Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA235172
`ESTTA Tracking number:
`09/08/2008
`
`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
`
`Sell4Free Real Estate Systems, Inc.
`09/10/2008
`
`10412 Allisonville Road
`Fishers, IN 46038
`UNITED STATES
`
`Attorney
`information
`
`Bradley M. Stohry
`Ice Miller LLP
`One American Square Suite 2900
`Indianapolis, IN 46282-0200
`UNITED STATES
`ipdocket@icemiller.com, stohry@icemiller.com Phone:317-236-2100
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`77344213
`09/08/2008
`
`Publication date
`Opposition
`Period Ends
`
`05/13/2008
`09/10/2008
`
`Sell Or Free, Inc.
`23 ORINDA WAY
`Orinda, CA 94563
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 036. First Use: 2007/07/01 First Use In Commerce: 2007/07/01
`All goods and services in the class are opposed, namely: Real estate brokerage
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`2398090
`
`10/24/2000
`
`Word Mark
`Design Mark
`Description of
`Mark
`
`SELL4FREE
`
`NONE
`
`Application Date
`
`12/16/1999
`
`Foreign Priority
`Date
`
`NONE
`
`
`ESTTA235172
`ESTTA Tracking number:
`09/08/2008
`
`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
`
`Sell4Free Real Estate Systems, Inc.
`09/10/2008
`
`10412 Allisonville Road
`Fishers, IN 46038
`UNITED STATES
`
`Attorney
`information
`
`Bradley M. Stohry
`Ice Miller LLP
`One American Square Suite 2900
`Indianapolis, IN 46282-0200
`UNITED STATES
`ipdocket@icemiller.com, stohry@icemiller.com Phone:317-236-2100
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`77344213
`09/08/2008
`
`Publication date
`Opposition
`Period Ends
`
`05/13/2008
`09/10/2008
`
`Sell Or Free, Inc.
`23 ORINDA WAY
`Orinda, CA 94563
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 036. First Use: 2007/07/01 First Use In Commerce: 2007/07/01
`All goods and services in the class are opposed, namely: Real estate brokerage
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`2398090
`
`10/24/2000
`
`Word Mark
`Design Mark
`Description of
`Mark
`
`SELL4FREE
`
`NONE
`
`Application Date
`
`12/16/1999
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Goods/Services
`
`Class 036. First use: First Use: 1998/01/00 First Use In Commerce: 1998/01/00
`Computer services, namely providing on-line information in the field of real
`estate
`
`U.S. Registration
`No.
`Registration Date
`
`2440562
`
`04/03/2001
`
`Application Date
`
`12/16/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`Related
`Proceedings
`
`Attachments
`
`SELL4FREE
`
`NONE
`
`Class 036. First use: First Use: 1998/01/00 First Use In Commerce: 1998/01/00
`Real Estate Brokerage Services
`
`92049406
`
`75872048#TMSN.gif ( 1 page )( bytes )
`Sell4Free - Notice of Opposition.pdf ( 5 pages )(17718 bytes )
`Sell4Free - Exhibit A.pdf ( 3 pages )(30689 bytes )
`Sell4Free - Exhibit B.pdf ( 3 pages )(78767 bytes )
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Signature
`Name
`Date
`
`/bms/
`Bradley M. Stohry
`09/08/2008
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Trademark Serial No. 77/344,213
`For the Mark SELLORFREE
`
`Filed on December 5, 2007
`
`Sell4Free Real Estate Systems, Inc.,
`
`Opposer
`
`V.
`Sell Or Free, Inc.,
`Applicant
`
`)
`
`;
`3
`3
`3
`
`Opposition No.:
`
`NOTICE OF OPPOSITION
`
`Sell4Free Real Estate Systems, Inc., an Indiana corporation, having a place of business at
`
`10412 Allisonville Road, Fishers, Indiana 46038 ("Opposer"), believes that it will be damaged
`
`by the registration of the above—identified SELLORFREE mark, and hereby opposes the same.
`
`To the best of Opposer's knowledge,
`
`the application for
`
`the SELLORFREE mark (the
`
`"SELLORFREE Application") is owned by Sell Or Free, Inc., which is a California corporation,
`
`having a place of business at 23 Orinda Way, Orinda, California 94563 ("Applicant"). The
`
`grounds for opposition are as follows:
`
`1.
`
`Opposer is a franchisor in the real estate field. Opposer's franchisees provide real
`
`estate brokerage services through offices in at least 14 states across the United States.
`
`2.
`
`Opposer is the owner of Federal Trademark Registration No. 2,398,090, issued by the
`
`United States Patent and Trademark Office on October 24, 2000, for the trademark SELL4FREE
`
`in Class 36 for "computer services, namely providing on—line information in the field of real
`
`estate." This registration is incontestible within the meaning of 15 U.S.C. § 1065.
`
`
`
`3.
`
`Opposer is the owner of Federal Trademark Registration No. 2,440,562, issued by the
`
`United States Patent and Trademark Office on April 3, 2001, for the trademark SELL4FREE in
`
`Class 36 for "real estate brokerage services." This registration is incontestible within the
`
`meaning of 15 U.S.C. § 1065.
`
`4.
`
`The SELL4FREE trademark is in use, is valid, and is in full force and effect. True
`
`and accurate copies of Opposer's registration certificates for Federal Trademark Registration
`
`Nos. 2,398,090 and 2,440,562 (collectively, "SELL4FREE Registrations") are attached hereto as
`
`collective Exhibit A.
`
`5.
`
`The SELL4FREE Registrations were originally registered in the name of Gary
`
`Bieberich, Inc. However, effective as of November 9, 2005, Gary Bieberich, Inc. assigned all
`
`right, title and interest in and to the SELL4FREE mark to Opposer, together with the goodwill of
`
`the business associated with or symbolized by the SELL4FREE mark, including the right to sue
`
`and collect for any past or future infringements of the SELL4FREE mark.
`
`6.
`
`This assignment was recorded with the United States Patent and Trademark Office
`
`("USPTO") on November 16, 2005. Copies of the USPTO's online Trademark Assignment
`
`Abstract of Title for the SELL4FREE Registrations are attached hereto as collective Exhibit B.
`
`7.
`
`Opposer licenses the SELL4FREE mark to its franchisees for their use in connection
`
`with their offer and provision of real estate brokerage services within their respective franchised
`
`areas.
`
`8.
`
`Opposer originally adopted the SELL4FREE mark in January, 1998. Since that time,
`
`Opposer has established substantial goodwill in the SELL4FREE mark.
`
`9.
`
`The SELL4FREE mark has come to indicate and stand for the high quality services
`
`offered by Opposer and its franchisees.
`
`
`
`10.
`
`As a result of the extensive use of the SELL4FREE mark by Opposer and its
`
`franchisees, the SELL4FREE mark has become, and continues to be, a valuable property right of
`
`Opposer.
`
`ll.
`
`The description of services for
`
`the SELLORFREE Application indicates that
`
`Applicant provides "real estate brokerage" services.
`
`12.
`
`Similar to Opposer, Applicant is a franchisor in the real estate field.
`
`13.
`
`Applicant claims that July 1, 2007 is the date that it first used the SELLORFREE
`
`mark in connection with its services anywhere. Similarly, Applicant claims that July 1, 2007 is
`
`the date that it first used the SELLORFREE mark in commerce.
`
`14.
`
`Upon information and belief, Opposer's actual, continuous, and continuing use of the
`
`SELL4FREE mark began long prior to any use by Applicant of its SELLORFREE mark.
`
`15.
`
`The use and registration of the SELLORFREE mark is likely to cause confusion,
`
`mistake, and/or lead to deception as to the origin of Applicant's goods and/or services. The
`
`likelihood of confusion is especially apparent in this instance because the SELLORFREE mark
`
`is nearly identical to the SELL4FREE Mark, the services sold by Applicant are nearly identical
`
`to those that are sold by Opposer and its franchisees, Applicant's business model is nearly
`
`identical to Opposer's business model, and Applicant targets the exact same market that is
`
`targeted by Opposer and its franchisees.
`
`16.
`
`The SELLORFREE Application is likely to result
`
`in confusion and substantial
`
`damage and injury to Opposer. Persons familiar with Opposer's SELL4FREE mark are likely to
`
`buy Applicant's services under the mistaken belief that they originate with, or are licensed,
`
`sponsored or approved by Opposer. Any such confusion would inevitably result in loss of sales
`
`
`
`to Opposer and its franchisees, and tarnish Opposer's goodwill and reputation established in the
`
`SELL4FREE mark.
`
`WHEREFORE, Opposer prays that Trademark Serial No. 77/344,213 be rejected.
`
`Dated this 8th day of September, 2008.
`
`Respectfully submitted,
`
`By: s/Bradley M. Stohry
`Attorney for Opposer
`Bradley M. Stohry
`ICE MILLER LLP
`
`One American Square
`Suite 3100
`
`Indianapolis, Indiana 46282-0200
`(317) 236-2100
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the foregoing was served upon the following by
`first—class United States mail, postage prepaid, on September 8, 2008:
`
`SELL OR FREE, INC.
`23 ORINDA WAY
`
`ORINDA, CA 94563-2582
`
`By: s/Bradley M. Stohry
`Attorney for Opposer
`
`I/22096l3.l
`
`
`
`Exhibit A
`
`
`
`Int. Cl.: 36
`
`Prlor U.S. Cls.: 100, 101 and 102
`United States Patent and Trademark Office
`
`Reg. No. 2,398,090
`Registered Oct. 24, 2000
`
`SERVICE MARK
`PRINCIPAL REGISTER
`
`SELL4FREE
`
`GARY BIEBERICH, INC. (INDIANA CORPORATION)
`160 WEST CARMEL DRIVE
`SUITE 231
`CARMEL, IN 46032
`
`REAL ESTATE,
`AND 102).
`FIRST USE 1-0-1998;
`
`IN CLASS 36 (U.S. CLS. 100,
`
`I01
`
`IN COMMERCE 1-0-1998.
`
`FOR: COMPUTER SERVICES, NAMELY PRO-
`VIDING ON—L.INE INFORMATION IN THE FIELD OF
`
`BRADLEY BAYAT, EXAMINING ATTORNEY
`
`SER. NO. 75-872,048, FILED 12-I6-1999.
`
`
`
`Int. CL: 36
`
`Prior U.S. Cls.: 100, 101 and 102
`
`Unlted States Patent and Trademark Offlce
`
`Reg. No. 2,440,562
`Registered Apr. 3, 2001
`
`SERVICE MARK
`
`PRINCIPAL REGISTER
`
`SELIAFREE
`
`GARY BIEBERICH. INC. (INDIANA CORPORA-
`TIO
`160 WEST CARMEL DRIVE
`SUITE 231
`CARMEL, IN 46032
`
`FIRST USE 1-0-1998; IN COMMERCE 1-0-1998.
`
`SER. NO. 75-872,049, FILED 12-16-1999.
`
`FOR: REAL ESTATE BROKERAGE SERVICES, IN
`CLASS 36 (U.S. CLS. 100, 101 AND 102).
`
`BRADLEY BAYAT, EXAMINING ATTORNEY
`
`
`
`Exhibit B
`
`
`
`USPTO Assignments on the Web
`
`http://assignments.uspto.g0V/assignments/q?db=tm&sn0=75872048
`
`
`
`.,
`N
`I
`Assignnientsen ii1e°n?en>
`§§&\
`
`\
`
`Trademark Assignment Abstract sf Titie
`
`Totai Assignments: 1
`Serial #: 75872048
`Registrant: Gary Bieberich, Inc.
`Mark: SELL4FREE
`
`Assignment: 1
`Reel/Frame: 3195/0138
`
`Filing Dt: 12,/16/1999
`
`Reg #:
`
`Reg. Dt: 10/24/2000
`
`Received: 11/16/2005
`
`Recorded: 11/16/2005
`
`Pages: 4
`
`Conveyance: NUNC PRO TUNC ASSIGNMENT
`
`Assignor:
`
`Ass ig nee :
`
`10412 ALLISONVILLE ROAD
`U N IT 1 0 3
`
`FISHERS, INDIANA 46038
`
`Correspondent: AMY L, WRIGHT, ESQ.
`ONE AMERICAN SQUARE
`SUITE 2300
`
`INDIANAPOLIS, IN 46282
`
`Exec Dt: 11/09/2005
`Entity Type: CORPORATION
`Citizenship: INDIANA
`
`E nt ity Type ; co RPO RATIO N
`citizenship; INDIANA
`
`Search Results as of: 09/08/2008 01:48 PM
`If you have any comments or questions concerning the data displayed, contact PRD / Assignments at 571 —272»—3350. v.2.0.1
`Web interface last modified: Aprii 20, 2007 v 2.0.1
`&¥§R\
`i-i€)i‘aiiE
`iN£)EX§ SEAFMH eBUSi?\£ES.’i's CONTACT US
`PRIVACY STATEMENT
`
`1 ofl
`
`9/8/2008 1:49 PM
`
`
`
`USPTO Assignments on the Web
`
`http://assignments.uspto.gov/assignments/q?db=tm&sn0=75872049
`
`
`
`.,
`N
`I
`Assignnientsen ii1e°n?en>
`§§&\
`
`\
`
`Trademark Assignment Abstract sf Titie
`
`Totai Assignments: 1
`Serial #: 75872049
`Registrant: Gary Bieberich. Inc.
`Mark: SELL4FREE
`
`Assignment: 1
`Reel/Frame: 3195/0170
`
`Filing Dt: 12,/16/1999
`
`Reg #:
`
`Reg. Dt: 04/03/2001
`
`Received: 11/16/2005
`
`Recorded: 11/16/2005
`
`Pages: 4
`
`Conveyance: NUNC PRO TUNC ASSIGNMENT
`
`Assignor:
`
`Ass ig nee :
`
`10412 ALLISONVILLE ROAD
`U N IT 1 0 3
`
`FISHERS, INDIANA 46038
`
`Correspondent: AMY L, WRIGHT, ESQ.
`ONE AMERICAN SQUARE
`SUITE 2300
`
`INDIANAPOLIS, IN 46282
`
`Exec Dt: 11/09/2005
`Entity Type: CORPORATION
`Citizenship: INDIANA
`
`E nt ity Type ; co RPO RATIO N
`citizenship; INDIANA
`
`Search Results as of: 09/08/2008 01:49 PM
`If you have any comments or questions concerning the data displayed, contact PRD / Assignments at 571 —272»—3350. v.2.0.1
`Web interface last modified: Aprii 20, 2007 v 2.0.1
`&¥§R\
`i-i€)i‘aiiE
`iN£)EX§ SEAFMH eBUSi?\£ES.’i's CONTACT US
`PRIVACY STATEMENT
`
`1 ofl
`
`9/8/2008 1:49 PM
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