Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA900858
`06/04/2018
`
`ESTTA Tracking number:
`
`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
`
`Home Box Office, Inc.
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`06/03/2018
`
`1100 Avenue Of The Americas
`New York, NY 10036
`UNITED STATES
`
`Tamara Carmichael
`OLSHAN FROME WOLOSKY LLP
`1325 Avenue of the Americas
`New York, NY 10019
`UNITED STATES
`Email: tcarmichael@olshanlaw.com, aprovencio@olshanlaw.com
`Phone: 212-451-2300
`
`Applicant Information
`
`Application No
`
`87352855
`
`Publication date
`
`12/05/2017
`
`Opposition Filing
`Date
`
`Applicant
`
`06/04/2018
`
`Richardson, Kelli
`1702 Fairlead Avenue
`Carlsbad, CA 92011
`UNITED STATES
`
`Opposition Peri-
`od Ends
`
`06/03/2018
`
`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, the provi-
`sion of continuing programs, segments,movies, and shows featuring family life, children, and parent-
`ing content delivered by television, theatrical or featurefilm, the internet and other digital orsocial plat-
`forms as well as radio and satellite
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`Trademark Act Sections 2 and 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`3318130
`
`Application Date
`
`07/24/2006
`
`Registration Date
`
`10/23/2007
`
`Foreign Priority
`
`NONE
`
`

`

`Word Mark
`
`Design Mark
`
`ENTOURAGE
`
`Date
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2005/05/10 First Use In Commerce: 2005/05/10
`Pre-recorded [ audiotapes, videotapes, ] compact discs and DVDs, all featuring
`an ongoing comedic television series; images held in electronic format, namely,
`images related to a comedic television series in the nature of downloadable
`electronic photographs, and electronic photographs and graphics stored or re-
`corded on electronic or computer media; [ electronic game programs; download-
`able ring tones and downloadable ring back tones, pre-recorded video clips, pre-
`recorded audio clips, animated ringers, video ringers, audio shorts, video shorts
`and ] animated screensavers, all downloadable via a global computer network
`and featuring content from or relating to an ongoing comedic television series; [
`downloadablepre-recorded audio, video, text and graphics held in electronic per-
`sonal computers and handheld wireless devices featuring content from or relat-
`ing to a comedic ongoing television series ]
`
`U.S. Registration
`No.
`
`3490593
`
`Registration Date
`
`08/19/2008
`
`Word Mark
`
`Design Mark
`
`ENTOURAGE
`
`Application Date
`
`07/24/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 016. First use: First Use: 2005/07/31 First Use In Commerce: 2005/07/31
`Printed matter, namely, books, [ calendars ] and posters, all featuring a comedic
`ongoing television series
`
`U.S. Registration
`No.
`
`3215903
`
`Application Date
`
`07/24/2006
`
`Registration Date
`
`03/06/2007
`
`Foreign Priority
`
`NONE
`
`

`

`Word Mark
`
`Design Mark
`
`ENTOURAGE
`
`Date
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 021. First use: First Use: 2004/11/00 First Use In Commerce: 2004/11/00
`mugs, drinking glasses [ and shot glasses ]
`
`U.S. Registration
`No.
`
`3215904
`
`Registration Date
`
`03/06/2007
`
`Word Mark
`
`Design Mark
`
`ENTOURAGE
`
`Application Date
`
`07/24/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 2005/06/05 First Use In Commerce: 2005/06/05
`clothing, namely, t-shirts [, sweatshirts, jackets, ] [ hats, visors ]
`
`U.S. Registration
`No.
`
`4836026
`
`Registration Date
`
`10/20/2015
`
`Word Mark
`
`ENTOURAGE
`
`Application Date
`
`03/11/2015
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 028. First use: First Use: 2012/01/31 First Use In Commerce: 2012/01/31
`darts, dart boards
`
`U.S. Registration
`No.
`
`3235828
`
`Registration Date
`
`05/01/2007
`
`Word Mark
`
`Design Mark
`
`ENTOURAGE
`
`Application Date
`
`09/27/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2004/07/18 First Use In Commerce: 2004/07/18
`entertainment services in the nature ofan ongoing television program featuring-
`comedy
`
`U.S. Registration
`No.
`
`3293874
`
`Registration Date
`
`09/18/2007
`
`Word Mark
`
`ENTOURAGE
`
`Application Date
`
`04/24/2006
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2005/05/10 First Use In Commerce: 2005/05/10
`Pre-recorded [ audiotapes, videotapes, ] compact discs and DVDs, all featuring
`an ongoing comedic television series [ ;images held in electronic format, namely,
`images related to a comedic television series in the nature of downloadable
`electronic photographs, and electronic photographs and graphics stored or re-
`corded on electronic or computer media; electronic game programs; download-
`able ring tones and downloadable ring back tones; pre-recorded video clips, pre-
`recorded audio clips, animated ringers, video ringers, audio shorts, video shorts
`and animated screensavers, all downloadable via aglobal computer network and
`featuring content from or relating to an ongoing comedic television series; down-
`loadable pre-recorded audio, text and graphics heldin electronic personal com-
`puters and handheld wireless devices featuring content from or relating to a
`comedic ongoing television series ]
`Class 021. First use: First Use: 2004/11/00 First Use In Commerce: 2004/11/00
`mugs, drinking glasses [ and shot glasses ]
`Class 025. First use: First Use: 2005/06/05 First Use In Commerce: 2005/06/05
`clothing, namely, t-shirts [, sweatshirts, jackets, ] [ hats ] [, visors ]
`Class 041. First use: First Use: 2004/07/18 First Use In Commerce: 2004/07/18
`[ entertainment services in the nature of an ongoing television program featuring
`comedy ]
`
`U.S. Registration
`No.
`
`3645096
`
`Registration Date
`
`06/23/2009
`
`Word Mark
`
`ENTOURAGE
`
`Application Date
`
`04/24/2006
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`Attachments
`
`NONE
`
`Class 016. First use: First Use: 2005/07/31 First Use In Commerce: 2005/07/31
`Printed matter, namely, books, [ calendars ] and posters, all featuring a comedic
`ongoing television series
`
`78935946#TMSN.png( bytes )
`78936113#TMSN.png( bytes )
`78935953#TMSN.png( bytes )
`78935957#TMSN.png( bytes )
`86560601#TMSN.png( bytes )
`78489879#TMSN.png( bytes )
`78867772#TMSN.png( bytes )
`78980353#TMSN.png( bytes )
`Notice of Opposition FAMILY ENTOURAGE 87352855.pdf(118359 bytes )
`
`Signature
`
`/Tamara Carmichael/
`
`Name
`
`Date
`
`Tamara Carmichael
`
`06/04/2018
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 87352855: FAMILY ENTOURAGE
`Published in the Official Gazette of December 5, 2017
`
`Opposition No. ________
`
`)
`
`))
`
`))
`
`)
`)
`
`Home Box Office, Inc,
`
`Opposer,
`
`v.
`
`Richardson, Kelli,
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`Home Box Office, Inc. (“Opposer”), a Delaware corporation, located and doing business
`
`at 1100 Avenue of the Americas, New York, New York 10036, believes it will be damaged by
`
`the registration of the trademark FAMILY ENTOURAGE in International Class 041 for
`
`“entertainment services, namely, the provision of continuing programs, segments, movies, and
`
`shows featuring family life, children, and parenting content delivered by television, theatrical or
`
`feature film, the internet and other digital or social platforms as well as radio and satellite” in
`
`Application Serial No. 87352855 (the “Application”), owned by Richardson, Kelli
`
`(“Applicant”), and hereby opposes the same.
`
`As grounds for this opposition, Opposer alleges:
`
`1.
`
`Opposer operates well-known and widely distributed premium television channels
`
`and is the producer of the award-winning television series, “Entourage.” Additionally, an
`
`Entourage movie based on the television series was released in the United States on June 3,
`
`2015.
`
`2.
`
`Since long prior to the filing of Applicant’s Application Serial No. 87352855,
`
`4638543-1
`
`1
`
`

`

`Opposer has produced and distributed the Entourage television series, as well as related goods
`
`and services, under the mark ENTOURAGE, with its attendant trade dress, logos, and designs
`
`(the “ENTOURAGE Marks”).
`
`3.
`
`Opposer owns registrations for its ENTOURAGE Marks with the United States
`
`Patent and Trademark Office (“PTO”), including, but not limited to:
`
`Mark
`ENTOURAGE
`
`1.
`
`2.
`
`3.
`4.
`5.
`6.
`
`7.
`
`ENTOURAGE
`
`ENTOURAGE
`ENTOURAGE
`ENTOURAGE
`ENTOURAGE
`
`ENTOURAGE
`
`Class/Goods/Services
`Reg. No.
`3318130 Class 009 - pre-recorded [ audiotapes, videotapes, ] compact discs and
`DVDs, all featuring an ongoing comedic television series; images held in
`electronic format, namely, images related to a comedic television series in
`the nature of downloadable electronic photographs, and electronic
`photographs and graphics stored or recorded on electronic or computer
`media; [ electronic game programs; downloadable ring tones and
`downloadable ring back tones, pre-recorded video clips, pre-recorded audio
`clips, animated ringers, video ringers, audio shorts, video shorts and ]
`animated screensavers, all downloadable via a global computer network
`and featuring content from or relating to an ongoing comedic television
`series; [ downloadable pre-recorded audio, video, text and graphics held in
`electronic personal computers and handheld wireless devices featuring
`content from or relating to a comedic ongoing television series ]
`3490593 Class 016 - printed matter, namely, books, [ calendars ] and posters, all
`featuring a comedic ongoing television series
`3215903 Class 021 - mugs, drinking glasses [ and shot glasses ]
`3215904 Class 025 - clothing, namely, t-shirts [, sweatshirts, jackets, ] [ hats, visors ]
`4836026 Class 028 - darts, dart boards
`3235828 Class 041 - entertainment services in the nature of an ongoing television
`program featuring comedy
`3293874 Class 009 - pre-recorded [ audiotapes, videotapes, ] compact discs and
`DVDs, all featuring an ongoing comedic television series [ ; images held in
`electronic format, namely, images related to a comedic television series in
`the nature of downloadable electronic photographs, and electronic
`photographs and graphics stored or recorded on electronic or computer
`media; electronic game programs; downloadable ring tones and
`downloadable ring back tones; pre-recorded video clips, pre-recorded audio
`clips, animated ringers, video ringers, audio shorts, video shorts and
`animated screensavers, all downloadable via a global computer network
`and featuring content from or relating to an ongoing comedic television
`series; downloadable pre-recorded audio, text and graphics held in
`electronic personal computers and handheld wireless devices featuring
`content from or relating to a comedic ongoing television series ]
`Class 021 - mugs, drinking glasses [ and shot glasses ]
`Class 025 - clothing, namely, t-shirts [, sweatshirts, jackets, ] [ hats ] [,
`visors ]
`
`4638543-1
`
`2
`
`

`

`Mark
`ENTOURAGE
`
`8.
`
`Class/Goods/Services
`Reg. No.
`3645096 Class 016 - printed matter, namely, books, [ calendars ] and posters, all
`featuring a comedic ongoing television series
`
`The foregoing registrations are valid, subsisting, and owned by Opposer. U.S. Trademark
`
`Registration Nos. 3215903, 3215904, 3293874, 3318130, 3490593, and 3645096 are also
`
`incontestable pursuant to 15 U.S.C. §§1064 and 1115(b).
`
`4.
`
`By virtue of the popularity of Opposer’s goods and services offered or sold in
`
`connection with the ENTOURAGE Marks, Opposer has built up and now owns an extremely
`
`valuable goodwill which is symbolized by its ENTOURAGE Marks.
`
`5.
`
`Applicant’s application for, proposed use and/or actual use of, FAMILY
`
`ENTOURAGE for “entertainment services, namely, the provision of continuing programs,
`
`segments, movies, and shows featuring family life, children, and parenting content delivered by
`
`television, theatrical or feature film, the internet and other digital or social platforms as well as
`
`radio and satellite” in International Class 041 (“Applicant’s Services”) is without Opposer’s
`
`consent or permission.
`
`COUNT I – LIKELIHOOD OF CONFUSION
`
`Opposer realleges the allegations in Paragraphs 1 through 5.
`
`Opposer believes that Applicant’s proposed use and/or actual use of FAMILY
`
`6.
`
`7.
`
`ENTOURAGE in connection with Applicant’s Services is likely to cause confusion, mistake, or
`
`deception in that consumers are likely to believe that Applicant’s Services are Opposer’s services,
`
`or the services of a person or company that is sponsored, authorized or licensed by, or in some
`
`other way legitimately connected with, Opposer.
`
`4638543-1
`
`3
`
`

`

`COUNT II – DILUTION
`
`Opposer realleges the allegations in Paragraphs 1 through 7.
`
`Prior to Applicant’s filing date or any date on which Applicant could rely,
`
`8.
`
`9.
`
`Opposer’s ENTOURAGE Marks were distinctive and famous in accordance with 15 U.S.C. §
`
`1125(c).
`
`10.
`
`Applicant’s use of FAMILY ENTOURAGE in connection with Applicant’s
`
`Services is likely to cause dilution of the distinctive quality of Opposer’s famous ENTOURAGE
`
`Marks.
`
`WHEREFORE, Opposer respectfully requests that this opposition be sustained and that
`
`Application Serial No. 87352855 be denied registration.
`
`Please debit our Deposit Account No. 504261 for the filing fee and for any additional
`
`necessary fees.
`
`Please address all correspondence to: Tamara F. Carmichael, Esq., OLSHAN FROME
`
`WOLOSKY LLP, 1325 Avenue of the Americas, New York, New York 10019.
`
`OLSHAN FROME WOLOSKY LLP
`
`/s/ Tamara Carmichael
`Tamara F. Carmichael
`1325 Avenue of the Americas
`New York, New York 10019
`Tel: 212-451-2300
`Email: tcarmichael @olshanlaw.com,
`aprovencio@olshanlaw.com
`
`Attorneys for Opposer, Home Box Office, Inc.
`
`Date: June 4, 2018
`
`4638543-1
`
`4
`
`