--g..._
`
`\.:...s:..}_
`
`manattl phelps | phillips
`
`Jill M. Pietrini
`Manatt, Phelps & Phillips, LLP
`Direct Dial:
`(310) 312-4325
`E-mail:
`jpietrini@manatt.com
`
`December 15, 2005
`
`File No. 12838-167
`
`_
`Commissioner for Trademarks
`Attn: Trademark Trial and Appeal Board
`P.O. BOX 1451
`Alexandria, VA 22313-1451
`
`Via Express Mail: EV 505832295 US
`/————-’-"“"""‘i
`A
`
`1
`
`Re:
`
`Notice of Opposition
`Opposer:
`Mattel, Inc.
`Applicant:
`Jada Toys, Inc.
`Mark:
`“old skool”
`Serial No.:
`76/631,365
`
`Dear Sir or Madam:
`
`1 We enclos_e".,_herewith .a.'l\lot.ice 01 Oppositionto the above-identified application.
`V
`Enc|osed‘is"our checkin theamount of $300.00, the requisite fee. Please charge any
`" additional fees oricredit any overpaymentsvto our Deposit 'Account- No. 131241.’ Aduplicate
`copy of-t-hisxletter is enclosed ‘for this purpose. Pleaseldirect all communications regarding
`this matter to the undersigned attorney.
`
`.
`
`’ Very truly yours,
`
`
`
`Wes
`
`MA
`
`TT, PHELPS & PHILLIPS, LLP
`
` JMP:rq CERTIFICATE OF EXPRESS MAILING
`I hereby certify that
`this correspondence is being
`deposited with the United States Postal Service, Express Mail
`Label No. EV 505832295 US in an envelope addressed to:
`Commissioner for Trademarks, Attn: Trademark Trial And
`Appeals Board, P.O. Box 1451, Alexandria, VA 22313-1451,
`on this 15th day of December, 2005.
`
`
`
`
`
`Enclosures:
`(1) Notice of Opposition (orig + copy)
`(2) Transmittal letter (orig. + copy)
`(3) Check ($300.00)
`(5) Postcard
`
`
`
`
`
`Ruth Ouintanilla
`
`
`lllllllllllllllllllllllllll '|ll|||||||||lllll||||
`
`
`
`409521931
`
`12-15-2705
`
`us, Patent & moi: ‘M Mall 52:9! 0:. #22
`
`11355 West Olympic Boulevard, Los Angeles, California 90064-1614 Telephone: 310.312.4000 Fax: 310.312.4224
`Albany | Los Angeles 1 Mexico City | New York | Orange County | Palo Alto | Sacramento | Washington, D.C.
`
`.
`
`JI
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`* BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Docket No. 12838-167
`
`
`
`
`In re Matter of Application No. 76/631,365
`for: "Old Skool”
`
`
`Mattel, IIIC-,
`Opposition No.
` Opposer, 12/22/2005 GTHDHQS2 00000056 76631365
`NOTICE OF OPPOSITION
`VS.
`
`
`
`
`
`Jada Toys, Inc.,
`Applicant.
`
`01 FCZMOE
`
`300.00 DP
`
`To:
`
`Commissioner for Trademarks
`ATTN: Trademark Trial and Appeal Board
`P.O. Box 1451
`
`Alexandria, Virginia 22313-1451
`
`Opposer Mattel, Inc., a Delaware corporation, having its principal place of '
`
`; gr: :-
`
`business at 333 Continental Boulevard, El Segundo, California 90245-5012 (’:’Mattel”-),2: "
`believes that it will be harmed by the registration of the purported trademark ”old
`
`"'2
`
`=
`
`skool,” as shown in U.S. Application Serial No. 76/ 631,365 (the ”Second Old Skool
`
`Application”), and hereby opposes its registration on the following grounds:
`
`1.
`
`On August 19, 2002, Applicant Jada Toys, Inc. (”Jada”), applied to register
`
`the term ”old skool” for miniature diecast toy cars, trucks and vehicles in Class 28 on an
`
`intent toluse basis. That application was assigned Serial No. 76/441,281 (”the First Old
`
`Skool Application”).
`
`2.
`
`On December 6, 2002, Jada amended the First Old Skool Application to
`
`allege use. According to the Allegation of Use file by Jada, the words ”old skool” were
`first used anywhere in May 2002 and first used in commerce in June 2002. However,
`Jada did not submit a complete copy or sample of the packaging for the toy cars sold
`under the term ”old skool” to the PTO. Specifically, Jada did not submit a specimen to
`
`the PTO showing that the term ’’old skool’’ was actually used with replicas of old cars.
`
`

`
`K4
`
`Thus, the PTO was unaware of the actual products for which the term ”old skool” was
`
`being used by Jada. A true and correct copy of the Allegation of Use filed by Jada on
`
`0 December 6, 2002 is attached hereto as Exhibit 1.
`
`3.
`
`On July 22, 2003, the PTO issued Registration No. 2,740,026 for the term
`
`”old skool” for miniature diecast toy cars, trucks and vehicles, based on the First Old
`
`Skool Application.
`
`4.
`
`In a Board proceeding, on December 11, 2003, Mattel petitioned to cancel
`
`Jada’s Registration No. 2,637,124 of the mark HOT RIGZ for diecast toy cars, toy trucks
`
`and toy Vehicles, based upon its famous HOT WHEELS family of marks. The
`
`cancellation proceeding is currently. suspended pending the_ outcome of federal
`
`litigation between the parties.
`
`5.
`
`On April 20, 2004, Jada filed a complaint in the U.S. District Court foréthe
`
`r>:s%.
`Central District of California against Mattel for trademark infringement, false
`E 3; .
`I
`.
`ll designation of origin and unfair competition regarding (Mattel’s use of the
`descriptive terms ”old school”
`(‘new school” onglthe packaging of its HOT
`WHIPS, TEAM BAURTWELL afid wEsTi coAsr‘cUsToMs diecastutoy cars
`
`.2?
`
`l
`
`K
`
`.
`
`‘
`
`(the ”WHIPS Products”) (the ”Federal Litigation”). Mattel displayed the term ”old
`school” and ”new school” on the packages of toy cars to indicate whether the cars were
`
`classic or vintage (old school) or modern (new school).
`
`6.
`
`On June 2, 2004, Mattel filed its answer and counterclaims in the Federal
`
`Litigation for cancellation of Registration No. 2,740,026 for ”old skool” on the grounds
`that ”old skool” is generic or descriptive. The counterclaims also included trademark
`infringement, unfair competition and copyright infringement based upon Jada’s use of
`HOT RIGZ and a flame logo similar to Mattel’s famous HOT WHEELS flame logos, and
`
`for cancellation of Registration No. 2,637,124 for HOT RIGZ.
`
`7.
`
`Jada served its reply to Mattel’s counterclaims on June 25, 2004.
`
`

`
`:4
`
`8.
`
`On February 11, 2005, both parties filed motions for summary judgment.
`
`Mattel sought summary adjudication on liability for all of its defenses and
`
`counterclaims, including its defense of fair use of the terms ”old school” and ”new
`
`school” for vintage and modern toy cars in a descriptive, non—trademark manner under
`
`15 U.S.C. § 1115(b)(4), for cancellation of ]ada’s registration of ”old skool,” and its
`
`claims of trademark infringement, unfair competition and copyright infringement for
`
`]ada’s use of HOT RIGZ with a flame logo, and for cancellation of ]ada’s registration of
`
`HOT RIGZ. Jada moved for summary judgment on all of its affirmative claims relating
`
`to Mattel’s use of ”old school” and "new school,” Mattel’s counterclaim for cancellation
`
`of ]ada’s registration of ”old skool,” and Mattel’s counterclaims relating to ]ada’s use of
`
`HOT RIGZ alone and with a flame logo.
`
`9.
`
`‘
`
`On the same day that summary judgment motions were filed (February
`
`' 1.1, 2005), Jada. filed the Second Old Skool Application for plastic toy vehicles, radio-‘ _
`v 2. controlled toy. vehicles, battery operated toyivehiclesl friction toy vehicles, wind-ulp. toys 2
`‘-vehicles’, and "ride-on toy vehicles in Class 28 on an intent to use basis.
`10.
`‘On March 15, 2005, the District Court ruled on the parties"respective?
`
`.
`
`..
`
`motions for summary judgment. The District Court granted Mattel’s motion for
`
`summary adjudication as to its counterclaim -relating to the validity of ]ada’s alleged
`
`mark ”old skool.” In doing so, the District Court held:
`
`[b]ased on the common usage of the terms ”old school” and
`”old skool” to describe older model or classic cars, this Court
`finds very little imagination, thought, and perception are
`required to conclude that OLD SKOOL refers to Applicant's
`classic model toy cars.
`See STIX Products, Inc. v. Llmted
`Merchants 6* Mfrs., Inc., 295 F. Supp. 479 (S.D.N.Y. 1968).
`Finall
`, Ap licant first started using the mark in commerce
`less t an t ree years a 0.
`[Citation ornitted.] Even if
`Applicant has had a hig volume of advertising and sales
`during this time,
`these factors alone are insufficient
`to
`establish a secondary meaning.
`
`Based on the foregoing, this Court finds, as a matter of law,
`the term ”old skool” is merely descriptive. Therefore the
`OLD SKOOL registration is invalid and canceled.
`
`

`
`A true and correct copy of the District Court's March 15, 2005 reporting of its
`
`decision on the parties’ respective motions for summary judgment is attached hereto as
`
`Exhibit 2.
`
`11.
`
`On March 25, 2005, the District Court entered a judgment consistent with
`
`its March 15, 2005 order. A true and correct copy of the District Court's March 25, 2005
`
`judgment is attached hereto as Exhibit 3.
`
`12.
`
`The District Court granted ]ada’s motion for summary judgment as to its
`
`claims of non-infringement relating to its use of HOT RIGZ with a flame logo. Mattel
`
`appealed the judgment of the District Court as it relates to HOT RIGZ, which is
`
`currently pending before the 9th Circuit Court of Appeals. Jada did not appeal the
`
`judgment, and it now stands final as to the term ”old skool” used by Jada and as to
`
`Registration No. 2,740,026 of ’’old skool’’ owned by Iada.
`
`13.‘ ~- -.On November 4, 2005, Mattell-’sent a—~le_tter to thevPTO requesting that.
`
`~
`
`. Registration No. 2,740,026 for ”old skool~.”"be.-canceled pursuant to 15 U.S.C..§ 111'9.a's.
`ordered by the District Court. That request is=c-urrently pending.with the PTO;
`14.
`On November 15, 2005, the Application was published for opposition.
`
`-
`
`.
`
`.
`
`Applicant's Mark Is Merely Descriptive And Has No Secondary Meaning
`
`15.
`
`]ada’s purported mark is merely descriptive of the goods to which it
`
`relates, because it describes an ingredient, quality, characteristic, function, feature,
`
`purpose or use of the specified goods. Specifically, the term ”old skool” and its
`phonetic equivalent ”old school”, are commonly used in various industries (including
`for automotive products and vehicles) to refer to traditional or classic products.
`16.
`The automotive industry,
`from which ]ada’s products are based,
`
`commonly uses the term ”old school” to identify or describe older model or classic cars.
`17.
`Because ]ada’s purported mark is merely descriptive, it is unregisterable
`
`on the Principal Register.
`
`

`
`-z
`
`18.
`
`Because Jada’s mark is merely descriptive, it can only be registered on the
`
`Principal Register if Jada can show acquired distinctiveness, a showing that Jada cannot
`
`make.
`
`19.
`
`Jada has not yet begun using the term ”old skool” for plastic toy vehicles,
`
`radio-controlled toy vehicles, battery operated toy vehicles, friction toy vehicles, wind-
`
`up toy vehicles, ride-on toy vehicles.
`
`Applicant's Mark Is Not Inherently Distinctive And Has No Secondary
`Meaning
`
`Applicant's purported mark is the term ”old skool” for use with various
`20.
`toy vehicles, which are replicas of vintage or old cars. Such use of the term ’’old skool’’
`
`is not a trademark use of the term; thus, the term is not inherently distinctive as an
`
`indication of the source of Applicant's goods.
`
`Because Applicant's purported mark is not inherently distinctive, it is not
`21.
`registerable on the Principal Register without alshowinglof acquired distinctiveness.
`22.
`Applicant's purported mark has not acquired distinctiveness, and as such,
`
`it is not registerable on the Principal Register.
`
`Fraud On The PTO
`
`Jada willfully withheld, from the PTO, material information or facts,
`23.
`which, if disclosed, would have resulted in the disallowance of the registration sought
`
`under the Second Old Skool Application by the PTO.
`
`Specifically, despite Jada’s knowledge of the March 15, 2005 order, and the
`24.
`March 25, 2005 judgment of the U.S. District Court, Jada has continued to prosecute the
`
`Second Old Skool Application before the PTO.
`
`25.
`Jada knowingly and intentionally made a false, material representation to
`the PTO that no other person, firm, corporation or association has the right to use the
`
`term ”old skool,” which is the subject of the Second Old Skool Application.
`
`

`
`26.
`
`Specifically, within hours after the U.S. District Court entered its order
`
`canceling Registration No. 2,740,026 on the grounds that it is descriptive, Jada filed a
`
`third application to register ”old skool” for toy cars, trucks and vehicles, Serial No.
`
`78/ 588,037 (”the Third Old Skool Application”).
`
`27.
`
`Jada has continued to prosecute the Third Old Skool Application, and
`
`recently claimed ownership of Registration No. 2,740,026 in that application.
`
`28.
`
`Jada did not advise the PTO during the prosecution of the Second Old
`
`Skool Application or the Third Old Skool Application of the U.S. District Court's March
`
`.15, 2005 order or its March 25, 2005 judgment regarding the term ”old skool” as used
`
`with Jada’s toy Vehicles or the cancellation of Registration No. 2,740,026.
`
`29.
`
`Jada committed fraud on the PTO in violation of 15 U.S.C. § 1063 and 18
`
`U.S.C. §1001.
`
`1
`A
`.
`J
`H
`I
`2'
`Damage To Mattel
`30. Mattel used the descriptions ”old school” and ”new school” on packaging
`
`for its WHIPS Products to delineate whether the cars were classic or vintage (old school)
`
`or modern (new school).
`
`31.
`
`Jada has already objected to Mattel’s use of the generic / descriptive terms
`
`”old skool” and ”new school” to delineate the age of its toy Vehicles. Mattel has an
`
`interest in using these terms in its business.
`
`32. Mattel would be damaged by the registration of the mark shown in the
`
`Second Old Skool Application, in that such registration would give Applicant a prima
`facie exclusive right of ownership and use of, and a presumption of validity of, a mark
`that has been determined by the U.S. District Court for the Central District of California
`
`as merely descriptive and without secondary meaning, and therefore invalid.
`33.
`A duplicate copy of this Notice of Opposition and a check for $300 is
`
`submitted herewith. Please charge any additional amounts or credit any overpayment
`
`to Deposit Account No. 131241.
`
`

`
`WHEREFORE, Mattel pray that this Opposition be sustained in favor of Mattel,
`
`that the Second Old Skool Application be rejected, and that registration of the Second
`
`Old Skool Application be refused.
`
`Respectfully submitted,
`
` Dated: December 15, 2005
`
`
`
`ill M. Pie rini
`essica I. Slusser
`
`MANATT, PHELPS & PHILLIPS, LLP
`11355 W. Olympic Blvd.
`Los Angeles, California 90064
`(310) 312-4000
`Attorney for Opposer Mattel, Inc.
`
`CERTIFICATE OF EXPRESS MAILING
`
`I hereb certify that this Notice of Opposition is being de osited with the United
`States Postal ervice, postage prepaid, Express Mail, Label No. V505832295US, in an
`envelo e addressed to: Commissioner for Trademarks, Attn: Trademark Trial and
`AppealDBoard, P.O. Box 1451, Alexandria, Virginia 22313-1451, on this 15th day of
`
`%
`
`Ruth Quintailla
`
`December,2005.
`
`40949061.1
`
`

`
` EXHIBIT 1
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRANSMITTAL LETTER, ALLEGATION or use UNDER 15 u.s.c. l05I(c) or (d)
`
`Docket No.
`
`B4244-5046
`
`Name of Applicant:
`Trademark:
`
`Jada Toys, Inc.
`OLD SKOOL
`
`|nternationa|C|ass(es):
`
`28
`
`TO THE ASSISTANT COMMISSIONER FOR TRADEMARKS:
`
`Transmitted herewith is an Allegation of Use under 15 U.S.C. 1051(c) or (d) and fee calculated as follows:
`
`T°ta|#C|asses Fee/class—|—
`IIIIIIIIIIWMNIHEIIIIIIIIIHEWEEHIIIWMWI
`
`A check in the amount of
`
`$100.00
`
`is attached.
`
`Please charge Deposit Account No.
`A duplicate copy of this sheet is enclosed.
`
`in the amount of
`
`The Commissioner is hereby authorized to charge payment of any fees associated with this
`
`Allegation of Use or credit any overpayment to Deposit Account No.
`A duplicate copy of this sheet is enclosed.
`
`500977
`
`Certificate of Mailing by Express Mail
`
`Certificate of Mailing by First Class Mail
`
`I certiiy that this document and fee is being deposited on
`
`' °e'“7Y ma‘ this d°°“"‘°'“ 3'“ fee is b°‘"9 d°9°5"°d °"
`
`_
`
`_
`
`_
`
`y
`
`_ ‘-
`
`with the U.S. Postal Service ‘Express Mail Post Office to
`Addressee' service under 37 C.F.R. 1.10 and is addressed
`to the Commissioner for Trademarks. 2900 Crystal Drive.
`
`with the U.S. Postal Service as first class mail under 37
`C.F.R. 1.8 and is addressed to‘ the Commissionenfor
`Trademarks.
`2900 Crystal Drive, Arlington, Virginia
`22202-3513.
`
`Signature ofPerson Mailing Correspondence
`
`Typed or Printed Name ofPerson Mailing Correspondence
`
`' $5
`’r
`Typed or Printed Name ofPerson Mailing Correspondence
`
`ELi5?3E?&'i]i|iUS
`
`Signature
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRANSMITTAL LETTER, ALLEGATION or USE UNDER 15 U.S.C. 1051(0) or (d)
`
`Docket No.
`
`B4244-5046
`
`Name of Applicant:
`Trademark:
`
`Jada Toys, Inc.
`OLD SKOOL
`
`lnternationalClass(es):
`
`28
`
`TO THE ASSISTANT COMMISSIONER FOR TRADEMARKS:
`
`Transmitted herewith is an Allegation of Use under 15 U.S.C. 1051 (c) or (d) and fee calculated as follows:
`
`rorauvscnasses-Tlj 1
`IIIIIII
`II
`$100.00
`=
`FILING FEE
`$100.00
`
`A check in the amount of
`
`$100.00
`
`is attached.
`
`Please charge Deposit Account No.
`
`A duplicate copy of this sheet is enclosed.
`
`in the amount of
`
`2
`
`The Commissioner is hereby authorized to charge payment of any fees associated with this
`Allegation of Use or credit any overpayment to Deposit Account No.
`500977
`‘
`A duplicate copy of this sheet is enclosed.
`
`Certificate of Mailing by Express Mail
`
`I certify that this document and fee is being deposited on
`
`Certificate of Mailing by First Class Mail
`I certify that this document and fee is being deposited on
`
`with the U.S. Postal Service ‘Express Mail Post Office to
`Addressee” service under 37 C.F.R. 1.10 and is addressed
`to the Commissioner for Trademarks. 2900 Crystal Drive,
`Arlington. \flrginia 2202-3513.
`
`flfe
`with the US. Postal Service as first class mail under 37
`C.F.R. 1.8 and is addressed to the Commissioner for
`Trademarks.
`2900 Crystal Drive. Arlington. Virginia
`22202-3513.
`
`Signature ofPerson Mailing Correspondence
`
`Typed or Printed Name ofPerson Mailing Correspondence
`
`EL6?3E?B9lHUS
`
`Signature
`
`

`
`Express Mail Label No.
`
`'
`
`page 1 of
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`ALLEGATION or use UNDER 15 U.S.C. 1051(c) or (d)
`
`Name of Applicant:
`
`Jada Toys, Inc.
`
`Serial Number:
`Trademark:
`
`76/441,281
`OLD SKOOL
`
`Docket No,
`
`34244-50“
`
`TO THE ASSISTANT COMMISSIONER FOR TRADEMARKS
`
`Applicant requests registration of the above—identified trademark in the United States Patent and Trademark
`Office on the Principal Register established by the Act of July 5, 1946 (15 U.S.C. 1051 et. seq., as amended)
`for the below-identified goods. One (1) specimen per class showing the mark as used in commerce is
`submitted with this Allegation of Use.
`
`Check here if a Request to Divide under 37 CFR 2.87 is being submitted with this Allegation of Use.
`
`Check here if you are filing the Allegation of Use after a Notice of Allowance has issued.
`
`Check here if Applicant is using the mark in commerce on or in connection with all goods listed in the
`application or Notice of Allowance.
`.
`
`Please delete the following listing of goods from the application for which the Applicant is not using the"ma:r_k“
`in commerce.” LEAVE_ THIS ISPACEHBLANK IF THE APPLICANT IS USING THE MARK ON_OR IN_
`CONNECTIONWITH ALL THE ‘GOODS LISTED IN THE APPLICATION OR NOTICE OF ALLOWANCE. —
`
`_.i
`.
`‘fig
`
`'
`
`”_,._.[
`J”
`
`‘
`
`1 DMY11
`
`00000001 76041201
`
`100.00 N
`
`Date of first use of the mark in commerce:
`
`M. Z002.
`
`Date of first use anywhere (the same as or before use in commerce date):
`
`Mag .1002.
`
`,___________j_—j~
`
`Tl04IREV05
`
`
`
`

`
`DECLARATION
`
`l, the undersigned authorized signatory of Applicant, being hereby warned that willful false statements and
`
`the like so made are punishable by fine or imprisonment, or both, under Section 1001 of Title 18 of the United
`
`States Code, and that such willful false statements may jeopardize the validity of the application or any
`
`resulting registration, declare that I am properly authorized to execute this Amendment to Allege Use on behalf
`
`of the Applicant;
`
`I believe the Applicant to be the owner of the trademark sought to be registered; the
`
`trademark is now in use in commerce; and all statements made of my own knowledge are true and all
`
`statements made on information and belief are believed to be true.
`
`Dated:
`
`'2" L 1 ° 7’
`
`By;
`
`May Li, Vice Preside t
`
`Indicate below the nature of authority under which signatory signs:
`"1 mi"-':
`A
`A person with legal authority to bind the Applicant; or
`_,
`t
`person with firsthand‘ know|edge_of1the‘ facts and actual:oE_irnpl_ied:a'utIjiority,to act on behalf of the Applicant: or
`'n attorney asidefinegd in 37'§C?.F.R. ‘1'.0_.-1(c) who has anactual oriimplied-written or verbal power of attorney fro_rn_
`‘the Applicant.
`-
`'
`A
`‘
`'
`
`4
`
`Contact Information:
`
`Address all correspondence in this application to the following:
`
`Name:
`
`Karin E. Peterka
`
`Company/Firm Name: Buchalter, Nemer, Fields & Younger
`Address Line 1:
`601 S. Figueroa Street
`Address Line 2:
`Suite 2400
`
`City:
`State:
`
`Los Angeles
`California
`
`USA
`Country:
`ZIP Code/Postal Code: 90017-5704
`
`Telephone Number:
`Fax Number:
`
`(213) 891-5280
`(213) 630-5708
`
`Email Address:
`
`kpeterka@buchalter.com
`
`Vi
`D
`
`Applicant will accept correspondence by email.
`Applicant will not accept correspondence by email.
`
`

`
`Page 3 of 3
`
`Before Approval for Publication, Send to:
`
`After Notice of Allowance, Send to:
`
`Fee
`Assistant Commissioner for Trademarks
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`Box ITU
`Fee
`Assistant Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`Certificate of Mailing by First Class Mail
`
`I certify that this document and fee is being deposited on
`
`I certify that this document and fee is being deposited on
`
`Certificate of Mailing by Express Mail
`
`with the U.S. Postal Service as first class mail under 37
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`22202-3513.
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`with the U.S. Postal Service "Express Mail Post Office to
`Addressee" service under 37 C.F.R. 1.10 and is addressed
`to the Commissioner for Trademarks, 2900 Crystal Drive.
`Arlington, Virginia 22202-3513.
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`EXHIBIT 2
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`

`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT or CALIFORNIA
`
`Enter __ -
`0°58“ ——
`JS-5/JS-6 _
`.‘
`"S‘2"5'3
`CIVIL NIINUTES — GENERAL
`Scan Only
`CaS°N°- %é__ Date March 15, 2005
`
`Title
`JADA TOYS, INC. v. MATTEL, INC., et al.
`
`“rt
`
`33,-.L.)-.
`
`
`
`Present: The
`
`R. GARY KLAUSNER, U.S. DISTRICT JUDGE
`
`Honorable
`Sharon L. Williams
`Not Reported
`N/A
`
`Deputy Clerk
`Court Reporter / Recorder
`TEE"-
`Attomeys Present for Plaintiffs:
`Attorneys Present for Defendants;
`
`Not Present
`
`Not Present
`
`Proceedings:
`
`(IN CHAMBERS) PLAINTIFF/COUNTER—DEFENDANT JADA TOYS,
`INC’S MOTION FOR SUMMARY JUDGMENT OR IN THE
`ALTERNATIVE, SUMMARY ADJUDICATION OF CLAIMS AND
`ISSUES (DE 22); and DEFENDANT/COUNTER-CLAIMANT MATTEL,
`INC’S MOTION FOR SUMMARY ADJUDICATION RE LIABILITY
`ON AFFIRMATIVE DEFENSE OF FAIR USE AND FIRST TO SIXTH
`AND EIGHTH COUNTERCLAIMS (DE 41)
`
`I.
`
`INTRODUCTION
`
`Plaintiff Jada Toys, Inc (“Jada”) filed an action against Defendant Mattel, Inc., (“Mattel”) for:
`(1) Trademark Infringement, (2) False Designation and (3) Unfair Competition. In its Complaint, Jada
`alleges that, since May 2002, it has produced and sold toy cars under the trademark OLD SKOOL,
`'
`ed trademark. Jada’s Complaint also alleges that in February 2004, Mattel
`which is a federally register
`I
`introduced a line of“Hot Wheels” die cast miniature cars under the trademarks OLD SCHOOL and
`NEW SCHOOL (“Accused Products”). According to Jada, the marks on the Accused Products so
`resemble Jada’s OLD SKOOL mark as to likely cause confusion, mistake or deception to the consuming
`public. Moreover, the Complaint alleges that Mattel’s use ofsuch substantially identical marks is'willful
`and deliberate, and causes injury and damage to Jada’s goodwill.
`
`In response, Mattel asserts nine affinnative defenses, including a fair use defense under the
`Lanham Act, 15 U.S.C. § llS(b)(4). Additionally, Mattel has filed the following Counterclaims: (1)
`Trademark Infringement; (3) False Designation; (4)
`Cancellation of OLD SKOOL Registration; (2)
`nd Dilution (Cal. Bus & Prof Code § 14330);
`Trademark Dilution; (5) Injury to Business Reputation a
`(6) Unfair Competition; (7) Common Law Passing Off; (8) Cancellation ofHOT RIGZ Registration; and
`(9) Copyright Infringement. Among other things, Mattel’s Counterclaim alleges that Jada has
`
`maliciously and willfully deprived Mattel of its right to fair use ofthe terms “old scho ” “new
`
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`school. Moreover, Mattel s Counterclaim alleges that Jada’s use of the HOT RIGZ mark and logo for
`its"diecast toy trucks is confusingly similar to, and infringes upon, Mattel’s HOT WHEELS trademark
`and logos.
`
`Mattel has filed a Motion for Summary Adjudication Re Liability on Affirmative Defense of Fair
`Use and First to Sixth and Eighth Counterclaims (“Mattel’s Motion”). Jada has also filed a Motion for'l*.'
`.?\2i\
`Summary Judgment, or in the Alternative, Summary Adjudication of Claims and Issues (“Jada’s
`Motion”). For the following reasons, this Court grants in part, and denies in part, both Mattel’s Motion,-
`and Jada’s Motion.
`~-‘-
`
`;
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`II.
`
`JUDICIAL STANDARD
`
`Under the Federal Rules of Civil Procedure, summary judgment is proper only where “the
`pleadings, depositions, answers to interrogatories, and admissions on file, together with affidavits, if
`any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a
`judgment as a matter of law.” Fed. R. Civ. P. 56(c). Upon such a showing, the Court may grant
`summary judgment “upon all or any part thereof.” Fed. R. Civ. P. 56(a), (b).
`
`To prevail on a summary judgment motion, the moving party must show there are no triable
`issues of fact as to matters upon which it has the burden of proof at trial. ._S'_e_e Celotex Cog; v. Catrett,
`477 U.S. 317, 325 (1986). On issues where the moving party does not have the burden of proof at trial,
`the moving party is required only to show that there is an absence of evidence to support the nomnoving
`party’s case. See Celotex Corp. v. Catrett, 477 U.S. at 326.
`
`To defeat a summary judgment, the ii,(')ri_-movirig party may not merely rely on its pleadings or on ‘
`conclusory statements. Fed. R. Civ. P.'56(e')."_ Nor
`the non-moving party merely attack or.;discredit~.
`5
`the moving party’s evidence. National Uniori Fire
`Co. v. 'Arg'oniaiat Ins.‘ C0,, 701 F.2d 95,:97- (9.9 Cir. .
`' 1983). The non-moving party must affirmatively present specific admissible evidence sufficient to
`create a genuine issue ofmaterial fact fortrial. 13:; Qelotex Corg v. Catrett, 477 U.S. at 324.
`
`‘
`
`'
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`17. 4:
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`‘
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`t
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`III.
`
`DISCUSSION
`
`A.
`
`OLD SKOOL Trademark
`
`I
`
`Jada’s Complaint alleges that Mattel’s use of OLD SCHOOL and NEW SCHOOL infringe upon
`its federally registered OLD SKOOL trademark, and that Mattel’s use of the marks likely causes
`confusion, mistake or deception to the consuming public. In response, Mattel argues: (1) the registration
`of OLD SKOOL should be canceled because the mark is generic or descriptive; and (2) Mattel is able to
`satisfy the elements necessary to establish the fair use defense. For the following reasons, this Court
`finds the registered trademark of OLD SKOOL'invalid.
`
`Federal registration of a trademark confers upon the mark a strong presumption of validity.
`Coca-Cola Co. v. Overland, Inc., 692 F.2d 1250, 1254 (9th Cir. 1982). However, this presumption may
`be overcome and the registration canceled by a showing that the mark has become generic or
`_
`descriptive. S_ee L4 at 1254-1255; 15 U.S.C. § 1119. A generic mark merely identifies the product’s
`classification, rather than the source, or more individualized characteristics of a particular product. gee
`
`Two Pesos, Inc. v. Taco cabana, Inc., 505 U.S. 763, 768 (1992); Zatatarains Inc. v. Oak Grove
`Smokehouse, Inc, 698 F.2d 786, 790 (9th Cir. 1983) (quoting
`Heritage Lite Ins. Co., 494 F.2d 3, 11 (5th Cir. 1974)). A descriptive mark merely identifies a/--5
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`characteristic or quality of an article, but does not identify the product’s source. gag Two Pesos, 505
`US. at 769; Zatatarains, 698 F.2d at 790. Descriptive terms ordinarily are not protectable as
`trademarks. 15 U.S.C. § l052(e)(1). However, they may become valid marks by acquiring a secondary
`meaning in the minds of the consuming public. 15 U.S.C. § 1052(i).
`
`English dictionaries define the term “old school" generally, as is a group that adheres to
`traditional ideas or practices. (§e_e_ Pietrini Dec1.,fi[ 1, Exh. 1.) Furthermore, Mattel’s evidence shows tliat
`the term “old school” and its phonetic equivalent, “old skool” are commonly used in various industriesi
`in reference to traditional or classic products, such as music styles that closely adhere to its roots, older
`versions of toys, etc. (Pietrini Decl., 111] 3-9, Exhibits 2-5) More specifically, the automotive industry,
`from which the parties’ products are based, commonly use “old school” and “old skool” to describe
`older model, or classic cars. (.53 Huerta Decl., Exhs. 1-12). This evidence indicates that Jada’s OLD
`SKOOL designation is merely a descriptive term.
`
`In opposition, Jada argues that: (1) the U.S. Patent and Trademark Office (“USPTO”) has issued
`at least thirty-eight (38) active registrations on the Principal Register for trademarks that contain the
`terms OLD SCHOOL or OLD SKOOL;(2) Jada’s OLD SKOOL mark is, at the very least, a suggestive
`term; and (3) if merely descriptive, Jada’s OLD SKOOL mark has acquired secondary meaning.
`
`'
`
`Jada’s contentions are not well-taken. First, a descriptive mark without secondary meaning
`._
`should not be registered merely “because other such marks appear on the register.” 2 J. Thomas
`.
`V
`-
`McCarthy, McCarth on Trademarks and (In air Com etition, § 11:51 (4th ed. 2004)(citing _I1;qg-g-H. 1,;
`" Scholastic’ Te"stz"n'g‘ Services, Inc., 196 U.S.P.Q. 517 (T.T.A.B. 1977)). As to Jada’s second contention,,ai '7
`
`suggestive.terrhtrequii’es the‘consumer to exercise the imagination in order to draw a conclusioiias to ,_
`,~
`,
`;v._~
`the goods’ nature.‘/IMF Inc. v. Sleekcra tBoats, 599 F.2d 341, 349 (9th Cir. 1979). Based on._tlt_e ,,
`5,-,,_..
`' common usage ofthe tenns “old school” and “old skool” to describe older model or classic cars, this, 1
`Court finds very little imagination, thought, and perception are required to conclude that OLD SKOOL;-
`-
`refers to Jada’s classic model toy cars. & Stix Products, Inc. v. United Merchants & Mtrs., Inc., 295 F.
`Supp. 479 (S.D.N.Y. 1968). Finally, Jada first started using the mark in commerce less than three years
`ago. (fig Jada’s Opp’n to Mattel’s Mot., p. 11, lines 6-7). Even ifJada has had a high volume of
`advertising and sales during this time, these factors alone are insufficient to establish a secondary
`meaning.
`
`V
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`21'
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`:- ~ .1
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`-
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`Based on the foregoing, this Court finds, as a matter of law, the term “old school” is merely
`descriptive. Therefore, the OLD SKOOL registration is invalid and canceled. Moreover, in light ofthe
`cancellation oftrademark, Jada has failed to establish a prima facie showing for its claims oftrademark
`infringement, false designation and common law unfair competition.
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`B.
`
`Claims Relating to HOT RIGZ
`
`In Mattel’s Counterclaim, it alleges that Jada’s use of HOT RIGZ infringes upon and dilutes
`Mattel’s rights in its HOT WHEELS trademark and copyright. Moreover, Mattel contends that
`registration of the HOT RIGZ trademark should be canceled. For the following reasons, this Court
`that Mattel’s copyright counterclaim and all remaining trademark counterclaims, except the Eighth
`Counterclaim,' fail as a matter of law.
`
`.__
`
`'/
`
`1.
`
`Mattel Has Failed to Show a Likelihood at Confusion 0r Dilution
`
`To prevail on its trademark claims, Mattel must prove: (1) it owns valid trademarks; (2) Jada
`used HOT RIGZ without Mattel’s consent; and (3) Jada’s use of HOT RIGZ is likely to cause confusion
`or mistake in the marketplace. Based on a review of the record, this Court finds no genuine dispute as to
`the first two elements.
`
`_
`
`The third element seeks a determination of “whether an alleged trademark infringer’s use of a ’
`mark creates a likelihood that the consuming public will be confiised as to who makes what product.”
`Brother Records, Inc. v. Jardin, 318 F.3d 900, 908 (9th Cir. 2003). Therefore, Mattel must show that
`Jada’s HOT RIGZ mark is “confusingly similar” to Mattel’s HOT WHEELS mark. See Avery De_nison= ~.
`.
`Corp. v. Sumpton,-.189 F.3d 868, 8