opposer in the
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`mark. Applicant filed an application to register a mark which he knew infringed on the
`superior rights of the Opposer. Specifically, paragraph ofthe declaration expressly states
`as follows:
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`he/she believes the applicant to be entitled to use such mark in commerce; to the best
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`of his/her knowledge and belief , firm, corporation, or association has the
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`right to use the mark in commerce,
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`. . . (see application serial # 78110344 dated 2/22/02)
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`(b) Applicant adopted the Opposer’s service mark name in a bad faith attempt to take
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`advantage of the excellent reputation, popularity, and goodwill that is associated with
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`the Opposer’s service mark “The Superfreaks”.
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`(c) Applicant ignored Opposer’s “cease and desist” letter, mailed on September 12, 2002,
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`by not withdrawing his fraudulent application with the USPTO (see copy of “cease and
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`desist” letter).
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`((1) Applicant committed fraud upon the office of the USPTO, and upon Opposer’s
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`clients, when he falsely claimed to be the owner of a Federal Registration of the
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`Service Mark “The Superfreaks” for the purpose of disrupting the Opposer’s
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`business. At the time that Applicant made his claim of ownership of a Federal
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`Registration, his application was still pending and had merely been assigned to an
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`examining attorney at the USPTO.
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`(e) Applicant made several phone calls and mailed notices to the Opposer’s clients, and
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`the Opposer, claiming to be the owner of a Federal Trademark for the Service Mark
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`“The Superfreaks”. Applicant demanded that these clients stop hiring the Opposer’s
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`band and warned them that it was unlawful to continue to hire the Opposer’s band.
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`Applicant was trying to intimidate the band’s clients so that they would be afraid to
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`continue to hire the band thus hurting the Opposer’s business.
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`3) . Opposer, asserts common law superior rights of ownership of the Service
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`Mark “The Superfireaks”. Operating as owner, Opposer founded his band “The Superfreaks” in
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`August of 1999. Opposer, inspired by the popular Rick James song “Superfreak,” named his
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`band “The Superfreaks”. Opposer is the owner of a Certificate of Registration from the State of
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`California (see State Reg. No. 056707 for Class: Int’l.. 41) for the Service Mark “The
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`Superfreaks.” Opposer has used the Service Mark “The Superfreaks” exclusively and
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`continuously since August of 1999. The band’s first paid gig was on October 15, 1999.
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`Opposer used the Service Mark “The Superfreaks” in interstate commerce for the first time on
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`December 31, 1999 in Laughlin, Nevada. Opposer is, and has always been, solely responsible far
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`all of the band’s expenses; including all costs related to marketing, legal expenses, promotion,
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`advertising, back-line, P.A./sound equipment, banners, stage props, etc. In addition, Opposer is
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`solely responsible for reporting income earned to the Internal Revenue Service through the filing
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`of l099’s for each musician. Opposer has always had sole discretion and control over both the
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`nature and quality of the band’s performances, as well as, the use of the service mark “The
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`Superfreaks.”
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`4) : Per 15 U.S.C. S1051; TMEP 1201,
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`application must be declared void. Only the owner of the mark, or the person entitled to use the
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`mark in commerce as of the application filing date, may file an application for it’s registration.
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`An application filed by a person who is not the owner of the mark, or not entitled to use the mark
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`in commerce, will be declared void. Generally, the person who uses or controls the use of the
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`mark, and g of the goods to which it is affixed, or the s_ei:./_ic_esj9_r
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` , is the owner of the mark. The best evidence of “control” is illustrated by the
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`Applicant’s failed small claims action wherein he subpoened “The Superfreaks” various records
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`which were all in the possession and control of Opposer (see copy of Applicant’s small claims
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`subpoena and notarized affidavits from each of “The Superfreaks” band members).
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`5) : Applicant knowingly made willfull, false, material mis-
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`representations of fact in his application to Federally Register Opposer’s Service Mark
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`“The Superfreaks.” The Applicant had an obligation to disclose the existence of the Opposer’s
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`band and rights in the mark. Just four days after submitting his unauthorized “Intent to Use”
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`application, in which Applicant was required to submit a signed declaration stating that
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`-4-
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` Applicant knew of 10 o
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`1
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`filed a small claims suit against Opposer for an alleged breach of contract concerning his
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`participation in the Opposer’s band “The Superfreaks” — the very mark that is the subject of this
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`opposition. The Applicant made willfull false statements to the USPTO when he filed fraudulent
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`declarations in his “Intent to Use” application, and during the examination process, with each
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`communication that Applicant submitted to the USPTO (see application for serial # 78110344
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`dated 2/22/02 and responses to office actions dated 7/21/02, and 9/3 0/02 in Applicant’s file).
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`Applicant made fraudulent claims to Opposer’s clients, committing fraud upon the office of the
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`USPTO and Opposer’s clients, when he asserted that he was the owner of a Federal Registration
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`for the Service Mark “The Superfreaks” though he clearly was not. Because of this and
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`Applicant’s other malicious efforts against the Opposer, Applicant’s failure to identify the
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`Opposer’s superior rights in the Service Mark “The Superfreaks” cannot be interpreted as a
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`misunderstanding, an inadvertance or a mere negligent omission. As shown through his pattern
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`of various malicious actions outlined in this opposition, Applicant has spent most of the past year
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`trying to disrupt and defame the Opposer’s business while attempting to profit from the
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`Opposer’s strong goodwill in it’s service mark “The Superfreaks.”
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`6) No Rights: Opposer contends that the Applicant has no rights in the Service Mark
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`“The Superfreaks” because the Applicant’s application was filed solely based on “Intent to
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`Use” and there is no record of competent evidence of actual use of the mark prior to the filing
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`date of his application.
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`7) Opposer asserts that Applicant’s proposed service mark, when
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`applied to Applicant’s services, is identical (except for the descriptive words “funky disco
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`revue”) to Opposer’s previously used service mark “The Superfreaks” for “entertainment services
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`in the nature of live disco music from the ‘70s and ‘80s as performed by live musicians,” as to be
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`likely to cause confusion, under Section 2(d) of the Trademark Act. Proof of the descriptive
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`nature of the words “funky disco revue” is the fact that these same words are often used by the
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`Opposer to describe its services when promoting the band’s performances (ex; The Superfreaks
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`will keep you groovin’ to the funky disco beat). The applicant’s USPTO service mark
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`application is identical to the Opposer’s service mark in every way: same classification of
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`service — lnt’l. 41, same geographic area (both parties are based in Riverside County), both
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`perform Disco, Funk, and ‘80s hits wearing costumes from the Disco era and both appeal to the
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`same class of consumers; casinos, nightclubs, private events, birthday parties, etc. Given all of
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`these facts, it is inevitable that reasonable consumers would be confused. As further proof of
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`likelihood of confusion is a phone conversation held on September 13, 2002, between the
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`Applicant and Opposer’s attorney Chris J. Connolly, the same day that Applicant received
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`Opposer’s “cease and desist” letter (see enclosed copy of letter). Applicant stated that there was
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`confusion among the venues and alleged that he had lost “7 to 8 jobs” because, when he called
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`to inquire about gigs at various venues, he was told that they’d already spoken to the Opposer’s
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`band “The Superfreaks”. Applicant could have used any other name, but instead chose to use
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`the Opposer’s name in order to take advantage of the Opposer’s strong goodwill in the mark
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`while disrupting the Opposer’s livelihood. Opposer has expended significant time, money, and
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`labor in building goodwill resulting in the success of the band. Just a few examples of the
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`success that “The Superfreaks” band has enjoyed: an extended engagement at one of Orange
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`County’s most popular nightclubs g in Irvine; entertaining audiences of between
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`800 - 1000 people every single weekend consistently (live broadcast on popular Orange County
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`radio station COOL 94.3 FM) for 1 year & 8 months, also the band has spent the past year
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`performing twice a month at one of Southern California’s most popular casinos Palaflasmo in
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`San Diego. Pala Casino also chose “The Superfreaks” to perform as the featured entertainment
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`on “New Year’s Eve” for two consecutive years. This year as part of Pala Casino’s promotion
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`for their “New Year’s Eve” celebration, a color photo of “The Superfreaks” band was displayed
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`on the casino’s large Vegas-style electronic billboard that stands in front of the casino. The
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`billboard is easily viewed by, not only, the casino’s patrons but everyone who drives by the
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`casino which is approximately 10,000 cars a day, (according to an article re: local traffic,
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`published in the North County Times newspaper on 4/02/02). The Opposer’s band is so popular
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`that the Pala Indian’s Tribal Chief hand-picked “The Superfreaks” to perform at his own wedding
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`reception in 2002. “The Superfreaks” service mark name has also been heard over the radio in
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`ads and seen in newspaper print ads purchased by venues, as well as the Opposer, to promote the
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`band’s performances in the last year. The Applicant is motivated by all of these facts regarding
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`the Opposer’s band’s strong goodwill and reputation in its service mark. Using a name that is
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`well—established, popular and well—known in commerce would make it much easier for the
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`Applicant to get work.
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`8)
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`Opposer contends that it would be unfair competition to allow the
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`Applicant to receive the benefit of the Opposer’s significant time (nearly 3 1/2 years), money,
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`and labor spent in building goodwill in the Service Mark “The Superfreaks”. The Opposer’s
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`band has built solid goodwill in its service mark through it’s many performances including
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`extended engagements at popular venues like: The Crazy Horse in Irvine (1 year & 8 months of
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`consistent weekly performances), The Promenade Mall “Live at The Plaza” entertainment series
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`(bi-monthly performances for two consecutive years), Pala Casino in San Diego, (bi-monthly
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`performances for the past year including two New Year’s Eve performances and a special
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`performance for Pala Casino’s VIP’s), in addition to the many private events, weddings,
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`corporate functions, birthdays, etc. App1icant’s intention is to profit from the goodwill and
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`reputation of the Opposer’s service mark while disrupting Opposer’s business by fraudulently
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`obtaining Federal Registration of Opposer’s service mark.
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`9) : Opposer contends that the Applicant is attempting to deceive
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`and mislead the public by using Opposer’s well—known service mark “The Superfreaks” in order
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`to obtain work and disrupt Opposer’s business. Because the name of the Opposer’s band “The
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`Superfreaks” is already well—known and established for its quality entertainment services, which
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`would facilitate Applicant’s ability to get work, the Applicant has chosen to fraudulently seek
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`registration of Opposer’s mark. Since both bands perform in costume, it would be even easier to
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`deceive the consumer into believing that App1icant’s band was the same as Opposer’s
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`well-known band “The Superfreaks”.
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the matter oftrademark application Serial No. 78lI Q1344
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`For the mark“ ”
`Published in the Official Gazette on
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`Application filing date: 1<1e_br1rar:xlZ.lQ0l
`Applicant: Qny_A_._I;I9_f_fma.nn
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`IllllilllullllllllllllllllllllllIIIIIIIIIIMIITI
`o1_15.2oo3
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`u.s. Pnunt & TMo1’cITM Man HBPI
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`. D1. #40
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`I
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`(including affidavits and exhibits)
`filed by Joe J. Alfaro, Jr., Opposer
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`CERTIFICATE OF MAILING
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`F .
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`'
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`§ ‘
`C3
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`,
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`I hereby certify that this correspondence is being deposited with the United States Postal Service
`as “Express Mail” in an envelope addressed, Box TTAB FEE, Commissioner for Trademarks,
`2900 Crystal Drive, Arlington, VA 22202-3513 on the date shown below.
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`3» 5263
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`Date