Pre-Game Talk: Hurricanes Hockey Limited Partnership, NHL vs. Jay Kennette Media Group LLC

[Lempo]

GAME 91238639

Game Day: TBD

Number:	91238639	Filing Date:	12/28/2017
Status:	Pending	Status Date:	12/28/2017
General Contact Number:	571-272-8500
Interlocutory Attorney:	GEOFFREY MCNUTT
Paralegal Name:	ROCHELLE L ADAMS

[TBODY] [/TBODY]

Defendant
Name:	JAY KENNETTE MEDIA GROUP LLC
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

[TBODY] [/TBODY]

Plaintiff
Name:	Hurricanes Hockey Limited Partnership, National Hockey League
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

[TBODY] [/TBODY]

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)]​

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

• 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

Admissions

• Tennessee Bar – 2011
• United States Patent and Trademark Office – 2010

Memberships

• Knoxville Bar Association
• Tennessee Bar Association
• American Intellectual Property Law Association

Honors

• Best Advocate Award for the Southern Region in the Giles Sutherland Rich Patent Moot Court competition

Matt Googe | Robinson IP Law

Let's go Canes!

Click to read more...

 

[the halleJOKEL]

5-1 loss

 

[MinJaBen]

Bill Peters will lose a challenge in court.

 

[CandyCanes]

Oh how I wish Geoffrey McNutt was a player for the Carolina Hurricanes

 

[tarheelhockey]

Oh how I wish Geoffrey McNutt was a player for the Carolina Hurricanes

McNutt to Semin... that’s hockey baby!

 

[Surrounded By Ahos]

Bill Peters will lose a challenge in court.

In court they aren’t challenged, theyre objections.

I know this from watching a lot of Law and Order SVU.

 

[Lempo]

Don't know about them objections. In the shows the attorney occasionally throws a egregious implicative accusation at the person in the witness stand, and the opposing attorney jumps up with "HOB-ject-ION!" and the attorney nmbr 1 goes for a phlegmy "withdraaaaawn", with a mean girl look at the opposing attorney and a sideway glance at the jury.

The ******s game with the sustainable objections.

 

[bleedgreen]

All I want to know is if this will allow me to get a better Whalers hat. I’ve not enjoyed the selections of late.

And my chromey license plate covers from back then are falling apart too.

Take my money god damn it.

 

[Lempo]

They are literally fighting over who gets to take your money, so you got that going for you, @bleedgreen.

 

[SeaBasstian]

5-1 loss

FTW

 

[bleedgreen]

They are literally fighting over who gets to take your money, so you got that going for you, @bleedgreen.

Is it weird that our new owner has basically publicly indentified me and my people as a revenue stream they need to take advantage of and I’m totally ok with it?

Whereas I would’ve ripped off Pk’s arms and beaten him with them if he did the same.

Metaphorically speaking of course.

 

[Lempo]

Is it weird that our new owner has basically publicly indentified me and my people as a revenue stream they need to take advantage of and I’m totally ok with it?

Whereas I would’ve ripped off Pk’s arms and beaten him with them if he did the same.

Metaphorically speaking of course.

Well, it is an intellectual property asset they paid real money for, and its one that you legally have to react to to keep it in case someone seeks to infringe it. He's not coming actively particularly after your money, but, these being the circumstances, has to make the statement that your money belongs to them and not some weird Jay dude coming out of nowhere to register a trademark that belongs to them.

But, obviously he's a subprime banker and will fleece you given the chance. Metaphorically, at least.

 

[bleedgreen]

You take the fun out of everything. Literally speaking of course.

 

[garnetpalmetto]

Is it weird that our new owner has basically publicly indentified me and my people as a revenue stream they need to take advantage of and I’m totally ok with it?

Whereas I would’ve ripped off Pk’s arms and beaten him with them if he did the same.

Metaphorically speaking of course.

In addition to what @Lempo said, while I understand your enthusiasm (even though I feel like I'm the only person on the planet who doesn't share it), you've already been publicly identified as a revenue stream that needs to be taken advantage of. Through its Vintage line (which is what the Notice of Opposition is *really* about) the NHL continues to cater to you as well as Nordiques, North Stars, Scouts, and Americans fans. Be happy - had Dundon not purchased the time and somebody else had and moved them, I'm sure we'd no longer be a revenue stream they'd cater to. You'll note the lack of Thrashers gear in that Vintage line - I'm sure the Hurricanes would be treated similarly.

 

[Breakdowns]

f***ing ref, I mean judge. Let's go Whalers

 

[bleedgreen]

I am happy. Was just making a joke.

The Thrashers don’t really have the following the Whalers did and there will be a market for it for years to come but I get your point. I was fine with the vintage line, I’m fine with our owner doing it. I don’t really care which one gets the money. I hate going on eBay and seeing half assed crap made in someone’s garage being sold, even worse when someone I love buys that crap and gives it to me for Xmas not knowing they are getting screwed. If this potential mess organizes that and provides a quality product than I think it’s a good thing.

 

[Lempo]

You take the fun out of everything. Literally speaking of course.

The bit where I had the corners of my mouth twitching the most was when imagining you being literally fleeced. I'm maybe not the first place you should be seeking your fun from.

 

[Lempo]

I have allowed myself be told that the League kept the Winnipeg Jets 1.0 intellectual properties and they didn't go with the franchise to Arizona, so when Trashers moved to Winnipeg they could have it back. They certainly used the 1.0 logos and stuff a year ago in the outdoor game against EDM.

Maybe this caused that the League kept the Trashers IP too, when bestowing Winni stuff to Jets 2.0.

edit: yup, last owner: NHL. Status: registered and renewed. Prior to that, Atlanta Hockey Club

ATLANTA THRASHERS Trademark of Atlanta Hockey Club, Inc. - Registration Number 2411175 - Serial Number 75541900 :: Justia Trademarks

 

[bleedgreen]

The bit where I had the corners of my mouth twitching the most was when imagining you being literally fleeced. I'm maybe not the first place you should be seeking your fun from.

Wrong side of the bed today?

 

[Lempo]

Wrong side of the bed today?

I thought we were doing deadpan snark.

 

[RodTheBawd]

I thought you two had already worked out who slept on which side of the bed.

 

[Boom Boom Apathy]

You take the fun out of everything. Literally speaking of course.

Hey, I thought that was my job?

@RodTheBawd , get on this and take care of Lempo. I can't have competition of someone else on this board being literal and taking the fun out.

 

[bleedgreen]

I thought we were doing deadpan snark.

Oh good! Yours was so effective and borderline creepy I was completely outclassed....and frankly a little sad.

I do 48 hrs shifts now and then picked up an OT day, the day after I get out I have trouble catching the yokes that fly over my head. A little punchy.

 

[Lempo]

Hey, I thought that was my job?

You're a little late. I'm already torn.

Torn.

 

[Lempo]

Oh good! Yours was so effective and borderline creepy I was completely outclassed....and frankly a little sad.

I do 48 hrs shifts now and then picked up an OT day, the day after I get out I have trouble catching the yokes that fly over my head. A little punchy.

I was going for the kill there because you inadvertently managed to hit a nerve: our dog actually did a thing yesterday to the wrong side of bed. Mine.