celebscallu - notice of opposition- final

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Receipt

ESTTA Tracking number: ESTTA238005

Filing date: 09/21/2008

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

Notice of Opposition

Notice is hereby given that the following parties oppose registration of the indicatedapplication.

Opposers Information

Name CW Multimedia Corporation

Entity Corporation Citizenship Kentucky

Address310 West Liberty Street, Suite 510Louisville, KY 40202UNITED STATES

Name Chris A. Webb

Entity Individual Citizenship UNITED STATES

Address310 West Liberty Street, Suite 510Louisville, KY 40202UNITED STATES

Name James J. Yelich

Entity Individual Citizenship UNITED STATES

Address124 12th Avenue South, Suite 410Nashville, TN 37203UNITED STATES

USPTO. ESTTA. Receipt http://estta.uspto.gov/com/receipt.jsp?iname=KWURRA1UJOLN-8459

1 of 3 9/21/2008 7:49 AM

Attorneyinformation

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

Applicant Information

Application No 77441634Publication

date08/26/2008

OppositionFiling Date

09/21/2008Opposition

Period Ends09/25/2008

Applicant

Xtreme Productions LLCPier 27, The EmbarcaderoSan Francisco, CA 94111UNITED STATES

Goods/Services Affected by Opposition

Class 038.All goods and services in the class are opposed, namely: Voice message sending services

Grounds for Opposition

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

Priority and likelihood of confusion Trademark Act section 2(d)

Torres v. Cantine Torresella S.r.l.Fraud 808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)

Other Applicant is not the true owner of the mark.

Marks Cited by Opposer as Basis for Opposition

U.S.Application No.

77504843Application

Date06/21/2008

RegistrationDate

NONEForeign

Priority DateNONE

Word Mark CELEBRITIES CALL YOU

Design Mark 77504843#TMSN.jpeg

Description ofMark

NONE


2 of 3 9/21/2008 7:49 AM

Goods/Services

Class 037. First use: First Use: 2007/05/07 First Use In Commerce:2008/06/12integrated voice response telephone services; customized phone call ande-card services

U.S.Application No.

77504846Application

Date06/21/2008

RegistrationDate

NONEForeign

Priority DateNONE

Word Mark CELEBRITIES CALLYOU.COM

Design Mark 77504846#TMSN.jpeg

Description ofMark

The mark consists of the wording in the mark presented in a billboardmarque style with CELEBRITIES in cursive about the wordingCALLYOU.COM.

Goods/Services

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

Attachments

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

Certificate of Service

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

Signature /ErikMPelton/

Name Erik M. Pelton

Date 09/21/2008

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3 of 3 9/21/2008 7:49 AM


CHRIS A. WEBB, )JAMES JOSEPH YELICH, and )CW MULTIMEDIA CORPORATION, ) Opposition No. ____________

Opposers, )) In the matter of:

vs. )) Application Serial No. 77441634

XTREME PRODUCTIONS LLC ) Published on August 26, 2008Applicant. ) Mark:

) CELEBSCALLU

NOTICE OF OPPOSITION

In the matter of the application for registration of the mark CELEBSCALLU for “Voice

message sending services” in International Class 038, filed April 7, 2008, by Xtreme Productions

LLC (“Applicant”), assigned Serial No. 77441634, and published for opposition in the Official

Gazette of August 26, 2008, CHRIS A. WEBB, JAMES JOSEPH YELICH, and CW

MULTIMEDIA CORPORATION (“Opposers”) believe that they would be damaged by such

registration, and hereby opposes the registration of Applicant’s mark pursuant to 15 USC §1063

and 37 CFR §2.104.

As grounds of opposition, it is alleged that:

1. Opposer CW Multimedia Corporation is a Kentucky corporation with a principal

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

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

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

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

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

Mark: CELEBSCALLU - 2 -Serial No: 77441634Published: August 26, 2008

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

CELEBRITIES CALL YOU and CELEBRITIESCALLYOU.COM & Design in connection with

integrated voice response telephone services; customized phone call and e-card services

(“Opposer’s Marks”).

5. Opposers Webb and Yelich have filed for registration of CELEBRITIES CALL

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

6. Opposers Webb and Yelich filed for registration of

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

77504846.

7. Applicant filed to register the proposed mark CELEBSCALLU, Serial Number

77441634, for “Voice message sending services,” on April 7, 2008, claiming a bona fide intent

to use the mark in commerce, as is evidenced by publication of said mark in the Official Gazette

in the August 26, 2008, issue (“Applicant’s Mark”).

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

May of 2007 and has not been abandoned. Opposers’ marks are is symbolic of extensive good

will and consumer recognition. As a result of the substantial amounts of time and effort in

advertising and promotion, Opposers have developed an exceedingly valuable goodwill in

respect to Opposers’ Marks.

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

meaning.

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

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

together.


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

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

customers.

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

consent or permission of Opposers.

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

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

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

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

filing of Applicant’s application to register Applicant’s Mark in the United States Patent and

Trademark Office.

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

with Opposer CW Multimedia Corporation on October 18, 2007.

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

2007.

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

Applicant’s filing to register Applicant’s Mark.

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

Application Serial No. 77441634.

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

Application Serial No. 77441634.

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

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


similar channels of commerce, and are directed to similar customers, registration of the proposed

mark CELEBSCALLU in connection with Applicant’s services is likely to deceive purchasers as

to the source or sponsorship of such services, to cause confusion, to cause mistake, or to deceive.

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

that Applicant’s services are sponsored, authorized, associated with or otherwise approved by

Opposers because the proposed mark closely resembles Opposers’ Marks. Deficiencies or faults

in the quality of Applicant’s services are likely to reflect negatively upon, tarnish and seriously

injure the reputation which Opposers have established for services provided under Opposers’

Marks. This confusion is likely to result in loss of revenues to Opposers and damage Opposers’

reputations.

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

relationship between Applicant’s services and Opposers. Such use of the CELEBSCALLU is

likely to cause confusion, mistake or deception with respect to the source or sponsorship of

Applicant’s services. Such use is likely to cause a significant level of sales by Applicant to

consumers who would be confused by the use of the proposed mark into believing that Opposers

are the source of Applicant’s services, resulting in ill-gotten gains by Applicant. Applicant’s use

of the proposed mark is therefore likely to result in Applicant’s trading off and benefiting from

the goodwill associated with Opposers, resulting in ill-gotten gains by Applicant.

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

prima facie effect of registration of Applicant’s mark would tend to impair Opposers’ right to use

the wording contained in Applicant’s mark.


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

prima facie effect of registration of Applicant’s mark would tend to impair Opposers’ right to

register Opposers’ Marks with the U.S. Patent and Trademark Office.

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

provisions of the Lanham Act, and Opposers would be damaged thereby.

WHEREFORE, Opposers pray that the application for registration of the mark

CELEBSCALLU, Serial No. 77441634, be refused and that this Opposition be sustained in favor

of Opposers.

The fee required by Sect. 2.6(a)(17) is enclosed herewith.

Opposer hereby appoints Erik M. Pelton, member of the Bars of the State of New Jersey

and the District of Columbia, and Christopher Shiplett, member of the Bar of the Commonwealth

of Virginia, at ERIK M. PELTON & ASSOCIATES, PLLC, PO Box 100637, Arlington, Virginia

22210, to act as attorney in the matter of the opposition identified above, to prosecute said

opposition, to transact all business in the Patent and Trademark Office, and in the United States

courts connected with the opposition, to sign its name to all papers which are hereinafter to be

filed in connection therewith, and to receive all communications relating to the same.

Respectfully submitted for Opposers,

Dated: September ____ 2008 By:Erik M. Pelton, Esq.Attorney for Opposers

ERIK M. PELTON & ASSOCIATES, PLLCPO Box 100637Arlington, Virginia 22210

Phone: 703.525.8009Fax: 703.525.8089Email: [email protected]



CHRIS A. WEBB, )JAMES JOSEPH YELICH, and )CW MULTIMEDIA CORPORATION, ) Opposition No. ____________

Opposers, )) In the matter of:

vs. )) Application Serial No. 77441634

XTREME PRODUCTIONS LLC ) Published on August 26, 2008Applicant. ) Mark:

) CELEBSCALLU

CERTIFICATE OF SERVICE

I hereby certify that a true and copy of the foregoing Notice of Opposition has beenserved on the following by mailing said copy on September 21, 2008, via overnight delivery,postage prepaid, to Applicant at its correspondence address of record:

Marc M. GorelnikTownsend and Townsend and Crew LLP2 Embarcadero Center, Floor 8San Francisco, California 94111-3833

By:Erik M. Pelton, Esq.

celebscallu - notice of opposition- final

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