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`&
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition ofthe Mark
`
`ZOZOBRA
`PRODUCTIONS
`
`Published for Opposition:
`
`Dec. 3, 2003
`
`Trademark Appl. Serial No. 76/459,547
`
`Date of Application Filing:
`
`Oct. 21, 2003
`
`Opposition No_ 91 159350
`
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`
`RAY JOHN DE ARAGON
`dba “Zozobra Productions”,
`Applicant
`
`v.
`
`SANTA FE DOWNTOWN,
`KIWANIS FOUNDATION
`Qpposen
`
`ANSWER TO OPPOSITION
`
`US. Patent 3. TMOfc/TM Mail Rap! or, #32
`
`oa-17-2oo4
`
`Applicant:
`
`Ray John de Aragon, dba Zozobra Productions
`2213 Hot Springs Blvd.
`P.O. Box 1505
`
`Las Vegas, New Mexico 87701
`
`Opposer:
`
`Santa Fe Downtown Kiwanis Foundation’
`P.O. Box 622
`
`Santa Fe New Mexico
`
`87504
`
`Al_l_SV_V_e£
`
`In response to this Opposition, Applicant states that:
`
`1. Since the time of the applicant’s filing for the mark Zozobra Productions, Zozobra
`
`Productions is now currently a non—profit organization incorporated under the laws of the State of
`
`New Mexico. As the original applicant, and as an officer and representative of the non-profit,
`
`Ray John de Aragon herewith submits this answer to the Opposition.
`
`2. The Applicant believes that the claim ofthe Opposer: Santa Fe Downtown Kiwanis
`
`Page 1 of 7
`
`
`
`&
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition ofthe Mark
`
`ZOZOBRA
`PRODUCTIONS
`
`Published for Opposition:
`
`Dec. 3, 2003
`
`Trademark Appl. Serial No. 76/459,547
`
`Date of Application Filing:
`
`Oct. 21, 2003
`
`Opposition No_ 91 159350
`
`mmmmummmmmmummmmnu
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`)
`)
`)
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`) )
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`) )
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`) )
`
`)
`)
`)
`
`RAY JOHN DE ARAGON
`dba “Zozobra Productions”,
`Applicant
`
`v.
`
`SANTA FE DOWNTOWN,
`KIWANIS FOUNDATION
`Qpposen
`
`ANSWER TO OPPOSITION
`
`US. Patent 3. TMOfc/TM Mail Rap! or, #32
`
`oa-17-2oo4
`
`Applicant:
`
`Ray John de Aragon, dba Zozobra Productions
`2213 Hot Springs Blvd.
`P.O. Box 1505
`
`Las Vegas, New Mexico 87701
`
`Opposer:
`
`Santa Fe Downtown Kiwanis Foundation’
`P.O. Box 622
`
`Santa Fe New Mexico
`
`87504
`
`Al_l_SV_V_e£
`
`In response to this Opposition, Applicant states that:
`
`1. Since the time of the applicant’s filing for the mark Zozobra Productions, Zozobra
`
`Productions is now currently a non—profit organization incorporated under the laws of the State of
`
`New Mexico. As the original applicant, and as an officer and representative of the non-profit,
`
`Ray John de Aragon herewith submits this answer to the Opposition.
`
`2. The Applicant believes that the claim ofthe Opposer: Santa Fe Downtown Kiwanis
`
`Page 1 of 7
`
`
`
`
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`Foundation, is not valid.
`
`3. To the best ofApplicant’s infomied understanding and knowledge, zozobra is a
`
`Spanish language word interpreted to mean anguish in English and is a generic term rising from
`
`the collective and vibrant intellect of the Spanish culture. Being such no single entity can purport
`
`to have sole ownership and exclusive rights to its use as the Santa Fe Downtown Kiwanis
`
`organization would want done and repeatedly, but wrongly, is doing. In and by so doing, Kiwanis
`
`International inflicts great insult and insolent injury on the Spanish speaking world and culture,
`
`especially since the depicted characterization ofthis generic Spanish word is a horrendous and
`
`ugly marionette that, itself, has no direct connection with the Spanish language or culture.
`
`Further, zozobra has been extensive used by numerous authors, poets, playwrights, etc. in Spanish
`
`classical works for centuries and it is intellectually dishonest for anyone to claim that it is a
`
`creation of any individual in this century.
`
`4. The Applicant has never claimed, and could never claim, exclusive rights to use of the
`
`term zozobra; rather it uses this word in conjunction with “Productions” as its trade name to
`
`identify goods in commerce.
`
`5. The Santa Fe Downtown Kiwanis Foundation may have filed some video recording in
`
`1999 which outlined its present day membership’s collective recall of the historical development
`
`of an event they describe to be “Will Shuster’s Burning of Zozobra” and wherein they use his and
`
`other persons’ artistic renditions thereof.. The video film and other reproductions of Shuster’s
`
`artwork are reprinted on lithographic prints and posters and sometimes, but not always, are, for
`
`generally descriptive purposes, entitled “ ozobra de Santa Fe”; other similar artwork is
`
`sometimes onto clothing apparel, including undergarments. When need for monies may arise,
`
`Page 2 of 7
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`
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`these illustrations are said to be sold to raise funds to encourage attendance at an annual pagan
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`efiigy burning which was begun as a counter-event to celebration known as Fiestas de Santa Fe.
`
`which have promote more Christian significance and focus and are rooted in the Spanish Catholic
`
`tradition which predates any zozobra event the Kiwanis would now have ignored and thwarted. ..
`
`6. In 1982, the Santa Fe Downtown Kiwanis Foundation or the Santa Fe Fiesta Council
`
`authorized production of a full color poster to promote the Fiesta de Santa Fe and which had a
`
`painting commissioned by the Fiesta Council. Rightly or wrongly, this poster proclaimed it was
`
`produced under the oificial sanction and emblem of Kiwanis International and thereby implicitly
`
`asserts that it is authorized by Kiwanis International. The poster was entitled “La Noche de
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`Zozobra Santa Fe, Nuevo Mexico” which translated into English is, “The Night of Anguish, Santa
`
`Fe, New Mexico”. The date 1982 is imprinted on one end ofthe poster and on the opposite side
`
`alongside the symbol of Kiwanis International appear the word, “zozobra” copyright owned by
`
`the Santa Fe Kiwanis Downtown Foundation. The copyright symbol © is nowhere to be found on
`
`the poster, nor is the word “zozobra” listed as a trade name, trade mark or service mark
`
`anywhere on this poster, nor is it stated anywhere that this is an interpretation of the artist Will
`
`Shuster’s original rendering by this new artist.
`
`7. The Santa Fe Downtown Kiwanis Foundation, as the sponsoring organization,
`
`develops these promotional materials and items to encourage attendance and enhance gate
`
`receipts at the amiual efligy burning.
`
`8. On July 7, 1999, the Santa Fe Downtown Kiwanis Foundation “applied to the New
`
`Mexico Secretary of State’s Oflice for use of the word “zozobra” as a trademark, claiming
`
`exclusive rights to use the word to identify the art work, stating, ..”used to identify a drawing of
`
`Page 3 of 7
`
`
`
`an animated, mechanical puppet.” Added along with the word “zozobra” is in parenthesis “(design
`
`on file)”, however no such filing has been made. The Santa Fe Downtown Kiwanis Foundation’s
`
`registration however does not mention Will Shuster as the originator of the marionette (puppet).
`
`9. The word “zozobra” has been used by the Santa Fe Downtown Kiwanis Foundation as
`
`an identifier or title, among others, including as a primary title, Old Man Gloom, specifically for
`
`the Will Shuster image, drawing, marionette, or puppet, and not as a trademark, trade name, or
`
`service mark to identify goods or services, to distinguish these from any others sold in commerce.
`
`The Santa Fe Downtown Kiwanis Foundation does represent its Kiwanis chapter membership and
`
`association by calling itself the “Kiwanis”, and also presents its connection to Kiwanis
`
`International, the parent organization, which has member chapters throughout the United States.
`
`Kiwanis International oflicially sanctions or charters authorized branches under its jurisdiction and
`
`bylaws. The artwork title, “Will Shuster’s Zozobra de Santa Fe,” does not function as a
`
`trademark to identify goods or services as coming fiom a particular source, but is applied to
`
`prints, posters, t—shirts, etc. exclusively and only as an artistic ornamentation. The title,”Will
`
`Shuster’s Zozobra de Santa Fe is primarily descriptive of any goods or services they say they are
`
`providing, or are involved with in United States Commerce.
`
`10. The use ofthe popular Spanish word “zozobra” as a title or identifying name by the
`
`Santa Fe Downtown Kiwanis Foundation for the marionette drawing or sculptured figure is set
`
`forth merely to promote its kind or identify it as compared to other marionettes with their own
`
`distinct natures or characters. Characterized as a massive, or ponderous work of art, this
`
`“zozobra”, this animated marionette sculptured figure and its ritual burning does not fall into the
`
`area of trade or manufactured goods sold in commerce which would qualify it, or entitle it, to
`
`Page 4 of 7
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`
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`trademark registration although the Santa Fe Downtown Kiwanis Foundation states that it does.
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`At best, the marionette is designed to be burned in effigy as is ofien seen at high school.
`
`homecoming football game bonfires and used as temporary attention-getters and spirit—builders.
`
`11. This singular marionette figure, burned in a once—a-year event, is not a product
`
`manufactured on a large scale with identifying words on packaging or wrapping therefore, neither
`
`wholesalers, retailers, or consumers would identify this marionette figure as salable gods, or
`
`goods for purchase. This marionette figure aiso does not fall under any international schedule of
`
`classes of goods and services.
`
`12. The word “zozobra” is used by the Santa Fe Downtown Kiwanis Foundation as a part
`
`of descriptive words or phrases such as their registered statement, “...used to identify a drawing of
`
`an animated, mechanical puppet.” This statement clearly indicates that the Spanish word
`
`“zozobra” is otficially registered only to identify a drawing and not the mechanical puppet per se.
`
`13. There is nothing to document the claims ofthe Santa Fe Downtown Kiwanis
`
`Foundation. Will Shuster’s artistic pictorial or sculptural rendering has been applied as an artistic
`
`composition to T-shirts, posters and prints, but this would only qualify it as reproductions of
`
`works of art with copyright protection only if the original artwork was copyrighted by the author
`
`under copyright regulations. Copyright is not granted if it is not an original work and the original
`
`author of the work must submit the application. In this case, Will Shuster is a deceased artist.
`
`Also, a title for an artwork can not be copyrighted. Furthermore, the appearance, design, and
`
`look ofthe constructed mechanical puppet necessarily changes fiom year to year and has never
`
`remained the same since its inception in 1926 and now only vaguely resembles Will Shuster’s
`
`original artwork. Exclusive statutory rights are implied or claimed by the Santa Fe Downtown
`
`Page 5 of 7
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`
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`Kiwanis Foundation, but not legally substantiated.
`
`14. The Santa Fe Downtown Kiwanis Foundation received fights to Will Shuster’s
`
`interpretive artwork fiom his widow and as such can not claim to own registered copyright or
`
`trade names which neither Will Shuster nor his heirs had previously possessed. If Will Shuster
`
`had held such rights through copyright and trademark registration then he, and only he alone,
`
`could have issued this transfer by informing the original issuing agencies, chiefly the Library of
`
`Congress and the U.S. Patent and Trademark Office or, at the very least, the Trademark Division
`
`of the New Mexico Secretary of State’s Oflice.
`
`15. Opposer has never shown a copy of the mark, a drawing of the mark, a description of
`
`the mark in the appropriate field nor any image of the mark they claim will be damaged by the
`
`registration.
`
`16. The trademark which Opposer claims to have registered with the State ofNew
`
`Mexico is for a design of a puppet. Exhibit A.
`
`17. The Applicant does possess a registered trademark for the name Zozobra Productions
`
`to describe and identify goods or services, which are provided. This registration was issued alter
`
`the Trademark Division of the New Mexico Secretary of State’s Oflice conducted a research of
`
`their records and their examiners found no likelihood of confusion, nor conflict with existing
`
`trademarks. Exhibit B.
`
`18. To the best of the Applicant’s knowledge, the Opposer has never conducted business
`
`activities under the name “Zozobra” in commerce either in the State of New Mexico, not
`
`elsewhere. Their business activities have always been conducted under the name, “Santa Fe
`
`Downtown Kiwanis’. The channel of trade that the Opposer has been involved with has been
`
`Page 6 of 7
`
`
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`solely as a non-profit civic organization involved in “fundraisers” and not consumer goods and
`
`services as claimed. The Opposer refers to itselfin the Opposition as a “consumer association” to
`
`mislead, and mis-plead.
`
`Date: March 16, 2004
`
`By’
`
`Edward F. Benavidez
`
`Attorney for the Applicant
`USPTO Reg. No. 76/459,547
`
`Edward F. Benavidez Law Firm
`
`10428 Heron Rd. SW
`
`Albuquerque NM 87121
`Phone: (505) 831-5293
`Fax:
`(505) 839-4143
`
`I certify that, on March 16, 2004, a copy of the foregoing Answer to Opposition was mailed to:
`
`Santa Fe Downtown Kiwanis Foundation
`
`% Kevin Lynn Wildenstein
`Attorney for Opposer
`6700-B Jeiferson NE, Suite 8
`
`Albuquerque, New Mexico 87109
`
`
`
`
`
`Edward F. Bena dez, Esquire
`
`Page 7 of 8
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