Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA310828
`ESTTA Tracking number:
`10/09/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91185105
`Plaintiff
`Mignon Fogarty, Inc. and Macmillan Holdings, LLC
`Mark Lerner
`Satterlee Stephens Burke & Burke LLP
`230 Park Avenue, Suite 1130
`New York, NY 10169
`UNITED STATES
`mlerner@ssbb.com,pcarey@ssbb.com
`Motion for Summary Judgment
`Mark Lerner
`mlerner@ssbb.com,mwilliams@ssbb.com,pcarey@ssbb.com
`/mark lerner/
`10/09/2009
`E-FILE.pdf ( 128 pages )(6885760 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`ESTTA310828
`ESTTA Tracking number:
`10/09/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91185105
`Plaintiff
`Mignon Fogarty, Inc. and Macmillan Holdings, LLC
`Mark Lerner
`Satterlee Stephens Burke & Burke LLP
`230 Park Avenue, Suite 1130
`New York, NY 10169
`UNITED STATES
`mlerner@ssbb.com,pcarey@ssbb.com
`Motion for Summary Judgment
`Mark Lerner
`mlerner@ssbb.com,mwilliams@ssbb.com,pcarey@ssbb.com
`/mark lerner/
`10/09/2009
`E-FILE.pdf ( 128 pages )(6885760 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`
`MIGNON FOGARTY, INC. AND MACMILLAN HOLDINGS, LLC V. JOEL AVERY
`Opposition No: 91185105
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`...................................................................................._- X
`
`Mignon Fogarty, Inc. and Macmillan Holdings, LLC,
`
`Opposition No. 91185105
`
`NOTICE OF MOTION
`
`v.
`
`Joel Avery,
`
`Opposers,
`
`Applicant.
`
`______________________________________________________________________________________ X
`
`TO APPLICANT:
`
`PLEASE TAKE NOTICE, that pursuant to TBMP § 528 and F.R.C.P. 56, upon the annexed
`
`declarations of Mignon Fogarty, Richard Rhorer and Mark Lerner, and the accompanying
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`memorandum of law, opposers Mignon Fogarty, Inc. and Macmillan Holding, LLC hereby move
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`the Trademark Trial and Appeal Board for an order granting summary judgment in favor of
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`Mignon Fogarty, Inc. and Macmillan Holding, LLC, and refusing registration of the Applicant’s
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`mark, THE GILAMMAR GIRLS.
`
`Dated: New York, New York
`
`October 9, 2009
`
`SATTERLEE STEPHENS BURKE & BURKE LLP
`
`,
`
`By:
`
`ML
`
`Mark Lerner
`
`Counsel for Opposers
`MIGNON FOGARTY, INC. and MACMILLAN
`
`HOLDING, LLC
`
`230 Park Avenue, Suite 1130
`
`New York, NY 10169
`
`(212)-818-9200
`
`783702_2
`
`
`
`A MIGNON FOGARTY, INC. AND MACMILLAN HOLDINGS, LLC V. JOEL AVERY
`Opposition No: 91 185105
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`....................................................................................-- X
`
`Mignon Fogarty, Inc. and Macmillan Holdings, LLC,
`
`Opposition No. 91185105
`
`V.
`
`Joel Avery,
`
`.
`
`Opposers,
`
`Applicant
`
`....................................................................................-- X
`
`OPPOSERS’ MOTION FOR SUMMARY JUDGMENT
`
`Mignon Fogarty, Inc.(“MFI”) and Macmillan Holdings, LLC (“Macmillan”)
`
`(collectively “Opposers”), hereby move, pursuant to Rule 56 of the Federal Rules of Civil
`
`Procedure and 37 C.F.R. §§ 2.127, for an order granting summaryjudgment in favor of Opposers
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`and refiising registration of THE GRAMMAR GIRLS, Application Serial No. 77/277106, filed
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`by Joel Avery (“Aver3F’ or “Applicant”). Opposers submit this brief in support of their motion.
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`PRELIMINARY STATEMENT
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`Opposers will demonstrate in this motion that there is no material issue of fact
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`regarding the priority of use of the GRAMMAR GIRL mark by Opposers and the relevant
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`factors under In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (CCPA
`
`1973). Most tellingly, as the evidence submitted by Opposers makes clear, there can be no
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`dispute regarding the fame of the GRAMMAR GIRL mark,
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`the similarity in the overall
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`appearance, sound and meaning of the GRAMMAR GIRL and THE GRAMMAR GIRLS, the
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`similarity of goods and services on which the marks are used or proposed to be used, the
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`MIGNON FOGARTY, INC. AND MACMILLAN HOLDINGS, LLC V. JOEL AVERY
`Opposition No: 91185105
`
`similarity between the goods and services offered under each of the marks, and the similarity of
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`the channels of trade and audience for the goods and services offered under the respective marks.
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`The discovery period in this matter is over. Applicant did not undertake any
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`discovery. There is no dispute as to any material fact, and as a matter of law, Opposers are
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`entitled to an entry of summary judgment.
`
`FACTS
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`MFI’s use of the mark GRAMMAR GIRL commenced in July 2006, over a year
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`before the filing of the intent to use application by Joel Avery (“Avery” or “Applicant”) that is
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`the subject of this opposition. Fogarty Decl., 1[ 7. From their initial use of the mark to the
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`present, Opposers’ exploitation of the GRAMMAR GIRL mark has been significant, continuous,
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`and expanding.
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`In or about July 2006, MFI created a podcast under the mark GRAMMAR GIRL
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`to provide short, fiiendly tips to improve its listeners’ writing.
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`Id. at 1[ 6, 7. The podcast was
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`conceived to make complex grammar questions simple for a broad audience of writers.
`
`Id. at 1]
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`6. From their outset, each podcast episode has provided advice about how to master a different
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`grammar rule or question. Id.
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`Continuously from July 2006 to the present, the podcast has been distributed under
`the GRAMMAR GIRL mark primarily via the Internet, including through the iTunes store,
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`Apple Inc.’s proprietary online digital music and video store.
`
`Id. at 1] 7. The podcast can be
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`downloaded by or streamed for free and listened to by anybody with access to a computer.
`
`Id.
`
`Beginning in July 2006, all episodes of the podcast were available at qdnow.com.
`
`Id. From
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`MIGNON FOGARTY, INC. AND MACMILLAN HOLDINGS, LLC V. JOEL AVERY
`Opposition No: 91 185105
`
`September 2007 to the present, episodes of the podcasts have been available for download at
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`grarr1rnar.quickanddirtytips.com. Id. at 1] 18. Additionally, MFI has licensed radio stations in the
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`United States and Canada to broadcast episodes of the podcast on the air. Id. at 1] 10.
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`The GRAMMAR GIRL brand podcast quickly became popular and attracted large
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`numbers of listeners. From July to December 2006, listeners downloaded over 1.7 million
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`GRAMMAR GIRL podcasts. Id. at 1] 9. As of August 2009, a total of 26,230,332 podcasts had
`
`been downloaded.
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`Id. The podcast has ranked overall in the top 40 podcasts on iTunes since
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`July 2006, and on January 25, 2007, the GRAMMAR GIRL podcast was iTunes’s number one
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`most downloaded podcast. Id. at 1] 8.
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`The podcast has also gained significant media and industry attention, confirming
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`and furthering the national reputation of the GRAMMAR GIRL mark. From November 2006 to
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`September 2007, articles about the GRAMMAR GIRL brand podcast appeared in The New York
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`‘Times, The Wall Street Journal, Washington Post, USA Today, Business Week, and Reader’s
`
`Digest as well as on CNN.com and National Public Radio. Id. at 1] 39. Also prior to September
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`2007, iTunes named the GRAMMAR GIRL podcast among the Best Podcasts of 2006; the
`podcast went on to receive the same honor from iTunes in 2007 and 2008. Id. at 1] 33, 34. The
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`podcast has received other awards from the Podcast Awards (Best Educational Podcast in August
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`2007 and November 2008) and the Podcast Peer Awards (Favorite Audio Program in August
`
`2007).
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`Id. at 1] 34. Advertisers, such as Audible.com, GoToMyPC, and PBS Kids, have also
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`purchased time on the GRAMMAR GIRL podcast to exploit the podcast’s popularity and broad
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`audience. Id. at 1] 64, 65.
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`MIGNON FOGARTY, INC. AND MACMILLAN HOLDINGS, LLC V. JOEL AVERY
`Opposition No: 91185105
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`In or about July 2006, concurrent with the podcast, MFI created an online blog
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`under the GRAMMAR GIRL mark. Id. at 1] ll, 13. Like the podcast, the blog provides friendly .
`
`and informative tips to improve its readers’ grammar usage and writing style.
`
`Id. at 1] II. The
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`blog includes the written transcript from that day’s podcast episode and is periodically
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`supplemented with additional information about the podcast topic. Id. at 1] 12.
`
`I
`
`Continuously since July 2006, the GRAMMAR GIRL blog has appeared online,
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`first on qdnow.com and since September 2007 on grarnmar.quickanddirtytips.com.
`
`Id. at 1] I3,
`
`18. As with the podcast, the blog has proven popular and won accolades, such as being named
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`1 one of the Top 10 Blogs for Writers by About.com in February 2007. Id. at 1] 36.
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`On the basis of the podcast’s success and the strength of the GRAMMAR GIRL
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`mark, MFI began partnering with Macmillan on or around January 27, 2007 to expand the
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`brand’s audience and media platforms.
`
`Id. at 1] 14, 15.
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`In March'2007, under the Macmillan
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`imprint and the GRAMMAR GIRL mark, the audiobook “Grammar Girl’s Quick and Dirty Tips
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`to Clean Up Your Writing” appeared available for download on iTunes and Audible.com.
`
`Fogarty Decl., 1] 16. The audiobook is currently sold at the retail ‘price $4.95. Fogarty Decl., 1]
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`16. Beginning in July 2007, the audiobook then appeared in a CD-ROM version at the initial list
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`price of $9.95. Id. at 1] 17.
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`In July 2008, a second book, “Grammar Girl’s Quick and Dirty Tips
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`to Better Writing” was published as a paperback for the retail price of $14.00 and was also
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`released as an audiobook retailing for $29.95.
`
`Id. at 1] 23, 24. A third and possibly fourth
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`audiobook will be released by November or December] 2009 to coincide with the publication of
`
`the next GRAMMAR GIRL print book, “The Grammar Devotional: Daily Tips for Successful
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`MIGNON FOGARTY, INC. AND MACMILLAN HOLDINGS, LLC V. JOEL AVERY
`Opposition No: 91 185105
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`Writing from Grammar Girl.” Id. at 1] 28. A forthcoming GRAMMAR GIRL print book, written
`
`for students, will be published in July 2010. Id.
`
`The first GRAMMAR GIRL audiobook was an immediate success.
`
`In March
`
`2007, a week after it was released, it was the number one most downloaded audiobook on
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`iTunes. Id. at 1] 16. Over 33,000 copies have sold in the digital and audio versions. Id. at 1[ 16,
`
`17. The second GRAMMAR GIRL title has already sold over 67,000 copies in its print and
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`digital formats.
`
`Id. at 1] 23, 24.
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`In July 2009, O, The Oprah Magazine recommended the
`
`“Grammar Girl’s Quick and Dirty Tips to Better Writing” as a “must-rea ” audiobook.
`
`Id. at 1]
`
`39.
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`Opposers’
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`finther exploited the GRAMMAR GIRL mark and expanded its
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`audience with their launch of the website, based on the audiobook title, quickanddirtytips.com on
`
`September 7, 2007. Id. at 1} 18. The website features GRAMMAR GIRL blog along with links
`
`to download the podcast and to purchase the audiobooks. Id. The GRAMMAR GIRL section of
`
`the website, grammar.quickanddirtytips.com,.consistently receives between 300,000 and 400,000
`
`page views per month and has had more than 1.1 million unique visitors since it was launched.
`
`Id. at1] 19.
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`Other expansions of the brand include the GRAMMAR GIRL e-mail newsletter,
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`first launched in or around April 2007. Id. at 1] 25.
`
`In or around December 2008, the newsletter
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`service, renamed (GRAMMAR GIRL Tip of the Day, moved to a daily format.
`
`Id. Soon after
`
`the launch of the service, the list of subscribers grew to nearly 5,000.
`
`Id. As of August 2009,
`
`there were 29,054 subscribers to the GRAMMAR GIRL Tip of the Day service, and
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`779o53_4
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`MIGNON FOGARTY, INC. AND MACMILLAN HOLDINGS, LLC V. JOEL AVERY
`Opposition No: 91 185105
`
`approximately 1,000 new subscribers sign-up each month.
`
`Id. Further expansions, currently in
`
`development,
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`include a GRAMMAR GIRL brand game,
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`two iPhone applications, and
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`GRAMMAR GIRL songs. Id. at 1] 28-31.
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`MFI and Macmillan have also actively promoted the GRAMMAR GIRL mark
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`and its products and services through the brand’s own websites, as well as through press releases,
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`social networking sites, merchandise, and new technology. See Rhorer Decl., 1] 16, 17; Fogarty
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`Decl., 1] 27, 43, 44. Macmillan, through its division Henry Holt, has distributed press materials
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`on the GRAMMAR GIRL mark to lists of over 300 media outlets including national print
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`publications, top ranked web sites and blogs, and broadcast media. Rhorer Decl., 1] 17. Prior to
`
`and continuously since September 2007, MFI has aggressively used social networking websites
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`to promote the GRAMMAR
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`mark. From January 2007 to the present, MFI has maintained
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`A a GRAMMAR GIRL MySpace page. Fogarty Decl., 1] 45. Beginning in February 2007 and
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`continuing to this day, GRAMMAR GIRL has used Twitter to send messages to subscribing
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`“followers”; as of October 6, 2009, the account had 22,355 such followers. Id. at 1] 46. The
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`GRAMMAR GIRL Flickr page was created in July 2007 to allow page members to post
`photographs documenting “public displays of bad grammar.” Id. at 1] 47. To date, members
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`have posted 612 such photographs, and the page continues to attract posts and new members.
`Since 2007, GRAMMAR GIRL videos produced by MFI as well as clips from interviews and
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`personal appearances have been available on YouTube and have been viewed by the public
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`nearly 72,000 times. Id. at 1] 49. And from March 2009, MFI has actively used a GRAMMAR
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`779o53_4
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`MIGNON FOGARTY, INC. AND MACMILLAN HOLDINGS, LLC V. JOEL AVERY
`Opposition No: 91185105
`
`GIRL Facebook profile, which currently has over 6,730 fans, to build the brand’s audience.
`
`Id.
`
`at 1] 48.
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`MFI also promotes the GRAMMAR GIRL mark with branded merchandise—t-
`
`shirts, mugs, mousepads, clocks, totebags, notepads, hats, baby clothesand Christmas cards—
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`sold via the Tip of the Day newsletter and the website Cafepress.com.
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`Id. at ‘II 27. Opposers
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`‘ have also developed widgets — computer software available for others to download an install on
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`their own websites — that play or link to GRAMMAR GIRL products and services.
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`Id. at 1} 26.
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`The first, featuring a grammar quiz was released in July 2008 and has been viewed nearly 2.5
`
`million times; the second, linking to GRAMMAR GIRL podcasts, was released in May 2009.
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`Id.
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`In addition to Opposers’ promotion of the GRAMMAR GIRL trademark, they
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`have developed the brand as an alter-ego for Mignon Fogarty who makes personal appearances
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`as “Grammar Girl” on national book tours, on radio and television programs, and as a lecturer
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`Rhorer Decl., 11 16, 18.
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`In March 2007, Mignon Fogarty appeared on “The Oprah Winfrey
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`Show” as GRAMMAR GIRL to give grammar tips. Fogarty Decl., '|] 40. Other television
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`appearances have included a segment on Channel 12 news in Arizona on February 15, 2007 and
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`on “Good Day Atlanta” on Fox Channel 5 on July 17, 2008. Id. at 1] 42. These appearances have
`also acted to promote the brand; soon following the “Grammar Girl” appearance on The Oprah
`
`Show, the GRAMMAR GIRL audiobook was the number one "most downloaded podcast on
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`iTunes. Id. at ‘H 41.
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`779o53_4
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`MIGNON FOGARTY, INC. AND MACMILLAN HOLDINGS, LLC V. JOEL AVERY
`Opposition No: 91185105
`‘
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`8 Because the style of the GRAMMAR GIRL podcast, books, and personal
`
`appearances are breezy and light, they are suitable for and enjoyed by a wide national audience,
`including casual learners, professionals, teachers, elementary school, high school, and college
`
`students.
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`Id. at 1] 57-60. Podcast listeners range from school-age students through professional
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`adults.
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`Id. at 1} 58. Teachers from all over the country, and even corporate trainers, use
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`‘GRAMMAR GIRL products or services in their curricula.
`
`Id. at 11 59, 60. The GRAMMAR
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`GIRL print book has also been adopted as required reading in college and middle school courses.
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`Id. at 1] 61.
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`The current popularity of the GRAMMAR GIRL mark and strength of the brand
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`is evidenced by the returns of a search via Google. On October 5, 2009, of the search results
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`returned for “GRAMZMAR GIRL,” 19 of the first 20 and 147 of the first 150 provided links to
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`MFI's GRAMMAR GIRL. (None of the first 150 results related to Avery or his site). Id. at 1} 68.
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`ARGUMENT
`
`SUMMARY JUDGMENT IS APPROPRIATELY GRANTED BECAUSE THERE ARE
`NO DISPUTED ISSUES OF FACT
`
`Summary judgment is appropriate “if the pleadings, depositions, answers to
`
`interrogatories, and admissions on file, together with the affidavits, if any, show that there is no
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`genuine issue as to any material fact and that the "moving party is entitled to a judgment as a
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`matter of law.” Fed. R. Civ. P. 56(c); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106
`
`S. Ct. 2548, 2551 (1986). A dispute regarding a material fact is genuine “if the evidence is such
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`that a reasonable jury could return a verdict for the nonmoving party.” Anderson v. Liberty
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`Lobby, Inc., 477 U.S. 242, 248, 106 S. Ct. 2505, 2509 (1986); Olde Tyme Foods Inc. v. R0undy’s
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`MIGNON FOGARTY, INC. AND MACMILLAN HOLDINGS, LLC V. JOEL AVERY
`Opposition No: 91 185105
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`Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992). A movant can meet its burden by
`
`pointing out the non-movant’s failure to come forward with evidence as to those elements that he
`
`would have to prove at trial. See Celotex, 477 U.S. at 324. Once the moving party has made an
`
`initial showing, the burden of proof shifts to the opposing party. See Id.; Novartis Corp. v. Ben
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`‘Venue Laboratories, Inc., 271 F.3d 1043, 1046 (Fed. Cir. 2001). To meet its burden and defeat
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`the motion, the nonmoving party must go beyond the pleadings and designate specific facts
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`which establish a genuine issue for trial. Id. A mere scintilla of evidence supporting the
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`nonmoving party’s position will not suffice; there must be enough of a showing_that the fact
`
`finder could reasonably find for that party. See Sweats Fashions, Inc. v. Pannill Knitting Co.,
`Inc., 833 F.2d 1560 (Fed. Cir. 1987).
`
`To prevail on the asserted ground of likelihood of confilsion, Opposers must
`
`demonstrate that there is no genuine issue of fact that it has prior trademark rights in its mark,
`
`and that applicant’s mark, when used in connection with app1icant’s services, is likely to cause
`
`
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`confusion with Opposers’ pleaded mark. See, e.g., Jewelers Vigilance Comm., Inc. v. Ullenberg
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`Corp., 853 F.2d 888, 893 (Fed. Cir. 1988).
`
`I
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`.
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`OPPOSERS HAVE STANDING TO CHALLENGE
`REGISTRATION OF APPLICANT’S MARK
`
`Opposers have presented uncontroverted evidence that MFI has used the mark
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`GRAMMAR GIRL in commerce in connection with a podcast beginning in July 2006 and
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`continuously since then. See Fogarty Decl. MFI’s use of the mark in commerce is sufficient to
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`establish its standing to oppose registration of Applicant’s mark. See Herbko International Inc. v.
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`Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375 (Fed. Cir. 2002).
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`779053_4
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`-9-
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`MIGNON FOGARTY, INC. AND MACMILLAN HOLDINGS, LLC V. JOEL AVERY
`Opposition No: 91 185105
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`Moreover, Macmillan as a licensee and co-venturer in the Quick and Dirty Tips
`
`website and book series, has an interest in the outcome of this proceeding and in the protection of
`
`-the GRAMMAR GIRL mark. See Rhorer Decl. Such interest also establishes its standing to
`
`oppose registration of App1icant’s mark. See 15 U.S.C. §§ 1063 and 1064, and TBMP § 303.
`
`OPPOSERS ARE THE UNDISPUTED SENIOR USERS
`
`OF THE GRAMMAR GIRL MARK
`
`I Opposers have used the GILAMMAR GIRL mark in connection with podcast
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`services beginning in July 2006 and continuing to the present. Fogarty Decl, 1] 6. Opposers have
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`also used the mark in connection with audiobooks presented digitally and on CD-ROMS since
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`July 2007 up to the present. Id. at 1] 16, 17, 24. From July 2006 to the present, Opposers have
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`used the mark in connection with a blog and, since April 2007 to the present, have used the mark
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`in connection with an e-mail newsletter. Id. at 1] 13, 25. Opposer MFI established a presence on
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`MySpace to promote its use ofthe mark beginning in January 2007. Id. at 1] 45.
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`Throughout the period fiom July 2006 to the present, MFI first alone and then
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`together with Macmillan has exploited the GRAMMAR GIRL mark and worked to expand the
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`use ofthe mark to new goods and services in new media and in new markets. See Fogarty Decl.;
`
`Rhorer Decl.
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`Applicant filed his application to register THE GRAMMAR GIRLS on
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`September 11, 2007. Lerner Decl, Exh. A and B, Admissions No. 1. Applicant has not
`
`presented any evidence that it has used the mark in commerce, or that any use can be established
`
`prior to its filing date of September 11, 2007.
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`779053_4
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`MIGNON FOGARTY, INC. AND MACMILLAN HOLDINGS, LLC V. JOEL AVERY
`Opposition No: 91185105
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`Through the clear and convincing evidence presented via the declarations of
`
`Mignon Fogarty and Richard Rhorer together with the press coverage of the GRAMMAR GIRL
`
`podcast that pre—dates Avery’s filing date — prior to which Avery admits he had not used the
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`mark (Lerner Decl, Exh. A and B, Admissions No. 2) — Opposers have clearly established that
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`they are the senior users of the mark GRAMMAR GIRL. See, e.g., Johnny BlastoflInc. v. Los
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`Angeles Rams Football Co., 188 F.3d 427, 51 USPQ2d 1920, 1925 (7th Cir. 1999) (A
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`“constructive use” date of first use can always be defeated where another party puts forth
`
`sufficient evidence of prior actual use.)
`
`MFI ALONE HOLDS OWNERSHIP RIGHTS
`
`TO THE GRAMMAR GIRL MARK
`
`In addition to establishing priority to the GRAMMAR GIRL mark, MFI has
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`demonstrated its ownership rights through its actual, continuous use of the mark in commerce
`
`since July 2006. Both the common law and the Lanham Act accord ownership rights to the first
`
`bona fide user of a mark. Hydro-Dynamics, Inc. v. George Putnam & Co., 811 F.2d 1470, 1472
`
`1 U.S.P.Q.2D 1772, 1773 (Fed. Cir. 1987); Johnny BlastoflInc., 188 F.3d at 434 (“The party
`
`who first appropriates the mark through use, and for whom the mark serves as a designation of
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`source, acquires superior rights to it.”).
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`Beginning in July 2006 and continuously since then, MFI has used the
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`GRAMMAR GIRL mark in connection with podcast services. Fogarty Decl., 1[ 6. Since July
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`2006, the podcast has been publicly available for download on the world wide web. Id. at 1] 7,
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`18. In March 2007, MFI, together with its licensee, released the first in its ongoing series of
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`audiobooks, sold on the Internet and, in the case of the CD-ROM versions, in brick and mortar
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`779053_4
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`-11-
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`MIGNON FOGARTY, INC. AND MACMILLAN HOLDINGS, LLC V. JOEL AVERY
`Opposition No: 91 185105
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`stores. Id. at 1] 16, 55.
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`_
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`Soon after lV[FI’s initial use ofthe GRAMMAR GIRL mark, the products became
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`high—sellers and the mark gained public recognition so as to be identified as a designation of
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`source. Listeners downloaded over 1.7 million GRAMMAR GIRL podcasts from July to
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`December 2007, and the podcast was the most downloaded podcast on iTunes in January 2007.
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`Id. at 1] 8, 9. In March 2007, one week after the first audiobook was released, “Grammar Girl’s
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`Quick and~Dirty Tips to Clean Up Your Writing” was the number one most downloaded
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`audiobook on iTunes. Id. at 1] 16. National newspapers, such as The New York Times, The Wall
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`Street Journal, Washington Post, and USA Today began ‘featuring articles about the GRAMMAR
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`GIRL mark and its products as early as November 2006. Id. at 1] 39. MFI has also actively
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`promoted the GRAMMAR GIRL mark through e-mail blasts and on social networking websites
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`such as MySpace and'Twitter. Id. at 1] 45-47. As a result of lV[FI’s bona fide use of the
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`GRAMMAR GIRL mark and the popular attention the mark has attracted, MFI has clearly
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`established its common law ownership rights in the GRAMMAR GIRL mark from July 2006.
`In contrast, Applicant has not presented any evidence ofits use ofthe mark prior
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`to its September 11, 2007 filing date and solely relies on the inchoate rights in the application to
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`establish a claim to the mark. An application for registration alone creates no ownership rights
`over a party which has, like MFI, established actual and continuous use ofa mark. Johnny
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`Blast0flInc., 188 F.3d at 435 (“[A] trademark application is always subject to previously
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`established common trademark rights of another party.”). Applicant thus carmot establish senior
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`rights to the mark THE GRAMMAR GIRLS.
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`779053_4
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`-12-
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`MIGNON FOGARTY, INC. AND MACMILLAN HOLDINGS, LLC V. JOEL AVERY
`Opposition No: 91185105
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`A LIKELIHOOD OF CONFUSION CLEARLY EXISTS BETWEEN
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`OPPOSERS’ GRAMMAR GIRL MARK AND
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`APPLICANT’S THE GRAMMAR GIRLS MARK
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`A This matter involves a clear case of likelihood of confusion. Opposers, the senior
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`users of the mark GRAMMAR GIRL, are objecting to the proposed registration by a new entrant
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`of the mark THE GRAMMAR GIRLS, which would likely cause confusion in the marketplace.
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`The two key considerations in the likelihood of confiision analysis are the
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`similarities between the marks and the similarities between the goods and/or services. Federated
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`Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). See
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`, also, In re E.I. DuPont de Nemours & C0., 476 F.2d 1357, 177 U.S.P.Q. 563 (CCPA 1973); In re
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`August Storck KG, 218 U.S.P.Q. 823 (TTAB 1983); In re International Telephone and
`
`, Telegraph Corp., 197 U.S.P.Q. 910 (TTAB 1978). Since the applicant’s mark is practically
`
`identical to Opposers’ mark and the goods and services have similar characteristics it is clear that
`
`there is a likelihood of confusion.
`
`Additional factors to be considered in the likelihood of COI1filSlO1’1 also weigh in
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`favor of a finding of likelihood of confiision, including:
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`1 1. The similarity or dissimilarityof established, likely-to-continue trade
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`channels.
`
`2. The conditions under which and buyers to whom sales are made, i.e.
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`“impulse” vs. careful, sophisticated purchasing.
`
`In re E.I. DuPont de Nemours & Co., 476 F.2d at 1361.
`
`779053_4
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`
`
`MIGNON FOGARTY, INC. AND MACMILLAN HOLDINGS, LLC V. JOEL AVERY
`Opposition No: 91 185105
`‘
`
`When the relevant inquiries are undertaken and the undisputed facts of this case
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`considered, it is apparent that there is a strong likelihood of confusion, and that summary
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`judgment is appropriately entered in favor of the Opposers.
`
`A.
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`The Marks Are Virtually Identical
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`"The two marks at issue here are similar in appearance, sound, meaning and
`
`commercial impression. Marks are not to be viewed solely in a side by side comparison focusing
`
`on differences, but rather, as consumers would View them in the marketplace. A & H Sportswear
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`Co., Inc. v. Victoria ’s Secret Stores, Inc., 167 F. Supp.2d 770, 783 (E.D. Pa. 2001) (consumers
`
`do not View marks side by side and are more likely to recall dominant portions and similarities);
`
`In re Wm. E. Wright Co., 185 U.S.P.Q. 445 (TTAB 1975) (consumers are not infallible in their
`
`recall of marks).
`
`Here, the similarities between the marks are obvious. The dominant element of
`
`the two marks is “GRAMMAR GIRL.” The only distinction at all is the addition of the article
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`“the” and the pluralization of the mark by Applicant. The mere additions of “the” at the
`
`. beginning of the mark and an “s” at the end of the mark do not change the overall appearance or
`
`impression created by the marks when they are viewed by consumers. Certainly as to the
`
`dominant portions of the marks there is only the difference of one letter, which does not change
`
`the sound, appearance or meaning (except as to make it plural). 3 McCarthy on Trademarks §
`
`23:44 (“If the ‘dominant’ portion of both marks is the same, then confusion may be likely,
`
`notwithstanding peripheral differences”).
`
`779053_4
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`-14-
`
`
`
`MIGNON FOGARTY, INC. AND MACMILLAN HOLDINGS, LLC V. JOEL AVERY
`Opposition No: 91185105
`
`Based on the consideration of the marks alone, therefore, there is a strong
`
`A
`
`likelihood of confusion.
`
`B.
`
`The Goods and Services Are Closely Related
`
`It is well established that thegoods ofthe parties need not be similar or
`
`competitive, or even offered through the same channels of trade, to support a holding of
`
`likelihood of confusion. Rather, it is sufficient that the respective goods of the parties be related
`
`I
`
`in some manner, and/or that the conditions and activities surrounding the marketing of the goods
`
`are such that theyiwould or could be encountered by the same persons under circumstances that
`
`could, because of the similarity of the marks, give rise to the mistaken belief that they originate
`
`from the same source. See Hilson Research, Inc. v. Societyfor Human Resource Management,
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`27 USPQ2d 1423 (TTAB 1993); In re International Telephone & Telegraph Corp., 197 USPQ
`
`910 (TTAB 1978).
`
`Nonetheless, here the Applicant’s and Opposers’ services are indeed nearly
`identical. Applicant seeks registration ofthe mark THE GRAMMAR GIRLS in connection with
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`“educational services, namely, conducting programs in the field of grammar.” He has confirmed
`
`that the programs he intends to offer include “television programs, radio programs, cartoons,
`
`motivational CDs, DVDs, blogs, seminars and games.” Lerner Decl, Exh. A and C, Responses
`
`to Interrogatories No. 4. Elsewhere he confirmed that the intended uses of the mark include:
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`blogs, websites featuring information on proper grammar usage, printed or online advice
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`columns provided via the Internet regarding proper grammar usage, books, audio books,
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`seminars, printed instructional materials, online instructional materials and live appearances, all
`
`779053_4
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`-15-
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`
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`MIGNON FOGARTY, INC. AND MACMILLAN HOLDINGS, LLC V. JOEL AVERY
`Opposition No: 91 185105
`
`of which are already offered by MFI. Lerner Decl, Exh. A and C, Responses to Interrogatories
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`No. 5.
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`MFI already offers blogs and audiobook CD-ROMSS under the GRAMMAR
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`GIRL mark. Fogarty Decl., 1] 13, 17. Moreover, both Applicant’s planned blogs and radio
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`programs are quite similar to the podcast offered under the GRAMMAR GIRL mark.
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`Furthermore, in addition to the trademark use by MFI, Mignon Fogarty is known
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`as “Grammar Girl.” She frequently makes personal appearances as “Grammar Girl,” as has
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`become known by thisi“alter-ego.” Id. at ‘H 40-42. The GrammarGirl persona, like the
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`GRAMMAR GIRL mark is well known. Avery admits that like Ms. Fogarty’s alter-ego, the
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`“Grammar Girl” at his website is the name of a character identified on the website as part of The
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`Grammar Crew and that the character, like Ms. Fogarty on her blog, in her podcasts, and her
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`personal appearances, offers tips for visitors to thegrammarcrew.com website. Lerner Decl., Exh
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`A and B, Admissions Nos. 7 and 8.
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`It is well settled that the prior user and owner of a registered trademark is entitled
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`to prevent subsequent registration by another of his mark, or one confusingly similar thereto, for
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`any product which might reasonably be expected to be produced by the registrant in the normal
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`expansion of his trade. American Cyanamid Co. v. Humble Oil & Refining Co., 370 F.2d 598,
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`600 (Cust. & Pat.App. 1966). Included in the other goods Avery purportedly considers to be
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`covered by the educational programs are games, which are already under development by MFI.
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`Lerner Decl, Exh. A and C, Responses to Interrogatories No. 4.
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`779o53_4
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`-15-
`
`
`
`MIGNON FOGARTY, INC. AND MACMILLAN HOLDINGS, LLC V. JOEL AVERY
`Opposition No: 91 185105
`
`Thus, as filed and clarified by Applicant’s responses to interrogatories, Avery’s
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`application directly conflicts with MFI’s current use of GRAMMAR GIRL for podcast services,
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`books, audiobooks and blogs and conflicts with the products and services in the natural area of
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`expansion of the mark.
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`C.
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`Other Factors to Consider
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`1. The Services Will Be Marketed in Identical Channels to Unsophisticated Buyers
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`Since there is no restriction of the channels of trade in the application filed by
`
`Avery, the goods must be assumed to travel in all typical channels for services of that type. See
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`Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002);
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`Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed.
`
`Cir. 1987); CBS Inc. v. Morrow, 708 F.2d 1579, 1581, 218 USPQ 198, 199 (Fed.Cir.l983) (the
`issue of likelihood ofconfusion is resolved by considering the “normal and usual channels of
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`trade and method of distribution”).
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`Moreover, the uncontroverted evidence establishes that Applicant offers
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`educational services online via his website at thegrammarcrew.com and that he intends the
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`website to be the primary channel of trade. Lerner Decl., Exh. A and B, Admissions No. 4.
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`Applicant also admits the services offered or intended to be offered under THE GRAMMAR
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`GIRLS mark are intended to be used by children, adults and anyone seeking to improve their
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`grammar usage. Lerner Decl., Exh. A and B, Request to Admit Nos. 12, 13, 15. Indeed,
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`Applicant expressly stated that he does not intend to limit his potential customer base at this
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`time. Lerner Decl., Exh. A and C, Responses to Interrogatories No. 6.
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`779053_4
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`-17-
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`
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`MIGNON FOGARTY, INC. AND MACMILLAN HOLDINGS, LLC V. JOEL AVERY
`Opposition No: 91 185105
`
`As clearly demonstrated by Opposers, the Internet is also the primary channel of
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`trade for the GRAMMAR GIRL services. Fogarty Dec1., 1] 50-55. Opposers’ services are
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`targeted to a wide general audience including full time students and professionals. Id. at 11 57,
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`5 8. The GRAMMAR GIRL services have already
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