Hearst Communica-tions, Inc.v.TVNess, LLC

Trademark Trial and Appeal Board

Feb 20, 2007

No. 91162261 (T.T.A.B. Feb. 20, 2007)

Mailed: February 20, 2007
wellington
Opposition No. 91162261
HEARST COMMUNICATIONS, INC.1

v.
TVNESS, LLC

Before Hohein, Drost and Cataldo,
Administrative Trademark Judges.

By the Board:

This proceeding now comes up on the following motions:
opposer Hearst Communications, Inc.’s (“HCI”) motion (filed
September 28, 2005) for summary judgment; HCI’s motion
(filed January 17, 2006) to exclude certain exhibits filed
by applicant with its opposition to the summary judgment
motion; and applicant’s motion (filed December 27, 2005)
for an oral hearing on the summary judgment motion.

1 As explained later in this order (in particular, see footnotes
2 and 3), Hearst Communications, Inc. is the owner of all pleaded
registrations in the notice of opposition. We therefore find
that it is the real party in interest and, accordingly, Hearst
Magazines Property Inc. is dismissed from this proceeding. Fed.
R. Civ. P. 17(a) and 25(c); see also TBMP § 512.01 (2d ed. rev.
2004) and authorities cited therein.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT CITABLE
AS PRECEDENT OF
THE T.T.A.B.
Opposition No. 91162261
2
Before addressing the above motions, we note the
following relevant pleadings and filings in this
proceeding.
On June 17, 2002, applicant filed an application to
register the mark COSMO PARTY for the following services:
Providing consumer product information over global
computer communications networks, particularly
concerning products in the field of dating, parties,
and event planning, in International Class 35;

Entertainment services, namely providing a wide range
of information over global computer communications
networks, particularly concerning services, events,
activities, attractions and facilities in particular
geographic locations in the field of parties, events,
discussions, and entertainment; providing and
organizing parties and events planning, in
International Class 41; and

Computer dating services; namely providing a web site
that registers face-to-face meetings, blind dates,
get-together meetings, parties, events, discussions,
and entertainment; providing electronic reservations,
setting-up day, hour and place to meet; providing on-
line information concerning dating and personal
relationship issues through a web site, accessed via
interconnected global computer networks, for the
purpose of making acquaintances, friendship, dating
and long term relationships; providing on-line and
interactive access to electronic personal classified,
providing dating services and matching services for
singles; dating service, namely providing dating
places consultation; dating parties; dating and
singles sweepstakes; on-line computer database in the
field of dating, in International Class 45.

The application (Serial No. 76421735) is based on a
claim by applicant of a bona fide intention to use the mark
Opposition No. 91162261
3
in commerce. Applicant has disclaimed the right to
exclusive use of the term PARTY apart from the mark.
HCI and Hearst Magazines Property Inc. (“HMPI”), as
joint opposers, initially opposed registration on the
grounds of likelihood of confusion and dilution.
Specifically, they alleged that they are subsidiaries of
The Hearst Corporation, which is “one of the largest
communications companies in the world”; that HMPI’s
predecessor in interest began using the COSMOPOLITAN mark
in connection with a magazine in 1886; that such magazine
is produced under license by HCI; that “for the last 100
years, HMPI, its predecessors, and its licensees have
invested a substantial amount of time, effort, and money in
promoting the internationally famous and well-known
COSMOPOLITAN magazine”; that HMPI is the owner of
Registration No. 630028 for the mark COSMOPOLITAN for a
"magazine or periodical published monthly or at other
intervals" in International Class 16;2 that HMPI is the
owner of Reg. No. 2407134 for the mark COSMO GIRL! in
connection with "providing an interactive on-line computer

2 The registration issued on July 3, 1956 with a date of first
use anywhere and in commerce of March 31, 1886. A review of
USPTO records reflects that an assignment of the registration
from HMPI to HCI was recorded with the USPTO Assignment branch on
February 24, 2005 (at reel 3034, frame 0151). The registration
was renewed (for ten years) on July 12, 2006.

Opposition No. 91162261
4
database featuring portions of various magazines and
articles and illustrative materials in the fields of
personal relationships, beauty and fashion, health and
fitness, personal hygiene, stars and entertainment news,
and life and work, rendered by means of a global computer
network" in International Class 42;3 that HCI also owns five
other registrations for the mark COSMOPOLITAN covering a
variety of goods, including pre-recorded exercise video and
audio tapes, general interest books, eyeglasses, hair
ornaments, and handheld electric dryers and curling irons;
that opposers have “made various unregistered uses of the
COSMOPOLITAN and COSMO marks,” including sponsoring or
cosponsoring “a number of social events under the
COSMOPOLITAN and COSMO marks each year that bring together
unmarried individuals” which took place before the filing
date of the subject application; that “[s]ince 1997, HCI
has used the mark COSMO QUIZ for a regular section of its
magazines that frequently address personal relationships
and dating”; that the aforementioned marks constitute a
“family of COSMO and COSMOPOLITAN marks”; that this family
of marks has “acquired a high degree of recognition, fame,

3 The registration issued on November 21, 2000 with a date of
first use anywhere and in commerce of June 29, 1999. A review of
USPTO records reflects that the registration issued to HCI, not
HMPI, and no assignment of the registration has been recorded. A
Section 8 affidavit was filed on November 16, 2006.
Opposition No. 91162261
5
and distinctiveness as symbols of the high quality products
and services offered by Opposers prior to the filing date
of applicant's application”; that “based on the
similarities of the marks and the goods and services, the
relevant public is likely to be confused into believing
that applicant's services, as offered under the COSMO PARTY
mark, emanate from opposers”; and that “opposers will be
damaged by registration of applicant's COSMO PARTY mark
because the mark dilutes and is likely to dilute the
distinctiveness of the famous marks making up opposers'
family of COSMOPOLITAN and COSMO marks.”
Applicant, in its answer, denied the salient
allegations of the notice of opposition.
We turn first to applicant’s request for an oral
hearing on the summary judgment motion. An oral hearing is
not held on a motion except by order of the Board.
Trademark Rule 2.127(a). Moreover, it is the practice of
the Board to deny a request for an oral hearing on a motion
unless, in the opinion of the Board, an oral hearing is
necessary to clarify the issue or issues to be decided.
See TBMP § 502.03 (2d ed. rev. 2004) authorities cited
therein. Ordinarily, arguments on a motion are, and should
be, adequately presented in the briefs thereon, and
therefore the Board rarely grants a request for an oral
Opposition No. 91162261
6
hearing on a motion. Id. In this case, we find that an
oral hearing on the summary judgment motion is unnecessary
and, accordingly, applicant’s motion requesting such a
hearing is denied.
We now turn to HCI’s motion for summary judgment. By
way of the motion, HCI seeks judgment solely on the
likelihood of confusion claim. The parties have briefed
the motion. In order to expedite our decision, the Board
presumes familiarity with the issues presented and
therefore has not provided a complete recitation of the
allegations and contentions of each party.
A party moving for summary judgment has the burden of
demonstrating the absence of any genuine issue of material
fact, and that it is entitled to summary judgment as a
matter of law. Fed. R. Civ. P. 56(c). See also, Celotex
Corp. v. Catrett, 477 U.S. 317 (1986). When the moving
party’s motion is supported by evidence sufficient, if
unopposed, to indicate that there is no genuine issue of
material fact and that the moving party is entitled to
judgment as a matter of law, the nonmoving party may not
rest on mere denials or conclusory assertions, but rather
must offer countering evidence, by affidavit or as
otherwise provided in Fed. R. Civ. P. 56, showing that
there is a genuine factual dispute for trial. See Fed. R.
Opposition No. 91162261
7
Civ. P. 56(e), and Octocom Systems Inc. v. Houston Computer
Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir.
1990). In a motion for summary judgment, the evidentiary
record and all reasonable inferences to be drawn from the
undisputed facts must be viewed in the light most favorable
to the nonmoving party. See Lloyd’s Food Products Inc. v.
Eli’s Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993).
Preliminarily, we turn to HCI’s request to deem its
requests for admission as admitted based on applicant’s
failure to respond to said requests. Specifically, HCI
asserts that on December 7, 2004, it served requests for
admissions on applicant; that applicant has not responded
to these discovery requests; and that, therefore, the
requests for admissions are deemed admitted by applicant
under Fed. R. Civ. P. 36. A copy of opposer’s requests for
admissions is attached to the motion.4 Opposer argues that
these admissions by applicant include admissions as to (i)
“opposers’ prior use of a family of marks based on
COSMOPOLITAN and COSMO”, (ii) the “validity, fame, and
distinctiveness of opposers’ marks,” and (iii) the
“confusing similarity of applicant’s mark and the marks

4 The Board’s copy of the admission requests was incomplete;
pages 2, 6-7, 9, 11-13, 15-18 were missing. On February 8, 2007,
opposer filed a complete copy of its requests for admissions, as
served on applicant.

Opposition No. 91162261
8
making up opposers’ family of marks.” Based on the
admissions deemed by Rule 36 to be admitted, HCI concludes
that there is no genuine issue of material fact in this
case as to any of the relevant factors pertaining to
likelihood of confusion and that it is entitled to judgment
as a matter of law.
Fed. R. Civ. P. 36 provides that if a party upon which
requests for admission have been served fails to file a
timely response thereto, the requests will stand admitted
(automatically), and may be relied upon by the propounding
party pursuant to 37 CFR § 2.120(j)(3)(i), unless the party
upon which the requests were served 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 Rule 36(b), and granted by
the Board. See also TBMP § 527.01(d)(2d ed. rev. 2004).
Based on the record, it is clear that applicant failed
to respond to HCI’s requests for admission. In its
response to the summary judgment motion, applicant ignores
the ramifications of failing to respond to the requests for
admission and does not otherwise attempt to show that its
failure to respond was the result of excusable neglect.
Applicant does not seek leave to withdraw or amend any
Opposition No. 91162261
9
admissions effectively admitted under Fed. R. Civ. P. 36,
but requests that the summary judgment motion be denied.
In view of the above, all of opposer’s 116 requests
for admissions served on applicant stand admitted and are
considered conclusively established. Fed. R. Civ. 36(b);
see also American Automobile Ass’n v. AAA Legal Clinic of
Jefferson Crooke, P.C., 930 F.2d 1117, 19 USPQ2d 1142, 1144
(5th Cir. 1991) (an admission not withdrawn or amended
cannot be rebutted by contrary testimony at trial). These
admissions include the following: that “[s]ince prior to
applicant's filing date and date of first use and as a
result of widespread advertising and promotion by opposers,
opposers' marks have acquired a high degree of recognition,
fame, and distinctiveness as symbols of high quality
products and services offered by opposers” (Admission
Request No. 111); that applicant’s mark “creates the same
commercial impression as opposers' marks” (Admission
Request No. 115); that applicant’s mark is “confusingly
similar to [opposer['s] ... registered COSMO GIRL mark used
in connection with a magazine that discusses, among other
things, personal relationships and dating” (Admission
Request No. 20); that applicant’s mark is “confusingly
similar to ...HCI's COSMOPOLITAN.COM mark” (Admission
Request No. 28); that applicant’s mark is “confusingly
Opposition No. 91162261
10
similar to ...HCI's COSMOPOLITAN mark, used in connection
with general interest books” (Admission Request No. 52);
that applicant’s mark “is confusingly similar to ... HCI's
COSMOPOLITAN mark, used in connection with hair ornaments”
(Admission Request No. 68); and that “services provided
under the opposed mark are directly competitive to those
provided under [HCI’s] marks” (Admission Request No. 117).
In view of applicant’s admissions, we find there is no
genuine issue of material fact remaining for trial.
Notwithstanding applicant’s arguments and submissions in
its opposition to the summary judgment motion, we conclude
that there is a likelihood of confusion between the
parties’ respective marks.5
Accordingly, HCI’s motion for summary judgment is
granted, the opposition is sustained on the likelihood of
confusion ground, and registration of applicant’s mark is
refused. In view of our finding of a likelihood of
confusion, it is unnecessary for this case to go forward
for a determination of the dilution claim.
* * *

5 HCI’s motion to strike certain exhibits submitted by applicant
with its response to the summary judgment motion is moot. Even
considering the exhibits in dispute, these do not raise a genuine
issue of material fact in view of the conclusive admissions made
by applicant.