Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA647767
`ESTTA Tracking number:
`12/31/2014
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91212905
`Defendant
`OCC Establishment
`CHRISTOPHER WEIMER
`FULBRIGHT & JAWORSKI LLP
`98 SAN JACINTO BLVD SUITE 1100
`AUSTIN, TX 78701
`UNITED STATES
`orbitmarks@nortonrosefulbright.com
`Answer
`Christopher Weimer
`orbitmarks@nortonrosefulbright.com
`/Christopher Weimer/
`12/31/2014
`Answer.pdf(27523 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`EMI (IP) LIMITED
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`v.
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`OCC Establishment
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`Opposer / Petitioner,
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`Applicant, Respondent.
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`§
`§
`§
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`Opposition No. 91212905
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`Application Serial No. 78/835,315
`MUSIC NOW
`Publication Date: June 11, 2013
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`Registration No. 2,100,606
`MN MUSIC NOW & Design
`Registered: September 30, 1997
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`Pursuant to Federal Rule of Civil Procedure 8(b) and Trademark Rule 2.106, Applicant
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`ANSWER TO COMBINED NOTICE OF OPPOSITION AND PETITION TO CANCEL
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`and Respondent OCC Establishment (“Applicant” or “OCC”) answers the Combined Notice of
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`Opposition and Petition to Cancel (“Combined “Notice”) filed by EMI (IP) Limited (“Opposer”
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`or “EMI”). The paragraph numbers below correspond to those in the Combined Notice. OCC
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`reserves the right to amend or supplement this Answer as appropriate. To the extent any
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`averment in the Combined Notice is not specifically admitted herein, any such averment is
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`denied.
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`I. ANSWER
`Introductory Paragraph: To the extent any response is required to the statements in the
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`introductory paragraph to the Combined Notice, OCC is without knowledge or information
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`sufficient to form a belief as to the place of incorporate or address of EMI. OCC denies that EMI
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`would be damaged by the issuance of a registration to OCC Establishment (“OCC”) for the
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`MUSIC NOW word mark set forth in Application Serial No. 78/835,315 (the “Application”) and
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`further denies that EMI is being damaged and will continue to be damaged by OCC’s registration
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`for the MUSIC NOW and Design mark set forth in Registration No. 2,100,606 (the
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`“Registration”).1
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`1.
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`OCC is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations in Paragraph 1 of the Combined Notice and therefore denies each and
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`every allegation contained therein.
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`2.
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`OCC is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations in Paragraph 2 of the Combined Notice and therefore denies each and
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`every allegation contained therein.
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`3.
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`4.
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`Denied.
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` OCC is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations in Paragraph 4 of the Combined Notice and therefore denies each and
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`every allegation contained therein.
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`5.
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`OCC is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations in Paragraph 5 and therefore denies each and every allegation
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`contained therein.
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`6.
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`OCC admits that USPTO records indicate that EMI is the owner of: (1) U.S. Reg.
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`No. 2,112,881 for NOW in International class 9; (2) U.S. Reg. No. 4,211,879 for NOW in
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`International Classes 9, 35, 38, 41 and 45; (3) U.S. Reg. No. 2,484,158 for NOW! MUSIC in
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`International Classes 9; (4) U.S. Reg. No. 2,462,073 for NOW DANCE in International Class
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`9; (5) – (6) U.S. Reg. Nos. 3,506,405 and 2,089,508 for NOW THAT’S WHAT I CALL
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`MUSIC in International Classes 41 and 9; and (7) U.S. Reg. No. 3,370,350 for NOW ¡ESTO
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`1 OCC adopts for purposes of this Answer EMI’s convention of referring to the Application and Registration
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`ES MUSICA! LATINO in International Class 9. OCC is without knowledge or information
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`sufficient to form a belief as to the truth of the remaining allegations in Paragraph 6 of the
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`Combined Notice and therefore denies each and every remaining allegation contained therein.
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`7.
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`OCC is without knowledge or information sufficient to form a belief as to the
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`truth of the allegation that “the foregoing registrations are valid, subsisting, and in full force
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`and effect.” The remaining allegations in Paragraph 7 constitute legal conclusions to which
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`no response is required. To the extent that any response is required, the allegations are
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`denied.
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`8.
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`OCC admits deletion of the Section 1(b) filing basis eliminated the requirement
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`of providing a specimen of use prior to registration.
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`9.
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`Denied.
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`10. Admitted.
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`11. OCC admits that on or about March 30, 2004 it submitted a Declaration Under
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`Section 8 Based on Excusable Nonuse along with Comments in Support of the Declaration
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`Under Section 8 Based on Excusable Nonuse. OCC denies the remaining allegations in
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`Paragraph 11 of the Combined Notice.
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`12. OCC admits that on or about March 31, 2008, OCC submitted the document titled
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`Combined Declaration of Use In Commerce & Application For Renewal of Registration of A
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`Mark Under Sections 8 & 9 containing an explanation of excusable nonuse made of record.
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`The remaining allegations in Paragraph 12 are denied.
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`13. Denied.
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`together as the “Contested Marks.”
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`14. OCC admits that there has been at least one period of three years in which OCC
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`did not use the MUSIC NOW and Design Mark in the United States. OCC denies the
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`remaining allegations in Paragraph 14.
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`15. Denied.
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`16. Admitted.
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`17. OCC is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations in Paragraph 17 of the Combined Notice and therefore denies each
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`and every allegation contained therein.
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`18. OCC admits that the Application was published for opposition on June 11, 2013
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`and that EMI’s time to oppose the Application was extended until October 9, 2013.
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`19. Denied.
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`20. Denied.
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`21. OCC is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations in Paragraph 21 and therefore denies each and every allegation
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`contained therein.
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`22. OCC is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations in Paragraph 22 and therefore denies each and every allegation
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`contained therein.
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`23. OCC is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations in Paragraph 23 and therefore denies each and every allegation
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`contained therein.
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`24. Denied.
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`25. OCC denies that the NOW Marks are distinctive. OCC is without knowledge or
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`information sufficient to form a belief as to the truth of the remaining allegations in
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`Paragraph 25 of the Combined Notice.
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`26. Denied.
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`27. Denied.
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`28. Denied.
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`29. Denied.
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`30. Denied.
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`31. Denied.
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`32. OCC is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations in Paragraph 32 of the Combined Notice and therefore denies each
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`and every allegation contained therein.
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`Prayer: To the extent that any response is required to the final paragraph of EMI’s
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`Combined Notice, OCC denies that the Board should sustain EMI’s Combined Notice and that
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`EMI is entitled to any relief.
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`II. AFFIRMATIVE DEFENSES
`EMI’s claims are barred by the doctrines of laches, acquiescence, estoppel, and
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`1.
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`waiver.
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`2.
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`EMI’s claims are barred in whole or in part due to EMI’s failure to adequately
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`police against third-party uses of “NOW” and similar phrases. EMI’s failure to adequately police
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`its own marks is such that it has abandoned, in whole or in part, its rights to enforce its
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`trademarks.
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`3.
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`EMI’s claims are barred because it has acquiesced to third-party use of “NOW”
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`and NOW-formative marks in connection with goods and services more closely related to EMI’s
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`goods and services than to the services marked in connection with the MUSIC NOW mark.
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`Respectfully submitted,
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`By: /s Christopher M. Weimer /
`Christopher M. Weimer
`Texas Bar No. 24061894
`Orbitmarks@nortonrosefulbright.com
`FULBRIGHT & JAWORSKI L.L.P.
`98 San Jacinto Blvd., Suite 1100
`Austin, TX 78701
`Tel. (512) 474-5201
`Fax (512) 536-4598
` _____________________________________
`Attorney for OCC ESTABLISHMENT
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`Date: December 31, 2014
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`CERTIFICATE OF SERVICE I hereby certify that a true and correct copy of the foregoing,
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`“Answer” has been served on Opposer by mailing said copy on December 31, 2014, via email to:
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`Brent S. LaBarge
`Business and Legal Affairs – Trademark Group
`Universal Music Group
`2220 Colorado Avenue
`Santa Monica, California 90404
`Brent.LaBarge@umusic.com
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`/s Christopher M. Weimer /
`Christopher M. Weimer
