- Feb 23, 2014
- 26,935
- 83,970
GAME 91238639
Game Day: TBD
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The trademark juggernaut the National Hockey League (hereon: "NHL") and the Hurricanes Hockey Limited Partnership (hereon: "Hurricanes") will take on the Jay Kennette Media Group LLC (hereon: "JKMG") over their registration of "HARTFORD WHALERS" standard character word mark related to goods and services of:
USPTO TTABVUE. Proceeding Number 91238639
As their Grounds for the Opposition of the registration, NHL and Hurricanes have presented:
As the Basis of Opposition NHL and Hurricanes have presented the Trademark of US Registration No. 1161394, Registration Date 07/14/1981:
The word mark "HARTFORD WHALERS" has not been registered, but has been used by the plaintiff for
In the Paragraph 4 in their Notice of Opposition, NHL and Hurricanes state that
In the Paragraph 10 and 11, NHL and Hurricanes note, that JKMG used the actual logo of Hartford Whalers as a specimen in their Trademark application for the word mark:
NHL and Hurricanes seem to be going to the game as a clear favorite, with JKMG having considerably diminished their position and any potential claim of their work mark trademark's unrelatedness to the Plaintiff's intellectual property by having used the actual Hartford Whalers logo as a specimen in their trademark application.
LINE-UPS
Lining up for NHL and Hurricanes, David H. Bernstein, Esq., a partner at Debevoise & Plimpton, is widely recognised as a 1st C in IP litigation:
JKMG is projected to ice Matthew M. Googe, of Robinson IP Law, a relative newcomer to the game compared to Bernstein:
Let's go Canes!
Game Day: TBD
Number: | 91238639 | Filing Date: | 12/28/2017 |
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Status: | Pending | Status Date: | 12/28/2017 |
General Contact Number: | 571-272-8500 | ||
Interlocutory Attorney: | GEOFFREY MCNUTT | ||
Paralegal Name: | ROCHELLE L ADAMS |
Defendant | ||||
Name: | JAY KENNETTE MEDIA GROUP LLC | |||
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Correspondence: | Matthew M. Googe Robinson IP Law, PLLC 9724 Kingston Pike, Suite 1403 Knoxville, TN 37922 [email protected], [email protected] | |||
Serial #: | 86931556 | Application File | Assignment | |
Application Status: | Opposition Pending | |||
Mark: | HARTFORD WHALERS |
Plaintiff | |||||
Name: | Hurricanes Hockey Limited Partnership, National Hockey League | ||||
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Correspondence: | David H. Bernstein, Esq. Debevoise & Plimpton LLP 919 Third Avenue New York, NY 10022 UNITED STATES [email protected], [email protected], [email protected], [email protected], [email protected], [email protected], [email protected], [email protected] Phone: 212-909-6696 | ||||
Serial #: | 73237792 | Application File | Assignment | Registration #: | 1161394 |
Application Status: | Renewed | ||||
Mark: | WH |
The trademark juggernaut the National Hockey League (hereon: "NHL") and the Hurricanes Hockey Limited Partnership (hereon: "Hurricanes") will take on the Jay Kennette Media Group LLC (hereon: "JKMG") over their registration of "HARTFORD WHALERS" standard character word mark related to goods and services of:
IC 025. US 022 039. G & S: Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Hooded sweatshirts; T-shirts; Baseball caps and hats. FIRST USE: 20051011. FIRST USE IN COMMERCE: 20051011
USPTO TTABVUE. Proceeding Number 91238639
As their Grounds for the Opposition of the registration, NHL and Hurricanes have presented:
Priority and likelihood of confusion
[Trademark Act Section 2(d)]
No use of mark in commerce before application
or amendment to allege use was filed
[Trademark Act Section 1(a) and (c)]
False suggestion of a connection with persons,
living or dead, institutions, beliefs, or national
symbols, or brings them into contempt, or disrepute
[Trademark Act Section 2(a)]
[Trademark Act Section 2(d)]
No use of mark in commerce before application
or amendment to allege use was filed
[Trademark Act Section 1(a) and (c)]
False suggestion of a connection with persons,
living or dead, institutions, beliefs, or national
symbols, or brings them into contempt, or disrepute
[Trademark Act Section 2(a)]
As the Basis of Opposition NHL and Hurricanes have presented the Trademark of US Registration No. 1161394, Registration Date 07/14/1981:
The word mark "HARTFORD WHALERS" has not been registered, but has been used by the plaintiff for
a variety of goods and services related to the sport of ice hockey, in-
cluding, but not limited to, merchandise and apparel, namely, athletic
apparel, shirts, pants, jackets, footwear, hats and caps, athletic uni-
forms; Hooded sweatshirts; T-shirts; Baseball caps and hats
In the Paragraph 4 in their Notice of Opposition, NHL and Hurricanes state that
The Hurricanes have worked with the NHL and its affiliates to continue to use the
HARTFORD WHALERS mark and the HW logo in connection with goods and services related to
the sport of ice hockey, including through the NHL Vintage Hockey program that commemorates
historic NHL member clubs through the sale of licensed merchandise bearing the names and logos
of such historic NHL member clubs. As part of this program, the NHL engages in a collateral
licensing program featuring the mark. Apparel and merchandise featuring the HARTFORD
WHALERS mark and the HW logo are sold online through the NHL online store at
shop.nhl.com/Hartford_Whalers_Gear/. Examples of HARTFORD WHALERS and HW apparel
and merchandise available for sale through the NHL online store include the items depicted on the
following pages:
In the Paragraph 10 and 11, NHL and Hurricanes note, that JKMG used the actual logo of Hartford Whalers as a specimen in their Trademark application for the word mark:
Applicant initially submitted the specimen shown below, featuring a plain white t-shirt with a back-of-the-neck tag featuring the HW logo: a green “W” that combines with a blue
whale’s tail to create the letter “H” in the negative white space. Any use of that mark would
infringe the Hurricanes’ rights in Reg. No. 1,161,394.
Although Applicant later submitted a substitute specimen (after the Examining
Attorney noted that the specimen did not show the applied-for mark), the fact that Applicant
submitted the Hurricanes’ HW logo as its initial specimen shows that Applicant obviously derived
its mark from Opposers’ HARTFORD WHALERS mark and sought to falsely associate its goods
with the Hartford Whalers team and its HW logo.
NHL and Hurricanes seem to be going to the game as a clear favorite, with JKMG having considerably diminished their position and any potential claim of their work mark trademark's unrelatedness to the Plaintiff's intellectual property by having used the actual Hartford Whalers logo as a specimen in their trademark application.
LINE-UPS
Lining up for NHL and Hurricanes, David H. Bernstein, Esq., a partner at Debevoise & Plimpton, is widely recognised as a 1st C in IP litigation:
David Bernstein chairs Debevoise’s Intellectual Property Litigation Group. He is widely recognized as one of the nation’s leading intellectual property litigators. Mr. Bernstein is acknowledged as an intellectual property “Star” in the IFLR Benchmark Litigation Guide and as an Intellectual Property “Trailblazer” and “Pioneer” by the National Law Journal. He is ranked in the top tier by Chambers Global and Chambers USA, which notes that he is a “rockstar” and “is roundly considered to be one of the finest trademark litigators in the nation” and where clients note he is “an exceptional, dynamic lawyer and a tenacious litigator” and “just incredible in terms of strategic planning,” and The Legal 500 US, where he is seen as “a brilliant litigator,” and “the dean of the IP litigation bar.” Mr. Bernstein is also ranked in the top tier in the World Trademark Review 1000, where sources note that he has “a larger-than-life reputation in this profession and he’s the real deal. He has an unmatched knowledge base, but also brings a ton of energy to his practice. He is on top of all the issues and very proactive in his management of cases.” “He is also indisputably one of the very best trademark lawyers in the country.” Managing Intellectual Property magazine has selected Mr. Bernstein as the Outstanding IP Litigator of the Year, The International Trademark Association has awarded Mr. Bernstein the President’s Award, the International Who’s Who of Trademark Lawyers has selected Mr. Bernstein as one of the top ten trademark lawyers in the world, and Euromoney Expert Guides has selected him as one of the top three trademark lawyers in the United States.
Mr. Bernstein is active in alternative dispute resolution. He has served as a neutral in ADR proceedings administered by the London Court of International Arbitration, the World Intellectual Property Organization, the International Institute for Conflict Prevention and Resolution, the International Centre for Dispute Resolution, the Hong Kong International Arbitration Centre, the National Arbitration Forum, and the Czech Arbitration Court.
Mr. Bernstein is an adjunct professor at New York University School of Law and George Washington University Law School, where he teaches Advanced Trademark Law. He has authored or co-authored numerous articles and chapters on intellectual property, as well as the leading treatise on advertising law, The Law of Advertising, Marketing and Promotion.
Mr. Bernstein is Past Counsel to INTA, has served on the Board of Directors, co-chaired the Annual Meeting, chaired the International Amicus Committee, and is currently Chair of the Emerging Issues Committee.
Mr. Bernstein joined Debevoise in 1990. He received an A.B. magna cum laude from Princeton University’s Woodrow Wilson School of Public and International Affairs in 1985, an M.Sc. from the London School of Economics and Political Science in 1986, and his J.D. from Yale Law School in 1989. Prior to joining Debevoise, Mr. Bernstein served as law clerk to the Hon. Robert E. Keeton, in the United States District Court for the District of Massachusetts, from 1989-1990.
David H. Bernstein - biography | Professionals | Debevoise & Plimpton LLP
JKMG is projected to ice Matthew M. Googe, of Robinson IP Law, a relative newcomer to the game compared to Bernstein:
Matt’s practice includes patent application preparation and prosecution, trademark application preparation and prosecution, copyrights, and related litigation.
While studying for his mechanical engineering degree at Baylor University, Matt worked as a manufacturing intern with Crossover Drives, Inc. and as a prototype systems testing and design intern at Uster Technologies. Matt worked as a judicial intern at the Federal District Court for the Eastern District of Tennessee during the summer of 2009.
While studying at the University of Tennessee College of Law, Matt served as a Student Materials Editor with the Tennessee Law Review. Matt also competed in the Giles Sutherland Rich Patent Moot Court competition, winning the Best Advocate Award for the Southern Region. During his time at Baylor University, Matt was president of the Baylor University Cycling Team.
Matt joined Robinson IP Law in 2013 as an associate attorney, having worked with Roby at their former firm.
Education
Admissions
- Bachelor of Science degree in Mechanical Engineering from Baylor University – 2007
- Doctor of Jurisprudence (Cum Laude) from the University of Tennessee College of Law – 2011
Memberships
- Tennessee Bar – 2011
- United States Patent and Trademark Office – 2010
Honors
- Knoxville Bar Association
- Tennessee Bar Association
- American Intellectual Property Law Association
Matt Googe | Robinson IP Law
- Best Advocate Award for the Southern Region in the Giles Sutherland Rich Patent Moot Court competition
Let's go Canes!