Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA787856
`12/07/2016
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`ESTTA Tracking number:
`
`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
`
`Entity
`
`Address
`
`Attorney informa-
`tion
`
`Sunlane Media, LLC
`
`Limited Liability Company
`
`Citizenship
`
`Nevada
`
`631 N. Stephanie St., #548
`Henderson, NV 89014
`UNITED STATES
`
`Allan B. Gelbard, Esq.
`Law Offices of Allan B. Gelbard
`15760 Ventura Blvd. Suite 801
`Encino, CA 91436
`UNITED STATES
`xxxesq@aol.com Phone:8183869200
`
`Applicant Information
`
`Application No
`
`87084542
`
`Publication date
`
`11/15/2016
`
`Opposition Filing
`Date
`
`Applicant
`
`12/07/2016
`
`Opposition Peri-
`od Ends
`
`12/15/2016
`
`SULLIVAN PRODUCTIONS, L.L.C.
`P.O. Box 1342
`Decatur, GA 30031
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 2016/06/18 First Use In Commerce: 2016/06/18
`All goods and services in the class are opposed, namely: Computer application software for mobile
`phones, namely, software for reading published works; Computer application software for mobile
`phones, portable media players, handheld computers, and other electronic devices, namely, software
`for reading published works
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`2401909
`
`Registration Date
`
`11/07/2000
`
`Word Mark
`
`LITEROTICA
`
`Application Date
`
`10/12/1999
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 1998/11/21 First Use In Commerce: 1998/11/21
`PROVIDING AN ON-LINE COMPUTER DATABASE IN THE FIELD OF ADULT
`ENTERTAINMENT FEATURING ADULT FICTION IN AUDIO AND PRINTED-
`FORM; ENTERTAINMENT SERVICES, NAMELY PROVIDING AN ON-LINE
`COMPUTER GAME
`
`U.S. Registration
`No.
`
`2683727
`
`Registration Date
`
`02/04/2003
`
`Application Date
`
`11/23/2001
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`LITEROTICA
`
`NONE
`
`Class 035. First use: First Use: 1998/11/21 First Use In Commerce: 1998/11/21
`Displaying the personal ads of others via television and the global computer net-
`work; providing the personal ads of others via telephone
`Class 038. First use: First Use: 1998/11/21 First Use In Commerce: 1998/11/21
`Providing chat rooms for transmission of messages among computer users con-
`cerning sexual topics via the global computernetwork
`Class 041. First use: First Use: 1998/11/21 First Use In Commerce: 1998/11/21
`Providing entertainment in the nature of live and pre-recorded audio and video
`adult-oriented messages, stories, articles and pictures by telephone, television-
`and the global computer network; providing hypertext links to the websites of
`others for entertainment purposes
`
`U.S. Registration
`No.
`
`2628426
`
`Registration Date
`
`10/01/2002
`
`Application Date
`
`11/23/2001
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`LITEROTICA
`
`NONE
`
`Class 035. First use: First Use: 1998/11/21 First Use In Commerce: 1998/11/21
`ON-LINE RETAIL STORE SERVICES VIA A GLOBAL COMPUTER NETWORK
`FEATURING ADULT TOYS, NOVELTIES, LINGERIE, CLOTHING, CD's,
`DVD's, VIDEOS, TAPES, BOOKS, MAGAZINES, GAMES, CONDOMS, AND
`GOURMET AND SPECIALTY FOOD ITEMS
`
`U.S. Registration
`No.
`
`4282293
`
`Application Date
`
`06/04/2012
`
`Registration Date
`
`01/29/2013
`
`Foreign Priority
`
`NONE
`
`

`
`Word Mark
`
`Design Mark
`
`LITEROTICA
`
`Date
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2011/12/02 First Use In Commerce: 2011/12/02
`Computer application software for mobile phones, portable media players and
`handheld computers, namely, software for accessing and downloading adult en-
`tertainment videos, pictures, messages, stories and articles from an Internet
`website
`
`U.S. Application/ Registra-
`tion No.
`
`Registration Date
`
`Design Mark
`
`NONE
`
`NONE
`
`Application Date
`
`NONE
`
`Goods/Services
`
`App Icon
`
`U.S. Application/ Registra-
`tion No.
`
`NONE
`
`Application Date
`
`NONE
`
`

`
`Registration Date
`
`NONE
`
`Design Mark
`
`Goods/Services
`
`Computer App software (e-reader) icon
`
`U.S. Application/ Registra-
`tion No.
`
`Registration Date
`
`NONE
`
`NONE
`
`Application Date
`
`NONE
`
`

`
`Design Mark
`
`Goods/Services
`
`Opposer's Twitter account page
`
`U.S. Application/ Registra-
`tion No.
`
`Registration Date
`
`NONE
`
`NONE
`
`Application Date
`
`NONE
`
`

`
`Design Mark
`
`Goods/Services
`
`Opposer's FaceBook page
`
`Attachments
`
`75820860#TMSN.png( bytes )
`85642250#TMSN.png( bytes )
`Lit Icon.jpg
`Screen Android.jpg
`LitTwit.jpg
`LitFB.jpg
`Opposition.pdf(93119 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
`
`/Allan B. Gelbard, Esq./
`
`Name
`
`Date
`
`Allan B. Gelbard, Esq.
`
`12/07/2016
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIALS AND APPEALS BOARD
`
`In the Matter of Application Serial Number 87084542
`
`For the mark: LIT
`
`SUNLANE MEDIA, LLC.,
`
`OPPOSITION NUMBER
`
` Opposer
`
`vs.
`
`Application Serial No.: 87084542
`
`Filed: 6/27/2016
`
`SULLIVAN PRODUCTIONS, L.L.C.,
`
`Published: 11/15/2016
`
` Applicant
`
`Deadline for Opposition: 12/15/2016
`
`NOTICE OF OPPOSITION
`
`Sunlane Media, LLC, (“Sunlane”), a corporation organized and existing under the laws
`
`of the State of Nevada with its principal place of business at 631 N. Stephanie St. #548
`
`Henderson NV 89014, believes that it will be damaged by the registration of the trademark (the
`
`“Mark”) shown in United States Trademark Application Serial No. 87084542 (the
`
`“Application”).
`
`Pursuant to 15 U.S.C. §1063 (Lanham Act § 13), Opposer, through its attorney, hereby
`
`opposes registration of the Mark for all of the services in all classes set forth in the Application.
`
`Description of Applicant’s Application: The Applicant is Sullivan Productions, LLC which
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`identifies itself in the Application as a Georgia Limited Liability Company with its principal business
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`address at PO Box 1342 Decatur, GA 30031. The filing date of the Opposed Application is June 27,
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`Tel (818)386-9200 - Fax (818)386-9289
`
`15760 Ventura Boulevard, Suite 801 Encino, CA 91436
`
`ALLAN B. GELBARD, ESQ.
`
`

`
`2016. The Opposed Application is based upon alleged use in commerce of the Opposed Mark as of
`
`June 18, 2016. The Mark was published for opposition in the Official Gazette of November 15, 2016
`
`and the deadline for filing a Notice of Opposition is December 15, 2016. The Mark is
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`“LIT” (Standard Character Mark). The Application seeks registration in International Class 9 for
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`“Computer application software for mobile phones, namely, software for reading published works;
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`Computer application software for mobile phones, portable media players, handheld computers, and
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`other electronic devices, namely, software for reading published works” (the “Opposed Goods”).
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`Applicant’s use and application to register the Opposed Mark are without Sunlane’s consent or
`
`permission.
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`As grounds for this opposition, Opposer alleges as follows:
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`1.
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`Sunlane Media is one of the largest distributors of on-line erotic stories which it
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`distributes through its famous LITEROTICA and Lit brands.
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`2.
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` Sunlane has obtained numerous United States trademark registrations, including
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`the following:
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`LITEROTICA - Reg # 2401909 (Incontestable)
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`International Class 41: Providing an on-line computer database in the field of adult
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`entertainment featuring adult fiction in audio and printed form; entertainment services, namely
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`providing an on-line computer game. First use: 11/21/1998. First use in commerce: 11/21/1998.
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`LITEROTICA - Reg # 2683727 (Incontestable)
`
`International Class 035: Displaying the personal ads of others via television and the global
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`computer network; providing the personal ads of others via telephone. First use: 11/21/1998. First
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`use in commerce: 11/21/1998.
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`International Class 038: Providing chat rooms for transmission of messages among computer
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`users concerning sexual topics via the global computer network. First use: 11/21/1998. First use in
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`commerce: 11/21/1998.
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`Tel (818)386-9200 - Fax (818)386-9289
`
`15760 Ventura Boulevard, Suite 801 Encino, CA 91436
`
`ALLAN B. GELBARD, ESQ.
`
`

`
`International Class 41: Providing entertainment in the nature of live and pre-recorded audio
`
`and video adult-oriented messages, stories, articles and pictures by telephone, television and the
`
`global computer network; providing hypertext links to the websites of others for entertainment
`
`purposes. First use: 11/21/1998. First use in commerce: 11/21/1998.
`
`LITEROTICA - Reg # 2628426 (Incontestable)
`
`International Class 35: On-line retail store services via a global computer network featuring
`
`adult toys, novelties, lingerie, clothing, cd's, dvd's, videos, tapes, books, magazines, games, condoms,
`
`and gourmet and specialty food items. First use: 11/21/1998. First use in commerce: 11/21/1998.
`
`LITEROTICA - Reg # 4282293
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`International Class 9: Computer application software for mobile phones, portable media
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`players and handheld computers, namely, software for accessing and downloading adult
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`entertainment videos, pictures, messages, stories and articles from an Internet website. First use:
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`12/02/2011. First use in commerce: 12/02/2011.
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`3.
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`Sunlane’s “LITEROTICA” mark is one of the oldest and most famous brands in the
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`on-line erotica story space. It is also widely known by and referred to as the abbreviated “LIT”
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`which has - itself - acquired common law trademark protection.
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`4.
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`Sunlane provides numerous services under its separate, but related “LIT” brand
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`including “Lit Chat,” the “Lit Awards,” “LitTV” and “LitCams.” It is referred to on its various social
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`media accounts as “Lit.”
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`5.
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`In 2011, Sunlane began offering a proprietary App - sold through the Android
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`marketplace - which is comprised of computer application software functioning as an “e-reader” for
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`stories appearing on the LITEROTICA website. The screen logo for the LIT App is a white L in a
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`blue field and includes the name “LIT.”
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`-3-
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`Tel (818)386-9200 - Fax (818)386-9289
`
`15760 Ventura Boulevard, Suite 801 Encino, CA 91436
`
`ALLAN B. GELBARD, ESQ.
`
`

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`6.
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`Sunlane also owns the internet domain “lit.com” which it operates as a redirect to
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`www.Literotica.com.
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`7.
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`Sunlane is the owner of the above-referenced LITEROTICA and LIT trademarks (the
`
`“Sunlane Marks”), covering the goods and services specified therein (the “Sunlane Goods and
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`Services”), and all goodwill associated therewith.
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`8.
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`By virtue of the Sunlane’s extensive and continuous use and promotion of its
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`registered and common law trademarks, the Sunlane Marks have become distinctive of and closely
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`associated in the public mind with Opposer’s products and services.
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`9.
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`Applicant’s Mark is substantially identical and/or confusingly similar to the Sunlane
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`Marks which are used by Opposer to advertise and sell its services. The Sunlane Marks have priority
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`over the Opposed Application.
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`10. Applicant’s Mark so completely resembles Opposer’s LIT trademark and its lit.com
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`internet domain, and comprises a significant portion of its LITEROTICA trademark, so as to be likely
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`to be confused therewith and mistaken therefor, which will lead to deception, confusion and/or
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`mistakes by consumers as to the origin of Applicant’s services.
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`Tel (818)386-9200 - Fax (818)386-9289
`
`15760 Ventura Boulevard, Suite 801 Encino, CA 91436
`
`ALLAN B. GELBARD, ESQ.
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`11.
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`If Applicant is allowed to register its Mark, confusion in trade resulting in damage and
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`injury to Opposer is inevitable because Applicant’s Mark is substantially identical and/or confusingly
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`similar to the Sunlane Marks.
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`12. By reason of Sunlane’s extensive sales, promotion, and advertising of products and
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`services under the Sunlane Marks, and the high quality of such products and services,
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`valuable goodwill has been established in Opposer’s marks, and an enviable reputation has been
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`established for products and services sold under and distinguished by Opposer’s trademarks.
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`

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`13. Members of both the trade and the public recognize and have come to associate that
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`products and services offered under the Sunlane Marks originate with the Opposer, which
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`include, inter alia, computer application software.
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`14.
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`Based on the similarities of the marks, consumers are likely to confuse or associate
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`the Opposed Goods offered by Applicant under its LIT mark with Sunlane and the products and
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`services offered under its Sunlane Marks, or to believe that the Opposed Goods are made, sponsored,
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`endorsed, or licensed by Sunlane, or that there is some relationship between the Applicant and
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`Opposer.
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`15.
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`For the above reasons, any use or registration of the Opposed Mark is likely to
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`cause confusion or mistake, or to deceive the purchasing public into mistakenly believing that the
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`goods described in the Opposed Application originate from, come from, or otherwise are
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`associated with Opposer’s goods and services, in violation of Section 2(d) of the Lanham Act.
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`WHEREFORE, Opposer prays that this Opposition be sustained, that the Opposed
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`Application be rejected, and that registration of the Opposed Mark be refused and denied in all
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`respects.
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`Tel (818)386-9200 - Fax (818)386-9289
`
`15760 Ventura Boulevard, Suite 801 Encino, CA 91436
`
`ALLAN B. GELBARD, ESQ.
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`th
`Dated this 7 of December, 2016
`
`THE LAW OFFICES OF ALLAN B. GELBARD
`
`By:
`
`
`Allan B. Gelbard, Esq.
`15760 Ventura Boulevard, Suite 801
`Encino, CA 91436
`Tel:(818)386-9200/Fax:(818)386-9289
`E-Mail: XXXEsq@aol.com
`Attorney for Opposer
`Sunlane Media, LLC
`
`-5-
`
`

`
`CERTIFICATE OF FILING AND SERVICE
`
`I hereby certify that this pleading is being electronically filed in PDF format with the
`Trademark Trial and Appeal Board through the Electronic System for Trademark Trials and
`Appeals (ESTTA) on December 7, 2016 and that a true and complete copy of this pleading has
`been served on Applicant by mailing a copy of this pleading to Brittany M. Pace, counsel for
`Applicant, via First Class U.S. Mail, postage prepaid, at the following address:
`
`Brittany M. Pace
`Onda, LaBuhn, Rankin & Boggs Co., LPA
`35 North Fourth St., Suite 100
`Columbus, OH 43215
`
`Dated December 7, 2016
`
`By:
`Allan B. Gelbard, Esq.
`
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`Tel (818)386-9200 - Fax (818)386-9289
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`15760 Ventura Boulevard, Suite 801 Encino, CA 91436
`
`ALLAN B. GELBARD, ESQ.
`
`-6-