Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA942523
`12/19/2018
`
`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
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`RELX Inc.
`
`01/13/2019
`
`9443 Springboro Pike
`Miamisburg, OH 45342
`UNITED STATES
`
`Jered E. Matthysse
`Pirkey Barber PLLC
`600 Congress Ave., Suite 2120
`Austin, TX 78701
`UNITED STATES
`jmatthysse@pirkeybarber.com, darmendariz@pirkeybarber.com,
`eolson@pirkeybarber.com, tmcentral@pirkeybarber.com
`no phone number provided
`
`Applicant Information
`
`Application No
`
`87780322
`
`Publication date
`
`07/17/2018
`
`Opposition Filing
`Date
`
`Applicant
`
`12/19/2018
`
`Opposition Peri-
`od Ends
`
`01/13/2019
`
`METROLEXIS LAW GROUP, PLLC
`900 17th Street, NW., Suite 320
`Washington, DC 20006
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 045. First Use: 2017/08/01 First Use In Commerce: 2017/08/01
`All goods and services in the class are opposed, namely: Legal services; Legal services in the nature
`of trademark monitoring; Legal services, namely, intellectual property consulting services in the field
`of identification, strategy, analytics, and invention; Legal services, namely, preparationof applications
`for trademark registration; Legal services, namely, trademark maintenance services; Legal advisory
`services; Legal advisory services in the field of intellectual property; Legal consultation services; Leg-
`al consulting services in the field of intellectual property; Legal document preparation services; Legal
`information services; Legal information services in the field of intellectual property; Legal research;
`Legal support services; Licensing of intellectual property; Licensing of intellectual property in the field
`of technologies, electronics, mechanics, biotechnology, telecommunications and automotive; Licens-
`ing of patent applications; Licensing of registered designs; Licensing of trademarks;On-site legal ser-
`vices; Patent licensing; Providing legal services in the fieldof intellectual property; Providing informa-
`tion about legal services via a website; Providing information in the field of intellectual property legal
`services;Providing on-line information in the field of intellectual property 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. Registration
`No.
`
`4616512
`
`Registration Date
`
`10/07/2014
`
`Word Mark
`
`Design Mark
`
`LEXIS
`
`Application Date
`
`12/30/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2009/10/31 First Use In Commerce: 2009/10/31
`Downloadable computer application software for mobile devices, namely, com-
`putersoftware offering legal research, news,emerging issues and business in-
`sights, practice management and marketing information and litigation assistance
`
`U.S. Registration
`No.
`
`1020214
`
`Registration Date
`
`09/09/1975
`
`Application Date
`
`06/04/1973
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`LEXIS
`
`NONE
`
`Class 042. First use: First Use: 1972/03/00 First Use In Commerce: 1972/03/00
`COMPUTER ASSISTED LEGAL RESEARCH SERVICES
`
`U.S. Registration
`No.
`
`3803627
`
`Registration Date
`
`06/15/2010
`
`Word Mark
`
`LEXIS
`
`Application Date
`
`01/02/2008
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2007/09/05 First Use In Commerce: 2007/09/05
`downloadable practice management software in the field of law and for use by
`law practices for managing information anddocuments by clients with centralized
`scheduling, legal document management, global searching, conflict checking
`and report generation
`
`U.S. Registration
`No.
`
`2379018
`
`Registration Date
`
`08/22/2000
`
`Word Mark
`
`Design Mark
`
`LEXIS.COM
`
`Application Date
`
`04/08/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 042. First use: First Use: 1999/07/19 First Use In Commerce: 1999/07/19
`Computer services, namely providing an online interactive database featuring
`legal information, information on a wide variety of topics of general interest, ad-
`vertising, news, and research, and maintaining the same
`
`U.S. Registration
`No.
`
`5562203
`
`Registration Date
`
`09/11/2018
`
`Word Mark
`
`LEXIS ANSWERS
`
`Application Date
`
`06/26/2017
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 042. First use: First Use: 2017/06/26 First Use In Commerce: 2017/06/26
`Providing temporary use of online non-downloadable computer software that
`utilizes machine learning, cognitive computing, and natural language processing
`to interpret search queries for legal research
`
`U.S. Registration
`No.
`
`4204884
`
`Registration Date
`
`09/11/2012
`
`Word Mark
`
`Design Mark
`
`LEXIS ADVANCE
`
`Application Date
`
`11/03/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2010/10/04 First Use In Commerce: 2010/10/04
`computer program for integrating legal research applications; computer soft-
`wareapplications, namely, downloadable applications to access legal business
`and news and to store, annotate and share documents all provided online and
`by mobile devices
`Class 038. First use: First Use: 2010/10/04 First Use In Commerce: 2010/10/04
`providing multiple user access to a global computer network
`Class 041. First use: First Use: 2010/10/04 First Use In Commerce: 2010/10/04
`providing news and information in the field of law and business
`Class 042. First use: First Use: 2010/10/04 First Use In Commerce: 2010/10/04
`providing temporary use of online nondownloadable computer software for integ-
`rating legal research applications; computer software applications; and, provid-
`ingtemporary use of computer software applications, namely, law news and gen-
`eral business information to store, annotate and share documents all provided
`online and by mobile devices
`Class 045. First use: First Use: 2010/10/04 First Use In Commerce: 2010/10/04
`public record investigation services
`
`

`

`U.S. Registration
`No.
`
`4440328
`
`Registration Date
`
`11/26/2013
`
`Application Date
`
`06/12/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`LEXIS PRACTICE ADVISOR
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 045. First use: First Use: 2011/01/11 First Use In Commerce: 2011/01/11
`Providing an on-line searchable database containing laws, legal information an-
`ddownloadable legal forms for use in commercial transactions
`
`U.S. Registration
`No.
`
`4440329
`
`Registration Date
`
`11/26/2013
`
`Word Mark
`
`Design Mark
`
`LEXISNEXIS
`
`Application Date
`
`06/12/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 045. First use: First Use: 2011/01/11 First Use In Commerce: 2011/01/11
`Providing an on-line searchable database containing laws, legal information an-
`ddownloadable legal forms for use in commercial transactions
`
`U.S. Registration
`No.
`
`4870137
`
`Registration Date
`
`12/15/2015
`
`Word Mark
`
`LEXISNEXIS
`
`Application Date
`
`04/22/2015
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 016. First use: First Use: 2000/01/31 First Use In Commerce: 2000/01/31
`Books and pamphlets comprising legal indices and other legal information com-
`pilations
`Class 042. First use: First Use: 2000/01/31 First Use In Commerce: 2000/01/31
`Providing temporary use of on-line non-downloadable software used to access
`legal information in the field of legal indices, legal citations verification and other
`legal compilations
`
`U.S. Registration
`No.
`
`4658595
`
`Registration Date
`
`12/23/2014
`
`Word Mark
`
`Design Mark
`
`LEXISNEXIS
`
`Application Date
`
`12/30/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2009/10/31 First Use In Commerce: 2009/10/31
`downloadable computer application software for mobile devices, namely, com-
`putersoftware offering legal research, news,emerging issues and business in-
`sights, practice management and marketing information, and litigation assist-
`ance
`
`U.S. Registration
`No.
`
`3965407
`
`Registration Date
`
`05/24/2011
`
`Word Mark
`
`LEXISNEXIS
`
`Application Date
`
`09/16/2010
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 045. First use: First Use: 2010/08/18 First Use In Commerce: 2010/08/18
`Legal services; online legal services, including legal information online to help
`attorneys and other professionals in the legal field to plan cases, showing results
`in earlier similar cases; services which consist of helping attorneys andother pro-
`fessionals in the legal field to plan cases, providing knowledge of earlier similar
`cases, permitting attorneys and other professionals in the legal field to compare
`the possible results of earlier verdicts and settlements, permitting attorneys and
`other professionals in the legal field to compare possible results of earlier ver-
`dicts and settlements in a question of seconds and permitting attorneys and pro-
`fessionals in the legal sector a better evaluation and strategic planning of cases;
`information services in relation to the foregoing
`
`U.S. Registration
`No.
`
`4474962
`
`Registration Date
`
`01/28/2014
`
`Word Mark
`
`Design Mark
`
`LEXISNEXIS
`
`Application Date
`
`06/20/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 042. First use: First Use: 2012/12/04 First Use In Commerce: 2012/12/04
`Providing online nondownloadable computer software, featuring procurement
`monitoring which tracks information from public news, legal and business data-
`bases and then prioritizes and alerts users to supplier risk in multiple areas of
`exposure, namely, financial, environmental, legal, political, reputation manage-
`ment and product recall risks
`
`U.S. Registration
`No.
`
`4477640
`
`Registration Date
`
`02/04/2014
`
`Application Date
`
`06/13/2013
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Word Mark
`
`Design Mark
`
`LEXISNEXIS
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2008/09/18 First Use In Commerce: 2008/09/18
`Business services, namely, conducting commercial due diligence, namely, busi-
`ness investigations and regulatory compliance inquiries for others
`Class 036. First use: First Use: 2008/09/08 First Use In Commerce: 2008/09/08
`financial due diligence research services
`Class 045. First use: First Use: 2008/09/08 First Use In Commerce: 2008/09/08
`Regulatory compliance monitoring services, namely, monitoring legal compli-
`ance with anti-money laundering and homeland security regulations; Customer
`screeningservices, namely, investigating and researching potential clients on be-
`half of others to ensure compliance with anti-money laundering and homeland
`security regulations
`
`U.S. Registration
`No.
`
`4540171
`
`Registration Date
`
`05/27/2014
`
`Word Mark
`
`Design Mark
`
`LEXISNEXIS
`
`Application Date
`
`05/24/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 045. First use: First Use: 2014/03/28 First Use In Commerce: 2014/03/28
`On-line social networking services for lawyers, legal professionals, corporate
`professionals, law students and academics
`
`U.S. Registration
`No.
`
`5277837
`
`Registration Date
`
`08/29/2017
`
`Application Date
`
`07/14/2016
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`LEXISNEXIS TOTALPATENT ONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 045. First use: First Use: 2016/09/12 First Use In Commerce: 2016/09/12
`Computer services, namely, on-line interactive databases featuring information
`relating to the analysis, evaluation andcreation of patents; providing on on-line
`searchable database in the field of patents and patent applications; searchable
`legal databases
`
`U.S. Registration
`No.
`
`5146301
`
`Registration Date
`
`02/21/2017
`
`Application Date
`
`07/14/2016
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`LEXISNEXIS TOTALPATENT
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 045. First use: First Use: 2005/05/22 First Use In Commerce: 2005/05/22
`Computer services, namely, on-line interactive databases featuring information
`relating to the analysis, evaluation andcreation of patents; providing on on-line
`searchable database in the field of patents and patent applications; searchable
`legal databases
`
`U.S. Registration
`No.
`
`4759226
`
`Registration Date
`
`06/23/2015
`
`Application Date
`
`10/02/2014
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`LEXISNEXIS PATENTOPTIMIZER
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2005/01/31 First Use In Commerce: 2005/01/31
`Computer software for creating searchable databases of information and data;
`Computer software for document management;Computer software for the ana-
`lysis of information and data relating to patents;Computer software development
`tools in relation to patents; Computer software for data mining, data query, data
`processing and data analysis; computer softwarefor creating searchable data-
`bases of information and data; computer software that provides access to data-
`bases and website of information on a wide range of topics for searching in the
`field of law
`Class 042. First use: First Use: 2005/01/31 First Use In Commerce: 2005/01/31
`Design services relating to data processing tools; Providing an interactive web-
`site featuring technology that allows users to enter, access, and synthesize in-
`formation and generate reports for use inthe legal field
`Class 045. First use: First Use: 2005/01/31 First Use In Commerce: 2005/01/31
`Computer services, namely, on-line interactive databases featuring information
`relating to the analysis, evaluation andcreation of patents; Legal services, in-
`cluding legal research, representation, assistance, analysis, information and
`consultancy, in particular in the fields of patent, patent prosecution and patent lit-
`igation; provision of information andguidance in relation to patents; providing a
`web site featuring information about patents and patent applications; legal re-
`search and monitoring in the field of laws on patents, and other rights, andcon-
`sultancy thereon; legal support related services, namely, litigation support, and
`case law research in the field of patent prosecution and patent litigation; provid-
`ing an online searchable database in the legal field, customized computer
`desktop legal research services, litigation support services; providing on-line in-
`teractive databases featuring legal information and legal resources and featuring
`hyperlinks to websites in the field of law and to supporting legal information such
`as legislation, cases, cases studies, articles, practice notes, check lists, forms,
`precedents, resources and authoritative references
`
`U.S. Registration
`No.
`
`4780500
`
`Registration Date
`
`07/28/2015
`
`Application Date
`
`08/08/2014
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`LEXISNEXIS PATENTADVISOR
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 042. First use: First Use: 2013/01/01 First Use In Commerce: 2013/01/01
`Design and development of computer databases which provide scientific and
`patent information; provision of temporary use of non-downloadable computer
`software for the purpose of performing searches in databases relating to pat-
`ents; providing non-downloadable software via the Internet, which allows cus-
`tomers access to results from searches of databases containing patent and sci-
`entific information
`Class 045. First use: First Use: 2013/01/01 First Use In Commerce: 2013/01/01
`Providing information relating to legalaffairs in the field of patents; Providing on-
`line information relating to legalaffairs in the field of patents; Providing an online
`searchable database in thefield of patents and patent applications; online legal
`services, including legal information online to help attorneys and other profes-
`sionals in the field of patents to plan cases, showing results inearlier similar
`cases; Legal research and monitoring in the field of patents and consultancy
`thereon; Legal, legislative and case-law monitoring, in particularin the field of
`patents; Computer services, namely, on-line interactive databases featuring in-
`formation relating to theanalysis, evaluation and creation of patents; services of
`information and communication technology specialists, namely providing inform-
`ation and data via online computer database for data compiling and analytics in
`the field of patents
`
`U.S. Registration
`No.
`
`1684174
`
`Registration Date
`
`04/21/1992
`
`Application Date
`
`03/12/1990
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`LEXCITE
`
`NONE
`
`Class 042. First use: First Use: 1991/04/21 First Use In Commerce: 1991/04/21
`COMPUTER ASSISTED LEGAL RESEARCH SERVICES
`
`U.S. Registration
`No.
`
`4544986
`
`Registration Date
`
`06/03/2014
`
`Word Mark
`
`LEXTALK
`
`Application Date
`
`05/24/2013
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`Attachments
`
`NONE
`
`Class 045. First use: First Use: 2014/03/28 First Use In Commerce: 2014/03/28
`On-line social networking services for lawyers, legal professionals, corporate
`professionals, law students and academics
`
`86154056#TMSN.png( bytes )
`77362489#TMSN.png( bytes )
`75678110#TMSN.png( bytes )
`87505601#TMSN.png( bytes )
`85463604#TMSN.png( bytes )
`85957715#TMSN.png( bytes )
`85957756#TMSN.png( bytes )
`86606009#TMSN.png( bytes )
`86154272#TMSN.png( bytes )
`85130854#TMSN.png( bytes )
`85964856#TMSN.png( bytes )
`85958933#TMSN.png( bytes )
`85941808#TMSN.png( bytes )
`87104471#TMSN.png( bytes )
`87104770#TMSN.png( bytes )
`86413110#TMSN.png( bytes )
`86361208#TMSN.png( bytes )
`85941781#TMSN.png( bytes )
`Dkt 1 - Notice of Opposition.pdf(1535304 bytes )
`
`Signature
`
`/JEM/
`
`Name
`
`Date
`
`Jered E. Matthysse
`
`12/19/2018
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`Opposition No. __________________
`
`
`
`
` §
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`
`In Re Serial No. 87/780,322
`Filed: February 1, 2018
`Mark: M METROLEXIS LAW GROUP
`& Design
`Published: July 17, 2018
`
`RELX INC.,
`
`
`
`
`
`METROLEXIS LAW GROUP, PLLC,
`
`
`
`
`
`
`Applicant.
`
`Opposer,
`
`
`
`v.
`
`NOTICE OF OPPOSITION
`
`RELX Inc. (“Opposer”), a Massachusetts corporation having a place of business at 9443
`
`Springboro Pike, Miamisburg, Ohio 45342, believes that it will be damaged by registration of
`
`the mark shown in U.S. Serial No. 87/780,322 and hereby opposes same under the provisions of
`
`15 U.S.C. § 1063. As grounds for opposition, Opposer asserts the following:
`
`1.
`
`Opposer, through its predecessors-in-interest and licensees, is engaged in the
`
`business, inter alia, of offering a wide range of online and internet-based, computer-assisted
`
`research and information services for the legal field, including software and applications for
`
`litigation, discovery, research, depositions, and document management. These services include
`
`law firm management solutions and intellectual property solutions for law firms.
`
`2.
`
`For over forty years, Opposer, through its predecessors-in-interest and licensees,
`
`has continuously offered in commerce online information and research services under the LEXIS
`
`

`

`mark. Opposer offers a range of products and services for the support and furtherance of legal
`
`operations under the mark LEXIS and LEXIS composite marks (the “LEXIS Marks”).
`
`3.
`
`For over thirty years, Opposer, through its predecessors-in-interest and licensees,
`
`has continuously used in commerce various marks comprising, in whole or in part, the mark
`
`LEXISNEXIS (collectively, the “LEXISNEXIS Marks”) for its online research and information
`
`services and products, with many such services and products being for the support and
`
`furtherance of legal operations.
`
`4.
`
`For many years, Opposer, through its predecessors-in-interest and licensees, has
`
`also offered a wide range of legal services and products under marks containing the mark LEX,
`
`including but not limited to LEXCITE, LEXTALK, and LEXID (the “LEX Marks”). Opposer’s
`
`use of the LEX Marks constitutes a family of LEX composite marks in the legal services and
`
`products field that are associated with Opposer. The LEX Marks are used in close association
`
`with the LEXIS Marks and the LEXISNEXIS Marks.
`
`5.
`
`Opposer is the owner of numerous federal trademark registrations for the LEXIS
`
`Marks, LEXISNEXIS Marks, and LEX Marks, including, but not limited to, the following:
`
`MARK
`
`REG.
`NO.
`
`DATE
`
`GOODS/SERVICES
`
`LEXIS
`
`4,616,512
`
`10/7/14 Downloadable computer application software
`for mobile devices, namely, computer software
`offering legal research, news, emerging issues
`and business insights, practice management
`and marketing
`information and
`litigation
`assistance
`
`LEXIS
`
`LEXIS
`
`
`
`
`
`1,020,214
`
`9/9/75 Computer assisted legal research services
`
`3,803,627
`
`12/9/08 Downloadable practice management software
`in the field of law and for use by law practices
`for managing information and documents by
`
`-2-
`
`

`

`MARK
`
`REG.
`NO.
`
`DATE
`
`GOODS/SERVICES
`
`LEXIS.COM
`
`2,379,018
`
`LEXIS ANSWERS
`
`5,562,203
`
`LEXIS ADVANCE
`
`4,204,884
`
`legal
`clients with centralized scheduling,
`document management, global
`searching,
`conflict checking and report generation
`
`8/22/00 Computer services, namely providing an
`online interactive database featuring legal
`information, information on a wide variety of
`topics of general interest, advertising, news,
`and research, and maintaining the same
`
`temporary use of online non-
`9/11/18 Providing
`downloadable computer software that utilizes
`machine learning, cognitive computing, and
`natural language processing to interpret search
`queries for legal research
`
`legal
`integrating
`for
`9/11/12 Computer program
`research applications; computer
`software
`applications,
`namely,
`downloadable
`applications to access legal business and news
`and to store, annotate and share documents all
`provided online and by mobile devices;
`providing multiple user access to a global
`computer network;
` providing news and
`information in the field of law and business;
` providing
`temporary use of online non-
`downloadable
`computer
`software
`for
`integrating
`legal
`research
`applications;
`computer software applications; and, providing
`temporary
`use
`of
`computer
`software
`applications, namely, law news and general
`business information to store, annotate and
`share documents all provided online and by
`mobile devices; public record investigation
`services
`
`LEXIS PRACTICE
`ADVISOR
`
`4,440,328 11/26/13 Providing an on-line searchable database
`containing
`laws,
`legal
`information and
`downloadable
`legal
`forms
`for use
`in
`commercial transactions
`
`LEXISNEXIS
`
`4,440,329 11/26/13 Providing an on-line searchable database
`containing
`laws,
`legal
`information and
`
`
`
`
`
`-3-
`
`

`

`MARK
`
`REG.
`NO.
`
`DATE
`
`GOODS/SERVICES
`
`LEXISNEXIS
`
`LEXISNEXIS
`
`forms
`legal
`downloadable
`commercial transactions
`
`for use
`
`in
`
`temporary use of on-line non-
`4,870,137 12/15/15 Providing
`downloadable software used to access legal
`information in the field of legal indices, legal
`citations
`verification
`and
`other
`legal
`compilations
`
`4,658,595 12/23/14 Downloadable computer application software
`for mobile devices, namely, computer software
`offering legal research, news, emerging issues
`and business insights, practice management
`and marketing
`information, and
`litigation
`assistance
`
`LEXISNEXIS
`
`3,965,407
`
`LEXISNEXIS
`
`4,474,962
`
`5/24/11 Legal services; online legal services, including
`legal information online to help attorneys and
`other professionals in the legal field to plan
`cases, showing results in earlier similar cases;
`services which consist of helping attorneys and
`other professionals in the legal field to plan
`cases, providing knowledge of earlier similar
`cases,
`permitting
`attorneys
`and
`other
`professionals in the legal field to compare the
`possible
`results of earlier verdicts and
`settlements, permitting attorneys and other
`professionals in the legal field to compare
`possible
`results of earlier verdicts and
`settlements in a question of seconds and
`permitting attorneys and professionals in the
`legal sector a better evaluation and strategic
`planning of cases; information services in
`relation to the foregoing
`
`1/28/14 Providing online nondownloadable computer
`software, featuring procurement monitoring
`which tracks information from public news,
`legal and business databases and
`then
`prioritizes and alerts users to supplier risk in
`multiple areas of exposure, namely, financial,
`environmental,
`legal, political,
`reputation
`management and product recall risks
`
`
`
`
`
`-4-
`
`

`

`MARK
`
`REG.
`NO.
`
`DATE
`
`GOODS/SERVICES
`
`LEXISNEXIS
`
`4,477,640
`
`LEXISNEXIS
`
`4,540,171
`
`LEXISNEXIS
`TOTALPATENT
`ONE
`
`5,277,837
`
`LEXISNEXIS
`TOTALPATENT
`
`5,146,301
`
`LEXISNEXIS
`PATENTOPTIMIZER
`
`4,759,226
`
`
`
`
`
`2/4/14 Regulatory compliance monitoring services,
`namely, monitoring legal compliance with
`anti-money laundering and homeland security
`regulations; Customer screening services,
`namely, investigating and researching potential
`clients on behalf of others
`to ensure
`compliance with anti-money laundering and
`homeland security regulations
`
`5/27/14 On-line social networking services for lawyers,
`legal professionals, corporate professionals,
`law students and academics
`
`8/29/17 Computer services, namely, on-line interactive
`databases featuring information relating to the
`analysis, evaluation and creation of patents;
`providing on on-line searchable database in the
`field of patents and patent applications;
`searchable legal databases
`
`2/21/17 Computer services, namely, on-line interactive
`databases featuring information relating to the
`analysis, evaluation and creation of patents;
`providing on on-line searchable database in the
`field of patents and patent applications;
`searchable legal databases
`
`6/23/15 Computer services, namely, on-line interactive
`databases featuring information relating to the
`analysis, evaluation and creation of patents;
`Legal services,
`including
`legal
`research,
`representation,
`assistance,
`analysis,
`information and consultancy, in particular in
`the fields of patent, patent prosecution and
`patent litigation; provision of information and
`guidance in relation to patents; providing a
`web site featuring information about patents
`and patent applications; legal research and
`monitoring in the field of laws on patents, and
`other rights, and consultancy thereon; legal
`support related services, namely, litigation
`support, and case law research in the field of
`patent prosecution and patent
`litigation;
`
`-5-
`
`

`

`MARK
`
`REG.
`NO.
`
`DATE
`
`GOODS/SERVICES
`
`LEXISNEXIS
`PATENTOPTIMIZER
`
`4,780,500
`
`providing an online searchable database in the
`legal field, customized computer desktop legal
`research services, litigation support services;
`providing
`on-line
`interactive
`databases
`featuring legal information and legal resources
`and featuring hyperlinks to websites in the
`field of
`law and
`to
`supporting
`legal
`information such as legislation, cases, cases
`studies, articles, practice notes, check lists,
`forms, precedents, resources and authoritative
`references
`
`7/28/15 Providing information relating to legal affairs
`in the field of patents; Providing online
`information relating to legal affairs in the field
`of patents; Providing an online searchable
`database in the field of patents and patent
`applications; online legal services, including
`legal information online to help attorneys and
`other professionals in the field of patents to
`plan cases, showing results in earlier similar
`cases; Legal research and monitoring in the
`field of patents and consultancy thereon;
`Legal, legislative and case-law monitoring, in
`particular in the field of patents; Computer
`services, namely, on-line interactive databases
`featuring information relating to the analysis,
`evaluation and creation of patents; services of
`information and communication technology
`specialists, namely providing information and
`data via online computer database for data
`compiling and analytics in the field of patents
`
`LEXCITE
`
`1,684,174
`
`4/21/92 Computer assisted legal research services
`
`LEXTALK
`
`4,544,986
`
`6/3/14 On-line social networking services for lawyers,
`legal professionals, corporate professionals,
`law students and academics
`
`
`
`
`
`
`
`-6-
`
`

`

`These registrations are valid and subsisting, and several are incontestable pursuant to 15 U.S.C.
`
`§ 1065. Copies of the above registrations from the U.S. Patent and Trademark Office database,
`
`showing the status and title of the registrations, are attached hereto as Exhibit A.
`
`6.
`
`Opposer, through its predecessors-in-interest and licensees, has prominently and
`
`extensively used, promoted, and advertised its LEXIS Marks, LEXISNEXIS Marks, and LEX
`
`Marks (collectively, “Opposer’s Marks”) for legal-related products and services for over a
`
`quarter century through varied promotional and advertising media.
`
`7.
`
`Because of Opposer’s extensive investment and effort in promoting Opposer’s
`
`Marks, the marks have become strong and well-known for the provision of information and
`
`solutions in the legal field, and such marks are uniquely associated with Opposer. Opposer owns
`
`valuable goodwill in each of Opposer’s Marks.
`
`8.
`
`METROLEXIS LAW GROUP, PLLC (“Applicant”) is a limited liability
`
`company with a place of business at 900 17th Street, NW, Suite 320, Washington, DC 20006.
`
`Applicant filed U.S. Ser. No. 87/780,322 (the “Application”) pursuant to 15 U.S.C. § 1051(a) on
`
`February 1, 2018 for the mark M METROLEXIS LAW GROUP & Design covering the below
`
`services in Class 45:
`
`Legal services; Legal services in the nature of trademark monitoring; Legal
`services, namely, intellectual property consulting services in the field of
`identification, strategy, analytics, and
`invention; Legal services, namely,
`preparation of applications for trademark registration; Legal services, namely,
`trademark maintenance services; Legal advisory services; Legal advisory services
`in the field of intellectual property; Legal consultation services; Legal consulting
`services in the field of intellectual property; Legal document preparation services;
`Legal information services; Legal information services in the field of intellectual
`property; Legal research; Legal support services; Licensing of intellectual
`property; Licensing of intellectual property in the field of technologies,
`electronics, mechanics, biotechnology, telecommunications and automotive;
`Licensing of patent applications; Licensing of registered designs; Licensing of
`trademarks; On-site legal services; Patent licensing; Providing legal services in
`the field of intellectual property; Providing information about legal services via a
`
`
`
`
`
`-7-
`
`

`

`website; Providing information in the field of intellectual property legal services;
`Providing on-line information in the field of intellectual property legal services.
`
`9.
`
`Opposer has priority based on its prior use and registration of Opposer’s Marks in
`
`the United States.
`
`10.
`
`Applicant’s services are identical, or nearly identical, to the services for which
`
`Opposer has long used and registered Opposer’s Marks.
`
`11.
`
`Upon information and belief, Applicant’s services travel in the same or similar
`
`channels of trade as Opposer’s services and will be purchased by the same or similar types of
`
`consumers who purchase or use Opposer’s goods and services.
`
`12.
`
`Opposer has not given Applicant permission or approval to use or register the
`
`mark M METROLEXIS LAW GROUP & Design.
`
`13.
`
`Applicant’s mark M METROLEXIS LAW GROUP & Design so resembles
`
`Opposer’s previously used and registered Opposer’s Marks such as to be likely, when used in
`
`connection with the services identified in the Application, to cause confusion, or to cause
`
`mistake, or to deceive. Registration therefore should be refused under 15 U.S.C. § 1052(d).
`
`14.
`
`Registration of Applicant’s mark M METROLEXIS LAW GROUP & Design on
`
`the Principal Register would damage Opposer because it would confer upon Applicant statutory
`
`presumptions to which Applicant is not entitled in view of Opposer’s longstanding prior use and
`
`registration of Opposer’s Marks.
`
` WHEREFORE, Opposer requests that U.S. Serial No. 87/780,322 be rejected, and that
`
`registration of the mark therein be refused.
`
`This Notice of Oppositi