ESTTA Tracking number:
`
`Filing date:
`
`ESTTA1314181
`10/05/2023
`
`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
`
`Motion Picture Association, Inc.
`
`Granted to date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`10/25/2023
`
`15301 VENTURA BLVD., BUILDING E
`SHERMAN OAKS, CA 91403
`UNITED STATES
`
`ROBERT S. WEISBEIN
`FOLEY & LARDNER LLP
`90 PARK AVENUE
`NEW YORK, NY 10016
`UNITED STATES
`Primary email: ipdocketing@foley.com
`Secondary email(s): rweisbein@foley.com, kcalifa@foley.com, mwits-
`man@foley.com, nquintero@foley.com
`212-682-7474
`
`Docket no.
`
`092969-7026
`
`Applicant information
`
`Application no.
`
`97344714
`
`Opposition filing
`date
`
`Applicant
`
`10/05/2023
`
`Burton, James
`303 PARKSTON AVENUE
`GREENVILLE, SC 29605
`UNITED STATES
`
`Goods/services affected by opposition
`
`Publication date
`
`06/27/2023
`
`Opposition period
`ends
`
`10/25/2023
`
`Class 025. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Clothing, namely, t-shirts, shirts, long-
`sleeved shirts, shorts, skirts, dresses, sweaters, hoodies, jackets, pants, blouses, leggings, tops, bot-
`toms, footwear, hats and caps being headwear
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`Trademark Act Sections 2 and 43(c)
`
`Marks cited by opposer as basis for opposition
`
`U.S. registration
`no.
`
`1439618
`
`Application date
`
`05/27/1986
`
`

`

`Register
`
`Principal
`
`Registration date
`
`05/12/1987
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`RATED G
`
`NONE
`
`Class B. First use: First Use: Mar 1970 First Use In Commerce: Mar 1970
`CERTIFICATION OF THE CONTENT OF ENTERTAINMENT SERVICES
`RENDERED THROUGH THE MEDIUM OF MOTION PICTURES
`
`U.S. registration
`no.
`
`1439617
`
`Register
`
`Principal
`
`Registration date
`
`05/12/1987
`
`Application date
`
`05/27/1986
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`RATED PG
`
`NONE
`
`Class B. First use: First Use: Feb 1972 First Use In Commerce: Feb 1972
`CERTIFICATION OF THE CONTENT OF ENTERTAINMENT SERVICES
`RENDERED THROUGH THE MEDIUM OF MOTION PICTURES
`
`U.S. registration
`no.
`
`1439619
`
`Register
`
`Principal
`
`Registration date
`
`05/12/1987
`
`Application date
`
`05/27/1986
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`RATED PG-13
`
`NONE
`
`Class B. First use: First Use: Aug 1984 First Use In Commerce: Aug 1984
`CERTIFICATION OF THE CONTENT OF ENTERTAINMENT SERVICES
`RENDERED THROUGH THE MEDIUM OF MOTION PICTURES
`
`U.S. registration
`no.
`
`1436926
`
`Register
`
`Principal
`
`Registration date
`
`04/14/1987
`
`Application date
`
`05/27/1986
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`RATED R
`
`NONE
`
`Class B. First use: First Use: Mar 1970 First Use In Commerce: Mar 1970
`ENTERTAINMENT SERVICES RENDERED THROUGH THE MEDIUM OF MO-
`TION PICTURES
`
`

`

`U.S. registration
`no.
`
`2619540
`
`Register
`
`Principal
`
`Registration date
`
`09/17/2002
`
`Application date
`
`04/05/2000
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`RATED NC-17
`
`NONE
`
`Class B. First use: First Use: Jan 1, 1991 First Use In Commerce: Jan 1, 1991
`ENTERTAINMENT SERVICES RENDERED THROUGH THE MEDIUM OF MO-
`TION PICTURES
`
`Attachments
`
`NOTICE OF OPPOSITION to US Appl. Serial No. 97344714 RATED
`LUX_MPA.pd f(435781 bytes )
`
`Signature
`
`/Matthew D. Witsman/
`
`Name
`
`Date
`
`Matthew D. Witsman
`
`10/05/2023
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Mark:
`Serial No.:
`Filed:
`Published:
`
`RATED LUX
`97/344,714
`April 3, 2022
`June 27, 2023
`
`MOTION PICTURE ASSOCIATION, INC.,
`
`Opposer,
`
`v.
`
`JAMES BURTON,
`
`Applicant.
`
`Opposition No.: _______________
`
`- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - x
`:
`:
`:
`:
`:
`:
`:
`:
`:
`:
`:
`- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - x
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`Motion Picture Association, Inc. 1 (“Opposer”), a New York not-for-profit corporation,
`
`with an address at 15301 Ventura Boulevard, Building E, Sherman Oaks, California 91403,
`
`believes that it will be damaged by and hereby opposes registration of the application of James
`
`Burton (“Applicant”) for registration of RATED LUX (“Applicant’s Mark”), Application Serial
`
`No. 97/344,714, filed on April 3, 2022, and published in the Official Gazette of June 27, 2023 (the
`
`“Application”). Opposer timely filed a request for a 90-day extension of time to oppose the
`
`Application, which was granted by the Trademark Trial and Appeal Board, thereby extending
`
`Opposer’s time to oppose up to and including October 25, 2023.
`
`As grounds for its opposition, Opposer alleges as follows:
`
`
`1 Prior to September 2019, the Motion Picture Association, Inc. was known as the Motion Picture Association of
`America, Inc. (“MPAA”).
`
`4863-1589-2754.2
`
`

`

`OPPOSER’S USE & REGISTRATION OF THE RATED MARKS
`
`1.
`
`Continuously since 1968, Opposer has, through its Classification and
`
`Rating Administration (CARA), administered a motion picture rating system. The purpose of this
`
`rating system is to provide advance information for parents to make judgments on movies they
`
`want their children to see or not to see, without thwarting the freedom of filmmakers to tell their
`
`stories without censorship or interference. Under this system, any motion picture may be
`
`submitted and rated according to such criteria as themes, language, nudity and sensuality, drug
`
`use, smoking, and violence, among others. Based upon these criteria, a film may be issued one of
`
`five ratings:
`
`G
`
`PG
`
`PG-13
`
`R
`
`General Audiences, All Ages Admitted
`
`Parental Guidance Suggested; Some Material May
`Not Be Suitable For Children
`
`Parents Strongly Cautioned; Some Material May Be
`Inappropriate For Children Under 13
`
`Restricted, Under 17 Requires Accompanying Parent
`or Guardian
`
`NC-17
`
`No One 17 and Under Admitted
`
`2.
`
`Continuously since long prior to the filing date of the Application, Opposer
`
`has used the rating symbols G, PG, PG-13, R and NC-17, with and without their explanatory
`
`legends, to certify motion pictures produced and distributed by others, according to their content.
`
`Those symbols and legends are certification marks owned by Opposer. The trade and public
`
`recognize those ratings symbols and legends as certifying motion pictures containing certain types
`
`of content.
`
`3.
`
`Continuously since long prior to the filing date of the Application, Opposer
`
`has used the rating symbols G, PG, PG-13, R and NC-17, with and without the word “RATED”
`
`
`
`
`
`2
`
`
`
`
`

`

`preceding the ratings symbol, and has acquired trademark rights in the following certification
`
`marks:
`
`Mark
`
`Appl. Date
`
`Appl. No.
`
`Reg. Date
`
`Reg. No.
`
`RATED G
`
`5/27/1986
`
`73/600,999
`
`5/12/1987
`
`1,439,618
`
`RATED PG
`
`5/27/1986
`
`73/600,847
`
`5/12/1987
`
`1,439,617
`
`RATED PG-13
`
`5/27/1986
`
`73/601,053
`
`5/12/1987
`
`1,439,619
`
`RATED R
`
`5/27/1986
`
`73/601,001
`
`4/14/1987
`
`1,436,926
`
`RATED NC-17
`
`4/5/2000
`
`76/019,073
`
`9/17/2002
`
`2,619,540
`
`Each of these registrations is incontestable, valid, and in full force and effect. The marks
`
`described in this paragraph, which are certification marks owned exclusively by Opposer, and
`
`which the trade and public recognize as certifying motion pictures containing certain content, shall
`
`be referred to hereafter as Opposer’s “RATED Marks.” Attached as Exhibit A to this Notice of
`
`Opposition, and incorporated herein, are printouts from the USPTO database showing the current
`
`status and title of each of the RATED Marks relied upon in this opposition.
`
`4.
`
`Opposer’s RATED Marks are extremely well known among the general
`
`public.
`
`5.
`
`Through CARA, Opposer has rated more than 30,000 films since 1968.
`
`Opposer issues rating certificates on the condition that all advertising and publicity material for
`
`the rated motion picture conform to Opposer’s Advertising Administration Rules. These Rules
`
`require that all motion picture advertising and publicity materials, including posters, lobby cards,
`
`and media advertising, bear the appropriate rating symbol in proper form. In addition, Opposer’s
`
`RATED Marks typically precede movie trailers and feature films shown in movie theaters in the
`
`United States. Furthermore, home video versions of rated motion pictures, and motion pictures
`
`broadcast or streamed through television, cable and authorized streaming services, must bear the
`
`
`
`
`
`3
`
`
`
`
`

`

`appropriate rating symbol. Consequently, Opposer’s RATED Marks have been exposed to the
`
`general public countless times.
`
`6.
`
`As a result of the activities described above, Opposer’s RATED Marks have
`
`become famous as defined under 15 U.S.C. § 43(c)(1), have acquired great recognition and
`
`renown, and the relevant trade and public have come to recognize the RATED Marks as signifying
`
`Opposer exclusively.
`
`7.
`
`The fame of Opposer’s RATED R mark (Registration No. 1,436,926) was
`
`acknowledged by the Trademark Trial and Appeal Board (“TTAB”) in its decision sustaining an
`
`opposition to RATED R SPORTSWEAR for wearing apparel, in Motion Picture Association of
`
`America, Inc. v. Respect Sportswear, Inc., Opposition No. 91153141, 83 U.S.P.Q.2d 1555 (TTAB
`
`2007) (finding the RATED R mark famous for purposes of the fifth du Pont factor and according
`
`the fame of the mark dominant weight in the TTAB’s likelihood of confusion analysis) (the
`
`“Respect Sportswear Case”).
`
`THE APPLICATION FOR THE APPLIED-FOR MARK
`
`8.
`
`Applicant is seeking registration of the mark RATED LUX, in International
`
`Class 25 for “Clothing, namely, t-shirts, shirts, long-sleeved shirts, shorts, skirts, dresses,
`
`sweaters, hoodies, jackets, pants, blouses, leggings, tops, bottoms, footwear, hats and caps being
`
`headwear” (“Applicant’s Goods”).
`
`9.
`
`Applicant’s Mark combines the word “RATED” with the word “LUX”
`
`thereby following the same manner of construction as Opposer’s Rated Marks. While the second
`
`element of Applicant’s Mark is the three-letter word “Lux” (an apparent abbreviation of the word
`
`“LUXury” or “LUXurious”), rather than one of Opposer’s letter or alpha numeric ratings marks,
`
`the commercial impression of Applicant’s Mark is highly similar to that of Opposer’s Rated Marks,
`
`
`
`
`
`4
`
`
`
`
`

`

`namely, the word “RATED” followed by a short second element. In both Opposer’s Rated Marks
`
`and Applicant’s Mark the word “Rated” conveys that the products have been reviewed and rated
`
`and the second element connotes the rating level of the goods. Applicant’s Mark, therefore, is
`
`likely to cause confusion with the Rated Marks given the similarity in sight, sound and meaning.
`
`10.
`
`As such Applicant’s Mark is substantially similar in sight, sound, and
`
`meaning to Opposer’s RATED Marks.
`
`11. Motion pictures and motion picture producers often promote their films by
`
`wearing apparel. Based on this Board’s holding in the Respect Sportswear Case, the goods of
`
`Applicant and the services certified by Opposer are related. In addition, there are numerous
`
`registrations for trademarks covering both motion picture production or entertainment services and
`
`wearing apparel. Thus, Applicant’s Goods and Opposer’s certification services are related.
`
`12.
`
`The relatedness of Applicant’s Goods and Opposer’s certification services
`
`is reinforced further because Applicant’s Goods intentionally call to mind Opposer’s certification
`
`system. Upon information and belief, Applicant uses Applicant’s Mark to indicate the perceived
`
`quality of Applicant’s Goods and it is therefore reasonable to assume the Applicant adopted the
`
`mark believing it to be a clever play on Opposer’s RATED Marks.
`
`13.
`
`Due to the similarities in the respective parties’ marks and goods and
`
`services and due to the fame of Opposer’s RATED Marks, the relevant consumers are likely to
`
`believe, erroneously, that Applicant’s Goods are certified by, licensed by, rated by, or are
`
`otherwise affiliated with Opposer and its ratings system.
`
`14.
`
`Opposer has no control over the nature or the quality of the goods that will
`
`be offered under Applicant’s Mark, and any fault found with Applicant’s Goods may impair the
`
`goodwill and reputation afforded to Opposer’s RATED Marks, to the detriment of Opposer.
`
`
`
`
`
`5
`
`
`
`
`

`

`15.
`
`Opposer’s RATED Marks were famous prior to the date on which the
`
`Application was filed.
`
`16.
`
`If permitted to register, Applicant’s RATED LUX mark is likely to cause
`
`confusion as well as dilute the distinctiveness of Opposer’s RATED Marks.
`
`CLAIM I - LIKELIHOOD OF CONFUSION - 15 U.S.C. §1052(d)
`
`17.
`
`Opposer repeats and realleges the allegations of paragraphs 1 through 16 as
`
`if fully restated here.
`
`18.
`
`Applicant’s Mark as applied to Applicant’s Goods is so similar to Opposer’s
`
`RATED Marks as to be likely to create confusion, mistake or deception in violation of Section
`
`2(d) of the Trademark Act, all to the damage of Opposer.
`
`CLAIM II – DILUTION – 15 U.S.C. §1125(c)
`
`19.
`
`Opposer repeats and realleges the allegations of paragraphs 1 through 18 as
`
`if fully restated here.
`
`20.
`
`Applicant’s claimed trademark dilutes the distinctive quality of Opposer’s
`
`RATED Marks by blurring, in violation of Section 43(c)(1) of the Trademark Act, all to the
`
`damage of Opposer.
`
`WHEREFORE, Opposer believes that it will be damaged by the registration of
`
`Applicant’s Mark and prays that such registration be denied. The required fee of $600.00 is being
`
`submitted with this Notice of Opposition. Please charge any additional costs to our Deposit
`
`Account 19-0741.
`
`
`
`
`
`6
`
`
`
`
`

`

`
`
`
`
`
`Dated: October 2, 2023
`
`
`
`
`
`
`Respectfully submitted,
`
`FOLEY & LARDNER LLP
`
`By: /s/ Matthew D. Witsman
`
`Robert S. Weisbein, Esq.
`Katherine P. Califa, Esq.
`Matthew D. Witsman, Esq.
`FOLEY & LARDNER LLP
`90 Park Avenue
`New York, New York 10016
`Telephone: (212) 682-7474
`Facsimile: (212) 687-2329
`Attorneys for Applicant
`Motion Picture Association, Inc.
`
`
`
`
`
`7
`
`
`
`
`

`

`Exhibit A
`Exhibit A
`
`

`

`Prior U.S. Cl.: B
`
`Reg. No. 1,439,618
`United States Patent and Trademark Office_Registered May 12, 1987
`
`CERTIFICATION MARK
`PRINCIPAL REGISTER
`
`RATED G
`
`MOTION PICTURE ASSOCIATION OF AMER-
`ICA, INC. (NEW YORK NON-PROFIT CORPO-
`RATION)
`1133 AVENUE OF THE AMERICAS
`NEW YORK,NY 10036
`
`FOR: CERTIFICATION OF THE CONTENT
`OF ENTERTAINMENT SERVICES RENDERED
`THROUGH THE MEDIUM OF MOTION PIC-
`TURES, IN CLASSB (U.S. CL.B).
`FIRST USE
`3-0-1970;
`IN COMMERCE
`3-0-1970.
`
`OWNER OF U.S. REG. NOS. 959,579 AND
`1,169,743.
`
`NO CLAIM IS MADE TO THE EXCLUSIVE
`RIGHT TO USE “RATED”, APART FROM THE
`MARK AS SHOWN.
`
`SER. NO.600,999, FILED 5-27-1986.
`
`ROBERT PEVERADA, EXAMINING ATTOR-
`NEY
`
`

`

`Generated on: This page was generated by TSDR on 2020-04-07 10:24:26 EDT
`
`Mark: RATED G
`
`US Serial Number: 73600999
`
`US Registration
`Number:
`
`1439618
`
`Register: Principal
`
`Mark Type: Certification Mark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`May 27, 1986
`
`Registration Date: May 12, 1987
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status: The registration has been renewed.
`
`Status Date: Jan. 19, 2018
`
`Publication Date: Feb. 17, 1987
`
` 
`
`Mark Information
`
`Mark Literal
`Elements:
`
`RATED G
`
`Standard Character
`Claim:
`
`No
`
`Mark Drawing
`Type:
`
`1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
`
`Disclaimer: "RATED"
`
`Related Properties Information
`
`Claimed Ownership
`of US
`Registrations:
`
`0959579, 1169743
`
`Goods and Services
`
`Note:
`The following symbols indicate that the registrant/owner has amended the goods/services:
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: CERTIFICATION OF THE CONTENT OF ENTERTAINMENT SERVICES RENDERED THROUGH THE MEDIUM OF MOTION
`PICTURES
`
`International
`Class(es):
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: Mar. 1970
`
`U.S Class(es): B - Primary Class
`
`Use in Commerce: Mar. 1970
`
`Basis Information (Case Level)
`
`

`

`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Filed No Basis: No
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: MOTION PICTURE ASSOCIATION, INC.
`
`Owner Address: 15301 VENTURA BLVD., BUILDING E
`SHERMAN OAKS, CALIFORNIA UNITED STATES 91403
`
`Legal Entity Type: NON-PROFIT CORPORATION
`
`State or Country
`Where Organized:
`
`NEW YORK
`
`Attorney/Correspondence Information
`
`Attorney Name: Robert S. Weisbein
`
`Docket Number: 092969-3022
`
`Attorney of Record
`
`Attorney Primary
`Email Address:
`
`IPdocketing@foley.com
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`Robert S. Weisbein
`Foley & Lardner LLP
`3000 K Street, N.W., Suite 600
`Washington Harbour
`Washington, DISTRICT OF COLUMBIA UNITED STATES 20007-5109
`
`Phone: 212-338-3528
`
`Fax: 202.672.5399
`
`Correspondent e-
`mail:
`
`IPdocketing@foley.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`Oct. 30, 2019
`
`AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP
`
`Jan. 19, 2018
`
`NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
`
`Jan. 19, 2018
`
`REGISTERED AND RENEWED (SECOND RENEWAL - 10 YRS)
`
`Jan. 19, 2018
`
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`
`Jan. 03, 2018
`
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`
`Dec. 11, 2017
`
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`
`Dec. 09, 2017
`
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`
`Nov. 13, 2017
`
`TEAS SECTION 8 & 9 RECEIVED
`
`May 12, 2016
`
`COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED
`
`Jan. 22, 2009
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`
`Jan. 22, 2009
`
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`
`May 25, 2007
`
`REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS)
`
`May 25, 2007
`
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`
`Apr. 03, 2007
`
`REGISTERED - COMBINED SECTION 8 (10-YR) & SEC. 9 FILED
`
`Apr. 03, 2007
`
`TEAS SECTION 8 & 9 RECEIVED
`
`Nov. 08, 2006
`
`CASE FILE IN TICRS
`
`Nov. 04, 1992
`
`REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
`
`Aug. 17, 1992
`
`REGISTERED - SEC. 8 (6-YR) & SEC. 15 FILED
`
`May 12, 1987
`
`REGISTERED-PRINCIPAL REGISTER
`
`Feb. 17, 1987
`
`PUBLISHED FOR OPPOSITION
`
`Jan. 18, 1987
`
`NOTICE OF PUBLICATION
`
`Nov. 25, 1986
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`Proceeding
`Number
`
`81878
`
`81878
`
`81878
`
`78049
`
`76873
`
`61619
`
`

`

`Nov. 14, 1986
`
`EXAMINERS AMENDMENT MAILED
`
`Oct. 01, 1986
`
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`
`Jul. 29, 1986
`
`NON-FINAL ACTION MAILED
`TM Staff and Location Information
`
`Current Location: GENERIC WEB UPDATE
`
`Date in Location: Jan. 19, 2018
`
`Proceedings
`
`TM Staff Information - None
`
`File Location
`
`Summary
`
`Number of
`Proceedings:
`
`4
`
`Proceeding
`Number:
`
`91253681
`
`Status: Suspended
`
`Interlocutory
`Attorney:
`
`SHANNA K SANDERS
`
`Name: Justin L. Miser
`
`JUSTIN L. MISER
`4811 EUBANK ST
`ALEXANDRIA VA , 22309
`
`justin.miser@outlook.com
`
`Correspondent
`Address:
`
`Correspondent e-
`mail:
`
`Associated marks
`
`Mark
`
`RATED ARCADE
`
`Type of Proceeding: Opposition
`
` 
`
`Filing Date: Jan 27, 2020
`
`Status Date: Mar 17, 2020
`
`Defendant
`
`Application Status
`
`Opposition Pending
`
`Plaintiff(s)
`
`Serial
`Number
`
`88394848
`
`Registration
`Number
`
`Name: MOTION PICTURE ASSOCIATION, INC.
`
`Correspondent
`Address:
`
`ROBERT S. WEISBEIN AND KATHERINE P. CALIFA
`FOLEY & LARDNER LLP
`3000 K STREET, N.W., SIXTH FLOOR
`WASHINGTON DC UNITED STATES , 20007
`
`Correspondent e-
`mail:
`
`Associated marks
`
`Mark
`
`RATED G
`
`RATED PG
`
`RATED PG-13
`
`RATED R
`
`RATED NC-17
`
`rweisbein@foley.com , kcalifa@foley.com , ipdocketing@foley.com , sschoepfer@foley.com
`
`Application Status
`
`REGISTERED AND RENEWED
`
`REGISTERED AND RENEWED
`
`REGISTERED AND RENEWED
`
`REGISTERED AND RENEWED
`
`REGISTERED AND RENEWED
`
`Prosecution History
`
`Serial
`Number
`
`Registration
`Number
`
`73600999
`
`73600847
`
`73601053
`
`73601001
`
`76019073
`
`1439618
`
`1439617
`
`1439619
`
`1436926
`
`2619540
`
`Entry Number
`
`History Text
`
`FILED AND FEE
`
`NOTICE AND TRIAL DATES SENT; ANSWER DUE:
`
`INSTITUTED
`
`NOTICE OF DEFAULT
`
`1
`
`2
`
`3
`
`4
`
`Date
`
`Jan 27, 2020
`
`Jan 27, 2020
`
`Jan 27, 2020
`
`Mar 17, 2020
`
`Due Date
`
`Mar 07, 2020
`
`Proceeding
`Number:
`
`91240448
`
`Type of Proceeding: Opposition
`
`Filing Date: Apr 04, 2018
`
`

`

`Status: Terminated
`
`Status Date: Jan 10, 2019
`
`Interlocutory
`Attorney:
`
`ANN LINNEHAN VOGLER
`
`Name: Tye Gates and Money League Acquisitions
`
`Correspondent
`Address:
`
`TYE GATES AND MONEY LEAGUE ACQUISITIONS
`9491 E FOOTHILL BLVD UNIT C
`RANCHO CUCAMONGA CA UNITED STATES , 91730
`
`Defendant
`
`moneyleagueacquisitions@gmail.com , tgates@moneyacquisitions.com , mrtgates@moneyacquisitions.com
`
`Correspondent e-
`mail:
`
`Associated marks
`
`Mark
`
`Application Status
`
`Serial
`Number
`
`87538946
`
`Registration
`Number
`
`RATED F FOR FUNNY
`
`Abandoned - After Inter-Partes Decision
`
`Plaintiff(s)
`
`Name: Motion Picture Association of America, Inc.
`
`Correspondent
`Address:
`
`ROBERT S WEISBEIN
`FOLEY & LARDNER LLP
`90 PARK AVENUE
`NEW YORK NY UNITED STATES , 10016
`
`Correspondent e-
`mail:
`
`IPdocketing@foley.com , rweisbein@foley.com , wwalker@foley.com , sschoepfer@foley.com , econnolly@foley.com ,
`mfry@foley.com , prodriguez@foley.com , nquintero@foley.com
`
`Associated marks
`
`Mark
`
`RATED G
`
`RATED NC-17
`
`RATED PG
`
`RATED PG-13
`
`RATED R
`
`Application Status
`
`REGISTERED AND RENEWED
`
`REGISTERED AND RENEWED
`
`REGISTERED AND RENEWED
`
`REGISTERED AND RENEWED
`
`REGISTERED AND RENEWED
`
`Prosecution History
`
`Serial
`Number
`
`Registration
`Number
`
`73600999
`
`76019073
`
`73600847
`
`73601053
`
`73601001
`
`1439618
`
`2619540
`
`1439617
`
`1439619
`
`1436926
`
`Due Date
`
`Entry Number
`
`History Text
`
`FILED AND FEE
`
`NOTICE AND TRIAL DATES SENT; ANSWER DUE:
`
`PENDING, INSTITUTED
`
`ANSWER
`
`P MOT TO COMPEL DISCOVERY
`
`SUSP PEND DISP OF OUTSTNDNG MOT
`
`TRIAL DATES RESET
`
`P MOT FOR DISCOVERY SANCTIONS
`
`SUSP PEND DISP OF OUTSTNDNG MOT
`
`BD DECISION: OPP SUSTAINED
`
`TERMINATED
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`May 14, 2018
`
`Date
`
`Apr 04, 2018
`
`Apr 04, 2018
`
`Apr 04, 2018
`
`May 09, 2018
`
`Aug 14, 2018
`
`Aug 15, 2018
`
`Sep 17, 2018
`
`Nov 28, 2018
`
`Dec 03, 2018
`
`Jan 10, 2019
`
`Jan 10, 2019
`
`Proceeding
`Number:
`
`76309541
`
`Status: Terminated
`
`Interlocutory
`Attorney:
`
`Name: G Rated
`
`Type of Proceeding: Extension of Time
`
`Filing Date: Oct 02, 2002
`
`Status Date: Oct 02, 2002
`
`Defendant
`
`Correspondent
`Address:
`
`CHENNELLA QUEEN
`7829 GROVE RIDGE DR
`HOUSTON TX UNITED STATES , 77061-1406
`
`Associated marks
`
`Serial
`
`Registration
`
`

`

`Mark
`
`RATED G
`
`Application Status
`
`Number
`
`Number
`
`Abandoned - After Inter-Partes Decision
`
`76309541
`
`Potential Opposer(s)
`
`Name: Motion Picture Association of America
`
`Correspondent
`Address:
`
`Andrew Baum
`Darby & Darby P.C.
`P.O. Box 5257
`New York NY UNITED STATES , 10150-5257
`
`Name: MOTION PICTURE ASSOCIATION OF AMERICA, I NC.
`
`Correspondent
`Address:
`
`ANDREW BAUM
`DARBY & DARBY P.C.
`P.O. Box 5257
`NEW YORK NY UNITED STATES , 10150-5257
`
`Associated marks
`
`Mark
`
`RATED G
`
`Application Status
`
`Serial
`Number
`
`Registration
`Number
`
`REGISTERED AND RENEWED
`
`73600999
`
`1439618
`
`Prosecution History
`
`Entry Number
`
`History Text
`
`1
`
`2
`
`INCOMING - EXT TIME TO OPPOSE FILED
`
`EXTENSION OF TIME GRANTED
`
`Date
`
`Aug 01, 2002
`
`Oct 02, 2002
`
`Due Date
`
`Proceeding
`Number:
`
`91153047
`
`Status: Terminated
`
`Interlocutory
`Attorney:
`
`ELIZABETH A DUNN
`
`Type of Proceeding: Opposition
`
`Filing Date: Aug 30, 2002
`
`Status Date: Dec 12, 2003
`
`Name: G RATED
`
`Correspondent
`Address:
`
`CHENNELLA QUEEN
`7829 GROVE RIDGE DR
`HOUSTON TX UNITED STATES , 77061-1406
`
`Defendant
`
`Associated marks
`
`Mark
`
`RATED G
`
`Application Status
`
`Abandoned - After Inter-Partes Decision
`
`Plaintiff(s)
`
`Serial
`Number
`
`76309541
`
`Registration
`Number
`
`Name: MOTION PICTURE ASSOCIATION OF AMERICA, I NC.
`
`Correspondent
`Address:
`
`ANDREW BAUM
`DARBY & DARBY P.C.
`P.O. BOX 5257
`NEW YORK NY UNITED STATES , 10150-5257
`
`Associated marks
`
`Mark
`
`RATED G
`
`Application Status
`
`Serial
`Number
`
`Registration
`Number
`
`REGISTERED AND RENEWED
`
`73600999
`
`1439618
`
`Prosecution History
`
`Entry Number
`
`History Text
`
`FILED AND FEE
`
`NOTICE AND TRIAL DATES SENT; ANSWER DUE:
`
`PENDING, INSTITUTED
`
`NOTICE OF DEFAULT
`
`Def's communication
`
`DELETE ENTRY
`
`Notice of default set aside; Def allowed 30 days to answer which complies w/
`Fed.R.Civ.P. 8
`
`ANSWER
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`Due Date
`
`Nov 11, 2002
`
`Date
`
`Aug 30, 2002
`
`Oct 02, 2002
`
`Oct 02, 2002
`
`Jan 31, 2003
`
`Apr 21, 2003
`
`Jul 02, 2003
`
`Jul 02, 2003
`
`Jul 28, 2003
`
`

`

`9
`
`10
`
`11
`
`PLS MOT FOR DEFAULT JUDGMENT
`
`BOARD'S DECISION: SUSTAINED
`
`TERMINATED
`
`Jul 31, 2003
`
`Dec 12, 2003
`
`Dec 12, 2003
`
`

`

`a
`
`Prior U.S. Cl.: B
`
`Reg. No. 1,439,617
`United States Patent and Trademark Office registered May 12, 1987
`
`CERTIFICATION MARK
`PRINCIPAL REGISTER
`
`RATED PG
`
`MOTION PICTURE ASSOCIATION OF AMER-
`ICA, INC. (NEW YORK NON-PROFIT CORPO-
`RATION)
`1133 AVENUE OF THE AMERICAS
`NEW YORK,NY 10036
`
`FOR: CERTIFICATION OF THE CONTENT
`OF ENTERTAINMENT SERVICES RENDERED
`THROUGH THE MEDIUM OF MOTION PIC-
`TURES, IN CLASSB (U.S. CL. B).
`IN COMMERCE
`FIRST USE
`2-0-1972;
`2-0-1972.
`
`OWNEROFU.S. REG. NOS. 959,581, 1,136,496,
`AND1,169,742.
`
`NO CLAIM IS MADE TO THE EXCLUSIVE
`RIGHT TO USE “RATED”, APART FROM THE
`MARK AS SHOWN.
`
`SER. NO. 600,847, FILED 5-27-1986.
`
`ROBERT PEVERADA, EXAMINING ATTOR-
`NEY
`
`

`

`Generated on: This page was generated by TSDR on 2020-04-07 10:24:53 EDT
`
`Mark: RATED PG
`
`US Serial Number: 73600847
`
`US Registration
`Number:
`
`1439617
`
`Register: Principal
`
`Mark Type: Certification Mark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`May 27, 1986
`
`Registration Date: May 12, 1987
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status: The registration has been renewed.
`
`Status Date: Jan. 31, 2018
`
`Publication Date: Feb. 17, 1987
`
` 
`
`Mark Information
`
`Mark Literal
`Elements:
`
`RATED PG
`
`Standard Character
`Claim:
`
`No
`
`Mark Drawing
`Type:
`
`1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
`
`Disclaimer: "RATED"
`
`Related Properties Information
`
`Claimed Ownership
`of US
`Registrations:
`
`0959581, 1136496, 1169742
`
`Goods and Services
`
`Note:
`The following symbols indicate that the registrant/owner has amended the goods/services:
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: CERTIFICATION OF THE CONTENT OF ENTERTAINMENT SERVICES RENDERED THROUGH THE MEDIUM OF MOTION
`PICTURES
`
`International
`Class(es):
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: Feb. 1972
`
`U.S Class(es): B - Primary Class
`
`Use in Commerce: Feb. 1972
`
`Basis Information (Case Level)
`
`

`

`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Filed No Basis: No
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: MOTION PICTURE ASSOCIATION, INC.
`
`Owner Address: 15301 VENTURA BLVD., BUILDING E
`SHERMAN OAKS, CALIFORNIA UNITED STATES 91403
`
`Legal Entity Type: NON-PROFIT CORPORATION
`
`State or Country
`Where Organized:
`
`NEW YORK
`
`Attorney/Correspondence Information
`
`Attorney Name: Robert S. Weisbein
`
`Docket Number: 092969-3024
`
`Attorney of Record
`
`Attorney Primary
`Email Address:
`
`IPdocketing@foley.com
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`Robert S. Weisbein
`Foley & Lardner LLP
`3000 K Street, N.W., Suite 600
`Washington Harbour
`Washington, DISTRICT OF COLUMBIA UNITED STATES 20007-5109
`
`Phone: 212-338-3528
`
`Fax: 212-687-2329
`
`Correspondent e-
`mail:
`
`IPdocketing@foley.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`Oct. 30, 2019
`
`AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP
`
`Jan. 31, 2018
`
`NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
`
`Jan. 31, 2018
`
`REGISTERED AND RENEWED (SECOND RENEWAL - 10 YRS)
`
`Jan. 31, 2018
`
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`
`Jan. 24, 2018
`
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`
`Dec. 11, 2017
`
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`
`Dec. 09, 2017
`
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`
`Nov. 13, 2017
`
`TEAS SECTION 8 & 9 RECEIVED
`
`May 12, 2016
`
`COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED
`
`Jan. 22, 2009
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`
`Jan. 22, 2009
`
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`
`May 10, 2007
`
`REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS)
`
`May 10, 2007
`
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`
`May 03, 2007
`
`ASSIGNED TO PARALEGAL
`
`Apr. 03, 2007
`
`REGISTERED - COMBINED SECTION 8 (10-YR) & SEC. 9 FILED
`
`Apr. 03, 2007
`
`TEAS SECTION 8 & 9 RECEIVED
`
`Nov. 08, 2006
`
`CASE FILE IN TICRS
`
`Nov. 03, 1992
`
`REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
`
`Aug. 17, 1992
`
`REGISTERED - SEC. 8 (6-YR) & SEC. 15 FILED
`
`May 12, 1987
`
`REGISTERED-PRINCIPAL REGISTER
`
`Feb. 17, 1987
`
`PUBLISHED FOR OPPOSITION
`
`Jan. 18, 1987
`
`NOTICE OF PUBLICATION
`
`Proceeding
`Number
`
`71359
`
`71359
`
`71359
`
`73373
`
`76873
`
`68335
`
`68335
`
`

`

`Nov. 25, 1986
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`Nov. 14, 1986
`
`EXAMINERS AMENDMENT MAILED
`
`Oct. 01, 1986
`
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`
`Jul. 29, 1986
`
`NON-FINAL ACTION MAILED
`TM Staff and Location Information
`
`Current Location: GENERIC WEB UPDATE
`
`Date in Location: Jan. 31, 2018
`
`Proceedings
`
`TM Staff Information - None
`
`File Location
`
`Summary
`
`Number of
`Proceedings:
`
`3
`
`Proceeding
`Number:
`
`91253681
`
`Status: Suspended
`
`Interlocutory
`Attorney:
`
`SHANNA K SANDERS
`
`Name: Justin L. Miser
`
`JUSTIN L. MISER
`4811 EUBANK ST
`ALEXANDRIA VA , 22309
`
`justin.miser@outlook.com
`
`Correspondent
`Address:
`
`Correspondent e-
`mail:
`
`Associated marks
`
`Mark
`
`RATED ARCADE
`
`Type of Proceeding: Opposition
`
` 
`
`Filing Date: Jan 27, 2020
`
`Status Date: Mar 17, 2020
`
`Defendant
`
`Application Status
`
`Opposition Pending
`
`Plaintiff(s)
`
`Serial
`Number
`
`88394848
`
`Registration
`Number
`
`Name: MOTION PICTURE ASSOCIATION, INC.
`
`Correspondent
`Address:
`
`ROBERT S. WEISBEIN AND KATHERINE P. CALIFA
`FOLEY & LARDNER LLP
`3000 K STREET, N.W., SIXTH FLOOR
`WASHINGTON DC UNITED STATES , 20007
`
`Correspondent e-
`mail:
`
`Associated marks
`
`Mark
`
`RATED G
`
`RATED PG
`
`RATED PG-13
`
`RATED R
`
`RATED NC-17
`
`rweisbein@foley.com , kcalifa@foley.com , ipdocketing@foley.com , sschoepfer@foley.com
`
`Application Status
`
`REGISTERED AND RENEWED
`
`REGISTERED AND RENEWED
`
`REGISTERED AND RENEWED
`
`REGISTERED AND RENEWED
`
`REGISTERED AND RENEWED
`
`Prosecution History
`
`1
`
`2
`
`3
`
`4
`
`Entry Number
`
`History Text
`
`FILED AND FEE
`
`NOTICE AND TRIAL DATES SENT; ANSWER DUE:
`
`INSTITUTED
`
`NOTICE OF DEFAULT
`
`Type of Proceeding: Opposition
`
`Serial
`Number
`
`Registration
`Number
`
`73600999
`
`73600847
`
`73601053
`
`73601001
`
`76019073
`
`1439618
`
`1439617
`
`1439619
`
`1436926
`
`2619540
`
`Date
`
`Jan 27, 2020
`
`Jan 27, 2020
`
`Jan 27, 2020
`
`Mar 17, 2020
`
`Due Date
`
`Mar 07, 2020
`
`

`

`Proceeding
`Number:
`
`91240448
`
`Status: Terminated
`
`Interlocutory
`Attorney:
`
`ANN LINNEHAN VOGLER
`
`Filing Date: Apr 04, 2018
`
`Status Date: Jan 10, 2019
`
`Name: Tye Gates and Money League Acquisitions
`
`Correspondent
`Address:
`
`TYE GATES AND MONEY LEAGUE ACQUISITIONS
`9491 E FOOTHILL BLVD UNIT C
`RANCHO CUCAMONGA CA UNITED STATES , 91730
`
`Defendant
`
`moneyleagueacquisitions@gmail.com , tgates@moneyacquisitions.com , mrtgates@moneyacquisitions.com
`
`Correspondent e-
`mail:
`
`Associated marks
`
`Mark
`
`Application Status
`
`Serial
`Number
`
`87538946
`
`Registration
`Number
`
`RATED F FOR FUNNY
`
`Abandoned - After Inter-Partes Decision
`
`Plaintiff(s)
`
`Name: Motion Picture Association of America, Inc.
`
`Correspondent
`Address:
`
`ROBERT S WEISBEIN
`FOLEY & LARDNER LLP
`90 PARK AVENUE
`NEW YORK NY UNITED STATES , 10016
`
`Correspondent e-
`mail:
`
`IPdocketing@foley.com , rweisbein@foley.com , wwalker@foley.com , sschoepfer@foley.com , econnolly@foley.com ,
`mfry@foley.com , prodriguez@foley.com , nquintero@foley.com
`
`Associated marks
`
`Mark
`
`RATED G
`
`RATED NC-17
`
`RATED PG
`
`RATED PG-13
`
`RATED R
`
`Application Status
`
`REGISTERED AND RENEWED
`
`REGISTERED AND RENEWED
`
`REGISTERED AND RENEWED
`
`REGISTERED AND RENEWED
`
`REGISTERED AND RENEWED
`
`Serial
`Number
`
`Registration
`Number
`
`73600999
`
`76019073
`
`73600847
`
`73601053
`
`73601001
`
`1439618
`
`2619540
`
`1439617
`
`1439619
`
`1436926
`
`Entry Number
`
`History Text
`
`FILED AND FEE
`
`NOTICE AND TRIAL DATES SENT; ANSWER DUE:
`
`Prosecution History
`
`PENDING, INSTITUTED
`
`ANSWER
`
`P MOT TO COMPEL DISCOVERY
`
`SUSP PEND DISP OF OUTSTNDNG MOT
`
`TRIAL DATES RESET
`
`P MOT FOR DISCOVERY SANCTIONS
`
`SUSP PEND DISP OF OUTSTNDNG MOT
`
`BD DECISION: OPP S