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

gov
ESTTA Tracking number:
Filing date:

ESTTA628838
09/23/2014

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 parties oppose registration of the indicated application.

Opposers Information
Name

Fifty-Six Hope Road Music Limited

Granted to Date
of previous extension

09/24/2014

Address

Aquamarine House, Cable Beach
Nassau,
BAHAMAS

Name

Ky-Mani, Damian, Julian, Stephen, David Marley

Entity

Individual

Address

16115 SW 117th Avenue, Unit 21-A
Miami, FL 33177
UNITED STATES

Attorney information

Jesse Saivar
Greenberg Glusker Fields Claman & Machtinger LLP
1900 Avenue of the Stars, 21st Floor
Los Angeles, CA 90067
UNITED STATES
jsaivar@greenbergglusker.com, nshabani@greenbergglusker.com, ipmail@greenbergglusker.com Phone:310.553.3610

Citizenship

UNITED STATES

Applicant Information
Application No

86114638

Publication date

05/27/2014

Opposition Filing
Date

09/23/2014

Opposition Period Ends

09/24/2014

Applicant

S & M Media Group
4219 Apt E Yanceyville RD
Browns Summit, NC 27214
UNITED STATES

Goods/Services Affected by Opposition
Class 009. First Use: 0 First Use In Commerce: 0
All goods and services in the class are opposed, namely: Audio and video recordings featuring music
and artistic performances; Compact discs featuring music; Digital music systems that synchronizes
digital radio files stored on a home unit, a car unit, or portable unit and that may be backed up to an
internet depository; Downloadable MP3 files, MP3 recordings, on-line discussion board posts, webcasts, webinars and podcasts featuring music, audio books in the field of rap, and news broadcasts;
Downloadable ring tones, graphics and music via a global computer network and wireless devices;
Downloadable video recordings featuring music; Downloadable music via the internet and wireless
devices; Musical recordings; Musical video recordings; Visual recordings and audiovisual recordings
featuring music and animation

Grounds for Opposition
False suggestion of a connection

Trademark Act section 2(a)

Priority and likelihood of confusion

Trademark Act section 2(d)

Dilution

Trademark Act section 43(c)

Marks Cited by Opposer as Basis for Opposition
U.S. Registration
No.

3535883

Application Date

02/22/2007

Registration Date

11/25/2008

Foreign Priority
Date

NONE

Word Mark

THE MARLEY BROTHERS

Design Mark

Description of
Mark

NONE

Goods/Services

Class 041. First use: First Use: 2004/08/07 First Use In Commerce: 2004/08/07
Entertainment, namely, live performances by a musical band

U.S. Registration
No.

2349361

Application Date

05/21/1998

Registration Date

05/16/2000

Foreign Priority
Date

NONE

Word Mark

BOB MARLEY

Design Mark

Description of
Mark

NONE

Goods/Services

Class 003. First use: First Use: 1996/00/00 First Use In Commerce: 1996/00/00
incense
Class 006. First use: First Use: 1995/00/00 First Use In Commerce: 1995/00/00
novelty license plate of non-precious metal
Class 009. First use: First Use: 1996/00/00 First Use In Commerce: 1996/00/00
plastic cases for beepers; magnets
Class 014. First use: First Use: 1994/00/00 First Use In Commerce: 1994/00/00

jewelry; watches; medallions
Class 016. First use: First Use: 1990/00/00 First Use In Commerce: 1990/00/00
greeting cards; stickers; stationery type portfolios; posters; postcards; postcard
books; songbooks; decals; trading cards; calendars; novels; bookmarks
Class 018. First use: First Use: 1992/00/00 First Use In Commerce: 1992/00/00
backpacks; fanny packs; wallets; tote bags
Class 021. First use: First Use: 1995/00/00 First Use In Commerce: 1995/00/00
mugs
Class 024. First use: First Use: 1990/00/00 First Use In Commerce: 1990/00/00
textile wall hangings
Class 025. First use: First Use: 1990/00/00 First Use In Commerce: 1990/00/00
T-shirts; thermal shirts; jackets; hats; caps; sweatshirts; ties; bandannas
Class 026. First use: First Use: 1990/00/00 First Use In Commerce: 1990/00/00
ornamental cloth patches
Class 034. First use: First Use: 1996/00/00 First Use In Commerce: 1996/00/00
smoking pipes
U.S. Registration
No.

3934085

Application Date

05/30/2010

Registration Date

03/22/2011

Foreign Priority
Date

NONE

Word Mark

BOB MARLEY

Design Mark

Description of
Mark

NONE

Goods/Services

Class 009. First use: First Use: 1970/00/00 First Use In Commerce: 1970/00/00
Audio/visual recordings featuring music; downloadable ring tones for cell
phones, musical sound recordings; digital music downloadable from the Internet

U.S. Registration
No.

3692924

Application Date

03/09/2006

Registration Date

10/06/2009

Foreign Priority
Date

NONE

Word Mark

BOB MARLEY

Design Mark

Description of
Mark

NONE

Goods/Services

Class 043. First use: First Use: 1999/02/06 First Use In Commerce: 1999/02/06
restaurant services, namely, preparation and service of food and beverages for
consumption

U.S. Registration
No.

4340082

Application Date

05/30/2010

Registration Date

05/21/2013

Foreign Priority
Date

NONE

Word Mark

BOB MARLEY

Design Mark

Description of
Mark

NONE

Goods/Services

Class 009. First use: First Use: 2011/07/27 First Use In Commerce: 2011/07/27
cell phone accessories, namely, headsets, audio speakers for cell phones, and
hands free headsets; computer carrying cases; electronic docking and charging
stations for cell phones; electronic docking stations including speakers for portable electronic devices and media players;downloadable photo images; ear
buds; eyewear; eyewear cases; goggles for sports; headphones; loudspeakers;
and covers for cell phones and other mobile devices

U.S. Registration
No.

4572816

Application Date

02/19/2012

Registration Date

07/22/2014

Foreign Priority
Date

NONE

Word Mark

BOB MARLEY

Design Mark

Description of
Mark

NONE

Goods/Services

Class 015. First use: First Use: 2008/03/31 First Use In Commerce: 2008/03/31
Musical instruments

U.S. Registration
No.

4440368

Application Date

02/19/2012

Registration Date

11/26/2013

Word Mark

BOB MARLEY

Foreign Priority
Date

NONE

Design Mark

Description of
Mark

NONE

Goods/Services

Class 015. First use: First Use: 2011/04/04 First Use In Commerce: 2011/04/04
Guitar picks; musical instrument accessories, namely, guitar straps

U.S. Registration
No.

4425858

Application Date

05/30/2010

Registration Date

10/29/2013

Foreign Priority
Date

NONE

Word Mark

BOB MARLEY

Design Mark

Description of
Mark

NONE

Goods/Services

Class 029. First use: First Use: 2010/07/02 First Use In Commerce: 2010/07/02
fruit-based food beverages; milk-based beverage containing coffee

U.S. Registration
No.

4422220

Application Date

05/30/2010

Registration Date

10/22/2013

Foreign Priority
Date

NONE

Word Mark

BOB MARLEY

Design Mark

Description of
Mark

NONE

Goods/Services

Class 030. First use: First Use: 2010/07/02 First Use In Commerce: 2010/07/02
coffee; coffee beans; coffee-based beverages; espresso; herbal food beverages; tea; tea-based beverages; and unroasted coffee

U.S. Registration
No.

4422221

Application Date

05/30/2010

Registration Date

10/22/2013

Foreign Priority
Date

NONE

Word Mark

BOB MARLEY

Design Mark

Description of
Mark

NONE

Goods/Services

Class 032. First use: First Use: 2010/07/02 First Use In Commerce: 2010/07/02
fruit drinks; fruit-flavored beverages;herbal juices; lemonade

U.S. Registration
No.

4375700

Application Date

12/11/2012

Registration Date

07/30/2013

Foreign Priority
Date

NONE

Word Mark

BOB MARLEY A TRIBUTE TO FREEDOM

Design Mark

Description of
Mark

The mark consists of a rendering of reggae legend "Bob Marley" set within an
oval design, with the words "BOB MARLEY" centered above the oval in stylized
upper-case letters, and the words "A TRIBUTE TO FREEDOM", in an italicized
font, centered between two stars within a rectangular banner below the oval.

Goods/Services

Class 041. First use: First Use: 1999/02/06 First Use In Commerce: 1999/02/06
nightclub services, namely, arranging and conducting nightclub entertainment
events
Class 043. First use: First Use: 1999/02/06 First Use In Commerce: 1999/02/06
Restaurant services, take-out restaurant services

U.S. Registration
No.

2820741

Application Date

08/19/2002

Registration Date

03/09/2004

Foreign Priority
Date

NONE

Word Mark

BOB MARLEY AND THE WAILERS

Design Mark

Description of
Mark

NONE

Goods/Services

Class 009. First use: First Use: 1973/00/00 First Use In Commerce: 1973/00/00
Series of sound and video recordings featuring music and downloadable sound
andvideo recordings featuring music
Class 025. First use: First Use: 1973/00/00 First Use In Commerce: 1973/00/00
T-shirts, thermal shirts, [ jackets, ] hats, caps, sweatshirts [, ties, bandanas ]

U.S. Registration
No.

3849342

Application Date

05/17/2009

Registration Date

09/21/2010

Foreign Priority
Date

NONE

Word Mark

BOB MARLEY AND THE WAILERS

Design Mark

Description of
Mark

NONE

Goods/Services

Class 018. First use: First Use: 2009/01/00 First Use In Commerce: 2009/01/00
All purpose carrying bags

U.S. Registration
No.

4222036

Application Date

05/03/2012

Registration Date

10/09/2012

Foreign Priority
Date

NONE

Word Mark

MARLEY

Design Mark

Description of
Mark

NONE

Goods/Services

Class 009. First use: First Use: 2011/07/27 First Use In Commerce: 2011/07/27
Headphones; ear buds; audio speakers; electronic docking stations; boom
boxes; downloadable video recordings featuring music, artistic performances,
and information about audio equipment; downloadable electronic newsletters in
the field ofentertainment and audio equipment

U.S. Registration
No.

4333844

Application Date

05/03/2012

Registration Date

05/14/2013

Foreign Priority
Date

NONE

Word Mark

MARLEY

Design Mark

Description of
Mark

NONE

Goods/Services

Class 041. First use: First Use: 2011/01/00 First Use In Commerce: 2011/01/00
Entertainment services, namely, providing a website featuring information relating to music tours and live stage eventsrelating thereto; nondownloadable
videorecordings featuring music, and artistic performances; organizing and conducting music tours; providing online electronic newsletters delivered by email in
thefield of entertainment and audio equipment

U.S. Registration
No.

4394278

Application Date

04/14/2009

Registration Date

09/03/2013

Foreign Priority
Date

NONE

Word Mark

MARLEY

Design Mark

Description of
Mark

NONE

Goods/Services

Class 025. First use: First Use: 2003/02/00 First Use In Commerce: 2003/02/00
Clothing, namely, shirts and headwear

U.S. Registration
No.

4222035

Application Date

05/03/2012

Registration Date

10/09/2012

Foreign Priority
Date

NONE

Word Mark

MMARLEY

Design Mark

Description of
Mark

The mark consists of a caret centered between the peaks of a stylized capital
"M" all centered above the word "MARLEY".

Goods/Services

Class 009. First use: First Use: 2011/07/27 First Use In Commerce: 2011/07/27
Headphones; ear buds; audio speakers; electronic docking stations; boom
boxes; downloadable video recordings featuring music, artistic performances,
and information about audio equipment

U.S. Registration
No.

4333843

Application Date

05/03/2012

Registration Date

05/14/2013

Foreign Priority
Date

NONE

Word Mark

MMARLEY

Design Mark

Description of
Mark

The mark consists of a caret centered between the peaks of a stylized capital
"M", all centered above the word "MARLEY".

Goods/Services

Class 041. First use: First Use: 2011/01/00 First Use In Commerce: 2011/01/00
Entertainment services, namely, providing a website featuring information relating to music tours and live stage eventsrelating thereto; nondownloadable
videorecordings featuring music, and artistic performances; organizing and conducting music tours; providing online electronic newsletters delivered by email in
thefield of entertainment and audio equipment

U.S. Registration
No.

4150381

Application Date

05/05/2008

Registration Date

05/29/2012

Foreign Priority
Date

NONE

Word Mark

MARLEY COFFEE

Design Mark

Description of
Mark

NONE

Goods/Services

Class 016. First use: First Use: 2011/12/21 First Use In Commerce: 2011/12/21
greeting cards, blank journals, bumper stickers, calendars, and stickers

U.S. Registration
No.

4242186

Application Date

05/05/2008

Registration Date

11/13/2012

Foreign Priority
Date

NONE

Word Mark

MARLEY COFFEE

Design Mark

Description of
Mark

NONE

Goods/Services

Class 021. First use: First Use: 2011/12/21 First Use In Commerce: 2011/12/21
Coffee cups, coffee mugs, travel mugs and beverageware

U.S. Registration
No.

4158045

Application Date

05/05/2008

Registration Date

06/12/2012

Foreign Priority
Date

NONE

Word Mark

MARLEY COFFEE

Design Mark

Description of
Mark

NONE

Goods/Services

Class 025. First use: First Use: 2011/12/21 First Use In Commerce: 2011/12/21
Clothing, namely, shirts, aprons, sweatshirts, underwear, infant wear; sleepwear; footwear; headwear

U.S. Registration
No.

3871574

Application Date

05/05/2008

Registration Date

11/02/2010

Foreign Priority
Date

NONE

Word Mark

MARLEY COFFEE

Design Mark

Description of
Mark

NONE

Goods/Services

Class 025. First use: First Use: 2009/05/28 First Use In Commerce: 2009/05/28
Clothing, namely, T-shirts and zipperedpull-over jackets

U.S. Registration
No.

4254177

Application Date

05/05/2008

Registration Date

12/04/2012

Foreign Priority
Date

NONE

Word Mark

MARLEY COFFEE

Design Mark

Description of
Mark

NONE

Goods/Services

Class 030. First use: First Use: 2009/04/22 First Use In Commerce: 2009/04/22
Coffee, coffee-based beverages, espresso, tea, coffee beans, unroasted coffee

U.S. Registration
No.

4328523

Application Date

05/05/2008

Registration Date

04/30/2013

Foreign Priority
Date

NONE

Word Mark

MARLEY COFFEE

Design Mark

Description of
Mark

NONE

Goods/Services

Class 031. First use: First Use: 2010/04/00 First Use In Commerce: 2010/04/00
Unprocessed coffee

U.S. Registration
No.

4187013

Application Date

05/05/2008

Registration Date

08/07/2012

Foreign Priority
Date

NONE

Word Mark

MARLEY COFFEE

Design Mark

Description of
Mark

NONE

Goods/Services

Class 035. First use: First Use: 2009/04/22 First Use In Commerce: 2009/04/22
Retail store services featuring coffee,tea, beverageware, coffee makers, coffee
grinders, and espresso makers, and beans

U.S. Registration
No.

3778736

Application Date

05/05/2008

Registration Date

04/20/2010

Foreign Priority
Date

NONE

Word Mark

MARLEY COFFEE

Design Mark

Description of
Mark

NONE

Goods/Services

Class 040. First use: First Use: 2009/04/22 First Use In Commerce: 2009/04/22
Coffee roasting and processing

U.S. Registration
No.

3612800

Application Date

08/18/2006

Registration Date

04/28/2009

Foreign Priority
Date

NONE

Word Mark

MARLEY RESORT & SPA

Design Mark

Description of
Mark

NONE

Goods/Services

Class 043. First use: First Use: 2008/07/04 First Use In Commerce: 2008/07/04
Hotel services, namely, serving food and drinks and providing temporary accommodations and lodging

U.S. Registration
No.

4044256

Application Date

02/01/2011

Registration Date

10/25/2011

Foreign Priority
Date

NONE

Word Mark

HOUSE OF MARLEY MARETT TSEHAI DAM

Design Mark

Description of
Mark

The mark consists of a crest design of two heraldic lions facing forward, one of
which is resting its paw on a foil, while both are holding an ornate shield depicting a star and cross design between them, having a bejeweled crown above
theshield, a ribbon and additional ornamentation below the shield with the words
"MARETT TSEHAI DAM" inside the ribbon, and the words "HOUSE OF MARLEY" centered at the bottom of the design.

Goods/Services

Class 011. First use: First Use: 2009/09/00 First Use In Commerce: 2009/09/00
Lamps

U.S. Registration
No.

4044257

Application Date

02/01/2011

Registration Date

10/25/2011

Foreign Priority
Date

NONE

Word Mark

HOUSE OF MARLEY MARETT TSEHAI DAM

Design Mark

Description of
Mark

The mark consists of a crest design of two heraldic lions facing forward, one of
which is resting its paw on a foil, while both are holding an ornate shield depicting a star and cross design between them, having a bejeweled crown above
theshield, a ribbon and additional ornamentation below the shield with the words
"MARETT TSEHAI DAM" inside the ribbon, and the words "HOUSE OF MARLEY" centered at the bottom of the design.

Goods/Services

Class 014. First use: First Use: 2009/12/00 First Use In Commerce: 2009/12/00
Clocks

U.S. Registration
No.

4044258

Application Date

02/01/2011

Registration Date

10/25/2011

Foreign Priority
Date

NONE

Word Mark

HOUSE OF MARLEY MARETT TSEHAI DAM

Design Mark

Description of
Mark

The mark consists of a crest design of two heraldic lions facing forward, one of
which is resting its paw on a foil, while both are holding an ornate shield depicting a star and cross design between them, having a bejeweled crown above
theshield, a ribbon and additional ornamentation below the shield with the words
"MARETT TSEHAI DAM" inside the ribbon, and the words "HOUSE OF MARLEY" centered at the bottom of the design.

Goods/Services

Class 016. First use: First Use: 2010/01/00 First Use In Commerce: 2010/01/00
Posters, calendars, blank journals, notebooks, folders, pencil pouches, stickers,
and iron-on transfers

U.S. Registration
No.

4044259

Application Date

02/01/2011

Registration Date

10/25/2011

Foreign Priority
Date

NONE

Word Mark

HOUSE OF MARLEY MARETT TSEHAI DAM

Design Mark

Description of
Mark

The mark consists of a crest design of two heraldic lions facing forward, one of
which is resting its paw on a foil, while both are holding an ornate shield depicting a star and cross design between them, having a bejeweled crown above
theshield, a ribbon and additional ornamentation below the shield with the words
"MARETT TSEHAI DAM" inside the ribbon, and the words "HOUSE OF MARLEY" centered at the bottom of the design.

Goods/Services

Class 018. First use: First Use: 2010/11/00 First Use In Commerce: 2010/11/00
Wallets

U.S. Registration
No.

4044260

Application Date

02/01/2011

Registration Date

10/25/2011

Foreign Priority
Date

NONE

Word Mark

HOUSE OF MARLEY MARETT TSEHAI DAM

Design Mark

Description of
Mark

The mark consists of a crest design of two heraldic lions facing forward, one of
which is resting its paw on a foil, while both are holding an ornate shield depicting a star and cross design between them, having a bejeweled crown above
theshield, a ribbon and additional ornamentation below the shield with the words
"MARETT TSEHAI DAM" inside the ribbon, and the words "HOUSE OF MARLEY" centered at the bottom of the design.

Goods/Services

Class 020. First use: First Use: 2009/11/00 First Use In Commerce: 2009/11/00
Plastic key chains; mirrors
Class 021. First use: First Use: 2009/11/00 First Use In Commerce: 2009/11/00
Beverage glassware; beverage mugs

U.S. Registration
No.

4044261

Application Date

02/01/2011

Registration Date

10/25/2011

Foreign Priority
Date

NONE

Word Mark

HOUSE OF MARLEY MARETT TSEHAI DAM

Design Mark

Description of
Mark

The mark consists of a crest design of two heraldic lions facing forward, one of
which is resting its paw on a foil, while both are holding an ornate shield depicting a star and cross design between them, having a bejeweled crown above
theshield, a ribbon and additional ornamentation below the shield with the words
"MARETT TSEHAI DAM" inside the ribbon, and the words "HOUSE OF MARLEY" centered at the bottom of the design.

Goods/Services

Class 024. First use: First Use: 2010/01/00 First Use In Commerce: 2010/01/00
Bed or throw blankets; fabric banners

U.S. Registration
No.

4044262

Application Date

02/01/2011

Registration Date

10/25/2011

Foreign Priority
Date

NONE

Word Mark

HOUSE OF MARLEY MARETT TSEHAI DAM

Design Mark

Description of
Mark

The mark consists of a crest design of two heraldic lions facing forward, one of
which is resting its paw on a foil, while both are holding an ornate shield depicting a star and cross design between them, having a bejeweled crown above
theshield, a ribbon and additional ornamentation below the shield with the words
"MARETT TSEHAI DAM" inside the ribbon, and the words "HOUSE OF MARLEY" centered at the bottom of the design.

Goods/Services

Class 025. First use: First Use: 2009/12/00 First Use In Commerce: 2009/12/00
Clothing, namely, shirts, t-shirts, tank tops, board shorts, and hooded
shirts;footwear; headwear; and belts

U.S. Registration
No.

4044263

Application Date

02/01/2011

Registration Date

10/25/2011

Foreign Priority
Date

NONE

Word Mark

HOUSE OF MARLEY MARETT TSEHAI DAM

Design Mark

Description of
Mark

The mark consists of a crest design of two heraldic lions facing forward, one of
which is resting its paw on a foil, while both are holding an ornate shield depicting a star and cross design between them, having a bejeweled crown above
theshield, a ribbon and additional ornamentation below the shield with the words
"MARETT TSEHAI DAM" inside the ribbon, and the words "HOUSE OF MARLEY" centered at the bottom of the design.

Goods/Services

Class 026. First use: First Use: 2010/08/00 First Use In Commerce: 2010/08/00
Ornamental novelty buttons

U.S. Registration
No.

4044264

Application Date

02/01/2011

Registration Date

10/25/2011

Foreign Priority
Date

NONE

Word Mark

HOUSE OF MARLEY MARETT TSEHAI DAM

Design Mark

Description of
Mark

The mark consists of a crest design of two heraldic lions facing forward, one of
which is resting its paw on a foil, while both are holding an ornate shield depicting a star and cross design between them, having a bejeweled crown above
theshield, a ribbon and additional ornamentation below the shield with the words
"MARETT TSEHAI DAM" inside the ribbon, and the words "HOUSE OF MARLEY" centered at the bottom of the design.

Goods/Services

Class 028. First use: First Use: 2009/10/00 First Use In Commerce: 2009/10/00
Jigsaw puzzles, puzzle cubes, and snowboards

U.S. Registration
No.

4044265

Application Date

02/01/2011

Registration Date

10/25/2011

Foreign Priority
Date

NONE

Word Mark

HOUSE OF MARLEY MARETT TSEHAI DAM

Design Mark

Description of
Mark

The mark consists of a crest design of two heraldic lions facing forward, one of
which is resting its paw on a foil, while both are holding an ornate shield depicting a star and cross design between them, having a bejeweled crown above
theshield, a ribbon and additional ornamentation below the shield with the words
"MARETT TSEHAI DAM" inside the ribbon, and the words "HOUSE OF MARLEY" centered at the bottom of the design.

Goods/Services

Class 034. First use: First Use: 2010/09/00 First Use In Commerce: 2010/09/00
Lighters for smokers

Attachments

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Notice of Opposition - MARLEY GANG.pdf(1550567 bytes )
Notice of Opposition - MARLEY GANG (based on THE MARLEY BROTHERS).pdf(130808 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

/natashashabani/

Name

Natasha Shabani

Date

09/23/2014

Attorney Docket No.: 28217-00102
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
In re Matter of Application No. 86/114,638
for the mark: MARLEY GANG
Opposition No. __________________

Fifty-Six Hope Road Music Limited,

NOTICE OF OPPOSITION

Opposer,

Mark: MARLEY GANG

v.

Serial No. 86/114,638

S & M Media Group, LLC,
Applicant.

SUBMITTED ELECTRONICALLY
Commissioner for Trademarks
ATTN: Trademark Trial and Appeal Board P.O. Box 1451
Alexandria, Virginia 22313-1451
Dear Commissioner:
Opposer, Fifty-Six Hope Road Music Limited, a Bahamas International Business
Company (“Opposer”), having its principal place of business at Aquamarine House, Cable
Beach, Nassau, Bahamas, believes that it will be damaged by the registration of the mark
MARLEY GANG, as shown in U.S. Application Serial No. 86/114,638 (the “Application”), and
hereby opposes its registration on the following grounds:
FACTUAL BACKGROUND AS TO OPPOSER
1.

Opposer is owned and operated by the majority of the children and widow of the

world-renowned reggae artist, Bob Marley, and is the owner of all intellectual property rights in

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the name and likeness of Bob Marley, as well as those derived from the musical legacy of Bob
Marley.
2.

Bob Marley was born on the Caribbean island of Jamaica and is well-known for

his roots in the Caribbean.
3.

Opposer first used the mark BOB MARLEY at least as early as 1970 for in

Class 9 for audio/visual recordings featuring music; downloadable ring tones for cell phones,
musical sound recordings; digital music downloadable from the Internet. Such date of first use
precedes Applicant’s filing date.
4.

Opposer owns the trademark BOB MARLEY (Reg. No. 2,349,361) in Classes 3,

6, 9, 14, 16, 18, 21, 24, 25 and 26; the trademark BOB MARLEY (Reg. No. 3,934,085) in
Class 9 for audio/visual recordings featuring music; downloadable ring tones for cell phones,
musical sound recordings; digital music downloadable from the Internet; the trademark BOB
MARLEY (Reg. No. 3,692,924) in Class 43 for restaurant services, namely, preparation and
service of food and beverages for consumption; the trademark BOB MARLEY (Reg. No.
4,340,082) in Class 9 for cell phone accessories, namely, headsets, audio speakers for cell
phones, and hands free headsets; computer carrying cases; electronic docking and charging
stations for cell phones; electronic docking stations including speakers for portable electronic
devices and media players; downloadable photo images; ear buds; eyewear; eyewear cases;
goggles for sports; headphones; loudspeakers; and covers for cell phones and other mobile
devices; the trademark BOB MARLEY (Reg. No. 4,572,816) in Class 15 for musical
instruments; the trademark BOB MARLEY (Reg. 4,440,368) in Class 15 for guitar picks;
musical instrument accessories, namely guitar straps; the trademark BOB MARLEY (Reg. No.

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4,425,858) in Class 29 for fruit-based food beverages, milk-based beverage containing coffee;
the trademark BOB MARLEY (Reg. No. 4,422,220) in Class 30 for coffee; coffee beans; coffeebased beverages; espresso; herbal food beverages; tea; tea-based beverages; and unroasted
coffees; the trademark BOB MARLEY (Reg. No. 4,422,221) in Class 32 for fruit drinks, fruitflavored beverages; herbal juices; lemonade; the trademark BOB MARLEY A TRIBUTE TO
FREEDOM & Design (Reg. No, 4,375,700) in Class 41 for nightclub services, namely,
arranging and conducting nightclub entertainment events, and Class 43 for restaurant services;
take-out restaurant services; the trademark BOB MARLEY AND THE WAILERS (Reg. No.
2,820,741) in Class 9 for series of sound and video recordings featuring music and downloadable
sound and video recordings featuring music, and Class 25 for T-shirts, thermal shirts, hats, caps,
sweatshirts; the trademark BOB MARLEY AND THE WAILERS (Reg. No. 3,849,342) in Class
18 for all-purpose carrying bags; the trademark MARLEY (Reg. No. 4,222,036) in Class 9 for
headphones; ear buds; audio speakers; electronic docking stations; boom boxes; downloadable
video recordings featuring music, artistic performances, and information about audio equipment;
downloadable electronic newsletters in the field of entertainment and audio equipment; the
trademark MARLEY (Reg. No. 4,333,844) in Class 41 for entertainment services, namely,
providing a website featuring information relating to music tours and live stage events relating
thereto; nondownloadable video recordings featuring music, and artistic performances;
organizing and conducting music tours; providing online electronic newsletters delivered by
email in the field of entertainment and audio equipment; the trademark MARLEY (Reg. No.
4,394,278) in Class 25 for clothing, namely, shirts and headwear; the trademark M MARLEY &
Design (Reg. No. 4,222,035) in Class 9 for headphones; ear buds; audio speakers; electronic
docking stations; boom boxes; downloadable video recordings featuring music, artistic

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performances, and information about audio equipment; the trademark M MARLEY & Design
(Reg. No. 4,333,843) in Class 41 for entertainment services, namely, providing a website
featuring information relating to music tours and live stage events relating thereto;
nondownloadable video recordings featuring music, and artistic performances; organizing and
conducting music tours; providing online electronic newsletters delivered by email in the field of
entertainment and audio equipment; the trademark MARLEY COFFEE (Reg. No. 4,150,381) in
Class 16 for greeting cards, blank journals, bumper stickers, calendars, and stickers; the
trademark MARLEY COFFEE (Reg. No. 4,242,186) in Class 21 for coffee cups, coffee mugs,
travel mugs and beverageware; the trademark MARLEY COFFEE (Reg. No. 4,158,045) in Class
25 for clothing, namely, shirts, aprons, sweatshirts, underwear, infant wear; sleepwear; footwear;
headwear; the trademark MARLEY COFFEE (Reg. No. 3,871,574) in Class 25 for clothing,
namely, t-shirts and zippered pull-over jackets; the trademark MARLEY COFFEE (Reg. No.
4,254,177) in Class 30 for coffee, coffee-based beverages, espresso, tea, coffee beans, unroasted
coffee; the trademark MARLEY COFFEE (Reg. No. 4,328,523) in Class 31 for unprocessed
coffee; the trademark MARLEY COFFEE (Reg. No. 4,187,013) in Class 35 for retail store
services featuring coffee, tea, beverageware, coffee makers, coffee grinders, and espresso
makers, and beans; the trademark MARLEY COFFEE (Reg. No. 3,778,736) in Class 40 for
coffee roasting and processing; the trademark MARLEY RESORT & SPA (Reg. No. 3,612,800)
in Class 43 for hotel services, namely, serving food and drinks and providing temporary
accommodations and lodging; the trademark HOUSE OF MARLEY MARETT TSEHAI DAM
& Design (Reg. No. 4,044,256) in Class 11 for lamps; the trademark HOUSE OF MARLEY
MARETT TSEHAI DAM & Design (Reg. No. 4,044,257) in Class 14 for clocks; the trademark
HOUSE OF MARLEY MARETT TSEHAI DAM & Design (Reg. No. 4,044,258) in Class 16

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for posters, calendars, blank journals, notebooks, folders, pencil pouches, stickers, and iron-on
transfers; the trademark HOUSE OF MARLEY MARETT TSEHAI DAM & Design (Reg. No.
4,044,259) in Class 18 for wallets; the trademark HOUSE OF MARLEY MARETT TSEHAI
DAM & Design (Reg. No. 4,044,260) in Class 20 for plastic key chains and mirrors, and in Class
21 for beverage glassware and beverage mugs; the trademark HOUSE OF MARLEY MARETT
TSEHAI DAM & Design (Reg. No. 4,044,261) in Class 24 for bed or throw blankets, and fabric
banners; the trademark HOUSE OF MARLEY MARETT TSEHAI DAM & Design (Reg. No.
4,044,262) in Class 25 for clothing, namely, shirts, t-shirts, tank tops, board shorts, and hooded
shirts; footwear; headwear; and belts; the trademark HOUSE OF MARLEY MARETT TSEHAI
DAM & Design (Reg. No. 4,044,263) in Class 26 for ornamental novelty buttons; the trademark
HOUSE OF MARLEY MARETT TSEHAI DAM & Design (Reg. No. 4,044,264) in Class 28
for jigsaw puzzles, puzzle cubes, and snowboards; the trademark HOUSE OF MARLEY
MARETT TSEHAI DAM & Design (Reg. No. 4,044,265) in Class 34 for lighters for smokers
(hereinafter collectively referred to as “the MARLEY Marks”), and all other rights associated
with goods and services offered under the MARLEY Marks (the “Marley Goods and Services”).
True and correct copies of the registrations of the MARLEY Marks are attached hereto as
Exhibit A.
5.

Opposer first used the mark BOB MARLEY at least as early as 1990 for greeting

cards, stickers, portfolios, postcards, postcard books, songbooks, decals, trading cards, calendars,
novels and bookmarks in Class 16; for textile wall hangings in Class 24; for t-shirts, thermal
shirts, jackets, hats, caps, sweatshirts, ties and bandannas in Class 25; and for ornamental cloth
patches in Class 26. Such date of first use precedes Applicant’s filing date.

28217-00102/2256104.1

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6.

Opposer first used the mark BOB MARLEY at least as early as 1992 for

backpacks, fanny packs, wallets and tote bags in Class 18. Such date of first use precedes
Applicant’s filing date.
7.

Opposer first used the mark BOB MARLEY at least as early as 1994 for jewelry,

watches and medallions in Class 14. Such date of first use precedes Applicant’s filing date.
8.

Opposer first used the mark BOB MARLEY at least as early as 1995 for novelty

license plates in Class 6 and for mugs in Class 21. Such date of first use precedes Applicant’s
filing date.
9.

Opposer first used the mark BOB MARLEY at least as early as 1996 for incense

in Class 3, and for plastic cases for beepers and magnets in Class 9. Such date of first use
precedes Applicant’s filing date.
10.

Opposer first used the mark BOB MARLEY at least as early as February 6, 1999

for restaurant services, namely, preparation and service of food and beverages for consumption
in Class 43. Such date of first use precedes Applicant’s filing date.
11.

Opposer first used the mark BOB MARLEY at least as early as July 27, 2011 for

cell phone accessories, namely, headsets, audio speakers for cell phones, and hands free
headsets; computer carrying cases; electronic docking and charging stations for cell phones;
electronic docking stations including speakers for portable electronic devices and media players;
downloadable photo images; ear buds; eyewear; eyewear cases; goggles for sports; headphones;
loudspeakers; and covers for cell phones and other mobile devices in Class 9. Such date of first
use precedes Applicant’s filing date.

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12.

Opposer first used the mark BOB MARLEY at least as early as March 31, 2008

for musical instruments in Class 15. Such date of first use precedes Applicant’s filing date.
13.

Opposer first used the mark BOB MARLEY at least as early as April 4, 2011 for

guitar picks; musical instrument accessories, namely guitar straps in Class 15. Such date of first
use precedes Applicant’s filing date.
14.

Opposer first used the mark BOB MARLEY at least as early as July 2, 2010 for

fruit-based food beverages, milk-based beverage containing coffee in Class 29. Such date of first
use precedes Applicant’s filing date.
15.

Opposer first used the mark BOB MARLEY at least as early as July 2, 2010 for

coffee; coffee beans; coffee-based beverages; espresso; herbal food beverages; tea; tea-based
beverages; and unroasted coffees in Class 30. Such date of first use precedes Applicant’s filing
date.
16.

Opposer first used the mark BOB MARLEY A TRIBUTE TO FREEDOM &

Design at least as early as February 6, 1999 for nightclub services, namely, arranging and
conducting nightclub entertainment events in Class 41, and for restaurant services; take-out
restaurant services in Class 43. Such date of first use precedes Applicant’s filing date.
17.

Opposer first used the mark BOB MARLEY AND THE WAILERS at least as

early as 1973 for sound and video recordings in Class 9, and for t-shirts, thermal shirts, jackets,
hats, caps, sweatshirts, ties, and bandannas in Class 25. Such date of first use precedes
Applicant’s filing date.

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18.

Opposer first used the mark BOB MARLEY AND THE WAILERS at least as

early as January 2009 for all purpose carrying bags in Class 18. Such date of first use precedes
Applicant’s filing date.
19.

Opposer first used the mark MARLEY at least as early as July 27, 2011 for

headphones; ear buds; audio speakers; electronic docking stations; boom boxes; downloadable
video recordings featuring music, artistic performances, and information about audio equipment;
downloadable electronic newsletters in the field of entertainment and audio equipment in
Class 9. Such date of first use precedes Applicant’s filing date.
20.

Opposer first used the mark MARLEY at least as early as January 2011 for

entertainment services, namely, providing a website featuring information relating to music tours
and live stage events relating thereto; nondownloadable video recordings featuring music, and
artistic performances; organizing and conducting music tours; providing online electronic
newsletters delivered by email in the field of entertainment and audio equipment in Class 41.
Such date of first use precedes Applicant’s filing date.
21.

Opposer first used the mark MARLEY at least as early as February 2003 for

clothing, namely, shirts and headwear in Class 25. Such date of first use precedes Applicant’s
filing date.
22.

Opposer first used the mark M MARLEY & Design at least as early as July 27,

2011 for headphones; ear buds; audio speakers; electronic docking stations; boom boxes;
downloadable video recordings featuring music, artistic performances, and information about
audio equipment in Class 9. Such date of first use precedes Applicant’s filing date.

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23.

Opposer first used the mark M MARLEY & Design at least as early as July 27,

2011 for entertainment services, namely, providing a website featuring information relating to
music tours and live stage events relating thereto; nondownloadable video recordings featuring
music, and artistic performances; organizing and conducting music tours; providing online
electronic newsletters delivered by email in the field of entertainment and audio equipment in
Class 41. Such date of first use precedes Applicant’s filing date.
24.

Opposer first used the mark MARLEY COFFEE at least as early as December 21,

2011 for greeting cards, blank journals, bumper stickers, calendars, and stickers in Class 16.
Such date of first use precedes Applicant’s filing date.
25.

Opposer first used the mark MARLEY COFFEE at least as early as December 21,

2011 for clothing, namely, shirts, aprons, sweatshirts, underwear, infant wear; sleepwear;
footwear; headwear in Class 25. Such date of first use precedes Applicant’s filing date.
26.

Opposer first used the mark MARLEY COFFEE at least as early as May 28, 2009

for clothing, namely, T-shirts and zippered pull-over jackets in Class 25. Such date of first use
precedes Applicant’s filing date.
27.

Opposer first used the mark MARLEY COFFEE at least as early as April 2010

for unprocessed coffee in Class 31. Such date of first use precedes Applicant’s filing date.
28.

Opposer first used the mark MARLEY COFFEE at least as early as April 22,

2009 for retail store services featuring coffee, tea, beverageware, coffee makers, coffee grinders,
and espresso makers, and beans in Class 35. Such date of first use precedes Applicant’s filing
date.

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29.

Opposer first used the mark MARLEY COFFEE at least as early as April 22,

2009 for coffee roasting and processing in Class 40. Such date of first use precedes Applicant’s
filing date.
30.

Opposer first used the mark MARLEY RESORT & SPA at least as early as

July 4, 2008 for hotel services, namely, serving food and drinks and providing temporary
accommodations and lodging in Class 43. Such date of first use precedes Applicant’s filing date.
31.

Opposer first used the mark HOUSE OF MARLEY MARETT TSEHAI DAM &

Design at least as early as September 2009 for lamps in Class 11. Such date of first use precedes
Applicant’s filing date.
32.

Opposer first used the mark HOUSE OF MARLEY MARETT TSEHAI DAM &

Design at least as early as December 2009 for clocks in Class 14. Such date of first use precedes
Applicant’s filing date.
33.

Opposer first used the mark HOUSE OF MARLEY MARETT TSEHAI DAM &

Design at least as early as January 2010 for posters, calendars, blank journals, notebooks,
folders, pencil pouches, stickers, and iron-on transfers in Class 16. Such date of first use
precedes Applicant’s filing date.
34.

Opposer first used the mark HOUSE OF MARLEY MARETT TSEHAI DAM &

Design at least as early as November 2010 for wallets in Class 18. Such date of first use
precedes Applicant’s filing date.
35.

Opposer first used the mark HOUSE OF MARLEY MARETT TSEHAI DAM &

Design at least as early as November 2009 for plastic key chains and mirrors in Class 20, and at

28217-00102/2256104.1

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least as early as November 2009 for beverage glassware and beverage mugs in Class 21. Such
dates of first use precede Applicant’s filing date.
36.

Opposer first used the mark HOUSE OF MARLEY MARETT TSEHAI DAM &

Design at least as early as January 2010 for bed or throw blankets and fabric banners in Class 24.
Such date of first use precedes Applicant’s filing date.
37.

Opposer first used the mark HOUSE OF MARLEY MARETT TSEHAI DAM &

Design at least as early as December 2009 for clothing, namely, shirts, t-shirts, tank tops, board
shorts, and hooded shirts; footwear; headwear; and belts in Class 25. Such date of first use
precedes Applicant’s filing date.
38.

Opposer first used the mark HOUSE OF MARLEY MARETT TSEHAI DAM &

Design at least as early as August 2010 for ornamental novelty buttons in Class 26. Such date of
first use precedes Applicant’s filing date.
39.

Opposer first used the mark HOUSE OF MARLEY MARETT TSEHAI DAM &

Design at least as early as October 2009 for jigsaw puzzles, puzzle cubes, and snowboards in
Class 28. Such date of first use precedes Applicant’s filing date.
40.

Opposer first used the mark HOUSE OF MARLEY MARETT TSEHAI DAM &

Design at least as early as September 2010 for lighters for smokers in Class 34. Such date of
first use precedes Applicant’s filing date.
41.

The Marley Goods and Services have been favorably received and are otherwise

recognized by the consuming public and are associated with Opposer and the late musical
legend, Bob Marley.

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42.

The MARLEY Marks are advertised and promoted together, in whole or in part,

and constitute a family of trademarks.
FACTUAL BACKGROUND REGARDING THE APPLICATION
43.

On November 9, 2013, Applicant S & M Media Group, LLC (“Applicant”),

having a place of business at 4219 Apt E, Yanceyville Rd., Browns Summit, NC 27214, filed the
Application seeking registration, on an intent-to-use basis, of MARLEY GANG for, “Audio and
video recordings featuring music and artistic performances; Compact discs featuring music;
Digital music systems that synchronizes digital radio files stored on a home unit, a car unit, or
portable unit and that may be backed up to an internet depository; Downloadable MP3 files, MP3
recordings, on-line discussion board posts, webcasts, webinars and podcasts featuring music,
audio books in the field of rap, and news broadcasts; Downloadable ring tones, graphics and
music via a global computer network and wireless devices; Downloadable video recordings
featuring music; Downloadable music via the internet and wireless devices; Musical recordings;
Musical video recordings; Visual recordings and audiovisual recordings featuring music and
animation” in Class 9.
44.

The Application was published for opposition in the Official Gazette on May 27,

2014. Opposer was granted a thirty-day extension and a sixty-day extension of time to oppose
the Application.
45.

Applicant appears to be making use in commerce of MARLEY GANG in

connection with a musical group.
FIRST GROUND — LIKELIHOOD OF CONFUSION
46.

Opposer incorporates the allegations contained in Paragraphs 1 to 45 herein.

28217-00102/2256104.1

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47.

Applicant’s proposed mark is similar in sound, appearance and meaning and is

confusingly similar to Opposer’s MARLEY Marks. Further, the goods and services to be offered
by Applicant are identical in some instances and similar and related in other instances to those
offered under Opposer’s MARLEY Marks.
48.

Applicant’s mark is likely to cause confusion, mistake, or deception as to the

source, origin, affiliation, connection or association of Applicant’s goods and services offered or
to be offered under the MARLEY GANG mark.
SECOND GROUND — LIKELIHOOD OF DILUTION
49.

Opposer incorporates the allegations contained in Paragraphs 1 to 48 herein.

50.

The MARLEY Marks are inherently distinctive and have acquired secondary

meaning and are associated with Opposer and Bob Marley. The MARLEY Marks are famous
and distinctive and Bob Marley is famous within the meaning of the Federal Trademark Dilution
Act. Applicant filed the Application after the MARLEY Marks and Bob Marley had become
famous, and Applicant seeks to commercially use the applied-for mark MARLEY GANG.
51.

The mark shown in the Application is likely to dilute Opposer’s MARLEY

Marks.
THIRD GROUND — FALSE ASSOCIATION WITH BOB MARLEY
52.

Opposer incorporates the allegations contained in Paragraphs 1 to 51 herein.

53.

The name and mark MARLEY is associated with Bob Marley and Opposer. Bob

Marley is and has been enormously famous and world renowned for many years.

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54.

Opposer’s MARLEY Marks were used prior to Applicant’s filing date of the

application to register MARLEY GANG.
55.

Applicant’s proposed mark is the same or a close approximation of, as Bob

Marley’s name and trademark, which was previously used by and associated with Opposer and
Bob Marley. The name and mark MARLEY is recognized as such, in that it uniquely and
unmistakably points to Opposer and/or Bob Marley. Neither Opposer nor Bob Marley is
connected with the goods or services sold, to be sold, offered, or to be offered by Applicant
under the MARLEY GANG mark; and the fame and reputation of Opposer and Bob Marley is of
such a nature that a connection with Opposer and Bob Marley is presumed when Applicant’s
MARLEY GANG mark is used on or with Applicant’s goods and services.
56.

The registration of the MARLEY GANG mark will falsely suggest a connection,

association, or sponsorship with Opposer and/or Bob Marley. Consumers will erroneously
believe that Applicant’s goods and services are licensed or sponsored by, or otherwise
connected, affiliated, or associated with, Opposer and/or Bob Marley.
DAMAGE TO OPPOSER
57.

As a result of all of the foregoing, the maturation of the Application into a

registration would (a) cause a likelihood of confusion, mistake, or deception as to the source,
origin, affiliation, connection, or association of Opposer’s MARLEY Goods and Services and
Applicant’s MARLEY GANG goods and services, (b) cause a likelihood of dilution of the
MARLEY Marks, and (c) falsely suggest a connection or association with Bob Marley and/or
Opposer.

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58.

Opposer would be damaged by the registration of the mark shown in the

Application, in that such registration would give Applicant a prima facie exclusive right to the
use of MARLEY GANG, despite the likelihood of confusion, mistake, or deception, likelihood
of dilution, and likelihood of false connection or association with Bob Marley described above,
and will allow Applicant to trade on Opposer’s existing goodwill in the MARLEY Marks.
PRAYER
WHEREFORE, Opposer prays that this Opposition be sustained in favor of Opposer, that
the Application be rejected, and that registration of the Application be refused.
Please charge the requisite $300 opposition filing fee and any additional amounts to
Deposit Account No. 50-1833.
Dated: September 23, 2014

Respectfully submitted,

Jesse J. Saivar
Natasha Shabani
GREENBERG GLUSKER FIELDS
CLAMAN & MACHTINGER LLP
1900 Avenue of the Stars, 21st Floor
Los Angeles, California 90067
Telephone: (310) 553-3610
Facsimile: (310) 553-0687
E-mail: jsaivar@greenbergglusker.com;
nshabani@greenbergglusker.com;
ipmail@greenbergglusker.com
Attorneys for Opposer
Fifty-Six Hope Road Music Limited

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CERTIFICATE OF SERVICE
The undersigned hereby certifies that a true and correct copy of the foregoing NOTICE OF
OPPOSITION was served on Applicant on September 24, 2014 by delivery via first class mail to
applicant at:
Antonio Spears
S & M Media Group
4219 Apt E, Yanceyville Rd.
Browns Summit, North Carolina 27214

___________________________________
Natasha Shabani

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Attorney Docket No.: 28217-00102
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
In re Matter of Application No. 86/114,638
for the mark: MARLEY GANG
Opposition No. __________________

Ky-Mani Ronald Marley, Damian Robert Nesta
Marley, Julian Ricardo Marley, Stephen Robert
Nesta Marley, and David Nesta Marley,

NOTICE OF OPPOSITION
Mark: MARLEY GANG

Opposers,

Serial No. 86/114,638

v.
S & M Media Group, LLC,
Applicant.

SUBMITTED ELECTRONICALLY
Commissioner for Trademarks
ATTN: Trademark Trial and Appeal Board P.O. Box 1451
Alexandria, Virginia 22313-1451
Dear Commissioner:
Ky-Mani Ronald Marley, Damian Robert Nesta Marley, Julian Ricardo Marley, Stephen
Robert Nesta Marley, and David Nesta Marley, all individuals (collectively, “Opposers”),
believe that they will be damaged by the registration of the mark MARLEY GANG, as shown in
U.S. Application Serial No. 86/114,638 (the “Application”), and hereby oppose its registration
on the following grounds:
FACTUAL BACKGROUND AS TO OPPOSER
1.

Opposers are children of the world-renowned reggae artist, Bob Marley.

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1

2.

Opposers are in privity with Fifty-Six Hope Road Music Limited, which is filing

an opposition against the Application concurrently herewith and was previously granted a thirtyday extension and a sixty-day extension of time to oppose the Application. Privity is established
because Damian Robert Nesta Marley, Julian Ricardo Marley, Stephen Robert Nesta Marley, and
David Nesta Marley are all part owners in Fifty-Six Hope Road Music Limited.
3.

Opposers own the trademark THE MARLEY BROTHERS (Reg. No. 3,535,883)

in Class 41 for entertainment, namely, live performances by a musical band (hereinafter
collectively referred to as “the MARLEY Mark”). A true and correct copy of the registration of
the MARLEY Mark is attached hereto as Exhibit A.
4.

Opposers first used the mark THE MARLEY BROTHERS at least as early as

2004 in Class 41 for entertainment, namely, live performances by a musical band. Such date of
first use precedes Applicant’s filing date.
5.

The trademark THE MARLEY BROTHERS is recognized by the consuming

public and is associated with Opposers and the late musical legend, Bob Marley.
FACTUAL BACKGROUND REGARDING THE APPLICATION
6.

On November 9, 2013, Applicant S & M Media Group, LLC (“Applicant”),

having a place of business at 4219 Apt E, Yanceyville Rd., Browns Summit, NC 27214, filed the
Application seeking registration, on an intent-to-use basis, of MARLEY GANG for, “Audio and
video recordings featuring music and artistic performances; Compact discs featuring music;
Digital music systems that synchronizes digital radio files stored on a home unit, a car unit, or
portable unit and that may be backed up to an internet depository; Downloadable MP3 files, MP3
recordings, on-line discussion board posts, webcasts, webinars and podcasts featuring music,

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2

audio books in the field of rap, and news broadcasts; Downloadable ring tones, graphics and
music via a global computer network and wireless devices; Downloadable video recordings
featuring music; Downloadable music via the internet and wireless devices; Musical recordings;
Musical video recordings; Visual recordings and audiovisual recordings featuring music and
animation” in Class 9.
7.

The Application was published for opposition in the Official Gazette on May 27,

2014. Fifty-Six Hope Road Music Limited, which is in privity with Opposers, was granted a
thirty-day extension and a sixty-day extension of time to oppose the Application.
8.

Applicant appears to be making use in commerce of MARLEY GANG in

connection with a musical group.
FIRST GROUND — LIKELIHOOD OF CONFUSION
9.

Opposer incorporates the allegations contained in Paragraphs 1 to 8 herein.

10.

Applicant’s proposed mark is similar in sound, appearance and meaning and is

confusingly similar to Opposers’ MARLEY Mark. Further, the goods and services to be offered
by Applicant are similar and related to those offered under Opposers’ MARLEY Mark, as both
the Application and the MARLEY Mark cover goods and services relating to musical
performances.
11.

Applicant’s mark is likely to cause confusion, mistake, or deception as to the

source, origin, affiliation, connection or association of Applicant’s goods and services offered or
to be offered under the MARLEY GANG mark.

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SECOND GROUND — LIKELIHOOD OF DILUTION
12.

Opposer incorporates the allegations contained in Paragraphs 1 to 11 herein.

13.

The MARLEY Mark has acquired secondary meaning and is associated with

Opposers and Bob Marley. The MARLEY Mark is famous and distinctive and Bob Marley is
famous within the meaning of the Federal Trademark Dilution Act. Applicant filed the
Application after the MARLEY Mark and Bob Marley had become famous, and Applicant seeks
to commercially use the applied-for mark MARLEY GANG.
14.

The mark shown in the Application is likely to dilute Opposers’ MARLEY Mark.
THIRD GROUND — FALSE ASSOCIATION WITH BOB MARLEY

15.

Opposer incorporates the allegations contained in Paragraphs 1 to 14 herein.

16.

The name and mark MARLEY is associated with Bob Marley and Opposers. Bob

Marley is and has been enormously famous and world renowned for many years.
17.

Opposers’ MARLEY Mark was used prior to Applicant’s filing date of the

application to register MARLEY GANG.
18.

Applicant’s proposed mark is the same or a close approximation of, as Bob

Marley’s name and trademark, which was previously used by and associated with Opposers and
Bob Marley. The name and mark MARLEY is recognized as such, in that it uniquely and
unmistakably points to Opposers and/or Bob Marley. Neither Opposers nor Bob Marley is
connected with the goods or services sold, to be sold, offered, or to be offered by Applicant
under the MARLEY GANG mark; and the fame and reputation of Opposers and Bob Marley is

28217-00102/2256723.1

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of such a nature that a connection with Opposers and Bob Marley is presumed when Applicant’s
MARLEY GANG mark is used on or with Applicant’s goods and services.
19.

The registration of the MARLEY GANG mark will falsely suggest a connection,

association, or sponsorship with Opposers and/or Bob Marley. Consumers will erroneously
believe that Applicant’s goods and services are licensed or sponsored by, or otherwise
connected, affiliated, or associated with, Opposers and/or Bob Marley.
DAMAGE TO OPPOSER
20.

As a result of all of the foregoing, the maturation of the Application into a

registration would (a) cause a likelihood of confusion, mistake, or deception as to the source,
origin, affiliation, connection, or association of Opposers’ MARLEY Mark and Applicant’s
MARLEY GANG goods and services, (b) cause a likelihood of dilution of the MARLEY Mark,
and (c) falsely suggest a connection or association with Bob Marley and/or Opposers.
21.

Opposers would be damaged by the registration of the mark shown in the

Application, in that such registration would give Applicant a prima facie exclusive right to the
use of MARLEY GANG, despite the likelihood of confusion, mistake, or deception, likelihood
of dilution, and likelihood of false connection or association with Bob Marley described above,
and will allow Applicant to trade on Opposers’ existing goodwill in the MARLEY Mark.
PRAYER
WHEREFORE, Opposers pray that this Opposition be sustained in favor of Opposers,
that the Application be rejected, and that registration of the Application be refused.

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Please charge the requisite $300 opposition filing fee and any additional amounts to
Deposit Account No. 50-1833.
Dated: September 23, 2014

Respectfully submitted,

Jesse J. Saivar
Natasha Shabani
GREENBERG GLUSKER FIELDS
CLAMAN & MACHTINGER LLP
1900 Avenue of the Stars, 21st Floor
Los Angeles, California 90067
Telephone: (310) 553-3610
Facsimile: (310) 553-0687
E-mail: jsaivar@greenbergglusker.com;
nshabani@greenbergglusker.com;
ipmail@greenbergglusker.com
Attorneys for Opposers
Ky-Mani Ronald Marley
Damian Robert Nesta Marley
Julian Ricardo Marley
Stephen Robert Nesta Marley
David Nesta Marley

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CERTIFICATE OF SERVICE
The undersigned hereby certifies that a true and correct copy of the foregoing NOTICE OF
OPPOSITION was served on Applicant on September 24, 2014 by delivery via first class mail to
applicant at:
Antonio Spears
S & M Media Group
4219 Apt E, Yanceyville Rd.
Browns Summit, North Carolina 27214

___________________________________
Natasha Shabani

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Exhibit A