Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: Filing date: ESTTA655236 02/11/2015 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 party opposes registration of the indicated application. Opposer Information Name Miss Universe L.P., LLLP Granted to Date of previous extension 02/11/2015 Address 1370 Avenue of the Americas New York, NY 10019 UNITED STATES Attorney information Andrea L. Calvaruso, Esq. Kelley, Drye & Warren, LLP 101 Park Avenue New York, NY 10178 UNITED STATES trademarks@kelleydrye.com Phone:212-808-7853 Applicant Information Application No 86235052 Publication date 10/14/2014 Opposition Filing Date 02/11/2015 Opposition Period Ends 02/11/2015 Applicant Grandia, Linda Kepplerstraat 13 Amersfoort, Ultrecht, 3817ta NETHERLANDS Goods/Services Affected by Opposition Class 041. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Entertainment services, namely, organizing beauty pageants; Entertainment services, namely, ongoing television programsin the field of reality television about beauty pageants; Entertainment in the nature of beauty pageants and fashion shows Grounds for Opposition Priority and likelihood of confusion Trademark Act section 2(d) Dilution Trademark Act section 43(c) Marks Cited by Opposer as Basis for Opposition U.S. Registration No. 620557 Application Date 07/19/1952 Registration Date 01/31/1956 Foreign Priority Date NONE Word Mark MISS UNIVERSE Design Mark Description of Mark NONE Goods/Services Class U101 (International Class 035, 036, 038, 041, 042). First use: First Use: 1950/10/01 First Use In Commerce: 1950/10/01 PROMOTING THE SALE OF GOODS AND SERVICES BY OTHERS THROUGH THE MEDIUM OF A BEAUTY CONTEST CONDUCTED ON A NATIONAL AND REGIONAL BASIS U.S. Registration No. 1597876 Application Date 10/13/1989 Registration Date 05/22/1990 Foreign Priority Date NONE Word Mark MISS UNIVERSE Design Mark Description of Mark NONE Goods/Services Class 041. First use: First Use: 1950/10/01 First Use In Commerce: 1950/10/01 ENTERTAINMENT SERVICES - NAMELY, PRESENTATION OF PAGEANTS AND CONTESTS Attachments 71632789#TMSN.png( bytes ) Notice of Opposition - Miss Multiverse.pdf(135143 bytes ) Exhibit A - Notice of Opposition.pdf(34133 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 First Class Mail on this date. Signature /Andrea L. Calvaruso/ Name Andrea L. Calvaruso, Esq. Date 02/11/2015 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD IN THE MATTER OF TRADEMARK APPLICATION SERIAL NO. 86/235,052 PUBLISHED IN THE OFFICIAL GAZETTE ON OCTOBER 14, 2014 MARK: MISS MULTIVERSE MISS UNIVERSE L.P., Opposer, v. OPPOSITION NO. LINDA GRANDIA Applicants. Trademark Trial and Appeal Board PO. Box. 1451 Alexandria, VA 22313-1451 NOTICE OF OPPOSITION Miss Universe L.P., (?Opposer?) is a limited liability partnership organized under the laws of Delaware with a principal place of business at 1370 Avenue of the Americas, New York, New York 10019. The general partners of the partnership are NBC Pageants, Inc. and Trump Pageants, Inc. Opposer believes it will be damaged by the registration of the mark MISS MULTIVERSE as shown in the above?identi?ed application (the ?Application?) and hereby opposes the same. The grounds for opposition are as follows: 1. Since at least as early as 1950, and long prior to the Application herein opposed, Opposer has used the mark MISS UNIVERSE in connection with its world?famous beauty pageants and related goods and services. 2. MISS UNIVERSE has been used by Opposer for decades in connection with beauty pageants and related goods and services, and many are the subject of federal trademark registrations, including incontestable registrations for MISS UNIVERSE in Class 35 (Reg. No. 0,620,557) and Class 41 (Reg. No. 1,597,876), among many others (collectively ?Opposer?s Marks?). A list of US. trademark registrations for MISS UNIVERSE formative marks owned by Opposer is attached hereto as Exhibit A. 3. Opposer is an internationally prominent organizer and promoter of beauty pageants in the United States and throughout the world. Opposer widely advertises its pageants to the public throughout the United States by all means and types of advertising media, including, but not limited to, newspapers, magazines, television, trade publications and personal appearances of its titleholders. Opposer?s pageants are televised in the United States and throughout the world and it receives millions of dollars in revenue from telecast right fees, site fees and personal appearance fees. 4. Pageants organized and promoted by Opposer in connection with Opposer?s Marks, by reason of their quality and professionalism, have come to be known to the public in the United States and throughout the world as being expertly presented under the best production conditions. As a result, Opposer?s Marks and goodwill associated with Opposer?s pageants are of inestimable value to Opposer. 5. Opposer?s Marks have acquired distinctiveness and become famous as a matter of law, as a result of its extensive use and promotion of the marks for over sixty years. Opposer?s Marks acquired such fame long before Applicant?s selection and adoption of the MISS MULTIVERSE mark and long before the Application was filed. 6. Opposer has priority of use over Applicant, whose ?ling date of the Application is long subsequent to Opposer?s ?rst use and registration of Opposer?s Marks. 7. Applicant seeks to register the trademark MISS MULTIVERSE for use in connection with ?Entertainment services, namely, organizing beauty pageant; Entertainment services, namely, ongoing television programs in the ?eld of reality television about beauty pageants; Entertainment in the nature of beauty pageants and fashion shows? in Class 41. Applicant?s mark was published in the October 14, 2014 issue of the Of?cial Gazette. Opposer was granted a 90-day extension of time to oppose the Application, until February 1 1, 2015. 8. Applicant intends to use the MISS MULTIVERSE mark in commerce in connection with a beauty pageant and reality television show by the same name. 9. Applicant?s MISS MULTIVERSE mark is confusingly similar in appearance, sound and meaning, to Opposer?s Marks inasmuch as the appearance, sound and commercial impression of MISS MULTIVERSE is nearly identical to MISS UNIVERSE, the marks are used in connection with the same or substantially similar services, and are marketed through the same and/or similar channels of trade. The close resemblance of the marks to each other will cause confusion or cause consumers to believe that Opposer has authorized or endorsed the quality of Applicant?s services. 10. Applicant?s registration and use of the mark MISS MULTIVERSE is likely to create confusion and deceive purchasers into believing that Applicant?s services originate with or are in some way sponsored, endorsed, licensed, associated or otherwise authorized or connected with Opposer. Such confusion would irreparably harm and damage Opposer because Opposer has no control over the nature or quality of the services provided or produced by Applicant under the MISS MULTIVERSE mark. ll. Applicant?s registration and use of the mark MISS MULTIVERSE is also likely to dilute the strength of Opposer?s Marks as source designation for Opposer?s world?famous pageants and pageant services. 12. By reason of the foregoing, Opposer will be damaged by the registration of Applicant?s mark, MISS MULTIVERSE. WHEREFORE, Opposer respectfully requests that this Opposition be sustained and that the registration of the mark MISS MULTIVERSE be refused. Respectfully submitted, KELLEY DRYE WARREN LLP Attorneys for Opposer Dated: February 1 l, 2015 New York, New York Andrea L. Calvaruso Kelli D. Ortega 101 Park Avenue New York, NY 10178 (212) 808?7800 CERTIFICATE OF SERVICE 1, Andrea L. Calvaruso, partner at Kelley Drye Warren LLP, attorneys for Opposer Miss Universe LP, hereby af?rm under the penalties of perjury, that on February 1 1, 2015, I caused a true and correct copy of the foregoing Notice of Opposition to be served Via ?rst class mail, postage prepaid, upon Applicant and Applicant?s attorney: Linda Grandia Kepplerstraat l3 Amersfoot, Ultrecht 387lta Netherlands Jeffrey M. Furr Furr Law Firm 2622 Debolt Rd. Utica, OH 43080 ?y Andrea L. Calvaruso EXHIBIT A OPPOSER’S U.S. TRADEMARK REGISTRATIONS FOR MISS UNIVERSE MARKS TM Record TM/SN/RN/Disclai mer Status/Status Date Brief Goods/Services Owner US Federal Q1 uf 1 MISS UNIVERSE Published December 23, 2014 (Int'l Class: 03) hair care preparations, namely, hair gels, hair sprays, hair shampoo and conditioner; dry shampoo, hair blowdry spray, hair shine spray,... (Int'l Class: 08) electric irons for styling hair, namely, curling irons, flat irons, straightening irons; hair waving implements, volumizing irons (Int'l Class: 11) electric hair blow dryers, hand-held electric hair blow dryers, and hair dryer diffusers Miss Universe L.P., Lllp, Nbc Pageants, Inc., a Delaware Corporation and Trump Pageants, Inc., a New York Corporation (Delaware LTD. Partnership) 1370 Avenue of the Americas New York New York 10019 Renewed January 31, 2006 (Int'l Class: 101) promoting the sale of goods and services by others through the medium of a beauty contest conducted on a national and regional basis Miss Universe L.P., Lllp (No Country Provided Limited Liability Company) 1370 Avenue of the Americas New York New York 10019 Allowed - Intent to Use 4th Extension of Time Granted October 3, 2014 (Int'l Class: 25) swimsuits and lingerie Miss Universe L.P., Lllp, Nbc Pageants, Inc. a Delaware Corporation and Trump Pageants, Inc., a New York Corporation (Delaware LTD. Partnership) 1370 Avenue of the Americas SN: 86320916 US Federal Q1 uf 2 MISS UNIVERSE US Federal Q1 uf 3 MISS UNIVERSE RN: 620557 SN: 71632789 SN: 85682780 TM Record TM/SN/RN/Disclai mer Status/Status Date Brief Goods/Services Owner New York New York 10019 US Federal Q1 uf 4 MISS UNIVERSE Pending - Initialized November 22, 2014 (Int'l Class: 03) cosmetics; nail care preparations Miss Universe L.P., Lllp, Nbc Pageants, Inc. a Delaware Corporation, and Trump Pageants, Inc., a New York Corporation (Delaware LTD. Partnership) 1370 Avenue of the Americas New York New York 10019 Renewed December 15, 2011 (Int'l Class: 16) magazine concerning the schedule and participants in beauty pageants Miss Universe L.P., Lllp (Delaware Limited Liability Limited Partnership) 1370 Avenue of the Americas New York New York 10019 Renewed January 20, 2011 (Int'l Class: 25) [(( ladies' blouses, ))] shirts,[ (( bathing suits,] shoes, [beach jackets, pants, ] sweaters,[ skirts, ))] t-shirts [, (( slips, petticoats, nightgowns, robes, gloves, hosiery, and panties ))] Miss Universe L.P., Lllp, Nbc Pageants, Inc. a Corporation Legally Organized in Delaware and Trump Pageants, Inc. a Corporation Legally Organized in New York (California LTD. Partnership) 1370 Avenue of the Americas New York New York 10019 Renewed August 22, 2011 (Int'l Class: 022) dolls Miss Universe L.P., Lllp SN: 86459099 US Federal Q1 uf 5 MISS UNIVERSE US Federal Q1 uf 6 MISS UNIVERSE US Federal MISS UNIVERSE RN: 1182063 SN: 73254282 RN: 1146211 SN: 73202092 TM Record TM/SN/RN/Disclai mer Q1 uf 7 RN: 720283 SN: 72063150 US Federal Q1 uf 8 MISS UNIVERSE RN: 1597876 SN: 73831500 Status/Status Date Brief Goods/Services Owner (Delaware LTD. Partnership) Suite 2100 1801 Century Park East Los Angeles California 90067 Renewed May 22, 2010 (Int'l Class: 41) entertainment services - namely, presentation of pageants and contests Miss Universe L.P., LLP (Delaware LTD. Partnership) 1730 Avenue of the Americas 16th Floor New York New York 10019