Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1006210
`10/02/2019
`
`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
`
`Tessmer Law Firm PLLC
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`10/02/2019
`
`7800 IH-10 WEST, SUITE 830
`SAN ANTONIO, TX 78230
`UNITED STATES
`
`MARSHA G. GENTNER
`DYKEMA GOSSETT PLLC
`1301 K Street, NW, Suite 1100 West
`Washington, DC 20005
`UNITED STATES
`dharkins@dykema.com, swilson@dykema.com, mgentner@dykema.com,
`Dykema-TM@dykema.com
`2029068611
`
`Applicant Information
`
`Application No
`
`88304158
`
`Publication date
`
`06/04/2019
`
`Opposition Filing
`Date
`
`Applicant
`
`10/02/2019
`
`Opposition Peri-
`od Ends
`
`10/02/2019
`
`Melissa A. Wilson
`620 Polk Street, Building 9
`Bartow, FL 33810
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 045. First Use: 2008/01/01 First Use In Commerce: 2008/01/01
`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)
`
`No use of mark in commerce before application
`or amendment to allege use was filed
`
`Trademark Act Sections 1(a) and (c)
`
`Failure to function as a mark
`
`Trademark Act Sections 1, 2 and 45
`
`Fraud on the USPTO
`
`In re Bose Corp., 580 F.3d 1240, 91 USPQ2d
`1938 (Fed. Cir. 2009)
`
`
`ESTTA1006210
`10/02/2019
`
`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
`
`Tessmer Law Firm PLLC
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`10/02/2019
`
`7800 IH-10 WEST, SUITE 830
`SAN ANTONIO, TX 78230
`UNITED STATES
`
`MARSHA G. GENTNER
`DYKEMA GOSSETT PLLC
`1301 K Street, NW, Suite 1100 West
`Washington, DC 20005
`UNITED STATES
`dharkins@dykema.com, swilson@dykema.com, mgentner@dykema.com,
`Dykema-TM@dykema.com
`2029068611
`
`Applicant Information
`
`Application No
`
`88304158
`
`Publication date
`
`06/04/2019
`
`Opposition Filing
`Date
`
`Applicant
`
`10/02/2019
`
`Opposition Peri-
`od Ends
`
`10/02/2019
`
`Melissa A. Wilson
`620 Polk Street, Building 9
`Bartow, FL 33810
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 045. First Use: 2008/01/01 First Use In Commerce: 2008/01/01
`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)
`
`No use of mark in commerce before application
`or amendment to allege use was filed
`
`Trademark Act Sections 1(a) and (c)
`
`Failure to function as a mark
`
`Trademark Act Sections 1, 2 and 45
`
`Fraud on the USPTO
`
`In re Bose Corp., 580 F.3d 1240, 91 USPQ2d
`1938 (Fed. Cir. 2009)
`
`
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Application/ Registra-
`tion No.
`
`Registration Date
`
`Word Mark
`
`Goods/Services
`
`NONE
`
`NONE
`
`Application Date
`
`NONE
`
`EVER ARGUE WITH A WOMAN?
`
`legal services
`
`Attachments
`
`Notice of Opposition 88304158.pdf(21109 bytes )
`
`Signature
`
`/Marsha G. Gentner/
`
`Name
`
`Date
`
`MARSHA G. GENTNER
`
`10/02/2019
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`TESSMER LAW FIRM PLLC,
`
`Opposer,
`
`v.
`
`MELISSA A. WILSON,
`
`Applicant.
`
`)
`)
`)
`) OPPOSITION NO.
`)
`)
`)
`)
`)
`
`NOTICE OF OPPOSITION
`
`In the matter of an application to register a service mark under the Trademark Act of 1946,
`
`serial no. 88304158, filed February 15, 2019, for the mark EVER ARGUE WITH A WOMAN?, in
`
`the name of Melissa A. Wilson, and published for opposition on June 4, 2019, the Opposer,
`
`Tessmer Law Firm PLLC, believes it will be damaged by the registration of said alleged service
`
`mark and hereby opposes same. The grounds for opposition are as follows:
`
`1.
`
`The Opposer, Tessmer Law Firm PLLC, is a professional limited liability company
`
`duly organized and existing under the laws of the state of Texas, and having its place of business at
`
`800 IH-10 West, Suite 830, San Antonio, Texas.
`
`2.
`
`Opposer is a “full-service” law firm – assisting clients through every facet of legal
`
`representation in family law, estate planning, and personal injury cases. Opposer is located in
`
`Texas, and has been providing legal services in the state of Texas since at least 2005. Each of the
`
`attorneys who provide legal services on behalf of Opposer are licensed to practice by the State Bar
`
`of Texas.
`
`
`
`3.
`
`Since at least 2011, and long prior to the filing date of the application opposed
`
`herein and/or any bona fide and lawful use in commerce by Applicant of the mark opposed herein
`
`in connection with legal services, Opposer continuously has used the service mark EVER ARGUE
`
`WITH A WOMAN? to identify its legal services provided in the State of Texas and to distinguish
`
`those services with those of others. As a result of such use, since long prior to the filing date of the
`
`application opposed herein and/or any bona fide and lawful use in commerce by Applicant of the
`
`mark opposed herein in connection with legal services, the mark EVER ARGUE WITH A
`
`WOMAN? has come to be known and identified by the relevant purchasing public in Texas with
`
`Opposer and/or the services rendered by, and business of, Opposer in Texas.
`
`4.
`
`Opposer is the owner of Texas Trademark Registration No. 802981081 for the
`
`mark EVER ARGUE WITH A WOMAN?, which issued on May 23, 2018, for “legal services” in
`
`Class 45 (the “Tessmer Texas Registration”).
`
`5.
`
`On information and belief, Applicant is an individual residing in Florida. On
`
`information and belief, Applicant is not, and/or as of at least the filing date of the application
`
`opposed herein was not, licensed to practice law in the State of Texas.
`
`Count I – Likelihood of Confusion
`
`6.
`
`Opposer restates and realleges ¶¶ 1 through 5, above, of this Notice of Opposition,
`
`and hereby incorporates same as if fully set forth herein.
`
`7.
`
`Applicant does not now provide, and at no time from prior to 2011 through the
`
`present has Applicant provided, legal services in the State of Texas under and/or in connection
`
`with the opposed EVER ARGUE WITH A WOMAN? mark. Indeed, because Applicant is not
`
`licensed to practice law in Texas, any such use, if it did occur, would not be a lawful use.
`
`2
`
`
`
`8.
`
`Any rights which Applicant may have in and to the opposed EVER ARGUE WITH
`
`A WOMAN? mark based on alleged use by Applicant of that mark for legal services do not extend
`
`to the State of Texas, where Opposer is the long prior, exclusive, and continuous user (vis-à-vis
`
`Applicant) of Opposer’s EVER ARGUE WITH A WOMAN? service mark for legal services
`
`lawfully provided in Texas.
`
`9.
`
`Confusion, mistake, or deception is likely to result from the use by Applicant of the
`
`opposed EVER ARGUE WITH A WOMAN? mark in Texas vis-à-vis Opposer and its long prior
`
`and continuous use of it EVER ARGUED WITH A WOMAN? mark in Texas for legal services
`
`provided there, and there are no conditions and/or limitations as to the mode or place of use of the
`
`opposed EVER ARGUE WITH A WOMAN? mark by Applicant set forth in the application
`
`opposed herein.
`
`10.
`
`By reason of the foregoing, ¶¶ 1 through 9, inclusive above, registration of the
`
`opposed application should be denied pursuant to §2(d) of the Trademark Act, §1052d.
`
`Count II – The Opposed Application is Void Ab Initio
`
`11.
`
`Opposer restates and realleges ¶¶ 1 through 10, above, of this Notice of Opposition,
`
`and hereby incorporates same as if fully set forth herein.
`
`12.
`
`The application opposed herein is based on use in commerce of the EVER ARGUE
`
`WITH A WOMAN? mark for the services identified in the application, and sets forth the date of
`
`first use in commerce of that opposed mark, as January 1, 2008. On information and belief,
`
`however, Applicant was not using, and did not have any bona fide lawful use in commerce of, the
`
`opposed EVER ARGUE WITH A WOMAN? mark in connection with legal services, as of the
`
`February 15, 2019 filing date of the opposed application.
`
`3
`
`
`
`13.
`
`Further, on information and belief, as of the February 15, 2019 filing date of the
`
`opposed application, Applicant constructively abandoned any rights in the opposed EVER
`
`ARGUE WITH A WOMAN? service mark for legal services which Applicant may have had by
`
`the failure to control the nature and quality of the legal services offered under said mark by
`
`purported authority and/or license of Applicant.
`
`14.
`
`By reason of the foregoing, ¶¶12-13, above, opposed application serial no.
`
`88304158, is void ab initio, as the EVER ARGUE WITH A WOMAN? mark of said §1(a) based
`
`application was not in lawful use in commerce as of the filing date of that application.
`
`Count III – Failure to Function as a Source Indicating Service Mark
`
`15.
`
`Opposer restates and realleges ¶¶ 1 through 14, above, of this Notice of Opposition,
`
`and hereby incorporates same as if fully set forth herein.
`
`16.
`
`The EVER ARGUE WITH A WOMAN? designation as shown in the specimen
`
`submitted in the opposed application, as allegedly used by Applicant, is merely informational or
`
`ornamental matter, and/or does not identify the legal services set forth in the opposed application
`
`nor distinguish them from the services of others, and/or is not used in a manner to indicate the
`
`source of the recited services, and/or that creates in the minds of potential consumers a direct
`
`association between the opposed mark and the services set forth in the opposed application.
`
`17.
`
`By reason of the foregoing, ¶ 16, above, the opposed NEVER ARGUE WITH A
`
`WOMAN? designation does not function as a source-indicating service mark identifying the
`
`services recited in the opposed application, and/or is not used by Applicant as a service mark for
`
`the services recited in the opposed application, rendering such mark not registrable under §§ 1, 2, 3
`
`and 45 of the Trademark Act.
`
`4
`
`
`
`Count IV – Fraud
`
`18.
`
`Opposer restates and realleges ¶¶ 1through 17, inclusive, above, of this Notice of
`
`Opposition, and hereby incorporates same as if fully set forth herein.
`
`19.
`
`On information and belief, as of the filing date of application serial no. 88304158,
`
`Applicant knew that her claim of bona fide lawful use in commerce in the ordinary course of trade,
`
`of the NEVER ARGUE WITH A WOMAN? mark in connection with legal services as set forth in
`
`that application, was false; and further on information and belief, Applicant made such false claim
`
`of use in commerce with intent to deceive, to reserve a mark, and to obtain a registration to which
`
`Applicant knew she was not entitled.
`
`20.
`
`On information and belief, as of the filing date of application serial no. 88304158,
`
`Applicant knew that her claim in such application as filed that “[t]he applicant is submitting one(or
`
`more) specimen(s) showing the mark as used in commerce on or in connection with any item in the
`
`class of listed goods/services, consisting of a(n) screenshot of Applicant's Facebook page
`
`displaying the mark and advertising legal services” of Applicant, and that said “specimen(s)
`
`shows the mark as used on or in connection with the goods/services in the application,” was false
`
`as, on information and belief; Applicant created such “specimen” solely for purposes of filing the
`
`opposed application and securing registration thereon, and further on information and belief,
`
`Applicant made such false claims regarding such “specimen” with intent to deceive, to reserve a
`
`mark, and to obtain a registration to which Applicant knew she was not entitled.
`
`21.
`
`According to Applicant, she has been aware of Opposer’s use of its EVER ARGUE
`
`WITH A WOMAN? mark in Texas, since at least April 2014, and on information and belief,
`
`Applicant was aware of the Tessmer Texas Registration of Opposer for its EVER ARGUE WITH
`
`5
`
`
`
`A WOMAN? mark at least prior to February 15, 2019. Nevertheless, Applicant declared in
`
`application serial no. 88304158 when filed on February 15, 2019, that “[t]o the best of
`
`[Applicant]’s knowledge and belief, no other persons, except, if applicable, concurrent users, have
`
`the right to use the mark in commerce, either in identical form or in such near resemblance as to be
`
`likely, when used on or in connection with the goods/services of such other persons, to cause
`
`confusion or mistake, or to deceive,” when, in fact, Applicant knew such representation to be false,
`
`and that as of February 15, 2015, Opposer did have the right to use the EVER ARGUE WITH A
`
`WOMAN? mark in connection with legal services.
`
`22.
`
` By reasons of the foregoing, ¶¶19, 20 and 21, above, of this Notice of Opposition,
`
`Applicant has committed fraud on the U.S. Patent and Trademark Office, and therefore is not
`
`entitled to obtain registration on the opposed application.
`
`Damage
`
`23.
`
`Opposer believes that it will be damaged by the registration by Applicant of the
`
`EVER ARGUE WITH A WOMAN? mark for the services as set forth in the opposed application,
`
`and that if registration on the opposed application is granted, and the presumptions and
`
`unrestricted nationwide rights accorded to such registration are conferred under the Trademark Act
`
`of 1946, as amended, Applicant will receive benefits to which she is not entitled, to the damage
`
`and detriment of Opposer, and its EVER ARGUE WITH A WOMAN? mark and business.
`
`WHEREFORE, this Opposer, TESSMER LAW FIRM PLLC, prays that:
`
`a)
`
`judgment in the present consolidate opposition be entered in favor of Opposer, on
`
`each of Counts I through IV, inclusive;
`
`b)
`
`the opposition to application serial no. 88304158 be sustained; and
`
`6
`
`
`
`c)
`
`registration of application serial no. 88304158 be rejected and refused.
`
`Date: October 2, 2019
`
`By:
`
`Respectfully submitted,
`
`TESSMER LAW FIRM PLLC
`
` /Marsha G, Gentner/
`Marsha G. Gentner
`J. Daniel Harkins
`Sherri Wilson
`DYKEMA GOSSET PLLC
`1301 K Street, N.W.
`Suite 1100 West
`Washington, D.C. 20005
`(202) 906-8611
`Dykema-TM@dykema.com
`mgentner@jdykema.com
`dharkins@dykema.com
`swilson@dykema.com
`
`7
`
`
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