Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA910023
`07/18/2018
`
`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
`
`Thompson Law LLP
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`07/18/2018
`
`3300 Oak Lawn Ave., 3rd Floor
`Dallas, TX 75219
`UNITED STATES
`
`Adam C. Rehm
`Polsinelli PC
`2950 N. Harwood StreetSuite 2100
`Dallas, TX 75219
`UNITED STATES
`Email: arehm@polsinelli.com, docketing@polsinelli.com, uspt@polsinelli.com,
`jwillard@polsinelli.com, aweiss@polsinelli.com
`Phone: (214) 397-0030
`
`Applicant Information
`
`Application No
`
`87628412
`
`Publication date
`
`03/20/2018
`
`Opposition Filing
`Date
`
`Applicant
`
`07/18/2018
`
`Opposition Peri-
`od Ends
`
`07/18/2018
`
`Jim S. Adler, P.C.
`1900 West Loop South, 20th Floor
`Houston, TX 770273214
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 045. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Legal services
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Application/ Registra-
`tion No.
`
`Registration Date
`
`Word Mark
`
`Goods/Services
`
`NONE
`
`NONE
`
`Application Date
`
`NONE
`
`1800LIONLAW.COM
`
`Legal services
`
`
`ESTTA910023
`07/18/2018
`
`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
`
`Thompson Law LLP
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`07/18/2018
`
`3300 Oak Lawn Ave., 3rd Floor
`Dallas, TX 75219
`UNITED STATES
`
`Adam C. Rehm
`Polsinelli PC
`2950 N. Harwood StreetSuite 2100
`Dallas, TX 75219
`UNITED STATES
`Email: arehm@polsinelli.com, docketing@polsinelli.com, uspt@polsinelli.com,
`jwillard@polsinelli.com, aweiss@polsinelli.com
`Phone: (214) 397-0030
`
`Applicant Information
`
`Application No
`
`87628412
`
`Publication date
`
`03/20/2018
`
`Opposition Filing
`Date
`
`Applicant
`
`07/18/2018
`
`Opposition Peri-
`od Ends
`
`07/18/2018
`
`Jim S. Adler, P.C.
`1900 West Loop South, 20th Floor
`Houston, TX 770273214
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 045. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Legal services
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Application/ Registra-
`tion No.
`
`Registration Date
`
`Word Mark
`
`Goods/Services
`
`NONE
`
`NONE
`
`Application Date
`
`NONE
`
`1800LIONLAW.COM
`
`Legal services
`
`
`
`U.S. Application/ Registra-
`tion No.
`
`Registration Date
`
`Word Mark
`
`Goods/Services
`
`NONE
`
`NONE
`
`1-800-LION-LAW
`
`Legal services
`
`Application Date
`
`NONE
`
`U.S. Application/ Registra-
`tion No.
`
`Registration Date
`
`Word Mark
`
`Goods/Services
`
`NONE
`
`NONE
`
`Application Date
`
`NONE
`
`RYAN THE LION THOMPSON
`
`Legal Services
`
`U.S. Application/ Registra-
`tion No.
`
`Registration Date
`
`Design Mark
`
`NONE
`
`NONE
`
`Application Date
`
`NONE
`
`Goods/Services
`
`Legal services
`
`U.S. Application/ Registra-
`tion No.
`
`Registration Date
`
`NONE
`
`NONE
`
`Application Date
`
`NONE
`
`
`
`Design Mark
`
`Goods/Services
`
`Legal services
`
`U.S. Application/ Registra-
`tion No.
`
`Registration Date
`
`NONE
`
`NONE
`
`Application Date
`
`NONE
`
`
`
`Design Mark
`
`Goods/Services
`
`Legal services
`
`Attachments
`
`Lion Shield.JPG
`Lion with Man.jpg
`Lion Trade Dress.jpg
`Notice of Opposition Against Application to Register THE TEXAS LION Ser No
`87628412.pdf(148464 bytes )
`
`Signature
`
`/Paul A. Borovay/
`
`Name
`
`Date
`
`Paul A. Borovay
`
`07/18/2018
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the Matter of Application No. 87/628,412
`Filed: September 29, 2017
`Published: March 20, 2018
`
`Mark: THE TEXAS LION
`
`
`Thompson Law LLP
`
`
`
`
`
`
`
`
`Opposer,
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`
`Jim S. Adler, P.C.
`
`
`
`
`
`
`
`
`
`
`Applicant.
`
`
`
`
`
`
`
`
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`
`Opposition No. _____________
`
`
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`
`
`Thompson Law LLP, a limited liability partnership organized under the laws of Texas,
`
`having a principal place of business at 3300 Oak Lawn Avenue, 3rd Floor, Dallas, Texas 75219
`
`(hereinafter “Thompson Law” or “Opposer”) believes it will be damaged by the registration of
`
`the above-identified mark and hereby opposes same. The statutory opposition filing fee of $400
`
`is submitted herewith.
`
`
`
`As grounds for this opposition it is alleged that:
`
`1.
`
`Thompson Law has been and is now engaged in the practice of personal injury
`
`law in the state of Texas.
`
`2.
`
`Thompson Law operates several offices in the state of Texas, which include but
`
`are not limited to offices in Dallas and San Antonio.
`
`3.
`
`Since at least as early as September 5, 2017, Thompson Law has used the term
`
`“LION” and depictions of lions in connection with its legal services (“LION Marks and Trade
`
`Dress”). Below is a non-exhaustive list of Thompson Law’s LION Marks and Trade Dress.
`
`
`64471528.4
`
`
`
`
`
`
`
`• 1800LIONLAW.COM
`
`• 1-800-LION-LAW
`
`• RYAN THE LION THOMPSON
`
`•
`
`•
`
`•
`
`
`
`
`
`4.
`
`
`
`
`
`
`
`Thompson Law uses the LION Marks and Trade Dress to market its services
`
`through multiple media outlets, including print, the Internet, television, and radio.
`
`5.
`
`Thompson Law has expended substantial monies in marketing, advertising, and
`
`promoting the LION Marks and Trade Dress and, through such sales and advertising, has
`
`generated substantial goodwill and customer recognition in the LION Marks and Trade Dress.
`
`6.
`
`Consumers of personal injury legal services, including in Texas, associate the
`
`term “LION” and the LION Marks and Trade Dress with Thompson Law.
`
`7.
`
`On information and belief, Jim S. Adler, P.C. (“Applicant”) is a corporation
`
`organized under the laws of Texas, having a principal place of business at 1900 West Loop
`
`
`64471528.4
`
`2
`
`
`
`
`
`South, 20th Floor, Houston, Texas 77027.
`
`8.
`
`Applicant has been and is now engaged in the practice of personal injury law in
`
`the state of Texas.
`
`9.
`
`Applicant operates several offices in the state of Texas, which include but are not
`
`limited to offices in Dallas and San Antonio.
`
`10.
`
`Applicant markets its services through multiple media outlets, including print, the
`
`Internet, television, and radio.
`
`11.
`
`On September 29, 2017, Applicant filed an intent-to-use application to register the
`
`mark THE TEXAS LION for “legal services,” which was assigned Serial No. 87/628,412 (the
`
`“Application”).
`
`12.
`
`The Application was published on March 20, 2018. Thompson Law timely filed
`
`extensions of time to oppose the Application.
`
`13.
`
`Applicant’s filing of the Application and Applicant’s stated intent to use THE
`
`TEXAS LION are without Thompson Law’s consent or permission.
`
`14.
`
`On information and belief, Applicant’s filing of the Application and Applicant’s
`
`stated intent to use THE TEXAS LION have been with knowledge of the extensive prior use by
`
`Thompson Law of the LION Marks and Trade Dress.
`
`15.
`
`Thompson Law has priority over Applicant because its use of the LION Marks
`
`and Trade Dress precede Applicant’s filing date for the Application.
`
`16.
`
`Consumers of personal injury legal services, including in Texas, have associated
`
`the term “LION” and the LION Marks and Trade Dress with Thompson Law since prior to
`
`Applicant’s filing date for the Application.
`
`17.
`
`Thompson Law’s LION Marks and Trade Dress had acquired distinctiveness in
`
`
`64471528.4
`
`3
`
`
`
`
`
`the minds of the relevant consumers before Applicant filed the application to register THE
`
`TEXAS LION.
`
`18.
`
`Upon information and belief, Applicant acquired no rights in THE TEXAS LION
`
`in the United States before September 5, 2017.
`
`19.
`
`Upon information and belief, Applicant does not own an application to register
`
`THE TEXAS LION, or any other mark similar to THE TEXAS LION, before September 5,
`
`2017.
`
`20.
`
`Upon information and belief, Applicant does not own an application or
`
`registration in a foreign country for THE TEXAS LION with a filing date prior to September 5,
`
`2017.
`
`21.
`
`services.
`
`22.
`
`The services in the Application are identical or highly related to Thompson Law’s
`
`Upon information and belief, Applicant will provide its services to at least some
`
`of the same users and/or will offer such services to at least some of the same classes of
`
`consumers and through at least some of the same channels of trade as Thompson Law’s services.
`
`23.
`
`Thompson Law and Applicant market and offer their respective services through
`
`the same media outlets, including to residents in Texas.
`
`24.
`
`Upon information and belief, Applicant filed the application to register THE
`
`TEXAS LION after seeing Thompson Law’s advertisements and use of the LION Marks and
`
`Trade Dress.
`
`25.
`
`Upon information and belief, Applicant filed the application to register THE
`
`TEXAS LION with the intention of trading on the goodwill Thompson Law has developed in the
`
`LION Marks and Trade Dress.
`
`
`64471528.4
`
`4
`
`
`
`
`
`26.
`
`Upon information and belief, Applicant filed the application to register THE
`
`TEXAS LION with the intention of deceiving consumers into mistakenly believing that
`
`Applicant is Thompson Law or associated with or sponsored by Thompson Law.
`
`27.
`
`Applicant’s mark is likely to cause confusion, or to cause mistake or to deceive as
`
`to the source of Applicant’s services, leading consumers to believe that Applicant’s services are
`
`those of Thompson Law or are otherwise endorsed, sponsored, or approved by Thompson Law,
`
`or cause confusion, mistake or deception as to the affiliation, connection or association between
`
`Applicant and Thompson Law.
`
`28.
`
`If Applicant is permitted to use and register THE TEXAS LION in connection
`
`with Applicant’s services, confusion in trade resulting in irreparable damage and injury to
`
`Thompson Law would be caused by reason of the similarity between Applicant’s THE TEXAS
`
`LION mark and Thompson Law’s well-known LION Marks and Trade Dress.
`
`29.
`
`Persons familiar with Thompson Law’s LION Marks and Trade Dress would be
`
`likely to use Applicant’s services believing that such services are performed by, endorsed by, or
`
`associated with Thompson Law, which is not the case.
`
`30.
`
`Any objection or fault found with Applicant’s services marketed under THE
`
`TEXAS LION mark would necessarily reflect upon and seriously injure the reputation which
`
`Thompson Law has established for its services performed under its LION Marks and Trade
`
`Dress.
`
`31.
`
`As a result of the aforementioned likelihood of confusion, mistake or deception as
`
`to the source of Applicant’s services, Thompson Law has a direct and personal stake in the
`
`outcome of the proceeding.
`
`
`
`WHEREFORE, Thompson Law prays that this Opposition be sustained, and the
`
`
`64471528.4
`
`5
`
`
`
`Respectfully Submitted,
`
`
`
`/Adam S. Weiss/
`Adam S. Weiss
`Adam C. Rehm
`Paul A. Borovay
`150 N. Riverside Plaza, Suite 3000
`Chicago, Illinois 60606
`uspt@polsinelli.com
`docketing@polsinlli.com
`aweiss@polsinelli.com
`pborovay@polsinelli.com
`arehm@polsinelli.com
`jwillard@polsinelli.com
`
`Attorneys for Opposer,
`Thompson Law LLP
`
`
`
`
`
`
`
`
`
`registration sought by Applicant be refused.
`
`Dated: July 18, 2018
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`64471528.4
`
`6
`
`
`
`
`
`CERTIFICATE OF ELECTRONIC SERVICE
`
`I hereby certify that the foregoing NOTICE OF OPPOSITION was electronically filed using the
`ESTTA system on July 18, 2018.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/ Paul A. Borovay /
`Paul A. Borovay
`150 N. Riverside Plaza
`Suite 3000
`Chicago, Illinois 60606
`
`Attorney for Opposer
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`64471528.4
`
`7
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
