Notice of Oppositionttabvue.uspto.gov/ttabvue/ttabvue-91251390-OPP-1.pdf · popular online gaming platforms such as SLOTOMANIA, CAESAR’S CASINO, HOUSE OF FUN, and WORLD SERIES OF

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

ESTTA Tracking number: ESTTA1006379

Filing date: 10/03/2019

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 parties oppose registration of the indicated application.

Opposers Information

Name Playtika Ltd.

Granted to Dateof previous ex-tension

10/06/2019

Address 8 HACHOSHLIM STHERZLIYA PITUACH, 4672408ISRAEL

Name Playtika UK - House of Fun Limited

Granted to Dateof previous ex-tension

10/06/2019

Address QUADRANT HOUSE 4 THOMAS MORE SQUARELONDON, E1W1YWUNITED KINGDOM

Attorney informa-tion

LISA GREENWALD-SWIREFISH & RICHARDSON P.C.P.O. BOX 1022MINNEAPOLIS, MN 55440-1022UNITED [email protected], [email protected], [email protected], [email protected]

Applicant Information

Application No 88083894 Publication date 04/09/2019

Opposition FilingDate

10/03/2019 Opposition Peri-od Ends

10/06/2019

Applicant Funtrio LimitedOffshore Incorporation Centre, Road TownPO BOX 957, TortolaBR. VIRGIN ISLANDS

Goods/Services Affected by Opposition

Class 009. First Use: 2017/09/29 First Use In Commerce: 2017/09/29All goods and services in the class are opposed, namely: Computer game programs; Computer gamesoftware; Computer game software downloadable from a global computer network; Downloadablecomputer software for providing casino games, slot games, games of chance, social games and on-line wagering games enabling play for fun, real money orvirtual currency through any computerizedplatform, namely, personal computers,laptops, mobile devices, smartphones and tablet devices;

http://estta.uspto.gov

Downloadable computer game software via a global computer network and wireless devices; Down-loadable computer game programs

Class 041. First Use: 2017/09/29 First Use In Commerce: 2017/09/29All goods and services in the class are opposed, namely: Entertainment services, namely, providingan on-line computer game; Entertainment services, namely, providing games of chance via the Inter-net; Entertainment in the nature of providing, through any computerized platform, real money, virtualcurrency and play for fun casino games, slot games, games of chance, social games and onlinewagering games

Grounds for Opposition

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

Marks Cited by Opposer as Basis for Opposition

U.S. RegistrationNo.

5687531 Application Date 03/29/2018

Registration Date 02/26/2019 Foreign PriorityDate

NONE

Word Mark HEROES OF OZ

Design Mark

Description ofMark

NONE

Goods/Services Class 041. First use: First Use: 2018/08/05 First Use In Commerce: 2018/08/05

Entertainment services, namely, providing on-line computer games and gameapplications, enhancements within online computer games, and game applica-tions withinonline computer games; providing an internet website portal in thefield of computer games and gaming; entertainment services, namely, providingvirtual environments in which users can interact through social games for recre-ational, leisure or entertainment purposes




NONE

Word Mark MEMORIES OF OZ

Design Mark

Description ofMark

NONE






NONE

Word Mark DREAMING OF OZ

Design Mark

Description ofMark

NONE






NONE

Word Mark RICHES OF OZ

Design Mark

Description ofMark

NONE


Entertainment services, namely, providing on-line computer games and gameapplications, enhancements within online computer games, and game applica-tions withinonline computer games; providing onlinereviews of computer games,and providing of information relating to computer games; providing an internetwebsite portal in the field of computer games and gaming; entertainment ser-vices, namely, providing virtual environments in which users can interact throughsocial games forrecreational, leisure or entertainment purposes

Attachments 87855327#TMSN.png( bytes )87475196#TMSN.png( bytes )87371838#TMSN.png( bytes )87185901#TMSN.png( bytes )Notice of Opposition LEGENDS OF OZ.pdf(392447 bytes )Exhibit A .pdf(148306 bytes )Ex. B.pdf(932227 bytes )

Signature /Charles Bahlert/

Name Charles Bahlert

Date 10/03/2019

Attorney Docket No.: 44201-1492PP1

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

In the matter of US Application Serial No. 88/083,894 Filed on August 19, 2018 For the Mark LEGEND OF OZ Published in the Official Gazette on April 9, 2019

Playtika Ltd.,

And

Playtika UK – House of Fun Limited

Opposers,

v.

Funtrio Limited

Applicant.

Opposition No. NOTICE OF OPPOSITION

NOTICE OF OPPOSITION

Opposers Playtika Ltd. and Playtika UK – House of Fun Limited (collectively,

“Opposers” or “Playtika”) believe that they will be damaged by registration of the LEGEND OF

OZ trademark identified as US Application Serial No. 88/083,894 (the “Application”) and

hereby oppose this Application, alleging as grounds for its opposition that:

1. Playtika Ltd. is a private limited company of Israel having an address at 8

Hachoshlim St., Herzliya Pituach, Israel 4672408.

2. Playtika UK – House of Fun Limited, a private limited company of the United

Kingdom having an address at Quadrant House, 4 Thomas More Square, London, United

Kingdom E1W1YW.

3. Opposers comprise one of the world’s leading social gaming developers, with

popular online gaming platforms such as SLOTOMANIA, CAESAR’S CASINO, HOUSE OF

FUN, and WORLD SERIES OF POKER.

4. Since at least as early as September 2016—long before the filing date of the

Application—Opposers have been, and still are, engaged in the business of, developing and

offering slot-themed mobile computer games for entertainment. Opposers have engaged in the

development, marketing, and/or sale of these goods and services under the “OF OZ” marks, all

containing the prominent “OF OZ” suffix. Opposers’ family of “OF OZ” marks includes, for

example, RICHES OF OZ®, DREAMING OF OZ®, MEMORIES OF OZ®, and HEROES OF

OZ® (hereinafter collectively, the “OF OZ Family of Marks”).

5. By virtue of Opposers’ continuous and substantial use, the OF OZ Family of

Marks have become well-known such that relevant consumers have come to recognize this

family as the source of Opposers’ goods and services. As a result, Opposers have built up, at

great expense and effort, valuable goodwill in their OF OZ Family of Marks and have also

developed strong common law rights in Opposers’ OF OZ Family of Marks. Opposers’ common

law rights in the OF OZ Family of Marks predate the filing date and alleged first use date of the

Application, and Opposers rely on these common law trademark rights in this Opposition.

6. In addition to their common law rights, Opposers’ rights in the OF OZ Family of

Marks are further evidenced by their ownership of the following registrations as shown below:

Mark and Reg. No. Owner Class Goods

RICHES OF OZ

Reg. No. 5272739

Playtika UK - House of Fun Limited

41 Entertainment services, namely, providing on-line computer games and game applications, enhancements within online computer games, and game applications within online computer games; providing online reviews of computer games, and providing of information relating to computer games; providing an internet website portal in the field of computer games and gaming; entertainment services, namely, providing virtual environments in which users can interact through social games for recreational, leisure or entertainment purposes.

DREAMING OF OZ

Reg. No. 5318838

Playtika Ltd.

41 Entertainment services, namely, providing on-line computer games and game applications, enhancements within online computer games, and game applications within online computer games; providing an internet website portal in the field of computer games and gaming; entertainment services, namely, providing virtual environments in which users can interact through social games for recreational, leisure or entertainment purposes

MEMORIES OF OZ

Reg. No. 5439717

Playtika Ltd.


HEROES OF OZ

Reg. No. 5687531

Playtika UK - House of Fun Limited


True and correct copies of the Certificates of Registration for these registrations are attached hereto

as Exhibit A.

7. Opposers’ federal registrations for the OF OZ Family of Marks are in full force

and effect. Opposers’ federal trademark registrations for the OF OZ Family of Marks serve as

prima facie evidence of: a) the validity of the registered marks; b) the registration of the marks;

c) Opposers’ ownership of the registered marks; and d) Opposers’ exclusive right to use the

marks in commerce in connection with the goods and services specified in the registration

pursuant to 15. U.S.C. § 1115(a).

8. All of the services described above in the OF OZ Family of Marks have been

and/or are being advertised, promoted, marketed, offered, and rendered in connection with

Opposers’ OF OZ Family of Marks.

9. Opposers have spent considerable time, money, and effort developing customer

recognition and goodwill by promoting the OF OZ Family of Marks globally, including on

mobile application stores and on social media sites.

10. As evidenced by the publication of the LEGEND OF OZ mark (the “Proposed

Mark”) in the Official Gazette, Applicant seeks to register the Proposed Mark as a trademark in

connection with the following:

Class 9 – Computer game programs; Computer game software; Computer game software

downloadable from a global computer network; Downloadable computer software for

providing casino games, slot games, games of chance, social games and online wagering

games enabling play for fun, real money or virtual currency through any computerized

platform, namely, personal computers, laptops, mobile devices, smartphones and tablet

devices; Downloadable computer game software via a global computer network and

wireless devices; Downloadable computer game programs.

Class 41 – Entertainment services, namely, providing an on-line computer game;

Entertainment services, namely, providing games of chance via the Internet;

Entertainment in the nature of providing, through any computerized platform, real

money, virtual currency and play for fun casino games, slot games, games of chance,

social games and online wagering games.

(the “Proposed Goods and Services”) (Emphasis added). 11. The Proposed Goods and Services overlap with, are related to, and are nearly-

identical to the goods and services associated with the OF OZ Family of Marks, as illustrated in

bold above.

12. Applicant filed the Application for the Proposed Mark on August 19, 2018.

13. Applicant had constructive knowledge of the OF OZ Family of Marks prior to

filing its application for the LEGEND OF OZ trademark due to Opposers’ pre-existing

registrations at the US PTO.

14. Opposers have presumptive priority based on their prior-applications and prior

registrations of the OF OZ Family of Marks.

15. Opposers also have actual priority, with constructive use of the OF OZ Family of

Marks since September 2016, while, upon information and belief, Applicant claims first use of

the Proposed Mark on or around September 2017.

16. During 2017, the goods and services associated with Opposers’ OF OZ Family of

Marks had an average of more than 770,000 monthly visitors.

17. By September 2017, Opposers were collectively valued at over $4 billion.

18. The proposed LEGEND OF OZ mark is nearly identical to Opposer UK’s

HEROES OF OZ mark in appearance, sounds, and commercial impression—and made more

egregious given the OF OZ Family of Marks—because the dominant and distinctive element of

the marks is the OF OZ suffix.

19. Further, Applicant’s use of the LEGEND OF OZ mark in commerce is nearly-

identical to Opposers’ use of the OF OZ Family of Marks, as depicted below:

20. In fact, Applicant has a history of applying for numerous trademarks that are

nearly-identical to Opposers’ pre-existing trademarks and each of Applicant’s trademark is also

nearly-identical in its use at common law. See examples attached hereto as Exhibit B.

21. The proposed LEGEND OF OZ trademark is confusingly similar to Opposers’ OF

OZ Family of Marks, such that its use is likely to cause confusion, mistake, or deception in the

minds of prospective purchasers as to the origin, source, sponsorship or association between

Opposers and Applicant and their respective goods and services.

22. Applicant’s goods and services overlap with and/or are identical to Opposers’

goods and services, as both Applicant and Opposers develop and offer slot-themed mobile

computer games for entertainment, which is likely to cause confusion among consumers.

23. Applicant’s target consumer base overlaps with Opposers’ target consumer base,

as all offer computer games to consumers of all ages through various media, and the goods and

services are marketed and offered through the same channels of trade, including on mobile app

stores, websites, and/or social media platforms.

24. The extent of likely confusion among consumers between Applicant's LEGEND

OF OZ trademark and Opposers' OF OZ Family of Marks is substantial.

25. Registration of Applicant’s LEGEND OF OZ trademark would be a further

source of damage to Opposers because it would confer upon Applicant various statutory

presumptions to which it is not entitled in view of Opposers’ prior use and registration of the OF

OZ Family of Marks.

26. On information and belief, Applicant was aware of Opposers’ OF OZ Family of

Marks prior to its adoption of the proposed LEGEND OF OZ trademark.

27. Applicant applied for registration of the Proposed Mark without the consent or

agreement of Opposers.

28. In view of Opposers’ prior rights in the OF OZ Family of Marks, Applicant is not

entitled to federal registration of Applicant’s Mark pursuant to Section 2(d) of the Trademark

Act, 15 U.S.C. § 1052(d).

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

provisions of Sections 2, 13, and 43 of the Lanham Act, 15 U.S.C. §§ 1052, 1125, and 1063, and

Opposers would be damaged thereby.

30. In order to protect the public against confusion and deceit, and to protect

Opposers from infringement and unfair competition, registration of Applicant’s Proposed Mark

should be refused under Sections 2(d), 13, and 43 of the Lanham Act, 15 U.S.C. §§ 1052(d),

1125, and 1063.

WHEREFORE, Opposers respectfully pray for the following:

a. a finding that Opposers have priority as to Applicant’s Application to register the

LEGEND OF OZ trademark in connection with the Proposed Goods and Services identified in

the Application;

b. a finding that Applicant’s proposed LEGEND OF OZ trademark is likely to cause

confusion with Opposers’ OF OZ Family of Marks; and

c. that the opposition be sustained and the Application be denied and refused,

pursuant to Section 13 of the Lanham Act, 15 U.S.C. § 1063.

Please apply any fees to Deposit Account No. 06-1050, with reference to 44201-

1492PP1.

Respectfully Submitted, Date:____10/3/2019___________________ ____________________________ Lisa Greenwald-Swire FISH & RICHARDSON P.C. Fish & Richardson P.C. P.O. Box 1022 Minneapolis, MN 55440-1022 [email protected]

ATTORNEY FOR OPPOSERS Playtika Ltd.

Playtika UK – House of Fun Limited

Exhibit A

Reg. No. 5,272,739

Registered Aug. 22, 2017

Int. Cl.: 41

Service Mark

Principal Register

Pacific Interactive UK Limited (UNITED KINGDOM limited company )

4 Thomas More Square

UHY Hacker Young LLP, Quadrant House

London UNITED KINGDOM E1W1YW

CLASS 41: Entertainment services, namely, providing on-line computer games and game

applications, enhancements within online computer games, and game applications within

online computer games; providing online reviews of computer games, and providing of

information relating to computer games; providing an internet website portal in the field of

computer games and gaming; entertainment services, namely, providing virtual environments

in which users can interact through social games for recreational, leisure or entertainment

purposes

FIRST USE 1-17-2017; IN COMMERCE 1-17-2017

THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY

PARTICULAR FONT STYLE, SIZE OR COLOR

SER. NO. 87-185,901, FILED 09-28-2016

GEORGE WILLIAM MURRAY, EXAMINING ATTORNEY

Reg. No. 5,318,838

Registered Oct. 24, 2017

Int. Cl.: 41

Service Mark

Principal Register

Playtika Ltd. (ISRAEL limited company (ltd.) )

8 Hachoshlim St

Herzliya Pituach, ISRAEL 4672408



online computer games; providing an internet website portal in the field of computer games

and gaming; entertainment services, namely, providing virtual environments in which users

can interact through social games for recreational, leisure or entertainment purposes




SER. NO. 87-371,838, FILED 03-15-2017

Reg. No. 5,439,717

Registered Apr. 03, 2018

Int. Cl.: 41

Service Mark

Principal Register

Playtika Ltd. (ISRAEL limited company (ltd.) )

8 Hachoshlim St

Herzliya Pituach, ISRAEL 4672408









SER. NO. 87-475,196, FILED 06-05-2017

Reg. No. 5,687,531

Registered Feb. 26, 2019

Int. Cl.: 41

Service Mark

Principal Register

Playtika UK - House of Fun Limited (UNITED KINGDOM private limited company )

Quadrant House

4 Thomas More Square

London, UNITED KINGDOM E1W1YW









SER. NO. 87-855,327, FILED 03-29-2018

Trademark Comparison Chart

Funtrio Actual Use Playtika Actual Use KITTY CASH (US Ser. No. 88/246,201)

KITTY GEMS (US Reg. No. 4,794,067)

MIDAS GOLD (US Ser. No. 88/083,903)

RICHES OF MIDAS (US Reg. No. 5,658,877)

HERO OF SHERWOOD (US Ser. No. 88/083,893)

PRINCE OF SHERWOOD (US Reg. No. 5,531,422)

WOLF CASH (US Ser. No. 87/951,855)

WOLF (US Reg. No. 4,760,346)

LEGEND OF OZ (US Ser. No. 88/083,894)

HEROES OF OZ (US Reg. No. 5,687,531) MEMORIES OF OZ (US Reg. No. 5,439,717) RICHES OF OZ (US Reg. No. 5,272,739) DREAMING OF OZ (US Reg. No. 5,318,838)

STARS OF TEXAS (US Ser. No. 87/951,846)

TEXAS STAR (US Reg. No. 4,358,148)

EASTERN RICHES (US Ser. No. 88/246,195)

EASTERN CA$H (US Reg. No. 5,462,504)

AFRICAN ROAR (US Ser. No. 88/240,471)

LION’S ROAR (US Reg. No. 4,815,680)

Page 2

FU FU GOLD (US Ser. No. 88/240,238)

FU FU FLIP (US Reg. No. 5,557,053)

GOLD BURST (US Ser. No. 88/246,144)

DYNAMITE GOLD (US Reg. No. 5,638,479)

PHOENIX (common law)

LUCKY PHOENIX (US Reg. No. 4,688,836) MIGHTY PHOENIX (US Reg. No. 5,351,999)

DOLPHIN MAGIC (common law)

MAJESTIC DOLPHIN (US Reg. No. 5,438,307)

DINER DOLLARS (common law)

DINER CASH (US Reg. No. 4,459,242)

FIRE & ICE FEVER (common law)

FIRE & ICE (common law)

FAST HEAT JACKPOTS (common law)

RAPID FIRE JACKPOTS (US Reg. No. 5,052,503)

FU HUI (common law)

FU HAI (US Reg. No. 5,488,080)

ALADDIN (common law) ALADDIN TREASURES (common law)

RICHES OF ALADDIN (US Reg. No. 4,688,833)

HOT DEVILS (common law)

FLAMING DEVILS (US Reg. No. 4,494,013)

Page 3

CRYSTAL LEGENDS (common law)

CRYSTALLOMANCY (US Reg. No. 5,504,964)

LUCKY HOWL (common law)

WILD HOWL (US Reg. No. 5,214,254)

Documents

Notice of Oppositionttabvue.uspto.gov/ttabvue/ttabvue-91251390-OPP-1.pdf · popular online gaming platforms such as SLOTOMANIA, CAESAR’S CASINO, HOUSE OF FUN, and WORLD SERIES OF