Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA361424
`ESTTA Tracking number:
`08/04/2010
`
`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
`
`DC Comics
`09/01/2010
`
`1700 Broadway
`New York, NY 10019
`UNITED STATES
`
`Attorney
`information
`
`Patrick T. Perkins
`Perkins Law Office, P.C.
`1711 Route 9D
`Cold Spring, NY 10516
`UNITED STATES
`pperkins@ptplaw.com
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`77851544
`08/04/2010
`
`Publication date
`Opposition
`Period Ends
`
`05/04/2010
`09/01/2010
`
`Racine Berkow Associates, Inc
`37-05 Greenpoint Avenue
`Long Island City, NY 11101
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 035.
`All goods and services in the class are opposed, namely: Arranging for pickup, delivery, storage and
`transportation of documents, packages, freight and parcels via ground and air carriers;
`Transportation logistics services, namely, arranging the transportation of goods for others;
`Transportation logistics services, namely, planning and scheduling shipments for users of
`transportation services; Transportation management services, namely, planning and coordinating
`transportation of people for others
`Class 039.
`All goods and services in the class are opposed, namely: Air transport and storage of goods; Air
`transport services; Air transportation; Air transportation of passengers and freight; Armored car
`transport; Cargo ship transport; Freight and transport brokerage; Freight ship transport; Freight
`transportation brokerage; Freight transportation consultation in the field of freight transportation by
`truck, rail, air and ocean; Global transportation of freight for others by all available means; Guarded
`transport of valuables; Guarded transportation of valuables; Guarded transportation of valuables and
`money by truck; Guarded truck transport; Marine transport; Packaging articles for transportation;
`Packing articles for transportation; Providing ocean transportation, storage and delivery services;
`Shipping and delivery services, namely, pickup, transportation, and delivery of packages and letters
`by various modes of transportation; Supply chain logistics and reverse logistics services, namely,
`
`

`
`storage, transportation and delivery of goods for others by air, rail, ship or truck; Supply chain,
`logistics and reverse logistics services, namely, storage, transportation and delivery of documents,
`packages, raw materials, and other freight for others by air, rail, ship or truck; Transport and delivery
`of goods; Transport and storage of goods; Transport brokerage; Transport of goods; Transport of
`money and valuables; Transport of valuables; Transportation and delivery services by air, road, rail
`and sea; Transportation and delivery services, namely, same day shipment services; Transportation
`and storage of goods; Transportation consulting; Transportation of goods; Truck transport
`
`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
`
`2211378
`
`12/15/1998
`
`Word Mark
`Design Mark
`
`S
`
`Application Date
`
`08/03/1995
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 028. First use: First Use: 1995/10/00 First Use In Commerce: 1995/10/00
`toys and sporting goods, including action figures and accessories therefor; plush
`toys; balloons; toy vehicles; dolls; electronic hand held game unit and action
`type target game
`
`U.S. Registration
`No.
`Registration Date
`
`2226415
`
`02/23/1999
`
`Word Mark
`Design Mark
`
`S
`
`Application Date
`
`04/18/1995
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 1987/00/00 First Use In Commerce: 1987/00/00
`motion picture, video and television films featuring animated and non-animated
`action, adventure and drama; prerecorded audio-video tapes, cassettes and
`discs featuring animated and non-animated action, adventure, drama, and/or
`music
`
`U.S. Registration
`No.
`Registration Date
`
`1200387
`
`07/06/1982
`
`Word Mark
`Design Mark
`
`S
`
`Application Date
`
`09/18/1979
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 014. First use: First Use: 1940/00/00 First Use In Commerce: 1940/00/00
`Jewelry, Watches and Clocks
`
`U.S. Registration
`No.
`Registration Date
`
`1200233
`
`07/06/1982
`
`Word Mark
`Design Mark
`
`S
`
`Application Date
`
`09/18/1979
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 1946/00/00 First Use In Commerce: 1946/00/00
`Phonographic Records, Prerecorded Audio and Audio/Visual Tapes, and
`Cassettes, Visual Tapes and Cassettes, Radios, Eye Glass Frames and Cases
`
`U.S. Registration
`
`1209743
`
`Application Date
`
`09/18/1979
`
`

`
`No.
`Registration Date
`
`09/21/1982
`
`Word Mark
`Design Mark
`
`S
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 021. First use: First Use: 1954/00/00 First Use In Commerce: 1954/00/00
`Lunchboxes
`
`U.S. Registration
`No.
`Registration Date
`
`1201167
`
`07/13/1982
`
`Word Mark
`Design Mark
`
`S
`
`Application Date
`
`09/18/1979
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 024. First use: First Use: 1949/00/00 First Use In Commerce: 1949/00/00
`Shower Curtains, Towels, Sheets, Pillow Cases, Blankets, Comforters, and
`Drapes
`
`U.S. Registration
`No.
`Registration Date
`
`1201149
`
`07/13/1982
`
`Word Mark
`
`S
`
`Application Date
`
`09/18/1979
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 021. First use: First Use: 1974/01/00 First Use In Commerce: 1974/01/00
`Bowls, Mugs, Glasses, Cookie Jars, Toothbrushes and Hair Brushes Made of
`Plastic
`
`U.S. Registration
`No.
`Registration Date
`
`1199690
`
`06/29/1982
`
`Word Mark
`Design Mark
`
`S
`
`Application Date
`
`09/18/1979
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`THE MARK CONSISTS OF THE LETTER "S" IN ASHIELD DESIGN.
`
`Class 028. First use: First Use: 1947/00/00 First Use In Commerce: 1947/00/00
`Yo-Yos, Balls, and Equipment Sold as a Unit for Playing Board Games
`
`U.S. Registration
`No.
`Registration Date
`
`1180292
`
`12/01/1981
`
`Word Mark
`
`S
`
`Application Date
`
`09/18/1979
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 1946/00/00 First Use In Commerce: 1946/00/00
`Adults and Childrens Clothing-Namely, Shirts, T-Shirts, Footwear, Gloves, Ties,
`Socks, Pajamas, Rainwear and Shorts and Halters
`
`U.S. Registration
`No.
`Registration Date
`
`1178048
`
`11/17/1981
`
`Word Mark
`Design Mark
`
`S
`
`Application Date
`
`09/18/1979
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 016. First use: First Use: 1937/00/00 First Use In Commerce: 1937/00/00
`Books Concerning Memorabilia Relating to Fictional Characters, Children's
`Books, Coloring Books, Puzzle Books, Poster Books, Nonfiction Books
`Regarding the Production of Motion Pictures and Television Programs, Greeting
`Cards, Notepads and Posters, Paper Napkins, Paper Tablecloths, Calendars,
`Pencil Sharpeners, Cardboard Center Pieces, Writing Slates, Card Game with
`Color Pencils
`
`U.S. Registration
`No.
`Registration Date
`
`1235769
`
`04/26/1983
`
`Word Mark
`
`S
`
`Application Date
`
`07/08/1975
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 028. First use: First Use: 1972/12/10 First Use In Commerce: 1972/12/10
`Toy Doll Figure
`
`U.S. Registration
`No.
`Registration Date
`
`1179537
`
`11/24/1981
`
`Word Mark
`Design Mark
`
`S
`
`Application Date
`
`09/21/1979
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 1978/12/00 First Use In Commerce: 1978/12/00
`Entertainment Services-Namely, the Production of a Series of Motion Pictures
`
`U.S. Registration
`No.
`Registration Date
`
`1197814
`
`06/15/1982
`
`Word Mark
`
`S
`
`Application Date
`
`09/18/1979
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of a "S" in shield design.
`
`Class 014. First use: First Use: 1979/01/00 First Use In Commerce: 1979/01/00
`Earrings and Stick Pins, Made of Precious Metals and Pendents and Tie Tacks
`
`U.S. Registration
`No.
`Registration Date
`
`1199552
`
`06/29/1982
`
`Word Mark
`Design Mark
`
`S
`
`Application Date
`
`09/18/1979
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`THE MARK CONSISTS OF THE LETTER "S" IN ASHIELD DESIGN.
`
`Class 018. First use: First Use: 1947/00/00 First Use In Commerce: 1947/00/00
`Wallets and Umbrellas
`
`U.S. Registration
`No.
`Registration Date
`
`1199630
`
`06/29/1982
`
`Word Mark
`
`S
`
`Application Date
`
`09/18/1979
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`THE MARK CONSISTS OF THE LETTER "S" IN ASHIELD DESIGN.
`
`Class 025. First use: First Use: 1978/05/00 First Use In Commerce: 1978/05/00
`Sleepwear for Children
`
`U.S. Registration
`No.
`Registration Date
`
`1184881
`
`01/05/1982
`
`Word Mark
`Design Mark
`
`S
`
`Application Date
`
`09/18/1979
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 1946/00/00 First Use In Commerce: 1946/00/00
`Adults' and Childrens' Clothing-Namely, T-Shirts, Shirts, Swimwear, Shorts,
`Snowsuits, Hats, Bibbs, Aprons, Ties, Rainwear, Jackets, Footwear, Sweaters,
`and Loungewear
`
`U.S. Registration
`No.
`Registration Date
`
`1189376
`
`02/09/1982
`
`Word Mark
`
`S
`
`Application Date
`
`09/18/1979
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 024. First use: First Use: 1949/00/00 First Use In Commerce: 1949/00/00
`Towels, Sheets, Pillow Cases and Drapes
`
`U.S. Registration
`No.
`Registration Date
`
`1182172
`
`12/15/1981
`
`Word Mark
`Design Mark
`
`S
`
`Application Date
`
`09/18/1979
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 021. First use: First Use: 1978/03/00 First Use In Commerce: 1978/03/00
`Bowls, Mugs, and Glasses
`
`U.S. Registration
`No.
`Registration Date
`
`1182041
`
`12/15/1981
`
`Word Mark
`
`S
`
`Application Date
`
`09/18/1979
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of the letter "S" in a shield.
`
`Class 016. First use: First Use: 1944/00/00 First Use In Commerce: 1944/00/00
`Books Concerning Memorabilia Relating to Fictional Characters, Children's
`Books, Coloring Books, Puzzle Books, Poster Books, Nonfiction Books
`Regarding the Production of Motion Pictures and Television Programs, Greeting
`Cards, Notepads and Posters
`
`U.S. Registration
`No.
`Registration Date
`
`1173150
`
`10/13/1981
`
`Word Mark
`Design Mark
`
`S
`
`Application Date
`
`06/09/1978
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 016. First use: First Use: 1941/00/00 First Use In Commerce: 1941/00/00
`Comic Magazines and Sections of Comic Magazines
`
`U.S. Registration
`No.
`Registration Date
`
`1140418
`
`10/14/1980
`
`Word Mark
`
`S
`
`Application Date
`
`05/20/1976
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`Attachments
`
`NONE
`
`Class 025. First use: First Use: 1954/05/00 First Use In Commerce: 1954/05/00
`Hats
`Class 026. First use: First Use: 1975/09/18 First Use In Commerce: 1975/09/18
`Belt Buckles
`
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`00035682.pdf ( 53 pages )(1762680 bytes )
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Certificate of Service
`
`Signature
`Name
`Date
`
`/patrickperkins/
`Patrick T. Perkins
`08/04/2010
`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application Serial No. 77/851,544
`---------------------------------------------------------------x
`
`
`
`
`
`
`
`:
`DC COMICS,
`
`
`
`
`:
`
`
`
`
`
`
`
`:
`
`
`
`Opposer,
`
`
`:
`
`
`
`
`
`
`
`:
`
`- against -
`
`
`
`
`:
`
`
`
`
`
`
`
`:
`RACINE BERKOW ASSOCIATES, INC.,
`:
`
`
`
`
`
`
`
`:
`
`
`
`Applicant.
`
`
`:
`
`
`
`
`
`
`
`:
`---------------------------------------------------------------x
`
`Opposition No.
`
`NOTICE OF OPPOSITION
`
`
`
`
`
`DC Comics (“DC” or “Opposer”), a New York partnership located at 1700 Broadway,
`
`New York, New York 10019, believes that it is or will be damaged by the issuance of a
`
`registration of the trademark SECURE SHIPPING SOLUTIONS A DIVISION OF RBA, INC.
`
`and Design as applied for in Application S.N. 77/851,544 filed on October 19, 2009 by Racine
`
`Berkow Associates, Inc. (“Applicant”) for “arranging for pickup, delivery, storage and
`
`transportation of documents, packages, freight and parcels via ground and air carriers;
`
`transportation logistics services, namely, arranging the transportation of goods for others;
`
`transportation logistics services, namely, planning and scheduling shipments for users of
`
`transportation services; transportation management services, namely, planning and coordinating
`
`transportation of people for others” in International Class 35 and for “air transport and storage of
`
`goods; air transport services; air transportation; air transportation of passengers and freight;
`
`armored car transport; cargo ship transport; freight and transport brokerage; freight ship
`
`

`
`transport; freight transportation brokerage; freight transportation consultation in the field of
`
`freight transportation by truck, rail, air and ocean; global transportation of freight for others by
`
`all available means; guarded transport of valuables; guarded transportation of valuables; guarded
`
`transportation of valuables and money by truck; guarded truck transport; marine transport;
`
`packaging articles of transportation; packing articles for transportation; providing ocean
`
`transportation, storage and delivery services; shipping and delivery services, namely , pickup,
`
`transportation, and delivery of packages and letters by various modes of transportation; supply
`
`chain logistics and reverse logistics services, namely, storage, transportation and delivery of
`
`goods for others by air, rail ship or truck; supply chain, logistics and reverse logistics services,
`
`namely, storage, transportation and delivery of documents, packages, raw materials, and other
`
`freight for others by air, rail, ship or truck; transport and delivery of goods; transport and storage
`
`of goods; transport brokerage; transport of goods; transport of money and valuables; transport of
`
`valuables; transportation and delivery services by air, road, rail and sea; transportation and
`
`delivery services, namely, same day shipment services; transportation and storage of goods;
`
`transportation consulting; transportation of goods; truck transport” in International Class 39 and
`
`therefore opposes the same. As grounds for the opposition, Opposer, by its attorney, Perkins
`
`Law Office, P.C., alleges as follows:
`
`FACTS
`
`DC’s Use Of Its Trademarks
`
`1.
`
`DC is a New York partnership with its principal place of business at 1700
`
`Broadway, New York, New York 10019.
`
`2.
`
`DC Comics and its predecessors-in-interest (collectively “DC Comics”) is the
`
`publisher of comic books and magazines featuring comic characters and stories, including the
`
`2
`
`
`
`

`
`world-famous character Superman. DC Comics is among the most well known and successful
`
`publishers of comic magazines in the world. It has created and published highly successful and
`
`well-known characters, including, but not limited to, Superman.
`
`3.
`
`Over the many years since the Superman character was first introduced in 1938,
`
`DC Comics has focused an enormous amount of attention and effort to develop the Superman
`
`mythos, including the character, his associates, his world, and other indicia associated with him.
`
`Throughout the period of Superman’s existence, DC Comics has invested a vast amount of
`
`creative energy and resources to continually update and improve the Superman property to keep
`
`the character and his adventures timely and fresh in the public’s mind. Opposer’s efforts in this
`
`regard have led to a vast array of literary works, television series, and feature films, which fully
`
`explore in great depth Superman himself and the fictional world inhabited by him. Due to
`
`Opposer’s extraordinary nurturing of the Superman mythos, the character and his universe have
`
`captured the popular imagination and it is beyond dispute that today the Superman lore is one of
`
`a rarified group of legends known and loved throughout the world.
`
`4.
`
`Because of DC Comics’ shepherding and careful development of not just the
`
`Superman character, but also of his universe and of the things and people that populate that
`
`universe, Superman has become associated with certain symbols and indicia which in the public
`
`mind are inextricably linked with the Superman character and which function as trademarks,
`
`both for literary and entertainment works featuring Superman and for various goods and services
`
`for which Opposer has licensed others to use these marks. Among these indicia is the well-
`
`known “S-in-Shield Device” that appears on the front of Superman’s iconic costume. The S-in-
`
`Shield Device consists of the letter “S” encased in a five-sided, diamond-shaped shield.
`
`5.
`
`The S-in-Shield Device has been used in connection with Superman almost since
`
`3
`
`
`
`

`
`the character was first introduced. The mark appears frequently across all media in which the
`
`Superman character is exploited. In addition, DC has used or licensed the use of the S-in-Shield
`
`Device in connection with a broad range of goods and services.
`
`6.
`
`Since its introduction into the Superman mythos, the S-in-Shield Device has come
`
`to be recognized as a powerful symbol standing alone, and is immediately recognized as
`
`associated with and identifying the character Superman, as well as goods and services
`
`manufactured, distributed and/or licensed by or on behalf of Opposer.
`
`7.
`
`By virtue of DC Comics’ ceaseless efforts to develop the Superman character and
`
`his universe, including the introduction and continuing use of the S-in-Shield Device in intimate
`
`association with Superman, the popularity of the Superman mythos on television, in motion
`
`pictures, and in comic books and in connection with other various goods and services, and the
`
`enormous affect and goodwill associated by the public therewith, the S-in-Shield Device has
`
`become famous and instantly calls to mind Superman and such goods and services to consumers.
`
`8.
`
`Since a date well before any date upon which Applicant can rely, DC has affixed
`
`the S-in Shield Device to a wide array of products and services coming from or licensed by
`
`Opposer, in addition to its prior use in connection with Superman comic books and the
`
`previously noted television series and motion pictures.
`
`9.
`
`The S-in-Shield Device is an arbitrary and famous mark and thus is strong and
`
`entitled to the broadest scope of protection.
`
`10.
`
`Opposer owns valid and subsisting federal trademark registrations for marks that
`
`contain the S-in-Shield Device, including but limited to, Reg. Nos. 2211378, 2226415, 1200387,
`
`1200233, 1209743, 1201167, 1201149, 1199690, 1180292, 1178048, 1235769, 1179537,
`
`1197814, 1199552, 1199630, 1184881, 1189376, 1182172, 1182041, 1173150, and 1140418.
`
`4
`
`
`
`

`
`Printouts of these registrations from the USPTO’s web site are annexed hereto at Exhibit A and
`
`are incorporated herein by reference.
`
`11.
`
`Opposer’s foregoing registrations are valid, subsisting and in full force and effect;
`
`as such, they constitute prima facie evidence of the validity of the registered marks and of the
`
`registrations thereof, of Opposer’s ownership of the marks shown therein and of Opposer’s
`
`exclusive right to use the marks in commerce in connection with the goods and services named
`
`therein, without condition or limitation; they also constitute notice to Applicant of Opposer’s
`
`claim of ownership of the marks shown therein; all as provided in Sections 7(b), 22 and 33(a) of
`
`the Lanham Trademark Act of 1946 as amended (the “Lanham Act”).
`
`APPLICANT’S APPLICATION
`
`12.
`
`On October 19, 2009, Applicant filed application SN 77/851,544 to register
`
`SECURE SHIPPING SOLUTIONS A DIVISION OF RBA, INC. and Design. The design
`
`portion of Applicant’s mark, which is the dominant element of Applicant’s mark, is virtually
`
`identical to Opposer’s S-in-Shield Device. Applicant’s design consists of a five-sided diamond-
`
`shaped shield surrounding the letter “S” three times and creates a strong association with
`
`Opposer’s Superman goods and services. The similarity is exacerbated by the fact that
`
`Applicant was required to disclaim the entire word portion of its mark, such that, by its
`
`application, it claims exclusive rights only in its Design. The fact that Applicant claims the color
`
`purple as a feature of the mark does nothing to obviate confusion as Opposer’s S-in-Shield has
`
`been presented in many colors.
`
`5
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`

`
`13.
`
` Set forth below are Applicant’s Design and Opposer’s S-in-Shield Device side by
`
`side:
`
`Applicant’s Mark
`
`
`
`
`
`
`
`
`
`
`
`Opposer’s Mark
`
`
`
`14.
`
`Upon information and belief, Applicant adopted and applied to register its mark
`
`with full knowledge of Opposer’s rights in and to the S-in-Shield Device and with an intent to
`
`trade off of the good will of Opposer’s mark.
`
`15.
`
`The application is based upon an alleged bonafide intent to use and is dated
`
`October 19, 2009. This date, which is the only date upon which Applicant may rely, is long after
`
`Opposer’s first use of the S-in-Shield Device and well after it became a famous mark.
`
`16.
`
`Upon information and belief, Applicant willfully copied the S-in-Shield Device in
`
`choosing its mark in a deliberate attempt to associate its goods with Opposer and its Superman
`
`character and the overwhelming goodwill therein.
`
`17.
`
`Applicant’s mark is virtually identical to Opposer’s S-in-Shield Device. The
`
`marks are highly similar in appearance and make virtually identical commercial impressions.
`
`18.
`
`Upon information and belief, Applicant intends to use its mark with other indicia,
`
`in a manner that further associates its goods with Superman.
`
`19.
`
`The services listed in Applicant’s application further create a likelihood of
`
`confusion as they center, at least in part, on secure transportation of goods by air. By the use of
`
`its Design intended to trade off of the enormous goodwill in Superman, Applicant seeks to
`
`6
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`
`

`
`associate its services with the Superman character, his protective nature, and his ability to fly.
`
`20.
`
`21.
`
`Applicant’s use of its mark is certain to dilute Opposer’s famous mark.
`
`Applicant’s use of its mark falsely suggests an association with or approval by
`
`Opposer of Applicant’s services, and will inevitably create confusion in the marketplace, as
`
`consumers will assume that Applicant’s services are authorized or endorsed by Opposer. Such
`
`false suggestion will cause irreparable harm to Opposer.
`
`FIRST GROUND FOR RELIEF
`DILUTION UNDER 15 U.S.C. § 1125(c)
`
`Opposer incorporates by reference paragraphs 1 through 21 as if fully set forth
`
`22.
`
`herein.
`
`23.
`
`Opposer’s S-in-Shield Device is strong and famous and has been so from a date
`
`prior to Applicant’s alleged date of first use.
`
`24.
`
`Applicant’s use of its mark has caused or will cause dilution of the distinctive
`
`quality of Opposer’s S-in-Shield Device by tarnishment and blurring.
`
`25.
`
`Applicant’s use and registration of Applicant’s mark are in violation of Section
`
`43(c) of the Federal Trademark Act, 15 U.S.C. § 1125(c).
`
`SECOND GROUND FOR RELIEF
`UNDER 15 U.S.C. § 1052(d)
`
`Opposer incorporates by reference paragraphs 1 through 25 as if fully set forth
`
`26.
`
`herein.
`
`27.
`
`The S-in-Shield Device has been used continually by Opposer since a date prior
`
`to any date on which Applicant may rely. Among the ways in which Opposer has used its mark
`
`has been through extensive licensing with a broad range and goods and services.
`
`28.
`
`Applicant’s mark is highly similar in appearance and in commercial impression to
`
`7
`
`
`
`

`
`Opposer’s marks.
`
`29.
`
`The services of Applicant to be offered under its mark are intended and are likely
`
`to be perceived as related to Opposer’s goods and services under the S-in-Shield Device mark,
`
`and to the Superman character itself.
`
`30.
`
`The use by Applicant of its mark for the services listed in the application is likely
`
`to create the erroneous impression that Applicant’s services originate with, are sponsored or
`
`promoted by, come from, or are otherwise associated with Opposer or Opposer’s goods or
`
`services provided under the S-in-Shield Device, or other Superman-related marks, or that
`
`Applicant’s services are endorsed, sponsored, or in some way connected with Opposer. Any use
`
`of Applicant’s mark by Applicant is, therefore, likely to cause confusion, cause mistake, or to
`
`deceive the public into the belief that the services offered under Applicant’s mark come from or
`
`are otherwise authorized or sponsored by Opposer in violation of Section 2(d) of the Lanham
`
`Act, 15 U.S.C. § 1052(d).
`
`8
`
`
`
`

`
`WHEREFORE, it is respectfully requested that this opposition be sustained and that the
`
`registration sought by Application S.N. 77/851,544 be denied.
`
`Dated: Cold Spring, New York
`August 4, 2010
`
`
`
`
`
`
`Respectfully submitted,
`
`PERKINS LAW OFFICE, P.C.
`
`
`
`By: _/s/Patrick T. Perkins
`Patrick T. Perkins
`
`
`1711 Route 9D
`Cold Spring, New York 10516
`(845) 265-2820
`
`Attorney for Opposer
`DC Comics
`
`
`9
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`
`

`
`EXHIBIT A
`EXHIBIT A
`
`
`
`10
`10
`
`
`
`

`
`Trademark Electronic Search System (TESS)
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`Page 1 of 2
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`(C29
`
`V
`
`S I
`
`C 028. US 022 023 038 050. G & S: toys and sporting goods, including action figures and accessories
`therefor; plush toys; balloons; toy vehicles; dolls; electronic hand held game unit and action type target
`game. FIRST USE: 19951000. FIRST USE IN COMMERCE: 19951000
`
`(3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS
`
`26.07.01 - Diamonds with plain multiple line border; Diamonds with plain single line border
`
`Word Mark
`Goods and
`Services
`
`Mark Drawing
`Code
`
`Design Search
`Code
`
`Serial Number
`
`74710429
`
`Filing Date
`Current Filing
`Basis
`
`Original Filing
`Basis
`‘
`
`Published for
`
`Opposition
`Registration
`Number
`
`Registration
`Date
`
`Owner
`
`August 3, 1995
`
`1A
`
`1B
`
`January 16, 1996
`
`2211378
`
`December 15, 1998
`
`(REGISTRANT) DC COMICS composed of Warner Communications, lnc., a Delaware corporation and
`Time Warner Entertainment Company, LP, a Delaware partnership, composed of American Television
`and Communications Corporation, Time Warner Operations lnc., Warner Communications Inc. and
`Warner Cable Communications lnc., all Delaware corporations and Capital Cablevision Systems, Inc.
`and People's Cable Corporation, both New York corporations and Memphis CATV, lnc., a Tennessee
`corporation PARTNERSHIP NEW YORK 1700 Broadway New York NEW YORK 10019
`
`Assignment
`Recorded
`
`ASSIGNMENT RECORDED
`
`http://tess2.uspto.gov/bin/showfield?f=doc&state=4002:udr3t0.2.1
`
`8/4/2010
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`

`
`Trademark Electronic Search System (TESS)
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`A“°"‘°V °f
`Record
`Prior
`Registrations
`Type of Mark
`Register
`Affidavit Text
`Renewal
`LiveIDead
`Indicator
`
`JANET A. KOBRIN
`
`1 182041
`TRADEMARK
`PRINCIPAL
`SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20080924.
`1ST RENEWAL 20080924
`
`UVE
`
`
`
`[HOME | SlTE|NDEX| SEARCH 1 eBUSlNESS | HELP | PRIVACY POLICY
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` Homelsite Index|SearchIFAQ| GlossaryIGuidesIContacts|eBusinessIeBiz alertsINewsI Help
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`(csgp
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`‘7
`
`Word Mark
`
`S
`
`Goods and
`Services
`
`[C 009. US 021 023 026 036 038. G & S: motion picture, video and television films featuring animated
`and non-animated action, adventure and drama; prerecorded audio-video tapes, cassettes and discs
`featuring animated and non-animated action, adventure, drama, and/or music. FlRST USE:
`19870000. FIRST USE IN COMMERCE: 19870000
`
`D'a"‘”"9
`D '
`s
`h
`Cg?" earc
`Serial Number
`
`(3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS
`.
`.
`.
`.
`.
`.
`.
`26.15.02 - Plain single or multiple line polygons; Polygons (plain, single line)
`74662947
`
`Filing Date
`Current Filing
`Basis
`
`Original Filing
`Basis
`
`P bl‘ h d f
`ogpgigonor
`Registration
`Number
`R ' t
`t‘
`Dggf '3 '°"
`Owner
`
`April 18, 1995
`
`1A
`
`1B
`
`January 16, 1996
`
`2226415
`
`February 23, 1999
`(REGISTRANT) DC COMICS composed of Warner Communications, lnc., a Delaware corporation
`and Time Warner Entertainment Company, L.P., a Delaware partnership PARTNERSHIP
`DELAWARE 1700 BROADWAY New York NEW YORK 10019
`
`Assignment
`Recorded
`
`ASSIGNMENT RECORDED
`
`A“°"‘°Y °"
`
`JANET A. KOBRIN
`
`http://tess2.uspto.gov/bin/showfie1d?f=doc&state=4002:ud=r3t0.3 .1
`
`1
`
`8/4/2010
`
`

`
`Trademark Electronic Search System (TESS)
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`Record
`Prior
`Registrations
`Type of Mark
`
`Register
`Affidavit Text
`Renewal
`LiveIDead
`Indicator
`
`1 179537
`TRADEMARK
`
`PRINCIPAL
`SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20090313.
`1ST RENEWAL 20090313
`
`LIVE
`
`SEMCHIOG
`
`Ci .
`
`|.HOME | SITE INDEX] SEARCH I eBUSINESS | HELP I PRIVACY POLICY
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`
`
`Goods and
`Services
`
`Mark Drawing
`Code
`
`Design Search
`Code
`
`Serial Number
`
`Filing Date
`Current Filing
`Basis
`
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`
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`Number
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`Owner
`
`IC 014. US 027 028. G & S‘. Jewelry, Watches and Clocks. FIRST USE: 19400000. FIRST USE IN
`COMMERCE: 19400000
`
`(3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS
`
`02.01.17 - Actors; Carnival characters (men); Clowns (men); Harlequins (men); Jesters (men); Men,
`clowns, actors, mimes, carnival characters, harlequins, jesters, men wearing tights; Mimes (men);
`Tights (men wearing)
`02.01.31 — Men, stylized, including men depicted in caricature form
`02.09.12 - Flying, humans (self-propelled); Humans, including men, women and children, depicted
`flying (self-propelled)
`04.01.07 - Aliens; Apollo (mythology); Athena (mythology); Caped characters (super heroes);
`Ghosts; Mythological beings, superbeings, ghosts, aliens; Super heroes; Zeus (mythology)
`73231895
`
`September 18, 1979
`
`1A
`
`1A
`
`April 13, 1982
`
`1200387
`
`July 6, 1982
`
`(REGISTRANT) DC Comics lnc. CORPORATION NEW YORK 75 Rockefeller Plz. New York NEW
`YORK 10019
`
`(LAST LISTED