Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA634519
`ESTTA Tracking number:
`10/22/2014
`
`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
`Granted to Date
`of previous ex-
`tension
`Address
`
`Legend Pictures LLC
`10/22/2014
`
`2900 W. Alameda Avenue Suite 1500
`Burbank, CA 91505
`UNITED STATES
`
`Correspondence
`information
`
`Carla C. Calcagno
`Calcagno Law PLLC
`1250 24th Street NW Suite 300
`Washington, DC 20037
`UNITED STATES
`carla.calcagno@calcagnolaw.com,trademarks@canopyparalegal.com,ricciutij@
`comcast.net Phone:2024660544
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`86175256
`10/22/2014
`
`Publication date
`Opposition Peri-
`od Ends
`
`06/24/2014
`10/22/2014
`
`Quincy, Adam
`12163 Open Meadow Ln.
`Bristow, VA 20136
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 041. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Entertainment services, namely, an ongo-
`ing series featuring scientific investigations into urban legends and folklore provided through online
`webcasts
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`3412677
`
`04/15/2008
`
`Word Mark
`
`LEGENDARY PICTURES
`
`Application Date
`
`09/16/2004
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2005/06/01 First Use In Commerce: 2005/06/01
`Motion picture films, prerecorded videocassettes, digital versatile disks (DVDs),
`compact discs, and other recordable media, namely computer disks, CD-ROMs,
`audio discs, and audio tapes, featuring live action, computer generated, and an-
`imated motion pictures or combinations thereof; pre-recorded audio tapes, audio
`compact discs, and video tapes featuring musical entertainment
`Class 041. First use: First Use: 2005/06/01 First Use In Commerce: 2005/06/01
`Entertainment services, namely, production, development and distribution of mo-
`tion picture films, television programs, television program specials, music video-
`programs, documentary television programs and motion pictures, animated tele-
`vision programs and motion pictures
`
`U.S. Registration
`No.
`Registration Date
`
`3656926
`
`07/21/2009
`
`Word Mark
`Design Mark
`
`LEGENDARY
`
`Application Date
`
`08/14/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of the words "LEGENDARY" and a design.
`
`Class 009. First use: First Use: 2005/06/01 First Use In Commerce: 2005/06/01
`Motion picture films featuring comedy, adventures, sports, romance and drama;
`digital media, namely, prerecorded videocassettes, DVDs, and compact discs all
`featuring comedy, adventures, sports, romance and drama; digital media,
`namely, prerecorded computer disks, CD-ROMs, audiodiscs and audio tapes all
`featuring comedy, adventures, sports, romance and drama; prerecorded audio
`tapes, audio compact discs and video tapes all featuring musical entertainment
`Class 041. First use: First Use: 2005/06/01 First Use In Commerce: 2005/06/01
`Entertainment services, namely, production and distribution of motion picture
`films, television programs and televisionprogram specials; entertainment ser-
`vices, namely, production and distribution of music video programs, document-
`ary television programs and documentary motion picture films; entertainment
`services, namely, production and distribution of animated television programs
`and animated motion picture films
`
`U.S. Registration
`No.
`Registration Date
`
`3621043
`
`05/12/2009
`
`Application Date
`
`05/18/2006
`
`Foreign Priority
`
`NONE
`
`

`
`Word Mark
`Design Mark
`
`LEGENDARY
`
`Date
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2005/06/01 First Use In Commerce: 2005/06/01
`Entertainment services, namely, production and distribution of motion picture
`films, television programs, television program specials, music video programs,
`documentary television programs and motionpictures, animated television pro-
`grams and motion pictures
`
`U.S. Application
`No.
`Registration Date
`
`85331782
`
`NONE
`
`Word Mark
`Design Mark
`
`LEGENDARY
`
`Application Date
`
`05/26/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of the word "LEGENDARY" and a knot design on top.
`
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`Pre-recorded audio cassettes, audio books and compact discs featuring music
`andstories in the fields of fantasy, fiction, science fiction, horror, humor, adven-
`ture, and nonfiction in the fields of historical drama, biography, memoir, autobio-
`graphy, and travelogue; Pre-recorded digital video discs, video cassettes anddi-
`gital versatile discs featuring TV shows and motion pictures in the fields of-
`fantasy, fiction, science fiction, horror, humor, adventure, and nonfiction in the
`fields of historical drama, biography, memoir, autobiography, and travelogue
`
`U.S. Application
`No.
`Registration Date
`
`85331756
`
`NONE
`
`Application Date
`
`05/26/2011
`
`Foreign Priority
`
`NONE
`
`

`
`Word Mark
`Design Mark
`
`LEGENDARY
`
`Date
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of the word "LEGENDARY" and a knot design.
`
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`Pre-recorded audio cassettes, audio books and compact discs featuring music
`andstories in the fields of fantasy, fiction, science fiction, horror, humor, adven-
`ture, and nonfiction in the fields of historical drama, biography, memoir, autobio-
`graphy, and travelogue; Pre-recorded digital video discs, video cassettes anddi-
`gital versatile discs featuring TV shows and motion pictures in the fields of-
`fantasy, fiction, science fiction, horror, humor, adventure, and nonfiction in the
`fields of historical drama, biography, memoir, autobiography, and travelogue
`Class 041. First use: First Use: 0 First Use In Commerce: 0
`Entertainment services, namely, development of concepts for and production
`and distribution of motion pictures, television programs, Internet programs,
`videogames, multimedia entertainment content and live stage productions; pub-
`lication ofbooks, magazines and other printed matter
`
`U.S. Application
`No.
`Registration Date
`
`85337431
`
`NONE
`
`Word Mark
`Design Mark
`
`LEGENDARY
`
`Application Date
`
`06/03/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of the word ''LEGENDARY'' and a knot design.
`
`Class 016. First use: First Use: 0 First Use In Commerce: 0
`Publications, namely, comic books and graphic novels
`
`U.S. Application
`No.
`Registration Date
`
`85337912
`
`NONE
`
`Word Mark
`
`LEGENDARY
`
`Application Date
`
`06/03/2011
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`U.S. Application
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`The mark consists of the word ''LEGENDARY'' with a knot design on top.
`
`Class 016. First use: First Use: 0 First Use In Commerce: 0
`Publications, namely, comic books and graphic novels
`
`85374921
`
`Application Date
`
`07/19/2011
`
`NONE
`
`Foreign Priority
`Date
`LEGENDARY ENTERTAINMENT
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`Pre-recorded audio cassettes and compact discs featuring music and stories in
`the fields of fantasy, fiction, science fiction, horror, humor, adventure, and non-
`fiction in the fields of historical drama, biography, memoir, autobiography, and
`travelogue; audio books in the fields of fantasy, fiction, science fiction, horror,
`humor, adventure, and nonfiction in the fields of historical drama, biography,
`memoir, autobiography, and travelogue; Pre-recorded digital video discs, video
`cassettes and digital versatile discs featuring TV shows and motion picturesin
`the fields of fantasy, fiction, science fiction, horror, humor, adventure, and non-
`fiction in the fields of historical drama, biography, memoir, autobiography, and
`travelogue; Prerecorded CD-ROMs featuring computer game programs and
`computer software to support video games in the fields of fantasy, fiction, sci-
`ence fiction, horror, humor, adventure, and nonfiction in the fields of historical
`drama, biography, memoir, autobiography, and travelogue
`Class 016. First use: First Use: 0 First Use In Commerce: 0
`Publications, namely, comic books and graphic novels
`Class 028. First use: First Use: 0 First Use In Commerce: 0
`Toy action figures and accessories thereof; Toy animal figures and accessories
`
`

`
`thereof; Dolls and doll accessories thereof; Stuffed and plush toys
`Class 041. First use: First Use: 0 First Use In Commerce: 0
`Entertainment services, namely, development of concepts for and production
`and distribution of motion pictures, and television programs; Entertainment ser-
`vices, namely, production of videogames; multimedia entertainment services in
`the nature of recording, production and post-production services in the fields of
`music, video, and films; Entertainment, namely, production of continuing com-
`edy, drama, action, and animated programs delivered by Internet; Entertainment
`in the nature of live stage productions; Publication of books, magazines and oth-
`er printedmatter in the nature of fantasy, fiction, nonfiction, science fiction, hor-
`ror, humor, romance and adventure
`
`U.S. Application
`No.
`Registration Date
`
`85479402
`
`NONE
`
`Word Mark
`Design Mark
`
`LEGENDARY EAST
`
`Application Date
`
`11/22/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`Pre-recorded audio cassettes, audio books and compact discs featuring music,
`stories and published books in the nature of the novels, fiction, non-fiction on av-
`ariety of topics, fantasy, young adult, comedy, action, adventure, science fiction,
`biographies and children's stories; Pre-recorded digital video discs, video cas-
`settes and digital versatile discs featuring TV shows and motion pictures; Pre-
`recorded CD-ROM discs featuring computer game programs
`Class 016. First use: First Use: 0 First Use In Commerce: 0
`Publications, namely, comic books and graphic novels
`Class 028. First use: First Use: 0 First Use In Commerce: 0
`Toy action figures and accessories thereof; Toy animal figures and accessories
`thereof; Dolls and doll accessories thereof; Stuffed and plush toys
`Class 041. First use: First Use: 0 First Use In Commerce: 0
`Entertainment services, namely, development and production of motion pictures,
`television programs, made-for-internet entertainment programs, multimedia con-
`tent and live stage productions; distribution of motion pictures, television pro-
`grams, made-for-internet entertainment programs; entertainment services,
`namely, providing on-line computer games; publication of books, magazines and
`other printed matter
`
`U.S. Application
`No.
`Registration Date
`
`85509430
`
`NONE
`
`Application Date
`
`01/05/2012
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Word Mark
`Design Mark
`
`LEGENDARY EAST
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of a knot design, Chinese characters, a horizontal line and
`the wording "LEGENDARY EAST".
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`Pre-recorded audio cassettes, audio books and compact discs featuring music,
`stories and published books in the nature of the novels, fiction, non-fiction on av-
`ariety of topics, fantasy, young adult, comedy, action, adventure, science fiction,
`biographies and children's stories; Pre-recorded digital video discs, video cas-
`settes and digital versatile discs featuring TV shows and motion pictures; Pre-
`recorded CD-ROM discs featuring computer game programs
`Class 016. First use: First Use: 0 First Use In Commerce: 0
`Publications, namely, comic books and graphic novels
`Class 028. First use: First Use: 0 First Use In Commerce: 0
`Toy action figures and accessories thereof; Toy animal figures and accessories
`thereof; Dolls and doll accessories thereof; Stuffed and plush toys
`Class 041. First use: First Use: 0 First Use In Commerce: 0
`Entertainment services, namely, development and production of motion pictures,
`television programs, made-for-internet entertainment programs, multimedia con-
`tent and live stage productions; distribution of motion pictures, television pro-
`grams, made-for-internet entertainment programs; entertainment services,
`namely, providing on-line computer games; publication of books, magazines and
`other printed matter
`
`Attachments
`
`78484868#TMSN.png( bytes )
`77547603#TMSN.png( bytes )
`78886660#TMSN.png( bytes )
`85331782#TMSN.png( bytes )
`85331756#TMSN.png( bytes )
`85337431#TMSN.png( bytes )
`85337912#TMSN.png( bytes )
`85374921#TMSN.png( bytes )
`85479402#TMSN.png( bytes )
`85509430#TMSN.png( bytes )
`LEGENDARY EARTH Notice of Opposition10.pdf(146129 bytes )
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Signature
`Name
`Date
`
`/Carla C. Calcagno/
`Carla C. Calcagno
`10/22/2014
`
`

`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`LEGEND PICTURES, LLC,
`
`
`
`
`
`Opposer
`
`
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`Opposition No.:______
`
`Trademark: LEGENDARY EARTH
`and Design
`
`Serial Number 86/175256
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`
`
`
`)
`
`
`
`Adam Quincy,
`)
`
`
`
`
`
`
`)
`
`
`Applicant
`____________________________________)
`
`NOTICE OF OPPOSITION
`
`Legend Pictures, LLC (Opposer or Legend) is a Delaware limited liability
`
`
`
`
`
`company having a place of business of 2900 W. Alameda Avenue, Suite 1500, Burbank,
`
`CA 91505.
`
`Adam Quincy (Applicant or Defendant) is an individual having a mailing address
`
`of 12163 Open Meadow Ln., Bristow, Virginia 20136.
`
`Adam Quincy is the alleged owner of record of Application Serial Number
`
`86/175256 (“the opposed application”) filed January 25, 2014 for the mark
`
`LEGENDARY EARTH & Design in International Class 41 for “entertainment services,
`
`namely, an ongoing series featuring scientific investigations into urban legends and
`
`folklore provided through online webcasts.”
`
`Legend believes it will be damaged by the aforementioned mark and therefore
`
`hereby opposes the same under the provisions of 15 U.S.C. 1053.
`
`
`
`1
`
`

`
`
`
`The grounds for opposition are as follows:
`
`Ground 1: Likelihood of Confusion Under 15 U.S.C. § 1052(d)
`
`1.
`
`Opposer is the owner of U.S. Registration No. 3,412,677 for the standard
`
`character mark LEGENDARY PICTURES.
`
`2.
`
`U.S. Registration No. 3,412,677 was issued on April 15, 2008, and has a
`
`first use in commerce date of June 1, 2005 and is now over five years old. The
`
`registration covers the following goods and services1:
`
`Motion picture films, prerecorded videocassettes, digital versatile disks
`(DVDs), compact discs, and other recordable media, namely computer disks,
`CD-ROMs, audio discs, and audio tapes, featuring live action, computer
`generated, and animated motion pictures or combinations thereof; pre-
`recorded audio tapes, audio compact discs, and video tapes featuring musical
`entertainment. (International Class 9)
`
`Entertainment services, namely, production, development and distribution of
`motion picture films, television programs, television program specials, music
`video programs, documentary television programs and motion pictures,
`animated television programs and motion pictures. (International Class 41)
`
`
`
`3.
`
`stylized mark:
`
`Opposer is also the owner of U.S. Registration No. 3,656,926 for the
`
`4.
`
`U.S. Registration No. 3,656,926 was issued on July 21, 2009, and has a
`
`
`
`first use in commerce date of June 1, 2005 and is now over five years old. The
`
`registration covers the following goods and services:
`
`Motion picture films featuring comedy, adventures, sports, romance and
`drama; digital media, namely, prerecorded videocassettes, DVDs, and
`
`
`1 On October 22, 2014, prior to the filing of this opposition, Opposer filed a Section 7 request for U.S.
`Registration No. 3,412,677 and Section 8 and 15 Declarations for U.S. Registration Nos. 3,656,926
`and 3,621,043, which are currently pending.
`
`
`
`2
`
`

`
`compact discs all featuring comedy, adventures, sports, romance and drama;
`digital media, namely, prerecorded computer disks, CD-ROMs, audio discs all
`featuring comedy, adventures, sports, romance and drama; pre-recorded
`audio compact discs and video tapes all featuring musical entertainment.
`(International Class 9)
`
`Entertainment services, namely, production and distribution of motion
`picture films; entertainment services, namely, production and distribution of
`music video programs and documentary motion picture films; entertainment
`services, namely, production and distribution of animated motion picture
`films. (International Class 41)
`
`
`
`5.
`
`stylized mark:
`
`Opposer is also the owner of U.S. Registration No. 3,621,043 for the
`
`6.
`
`U.S. Registration No. 3,621,043 was issued on May 12, 2009, and has a
`
`
`
`first use in commerce date of June 1, 2005 and is now over five years old. The
`
`registration covers the following services in International Class 41:
`
`Entertainment services, namely, production and distribution of motion picture films,
`music video programs and motion pictures.
`
`7.
`
`Opposer is also the owner of the following U.S. applications:
`
`
`
`Mark
`
`
`
`
`
`Serial
`
`Filing
`
`Goods and Services
`
`Number
`
`Date
`
`85331782
`
` 5-26-
`
`Int. Cl. 9 pre-recorded audio cassettes, audio books
`
`
`
`
`
`2011
`
`and compact discs featuring music and stories in the
`
`fields of fantasy, fiction, science fiction, horror,
`
`humor, adventure, and nonfiction in the fields of
`
`historical drama, biography, memoir, autobiography,
`
`3
`
`

`
`and travelogue; pre-recorded digital video discs,
`
`video cassettes and digital versatile discs featuring tv
`
`shows and motion pictures in the fields of fantasy,
`
`fiction, science fiction, horror, humor, adventure, and
`
`nonfiction in the fields of historical drama,
`
`biography, memoir, autobiography, and travelogue
`
`
`
`
`
`Int. Cl. 9 pre-recorded audio cassettes, audio books
`
`85331756
`
`5-26-2011
`
`and compact discs featuring music and stories in the
`
`
`
`
`
`fields of fantasy, fiction, science fiction, horror,
`
`humor, adventure, and nonfiction in the fields of
`
`historical drama, biography, memoir, autobiography,
`
`and travelogue; pre-recorded digital video discs,
`
`video cassettes and digital versatile discs featuring tv
`
`shows and motion pictures in the fields of fantasy,
`
`fiction, science fiction, horror, humor, adventure, and
`
`nonfiction in the fields of historical drama,
`
`biography, memoir, autobiography, and travelogue
`
`Int. Cl. 41 entertainment services, namely,
`
`development of concepts for and production and
`
`distribution of motion pictures, television programs,
`
`internet programs, videogames, multimedia
`
`entertainment content and live stage productions;
`
`publication of books, magazines and other printed
`
`matter
`
`85337431
`
`6-3-2011 Int. Cl. 16 publications, namely, comic books and
`
`
`
`graphic novels
`
`85337912
`
`6-3-2011 Int. Cl. 16 publications, namely, comic books and
`
`
`
`graphic novels
`
`
`
`
`
`
`
`
`
`
`
`
`
`LEGENDARY
`
`85374921
`
`7-19-2011 Int. Cl. 9 pre-recorded audio cassettes and compact
`
`ENTERTAINMENT
`
`
`
`
`
`
`discs featuring music and stories in the fields of
`
`fantasy, fiction, science fiction, horror, humor,
`
`adventure, and nonfiction in the fields of historical
`
`drama, biography, memoir, autobiography, and
`
`travelogue; audio books in the fields of fantasy,
`
`4
`
`

`
`fiction, science fiction, horror, humor, adventure, and
`
`nonfiction in the fields of historical drama,
`
`biography, memoir, autobiography, and travelogue;
`
`pre-recorded digital video discs, video cassettes and
`
`digital versatile discs featuring tv shows and motion
`
`pictures in the fields of fantasy, fiction, science
`
`fiction, horror, humor, adventure, and nonfiction in
`
`the fields of historical drama, biography, memoir,
`
`autobiography, and travelogue; prerecorded cd-roms
`
`featuring computer game programs and computer
`
`software to support video games in the fields of
`
`fantasy, fiction, science fiction, horror, humor,
`
`adventure, and nonfiction in the fields of historical
`
`drama, biography, memoir, autobiography, and
`
`travelogue
`
`Int. Cl. 16 publications, namely, comic books and
`
`graphic novels
`
`Int. Cl. 28 toy action figures and accessories thereof;
`
`toy animal figures and accessories thereof; dolls and
`
`doll accessories thereof; stuffed and plush toys
`
`Int. Cl. 41 entertainment services, namely,
`
`development of concepts for and production and
`
`distribution of motion pictures, and television
`
`programs; entertainment services, namely,
`
`production of videogames; multimedia entertainment
`
`services in the nature of recording, production and
`
`post-production services in the fields of music, video,
`
`and films; entertainment, namely, production of
`
`continuing comedy, drama, action, and animated
`
`programs delivered by internet; entertainment in the
`
`nature of live stage productions; publication of
`
`books, magazines and other printed matter in the
`
`nature of fantasy, fiction, nonfiction, science fiction,
`
`horror, humor, romance and adventure
`
`LEGENDARY
`
`85479402
`
`11-22-
`
`Int. Cl. 9 pre-recorded audio cassettes, audio books
`
`EAST
`
`
`
`2011
`
`and compact discs featuring music, stories and
`
`
`
`
`
`published books in the nature of the novels, fiction,
`
`non-fiction on a variety of topics, fantasy, young
`
`5
`
`

`
`adult, comedy, action, adventure, science fiction,
`
`biographies and children's stories; pre-recorded
`
`digital video discs, video cassettes and digital
`
`versatile discs featuring tv shows and motion
`
`pictures; pre-recorded cd-rom discs featuring
`
`computer game programs
`
`Int. Cl. 16 publications, namely, comic books and
`
`graphic novels
`
`Int. Cl. 28 toy action figures and accessories thereof;
`
`toy animal figures and accessories thereof; dolls and
`
`doll accessories thereof; stuffed and plush toys
`
`Int. Cl. 41 entertainment services, namely,
`
`development and production of motion pictures,
`
`television programs, made-for-internet entertainment
`
`programs, multimedia content and live stage
`
`productions; distribution of motion pictures,
`
`television programs, made-for-internet entertainment
`
`programs; entertainment services, namely, providing
`
`on-line computer games; publication of books,
`
`magazines and other printed matter
`
`85509430
`
`1-5-2012 Int. Cl. 9 pre-recorded audio cassettes, audio books
`
`
`
`
`
`
`
`
`
`and compact discs featuring music, stories and
`
`published books in the nature of the novels, fiction,
`
`non-fiction on a variety of topics, fantasy, young
`
`adult, comedy, action, adventure, science fiction,
`
`biographies and children's stories; pre-recorded
`
`digital video discs, video cassettes and digital
`
`versatile discs featuring tv shows and motion
`
`pictures; pre-recorded cd-rom discs featuring
`
`computer game programs
`
`Int. Cl. 16 publications, namely, comic books and
`
`graphic novels
`
`Int. Cl. 28 toy action figures and accessories thereof;
`
`toy animal figures and accessories thereof; dolls and
`
`doll accessories thereof; stuffed and plush toys
`
`Int. Cl. 41 entertainment services, namely,
`
`development and production of motion pictures,
`
`television programs, made-for-internet entertainment
`
`6
`
`

`
`programs, multimedia content and live stage
`
`productions; distribution of motion pictures,
`
`television programs, made-for-internet entertainment
`
`programs; entertainment services, namely, providing
`
`on-line computer games; publication of books,
`
`magazines and other printed matter
`
`
`
`8.
`
`Each of the above registrations and applications is valid and subsisting and
`
`Registration Nos. 3,412,677; 3,656,926 and 3,621,043 are incontestable.
`
`9.
`
`Opposer also uses and has used the terms LEGENDARY, LEGENDARY
`
`PICTURES, and LEGENDARY ENTERTAINMENT as or as part of its marks and trade
`
`names since prior to any date upon which Applicant may rely in connection with the
`
`production and distribution of a wide variety of entertainment services and properties,
`
`including but not limited to, web entertainment and videos, motion picture films, Internet
`
`programs, and printed and electronic publications (hereafter together with the above
`
`registrations and applications collectively referred to as the “LEGENDARY Marks”).
`
`10.
`
`Opposer has invested significant effort and substantial sums in promoting
`
`and developing the above-mentioned LEGENDARY Marks. As a result, Opposer’s
`
`Marks have gained nationwide recognition, popularity, and fame.
`
`11.
`
`Upon information and belief, Applicant’s Application was filed on
`
`January 25, 2014.
`
`12.
`
`Upon information and belief, January 25, 2014 is the earliest date
`
`Applicant may legally rely upon for priority in this proceeding.
`
`13.
`
`The filing date of each of Opposer’s U.S. registrations and applications for
`
`the LEGENDARY Marks are prior in time to the application filing date of Applicant’s
`
`Application Serial No. 86/175256.
`
`
`
`7
`
`

`
`14.
`
`Upon information and belief, Applicant had actual knowledge of
`
`Opposer’s use of the LEGENDARY Marks prior to Applicant’s adoption, first use and
`
`filing date of the mark opposed herein.
`
`15.
`
`Applicant had constructive knowledge of Opposer’s filing of the
`
`LEGENDARY Marks prior to Applicant’s adoption, first use and filing date of the mark
`
`opposed herein and therefore cannot claim good faith.
`
`16.
`
`Upon information and belief, Opposer enjoys a priority date that is prior
`
`and superior to any valid and continuing priority date that Applicant is entitled to claim in
`
`this case.
`
`17.
`
`The entirety of Opposer’s LEGENDARY mark is incorporated within
`
`Applicant’s LEGENDARY EARTH & Design mark. Consequently, Applicant’s mark
`
`LEGENDARY would appear to consumers to be an extension of Opposer’s
`
`LEGENDARY Marks. Consumers are therefore likely to mistakenly believe that
`
`Applicant is associated or affiliated with Opposer.
`
`18.
`
`Several of the Applicant’s identified goods and services are identical to,
`
`and/or closely related to the goods and services identified in Opposer’s registrations and
`
`applications or otherwise pleaded herein.
`
`19.
`
`The registration of Applicant’s mark is likely to cause confusion, mistake
`
`or deception and is also likely to create the erroneous impression that Opposer and
`
`Applicant are somehow related or associated, or that Opposer sponsors or approves
`
`Applicant’s goods and services.
`
`20. When used in connection with the goods and services identified in the
`
`Application, Applicant’s mark LEGENDARY EARTH and Design so closely resembles
`
`
`
`8
`
`

`
`Opposer’s LEGENDARY Marks as to be likely to cause confusion, deception or mistake,
`
`in violation of § 2(d) of the Lanham Act, 15 U.S.C. § 1052(d).
`
`21. Wherefore, Opposer requests that judgment be entered against Applicant,
`
`that the Notice of Opposition be sustained, and that registration to Applicant be refused.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`LEGEND PICTURES LLC
`
`By /Carla C. Calcagno/
`
`Carla C Calcagno, Esq.
`
`Janet G Ricciuti, Esq.
`
`Attorneys for Opposer
`
`CALCAGNO LAW, PLLC
`1250 24th Street, NW
`
`
`Suite 300
`
`Washington DC 20037
`
`Tele: 202-466-0544
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`9
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Date: October 22, 2014
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned hereby certifies that on October 22, 2014, a true and accurate
`copy of the foregoing NOTICE OF OPPOSITION was served on Applicant by mailing a
`copy thereof through the United States Postal Service, first class mail, with sufficient
`postage, to the Applicant at the following address:
`
`
`Adam Quincy
`12163 Open Meadow Ln.
`Bristow, Virginia 20136
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Carla C. Calcagno/
`
`10