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Sherlock Gnomes

Sherlock Gnomes

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Published by: Eriq Gardner on Mar 26, 2014
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04/01/2014

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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.

gov ESTTA Tracking number: Filing date:

ESTTA593522 03/19/2014

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 Granted to Date of previous extension Address Conan Doyle Estate Limited 03/19/2014

9 London Road Southampton, SO152AE UNITED KINGDOM Benjamin Allison Sutin Thayer & Browne 317 Paseo de Peralta Santa Fe, NM 87501 UNITED STATES bwa@sutinfirm.com,gmr@sutinfirm.com,slc@sutinfirm.com Phone:505-988-5521

Attorney information

Applicant Information
Application No Opposition Filing Date International Registration No. Applicant 85560470 03/19/2014 NONE Rocket Pictures Limited 1 Blythe Road London, GBX W140HG GBX Publication date Opposition Period Ends International Registration Date 11/19/2013 03/19/2014 NONE

Goods/Services Affected by Opposition
Class 041. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Education, namely, providing classes, seminars, workshops in the field of math,biology, history, animation; providing of training in the field of computers, football and other fields; entertainment in the nature of television news shows, theater product related entertainment fields; sporting and cultural activities, namely, organizing sporting events in the nature of triathlons, organization of cultural shows; audio and visual entertainment services, namely, entertainment in the nature of visual and audio performances by an actor and related services; production, distribution and management of motion picture films including animated motion pictures, cable television programmes and television programmes, radioshows, stage plays and performances andtheatrical productions, namely, entertainment media production services for motion pictures, television, and Internet, distribution of motion picture films, radio programs, and televisions shows; showing, leasing and rental of motion picture films; entertainment services, namely, the provision of continuing programs, segments, shows featuring live-action, comedy, drama and animated television programs; production of live-action comedy,drama and animated television programs;provision of non-downloadable live-action, comedy, drama and animated motion picture

theatrical films via a video-on-demand service; production of live-action,comedy, drama and animated motion picture theatrical films; live stage performances in the nature of theatrical performances both animated and live action; production of theater shows, ice-skating shows, dances and cabarets; Internet services in the nature of providing information via a global computer network in the field of entertainment relating specifically to music, movies, and television series; providing general interest news inthe fields of current events, film and music; entertainment services, namely, amultimedia program series featuring comedy, action and adventure distributed via various platforms across multiple forms of transmission media and educational information in the field of education, television and media via a global computer network or the Internet; providing information regarding live-action, comedy, drama and animated television program via a global computer network; providing entertainment in the nature of live-action, comedy, drama, and animated television programs via a global computer network; provision of recreational facilities for hunting, fishing, basketball and related services; provision of movie theatres, arcade centers, amusement and theme parks; training of magicians; entertainment in the nature of magic show services;educational services, namely, a continuing program about language, news, current events, etc. accessible by television,radio, satellite, and audio, video, andcomputer networks; services relating tomovie studios, namely, providing movie studios, production and distribution of movies; publishing services, namely, magazine publishing, publishing of electronic publications, newspaper publishing; publishing of printed matter, namely, books, magazines, newspapers; publishing byelectronic means, namely, publication of electronic publications; publishing ofstories in the form of books, magazines, comics; publication of books; book publishing; publication of electronic bookson-line; consultation and information services relating to the publication of books

Grounds for Opposition
Priority and likelihood of confusion Dilution Torres v. Cantine Torresella S.r.l.Fraud Trademark Act section 2(d) Trademark Act section 43(c) 808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)

Marks Cited by Opposer as Basis for Opposition
U.S. Application No. Registration Date Word Mark Design Mark 77937813 NONE SHERLOCK HOLMES Application Date Foreign Priority Date 02/17/2010 NONE

Description of Mark Goods/Services

NONE Class 016. First use: First Use: 0 First Use In Commerce: 0 Printed matter, namely books, short stories, magazines, and newsletters in the field of detective fiction; photographs;story books 77937845 Application Date 02/17/2010

U.S. Application No.

Registration Date Word Mark Design Mark

NONE SHERLOCK HOLMES

Foreign Priority Date

NONE

Description of Mark Goods/Services

NONE Class 009. First use: First Use: 0 First Use In Commerce: 0 Motion picture and television films featuring musical, dramatic, comedic and theatrical performance; prerecorded goods,namely prerecorded audio and video cassettes, compact discs, and digital versatile discs all featuring audio books and stories in the field of detective fiction, motion picture and television films, animated cartoons, radio programs, music, and games; downloadable electronic publications in the nature of e-zines and electronic books in the field of detective fiction 77937852 NONE SHERLOCK HOLMES Application Date Foreign Priority Date 02/17/2010 NONE

U.S. Application No. Registration Date Word Mark Design Mark

Description of Mark Goods/Services

NONE Class 028. First use: First Use: 0 First Use In Commerce: 0 Games and playthings, namely playing cards, board games, puzzles, and action figures 77937863 NONE SHERLOCK HOLMES Application Date Foreign Priority Date 02/17/2010 NONE

U.S. Application No. Registration Date Word Mark

Design Mark

Description of Mark Goods/Services

NONE Class 041. First use: First Use: 0 First Use In Commerce: 0 Entertainment services, namely production of motion pictures, television dramas, stage plays, and radio programs; entertainment services, namely providing online electronic games, online computer games, and online video games 85229790 NONE Application Date Foreign Priority Date 01/31/2011 NONE

U.S. Application No. Registration Date Word Mark Design Mark

SHERLOCK HOLMES CONAN DOYLE ESTATE LTD

Description of Mark

The mark consists of the silhouette of Sherlock Holmes with deerstalker and pipe, superimposed over the profile of Sir Arthur Conan Doyle, surrounded by the circular text "SHERLOCK HOLMES" in bold and "CONAN DOYLE ESTATE LTD," and enclosedwithin a circle. Class 016. First use: First Use: 0 First Use In Commerce: 0 Books and short stories in the field ofdetective fiction 4313984 04/02/2013 SHERLOCK HOLMES Application Date Foreign Priority Date 10/14/2011 NONE

Goods/Services

U.S. Registration No. Registration Date Word Mark

Design Mark

Description of Mark Goods/Services

NONE Class 028. First use: First Use: 2012/12/03 First Use In Commerce: 2012/12/03 Electronic gaming machines, namely, devices that accept a wager 86126503 NONE SHERLOCK HOLMES Application Date Foreign Priority Date 11/22/2013 NONE

U.S. Application No. Registration Date Word Mark Design Mark

Description of Mark Goods/Services

NONE Class 041. First use: First Use: 2013/10/09 First Use In Commerce: 2013/10/09 Organisation of exhibitions for cultural, educational, and entertainment purposes NONE NONE Visual depections of the literary character Sherlock Holmes, including images with Holmes characteristic deerstalker and pipe. Books, periodicals, motion pictures, entertainment services, television series, radio plays, stage plays, gaming machines, audio and ebooks, CD-ROM materials, comic books, games, playing cards, and figuers. Application Date NONE

U.S. Application/ Registration No. Registration Date Word Mark Goods/Services

Attachments

77937813#TMSN.jpeg( bytes ) 77937845#TMSN.jpeg( bytes ) 77937852#TMSN.jpeg( bytes ) 77937863#TMSN.jpeg( bytes )

85229790#TMSN.jpeg( bytes ) 85447511#TMSN.jpeg( bytes ) 86126503#TMSN.jpeg( bytes ) Notice of Oppostion.pdf(38695 bytes )

Certificate of Service
The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address record by First Class Mail on this date.

Signature Name Date

/Benjamin Allison/ Benjamin Allison 03/19/2014

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TR IAL AND APPEAL BOARD

CONAN DOYLE ESTATE, LTD. Opposer, Opposition No. Serial No. 82,560/470

v. ROCKET PICTURES LIMITED, Applicant. _________________________________________ NOTICE OF OPPOSITION Conan Doyle Estate, Ltd., a United Kingdom corporation whose address is 9 London Road, Southampton Hants, SO15 2AE (Opposer) believes it will be damaged by registration of SHERLOCK GNOMES, Application Serial No. 85,560/470 (the Opposed Application), and hereby opposes the same. Pursuant to 15 U.S.C. §§ 1052, 1063, and 1125, Opposer alleges as follows: 1. Opposer owns and manages trademark rights associated with the creator of the character Sherlock Holmes. Opposer owns Reg. 4,313,984 for SHERLOCK HOLMES®, Application Serial nos. 77/937,813, 77/937,845, 77/937,852, 77/937,863, and 86/126,503 for SHERLOCK HOLMES for a variety of goods and services, including in international class 41, and SHERLOCK HOLMES CONAN DOYLE ESTATE LTD and design, Serial no. 85/229,790. All of Opposer’s pending applications have filing dates prior to the Opposed Application. Opposer also owns common law trademark rights in SHERLOCK HOLMES and in visual depictions of the literary character Sherlock Homes, including

images with Holmes’s characteristic deerstalker and pipe, for a variety of goods and services. Collectively these trademarks are referred to as Opposer’s Marks. 2. Opposer regularly licenses Opposer’s Marks for use in connection with a wide variety of goods and services, including books, periodicals, motion pictures, television series, radio plays, stage plays, gaming machines, entertainment services, audio and ebooks, CD-ROM materials, comic books, games, computer games, playing cards, and figures. 3. Upon information and belief, Applicant Rocket Pictures Limited is a corporation organized under the laws of the United Kingdom whose address is 1 Blythe Road, London, United Kingdom (the Applicant). Applicant has filed application Serial No. 85/560,470 for SHERLOCK GNOMES (the Opposed Application). 4. The Opposed Application seeks registration based on an intent to use SHERLOCK GNOMES in connection with the following goods and services: Education, namely, providing classes, seminars, workshops in the field of math, biology, history, animation; providing of training in the field of computers, football and other fields; entertainment in the nature of television news shows, theater product related entertainment fields; sporting and cultural activities, namely, organizing sporting events in the nature of triathlons, organization of cultural shows; audio and visual entertainment services, namely, entertainment in the nature of visual and audio performances by an actor and related services; production, distribution and management of motion picture films including animated motion pictures, cable television programmes and television programmes, radio shows, stage plays and performances and theatrical productions, namely, entertainment media production services for motion pictures, television, and Internet, distribution of motion picture films, radio programs, and televisions shows; showing, leasing and rental of motion picture films; entertainment services, namely, the provision of continuing 2
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programs, segments, shows featuring live-action, comedy, drama and animated television programs; production of live-action comedy, drama and animated television programs; provision of non-downloadable live-action, comedy, drama and animated motion picture theatrical films via a video-on-demand service; production of liveaction, comedy, drama and animated motion picture theatrical films; live stage performances in the nature of theatrical performances both animated and live action; production of theater shows, ice-skating shows, dances and cabarets; Internet services in the nature of providing information via a global computer network in the field of entertainment relating specifically to music, movies, and television series; providing general interest news in the fields of current events, film and music; entertainment services, namely, a multimedia program series featuring comedy, action and adventure distributed via various platforms across multiple forms of transmission media and educational information in the field of education, television and media via a global computer network or the Internet; providing information regarding live-action, comedy, drama and animated television program via a global computer network; providing entertainment in the nature of live-action, comedy, drama, and animated television programs via a global computer network; provision of recreational facilities for hunting, fishing, basketball and related services; provision of movie theatres, arcade centers, amusement and theme parks; training of magicians; entertainment in the nature of magic show services; educational services, namely, a continuing program about language, news, current events, etc. accessible by television, radio, satellite, and audio, video, and computer networks; services relating to movie studios, namely, providing movie studios, production and distribution of movies; publishing services, namely, magazine publishing, publishing of electronic publications, newspaper publishing; publishing of printed matter, namely, books, magazines, newspapers; publishing by electronic means, namely, publication of electronic publications; publishing of stories in the form of books, magazines, comics; publication of books; book publishing; publication of electronic books on-line; consultation and information services relating to the publication of books; in class 41;

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5. The Opposed Application was published for opposition in the Official Gazette on November 19, 2013. Two extensions of time to file an opposition were requested and granted, and this Notice of Opposition is timely filed. 6. Opposer’s priority in Opposer’s Marks predates any priority which may be claimed by Applicant. 7. Opposer’s goods and services and those of Applicant are identical or closely related. 8. The mark in the Opposed Application so resembles Opposer’s Marks that, if used on the goods set forth in the Opposed Application, it is likely to cause confusion, mistake, and to deceive purchasers and potential purchasers into erroneously believing that Opposer is affiliated with or has authorized, sponsored, or licensed Applicant’s use of SHERLOCK GNOMES, in violation of 15 U.S.C. § 1052(d). 9. Opposer will be damaged by registration of the mark shown in the Opposed Application because registration would give Applicant prima facie evidence of ownership of an exclusive right to use a mark that is confusingly similar to Opposer’s marks, which rights will interfere with Opposer’s use of its marks. 10. Opposer’s Marks are distinctive and famous in the United States, being widely recognized as a designation of the source of Opposer’s goods and services. Opposer’s Marks became distinctive and famous before the filing date of the Opposed Application. 11. Registration of the mark in the Opposed Application will damage Opposer because, if put into use for the goods listed in the Opposed Application, it is likely to cause dilution of Opposer’s Marks in violation of 15 U.S.C. § 1125(c). Registration of SHERLOCK GNOMES will erode the public’s exclusive identification of Opposer’s 4
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Marks with Opposer and will tarnish and degrade the positive associations and prestigious connotations of Opposer’s Marks. 12. At the time it filed the Opposed Application, Applicant had knowledge of Opposer’s rights in SHERLOCK HOLMES. In spite of this knowledge, Applicant declared in support of the Opposed Application that to best of its knowledge and belief no other person, firm, corporation, or association had the right to use the mark in the Opposed Application in commerce either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods or services of such other person, to cause confusion or to cause mistake or to deceive. 13. At the time Applicant signed the declaration, Applicant was aware of Opposer and of Opposer’s senior rights in SHERLOCK HOLMES, and knew that Applicant’s mark was so similar to Opposer’s Marks as to be likely to cause confusion or mistake, or to deceive. Accordingly, Applicant knew that the declaration was false. 14. By submitting a knowingly false declaration regarding a material fact in order to procure a registration to which it is not entitled, Applicant has committed fraud on the Patent and Trademark Office. WHEREFORE Opposer respectfully prays that the Opposed Application be refused and that this opposition be sustained. Dated: March 19, 2014

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Respectfully submitted, SUTIN THAYER & BROWNE A Professional Corporation

By__/s/ Benjamin Allison______________ Benjamin Allison Post Office Box 2187 Santa Fe, New Mexico 87504-2187 (505) 988-5521 Counsel for Opposer Conan Doyle Estate Ltd.

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CERT IFICATE OF SERVICE I hereby certify that the foregoing Notice of Opposition was served March 19, 2014 by first class mail and email, postage prepaid to: Jonathan D. Reichman Kenyon & Kenyon LLP One Broadway New York, New York 10004 212.425.7200 tmdocketny@kenyon.com SUTIN THAYER & BROWNE A Professional Corporation

By______/s/ Benjamin Allison_______________

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