Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA572812
`ESTTA Tracking number:
`11/25/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
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`Notice is hereby given that the following parties oppose registration of the indicated application.
`Opposers Information
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`Name
`Entity
`Address
`
`Name
`Entity
`Address
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`Dr. Thomas Puma
`Individual
`362 Periwinkle Awy
`Sanibel, FL 33957
`UNITED STATES
`
`Donna Puma
`Individual
`362 Periwinkle Way
`Sanibel, FL 33957
`UNITED STATES
`
`Citizenship
`
`UNITED STATES
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`Citizenship
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`UNITED STATES
`
`Attorney
`information
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`Samuel B. Morrison
`MORRISON LAW OFFICES, P.C.
`25 Atlanta Street Suite D
`Marietta, GA 30060
`UNITED STATES
`sam@morrisonfranchiselaw.com Phone:770-794-0399
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`77625073
`11/25/2013
`
`Publication date
`Opposition
`Period Ends
`
`10/29/2013
`11/28/2013
`
`Disney Enterprises, Inc.
`500 South Buena Vista Street
`Burbank, CA 91521
`GERMANY
`Goods/Services Affected by Opposition
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`Class 030. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Confectionery, namely, cake
`decorationsmade of candy, candies, chocolate, confectionery chips for baking, and licorice; frozen
`confectionery; biscuits; bread;breakfast cereal; preparations made from cereals, namely, ready to
`eat, cereal derived food bars; chewing gum; cookies;corn chips; crackers; muffins; pancakes; pastry;
`popcorn; pretzels; puddings; tea; waffles; coffee
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`Grounds for Opposition
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`Priority and likelihood of confusion
`Other
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`Trademark Act section 2(d)
`Lack of bona fide intent to use 15 U.S.C. 1127
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`

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`Mark Cited by Opposer as Basis for Opposition
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`U.S. Application
`No.
`Registration Date
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`Word Mark
`Design Mark
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`85059213
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`Application Date
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`06/10/2010
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`NONE
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`Foreign Priority
`Date
`PINOCCHIO'S LIFE IS COOL! ORIGINAL ITALIAN ICE CREAM
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`NONE
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`Description of
`Mark
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`Goods/Services
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`The mark consists of a depiction of a young person holding an ice cream cone
`inits left hand, and making a "thumb's up" gesture with its right hand, above
`thewords "PINOCCHIO'S LIFE IS COOL! ORIGINAL ITALIAN ICE CREAM" in
`stylized type.
`Class 030. First use: First Use: 1980/03/01 First Use In Commerce: 1980/03/01
`Ice cream; Italian ice
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`Attachments
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`85059213#TMSN.jpeg( bytes )
`OPPOSITION COMPLAINT - Pinocchio.pdf(42716 bytes )
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`Certificate of Service
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`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by USPS Express Mail Post Office to Addressee on this date.
`
`Signature
`Name
`Date
`
`/samuel b morrison/
`Samuel B. Morrison
`11/25/2013
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the Matter of Application Serial No. 77/625073
`Published in the Official Gazette: October 29, 2013
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`
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`DONNA PUMA and
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`DR. THOMAS PUMA
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`Opposers,
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`v.
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`DISNEY ENTERPRISES, INC.
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`Applicant.
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`Mark: PINOCCHIO
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`Opposition No.:_______________________
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`NOTICE OF OPPOSITION
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`Donna Puma and Dr. Thomas Puma (Opposers), individuals having principal places of
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`business in the Sanibel, Florida area, will be damaged by registration of the mark shown in
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`Application Serial No. 77/625073 (the ‘073 application), and hereby oppose the same. The
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`grounds for opposition are as follows:
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`1.
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`Disney Enterprises (Applicant), a corporation having its principal place of
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`business at 500 South Buena Vista Street, Burbank, California 91527, has filed, on a 1(b) Intent
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`to Use application to register the mark PINOCCHIO for:
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`a.
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`Audio and video recordings featuring animation, live-action, music, stories and
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`games for children; audio and visual recordings in all media featuring animation, live-action,
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`music, stories and games for children; audio cassette recorders; audio cassette players; pre-
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`recorded audio cassettes, audio discs, compact discs featuring music, stories and games for
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`children; audio speakers; binoculars; calculators; camcorders; cameras; pre-recorded CD-ROMs
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`featuring computer games and activities for children; computer hardware, namely, CD-ROM
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`drives, CD-ROM writers, and computer modems; cellular telephones; cellular telephone
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`accessories, namely, headphones, head sets, adapters and batteries for cellular telephones;
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`cellular telephone cases; chips containing musical recordings; face plates for cellular telephones;
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`compact disc players; compact disc recorders; computer game programs; computer game
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`cartridges and discs; computers; computer hardware; computer keyboards; computer monitors;
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`computer mouse; computer disc drives; computer software, namely, computer games and
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`learning activities for children; cordless telephones; decorative refrigerator magnets; digital
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`cameras; pre-recorded DVDs, digital versatile discs and digital video discs featuring live-action
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`and animated entertainment for children, motion picture films, and television shows; DVD
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`players; DVD recorders; electronic personal organizers; eyeglass cases; eyeglasses; headphones;
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`karaoke machines; microphones; MP3 players; MP4 players; mouse pads; motion picture films
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`featuring live action and animated entertainment for children; musical recordings; pagers;
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`personal stereos; video players; personal video players; personal digital assistants; printers;
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`radios; sunglasses; telephones; television sets; video cameras; video cassette recorders; video
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`cassette players; video game cartridges; video game discs; video cassettes; videophones; walkie-
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`talkies; and wrist and arm rests for use with computers, in International Class 009; and
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`b.
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`for Address books; almanacs; appliqués in the form of decals; appointment books;
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`art prints; arts and craft paint kits; autograph books; baby books; ball point pens; baseball cards;
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`binders; bookends; bookmarks; a series of fiction books; books featuring stories, games and
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`activities for children; bumper stickers; calendars; cartoon strips; Christmas cards; chalk;
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`children's activity books; coasters made of paper; coin albums; coloring books; color pencils;
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`comic books; comic strips; coupon books; decals; decorative paper centerpieces; diaries;
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`disposable diapers for babies made of paper; drawing rulers; dry erase writing boards and writing
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`surfaces; envelopes; erasers; felt pens; flash cards; gift cards; gift wrapping paper; globes;
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`greeting cards; guest books; general feature magazines; maps; memo pads; modeling clay;
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`newsletters and printed periodicals, featuring stories, games and activities for children;
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`newspapers; note paper; notebooks; notebook paper; paintings; paper flags; paper party favors;
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`paper cake decorations; paper party decorations; paper napkins; paper party bags; paperweights;
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`paper gift wrap bows; paper pennants; paper place mats; paper table cloths; pen or pencil
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`holders; pencils; pencil sharpeners; pen and pencil cases and boxes; pens; photograph albums;
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`photographs; photo-engravings; pictorial prints; picture books; postcards; posters; printed
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`awards; printed certificates; printed invitations; printed menus; recipe books; rubber stamps;
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`score cards; stamp albums; stationery; staplers; stickers; trading cards; ungraduated rulers;
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`writing paper; and writing implements, in International Class 016; and
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`c.
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`for Aprons; beachwear; belts; bottoms; chaps; cloth bibs; coats; costumes for use
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`in role-playing games; cover-ups; dresses; ear muffs; footwear; gloves; Halloween costumes;
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`headwear; hosiery; infantwear; jackets; leotards; lingerie; loungewear; mittens; overalls; pants;
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`ponchos; rainwear; scarves; shirts; shorts; sleepwear; socks; sweaters; sweatshirts; swimwear;
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`ties; tops; underwear; and wrist bands, in International Class 025; and
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`d.
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`for Confectionery, namely, cake decorations made of candy, candies, chocolate,
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`confectionery chips for baking, and licorice; frozen confectionery; biscuits; bread; breakfast
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`cereal; preparations made from cereals, namely, ready to eat, cereal derived food bars; chewing
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`gum; cookies; corn chips; crackers; muffins; pancakes; pastry; popcorn; pretzels; puddings; tea;
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`

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`waffles; and coffee, as evidenced by publication of said mark in the October 29, 2013 issue of
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`the Official Gazette.
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`2.
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`Applicants filed the ‘073 application on December 2, 2008 under §1(b), based on
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`intent to use the mark PINOCCHIO. Upon information and belief, Applicants have not used the
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`PINOCCHIO mark thus far in commerce.
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`3.
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`Opposers have been using
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`the mark PINOCCHIO’S! LIFE IS COOL!
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`ORIGINAL ITALIAN ICE CREAM (and design) in connection with ice cream and Italian ice,
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`themselves and through their predecessors, with whom they are in privity, since at least March 1,
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`1980, in International Class 030. Such uses include advertisements and articles in nationally
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`distributed trade magazines, building signs, showcasing their retail store services at trade shows
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`within the U.S., through their franchised outlets in another state and advertising their retail
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`services online, and soliciting orders thereby, all using the PINOCCHIO’S! LIFE IS COOL!
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`ORIGINAL ITALIAN ICE CREAM (and design) mark.
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`4.
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`Opposers are the applicants of U.S. Trademark Applications No. 85/059213
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`PINOCCHIO’S! LIFE IS COOL! ORIGINAL ITALIAN ICE CREAM and design for ice cream
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`and Italian ice, in International Class 030. In an official action dated July 7, 2011, action on
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`Opposers’ application was suspended on the grounds that if Applicant’s application matured into
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`a registration, it could be cited against Opposer’s application in a refusal to register under
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`Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d).
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`5.
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`Opposers’ marks are known and recognized, and identifies to the public,
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`especially those who are ice cream aficionados, that Opposers are the origin of the services and
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`goods with which the marks are associated.
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`6.
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`Opposers have built up valuable goodwill in their marks, and have expended
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`considerable sums in advertising and publicizing said marks in association with Opposers’
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`goods.
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`7.
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`The goods for which Applicants seek to register are vast and extremely diverse, in
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`the four (4) classes each containing somewhat verbose lists of good substantially similar only in
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`the 4th listed class to that which Opposers have sold, that being International Class 030, as
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`Opposers’ goods include ice cream, Italian ice and other ice cream-related merchandise, and
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`Applicant’s include, inter alia, “frozen confectionary.” On information and belief, Applicant did
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`not and does not have a bona fide intent to use the mark PINOCCHIO on all the goods recited in
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`the ‘073 application.
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`8.
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`Applicant’s single word mark is virtually identical (with the exception of the
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`additional wording, and the caricarture of a child holding an ice cream cone) to the significant
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`portion of Opposers’ design marks.
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`9.
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`In view of the fact that Applicants’ single word mark and the main part of
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`Opposers’ multiple word mark are identical and used for goods that are sold in the field of ice
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`cream and frozen confectionary, it is likely that distributors and purchasers of such goods will be
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`confused into believing that Applicants’ goods originate or are associated with Opposers. As a
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`result, any perceived dissatisfaction with Applicants’ goods provided under the PINOCCHIO
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`mark are likely to be erroneously attributed to Opposers, to substantial detriment of Opposers
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`and of the goodwill that they have developed and enjoy in their PINOCCHIO’S LIFE IS COOL
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`Original Italian Ice Cream mark, and its variants.
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`10.
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`Applicants’ use of PINOCCHIO will cause confusion or mistake as to the origin
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`of Applicants’ goods and result in injury or threatened injury to Opposers and Opposers’
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`common-law established rights in the PINOCCHIO’S LIFE IS COOL Original Italian Ice Cream
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`(and design)mark.
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`11.
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`Opposers have the right to maintain and continue the goodwill, reputation, and
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`recognition which Opposers’ marks PINOCCHIO’S LIFE IS COOL Original Italian Ice Cream
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`(and design) have acquired without the confusion, deception, or misunderstanding that
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`Applicants’ registration of PINOCCHIO will cause in the mind of purchasers as to the source of
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`retail services with which Opposers’ marks are associated.
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`12.
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`Opposers have advertised their mark nationwide, via the internet, and in trade
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`publications, have franchised outlets in various states, and respectfully submit that they will be
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`damaged by the registration of the identical mark as applied for by Applicants.
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`This Notice of Opposition is being submitted electronically and the fees required by 37
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`CFR 2.6(a)(17) in the amount of $300.00 is submitted by way of credit card.
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`Respectfully submitted,
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` /Samuel B. Morrison/
`Samuel B. Morrison
`MORRISON LAW OFFICES, P.C.
`Suite D
`25 Atlanta Street
`Marietta, Georgia 30060
`(770)794-0399
`Attorneys for Opposers
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`Date: November 25, 2013
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`Certificate of Service
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`I hereby certify that on the date indicated below the foregoing Notice of Opposition was
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`served on the Applicants via first class mail in an envelope addressed as follows:
`
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`Linda K. McLeod
`Attorney at Law
`Kelly IP
`1330 Connecticut Ave, NW
`Suite 300
`Washington, DC 20036
`(202) 808-3574 | Direct
`(202) 365-1721 | Cell
`(202) 808-3570 | Main
`(202) 354-5232 | Fax
`linda.mcleod@kelly-ip.com
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`Date: November 25, 2013
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` /Samuel B. Morrison/
`Samuel B. Morrison
`Attorney for Opposer