Mathers v. Dixon

Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.
gov
ESTTA Tracking number: ESTTA1267201
Filing date: 02/21/2023
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding no. 91283402
Party Plaintiff
Marshall B. Mathers III
Correspondence MANNY D. POKOTILOW
address CAESAR RIVISE, PC
1635 MARKET STREET
SEVEN PENN CENTER, 12TH FLOOR
PHILADELPHIA, PA 19103
UNITED STATES
Primary email: trademarks@crbcp.com
Secondary email(s): mpokotilow@crbcp.com, bmcgregor@crbcp.com, litdocket-
ing@crbcp.com
215-567-2010
Submission Motion to Amend Pleading/Amended Pleading
Filer's name Manny D. Pokotilow
Filer's email mpokotilow@crbcp.com, bmcgregor@crbcp.com, litdocketing@crbcp.com
Signature /Manny D. Pokotilow/
Date 02/21/2023
Attachments M131940008 Amended Notice of Opposition 2-21-2023.pdf(120559 bytes )
M131940008 Exhibit A-Amended.pdf(371279 bytes )
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
MARSHALL MATHERS III :

:
Opposer, :
:
vs. : OPPOSITION NO. 91283402
:
: SERIAL NO. 97248176
Robyn Dixon, Individual
Gizelle Bryant, Individual :
:
Applicants. :
AMENDED NOTICE OF OPPOSITION
Opposer, Marshall Mathers III believes he will be damaged by the issuance of a registration
for the mark REASONABLY SHADY as shown in Application Serial No. 97/248,176 filed
February 1, 2022 for “Eye-shadow; lip gloss; make-up” in International Class 003; “Candles” in
International Class 004; “Mugs; Water bottles sold empty” in International Class 021; “Hats;
Pants; Shirt; Socks; Sweatshirts; Jackets” in International Class 025; “Paddle Boards” in
International Class 028; and “Entertainment services, namely, providing podcasts in the field of
dating, relationships, marriage, entrepreneurs, motherhood, style, glam, and current events (Based
on Intent to Use) Entertainment services, namely, an ongoing series featuring dating, relationships,
marriage, entrepreneurs, motherhood, style, glam, and current events provided through television,
webcasts, and radio broadcasts; Hosting social entertainment events, namely, parties for others” in
International Class 041 and therefore, opposes the same. As grounds for his opposition, Opposer,
by his attorneys, alleges as follows:
1
1. Opposer Marshall Mathers III (Mathers) is an individual having his principal place
of business at 151 Lafayette Street - 6th Floor c/o Shady/Goliath Artists, Inc. New York New York
10013.
2. Mathers is an internationally known entertainer also known as EMINEM, SLIM
SHADY and SHADY.
3. Since long prior to the acts complained of herein, Mathers has used the name and
marks SLIM SHADY and SHADY in connection with his stage identity and his stage name of
EMINEM.
mark SLIM SHADY in connection with musical sound recordings in interstate commerce.
mark SLIM SHADY in connection with entertainment services, namely, the presentation of live
musical performances by a recording artist in interstate commerce.
marks SLIM SHADY, SHADY and SHADY LIMITED for clothing, namely, shirts, long-sleeve
t-shirts; short-sleeve t-shirts; caps, hats, knit hats and baseball caps in interstate commerce.
7. From 1996 to the present, Mathers’ advertising and sales of goods and services
under the name and marks SLIM SHADY, SHADY and SHADY LIMITED have been and are
significant.
8. From 1996 to the present, Mathers has been engaged in substantially exclusive use
of the name and marks SLIM SHADY, SHADY and SHADY LIMITED.
2
9. Opposer has invested a substantial amount of time, effort and money in promoting
the name and marks SLIM SHADY and SHADY and in ensuring the high quality of goods and
services provided under the name and marks SLIM SHADY, SHADY and SHADY LIMITED.
10. SLIM SHADY, SHADY and SHADY LIMITED goods and services sold under the
name and marks SLIM SHADY, SHADY and SHADY LIMITED, which are recognized to be of
the highest quality, are offered for sale and sold in interstate commerce.
11. As a result of such substantial advertising and sales under the marks SLIM
SHADY, SHADY and SHADY LIMITED and the maintenance of premium quality standards
relating thereto, and the substantially exclusive use of said mark by Opposer, the marks SLIM
SHADY, SHADY and SHADY LIMITED have become widely and favorably recognized by the
general consuming public of the United States, as a unique and distinctive indication of the origin
of the goods and services of Opposer, Mathers. The marks SLIM SHADY, SHADY and SHADY
LIMITED have become unique and are identified by the general public solely with Opposer and
his goods and services. The marks SLIM SHADY, SHADY and SHADY LIMITED have become
and are an extremely valuable symbol of Mathers, his reputation and goodwill.
12. Opposer has registered the mark SLIM SHADY under United States Certificates of
Registration No. 2667895 for entertainment services, namely, the presentation of live musical
performances by a recording artist in interstate commerce in International Class 41, No. 2641856
musical sound recordings in interstate commerce in International Class 9 and No. 2626305 for
clothing, namely, shirts, long-sleeve t-shirts; short-sleeve t-shirts; caps, hats, knit hats and baseball
caps in interstate commerce in International Class 25. Opposer also owns the registration of the
mark SHADY under United States Certificate of Registration No. 2468453 for t-shirts, sweatshirts,
shorts, halter tops and hats in International Class 25. Also, Opposer owns the registration of the
3
mark SHADY LIMITED under United States Certificate of Registration No. 3199155 for shirts,
long-sleeve t-shirts, short-sleeve t-shirts, caps, knit hats and baseball caps in International Class
25.
13. All, of the above-listed registrations, are owned by Opposer, Mathers.
14. All, of the above-listed registrations, are valid, subsisting and in full force and
effect, serve as prima facie evidence of the validity of the marks shown therein and Mathers’
ownership thereof, and are constructive notice of ownership of the marks SLIM SHADY, SHADY
and SHADY LIMITED by Mathers all as provided by Sections 7(b) and 22 of the Lanham Act,
15 U.S.C. §§ 1057(b) and 1072. All 4 of Opposer’s registration have achieved incontestable status
under Section 15 of the Lanham Act, 15 U.S.C. § 1065, said registrations are conclusive evidence
of Opposers’ exclusive right to use the mark SLIM SHADY, SHADY and SHADY LIMITED in
commerce. True and correct copies of the above-listed registrations, along with current printouts
from the United States Patent and Trademark Office’s Trademark Status and Document Retrieval
(TSDR) electronic database showing the current status and title of said registrations are annexed
hereto as Exhibit A and are made a part hereof.
15. By virtue of the use and promotion of the marks SLIM SHADY, SHADY and
SHADY LIMITED for 25 years, the extensive use of the names and marks SLIM SHADY,
SHADY and SHADY LIMITED and the sale and promotion of SLIM SHADY, SHADY and
SHADY LIMITED goods and services, SLIM SHADY, SHADY and SHADY LIMITED have
come to be recognized as identifying goods and services finding their origin exclusively in or
otherwise uniquely associated with Mathers, is distinctive of Mathers’ goods and services, and has
come to represent the enormous goodwill of Mathers.
4
16. Mathers’ exclusive and extensive use of the marks and names SLIM SHADY,
SHADY and SHADY LIMITED, the unsolicited media coverage concerning SLIM SHADY,
SHADY and SHADY LIMITED and referencing the name SLIM SHADY, SHADY and/or
SHADY LIMITED, and Mathers’ sales and promotion of goods and services under the names and
marks SLIM SHADY, SHADY and SHADY LIMITED, have made the marks SLIM SHADY,
SHADY and SHADY LIMITED famous and distinctive.
17. By virtue of Mathers registrations for and use of SLIM SHADY, SHADY and/or
SHADY LIMITED as a name and mark, Opposer, Mathers has standing to bring this Opposition.
18. Upon information and belief, Applicants, Robyn Dixon and Gizelle Bryant, are
individuals, having an address at Suite 112, 2707 N. Rolling Road, Baltimore, Maryland 21244.
19. Notwithstanding Opposers’ well-known and prior exclusive rights in the marks
SLIM SHADY, SHADY and SHADY LIMITED, Applicants, on February 1, 2022, filed a use and
intent to use trademark Application Serial No. 97248176 for the mark REASONABLY SHADY
for “Eye-shadow; lip gloss; make-up” in International Class 003; “Candles” in International Class
004; “Mugs; Water bottles sold empty” in International Class 021; “Hats; Pants; Shirt; Socks;
Sweatshirts; Jackets” in International Class 025; “Paddle Boards” in International Class 028; and
“Entertainment services, namely, providing podcasts in the field of dating, relationships, marriage,
entrepreneurs, motherhood, style, glam, and current events (Based on Intent to Use) Entertainment
services, namely, an ongoing series featuring dating, relationships, marriage, entrepreneurs,
motherhood, style, glam, and current events provided through television, webcasts, and radio
broadcasts; Hosting social entertainment events, namely, parties for others” in International Class
041.
5
20. There is no issue as to priority. Applicant’s filing date is long after Mathers began
using SLIM SHADY, SHADY and SHADY LIMITED as names and marks, long after the marks
SLIM SHADY, SHADY and SHADY LIMITED had been registered, and long after the names
and marks SLIM SHADY, SHADY and SHADY LIMITED had acquired widespread recognition
and fame.
21. Upon information and belief, Applicants were on actual notice of Opposers’ prior
rights in the names and marks SLIM SHADY, SHADY and SHADY LIMITED before adopting
and seeking to register the confusingly similar mark REASONABLY SHADY. As a matter of
law, based on Opposers’ federal trademark registrations for the marks SLIM SHADY, SHADY
and SHADY LIMITED, Applicants were deemed to be on constructive notice of Opposer’s rights
in the marks SLIM SHADY, SHADY and SHADY LIMITED.
22. There never has been any relationship between Applicant and Opposer, and
Opposer has never authorized or consented to Applicants use or application to register a mark
containing Opposer’s registered mark, SHADY which is also the dominant portion of Opposer’s
marks SLIM SHADY and SHADY LIMITED.
23. The dominant portion of Applicants mark, REASONABLY SHADY, is identical
to Opposer’s registered and prior used mark SHADY.
24. As between Applicants mark and Opposer’s marks, confusion is unavoidable.
Applicant’s mark REASONABLY SHADY, simply looks and sounds like SHADY and suggests
that it represents the services of Mathers.
25. Applicants application and presumption of exclusivity that would come from a
registration to Applicants of the mark sought to be registered is inconsistent with the prior rights
6
of Opposer in the marks SLIM SHADY, SHADY and SHADY LIMITED and Opposer’s rights
flowing from their trademark registrations.
COUNT I – 15 U.S.C. § 1052(d) – LIKELIHOOD OF CONFUSION
26. Opposer incorporates ¶¶ (1) through (25) of this Notice as a part of this count.
27. Applicant’s mark REASONABLY SHADY so resembles Opposer’s mark SLIM
SHADY, SHADY and the mark SHADY LIMITED in terms of appearance, sound and commercial
impression as to be likely, when applied to Applicant’s goods, to cause confusion and mistake and
to deceive.
28. The mark proposed for registration by Applicants, REASONABLY SHADY, is
likely to cause confusion, mistake or to deceive as to the source of origin of Applicant’s services,
contrary to 15 U.S.C. § 1052(d), by causing the consuming public to believe, contrary to fact, that
Applicant’s goods and services in association with the mark REASONABLY SHADY are
sponsored, licensed and/or otherwise approved by, or are in some way connected or affiliated with
Opposer.
29. Applicants use and registration of the mark REASONABLY SHADY is likely to
cause confusion in the minds of consumers or to cause mistake or to deceive, or otherwise injure,
or diminish or detract from the prior rights firmly established by Opposer in and to the marks SLIM
SHADY and SHADY.
30. If Applicants are permitted to use and register the mark REASONABLY SHADY
for the goods specified in the application herein opposed, confusion in trade resulting in damage
and injury to Opposer would be caused and would result by reason of the similarity between the
Applicant’s mark REASONABLY SHADY and Opposer’s marks SLIM SHADY, SHADY and
SHADY LIMITED.
7
COUNT II – 15 U.S.C. § 1052 – DILUTION
31. Opposer incorporates ¶¶ (1) through (30) of this Notice as a part of this count.
32. Opposer’s marks SLIM SHADY, SHADY and SHADY LIMITED are famous and
well-known throughout the United States, and internationally, having been used, advertised and
publicized extensively for 25 years. The marks SLIM SHADY, SHADY and SHADY LIMITED
are inherently distinctive, have become associated exclusively with Opposer by reason of his
international celebrity, his extensive advertising and use on and in connection with his renown, his
concerts, musical recordings and wide variety of clothing sold using the mark. In addition,
Opposer’s marks being the subject of incontestable federal trademark registrations, are widely
recognized by the consuming public as unique designations of source of Opposer’s goods and
services and such mark has become famous.
33. Applicant’s filing date is long after Opposer’s mark became famous.
34. By virtue of the facts that Applicants applied-for mark is confusingly similar to
Opposer’s famous, registered and long used SLIM SHADY, SHADY and SHADY LIMITED
marks, registration of the mark REASONABLY SHADY to Applicants inevitably will call to mind
SLIM SHADY, SHADY and SHADY LIMITED and would therefore dilute and/or would likely
dilute Opposer’s marks SLIM SHADY, SHADY and SHADY LIMITED by impairing the
distinctive quality of Opposer’s marks SLIM SHADY and SHADY to uniquely identify Marshall
Mather’s goods and services. Accordingly, registration of the mark shown in the application
herein opposed violates Section 2(f) of the Lanham Act, 15 U.S.C. § 1052(f)
35. By reason of the foregoing, Opposer will be damaged by the registration of the
mark REASONABLY SHADY to Applicants.
8
WHEREFORE, Opposer, Marshall Mathers III prays that this Notice of Opposition be
sustained in favor of Opposer, that Application Serial No. 97248176, herein opposed, be refused
registration, and for such other and further relief as may be deemed to be just and proper.
Respectfully submitted,
CAESAR RIVISE, PC.
Dated: February 21, 2023 By /s/ Manny Pokotilow

Manny Pokotilow
Douglas Panzer
1635 Market Street
Seven Penn Center – 12th Floor
Philadelphia, PA 19103
Attorneys for Marshall Mathers III
9
CERTIFICATE OF ELECTRONIC FILING
The undersigned hereby certifies that the within AMENDED NOTICE OF OPPOSITION
regarding Application Serial No. 97248176 is being filed electronically with the Trademark Trial
and Appeal Board, via the Electronic System for Trademark Trials and Appeals (ESTTA) on
February 21, 2023.
/s/ Manny Pokotilow

Manny Pokotilow
10
Exhibit A
Generated on: This page was generated by TSDR on 2023-02-06 11:52:16 EST
Mark: SLIM SHADY
US Serial Number: 76152078 Application Filing Oct. 23, 2000

Date:
US Registration 2667895 Registration Date: Dec. 31, 2002
Number:
Register: Principal
Mark Type: Service Mark
TM5 Common Status LIVE/REGISTRATION/Issued and Active
Descriptor:
The trademark application has been registered with the Office.
Status: The registration has been renewed.

Status Date: Dec. 10, 2012
Publication Date:Oct. 08, 2002
Mark Information
Mark Literal SLIM SHADY
Elements:
Standard Character No
Claim:
Mark Drawing 1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
Type:
Name Portrait The name "SLIM SHADY" identifies a living individual whose consent is of record.
Consent:
Goods and Services

Note:
The following symbols indicate that the registrant/owner has amended the goods/services:
Brackets [..] indicate deleted goods/services;
Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
Asterisks *..* identify additional (new) wording in the goods/services.
For: ENTERTAINMENT SERVICES, NAMELY, THE PRESENTATION OF LIVE MUSICAL PERFORMANCES BY A RECORDING ARTIST
International 041 - Primary Class U.S Class(es): 100, 101, 107
Class(es):
Class Status: ACTIVE
Basis: 1(a)
First Use: Jan. 01, 1998 Use in Commerce: Jan. 01, 1998
Basis Information (Case Level)

Filed Use: Yes Currently Use: Yes
Filed ITU: No Currently ITU: No
Filed 44D: No Currently 44E: No
Filed 44E: No Currently 66A: No
Filed 66A: No Currently No Basis: No
Filed No Basis: No
Current Owner(s) Information
Owner Name: MATHERS, MARSHALL B., III
DBA, AKA, c/o Shady Goliath Artists, Inc.
Formerly:
Owner Address: c/o Shady Goliath Artists, Inc.
151 Lafayette Street - 6th Floor
New York, NEW YORK UNITED STATES 10013
Legal Entity Type: INDIVIDUAL Citizenship: UNITED STATES
Attorney/Correspondence Information
Attorney of Record
Attorney Name: Manny D Pokotilow Docket Number: M1319/30006
Attorney Primary trademarks@crbcp.com Attorney Email Yes
Email Address: Authorized:
Correspondent
Correspondent Manny D Pokotilow
Name/Address: Caesar Rivise, PC
1635 Market Street
7 Penn Center - 12th Floor
PHILADELPHIA, PENNSYLVANIA UNITED STATES 19103-2212
Phone: 215-567-2010 Fax: 215-751-1142
Correspondent e- trademarks@crbcp.com mpokotilow@crbcp.com b Correspondent e- Yes
mail: mcgregor@crbcp.com mail Authorized:
Domestic Representative - Not Found
Prosecution History
Proceeding
Date Description
Number
Sep. 19, 2022 TEAS SECTION 8 & 9 RECEIVED
Dec. 31, 2021 COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED
Dec. 10, 2012 NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
Dec. 10, 2012 REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS) 75184
Dec. 10, 2012 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED 75184
Dec. 03, 2012 TEAS SECTION 8 & 9 RECEIVED
Apr. 22, 2009 REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK. 75184
Apr. 06, 2009 RESPONSE RECEIVED TO POST REG. ACTION - SEC. 8 & 15
Apr. 06, 2009 PAPER RECEIVED
Mar. 01, 2009 POST REGISTRATION ACTION MAILED - SEC. 8 & 15 75184
Feb. 05, 2009 TEAS SECTION 8 & 15 RECEIVED
Dec. 31, 2002 REGISTERED-PRINCIPAL REGISTER
Oct. 08, 2002 PUBLISHED FOR OPPOSITION
Sep. 18, 2002 NOTICE OF PUBLICATION
Jul. 22, 2002 APPROVED FOR PUB - PRINCIPAL REGISTER
Jul. 12, 2002 EXAMINERS AMENDMENT MAILED
Jul. 11, 2002 ASSIGNED TO EXAMINER 76836
Aug. 13, 2001 CORRESPONDENCE RECEIVED IN LAW OFFICE
Mar. 21, 2001 NON-FINAL ACTION MAILED
Mar. 19, 2001 ASSIGNED TO EXAMINER 74856
TM Staff and Location Information

TM Staff Information - None
File Location
Current Location: GENERIC WEB UPDATE Date in Location: Dec. 10, 2012
Proceedings
Summary
Number of 2
Proceedings:
Type of Proceeding: Opposition
Proceeding 91272902 Filing Date: Nov 15, 2021

Number:
Status: Terminated Status Date: Apr 15, 2022
Interlocutory TASHIA A BUNCH
Attorney:
Defendant
Name: Alan Hoffer and Melissa More
Correspondent ALAN HOFFER
Address: 23927 94TH AVE S.
KENT WA UNITED STATES , 98031
Correspondent e- alanbhoffer@msn.com , tmapp@legalzoom.com
mail:
Associated marks
Serial Registration
Mark Application Status
Number Number
SLIM SHADY POLITICS Abandoned - After Inter-Partes Decision 90526335
Plaintiff(s)
Name: Marshall Mathers
Correspondent MANNY POKOTILOW
Address: CAESAR RIVISE, PC
1635 MARKET STREET, 12TH FLOOR
PHILADELPHIA PA UNITED STATES , 19103
Correspondent e- mpokotilow@crbcp.com , dpanzer@crbcp.com , mhoppes@crbcp.com , bmcgregor@crbcp.com , wharger@crbcp.com
mail:
Associated marks
Serial Registration
Number Number
SLIM SHADY REGISTERED AND RENEWED 76152078 2667895
Prosecution History
Entry Number History Text Date Due Date
11 TERMINATED Apr 15, 2022
10 BD DECISION: OPP DISMISSED W/O PREJ Apr 15, 2022
9 W/DRAW OF OPPOSITION Apr 13, 2022
8 SUSPENDED Jan 24, 2022
7 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Jan 24, 2022
6 CONFIDENTIAL - PAPER RECEIVED AT TTAB Dec 14, 2021
3 INSTITUTED Nov 15, 2021
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Nov 15, 2021 Dec 25, 2021
1 FILED AND FEE Nov 15, 2021
Proceeding 91157216 Filing Date: Jul 16, 2003

Number:
Status: Terminated Status Date: Jul 30, 2003
Interlocutory
Attorney:
Defendant
Name: Shady Character Unlimited Ltd.
Correspondent Michael R. Gilman
Address: Kaplan & Gilman, LLP
900 Route 9 North
Woodbridge NJ UNITED STATES , 07095
Associated marks
Serial Registration
Number Number
SHADY CHARACTER Cancelled - Section 8 78142662 3303314
Plaintiff(s)
Name: MARSHALL B. MATHERS, III
Correspondent MANNY D. POKOTILOW
Address: CAESAR, RIVISE, BERNSTEIN, COHEN & POKOT
1635 MARKET STREET 12TH FLOOR- 7 PENN
PHILADELPHIA PA UNITED STATES , 19103-2212
Associated marks
Serial Registration
Number Number
SHADY REGISTERED AND RENEWED 75831719 2468453
Prosecution History
22 TERMINATED Jan 07, 2006
21 BD'S DECISION: DISMISSED W/ PREJUDICE Jan 07, 2006
20 DEF AMENDMENT AFTER OPPOSITION Mar 28, 2005
19 WITHDRAWAL OF OPPOSITION Mar 24, 2005
18 SUSPENDED Mar 15, 2005
17 P'S MOT TO SUSP PEND SETLMT NEGOTIATIONS Dec 16, 2004
16 P'S MOT TO SUSP PEND SETLMT NEGOTIATIONS Oct 22, 2004
15 PROCEEDINGS CONSOLIDATED Jul 15, 2004
14 STIPULATION FOR AN EXTENSION OF TIME Jun 23, 2004
13 STIP. PROTEC. ORDER NOTED. May 17, 2004
12 OTHER FILING Feb 25, 2004
11 TRIAL DATES RESET Feb 24, 2004
10 ANSWER TO COUNTERCLAIM Feb 13, 2004
9 OTHER FILING Jan 30, 2004
8 DEF'S REPLY TO PL'S RESPONSE TO DEF'S MOTION FOR EXT OF TIME Dec 10, 2003
7 P'S RESPONSE TO D'S MOT TO EXTEND Dec 03, 2003
DEFENDANT'S MOTION TO EXTEND TIME TO RESPOND TO OPPOSER'S FIRST
6 SETS OF INTERROGATORIES AND DOCUMENT Nov 26, 2003
5 ANSWER AND COUNTERCLAIM ( FEE) Nov 24, 2003

4 NOTICE OF DEFAULT Nov 12, 2003
3 PENDING, INSTITUTED Jul 30, 2003
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Jul 30, 2003 Sep 08, 2003
1 FILED AND FEE Jul 16, 2003
Mark: SLIM SHADY
US Serial Number: 76181431 Application Filing Dec. 15, 2000

Date:
US Registration 2641856 Registration Date: Oct. 29, 2002
Number:
Register: Principal
Mark Type: Trademark
Descriptor:

Status Date: Feb. 03, 2012
Publication Date:Aug. 06, 2002
Mark Information
Elements:
Claim:
Type:
Goods and Services

Note:
For: MUSICAL SOUND RECORDINGS

International 009 - Primary Class U.S Class(es): 021, 023, 026, 036, 038
Class(es):
Basis: 1(a)
First Use: 1996 Use in Commerce: 1996

Filed Use: Yes Currently Use: Yes
Filed ITU: No Currently ITU: No
Filed No Basis: No

Owner Name: MATHERS, MARSHALL B., III
Owner Address: c/o Shady/Goliath Artists, Inc.
Attorney of Record
Attorney Name: Manny D. Pokotilow Docket Number: M1319/30007
Correspondent
Correspondent Manny D. Pokotilow
1635 Market Street
Phone: 215-567-2010 Fax: 215-751-1142
Prosecution History
Proceeding
Date Description
Number
Oct. 29, 2021 COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED
Feb. 03, 2012 NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
Feb. 03, 2012 REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS) 75461
Feb. 03, 2012 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED 75461
Jan. 17, 2012 TEAS SECTION 8 & 9 RECEIVED
Dec. 12, 2011 APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED 88888
Dec. 12, 2011 TEAS CHANGE OF OWNER ADDRESS RECEIVED
Apr. 25, 2008 REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK. 75461
Apr. 25, 2008 ASSIGNED TO PARALEGAL 75461
Apr. 09, 2008 TEAS SECTION 8 & 15 RECEIVED
Oct. 29, 2002 REGISTERED-PRINCIPAL REGISTER
Aug. 06, 2002 PUBLISHED FOR OPPOSITION
Jul. 17, 2002 NOTICE OF PUBLICATION
Apr. 24, 2002 APPROVED FOR PUB - PRINCIPAL REGISTER
Oct. 24, 2001 CORRESPONDENCE RECEIVED IN LAW OFFICE
Oct. 26, 2001 CORRESPONDENCE RECEIVED IN LAW OFFICE
Apr. 24, 2001 NON-FINAL ACTION MAILED

File Location
Current Location: GENERIC WEB UPDATE Date in Location: Feb. 03, 2012
Proceedings
Summary
Number of 2
Proceedings:

Number:
Attorney:
Defendant
mail:
Associated marks
Serial Registration
Number Number
Plaintiff(s)
mail:
Associated marks
Serial Registration
Number Number
Prosecution History

Number:
Interlocutory
Attorney:
Defendant
900 Route 9 North
Associated marks
Serial Registration
Number Number
Plaintiff(s)
Associated marks
Serial Registration
Number Number
Prosecution History

Mark: SLIM SHADY
US Serial Number: 76181429 Application Filing Dec. 15, 2000

Date:
US Registration 2626305 Registration Date: Sep. 24, 2002
Number:
Register: Principal
Descriptor:

Status Date: Feb. 27, 2012
Publication Date:Aug. 21, 2001Notice of Allowance Date:Nov. 13, 2001
Mark Information
Elements:
Claim:
Type:
Goods and Services

Note:
For: CLOTHING; NAMELY, SHIRTS, LONG-SLEEVE T-SHIRTS; SHORT-SLEEVE T-SHIRTS; CAPS, HATS, KNIT HATS AND
BASEBALL CAPS
International 025 - Primary Class U.S Class(es): 022, 039
Class(es):
Basis: 1(a)
First Use: Apr. 1999 Use in Commerce: Apr. 1999

Filed Use: No Currently Use: Yes
Filed ITU: Yes Currently ITU: No
Filed No Basis: No
Owner Name: MATHERS, MARSHALL B. III
Owner Address: c/o Shady/Goliath Artists, Inc.
Attorney of Record
Attorney Name: Manny D Pokotilow Docket Number: M1319/30009
Correspondent
Correspondent Manny D Pokotilow
1635 Market Street
Phone: 215-567-2010 Fax: 215-751-1142
Prosecution History
Proceeding
Date Description
Number
Sep. 24, 2021 COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED
Feb. 27, 2012 NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
Feb. 27, 2012 REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS) 75184
Feb. 27, 2012 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED 75184
Jan. 17, 2012 TEAS SECTION 8 & 9 RECEIVED
Aug. 19, 2008 REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK. 75184
Jun. 30, 2008 ASSIGNED TO PARALEGAL 75184
Jun. 23, 2008 TEAS SECTION 8 & 15 RECEIVED
Sep. 24, 2002 REGISTERED-PRINCIPAL REGISTER
Jun. 20, 2002 ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED
May 10, 2002 CORRESPONDENCE RECEIVED IN LAW OFFICE
May 10, 2002 PAPER RECEIVED
Jan. 29, 2002 NON-FINAL ACTION MAILED
Jan. 23, 2002 ASSIGNED TO EXAMINER 69807
Jan. 18, 2002 STATEMENT OF USE PROCESSING COMPLETE
Dec. 26, 2001 USE AMENDMENT FILED
Nov. 13, 2001 NOA MAILED - SOU REQUIRED FROM APPLICANT
Aug. 21, 2001 PUBLISHED FOR OPPOSITION
Aug. 01, 2001 NOTICE OF PUBLICATION
May 17, 2001 APPROVED FOR PUB - PRINCIPAL REGISTER
May 14, 2001 ASSIGNED TO EXAMINER 69807
May 11, 2001 ASSIGNED TO EXAMINER 76848

File Location
Current Location: GENERIC WEB UPDATE Date in Location: Feb. 27, 2012
Proceedings
Summary
Number of 2
Proceedings:

Number:
Attorney:
Defendant
mail:
Associated marks
Serial Registration
Number Number
Plaintiff(s)
mail:
Associated marks
Serial Registration
Number Number
Prosecution History

Number:
Interlocutory
Attorney:
Defendant
900 Route 9 North
Associated marks
Serial Registration
Number Number
Plaintiff(s)
Associated marks
Serial Registration
Number Number
Prosecution History
6 DEFENDANT'S MOTION TO EXTEND TIME TO RESPOND TO OPPOSER'S FIRST Nov 26, 2003
SETS OF INTERROGATORIES AND DOCUMENT
Mark: SHADY
US Serial Number: 75831719 Application Filing Oct. 26, 1999

Date:
US Registration 2468453 Registration Date: Jul. 10, 2001
Number:
Register: Principal
Descriptor:

Status Date: Mar. 01, 2022
Publication Date:May 16, 2000Notice of Allowance Date:Aug. 08, 2000
Mark Information
Mark Literal SHADY
Elements:
Claim:
Type:
Goods and Services

Note:
For: t-shirts, sweatshirts, shorts, halter tops and hats

International 025 - Primary Class U.S Class(es): 022, 039
Class(es):
Basis: 1(a)
First Use: Jan. 20, 2001 Use in Commerce: Jan. 20, 2001

Filed Use: No Currently Use: Yes
Filed ITU: Yes Currently ITU: No
Filed No Basis: No

Owner Name: Marshall B. Mathers, III
Owner Address: 15821 Ventura Blvd., Suite 370
c/o Michael Oppenheim - NKSFBGO
Encino, CALIFORNIA UNITED STATES 91436
Attorney of Record
Attorney Name: Manny D. Pokotilow Docket Number: M1319/30014
Correspondent
Correspondent Manny D. Pokotilow
1635 Market Street
12th Floor
Phone: 215-567-2010 Fax: 215-751-1142
Prosecution History
Proceeding
Date Description
Number
Mar. 01, 2022 NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
Mar. 01, 2022 CASE ASSIGNED TO POST REGISTRATION PARALEGAL
Mar. 01, 2022 REGISTERED AND RENEWED (SECOND RENEWAL - 10 YRS) 76874
Mar. 01, 2022 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED 76874
Mar. 01, 2022 PETITION TO DIRECTOR - GRANTED 92451
Feb. 24, 2022 TEAS RESPONSE TO PETITION TO DIRECTOR INQUIRY
Feb. 23, 2022 PETITION INQUIRY LETTER ISSUED
Feb. 15, 2022 ASSIGNED TO PETITION STAFF 92451
Jan. 31, 2022 TEAS PETITION TO DIRECTOR RECEIVED 1111
Jan. 08, 2022 POST REGISTRATION ACTION MAILED - SEC. 8 & 9 76874
Jan. 08, 2022 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 76874
Jul. 29, 2021 TEAS SECTION 8 & 9 RECEIVED
Jul. 10, 2020 COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED
Apr. 07, 2011 REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS) 71378
Apr. 07, 2011 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
Apr. 05, 2011 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 71378
Mar. 29, 2011 TEAS SECTION 8 & 9 RECEIVED
Aug. 13, 2007 REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK. 75184
Jul. 31, 2007 ASSIGNED TO PARALEGAL 75184
Jul. 05, 2007 REGISTERED - SEC. 8 (6-YR) & SEC. 15 FILED
Jul. 05, 2007 TEAS SECTION 8 & 15 RECEIVED
Apr. 27, 2004 CANCELLATION TERMINATED NO. 999999 40986
Apr. 27, 2004 CANCELLATION TERMINATED NO. 999999 40986
Apr. 27, 2004 CANCELLATION DENIED NO. 999999 40986
Sep. 10, 2002 TEAS CORR ADDRESS REQUEST RECEIVED BUT NOT PROCESSED LOC IS TTAB
Sep. 06, 2002 CANCELLATION INSTITUTED NO. 999999 40986
Jul. 10, 2001 REGISTERED-PRINCIPAL REGISTER
Mar. 19, 2001 ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED
Feb. 02, 2001 STATEMENT OF USE PROCESSING COMPLETE
Feb. 02, 2001 USE AMENDMENT FILED
Aug. 08, 2000 NOA MAILED - SOU REQUIRED FROM APPLICANT
May 16, 2000 PUBLISHED FOR OPPOSITION
Apr. 14, 2000 NOTICE OF PUBLICATION
Mar. 20, 2000 APPROVED FOR PUB - PRINCIPAL REGISTER
Mar. 17, 2000 EXAMINER'S AMENDMENT MAILED

File Location
Current Location: GENERIC WEB UPDATE Date in Location: Mar. 01, 2022
Assignment Abstract Of Title Information

Summary
Total Assignments: 2 Registrant: SHADY
Assignment 1 of 2
Conveyance: ASSIGNS THE ENTIRE INTEREST

Reel/Frame: 2845/0063 Pages: 4
Date Recorded: Oct. 17, 2003
Supporting assignment-tm-2845-0063.pdf
Documents:
Assignor
Name: WALLACE, WILLIAM S. Execution Date: Aug. 20, 2003
Name: THOMAS, KEVIN Execution Date: Aug. 20, 2003

Name: MOON, NATHAN Execution Date: Aug. 20, 2003

Assignee
Name: MATHERS, MARSHALL B., III
Address: 413 W. 14TH STREET, SUITE 403
NEW YORK, NEW YORK 10014-1023
Correspondent
Correspondent CAESAR, RIVISE, BERNSTEIN, ET AL.
Name:
Correspondent MANNY D. POKOTILOW, ESQ.
Address: 12TH FLOOR - 7 PENN CENTER
1635 MARKET STREET
PHILADELPHIA, PA 19103-2212
Assignment 2 of 2
Conveyance: ASSIGNS THE ENTIRE INTEREST

Reel/Frame: 2847/0595 Pages: 4
Date Recorded: Oct. 20, 2003
Supporting assignment-tm-2847-0595.pdf
Documents:
Assignor
Name: WALLACE, WILLIAM S. Execution Date: Aug. 20, 2003
Legal Entity Type: INDIVIDUAL Citizenship: No Citizenship Found
Name: THOMAS, KEVIN Execution Date: Aug. 20, 2003

Name: MOON, NATHAN Execution Date: Aug. 20, 2003

Assignee
Name: MARSHALL B. MATHERS
Address: 413 W 14TH STREET, SUITE 403
NEW YORK, NEW YORK 10014-1023
Correspondent
Correspondent CAESAR, RIVISE, BERNSTEIN ET.AL.
Name:
Address: 1635 MARKET STREET, 12TH FLOOR
PHILADELPHIA, PA A19103-2212
Proceedings
Summary
Number of 3
Proceedings:
Proceeding 91184191 Filing Date: May 19, 2008

Number:
Status: Terminated Status Date: Aug 28, 2008
Interlocutory ANGELA LYKOS
Attorney:
Defendant
Name: Wathne Imports
Correspondent WATHNE LIMITED
Address: WATHNE LIMITED
156 W 56TH ST
NEW YORK NY UNITED STATES , 10019-3800
Correspondent e- mlangston@wathne.com
mail:
Associated marks
Serial Registration
Number Number
SHADY LINKS Abandoned - After Inter-Partes Decision 77189584
Plaintiff(s)
Name: MarshallB.MathersIII
Correspondent Donna J. Bunton
Address: Nixon & Vanderhye P.C.
901 North Glebe Road, 11th Floor
Arlington VA UNITED STATES , 22203
Correspondent e- nixonptomail@nixonvan.com
mail:
Associated marks
Serial Registration
Number Number
Prosecution History
6 TERMINATED Aug 28, 2008
5 BOARD'S DECISION: SUSTAINED Aug 28, 2008
4 NOTICE OF DEFAULT Jul 14, 2008
3 PENDING, INSTITUTED May 19, 2008
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: May 19, 2008 Jun 28, 2008
1 FILED AND FEE May 19, 2008

Number:
Interlocutory
Attorney:
Defendant
900 Route 9 North
Associated marks
Serial Registration
Number Number
Plaintiff(s)
Associated marks
Serial Registration
Number Number
Prosecution History

Type of Proceeding: Cancellation
Proceeding 92040986 Filing Date: Aug 30, 2002

Number:
Status: Terminated Status Date: Sep 06, 2002
Interlocutory THOMAS W WELLINGTON
Attorney:
Defendant
Name: WILLIAM S. WALLACE, KEVIN THOMAS AND
Correspondent THOMAS R. HESSION
Address: HESSION & BEKOFF
29 ROSALYN ROAD
MINEOLA NY UNITED STATES , 11501
Associated marks
Serial Registration
Number Number
Plaintiff(s)
Address: CAESAR, RIVISE, BERNSTEIN, COHEN ET AL
1635 MARKET STREET 12TH FLOOR- SEVEN PEN N CENTER
Prosecution History
13 BOARD'S DECISION: DISMISSED AS MOOT Apr 27, 2004
12 OTHER FILING Apr 23, 2004
11 SUSPENDED PENDING DISP OF CIVIL ACTION May 19, 2003
10 D'S MOTION TO SUSPEND PROCEEDINGS Feb 24, 2003
9 PL'S REPLY Feb 27, 2003
8 D'S OPPOSITION TO P'S MOT FOR SANCTIONS/D'S MOT TO SUSPEND Feb 24, 2003
7 PL'S MOTION FOR SANCTIONS Feb 07, 2003
6 PROTECTIVE ORDER NOTED Jan 30, 2003
5 STIPULATED PROTECTIVE ORDER Jan 21, 2003
4 ANSWER Oct 15, 2002
3 PENDING, INSTITUTED Sep 06, 2002
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Sep 06, 2002 Oct 16, 2002
1 FILED AND FEE Aug 30, 2002
2/21/23, 10:16 AM Trademark Electronic Search System (TESS)
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Word Mark SHADY LIMITED

Goods and IC 025. US 022 039. G & S: CLOTHING, NAMELY, SHIRTS, LONG-SLEEVE T-SHIRTS, SHORT-SLEEVE T-
Services SHIRTS, CAPS, HATS, KNIT HATS AND BASEBALL CAPS. FIRST USE: 19951231. FIRST USE IN
COMMERCE: 19951231
Mark Drawing
(1) TYPED DRAWING
Code
Serial Number 76473321
Filing Date December 9, 2002
Current Basis 1A
Original Filing
1B
Basis
Published for
February 24, 2004
Opposition
Registration
3199155
Number
Registration Date January 16, 2007
Owner (REGISTRANT) MATHERS, MARSHALL B., III INDIVIDUAL UNITED STATES 151 Lafayette Street - 6th
Floor c/o Shady/Goliath Artists, Inc. New York NEW YORK 10013
Attorney of
Manny D. Pokotilow, Esq.
Record
Prior
2468453
Registrations
Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "LIMITED" APART FROM THE MARK AS
SHOWN
Type of Mark TRADEMARK
Register PRINCIPAL
Affidavit Text SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20170525.
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Mathers v. Dixon

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Mathers v. Dixon

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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

MARSHALL MATHERS III :

AMENDED NOTICE OF OPPOSITION

by his attorneys, alleges as follows:

2. Mathers is an internationally known entertainer also known as EMINEM, SLIM

SHADY and SHADY.

musical performances by a recording artist in interstate commerce.

13. All, of the above-listed registrations, are owned by Opposer, Mathers.

hereto as Exhibit A and are made a part hereof.

come to represent the enormous goodwill of Mathers.

SHADY and SHADY LIMITED famous and distinctive.

services, namely, an ongoing series featuring dating, relationships, marriage, entrepreneurs,

in the marks SLIM SHADY, SHADY and SHADY LIMITED.

marks SLIM SHADY and SHADY LIMITED.

23. The dominant portion of Applicants mark, REASONABLY SHADY, is identical

to Opposer’s registered and prior used mark SHADY.

24. As between Applicants mark and Opposer’s marks, confusion is unavoidable.

that it represents the services of Mathers.

flowing from their trademark registrations.

COUNT I – 15 U.S.C. § 1052(d) – LIKELIHOOD OF CONFUSION

27. Applicant’s mark REASONABLY SHADY so resembles Opposer’s mark SLIM

28. The mark proposed for registration by Applicants, REASONABLY SHADY, is

SHADY and SHADY.

services and such mark has become famous.

mark REASONABLY SHADY to Applicants.

CAESAR RIVISE, PC.

Dated: February 21, 2023 By /s/ Manny Pokotilow

Attorneys for Marshall Mathers III

/s/ Manny Pokotilow

US Serial Number: 76152078 Application Filing Oct. 23, 2000

Status: The registration has been renewed.

Goods and Services

Basis Information (Case Level)

TM Staff and Location Information

Type of Proceeding: Opposition

Proceeding 91272902 Filing Date: Nov 15, 2021

Type of Proceeding: Opposition

Proceeding 91157216 Filing Date: Jul 16, 2003

5 ANSWER AND COUNTERCLAIM ( FEE) Nov 24, 2003

US Serial Number: 76181431 Application Filing Dec. 15, 2000

Status: The registration has been renewed.

Goods and Services

For: MUSICAL SOUND RECORDINGS

Basis Information (Case Level)

Current Owner(s) Information

TM Staff and Location Information

Type of Proceeding: Opposition

Proceeding 91272902 Filing Date: Nov 15, 2021

Type of Proceeding: Opposition

Proceeding 91157216 Filing Date: Jul 16, 2003

5 ANSWER AND COUNTERCLAIM ( FEE) Nov 24, 2003

US Serial Number: 76181429 Application Filing Dec. 15, 2000

Status: The registration has been renewed.

Goods and Services

Basis Information (Case Level)

TM Staff and Location Information

Type of Proceeding: Opposition

Proceeding 91272902 Filing Date: Nov 15, 2021

Type of Proceeding: Opposition

Proceeding 91157216 Filing Date: Jul 16, 2003

US Serial Number: 75831719 Application Filing Oct. 26, 1999

Status: The registration has been renewed.

Goods and Services