Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA362599
`ESTTA Tracking number:
`08/11/2010
`
`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
`
`Stephen Slesinger, Inc.
`08/11/2010
`
`1111 N. Westshore BoulevardSuite 604
`Tampa, FL 33607
`UNITED STATES
`
`Attorney
`information
`
`Andrew D. Skale
`Mintz, Levin, Cohn, Ferris, Glovsky, and Popeo, P.C.
`3580 Carmel Mountain RoadSuite 300
`San Diego, CA 92130
`UNITED STATES
`adskale@mintz.com Phone:858-314-1506
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`77890766
`08/11/2010
`
`Publication date
`Opposition
`Period Ends
`
`04/13/2010
`08/11/2010
`
`Disney Enterprises, Inc.
`500 South Buena Vista Street
`Burbank, CA 91521
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 025. First Use: 2007/07/19 First Use In Commerce: 2007/07/19
`All goods and services in the class are opposed, namely: Based on 1(a): Dresses; headwear;
`infantwear; jackets; pants; shirts; shorts; sleepwear. Based on 1(b): Clothing; aprons; beachwear;
`belts; bottoms; chaps; cloaks; cloth bibs; coats; costumes for use in role-playing games; cover-ups;
`cummerbunds; ear muffs; footwear; gloves; Halloween costumes; hosiery; leotards; lingerie;
`loungewear; mittens; overalls; ponchos; rainwear; scarves; skirts; socks; suits; sweaters; sweatshirts;
`swimwear; ties; tops; underwear; wrist bands
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution
`Torres v. Cantine Torresella S.r.l.Fraud
`Other
`
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`Lack of Ownership
`
`Marks Cited by Opposer as Basis for Opposition
`
`

`
`U.S. Application/
`Registration No.
`Registration Date
`Word Mark
`Goods/Services
`
`U.S. Application/
`Registration No.
`Registration Date
`Word Mark
`Goods/Services
`
`U.S. Application/
`Registration No.
`Registration Date
`Word Mark
`Goods/Services
`
`U.S. Application/
`Registration No.
`Registration Date
`Word Mark
`Goods/Services
`
`U.S. Application/
`Registration No.
`Registration Date
`Word Mark
`Goods/Services
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`WINNIE-THE-POOH CHRISTOPHER ROBIN
`Wearing apparel for men, women, and children # namely, nightgowns,
`nightshirts, and pajamas, underwear made of knitted, netted and
`textile materials, shoes and slippers made of leather, fabric, rubber
`and/or combinations thereof; women#s and children#s coats, cloaks,
`and suits; and men#s and boys# suits, including coats, vests, and
`trousers and overcoats; sweaters, hats, caps for men, women and
`children, and bathing suits.
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`WINNIE-THE-POOH CHRISTOPHER ROBIN
`Chinaware and pottery, bric-a-brac, and reflectors, globes and shades
`of china and porcelain.
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`WINNIE-THE-POOH CHRISTOPHER ROBIN
`Games # namely, card games, board games, educational card
`games, puzzles, parlor board games; toys # namely figure toys, dolls,
`doll houses, mechanical toys, construction toys and roller toys; and
`sporting goods #namely baseball bats, gloves, masks, leg guards,
`balls; tennis rackets, nets, balls; footballs, football masks, leg guards,
`shin guards; basketballs and nets; lacrosse clubs, balls, body guards,
`masks; golf balls, clubs, golf bags; skates, both roller and ice.
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`WINNIE-THE-POOH CHRISTOPHER ROBIN
`Candle sticks, lamp shades not made of glass, but of such materials
`as silk, linen, paper, wood and metal; and lamp bases.
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`WINNIE-THE-POOH CHRISTOPHER ROBIN
`Flat and hollow silverware used for table and toilet purposes.
`
`Related
`Proceedings
`
`91179064, 91188860, 91182358, 92046853, 91183644, 91186026, 91187261,
`91191230, 91192691, 91194551
`
`Attachments
`
`20100811140923_20100811_150840.pdf ( 10 pages )(248775 bytes )
`
`Certificate of Service
`
`

`
`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.
`
`Signature
`Name
`Date
`
`/Andrew D. Skale/
`Andrew D. Skale
`08/11/2010
`
`

`
`MINTZ LEVIN
`
`_
`Andrew D. Skale ] 858 314 1506 | askale@m1nt2.corn
`
`701 Pennsylvania Avenue, N.W.
`
`Washinat°n=;g-,?,,:gggg
`
`202-434-7400 fax
`www_mimz_com
`
`Attorney Docket No. 36309-523
`
`IN THE UNITED STATES PATENT AND TRADEMARK'OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application Ser. No. 77/890766 _for the mark: CLASSIC POOH
`Published in the Ofiiciai Gazette on April 13, 2010
`,
`I
`
`
`
`STEPHEN SLESINGER, INC.
`
`
`
`Opposer,
`
`V.
`
`Opposition No.
`
`DISNEY ENTERPRISES, INC.
`
`
`Applicant.
`
`Trademark Pissistance Center
`Madison East, Concourse Level Room C 55
`600 Dulany Street
`Alexandria, Virginia 22314
`
`NOTICE OF OPPOSITION
`
`Stephen Slesinger, Inc. ‘(“Opposer”), a New York corporation, located and doing business
`
`at 1111 N. Westshore Boulevard, Suite 604, Tampa, Florida 33607, believes that it will be
`
`damaged by registration ofU.S. Application Serial No. 77/890766 for the mark CLASSIC
`
`POOH; and hereby opposes the same. The goods for the mark are outlined in Schedule A,
`
`attached hereto.
`
`Pursuant to 15 U.S.C. §§ 1051, 1052, 1063 and 1125 iofthe Lanham Act, and 37 C.F.R.
`
`Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
`
`BOSTON E WASHlNG‘1'ON | New YORK | STAMFORD | LosANcI31.Es | PALO_ ALTO g SAN DIEGO 1 LONDON
`
`

`
`Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, I’.C.
`
`August 10, 2010
`Page 2
`
`§§ 2.101 and 2.104, and predicated upon the following grounds, Opposer alleges the following:
`
`FACTUAL BACKGROUND
`
`1.
`
`Upon information and belief, Disney Enterprises, Inc. (“Applicant”) is a Delaware
`
`corporation with an address at 500 South Buena Vista Street, Burbank, California 91521.
`
`Applicant seeks to register the mark CLASSIC POOH (the ‘‘Mark’’) for various services
`
`identified in Schedule A, pursuant to an intent—to-use/use—based application filed on December
`
`10, 2009.
`
`2.
`
`in the 19203, author A.A. Milne wrote a collection of stories and verses which
`
`appeared in periodicals and in volume book form (“The Winnie-the—Pooh Stories”). Several
`
`noted American and British artists decorated those stories and verses, solely for various
`
`magazine and book publishers, with black and white ink sketches in a style that was popular
`
`during those days. Beginning in 1930, Milne assigned certain sole and exclusive rights to
`
`Stephen Slesinger, Inc.’s (“Opposer”) predecessor, Mr. Stephen Slesinger, including the right to _
`
`create new drawings and to commercialize goods and services utilizing the names, drawings,
`chapter headings and other material from _The Winnie-the-Pooh Stories, as well as the right to
`
`apply for trademarks in Slesinger‘s name, along with other sole and exclusive rights, inter alia,
`
`performing and reproduction rights, whether then known or developed in the future.
`
`3.
`
`Beginning in 1930 and continuing thereafter, Opposer created new drawings,
`
`registered the marks and developed the characters into at least two distinctive brands which
`
`Opposer utilized consistently in interstate commerce and various forms of media. Beginning in
`
`1961 and again in 1983, Opposer licensed certain rights to Applicant. Applicant, since 1961, has
`
`been and is Opposer’s licensee with respect to the Mark (and other marks related to The Winnie-
`
`
`
`
`
`;:'.aI4=r-:.w—...—ra.1wn1wwus_‘Iuuwnmvrcweuurmufvugcuis-uefmwnaaar-==upa7:a5naqmnr¢q<g-am:uamqaumgsremgemwautugqswmuxa-m;..s-a.\u.15cwuuw==u;5.;."ampu-Fqmzna.gumpmuummnmmuaualuau-swam-nu.,,.......-.;sy.u-..ms¢.......n.............‘mu «m—fi?___~w»w;HTY__.¢h‘A‘.__.‘,_,‘:.-,._.--A..-.-,.-«.._..,
`
`
`
`
`
`

`
`Mintz, Levin, Cohn, Ferris, Glovsky and Popeo; P.C.
`
`August 10, 2010
`Page 3
`
`the-Pooh Stories), for certain authorized uses- Applicant has confirmed under SEC filings to its
`
`shareholders that theiarrangement between Opposer and Applicant is not an assignment, but a
`
`license. The recent case between Opposer and Applicant (Milne er al v. Slesinger, CV-02-08508
`
`JFW (PLAx)) did not find as to trademark ownership.
`
`4.
`
`Through the acquisition of those rights, Opposer initiated and has been
`
`responsible for the development and popularization of the characters from The Winnie-the-Pooh
`
`Stories in the United States for more than 75 years. Opposer secured trademark rights in marks
`
`related to the characters of The Winnie-the-Pooh Stories for 30 years prior to licensing certain of
`
`those rights to Applicant. For example, between January 1931 and December 1933, Opposer
`
`filed numerous trademark applications, including for the mark WINNIE-THE-POOH
`
`CHRISTOPHER ROBIN for various goods as outlined in Schedule B, including the broad
`
`categories of clothing and apparel, china and pottery, games and toys, candlesticks and
`
`lampshades, and silverware. Each of these applications matured to registration (although those
`
`registrations may have not been renewed; Opposer maintains its common law rights in that
`
`marks).
`
`5.
`
`Notwithstanding that Applicant has been Opposer’s licensee since the 1960s,
`
`prior to the commencement of legal disputes between the parties, Opposer is not aware of any
`
`instance in which Applicant has contested Opposer’s ownership rights to the marks related to the
`
`characters of The Winnie-the—Pooh Stories. It has only been in reaction to these legal disputes
`
`between the parties that Applicant has unlawfully attempted to secure ownership rights in these
`
`marks, by filing a flurry of trademark applications. Upon information and belief, Applicant is
`
`now attempting to secure ownership rights in these marks because of those legal disputes.
`
`
`
`
`
`.'nwmw vm-ww:=mww --Ai5-“__sH‘.__-I_wmxywvgwwvmwmmmwawmmamaummqynp-»=3rnx1mwm»wim«nnu_n\-avmsmam-u.-as.mmmsmanwuamwmn.mm@mmm3mn.mum“wmmmww w.mm.q_..m.w.
`
`
`
`
`
`
`
`

`
`Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
`
`August 10, 2010
`Page 4
`
`6.
`
`Opposer has never consented to Applicant applying for or securing registration of
`
`the Mark in Applicant’s name.
`
`7.
`
`_
`
`Registration of AppIicant’s Mark will give color of exclusive statutory rights in
`
`the Mark to Applicant in derogation and violation of the rights of Opposer.
`
`COUNT ONE: FRAUD IN THE APPLICATIONS
`
`8.
`
`Oppose: realleges and incorporates herein by reference the allegations in all other
`
`paragraphs contained in herein.
`
`9.
`
`On December 10, 2009 Applicant ‘submitted an application with sworn
`
`declaration to the Trademark Office stating that Applicant:
`
`declares that he/she is properly authorized to execute this
`application on behalf of the applicant; he/she believes the applicant
`to be the owner of the trademark/service mark sought to be
`registered, or, if the application is being filed under 15 U.S.C.
`Section l05l(b), he/she believes applicant to be entitled to use
`' such mark in commerce; to the best of his/her knowledge and
`belief no other person, firm, corporation, or association has the
`right to use the mark in commerce, either in the identical form
`thereof or in such near resemblance thereto as to be likely, when
`used on or in connection with the goods/services of such other
`person, to cause confusion, or to cause mistake, or to deceive; and
`that all statements made of his/her own knowledge are true; and
`that all statements made on information and belief are believed to
`be true.
`
`10.
`
`As stated above, Applicant was not the owner of the Mark at the time that
`
`Applicant filed the application. At that time and currently, Applicant was and has been, at most,
`
`only a licensee of Opposer. As such, Applicant does not have ownership rights in the Mark.
`
`

`
`Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
`
`August 10, 2010
`Page 5
`
`11.
`
`Upon information and belief, Applicant knew or should have known that it made
`
`false statements to the U.S. Patent and Trademark Office when Applicant alleged that it is the
`
`owner of the Mark.
`
`12.
`
`On information and belief, Applicant made the above declaration with the
`
`knowledge that the statement were false and in violation of 15 U.S.C. § 105l(b).
`
`13.‘
`
`On information and belief, the false declaration was made with the intent to
`
`induce authorized agents of the Trademark Office to approve Applicanfs application and grant
`
`Applicant’s registration, and reasonably relying onrthe truth of the statement, the Trademark
`
`Office, did in fact, approve the application for publication.
`
`COUNT TWO: LACK OF OWNERSHIP
`
`14.
`
`Opposer realleges and incorporates herein by reference the allegations in all other
`
`paragraphs contained herein.
`
`15.
`
`Opposer is the rightful owner of the Marks; Applicant was not at any relevant
`
`time the owner of the Mark or entitled to register the Mark in the U.S.
`16.
`The application for the Mark are void pursuant to Section 1 of the Trademark Act
`
`and Trademark Rule § 2."/‘1(d) as the application was filed and prosecuted by an entity other than
`
`the owner or an entity without the exclusive right to register the Mark.
`
`COUNT THREE: LIKELII-IOOD OF CONFUSI-ON
`
`17.
`
`Opposer realleges and incorporates herein by reference the allegations in all other
`
`paragraphs contained herein.
`
`
`__":rf~‘A.___.__._‘ wuwuqHwwwwnmmwmmI uuuvwqmu«mua wuuwwm
`a. I
`
`

`
`Minlz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
`
`August 10, 2010
`Page 6
`
`18.
`
`There is no issue of priority in this proceeding. Opposer’s trademark rights in the
`
`Marks precede the filing date of Applicant’s application for the Mark. Therefore, Opposer has
`
`prior and superior rights in this matter.
`
`19.
`
`Because Applicant is merely a licensee of Opposer, and Applicant has applied for
`
`registration of the Mark in its own name, and because Applicant’s Mark so closely resemble
`
`Opposer’s prior filed trademark registrations for WINNIE-THE-PO01-I CHRISTOPHER ROBIN
`
`and Opposer’s rights in other marks related to the characters of The Winnie-the—Pooh Stories,
`
`that registration ofApplicant’s Mark islikely to cause confusion, mistake, and deceive
`
`purchasers into erroneously believing that Applicant, and not Opposer, is the rightful owner of I
`
`the Mark, in violation of 15 U.S.C. § l052(d).
`
`COUNT FOUR: DILUTION
`
`20. Opposer realleges and incorporates herein by reference the allegations in all other
`
`paragraphs contained herein.
`
`21. The Marks were famous as defined under Section 43(0) of the Trademark Act, 15
`
`U.S.C. § l125(c), prior to Applicant’s filing date.
`
`' 22. The Marks were inherently distinctive prior to Applicant’s filing date.
`
`23. Opposer engaged in substantially exclusive use and/or control of the Marks prior to
`
`Applicant’s filing of its application.-
`
`24. Applicanfs intent to register the Mark will impair the distinctiveness of Opposer’s
`
`rights in the Marks to identify and distinguish the goods and services of Opposer. Registration
`
`

`
`Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
`
`August 10, 2010
`Page 7
`
`of Applicanfs Mark will further damage Opposer in violation of Section 43(c) of the Trademark
`
`Act, 15 U.S.C.§ ll25(c).
`
`'
`
`WI-IEREFORE, Opposer Believes that it will be damaged by the registration of
`
`Applicant’s Mark and requests that judgment be entered in its favor and against Applicant on all
`
`counts and that Application Serial No. 77/890766 for the mark CLASSIC POOH be denied
`
`registration.
`
`Respectfully submitted,
`
` ndrew D. Skale
`
`Mintz, Levin, Cohn, Ferris, Glovsky,
`and Popeo, PC.
`3580 Carmel Mountain Road
`Ste 300
`
`San Diego, CA. 92130
`Tel: 858-314-1506
`Fax: 858-314-1501
`
`E-mail:adskale@mintz.com
`
`Attorneys for Opposer
`Stephen Slesinger, Inc.
`
`Dated: August 11, 2010
`
`3@:%%;a=wfi w :;mm mmvwWamnaugmmgawgummununnsmmaammmummmammammmmwmmumnmunwm.mnM.mw¢ mn-.
`
`

`
`Mintz, Levin, Cohn, Ferris, Glovsl-cy and Popeo, P.C.
`
`August 10, 2010
`Page 8
`
`SCHEDULE A
`
`Srephen Slesirzger, Inc. v. Disney Enterprises, Inc.
`Opposition No.
`Applicant’s Mark and Applied for Goods
`
`Serial No.
`
`Mark
`
`771890766
`
`CLASSIC POOH
`
`IC 25: Based on 1(a): Dresses; headwear; infantweanjackets; pants;
`shirts; shorts; sleepwear. Based on l(b): Clothing; aprons; beachwear;
`belts; bottoms; chaps; cloaks; cloth bibs; coats; costumes for use in
`role-playing games; cover-ups; curnmerbunds; ear muffs; footwear;
`gloves; Halloween costumes; hosiery; leotards; lingerie; loungewear;
`mittens; overalls; ponchos; rainwear; scarves; skirts; socks; suits;
`'
`
`sweaters; sweatshirts; swimwear; ties; tops; underwear; wrist bands.
`
`Filed:
`
`December I0,
`2009
`
`

`
`Mirnz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
`
`August 10, 2010
`Rage 9
`
`SCHEDULE B
`
`Stephen Slesinger, Inc. v. Disney Enterprises, Inc.
`Opposition No.
`Opposer’s Goods and Registrations
`
`T
`
`283,856
`
`WINNIE—THE-
`POOH
`
`CHRISTOPHER
`ROBIN
`
`302,372
`
`302,240
`
`304,587
`
`313,255
`
`WINNIE-THE-
`POOH
`C I-IRISTOPI-{ER
`ROBIN
`
`WINNIE-THE-
`POOH
`CHRISTOPHER
`ROBIN
`
`WINN I E—Tl-IE-
`POOH
`CHRISTOPHER
`ROB IN
`
`WIN'NIE-Tl-IE-
`POOH
`CHRISTOPHER
`ROBIN
`
`Wearing apparel for men, women, and children — namely, nightgowns,
`nightshirts, and pajamas, underwear made of knitted, netted and textile
`materials, shoes and slippers made of leather, fabric, rubber and/or
`combinations thereof; women’s and children’s coats, cloaks, and suits; and
`men’s and boys’ suits, including coats, vests, and trousers and overcoats;
`sweaters, hats, caps for men, women and children, and bathing suits.
`
`Chinaware and pottery, brie-a-brac, and reflectors, globes and shades of
`china and porcelain.
`
`Games —- namely, card games, board games, educational card games,
`puzzles, parlor board games; toys — namely figure toys, dolls,,doll houses,
`mechanical toys, construction toys and roller toys; and sporting goods —
`namely baseball bats, gloves, masks, leg guards, balls; tennis rackets, nets,
`halls; footballs, football masks, leg guards, shin guards; basketballs and
`nets; lacrosse clubs, balls, body guards, masks; golf balls, clubs, golf bags;
`skates, both roller and ice.
`
`Candle sticks, lamp shades not made of glass, but of such materials as silk,
`linen, paper, wood and metal; and lamp bases.
`
`Flat and hollow silverware used for table and toilet purposes.
`
`

`
`Mintz, Levin, Colm, Ferris, Glovslcy and Popeo, I-‘.C.
`
`August 10, 2010
`Page 10
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy of the foregoing NOTICE OF OPPOSITION was served by U.S.
`
`mail, first class, postage prepaid, on this 11”‘ day of August, 2010 on the Applicant at -the address
`
`listed in the current U.S. Trademark Office Records as follows:
`
`Steven Plotkin
`
`_
`The Walt Disney Company
`500 S Buena Vista St. Corporate Legal-Trademark Department
`Burbank, CA 91251-0007
`’
`
`and a courtesy copy to:
`
`Daniel M. Petrocelli
`
`O’Melveny & Myers LLP
`1999 Avenue of the Stars, Suite 700
`Los Angeles, CA 90067
`
`ghanncn Thrash
`
`‘-
`
`4996987\' .1
`
`
`
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