Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA598634
`ESTTA Tracking number:
`04/15/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91215312
`Defendant
`Jonathan F. Winocour, PC
`JONATHAN WINOCOUR
`9400 N CENTRAL EXPY STE 1204
`DALLAS, TX 75231-5043
`
`jwinocour@winocourlaw.com
`Answer
`Jonathan Winocour
`jwinocour@winocourlaw.com
`/Jonathan Winocour/
`04/15/2014
`Answer in Opposition no. 91215312.pdf(297659 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`ESTTA598634
`ESTTA Tracking number:
`04/15/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91215312
`Defendant
`Jonathan F. Winocour, PC
`JONATHAN WINOCOUR
`9400 N CENTRAL EXPY STE 1204
`DALLAS, TX 75231-5043
`
`jwinocour@winocourlaw.com
`Answer
`Jonathan Winocour
`jwinocour@winocourlaw.com
`/Jonathan Winocour/
`04/15/2014
`Answer in Opposition no. 91215312.pdf(297659 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`In the Matter of Application Serial No. 85/849556
`Published in the Official Gazette on February 11, 2014
`
`
`
`Opposition No. 91215312
`
`
`
`Clock Tower Law Group, LLC,
`
`Opposer
`
`v.
`
`Jonathan F Winocour, PC,
`
`Applicant.
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`__________________________________/
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`
`
`ANSWER
`
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`Applicant, Jonathan F. Winocour, PC for its answer to the Notice of Opposition filed by Clock
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`Tower Law Group, LLC against application for registration of Applicant’s mark LAW FOR
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`HUMANS, Serial No. 85849556 filed February 14, 2013, and published in the Official Gazette of
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`February 11, 2013, pleads and avers as follows:
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`
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`1.
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`Answering paragraph 1 of the Notice of Opposition, Applicant does not have sufficient
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`knowledge or information to form a belief as to the allegations contained in part therein and
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`accordingly denies those allegations insofar as Opposer alleges its status as “owner of the application
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`serial number 86/189,695” for the mark “LAWYERS FOR HUMAN BEINGS” should be construed
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`as “prima facie proof of … use of [this] mark from the original date of filing of the application” and
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`alleges as an affirmative defense Opposer can show no use of this mark occurring independently of
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`Opposer’s use of its registered mark “LAWYERS FOR HUMAN BEINGS PATENT TROLLS,
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`
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`1
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`
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`TRADEMARK BULLIES, AND CYBERSQUATTERS NEED NOT APPLY” before Applicant’s
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`first use of its mark “LAW FOR HUMANS.”
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`2.
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`Accordingly, so as to avoid waiver and promote singular resolution of this dispute, Applicant
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`hereby seeks partial cancellation or other appropriate equitable relief of Opposer’s pending
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`application for registration of the mark “LAWYERS FOR HUMAN BEINGS,” (application serial
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`number 86/189,695), in so far as this constitutes “a plaintiff’s pleaded registration” pursuant to 37
`
`C.F.R. 2.133(d), and Applicant would show Opposer’s use of said mark in commerce without the
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`additional verbiage “PATENT TROLLS, TRADEMARK BULLIES, AND CYBERSQUATTERS
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`NEED NOT APPLY” (hereafter, ‘the additional verbiage’) had not occurred (if it has in fact ever
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`occurred at all without the additional verbiage) until a date no earlier than the date Applicant’s mark
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`was published for opposition, and certainly not before Applicant began its use and sought registration
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`of its mark “LAW FOR HUMANS.”
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`3.
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`Answering paragraph 2 of the Notice of Opposition, Applicant does not have sufficient
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`knowledge or information to form a belief as to the allegations contained therein and accordingly
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`denies the allegations.
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`4.
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`Answering paragraph 3 of the Notice of Opposition, Applicant does not have sufficient
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`knowledge or information to form a belief as to the allegations contained therein and accordingly
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`denies the allegations.
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`5.
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`Answering paragraph 4 of the Notice of Opposition, Applicant does not have sufficient
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`knowledge or information to form a belief as to the allegations contained therein and accordingly
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`denies the allegations.
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`6.
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`Answering paragraph 5 of the Notice of Opposition, Applicant does not have sufficient
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`knowledge or information to form a belief as to the allegations contained therein and accordingly
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`denies the allegations.
`
`
`
`2
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`
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`7.
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`Answering paragraph 6 of the Notice of Opposition, Applicant admits the allegations thereof
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`insofar as they relate to Opposer’s registered mark. Applicant denies that the date of first use of
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`Opposer’s application “LAWYERS FOR HUMAN BEINGS” without the additional verbiage
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`preceded Applicant’s use of its mark “LAW FOR HUMANS.”
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`8.
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`Answering paragraph 7 of the Notice of Opposition, Applicant admits the allegation insofar
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`as if what is meant by “the pending application” is Opposer’s pending application for the mark
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`“LAWYERS FOR HUMAN BEINGS” then Applicant has never used this mark. Applicant has used
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`the mark “LAW FOR HUMANS” since February 14, 2013, but has nowhere represented the mark is
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`a registered trademark, and will not do so unless and until it is in fact registered.
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`9.
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`Answering paragraph 8 of the Notice of Opposition, Applicant denies each and every
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`allegation contained therein.
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`10. Answering paragraph 9 of the Notice of Opposition, Applicant denies each and every
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`allegation contained therein.
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`11. Answering paragraph 10 of the Notice of Opposition, Applicant denies each and every
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`allegation contained therein, including those alleged in subparagraphs (a) and (b).
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`12. Applicant further affirmatively alleges that as a result of its continuous substantial usage of
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`its mark LAW FOR HUMANS since adoption, this mark is a valuable asset of Applicant and carries
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`goodwill and consumer acceptance of its services marketed under the mark. Such goodwill and
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`widespread usage has made the mark distinctive to the Applicant.
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`13. Applicant further affirmatively alleges there is no likelihood of confusion, mistake, or
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`deception because, inter alia, Applicant’s mark and the pleaded marks of Opposer are not
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`confusingly similar.
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`14. Applicant further affirmatively alleges that there is no likelihood of confusion, mistake or
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`deception because, inter alia, Opposer’s registered and pleaded mark “LAWYERS FOR HUMAN
`
`
`
`3
`
`
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`BEINGS PATENT TROLLS, TRADEMARK BULLIES, AND CYBERSQUATTERS NEED NOT
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`APPLY” and Applicant’s mark “LAW FOR HUMANS” are not confusingly similar. Indeed,
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`Opposer’s decision to seek registration of the new mark, “LAWYERS FOR HUMAN BEINGS”
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`stripped of the additional verbiage belies Opposer’s own recognition that Applicant’s mark is not
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`likely to cause confusion or mistake with Opposer’s registered mark, nor is Applicant’s mark in any
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`way deceptive in relation to Opposer’s registered mark.
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`15. Applicant further affirmatively alleges Applicant’s and Opposer’s services marketed and
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`provided in connection with their respective marks, defined in international class 45, are each
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`narrowly circumscribed and sufficiently distinct so as not to cause confusion, mistake, or deception
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`between them. Applicant’s mark applies to Applicant’s marketing of legal services in clearly
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`identified and circumscribed legal practice areas (criminal defense, civil rights, personal injury, and
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`employment) to a clearly identified and circumscribed target market (people and families of modest
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`incomes). Opposer’s mark applies to Opposer’s marketing of legal services in the clearly identified
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`and circumscribed legal practice area of intellectual property. These practice areas are distinct. They
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`are not, nor are they likely to be, overlapping areas of practice. Moreover, the target demographics
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`are also distinct; Opposer markets to entrepreneurs and corporations, Applicant markets to people
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`(humans, as opposed to juristic “persons”) and their families. Accordingly, Applicant is entitled to
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`registration with the particular restriction heretofore described.
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`
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`WHEREFORE, Applicant respectfully requests Opposer’s opposition be overruled in all respects,
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`and that the Board find Applicant entitled to registration.
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`4
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`Dated: April 15, 2014
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`
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`Respectfully submitted,
`
`___________________________
`Jonathan F. Winocour
`Attorney for Applicant
`9400 N. Central Expressway, Ste. 1204
`Dallas, Texas 75231
`Tel: 214 575 6060
`Fax: 214 575 6220
`E: jwinocour@winocourlaw.com
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that the foregoing document is being filed electronically with the U.S. Patent and
`Trademark Office on April 15, 2013, and that it is being served on Attorney for the Opposer via First
`Class Mail, postage prepaid, to William E. O’Brien, Esq. at 2 Connector Road, Suite 200,
`Westborough, MA 01581 on the same date.
`
`_________________
`Jonathan F. Winocour
`
`5
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