estta tracking number: estta1056677 05/20/2020

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 )

http://estta.uspto.gov

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.

2

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.







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.



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.



3



Further, Opposer failed to properly plead common law rights.







13. 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.





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.




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”).

5

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.

https://web.archive.org/web/20160101141804/http:/themagnoliamom.blogspot.com/2011/12/january-2011.html

https://web.archive.org/web/20160101141804/http:/themagnoliamom.blogspot.com/2011/12/january-2011.html

https://www.youtube.com/user/TheMagnoliaMom/videos

7

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

8

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.

10

20. Below is a true and correct copy of the cover of Chip and Joanna Gaines’ New

York Times best-seller The Magnolia Story.

11

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.

12

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/.

https://www.nytimes.com/books/best-sellers/advice-how-to-and-miscellaneous/

13

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.

14

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.

16

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



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/.

https://www.countryliving.com/life/entertainment/a25170374/chip-joanna-gaines-hiring-magnolia-network/

https://www.countryliving.com/life/entertainment/a25170374/chip-joanna-gaines-hiring-magnolia-network/

21

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.

https://corporate.discovery.com/discovery-newsroom/discovery-chip-and-joanna-gaines-announce-multi-platform-media-joint-venture/

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://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://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

https://www.hollywoodreporter.com/live-feed/chip-joanna-gaines-sign-uta-2020-tv-network-launch-1230604

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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



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.

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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

[email protected]

[email protected]

[email protected]

[email protected]

[email protected]

Winston & Strawn LLP

2121 North Pearl Street, Suite 900

Dallas, TX 75201

Joel R. Feldman, Esq.

mailto:[email protected]





estta tracking number: estta1056677 05/20/2020

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