KFC Petitions Trademark Office To Block Pittsford Businessman

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.
gov
ESTTA Tracking number: ESTTA805614
Filing date: 03/07/2017
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 KFC Corporation
Granted to Date 03/25/2017
of previous ex-
tension
Address 1441 Gardiner Lane
Louisville, KY 40213
UNITED STATES
Attorney informa- Sabina A. Vayner

tion Kilpatrick Townsend & Stockton LLP
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309
UNITED STATES
svayner@ktslaw.com, dmayberry@ktslaw.com, jvogel@ktslaw.com, kteil-
haber@ktslaw.com, tmadmin@ktslaw.com
Applicant Information
Application No 87097765 Publication date 01/24/2017
Opposition Filing 03/07/2017 Opposition Peri- 03/25/2017
Date od Ends
Applicant Brian Mastrosimone
Suite 335
Rochester, NY 14607
UNITED STATES
Goods/Services Affected by Opposition

Class 016. First Use: 0 First Use In Commerce: 0
All goods and services in the class are opposed, namely: stickers; bumper stickers
All goods and services in the class are opposed, namely: beverage glassware
All goods and services in the class are opposed, namely: clothing, namely, shirts; t-shirts; hats; vi-
sors; pants; shorts; sweatshirts; hooded sweatshirts; jackets; coats; gloves, caps; socks
All goods and services in the class are opposed, namely: cheese
All goods and services in the class are opposed, namely: barbecue dry rub
All goods and services in the class are opposed, namely: beer, soda pops, soda water, non-alcoholic
cider
All goods and services in the class are opposed, namely: wine; distilled spirits; hard cider
All goods and services in the class are opposed, namely: arranging and conducting special eventsfor
commercial purposes; arranging and conducting food and beer festivals for commercial purposes;
promoting the concerts of others
All goods and services in the class are opposed, namely: entertainment, namely, live music concerts
and food tastings; arranging and conducting food and live music festivals for entertainment purposes
All goods and services in the class are opposed, namely: bar services
Applicant Information
Application No 87087829 Publication date 11/15/2016
Opposition Filing 03/07/2017 Opposition Peri-
Date od Ends
Applicant Brian Mastrosimone
Suite 335
Rochester, NY 14607
UNITED STATES
Goods/Services Affected by Opposition

All goods and services in the class are opposed, namely: Beer
Grounds for Opposition

Priority and likelihood of confusion Trademark Act Section 2(d)
Dilution by blurring Trademark Act Sections 2 and 43(c)
Marks Cited by Opposer as Basis for Opposition

U.S. Registration 3348337 Application Date 04/10/2006
No.
Registration Date 12/04/2007 Foreign Priority NONE
Date
Word Mark IT'S FINGER LICKIN' GOOD
Design Mark
Description of NONE
Mark
Goods/Services Class 043. First use: First Use: 1952/12/31 First Use In Commerce: 1952/12/31
Restaurant services

No.
Date
Word Mark FINGER LICKIN' GOOD
Design Mark
Description of NONE
Mark
Cooked and prepared chicken for consumption on or off the premises
Class 030. First use: First Use: 2013/05/14 First Use In Commerce: 2013/05/14
Cooked and prepared chicken sandwich for consumption on or off the premises
Restaurant services

No.
Date
Word Mark KFC FLG FINGER LICKIN' GOOD
Design Mark
Description of The mark consists of the letters "KFC","FLG.", and words "FINGER LICKIN'
Mark GOOD"stylized and stacked within a circular-shaped speech bubble.
Cooked and prepared chicken for consumption on or off the premises
Cooked and prepared chicken sandwich for consumption on or off the premises

No.
Date
Word Mark FINGER LICKIN' GOOD
Design Mark
Description of NONE
Mark
Sauces

No.
Date
Word Mark "IT'S FINGER LICKIN' GOOD"
Design Mark
Description of NONE
Mark
Restaurant services
Attachments 78857932#TMSN.png( bytes )

85500760#TMSN.png( bytes )
2017.03.07 Consolidated NOO_Exhibits 1 - 5.pdf(2376172 bytes )
Signature /Sabina A. Vayner/

Name Sabina A. Vayner
Date 03/07/2017
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
KFC CORPORATION, )
) Opposition No. _________________
Opposer, )
) Marks: FINGER LAKIN GOOD
v. ) (App. Serial No. 87097765)
)
BRIAN MASTROSIMONE, ) FINGER LAKING GOOD
) (App. Serial No. 87087829)
Applicant. )
)
CONSOLIDATED NOTICE OF OPPOSITION
Opposer KFC Corporation, a State of Delaware corporation with a principal place of
business at 1441 Gardiner Lane, Louisville, KY 40213, will be damaged by registration of the
marks shown in Application Serial Nos. 87097765 (FINGER LAKIN GOOD) and 87087829
(FINGER LAKING GOOD) (the Applications), each owned by Applicant Brian
Mastrosimone (Applicant), and states the following for its consolidated opposition to the
Applications:
1. KFC, founded in Corbin, Kentucky by Colonel Harland D. Sanders, operates,
franchises and licenses a worldwide system of restaurants that prepare, package and sell
competitively-priced food items. KFC restaurants emphasize the preparation of food with high-
quality ingredients, as well as unique recipes and special seasonings, to provide appealing, tasty
and attractive food at competitive prices.
2. KFC restaurants offer fried and non-fried chicken products, such as sandwiches,
chicken strips, chicken-on-the-bone, and other chicken products, marketed under a variety of
names. KFC restaurants also offer a variety of entrees, side items, and beverages suited to local
preferences and tastes, including beer.

3. Throughout its more than 65-year history, and since at least as early as 1952, KFC
has continuously and extensively advertised and promoted the sale of its products and services in
connection with the mark ITS FINGER LICKIN GOOD or, simply, FINGER LICKIN
GOOD, both standing alone and in combination with other terms and/or design elements
(collectively, KFCs FINGER LICKIN GOOD Marks).
4. KFC uses, and in the past has used, its FINGER LICKIN GOOD Marks on
product packaging, including on its famous KFC bucket, which accounts for 35% of its business.
5. KFC uses, and for decades has used, its FINGER LICKIN GOOD Marks to
extensively advertise the sale of its products and services in mass media, including in broadcast
media, digital media, outdoor media, print media, and through many other outlets.
6. Representative examples of 2016 television advertising promoting the sale of
KFC products and services using KFCs FINGER LICKIN GOOD Marks include:
www.youtube.com/watch?v=NlqHyvKZ_gM (Pledge)
www.youtube.com/watch?v=RmXAFBGztqo (Ice Bath)
www.youtube.com/watch?v=Um_aUxoAcSE (Slap)
www.youtube.com/watch?v=LWj3NzcXdaU (Just a Phase)
7. As another example, KFCs 2015-2017 television advertising features KFCs
FINGER LICKIN GOOD Marks with well-known comedians (e.g., Norm MacDonald, Darrell
Hammond, Jim Gaffigan, and George Hamilton) playing the role of Colonel Sanders and using
these marks to tout KFCs various products and services.
8. KFC also uses, and in the past has used, its FINGER LICKIN GOOD Marks to
sponsor live music performances at the KFC Center, baseball games, and other community
events.
2
9. The KFC system has spent hundreds of millions of dollars advertising and
promoting the sale of products and services using the FINGER LICKIN GOOD Marks. The
KFC system has generated billions of dollars in sales under those marks.
10. KFCs FINGER LICKIN GOOD Marks are inherently distinctive. Furthermore,
as a result of KFCs decades-long, continuous use of its FINGER LICKIN GOOD Marks in
connection with the sale of its products and services, and as a result of KFCs extensive
advertising and promotion of those products and services using the FINGER LICKIN GOOD
Marks, the consuming public and the trade have come to recognize KFCs FINGER LICKIN
GOOD Marks as belonging to KFC, and associate and identify the products and services offered
under the FINGER LICKIN GOOD Marks with KFC. KFC consequently derives invaluable
goodwill and value from this recognition, association, and identification by the consuming public
and the trade.
11. KFC also owns several federal registrations that consist of, or incorporate, its
FINGER LICKIN GOOD Marks, including but not limited to:
Registration No. 3348337 of the ITS FINGER LICKIN GOOD mark for
restaurant services;
Registration No. 4601841 of the FINGER LICKIN GOOD mark for

cooked and prepared chicken for consumption on or off the premises,
cooked and prepared chicken sandwich for consumption on or off the
premises, and restaurant services;
Registration No. 4601842 of the KFC FLG FINGER LICKIN GOOD &
Design mark for cooked and prepared chicken for consumption on or off the
premises and cooked and prepared chicken sandwich for consumption on
or off the premises;
Registration No. 4847782 of the FINGER LICKIN GOOD mark for

sauces; and
Registration No. 4952814 of the ITS FINGER LICKIN GOOD mark for
restaurant services.
3
(collectively, the KFC Registrations). Pursuant to 37 C.F.R. 2.122(d), copies of certificates
of registration and printouts from the USPTOs electronic TSDR database, showing the current
status and title for each of the KFC Registrations, are attached as Exhibits 1-5.
12. Due to the extensive advertising of, and publicity received by, KFCs FINGER
LICKIN GOOD Marks for decades, the billions of dollars of sales generated throughout the
country in connection with those marks, and the high levels of consumer recognition of the
marks, KFCs FINGER LICKIN GOOD Marks are widely recognized by the general
consuming public throughout the United States as a designation of source of the goods and
services of KFC. As such, KFCs FINGER LICKIN GOOD Marks are famous marks, deserving
of a broad scope of legal protection.
13. Notwithstanding KFCs prior rights in and to its famous FINGER LICKIN
GOOD Marks, on June 29, 2016, Applicant filed an application with the USPTO, on an intent-
to-use basis, to register the mark FINGER LAKING GOOD for beer, as shown in application
Serial No. 87087829 (the FINGER LAKING GOOD Mark).
14. Additionally, on July 8, 2016, Applicant filed an application with the USPTO, on
an intent-to-use basis, to register the mark FINGER LAKIN GOOD for the following goods and
services, as shown in application Serial No. 87097765 (the FINGER LAKIN GOOD Mark):
stickers; bumper stickers;
beverage glassware;
clothing, namely, shirts, t-shirts, hats, visors, pants, shorts, sweatshirts,

hooded sweatshirts, jackets, coats, gloves, caps, socks;
cheese;
barbecue dry rub;
4
beer, soda pops, soda water, non-alcoholic cider;
wine; distilled spirits; hard cider;
arranging and conducting special events for commercial purposes; arranging

and conducting food and beer festivals for commercial purposes; promoting
the concerts of others;
entertainment, namely, live music concerts and food tastings; arranging and
conducting food and live music festivals for entertainment purposes; and
bar services.
(The FINGER LAKING GOOD Mark and the FINGER LAKIN GOOD Mark are referred to
collectively as Applicants FLG Marks.)
Ground I: Likelihood of Confusion
15. KFC repeats and incorporates by reference each of the allegations contained in the
preceding Paragraphs.
16. KFCs use of its FINGER LICKIN GOOD Marks began long prior to the
Applications June 29, 2016 and July 8, 2016 filing dates, and thus prior to any constructive use
date of Applicants FLG Marks.
17. Each of the KFC Registrations was issued prior to the Applications June 29,
2016 and July 8, 2016 filing dates, and thus prior to any constructive use date of Applicants
FLG Marks.
18. Applicants FLG Marks are very similar in sight, sound, and appearance to KFCs
FINGER LICKIN GOOD Marks and create a similar commercial impression.
19. The goods and services recited in the Applications are closely related to, overlap
with, and/or complement the goods and services recited in the KFC Registrations and the goods
and services in connection with which the FINGER LICKIN GOOD Marks are used in
commerce.
5
20. Upon information and belief, Applicant adopted Applicants FLG marks to trade
on the goodwill associated with KFCs FINGER LICKIN GOOD Marks.
21. Applicants FLG Marks so resemble KFCs FINGER LICKIN GOOD Marks as
to be likely to cause confusion, or to cause mistake, or to deceive. Consumers are likely to
believe erroneously that the goods and services offered under Applicants FLG Marks originate
from KFC or are authorized, endorsed, sponsored or licensed by KFC. Thus, registration of
Applicants FLG Marks on the Principal Register would be inconsistent with KFCs prior rights
in its famous FINGER LICKIN GOOD Marks under 15 U.S.C. 1052(d) and 1063.
Ground II: Dilution of the Famous FINGER LICKIN GOOD Marks
22. KFC repeats and incorporates by reference each of the allegations contained in the
preceding Paragraphs.
23. Due to the extensive advertising of, and publicity received by, KFCs FINGER
LICKIN GOOD Marks for decades, the billions of dollars of sales generated throughout the
country in connection with those marks, and the high levels of consumer recognition of the
marks, KFCs FINGER LICKIN GOOD Marks are widely recognized by the general
consuming public of the United States as a designation of source of the goods and services of
KFC. As such, KFCs FINGER LICKIN GOOD Marks are famous marks under Section 43(c)
of the Lanham Act, 15 U.S.C. 1125(c), and are deserving of a broad scope of legal protection.
24. KFCs FINGER LICKIN GOOD Marks became famous long prior to the
Applications June 29, 2016 and July 8, 2016 filing dates, and thus prior to any constructive use
date of Applicants FLG Marks.
25. Applicants FLG Marks are highly similar to KFCs FINGER LICKIN GOOD
Marks.
6
26. KFCs FINGER LICKIN GOOD Marks have a high degree of inherent and
acquired distinctiveness.
27. KFCs use of its FINGER LICKIN GOOD Marks has been, and continues to be,
substantially exclusive.
28. Upon information and belief, Applicant intends to create an association with
KFCs famous FINGER LICKIN GOOD Marks.
29. The similarities between Applicants FLG Marks and KFCs FINGER LICKIN
GOOD Marks are likely to cause consumers to make an association between the marks that is
likely to impair the distinctiveness of KFCs famous marks. As such, Applicants FLG Marks
are likely to cause dilution by blurring of KFCs FINGER LICKIN GOOD Marks in violation
of 15 U.S.C. 1052 and 1125(c).
KFC therefore requests that the Board sustain this consolidated opposition proceeding in
KFCs favor and refuse registration to the marks shown in Application Serial Nos. 87097765 and
87087829.
The Director is authorized to debit Kilpatrick Townsend & Stockton LLPs Trademark
Deposit Account No. 20-1430 for any deficiency in the required $4,400.00 opposition fee.
[Signature on following page]
7
This 7th day of March, 2017.
Respectfully submitted,
/Sabina A. Vayner/
J. David Mayberry
Kilpatrick Townsend & Stockton LLP
607 14th Street NW, Suite 900
Washington, DC 20005-2018
Telephone: (202) 508-5800
dmayberry@kilpatricktownsend.com
Sabina A. Vayner
Kilpatrick Townsend & Stockton LLP
1100 Peachtree Street, Suite 2800
Atlanta, Georgia 30309-4528
Telephone: (404) 815-6500
svayner@kilpatricktownsend.com
Attorneys for Opposer KFC Corporation
8
EXHIBIT 1
Generated on: This page was generated by TSDR on 2017-03-07 13:15:33 EST
Mark: IT'S FINGER LICKIN' GOOD
US Serial Number: 78857932 Application Filing Apr. 10, 2006

Date:
US Registration 3348337 Registration Date: Dec. 04, 2007
Number:
Filed as TEAS Yes Currently TEAS No
Plus: Plus:
Register: Principal
Mark Type: Service Mark
TM5 Common Status LIVE/REGISTRATION/Issued and Active
Descriptor:
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. 16, 2013
Publication Date: Sep. 18, 2007
Mark Information
Mark Literal IT'S FINGER LICKIN' GOOD
Elements:
Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
Claim:
Mark Drawing 4 - STANDARD CHARACTER MARK
Type:
Related Properties Information

Claimed Ownership 0801095, 1711937, 3035298
of US
Registrations:
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; and
Asterisks *..* identify additional (new) wording in the goods/services.
For: Restaurant services

International 043 - Primary Class U.S Class(es): 100, 101
Class(es):
Class Status: ACTIVE
Basis: 1(a)
First Use: Dec. 31, 1952 Use in Commerce: Dec. 31, 1952
Basis Information (Case Level)

Filed Use: Yes Currently Use: Yes Amended Use: No
Filed ITU: No Currently ITU: No Amended ITU: No
Filed 44D: No Currently 44D: No Amended 44D: No
Filed 44E: No Currently 44E: No Amended 44E: No
Filed 66A: No Currently 66A: No
Filed No Basis: No Currently No Basis: No
Current Owner(s) Information

Owner Name: KFC Corporation
Owner Address: Legal
1441 Gardiner Lane
Louisville, KENTUCKY UNITED STATES 40213
Legal Entity Type: CORPORATION State or Country DELAWARE
Where Organized:
Attorney/Correspondence Information
Attorney of Record
Attorney Name: Leanne Stendell Docket Number: TM50001 (KFC
Attorney Primary trademarks@yum.com Attorney Email Yes
Email Address: Authorized:
Correspondent
Correspondent Leeanne Stendell
Name/Address: Yum! Brands, Inc.
7100 Corporate Drive
Plano, TEXAS UNITED STATES 75024
Phone: 972 338 7263
Correspondent e- trademarks@yum.com Correspondent e- Yes
mail: mail Authorized:
Domestic Representative - Not Found
Prosecution History
Proceeding
Date Description
Number
Dec. 04, 2016 COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED
Aug. 17, 2016 ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY
Oct. 27, 2015 NOTICE OF SUIT
Feb. 07, 2014 NOTICE OF SUIT
Jan. 07, 2014 NOTICE OF SUIT
Dec. 16, 2013 NOTICE OF ACCEPTANCE OF SEC. 8 & 15 - E-MAILED
Dec. 16, 2013 REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK. 71378
Dec. 03, 2013 REGISTERED - SEC. 8 (6-YR) & SEC. 15 FILED 71378
Dec. 14, 2013 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 71378
Dec. 03, 2013 TEAS SECTION 8 & 15 RECEIVED
Dec. 03, 2013 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Nov. 15, 2013 ATTORNEY REVOKED AND/OR APPOINTED
Nov. 15, 2013 TEAS REVOKE/APPOINT ATTORNEY RECEIVED
Nov. 27, 2012 NOTICE OF SUIT
Feb. 15, 2012 NOTICE OF SUIT
Jul. 20, 2011 NOTICE OF SUIT
Jun. 15, 2011 NOTICE OF SUIT
Mar. 24, 2011 NOTICE OF SUIT
Dec. 29, 2010 NOTICE OF SUIT
Aug. 19, 2010 NOTICE OF SUIT
Jul. 14, 2010 NOTICE OF SUIT
Dec. 16, 2009 NOTICE OF SUIT
Dec. 04, 2007 REGISTERED-PRINCIPAL REGISTER
Oct. 10, 2007 ASSIGNED TO EXAMINER 69800
Sep. 18, 2007 PUBLISHED FOR OPPOSITION
Aug. 29, 2007 NOTICE OF PUBLICATION
Aug. 16, 2007 LAW OFFICE PUBLICATION REVIEW COMPLETED 77976
Aug. 13, 2007 APPROVED FOR PUB - PRINCIPAL REGISTER
Jul. 23, 2007 TEAS/EMAIL CORRESPONDENCE ENTERED 77976
Jul. 20, 2007 CORRESPONDENCE RECEIVED IN LAW OFFICE 77976
Jul. 20, 2007 TEAS RESPONSE TO OFFICE ACTION RECEIVED
Jul. 20, 2007 PETITION TO REVIVE-GRANTED 88888
Jul. 20, 2007 TEAS PETITION TO REVIVE RECEIVED
Jan. 19, 2007 ASSIGNED TO LIE 77976
Jan. 19, 2007 NON-FINAL ACTION E-MAILED 6325
Jan. 19, 2007 NON-FINAL ACTION WRITTEN 80814
Jun. 30, 2006 LETTER OF SUSPENSION E-MAILED 6332
Jun. 30, 2006 SUSPENSION LETTER WRITTEN 80814
Jun. 30, 2006 REMOVED FROM TEAS PLUS 80814
Jun. 29, 2006 TEAS/EMAIL CORRESPONDENCE ENTERED 68552
Jun. 20, 2006 CORRESPONDENCE RECEIVED IN LAW OFFICE 68552
Jun. 20, 2006 TEAS RESPONSE TO OFFICE ACTION RECEIVED
May 11, 2006 NON-FINAL ACTION E-MAILED 6325
May 11, 2006 NON-FINAL ACTION WRITTEN 80814
May 10, 2006 ASSIGNED TO EXAMINER 80814
Apr. 15, 2006 NOTICE OF PSEUDO MARK MAILED
Apr. 14, 2006 NEW APPLICATION ENTERED IN TRAM
Maintenance Filings or Post Registration Information

Affidavit of Section 8 - Accepted
Continued Use:
Affidavit of Section 15 - Accepted
Incontestability:
TM Staff and Location Information

TM Staff Information - None
File Location
Current Location: TMEG LAW OFFICE 103 Date in Location: Dec. 16, 2013
Assignment Abstract Of Title Information

Summary
Total Assignments: 1 Registrant: KFC Corporation
Assignment 1 of 1
Conveyance: INTELLECTUAL PROPERTY SECURITY AGREEMENT
Reel/Frame: 5852/0200 Pages: 22
Date Recorded: Aug. 11, 2016
Supporting assignment-tm-5852-0200.pdf
Documents:
Assignor
Name: PIZZA HUT, LLC Execution Date: Jun. 16, 2016
Legal Entity Type: LIMITED LIABILITY COMPANY State or Country DELAWARE
Where Organized:
Name: KFC CORPORATION Execution Date: Jun. 16, 2016

Where Organized:
Assignee
Name: JPMORGAN CHASE BANK, N.A., AS COLLATERAL AGENT
Legal Entity Type: NATIONAL BANKING ASSOCIATION State or Country OHIO
Where Organized:
Address: IL11145/54/63, P.O. BOX 6026
CHICAGO, ILLINOIS 60680-6026
Correspondent
Correspondent JOANNA MCCALL
Name:
Correspondent 1025 VERMONT AVE NW, SUITE 1130
Address: NATIONAL CORPORATE RESEARCH, LTD
WASHINGTON, DC 20005
EXHIBIT 2
Mark: FINGER LICKIN' GOOD
US Serial Number: 85500760 Application Filing Dec. 21, 2011

Date:
US Registration 4601841 Registration Date: Sep. 09, 2014
Number:
Register: Principal
Mark Type: Trademark, Service Mark
Descriptor:
Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.
Status Date: Sep. 09, 2014
Publication Date: May 29, 2012 Notice of Jul. 24, 2012
Allowance Date:
Mark Information
Mark Literal FINGER LICKIN' GOOD
Elements:
Claim:
Type:

Claimed Ownership 1711937, 3035298, 3348337 and others
of US
Registrations:
Goods and Services



Class(es):
Basis: 1(a)
First Use: May 14, 2013 Use in Commerce: May 14, 2013
For: Cooked and prepared chicken sandwich for consumption on or off the premises
International 030 - Primary Class U.S Class(es): 046
Class(es):
Basis: 1(a)
For: Cooked and prepared chicken for consumption on or off the premises
Class(es):
Basis: 1(a)

Filed Use: No Currently Use: Yes Amended Use: No
Filed ITU: Yes Currently ITU: No Amended ITU: No

Owner Address: 1441 Gardiner Lane
Legal / Trademarks
Where Organized:
Attorney of Record
Correspondent
Correspondent Leanne Stendell
Legal / Trademarks
Phone: 972-338-7263 Fax: 972-338-7899
Prosecution History
Proceeding
Date Description
Number
Sep. 09, 2014 REGISTERED-PRINCIPAL REGISTER
Aug. 02, 2014 NOTICE OF ACCEPTANCE OF STATEMENT OF USE E-MAILED
Aug. 01, 2014 ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED
Jul. 31, 2014 STATEMENT OF USE PROCESSING COMPLETE 70565
Jul. 22, 2014 USE AMENDMENT FILED 70565
Jul. 22, 2014 TEAS STATEMENT OF USE RECEIVED
Feb. 14, 2014 NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED
Feb. 13, 2014 EXTENSION 3 GRANTED 70565
Jan. 24, 2014 EXTENSION 3 FILED 70565
Jan. 24, 2014 TEAS EXTENSION RECEIVED
Jul. 30, 2013 NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED
Jul. 29, 2013 EXTENSION 2 GRANTED 70565
Jul. 24, 2013 EXTENSION 2 FILED 70565
Jul. 24, 2013 TEAS EXTENSION RECEIVED
Feb. 06, 2013 CASE ASSIGNED TO INTENT TO USE PARALEGAL 70565
Jul. 24, 2012 NOA E-MAILED - SOU REQUIRED FROM APPLICANT
May 29, 2012 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
May 29, 2012 PUBLISHED FOR OPPOSITION
May 09, 2012 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
Apr. 25, 2012 LAW OFFICE PUBLICATION REVIEW COMPLETED 66213
Apr. 24, 2012 ASSIGNED TO LIE 66213
Apr. 04, 2012 APPROVED FOR PUB - PRINCIPAL REGISTER
Apr. 04, 2012 EXAMINER'S AMENDMENT ENTERED 88888
Apr. 04, 2012 NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED 6328
Apr. 04, 2012 EXAMINERS AMENDMENT E-MAILED 6328
Apr. 04, 2012 EXAMINERS AMENDMENT -WRITTEN 77658
Mar. 28, 2012 ASSIGNED TO EXAMINER 77658
Jan. 04, 2012 NOTICE OF PSEUDO MARK MAILED
Jan. 03, 2012 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
Dec. 24, 2011 NEW APPLICATION ENTERED IN TRAM

File Location
Current Location: PUBLICATION AND ISSUE SECTION Date in Location: Aug. 01, 2014

Summary
Assignment 1 of 1
Documents:
Assignor
Where Organized:

Where Organized:
Assignee
Where Organized:
Address: IL11145/54/63, P.O. BOX 6026
Correspondent
Name:
EXHIBIT 3
Mark: KFC FLG FINGER LICKIN' GOOD

Date:
US Registration 4601842 Registration Date: Sep. 09, 2014
Number:
Register: Principal
Mark Type: Trademark
Descriptor:
Status Date: Sep. 09, 2014
Publication Date: May 29, 2012 Notice of Jul. 24, 2012
Allowance Date:
Mark Information
Mark Literal KFC FLG FINGER LICKIN' GOOD
Elements:
Standard Character No
Claim:
Mark Drawing 3 - AN ILLUSTRATION DRAWING WHICH INCLUDES WORD(S)/ LETTER(S)/NUMBER(S)
Type:
Description of The mark consists of the letters "KFC", "FLG.", and words "FINGER LICKIN' GOOD" stylized and stacked within a circular-shaped
Mark: speech bubble.
Color(s) Claimed: Color is not claimed as a feature of the mark.
Design Search 01.15.17 - Balloons, thought or speech; Clouds, thought or speech; Thought or speech clouds
Code(s): 26.01.21 - Circles that are totally or partially shaded.

of US
Registrations:
Goods and Services


For: Cooked and prepared chicken sandwich for consumption on or off the premises
Class(es):
Basis: 1(a)
For: Cooked and prepared chicken for consumption on or off the premises
Class(es):
Basis: 1(a)


Legal / Trademarks
Where Organized:
Attorney of Record
Correspondent
Correspondent Leanne Stendell
Legal / Trademarks
Phone: 972-338-7263 Fax: 972-338-7899
Prosecution History
Proceeding
Date Description
Number
Sep. 09, 2014 REGISTERED-PRINCIPAL REGISTER
Aug. 02, 2014 NOTICE OF ACCEPTANCE OF STATEMENT OF USE E-MAILED
Aug. 01, 2014 ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED
Jul. 31, 2014 STATEMENT OF USE PROCESSING COMPLETE 70565
Jul. 22, 2014 USE AMENDMENT FILED 70565
Jul. 22, 2014 TEAS STATEMENT OF USE RECEIVED
Jul. 30, 2013 NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED
Jul. 29, 2013 EXTENSION 2 GRANTED 70565
Jul. 24, 2013 EXTENSION 2 FILED 70565
Jul. 24, 2013 TEAS EXTENSION RECEIVED
Feb. 06, 2013 CASE ASSIGNED TO INTENT TO USE PARALEGAL 70565
Jul. 24, 2012 NOA E-MAILED - SOU REQUIRED FROM APPLICANT
May 29, 2012 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
May 29, 2012 PUBLISHED FOR OPPOSITION
Apr. 25, 2012 LAW OFFICE PUBLICATION REVIEW COMPLETED 66213
Apr. 24, 2012 ASSIGNED TO LIE 66213
Apr. 04, 2012 EXAMINER'S AMENDMENT ENTERED 88888
Apr. 04, 2012 NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED 6328
Apr. 04, 2012 EXAMINERS AMENDMENT E-MAILED 6328
Apr. 04, 2012 EXAMINERS AMENDMENT -WRITTEN 77658
Mar. 28, 2012 ASSIGNED TO EXAMINER 77658
Jan. 04, 2012 NOTICE OF DESIGN SEARCH CODE AND PSEUDO MARK MAILED
Jan. 03, 2012 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM

File Location
Current Location: PUBLICATION AND ISSUE SECTION Date in Location: Aug. 01, 2014

Summary
Assignment 1 of 1
Documents:
Assignor
Where Organized:

Where Organized:
Assignee
Where Organized:
Address: IL11145/54/63, P.O. BOX 6026
Correspondent
Name:
EXHIBIT 4
Mark: FINGER LICKIN' GOOD

Date:
US Registration 4847782 Registration Date: Nov. 03, 2015
Number:
Filed as TEAS Yes Currently TEAS Yes
Plus: Plus:
Register: Principal
Mark Type: Trademark
Status Date: Nov. 03, 2015
Publication Date: Mar. 10, 2015 Notice of May 05, 2015
Allowance Date:
Mark Information
Mark Literal FINGER LICKIN' GOOD
Elements:
Claim:
Type:

of US
Registrations:
Goods and Services


For: Sauces
Class(es):
Basis: 1(a)


Louisville, KENTUCKY 40213
UNITED STATES
Where Organized:
Attorney of Record
Attorney Name: Leanne Stendell Docket Number: TM37559
Correspondent
Correspondent LEANNE STENDELL
Name/Address: YUM! BRANDS, INC.
7100 CORPORATE DRIVE
ATTN: LEGAL - TRADEMARKS
PLANO, TEXAS 75024
UNITED STATES
Phone: 972 338 7262 Fax: 972 338 7899
Prosecution History
Proceeding
Date Description
Number
Nov. 03, 2015 REGISTERED-PRINCIPAL REGISTER
Sep. 26, 2015 NOTICE OF ACCEPTANCE OF STATEMENT OF USE E-MAILED
Sep. 25, 2015 ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED
Sep. 24, 2015 STATEMENT OF USE PROCESSING COMPLETE 66530
Sep. 18, 2015 USE AMENDMENT FILED 66530
Sep. 24, 2015 CASE ASSIGNED TO INTENT TO USE PARALEGAL 66530
Sep. 18, 2015 TEAS STATEMENT OF USE RECEIVED
May 05, 2015 NOA E-MAILED - SOU REQUIRED FROM APPLICANT
Mar. 10, 2015 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
Mar. 10, 2015 PUBLISHED FOR OPPOSITION
Feb. 18, 2015 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
Feb. 02, 2015 LAW OFFICE PUBLICATION REVIEW COMPLETED 68552
Feb. 02, 2015 ASSIGNED TO LIE 68552
Jan. 12, 2015 APPROVED FOR PUB - PRINCIPAL REGISTER
Jan. 12, 2015 EXAMINER'S AMENDMENT ENTERED 88888
Jan. 12, 2015 NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED 6328
Jan. 12, 2015 EXAMINERS AMENDMENT E-MAILED 6328
Jan. 12, 2015 EXAMINERS AMENDMENT -WRITTEN 83189
Jan. 12, 2015 ASSIGNED TO EXAMINER 83189
Dec. 17, 2014 NOTICE OF PSEUDO MARK E-MAILED
Dec. 16, 2014 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
File Location
Current Location: PUBLICATION AND ISSUE SECTION Date in Location: Sep. 25, 2015

Summary
Assignment 1 of 1
Documents:
Assignor
Where Organized:

Where Organized:
Assignee
Where Organized:
Address: IL11145/54/63, P.O. BOX 6026
Correspondent
Name:
EXHIBIT 5
Mark: "IT'S FINGER LICKIN' GOOD"
US Serial Number: 86583854 Application Filing Apr. 01, 2015

Date:
US Registration 4952814 Registration Date: May 03, 2016
Number:
Filed as TEAS RF: Yes Currently TEAS RF: Yes
Register: Principal
Mark Type: Service Mark
Status Date: May 03, 2016
Publication Date: Jun. 16, 2015 Notice of Aug. 11, 2015
Allowance Date:
Mark Information
Mark Literal "IT'S FINGER LICKIN' GOOD"
Elements:
Claim:
Type:

of US
Registrations:
Goods and Services



Class(es):
Basis: 1(a)


Louisville, KENTUCKY 40213
UNITED STATES
Where Organized:
Attorney of Record
Attorney Name: Leanne Stendell Docket Number: TM82108
Correspondent
Correspondent LEANNE STENDELL
Name/Address: Yum Brands Inc
7100 Corporate Dr
Plano, TEXAS 75024-4100
UNITED STATES
Phone: 972 338 7263 Fax: 972 338 7899
Prosecution History
Proceeding
Date Description
Number
May 03, 2016 REGISTERED-PRINCIPAL REGISTER
Mar. 26, 2016 NOTICE OF ACCEPTANCE OF STATEMENT OF USE E-MAILED
Mar. 25, 2016 ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED
Mar. 10, 2016 STATEMENT OF USE PROCESSING COMPLETE 69302
Feb. 01, 2016 USE AMENDMENT FILED 69302
Mar. 05, 2016 CASE ASSIGNED TO INTENT TO USE PARALEGAL 69302
Mar. 05, 2016 CASE ASSIGNED TO INTENT TO USE PARALEGAL 76569
Feb. 01, 2016 TEAS STATEMENT OF USE RECEIVED
Aug. 11, 2015 NOA E-MAILED - SOU REQUIRED FROM APPLICANT
Jun. 16, 2015 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
Jun. 16, 2015 PUBLISHED FOR OPPOSITION
May 13, 2015 LAW OFFICE PUBLICATION REVIEW COMPLETED 73296
May 12, 2015 ASSIGNED TO LIE 73296
Apr. 19, 2015 ASSIGNED TO EXAMINER 73360
Apr. 11, 2015 NOTICE OF PSEUDO MARK E-MAILED
Apr. 10, 2015 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
Apr. 04, 2015 NEW APPLICATION ENTERED IN TRAM

File Location
Current Location: PUBLICATION AND ISSUE SECTION Date in Location: Mar. 25, 2016

Summary
Assignment 1 of 1
Documents:
Assignor
Where Organized:

Where Organized:
Assignee
Where Organized:
Address: IL11145/54/63, P.O. BOX 6026
Correspondent
Name:

KFC Petitions Trademark Office To Block Pittsford Businessman

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KFC Petitions Trademark Office To Block Pittsford Businessman

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

Attorney informa- Sabina A. Vayner

Goods/Services Affected by Opposition

Goods/Services Affected by Opposition

Grounds for Opposition

Marks Cited by Opposer as Basis for Opposition

U.S. Registration 4601841 Application Date 12/21/2011

U.S. Registration 4601842 Application Date 12/21/2011

U.S. Registration 4847782 Application Date 12/11/2014

U.S. Registration 4952814 Application Date 04/01/2015

Attachments 78857932#TMSN.png( bytes )

Signature /Sabina A. Vayner/

CONSOLIDATED NOTICE OF OPPOSITION

Opposer KFC Corporation, a State of Delaware corporation with a principal place of

(FINGER LAKING GOOD) (the Applications), each owned by Applicant Brian

1. KFC, founded in Corbin, Kentucky by Colonel Harland D. Sanders, operates,

and attractive food at competitive prices.

preferences and tastes, including beer.

(collectively, KFCs FINGER LICKIN GOOD Marks).

6. Representative examples of 2016 television advertising promoting the sale of

www.youtube.com/watch?v=RmXAFBGztqo (Ice Bath)

www.youtube.com/watch?v=LWj3NzcXdaU (Just a Phase)

7. As another example, KFCs 2015-2017 television advertising features KFCs

these marks to tout KFCs various products and services.

and the trade.

FINGER LICKIN GOOD Marks, including but not limited to:

Registration No. 4601841 of the FINGER LICKIN GOOD mark for

Registration No. 4847782 of the FINGER LICKIN GOOD mark for

of a broad scope of legal protection.

Serial No. 87087829 (the FINGER LAKING GOOD Mark).

stickers; bumper stickers;

clothing, namely, shirts, t-shirts, hats, visors, pants, shorts, sweatshirts,

barbecue dry rub;

wine; distilled spirits; hard cider;

arranging and conducting special events for commercial purposes; arranging

collectively as Applicants FLG Marks.)

Ground I: Likelihood of Confusion

date of Applicants FLG Marks.

FINGER LICKIN GOOD Marks and create a similar commercial impression.

on the goodwill associated with KFCs FINGER LICKIN GOOD Marks.

to be likely to cause confusion, or to cause mistake, or to deceive. Consumers are likely to

Ground II: Dilution of the Famous FINGER LICKIN GOOD Marks

date of Applicants FLG Marks.

KFCs famous FINGER LICKIN GOOD Marks.

of 15 U.S.C. 1052 and 1125(c).

[Signature on following page]

Attorneys for Opposer KFC Corporation

US Serial Number: 78857932 Application Filing Apr. 10, 2006

Related Properties Information

Goods and Services

Brackets [..] indicate deleted goods/services;

For: Restaurant services

Basis Information (Case Level)

Current Owner(s) Information

Maintenance Filings or Post Registration Information

TM Staff and Location Information

Assignment Abstract Of Title Information

Name: KFC CORPORATION Execution Date: Jun. 16, 2016

US Serial Number: 85500760 Application Filing Dec. 21, 2011

Related Properties Information

Goods and Services

Brackets [..] indicate deleted goods/services;

For: Restaurant services