Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1168064
`10/25/2021
`
`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
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`Hasbro, Inc.
`
`10/23/2021
`
`1027 NEWPORT AVENUE
`PAWTUCKET, RI 02861
`UNITED STATES
`
`CATHERINE M.C. FARRELLY
`FRANKFURT, KURNIT, KLEIN & SELZ P.C.
`28 LIBERTY STREET
`35TH FLOOR
`NEW YORK, NY 10005
`UNITED STATES
`Primary Email: cfarrelly@fkks.com
`Secondary Email(s): Dgomez@fkks.com, alaroui@fkks.com
`212.826.5579
`
`Docket Number
`
`19851.1900
`
`Applicant Information
`
`Application No.
`
`88954259
`
`Publication date
`
`08/24/2021
`
`Opposition Filing
`Date
`
`Applicant
`
`10/25/2021
`
`Opposition Peri-
`od Ends
`
`10/23/2021
`
`Abeyi Enterprises, LLC
`2907 GREENWOOD SPRINGS LOOP
`LAKE MARY, FL 32746
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 005. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Dietary supplement drink mixes; Diet-
`arysupplemental drinks; Dietary supplemental drinks in the nature of vitamin and mineral beverages;
`Dietary supplements; Dietary and nutritional supplements; Dietary beverage supplements for human
`consumption in liquid and dry mix form for therapeutic purposes; Dietary food supplements; Anti-
`inflammatory ointments; Anti-itch ointment; Antibiotic ointments; Diet capsules; Herbal tinctures for
`medicalpurposes; Herbal male enhancement capsules; Homeopathic anti-inflammatory ointment;
`Medicated ointments for treating dermatological conditions; Medicated sunburn ointments; Medicinal
`preparations forthe mouth to be applied in the form of drops, capsules, tablets and compressed tab-
`lets; Mentholated ointment for medical use; Natural dietary supplements; Prescription and non-
`prescription medicines,namely, pills, tablets, capsules, caplets, liquid drops, sachets and pharma-
`ceutical preparations for the treatment of cardiovascular disorders; all of the foregoing containing or
`
`

`

`derived solely from cannabis with a delta-9 THC concentration of not more than 0.3% on a dry weight
`basis, and none of the foregoing containing CBD
`
`Class 025. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Clothing for women, men, and children,
`namely, shirts, tops, tank tops, t-shirt, blouses, dresses, pants, bottoms, shorts, sweatpants, sweat-
`shirt, skirts, scarves, belts, gloves, jackets, hoodies, socks, hats, headbands, headwear, bean-
`ies,coats, and shoes
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`Dilution by tarnishment
`
`Trademark Act Sections 2 and 43(c)
`
`Trademark Act Sections 2 and 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`326723
`
`Registration Date
`
`07/30/1935
`
`Word Mark
`
`Design Mark
`
`MONOPOLY
`
`Application Date
`
`03/30/1935
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 028. First use: First Use: 1935/03/20 First Use In Commerce: 1935/03/20
`[ BOARD GAME PLAYED WITH MOVABLE PIECES] * EQUIPMENT COM-
`PRISING A BOARD AND MOVABLE PIECES FOR USE IN PLAYING A REAL
`ESTATE TRADING GAME *
`
`U.S. Registration
`No.
`
`338834
`
`Registration Date
`
`09/15/1936
`
`Word Mark
`
`Design Mark
`
`MONOPOLY
`
`Application Date
`
`03/28/1936
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 028. First use: First Use: 1935/03/20 First Use In Commerce: 1935/03/20
`TOY MONEY AND RACKS AND TILLS SUITABLE FOR HOLDING SAME FOR
`USE IN THE PLAY OF GAMES
`
`U.S. Registration
`No.
`
`1349672
`
`Registration Date
`
`07/16/1985
`
`Application Date
`
`04/30/1984
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`MONOPOLY
`
`NONE
`
`Class 028. First use: First Use: 1984/03/26 First Use In Commerce: 1984/03/26
`EQUIPMENT SOLD AS A UNIT FOR PLAYING A BOARD GAME
`
`U.S. Registration
`No.
`
`1634214
`
`Registration Date
`
`02/05/1991
`
`Word Mark
`
`Design Mark
`
`NONE
`
`Application Date
`
`11/15/1989
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 028. First use: First Use: 1936/00/00 First Use In Commerce: 1936/00/00
`EQUIPMENT SOLD AS A UNIT FOR PLAYING A BOARD GAME
`
`U.S. Registration
`No.
`
`1634215
`
`Registration Date
`
`02/05/1991
`
`Word Mark
`
`NONE
`
`Application Date
`
`11/15/1989
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 028. First use: First Use: 1936/00/00 First Use In Commerce: 1936/00/00
`EQUIPMENT SOLD AS A UNIT FOR PLAYING A BOARD GAME
`
`U.S. Registration
`No.
`
`1536501
`
`Registration Date
`
`04/25/1989
`
`Word Mark
`
`Design Mark
`
`MONOPOLY
`
`Application Date
`
`04/27/1987
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 028. First use: First Use: 1984/03/26 First Use In Commerce: 1984/03/26
`EQUIPMENT SOLD AS A UNIT FOR PLAYING A BOARD GAME
`
`U.S. Registration
`
`2654349
`
`Application Date
`
`02/14/2002
`
`

`

`No.
`
`Registration Date
`
`11/26/2002
`
`Word Mark
`
`Design Mark
`
`MONOPOLY
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 1996/09/19 First Use In Commerce: 1996/09/19
`computer game programs
`
`U.S. Registration
`No.
`
`3851950
`
`Registration Date
`
`09/28/2010
`
`Word Mark
`
`Design Mark
`
`MONOPOLY DEAL
`
`Application Date
`
`02/12/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 028. First use: First Use: 2008/12/26 First Use In Commerce: 2008/12/26
`card games
`
`U.S. Registration
`No.
`
`3851967
`
`Registration Date
`
`09/28/2010
`
`Word Mark
`
`Design Mark
`
`MONOPOLY
`
`Application Date
`
`04/12/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 028. First use: First Use: 2008/10/01 First Use In Commerce: 2008/10/01
`card games
`
`

`

`U.S. Registration
`No.
`
`4796523
`
`Registration Date
`
`08/18/2015
`
`Word Mark
`
`Design Mark
`
`MONOPOLY
`
`Application Date
`
`06/19/2014
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 028. First use: First Use: 1992/12/31 First Use In Commerce: 1992/12/31
`Lottery tickets
`
`U.S. Registration
`No.
`
`4796524
`
`Registration Date
`
`08/18/2015
`
`Word Mark
`
`Design Mark
`
`MONOPOLY
`
`Application Date
`
`06/19/2014
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 1992/12/31 First Use In Commerce: 1992/12/31
`Lottery services
`
`U.S. Registration
`No.
`
`4818781
`
`Registration Date
`
`09/22/2015
`
`Word Mark
`
`MONOPOLY
`
`Application Date
`
`02/19/2014
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 1998/12/31 First Use In Commerce: 1998/12/31
`Computer software and firmware for games of chance on any computerized plat-
`form, including dedicated gaming consoles, video based slot machines, reel
`based slot machines, and video lottery terminals;interactive video game soft-
`ware; gamingsoftware that generates or displays wager outcomes
`Class 028. First use: First Use: 1998/12/31 First Use In Commerce: 1998/12/31
`Gaming machines, namely, devices which accept a wager; reconfigurable
`casino gaming equipment, namely, gaming machines and operational computer
`software therefor sold as a unit
`Class 041. First use: First Use: 2004/12/31 First Use In Commerce: 2004/12/31
`Entertainment services, namely, providing computer games through a computer,
`social networking or mobile platform
`
`U.S. Registration
`No.
`
`5729518
`
`Registration Date
`
`04/16/2019
`
`Application Date
`
`03/21/2018
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`MONOPOLY CASH GRAB
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 028. First use: First Use: 2018/12/01 First Use In Commerce: 2018/12/01
`Game cards; parlor games
`
`U.S. Registration
`No.
`
`5728055
`
`Registration Date
`
`04/16/2019
`
`Word Mark
`
`MONOPOLY
`
`Application Date
`
`02/19/2015
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 024. First use: First Use: 2017/12/31 First Use In Commerce: 2017/12/31
`Bed blankets; bed sheets; bed spreads; comforters; quilts; textile wall hangings
`
`U.S. Registration
`No.
`
`5728056
`
`Registration Date
`
`04/16/2019
`
`Word Mark
`
`Design Mark
`
`MONOPOLY
`
`Application Date
`
`02/19/2015
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`U.S. Application
`No.
`
`NONE
`
`Class 018. First use: First Use: 2017/12/31 First Use In Commerce: 2017/12/31
`Backpacks, tote bags, book bags, hand bags, purses, luggage tags and wallets
`
`90309157
`
`Application Date
`
`11/10/2020
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`MONOPOLY
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Description of
`Mark
`
`Goods/Services
`
`Attachments
`
`NONE
`
`Class 025. First use: First Use: 2001/10/01 First Use In Commerce: 2001/10/01
`Footwear; Hats; Headwear; Pajamas; Pants; Shirts; Sleepwear; Socks; Under-
`wear; Hoodies; Sweatshirts; T-shirts
`
`71363230#TMSN.png( bytes )
`71376540#TMSN.png( bytes )
`73839760#TMSN.png( bytes )
`73839762#TMSN.png( bytes )
`73657408#TMSN.png( bytes )
`76370549#TMSN.png( bytes )
`76701594#TMSN.png( bytes )
`76702450#TMSN.png( bytes )
`86315079#TMSN.png( bytes )
`86315091#TMSN.png( bytes )
`86197389#TMSN.png( bytes )
`87843834#TMSN.png( bytes )
`86539145#TMSN.png( bytes )
`86539148#TMSN.png( bytes )
`90309157#TMSN.png( bytes )
`Hasbro Notice of Opposition to MONOPOLY OVER CHESS.pdf(951274 bytes )
`
`Signature
`
`/cmcf/
`
`Name
`
`Date
`
`CATHERINE M.C. FARRELLY
`
`10/25/2021
`
`

`

`
`
` IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Opposer,
`
`In the Matter of Application Serial No. 88/954,259
`For the Mark: MONOPOLY OVER CHESS
`
`------------------------------------------------------------ x
`HASBRO, INC.,
`:
`
`:
`:
`:
`:
`:
`:
`:
`:
`:
`:
`------------------------------------------------------------ x
`
`
`v.
`
`
`
`ABEYI ENTERPRISES, LLC
`
`
`Applicant.
`
`
`
`
`
`
`Opposition No.
`
`
`
`NOTICE OF OPPOSITION
`
`Hasbro, Inc. (“Hasbro”), a Rhode Island corporation having a principal place of business
`
`at 1027 Newport Avenue, Pawtucket, Rhode Island 02862, believes that it will be damaged by
`
`registration of the subject mark of U.S. Trademark Application Serial No. 88/954,259 (the
`
`“Challenged Application”) for MONOPOLY OVER CHESS (“Applicant’s Mark”) and hereby
`
`opposes that application.
`
`On information and belief, the owner of the Challenged Applications is Abeyi
`
`Enterprises, LLC (“Applicant”), a Florida limited liability company having an address of 2907
`
`Greenwood Springs Loop, Lake Mary, Florida 32746.
`
`The grounds for opposition are as follows:
`
`1.
`
`Hasbro is a leading toy and game manufacturer, and has been engaged for decades
`
`in the creation, manufacture and sale of toys and games, television programming, motion
`
`pictures, and digital gaming, and runs a comprehensive licensing program.
`
`FKKS:3113966v.1
`
`
`
`19851.1900
`
`

`

`
`
`2.
`
`Hasbro markets and sells the world famous MONOPOLY® property trading game
`
`and related products and services.
`
`3.
`
`From toys and games to television, movies, digital gaming and consumer
`
`products, Hasbro offers a variety of ways for audiences to experience its iconic brands, including
`
`MONOPOLY, MAGIC: THE GATHERING, NERF, MY LITTLE PONY, TRANSFORMERS,
`
`PLAY-DOH, BABY ALIVE, DUNGEONS & DRAGONS, POWER RANGERS, PEPPA PIG
`
`and PJ MASKS, as well as premier partner brands that include some of the world’s largest and
`
`well-known entertainment brands.
`
`4.
`
`Hasbro is recognized as a leader in its industry and as a corporate citizen. For
`
`example, Hasbro has been recognized among the 100 Best Corporate Citizens by CR Magazine
`
`since 2012, and has been named one of the World’s Most Ethical Companies® by Ethisphere
`
`Institute for the past nine years.
`
`5.
`
`For more than eighty-five (85) years, Hasbro, its predecessors in interest, and its
`
`licensees have used the MONOPOLY trademark and other marks within its family of
`
`MONOPOLY-formative marks (together, the “MONOPOLY Marks”) for games and a wide
`
`variety of other goods and services. Hasbro also owns copyrights in the board designs,
`
`characters, game tokens, icons, and other images associated with the MONOPOLY brand.
`
`6.
`
`Hasbro owns the following federal trademark registrations for its MONOPOLY
`
`Marks (the “MONOPOLY Registrations”), among others:
`
`Mark
`
`Reg. No.
`
`Description of Goods and Services
`
`MONOPOLY
`
`326,723
`
`Class 28: Equipment comprising a board
`game and movable pieces for use in
`playing a real estate trading game
`
`MONOPOLY
`
`338,834
`
`Class 28: Toy money and racks and tills
`suitable for holding same for use in the
`play of games
`
`Status and
`Priority Date
`Registered
`7/30/1935.
`Incontestable.
`Priority as of
`3/20/1935.
`Registered
`09/15/1936.
`Incontestable.
`
`2
`
`

`

`
`
`Mark
`
`Reg. No.
`
`Description of Goods and Services
`
`MONOPOLY
`
`1,349,672
`
`Class 28: Equipment sold as a unit for
`playing a board game
`
`1,634,214
`
`Class 28: Equipment sold as a unit for
`playing a board game
`
`Status and
`Priority Date
`Priority as of
`3/20/1935.
`Registered
`7/16/1985.
`Incontestable.
`Priority as of
`3/26/1984.
`Registered 2/5/1991.
`Incontestable.
`Priority as of 1936.
`
`1,634,215
`
`Class 28: Equipment sold as a unit for
`playing a board game
`
`Registered 2/5/1991.
`Incontestable.
`Priority as of 1936.
`
`MONOPOLY & Design
`
`
`1,536,501
`
`Class 28: Equipment sold as a unit for
`playing a board game
`
`MONOPOLY
`
`
`
`2,654,349
`
`Class 9: Computer game programs
`
`MONOPOLY DEAL
`
`3,851,950
`
`Class 28: Card games
`
`MONOPOLY
`
`3,851,967
`
`Class 28: Card games
`
`MONOPOLY
`
`4,796,523
`
`Class 28: Lottery tickets
`
`MONOPOLY
`
`4,796,524
`
`Class 41: Lottery services
`
`MONOPOLY
`
`4,818,781
`
`Class 9: Computer software and
`firmware for games of chance on any
`
`3
`
`Registered
`4/25/1989.
`Incontestable.
`Priority as of
`3/26/1984.
`First used in another
`form on 3/20/1935.
`
`Registered
`11/26/2002.
`Incontestable.
`Priority as of
`9/19/1996.
`Registered
`9/28/2010.
`Incontestable.
`Priority as of
`12/26/2008.
`Registered
`9/28/2010.
`Incontestable.
`Priority as of
`10/1/2008.
`Registered
`8/18/2015. Priority
`as of 12/31/1992.
`Registered
`8/18/2015. Priority
`as of 12/31/1992.
`Registered
`9/22/2015.
`
`

`

`
`
`Mark
`
`Reg. No.
`
`Description of Goods and Services
`
`computerized platform, including
`dedicated gaming consoles, video based
`slot machines, reel based slot machines,
`and video lottery terminals; interactive
`video game software; gaming software
`that generates or displays wager outcomes
`
`Class 28: Gaming machines, namely,
`devices which accept a wager;
`reconfigurable casino gaming equipment,
`namely, gaming machines and operational
`computer software therefor sold as a unit
`
`Class 41: Entertainment services,
`namely, providing computer games
`through a computer, social networking or
`mobile platform
`Class 28: Game cards; parlor games
`
`Class 24: Bed blankets; bed sheets; bed
`spreads; comforters; quilts; textile wall
`hangings
`
`MONOPOLY CASH
`GRAB
`
`5,729,518
`
`MONOPOLY
`
`5,728,055
`
`MONOPOLY
`
`MONOPOLY
`
`5,728,056
`
`Class 18: Backpacks, tote bags, book
`bags, hand bags, purses, luggage tags and
`wallets
`90,309,157 Class 25: Footwear; hats; headwear;
`pajamas; pants; shirts; sleepwear; socks;
`underwear; hoodies; sweatshirts; t-shirts
`
`Status and
`Priority Date
`Classes 9 and 28:
`Priority as of
`12/31/1998.
`Class 41: Priority as
`of 12/31/2004.
`
`Registered
`4/16/2019. Priority
`as of 3/21/2018.
`Registered
`4/5/2016.
`Priority as of
`2/19/2015.
`Registered 4/16/19.
`Priority as of
`2/19/2015.
`Filed 11/10/2020.
`Priority as of
`10/01/2001.
`
`
`Printouts of the TSDR Database records for the foregoing registrations are annexed hereto as
`
`Exhibit A.
`
`7.
`
`8.
`
`The MONOPOLY Registrations and Application are all valid and subsisting.
`
`Registrations Nos. 326,723, 338,834, 1,349,672, 1,634,214, 1,634,215, 1,536,501,
`
`2,654,349, 3,851,950, and 3,851,967 are incontestable within the meaning of 15 U.S.C. §§
`
`1115(b) and 1065. Those registrations constitute conclusive evidence of the validity of the
`
`subject marks thereof, the registrations therefor, and of Hasbro’s exclusive right to use those
`
`marks in connection with the goods and/or services set forth therein.
`
`9.
`
`Registrations Nos. 4,827,321, 4,819,122, 4,809,807, 4,796,523, 4,796,524,
`
`4,818,781, 5,728,056, 5,729,518, and 5,728,055 constitute prima facie evidence of the validity of
`
`4
`
`

`

`
`
`the subject marks thereof, the registrations therefor, and of Hasbro’s exclusive rights to use those
`
`marks in connection with the goods set forth in each of those registrations.
`
`10.
`
`Hasbro also owns an application for MONOPOLY in Class 25, Serial No.
`
`90/309,157, for “footwear; hats; headwear; pajamas; pants; shirts; sleepwear; socks; underwear;
`
`hoodies; sweatshirts; t-shirts”, based on use in commerce since October 1, 2001. A printout of
`
`the TSDR Database record for this application is annexed hereto as Exhibit B.
`
`11.
`
`Since its adoption and first use of the MONOPOLY trademark in 1935, Hasbro
`
`has devoted and continues to devote substantial time, money and effort in promoting its
`
`MONOPOLY Marks to identify Hasbro as the source of the goods and services.
`
`12.
`
`From 1934 to the present, Hasbro has sold more than 275 million sets of the
`
`MONOPOLY board game.
`
`13.
`
`From 2007 to the present, Hasbro’s sales of products under its MONOPOLY
`
`Marks worldwide have exceeded $3,000,000,000 (three billion) dollars.
`
`14.
`
`From 2014 to the present, Hasbro’s advertising expenditures worldwide for
`
`products sold under its MONOPOLY Marks have exceeded $30,000,000 (thirty million) dollars.
`
`15.
`
`The MONOPOLY board game is sold in over 43 languages in more than 100
`
`countries around the world.
`
`16.
`
`The MONOPOLY line has expanded to include entertainment services and related
`
`goods and services, including a television game show, specialized versions of the game, a card
`
`game, online games and digital games.
`
`17.
`
`The MONOPOLY brand has been the subject of widespread domestic and
`
`international media coverage throughout the past eighty-five (85) years, including during its 80th
`
`anniversary year in 2015.
`
`5
`
`

`

`
`
`18.
`
`The MONOPOLY game has been the subject of books and documentaries,
`
`including the Emmy award-winning documentary Under the Boardwalk: The MONOPOLY
`
`Story.
`
`19.
`
`The MONOPOLY board game was inducted into the National Toy Hall of Fame
`
`in 1998 (see http://www.toyhalloffame.org/toys/monopoly). It is widely acknowledged as the
`
`most popular and well-known board game in history.
`
`20.
`
`By virtue of Hasbro’s longstanding use, enormous sales and advertising
`
`expenditures, third party awards and unsolicited media coverage, the MONOPOLY Marks have
`
`developed substantial and valuable goodwill that belongs exclusively to Hasbro.
`
`21.
`
`Hasbro’s MONOPOLY trademark has become famous and is widely recognized
`
`by the general consuming public of the United States as a designation of the source of the goods
`
`and services of Hasbro.
`
`22.
`
`Hasbro is entitled to a broad scope of protection for its MONOPOLY Marks.
`
`23.
`
`On June 8, 2020, Applicant filed U.S. Trademark Application Ser. No.
`
`88/954,259 for the mark MONOPOLY OVER CHESS.
`
`24.
`
`The Challenged Application is based on an intent to use and covers “Dietary
`
`supplement drink mixes; Dietary supplemental drinks; Dietary supplemental drinks in the nature
`
`of vitamin and mineral beverages; Dietary supplements; Dietary and nutritional supplements;
`
`Dietary beverage supplements for human consumption in liquid and dry mix form for therapeutic
`
`purposes; Dietary food supplements; Anti-inflammatory ointments; Anti-itch ointment;
`
`Antibiotic ointments; Diet capsules; Herbal tinctures for medical purposes; Herbal male
`
`enhancement capsules; Homeopathic anti-inflammatory ointment; Medicated ointments for
`
`treating dermatological conditions; Medicated sunburn ointments; Medicinal preparations for the
`
`6
`
`

`

`
`
`mouth to be applied in the form of drops, capsules, tablets and compressed tablets; Mentholated
`
`ointment for medical use; Natural dietary supplements; Prescription and non-prescription
`
`medicines, namely, pills, tablets, capsules, caplets, liquid drops, sachets and pharmaceutical
`
`preparations for the treatment of cardiovascular disorders; all of the foregoing containing or
`
`derived solely from cannabis with a delta-9 THC concentration of not more than 0.3% on a dry
`
`weight basis, and none of the foregoing containing CBD” in Class 5, and “Clothing for women,
`
`men, and children, namely, shirts, tops, tank tops, t-shirt, blouses, dresses, pants, bottoms, shorts,
`
`sweatpants, sweatshirt, skirts, scarves, belts, gloves, jackets, hoodies, socks, hats, headbands,
`
`headwear, beanies, coats, and shoes” in Class 25.
`
`25.
`
`Applicant’s Mark incorporates the entirety of Hasbro’s MONOPOLY trademark.
`
`26.
`
`On information and belief, Applicant is not currently using Applicant’s mark in
`
`commerce.
`
`27.
`
`Hasbro’s rights in and to its MONOPOLY Marks are long prior to any rights
`
`Applicant may have in the United States with respect to Applicant’s Mark.
`
`COUNT I
`Likelihood of Confusion
`15 U.S.C. § 1052(d)
`
`28.
`
`Paragraphs 1-27 above are realleged and incorporated herein by reference as if set
`
`forth in full.
`
`29.
`
`Applicant’s Mark so resembles Hasbro’s MONOPOLY Marks as to be likely,
`
`when used in connection with Applicant’s services, to cause confusion, to cause mistake, or to
`
`deceive as to the affiliation, connection or association of Applicant and its services with Hasbro,
`
`or as to the origin, sponsorship or approval of Applicant and its services by Hasbro.
`
`30.
`
`Applicant’s Mark creates the same, or essentially the same, commercial
`
`impression as Hasbro’s MONOPOLY Marks and is similar thereto in sight, sound and meaning.
`
`7
`
`

`

`
`
`31.
`
`Applicant’s Mark will be used in connection with services that are sufficiently
`
`related to products offered by Hasbro and/or its licensees under the MONOPOLY Marks to
`
`create a likelihood of confusion under the circumstances described herein.
`
`32.
`
`On information and belief, services branded with Applicant’s Mark will be
`
`offered through some of the same channels of trade and to the same general class of purchasers
`
`as those through and to which Hasbro’s products sold under its MONOPOLY Marks are offered.
`
`33.
`
`Hasbro believes that it will be damaged by the registration of Applicant’s Mark
`
`because such registration would support and assist Applicant in the confusing and misleading use
`
`of the designation it seeks to register, and would give color of exclusive statutory rights to
`
`Applicant, in violation and derogation of the prior and superior rights of Hasbro.
`
`34.
`
`Applicant’s Mark so resembles Hasbro’s MONOPOLY Marks as to be likely,
`
`when used in connection with the services set forth in the Challenged Application to cause
`
`confusion, or to cause mistake, or to deceive under Section 2(d) of the Lanham Act, 15 U.S.C. §
`
`1052(d).
`
`COUNT II
`Likelihood of Dilution
`15 U.S.C. § 1125(c)
`
`35.
`
`Paragraphs 1-34 above are realleged and incorporated herein by reference as if set
`
`forth in full.
`
`36.
`
`Hasbro’s MONOPOLY word mark was famous within the meaning of 15 U.S.C.
`
`§ 1125(c) before the priority date asserted by Applicant in the Challenged Application.
`
`37.
`
`Hasbro’s MONOPOLY word mark was famous within the meaning of 15 U.S.C.
`
`§ 1125(c) long prior to any rights Applicant may have in the United States with respect to
`
`Applicant’s Mark.
`
`38.
`
`Applicant’s registration and use of Applicant’s Mark in connection with the
`
`8
`
`

`

`
`
`services set forth in the Challenged Application is likely to cause dilution of Hasbro’s
`
`MONOPOLY word mark in violation of Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c).
`
`WHEREFORE, Hasbro requests that the Challenged Application be refused registration
`
`on the basis of priority, likelihood of confusion and dilution, and that the Trademark Trial and
`
`Appeal Board grant such other relief as it deems just and proper.
`
`Please recognize as attorneys for Hasbro in this proceeding Catherine M.C. Farrelly and
`
`Diego Gomez (members of the Bar of the State of New York), and the law firm of Frankfurt
`
`Kurnit Klein & Selz, P.C., 28 Liberty Street, 35th Floor, New York, NY 10005.
`
`Kindly direct all correspondence to the attention of Catherine M.C. Farrelly via e-mail to
`
`cfarrelly@fkks.com and trademarks@fkks.com.
`
`Dated: October 25, 2021
`
`
`
`
`
`Respectfully Submitted,
`
`FRANKFURT KURNIT KLEIN & SELZ P.C.
`
`
`
`
`By: ____________________
` Catherine M.C. Farrelly
`
`Diego Gomez
`28 Liberty Street
`35th Floor
`New York, NY 10005
`Tel: 212.826.5579
`E: cfarrelly@fkks.com
` dgomez@fkks.com
` trademarks@fkks.com
`
`Attorneys for Opposer Hasbro, Inc.
`
`9
`
`

`

`EXHIBIT A
`
`

`

`Generated on: This page was generated by TSDR on 2021-10-25 14:38:50 EDT
`
`Mark: MONOPOLY
`
`US Serial Number: 71363230
`
`US Registration
`Number:
`
`326723
`
`Register: Principal
`
`Mark Type: Trademark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Mar. 30, 1935
`
`Registration Date: Jul. 30, 1935
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status: The registration has been renewed.
`
`Status Date: Jul. 11, 2015
`
` 
`
`Mark Information
`
`Mark Literal
`Elements:
`
`MONOPOLY
`
`Standard Character
`Claim:
`
`No
`
`Mark Drawing
`Type:
`
`1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
`
`Related Properties Information
`
`Publish Previously
`Registered Mark:
`
`Yes
`
`Previously
`Registered Mark
`Publication Date:
`
`Jul. 20, 1948
`
`Goods and Services
`
`Note:
`The following symbols indicate that the registrant/owner has amended the goods/services:
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: [ BOARD GAME PLAYED WITH MOVABLE PIECES ] * EQUIPMENT COMPRISING A BOARD AND MOVABLE PIECES FOR USE
`IN PLAYING A REAL ESTATE TRADING GAME *
`
`International
`Class(es):
`
`028
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`U.S Class(es): 022 - Primary Class
`
`First Use: Mar. 20, 1935
`
`Use in Commerce: Mar. 20, 1935
`
`Basis Information (Case Level)
`
`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`

`

`Filed 66A: No
`
`Filed No Basis: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: HASBRO, INC.
`
`Owner Address: 1027 NEWPORT AVENUE
`PAWTUCKET, RHODE ISLAND UNITED STATES 02862
`
`Legal Entity Type: CORPORATION
`
`State or Country
`Where Organized:
`
`RHODE ISLAND
`
`Attorney/Correspondence Information
`
`Correspondent
`Name/Address:
`
`HASBRO, INC.
`1027 Newport Avenue
`PAWTUCKET, RHODE ISLAND UNITED STATES 02861
`
`Phone: 401-727-5185
`
`Fax: 401-709-6448
`
`Attorney of Record - None
`
`Correspondent
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`May 11, 2018
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`
`Jul. 12, 2015
`
`NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
`
`Jul. 11, 2015
`
`REGISTERED AND RENEWED (FIFTH RENEWAL - 10 YRS)
`
`Jul. 11, 2015
`
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`
`Jul. 10, 2015
`
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`
`Jun. 17, 2015
`
`TEAS SECTION 8 & 9 RECEIVED
`
`Jun. 17, 2015
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`
`Jan. 22, 2009
`
`CASE FILE IN TICRS
`
`Apr. 18, 2006
`
`REGISTERED AND RENEWED (FOURTH RENEWAL - 10 YRS)
`
`Apr. 18, 2006
`
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`
`Jan. 11, 2006
`
`REGISTERED - COMBINED SECTION 8 (10-YR) & SEC. 9 FILED
`
`Apr. 14, 2006
`
`ASSIGNED TO PARALEGAL
`
`Jan. 11, 2006
`
`PAPER RECEIVED
`
`May 31, 2005
`
`PAPER RECEIVED
`
`May 30, 2005
`
`PAPER RECEIVED
`
`Dec. 12, 1995
`
`REGISTERED AND RENEWED (THIRD RENEWAL - 10 YRS)
`
`Oct. 16, 1995
`
`RESPONSE RECEIVED TO POST REG. ACTION
`
`Aug. 28, 1995
`
`REGISTERED - SEC. 9 FILED/CHECK RECORD FOR SEC. 8
`
`Jul. 30, 1975
`
`REGISTERED AND RENEWED (SECOND RENEWAL - 20 YRS)
`TM Staff and Location Information
`
`Current Location: GENERIC WEB UPDATE
`
`Date in Location: Jul. 11, 2015
`
`Assignment Abstract Of Title Information
`
`TM Staff Information - None
`
`File Location
`
`Summary
`
`Total Assignments: 15
`
`Assignment 1 of 15
`
`Registrant: PARKER BROTHERS, INC.
`
` 
`
`Conveyance: ASSIGNS THE ENTIRE INTEREST AND THE GOODWILL
`
`Reel/Frame: 0163/0062
`
`Pages: 4
`
`Proceeding
`Number
`
`67603
`
`67603
`
`67603
`
`68502
`
`68502
`
`

`

`Date Recorded: Jun. 04, 1968
`
`Supporting
`Documents:
`
`No Supporting Documents Available
`
`Name: PARKER BROTHERS, INC.
`
`Execution Date: Feb. 15, 1968
`
`Legal Entity Type: CORPORATION
`
`State or Country
`Where Organized:
`
`MAINE
`
`Name: ROBINSON VERRILL, ESQ.
`
`Execution Date: Feb. 15, 1968
`
`Assignor
`
`Legal Entity Type: UNKNOWN
`
`Name: PARKER BROTHERS, INC.
`
`Legal Entity Type: CORPORATION
`
`Address: 190 BRIDGE STREET
`SALEM, MASSACHUSETTS
`
`Correspondent
`Name:
`
`ROBERTS, CUSHMAN, ET AL.
`
`Correspondent
`Address:
`
`75 FEDERAL ST.
`BOSTON, MA 02110
`
`Conveyance: CHANGE OF NAME 19701231
`
`Reel/Frame: 0212/0187
`
`Date Recorded: Nov. 05, 1971
`
`Supporting
`Documents:
`
`No Supporting Documents Available
`
`State or Country
`Where Organized:
`
`Assignee
`
`No Place Where Organized Found
`
`State or Country
`Where Organized:
`
`NEVADA
`
`Correspondent
`
`Domestic Representative - Not Found
`
`Assignment 2 of 15
`
`Pages: 1
`
`Name: PARKER BROTHERS, INC.
`
`Execution Date: May 21, 1971
`
`Assignor
`
`Legal Entity Type: UNKNOWN
`
`Name: GENERAL MILLS FUN GROUP, INC.
`
`Legal Entity Type: UNKNOWN
`
`Address: No Assignee Address Found
`
`Correspondent
`Name:
`
`Correspondent
`Address:
`
`NIMS, HALLIDAY, ET AL.
`
`LINCOLN BLDG.
`60 EAST 42ND ST.
`NEW YORK, NY 10017
`
`State or Country
`Where Organized:
`
`Assignee
`
`No Place Where Organized Found
`
`State or Country
`Where Organized:
`
`No Place Where Organized Found
`
`Correspondent
`
`Domestic Representative - Not Found
`
`Assignment 3 of 15
`
`Conveyance: AFFIDAVIT BY ASSIGNOR SHOWING CHANGE OF ADDRESS.
`
`Reel/Frame: 0212/0188
`
`Date Recorded: Nov. 05, 1971
`
`Supporting
`Documents:
`
`No Supporting Documents Available
`
`Pages: 1
`
`Assignor
`
`Name: GENERAL MILLS FUN GROUP, INC.
`
`Execution Date: Sep. 30, 1971
`
`Legal Entity Type: CORPORATION
`
`State or Country
`Where Organized:
`
`NEVADA
`
`

`

`Name: GENERAL MILLS FUN GROUP, INC.
`
`Legal Entity Type: UNKNOWN
`
`Address: 9200 WAYZATA BLVD.
`MINNEAPOLIS, MINNESOTA 55440
`
`Correspondent
`Name:
`
`Correspondent
`Address:
`
`NIMS, HALLIDAY, ET AL.
`
`LINCOLN BLDG.
`60 EAST 42ND ST.
`NEW YORK, NY 10017
`
`Conveyance: MERGER 19780525DE
`
`Reel/Frame: 0338/0729
`
`Date Recorded: Nov. 24, 1978
`
`Supporting
`Documents:
`
`No Supporting Documents Available
`
`Assignee
`
`State or Country
`Where Organized:
`
`No Place Where Organized Found
`
`Correspondent
`
`Domestic Representative - Not Found
`
`Assignment 4 of 15
`
`Pages: 19
`
`Name: PALITOY, LIMITED
`
`Execution Date: Nov. 01, 1978
`
`Assignor
`
`Legal Entity Type: CORPORATION
`
`Name: GENERAL MILLS FUN GROUP, INC., -MERGED
`INTO-
`
`Legal Entity Type: CORPORATION
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Execution Date: Not Found
`
`State or Country
`Where Organized:
`
`NEVADA
`
`Name: GENERAL MILLS FUN GROUP, INC.
`
`Execution Date: Nov. 01, 1978
`
`Legal Entity Type: CORPORATION
`
`Name: GENERAL MILLS FUN GROUP, INC.
`
`Legal Entity Type: CORPORATION
`
`State or Country
`Where Organized:
`
`NEVADA
`
`Assignee
`
`State or Country
`Where Organized:
`
`NEVADA
`
`Address: No Assignee Address Found
`
`Name: TOM'S FOOD LTD.
`
`Legal Entity Type: CORPORATION
`
`Address: No Assignee Address Found
`
`Correspondent
`Name:
`
`GENERAL MILLS, INC.
`
`Correspondent
`Address:
`
`P.O. BOX 1113
`MINNEAPOLIS, MN 55440
`
`Conveyance: CHANGE OF NAME 19780927
`
`Reel/Frame: 0338/0748
`
`Date Recorded: Nov. 24, 1978
`
`Supporting
`Documents:
`
`No Supporting Documents Available
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Correspondent
`
`Domestic Representative - Not Found
`
`Assignment 5 of 15
`
`Pages: 3
`
`Name: TOM'S FOODS LTD.
`
`Execution Date: Nov. 01, 1978
`
`Assignor
`
`

`

`Legal Entity Type: CORPORATION
`
`Name: CPG PRODUCTS CORP.
`
`Legal Entity Type: UNKNOWN
`
`Address: No Assignee Address Found
`
`Correspondent
`Name:
`
`GENERAL MILLS, INC.
`
`Correspondent
`Address:
`
`P.O. BOX 1113
`MINNEAPOLIS, MN 55440
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Assignee
`
`State or Country
`Where Organized:
`
`No Place Where Organized Found
`
`Correspondent
`
`Domestic Representative - Not Found
`
`Assignment 6 of 15
`
`Conveyance: CERTIFIED COPY OF CHANGE OF NAME FILED IN THE OFFICE OF THE SECRETARY OF STATE OF DELAWARE ON AUG. 19,
`1985
`
`Reel/Frame: 0530/0074
`
`Date Recorded: Mar. 20, 1986
`
`Supporting
`Documents:
`
`No Suppor