throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA744453
`05/04/2016
`
`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
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Party who filed
`Extension of time
`to oppose
`
`Relationship to
`party who filed
`Extension of time
`to oppose
`
`Attorney informa-
`tion
`
`Eugene M. Pak
`Wendel Rosen Black & Dean
`
`05/04/2016
`
`1111 Broadway, 24th Floor
`Oakland, CA 94607
`UNITED STATES
`Eugene M. Pak
`
`"Wendel Rosen Black & Dean" is the name of my law firm.
`
`Eugene M. Pak
`Wendel Rosen Black & Dean LLP
`1111 Broadway, 24th Floor
`Oakland, CA 94607
`UNITED STATES
`tmdocket@wendel.com,epak@wendel.com Phone:510-834-6600
`
`Applicant Information
`
`Application No
`
`86504533
`
`Publication date
`
`01/05/2016
`
`Opposition Filing
`Date
`
`Applicant
`
`05/04/2016
`
`Opposition Peri-
`od Ends
`
`05/04/2016
`
`The Craft Beer Attorney, APC
`3914 Murphy Canyon Rd. Ste. A244
`San Diego, CA 92123
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 045. First Use: 2009/01/01 First Use In Commerce: 2009/12/10
`All goods and services in the class are opposed, namely: Legal services
`
`Grounds for Opposition
`
`The mark is merely descriptive
`
`Trademark Act Section 2(e)(1)
`
`The mark is generic
`
`Fraud on the USPTO
`
`Trademark Act Sections 1, 2 and 45
`
`In re Bose Corp., 580 F.3d 1240, 91 USPQ2d
`1938 (Fed. Cir. 2009)
`
`

`

`Attachments
`
`NoticeOfOpposition-CRAFT BEER ATTORNEY.pdf(141504 bytes )
`NoticeOfOpposition-CRAFT BEER ATTORNEY-EXHIBITS A and
`B.pdf(4356795 bytes )
`NoticeOfOpposition-CRAFT BEER ATTORNEY-EXHIBIT C.pdf(1750279 bytes )
`
`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.
`
`Certificate of Service
`
`Signature
`
`Name
`
`Date
`
`/Eugene M. Pak/
`
`Eugene M. Pak
`
`05/04/2016
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application Serial No. 86/504,533
`Published in the Official Gazette on January 5, 2016
`For the mark: CRAFT BEER ATTORNEY
`
`
`
`
`
`
`
`Opposition No. _________
`
`
`EUGENE M. PAK,
`
` Opposer,
`
` v.
`
`THE CRAFT BEER ATTORNEY, APC,
`
` Applicant.
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`COMMISSIONER FOR TRADEMARKS
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`
`NOTICE OF OPPOSITION
`
`
`
`
`Eugene M. Pak, an individual and licensed attorney (hereinafter “Opposer”)
`
`believes he is or will be damaged by registration on the Principal Register of the mark
`
`CRAFT BEER ATTORNEY, shown in Application Ser. No. 86504533, and hereby
`
`opposes the same.
`
`
`
`As grounds of opposition, Opposer alleges that:
`
`1.
`
`Opposer is an attorney at the law firm Wendel, Rosen, Black & Dean LLP
`
`based in Oakland, California, and heads the firm’s craft beer law practice. Opposer has
`
`been a licensed attorney in California since 1993 and he and his firm provide a wide
`
`variety of legal services to clients including craft breweries.
`
`
`
`1
`
`

`

`
`
`2.
`
`One of Opposer’s and his firm’s primary areas of legal expertise and
`
`practice is in the alcoholic beverage industry. Opposer’s clienta and his firm’s clients
`
`include several craft beer breweries, as well as other entities and individuals in the
`
`alcohol beverage industry such as restaurants, bars, brewpubs, wineries, and others.
`
`3.
`
`Opposer currently represents many craft beer clients, including Bear
`
`Republic Brewing Company, Inc. and 21st Amendment Brewery Café, LLC, and has
`
`promoted his and his firm’s legal services, pertaining to the craft beer industry,
`
`extensively and for several years throughout the United States, including at craft beer
`
`industry presentations in major cities including at the national Craft Brewers Conference,
`
`California Craft Brewers Association conferences, and Brewbound. Opposer has been
`
`quoted in several publications regarding issues affecting the craft beer industry including
`
`Brewbound, All About Beer, The Daily Journal, and Paste Magazine.
`
`4.
`
`Opposer has used and continues to use the term “craft beer attorney” in
`
`writing and orally to describe himself and his practice. For example, the term is used on
`
`Opposer’s LinkedIn page at www.linkedin.com/in/eugenepak1 as well as on Opposer’s
`
`profile page on his firm’s website at www.wendel.com/attorneys-staff/attorneys/pak-
`
`eugene-m (or www.wendel.com/epak). Opposer uses the Twitter handle @beerattorney
`
`at which he posts Tweets on legal issues regarding the craft beer industry and related
`
`topics. Opposer also owns the domain name www.beerandlaw.com where he has
`
`published articles regarding legal issues in the craft beer industry, including an article
`
`entitled “Becoming A Craft Beer Lawyer: Seneca The Younger meets Pliny The
`
`Elder” at http://www.beerandlaw.com/blog/becoming-a-craft-beer-lawyer-seneca-the-
`
`younger-meets-pliny-the-elder, in which the term “craft beer attorney” is used several
`
`
`
`2
`
`

`

`
`
`times to describe Opposer or other attorneys who provide legal services to craft
`
`breweries.
`
`5.
`
`As a result, Opposer will be damaged by the registration of the alleged
`
`“mark” CRAFT BEER ATTORNEY (Ser. No. 86504533) in that Opposer may be
`
`prevented from using this generic and/or merely descriptive term in advertising,
`
`marketing, promoting and/or offering his and his firm’s services.
`
`6.
`
`On information and belief, Candace L. Moon is a California-based
`
`attorney who graduated from a San Diego law school in or about 2007, and was admitted
`
`to the California bar in December 2008. On information and belief, Ms. Moon has stated
`
`that she was not sure what to do with her law degree until she met a wine lawyer about a
`
`year after her graduation, and Ms. Moon has stated “[a] light bulb went on . . . I thought,
`
`‘I know a bunch of brewers and I don’t know any craft beer lawyers, so I’ll be a craft
`
`beer lawyer’” as stated in an article on her firm website at:
`
`http://craftbeerattorney.com/03-30-15-attorney-finds-her-niche-as-san-diegos-go-to-craft-
`
`beer-lawyer/.
`
`7.
`
`On information and belief, Ms. Moon started her craft beer law practice as
`
`a solo practitioner in or about December 2009. On information and belief, Ms. Moon
`
`called her practice or firm “Michaux-Moon Legal Services” (on information and belief,
`
`Ms. Moon’s maiden name is Michaux) and filed documents with the USPTO using that
`
`firm name, until in or about 2012. On information and belief, Ms. Moon also referred to
`
`her practice as “Law Offices of Candace L. Moon, Esq.” including on her website in
`
`2013. On information and belief, Ms. Moon incorporated as The Craft Beer Attorney,
`
`APC, in or about July 3, 2013. On information and belief, The Craft Beer Attorney, APC
`
`
`
`3
`
`

`

`
`
`is a professional corporation, organized and existing under the laws of the State of
`
`California, with its principal location in San Diego, California (hereafter “Applicant”).
`
`8.
`
`On information and belief, Applicant is the owner of U.S. Trademark
`
`Application Serial Number 86504533 (the “Application”) for the term CRAFT BEER
`
`ATTORNEY, for use in connection with “legal services” in International Class 45
`
`(“Applicant’s Mark”) (for purposes of convenience the term “Mark” is used, though
`
`Opposer disputes that CRAFT BEER ATTORNEY is a mark but is instead a generic
`
`term).
`
`9.
`
`On information and belief, Applicant originally filed the Application for
`
`CRAFT BEER ATTORNEY, on January 15, 2015.
`
`10.
`
`In the specimen that was submitted with the Application, Applicant uses
`
`the term “craft beer” on Applicant’s Facebook page by posting, “Article about craft beer
`
`and trademarks on NPR”.
`
`11.
`
`In the Application Applicant asserted a claim of acquired distinctiveness
`
`under Section 2(f). As proof of acquired distinctiveness, Applicant submitted a sworn
`
`Declaration that Applicant’s Mark had become distinctive of the services through
`
`substantially exclusive and continuous use in commerce that the U.S. Congress may
`
`lawfully regulate for at least five years before the Application filing date of January 15,
`
`2015.
`
`12.
`
`Applicant’s first use in commerce date, listed in the Application, is
`
`December 10, 2009. On information and belief, this is the earliest date on which
`
`Applicant can show use of Applicant’s Mark in commerce.
`
`
`
`4
`
`

`

`
`
`13.
`
`On information and belief, Applicant cannot prove that Applicant’s Mark
`
`was in “substantially exclusive and continuous use in commerce that the U.S. Congress
`
`may lawfully regulate for at least five years” before the Application filing date of January
`
`15, 2015.
`
`14.
`
`The Application received an Office Action from the United States Patent
`
`and Trademark Office (“USPTO”), dated April 29, 2015, in which the examining
`
`attorney assigned to the Application refused registration based on a finding that
`
`Applicant’s Mark was generic, and in the alternative, if not generic, was merely
`
`descriptive and Applicant’s evidence of acquired distinctiveness was insufficient, given
`
`the highly descriptive, if not generic, nature of Applicant’s Mark (the “Office Action”).
`
`15.
`
`Applicant submitted a Response to the Office Action on October 28, 2015,
`
`in which Applicant disclaimed the term “attorney” and argued Applicant’s Mark is not
`
`generic and had acquired distinctiveness (the “Response to Office Action”).
`
`16.
`
`By only arguing against the generic and insufficient evidence of acquired
`
`distinctiveness refusals in the Response to Office Action, and failing to submit an
`
`argument against the merely descriptive refusal, Applicant has admitted Applicant’s
`
`Mark is at least merely descriptive.
`
`17.
`
`By disclaiming the term “attorney” in the Response to Office Action, and
`
`failing to submit an argument against the merely descriptive refusal, Applicant has
`
`admitted that at least the term “attorney”, appearing in Applicant’s Mark, is generic.
`
`18.
`
`Applicant’s Mark was published for opposition on January 5, 2016.
`
`19.
`
`Opposer timely filed an extension of time to Oppose Applicant’s Mark on
`
`January 28, 2016.
`
`
`
`5
`
`

`

`
`
`20.
`
`Opposer timely filed the instant opposition.
`
`Mark is Generic, 15 U.S.C. §1052(e)(1)
`
`21.
`
`Opposer repeats and re-alleges each and every allegation contained in
`
`paragraphs 1-20, inclusive, as if fully recited in this paragraph.
`
`22.
`
`On information and belief, Applicant provides legal services to clients
`
`with legal issues pertaining to craft beer. On information and belief, Applicant provides
`
`legal services to client with legal issues that do not pertain to craft beer, and has provided
`
`legal services to non-brewery clients including at least one distilled spirits producer, an
`
`apparel maker, and a construction firm.
`
`23.
`
`On information and belief, Applicant’s Mark, CRAFT BEER
`
`ATTORNEY, has a readily apparent meaning of a licensed provider of legal services for
`
`clients in the craft beer industry.
`
`24.
`
`On information and belief, Applicant’s own website,
`
`www.craftbeerattorney.com (“Applicant’s Website”) has used the term CRAFT BEER
`
`ATTORNEY in a generic manner, stating, “I am Candace L. Moon, Esq., an attorney
`
`dedicated to serving the legal needs of craft breweries. I call myself a craft beer
`
`attorney, which to me means I am someone who can meet all the various legal needs that
`
`you may run into when opening/running a brewery or brewpub, just as if you had your
`
`own corporate general counsel. As your attorney, I can handle all aspects of brewery
`
`law, including those related to business formation, brewery and beer trademark and
`
`copyright, alcohol beverage law, brand protection, employment law and contract law.”
`
`Printouts from Archive.org’s (Waybackmachine.org) online database, evidencing
`
`
`
`6
`
`

`

`
`
`Applicant’s Website and Applicant’s statements identified above, are attached hereto as
`
`Exhibit A and are hereby made part of the record in these proceedings.
`
`25.
`
`On information and belief, Applicant admitted in its Response to Office
`
`Action that the genus of Applicant’s services is “legal services,” stating, “the Examiner is
`
`correct in that the genus is legal services, as those were the claimed services associated
`
`with Applicant’s mark.”
`
`26.
`
`On information and belief, Applicant’s Mark is perceived by the relevant
`
`consuming public, namely, those in need of legal services, as a generic name or term for
`
`a type of legal services.
`
`27.
`
`As of the filing date of this Notice of Opposition, Applicant’s Website
`
`currently references that Applicant is “a law firm dedicated to the craft beer industry.”
`
`28.
`
`As of the filing date of this Notice of Opposition, Applicant’s Website’s
`
`“About the Firm” page displays a professional certificate to “The Business Of Craft
`
`Beer,” as well as listing “The Business of Craft Beer Advisory Board,” showing
`
`Applicant’s owner, Candace L. Moon, as being on the Business of Craft Beer Advisory
`
`Board.
`
`29.
`
`As of the filing date of this Notice of Opposition, Applicant’s Website’s
`
`“About the Firm” page states, “The Original Craft Beer Lawyers, we are a California-
`
`based firm that has spent the last seven years dedicated to advising the craft beer industry.
`
`We actively serve over 200 craft beer breweries, including breweries in planning
`
`nationwide. And to think this all got started while bartending at the word-famous craft
`
`beer bar, Hamiltons, while attending law school in San Diego.”
`
`
`
`7
`
`

`

`
`
`30.
`
`On information and belief, Applicant has used the term “original” as in
`
`“The Original Craft Beer Attorney” or “The Original Craft Beer Lawyer” even though
`
`Applicant’s owner, Ms. Moon, did not start practicing law until in or about 2009, and
`
`even though there are other craft beer attorneys who practiced before her such as Marc
`
`Sorini and Art DeCelle of the national law firm McDermott Will and Emery. On
`
`information and belief, Applicant’s founder, Ms. Moon, has seen Mr. Sorini speak at beer
`
`industry conferences including at a California Craft Brewers Association conference. On
`
`information and belief, Mr. Sorini has twice been honored by the national Brewers
`
`Association, a trade association which represents the interests of craft breweries, with its
`
`F.X. Matt Defense of the Small Brewing Industry Award in 2004 and 2005, several years
`
`before Ms. Moon began practicing law and identifying herself the “The Craft Beer
`
`Attorney” or “Original Craft Beer Attorney” or “Original Craft Beer Lawyer.”
`
`31.
`
`The terms “attorney” and “lawyer” are synonymous. There is no
`
`appreciable difference in meaning or connotation between the term “craft beer attorney”
`
`and “craft beer lawyer.”
`
`32.
`
`As of the filing date of this Notice of Opposition, Applicant’s Website’s
`
`“Shop CBA” link redirects to the website www.brewlaw101.com, which promotes
`
`Applicant’s book, “Brew Law 101: A Legal Guide to Opening a Brewery – California
`
`Edition.” The synopsis of the book states, “This comprehensive text deftly explains both
`
`the federal and California specific laws governing the manufacture of craft beer. Brew
`
`Law 101: California Edition walks the startup craft brewery and breweries-in-planning
`
`through every step of the process from business formation and capital raising to location
`
`and licensing to labeling and intellectual property to employment law and common craft
`
`
`
`8
`
`

`

`
`
`beer contracts. The original Craft Beer Attorney brings together years of craft beer
`
`focused knowledge and expertise to help you successfully navigate the sudsy industry.”
`
`33.
`
`On information and belief, Applicant’s website contains numerous,
`
`additional, generic uses of the term “craft beer”, including, inter alia, “craft beer giant”,
`
`“craft beer community” and “craft beer education events.”
`
`34.
`
`On information and belief, the term “craft beer” refers to beers made by
`
`craft brewers, and has come into common usage to reference the niche or specialty
`
`market for goods and/or services relating to beers made by craft brewers.
`
`35.
`
`On information and belief, Applicant’s Mark combines two generic terms,
`
`“CRAFT BEER” and “ATTORNEY.”
`
`36.
`
`On information and belief, Applicant’s Mark, CRAFT BEER
`
`ATTORNEY, is itself a generic term.
`
`37.
`
`On information and belief, CRAFT BEER ATTORNEY is a unitary term
`
`used to refer to a general category of Applicant’s services, namely “legal services.”
`
`38.
`
`In the alternative, if CRAFT BEER ATTORNEY is not considered a
`
`unitary term as described above, on information and belief, the phrase CRAFT BEER
`
`ATTORNEY as a whole is used to refer to the general category of Applicant’s services,
`
`namely “legal services,” and is perceived by the relevant consuming public as a generic
`
`name for such services.
`
`39.
`
`Attached hereto as Exhibit B are multiple examples of Opposer’s or third
`
`parties’ generic uses of the term CRAFT BEER ATTORNEY in reference to legal
`
`services. Exhibit B is hereby made a part of the record in these proceedings.
`
`
`
`9
`
`

`

`
`
`40.
`
`On information and belief, the primary significance of the term or phrase
`
`“CRAFT BEER ATTORNEY” to the relevant consuming public, namely, those seeking
`
`legal services, is not as a service mark signifying the source of the service, but rather as
`
`words to identify the type of service provided, namely, legal services for those in the craft
`
`beer industry, provided by a licensed legal practitioner.
`
`41.
`
`Applicant’s Mark is not a service mark, but rather is generic and does not
`
`function as a mark at all and therefore should be cancelled.
`
`42.
`
`Upon information and belief, Applicant knew or should have known of
`
`third party adoptions and uses of the term or phrase CRAFT BEER ATTORNEY to
`
`describe and/or reference services provided by third parties, and therefore could not have
`
`formed the requisite good faith belief that Applicant is the owner of the “mark” sought to
`
`be registered, and that no other person, firm, corporation or association has the right to
`
`use said “mark” in commerce, and consequently knew that such use is and would be in
`
`derogation and violation of the First Amendment rights of third parties, who have a bona
`
`fide need to use such a generic term or phrase to accurately describe and reference their
`
`own similar services.
`
`43.
`
`On information and belief, Applicant was aware of Opposer and of
`
`Opposer’s use of the term “craft beer attorney” prior to Applicant filing its Application to
`
`register CRAFT BEER ATTORNEY on January 15, 2015.
`
`44.
`
`Opposer will be damaged if Applicant’s Application, Serial
`
`No. 86504533, is allowed to register in that such registration will support and assist
`
`Applicant in preventing Opposer from using the generic term or phrase CRAFT BEER
`
`ATTORNEY, and will give impermissible, colorable, exclusive, statutory rights to
`
`
`
`10
`
`

`

`
`
`Applicant or a potential assignee in violation and derogation of the First Amendment
`
`rights of Opposer to be allowed to use such a generic term or phrase to accurately
`
`describe and/or reference his own identical or closely related services.
`
`Mark is Highly or Merely Descriptive and Has Not Acquired Distinctiveness,
`15 U.S.C. §1052(e)(1); §1052(f)
`
`Opposer repeats and re-alleges each and every allegation contained in
`
`45.
`
`paragraphs 1-44, inclusive, as if fully recited in this paragraph.
`
`46.
`
`On information and belief, Applicant’s Mark, if not generic as Opposer
`
`alleges, is highly or merely descriptive as the term “CRAFT BEER ATTORNEY,”
`
`immediately conveys knowledge of a quality, feature, function, purpose or characteristic
`
`of Applicant’s services to the consumer, namely, that Applicant’s legal services, provided
`
`by an attorney, are offered for the purpose of assisting those in the craft beer industry
`
`with legal issues pertaining to craft beer. This is the only immediately intelligible
`
`interpretation of the term “CRAFT BEER ATTORNEY.”
`
`47.
`
`The USPTO Examining Attorney determined Applicant’s Mark to be
`
`“highly descriptive of Applicant’s services” in the Office Action.
`
`48.
`
`On information and belief, Applicant’s Mark is highly descriptive of
`
`Applicant’s services, if not generic.
`
`49.
`
`On information and belief, Applicant’s Mark has not acquired
`
`distinctiveness as a mark.
`
`50.
`
`On information and belief, Applicant’s Mark has not acquired
`
`distinctiveness as a mark through “substantially exclusive and continuous use in
`
`commerce.”
`
`
`
`11
`
`

`

`
`
`51.
`
`On information and belief, Applicant’s arguments and evidence submitted
`
`in the Response to Office Action are not sufficient to show that Applicant’s Mark has
`
`acquired distinctiveness as a mark.
`
`52.
`
`Opposer will be damaged if Applicant’s Application, Serial
`
`No. 86504533, is allowed to register in that such registration will support and assist
`
`Applicant in preventing Opposer from using the merely descriptive, if not generic, term,
`
`CRAFT BEER ATTORNEY, and will give impermissible, colorable, exclusive, statutory
`
`rights to Applicant or a potential assignee in violation and derogation of the First
`
`Amendment rights of Opposer to be allowed to use such generic and/or merely
`
`descriptive terms to accurately describe and/or reference its own identical or closely
`
`related services.
`
`Fraud – Based On Applicant’s Declaration of Acquired Distinctiveness,
`15 U.S.C. §1064(3)
`
`Opposer repeats and re-alleges each and every allegation contained in
`
`53.
`
`paragraphs 1-52, inclusive, as if fully recited in this paragraph.
`
`54.
`
`On information and belief, Applicant made knowingly false
`
`representations concerning material facts in its Application on January 15, 2015, and in
`
`its Response to Office Action on October 28, 2015, with the intent to deceive authorized
`
`USPTO agents and thereby induce them to accept the Application and publish
`
`Applicant’s Mark for opposition, so that it may be registered. USPTO agents reasonably
`
`relied on, and were deceived by, Applicant’s false, material statements, concerning the
`
`acquired distinctiveness of Applicant’s Mark, and therefore accepted the Application,
`
`passing it through USPTO examination and publishing it for opposition.
`
`
`
`12
`
`

`

`
`
`55.
`
`Specifically, on January 15, 2015, Applicant filed the Application with the
`
`USPTO, and Applicant’s signatory, Ms. Moon, made the standard form declaration
`
`therein, which included the following statement, “to the best of the signatory’s
`
`knowledge and belief, no other person has the right to use the mark in commerce, either
`
`in the identical form or in such near resemblance as to be likely, when used on or in
`
`connection with the goods/services of such other person, to cause confusion or mistake,
`
`or to deceive. The signatory being warned that willful false statements and the like are
`
`punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such
`
`willful false statements and the like may jeopardize the validity of the application or any
`
`registration resulting therefrom, declares that all statements made of his/her own
`
`knowledge are true and all statements made on information and belief are believed to be
`
`true.”
`
`56.
`
`Also specifically, on January 15, 2015, Applicant filed the Application
`
`with the USPTO, and the Ms. Moon made a claim of acquired distinctiveness based on
`
`use under Section 2(f) therein, which included the following statement, “The mark has
`
`become distinctive of the goods/services through the applicant’s substantially exclusive
`
`and continuous use in commerce that the U.S. Congress may lawfully regulate for at least
`
`the five years immediately before the date of this statement.”
`
`57.
`
`Also specifically, on October 28, 2015, Applicant filed the Response to
`
`Office Action, in which Ms. Mon indicated, “First off, the Applicant has signed a
`
`statement verifying that the applicant has exclusively and continuously used the mark in
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`commerce at least as early as December 10, 2009 . . . Applicant attested to this fact, both
`
`at the time she initiated the instant application, but [sic] in an additional declaration . . .
`
`
`
`13
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`

`

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`Thus, Applicant has adequately provided evidence that may be used to show that the
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`mark has acquired distinctiveness.”
`
`58.
`
`At the time Ms. Moon made the foregoing statements in the Application
`
`and the Response to Office Action, and also at the time the Signatory made her sworn
`
`declarations, she was an authorized agent and/or officer of Applicant, acting within the
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`scope of her authority, and her false declarations are attributable to the Applicant by the
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`doctrine of respondeat superior, as if Applicant had itself made such statements.
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`59.
`
`On information and belief, the foregoing statements made by the
`
`Applicant, via Ms. Moon, were false at the time that they were made.
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`60.
`
` On information and belief, Applicant does not have any basis for claiming
`
`federal trademark rights in the alleged “mark” CRAFT BEER ATTORNEY, because the
`
`“mark” was not in substantially exclusive and continuous use in interstate commerce for
`
`a period of at least five years prior to the Application filing date of January 15, 2015.
`
`61.
`
`On information and belief, Applicant knew Ms. Moon’s statements made
`
`in the Application were false at the time they were made because, as of January 15, 2015,
`
`Applicant knew that other companies and persons, including Opposer, were using the
`
`term CRAFT BEER ATTORNEY in connection with legal services within the past five
`
`years, and therefore knew that its use of the “mark” was not “substantially exclusive”.
`
`62.
`
`Attached hereto as Exhibit C are screenshots from Archive.org’s
`
`(Waybackmachine.org) online database showing examples of Opposer’s or third parties’
`
`uses of the term CRAFT BEER ATTORNEY in reference to legal services prior to
`
`January 15, 2015, and are hereby made part of the record in these proceedings.
`
`
`
`14
`
`

`

`
`
`63.
`
`On information and belief, Applicant does not have any basis for claiming
`
`federal trademark rights in the alleged “mark” CRAFT BEER ATTORNEY, because the
`
`“mark” was not in substantially exclusive and continuous use in interstate commerce for
`
`a period of five years prior to the Response to Office Action filing date of October 28,
`
`2015.
`
`64.
`
`On information and belief, Applicant knew Ms. Moon’s statements made
`
`in the Response to Office Action were false at the time they were made because, as of
`
`October 28, 2015, Applicant knew that other companies and persons, including Opposer,
`
`were using the term CRAFT BEER ATTORNEY in connection with legal services within
`
`the past five years, and therefore knew that its use of the “mark” was not “substantially
`
`exclusive.”
`
`65.
`
`On information and belief, Applicant knew Ms. Moon’s statements made
`
`in the Response to Office Action were false at the time they were made because, as of
`
`October 28, 2015, Applicant knew that other companies and persons, including Opposer,
`
`were using the term CRAFT BEER ATTORNEY in connection with legal services within
`
`the past five years, and therefore knew that its use of the “mark” was not “substantially
`
`exclusive.”
`
`66.
`
`On information and belief, Applicant intentionally made the foregoing
`
`false statements for the purpose of inducing the USPTO to pass the Application through
`
`examination in order to be registered.
`
`67.
`
`On information and belief, Applicant is in possession of information and
`
`documents which would prove the truth of the foregoing allegations that Applicant made
`
`
`
`15
`
`

`

`
`
`knowingly false, material statements with the intent to deceive the USPTO into issuing a
`
`registration certificate for Applicant’s Mark.
`
`68.
`
`On information and belief, Applicant’s false statements, as alleged in the
`
`foregoing paragraphs, were each independently material to the USPTO’s decision to pass
`
`the Application through examination and publish Applicant’s Mark for opposition, and
`
`the USPTO reasonably relied on the false statements in determining to pass the
`
`Application through examination and publish Applicant’s Mark for opposition.
`
`Specifically, the USPTO accepted the Application and published Applicant’s Mark for
`
`opposition, and would not have done so, but for Applicant’s assertion of “substantially
`
`exclusive and continuous use in commerce for at least five years” prior to making such
`
`statements, because the alleged “mark” CRAFT BEER ATTORNEY was not in
`
`substantially exclusive and/or continuous use by Applicant for the five years preceding
`
`such statements.
`
`69.
`
`Opposer will be damaged if Applicant’s Application, Serial
`
`No. 86504533, is allowed to register in that such registration will support and assist
`
`Applicant in preventing Opposer from using the merely descriptive, if not generic, term,
`
`CRAFT BEER ATTORNEY, and will give impermissible, colorable, exclusive, statutory
`
`rights to Applicant or a potential assignee in violation and derogation of the First
`
`Amendment rights of Opposer to be allowed to use such generic and/or merely
`
`descriptive terms to accurately describe and/or reference its own identical or closely
`
`related services.
`
`
`
`16
`
`

`

`
`
`70.
`
`By reason of the foregoing, Opposer is likely to be harmed by the
`
`registration of the opposed application for the alleged “mark” CRAFT BEER
`
`ATTORNEY, shown in Application Ser. No. 86504533.
`
`
`
`WHEREFORE, Opposer requests that registration of the mark sought to be
`
`registered herein, CRAFT BEER ATTORNEY of Application Ser. No. 86504533, be
`
`denied and that this opposition be sustained.
`
`
`
`Dated: May 4, 2016
`
`
`
`
`
`
`
`
`Respectfully Submitted,
`
`
`By:
`/Eugene M. Pak/
`
`Eugene M. Pak
`Wendel Rosen Black & Dean LLP
`1111 Broadway, 24th Floor
`Oakland, CA 94607
`(510) 834-6600
`
`
`
`17
`
`

`

`
`
`
`
`
`
`PROOF OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing NOTICE OF
`
`OPPOSITION has been served on THE CRAFT BEER ATTORNEY, APC (Candace L.
`
`Moon) owner of Application Serial No. 86504533 as listed in the USPTO database, on
`
`May 4, 2016, via First Class U.S. Mail, postage prepaid to:
`
`CANDACE L. MOON
`THE CRAFT BEER ATTORNEY
`5095 MURPHY CANYON ROAD, SUITE 240
`SAN DIEGO, CA 92123
`
`
`
`
`
`
`
`/Carol A. Bagshawe/
`Carol A. Bagshawe
`
`
`
`
`
`
`
`
`18
`
`

`

`
`
`
`
`
`
`EXHIBIT A
`EXHIBIT A
`
`
`
`
`
`
`
`
`
`

`

`California 13rewery Start-Up Lawyer I San Diego 13rcwery Atturney I Natiunw ide Beer Tr... Page 1 uf 1
`
`TH E CRAFT BEE R A TTRON EY , APC
`
`California Brewery Start-Up Attorney
`
`buring the SIan_up or running ofa craft brewery, legal matters can arise that require effective and experienced legal counse l.
`This is a vet)'niche area of the law, requ iring smnelme with extmsivc knowledge oflhe laws related to brewing.
`
`An Attorney Dedicated To The Craft Beer Industry
`
`I an. Candace t . Moon, Esq., nn lUtomey dedicated to serving the legal neeth of cmft bo"e.",eric::;. I call myselfn cmft beer
`anomey. wh ich 10 me means I am someooe who can meet all the various legal needs that you may r ull illto when
`<>pcning/rwming Ii brewery or brewpub, j ust as if you had your own COrpOrate general counsel.
`
`As your attorney. I can handle aU aspects ofbrewcrv law, including those related to business fonnation. brewe!)" and beer
`trademarl< and OOJ'l-Tight. alcoool and heventge law. brnnd protection. employment law. and contract law.
`
`" Worki"g .... ith Ca"da< . .., i.. ""lid.,,!,,/. She i .• fair ..• mw1. tnush alUl.tO .,a.,)' to work with. 11'" .ttart,"} with h",. n" a
`("h"I1""8;"8 Ir"d .. m"rk I.Wte a.1" le.11 ""d .Iheju.l1 C()"li""e.llo k"Ql'k il OUI Oflh"l'"rk. Now We usc her fnr nil (}[II"
`1<");,,1 " .... d.fTOnI slod i ... ,·,m. 10 hum"" ,... .. aun: ..... JuSI ,.",,," .. r[ul.1 "m So liIlmkfi'/ ＢｾｉｯｵＱｬｬｩ＠h,·r."
`
`-
`
`Jam il Zai llaSheff. ｮｾｲ･ｴｩ｣＠llrewillg C(>mpallY (liairfie ld.. CA)
`
`San Diego Nano Bre ..... ery La .... 'Yl'r
`
`My practice is focused entirely on bre"'cry law. and. to the: best o f m y knowledge. I am the: only attomey whQ docs this. I
`""m I() law school to pursue ｩ ｭ ､ｬ＼ＧｃｴｵｾｬｬＧｲｯｰ･ｮｹ＠law. 1 ｾｉＤｏ＠w()rl<cd M ｾ＠banender for a emft heer ･ｾｴｩｬ｢ｬ ｩｳｨｭ･ｮｴ＠･ｾｬｬ･､＠
`Ha.milton·s. I knew all these era ft brewers. but didn't know any lawyers who wcrededic31ed 10 worlin g with them. More
`than thru years ago, I Starred mypr3Clice as a craft tK,er lUt()me:y, wit h the goal oftllki" g brewery McI bre:wp,"", ｣Ｑｩ･ｮｌｾ＠"n ly.
`Curremly. I assist more than SO bre

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