Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA884066
`
`Filing date:
`
`03/19/2018
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91212905
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Defendant
`OCC Establishment
`
`CHRISTOPHER WEIMER
`NORTON ROSE FULBRIGHT US LLP
`98 SAN JACINTO BLVD SUITE 1100
`AUSTIN, TX 78701-4078
`UNITED STATES
`Email: aoipdocket@nortonrosefulbright.com, orbit-
`marks@nortonrosefulbright.com, chris.weimer@nortonrosefulbright.com,
`ruth.przygoda@nortonrosefulbright.com
`
`Motion to Dismiss 2.132
`
`Christopher M. Weimer
`
`chris.weimer@nortonrosefulbright.com, orbitmarks@nortonrosefulbright.com,
`ruth.przygoda@nortonrosefulbright.com
`
`Signature
`
`Date
`
`/Christopher M. Weimer/
`
`03/19/2018
`
`Attachments
`
`2018.03.19 - Motion for Judgment.pdf(353046 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application Serial No. 78/835,315
`
`EMI (IP) LIMITED,
` Opposer,
`
`v.
`OCC ESTABLISHMENT,
`Applicant.
`
`)
`)
`)
`)
`)
`)
`)
`
`
`
`-and-
`
`In the matter of Registration No. 2,100,606
`
`EMI (IP) LIMITED,
`Petitioner,
`
`v.
`OCC ESTABLISHMENT,
`Respondent.
`
`)
`)
`)
`)
`)
`)
`)
`
`Opposition No. 91212905
`
`Cancellation No. 92058236
`
`APPLICANT’S MOTION FOR JUDGMENT
`
`Applicant/Respondent, OCC Establishment (“Applicant”), by and through its attorneys, moves
`
`the Trademark Trial and Appeal Board (the “Board”) for judgment in this consolidated proceeding
`
`against Opposer/Petitioner, EMI (IP) Limited (“Opposer”). Applicant moves for judgment on two
`
`independent grounds: (i) first, pursuant to 37 CFR § 2.132, because Opposer’s testimony period
`
`has passed and Opposer has not taken testimony or offered any other evidence; and (ii) second,
`
`pursuant to Fed. R. Civ. P. 56, because Opposer has not responded to Applicant’s First Set of
`
`Requests for Admission, which admissions are now deemed conclusively established.
`
`42693494.3
`
`- 1 -
`
`

`

`I. RELEVANT FACTS AND PROCEDURAL STATUS
`
`Applicant applied to register the mark MUSIC NOW in connection with “Television
`
`broadcasting,” in Class 38 on March 13, 2006, filed as U.S. Application Serial No. 78/835,315
`
`(the “Application”). On October 9, 2013, Opposer filed its Notice of Opposition against the
`
`Application based on the grounds that it is likely to cause confusion with Opposer’s registered
`
`marks, including NOW, NOW! MUSIC, NOW DANCE, NOW THAT’S WHAT I CALL MUSIC
`
`AND NOW ¡ESTO ES MUSICA! LATINO, as covered by U.S. Federal Registration Nos.
`
`2,112,881; 4,211,879; 2,484,158; 2,462,073; 3,506,405; 2,089,508; and 3,370,350 (“Opposer’s
`
`Marks”). See Notice of Opposition. The same day, Opposer filed Cancellation Proceeding
`
`92058236 against Applicant’s U.S. Registration No. 2,100,606 for the mark MN MUSIC NOW.
`
`On November 27, 2013, the Board consolidated both the Opposition and Cancellation proceedings
`
`into Opposition Proceeding No. 91212905 (the “Proceeding”).
`
`Applicant filed its Answer in the consolidated Proceeding on December 31, 2014. Both prior
`
`and subsequent to Applicant’s filing of its Answer, the parties had been engaged in settlement
`
`discussions in an effort to resolve the disputes at issue in this Proceeding, leading to the filing of
`
`several extensions and consented motions to suspend the Proceeding. On September 5, 2017,
`
`Applicant provided substantive feedback and posed several questions to Opposer regarding a
`
`settlement proposal. That same day, Applicant filed a consented motion for a 60-day suspension
`
`which was granted. Since that time, Applicant’s has contacted Opposer’s counsel numerous times
`
`seeking feedback regarding the settlement proposal, but has not yet received a response.
`
`Since the last 60-day suspension was granted, Applicant’s Pretrial Disclosures deadline passed
`
`on December 20, 2017 and Applicant’s 30-day Trial Period ended on February 3, 2018. On
`
`February 20, 2018, after unsuccessfully attempting to reach Opposer’s counsel for consent and for
`
`42693494.3
`
`- 2 -
`
`

`

`input on the settlement issues, Applicant filed a unilateral Motion to Suspend, seeking a 30-day
`
`suspension to allow the parties to continue discussing potential settlement, which Motion was
`
`granted. Presently, Applicant’s Pretrial Disclosures are due March 19, 2018.
`
`II. MOTION FOR JUDGMENT PURSUANT TO 37 CFR § 2.132
`
`A.
`
`Applicable Law
`
`Pursuant to 37 CFR § 2.132 and TBMP § 534, a defendant may file a motion for judgment
`
`when a plaintiff’s testimony period has passed and the plaintiff has not taken testimony or offered
`
`any other evidence. See TBMP §534.02. As the TBMP states, “[i]n such a situation, the defendant
`
`may, without waiving its right to offer evidence in the event the motion is denied, move for
`
`dismissal for failure of the plaintiff to prosecute.” Id.; see also, e.g., Iodine Software, LLC v.
`
`Iodine, Inc., Opposition No. 91217516 (June 13, 2016) (not precedential).
`
`B.
`
`Applicant is Entitled to Judgment Because Opposer Has Not Taken Evidence
`or Offered Testimony
`
`In this Proceeding, Opposer has not taken any evidence or offered any testimony. As set forth
`
`above, Applicant’s Pretrial Disclosures deadline passed on December 20, 2017 and Applicant’s
`
`30-day Trial Period ended on February 3, 2018. During this time, Opposer has not introduced any
`
`testimony to the Board. Accordingly, Applicant seeks judgment pursuant to Trademark Rule
`
`2.132(a) for Opposer’s failure to prosecute its case in this Proceeding.
`
`III. MOTION FOR JUDGMENT PURSUANT TO FED. R. CIV. P. 56
`
`A.
`
`Admissions
`
`The Trademark Trial and Appeal Board Manual of Procedure provides that “[a]ny matter
`
`admitted (either expressly, or for failure to timely respond) under Fed. R. Civ. P. 36(a) is
`
`conclusively established unless the Board, on motion, permits withdrawal or amendment of the
`
`42693494.3
`
`- 3 -
`
`

`

`admission.” TBMP § 407.04. Federal Rule of Civil Procedure 36 states in relevant part that “[a]
`
`matter is admitted unless, within 30 days after being served, the party to whom the request is
`
`directed serves on the requested party a written answer or objection addressed to the matter and
`
`signed by the party or its attorney.” Fed. R. Civ. P. 36(a)(3). “If a party on which requests for
`
`admission have been served fails to file a timely response thereto, the requests will stand admitted
`
`unless the party is able to show that its failure to timely respond was the result of excusable neglect;
`
`or unless a motion to withdraw or amend the admissions is filed pursuant to Fed. R. Civ. P. 36(b),
`
`and granted by the Board.” TBMP § 411.03.
`
`B. Summary Judgment Standards
`
`Summary judgment is proper when the pleadings and discovery show “that there is no
`
`genuine issue as to any material fact and that the moving party is entitled to judgment as a matter
`
`of law.” Celotex v. Catrett, 477 U.S. 317, 322 (1986); Fed. R. Civ. P. 56(c); TBMP § 528.01.
`
`The motion for summary judgment will be granted “if the pleadings, depositions, answers to
`
`interrogatories, and admissions on file, together with the affidavits, if any, show there is no
`
`genuine issue as to any material fact and that the moving party is entitled to judgment as a matter
`
`of law.” Fed. R. Civ. P. 56(c).
`
`Any matter admitted under Federal Rule of Civil Procedure 36 is conclusively established.
`
`See TBMP § 407.04; Texas Dep’t of Transp. v. Tucker, 95 U.S.P.Q.2d 1241 (TTAB 2010).
`
`Admissions obtained by Fed. R. Civ. P. 36 form a proper basis for summary judgment if there
`
`is no genuine dispute as to any material fact. See, e.g., Fram Trak Indus., Inc., v. Wiretracks LLC,
`
`77 U.S.P.Q.2d 2000 (TTAB 2006) (granting summary judgment based in part on deemed
`
`admissions); E. & J. Gallo Winery v. Fine Spirits Distribution, LLC, Opp. No. 91175854
`
`(TTAB 2008) (not precedential); Florida Engineered Construction Prods. Corp. v. Cast-Crete
`
`42693494.3
`
`- 4 -
`
`

`

`Inc., Opp. No. 91159554, 2006 TTAB LEXIS 132 (TTAB 2006) (not precedential); Fountain
`
`of Youth Props., Inc. v. Pucktt, Opp. No. 91163924, 2005 TTAB LEXIS 513 (TTAB Nov. 23,
`
`2005) (not precedential).
`
`C. Applicant is Entitled to Summary Judgment Based on Opposer’s Lack of Response
`to Requests for Admission
`
`Applicant served its Requests for Admission on August 12, 2015. See Declaration of
`
`Christopher M. Weimer, attached as Exhibit A. Pursuant to the agreement of counsel for the parties
`
`to this Proceeding, the parties agreed to extend Opposer’s discovery response deadline to coincide
`
`with the close of the discovery period set forth in the consented suspension requests submitted in
`
`this Proceeding. Id. The last consented suspension in this Proceeding was granted September 14,
`
`2017, and contained a deadline for the discovery period to close on November 5, 2017. Pursuant
`
`to the parties’ agreements regarding discovery, Opposer’s responses to Applicant’s Requests for
`
`Admission were also due November 5, 2017. To date, Opposer has not responded to Applicant’s
`
`Requests for Admission. Id. The full set of Requests for Admission are attached hereto as Exhibit
`
`A-1.
`
`Because Opposer has failed to respond to Applicant’s requests, the admissions in Applicant’s
`
`First Set of Requests for Admission are deemed admitted as a matter of law. By not responding,
`
`Opposer has admitted each of the statements set out Applicant’s First Set of Requests for
`
`Admission, which include elements sufficient to establish summary judgment in favor of
`
`Applicant, including specifically: (i) that no likelihood of confusion exists between the marks at
`
`issue; (ii) that Opposer’s marks are not famous, and (iii) that Opposer lacks standing to bring this
`
`Proceeding.
`
`42693494.3
`
`- 5 -
`
`

`

`Opposer has admitted that no likelihood of confusion exists between Opposer’s marks asserted
`
`in this Proceeding and the Applicant’s marks at issue, which forecloses its claims under Section
`
`2(d). See Requests for Admission Nos. 1 – 15. Opposer also admitted that its marks are not famous,
`
`which forecloses its claims for dilution under Section 43(c) as asserted in this Proceeding. See
`
`Request for Admission No. 13. Additionally, Opposer has admitted that it will not be damaged by
`
`the continued registration of U.S. Reg. No. 2,100,606 or by the registration of the mark that is the
`
`subject of U.S. Application Serial No. 78/835,315, which eliminates its standing to bring these
`
`actions. See Requests for Admission Nos. 16–17. In the same way, Opposer has admitted that it
`
`has not used the NOW marks it asserts in this Proceeding in connection with the goods and/or
`
`services covered. (Requests for Admission Nos. 23–82).
`
`As a result of these admissions, Applicant has conclusively established no likelihood of
`
`confusion exists between the marks at issue, that there can be no actionable dilution, that Opposer
`
`will not be harmed by the continued registration of U.S. Reg. No. 2,100,606 or the registration of
`
`U.S. App. Serial No. 78/835,315, and that Applicant is entitled to summary judgment on each of
`
`Opposer’s claims set out in this Proceeding. Given Opposer’s admissions described above, there
`
`are no remaining issues of material fact and summary judgment is appropriate.
`
`CONCLUSION
`
`
`
`For the foregoing, reasons, Applicant respectfully requests that the Board grant its Motion
`
`for Judgment, that the Opposition and Cancellation proceeding be dismissed with prejudice, and
`
`that Applicant’s Application be allowed to proceed to Registration.
`
`
`
`
`
`42693494.3
`
`- 6 -
`
`

`

`Date: Monday, March 19, 2018
`
`Respectfully,
`
`/Christopher M. Weimer /
`Christopher M. Weimer
`Norton Rose Fulbright US LLP
`98 San Jacinto Blvd., Suite 1100
`Austin, TX 78701-4078
`Tel. (512) 474-5201
`Fax (512) 536-4598
`Chris.weimer@nortonrosefulbright.com
`
`ATTORNEY FOR APPLICANT
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the following foregoing Motion for Judgment
`
`had been served on counsel for Opposer, Brent Labarge, by forwarding said copy today, March
`
`19, 2018, via email to:
`
`Brent.labarge@umusic.com
`
`Universal Music Group
`2220 Colorado Avenue
`Santa Monica, CA 90404
`
`By: /Christopher M. Weimer /
`Christopher M. Weimer
`
`42693494.3
`
`- 7 -
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application Serial No. 78/835,315
`
`EMI (IP) LIMITED,
` Opposer,
`
`v.
`OCC ESTABLISHMENT,
`Applicant.
`
`)
`)
`)
`)
`)
`)
`)
`
`
`
`-and-
`
`In the matter of Registration No. 2,100,606
`
`EMI (IP) LIMITED,
`Petitioner,
`
`v.
`OCC ESTABLISHMENT,
`Respondent.
`
`)
`)
`)
`)
`)
`)
`)
`
`Opposition No. 91212905
`
`Cancellation No. 92058236
`
`DECLARATION OF CHRISTOPHER WEIMER
`
`I, Christopher M. Weimer, make the following declaration based upon personal knowledge
`
`and declare as follows:
`
`1.
`
`2.
`
`I am a Senior Associate of Norton Rose Fulbright US LLP in Austin, Texas.
`
`On August 12, 2015, acting as counsel for Applicant, I served Opposer with written
`
`discovery, including Applicant’s First Set of Requests for Admission, by e-mail to counsel of
`
`record for Opposer. A true and correct PDF copy of the e-mail correspondence in question is
`
`attached hereto as Exhibit A1. A true and correct copy of Applicant’s First Set of Requests for
`
`Admission—which were attached as the file titled “50884278.pdf” to the e-mail correspondence
`
`included as Exhibit A1—are attached hereto as Exhibit A2.
`
`Exhibit A
`
`

`

`3.
`
`By agreement of the parties to this Proceeding, Opposer’s deadline to respond to
`
`Applicant’s discovery expired concurrently with the expiration of the discovery period, as
`
`extended by the parties’ consented motions to suspend. The last consented suspension in this
`
`Proceeding was granted September 14, 2017, and contained a deadline for the discovery period to
`
`close on November 5, 2017. To date, Applicant has not been served with responses to Applicant’s
`
`First Set of Requests for Admissions.
`
`The undersigned being warned that willful false statements and the like are punishable by fine or
`
`imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements and the like
`
`may jeopardize the validity of the application or document or any registration resulting
`
`therefrom, declares that all statements made of his own knowledge are true; and all statements
`
`made on information and belief are believed to be true.
`
`Executed in Austin, Texas on this sixteenth day of March, 2018.
`
`________________________
`Christopher M. Weimer
`
`

`

`Weimer, Christopher
`From:
`Sent:
`To:
`Cc:
`Subject:
`Attachments:
`
`Dea(cid:396) B(cid:396)e(cid:374)t,  
`
`Weimer, Christopher
`Wednesday, August 12, 2015 5:52 PM
`'LaBarge, Brent'
`Orbit Marks
`RE: EMI v. OCC - MUSIC NOW proceeding (TTAB No. 91/212,905)
`50884277.pdf; 50884278.pdf; 50884276_2.pdf
`
`Follo(cid:449)i(cid:374)g up o(cid:374) (cid:373)(cid:455) (cid:448)oi(cid:272)e(cid:373)ail of Mo(cid:374)da(cid:455), please let us k(cid:374)o(cid:449) if EMI has had a(cid:374) oppo(cid:396)tu(cid:374)it(cid:455) to (cid:272)o(cid:374)side(cid:396) the settle(cid:373)e(cid:374)t 
`p(cid:396)oposals of ou(cid:396) (cid:272)lie(cid:374)t, OCC Esta(cid:271)lish(cid:373)e(cid:374)t, i(cid:374) (cid:396)elatio(cid:374) to the a(cid:271)o(cid:448)e‐(cid:396)efe(cid:396)e(cid:374)(cid:272)ed oppositio(cid:374) p(cid:396)o(cid:272)eedi(cid:374)g. 
`
`As I (cid:373)e(cid:374)tio(cid:374)ed i(cid:374) (cid:373)(cid:455) (cid:373)essage, i(cid:374) light of up(cid:272)o(cid:373)i(cid:374)g deadli(cid:374)es i(cid:374) the (cid:272)ase, (cid:449)e ha(cid:448)e p(cid:396)epa(cid:396)ed a(cid:374)d a(cid:396)e atta(cid:272)hi(cid:374)g he(cid:396)e a set 
`of dis(cid:272)o(cid:448)e(cid:396)(cid:455) (cid:396)e(cid:395)uests desig(cid:374)ed to p(cid:396)ese(cid:396)(cid:448)e ou(cid:396) (cid:272)lie(cid:374)t’s (cid:396)ights.  We a(cid:396)e (cid:449)illi(cid:374)g to g(cid:396)a(cid:374)t e(cid:454)te(cid:374)sio(cid:374)s i(cid:374) (cid:396)espo(cid:374)di(cid:374)g to the 
`dis(cid:272)o(cid:448)e(cid:396)(cid:455) (cid:396)e(cid:395)uests so lo(cid:374)g as the pa(cid:396)ties (cid:271)e(cid:272)o(cid:373)e e(cid:374)gaged i(cid:374) a(cid:272)ti(cid:448)e settle(cid:373)e(cid:374)t dis(cid:272)ussio(cid:374)s, a(cid:374)d ge(cid:374)e(cid:396)all(cid:455) (cid:449)e (cid:396)e(cid:373)ai(cid:374) 
`(cid:449)illi(cid:374)g to (cid:449)o(cid:396)k (cid:449)ith (cid:455)ou i(cid:374) fi(cid:374)di(cid:374)g a(cid:374) a(cid:373)i(cid:272)a(cid:271)le (cid:396)esolutio(cid:374) to this dispute. 
`
`We look fo(cid:396)(cid:449)a(cid:396)d to hea(cid:396)i(cid:374)g f(cid:396)o(cid:373) (cid:455)ou. 
`
`Rega(cid:396)ds, 
`Ch(cid:396)is  
`
`From: Weimer, Christopher
`Sent: Thursday, May 28, 2015 1:53 PM
`To: 'LaBarge, Brent'
`Cc: Orbit Marks
`Subject: RE: EMI v. OCC - MUSIC NOW proceeding (TTAB No. 91/212,905)
`
`B(cid:396)e(cid:374)t,  
`
`Please let us k(cid:374)o(cid:449) if (cid:455)ou ha(cid:448)e (cid:396)e(cid:272)ei(cid:448)ed a(cid:374)(cid:455) feed(cid:271)a(cid:272)k (cid:396)ega(cid:396)di(cid:374)g the settle(cid:373)e(cid:374)t p(cid:396)oposal a(cid:374)d the additio(cid:374)al i(cid:374)fo(cid:396)(cid:373)atio(cid:374) 
`(cid:449)e p(cid:396)o(cid:448)ided o(cid:374) Fe(cid:271). (cid:1013).  I(cid:374) (cid:455)ou(cid:396) (cid:373)essage of Ap(cid:396)il (cid:1006)(cid:1004) (cid:455)ou said that (cid:455)ou e(cid:454)pe(cid:272)ted to ha(cid:448)e feed(cid:271)a(cid:272)k sho(cid:396)tl(cid:455).    
`
`Ki(cid:374)d (cid:396)ega(cid:396)ds, 
`  Ch(cid:396)is 
`
`Christopher Weimer | Sr. Associate 
`98 San Jacinto Blvd., Suite 1100
`Austin, Texas 78701-4255
`Tel +1 512 536 4553 | Fax +1 512 536 4598
`chris.weimer@nortonrosefulbright.com
`
`NORTON ROSE FULBRIGHT
`
`From: LaBarge, Brent [mailto:Brent.LaBarge@umusic.com]
`Sent: Monday, April 20, 2015 8:50 PM
`To: Weimer, Christopher
`
`1
`
`Exhibit A1
`
`

`

`THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`EMI (IP) LIMITED
`
`Opposer / Petitioner
`
`v.
`
`OCC ESTABLISHMENT
`
`Applicant / Respondent
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`Opposition No. 91212905
`
`Application Serial No. 78/835,315
`MUSIC NOW
`Publication Date: June 11, 2013
`
`Registration No. 2,100,606
`MN MUSIC NOW & Design
`Registered: September 30, 1997
`
`APPLICANT’S FIRST SET OF REQUESTS FOR ADMISSION TO OPPOSER
`
`Applicant, OCC Establishment (“Applicant”), in accordance with Rule 36 of the Federal
`
`Rules of Civil Procedure and Rules 2.116 and 2.120 of the Trademark Rules of Practice, hereby
`
`serves the following Requests for Admission to Opposer EMI (IP) Limited (“Opposer”).
`
`DEFINITIONS AND INSTRUCTIONS
`
`The definitions and instructions forming part of Applicant’s First Set of Interrogatories to
`
`Opposer and Applicant’s First Set of Requests for Production of Documents and Materials,
`
`served concurrently herewith, are hereby incorporated by reference.
`
`REQUESTS FOR ADMISSIONS
`
`1.
`
`Admit that the mark which is the subject of Application Serial No. 78/835,315
`
`and the NOW Marks differ in appearance.
`
`2.
`
`Admit that that the mark which is the subject of Application Serial No.
`
`78/835,315 and the NOW Marks differ in sound.
`
`50884278.3
`
`-1-
`
`Exhibit A2
`
`

`

`3.
`
`Admit that that the mark which is the subject of Application Serial No.
`
`78/835,315 and the NOW Marks differ in meaning.
`
`4.
`
`Admit that the mark which is the subject of Application Serial No. 78/835,315
`
`and the NOW Marks differ in commercial impression.
`
`5.
`
`Admit that the mark which is the subject of Registration No. 2,100,606 and the
`
`NOW Marks differ in appearance.
`
`6.
`
`Admit that that the mark which is the subject of Registration No. 2,100,606 and
`
`the NOW Marks differ in sound.
`
`7.
`
`Admit that that the mark which is the subject of Registration No. 2,100,606 and
`
`the NOW Marks differ in meaning.
`
`8.
`
`Admit that the mark which is the subject of Registration No. 2,100,606 and the
`
`NOW Marks differ in commercial impression.
`
`9.
`
`Admit that the mark which is the subject of Registration No. 2,100,606 is not
`
`identical to any of the NOW Marks.
`
`10.
`
`Admit that the nature of the goods and services covered in registrations for the
`
`NOW Marks differs from the nature of the goods and services covered by Applicant’s
`
`Application Serial No. 78/835,315 and Registration No. 2,100,606.
`
`11.
`
`Admit that the trade channels for the goods and services covered in registrations
`
`for the NOW Marks differ from the trade channels for the goods and services covered by
`
`Applicant’s Application Serial No. 78/835,315 and Registration No. 2,100,606.
`
`12.
`
`Admit that the conditions under which buyers purchase goods or services offered
`
`under the NOW Marks differ from the conditions under which buyers purchase goods or services
`
`offered under Applicant’s Mark
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`13.
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`14.
`
`Admit that the NOW Marks are not famous.
`
`Admit that you are unaware of any actual confusion between the NOW Marks and
`
`Applicant’s Mark.
`
`15.
`
`Admit that no likelihood of confusion exists between the NOW Marks and
`
`Applicant’s Mark.
`
`16.
`
`Admit that Opposer will not be damaged by the continued registration of U.S.
`
`Reg. No. 2,100,606.
`
`17.
`
`Admit that Opposer will not be damaged by the registration of the mark of
`
`Application Serial No. 78/835,315.
`
`18.
`
`Admit that Applicant’s use of Applicant’s Mark will not injure any reputation or
`
`goodwill that Opposer has established in the NOW Marks.
`
`19.
`
`Admit that the mark which is the subject of Application Serial No. 74/581,903
`
`was published for opposition on October 10, 1995.
`
`20.
`
`Admit that prior to filing this Opposition proceeding, Opposer took no action to
`
`oppose the mark of Application Serial No. 74/581,903.
`
`21.
`
`Admit that that prior to filing this Opposition proceeding, Opposer took no action
`
`to address Applicant’s use of the words “music now” until 2013.
`
`22.
`
`Admit that U.S. Reg. No. 2,100,606 is prima facie evidence of Registrant’s
`
`exclusive right to use the MUSIC NOW text and design for the services for which it is registered.
`
`23.
`
`Admit that with regard to Reg. No. 2,112,881 for the NOW mark, there has been
`
`at least one period of three or more consecutive years since November 11, 1997 during which
`
`EMI did not use the mark in connection with “musical sound recordings”
`
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`24.
`
`Admit that with regard to Reg. No. 2,112,881 for the NOW mark, there has been
`
`at least one period of three or more consecutive years since November 11, 1997 during which
`
`EMI did not use the mark in connection with “musical video recordings”
`
`25.
`
`Admit that with regard to Reg. No. 2,112,881 for the NOW mark, EMI has never
`
`used the mark in commerce in connection with “musical sound recordings”
`
`26.
`
`Admit that with regard to Reg. No. 2,112,881 for the NOW mark, EMI has never
`
`used the mark in commerce in connection with “musical video recordings”
`
`27.
`
`Admit that with regard to Reg. No. 4,211,8791 for the NOW mark, EMI has never
`
`used the mark in commerce in connection with “musical sound recordings”
`
`28.
`
`Admit that with regard to Reg. No. 4,211,8791 for the NOW mark, EMI has never
`
`used the mark in commerce in connection with “audiovisual recordings featuring music”
`
`29.
`
`Admit that with regard to Reg. No. 4,211,8791 for the NOW mark, EMI has never
`
`used the mark in commerce in connection with “enhanced musical sound recordings”
`
`30.
`
`Admit that with regard to Reg. No. 4,211,8791 for the NOW mark, EMI has never
`
`used the mark in commerce in connection with “enhanced audiovisual recordings featuring
`
`music”
`
`31.
`
`Admit that with regard to Reg. No. 4,211,8791 for the NOW mark, EMI has never
`
`used the mark in commerce in connection with “interactive musical sound recordings”
`
`32.
`
`Admit that with regard to Reg. No. 4,211,8791 for the NOW mark, EMI has never
`
`used the mark in commerce in connection with “interactive audiovisual recordings featuring
`
`music”
`
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`33.
`
`Admit that with regard to Reg. No. 4,211,8791 for the NOW mark, EMI has never
`
`used the mark in commerce in connection with “DVDs and CD-ROMs featuring music and
`
`musical performances, namely, performances of musical artists”
`
`34.
`
`Admit that with regard to Reg. No. 4,211,8791 for the NOW mark, EMI has never
`
`used the mark in commerce in connection with “downloadable musical sound recordings”
`
`35.
`
`Admit that with regard to Reg. No. 4,211,8791 for the NOW mark, EMI has never
`
`used the mark in commerce in connection with “downloadable digital musical sound recordings
`
`provided from MP3 Internet websites”
`
`36.
`
`Admit that with regard to Reg. No. 4,211,8791 for the NOW mark, EMI has never
`
`used the mark in commerce in connection with “retail store services featuring musical sound
`
`recordings, audiovisual recordings featuring music, enhanced musical sound recordings,
`
`enhanced audiovisual recordings featuring music, interactive musical sound recordings,
`
`interactive audiovisual recordings featuring music, and DVDs and CD-ROMs featuring music
`
`and musical performances, downloadable musical sound recordings, downloadable digital
`
`musical sound recordings provided from MP3 Internet web sites”
`
`37.
`
`Admit that with regard to Reg. No. 4,211,8791 for the NOW mark, EMI has never
`
`used the mark in commerce in connection with “promoting the goods and services of others in
`
`the recording industry and in the music industry through the distribution of printed and audio
`
`promotional materials; management of performing artists”
`
`38.
`
`Admit that with regard to Reg. No. 4,211,8791 for the NOW mark, EMI has never
`
`used the mark in commerce in connection with the “electronic transmission of digital music and
`
`information concerning music and musical performances”
`
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`39.
`
`Admit that with regard to Reg. No. 4,211,8791 for the NOW mark, EMI has never
`
`used the mark in commerce in connection with the “electronic transmission of news and current
`
`affairs information relating to music or musical performances”
`
`40.
`
`Admit that with regard to Reg. No. 4,211,8791 for the NOW mark, EMI has never
`
`used the mark in commerce in connection with “musical entertainment services, namely, live
`
`musical performances, concerts and shows”
`
`41.
`
`Admit that with regard to Reg. No. 4,211,8791 for the NOW mark, EMI has never
`
`used the mark in commerce in connection with the “production of musical sound recordings,
`
`musical audiovisual recordings, live musical performances and live music concerts”
`
`42.
`
`Admit that with regard to Reg. No. 4,211,8791 for the NOW mark, EMI has never
`
`used the mark in commerce in connection with “music production services”
`
`43.
`
`Admit that with regard to Reg. No. 4,211,8791 for the NOW mark, EMI has never
`
`used the mark in commerce in connection with “music publishing services”
`
`44.
`
`Admit that with regard to Reg. No. 4,211,8791 for the NOW mark, EMI has never
`
`used the mark in commerce in connection with “recording studio services”
`
`45.
`
`Admit that with regard to Reg. No. 4,211,8791 for the NOW mark, EMI has never
`
`used the mark in commerce in connection with “providing on-line information in the field of
`
`sound recordings and audiovisual recordings featuring musical performances”
`
`46.
`
`Admit that with regard to Reg. No. 4,211,8791 for the NOW mark, EMI has never
`
`used the mark in commerce in connection with “rental of sound and audiovisual recordings
`
`featuring musical performances”
`
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`47.
`
`Admit that with regard to Reg. No. 4,211,8791 for the NOW mark, EMI has never
`
`used the mark in commerce in connection with “providing a website featuring non-downloadable
`
`pre-recorded digital music”
`
`48.
`
`Admit that with regard to Reg. No. 4,211,8791 for the NOW mark, EMI has never
`
`used the mark in commerce in connection with the “provision of online non-downloadable
`
`electronic publications in the nature of magazines and newsletters relating to sound recordings
`
`and audiovisual recordings featuring musical performances and musical entertainment”
`
`49.
`
`Admit that with regard to Reg. No. 4,211,8791 for the NOW mark, EMI has never
`
`used the mark in commerce in connection with “exploitation and licensing of intellectual
`
`property rights in musical and lyrical works for and on behalf of authors, composers or
`
`conductors of such works”
`
`50.
`
`Admit that with regard to Reg. No. 4,211,8791 for the NOW mark, EMI has never
`
`used the mark in commerce in connection with “providing online information relating to
`
`intellectual property rights in musical and lyrical works”
`
`51.
`
`Admit that with regard to Reg. No. 2,484,158 for the NOW! MUSIC mark, there
`
`has been at least one period of three or more consecutive years since September 4, 2001 during
`
`which EMI did not use the mark in connection with “audio cassettes featuring music”
`
`52.
`
`Admit that with regard to Reg. No. 2,484,158 for the NOW! MUSIC mark, there
`
`has been at least one period of three or more consecutive years since September 4, 2001 during
`
`which EMI did not use the mark in connection with “video cassettes featuring music”
`
`53.
`
`Admit that with regard to Reg. No. 2,484,158 for the NOW! MUSIC mark, there
`
`has been at least one period of three or more consecutive years since September 4, 2001 during
`
`which EMI did not use the mark in connection with “digital audio tape featuring music”
`
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`54.
`
`Admit that with regard to Reg. No. 2,484,158 for the NOW! MUSIC mark, there
`
`has been at least one period of three or more consecutive years since September 4, 2001 during
`
`which EMI did not use the mark in connection with “audio discs featuring music”
`
`55.
`
`Admit that with regard to Reg. No. 2,484,158 for the NOW! MUSIC mark, there
`
`has been at least one period of three or more consecutive years since September 4, 2001 during
`
`which EMI did not use the mark in connection with “compact discs featuring music”
`
`56.
`
`Admit that with regard to Reg. No. 2,484,158 for the NOW! MUSIC mark, there
`
`has been at least one period of three or more consecutive years since September 4, 2001 during
`
`which EMI did not use the mark in connection with “video discs featuring music”
`
`57.
`
`Admit that with regard to Reg. No. 2,484,158 for the NOW! MUSIC mark, there
`
`has been at least one period of three or more consecutive years since September 4, 2001 during
`
`which EMI did not use the mark in connection with “interactive multimedia computer programs
`
`featuring music”
`
`58.
`
`Admit that with regard to Reg. No. 2,484,158 for the NOW! MUSIC mark, there
`
`has been at least one period of three or more consecutive years since September 4, 2001 during
`
`which EMI did not use the mark in connection with “motion picture films featuring music”
`
`59.
`
`Admit that with regard to Reg. No. 2,484,158 for the NOW! MUSIC mark, there
`
`has been at least one period of three or more consecutive years since September 4, 2001 during
`
`which EMI did not use the mark in connection with “music sound recordings”
`
`60.
`
`Admit that with regard to Reg. No. 2,484,158 for the NOW! MUSIC mark, there
`
`has been at least one period of three or more consecutive years since September 4, 2001 during
`
`which EMI did not use the mark in connection with “music video recordings”
`
`50884278.3
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`61.
`
`Admit that with regard to Reg. No. 2,484,158 for the NOW! MUSIC mark, there
`
`has been at least one period of three or more consecutive years since September 4, 2001 during
`
`which EMI did not use the mark in connection with “record albums featuring music.”
`
`62.
`
`Admit that with regard to Reg. No. 2,484,158 for the NOW! MUSIC mark, EMI
`
`has never used the mark in commerce in connection with “audio cassettes featuring music”
`
`63.
`
`Admit that with regard to Reg. No. 2,484,158 for the NOW! MUSIC mark, EMI
`
`has never used the mark in commerce in connection with “video cassettes featuring music”
`
`64.
`
`Admit that with regard to Reg. No. 2,484,158 for the NOW! MUSIC mark, EMI
`
`has never used the mark in commerce in connection with “digital audio tape featuring music”
`
`65.
`
`Admit that with regard to Reg. No. 2,484,158 for the NOW! MUSIC mark, EMI
`
`has never used the mark in commerce in connection with “audio discs featuring music”
`
`66.
`
`Admit that with regard to Reg. No. 2,484,158 for the NOW! MUSIC mark, EMI
`
`has never used the mark in commerce in connection with “compact discs featuring music”
`
`67.
`
`Admit that with regard to Reg. No. 2,484,158 for the NOW! M mark, EMI has
`
`never used the mark in commerce in connection with “video