Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1305085
`08/21/2023
`
`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
`
`Harpo, Inc.
`
`08/20/2023
`
`2029 CENTURY PARK EAST, SUITE 1530N
`LOS ANGELES, CA 90067
`UNITED STATES
`
`LINDSEY M. SADLER
`DORSEY & WHITNEY LLP
`1400 WEWATTA STREET, SUITE 400
`DENVER, CO 80202
`UNITED STATES
`Primary email: NY.Trademark@dorsey.com
`Secondary email(s): Provencio.Angela@dorsey.com,
`Sadler.Lindsey@dorsey.com, krogh.charlene@dorsey.com
`303.352.1161
`
`Docket no.
`
`517727-00009
`
`Applicant information
`
`Application no.
`
`97040301
`
`Opposition filing
`date
`
`Applicant
`
`08/21/2023
`
`Kyles Maynard, Kyna
`1712 W. MAIN STREET
`LEBANON, TN 37087
`UNITED STATES
`
`Goods/services affected by opposition
`
`Publication date
`
`02/21/2023
`
`Opposition period
`ends
`
`08/20/2023
`
`Class 041. First Use: May 30, 2021 First Use In Commerce: May 30, 2021
`All goods and services in the class are opposed, namely: Conducting community festivals featuring a
`variety of activities, namely, contests, live music entertainment, and games, and featuring vendor
`booths related to general consumer merchandise; Organizing community cultural events; Organizing
`social entertainment festivals for cultural purposes; Organizing and hosting of events for cultural pur-
`poses; Organizing community festivals for cultural or entertainment purposes; Organizing community
`festivals featuring live music performances entertainment and also providing vendor booths related to
`food, beverages, clothing, household products and accessories, art, books, crafts, candles, general
`consumer merchandise, and games from local businesses; Entertainment services, namely, organiz-
`ing community fairs featuring live music entertainment and also providing vendor booths related to
`food, beverages, entertainment, clothing, household products and accessories, art, books, crafts,
`candles, general consumer merchandise, and games
`
`

`

`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Marks cited by opposer as basis for opposition
`
`U.S. registration
`no.
`
`4566370
`
`Register
`
`Principal
`
`Registration date
`
`07/15/2014
`
`Application date
`
`04/09/2013
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`SUPER SOUL SUNDAY
`
`NONE
`
`Class 041. First use: First Use: Aug 2011 First Use In Commerce: Aug 2011
`Entertainment services, namely, television programming services; Entertainment
`services, namely, ongoing television segments and shows in the fields of gener-
`al interest, human behavior, relationships, religion, faith, spirituality, wellness
`and conscious living, personal fulfillment, personal growth and motivation;
`providing information via the Internet relating to the foregoing; non-
`downloadable electronic newsletters and online journals, namely, blogs, all in
`the fields of general interest, human behavior, relationships, religion, faith, spir-
`ituality, wellness and conscious living, personal fulfillment, personal growth and
`motivation
`
`U.S. registration
`no.
`
`4516203
`
`Register
`
`Principal
`
`Registration date
`
`04/15/2014
`
`Application date
`
`04/09/2013
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`SUPER SOUL SUNDAY
`
`NONE
`
`Class 035. First use: First Use: Oct 16, 2011 First Use In Commerce: Oct 16,
`2011
`Promotional activities, namely, promoting the books of featured authors, in the
`fields of general interest, human behavior, relationships, religion, faith, spiritual-
`ity, wellness and conscious living, personal fulfillment, personal growth and mo-
`tivation
`
`U.S. registration
`no.
`
`5697512
`
`Register
`
`Principal
`
`Registration date
`
`03/12/2019
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`SUPER SOUL SESSIONS
`
`NONE
`
`Application date
`
`04/23/2014
`
`Foreign priority
`date
`
`NONE
`
`

`

`Goods/services
`
`Class 038. First use: First Use: Sep 12, 2015 First Use In Commerce: Sep 12,
`2015
`Streaming of audio and visual content via the internet and global and local com-
`puter networks in the fields of human behavior, relationships, religion, faith, spir-
`ituality, wellness and conscious living, personal fulfillment, personal growth and
`motivation
`Class 041. First use: First Use: Sep 12, 2015 First Use In Commerce: Sep 12,
`2015
`Entertainment services, namely, television programming services; Entertainment
`services, namely, ongoing television segments and shows in the fields of human
`behavior, relationships, religion, faith, spirituality, wellness and conscious living,
`personal fulfillment, personal growth and motivation
`
`U.S. registration
`no.
`
`6569729
`
`Register
`
`Principal
`
`Registration date
`
`11/23/2021
`
`Application date
`
`01/11/2019
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`SUPER SOUL SESSIONS
`
`NONE
`
`Class 041. First use: First Use: Sep 12, 2015 First Use In Commerce: Sep 12,
`2015
`Conducting educational programs, classes, seminars, workshops in the fields of
`human behavior, relationships, religion, faith, spirituality, wellness and conscious
`living, personal fulfillment, personal growth and motivation
`
`U.S. registration
`no.
`
`5642150
`
`Register
`
`Principal
`
`Registration date
`
`01/01/2019
`
`Application date
`
`05/04/2018
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`OPRAH'S SUPER SOUL CONVERSATIONS
`
`NONE
`
`Class 041. First use: First Use: Jul 27, 2017 First Use In Commerce: Jul 27,
`2017
`Entertainment services, namely, providing podcasts in the field of human beha-
`vior, relationships, religion, faith, spirituality, wellness and conscious living, per-
`sonal fulfillment, personal growth and motivation
`
`Attachments
`
`Notice of Opposition - SUNDAY SOUL 97040301.pdf(134596 bytes )
`
`Signature
`
`/LINDSEY M. SADLER/
`
`Name
`
`Date
`
`LINDSEY M. SADLER
`
`08/21/2023
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 97040301: SUNDAY SOUL
`Published in the Official Gazette of Feb. 21, 2023
`
`Harpo, Inc.,
`
`
`
`Opposer,
`
`Opposition No.
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`v.
`
`
`
`Kyna Kyles Maynard,
`
`
`
`Applicant.
`
`
`
`
`NOTICE OF OPPOSITION
`
`Harpo, Inc. (“Opposer”), an Illinois corporation, located and doing business at
`
`2029 Century Park East, Suite 1530N, Los Angeles, CA 90067, believes it will be damaged by
`
`the registration of the mark SUNDAY SOUL in International Class 041 for “Conducting community
`
`festivals featuring a variety of activities, namely, contests, live music entertainment, and games,
`
`and featuring vendor booths related to general consumer merchandise; Organizing community
`
`cultural events; Organizing social entertainment festivals for cultural purposes; Organizing and
`
`hosting of events for cultural purposes; Organizing community festivals for cultural or
`
`entertainment purposes; Organizing community festivals featuring live music performances
`
`entertainment and also providing vendor booths related to food, beverages, clothing, household
`
`products and accessories, art, books, crafts, candles, general consumer merchandise, and
`
`games from local businesses; Entertainment services, namely, organizing community fairs
`
`featuring live music entertainment and also providing vendor booths related to food, beverages,
`
`entertainment, clothing, household products and accessories, art, books, crafts, candles, general
`
`consumer merchandise, and games” in Application Serial No. 97040301 (the “Application”),
`
`owned by Kyna Kyles Maynard (“Applicant”), and hereby opposes the same.
`
`4872-8034-0857\1
`
`1
`
`

`

`
`
`As grounds for this opposition, Opposer alleges:
`
`1.
`
`Opposer provides entertainment, promotions, and/or telecommunications services
`
`under the mark SUPER SOUL SUNDAY, and others.
`
`2.
`
`Since at least as early as 2011 and long prior to the filing of Applicant’s Application
`
`Serial No. 97040301, Opposer has provided entertainment, promotions, and/or
`
`telecommunications services, under the mark SUPER SOUL SUNDAY, and others with its
`
`attendant trade dress, logos, and designs (the “SUPER SOUL Marks”).
`
`3.
`
`In addition to common law rights, Opposer owns registrations for its SUPER SOUL
`
`Marks with the United States Patent and Trademark Office (“USPTO”), including, but not limited
`
`to:
`
`Mark
`
`Reg. No. Goods/Services
`
`SUPER SOUL
`SUNDAY
`
`4566370
`
`SUPER SOUL
`SUNDAY
`
`4516203
`
`SUPER SOUL
`SESSIONS
`
`5697512
`
`Class 041 - Entertainment services, namely, television
`programming services; Entertainment services, namely,
`ongoing television segments and shows in the fields of
`general interest, human behavior, relationships, religion,
`faith, spirituality, wellness and conscious living, personal
`fulfillment, personal growth and motivation; providing
`information via the Internet relating to the foregoing; non-
`downloadable electronic newsletters and online journals,
`namely, blogs, all in the fields of general interest, human
`behavior, relationships, religion, faith, spirituality, wellness
`and conscious living, personal fulfillment, personal growth
`and motivation
`Class 035 - Promotional activities, namely, promoting the
`books of featured authors, in the fields of general interest,
`human behavior, relationships, religion, faith, spirituality,
`wellness and conscious
`living, personal
`fulfillment,
`personal growth and motivation
`Class 038 - Streaming of audio and visual content via the
`internet and global and local computer networks in the
`fields of human behavior, relationships, religion, faith,
`spirituality, wellness and conscious
`living, personal
`fulfillment, personal growth and motivation
`Class 041 - Entertainment services, namely, television
`programming services; Entertainment services, namely,
`ongoing television segments and shows in the fields of
`human behavior, relationships, religion, faith, spirituality,
`
`4872-8034-0857\1
`
`2
`
`

`

`
`
`Mark
`
`Reg. No. Goods/Services
`
`SUPER SOUL
`SESSIONS
`
`6569729
`
`OPRAH'S
`SUPER SOUL
`CONVERSATIONS
`
`5642150
`
`fulfillment,
`
`living, personal
`wellness and conscious
`personal growth and motivation
`Class 041 - Conducting educational programs, classes,
`seminars, workshops in the fields of human behavior,
`relationships, religion, faith, spirituality, wellness and
`conscious living, personal fulfillment, personal growth and
`motivation
`Class 041 - Entertainment services, namely, providing
`podcasts in the field of human behavior, relationships,
`religion, faith, spirituality, wellness and conscious living,
`personal fulfillment, personal growth and motivation
`
`The foregoing registrations are valid, subsisting, and owned by Opposer. Opposer’s Registration
`
`Nos. 4516203 and 4566370 are also incontestable pursuant to 15 U.S.C. §§1064 and 1115(b).
`
`4.
`
`By virtue of the popularity of Opposer’s services offered in connection with the
`
`SUPER SOUL Marks, Opposer has built up and now owns an extremely valuable goodwill that is
`
`symbolized by its SUPER SOUL Marks.
`
`5.
`
`Applicant’s application for, proposed use and/or actual use of SUNDAY SOUL for
`
`“Conducting community festivals featuring a variety of activities, namely, contests, live music
`
`entertainment, and games, and featuring vendor booths related to general consumer
`
`merchandise; Organizing community cultural events; Organizing social entertainment festivals for
`
`cultural purposes; Organizing and hosting of events for cultural purposes; Organizing community
`
`festivals for cultural or entertainment purposes; Organizing community festivals featuring live
`
`music performances entertainment and also providing vendor booths related to food, beverages,
`
`clothing, household products and accessories, art, books, crafts, candles, general consumer
`
`merchandise, and games from local businesses; Entertainment services, namely, organizing
`
`community fairs featuring live music entertainment and also providing vendor booths related to
`
`food, beverages, entertainment, clothing, household products and accessories, art, books, crafts,
`
`candles, general consumer merchandise, and games”
`
`in
`
`International Class 041
`
`(“Applicant’s Services”) is without Opposer’s consent or permission. Applicant’s Application was
`
`4872-8034-0857\1
`
`3
`
`

`

`
`
`filed based on current use under Section 1(a) of the Lanham Act, claiming a first use date in U.S.
`
`commerce as May 30, 2021.
`
`COUNT I – PRIORITY AND
`LIKELIHOOD OF CONFUSION
`
`
`
`6.
`
`7.
`
`Opposer realleges the allegations of Paragraphs 1 through 5.
`
`Opposer has been using the SUPER SOUL Marks continuously in U.S. commerce
`
`since at least as early as 2011. Such date is nearly ten years prior to the filing of the Application
`
`on September 22, 2021, and any claimed date of first use upon which Applicant may rely.
`
`Therefore, Opposer has priority by virtue of its prior and continuous use of the SUPER SOUL
`
`Marks.
`
`8.
`
`Applicant’s SUNDAY SOUL mark so resembles Opposer’s SUPER SOUL Marks
`
`in appearance and overall commercial impression that Applicant’s proposed and/or actual use of
`
`SUNDAY SOUL in connection with Applicant’s 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.
`
`9.
`
`Opposer will be damaged if Application Serial No. 97040301 is granted for
`
`registration because Applicant will obtain statutory rights in its Subject Mark in violation and
`
`derogation of the established prior rights of Opposer.
`
`WHEREFORE, Opposer respectfully requests that this opposition be sustained and that
`
`Application Serial No. 97040301 be denied registration.
`
`Please address all correspondence to: Lindsey Sadler DORSEY & WHITNEY LLP
`
`1400 Wewatta Street, Suite 400, Denver, CO 80202.
`
`
`
`4872-8034-0857\1
`
`4
`
`

`

`DORSEY & WHITNEY LLP
`
`
`
`
`
`/Lindsey Sadler/
`Lindsey Sadler
`Charlene Krogh
`DORSEY & WHITNEY LLP
`1400 Wewatta Street, Suite 400
`Denver, CO 80202
`Tel: 303.352.1161
`Email: NY.Trademark@dorsey.com;
`sadler.lindsey@dorsey.com;
`krogh.charlene@dorsey.com;
`provencio.angela@dorsey.com
`
`Attorneys for Opposer, Harpo, Inc.
`
`
`
`
`Date: August 21, 2023
`
`
`
`4872-8034-0857\1
`
`5
`
`