Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1227288
`08/08/2022
`
`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
`
`GLO DIGITAL, INC
`
`Granted to date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`08/07/2022
`
`1740 STANFORD STREET
`SANTA MONICA, CA 90404
`UNITED STATES
`
`REBECCA LIEBOWITZ
`VENABLE LLP
`P.O. BOX 34385
`WASHINGTON, DC 20043-9998
`UNITED STATES
`Primary email: trademarkdocket@venable.com
`Secondary email(s): rliebowitz@venable.com, cmitros@venable.com
`202-344-4976
`
`Docket no.
`
`120741560488
`
`Applicant information
`
`Application no.
`
`90655479
`
`Opposition filing
`date
`
`Applicant
`
`08/08/2022
`
`Happify Inc.
`51 E 12TH ST, FLOOR 5
`NEW YORK, NY 10003
`UNITED STATES
`
`Goods/services affected by opposition
`
`Publication date
`
`02/08/2022
`
`Opposition period
`ends
`
`08/07/2022
`
`Class 009. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Downloadable interactive multimedia com-
`puter program for use in the fields of self-improvement, positive psychology, personal happiness,
`mental health and wellness for use on computers, mobile phones, portable media players, handheld
`computers, and other mobile devices; Downloadable computer game software; Downloadable game
`software for use on computers, mobile phones, portable media players, handheld computers, and
`other mobile devices; Downloadable Software as a Medical Device (SaMD) for treating psychological
`conditions; Recorded Software as a Medical Device (SaMD) for treating psychological conditions
`
`Class 041. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Educational services, namely, providinga
`website featuring non-downloadable publications in the nature of articles in the fields of self-
`improvement, positivepsychology, personal happiness, and mental health and wellness; Providing a
`web site featuring non-downloadable instructional videos in the field of self-improvement, positive
`psychology, personal happiness, and mental health and wellness; Providing a website featuring non-
`
`

`

`downloadable publications in the nature of articles in the field of self-improvement, positive psycho-
`logy, personal happiness,and mental health and wellness; Entertainment services, namely, providing
`a website featuring photographic, audio, video and prose presentations featuring self-improvement,
`positive psychology, personal happiness, and mental health and wellness; Providing non-
`downloadable videos in the field of self-improvement, positive psychology, personal happiness,
`andmental health and wellness via a website; Providing a website featuring blogs and non-
`downloadable publications in the nature of articles in the field(s) of self-improvement, positive psy-
`chology, personal happiness, and mental health and wellness; Providing a website featuring non-
`downloadable articles in the field ofself-improvement, positive psychology, personal happiness, and
`mental health and wellness; Providing a website featuring non-downloadable videos in the field of
`self-improvement, positive psychology,personal happiness, and mental health and wellness; Provid-
`ing a website featuring resources, namely, non-downloadable publications in the nature of articles
`inthe field of self-improvement, positivepsychology, personal happiness, and mental health and well-
`ness
`
`Class 044. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Providing a web site featuring information in
`the field of mental health and wellness; Providing information in the field of psychological counseling
`and treatment; Providing wellness services, namely, personal assessments, personalized routines,
`maintenance schedules, and counseling; Providing a website featuring information about health and
`wellness, namely, positive psychology, personal happiness, and mental health and wellness; Provid-
`ing a website featuring information in the field of the diagnosis and treatment of psychological condi-
`tions; Providing a website featuring information in thefield of positive psychology, personal happiness,
`and mental health and wellness health
`
`Class 045. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Providing a website featuring information in
`the field of self-improvement
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Marks cited by opposer as basis for opposition
`
`U.S. registration
`no.
`
`4735449
`
`Register
`
`Principal
`
`Registration date
`
`05/12/2015
`
`Word mark
`
`Design mark
`
`GLO
`
`Application date
`
`03/11/2010
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 041. First use: First Use: Apr 2009 First Use In Commerce: Apr 2009
`(( Providing news, information and commentary in the fields of fashion, enter-
`tainment, home decor, interior decorating,interior design, music, movies, books,
`
`

`

`current events, and clothing; none of the aforesaid services in connection with
`the study of the Bible or Christian publications ))
`Class 044. First use: First Use: Apr 2009 First Use In Commerce: Apr 2009
`Providing an interactive website featuring information in the fields of health ((
`and beauty ))
`Class 045. First use: First Use: Apr 2009 First Use In Commerce: Apr 2009
`(( Providing an interactive website featuring information on lifestyles and person-
`al and professional relationships ))
`
`U.S. registration
`no.
`
`4993684
`
`Register
`
`Principal
`
`Registration date
`
`07/05/2016
`
`Word mark
`
`Design mark
`
`GLO
`
`Application date
`
`12/26/2012
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 009. First use: First Use: Dec 2014 First Use In Commerce: Dec 2014
`Downloadable physical fitness and exercise instructional video and audio re-
`cordings with or without pre-recorded music via the Internet and wireless
`devices; digital media, namely, downloadable audioand video recordings, featur-
`ing fitness, exercise, music and health-related issues; downloadable multimedia
`file containing artwork, text, audio, video, and Internet web links relating to fit-
`ness, exercise, music and health-related matters; downloadable electronic pub-
`lications in the form of brochures, leaflets, and workbooks featuring fitness, exer-
`cise, music and health-related issues
`Class 038. First use: First Use: Dec 2014 First Use In Commerce: Dec 2014
`Broadcasting and streaming of audio-visual media content in the fields of fitness,
`exercise and health-related matters via a global computer network; webcasting
`services related to fitness, exercise,wellness, nutrition and health-related issues;
`providing access to online forums for transmission of messages and blogs-
`related to fitness, exercise, wellness,nutrition and health-related issues over the
`Internet; providing online electronic bulletin boards for transmission of messages
`among users related to fitness,exercise, wellness, nutrition and health-related is-
`sues; providing on-line chatrooms related to fitness, exercise, wellness, nutrition
`and health-related issues for social networking; web messaging services related
`to fitness, exercise, wellness, nutrition and health-related issues; video-on de-
`mand transmission services related to fitness, exercise, wellness, nutrition and
`health-related issues via the Internet; providing online forums for transmission of
`messages featuringfitness, exercise, music and health-related matters; electron-
`ic transmission and streaming of digital media content related to fitness, exer-
`cise, wellness, nutrition and health-related issues for others via global and local
`computer networks; streaming of audio, visual and audiovisual material via a
`global computer network related to fitness, exercise, wellness, nutrition and
`
`

`

`health-related issues; communications services, namely, transmitting streamed
`sound and audio-visualrecordings related to fitness, exercise, wellness, nutrition
`and health-relatedissues via the Internet; streaming of video and audio material
`related to fitness, exercise, wellness, nutrition and health-related issues on the
`Internet; providing access to computer databases related to fitness, exercise,
`wellness, nutrition and health-related issues; electronic transmission of instant
`messages anddata related to fitness, exercise, wellness, nutrition and health-
`related issues
`Class 041. First use: First Use: Dec 2014 First Use In Commerce: Dec 2014
`Education and entertainment services, namely, online instruction in the fields of
`exercise, fitness, music and health-related matters; providing online information
`via a global computer network on the subjects of exercise, fitness and music;
`electronic publishing services, namely, publication of text, graphics, photo-
`graphs, images, and audio-visual works ofothers online for streaming featuring
`exercise, fitness, music, and health-related matters; providing blogs in the
`nature of an online journal over the Internet featuring exercise, fitness, music,
`and health-related matters; providing a website featuring non-downloadable au-
`dio-visual content, specifically, motion pictures, videos, music videos, music,
`videoclips, audio clips, music clips, film clips, and photographs, in the fields of
`exercise, fitness, and music; consultingservices in the fields of exercise and fit-
`ness; physical fitness instruction; physical fitness training services; providing a
`web site featuring information onexercise and fitness; providing information in
`the field of fitness and exercise; electronic publishing services, namely, publish-
`ing of online works of others featuring user-created text, audio, video, and
`graphics related to fitness, exercise, wellness, nutrition and health-related issues
`Class 044. First use: First Use: Dec 2014 First Use In Commerce: Dec 2014
`Providing a website featuring informational, non-downloadable audio-visual con-
`tent, specifically, photographic, audio and video presentations in the fields of
`health-related matters, namely, health, wellness, and nutrition; consulting ser-
`vices in the fields of health-related matters, namely, health, wellness, and nutri-
`tion; providing information in the fields of health-related matters, namely, health,
`wellness, and nutrition
`
`U.S. registration
`no.
`
`6119177
`
`Register
`
`Principal
`
`Registration date
`
`08/04/2020
`
`Word mark
`
`Design mark
`
`GLO
`
`Application date
`
`05/12/2016
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 009. First use: First Use: Dec 18, 2018 First Use In Commerce: Dec 18,
`2018
`Downloadable software in the nature of a mobile application that provides phys-
`
`

`

`ical fitness and exercise instructional videos; Computer software for wireless
`data communication for receiving, processing, transmitting and displaying in-
`formation relating to fitness, health, wellness, computer software for managing
`information regarding tracking, compliance andmotivation with a health and fit-
`ness program
`
`Attachments
`
`77956879#TMSN.png( bytes )
`85810776#TMSN.png( bytes )
`87035139#TMSN.png( bytes )
`GLOWE Notice of Opposition.pdf(1817077 bytes )
`
`Signature
`
`/Catherine Mitros/
`
`Name
`
`Date
`
`Catherine Mitros
`
`08/08/2022
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Glo Digital, Inc.
`
`Happify Inc.
`
`Opposer,
`
`v.
`
`Applicant.
`
`Opposition No. _____________
`Serial No. 90/655479
`Mark: GLOWE
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Attorney’s Reference: 120741-560488
`
`NOTICE OF OPPOSITION
`
`The application for registration of the trademark GLOWE filed by Happify Inc., a
`
`Delaware corporation, Application Serial No. 90/655,479, covers “Downloadable interactive
`
`multimedia computer program for use in the fields of self-improvement, positive psychology,
`
`personal happiness, mental health and wellness for use on computers, mobile phones, portable
`
`media players, handheld computers, and other mobile devices; Downloadable computer game
`
`software; Downloadable game software for use on computers, mobile phones, portable media
`
`players, handheld computers, and other mobile devices; Downloadable Software as a Medical
`
`Device (SaMD) for treating psychological conditions; Recorded Software as a Medical Device
`
`(SaMD) for treating psychological conditions” in Class 9, “Educational services, namely,
`
`providing a website featuring non-downloadable publications in the nature of articles in the
`
`fields of self-improvement, positivepsychology, personal happiness, and mental health and
`
`wellness; Providing a web site featuring non-downloadable instructional videos in the field of
`
`self-improvement, positive psychology, personal happiness, and mental health and wellness;
`
`Providing a website featuring non-downloadable publications in the nature of articles in the field
`
`

`

`of self-improvement, positive psychology, personal happiness, and mental health and wellness;
`
`Entertainment services, namely, providing a web site featuring photographic, audio, video and
`
`prose presentations featuring self-improvement, positive psychology, personal happiness, and
`
`mental health and wellness; Providing non-downloadable videos in the field of self-
`
`improvement, positive psychology, personal happiness, and mental health and wellness via a
`
`website; Providing a website featuring blogs and non-downloadable publications in the nature of
`
`articles in the field(s) of self-improvement, positive psychology, personal happiness, and mental
`
`health and wellness; Providing a website featuring non-downloadable articles in the field of self-
`
`improvement, positive psychology, personal happiness, and mental health and wellness;
`
`Providing a website featuring non-downloadable videos in the field of self-improvement,
`
`positive psychology, personal happiness, and mental health and wellness; Providing a website
`
`featuring resources, namely, non-downloadable publications in the nature of articles in the field
`
`of self-improvement, positive psychology, personal happiness, and mental health and wellness”
`
`in Class 41, “ Providing a web site featuring information in the field of mental health and
`
`wellness; Providing information in the field of psychological counseling and treatment;
`
`Providing wellness services, namely, personal assessments, personalized routines, maintenance
`
`schedules, and counseling; Providing a website featuring information about health and wellness,
`
`namely, positive psychology, personal happiness, and mental health and wellness; Providing a
`
`website featuring information in the field of the diagnosis and treatment of psychological
`
`conditions; Providing a website featuring information in the field of positive psychology,
`
`personal happiness, and mental health and wellness health” in Class 44 and “Providing a website
`
`featuring information in the field of self-improvement” in Class 45 (the “GLOWE Mark”). The
`
`application was published for opposition in the Official Gazette on February 8, 2022. Glo
`
`

`

`Digital, Inc., a Delaware corporation, believes that it will be damaged by registration of the mark
`
`shown in said Application Serial No. 90/655,479 and hereby opposes the same.
`
`As grounds for opposition, it is alleged that:
`
`1.
`
`Opposer is the owner of the following U.S. Registrations for the mark GLO (U.S.
`
`Trademark Registration Nos. 4,735,449, 4,993,684 and 6,119,177), as well as additional marks
`
`used by Opposer for which it has registrations and to which it has common law rights
`
`(hereinafter, collectively, the “GLO Marks”). See Exhibit A.
`
`2.
`
`Opposer owns registrations for the GLO Marks (see listing below) which cover
`
`goods and services in the field of fitness, health and wellness, namely:
`
`Mark/Name
`
`Goods and Services
`
`GLO
`
`GLO
`
`Class 41: Providing news, information and
`commentary in the fields of fashion, entertainment,
`home decor, interior decorating, interior design,
`music, movies, books, current events, and clothing;
`none of the aforesaid services in connection with the
`study of the Bible or Christian publications
`Class 44: Providing an interactive website featuring
`information in the fields of health and beauty
`Class 45: Providing an interactive website featuring
`information on lifestyles and personal and
`professional relationships
`Class 9: Downloadable physical fitness and exercise
`instructional video and audio recordings with or
`without pre-recorded music via the Internet and
`wireless devices; digital media, namely,
`downloadable audio and video recordings, featuring
`fitness, exercise, music and health-related issues;
`downloadable multimedia file containing artwork,
`text, audio, video, and Internet web links relating to
`fitness, exercise, music and health-related matters;
`downloadable electronic publications in the form of
`brochures, leaflets, and workbooks featuring fitness,
`exercise, music and health-related issues
`
`Serial No. or
`Registration
`No.
`
`Ser. No.:
`77/956879
`Reg. No.:
`4,735,449
`
`Ser. No.:
`85/810776
`Reg. No.:
`4,993,684
`
`

`

`Mark/Name
`
`Goods and Services
`
`Serial No. or
`Registration
`No.
`
`Class 38: Broadcasting and streaming of audio-visual
`media content in the fields of fitness, exercise and
`health-related matters via a global computer network;
`webcasting services related to fitness, exercise,
`wellness, nutrition and health-related issues;
`providing access to online forums for transmission of
`messages and blogs related to fitness, exercise,
`wellness, nutrition and health-related issues over the
`Internet; providing online electronic bulletin boards
`for transmission of messages among users related to
`fitness, exercise, wellness, nutrition and health-related
`issues; providing on-line chat rooms related to fitness,
`exercise, wellness, nutrition and health-related issues
`for social networking; web messaging services related
`to fitness, exercise, wellness, nutrition and health-
`related issues; video-on demand transmission services
`related to fitness, exercise, wellness, nutrition and
`health-related issues via the Internet; providing online
`forums for transmission of messages featuring fitness,
`exercise, music and health-related matters; electronic
`transmission and streaming of digital media content
`related to fitness, exercise, wellness, nutrition and
`health-related issues for others via global and local
`computer networks; streaming of audio, visual and
`audiovisual material via a global computer network
`related to fitness, exercise, wellness, nutrition and
`health-related issues; communications services,
`namely, transmitting streamed sound and audio-visual
`recordings related to fitness, exercise, wellness,
`nutrition and health-related issues via the Internet;
`streaming of video and audio material related to
`fitness, exercise, wellness, nutrition and health-related
`issues on the Internet; providing access to computer
`databases related to fitness, exercise, wellness,
`nutrition and health-related issues; electronic
`transmission of instant messages and data related to
`fitness, exercise, wellness, nutrition and health-related
`issues
`Class 41: Education and entertainment services,
`namely, online instruction in the fields of exercise,
`fitness, music and health-related matters; providing
`online information via a global computer network on
`
`

`

`Mark/Name
`
`Goods and Services
`
`Serial No. or
`Registration
`No.
`
`the subjects of exercise, fitness and music; electronic
`publishing services, namely, publication of text,
`graphics, photographs, images, and audio-visual
`works of others online for streaming featuring
`exercise, fitness, music, and health-related matters;
`providing blogs in the nature of an online journal over
`the Internet featuring exercise, fitness, music, and
`health-related matters; providing a website featuring
`non-downloadable audio-visual content, specifically,
`motion pictures, videos, music videos, music, video
`clips, audio clips, music clips, film clips, and
`photographs, in the fields of exercise, fitness, and
`music; consulting services in the fields of exercise
`and fitness; physical fitness instruction; physical
`fitness training services; providing a web site
`featuring information on exercise and fitness;
`providing information in the field of fitness and
`exercise; electronic publishing services, namely,
`publishing of online works of others featuring user-
`created text, audio, video, and graphics related to
`fitness, exercise, wellness, nutrition and health-related
`issues
`Class 44: Providing a website featuring informational,
`non-downloadable audio-visual content, specifically,
`photographic, audio and video presentations in the
`fields of health-related matters, namely, health,
`wellness, and nutrition; consulting services in the
`fields of health-related matters, namely, health,
`wellness, and nutrition; providing information in the
`fields of health-related matters, namely, health,
`wellness, and nutrition
`Class 9: Downloadable software in the nature of a
`mobile application that provides physical fitness and
`exercise instructional videos; Computer software for
`wireless data communication for receiving,
`processing, transmitting and displaying information
`relating to fitness, health, wellness, computer software
`for managing information regarding tracking,
`compliance and motivation with a health and fitness
`program
`
`Ser. No.:
`87/035139
`Reg. No.:
`6,119,177
`
`GLO
`
`

`

`3.
`
`Opposer, and/or a predecessor in interest of the mark, filed its trademark
`
`application for the mark that is the subject of Registration Number 4,735,449 on March 11,
`
`2010.
`
`4.
`
`The mark that is the subject of Registration Number 4,735,449 was in use at
`
`least as early as April 2009.
`
`5.
`
`Opposer, and/or a predecessor in interest of the mark, filed its trademark
`
`application for the mark that is the subject of Registration Number 4,993,684 on December 26,
`
`2012.
`
`6.
`
`The mark that is the subject of Registration Number 4,993,684 was in use at
`
`least as early as December 2014.
`
`7.
`
`Opposer, and/or a predecessor in interest of the mark, filed its trademark
`
`application for the mark that is the subject of Registration Number 6,119,177 on May 12, 2016.
`
`8.
`
`The mark that is the subject of Registration Number 6,119,177 was in use in
`
`commerce at least as early as December 18, 2018.
`
`9.
`
`Applicant filed its application for the GLOWE Mark on April 19, 2021.
`
`10.
`
`Applicant filed its application for the GLOW Mark on an intent-to-use basis.
`
`11.
`
`Opposer’s first use and/or filing dates for the Registrations listed above predate
`
`Applicant’s April 19, 2021 filing date, and predate the earliest date on which Applicant can rely,
`
`and thus Opposer’s rights are senior to those of Applicant.
`
`12.
`
`Applicant’s GLOWE Mark is confusingly similar to Opposer’s GLO Marks. As
`
`such, consumers will undoubtedly associate Applicant’s services under the GLOWE Mark with
`
`Opposer’s goods and services offered under the GLO Marks.
`
`

`

`13.
`
`Opposer’s GLO Marks and Applicant’s GLOWE Mark are highly similar, if not
`
`identical.
`
`14.
`
`Opposer’s GLO Marks and Applicant’s GLOWE Mark are phonetic equivalents.
`
`15.
`
`Opposer’s Glo Marks consist exclusively of the word GLO.
`
`16.
`
`Applicant’s GLOWE Mark consists exclusively of the word GLOWE.
`
`17.
`
`Opposer’s GLO Marks and Applicant’s GLOWE mark differ only in the presence
`
`of the letters W and E in the GLOWE mark.
`
`18.
`
`As stated in the TMEP, “Marks may be confusingly similar in appearance dispute
`
`the addition, deletion, or substitution of letters or words.” See TMEP §1207.01(b)(ii).
`
`19.
`
`Applicant’s GLOWE Mark wholly incorporates Opposer’s GLO Marks.
`
`20.
`
`Applicant’s goods and services are identical and/or substantially related to
`
`Opposer’s goods and services.
`
`21.
`
`Applicant’s GLOWE mark covers “Providing a web site featuring information in
`
`the field of mental health and wellness; . . . Providing a website featuring information in the field
`
`of positive psychology, personal happiness, and mental health and wellness health” in Class 44.
`
`22.
`
`Applicant’s services set forth in Paragraph 21 are substantially similar to/identical
`
`to/encompassing or encompassed by Opposer’s following services:
`
`
`
`
`
`“Providing an interactive website featuring information in the fields of health . . .” in the
`
`4,735,449 Registration.
`
`“Providing a website featuring informational, non-downloadable audio-visual content,
`
`specifically, photographic, audio and video presentations in the fields of health-related
`
`matters, namely, health, wellness, and nutrition” in the 4,993,684 Registration;
`
`

`

`
`
`“providing information in the fields of health-related matters, namely, health, wellness,
`
`and nutrition” in the 4,993,684 Registration.
`
`23.
`
`Applicant’s GLOWE mark covers “Downloadable interactive multimedia
`
`computer program for use in the fields . . . mental health and wellness for use on computers,
`
`mobile phones, portable media players, handheld computers, and other mobile devices.”
`
`24.
`
`Applicant’s goods set forth in Paragraph 23 are encompassed by Opposer’s
`
`“Computer software for wireless data communication for receiving, processing, transmitting and
`
`displaying information relating to fitness, health, wellness” goods in the 6,119,177 Registration.
`
`25.
`
`Applicant’s GLOW mark covers “Providing a website featuring blogs and non-
`
`downloadable publications in the nature of articles in the field(s) of self-improvement, positive
`
`psychology, personal happiness, and mental health and wellness.”
`
`26.
`
`Applicant’s services set forth in Paragraph 25 are identical-in-part to Opposer’s
`
`“providing blogs in the nature of an online journal over the Internet featuring exercise, fitness,
`
`music, and health-related matters” services in the 4,993,684 Registration.
`
`27.
`
`Neither Applicant’s GLOWE Mark nor Opposer’s GLO Marks contain limitations
`
`restricting the channels of trade.
`
`28.
`
`Applicant’s and Opposer’s goods and services are sold and/or offered to the same
`
`class of consumers.
`
`29.
`
`Opposer believes and alleges that Applicant’s GLOWE Mark, when applied to the
`
`goods and services listed in Application Serial No. 90/655,479, is likely to cause confusion or
`
`mistake or to deceive and mislead the trade and purchasing public into believing (a) that Opposer
`
`is the source of the Applicant’s goods and services; (b) that Opposer sponsors, approves or
`
`endorses Applicant’s goods and services; (c) that Applicant is authorized, licensed to and/or
`
`

`

`controlled by Opposer; or (d) that Applicant is a division or subsidiary of, or in some way related
`
`to Opposer.
`
`30.
`
`Applicant’s GLOWE Mark “so resembles a mark registered in the Patent and
`
`Trademark Office, or a mark…previously used in the United States and not abandoned, as to be
`
`likely, when applied to the goods of the applicant, to cause confusion, or to cause mistake or to
`
`deceive.” 15 U.S.C § 1052(d).
`
`31.
`
`For the reasons set forth in the foregoing paragraphs, Applicant is not entitled to
`
`register its GLOWE Mark and the application should be denied in accordance with Section 2(d)
`
`of the Lanham Act, 15 U.S.C § 1052(d).
`
`32.
`
`If Applicant is granted the registration herein opposed, it would thereby obtain at
`
`least a prima facie exclusive right to the use of its GLOWE Mark. Such registration would be a
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`source of further damage and injury to Opposer.
`
`WHEREFORE, Opposer prays that Application Serial No. 90/655,479 be rejected, and
`
`that registration of Applicant’s GLOWE Mark shown and specified therein be refused and
`
`denied, and that this Opposition be sustained in favor of Opposer.
`
`Opposer is submitting a filing fee of $2400.00 via credit card. If for any reason this
`
`payment method is unsuccessful, authorization is granted to charge the filing fee of $2400.00 to
`
`Deposit Account No. 22-0261 and notify the undersigned accordingly.
`
`Opposer appoints Rebecca Liebowitz and Catherine Mitros, along with the law firm of
`
`Venable LLP, P.O. Box 34385, Washington, D.C. 20043-9998 to transact all business on its
`
`behalf in connection with this Opposition.
`
`Date: August 8, 2022
`
`Respectfully submitted,
`
`By:
`Rebecca Liebowitz, Esq.
`
`

`

`Catherine Mitros, Esq.
`Venable LLP
`P.O. Box 34385
`Washington, D.C. 20043
`Telephone: (202) 344-4976
`Facsimile (202) 344-8300
`Attorneys for Opposer
`
`

`

`8/8/22, 9:23 AM
`
`United States Patent and Trademark Office Home Site Index Search FAQ Glossary Contacts eBusiness eBiz alerts News
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`Exhibit A
` Exhibit A
`Trademark Electronic Search System (TESS)
`
`Trademarks > Trademark Electronic Search System (TESS)
`
`TESS was last updated on Mon Aug 8 03:17:23 EDT 2022
`
`
`ee
`mde
`cauedbee
`Eo
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`Next DocJLast Doc
`Please logout when you are done to release system resourcesallocated for you.
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`List At: or |YUMP|to record: Record 4 out of 4
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`( Use the "Back" button of the Internet Browserto return to
`
`TESS)
`
`GLO
`
`Word Mark GLO
`
`Goods and_
`Services
`
`IC 041. US 100 101 107. G & S: (( Providing news, information and commentary in the fields of fashion,
`entertainment, home decor,interior decorating, interior design, music, movies, books, current events, and clothing;
`none of the aforesaid services in connection with the study of the Bible or Christian publications )). FIRST USE:
`20090400. FIRST USE IN COMMERCE: 20090400
`
`IC 044. US 100 101. G & S: Providing an interactive website featuring information in the fields of health (( and
`beauty )). FIRST USE: 20090400. FIRST USE IN COMMERCE: 20090400
`
`IC 045. US 100 101. G & S: (( Providing an interactive website featuring information onlifestyles and personal and
`professionalrelationships )). FIRST USE: 20090400. FIRST USE IN COMMERCE: 20090400
`
`Standard
`Characters
`Claimed
`
`Mark
`Drawing
`Code
`
`Serial
`Number
`
`(4) STANDARD CHARACTER MARK
`
`77956879
`
`Filing Date March 11, 2010
`Current
`4A
`Basis
`
`Original
`Filing Basis
`Published
`for
`Opposition
`Registration 4735449
`Number
`
`June 26, 2012
`
`Registration
`Date
`
`May 12, 2015
`
`https://tmsearch.uspto.gov/bin/showfield?f=doc&state=4801 :hqei3q.2.4
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`1/2
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`

`

`8/8/22, 9:23 AM
`
`Owner
`
`(REGISTRANT) HB, L.L.C. LIMITED LIABILITY COMPANY DELAWARE2900 Olympic Blvd., 3rd Floor Santa
`Monica CALIFORNIA 90404
`
`Trademark Electronic Search System (TESS)
`
`(LAST LISTED OWNER) GLO DIGITAL, INC. CORPORATION DELAWARE 1740 STANFORD STREET SANTA
`MONICA CALIFORNIA 90404
`Assignment assigNMENT RECORDED
`Recorded
`Attorney Of popecca Liebowitz
`Record
`Type of
`Mark
`
`SERVICE MARK
`
`Register
`Affidavit
`Text
`
`PRINCIPAL
`SECT 15. SECT 8 (6-YR).
`
`Live/Dead
`Indicator
`
`LIVE
`
`
`
`Next DocJLast Doc
`
`| HOME | SITE INDEX] SEARCH | eBUSINESS | HELP | PRIVACY POLICY
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`

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`8/8/22, 9:24 AM
`
`Trademark Electronic Search System (TESS)
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`| (a United States Patent and Trademark Office Home Site Index Search FAQ Glossary Contacts eBusiness eBiz alerts News
`
`Trademarks > Trademark Electronic Search System (TESS)
`
`TESS was last updated on Mon Aug 8 03:17:23 EDT 2022
`
`
`
`Next DocJLast Doc
`Please logout when you are done to release system resourcesallocated for you.
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`
`
`
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`List At: OR|Jump|to record: Record 5 out of 5
`
`( Use the "Back" button of the Internet Browserto return to
`
`GLO
`
`Word Mark
`
`GLO
`
`Goods and__
`Services
`
`IC 009. US 021 023 026 036 038. G & S: Downloadable physicalfitness and exercise instructional video and
`audio recordings with or without pre-recorded music via the Internet and wireless devices; digital media, namely,
`downloadable audio and video recordings, featuring fitness, exercise, music and health-related issues;
`downloadable multimedia file containing artwork, text, audio, video, and Internet weblinksrelating to fitness,
`exercise, music and health-related matters; downloadable electronic publications in the form of brochures, leaflets,
`and workbooksfeaturing fitness, exercise, music and health-related issues. FIRST USE: 20141200. FIRST USE
`IN COMMERCE: 20141200
`
`IC 038. US 100 101 104. G & S: Broadcasting and streaming of audio-visual media contentin thefieldsof fitness,
`exercise and health-related matters via a global computer network; webcasting servicesrelated to fitness,
`exercise, wellness, nutrition and health-related issues; providing accessto online forumsfor transmission of
`messagesandblogsrelated to fitness, exercise, wellness, nutrition and health-related issues overthe Internet;
`providing online electronic bulletin boards for transmission of messages amo