Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1168235
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`Filing date:
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`10/25/2021
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`92076531
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`Party
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`Correspondence
`Address
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`Plaintiff
`Fashion One Television LLC
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`MICHAEL GLEISSNER
`FASHION ONE TELEVISION LLC
`246 WEST BROADWAY
`NEW YORK, NY 10013
`UNITED STATES
`Primary Email: mgleiss@fashionone.com
`212-796-4304
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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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`Attachments
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`Other Motions/Submissions
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`Michael Gleissner
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`mgleiss@bigfoot.com
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`/Michael Gleissner/
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`10/25/2021
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`TTAB - Cancellation Proceedings 92076634 and 92076531 - Motion to Qua
`sh.pdf(381986 bytes )
`TTAB - Cancellation Proceedings 92076634 and 92076531 - Fashion TV -
`COS.pdf(159073 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Fashion One Television LLC
` Petitioner
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`v.
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`fashiontv.com GmbH
` Respondent
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`Cancellation No. 92076634
`Cancellation No. 92076531
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`Registration No. 5477536 and
`Registration No. 3530563
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`Mark:
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`FASHION TV
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`PETITIONER’S PRELIMINARY
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`RESPONSE FOR RESPONDENT’S MOTION FOR
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`JUDGMENT ON THE PLEADINGS AND
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`ALTERNATIVELY FOR SUMMARY JUDGMENT
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`In the abovementioned proceedings, Petitioner Fashion One Television LLC and related
`companies (hereinafter “Petitioner”) hereby responds to, and requests opportunity and additional time
`to respond, to the Motion for Judgment on the Pleadings and Summary Judgment (the “Motion”) filed
`by Respondent on April 10, 2021, for the following reasons:
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`Respondent and Respondent’s Counsel Attempt to Deceive and Defraud the Board
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`1.
`The factual allegations presented in the Motion contain a significant number of
`falsehoods and misrepresentations to the Trademark Trial and Appeals Board (the “Board”).
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`- 1 -
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`A.
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`–
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`Mark:
`Reg. Nos.:
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`Page 2
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`Fashiontv
`5477536 and
`3530563
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`Petitioner intends to vigorously defend this action, and introduce evidence of Petitioner and
`Petitioner’s counsel deliberately trying to mislead the Board.
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`2.
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`Respondent and Petitioner are competitors. It was in fact the Respondent that started a
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`campaign massive attacks, starting in April 2013 and lasting for several years, through a multiple
`legal actions based on alleged trademark infringement on a trademark “Fashion One” that
`Respondent applied for in 2013. Such actions included a massive campaign against Petitioner’s
`“Fashion One” brand, including the sending of cease and desist letters to practically all of
`Petitioners clients. Petitioner has spent an excess of $4 million to defend those actions and appease
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`its customers.
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`It was also Respondent that started applying for a trademark “Fashion One” in 2013 in
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`bad faith despite full awareness that Petitioner is using the “Fashion One” brand, including
`attempts to cancel registered “Fashion One” trademarks that Petitioner has acquired.
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`4.
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`The 2016 “Settlement Framework Agreement” that Respondent introduced as Exhibit B
`has never matured into permanency. Respondents deliberately fails to mention that subsequent
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`settlement talks failed. Specifically, the agreement includes a provision to that extent:
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`“In the event no final settlement can be reached, for any reason, this agreement
`shall serve as a mutual license […]”
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`5.
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`Both Respondent and Respondent’s counsel is fully aware that a final settlement
`agreement never came to fruition. The agreement provided for a final draft to be negotiated
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`between the parties, but any settlement negotiations broke down due to the highly instable persona
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`of the principal of Respondent who frequently changed his mind about terms agreed to orally and
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`refusing to sign or withdraw from a final agreement.
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`6.
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`Throughout a period between 2013 and 2017, Petitioner and Respondent has initiated
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`and concluded several dozens of legal actions worldwide related to the use of the brands in use or
`intended to use for a thematic television network - “Fashion One”, “Fashion TV”, and “Fashion
`Television”.
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`- 2 -
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`Mark:
`Reg. Nos.:
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`Page 3
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`Fashiontv
`5477536 and
`3530563
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`7.
`It was Respondent that started cancellation actions in 2013 or 2014 related to the brand
`“Fashion Television” after being made aware of Petitioners efforts to acquire the brand.
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`8.
`Over a period of 3 years, Respondent has been engaged in an extensive campaign to
`sabotage Petitioner by legal actions commenced worldwide against Respondent and Respondent’s
`existing or potential customers.
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`B.
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`Petitioner has Legitimate Interest in the Proceedings
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`Petitioner has spent millions of Dollars on acquiring the rights to the brand “Fashion
`5.
`Television”, a television channel established by what is now known as Bell Media, one of the
`premier media companies in Canada.
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`6.
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`Clearly, the brand “Fashion TV” is confusingly similar to “Fashion Television”.
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`7.
`Petitioner is routinely monitoring competitor activity, and has therefore ascertained the
`fact that the “Web Shop” Respondent claimed as Evidence of Use is permanently non functional. It
`does not take any orders, presumably because the account of the underlying ecommerce provide is
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`no longer in good standing.
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`8.
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`It is therefore safe to assume that Respondent abandoned activities in the United States,
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`which entitles Petitioner to cancel its trademark registration on basis of non-use.
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`Respondent who is Portraying Petitioner as Abuse, is in fact Abuser
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`D.
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`9.
`Respondent is trying to portray Petitioner as abuser. In fact, Respondent has attempted
`to register trademarks for Petitioners “Fashion One” channel in more than 20 jurisdictions.
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`10.
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`In all but a handful jurisdictions, those applications were refused by national trademark
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`offices due to the established prior rights Petitioner was holding.
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`- 3 -
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`Mark:
`Reg. Nos.:
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`Page 4
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`Fashiontv
`5477536 and
`3530563
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`11.
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`Further, as Petitioner has vigorously defended Petitioner’s “Fashion One” brand, almost
`all trademark offices have concluded that trademarks registered by the Respondent are to be
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`cancelled for either bad faith or non use.
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`Petitioner is Entitled to Discovery
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`E.
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`12. The procedures of the Trademark Trial and Appeals Board specifically include the
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`period of discovery that establishes the fact of the underlying case.
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`13. Why Respondent believes that they are entitled to Summary Judgment before
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`completion of the discovery period is a mystery, and the Board shall apply due process and allow
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`both parties to go through the process prescribed in the guidelines.
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`12.
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`From a standpoint of economic considerations, one must wonder why Respondent
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`actually takes the costly effort of filing such elaborate motions if in case Respondent has in fact the
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`evidence to address the underlying issue by just providing evidence of use, which they claim. Such
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`evidence, if it is available, would undoubtedly be much easier to file. Instead Respondent relies on
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`unsubstantiated claims and hearsay.
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`13.
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`Petitioner has already served Petitioner’s Discovery Requests upon Respondent. Instead
`of Responding to said requests, Respondent has filed the subject motion in an apparent attempt to
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`evade the obligation of discovery.
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`14.
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`One can only speculate about the reasons for going through such elaborate efforts to
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`avoid discovery, but one logical conclusion is that Respondent in fact has nothing to substantiate
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`actual use, and therefore fraud against the United States Patent and Trademark Office would come
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`to light.
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`Petitioner Request Time to Respond
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`15.
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`There is extensive material Petitioner intends to introduce to support the above,
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`however in case the Board is considering the Motion of Respondent, requests a period of 60 days to
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`- 4 -
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`F.
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`Mark:
`Reg. Nos.:
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`Page 5
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`Fashiontv
`5477536 and
`3530563
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`provide substantiative evidence.
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`16.
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`Reason for this is that a key associate of Petitioner in charge of Intellectual Property
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`matters, Mr. Ivan Seevens, has surprisingly passed in April 2021 at the age of 50, with many
`records not in the direct possession of Respondent’s representative.
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`17.
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`This request is made in case the Board considers the Motion, despite Petitioner’s
`conclusion of untimeliness and violation of the process prescribed in Manual for Proceedings in
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`front of the Trademark Trial and Appeal Board at the United States Patent and Trademark Office.
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`In consideration of the above Petitioners pray that the Board either
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`(a)
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`rejects the “Motion” as untimely and violation of the prescribed process, and orders
`Respondent to comply with the discovery schedule
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`or alternatively:
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`(b) allow Petitioner a period of 60 days to substantiate the above after the opportunity to review
`the extensive documentation of litigation and other legal actions that took place over the last 7
`years
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`Respectfully submitted,
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`Fashion One Television LLC
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`Signed: /Michael Gleissner/
`By: Michael Gleissner
`Director
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`Date: October 25, 2021
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`
`
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`Fashion One Television LLC
` Petitioner
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`v.
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`fashiontv.com GmbH
` Respondent
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`Cancellation No. 92076634
`Cancellation No. 92076531
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`Registration No. 5477536 and
`Registration No. 3530563
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`Mark:
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`FASHION TV
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`CERTIFICATE OF SERVICE
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`This is to certify in accordance with Trademark Rule 37 C.F.R. 2.119 and TBMP 113, the
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`foregoing was served via electronic mail to the email addresses being the ones on record for
`Petitioner’s counsel and at the time of filing shown in the online access system known as TTABVUE,
`namely:
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`rdowd@dunnington.com
`sbousquet@dunnington.com
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`–
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`October 25, 2021
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`Fashion One Television LLC
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`Signed: /Michael Gleissner/
`By: Michael Gleissner
`Director
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