petitioner information · 12. further, lucasfilm’s princess leia mark has been used in the title...

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

ESTTA Tracking number: ESTTA1111143

Filing date: 01/29/2021

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Petition for Cancellation

Notice is hereby given that the following party has filed a petition to cancel the registration indicated below.

Petitioner Information

Name Lucasfilm Ltd. LLC

Entity Limited Liability Company Citizenship California

Address ONE LETTERMAN DRIVE, BLDG. BSAN FRANCISCO, CA 94129UNITED STATES

Attorney informa-tion

LINDA K. MCLEODKELLY IP, LLP1300 19TH STREET, NW, SUITE 300WASHINGTON, DC 20036UNITED STATESPrimary Email: [email protected] Email(s): [email protected], [email protected] phone number provided.

Docket Number

Registration Subject to Cancellation

Registration No. 6089153 Registration date 06/30/2020

Registrant Princess Leahs Designs LLC104 PRELUDE DRRICHLANDS, NC 28574UNITED STATES

Goods/Services Subject to Cancellation

Class 014. First Use: 2018/09/01 First Use In Commerce: 2018/09/01All goods and services in the class are subject to cancellation, namely: Jewelry charms

Grounds for Cancellation

Priority and likelihood of confusion Trademark Act Sections 14(1) and 2(d)

Dilution by blurring Trademark Act Sections 14(1) and 43(c)

Continued registration barred by claim or issuepreclusion

Mayer/Berkshire Corp. v. Berkshire FashionsInc., 424 F.3d 1229, 76 USPQ2d 1310 (Fed. Cir.2005)

Marks Cited by Petitioner as Basis for Cancellation

U.S. Registration 5037184 Application Date 12/10/2014

http://estta.uspto.gov

No.

Registration Date 09/06/2016 Foreign PriorityDate

NONE

Word Mark PRINCESS LEIA

Design Mark

Description ofMark

NONE

Goods/Services Class 016. First use: First Use: 1995/04/00 First Use In Commerce: 1995/04/00

a series of fiction books; books featuring stories; comic books; decals

U.S. Application/ Registra-tion No.

NONE Application Date NONE

Registration Date NONE


Goods/Services jewelry; entertainment services; films; television programs; computerand video games; books; comic books; amusement parks; clothing;hats; toys; cups; water bottles; phone cases; artwork; bags; and allother goods and services in the Petition for Cancellation.

Attachments PRINCESS LEAHS DESIGNS - Petition to Cancel.pdf(1812699 bytes )

Signature /Linda McLeod/

Name LINDA K. MCLEOD

Date 01/29/2021

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

LUCASFILM LTD. LLC,

Petitioner, v.

PRINCESS LEAHS DESIGNS LLC,

Respondent.

Cancellation No.: Mark: PRINCESS LEAH’S DESIGNS Registration No.: 6089153 Issued: June 30, 2020

PETITION FOR CANCELLATION

Lucasfilm Ltd. LLC, a limited liability company of the State of California, having a

principal place of business at One Letterman Drive, Bldg. B, San Francisco, CA 94129

(“Petitioner” or “Lucasfilm”) believes that it is being and will be damaged by the

registration of Princess Leahs Designs LLC’s (“Respondent”) mark PRINCESS LEAH’S

DESIGNS shown in Registration No. 6089153, and hereby petitions to cancel the same.

As grounds for cancellation, Lucasfilm alleges that, upon actual knowledge with respect

to itself and its own acts, and upon information and belief as to other matters:

Lucasfilm, Its Famous STAR WARS Film Franchise, PRINCESS LEIA Mark, and Products and Services

1. Founded in 1971, Lucasfilm, through its predecessors-in-interest, related

companies and licensees, is one of the leading producers and providers of

entertainment, films, and various consumer products.

2. In 1977, Lucasfilm released the first “STAR WARS” film in a series of

enormously successful films. The STAR WARS (1977) film, later retitled STAR WARS:

Episode IV A New Hope, was created by George Lucas, and featured the actors Mark

Hamill as Luke Skywalker, Harrison Ford as Han Solo, Carrie Fischer as Princess Leia,

Petition for Cancellation Reg. No. 6089153

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and Alec Guinness as Obi-Wan Kenobi, among others. The first film in the series was

set a long time ago in a galaxy far, far away in the midst of a civil war in which Luke

Skywalker joined forces with Jedi Master Obi-Wan Kenobi, Han Solo, a “Wookiee”

named Chewbacca, and two Droids, R2-D2 and C-3PO, to save the universe from the

Galactic Empire's battle-station Death Star, and rescue Princess Leia from the evil

Darth Vader. The STAR WARS film earned hundreds of millions of dollars in domestic

box office revenues, and received 10 nominations and 6 Academy Awards, including a

nomination for Best Picture.

3. The original STAR WARS film was followed by a series of enormously

successful motion pictures including STAR WARS: Episode V The Empire Strikes Back

(1980), STAR WARS: Episode VI Return of the Jedi (1983), STAR WARS: Episode I

The Phantom Menace (1999), STAR WARS: Episode II Attack of the Clones (2002),

STAR WARS: Episode III Revenge of the Sith (2005), STAR WARS: The Force

Awakens (2015), STAR WARS: The Last Jedi (2017), Rogue One: A STAR WARS

Story (2016), Solo: A STAR WARS Story (2018), and STAR WARS: The Rise of

Skywalker (2019) (collectively, the “STAR WARS Film Franchise”). The STAR WARS

Film Franchise is known to many millions of people in the United States. Every STAR

WARS film has either been nominated for or won an Academy Award.

4. Lucasfilm’s STAR WARS Film Franchise includes six of the top twenty all

time grossing movies in the domestic market: STAR WARS: Episode IV A New Hope

(1977), STAR WARS: Episode I The Phantom Menace (1999); STAR WARS: The

Force Awakens (2015), which is the number one highest grossing film of all time, Rogue


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One: A STAR WARS Story (2016), STAR WARS: The Last Jedi (2017), and STAR

WARS: The Rise of Skywalker (2019).

5. In addition to its films, Lucasfilm’s STAR WARS products and services

have included comic books since as early as 1977, books since as early as 1980, video

games since as early as 1983, and a television series since as early as 1985. Recent

television series include STAR WARS: Clone Wars (2008-2014), and STAR WARS

Rebels (2014-2018), among other television programs. (Collectively, the STAR WARS

Film Franchise, television series, video games, comic books, and books are referred to

as the “STAR WARS Franchise.”)

6. Lucasfilm is known for using and licensing its properties, marks,

characters, and elements from its STAR WARS Franchise in connection with a wide

variety of products and services, including various entertainment services, sound

recordings, live entertainment shows, amusement parks, clothing, toys, jewelry, games,

computer games, computer software, mobile applications, and consumer merchandise,

among numerous other products and services. The STAR WARS brand is one of the

strongest core brands in the entertainment industry and the licensing of STAR WARS

and brands from that franchise is renowned for its attention to detail and high quality.

Lucasfilm maintains rigorous control over the quality of licensed products and services

bearing its trademarks, and all use of Lucasfilm’s licensed marks inures to its benefit.

7. For example, for many years Lucasfilm itself has used and/or licensed

others to use many of the marks, characters, and elements from its STAR WARS

Franchise for a wide variety of products and services, including jewelry, as shown in the

representative examples below.


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Lucasfilm’s Famous PRINCESS LEIA Character, Name, and Mark

8. Lucasfilm’s PRINCESS LEIA mark was coined by George Lucas as the

name of a central character in the STAR WARS Franchise, and the PRINCESS LEIA

character and mark first appeared in the original 1977 film STAR WARS: Episode IV A

New Hope. Lucasfilm’s PRINCESS LEIA character is a leader of the Rebel Alliance that

destroys the Galactic Empire’s battle station The Death Star. The PRINCESS LEIA

character later became the general of The Resistance and led the battle against KYLO

REN and The First Order, which rose to power after the fall of the Galactic Empire,

resulting in The Resistance destroying the First Order’s superweapon The Starkiller

Base.

9. Lucasfilm’s PRINCESS LEIA character, name, and mark has appeared as

a central feature in numerous films of the STAR WARS Franchise. Many characters in

the STAR WARS Franchise have fought with, at the direction of, or against the

PRINCESS LEIA character, including Luke Skywalker, Darth Vader, Han Solo,

Chewbacca, Kylo Ren, Rey, and Jabba the Hut, among others.

10. Lucasfilm’s PRINCESS LEIA character is well-known for her unique

design and style such as her immediately recognizable “bun” hair style and her iconic

gold bikini. Indeed, the PRINCESS LEIA character is one of the most widely-recognized

and admired female film characters of all time.

11. In addition to films, Lucasfilm’s PRINCESS LEIA character, name, and

mark is used in many other mediums of the STAR WARS Franchise, including television

series, video games, comic books, and books.


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12. Further, Lucasfilm’s PRINCESS LEIA mark has been used in the title of

and in connection with a STAR WARS book entitled STAR WARS: The Courtship of

Princess Leia published in 1994 and with a STAR WARS comic book series entitled

STAR WARS: Princess Leia published in 2015.

13. For many years and prior to the filing date of Registration No. 6089153,

Respondent’s claimed date of first use, and any date of first use that Respondent can

prove, Lucasfilm has used the PRINCESS LEIA mark in commerce, either itself or

through licensees, in connection with a wide variety of products including, but not limited

to, jewelry, clothing, hats, toys, cups, water bottles, phone cases, artwork, bags, and

books, as shown in the representative examples below.


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14. Further, Lucasfilm for decades has consistently displayed or depicted the

PRINCESS LEIA character on or in connection with a wide variety of STAR WARS

products, services, and promotional material in ways that reinforce and further the

connection in the minds of consumers between the PRINCESS LEIA character, name,

and mark and Lucasfilm and its STAR WARS Franchise, including as shown in the



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Lucasfilm’s Registration Rights in Its PRINCESS LEIA Mark

15. In addition to its strong common law rights, Lucasfilm owns the following

valid and subsisting United States trademark registration for its PRINCESS LEIA mark

(printouts from the PTO TSDR and assignment database are attached as Exhibit A):

Mark Reg. No. Reg. Date

Goods

PRINCESS LEIA 5037184 06-SEP-2016

A series of fiction books; books featuring stories; comic books; decals in Class 16 (First Use in Commerce: April 1995)

16. The above registration constitutes prima facie evidence of Lucasfilm’s

ownership of and exclusive rights to use the PRINCESS LEIA mark in commerce on or

in connection with the products recited in the registration. (The PRINCESS LEIA names

and marks set forth in Paragraphs 7-15 above are collectively referred to as “Lucasfilm’s

PRINCESS LEIA Mark” and the goods and services listed in Paragraphs 1-15 above

are collectively referred to as “Lucasfilm’s Goods and Services.”)

17. Lucasfilm and/or its licensees and related companies have spent

considerable effort and resources advertising and promoting Lucasfilm’s PRINCESS

LEIA Mark in connection with Lucasfilm’s Goods and Services for decades. As a result

of these efforts, Lucasfilm has established a strong association and identification in the

minds of the public between Lucasfilm, Lucasfilm’s Goods and Services, and

Lucasfilm’s PRINCESS LEIA Mark.

18. Through its long use of Lucasfilm’s PRINCESS LEIA Mark for over 40

years, enormous commercial success of the STAR WARS Franchise, substantial

advertising and promotion of and extensive media attention and publicity for Lucasfilm’s

PRINCESS LEIA Mark and PRINCESS LEIA character, and widespread merchandising


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and licensing of Lucasfilm’s PRINCESS LEIA Mark and PRINCESS LEIA character with

tremendous commercial success, Lucasfilm owns significant and valuable goodwill in

Lucasfilm’s PRINCESS LEIA Mark, which has been famous for decades.

Respondent and Its PRINCESS LEAH’S DESIGNS Mark

19. Princess Leahs Designs LLC (“Respondent”) is a North Carolina limited

liability company with an address of 104 Prelude Dr., Richlands, North Carolina 28574.

According to the North Carolina Secretary of States’ records, one of Respondent’s

managers is Jessica Worley with an address of 104 Prelude Dr., Richlands, North

Carolina 28574.

20. On September 5, 2019, Respondent filed Application Serial No. 88606190

(the “Application”) for registration of the mark PRINCESS LEAH’S DESIGNS

(“Respondent’s Mark”), with “DESIGNS” disclaimed, for “jewelry charms” in International

Class 14 (“Respondent’s Goods”) under Section 1(a), 15 U.S.C. § 1051(a). Respondent

claims use since September 1, 2018.

21. The Application was signed on September 5, 2019, by Jessica Worley as

“owner” of Respondent.

22. On June 30, 2020, the Application matured into registration and was

issued Registration No. 6089153 (the “Registration”).

Lucasfilm’s Prior Proceeding and Judgment

23. On April 5, 2019, Lucasfilm filed Opposition No. 91247434 (the “Prior

Proceeding”) against Application Serial No. 87945145 for the mark PRINCESS LEAH’S

DESIGNS for “custom handmade jewelry” in Class 14 (the “Abandoned Application). A


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copy of Lucasfilm’s as-filed Notice of Opposition from the Prior Proceeding is attached

as Exhibit B.

24. The owner of the Abandoned Application and defendant in the Prior

Proceeding is Jessica Worley, an individual with an address of 104 Prelude Dr.,

Richlands, North Carolina 28574. A printout from the PTO TSDR database of the

Abandoned Application is attached as Exhibit C.

25. On May 25, 2019, the Board issued a Notice of Default in the Prior

Proceeding finding that Jessica Worley failed to file an answer by May 15, 2019, and

allowing Jessica Worley thirty days to respond. A copy of the Board’s Notice of Default

in the Prior Proceeding is attached as Exhibit D.

26. On July 5, 2019, the Board issued a judgment by default in the Prior

Proceeding sustaining Lucasfilm’s opposition and refusing registration of the mark

PRINCESS LEAH’S DESIGNS shown in the Abandoned Application. A copy of the

Board’s judgment by default in the Prior Proceeding is attached as Exhibit E.

27. Upon information and belief, the same Jessica Worley that owned the

Abandoned Application and is subject to the Board’s judgment in the Prior Proceeding

also owns and controls Respondent. As noted above, Ms. Worley signed the underlying

Application that matured into the Registration as “owner.” A copy of the Application is

attached as Exhibit F.

Count I: Likelihood of Confusion, 15 U.S.C. § 1052(d)

28. Lucasfilm repeats and realleges each and every allegation set forth above.

29. Lucasfilm has priority based on its prior use in commerce of Lucasfilm’s

PRINCESS LEIA Mark since before the filing date of the Application, Respondent’s


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September 1, 2018 claimed date of first use, and any date of first use that Respondent

can prove. Lucasfilm also has priority based on its pleaded valid and subsisting prior-

issued registration for Lucasfilm’s PRINCESS LEIA Mark.

30. Respondent’s Mark is confusingly similar to Lucasfilm’s PRINCESS LEIA

Mark in overall sound, appearance, connotation, and commercial impression. The

PRINCESS LEAH’S portion of Respondent’s Mark is strikingly similar in appearance to

Lucasfilm’s PRINCESS LEIA Mark, and PRINCESS LEAH’S is the first term in

Respondent’s Mark and is also the dominant and most distinctive element of

Respondent’s Mark as Respondent disclaimed the word “DESIGNS.” Moreover, the

dominant PRINCESS LEAH’S portion of Respondent’s Mark is identical to Lucasfilm’s

PRINCESS LEIA Mark in sound and pronunciation.

31. Respondent’s Goods are identical and/or related to Lucasfilm’s Goods and

Services advertised, promoted, offered, and/or sold by Lucasfilm in connection with


32. Further, the combination of the words PRINCESS and LEIA in the coined

Lucasfilm’s PRINCESS LEIA Mark is arbitrary and consumers would not expect to see

such an arbitrary combination outside of the STAR WARS Franchise. Consumers are

thus likely to mistakenly believe that Respondent’s Goods offered under Respondent’s

Mark, which combines the identical term PRINCESS with the nearly identical term

LEAH’S, is connected, associated, or otherwise affiliated with Lucasfilm, Lucasfilm’s

PRINCESS LEIA Mark, and/or Lucasfilm’s Goods and Services.

33. Respondent’s Mark shown in Reg. No. 6089153 so resembles the

previously used and registered Lucasfilm’s PRINCESS LEIA Mark as to be likely, when


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registered and used in connection with Respondent’s Goods, to cause confusion, or to

cause mistake, or to deceive under Section 2(d) of the Lanham Act, as amended, 15

U.S.C. § 1052(d).

34. This likelihood of confusion is materially increased based on the fame of

Lucasfilm’s PRINCESS LEIA Mark as discussed above, and by Lucasfilm’s widespread

merchandising and licensing of Lucasfilm’s PRINCESS LEIA Mark and PRINCESS

LEIA character (and other marks, characters, and elements of Lucasfilm’s STAR WARS

Franchise) with significant commercial success as discussed above. For at least these

reasons, the coined mark PRINCESS LEIA uniquely signifies Lucasfilm, Lucasfilm’s

PRINCESS LEIA Mark, and Lucasfilm’s STAR WARS Franchise in the minds of

consumers, and consumers are likely to mistakenly believe that Respondent’s Goods

offered under the mark PRINCESS LEAH’S DESIGNS are affiliated with Lucasfilm,

Lucasfilm’s PRINCESS LEIA Mark, and/or Lucasfilm’s STAR WARS Franchise, or are

licensed, sponsored, endorsed, or approved by Lucasfilm.

Count II: Dilution by Blurring, 15 U.S.C. § 1125(c)(1)

35. Lucasfilm repeats and realleges each and every allegation set forth

above.

36. Lucasfilm’s PRINCESS LEIA Mark is famous and distinctive.

37. Lucasfilm’s PRINCESS LEIA Mark became famous and distinctive

before the filing date of the Application, Respondent’s September 1, 2018 claimed

date of first use, and any date of first use that Respondent can prove.

38. Lucasfilm has used Lucasfilm’s PRINCESS LEIA Mark for over 40 years

and during that time it has spent significant sums engaging in extensive, nationwide


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advertising, promotion, and use of Lucasfilm’s PRINCESS LEIA Mark. Moreover,

Lucasfilm has engaged in extensive and far-reaching merchandising and licensing of

Lucasfilm’s PRINCESS LEIA Mark and PRINCESS LEIA character across numerous

products and services, and Lucasfilm has had massive sales of Lucasfilm’s Goods

and Services in connection with Lucasfilm’s PRINCESS LEIA Mark for decades.

39. Lucasfilm’s PRINCESS LEIA Mark has received extensive unsolicited

media attention nationwide. Such extensive and frequent media attention has had a

substantial impact on the public, and has long created an association in the minds of

consumers between Lucasfilm’s PRINCESS LEIA Mark and Lucasfilm and its STAR

WARS Franchise

40. For at least these reasons, the coined mark PRINCESS LEIA uniquely

signifies Lucasfilm, Lucasfilm’s PRINCESS LEIA Mark, and Lucasfilm’s STAR WARS

Franchise in the minds of consumers.

41. Respondent’s Mark shown in Registration No. 6089153, which closely

resembles the famous Lucasfilm’s PRINCESS LEIA Mark previously registered and

used in commerce, is likely to dilute the distinctive quality of the famous Lucasfilm’s

PRINCESS LEIA Mark in violation of Section 43(c) of the Lanham Act, 15 U.S.C. §

1125(c).

Count III: Res Judicata or Claim Preclusion


above.

43. Respondent is precluded from registering Applicant’s Mark under the

doctrine of res judicata or claim preclusion.


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44. On April 5, 2019, Lucasfilm filed the Prior Proceeding against the

Abandoned Application for PRINCESS LEAH’S DESIGNS, asserting likelihood of

confusion and dilution.

45. On July 5, 2019, the Board issued a final judgment by default in the

Prior Proceeding sustaining Lucasfilm’s opposition and refusing registration of the

Abandoned Application for PRINCESS LEAH’S DESIGNS for failure to file an answer.

46. This proceeding involves identical parties or their privies because the

Prior Proceeding was between Lucasfilm and Jessica Worley, who owns and controls

Respondent. Further, the Prior Proceeding involved the same claims and

transactional facts that are involved in this proceeding.

47. Accordingly, Respondent is precluded from registering the identical

PRINCESS LEAH’S DESIGNS mark in the Registration covering identical or virtually

identical goods.

WHEREFORE, Lucasfilm believes that it is being damaged, and will be damaged,

by the registration of the mark shown in Registration No. 6089153 and respectfully

requests that this Petition for Cancellation be sustained, and that Registration No.

6089153 be cancelled.

The filing fee has been submitted electronically. Any deficiency in the fee should

be charged to Deposit Account No. 506154.


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Respectfully submitted,

Dated: January 29, 2021 By: /Linda K. McLeod/ David M. Kelly [email protected] Linda K. McLeod [email protected] Clint A. Taylor [email protected] Kelly IP, LLP 1300 19th Street, N.W., Suite 300 Washington, D.C. 20036 Telephone: 202-808-3570 Facsimile: 202-354-5232 Attorneys for Petitioner Lucasfilm Ltd. LLC

EXHIBIT A

Mark Information

Mark LiteralElements:

PRINCESS LEIA

Standard CharacterClaim:

Yes. The mark consists of standard characters without claim to any particular font style, size, or color.

Mark DrawingType:

4 - STANDARD CHARACTER MARK

Goods and Services

Note:The following symbols indicate that the registrant/owner has amended the goods/services:

Brackets [..] indicate deleted goods/services;Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; andAsterisks *..* identify additional (new) wording in the goods/services.

For: a series of fiction books; books featuring stories; comic books; decals

InternationalClass(es):

016 - Primary Class U.S Class(es): 002, 005, 022, 023, 029, 037, 038, 050

Class Status: ACTIVE

Basis: 1(a)

First Use: Apr. 1995 Use in Commerce: Apr. 1995

Basis Information (Case Level)

Filed Use: No Currently Use: Yes

Filed ITU: Yes Currently ITU: No

Filed 44D: No Currently 44E: No

Filed 44E: No Currently 66A: No

Filed 66A: No Currently No Basis: No

Filed No Basis: No

Current Owner(s) Information

Owner Name: Lucasfilm Ltd. LLC

Generated on: This page was generated by TSDR on 2021-01-29 10:43:50 EST

Mark: PRINCESS LEIA

US Serial Number: 86476868 Application FilingDate:

Dec. 10, 2014

US RegistrationNumber:

5037184 Registration Date: Sep. 06, 2016

Register: Principal

Mark Type: Trademark

TM5 Common StatusDescriptor:

LIVE/REGISTRATION/Issued and Active

The trademark application has been registered with the Office.

Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.

Status Date: Sep. 06, 2016

Publication Date: Nov. 03, 2015 Notice ofAllowance Date:

Dec. 29, 2015

Owner Address: One Letterman Drive, Bldg. BSan Francisco, CALIFORNIA UNITED STATES 94129

Legal Entity Type: LIMITED LIABILITY COMPANY State or CountryWhere Organized:

CALIFORNIA

Attorney/Correspondence Information

Attorney of Record

Attorney Name: Steve Ackerman

Attorney PrimaryEmail Address:

[email protected] Attorney EmailAuthorized:

Yes

Correspondent

CorrespondentName/Address:

STEVE ACKERMANTHE WALT DISNEY COMPANY500 S BUENA VISTA STBURBANK, CALIFORNIA UNITED STATES 91521-0007

Phone: 818-560-1000 Fax: 818-848-6424

Correspondent e-mail:

[email protected] Correspondent e-mail Authorized:

Yes

Domestic Representative - Not Found

Prosecution History

Date DescriptionProceedingNumber

Sep. 06, 2016 REGISTERED-PRINCIPAL REGISTER

Jul. 30, 2016 NOTICE OF ACCEPTANCE OF STATEMENT OF USE E-MAILED

Jul. 29, 2016 ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED

Jul. 23, 2016 STATEMENT OF USE PROCESSING COMPLETE 74055

Jun. 24, 2016 USE AMENDMENT FILED 74055

Jul. 23, 2016 CASE ASSIGNED TO INTENT TO USE PARALEGAL 74055

Jun. 24, 2016 TEAS STATEMENT OF USE RECEIVED

Dec. 29, 2015 NOA E-MAILED - SOU REQUIRED FROM APPLICANT

Nov. 03, 2015 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED

Nov. 03, 2015 PUBLISHED FOR OPPOSITION

Oct. 14, 2015 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED

Sep. 30, 2015 LAW OFFICE PUBLICATION REVIEW COMPLETED 68123

Sep. 30, 2015 ASSIGNED TO LIE 68123

Sep. 03, 2015 APPROVED FOR PUB - PRINCIPAL REGISTER

Sep. 03, 2015 EXAMINER'S AMENDMENT ENTERED 88888

Sep. 03, 2015 NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED 6328

Sep. 03, 2015 EXAMINERS AMENDMENT E-MAILED 6328

Sep. 03, 2015 EXAMINERS AMENDMENT -WRITTEN 74666

Sep. 02, 2015 TEAS/EMAIL CORRESPONDENCE ENTERED 88889

Sep. 01, 2015 CORRESPONDENCE RECEIVED IN LAW OFFICE 88889

Sep. 01, 2015 TEAS RESPONSE TO OFFICE ACTION RECEIVED

Mar. 24, 2015 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325

Mar. 24, 2015 NON-FINAL ACTION E-MAILED 6325

Mar. 24, 2015 NON-FINAL ACTION WRITTEN 74666

Mar. 23, 2015 ASSIGNED TO EXAMINER 74666

Dec. 15, 2014 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM

Dec. 13, 2014 NEW APPLICATION ENTERED IN TRAM

TM Staff and Location Information

TM Staff Information - None

File Location

Current Location: PUBLICATION AND ISSUE SECTION Date in Location: Jul. 29, 2016

Proceedings

Summary

Number ofProceedings:

2

Type of Proceeding: Opposition

ProceedingNumber:

91251914 Filing Date: Oct 24, 2019

Status: Terminated Status Date: Jan 28, 2020

InterlocutoryAttorney:

ANDREW P BAXLEY

Defendant

Name: Li Jin

CorrespondentAddress:

XIONG ZI HONG1803 ZHONGAN BUILDING, BUJI STREET, LONGGASHENZHEN CITY CHINA , 518000


[email protected] , [email protected]

Associated marks

Mark Application StatusSerialNumber

RegistrationNumber

LEIA Abandoned - After Inter-Partes Decision 88562788

Plaintiff(s)

Name: Lucasfilm Ltd. LLC


DAVID M KELLYKELLY IP LLP1300 19TH STREET NW, SUITE 300WASHINGTON DC UNITED STATES , 20036


[email protected] , [email protected] , [email protected]

Associated marks

Mark Application Status Serial NumberRegistrationNumber

PRINCESS LEIA Registered 86476868 5037184

Prosecution History

Entry Number History Text Date Due Date

1 FILED AND FEE Oct 24, 2019

2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Oct 29, 2019 Dec 08, 2019

3 INSTITUTED Oct 29, 2019

4 NOTICE OF DEFAULT Dec 18, 2019

5 BD DECISION: OPP SUSTAINED Jan 28, 2020

6 TERMINATED Jan 28, 2020


ProceedingNumber:

91247434 Filing Date: Apr 05, 2019

Status: Terminated Status Date: Jul 05, 2019


MARY B MYLES

Defendant

Name: Jessica Worley


JESSICA WORLEY104 PRELUDE DRRICHLANDS NC UNITED STATES , 28574



Associated marks


RegistrationNumber

PRINCESS LEAH'S DESIGNS Abandoned - After Inter-Partes Decision 87945145

Plaintiff(s)



LINDA K MCLEODKELLY IP LLP1300 19TH STREET NWWASHINGTON DC UNITED STATES , 20036



Associated marks



Prosecution History


1 FILED AND FEE Apr 05, 2019

2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Apr 05, 2019 May 15, 2019

3 PENDING, INSTITUTED Apr 05, 2019

4 NOTICE OF DEFAULT May 25, 2019

5 BD DECISION: OPP SUSTAINED Jul 05, 2019

6 TERMINATED Jul 05, 2019

EXHIBIT B

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

ESTTA Tracking number: ESTTA965104

Filing date: 04/05/2019

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 Lucasfilm Ltd. LLC

Granted to Dateof previous ex-tension

04/10/2019

Address One Letterman Drive, Bldg. BSan Francisco, CA 94129UNITED STATES

Attorney informa-tion

Linda K. McLeodKelly IP, LLP1300 19th Street, NW, Suite 300Washington, DC 20036UNITED [email protected], [email protected], [email protected] phone number provided

Applicant Information

Application No 87945145 Publication date 12/11/2018

Opposition FilingDate

04/05/2019 Opposition Peri-od Ends

04/10/2019

Applicant Worley, Jessica104 Prelude DrRichlands, NC 28574UNITED STATES

Goods/Services Affected by Opposition

Class 014. First Use: 2010/01/04 First Use In Commerce: 2010/01/04All goods and services in the class are opposed, namely: custom handmade jewelry

Grounds for Opposition

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

Dilution by blurring Trademark Act Sections 2 and 43(c)

Marks Cited by Opposer as Basis for Opposition

U.S. RegistrationNo.

5037184 Application Date 12/10/2014

Registration Date 09/06/2016 Foreign PriorityDate

NONE

http://estta.uspto.gov


Design Mark

Description ofMark

NONE

Goods/Services Class 016. First use: First Use: 1995/04/00 First Use In Commerce: 1995/04/00

a series of fiction books; books featuring stories; comic books; decals

U.S. Application/ Registra-tion No.

NONE Application Date NONE

Registration Date NONE


Goods/Services jewelry; entertainment services; films; television programs; computerand video games; books; comic books; amusement parks; clothing;hats; toys; cups; water bottles; phone cases; artwork; bags; and allother goods and services in the Notice of Opposition.

Attachments 86476868#TMSN.png( bytes )Notice of Opposition - PRINCESS LEAHS DESIGNS.pdf(777741 bytes )

Signature /Linda K. McLeod/

Name Linda K. McLeod

Date 04/05/2019

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

LUCASFILM LTD. LLC,

Opposer, v.

JESSICA WORLEY,

Applicant.

Opposition No.: Mark: PRINCESS LEAH’S DESIGNS Application No.: 87945145 Filed: June 1, 2018

NOTICE OF OPPOSITION

Lucasfilm Ltd. LLC, a limited liability company of the State of California, having a

principal place of business at One Letterman Drive, Bldg. B, San Francisco, CA 94129

(“Opposer” or “Lucasfilm”) believes that it is being and will be damaged by the

registration of the mark PRINCESS LEAH’S DESIGNS shown in Application Serial No.

87945145, and hereby oppose the same. As grounds for opposition, Lucasfilm alleges

that, upon actual knowledge with respect to itself and its own acts, and upon information

and belief as to other matters:

Lucasfilm, Its Famous STAR WARS Film Franchise, PRINCESS LEIA Mark, and Products and Services

1. Founded in 1971, Lucasfilm, through its predecessors-in-interest, related

companies and licensees, is one of the leading producers and providers of

entertainment, films, and various consumer products.

2. In 1977, Lucasfilm released the first “STAR WARS” film in a series of

enormously successful films. The STAR WARS (1977) film, later retitled STAR WARS:

Episode IV – A New Hope, was created by George Lucas, and featured the actors Mark

Hamill as Luke Skywalker, Harrison Ford as Han Solo, Carrie Fischer as Princess Leia,

Notice of Opposition App. No. 87945145

2

and Alec Guinness as Obi-Wan Kenobi, among others. The first film in the series was

set a long time ago in a galaxy far, far away in the midst of a civil war in which Luke

Skywalker joined forces with Jedi Master Obi-Wan Kenobi, Han Solo, a “Wookiee”

named Chewbacca, and two Droids, R2-D2 and C-3PO, to save the universe from the

Galactic Empire's battle-station Death Star, and rescue Princess Leia from the evil

Darth Vader. The STAR WARS film earned hundreds of millions of dollars in domestic

box office revenues, and received 10 nominations and 6 Academy Awards, including a

nomination for Best Picture.

3. The original STAR WARS film was followed by a series of enormously

successful motion pictures including STAR WARS: Episode V – The Empire Strikes

Back (1980), STAR WARS: Episode VI - Return of the Jedi (1983), STAR WARS:

Episode I – The Phantom Menace (1999), STAR WARS: Episode II – Attack of the

Clones (2002), STAR WARS: Episode III – Revenge of the Sith (2005), STAR WARS:

Episode VII – The Force Awakens (2015), STAR WARS: Episode VIII – The Last Jedi

(2017), Rogue One: A STAR WARS Story (2016), and Solo: A STAR WARS Story

(2018) (collectively, the “STAR WARS Film Franchise”). Further, Lucasfilm has

announced plans to release several new films as part of the STAR WARS Film

Franchise, including STAR WARS: Episode IX, scheduled for release in 2019. The

STAR WARS Film Franchise is known to many millions of people in the United States.

Every STAR WARS film has either been nominated for or won an Academy Award.

4. Lucasfilm’s STAR WARS Film Franchise includes five of the top fifteen all

time grossing movies in the domestic market: STAR WARS: Episode IV – A New Hope

(1977), STAR WARS: Episode I – The Phantom Menace (1999); STAR WARS: Episode


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VII – The Force Awakens (2015), which is the number one highest grossing film of all

time, Rogue One: A STAR WARS Story (2016), and STAR WARS: Episode VIII – The

Last Jedi (2017).

5. In addition to its films, Lucasfilm’s STAR WARS products and services

have included comic books since as early as 1977, books since as early as 1980, video

games since as early as 1983, and a television series since as early as 1985. Recent

television series include STAR WARS: Clone Wars (2008-2014), and STAR WARS

Rebels (2014-2018), among other television programs. (Collectively, the STAR WARS

Film Franchise, television series, video games, comic books, and books are referred to

as the “STAR WARS Franchise.”)

6. Lucasfilm is known for using and licensing its properties, marks,

characters, and elements from its STAR WARS Franchise in connection with a wide

variety of products and services, including various entertainment services, sound

recordings, live entertainment shows, amusement parks, clothing, toys, jewelry, games,

computer games, computer software, mobile applications, and consumer merchandise,

among numerous other products and services. The STAR WARS brand is one of the

strongest core brands in the entertainment industry and the licensing of STAR WARS

and brands from that franchise is renowned for its attention to detail and high quality.

Lucasfilm maintains rigorous control over the quality of licensed products and services

bearing its trademarks, and all use of Lucasfilm’s licensed marks inures to its benefit.

7. For example, for many years Lucasfilm itself has used and/or licensed

others to use many of the marks, characters, and elements from its STAR WARS

Franchise for a wide variety of products and services, including jewelry, as shown in the


4



5

Lucasfilm’s Famous PRINCESS LEIA Character, Name, and Mark

8. Lucasfilm’s PRINCESS LEIA mark was coined by George Lucas as the

name of a central character in the STAR WARS Franchise, and the PRINCESS LEIA

character and mark first appeared in the original 1977 film STAR WARS: Episode IV – A

New Hope. Lucasfilm’s PRINCESS LEIA character is a leader of the Rebel Alliance that

destroys the Galactic Empire’s battle station The Death Star. The PRINCESS LEIA

character later became the general of The Resistance and led the battle against KYLO

REN and The First Order, which rose to power after the fall of the Galactic Empire,

resulting in The Resistance destroying the First Order’s superweapon The Starkiller

Base.

9. Lucasfilm’s PRINCESS LEIA character, name, and mark has appeared as

a central feature in numerous films of the STAR WARS Franchise. Many characters in

the STAR WARS Franchise have fought with, at the direction of, or against the

PRINCESS LEIA character, including Luke Skywalker, Darth Vader, Han Solo,

Chewbacca, Kylo Ren, Rey, and Jabba the Hut, among others.

10. Lucasfilm’s PRINCESS LEIA character is well-known for her unique

design and style such as her immediately recognizable “bun” hair style and her iconic

gold bikini. Indeed, the PRINCESS LEIA character is one of the most widely-recognized

and admired female film characters of all time.

11. In addition to films, Lucasfilm’s PRINCESS LEIA character, name, and

mark is used in many other mediums of the STAR WARS Franchise, including television

series, video games, comic books, and books.


6

12. Further, Lucasfilm’s PRINCESS LEIA mark has been used in the title of

and in connection with a STAR WARS book entitled STAR WARS: The Courtship of

Princess Leia published in 1994 and with a STAR WARS comic book series entitled

STAR WARS: Princess Leia published in 2015.

13. For many years and prior to the filing date of the opposed application and

any date of first use that Applicant can prove, Lucasfilm has used the PRINCESS LEIA

mark in commerce, either itself or through licensees, in connection with a wide variety of

products including, but not limited to, jewelry, clothing, hats, toys, cups, water bottles,

phone cases, artwork, bags, and books, as shown in the representative examples

below.


7


8

14. Further, Lucasfilm for decades has consistently displayed or depicted the

PRINCESS LEIA character on or in connection with a wide variety of STAR WARS

products, services, and promotional material in ways that reinforce and further the

connection in the minds of consumers between the PRINCESS LEIA character, name,

and mark and Lucasfilm and its STAR WARS Franchise, including as shown in the



9


10

Lucasfilm’s Registration Rights in Its PRINCESS LEIA Mark

15. In addition to its strong common law rights, Lucasfilm owns the following

valid and subsisting United States trademark registration for its PRINCESS LEIA mark

(printouts from the PTO TSDR and assignment database are attached as Exhibit A):

Mark Reg. No. Reg. Date

Goods

PRINCESS LEIA 5037184 06-SEP-2016

A series of fiction books; books featuring stories; comic books; decals in Class 16 (First Use in Commerce: April 1995)

16. The above registration constitutes prima facie evidence of Lucasfilm’s

ownership of and exclusive rights to use the PRINCESS LEIA mark in commerce on or

in connection with the products recited in the registration. (The PRINCESS LEIA names

and marks set forth in Paragraphs 7-15 above are collectively referred to as “Lucasfilm’s

PRINCESS LEIA Mark” and the goods and services listed in Paragraphs 1-15 above

are collectively referred to as “Lucasfilm’s Goods and Services.”)

17. Lucasfilm and/or its licensees and related companies have spent

considerable effort and resources advertising and promoting Lucasfilm’s PRINCESS

LEIA Mark in connection with Lucasfilm’s Goods and Services for decades. As a result

of these efforts, Lucasfilm has established a strong association and identification in the

minds of the public between Lucasfilm, Lucasfilm’s Goods and Services, and


18. Through its long use of Lucasfilm’s PRINCESS LEIA Mark for over 40

years, enormous commercial success of the STAR WARS Franchise, substantial

advertising and promotion of and extensive media attention and publicity for Lucasfilm’s

PRINCESS LEIA Mark and PRINCESS LEIA character, and widespread merchandising


11

and licensing of Lucasfilm’s PRINCESS LEIA Mark and PRINCESS LEIA character with

tremendous commercial success, Lucasfilm owns significant and valuable goodwill in

Lucasfilm’s PRINCESS LEIA Mark, which has been famous for decades.

Applicant and Her PRINCESS LEAH’S DESIGNS Mark

19. Jessica Worley (“Applicant”) is a United States individual with an address

of 104 Prelude Dr., Richlands, North Carolina 28574.

20. Applicant is the current listed owner of U.S. Application Serial No.

87945145 (the “Application”), filed on June 1, 2018 under Section 1(a), 15 U.S.C. §

1051(a), for the mark PRINCESS LEAH’S DESIGNS (“Applicant’s Mark”), with

“DESIGNS” disclaimed, for “custom handmade jewelry” in International Class 14

(“Applicant’s Goods”). Applicant claims use since January 4, 2010.

21. On December 11, 2018, the Application was published for opposition in

the Trademark Official Gazette (“TMOG”), and on December 20, 2018, Lucasfilm timely

filed an extension of time to oppose.

Count I: Likelihood of Confusion, 15 U.S.C. § 1052(d)

22. Lucasfilm repeats and realleges each and every allegation set forth above.

23. Lucasfilm has priority based on its prior use in commerce of Lucasfilm’s

PRINCESS LEIA Mark since before the filing date of the Application, Applicant’s

January 4, 2010 claimed date of first use, and any date of first use that Applicant can

prove. Lucasfilm also has priority based on its pleaded valid and subsisting prior-issued

registration for Lucasfilm’s PRINCESS LEIA Mark.

24. Applicant’s Mark is confusingly similar to Lucasfilm’s PRINCESS LEIA

Mark in overall sound, appearance, connotation, and commercial impression. The


12

PRINCESS LEAH’S portion of Applicant’s Mark is strikingly similar in appearance to

Lucasfilm’s PRINCESS LEIA Mark, and PRINCESS LEAH’S is the first term in

Applicant’s Mark and is also the dominant and most distinctive element of Applicant’s

Mark as Applicant disclaimed the word “DESIGNS.” Moreover, the dominant

PRINCESS LEAH’S portion of Applicant’s Mark is identical to Lucasfilm’s PRINCESS

LEIA Mark in sound and pronunciation.

25. Applicant’s Goods are identical and/or related to Lucasfilm’s Goods and

Services advertised, promoted, offered, and/or sold by Lucasfilm in connection with


26. Further, the combination of the words PRINCESS and LEIA in the coined

Lucasfilm’s PRINCESS LEIA Mark is arbitrary and consumers would not expect to see

such an arbitrary combination outside of the STAR WARS Franchise. Consumers are

thus likely to mistakenly believe that Applicant’s Goods offered under Applicant’s Mark,

which combines the identical term PRINCESS with the nearly identical term LEAH’S, is

connected, associated, or otherwise affiliated with Lucasfilm, Lucasfilm’s PRINCESS

LEIA Mark, and/or Lucasfilm’s Goods and Services.

27. Applicant’s Mark shown in Application Serial No. 87945145 so resembles

the previously used and registered Lucasfilm’s PRINCESS LEIA Mark as to be likely,

when registered and used in connection with Applicant’s Goods, to cause confusion, or

to cause mistake, or to deceive under Section 2(d) of the Lanham Act, as amended, 15

U.S.C. § 1052(d).

28. This likelihood of confusion is materially increased based on the fame of

Lucasfilm’s PRINCESS LEIA Mark as discussed above, and by Lucasfilm’s widespread


13

merchandising and licensing of Lucasfilm’s PRINCESS LEIA Mark and PRINCESS

LEIA character (and other marks, characters, and elements of Lucasfilm’s STAR WARS

Franchise) with significant commercial success as discussed above. For at least these

reasons, the coined mark PRINCESS LEIA uniquely signifies Lucasfilm, Lucasfilm’s

PRINCESS LEIA Mark, and Lucasfilm’s STAR WARS Franchise in the minds of

consumers, and consumers are likely to mistakenly believe that Applicant’s Goods

offered under the mark PRINCESS LEAH’S DESIGNS are affiliated with Lucasfilm,

Lucasfilm’s PRINCESS LEIA Mark, and/or Lucasfilm’s STAR WARS Franchise, or are

licensed, sponsored, endorsed, or approved by Lucasfilm.

Count II: Dilution by Blurring, 15 U.S.C. § 1125(c)(1)


above.

30. Lucasfilm’s PRINCESS LEIA Mark is famous and distinctive.

31. Lucasfilm’s PRINCESS LEIA Mark became famous and distinctive

before the filing date of the Application, Applicant’s January 4, 2010 claimed date of

first use, and any date of first use that Applicant can prove.

32. Lucasfilm has used Lucasfilm’s PRINCESS LEIA Mark for over 40 years

and during that time it has spent significant sums engaging in extensive, nationwide

advertising, promotion, and use of Lucasfilm’s PRINCESS LEIA Mark. Moreover,

Lucasfilm has engaged in extensive and far-reaching merchandising and licensing of

Lucasfilm’s PRINCESS LEIA Mark and PRINCESS LEIA character across numerous

products and services, and Lucasfilm has had massive sales of Lucasfilm’s Goods

and Services in connection with Lucasfilm’s PRINCESS LEIA Mark for decades.


14

33. Lucasfilm’s PRINCESS LEIA Mark has received extensive unsolicited

media attention nationwide. Such extensive and frequent media attention has had a

substantial impact on the public, and has long created an association in the minds of

consumers between Lucasfilm’s PRINCESS LEIA Mark and Lucasfilm and its STAR

WARS Franchise

34. For at least these reasons, the coined mark PRINCESS LEIA uniquely

signifies Lucasfilm, Lucasfilm’s PRINCESS LEIA Mark, and Lucasfilm’s STAR WARS

Franchise in the minds of consumers.

35. Applicant’s Mark shown in Application Serial No. 87945145, which

closely resembles the famous Lucasfilm’s PRINCESS LEIA Mark previously

registered and used in commerce, is likely to dilute the distinctive quality of the

famous Lucasfilm’s PRINCESS LEIA Mark in violation of Section 43(c) of the Lanham

Act, 15 U.S.C. § 1125(c).

WHEREFORE, Lucasfilm believes that it is being damaged, and will be damaged,

by the registration of the mark shown in Application No. 87945145 and respectfully

requests that the notice of opposition be sustained, and that registration to Applicant be

refused.

The filing fee has been submitted electronically. Any deficiency in the fee should

be charged to Deposit Account No. 506154.


15

Respectfully submitted,

Dated: April 5, 2019 By: /Linda K. McLeod/ Linda K. McLeod [email protected] Clint A. Taylor [email protected] Kelly IP, LLP 1300 19th Street, N.W., Suite 300 Washington, D.C. 20036 Telephone: 202-808-3570 Facsimile: 202-354-5232 Attorneys for Opposer Lucasfilm Ltd. LLC

EXHIBIT A

Mark Information


PRINCESS LEIA



Mark DrawingType:


Goods and Services

Note: The following symbols indicate that the registrant/owner has amended the goods/services:


For: a series of fiction books; books featuring stories; comic books; decals


016 - Primary Class U.S Class(es): 002, 005, 022, 023, 029, 037, 038, 050

Class Status: ACTIVE

Basis: 1(a)

First Use: Apr. 1995 Use in Commerce: Apr. 1995


Filed Use: No Currently Use: Yes Amended Use: No

Filed ITU: Yes Currently ITU: No Amended ITU: No

Filed 44D: No Currently 44D: No Amended 44D: No

Filed 44E: No Currently 44E: No Amended 44E: No

Filed 66A: No Currently 66A: No

Filed No Basis: No Currently No Basis: No


Owner Name: Lucasfilm Ltd. LLC

Owner Address: One Letterman Drive, Bldg. BSan Francisco, CALIFORNIA 94129UNITED STATES

Legal Entity Type: LIMITED LIABILITY COMPANY State or CountryWhere Organized:

CALIFORNIA

Generated on: This page was generated by TSDR on 2019-04-03 10:31:12 EDT

Mark: PRINCESS LEIA


Dec. 10, 2014

US RegistrationNumber:

5037184 Registration Date: Sep. 06, 2016

Register: Principal


Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.

Status Date: Sep. 06, 2016

Publication Date: Nov. 03, 2015 Notice ofAllowance Date:

Dec. 29, 2015


Attorney of Record

Attorney Name: Steve Ackerman

Attorney PrimaryEmail Address:

[email protected] Attorney EmailAuthorized:

Yes

Correspondent


STEVE ACKERMANTHE WALT DISNEY COMPANY500 S BUENA VISTA STBURBANK, CALIFORNIA 91521-0007UNITED STATES

Phone: 818-560-1000 Fax: 818-848-6424


[email protected] Correspondent e-mail Authorized:

Yes


Prosecution History


Sep. 06, 2016 REGISTERED-PRINCIPAL REGISTER

Jul. 30, 2016 NOTICE OF ACCEPTANCE OF STATEMENT OF USE E-MAILED

Jul. 29, 2016 ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED

Jul. 23, 2016 STATEMENT OF USE PROCESSING COMPLETE 74055

Jun. 24, 2016 USE AMENDMENT FILED 74055

Jul. 23, 2016 CASE ASSIGNED TO INTENT TO USE PARALEGAL 74055

Jun. 24, 2016 TEAS STATEMENT OF USE RECEIVED

Dec. 29, 2015 NOA E-MAILED - SOU REQUIRED FROM APPLICANT

Nov. 03, 2015 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED

Nov. 03, 2015 PUBLISHED FOR OPPOSITION

Oct. 14, 2015 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED

Sep. 30, 2015 LAW OFFICE PUBLICATION REVIEW COMPLETED 68123

Sep. 30, 2015 ASSIGNED TO LIE 68123

Sep. 03, 2015 APPROVED FOR PUB - PRINCIPAL REGISTER

Sep. 03, 2015 EXAMINER'S AMENDMENT ENTERED 88888

Sep. 03, 2015 NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED 6328

Sep. 03, 2015 EXAMINERS AMENDMENT E-MAILED 6328

Sep. 03, 2015 EXAMINERS AMENDMENT -WRITTEN 74666




Mar. 24, 2015 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325

Mar. 24, 2015 NON-FINAL ACTION E-MAILED 6325

Mar. 24, 2015 NON-FINAL ACTION WRITTEN 74666

Mar. 23, 2015 ASSIGNED TO EXAMINER 74666

Dec. 15, 2014 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM

Dec. 13, 2014 NEW APPLICATION ENTERED IN TRAM


TM Staff Information - None

File Location

Current Location: PUBLICATION AND ISSUE SECTION Date in Location: Jul. 29, 2016

EXHIBIT C

Mark Information


PRINCESS LEAH'S DESIGNS



Mark DrawingType:


Disclaimer: "DESIGNS"

Goods and Services

Note:The following symbols indicate that the registrant/owner has amended the goods/services:


For: custom handmade jewelry


014 - Primary Class U.S Class(es): 002, 027, 028, 050

Class Status: ABANDONED

Basis: 1(a)

First Use: Jan. 04, 2010 Use in Commerce: Jan. 04, 2010


Filed Use: Yes Currently Use: Yes

Filed ITU: No Currently ITU: No

Filed 44D: No Currently 44E: No

Filed 44E: No Currently 66A: No

Filed 66A: No Currently No Basis: No

Filed No Basis: No


Generated on: This page was generated by TSDR on 2021-01-29 10:48:02 EST

Mark: PRINCESS LEAH'S DESIGNS


Jun. 01, 2018

Filed as TEAS RF: Yes Currently TEAS RF: Yes

Register: Principal


TM5 Common StatusDescriptor:

DEAD/APPLICATION/Refused/Dismissed or Invalidated

This trademark application was refused, dismissed, or invalidated by the Officeand this application is no longer active.

Status: Abandoned after an inter partes decision by the Trademark Trial and Appeal Board. For further information, see TTABVUE on theTrademark Trial and Appeal Board web page.

Status Date: Jul. 05, 2019

Publication Date: Dec. 11, 2018

Date Abandoned: Jul. 05, 2019

Owner Name: Worley, Jessica

Owner Address: 104 Prelude DrRichlands, NORTH CAROLINA UNITED STATES 28574

Legal Entity Type: INDIVIDUAL Citizenship: UNITED STATES


Attorney of Record - None

Correspondent


JESSICA WORLEY104 PRELUDE DRRICHLANDS, NORTH CAROLINA UNITED STATES 28574

Phone: 404-734-9452


Prosecution History


Jul. 05, 2019 ABANDONMENT NOTICE E-MAILED - INTER PARTES DECISION

Jul. 05, 2019 ABANDONMENT - AFTER INTER PARTES DECISION

Jul. 05, 2019 OPPOSITION TERMINATED NO. 999999 247434

Jul. 05, 2019 OPPOSITION SUSTAINED NO. 999999 247434

Apr. 05, 2019 OPPOSITION INSTITUTED NO. 999999 247434

Dec. 20, 2018 EXTENSION OF TIME TO OPPOSE RECEIVED

Dec. 11, 2018 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED

Dec. 11, 2018 PUBLISHED FOR OPPOSITION

Nov. 21, 2018 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED

Nov. 02, 2018 LAW OFFICE PUBLICATION REVIEW COMPLETED 70884

Nov. 02, 2018 ASSIGNED TO LIE 70884

Oct. 22, 2018 APPROVED FOR PUB - PRINCIPAL REGISTER

Oct. 19, 2018 TEAS/EMAIL CORRESPONDENCE ENTERED 88889

Oct. 19, 2018 CORRESPONDENCE RECEIVED IN LAW OFFICE 88889

Oct. 19, 2018 TEAS REQUEST FOR RECONSIDERATION RECEIVED

Oct. 01, 2018 NOTIFICATION OF FINAL REFUSAL EMAILED

Oct. 01, 2018 FINAL REFUSAL E-MAILED

Oct. 01, 2018 FINAL REFUSAL WRITTEN 91165




Sep. 20, 2018 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325

Sep. 20, 2018 NON-FINAL ACTION E-MAILED 6325

Sep. 20, 2018 NON-FINAL ACTION WRITTEN 91165

Sep. 20, 2018 ASSIGNED TO EXAMINER 91165

Jun. 08, 2018 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM

Jun. 05, 2018 NEW APPLICATION ENTERED IN TRAM


TM Staff Information

TM Attorney: GEARHART, DAVID JAMES Law OfficeAssigned:

LAW OFFICE 112

File Location

Current Location: TTAB Date in Location: Jul. 05, 2019

Proceedings

Summary

Number ofProceedings:

2


ProceedingNumber:

91247434 Filing Date: Apr 05, 2019

Status: Terminated Status Date: Jul 05, 2019


MARY B MYLES

Defendant

Name: Jessica Worley


JESSICA WORLEY104 PRELUDE DRRICHLANDS NC UNITED STATES , 28574



Associated marks


RegistrationNumber


Plaintiff(s)



LINDA K MCLEODKELLY IP LLP1300 19TH STREET NWWASHINGTON DC UNITED STATES , 20036



Associated marks



Prosecution History


1 FILED AND FEE Apr 05, 2019

2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Apr 05, 2019 May 15, 2019

3 PENDING, INSTITUTED Apr 05, 2019

4 NOTICE OF DEFAULT May 25, 2019

5 BD DECISION: OPP SUSTAINED Jul 05, 2019

6 TERMINATED Jul 05, 2019

Type of Proceeding: Extension of Time

ProceedingNumber:

87945145 Filing Date: Dec 20, 2018

Status: Terminated Status Date: Apr 10, 2019


Defendant

Name: Worley, Jessica


JESSICA WORLEY104 PRELUDE DRRICHLANDS NC , 28574



Associated marks


RegistrationNumber


Potential Opposer(s)



Linda K. McLeodKelly IP, LLP1300 19th Street, NW, Suite 300Washington DC UNITED STATES , 20036



Associated marks


Prosecution History


1 FIRST 90-DAY REQUEST TO EXT TIME TO OPPOSE Dec 20, 2018

2 EXT GRANTED Dec 20, 2018

EXHIBIT D

May 25, 2019

Opposition No. 91247434

Lucasfilm Ltd. LLC

v.

Worley, Jessica

NOTICE OF DEFAULT

An answer to the notice of opposition was due in this proceeding on May 15,

2019. Inasmuch as it appears that no answer has been filed, nor has Applicant filed

a motion to further extend the time to file an answer, notice of default is hereby

entered against Applicant pursuant to Fed. R. Civ. P. 55(a).

Accordingly, proceedings are suspended. Applicant is allowed until thirty days

from the date of this order to show cause why judgment by default should not be

entered against Applicant in accordance with Fed. R. Civ. P. 55(b)(2).

The failure to file a timely answer tolls all deadlines, including the discovery

conference, until the issue of default is resolved. See Trademark Rule 2.106(a).

The schedule for the discovery conference, initial disclosures, discovery and trial

will be reset in the event that the Board resumes proceedings.

UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board P.O. Box 1451

Alexandria, VA 22313-1451

General Contact Number: 571-272-8500 General Email: [email protected]

mailto:[email protected]

EXHIBIT E

RA

July 5, 2019

Opposition No. 91247434

Lucasfilm Ltd. LLC

v.

Jessica Worley

By the Trademark Trial and Appeal Board:

On May 25, 2019, the Board issued a notice of default to Applicant because no

answer had been filed.

No response to the notice of default has been filed.

Accordingly, judgment by default is hereby entered against Applicant, the

opposition is sustained, and registration to Applicant is refused. See Fed. R. Civ. P.

55(b), and Trademark Rule 2.106(a).

UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board

P.O. Box 1451

Alexandria, VA 22313-1451

General Contact Number: 571-272-8500

General Email: [email protected]

EXHIBIT F

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1478 (Rev 09/2006)

OMB No. 0651-0009 (Exp 02/28/2021)

Trademark/Service Mark Application, Principal Register

TEAS Plus Application

Serial Number: 88606190

Filing Date: 09/05/2019

NOTE: Data fields with the * are mandatory under TEAS Plus. The wording "(if applicable)" appears where the field is only mandatory

under the facts of the particular application.

The table below presents the data as entered.

Input Field Entered

TEAS Plus YES

MARK INFORMATION

*MARK Princess Leah's Designs LLC

*STANDARD CHARACTERS YES

USPTO-GENERATED IMAGE YES

LITERAL ELEMENT Princess Leah's Designs LLC

*MARK STATEMENTThe mark consists of standard characters, without claim to any particular font style,

size, or color.

REGISTER Principal

APPLICANT INFORMATION

*OWNER OF MARK Princess Leahs Designs LLC

*STREET 104 Prelude Dr

*CITY Richlands

*STATE

(Required for U.S. applicants)North Carolina

*COUNTRY United States

*ZIP/POSTAL CODE

(Required for U.S. and certain international

addresses)

28574

PHONE 770-733-2553

FAX 404-260-4395

EMAIL ADDRESS XXXX

AUTHORIZED TO COMMUNICATE VIA

EMAILYes

WEBSITE ADDRESS https://www.etsy.com/shop/PrincessLeahsDesigns

LEGAL ENTITY INFORMATION

*TYPE LIMITED LIABILITY COMPANY

* STATE/COUNTRY WHERE LEGALLY

ORGANIZEDNorth Carolina

../FTK0002.JPG

GOODS AND/OR SERVICES AND BASIS INFORMATION

*INTERNATIONAL CLASS 014

*IDENTIFICATION Jewelry charms

*FILING BASIS SECTION 1(a)

FIRST USE ANYWHERE DATE At least as early as 09/01/2018

FIRST USE IN COMMERCE DATE At least as early as 09/01/2018

SPECIMEN FILE NAME(S)

JPG FILE(S) \\TICRS\EXPORT17\IMAGEOUT 17\886\061\88606190\xml1\ FTK0003.JPG

ORIGINAL PDF FILE SPE0-162193215246-20190905163114385735_._Annotation_2019-09-05_171014.pdf

CONVERTED PDF FILE(S)

(1 page)\\TICRS\EXPORT17\IMAGEOUT17\886\061\88606190\xml1\FTK0004.JPG

ORIGINAL PDF FILE SPE0-162193215246-20190905163114385735_._Annotation_2019-09-05_171157.pdf

CONVERTED PDF FILE(S)

(1 page)\\TICRS\EXPORT17\IMAGEOUT17\886\061\88606190\xml1\FTK0005.JPG

SPECIMEN DESCRIPTION

This is a handdrawn portrait of my daughter Leah,She is who my jewelry company is

named after. The image is Princess Leah's Designs LLC written above the photo of

Leah www.princessleahdesigns.com is below Follow us on Facebook and Instagram

@princessleahdesigns is the final words in a bubble

ADDITIONAL STATEMENTS INFORMATION

*TRANSLATION

(if applicable)

*TRANSLITERATION

(if applicable)

*CLAIMED PRIOR REGISTRATION

(if applicable)

*CONSENT (NAME/LIKENESS)

(if applicable)

*CONCURRENT USE CLAIM

(if applicable)

CORRESPONDENCE INFORMATION

*NAME Princess Leahs Designs LLC

FIRM NAME Princess Leahs Designs LLC

*STREET 104 Prelude Dr

*CITY Richlands

*STATE

(Required for U.S. addresses)North Carolina

*COUNTRY United States

*ZIP/POSTAL CODE 28574

PHONE 770-733-2553

FAX 404-260-4395

*EMAIL ADDRESS [email protected]

*AUTHORIZED TO COMMUNICATE VIA

EMAILYes

FEE INFORMATION

../FTK0003.JPG

../SPE0-162193215246-20190905163114385735_._Annotation_2019-09-05_171014.pdf

../FTK0004.JPG


../FTK0005.JPG

APPLICATION FILING OPTION TEAS Plus

NUMBER OF CLASSES 1

FEE PER CLASS 225

*TOTAL FEE PAID 225

SIGNATURE INFORMATION

* SIGNATURE /Jessica Worley/

* SIGNATORY'S NAME Jessica Worley

* SIGNATORY'S POSITION Owner

SIGNATORY'S PHONE NUMBER 770-733-2553

* DATE SIGNED 09/05/2019

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1478 (Rev 09/2006)

OMB No. 0651-0009 (Exp 02/28/2021)

Trademark/Service Mark Application, Principal Register

TEAS Plus Application


Filing Date: 09/05/2019

To the Commissioner for Trademarks:

MARK: Princess Leah's Designs LLC (Standard Characters, see mark)

The literal element of the mark consists of Princess Leah's Designs LLC. The mark consists of standard characters, without claim to any

particular font style, size, or color.

The applicant, Princess Leahs Designs LLC, a limited liability company legally organized under the laws of North Carolina, having an address of

104 Prelude Dr

Richlands, North Carolina 28574

United States

770-733-2553(phone)

404-260-4395(fax)

XXXX

requests registration of the trademark/service mark identified above in the United States Patent and Trademark Office on the Principal Register

established by the Act of July 5, 1946 (15 U.S.C. Section 1051 et seq.), as amended, for the following:

For specific filing basis information for each item, you must view the display within the Input Table.

International Class 014: Jewelry charms

Use in Commerce: The applicant is using the mark in commerce on or in connection with the identified goods/services. The applicant attaches, or

will later submit, one specimen as a JPG/PDF image file showing the mark as used in commerce on or in connection with any item in the class of

listed goods/services, regardless of whether the mark itself is in the standard character format or is a stylized or design mark. The specimen image

file may be in color, and the image must be in color if color is being claimed as a feature of the mark.

In International Class 014, the mark was first used by the applicant or the applicant's related company or licensee predecessor in interest at least

as early as 09/01/2018, and first used in commerce at least as early as 09/01/2018, and is now in use in such commerce. The applicant is

submitting one(or more) specimen(s) showing the mark as used in commerce on or in connection with any item in the class of listed

goods/services, consisting of a(n) This is a handdrawn portrait of my daughter Leah,She is who my jewelry company is named after. The image

is Princess Leah's Designs LLC written above the photo of Leah www.princessleahdesigns.com is below Follow us on Facebook and Instagram

@princessleahdesigns is the final words in a bubble.

JPG file(s):

Specimen File1

Original PDF file:

SPE0-162193215246-20190905163114385735_._Annotation_2019-09-05_171014.pdf

Converted PDF file(s) (1 page)

Specimen File1

Original PDF file:

SPE0-162193215246-20190905163114385735_._Annotation_2019-09-05_171157.pdf

Converted PDF file(s) (1 page)

Specimen File1

For informational purposes only, applicant's website address is: https://www.etsy.com/shop/PrincessLeahsDesigns

The applicant's current Correspondence Information:

Princess Leahs Designs LLC

Princess Leahs Designs LLC

104 Prelude Dr

Richlands, North Carolina 28574

../FTK0002.JPG')

../FTK0003.JPG


../FTK0004.JPG


../FTK0005.JPG

770-733-2553(phone)

404-260-4395(fax)

[email protected] (authorized).

Email Authorization: I authorize the USPTO to send email correspondence concerning the application to the applicant or the applicant's

attorney, or the applicant's domestic representative at the email address provided in this application. I understand that a valid email address must

be maintained and that the applicant or the applicant's attorney must file the relevant subsequent application-related submissions via the

Trademark Electronic Application System (TEAS). Failure to do so will result in the loss of TEAS Plus status and a requirement to submit an

additional processing fee of $125 per international class of goods/services.

A fee payment in the amount of $225 has been submitted with the application, representing payment for 1 class(es).

Declaration

Basis:

If the applicant is filing the application based on use in commerce under 15 U.S.C. § 1051(a):

The signatory believes that the applicant is the owner of the trademark/service mark sought to be registered;

The mark is in use in commerce on or in connection with the goods/services in the application;

The specimen(s) shows the mark as used on or in connection with the goods/services in the application; and

To the best of the signatory's knowledge and belief, the facts recited in the application are accurate.

AND/OR

If the applicant is filing the application based on an intent to use the mark in commerce under 15 U.S.C. § 1051(b), § 1126(d),

and/or § 1126(e):

The signatory believes that the applicant is entitled to use the mark in commerce;

The applicant has a bona fide intention to use the mark in commerce on or in connection with the goods/services in the

application; and

To the best of the signatory's knowledge and belief, the facts recited in the application are accurate.

To the best of the signatory's knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the

mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the

goods/services of such other persons, to cause confusion or mistake, or to deceive.

To the best of the signatory's knowledge, information, and belief, formed after an inquiry reasonable under the circumstances, the

allegations and other factual contentions made above have evidentiary support.

The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §

1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration

resulting therefrom, declares that all statements made of his/her own knowledge are true and all statements made on information and

belief are believed to be true.

Declaration Signature

Signature: /Jessica Worley/ Date: 09/05/2019

Signatory's Name: Jessica Worley

Signatory's Position: Owner

Signatory's Phone Number: 770-733-2553

Payment Sale Number: 88606190

Payment Accounting Date: 09/05/2019


Internet Transmission Date: Thu Sep 05 17:21:27 EDT 2019

TEAS Stamp: USPTO/FTK-XXX.XXX.XXX.XXX-20190905172127

561554-88606190-6101ae21c91eb718d40169c1

bd9bd84ae987317a970d48fd1f6e936e72a57a3d

1-CC-21261618-20190905163114385735

petitioner information · 12. further, lucasfilm’s princess leia mark has been used in the title...

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