~ IN THE‘ UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`In the matter of Application Serial No. 76/494490
`Published for Opposition in the OFFICIAL GAZETTE of October 7, 2003
`
`ANTHONY HAWK,
`OPPOSCL
`
`Opposition No.:
`
`V.
`
`A
`
`2
`
`/
`
`T
`
`7
`
`_7 g
`
`APOGEE SOFTWARE, LTD.,
`Applicant.
`
`
`‘lb
`
`1o-14-2003
`.
`U.S. Pate t
`n 8‘ TM°’°’T'V' Mail Rem Dt. #39
`
`NOTICE OF OPPOSITION
`
`Anthony Hawk (“Opposer”), is an individual having his principal place of business at
`
`31878 Del Obispo, Suite 118-602, San Juan Capistrano, CA 92675, believes he will be damaged
`
`by registration of the mark TOMMY HAWK shown in Serial No. 76/494,490 in International
`
`Classes 09, 28 and 41, filed by Apogee Software Ltd., (“Applicant”), and hereby opposes the
`
`same.
`
`11/04/2003 KGIBBONS 00000130 76494490
`300$0 OP
`
`0115676402
`
`As grounds for this Opposition, it is alleged:
`
`1.
`
`On or about March 4, 2003, Applicant filed an intent to use application with the
`
`United States Patent and Trademark Office to register TOMMY HAWK (hereinafter
`
`“Applicant’s Mark”) for:
`
`09: Computer and video products, namely, video game machines for use with
`
`televisions; video game cartridges; video game tape cassettes; pre-recorded video
`
`tapes featuring computer games and computer game characters; pre-recorded
`
`DVD's and CD-ROMS featuring computer games and computer game characters;
`
`Opposition.doc
`
`1
`
`
`
`
`In the matter of Application Serial No. 76/494490
`Published for Opposition in the OFFICIAL GAZETTE of October 7, 2003
`
`ANTHONY HAWK,
`OPPOSCL
`
`Opposition No.:
`
`V.
`
`A
`
`2
`
`/
`
`T
`
`7
`
`_7 g
`
`APOGEE SOFTWARE, LTD.,
`Applicant.
`
`
`‘lb
`
`1o-14-2003
`.
`U.S. Pate t
`n 8‘ TM°’°’T'V' Mail Rem Dt. #39
`
`NOTICE OF OPPOSITION
`
`Anthony Hawk (“Opposer”), is an individual having his principal place of business at
`
`31878 Del Obispo, Suite 118-602, San Juan Capistrano, CA 92675, believes he will be damaged
`
`by registration of the mark TOMMY HAWK shown in Serial No. 76/494,490 in International
`
`Classes 09, 28 and 41, filed by Apogee Software Ltd., (“Applicant”), and hereby opposes the
`
`same.
`
`11/04/2003 KGIBBONS 00000130 76494490
`300$0 OP
`
`0115676402
`
`As grounds for this Opposition, it is alleged:
`
`1.
`
`On or about March 4, 2003, Applicant filed an intent to use application with the
`
`United States Patent and Trademark Office to register TOMMY HAWK (hereinafter
`
`“Applicant’s Mark”) for:
`
`09: Computer and video products, namely, video game machines for use with
`
`televisions; video game cartridges; video game tape cassettes; pre-recorded video
`
`tapes featuring computer games and computer game characters; pre-recorded
`
`DVD's and CD-ROMS featuring computer games and computer game characters;
`
`Opposition.doc
`
`1
`
`
`
`
`
`Z
`
`motion picture films featuring video games and video game characters; television
`
`game programs featuring‘ computer games and computer game characters;
`
`television game monitor consoles; computer game analog controllers in the nature
`
`of a hand held device for accessing computer games; computer game joysticks;
`
`memory cards, computer game software; computer game discs; computer game
`
`programs; computer game cassettes, computer game tapes, computer game
`
`cartridges, computer software featuring computer games that can be downloaded
`
`through a global computer network; multimedia software recorded on a CD-ROM
`
`featuring computer games; computers; computer hardware and computer
`
`firmware for use in operating computer games; computer mouse pads.
`
`28: Toys, namely, action figures and accessories therefor, mechanical action toys,
`
`card games, board games, coin-operated pinball machines, role playing games,
`
`jigsaw puzzles, manipulative puzzles and cube puzzles, toy figures, plush toys,
`
`toy vehicles, and costume mask; stand alone video game machines; hand held unit
`
`for playing electronic games; and coin-operated video games.
`
`41: Entertainment services in the nature of the production and distribution of
`
`motion picture films; production of prerecorded video cassettes, video discs and
`
`laser discs; entertainment services in the nature of a live-action and/or animated
`
`television program series and production of live-action, and/or animated motion
`
`picture films for television; entertainment services in the nature of computer
`
`games provided and played through a global computer network; entertaimnent
`
`services, namely, live performances by a musical rock group.
`
`Opposition.doc
`
`
`
`
`
`2.
`
`Opposer, commonly known as TONY HAWK, is the world’s most famous
`
`skateboarder. He is one of the world’s most famous athletes. He has appeared innumerable
`
`times on television, in newspapers and magazines. In addition, he has licensed the use of his
`
`name on many different types of products, the sales of which exceed hundreds of millions of
`
`dollars’ worth of products.
`
`3.
`
`Since at least as early as October 7, 1999, Opposer has been using TONY HAWK
`
`on goods in International Class 09 for computer games, including one of the best selling
`
`computer games of all times, TONY HAWK’S PRO SKATER.
`
`4.
`
`Opposer is the owner of:
`
`(a)
`
`U.S. Trademark Application S/N 76/327,639, for TONY HAWK, filed as
`
`an intent-to-use application on October 19, 2001, in International Class 09
`
`(allowed January 21, 2003), with a request to divide to be filed along with a
`
`statement of use for certain goods.
`
`(b)
`
`U.S. Trademark Registration No. 2,449,964, registered May 8, 2001, for
`
`TONY HAWK in Class 28.
`
`(c)
`
`U.S. Trademark Application No. 76/327,637, filed as an intent-to-use
`
`application on October 10, 2001, in International Class 41 (final review before
`
`registration has been completed for this Intent to Use application and it will
`
`register in due course).
`
`(d)
`
`U.S. Trademark Application S/N 76/505,059, for TONY HAWK’S PRO
`
`SKATER, filed April 7, 2003, claiming a first use date of October 7, 1999.
`
`5.
`
`There is no issue as to priority. Applicant’s priority date for its intent-to-use
`
`application is later than Opposer’s first use of TONY HAWK and Opposer’s earliest filed
`
`applications and registration. Since long prior to Applicant’s filing of the application for
`
`Opposition.doc
`
`3
`
`
`
`
`
`"K
`V.
`
`Applicant’s Mark (no use of Applicant’s Mark having been alleged by Applicant), Opposer has
`
`made substantial and continuous use of the TONY HAWK Mark in interstate, foreign, and
`
`intrastate commerce on and in connection with the advertising, promotion, and sale of its goods
`
`and services in Classes 09, 28 and 41. Specifically, it has used the TONY HAWK Mark since as
`
`early as October 7, 1999 for computer games, and long before that for other goods or services.
`
`6.
`
`By virtue of the aforesaid advertising, promotion, and sales, and by virtue of the
`
`excellence of his products and reputation, Opposer’s TONY HAWK Mark has come to represent
`
`exceedingly valuable goodwill owned by Opposer.
`
`7.
`
`The goods and services on which Opposer uses its TOMMY HAWK Mark and
`
`the goods and services for which Applicant seeks to register Applicant’s Mark are closely
`
`related, if not identical, and are sold through the same channels of trade and to the same class of
`
`purchasers.
`
`8.
`
`Opposer’s TONY HAWK Mark and Applicant’s TOMMY HAWK Mark are
`
`confusingly and substantially similar. This is especially true since the only difference between
`
`the marks is consonants that are extremely similar in sound, “M” and “N.”
`
`9.
`
`Use by Applicant of Applicant’s Mark will be likely to cause confusion, mistake,
`
`or deception with Opposer’s Mark, and result in the belief that Applicant or Applicant’s goods
`
`or services are in some way legitimately connected with, sponsored by, or approved by Opposer,
`
`resulting in damage and injury to Opposer. Persons familiar with Opposer’s Mark would be
`
`likely to buy Applicant’s goods or services as and for a product made and sold by Opposer. Any
`
`such confusion in trade inevitably would result in loss of sales to Opposer. Furthermore, any
`
`defect, objection, or fault found with Applicant’s goods and services marketed under Applicant’s
`
`Opposition.doc
`
`4
`
`
`
`
`
`1.
`1
`
`Mark would necessarily reflect upon and seriously injure the reputation that Opposer has
`
`established for its goods and services merchandised under Opposer’s Mark.
`
`10.
`
`Any use Applicant has made or may make of Applicant’s Mark, is and will be
`
`without Opposer’s consent or permission.
`
`1 1.
`
`Applicant has no good faith intention to use Applicant’s Mark.
`
`12.
`
`Opposer has previously apposed Applicant’s Application No. 76/436,318 for
`
`TOMMY HAWK in International Class 09.
`
`WHEREFORE, registration by Applicant of the aforesaid Applicant’s Mark for the
`
`aforesaid goods and services will be damaging to Opposer, and Opposer therefore requests that
`
`the Opposition be sustained.
`
`Opposer submits herewith the requisite $300.00 filing fee.
`
`Please address all correspondence to John R. Sommer, Esq., Attorney-at-Law, 17426
`
`Daimler Street, Irvine, California 92614.
`
`Opposition.doc
`
`5
`
`
`
`
`
`IV
`I
`
`This Request is being submitted in triplicate as required by 37 C.F.R. § 2.102(d).
`
`Respectfully submitted,
`
`
`
`John R. Sommer
`\
`A o ey-at-Law
`17
`Daimler Street
`
`
`
`Irvine, CA 92614
`(949) 752-5344
`Fax: (949) 752-5439
`SOMMER@STUSSY.COM
`
`Attorney for Opposer
`
`CERTIFICATE OF COURIER SHIPMENT
`
`The undersigned certifies that the within is being deposited with Federal Express as
`
`Overnight in an envelope addressed to the Commissioner for Trademarks, Box TTAB FEE, 2900
`
`Crystal Drive, Suite 3B—30, Arlington, Virginia 22202-3513 prepaid, on October 10, 2003.
`
`
`
`John R. Sommer
`
`
`
`Opposition.doc
`
`6
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