Celebscallu - Notice Of Opposition- Final

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ESTTA Tracking number: Filing date:

ESTTA238005 09/21/2008

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 parties oppose registration of the indicated application. Opposers Information Name

CW Multimedia Corporation

Entity

Corporation

Address

Chris A. Webb

Entity

Individual

Citizenship

UNITED STATES

310 West Liberty Street, Suite 510 Louisville, KY 40202 UNITED STATES

Name

James J. Yelich

Entity

Individual

Address

Kentucky

310 West Liberty Street, Suite 510 Louisville, KY 40202 UNITED STATES

Name

Address

Citizenship

Citizenship

UNITED STATES

124 12th Avenue South, Suite 410 Nashville, TN 37203 UNITED STATES

9/21/2008 7:49 AM

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Attorney information

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Erik M. Pelton Erik M. Pelton & Associates, PLLC PO Box 100637 Arlington, VA 22210 UNITED STATES [email protected] Phone:703-525-8009

Applicant Information Application No 77441634 Opposition Filing Date

09/21/2008

Applicant

Xtreme Productions LLC Pier 27, The Embarcadero San Francisco, CA 94111 UNITED STATES

Publication date

08/26/2008

Opposition Period Ends

09/25/2008

Goods/Services Affected by Opposition Class 038. All goods and services in the class are opposed, namely: Voice message sending services Grounds for Opposition False suggestion of a connection

Trademark Act section 2(a)

Priority and likelihood of confusion

Trademark Act section 2(d)

Torres v. Cantine Torresella S.r.l.Fraud

808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)

Other

Applicant is not the true owner of the mark.

Marks Cited by Opposer as Basis for Opposition U.S. 77504843 Application No. Registration Date

NONE

Word Mark

CELEBRITIES CALL YOU

Design Mark

77504843#TMSN.jpeg

Description of Mark

NONE

Application Date Foreign Priority Date

06/21/2008 NONE

9/21/2008 7:49 AM

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Class 037. First use: First Use: 2007/05/07 First Use In Commerce: 2008/06/12 Goods/Services integrated voice response telephone services; customized phone call and e-card services U.S. 77504846 Application No.

Application Date Foreign Priority Date

06/21/2008

Registration Date

NONE

Word Mark

CELEBRITIES CALLYOU.COM

Design Mark

77504846#TMSN.jpeg

Description of Mark

The mark consists of the wording in the mark presented in a billboard marque style with CELEBRITIES in cursive about the wording CALLYOU.COM.

NONE

Class 037. First use: First Use: 2007/05/07 First Use In Commerce: 2008/06/12 Goods/Services integrated voice response telephone services; customized phone call and e-card services; prerecorded telephone messages

Attachments

77504843#TMSN.jpeg ( 1 page )( bytes ) 77504846#TMSN.jpeg ( 1 page )( bytes ) CELEBSCALLU - Notice of Opposition- FINAL.pdf ( 6 pages )(46219 bytes )

Certificate of Service The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address record by Overnight Courier on this date.

Signature

/ErikMPelton/

Name

Erik M. Pelton

Date

09/21/2008

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9/21/2008 7:49 AM

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD CHRIS A. WEBB, JAMES JOSEPH YELICH, and CW MULTIMEDIA CORPORATION, Opposers, vs. XTREME PRODUCTIONS LLC Applicant.

) ) ) ) ) ) ) ) ) )

Opposition No. ____________ In the matter of: Application Serial No. 77441634 Published on August 26, 2008 Mark: CELEBSCALLU

NOTICE OF OPPOSITION In the matter of the application for registration of the mark CELEBSCALLU for “Voice message sending services” in International Class 038, filed April 7, 2008, by Xtreme Productions LLC (“Applicant”), assigned Serial No. 77441634, and published for opposition in the Official Gazette of August 26, 2008, CHRIS A. WEBB, JAMES JOSEPH YELICH, and CW MULTIMEDIA CORPORATION (“Opposers”) believe that they would be damaged by such registration, and hereby opposes the registration of Applicant’s mark pursuant to 15 USC §1063 and 37 CFR §2.104. As grounds of opposition, it is alleged that: 1.

Opposer CW Multimedia Corporation is a Kentucky corporation with a principal

place of business at 310 West Liberty Street, Suite 510, Louisville, KY 40202. 2.

Opposer Chris A. Webb (“Webb”) is a United States citizen with a principal place

of business at 310 West Liberty Street, Suite 510, Louisville, KY 40202. 3.

Opposer James Joseph Yelich (“Yelich”) is a United States citizen with a

principal place of business at 124 12th Avenues South, Suite 410, Nashville, TN 37203.

4.

Opposers, since at least May of 2007 have been, and are now, using the mark

CELEBRITIES CALL YOU and CELEBRITIESCALLYOU.COM & Design in connection with integrated voice response telephone services; customized phone call and e-card services (“Opposer’s Marks”). 5.

Opposers Webb and Yelich have filed for registration of CELEBRITIES CALL

YOU on June 21, 2008, in U.S. trademark application Serial No. 77504843. 6.

Opposers Webb and Yelich filed for registration of

CELEBRITIESCALLYOU.COM on June 21, 2008, in U.S. trademark application Serial No. 77504846. 7.

Applicant filed to register the proposed mark CELEBSCALLU, Serial Number

77441634, for “Voice message sending services,” on April 7, 2008, claiming a bona fide intent to use the mark in commerce, as is evidenced by publication of said mark in the Official Gazette in the August 26, 2008, issue (“Applicant’s Mark”). 8.

Opposers’ use of Opposers’ Marks has been valid and continuous since at least

May of 2007 and has not been abandoned. Opposers’ marks are is symbolic of extensive good will and consumer recognition. As a result of the substantial amounts of time and effort in advertising and promotion, Opposers have developed an exceedingly valuable goodwill in respect to Opposers’ Marks. 9.

Applicant’s Mark and Opposers’ Marks are very similar in sound, appearance and

meaning. 10.

Applicant’s services and Opposers’ services are very similar and related.

11.

Applicant’s services and Opposers’ services are likely to be marketed and sold

together.

Mark: CELEBSCALLU Serial No: 77441634 Published: August 26, 2008

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12.

On information and belief, Opposers allege that the services of Opposers and

Applicant are offered or to be offered in similar channels of commerce and offered to similar customers. 13.

Applicant’s use of and application to register CELEBSCALLU is without the

consent or permission of Opposers. 14.

Applicant’s Mark and Opposers’ Marks are likely to be confused.

15.

On information and belief, Opposers first use of Opposers’ Marks precedes

Applicant’s first use of Applicant’s Mark in commerce. 16.

On information and belief, Opposers’ first use of Opposers’ Marks precedes the

filing of Applicant’s application to register Applicant’s Mark in the United States Patent and Trademark Office. 17.

Om of Applicant’s Members and principals signed a Non-Disclosure Agreement

with Opposer CW Multimedia Corporation on October 18, 2007. 18.

Applicant had knowledge of Opposers’ Marks at least as early as October 18,

19.

Applicant had knowledge of Opposers’ use of Opposers’ Marks prior to

2007.

Applicant’s filing to register Applicant’s Mark. 20.

On information and belief, Applicant is not the true owner of the mark in

Application Serial No. 77441634. 21.

On information and belief, Applicant has committed fraud in the filing of

Application Serial No. 77441634. 22.

As a result of confusing similarity between Opposers’ Marks and Applicant’s

Mark and because the goods and/or services of Applicant and Opposers are very similar, are in

Mark: CELEBSCALLU Serial No: 77441634 Published: August 26, 2008

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similar channels of commerce, and are directed to similar customers, registration of the proposed mark CELEBSCALLU in connection with Applicant’s services is likely to deceive purchasers as to the source or sponsorship of such services, to cause confusion, to cause mistake, or to deceive. 23.

Consumers familiar with the Opposers’ Marks are likely to mistakenly believe

that Applicant’s services are sponsored, authorized, associated with or otherwise approved by Opposers because the proposed mark closely resembles Opposers’ Marks. Deficiencies or faults in the quality of Applicant’s services are likely to reflect negatively upon, tarnish and seriously injure the reputation which Opposers have established for services provided under Opposers’ Marks. This confusion is likely to result in loss of revenues to Opposers and damage Opposers’ reputations. 24.

Applicant’s use of the Applicant’s Mark does or is likely to falsely suggest a

relationship between Applicant’s services and Opposers. Such use of the CELEBSCALLU is likely to cause confusion, mistake or deception with respect to the source or sponsorship of Applicant’s services. Such use is likely to cause a significant level of sales by Applicant to consumers who would be confused by the use of the proposed mark into believing that Opposers are the source of Applicant’s services, resulting in ill-gotten gains by Applicant. Applicant’s use of the proposed mark is therefore likely to result in Applicant’s trading off and benefiting from the goodwill associated with Opposers, resulting in ill-gotten gains by Applicant. 25.

Opposers are likely to be damaged by registration of Applicant’s mark in that the

prima facie effect of registration of Applicant’s mark would tend to impair Opposers’ right to use the wording contained in Applicant’s mark.

Mark: CELEBSCALLU Serial No: 77441634 Published: August 26, 2008

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26.

Opposers are likely to be damaged by registration of Applicant’s mark in that the

prima facie effect of registration of Applicant’s mark would tend to impair Opposers’ right to register Opposers’ Marks with the U.S. Patent and Trademark Office. 27.

For the foregoing reasons, the registration sought by Applicant is contrary to the

provisions of the Lanham Act, and Opposers would be damaged thereby. WHEREFORE, Opposers pray that the application for registration of the mark CELEBSCALLU, Serial No. 77441634, be refused and that this Opposition be sustained in favor of Opposers. The fee required by Sect. 2.6(a)(17) is enclosed herewith. Opposer hereby appoints Erik M. Pelton, member of the Bars of the State of New Jersey and the District of Columbia, and Christopher Shiplett, member of the Bar of the Commonwealth of Virginia, at ERIK M. PELTON & ASSOCIATES, PLLC, PO Box 100637, Arlington, Virginia 22210, to act as attorney in the matter of the opposition identified above, to prosecute said opposition, to transact all business in the Patent and Trademark Office, and in the United States courts connected with the opposition, to sign its name to all papers which are hereinafter to be filed in connection therewith, and to receive all communications relating to the same. Respectfully submitted for Opposers,

Dated: September ____ 2008

By: Erik M. Pelton, Esq. Attorney for Opposers ERIK M. PELTON & ASSOCIATES, PLLC PO Box 100637 Arlington, Virginia 22210 Phone: 703.525.8009 Fax: 703.525.8089 Email: [email protected]

Mark: CELEBSCALLU Serial No: 77441634 Published: August 26, 2008

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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD CHRIS A. WEBB, JAMES JOSEPH YELICH, and CW MULTIMEDIA CORPORATION, Opposers, vs. XTREME PRODUCTIONS LLC Applicant.

) ) ) ) ) ) ) ) ) )

Opposition No. ____________ In the matter of: Application Serial No. 77441634 Published on August 26, 2008 Mark: CELEBSCALLU

CERTIFICATE OF SERVICE I hereby certify that a true and copy of the foregoing Notice of Opposition has been served on the following by mailing said copy on September 21, 2008, via overnight delivery, postage prepaid, to Applicant at its correspondence address of record: Marc M. Gorelnik Townsend and Townsend and Crew LLP 2 Embarcadero Center, Floor 8 San Francisco, California 94111-3833 By: Erik M. Pelton, Esq.

Mark: CELEBSCALLU Serial No: 77441634 Published: August 26, 2008

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