Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA863255
`12/07/2017
`
`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
`
`BROWNSTONE MUSIC, INC.
`
`Corporation
`
`Citizenship
`
`New Jersey
`
`26 Windbeam Avenue
`Ringwood, NJ 07456
`UNITED STATES
`
`Adam D. Mandell
`Millen, White, Zelano & Branigan, P.C.
`2200 Clarendon Blvd., Ste 1400
`Arlington, VA 22201
`UNITED STATES
`Email: docketing@mwzb.com, cohen@mwzb.com, culver@mwzb.com, man-
`dell@mwzb.com
`Phone: 7032436333
`
`Applicant Information
`
`Application No
`
`87268915
`
`Publication date
`
`11/28/2017
`
`Opposition Filing
`Date
`
`Applicant
`
`12/07/2017
`
`Mark Scott
`100 Easy Street #757
`Carefree, AZ 85377
`UNITED STATES
`
`Opposition Peri-
`od Ends
`
`12/28/2017
`
`Goods/Services Affected by Opposition
`
`Class 025. First Use: 1989/04/01 First Use In Commerce: 1992/09/01
`All goods and services in the class are opposed, namely: Shirts sold at concerts and online related to
`a musical band
`
`Class 041. First Use: 1992/09/01 First Use In Commerce: 1992/09/01
`All goods and services in the class are opposed, namely: Entertainment, namely, live performances
`by a musical band
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Fraud on the USPTO
`
`In re Bose Corp., 580 F.3d 1240, 91 USPQ2d
`1938 (Fed. Cir. 2009)
`
`Other
`
`Lack of ownership
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Application
`
`87653692
`
`Application Date
`
`10/20/2017
`
`

`

`No.
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`TRIXTER
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 1986/04/06 First Use In Commerce: 1986/04/06
`Musical sound recordings; Musical videorecordings; unmounted pictures;
`poster;photographs; printed publications, namely, books, magazines, newslet-
`ters and bulletins all featuring entertainment, music and musical performances;
`music books; music and lyric sheets; magazines featuring musical facts about
`band members for fans; printed paper fliers featuring musical performances or
`sound recordings; song books; souvenir programs concerning musical perform-
`ances; tabbed notebooks; marking tabs; Clothing, namely, headwear; tops, bot-
`toms, shirts, polo shirts,T-shirts, sweatshirts; sweatpants; jackets, coats;
`pullovers; vests; underwear;shorts; scarves; belts; socks; long sleeve shirts and
`T-shirts; pants; fleece tops; thermal tops, jerseys; sweaters; tank tops; trousers;
`headbands, slippers; shoes; sneakers and sandals; caps, beanies and hats;
`bandanas; On-line retail store services featuring downloadable pre-recorded
`music and video, apparel, posters and tickets; Entertainment services, namely,
`presentation of live musical performances rendered by a musical group; provid-
`ing a website featuring entertainment information on a band and its tours, per-
`formances, appearances, news, a biography, non-downloadable audio and audi-
`ovisual recordings featuring music and musical-based entertainment, photo-
`graphs, and other entertainment information; fan clubs; Entertainment services,
`namely, providing non-downloadable playback of music via global communica-
`tions networks
`
`Attachments
`
`87653692#TMSN.png( bytes )
`Notice of Opposition.pdf(151789 bytes )
`
`Signature
`
`/adm/
`
`Name
`
`Date
`
`Adam D. Mandell
`
`12/07/2017
`
`

`

`
`BROWNSTONE MUSIC, INC.,
`
`
`Opposer,
`
`
` v.
`
`MARK SCOTT
`
`
`Applicant.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`Opposition No. ________________
`
`App. No. 87268915
`
`Mark:
`
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`BROWNSTONE MUSIC, INC. (“Opposer”), a New Jersey corporation with an
`
`address of 26 Windbeam Avenue, Ringwood, New Jersey 07456 believes that it will be
`
`damaged by the registration of the mark that is the subject of Application Ser. No.
`
`87268915 (the “Application”), and hereby opposes its registration on the following
`
`grounds:
`
`FACTUAL BACKGROUND:
`
`1.
`
`On information and belief, MARK SCOTT (“Applicant”) is an individual
`
`with an address of 100 Easy Street, #757, Carefree, Arizona 85377.
`
`2.
`
`Applicant seeks to register the mark
`
` for the goods
`
`“[s]hirts sold at concerts and online related to a musical band,” in International Class 25,
`
`and “[e]ntertainment, namely, live performances by a musical band,” in International
`
`Class 41, pursuant to a use-based application filed December 14, 2016.
`
`
`
`

`

`
`
`3.
`
`TRIXTER is a band formed around 1983 by Opposer’s principal, Steven J.
`
`Brown.
`
`4.
`
`Since at least as early as April 6, 1986, Opposer, by itself or through its
`
`predecessor-in-interest, has used the trademark TRIXTER, in either standard character
`
`form and/or stylized form, including
`
`, on the following goods and
`
`services:
`
`Musical sound recordings; Musical video recordings; unmounted pictures; poster;
`photographs; printed publications, namely, books, magazines, newsletters and bulletins
`all featuring entertainment, music and musical performances; music books; music and
`lyric sheets; magazines featuring musical facts about band members for fans; printed
`paper fliers featuring musical performances or sound recordings; song books; souvenir
`programs concerning musical performances; tabbed notebooks; marking tabs; Clothing,
`namely, headwear; tops, bottoms, shirts, polo shirts, T-shirts, sweatshirts; sweatpants;
`jackets, coats; pullovers; vests; underwear; shorts; scarves; belts; socks; long sleeve shirts
`and T-shirts; pants; fleece tops; thermal tops, jerseys; sweaters; tank tops; trousers;
`headbands, slippers; shoes; sneakers and sandals; caps, beanies and hats; bandanas; On-
`line retail store services featuring downloadable pre-recorded music and video, apparel,
`posters and tickets; Entertainment services, namely, presentation of live musical
`performances rendered by a musical group; providing a website featuring entertainment
`information on a band and its tours, performances, appearances, news, a biography, non-
`downloadable audio and audiovisual recordings featuring music and musical-based
`entertainment, photographs, and other entertainment information; fan clubs;
`Entertainment services, namely, providing non-downloadable playback of music via
`global communications networks
`
`(“Opposer’s Goods and Services”). The TRIXTER trademark, in either standard
`
`character form and/or stylized form, including
`
`, is hereinafter referred to
`
`as the “Mark”.
`
`5.
`
`In the early 1990’s, TRIXTER obtained major success in the so-called
`
`“hard rock” genre, touring in the United States and worldwide.
`
`
`
`

`

`
`
`6.
`
`Throughout the years, Opposer, through its principal, has controlled the
`
`nature and quality of the goods and services provided under the Mark by exerting undue
`
`influence on the band’s style of music in writing and producing its recordings.
`
`7.
`
`Indeed, the band’s biggest hits “Give it to Me Good,” “Surrender” and
`
`“One in a Million,” were written by Mr. Brown.
`
`8.
`
`Opposer, through its principal, also select what, where and when the band
`
`performs and its licensees and partners, including record labels and booking agents.
`
`9.
`
`Opposer, through its principal, has signed over one hundred (100)
`
`agreements for the band’s performance since 2008 alone.
`
`10.
`
`Opposer, through its principal, controls the band’s website at
`
`trixterrocks.com and social media, including the Facebook Page that Applicant submitted
`
`in alleging use of the Mark during the prosecution of the Application (these images also
`
`depict Mr. Brown).
`
`11.
`
`Opposer, through its principal, determines the constituent members of the
`
`band.
`
`12.
`
`In 2008, Mr. Brown invited Applicant to join him, P.J. Farley and Peter
`
`Loran Archibald (professionally known as “Pete Loran”) in performances and recordings
`
`under the Mark.
`
`13.
`
`Since at least this time, Opposer, by itself or through its principal, has
`
`retained Applicant’s services as an independent contractor.
`
`14.
`
`As the result of Opposer’s use of the Mark on various goods and services,
`
`Opposer has developed trademark rights in the Mark.
`
`
`
`

`

`
`
`15.
`
`Applicant does not, and has not ever, owned the Mark and/or been entitled
`
`to use the Mark in commerce.
`
`16.
`
`Opposer has never consented to Applicant applying for or securing
`
`registration of the Mark in Applicant’s name.
`
`17.
`
`Applicant’s use of the Mark will damage Opposer and registration of the
`
`Mark by Applicant will give color of exclusive statutory rights in the Mark to Applicant
`
`in derogation and violation of the rights of Opposer.
`
`COUNT 1: FRAUD IN THE APPLICATION
`
`18.
`
`Opposer realleges and incorporates herein by reference the allegations in
`
`all other paragraphs contained herein.
`
`19.
`
`Applicant signed the following declaration as part of the Application on
`
`December 14, 2016:
`
`The signatory believes that: if the applicant is filing the application under 15 U.S.C. §
`1051(a), the applicant is the owner of the trademark/service mark sought to be registered;
`the applicant is using the mark in commerce on or in connection with the goods/services
`in the application; the specimen(s) shows the mark as used on or in connection with the
`goods/services in the application; and/or if the applicant filed an application under 15
`U.S.C. § 1051(b), § 1126(d), and/or § 1126(e), the applicant is entitled to use the mark in
`commerce; the applicant has a bona fide intention, and is entitled, to use the mark in
`commerce on or in connection with the goods/services in the application. The signatory
`believes that to the best of the signatory's knowledge and belief, no other persons, except,
`if applicable, concurrent users, have the right to use the mark in commerce, either in the
`identical form or in such near resemblance as to be likely, when used on or in connection
`with the goods/services of such other persons, to cause confusion or mistake, or to
`deceive. The signatory being warned that willful false statements and the like are
`punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such
`willful false statements and the like may jeopardize the validity of the application or any
`registration resulting therefrom, declares that all statements made of his/her own
`knowledge are true and all statements made on information and belief are believed to be
`true.
`
`20.
`
`21.
`
`The foregoing declaration was signed by Mark Scott.
`
`Applicant was not at any relevant time the owner of the trademark/service
`
`
`
`mark sought to be registered.
`
`
`
`

`

`
`
`22.
`
`On information and belief, Applicant knew or should have known that it
`
`made false statements to the U.S. Patent and Trademark Office when Applicant alleged
`
`that Applicant owned the trademark/service mark sought to be registered.
`
`23.
`
`On information and belief, Applicant made the above declaration with the
`
`knowledge that the statement was false and in violation of 15 U.S.C. § 1051(a).
`
`24. On information and belief, the false declaration was made with the intent
`
`to induce authorized agents of the Trademark Office to approve the Application and grant
`
`Applicant registration, and reasonably relying on the truth of the statement, the
`
`Trademark Office did, in fact, approve the Application for publication.
`
`COUNT 2: LACK OF OWNERSHIP
`
`
`
`25.
`
`Opposer realleges and incorporates herein by reference the allegations in
`
`all other paragraphs contained herein.
`
`
`
`
`
`26.
`
`27.
`
`Opposer is the rightful owner of the Mark.
`
`Applicant was not at any relevant time the owner of the Mark or entitled to
`
`use the Mark.
`
`
`
`28.
`
`The Application for the Mark is void pursuant to Section 1 of the
`
`Trademark Act and Trademark Rule § 2.71(d) as the Application was filed and
`
`prosecuted by an entity other than the owner or an entity with exclusive rights to register
`
`the Mark.
`
`
`
`COUNT 3: LIKELIHOOD OF CONFUSION
`
`29.
`
`Opposer realleges and incorporates herein by reference the allegations in
`
`all other paragraphs contained herein.
`
`
`
`

`

`
`
`30.
`
`Opposer’s trademark rights in the Mark precede both the filing date of the
`
`Application and Applicant’s alleged dates of first use therein. Therefore, Opposer has
`
`prior and superior rights in this matter.
`
`31.
`
`Opposer’s Mark and the mark sought to be registered in the Application
`
`are identical.
`
`32.
`
`Opposer’s Goods and Services include the goods and services identified in
`
`the Application and are therefore identical in part.
`
`33.
`
`The mark sought to be registered in the Application, as applied to the
`
`goods and services identified in the Application, so resembles Opposer’s Mark as to be
`
`likely to cause confusion, mistake, or deception in violation of 15 U.S.C. § 1052(d).
`
`34.
`
`If Applicant is granted registration of the Application, it would obtain a
`
`prima facie exclusive right to use of the mark sought to be registered that would cause
`
`damage and injury to Opposer.
`
`
`
`WHEREFORE, Opposer requests that judgment be entered in Opposer’s favor against
`
`Applicant on all counts and that the Application be denied registration.
`
`
`
`
`
`
`
`
`
`
`
`
`
`Date: December 7, 2017
`
`
`
`
`
`
`By:
`
`BROWNSTONE MUSIC, INC.
`
`/adm/
`Adam D. Mandell
`Jeffrey R. Cohen
`Michael S. Culver
`Millen, White, Zelano & Branigan, P.C.
`2200 Clarendon Blvd., Suite 1400
`Tel: 703-243-6333
`Fax: 703-243-6410
`mandell@mwzb.com
`cohen@mwzb.com
`
`
`
`

`

`
`
`
`
`culver@mwzb.com
`
`Attorneys for Opposer
`
`
`
`
`
`
`
`