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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA Tracking number:
`ESTTA839750
`08/15/2017
`
`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
`
`DC COMICS
`08/16/2017
`
`2900 West Alameda Avenue
`Burbank, CA 91505
`UNITED STATES
`
`Attorney informa-
`tion
`
`James D. Weinberger
`Fross Zelnick Lehrman & Zissu, P.C.
`4 Times Square, 17th Floor
`New York, NY 10036
`UNITED STATES
`Email: jweinberger@fzlz.com, lkittay@fzlz.com
`Phone: (212) 813-5900
`Applicant Information
`
`87254610
`08/15/2017
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`Publication date
`Opposition Peri-
`od Ends
`Shenzhen Haimeixun Technology CO., Ltd.
`Rm.802, Lankun Bldg, Minkang Rd
` Minzhi Sub-district, Longhua Dist.,
`Shenzhen
`CHINA
`Goods/Services Affected by Opposition
`
`04/18/2017
`08/16/2017
`
`Class 012. First Use: 2014/12/11 First Use In Commerce: 2014/12/11
`All goods and services in the class are opposed, namely:
`Electric bicycles;Motorized bicycles; Motorized, electric-powered, self-propelled, self-balanci
`ng, wheeled personal mobility, transportation device;
` Motorized, self-propelled, wheeled personal mobility device, namely, scooters;
` Three-wheeled motor vehicles; Two-wheeled motor vehicles
`
`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.
`
`2858716
`
`Application Date
`
`02/01/2001
`
`

`

`Registration Date
`
`06/29/2004
`
`Word Mark
`Design Mark
`
`BATWING
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 016. First use: First Use: 2001/11/00 First Use In Commerce: 2001/11/00
`[ Printed matter and paper goods, namely, books featuring characters from an-
`imated, action adventure, comedy and/or drama features, comic books, chil-
`dren's books, magazines featuring characters from animated, action adventure,
`comedy and/or drama features, coloring books, children's activity books; note
`cards, greeting cards, trading cards; pens, pencils, cases therefor, decals, heat
`transfers; posters; book covers, book marks, calendars, paper party favors and
`paper party decorations, namely, paper napkins, paperhats, invitations, paper
`table cloths, printed transfers for embroidery or fabric appliqués; paper photo
`frames ]
`Class 021. First use: First Use: 2001/06/00 First Use In Commerce: 2001/06/00
`[ Glass, ceramic and earthenware goods,namely, coffee mugs, mugs, coffee
`cups,and cups; beverage glassware, namely, mugs and drinking glasses;
`ceramic, glassand china figurines; wastepaper baskets; plastic buckets;
`canteens; plastic coasters; thermal insulated containers for food or beverages;
`cork screws; corn cobholders; water bottles sold empty; vacuum bottles; de-
`canters; rubber household gloves; and dinnerware, namely, paper plates and
`paper cups ]
`Class 025. First use: First Use: 2001/06/00 First Use In Commerce: 2001/06/00
`[ Clothing for men, women and children - namely, shirts, t-shirts, sweat-
`shirts,tank tops, blouses, suspenders, sweaters, jackets, hats, caps, sunvisors,
`belts, and masquerade and Halloween costumes and masks sold in connection
`therewith ]
`Class 041. First use: First Use: 2001/06/00 First Use In Commerce: 2001/06/00
`Entertainment services in the nature ofamusement park rides
`
`U.S. Registration
`No.
`
`4350537
`
`Application Date
`
`10/01/2010
`
`

`

`Registration Date
`
`06/11/2013
`
`Word Mark
`Design Mark
`
`BATMOBILE
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 012. First use: First Use: 2013/02/01 First Use In Commerce: 2013/02/01
`AUTOMOBILES
`
`U.S. Registration
`No.
`Registration Date
`
`1179342
`
`11/24/1981
`
`Application Date
`
`10/15/1976
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`BATMOBILE
`
`NONE
`
`Class 028. First use: First Use: 1973/10/09 First Use In Commerce: 1973/10/09
`Toy Vehicle
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`3070999
`
`03/21/2006
`
`BATGIRL
`
`Application Date
`
`03/30/2005
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`NONE
`
`

`

`Goods/Services
`
`Class 028. First use: First Use: 1997/05/00 First Use In Commerce: 1997/05/00
`Toys and sporting goods, including games and playthings--namely, action fig-
`uresand accessories therefor; plush toys; [balloons; bathtub toys; ride-on toys;
`equipment sold as a unit for playing cardgames; ] toy vehicles; dolls; [ flying
`discs; electronic hand-held game unit; game equipment sold as a unit for
`playinga board game, a card game, a manipulative game, a parlor game and an
`action type target game; stand alone video output game machines; jigsaw and
`manipulative puzzles; paper face masks; balls--namely,playground balls, soccer
`balls, baseballs, basketballs; baseball gloves; toy banks; toy snow globes; and
`Christmas treeornaments ]
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`4135575
`
`05/01/2012
`
`BATCAVE
`
`Application Date
`
`10/13/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 028. First use: First Use: 2007/00/00 First Use In Commerce: 2007/00/00
`PLAY SETS FOR ACTION FIGURES, ACTION FIGURES, TOY VEHICLES
`AND TOY FURNITURE
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`4871023
`
`12/15/2015
`
`BATMAN
`
`Application Date
`
`10/03/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`
`The mark consists of the word "BATMAN" on a bat.
`
`

`

`Mark
`Goods/Services
`
`Class 028. First use: First Use: 2010/07/00 First Use In Commerce: 2010/07/00
`Toys and sporting goods, including games and playthings, namely, action fig-
`uresand accessories therefor; plush toys; toy vehicles; dolls; game equipment
`sold as a unit for playing a board game, a card game, a manipulative game, a
`parlour game, a parlour-type computer game; jigsaw and manipulative puzzles;
`Christmas tree ornaments; and computer and video game consoles for use with
`television receiver
`
`Attachments
`
`78046079#TMSN.png( bytes )
`85143617#TMSN.png( bytes )
`78598220#TMSN.png( bytes )
`85446715#TMSN.png( bytes )
`85744930#TMSN.png( bytes )
`F2336515.pdf(51727 bytes )
`
`Signature
`Name
`Date
`
`/s/ James D. Weinberger
`James D. Weinberger
`08/15/2017
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`Opposer,
`
`
`
`
`
`
`DC COMICS,
`
`
`
`
`
`
`
`
`
`
`
`
`
`-against-
`
`
`
`
`
`
`SHENZEN HAIMEIXUN TECHNOLOGY
`CO., LTD.,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Applicant.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`Opposer, DC Comics, a New York partnership located at 2900 West Alameda Avenue,
`
`Burbank, California 91505, believes that it would be damaged by registration of the trademark
`
`BATWINGS (stylized) to Shenzen Haimeixun Technology Co. Ltd. (“Applicant”) in
`
`International Class 12 applied for in Application Serial No. 87/254,610 (the “Application”), and
`
`therefore opposes the same pursuant to Section 13(a) of the Lanham Trademark Act of 1946, 15
`
`U.S.C. § 1063(a).
`
`
`
`As grounds therefore, Opposer alleges as follows:
`
`1.
`
`Opposer, on its own and through its predecessors-in-interest (referred to
`
`collectively herein as “Opposer”), is the publisher of comic books and magazines featuring
`
`comic characters and stories, including the world-famous character Batman. Opposer is among
`
`the most well-known and successful publishers of comic magazines in the world.
`
`2.
`
`Over the many years since the Batman character was first introduced in 1939,
`
`Opposer has focused an enormous amount of attention and effort to develop the Batman mythos,
`
`including the character, his associates, his world, and other indicia associated with him.
`
`{F2334663.2 }
`
`
`
`

`

`Throughout the period of Batman’s existence, Opposer has invested a vast amount of creative
`
`energy and resources to continually update and improve the Batman property to keep the
`
`character and his adventures timely and fresh in the public’s mind. Opposer’s efforts in this
`
`regard have led to a vast array of literary works, television series, and feature films, which fully
`
`explore in great depth Batman himself and the fictional world inhabited by him. Due to
`
`Opposer’s extraordinary nurturing of the Batman mythos, the character and his universe have
`
`captured the popular imagination. It is beyond dispute that today the Batman lore is one of a
`
`rarified group of legends known and loved throughout the world.
`
`3.
`
`Because of Opposer’s shepherding and careful development of the Batman
`
`character, but also of his universe and of the things and people that populate that universe,
`
`Batman has become associated with certain marks, symbols and indicia which, in the public
`
`mind, are inextricably linked with the Batman character and which function as trademarks, both
`
`for literary and entertainment works featuring Batman and related characters and for various
`
`goods and services for which Opposer has licensed others to use these marks. Among these
`
`indicia is Batman’s vehicle known as the BATWING; Batman’s crime-fighting associate, a
`
`character named “Batwing”; Batman’s hideout, the BATCAVE; Batman’s car, the
`
`BATMOBILE; and the character “Batgirl” (collectively, “Opposer’s Marks”).
`
`4.
`
`Opposer’s Marks have been used together with Batman since at least as early as
`
`the 1940s. Opposer’s Marks appear across virtually all media in which the Batman character is
`
`exploited. In addition, Opposer has used or licensed the use of the Opposer’s Marks in
`
`connection with goods and services with which entertainment characters are traditionally
`
`licensed, including but not limited to toys. One example of such use is shown here:
`
`{F2334663.2 }
`
`2
`
`

`

`.
`
`5.
`
`Opposer is the owner of all right, title, and interest in and to Opposer’s Marks in
`
`connection with a vast array of goods and services based on first use in commerce prior to any
`
`date upon which Applicant can rely.
`
`6.
`
`The broad reach and deep emotional impact of entertainment products,
`
`specifically those bearing Opposer’s Marks, create unparalleled goodwill in the names,
`
`characters, and symbols from those products, and have generated a robust licensing business in
`
`virtually limitless categories of goods and services. Consumers today have come to expect that
`
`when elements from entertainment products appear on or in connection with goods or services,
`
`such uses are associated with and licensed by the rights holder.
`
`7.
`
`Opposer owns several U.S. trademark registrations for Opposer’s Marks and
`
`related marks in connection with goods and services identical or related to those identified in the
`
`Application, including the following:
`
` U.S. Reg. No. 2,858,716 for
`
`in connection with “Entertainment Services in
`
`the nature of amusement park rides” in International Class 41, based on first use in 2001;
`
` U.S. Reg. No. 4,350,537 for BATMOBILE in connection with “automobiles” in
`
`International Class 12, based on first use in 2013;
`
` U.S. Reg. No. 1,179,342 for BATMOBILE in connection with “toy vehicle” in
`
`{F2334663.2 }
`
`3
`
`

`

`International Class 28, based on first use in 1973;
`
` U.S. Reg. No. 3,070,999 for BATGIRL in connection with “Toys and sporting goods,
`
`including games and playthings--namely, action figures and accessories therefor; plush
`
`toys; toy vehicles; dolls” in International Class 28, based on first use in 1997;
`
` U.S. Reg. No. 4,135,575 for BATCAVE in connection with “play sets for action figures,
`
`action figures, toy vehicles and toy furniture” in International Class 28, based on first use
`
`in 2007; and
`
` U.S. Reg. No. 4,871,023 for BATMAN & Design in connection with “Toys and sporting
`
`goods, including games and playthings, namely, action figures and accessories therefor;
`
`plush toys; toy vehicles; dolls; game equipment sold as a unit for playing a board game, a
`
`card game, a manipulative game, a parlour game, a parlour-type computer game; jigsaw
`
`and manipulative puzzles; Christmas tree ornaments; and computer and video game
`
`consoles for use with television receiver” in International Class 28, based on first use in
`
`2010;
`
`These registrations relied upon herein are valid, subsisting and in full effect. Reg. No. 2,858,716
`
`and Reg. No. 3,070,999 have become incontestable under Section 15 of the Lanham Act, 15
`
`U.S.C. § 1065, and therefore serve as conclusive proof of Opposer’s exclusive right to use the
`
`mark contained therein in connection with the goods and services identified therein, as provided
`
`by Section 33(b) of the Lanham Act, 15 U.S.C. § 1115(b).
`
`8.
`
`Upon information and belief, Applicant is a Chinese limited company with a
`
`place of business at Rm. 802, Lankun Bldg, Minkang Rd Minzhi Sub-district, Longhua Dist.,
`
`Shenzhen CHINA.
`
`9.
`
`On December 2, 2016, Applicant filed the Application for “Electric bicycles;
`
`Motorized bicycles; Motorized, electric-powered, self- propelled, self-balancing, wheeled
`
`{F2334663.2 }
`
`4
`
`

`

`personal mobility, transportation device; Motorized, self-propelled, wheeled personal mobility
`
`device, namely, scooters; Three-wheeled motor vehicles; Two-wheeled motor vehicles” in
`
`International Class 12 based on alleged first use of the mark in 2014, pursuant to Section 1(a) of
`
`the Lanham Act, 15 U.S.C. § 1051(a) (“Applicant’s Mark”).
`
`10.
`
`Opposer’s Marks have been used continuously and/or registered by Opposer since
`
`a date prior to any date on which Applicant can rely.
`
`11.
`
`Upon information and belief, prior to any date on which Applicant can rely,
`
`Applicant was on actual notice of Opposer’s prior rights in and to Opposer’s Marks.
`
`12.
`
`The earliest date upon which Applicant can rely is long after the use, registration
`
`and acquisition of rights in Opposer’s Marks by Opposer or its predecessors-in-interest. As such,
`
`Opposer’s rights in Opposer’s Marks are prior and superior to any rights Applicant may claim in
`
`Applicant’s Mark. The registration of Applicant’s Mark is inconsistent with Opposer’s prior
`
`rights and statutory grant of exclusivity of use.
`
`13.
`
`Applicant’s Mark is virtually identical and/or similar to Opposer’s Marks in sight,
`
`sound, and commercial impression.
`
`14.
`
`In view of the strength and breadth of use of Opposer’s Marks, Applicant’s goods
`
`to be offered under Applicant’s Mark are sufficiently related to goods and services sold under
`
`Opposer’s Marks and are offered to the same customers or types of customers to whom goods
`
`and services bearing Opposer’s Marks are offered.
`
`15.
`
`Based on the similarity of the marks and goods and services, consumers are likely
`
`to be deceived into falsely believing that the goods offered by Applicant under Applicant’s Mark
`
`originate from, are licensed by or are otherwise associated with or endorsed by Opposer, or that
`
`there is some relationship between Applicant and Opposer or the goods of Applicant and
`
`Opposer, all to Opposer’s injury and harm.
`
`{F2334663.2 }
`
`5
`
`

`

`16.
`
`Thus, registration of the Application is likely to cause confusion, cause mistake,
`
`or to deceive the public into the false belief that the goods offered by Applicant under
`
`Applicant’s Mark come from or are otherwise sponsored by or connected with Opposer, in
`
`violation of Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d).
`
`17. Moreover, Opposer’s BATMAN mark is famous for goods and services relating
`
`to publications and entertainment, and had become famous long before the earliest priority date
`
`upon which Applicant can rely. Because Opposer’s BATMAN mark has become famous,
`
`Applicant’s use and registration of Applicant’s Mark, will damage Opposer by trading on the
`
`enormous goodwill associated with the BATMAN mark and diluting its distinctiveness. Thus,
`
`Applicant’s use and registration of Applicant’s Mark in connection with the goods identified in
`
`the Application are likely to cause dilution by blurring of the famous BATMAN mark, in
`
`violation of Sections 13(a) and 43(c) of the Lanham Act, 15 U.S.C. §§ 1063(a), 1125(c).
`
`18.
`
`By reason of the foregoing, Opposer is likely to be harmed by the registration of
`
`the Application.
`
`THEREFORE, it is respectfully requested that this Opposition be sustained and that the
`
`Application be refused in its entirety.
`
`
`Dated: August 15, 2017
`
`New York, New York
`
`
`
`FROSS ZELNICK LEHRMAN & ZISSU, P.C.
`
`
`
`By:_____ _____________________________
` James D. Weinberger
` Leo Kittay
`4 Times Square, 17th Floor
`New York, New York 10036
`Tel: (212) 813-5900
`Email: jweinberger@frosszelnick.com
` lkittay@frosszelnick.com
`
`Attorneys for Opposer
`
`
`
`{F2334663.2 }
`
`6
`
`

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