Upload
mark-h-jaffe
View
333
Download
2
Embed Size (px)
Citation preview
8/9/2019 Bob Marley opposes Marley Gang.pdf
1/87
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
ESTTA Tracking number: ESTTA628838
Filing date: 09/23/2014
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 Fifty-Six Hope Road Music Limited
Granted to Dateof previous ex-tension
09/24/2014
Address Aquamarine House, Cable BeachNassau,BAHAMAS
Name Ky-Mani, Damian, Julian, Stephen, David Marley
Entity Individual Citizenship UNITED STATES
Address 16115 SW 117th Avenue, Unit 21-AMiami, FL 33177UNITED STATES
Attorney informa-tion
Jesse SaivarGreenberg Glusker Fields Claman & Machtinger LLP1900 Avenue of the Stars, 21st FloorLos Angeles, CA 90067UNITED [email protected], [email protected], ip-
[email protected] Phone:310.553.3610
Applicant Information
Application No 86114638 Publication date 05/27/2014
Opposition FilingDate
09/23/2014 Opposition Peri-od Ends
09/24/2014
Applicant S & M Media Group4219 Apt E Yanceyville RDBrowns Summit, NC 27214UNITED STATES
Goods/Services Affected by Opposition
Class 009. First Use: 0 First Use In Commerce: 0All goods and services in the class are opposed, namely: Audio and video recordings featuring musicand artistic performances; Compact discs featuring music; Digital music systems that synchronizesdigital radio files stored on a home unit, a car unit, or portable unit and that may be backed up to aninternet depository; Downloadable MP3 files, MP3 recordings, on-line discussion board posts, web-casts, webinars and podcasts featuring music, audio books in the field of rap, and news broadcasts;Downloadable ring tones, graphics and music via a global computer network and wireless devices;Downloadable video recordings featuring music; Downloadable music via the internet and wirelessdevices; Musical recordings; Musical video recordings; Visual recordings and audiovisual recordingsfeaturing music and animation
http://estta.uspto.gov/http://estta.uspto.gov/8/9/2019 Bob Marley opposes Marley Gang.pdf
2/87
Grounds for Opposition
False suggestion of a connection Trademark Act section 2(a)
Priority and likelihood of confusion Trademark Act section 2(d)
Dilution Trademark Act section 43(c)
Marks Cited by Opposer as Basis for OppositionU.S. RegistrationNo.
3535883 Application Date 02/22/2007
Registration Date 11/25/2008 Foreign PriorityDate
NONE
Word Mark THE MARLEY BROTHERS
Design Mark
Description ofMark
NONE
Goods/Services Class 041. First use: First Use: 2004/08/07 First Use In Commerce: 2004/08/07
Entertainment, namely, live performances by a musical band
U.S. RegistrationNo.
2349361 Application Date 05/21/1998
Registration Date 05/16/2000 Foreign PriorityDate
NONE
Word Mark BOB MARLEY
Design Mark
Description ofMark NONE
Goods/Services Class 003. First use: First Use: 1996/00/00 First Use In Commerce: 1996/00/00
incense
Class 006. First use: First Use: 1995/00/00 First Use In Commerce: 1995/00/00
novelty license plate of non-precious metal
Class 009. First use: First Use: 1996/00/00 First Use In Commerce: 1996/00/00
plastic cases for beepers; magnets
Class 014. First use: First Use: 1994/00/00 First Use In Commerce: 1994/00/00
8/9/2019 Bob Marley opposes Marley Gang.pdf
3/87
jewelry; watches; medallions
Class 016. First use: First Use: 1990/00/00 First Use In Commerce: 1990/00/00
greeting cards; stickers; stationery type portfolios; posters; postcards; postcardbooks; songbooks; decals; trading cards; calendars; novels; bookmarks
Class 018. First use: First Use: 1992/00/00 First Use In Commerce: 1992/00/00
backpacks; fanny packs; wallets; tote bags
Class 021. First use: First Use: 1995/00/00 First Use In Commerce: 1995/00/00
mugs
Class 024. First use: First Use: 1990/00/00 First Use In Commerce: 1990/00/00
textile wall hangings
Class 025. First use: First Use: 1990/00/00 First Use In Commerce: 1990/00/00
T-shirts; thermal shirts; jackets; hats; caps; sweatshirts; ties; bandannas
Class 026. First use: First Use: 1990/00/00 First Use In Commerce: 1990/00/00
ornamental cloth patches
Class 034. First use: First Use: 1996/00/00 First Use In Commerce: 1996/00/00
smoking pipes
U.S. RegistrationNo.
3934085 Application Date 05/30/2010
Registration Date 03/22/2011 Foreign PriorityDate
NONE
Word Mark BOB MARLEY
Design Mark
Description ofMark
NONE
Goods/Services Class 009. First use: First Use: 1970/00/00 First Use In Commerce: 1970/00/00
Audio/visual recordings featuring music; downloadable ring tones for cellphones, musical sound recordings; digital music downloadable from the Internet
U.S. RegistrationNo.
3692924 Application Date 03/09/2006
Registration Date 10/06/2009 Foreign PriorityDate NONE
Word Mark BOB MARLEY
Design Mark
Description ofMark
NONE
8/9/2019 Bob Marley opposes Marley Gang.pdf
4/87
Goods/Services Class 043. First use: First Use: 1999/02/06 First Use In Commerce: 1999/02/06
restaurant services, namely, preparation and service of food and beverages forconsumption
U.S. RegistrationNo.
4340082 Application Date 05/30/2010
Registration Date 05/21/2013 Foreign Priority
Date
NONE
Word Mark BOB MARLEY
Design Mark
Description ofMark
NONE
Goods/Services Class 009. First use: First Use: 2011/07/27 First Use In Commerce: 2011/07/27
cell phone accessories, namely, headsets, audio speakers for cell phones, andhands free headsets; computer carrying cases; electronic docking and chargingstations for cell phones; electronic docking stations including speakers for port-able electronic devices and media players;downloadable photo images; earbuds; eyewear; eyewear cases; goggles for sports; headphones; loudspeakers;and covers for cell phones and other mobile devices
U.S. RegistrationNo.
4572816 Application Date 02/19/2012
Registration Date 07/22/2014 Foreign PriorityDate
NONE
Word Mark BOB MARLEY
Design Mark
Description ofMark
NONE
Goods/Services Class 015. First use: First Use: 2008/03/31 First Use In Commerce: 2008/03/31
Musical instruments
U.S. RegistrationNo.
4440368 Application Date 02/19/2012
8/9/2019 Bob Marley opposes Marley Gang.pdf
5/87
Registration Date 11/26/2013 Foreign PriorityDate
NONE
Word Mark BOB MARLEY
Design Mark
Description ofMark
NONE
Goods/Services Class 015. First use: First Use: 2011/04/04 First Use In Commerce: 2011/04/04
Guitar picks; musical instrument accessories, namely, guitar straps
U.S. RegistrationNo.
4425858 Application Date 05/30/2010
Registration Date 10/29/2013 Foreign PriorityDate
NONE
Word Mark BOB MARLEY
Design Mark
Description ofMark
NONE
Goods/Services Class 029. First use: First Use: 2010/07/02 First Use In Commerce: 2010/07/02
fruit-based food beverages; milk-based beverage containing coffee
U.S. RegistrationNo.
4422220 Application Date 05/30/2010
Registration Date 10/22/2013 Foreign Priority
Date
NONE
Word Mark BOB MARLEY
8/9/2019 Bob Marley opposes Marley Gang.pdf
6/87
Design Mark
Description ofMark
NONE
Goods/Services Class 030. First use: First Use: 2010/07/02 First Use In Commerce: 2010/07/02
coffee; coffee beans; coffee-based beverages; espresso; herbal food bever-ages; tea; tea-based beverages; and unroasted coffee
U.S. RegistrationNo.
4422221 Application Date 05/30/2010
Registration Date 10/22/2013 Foreign PriorityDate NONE
Word Mark BOB MARLEY
Design Mark
Description ofMark
NONE
Goods/Services Class 032. First use: First Use: 2010/07/02 First Use In Commerce: 2010/07/02
fruit drinks; fruit-flavored beverages;herbal juices; lemonade
U.S. RegistrationNo.
4375700 Application Date 12/11/2012
Registration Date 07/30/2013 Foreign PriorityDate
NONE
Word Mark BOB MARLEY A TRIBUTE TO FREEDOM
8/9/2019 Bob Marley opposes Marley Gang.pdf
7/87
Design Mark
Description ofMark
The mark consists of a rendering of reggae legend "Bob Marley" set within anoval design, with the words "BOB MARLEY" centered above the oval in stylizedupper-case letters, and the words "A TRIBUTE TO FREEDOM", in an italicizedfont, centered between two stars within a rectangular banner below the oval.
Goods/Services Class 041. First use: First Use: 1999/02/06 First Use In Commerce: 1999/02/06
nightclub services, namely, arranging and conducting nightclub entertainmentevents
Class 043. First use: First Use: 1999/02/06 First Use In Commerce: 1999/02/06
Restaurant services, take-out restaurant services
U.S. RegistrationNo. 2820741 Application Date 08/19/2002
Registration Date 03/09/2004 Foreign PriorityDate
NONE
Word Mark BOB MARLEY AND THE WAILERS
Design Mark
Description ofMark
NONE
Goods/Services Class 009. First use: First Use: 1973/00/00 First Use In Commerce: 1973/00/00Series of sound and video recordings featuring music and downloadable soundandvideo recordings featuring music
Class 025. First use: First Use: 1973/00/00 First Use In Commerce: 1973/00/00
T-shirts, thermal shirts, [ jackets, ] hats, caps, sweatshirts [, ties, bandanas ]
U.S. RegistrationNo.
3849342 Application Date 05/17/2009
Registration Date 09/21/2010 Foreign PriorityDate
NONE
8/9/2019 Bob Marley opposes Marley Gang.pdf
8/87
Word Mark BOB MARLEY AND THE WAILERS
Design Mark
Description ofMark
NONE
Goods/Services Class 018. First use: First Use: 2009/01/00 First Use In Commerce: 2009/01/00
All purpose carrying bags
U.S. RegistrationNo.
4222036 Application Date 05/03/2012
Registration Date 10/09/2012 Foreign PriorityDate
NONE
Word Mark MARLEY
Design Mark
Description ofMark
NONE
Goods/Services Class 009. First use: First Use: 2011/07/27 First Use In Commerce: 2011/07/27
Headphones; ear buds; audio speakers; electronic docking stations; boomboxes; downloadable video recordings featuring music, artistic performances,and information about audio equipment; downloadable electronic newsletters inthe field ofentertainment and audio equipment
U.S. RegistrationNo.
4333844 Application Date 05/03/2012
Registration Date 05/14/2013 Foreign PriorityDate NONE
Word Mark MARLEY
8/9/2019 Bob Marley opposes Marley Gang.pdf
9/87
Design Mark
Description ofMark
NONE
Goods/Services Class 041. First use: First Use: 2011/01/00 First Use In Commerce: 2011/01/00
Entertainment services, namely, providing a website featuring information relat-ing to music tours and live stage eventsrelating thereto; nondownloadablevideorecordings featuring music, and artistic performances; organizing and con-ducting music tours; providing online electronic newsletters delivered by email inthefield of entertainment and audio equipment
U.S. RegistrationNo.
4394278 Application Date 04/14/2009
Registration Date 09/03/2013 Foreign PriorityDate
NONE
Word Mark MARLEY
Design Mark
Description of
Mark
NONE
Goods/Services Class 025. First use: First Use: 2003/02/00 First Use In Commerce: 2003/02/00
Clothing, namely, shirts and headwear
U.S. RegistrationNo.
4222035 Application Date 05/03/2012
Registration Date 10/09/2012 Foreign PriorityDate
NONE
Word Mark M M A R L E Y
8/9/2019 Bob Marley opposes Marley Gang.pdf
10/87
Design Mark
Description ofMark
The mark consists of a caret centered between the peaks of a stylized capital"M" all centered above the word "MARLEY".
Goods/Services Class 009. First use: First Use: 2011/07/27 First Use In Commerce: 2011/07/27
Headphones; ear buds; audio speakers; electronic docking stations; boomboxes; downloadable video recordings featuring music, artistic performances,and information about audio equipment
U.S. RegistrationNo.
4333843 Application Date 05/03/2012
Registration Date 05/14/2013 Foreign PriorityDate
NONE
Word Mark M M A R L E Y
Design Mark
Description ofMark
The mark consists of a caret centered between the peaks of a stylized capital"M", all centered above the word "MARLEY".
Goods/Services Class 041. First use: First Use: 2011/01/00 First Use In Commerce: 2011/01/00
Entertainment services, namely, providing a website featuring information relat-
ing to music tours and live stage eventsrelating thereto; nondownloadablevideorecordings featuring music, and artistic performances; organizing and con-ducting music tours; providing online electronic newsletters delivered by email inthefield of entertainment and audio equipment
U.S. RegistrationNo.
4150381 Application Date 05/05/2008
Registration Date 05/29/2012 Foreign PriorityDate
NONE
Word Mark MARLEY COFFEE
8/9/2019 Bob Marley opposes Marley Gang.pdf
11/87
Design Mark
Description ofMark
NONE
Goods/Services Class 016. First use: First Use: 2011/12/21 First Use In Commerce: 2011/12/21
greeting cards, blank journals, bumper stickers, calendars, and stickers
U.S. RegistrationNo.
4242186 Application Date 05/05/2008
Registration Date 11/13/2012 Foreign Priority
Date
NONE
Word Mark MARLEY COFFEE
Design Mark
Description ofMark
NONE
Goods/Services Class 021. First use: First Use: 2011/12/21 First Use In Commerce: 2011/12/21
Coffee cups, coffee mugs, travel mugs and beverageware
U.S. RegistrationNo.
4158045 Application Date 05/05/2008
Registration Date 06/12/2012 Foreign PriorityDate
NONE
Word Mark MARLEY COFFEE
Design Mark
8/9/2019 Bob Marley opposes Marley Gang.pdf
12/87
Description ofMark
NONE
Goods/Services Class 025. First use: First Use: 2011/12/21 First Use In Commerce: 2011/12/21
Clothing, namely, shirts, aprons, sweatshirts, underwear, infant wear; sleep-wear; footwear; headwear
U.S. Registration
No.
3871574 Application Date 05/05/2008
Registration Date 11/02/2010 Foreign PriorityDate
NONE
Word Mark MARLEY COFFEE
Design Mark
Description ofMark
NONE
Goods/Services Class 025. First use: First Use: 2009/05/28 First Use In Commerce: 2009/05/28
Clothing, namely, T-shirts and zipperedpull-over jackets
U.S. RegistrationNo.
4254177 Application Date 05/05/2008
Registration Date 12/04/2012 Foreign PriorityDate
NONE
Word Mark MARLEY COFFEE
Design Mark
Description ofMark
NONE
Goods/Services Class 030. First use: First Use: 2009/04/22 First Use In Commerce: 2009/04/22
Coffee, coffee-based beverages, espresso, tea, coffee beans, unroasted coffee
U.S. RegistrationNo.
4328523 Application Date 05/05/2008
Registration Date 04/30/2013 Foreign PriorityDate
NONE
8/9/2019 Bob Marley opposes Marley Gang.pdf
13/87
Word Mark MARLEY COFFEE
Design Mark
Description ofMark
NONE
Goods/Services Class 031. First use: First Use: 2010/04/00 First Use In Commerce: 2010/04/00
Unprocessed coffee
U.S. RegistrationNo.
4187013 Application Date 05/05/2008
Registration Date 08/07/2012 Foreign PriorityDate
NONE
Word Mark MARLEY COFFEE
Design Mark
Description ofMark
NONE
Goods/Services Class 035. First use: First Use: 2009/04/22 First Use In Commerce: 2009/04/22
Retail store services featuring coffee,tea, beverageware, coffee makers, coffeegrinders, and espresso makers, and beans
U.S. RegistrationNo.
3778736 Application Date 05/05/2008
Registration Date 04/20/2010 Foreign PriorityDate
NONE
Word Mark MARLEY COFFEE
8/9/2019 Bob Marley opposes Marley Gang.pdf
14/87
Design Mark
Description ofMark
NONE
Goods/Services Class 040. First use: First Use: 2009/04/22 First Use In Commerce: 2009/04/22
Coffee roasting and processing
U.S. RegistrationNo.
3612800 Application Date 08/18/2006
Registration Date 04/28/2009 Foreign Priority
Date
NONE
Word Mark MARLEY RESORT & SPA
Design Mark
Description ofMark
NONE
Goods/Services Class 043. First use: First Use: 2008/07/04 First Use In Commerce: 2008/07/04
Hotel services, namely, serving food and drinks and providing temporary accom-modations and lodging
U.S. Registration
No.
4044256 Application Date 02/01/2011
Registration Date 10/25/2011 Foreign PriorityDate
NONE
Word Mark HOUSE OF MARLEY MARETT TSEHAI DAM
8/9/2019 Bob Marley opposes Marley Gang.pdf
15/87
Design Mark
Description ofMark
The mark consists of a crest design of two heraldic lions facing forward, one ofwhich is resting its paw on a foil, while both are holding an ornate shield depict-ing a star and cross design between them, having a bejeweled crown abovetheshield, a ribbon and additional ornamentation below the shield with the words"MARETT TSEHAI DAM" inside the ribbon, and the words "HOUSE OF MAR-LEY" centered at the bottom of the design.
Goods/Services Class 011. First use: First Use: 2009/09/00 First Use In Commerce: 2009/09/00
Lamps
U.S. RegistrationNo.
4044257 Application Date 02/01/2011
Registration Date 10/25/2011 Foreign PriorityDate
NONE
Word Mark HOUSE OF MARLEY MARETT TSEHAI DAM
8/9/2019 Bob Marley opposes Marley Gang.pdf
16/87
Design Mark
Description ofMark
The mark consists of a crest design of two heraldic lions facing forward, one ofwhich is resting its paw on a foil, while both are holding an ornate shield depict-ing a star and cross design between them, having a bejeweled crown abovetheshield, a ribbon and additional ornamentation below the shield with the words"MARETT TSEHAI DAM" inside the ribbon, and the words "HOUSE OF MAR-LEY" centered at the bottom of the design.
Goods/Services Class 014. First use: First Use: 2009/12/00 First Use In Commerce: 2009/12/00
Clocks
U.S. RegistrationNo.
4044258 Application Date 02/01/2011
Registration Date 10/25/2011 Foreign PriorityDate
NONE
Word Mark HOUSE OF MARLEY MARETT TSEHAI DAM
8/9/2019 Bob Marley opposes Marley Gang.pdf
17/87
Design Mark
Description ofMark
The mark consists of a crest design of two heraldic lions facing forward, one ofwhich is resting its paw on a foil, while both are holding an ornate shield depict-ing a star and cross design between them, having a bejeweled crown abovetheshield, a ribbon and additional ornamentation below the shield with the words"MARETT TSEHAI DAM" inside the ribbon, and the words "HOUSE OF MAR-LEY" centered at the bottom of the design.
Goods/Services Class 016. First use: First Use: 2010/01/00 First Use In Commerce: 2010/01/00
Posters, calendars, blank journals, notebooks, folders, pencil pouches, stickers,and iron-on transfers
U.S. Registration
No.
4044259 Application Date 02/01/2011
Registration Date 10/25/2011 Foreign PriorityDate
NONE
Word Mark HOUSE OF MARLEY MARETT TSEHAI DAM
8/9/2019 Bob Marley opposes Marley Gang.pdf
18/87
Design Mark
Description ofMark
The mark consists of a crest design of two heraldic lions facing forward, one ofwhich is resting its paw on a foil, while both are holding an ornate shield depict-ing a star and cross design between them, having a bejeweled crown abovetheshield, a ribbon and additional ornamentation below the shield with the words"MARETT TSEHAI DAM" inside the ribbon, and the words "HOUSE OF MAR-LEY" centered at the bottom of the design.
Goods/Services Class 018. First use: First Use: 2010/11/00 First Use In Commerce: 2010/11/00
Wallets
U.S. RegistrationNo.
4044260 Application Date 02/01/2011
Registration Date 10/25/2011 Foreign PriorityDate
NONE
Word Mark HOUSE OF MARLEY MARETT TSEHAI DAM
8/9/2019 Bob Marley opposes Marley Gang.pdf
19/87
Design Mark
Description ofMark
The mark consists of a crest design of two heraldic lions facing forward, one ofwhich is resting its paw on a foil, while both are holding an ornate shield depict-ing a star and cross design between them, having a bejeweled crown abovetheshield, a ribbon and additional ornamentation below the shield with the words"MARETT TSEHAI DAM" inside the ribbon, and the words "HOUSE OF MAR-LEY" centered at the bottom of the design.
Goods/Services Class 020. First use: First Use: 2009/11/00 First Use In Commerce: 2009/11/00
Plastic key chains; mirrors
Class 021. First use: First Use: 2009/11/00 First Use In Commerce: 2009/11/00
Beverage glassware; beverage mugs
U.S. RegistrationNo.
4044261 Application Date 02/01/2011
Registration Date 10/25/2011 Foreign PriorityDate
NONE
Word Mark HOUSE OF MARLEY MARETT TSEHAI DAM
8/9/2019 Bob Marley opposes Marley Gang.pdf
20/87
Design Mark
Description ofMark
The mark consists of a crest design of two heraldic lions facing forward, one ofwhich is resting its paw on a foil, while both are holding an ornate shield depict-ing a star and cross design between them, having a bejeweled crown abovetheshield, a ribbon and additional ornamentation below the shield with the words"MARETT TSEHAI DAM" inside the ribbon, and the words "HOUSE OF MAR-LEY" centered at the bottom of the design.
Goods/Services Class 024. First use: First Use: 2010/01/00 First Use In Commerce: 2010/01/00
Bed or throw blankets; fabric banners
U.S. RegistrationNo.
4044262 Application Date 02/01/2011
Registration Date 10/25/2011 Foreign PriorityDate
NONE
Word Mark HOUSE OF MARLEY MARETT TSEHAI DAM
8/9/2019 Bob Marley opposes Marley Gang.pdf
21/87
Design Mark
Description ofMark
The mark consists of a crest design of two heraldic lions facing forward, one ofwhich is resting its paw on a foil, while both are holding an ornate shield depict-ing a star and cross design between them, having a bejeweled crown abovetheshield, a ribbon and additional ornamentation below the shield with the words"MARETT TSEHAI DAM" inside the ribbon, and the words "HOUSE OF MAR-LEY" centered at the bottom of the design.
Goods/Services Class 025. First use: First Use: 2009/12/00 First Use In Commerce: 2009/12/00
Clothing, namely, shirts, t-shirts, tank tops, board shorts, and hoodedshirts;footwear; headwear; and belts
U.S. Registration
No.
4044263 Application Date 02/01/2011
Registration Date 10/25/2011 Foreign PriorityDate
NONE
Word Mark HOUSE OF MARLEY MARETT TSEHAI DAM
8/9/2019 Bob Marley opposes Marley Gang.pdf
22/87
Design Mark
Description ofMark
The mark consists of a crest design of two heraldic lions facing forward, one ofwhich is resting its paw on a foil, while both are holding an ornate shield depict-ing a star and cross design between them, having a bejeweled crown abovetheshield, a ribbon and additional ornamentation below the shield with the words"MARETT TSEHAI DAM" inside the ribbon, and the words "HOUSE OF MAR-LEY" centered at the bottom of the design.
Goods/Services Class 026. First use: First Use: 2010/08/00 First Use In Commerce: 2010/08/00
Ornamental novelty buttons
U.S. RegistrationNo.
4044264 Application Date 02/01/2011
Registration Date 10/25/2011 Foreign PriorityDate
NONE
Word Mark HOUSE OF MARLEY MARETT TSEHAI DAM
8/9/2019 Bob Marley opposes Marley Gang.pdf
23/87
Design Mark
Description ofMark
The mark consists of a crest design of two heraldic lions facing forward, one ofwhich is resting its paw on a foil, while both are holding an ornate shield depict-ing a star and cross design between them, having a bejeweled crown abovetheshield, a ribbon and additional ornamentation below the shield with the words"MARETT TSEHAI DAM" inside the ribbon, and the words "HOUSE OF MAR-LEY" centered at the bottom of the design.
Goods/Services Class 028. First use: First Use: 2009/10/00 First Use In Commerce: 2009/10/00
Jigsaw puzzles, puzzle cubes, and snowboards
U.S. RegistrationNo.
4044265 Application Date 02/01/2011
Registration Date 10/25/2011 Foreign PriorityDate
NONE
Word Mark HOUSE OF MARLEY MARETT TSEHAI DAM
8/9/2019 Bob Marley opposes Marley Gang.pdf
24/87
Design Mark
Description ofMark
The mark consists of a crest design of two heraldic lions facing forward, one ofwhich is resting its paw on a foil, while both are holding an ornate shield depict-ing a star and cross design between them, having a bejeweled crown abovetheshield, a ribbon and additional ornamentation below the shield with the words"MARETT TSEHAI DAM" inside the ribbon, and the words "HOUSE OF MAR-LEY" centered at the bottom of the design.
Goods/Services Class 034. First use: First Use: 2010/09/00 First Use In Commerce: 2010/09/00
Lighters for smokers
Attachments 77113202#TMSN.png( bytes )75489475#TMSN.png( bytes )85050981#TMSN.png( bytes )76656675#TMSN.png( bytes )85978890#TMSN.png( bytes )85546953#TMSN.png( bytes )85980314#TMSN.png( bytes )85050983#TMSN.png( bytes )85050984#TMSN.png( bytes )85050985#TMSN.png( bytes )85800123#TMSN.png( bytes )76441329#TMSN.png( bytes )77738863#TMSN.png( bytes )85615215#TMSN.png( bytes )
85615216#TMSN.png( bytes )77713973#TMSN.png( bytes )85615212#TMSN.png( bytes )85615214#TMSN.png( bytes )77465753#TMSN.png( bytes )77465923#TMSN.png( bytes )77465974#TMSN.png( bytes )77978626#TMSN.png( bytes )77466002#TMSN.png( bytes )77466111#TMSN.png( bytes )77466142#TMSN.png( bytes )
8/9/2019 Bob Marley opposes Marley Gang.pdf
25/87
77466174#TMSN.png( bytes )76664835#TMSN.png( bytes )85230791#TMSN.png( bytes )85230792#TMSN.png( bytes )85230794#TMSN.png( bytes )85230795#TMSN.png( bytes )85230796#TMSN.png( bytes )85230799#TMSN.png( bytes )
85230800#TMSN.png( bytes )85230801#TMSN.png( bytes )85230802#TMSN.png( bytes )85230803#TMSN.png( bytes )Notice of Opposition - MARLEY GANG.pdf(1550567 bytes )Notice of Opposition - MARLEY GANG (based on THE MARLEY BROTH-ERS).pdf(130808 bytes )
Certificate of Service
The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their addressrecord by First Class Mail on this date.
Signature /natashashabani/
Name Natasha Shabani
Date 09/23/2014
8/9/2019 Bob Marley opposes Marley Gang.pdf
26/87
28217-00102/2256104.1 1
Attorney Docket No.: 28217-00102
IN THE UNITED STATES PATENT AND TRADEMARK OFFICEBEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
In re Matter of Application No. 86/114,638for the mark: MARLEY GANG
Fifty-Six Hope Road Music Limited,
Opposer,
v.
S & M Media Group, LLC,
Applicant.
Opposition No. __________________
NOTICE OF OPPOSITION
Mark: MARLEY GANG
Serial No. 86/114,638
SUBMITTED ELECTRONICALLY
Commissioner for TrademarksATTN: Trademark Trial and Appeal Board P.O. Box 1451Alexandria, Virginia 22313-1451
Dear Commissioner:
Opposer, Fifty-Six Hope Road Music Limited, a Bahamas International Business
Company (Opposer), having its principal place of business at Aquamarine House, Cable
Beach, Nassau, Bahamas, believes that it will be damaged by the registration of the mark
MARLEY GANG, as shown in U.S. Application Serial No. 86/114,638 (the Application), and
hereby opposes its registration on the following grounds:
FACTUAL BACKGROUND AS TO OPPOSER
1. Opposer is owned and operated by the majority of the children and widow of the
world-renowned reggae artist, Bob Marley, and is the owner of all intellectual property rights in
8/9/2019 Bob Marley opposes Marley Gang.pdf
27/87
28217-00102/2256104.1 2
the name and likeness of Bob Marley, as well as those derived from the musical legacy of Bob
Marley.
2. Bob Marley was born on the Caribbean island of Jamaica and is well-known for
his roots in the Caribbean.
3. Opposer first used the mark BOB MARLEY at least as early as 1970 for in
Class 9 for audio/visual recordings featuring music; downloadable ring tones for cell phones,
musical sound recordings; digital music downloadable from the Internet. Such date of first use
precedes Applicants filing date.
4. Opposer owns the trademark BOB MARLEY (Reg. No. 2,349,361) in Classes 3,
6, 9, 14, 16, 18, 21, 24, 25 and 26; the trademark BOB MARLEY (Reg. No. 3,934,085) in
Class 9 for audio/visual recordings featuring music; downloadable ring tones for cell phones,
musical sound recordings; digital music downloadable from the Internet; the trademark BOB
MARLEY (Reg. No. 3,692,924) in Class 43 for restaurant services, namely, preparation and
service of food and beverages for consumption; the trademark BOB MARLEY (Reg. No.
4,340,082) in Class 9 for cell phone accessories, namely, headsets, audio speakers for cell
phones, and hands free headsets; computer carrying cases; electronic docking and charging
stations for cell phones; electronic docking stations including speakers for portable electronic
devices and media players; downloadable photo images; ear buds; eyewear; eyewear cases;
goggles for sports; headphones; loudspeakers; and covers for cell phones and other mobile
devices; the trademark BOB MARLEY (Reg. No. 4,572,816) in Class 15 for musical
instruments; the trademark BOB MARLEY (Reg. 4,440,368) in Class 15 for guitar picks;
musical instrument accessories, namely guitar straps; the trademark BOB MARLEY (Reg. No.
8/9/2019 Bob Marley opposes Marley Gang.pdf
28/87
28217-00102/2256104.1 3
4,425,858) in Class 29 for fruit-based food beverages, milk-based beverage containing coffee;
the trademark BOB MARLEY (Reg. No. 4,422,220) in Class 30 for coffee; coffee beans; coffee-
based beverages; espresso; herbal food beverages; tea; tea-based beverages; and unroasted
coffees; the trademark BOB MARLEY (Reg. No. 4,422,221) in Class 32 for fruit drinks, fruit-
flavored beverages; herbal juices; lemonade; the trademark BOB MARLEY A TRIBUTE TO
FREEDOM & Design (Reg. No, 4,375,700) in Class 41 for nightclub services, namely,
arranging and conducting nightclub entertainment events, and Class 43 for restaurant services;
take-out restaurant services; the trademark BOB MARLEY AND THE WAILERS (Reg. No.
2,820,741) in Class 9 for series of sound and video recordings featuring music and downloadable
sound and video recordings featuring music, and Class 25 for T-shirts, thermal shirts, hats, caps,
sweatshirts; the trademark BOB MARLEY AND THE WAILERS (Reg. No. 3,849,342) in Class
18 for all-purpose carrying bags; the trademark MARLEY (Reg. No. 4,222,036) in Class 9 for
headphones; ear buds; audio speakers; electronic docking stations; boom boxes; downloadable
video recordings featuring music, artistic performances, and information about audio equipment;
downloadable electronic newsletters in the field of entertainment and audio equipment; the
trademark MARLEY (Reg. No. 4,333,844) in Class 41 for entertainment services, namely,
providing a website featuring information relating to music tours and live stage events relating
thereto; nondownloadable video recordings featuring music, and artistic performances;
organizing and conducting music tours; providing online electronic newsletters delivered by
email in the field of entertainment and audio equipment; the trademark MARLEY (Reg. No.
4,394,278) in Class 25 for clothing, namely, shirts and headwear; the trademark M MARLEY &
Design (Reg. No. 4,222,035) in Class 9 for headphones; ear buds; audio speakers; electronic
docking stations; boom boxes; downloadable video recordings featuring music, artistic
8/9/2019 Bob Marley opposes Marley Gang.pdf
29/87
28217-00102/2256104.1 4
performances, and information about audio equipment; the trademark M MARLEY & Design
(Reg. No. 4,333,843) in Class 41 for entertainment services, namely, providing a website
featuring information relating to music tours and live stage events relating thereto;
nondownloadable video recordings featuring music, and artistic performances; organizing and
conducting music tours; providing online electronic newsletters delivered by email in the field of
entertainment and audio equipment; the trademark MARLEY COFFEE (Reg. No. 4,150,381) in
Class 16 for greeting cards, blank journals, bumper stickers, calendars, and stickers; the
trademark MARLEY COFFEE (Reg. No. 4,242,186) in Class 21 for coffee cups, coffee mugs,
travel mugs and beverageware; the trademark MARLEY COFFEE (Reg. No. 4,158,045) in Class
25 for clothing, namely, shirts, aprons, sweatshirts, underwear, infant wear; sleepwear; footwear;
headwear; the trademark MARLEY COFFEE (Reg. No. 3,871,574) in Class 25 for clothing,
namely, t-shirts and zippered pull-over jackets; the trademark MARLEY COFFEE (Reg. No.
4,254,177) in Class 30 for coffee, coffee-based beverages, espresso, tea, coffee beans, unroasted
coffee; the trademark MARLEY COFFEE (Reg. No. 4,328,523) in Class 31 for unprocessed
coffee; the trademark MARLEY COFFEE (Reg. No. 4,187,013) in Class 35 for retail store
services featuring coffee, tea, beverageware, coffee makers, coffee grinders, and espresso
makers, and beans; the trademark MARLEY COFFEE (Reg. No. 3,778,736) in Class 40 for
coffee roasting and processing; the trademark MARLEY RESORT & SPA (Reg. No. 3,612,800)
in Class 43 for hotel services, namely, serving food and drinks and providing temporary
accommodations and lodging; the trademark HOUSE OF MARLEY MARETT TSEHAI DAM
& Design (Reg. No. 4,044,256) in Class 11 for lamps; the trademark HOUSE OF MARLEY
MARETT TSEHAI DAM & Design (Reg. No. 4,044,257) in Class 14 for clocks; the trademark
HOUSE OF MARLEY MARETT TSEHAI DAM & Design (Reg. No. 4,044,258) in Class 16
8/9/2019 Bob Marley opposes Marley Gang.pdf
30/87
28217-00102/2256104.1 5
for posters, calendars, blank journals, notebooks, folders, pencil pouches, stickers, and iron-on
transfers; the trademark HOUSE OF MARLEY MARETT TSEHAI DAM & Design (Reg. No.
4,044,259) in Class 18 for wallets; the trademark HOUSE OF MARLEY MARETT TSEHAI
DAM & Design (Reg. No. 4,044,260) in Class 20 for plastic key chains and mirrors, and in Class
21 for beverage glassware and beverage mugs; the trademark HOUSE OF MARLEY MARETT
TSEHAI DAM & Design (Reg. No. 4,044,261) in Class 24 for bed or throw blankets, and fabric
banners; the trademark HOUSE OF MARLEY MARETT TSEHAI DAM & Design (Reg. No.
4,044,262) in Class 25 for clothing, namely, shirts, t-shirts, tank tops, board shorts, and hooded
shirts; footwear; headwear; and belts; the trademark HOUSE OF MARLEY MARETT TSEHAI
DAM & Design (Reg. No. 4,044,263) in Class 26 for ornamental novelty buttons; the trademark
HOUSE OF MARLEY MARETT TSEHAI DAM & Design (Reg. No. 4,044,264) in Class 28
for jigsaw puzzles, puzzle cubes, and snowboards; the trademark HOUSE OF MARLEY
MARETT TSEHAI DAM & Design (Reg. No. 4,044,265) in Class 34 for lighters for smokers
(hereinafter collectively referred to as the MARLEY Marks), and all other rights associated
with goods and services offered under the MARLEY Marks (the Marley Goods and Services).
True and correct copies of the registrations of the MARLEY Marks are attached hereto as
Exhibit A.
5. Opposer first used the mark BOB MARLEY at least as early as 1990 for greeting
cards, stickers, portfolios, postcards, postcard books, songbooks, decals, trading cards, calendars,
novels and bookmarks in Class 16; for textile wall hangings in Class 24; for t-shirts, thermal
shirts, jackets, hats, caps, sweatshirts, ties and bandannas in Class 25; and for ornamental cloth
patches in Class 26. Such date of first use precedes Applicants filing date.
8/9/2019 Bob Marley opposes Marley Gang.pdf
31/87
28217-00102/2256104.1 6
6. Opposer first used the mark BOB MARLEY at least as early as 1992 for
backpacks, fanny packs, wallets and tote bags in Class 18. Such date of first use precedes
Applicants filing date.
7. Opposer first used the mark BOB MARLEY at least as early as 1994 for jewelry,
watches and medallions in Class 14. Such date of first use precedes Applicants filing date.
8. Opposer first used the mark BOB MARLEY at least as early as 1995 for novelty
license plates in Class 6 and for mugs in Class 21. Such date of first use precedes Applicants
filing date.
9. Opposer first used the mark BOB MARLEY at least as early as 1996 for incense
in Class 3, and for plastic cases for beepers and magnets in Class 9. Such date of first use
precedes Applicants filing date.
10. Opposer first used the mark BOB MARLEY at least as early as February 6, 1999
for restaurant services, namely, preparation and service of food and beverages for consumption
in Class 43. Such date of first use precedes Applicants filing date.
11. Opposer first used the mark BOB MARLEY at least as early as July 27, 2011 for
cell phone accessories, namely, headsets, audio speakers for cell phones, and hands free
headsets; computer carrying cases; electronic docking and charging stations for cell phones;
electronic docking stations including speakers for portable electronic devices and media players;
downloadable photo images; ear buds; eyewear; eyewear cases; goggles for sports; headphones;
loudspeakers; and covers for cell phones and other mobile devices in Class 9. Such date of first
use precedes Applicants filing date.
8/9/2019 Bob Marley opposes Marley Gang.pdf
32/87
28217-00102/2256104.1 7
12. Opposer first used the mark BOB MARLEY at least as early as March 31, 2008
for musical instruments in Class 15. Such date of first use precedes Applicants filing date.
13. Opposer first used the mark BOB MARLEY at least as early as April 4, 2011 for
guitar picks; musical instrument accessories, namely guitar straps in Class 15. Such date of first
use precedes Applicants filing date.
14. Opposer first used the mark BOB MARLEY at least as early as July 2, 2010 for
fruit-based food beverages, milk-based beverage containing coffee in Class 29. Such date of first
use precedes Applicants filing date.
15. Opposer first used the mark BOB MARLEY at least as early as July 2, 2010 for
coffee; coffee beans; coffee-based beverages; espresso; herbal food beverages; tea; tea-based
beverages; and unroasted coffees in Class 30. Such date of first use precedes Applicants filing
date.
16. Opposer first used the mark BOB MARLEY A TRIBUTE TO FREEDOM &
Design at least as early as February 6, 1999 for nightclub services, namely, arranging and
conducting nightclub entertainment events in Class 41, and for restaurant services; take-out
restaurant services in Class 43. Such date of first use precedes Applicants filing date.
17. Opposer first used the mark BOB MARLEY AND THE WAILERS at least as
early as 1973 for sound and video recordings in Class 9, and for t-shirts, thermal shirts, jackets,
hats, caps, sweatshirts, ties, and bandannas in Class 25. Such date of first use precedes
Applicants filing date.
8/9/2019 Bob Marley opposes Marley Gang.pdf
33/87
28217-00102/2256104.1 8
18. Opposer first used the mark BOB MARLEY AND THE WAILERS at least as
early as January 2009 for all purpose carrying bags in Class 18. Such date of first use precedes
Applicants filing date.
19. Opposer first used the mark MARLEY at least as early as July 27, 2011 for
headphones; ear buds; audio speakers; electronic docking stations; boom boxes; downloadable
video recordings featuring music, artistic performances, and information about audio equipment;
downloadable electronic newsletters in the field of entertainment and audio equipment in
Class 9. Such date of first use precedes Applicants filing date.
20. Opposer first used the mark MARLEY at least as early as January 2011 for
entertainment services, namely, providing a website featuring information relating to music tours
and live stage events relating thereto; nondownloadable video recordings featuring music, and
artistic performances; organizing and conducting music tours; providing online electronic
newsletters delivered by email in the field of entertainment and audio equipment in Class 41.
Such date of first use precedes Applicants filing date.
21. Opposer first used the mark MARLEY at least as early as February 2003 for
clothing, namely, shirts and headwear in Class 25. Such date of first use precedes Applicants
filing date.
22. Opposer first used the mark M MARLEY & Design at least as early as July 27,
2011 for headphones; ear buds; audio speakers; electronic docking stations; boom boxes;
downloadable video recordings featuring music, artistic performances, and information about
audio equipment in Class 9. Such date of first use precedes Applicants filing date.
8/9/2019 Bob Marley opposes Marley Gang.pdf
34/87
28217-00102/2256104.1 9
23. Opposer first used the mark M MARLEY & Design at least as early as July 27,
2011 for entertainment services, namely, providing a website featuring information relating to
music tours and live stage events relating thereto; nondownloadable video recordings featuring
music, and artistic performances; organizing and conducting music tours; providing online
electronic newsletters delivered by email in the field of entertainment and audio equipment in
Class 41. Such date of first use precedes Applicants filing date.
24. Opposer first used the mark MARLEY COFFEE at least as early as December 21,
2011 for greeting cards, blank journals, bumper stickers, calendars, and stickers in Class 16.
Such date of first use precedes Applicants filing date.
25. Opposer first used the mark MARLEY COFFEE at least as early as December 21,
2011 for clothing, namely, shirts, aprons, sweatshirts, underwear, infant wear; sleepwear;
footwear; headwear in Class 25. Such date of first use precedes Applicants filing date.
26. Opposer first used the mark MARLEY COFFEE at least as early as May 28, 2009
for clothing, namely, T-shirts and zippered pull-over jackets in Class 25. Such date of first use
precedes Applicants filing date.
27. Opposer first used the mark MARLEY COFFEE at least as early as April 2010
for unprocessed coffee in Class 31. Such date of first use precedes Applicants filing date.
28. Opposer first used the mark MARLEY COFFEE at least as early as April 22,
2009 for retail store services featuring coffee, tea, beverageware, coffee makers, coffee grinders,
and espresso makers, and beans in Class 35. Such date of first use precedes Applicants filing
date.
8/9/2019 Bob Marley opposes Marley Gang.pdf
35/87
28217-00102/2256104.1 10
29. Opposer first used the mark MARLEY COFFEE at least as early as April 22,
2009 for coffee roasting and processing in Class 40. Such date of first use precedes Applicants
filing date.
30. Opposer first used the mark MARLEY RESORT & SPA at least as early as
July 4, 2008 for hotel services, namely, serving food and drinks and providing temporary
accommodations and lodging in Class 43. Such date of first use precedes Applicants filing date.
31. Opposer first used the mark HOUSE OF MARLEY MARETT TSEHAI DAM &
Design at least as early as September 2009 for lamps in Class 11. Such date of first use precedes
Applicants filing date.
32. Opposer first used the mark HOUSE OF MARLEY MARETT TSEHAI DAM &
Design at least as early as December 2009 for clocks in Class 14. Such date of first use precedes
Applicants filing date.
33. Opposer first used the mark HOUSE OF MARLEY MARETT TSEHAI DAM &
Design at least as early as January 2010 for posters, calendars, blank journals, notebooks,
folders, pencil pouches, stickers, and iron-on transfers in Class 16. Such date of first use
precedes Applicants filing date.
34. Opposer first used the mark HOUSE OF MARLEY MARETT TSEHAI DAM &
Design at least as early as November 2010 for wallets in Class 18. Such date of first use
precedes Applicants filing date.
35. Opposer first used the mark HOUSE OF MARLEY MARETT TSEHAI DAM &
Design at least as early as November 2009 for plastic key chains and mirrors in Class 20, and at
8/9/2019 Bob Marley opposes Marley Gang.pdf
36/87
28217-00102/2256104.1 11
least as early as November 2009 for beverage glassware and beverage mugs in Class 21. Such
dates of first use precede Applicants filing date.
36. Opposer first used the mark HOUSE OF MARLEY MARETT TSEHAI DAM &
Design at least as early as January 2010 for bed or throw blankets and fabric banners in Class 24.
Such date of first use precedes Applicants filing date.
37. Opposer first used the mark HOUSE OF MARLEY MARETT TSEHAI DAM &
Design at least as early as December 2009 for clothing, namely, shirts, t-shirts, tank tops, board
shorts, and hooded shirts; footwear; headwear; and belts in Class 25. Such date of first use
precedes Applicants filing date.
38. Opposer first used the mark HOUSE OF MARLEY MARETT TSEHAI DAM &
Design at least as early as August 2010 for ornamental novelty buttons in Class 26. Such date of
first use precedes Applicants filing date.
39. Opposer first used the mark HOUSE OF MARLEY MARETT TSEHAI DAM &
Design at least as early as October 2009 for jigsaw puzzles, puzzle cubes, and snowboards in
Class 28. Such date of first use precedes Applicants filing date.
40. Opposer first used the mark HOUSE OF MARLEY MARETT TSEHAI DAM &
Design at least as early as September 2010 for lighters for smokers in Class 34. Such date of
first use precedes Applicants filing date.
41. The Marley Goods and Services have been favorably received and are otherwise
recognized by the consuming public and are associated with Opposer and the late musical
legend, Bob Marley.
8/9/2019 Bob Marley opposes Marley Gang.pdf
37/87
28217-00102/2256104.1 12
42. The MARLEY Marks are advertised and promoted together, in whole or in part,
and constitute a family of trademarks.
FACTUAL BACKGROUND REGARDING THE APPLICATION
43. On November 9, 2013, Applicant S & M Media Group, LLC (Applicant),
having a place of business at 4219 Apt E, Yanceyville Rd., Browns Summit, NC 27214, filed the
Application seeking registration, on an intent-to-use basis, of MARLEY GANG for, Audio and
video recordings featuring music and artistic performances; Compact discs featuring music;
Digital music systems that synchronizes digital radio files stored on a home unit, a car unit, or
portable unit and that may be backed up to an internet depository; Downloadable MP3 files, MP3
recordings, on-line discussion board posts, webcasts, webinars and podcasts featuring music,
audio books in the field of rap, and news broadcasts; Downloadable ring tones, graphics and
music via a global computer network and wireless devices; Downloadable video recordings
featuring music; Downloadable music via the internet and wireless devices; Musical recordings;
Musical video recordings; Visual recordings and audiovisual recordings featuring music and
animation in Class 9.
44. The Application was published for opposition in the Official Gazette on May 27,
2014. Opposer was granted a thirty-day extension and a sixty-day extension of time to oppose
the Application.
45. Applicant appears to be making use in commerce of MARLEY GANG in
connection with a musical group.
FIRST GROUND LIKELIHOOD OF CONFUSION
46. Opposer incorporates the allegations contained in Paragraphs 1 to 45 herein.
8/9/2019 Bob Marley opposes Marley Gang.pdf
38/87
28217-00102/2256104.1 13
47. Applicants proposed mark is similar in sound, appearance and meaning and is
confusingly similar to Opposers MARLEY Marks. Further, the goods and services to be offered
by Applicant are identical in some instances and similar and related in other instances to those
offered under Opposers MARLEY Marks.
48. Applicants mark is likely to cause confusion, mistake, or deception as to the
source, origin, affiliation, connection or association of Applicants goods and services offered or
to be offered under the MARLEY GANG mark.
SECOND GROUND LIKELIHOOD OF DILUTION
49. Opposer incorporates the allegations contained in Paragraphs 1 to 48 herein.
50. The MARLEY Marks are inherently distinctive and have acquired secondary
meaning and are associated with Opposer and Bob Marley. The MARLEY Marks are famous
and distinctive and Bob Marley is famous within the meaning of the Federal Trademark Dilution
Act. Applicant filed the Application after the MARLEY Marks and Bob Marley had become
famous, and Applicant seeks to commercially use the applied-for mark MARLEY GANG.
51. The mark shown in the Application is likely to dilute Opposers MARLEY
Marks.
THIRD GROUND FALSE ASSOCIATION WITH BOB MARLEY
52. Opposer incorporates the allegations contained in Paragraphs 1 to 51 herein.
53. The name and mark MARLEY is associated with Bob Marley and Opposer. Bob
Marley is and has been enormously famous and world renowned for many years.
8/9/2019 Bob Marley opposes Marley Gang.pdf
39/87
28217-00102/2256104.1 14
54. Opposers MARLEY Marks were used prior to Applicants filing date of the
application to register MARLEY GANG.
55. Applicants proposed mark is the same or a close approximation of, as Bob
Marleys name and trademark, which was previously used by and associated with Opposer and
Bob Marley. The name and mark MARLEY is recognized as such, in that it uniquely and
unmistakably points to Opposer and/or Bob Marley. Neither Opposer nor Bob Marley is
connected with the goods or services sold, to be sold, offered, or to be offered by Applicant
under the MARLEY GANG mark; and the fame and reputation of Opposer and Bob Marley is of
such a nature that a connection with Opposer and Bob Marley is presumed when Applicants
MARLEY GANG mark is used on or with Applicants goods and services.
56. The registration of the MARLEY GANG mark will falsely suggest a connection,
association, or sponsorship with Opposer and/or Bob Marley. Consumers will erroneously
believe that Applicants goods and services are licensed or sponsored by, or otherwise
connected, affiliated, or associated with, Opposer and/or Bob Marley.
DAMAGE TO OPPOSER
57. As a result of all of the foregoing, the maturation of the Application into a
registration would (a) cause a likelihood of confusion, mistake, or deception as to the source,
origin, affiliation, connection, or association of Opposers MARLEY Goods and Services and
Applicants MARLEY GANG goods and services, (b) cause a likelihood of dilution of the
MARLEY Marks, and (c) falsely suggest a connection or association with Bob Marley and/or
Opposer.
8/9/2019 Bob Marley opposes Marley Gang.pdf
40/87
28217-00102/2256104.1 15
58. Opposer would be damaged by the registration of the mark shown in the
Application, in that such registration would give Applicant a prima facie exclusive right to the
use of MARLEY GANG, despite the likelihood of confusion, mistake, or deception, likelihood
of dilution, and likelihood of false connection or association with Bob Marley described above,
and will allow Applicant to trade on Opposers existing goodwill in the MARLEY Marks.
PRAYER
WHEREFORE, Opposer prays that this Opposition be sustained in favor of Opposer, that
the Application be rejected, and that registration of the Application be refused.
Please charge the requisite $300 opposition filing fee and any additional amounts to
Deposit Account No. 50-1833.
Dated: September 23, 2014 Respectfully submitted,
Jesse J. SaivarNatasha Shabani
GREENBERG GLUSKER FIELDSCLAMAN & MACHTINGER LLP1900 Avenue of the Stars, 21st FloorLos Angeles, California 90067Telephone: (310) 553-3610Facsimile: (310) 553-0687E-mail:[email protected];[email protected];
Attorneys for OpposerFifty-Six Hope Road Music Limited
mailto:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]8/9/2019 Bob Marley opposes Marley Gang.pdf
41/87
28217-00102/2256104.1 16
CERTIFICATE OF SERVICE
The undersigned hereby certifies that a true and correct copy of the foregoing NOTICE OFOPPOSITION was served on Applicant on September 24, 2014 by delivery via first class mail to
applicant at:
Antonio SpearsS & M Media Group
4219 Apt E, Yanceyville Rd.Browns Summit, North Carolina 27214
___________________________________Natasha Shabani
8/9/2019 Bob Marley opposes Marley Gang.pdf
42/87
8/9/2019 Bob Marley opposes Marley Gang.pdf
43/87
8/9/2019 Bob Marley opposes Marley Gang.pdf
44/87
8/9/2019 Bob Marley opposes Marley Gang.pdf
45/87
8/9/2019 Bob Marley opposes Marley Gang.pdf
46/87
8/9/2019 Bob Marley opposes Marley Gang.pdf
47/87
8/9/2019 Bob Marley opposes Marley Gang.pdf
48/87
8/9/2019 Bob Marley opposes Marley Gang.pdf
49/87
8/9/2019 Bob Marley opposes Marley Gang.pdf
50/87
8/9/2019 Bob Marley opposes Marley Gang.pdf
51/87
8/9/2019 Bob Marley opposes Marley Gang.pdf
52/87
8/9/2019 Bob Marley opposes Marley Gang.pdf
53/87
8/9/2019 Bob Marley opposes Marley Gang.pdf
54/87
8/9/2019 Bob Marley opposes Marley Gang.pdf
55/87
8/9/2019 Bob Marley opposes Marley Gang.pdf
56/87
8/9/2019 Bob Marley opposes Marley Gang.pdf
57/87
8/9/2019 Bob Marley opposes Marley Gang.pdf
58/87
8/9/2019 Bob Marley opposes Marley Gang.pdf
59/87
8/9/2019 Bob Marley opposes Marley Gang.pdf
60/87
8/9/2019 Bob Marley opposes Marley Gang.pdf
61/87
8/9/2019 Bob Marley opposes Marley Gang.pdf
62/87
8/9/2019 Bob Marley opposes Marley Gang.pdf
63/87
8/9/2019 Bob Marley opposes Marley Gang.pdf
64/87
8/9/2019 Bob Marley opposes Marley Gang.pdf
65/87
8/9/2019 Bob Marley opposes Marley Gang.pdf
66/87
8/9/2019 Bob Marley opposes Marley Gang.pdf
67/87
8/9/2019 Bob Marley opposes Marley Gang.pdf
68/87
8/9/2019 Bob Marley opposes Marley Gang.pdf
69/87
8/9/2019 Bob Marley opposes Marley Gang.pdf
70/87
8/9/2019 Bob Marley opposes Marley Gang.pdf
71/87
8/9/2019 Bob Marley opposes Marley Gang.pdf
72/87
8/9/2019 Bob Marley opposes Marley Gang.pdf
73/87
8/9/2019 Bob Marley opposes Marley Gang.pdf
74/87
8/9/2019 Bob Marley opposes Marley Gang.pdf
75/87
8/9/2019 Bob Marley opposes Marley Gang.pdf
76/87
8/9/2019 Bob Marley opposes Marley Gang.pdf
77/87
8/9/2019 Bob Marley opposes Marley Gang.pdf
78/87
8/9/2019 Bob Marley opposes Marley Gang.pdf
79/87
28217-00102/2256723.1 1
Attorney Docket No.: 28217-00102
IN THE UNITED STATES PATENT AND TRADEMARK OFFICEBEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
In re Matter of Application No. 86/114,638for the mark: MARLEY GANG
Ky-Mani Ronald Marley, Damian Robert NestaMarley, Julian Ricardo Marley, Stephen RobertNesta Marley, and David Nesta Marley,
Opposers,
v.
S & M Media Group, LLC,
Applicant.
Opposition No. __________________
NOTICE OF OPPOSITION
Mark: MARLEY GANG
Serial No. 86/114,638
SUBMITTED ELECTRONICALLY
Commissioner for TrademarksATTN: Trademark Trial and Appeal Board P.O. Box 1451Alexandria, Virginia 22313-1451
Dear Commissioner:
Ky-Mani Ronald Marley, Damian Robert Nesta Marley, Julian Ricardo Marley, Stephen
Robert Nesta Marley, and David Nesta Marley, all individuals (collectively, Opposers),
believe that they will be damaged by the registration of the mark MARLEY GANG, as shown in
U.S. Application Serial No. 86/114,638 (the Application), and hereby oppose its registration
on the following grounds:
FACTUAL BACKGROUND AS TO OPPOSER
1. Opposers are children of the world-renowned reggae artist, Bob Marley.
8/9/2019 Bob Marley opposes Marley Gang.pdf
80/87
28217-00102/2256723.1 2
2. Opposers are in privity with Fifty-Six Hope Road Music Limited, which is filing
an opposition against the Application concurrently herewith and was previously granted a thirty-
day extension and a sixty-day extension of time to oppose the Application. Privity is established
because Damian Robert Nesta Marley, Julian Ricardo Marley, Stephen Robert Nesta Marley, and
David Nesta Marley are all part owners in Fifty-Six Hope Road Music Limited.
3. Opposers own the trademark THE MARLEY BROTHERS (Reg. No. 3,535,883)
in Class 41 for entertainment, namely, live performances by a musical band (hereinafter
collectively referred to as the MARLEY Mark). A true and correct copy of the registration of
the MARLEY Mark is attached hereto as Exhibit A.
4. Opposers first used the mark THE MARLEY BROTHERS at least as early as
2004 in Class 41 for entertainment, namely, live performances by a musical band. Such date of
first use precedes Applicants filing date.
5. The trademark THE MARLEY BROTHERS is recognized by the consuming
public and is associated with Opposers and the late musical legend, Bob Marley.
FACTUAL BACKGROUND REGARDING THE APPLICATION
6. On November 9, 2013, Applicant S & M Media Group, LLC (Applicant),
having a place of business at 4219 Apt E, Yanceyville Rd., Browns Summit, NC 27214, filed the
Application seeking registration, on an intent-to-use basis, of MARLEY GANG for, Audio and
video recordings featuring music and artistic performances; Compact discs featuring music;
Digital music systems that synchronizes digital radio files stored on a home unit, a car unit, or
portable unit and that may be backed up to an internet depository; Downloadable MP3 files, MP3
recordings, on-line discussion board posts, webcasts, webinars and podcasts featuring music,
8/9/2019 Bob Marley opposes Marley Gang.pdf
81/87
28217-00102/2256723.1 3
audio books in the field of rap, and news broadcasts; Downloadable ring tones, graphics and
music via a global computer network and wireless devices; Downloadable video recordings
featuring music; Downloadable music via the internet and wireless devices; Musical recordings;
Musical video recordings; Visual recordings and audiovisual recordings featuring music and
animation in Class 9.
7. The Application was published for opposition in the Official Gazette on May 27,
2014. Fifty-Six Hope Road Music Limited, which is in privity with Opposers, was granted a
thirty-day extension and a sixty-day extension of time to oppose the Application.
8. Applicant appears to be making use in commerce of MARLEY GANG in
connection with a musical group.
FIRST GROUND LIKELIHOOD OF CONFUSION
9. Opposer incorporates the allegations contained in Paragraphs 1 to 8 herein.
10. Applicants proposed mark is similar in sound, appearance and meaning and is
confusingly similar to Opposers MARLEY Mark. Further, the goods and services to be offered
by Applicant are similar and related to those offered under Opposers MARLEY Mark, as both
the Application and the MARLEY Mark cover goods and services relating to musical
performances.
11. Applicants mark is likely to cause confusion, mistake, or deception as to the
source, origin, affiliation, connection or association of Applicants goods and services offered or
to be offered under the MARLEY GANG mark.
8/9/2019 Bob Marley opposes Marley Gang.pdf
82/87
28217-00102/2256723.1 4
SECOND GROUND LIKELIHOOD OF DILUTION
12. Opposer incorporates the allegations contained in Paragraphs 1 to 11 herein.
13. The MARLEY Mark has acquired secondary meaning and is associated with
Opposers and Bob Marley. The MARLEY Mark is famous and distinctive and Bob Marley is
famous within the meaning of the Federal Trademark Dilution Act. Applicant filed the
Application after the MARLEY Mark and Bob Marley had become famous, and Applicant seeks
to commercially use the applied-for mark MARLEY GANG.
14. The mark shown in the Application is likely to dilute Opposers MARLEY Mark.
THIRD GROUND FALSE ASSOCIATION WITH BOB MARLEY
15. Opposer incorporates the allegations contained in Paragraphs 1 to 14 herein.
16. The name and mark MARLEY is associated with Bob Marley and Opposers. Bob
Marley is and has been enormously famous and world renowned for many years.
17. Opposers MARLEY Mark was used prior to Applicants filing date of the
application to register MARLEY GANG.
18. Applicants proposed mark is the same or a close approximation of, as Bob
Marleys name and trademark, which was previously used by and associated with Opposers and
Bob Marley. The name and mark MARLEY is recognized as such, in that it uniquely and
unmistakably points to Opposers and/or Bob Marley. Neither Opposers nor Bob Marley is
connected with the goods or services sold, to be sold, offered, or to be offered by Applicant
under the MARLEY GANG mark; and the fame and reputation of Opposers and Bob Marley is
8/9/2019 Bob Marley opposes Marley Gang.pdf
83/87
28217-00102/2256723.1 5
of such a nature that a connection with Opposers and Bob Marley is presumed when Applicants
MARLEY GANG mark is used on or with Applicants goods and services.
19. The registration of the MARLEY GANG mark will falsely suggest a connection,
association, or sponsorship with Opposers and/or Bob Marley. Consumers will erroneously
believe that Applicants goods and services are licensed or sponsored by, or otherwise
connected, affiliated, or associated with, Opposers and/or Bob Marley.
DAMAGE TO OPPOSER
20. As a result of all of the foregoing, the maturation of the Application into a
registration would (a) cause a likelihood of confusion, mistake, or deception as to the source,
origin, affiliation, connection, or association of Opposers MARLEY Mark and Applicants
MARLEY GANG goods and services, (b) cause a likelihood of dilution of the MARLEY Mark,
and (c) falsely suggest a connection or association with Bob Marley and/or Opposers.
21. Opposers would be damaged by the registration of the mark shown in the
Application, in that such registration would give Applicant a prima facie exclusive right to the
use of MARLEY GANG, despite the likelihood of confusion, mistake, or deception, likelihood
of dilution, and likelihood of false connection or association with Bob Marley described above,
and will allow Applicant to trade on Opposers existing goodwill in the MARLEY Mark.
PRAYER
WHEREFORE, Opposers pray that this Opposition be sustained in favor of Opposers,
that the Application be rejected, and that registration of the Application be refused.
8/9/2019 Bob Marley opposes Marley Gang.pdf
84/87
28217-00102/2256723.1 6
Please charge the requisite $300 opposition filing fee and any additional amounts to
Deposit Account No. 50-1833.
Dated: September 23, 2014 Respectfully submitted,
Jesse J. SaivarNatasha Shabani
GREENBERG GLUSKER FIELDSCLAMAN & MACHTINGER LLP1900 Avenue of the Stars, 21st FloorLos Angeles, California 90067Telephone: (310) 553-3610Facsimile: (310) 553-0687E-mail:[email protected];[email protected];[email protected]
Attorneys for OpposersKy-Mani Ronald Marley
Damian Robert Nesta MarleyJulian Ricardo Marley
Stephen Robert Nesta Marley
David Nesta Marley
mailto:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]8/9/2019 Bob Marley opposes Marley Gang.pdf
85/87
28217-00102/2256723.1 7
CERTIFICATE OF SERVICE
The undersigned hereby certifies that a true and correct copy of the foregoing NOTICE OFOPPOSITION was served on Applicant on September 24, 2014 by delivery via first class mail toapplicant at:
Antonio SpearsS & M Media Group
4219 Apt E, Yanceyville Rd.Browns Summit, North Carolina 27214
___________________________________Natasha Shabani
8/9/2019 Bob Marley opposes Marley Gang.pdf
86/87
Exhibit A
8/9/2019 Bob Marley opposes Marley Gang.pdf
87/87
