Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA Tracking number:
`ESTTA771476
`09/19/2016
`
`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 ex-
`tension
`Address
`
`Attorney informa-
`tion
`
`Marvel Characters, Inc.
`09/21/2016
`
`500 South Buena Vista Street
`Burbank, CA 91521
`UNITED STATES
`
`Linda K. McLeod
`Kelly IP, LLP
`1919 M Street, N.W., Suite 610
`WASHINGTON, DC 20036
`UNITED STATES
`Linda.McLeod@kelly-ip.com, DisneyOpp@kelly-ip.com, lit-docket-
`ing@kelly-ip.com
`
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`International Re-
`gistration No.
`Applicant
`
`86655517
`09/19/2016
`
`NONE
`
`Gatti Ltd
`PO Box 1246
`No. 2 Irish Town,
`GIBRALTAR
`
`Publication date
`Opposition Peri-
`od Ends
`International Re-
`gistration Date
`
`05/24/2016
`09/21/2016
`
`NONE
`
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Computer game software; interactive game
`software; digital game software; downloadable books, magazines and newslettersin the field of com-
`puter gaming provided via online databases, websites, the internet and communications networks;
`sound, video and data recordings featuring fantasy stories; pre-recorded CDs and DVDs featuring
`animated television programmes and films; animated motion picture films
`Class 016. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Printed matter and printed publications,
`namely, books, manuals and magazines in the field of video games and fantasy stories
`Class 041. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Non-downloadable computer games
`provided via the Internet; organising computer game contests; entertainment services, namely,
`providing computer games via the Internet; providing online information in the field of entertainment
`via a computer database, the Internet, a communications satellite and other electronic, digital or ana-
`
`

`
`logue media; publishing of books, manuals and magazines in the field of computer games and
`fantasy stories; production of television programmes in the field of animation
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution by blurring
`
`Trademark Act Section 2(d)
`Trademark Act Sections 2 and 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`4568503
`
`07/15/2014
`
`Word Mark
`Design Mark
`
`GUARDIANS
`
`Application Date
`
`06/18/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2009/10/09 First Use In Commerce: 2009/10/09
`Electronic publishing services, namely,online publication of comic books, comic
`magazines and graphic novels featuringfictional action adventure stories and
`characters
`
`U.S. Registration
`No.
`Registration Date
`
`4857809
`
`11/24/2015
`
`Word Mark
`Design Mark
`
`GUARDIANS 3000
`
`Application Date
`
`10/08/2014
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 016. First use: First Use: 2014/10/01 First Use In Commerce: 2014/10/01
`Comic books; printed periodicals in thefield of comic book stories and artwork;
`printed visuals in the nature of comicbook stories and artwork; posters
`
`

`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`4923543
`
`Application Date
`
`07/14/2014
`
`03/22/2016
`
`Foreign Priority
`Date
`GUARDIANS OF THE GALAXY
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`NONE
`
`Class 021. First use: First Use: 2014/09/24 First Use In Commerce: 2014/09/24
`Beverageware; cups; lunch boxes; lunch kits comprising lunch boxes and insu-
`lated beverage containers for domestic use; mugs; plates; paper plates; thermal
`insulated containers for food or beverage
`
`4989190
`
`Application Date
`
`07/14/2014
`
`06/28/2016
`
`Foreign Priority
`Date
`GUARDIANS OF THE GALAXY
`
`NONE
`
`NONE
`
`Class 018. First use: First Use: 2014/09/24 First Use In Commerce: 2015/09/24
`All-purpose carrying bags; backpacks; book bags; knapsacks; luggage tags;
`shopping bags made of textile; tote bags; umbrellas; waist packs
`
`4571690
`
`Application Date
`
`12/10/2013
`
`07/22/2014
`
`Foreign Priority
`Date
`GUARDIANS OF THE GALAXY
`
`NONE
`
`

`
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`NONE
`
`Class 009. First use: First Use: 2011/05/24 First Use In Commerce: 2011/05/24
`Downloadable electronic publications inthe nature of comic books, comic
`magazines and stories in illustrated form
`
`4773398
`
`Application Date
`
`06/24/2013
`
`07/14/2015
`
`Foreign Priority
`Date
`GUARDIANS OF THE GALAXY
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2014/09/00 First Use In Commerce: 2014/09/00
`audio books in the nature of novels; audio recordings featuring music; down-
`loadable sound recordings featuring music for wireless communications devices;
`audioand visual recordings featuring live-action entertainment, music and stories
`for children; musical recordings; consumerelectronics, namely, mouse pads, cal-
`culators, headphones, walkie-talkies, casesfor cellular telephones; decorative
`magnets
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`4704586
`
`Application Date
`
`06/24/2013
`
`03/17/2015
`
`Foreign Priority
`Date
`GUARDIANS OF THE GALAXY
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 2014/05/15 First Use In Commerce: 2014/05/15
`Headwear; clothing, namely, belts, bottoms, costumes for use in role-playing
`games, gloves, Halloween costumes, jackets, loungewear, pants, shirts, sleep-
`
`

`
`wear and tops
`
`4983544
`
`Application Date
`
`06/24/2013
`
`06/21/2016
`
`Foreign Priority
`Date
`GUARDIANS OF THE GALAXY
`
`NONE
`
`NONE
`
`Class 009. First use: First Use: 2016/03/16 First Use In Commerce: 2016/03/16
`Audio and visual recordings featuring animated entertainment and games for
`children; sunglasses
`
`4756522
`
`Application Date
`
`06/24/2013
`
`06/16/2015
`
`Foreign Priority
`Date
`GUARDIANS OF THE GALAXY
`
`NONE
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`NONE
`
`Class 025. First use: First Use: 2015/03/31 First Use In Commerce: 2015/03/31
`Footwear; clothing, namely, aprons, beachwear, hosiery, socks, sweatshirts,
`swimwear and underwear
`
`4786360
`
`Application Date
`
`06/24/2013
`
`08/04/2015
`
`Foreign Priority
`Date
`GUARDIANS OF THE GALAXY
`
`NONE
`
`

`
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`NONE
`
`Class 028. First use: First Use: 2014/11/00 First Use In Commerce: 2014/11/00
`Card games; children's multiple activity toys; Christmas tree ornaments and dec-
`orations; electric action toys; musical toys; playing cards; skateboards; talking
`toys; target games; toy model hobbycraft kits
`
`4717159
`
`Application Date
`
`06/24/2013
`
`04/07/2015
`
`Foreign Priority
`Date
`GUARDIANS OF THE GALAXY
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`NONE
`
`Class 028. First use: First Use: 2011/10/01 First Use In Commerce: 2011/10/01
`Action figures and accessories therefor; board games; balloons; bobblehead
`dolls; children's play cosmetics; collectable toy figures; jigsaw puzzles; parlor
`games; plush toys; stuffed toys; toy action figures and accessories therefor; toy
`building blocks; toy vehicles; toy figures; toy banks; toy watches; toy weapons
`
`4716788
`
`Application Date
`
`06/15/2012
`
`04/07/2015
`
`Foreign Priority
`Date
`GUARDIANS OF THE GALAXY
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2014/08/01 First Use In Commerce: 2014/08/01
`ENTERTAINMENT SERVICES, NAMELY, PROVIDING ONLINE NON-
`DOWNLOADABLE COMIC BOOKS AND GRAPHIC NOVELS FEATURING
`FICTIONAL ACTION ADVENTURE STORIES AND CHARACTERS; PRODUC-
`
`

`
`TION, DISTRIBUTION, AND RENTAL OF MOTION PICTURE FILMS; PRO-
`DUCTION AND RENTAL OF SOUND AND VIDEO RECORDINGS; ENTER-
`TAINMENT SERVICES, NAMELY, MULTIMEDIA PRODUCTION OF CON-
`TINUING ENTERTAINMENT, NEWS, AND CURRENT EVENTS INFORMA-
`TION PROGRAMS, WHICH ARE ALL DELIVERED VIA COMMUNICATION
`AND COMPUTER NETWORKS; PROVIDING ENTERTAINMENT SERVICES
`VIA A GLOBAL COMMUNICATION NETWORK IN THE NATURE OF WEB-
`SITES FEATURING A WIDE VARIETY OF GENERAL INTEREST ENTERTAIN-
`MENT INFORMATION RELATING TO MOTION PICTURE FILMS, RELATED
`FILMCLIPS, PHOTOGRAPHS, AND OTHER MULTIMEDIA MATERIALS;
`PROVIDING ENTERTAINMENT INFORMATION VIA A WEBSITE IN THE
`FIELD OF MOTION PICTURE FILMS; PROVIDING NEWS AND INFORMA-
`TION IN THE FIELD OF ENTERTAINMENT RELATING TO MOTION PICTURE
`FILMS OVER AN ELECTRONIC NETWORK; ONLINE COMPUTER GAMES
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`4712818
`
`Application Date
`
`06/15/2012
`
`03/31/2015
`
`Foreign Priority
`Date
`GUARDIANS OF THE GALAXY
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`NONE
`
`Class 024. First use: First Use: 2014/07/01 First Use In Commerce: 2014/07/01
`bed blankets; bed linen; bed sheets; bed skirts; bed spreads; blanket throws;
`children's blankets; comforters; pillow cases; pillow covers; plastic table covers;
`throws
`
`4712820
`
`Application Date
`
`06/15/2012
`
`03/31/2015
`
`Foreign Priority
`Date
`GUARDIANS OF THE GALAXY
`
`NONE
`
`Description of
`
`NONE
`
`

`
`Mark
`Goods/Services
`
`Class 016. First use: First Use: 2014/07/00 First Use In Commerce: 2014/07/00
`appliqués in the form of decals; art prints; a series of fiction books; books, fea-
`turing stories and activities for children; calendars; children's activity books; col-
`oring books; comic books; decals; drawing rulers; envelopes; erasers; memo
`pads; notebooks; paper napkins; pencils; pencil sharpeners; pen and pencil
`cases; pens; picture books; posters; printed invitations; stickers; trading
`cards;writing paper; writing implements
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`4712819
`
`Application Date
`
`06/15/2012
`
`03/31/2015
`
`Foreign Priority
`Date
`GUARDIANS OF THE GALAXY
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`NONE
`
`Class 014. First use: First Use: 2014/08/01 First Use In Commerce: 2014/08/01
`Clocks; watches
`
`4696317
`
`Application Date
`
`06/15/2012
`
`03/03/2015
`
`Foreign Priority
`Date
`GUARDIANS OF THE GALAXY
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 003. First use: First Use: 2014/12/05 First Use In Commerce: 2014/12/05
`non-medicated toiletries
`
`U.S. Registration
`No.
`
`4786154
`
`Application Date
`
`06/15/2012
`
`

`
`Registration Date
`
`Word Mark
`Design Mark
`
`08/04/2015
`
`Foreign Priority
`Date
`GUARDIANS OF THE GALAXY
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`NONE
`
`Class 020. First use: First Use: 2015/05/00 First Use In Commerce: 2015/05/00
`plastic cake decorations
`
`4696318
`
`Application Date
`
`06/15/2012
`
`03/03/2015
`
`Foreign Priority
`Date
`GUARDIANS OF THE GALAXY
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 042. First use: First Use: 2012/07/08 First Use In Commerce: 2012/07/08
`Computer services, namely, creating an on-line virtual community for registered-
`users to showcase their skills, facilitate interaction among users, engage in so-
`cial networking, and participate in on-line discussion boards; providing tempor-
`ary use of non-downloadable software to enable viewing, previewing, sharing
`and creating blogs via global computer networks and electronic communication
`networks for use in connection with computers, mobile computers, media play-
`ers, cellular phones, wireless devices and portable and handheld digital elec-
`tronic devices
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`
`4720834
`
`Application Date
`
`06/15/2012
`
`04/14/2015
`
`Foreign Priority
`Date
`GUARDIANS OF THE GALAXY
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`NONE
`
`Class 020. First use: First Use: 2014/07/01 First Use In Commerce: 2014/07/01
`figurines and statuettes made of plastic; cushions; pillows; sleeping bags
`
`3562304
`
`Application Date
`
`01/17/2008
`
`01/13/2009
`
`Foreign Priority
`Date
`GUARDIANS OF THE GALAXY
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 016. First use: First Use: 2008/05/14 First Use In Commerce: 2008/05/14
`Comic books; Magazines featuring printed stories in illustrated form and comic
`book stories and artwork; Printed periodicals in the field of comic book stories-
`and artwork
`
`U.S. Application/ Registra-
`tion No.
`Registration Date
`Word Mark
`Goods/Services
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`GUARDIANS
`Films, comic books and magazines, video games, computer games,
`mobile games, downloadable electronic publications in the nature of
`comic books, entertainment services, audio books in the nature of
`novels, audio and visual recordings, consumer electronics, decorative
`magnets, sunglasses, computer services, footwear, headwear, cloth-
`ing, all-purpose carrying bags, backpacks, book bags, knapsacks,
`luggage tags, shopping bags made of textile, tote bags, umbrellas,
`waist packs, beverageware, cups, lunch boxes, mugs, plates, paper
`plates, thermal insulated containers for food or beverage, card
`games, children's multiple activity toys, Christmas tree ornaments and
`decorations, electric action toys, musical toys, playing cards, skate-
`
`

`
`boards, talking toys, target games, toy model hobbycraft kits, action
`figures and accessories therefor, board games, balloons, bobblehead
`dolls, children's play cosmetics, collectable toy figures, jigsaw
`puzzles, parlor games, plush toys, stuffed toys, toy action figures and
`accessories therefor, toy building blocks, toy vehicles, toy figures, toy
`banks, toy watches, toy weapons, bed blankets, bed linen, bed
`sheets, bed skirts, bed spreads, blanket throws, children's blankets,
`comforters, pillow cases, pillow covers, plastic table covers, throws,
`appliqués in the form of decals, art prints, a series of fiction books,
`books featuring stories and activities for children, calendars, children's
`activity books, coloring books, decals, drawing rulers, envelopes,
`erasers, memo pads, notebooks, paper napkins, pencils, pencil
`sharpeners, pen and pencil cases, pens, picture books, posters, prin-
`ted invitations, stickers, trading cards, writing paper, writing imple-
`ments, clocks, watches, non-medicated toiletries, plastic cake decora-
`tions, figurines and statuettes made of plastic, cushions, pillows,
`sleeping bags, and other goods and services identified in the Notice
`of Opposition.
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`GUARDIANS
`Films, comic books and magazines, video games, computer games,
`mobile games, downloadable electronic publications in the nature of
`comic books, entertainment services, audio books in the nature of
`novels, audio and visual recordings, consumer electronics, decorative
`magnets, sunglasses, computer services, footwear, headwear, cloth-
`ing, all-purpose carrying bags, backpacks, book bags, knapsacks,
`luggage tags, shopping bags made of textile, tote bags, umbrellas,
`waist packs, beverageware, cups, lunch boxes, mugs, plates, paper
`plates, thermal insulated containers for food or beverage, card
`games, children's multiple activity toys, Christmas tree ornaments and
`decorations, electric action toys, musical toys, playing cards, skate-
`boards, talking toys, target games, toy model hobbycraft kits, action
`figures and accessories therefor, board games, balloons, bobblehead
`dolls, children's play cosmetics, collectable toy figures, jigsaw
`puzzles, parlor games, plush toys, stuffed toys, toy action figures and
`accessories therefor, toy building blocks, toy vehicles, toy figures, toy
`banks, toy watches, toy weapons, bed blankets, bed linen, bed
`sheets, bed skirts, bed spreads, blanket throws, children's blankets,
`comforters, pillow cases, pillow covers, plastic table covers, throws,
`appliqués in the form of decals, art prints, a series of fiction books,
`books featuring stories and activities for children, calendars, children's
`activity books, coloring books, decals, drawing rulers, envelopes,
`erasers, memo pads, notebooks, paper napkins, pencils, pencil
`sharpeners, pen and pencil cases, pens, picture books, posters, prin-
`ted invitations, stickers, trading cards, writing paper, writing imple-
`ments, clocks, watches, non-medicated toiletries, plastic cake decora-
`tions, figurines and statuettes made of plastic, cushions, pillows,
`sleeping bags, and other goods and services identified in the Notice
`of Opposition.
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`GUARDIAN
`
`U.S. Application/ Registra-
`tion No.
`Registration Date
`Word Mark
`Goods/Services
`
`U.S. Application/ Registra-
`tion No.
`Registration Date
`Word Mark
`
`

`
`Goods/Services
`
`Comic books and magazines
`
`Attachments
`
`85066201#TMSN.png( bytes )
`86418639#TMSN.png( bytes )
`86335978#TMSN.png( bytes )
`86335972#TMSN.png( bytes )
`86139236#TMSN.png( bytes )
`85982894#TMSN.png( bytes )
`85983369#TMSN.png( bytes )
`85968661#TMSN.png( bytes )
`85968657#TMSN.png( bytes )
`85968664#TMSN.png( bytes )
`85983326#TMSN.png( bytes )
`85653466#TMSN.png( bytes )
`85653599#TMSN.png( bytes )
`85653642#TMSN.png( bytes )
`85653626#TMSN.png( bytes )
`85653650#TMSN.png( bytes )
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`85653667#TMSN.png( bytes )
`85983374#TMSN.png( bytes )
`77374366#TMSN.png( bytes )
`FINAL NOO GUARDIANS OF THE TALISMANS.pdf(1330969 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
`
`/Linda K. McLeod/
`Linda K. McLeod
`09/19/2016
`
`

`
`
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`Opposer, Marvel Characters, Inc. (“Opposer”), a corporation of the State of
`
`Delaware, having a principal place of business at 500 South Buena Vista Street,
`
`Burbank, California, 91521, believes that it is being damaged, and will be damaged, by
`
`the registration of Gatti Ltd’s (“Applicant”) GUARDIANS OF THE TALISMANS mark
`
`shown in Application Serial No. 86655517, and hereby opposes the same. As grounds
`
`for its opposition, Opposer alleges that, upon actual knowledge with respect to itself and
`
`its own acts, and upon information and belief as to other matters:
`
`Opposer and its Business
`
`Opposer, by and through its predecessors-in-interest and related
`
`1.
`
`companies, is one of the world’s most prominent character-based entertainment
`
`companies, with a library of over 8,000 characters featured in a variety of media for over
`
`seventy years.
`
`2.
`
`Opposer’s characters are well-known and famous, including GUARDIANS
`
`OF THE GALAXY, THOR, SPIDER-MAN, IRON MAN, X-MEN, CAPTAIN AMERICA,
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`Opposition No.
`
`Serial No. 86655517
`Filed: June 8, 2015
`Mark: GUARDIANS OF THE
` TALISMANS
`
`
`
`
`MARVEL CHARACTERS, INC.,
`
`
`
`
`v.
`
`
`GATTI LTD,
`
`
`Opposer,
`
`Applicant.
`
`

`
`Notice of Opposition
`Serial No. 86655517
`
`
`FANTASTIC FOUR, WOLVERINE, AVENGERS, and THE INCREDIBLE HULK, just to
`
`name a few.
`
`3.
`
`For decades, Opposer has offered and sold in commerce popular comic
`
`books and magazines featuring its famous and well known characters. Moreover, for
`
`many years, Opposer has offered and sold a wide variety of collateral merchandise tied
`
`to its character names, marks, and images, including but not limited to toys, clothing,
`
`collectibles, stickers, printed materials, mugs, costumes, bags, backpacks, luggage,
`
`phone covers, wall graphics, linens, and other items. Indeed, consumers have long
`
`been accustomed to seeing a wide variety of merchandise bearing Opposer’s
`
`characters, character names, marks, and images.
`
`4.
`
`Opposer has for many years engaged in a vast licensing program under
`
`which it licenses and has licensed the use of its properties and characters and character
`
`names in connection with a wide variety of products and services including, but not
`
`limited to, entertainment services, television programs, motion picture films, interactive
`
`and online games, video games, computer games, computer game software, comic
`
`books, trading cards, stationery, calendars, school supplies, sporting goods, toys, bags,
`
`linens, towels, apparel, headwear, footwear, eyewear, food and beverages, music,
`
`theme parks, and/or mobile applications.
`
`Opposer’s Common Law Rights in its GUARDIANS
`OF THE GALAXY and GUARDIAN(S) Marks, Names, and Characters
`
`Since at least 1969, Opposer has used its mark and name GUARDIANS
`
`5.
`
`OF THE GALAXY (the “GUARDIANS OF THE GALAXY Mark and Name”) in commerce
`
`in connection with a series of comic books.
`
`
`
`2
`
`

`
`Notice of Opposition
`Serial No. 86655517
`
`
`6.
`
`The GUARDIANS OF THE GALAXY Mark and Name identifies a group of
`
`comic book characters who are a team of cosmic adventurers formed by a diverse
`
`group of beings that protect the universe from threats across space. Representative
`
`samples of Opposer’s uses of its GUARDIANS OF THE GALAXY Mark and Name in
`
`connection with comic books are shown below.
`
`
`
`
`
`
`
`
`
`7.
`
`Since at least 2014, Opposer’s GUARDIANS OF THE GALAXY Mark and
`
`Name have been prominently featured in commerce in connection with Opposer’s
`
`blockbuster film, Guardians of the Galaxy. A representative image of advertising from
`
`the movie showing the GUARDIANS OF THE GALAXY Mark and Name is shown
`
`below.
`
`
`
`3
`
`

`
`Notice of Opposition
`Serial No. 86655517
`
`
`
`
`8.
`
`Opposer’s Guardians of the Galaxy film has been enormously successful,
`
`grossing hundreds of millions of dollars domestically in the United States and
`
`worldwide, becoming the third-highest earning film of 2014.
`
`9.
`
`Opposer’s Guardians of the Galaxy film has been the recipient of
`
`numerous awards and nominations, including winner of the 2015 Critics’ Choice Movie
`
`Awards for Best Action Movie and Best Makeup, and recipient of Academy Awards
`
`nominations for Best Visual Effects and Best Make-Up and Hairstyling.
`
`10. Opposer’s Guardians of the Galaxy film has been the subject of
`
`substantial unsolicited publicity, including in The New York Times, Los Angeles Times,
`
`The Chicago Tribune, Wall Street Journal, and The Washington Post, which reach
`
`millions of readers.
`
`
`
`4
`
`

`
`11. Opposer’s Guardians of the Galaxy film is available on DVD and Blu-ray,
`
`Notice of Opposition
`Serial No. 86655517
`
`
`and is available for viewing by instant streaming on various platforms including
`
`amazon.com, Apple’s iTunes, and Google Play.
`
`12. Since at least July 2014, Opposer’s GUARDIANS OF THE GALAXY Mark
`
`and Name and Guardians of the Galaxy characters have been prominently featured in
`
`connection with a variety of mobile, video, and online games, including, but not limited
`
`to, Guardians of the Galaxy: The Universal Weapon, Disney Infinity: Marvel Super
`
`Heroes (2.0 Edition) - Marvel's Guardians of the Galaxy Play Set, Guardians of the
`
`Galaxy Marvel Pinball, and Marvel’s Guardians of the Galaxy Skin Pack for Minecraft.
`
`Representative images of these games are shown below.
`
`
`
`
`
`5
`
`
`
`

`
`Notice of Opposition
`Serial No. 86655517
`
`
`
`
`
`
`
`
`
`
`6
`
`

`
`Notice of Opposition
`Serial No. 86655517
`
`
`
`
`13.
`
`The sequel to Opposer’s Guardians of the Galaxy film, Guardians of the
`
`
`
`Galaxy Vol. 2, is scheduled for release in the United States on May 5, 2017.
`
`14.
`
`For years, Opposer and its licensees have offered and promoted a wide
`
`variety of services and collateral merchandise under Opposer’s GUARDIANS OF THE
`
`GALAXY Mark and Name, including, but not limited to, comic books, magazines
`
`featuring printed stories in illustrated form and comic book stories and artwork, printed
`
`periodicals in the field of comic book stories and artwork, downloadable electronic
`
`publications in the nature of comic books, comic magazines and stories in illustrated
`
`form, entertainment services, online computer games, audio and visual recordings
`
`featuring animated entertainment and games for children, audio books in the nature of
`
`novels, audio recordings featuring music, downloadable sound recordings, audio and
`
`visual recordings, musical recordings, consumer electronics, decorative magnets,
`
`
`
`7
`
`

`
`Notice of Opposition
`Serial No. 86655517
`
`
`sunglasses, computer services, footwear, headwear, clothing, all-purpose carrying
`
`bags, backpacks, book bags, knapsacks, luggage tags, shopping bags made of textile,
`
`tote bags, umbrellas, waist packs, beverageware, cups, lunch boxes, mugs, plates,
`
`paper plates, thermal insulated containers for food or beverage, card games, children's
`
`multiple activity toys, Christmas tree ornaments and decorations, electric action toys,
`
`musical toys, playing cards, skateboards, talking toys, target games, toy model
`
`hobbycraft kits, action figures and accessories therefor, board games, balloons,
`
`bobblehead dolls, children's play cosmetics, collectable toy figures, jigsaw puzzles,
`
`parlor games, plush toys, stuffed toys, toy action figures and accessories therefor, toy
`
`building blocks, toy vehicles, toy figures, toy banks, toy watches, toy weapons, bed
`
`blankets, bed linen, bed sheets, bed skirts, bed spreads, blanket throws, children's
`
`blankets, comforters, pillow cases, pillow covers, plastic table covers, throws, appliqués
`
`in the form of decals, art prints, a series of fiction books, books featuring stories and
`
`activities for children, calendars, children's activity books, coloring books, comic books,
`
`decals, drawing rulers, envelopes, erasers, memo pads, notebooks, paper napkins,
`
`pencils, pencil sharpeners, pen and pencil cases, pens, picture books, posters, printed
`
`invitations, stickers, trading cards, writing paper, writing implements, clocks, watches,
`
`non-medicated toiletries, plastic cake decorations, figurines and statuettes made of
`
`plastic, cushions, pillows, sleeping bags, among other things.
`
`15.
`
`Through its long and extensive use of the GUARDIANS OF THE GALAXY
`
`Mark and Name, great commercial success under that mark, substantial advertising and
`
`promotion under that mark, and extensive media attention and publicity under that mark,
`
`Opposer has developed valuable goodwill in its GUARDIANS OF THE GALAXY Mark
`
`
`
`8
`
`

`
`Notice of Opposition
`Serial No. 86655517
`
`
`and Name, and the GUARDIANS OF THE GALAXY Mark and Name is well known and
`
`famous.
`
`16. Opposer has used its mark and name GUARDIAN in commerce since at
`
`least as early as 1978 in connection with a series of comic books. The GUARDIAN
`
`character, shown below, has appeared in numerous well-known MARVEL comic book
`
`series, including but not limited to the X-Men and the Fantastic Four.
`
`
`
`
`
`Opposer’s Registration Rights in its GUARDIANS OF THE GALAXY,
`GUARDIANS, and GUARDIANS-FORMATIVE Marks
`
`17. Opposer owns the following valid and subsisting United States trademark
`
`registrations for its GUARDIANS OF THE GALAXY, GUARDIANS, and GUARDIANS-
`
`formative marks (printouts from the PTO TSDR and assignment database are attached
`
`as Exhibit A). The registrations below are valid and subsisting and constitute prima
`
`facie evidence of the validity of the marks and of Opposer’s ownership of and exclusive
`
`right to use the marks in commerce on the goods and services recited in the
`
`registrations. Moreover, Opposer’s Registration No. 3562304 is incontestable and
`
`constitutes conclusive evidence of the validity of that mark and of Opposer’s exclusive
`
`
`
`9
`
`

`
`Notice of Opposition
`Serial No. 86655517
`
`
`right to use that mark in connection with the goods recited in that registration.
`
`(Collectively, the marks set forth in Paragraphs 5-17 are referred to as “Opposer’s
`
`GUARDIANS OF THE GALAXY, GUARDIAN(S), and GUARDIANS-Formative Marks”
`
`and the goods and services listed in Paragraphs 1-17 are referred to as “Opposer’s
`
`Goods and Services”.)
`
`Mark
`
`Reg./Serial No. Goods/Services
`
`
`Reg./Filing
`Date
`
`Date of First
`Use
`
`
`GUARDIANS Reg. No.
`4568503
`
`Registered
`Jul. 15, 2014
`
`Filed
`Jun. 18, 2010
`
`INT. CL. 41 Electronic publishing
`Oct. 09, 2009
`services, namely, online publication of
`comic books, comic magazines and
`graphic novels featuring fictional
`action adventure stories and
`characters
`
`
`GUARDIANS
`3000
`
`GUARDIANS
`OF THE
`GALAXY
`
`GUARDIANS
`OF THE
`GALAXY
`
`Reg. No.
`4857809
`
`Registered
`Nov. 24, 2015
`
`Filed
`Oct. 08, 2014
`
`Reg. No.
`4923543
`
`Registered
`Mar. 22, 2016
`
`Filed
`Jul. 14, 2014
`
`Reg. No.
`4989190
`
`Registered
`Jun. 28, 2016
`
`
`INT. CL. 16 Comic books; printed
`periodicals in the field of comic book
`stories and artwork; printed visuals in
`the nature of comic book stories and
`artwork; posters
`
`Oct. 01, 2014
`
`Sep. 24, 2014
`
`INT. CL. 21 Beverageware; cups;
`lunch boxes; lunch kits comprising
`lunch boxes and insulated beverage
`containers for domestic use; mugs;
`plates; paper plates; thermal insulated
`containers for food or beverage
`
`INT. CL. 18 All-purpose carrying
`bags; backpacks; book bags;
`knapsacks; luggage tags; shopping
`bags made of textile; tote bags;
`umbrellas; waist packs
`
`Sep. 24, 2014
`(first use
`anywhere
`
`Sep. 24, 2015
`(first use in
`
`
`
`10
`
`

`
`Notice of Opposition
`Serial No. 86655517
`
`
`Date of First
`Use
`
`commerce)
`
`
`May 24, 2011
`
`Sept. 2014
`
`May 15, 2014
`
`INT. CL. 9 Downloadable electronic
`publications in the nature of comic
`books, comic magazines and stories
`in illustrated form
`
`INT. CL. 9 Audio books in the nature
`of novels; audio recordings featuring
`music; downloadable sound
`recordings featuring music for
`wireless communications devices;
`audio and visual recordings featuring
`live-action entertainment, music and
`stories for children; musical
`recordings; consumer electronics,
`namely, mouse pads, calculators,
`headphones, walkie-talkies, cases for
`cellular telephones; decorative
`magnets
`
`INT. CL. 25 Headwear; clothing,
`namely, belts, bottoms, costumes for
`use in role-playing games, gloves,
`Halloween costumes, jackets,
`loungewear, pants, shirts, sleepwear
`and tops
`
`Mar. 16, 2016
`INT. CL. 9 Audio and visual
`recordings featuring animated
`
`entertainment and games for children;
`sunglasses
`
`Mark
`
`Reg./Serial No. Goods/Services
`
`
`Reg./Filing
`Date
`
`GUARDIANS
`OF THE
`GALAXY
`
`GUARDIANS
`OF THE
`GALAXY
`
`GUARDIANS
`OF THE
`GALAXY
`
`GUARDIANS
`OF THE
`GALAXY
`
`Filed
`Jul. 14, 2014
`
`Reg. No.
`4571690
`
`Registered
`Jul. 22, 2014
`
`Filed
`Dec. 10, 2013
`
`Reg. No.
`4773398
`
`Registered
`Jul. 14, 2015
`
`Filed
`Jun. 24, 2013
`
`Reg. No.
`4704586
`
`Registered
`Mar. 17, 2015
`
`Filed
`Jun. 24, 2013
`
`Reg. No.
`4983544
`
`Registered
`Jun. 21, 2016
`
`Filed
`Jun. 24, 2013
`
`
`
`11
`
`

`
`Mark
`
`Reg./Serial No. Goods/Services
`
`
`Reg./Filing
`Date
`
`INT. CL. 25 Footwear; clothing,
`namely, aprons, beachwear, hosiery,
`socks, sweatshirts, swimwear and
`underwear
`
`Notice of Opposition
`Serial No. 86655517
`
`
`Date of First
`Use
`
`
`Mar. 31, 2015
`
`GUARDIANS
`OF THE
`GALAXY
`
`GUARDIANS
`OF THE
`GALAXY
`
`GUARDIANS
`OF THE
`GALAXY
`
`GUARDIANS
`OF THE
`GALAXY
`
`Reg. No.
`4756522
`
`Registered
`Jun. 16, 2015
`
`Filed
`Jun. 24, 2013
`
`Reg. No.
`4786360
`
`Registered
`Aug. 04, 2015
`
`Filed
`Jun. 24, 2013
`
`Reg. No.
`4717159
`
`Registered
`Apr. 07, 2015
`
`Filed
`Jun. 24, 2013
`
`Reg. No.
`4716788
`
`Registered
`Apr. 17, 2015
`
`Filed
`Jun. 15, 2012
`
`Nov. 2014
`
`INT. CL. 28 Card games; children's
`multiple activity toys; Christmas tree
`ornaments and decorations; electric
`action toys; musical toys; playing
`cards; skateboards; talking toys;
`target games; toy model hobbycraft
`kits
`
`Oct. 01, 2011
`
`Aug. 01, 2014
`
`INT. CL. 28 Action figures and
`accessories therefor; board games;
`balloons; bobblehead dolls; children's
`play cosmetics; collectable toy
`figures; jigsaw puzzles; parlor games;
`plush toys; stuffed toys; toy action
`figures and accessories therefor; toy
`building blocks; toy vehicles; toy
`figures; toy banks; toy watches; toy
`weapons
`
`INT. CL. 41 Entertainment services,
`namely, providing online non-
`downloadable comic books and
`graphic novels featuring fictional
`action adventure stories and
`characters; production, distribution,
`and rental of motion picture films;
`production and rental of sound and
`video record