l
`I
`me-ma“ I pheips ii phmips
`
`c
`
`'
`
`Jill M. Pietrini
`Manatt, Phelps & Phillips, LLP
`Direct Dial:
`(310) 312-4325
`E-mail:
`jpietrini@manatt.com
`
`December 30, 2005
`
`File No. 12838-167
`
`Via Express Mail: EV 505832211 US
`
`Commissioner for Trademarks
`Attn: Trademark Trial and Appeal Board
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Fte:
`
`Petition For Cancellation
`Petitioner: Mattel, Inc.
`Registrant:
`Jada Toys, Inc.
`’ P
`Mark:
`“old skool”
`fl
`Reg. No.:
`3,036,980 / 7 ./Ea
`.;~:‘ 1»; c_ .37
`
`Dear Sir or Madam:
`
`We enclose herewith a Petition for Cancellation to the above-identified registration.
`Enclosed is our check in the amount of $300.00, the requisite fee. Please charge any
`additional fees or credit any overpayments to our Deposit Account No. 131 241. A duplicate
`copy of this letter is enclosed for this purpose. Please direct all communications regarding
`this matter to the undersigned attorney.
`
`Very truly yours,
`
`an I M. Pietrini
`I ANATT, PHELPS & PHILLIPS, LLP
`
`CERTIFICATE OF EXPRESS MAILING
`
`
`
`
`
`
`
`
`Fluth Ouintanilla
`
`
`
`
`IlllllllllllllllllllllllllllllllIlllllllllllllllll
`
`40956184.1
`
`1 2-30-2005
`U.S. Patent & TMOtcI‘l'M Mail Rcpt Dt. #72
`
`11355 West Olympic Boulevard, Los Angeles, California 90064-1614 Telephone: 310.312.4000 Fax: 310.312.4224
`1Albany | Los Angeles | Mexico City I New York I Orange County I Palo Alto | Sacramento | Washington, D.C.
`
`
`this correspondence is being
`I hereby certify that
`
`deposited with the United States Postal Service, Express Mail
`Label No. EV 505832211 US in an envelope addressed to:
`
`Commissioner for Trademarks, Attn: Trademark Trial And
`
`Appeals Board, P.O. Box 1451, Alexandria, VA 22313-1451,
`on this 30th day of December, 2005.
`
`
`
`
`JMP:rq
`
`
`
`Enclosures:
`
`
`
`(1) Petition for Cancellation
`(orig + copy)
`(2) Transmittal letter (orig. + copy)
`(3) Check ($300.00)
`(5) Postcard
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Docket No. 12838-167
`
`
`
`PETITION FOR CANCELLATION
`
`Cancellation No.
`
`In re Re istmtion No. 3,036,980
`for:
`’’O (1 Skool"
`
`Mattel, Inc.,
`
`
`
`Petitioner,
`
`vs.
`
`Jada Toys, Inc.,
`
`Registrant.
`
`To:
`
`Director of the United States Patent and Trademark Office
`
`P.C). Box 1450
`
`Alexandria, Virginia 22313-1450
`
`Dear Sir:
`
`Petitioner Mattel, Inc., a Delaware corporation, having its principal place of
`
`business at 333 Continental Boulevard, El Segundo, California 90245-5012 (”Mattel”),
`
`believes that it has been and will continue to be damaged by the registration of the
`
`purported trademark ”old skool,” as shown in U.S. Registration No. 3,036,980 (the
`
`”Second Old Skool Registration”), and hereby petitions to cancel such registration on
`
`the following grounds:
`
`1.
`
`On August 19, 2002, Applicant Jada Toys, Inc. (”Jada”), applied to register
`
`the term “old skool” for miniature diecast toy cars, trucks and vehicles in Class 28 on an
`
`intent to use basis. That application was assigned Serial No. 76/441,281 (”the First Old
`
`Skool Application”).
`
`2.
`
`On December 6, 2002, Jada amended the First Old Skool Application to
`
`allege use. According to the Allegation of Use file by Jada, the words ”old skool” were
`
`first used anywhere in May 2002 and first used in commerce in June 2002. However,
`
`Jada did not submit a complete copy or sample of the packaging for the toy cars sold
`
`01/10/2006 GTIKHISE 00000031 3036930
`
`01 1712:6401
`
`300.00 09
`
`

`
`under the term. ”old skool” to the PTO. Specifically, Jada did not submit a specimen to
`
`the PTO showing that the term ”old skool” was actually used with replicas of old cars.
`
`Thus, the PTO was unaware of the actual products for which the term ’’old skool’’ was
`
`being used by Jada. A true and correct copy of the Allegation of Use filed by Jada on
`
`December 6, 2002 is attached hereto as Exhibit 1.
`
`3.
`
`On July 22, 2003, the PTO issued Registration No. 2,740,026 for the term
`
`”old skool” for miniature diecast toy cars, trucks and Vehicles, based on the First Old
`
`Skool Application (the ”First Old Skool Registration”).
`
`4.
`
`In a Board proceeding, on December 11, 2003, Mattel petitioned to cancel
`
`Jada’s Registration No. 2,637,124 of the mark HOT RIGZ for diecast toy cars, toy trucks
`
`and toy vehicles, based upon its famous HOT WHEELS family of marks. The
`
`cancellation proceeding is currently suspended pending the outcome of federal
`
`litigation between the parties.
`
`5.
`
`On April 20, 2004, Jada filed a complaint in the U.S. District Court for the
`
`Central District of California against Mattel for trademark infringement, false
`
`designation of origin and unfair competition regarding Mattel’s use of the
`
`generic / descriptive terms ”old school” and ”new school” on the packaging of its HOT
`
`WHEELS, WHIPS, TEAM BAURTWELL and WEST COAST CUSTOMS diecast toy cars
`
`(the ”WHIPS Products”) (the ”Federal Litigation”). Mattel displayed the terms ”old
`
`school” and ”new school” on the packages of toy cars to indicate whether the cars were
`
`classic or vintage (old school) or modern (new school).
`
`6.
`
`On June 2, 2004, Mattel filed its answer and counterclaims in the Federal
`
`Litigation for cancellation of the First Old Skool Registration on the grounds that ”old
`
`skool” is generic or descriptive. The counterclaims also included trademark
`
`infringement, unfair competition and copyright infringement based upon Jada’s use of
`
`HOT RIGZ and a flame logo similar to Mattel’s famous HOT WHEELS flame logos, and
`
`for cancellation of Registration No. 2,637,124 for HOT RIGZ.
`
`

`
`7.
`
`8.
`
`Jada served its reply to Mattel’s counterclaims on June 25, 2004.
`
`On February 11, 2005, both parties filed motions for summary judgment.
`
`Mattel sought summary adjudication on liability for all of its defenses and
`
`counterclaims, including its defense of fair use of the terms ”old school” and ”new
`
`school” for vintage and modern toy cars in a descriptive, non-trademark manner under
`
`15 U.S.C. § 1115(b)(4), for cancellation of the First Old Skool Registration, for its claims
`
`of trademark infringement, unfair competition and copyright infringement for ]ada’s
`
`use of HOT RIGZ with a flame logo, and for cancellation of ]ada’s registration of HOT
`
`RIGZ. Jada moved for summary judgment on all of its affirmative claims relating to
`
`Mattel’s use of ”old school” and ”new school,” Mattel’s counterclaim for cancellation of
`
`the First Old Skool Registration, and Mattel’s counterclaims relating to ]ada’s use of
`
`HOT RIGZ alone and with a flame logo.
`
`9.
`
`On the same day that summary judgment motions were filed (February
`
`11, 2005), Jada filed an application to register the term ”old skool” for toy cars, trucks
`
`and vehicles for plastic toy vehicles, radio-controlled toy vehicles, battery operated toy
`
`vehicles, friction toy vehicles, wind-up toy vehicles, and ride-on toy vehicles in Class 28
`
`on an intent to use basis (the ”Second Old Skool Application”).
`
`10.
`
`On March 15, 2005, the District Court ruled on the parties’ respective
`
`motions for summary judgment. The District Court granted Mattel’s motion for
`
`summary adjudication as to its counterclaim relating to the validity of ]ada’s alleged
`
`mark ”old skool.” In doing so, the District Court held:
`
`[b]ased on the common usage of the terms ”old school” and
`“old skool” to describe older model or classic cars, this Court
`finds very little imagination, thought, and perception are
`required to conclude that OLD SKOOL refers to Applicant's
`classic model toy cars.
`See STIX Products, Inc. v. United
`Merchants 8 Mfrs., Inc., 295 F. Supp. 479 (S.D.N.Y. 1968).
`Finall
`, Ap licant first started using the mark in commerce
`less t an t ree years a 0.
`[Citation ornitted.] Even if
`Applicant has had a hig volume of advertising and sales
`during this time,
`these factors alone are insufficient
`to
`establish a secondary meaning.
`
`

`
`Based on the foregoing, this Court finds, as a matter of law,
`the term ”old skool” is merely descriptive. Therefore the
`OLD SKOOL registration is invalid and canceled.
`
`A true and correct copy of the District Court's March 15, 2005 reporting of its
`
`decision on the parties’ respective motions for summary judgment is attached hereto as
`
`Exhibit 2.
`
`11.
`
`The District Court's order reporting its decision on the parties’ motions for
`
`summary judgment was sent to Mattel via ”FaxSerV,” the District Court's fax service
`
`system, at 3:35 p.m. PST on March 15, 2005. Attached hereto as Exhibit 3 is a true and
`
`correct copy of the fax service attaching the District Court's order. All parties to the
`
`Federal Litigation, including Jada, through its attorneys at the law firm of Buchalter,
`
`Nemer, Fields and Younger, received notice of the District Court's order Via the FaxServ
`
`system at or around the same time of day on March 15, 2005.
`
`12.
`
`A Also on March 15, 2005, at 8:59 p.m. EST (5:59 p.m. PST — 2 hours and 24
`
`minutes after the District Court gave notice to the parties of its order that the term ”old
`
`skool” as used by Jada on toy vehicles is descriptive and without secondary meaning)
`
`Jada, through i.ts attorney Karen Peterka of the law firm of Buchalter, Nemer, Fields and
`
`Younger, filed a use-based application to register the term ”old skool” for toy cars,
`
`trucks and Vehicles in Class 28 on the Supplemental Register (the ”Third Old Skool
`
`Application”). The application was assigned Serial No. 78/588,037.
`
`13.
`
`On March 25, 2005, the District Court entered a judgment consistent with
`
`its March 15, 2005 order. A true and correct copy of the District Court's March 25, 2005
`
`judgment is attached hereto as Exhibit 4.
`
`14.
`
`The District Court granted Jada’s motion for summary judgment as to its
`
`claims of non-infringement relating to its use of HOT RIGZ with a flame logo. Mattel
`
`appealed the judgment of the District Court as it relates to HOT RIGZ, which is
`
`currently pending before the 9th Circuit Court of Appeals. Jada did not appeal the
`
`judgment, and it now stands final as to the term ”old skool” used by Jada and as to the
`
`First Old Skool Registration owned by Jada.
`
`

`
`15.
`
`On October 4, 2005, Ms. Peterka held a telephone conference with Karen
`
`Bush, the Examining Attorney prosecuting the Third Old Skool Application, and
`
`requested that the Third Old Skool Application be amended to the Principal Register,
`
`and amended to claim ownership of the First Old Skool Registration (which the District
`
`Court held to be invalid and ordered canceled on March 15, 2005). An Examiner's
`
`Amendment making the requested amendments was sent on October 5, 2005. The
`
`Third Old Sko()l Application was approved for publication on the Principal Register on
`
`October 5, 2005. Attached hereto as Exhibit 5 is a true and correct copy of the October
`
`5, 2005 Examiner's Amendment.
`
`16.
`
`In a letter dated October 21, 2005, Mattel advised Jada that its attempt to
`
`overcome the District Court's ruling by filing the Third Old Skool Application initially
`
`on the Supplemental Register, and its subsequent amendment of the application,
`
`without any evidence whatsoever of secondary meaning, to the Principal Register,
`
`which is reserved for distinctive marks or marks that have acquired secondary meaning
`
`— neither of which applies to ]ada’s alleged mark ”old skool” — was not in good faith.
`
`17.
`
`On October 24, 2005, Ms. Peterka requested by telephone that the Third
`
`Old Skool Application be amended back to the Supplemental Register, but did not
`
`request that the amendment to claim ownership of the First Old Skool Registration
`
`(which was ordered canceled by the District Court) be withdrawn. In response, on
`
`October 24, 20()5, the Examining Attorney issued an Examiner's Amendment amending
`
`the Third Old Skool Application back to the Supplemental Register. On that same day
`
`(October 24, 2005), the previous allowance of the application on the Principal Register
`
`was withdrawn, and the application was approved for registration on the Supplemental
`
`Register. Attached hereto as Exhibit 6 is a true and correct copy of the October 24, 2005
`
`Examiner"s Amendment.
`
`

`
`18.
`
`On November 4, 2005, Mattel sent a letter to the PTO requesting that the
`
`First Old Skool. Registration be canceled pursuant to 15 U.S.C. § 1119 as ordered by the
`
`District Court. That request is currently pending with the PTO.
`
`19.
`
`On November 15, 2005, the Second Old Skool Application was published
`
`for opposition on the Principal Register.
`
`20.
`
`On December 15, 2005, Mattel filed a timely Notice of Opposition of the
`
`Second Old Skool Application on the basis that the mark ”old skool” is merely
`
`descriptive, not inherently distinctive, lacks secondary meaning, and that ]ada’s further
`
`attempts to register the term ”old skool” for toy vehicles and related goods constitutes
`
`fraud on the PTO.
`
`21.
`
`On December 27, 2005, the Third Old Skool Application was registered on
`
`the Supplemental Register as Registration No. 3,036,980 (the ”Second Old Skool
`
`Registration”).
`
`Applgmfs Mark Is Generic And Does Not Function As A Trademark
`
`22.
`
`]ada’s purported mark is generic of the goods to which it relates, because
`
`the term ”old skool” has become synonymous with, or another name for ”Vintage,”
`
`”classic,” or "old,” which is the type of cars that Jada is using the term with.
`
`Specifically,
`
`the term ”old skool” and its phonetic equivalent ”old school,” are
`
`commonly used in Various industries (including for automotive products and vehicles)
`
`to refer to or as another name for traditional or classic products.
`
`23.
`
`The automotive industry,
`
`from which ]ada’s products are based,
`
`commonly uses the term ’’old school” as another word for older model or classic cars.
`
`24.
`
`Because ]ada’s purported mark is generic,
`
`it
`
`is not capable of
`
`distinguishing ]ada’s goods, and is therefore unregisterable on the Supplemental
`
`Register. 15 U.S.C. § 1091.
`
`

`
`Find On The PTO
`
`25.
`
`Jada willfully withheld, from the PTO, material
`
`information or facts,
`
`which, if disclosed, would have resulted in the disallowance of the registration sought
`
`under the Third Old Skool Application (the Second Old Skool Registration) by the PTO.
`
`26.
`
`Specifically, despite Jada’s knowledge of the March 15, 2005 order, and the
`
`March 25, 2005 judgment of the District Court, Jada filed the Third Old Skool
`
`Application, and continued to prosecute the Third Old Skool Application before the
`
`PTO, including amending the Third Old Skool Application to the Principal Register
`
`without cause, and amending to claim ownership of the First Old Skool Registration
`
`well after the District Court ordered that registration canceled.
`
`27.
`
`Jada knowingly and intentionally made a false, material representation to
`
`the PTO that no other person, firm, corporation or association has the right to use the
`
`term ’’old skool,’’ which is the subject of the Second Old Skool Registration.
`
`28.
`
`Specifically, within hours after
`
`the District Court entered its order
`
`canceling the Second Old Skool Registration on the grounds that it is descriptive, and
`
`lacks secondary meaning, Jada filed the Third Old Skool Application and signed the
`
`declaration stating that it believed itself to be entitled to use such mark in commerce,
`
`and that no other person, firm, corporation, or association has the right to use the mark
`
`in commerce, under the penalty of perjury.
`
`29.
`
`J.ada continued to prosecute the Third Old Skool Application, and recently
`
`claimed ownership of the First Old Skool Registration in that application, even though
`
`that registration was ordered canceled by the District Court in March 2005.
`
`30.
`
`Jada did not advise the PTO during the prosecution of the Second Old
`
`Skool Application or the Third Old Skool Application of the District Court's March 15,
`
`2005 order or its March 25, 2005 judgment regarding the term ’’old skool’’ as used with
`
`Jada’s toy vehicles, or of the cancellation of the First Old Skool Registration.
`
`

`
`31.
`
`Jada committed fraud on the PTO in violation of 15 U.S.C. § 1063 and 18
`
`U.S.C. §1001.
`
`_l_D_a_mage To Mattel
`
`32. Mattel used the descriptions ”old school” and ”new school” on packaging
`
`for its WHIPS Products to delineate whether the cars were classic or vintage (old school)
`
`or modern (new school).
`
`33.
`
`Jada has already objected to Mattel’s use of the generic/ descriptive terms
`
`”old skool” and ”new school” to delineate the age of its toy vehicles. Mattel has an
`
`interest in using these terms in its business.
`
`34. Mattel is damaged by the continued registration of the mark shown in the
`
`Second Old Skool Registration in that such registration gives Applicant a prima facie
`
`exclusive right of ownership and use of a mark that has been determined by the U.S.
`
`District Court for the Central District of California as merely descriptive and without
`
`secondary meaning, and therefore invalid.
`
`A
`
`35. Mattel is damaged by the continued registration of the mark shown in the
`
`’ Third Old. Skool Registration in that such mark is a generic term meaning ”vintage” or
`
`”classic” goods, such as vehicles, which should be in the public domain and free for
`
`everyone, including Mattel, to use.
`
`36.
`
`A duplicate copy of this Petition for Cancellation and a check for $300 is
`
`submitted. herewith. Please charge any additional amounts or credit any overpayment
`
`to Deposit Account No. 131241.
`
`

`
`WHEREFORE, Mattel prays that
`
`this Cancellation be sustained in favor of
`
`Mattel, and that the Second Old Skool Registration, issued as Registration No. 3,036,980,
`
`be canceled.
`
`Respectfully submitted,
`
` Dated: December 30, 2005
`
`M. Pietrini
`
`
`
`ssica J. Slusser
`ANATT, PHELPS & PHILLIPS, LLP
`11355 W. Olympic Blvd.
`Los Angeles, California 90064
`(310) 312-4000
`Attorney for Petitioner Mattel, Inc.
`
`CERTIFICATE OF EXPRESS MAILING
`
`I hereby certify that this Notice of Opposition is being deposited with the United
`States Postal Service, postage prepaid, Express Mail, Label No. 505832211 US, in an
`envelope addressed to: Director of the United States Patent and Trademark Office, P.O.
`Box 1450, Alexandria, Virginia 22313-1450, on this 30th day of December, 2005.
`1" .
`1!
`.
`V,
`"I" ,;_r,‘(:. g /7
`
`Ruth Quiritailla
`
`40952868.1
`
`

`
`EXHIBIT 1
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRANSMITTAL LETTER, ALLEGATION or USE UNDER 15 use. l051(c) or (d)
`
`Docket No.
`
`B4244-5046
`
`Name of Applicant:
`
`Jada Toys, Inc.
`
`Trademark:
`
`OLD SKOOL
`
`lnternationalClass(es):
`
`28
`
`TO THE ASSISTANT COMMISSIONER FOR TRADEMARKS:
`
`Transmitted herewith is an Allegation of Use under 15 U.S.C. 1051(c) or (d) and fee calculated as follows:
`
`I Feelclass
`E $100-00
`
`I-
`I
`
`A check in the amount of
`
`$100.00
`
`is attached.
`
`U Please charge Deposit Account No.
`A duplicate copy of this sheet is enclosed.
`
`in the amount of
`
`E1 The Commissioner is hereby authorized to charge payment of any fees associated with this
`Allegaticn of Use or credit any overpayment to Deposit Account No.
`500977
`A duplicate copy of this sheet is enclosed.
`
`Certificate of Mailing by Express Mail
`
`Certificate of Mailing by First Class Mail
`
`I certify that this document and fee is being deposited on
`
`with the U.S. Postal Service ‘Express Mail Post Office to
`Addresses" service under 37 C.F.R. 1.10 and is addressed
`to the Commissioner for Trademarks. 2900 Crystal Drive.
`Arlington. Wrginia 2202-3513.
`
`with the U.S. Postal Service as first class mail under 37
`C.F.R. 1.8 and is addressed to the Commissioner for
`Trademarks.
`2900 Crystal Drive. Arlington, Wrginla
`22202-3513.
`
`Signature ofPerson Mailing Correspondence
`
`Typed or Printed Name ofPerson Mailing Correspondence
`
`

`
`Docket No.
`
`B4244-5046
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRANSMITTAL LETTER, ALLEGATION OF USE UNDER 15 U.S.C. 1051(0) or (d)
`
`
`Jada Toys, Inc.
`Name of Applicant:
`OLD SKOOL
`Trademark:
`
` lnternationa|Class(es):
`28
` TO THE ASSISTANT COMMISSIONER FOR TRADEMARKS:
`
`
`
`Transmitted herewith is an Allegation of Use under 15 U.S.C. 1051 (c) or (d) and fee calculated as follows:
`
`
`
`
`Total # ClassesI
`
`
`1 n $100.00
`
`
`A check in the amount of
`
`$100.00
`
`is attached.
`
`
`
`
`in the amount of
`
`
`
`Please charge Deposit Account No.
`A duplicate copy of this sheet is enclosed.
`
`it
`
`The Commissioner is hereby authorized to charge payment of any fees associated with this
`Allegation of Use or credit any overpayment to Deposit Account No.
`500977
`A duplicate copy of this sheet is enclosed.
`
`
`
`
`
`
`
`
`
`
`
`
`Certificate of Mailing by Express Mail
`Certificate of Mailing by First Class Mail
`| certify that this document and fee is being deposited on
`I certify that this document and fee is being deposited on
`
`V
`‘A A A ‘E _
`4
`.v_4,
`a
`with the U.S. Postal Service "Express Mail Post Office to
`
`with the U.S. Postal Service as first class mail under 37
`Addressee" service under 37 C.F.R. 1.10 and is addressed
`C.F.R. 1.8 and is addressed to the Commissioner for
`
`
`to the Commissioner for Trademarks. 2900 Crystal Drive.
`Trademarks.
`2900 Crystal Drive. Arlington, Wrginia
`Arlington. Wrginia 12202-3513.
`22202-3513.
`
` Typed or Printed Name ofPerson Mailing Correspondence
`
`
` S
`
`
`ignature ofPerson Mailing Correspondence
`
`
`
`
`
`
`
`Sign
`re ofPerson Mailing Corr "\ ondenee
`’f6I?'€9a
`.. 095
`Typed or Printed Name ofPerson Mailing Correspondence
`ELl5'r'3E'?B‘ll'lUS
`
`ll
`
`

`
`Express Mail Label No.
`
`’
`
`Page 1 of
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`ALLEGATION or USE UNDER 15 U.S.C. 105 l(c) or (d)
`
`Name of Applicant:
`Serial Number:
`Trademark:
`
`Jada Toys, Inc.
`76/441,281
`OLD SKOOL
`
`Docket No.
`B4244-5046
`
`TO THE ASSISTANT COMMISSIONER FOR TRADEMARKS
`
`Applicant requests registration of the above-identified trademark in the United States Patent and Trademark
`Office on the Principal Register established by the Act of July 5. 1946 (15 U.S.C. 1051 et. seq., as amended)
`for the below-identified goods. One (1) specimen per class showing the mark as used in commerce is
`submitted with this Allegation of Use.
`
`Check here if a Request to Divide under 37 CFR 2.87 is being submitted with this Allegation of Use.
`
`Check here if you are filing the Allegation of Use after a Notice of Allowance has issued.
`Check here if Applicant is using the mark in commerce on or in connection with all goods listed in the
`application or Notice of Allowance.
`
`Please delete the following listing of goods from the application for which the Applicant is not using the mark
`in commerce. LEAVE THIS SPACE BLANK IF THE APPLICANT IS USING THE MARK ON OR IN
`CONNECTION WITH ALL THE GOODS LISTED IN THE APPLICATION OR NOTICE OF ALLOWANCE.
`
`Date of first use of the mark in commerce:
`aflhl.
`,ZO0Z
`
`Date of first use anywhere (the same as or before use in commerce date):
`__ Mia .1007-
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`____.T____£.___.._.-_
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`l7» ,
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`Tl04lREVO5
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`

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`DECLARATION
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`‘Page 2 of
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`l, the undersigned authorized signatory of Applicant, being hereby warned that willful false statements and
`
`
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` the like so made are punishable by fine or imprisonment, or both, under Section 1001 of Title 18 of the United
` States Code, and that such willful false statements may jeopardize the validity of the application or any
`resulting registration, declare that lam properly authorized to execute this Amendment to Allege Use on behalf
`
`
` of the Applicant;
`I believe the Applicant to be the owner of the‘ trademark sought to be registered; the
` trademark is now in use in commerce; and all statements made of my own knowledge are true and all
`
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`statements made on information and belief are believed to be true.
`
`Dated: _ ‘zléloz’ By:
` indicate below the nature of authority under which signatory signs:
`
` May Li, Vice Preside t
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`
`
`8|
`C]
`C]
`
`A person with legal authority to bind the Applicant; or
`A person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the Applicant; or
`An attorney as. defined in 37 C.F.R. 10.1(c) who has an actual or implied written or verbal power of attorney from
`the Applicant.
`
`
`
`
`Contact Information:
`
` Address all correspondence in this application to the following:
`
`
`A B
`
`
`
` Name:
`Karin E. Peterka
`
`Company/Firm Name:
`uchalter, Nemer, Fields & Younger
`
`___j__:_
`Address Line 1:
`601 S. Figueroa Street
`Suite 2400
`
`Los Angeles
`
`California
`USA
`
`
`
`
`
`
`
`
`
`ZIP Code/Postal Code: 90017-5704
`
`Telephone Number:
`(213)891-5280
`
`Fax Number:
`(213) 630-5708
`
`Email Address:
`kpeterka@buchalter.com
`
`
`
`
`
`
`Address Line 2:
`City:
`State:
`Country:
`
`
`
`
`
`Cl
`
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`Applicant will accept correspondence by email.
`Applicant will not accept correspondence by email.
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`

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`Page 3 of 3
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`Before Approval for Publication, Send to:
`
`After Notice of Allowance, Send to:
`
`.
`
`Fee
`.
`
`.
`
`Assistant Commissioner for Trademarks
`Arlington, Virginia 22202-3513
`
`2900 Crystal Drive
`.
`.
`.
`
`i
`
`Box ITU
`Fee
`
`Assistant Commissioner for Trademarks
`Ariingion’ Virginia 222026513
`
`2900 Crystal Drive
`
`Certificate of lmaflifig by First C1355 Mail
`i certify that this document and fee is being deposited on
`
`Certificate of Mailing by Express Mail
`I certify that this document and fee is being deposited on
`
`i
`_
`_
`with the U.S. Postal Service as first class mail under 37
`C.F.R. 1.8 and is addressed to the Commissioner for
`Trademarks.
`2900 Crystal Drive, Arlington. Virginia
`22202-3513.
`Signature ofPerson Mailing Correspondence
`
`Typed or Printed Name ofPerson Mailing Correspondence
`
`with the U.S. Postal Service "Express Mail Post Office to
`Addressee" service under 37 C.F.R. 1.10 and is addressed
`to the commissioner for 1-radema,1(s_ 2900 crysiai Dr.-Vei
`Arlington, Wrginia 22202-3513.
`/
`,4‘,
`‘
`Signature ofPerson Mailing forrespondence
`
`Typed or Printed Name ofPerson Mailing Correspondence
`go 373;}?! W 7&5
`"Express Mail'' Mailing Label Number
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`. i-..___,-,
`
`M
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`

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`Specimen 0'9 U 55
`"ow svcoou“
`AW‘-’can+.'
`'3-“°‘“1aV5’InC'
`
`I4
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`

`
`EXHIBIT 2
`
`

`
` Priority
`
`Enter
`
`Send
`
`_._.._
`
`UNITED STATES DISTRICT COURT
`6
`CENTRAL DISTRICT OF CALIFORNIA
`Josjy
`CIVIL MINUTES - GENERAL
`
`
`
`Case No. _<_:v 04-2755-RGK (FMOx) 17? Date March I5, 2005
`‘.1
`sex.
`JADA TOYS, INC. v. MATTEL, INC., et al.
`
`Title
`
`
`
`Present: The
`Honorable
`
`
`
`R. GARY KLAUSNER, U.S. DISTRICT JUDGE
`
`
`
`Not Reported
`
`N/A
`
`Sharon L. Williams
`
`Deputy Clerk
`
`Court Reporter / Recorder
`
`Tape No.
`
`Attorneys Present for Plaintiffs:
`
`Attorneys Present for Defendants:
`
`Not Present
`
`Not Present
`
`Proceedings:
`
`(IN CHAMBERS) PLAINTIFF/COUNTER-DEFENDANT JADA TOYS,
`INC’S MOTION FOR SUMMARY JUDGMENT OR IN THE
`ALTERNATIVE, SUMMARY ADJUDICATION OF CLAIMS AND
`ISSUES (DE 22); and DEFENDANT/COUNTER-CLAIMANT MATTEL,
`INC’S MOTION FOR SUMMARY ADJUDICATION RE LIABILITY
`ON AFFIRMATIVE DEFENSE OF FAIR USE AND FIRST TO SIXTH
`AND EIGHTH COUNTERCLAIMS (DE 41)
`-'
`
`I.
`
`INTRODUCTION
`
`Plaintiff Jada Toys, Inc (“Jada”) filed an action against Defendant Mattel, Inc., (“Mattel”) for:
`(1) Trademark Infringement, (2) False Designation and (3) Unfair Competition. In its Complaint, Jada
`alleges that, since May 2002, it has produced and sold toy cars under the trademark OLD SKOOL,
`which is a federally registered trademark. Jada’s Complaint also alleges that in February 2004, Mattel
`introduced a line of “Hot Wheels” die cast miniature cars under the trademarks OLD SCHOOL and
`NEW SCHOOL (“Accused Products”). According to Jada, the marks on the Accused Products so
`resemble Jada’s OLD SKOOL mark as to likely cause confusion, mistake or deception to the consuming
`public. Moreover, the Complaint alleges that Mattel’s use of such substantially identical marks is"willful
`and deliberate, and causes injury and damage to Jada’s goodwill.
`
`In response, Mattel asserts nine affirmative defenses, including a fair use defense under the
`Lanham Act, 15 U.S.C. § ll5(b)(4). Additionally, Mattel has filed the following Counterclaims: (1)
`Cancellation of OLD SKOOL Registration; (2) Trademark Infringement; (3) False Designation; (4)
`Trademark Dilution; (5) Injury to Business Reputation and Dilution (Cal. Bus & Prof Code § 14330);
`(6) Unfair Competition; (7) Common Law Passing Off; (8) Cancellation of HOT RIGZ Registration; and
`(9) Copyright Infringement. Among other things, Mattel’s Counterclaim alleges that Jada has
`maliciously and willfully deprived Mattel of its right to fair use of the terms “old scho ”
`
`“new
`
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`
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`T...
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`CV-90 (06/04)
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`CIVIL MINUTES — GENERAL
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`‘l0
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`school.” Moreover, Mattel’s Counterclaim alleges that Jada’s use of the HOT RIGZ mark and logo for
`its'diecast toy ‘trucks is confusingly similar to, and infringes upon, Mattel’s HOT WHEELS trademark
`and logos.
`
`Mattel has filed a Motion for Summary Adjudication Re Liability on Affirmative Defense of Fair
`Use and First to Sixth and Eighth Counterclaims (“Mattel’s Motion”). Jada has also filed a Motion forgf
`Summary Judgment, or in the Alternative, Summary Adjudication of Claims and Issues (“Jada’s
`Motion”). For the following reasons, this Court grants in part, and denies in part, both Mattel’s Motio Q
`and Jada’s Motion.
`
`II.
`
`JUDICIAL STANDARD
`
`Under the Federal Rules of Civil Procedure, summary judgment is proper only where “the
`pleadings, depositions, answers to interrogatories, and admissions on file, together with affidavits, if
`any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a
`judgment as a matter of law.” Fed. R. Civ. P. 56(c). Upon such a showing, the Court may grant
`summary judgment “upon all or any part thereof.” Fed. R. Civ. P. 56(a), (b).
`
`To prevail on a summary judgment motion, the moving party must show there are no triable
`issues of fact as to matters upon which it has the burden of proof at trial. Sg Celotex Corp. v. Catrett,
`477 U.S. 317, 325 (1986). On issues where the moving party does not have the burden of proof at trial,
`the moving party is required only to show that there is an absence of evidence to support the nonmoving
`party’s case. See Celotex Corp. v. Catrett, 477 U.S. at 326.
`
`To defeat a summary‘judgment, the non-moving party may not merely rely on its pleadings or on
`conclusory statements. Fed. R. Civ. P. 56(e). Nor may the non-moving party merely attack or discredit
`the mov:ing pa.rty’s evidence. National Union Fire Ins. Co. v. Argonaut Ins. Co., 701 F.2d 95, 97 (9“' Cir. -'
`1983). The non-moving party must affirrnatively present specific admissible evidence sufficient to .
`create a genuine issue of material fact for trial. fie Qelotex Corp v. Catrett, 477 U.S. at 324.
`
`III.
`
`DISCUSSION
`
`A.
`
`OLD SKOOL Trademark
`
`I
`
`Jada’s Complaint alleges that Mattel’s use of OLD SCHOOL and NEW SCHOOL infringe upon
`its federally registered OLD SKOOL trademark, and that Mattel’s use of the marks likely causes
`confusion, mistake or deception to the consuming public. In response, Mattel argues: (1) the registration
`of OLD SKOOL should be canceled because the mark is generic or descriptive; and (2) Mattel is able to
`satisfy the elements necessary to establish the fair use defense. For the following reasons, this Court
`finds the registered trademark of OLD SKOOL'invalid.
`
`Federal registration of a trademark confers upon the mark a strong presumption of validity.
`
`Coca-Cola Co. v. Overland Inc., 692 F.2d 1250, 1254 (9th Cir. 1982). However, this presumption may
`be overcome and the registration canceled by a showing that the mark has become generic or
`_
`‘
`descriptive. flag i_d_ at 1254-1255; 15 U.S.C. § 1119. A generic mark merely identifies the product’s
`classification, rather than the source, or more individualized characteristics of a particular product. 53
`
`Two Pesos Inc. v. Taco cabana Inc. 505 U.S. 763, 768 (1992); Zatatarains Inc. v. Oak Grove
`Smokehouse L123, 698 F.2d 786, 790 (9th Cir. 1983) (quoting American Heritage Lite Ins. Co. v.
`Herz'tage_Lg'&Ins. Co., 494 F.2d 3, 11 (5th Cir. 1974)). A descriptive mark merely identifies a
`z—\
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`characteristic or quality of an article, but does not identify the product’s source. §e_e Two Pesos, 505
`US. at 769; grtatarains, 698 F.2d at 790. Descriptive terms ordinarily are not protectable as
`trademarks. 15 U.S.C. § l052(e)(l). However, they may become valid marks by acquiring a secondary
`meaning in the minds of the consuming public. 15 U.S.C. § l052(f).
`
`9’_c
`|——¢
`Ll
`V.
`.4
`I,._.
`75
`English dictionaries define the term “old school” generally, as is a group that adheres to
`traditional ideas or practices. (S_ee_ Pietrini Decl.,1] 1, Exh. 1.) Furthermore, Mattel’s evidence shows tl:at
`the term “old school” and its phonetic equivalent, “old skool" are commonly used in various industries‘.
`in reference to traditional or classic products, such as music styles that closely adhere to its roots, older
`versions of toys, etc. (Pietrini Decl.,1l1l 3-9, Exhibits 2-5) More specifically, the automotive industry,
`from which the parties’ products are based, commonly use “old school” and “old skool” to describe
`older model, or classic cars. (&_e Huerta Decl.,