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ESTTA Tracking number:
`
`ESTTA1325773
`
`Filing date:
`
`12/01/2023
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Petition for Cancellation
`
`Notice is hereby given that the following party has filed a petition to cancel the registration indicated below.
`
`Petitioner information
`
`Name
`
`Entity
`
`Address
`
`Mattel, Inc.
`
`Corporation
`
`333 CONTINENTAL BLVD.
`EL SEGUNDO, CA 90245
`UNITED STATES
`
`Incorporated or
`registered in
`
`Delaware
`
`Attorney informa-
`tion
`
`BRIAN DAVID WASSOM
`WARNER NORCROSS + JUDD LLP
`12900 HALL ROAD
`SUITE 200
`STERLING HEIGHTS, MI 48313
`UNITED STATES
`Primary email: bwassom@wnj.com
`Secondary email(s): dkeilch@wnj.com
`586-303-4139
`
`Docket no.
`
`Registration subject to cancellation
`
`Registration no.
`
`7133171
`
`Registration date
`
`08/08/2023
`
`Register
`
`Registrant
`
`Principal
`
`Luo, Jian
`1005, BLDG 6, HONGGUFENGSHANG COMMUNITY
`CULTURE AVENUE, CHANGLENG TOWN, XINJIAN
`NANCHANG, JIANGXI, 310000
`CHINA
`
`Goods/services subject to cancellation
`
`Class 028. First Use: Jul 1, 2022 First Use In Commerce: Jul 1, 2022
`All goods and services in the class are subject to cancellation, namely: Abdomen protectors for Taek-
`wondo; Baseball bat racks; Chest protectors for athletic use; Christmas tree decorations; Climbing
`skins for use with touring skis; Fishing safety harness; Goalkeepers' gloves; Infant action crib toys;
`Kidney belts for sports; Nuts and bolts for skateboards; Pet toys; Toy models
`
`Grounds for cancellation
`
`Priority and likelihood of confusion
`
`Trademark Act Sections 14(1) and 2(d)
`
`Dilution by blurring
`
`Dilution by tarnishment
`
`Trademark Act Sections 14(1) and 43(c)
`
`Trademark Act Sections 14(1) and 43(c)
`
`

`

`Marks cited by petitioner as basis for cancellation
`
`U.S. registration
`no.
`
`0726935
`
`Register
`
`Principal
`
`Registration date
`
`01/30/1962
`
`Application date
`
`10/17/1960
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`KEN
`
`NONE
`
`Class 022. First use: First Use: Sep 2, 1960 First Use In Commerce: Sep 2,
`1960
`Boy Doll
`
`U.S. registration
`no.
`
`0780598
`
`Register
`
`Principal
`
`Registration date
`
`11/24/1964
`
`Application date
`
`12/16/1963
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`KEN
`
`NONE
`
`Class 022. First use: First Use: Sep 2, 1960 First Use In Commerce: Sep 2,
`1960
`Doll Clothes and Doll Accessories
`
`U.S. registration
`no.
`
`3317103
`
`Register
`
`Principal
`
`Registration date
`
`10/23/2007
`
`Application date
`
`09/15/2004
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`KEN
`
`NONE
`
`Class 025. First use: First Use: Jun 13, 2005 First Use In Commerce: Jun 13,
`2005
`CLOTHING RELATING TO TOYS AND DOLLS, NAMELY, SHIRTS
`
`U.S. registration
`no.
`
`6595905
`
`Register
`
`Principal
`
`Registration date
`
`12/21/2021
`
`Word mark
`
`Design mark
`
`KEN
`
`Description of
`
`NONE
`
`Application date
`
`02/04/2021
`
`Foreign priority
`date
`
`NONE
`
`

`

`mark
`
`Goods/services
`
`Class 028. First use: First Use: Sep 2, 1960 First Use In Commerce: Sep 2,
`1960
`Dolls; Doll accessories; Doll clothing
`
`Attachments
`
`Petition to Cancel- KENIZOY.pdf(43453 bytes )
`
`Signature
`
`/Brian D. Wassom/
`
`Name
`
`Date
`
`Brian D. Wassom
`
`12/01/2023
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.:
`
`Mark: KENIZOY
`
`Reg. No. 7133171
`
`MATTEL, INC.
`
`Petitioner,
`
`v.
`
`JIAN LUO,
`
`Respondent.
`
`PETITION TO CANCEL
`
`Petitioner Mattel, Inc. (“Petitioner”), by its attorneys Warner Norcross + Judd LLP, for its
`
`Petition to Cancel against Respondent Jian Luo (“Respondent”), alleges as follows:
`
`1.
`
`Petitioner is a Delaware corporation with an address at 333 Continental Boulevard,
`
`Parties
`
`El Segundo, CA 90245.
`
`2.
`
`Respondent is a Chinese citizen with an address at 1005, Bldg 6, Honggufengshang
`
`Community Culture Avenue, Changleng Town, Xinjian Nanchang, Jiangxi China 310000.
`
`3.
`
`Petitioner believes that it will be damaged by continued registration of the mark
`
`KENIZOY (“Respondent’s Mark”). Therefore, pursuant to Lanham Act §13(a), 15 U.S.C. §
`
`1063(a), Petitioner has standing to petition to cancel Respondent’s Registration No. 7133171 (the
`
`“Registration”).
`
`1
`
`

`

`Petitioner and Its World-Famous KEN® Trademarks
`
`4.
`
`Petitioner is an American company founded in 1945, and a world leader in the
`
`design, manufacture and marketing of toys, games, playthings and family products. It has a
`
`presence in over 35 countries and territories and sells products in more than 100 nations.
`
`5.
`
`Petitioner is the owner of, among other marks, the famous KEN® trademark,
`
`which is used and registered around the world in connection with, among other things, dolls and
`
`related accessories.
`
`6.
`
`KEN® dolls have been marketed and sold in the United States and around the
`
`world for more than 60 years, often in conjunction with Petitioner’s world-famous BARBIE®
`
`toys, as the Barbie character’s friend or boyfriend. BARBIE® is one of the most recognizable
`
`brands in the world. For example, in 1991, the U.S. Court of Appeals for the Second Circuit
`
`recognized that “the ‘Barbie’ doll is the best selling toy doll in the world—96 percent of three to
`
`eleven year old girls in the United States own at least one. In the past 30 years 600 million Barbie
`
`dolls have been sold—one is sold every two seconds—and, in 1990 alone 26 million of them were
`
`sold, earning gross revenues for Mattel of $740 million.” Miss America Organization v. Mattel,
`
`Inc., 945 F.2d 536, 537 (2d Cir. 1991).
`
`7.
`
`More recent sales figures indicate that more than two billion BARBIE® dolls have
`
`been sold. Virtually every one of those children are familiar with KEN® dolls by virtue of having
`
`collected BARBIE® dolls, and the average child owns approximately one KEN® doll for every
`
`seven BARBIE® dolls they own1—which amounts to more than 285 million KEN® dolls sold.
`
`1 https://www.gq.com/story/the-ken-doll-reboot-beefy-cornrowed-and-pan-racial
`
`2
`
`

`

`8.
`
`In 2004, Petitioner launched a marketing campaign featuring the “breakup” of the
`
`fictional BARBIE® and KEN® characters, followed by their eventual reunion in a hugely
`
`successful, multi-media campaign in 2011 to coincide with the KEN® brand’s 50th anniversary.
`
`9.
`
`In 2010, Ken was one of the toys featured in the Pixar film Toy Story 3, voiced by
`
`actor Michael Keaton. Ken has also been a featured character in a variety of other entertainment
`
`content published by Petitioner, including in a web-based series and in several animated films.
`
`10.
`
`As a result of this near-ubiquitous exposure, the KEN® doll has become what GQ
`
`Magazine labeled an “icon of American masculinity” for multiple generations—so much so that,
`
`in 2017, the publication ran an in-depth feature article on Petitioner’s decision to update the doll’s
`
`traditional appearance. And in 2021, the magazine published another article about Ken, this time
`
`reporting on the limited-edition dolls and accessories designed by the high-end fashion brand
`
`Berluti in celebration of Ken’s 60th anniversary. In 2022, Petitioner announced a joint promotion
`
`with fashion brand Balmain that included an auction to purchase a one-of-a-kind NFT of Ken.
`
`11.
`
`In July 2023, Petitioner and Warner Bros. released Barbie: The Movie, starring
`
`actress Margot Robbie in the title role and co-starring Ryan Gosling as Ken. The film proved to
`
`be an instant, worldwide cultural sensation. As of this writing, it has grossed over $1.435 billion
`
`and broken multiple records, becoming Warner Bros.’s highest-grossing movie ever, the highest-
`
`grossing domestic movie of the year, the biggest domestic opening ever for a non-superhero film
`
`or sequel, and the highest-grossing live-action movie from a female director, among other
`
`achievements. The film’s plot centered around the relationship between Ken and Barbie, featuring
`
`the Ken-centered song “I’m Just Ken” and instantly famous trademarks such as “I am Kenough”
`
`3
`
`

`

`and “Ken-rgy.” The Wall Street Journal reported that “Critics are saying Barbie’s boyfriend is the
`
`breakout star of the film. Real-life Kens are suddenly hearing their names a lot more.”2
`
`12.
`
`In September 2023, the KEN® doll was named as a finalist for induction into the
`
`National Toy Hall of Fame.
`
`13.
`
`In recognition of the goodwill developed by this long history of commercial use,
`
`the U.S. Patent and Trademark Office has issued multiple trademark registrations to Petitioner for
`
`the KEN® mark. Specifically, and most relevant to this proceeding, Petitioner owns the following
`
`U.S. trademark registrations (“Petitioner’s Marks”):
`
`U.S. Reg. No. Mark
`
`Excerpt of Goods
`
`0726935
`0780598
`
`KEN
`KEN
`
`“Boy Doll,” in International Class 28.
`“Doll Clothes and Doll Accessories,” in International Class 28.
`
`3317103
`
`KEN
`
`6595905
`
`KEN
`
`“Clothing Relating To Toys And Dolls, Namely, Shirts,” in
`International Class 25.
`“Dolls; Doll accessories; Doll clothing” in International Class 28.
`
`14.
`
`Petitioner has used one or more of Petitioner’s Marks in interstate commerce in
`
`the United States consistently since at least 1960, and has owned relevant U.S. registrations since
`
`1962. As a result, Petitioner is the rightful and exclusive owner of Petitioner’s Marks. Petitioner’s
`
`Marks have been used in connection with the goods set forth in the chart above, as well as a wide
`
`range of other goods and services through common law use (collectively, “Petitioner’s Goods and
`
`Services”). More than one of Petitioner’s registrations is incontestable.
`
`2 https://www.wsj.com/articles/ken-barbie-name-ryan-ddafa0d1
`
`4
`
`

`

`15.
`
`Petitioner’s Goods and Services provided under Petitioner’s Marks have been
`
`extensively and continuously sold, marketed, advertised and promoted throughout the United
`
`States.
`
`16.
`
`As a result of the quality of Petitioner’s Goods and Services, and of the widespread
`
`promotion thereof under Petitioner’s Marks, the goods and services have met with great
`
`commercial success and widespread consumer and media recognition. In addition, Petitioner’s
`
`Marks have become symbols of Petitioner and its related companies. Petitioner’s Goods and
`
`Services, and Petitioner’s goodwill, and some or all of Petitioner’s Marks are famous in the United
`
`States with respect to Petitioner’s Goods and Services, and were famous prior to any use by
`
`Respondent.
`
`Respondent and Its Registration for KENIZOY
`
`17.
`
`Respondent’s Registration, issued August 8, 2023, recites Respondent’s Mark for
`
`use with goods described as “Abdomen protectors for Taekwondo; Baseball bat racks; Chest
`
`protectors for athletic use; Christmas tree decorations; Climbing skins for use with touring skis;
`
`Fishing safety harness; Goalkeepers' gloves; Infant action crib toys; Kidney belts for sports; Nuts
`
`and bolts for skateboards; Pet toys; Toy models” in International Class 28 (“Respondent’s Goods”).
`
`18.
`
`Respondent’s Registration lists a date of first use anywhere and of first use in
`
`commerce as of July 1, 2022.
`
`19.
`
`Respondent is not in privity to, nor the successor-in-interest of, any party that may
`
`have used Respondent’s Mark in commerce in the past.
`
`Likelihood of Confusion, 15 U.S.C. §1052(d)
`
`20.
`
`Petitioner incorporates herein by reference each of the foregoing paragraphs.
`
`5
`
`

`

`21.
`
`Petitioner has priority based on its valid and subsisting registrations for Petitioner’s
`
`Marks and based on its prior and continuous use of Petitioner’s Marks in commerce in connection
`
`with Petitioner’s Goods and Services long before the filing date of the opposed Registration and
`
`before any use in commerce alleged by Respondent.
`
`22.
`
`Respondent’s Mark is highly similar to Petitioner’s Marks in appearance, sound,
`
`and commercial impression. Although Respondent’s Mark has no inherent meaning, consumers
`
`encountering Respondent’s Mark in commerce in the United States are likely to perceive the first
`
`syllable as the given name “Ken,” which, of course, is identical to Petitioner’s famous KEN®
`
`Mark. The remaining syllables are likely to be overlooked as meaningless. Therefore, the two
`
`parties’ marks are materially identical in both appearance and pronunciation. They would be
`
`virtually indistinguishable to the average American consumer viewing or hearing the marks in the
`
`normal course.
`
`23.
`
`Respondent’s Goods are materially identical to Petitioner’s Goods and Services as
`
`well. All of Respondent’s Goods fall within Class 28, the primary class in which most of
`
`Petitioner’s Goods are registered. Respondent’s Goods include various types of “toys” and other
`
`amusements, which are materially identical to the “dolls,” “doll clothes,” and “doll accessories”
`
`covered by Petitioner’s Marks. The remainder of Respondent’s Goods—especially the sporting
`
`goods—are the types of goods that consumers are likely to assume is branded or sponsored by
`
`Petitioner, similar to the variety of other licensed goods Petitioner authorizes for sale under marks
`
`owned by Petitioner.
`
`24.
`
`Petitioner’s Marks are or have been used in virtually all mainstream channels of
`
`trade, and marketed generally across virtually all demographic lines—not only to children, but also
`
`6
`
`

`

`to the family members who purchase gifts for children and to adults nostalgic for the goods and
`
`services bearing Petitioner’s Marks. Members of each of these groups are likely to be among those
`
`who may purchase or see advertisements for Respondent’s Goods, and Respondent’s Registration
`
`does not place any limits on the consumers to whom Respondent’s Goods are marketed or
`
`provided.
`
`25.
`
`Respondent’s Goods, customers, and marketing channels so closely overlap with
`
`Petitioner’s Goods and Services as to be highly likely to cause confusion or mistake, or to deceive
`
`consumers under Section 2(d) of the Lanham Act, as amended, 15 U.S.C. §1052(d).
`
`Dilution, 15 U.S.C. §1125(c)
`
`26.
`
`27.
`
`Petitioner incorporates herein by reference each of the foregoing paragraphs.
`
`Petitioner and its related companies have engaged in nationwide advertising,
`
`promotion, and use of its distinctive Petitioner’s Marks. Further, Petitioner, directly and through
`
`its related companies, has had extensive sales of Petitioner’s Goods and Services in connection
`
`with its Petitioner’s Marks over several decades.
`
`28.
`
`Petitioner’s Marks have for many years received extensive media attention and
`
`publicity nationwide. Such pervasive and frequent media attention and publicity has had a
`
`substantial impact on the public, and has long created an association in the minds of consumers
`
`between Petitioner’s Marks and Petitioner and Petitioner’s related companies.
`
`29.
`
`Petitioner’s Marks are strong and distinctive marks that became famous, as
`
`defined under Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c), well before both the filing
`
`date of the opposed Registration, and any first use alleged by Respondent.
`
`7
`
`

`

`30.
`
`Respondent has intentionally chosen Respondent’s Mark in order to create an
`
`association in the minds of those in the marketplace between Petitioner’s Marks and Respondent
`
`and Respondent’s Goods.
`
`31.
`
`In view of the similarities of the parties’ marks and the fame of Petitioner’s
`
`Marks, Respondent’s Mark so closely resembles Petitioner’s famous marks that it is likely to
`
`cause dilution by blurring of the distinctive quality of such marks.
`
`WHEREFORE, Petitioner prays that Registration No. 7133171 be cancelled, and that this
`
`petition be sustained in favor of Petitioner. A filing fee for the Petition to Cancel in the required
`
`amount is being submitted herewith via electronic funds transfer.
`
`Date: December 1, 2023
`
`Respectfully submitted,
`
`By: /Brian D. Wassom/
`Brian D. Wassom
`Warner Norcross + Judd LLP
`12900 Hall Rd., Suite 200
`Sterling Heights, MI 48313
`586.303.4139
`bwassom@wnj.com
`
`CERTIFICATE OF TRANSMITTAL
`
`I hereby certify that on December 1, 2023, this correspondence is being electronically
`transmitted in PDF format to the Trademark Trial and Appeal Board through the Electronic System
`for Trademark Trials and Appeals (ESTTA).
`
`/Denise Keilch/
`
`8
`
`

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