Trademark Trial and Appeal Board Electronic Filing System. httgj/estta.usQto.gov
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`91 1 98492
`
`Defendant
`Rassas, Mark A.
`
`RASSAS, MARK A.
`120 S 2ND ST
`CLARKSVILLE, TN 37040-3484
`
`rassas|aw@ao|.com
`Answer and Counterclaim
`
`RassasAns.pdf ( 15 pages )(310737 bytes )
`
`Maria v. Hardison
`
`maria@tassan.com
`lmvhl
`
`03/18/2011
`
`Registrations Subject to the filing
`
`Registrant
`
`3285044
`C.J. Advertising, LLC
`Suite 500 209 Tenth Avenue South
`Nashville, TN 372034101
`
`as/28/zoo?
`
`UNITED STATES
`UNITED STATES
`
`Goods/Services Subject to the filing
`
`Class 035. First Use: 2003/05/19 First Use In Commerce: 2003/05/19
`
`All goods and services in the class are requested, namely: Advertising agency services directed to
`law firms
`
`Registrant
`
`3688122
`C.J. Advertising, L.L.C.
`Suite 500 209 Tenth Avenue South
`Nashville, TN 372034101
`
`os/29/zoos
`
`Goods/Services Subject to the filing
`
`Class 045. First Use: 2003/05/19 First Use In Commerce: 2003/05/19 All goods and services in the class are requested, namely: Legal services
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA398773
`ESTTA Tracking number:
`03/18/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91198492
`Defendant
`Rassas, Mark A.
`RASSAS, MARK A.
`120 S 2ND ST
`CLARKSVILLE, TN 37040-3484
`
`rassaslaw@aol.com
`Answer and Counterclaim
`Maria v. Hardison
`maria@tassan.com
`/mvh/
`03/18/2011
`RassasAns.pdf ( 15 pages )(310737 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Registrations Subject to the filing
`
`Registration No
`Registrant
`
`3285044
`C.J. Advertising, LLC
`Suite 500 209 Tenth Avenue South
`Nashville, TN 372034101
`UNITED STATES
`Goods/Services Subject to the filing
`
`Registration date
`
`08/28/2007
`
`Class 035. First Use: 2003/05/19 First Use In Commerce: 2003/05/19
`All goods and services in the class are requested, namely: Advertising agency services directed to
`law firms
`
`Registration No
`Registrant
`
`3688122
`C.J. Advertising, L.L.C.
`Suite 500 209 Tenth Avenue South
`Nashville, TN 372034101
`UNITED STATES
`Goods/Services Subject to the filing
`
`Registration date
`
`09/29/2009
`
`Class 045. First Use: 2003/05/19 First Use In Commerce: 2003/05/19
`All goods and services in the class are requested, namely: Legal services
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`C.l. ADVERTISING, L.L.C.,
`
`Opposer,
`
`v.
`
`MARK A. RASSAS,
`
`Applicant.
`
`)
`)
`)
`)
`)
`)
`)
`)
`
`)
`
`
`Opposition No. 91198492
`Serial No. 77/966,918
`Mark: GET IT DONE ... RIGHT!
`
`ANSWER TO NOTICE OF OPPOSITION
`AND COUNTERCLAIM PETITION FOR CANCELLATION
`
`COMES NOW Applicant, Mark A. Rassas, and answers Opposer's correspondingly
`
`numbered paragraphs of its Notice of Opposition in the above-noted proceeding.
`
`1.
`
`2.
`
`3.
`
`Admitted.
`
`Admitted.
`
`Opposer is without sufficient information or knowledge to either admit or deny
`
`the averments and, therefore, denies them.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`Admitted.
`
`Admitted.
`
`Admitted.
`
`Admitted.
`
`Admitted.
`
`Admitted.
`
`10. Opposer is without sufficient information or knowledge to either admit or deny
`
`the averments and, therefore, denies them.
`
`

`
`11.
`
`Denied.
`
`12.
`
`Admitted.
`
`13.
`
`Omitted.
`
`14. Denied.
`
`15.
`
`Denied.
`
`16. Denied.
`
`17.
`
`Denied.
`
`18.
`
`Denied.
`
`19.
`
`Denied.
`
`20.
`
`Denied.
`
`21.
`
`Denied.
`
`22. Denied.
`
`23. Admitted.
`
`24.
`
`Denied.
`
`WHEREFORE, Applicant requests that Opposer's opposition be dismissed with
`
`prejudice.
`
`PETITION FOR CANCELLATION
`
`In the matter ofRegistration Nos. 3,285,044 and 3,688,122, issued to CJ Advertising,
`
`L.L.C., Applicant believes that it is and will be damaged by the registrations and petitions
`
`to cancel them.
`
`The grounds for cancellation are as follows:
`
`1.
`
`Opposer has opposed Applicant's application no. 77/966,918.
`
`- 2 ­
`
`

`
`2.
`
`Registrant has abandoned the above registered marks for the services described
`
`in the registrations without an intent to resume use.
`
`3.
`
`Opposer has never used the service marks in the above registrations for any
`
`services.
`
`4.
`
`Opposer does not have standing to assert any common law rights with regard
`
`to use ofthe registered marks by others.
`
`5.
`
`Opposer has allowed naked and uncontrolled use ofthe registered marks and,
`
`therefore, has abandoned them without an intent to resume use. In support thereof, Applicant
`
`incorporates by reference paragraphs 6 through 22 ofExhibit A. See also Invision Production
`
`& Media Services, Inc. v. GlenJ. Lerner Legal Services, No. 07-15778. D.C. No. CV-OI-00858­
`
`JCMlLRL, U.S. Ct of App., 9th Circuit.
`
`6. Neither of the registered marks are likely to cause confusion with the mark in
`
`Application No. 77/966,918 because they are not similar in sound, meaning, commercial
`
`connotation, or appearance.
`
`7. The services in Applicant's application are not the same or related to those in
`
`Registration No. 3,285,044 and, therefore, not likely to cause confusion between the parties
`
`respective marks.
`
`8. The registered marks ofopposer do not function as marks but are merely the name
`
`of an advertising campaign for third parties to use.
`
`- 3 ­
`
`

`
`WHEREFORE, Applicant respectfully requests that Registration Nos. 3,285,044 and
`
`3,688,122 be canceled in their entirety.
`
`Date: March 18,2010
`
`MARK A. RASSAS a.k.a.
`RASSAS,NORTH AND ASSOCIATES
`
`B~~t--J
`
`
`Maria v. Hardison, Esq.
`Attorney for Applicant
`Tassan & Hardison
`4143 27th Street North
`Arlington, Virginia 22207-5211
`(703) 522-4583
`(703) 522-5306
`
`E-mail: maria@tassan.com
`
`
`- 4 ­
`
`

`
`CERTIFICATE OF SERVICE
`
`
`I certify that a copy ofthe foregoing Answer to Petition for Cancellation was mailed,
`
`first-class, postage prepaid, this 18th day of March 2011, to:
`
`Paul W. Kruse, Esq.
`Bone McAllester Norton PLLC
`511 Union Street
`Suite 1600
`Nashville, Tennessee 37219
`
`~<P~~
`
`aria v. Hardison
`
`- 5 ­
`
`

`
`EXHIBIT
`
`
`A
`
`
`UNITED STATES DISTRICT COURT
`
`MIDDLE DISTRICT OF LOUISIANA
`
`
`THE MCKERNAN LAW FIRM,
`PLLC
`
`Plaintiff
`
`VERSUS
`
`CJ ADVERTISING, LLC
`Defendant
`
`CIVIL ACTION NO.:
`
`JUDGE:
`
`MAG. JUDGE:
`
`-1/
`
`'"
`'"
`..
`
`'"
`..
`
`..
`
`..
`
`..
`
`
`COMPLAINT FOR DECLARATORY JUDGMENT
`
`Plaintiff, The McKernan Law Finn, PLLC, for its complaint against defendant, CJ
`
`Advertising, LLC, represents the following:
`
`Nature of Action
`
`1.
`
`This is an action for declaratory judgment under 28 V.S.C.A. §§ 2201, 2202, seeking a
`
`judgment of noninfringement and invalidity of one or more trademarks purportedly owned by
`
`defendant CJ Advertising, LLC.
`
`Faetual Background
`
`2.
`
`The McKernan Law Finn, PLLC ("The McKernan Law Firm") is a professional limited
`
`liability company organized under the laws of Louisiana with its principal place of business in
`
`Baton Rouge, Louisiana.
`
`3.
`
`CJ Advertising, LLC ("CJ Advertising") is a limited liability company organized under
`
`the laws of Tennessee with its principal place of business in NashviIJe, Tennessee.
`
`(B06590J6.1 )
`Case 3:10-cv-00318-JJB-CN Document 1 05/05/10 Page 1 of 10
`
`

`
`4.
`
`CJ Advertising is an advertising agency which caters to personal injury law finns. CJ
`
`Advertising's client base currently includes as many as 30 Jaw firms throughout the United
`
`States, including the Dudley DeBosier law firm based in Baton Rouge, Louisiana. CJ
`
`Advertising's services include, but are not limited to, branding development; the production and
`
`placement of television commercials; the production and pJacement of print advertisements such
`
`as postcards, billboards, Yellow Pages ads, and brochures; the development of law finn websites;
`
`and public relations planning, promotion, and management on behalf of law finns.
`
`5.
`
`The McKernan Law Firm employs Wbitehardt, Inc. ("Whitehardt"}-a direct competitor
`
`of CJ Advertising-for the production and placement of its advertisements. Like CJ
`
`Advertising, Whitehardt is based in Nashville, Tennessee. All advertisements produced and
`
`placed by Whitehardt for The McKernan Law Finn emanate from Louisiana.
`
`6.
`
`The McKernan Law Finn uses various trademarks in the advertisement of its legal
`
`services, including the trademark GET GORDON! GET IT DONE!TM. The McKernan Law
`
`Firm's application for federal registration of the mark-U.S. Serial No. 77n42741- is currently
`
`pending before the United States Patent and Trademark Office. A Notice of Allowance was
`
`issued on December 29, 2009 and a statement of use was subsequently filed on February 12,
`
`2010. Thus, the certificate of registration is expected to issue shortly.
`
`7.
`
`- 2 •
`,806S9036.11
`Case 3:10pcvp00318-JJBpCN Document 1 05/05/10 Page 2 of 10
`
`

`
`On March 4, 2010, CJ Advertising instituted an action against both Whitehardt and
`
`Gordon McKernan (in his individual capacity) in the United SUltes District Court for the Middle
`
`District of Tennessee, Case No. 3:10-cv-00214 (the "Tennessee Action").
`
`In the Tennessee
`
`Action, CJ Advertising alleged that the use of the mark GET GORDON! GET IT DONE/™
`
`infringed the following marks (collectively referred to as "GET TRADEMARKS") allegedly
`
`owned by CJ Advertising and used in connection with Jegal services:
`
`a)
`b)
`c)
`d)
`e)
`f)
`g)
`h)
`i)
`j)
`
`GET A LAWYER GET IT DONE® (U.S. Reg. No. 3,688,122)
`GETCARTER!®(U.S. Reg. No. 3,649,548)
`GET BERG!TM
`GET THE POWER™
`GET THE JMB GUARANTEE™
`GET SERIOUS. GET LUNDyTM
`GET MCDIvm™
`GETREA~GETNORRISTM
`GET SERIOUS, GET STEWART™
`GETTRE ZADVANTAGE™
`
`8.
`
`Neither Gordon McKernan nor The McKernan Law Firm has ever advertised or marketed
`
`its legal services in Tennessee, much less used the GET GORDON! GET IT DONE!TM mark in
`
`Tennessee. The McKernan Law Fillll is a Louisiana-based law finn with attorneys licensed to
`
`practice law in Louisiana, Texas, Mississippi, and Alabama only.
`
`Furthennore, all
`
`advertisements using the GET GORDON! GET IT DONE/™ mark have emanated from
`
`Louisiana.
`
`9.
`
`In the Tennessee Action, Gordon McKernan is challenging both personal jurisdiction and
`
`venue by filing a Motion to Dismiss Pursuant to Rule 12(bX2) and 12(b)(3) of the Federal Rules
`
`of Civil Procedure. Gordon McKernan has not purposefully availed himself of the benefits and
`
`protections of Tennessee by establishing minimum contacts with Tennessee. Gordon McKeman
`
`- 3 •
`(B06S9036.l}
`Case 3:10-cv-00318-JJB-CN Document 1 05/05/10 Page 3 of 10
`
`

`
`lacks the required systematic and continuous business contacts for genera) personaJ jurisdiction
`
`to exist in Tennessee. He is a resident of Louisiana. He is only licensed to practice law in
`
`Louisiana and Texas. He has never advertised or marketed his legal services in Tennessee. nor
`
`does he have an office, employee, or agent for service of process in Tennessee. CJ Advertising's
`
`claims for trademark infringement and Wlfair competition also cannot be said to have arisen from
`
`Gordon McKernan's contacts with Tennessee so as to establish specific personal jurisdiction.
`
`Neither Gordon McKernan nor The McKernan Law Firm has ever used the mark GET
`
`GORDON! GEl' rr DONE!TM in Tennessee. Thus, there can be no likelihood ofconfusion in the
`
`state ofTennessee. Furthermore, venue is improper since the Middle District of Tennessee is not
`
`a district "where a substantial part of the events or omissions giving rise to the claim occurred.."
`
`Assuming the alleged "passing off' occurred, it took place in Louisiana, not Tennessee.
`
`10.
`
`In view of the above litigation, The McKernan Law Firm has a real and reasonable
`
`apprehension that its continuing actions will result in CJ Advertising bringing another claim for
`
`liability in a remote and improper venue which could disrupt The McKernan Law Firm's
`
`business operations. Thus, The McKernan Law Firm has initiated this action for the purposes of
`
`seeking declaratory relief and resolution concerning its right to use the mark GET GORDON!
`
`GET IT DONEI™ in cOJUlection with legal services in this state and country.
`
`Jurisdiction and Venue
`
`11.
`
`This Court has subject matter jurisdiction under 28 V.S.C.A. §§ 1331 and 1338 because,
`
`among other things, the matter to be litigated raises one or more federal questions.
`
`12.
`
`- 4 ­
`(80659036.1 }
`Case 3:10-cv-00318-JJS-CN Document 1 05/05/10 Page 4 of 10
`
`

`
`This Court has personal jurisdiction over CJ Advertising since CJ Advertising regularly
`
`and systematically transacts business in Louisiana. This Court also has personal jurisdiction over
`
`CJ Advertising since CJ Advertising's claims of trademark infringement and unfair competition
`
`implicitly arise from its use of one or more senior marks in this State.
`
`13.
`
`Venue is proper under 28 V.S.C.A. § 1391(b)(1) since CJ Advertising is subject to
`
`personal jurisdiction in the Middle District of Louisiana and therefore is deemed to reside in this
`
`judicial district. Venue is also proper under 28 U.S.C.A. § 1391(b)(2) since a substantial part of
`
`the events or omissions giving rise to CJ Advertising's claims for trademark infringement and
`
`unfair competition occurred in the Middle District of Louisiana
`
`COUNT I: Declaratory JudJZ!!Jent of Noninfringement
`
`14.
`
`The McKernan Law Finn incorporates by reference its allegations in paragraphs 1-13
`
`above.
`
`15.
`
`The McKernan Law Finn's use of GET GORDON! GET IT DONE!nll in connection
`
`with legal services is not likely to cause confusion or mistake, or to deceive, as to the affiliation,
`
`connectiou, or association of The McKernan Law rinn with CJ Advertising. or as to the origin,
`
`sponsorship, or approval by CJ Advertising ofThe McKernan Law Firm's services.
`
`CQUNI II: Declaratory Judgment oflnvaJldity
`
`16.
`
`The McKernan Law Finn incorporates by reference its allegations in paragraphs 1-15
`
`above.
`
`• S •
`(B0659036.1 )
`Case 3:10-cv-00318-JJB-CN Document 1 05/05/10 Page.5 of 10
`
`

`
`CJ Advertising is an advertising agency. CJ Advertising does not offer or provide legal
`
`17.
`
`
`services to the public.
`
`18.
`
`CJ Advertising and its non-lawyer members and employees are probibited by various
`
`state statutes from engaging in the unauthorized practice oflaw.
`
`19.
`
`CJ Advertising has not used the GET TRADEMARKS in connection with legal services.
`
`All use of the GET TRADEMARKS in COIUlection with legal services has been through
`
`unrelated third party law finns ("LAW FIRM LICENSEES',).
`
`20.
`
`CJ Advertising has not controlled the quality and nature of the legal services offered
`
`under the GET TRADEMARKS by the LAW FIRM LICENSEES.
`
`21.
`
`CJ Advertising has no express contractual right to inspect, supervise, or otherwise control
`
`the quality and nature of the legal services offered under the GET TRADEMARKS by the LAW
`
`FIRM LICENSEES.
`
`22.
`
`CJ Advertising does not have valid trademark rights or other intellectual property rights
`
`in the GET TRADEMARKS under any federal or state Jaw since an advertising agency, as a
`
`matter of law, cannot develop or retain goodwill in a trademark for legal services.
`
`(B06S90J6.J}
`
`~ 6 ­
`Case 3:10~cv-00318-JJB-CN Document 1 05/05/10 Page 6 of 10
`
`

`
`23.
`
`
`CJ Advertising does not have valid trademark rights or other intellectual property rights
`
`in the GET TRADEMARKS under any federal or state law since CJ Advertising abandoned the
`
`GET TRADEMARKS by engaging in naked licensing.
`
`22.
`
`CJ Advertising does not have valid trademark rights or other intellectual property rights
`
`in the GET TRADEMARKS under any federal or state law since CJ Advertising's use of the
`
`GET TRADEMARKS through third parties fails to comply with the statutory requirements set
`
`forth in 15 U.S.C.A. § 1055.
`
`JURY DEMAND
`
`23.
`
`The McKernan Law Firm demands a trial by jury on all issues so triable in the
`
`Complaint.
`
`REMEDIES
`
`WHEREFORE, the plaintiff The McKernan Law Firm seeks a declaration that:
`A. Its use of the mark GET GORDON! GET rr DONE!TM to advertise its legal services does
`
`not infringe on any valid rights that CJ Advertising claims to have in the GET
`
`TRADEMARKS, including any rights represented by U.S. Trademark Reg. Nos.
`
`3,688,]22 and 3,649,548, orwbich may exist under the common law; and
`
`B. CJ Advertising does not have valid trademark rights or other intellectual property rights
`
`in the GET TRADEMARKS under any federal or state Jaw since an advertising agency,
`
`as a matter of law, cannot develop goodwill in a trademark for legal services.
`
`- 1 ­
`{806S9036.1 }
`Case 3:10wcv-00318-JJB-CN Document 1
`
`05/05/10 Page 7 of 10
`
`

`
`C. CJ Advertising does not have valid trademark rights or other intellectual property rights
`
`in the OEr TRADEMARKS lUlder any federal or state law since CJ Advertising
`
`abandoned the GET TRADEMARKS by engaging in naked licensing.
`
`D. CJ Advertising does not have valid trademark rights or other intellectual property rights
`
`in the GET TRADEMARKS under any federal or state law since CJ Advertising's use of
`
`the GET TRADEMARKS through third parties fails to comply with the statutory
`
`requirements set forth in 15 V.S.C.A. § 1055.
`
`E. The Court certify such declaratory judgment to the Director of the U.S. Patent and
`
`Trademark Office under 15 V.S.C.A. § 1119 for appropriate cancellation action, and
`
`instruct the U.S. Patent and Trademark Office and all applicable state offices to record
`
`the declaratory judgment and cancel all of defendant's registrations filed with such Office
`
`and any state that reflect any intellectual property rights in the GET TRADEMARKS
`
`including, without limitation, U.S. Trademark Reg. Nos. 3,688,122 and 3,649,548.
`
`F. The McKernan Law Finn recover from defendant its attorney's fees and costs incurred in
`
`this action; and
`
`G. The Court order all legal, equitable, general, and other relief to which The McKernan
`
`Law Firm may be entitled.
`
`- 8 ­
`{B06S9036.1)
`Case 3:10-cv-00318-J~IB-CN Document 1
`
`05/05110 Page 8 of 10
`
`

`
`Respectfully Submitted,
`
`JONES, WALKER. WAECHTER, POITEVENT,
`CARRERE & DENEGRE L.L.P.
`
`(lZt1iltJ£j(~
`
`RobertC. Tucker (LA BarNo. 2152)
`Ryan E. Johnson (LA BarNo. 26352)
`Michael K. Leachman (LA Bar No. 30158)
`Four United Plaza
`8555 United Plaza Blvd.
`Baton Rouge, Louisiana 70809-2260
`Telephone: (225) 248-2420
`Telecopier: (225) 248-3120
`Ijohnson@joneswalker.com
`rtucker@joneswalker.com
`mleachman@joneswalker.com
`
`ATTORNEYS FOR PLAINTIFF,
`TIIE McKERNAN LAW FIRM
`
`- ,9 ­
`{B06.59036, I}
`Case 3:10-cv-00318-JJB-CN Document 1 05/05/10 Page 9 of 10
`
`

`
`, .
`
`VERIFICATION
`
`STATE OF LOUISIANA
`
`EAST BATON ROUGE PARISH
`
`GORDON McKERNAN appeared before me and, after being duly sworn, stated under
`oath that he is a member of The McKernan Law Firm, PLLC, and that all the allegations in The
`fOT Declaratory Judgment are true and caneet to the best of
`McKernan Law Finn's Complai
`his knowledge. infunnation,V '.f,
`'
`
`--~--~~~~~~u-----~
`
`Sworn to and subscribed before me
`dayof ~tMt(
`
`this 6
`
`,2010.
`
`NOTARY PUBLIC
`
`. Lisa. R. PhUllps
`
`Notary Public
`
`Parish of LlvinptoD.
`
`State M Loui8iana
`
`My Collllllission is for Life
`
`Notary ID No. 31289
`
`
`- 10­
`(80659036.11
`Case 3:10-cv-00318-JJB-CN Document 1 05/05/10 Page 10 of 10