Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA761296
`07/29/2016
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`
`Opposer Information
`
`Name
`
`Entity
`
`Address
`
`Bell Media Inc.
`
`Corporation
`
`299 Queen Street West
`Toronto, ONT M5V 2Z5
`CANADA
`
`Citizenship
`
`Canada
`
`Attorney informa-
`tion
`
`Donald L. Dennison
`Ladas & Parry LLP
`1727 King Street Suite 105
`Alexandria, VA 22314
`UNITED STATES
`ddennison@ladas.com Phone:(703)837-9600 Ext. 15
`
`Applicant Information
`
`Application No
`
`86716227
`
`Publication date
`
`07/05/2016
`
`Opposition Filing
`Date
`
`Applicant
`
`07/29/2016
`
`Opposition Peri-
`od Ends
`
`08/04/2016
`
`Mariposa Holdings Group, Inc.
`Suite 400-215
`Westford, MA 01886
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Downloadable computer software for play-
`ing music; Downloadable mobile application for playing music; Downloadable computer software that
`provides a music streaming service via the Internet or telecommunication networks; Downloadable
`mobilesoftware application that provides a music streaming service via the Internet or telecommunic-
`ation networks; Downloadable music files
`
`Class 038. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Telecommunications Services, namely,
`Transmission of Data via Satellite and Telecommunications Links; Telecommunications services,
`namely, the electronic transmission of messages and data in voice, facsimile, and video modes
`
`Class 042. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Providing temporary use of non-
`downloadable computer software for music streaming; Providing a website allowing users to upload
`and download music; Computer services, namely, creating an on-line community for registered users
`to engage in social networking; Providing a website featuring non-downloadable software for trans-
`mission and reception of database information
`
`Grounds for Opposition
`
`

`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`No use of mark in commerce before application
`or amendment to allege use was filed
`
`Trademark Act Sections 1(a) and (c)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`1905977
`
`Registration Date
`
`07/18/1995
`
`Application Date
`
`03/25/1994
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`MUCHMUSIC
`
`NONE
`
`Class 038. First use: First Use: 1984/09/00 First Use In Commerce: 1984/09/00
`broadcasting television programs, namely informing and entertaining through
`themedia of television and radio
`Class 041. First use: First Use: 1984/09/00 First Use In Commerce: 1984/09/00
`audio recording, producing and programming of informative and entertaining ra-
`dio and television programs; entertainmentservices provided by prerecorded
`music and performances from and at remote locations over television
`
`Attachments
`
`Opposition - MACH MUSIC.pdf(3792386 bytes )
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Signature
`
`/donald l. dennison/
`
`Name
`
`Date
`
`Donald L. Dennison
`
`07/29/2016
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`BELL MEDIA INC.
`
`Opposer,
`
`MARIPOSA HOLDINGS GROUP,
`
`INC.
`
`Applicant.
`
`-.1-_an.:-_:u_:
`
`3
`
`Opposition No.
`
`Application No. 86—716227
`
`NOTICE OF OPPOSITION
`
`Hon. Commissioner for Trademarks
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Sir:
`
`In the matter of the application for registration of the
`
`trademark MACH MUSIC for downloadable computer software for
`
`playing music; downloadable mobile application for playing
`
`music; downloadable computer software that provides a music
`
`streaming service via the internet or telecommunication
`
`networks; downloadable mobile software application that
`
`provides a music streaming service via the internet or
`
`

`
`telecommunication networks; downloadable music files in Class
`
`9;
`
`telecommunications services, namely transmission of data
`
`via satellite and telecommunications links;
`
`telecommunications
`
`services, namely,
`
`the electronic transmission of messages and
`
`data in voice,
`
`facsimile, and video modes in Class 38;
`
`providing temporary use of non—downloadable computer
`
`software for music streaming; providing a website allowing
`
`users to upload and download music; computer services, namely,
`
`creating an on—line community for registered users to engage
`
`in social networking; providing a website featuring non-
`
`downloadable software for transmission and reception of
`
`database information in Class 42; Serial No. 86/716,227, filed
`
`August 6, 20l5 by Mariposa Holdings Group,
`
`Inc. and published
`
`for Opposition on July 5, 2016 in the United States Patent and
`
`Trademark Office Official Gazette; Bell Media Inc.,
`
`a
`
`corporation of Canada, having its principal place of business
`
`at 299 Queen Street West, Toronto, Canada M5V 2Z5, believes
`
`that it would be damaged by such registration and hereby
`
`

`
`opposes registration of said alleged trademark and service
`
`mark as it applies to the goods and services in Classes 9, 38,
`
`and 42 as set forth herein.
`
`As grounds for the opposition, it is alleged that:
`
`1. Applicant, Mariposa Holdings Group, Inc.,
`
`is on
`
`information and belief,
`
`a corporation of Delaware with an
`
`address at Suite 400-215 9 Cornerstone Square, Westford,
`
`Massachusetts 01886, and seeks to register the trademark and
`
`service mark MUCH MUSIC for all of the goods and services
`
`noted in the preamble, supra, as set forth in the application
`
`here opposed.
`
`The application was filed under Section 1(b) on
`
`an intent—to—use basis on August 6, 2015 and no allegation of
`
`actual use has yet been filed.
`
`

`
`2. Opposer is a well—known provider of telecommunication
`
`services including transmission by radio and television of
`
`music, news and other entertainment content,
`
`including on—line
`
`transmissions on the internet at its website, muchmusic.com.
`
`3. Opposer is the owner of United States Trademark
`
`Registration No. 1,905,977, registered on July 18, 2015 and
`
`renewed,
`
`a copy of which is attached hereto as Exhibit “A” and
`
`which registration is in full force and effect, and is
`
`incontestible under Section l5. This registration covers the
`
`mark MUCHMUSIC.
`
`4. Opposer’s registration covers broadcasting television
`
`programs, namely,
`
`informing and entertaining through the media
`
`of television and radio in Class 38.
`
`5. Applicant has used its mark in commerce since at least as
`
`early as September l984 and such use has continued
`
`uninterrupted to the present.
`
`

`
`6. Applicant's mark is so similar to Opposer’s registered
`
`mark as to be likely to cause confusion, mistake or deception
`
`as to the source of the goods and services of the Applicant,
`
`especially since the Applicant's mark is intended to be used
`
`in conjunction with same or similar services as those of the
`
`Opposer.
`
`7.
`
`The marks here in issue are visually and phonetically
`
`similar, and present the same connotation to the consumer of
`
`a variety of music services. Use of the proposed mark by the
`
`Applicant on its listed goods and services would indicate to
`
`the consumer that the goods and services have been endorsed
`
`and approved by the Opposer and will cause confusion, or to
`
`cause mistake or to deceive. 15 U.S.C. §lO52(d)
`
`8.
`
`If the Applicant is permitted to use and register the mark
`
`herein opposed for the goods and services specified in its
`
`application, confusion in the trade and for the consumer will
`
`likely result, causing damage and injury to the Opposer.
`
`Persons familiar with Opposer’s mark would be likely to
`
`

`
`engage Applicant's services in the mistaken belief that such
`
`services originate with or are sponsored and approved by the
`
`Opposer. Any such confusion will inevitably result in loss of
`
`reputation and possible legal liability to Opposer. Moreover,
`
`any objection or fault found with Applicant's goods or
`
`services rendered under the mark, herein opposed, would
`
`necessarily reflect upon and seriously injure the reputation
`
`which Opposer has established for its services over a period
`
`of nearly thirty—two years and will thereby erode the valuable
`
`goodwill established by Opposer in its mark.
`
`9.
`
`In view of Opposer’s Registration noted herein, priority
`
`is not an issue in this opposition.
`
`10. To the best of Opposer’s knowledge and belief, Applicant
`
`has never used its mark in commerce on either its listed goods
`
`or services.
`
`

`
`WHEREFORE, Opposer prays that Application Serial Number
`
`86/716,227 be rejected, and that registration of the mark
`
`shown therein for the goods and services set forth in Classes
`
`9, 38 and 42 be refused and denied.
`
`The Opposition fee of $900.00 required by the Trademark
`
`Rules of Practice, 2.6(a)(17) may be charged to the Deposit
`
`Account of the undersigned firm, No. 120423.
`
`July 29, 2016
`
`Respectfully submitted,
`
`BY
`
`Donald L. Dennison
`LADAS & PARRY LLP
`
`Attorneys for Opposer
`1727 King Street, Suite 105
`Alexandria, VA 22314
`(703)837-9600 Ext. 15
`Fax (703)837-0980
`ddennison@ladas.com
`
`

`
`CERTIFICATE OF SERVICE
`
`This is to certify that a copy of the above Notice of
`
`Opposition was served upon Applicant's listed attorney,
`
`Christopher Civil, Esq. c/o Raj Abhyanker,
`
`P .C., Suite 6, 1580
`
`W. El Camino Real, Mountain View, CA 94040, by first class
`
`mail with proper postage affixed and electronically to
`
`trademarks@legalforce.com this 29th day of July, 2016.
`
`45,4//.....__.
`
`Donald L. Dennison
`
`

`
`Int. Cls.: 38 and 41
`
`Prior U.S. Cls.: 104 and 107
`
`United States Patent and Trademark Office
`
`Reg. No. 1,905,977
`Registered July 18, 1995
`
`SERVICE MARK
`PRINCIPAL REGISTER
`
`MUCHMUSIC
`
`CI-IUM LIMITED (CANADA CORPORATION)
`1331 YONGE STREET
`TORONTO, ONTARIO, M4T IY1, CANADA
`
`FOR: BROADCASTING TELEVISION PRO-
`GRAMS, NAMELY INFORMING AND ENTER-
`TAINING THROUGH THE MEDIA OF TELEVI-
`SION AND RADIO, IN CLASS 38 (U.S. CL. 104).
`FIRST USE
`9-0-1984;
`IN COMMERCE
`9-0-1984.
`
`FOR: AUDIO RECORDING, PRODUCING
`AND PROGRAMMING OF INFORMATIVE
`AND ENTERTAINING RADIO AND TELEVI—
`
`SION PROGRAMS; ENTERTAINMENT SERV-
`ICES PROVIDED BY PRERECORDED MUSIC
`AND PERFORMANCES
`FROM AND AT
`REMOTE LOCATIONS OVER TELEVISION, IN
`CLASS 41 (U.S. CL. 107).
`FIRST USE
`9-0-1984;
`9-0-I984.
`
`COMMERCE
`
`IN
`
`SER. N0. 74—504,899, FILED 3-25-I994.
`
`CORA ANN MOORHEAD, EXAMINING AT-
`TORNEY
`
`EXHIBIT “A”