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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA731716
`
`Filing date:
`
`03/07/2016
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91210158
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Plaintiff
`Larry Pitt & Associates, P.C.
`
`JACQUELINE M LESSER
`BAKER & HOSTETLER LLP
`2929 ARCH STREET, CIRA CENTRE 12TH FLOOR
`PHILADELPHIA, PA 19104-2891
`UNITED STATES
`jlesser@bakerlaw.com, jdale@bakerlaw.com, trademarksphi@bakerlaw.com,
`kblumer@bakerlaw.com
`
`Opposition/Response to Motion
`
`Jacqueline M. Lesser
`
`jlesser@bakerlaw.com, jdale@bakerlaw.com, trademarksphi@bakerlaw.com,
`kblumer@bakerlaw.com
`
`Signature
`
`Date
`
`/Jacqueline M. Lesser/
`
`03/07/2016
`
`Attachments
`
`OPPOSITION TO MOTION FOR RECONSIDERATION.pdf(21199 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`Opposition No. 91210158
`
`
`
`LARRY PITT & ASSOCIATES, P.C.
`
`Opposer,
`
`v.
`
`LUNDY LAW, LLP
`
`
`Applicant
`
`
`
`OPPOSITION TO MOTION FOR RECONSIDERATION
`
`On February 17, 2016 – a day before the Board’s deadline for the parties to discuss
`
`rebuttal experts, Lundy Law filed two motions: 1. for reconsideration of the Board’s denial of
`
`summary judgment, and 2. for an extension of the date by which the parties must disclose their
`
`rebuttal experts. Lundy Law’s motion for reconsideration should be denied. Opposer does not
`
`object to an extension of the dates for disclosure of rebuttal experts, and discovery related to the
`
`rebuttal experts, but advises the Board that Lundy Law had not sought consent to an extension of
`
`this disclosure date. Perhaps, if consent was sought, this needless motion practice could have
`
`been avoided.
`
`Lundy Law has no legal basis for reconsideration of the Board’s interlocutory order
`
`denying summary judgment. A motion for reconsideration is limited to a demonstration that, on
`
`the basis of the facts before the Board and the applicable law, the Board’s ruling is in error and
`
`requires appropriate change. TMBP §518. Guess? IP Holder L.P. v. Knowluxe LLC 116 USPQ
`
`2d, 2018, 2019 (TTAB 2015).
`
`On its motion for summary judgment, Lundy Law had the burden of proof of an absence
`
`of any genuine issue as to all material facts, entitling it to judgment as a matter of law.
`
`

`
`Copelands’ Enterprises Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ 2d 1295 (Fed. Cir. 1991);
`
`TBMP §528.01. All doubts as to whether particular factual issues are genuinely in dispute were
`
`resolved against the summary judgment movant, and all inferences to be drawn from the
`
`undisputed facts were appropriately viewed in the light most favorable to the nonmoving party.
`
`Flatley v. Trump, 11 USPQ2d 1284, 1287 (TTAB 1989). As Lundy Law did not meet its burden
`
`with respect to at least the issue of consumer perception, summary judgment was denied. Meyers
`
`v. Brooks Shoe, Inc., 16 USPQ2d 1055, 1057 (Fed. Cir. 1990).
`
`It is a foundational requirement that a mark, phrase or symbol serve as a source
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`designation to receive trademark protection. 15 U.S.C. §1127. The mere filing of the trademark
`
`application does not constitute enforceable rights. Lundy Law cannot simply rest on its
`
`application in suppport of its claim that the phrase is not functional.
`
`The only evidence in the summary judgment motion record, reviewed in the light most
`
`favorable to Opposer, is that the phrase is simply used an instruction, like many other
`
`instructions in personal injury attorney advertising, to get passersby to remember the name of the
`
`Lundy Law firm. The record evidence is that this phrase, and phrases like it – are commonly
`
`used in the industry by comparable law firms as an instruction to consumers to remember the
`
`names and numbers of those firms. Marketing expert, Ross Fishman, provided evidence of third
`
`party use of comparable phrases in law firm advertising. Opposer provided its own statement that
`
`it has always used instructions in its own advertising to get consumers to remember its own name
`
`and telephone number. (Meloff Decl. §8.) Even Applicant’s own marketing director stated that
`
`her job was to get potential clients to remember the name of the Lundy Law firm. (T. Sortman
`
`Dep. Tr. 20.)
`
`

`
`There is no record that any consumers perceive this common and ordinary instruction to
`
`“remember the name” of Lundy Law as anything more than a common and ordinary instruction.
`
`Lundy Law argues that “it defies logic” that the instruction to “remember this name” is “merely
`
`informational”…because “People seeing advertisements for services of a law firm do not need to
`
`be reminded to write down and number of the advertiser of legal service they need”. (Motion at
`
`3). This is a legal argument that was already made, and considered. Revisiting a legal argument
`
`is not grounds for a motion for reconsideration. See, Guess? IP Holder L.P., 116 USPQ 2d at
`
`2019 (TTAB 2015).
`
`The request for reconsideration should be denied. Applicant has used its reconsideration
`
`papers to seek additional time to determine whether it will put forth a rebuttal witness. Notably,
`
`Applicant did not seek Opposer’s consent to an extension of the Board’s deadlines. To date,
`
`only Opposer has disclosed a case in chief expert. Lundy Law now is only entitled to a rebuttal
`
`expert, if properly disclosed. Opposer advises the Board that it does not oppose an extension of
`
`time for the parties to discuss issues regarding any rebuttal experts, and to discuss whether
`
`submission of expert testimony may be made by affidavit.
`
`
`
`Dated: March 7, 2016
`
`
`
`
`
`
`
`BAKER & HOSTETLER LLP
`
`By:
`
`
`
`Jacqueline M. Lesser
`jlesser@bakerlaw.com
`2929 Arch Street
`Cira Centre, 12th Floor
`Philadelphia, PA 19104-2891
`Telephone: 215.564-2155
`Facsimile: 215.568.3439
`
`Attorneys for Larry Pitt & Associates, P.C.
`
`

`
`
`
`CERTIFICATE OF SERVICE
`
`
`I hereby certify that on this 7th day of March, 2016, I caused a true and correct copy of
`
`the foregoing OPPOSITION TO MOTION FOR RECONSIDERATION to be served via First
`
`Class Mail on the following:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Manny D. Pokotilow
`Caesar Rivise, Bernstein, Cohen & Pokotilow Ltd.
`1635 Market Street
`11th Floor – Seven Penn Center
`Philadelphia, PA 19103-2212
`mpokotilow@crbcp.com
`
`/s/ Jacqueline M. Lesser
`Jacqueline M. Lesser

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