Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA412025
`ESTTA Tracking number:
`05/31/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91197024
`Defendant
`Keisha Whitaker
`Mark B. Mizrahi
`Brooks Kushman P.C.
`1000 Town Center22nd Floor
`Southfield, MI 48075
`UNITED STATES
`mmizrahi@brookskushman.com, ejbrooks@brookskushman.com,
`lscott@brookskushman.com, dkellogg@brookskushman.com
`Other Motions/Papers
`Mark B. Mizrahi
`mmizrahi@brookskushman.com, lscott@brookskushman.com,
`ejbrooks@brookskushman.com, dkellogg@brookskushman.com
`/mark b mizrahi/
`05/31/2011
`Applicants response to order to show cause with Exhibit.pdf ( 7 pages )(102041
`bytes )
`Evidence.pdf ( 1 page )(81976 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Advance Magazine Publishers, Inc.
`
`Opposition No. 91197024
`
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Opposer,
`
`
`v.
`
`
`
`
`Keisha Whitaker,
`
`
`
`
`
`
`Applicant.
`
`
`
`
`APPLICANT’S RESPONSE TO ORDER TO
`
`SHOW CAUSE WHY JUDGMENT BY DEFAULT SHOULD NOT BE ENTERED
`
`Applicant Keisha Whitaker (“Applicant”), by its attorneys, respectfully requests that the
`
`
`
`Trademark Trial and Appeal Board set aside the default entered against it, pursuant to Fed. R.
`
`Civ. P. 55(a). Specifically, Applicant hereby response to the April 28, 2011 Notice of Default in
`
`order to show cause why judgment by default should not be entered pursuant to Fed. R. Civ. P.
`
`55(b). (“the OSC”).
`
`Applicant is filing this preliminary response in an abundance of caution, as the Board has
`
`not yet ruled on the Consented to Motion for Extension of Time to Respond to Order To Show
`
`Cause Why Judgment by Default Should Not Be Entered, submitted by Applicant on May 25,
`
`2011. In the event that the Board affords Applicant with an opportunity to respond to the OSC at
`
`a later date, Applicant reserves the right to submit a response at that time.
`
`I.
`
` Relevant Authority
`
`If a defendant who has failed to file a timely answer to the complaint responds to a notice
`
`of default by filing a satisfactory showing of good cause why default judgment should not be
`
`entered against it, the Board will set aside the notice of default. See TMBP 312.02 and Fed. R.
`
`Civ. P. 55(c). Accordingly, Applicant respectfully submits that the below argument constitutes a
`
`

`
`satisfactory showing of good cause as to why default judgment should not be entered against it
`
`and that the Board should set aside the notice of default.
`
`“Good cause why default judgment should not be entered against a defendant, for failure
`
`to file a timely answer to the complaint, is usually found when the defendant shows that (1) the
`
`delay in filing an answer was not the result of willful conduct or gross neglect on the part of the
`
`defendant, (2) the plaintiff will not be substantially prejudiced by the delay, and (3) the
`
`defendant has a meritorious defense to the action. [Note 2.] The showing of a meritorious
`
`defense does not require an evaluation of the merits of the case. All that is required is a plausible
`
`response to the allegations in the complaint. [Note 3.].” See TMBP 312.02
`
`“The determination of whether default judgment should be entered against a party lies
`
`within the sound discretion of the Board. [Note 4.] In exercising that discretion, the Board must
`
`be mindful of the fact that it is the policy of the law to decide cases on their merits. Accordingly,
`
`the Board is very reluctant to enter a default judgment for failure to file a timely answer, and
`
`tends to resolve any doubt on the matter in favor of the defendant. Nevertheless, entry of default
`
`judgment may be necessary in some cases. [Note 5.].” See TMBP 312.02
`
`II. Discussion
`
`Good cause exists as to why default judgment should not be entered against Applicant, for
`
`failure to file a timely answer to the complaint.
`
`Firstly, as set forth in the accompanying Declaration of Paul Papile, the delay in filing an
`
`answer was not the result of willful conduct or gross neglect on the part of Applicant.
`
`Secondly, Opposer will not be substantially prejudiced by the delay. Indeed, as set forth
`
`in the Board’s notice of reissued dates, dated February 3, 2011, Applicant's response to the
`
`Notice of the Opposition was due on March 15, 2011. On May 19, 2011, the undersigned
`
`counsel contacted Opposer's counsel to request Opposer’s consent to set aside the default and to
`
`discuss an informal resolution of this dispute. Opposer ultimately consented to extend the time
`
`

`
`for Applicant to respond to the OSC by 30 days and, on May 25, 2011, Applicant filed the
`
`Consented to Motion for Extension of Time to Respond to Order To Show Cause Why Judgment
`
`by Default Should Not Be Entered. By May 19, 2011, the date that Applicant's undersigned
`
`counsel first contacted Opposer’s counsel, discovery in this Case would have barely commenced.
`
`Accordingly, Opposer will not be substantially prejudiced by the delay caused by Applicant's
`
`failure to timely respond to the Notice of Opposition.
`
`Thirdly, Applicant has meritorious defenses to Opposer’s allegations in this action. As
`
`stated in TMBP 312.02, the showing of a meritorious defense does not require an evaluation of
`
`the merits of the case; all that is required is a plausible response to the allegations in the
`
`complaint. Indeed, the three marks in the registrations proffered by Opposer are distinguishable
`
`on their face.
`
`1. Reg. No. 407439, for the mark GLAMOUR, for a “monthly magazine” in International
`
`Class 016;
`
`2. Reg. No. 503282, for the mark GLAMOUR (in design), for a “monthly magazine” in
`
`International Class 016;
`
`3. Reg. No. 1953217, for the mark GLAMOUR WOMEN OF THE YEAR, for “educational
`
`services, namely providing incentives to women to demonstrate excellence in a variety of
`
`fields through the issuance of an annual award,” in International Class 041;
`
`4. Reg. No. 3128415, for the mark GLAMOUR WOMEN OF THE YEAR (in design), for
`
`“Entertainment services, namely production of television programs; entertainment,
`
`namely, a continuing annual awards ceremony show broadcast over television,” in
`
`International Class 041; and
`
`5. Reg. No. 2553759, for the mark GLAMOUR.COM, for “providing fashion and beauty
`
`information distributed over television, satellite, audio, video, and global computer
`
`

`
`networks and providing a wide range of information by means of global computer
`
`networks,” in International Class 041.
`
`These marks and the goods/services recited therein differ in numerous respects from
`
`Applicant's EVERYDAY GLAMOUR mark for “Consultation and advice regarding personal
`
`fashion skills and lifestyle improvement available in person and through television, cable,
`
`satellite television and computer networks.”
`
`This is especially true in light of the fact that there are numerous registered, allowed, and
`
`published registrations/applications for marks entertainment services that include the word
`
`GLAMOUR. Attached hereto as Exhibit 1 is a printout from TESS of applications/registrations
`
`for marks that include GLAMOUR for entertainment services, many of which do not belong to
`
`Opposer. Accordingly, for these and other reasons which will be addressed in greater detail in
`
`these proceedings, Applicant has meritorious defenses.
`
`In addition, Applicant submits herewith its Answer to the Notice of Opposition.
`
`THEREFORE, it is respectfully submitted that the foregoing constitutes a proper showing
`
`of good cause to warrant setting aside the entry of default -- especially in view of the strong
`
`policy favoring deciding cases on their merits and the Board’s strong reluctance to enter a default
`
`judgment for failure to file a timely answer. Accordingly, Applicant respectfully requests that
`
`the Board enter an order setting aside the entry of default and, instead, allow this matter to
`
`proceed.
`
`Dated: May 31, 2011
`
`
`
`
`
`Respectfully Submitted,
`
`/s/
`
`
`
`Mark B. Mizrahi
`BROOKS KUSHMAN, PC
`6701 Center Drive, Suite 610
`Los Angeles, California 90045
`(310) 348-8200/FAX: (310) 743-1189
`mmizrahi@brookskushman.com
`Reg. No. 53,336
`
`
`
`
`
`
`

`
`CERTIFICATE OF SERVICE
`
`I certify that I served:
`
`
`
`
`
`APPLICANT’S RESPONSE TO ORDER TO
`
`SHOW CAUSE WHY JUDGMENT BY DEFAULT SHOULD NOT BE ENTERED
`
`
`on May 31, 2011 by:
`
`____ delivering
` X mailing (via First-Class mail)
`
`
`
`
`
` a
`
` copy to:
`
`Eric E. Gisolfi
`Sabin, Bermant & Gould, LLP
`4 Times Square
`New York, New York 10036-6526
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` /s/
`Mark Mizrahi
`
`
`
`
`
`
`
`
`
`

`
`
`
`EXHIBIT 1
`EXHIBIT 1
`
`

`
`Record List Display
`
`http://tess2.uspt0.gov/bin/showfield
`
`
`
`United States Patent and Trademark Office
`
`Home I Site Index I Search I FAQ [Glossary Ifiuides I Contacts I eBusiness I eBiz alerts I NewsI Help
`
`Trademarks > Trademark Electronic Search System (TESS)
`
`TESS was last updated on Fri May 27 04:05:46 EDT 2011
`
`Tess I-isms:
`
`
`Ihl_5:T.rl.J.1I55a
`
`awiueruéree
`
`
`
`
`
`sE14m:IH-05
`
`iillt:‘!"
`
`L457"
`
`
`
`
`
`Please logout when you are done to release system resources allocated for you.
`
`417 Records(s) found (This
`
`page: 1 __ 17)
`
`Refine Search
`
`
`(9IlII'I'°I‘IITI‘I9I“IIrI)iIII‘I’III'II‘II] ?IIFI§IIIII(§Hi9'l§.IP m?I'I?iiIi9§IIII?I'I‘IliI
`
`Current
`Search:
`
`86: (gI[amour)[MN] and (ente-rtainment)[GS] and
`(|Ive)[|d]
`
`does: 17 occ:
`70
`
`I
`
`I
`
`II
`
`I
`
`I
`
`I
`
`I
`
`I
`
`Word Mark
`
`I
`
`I
`
`I
`
`I
`
`I
`
`I
`
`I
`
`I
`
`II
`
`I
`
`I
`
`I
`
`I
`
`I
`
`I
`
`I
`
`I
`
`Check Status Live-lDead
`Serial N_ur_nIber- Reg. Number
`ITARR
`_|L_ive_
`'|GLAMouR_Rm_E I
`I1 P55193945
`II
`IIITAIRIR I
`[WEI
`lc-=L4MI9UR13IRLs,G<sII
`;E8s1I8I9?I6:»II III
`TARR
`LIVE
`M
`GLAMOURBELLES
`'II3—_ 85296124 I
`IGLAIVIOURRIDE EXPERIENCEYOURIINNERDIVAITARR
`ILIIVE
`I
`l|4
`55193944
`' IGLAMIIOIURWIHEEFSI
`-I
`I
`I
`I
`II
`I
`IITARRI
`ll
`IIILIV5
`III
`I5 I851I9frf9I9I¢II
`
`II IGLAMIQIURANDIGIFQWIIIII
` TIIliI*3"II
`'-‘V5
`I
`III.
`II5i'I‘*II~"II1‘I“I'-"I‘I3I-°*
`ITARR
`IIGLAMOUR BEES
`I
`LIVE
`I|7 iIa5051_s_5a_
`:|_
`
`_IL|(I3HTSlCAM!-ERAEGLAMOUR!
`ITARR I
`LIVE
`I.|?Es549504
`|3205523
`TEf\I31Gl-AIWIUFIQI
`I
`II
`II
`I
`I TIARRI
`I'—'I‘/IIE
`I
`5I~E5i7I3I3II9?I7I1I0I
`3.139355
`I
`I
`I
`IGLAI\!|0UR&G0_LF
`‘“"_TARR
`LIVE
`|1_0'|7__a7_151_94
`III3135249
`IMISIS GLAMOURINTERNATICIJNAL
`ITARR
`LIVE
`?|1I1I_|7538I4351
`3135574
`sI72?I785124I9
`I
`I
`I%_@-IAMQURISIPIVEIISITHEIVVQREIDII
`I TARR "I'I"-I"/E.
`-|1_3i|77214071_
`3354514
`BUTTERFLY PRINCESS GLAMOUR
`ITARR
`LIVE
`'"14'77313740
`3551375
`GLAMOURWOMEN or THE YEAR FUND
`ITARR
`LIVE
`IT575553390
`II
`GLIWQIURTV
`II
`I
`II
`I
`ITARR I
`WEI.
`;15__|755_2201_1
`3_125_41_5
`GLAIVIOURWOIVIEN or THE YEAR
`TARR
`LIVE
`17'I75140_3o_7
`2430099
`Il_.ITTLE IGLAMOURGIRLS I
`ITARR
`LIVE
`
`
`
`sIsm1;';r;rtI'-I:-u1_;'
`
`
`
`
`
`I.HO|V|E I SITE INDEXI SEARCH I BBUSINESS I HELP I PRIVACY POLECY
`
`l0f2
`
`5/27/2011 1:53 PM
`
`

`
`1, Paul Papile, declare as follows:
`
`Declaration of Paul Papile
`
`l.
`
`I am over the age of 18 years old and am not a party to the above-
`
`caption opposition proceeding.
`
`2.
`
`3.
`
`I make the following statements of my own personal knowledge.
`
`I am Applicant Keisha Whitaker’s business manager and,
`
`in that
`
`capacity,
`
`I handle her business affairs, including coordinating responses to legal
`
`proceedings and assisting in retaining counsel.
`
`4.
`
`For some unknown reason,
`
`the Board's notice instituting these
`
`proceedings and setting the trial dates was not brought to my attention until after
`
`the time to answer the Notice of Opposition had passed, despite the fact that the
`
`address on the Notice is my office address.
`
`5.
`
`Promptly upon learning of the Notice,
`
`I proceeded to seek and to
`
`engage counsel on behalf of Ms. Whitaker. Specifically, Ms. Whitaker engaged
`
`Mark B. Mizrahi with the law firm of Brooks Kushman PC. to represent her in this
`
`proceeding.
`
`6.
`
`I am informed that Mr. Mizrahi promptly thereafter initiated contact
`
`with Opposer's counsel on May 19, 2011 and the parties are seeking to formally
`
`resolve this matter.
`
`I declare under penalty of perjury that the foregoing is true and correct to the
`
`best of my knowledge.
`Executed this 31st day of May, 20]/ll
`
`California.