Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA107616
`ESTTA Tracking number:
`11/02/2006
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Entity
`Address
`
`Experience Hendrix, L.L.C.
`Citizenship
`Limited Liability Company
`14501 Interurban Avenue South
`Seattle, WA 98168
`UNITED STATES
`
`Washington
`
`Attorney
`information
`
`Karen Wetherell Davis
`Elliott, Ostrander & Preston, P.C.
`707 SW Washington Street Suite 1500
`Portland, OR 97205
`UNITED STATES
`karen@eoplaw.com, bill@eoplaw.com Phone:(503) 224-7112
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`78643694
`11/02/2006
`
`Publication date
`Opposition
`Period Ends
`
`10/03/2006
`11/02/2006
`
`Electric Ladyland, L.L.C.
`#100 15435 N. Scottsdale Road
`Scottsdale, AZ 85254
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 014. First Use: 2002/10/25 First Use In Commerce: 2002/10/25
`All goods and sevices in the class are opposed, namely: Jewelry, namely, belt buckles of precious
`metal, bonnet pins of precious metal, bracelets, brooches, charms, chokers, clip earrings, costume
`jewelry, cufflinks, diamonds, ear clips, ear studs, earrings, hat ornaments of precious metal,
`identification bracelets, jewelry chains, jewelry pendants, jewelry watches, key chains of precious
`metal, lapel pins, neck chains, necklaces, pet jewelry, rings, tiaras, watch bands, and watches
`Class 018. First Use: 2002/10/25 First Use In Commerce: 2002/10/25
`All goods and sevices in the class are opposed, namely: Leather and travel goods, namely, all
`purpose sport, athletic and carrying bags, backpacks, baby carrying bags, beach bags, book bags,
`briefcases, business card cases, business cases, calling card cases, carryalls, carry-on bags, charm
`bags, clothing for animals, cosmetic bags sold empty, diaper bags, duffle bags, fur, fanny packs,
`handbags, gym bags, imitation leather bags, wallets, purses, overnight bags, pet collar accessories,
`namely, bows and charms, tote bags, traveling bags, and umbrellas
`Class 025. First Use: 2002/10/25 First Use In Commerce: 2002/10/25
`All goods and sevices in the class are opposed, namely: Clothing and clothing accessories, namely,
`blouses, shirts, underwear, t-shirts, sweatsuits, dresses, hosieries, shoes, hats, and belts
`
`Attachments
`
`Notice of Opposition.pdf ( 5 pages )(123971 bytes )
`
`

`
`Exhibit A to Notice of Opposition.pdf ( 1 page )(91253 bytes )
`Exhibit B to Notice of Opposition.pdf ( 2 pages )(234037 bytes )
`
`Signature
`Name
`Date
`
`/Karen Wetherell Davis/
`Karen Wetherell Davis
`11/02/2006
`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`EXPERIENCE HENDRIX, L.L.C.
`
`Opposer,
`
`Opposition No.:
`
`V.
`
`In re Application Serial No. 78/643,694
`Filed: June 3, 2005
`Mark: ELECTRIC LADYLAND
`
`ELECTRIC LADYLAND, L.L.C.,
`
`Published: October 3, 2006
`
`Applicant.
`
`
`
`NOTICE OF OPPOSITION
`
`STANDING
`
`Experience Hendrix, L.L.C., a Washington limited liability company with a principal
`
`place of business at 14501 Interurban Avenue South, Seattle, Washington 98168, U.S.A.
`
`(“Opposer”), believes that it will be damaged by registration of the mark in the above identified’
`
`application (the “Application”) and hereby opposes same. Opposer claims standing under 15
`
`U.S.C. § 1063.
`
`Opposer was established by the father and sole heir of the estate of Jimi Hendrix, and is
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`owned and operated by family members of Jimi Hendrix. Opposer owns trademark rights related
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`to the late Jimi Hendrix, including numerous US and foreign registered trademarks, and has
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`made application for registration of various marks related to Jimi Hendrix’s legacy and music,
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`including the mark “ELECTRIC LADYLAND” (the “Mark”), based on Opposer’s prior and
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`continuous use of the Mark.
`
`NOTICE OF OPPOSITION - 1
`
`

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`
`
`GROUNDS
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`As grounds for opposition, it is alleged that:
`
`(Likelihood of Confusion, 15 US C. § I052(d2)
`
`1.
`
`Applicant seeks to register a mark that was first coined by Jimi Hendrix, in 1968,
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`when he wrote and recorded a song entitled “Electric Ladyland" and included the song on an
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`album entitled ELECTRIC LADYLAND. Both the song and the album continue to be of
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`worldwide renown. The song and the album are sold and licensed throughout the world by
`
`Opposer and are two of Jirni Hendrix’s most famous works. The album has been certified as
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`double platinum by the Recording Industry Association of America. The album has been
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`released over 100 times in various media throughout the world under the Mark.
`
`2.
`
`Opposer further sells items of merchandise under the Mark, including without
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`limitation printed materials, key chains, plaques, and boxes. Opposer sells these goods through
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`its own catalog and website sales, and licensee sales to retailers.
`
`3.
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`Since at least as early as 1968, Opposer (including its predecessors in interest) has
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`been, and is now, using the mark “ELECTRIC LADYLAND” in connection with the sale of
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`goods. Opposer’s use has been valid and continuous, and has not been abandoned. The Mark is
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`symbolic of extensive goodwill and consumer recognition built up by Opposer through
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`substantial amounts of time and effort in advertising and promotion. Opposer has filed numerous
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`applications for registration of the Mark with the United States Patent and Trademark Office
`
`(Serial Nos. 77/010,863; 77/011,673; 77/011,650; 77/011,655; 77/011,653; 77/011,675;
`
`77/010,830; 77/011,677).
`
`NOTICE OF OPPOSITION - 2
`
`

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`
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`4.
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`Opposer owns and enjoys common law trademark rights in the Mark “ELECTRIC
`
`LADYLAND,” throughout the United States and worldwide. These rights are prior to and
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`superior to any rights that Applicant may claim in and to the same or similar mark.
`
`5.
`
`Applicant has applied to register the identical Mark as that owned by Opposer, for
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`numerous goods including the following: jewelry, key chains, bags, and clothing. Applicant’s
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`goods and services are similar to the goods provided by Opposer under the Mark, are sold
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`through retail stores and a website, and are likely to be purchased by the same class of
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`purchasers and enter the same channels of trade as Opposer’s goods. In view of the fact that
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`Applicant proposes to register a mark identical to Opposer’s Mark, and the related nature of the
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`goods and services and channels of trade and class of purchasers, it is alleged that AppIicant’s
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`mark so resembles Opposer’s Mark as to be likely to cause confusion, or to cause mistake or to
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`deceive. Applicant’s specimen of use enclosed with its application, with its distinctive styling
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`and font, is likely to further cause confusion, or to cause mistake or to deceive. Compare Exhibit
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`A (Applicant’s specimen of use) with Exhibit B (Opposer’s specimen of use since 1968).
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`6.
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`If Applicant is granted the registration herein opposed, it would thereby obtain at
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`least primafacie exclusive right to the use of its Mark, and such registration would damage
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`Opposer.
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`7.
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`8.
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`(False Designation of Origin/False Connection, 15 US. C. § 1052(a2)
`
`Opposer realleges paragraphs 1 through 6, as set forth above.
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`In View of the identical marks used and sought to be registered by Opposer and
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`Applicant, and the similarity of the uses thereof, which are likely to cause confusion, or to cause
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`mistake, or to deceive as to the affiliation, connection, or association of Applicant with Opposer,
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`or as to the origin, sponsorship, or approval of Applicant’s goods, services, or commercial
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`NOTICE OF OPPOSITION - 3
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`

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`
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`activities by Opposer, as alleged herein, Applicant’s use and registration of the Mark constitutes
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`a false designation of origin of the Mark, and further falsely suggests a connection of Applicant
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`with Opposer and Jimi Hendrix.
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`(Dilution by Blurring; 15 US. C. § 1]25(cl)
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`9.
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`Opposer realleges paragraphs 1 through 8, as set forth above.
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`10.
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`Opposer’s Mark “ELECTRIC LADYLAND” is a famous trademark under 15
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`U.S.C. § 1 125(c)(1) as amended by the Trademark Dilution Revision Act of 2006.
`
`11.
`
`Applicant’s use of the Mark began long after Opposer’s “ELECTRIC-
`
`LADYLAN ” Mark had become famous, and it is alleged that Applicant intended to create an
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`association with, and trade upon, the Opposer’s famous mark when it adopted the identical Mark,
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`with Opposer’s distinctive styling and font. Compare Exhibit A (Applicant’s specimen of use)
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`' with Exhibit B (Opposer’s specimen of use since 1968).
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`12.
`
`Applicant’s use of the identical Mark and styling of “ELECTRIC LADYLAND”
`
`in the marketing of its goods and retail services, including without limitation on its website, on
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`its retail store signage, and on tags, advertising, and letterhead, is likely to dilute, by blurring, the
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`value and distinctiveness of Opposer’s Mark.
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`(Dilution by Tarnishment, 15 US. C. § 1125(c2)
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`13.
`
`Opposer realleges paragraphs 1 through 12, as set forth above.
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`14.
`
`Applicant is using the Mark “ELECTRIC LADYLAND” commercially in the
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`marketing of its goods and retail services, including without limitation on its website, on its retail
`
`store signage, and on tags, advertising, and letterhead in a way that is likely to harm the
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`reputation of Opposer’s Mark by tarnishment, in that any defect, objection or fault found with
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`NOTICE OF OPPOSITION - 4
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`

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`
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`Applicant’s products marketed under the Mark would necessarily reflect upon and seriously
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`injure the business and personal reputation of Opposer and tarnish the Mark.
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`WHEREFORE, Opposer prays that the Application Serial No. 78/643,694 be rejected in
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`its entirety, and that registration of the Mark therein sought for the goods specified be denied and
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`M
`refixsed.
`Respectfully submitted, this Z day ofNovember, 2006, by
`
`EXPERIENCE/HENDRIX, L.L.C., Opposer
`
`5/ mg
`
`
`5/
`
`Karen Wetherell Davis, WSBA #21195
`
`William A. Drew, OSB No. 95253
`
`Elliott, Ostrander & Preston, P.C.
`' 707 S.W. Washington Street, #1500
`Portland, OR 97205
`
`(503) 224-7112
`Attorneys for Opposer
`
`NOTICE OF OPPOSITION - 5
`
`

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`EXHIBITA
`
`

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`EXHIBIT B