EXHIBITS
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`Proceeding/Serial No: 3 H97
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of"Application Serial No. 78/200,403
`Published in the Oflicial Gazette (Trademarks) on September 27, 2005
`Mark: METROPOLITAN HOME
`
`Minka Lighting, Inc.,
`Opposer,
`
`v.
`Hachette Filipacchi Media U.S.,
`Applicant.
`
`§
`g
`§
`§
`E
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`Opposition No. 91 167800
`5 2- @ 0 03
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`APPLICANT’S REPLY TO OPPOSITION TO MOTION TO EXTEND APPLICANT’S
`TIME TO RESPOND TO OPPOSER’S MOTION FOR SUMMARY JUDGMENT
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`Applicant, Hachette Filipacchi Media U.S. (“Applicant”), submits this brief in
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`reply to the opposition by Opposer, Minka Lighting, Inc., to Applicant’s Motion To Extend its
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`Time To Respond To Opposer’s Motion For Summary Judgment. This brief is filed
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`concurrently with Applicant’s substantive response to the summary judgment motion. Because
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`Opposer will be not prejudiced if the extension of time is granted, and Applicant will be severely
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`prejudiced if such motion is denied, the Board should grant Applicant’s motion for an extension
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`of time and accept Applicant’s concurrently filed brief andsupporting declarations opposing
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`entry of summary judgment.
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`Opposer will not suffer any prejudice whatsoever if Applicant’s Motion is
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`granted. Prejudice to the nonmovant must be more than mere inconvenience and delay, and
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`more than a loss of tactical advantage; instead, the nonmovant’s ability to litigate the case must
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`be affected. S_e§ Pumpkin Ltd. v. The Seeds Co1;__ps., 43 U.S.P.Q. 2d 1583, 1587 (T.T.A.B. 1997).
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`Opposer does not allege that it will suffer any prejudice if Applicant’s Motion is granted.
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`NY02:579428.l
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`Rather, Opposer’s opposition is simply a bullying tactic used to further its chances of obtaining
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`an award of summary judgment, to which it is not entitled, without the benefit of any
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`submissions from Applicant.
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`In its opposition Brief, Opposer alleges that “Applicant [has] not take[n], or even
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`notice[d], a single deposition in this proceeding.” This statement is false. On August 7, 2006,
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`Applicant served Opposer with its Notice of Deposition Pursuant to Federal Rule of Civil
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`Procedure 30(b)(6). Thereafter, Applicant attempted to work with Opposer to find a time that
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`was mutually convenient for the parties to depose Opposer’s witnesses, but a deposition date was
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`never forthcoming from Opposer. App1icant’s inability to schedule a deposition of Opposer’s
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`corporate witnesses was due to Opposer’s unavailability.
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`Contrary to the assertions in Opposer’s opposition Brief, the parties (as opposed
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`to their lawyers) were actively engaged in settlement discussions. Applicant’s Vice President
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`and Publisher telephoned Opposer’s principal to discuss settlement and, at his request, forwarded
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`a written proposal for settlement. A response from Opposer was forthcoming only in the last two
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`weeks.
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`In addition, Applicant’s most knowledgeable witness, who was produced for
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`discovery deposition in this matter, left the company and another witness needed to be identified
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`for preparation and finalization of the declaration in opposition to the summary judgment
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`motion.
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`It is noted that, in connection with its Trademark Application Serial No.
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`76/224,228 to register METROPOLITAN, the very mark it asserts in this proceeding, Opposer
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`filed a petition to revive as it inadvertently failed to timely respond to an office action during the
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`NYO2:579428.l
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`six month period for reply. That petition was granted and Opposer was accommodated and
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`permitted to file a late response.
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`In this case, Applicant, in good faith and before the due date for responding to the
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`motion, sought Opposer’s consent to a mere thirty day extension of time to respond. Not only
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`did Opposer deny this request, it filed a formal opposition. Opposer had availed itself of the
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`opportunity to seek an extension when it missed a date, even after it had a six month period to
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`respond, but refuses to grant Applicant an extension for only thirty days, despite a timely request.
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`Opposer’s delay in responding to Applicant’s settlement overtures, combined with
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`Applicant’s recent change in personnel, prompted Applicant to seek an extension of time in good
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`faith and for just cause, and will not prejudice Opposer, who has itself sought an extension after
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`a lengthier period for response.
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`WHEREFORE, for the reasons stated and good cause shown herein, Applicant,
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`by its counsel, respectfully requests that its Motion to Extend Applicant’s Time to Respond to
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`Opposer’s Motion for Summary Judgment be granted and that its concurrently filed Brief and
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`supporting declarations opposing summary judgment be accepted and considered in ruling on the
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`Respectfully Submitted,
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`BOTTS L.L.P.
`
`
`
`By.
`
`oreen L. Costa
`
`
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`dispositive motion.
`
`Date: March 19, 2007
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`30 Rockefeller Plaza, 44th Floor
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`New York, New York 10112-4498
`Tel: (212) 408-2576
`Fax: (212)259-2576
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`Attorneys for Applicant
`HACHETTE FILIPACCHI MEDIA
`
`U.S., INC.
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`NY02:579428.l
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`EXPRESS MAIL LABEL NO. ED762058296US
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application Serial No. 78/200,403
`Published in the Oflicial Gazette (Trademarks) on September 27, 2005
`Mark: METROPOLITAN HOME
`
`Minka Lighting, Inc.,
`
`Opposer,
`
`v.
`
`Hachette Filipacchi Media U.S.,
`
`Applicant.
`
`(0JCOJ€03<0‘J€0J<0J<0JCOJCO)C03
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`Opposition No. 91167800
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`CERTIFICATE OF EXPRESS MAIL UNDER 37 C.F.R. 1.10
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`I hereby certify that APPLICANT’S REPLY TO OPPOSITION TO MOTION
`TO EXTEND APPLICANT’S TIME TO RESPOND TO OPPOSER’S MOTION FOR
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`SUMMARY JUDGMENT is being deposited with the United States Postal Service “Express
`Mail Post Office To Addressee Service” in an envelope addressed to: BOX TTAB -
`Commissioner for Trademarks, P.O. Box 1451, Alexandria, Virginia 22313-1451, on
`
`Dated: March 19,2007
`
`By: Q
`
`Doreen L. Costa
`
`CERTIFICATE OF SERVICE
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`True and correct copy of the foregoing APPLICANT’S REPLY TO
`OPPOSITION TO MOTION TO EXTEND APPLICANT’S TIME TO RESPOND TO
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`OPPOSER’S MOTION FOR SUMMARY JUDGMENT was served on the Opposer by
`depositing same with the United States Postal Service as first class mail, in an envelope with
`sufficient postage addressed as follows:
`
`Lisa H. Meyerhoff
`Baker & McKenzie LLP
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`2001 R0 Avenue, Suite 2300
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`Dallas 6.
`By:
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`Dated: March 19, 2007
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`NYO2:579524.l
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`

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`EXPRESS MAIL LABEL NO. ED762058296US
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application Serial No. 78/200,403
`Published in the Official Gazette (Trademarks) on September 27, 2005
`Mark: METROPOLITAN HOME
`
`Minka Lighting, Inc.,
`
`Opposer,
`
`v.
`
`Hachette Filipacchi Media U.S.,
`
`Applicant.
`
`C03C09(03C03(0J<03€0)<0‘><0'JCOJ
`
`Opposition No. 91167800
`
`CERTIFICATE OF EXPRESS MAIL UNDER 37 C.F.R. 1.10
`
`I hereby certify that APPLICANT’S BRIEF IN OPPOSITION TO OPPOSER’S
`MOTION FOR SUMMARY JUDGMENT, DECLARATION OF SUZANNE HENGL,
`
`DECLARATION OF NANETTE LODOLCE and DECLARATION OF DEBORAH BURNS,
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`are being deposited with the United States Postal Service “Express Mail Post Office To
`Addressee Service” in an envelope addressed to: BOX TTAB - Commissioner for Trademarks,
`P.O. Box 1451, Alexandria, Virginia 22313-1451, on
`
`Dated: March 19,2007
`
`By:
`
`Z W4
`
`Doreen L. Costa
`
`CERTIFICATE OF SERVICE
`
`True and correct copy of the foregoing APPLICANT’S BRIEF IN OPPOSITION
`TO OPPOSER’S MOTION FOR SUMMARY JUDGMENT, DECLARATION OF SUZANNE
`HENGL, DECLARATION OF NANETTE LODOLCE and DECLARATION OF DEBORAH
`
`BURNS was served on the Opposer by depositing same with the United States Postal Service as
`first class mail, in an envelope with sufficient postage addressed as follows:
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`Dated: March 19, 2007
`
`Lisa H. Meyerhoff
`Baker & McKenzie LLP
`
`2001 Ross Avenue, Suite 2300
`
`Dallas, Te? 75201
`By: M
`
`Doreen 1. Costa
`
`

`
`IN THE UNITED STATES _PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application Serial No. 78/200,403
`Published in the Oflicial Gazette (Trademarks) on September 27, 2005
`Mark: METROPOLITAN HOME
`
`Minka Lighting, Inc.,
`
`Opposer,
`
`v.
`
`Hachette Filipacchi Media US,
`
`Applicant.
`
`’
`
`'
`
`'
`
`Opposition No. 91167800
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`APPLICANT’S BRIEF IN OPPOSITION
`
`TO OPPOSER’S MOTION FOR SUMMARY JUDGMENT
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`NY0l:l9l546.l
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`TABLE OF CONTENTS
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`1.
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`II.
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`PRELIMINARY STATEMENT ................
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`.................................................................... .. 1
`
`THE APPLICATION AT ISSUE AND PLEADINGS .................................................... .. 3
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`III.
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`FACTUAL STATEMENT ............................................................................................... .. 5
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`A.
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`B.
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`C.
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`D.
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`E.
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`F.
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`Opposer’s Mark .................................................................................................... .. 5
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`The Genesis of Applicant’s Mark ......................................................................... .. 5
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`Applicant’s Registrations and Allowed Applications ........................................... .. 9
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`Applicant’s Natural Expansion of Use of METROPOLITAN HOME .............. .. 10
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`Third Party Registrations for METROPOLITAN .............................................. .. 14
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`Third Party Use of METROPOLITAN ............................................................... .. 15
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`IV.
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`ARGUMENT .................................................................................................................. .. 16
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`A.
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`B.
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`C.
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`D.
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`E.
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`F.
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`G.
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`H.
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`Summary Judgment For The Movant Is Not Appropriate Because There Are
`Genuine Issues Of Material Fact ......................................................................... .. 16
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`The Marks Are Dissimilar .................................................................................. .. 18
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`The Goods Are Dissimilar .................................................................................. .. 19
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`The Trade Channels Are Dissimilar ................................................................... .. 20
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`The Respective Purchasers are Sophisticated ..................................................... .. 20
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`Opposer’s Mark is Not Famous or Strong .......................................................... .. 21
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`Third Party Use Bodes Against Confusion ......................................................... .. 22
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`The Parties Have Long Coexisted; The Goods In Opposition are Within
`Applicant’s Natural Zone of Expansion ............................................................. .. 23
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`V.
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`CONCLUSION ............................................................................................................... .. 24
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`NYO|:l9l546.l
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`TABLE OF AUTHORITIES
`
`CASES
`
`Anderson v. Liberty Lobby, Inc.,
`477 U.S. 242, 106 S. Ct. 2505 (1986) .............................................................................. ..17
`
`CBS Inc. v. Morrow,
`708 F.2d 1579, 218 U.S.P.Q. 198 (Fed. Cir. 1983) ......................................................... ..20
`
`Chase Manhattan Bank, USA v. Freedom Card Inc.,
`333 F. Supp.2d 239 (D. Del. 2004), aff‘d 432 F.3d 463 (3d Cir. 2005) ........................... ..23
`
`Gen. Mills, Inc. v. Health Valley Foods,
`24 U.S.P.Q.2d 1270 (T.T.A.B. 1992) .............................................................................. ..19
`
`In re Dixie Rests.,
`105 F.3d 1405, 41 U.S.P.Q.2d 1531 (Fed. Cir. 1997) ..................................................... ..17
`
`In re E.I DuPont DeNemours & Co.,
`476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973) ................................................... ..17, 21
`
`Keebler Co. v. Murray Bakery Prods.,
`866 F.2d 1386, 9 U.S.P.Q.2d 1736 (Fed. Cir. 1989) ....................................................... ..18
`
`Lang v. Ret. Living Pub. Co.,
`949 F.2d 576, 21 U.S.P.Q.2d 1041 (2d Cir. 1991) .................................................... ..21, 23
`
`Lincoln Logs, Ltd. v. Lincoln Pre-Cut Log Homes, Inc.,
`971 F.2d 732, 23 U.S.P.Q.2d 1701 (Fed. Cir. 1992) ....................................................... ..16
`
`Opryland USA, Inc. v. Great American Music Show, Inc.,
`970 F.2d 847, 23 U.S.P.Q.2d 1471 (Fed. Cir. 1992) ....................................................... ..18
`
`Prince Mfg. Inc. v. Bard Int’l Assocs.,
`11 U.S.P.Q. 2d 1419 (D. N]. 1988) .......................................................................... ..20, 21
`
`Salacuse v. Ginger Spirits, Inc.,
`44 U.S.P.Q. 2d 1415 (T.T.A.B. 1997) ............................................................................. ..17
`
`Sun Banks ofFla. v. Sun Fed Sav. & Loan,
`651 F.2d 311, 211 U.S.P.Q. 844 (5th Cir. 1981) ............................................................. ..22
`
`Sunenblick v. Harrell,
`895 F. Supp. 616 (S.D.N.Y. 1995), gfid, 101 F.3d 684 (2d Cir. 1996) .......................... ..19
`
`NY0l:l9l546.l
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`Wash. Nat. Ins. Co. v. Blue Cross and Blue Shield United of Wis.,
`727 F. Supp. 472, 14 U.S.P.Q.2d 1307 (N.D. Ill. 1990) .................................................. ..21
`
`Wendi v. Host Int’l, Inc.,
`125 F.3d 806, 44 U.S.P.Q.2d 1189 (9th Cir. 1997) ......................................................... ..17
`
`NY0l:I9l546‘I
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`I.
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`PRELIMINARY STATEMENT
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`Opposer seeks to carve out a scope of protection for its trademark
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`METROPOLITAN for lighting fixtures which is broader than permissible under established law
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`or than justified given the state of the marketplace. The designation METROPOLITAN is not
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`unique.
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`It has been commonly and extensively used to connote, consistent with its dictionary
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`definition, a sophisticated, contemporary, modern image and is the subject of numerous third
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`party federal registrations covering home furnishing, design and decorating products.
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`Notwithstanding such widespread third party uses, Opposer seeks to preclude Applicant from
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`expanding its well—known and renown mark, METROPOLITAN HOME, used by Applicant for
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`over 25 years in connection with a magazine dedicated to home furnishing, design and
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`decoration, to cover the very products which have been the subject of its publications. Opposer
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`seeks to do so as a matter of law, before a trial on the merits, and in a vacuum.
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`Opposer’s motion is premised on an erroneous factual construct and would have
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`this Board consider the application-in-opposition on the pretense that Applicant’s extension of its
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`use of METROPOLITAN HOME to home furnishing and decoration products is completely
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`untethered to the magazine’s fame with respect to publishing, reviewing, advertising and
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`editorializing in that very field since 1981. In fact, Applicant’s mark, METROPOLITAN
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`HOME, has been used exclusively during that entire time period as the name of a magazine that
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`is devoted to the coverage of the business of contemporary home design and decoration. Over
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`these 2 1/2 decades, Applicant has developed an outstanding reputation in the field of
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`contemporary home decoration and design. Applicant’s trademark, METROPOLITAN HOME,
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`has become synonymous with the best of contemporary design and decoration and the
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`publication has become a resource just as surely as interior designers, architects, and
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`manufacturers and distributors of home interior products are resources in this field.
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`NY01:l9l546.l
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`The name METROPOLITAN HOME has become so well regarded that the
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`publication has followed the path of other well—known magazines such as Better Homes and
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`Gardens and Country Home by introducing, marketing and selling a line of home furnishings
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`and decorations, which has been and will continue to be intimately tied in to the magazine and its
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`established reputation. The mark METROPOLITAN HOME identifies only one source, the
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`publication bearing that name. Likewise, the home interior products sold under the
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`METROPOLITAN HOME banner have been and will continue to be associated exclusively with
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`one source, the self-same magazine that has defined contemporary interior decoration and design
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`since 1981. Applicant’s investment in this extension of its brand is based on its business
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`expectation that buyers of METROPOLITAN HOME contemporary home decorations and
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`furnishings will be inclined to purchase such products based on the prior good will established
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`by the magazine. Opposer’s motion fails to even acknowledge, much less address, this
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`fundamental issue of fact.
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`Opposer also bases its motion on its improper dissection of Applicant’s mark,
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`thus exacerbating this issue.
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`It argues, with no record, that METROPOLITAN dominates
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`HOME and, therefore, Applicant’s marks is identical to Opposer’s mark METROPOLITAN.
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`This argument runs into further factual disputes given the fact that the Register already contains
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`registrations in the categories at issue in this case that contain the word, METROPOLITAN.
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`Finally, by its own, indecipherable process of selecting which of Applicant’s
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`products will and will not be included in its opposition, Opposer has conceded that substantial
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`questions of fact exist as to what should or should not be found to be competitive or related
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`products. For example, Opposer argues that use of METROPOLITAN HOME on candle holders
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`is likely to cause confusion, but that use of this same mark on candles or other table top
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`NY0l:l9l546.1
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`accessories is not. The bases for such selections find no record support and the inconsistencies
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`with respect to these and other such decisions cry out for a full record and require dismissal of
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`the instant motion.
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`When the appropriate du Pont likelihood of confusion factors are analyzed, it is
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`eminently clear that there is no likely confusion and that Applicant is entitled to the registration
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`sought. At best for Opposer, there are disputed issues of material fact which preclude issuance
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`of summary judgment in Opposer’s favor, including: the fame of Opposer’s mark, product
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`similarities, third party use, market interface between the parties, Opposer’s right to exclude
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`others from use of the mark and the extent of potential confusion.
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`II.
`
`THE APPLICATION AT ISSUE AND PLEADINGS
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`On January 6, 2003, Applicant filed an intent to use application for registration of
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`the mark METROPOLITAN HOME, covering interior and exterior paints in Class 2; home
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`fragrances in Class 3; candles in Class 4; electric lighting fixtures and lamps in Class 11;
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`ashtrays of precious metal and candle holders of precious metal in Class 14; printed matter,
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`namely a periodical publication featuring architecture, design and interior decorating in Class 16;
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`upholstered furniture; picture frames and case goods, namely, chests, night stands, cabinets,
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`dining tables, coffee tables, end tables, desks, beds, headboards and mirrors in Class 20; table top
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`accessories, namely, bowls, platters, vases, and dinnerware, candle holders not of precious metal
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`in Class 21; home decorating fabrics for upholstery; bedding, namely, sheets, blankets, bed
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`spreads, bed skirts, decorative pillows and shams; draperies; fabric tabletop accessories, namely,
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`tablecloths, place mats, table runners, napkins; bathroom accessories, namely, shower curtains
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`and towels in Class 24; wall coverings primarily made of cotton, silk, linen, wool, nylon, rayon,
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`polypropylene, synthetic fibers, and blends thereof and rugs; bathroom rugs in Class 27; and
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`ashtrays not of precious metal in Class 34. That application was assigned Serial No. 78/200,403.
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`NY01:19l546.l
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`On November 28, 2005, Opposer filed a Notice of Opposition in connection with
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`Application Serial No. 78/200,403, selecting only certain products for opposition, namely,
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`electric lighting fixtures and lamps in Class 1 1; candle holders of precious metal in Class 14;
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`upholstered furniture, picture frames and case goods, namely, chests, night stands, cabinets,
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`dining tables, coffee tables, end tables, desks, beds, headboards, and mirrors in Class 20; and
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`candle holders not of precious metal in Class 21. Opposer did not oppose Applicant’s
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`registration of METROPOLITAN HOME in Classes 2, 3, 4, 14 ( for ashtrays of precious metal),
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`16, 21 (for table top accessories, namely, bowls, platters, vases, and dinnerware), 24, 27, or 34.
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`Opposer’s selective opposition is arbitrary and inconsistent, as illustrated by the
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`fact that, although it has only ever sold lighting fixtures under its asserted mark,
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`it opposed
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`registration of Applicant’s mark in connection with candle holders in Classes 14 and 21, but did
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`not oppose candles in Class 3. Likewise, it opposed picture frames in Class 20, but did not
`
`oppose ashtrays in Class 34, or vases in Class 21. It opposed upholstered furniture in Class 20,
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`but not fabric for upholstery, draperies or decorative pillows in Class 24, or wall hangings in
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`Class 27.
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`It opposed dining tables in Class 20, but not table cloths, place mats, runners, or
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`napkins in Class 24.
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`It opposed nightstands, chests, headboards and mirrors in Class 20, but not
`
`bedding in Class 24. Opposer’s own Briefin support of this motion was unable to state the
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`coverage of the opposition accurately as, at page 1, the Brief requests that summary judgment be
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`issued for “table top accessories,” and later analyses how “table top accessories” are closely
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`related to Opposer’s products, pp. 12, irfi. However, the notice of opposition covers candle
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`holders, but not “table top accessories, namely, bowls, platters, vases, and dinnerware” in Class
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`21 . While Opposer cites numerous federal registrations which several of the product
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`classifications in opposition, it fails to cite Reg. No. 1,725,755 for METROPOLITAN
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`NYOl:l9l546.l
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`COLLECTION which covers dinnerware, serving platters, bowls and other table top accessories
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`and was undoubtedly the reason Opposer chose not to include these identical goods in its
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`opposition.
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`Applicant, in its Answer, denied Opposer’s claims that its use of
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`METROPOLITAN HOME is likely to cause confusion, mistake or deception with respect to all
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`of the goods covered in the Notice of Opposition.
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`III.
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`FACTUAL STATEMENT
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`A.
`
`Opposer’s Mark
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`Opposer itself has used METROPOLITAN to identify lighting fixtures since it
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`acquired the assets of Metropolitan Lighting Fixture Company, Inc. in 1997. Opposer’s
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`predecessor claims to have commenced use of such mark in 1935. No products other than
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`lighting fixtures are sold by Opposer under the METROPOLITAN name. Opposer’s website
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`states these fixtures consist of antique reproduction designs. Not until 2001 did Opposer seek to
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`register this mark.
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`B.
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`The Genesis of Applicant’s Mark
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`Applicant’s mark in opposition, METROPOLITAN HOME, has its genesis in
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`Applicant’s METROPOLITAN HOME magazine, a monthly publication that has devoted itself
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`over the past 25 years to all aspects of contemporary home design, decoration, and furnishings.
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`The METROPOLITAN HOME publication is focused mainly, though not exclusively, on
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`residents in major metropolitan centers. As a_ result, Applicant employs City Editors in Miami
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`Beach, Washington D.C., Dallas, Los Angeles, Seattle, New Orleans, Paris, San Francisco and
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`_ Austin-Houston. A copy of a recent issue of METROPOLITAN HOME magazine is attached to
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`the accompanying Declaration of Deborah Burns (“Burns Decl.”) as Exhibit A. Applicant has
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`also published several hard cover, “coffee table” books on home design and decoration entitled
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`NYOl:l9l546.l
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`METROPOLITAN HOME, with distribution in excess of 14,500. Burns Decl., {I 1, Ex. B.
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`METROPOLITAN HOME currently operates a companion website at www.MetHome.com,
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`which receives about 300,000 page views per month and will also soon be part of Applicant’s
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`new shelter portal site, PointClickHome.com, combining all of Applicant’s home decorating and
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`design publications in one location. This new portal is expected to bring millions of additional
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`viewers per month to the METROPOLITAN HOME brand. Burns Decl., 1] 1.
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`METROPOLITAN HOME magazine was first published in 1981 and, over the
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`course of the last 25 years, has been continuously published and circulated throughout the nation.
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`Today, more than 2,500,000 people read each issue of the magazine, which is published ten
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`times annually. Applicant’s audience includes design and decoration professionals, architects,
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`furniture and accessory manufacturers, distributors and retailers and, of course, homeowners who
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`have an interest in contemporary home design and decoration. Burns Decl.,‘ 11 2.
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`Throughout its history, METROPOLITAN HOME magazine has provided its
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`readership with extensive coverage of developments and trends in all aspects of contemporary
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`home design, decoration, furnishings, accessories and fixtures. One of the principal goals of the
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`magazine is to keep its readership abreast of developments in all aspects of contemporary home
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`design and decoration, a goal best described in the magazine’s mission statement, as follows:
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`“Metropolitan Home stands alone as the definitive guide to modern design and the unparalleled
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`champion of contemporary style. The magazine's urban mindset speaks to readers everywhere
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`and sets the standard for how to live well now. Every article and photograph connects with the
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`magazine's affluent, intelligent, progressive readers. Each page informs and inspires consumers
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`to decorate, renovate, garden and cook as they create a haven for themselves and their families.
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`Metropolitan Home 's distinctive voice elevates eclectic style and celebrates the impact that
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`quality design has on today's modern world.” Burns Decl., 1] 3, Ex. C).
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`Applicant has used the name and mark, METROPOLITAN HOME, actively and
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`extensively to cover all aspects of contemporary home design, including lighting, one of the
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`many components of contemporary home furnishing and decoration, over the course of two and
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`a half decades. As a result, the mark, METROPOLITAN HOME, has become closely identified
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`with Hachette, not only as a source of information and commentary about contemporary style
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`and function, but also as a valuable tool for identifying and sourcing manufacturers, distributors
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`and suppliers of all aspects of home interiors, from the kitchen and bathroom, to the bedroom
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`and living room. Indeed, Applicant’s articles and reviews routinely picture, identify and critique
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`such products and their sources and the magazine routinely recounts the identity of
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`manufacturers, suppliers and distributors. Burns Decl., 1] 4.
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`Manufacturers and distributors of virtually all components of contemporary home
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`design and decoration advertise their products in Applicant’s publication or have their products
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`pictured and identified therein. These include manufacturers and distributors of lighting,
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`furniture, kitchen hardware and appliances, glassware, carpeting, windows, and all other
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`components of contemporary design and decoration. Burns Decl., ll 5.
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`Over the years, METROPOLITAN HOME has achieved substantial authority and
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`renown.
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`It’s Editor-in-Chief, Donna Warner, is often asked to represent the brand in key-note
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`speeches during design market weeks and industry events throughout the country. For example,
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`at the end of March, she will be the key-note speaker at West Week, the annual design
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`symposium at the Pacific Design Center. Burns Decl., 1] 6.
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`In addition, METROPOLITAN HOME has sponsored numerous high profile
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`events related to the home design industry. The most recent include the 2006 “LA Showhouse,”
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`which spotlighted the best in modern design and attracted an estimated 1,500 affluent,
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`trendsetting consumers and designers to this amazing house in the Hollywood Hills; “Modern
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`Design 25”, which was a retrospective tour of contemporary design to correspond with the
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`Magazine’s 25th anniversary; and a showhouse at the Washington Design Center in 2006.
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`METROPOLITAN HOME will also participate in “Cool Globes: Hot Ideas for a Cooler Planet,”
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`which will bring together the biggest names in politics, the environment, art and design to create
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`interest in a unique and innovative public art project and transform a series of five foot globes
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`into an artistic vehicle to raise awareness for global warming solutions and fund environmental
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`education in public schools.
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`In addition, the “What’s Next?” Tour will be conducted in 2007
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`with a high-profile, 3-month long traveling exhibition spotlighting the work of 10 rising stars in
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`the modern design world. This spectacular, national tour will celebrate a progressive vision of
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`modern design with stops in New York, Los Angeles, Chicago and Miami. Burns Decl., 1] 7.
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`METROPOLITAN HOME is also involved in the activities of various trade
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`associations for the home furnishing industry, including, most recently, IFDA (International
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`Furniture and Design Association), WITHIT ( association dedicated to professional women in
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`the design industry), Ceramic Tiles of Italy and the Italian Trade Commission. Burns Decl., 1] 8.
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`As a consequence of its long history in chronicling and analyzing trends and
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`developments in the contemporary home design and decoration industry, its editorial role as a
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`commentator and sometime arbiter of taste on contemporary home design and decoration and its
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`substantial longevity and popularity as a resource for identifying and purchasing all products and
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`services related to home decoration and design, the name METROPOLITAN HOME has
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`achieved substantial and favorable recognition within the industry, including manufacturers and
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`distributors, professional designers and decorators and, of course, subscribers and other
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`interested consumers as a significant and vital resource for obtaining detailed information
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`concerning the purchase of contemporary home design products and services. Burns Decl., 11 10.
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`C.
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`App1icant’s Registrations and Allowed Applications
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`Applicant has duly registered and sought registration for its marks as follows:
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`METROPOLITAN HOME, Reg. No. 1,235,238, issued on April 19, 1983,
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`covering magazines in Class 16.
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`METROPOLITAN HOME, Application Serial No. 78/200,417, filed
`January 6, 2003, allowed on January 4, 2005, covering: home fragrances, namely room
`fragrances in Class 3; mirrors in Class 20; home decorating fabrics for upholstery, bedding,
`bedspreads, quilts, comforters, coverlets, canopies, drapery, valences, window treatments and
`wall coverings made of cotton, silk, linen, wool, nylon, rayon, polypropylene, synthetic fibers,
`and blends thereof; bathroom accessories, namely, namely bath mats, shower curtains, and
`towels in Class 24; and rugs for use in the bathroom; wall coverings primarily made of paper,
`vinyl, vinyl coated paper, grass cloth, rice paper, cotton, silk, cork, suede, satin, linen, wool,
`nylon, rayon, polypropylene, synthetic fibers, and blends thereof in Class 27.
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`MET HOME, Reg. No. 2,202,666, issued on November 10, 1998, covering:
`magazine devoted to residential design, remodeling, decorating, furnishing, gardening and
`entertainment in Class 16, and computer services, namely, providing an on-line magazines in the
`field of residential design, remodeling, decorating, furnishing, gardening and entertainment in
`Class 42.
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`MET HOME, Application Serial No. 78/200,409, filed January 6, 2003, allowed
`on January 10, 2006, covering: home fragrances in Class 3, mirrors in Class 20, home decorating
`fabrics for upholstery, bedding, bedspreads, quilts, comforters, coverlets, canopies, drapery,
`valences, window treatments and wall coverings made of cotton, silk, linen, wool, nylon, rayon,
`polypropylene, synthetic fibers, and blends thereof; bathroom accessories, namely, shower
`curtains, and towels in Class 24 and wall coverings primarily made of paper, vinyl, vinyl coated
`paper, grass cloth, rice paper, cotton, silk, cork, suede, satin, linen, wool, nylon, rayon,
`polypropylene, synthetic fibers, and blends thereof in Class 27.
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`MET HOME, Application Serial No. 75/810,802, filed September 29, 1999,
`allowed on February 28, 2006, covering: electrical lighting fixtures and lamps in Class 11,
`picture frames and case goods, namely, chests, night stands, cabinets, dining tables, coffee tables,
`end tables, desks, bed and headboards in Class 20, table top accessories, namely, bowls, platters
`made of glass, wood and ceramics, vases in Class 21 and upholstered furniture; bedding, namely,
`sheets, blankets, bed spreads, bed skirts, decorative pillows and shams, draperies; tabletop
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`accessories, namely, tablecloths not of paper, textile place mats, fabric table runners, and textile
`napkins in Class 24. Burns Decl., ll 9.
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`D.
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`Applicant’s Natural Expansion of Us