Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA735498 Filing date: 03/23/2016 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91226896 Party Plaintiff Michael Gleissner TA CKL Holdings N.V. Correspondence Jonathan G. Morton Address Law Offices of Jonathan G. Morton 4th Floor246 West Broadway New York, NY 10013 UNITED STATES [email protected] Submission Motion to Amend Pleading/Amended Pleading Filer's Name Jonathan Morton Filer's e-mail [email protected] Signature /s/Jonathan G. Morton/ Date 03/23/2016 Attachments AvexOppAmendeds.pdf(97228 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE TRADEMARK TRIAL AND APPEAL BOARD Michael Gleissner /TA/ CKL Holdings NV Trademark Application Opposer, Mark: avex trax v. Serial No. 86744006 Avex Group Holdings Inc Filed: September 01, 2015 Applicant. Published: March 1st, 2016 Opposition No. 91226896 Motion to Amended Pleading and Amended Pleading Commissioner of Trademarks 2900 Crystal Drive Arlington, VA 2202-3514. Madam: COMES NOW the Opposer, Michael Gleissner trading as CKL Holdings NV (“CKL” or “Opposer”) by and through their attorney of record Jonathan G. Morton to file a motion to amend their complaint pursuant to Fed. R. Civ. P. 15(1)(a) as follows: 1. The Applicant filed a trademark application which was assigned Application Serial Number 86744006 to register the mark “avex trax” (“the Applicant’s Application”) on September 1st 2015 (“The Applicant’s Filing Date”) in the United States Patent and Trademark Office (“USPTO”) in International class 9 and 41. 2. The Applicant lists the following goods in its application: “Compact discs featuring animation, music, graphics, movies; recorded video disks featuring animation, music, graphics, movies; recorded video tapes featuring animation, music, graphics, movies; DVDs featuring animation, music, graphics, movies; optical discs featuring animation, music, graphics, movies; downloadable video recordings featuring animation, music, graphics, movies; digital music downloadable from the Internet; downloadable electronic publications, namely, magazines, newsletters in the field of music; downloadable software in the nature of a mobile application on the presentation of live performances, namely, a mobile application that allows one to view and listen to concerts, plays, comedy shows, musicals, opera, and acrobatic shows; amusement apparatus, namely, computer game software” under class 9 and; “Providing live entertainment performances, namely, concerts, plays, comedy shows, musicals, opera, and acrobatic shows; production of shows, namely, concerts, plays, comedy shows, musicals, opera, acrobatic shows; providing non-downloadable music files through the Internet under class 41. 3. The Opposer has filed an application within the USPTO to register the trademark “Trax”. This application was assigned US Serial number “86862557”. The Opposer’s filing in the United States is based on its foreign filing with the Pakistan Intellectual Property Organization (PIPO), (Application Number 392697) which was filed on June 30th, 2015. 4. Accordingly, because the Opposer’s foreign date of filing precedes the Applicant’s domestic filing the Opposer claims priority over the Applicant’s filing pursuant to article 4(B) and (C) of the Paris Convention for the Protection of Industrial Property. Substantive Grounds for the Opposition 5. The Opposer has filed this opposition on the substantive grounds that the similarities between the trademarks creates a high likelihood that the general public would confuse the goods listed under the Applicant’s Mark as in some way originating from the Opposer or in some other way associated with the Opposer’s goods. See 15 USC §1114; L.P Land Trading ApS v Kohler Co., 163 F3d 27, 43 (1st Circ. 1998); Arrow Fastener Co. v Stanley Works, 49 F.3d 384, 399 (2 Cir. 1995); Florence Mfg. Co. v J.C Dowd & Co., 178 F.2d 73, 75 (2d Circ 1910); Sharkeys Inc. v Covalt, 704 F.2d 426,631 6. This likelihood of confusion stems from the fact that the Applicant’s mark incorporates the Opposer’s mark “Trax” in its entirety. The Opposer recognizes that the Applicant’s mark is a composite mark and thus the likelihood of confusion between the Applicant and Opposer’s mark needs to be considered in light of the entirety of the Applicant’s mark, and that it is improper to dissect the marks when comparing the likelihood of confusion. See: Giant burger Food, Inc. v Nation’s Foodservice, Inc., Appellee, 710 F.2d 1565 (Fed. Circ. 1983) and In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993). 7. However, in determining the likelihood of confusion it is proper to give weight to a particular feature of a mark where logic deems necessary. See In Re National Data corp., 753 F.3d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“[T]here is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark….”). 8. In the context of the Applicant’s goods and services, “Trax” is the word element that has emphasis and weight over the other word element “Avex”. The goods and services listed within the Applicant’s filing includes (amongst others): downloadable from the internet featuring music, and recorded tracks featuring music. 9. “Trax” is clearly meant to be an alternative spelling of the term “Tracks”; a term that refers to a recorded piece of song or music. The average consumer is likely to remember a term that they are already familiar with over a term that has no dictionary definition, especially where that regular term has an alternative and unique spelling. 10. Moreover of the two word elements “Trax” has a relatively easier pronunciation, which adds to the likelihood that the average consumer would remember it over “Avex”. This ease of pronunciation also necessarily means that the average and lay consumer would refer the products and services offered by the Applicant’s trademark by the second word element as opposed to the first. 11. The Likelihood of confusion is further amplified by the overlap in the Opposer and Applicant’s filing in international class 9. While there is no directly overlapping goods, the goods in the Applicant’s filing are in the natural zone of expansion of the goods listed in the Opposer’s filing. Particularly, the goods of “downloadable software in the nature of a mobile application on the presentation of live performances,” and “amusement apparatus, namely, computer game software” which is virtually identical to the Opposer’s listing of “Computer hardware and software” in their class 9 filing. See Re Shell Co., 992 F.2d 1204, 1207, 26 U.S.P.Q.2d 1687, 1689 (Fed. Cir. 1993) [The degree of similarity required between the goods is directly proportional to the degree of dissimilarity between the marks]. WHEREFORE, CKL HOLDINGS NV believes and avers that it will be damaged by said registration in international Class 9 and respectfully requests that this Opposition be sustained and registration of the mark and design shown in Application Serial Number 86744006 be refused. Dated: March 23rd, 2016 By /s/ Jonathan G. Morton/ Jonathan G. Morton, Esq. Attorney for Opposer Morton and Associates D.C. Bar No. 989862 246 West Broadway, 4th Floor New York, NY 10013 D.C. Bar No. 989862 Telephone: (212) 468 5491 Facisimile: (212) 656 1828 CERTIFICATE OF SERVICE I hereby certify that on this the 24th day of March, 2016, a copy of the foregoing NOTICE OF OPPOSITION was served upon the correspondent of record for Applicant via international mail, postage prepaid, and addressed as follows: Lackenbach Siegal Llp 1 Chase Rd Scarsdale, NEW YORK UNITED STATES 10583-4156 By: /s/ Jonathan G. Morton/ Jonathan G. Morton, Esq. Attorney for Opposer General Counsel for CKL Holdings N.V. .