Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1105843
`01/05/2021
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`ESTTA Tracking number:
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`Filing date:
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Notice of Opposition
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`Notice is hereby given that the following party opposes registration of the indicated application.
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`Opposer Information
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`Name
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`BBH Partners LLP
`
`Granted to Date
`of previous ex-
`tension
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`Address
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`01/10/2021
`
`60 KINGLY STREET
`LONDON, W1B 5DS
`UNITED KINGDOM
`
`Attorney informa-
`tion
`
`STEPHEN F. ROTH
`LERNER DAVID LITTENBERG KRUMHOLZ & MENTLIK
`20 COMMERCE DRIVE
`CRANFORD, NJ 07016
`UNITED STATES
`Primary Email: sroth@lernerdavid.com
`Secondary Email(s): litigation@lernerdavid.com
`No phone number provided.
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`Docket Number
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`Applicant Information
`
`Application No.
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`88833273
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`Publication date
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`07/14/2020
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`Opposition Filing
`Date
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`Applicant
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`01/05/2021
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`Opposition Peri-
`od Ends
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`01/10/2021
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`No. 5 Productions, Ltd.
`15233 VENTURA BLVD., #610
`SHERMAN OAKS, CA 91403
`UNITED STATES
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`Goods/Services Affected by Opposition
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`Class 041. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Television, digital multimedia, film, podcast
`and video production services; entertainment services in the nature of writing, development, produ-
`cing, recording, production and post-production services of television, digital multimedia, video, pod-
`cast, theatrical motion pictures,film, music and multimedia entertainment content; entertainment ser-
`vices in thenature of movies, ongoing shows and programs featuring comedy, variety, interviews, talk
`show elements, animation and musical performances performed live or recorded, and delivered via
`radio, television, a global computer network or to mobile devices; photography services; custom
`scriptwriting services for non-advertising purposes; Publishing of electronic publications, printed mat-
`ter, books, photography, digital video, audio and multimedia publishing
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`Grounds for Opposition
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`

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`Priority and likelihood of confusion
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`Trademark Act Section 2(d)
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`Mark Cited by Opposer as Basis for Opposition
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`U.S. Registration
`No.
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`3933718
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`Registration Date
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`03/22/2011
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`Application Date
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`11/02/2007
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`Foreign Priority
`Date
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`08/24/2007
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`Word Mark
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`Design Mark
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`Description of
`Mark
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`Goods/Services
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`BBH
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`NONE
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`Class 016. First use: First Use: 0 First Use In Commerce: 0
`Printed publications, namely, newsletters, magazines, periodicals, books, cata-
`logues, manuals, and instructional and teaching materials, all in the fields of ad-
`vertising and marketing consultancy; advertising story boards made from paper
`or cardboard, comic strips and comic books, pens, pencils, markers and cray-
`ons, cases for pens, pencils, markers and crayons, photographs and prints, [
`printed name and address stamps and ink pads, ] memo and notice boards, [
`decalcomanias and ] stickers, postcards, paper coasters, book plates and book
`marks, and paper gift bags, all in the fields of advertising and marketing con-
`sultancy
`Class 035. First use: First Use: 0 First Use In Commerce: 0
`Advertising and promotional services, marketing services, public relations ser-
`vices, sales promotion services, production of television, film and radio commer-
`cials, planning, buying and negotiating advertising space, commercial informa-
`tionagency services, marketing study services, opinion polling, publication of
`publicity texts, provision of radio and television advertising services for others,
`sales promotion for others, and organization of exhibitions for commercial or ad-
`vertising purposes, all in the fields ofadvertising and marketing consultancy; and
`information and advisory services associated with the aforesaid services
`Class 041. First use: First Use: 0 First Use In Commerce: 0
`Publication and online electronic publishing of texts and books in the fields of
`advertising, marketing and public relations consultancy; arranging and conduct-
`ing seminars for instructional purposes in the fields of advertising, marketing and
`public relations consultancy; providing online, non-downloadable electronic pub-
`lications in the nature of books, newsletters, magazines, periodicals and cata-
`logues, all in the field of advertising; organization of sporting and entertainment
`competitions, film production; presentation of live show performances; providing
`facilities for recreation activities; entertainment, namely, production oftelevision
`programs; production of television programs and radio programs, organization of
`exhibitions for cultural or educational purposes in the fields of advertising; mar-
`keting and public relations consultancy; production of advertisingmatter and
`commercials
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`Attachments
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`6689288_1.pdf(15413 bytes )
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`Signature
`
`/Stephen F. Roth/
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`Name
`
`Date
`
`STEPHEN F. ROTH
`
`01/05/2021
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`TRADEMARK
`OPTIME 10.2O-063
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`BBH Partners LLP,
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`Opposer,
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`v.
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`No. 5 Productions, Ltd.
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`Applicant.
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`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
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`
` : Serial No. 88/833,273
` :
` : Filed: 3/13/20
` :
` : For: BBH XX
` :
` : Published: 7/14/20
` :
` :
` :
` X
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`NOTICE OF OPPOSITION
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`Opposer, BBH Partners LLP, a limited liability company under the laws of the
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`United Kingdom, and having a place of business at 60 Kingly Street, London, W1B 5DS,
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`United Kingdom, believes it will be damaged by the registration of the mark BBH XX
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`shown in application Serial No. 88/833,273 (the "Application") and hereby opposes
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`registration of such mark. The specific grounds for such opposition are as follows:
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`1.
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`Opposer owns and uses through its licensed affiliated companies the mark
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`BBH in connection with services offered in interstate commerce in the United States.
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`2.
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`Opposer has been using the mark BBH since at least as early as 2007, long
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`before Applicant used the mark, and prior to the date Applicant filed for registration of
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`the mark on March 13, 2020.
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`3.
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`Opposer
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`is
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`the owner of United States Trademark Registration
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`No. 3,933,718 for the mark BBH covering various advertising and marketing services.
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`

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`4.
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`Applicant’s mark BBH XX so resembles Opposer's mark BBH as to result
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`in a likelihood of confusion.
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`5.
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`Applicant’s mark BBH XX is used for, or will be used for, related and
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`confusingly similar services such that the marks are likely to be confused.
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`6.
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`Opposer will suffer harm as a result of the confusion likely to arise from the
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`registration of the BBH XX mark and Opposer's prior and ongoing use of the BBH mark.
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`7.
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`This opposition is timely given that the publication date of the Application
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`was July 14, 2020, and an extension of the time within which Opposer could oppose such
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`mark was granted until January 10, 2021.
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`WHEREFORE, Opposer requests that its opposition be sustained, and the Board
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`refuse registration of Application Serial No. 88/833,273.
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`Please charge the fee of $400.00 for a Notice of Opposition in one class to our
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`Deposit Account No. 12-1095. The undersigned is authorized to make charges to said
`
`deposit account.
`
`
`
`
`
`Respectfully submitted,
`LERNER, DAVID, LITTENBERG,
` KRUMHOLZ & MENTLIK, LLP
`Attorneys for Opposer
`20 Commerce Drive
`Cranford, NJ 07016
`Tel: 908.654.5000
`
`
`
`By s/ Stephen F. Roth
` Stephen F. Roth
`
`Dated: January 5, 2021
`
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`6689288_1.doc
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`

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`CERTIFICATE OF SERVICE
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`I hereby certify that a true copy of the within NOTICE OF OPPOSITION was
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`served upon the following this 5th day of January, 2021, as follows:
`
`
`VIA EMAIL TO MAWATKINS@VORYS.COM
`
`Mark A. Watkins, Esq.
`106 South Main Street
`Suite 1100
`Akron, OH 44308
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` s/ Stephen F. Roth
` Stephen F. Roth
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`6689288_1.doc
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