Petition for Cancellation Petitioner Information

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov

ESTTA Tracking number: ESTTA547440Filing date: 07/09/2013

IN THE UNITED STATES PATENT AND TRADEMARK OFFICEBEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Petition for Cancellation

Notice is hereby given that the following party requests to cancel indicated registration.

Petitioner Information

Name Stevland Morris

Entity Individual Citizenship UNITED STATES

Address c/o Fulwider Patton LLP 6060 Center Drive, Tenth FloorLos Angeles, CA 90045UNITED STATES

Attorneyinformation

Stephen J. Strauss, Esq.Fulwider Patton LLP6060 Center Drive Tenth FloorLos Angeles, CA 90045UNITED [email protected], [email protected], [email protected]:310-824-5555

Registration Subject to Cancellation

Registration No 3518083 Registration date 10/14/2008

Registrant WONDER CREATIONS LLC338 WEST 11TH STREET #5CNEW YORK, NY 10014UNITED STATES

Goods/Services Subject to Cancellation

Class 041. First Use: 2008/07/07 First Use In Commerce: 2008/07/07All goods and services in the class are cancelled, namely: Television programming; television andmotion picture film production

Grounds for Cancellation

False suggestion of a connection Trademark Act section 2(a)

Abandonment Trademark Act section 14

Dilution Trademark Act section 43(c)

Marks Cited by Petitioner as Basis for Cancellation

U.S. RegistrationNo.

2600739 Application Date 04/23/2001

Registration Date 07/30/2002 Foreign PriorityDate

NONE

Word Mark STEVIE WONDER

Design Mark

http://estta.uspto.gov

Description ofMark

NONE

Goods/Services Class 041. First use: First Use: 1962/00/00 First Use In Commerce: 1962/00/00ENTERTAINMENT SERVICES IN THE NATURE OF LIVE MUSICALPERFORMANCES; ENTERTAINMENT SERVICES, NAMELY, PROVIDINGTELEVISION AND RADIO PROGRAMS IN THE FIELD OF MUSIC ANDENTERTAINMENT VIA A GLOBAL COMPUTER NETWORK; CULTURALACTIVITIES, NAMELY, LIVE ARTISTIC AND VISUAL ARTSPERFORMANCES; [AUDIO AND VIDEOTAPE RECORDING PRODUCTION;MOTION PICTURE FILM PRODUCTION; PRODUCTION AND DISTRIBUTIONOF ENTERTAINMENT AND MUSIC PROGRAMS FOR RADIO, TELEVISION,CABLE, SATELLITE, PAY-PER-VIEW, INTERACTIVE MEDIA, HOME VIDEOMARKETS; MULTIMEDIA PRODUCTION SERVICES IN THE FIELD OFMUSIC AND ENTERTAINMENT; RECORDING STUDIOS; MOTION PICTURESONG PRODUCTION;] AND FAN CLUBS




NONE

Word Mark NONE

Design Mark

Description ofMark

The mark consists of the wording STEVIE WONDER in Braille code and thecorresponding raised dots.

Goods/Services Class 041. First use: First Use: 2007/08/00 First Use In Commerce: 2007/08/00ENTERTAINMENT SERVICES IN THE NATURE OF LIVE MUSICALPERFORMANCES; AND ENTERTAINMENT, NAMELY, LIVE MUSICCONCERTS




NONE

Word Mark A WONDER SUMMER'S NIGHT

Design Mark

Description ofMark

NONE

Goods/Services Class 041. First use: First Use: 2007/08/23 First Use In Commerce: 2007/08/23ENTERTAINMENT SERVICES IN THE NATURE OF LIVE MUSICALPERFORMANCES; AND ENTERTAINMENT, NAMELY, LIVE MUSICCONCERTS




NONE

Word Mark A WONDER WINTER'S NIGHT

Design Mark

Description ofMark

NONE

Goods/Services Class 041. First use: First Use: 2007/12/00 First Use In Commerce: 2007/12/00ENTERTAINMENT SERVICES IN THE NATURE OF LIVE MUSICAL AND

COMEDY PERFORMANCES; AND ENTERTAINMENT, NAMELY, LIVE MUSICAND COMEDY CONCERTS




NONE

Word Mark WONDER VISION

Design Mark

Description ofMark

NONE

Goods/Services Class 041. First use: First Use: 2009/01/08 First Use In Commerce: 2009/01/08PROVIDING RECOGNITION AND INCENTIVES BY WAY OF AWARDS TODEMONSTRATE EXCELLENCE BY INDIVIDUALS AND COMPANIES THATDESIGN AND MANUFACTURE PRODUCTS AND TECHNOLOGY FOR BLINDAND VISUALLY-IMPAIRED PEOPLE

Attachments wonder productions cancellation.pdf(1301679 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 /Stephen J. Strauss/

Name Stephen J. Strauss, Esq.

Date 07/09/2013

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STEVL 91179 1

In the Matter of: Registration No. 3,518,083

Date of Issue: October 14, 2008

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

STEVLAND MORRIS,

Petitioner,

v.

WONDER CREATIONS LLC,

Registrant.

Cancellation No.:

PETITION FOR CANCELLATION

Stevland Morris, a United States citizen, having a place of business c/o Fulwider Patton

LLP, 6060 Center Drive, Tenth Floor, Los Angeles, California 90045, believes that he will be

damaged by Registration No. 3,518,083 and hereby petitions to cancel same.

As grounds for this petition, it is alleged upon information and belief that:

1. The Registrant has obtained United States Trademark Registration No. 3,518,083

for the mark [WONDER PRODUCTIONS and Design] for "television programming;

television and motion picture film production" in International Class 41, issued on October 14,

2008.

2. Petitioner is the internationally famous entertainer and musical artist who

performs under the distinctive stage name and mark STEVIE WONDER. Spanning a

remarkable career of forty years, the winner of more than twenty-five Grammy Awards

(including Lifetime Achievement in 1996, Best Male Pop Vocal Performance in 2006 and Best

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Pop Collaboration with Vocals in 2007), the 1985 Academy Award for Best Original Song,

inducted into both the Rock and Roll Hall of Fame (1989) and the Songwriter's Hall of Fame

(1983), and the recipient of the Kennedy Center Honors (1999), Petitioner is one of the most

influential and famous musicians and composers of the 20th and 21st Centuries.

3. Petitioner has used STEVIE WONDER (and WONDER) as a trademark and

service mark in connection with various goods and services including but not limited to video

and sound recordings, clothing and headwear and entertainment services. As a result of the

substantial use, advertisement and promotion of the STEVIE WONDER mark in connection with

these goods and services, as well as the international media attention and resulting renown,

Petitioner has gained very valuable goodwill and strong public recognition worldwide in his

famous STEVIE WONDER mark.

4. In addition to his far-reaching common law rights, Petitioner is the owner of the

following United States Trademark and Service Mark registrations: No. 2,600,739 covering

STEVIE WONDER for "entertainment services in the nature of live musical performances;

entertainment services, namely, providing television and radio programs in the field of music and

entertainment via a global computer network; cultural activities, namely, live artistic and visual

arts performances; and fan clubs" in International Class 41, issued on July 30, 2002;

No. 3,495,230 covering [STEVIE WONDER in Braille code and

corresponding raised dots] for "entertainment services in the nature of live musical

performances; and entertainment, namely, live music concerts" in Class 41, issued on

September 2, 2008; No. 3,512,466 covering A WONDER SUMMER'S NIGHT for

"entertainment services in the nature of live musical performances; and entertainment, namely,

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live music concerts" in International Class 41, issued on October 7, 2008; No. 3,730,690

covering A WONDER WINTER'S NIGHT for "entertainment services in the nature of live

musical and comedy performances; and entertainment, namely, live music and comedy concerts"

in International Class 41, issued on December 29, 2009; and No. 3,736,076 covering WONDER

VISION for "providing recognition and incentives by way of awards to demonstrate excellence

by individuals and companies that design and manufacture products and technology for blind and

visually-impaired people" in International Class 41, issued on January 12, 2010. Copies of these

registrations are attached hereto as Exhibit A.

5. The above-identified registrations are valid and subsisting, and Registration

No. 2,600,739 is incontestable. As the owner of these registered marks, Petitioner has the rights

to their exclusive use.

6. The STEVIE WONDER mark is so widely recognized, both nationally and

internationally, that it has become a famous and world-renown mark. The public and

entertainment industry universally associates the STEVIE WONDER mark with the

entertainment related goods and services offered and sold by Petitioner. The STEVIE

WONDER mark is unquestionably linked in the public mind with Petitioner's unique

entertainment related goods and services.

7. The STEVIE WONDER mark was famous at least as of, and long before,

February 1, 2004, the filing date of, and July 7, 2008, the alleged date of first use in commerce

of, the WONDER PRODUCTIONS and Design mark.

8. Petitioner filed two applications with the United States Patent and Trademark

Office on October 7 and 8, 2012 (Application Serial Nos. 85/747,759 and 85/747,761) for the

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mark covering, respectively, "motion picture films featuring comedy, drama,

action, adventure and animation; pre-recorded compact discs featuring music; pre-recorded video

discs featuring comedy, drama, action, adventure and animation; downloadable musical sound

recordings and downloadable video recordings featuring comedy, drama, action, adventure and

animation; computer game software, computer game discs; downloadable computer game

programs; downloadable computer game software via a global computer network and wireless

devices; downloadable electronic game programs; downloadable computer games via the internet

and wireless devices" in International Class 9 and "music production services; audio recording

and production; motion picture song production; production services for digital content, namely,

static and motion pictures, sound, data, video, and films; entertainment and education in the form

of video or other media content provided to a website, mobile phone, computer or wireless

device in the field of music and music entertainment programs; music distribution for others;

production of sound recordings; planning arrangement of musical performances; music

composition services for others; entertainment, namely, live music concerts; entertainment

services in the nature of live musical performances; music publishing services; production of

musical recordings; entertainment services, namely, providing non-downloadable playback of

music via the internet; recording studio services, namely, recording of music; music video

production services" in International Class 41. The Patent and Trademark Office issued Office

Actions refusing to register Petitioner's mark on the ground that it is

confusingly similar to Registrant's WONDER PRODUCTIONS and Design registration.

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Registrant's Mark Has Been Abandoned

9. Upon information and belief, Petitioner alleges that Registrant has completely

abandoned all use of the WONDER PRODUCTIONS and Design mark and has no intention of

any kind of reviving use of the mark in its business.

10. Petitioner is damaged and will continue to be damaged because Registrant's

continued registration of the WONDER PRODUCTIONS and Design mark stands as a bar to

Petitioner's ability to federally register and protect his STEVIE WONDER,

and WONDER marks for the services identified in paragraphs 4 and 8 above.

Registrant's Mark Falsely Suggests a Connection with the STEVIE WONDER Mark

11. Petitioner has been using the STEVIE WONDER mark in connection with

various entertainment related goods and services for over 50 years and it is well-known among

consumers and the entertainment industry. Registrant's WONDER PRODUCTIONS and Design

mark falsely suggests a connection with Petitioner in violation of 15 U.S.C. §1052(a), to the

damage of the Petitioner.

Registrant's Mark Dilutes the Distinctiveness and Fame of Petitioner's STEVIE

WONDER Mark

12. Petitioner is, and will continue to be, damaged by the existence of the WONDER

PRODUCTIONS and Design registration, because said registration is so deceptively similar to

Petitioner's famous STEVIE WONDER mark as to dilute the STEVIE WONDER mark and

harm Petitioner's reputation.

13. Consequently, cancellation of Registrant's WONDER PRODUCTIONS and

Design registration should also be granted pursuant to 15 U.S.C. §1125(c) and Trademark Board

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Manual of Procedure §303.01 on the grounds that Petitioner is, and will continue to be, damaged

by said registration because the registration dilutes the distinctive and famous quality of

Petitioner's STEVIE WONDER mark.

WHEREFORE, Petitioner prays that Registration No. 3,518,083 be canceled and that this

Petition for Cancellation be sustained in his favor.

Dated: July 9, 2013

Respectfully submitted,

STEVLAND MORRIS

By: __________________________________

His Counsel

Stephen J. Strauss

FULWIDER PATTON LLP

6060 Center Drive, Tenth Floor

Los Angeles, CA 90045

(310) 824-5555

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STEVL 91179 7

CERTIFICATE OF SERVICE

I hereby certify that I served a copy of the foregoing PETITION FOR CANCELLATION

upon Registrant by depositing one copy thereof in the United States Mail with First Class

postage affixed thereon on July 9, 2013, addressed as follows:

Mr. Scott R. Waltmann

WONDER CREATIONS LLC

338 West 11th Street, #5C

New York, New York 10014

___________________________________

Andrea L. Harvey

Documents

Petition for Cancellation Petitioner Information