Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
ESTTA Tracking number: ESTTA1056677
Filing date: 05/20/2020
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 91254611
Party DefendantMagnolia IP Holdings LLC
CorrespondenceAddress
JOEL R FELDMANGREENBERG TRAURIG LLP3333 PIEDMONT RD NE SUITE 2500ATLANTA, GA 30305UNITED [email protected], [email protected]
Submission Answer
Filer's Name Joel R. Feldman
Filer's email [email protected], [email protected]
Signature /jrf/
Date 05/20/2020
Attachments 91254611 - Answer and Affirmative Defenses.pdf(1430638 bytes )
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
)
MAGNOLIA PICTURES LLC, )
)
Opposer, )
)
v. ) Opposition No. 91254611
)
MAGNOLIA IP HOLDINGS, LLC, )
)
Applicant. )
)
ANSWER
Magnolia IP Holdings, LLC (“Magnolia IP Holdings” or “Applicant”), by and through its
attorneys, hereby responds to the allegations in Magnolia Pictures, LLC’s (“Opposer”) Notice of
Opposition (“Notice”) as follows. The paragraph numbering below corresponds to the numbering in
that Notice. Magnolia IP Holdings denies each and every allegation in the Notice, except as
specifically admitted herein. To the extent any headings in the Notice could be construed as
containing an allegation, Magnolia IP Holdings denies any and all such allegations. The responses
below reflect only the current status of Magnolia IP Holdings’ knowledge and belief regarding the
subject matter of the allegations to which it responds and are subject to additional or different
information that may be discovered during the course of this proceeding.
Preamble. A response to the preamble is not required. To the extent a response is deemed
required, Magnolia IP Holdings denies that Opposer will be damaged by its registration of the mark
MAGNOLIA (“Applicant’s Mark”).
1. Magnolia IP Holdings is without knowledge or information sufficient to form a
belief as to the truth of the allegations of this paragraph, and denies them on that basis.
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2. Magnolia IP Holdings is without knowledge or information sufficient to form
a belief as to the truth of the allegations of this paragraph, and denies them on that basis.
3. Magnolia IP Holdings is without knowledge or information sufficient to form
a belief as to the truth of the allegations of this paragraph, and denies them on that basis.
4. Magnolia IP Holdings is without knowledge or information sufficient to form
a belief as to the truth of the allegations of this paragraph, and denies them on that basis.
5. Magnolia IP Holdings is without knowledge or information sufficient to form
a belief as to the truth of the allegations of this paragraph, and denies them on that basis.
Magnolia IP Holdings acknowledges that the “TSDR” database of the United States Patent
and Trademark Office shows that Registration Nos. 2919326, 3100797, and 3241622 are
owned by Opposer. For convenience, Magnolia IP Holdings will refer to Registration Nos.
2919326, 3100797, and 3241622 collectively as the “Opposer’s Cited Marks.”
6. Magnolia IP Holdings acknowledges that certificates of registration are
available on the TSDR database for those marks reflected in Exhibit A to Opposer’s Notice
of Opposition, but is without knowledge or information sufficient to form a belief as to the
truth of the other allegations of this paragraph, and denies them on that basis.
7. Magnolia IP Holdings is without knowledge or information sufficient to form
a belief as to the truth of the allegations of this paragraph, and denies them on that basis.
Magnolia IP Holdings acknowledges that the “TSDR” database of the United States Patent
and Trademark Office shows that Opposer’s Cited Marks are owned by Opposer and that a
Section 15 filing was made for each mark.
8. Magnolia IP Holdings is without knowledge or information sufficient to form
a belief as to the truth of the allegations of this paragraph, and denies them on that basis.
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9. Magnolia IP Holdings is without knowledge or information sufficient to form
a belief as to the truth of the allegations of this paragraph, and denies them on that basis.
Further, Opposer failed to properly plead common law rights.
10. Magnolia IP Holdings is without knowledge or information sufficient to form
a belief as to the truth of the allegations of this paragraph, and denies them on that basis.
11. Magnolia IP Holdings is without knowledge or information sufficient to form
a belief as to the truth of the allegations of this paragraph, and denies them on that basis.
12. Magnolia IP Holdings is without knowledge or information sufficient to form
a belief as to the truth of the allegations of this paragraph, and denies them on that basis.
13. Magnolia IP Holdings denies the allegations of this paragraph.
14. Magnolia IP Holdings denies the allegations of this paragraph.
15. Magnolia IP Holdings denies the allegations of this paragraph.
16. Magnolia IP Holdings denies the allegations of this paragraph.
17. Magnolia IP Holdings denies the allegations of this paragraph.
18. Magnolia IP Holdings admits that it is a Texas limited liability company.
19. Magnolia IP Holdings admits that it applied for registration of its
MAGNOLIA mark on March 20, 2019 under Serial No. 88/347,974, in connection with the
services listed under Class 38, on an intent to use basis, and otherwise denies any remaining
allegations of Paragraph 19.
20. Magnolia IP Holdings admits that its Application was published in the
USPTO’s Official Gazette (Trademarks) on February 11, 2020.1
21. Magnolia IP Holdings incorporates its responses to the allegations of
1 Magnolia IP Holdings admits that Opposer submitted a 30-day Request for Extension of
Time to Oppose the Application, which was granted by the Board on February 11, 2020.
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paragraphs 1–20 as set forth above.
22. Magnolia IP Holdings denies the allegations of this paragraph.
23. Magnolia IP Holdings denies the allegations of this paragraph.
24. Magnolia IP Holdings denies the allegations of this paragraph.
25. Magnolia IP Holdings denies the allegations of this paragraph.
26. Magnolia IP Holdings denies that it needs to seek or obtain Opposer’s
permission to use or register Applicant’s Mark, and denies the allegations of this paragraph
on that basis.
27. Magnolia IP Holdings denies the allegations of this paragraph.
28. Magnolia IP Holdings denies the allegations of this paragraph.
29. Magnolia IP Holdings denies the allegations of this paragraph.
Prayer for Relief. A response is not required to Opposer’s prayer for relief. To the
extent a response is deemed required, Magnolia IP Holdings denies that Opposer is entitled
to any relief whatsoever. Opposer’s prayer should therefore be denied in its entirety and
with prejudice, Opposer’s opposition should be denied, and Magnolia IP Holdings’
registration should be granted.
AFFIRMATIVE AND OTHER DEFENSES
Further answering the Notice and as additional answers thereto, Magnolia IP Holdings
asserts the following affirmative and other defenses:
FIRST DEFENSE
NO PRIORITY OF USE / OVERSTATEMENT OF REGISTERED RIGHTS
1. Opposer has overstated its rights in the registered marks that it identified as the
“Marks Cited by Opposer as Basis for Opposition” in its Notice of Opposition, U.S. Reg. Nos.
2,919,326; 3,100,797; and 3,241,622 (previously defined as “Opposer’s Cited Marks”).
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2. The only goods or services disclosed for all of the Opposer’s Cited Marks are
“Distribution of independent and foreign films.”
3. Although Opposer alleged that “[s]ince 2001, Magnolia Pictures has expanded its
film acquisition and distribution business to include a motion picture and television department,
financing, production, home entertainment distribution, and subscription VOD (video-on-
demand) distribution,” it has not specified the first use in commerce date or other details that
would be required to obtain a registration for such additional alleged goods and services.
4. Accordingly, Opposer has not provided a sufficient basis to claim priority of use
for goods and services that are not listed in the registrations for Opposer’s Cited Marks.
5. In contrast, the goods and services offered by Magnolia IP Holdings, its principals
Chip and Joanna Gaines, and their affiliated businesses are already predominantly associated
with the MAGNOLIA mark in the media and entertainment industry. Magnolia IP Holdings
owns or controls the rights to enforce the rights acquired in the MAGNOLIA brand by Chip and
Joanna Gaines and their affiliated entities and businesses, including Applicant.
6. The Gaines’ “Magnolia” story is well known. In 2003, Chip and Joanna Gaines
opened their first store – Magnolia Market – and their renovation and construction business –
Magnolia Homes (also known as Magnolia Waco Properties). The Gaines have employed
Magnolia in the names of their businesses ever since. When asked why “Magnolia,” the Gaines
have explained that Chip climbed up a magnolia tree and pulled a bloom off for Joanna on one of
their first dates. Since then, the couple has planted a magnolia tree at every home renovation
project they have worked on together.
7. In addition to Magnolia Market (including a storefront and trunk shows) and
Magnolia Homes, the Gaines have also engaged in other projects. In 2007, Chip entered into a
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property management and real estate venture called Magnolia Realty. In January 2011, Joanna
began sharing life updates, design tips, and updates from their renovation and construction
projects on her blog – www.themagnoliamom.com.2 In May 2013, Joanna began sharing videos
on her TheMagnoliaMom YouTube channel.3
8. Indeed, it was Joanna’s blog photographer who captured pictures of one very
special flip project – the Gaines’ then home – and sent the pictures to Design Mom, a popular
blog (www.designmom.com). Design Mom’s January 17, 2012 blog post featuring Chip and
Joanna Gaines’ rehab and design work garnered the attention of a television production
company. That production company reached out to Mrs. Gaines in March 2012 and sent a team
to Waco to film a 3-minute video about the Gaines’ daily lives and work in May 2012. One
network, HGTV, liked the video enough to order a pilot. Chip and Joanna Gaines began filming
the pilot in October 2012 and the pilot episode of “Fixer Upper” aired on May 23, 2013.
9. Fixer Upper became a hit HGTV television show that both covered and inspired
the expansion of the Magnolia home renovation and design business over five seasons from 2013
to 2018. The series grew into a tremendous success with viewers, and Chip and Joanna
Gaines—along with their signature MAGNOLIA brand—have become household names over
the course of the last seven years.
10. By the end of Fixer Upper’s run, it had become HGTV’s highest-rated show,
been nominated for two Emmy awards, two Broadcast Film Critics Association Awards, and a
People’s Choice Award, and averaged 2.8 million viewers over its 79 episodes. Fixer Upper’s
season 4 finale was among the highest-rated telecasts in all of 2017. Fixer Upper reruns
2 See
https://web.archive.org/web/20160101141804/http://themagnoliamom.blogspot.com/2011/12
/january-2011.html.
3 See https://www.youtube.com/user/TheMagnoliaMom/videos.
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continue to be watched by millions of members of the consuming public on the HGTV cable
network and through the HGTV Go app, Amazon Prime Video, Vudu, Google Play, Apple
iTunes, FandangoNow, and other sources.
11. Each and every episode of Fixer Upper makes prominent use of the MAGNOLIA
brand, including the Gaines’ Magnolia Homes and Magnolia Market businesses. In the show,
the Gaines not only discuss and document their Magnolia home renovation and design business,
but the brand is depicted visually throughout the show on signage, hats, shirts, mugs, laptops,
pickup trucks, and the like. These depictions have educated television viewers across the
country that “Magnolia” is synonymous with the Gaines’ take on lifestyle, design, and home
renovation.
12. Below are true and accurate screen shots taken from episodes of Fixer Upper,
showing illustrative depictions of Applicant’s MAGNOLIA brand on the television show.
In the Fixer Upper series finale, Chip Gaines explained that the magnolia “really embodies our
company,” and has “basically become our mascot” because for “every project we do, we love to
plant a magnolia gem.”
13. On information and belief, the show has taught millions of consumers that
Applicant’s MAGNOLIA brand is an indicator of source with respect to television production
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and home entertainment distribution.
14. Since its launch in 2013, each and every episode of Fixer Upper and other
significant MAGNOLIA brand-related content has been available to the consuming public
through video-on-demand distribution through the proprietary websites, apps, and other channels
associated with Applicant and HGTV and other online platforms described above.
15. Through their hard work and the loyalty of the Fixer Upper fan base, the Gaines
steadily expanded Magnolia, which has blossomed into one of the world’s premier television,
entertainment, lifestyle, and design brands. Today, the Applicant’s MAGNOLIA business also
includes a home goods retail store, a warehouse shop, a bakery, a restaurant, and a rental
property; the Gaines have used their national television platform to promote an ever-expanding
line of businesses—home décor items, furniture, paints, and wallpaper, hospitality, magazines,
and best-selling books—all under the iconic Magnolia brand. Applicant’s Magnolia app for
tablets and smartphones has been downloaded over 729,775 times.
16. For example, since the airing of Fixer Upper, the Gaines opened Magnolia
Market at the Silos in October 2015, which now draws over 30,000 visitors a week to its location
in Waco, Texas. The Gaines’ other businesses and projects over the years include: Magnolia
Villas, Magnolia Farms, Magnolia Seed + Supply, Magnolia Home (furniture and housewares
line), Magnolia Foundation, Magnolia Table, Magnolia Press, Hearth & Hand with Magnolia
(housewares sold in every Target store in America), as well as projects and collaborations with
other national brands like home goods for Pier 1 and paint for KILZ. The Gaines have also
published numerous books, including The Magnolia Story, Magnolia Table: A Collection of
Recipes for Gathering, Magnolia Table, Volume 2: A Collection of Recipes for Gathering, We
are the Gardeners, Homebody, and Capital Gaines, as well as a subscription journal entitled
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Magnolia Journal. Still further, the Gaines have opened various Magnolia Stay rental properties,
including the Magnolia House, and announced the opening of a hotel in the near future.
17. Several independent news sources have described Applicant’s business as a
“Magnolia Empire” and tied it directly to the popularity of Applicants’ television services,
including but not limited to the following sources:
• Chip and Joanna Gaines’ Magnolia Empire: A Look Inside, FOX BUSINESS (Mar. 5,
2019), https://www.foxbusiness.com/features/chip-and-joanna-gaines-magnolia-
empire-a-look-inside.
• Rachel Askinasi, See what life is like for ‘Fixer Upper’ couple Chip and Joanna
Gaines, who cofounded the Magnolia empire and are raising 5 kids on a farm in
Texas, BUSINESS INSIDER (Feb. 8, 2019), https://www.businessinsider.com/chip-and-
joanna-gaines-net-worth-life-2018-10.
• Taylor Mead, How Joanna And Chip Gaines’s Magnolia Empire Became A Serious
Waco Tourist Attraction, House Beautiful (Dec. 11, 2018),
https://www.housebeautiful.com/lifestyle/a22566281/magnolia-market-history/.
• Tricia Goss, A Look Inside Chip and Joanna Gaines’ Magnolia Empire, SIMPLEMOST
(Mar. 18, 2019), https://www.simplemost.com/inside-chip-and-joanna-gaines-
magnolia-empire/.
• J.B. Smith, Tourism boom of 2016 puts Waco on map of travel destinations, WACO
TRIBUNE-HERALD (Dec. 23, 2016), https://www.wacotrib.com/news/government/
tourism-boom-of-puts-waco-on-map-of-travel-destinations/article_38b87989-36c0-
5e49-bdcb-ed46a44a5bf9.html (“75 percent of” the growth of tourism in Waco, Texas
“is from Magnolia . . . the empire of Chip and Joanna Gaines”).
18. A key element to the success of all of these businesses is the consumer association
created between Applicant’s MAGNOLIA name and its use in connection with the Gaines’
unique brand of television broadcasting, internet broadcasting services, video-on-demand
transmission services, webcasting services, and electronic transmission and streaming of digital
media content for others via global and local computer networks.
19. Applicant and its affiliated businesses have also created their strong association
with the Magnolia brand through numerous other entertainment and informational products.
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20. Below is a true and correct copy of the cover of Chip and Joanna Gaines’ New
York Times best-seller The Magnolia Story.
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21. Below is a true and correct copy of the cover for Joanna Gaines’s cookbook
Magnolia Table, which was the best-selling cookbook of 2018.
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22. Below is a true and correct copy of the cover for Joanna Gaines’s cookbook
Magnolia Table, Volume 2, which is currently No. 1 on the New York Times bestseller list.4
4 See https://www.nytimes.com/books/best-sellers/advice-how-to-and-miscellaneous/.
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23. Below is a true and correct copy of the cover of Applicant’s lifestyle magazine
The Magnolia Journal, which has a readership of over 6.6 million.
24. On information and belief, the overwhelming majority of internet users that
search for “Magnolia” are searching for businesses associated with Magnolia IP Holdings and
the Gaines, not with Opposer.
25. On information and belief, Applicant and its affiliated businesses started using the
MAGNOLIA brand in connection with television production, home entertainment distribution,
and video-on-demand distribution before Opposer.
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26. On information and belief, far more consumers associate Applicant’s
MAGNOLIA-branded business with television production, home entertainment distribution, and
video-on-demand distribution than Opposer’s business.
SECOND DEFENSE
NO LIKELIHOOD OF CONFUSION
27. Applicant repeats and realleges each and every allegation in the foregoing
paragraphs of these Affirmative and Other Defenses as though fully set forth herein.
28. There is no likelihood of confusion between Applicant’s Mark and the Opposer’s
Cited Marks or any other common law variants of Opposer’s Magnolia marks.
29. First, for all the same reasons described above, millions of consumers already
associate the MAGNOLIA brand with Applicant’s television production, home entertainment
distribution, and video-on-demand distribution businesses. Consumer associations between the
MAGNOLIA mark and Applicant’s business are already commercially and conceptually strong.
Applicant’s proposed registration and use of its MAGNOLIA mark in Class 38 for a new
television network and associated venture with Discovery, Inc. is a natural extension of the
existing MAGNOLIA brand.
30. Second, there is a substantial and material difference between the nature of the
services disclosed in Opposer’s Cited Marks and the services listed for Applicant’s Mark.
Opposer only produces arthouse-style films that cater to a small niche of movie watchers. In
using Opposer’s Cited Marks for “distribution of independent and foreign films,” Opposer
markets its films to entertainment industry professionals who select films for theatrical release or
license them to be shown on prestige cable networks or video-on-demand services. To the extent
that Opposer’s films are marketed to the general public, its marketing focuses on the titles and
content of its films rather than on the name “Magnolia” or Opposer’s identity as a film
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production company. Opposer does not generally produce short-form television content, and it
certainly does not produce reality television programming that resembles home improvement and
design shows.
31. In contrast, Magnolia IP Holdings’ television offerings are marketed directly to
mass audiences nationwide by hosting programs about home repair, renovation, design, and
personal inspiration.
32. In the entertainment context, the format and substance of the programming at
issue is important and can serve to dispel any likelihood of confusion. See, e.g., Scorpitini v. Fox
Television Studios Inc., 918 F. Supp. 2d 866 (N.D. Iowa 2013) (granting summary judgment to
defendant where two TV shows called “The Gates” and “The Gate,” respectively, were “vastly
different” in content such that the proximity factor weighed in against the plaintiff); Chicago
Tribune Co. v. Fox News Network, LLC, 520 F. Supp. 2d 930 (N.D. Ill. 2007) (television show
was not likely to cause consumer confusion even though “both [plaintiff and defendant] involve
a media used to deliver news” and were called “redeye” because there is “little overlap in the
content of the parties’ products”); Strange Music, Inc. v. Strange Music, Inc., 326 F. Supp. 2d
481, 491 (S.D.N.Y. 2004) (two musicians operating under the same name were not competitively
proximate because of differences in their respective offerings and audience); Parenting
Unlimited Inc. v. Columbia Pictures Television Inc., 743 F. Supp. 221 (S.D.N.Y. 1990) (finding
no likelihood of confusion despite use of identical name “BABY TALK” for a magazine and a
new television program because they were “distinct[] in content and medium”).
33. The court’s decision in E! Entm’t Television, Inc. v. Entm’t One GP Ltd., No.
CV09-01778 R (RCX), 2009 WL 10673224, at *2 (C.D. Cal. May 19, 2009), aff’d sub nom. EA
Entm’t Television, Inc. v. Entm’t One GP Ltd., 363 F. App’x 510 (9th Cir. 2010) is illustrative.
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In that case, the court distinguished between the customers of a 24-hour television network and a
production company because the plaintiffs’ customers were “casual television viewers,” while
the defendants targeted “national retailers and wholesalers” to purchase their products. Id. at *2.
The material facts here are fundamentally the same: Applicants will market their content to
casual television viewers as a MAGNOLIA linear network with related non-linear DTC
offerings, while Opposer predominantly markets to film distributors, critics, and urbane
filmgoers.
34. Third, although Applicant’s Mark and Opposer’s Cited Marks share the term
“magnolia,” they are markedly different in critical ways, including their context. Opposer’s
Cited Marks are composite marks that include the word MAGNOLIA in combination with at
least one other word (i.e., MAGNOLIA PICTURES, MAGNOLIA HOME
ENTERTAINMENT) and two of Opposer’s Cited Marks are design marks that use a stark,
black, typewriter-like typeface, accompanied with a distinctive image of a cartoon flower within
a film reel. In both the drawing of the stylized mark and on Opposer’s website, the mark is in
black and white. In contrast, Magnolia IP Holdings’ Mark just consists of the word
MAGNOLIA. The composite nature of Opposer’s Cited Marks substantially differentiates them
in appearance, sound, connotation, and commercial impression from Magnolia IP Holdings’
MAGNOLIA mark, which, as a single word mark, is associated with the goods and services of
Magnolia IP Holdings and the Gaines.
35. Fourth, Opposer has cited no evidence of actual confusion, despite Applicant’s
long-standing use of its MAGNOLIA brand on television. On information and belief, a well-
designed survey of consumers of cable television will confirm that Applicant’s use of their
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MAGNOLIA brand for their new television network will not result in any material consumer
confusion.
36. Fifth, Applicant and Opposer target two distinct consumer bases that are
sophisticated enough to know the difference between their respective brands and the goods and
services each offers. As noted earlier, Opposer’s Cited Marks are best known only by film
industry professionals who select films for theatrical release or license them to be shown on
prestige cable networks or video-on-demand services. To the extent that Magnolia’s Cited
Marks are known to the movie-going public, Opposer’s fans are typically serious movie buffs
who focus on art-house cinema and exercise great discretion is selecting what movies to watch.
Applicant’s customers, in contrast, are viewers who are devoted to and enjoyed Fixer Upper,
fans of Chip and Joanna, and watchers of interior design, cooking, and lifestyle television
programs.
37. Where, as here, two entertainment companies cater to fans of distinct genres, no
confusion is likely. See, e.g., Sunenblick v. Harrell, 895 F. Supp. 616 (S.D.N.Y.
1995), aff’d, 101 F.3d 684 (2d Cir. 1996) (holding that two record labels called “Uptown” would
not be confused because they represented distinct genres that would not be confused—jazz vs.
rap music); SLY Magazine, LLC v. Weider Publications L.L.C., 529 F. Supp. 2d 425 (S.D.N.Y.
2007), aff’d, 346 F. App’x 721 (2d Cir. 2009) (noting that consumers were not likely to confuse
two magazines called “Sly” because one targeted women and the other targeted men in their 40s
who were interested in fitness). Courts have long recognized that consumers who seek “niche
products and services” are a “sophisticated group” and do “not tend to show a likelihood of
confusion.” We Media, Inc. v. Gen. Elec. Co., 218 F. Supp. 2d 463, 479 (S.D.N.Y. 2002), aff’d,
94 F. App’x 29 (2d Cir. 2004).
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38. Sixth, given Applicant’s long-standing history with its MAGNOLIA mark,
Opposer does not have a good faith basis for its allegation that Applicant adopted its
MAGNOLIA mark in bad faith in order to “falsely suggest a connection with Magnolia
Pictures.” Long before this proceeding, Chip and Joanna Gaines publicly explained their deep
and personal historical connection to the Magnolia name. As reported in public interviews, Chip
and Joanna were on one of their earliest dates when Chip spotted a magnolia tree by the side of
the road and stopped his car. He climbed the tree, pulled off a magnolia bloom, and handed it to
Joanna. In their autobiography, The Magnolia Story, Joanna explained that when the Gaines
opened their first retail store shortly after marrying in 2003, they named the small shop
“Magnolia Market” as an homage to their mutual love of the magnolia. The 2013 pilot of Fixer
Upper on Discovery’s HGTV introduced viewers nationwide to the Gaines. Over time, Fixer
Upper took their small business and made Magnolia and the Gaines nationally known. As a
result of the success and renown of the Gaines’ Magnolia empire, Magnolia IP Holdings has now
registered no fewer than 25 other marks that include either the term “magnolia” or a stylized
“M,” the first use of which dates back to 2003 for its MAGNOLIA mark in Classes 36, 37, 41,
and 42 (Reg. No 4,920,695). The desire to continue using Applicant’s long-standing
MAGNOLIA brand for a new television enterprise was in no way motivated by the existence of
Opposer.
39. A Letter of Protest Memorandum regarding Opposer’s Cited Marks was sent to
the Examining Attorney on June 26, 2019. The memorandum raised the issue of a possible
likelihood of confusion under Section 2(d) with Opposer’s Cited Marks. Tellingly, the
Examining Attorney reviewed the memorandum along with the attached evidence and declined
to issue a requirement or refusal based on Opposer’s Cited Marks.
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40. For at least these reasons, there is no likelihood of confusion between Applicant’s
Mark and Opposer’s Cited Marks.
THIRD DEFENSE
LACHES
41. Applicant repeats and realleges each and every allegation in the foregoing
paragraphs of these Affirmative and Other Defenses as though fully set forth herein.
42. The Opposition is barred in whole or in part under the equitable defense of laches
based at least on Opposer’s failure thus far to object to Applicant’s prior use of “magnolia”
marks and imagery in television programming and many other goods and services since at least
2013. See, e.g., Lincoln Logs, Ltd. v. Lincoln Pre-Cut Log Homes, Inc., 971 F.2d 732, 734, 23
U.S.P.Q.2d 1701 (Fed. Cir. 1992).
43. Magnolia IP Holdings and its affiliated businesses have used the word “magnolia”
in commerce for over a decade. Magnolia IP Holdings also acquired the rights and was assigned
all goodwill in Magnolia registrations (one for dishes and one for shutters) that have first use
dates dating back to 1987 and 1988. And in 2013, after years of using the MAGNOLIA mark
regionally, it became nationally famous and associated with the Gaines through their use of the
Mark on the Gaines’ hit television show, Fixer Upper. “Magnolia” was featured in every single
one of the series’ 95 episodes and is the well-known brand associated with the Gaines’ business
empire, which includes but is not limited to “Magnolia” books, Magnolia Journal magazine,
Magnolia tourist attractions in Waco, Texas, Applicant’s “Hearth & Hand with Magnolia” brand
at Target, and the “Magnolia Home by Joanna Gaines” line of furniture available at retailers
nationwide, all of which have been long promoted on television.
44. Opposer did not oppose Magnolia IP Holdings’ widespread use of the
MAGNOLIA mark until this proceeding.
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45. Magnolia IP Holdings has substantially invested in developing its MAGNOLIA
brand and in using the vehicle of linear television programming and related non-linear DTC
offerings to create consumer associations between the MAGNOLIA brand and the type of video
content offered by Applicant and Chip and Joanna Gaines.
46. Applicant has also invested significant resources and promotional opportunities in
promoting the use of Magnolia for its new television network. For example, Chip and Joanna
Gaines have appeared on The Tonight Show with Jimmy Fallon to promote their new network.
Below is a true and correct image of Chip and Joanna in one of those appearances.
47. Numerous third parties, such as cable providers, are also undertaking substantial
efforts to prepare to carry the new Magnolia network in the fall of 2020.
48. Applicant has received substantial press coverage for its “new Magnolia
network.”5 Applicant also released a promotional video that was disseminated widely on the
internet and embedded in stories on national news sites such as the websites of The Today Show,
5 Jessica Leigh Mattern, Chip and Joanna Gaines Are Already Lining Up Their New Magnolia
TV Network Team, Country Living (Nov. 24, 2018),
https://www.countryliving.com/life/entertainment/a25170374/chip-joanna-gaines-hiring-
magnolia-network/.
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People Magazine, and The Hollywood Reporter.6 Below is a true and correct image of a screen
shot from that video.
49. Applicant aired a cooking special entitled “In the Kitchen with Joanna Gaines” on
Food Network on April 5, 2020. The special included a sneak peek of Joanna’s new cooking
show, which will air on the new Magnolia Network.
50. Applicant aired a four-hour special entitled “Magnolia Presents: a look back at
where it all began & a look ahead at what’s to come on Magnolia Network” on DIY Network on
April 26, 2020. The special included an exclusive sneak peek at what’s to come on the Gaines’
new Magnolia Network, including shows related to business, construction, design, gardening,
cooking, traditions, and family. The special received the highest ratings ever in the history of
DIY Network. More than 2.5 million total viewers watched the four-hour special, which is still
currently streaming on DIY Network GO. Below is a true and correct image of a screen shot
from that special.
6 https://corporate.discovery.com/discovery-newsroom/discovery-chip-and-joanna-gaines-
announce-multi-platform-media-joint-venture/; https://www.today.com/home/chip-joanna-
gaines-reveal-first-look-their-new-tv-network-t158582; https://people.com/home/watch-chip-
and-joanna-gaines-share-a-first-look-at-their-new-tv-network-teaser-we-cant-wait/;
https://www.hollywoodreporter.com/live-feed/chip-joanna-gaines-sign-uta-2020-tv-network-
launch-1230604.
22
51. If Applicant were now restricted from using and/or registering and protecting its
MAGNOLIA brand for its television-related services, these promotional efforts would be wasted
and Applicant would be materially prejudiced.
FOURTH DEFENSE
WAIVER AND ESTOPPEL
52. Applicant repeats and realleges each and every allegation in the foregoing
paragraphs of these Affirmative and Other Defenses as though fully set forth herein.
53. The Opposition is barred in whole or in part under the doctrine of legal or
equitable waiver or estoppel. Magnolia IP Holdings relied on Opposer’s conduct and/or lack of
action to object to its use of the MAGNOLIA mark to its injury, detriment, or prejudice, and in
all right and equity. Opposer should not now be allowed to prevent Magnolia IP Holdings from
registering or using its MAGNOLIA mark.
FIFTH DEFENSE
OTHER AFFIRMATIVE DEFENSES
54. Magnolia IP Holdings reserves the right to assert other affirmative defenses as
they may become known.
23
WHEREFORE, Applicant prays that Magnolia Pictures LLC’s Notice of Opposition be
dismissed and that Application Serial Number 88/347,974 be granted registration.
Date: May 20, 2020
Respectfully submitted,
GREENBERG TRAURIG, LLP
By:
Joel R. Feldman
Sabina A. Vayner
Alexandra A. Holt
Terminus 200
3333 Piedmont Road, NE
Suite 2500
Atlanta, Georgia 30305
Phone: (678) 553-4778
Fax: (678) 553-4779
Attorneys for Applicant
Magnolia IP Holdings, LLC
CERTIFICATE OF SERVICE
I certify that on May 20, 2020, I served the foregoing Answer by electronic mail to:
Michael A Bittner
Winston & Strawn LLP
2121 North Pearl Street, Suite 900
Dallas, TX 75201
Joel R. Feldman, Esq.
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