Bob Marley Opposes Marley Gang PDF

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.
gov
ESTTA Tracking number:
Filing date:
ESTTA628838
09/23/2014
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
Fifty-Six Hope Road Music Limited
Granted to Date
of previous extension
09/24/2014
Address
Aquamarine House, Cable Beach

Nassau,
BAHAMAS
Name
Ky-Mani, Damian, Julian, Stephen, David Marley
Entity
Individual
Address
16115 SW 117th Avenue, Unit 21-A

Miami, FL 33177
UNITED STATES
Attorney information
Jesse Saivar
Greenberg Glusker Fields Claman & Machtinger LLP
1900 Avenue of the Stars, 21st Floor
Los Angeles, CA 90067
UNITED STATES
jsaivar@greenbergglusker.com, nshabani@greenbergglusker.com, ipmail@greenbergglusker.com Phone:310.553.3610
Citizenship
UNITED STATES
Applicant Information
Application No
86114638
Publication date
05/27/2014
Opposition Filing
Date
09/23/2014
Opposition Period Ends
09/24/2014
Applicant
S & M Media Group

4219 Apt E Yanceyville RD
Browns Summit, NC 27214
UNITED STATES
Goods/Services Affected by Opposition

Class 009. First Use: 0 First Use In Commerce: 0
All goods and services in the class are opposed, namely: Audio and video recordings featuring music
and artistic performances; Compact discs featuring music; Digital music systems that synchronizes
digital radio files stored on a home unit, a car unit, or portable unit and that may be backed up to an
internet depository; Downloadable MP3 files, MP3 recordings, on-line discussion board posts, webcasts, webinars and podcasts featuring music, audio books in the field of rap, and news broadcasts;
Downloadable ring tones, graphics and music via a global computer network and wireless devices;
Downloadable video recordings featuring music; Downloadable music via the internet and wireless
devices; Musical recordings; Musical video recordings; Visual recordings and audiovisual recordings
featuring music and animation
Grounds for Opposition

False suggestion of a connection
Trademark Act section 2(a)
Priority and likelihood of confusion
Trademark Act section 2(d)
Dilution
Trademark Act section 43(c)
Marks Cited by Opposer as Basis for Opposition

U.S. Registration
No.
3535883
Application Date
02/22/2007
Registration Date
11/25/2008
Foreign Priority
Date
NONE
Word Mark
THE MARLEY BROTHERS
Design Mark
Description of
Mark
NONE
Goods/Services
Class 041. First use: First Use: 2004/08/07 First Use In Commerce: 2004/08/07
Entertainment, namely, live performances by a musical band
U.S. Registration
No.
2349361
Application Date
05/21/1998
Registration Date
05/16/2000
Foreign Priority
Date
NONE
Word Mark
BOB MARLEY
Design Mark
Description of
Mark
NONE
Goods/Services
incense
novelty license plate of non-precious metal
plastic cases for beepers; magnets
jewelry; watches; medallions

greeting cards; stickers; stationery type portfolios; posters; postcards; postcard
books; songbooks; decals; trading cards; calendars; novels; bookmarks
backpacks; fanny packs; wallets; tote bags
mugs
textile wall hangings
T-shirts; thermal shirts; jackets; hats; caps; sweatshirts; ties; bandannas
ornamental cloth patches
smoking pipes
U.S. Registration
No.
3934085
Application Date
05/30/2010
Registration Date
03/22/2011
Foreign Priority
Date
NONE
Word Mark
BOB MARLEY
Design Mark
Description of
Mark
NONE
Goods/Services
Audio/visual recordings featuring music; downloadable ring tones for cell
phones, musical sound recordings; digital music downloadable from the Internet
U.S. Registration
No.
3692924
Application Date
03/09/2006
Registration Date
10/06/2009
Foreign Priority
Date
NONE
Word Mark
BOB MARLEY
Design Mark
Description of
Mark
NONE
Goods/Services
restaurant services, namely, preparation and service of food and beverages for
consumption
U.S. Registration
No.
4340082
Application Date
05/30/2010
Registration Date
05/21/2013
Foreign Priority
Date
NONE
Word Mark
BOB MARLEY
Design Mark
Description of
Mark
NONE
Goods/Services
cell phone accessories, namely, headsets, audio speakers for cell phones, and
hands free headsets; computer carrying cases; electronic docking and charging
stations for cell phones; electronic docking stations including speakers for portable electronic devices and media players;downloadable photo images; ear
buds; eyewear; eyewear cases; goggles for sports; headphones; loudspeakers;
and covers for cell phones and other mobile devices
U.S. Registration
No.
4572816
Application Date
02/19/2012
Registration Date
07/22/2014
Foreign Priority
Date
NONE
Word Mark
BOB MARLEY
Design Mark
Description of
Mark
NONE
Goods/Services
Musical instruments
U.S. Registration
No.
4440368
Application Date
02/19/2012
Registration Date
11/26/2013
Word Mark
BOB MARLEY
Foreign Priority
Date
NONE
Design Mark
Description of
Mark
NONE
Goods/Services
Guitar picks; musical instrument accessories, namely, guitar straps
U.S. Registration
No.
4425858
Application Date
05/30/2010
Registration Date
10/29/2013
Foreign Priority
Date
NONE
Word Mark
BOB MARLEY
Design Mark
Description of
Mark
NONE
Goods/Services
fruit-based food beverages; milk-based beverage containing coffee
U.S. Registration
No.
4422220
Application Date
05/30/2010
Registration Date
10/22/2013
Foreign Priority
Date
NONE
Word Mark
BOB MARLEY
Design Mark
Description of
Mark
NONE
Goods/Services
coffee; coffee beans; coffee-based beverages; espresso; herbal food beverages; tea; tea-based beverages; and unroasted coffee
U.S. Registration
No.
4422221
Application Date
05/30/2010
Registration Date
10/22/2013
Foreign Priority
Date
NONE
Word Mark
BOB MARLEY
Design Mark
Description of
Mark
NONE
Goods/Services
fruit drinks; fruit-flavored beverages;herbal juices; lemonade
U.S. Registration
No.
4375700
Application Date
12/11/2012
Registration Date
07/30/2013
Foreign Priority
Date
NONE
Word Mark
BOB MARLEY A TRIBUTE TO FREEDOM
Design Mark
Description of
Mark
The mark consists of a rendering of reggae legend "Bob Marley" set within an
oval design, with the words "BOB MARLEY" centered above the oval in stylized
upper-case letters, and the words "A TRIBUTE TO FREEDOM", in an italicized
font, centered between two stars within a rectangular banner below the oval.
Goods/Services
nightclub services, namely, arranging and conducting nightclub entertainment
events
Restaurant services, take-out restaurant services
U.S. Registration
No.
2820741
Application Date
08/19/2002
Registration Date
03/09/2004
Foreign Priority
Date
NONE
Word Mark
BOB MARLEY AND THE WAILERS
Design Mark
Description of
Mark
NONE
Goods/Services
Series of sound and video recordings featuring music and downloadable sound
andvideo recordings featuring music
T-shirts, thermal shirts, [ jackets, ] hats, caps, sweatshirts [, ties, bandanas ]
U.S. Registration
No.
3849342
Application Date
05/17/2009
Registration Date
09/21/2010
Foreign Priority
Date
NONE
Word Mark
BOB MARLEY AND THE WAILERS
Design Mark
Description of
Mark
NONE
Goods/Services
All purpose carrying bags
U.S. Registration
No.
4222036
Application Date
05/03/2012
Registration Date
10/09/2012
Foreign Priority
Date
NONE
Word Mark
MARLEY
Design Mark
Description of
Mark
NONE
Goods/Services
Headphones; ear buds; audio speakers; electronic docking stations; boom
boxes; downloadable video recordings featuring music, artistic performances,
and information about audio equipment; downloadable electronic newsletters in
the field ofentertainment and audio equipment
U.S. Registration
No.
4333844
Application Date
05/03/2012
Registration Date
05/14/2013
Foreign Priority
Date
NONE
Word Mark
MARLEY
Design Mark
Description of
Mark
NONE
Goods/Services
Entertainment services, namely, providing a website featuring information relating to music tours and live stage eventsrelating thereto; nondownloadable
videorecordings featuring music, and artistic performances; organizing and conducting music tours; providing online electronic newsletters delivered by email in
thefield of entertainment and audio equipment
U.S. Registration
No.
4394278
Application Date
04/14/2009
Registration Date
09/03/2013
Foreign Priority
Date
NONE
Word Mark
MARLEY
Design Mark
Description of
Mark
NONE
Goods/Services
Clothing, namely, shirts and headwear
U.S. Registration
No.
4222035
Application Date
05/03/2012
Registration Date
10/09/2012
Foreign Priority
Date
NONE
Word Mark
MMARLEY
Design Mark
Description of
Mark
The mark consists of a caret centered between the peaks of a stylized capital
"M" all centered above the word "MARLEY".
Goods/Services
Headphones; ear buds; audio speakers; electronic docking stations; boom
boxes; downloadable video recordings featuring music, artistic performances,
and information about audio equipment
U.S. Registration
No.
4333843
Application Date
05/03/2012
Registration Date
05/14/2013
Foreign Priority
Date
NONE
Word Mark
MMARLEY
Design Mark
Description of
Mark
The mark consists of a caret centered between the peaks of a stylized capital
"M", all centered above the word "MARLEY".
Goods/Services
Entertainment services, namely, providing a website featuring information relating to music tours and live stage eventsrelating thereto; nondownloadable
videorecordings featuring music, and artistic performances; organizing and conducting music tours; providing online electronic newsletters delivered by email in
thefield of entertainment and audio equipment
U.S. Registration
No.
4150381
Application Date
05/05/2008
Registration Date
05/29/2012
Foreign Priority
Date
NONE
Word Mark
MARLEY COFFEE
Design Mark
Description of
Mark
NONE
Goods/Services
greeting cards, blank journals, bumper stickers, calendars, and stickers
U.S. Registration
No.
4242186
Application Date
05/05/2008
Registration Date
11/13/2012
Foreign Priority
Date
NONE
Word Mark
MARLEY COFFEE
Design Mark
Description of
Mark
NONE
Goods/Services
Coffee cups, coffee mugs, travel mugs and beverageware
U.S. Registration
No.
4158045
Application Date
05/05/2008
Registration Date
06/12/2012
Foreign Priority
Date
NONE
Word Mark
MARLEY COFFEE
Design Mark
Description of
Mark
NONE
Goods/Services
Clothing, namely, shirts, aprons, sweatshirts, underwear, infant wear; sleepwear; footwear; headwear
U.S. Registration
No.
3871574
Application Date
05/05/2008
Registration Date
11/02/2010
Foreign Priority
Date
NONE
Word Mark
MARLEY COFFEE
Design Mark
Description of
Mark
NONE
Goods/Services
Clothing, namely, T-shirts and zipperedpull-over jackets
U.S. Registration
No.
4254177
Application Date
05/05/2008
Registration Date
12/04/2012
Foreign Priority
Date
NONE
Word Mark
MARLEY COFFEE
Design Mark
Description of
Mark
NONE
Goods/Services
Coffee, coffee-based beverages, espresso, tea, coffee beans, unroasted coffee
U.S. Registration
No.
4328523
Application Date
05/05/2008
Registration Date
04/30/2013
Foreign Priority
Date
NONE
Word Mark
MARLEY COFFEE
Design Mark
Description of
Mark
NONE
Goods/Services
Unprocessed coffee
U.S. Registration
No.
4187013
Application Date
05/05/2008
Registration Date
08/07/2012
Foreign Priority
Date
NONE
Word Mark
MARLEY COFFEE
Design Mark
Description of
Mark
NONE
Goods/Services
Retail store services featuring coffee,tea, beverageware, coffee makers, coffee
grinders, and espresso makers, and beans
U.S. Registration
No.
3778736
Application Date
05/05/2008
Registration Date
04/20/2010
Foreign Priority
Date
NONE
Word Mark
MARLEY COFFEE
Design Mark
Description of
Mark
NONE
Goods/Services
Coffee roasting and processing
U.S. Registration
No.
3612800
Application Date
08/18/2006
Registration Date
04/28/2009
Foreign Priority
Date
NONE
Word Mark
MARLEY RESORT & SPA
Design Mark
Description of
Mark
NONE
Goods/Services
Hotel services, namely, serving food and drinks and providing temporary accommodations and lodging
U.S. Registration
No.
4044256
Application Date
02/01/2011
Registration Date
10/25/2011
Foreign Priority
Date
NONE
Word Mark
HOUSE OF MARLEY MARETT TSEHAI DAM
Design Mark
Description of
Mark
The mark consists of a crest design of two heraldic lions facing forward, one of
which is resting its paw on a foil, while both are holding an ornate shield depicting a star and cross design between them, having a bejeweled crown above
theshield, a ribbon and additional ornamentation below the shield with the words
"MARETT TSEHAI DAM" inside the ribbon, and the words "HOUSE OF MARLEY" centered at the bottom of the design.
Goods/Services
Lamps
U.S. Registration
No.
4044257
Application Date
02/01/2011
Registration Date
10/25/2011
Foreign Priority
Date
NONE
Word Mark
Design Mark
Description of
Mark
Goods/Services
Clocks
U.S. Registration
No.
4044258
Application Date
02/01/2011
Registration Date
10/25/2011
Foreign Priority
Date
NONE
Word Mark
Design Mark
Description of
Mark
Goods/Services
Posters, calendars, blank journals, notebooks, folders, pencil pouches, stickers,
and iron-on transfers
U.S. Registration
No.
4044259
Application Date
02/01/2011
Registration Date
10/25/2011
Foreign Priority
Date
NONE
Word Mark
Design Mark
Description of
Mark
Goods/Services
Wallets
U.S. Registration
No.
4044260
Application Date
02/01/2011
Registration Date
10/25/2011
Foreign Priority
Date
NONE
Word Mark
Design Mark
Description of
Mark
Goods/Services
Plastic key chains; mirrors
Beverage glassware; beverage mugs
U.S. Registration
No.
4044261
Application Date
02/01/2011
Registration Date
10/25/2011
Foreign Priority
Date
NONE
Word Mark
Design Mark
Description of
Mark
Goods/Services
Bed or throw blankets; fabric banners
U.S. Registration
No.
4044262
Application Date
02/01/2011
Registration Date
10/25/2011
Foreign Priority
Date
NONE
Word Mark
Design Mark
Description of
Mark
Goods/Services
Clothing, namely, shirts, t-shirts, tank tops, board shorts, and hooded
shirts;footwear; headwear; and belts
U.S. Registration
No.
4044263
Application Date
02/01/2011
Registration Date
10/25/2011
Foreign Priority
Date
NONE
Word Mark
Design Mark
Description of
Mark
Goods/Services
Ornamental novelty buttons
U.S. Registration
No.
4044264
Application Date
02/01/2011
Registration Date
10/25/2011
Foreign Priority
Date
NONE
Word Mark
Design Mark
Description of
Mark
Goods/Services
Jigsaw puzzles, puzzle cubes, and snowboards
U.S. Registration
No.
4044265
Application Date
02/01/2011
Registration Date
10/25/2011
Foreign Priority
Date
NONE
Word Mark
Design Mark
Description of
Mark
Goods/Services
Lighters for smokers
Attachments
77113202#TMSN.png( bytes )
Notice of Opposition - MARLEY GANG.pdf(1550567 bytes )
Notice of Opposition - MARLEY GANG (based on THE MARLEY BROTHERS).pdf(130808 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 First Class Mail on this date.
Signature
/natashashabani/
Name
Natasha Shabani
Date
09/23/2014
Attorney Docket No.: 28217-00102

In re Matter of Application No. 86/114,638
for the mark: MARLEY GANG
Opposition No. __________________
Fifty-Six Hope Road Music Limited,
NOTICE OF OPPOSITION
Opposer,
Mark: MARLEY GANG
v.
Serial No. 86/114,638
S & M Media Group, LLC,

Applicant.
SUBMITTED ELECTRONICALLY
Commissioner for Trademarks
ATTN: Trademark Trial and Appeal Board P.O. Box 1451
Alexandria, Virginia 22313-1451
Dear Commissioner:
Opposer, Fifty-Six Hope Road Music Limited, a Bahamas International Business
Company (Opposer), having its principal place of business at Aquamarine House, Cable
Beach, Nassau, Bahamas, believes that it will be damaged by the registration of the mark
MARLEY GANG, as shown in U.S. Application Serial No. 86/114,638 (the Application), and
hereby opposes its registration on the following grounds:
FACTUAL BACKGROUND AS TO OPPOSER
1.
Opposer is owned and operated by the majority of the children and widow of the
world-renowned reggae artist, Bob Marley, and is the owner of all intellectual property rights in
28217-00102/2256104.1
the name and likeness of Bob Marley, as well as those derived from the musical legacy of Bob
Marley.
2.
Bob Marley was born on the Caribbean island of Jamaica and is well-known for
his roots in the Caribbean.

3.
Opposer first used the mark BOB MARLEY at least as early as 1970 for in
Class 9 for audio/visual recordings featuring music; downloadable ring tones for cell phones,
musical sound recordings; digital music downloadable from the Internet. Such date of first use
precedes Applicants filing date.
4.
Opposer owns the trademark BOB MARLEY (Reg. No. 2,349,361) in Classes 3,
6, 9, 14, 16, 18, 21, 24, 25 and 26; the trademark BOB MARLEY (Reg. No. 3,934,085) in
Class 9 for audio/visual recordings featuring music; downloadable ring tones for cell phones,
musical sound recordings; digital music downloadable from the Internet; the trademark BOB
MARLEY (Reg. No. 3,692,924) in Class 43 for restaurant services, namely, preparation and
service of food and beverages for consumption; the trademark BOB MARLEY (Reg. No.
4,340,082) in Class 9 for cell phone accessories, namely, headsets, audio speakers for cell
phones, and hands free headsets; computer carrying cases; electronic docking and charging
stations for cell phones; electronic docking stations including speakers for portable electronic
devices and media players; downloadable photo images; ear buds; eyewear; eyewear cases;
goggles for sports; headphones; loudspeakers; and covers for cell phones and other mobile
devices; the trademark BOB MARLEY (Reg. No. 4,572,816) in Class 15 for musical
instruments; the trademark BOB MARLEY (Reg. 4,440,368) in Class 15 for guitar picks;
musical instrument accessories, namely guitar straps; the trademark BOB MARLEY (Reg. No.
28217-00102/2256104.1
4,425,858) in Class 29 for fruit-based food beverages, milk-based beverage containing coffee;
the trademark BOB MARLEY (Reg. No. 4,422,220) in Class 30 for coffee; coffee beans; coffeebased beverages; espresso; herbal food beverages; tea; tea-based beverages; and unroasted
coffees; the trademark BOB MARLEY (Reg. No. 4,422,221) in Class 32 for fruit drinks, fruitflavored beverages; herbal juices; lemonade; the trademark BOB MARLEY A TRIBUTE TO
FREEDOM & Design (Reg. No, 4,375,700) in Class 41 for nightclub services, namely,
arranging and conducting nightclub entertainment events, and Class 43 for restaurant services;
take-out restaurant services; the trademark BOB MARLEY AND THE WAILERS (Reg. No.
2,820,741) in Class 9 for series of sound and video recordings featuring music and downloadable
sound and video recordings featuring music, and Class 25 for T-shirts, thermal shirts, hats, caps,
sweatshirts; the trademark BOB MARLEY AND THE WAILERS (Reg. No. 3,849,342) in Class
18 for all-purpose carrying bags; the trademark MARLEY (Reg. No. 4,222,036) in Class 9 for
headphones; ear buds; audio speakers; electronic docking stations; boom boxes; downloadable
video recordings featuring music, artistic performances, and information about audio equipment;
downloadable electronic newsletters in the field of entertainment and audio equipment; the
trademark MARLEY (Reg. No. 4,333,844) in Class 41 for entertainment services, namely,
providing a website featuring information relating to music tours and live stage events relating
thereto; nondownloadable video recordings featuring music, and artistic performances;
organizing and conducting music tours; providing online electronic newsletters delivered by
email in the field of entertainment and audio equipment; the trademark MARLEY (Reg. No.
4,394,278) in Class 25 for clothing, namely, shirts and headwear; the trademark M MARLEY &
Design (Reg. No. 4,222,035) in Class 9 for headphones; ear buds; audio speakers; electronic
docking stations; boom boxes; downloadable video recordings featuring music, artistic
28217-00102/2256104.1
performances, and information about audio equipment; the trademark M MARLEY & Design
(Reg. No. 4,333,843) in Class 41 for entertainment services, namely, providing a website
featuring information relating to music tours and live stage events relating thereto;
nondownloadable video recordings featuring music, and artistic performances; organizing and
conducting music tours; providing online electronic newsletters delivered by email in the field of
entertainment and audio equipment; the trademark MARLEY COFFEE (Reg. No. 4,150,381) in
Class 16 for greeting cards, blank journals, bumper stickers, calendars, and stickers; the
trademark MARLEY COFFEE (Reg. No. 4,242,186) in Class 21 for coffee cups, coffee mugs,
travel mugs and beverageware; the trademark MARLEY COFFEE (Reg. No. 4,158,045) in Class
25 for clothing, namely, shirts, aprons, sweatshirts, underwear, infant wear; sleepwear; footwear;
headwear; the trademark MARLEY COFFEE (Reg. No. 3,871,574) in Class 25 for clothing,
namely, t-shirts and zippered pull-over jackets; the trademark MARLEY COFFEE (Reg. No.
4,254,177) in Class 30 for coffee, coffee-based beverages, espresso, tea, coffee beans, unroasted
coffee; the trademark MARLEY COFFEE (Reg. No. 4,328,523) in Class 31 for unprocessed
coffee; the trademark MARLEY COFFEE (Reg. No. 4,187,013) in Class 35 for retail store
services featuring coffee, tea, beverageware, coffee makers, coffee grinders, and espresso
makers, and beans; the trademark MARLEY COFFEE (Reg. No. 3,778,736) in Class 40 for
coffee roasting and processing; the trademark MARLEY RESORT & SPA (Reg. No. 3,612,800)
in Class 43 for hotel services, namely, serving food and drinks and providing temporary
accommodations and lodging; the trademark HOUSE OF MARLEY MARETT TSEHAI DAM
& Design (Reg. No. 4,044,256) in Class 11 for lamps; the trademark HOUSE OF MARLEY
MARETT TSEHAI DAM & Design (Reg. No. 4,044,257) in Class 14 for clocks; the trademark
HOUSE OF MARLEY MARETT TSEHAI DAM & Design (Reg. No. 4,044,258) in Class 16
28217-00102/2256104.1
for posters, calendars, blank journals, notebooks, folders, pencil pouches, stickers, and iron-on
transfers; the trademark HOUSE OF MARLEY MARETT TSEHAI DAM & Design (Reg. No.
4,044,259) in Class 18 for wallets; the trademark HOUSE OF MARLEY MARETT TSEHAI
DAM & Design (Reg. No. 4,044,260) in Class 20 for plastic key chains and mirrors, and in Class
21 for beverage glassware and beverage mugs; the trademark HOUSE OF MARLEY MARETT
TSEHAI DAM & Design (Reg. No. 4,044,261) in Class 24 for bed or throw blankets, and fabric
banners; the trademark HOUSE OF MARLEY MARETT TSEHAI DAM & Design (Reg. No.
4,044,262) in Class 25 for clothing, namely, shirts, t-shirts, tank tops, board shorts, and hooded
shirts; footwear; headwear; and belts; the trademark HOUSE OF MARLEY MARETT TSEHAI
DAM & Design (Reg. No. 4,044,263) in Class 26 for ornamental novelty buttons; the trademark
HOUSE OF MARLEY MARETT TSEHAI DAM & Design (Reg. No. 4,044,264) in Class 28
for jigsaw puzzles, puzzle cubes, and snowboards; the trademark HOUSE OF MARLEY
MARETT TSEHAI DAM & Design (Reg. No. 4,044,265) in Class 34 for lighters for smokers
(hereinafter collectively referred to as the MARLEY Marks), and all other rights associated
with goods and services offered under the MARLEY Marks (the Marley Goods and Services).
True and correct copies of the registrations of the MARLEY Marks are attached hereto as
Exhibit A.
5.
Opposer first used the mark BOB MARLEY at least as early as 1990 for greeting
cards, stickers, portfolios, postcards, postcard books, songbooks, decals, trading cards, calendars,
novels and bookmarks in Class 16; for textile wall hangings in Class 24; for t-shirts, thermal
shirts, jackets, hats, caps, sweatshirts, ties and bandannas in Class 25; and for ornamental cloth
patches in Class 26. Such date of first use precedes Applicants filing date.
28217-00102/2256104.1
6.
Opposer first used the mark BOB MARLEY at least as early as 1992 for
backpacks, fanny packs, wallets and tote bags in Class 18. Such date of first use precedes
Applicants filing date.
7.
Opposer first used the mark BOB MARLEY at least as early as 1994 for jewelry,
watches and medallions in Class 14. Such date of first use precedes Applicants filing date.
8.
Opposer first used the mark BOB MARLEY at least as early as 1995 for novelty
license plates in Class 6 and for mugs in Class 21. Such date of first use precedes Applicants
filing date.
9.
Opposer first used the mark BOB MARLEY at least as early as 1996 for incense
in Class 3, and for plastic cases for beepers and magnets in Class 9. Such date of first use
10.
Opposer first used the mark BOB MARLEY at least as early as February 6, 1999
for restaurant services, namely, preparation and service of food and beverages for consumption
in Class 43. Such date of first use precedes Applicants filing date.
11.
Opposer first used the mark BOB MARLEY at least as early as July 27, 2011 for
cell phone accessories, namely, headsets, audio speakers for cell phones, and hands free
headsets; computer carrying cases; electronic docking and charging stations for cell phones;
electronic docking stations including speakers for portable electronic devices and media players;
downloadable photo images; ear buds; eyewear; eyewear cases; goggles for sports; headphones;
loudspeakers; and covers for cell phones and other mobile devices in Class 9. Such date of first
use precedes Applicants filing date.
28217-00102/2256104.1
12.
Opposer first used the mark BOB MARLEY at least as early as March 31, 2008
for musical instruments in Class 15. Such date of first use precedes Applicants filing date.
13.
Opposer first used the mark BOB MARLEY at least as early as April 4, 2011 for
guitar picks; musical instrument accessories, namely guitar straps in Class 15. Such date of first
14.
fruit-based food beverages, milk-based beverage containing coffee in Class 29. Such date of first
15.
coffee; coffee beans; coffee-based beverages; espresso; herbal food beverages; tea; tea-based
beverages; and unroasted coffees in Class 30. Such date of first use precedes Applicants filing
date.
16.
Opposer first used the mark BOB MARLEY A TRIBUTE TO FREEDOM &
Design at least as early as February 6, 1999 for nightclub services, namely, arranging and
conducting nightclub entertainment events in Class 41, and for restaurant services; take-out
restaurant services in Class 43. Such date of first use precedes Applicants filing date.
17.
Opposer first used the mark BOB MARLEY AND THE WAILERS at least as
early as 1973 for sound and video recordings in Class 9, and for t-shirts, thermal shirts, jackets,
hats, caps, sweatshirts, ties, and bandannas in Class 25. Such date of first use precedes
28217-00102/2256104.1
18.
Opposer first used the mark BOB MARLEY AND THE WAILERS at least as
early as January 2009 for all purpose carrying bags in Class 18. Such date of first use precedes
19.
Opposer first used the mark MARLEY at least as early as July 27, 2011 for
headphones; ear buds; audio speakers; electronic docking stations; boom boxes; downloadable
video recordings featuring music, artistic performances, and information about audio equipment;
downloadable electronic newsletters in the field of entertainment and audio equipment in
Class 9. Such date of first use precedes Applicants filing date.
20.
Opposer first used the mark MARLEY at least as early as January 2011 for
entertainment services, namely, providing a website featuring information relating to music tours
and live stage events relating thereto; nondownloadable video recordings featuring music, and
artistic performances; organizing and conducting music tours; providing online electronic
newsletters delivered by email in the field of entertainment and audio equipment in Class 41.
Such date of first use precedes Applicants filing date.
21.
Opposer first used the mark MARLEY at least as early as February 2003 for
clothing, namely, shirts and headwear in Class 25. Such date of first use precedes Applicants
filing date.
22.
Opposer first used the mark M MARLEY & Design at least as early as July 27,
2011 for headphones; ear buds; audio speakers; electronic docking stations; boom boxes;
downloadable video recordings featuring music, artistic performances, and information about
audio equipment in Class 9. Such date of first use precedes Applicants filing date.
28217-00102/2256104.1
23.
Opposer first used the mark M MARLEY & Design at least as early as July 27,
2011 for entertainment services, namely, providing a website featuring information relating to
music tours and live stage events relating thereto; nondownloadable video recordings featuring
music, and artistic performances; organizing and conducting music tours; providing online
electronic newsletters delivered by email in the field of entertainment and audio equipment in
24.
Opposer first used the mark MARLEY COFFEE at least as early as December 21,
2011 for greeting cards, blank journals, bumper stickers, calendars, and stickers in Class 16.
25.
Opposer first used the mark MARLEY COFFEE at least as early as December 21,
2011 for clothing, namely, shirts, aprons, sweatshirts, underwear, infant wear; sleepwear;
footwear; headwear in Class 25. Such date of first use precedes Applicants filing date.
26.
Opposer first used the mark MARLEY COFFEE at least as early as May 28, 2009
for clothing, namely, T-shirts and zippered pull-over jackets in Class 25. Such date of first use
27.
Opposer first used the mark MARLEY COFFEE at least as early as April 2010
for unprocessed coffee in Class 31. Such date of first use precedes Applicants filing date.
28.
Opposer first used the mark MARLEY COFFEE at least as early as April 22,
2009 for retail store services featuring coffee, tea, beverageware, coffee makers, coffee grinders,
and espresso makers, and beans in Class 35. Such date of first use precedes Applicants filing
date.
28217-00102/2256104.1
29.
Opposer first used the mark MARLEY COFFEE at least as early as April 22,
2009 for coffee roasting and processing in Class 40. Such date of first use precedes Applicants
filing date.
30.
Opposer first used the mark MARLEY RESORT & SPA at least as early as
July 4, 2008 for hotel services, namely, serving food and drinks and providing temporary
accommodations and lodging in Class 43. Such date of first use precedes Applicants filing date.
31.
Opposer first used the mark HOUSE OF MARLEY MARETT TSEHAI DAM &
Design at least as early as September 2009 for lamps in Class 11. Such date of first use precedes
32.
Design at least as early as December 2009 for clocks in Class 14. Such date of first use precedes
33.
Design at least as early as January 2010 for posters, calendars, blank journals, notebooks,
folders, pencil pouches, stickers, and iron-on transfers in Class 16. Such date of first use
34.
Design at least as early as November 2010 for wallets in Class 18. Such date of first use
35.
Design at least as early as November 2009 for plastic key chains and mirrors in Class 20, and at
28217-00102/2256104.1
10
least as early as November 2009 for beverage glassware and beverage mugs in Class 21. Such
dates of first use precede Applicants filing date.
36.
Design at least as early as January 2010 for bed or throw blankets and fabric banners in Class 24.
37.
Design at least as early as December 2009 for clothing, namely, shirts, t-shirts, tank tops, board
shorts, and hooded shirts; footwear; headwear; and belts in Class 25. Such date of first use
38.
Design at least as early as August 2010 for ornamental novelty buttons in Class 26. Such date of
first use precedes Applicants filing date.
39.
Design at least as early as October 2009 for jigsaw puzzles, puzzle cubes, and snowboards in
40.
Design at least as early as September 2010 for lighters for smokers in Class 34. Such date of
41.
The Marley Goods and Services have been favorably received and are otherwise
recognized by the consuming public and are associated with Opposer and the late musical
legend, Bob Marley.
28217-00102/2256104.1
11
42.
The MARLEY Marks are advertised and promoted together, in whole or in part,
and constitute a family of trademarks.

FACTUAL BACKGROUND REGARDING THE APPLICATION
43.
On November 9, 2013, Applicant S & M Media Group, LLC (Applicant),
having a place of business at 4219 Apt E, Yanceyville Rd., Browns Summit, NC 27214, filed the
Application seeking registration, on an intent-to-use basis, of MARLEY GANG for, Audio and
video recordings featuring music and artistic performances; Compact discs featuring music;
Digital music systems that synchronizes digital radio files stored on a home unit, a car unit, or
portable unit and that may be backed up to an internet depository; Downloadable MP3 files, MP3
recordings, on-line discussion board posts, webcasts, webinars and podcasts featuring music,
audio books in the field of rap, and news broadcasts; Downloadable ring tones, graphics and
music via a global computer network and wireless devices; Downloadable video recordings
featuring music; Downloadable music via the internet and wireless devices; Musical recordings;
Musical video recordings; Visual recordings and audiovisual recordings featuring music and
animation in Class 9.
44.
The Application was published for opposition in the Official Gazette on May 27,
2014. Opposer was granted a thirty-day extension and a sixty-day extension of time to oppose
the Application.
45.
Applicant appears to be making use in commerce of MARLEY GANG in
connection with a musical group.

FIRST GROUND LIKELIHOOD OF CONFUSION
46.
Opposer incorporates the allegations contained in Paragraphs 1 to 45 herein.
28217-00102/2256104.1
12
47.
Applicants proposed mark is similar in sound, appearance and meaning and is
confusingly similar to Opposers MARLEY Marks. Further, the goods and services to be offered
by Applicant are identical in some instances and similar and related in other instances to those
offered under Opposers MARLEY Marks.
48.
Applicants mark is likely to cause confusion, mistake, or deception as to the
source, origin, affiliation, connection or association of Applicants goods and services offered or
to be offered under the MARLEY GANG mark.
SECOND GROUND LIKELIHOOD OF DILUTION
49.
50.
The MARLEY Marks are inherently distinctive and have acquired secondary
meaning and are associated with Opposer and Bob Marley. The MARLEY Marks are famous
and distinctive and Bob Marley is famous within the meaning of the Federal Trademark Dilution
Act. Applicant filed the Application after the MARLEY Marks and Bob Marley had become
famous, and Applicant seeks to commercially use the applied-for mark MARLEY GANG.
51.
The mark shown in the Application is likely to dilute Opposers MARLEY
Marks.
THIRD GROUND FALSE ASSOCIATION WITH BOB MARLEY
52.
53.
The name and mark MARLEY is associated with Bob Marley and Opposer. Bob
Marley is and has been enormously famous and world renowned for many years.
28217-00102/2256104.1
13
54.
Opposers MARLEY Marks were used prior to Applicants filing date of the
application to register MARLEY GANG.

55.
Applicants proposed mark is the same or a close approximation of, as Bob
Marleys name and trademark, which was previously used by and associated with Opposer and
Bob Marley. The name and mark MARLEY is recognized as such, in that it uniquely and
unmistakably points to Opposer and/or Bob Marley. Neither Opposer nor Bob Marley is
connected with the goods or services sold, to be sold, offered, or to be offered by Applicant
under the MARLEY GANG mark; and the fame and reputation of Opposer and Bob Marley is of
such a nature that a connection with Opposer and Bob Marley is presumed when Applicants
MARLEY GANG mark is used on or with Applicants goods and services.
56.
The registration of the MARLEY GANG mark will falsely suggest a connection,
association, or sponsorship with Opposer and/or Bob Marley. Consumers will erroneously
believe that Applicants goods and services are licensed or sponsored by, or otherwise
connected, affiliated, or associated with, Opposer and/or Bob Marley.
DAMAGE TO OPPOSER
57.
As a result of all of the foregoing, the maturation of the Application into a
registration would (a) cause a likelihood of confusion, mistake, or deception as to the source,
origin, affiliation, connection, or association of Opposers MARLEY Goods and Services and
Applicants MARLEY GANG goods and services, (b) cause a likelihood of dilution of the
MARLEY Marks, and (c) falsely suggest a connection or association with Bob Marley and/or
Opposer.
28217-00102/2256104.1
14
58.
Opposer would be damaged by the registration of the mark shown in the
Application, in that such registration would give Applicant a prima facie exclusive right to the
use of MARLEY GANG, despite the likelihood of confusion, mistake, or deception, likelihood
of dilution, and likelihood of false connection or association with Bob Marley described above,
and will allow Applicant to trade on Opposers existing goodwill in the MARLEY Marks.
PRAYER
WHEREFORE, Opposer prays that this Opposition be sustained in favor of Opposer, that
the Application be rejected, and that registration of the Application be refused.
Please charge the requisite $300 opposition filing fee and any additional amounts to
Deposit Account No. 50-1833.
Dated: September 23, 2014
Respectfully submitted,
Jesse J. Saivar
Natasha Shabani
GREENBERG GLUSKER FIELDS
CLAMAN & MACHTINGER LLP
Los Angeles, California 90067
Telephone: (310) 553-3610
Facsimile: (310) 553-0687
E-mail: jsaivar@greenbergglusker.com;
nshabani@greenbergglusker.com;
ipmail@greenbergglusker.com
Attorneys for Opposer
Fifty-Six Hope Road Music Limited
28217-00102/2256104.1
15
CERTIFICATE OF SERVICE
The undersigned hereby certifies that a true and correct copy of the foregoing NOTICE OF
OPPOSITION was served on Applicant on September 24, 2014 by delivery via first class mail to
applicant at:
Antonio Spears
S & M Media Group
4219 Apt E, Yanceyville Rd.
Browns Summit, North Carolina 27214
___________________________________
Natasha Shabani
28217-00102/2256104.1
16
Attorney Docket No.: 28217-00102

In re Matter of Application No. 86/114,638
for the mark: MARLEY GANG
Opposition No. __________________
Ky-Mani Ronald Marley, Damian Robert Nesta

Marley, Julian Ricardo Marley, Stephen Robert
Nesta Marley, and David Nesta Marley,
NOTICE OF OPPOSITION
Mark: MARLEY GANG
Opposers,
Serial No. 86/114,638
v.
S & M Media Group, LLC,
Applicant.
SUBMITTED ELECTRONICALLY
Commissioner for Trademarks
ATTN: Trademark Trial and Appeal Board P.O. Box 1451
Alexandria, Virginia 22313-1451
Dear Commissioner:
Ky-Mani Ronald Marley, Damian Robert Nesta Marley, Julian Ricardo Marley, Stephen
Robert Nesta Marley, and David Nesta Marley, all individuals (collectively, Opposers),
believe that they will be damaged by the registration of the mark MARLEY GANG, as shown in
U.S. Application Serial No. 86/114,638 (the Application), and hereby oppose its registration
on the following grounds:
FACTUAL BACKGROUND AS TO OPPOSER
1.
Opposers are children of the world-renowned reggae artist, Bob Marley.
28217-00102/2256723.1
2.
Opposers are in privity with Fifty-Six Hope Road Music Limited, which is filing
an opposition against the Application concurrently herewith and was previously granted a thirtyday extension and a sixty-day extension of time to oppose the Application. Privity is established
because Damian Robert Nesta Marley, Julian Ricardo Marley, Stephen Robert Nesta Marley, and
David Nesta Marley are all part owners in Fifty-Six Hope Road Music Limited.
3.
Opposers own the trademark THE MARLEY BROTHERS (Reg. No. 3,535,883)
in Class 41 for entertainment, namely, live performances by a musical band (hereinafter

collectively referred to as the MARLEY Mark). A true and correct copy of the registration of
the MARLEY Mark is attached hereto as Exhibit A.
4.
Opposers first used the mark THE MARLEY BROTHERS at least as early as
2004 in Class 41 for entertainment, namely, live performances by a musical band. Such date of
5.
The trademark THE MARLEY BROTHERS is recognized by the consuming
public and is associated with Opposers and the late musical legend, Bob Marley.
FACTUAL BACKGROUND REGARDING THE APPLICATION
6.
On November 9, 2013, Applicant S & M Media Group, LLC (Applicant),
having a place of business at 4219 Apt E, Yanceyville Rd., Browns Summit, NC 27214, filed the
Application seeking registration, on an intent-to-use basis, of MARLEY GANG for, Audio and
video recordings featuring music and artistic performances; Compact discs featuring music;
Digital music systems that synchronizes digital radio files stored on a home unit, a car unit, or
portable unit and that may be backed up to an internet depository; Downloadable MP3 files, MP3
recordings, on-line discussion board posts, webcasts, webinars and podcasts featuring music,
28217-00102/2256723.1
audio books in the field of rap, and news broadcasts; Downloadable ring tones, graphics and
music via a global computer network and wireless devices; Downloadable video recordings
featuring music; Downloadable music via the internet and wireless devices; Musical recordings;
Musical video recordings; Visual recordings and audiovisual recordings featuring music and
animation in Class 9.
7.
The Application was published for opposition in the Official Gazette on May 27,
2014. Fifty-Six Hope Road Music Limited, which is in privity with Opposers, was granted a
thirty-day extension and a sixty-day extension of time to oppose the Application.
8.
Applicant appears to be making use in commerce of MARLEY GANG in
connection with a musical group.

FIRST GROUND LIKELIHOOD OF CONFUSION
9.
10.
Applicants proposed mark is similar in sound, appearance and meaning and is
confusingly similar to Opposers MARLEY Mark. Further, the goods and services to be offered
by Applicant are similar and related to those offered under Opposers MARLEY Mark, as both
the Application and the MARLEY Mark cover goods and services relating to musical
performances.
11.
Applicants mark is likely to cause confusion, mistake, or deception as to the
source, origin, affiliation, connection or association of Applicants goods and services offered or
to be offered under the MARLEY GANG mark.
28217-00102/2256723.1
SECOND GROUND LIKELIHOOD OF DILUTION

12.
13.
The MARLEY Mark has acquired secondary meaning and is associated with
Opposers and Bob Marley. The MARLEY Mark is famous and distinctive and Bob Marley is
famous within the meaning of the Federal Trademark Dilution Act. Applicant filed the
Application after the MARLEY Mark and Bob Marley had become famous, and Applicant seeks
to commercially use the applied-for mark MARLEY GANG.
14.
The mark shown in the Application is likely to dilute Opposers MARLEY Mark.
THIRD GROUND FALSE ASSOCIATION WITH BOB MARLEY
15.
16.
The name and mark MARLEY is associated with Bob Marley and Opposers. Bob
Marley is and has been enormously famous and world renowned for many years.
17.
Opposers MARLEY Mark was used prior to Applicants filing date of the
application to register MARLEY GANG.

18.
Applicants proposed mark is the same or a close approximation of, as Bob
Marleys name and trademark, which was previously used by and associated with Opposers and
Bob Marley. The name and mark MARLEY is recognized as such, in that it uniquely and
unmistakably points to Opposers and/or Bob Marley. Neither Opposers nor Bob Marley is
connected with the goods or services sold, to be sold, offered, or to be offered by Applicant
under the MARLEY GANG mark; and the fame and reputation of Opposers and Bob Marley is
28217-00102/2256723.1
of such a nature that a connection with Opposers and Bob Marley is presumed when Applicants
MARLEY GANG mark is used on or with Applicants goods and services.
19.
The registration of the MARLEY GANG mark will falsely suggest a connection,
association, or sponsorship with Opposers and/or Bob Marley. Consumers will erroneously
believe that Applicants goods and services are licensed or sponsored by, or otherwise
connected, affiliated, or associated with, Opposers and/or Bob Marley.
DAMAGE TO OPPOSER
20.
As a result of all of the foregoing, the maturation of the Application into a
registration would (a) cause a likelihood of confusion, mistake, or deception as to the source,
origin, affiliation, connection, or association of Opposers MARLEY Mark and Applicants
MARLEY GANG goods and services, (b) cause a likelihood of dilution of the MARLEY Mark,
and (c) falsely suggest a connection or association with Bob Marley and/or Opposers.
21.
Opposers would be damaged by the registration of the mark shown in the
Application, in that such registration would give Applicant a prima facie exclusive right to the
use of MARLEY GANG, despite the likelihood of confusion, mistake, or deception, likelihood
of dilution, and likelihood of false connection or association with Bob Marley described above,
and will allow Applicant to trade on Opposers existing goodwill in the MARLEY Mark.
PRAYER
WHEREFORE, Opposers pray that this Opposition be sustained in favor of Opposers,
that the Application be rejected, and that registration of the Application be refused.
28217-00102/2256723.1
Please charge the requisite $300 opposition filing fee and any additional amounts to
Deposit Account No. 50-1833.
Dated: September 23, 2014
Respectfully submitted,
Jesse J. Saivar
Natasha Shabani
GREENBERG GLUSKER FIELDS
CLAMAN & MACHTINGER LLP
Los Angeles, California 90067
Telephone: (310) 553-3610
Facsimile: (310) 553-0687
E-mail: jsaivar@greenbergglusker.com;
nshabani@greenbergglusker.com;
ipmail@greenbergglusker.com
Attorneys for Opposers
Ky-Mani Ronald Marley
Damian Robert Nesta Marley
Julian Ricardo Marley
Stephen Robert Nesta Marley
David Nesta Marley
28217-00102/2256723.1
CERTIFICATE OF SERVICE
The undersigned hereby certifies that a true and correct copy of the foregoing NOTICE OF
OPPOSITION was served on Applicant on September 24, 2014 by delivery via first class mail to
applicant at:
Antonio Spears
S & M Media Group
4219 Apt E, Yanceyville Rd.
Browns Summit, North Carolina 27214
___________________________________
Natasha Shabani
28217-00102/2256723.1
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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

Fifty-Six Hope Road Music Limited

Aquamarine House, Cable Beach

Ky-Mani, Damian, Julian, Stephen, David Marley

16115 SW 117th Avenue, Unit 21-A

Opposition Period Ends

S & M Media Group

Goods/Services Affected by Opposition

Grounds for Opposition

Trademark Act section 2(a)

Priority and likelihood of confusion

Trademark Act section 2(d)

Trademark Act section 43(c)

Marks Cited by Opposer as Basis for Opposition

THE MARLEY BROTHERS

jewelry; watches; medallions

BOB MARLEY A TRIBUTE TO FREEDOM

BOB MARLEY AND THE WAILERS

BOB MARLEY AND THE WAILERS

MARLEY RESORT & SPA

HOUSE OF MARLEY MARETT TSEHAI DAM

HOUSE OF MARLEY MARETT TSEHAI DAM

HOUSE OF MARLEY MARETT TSEHAI DAM

HOUSE OF MARLEY MARETT TSEHAI DAM

HOUSE OF MARLEY MARETT TSEHAI DAM

HOUSE OF MARLEY MARETT TSEHAI DAM

HOUSE OF MARLEY MARETT TSEHAI DAM

HOUSE OF MARLEY MARETT TSEHAI DAM

HOUSE OF MARLEY MARETT TSEHAI DAM

HOUSE OF MARLEY MARETT TSEHAI DAM

Attorney Docket No.: 28217-00102

Fifty-Six Hope Road Music Limited,

Mark: MARLEY GANG

Serial No. 86/114,638

S & M Media Group, LLC,

his roots in the Caribbean.

and constitute a family of trademarks.

On November 9, 2013, Applicant S & M Media Group, LLC (Applicant),

Applicant appears to be making use in commerce of MARLEY GANG in

connection with a musical group.

Opposer incorporates the allegations contained in Paragraphs 1 to 45 herein.

Applicants proposed mark is similar in sound, appearance and meaning and is

Applicants mark is likely to cause confusion, mistake, or deception as to the

Opposer incorporates the allegations contained in Paragraphs 1 to 48 herein.

The mark shown in the Application is likely to dilute Opposers MARLEY

Opposer incorporates the allegations contained in Paragraphs 1 to 51 herein.

application to register MARLEY GANG.

Applicants proposed mark is the same or a close approximation of, as Bob

As a result of all of the foregoing, the maturation of the Application into a

Opposer would be damaged by the registration of the mark shown in the

Attorney Docket No.: 28217-00102

Ky-Mani Ronald Marley, Damian Robert Nesta

Serial No. 86/114,638

Opposers are children of the world-renowned reggae artist, Bob Marley.

in Class 41 for entertainment, namely, live performances by a musical band (hereinafter

The trademark THE MARLEY BROTHERS is recognized by the consuming

On November 9, 2013, Applicant S & M Media Group, LLC (Applicant),

Applicant appears to be making use in commerce of MARLEY GANG in

connection with a musical group.

Opposer incorporates the allegations contained in Paragraphs 1 to 8 herein.

Applicants proposed mark is similar in sound, appearance and meaning and is