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ESTTA Tracking number:
`
`ESTTA1357610
`
`Filing date:
`
`05/09/2024
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`92084825
`
`Party
`
`Correspondence
`address
`
`Defendant
`MATTEL, INC.
`
`MATTEL, INC.
`333 CONTINENTAL BOULEVARD
`TWR 15-1
`EL SEGUNDO, CA 90245
`UNITED STATES
`Primary email: brandassurance@mattel.com
`310-252-2000
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Answer
`
`Brian D. Wassom
`
`bwassom@wnj.com, dkeilch@wnj.com
`
`/Brian D. Wassom/
`
`05/09/2024
`
`Attachments
`
`Answer - Mattel - Shogun.pdf(882695 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Trademark Reg. No. 7,287,604,
`For the mark SHOGUN WARRIORS
`Registered on November 19, 2019
`
`TOYNAMI, INC.,
`
`Petitioner,
`
`
`
`Cancellation No. 92084825
`Registration No. 7287604
`
`v.
`
`MATTEL, INC.,
`
`Registrant.
`
`Mattel, Inc. (“Respondent”) through its counsel, WARNER NORCROSS + JUDD LLP, for its
`
`ANSWER
`
`Response to Petitioner’s Petition, states as follows:
`
`The Parties
`
`1.
`
`Petitioner is a corporation organized and existing under the laws of the state of
`
`California with a principal place of business at 1936 Kellogg Avenue, Carlsbad, CA 92008.
`
`RESPONSE: Denied for lack of knowledge.
`
`2.
`
`Registrant is a corporation organized under the laws of the state of Delaware with a
`
`principal place of business at 333 Continental Boulevard, TWR 15-1, El Segundo, CA 90245.
`
`RESPONSE: Admitted.
`
`

`

`Petitioner and Its Use of the SHOGUN WARRIORS Mark
`
`3.
`
`Petitioner uses the SHOGUN WARRIORS mark to promote its high-quality action
`
`figures, toy vehicles, and playsets for action figures and toy vehicles.
`
`RESPONSE: Denied for lack of knowledge.
`
`4.
`
`Petitioner began using the SHOGUN WARRIORS mark in connection with its
`
`provision of those goods to U.S. consumers in 2010. Since that time, petitioner has actively used
`
`the SHOGUN WARRIORS mark in connection with its action figures, toy vehicles, and playsets
`
`for action figures and toy vehicles through the U.S.
`
`RESPONSE: Denied for lack of knowledge.
`
`5.
`
`As a result of this use of the SHOGUN WARRIORS mark, Petitioner has established
`
`valuable trademark rights and goodwill in the SHOGUN WARRIORS mark.
`
`RESPONSE: Denied for lack of knowledge.
`
`6.
`
`To further solidify its rights in the SHOGUN WARRIORS mark, Petitioner
`
`obtained U.S. Trademark Reg. No. 3807636 which registered on June 22, 2010. Petitioner
`
`inadvertently allowed this registration to lapse as of December 22, 2020, but never intended to
`
`abandon use of the SHOGUN WARRIORS mark.
`
`RESPONSE: Denied for lack of knowledge.
`
`2
`
`

`

`7.
`
`Petitioner applied to re-register its SHOGUN WARRIORS mark on August 1, 2023
`
`with U.S. Trademark App. Ser. No. 98/112,386. On April 2, 2024, Petitioner received an Office
`
`action rejecting that application over U.S. Trademark Reg. No. 7,287,604.
`
`RESPONSE: Denied for lack of knowledge.
`
`Grounds for Cancelling the Registration
`
`8.
`
`Trademark App. Ser. No. 90/022,384 was filed by Registrant for a standard
`
`character version of the mark SHOGUN WARRIORS on June 26, 2020. That application
`
`proceeded to registration as Reg. No. 7,287,604 on January 23, 2024.
`
`RESPONSE: Admitted.
`
`9.
`
`According to the registration, Registrant uses the SHOGUN WARRIORS mark in
`
`connection with the following goods:
`
`Class 28: Toy figures and accessories therefor, toy action figures
`
`and accessories therefor.
`
`RESPONSE: Admitted.
`
`10.
`
`In the registration, Registrant claimed a date of first use of November 21, 2023.
`
`RESPONSE: Admitted.
`
`11.
`
`Petitioner’s actual, continuous, and continuing use of the SHOGUN WARRIORS
`
`mark in commerce began before Registrant filed the application for the SHOGUN WARRIORS
`
`mark and/or began using the SHOGUN WARRIORS mark in commerce.
`
`3
`
`

`

`RESPONSE: Denied as untrue.
`
`12.
`
`Registrant’s use and registration of the SHOGUN WARRIORS mark for the
`
`goods listed in its registrations is likely to cause confusion, mistake, and/or lead to deception as
`
`to the origin of Registrant’s goods in violation of Section 43(a) of the Lanham Act, 15 U.S.C. §
`
`1125(a).
`
`RESPONSE: Denied as untrue.
`
`13.
`
`The likelihood of confusion is apparent in this instance because Petition and
`
`Registrant use the same SHOGUN WARRIORS mark, as well as the fact that both parties’ marks
`
`are used in connection with action figures and accessories therefor.
`
`RESPONSE: Denied for lack of knowledge.
`
`14.
`
`Registrant’s use and registration of the SHOGUN WARRIORS mark is likely to
`
`result in confusion and substantial damage and injury to Petitioner. Persons familiar with
`
`Registrant’s SHOGUN WARRIORS mark are likely to believe that Registrant’s goods originate
`
`with, or are licensed, sponsored or approved by Petitioner. Any such confusion would inevitably
`
`result in loss of sales to Petitioner, and/or damage the goodwill and reputation that Petitioner has
`
`established in the SHOGUN WARRIORS mark.
`
`RESPONSE: Denied as untrue.
`
`4
`
`

`

`AFFIRMATIVE AND AMPLIFIED DEFENSES
`
`In addition to its arguments negating the elements of Petitioner’s claims, and any additional
`
`factual or legal grounds that may become apparent during the course of litigation, Respondent
`
`alleges the following:
`
`1.
`
`The Petition is barred by unclean hands and estoppel, in that Petitioner has publicly
`
`acknowledged (and continues to acknowledge to this day, see Exhibit A) that its SHOGUN
`
`WARRIORS products are inspired by, and derivative of, the SHOGUN WARRIORS brand of toys
`
`and related characters (and the goodwill created thereby) that Respondent first sold in the 1970s.
`
`Respondent still owns and is the beneficiary of the goodwill associated with these goods and
`
`characters.
`
`2.
`
`Respondent will have a Morehouse defense once Application Ser. No. 97170861
`
`for the SHOGUN WARRIORS mark in Class 41, which has been allowed, registers.
`
`Wherefore, Respondent respectfully requests that the Petition be denied.
`
`Date: May 9, 2024
`
`Respectfully submitted,
`
`By: /Brian D. Wassom/
`Brian D. Wassom
`Warner Norcross + Judd LLP
`12900 Hall Road, Suite 200
`Sterling Heights, MI 48313
`586.303.4139
`bwassom@wnj.com
`
`CERTIFICATE OF TRANSMITTAL AND SERVICE
`
`I hereby certify that on May 9, 2024, this correspondence is being electronically transmitted in PDF format
`to the Trademark Trial and Appeal Board through the Electronic System for Trademark Trials and Appeals
`(ESTTA). It is also being served on opposing counsel by means of email to the email address(es) on file
`with the TTAB in this matter.
`
`/Denise Keilch/
`
`5
`
`

`

`EXHIBIT A
`EXHIBIT A
`
`

`

`TTTEP)
`
`
`Find uson
`
`Facebook
`
`
`
`
`
`SHOGUN WARRIORS TM & © 2010 Toynami Inc, All Rights Reserved,
`
`
`
`Make way for the biggest collectibles on the block! Toynami’s SHOGUN WARRIORS
`are here! Giant vinyl action figures standing 60 centimeters in height, in the classic
`retro style of the originals!
`
`
`™ Copyright. 2011, Toynami-Inc,
`
`
`
`

`

`
`
`
`
`
`
`see mpgs Sp
`
`|
`
` Find uson
`
`Y flrtmi
`
`ben
`DAL
`AGIDIRAIN
`
`f Facebook
`
`
`
`
`
`F Pe PRODUCTI)I MHERE-2BUTS & CONTACTUSS; ie fj .
`
`AN FeriMesser
`Tippett ites Eta Eaayr
`
`ROY FOKKER'S VF-1S LIMITED EDITION
`SHOGUN WARRIORS ROBOTECH 24" RETRO FIGURE
`
`|
`
`‘Your favorite Robotech veritech now comes in a Jumbo format.
`Inspired by the 1970's Shogun Warriors toy line, Toynami is proud to present the Shogun Warriors Roy Fokker’s VF-15
`'4 Robotech Jumbo. Standing an impressive 24 inches tall, this figure comes with a spring loaded firing left fist and 3 points
`of articulation.
`
`S-=4s-lekoH! Sa ma
`|i Yi
`
`:
`
`The figure includes the iconic Robotech gun pod thatfires the inspired vintage red and white missiles from the 70's. Each
`figure comes with 4 missile that can also clip onto the inside of the wings.
`Limited edition to only 500 units in the wortd.
`Available on:
`
`back to main gallery
`
`& 1985-2024 Harmony Golc USA, Inc, All Rights Reserved. ROBOTECH® and associated names, characters: anc indicia are
`trademarks of Harmony Gold USA, Inc, All Rights Reserved,
`*Prototype shown. Actual product will vary.*
`22024, Toynami Inc
`
`

`

`
`
`Find uson
` i
`Facebook
`
`RICK HUNTER'S VF-1] LIMITED EDITION
`SHOGUN WARRIORS ROBOTECH 24" RETRO FIGURE
`
`
`
`
`Your favorite Robotech veritech now comesin a Jumbo format.
`
`Inspired by the 1970's Shogun Warriors toy line, Toynami is proud to present the Shogun Warriors Rick Hunter's VF-11
`
`)) Robotech Jumbo. Standing an impressive 24 inches tall, this figure comes with a spring loaded firing left fist and 3 points
`
`of articulation.
`
`
`
`
`
`
`The figure includes the iconic Robotech gun pod that fires the inspired vintage red and white missiles from the 70's. Each
`figure comes with 4 missile that can also clip onto the inside of the wings.
`Limited edition to only 500 units in the world.
`
`back to main gallery
`
`|
`
`
`
`© 1985-2023 Harmony Geld USA, Inc, All Rights Reserved. ROBOTECH® and asseciated names, characters and indicia are
`trademarks of Harmeny-Gold USA; Inc, All Rights Reserved,
`Toynami and the Toynami logo are registered trademarks of Toynami, Inc, All Rights Reserved, “Prototype shown. Actual
`product will vary,*
`© 2023, Toynami Inc,
`
`

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