Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA170742
`ESTTA Tracking number:
`10/24/2007
`
`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
`Granted to Date
`of previous
`extension
`Address
`
`ZakkWylde
`10/24/2007
`
`23012 Weymouth Pl
`Valencia, CA 91354
`UNITED STATES
`
`Attorney
`information
`
`Jessica C. Bromall, Esq.
`Jeffer, Mangels, Butler & Marmaro LLP
`1900 Avenue of the Stars7th Floor
`Los Angeles, CA 90067
`UNITED STATES
`trademarkdocket@jmbm.com Phone:(310) 203-8080
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`78879802
`10/24/2007
`
`Publication date
`Opposition
`Period Ends
`
`06/26/2007
`10/24/2007
`
`Steele, Robert L.
`22 N. Grove St
`Dahlonega, GA 30533
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 2002/02/21 First Use In Commerce: 2002/02/21
`All goods and services in the class are opposed, namely: Downloadable musical sound recordings;
`Event recorders; Musical sound recordings; Musical video recordings; Pre-recorded CD's, video
`tapes, laser disks and DVD's featuring music and music videos; Sound recordings featuring music;
`Downloadable video recording featuring music; Audio recordings featuring music; Visual recordings
`and audio visual recordings featuring music and animation
`
`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
`
`2367010
`
`07/11/2000
`
`Application Date
`
`08/07/1998
`
`Foreign Priority
`
`NONE
`
`

`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`BLACK LABEL SOCIETY
`
`Date
`
`NONE
`
`Class 041. First use: First Use: 1998/10/28 First Use In Commerce: 1998/10/28
`Entertainment services in the nature of live musical performances
`
`U.S. Application
`No.
`Registration Date
`
`78672797
`
`NONE
`
`Application Date
`
`07/18/2005
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`BLACK LABEL SOCIETY
`
`NONE
`
`Class 009. First use:
`Motion picture films about musical performances; audio and visual recordings,
`namely, cassette tapes, compact discs, phonograph records, pre-recorded audio
`and video tapes, discs and cassettes featuring music, musical performances,
`and entertainment in the nature of interviews and dramatic performances;
`photographic cameras; CD players, and recorders; audio cassette players and
`recorders; television sets and video monitors; video cassette recorders and
`players; radios; audio speakers; headphones; stereo tuners; stereo receivers;
`amplifiers; graphic equalizers; telephones; computer programs for the purpose
`of creating, composing, playing and performing music, featuring music and
`musical performances and entertainment in the nature of interviews and
`dramatic performances; eyewear, namely, eyeglasses and contact lenses,
`eyeglass cases and eyeglass parts, namely, frames and lenses; prepaid
`magnetically encoded telephone calling cards, computer game equipment
`containing memory devices, namely, discs; binder-type cases for holding CD-
`ROMs
`Class 016. First use:
`Paper and paper articles, namely, trading cards; stationery; paper cut-out
`figures; paper gift wrap; paper party goods, namely, party hats, cake decorations
`and table cloths; pictures, posters, mounted and unmounted photographs;
`printed publications, namely, books, magazines, newsletters, and bulletins, in
`the field of music and musical performances and entertainment; address books;
`photo and stamp albums; paper banners; music books, coloring and children's
`books; bulletin boards; calendars; pens and pencils; pen and pencil cases;
`erasers; markers; crayons; chalk, arts and crafts paint kits; greeting, note and
`blank cards; writing and note paper and pads; notebooks, book covers; picture
`books; decals; desk sets and desktop and personal organizers; paper napkins;
`bathroom and facial tissue; tissue paper; paper place mats; rubber stamps;
`adhesive backed note paper; stencils; construction paper; modeling clay;
`bookmarks; coloring books; picture books; iron-on transfers; lithographs; music
`and lyric sheets; magazines in the field of entertainment for music fans; pre-paid
`phone cards not magnetically encoded; drawing rulers; binders for holding CD-
`ROMs; drawing sets comprised of finger paints; colored pencils; paint books;
`diaries; blank journals; letter writing sets comprised of stationery, envelopes and
`pens; memorandum boards; stickers; temporary tattoos; trading cards;
`checkbook covers, paper badges
`Class 025. First use:
`Clothing, namely, fur muffs, mufflers, stoles, fur stoles, dresses, dressing gowns,
`evening gowns, blazers, suits, pantsuits, tuxedos, cummerbunds, blouses,
`
`

`
`blousons, skirts, shirts, knit shirts, sweat bands, neckwear, neck bands, wrist
`bands, bathing caps, bathing suits, bathing trunks, bathrobes, beach cover-ups,
`beach wear, sarongs, bikinis, body shapers, body suits, neck ties, bow ties,
`panties, slips, tights, veils, pantyhose, knee highs, leggings, hosiery, socks,
`sweat socks, night shirts, night gowns, pajamas, lingerie, negligees, teddies,
`boxer shorts, underpants, undershirts, t-shirts, bras, brassieres, briefs,
`camisoles, corsets, corselets, girdles, Halloween and masquerade costumes,
`coveralls, cover-ups, cuffs, sashes, scarves, shawls, ski wear, halter tops,
`maillots, frocks, gabardines, gaiters, gloves, mittens, golf shirts, suspenders,
`bandannas, aprons, jeans, jogging suits, jumpers, pants, slacks, shorts, tank
`tops, tennis wear, knickers, leggings, leotards, leg warmers, parkas, play suits,
`polo shirts, sweaters, cardigans, capes; cloth, fur and leather jackets; fur,
`leather, rain, sport, suit, top, and over coats; waistcoats, wind resistant jackets,
`rain coats, athletic uniforms, jerseys, belts for clothing; footwear, namely shoes,
`boots, athletic shoes; and headwear, namely, hats, caps and visors, all of the
`foregoing associated with the well-known entertainer Zakk Wylde
`
`Attachments
`
`75532512#TMSN.gif ( 1 page )( bytes )
`78672797#TMSN.jpeg ( 1 page )( bytes )
`Notice of Opposition.pdf ( 5 pages )(120454 bytes )
`
`Signature
`Name
`Date
`
`/jessica c. bromall/
`Jessica C. Bromall, Esq.
`10/24/2007
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`ZAKK WLYDE,
`
`Opposition No.2
`
`Opposer’
`
`V’
`
`Application Serial No.: 78/879,802
`Mark: BLACK LABEL RECORDS
`
`Applicant. Atty. Ref. No.: 57542-0007
`
`ROBERT L. STEELE,
`
`Published for Opposition:
`
`June 26, 2007
`
`Commissioner for Trademarks
`
`P.O. Box 1451
`
`Alexandria, Virginia 22313-1451
`
`NOTICE OF OPPOSITION
`
`Opposer Zakk Wlyde, an individual, having the address of c/o Glenn B. Davis, Esq.,
`
`Myrnan, Abell, Fineman, Greenspan & Light, LLP, 11601 Wilshire Boulevard, Suite 2200, Los
`
`Angeles, CA 90025-1758, believes that he will be damaged by the registration on the Principal
`
`Register of BLACK LABEL RECORDS in connection with "downloadable musical sound
`
`records; event recorders; musical sound recordings, musical video recordings; pre-recorded CD3,
`
`video tapes, laser discs and DVDS featuring music and music videos; sound recordings featuring
`
`music; downloadable video recordings featuring music; audio recordings featuring music; Visual
`
`recordings and audio visual recordings featuring music and animation" in International Class 9.
`
`The mark BLACK LABEL RECORDS is the subj ect of federal Trademark Application Serial
`
`No. 78/879,802, allegedly owned by Robert L. Steele ("Applicant"), and Opposer hereby
`
`opposes registration thereof.
`
`4951072v1
`
`

`
`As grounds for this Opposition, it is alleged that:
`
`1.
`
`Opposer is the owner of record of U.S. Trademark Registration No. 2,367,010,
`
`issued on July 1 1, 2000, for the mark BLACK LABEL SOCIETY, as well as all of the business
`
`and goodwill connected therewith. Opposer has been using the BLACK LABEL SOCIETY
`
`mark in commerce in connection with "entertainment services in the nature of live musical
`
`performances" in International Class 41, as identified in the aforementioned registration.
`
`Opposer's registration is unrevoked and uncancelled.
`
`2.
`
`Opposer is the owner of federal Trademark Application Serial No. 78/672,797,
`
`filed on July 18, 2005, for the mark BLACK LABEL SOCIETY, as well as all of the business
`
`and goodwill connected therewith, for use in connection with goods in International Classes 16
`
`and 25, as well as in connection with "audio and visual recordings, namely, cassette tapes,
`
`compact discs, phonograph records, pre-recorded audio and video tapes, discs, and cassettes
`
`featuring music, musical performances, and entertainment, in the nature of interviews and
`
`dramatic performances" and other goods in International Class 9.
`
`3.
`
`On information and belief, Applicant has a principal address at 22 North Grove
`
`Street, Dahlonega, Georgia 30533.
`
`4.
`
`On information and belief, Applicant is the owner of record of trademark
`
`application Serial No. 78/879,802 for registration of the mark BLACK LABEL RECORDS
`
`("Applicant's Mark") for use in connection with "downloadable musical sound records; event
`
`recorders; musical sound recordings, Inusical video recordings; pre~recorded CDs, video tapes,
`
`laser discs and DVDS featuring music and music videos; sound recordings featuring music;
`
`downloadable video recordings featuring music; audio recordings featuring music; visual
`
`4951072v1
`
`

`
`recordings and audio visual recordings featuring music and animation" in International Class 9
`
`("Applicant's Goods").
`
`5.
`
`As set forth in Opposer's Reg. No. 2,367,010, Opposer has used the mark BLACK
`
`LABEL SOCIETY in connection with his "entertainment services in the nature of live musical
`
`performances" since at least as early as October 28, 1998. Opposer's use of BLACK LABEL
`
`SOCIETY has been continuous since 1998.
`
`6.
`
`Additionally, Opposer has used the mark BLACK LABEL SOCIETY in
`
`connection with, inter alia, audio recordings, including compact discs and pre-recorded compact
`
`discs featuring music and musical performances, which are noted, inter alia, in Opposer's
`
`Application Serial No. 78/672,797, since at least as early as 1999.
`
`7.
`
`Since long prior to May 9, 2006, the filing date of Applicant's application,
`
`Opposer has widely advertised and promoted his BLACK LABEL SOCIETY mark in
`
`connection with his goods and services. As a result, the BLACK LABEL SOCIETY mark has
`
`become well known and famous marks associated with Opposer in the United States. Because of
`
`these efforts and Opposer's continued advertising and promotion of the BLACK LABEL
`
`SOCIETY mark, and by virtue of the excellence and success of the goods and services offered
`
`and provided by Opposer under his BLACK LABEL SOCIETY mark, Opposer has built up a
`
`valuable reputation and tremendous goodwill in his BLACK LABEL SOCIETY mark belonging
`
`exclusively to Opposer.
`
`8.
`
`Applicant's Mark — BLACK LABEL RECORDS — so resembles Opposer's mark
`
`»~ BLACK LABEL SOCIETY — as to be likely, when used in connection with the Applicant's
`
`Goods, as to cause confusion, or mistake, or deception. Furthermore, Applicant proposes to use
`
`his mark in connection with goods that are similar and/or identical to the Opposer's goods and
`
`495l072Vl
`
`

`
`services. Applicant's Mark, therefore, creates a confusingly similar commercial impression.
`
`Thus, consumers will likely believe that Applicant's use of the mark BLACK LABEL
`
`RECORDS in connection the Applicant's Goods is in some way associated or connected with or
`
`Sponsored, authorized, or warranted by Opposer. Any objection or fault with Applicant's Goods
`
`offered in connection the Applicant's Mark would reflect upon and seriously injure Opposer's
`
`reputation in connection with goods and services offered under the BLACK LABEL SOCIETY
`
`mark.
`
`9.
`
`In particular, and without limitation, Applicant's mark is virtually identical in
`
`appearance to Opposer's famous mark BLACK LABEL SOCIETY mark. The substitution of the
`
`word "records" for the word “society" does not distinguish Applicant's Mark from Opposer's
`
`mark. Moreover, the services associated with the respective marks are similar, if not identical.
`
`10.
`
`Registration ofApp1icant's mark BLACK LABEL RECORDS i11 connection with
`
`Applicant's services will cause the distinctiveness of Opposer's famous mark BLACK LABEL
`
`SOCIETY to be diluted and would thereby be a source of damage and injury to Opposer.
`
`11.
`
`If Applicant is granted the registration herein opposed, Applicant would thereby
`
`obtain at least a prima facie exclusive right to use of the mark BLACK LABEL RECORDS in
`
`connection with the goods identified in application Serial No. 78/879,802. Such registration
`
`would be a source of damage and injury to Opposer.
`
`///
`
`///
`
`///
`
`///
`
`///
`
`49Sl072vl
`
`

`
`WI-IEREFORE, in accordance with Section 13 of the Trademark Act (15 U.S.C. § 1063),
`
`Opposer prays that this Opposition be sustained and that application Serial No. 78/879,802 be
`
`refused.
`
`Dated: October 24, 2007
`
`
`
`Respectfully submitted,
`
`Rod S.
`Jessica
`
`ITI13.11
`. Bromall
`
`JEFFER, MANGELS, BUTLER & MARIVLARO LLP
`1900 Avenue of the Stars, Seventh Floor
`Los Angeles, CA 90067
`(310) 203-8080
`E—mail:
`trademarkdocket@jmbm.com
`
`Attorneys for Opposer Zakk Wylde
`
`495107'2v1