Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA729228
`02/24/2016
`
`ESTTA Tracking number:
`
`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
`
`Westguard Insurance Company
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`02/24/2016
`
`16 South River Street
`Wilkes-Barre, PA 18702
`UNITED STATES
`
`Jeffrey H. Kaufman
`Muncy, Geissler, Olds & Lowe, P.C.
`4000 Legato Road, Suite 310
`Fairfax, VA 22033
`UNITED STATES
`mailroom@mg-ip.com,jhk@mg-ip.com Phone:703-649-3800
`
`Applicant Information
`
`Application No
`
`86656400
`
`Publication date
`
`10/27/2015
`
`Opposition Filing
`Date
`
`Applicant
`
`02/24/2016
`
`Opposition Peri-
`od Ends
`
`02/24/2016
`
`David S. KATZ
`Westborough Executive Park
`Westborough, MA 015812859
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 045. First Use: 2013/00/00 First Use In Commerce: 2013/00/00
`All goods and services in the class are opposed, namely: Litigation services; legal consultationser-
`vices; legal services; and legal consulting services in the field of business and commercial litigation,
`personal injury litigation and employment defense
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`2250453
`
`Registration Date
`
`06/01/1999
`
`Application Date
`
`09/15/1997
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`YOUR BUSINESS IS OUR BUSINESS
`
`

`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 036. First use: First Use: 1992/01/31 First Use In Commerce: 1997/10/10
`underwriting of workers' compensation insurance
`
`Attachments
`
`Notice of Opposition.pdf(330506 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.
`
`Signature
`
`/Jeffrey H. Kaufman/
`
`Name
`
`Date
`
`Jeffrey H. Kaufman
`
`02/24/2016
`
`

`
`Attorney Docket No.: WGRD.US.00030.L
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
` Opposition No. ______________
` Appln. Serial No. 86/656,400
`
`
`
`
`
`
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`)
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`WESTGUARD INSURANCE COMPANY,
`
`
`Opposer,
`
`
` v.
`
`DAVID S. KATZ,
`
`
`Applicant.
`
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`WESTGUARD INSURANCE COMPANY, a corporation duly organized and existing
`
`under the laws of Pennsylvania, with an office at 16 South River Street, Wilkes-Barre,
`
`Pennsylvania 18702 (hereinafter "Opposer"), believing that it will be damaged by registration,
`
`hereby opposes Application Serial No. 86/656,400, filed June 9, 2015, under the Trademark Act
`
`of 1946, in the name of David S. Katz, published for opposition in the Official Gazette of
`
`October 27, 2015, for the mark WE MAKE YOUR BUSINESS OUR BUSINESS.
`
`The grounds of Opposition are as follows:
`
`1.
`
`Opposer, WESTGUARD INSURANCE COMPANY, a corporation duly
`
`organized and existing under the laws of Pennsylvania, having its principal place of business at
`
`16 South River Street, Wilkes-Barre, Pennsylvania 18702.
`
`2.
`
`Prior to Applicant’s claimed date of first use, Opposer has used, and is now using
`
`Opposer's mark YOUR BUSINESS IS OUR BUSINESS (hereinafter sometimes referred to as
`
`

`
`“Opposer's Mark”), in connection with insurance underwriting services marketed and offered by
`
`Opposer in commerce.
`
`3.
`
`Opposer is the owner of, and will rely herein, upon the following federal
`
`ISSUE DATE
`
`June 1, 1999
`
`registration, pursuant to Trademark Rule 2.122(d)(1):
`
`
`
`MARK
`
`REG. NO.
`
`YOUR BUSINESS IS
`OUR BUSINESS
`
`2,250,453
`
`SERVICES
`
`underwriting of workers'
`compensation insurance
`
`
`
`Printed information from the TARR and Assignment electronic databases of the USPTO
`
`showing the current status and title of this Registration are attached. Said registration is valid and
`
`subsisting and is prima facie evidence of Opposer's exclusive right to use Opposer's Mark in
`
`commerce in connection with the services specified in the registration. Registration No.
`
`2,250,453 has achieved incontestable status.
`
`4.
`
`As a result of Opposer's use of Opposer's Mark in connection with Opposer's
`
`services, Opposer's Mark has become associated with Opposer, and Opposer has established
`
`goodwill in connection with the sales of services under its mark.
`
`5.
`
`Upon information and belief, on June 9, 2015, Applicant filed an application for
`
`registration of the alleged WE MAKE YOUR BUSINESS OUR BUSINESS trademark for
`
`“Litigation services; legal consultation services; legal services; and legal consulting services in
`
`the field of business and commercial litigation, personal injury litigation and employment
`
`defense.” Said application was assigned Serial No. 86/656,400, and was published for
`
`Opposition in the Official Gazette of October 27, 2015.
`
`6.
`
`Applicant’s WE MAKE YOUR BUSINESS OUR BUSINESS mark is a
`
`simulation and colorable imitation of, and so resembles Opposer’s Mark as to be likely, when
`
`applied to the proposed services of Applicant, to cause confusion or mistake or to deceive the
`
`
`
`- 2 -
`
`

`
`relevant consuming public resulting in damage and detriment to Opposer and its reputation, in
`
`violation of Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d).
`
`7.
`
`Upon information and belief, Opposer and Applicant are both engaged in the sale
`
`and promotion of their respective services through the same channels of trade and to the same
`
`general class of consumers.
`
`8.
`
`Opposer, upon information and belief, avers that members of the relevant
`
`consuming public are likely to be confused, mistaken, or deceived as to the origin and
`
`sponsorship of Applicant’s services marketed under Applicant’s alleged WE MAKE YOUR
`
`BUSINESS OUR BUSINESS mark and misled into believing that such services are offered by,
`
`rendered by, emanate from, or are in some way associated with Opposer, to the damage and
`
`detriment of Opposer and its reputation.
`
`9.
`
`Opposer, upon information and belief, avers that it will be damaged by the
`
`continued use and registration by Applicant of the alleged WE MAKE YOUR BUSINESS OUR
`
`BUSINESS mark, as set forth in Applicant’s Trademark Application Serial No. 86/656,400, in
`
`that the mark is confusingly similar to Opposer's Mark and is used in connection with services
`
`related to the services offered by Opposer.
`
`WHEREFORE, Opposer, WESTGUARD INSURANCE COMPANY, believes and avers
`
`that it is being and will continue to be damaged by registration of the WE MAKE YOUR
`
`BUSINESS OUR BUSINESS mark as aforesaid, and requests that said Application Serial No.
`
`86/656,400 be rejected, that no registration be issued thereon to Applicant, and that this
`
`Opposition be sustained in favor of Opposer.
`
`Opposer has appointed JEFFREY H. KAUFMAN, a member of the law firm of
`
`MUNCY, GEISSLER, OLDS & LOWE, P.C., a member of the Bar of the Commonwealth of
`
`Virginia, to prosecute this opposition proceeding and to transact all business in and before the
`
`United States Patent and Trademark Office in connection herewith. Please address all
`
`correspondence to:
`
`
`
`- 3 -
`
`

`
`Jeffrey H. Kaufman
`MUNCY, GEISSLER, OLDS & LOWE, P.C.
`4000 Legato Road, Suite 310
`Fairfax, Virginia 22033
`
`The required filing fee for this Opposition was paid online. The Commissioner is hereby
`
`authorized to charge any additional fees which may be required, or credit any overpayment, to
`
`Deposit Account No. 50-3828.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`By:
`
`
`
`
`
`Dated: February 24, 2016
`
`
`
`
`
`JHK/klk
`
`Respectfully submitted,
`
`WESTGUARD INSURANCE COMPANY
`
`
`
`Jeffrey H. Kaufman
`MUNCY, GEISSLER,
` OLDS & LOWE, P.C.
`4000 Legato Road, Suite 310
`Fairfax, Virginia 22033
`(703) 649-3800
`fax (703) 991-9188
`e-mail: JHK@mg-ip.com
`Counsel for Opposer
`
`
`
`
`
`
`- 4 -
`
`

`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true copy of the foregoing NOTICE OF OPPOSITION was
`
`served on counsel for Applicant as identified by the records of the U.S. Patent and Trademark
`
`Office this 24th day of February, 2016, by sending same, via First Class mail, postage prepaid, to:
`
`Neal E. Friedman, Esquire
`Davis & Bujold PLLC
`112 Pleasant Street
`Concord, NH 03301-2931
`
`
`
`_________________________________
`
`
`
`
`
`- 5 -
`
`

`
`Generated on:
`
`This page was generated by TSDR on 2016-02-23 15:41:02 EST
`
`Mark: YOUR BUSINESS IS OUR BUSINESS
`
`US Serial Number: 75357483
`
`Application Filing Date:
`
`Sep. 15, 1997
`
`US Registration Number: 2250453
`
`Registration Date:
`
`Jun. 01, 1999
`
`Principal
`
`Service Mark
`
`Register:
`
`Mark Type:
`
`Status:
`
`The registration has been renewed.
`
`Status Date:
`
`Mar. 06, 2009
`
`Publication Date: Sep. 29, 1998
`
`Notice of Allowance Date:
`
`Dec. 22, 1998
`
`
`
`Mark Literal Elements:
`
`YOUR BUSINESS IS OUR BUSINESS
`
`Standard Character Claim:
`
`No
`
`Mark Drawing Type:
`
`1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
`
`Mark Information
`
`Goods and Services
`
`Note: The following symbols indicate that the registrant/owner has amended the goods/services:
`
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For:
`
`underwriting of workers' compensation insurance
`
`International Class(es): 036 - Primary Class
`
`U.S Class(es):
`
`100, 101, 102
`
`ACTIVE
`
`1(a)
`
`Oct. 10, 1997
`
`Class Status:
`
`Basis:
`
`First Use: Jan. 31, 1992
`
`Use in Commerce:
`
`Basis Information (Case Level)
`
`Filed Use: No
`
`Filed ITU: Yes
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Amended Use: No
`
`Amended ITU: No
`
`

`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Currently 44D: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Filed No Basis: No
`
`Currently No Basis: No
`
`Amended 44D: No
`
`Amended 44E: No
`
`Current Owner(s) Information
`
`Owner Name:
`
`WESTGUARD INSURANCE COMPANY
`
`Owner Address:
`
`16 SOUTH RIVER STREET
`WILKES-BARRE, PENNSYLVANIA 18702
`UNITED STATES
`
`Legal Entity Type: CORPORATION
`
`PENNSYLVANIA
`
`State or Country Where
`Organized:
`
`Attorney/Correspondence Information
`
`Attorney Name: JEFFREY H. KAUFMAN
`
`Attorney of Record
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`JEFFREY H KAUFMAN
`Oblon, McClelland, Maier & Neustadt, L.L.P.
`1940 Duke Street
`Alexandria, VIRGINIA 22314
`UNITED STATES
`
`Phone: 703-413-3000
`
`Fax:
`
`703-413-2220
`
`Correspondent e-mail: tmdocket@oblon.com
`
`Yes
`
`Correspondent e-mail
`Authorized:
`
`Domestic Representative - Not Found
`
`Prosecution History
`
`Date
`
`Description
`
`Jan. 28, 2015
`
`AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP
`
`Jan. 23, 2015
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`
`Mar. 06, 2009
`
`REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS)
`
`Mar. 06, 2009
`
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`
`Mar. 04, 2009
`
`ASSIGNED TO PARALEGAL
`
`Feb. 19, 2009
`
`REGISTERED - COMBINED SECTION 8 (10-YR) & SEC. 9 FILED
`
`Feb. 19, 2009
`
`PAPER RECEIVED
`
`Aug. 08, 2007
`
`ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY
`
`Jul. 12, 2007
`
`CASE FILE IN TICRS
`
`May 02, 2005
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`
`Apr. 20, 2005
`
`REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
`
`Jul. 15, 2004
`
`REGISTERED - SEC. 8 (6-YR) & SEC. 15 FILED
`
`Jul. 30, 2004
`
`PAPER RECEIVED
`
`Nov. 29, 2002
`
`PAPER RECEIVED
`
`Jun. 01, 1999
`
`REGISTERED-PRINCIPAL REGISTER
`
`Mar. 17, 1999
`
`ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED
`
`Feb. 23, 1999
`
`STATEMENT OF USE PROCESSING COMPLETE
`
`Jan. 27, 1999
`
`USE AMENDMENT FILED
`
`Dec. 22, 1998
`
`NOA MAILED - SOU REQUIRED FROM APPLICANT
`
`Sep. 29, 1998
`
`PUBLISHED FOR OPPOSITION
`
`Aug. 28, 1998
`
`NOTICE OF PUBLICATION
`
`Jun. 18, 1998
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`Jun. 11, 1998
`
`ASSIGNED TO EXAMINER
`
`Proceeding
`Number
`
`68335
`
`68335
`
`72152
`
`

`
`Maintenance Filings or Post Registration Information
`
`Affidavit of Continued
`Use:
`
`Section 8 - Accepted
`
`Affidavit of
`Incontestability:
`
`Section 15 - Accepted
`
`Renewal Date:
`
`Jun. 01, 2009
`
`TM Staff and Location Information
`
`TM Staff Information - None
`
`File Location
`
`Current Location: POST REGISTRATION
`
`Date in Location:
`
`Mar. 06, 2009
`
`Summary
`
`Total Assignments: 4
`
`GUARD INSURANCE GROUP, INC.
`
`Conveyance:
`
`CHANGE OF NAME
`
`Assignment Abstract Of Title Information
`
`Registrant:
`
`Assignment 1 of 4
`
`
`
`Reel/Frame: 2395/0481
`
`Pages:
`
`3
`
`Date Recorded: Nov. 08, 2001
`
`Supporting Documents:
`
`assignment-tm-2395-0481.pdf
`
`Name: GUARD INSURANCE GROUP, INC.
`
`Execution Date:
`
`Assignor
`
`May 12, 2000
`
`Legal Entity Type: CORPORATION
`
`No Place Where Organized Found
`
`Name:
`
`GUARD FINANCIAL GROUP, INC.
`
`Legal Entity Type: CORPORATION
`
`No Place Where Organized Found
`
`Address:
`
`16 SOUTH RIVER STREET
`WILKES-BARRE, PENNSYLVANIA 18703
`
`Correspondent Name:
`
`OBLON SPIVAK MCCLELLAND MAIER & NEUSTADT
`
`Correspondent Address:
`
`JEFFREY H. KAUFMAN
`1755 JEFFERSON DAVIS HIGHWAY, 4TH FLOOR
`ARLINGTON, VA 22202
`
`Conveyance:
`
`MERGER EFFECTIVE 05132007
`
`State or Country Where
`Organized:
`
`Assignee
`
`State or Country Where
`Organized:
`
`Correspondent
`
`Domestic Representative - Not Found
`
`Assignment 2 of 4
`
`Reel/Frame: 3590/0973
`
`Pages:
`
`7
`
`

`
`Date Recorded: Jul. 27, 2007
`
`Supporting Documents:
`
`assignment-tm-3590-0973.pdf
`
`Name: CLAL ACQUISITION CORPORATION
`
`Execution Date:
`
`Assignor
`
`May 30, 2007
`
`Legal Entity Type: CORPORATION
`
`State or Country Where
`Organized:
`
`DELAWARE
`
`May 30, 2007
`
`Name: GUARD FINANCIAL GROUP, INC.
`
`Execution Date:
`
`Legal Entity Type: CORPORATION
`
`State or Country Where
`Organized:
`
`DELAWARE
`
`Name:
`
`GUARD FINANCIAL GROUP, INC.
`
`Legal Entity Type: CORPORATION
`
`DELAWARE
`
`Address:
`
`16 SOUTH RIVER STREET
`WILKES-BARRE, DELAWARE 18703
`
`Correspondent Name:
`
`JEFFREY H. KAUFMAN
`
`Correspondent Address:
`
`1940 DUKE STREET
`ALEXANDRIA, VA 22314
`
`Conveyance:
`
`CHANGE OF NAME
`
`Assignee
`
`State or Country Where
`Organized:
`
`Correspondent
`
`Domestic Representative - Not Found
`
`Assignment 3 of 4
`
`Reel/Frame: 3592/0361
`
`Pages:
`
`3
`
`Date Recorded: Jul. 30, 2007
`
`Supporting Documents:
`
`assignment-tm-3592-0361.pdf
`
`Name: GUARD FINANCIAL GROUP, INC.
`
`Execution Date:
`
`Assignor
`
`May 30, 2007
`
`Legal Entity Type: CORPORATION
`
`DELAWARE
`
`Name:
`
`GUARD INSURANCE GROUP, INC.
`
`Legal Entity Type: CORPORATION
`
`DELAWARE
`
`Address:
`
`16 SOUTH RIVER STREET
`WILKES-BARRE, PENNSYLVANIA 18703
`
`Correspondent Name:
`
`JEFFREY H. KAUFMAN
`
`Correspondent Address:
`
`State or Country Where
`Organized:
`
`Assignee
`
`State or Country Where
`Organized:
`
`Correspondent
`
`

`
`1940 DUKE STREET
`ALEXANDRIA, VA 22314
`
`Conveyance:
`
`MERGER EFFECTIVE 12/31/2014
`
`Domestic Representative - Not Found
`
`Assignment 4 of 4
`
`Reel/Frame: 5446/0012
`
`Pages:
`
`6
`
`Date Recorded: Jan. 23, 2015
`
`Supporting Documents:
`
`assignment-tm-5446-0012.pdf
`
`Name: GUARD INSURANCE GROUP, INC.
`
`Execution Date:
`
`Assignor
`
`Dec. 31, 2014
`
`Legal Entity Type: CORPORATION
`
`DELAWARE
`
`Name:
`
`WESTGUARD INSURANCE COMPANY
`
`Legal Entity Type: CORPORATION
`
`PENNSYLVANIA
`
`Address:
`
`16 SOUTH RIVER STREET
`WILKES-BARRE, PENNSYLVANIA 18702
`
`Correspondent Name:
`
`JEFFREY H. KAUFMAN
`
`Correspondent Address:
`
`1940 DUKE STREET
`ALEXANDRIA, VA 22314
`
`Summary
`
`Number of Proceedings:
`
`4
`
`State or Country Where
`Organized:
`
`Assignee
`
`State or Country Where
`Organized:
`
`Correspondent
`
`Domestic Representative - Not Found
`
`Proceedings
`
`Type of Proceeding: Opposition
`
`
`
`Proceeding Number: 91205975
`
`Jul 09, 2012
`
`Mar 26, 2014
`
`Status: Terminated
`
`Interlocutory Attorney: CHERYL S GOODMAN
`
`Filing Date:
`
`Status Date:
`
`Defendant
`
`Name:
`
`Paychex of New York, LLC
`
`Correspondent Address:
`
`KRISTEN M WALSH
`NIXON PEABODY LLP
`1300 CLINTON SQ
`ROCHESTER NY , 14604-1707
`UNITED STATES
`
`Correspondent e-mail:
`
`kwalsh@nixonpeabody.com , nytm@nixonpeabody.com
`
`Associated marks
`
`Mark
`
`Application Status
`
`Serial Number
`
`Registration
`Number
`
`AMERICA'S BUSINESS IS OUR BUSINESS
`
`Registered
`
`85310428
`
`4822296
`
`

`
`Plaintiff(s)
`
`Name:
`
`Guard Insurance Group, Inc.
`
`Correspondent Address:
`
`JEFFREY H KAUFFMAN
`OBLON SPIVAK ET AL
`1940 DUKE STREET
`ALEXANDRIA VA , 22314
`UNITED STATES
`
`Correspondent e-mail:
`
`jkaufman@oblon.com,tmdocket@oblon.com
`
`Associated marks
`
`Mark
`
`Application Status
`
`Serial Number
`
`Registration
`Number
`
`YOUR BUSINESS IS OUR BUSINESS
`
`Renewed
`
`75357483
`
`2250453
`
`Prosecution History
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`Entry Number
`
`History Text
`
`FILED AND FEE
`
`NOTICE AND TRIAL DATES SENT; ANSWER DUE:
`
`PENDING, INSTITUTED
`
`D MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS
`
`SUSPENDED
`
`D MOT FOR EXT W/ CONSENT
`
`EXTENSION OF TIME GRANTED
`
`D MOT FOR EXT W/ CONSENT
`
`EXTENSION OF TIME GRANTED
`
`D MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS
`
`SUSPENDED
`
`Due Date
`
`Aug 18, 2012
`
`Date
`
`Jul 09, 2012
`
`Jul 09, 2012
`
`Jul 09, 2012
`
`Aug 09, 2012
`
`Aug 09, 2012
`
`Nov 13, 2012
`
`Nov 13, 2012
`
`Dec 13, 2012
`
`Dec 13, 2012
`
`Feb 12, 2013
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`D MOT FOR EXT W/ CONSENT
`
`EXTENSION OF TIME GRANTED
`
`D MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS
`
`SUSPENDED
`
`ANSWER
`
`MOT TO AMEND APPLICATION
`
`BD DECISION: DISMISSED W/O PREJ
`
`TERMINATED
`
`Feb 12, 2013
`
`Apr 15, 2013
`
`Apr 15, 2013
`
`Jul 10, 2013
`
`Jul 20, 2013
`
`Jan 10, 2014
`
`Mar 12, 2014
`
`Mar 26, 2014
`
`Mar 26, 2014
`
`Proceeding Number: 91205981
`
`Jul 09, 2012
`
`Apr 08, 2014
`
`Status: Terminated
`
`Interlocutory Attorney: ANDREW P BAXLEY
`
`Type of Proceeding: Opposition
`
`Filing Date:
`
`Status Date:
`
`Defendant
`
`Name:
`
`Paychex of New York, LLC
`
`Correspondent Address:
`
`KRISTEN M WALSH
`NIXON PEABODY LLP
`1300 CLINTON SQUARE
`ROCHESTER NY , 14604-1792
`UNITED STATES
`
`Correspondent e-mail:
`
`kwalsh@nixonpeabody.com , nytm@nixonpeabody.com
`
`Associated marks
`
`Mark
`
`Application Status
`
`Serial Number
`
`Registration
`Number
`
`AMERICA'S BUSINESS IS OUR BUSINESS
`
`Registered
`
`85310412
`
`4822295
`
`Plaintiff(s)
`
`Name:
`
`Guard Insurance Group, Inc.
`
`

`
`Correspondent Address:
`
`JEFFREY H KAUFMAN
`OBLON SPIVAK MCCLELLAND ET AL
`1940 DUKE STREET
`ALEXANDRA VA , 22314
`UNITED STATES
`
`Correspondent e-mail:
`
`jkaufman@oblon.com , tmdocket@oblon.com
`
`Associated marks
`
`Mark
`
`Application Status
`
`Serial Number
`
`Registration
`Number
`
`YOUR BUSINESS IS OUR BUSINESS
`
`Renewed
`
`75357483
`
`2250453
`
`Prosecution History
`
`Entry Number
`
`History Text
`
`FILED AND FEE
`
`NOTICE AND TRIAL DATES SENT; ANSWER DUE:
`
`PENDING, INSTITUTED
`
`D MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS
`
`SUSPENDED
`
`D MOT FOR EXT W/ CONSENT
`
`EXTENSION OF TIME GRANTED
`
`D MOT FOR EXT W/ CONSENT
`
`EXTENSION OF TIME GRANTED
`
`D MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS
`
`SUSPENDED
`
`D MOT FOR EXT W/ CONSENT
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`Due Date
`
`Aug 18, 2012
`
`Date
`
`Jul 09, 2012
`
`Jul 09, 2012
`
`Jul 09, 2012
`
`Aug 09, 2012
`
`Aug 09, 2012
`
`Nov 13, 2012
`
`Nov 13, 2012
`
`Dec 13, 2012
`
`Dec 13, 2012
`
`Feb 12, 2013
`
`Feb 12, 2013
`
`Apr 15, 2013
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`EXTENSION OF TIME GRANTED
`
`D MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS
`
`SUSPENDED
`
`ANSWER
`
`D MOT FOR EXT W/ CONSENT
`
`EXTENSION OF TIME GRANTED
`
`W/DRAW OF OPPOSITION
`
`BD DECISION: DISMISSED W/O PREJ
`
`TERMINATED
`
`Apr 15, 2013
`
`Jul 10, 2013
`
`Jul 30, 2013
`
`Jan 10, 2014
`
`Mar 13, 2014
`
`Mar 13, 2014
`
`Apr 03, 2014
`
`Apr 08, 2014
`
`Apr 08, 2014
`
`Proceeding Number: 91193467
`
`Jan 20, 2010
`
`Jan 20, 2011
`
`Status: Terminated
`
`Interlocutory Attorney: LINDA M SKORO
`
`Name:
`
`Security Bank
`
`Correspondent Address:
`
`KENNETH R MATTICKS
`MATTICKS & EASTHAM LLP
`500 WEST ILLINOIS , SUITE 685
`MIDLAND TX , 79701-4335
`UNITED STATES
`
`Correspondent e-mail:
`
`Ken@mae-law.com , kelsey@mae-law.com
`
`Associated marks
`
`Mark
`
`Type of Proceeding: Opposition
`
`Filing Date:
`
`Status Date:
`
`Defendant
`
`Application Status
`
`YOUR BUSINESS IS OUR BUSINESS
`
`Abandoned - After Inter-Partes Decision
`
`Plaintiff(s)
`
`Name:
`
`Guard Insurance Group, Inc.
`
`Correspondent Address:
`
`JEFFREY H KAUFMAN
`
`Serial
`Number
`
`77737090
`
`Registration
`Number
`
`

`
`OBLON SPIVAK MCCLELLAND MAIER ET AL
`1940 DUKE STREET
`ALEXANDRIA VA , 22314
`UNITED STATES
`
`Correspondent e-mail:
`
`Jkaufman@oblon.com , Kimai@oblon.com , Tmdocket@oblon.com , Clisenby@oblon.com
`
`Associated marks
`
`Mark
`
`Application Status
`
`Serial Number
`
`Registration
`Number
`
`YOUR BUSINESS IS OUR BUSINESS
`
`Renewed
`
`75357483
`
`2250453
`
`Prosecution History
`
`Entry Number
`
`History Text
`
`FILED AND FEE
`
`NOTICE AND TRIAL DATES SENT; ANSWER DUE:
`
`PENDING, INSTITUTED
`
`ANSWER
`
`STIP TO SUSPEND PEND SETTLEMENT NEGOTNS
`
`SUSPENDED
`
`STIPULATION FOR AN EXTENSION OF TIME
`
`EXTENSION OF TIME GRANTED
`
`WITHDRAWAL OF APPLICATION
`
`BOARD'S DECISION: SUSTAINED
`
`TERMINATED
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`Due Date
`
`Mar 01, 2010
`
`Date
`
`Jan 20, 2010
`
`Jan 20, 2010
`
`Jan 20, 2010
`
`Feb 26, 2010
`
`Aug 27, 2010
`
`Aug 27, 2010
`
`Dec 22, 2010
`
`Dec 22, 2010
`
`Jan 14, 2011
`
`Jan 20, 2011
`
`Jan 20, 2011
`
`Proceeding Number: 91179258
`
`Aug 27, 2007
`
`Dec 17, 2007
`
`Status: Terminated
`
`Interlocutory Attorney: BRIAN D BROWN
`
`Type of Proceeding: Opposition
`
`Filing Date:
`
`Status Date:
`
`Defendant
`
`Name:
`
`The Inland Real Estate Group, Inc.
`
`Correspondent Address:
`
`CHRISTINA L. MARTINI
`DLA PIPER US LLP
`P.O. BOX 64807
`CHICAGO IL , 60664-0807
`UNITED STATES
`
`Correspondent e-mail:
`
`christina.martini@dlapiper.com , ch.tm@dlapiper.com , nicole.chaudhari@dlapiper.com
`
`Associated marks
`
`Mark
`
`Application Status
`
`Serial Number
`
`Registration
`Number
`
`THE FUTURE OF YOUR BUSINESS IS OUR BUSINESS
`
`Registered
`
`78666148
`
`3858386
`
`Plaintiff(s)
`
`Name:
`
`Guard Insurance Group, Inc.
`
`Correspondent Address:
`
`Jeffrey H. Kaufman
`Oblon, Spivak, McClelland, Maier et al
`1940 Duke Street
`Alexandria VA , 22314
`UNITED STATES
`
`Correspondent e-mail:
`
`jkaufman@oblon.com
`
`Associated marks
`
`Mark
`
`Application Status
`
`Serial Number
`
`Registration
`Number
`
`YOUR BUSINESS IS OUR BUSINESS
`
`Renewed
`
`75357483
`
`2250453
`
`Prosecution History
`
`Entry Number
`
`History Text
`
`1
`
`FILED AND FEE
`
`Date
`
`Aug 27, 2007
`
`Due Date
`
`

`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`NOTICE AND TRIAL DATES SENT; ANSWER DUE:
`
`PENDING, INSTITUTED
`
`D'S MOT FOR EXTEN. OF TIME W/ CONSENT
`
`EXTENSION OF TIME GRANTED
`
`D'S MOT FOR EXTEN. OF TIME W/ CONSENT
`
`EXTENSION OF TIME GRANTED
`
`D'S MOT EXT TIME RESPOND TO DISC REQUEST W/CON
`
`STIPULATION FOR AN EXTENSION OF TIME
`
`EXTENSION OF TIME GRANTED
`
`D'S MOT FOR EXTEN. OF TIME W/ CONSENT
`
`D'S MOT FOR EXTEN. OF TIME W/ CONSENT
`
`SUSPENDED
`
`WITHDRAWAL OF OPPOSITION
`
`BD'S DECISION: DISMISSED W/O PREJUDICE
`
`TERMINATED
`
`Oct 09, 2007
`
`Aug 30, 2007
`
`Aug 30, 2007
`
`Oct 09, 2007
`
`Oct 10, 2007
`
`Oct 18, 2007
`
`Oct 23, 2007
`
`Oct 31, 2007
`
`Oct 31, 2007
`
`Oct 31, 2007
`
`Nov 29, 2007
`
`Nov 29, 2007
`
`Dec 04, 2007
`
`Dec 12, 2007
`
`Dec 17, 2007
`
`Dec 17, 2007