notice of opposition · for “leather jackets” in class 25 (“the application”). 2. chadwick...
TRANSCRIPT
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
ESTTA Tracking number: ESTTA1075754
Filing date: 08/18/2020
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 Chadwick McQueen and The Trustee of the Terry McQueen TestamentaryTrust, a California Trust, Composed of City National Bank of California
Granted to Dateof previous ex-tension
08/19/2020
Address 15250 VENTURA BLVD., SUITE 300C/O BEN GROUPSHERMAN OAKS, CA 91403UNITED STATES
Correspondenceinformation
SALLY M. ABEL, ESQ.FENWICK & WEST LLP801 CALIFORNIA STREETSILICON VALLEY CENTERMOUNTAIN VIEW, CA 94041-1990UNITED STATESPrimary Email: [email protected]
Applicant Information
Application No. 88722459 Publication date 04/21/2020
Opposition FilingDate
08/18/2020 Opposition Peri-od Ends
08/19/2020
Applicant Podolsky,Jacobo2035 SUNSET LAKE ROAD SUITE B-2,NEWARK, DE 19702UNITED STATES
Goods/Services Affected by Opposition
Class 025. First Use: 2019/02/01 First Use In Commerce: 2019/02/01All goods and services in the class are opposed, namely: Leather jackets
Grounds for Opposition
Priority and likelihood of confusion Trademark Act Section 2(d)
False suggestion of a connection with persons,living or dead, institutions, beliefs, or nationalsymbols, or brings them into contempt, or disrep-ute
Trademark Act Section 2(a)
Other Common law rights
Marks Cited by Opposer as Basis for Opposition
U.S. RegistrationNo.
3948067 Application Date 05/29/2007
Registration Date 04/19/2011 Foreign PriorityDate
NONE
Word Mark STEVE MCQUEEN
Design Mark
Description ofMark
NONE
Goods/Services Class 025. First use: First Use: 2007/12/31 First Use In Commerce: 2007/12/31
Footwear; athletic footwear; baseball caps; cap visors; caps; caps with vi-sors;coats; headwear; jackets; knit shirts; knitted caps; pants; polo shirts; shirts;shoes; sleeping garments; sport coats;sport shirts; sports jackets; sports shirts;sweat shirts; sweaters; T-shirts; tops
U.S. RegistrationNo.
4142859 Application Date 05/29/2007
Registration Date 05/15/2012 Foreign PriorityDate
NONE
Word Mark STEVE MCQUEEN
Design Mark
Description ofMark
NONE
Goods/Services Class 009. First use: First Use: 2010/06/30 First Use In Commerce: 2010/06/30
sunglasses; cases for eyeglasses and sunglasses; safety helmets; motorcyclehelmets; protective clothing
U.S. RegistrationNo.
3904615 Application Date 05/29/2007
Registration Date 01/11/2011 Foreign PriorityDate
NONE
Word Mark STEVE MCQUEEN
Design Mark
Description ofMark
NONE
Goods/Services Class 003. First use: First Use: 2010/09/20 First Use In Commerce: 2010/09/20
cologne; aftershave
Attachments BRANDO and MCQUEEN Notice of Opposition.pdf(30939 bytes )BRANDO and MCQUEEN Opposition - Exhibit A.pdf(114157 bytes )
Signature /sabel/
Name Sally M. Abel, Esq.
Date 08/18/2020
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
In the matter of Trademark App. Ser. No. 88/722,459
Mark: BRANDO & MCQUEEN (stylized)
____________________________________
)
Chadwick McQueen and The Trustee of )
the Terry McQueen Testamentary Trust )
)
Opposer, )
) Opposition No. __________________
vs. )
)
Podolsky, Jacobo, )
Applicant. )
)
NOTICE OF OPPOSITION
1. On December 11, 2019, Jacobo Podolsky (“Applicant”) filed Application Serial No.
88/722,459, based on claimed use since February 1, 2019 of BRANDO & MCQUEEN (stylized)
for “leather jackets” in Class 25 (“the Application”).
2. Chadwick McQueen and The Trustee of the Terry McQueen Testamentary Trust
(hereinafter collectively “Opposer” or “the McQueens”) are the owners of trademark rights and,
by descent from acclaimed film star Steve McQueen, rights of publicity, in MCQUEEN and
STEVE MCQUEEN (the “MCQUEEN Names and Marks”). The McQueens’ rights in the
MCQUEEN Names and Marks predate the filing date and claimed first use date listed in the
Application by decades. Consumers are likely to be confused as to source by Applicant’s
registration and use of a confusingly similar mark for “leather jackets”, items of clothing that are
closely associated with Steve McQueen as a film icon. The registration of BRANDO &
MCQUEEN (stylized) would also falsely suggest a connection between Applicant’s and the
Mark: BRANDO & MCQUEEN (stylized) Serial No.: 88/722,459
Opposer: Chadwick McQueen and The Trustee of the Terry McQueen Testamentary Trust
2
MCQUEEN Names and Marks, as well as with the other iconic actor Marlon Brando whose
rights Applicant’s alleged mark also inappropriately plays on. Thus, the McQueens and the
general public will be damaged by the registration of BRANDO & MCQUEEN (stylized).
3. The Application was published for opposition in the Official Gazette on April 21, 2020.
The McQueens requested and were granted an extension of the deadline to oppose the
Application until August 19, 2020. This Notice of Opposition is timely filed.
As further grounds for opposition the McQueens allege:
4. The McQueens have used the MCQUEEN Names and Marks in the US and worldwide
for years in connection with clothing, including leather jackets and accessories, racing apparel,
motorcycles, and motorcycle gear, and own trademark registrations in the US and throughout the
world.
5. The McQueens own the following registrations on the Principal Register:
Trademark Reg. No. Full Goods and Services Descriptions Filing Date Reg. Date
STEVE MCQUEEN 3,948,067 25: Footwear; athletic footwear; baseball caps; cap
visors; caps; caps with visors; coats; headwear;
jackets; knit shirts; knitted caps; pants; polo shirts;
shirts; shoes; sleeping garments; sport coats; sport
shirts; sports jackets; sports shirts; sweat shirts;
sweaters; T-shirts; tops
May 29, 2007 April 19, 2011
STEVE MCQUEEN 4,142,859 9: Sunglasses; cases for eyeglasses and sunglasses;
safety helmets; motorcycle helmets; protective
clothing
May 29, 2007 May 15, 2012
STEVE MCQUEEN 3,904,615 3: Cologne; aftershave May 29, 2007 January 11, 2011
6. Said registrations are valid and subsisting and are evidence of the McQueens’ exclusive
right to use the STEVE MCQUEEN mark in commerce on the goods specified therein. Current
printouts of information from the electronic database records of the U.S. Patent and Trademark
Office showing the current status and title of the aforementioned trademark registrations are
attached hereto as Exhibit A.
Mark: BRANDO & MCQUEEN (stylized) Serial No.: 88/722,459
Opposer: Chadwick McQueen and The Trustee of the Terry McQueen Testamentary Trust
3
7. The McQueens’ Registration Nos. 3,948,067, 4,142,859, and 3,904,615 for STEVE
MCQUEEN are incontestable. As such, the registrations constitute conclusive evidence of the
validity of the registered mark, the McQueens’ ownership of the registered mark, and the
McQueens’ exclusive right to use the registered mark in commerce as provided in Section 33 of
the Lanham Act, 15 U.S.C. § 1115.
8. There is no issue as to priority. The filing dates and/or first use dates of the McQueens’
registrations for STEVE MCQUEEN are before the filing date and/or claimed first use date listed
in the Application.
9. Steve McQueen, also known as “McQueen”, was an iconic movie star who attained
stardom in the 1960s, the golden age of Hollywood; one of his best-known legacies is that he
transformed leather jackets into a modern fashion staple, which he used “like toast uses butter”,
according to GQ Magazine. As a result of Steve McQueen’s widespread and significant publicity
and popularity, the MCQUEEN Names and Marks are strong.
10. Through the McQueens’ publicity, marketing, promotion, advertising, and commercial
activity, the public readily associates the MCQUEEN Names and Marks with the McQueens and
their products. The MCQUEEN Names and Marks are thus valuable assets of the McQueens and
symbols of their goodwill. The McQueens have also received notable press regarding their
products, in particular, for their licensing collaborations featuring the MCQUEEN Names and
Marks with exclusive designers for best-in-class apparel and accessories, such as Barbour
International, whose Steve McQueen collection has included leather jackets. Such publicity
further establishes the goodwill and reputation in the MCQUEEN Names and Marks nationwide.
Mark: BRANDO & MCQUEEN (stylized) Serial No.: 88/722,459
Opposer: Chadwick McQueen and The Trustee of the Terry McQueen Testamentary Trust
4
11. By virtue of the McQueens’ widespread and continuous use of the MCQUEEN Names
and Marks, the McQueens have established extensive common law rights in the MCQUEEN
Names and Marks for a range of goods, including leather jackets.
12. The McQueens are not connected with the goods Applicant offers under the BRANDO &
MCQUEEN (stylized) mark; therefore, Applicant’s use of BRANDO & MCQUEEN (stylized) is
likely to falsely suggest a connection between Applicant and the MCQUEEN Names and Marks
because BRANDO & MCQUEEN (stylized) is confusingly similar to and would be recognized
as an approximation of the same. In addition, the reputation of the MCQUEEN Names and
Marks is of such a nature that a connection with the McQueens would be presumed when
Applicant uses BRANDO & MCQUEEN (stylized) in connection with his leather jackets.
Applicant’s use of BRANDO & MCQUEEN (stylized) unmistakably points to the MCQUEEN
Names and Marks.
13. The products identified in the Application are identical or closely related to the products
offered in connection with the MCQUEEN Names and Marks.
14. Because of the similarity between BRANDO & MCQUEEN (stylized) and the
MCQUEEN Names and Marks, and the similarity between the parties’ products, BRANDO &
MCQUEEN (stylized) is likely to cause consumer confusion, mistake, or deception in the trade
and among consumers as to the source, origin, affiliation, or sponsorship of the parties’
respective goods.
15. Based on the above, registration of BRANDO & MCQUEEN (stylized) will cause loss,
damage, and injury to the McQueens and the purchasing public.
Mark: BRANDO & MCQUEEN (stylized) Serial No.: 88/722,459
Opposer: Chadwick McQueen and The Trustee of the Terry McQueen Testamentary Trust
5
WHEREFORE, Opposer prays that this Notice of Opposition be sustained and that the
Application be rejected.
This Notice of Opposition is submitted along with our authorization to charge requisite fees
to our Deposit Account No. 50-0261.
Respectfully submitted,
Dated: August 18, 2020 /sabel/
Sally M. Abel
Jessica Chung
Attorneys for Opposer
FENWICK & WEST LLP
Silicon Valley Center
801 California Street
Mountain View, CA 94041
(650) 988-8500
Notice of OppositionIn the matter of Trademark Application Serial No.: 88/722,459
EXHIBIT A
Mark Information
Mark LiteralElements:
STEVE MCQUEEN
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
Name PortraitConsent:
The name "STEVE MCQUEEN" does not identify a living individual.
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: Footwear; athletic footwear; baseball caps; cap visors; caps; caps with visors; coats; headwear; jackets; knit shirts; knitted caps; pants;polo shirts; shirts; shoes; sleeping garments; sport coats; sport shirts; sports jackets; sports shirts; sweat shirts; sweaters; T-shirts; tops
InternationalClass(es):
025 - Primary Class U.S Class(es): 022, 039
Class Status: ACTIVE
Basis: 1(a)
First Use: Dec. 31, 2007 Use in Commerce: Dec. 31, 2007
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
Generated on: This page was generated by TSDR on 2020-08-14 19:47:40 EDT
Mark: STEVE MCQUEEN
US Serial Number: 77192489 Application FilingDate:
May 29, 2007
US RegistrationNumber:
3948067 Registration Date: Apr. 19, 2011
Register: Principal
Mark Type: Trademark
TM5 Common StatusDescriptor:
LIVE/REGISTRATION/Issued and Active
The trademark application has been registered with the Office.
Status: A Sections 8 and 15 combined declaration has been accepted and acknowledged.
Status Date: Dec. 19, 2016
Publication Date: Nov. 13, 2007 Notice ofAllowance Date:
Jun. 23, 2009
Owner Name: McQueen, Chadwick
Owner Address: 15250 Ventura Blvd., Suite 300c/o BEN GroupSherman Oaks, CALIFORNIA UNITED STATES 91403
Legal Entity Type: INDIVIDUAL Citizenship: UNITED STATES
Owner Name: The Trustee of the Terry McQueen Testame
Owner Address: 15250 Ventura Blvd., Suite 300c/o BEN GroupSherman Oaks, CALIFORNIA UNITED STATES 91403
Legal Entity Type: CHARTERED BANK State or CountryWhere Organized:
UNITED STATES
Attorney/Correspondence Information
Attorney of Record
Attorney Name: Sally M. Abel, Esq., Linda M. Goldman, Esq. Docket Number: 25742-00070
Attorney PrimaryEmail Address:
[email protected] Attorney EmailAuthorized:
Yes
Correspondent
CorrespondentName/Address:
Sally M. Abel, Esq., Linda M. Goldman, Esq.FENWICK & WEST LLP801 CALIFORNIA STREETSILICON VALLEY CENTERMOUNTAIN VIEW, CALIFORNIA UNITED STATES 94041-1990
Phone: (650) 988-8500 Fax: (650) 938-5200
Correspondent e-mail:
[email protected] Correspondent e-mail Authorized:
Yes
Domestic Representative - Not Found
Prosecution History
Date DescriptionProceedingNumber
Apr. 19, 2020 COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED
Jan. 10, 2017 APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED 88888
Jan. 10, 2017 TEAS CHANGE OF OWNER ADDRESS RECEIVED
Dec. 19, 2016 NOTICE OF ACCEPTANCE OF SEC. 8 & 15 - E-MAILED
Dec. 19, 2016 REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK. 71359
Dec. 16, 2016 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 71359
Oct. 07, 2016 TEAS SECTION 8 & 15 RECEIVED
Feb. 03, 2016 ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY
Jan. 20, 2016 ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY
Apr. 19, 2011 REGISTERED-PRINCIPAL REGISTER
Mar. 18, 2011 NOTICE OF ACCEPTANCE OF STATEMENT OF USE E-MAILED
Mar. 17, 2011 LAW OFFICE REGISTRATION REVIEW COMPLETED 59554
Mar. 16, 2011 ASSIGNED TO LIE 59554
Jan. 19, 2011 ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED
Dec. 16, 2010 STATEMENT OF USE PROCESSING COMPLETE 69302
Dec. 15, 2010 USE AMENDMENT FILED 69302
Dec. 15, 2010 TEAS STATEMENT OF USE RECEIVED
Jun. 24, 2010 NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED
Jun. 23, 2010 EXTENSION 2 GRANTED 69302
Jun. 21, 2010 EXTENSION 2 FILED 69302
Jun. 21, 2010 TEAS EXTENSION RECEIVED
Jan. 21, 2010 EXTENSION 1 GRANTED 69302
Dec. 04, 2009 EXTENSION 1 FILED 69302
Jan. 21, 2010 CASE ASSIGNED TO INTENT TO USE PARALEGAL 69302
Dec. 04, 2009 TEAS EXTENSION RECEIVED
Jun. 23, 2009 NOA MAILED - SOU REQUIRED FROM APPLICANT
May 11, 2009 TTAB RELEASE CASE TO TRADEMARKS 182959
May 11, 2009 OPPOSITION TERMINATED NO. 999999 182959
May 11, 2009 OPPOSITION DISMISSED NO. 999999 182959
Mar. 12, 2008 OPPOSITION INSTITUTED NO. 999999 182959
Dec. 13, 2007 EXTENSION OF TIME TO OPPOSE RECEIVED
Nov. 13, 2007 PUBLISHED FOR OPPOSITION
Oct. 24, 2007 NOTICE OF PUBLICATION
Oct. 06, 2007 LAW OFFICE PUBLICATION REVIEW COMPLETED 73793
Oct. 06, 2007 ASSIGNED TO LIE 73793
Sep. 07, 2007 APPROVED FOR PUB - PRINCIPAL REGISTER
Sep. 07, 2007 EXAMINER'S AMENDMENT ENTERED 88888
Sep. 07, 2007 NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED 6328
Sep. 07, 2007 EXAMINERS AMENDMENT E-MAILED 6328
Sep. 07, 2007 EXAMINERS AMENDMENT -WRITTEN 77764
Sep. 07, 2007 PREVIOUS ALLOWANCE COUNT WITHDRAWN
Sep. 07, 2007 APPROVED FOR PUB - PRINCIPAL REGISTER
Sep. 06, 2007 ASSIGNED TO EXAMINER 77764
Jun. 05, 2007 NEW APPLICATION ENTERED IN TRAM
TM Staff and Location Information
TM Staff Information - None
File Location
Current Location: TMO LAW OFFICE 117 Date in Location: Dec. 19, 2016
Assignment Abstract Of Title Information
Summary
Total Assignments: 2 Registrant: The Trustee of the Terry McQueen Testame
Assignment 1 of 2
Conveyance: TRUSTEE NAME CHANGE
Reel/Frame: 5698/0370 Pages: 7
Date Recorded: Dec. 28, 2015
SupportingDocuments:
assignment-tm-5698-0370.pdf
Assignor
Name: THE TRUSTEE OF THE TERRY MCQUEEN
TESTAMENTARY TRUST, A CALIFORNIA
TRUST, THE TRUSTEE COMPRISING NEILE
MCQUEEN TOFFEL, A CITIZEN OF THE
UNITED STATES
Execution Date: Feb. 25, 2011
Legal Entity Type: TRUSTEE State or CountryWhere Organized:
No Place Where Organized Found
Assignee
Name: THE TRUSTEE OF THE TERRY MCQUEEN TESTAMENTARY TRUST, A CALIFORNIA TRUST, COMPOSED OF BESSEMER
TRUST COMPANY OF CALIFORNIA, N.A.
Legal Entity Type: TRUSTEE State or CountryWhere Organized:
CALIFORNIA
Address: 710 SECOND AVENUE, SUITE 200C/O CORBIS CORPORATIONSEATTLE, WASHINGTON 98104
Correspondent
CorrespondentName:
FENWICK & WEST LLP
Correspondent 801 CALIFORNIA STREET
Address: SILICON VALLEY CENTERMOUNTAIN VIEW, CA 94041-1990
Domestic Representative - Not Found
Assignment 2 of 2
Conveyance: TRUSTEE NAME CHANGE
Reel/Frame: 5717/0514 Pages: 3
Date Recorded: Jan. 27, 2016
SupportingDocuments:
assignment-tm-5717-0514.pdf
Assignor
Name: THE TRUSTEE OF THE TERRY MCQUEEN
TESTAMENTARY TRUST, A CALIFORNIA
TRUST, COMPOSED OF BESSEMER TRUST
COMPANY OF CALIFORNIA, N.A.
Execution Date: Jul. 22, 2013
Legal Entity Type: TRUSTEE State or CountryWhere Organized:
CALIFORNIA
Assignee
Name: THE TRUSTEE OF THE TERRY MCQUEEN TESTAMENTARY TRUST, A CALIFORNIA TRUST, COMPOSED OF CITY NATIONAL
BANK OF CALIFORNIA
Legal Entity Type: CHARTERED BANK State or CountryWhere Organized:
UNITED STATES
Address: 555 SOUTH FLOWER STREETLOS ANGELES, CALIFORNIA 90071
Correspondent
CorrespondentName:
FENWICK & WEST LLP
CorrespondentAddress:
801 CALIFORNIA STREETSILICON VALLEY CENTERMOUNTAIN VIEW, CA 94041-1990
Domestic Representative - Not Found
Proceedings
Summary
Number ofProceedings:
2
Type of Proceeding: Opposition
ProceedingNumber:
91182959 Filing Date: Mar 12, 2008
Status: Terminated Status Date: May 11, 2009
InterlocutoryAttorney:
ELIZABETH WINTER
Defendant
Name: The Trustee of the Terry McQueen Testamentary Trust, a California trust, the trustee comprising Neile Adams Toffel, a citizen of theUnited States, McQueen, Chadwick
CorrespondentAddress:
SALLY M. ABEL, ESQ.FENWICK & WEST LLP801 CALIFORNIA STREET , SILICON VALLEY CENTERMOUNTAIN VIEW CA UNITED STATES , 94041
Correspondent e-mail:
Associated marks
Mark Application StatusSerialNumber
RegistrationNumber
STEVE MCQUEEN Section 8 and 15 - Accepted and Acknowledged 77192489 3948067
Plaintiff(s)
Name: Clothing Company SpA
CorrespondentAddress:
John S. EgbertEGBERT LAW OFFICES, PLLC412 Main St., 7th FloorHouston TX UNITED STATES , 77002
Correspondent e-mail:
Associated marks
Mark Application Status Serial NumberRegistrationNumber
STEVE MCQUEEN
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Mar 12, 2008
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Mar 12, 2008 Apr 21, 2008
3 PENDING, INSTITUTED Mar 12, 2008
4 ANSWER Apr 21, 2008
5 D'S MOT TO SUSP PEND DISP CIV ACTION May 09, 2008
6 SUSPENDED PENDING DISP OF CIVIL ACTION Jun 16, 2008
7 WITHDRAWAL OF OPPOSITION May 06, 2009
8 BD'S DECISION: DISMISSED W/ PREJUDICE May 11, 2009
9 TERMINATED May 11, 2009
Type of Proceeding: Extension of Time
ProceedingNumber:
77192489 Filing Date: Dec 12, 2007
Status: Terminated Status Date: Mar 12, 2008
InterlocutoryAttorney:
Defendant
Name: McQueen, Chadwick
CorrespondentAddress:
SALLY M. ABEL, ESQ.FENWICK & WEST LLP801 CALIFORNIA STREET SILICON VALLEY CENTERMOUNTAIN VIEW CA UNITED STATES , 94041
Associated marks
Mark Application StatusSerialNumber
RegistrationNumber
STEVE MCQUEEN Section 8 and 15 - Accepted and Acknowledged 77192489 3948067
Potential Opposer(s)
Name: Clothing Company SpA
CorrespondentAddress:
Alessandro SaracinoPavia & Harcourt LLP600 Madison Avenue12th FloorNew York NY UNITED STATES , 10022
Correspondent e-mail:
Associated marks
Mark Application Status Serial NumberRegistrationNumber
Prosecution History
Entry Number History Text Date Due Date
1 INCOMING - EXT TIME TO OPPOSE FILED Dec 12, 2007
2 EXTENSION OF TIME GRANTED Dec 13, 2007
Mark Information
Mark LiteralElements:
STEVE MCQUEEN
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
Name PortraitConsent:
The name "STEVE MCQUEEN" does not identify a living individual.
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: sunglasses; cases for eyeglasses and sunglasses; safety helmets; motorcycle helmets; protective clothing
InternationalClass(es):
009 - Primary Class U.S Class(es): 021, 023, 026, 036, 038
Class Status: ACTIVE
Basis: 1(a)
First Use: Jun. 30, 2010 Use in Commerce: Jun. 30, 2010
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
Generated on: This page was generated by TSDR on 2020-08-14 19:48:43 EDT
Mark: STEVE MCQUEEN
US Serial Number: 77192474 Application FilingDate:
May 29, 2007
US RegistrationNumber:
4142859 Registration Date: May 15, 2012
Register: Principal
Mark Type: Trademark
TM5 Common StatusDescriptor:
LIVE/REGISTRATION/Issued and Active
The trademark application has been registered with the Office.
Status: A Sections 8 and 15 combined declaration has been accepted and acknowledged.
Status Date: Jan. 23, 2019
Publication Date: Dec. 16, 2008 Notice ofAllowance Date:
Mar. 10, 2009
Owner Name: McQueen, Chadwick
Owner Address: c/o BEN Group15250 Ventura Blvd., Suite 300Sherman Oaks, CALIFORNIA UNITED STATES 91403
Legal Entity Type: INDIVIDUAL Citizenship: UNITED STATES
Owner Name: The Trustee of the Terry McQueen Testame
Owner Address: c/o BEN Group15250 Ventura Blvd., Suite 300Sherman Oaks, CALIFORNIA UNITED STATES 91403
Legal Entity Type: CHARTERED BANK State or CountryWhere Organized:
UNITED STATES
Attorney/Correspondence Information
Attorney of Record
Attorney Name: Sally M. Abel, Esq., Linda M. Goldman, Esq. Docket Number: 25742-00070
Attorney PrimaryEmail Address:
[email protected] Attorney EmailAuthorized:
Yes
Correspondent
CorrespondentName/Address:
Sally M. Abel, Esq., Linda M. Goldman, Esq.FENWICK & WEST LLP801 CALIFORNIA STREETSILICON VALLEY CENTERMOUNTAIN VIEW, CALIFORNIA UNITED STATES 94041-1990
Phone: (650) 988-8500 Fax: (650) 938-5200
Correspondent e-mail:
[email protected] Correspondent e-mail Authorized:
Yes
Domestic Representative - Not Found
Prosecution History
Date DescriptionProceedingNumber
Jan. 23, 2019 NOTICE OF ACCEPTANCE OF SEC. 8 & 15 - E-MAILED
Jan. 23, 2019 REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK. 74704
Jan. 15, 2019 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 74704
Jan. 07, 2019 TEAS RESPONSE TO OFFICE ACTION-POST REG RECEIVED
Sep. 20, 2018 POST REGISTRATION ACTION MAILED - SEC. 8 & 15 90292
Sep. 17, 2018 TEAS RESPONSE TO OFFICE ACTION-POST REG RECEIVED
Mar. 15, 2018 POST REGISTRATION ACTION MAILED - SEC. 8 & 15 90292
Mar. 09, 2018 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 90292
Mar. 06, 2018 TEAS SECTION 8 & 15 RECEIVED
May 15, 2017 COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED
Feb. 03, 2016 ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY
Jan. 20, 2016 ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY
May 15, 2012 REGISTERED-PRINCIPAL REGISTER
Apr. 12, 2012 NOTICE OF ACCEPTANCE OF STATEMENT OF USE E-MAILED
Apr. 11, 2012 LAW OFFICE REGISTRATION REVIEW COMPLETED 70633
Apr. 10, 2012 ASSIGNED TO LIE 70633
Mar. 21, 2012 ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED
Mar. 14, 2012 STATEMENT OF USE PROCESSING COMPLETE 66154
Mar. 08, 2012 USE AMENDMENT FILED 66154
Mar. 08, 2012 TEAS STATEMENT OF USE RECEIVED
Sep. 10, 2011 NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED
Sep. 09, 2011 EXTENSION 5 GRANTED 66154
Sep. 08, 2011 EXTENSION 5 FILED 66154
Sep. 08, 2011 TEAS EXTENSION RECEIVED
Feb. 23, 2011 NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED
Feb. 22, 2011 EXTENSION 4 GRANTED 66154
Feb. 18, 2011 EXTENSION 4 FILED 66154
Feb. 18, 2011 TEAS EXTENSION RECEIVED
Aug. 31, 2010 NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED
Aug. 30, 2010 EXTENSION 3 GRANTED 66154
Aug. 04, 2010 EXTENSION 3 FILED 66154
Aug. 04, 2010 TEAS EXTENSION RECEIVED
Mar. 08, 2010 EXTENSION 2 GRANTED 66154
Mar. 03, 2010 EXTENSION 2 FILED 66154
Mar. 03, 2010 TEAS EXTENSION RECEIVED
May 26, 2009 EXTENSION 1 GRANTED 66154
May 05, 2009 EXTENSION 1 FILED 66154
May 21, 2009 CASE ASSIGNED TO INTENT TO USE PARALEGAL 66154
May 05, 2009 TEAS EXTENSION RECEIVED
Mar. 10, 2009 NOA MAILED - SOU REQUIRED FROM APPLICANT
Dec. 16, 2008 PUBLISHED FOR OPPOSITION
Nov. 26, 2008 NOTICE OF PUBLICATION
Nov. 12, 2008 LAW OFFICE PUBLICATION REVIEW COMPLETED 65864
Nov. 10, 2008 APPROVED FOR PUB - PRINCIPAL REGISTER
Sep. 30, 2008 TEAS/EMAIL CORRESPONDENCE ENTERED 88889
Sep. 30, 2008 CORRESPONDENCE RECEIVED IN LAW OFFICE 88889
Sep. 30, 2008 TEAS RESPONSE TO OFFICE ACTION RECEIVED
May 01, 2008 NOTIFICATION OF PRIORITY ACTION E-MAILED 6326
May 01, 2008 PRIORITY ACTION E-MAILED 6326
May 01, 2008 PRIORITY ACTION WRITTEN 77764
May 01, 2008 PREVIOUS ALLOWANCE COUNT WITHDRAWN
Apr. 21, 2008 WITHDRAWN FROM PUB - OG REVIEW QUERY 61844
Apr. 08, 2008 LAW OFFICE PUBLICATION REVIEW COMPLETED 65864
Apr. 08, 2008 ASSIGNED TO LIE 65864
Mar. 30, 2008 APPROVED FOR PUB - PRINCIPAL REGISTER
Mar. 04, 2008 TEAS/EMAIL CORRESPONDENCE ENTERED 88889
Mar. 03, 2008 CORRESPONDENCE RECEIVED IN LAW OFFICE 88889
Mar. 03, 2008 TEAS RESPONSE TO OFFICE ACTION RECEIVED
Sep. 07, 2007 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325
Sep. 07, 2007 NON-FINAL ACTION E-MAILED 6325
Sep. 07, 2007 NON-FINAL ACTION WRITTEN 77764
Sep. 06, 2007 ASSIGNED TO EXAMINER 77764
Jun. 05, 2007 NEW APPLICATION ENTERED IN TRAM
TM Staff and Location Information
TM Staff Information - None
File Location
Current Location: TMO LAW OFFICE 117 Date in Location: Jan. 23, 2019
Assignment Abstract Of Title Information
Summary
Total Assignments: 2 Registrant: The Trustee of the Terry McQueen Testame
Assignment 1 of 2
Conveyance: TRUSTEE NAME CHANGE
Reel/Frame: 5698/0370 Pages: 7
Date Recorded: Dec. 28, 2015
SupportingDocuments:
assignment-tm-5698-0370.pdf
Assignor
Name: THE TRUSTEE OF THE TERRY MCQUEEN
TESTAMENTARY TRUST, A CALIFORNIA
TRUST, THE TRUSTEE COMPRISING NEILE
MCQUEEN TOFFEL, A CITIZEN OF THE
UNITED STATES
Execution Date: Feb. 25, 2011
Legal Entity Type: TRUSTEE State or CountryWhere Organized:
No Place Where Organized Found
Assignee
Name: THE TRUSTEE OF THE TERRY MCQUEEN TESTAMENTARY TRUST, A CALIFORNIA TRUST, COMPOSED OF BESSEMER
TRUST COMPANY OF CALIFORNIA, N.A.
Legal Entity Type: TRUSTEE State or CountryWhere Organized:
CALIFORNIA
Address: 710 SECOND AVENUE, SUITE 200C/O CORBIS CORPORATIONSEATTLE, WASHINGTON 98104
Correspondent
CorrespondentName:
FENWICK & WEST LLP
CorrespondentAddress:
801 CALIFORNIA STREETSILICON VALLEY CENTERMOUNTAIN VIEW, CA 94041-1990
Domestic Representative - Not Found
Assignment 2 of 2
Conveyance: TRUSTEE NAME CHANGE
Reel/Frame: 5717/0514 Pages: 3
Date Recorded: Jan. 27, 2016
SupportingDocuments:
assignment-tm-5717-0514.pdf
Assignor
Name: THE TRUSTEE OF THE TERRY MCQUEEN
TESTAMENTARY TRUST, A CALIFORNIA
TRUST, COMPOSED OF BESSEMER TRUST
COMPANY OF CALIFORNIA, N.A.
Execution Date: Jul. 22, 2013
Legal Entity Type: TRUSTEE State or CountryWhere Organized:
CALIFORNIA
Assignee
Name: THE TRUSTEE OF THE TERRY MCQUEEN TESTAMENTARY TRUST, A CALIFORNIA TRUST, COMPOSED OF CITY NATIONAL
BANK OF CALIFORNIA
Legal Entity Type: CHARTERED BANK State or CountryWhere Organized:
UNITED STATES
Address: 555 SOUTH FLOWER STREETLOS ANGELES, CALIFORNIA 90071
Correspondent
CorrespondentName:
FENWICK & WEST LLP
CorrespondentAddress:
801 CALIFORNIA STREETSILICON VALLEY CENTERMOUNTAIN VIEW, CA 94041-1990
Domestic Representative - Not Found
Mark Information
Mark LiteralElements:
STEVE MCQUEEN
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
Name PortraitConsent:
The name "STEVE MCQUEEN" does not identify a living individual.
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: cologne; aftershave
InternationalClass(es):
003 - Primary Class U.S Class(es): 001, 004, 006, 050, 051, 052
Class Status: ACTIVE
Basis: 1(a)
First Use: Sep. 20, 2010 Use in Commerce: Sep. 20, 2010
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
Generated on: This page was generated by TSDR on 2020-08-14 19:49:17 EDT
Mark: STEVE MCQUEEN
US Serial Number: 77192469 Application FilingDate:
May 29, 2007
US RegistrationNumber:
3904615 Registration Date: Jan. 11, 2011
Register: Principal
Mark Type: Trademark
TM5 Common StatusDescriptor:
LIVE/REGISTRATION/Issued and Active
The trademark application has been registered with the Office.
Status: A Sections 8 and 15 combined declaration has been accepted and acknowledged.
Status Date: Mar. 13, 2017
Publication Date: Nov. 13, 2007 Notice ofAllowance Date:
Feb. 05, 2008
Owner Name: McQueen, Chadwick
Owner Address: 15250 Ventura Blvd., Suite 300c/o BEN GroupSherman Oaks, CALIFORNIA UNITED STATES 91403
Legal Entity Type: INDIVIDUAL Citizenship: UNITED STATES
Owner Name: The Trustee of the Terry McQueen Testamentary Trust, a California Trust, Composed of City National Bank of California
Owner Address: 15250 Ventura Blvd., Suite 300c/o BEN GroupSherman Oaks, CALIFORNIA UNITED STATES 91403
Legal Entity Type: CHARTERED BANK State or CountryWhere Organized:
UNITED STATES
Attorney/Correspondence Information
Attorney of Record
Attorney Name: Sally M. Abel, Esq., Linda M. Goldman, Esq. Docket Number: 25742-00070
Attorney PrimaryEmail Address:
[email protected] Attorney EmailAuthorized:
Yes
Correspondent
CorrespondentName/Address:
Sally M. Abel, Esq., Linda M. Goldman, Esq.FENWICK & WEST LLP801 CALIFORNIA STREETSILICON VALLEY CENTERMOUNTAIN VIEW, CALIFORNIA UNITED STATES 94041-1990
Phone: (650) 988-8500 Fax: (650) 938-5200
Correspondent e-mail:
[email protected] Correspondent e-mail Authorized:
Yes
Domestic Representative - Not Found
Prosecution History
Date DescriptionProceedingNumber
Jan. 11, 2020 COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED
Mar. 13, 2017 NOTICE OF ACCEPTANCE OF SEC. 8 & 15 - E-MAILED
Mar. 13, 2017 REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK. 67110
Mar. 11, 2017 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 67110
Jan. 10, 2017 TEAS SECTION 8 & 15 RECEIVED
Feb. 03, 2016 ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY
Jan. 20, 2016 ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY
Jan. 11, 2011 REGISTERED-PRINCIPAL REGISTER
Dec. 07, 2010 NOTICE OF ACCEPTANCE OF STATEMENT OF USE E-MAILED
Dec. 06, 2010 LAW OFFICE REGISTRATION REVIEW COMPLETED 68171
Dec. 02, 2010 ASSIGNED TO LIE 68171
Nov. 24, 2010 ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED
Nov. 10, 2010 STATEMENT OF USE PROCESSING COMPLETE 66230
Nov. 08, 2010 USE AMENDMENT FILED 66230
Nov. 08, 2010 TEAS STATEMENT OF USE RECEIVED
Aug. 06, 2010 NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED
Aug. 05, 2010 EXTENSION 5 GRANTED 66230
Aug. 04, 2010 EXTENSION 5 FILED 66230
Aug. 04, 2010 TEAS EXTENSION RECEIVED
Feb. 08, 2010 EXTENSION 4 GRANTED 66230
Feb. 03, 2010 EXTENSION 4 FILED 66230
Feb. 03, 2010 TEAS EXTENSION RECEIVED
Jul. 27, 2009 EXTENSION 3 GRANTED 66230
Jul. 24, 2009 EXTENSION 3 FILED 66230
Jul. 24, 2009 TEAS EXTENSION RECEIVED
Feb. 03, 2009 EXTENSION 2 GRANTED 66230
Feb. 02, 2009 EXTENSION 2 FILED 66230
Feb. 02, 2009 TEAS EXTENSION RECEIVED
Aug. 14, 2008 EXTENSION 1 GRANTED 66230
Aug. 04, 2008 EXTENSION 1 FILED 66230
Aug. 14, 2008 CASE ASSIGNED TO INTENT TO USE PARALEGAL 66230
Aug. 04, 2008 TEAS EXTENSION RECEIVED
Feb. 05, 2008 NOA MAILED - SOU REQUIRED FROM APPLICANT
Nov. 13, 2007 PUBLISHED FOR OPPOSITION
Oct. 24, 2007 NOTICE OF PUBLICATION
Oct. 06, 2007 LAW OFFICE PUBLICATION REVIEW COMPLETED 73793
Oct. 06, 2007 ASSIGNED TO LIE 73793
Sep. 07, 2007 APPROVED FOR PUB - PRINCIPAL REGISTER
Sep. 07, 2007 EXAMINER'S AMENDMENT ENTERED 88888
Sep. 07, 2007 NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED 6328
Sep. 07, 2007 EXAMINERS AMENDMENT E-MAILED 6328
Sep. 07, 2007 EXAMINERS AMENDMENT -WRITTEN 77764
Sep. 06, 2007 ASSIGNED TO EXAMINER 77764
Jun. 05, 2007 NEW APPLICATION ENTERED IN TRAM
TM Staff and Location Information
TM Staff Information - None
File Location
Current Location: TMO LAW OFFICE 117 Date in Location: Mar. 13, 2017
Assignment Abstract Of Title Information
Summary
Total Assignments: 2 Registrant: The Trustee of the Terry McQueen TestamentaryTrust, a California trust, the trustee comprisingNeile Adams Toffel, a citizen of the United States
Assignment 1 of 2
Conveyance: TRUSTEE NAME CHANGE
Reel/Frame: 5698/0370 Pages: 7
Date Recorded: Dec. 28, 2015
SupportingDocuments:
assignment-tm-5698-0370.pdf
Assignor
Name: THE TRUSTEE OF THE TERRY MCQUEEN
TESTAMENTARY TRUST, A CALIFORNIA
TRUST, THE TRUSTEE COMPRISING NEILE
MCQUEEN TOFFEL, A CITIZEN OF THE
UNITED STATES
Execution Date: Feb. 25, 2011
Legal Entity Type: TRUSTEE State or CountryWhere Organized:
No Place Where Organized Found
Assignee
Name: THE TRUSTEE OF THE TERRY MCQUEEN TESTAMENTARY TRUST, A CALIFORNIA TRUST, COMPOSED OF BESSEMER
TRUST COMPANY OF CALIFORNIA, N.A.
Legal Entity Type: TRUSTEE State or CountryWhere Organized:
CALIFORNIA
Address: 710 SECOND AVENUE, SUITE 200C/O CORBIS CORPORATIONSEATTLE, WASHINGTON 98104
Correspondent
CorrespondentName:
FENWICK & WEST LLP
Correspondent 801 CALIFORNIA STREET
Address: SILICON VALLEY CENTERMOUNTAIN VIEW, CA 94041-1990
Domestic Representative - Not Found
Assignment 2 of 2
Conveyance: TRUSTEE NAME CHANGE
Reel/Frame: 5717/0514 Pages: 3
Date Recorded: Jan. 27, 2016
SupportingDocuments:
assignment-tm-5717-0514.pdf
Assignor
Name: THE TRUSTEE OF THE TERRY MCQUEEN
TESTAMENTARY TRUST, A CALIFORNIA
TRUST, COMPOSED OF BESSEMER TRUST
COMPANY OF CALIFORNIA, N.A.
Execution Date: Jul. 22, 2013
Legal Entity Type: TRUSTEE State or CountryWhere Organized:
CALIFORNIA
Assignee
Name: THE TRUSTEE OF THE TERRY MCQUEEN TESTAMENTARY TRUST, A CALIFORNIA TRUST, COMPOSED OF CITY NATIONAL
BANK OF CALIFORNIA
Legal Entity Type: CHARTERED BANK State or CountryWhere Organized:
UNITED STATES
Address: 555 SOUTH FLOWER STREETLOS ANGELES, CALIFORNIA 90071
Correspondent
CorrespondentName:
FENWICK & WEST LLP
CorrespondentAddress:
801 CALIFORNIA STREETSILICON VALLEY CENTERMOUNTAIN VIEW, CA 94041-1990
Domestic Representative - Not Found