Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
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`ESTTA985412
`
`Filing date:
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`07/03/2019
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Petition for Cancellation
`
`Notice is hereby given that the following party has filed a petition to cancel the registration indicated below.
`
`Petitioner Information
`
`Name
`
`Entity
`
`Address
`
`Attorney informa-
`tion
`
`Home Box Office, Inc.
`
`Corporation
`
`Citizenship
`
`Delaware
`
`30 Hudson Yards
`New York, NY 10001
`UNITED STATES
`
`Tamara Carmichael
`OLSHAN FROME WOLOSKY LLP
`1325 Avenue of the Americas
`New York, NY 10019
`UNITED STATES
`tcarmichael@olshanlaw.com, aprovencio@olshanlaw.com
`2124512300
`
`Registration Subject to Cancellation
`
`Registration No.
`
`5168710
`
`Registration date
`
`03/21/2017
`
`Registrant
`
`TKS INT'L, LLC
`2501 Riverside Drive
`Wantagh, NY 11793
`UNITED STATES
`Email: scott@bwbj.com
`
`Goods/Services Subject to Cancellation
`
`Class 020. First Use: 2016/05/24 First Use In Commerce: 2016/05/24
`All goods and services in the class are subject to cancellation, namely: Door stops of wood
`
`Grounds for Cancellation
`
`Priority and likelihood of confusion
`
`Trademark Act Sections 14(1) and 2(d)
`
`Marks Cited by Petitioner as Basis for Cancellation
`
`U.S. Registration
`No.
`
`5221281
`
`Registration Date
`
`06/13/2017
`
`Word Mark
`
`HODOR
`
`Application Date
`
`05/24/2016
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 2011/06/30 First Use In Commerce: 2011/06/30
`Clothing, namely, t-shirts
`
`U.S. Registration
`No.
`
`5221282
`
`Registration Date
`
`06/13/2017
`
`Word Mark
`
`Design Mark
`
`HODOR
`
`Application Date
`
`05/24/2016
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 021. First use: First Use: 2011/06/30 First Use In Commerce: 2011/06/30
`MUGS
`
`Attachments
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`87047962#TMSN.png( bytes )
`87047965#TMSN.png( bytes )
`Petition for Cancellation HODOR RN 5168710.pdf(414083 bytes )
`
`Signature
`
`/Tamara Carmichael/
`
`Name
`
`Date
`
`Tamara Carmichael
`
`07/03/2019
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the Matter of U.S. Trademark Registration No. 5168710: HODOR
`
`Home Box Office, Inc.,
`
`Petitioner,
`
`)
`)
`)
`)
`)
`)
`)
`Registrant.
`PETITION FOR CANCELLATION
`
`Cancellation No. ________
`
`v.
`
`TKS INT'L, LLC,
`
`
`
`
`
`
`Petitioner, Home Box Office, Inc., believes that it will be damaged by the maintenance
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`of U.S. Trademark Registration No. 5168710 on the Supplemental Register, and hereby
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`petitions to cancel same under 15 U.S.C. §1064 and 15 U.S.C. §1092. As grounds for
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`cancellation, Petitioner asserts:
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`1.
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`Home Box Office, Inc. (“Petitioner”) is a Delaware corporation having a principal
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`place of business at 30 Hudson Yards, New York, New York 10001.
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`2.
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`Upon information and belief, TKS INT'L, LLC (“Registrant”) is a Delaware limited
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`liability company having an address at 2501 Riverside Drive, Wantagh, New York 11793.
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`3.
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`On March 21, 2017, HODOR (“Registrant’s Mark”), owned by Registrant,
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`registered on the Principal Register under U.S. Trademark Registration No. 5168710 for “door
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`stops of wood” in International Class 020.
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`4.
`
`Petitioner operates well-known and widely distributed premium
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`television
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`channels and is the producer of the renowned, critically acclaimed, and award-winning television
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`series Game of Thrones, which first aired in April 2011. The Game of Thrones series is
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`comprised of seventy-three (73) episodes over eight (8) seasons, having just concluded its final
`
`season in May 2019.
`
`5.
`
`Since long prior to the registration of Registrant’s Mark, Petitioner has produced,
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`4365851-1
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`marketed, and distributed the Game of Thrones television series and merchandise with their
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`related marks, logos, designs, and characters. The Game of Thrones television series is the
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`most popular in the history of Petitioner’s network and has seen its ratings and popularity rise
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`with each passing season.
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`6.
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`The popularity of Petitioner’s Game of Thrones series and its place in the cultural
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`zeitgeist has been acknowledged by countless media articles. For example, a Time magazine
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`July 10, 2017 cover story called Game of Thrones “the world’s most popular show.”
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`7.
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`This popularity has translated into numerous awards for the series. For example,
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`Game of Thrones set the record for the most Primetime Emmy wins for a series in a single
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`season (12) and the most wins for a scripted primetime television series ever (47, to date). The
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`series won the Emmy Award for Outstanding Drama Series in 2015, 2016, and 2018.
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`8.
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`The Game of Thrones characters have also become notable cultural figures. One
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`of the characters from the series is HODOR. Petitioner has common law rights in and to the
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`series’ character HODOR, and HODOR has acquired significant notoriety and distinctiveness
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`since the character’s first appearance in the first episode of the series on April 17, 2011. Due to
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`the widespread popularity of the Game of Thrones television series, Petitioner is identified
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`exclusively and uniquely as the source of the HODOR mark, including but not limited to the
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`character and any and all series merchandise to which HODOR is applied.
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`9.
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`The character of HODOR is a loyal servant of the Stark family, one of the principal
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`families in the series. Due to his large size, HODOR is believed to be descended from giants
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`and can only express himself with a single word, “Hodor.” The character carried the paralyzed
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`Bran Stark through the North and Beyond the Wall. As a result of his service to Bran and his
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`gentle nature, HODOR quickly became a fan favorite character on the Game of Thrones series.
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`The fifth episode of the series’ sixth season, which aired on May 22, 2016, explained the origin of
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`the word HODOR, which is a condensed version of the phrase “hold the door.”
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`10.
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`Since long prior to the registration of Registrant’s Mark, Petitioner has produced
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`and distributed HODOR related goods in connection with the Game of Thrones television series
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`under the trademark HODOR, with its attendant logos, and designs (the “HODOR Mark”).
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`Petitioner first started selling merchandise using the HODOR Mark as early as June 2011, well
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`before Registrant’s purported date of first use. Currently, the Petitioner or its licensees sell a
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`variety of HODOR merchandise, including but not limited to apparel, doormats, and glassware.
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`As such, Petitioner has acquired valuable trademark rights in the HODOR Mark. The HODOR
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`Mark has become a valuable property right and symbol distinctive of Petitioner and has
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`acquired secondary meaning as indicating Petitioner’s Game of Thrones television show and
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`the HODOR character.
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`11.
`
`Petitioner owns registrations for its HODOR Mark with the United States Patent
`
`and Trademark Office (“PTO”), including, but not limited to:
`
`Mark
`HODOR
`HODOR
`
`Reg. No. Class - Goods
`5221281
`Class 025 - Clothing, namely, t-shirts
`5221282
`Class 021 - Mugs
`
`
`1.
`2
`
`The foregoing registrations are valid, subsisting, and owned by Petitioner.
`
`12.
`
`By virtue of the popularity of Petitioner’s goods offered or sold in connection with
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`the HODOR Mark and Game of Thrones television series, Petitioner has built up and now owns
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`an extremely valuable goodwill in its television series and related marks.
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`13.
`
`Registrant’s registration and use of Registrant’s HODOR Mark for “door stops of
`
`wood” in International Class 020 (“Registrant’s Goods”) is without Petitioner’s consent or
`
`permission. Registrant adopted the HODOR mark, acted and continues to act in bad faith.
`
`COUNT I – LIKELIHOOD OF CONFUSION
`
`14.
`
`Petitioner realleges the allegations in Paragraphs 1 through 13.
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`4365851-1
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`
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`15.
`
`Registrant’s use of Registrants’ HODOR Mark in connection with Registrant’s
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`Goods is likely to cause confusion, mistake, or deception in that consumers are likely to believe
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`that Registrant’s Goods are Petitioner’s Goods, or the goods of a person or company that is
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`sponsored, authorized or licensed by, or in some other way legitimately connected with,
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`Petitioner.
`
`WHEREFORE, Petitioner prays that U.S. Trademark Registration No. 5168710 be
`
`cancelled and that this Petition for Cancellation be sustained in favor of Petitioner.
`
`Please debit our Deposit Account No. 504261 for the filing fee and for any additional
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`necessary fees.
`
`Please address all correspondence to: Tamara F. Carmichael, Esq., OLSHAN FROME
`
`WOLOSKY LLP, 1325 Avenue of the Americas, New York, New York 10019.
`
`
`
`
`
`OLSHAN FROME WOLOSKY LLP
`
`
`
`/s/ Tamara Carmichael
`Tamara Carmichael
`1325 Avenue of the Americas
`New York, New York 10019
`Tel: 212-451-2300
`Email: tcarmichael @olshanlaw.com,
`aprovencio@olshanlaw.com
`
`Attorneys for Petitioner, Home Box Office, Inc.
`
`
`Date: July 3, 2019
`
`
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`4365851-1
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