Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1206245
`05/01/2022
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`91274034
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`Ilegal Mezcal, S.A.
`
`SARAH E. BRO
`MCDERMOTT WILL & EMERY LLP
`18565 JAMBOREE ROAD, SUITE 250
`IRVINE, CA 92612
`UNITED STATES
`Primary email: IPDocketOrangeCounty@mwe.com
`Secondary email(s): sbro@mwe.com, eatkins@mwe.com, kdel-
`coure@mwe.com, efarrahi@mwe.com, IPDocketMWE@mwe.com
`949-851-0633
`
`Other Motions/Submissions
`
`Abigail Rubinstein
`
`arubinstein@mwe.com, sbro@mwe.com, eatkins@mwe.com, IPDocketOrange-
`County@mwe.com, kdelcoure@mwe.com, efarrahi@mwe.com, IPDocketM-
`WE@mwe.com
`
`/Abigail Rubinstein/
`
`05/01/2022
`
`Declaration of Sarah Bro in support of opposition to motion.pdf(72677 bytes )
`Brief in Opposition to Motion to Set Aside Default.pdf(131303 bytes )
`Exhibit 1 - Opposition to Motion to Default.pdf(40449 bytes )
`Exhbit 2 - Opposition to Motion to Default.pdf(824659 bytes )
`Exhibit 3 to the Opposition to Motion of Default.pdf(853900 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`Opposer,
`
`
`
`
`----------------------------------------------------x
`Ilegal Mezcal, S.A.,
`,
`
`
`
`v.
`
`Illegal World Entertainment,
`
`Applicant.
`
`
`
`----------------------------------------------------x
`
`
`
`
`
`
`
`Opposition No. 91274034
`
`
`
`
`
`DECLARATION OF SARAH BRO
`
`
`
`
`I, Sarah Bro, declare under penalty of perjury under the laws of the United States of
`
`America that the following is true and correct:
`
`1.
`
`I am a partner in the firm of McDermott Will & Emery LLP. We represent Opposer,
`
`Ilegal Mezcal, S.A. I make this declaration in support of Opposer’s Opposition to Applicant’s
`
`Motion to Set Aside Default. The following facts are based upon my own personal knowledge.
`
`2.
`
`Attached hereto as Exhibit 1 is a true and correct printout of the TSDR record for
`
`Application Ser. No. 90325308 for ILLEGAL WORLD ENTERTAINMENT indicating that the
`
`Correspondent and Attorney of Record for the trademark application was and is Rosezena J
`
`Pierce, of the RJ Pierce Law Group PC, with an address of 205 N Michigan Ave Ste 810,
`
`Chicago, Illinois United States 60601.
`
`3.
`
`On January 6, 2022, Opposer, through its counsel, McDermott Will & Emery LLP wrote
`
`to counsel for Applicant regarding the trademark application for ILLEGAL WORLD
`
`ENTERTAINMENT. The correspondence was sent to the Attorney of Record for trademark
`
`application Ser. No. 90325308, Rosezena J. Pierce, and copied all of the email addresses listed in
`
`
`
`1
`
`

`

`the Correspondence section of the USPTO record for the application, including,
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`info@rjpiercelaw.com, rosezena@rjpiercelaw.com, sakeena@rjpiercelaw.com,
`
`legal@rjpiercelaw.com, and oscar@rjpiercelaw.com. The email states that it was sent at 12:48
`
`pm. Attached hereto as Exhibit 2 is a true and correct copy of the email sending the
`
`correspondence on January 6, 2022, as well as a copy of the correspondence attached to the
`
`email.
`
`3.
`
`On January 6, 2022, I received a response to the email sent to counsel for Applicant for
`
`Sarah Peterson, associate trademark attorney at the firm of RJ Pierce Law Group PC. The email
`
`from Sarah Peterson was sent at 2:29 p.m. and confirmed receipt of McDermott Will & Emery
`
`LLP’s January 6, 2022 correspondence, and stated that Attorney Peterson would forward the
`
`correspondence to her “client.” Attached hereto as Exhibit 3 is a copy of the email sent by Sarah
`
`Peterson on January 6, 2022, at 2:29 p.m.
`
`
`
`I declare pursuant to 28 U.S. Section 1746 and under penalty of perjury under the laws of
`
`the United States of America that the foregoing is true and correct.
`
`
`
`Dated: May 2, 2022
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`___/s/sarah e. bro_______________________
`Name: Sarah Bro
`Title: Partner, McDermott Will & Emery LLP
`
`
`
`2
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`Opposer,
`
`
`
`
`----------------------------------------------------x
`Ilegal Mezcal, S.A.,
`,
`
`
`
`v.
`
`Illegal World Entertainment,
`
`Applicant.
`
`
`
`----------------------------------------------------x
`
`
`
`
`
`
`
`Opposition No. 91274034
`
`
`
`
`
`OPPOSITION TO APPLICANT’S MOTION TO SET ASIDE DEFAULT
`
`Opposer, Ilegal Mezecal, S.A., (“Opposer”), by and through its attorneys, McDermott
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`Will & Emery LLP, submits this Memorandum to the Trademark Trial and Appeal Board
`
`(“TTAB” or the “Board”) in Opposition to Applicant’s Illegal World Entertainment’s
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`(“Applicant”) Motion to Set Aside Default. Opposer respectfully requests that the Board deny
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`Applicant’s Motion.
`
`I. INTRODUCTION
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`
`
`Applicant has failed to meet the standard to show good cause why default judgment
`
`should not be entered against it. Applicant merely submits an excuse that it was not able to
`
`obtain competent counsel for this matter. However, the facts show that Applicant was
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`represented by competent trademark counsel since the time it filed its trademark application on
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`November 17, 2020. Applicant was fully aware of this dispute and the Notice of Opposition, and
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`had competent trademark counsel to advise it, but Applicant willfully chose not to take any
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`action.
`
`
`
`
`
`1
`
`

`

`II. FACTS
`
`
`
`On November 17, 2020, Applicant filed a United States Trademark Application for
`
`ILLEGAL WORLD ENTERTAINMENT. The application was assigned Ser. No. 90325308.
`
`Applicant was represented by counsel in the filing of the subject application. The counsel
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`representing Applicant and the correspondent of record for the trademark application was
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`Rosezena J Pierce, of the RJ Pierce Law Group PC, with an address of 205 N Michigan Ave Ste
`
`810, Chicago, Illinois United States 60601. See TSDR Record for Application Ser. No.
`
`90325308 attached as Exhibit 1 to the Declaration of Sarah Bro.
`
`On January 6, 2022, Opposer wrote to counsel for Applicant regarding the trademark
`
`application for ILLEGAL WORLD ENTERTAINMENT. The correspondence was sent to the
`
`attorney of record for trademark application Ser. No. 90325308, Rosezena J. Pierce and copied
`
`all the email addresses listed in the correspondence section of the USPTO record for the
`
`application, including, info@rjpiercelaw.com rosezena@rjpiercelaw.com
`
`sakeena@rjpiercelaw.com legal@rjpiercelaw.com oscar@rjpiercelaw.com. The email states that
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`it was sent at 12:48 pm on January 6, 2022. See correspondence sent January 6, 2022 attached as
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`Exhibit 2 to Declaration of Sarah Bro ¶ 2.
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`Shortly after the email was sent, at 2:29 p.m. on January 6, 2022, Sarah Peterson,
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`associate trademark attorney at the firm of RJ Pierce Law Group PC responded to Opposer’s
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`email confirming receipt of the letter and that she would forward it to her “client”. See email
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`sent at 2:29 p.m. on January 6, 2022 from Sarah Peterson, attached as Exhibit 3, to the
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`Declaration of Sarah Bro.
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`Opposer notes that Sarah Peterson of the R.J. Pierce Law Group, is the same attorney that
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`filed the Motion to Set Aside Default on April 11, 2022. Accordingly, Applicant has been
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`
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`2
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`

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`represented by Sarah J. Peterson since at least January 6, 2022 in this matter. Applicant has been
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`fully aware of the need for trademark counsel in this dispute, since at least as early as January 6,
`
`2022. Moreover, Applicant has been represented by trademark counsel since it filed its
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`application on November 17, 2020. Applicant’s excuse that it needed to obtain competent legal
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`counsel is disingenuous and outright false, since it has been represented by competent trademark
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`counsel since at least as early as the filing date of the application, November 17, 2020 and
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`Applicant was represented by Sarah Peterson, the same attorney that filed the Motion to Set
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`Aside Default, on January 6, 2022 when Opposer sent its demand letter.
`
`III. ARGUMENT
`
`
`
`A. Standard to Set Aside Default
`
`In order to set aside a notice of default, a defendant who failed to file a timely answer
`
`must make a satisfactory showing of good cause for why default judgment should not be entered
`
`against it. TBMP § 312.02 citing Fed. R. Civ. P. 55(c).
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`“Good cause” is found when the defendant shows: (1) the delay in filing an answer was
`
`not the result of willful conduct or gross neglect on part of the defendant, (2) the plaintiff will not
`
`be substantially prejudiced by the delay, and (3) the defendant has a meritorious defense to the
`
`action. Id.
`
`A failure to make a sufficient showing on any one of these factors justifies the denial of
`
`the motion. See Robinson v. Bantam Books, Inc., 49 F.R.D. 139, 141 (S.D.N.Y. 1970) (denying
`
`motion on the ground that it fails to meet the requirements of Fed. R. Civ. P. 55(c) as defendants
`
`did not demonstrate a “meritorious defense”); DeLorme Publ'g Co. v. Eartha's Inc., 60
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`U.S.P.Q.2d (BNA) 1222, 1224 (T.T.A.B. 2000) (denying applicant's motion to reopen the time
`
`allowed to answer and granting opposer's motion for default judgment even though opposer
`
`
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`3
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`

`

`experienced no prejudice and applicant had a meritorious defense, but applicant's delay was
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`found to be the “result of applicant's willful conduct and gross neglect”); El Encanto, Inc. v. SOS
`
`Arana Alimentacion, S.A., 2001 WL 531176, at *6-11, Opposition No. 116,557 (T.T.A.B. 2001)
`
`(denying applicant's motion to set aside default judgment because the default was “clearly willful
`
`and not a mistake,” even after considering the promptness in which applicant filed its motion to
`
`set aside and finding that there was no prejudice and applicant had meritorious defense).
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`B.
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`The Delay in Filing Was Willful Conduct or Gross Neglect
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`Here, Applicant states in its motion “Applicant was not able to obtain competent counsel
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`for both financial and practical reasons. Applicant lost track of the deadline to respond in the
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`time he was able to financially seek counsel and was not aware that the same had passed until the
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`default notice.”
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`Applicant was represented by competent trademark counsel when it filed the application
`
`at issue. Applicant continued to be represented by competent trademark counsel when Opposer
`
`sent its demand letter on January 6, 2022. Sarah Peterson, the same attorney who filed the
`
`present motion, responded to Opposer’s letter and stated she would forward the letter to her
`
`“client.” Therefore, the Applicant was represented by competent trademark counsel when the
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`Opposition was filed on January 19, 2022. Applicant’s excuse that it was not able to obtain
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`competent counsel is patently false and its delay in filing an answer is clearly willful conduct or
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`at the least gross neglect.
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`Applicant’s trademark counsel was aware of the dispute between the parties as a result of
`
`the January 6, 2022 letter sent by Opposer. Then Applicant’s counsel received the Notice of
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`Opposition from the Board on January 19, 2022 (the Board’s Notice was addressed to
`
`“ROSEZENA J. PIERCE, ESQ.; R.J. PIERCE LAW GROUP, P.C”). Applicant does not claim
`
`
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`4
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`

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`it was not aware of the Opposition, just that it lost track of the deadline. Presumably,
`
`Applicant’s trademark counsel was fully aware of the deadlines in this proceeding. Applicant
`
`chose not to act despite being aware of the opposition. Applicant did not file an Answer, it did
`
`not ask for an extension, and it did not file a motion to extend time to file an Answer. It did
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`nothing, despite the fact that Applicant had competent trademark counsel who is familiar with
`
`TTAB procedure. The facts here indicate that Applicant consciously chose to ignore the
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`Opposition, despite being represented by competent trademark counsel. Therefore, Applicant
`
`clearly acted willfully or with gross neglect.
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`
`
`
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`C. Applicant Has Not Submitted A Meritorious Defense to the Action
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`Moreover, Applicant has not submitted a meritorious defense to the action. It did not
`
`submit an Answer to the Opposition in connection with its Motion to Set Aside Default, nor has
`
`Applicant asked the Board to reset the time to Answer in its Motion.
`
`To determine whether a party has a meritorious defense, the defaulting party need not
`
`establish that there is a likelihood that it ‘will carry the day.”’ El Encanto, 2001 WL 531176, at
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`*2 (quoting Enron Oil Corp. v. Diakuhara, 10 F.3d 90, 98 (2d Cir. 1993). However, the party
`
`must show that “the evidence submitted, if proven at trial, would constitute a complete defense.”
`
`Id. (emphasis added). See also Advanced Commc'n Design, Inc. v. Premier Retail Networks, Inc.,
`
`46 Fed. Appx. 964, 973 (Fed. Cir. 2002) (stating in a patent infringement case that “in the Rule
`
`55(c) context … a meritorious defense means that the evidence or argument proffered by the
`
`defaulting party could reasonably lead to a finding in the defaulting party's favor”).
`
`Here, the Applicant has not mentioned any meritorious defense to the action. Applicant
`
`has not even asked for the Board to reset the time to Answer. Applicant seems to assume that
`
`because there is a policy to decide cases on the merits, that if it just submits a plausible excuse
`
`
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`5
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`

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`then the Board will set aside the Notice of Default. However, that is not the case. The Board has
`
`discretion in determining whether or not good cause has been shown. TBMP § 312.02. The
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`Board does recognize “entry of default judgment may be necessary in some cases.” Id.
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`Clearly, here where there is willful conduct and gross neglect, in addition to the absence
`
`of a meritorious defense, the Board should recognize that entry of a default judgement is
`
`necessary in this case.
`
`
`
`D. The Motion Is Without Any Factual Support
`
`In addition, the motion is without sufficient factual support. A motion to relieve a party
`
`from default should be supported by affidavits or declarations setting forth in sufficient detail
`
`why Applicant did not file a timely response and why Applicant should be excused from its
`
`negligence in responding on time. The affidavits or declarations should be signed by people with
`
`knowledge of the facts. The reasons provided must amount to “good cause” to excuse the failure
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`to file a timely response and must show that the defaulting party is did not engage in an
`
`intentional or willful decision not to file, or that the failure to file was not gross neglect. Here,
`
`Applicant's motion makes clear that Applicant knew about the Notice of Opposition but just “lost
`
`track of the deadline.” Applicant offers no reason why it did not file an answer before the due
`
`date or seek more time to respond. Nor has Applicant presented a single declaration or affidavit.
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`The failure to explain why the answer was not filed timely, and the failure to explain it in an
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`affidavit or declaration from a person with actual knowledge should result in denial of the
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`motion.
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`6
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`

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`
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`IV. CONCLUSION
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`For all of the reasons set forth above, Applicant fails to show good cause why the Board
`
`should set aside the Notice of Default. Given Applicant's willful and/or grossly negligent failure
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`to file a timely response, and Applicant's failure to establish a meritorious defense to this action,
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`the Board should deny Applicant's Motion and enter a default judgment against Applicant.
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`Respectfully submitted,
`
`Date: May 1, 2022
`
`By:
`
`ILEGAL MEZCAL, S.A.
`
`
`
`
`/Sarah E. Bro /
`Attorneys for Opposer
`Sarah E. Bro
`Eleanor B. Atkins
`Abigail Rubinstein
`McDERMOTT WILL & EMERY
`LLP
`18565 Jamboree Rd., Suite 250
`Irvine, California 92612
`
`949.851.0633 (telephone)
`949.851.9348 (facsimile)
`sbro@mwe.com
`IPDocketOrangeCounty@mwe.com
`eatkins@mwe.com
`arubinstein@mwe.com
`
`
`
`
`
`7
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`

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`EXHIBIT 1
`EXHIBIT 1
`
`

`

`Generated on: This page was generated by TSDR on 2022-05-01 14:31:25 EDT
`
`Mark:
`
`ILLEGAL WORLD ENTERTAINMENT
`
`US Serial Number: 90325308
`
`Filed as TEAS
`Plus:
`
`Yes
`
`Register: Principal
`
`Mark Type: Service Mark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Nov. 17, 2020
`
`Currently TEAS
`Plus:
`
`Yes
`
`LIVE/APPLICATION/Opposition Pending
`
`The pending trademark application has been examined by the Office and was
`published for opposition, at which time one or more oppositions were filed but
`they have not yet been decided.
`
`Status: An opposition after publication is pending at the Trademark Trial and Appeal Board. For further information, see TTABVUE on the
`Trademark Trial and Appeal Board web page.
`
`Status Date: Jan. 19, 2022
`
`Publication Date:Sep. 21, 2021
` 
`
`Mark Information
`
`ILLEGAL WORLD ENTERTAINMENT
`
`Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
`
`4 - STANDARD CHARACTER MARK
`
`Mark Literal
`Elements:
`
`Standard Character
`Claim:
`
`Mark Drawing
`Type:
`
`Disclaimer: "WORLD ENTERTAINMENT"
`
`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: Arranging, organizing, conducting, and hosting social entertainment events; Audio recording and production; Audio and video recording
`services; Entertainment services in the nature of arranging social entertainment events; Entertainment services in the nature of
`development, creation, production and post-production services of multimedia entertainment content; Entertainment services in the
`nature of hosting social entertainment events; Entertainment services in the nature of organizing social entertainment events;
`Entertainment services in the nature of production of live musical performances, sound recordings, video recordings; Entertainment
`services, namely, dance events by a recording artist; Entertainment services, namely, providing non-downloadable playback of music
`via global communications networks; Entertainment services, namely, providing ongoing webisodes featuring live musical
`performances, musical artists, non-downloadable sound recordings, non-downloadable video recordings, and information about
`performers, artists, and people in the entertainment and music industries via a global computer network; Entertainment services,
`namely, providing podcasts in the field of live musical performances, musical artists, performers, artists, and people in the
`entertainment and music industries; Entertainment services, namely, providing video podcasts in the field of live musical performances,
`musical artists, performers, artists, and people in the entertainment and music industries; Entertainment services, namely, providing
`virtual environments in which users can interact for recreational, leisure or entertainment purposes; Entertainment services, namely,
`providing webcasts in the field of live musical performances, musical artists, performers, artists, and people in the entertainment and
`music industries; Entertainment media production services for the internet; Entertainment services in the nature of hosting social
`entertainment events featuring live musical performances; Multimedia entertainment services in the nature of development, production
`and post-production services in the fields of video and films; Music composition and transcription for others; Music composition for
`others; Music composition services; Music production services; Music publishing services; Music selection services for use in
`television, film, radio and video games; Music transcription for others; Music video production; Musical event booking agencies;
`Musical floor shows provided at performance venues; On-line journals, namely, blogs featuring live musical performances, musical
`
`

`

`artists, non-downloadable sound recordings, non-downloadable video recordings, and information about performers, artists, and people
`in the entertainment and music industries; On-line video journals, namely, vlogs featuring non-downloadable videos in the field of live
`musical performances, musical artists, non-downloadable sound recordings, non-downloadable video recordings, and information
`about performers, artists, and people in the entertainment and music industries; Production of sound recordings; Recording studio
`services; Recording studios; Sound recording studios; Videotape production; Workshops and seminars in the field of live musical
`performances, musical artists, performers, artists, and people in the entertainment and music industries; Business training in the field of
`organizing and conducting live musical performances, in the entertainment and music industries; Composition of music for others;
`Conducting workshops and seminars about live musical performances, musical artists, sound recording, video recordings, performers,
`artists, and people in the entertainment and music industries; Consultation and advice regarding musical selections and arrangements
`for sound recordings and live performances; Educational services, namely, conducting on line and telephonic instruction and courses in
`the field music; Educational services, namely, conducting workshops in the field of black music; Educational services, namely,
`providing online instruction in the field of music via an online website; Entertainment and educational services, namely, the
`presentation of seminars, workshops and panel discussions, and ongoing television and radio shows all in the field of music;
`Entertainment in the nature of an ongoing special variety, news, music or comedy show featuring live musical performances, musical
`artists, and information about performers, artists, and people in the entertainment and music industries broadcast over television,
`satellite, audio, and video media; Entertainment information services, namely, providing information and news releases about a musical
`artist; Entertainment services by a musical artist and producer, namely, musical composition for others and production of musical
`sound recordings; Entertainment services in the nature of live musical performances; Entertainment services in the nature of live audio
`performances by musical artists; Entertainment services in the nature of live visual and audio performances by musical artists;
`Entertainment services in the nature of live visual and audio performances, namely, musical band, rock group, gymnastic, dance, and
`ballet performances; Entertainment services in the nature of live visual and audio performances, namely, musical, variety, news and
`comedy shows; Entertainment services in the nature of live vocal performances by musical artists; Entertainment services in the nature
`of live musical performances; Entertainment services in the nature of presenting live musical performances; Entertainment services in
`the nature of recording, production and post-production services in the field of music; Entertainment services, namely, non-
`downloadable ringtones, pre-recorded music, and graphics presented to mobile communications devices via a global computer
`network and wireless networks; Entertainment services, namely, providing advice and information for music, video and film concept
`and script development; Entertainment services, namely, providing non-downloadable prerecorded music, information in the field of
`music, and commentary and articles about music, all on-line via a global computer network; Entertainment services, namely, providing
`on-line reviews of live musical performances, musical artists, sound recordings, video recordings, performers, artists, and people in the
`entertainment and music industries; Entertainment services, namely, the presentation of live Christmas musical productions;
`Entertainment, namely, live music concerts; Entertainment, namely, live performances by musical bands; Entertainment, namely, live
`performances by a musical band; Live musical theater performances; Live performances by a musical group; Multimedia entertainment
`services in the nature of recording, production and post-production services in the fields of music, video, and films; Organization of
`exhibitions for musical entertainment; Peer to peer coaching services in the field of performing live music; Planning arrangement of
`showing movies, shows, plays or musical performances; Post-production editing of live musical performances, musical artists, sound
`recording, video recordings, performers, artists, and people in the entertainment and music industries; Post-production editing services
`in the field of music, videos and film; Presentation of musical performances; Production of music; Production of musical sound
`recording; Production of musical videos; Production of sound and music video recordings; Providing a website featuring entertainment
`information in the field(s) of live musical performances, musical artists, sound recording, video recordings, performers, artists, and
`people in the entertainment and music industries; Providing a website featuring information in the field of music and entertainment;
`Providing an Internet website portal featuring entertainment news and information specifically in the field of live musical performances,
`musical artists, sound recording, video recordings, performers, artists, and people in the entertainment and music industries; Providing
`an Internet website portal in the field of music; Providing information in the field of music by means of an Internet website portal;
`Providing on-line music, not downloadable; Providing on-line videos featuring live musical performances, musical artists, non-
`downloadable sound recordings, non-downloadable video recordings, information about performers, artists, and people in the
`entertainment and music industries, not downloadable; Provision of information relating to music; Publication of musical texts;
`Publishing of books, e-books, audio books, music and illustrations; Radio entertainment production; Rental of musical recordings that
`may be downloaded from an Internet web site; Rental of facilities and equipment for the production of radio and television programs,
`musical and theatrical productions, namely, performance venues, studios, sets, dressing rooms; Teaching in the field of music and
`musical performances in the entertainment and music industries; Theatrical and musical floor shows provided at discotheques and
`nightclubs; Theatrical and musical floor shows provided at performance venues
`
`International
`Class(es):
`
`041 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`U.S Class(es): 100, 101, 107
`
`First Use: Aug. 13, 2020
`
`Use in Commerce: Aug. 13, 2020
`
`Basis Information (Case Level)
`
`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Filed No Basis: No
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: Illegal World Entertainment
`
`Owner Address: 10894 W Alvarado Rd
`
`

`

`Avondale, ARIZONA UNITED STATES 85392
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`State or Country
`Where Organized:
`
`ARIZONA
`
`Attorney/Correspondence Information
`
`Attorney Name: ROSEZENA J PIERCE
`
`Attorney Primary
`Email Address:
`
`info@rjpiercelaw.com
`
`Correspondent
`Name/Address:
`
`ROSEZENA J PIERCE
`RJ PIERCE LAW GROUP PC
`205 N MICHIGAN AVE STE 810
`CHICAGO, ILLINOIS UNITED STATES 60601
`
`Phone: 312-973-3872
`
`Attorney of Record
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Correspondent e-
`mail:
`
`info@rjpiercelaw.com rosezena@rjpiercelaw.com
`sakeena@rjpiercelaw.com legal@rjpiercelaw.com
`oscar@rjpiercelaw.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`Jan. 19, 2022
`
`OPPOSITION INSTITUTED NO. 999999
`
`Nov. 29, 2021
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`
`Nov. 29, 2021
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`
`Nov. 29, 2021
`
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`
`Oct. 19, 2021
`
`EXTENSION OF TIME TO OPPOSE RECEIVED
`
`Sep. 21, 2021
`
`OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
`
`Sep. 21, 2021
`
`PUBLISHED FOR OPPOSITION
`
`Sep. 01, 2021
`
`NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
`
`Aug. 17, 2021
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`Aug. 17, 2021
`
`EXAMINER'S AMENDMENT ENTERED
`
`Aug. 17, 2021
`
`NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED
`
`Aug. 17, 2021
`
`EXAMINERS AMENDMENT E-MAILED
`
`Aug. 17, 2021
`
`EXAMINERS AMENDMENT -WRITTEN
`
`Aug. 05, 2021
`
`TEAS/EMAIL CORRESPONDENCE ENTERED
`
`Aug. 05, 2021
`
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`
`Aug. 05, 2021
`
`TEAS RESPONSE TO OFFICE ACTION RECEIVED
`
`May 03, 2021
`
`NOTIFICATION OF NON-FINAL ACTION E-MAILED
`
`May 03, 2021
`
`NON-FINAL ACTION E-MAILED
`
`May 03, 2021
`
`NON-FINAL ACTION WRITTEN
`
`Apr. 29, 2021
`
`TEAS VOLUNTARY AMENDMENT RECEIVED
`
`Apr. 27, 2021
`
`ASSIGNED TO EXAMINER
`
`Jan. 19, 2021
`
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
`
`Nov. 20, 2020
`
`NEW APPLICATION ENTERED IN TRAM
`TM Staff and Location Information
`
`TM Attorney: EVANKO, PATRICIA MALES
`
`TM Staff Information
`
`Law Office
`Assigned:
`
`LAW OFFICE 119
`
`File Location
`
`Current Location: PUBLICATION AND ISSUE SECTION
`
`Date in Location: Aug. 18, 2021
`
`Proceedings
`
`Proceeding
`Number
`
`274034
`
`88888
`
`6328
`
`6328
`
`68603
`
`88889
`
`88889
`
`6325
`
`6325
`
`68603
`
`68603
`
`

`

`Summary
`
`Number of
`Proceedings:
`
`2
`
`Proceeding
`Number:
`
`91274034
`
`Status: Suspended
`
`Interlocutory
`Attorney:
`
`KEVIN G CRENNAN
`
`Type of Proceeding: Opposition
`
` 
`
`Filing Date: Jan 19, 2022
`
`Status Date: Mar 11, 2022
`
`Defendant
`
`Name:
`
`Illegal World Entertainment
`
`Correspondent
`Address:
`
`ROSEZENA J PIERCE
`RJ PIERCE LAW GROUP PC
`205 N MICHIGAN AVE STE 810
`CHICAGO IL UNITED STATES , 60601
`
`info@rjpiercelaw.com , rosezena@rjpiercelaw.com , sakeena@rjpiercelaw.com , legal@rjpiercelaw.com , oscar@rjpiercelaw.com
`
`Serial
`Number
`
`90325308
`
`Registration
`Number
`
`Correspondent e-
`mail:
`
`Associated marks
`
`Mark
`
`Application Status
`
`ILLEGAL WORLD ENTERTAINMENT
`
`Opposition Pending
`
`Plaintiff(s)
`
`Name:
`
`Ilegal Mezcal, S.A.
`
`Correspondent
`Address:
`
`SARAH E. BRO
`MCDERMOTT WILL & EMERY LLP
`18565 JAMBOREE ROAD, SUITE 250
`IRVINE CA UNITED STATES , 92612
`
`Correspondent e-
`mail:
`
`IPDocketOrangeCounty@mwe.com , sbro@mwe.com , eatkins@mwe.com , kdelcoure@mwe.com , efarrahi@mwe.com , IPDocketMW
`E@mwe.com
`
`Associated marks
`
`Mark
`
`THE ILEGAL MUSIC SERIES
`
`ILEGAL MEZCAL
`
`Entry Number
`
`History Text
`
`Application Status
`
`Registered
`
`REGISTERED AND RENEWED
`
`Prosecution History
`
`7
`
`6
`
`5
`
`4
`
`3
`
`2
`
`1
`
`D APPEARANCE / POWER OF ATTORNEY
`
`MOT FOR RELIEF FROM ENTRY OF DEFAULT JUDGMENT
`
`D APPEARANCE / POWER OF ATTORNEY
`
`NOTICE OF DEFAULT
`
`INSTITUTED
`
`NOTICE AND TRIAL DATES SENT; ANSWER DUE:
`
`FILED AND FEE
`
`Serial
`Number
`
`86836824
`
`78858039
`
`Registration
`Number
`
`5002750
`
`3732868
`
`Due Date
`
`Feb 28, 2022
`
`Date
`
`Apr 11, 2022
`
`Apr 11, 2022
`
`Apr 11, 2022
`
`Mar 11, 2022
`
`Jan 19, 2022
`
`Jan 19, 2022
`
`Jan 19, 2022
`
`Proceeding
`Number:
`
`90325308
`
`Status: Terminated
`
`Interlocutory
`Attorney:
`
`Type of Proceeding: Extension of Time
`
`Filing Date: Oct 19, 2021
`
`Status Date: Jan 19, 2022
`
`Defendant
`
`Name:
`
`Illegal World Entertainment
`
`Correspondent
`Address:
`
`ROSEZENA J. PIERCE, ESQ.
`R.J. PIERCE LAW GROUP, P.C.
`200 W. MADISON, SUITE 2100
`CHICAGO IL UNITED STATES , 60606
`
`Correspondent e-
`mail:
`
`rosezena@rjpiercelaw.com , info@rjpiercelaw.com , sarah@rjpiercelaw.com , oscar@rjpiercelaw.com , legal@rjpiercelaw.com
`
`

`

`Associated marks
`
`Mark
`
`Application Status
`
`ILLEGAL WORLD ENTERTAINMENT
`
`Opposition Pending
`
`Potential Opposer(s)
`
`Name:
`
`Ilegal Mezcal, S.A.
`
`Correspondent
`Address:
`
`SARAH E. BRO
`MCDERMOTT WILL & EMERY LLP
`18565 JAMBOREE ROAD, SUITE 250
`IRVINE CA UNITED STATES , 92612
`
`Serial
`Number
`
`90325308
`
`Registration
`Number
`
`Correspondent e-
`mail:
`
`IPDocketOrangeCounty@mwe.com , sbro@mwe.com , eatkins@mwe.com , kdelcoure@mwe.com , efarrahi@mwe.com , IPDocketMW
`E@mwe.com
`
`Associated marks
`
`Mark
`
`Application Status
`
`Serial Number
`
`Prosecution History
`
`Entry Number
`
`History Text
`
`EXT GRANTED
`
`FIRST 90-DAY REQUEST TO EXT TIME TO OPPOSE
`
`2
`
`1
`
`Date
`
`Oct 19, 2021
`
`Oct 19, 2021
`
`Registration
`Number
`
`Due Date
`
`

`

`
`
`
`
`EXHIBIT 2
`EXHIBIT 2
`
`

`

`Rubinstein, Abigail
`From:
`Sent:
`To:
`
`Cc:
`Subject:
`
`Attachments:
`
`Farrahi, Emily
`Thursday, January 6, 2022 1:49 PM
`rosezena@rjpiercelaw.com; info@rjpiercelaw.com; sarah@rjpiercelaw.com;
`oscar@rjpiercelaw.com; legal@rjpiercelaw.com
`Bro, Sarah; Atkins, Eleanor; IP Docket Orange County
`Application for ILLEGAL WORLD ENTERTAINMENT, TM App. No. 90325308 (Our Ref:
`092659-0195)
`092659-0195.pdf
`
`Dear