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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA888937
`04/10/2018
`
`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
`
`Entity
`
`Address
`
`Attorney informa-
`tion
`
`New York Media, LLC
`
`Corporation
`
`Citizenship
`
`Delaware
`
`75 Varick Street
`New York, NY 10013
`UNITED STATES
`
`Alexandra Vaccaro
`Moses & Singer LLP
`405 Lexington Avenue
`12th Floor
`New York, NY 10174
`UNITED STATES
`Email: avaccaro@mosessinger.com, dshapiro@mosessinger.com, trade-
`marks@mosessinger.com, pporter@mosessinger.com
`Phone: 212-554-7800
`
`Applicant Information
`
`Application No
`
`87621338
`
`Publication date
`
`03/13/2018
`
`Opposition Filing
`Date
`
`Applicant
`
`04/10/2018
`
`Opposition Peri-
`od Ends
`
`04/12/2018
`
`theCut, LLC
`PMB 165
`4491 Cheshire Station Plaza
`Dale City, VA 22913
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 2016/05/00 First Use In Commerce: 2016/05/00
`All goods and services in the class are opposed, namely: Downloadable mobile application for book-
`ing and managing appointments; Downloadable mobile application for paying for appointments
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`False suggestion of a connection with persons,
`living or dead, institutions, beliefs, or national
`symbols, or brings them into contempt, or disrep-
`ute
`
`Trademark Act Section 2(d)
`
`Trademark Act Section 2(a)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`4722778
`
`Application Date
`
`08/06/2014
`
`

`

`Registration Date
`
`04/21/2015
`
`Word Mark
`
`Design Mark
`
`THE CUT
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2011/03/28 First Use In Commerce: 2011/03/28
`Computer application software for mobile devices, namely, software for viewing
`content regarding fashion, beauty, culture and women's lifestyle
`
`Attachments
`
`86358693#TMSN.png( bytes )
`Notice of Opposition THECUT.pdf(98342 bytes )
`
`Signature
`
`/Alexandra Vaccaro/
`
`Name
`
`Date
`
`Alexandra Vaccaro
`
`04/10/2018
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Trademark Application Serial No. 87/621,338
`For the mark: THECUT
`Published in the Official Gazette on March 13, 2018
`
`
`
`NEW YORK MEDIA, LLC,
`
`
`Opposer,
`
`-against-
`
`
`
`
`Opposition No. _________
`
`
`
`THECUT, LLC,
`
`
`
`
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`Opposer, New York Media, LLC, a limited liability company organized and existing
`
`under the laws of Delaware, having its principal place of business at 75 Varick Street, New
`
`York, New York 10013, believes that it will be damaged by the registration of the designation
`
`THECUT shown in the above-identified application, and hereby opposes the same pursuant to
`
`Section 13(a) of the Trademark Act of 1946, as amended (the “Lanham Act”), 15 U.S.C. §
`
`1063(a), and 37 C.F.R. § 2.104(b).
`
`As grounds for its opposition, Opposer, by its attorneys Moses & Singer, LLP, alleges as
`
`follows:
`
`
`
`
`
`
`
`

`

`1.
`
`New York Media, LLC (“NY Media” or “Opposer”), is the publisher of New York
`
`Magazine, a biweekly magazine covering the news, culture, entertainment, lifestyle, and fashion,
`
`which was founded in April 1968, and reaches 2.85 million readers each week. NY Media also
`
`owns a number of affiliated websites, including nymag.com, thecut.com, grubstreet.com,
`
`nymag.com/strategist, and vulture.com. NY Media’s websites reach an even larger global
`
`audience, with approximately 42.3 million visitors monthly.
`
`2.
`
`Since at least 2006, long before Applicant started using the designation THECUT,
`
`NY Media has used THE CUT as a mark for its fashion blog on nymag.com.
`
`3.
`
`THE CUT has developed since 2006 into a major brand for NY Media. In August
`
`2012, NY Media launched www.thecut.com (“THE CUT Site”) as a stand-alone website devoted
`
`to THE CUT as a brand.
`
`4.
`
`THE CUT is now a premier online publication and a regular column in New York
`
`Magazine featuring content on beauty, wellness, fashion, culture, design, and issues facing
`
`women today. THE CUT Site averages more than 23.6 million page views per month. There are
`
`more than 14.2 million visits to THE CUT Site monthly on average, by an average of 9.5 million
`
`monthly visitors.
`
`5.
`
`THE CUT regularly features content relating to men’s fashion, health and
`
`grooming.
`
`6.
`
` NY Media owns U.S. Registration No. 4,722,778 for the mark THE CUT for
`
`“computer application software for mobile devices, namely, software for viewing content
`
`regarding fashion, beauty, culture and women's lifestyle” in International Class 9 (“Opposer’s
`
`Class 9 Mark”).
`
`
`
`
`
`
`
`

`

`7.
`
`Opposer’s Class 9 Mark issued on April 21, 2015 and is valid, subsisting, and in
`
`full force.
`
`8.
`
`NY Media owns several additional trademark registrations for THE CUT,
`
`including Registration Nos. 3,760,960 (Class 41); 4,722,777 (Class 16); 4,682,234 (Class 35);
`
`and 4,722,781 (Class 41). All of the foregoing registrations are collectively referred to hereafter
`
`as “Opposer’s Marks.”
`
`9.
`
`By virtue of its use in interstate commerce since at least September 7, 2006, NY
`
`Media owns common law trademark rights throughout the United States for the mark THE CUT.
`
`10.
`
`NY Media has immeasurable brand recognition in Opposer’s Marks. Consumers
`
`nationwide associate the mark THE CUT with NY Media. Additionally, NY Media has spent a
`
`considerable amount of resources promoting, protecting and developing its THE CUT brand
`
`since 2006. Opposer maintains a routine and comprehensive enforcement program for
`
`Opposer’s Marks and has continuously acted to protect its exclusive rights.
`
`11.
`
`On September 25, 2017, Applicant, theCut, LLC (“Applicant”), filed its
`
`application for THECUT (“Applicant’s Designation”) under Serial No. 87/621,338 for
`
`“downloadable mobile application for booking and managing appointments; downloadable
`
`mobile application for paying for appointments” in International Class 9 (the “Application”).
`
`12.
`
`Applicant’s Designation is identical to Opposer’s THE CUT Marks.
`
`
`
`
`
`
`
`

`

`13.
`
`The goods listed in the Application are so closely related to the goods and
`
`services NY Media offers under its THE CUT mark as to be likely to cause confusion, to cause
`
`mistake, and to deceive the trade and public, who are likely to associate the goods offered by
`
`Applicant with those offered by NY Media, or to believe that Applicant’s goods are sponsored,
`
`endorsed or licensed by NY Media, or that there is some relationship between Applicant and NY
`
`Media.
`
`14.
`
`Applicant offers goods under Applicant’s Designation in channels of trade and
`
`market segments identical or closely related to those in which Opposer offers its goods and
`
`services under THE CUT
`
`15.
`
`Opposer will be damaged by the registration sought by Applicant because such
`
`registration would support and assist Applicant in making confusing and misleading use of the
`
`mark sought to be registered, and would give color of exclusive statutory rights to Applicant in
`
`violation and derogation of the prior and superior rights of NY Media.
`
`16.
`
`Registration of the application cited herein should be refused pursuant to Section
`
`2(a) of the Lanham Act, 15 U.S.C. § 1052(a), on the grounds that Applicant’s use and
`
`registration of Applicant’s THECUT will falsely suggest a connection between Applicant and
`
`NY Media, to the damage of NY Media.
`
`17.
`
`Registration of the application cited herein should be refused pursuant to Section
`
`2(d) of the Lanham Act, 15 U.S.C. § 1052(d), on the grounds that Applicant’s THECUT so
`
`closely resembles Opposer’s Marks as to be likely, when used on or in connection with the
`
`services identified in the application, to cause confusion, or to cause mistake, or to deceive, with
`
`consequent injury to NY Media and to the public.
`
`
`
`
`
`
`
`

`

`WHEREFORE, NY Media believes it will be damaged by the registration by Applicant
`
`of Applicant’s Mark for services identified in Application Serial No. 87/621,338, and
`
`respectfully requests that this Opposition be sustained in favor of NY Media and registration of
`
`Applicant’s designation be denied.
`
`Pursuant to 37 C.F.R. § 2.6(a)(17), please charge Deposit Account Number 50-3326 the
`
`requisite amount of $400 per application per class, and any additional amounts to cover the
`
`statutory filing fees.
`
`Dated: New York, New York
` April 10, 2018
`
`
`Respectfully submitted,
`
`MOSES & SINGER LLP
`
`
` /Deborah L. Shapiro/
`
`Deborah L. Shapiro
`Alexandra M. Vaccaro
`405 Lexington Avenue
`New York, New York 10174-1299
`(212) 554-7800
`
`Attorneys for Opposer,
`New York Media, LLC
`
`
`
`
`
`
`
`

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