Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA155321
`ESTTA Tracking number:
`08/07/2007
`
`Filing date:
`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
`Entity
`Address
`
`HEROES, INC.
`Non-profit Corporation
`666 11th Street, NW
`Washington, DC 20001
`UNITED STATES
`
`Citizenship
`
`District of Columbia
`
`Attorney
`information
`
`David K. Heasley
`Silverberg, Goldman & Bikoff LLP
`1101 30th St. NW, Suite 120
`Washington, DC 20007
`UNITED STATES
`jsplitter@sgbdc.com, jbikoff@sgbdc.com, dheasley@sgbdc.com
`Phone:202.944.3300
`Applicant Information
`
`77049198
`08/07/2007
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`Publication date
`Opposition
`Period Ends
`H.H.H.: Heroes Helping Heroes, Inc.
`P.O. Box 38652
`Baltimore, MD 21231
`UNITED STATES
`Goods/Services Affected by Opposition
`
`07/24/2007
`08/23/2007
`
`Class 041.
`All goods and services in the class are opposed, namely: non-profit after school development
`programs for at-risk youth involving education, namely, tutoring for elementary school, middle school
`and high school curriculum; programs featuring information about college preparation and
`opportunities; career counseling; teaching life skills through community outreach education programs
`and conducting basketball practices and games for at-risk youth
`
`Applicant Information
`
`77049200
`08/07/2007
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`Publication date
`Opposition
`Period Ends
`H.H.H.: Heroes Helping Heroes, Inc.
`P.O. Box 38652
`Baltimore, MD 21231
`UNITED STATES
`Goods/Services Affected by Opposition
`
`07/24/2007
`08/23/2007
`
`

`
`Class 041.
`All goods and services in the class are opposed, namely: non-profit after school development
`programs for at-risk youth involving education, namely, tutoring for elementary school, middle school
`and high school curriculum; programs featuring information about college preparation and
`opportunities; career counseling; teaching life skills through community outreach education programs
`and conducting basketball practices and games for at-risk youth
`
`Applicant Information
`
`77049398
`08/07/2007
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`Publication date
`Opposition
`Period Ends
`H.H.H.: Heroes Helping Heroes, Inc.
`P.O. Box 38652
`Baltimore, MD 21231
`UNITED STATES
`Goods/Services Affected by Opposition
`
`07/24/2007
`08/23/2007
`
`Class 041.
`All goods and services in the class are opposed, namely: non-profit after school development
`programs for at-risk youth involving education, namely, tutoring for elementary school, middle school
`and high school curriculum; programs featuring information about college preparation and
`opportunities; career counseling; teaching life skills through community outreach education programs
`and conducting basketball practices and games for at-risk youth
`
`Applicant Information
`
`77049401
`08/07/2007
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`Publication date
`Opposition
`Period Ends
`H.H.H.: Heroes Helping Heroes, Inc.
`P.O. Box 38652
`Baltimore, MD 21231
`UNITED STATES
`Goods/Services Affected by Opposition
`
`07/24/2007
`08/23/2007
`
`Class 041.
`All goods and services in the class are opposed, namely: non-profit after school development
`programs for at-risk youth involving education, namely, tutoring for elementary school, middle school
`and high school curriculum; programs featuring information about college preparation and
`opportunities; career counseling; teaching life skills through community outreach education programs
`and conducting basketball practices and games for at-risk youth
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution
`
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`2927593
`
`02/22/2005
`
`Word Mark
`
`HEROES
`
`Application Date
`
`02/27/2004
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 036. First use: First Use: 1964/11/18 First Use In Commerce: 1964/12/24
`CHARITABLE FUND RAISING SERVICES AND CHARITABLE SERVICES,
`NAMELY, AIDING THE FAMILIES OF FIRE FIGHTERS AND POLICE
`OFFICERS KILLED IN THE LINE OF DUTY BY PROVIDING FUNDS TO THE
`VICTIMS FAMILIES
`Class 042. First use: First Use: 1964/11/18 First Use In Commerce: 1964/12/24
`CHARITABLE SERVICES, NAMELY, AIDING THE FAMILIES OF FIRE
`FIGHTERS AND POLICE OFFICERS KILLED IN THE LINE OF DUTY BY
`PROVIDING ACCESS TO LEGAL SERVICES TO THE VICTIMS FAMILIES
`Class 044. First use: First Use: 1964/11/18 First Use In Commerce: 1964/12/24
`CHARITABLE SERVICES, NAMELY, AIDING THE FAMILIES OF FIRE
`FIGHTERS AND POLICE OFFICERS KILLED IN THE LINE OF DUTY BY
`PROVIDING ACCESS MEDICAL SERVICES AND PSYCHOLOGICAL
`SUPPORT COUNSELING TO THE VICTIMS FAMILIES
`
`U.S. Registration
`No.
`Registration Date
`
`827676
`
`04/18/1967
`
`Application Date
`
`04/22/1966
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`HEROES INC.
`
`NONE
`
`Class U100 (International Class 035, 036, 037, 038, 039, 040, 041, 042). First
`use: First Use: 1964/11/18 First Use In Commerce: 1964/12/24
`AIDING THE WIDOWS AND CHILDREN OF FIREMEN AND POLICEMEN
`KILLED IN THE LINE OF DUTY IN WASHINGTON, D;C;, MARYLAND AND
`VIRGINIA, IN FINANCIAL, LEGAL, AND LIKE CAUSES
`
`U.S. Registration
`No.
`Registration Date
`
`2142514
`
`03/10/1998
`
`Application Date
`
`02/18/1997
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`HEROES, INC.
`
`NONE
`
`Class 036. First use: First Use: 1964/11/18 First Use In Commerce: 1964/12/24
`charitable fund raising services and charitable services, namely, aiding the
`families of fire fighters and police officers killed in the line of duty by providing
`funds to the victims families
`Class 042. First use: First Use: 1964/11/18 First Use In Commerce: 1964/12/24
`charitable services, namely, aiding the families of fire fighters and police officers
`killed in the line of duty by providing access to legal services, medical services
`and counseling to the victims families
`
`Attachments
`
`76578125#TMSN.gif ( 1 page )( bytes )
`
`

`
`72244113#TMSN.gif ( 1 page )( bytes )
`Notice of Opposition for HEROES HELPING HEROES.pdf ( 38 pages )(2551985
`bytes )
`
`Signature
`Name
`Date
`
`/david k. heasley/
`David K. Heasley
`08/07/2007
`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter ofApplieation Serial Nos. 77/049,198, 77/049,200, 77/049,398 , 77/049,401
`Published in the Official Gazette on July 24,2007
`
`Opposition No.
`
`)
`
`) )
`
`) )
`
`)
`)
`
`) ) )
`
`)
`)
`
`HEROES, INC.,
`
`Opposer,
`
`v.
`
`H.H.H. : Heroes Helping Heroes, Inc.
`
`Applicant.
`'
`
`NOTICE OF OPPOSITION
`
`Heroes, lnc., a non-profit District of Columbia corporation having its principal place of
`
`business at 666 11th Street, NW, Suite 300, Washington, DC 20001, believes that it will be
`
`damaged by and thus opposes registration of the following marks:
`
`0 H.H.H.: HEROES IIELPING HEROES, INC. (Application Serial No. 77/049,198):
`
`0 HEROES HELPING HEROES (Application Serial No. 77/049,200);
`
`0 HEROES HELPING HEROES (& Design) (Application Serial No. 77/049,398); and
`
`o HEROES HELPING HEROES (& Design) (Application Serial No. 77/049,401);
`
`(together, the “HEROES HELPING HEROES Marks”), all for use in connection with “non-
`
`profit after school development programs for at-risk youth involving education, namely, tutoring
`
`for elementary school, middle school and high school curriculum; programs
`
`featuring
`
`information about college preparation and opportunities; career counseling; teaching life skills
`
`

`
`
`
`through community outreach education programs and conducting basketball practices and games
`
`for at—risk youth” in International Class 41. As provided by 15 U.S.C. §§1052, 1063, and all
`
`other applicable authority, Opposer alleges as follows in opposition to registration of the above-
`
`referenced marks:
`
`1.
`
`Applicant, H.H.H: Heroes Helping Heroes, Inc., is a Maryland
`
`corporation having its principal place of business at P.O. Box 38652, Baltimore, Maryland,
`
`2123 1 .
`
`2.
`
`On November 21, 2006, Applicant filed applications for the following two
`
`marks:
`
`HEROES HELPING HEROES, INC. (Application Serial No. 77/049,198) and
`
`HEROES HELPING HEROES (Application Serial No. 77/049,200), based upon an intention to
`
`use the marks in interstate commerce in connection with “non—profit after school development
`
`programs for at-risk youth involving education, namely, tutoring for elementary school, middle
`
`school and high school curriculum; programs featuring information about college preparation
`
`and opportunities; career counseling; teaching life skills through community outreach education
`99
`
`programs and conducting basketball practices and games for at-risk yout
`
`,
`
`in International
`
`Class 41. The marks were published for opposition in the July 24, 2007 edition of the Official
`
`Gazette at TM 1215-1216.
`
`3.
`
`On November 22, 2006, Applicant filed subsequent applications to register the
`
`following two marks: HEROES HELPING HEROES (& Design) (Application Serial No.
`
`77/049,398), and HEROES HELPING HEROES (& Design) (Application Serial No. 77/049,
`
`401), based upon an intention to use the mark in interstate commerce in connection with
`
`“non-profit after school development programs for at-risk youth involving education,
`
`namely, tutoring for elementary school, middle school and high school curriculum; programs
`
`2
`
`

`
`
`
`featuring information about college preparation and opportunities; career counseling;
`
`teaching life skills
`
`through community outreach education programs and conducting
`
`basketball practices and games for at-risk youth,” in International Class 41. The marks were
`
`published for opposition in the July 24, 2007 edition of the Official Gazette at TM 1216.
`
`4.
`
`Opposer, Heroes, Inc.,
`
`is the owner of U.S. Registration No. 2,927,593 for
`
`HEROES, U.S. Registration No. 827,676 for HEROES INC., and U.S. Registration No.
`
`2,142,514 for HEROES, INC. (see Exhibit A), which were adopted and first used by Opposer
`
`in interstate commerce at least as early as December 24, 1964, in connection with “aiding the
`
`widows and children of firemen and policemen killed in the line of duty in Washington, DC,
`
`Maryland and Virginia, in financial,
`
`legal and like causes” and “charitable fund raising
`
`services and charitable services, namely, aiding the families of fire fighters and police
`
`officers killed in the line of duty by providing funds to the victims’ families” in International
`
`Class 36, and “charitable services, namely, aiding the families of fire fighters and police
`
`officers killed in the line of duty by providing access to legal services, medical services and
`
`counseling to the victims’ families” in International Class 42 (hereinafter,
`
`the “HEROES
`
`Marks”).
`
`5.
`
`Opposer has continuously used its HEROES Marks in connection with “aiding the
`
`widows and children of firemen and policemen killed in the line of duty in Washington, DC,
`
`Maryland and Virginia,
`
`in financial,
`
`legal and like causes” and “charitable fund raising
`
`services and charitable services, namely, aiding the families of fire fighters and police
`
`officers killed in the line of duty by providing funds to the victims’ families” in International
`
`Class 36, and “charitable services, namely, aiding the families of fire fighters and police
`
`officers killed in the line of duty by providing access to legal services, medical services and
`
`3
`
`

`
`
`
`counseling to the victims’ laniilies” in International Class 42 in interstate commerce since at
`
`least as early as December 24, 1964, and is currently using the marks in interstate commerce
`
`in connection with those services. Opposer’s aforesaid registrations are valid and subsisting,
`
`have been neither
`
`revoked nor cancelled, and have not expired; Opposer’s aforesaid
`
`Registration No. 827,676 — HEROES INC. & Design is ineontestible.
`
`6. Opposer, Heroes, lnc., traces its roots and use of the HEROES Marks back to July
`
`1964, when it was founded by a groupiof 100 eivic—minded citizens of the Washington, DC
`
`Metropolitan Area, and chartered in the District of Columbia as a charitable organization.
`
`Opposer provides financial and professional aid to the survivors of law enforcement officers
`
`and firefighters killed in the li11e of duty who served in Washington, DC, Maryland and
`
`Virginia.
`
`7. When Opposer Heroes, Inc. learns that a firefighter or law enforcement officer has
`
`died in the line of duty, Opposer’s representatives meet with the surviving spouse to assess
`
`the surviving family’s needs and to render assistance to them. Opposer immediately provides
`
`the surviving spouse of the deceased with thousands of dollars of financial assistance to
`
`cover immediate expenses. Opposer provides aid in a variety of forms, including mortgage
`
`payments,
`
`insurance payments, car payments, medical bill payments, credit card debt
`
`payments, counseling, guidance and mentoring on educational and professional options,
`
`college scholarships and general financial support. Opposer also provides the surviving
`
`spouse thousands of dollars for funeral expenses for the deceased. The familiesreceiving
`
`Opposer Heroes, lne.’s aid are located throughout Maryland, the District of Columbia, and
`
`Virginia. Opposer provides these services to them under the HEROES Marks.
`
`

`
`
`
`8.
`
`A significant component of the Opposer’s services includes support for children.
`
`Opposer provides support for all of the deceased firefighters and law enforcement offieers’
`
`surviving children until they reach the age of 21, and some receive aid even after that age.
`
`Each Christmas and Summer, Opposer gives every dependent surviving child over five years
`
`of age $500. Additionally, each year, Opposer gives every dependent child $100 on that
`
`child’s birthday. Opposer renders these services under the HEROES Marks.
`
`9. Opposer also offers every surviving dependent child of the deceased firefighter or law
`
`enforcement officer an undergraduate scholarship for the college, university, trade school or
`
`other training program of the child’s choice. Since its inception, Opposer’s scholarship
`
`program has assisted more than l5O students. These students come from all parts of
`
`Maryland, the District of Columbia, and Virginia. With the support provided by Opposer’s
`
`program, these students have enrolled in more than 100 colleges and universities throughout
`
`the United States.
`
`10.
`
`Opposer
`
`funds
`
`its programs
`
`through membership dues, unsolicited public
`
`contributions and an annual golf tournament. The funds it collects are used solely for the
`
`benefit of the surviving spouse and children, as Opposer has no overhead or paid staff.
`
`ll.
`
`Through long and continuous use, Opposer’s HEROES Marks have become well-
`
`known to members of the public and, in particular, to police offieers and firefighters and their
`
`families and/or survivors. Moreover, Opposer Heroes, Inc. has built up a high degree of
`
`distinctiveness and valuable goodwill
`
`in its name, reputation and the HEROES Marks
`
`through the investment of a great deal of time, effort and money over the course of the last
`
`five decades. As a result, Opposer’s name and its HEROES Marks are well-known and
`
`L)‘:
`
`

`
`
`
`recognized as
`
`identifying Opposer Heroes,
`
`Inc. and its
`
`services and programs, and
`
`distinguishing them from like or similar services and programs of others.
`
`12. Opposer does not permit any other organization to use its name or HEROES Marks.
`
`Opposer has not authorized Applicant to use or register its HEROES HELPING HEROES
`
`Marks, nor does Opposer exercise any control over Applieant’s use o1‘the marks.
`
`13.
`
`Applicant’s new marks wholly incorporate the Opposer’s HEROES Mark.
`
`In fact,
`
`the dominant feature of App1icant’s marks is the word “IIEROES,” which is phonetically and
`
`visually identical to ()pposer's HEROES Marks. Further, Applicant’s services overlap with
`
`those of Opposer in that they are directed toward the same activities and individuals to whom
`
`Opposer’s services are also, in part, directed: i.e., educational services for youth.
`
`14. Applicant is aware of the history recited above.
`
`In 2002, Applicant began to operate
`
`its non—protit business under the corporate name “Heroes, Inc.” and filed Application Serial
`
`No. 76/372,173 to register HEROES (and Design) as its mark.
`
`715.
`
`In August 2002 Opposer, Heroes, Inc., filed Civil Action No. JFM-02-2806 (the
`
`“Civil Action”) against Applicant in the U.S. District Court of Maryland, seeking to stop
`
`Applicant°s unauthori/ed infriiigenient o1‘Opposer’s HEROES Marks. (Exhibit B.)
`
`16.
`
`In October 20()2 Opposer Heroes, Inc. filed Opposition No. 91153286 before the
`
`Trademark Trial and Appeal Board, opposing Applicant’s Application Serial No. 76/372,173
`
`to register HEROES (and Design).
`
`17.
`
`In response to the Civil Action, Applicant made an Offer ol‘Judgment to Opposer on
`
`December 16, 2002. This offer was accepted by Opposer.
`
`18.
`
`On March 31, 2003., the Court accordingly entered judgment (Exhibit C). The
`
`Court, explicitly finding “that entry of judgment for permanent injunetive relief pursuant to
`
`6
`
`

`
`
`
`the terms of Offer of Judgment is appropriate,” entered judgment against Applicant, ordering
`
`that:
`
`“l. Defendant shall withdraw with prejudice its federal trademark Application
`
`Serial No. 76/372,173 to register the mark HEROES with the United
`
`States Patent and Trademark Office;
`
`2. Defendant shall not use HEROES, INC. as its corporate name or mark;
`
`3.
`
`This Order shall take effect and be enforceable by Plaintiff five (5) months
`
`after entry of this Order.”
`——Exhibit C, March 3], 2003 Order of United’ States District Court for the
`
`Dis'l‘rz'cI 0fMaryland (J. Frederick Motz, .1.)
`
`19.
`
`On that same day, March 31, 2003, Applicant withdrew its Application Serial No.
`
`76/372,173 with prejudice. And the Board. on April 15, 2003, accordingly entered judgment
`
`against Applicant with prejudice.
`
`20.
`
`()pposer sought to cooperate with Applicant by suggesting approximately a dozen
`
`new, alternative names Applicant could use-—none of which would contain the confusingly
`
`similar word HEROES.
`
`21.
`
`Applicant, however, chose as
`
`its
`
`replacement name and mark HEROES
`
`HELPlNG HEROES, INC.
`
`22.
`
`Opposer promptly told Applicant that its proposed mark was objectionable, for
`
`several reasons, including
`
`It violated the Consent Judgment by incorporating Opposer’s HEROES,
`
`lnc. Mark;
`
`

`
`
`
`b.
`
`It
`
`repeats
`
`the dominant word
`
`“HEROES,” worsening Applicant’s
`
`infringement of Opposer’s IIEROES mark; and
`
`c.
`
`Its use of the word “Helping” in HEROES HELPING HEROES falsely
`
`suggests that Applieant’s organization helps Opposer’s organization. (Exhibit D.)
`
`23. Opposer has repeatedly written to Applicant about its unwise choice of a replacement
`
`name. Opposer has demanded that Applicant cease and desist from any use of its HEROES
`
`HELPING HEROES Marks and withdraw the applications for these Trademarks from the U.S.
`
`Trademark Office. (Eirhilvit D.)
`
`24.
`
`Applicant’s
`
`intended use of the HEROES HELPING HEROES Marks
`
`in
`
`commerce in connection with its proposed services is likely to cause confusion, mistake and
`
`deception as
`
`to the source, origin, affiliation,
`
`sponsorship or approval of Applicant’s
`
`organization and activities.
`
`25.
`
`Registration and use of Applicant’s Marks will reduce the value of the goodwill
`
`associated with Opposer°s HEROES Marks.
`
`26.
`
`Registration and use of Applicant’s HEROES HELPING HEROES Marks are
`
`likely to damage Opposer’s reputation and to injure and impair Opposer’s rights in its HEROES
`
`Marks by causing confusion, mistake and/or deception as to the source of the services offered by
`
`Applicant. Persons familiar with Opposer’s HEROES Marks will be likely to utilize Applicant’s
`
`services in the mistaken belief that they are marketed by, or in some way affiliated with,
`
`sponsored. approved or endorsed by, Opposer.
`
`In addition, any defect, failure, or fault with
`
`respect to services offered by Applicant under the proposed marks will erode the valuable
`
`goodwill associated with Opposer and its HEROES Marks.
`
`

`
`
`
`27.
`
`If Applicant were granted registration of its HEROES HELPING HEROES
`
`Trademarks, it would thereby obtain a prinaafizcze exclusive right to use the marks in connection
`
`with the services described in its applications, contributing to the damage and injury that would
`
`be suffered by Opposer.
`
`29.
`
`For these reasons. Opposer expressly alleges and asserts that registration of the
`
`HEROES HELPING HEROES Marks by Applicant for the referenced services would be
`
`inconsistent with the standards for registration set forth in 15 U.S.C. §§1052, 1063, and other
`
`applicable authority.
`
`WH EREFORE. Opposer respectfully requests that this Opposition be sustained and that
`
`registration of Applicant’s HEROES HELPING HEROES Trademarks be refused.
`
`The governmental filing fee, and any additional fees in connection herewith, are hereby
`
`authorized to be drawn from Deposit Account No. 50-0995 of Silverberg, Goldman & Bikoff,
`
`L.L.P.
`
`Respectfully submitted,
`.v«
`
`
`
`
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`
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`David K. Heasley, Esq.
`Silverberg, Goldman & Bikoff, L.LE»
`Georgetown Place, Suite 120
`l l0l 30th Street, NW
`
`Washington, DC 20007
`Tel. 202/944-3300
`
`Fax: 202/944-3306
`
`jbikolT@sgbdc.com
`dheasley@sgbdc.con1
`
`Atlorneysfbr ()pp0Ser,
`Harries, Inc.
`
`9
`
`

`
`
`
`EXHIBIT A
`
`

`
`
`
`Int. Cls.: 36, 42 and 44
`
`Prior U.S. C1s.: 100, 101 and 102
`
`Reg. No. 2,927,593
`United States Patent and Trademark Office
`Registere¢1Feb.22,2005
`
`
`SERVICE MARK
`PRINCIPAL REGISTER
`
`HEROES
`
`HEROES. INC. (D.C. CORPORATION)
`666 11TH STREET, NW
`SUITE 300
`WASHINGTON, DC 20001
`
`FOR: CHARITABLE FUND RAISING SERVICES
`AND CHARITABLE SERVICES. NAMELY, AIDING
`THE FAMILIES OF FIRE FIGHTERS AND POLICE
`OFFICERS KILLED IN THE LINE OF DUTY BY
`PROVIDING FUNDS TO THE VICTIMS FAMILIES,
`IN CLASS 36 (US. CLS. 100, 101 AND 102).
`
`FIRST USE 11-18-1964; IN COMMERCE 12-24-1964.
`
`FOR: CHARITABLE SERVICES, NAMELY, AID-
`ING THE FAMILIES OF FIRE FIGHTERS AND
`POLICE OFFICERS KILLED IN THE LINE OF DUTY
`BY PROVIDING ACCESS TO LEGAL SERVICES TO
`THE VICTIMS FAMILIES, IN CLASS 42 (US. CLS. 100
`AND 101).
`
`FOR: CHARITABLE SERVICES. NAMELY, AID-
`ING THE FAMILIES OF FIRE FIGHTERS AND
`POLICE OFFICERS KILLED IN THE LINE OF DUTY
`BY PROVIDING ACCESS MEDICAL SERVICES
`AND PSYCHOLOGICAL SUPPORT COUNSELING
`TO THE VICTIMS FAMILIES, IN CLASS 44 (US. CLS.
`100 AND 101).
`
`FIRST USE 11-18-1964; IN COMMERCE 12-24-1964.
`
`THE MARK CONSISTS OF STANDARD CHAR-
`ACTERS WITHOUT CLAIIVI TO ANY PARTICULAR
`FONT, STYLE, SIZE, OR COLOR.
`
`OWNER OF U.S. REG. NOS. 827,676 AND 2,142,514.
`
`SER. NO. 76-578,125. FILED 2-27-2004.
`
`FIRST USE 11-18-1964; IN COIVIMERCE 12-24-1964.
`
`ALICE BENMAMAN, EXAMINING ATTORNEY
`
`

`
`
`
`Int. CIs.: 36 and 42
`
`Prior U.S. CIs.: 100, 101 and 102
`
`Reg. No. 2,142,514
`Unitefi States Patent and Trademark Office
`Registered Mar. 10, 1993
`
`SERVICE Is/IABK
`
`PRINCIPAL REGISTER
`
`HEROES, INC.
`
`HEROES, INC. (DC. CORPORATION)
`666 IITI-I STREET, N.W.} SUITE 300
`VVASIIINGTON, DC 20001
`
`FOR: CHARITABLE FUND RAISING SERV-
`ICES
`AND
`CHARITABLE _ SERVICES,
`NAMELY, AIDING THE FAMILIES OF FIRE
`FIGHTERS AND POLICE OFFICERS KILLED
`IN THE LINE OF DUTY BY PROVIDING
`FUNDS TO THE VICTIMS FAMILIES,
`IN
`CLASS 36 (U.S. CLS. I00, I01 AND 102).
`FIRST USE
`1I~I8-I964;
`IN COMMERCE
`I2—24—I964.
`
`FOR: CHARITABLE SERVICES, NAMELY,
`AIDING THE FAMILIES OF FIRE FIGHTERS
`
`AND POLICE OFFICERS KILLED IN THE
`LINE OF DUTY BY PROVIDING ACCESS TO
`LEGAL SERVICES, MEDICAL SERVICES AND
`COUNSELING TO THE VICTIMS FAMILIES.
`IN CLASS 42 (US. CLS. IOQAND 101).
`FIRST USE
`II—I8—I964;
`IN COMMERCE
`I2~24~I964.
`OWNER OF US REG. NO. 827,676.
`NO CLAIM IS MADE TO THE EXCLUSIVE-
`RIGHT TO USE “INC.“, APART FROM THE
`MARK AS SHOWN.
`
`SER. NO‘ 75-243,575, FILED 2-18-1997.
`
`EDWARD NELSON, EXAMINING ATTORNEY
`
`
`
`
`
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`

`
`
`
`EXHIBIT B
`
`

`
`
`
`IN THE UNITED STATES DISTRICT COURT I
`FOR THE DISTRICT OF MARYLAND
`(Northern Division)
`
`1], ii.’
`
`'
`
`_
`
`if
`
`g. 7
`
`.
`
`jj:
`
`j;
`
`Civil Action No.
`
`._
`~.il”l’l Cl 5
`
`’
`
`is
`
`HEROES, INC.
`666 11* Street, NW, Suite 300
`
`Washington, D.C. 20001
`V.
`
`HEROES, INC.
`
`Apt. C7
`7 Nightingale Way
`Lutherville, Md. 21093
`
`Serve on:
`
`Resident Agent
`Christopher E. Herr
`Apt. C7
`7 Nightingale Way
`Lutherville, Md. 21093
`
`\_/\.y\./\./\_/‘»./\.J\/\.,/§/S/";/L/\./L/“/L/
`
`COIVIPLAINT
`
`Plaintifi‘, HEROES, INC, by its undersigned attorneys, hereby sues the Defendant,
`
`HEROES, INC., and states:
`
`NATURE OF THE CASE
`
`1.
`
`This is an action for federal trademark infringement, unfair competition, and trademark
`
`dilution, and for trademark infringement under the common law of Maryland. Plaintiff
`
`HEROES, INC, brings this action because it owns the federally registered service marks
`
`HEROES and HEROES, INC. (collectively referred to as the HEROES mark), and owns
`
`common law rights in those marks. Defendant has unlawfully adopted and is using the
`
`name HEROES, INC. as the name of its organization and as the service mark designating
`
`its services. Such use is likely to mislead the public into believing Defendant’s
`
`-1-
`
`

`
`
`
`organization is the same as, affiliated with, or sponsored by Plaintifi to Plaintiff‘ s
`
`detriment.
`
`JURISDICTION AND VENUE
`
`ix)
`
`This Court has jurisdiction over the subject matter of this action pursuant to 15 U.S.C. §§
`
`1.11.4, 1116, "1117, 11.21, and 1125(a)(_c), and 28 U.S.C.§§ 1331, 1332, l338(a), l338(b),
`
`and 1367.
`
`La)
`
`This Court has personal. jurisdiction over the Defendant, which is organized and exists
`
`under the laws of the State of Maryland, and has its principal place of business in
`
`Lutherville, Maryland.
`
`Venue is proper in this District and Division pursuant to 28 U.S.C.§1391.
`
`e THE PARTIES
`
`U1
`
`Plaintiff, HEROES, INC. is a corporation organized and existing under the laws of the
`
`District of Columbia, with its principal place of business at 666 11“‘ Street, N.W., Suite
`
`300, Washington, DC. 20001. Plaintiff is a non—protit charitable organization that
`
`provides financial aid and professional counsel under the HEROES name and service mark
`
`to the survivors of law enforcement ofiicers and firefighters killed in the line of duty.
`
`Defendant is a nonprofit charitable corporation which is organized and exists under the
`
`laws of the State of Maryland, and which has its principal place of business in Lutherville,
`
`Maryland.
`
`THE HEROES NAME AND MARK
`
`Plaintiff traces its use of the HEROES mark back to July 1964, when it was founded by a
`
`group of 100 civic—rninded citizens of the Washington, DC. area and chartered in the
`
`-2-
`
`

`
`
`
`District of Columbia as a charitable organization.
`
`8.
`
`Plaintiff provides financial and professional aid to the survivors oflaw enforcement
`
`officers and firefighters killed in the line of duty in the Washington, DC. metropolitan
`
`area, including parts of Maryland and Virginia.
`
`9,
`
`When Plaintiff learns that a firefighter or law enforcement officer has died in the line of
`
`duty, Plaintiff immediately provides the surviving spouse of the deceased with thousands
`
`of dollars of financial assistance to cover immediate expenses. Plaintiff also provides the
`
`surviving spouse thousands of dollars for funeral expenses for the deceased. Plaintiff
`
`provides such services under the HEROES mark.
`
`l0.
`
`As soon as possible thereafter, Plaintiff s representatives meet withthe surviving spouse to
`
`assess the surviving family’s needs and to render assistance. Plaintiff provides aid in a
`
`variety of forms, including mortgage payments, insurance payments, car payments,
`
`medical bill payments, credit card debt payments, counseling, guidance and mentoring on
`
`educational and professional options, college scholarships and general financial support.
`
`All of these services are rendered under the HEROES mark.
`
`ll.
`
`Plaintiff provides support for all of the deceased firefighters and law enforcement officers’
`
`surviving children until they reach the age of 21. Some family members receive aid even
`
`after that age. Each Christmas and Summer, Plaintiff, HEROES, INC, gives every
`
`dependent surviving child over five years of age $500. Additionally, each year, Plaintiff
`
`gives every dependent child $100 on that child’s birthday. Plaintifi renders these services
`
`under the HEROES mark.
`
`Plaintiff offers every surviving dependent child of the deceased firefighter or law
`
`

`
`
`
`enforcement officer an undergraduate scholarship for the college, university, trade school
`
`or other training program of the child’s choice. Since its inception, the HEROES
`
`scholarship program has assisted more than 150 students. With the support provided by
`
`Plaintiff’ s HEROES program, these students have enrolled in more than 100 colleges and
`
`universities throughout the United States.
`
`Plaintiff HEROES, INC. funds its programs through membership dues, unsolicited public
`
`contributions, and an annual golf tournament. The funds it collects are used solely for the
`
`benefit of the surviving spouse and children, as Plaintiff HEROES, INC. has no overhead
`
`or paid staff.
`
`14.
`
`Plaintiff HEROES, INC. does not permit any other organization to use its name or mark.
`
`PLAINTIFF’ S EDERALLY RE
`
`15.
`
`Plaintifi is the sole and exclusive owner of federal Trademark Registration No. 827,676
`
`for the mark HEROES & Design for “aiding the widows and children of firemen and
`
`policemen killed in the line of duty in Washington, DC, Maryland, and Virginia, in
`
`financial, legal, and like causes.” (Exhibit 1 hereto.) This registration, issued on April 18,
`
`1967, is valid, subsisting, and incontestible.
`
`16.
`
`Plaintiff is also the sole and exclusive owner of federal Trademark Registration No.
`
`2,142,514 for the mark HEROES, INC, for “charitable fund raising services and
`
`charitable services, namely, aiding the families of fire fighters and police officers killed in
`
`the line of duty by providing funds to the victims’ families” and “charitable services,
`
`namely, aiding the families of fire fighters and police officers killed in the line of duty by
`
`providing access to legal services, medical services and counseling to the victims’
`
`-4-
`
`

`
`
`
`families.” (Exhibit 2 hereto.) This registration, issued on March 10, 1998, is valid and
`
`subsisting.
`
`Both of HEROES, INC. ’ S aforesaid registered marks have been used since 1964 in
`
`connection with the services covered by the respective registrations, as described in the
`
`preceding paragraphs of this complaint.
`
`
`
`DEFENDANT’ S WR .. J
`
`18.
`
`Defendant, acting without Plaintiff s permission, has adopted Plaintiff’ s HEROES, INC.
`
`name and mark to identify itself and its services. On June 8, 2000, Defendant filed for
`
`incorporation under the laws of the State of Maryland under the corporate name
`
`HEROES, INC. Since that date, Defendant has acted under the corporate name
`
`HEROES, TNC. Defendant acts as a charitable non—profit corporation providing
`
`educational services to disadvantaged youth.
`
`19.
`
`On February 20, 2002 Defendant filed an application with the United States Patent and
`
`Trademark Office for federal registration of the mark HEROES and Design.
`
`Defendant’s application, Serial No. 76/372,173, states that Defendant intends to use the
`
`HEROES mark in connection with “Educational services, namely, non—prof1t after school
`
`one-on—one mentoring for at risk youth in the field of volunteerism for community service
`
`and involving tutoring in secondary school subjects.”
`
`20.
`
`At all relevant times, Defendant, knew, should have known, or had reason to know of
`
`Plaintiff s federal registrations and cornrnon law rights in the HEROES mark. Defendant
`
`has nonetheless willfiilly undertaken the aforementioned actions and filed the
`
`aforementioned applicati