Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA950421
`01/28/2019
`
`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
`
`Glen J. Lerner
`
`02/27/2019
`
`c/o WHITELAW LEGAL GROUP
`3838 Tamiami Trail N., Suite 310
`Naples, FL 34103
`UNITED STATES
`
`JENNIFER L. WHITELAW
`WHITELAW LEGAL GROUP
`3838 Tamiami Trail N., Suite 310
`Naples, FL 34103
`UNITED STATES
`ttabmail@whitelawfirm.com
`no phone number provided
`
`Applicant Information
`
`Application No
`
`87699851
`
`Publication date
`
`10/30/2018
`
`Opposition Filing
`Date
`
`Applicant
`
`01/28/2019
`
`Opposition Peri-
`od Ends
`
`02/27/2019
`
`Ogle, Elrod & Baril PLLC
`Suite 700
`706 Walnut Street
`Knoxville, TN 379022324
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 045. First Use: 2006/00/00 First Use In Commerce: 2006/00/00
`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)
`
`Other
`
`Grounds as more fully set forth in the Notice of
`Opposition filed herein
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`4824793
`
`Application Date
`
`02/12/2014
`
`
`ESTTA950421
`01/28/2019
`
`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
`
`Glen J. Lerner
`
`02/27/2019
`
`c/o WHITELAW LEGAL GROUP
`3838 Tamiami Trail N., Suite 310
`Naples, FL 34103
`UNITED STATES
`
`JENNIFER L. WHITELAW
`WHITELAW LEGAL GROUP
`3838 Tamiami Trail N., Suite 310
`Naples, FL 34103
`UNITED STATES
`ttabmail@whitelawfirm.com
`no phone number provided
`
`Applicant Information
`
`Application No
`
`87699851
`
`Publication date
`
`10/30/2018
`
`Opposition Filing
`Date
`
`Applicant
`
`01/28/2019
`
`Opposition Peri-
`od Ends
`
`02/27/2019
`
`Ogle, Elrod & Baril PLLC
`Suite 700
`706 Walnut Street
`Knoxville, TN 379022324
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 045. First Use: 2006/00/00 First Use In Commerce: 2006/00/00
`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)
`
`Other
`
`Grounds as more fully set forth in the Notice of
`Opposition filed herein
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`4824793
`
`Application Date
`
`02/12/2014
`
`
`
`Registration Date
`
`10/06/2015
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`IN A WRECK NEED A CHECK
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 045. First use: First Use: 1999/00/00 First Use In Commerce: 1999/00/00
`Legal services; Legal services in the field of personal injury and tort claims;Legal
`counseling and advice to others; Providing information to others on legalser-
`vices; Providing information to others on legal services via the internet
`
`U.S. Registration
`No.
`
`4446411
`
`Registration Date
`
`12/10/2013
`
`Application Date
`
`11/02/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`IN A WRECK? NEED A CHECK?
`
`Description of
`Mark
`
`Goods/Services
`
`U.S. Application
`No.
`
`NONE
`
`Class 045. First use: First Use: 2010/11/01 First Use In Commerce: 2010/11/01
`Legal services
`
`86671095
`
`Application Date
`
`06/23/2015
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`FROM WRECK TO CHECK
`
`
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`Attachments
`
`NONE
`
`Class 045. First use: First Use: 0 First Use In Commerce: 0
`Legal services
`
`86191518#TMSN.png( bytes )
`85770221#TMSN.png( bytes )
`86671095#TMSN.png( bytes )
`Notice of Opposition re TURN YOUR WRECK INTO A CHECK
`87699851.pdf(20951 bytes )
`
`Signature
`
`/JENNIFER L. WHITELAW/
`
`Name
`
`Date
`
`JENNIFER L. WHITELAW
`
`01/28/2019
`
`
`
`
`
`
`Opposition No.
`
`
`
`
`
`
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`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
` ______________________________________________________________________
`To the Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, Virginia 22313-1451
`______________________________________________________________________
`In the matter of Application Serial No. 87699851 for the mark TURN YOUR WRECK
`INTO A CHECK, Published in the Official Gazette on October 30, 2018
`
`
`
`GLEN J. LERNER,
`
`
`
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`
`
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` Opposer,
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` v.
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`OGLE, ELROD & BARIL PLLC,
`
`
`
`
`
`
`
`
` Applicant.
`
`
`
`
`
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`
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`NOTICE OF OPPOSITION
`
`
`
`Opposer GLEN J. LERNER (hereinafter “Opposer”), an individual, believes he will be
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`damaged by registration of the mark TURN YOUR WRECK INTO A CHECK, shown in Serial
`
`No. 87699851, filed November 28, 2017 (hereinafter the “Subject Mark”), by OGLE, ELROD
`
`& BARIL PLLC, (hereinafter “Applicant”), and published for opposition in the Official Gazette
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`of October 30, 2018. GLEN J. LERNER hereby opposes registration of the subject application
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`in International Class 045, on the following grounds:
`
`1.
`
`Opposer is a well known and highly successful attorney with a national reputation for
`
`success in the legal profession and one of the largest advertisers of legal services in the
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`United States.
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`2.
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`Opposer owns, among others, the following trademarks, including without limitation, all
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`right, title and interest in and to:
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`
`
`Notice of Opposition to Serial No. 87699851
`Mark: TURN YOUR WRECK INTO A CHECK
`Page 2
`
`
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`IN A WRECK NEED A CHECK, U.S. Registration No. 4824793 for Legal
`services; Legal services in the field of personal injury and tort claims; Legal
`counseling and advice to others; Providing information to others on legal services;
`Providing information to others on legal services via the internet in Class 45;
`
`IN A WRECK? NEED A CHECK? U.S. Registration No. 4446411 for legal
`services in Class 45; and
`
`FROM WRECK TO CHECK, , U.S. Serial No. 86671095 for legal services in
`Class 45 (hereinafter collectively referred to as the “WRECK/CHECK Family of
`Marks”).
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`Opposer’s WRECK/CHECK Family of Marks are all fully valid and legally subsisting
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`3.
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`and, Opposer has invested considerable time and resources in the development of its
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`trademarks, reputation, and goodwill.
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`4.
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`Opposer has used one or more of Opposer’s WRECK/CHECK Family of Marks in the
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`United States since at least as early as 1999, and long prior to any first use date which has
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`been or could be claimed by Applicant.
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`5.
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`Opposer has used all of the marks of Opposer’s WRECK/CHECK Family of Marks in the
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`United States, and the same have each and all come to possess a widely recognizable
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`reputation and favorable brand recognition. By virtue of Opposer’s widely successful
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`efforts and the expenditure of considerable sums for advertising and promotional
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`activities, and by virtue of the excellence of the services associated with Opposer’s
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`WRECK/CHECK Family of Marks, the same have also achieved a valuable reputation,
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`as well as the trust of its consumers.
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`6.
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`Applicant seeks to register the mark TURN YOUR WRECK INTO A CHECK as a
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`trademark for identical services in Class 045, as more fully set forth in the publication of
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`the Subject Mark in the Official Gazette of the United States Patent and Trademark
`
`
`
`Notice of Opposition to Serial No. 87699851
`Mark: TURN YOUR WRECK INTO A CHECK
`Page 3
`
`
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`Office on October 30, 2018. The U.S. Trademark Application Serial No. 87699851 was
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`filed on November 28, 2017 (hereinafter “the Subject Application”).
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`7.
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`The Subject Application should be denied registration pursuant to Section 2(d) of the
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`Trademark Act on the basis of Opposer’s long standing rights and prior registrations and
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`application filing for Opposer’s WRECK/CHECK Family of Marks.
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`8.
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`The Subject Mark also so resembles Opposer’s WRECK/CHECK Family of Marks as to
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`be likely, when applied to the services of Applicant, to cause confusion, mistake, or to
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`deceive consumers as to the source, sponsorship, or approval of Applicant’s services,
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`thereby resulting in detriment to Opposer and its reputation.
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`9.
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`Alternatively, the registration of the Subject Mark as applied for would be a source of
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`damage, harm, and/or injury to Opposer and a source of likely confusion to Opposer’s
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`many clients who rely upon the reputation of the Opposer, the high quality of Opposer’s
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`services, as distinguished by Opposer’s WRECK/CHECK Family of Marks, and because
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`consumers may be caused to mistakenly attribute the source or sponsorship of
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`Applicant’s services to Opposer.
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`
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`WHEREFORE, Opposer, believes that it will be harmed by said registration of the
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`Subject Mark and requests that this Opposition be sustained and registration be refused to
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`Applicant, and Opposer further seeks such other and further relief in the premises as may be
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`deemed just and proper.
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`
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`
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`The required filing fee is submitted herewith.
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`
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`
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`Notice of Opposition to Serial No. 87699851
`Mark: TURN YOUR WRECK INTO A CHECK
`Page 4
`
`
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`Opposer hereby appoints the undersigned in connection herewith.
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`Respectfully submitted,
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`
`
`/JENNIFER L. WHITELAW/
`JENNIFER L. WHITELAW
`WHITELAW LEGAL GROUP
`Attorney for Opposer
`GLEN J. LERNER
`3838 Tamiami Trail North
`Suite 310
`Naples, Florida 34103
`Telephone: (239) 262-1001
`Facsimile: (239) 261-0057
`Email: ttabmail@whitelawfirm.com
`
`
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