MAD MEN Barbershop Trademark Opposition

Lions Gate Entertainment filed an opposition to the MAD MEN Barbershop trademark in the USPTO’s TTAB.
Opposition No. 91234230
Trademark Serial No. 87/110,436
For: MADMEN BARBERSHOP & Design
Publication Date: December 27, 2016

NOTICE OF OPPOSITION

Commissioner for Trademarks
ATTN: Trademark Trial and Appeal Board
P.O. Box 1451 Alexandria, Virginia 22313-1451
 
Dear Commissioner:
Opposer, Lions Gate Entertainment Inc., a Delaware corporation, having its principal place of business at 2700 Colorado Avenue, Santa Monica, California 90404 (“Opposer”), believes that it will be harmed by the registration of the mark MADMEN BARBERSHOP & Design as shown in U.S. Application Serial No. 87/110,436 in Class 44 (the “Application”), and hereby opposes its registration on the following grounds: FACTUAL BACKGROUND REGARDING OPPOSER’S MADMEN MARKS 1. Opposer is the entity responsible for producing the highly successful and critically acclaimed, award-winning television series Mad Men (the “Mad Men Television Series”). Debuting July 19,
FACTUAL BACKGROUND REGARDING OPPOSER’S MADMEN MARKS 1. Opposer is the entity responsible for producing the highly successful and critically acclaimed, award-winning television series Mad Men (the “Mad Men Television Series”). Debuting July 19,

1. Opposer is the entity responsible for producing the highly successful and critically acclaimed, award-winning television series Mad Men (the “Mad Men Television Series”). Debuting July 19, 2007 on the AMC cable network, the Mad Men Television Series ran for seven 2 seasons and 92 episodes, airing its final episode on May 17, 2015. The Mad Men Television Series won many awards, including 16 Emmys and 5 Golden Globes, and was also the first basic cable series to receive the Emmy Award for Outstanding Drama Series, winning in each of its first four seasons. It is widely regarded as one of the greatest television dramas of all time. Opposer’s Mad Men Television Series has received considerable media attention. Attached hereto as Exhibit A are true and correct printouts from Opposer’s website at about Opposer and the Mad Men Television Series.
2. Opposer owns 9 federal trademark registrations relating to the Mad Men Television Series (“the MADMEN Marks”), two of which are incontestable (Reg. Nos. 3,341,791 and 3,879,176). Opposer has used the MADMEN Marks for a range of goods and services. Attached as Exhibit B are true and correct printouts from the Office’s TESS and TSDR pages for Opposer’s MADMEN, MADMEN (Stylized), and MADMEN & Smoking Man Design trademark registrations, showing status and title, and copies of such registrations. Opposer’s MADMEN Marks are shown below:
3. Opposer first used: (a) its MADMEN Marks for entertainment services, namely, an on-going television series dealing with a fictional advertising agency during the 1950’s in Class 41, at least as early as July 19, 2007; (b) MADMEN for computer game programs, cartridges, and cassettes; DVDs featuring fictional drama; motion picture films about fictional drama; pre-recorded electronic media featuring fictional drama in Class 9, at least as early as July 1, 2008; (c) MADMEN (Stylized) for computer game programs, cartridges, and cassettes; DVDs featuring fictional drama; motion picture films about fictional drama; pre-recorded electronic media featuring fictional drama in Class 9, at least as early as July 1, 2008; (d) 3 MADMEN & Smoking Man Design for computer game programs, cartridges, and cassettes; DVDs featuring fictional drama; motion picture films about fictional drama; pre-recorded electronic media featuring fictional drama in Class 9, at least as early as July 1, 2008; (e) MADMEN for clocks and watches; cuff links and tie clips; jewelry and imitation jewelry in Class 14, at least as early as February 28, 2012; (f) MADMEN (Stylized) for clocks and watches; cuff links and tie clips; jewelry and imitation jewelry in Class 14, at least as early as February 28, 2012; (g) MADMEN & Smoking Man Design for watches in Class 14, at least as early as February 28, 2012; (h) MADMEN for address books and diaries; books in the field of fictional drama; comic books; computer game instruction manuals; notebooks; posters; stickers in Class 16, at least as early as July 29, 2008; (i) MADMEN (Stylized) for address books and diaries; books in the field of fictional drama; comic books; computer game instruction manuals; notebooks; posters; stickers in Class 16, at least as early as July 29, 2008; (j) MADMEN & Smoking Man Design for address books and diaries; books in the field of fictional drama; comic books; computer game instruction manuals; notebooks; posters; stickers in Class 16, at least as early as March 4, 2011; (k) MADMEN for beer mugs; beverageware; coffee cups, tea cups and mugs; glass beverageware; plates; shot glasses in Class 21, at least as early as July 29, 2008; (l) MADMEN (Stylized) for beer mugs; beverageware; coffee cups, tea cups and mugs; glass beverageware; plates; shot glasses in Class 21, at least as early as July 29, 2008; (m) MADMEN & Smoking Man Design for beer mugs; beverageware; coffee cups; tea cups and mugs; glass beverageware; plates; shot glasses in Class 21, at least as early as July 29, 2008; (n) MADMEN for men’s suits, women’s suits; sweatshirts; t-shirts; ties in Class 25, at least as early as July 29, 2008; (o) MADMEN (Stylized) for men’s suits, women’s suits; sweatshirts; t-shirts; ties in Class 25, at least as early as July 29, 2008; (p) MADMEN & Smoking Man Design for men’s suits, women’s suits; sweatshirts; t-shirts; ties in Class 25, at least as early as July 29, 2008; (q) MADMEN for action figures; board games; jigsaw and manipulative puzzles; playing cards in Class 28, at least as early as July 1, 2010; (r) MADMEN (Stylized) for action figures; board games; jigsaw and manipulative puzzles; playing cards in Class 28, at least as early as July 1, 4 2010; (s) MADMEN & Smoking Man Design for action figures; board games; jigsaw and manipulative puzzles; playing cards in Class 28, at least as early as July 1, 2010; (t) MADMEN for cigarette lighter holder not of precious metal in Class 34, at least as early as July 1, 2008; (u) MADMEN (Stylized) for cigarette lighter holder not of precious metal in Class 34, at least as early as July 1, 2008; (v) MADMEN & Smoking Man Design for cigarette lighter holder not of precious metal in Class 34, at least as early as July 29, 2008; (w) MADMEN for entertainment in the nature of on-going television programs in the field of fictional drama in Class 41, at least as early as July 19, 2007; (x) MADMEN (Stylized) for entertainment in the nature of on-going television programs in the field of fictional drama in Class 41, at least as early as July 19, 2007; and (y) MADMEN & Smoking Man Design for entertainment in the nature of on-going television programs in the field of fictional drama in Class 41, at least as early as July 19, 2007. Opposer has developed common law rights in its MADMEN Marks, which also predate the Application.
   FACTUAL BACKGROUND REGARDING THE APPLICATION
4. On July 20, 2016, Applicant Madmen Barbershop, Inc., an Illinois corporation, having an address of 1457 Schaumburg Road, Schaumburg, Illinois 60193 (hereinafter “Applicant”), filed the Application in the Office seeking registration, on an actual use basis, of MADMEN BARBERSHOP & Design for “barber shop services” in Class 44. Applicant’s proposed trademark is shown below:
5. Applicant claims a date of first use anywhere and date of first use in commerce of July 2015 in the Application. Both the date of first use claimed and the filing date of the 5 Application is after Opposer’s first use of its MADMEN Marks and after the applications to register the MADMEN Marks were filed. Opposer has priority over Applicant for its MADMEN Marks.
6. The Application was published for opposition in the Official Gazette on December 27, 2016. Opposer was granted an extension of time to oppose the Application.
   

   FIRST GROUND – LIKELIHOOD OF CONFUSION

7. Opposer incorporates the allegations contained in Paragraphs 1 to 6 herein.
8. Applicant’s proposed mark is confusingly similar to the MADMEN Marks. 9. Applicant’s mark is likely to cause confusion, mistake, or deception as to the source, origin, affiliation, association, connection, or sponsorship of Applicant’s services offered under the MADMEN BARBERSHOP & Design mark with the MADMEN Marks, the Mad Men Television Series, and/or with Opposer or Opposer’s activities. SECOND GROUND – LIKELIHOOD OF DILUTION 10. Opposer incorporates the allegations contained in Paragraphs 1 to 9 herein. 11. The MADMEN Marks are inherently distinctive and have acquired secondary meaning and are associated with Opposer and the goods and services offered under the MADMEN Marks. The MADMEN Marks are famous within the meaning of the Federal Trademark Dilution Act. Applicant filed the Application after the MADMEN Marks had become famous, and Applicant seeks to, or does commercially, use the mark MADMEN BARBERSHOP & Design. 12. Applicant’s mark is likely to cause dilution of Opposer’s MADMEN Marks and blur the distinctiveness of Opposer’s MADMEN Marks. DAMAGE TO OPPOSER 13. As a result of all of the foregoing, the maturation of the Application into a registration would cause a likelihood of confusion, mistake, or deception with Opposer and the 6 MADMEN Marks, a likelihood of association, connection or affiliation with Opposer, the goods and services offered by Opposer under the MADMEN Marks, or as to the origin, sponsorship or approval by Opposer of Applicant’s services or commercial activities, and a likelihood of dilution of the MADMEN Marks. 14. 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 MADMEN BARBERSHOP & Design, and despite the likelihood of confusion and likelihood of dilution described above. 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. Opposer requests that the Board charge the requisite $400 opposition filing fee, under 37 C.F.R. § 2.6(a)(17), and any additional fees as necessary to Deposit Account No. 50-5691. Respectfully submitted, Dated: April 26, 2017 /Jill M. Pietrini/ Jill M. Pietrini SHEPPARD MULLIN RICHTER & HAMPTON LLP 1901 Avenue of the Stars, Suite 1600 Los Angeles, California 90067-6017 (310) 228-3700 Attorneys for Opposer Lions Gate Entertainment Inc. CERTIFICATE OF E-FILING I hereby certify that NOTICE OF OPPOSITION is being transmitted electronically to Commissioner of Trademarks, Attn: Trademark Trial and Appeal Board through ESTTA pursuant to 37 C.F.R. §2.195(a), on this 26th day of April, 2017. /LaTrina A. Martin/__________________________ LaTrina A. Martin