Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA455042
`ESTTA Tracking number:
`02/07/2012
`
`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
`
`Hot Chaat
`02/11/2012
`
`1011 Mason Ln.
`Lake in the Hills, IL 60156
`UNITED STATES
`
`Correspondence
`information
`
`Harold J Fassnacht
`Attorney
`Miller Matthias & Hull LLP
`One North Franklin Street Suite 2350
`Chicago, IL 60606
`UNITED STATES
`jfassnacht@millermatthiashull.com Phone:312-235-4765
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85379000
`02/07/2012
`
`Publication date
`Opposition
`Period Ends
`
`12/13/2011
`02/11/2012
`
`DreamWorks Animation L.L.C.
`1000 Flower Street
`Glendale, CA 91201
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 009.
`All goods and services in the class are opposed, namely: COMPUTER GAME SOFTWARE FOR
`WIRELESS AND ELECTRONIC MOBILE DEVICES; COMPUTER GAME SOFTWARE,
`ELECTRONIC GAME PROGRAMS, ELECTRONIC GAME SOFTWARE FOR HANDHELD
`ELECTRONIC DEVICES; VIDEO GAME SOFTWARE; COMPUTER GAME DISCS; VIDEO GAME
`CARTRIDGES, VIDEO GAME DISCS; PRERECORDED CDS FEATURING MUSIC AND MOTION
`PICTURE SOUND TRACKS; PRERECORDED DVDS FEATURING ANIMATED MOTION
`PICTURES; PRERECORDED OPTICAL AND MAGNETO-OPTICAL DISCS FEATURING MUSIC
`AND ANIMATED MOTION PICTURES; MULTIMEDIA SOFTWARE RECORDED ON CD ROM
`FEATURING MUSIC, MOTION PICTURE SOUNDTRACKS AND ANIMATED MOTION PICTURES;
`INTERACTIVE MULTIMEDIA SOFTWARE PROGRAMS CONTAINING ANIMATED MOTION
`PICTURES FOR ENTERTAINMENT; INTERACTIVE MULTI-MEDIA SOFTWARE FOR PLAYING
`GAMES; MAGNETS AND SUNGLASSES; HAND-HELD UNIT FOR PLAYING ELECTRONIC
`GAMES ADAPTED FOR USE WITH AN EXTERNAL DISPLAY SCREEN OR MONITOR, ANIMATED
`CARTOONS RECORDED ON DVDS; EXPOSED CINEMATOGRAPHIC FILM
`Class 025.
`All goods and services in the class are opposed, namely: SHIRTS AND TOPS, DRESSES, SKIRTS,
`
`

`
`PANTS, TROUSERS, JEANS, SHORTS, ROMPERS, OVERALLS, SWEATSHIRTS AND SWEAT
`PANTS, SWEATSUITS, CAPS AND HATS, GLOVES, SUSPENDERS, TIES, COATS AND
`JACKETS, HOSIERY, SHOES, BOOTS, SLIPPERS, PAJAMAS, ROBES, SLEEPSHIRTS,
`SLEEPWEAR, UNDERWEAR, HALLOWEEN COSTUMES, AND CLOTH BABY BIBS
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution
`
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Application
`No.
`Registration Date
`
`85384746
`
`NONE
`
`Word Mark
`Design Mark
`
`MUMBAI MONKEY
`
`Application Date
`
`07/29/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use:
`Prerecorded digital video disks featuring entertainment and education for
`children
`Class 025. First use: First Use: 2011/06/24 First Use In Commerce: 2011/06/24
`Wearable garments and clothing, namely, shirts
`Class 042. First use: First Use: 2011/06/21 First Use In Commerce: 2011/06/21
`Providing a secure electronic online system featuring technology which allows
`the sale of educational and entertaining videos and related goods, and provides
`educational and entertaining information for children
`
`Attachments
`
`85384746#TMSN.jpeg ( 1 page )( bytes )
`Groundsforopposition.pdf ( 3 pages )(21465 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
`
`/Harold J Fassnacht/
`Harold J Fassnacht
`
`

`
`Date
`
`02/07/2012
`02/07/2°12
`
`

`
`Grounds for Opposition
`
`
`
`Hot Chaat, LLC ("Opposer"), an Illinois limited liability company having a principal place
`
`of business at 1011 Mason Lane, Lake in the Hills, Illinois 60156, and the owner of the trademark
`
`MUMBAI MONKEY and respective United States trademark application No. 85/384,746,
`
`believes that it will be damaged by the registration of the trademark “MONKEYS OF MUMBAI”
`
`as shown in Serial No. 85/379,000, filed July 22, 2011 by Dreamworks Animation LLC
`
`("Applicant") and hereby opposes the same.
`
`
`
`
`
`As grounds for opposition, it is alleged that:
`
`1.
`
`This opposition is based on actual use having priority dates earlier than the filing
`
`date of the mark opposed, and on dilution.
`
`
`
`2.
`
`Opposer’s Trademark Application. Opposer filed a trademark application to
`
`register the mark MONKEYS OF MUMBAI in Classes 9, 25 and 42 on July 29, 2011, seven days
`
`after Applicant’s filing date. However, Opposer’s application in classes 25 and 42 is based on use
`
`of the mark in interstate commerce since about one month prior to Applicant’s filing date.
`
`
`
`3.
`
`Opposer’s Actual Use Dates. Opposer has adopted and has continuously used its
`
`trademark, MUMBAI MONKEY, on or in connection with "Wearable garments and clothing,
`
`namely, shirts" (Trademark Class 25) since at least as early as June 24, 2011 and in connection
`
`with "Providing a secure electronic online system featuring technology which allows the sale of
`
`educational and entertaining videos and related goods, and provides educational and entertaining
`
`information for children" (Trademark Class 42) since at least June 21, 2011. Moreover,
`
`Opposer’s use of its mark in Class 42 is intimately connected with its planned use in Class 09 for
`
`“Prerecorded digital video disks featuring entertainment and education for children” since the
`
`electronic online system will provide a sales outlet for applicant’s goods in Class 09.
`
`
`
`4.
`
`Applicant’s Filing Date. Applicant filed an intent-to-use application to register
`
`the mark MUMBAI MONKEYS in Classes 9, 16, 25 and 28 on July 22, 2011, about a month after
`
`Opposer’s dates of first use.
`
`

`
`
`
`5.
`
`Opposer will be injured and damaged by the registration by Applicant of its
`
`proposed mark, MONKEYS OF MUMBAI, for " COMPUTER GAME SOFTWARE FOR
`
`WIRELESS AND ELECTRONIC MOBILE DEVICES; COMPUTER GAME SOFTWARE,
`
`ELECTRONIC GAME PROGRAMS, ELECTRONIC GAME SOFTWARE FOR HANDHELD
`
`ELECTRONIC DEVICES; VIDEO GAME SOFTWARE; COMPUTER GAME DISCS; VIDEO
`
`GAME CARTRIDGES, VIDEO GAME DISCS; PRERECORDED CDS FEATURING MUSIC
`
`AND MOTION PICTURE SOUND TRACKS; PRERECORDED DVDS FEATURING
`
`ANIMATED MOTION PICTURES; PRERECORDED OPTICAL AND MAGNETO-OPTICAL
`
`DISCS FEATURING MUSIC AND ANIMATED MOTION PICTURES; MULTIMEDIA
`
`SOFTWARE RECORDED ON CD ROM FEATURING MUSIC, MOTION PICTURE
`
`SOUNDTRACKS AND ANIMATED MOTION PICTURES; INTERACTIVE MULTIMEDIA
`
`SOFTWARE PROGRAMS CONTAINING ANIMATED MOTION PICTURES FOR
`
`ENTERTAINMENT; INTERACTIVE MULTI-MEDIA SOFTWARE FOR PLAYING GAMES;
`
`MAGNETS AND SUNGLASSES; HAND-HELD UNIT FOR PLAYING ELECTRONIC
`
`GAMES ADAPTED FOR USE WITH AN EXTERNAL DISPLAY SCREEN OR MONITOR,
`
`ANIMATED CARTOONS RECORDED ON DVDS; EXPOSED CINEMATOGRAPHIC
`
`FILM.” (Trademark Class 09) and for “SHIRTS AND TOPS, DRESSES, SKIRTS, PANTS,
`
`TROUSERS, JEANS, SHORTS, ROMPERS, OVERALLS, SWEATSHIRTS AND SWEAT
`
`PANTS, SWEATSUITS, CAPS AND HATS, GLOVES, SUSPENDERS, TIES, COATS AND
`
`JACKETS, HOSIERY, SHOES, BOOTS, SLIPPERS, PAJAMAS, ROBES, SLEEPSHIRTS,
`
`SLEEPWEAR, UNDERWEAR, HALLOWEEN COSTUMES, AND CLOTH BABY BIBS”
`
`(Trademark Class 25).
`
`
`
`6.
`
`Through its valid and continuous use of its MONKEYS OF MUMBAI marks, the
`
`purchasing public has come to associate this trademark with Opposer and has come to recognize
`
`
`
`

`
`that goods so marked and services provided in association with this trademark originate with
`
`Opposer.
`
`
`
`7.
`
`Applicant's mark, MUMBAI MONKEY, is confusingly similar to Opposer's mark,
`
`MONKEYS OF MUMBAI.
`
`
`
`8.
`
`On information and belief, both Opposer's goods and services and Applicant's
`
`goods are likely to be sold to the same purchasers.
`
`
`
`WHEREFORE, Opposer requests that the registration of Applicant's mark, MUMBAI
`
`MONKEYS, Application Serial No. 85/379000, be denied in classes 09 and 25 and this opposition
`
`be sustained.
`
`
`
`The Notice of opposition filing fee for two classes ($600) is being paid herewith by credit
`
`
`
`card.
`
`Respectfully submitted,
`
`HOT CHAAT, LLC
`
`
`
`By /Harold J Fassnacht/
`
`Harold J. Fassnacht
`
`Counsel for Hot Chaat, LLC
`
`MILLER MATTHIAS & HULL, LLP
`One North Franklin Street, Suite 2350
`Chicago, IL 60606
`Tel. (312) 235-4765