Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA116236
`ESTTA Tracking number:
`12/21/2006
`
`Filing date:
`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
`Granted to Date
`of previous
`extension
`Address
`
`NEXT STEP FINANCIAL LLC
`12/23/2006
`
`1020 15TH ST APT 27J
`DENVER, CO 80202-2312
`UNITED STATES
`
`Attorney
`information
`
`Susan D. Rector
`Schottenstein, Zox & Dunn
`250 West Street
`Columbus, OH 43215
`UNITED STATES
`srector@szd.com Phone:614-462-2219
`Applicant Information
`
`78600238
`12/21/2006
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`Publication date
`Opposition
`Period Ends
`Special Insurance Services, Inc.
`Suite 200 6509 Windcrest Drive
`Plano, TX 75024
`UNITED STATES
`Goods/Services Affected by Opposition
`
`10/24/2006
`12/23/2006
`
`Class 036. First Use: 2004/11/30 First Use In Commerce: 2005/04/01
`All goods and sevices in the class are opposed, namely: Insurance services, namely, offering
`supplemental medical plans available to employers as an addition to the employers' current group
`medical plans
`
`Attachments
`
`h0828856.pdf ( 5 pages )(108025 bytes )
`
`Signature
`Name
`Date
`
`/s/ Susan D. Rector
`Susan D. Rector
`12/21/2006
`
`
`ESTTA116236
`ESTTA Tracking number:
`12/21/2006
`
`Filing date:
`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
`Granted to Date
`of previous
`extension
`Address
`
`NEXT STEP FINANCIAL LLC
`12/23/2006
`
`1020 15TH ST APT 27J
`DENVER, CO 80202-2312
`UNITED STATES
`
`Attorney
`information
`
`Susan D. Rector
`Schottenstein, Zox & Dunn
`250 West Street
`Columbus, OH 43215
`UNITED STATES
`srector@szd.com Phone:614-462-2219
`Applicant Information
`
`78600238
`12/21/2006
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`Publication date
`Opposition
`Period Ends
`Special Insurance Services, Inc.
`Suite 200 6509 Windcrest Drive
`Plano, TX 75024
`UNITED STATES
`Goods/Services Affected by Opposition
`
`10/24/2006
`12/23/2006
`
`Class 036. First Use: 2004/11/30 First Use In Commerce: 2005/04/01
`All goods and sevices in the class are opposed, namely: Insurance services, namely, offering
`supplemental medical plans available to employers as an addition to the employers' current group
`medical plans
`
`Attachments
`
`h0828856.pdf ( 5 pages )(108025 bytes )
`
`Signature
`Name
`Date
`
`/s/ Susan D. Rector
`Susan D. Rector
`12/21/2006
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of United States Trademark Application:
`
`Applicant:
`
`Special Insurance Services, Inc.
`
`Serial No.:
`
`78/600,238
`
`Filed:
`
`April 1,2005
`
`Mark:
`
`NEXSTEP
`
`Class:
`
`International Class 36
`
`Next Step Financial LLC
`Opposer
`
`vs.
`
`.
`: Opposition No.
`
`Special Insurance Services, Inc.
`Applicant
`
`United States Patent and Trademark
`Office
`
`Trademark Trial and Appeal Board
`P.O. Box 1451
`
`Alexandria, Virginia 22313-1451
`
`NOTICE OF OPPOSITION
`
`Sir:
`
`Next Step Financial LLC of 1010 15th Street, Apt. 27], Denver, CO
`
`80202-2312, believes that it will be damaged by registration of the mark shown in
`
`the above-referenced application, which was published in the Ofiicial Gazette of
`
`October 24, 2006, and hereby opposes issuance of the registration.
`
`{H|JE2B291.l )
`
`
`
`As grounds for opposition, Opposer alleges as follows:
`
`Opposer is the owner of United States service mark application Serial No.
`
`78/810,486 which was filed on February 8, 2006 for the service mark
`
`NEXTSTEP for services currently described as “insurance services,
`
`namely, property and casualty insurance agency services, brokerage,
`
`claims processing, consultation, underwriting and administration of
`
`namely, homeowners insurance, automobile insurance, personal excess
`
`liability/umbrella insurance, valuable articles insurance, earthquake
`
`insurance, flood insurance, watercraft insurance, recreational vehicles
`
`insurance, farm and ranch insurance, life insurance, disability insurance,
`
`aviation insurance, commercial property insurance, commercial general
`
`liability insurance, workers compensation insurance, business owners
`
`insurance, fidelity insurance, commercial excess liability/umbrella
`
`insurance, directors and officers insurance, bonds insurance, fiduciary,
`
`employment practices and e-commerce liability insurance, professional
`
`liability, transportation insurance, credit insurance, personal accident and
`
`health insurance, aircraft insurance, fire insurance, malpractice insurance,
`
`mortgage guaranty insurance, crop and livestock insurance, personal
`
`injury insurance, annuities, endowment insurance, industrial insurance;
`
`Specifically NOT offering supplemental medical plans available to
`
`employers as an addition to the employers‘ current group medical plans;
`
`Mortgage lending services, mortgage banking services, property and
`
`casualty insurance agency services, and real estate closing and title
`
`{I-10828293.] )
`
`
`
`insurance agency services, wholesale mortgage lending and mortgage loan
`
`underwriting services, residential real estate loan financing, mortgage
`
`brokerage, and mortgage banking, mortgage loan servicing and real estate
`
`lending services; mortgage lending and financial services, namely, loan
`
`processing, loan collections, wholesale and retail mortgage services,
`
`namely purchasing mortgage loans from real estate and mortgage brokers
`
`and correspondent lenders for others, brokering the sale and servicing of
`
`mortgage loans to secondary mortgage lenders, maintenance of mortgage
`
`escrow accounts, and purchasing mortgage loans from real estate and
`
`mortgage brokers and correspondent lenders. Real estate services,
`
`namely, real estate brokerage services, real estate financing services, real
`
`estate consultation services, real estate investment services, real estate
`
`management services, leasing of real estate, real estate acquisition
`
`services, real estate agency services, Real estate property management
`
`services acquisition services, escrow services, listing, management,
`
`procurement for others, consulting, land acquisition” (“Opposer‘s
`
`Services”).
`
`Opposer has used the service mark NEXTSTEP in commerce since at least
`
`as early as April 1, 1999 in association with Opposer’s Services.
`
`Upon information and belief, Applicant has not used the mark NEXSTEP
`
`anywhere prior to January 1, 2004.
`
`Since at least as early as April 1, 1999, Opposer has engaged in the
`
`marketing and sale of services within the scope of Opposer’s Services in
`
`[HD823293.l }
`
`
`
`commerce, in conjunction with the NEXTSTEP service mark, and the
`
`mark has been in continuous use by Opposer since that time.
`
`Opposer has invested considerable effort and resources in advertising and
`
`promoting its mark NEXTSTEP and the services offered, sold and
`
`provided under the mark, with the result that the purchasing public has
`
`come to know, rely upon and recognize those services by that mark.
`
`Opposer has established valuable goodwill in its mark NEXTSTEP and
`
`the mark has become well known to the purchasing public.
`
`Upon information and belief, Applicant is a Texas corporation, located at
`
`6509 Windcrest Drive, Suite 200, Plano, TX 75024.
`
`On February 8, 2006, Applicant filed service mark application Serial No.
`
`78/600,238 for the mark NEXSTEP for “Insurance services, namely,
`
`offering supplemental medical plans available to employers as an addition
`
`to the employers’ current group medical plans” (“Applicant’s Services”).
`
`Application Serial No. 78/600,238 was published for opposition in the
`
`USPTO Oflicial Gazette on October 24, 2006. Opposer has obtained an
`
`extension of time to oppose this application up until now.
`
`There is no issue as to priority. Opposer has priority based on use of its
`
`mark NEXTSTEP in the United States. Opposer used its mark
`
`NEXTSTEP long before the Applicant’s application date, and, upon
`
`information and belief, long before Applicant used the mark NEXSTEP
`
`anywhere.
`
`1303232911 1
`
`
`
`10.
`
`ll.
`
`12.
`
`13.
`
`14.
`
`Applicant’s proposed service mark is visually and phonetically highly
`
`similar to Opposer’s mark NEXTSTEP and creates a commercial
`
`impression which is identical to or virtually identical to Opposer’s mark.
`
`The Applicant’s Services are similar to the services with which Opposer’s
`
`mark NEXTSTEP is used, and Applicant’s Services are intended for sale
`
`to similar customers and through similar channels of trade.
`
`Applicant’s proposed service mark NEXSTEP so resembles Opposer’s
`
`service mark NEXTSTEP as to be likely, when applied to AppIicant’s
`
`Services, to cause COI1fLlSl0l'1 or to cause mistake or to deceive within the
`
`meaning of 15 U.S.C. §1052(d), in View of Opposer’s prior use, ownership
`
`and registration of its service mark NEXTSTEP.
`
`Registration should therefore be refused under 15 U.S.C. §1052(d).
`
`Registration of Applicant’s proposed mark on the Principal Register
`
`would be inconsistent with Opposer’s common law rights and would be
`
`damaging to Opposer.
`
`WHEREFORE, Opposer prays that its opposition be sustained and that the
`
`registration sought by Applicant be refused.
`
`Respectfully submitted,
`
`
`
`/ -
`Susan D. Rector
`Séhottenstein, Zox & Dunn Co., LPA
`250 West Street
`
`P.O. Box 165020
`
`Columbus, OH 43215
`Telephone: (614) 462-2219
`Facsimile: (614) 222-3481
`
`Dated: December 21, 2006
`
`(HD823293.l }
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