Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA576100
`ESTTA Tracking number:
`12/12/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91212587
`Plaintiff
`4U Promotions, Inc.
`ROBERT R LECH
`LECH LAW LLC
`PO BOX 3473
`DUBLIN, OH 43016
`UNITED STATES
`rrlech@lechlaw.com
`Other Motions/Papers
`Robert R. Lech
`rrlech@lechlaw.com
`/Robert R. Lech/
`12/12/2013
`Motion.pdf(134587 bytes )
`Exhibits A-C.pdf(143945 bytes )
`Exhibits D-E.pdf(5124264 bytes )
`Certificate of Service.pdf(48095 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`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
`TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91212587
`
`Mark: ROCKIN’ THE
`
`CARIBBEAN
`
`Serial No. 85/894,646
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`Published: August 27, 2013
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`4U Promotions, Inc.
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`Opposer,
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`v.
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`
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`Gerry Seader AKA Rocky Seader
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`
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`Applicant.
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`OPPOSER’S PETITION TO DISQUALIFY COUNSEL FOR APPLICANT
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`
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`4U Promotions, Inc. (“4UP” or “Opposer”) moves the Trademark Trial and Appeal Board
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`(“TTAB”) for an order disqualifying Sven W. Hanson and the Law Office of Sven W. Hanson
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`(collectively “Mr. Hanson”) from representing Gerry Seader, aka Rocky Seader, (“Mr. Seader”
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`or “Applicant”) in this opposition proceeding (“the Opposition”).
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`This motion is based on the following: 1) Mr. Hanson has a former attorney-client
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`relationship with 4UP; 2) by representing Mr. Seader, Mr. Hanson is representing a party directly
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`adverse to his former client, 4UP; and 3) the subject matter of this proceeding, namely the
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`trademark rights regarding “ROCKIN’ THE CARIBBEAN” (“the Mark”) as shown in Serial No.
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`85/894,646 (the “Subject Application”), is substantially related to, if not identical to, the subject
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`matter involved in the former attorney-client relationship between Mr. Hanson and 4UP.
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`This motion is further based on the likelihood that Mr. Hanson will be called as a witness
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`in the Opposition by virtue of: Mr. Hanson’s previous representation of 4UP regarding the Mark
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`and Mr. Hanson’s representation of Mr. Seader in prosecuting the Subject Application. In
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`support of this petition, 4UP shows as follows:
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`

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`FACTS
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`1.
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`In 2006 and 2007, Mr. Seader and 4UP participated in a joint venture with
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`Concierge Travel Services, Inc. to offer cruise services under the Mark in connection with a
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`cruise that took place between January 28, 2007 and February 3, 2007 on the Norwegian Cruise
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`Line cruise ship named “Jewel.”
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`2.
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`On or shortly after April 10, 2007, both Mr. Seader and 4UP received a letter
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`dated April 10, 2007 (the “Concierge Letter”). The Concierge Letter pertains to use of the Mark
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`by each of the three members of the joint venture. Specifically, the Concierge Letter requests
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`that Mr. Seader and 4UP refrain from using the Mark. The Concierge Letter is attached hereto as
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`Exhibit A.
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`3.
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`After receiving the Concierge Letter, both Mr. Seader and 4UP retained Mr.
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`Hanson to represent each of them with respect their use of the Mark, and they each further
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`retained Mr. Hanson to respond to the Concierge Letter.
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`4.
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`Mr. Hanson accepted the representation of both Mr. Seader and 4UP with respect
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`to the Mark.
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`5.
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`On or about April 20, 2007, as counsel for Mr. Seader and 4UP, Mr. Hanson
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`prepared and sent a letter dated April 20, 2007 (the “Joint Response Letter”) responding to the
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`April 10, 2007 letter. Mr. Hanson’s Joint Response Letter is attached hereto as Exhibit B.
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`6.
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`In the opening sentence of the Joint Response Letter, Mr. Hanson confirms his
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`representation of Mr. Seader and 4UP. Specifically, Mr. Hanson states: “I represent Gerry
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`Seader, Gerry Seader Productions, and 4UPromotions, Inc. of Lancaster, Ohio.”
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`7.
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`Mr. Hanson’s attorney-client relationship with both Mr. Seader and 4UP is further
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`illustrated by e-mail messages exchanged between Mr. Hanson and his clients, Mr. Seader and
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`2
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`

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`4UP. The e-mail messages were exchanged before and after Mr. Hanson’s mailing of the Joint
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`Response Letter. True and correct copies of e-mail messages from 4/19/2007, 5/9/2007, and
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`5/18/2007 are attached hereto as Exhibit C.
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`8.
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`In addition to the above-described representation, Mr. Hanson represented 4UP in
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`at least one other matter – a trademark clearance search and opinion for the mark “DECADES
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`OF ROCK AND ROLL.”
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`9.
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`On April 3, 2013, Mr. Hanson filed the Subject Application on behalf of Mr.
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`Seader to protect the Mark.
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`10.
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`On August 27, 2013, the Mark of the Subject Application was published for
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`opposition.
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`11.
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`On September 20, 2013, 4UP initiated the Opposition by filing a Notice of
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`Opposition to oppose registration of the Mark by Mr. Seader. 4UP served the Notice of
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`Opposition upon Mr. Hanson via First-Class U.S. Mail.
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`12.
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`On September 20, 2013, undersigned counsel provided a courtesy copy of the
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`Notice of Opposition to Mr. Hanson via e-mail. Counsel for 4UP further informed Mr. Hanson
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`of the potential for a conflict of interest in the event that Mr. Hanson chose to represent
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`Applicant in the Opposition. The September 20, 2013 e-mail and its attachments are attached
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`hereto as Exhibit D.
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`13.
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`On October 5, 2013, Mr. Hanson served an Answer upon counsel for 4UP. Mr.
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`Hanson failed to file a copy of the Answer with the TTAB at that time. By preparing and serving
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`the Answer on counsel for 4UP, Mr. Hanson knowingly represented a party, Mr. Seader, adverse
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`to his former client, 4UP, in a matter substantially related to, if not identical to, the subject matter
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`involved in the former attorney-client relationship between Mr. Hanson and 4UP.
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`
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`3
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`

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`14.
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`On November 14, 2013, the TTAB issued a Notice of Default to Applicant for
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`failing to timely file an Answer.
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`15.
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`On November 14, 2013, Mr. Hanson filed a Motion to Extend Time to File
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`Answer. Applicant’s Answer was attached to the Motion to Extend Time to File Answer. By
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`preparing and filing the Motion to Extend Time to File Answer including the previously prepared
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`and served Answer, Mr. Hanson expanded his inappropriate representation to practice before the
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`TTAB. The Motion to Extend Time to File Answer is attached hereto as Exhibit E.
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`
`
`ARGUMENT
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`Disqualification petitions in PTO proceedings are authorized by 35 U.S.C. § 32, 37
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`C.F.R. § l0.130(b), 37 C.F.R. § l1.109 and 37 C.F.R. § l1.307. 37 C.F.R. § l0.130(b) provides
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`that “petitions to disqualify a practitioner . . . will be handled on a case-by-case basis under such
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`conditions as the Commissioner deems appropriate.” “While the PTO has no specific rules which
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`govern disqualification petitions, generally the provisions of the PTO Code of Professional
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`Responsibility, aided by decisions of federal courts, govern resolution of a disqualification.”
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`Anderson v. Eppstein, 59 U.S.P.Q.2d 1280, 1285 (PTO Board of Patent Appeals and
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`Interferences 2001).
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`
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`Mr. Hanson Must be Disqualified Due to a Conflict of Interest
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`Regarding a practitioner’s duties to former clients, 37 C.F.R. § l1.109(a) provides as
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`follows:
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`
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`A practitioner who has formerly represented a client in a matter
`shall not thereafter represent another person in the same or a
`substantially related matter in which that person’s interests are
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`4
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`

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`materially adverse to the interests of the former client unless the
`former client gives informed consent, confirmed in writing.
`
`
`Mr. Hanson, like all practitioners, must abide by 37 C.F.R. §§ l1.109, and under 37
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`
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`C.F.R. §§ l1.109(a), Mr. Hanson’s participation in the present opposition is clearly barred. Mr.
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`Hanson is “[a] practitioner who has formerly represented a client in a matter.” In the present
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`case, Mr. Hanson formerly represented 4UP in the trademark dispute with Concierge Travel as
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`shown by Exhibits B and C. Mr. Hanson further represented 4UP with respect to at least one
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`other matter, a trademark clearance search and opinion.
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`The matter in which Mr. Hanson represented 4UP, namely a dispute regarding the
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`trademark rights in the Mark, is “the same or a substantially related matter” that is the subject of
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`this opposition.
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`Since representing 4UP in the matter against Concierge Travel, Mr. Hanson has
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`“thereafter represent[ed] another person,” namely Mr. Seader, in the present Opposition, “in
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`which that person’s interests are materially adverse to the interests of the former client.” 37
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`C.F.R. § l1.109(a) explicitly forbids such representation “unless the former client gives informed
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`consent, confirmed in writing.” 4UP has provided no such consent, in writing or otherwise.
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`Accordingly, Mr. Hanson must be disqualified under 37 C.F.R. § l1.109(a).
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`
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`Mr. Hanson Must be Disqualified as a Potential Witness
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`Regarding a practitioner’s role as a witness, 37 C.F.R. § l1.307 provides as follows:
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`(a) A practitioner shall not act as advocate at a proceeding before a
`tribunal in which the practitioner is likely to be a necessary witness
`unless:
`(1) The testimony relates to an uncontested issue;
`(2) The testimony relates to the nature and value of legal services
`rendered in the case; or
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`5
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`

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`(3) Disqualification of the practitioner would work substantial
`hardship on the client.
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`(b) A practitioner may act as advocate in a proceeding before a
`tribunal in which another practitioner in the practitioner’s firm is
`likely to be called as a witness unless precluded from doing so by
`§§ 11.107 or 11.109.
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`
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`Mr. Hanson, like all practitioners, must abide by 37 C.F.R. § l1.307, and under 37
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`C.F.R. § l1.307(a), Mr. Hanson must be disqualified from participating in this Opposition. 4UP
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`will list Mr. Hanson as a material witness in this Opposition, and may call Mr. Hanson to provide
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`testimony regarding the dispute between 4UP and Mr. Seader against Concierge Travel. If
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`called, Mr. Hanson would be asked to testify regarding ownership rights in the Mark and Mr.
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`Hanson’s interaction with Concierge Travel’s counsel. The issue of ownership rights in the
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`Mark will surely be contested as 4UP has filed U. S. Trademark Application No. 86/069,894 to
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`protect 4UP’s rights in the Mark. Further, Mr. Hanson’s testimony will relate to the nature and
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`value of legal services rendered in both the Concierge case and the Subject Application.
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`Accordingly, Mr. Hanson’s participation in this Opposition must be disqualified under both 37
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`C.F.R. § l1.307(a)(1) and 37 C.F.R. § l1.307(a)(2).
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`
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`CONCLUSION
`
`The TTAB should not condone an attorney’s disregard for his ethical obligations to a
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`former client. Further, the TTAB should not condone an attorney’s representation of a party
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`while acting as a material witness for the adversarial party.
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`Thus, Mr. Hanson should not be allowed to ignore his responsibilities and duties to 4UP’s
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`interests under the ethical rules that govern the TTAB. 37 C.F.R. § l1.109 specifically prohibits
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`Mr. Hanson’s participation in the Opposition in favor of his duty to 4UP as a former client. To
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`6
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`

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`hold otherwise would abrogate the duties owed to former clients and reduce the attorney-client
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`relationship to one of mercantile convenience.
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`Further, both 37 C.F.R. § l1.307(a)(1) and (2) prohibit Mr. Hanson’s participation in the
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`Opposition due to his likely role as a material witness. To hold otherwise would create at least
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`the appearance of impropriety, as Mr. Hanson would be acting as counsel for Mr. Seader while
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`acting as a witness for 4UP, Mr. Seader’s adversary, in the same proceeding.
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`December 11, 2013
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`
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`By:
`
`
`Respectfully submitted,
`
`/Robert R. Lech/
`Robert R. Lech
`Lech Law, LLC
`P.O. Box 3473
`Dublin, OH 43016
`Telephone: (614) 530-1284
`
`7
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`

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`TTAB 91212587
`
`Exhibit A
`
`

`
`Lanham Act, 15 U.S.C. §§1125, and the Florida trademark statute, Sections
`495.131 to 495.161 Florida Statutes. These provisions allow for, among other
`things, recovery of compensatory damages, lost profits, attorneys’ fees, costs and
`injunctive relief.
`
`Sincer 1 , 7
`
` /.5
`
`.r
`
`‘,!_‘_,*
`
`Neal J. Blaher
`
`cc:
`
`American Automobile Association, 955 Bichara Blvd, The Villages, FL, 32159
`Concierge Travel Services, Inc.
`
`

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`TTAB 91212587
`
`Exhibit B
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`

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`TTAB 91212587
`
`Exhibit C
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`E-mail of 4/19/2007 to Mr. Seader and 4UP
`
`----- Original Message -----
`From: "Sven W. Hanson" <swhanson@bellsouth.net>
`To: <Seaderball@aol.com>; <PennyPBC@columbus.rr.com>
`Sent: Thursday, April 19, 2007 10:41 AM
`Subject: draft response
`
`
`
`Gerry/Penny-
`Let me know what you think. Wont send this out til I hear from you.
`
`-Sven
`
`Sven W. Hanson, Atty.
`Patent, Trademark and Copyright Law
`Gainesville, FL
`352-375-0082
`www.hansoniplaw.com
`
`
`
`E-mail of 5/9/2007 from Mr. Hanson to Mr. Seader and 4UP
`
`----- Original Message -----
`From: "Sven W. Hanson" <swhanson@bellsouth.net>
`To: <Seaderball@aol.com>; "Penny4UPromos" <PennyPBC@columbus.rr.com>
`Sent: Wednesday, May 09, 2007 2:31 PM
`Subject: Rockin Cruises - the story continues
`
`
`
`Gerry/Penny- Attached is the first page of the letter received today
`from Kaplan's atty. (they cc'd the AAA at the Villages). He believes
`that the non-complete of the venture agreement is effective to stop
`you from doing an oldies cruise. I suggest you ignore this. We can
`reply and make arguments about how they are wrong, etc. But that will
`not change anything. They do not care about what is legal - they want
`to bully you into stopping. Either they will sue you or they will go
`away. If you cannot risk the chance they will sue you, then do what
`they ask.
`
`From what you have said about them, it seems very unlikely they will
`take action. For one, they have no case.
`
`Let me know if you want me to reply. If so, I suggest a phone call to
`the atty rather than a letter. -Sven
`
`Sven W. Hanson, Atty.
`
`

`
`Patent, Trademark and Copyright Law
`Gainesville, FL
`352-375-0082
`www.hansoniplaw.com
`
`
`
`E-mail of 5/18/2007 from Mr. Hanson to Mr. Seader and 4UP:
`
`----- Original Message -----
`From: "Sven W. Hanson" <swhanson@bellsouth.net>
`To: <Seaderball@aol.com>; "Penny4UPromos" <PennyPBC@columbus.rr.com>
`Sent: Friday, May 18, 2007 9:27 AM
`Subject: Rockin Cruises - the story continues
`
`
`
`Gerry/Penny
`I was unable to contact the Blaher atty. His office says he will be
`out until the end of the month. I asked for him to call me, and have
`calendered a call to him in the first week of June. Don't lose any
`sleep over this. Have a good weekend. -Sven
`
`
`
`

`
`TTAB 91212587
`
`Exhibit D
`
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`
` I
`
` have not cite-checked the article for accuracy or for more recent cases, but I thought you should be aware of it.
`
`Please feel free to contact me if you would like to discuss either the Notice of Opposition or the conflict rules.
`
`Rob
`
`Robert R. Lech, Esq.
`Lech Law, LLC
`P.O. Box 3473
`Dublin, OH 43016
`
`Voice: (614) 530-1284
`E-mail: ƌƌůĞĐŚΛůĞĐŚůĂǁ͘ĐŽŵ
`Web Site: ŚƚƚƉ͗ͬͬǁǁǁ͘ůĞĐŚůĂǁ͘ĐŽŵ
`
`* * * * * * * * * * * * * * *
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`This electronic message and any attachments contain confidential information which may be subject to the attorney-client privilege and may constitute
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`inside information. If the reader of this message is not the intended recipient, you are hereby notified that your use or distribution of such information, by
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`copying or otherwise, is strictly prohibited. If you have received this message in error, please notify us immediately by reply electronic mail and then
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`remove all traces of the electronic mail message from your system.
`* * * * * * * * * * * * * *
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`
`
`
`
`

`
`Robert R. Lech, Esq.
`Direct Dial: (614) 530-1284
`E-Mail: rrlech@lechlaw.com
`
`Sven W. Hanson, Esq.
`P.O. Box 357429
`
`Gainesville, FL 32635-7429
`
`LECH I ‘AWE
`
`P.0. BOX 3473
`Dublin, OH 43016
`
`September 20, 2013
`
`RE:
`
`Notice of Opposition for 85/894,646 (ROCK]N’ THE CARIBBEAN)
`
`Dear Mr. Hanson:
`
`Enclosed please find:
`0 Notice of Opposition for US Trademark Application Serial No. 85/894,646 filed
`today, September 20, 2013;
`
`0 Certificate of Service for same; and
`
`0 Confirmation Receipt ID: ESTTA560464.
`
`Ver
`
`truly yours,
`
`
`
`Robert R. Lech
`
`RRL
`
`(enclosures)
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`4U Promotions, Inc.
`
`Opposer,
`
`V.
`
`Gerry Seader AKA Rocky Scader
`
`Applicant.
`
`xes/‘/g/g/y/xax/\_/\/g/¢
`
`Opposition No.
`
`Mark: ROCKIN’ THE
`CARIBBEAN
`
`Serial No. 85/894,646
`
`Published: August 27, 2013
`
`NOTICE OF OPPOSITION
`
`4U Promotions, Inc. (“Opposer”), a Tennessee corporation with its principal place of
`
`business located at 2223 Hawk Street, Lancaster, Ohio 43130, believes that it will be damaged
`
`by the registration of the mark ROCKIN’ THE CARIBBEAN (the “Mark”) as shown in Serial
`
`No. 85/894,646 (the “Subject Application”) filed on April 3, 2013 and published for opposition
`
`on August 27, 2013, and hereby opposes registration of the same.
`
`In support of its opposition,
`
`Opposer states as follows:
`
`Opposer’s Common Law Service Mark
`And Trade Name Rights in ROCKIN’ THE CARIBBEAN
`
`1. Opposer is the owner of a common law service mark for ROCKIN’ THE CARIBBEAN.
`
`2. Opposer has continuously used ROCKIN’ THE CARIBBEAN as a service mark in
`
`Florida, Ohio and elsewhere since at least as early as November 7, 2011. An example of
`
`such use is a flyer promoting Opposer‘s services, attached hereto as Exhibit A.
`
`3. The ROCKIN’ THE CARIBBEAN common law service mark is an asset of substantial
`
`value to Opposer as a symbol of Opposer, its quality services, and goodwill.
`
`

`
`As a result of Opposer’s substantial investment in the promotion of Opposer’s services
`
`under its ROCKIN’ THE CARIBBEAN mark, the mark has become associated with
`
`Opposer and its services in the minds of the trade and consumers of cruise arranging
`
`services.
`
`If Applicant is granted the registration of the Subject Application, Applicant would
`
`obtain at least a primafacie exclusive right to use and exclude others from using the mark
`
`ROCKIN’ THE CARIBBEAN for “arranging of cruises.” Such a registration would be a
`
`source of damage and injury to Opposer.
`
`Opposer’s US Trademark Application
`For the Mark ROCKIN’ THE CARIBBEAN
`
`Opposer
`
`is
`
`the owner of U.S. Trademark Application 86/069,894 (“the
`
`‘894
`
`Application”) for the service mark “ROCKIN’ THE CARIBBEAN” used in connection
`
`with “arranging of cruises.”
`
`Opposer has continuously used ROCKIN’ THE CARIBBEAN as a service mark in
`
`interstate commerce since at least as early as November 7, 2011.
`
`The ‘894 Application is an asset of substantial Value to Opposer.
`
`Opposer has made a substantial
`
`investment
`
`in the ‘894 Application to protect
`
`its
`
`ROCKIN’ THE CARIBBEAN mark for “cruise arranging services.”
`
`10.
`
`If Applicant is granted registration of the Mark of the Subject Application,
`
`it would
`
`adversely affect Opposer’s prosecution of the ‘894 Application.
`
`Such a registration
`
`would be a source of damage and injury to Opposer.
`
`

`
`Grounds for Opposition
`
`ll. Opposer objects to registration of the Mark of the Subject Application as Applicant is not
`
`the rightful owner of the Mark with respect to the described goods and services.
`
`12. Opposer objects to registration of the Mark of the Subject Application as Opposer used
`
`the Mark in interstate commerce prior to Applicant’s first use.
`
`WHEREFORE, Opposer requests that its opposition be granted and that registration of
`
`the Mark of the Subject Application be denied.
`
`Respectfully submitted,
`
`/Robert R. Lechl
`Robert R. Lech
`
`Lech Law, LLC
`P.O. Box 3473
`
`Dublin, OH 43016
`
`Telephone: (614) 530-1284
`Fax: (614) 766-5975
`
`

`
`EXHIBIT A
`
`Ship Registry Nassau Bahamas
`
`
`
`-...,,_,W
`
`Sign Up By Calling
`
`Penny: 740-438-0382
`Bonnie: 352-255-2678
`
`Barb:
`
`734-748-4070
`
`Official Ema“:
`rroldiescruise@c0lumbus.rr.c0m “
`Officlal Website:
`Been Rockm‘ The Caribbean Smce 2006
`DecadesOfR0ckAndR0lI.com
`A Production by 4U Promotions Inc
`“Like” Us For A Chance T0
`F b 24 M
`2
`3
`Win A Cruise For 2
`e
`I
`www.facebook.com/
`DecadesOfRockAndRoll
`"
`Great Music From The 505 Through The Present
`
`
`
`5
`
`ROYAL CARIBBEANS’
`INDEPENDENCE OF THE SEAS®
`PORTS OF CALL INCLUDE:
`Depalitzl Ft‘ t‘I1“""d°*"!3'°~-FL
`Georg:t(l)I\las(r)rl1lGra2i1liI1a(lTc21‘:rma11
`Labadee® RCCL Private Island
`’
`
`
`
`HADDEN SAYERS BAND
`
`“Hard Dollar” CD ranks #3 ()n
`Rhythm & Blues Chart
`2012 Song ofthe Year Nominee
`
` I :’?:2‘Ela"§“* "N"“""
`
`PHIL DIRT & THE DOZERS
`work] cfass
`Vintage Rock N Ra”
`
`Dunning Shaw
`[Man OfA Thousand
`Voices
`
`YOUR EXCLUSIVE DECADES OF ROCK & ROLL CRUISE PACKAGE INCLUDES:
`
`“Time To Rock & Roll” Dance Party with Phil Dirt/D0zer.s‘
`Exclusive “Surfs Up” Private Concert with Phil Dirt/Dozers
`“Rock ‘til You Drop” Dance Party with Phil Dirt/Dozers
`“Twistin ’ The Night Away” Sock Hop Dance Party with Phil Dirt/Dozers
`Autograph/Question & Answer Session; Cocktail Party; Private Group Dance Lessons
`Exclusive Concert with Hadtlen Sayers Band (HSB); Texan “Country” Night with HSB
`Deck Pool Panjv with Phil Dirt/Dozers; Photo Opportunities;
`Commemorative T-Shirt; “Rock & Roll Extreme” Beach Party with Dunning Shaw
`Entertainment & Activities can be subject to change without notice.
`Decades of Rock & Roll M’ Oldies Cruise is a servicemark of-4 U Promotions Inc.
`Use is strictly forbidden without prior written authorization
`
`

`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of the foregoing Notice of Opposition has
`
`been served upon the attorney for Applicant on September 20, 2013, by depositing same in the
`
`United States Mail, first class postage prepaid, in an envelope addressed as follows:
`
`Sven W. Hanson
`
`PO. Box 357429
`
`Gainesville, FL 32635-7429
`
`/Robert R. Lech/
`
`Robert R. Lech
`
`Lech Law, LLC
`P.O. Box 3473
`
`Dublin, OH 43016
`
`Telephone: (614) 530-1284
`
`

`
`USPTO. ESTTA. Receipt
`
`
`
`United States Patent and Trademark Office
`
`Home I Site Index I Search I Guides I Contacts I eBusiness I eBiz alerts I News I Help
`
`Electronic System for Trademark Trials and Appeals
`
`Your submission has been received by the USPTO.
`The content of your submission is listed below.
`You may print a copy of this receipt for your records.
`
`Receipt
`
`Page 1 of 3
`
`
`
`ESTTA Tracking number: ESTTA560464
`
`Filing date:
`
`09/20/2013
`
`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
`
`4U Promotions, Inc.
`
`2333 Hawk Street
`
`Lancaster, OH 43130
`UNITED STATES
`
`
`
`
`
`
`
`
`Lecl Law, LLC
`Correspondence P.O. Box 3473
`information
`Dublin, OH 43016
`
`
`UNITED STATES
`rr1ech@lech1aw.com Phone:614-530-1284
`
`
`
`
`Robert R. Lech
`
`Applicant Information
`
`85894646
`
`09/20/2013
`
`P bl’
`
`ti
`
`Opposition
`Period Ends
`
`08/27/2013
`
`09/26/2013
`
`
`
`
`
`
`
`Applicant
`
`
`
`
`
`.
`
`.
`
`Application No
`
`Opposition
`Filing Date
`
`http://estta.uspto.gov/c0m/receipt.j sp?inan1e=FK3 AVCGODJSH-6285
`
`9/20/2013
`
`

`
`Page 2 of 3
`
`
`
`Oxford, FL 34484
`UNITED STATES
`
`
`
`Goods/Services Affected by Opposition
`
`Class 039. First Use: 2012/11/30 First Use In Commerce: 2012/1 1/30
`
`All goods and services in the class are opposed, namely: Arranging of cruises
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`
`
`
`
`
`
`
`
`U.S. Applicationl
`
`
`
`
`
`NONE
`NONE
`
`.
`
`Application Date
`
`.
`
`NONE
`
`Word Mark
`
`ROCKlN' THE CARIBBEAN
`
`V
`
`_
`Goods/Services
`
`Arranging of cruises. (As set forth in US TM Application
`86/069,894)
`
`
`
`
`
`Notice of Opposition (With Exhibit and COS).pdf(226l 191 bytes )
`
`Certificate of Service
`
`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.
`
`
`
`
`
`
`/Robert R. Lechf
`Robert R. Lech
`09/20/2013
`
`Return to ESTTA home page Start another ESTTA filing"
`
`http://estta.uspto.goV/com/receipt.jsp?iname=FK3AVCGODJ5H—6285
`
`9/20/2013
`
`USPTO. ESTTA. Receipt
`
`Gerry Seader
`12081 NE 51 Circle
`
`
`
`
`

`
`USPTO. ESTTA. Receipt
`
`Page 3 of 3
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`|
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`.HOME [ INDEX} SEARCH I 5-BUSINESS 1 CONTACT US 1 PRIVACY STATEMENT
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`http://estta.uspto.gov/com/receiptj sp?iname=FK3AVCGODJSH-6285
`
`9/20/201 3
`
`

`
`THE JOHN MARSHALL
`REVIEW OF INTELLECTUAL PROPERTY LAW
`
`
`
`ETHICAL ISSUES IN U.S. TRADEMARK PROSECUTION AND TTAB PRACTICE
`
`LINDA K. MCLEOD & STEPHANIE H. BALD
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
`
`ABSTRACT
`
`The conduct of practitioners and agents before the U.S. Patent and Trademark Office (“USPTO” or
`“Office”) is subject to regulation by the Office under 35 U.S.C. § 2(b)(2)(D). This provision grants the
`Under Secretary of Commerce for Intellectual Property and the Director of the USPTO the authority
`to establish regulations to govern the conduct of agents, attorneys, or other representatives before
`the Office, including establishing disciplinary measures for non-compliance with those regulations.
`The USPTO regulations governing conduct include the Patent and Trademark Office Code of
`Professional Responsibility. This article summarizes the key canons and disciplinary rules
`applicable to trademark practitioners and authorized representatives; outlines common ethical
`issues for practitioners and other authorized representatives that arise in ex parte and inter partes
`trademark proceedings before the USPTO. This article also discusses the case law that has
`developed relating to these issues. Although the practice of law is generally regulated by State
`ethics rules and regulations, trademark practitioners and authorized representatives should be
`equally familiar with the separate set of USPTO regulations governing their conduct before the
`Office. Additionally, although the USPTO canons and disciplinary rules are based on the Model
`Code of Professional Responsibility of the American Bar Association (like some State ethics codes),
`there are a number of ethical issues unique to the conduct of trademark practitioners and agents
`before the Office. Failure to adhere to these unique rules and regulations can result in disciplinary
`action by the USPTO that compounds or even exceeds any disciplinary action by the State.
`
`Copyright © 2011 The John Marshall Law School
`
`Cite as Linda K. McLeod & Stephanie H. Bald, Ethical Issues in U.S. Trademark
`Prosecution and TTAB Practice, 10 J. MARSHALL REV. INTELL. PROP. L. 365 (2011).
`
`
`
`

`
`
`
`ETHICAL ISSUES IN U.S. TRADEMARK PROSECUTION AND TTAB PRACTICE
`ETHICAL ISSUES IN U.S. TRADEMARK PROSECUTION AND TTAB PRACTICE
`
`LINDA K. MCLEOD & STEPHANIE H. BALD
`LINDA K. MCLEOD & STEPHANIE H. BALD
`
`I. INTRODUCTION ........................................................................................................... .. 366
`I. INTRODUCTION ............................................................................................................. 366"
`II. DISCUSSION .............................................................................................................. .. 366
`II. DISCUSSION ................................................................................................................ 366"
`A. Patent and Trademark Office Code of Professional Responsibility ............... 366"
`A. Patent and Trademark Office Code of Professional Responsibility ............. .. 366
`1. Cannons and Disciplinary Rules ............................................................... 366"
`1. Cannons and Disciplinary Rules ............................................................. .. 366
`2. Office of Enrollment and Discipline Proceedings .................................... 367"
`2. Office of Enrollment and Discipline Proceedings .................................. .. 367
`B. Who May Practice Before the USPTO in Trademark Proceedings ................ 368"
`B. Who May Practice Before the USPTO in Trademark Proceedings .............. .. 368
`1. Misconduct, Neglect, and Improper Ex parte Communications ............. 368"
`1. Misconduct, Neglect, and Improper Ex parte Communications ........... .. 368
`a. Misconduct Under 37 C.F.R. § 10.23 ................................................ 369"
`a. Misconduct Under 37 C.F.R. § 10.23 .............................................. .. 369
`b. Incompetence and Neglect Under 37 C.F.R. §§ 10.76–.77 ............... 371"
`b. Incompetence and Neglect Under 37 C.F.R. §§ 10.76—.77 ............. .. 371
`c. Contact with Officials Under 37 C.F.R. § 10.93 ............................... 372"
`c. Contact with Officials Under 37 C.F.R. § 10.93 ............................. .. 372
`C. Duty of Candor and Disclosure ........................................................................ 373"
`C. Duty of Candor and Disclosure ...................................................................... .. 373
`1. Fraud Before the Trademark Office Post Bose ...................................... .. 374
`1. Fraud Before the Trademark Office Post Bose ........................................ 374"
`a. Elements of Fraud ............................................................................ .. 374
`a. Elements of Fraud .............................................................................. 374"
`b. Types of Fraud .................................................................................... 375"
`b. Types of Fraud .................................................................................. .. 375
`2. Allocating the Duty of Candor: Practitioner and Client ......................... 377"
`2. Allocating the Duty of Candor: Practitioner and Client ....................... .. 377
`3. Withdrawal from Representation ............................................................. 378"
`3. Withdrawal from Representation ........................................................... .. 378
`D. Signatures, Certifications, and Duty to Make Reasonable Inquiry .............. 378"
`D. Signatures, Certifications, and Duty to Make Reasonable Inquiry ............ .. 378
`E. Conflicts and Potential Witness Disqualification ........................................... 380"
`E. Conflicts and Potential Witness Disqualification ......................................... .. 380
`1. Disqualification of Practitioner as Witness .............................................. 381"
`1. Disqualification of Practitioner as Witness ............................................ .. 381
`2. Disqualification for Conflict of Interest .................................................... 382"
`2. Disqualification for Conflict of Interest .................................................. .. 382
`III. CONCLUSION ........................................................................................................... .. 383
`III. CONCLUSION ........................................................