Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1049667
`04/17/2020
`
`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
`
`Entity
`
`Address
`
`Correspondence
`information
`
`Megahed, Esquire Inc.
`
`Corporation
`
`Citizenship
`
`California
`
`888 Prospect Street
`Suite 200
`La Jolla, CA 92037
`UNITED STATES
`
`Jylan Megahed
`President
`Megahed, Esquire Inc.
`888 Prospect Street
`Suite 200
`La Jolla, CA 92037
`UNITED STATES
`jylan@megahedesq.com
`8587618661
`
`Applicant Information
`
`Application No
`
`88638339
`
`Publication date
`
`03/31/2020
`
`Opposition Filing
`Date
`
`Applicant
`
`04/17/2020
`
`Torem & Associates
`1607 Pontius Avenue
`Los Angeles, CA 90025
`UNITED STATES
`
`Opposition Peri-
`od Ends
`
`04/30/2020
`
`Goods/Services Affected by Opposition
`
`Class 045. First Use: 2019/09/30 First Use In Commerce: 2019/09/30
`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)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Application
`No.
`
`88875403
`
`Application Date
`
`Registration Date
`
`NONE
`
`Foreign Priority
`
`NONE
`
`

`

`Date
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`NONE
`
`Attachments
`
`04172020_FINAL Notice of Opposition .pdf(900532 bytes )
`
`Signature
`
`Name
`
`Date
`
`/Jylan Megahed/
`
`Jylan Megahed
`
`04/17/2020
`
`

`

`
`
`
`
`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
`Address
`
`Megahed, Esquire Inc.
`888 Prospect Street
`Suite 200
`La Jolla, CA 92037
`UNITED STATES
`
`
`APPLICATION INFORMATION
`Application
`No.
`
`Opposition
`Filing Date
`
`Applicant
`
`88638339
`
`April 17,
`2020
`
`March
`31,
`2020
`
`April
`30,
`2020
`
`Publication
`in the
`Official
`Gazette
`Date
`Opposition
`Period
`Ends
`Torem & Associates
`1607 Pontius Avenue
`Los Angeles, CA 90025
`UNITED STATES
`
`
`
`GOODS/SERVICES AFFECTED BY OPPOSITION
`Class 045. First Use: September 30, 2019. First Use in Commerce: September 30, 2019.
`All goods and services in the class are opposed, namely: Legal Services.
`
`
`GROUNDS FOR OPPOSITION
`Priority and likelihood of confusion.
`
`
`MARKS CITED BY OPPOSER as BASIS FOR OPPOSITION
`Application
`88875403
`No.
`
`NONE
`
`Registration
`No.
`
`Word Mark
`
`Attachments
`
`Signature
`Name
`
`
`
`
`
`April
`16,
`2020
`NONE
`
`Trademark Act § 2(d)
`
`Application
`Date
`
`Foreign
`Priority
`Date
`LEGAL WARRIORS
`
`
`
`/Jylan Megahed/
`Megahed, Jylan M.
`
`

`

`Position
`Date
`
`President
`04/17/2020
`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter trademark application U.S. Serial Number 88638339
`For the mark “LEGAL WARRIORS”
`Published in the Official Gazette on March 31, 2020
`
`
`Opposition No.: ________________
`
`NOTICE OF OPPOSITION
`
`
`)
`)
`)
`
`)))))
`
`
`)
`
`In re the Matter of:
`
`Opposer: Megahed, Esquire Inc.
`
`
`
`Applicant: Torem & Associates
`
`
`and
`
`
`
`
`
`The above-identified Opposer believes that it will be damaged by registration of the mark shown in the above-identified
`
`application, hereby opposes the same. The grounds for opposition are as follows:
`
`PARTIES AND STANDING
`
`1. Opposer Megahed, Esquire Inc. is a corporation organized under the laws of California with its principle place of
`
`business located at 888 Prospect Street, Suite 200, La Jolla, California 92037.
`
`2. Applicant is Totem & Associaties is a corporation organized under the laws of California located at Pontius Avenue,
`
`Los Angeles, CA 90025
`
`3. Opposer and Applicant are both engaged in the marketing and sale of legal services. Thus, they are direct competitors.
`
`4. As a competitor, Opposer has standing to bring this proceeding.
`
`FACTS
`
`5. On March 15, 2015, Opposer began operating as a family law practitioner in San Diego, California. Opposer began
`
`identifying itself as a “legal warrior,” due to the Principal owner’s last name, “Megahed.” It means “warrior” in the
`
`Arabic language.
`
`6. Additionally, Opposer opened a business account with Wells Fargo Bank, NA, nicknaming it “my legal warrior.”
`
`Employees at the bank identified Opposer as, “legal warrior.”
`
`

`

`
`
`7. Moreover, Opposer opened a social media account on Facebook, “Megahed, Esq.” (later changed to “Megahed, Esq.,
`
`Inc.” after incorporation in 2017), and consistently used the hash tag, “mylegalwarrior.” SEE ATTACHED EXHBIT A.
`
`8. On June 12, 2015, Opposer purchased several domain names, including “www.mylegalwarrior.com,” for a period of
`
`two years. All of the domains had identical content, and re-routed to one another. In bold letters, “legal warrior” is one
`
`of the main words easily found on the webpage. The website consistently used the phrase, “legal warrior” throughout
`
`each webpage. SEE ATTACHED EXHBIT B.
`
`9. In June 2015, Opposer opened a social media account through Twitter account under the name, “mylegalwarrior.”
`
`Opposer consistently used the hashtag, “mylegalwarrior.” SEE ATTACHED EXHBIT C.
`
`10. Further, Opposer opened an account with a law firm software account called “My Case” as “mylegalwarrior.” Clients
`
`could access their matter through the “mylegalwarrior” portal.
`
`11. On February 19, 2016, Applicant applied to trademark, “Guerreros Legales.” This translates to “legal warriors” in
`
`Spanish. It was registered on September 27, 2016 under serial number 86913528. SEE ATTACHED EXHBIT D.
`
`12. In April 2017, Opposer opened a social media account through Instagram account under the name, “mylegalwarrior.”
`
`Opposer consistently used the hashtag, “mylegalwarrior.”
`
`13. On June 13, 2017, Opposer renewed several domain names, including the domain name, “www.mylegalwarrior.com”
`
`for a period of two years. The websites continued using the phrase “legal warrior” throughout each webpage.
`
`14. In January 2019, Opposer ordered business cards identifying the website, “www.mylegalwarrior.com.” SEE
`
`ATTACHED EXHBIT E.
`
`15. In April 2019, Opposer retained a marketing firm that identified it as “legal warrior.” Opposer has sent several
`
`responsive correspondences as “my legal warrior.”
`
`16. In October 2019, Applicant applied to trademark “legal warriors.” Their first date of use was September 30, 2019.
`
`Their first date of use in commerce is also September 30, 2019.
`
`17. In January 2020, Opposer joined a marketing program called, “Vesta Redefining Divorce.” The program identifies
`
`Opposer as “my legal warrior” throughout their marketing materials.
`
`

`

`
`
`18. On April 16, 2020, Opposer filed their trademark application for “legal warrior” under application number 88875403.
`
`SEE ATTACHED EXHBIT F.
`
`19. From March 2015 to the present, Opposer’s clients identify Opposer as their “legal warrior.” Opposer has spent skill,
`
`time, effort and money building the brand, “legal warrior.” Opposer intends to file a Petition to Cancel Applicant’s
`
`trademark under serial number 86913528.
`
`FIRST GROUNDS FOR OPPOSITION:
`PRIORITY & LIKELIHOOD OF CONFUSION
`15 U.S.C. Section 1052(d)
`
`20. Opposer hereby repeats and re-alleges the allegations contained in paragraphs 1 through 19 above as if fully set forth
`
`herein.
`
`21. Opposer’s use in commerce of “legal warrior” long predate any priority date Applicant can claim for its “legal
`
`warriors” mark.
`
`22. The marks in question, “legal warriors,” versus “legal warrior” are highly similar.
`
`23. The services claimed, “legal services” under Applicant’s “legal warriors” trademark application is identical to
`
`Opposer’s services. Recognizing that the Applicant is within the legal sector of personal injury and Opposer is within
`
`the legal sector of family law, there are no restrictions set forth in Applicant’s “legal warriors” trademark as to the
`
`channels of trade. As a result, it is presumed that Applicant’s services will be sold in the same channels of trade and to
`
`the same intended customers as Opposer’s.
`
`24. Upon information and belief, Applicant’s services would be promoted in the same or similar channel of trade as
`
`Opposer’s, for sale to the same class of consumers.
`
`25. There is a likelihood that consumers and potential clients of either Opposer or Applicant will be confused or deceived
`
`into believing that the services emanate from the same source, or that one is somehow sponsored by or affiliated with
`
`the other, all to the great detriment of the goodwill which Opposer has built since 2015.
`
`26. As a result of this likely confusion, Opposer is likely to be irreparably harmed and damaged by Applicant’s “legal
`
`warriors” trademark application.
`
`

`

`
`
`27. Opposer has not consented and does not consent to Applicant’s use or registration of the Applicant’s proposed mark
`
`in the United States.
`
`28. Summarily, Opposer respectfully requests that the Board sustain this Opposition, and refuse registration of the “legal
`
`warriors” Application, and grant such other and further relief as the Board deems just and proper.
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`Respectfully Submitted,
`
`Megahed, Esquire Inc.
`
`By its President,
`
`
`
`
`
`/Jylan M. Megahed/
`Jylan M. Megahed
`888 Prospect Street, Suite 200
`La Jolla, CA 92037
`Tel. 858.761.8661
`jylan@megahedesq.com
`
`
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`Dated: April 17, 2020
`
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`EXHIBIT A
`EXHIBIT A
`
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`

`

`M E G A H E D, E S Q. Inc.
`
`Jylan
`
`Home
`
`Create
`
`9
`
`Page
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`Inbox
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`Manage Jobs
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`Settings
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`Hel
`
`63
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`Update
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`M E G A H E D, E S
`
`Q. Inc.
`
`@mylegalwarrior
`
`Home
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`888 Prospect St.
`
`La Jolla
`
`Get Directions
`
`m.me/mylegalwarrior
`
`Call (858) 761-8661
`
`

`

`
`
`
`
`
`
`EXHIBIT B
`EXHIBIT B
`
`
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`
`
`

`

`
`
`CONTACT US (cid:441)(cid:443)/(cid:446) (cid:443)(cid:447)(cid:439)-(cid:444)(cid:439)(cid:444)-(cid:447)(cid:447)(cid:446)(cid:446)
`
`Receipt
`
`№ (cid:447)(cid:442)(cid:441)(cid:446)(cid:446)(cid:440)(cid:439)(cid:445)(cid:442)
`
`DATE:
`Jun (cid:440)(cid:441), (cid:441)(cid:439)(cid:440)(cid:444), (cid:440):(cid:440)(cid:445) PM
`
`CUSTOMER #:
`(cid:440)(cid:439)(cid:441)(cid:439)(cid:444)(cid:448)(cid:440)(cid:448)(cid:439)
`
`BILL TO:
`Jylan Megahed
`
`,
`
`
`
`+(cid:440).(cid:446)(cid:445)(cid:440)(cid:447)(cid:445)(cid:445)(cid:440)
`
`PAYMENT:
`
`Pre5iou2 Balance
`
`Recei5ed Pa8ment
`
`Balance Due (cid:406)USD(cid:407)
`
`$45.68
`
`$45.68
`
`(cid:406)$45.68(cid:407)
`
`$0.00
`
`

`

`Term
`
`(cid:440) y1
`
`(cid:440) y1
`
`(cid:441) y12
`
`Product
`
`.COM Domain Regi2t1ation
`1
`di2cove1familylaw.com $12.99
`Di2count
`-$3.00
`
`.COM Domain Regi2t1ation
`1
`di2cove12dfamilylaw.com$12.99
`Di2count
`-$3.00
`
`.COM Domain Regi2t1ation
`1
`
`mylegalwa11io1.com
`Di2count
`
`$27.98
`-$3.00
`
`Subtotal
`Taxe2
`Fee2
`
`Total (cid:406)USD(cid:407)
`
`REFERENCE
`
`Taxe2
`
`Amount
`
`$9.99
`
`$9.99
`
`$24.98
`
`$44.96
`$0.00
`$0.72
`
`$45.68
`
`$0.00
`
`

`

`Your Warrior In Court
`
`Protecting Who May Otherwise Have
`No Voice
`
`San Diego Family Law Professional
`
`Privacy - Terms
`
`Practice
`Areas
`
`

`

`
`
`
`
`
`
`
`EXHIBIT C
`EXHIBIT C
`
`
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`
`
`
`

`

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`Jylan Megahed, ESQ.
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`@mylegalwarrior
`
`San Diego, CA
`
`Joined June 2015
`
`71 Following
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`28 Followers
`
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`mailchi.mp/megahedesq/fin…
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`EXHIBIT D
`EXHIBIT D
`
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`

`

`Generated on: This page was generated by TSDR on 2020-04-16 00:02:11 EDT
`
`Mark: GUERREROS LEGALES
`
`US Serial Number: 86913528
`
`US Registration
`Number:
`
`5049444
`
`Filed as TEAS
`Plus:
`
`Yes
`
`Register: Principal
`
`Mark Type: Service Mark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Feb. 19, 2016
`
`Registration Date: Sep. 27, 2016
`
`Currently TEAS
`Plus:
`
`Yes
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.
`
`Status Date: Sep. 27, 2016
`
`Publication Date: Jul. 12, 2016
`
` 
`
`Mark Information
`
`Mark Literal
`Elements:
`
`GUERREROS LEGALES
`
`Standard Character
`Claim:
`
`Mark Drawing
`Type:
`
`Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
`
`4 - STANDARD CHARACTER MARK
`
`Disclaimer: "LEGALES"
`
`Translation: The English translation of "GUERREROS LEGALES" in the mark is "LEGAL WARRIORS".
`
`Goods and Services
`
`Note:
`The following symbols indicate that the registrant/owner has amended the goods/services:
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: Legal services
`
`International
`Class(es):
`
`045 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`U.S Class(es): 100, 101
`
`First Use: Jan. 04, 2016
`
`Use in Commerce: Jan. 04, 2016
`
`Basis Information (Case Level)
`
`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Filed No Basis: No
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`

`

`Current Owner(s) Information
`
`Owner Name: Torem & Associates
`
`Owner Address: 1607 Pontius Avenue
`Los Angeles, CALIFORNIA UNITED STATES 90025
`
`Legal Entity Type: CORPORATION
`
`State or Country
`Where Organized:
`
`CALIFORNIA
`
`Attorney/Correspondence Information
`
`Attorney Name: Alina S. Morris
`
`Attorney Primary
`Email Address:
`
`efiling@cojk.com
`
`Attorney of Record
`
`Docket Number: EXMC-2-55013
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`ALINA S. MORRIS
`CHRISTENSEN O'CONNOR JOHNSON KINDNESS
`1201 THIRD AVENUE, SUITE 3600
`SEATTLE, WASHINGTON UNITED STATES 98101
`
`Phone: 206-682-8100
`
`Correspondent e-
`mail:
`
`efiling@cojk.com
`
`Fax: 206-224-0779
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`Oct. 02, 2019
`
`APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED
`
`Oct. 02, 2019
`
`TEAS CHANGE OF OWNER ADDRESS RECEIVED
`
`Sep. 27, 2016
`
`REGISTERED-PRINCIPAL REGISTER
`
`Jul. 12, 2016
`
`OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
`
`Jul. 12, 2016
`
`PUBLISHED FOR OPPOSITION
`
`Jun. 22, 2016
`
`NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
`
`Jun. 06, 2016
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`Jun. 05, 2016
`
`ASSIGNED TO EXAMINER
`
`Feb. 25, 2016
`
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
`
`Feb. 23, 2016
`
`NEW APPLICATION ENTERED IN TRAM
`TM Staff and Location Information
`
`Current Location: PUBLICATION AND ISSUE SECTION
`
`Date in Location: Sep. 27, 2016
`
`TM Staff Information - None
`
`File Location
`
`Proceeding
`Number
`
`88888
`
`77769
`
`

`

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`EXHIBIT E
`EXHIBIT E
`
`
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`

`

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`EXHIBIT F
`EXHIBIT F
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`

`

`Serial number 88875403: Received Your Trademark/Service Mark Application,
`
`Principal Register
`
`TEAS@uspto.gov <TEAS@uspto.gov>
`
`Thu 4/16/2020 4Ȃ22 PM
`
`To: Jylan Megahed <jylan@megahedesq.com>
`
`Filing Receipt for Trademark/Service Mark Application for Registration
`
`on the Principal Register
`
`and Next Steps in the Application Process
`
`Thank you for submitting your trademark application to the U.S. Patent and Trademark Office
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`(USPTO). This filing receipt confirms your mark and serial number, describes next steps in the
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`application process, and includes the information submitted in your application. Please read this
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`receipt carefully and keep a copy for your records.
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`For an overview of important things to know after filing your application, visit our website to read
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`the After You File page and watch video number 9 "After You File."
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`1. Your mark. Legal Warrior (Standard Characters, mark.jpg)
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`The literal element of the mark consists of Legal Warrior. The mark consists of standard characters,
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`without claim to any particular font style, size, or color.
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`2. Your serial number. Your application was assigned serial number '88875403'. You must refer to
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`your serial number in all communications about your application.
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`3. What happens next—legal examination.  Your mark will not be registered automatically. In
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`approximately three months, your application will be assigned to a USPTO examining attorney for
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`review. The attorney will determine if your application meets all applicable legal requirements, and if
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`it doesn't you will be notified in an email with a link to the official Office action (official letter from
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