ESTTA Tracking number:
`
`Filing date:
`
`ESTTA1309630
`09/12/2023
`
`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
`
`Legend Pictures, LLC
`
`Granted to date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`09/13/2023
`
`2900 WEST ALAMEDA AVENUE, 15TH FLOOR
`BURBANK, CA 91505
`UNITED STATES
`
`ANTHONY M. KEATS
`KEATS GATIEN, LLP
`120 S. EL CAMINO DR., SUITE 207
`BEVERLY HILLS, CA 90212
`UNITED STATES
`Primary email: uspto@keatsgatien.com
`Secondary email(s): tony@keatsgatien.com
`14243020692
`
`Docket no.
`
`Applicant information
`
`Application no.
`
`97208104
`
`Opposition filing
`date
`
`Applicant
`
`09/12/2023
`
`Publication date
`
`05/16/2023
`
`Opposition period
`ends
`
`09/13/2023
`
`UrbanWolfGames, Inc.
`908HO
`78, CENTUM JUNGANG-RO, HAEUNDAE-GU
`BUSAN, 48059
`KOREA, REPUBLIC OF
`
`Goods/services affected by opposition
`
`Class 009. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Downloadable and recorded electronic
`game software; recorded computer game software; downloadable and recorded video and computer
`game programs; compact discs featuring video game software; downloadable and recorded virtual
`reality game software; downloadable and recorded augmented reality game software; downloadable
`game application software for smartphones; downloadable and recorded computer game application
`software
`
`Class 035. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Retail store services featuring electronic
`game software; wholesale store services featuring electronic game software; retail store services fea-
`turing disc featuring electronic game software; wholesale store services featuring disc featuring elec-
`tronic game software; retail store services featuring virtual reality game software; wholesale store ser-
`vices featuring virtual reality game software; organization of events for commercial, promotional, and
`publicity purposes; consultancy of events for commercial and promotional purposes; arranging and
`
`

`

`conducting of marketing events for others; marketing services in the field of electronic games
`
`Class 041. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Gaming services, namely, providing an on-
`line computer game; virtual reality game services provided on-line from a computer network; game
`services provided online from a computer network; providing on-line computer games; provision of in-
`formation relating to electronic computer games provided via the Internet; production of performance
`events, namely, e-sports competitions, music concerts, and musical performances; conducting of per-
`formance events for cultural or entertainment purposes, namely, e-sports competitions, music con-
`certs, and musical performances; organization of shows, namely, e-sports competitions, musical per-
`formances and concerts; organization of entertainment shows namely, e-sports competitions, music
`concerts, and musical performances
`
`Class 042. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Development of game software; develop-
`ment of computer game software; programming of computer game software; design of computer
`game software; development of computer hardware for computer games; development of video game
`software; design of video game software; programming of video game software; development of virtu-
`al reality software; design of virtual reality software; design of software relating to 3D technology; de-
`velopment of augmented reality software; design of virtual augmented software
`
`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.
`
`3656926
`
`Register
`
`Principal
`
`Registration date
`
`07/21/2009
`
`Application date
`
`08/14/2008
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`LEGENDARY
`
`The mark consists of the words "LEGENDARY" and a design.
`
`Class 009. First use: First Use: Jun 1, 2005 First Use In Commerce: Jun 1, 2005
`Motion picture films featuring comedy, adventures, sports, romance and drama;
`digital media, namely, prerecorded videocassettes, DVDs, and compact discs all
`featuring comedy, adventures, sports, romance and drama; digital media,
`namely, prerecorded computer disks, CD-ROMs, audio discs [ and audio tapes ]
`all featuring comedy, adventures, sports, romance and drama; prerecorded [ au-
`dio tapes ], audio compact discs and video tapes all featuring musical entertain-
`ment
`Class 041. First use: First Use: Jun 1, 2005 First Use In Commerce: Jun 1, 2005
`Entertainment services, namely, production and distribution of motion picture
`films, [ television programs and television program specials ] ; entertainment ser-
`vices, namely, production and distribution of music video programs, [ document-
`ary television programs and ] documentary motion picture films; entertainment
`services, namely, production and distribution of [ animated television programs
`and ] animated motion picture films
`
`U.S. registration
`no.
`
`3412677
`
`Register
`
`Principal
`
`Registration date
`
`04/15/2008
`
`Application date
`
`09/16/2004
`
`Foreign priority
`date
`
`NONE
`
`

`

`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`LEGENDARY PICTURES
`
`NONE
`
`Class 009. First use: First Use: Jun 1, 2005 First Use In Commerce: Jun 1, 2005
`motion picture films, [ prerecorded videocassettes, ] digital versatile disks
`(DVDs), compact discs, and other recordable media, namely, computer disks,
`CD-ROMs [, ] * and * audio discs [, and audio tapes, ] featuring live action, com-
`puter generated, and animated motion pictures *, * or combinations thereof; pre-
`recorded [ audio tapes, ] audio compact discs [, and video tapes ] featuring mu-
`sical entertainment
`Class 041. First use: First Use: Jun 1, 2005 First Use In Commerce: Jun 1, 2005
`Entertainment services, namely, production, development and distribution of mo-
`tion picture films, [ television programs, television program specials,] music
`video programs [, documentary television programs ] and motion pictures [, an-
`imated television programs and motion pictures ]
`
`U.S. registration
`no.
`
`4902097
`
`Register
`
`Principal
`
`Registration date
`
`02/16/2016
`
`Application date
`
`11/22/2011
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`LEGENDARY EAST
`
`NONE
`
`Class 041. First use: First Use: Apr 15, 2015 First Use In Commerce: Apr 15,
`2015
`Entertainment services, namely, development and production of motion pictures
`
`U.S. registration
`no.
`
`6931252
`
`Register
`
`Principal
`
`Registration date
`
`12/20/2022
`
`Application date
`
`06/23/2015
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`LEGENDARY
`
`NONE
`
`Class 041. First use: First Use: Jun 2006 First Use In Commerce: Jun 2006
`Entertainment services, namely, development of concepts for and production
`and distribution of motion pictures, and television programs; Entertainment ser-
`vices, namely, production of videogames; multimedia entertainment services in
`the nature of recording, production and post-production services in the fields of
`entertainment content and films; Entertainment, namely, production of continu-
`ing comedy, drama, action, and animated programs delivered by Internet
`
`U.S. registration
`no.
`
`5370235
`
`Register
`
`Principal
`
`Application date
`
`11/05/2010
`
`Registration date
`
`01/02/2018
`
`Foreign priority
`
`NONE
`
`

`

`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`LEGENDARY COMICS
`
`date
`
`NONE
`
`Class 041. First use: First Use: 2010 First Use In Commerce: 2010
`Publishing of comic books and graphic novels; Providing online non-
`downloadable comic books and graphic novels
`
`U.S. registration
`no.
`
`4436755
`
`Register
`
`Principal
`
`Registration date
`
`11/19/2013
`
`Application date
`
`02/04/2010
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`LEGENDARY
`
`NONE
`
`Class 016. First use: First Use: Sep 30, 2010 First Use In Commerce: Sep 30,
`2010
`Posters [ ; photographs; brochures, pictures ]
`
`U.S. registration
`no.
`
`5997357
`
`Register
`
`Principal
`
`Registration date
`
`02/25/2020
`
`Application date
`
`06/20/2016
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`LEGENDARY
`
`The mark consists of the word "LEGENDARY" under a knot design.
`
`Class 025. First use: First Use: Apr 2019 First Use In Commerce: Apr 2019
`Shirts, t-shirts, sweatshirts, hooded sweatshirts, jackets, hats, and caps
`
`U.S. registration
`no.
`
`5997358
`
`Register
`
`Principal
`
`Registration date
`
`02/25/2020
`
`Application date
`
`06/20/2016
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`LEGENDARY
`
`The mark consists of the word "LEGENDARY" to the right of a knot design.
`
`Class 025. First use: First Use: Apr 2019 First Use In Commerce: Apr 2019
`Shirts, t-shirts, sweatshirts, pants, sweatpants, hooded sweatshirts, jackets, hats
`and caps, warm-up suits
`
`U.S. registration
`no.
`
`4529919
`
`Application date
`
`06/03/2011
`
`

`

`Register
`
`Principal
`
`Registration date
`
`05/13/2014
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`LEGENDARY
`
`The mark consists of the word "LEGENDARY" and a knot design on top.
`
`Class 028. First use: First Use: Jul 1, 2011 First Use In Commerce: Jul 1, 2011
`Toy action figures and accessories thereof; toy animal figures and accessories
`thereof; dolls and doll accessories thereof; stuffed and plush toys
`
`Attachments
`
`Not of Opp - LEGENDARY TALES.pdf(175988 bytes )
`
`Signature
`
`/s/
`
`Name
`
`Date
`
`Matthew E. Graham, Associate Attorney of Record, California Bar Member
`
`09/12/2023
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`In re Application No. 97/208,104, Published on May 16, 2023
`
`
`Legend Pictures, LLC
`
`Opposer,
`
`
`
`v.
`
`
`
`UrbanWolfGames, Inc.
`
`
`
`Applicant.
`
`
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`
`
`
`Opposition No.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`
`
`
`Legend Pictures, LLC (“Opposer”), a Delaware limited liability company, having its
`
`principal place of business at 2900 West Alameda Avenue, 15th Floor, Burbank, California 91505,
`
`believes that it will be damaged by the registration of the above-identified mark for LEGENDARY
`
`TALES in standard character format (the “Applicant’s LEGENDARY TALES Mark”) for use in
`
`connection with the Class 9, 35, 41, and 42 goods and services identified in said application, and
`
`hereby opposes the same under the provisions of Section 13 of the Trademark Act of 1946, 15
`
`U.S.C. §1063.
`
`As grounds for the opposition, Opposer alleges:
`
`1.
`
`Opposer is the owner of all rights, title and interest in and to, among others, the
`
`following trademarks:
`
`a. LEGENDARY (Reg. No. 3,656,926) in standard word format, which is
`
`registered with the USPTO for use in connection with various “[m]otion
`
`
`
`

`

`In re Application Serial No. 97/208,104
`Notice of Opposition
`Page 2
`
`
`
`
`picture films” in International Class 009 and “[e]ntertainment services” in
`
`International Class 041;
`
`b. LEGENDARY PICTURES (Reg. No. 3,412,677) in standard word format,
`
`which is registered with the USPTO for use in connection with various
`
`“[m]otion picture films” in International Class 009 and “[e]ntertainment
`
`services” in International Class 041;
`
`c. LEGENDARY EAST (Reg. No. 4,902,097) in standard word format, which is
`
`registered with the USPTO for use in connection with various “[m]otion
`
`picture films” in International Class 009 and “[e]ntertainment services” in
`
`International Class 041;
`
`d. LEGENDARY (Reg. No. 6,931,252) in standard word format, which is
`
`registered with the USPTO for use in connection with various
`
`“[e]ntertainment services” in International Class 041;
`
`e. LEGENDARY COMICS (Reg. No. 5,370,235) in standard word format,
`
`which is registered with the USPTO for use in connection with various
`
`publishing services in International Class 041;
`
`f. LEGENDARY (Reg. No. 4,436,755) in standard word format, which is
`
`registered with the USPTO for use in connection with posters and other
`
`printed materials in International Class 016;
`
`g. LEGENDARY (Reg. No. 5,997,357) in stylized design format, which is
`
`registered with the United States Patent and Trademark Office (the “USPTO”)
`
`

`

`In re Application Serial No. 97/208,104
`Notice of Opposition
`Page 3
`
`
`
`
`for use in connection with “[s]hirts, t-shirts, sweatshirts, hooded sweatshirts,
`
`jackets, hats, and caps” in International Class 025;
`
`h. LEGENDARY (Reg. No. 5,997,358) in stylized design format, which is
`
`registered with the USPTO for use in connection with “[s]hirts, t-shirts,
`
`sweatshirts, pants, sweatpants, hooded sweatshirts, jackets, hats and caps,
`
`warm-up suits” in International Class 025;
`
`i. LEGENDARY (Reg. No. 4,436,755) in standard word format, which is
`
`registered with the USPTO for use in connection with “posters,”
`
`“photographs,” and other printed materials in International Class 016; and
`
`j. LEGENDARY (Reg. No. 4,529,919) in stylized design format, which is
`
`registered with the USPTO for use in connection with various “toys” in
`
`International Class 028;
`
`(hereinafter collectively referred to as the “LEGENDARY Family of Marks”).
`
`2.
`
`Opposer’s LEGENDARY Family of Marks, and each of them, is inherently
`
`distinctive.
`
`3.
`
`Opposer’s LEGENDARY Family of Marks has come to have a secondary
`
`meaning indicative of origin, relationship, sponsorship and/or association with Opposer and its
`
`distinctive reputation for high quality. The purchasing public is likely to attribute to Opposer the
`
`Applicant’s use of the LEGENDARY Family of Marks as a source of origin, authorization
`
`and/or sponsorship for the services offered by the Applicants and further, to attend, contribute to
`
`and/or purchase Applicant’s goods in the erroneous belief that Applicant is associated with,
`
`sponsored by or affiliated with Opposer, when Applicant is not.
`
`

`

`In re Application Serial No. 97/208,104
`Notice of Opposition
`Page 4
`
`
`
`
`4.
`
`Since long before Applicant’s filing of its trademark application with the United
`
`States Patent and Trademark Office for the Applicant’s LEGENDARY TALES Mark, Opposer
`
`has used its LEGENDARY Family of Marks in connection with the advertising and sale of
`
`entertainment goods, services, and related merchandise, including but not limited to digital and
`
`multimedia entertainment products, videogames, and related services.
`
`5.
`
`The United States Patent and Trademark Office has recognized Opposer’s
`
`exclusive right to use its LEGENDARY Family of Marks by issuing the registrations for said
`
`marks.
`
`6.
`
`Opposer’s registrations are valid and subsisting and provide prima facie evidence
`
`of Opposer’s ownership of, and exclusive right to use, Opposer’s LEGENDARY Family of
`
`Marks in commerce.
`
`7.
`
`Opposer has developed a well-known business reputation throughout the United
`
`States and Opposer’s LEGENDARY Family of Marks has been and continues to be publicized
`
`through advertising and promotion in the United States.
`
`8.
`
`As a result of Opposer’s and its licensees’ extensive use, advertising and sale of
`
`goods and services offered under Opposer’s LEGENDARY Family of Marks, the LEGENDARY
`
`Family of Marks, and each of them, have become well-known and distinctive source indicators
`
`and highly valuable symbols of Opposer’s business and goodwill.
`
`9.
`
`Notwithstanding Opposer’s prior established rights in its LEGENDARY Family
`
`of Marks, Applicant caused to be filed with the USPTO on January 7, 2022, its application for
`
`registration of Applicant’s LEGENDARY TALES Mark (Ser. No. 97/208,104).
`
`

`

`In re Application Serial No. 97/208,104
`Notice of Opposition
`Page 5
`
`
`
`
`10.
`
`Opposer has used its LEGENDARY Family of Marks continuously on or in
`
`connection with its goods and services in interstate commerce since long prior to Applicant’s
`
`filing date for Applicant’s LEGENDARY TALES Mark.
`
`11.
`
`Applicants had constructive knowledge of Opposer’s prior rights in Opposer’s
`
`LEGENDARY Family of Marks well before Applicant filed its application for Applicant’s
`
`LEGENDARY TALES Mark.
`
`12.
`
`On information and belief, based on Opposer’s widespread use and popularity of
`
`the LEGENDARY Family of Marks, Applicant had actual knowledge of Opposer’s prior rights in
`
`Opposer’s LEGENDARY Family of Marks well before Applicant filed its application for
`
`Applicant’s LEGENDARY TALES Mark.
`
`COUNT I
`LIKELIHOOD OF CONFUSION - §2(d)
`
`Applicant’s LEGENDARY TALES Mark so closely resembles Opposer’s
`
`13.
`
`LEGENDARY Family of Marks, and each of them, that the use and registration thereof is likely
`
`to cause confusion, mistake and deception as to the source or origin of Applicant’s goods and
`
`services, and will injure and damage Opposer and the goodwill and reputation symbolized by
`
`Opposer’s LEGENDARY Family of Marks, and each mark in said family.
`
`14.
`
`The goods of Applicant are so closely related to the goods and services of
`
`Opposer that the public is likely to be confused, to be deceived and to assume erroneously that
`
`Applicant’s goods are those of Opposer or that Applicant is in some way connected with or
`
`sponsored by or affiliated with Opposer, all to Opposer’s irreparable damage.
`
`15.
`
`Likelihood of confusion in this case is enhanced by the fact that purchasers of
`
`Applicant’s goods are likely to associate Applicant’s LEGENDARY TALES Mark with goods
`
`

`

`In re Application Serial No. 97/208,104
`Notice of Opposition
`Page 6
`
`
`
`and services sold, approved, or endorsed by Opposer under its LEGENDARY Family of Marks;
`
`moreover, purchasers of Applicant’s goods are highly likely to be purchasers of Opposer’s goods
`
`and services.
`
`
`
`16.
`
`Opposer is not affiliated or associated with or connected to Applicant; Applicant’s
`
`goods and services do not originate from Opposer; and Opposer has not endorsed, sponsored, or
`
`approved of Applicant’s goods or services or commercial activities offered under Applicant’s
`
`LEGENDARY TALES Mark.
`
`
`
`17.
`
`Similarly, Opposer has not approved any goods or services sold or intended for
`
`sale by Applicant under Applicant’s LEGENDARY TALES Mark, nor has Opposer granted
`
`Applicant permission to use said mark.
`
`
`
`18.
`
`Applicant’s use of Applicant’s LEGENDARY TALES Mark in connection with
`
`Applicant’s goods and/or services constitutes Applicant’s use in commerce of Opposer’s
`
`LEGENDARY Family of Marks.
`
`19.
`
`Opposer’s LEGENDARY Family of Marks have come to have a secondary
`
`meaning indicative of origin, relationship, sponsorship and/or association with Opposer and its
`
`distinctive reputation for high quality. The purchasing public is likely to attribute to Opposer
`
`Applicant’s use of the LEGENDARY Family of Marks as a source of origin, authorization
`
`and/or sponsorship for the goods and/or services that Applicant offers, and further purchase
`
`Applicant’s goods and/or services under the erroneous belief that Applicant is associated with,
`
`sponsored by or affiliated with Opposer, when Applicant is not.
`
`
`
`20.
`
`Opposer has not authorized or licensed the use of its LEGENDARY Family of
`
`Marks to Applicant.
`
`

`

`In re Application Serial No. 97/208,104
`Notice of Opposition
`Page 7
`
`
`
`
`
`21.
`
`Upon information and belief, Applicant intentionally and willfully utilized
`
`Opposer’s well-known LEGENDARY Family of Marks and traded on Opposer’s reputation and
`
`goodwill.
`
`
`
`22.
`
`If such use on the part of the Applicant continues, Opposer will suffer irreparable
`
`harm.
`
`WHEREFORE, by reason of the foregoing, Opposer prays that its Opposition be sustained and
`
`that registration of Applicant’s mark be denied.
`
`
`
`
`
`
`
`
`
`
`
`
`
`Dated: September 12, 2023
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`Anthony M. Keats
`Keats Gatien, LLP
`Attorneys for Opposer
`Legend Pictures, LLC
`120 S. El Camino Dr., Suite 207
`Beverly Hills, CA 90212
`Telephone: (424) 302-0692
`
`