Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA531466
`ESTTA Tracking number:
`04/10/2013
`
`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
`Entity
`Address
`
`Larry Pitt & Associates, P.C.
`Corporation
`1918 Pine Street
`Philadelphia, PA 19146
`UNITED STATES
`
`Citizenship
`
`Pennsylvania
`
`Attorney
`information
`
`Jacqueline M. Lesser
`Woodcock Washburn LLP
`2929 Arch Street Cira Centre, 12th Floor
`Philadelphia, PA 19104-2891
`UNITED STATES
`trademarks@woodcock.com, jlesser@woodcock.com, jdale@woodcock.com
`Phone:215-568-3100
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85767757
`04/10/2013
`
`Publication date
`Opposition
`Period Ends
`
`04/09/2013
`05/09/2013
`
`Lundy Law, LLP
`19th Floor 1635 Market Street
`Philadelphia, PA 19103
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 045. First Use: 2011/05/16 First Use In Commerce: 2011/05/16
`All goods and services in the class are opposed, namely: Legal services
`
`Grounds for Opposition
`
`The mark is merely descriptive
`Genericness
`
`Trademark Act section 2(e)(1)
`Trademark Act section 23
`
`Attachments
`
`Executed Notice of Opposition(000469-4-10-2013 2-20-36 PM).PDF ( 5 pages
`)(48368 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
`
`
`ESTTA531466
`ESTTA Tracking number:
`04/10/2013
`
`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
`Entity
`Address
`
`Larry Pitt & Associates, P.C.
`Corporation
`1918 Pine Street
`Philadelphia, PA 19146
`UNITED STATES
`
`Citizenship
`
`Pennsylvania
`
`Attorney
`information
`
`Jacqueline M. Lesser
`Woodcock Washburn LLP
`2929 Arch Street Cira Centre, 12th Floor
`Philadelphia, PA 19104-2891
`UNITED STATES
`trademarks@woodcock.com, jlesser@woodcock.com, jdale@woodcock.com
`Phone:215-568-3100
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85767757
`04/10/2013
`
`Publication date
`Opposition
`Period Ends
`
`04/09/2013
`05/09/2013
`
`Lundy Law, LLP
`19th Floor 1635 Market Street
`Philadelphia, PA 19103
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 045. First Use: 2011/05/16 First Use In Commerce: 2011/05/16
`All goods and services in the class are opposed, namely: Legal services
`
`Grounds for Opposition
`
`The mark is merely descriptive
`Genericness
`
`Trademark Act section 2(e)(1)
`Trademark Act section 23
`
`Attachments
`
`Executed Notice of Opposition(000469-4-10-2013 2-20-36 PM).PDF ( 5 pages
`)(48368 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
`
`/Jacqueline M. Lesser/
`Jacqueline M. Lesser
`04/10/2013
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`LARRY PITT & ASSOCIATES, P.C. (cid:9)
`
`In Re: Application of Lundy Law, LLP
`
`Opposer,
`
`0
`
`LUNDY LAW, LLP
`
`Serial No.: (cid:9)
`Filed: (cid:9)
`Published: (cid:9)
`Mark: (cid:9)
`
`85/767,757
`October 31, 2012
`April 9, 2013
`REMEMBER THIS NAME
`
`Applicant.
`
`Opposition No.:
`
`NOTICE OF OPPOSITION
`
`Opposer, Larry Pitt & Associates, P.C. ("Opposer") believes that it would be damaged
`
`by registration of the mark as shown in U.S. Application Serial No. 85/767,757, published for
`
`opposition on April 9, 2013. As grounds for its opposition, Opposer alleges as follows:
`
`1. Opposer is a law firm located in the Philadelphia area that has been in operation for
`
`over thirty-two years, and handles workers compensation claims, personal injury
`
`matters and social security disability matters. Opposer's principal place of business is
`
`located at 409 South 20`1' Street, Philadelphia, PA 19146.
`
`2. Since its inception, Opposer has advertised its legal services in various media
`
`channels.
`
`3. Opposer's advertising consistently presents the name and the toll-free telephone
`
`number for its firm.
`
`
`
`4. As a general matter, marketers and advertisers of legal services promote their services
`
`through advertisements which encourage customers to remember the name of the law
`
`firm in question, and to remember the firm's telephone number, so that a potential
`
`client may call the law firm to engage it for legal services.
`
`5. For example, potential clients of Opposer's legal services often learn about Opposer
`
`and its business from its advertising, and contact Opposer because they have
`
`reviewed, and remembered the name of Opposer's firm, and its toll-free number.
`
`6. The concept of remembering a law firm's name and its telephone number is well
`
`known in the legal community, and by advertisers and marketers of legal services, as
`
`well as advertisers and marketers of other services promoted through advertising. On
`
`information and belief, Applicant's own marketing efforts are likewise directed to
`
`potential customers remembering the name of its own law firm.
`
`7. Applicant has filed an application for REMEMBER THIS NAME for "legal
`
`services."
`
`8. Applicant's proposed mark, REMEMBER THIS NAME, is a generic term and
`
`therefore Applicant does not have the right to exclude others from using this phrase in
`
`its generic sense.
`
`9. Applicant's proposed REMEMBER THIS NAME mark, which is generic, belongs in
`
`the public domain rather than to Applicant as its exclusive owner.
`
`10. Applicant's purported mark REMEMBER THIS NAME, if not generic, is at best
`
`merely descriptive insofar as it is nothing more than an instruction to potential clients
`
`to remember the name of Applicant's law firm, Lundy Law, and such therefore is not
`
`capable, itself, of identifying and distinguishing a single source.
`
`
`
`11. REMEMBER THIS NAME is an ordinary marketing and advertising concept that is
`
`used generally in the industry and by the press to describe marketing efforts, and is a
`
`generic or merely descriptive term when applied to the marketing of legal services.
`
`12. Applicant's specimen of use for REMEMBER THIS NAME merely uses the term as
`
`an instruction in the body of the ad and does not show the use of the phrase as a
`
`trademark, or source identifier.
`
`13. Applicant has intentionally filed for REMEMBER THIS NAME solely to prevent its
`
`competitors from instructing their own potential clients to remember such firms'
`
`name, and such firm's telephone numbers.
`
`14. Competitors of Applicant, including Opposer are entitled to use the phrase
`
`"remember this name" or "remember this number" or similar phrases in their own
`
`advertising for legal services without threat of suit.
`
`15. As of the date of this Opposition, Applicant is attempting to foreclose Opposer's use
`
`of the common, descriptive instruction to "Remember this number" over Opposer's
`
`telephone number on Opposer's own advertising, on the theory that any purported
`
`rights that Applicant has in REMEMBER THIS NAME precludes Opposer's right to
`
`use the instruction "remember this number" in Opposer's own advertising. Applicant
`
`has filed suit in the United States District Court for the Eastern District of
`
`Pennsylvania, Civil Action No. 2:13-cv-01161-CDJ, alleging, inter alia, that
`
`Opposer's use of the phrase "Remember this number" before Opposer's telephone
`
`number constitutes an infringement of Applicant's trademark rights in REMEMBER
`
`
`
`16. If Applicant obtains the registration herein opposed, it would obtain the prima facie
`
`exclusive right to use the generic, or common descriptive phrase REMEMBER THIS
`
`NAME for attorney advertising. Such registration would be a source of damage and
`
`injury to Opposer (and others) who currently use, or will use, the descriptive
`
`designation "remember this name," "remember this number" or other uses of
`
`"remember this" (to which Applicant also claims exclusive rights for its services) in
`
`advertising to describe and promote such competitors' legal services, since it may
`
`subject them, as it has subjected Opposer, to an infringement suit.
`
`17. Registration should therefore be refused pursuant to Section 2(e)(1) of the Trademark
`
`Act of 1946, as amended, 15 U.S.C. §1052 (e)(1), on the grounds that Applicant's
`
`REMEMBER THIS NAME mark is a generic term, or, at best, a merely descriptive
`
`term.
`
`WHEREFORE, Opposer, Larry Pitt & Associates prays that allowance of Serial No.
`
`85/767,757 be refused, and that the Board sustain this opposition.
`
`Respectfully submitted,
`
`Philadelphia, PA 19104-2891
`Tel: 215-568-3100
`Fax: 215-568-3439
`
`Attorneys for Opposer
`Larry Pitt & Associates, P. C.
`
`
`
`CERTIFICATE OF SERVICE
`
`I, Jacqueline M. Lesser, hereby certified that a true and correct copy of the foregoing
`
`Notice of Opposition was served on counsel for Applicant:
`
`Manny D. Pokotilow, Esq.
`Caesar, Rivise, Bernstein, Cohen & Pokotilow
`1635 Market Street
`12"' Floor
`Seven Penn Center
`Philadelphia, PA 19103
`
`Postage prepaid by first class mail on April 10, 2013.
`
`Executed on April 10, 2013, at Philadelphia, Pennsylvania.
`
`Jacqueli e M. Lesser
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