Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1297023
`07/12/2023
`
`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
`
`LEGO JURIS A/S
`
`Granted to date
`of previous ex-
`tension
`
`Address
`
`07/12/2023
`
`KOLDINGVEJ 2
`BILLUND, DK-7190
`DENMARK
`
`Attorney informa-
`tion
`
`LAURA POPP-ROSENBERG
`FROSS ZELNICK LEHRMAN & ZISSU, P.C.
`151 WEST 42ND ST.
`17TH FLOOR
`NEW YORK, NY 10036
`UNITED STATES
`Primary email: lpopp-rosenberg@fzlz.com
`Secondary email(s): ttabfiling@fzlz.com
`2128135900
`
`Docket no.
`
`LEGJ 2304472
`
`Applicant information
`
`Application no.
`
`97128906
`
`07/12/2023
`
`Opposition filing
`date
`
`Applicant
`
`Publication date
`
`03/14/2023
`
`Opposition period
`ends
`
`07/12/2023
`
`Ninja Zone, LLC
`1064 GREENWOOD SPRINGS BLVD
`GREENWOOD, IN 46143
`UNITED STATES
`
`Goods/services affected by opposition
`
`Class 027. First Use: Jan 31, 2017 First Use In Commerce: Jan 31, 2017
`All goods and services in the class are opposed, namely: Gymnastic mats and sports equipment
`mats
`
`Class 028. First Use: Jan 31, 2017 First Use In Commerce: Jan 31, 2017
`All goods and services in the class are opposed, namely: Gymnastic apparatus; game equipment,
`namely, three-dimensional modular pieces for assembly to resemble miniature terrain; sports equip-
`ment, namely, obstacles for use in urban sports similar to ninja sport, parkour, and free running;
`manually-operated exercise equipment for physical fitness purposes
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`
`ESTTA1297023
`07/12/2023
`
`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
`
`LEGO JURIS A/S
`
`Granted to date
`of previous ex-
`tension
`
`Address
`
`07/12/2023
`
`KOLDINGVEJ 2
`BILLUND, DK-7190
`DENMARK
`
`Attorney informa-
`tion
`
`LAURA POPP-ROSENBERG
`FROSS ZELNICK LEHRMAN & ZISSU, P.C.
`151 WEST 42ND ST.
`17TH FLOOR
`NEW YORK, NY 10036
`UNITED STATES
`Primary email: lpopp-rosenberg@fzlz.com
`Secondary email(s): ttabfiling@fzlz.com
`2128135900
`
`Docket no.
`
`LEGJ 2304472
`
`Applicant information
`
`Application no.
`
`97128906
`
`07/12/2023
`
`Opposition filing
`date
`
`Applicant
`
`Publication date
`
`03/14/2023
`
`Opposition period
`ends
`
`07/12/2023
`
`Ninja Zone, LLC
`1064 GREENWOOD SPRINGS BLVD
`GREENWOOD, IN 46143
`UNITED STATES
`
`Goods/services affected by opposition
`
`Class 027. First Use: Jan 31, 2017 First Use In Commerce: Jan 31, 2017
`All goods and services in the class are opposed, namely: Gymnastic mats and sports equipment
`mats
`
`Class 028. First Use: Jan 31, 2017 First Use In Commerce: Jan 31, 2017
`All goods and services in the class are opposed, namely: Gymnastic apparatus; game equipment,
`namely, three-dimensional modular pieces for assembly to resemble miniature terrain; sports equip-
`ment, namely, obstacles for use in urban sports similar to ninja sport, parkour, and free running;
`manually-operated exercise equipment for physical fitness purposes
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`
`
`Mark cited by opposer as basis for opposition
`
`U.S. application/ registration
`no.
`
`Register
`
`Registration date
`
`Mark
`
`Goods/services
`
`Application date
`
`NONE
`
`NONE
`
`NONE
`
`NONE
`
`logo consisting of a set of cartoon eyes with a serious expression ap-
`pearing in an irregular but symmetrical rectangular shape
`
`toys, games, keychains, bags, luggage tags, amusement park ser-
`vices, television series, DVDs, audio CDs, lights, clothing, party sup-
`plies, stickers, writing sets, books, and water bottles
`
`Attachments
`
`F5178747.pdf(427954 bytes )
`
`Signature
`
`/Laura Popp-Rosenberg/
`
`Name
`
`Date
`
`Laura Popp-Rosenberg
`
`07/12/2023
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`LEGO JURIS A/S,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`NINJA ZONE, LLC,
`
`
`
`
`
`
`
`
`
`
`
`
`Opposition No. ___________
`
`
`
`Opposer,
`
`v.
`
`
`
`
`
`Applicant.
`
`
`
`NOTICE OF OPPOSITION
`
`Opposer LEGO Juris A/S (“Opposer”) believes that it will be damaged by the issuance of
`
`a registration for the following trademark
`
`as applied for by NINJA ZONE LLC in Application Serial No. 97128906 and therefore opposes
`
`the same. As grounds for this opposition, Opposer, by its attorneys, Fross Zelnick Lehrman &
`
`
`
`Zissu, P.C., alleges as follows:
`
`A.
`
`Opposer and Its Ninja Eyes Mark
`
`FACTS
`
`1.
`
`Opposer is a Danish corporation with an address of Koldingvej 2, Billund, DK-
`
`7190, Denmark.
`
`2.
`
`Opposer owns the famous LEGO mark which is used in connection with toy
`
`bricks and toy brick construction sets, as well as with a vast array of additional products and
`
`services, including but not limited to figurines, games, apparel, jewelry, handbags, backpacks,
`
`{F5178744.1 }
`
`
`
`carrying cases, lunchboxes, storage cases, keychains, watches, party supplies, books, video
`
`games, television series, movies, and amusement park services.
`
`3.
`
`Among the figurines that Opposer sells, the iconic Minifigure figurine is probably
`
`the most well known, an example of which is shown below:
`
`
`
`LEGO® Minifigure toys, with its iconic shape, have been sold extensively worldwide for more than
`
`four decades and are produced in a variety of styles, with a wide range of clothing, decorations,
`
`facial expressions, hair, and accessories, and have included representations of construction workers,
`
`astronauts, farmers, race car drivers, and emergency workers, Santa Claus, Star Wars characters,
`
`and Harry Potter characters, to name just a few.
`
`4.
`
`Over the decades, Opposer has developed a number of lines of construction toy
`
`and Minifigure figurine products focused on certain themes. One of its longest running is the
`
`LEGO NINJAGO theme. Launched in 2011, the LEGO NINJAGO theme revolves around a
`
`group of teenage ninja and their fight against the forces of evil. Naturally, the teenage ninja
`
`characters are variations on the classic LEGO® Minifigure toy, e.g.:
`
`
`
`
`
`
`
`and appearing in cartoon form as follows:
`
`{F5178744.1 }
`
`2
`
`
`
`
`
`
`
`
`
`5.
`
`Opposer’s LEGO NINJAGO-themed products include not only construction sets
`
`and Minifigure toys, but also a television series spanning 11 seasons from 2011 to 2022, a new
`
`television series released in June 2023, a feature film released in 2017, specially-themed areas of
`
`LEGOLAND theme parks complete with LEGO NINJAGO-themed rides and other
`
`entertainment options, and a variety of merchandise ranging from clothing (including a
`
`collaboration with adidas) to party supplies to watches to pencils to gym bags and much, much
`
`more.
`
`6.
`
`In connection with its LEGO NINJAGO products, Opposer has long used a logo
`
`mark correlating to the face and eyes of the LEGO NINJAGO characters as visible through their
`
`headgear. This logo consists of a set of eyes with a serious expression appearing in an irregular
`
`but symmetrical rectangular shape (the “LEGO NINJAGO Logo”). The LEGO NINJAGO Logo
`
`has appeared on product packaging and elsewhere to designate authentic LEGO® NINJAGO
`
`merchandise. Goods and services offered under the LEGO NINJAGO Logo include at least toys,
`
`games, keychains, bags, luggage tags, amusement park services, television series, DVDs, audio
`
`CDs, lights, clothing, party supplies, stickers, writing sets, books, and water bottles.
`
`{F5178744.1 }
`
`3
`
`
`
`7.
`
`Examples of the LEGO NINGAGO Logo appearing on various items are shown
`
`below:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`{F5178744.1 }
`
`4
`
`
`
`
`
`8.
`
`Through years of extensive use of the LEGO NINJAGO Logo, and the success of
`
`the LEGO NINJAGO product and entertainment line, consumers have come to recognize the
`
`LEGO NINJAGO logo as exclusively identifying Opposer’s goods and services. As a result, the
`
`LEGO NINJAGO Logo has garnered strong trademark rights and represents enormous goodwill
`
`to Opposer.
`
`B.
`
`Applicant and Its Application
`
`9.
`
`Upon information and belief, and according to the online records of the United
`
`States Patent and Trademark Office (“USPTO”), applicant Ninja Zone, LLC (“Applicant”) is an
`
`Indiana limited liability company with an address of 1064 Greenwood Springs Blvd, Greenwood,
`
`Indiana 46143.
`
`10.
`
`Upon information and belief, and according to the online records of the USPTO,
`
`on November 17, 2021, Applicant filed with the USPTO Application Serial No. 97128906 (the
`
`“Application”) to register the following mark:
`
`(“Applicant’s Mark”).
`
`
`
`11.
`
`The Application covers “Gymnastic mats and sports equipment mats” in
`
`International Class 27 and “Gymnastic apparatus; game equipment, namely, three-dimensional
`
`{F5178744.1 }
`
`5
`
`
`
`modular pieces for assembly to resemble miniature terrain; sports equipment, namely, obstacles
`
`for use in urban sports similar to ninja sport, parkour, and free running; manually-operated
`
`exercise equipment for physical fitness purposes” in International Class 28.
`
`12.
`
`The Application was filed based on an allegation of use in commerce under
`
`Section 1(a) of the Lanham Act, 15 U.S.C. § 1051(a), with a claimed first-use-in-commerce date
`
`of January 31, 2017.
`
`13.
`
`Upon information and belief, when Applicant filed the Application, Applicant had
`
`actual knowledge of Opposer’s prior and exclusive rights in the LEGO NINJAGO Logo by
`
`virtue of Opposer’s extensive use and promotion of the mark.
`
`14.
`
`Applicant is not connected to Opposer in any way, and Opposer has not
`
`authorized Applicant to register or use Applicant’s Mark.
`
`FIRST GROUND FOR RELIEF:
`PRIORITY AND LIKELIHOOD OF CONFUSION UNDER 15 U.S.C. § 1052(d)
`
`
`
`15.
`
`Opposer repeats the allegations contained in paragraphs 1 through 14 as if fully
`
`set forth herein.
`
`16.
`
`Opposer’s rights in the LEGO NINJAGO Logo are prior and superior to any
`
`rights Applicant may claim in the Applicant’s Mark.
`
`17.
`
`The Applicant’s Mark is highly similar to Opposer’s LEGO NINJAGO Logo in
`
`appearance and commercial impression.
`
`18.
`
`Applicant seeks to register Applicant’s Mark for goods that are closely related to
`
`the goods and services offered by Opposer under the LEGO NINJAGO Logo and that consumers
`
`would believe would be offered under the LEGO NINJAGO Logo.
`
`19.
`
`Owing to the close similarity between the parties’ respective marks, and the
`
`relatedness of the parties’ respective goods, as well as other factors, consumers are likely to be
`
`{F5178744.1 }
`
`6
`
`
`
`deceived into falsely believing that the goods offered by Applicant under Applicant’s Mark
`
`originate from 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.
`
`20.
`
`Thus, registration of the proposed Applicant’s Mark as applied for in the
`
`Application is likely to cause confusion, to cause mistake, or to deceive the public into falsely
`
`believing that the goods offered by Applicant under the 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).
`
`21.
`
`As a result of the foregoing, registration of the Applicant’s Mark would be
`
`inconsistent with Opposer’s prior exclusive rights in the LEGO NINJAGO Logo and would
`
`threaten to destroy Opposer’s investment and goodwill in those marks. Opposer therefore will be
`
`injured by registration of the Applicant’s Mark.
`
`WHEREFORE, Opposer respectfully requests that this opposition be sustained and that
`
`the registration sought by Applicant in Application Serial No. 97128906 be refused.
`
`Dated: New York, New York
` July 12, 2023
`
`
`
`
`
`
`
`
`FROSS ZELNICK LEHRMAN & ZISSU, P.C.
`
`
`
`
`By: /Laura Popp-Rosenberg/
` Laura Popp-Rosenberg
`151 West 42nd St., 17th Floor
`New York, New York 10036
`Tel: (212) 813-5900
`Email: lpopp-rosenberg@fzlz.com
`
`
`
`Attorneys for Opposer
`
`{F5178744.1 }
`
`7
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
