Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA938641
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`Filing date:
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`11/30/2018
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`91244299
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`Party
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`Correspondence
`Address
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`Defendant
`Events By Contessa LLC
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`MEGHRY GARABEDIAN
`OURFALIAN & OURFALIAN ATTORNEYS AT LAW
`700 NORTH BRAND BLVD., SUITE 1150
`GLENDALE, CA 91203
`meg@ourfalianlaw.com, benjamin@ourfalianlaw.com
`no phone number provided
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Answer
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`Meghry Garabedian
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`meg@ourfalianlaw.com
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`/Meghry Garabedian/
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`11/30/2018
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`Attachments
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`Answer to Notice of Opposition.pdf(132693 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`TRADEMARK TRIAL AND APPEAL BOARD
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`In the Matter of Application Serial No. 87805349: EVENTS BY CONTESSA
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`INA GARTEN, LLC,
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`v.
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`EVENTS BY CONTESSA, LLC,
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`Opposition No. 91244299
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`Serial No. 87805349
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`Mark: EVENTS BY CONTESSA
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`Opposer,
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`Applicant.
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`ANSWER TO NOTICE OF OPPOSITION
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`Applicant Events By Contessa, LLC (“Applicant”) answers the Notice of Opposition
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`filed by Opposer Ina Garten, LLC (“Opposer”) as follows:
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`As to the introductory paragraph of the Opposition, Applicant denies that Opposer will be
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`damaged by the issuance of a registration for the mark EVENTS BY CONTESSA to Applicant,
`applied for in Application Serial No. 87805349. Applicant lacks knowledge or information
`sufficient to form a belief about the truth of the remaining allegations in the introductory
`paragraph and on that basis denies such allegations.
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`Applicant lacks knowledge or information sufficient to form a belief about the
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`truth of the allegations in Paragraph 1 and on that basis denies such allegations.
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`Applicant lacks knowledge or information sufficient to form a belief about the
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`truth of the allegations in Paragraph 2 and on that basis denies such allegations.
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`Applicant lacks knowledge or information sufficient to form a belief about the
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`truth of the allegations in Paragraph 3 and on that basis denies such allegations.
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`Applicant lacks knowledge or information sufficient to form a belief about the
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`truth of the allegations in Paragraph 4 and on that basis denies such allegations.
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`Applicant lacks knowledge or information sufficient to form a belief about the
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`truth of the allegations in Paragraph 5 and on that basis denies such allegations.
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`Applicant lacks knowledge or information sufficient to form a belief about the
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`truth of the allegations in Paragraph 6 and on that basis denies such allegations.
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`1
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`Applicant lacks knowledge or information sufficient to form a belief about the
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`truth of the allegation that Opposer has common law rights in the BAREFOOT CONTESSA
`mark and on that basis denies it. The materials referenced in Paragraph 7 speak for themselves,
`and to the extent the allegations in this paragraph vary therewith, Applicant denies them.
`Applicant denies any and all remaining allegations in this paragraph.
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`The materials referenced in Paragraph 8 speak for themselves and to the extent
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`the allegations in this paragraph vary therewith, Applicant denies them. Applicant denies any
`and all remaining allegations in this paragraph.
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`The materials referenced in Paragraph 9 speak for themselves and to the extent
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`the allegations in this paragraph vary therewith, Applicant denies them. Applicant denies any
`and all remaining allegations in this paragraph.
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`The materials referenced in Paragraph 11 speak for themselves and to the extent
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`the allegations in this paragraph vary therewith, Applicant denies them. Applicant denies any
`and all remaining allegations in this paragraph.
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`Applicant lacks knowledge or information sufficient to form a belief about the
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`truth of the allegations in Paragraph 12 and, on that basis, denies them.
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`Applicant lacks knowledge or information sufficient to form a belief about the
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`truth of the allegations in Paragraph 22 and on that basis denies such allegations.
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`10.
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`Applicant admits to the allegations in Paragraph 10.
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`13.
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`Applicant denies the allegations in Paragraph 13.
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`14.
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`Applicant denies the allegations in Paragraph 14.
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`15.
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`Applicant admits to the allegations in Paragraph 15.
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`16.
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`Applicant denies the allegations in Paragraph 16.
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`17.
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`Applicant repeats and re-alleges its answers to Paragraphs 1 through 16 above.
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`18.
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`Applicant denies the allegations in Paragraph 18.
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`19.
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`Applicant denies the allegations in Paragraph 19.
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`20.
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`Applicant denies the allegations in Paragraph 20.
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`21.
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`Applicant repeats and re-alleges its answers to Paragraphs 1 through 16 above.
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`23.
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`Applicant denies the allegations in Paragraph 23.
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`24.
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`Applicant denies the allegations in Paragraph 24.
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`Applicant denies the allegations in Paragraph 25.
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`Applicant denies the allegations in Paragraph 26.
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`Applicant denies the allegations in Paragraph 27.
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`28.
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`Applicant repeats and re-alleges its answers to Paragraphs 1 through 16 above.
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`29.
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`Applicant denies the allegations in Paragraph 29.
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`30.
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`Applicant denies the allegations in Paragraph 30.
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`31.
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`Applicant denies the allegations in Paragraph 31.
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`32.
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`Applicant denies the allegations in Paragraph 32.
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`FIRST AFFIRMATIVE DEFENSE
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`Opposer fails to state a claim upon which relief can be granted.
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`SECOND AFFIRMATIVE DEFENSE
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`Applicant’s mark does not suggest a false association or connection with Ina Garten.
`Any association between BAREFOOT CONTESSA and Ina Garten is narrowly circumscribed to
`the exact trademark, BAREFOOT CONTESSA, and does not extend to any other feature of the
`trademark, beyond the word “barefoot” as the word “contessa” is not distinctive.
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`THIRD AFFIRMATIVE DEFENSE
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`There is no likelihood of confusion, mistake, or deception between Opposer’s mark
`BAREFOOT CONTESSA and Applicant’s mark EVENTS BY CONTESSA.
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`FOURTH AFFIRMATIVE DEFENSE
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`Alternatively, any similarity between Opposer’s mark and Applicant’s mark is restricted
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`to that portion of the mark consisting of the word “contessa,” which is not distinctive. As a
`result, under the antidissection rule, any secondary meaning Opposer may have in its
`BAREFOOT CONTESSA trademark is narrowly circumscribed to the exact trademark and does
`not extend to any other feature of the trademark, beyond the word “barefoot.”
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`FIFTH AFFIRMATIVE DEFENSE
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`The services identified in Applicant’s Application are not similar to the goods and
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`services offered by Opposer under its BAREFOOT CONTESSA trademark, nor are they
`marketed through the same channels of trade.
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`SIXTH AFFIRMATIVE DEFENSE
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`Registration of Applicant’s mark will not cause dilution of the distinctiveness of
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`Opposer’s mark and its ability to identify goods and services offered by Opposer, as the marks
`are not similar.
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`SEVENTH AFFIRMATIVE DEFENSE
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`Registration of Applicant’s mark will not create an association between Applicant’s mark
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`and Opposer’s mark, as the marks are not similar.
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`WHEREFORE, Applicant requests that the notice of opposition be dismissed with prejudice,
`together with whatever other relief the Board may deem appropriate.
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`Dated: November 30, 2018
`Respectfully submitted,
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`By: /Meghry Garabedian/
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`Meghry Garabedian, Esq.
`Attorney for Applicant
`Ourfalian & Ourfalian Attorneys at Law
`700 North Brand Blvd.
`Suite 1150
`Glendale, CA 91203
`Tel No.: (818) 550-7777
`Fax No.: (818) 550-7788
`Email: meg@ourfalianlaw.com
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and complete copy of the foregoing ANSWER TO NOTICE
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`OF OPPOSITION has been served on John P. Margiotta, Esq. by forwarding said copy on
`November 30, 2018, via email, to:
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`_/Meghry Garabedian/______
`Meghry Garabedian, Esq.
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`John Margiotta, Esq.
`Fross Zelnick Lehrman & Zissu, P.C.
`4 Times Square, 17th Floor
`New York, NY 10036
`Email: jmargiotta@fzlz.com, skipen@fzlz.com, ttabfiling@fzlz.com
`Phone: (212) 813-5900
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