L
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`'
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`TTAB
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`TNTHE UNTTED STATES PA I EN! ANDTRADEMARKUFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.
`
`) )
`
`) )
`
`) )
`
`)
`:)
`)
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`In Re: Apfilication Serial No. 77-352, I19
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`Mark: “NAZARETH”
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`Filetjgfieccmbcr 14, 2607
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`Published in the Official Gazette: July 15, 2008
`
`f
`
`Mahuel “Manny” Charlton
`
`Oaaposer,
`
`V.
`
`Peter Agnew and Dan McCafferty, )
`
`Applicants.
`
`10/07/2000 SUILSDHI 00000001 77352119
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`01 rc:540a
`
`500.00 up
`
`.-.
`
`A
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`NOTICE OF OPPOSITION
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`Manuel “l‘vfaI1ny”ChaIlmn (“Opposer”)-believesihatrlrewaxrillrbe irreparably damaged by
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`the registration of the mark “NAZARETH”, which is the subject of Application Serial
`
`No. 77—352,1 19, and he1eby_opposes registratienoftlle satnenndexatlaelprovisiens of
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`Section38 of the Trademark Act of Ju1y‘5, 1946, as amended, 15 U.S.C. § 1120.
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`As grounds for opposition, Opposer alleges that:
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`1.
`
`THEPARTIES
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`1. Opposer is an individual, Manuel “Marmy” Charlton, -who is a citizen of the
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`United Kingdom and lists his current address as"2933 Alliance Trail, Haslet, TX“76052.
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`2. On information and belief, Applicants are Peter Agnew and Dan" McCafferty
`
`1
`
`MWWMWWWMWM
`
`10-U6-20118
`
`U
`
`F‘e‘te.nl
`
`2» Ttlflffllli Hail “cpl El
`
`
`
`'
`
`TTAB
`
`TNTHE UNTTED STATES PA I EN! ANDTRADEMARKUFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.
`
`) )
`
`) )
`
`) )
`
`)
`:)
`)
`
`In Re: Apfilication Serial No. 77-352, I19
`
`Mark: “NAZARETH”
`
`Filetjgfieccmbcr 14, 2607
`
`Published in the Official Gazette: July 15, 2008
`
`f
`
`Mahuel “Manny” Charlton
`
`Oaaposer,
`
`V.
`
`Peter Agnew and Dan McCafferty, )
`
`Applicants.
`
`10/07/2000 SUILSDHI 00000001 77352119
`
`01 rc:540a
`
`500.00 up
`
`.-.
`
`A
`
`NOTICE OF OPPOSITION
`
`Manuel “l‘vfaI1ny”ChaIlmn (“Opposer”)-believesihatrlrewaxrillrbe irreparably damaged by
`
`the registration of the mark “NAZARETH”, which is the subject of Application Serial
`
`No. 77—352,1 19, and he1eby_opposes registratienoftlle satnenndexatlaelprovisiens of
`
`Section38 of the Trademark Act of Ju1y‘5, 1946, as amended, 15 U.S.C. § 1120.
`
`As grounds for opposition, Opposer alleges that:
`
`1.
`
`THEPARTIES
`
`1. Opposer is an individual, Manuel “Marmy” Charlton, -who is a citizen of the
`
`United Kingdom and lists his current address as"2933 Alliance Trail, Haslet, TX“76052.
`
`2. On information and belief, Applicants are Peter Agnew and Dan" McCafferty
`
`1
`
`MWWMWWWMWM
`
`10-U6-20118
`
`U
`
`F‘e‘te.nl
`
`2» Ttlflffllli Hail “cpl El
`
`
`
`‘
`
`f‘‘Applieants’’), filing as individuals, and bothofwhom are citizens ofthe United
`
`Kingdom. Agnew lists his address as 5 Maree Place, Crossford, Fife, United Kingdom.
`
`McCafferty lists his ,address as 67 Charles Way, Limekilns, Fife, United Kingdom.
`
`II.
`
`UPPOSER’S UWNERSHIPOF AND RIGHT TO USE THE APPLTCANTS’ MARK
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`3. Opposer and Applicants, along with the late Darrell Sweet, are founding
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`«membersofthemusicai group NAZARETH. Opposer, Applicants andfiweet mutually
`
`selected and built the brand around the famous mark “NAZARETH”, which the
`
`Applicants now seek to register. Opposer is a joint owner of the mark “NAZARETH”,
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`including, but not limitedto, useoffiienrarlmrrd logo asoriginally useddn audioand
`
`video recordings, live performances, and retail merchandising. Opposer is also an equal
`
`manner in Nazareth l11m£ermline,_htd., and as such he-is entitled to continue to receive
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`twenty-five percent (25%) of all revenue generated by NAZAKETH from all live
`
`performances, merchandise, licensing and royalties. Therefore, the
`
`Opposer hasprier sights in theanark
`
`atvleast asearly. as
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`1968 and based on Use in Commerce in the United States at least as early as 1971.
`
`III.
`
`OPPOSER’S MARK
`
`4. Opposer filed atrademark application for “NAZARETH WITHMANNY
`
`CHARLTON” on February 21, 2008, whichis the subject of Application Serial No. 77-
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`403 , 184. The first Use date and thellse jnflommeree date arexlaimed to be Dr:tolaer.20,
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`2007. The application is for “[e]ntertainment services, namely, providing live
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`performances of a musical group;providirrg a web site featuring musical performances,
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`niusicalwideesfi-elated film clips, photographs andether multimedia materials; song
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`writing services; audio usage.” Opposer acknowledges, as stated in the “Additional
`
`
`
`Statements~Seetion” ofitsapplication, that Agnew ‘andlVlcCa£fert=y aieeoneufiemnsers
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`of the mark “NAZARETH,”
`
`IV-
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`APPLICANTS’ MARK
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`5. Agnew andlVIcCaffertyT“Applicants"’) filed a trademark application for the
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`mark “NAZARETH” on December 14, 2007. The application is for use of the mark on
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`‘% recordings, nameiy, cdis, anddvdlsg clownloadable -musical sound
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`recordings,” with a first Use date of November 30, 1971 and a first Use in Commerce
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`date of January 31, 1972. Additionally, the application is for use of the mark in
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`conjunction with “entertainment services, nainelyjiveperfonnances-by a musiealband.”
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`The first Use date is listed as December 31, 1969, and the first Use in Commerce date is
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`February 29, 1972. The Applicants’ application does not list Opposer as a.concurrentuser
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`or owner of the “NAZARETH” mark.
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`6. The Applicants’ application was published for opposition on July 15, 2008.
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`"V.
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`FALSE AND ‘FRAUDULENT FROCUREMENT OF APPLICANTS’ -MARK
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`7. Under 15 U.S.C. § 1120, “[a]ny person who shall procure registration in the
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`Patent and Trademark Office of a mark by a false or fraudulent declaration or
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`representation, oral or inwriting, orby anyfalse mearIs7shall‘be'lia1)'1e in a c"rvi1~action« by
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`any person injured thereby for any damages sustained in consequence thereof.”
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`8. An application for trademark .registrata'on.r:equires a .vex=ified -statementin -whjeh
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`the verifier must allege that “to the best of the verifier’s knowledge and belief, no other
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`person has the right to use such mark in commerce either in the identical form thereof or
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`insuchnear resemblance thereto aste be likely, whenused-otter ineonnectionwith the
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`goods of such other person, to cause confiasion, or to cause mistake, or to deceive.” 15
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`U.S.C. §1501 (a)(3)(A); 37 CFR. § 2.33(b)(I)). False statements
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`representationsasxo
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`3
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`
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`the Applicants’ ownership or entitlement tense Ufthe mark-in the
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`statementmay
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`constitute fraudulent registration under the Act. If the verifier knows or believes that
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`ainethenparty has the right to use or ownership ofthe applied for inark but fails to state
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`exceptions to the claim of exclusive use or specify concurrent use of the markby another
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`as required under 15 U.S.C. § 1501 (a)(3)(7), the verifier has committed fraud in
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`connection withthe filingeftheApp1lica:ats’ ‘application andthe execution oftheverified
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`statement contained therein.
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`9. At the time that Applicants’ application Applicants knew that the Opposer
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`possessed clearly1estab1is'hed—rightsto_nseand ownership of-the_“‘NAZAT{E'l‘H°’ mark as
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`a founding member of the group, as outlined above,
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`10. Aspart ofthat application, Applicants executed a verified statement declaring
`that“to the best of [their] knowledge and belief, no other person has the right to use such
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`mark in commerce...” Id. Applicants also failed to state exceptions to the claim of
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`exclesiveaseertespecify Opposersconcurrent usevof-‘chi: mark. 15 USC. § 1501
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`.(a)(3>)(D)(i)(.ii).
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`11. Applicants’ execution of the verified statement and failure to inform the
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`Trademark Office of the conflicting rights of Qpposer, which rights were clearly
`established in the mark “NAZARETH”, in comiectienwvith thessameservices, andknown
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`by the Applicants at the time they executed the verified statement constitutes fraud.
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`For the reasons set forth above, Qpposer believes that it will
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`damaged by the
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`registration of the Applicant’s “NAZARETH”- mark. Tlrusfthe Trademark'Tf1al and
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`Appeal Board must reject the Applicants’ application and refuse to register the mark, and
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`to Application Serial Ne 77-352,1-.19 should be sustained.
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`
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`Respecffullysubmitted,
`
`Date:
`
`By:
`
`on...
`
`‘Manny Charlton
`
`
`
`‘CERTIFICATE OF ‘SERVICE
`
`‘It is 'hereby~certified‘that-zrtrue and-correct copy of the
`
`NOTICE*OF‘0PPOS1TION
`
`was served upon:
`
`Trafiilfin, Esq.
`
`Attorney for Applicant
`
`Ira Silfin, Esq
`Amster‘Rot1astein‘&‘Ebenstein 11:13
`
`90 Park Avenue
`New York, NY 10016
`212 336 8000
`
`‘by first class mail postageprepaid this gday Qf OCTOQ 2008.
`
`‘Manny Charlton
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