Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1240243
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`Filing date:
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`10/06/2022
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding no.
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`91277012
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`Party
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`Correspondence
`address
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`Defendant
`NOW! Media, Inc.
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`NOEL M. COOK
`HANSON BRIDGETT LLP
`425 MARKET STREET, 26TH FLOOR
`SAN FRANCISCO, CA 94105
`UNITED STATES
`Primary email: ipfilings@hansonbridgett.com
`Secondary email(s): ncook@hansonbridgett.com, jthiele@hansonbridgett.com
`415-995-5038
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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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`Justin Thiele
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`ttabfilings@hansonbridgett.com, jthiele@hansonbridgett.com,
`ncook@hansonbridgett.com
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`/Justin Thiele/
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`10/06/2022
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`Attachments
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`2022-10-06 91277012 Answer.pdf(112755 bytes )
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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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`Opposer,
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`v.
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`NOW! Media, Inc.,
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`Applicant.
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` Opposition No. 91277012
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`In the matter of
`Trademark Application Serial No.: 90168635
`Filed: September 9, 2020
`Published: March 1, 2022
`Mark: NOWMEDIA
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`Applicant’s Answer to Notice of Opposition
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`Applicant NOW! Media, Inc. (“NOW! Media” or “Applicant”) hereby answers the Notice of
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`Opposition (the “Notice”) of EMI (IP) Limited (“EMI” or “Opposer”) as follows.
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`General Denials
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`In response to the unnumbered paragraphs appearing at the beginning of the Notice of
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`Opposition, Applicant is without sufficient knowledge of information to form a belief as to the
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`truth of the allegations in these paragraphs—and on that basis denies each and every allegation
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`contained therein.
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`Answer to Allegations Contained in the Notice by Paragraph
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`1.
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`Applicant is without sufficient information to form a belief as to the truth of the
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`allegations in this paragraph and therefore denies the same.
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`2.
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`Applicant is without sufficient information to form a belief as to the truth of the
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`allegations in this paragraph and therefore denies the same.
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`3.
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`4.
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`5.
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`6.
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`Applicant denies the allegations in this paragraph.
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`Applicant denies the allegations in this paragraph.
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`Applicant denies the allegations in this paragraph.
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`Applicant is without sufficient information to form a belief as to the truth of the
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`allegations in this paragraph and therefore denies the same.
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`1
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`18971402.1
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`7.
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`Applicant is without sufficient information to form a belief as to the truth of the
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`allegations in this paragraph and therefore denies the same.
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`8.
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`Applicant is without sufficient information to form a belief as to the truth of the
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`allegations in this paragraph and therefore denies the same.
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`9.
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`Applicant is without sufficient information to form a belief as to the truth of the
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`allegations in this paragraph and therefore denies the same.
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`10.
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`Applicant admits that on September 9, 2020, it filed to register the mark
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`NOWMEDIA under § 1(b) of the Lanham Act for goods in Class 9 and services in Classes 35
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`and 42. To the extent this paragraph contains additional allegations, Applicant denies them.
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`11.
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`Applicant is without sufficient information to form a belief as to the truth of the
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`allegations in this paragraph and therefore denies the same.
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`12.
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`Applicant denies the allegations in this paragraph.
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`13.
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`Applicant denies the allegations in this paragraph.
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`14.
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`Applicant denies the allegations in this paragraph.
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`15.
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`Applicant denies the allegations in this paragraph.
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`16.
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`Applicant denies the allegations in this paragraph.
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`17.
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`Applicant denies the allegations in this paragraph.
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`18.
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`Applicant is without sufficient information to form a belief as to the truth of the
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`allegations in this paragraph and therefore denies the same.
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`19.
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`Applicant denies the allegations in this paragraph.
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`20.
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`Applicant denies the allegations in this paragraph.
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`21.
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`Applicant denies the allegations in this paragraph.
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`22.
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`Applicant denies the allegations in this paragraph.
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`23.
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`Applicant denies the allegations in this paragraph.
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`24.
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`Applicant denies the allegations in this paragraph.
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`2
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`18971402.1
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`Affirmative Defenses
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`1.
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`Opposer’s pleaded registration, no. 2484158 for NOW! MUSIC, has been
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`canceled under § 8 and cannot form the basis of claim for priority and likelihood of confusion,
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`and should be stricken from the Notice.
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`2.
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`Opposer’s claim for likelihood of confusion will fail because Applicant’s marks
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`and the pleaded marks of Opposer are not likely to cause confusion, mistake or deception
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`among purchasers as to the source of Opposer’s and Applicant’s respective goods and
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`services.
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`3.
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`Opposer has not sufficiently pleaded ownership of a “family” of marks. Opposer’s
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`NOW-formative marks do not share a common characteristic that is distinctive, not descriptive,
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`and not commonly used, and are not used so as to create common exposure to and recognition
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`by purchasers of the common characteristic as indicating origin.
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`4.
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`Opposer’s claims for dilution by blurring and dilution by tarnishment will fail
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`because Opposer has not sufficiently pleaded that its marks are famous and that such fame
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`arose before the filing date of Applicant’s application.
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`5.
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`Opposer’s claims for dilution by blurring will fail because Opposer has not
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`sufficiently pleaded an association arising from the similarity between Applicant’s mark and
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`Opposer’s mark that impairs the distinctiveness of Opposer’s mark.
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`6.
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`Opposer’s claims for dilution by tarnishment will fail because Opposer has not
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`sufficiently pleaded an association arising from the similarity between Applicant’s mark and
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`Opposer’s mark that harms the reputation of Opposer’s mark.
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`Relief Requested
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`Applicant NOW! Media, Inc. respectfully requests that the Notice of Opposition be
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`rejected and dismissed, and that Applicant’s subject application be allowed to proceed to
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`registration.
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`3
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`18971402.1
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`Respectfully submitted,
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`APPLICANT NOW! MEDIA, INC.
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`
`/s/ Justin Thiele
`By:
` Noel M. Cook
`ncook@hansonbridgett.com
`Justin P. Thiele
`Jthiele@hansonbridgett.com
`Attorneys for Applicant NOW! Media, Inc.
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`HANSON BRIDGETT LLP
`1676 N. California Blvd., Suite 620
`Walnut Creek, California 94596
`Tel.: 925-746-8460
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` Date: October 6, 2022
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`4
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`18971402.1
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`CERTIFICATE OF SERVICE
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`I, Justin Thiele, hereby certify that true and correct copies of the foregoing Applicant’s
`Answer to Notice of Opposition were served on the parties listed below by mailing said copies
`on October 6, 2022 via email to:
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`
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`Dated: October 6, 2022
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`/s/ Justin Thiele
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`5
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`18971402.1
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