Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1140119
`06/14/2021
`
`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
`
`06/13/2021
`
`30 HUDSON YARDS
`NEW YORK, NY 10001
`UNITED STATES
`
`TAMARA CARMICHAEL
`OLSHAN FROME WOLOSKY LLP
`1325 AVENUE OF THE AMERICAS
`NEW YORK, NY 10019
`UNITED STATES
`Primary Email: TFCTrademarks@olshanlaw.com
`Secondary Email(s): tcarmichael@olshanlaw.com, aprovencio@olshanlaw.com
`212-451-2300
`
`Docket Number
`
`010754-158
`
`Applicant Information
`
`Application No.
`
`90072340
`
`Publication date
`
`12/15/2020
`
`Opposition Filing
`Date
`
`Applicant
`
`06/14/2021
`
`Opposition Peri-
`od Ends
`
`06/13/2021
`
`El, Nasseem Shafai
`APP 306
`1822 BENTON AVE.
`PHILADELPHIA, PA 19152
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 041. First Use: 2017/11/10 First Use In Commerce: 2017/11/10
`All goods and services in the class are opposed, namely: Entertainment services, namely, providing
`an ongoing radio program in the fieldof music, new music, music by independent artists, reviews by
`listeners, and interviews; Entertainment in the nature oflive radio personality performances; Produc-
`tion and distribution of radio programmes; Production of radio programs; Radio entertainment produc-
`tion; Radio entertainment services, namely, radio programs featuring performances by artists and ra-
`dio personalities
`
`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.
`
`6190739
`
`Registration Date
`
`11/03/2020
`
`Word Mark
`
`Design Mark
`
`IRON THRONE
`
`Application Date
`
`05/15/2019
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2019/05/21 First Use In Commerce: 2019/05/21
`Entertainment services, namely, providing online non-downloadable computer,
`video and interactive electronic games via computer networks and global com-
`munications networks
`
`U.S. Registration
`No.
`
`6201359
`
`Registration Date
`
`11/17/2020
`
`Word Mark
`
`Design Mark
`
`IRON THRONE
`
`Application Date
`
`05/14/2019
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2019/05/21 First Use In Commerce: 2019/05/21
`Downloadable and recorded computer and video game programs and down-
`loadable andrecorded video game software; downloadable computer game soft-
`ware; computer, video and interactive electronic game disks featuring recorded
`video game software
`
`U.S. Registration
`No.
`
`6016905
`
`Registration Date
`
`03/24/2020
`
`Application Date
`
`05/15/2019
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Word Mark
`
`Design Mark
`
`THE IRON THRONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 028. First use: First Use: 2016/08/25 First Use In Commerce: 2016/08/25
`Board games
`
`Attachments
`
`88431900#TMSN.png( bytes )
`88429802#TMSN.png( bytes )
`88431678#TMSN.png( bytes )
`Notice of Opposition - 90072340 IRONTHRONERADIO.pdf(547180 bytes )
`
`Signature
`
`/TAMARA CARMICHAEL/
`
`Name
`
`Date
`
`TAMARA CARMICHAEL
`
`06/14/2021
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`In the Matter of Application Serial No. 90072340– IRONTHRONERADIO
`Published in the Official Gazette of December 15, 2020
`
`Home Box Office, Inc.,
`
`Opposer,
`
`
`Applicant.
`
`)
`)
`)
`)
`)
`)
`)
`
`
`
`Opposition No. ________
`
`v.
`
`
`El, Nasseem Shafai,
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`Home Box Office, Inc. (“Opposer”), a Delaware corporation, located and doing business
`
`at 30 Hudson Yards, New York, New York 10001, believes it will be damaged by the registration
`
`of the trademark IRONTHRONERADIO for “Entertainment services, namely, providing an
`
`ongoing radio program in the field of music, new music, music by independent artists, reviews by
`
`listeners, and interviews; Entertainment in the nature of live radio personality performances;
`
`Production and distribution of radio programmes; Production of radio programs; Radio
`
`entertainment production; Radio entertainment services, namely, radio programs featuring
`
`performances by artists and radio personalities” in International Class 041 under Application
`
`Serial No. 90072340 (the “Application”), owned by El, Nasseem Shafai (“Applicant”), and hereby
`
`opposes 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 in April 2011. The Game of Thrones series is comprised of
`
`seventy-three (73) episodes over eight (8) seasons, having concluded its final season in May
`
`2019.
`
`2.
`
`The Game of Thrones television series is the most popular series in the history of
`
`Opposer’s network. The series’ ratings and popularity rose with each passing season,
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`5857835-1
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`culminating in an average audience of 44 million viewers per episode across all platforms in its
`
`final season.
`
`3.
`
`The popularity of Opposer’s Game of Thrones series and its place in the cultural
`
`zeitgeist has been acknowledged by countless media publications. For example, Time Magazine,
`
`in its July 10, 2017 cover story, called Game of Thrones “the world’s most popular show.”
`
`4.
`
`This popularity has translated into numerous awards for the series. For example,
`
`Game of Thrones set the record for the most Primetime Emmy nominations for a series in a
`
`single season (32), 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 (59). The series
`
`has been nominated for the Emmy Award for Outstanding Drama Series for each season that
`
`has aired, winning the award in 2015, 2016, 2018, and 2019.
`
`5.
`
`Opposer exploits its well-known characters in a variety of ways, well beyond their
`
`appearances in its entertainment products. Indeed, it has become common practice for owners
`
`of entertainment programming and related characters to exploit commercially the popularity of
`
`their well-known symbols, names, characters and elements in connection with a wide range of
`
`merchandise. The broad reach and deep emotional impact of those entertainment products
`
`create unparalleled goodwill in the names, characters, and symbols from those products, and
`
`generate a robust licensing business in virtually limitless categories of goods and services. Such
`
`additional uses include video games and a wide array of licensed consumer products including
`
`food and beverage, apparel, toys, games, collectibles, footwear, stationery and other paper
`
`products, and themed attractions, to name a few. Consumers today have come to expect that
`
`when elements from entertainment products appear on or in connection with goods or services,
`
`such uses are associated with and licensed by the rights holder.
`
`6.
`
`One of the core elements of the series since the first season is the “Iron Throne”;
`
`in fact, the key art for the first season featured a character sitting on the Iron Throne. The “Iron
`
`Throne” is the name for the physical throne for the reigning king or queen of Westeros, the
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`fictional continent in which the show is set. More than just a physical set piece, however, the
`
`Iron Throne is of great symbolic significance in Game of Thrones and one of the primary
`
`symbols associated with the series. The central plot of the series concerns the preoccupation
`
`and efforts of its key characters to command Westeros, and hence sit on the Iron Throne. As a
`
`result, the Iron Throne is central to the Games of Thrones story and viewers and journalists
`
`avidly speculated throughout its run as to who would “win” the Iron Throne.
`
`7.
`
`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 IRON THRONE, with its attendant trade dress, logos, and
`
`designs (the “IRON THRONE Marks”).
`
`8.
`
`HBO and its licensees have used the IRON THRONE Marks, including its
`
`pictorial equivalent, on and in connection with an array of goods promoting Game of Thrones
`
`over the years, including video games, card games, board games, clothing, DVDs and many
`
`other goods bearing one or both of the IRON THRONE Marks (see below).
`
`
`
`
`
`
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`9.
`
`HBO also owns United States Copyright Registration no. VA 1-937-703 for its
`
`design and sculpture of the Iron Throne, replicas of which are sold in commerce:
`
`10.
`
`Opposer owns registrations and applications for its IRON THRONE Marks with
`
`the United States Patent and Trademark Office (“PTO”), including, but not limited to:
`
`
`
`Mark
`IRON THRONE
`
`1.
`
`App. No. Reg. No. Class/Goods/Services
`88431900 6190739 Class 041 - Entertainment services, namely,
`providing online non-downloadable computer,
`video and interactive electronic games via
`computer networks and global communications
`networks
`88429802 6201359 Class 009 - Downloadable and recorded
`computer and video game programs and
`downloadable and recorded video game
`software; downloadable computer game
`software; computer, video and interactive
`electronic game disks featuring recorded video
`game software
`3. THE IRON THRONE 88431678 6016905 Class 028 - Board games
`
`The foregoing registrations and applications are valid, subsisting, and owned by Opposer.
`
`2.
`
`IRON THRONE
`
`4.
`
`By virtue of the popularity of Opposer’s goods and services offered or sold in
`
`connection with the IRON THRONE Marks, Opposer has built up and now owns an extremely
`
`valuable goodwill which is symbolized by its IRON THRONE Marks.
`
`5.
`
`Applicant’s application for, and/or actual use of IRONTHRONERADIO for
`
`“Entertainment services, namely, providing an ongoing radio program in the field of music, new
`
`music, music by independent artists, reviews by listeners, and interviews; Entertainment in the
`
`nature of live radio personality performances; Production and distribution of radio programmes;
`
`Production of radio programs; Radio entertainment production; Radio entertainment services,
`
`5857835-1
`
`4
`
`

`

`
`
`namely, radio programs featuring performances by artists and radio personalities” in International
`
`Class 041 (“Applicant’s Services”) are without Opposer’s consent or permission.
`
`COUNT I – LIKELIHOOD OF CONFUSION
`
`Opposer realleges the allegations of Paragraphs 1 through 5.
`
`Applicant’s actual use of IRONTHRONERADIO in connection with Applicant’s
`
`6.
`
`7.
`
`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.
`
`8.
`
`9.
`
`COUNT II – DILUTION
`
`Opposer realleges the allegations in Paragraphs 1 through 7.
`
`Applicant’s actual use of IRONTHRONERADIO in connection with Applicant’s
`
`Services is likely to dilute the distinctive quality of Opposer’s IRON THRONE Marks through
`
`blurring.
`
`WHEREFORE, Opposer respectfully requests that this opposition be sustained and that
`
`Application Serial No. 90072340 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 Carmichael, Esq., OLSHAN FROME
`
`WOLOSKY LLP, 1325 Avenue of the Americas, New York, New York 10019.
`
`Date: June 14, 2021
`
`5857835-1
`
`
`
`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.
`
`
`
`5
`
`