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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA638784
`ESTTA Tracking number:
`11/13/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91210158
`Plaintiff
`Larry Pitt & Associates, P.C.
`JACQUELINE M LESSER
`BAKER & HOSTETLER LLP
`2929 ARCH STREET, CIRCA CENTRE 12TH FLOOR
`PHILADELPHIA, PA 19104-2891
`UNITED STATES
`trademarks@woodcock.com, jlesser@bakerlaw.com, jdale@bakerlaw.com
`Motion to Amend Pleading/Amended Pleading
`Jacqueline M. Lesser
`trademarksphi@bakerlaw.com, jlesser@bakerlaw.com, jdale@bakerlaw.com
`/Jacqueline M. Lesser/
`11/13/2014
`Amended Notice of Opposition.PDF(137983 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In Re: Application of Lundy Law, LLP
`
`85/767,757
`Serial No.:
`October 31, 2012
`Filed:
`Published: April 9, 2013
`Mark:
`REMEMBER THIS NAME
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`
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`Opposition No.: 91210158
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`LARRY PITT & ASSOCIATES, P.C.
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`Opposer,
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`v.
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`LUNDY LAW, LLP
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`Applicant.
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`AMENDED NOTICE OF OPPOSITION
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` Opposer, Larry Pitt & Associates, P.C. (“Opposer”) believes that it would be damaged
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`by registration of the mark as shown in U.S. Application Serial No. 85/767,757, published for
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`opposition on April 9, 2013, and as for its Amended Notice of Opposition, alleges as follows:
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`
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`1. Opposer is a law firm located in the Philadelphia area that has been in operation for
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`over thirty-three years, and handles workers compensation claims, personal injury
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`matters and social security disability matters. Opposer’s principal place of business is
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`located at 409 South 20th Street, Philadelphia, PA 19146.
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`2. Since its inception, Opposer has advertised its legal services in various media
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`channels.
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`3. Opposer’s advertising consistently presents the name and the toll-free telephone
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`number for its firm.
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`4. As a general matter, marketers and advertisers of legal services promote their services
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`through advertisements that encourage customers to remember the name of the law
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`firm in question, and to remember the firm’s telephone number, so that a potential
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`client may call the law firm to engage it for legal services.
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`5. The concept of remembering a law firm’s name and its telephone number is well
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`known in the legal community, by consumers, and by advertisers and marketers of
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`legal services, as well as advertisers and marketers of other services promoted
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`through advertising.
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`6. In fact, potential clients of Opposer’s legal services often learn about Opposer and
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`its business from its advertising, and contact Opposer because they have reviewed,
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`and remembered the name of Opposer’s firm, and its toll-free number.
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`7. Opposer has used the phrase “REMEMBER THIS NUMBER” over its toll free
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`number as one means of instructing potential clients to remember the telephone
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`number of Opposer’s business.
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`8. Other law firms have used the phrase “remember this name” or “remember this
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`number” in advertising of their services to potential clients.
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`9. Applicant is a law firm operating in Pennsylvania, New Jersey and Delaware.
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`Applicant’s advertising consistently presents the name of the firm and the toll-free
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`telephone number for its business. Applicant’s marketing efforts are directed to
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`potential clients remembering the name of Applicant’s own law firm and Applicant’s
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`own telephone number.
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`605367763.2
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`

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`10. Applicant has filed the subject application for the phrase, REMEMBER THIS
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`NAME, which is used in the context of an instructional phrase to potential clients to
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`remember the name of Applicant’s law firm.
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`11. Applicant’s specimen of use submitted with its application shows ““INJURED?
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`REMEMBER THIS NAME 1-800-LUNDYLAW”, rather than the phrase
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`“REMEMBER THIS NAME.”
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`12. Applicant’s proposed mark, REMEMBER THIS NAME, is nothing more than a
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`general instruction for “injured” persons to seek help from Applicant’s law firm by
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`remembering the name of Applicant’s firm.
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`13. Applicant’s proposed mark, REMEMBER THIS NAME, fails to function as a
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`trademark or service mark to identify and distinguish products or services of a single
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`source from those of others.
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`14. To the contrary, REMEMBER THIS NAME is merely an ordinary marketing and
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`advertising concept that is used generally in the industry and by the press to describe
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`marketing efforts rather than an indication of a single source.
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`15. Applicant’s specimen of use for REMEMBER THIS NAME uses the subject phrase
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`in a manner that does not even attempt to show the use of the phrase as a trademark or
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`service mark.
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`16. Consumers viewing the phrase do not and will not perceive the REMEMBER THIS
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`NAME phrase as a source indicator.
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`17. Competitors of Applicant, including Opposer, are entitled to use the phrase
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`“remember this name” or “remember this number” or similar phrases in their own
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`605367763.2
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`

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`advertising for legal services without threat of suit that a common and non-source
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`identifying phrase is exclusive to a single entity.
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`18. In fact, Applicant already had attempted to foreclose Opposer’s advertising use of the
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`common instruction to “remember this number” over Opposer’s telephone number,
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`by filing suit in the United States District Court for the Eastern District of
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`Pennsylvania, Civil Action No. 2:13-cv-01161-CDJ, alleging, alleging, inter alia, that
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`Opposer’s use of the phrase “remember this number” before Opposer’s telephone
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`number was an infringement of Applicant’s trademark rights in REMEMBER THIS
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`NAME. While that action was voluntarily dismissed by Applicant prior to Opposer’s
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`Answer, because, procedurally, it was dismissed without prejudice, a threat to
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`Opposer remains.
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`19. Registration of the instructional phrase, REMEMBER THIS NAME, would be
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`contrary to provisions of the Trademark Act as providing a monopoly right in a word
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`or phrase that does not operate as an indication of source and that fails to function as
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`a trademark or service mark. Such registration of such a non-source indicating phrase
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`would be to the detriment of Opposer and others who currently use, or will use, the
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`common phrases “remember this name” or “remember this number” or other uses of
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`“remember this” (to which Applicant also claims exclusive rights for its services) in
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`advertising to describe and promote such competitors’ legal services, since it may
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`subject these law firms, as it has subjected Opposer, to an infringement suit.
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`20. Applicant’s use of REMEMBER THIS NAME is not made in a manner calculated to
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`project to purchasers or potential purchasers a single source of origin for the goods or
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`services intended to be offered under this phrase. REMEMBER THIS NAME does
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`605367763.2
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`

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`not meet the requirements of Sections 1, 3 and 45 of the Trademark Act and therefore
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`registration of REMEMBER THIS NAME must be refused for its failure to function
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`as a service mark.
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`21. As evidenced by the specimen of use submitted with its application, Applicant has not
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`used REMEMBER THIS NAME as a trademark or service mark in the sale or
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`advertising of existing services as of the date that Applicant filed the subject
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`application. Consequently, Application Serial No. 85/767,757 is void ab initio, and
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`should be refused registration.
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`
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`WHEREFORE, Opposer prays that allowance of Serial No. 85/767,757 be refused, and
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`that the Board sustain this opposition.
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`Respectfully submitted,
`
`
`
`
`
`Dated: November 13, 2014
`
`By: BAKER & HOSTETLER LLP
`
`
`
`Nancy Frandsen, Esq.
`Jacqueline M. Lesser, Esq.
`Cira Centre, 12th Floor
`2929 Arch Street
`Philadelphia, PA 19104-2891
`Tel: 215-568-3100
`Fax: 215-568-3439
`
`Attorneys for Opposer
`Larry Pitt & Associates, P.C.
`
`
`
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`605367763.2
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`

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`CERTIFICATE OF SERVICE
`
`I, Jacqueline M. Lesser, hereby certified that a true and correct copy of the foregoing
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`Amended Notice of Opposition was served on counsel for Applicant:
`
`Manny D. Pokotilow, Esq.
`Caesar, Rivise, Bernstein, Cohen & Pokotilow
`1635 Market Street
`12th Floor
`Seven Penn Center
`Philadelphia, PA 19103
`
`
`Postage prepaid by first class mail on November 13, 2014.
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`Executed on November 13, 2014, at Philadelphia, Pennsylvania
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`______________________________
`Jacqueline M. Lesser
`
`605367763.2

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