Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA907909
`07/09/2018
`
`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
`
`07/08/2018
`
`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
`
`87624441
`
`Publication date
`
`01/09/2018
`
`Opposition Filing
`Date
`
`Applicant
`
`07/09/2018
`
`Purple Wine Company
`9119 Graton Road
`Graton, CA 95444
`UNITED STATES
`
`Opposition Peri-
`od Ends
`
`07/08/2018
`
`Goods/Services Affected by Opposition
`
`Class 033. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Wines
`
`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.
`
`4874426
`
`Registration Date
`
`12/22/2015
`
`Word Mark
`
`WINTER IS COMING
`
`Application Date
`
`05/28/2015
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 021. First use: First Use: 2014/12/17 First Use In Commerce: 2014/12/17
`MUGS, DRINKING GLASSES
`
`U.S. Registration
`No.
`
`4996157
`
`Registration Date
`
`07/12/2016
`
`Word Mark
`
`Design Mark
`
`WINTER IS COMING
`
`Application Date
`
`05/28/2015
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`U.S. Application
`No.
`
`NONE
`
`Class 025. First use: First Use: 2014/12/17 First Use In Commerce: 2014/12/17
`Clothing, namely, t-shirts
`
`87039207
`
`Application Date
`
`05/17/2016
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`WINTER IS COMING
`
`
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 028. First use: First Use: 0 First Use In Commerce: 0
`Slot Machines
`
`U.S. Registration
`No.
`
`4764716
`
`Registration Date
`
`06/30/2015
`
`Word Mark
`
`Design Mark
`
`WINTER IS COMING
`
`Application Date
`
`01/07/2015
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`U.S. Application
`No.
`
`NONE
`
`Class 035. First use: First Use: 2014/12/17 First Use In Commerce: 2014/12/17
`online and retail store services featuring t-shirts, hats, mouse pads,
`posters,jewelry, bags, drink ware
`
`87445539
`
`Application Date
`
`05/11/2017
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`Attachments
`
`WINTER IS HERE
`
`NONE
`
`Class 032. First use: First Use: 2017/10/01 First Use In Commerce: 2017/10/01
`alcoholic beverages, namely, beer
`
`86644261#TMSN.png( bytes )
`87039207#TMSN.png( bytes )
`86497081#TMSN.png( bytes )
`87445539#TMSN.png( bytes )
`Notice of Opposition - WINTER IS COMING 87624441.pdf(422440 bytes )
`
`Signature
`
`/Tamara Carmichael/
`
`Name
`
`Date
`
`Tamara Carmichael
`
`07/09/2018
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the Matter of Application Serial No. 87624441: WINTER IS COMING
`Published in the Official Gazette of Jan. 09, 2018
`
`Home Box Office, Inc.,
`
`Opposer,
`
`v.
`
`Purple Wine Company,
`
`
`
`Applicant.
`
`Opposition No. ________
`
`)
`)
`)
`)
`)
`)
`)
`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 WINTER IS COMING in International Class 033 for “wine” in
`
`Application Serial No. 87624441 (the “Application”), owned by Purple Wine Company
`
`(“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 renowned, critically acclaimed, and award-winning television series
`
`Game of Thrones, which first aired April 2011.
`
`2. Since long prior to the filing of Applicant’s Application, Opposer has produced, marketed,
`
`and distributed the Game of Thrones television series and its related marks, logos, designs, and
`
`characters. The Game of Thrones television series is the most popular in the history of
`
`Opposer’s network and has seen its ratings and popularity rise with each passing season.
`
`3. The popularity of Opposer’s Game of Thrones television series and its place in the
`
`cultural zeitgeist has been acknowledged by countless media articles. For example, Time
`
`Magazine, in its July 10, 2017 cover story, called Game of Thrones “the world’s most popular
`
`show.”
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`4.
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`This popularity has translated into numerous awards for the series. For example,
`
`Game of Thrones set the record for the most Primetime Emmy wins for a series in a single
`
`season (12) and the most wins for a scripted primetime television series ever (38). The series
`
`won the Emmy Award for Outstanding Drama Series in 2015 and 2016.
`
`5.
`
`Since long prior to the filing of Applicant’s Application, Opposer has produced and
`
`distributed the Game of Thrones television series, as well as related goods and services under
`
`the trademark and service mark WINTER IS COMING, with its attendant trade dress, logos and
`
`designs (the “WINTER IS COMING Marks”).
`
`6.
`
`The title of the first episode in the Game of Thrones television series is “Winter is
`
`Coming.” The Stark family is central to the story of the Game of Thrones television series and
`
`their family motto is WINTER IS COMING.
`
`7.
`
`WINTER IS COMING has acquired significant notoriety and distinctiveness since
`
`the airing of the first episode in 2011. Due to the widespread popularity of the Game of Thrones
`
`television series, Opposer is identified exclusively and uniquely as the source of the WINTER IS
`
`COMING Marks, including but not limited to any and all merchandise to which WINTER IS
`
`COMING is applied.
`
`8.
`
`Opposer owns registrations and applications for its WINTER IS COMING Marks,
`
`and a variation thereof, WINTER IS HERE, with the United States Patent and Trademark Office
`
`(“PTO”), including, but not limited to:
`
`Mark
`
`1. WINTER IS COMING
`2. WINTER IS COMING
`3. WINTER IS COMING
`4. WINTER IS COMING
`
`App. No. Reg. No. Class/Goods/Services
`86644243 4874426
`021 - mugs, drinking glasses
`86644261 4996157
`025 - clothing, namely, t-shirts
`87039207
`
`028 - slot machines
`86497081 4764716
`035 - online and retail store services
`featuring t-shirts, hats, mouse pads,
`posters, jewelry, bags, drink ware
`
`4671300-2
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`2
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`
`
`Mark
`
`5. WINTER IS HERE
`
`The foregoing registrations and applications are valid, subsisting, and owned by Opposer.
`
`App. No. Reg. No. Class/Goods/Services
`87445539
`
`032 - alcoholic beverages, namely, beer
`
`9.
`
`By virtue of the popularity of Opposer’s goods and services offered or sold in
`
`connection with the WINTER IS COMING Mark and Game of Thrones television series,
`
`Opposer has built up and now owns an extremely valuable goodwill in its television series and
`
`related marks such as WINTER IS COMING.
`
`10.
`
`Applicant’s application for, proposed use, and/or actual use of WINTER IS
`
`COMING for “wines” (“Applicant’s Goods”) is without Opposer’s consent or permission.
`
`COUNT I – LIKELIHOOD OF CONFUSION
`
`11.
`
`Opposer realleges the allegations of Paragraphs 1 through 10.
`
`12.
`
`Applicant’s proposed use and/or actual use of WINTER IS COMING in connection
`
`with Applicant’s Goods is likely to cause confusion, mistake, or deception in that consumers are
`
`likely to believe that Applicant’s Goods are Opposer’s Goods, or the goods of a person or
`
`company that is sponsored, authorized or licensed by, or in some other way legitimately
`
`connected with, Opposer.
`
`COUNT II – DILUTION
`
`13.
`
`Opposer realleges the allegations in Paragraphs 1 through 12.
`
`14.
`
`Applicant’s proposed use and/or actual use of WINTER IS COMING in connection
`
`with Applicants’ Goods is likely to dilute the distinctive quality of Opposer’s WINTER IS
`
`COMING Marks through blurring.
`
`WHEREFORE, Opposer respectfully requests that this opposition be sustained and that
`
`Application Serial No. 87624441 be denied registration.
`
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`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 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: July 9, 2018
`
`
`
`
`
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