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iname=KWURRA1UJOLN-8459

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Receipt

ESTTA Tracking number: ESTTA238005

Filing date: 09/21/2008

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 CW Multimedia Corporation

Entity Corporation Citizenship Kentucky
310 West Liberty Street, Suite 510
Address Louisville, KY 40202
UNITED STATES

Name Chris A. Webb

Entity Individual Citizenship UNITED STATES
310 West Liberty Street, Suite 510
Address Louisville, KY 40202
UNITED STATES

Name James J. Yelich

Entity Individual Citizenship UNITED STATES
124 12th Avenue South, Suite 410
Address Nashville, TN 37203
UNITED STATES

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Erik M. Pelton
Erik M. Pelton & Associates, PLLC
Attorney PO Box 100637
information Arlington, VA 22210
UNITED STATES
uspto@tm4smallbiz.com Phone:703-525-8009

Applicant Information

Publication
Application No 77441634 08/26/2008
date
Opposition Opposition
09/21/2008 09/25/2008
Filing Date Period Ends
Xtreme Productions LLC
Pier 27, The Embarcadero
Applicant
San Francisco, CA 94111
UNITED STATES

Goods/Services Affected by Opposition

Class 038.
All goods and services in the class are opposed, namely: Voice message sending services

Grounds for Opposition

False suggestion of a connection Trademark Act section 2(a)

Priority and likelihood of confusion Trademark Act section 2(d)
Torres v. Cantine Torresella S.r.l.Fraud 808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
Other Applicant is not the true owner of the mark.

Marks Cited by Opposer as Basis for Opposition

U.S. Application
77504843 06/21/2008
Application No. Date
Registration Foreign
NONE NONE
Date Priority Date
Word Mark CELEBRITIES CALL YOU
Design Mark 77504843#TMSN.jpeg
Description of
NONE
Mark

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Class 037. First use: First Use: 2007/05/07 First Use In Commerce:
2008/06/12
Goods/Services
integrated voice response telephone services; customized phone call and
e-card services

U.S. Application
77504846 06/21/2008
Application No. Date
Registration Foreign
NONE NONE
Date Priority Date
Word Mark CELEBRITIES CALLYOU.COM
Design Mark 77504846#TMSN.jpeg
The mark consists of the wording in the mark presented in a billboard
Description of
marque style with CELEBRITIES in cursive about the wording
Mark
CALLYOU.COM.
Class 037. First use: First Use: 2007/05/07 First Use In Commerce:
2008/06/12
Goods/Services
integrated voice response telephone services; customized phone call and
e-card services; prerecorded telephone messages

77504843#TMSN.jpeg ( 1 page )( bytes )

77504846#TMSN.jpeg ( 1 page )( bytes )
Attachments
CELEBSCALLU - Notice of Opposition- FINAL.pdf ( 6 pages )(46219
bytes )

Certificate of Service

The undersigned hereby certifies that a copy of this paper has been served upon all parties, at
their address record by Overnight Courier on this date.

Signature /ErikMPelton/
Name Erik M. Pelton
Date 09/21/2008

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3 of 3 9/21/2008 7:49 AM
 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

CHRIS A. WEBB, )
JAMES JOSEPH YELICH, and )
CW MULTIMEDIA CORPORATION, ) Opposition No. ____________
Opposers, )
) In the matter of:
vs. )
) Application Serial No. 77441634
XTREME PRODUCTIONS LLC ) Published on August 26, 2008
Applicant. ) Mark:
) CELEBSCALLU

NOTICE OF OPPOSITION

In the matter of the application for registration of the mark CELEBSCALLU for “Voice

message sending services” in International Class 038, filed April 7, 2008, by Xtreme Productions

LLC (“Applicant”), assigned Serial No. 77441634, and published for opposition in the Official

Gazette of August 26, 2008, CHRIS A. WEBB, JAMES JOSEPH YELICH, and CW

MULTIMEDIA CORPORATION (“Opposers”) believe that they would be damaged by such

registration, and hereby opposes the registration of Applicant’s mark pursuant to 15 USC §1063

and 37 CFR §2.104.

As grounds of opposition, it is alleged that:

1. Opposer CW Multimedia Corporation is a Kentucky corporation with a principal

place of business at 310 West Liberty Street, Suite 510, Louisville, KY 40202.

2. Opposer Chris A. Webb (“Webb”) is a United States citizen with a principal place

of business at 310 West Liberty Street, Suite 510, Louisville, KY 40202.

3. Opposer James Joseph Yelich (“Yelich”) is a United States citizen with a

principal place of business at 124 12th Avenues South, Suite 410, Nashville, TN 37203.
 4. Opposers, since at least May of 2007 have been, and are now, using the mark

CELEBRITIES CALL YOU and CELEBRITIESCALLYOU.COM & Design in connection with

integrated voice response telephone services; customized phone call and e-card services

(“Opposer’s Marks”).

5. Opposers Webb and Yelich have filed for registration of CELEBRITIES CALL

YOU on June 21, 2008, in U.S. trademark application Serial No. 77504843.

6. Opposers Webb and Yelich filed for registration of

CELEBRITIESCALLYOU.COM on June 21, 2008, in U.S. trademark application Serial No.

77504846.

7. Applicant filed to register the proposed mark CELEBSCALLU, Serial Number

77441634, for “Voice message sending services,” on April 7, 2008, claiming a bona fide intent

to use the mark in commerce, as is evidenced by publication of said mark in the Official Gazette

in the August 26, 2008, issue (“Applicant’s Mark”).

8. Opposers’ use of Opposers’ Marks has been valid and continuous since at least

May of 2007 and has not been abandoned. Opposers’ marks are is symbolic of extensive good

will and consumer recognition. As a result of the substantial amounts of time and effort in

advertising and promotion, Opposers have developed an exceedingly valuable goodwill in

respect to Opposers’ Marks.

9. Applicant’s Mark and Opposers’ Marks are very similar in sound, appearance and

meaning.

10. Applicant’s services and Opposers’ services are very similar and related.

11. Applicant’s services and Opposers’ services are likely to be marketed and sold

together.

Mark: CELEBSCALLU -2-

Serial No: 77441634
Published: August 26, 2008
 12. On information and belief, Opposers allege that the services of Opposers and

Applicant are offered or to be offered in similar channels of commerce and offered to similar

customers.

13. Applicant’s use of and application to register CELEBSCALLU is without the

consent or permission of Opposers.

14. Applicant’s Mark and Opposers’ Marks are likely to be confused.

15. On information and belief, Opposers first use of Opposers’ Marks precedes

Applicant’s first use of Applicant’s Mark in commerce.

16. On information and belief, Opposers’ first use of Opposers’ Marks precedes the

filing of Applicant’s application to register Applicant’s Mark in the United States Patent and

Trademark Office.

17. Om of Applicant’s Members and principals signed a Non-Disclosure Agreement

with Opposer CW Multimedia Corporation on October 18, 2007.

18. Applicant had knowledge of Opposers’ Marks at least as early as October 18,

2007.

19. Applicant had knowledge of Opposers’ use of Opposers’ Marks prior to

Applicant’s filing to register Applicant’s Mark.

20. On information and belief, Applicant is not the true owner of the mark in

Application Serial No. 77441634.

21. On information and belief, Applicant has committed fraud in the filing of

Application Serial No. 77441634.

22. As a result of confusing similarity between Opposers’ Marks and Applicant’s

Mark and because the goods and/or services of Applicant and Opposers are very similar, are in

Mark: CELEBSCALLU -3-

Serial No: 77441634
Published: August 26, 2008
similar channels of commerce, and are directed to similar customers, registration of the proposed

mark CELEBSCALLU in connection with Applicant’s services is likely to deceive purchasers as

to the source or sponsorship of such services, to cause confusion, to cause mistake, or to deceive.

23. Consumers familiar with the Opposers’ Marks are likely to mistakenly believe

that Applicant’s services are sponsored, authorized, associated with or otherwise approved by

Opposers because the proposed mark closely resembles Opposers’ Marks. Deficiencies or faults

in the quality of Applicant’s services are likely to reflect negatively upon, tarnish and seriously

injure the reputation which Opposers have established for services provided under Opposers’

Marks. This confusion is likely to result in loss of revenues to Opposers and damage Opposers’

reputations.

24. Applicant’s use of the Applicant’s Mark does or is likely to falsely suggest a

relationship between Applicant’s services and Opposers. Such use of the CELEBSCALLU is

likely to cause confusion, mistake or deception with respect to the source or sponsorship of

Applicant’s services. Such use is likely to cause a significant level of sales by Applicant to

consumers who would be confused by the use of the proposed mark into believing that Opposers

are the source of Applicant’s services, resulting in ill-gotten gains by Applicant. Applicant’s use

of the proposed mark is therefore likely to result in Applicant’s trading off and benefiting from

the goodwill associated with Opposers, resulting in ill-gotten gains by Applicant.

25. Opposers are likely to be damaged by registration of Applicant’s mark in that the

prima facie effect of registration of Applicant’s mark would tend to impair Opposers’ right to use

the wording contained in Applicant’s mark.

Mark: CELEBSCALLU -4-

Serial No: 77441634
Published: August 26, 2008
 26. Opposers are likely to be damaged by registration of Applicant’s mark in that the

prima facie effect of registration of Applicant’s mark would tend to impair Opposers’ right to

register Opposers’ Marks with the U.S. Patent and Trademark Office.

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

provisions of the Lanham Act, and Opposers would be damaged thereby.

WHEREFORE, Opposers pray that the application for registration of the mark

CELEBSCALLU, Serial No. 77441634, be refused and that this Opposition be sustained in favor

of Opposers.

The fee required by Sect. 2.6(a)(17) is enclosed herewith.

Opposer hereby appoints Erik M. Pelton, member of the Bars of the State of New Jersey

and the District of Columbia, and Christopher Shiplett, member of the Bar of the Commonwealth

of Virginia, at ERIK M. PELTON & ASSOCIATES, PLLC, PO Box 100637, Arlington, Virginia

22210, to act as attorney in the matter of the opposition identified above, to prosecute said

opposition, to transact all business in the Patent and Trademark Office, and in the United States

courts connected with the opposition, to sign its name to all papers which are hereinafter to be

filed in connection therewith, and to receive all communications relating to the same.

Respectfully submitted for Opposers,

Dated: September ____ 2008 By:

Erik M. Pelton, Esq.
Attorney for Opposers

ERIK M. PELTON & ASSOCIATES, PLLC

PO Box 100637
Arlington, Virginia 22210

Phone: 703.525.8009
Fax: 703.525.8089
Email: uspto@tm4smallbiz.com
Mark: CELEBSCALLU -5-
Serial No: 77441634
Published: August 26, 2008
 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

CHRIS A. WEBB, )
JAMES JOSEPH YELICH, and )
CW MULTIMEDIA CORPORATION, ) Opposition No. ____________
Opposers, )
) In the matter of:
vs. )
) Application Serial No. 77441634
XTREME PRODUCTIONS LLC ) Published on August 26, 2008
Applicant. ) Mark:
) CELEBSCALLU

CERTIFICATE OF SERVICE

I hereby certify that a true and copy of the foregoing Notice of Opposition has been
served on the following by mailing said copy on September 21, 2008, via overnight delivery,
postage prepaid, to Applicant at its correspondence address of record:

Marc M. Gorelnik
Townsend and Townsend and Crew LLP
2 Embarcadero Center, Floor 8
San Francisco, California 94111-3833

By:
Erik M. Pelton, Esq.

Mark: CELEBSCALLU -6-

Serial No: 77441634
Published: August 26, 2008