Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA457788
`ESTTA Tracking number:
`02/22/2012
`
`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
`
`Boomfish Wealth Group, LLC
`02/22/2012
`
`12600 Deerfield Parkway Suite 100
`Alpharetta, GA 30004
`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, fifty@icemiller.com
`Phone:317-236-2100
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85321169
`02/22/2012
`
`Publication date
`Opposition
`Period Ends
`
`10/25/2011
`02/22/2012
`
`Enduring Wealth Advisors
`30162 Corte Cantera
`Temecula, CA 92591
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 036. First Use: 2011/05/11 First Use In Commerce: 2011/05/11
`All goods and services in the class are opposed, namely: Advice relating to investments; Agencies for
`brokerage of securities trading in overseas securities markets and of transactions on commission of
`overseas market securities futures; Agencies in the field of bonds and other securities; Agencies or
`brokerage for trading of securities, securities index futures, securities options, and overseas market
`securities futures; Brokerage of shares and other securities; Brokerage of shares or stocks and other
`securities; Brokerage services in the field of securities and commodities investing; Commodity
`investment advice; Credit and financial consultation; Financial advice; Financial advisory and
`consultancy services; Financial and investment services, namely, asset and investment acquisition,
`consultation, advisory and development; Financial and investment services, namely, management
`and brokerage in the fields of stocks, bonds, options, commodities, futures and other securities, and
`the investment of funds of others; Financial evaluation for insurance purposes; Financial investment
`brokerage; Financial investment brokerage services; Financial investment in the field of securities;
`Financial planning; Financial planning and investment advisory services; Financial planning
`consultation; Financial planning for retirement; Financial portfolio analysis services; Financial portfolio
`management; Financial services, namely, a total portfolio offering for high net worth clients consisting
`of both separate accounts and mutual funds for equity and fixed income investments; Financial
`
`

`
`services, namely, broker/dealer services on securities exchanges and over-the-counter markets;
`Financial services, namely, commodity trading and managed futures advisory and management
`services; Financial services, namely, coordination, within a single account, of an investment
`portfolio's maintenance, trading, rebalancing, and tax management needs; Financial services,
`namely, investment advice, investment management, investment consultation and investment of
`funds for others, including private and public equity and debt investment services; Financial services,
`namely, wealth management services; Investment advice; Investment advisory services; Investment
`of funds for others; Management of portfolios comprising securities; Management of portfolios of
`transferable securities; Management of securities portfolios; Mutual fund investment; Mutual funds
`and capital investment; Private equity fund investment services; Private placements of hedge funds,
`private equity funds, securities and derivatives for others; Securities brokerage; Securities brokerage
`services; Security brokerage; Trading in securities
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Application/
`Registration No.
`Registration Date
`Word Mark
`Goods/Services
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`ENDURING WEALTH and ENDURING WEALTH METHOD
`Comprehensive method that enables high net-worth families to
`maximize the impact of their wealth
`
`Attachments
`
`INDY-#2756983-v1-Enduring_Wealth_-_Notice_of_Opposition.pdf ( 6 pages
`)(20379 bytes )
`
`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.
`
`Certificate of Service
`
`Signature
`Name
`Date
`
`/bms/
`Bradley M. Stohry
`02/22/2012
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Trademark App. Ser. Nos. 85/321,169
`Filed on May 14, 2011
`For the Mark ENDURING WEALTH ADVISORS (and Design)
`Published in the Official Gazette on October 25, 2011
`
`Opposition No.:______________
`
`))
`
`))
`
`)
`)
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`))
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`)
`
`Boomfish Wealth Group, LLC,
`
`Opposer,
`
`v.
`
`Enduring Wealth Advisors,
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`Boomfish Wealth Group, LLC (“Opposer”) hereby opposes the above-referenced
`
`application to register the ENDURING WEALTH ADVISORS (and Design) mark filed by
`
`Enduring Wealth Advisors (“Applicant”). The grounds for opposition are as follows:
`
`THE PARTIES
`
`1.
`
`Boomfish Wealth Group, LLC is a Georgia limited liability company that has a
`
`place of business at 12600 Deerfield Parkway, Suite 100, Alpharetta, Georgia 30004.
`
`2.
`
`Applicant is a California corporation with a place of business at 30162 Corte
`
`Cantera, Temecula, California 92591.
`
`OPPOSER AND ITS USE OF THE ENDURING WEALTH
`AND ENDURING WEALTH METHOD MARKS
`
`Opposer provides comprehensive wealth planning services.
`
`Opposer is the owner of common law trademark rights in the marks ENDURING
`
`3.
`
`4.
`
`WEALTH and ENDURING WEALTH METHOD (collectively, the “ENDURING WEALTH
`
`METHOD Marks”).
`
`

`
`5.
`
`Opposer and its predecessor-in-interest, Boomfish, Inc. have been using the
`
`ENDURING WEALTH METHOD Marks to promote their financial advisory services since
`
`April 2010. Since that time, Opposer has established extensive and valuable goodwill in the
`
`ENDURING WEALTH METHOD Marks and has spent significant amounts of time and money
`
`establishing this goodwill.
`
`6.
`
`The ENDURING WEALTH METHOD Marks have come to indicate and stand
`
`for the high quality services offered by Opposer.
`
`7.
`
`As a result of Opposer’s use of the ENDURING WEALTH METHOD Marks, the
`
`ENDURING WEALTH METHOD Marks have become valuable property of Opposer.
`
`APPLICANT’S TRADEMARK APPLICATION
`AND USE OF THE ENDURING WEALTH ADVISOR MARK
`
`8.
`
`Trademark App. Ser. Nos. 85/321,169 (the “Application”) was filed by Applicant
`
`for the ENDURING WEALTH ADVISORS (and Design) mark on May 14, 2011, and was
`
`published for opposition on October 25, 2011. Because Applicant filed a Request for Extension
`
`of Time to Oppose, which was granted by the Trademark Trial and Appeal Board, Opposer’s
`
`deadline to initiate an opposition was extended until February 22, 2012.
`
`9.
`
`The Application is a use-based application and covers “Advice relating to
`
`investments; Agencies for brokerage of securities trading in overseas securities markets and of
`
`transactions on commission of overseas market securities futures; Agencies in the field of bonds
`
`and other securities; Agencies or brokerage for trading of securities, securities index futures,
`
`securities options, and overseas market securities futures; Brokerage of shares and other
`
`securities; Brokerage of shares or stocks and other securities; Brokerage services in the field of
`
`securities and commodities investing; Commodity investment advice; Credit and financial
`
`consultation; Financial advice; Financial advisory and consultancy services; Financial and
`
`Page 2
`
`

`
`investment services, namely, asset and investment acquisition, consultation, advisory and
`
`development; Financial and investment services, namely, management and brokerage in the
`
`fields of stocks, bonds, options, commodities, futures and other securities, and the investment of
`
`funds of others; Financial evaluation for insurance purposes; Financial investment brokerage;
`
`Financial investment brokerage services; Financial investment in the field of securities; Financial
`
`planning; Financial planning and investment advisory services; Financial planning consultation;
`
`Financial planning for retirement; Financial portfolio analysis services; Financial portfolio
`
`management; Financial services, namely, a total portfolio offering for high net worth clients
`
`consisting of both separate accounts and mutual funds for equity and fixed income investments;
`
`Financial services, namely, broker/dealer services on securities exchanges and over-the-counter
`
`markets; Financial services, namely, commodity trading and managed futures advisory and
`
`management services; Financial services, namely, coordination, within a single account, of an
`
`investment portfolio’s maintenance, trading, rebalancing, and tax management needs; Financial
`
`services, namely,
`
`investment advice,
`
`investment management,
`
`investment consultation and
`
`investment of funds for others, including private and public equity and debt investment services;
`
`Financial services, namely, wealth management services;
`
`Investment advice;
`
`Investment
`
`advisory services;
`
`Investment of funds for others; Management of portfolios comprising
`
`securities; Management of portfolios of transferable securities; Management of securities
`
`portfolios; Mutual fund investment; Mutual funds and capital investment; Private equity fund
`
`investment services; Private placements of hedge funds, private equity funds, securities and
`
`derivatives for others; Securities brokerage; Securities brokerage services; Security brokerage;
`
`Trading in securities” in Class 36.
`
`Page 3
`
`

`
`10.
`
`Applicant indicates that it began using the ENDURING WEALTH ADVISORS
`
`(and Design) mark in connection with its services on May 11, 2011.
`
`GROUNDS FOR AND REJECTING APPLICANT’S TRADEMARK APPLICATION
`
`11.
`
`Opposer’s actual, continuous, and continuing use of the ENDURING WEALTH
`
`METHOD Marks in commerce began before Applicant filed its Application.
`
`12.
`
`Opposer’s actual, continuous, and continuing use of the ENDURING WEALTH
`
`METHOD Marks in commerce began before the date of first use listed in the Application.
`
`13.
`
`Applicant’s use and registration of the ENDURING WEALTH ADVISORS (and
`
`Design) mark for all of the services listed in the Application is likely to cause confusion,
`
`mistake, and/or lead to deception as to the origin of Applicant’s services in violation of Sections
`
`32 and 43(a) of the Lanham Act, 15 U.S.C. §§1114 and 1125(a).
`
`14.
`
`The likelihood of confusion is apparent in this instance because the ENDURING
`
`WEALTH METHOD Marks and the ENDURING WEALTH ADVISORS (and Design) mark
`
`are highly similar, and are used in connection with similar financial services.
`
`15.
`
`Applicant’s use and registration of the ENDURING WEALTH ADVISORS (and
`
`Design) mark is likely to result in confusion and substantial damage and injury to Opposer.
`
`Persons familiar with Opposer’s ENDURING WEALTH METHOD Marks are likely to believe
`
`that Applicant’s services originate with, or are licensed, sponsored or approved by Opposer.
`
`Any such confusion would inevitably result in loss of sales to Opposer, and/or damage the
`
`goodwill and reputation that Opposer has established in the ENDURING WEALTH METHOD
`
`Marks.
`
`WHEREFORE, Opposer prays that the Application be rejected.
`
`Page 4
`
`

`
`Dated this 22nd day of February, 2012.
`
`Respectfully submitted,
`
`By:
`
`/Bradley M. Stohry/
`Bradley M. Stohry
`ICE MILLER LLP
`One American Square
`Suite 2900
`Indianapolis, Indiana 46282-0200
`(317) 236-2100
`
`Attorney for Boomfish Wealth Group, LLC
`
`Page 5
`
`

`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the foregoing was served upon the following by
`first-class United States mail, postage prepaid, on February 22, 2012:
`
`Enduring Wealth Advisors
`30162 Corte Cantera
`Temecula, CA 92591
`
`By:
`
`/Bradley M. Stohry/
`Bradley M. Stohry
`
`I/2756983.1
`
`Page 6