Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1010790 Filing date: 10/23/2019 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 Viacom International Inc. Granted to Date 12/18/2019 of previous ex- tension Address 1515 BROADWAY 33RD FL. NEW YORK, NY 10036 UNITED STATES Correspondence KAYDI OSOWSKI information VIACOM INTERNATIONAL INC. 1515 BROADWAY 33RD FL. NEW YORK, NY 10036 UNITED STATES [email protected], [email protected] 2128467911 Applicant Information Application No 88376449 Publication date 08/20/2019 Opposition Filing 10/23/2019 Opposition Peri- 12/18/2019 Date od Ends Applicant Forbes, James Jude 2775 Triunfo Canyon Road Cornell, CA 91301 UNITED STATES Goods/Services Affected by Opposition Class 009. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Downloadable podcasts in the field of cur- rent events Class 041. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Educational and entertainment ser- vices,namely, a continuing program about current events accessible by means of socialmedia, web- based applications, mobile phone applications and computer networks;Entertainment services, namely, providing podcasts in the field of current events Grounds for Opposition Priority and likelihood of confusion Trademark Act Section 2(d) Dilution by blurring Trademark Act Sections 2 and 43(c) Dilution by tarnishment Trademark Act Sections 2 and 43(c) Other Application seeks registration of more than one mark; Trademark Act Sections 1 and 45 Marks Cited by Opposer as Basis for Opposition U.S. Registration 3817005 Application Date 09/29/2009 No. Registration Date 07/13/2010 Foreign Priority NONE Date Word Mark BEHIND THE MUSIC Design Mark Description of NONE Mark Goods/Services Class 041. First use: First Use: 1997/08/24 First Use In Commerce: 1997/08/24 ENTERTAINMENT SERVICES, NAMELY, PROVIDING AN ON-GOING TELE- VISION PROGRAM FEATURING LIVE ACTION, DRAMA, COMEDY, ANIMA- TION, MUSIC, NEWS, AND GENERAL ENTERTAINMENT; PROVIDING ON- LINE INFORMATION IN THE FIELD OF ENTERTAINMENT CONCERNING TELEVISION PROGRAMS U.S. Registration 4923229 Application Date 11/21/2013 No. Registration Date 03/22/2016 Foreign Priority NONE Date Word Mark BEHIND THE SONG Design Mark Description of NONE Mark Goods/Services Class 041. First use: First Use: 2013/10/23 First Use In Commerce: 2013/10/23 ENTERTAINMENT SERVICES IN THE NATURE OFCONTINUING PROGRAM SERIES, FEATURING LIVE ACTION, COMEDY AND DRAMA PROVIDED THROUGH CABLE TELEVISION, BROADCAST TELEVISION, INTERNET, VIDEO-ON-DEMAND, AND THROUGH OTHER FORMS OF TRANSMISSION MEDIA; PROVIDING ONLINE INFORMATION IN THE FIELDOF ENTERTAIN- MENT CONCERNING TELEVISION PROGRAMS U.S. Application/ Registra- NONE Application Date NONE tion No. Registration Date NONE Word Mark BEHIND THE MUSIC REMASTERED Goods/Services ENTERTAINMENT SERVICES, NAMELY, PROVIDING AN ONGO- ING TELEVISION PROGRAM FEATURING LIVE ACTION, DRAMA, COMEDY, ANIMATION, MUSIC, NEWS, AND GENERAL ENTER- TAINMENT; PROVIDING ONLINE INFORMATION IN THE FIELD OF ENTERTAINMENT CONCERNING TELEVISION PROGRAMS Related Proceed- Viacom International Inc. v. James Jude Forbes, Opposition No. 91241793 ings Attachments 77837548#TMSN.png( bytes ) 86124997#TMSN.png( bytes ) BEHIND THE NOO.pdf(471651 bytes ) Signature /klo/ Name KAYDI OSOWSKI Date 10/23/2019 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD IN THE MATTER OF APPLICATION Mark: BEHIND THE… Applicant: James Jude Forbes Serial No.: 88376449 Filed: April 8, 2019 Published in the Official Gazette: August 20, 2019 x : VIACOM INTERNATIONAL INC., : : Opposer, : Opposition No. ___,___ : v. : : JAMES JUDE FORBES, : : Applicant. : x NOTICE OF OPPOSITION Viacom International Inc., a Delaware corporation with its principal place of business at 1515 Broadway, New York, New York, 10036 (“Opposer”), believes that it will be damaged by the registration of application Ser. No. 88376449 filed on April 8, 2019 by James Jude Forbes (“Applicant”) for the mark BEHIND THE… covering “downloadable podcasts in the field of current events” in International Class 9, and “educational and entertainment services, namely, a continuing program about current events accessible by means of social media, web-based applications, mobile phone applications and computer networks; entertainment services, namely, providing podcasts in the field of current events” in International Class 41 (“Alleged Mark” or “Application”) and, having previously been granted an extension of time to oppose, hereby opposes the Application. 1 The specific grounds for this opposition are as follows: A. Opposer Viacom International Inc. 1. Opposer’s parent company, Viacom Inc., is a premier global media company that develops, creates and provides entertainment content, services and related branded products. 2. Through its divisions Viacom Media Networks and Viacom International Media Networks, Opposer’s program services reach approximately 4.4 billion cumulative television subscribers in 180 countries, via 314 locally programmed and operated television channels. 3. Through Viacom Media Networks, Opposer operates the famous VH1 television network (“VH1”). VH1 is a leading lifestyle brand with pop culture, celebrities and lifestyle topics, including original series, exclusive events and entertainment news. 4. VH1 was launched in 1985. In September 2018, VH1 reached approximately 275 million cumulative television subscribers in 109 countries worldwide. 5. Opposer also owns and operates the website located at www.vh1.com, as well as VH1 pages on the social media sites Facebook, Twitter, Instagram, and Tumblr (collectively, the “VH1 Online Properties”). In the quarter ended September 30, 2018, the VH1 Online Properties in the aggregate averaged approximately 2.8 million monthly unique visitors domestically and, according to internal data, 28 million content video streams each month. VH1 has approximately 51 million cumulative followers across social media platforms. 6. In August 1997, VH1 launched its BEHIND THE MUSIC series, which profiles a different musician or musical group in each episode. The BEHIND THE MUSIC series is available on VH1’s website and other online platforms. 7. The BEHIND THE MUSIC series has enjoyed exceptional success and spawned two spinoffs, BEHIND THE MUSIC REMASTERED and BEHIND THE SONG, thereby 2 creating a family of BEHIND THE marks (BEHIND THE MUSIC, BEHIND THE MUSIC REMASTERED and BEHIND THE SONG, collectively, the “Family of BEHIND THE Marks”). 8. In addition to Opposer’s common law rights in its Family of BEHIND THE Marks, Opposer owns U.S. Trademark Registration No. 3,817,005 for the mark BEHIND THE MUSIC for “entertainment services, namely, providing an on-going television program featuring live action, drama, comedy, animation, music, news, and general entertainment; providing online information in the field of entertainment concerning television programs” in International Class 41 (“Opposers Services”), based on a first use in commerce of August 24, 1997 (the “BEHIND THE MUSIC Registration”). 9. The BEHIND THE MUSIC Registration is valid, subsisting and in full force and effect and serves as prima facie evidence of the validity of the BEHIND THE MUSIC mark and of Opposer’s exclusive right to use the BEHIND THE MUSIC mark in connection with the services listed in the Registration. Further, the BEHIND THE MUSIC Registration is incontestable pursuant to 15 U.S.C. § 1065. 10. Opposer’s Family of BEHIND THE Marks are distinctive, and Opposer’s BEHIND THE MUSIC mark became famous long prior to the filing and/or priority date of the Application and, upon information and belief, long prior to any use of the Alleged Mark in interstate commerce by Applicant. 11. As a result of the long, extensive and widespread use and promotion of Opposer’s Family of BEHIND THE Marks, consumers have become accustomed to associating marks that consist of or contain the words BEHIND THE with Opposer, particularly when used in connection with entertainment-related services. 3 B. Applicant James Jude Forbes 12. Applicant was an employee of Opposer at the time that VH1’s BEHIND THE MUSIC series was launched. 13. During Applicant’s period of employment with Opposer, Applicant was approached to provide voice over services and to narrate the BEHIND THE MUSIC series, an offer which Applicant accepted. Applicant served as the narrator of the BEHIND THE MUSIC series on all U.S. airings with the exception of the first two episodes (which focused on Milli Vanilli and M.C. Hammer). When the Milli Vanilli episode of BEHIND THE MUSIC was updated to include the death of Rob Pilatus, Applicant provided the narration for the updated episode. See Exhibit A. 14. Applicant also narrated both of the BEHIND THE MUSIC spin off series, BEHIND THE MUSIC REMASTERED and BEHIND THE SONG. 15. Upon information and belief, Applicant is recognized in the entertainment industry as the narrator of the BEHIND THE MUSIC series. 16. On September 28, 2017, Applicant, an individual with an address at 2775 Triunfo Canyon Road, Agoura Hills, California, 91301, filed Application Ser. No. 87627264 to register the mark BEHIND THE… for “television show production” services in International Class 41 (the “First Application”