Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1129090
`04/23/2021
`
`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
`
`THE DIVA LAWYERS SOCIAL CLUB INC
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`04/24/2021
`
`1158 26TH STREET
`783
`SANTA MONICA, CA 90403
`UNITED STATES
`
`ATYRIA S CLARK
`THE DIVA LAWYERS SOCIAL CLUB INC
`1158 26TH STREET
`783
`SANTA MONICA, CA 90403
`UNITED STATES
`Primary Email: DIVALAWYERS@GMAIL.COM
`Secondary Email(s): ATYRIASCLARK@GMAIL.COM
`3104157112
`
`Docket Number
`
`Applicant Information
`
`Application No.
`
`87939686
`
`Publication date
`
`02/23/2021
`
`Opposition Filing
`Date
`
`Applicant
`
`04/23/2021
`
`Opposition Peri-
`od Ends
`
`04/24/2021
`
`Baker, Lonita K
`11505 GARDEN COVE CT
`LOUISVILLE, KY 40291
`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: Providing legal information, namely, legal
`information about civil rights, personal injury, business law, and criminal law proffered to clients hired
`by an individual attorney and not pertaining to membership of any social club organization
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`No bona fide intent to use mark in commerce for
`identified goods or services
`
`Trademark Act Section 1(b), 44(e) or 66(a)
`
`
`ESTTA1129090
`04/23/2021
`
`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
`
`THE DIVA LAWYERS SOCIAL CLUB INC
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`04/24/2021
`
`1158 26TH STREET
`783
`SANTA MONICA, CA 90403
`UNITED STATES
`
`ATYRIA S CLARK
`THE DIVA LAWYERS SOCIAL CLUB INC
`1158 26TH STREET
`783
`SANTA MONICA, CA 90403
`UNITED STATES
`Primary Email: DIVALAWYERS@GMAIL.COM
`Secondary Email(s): ATYRIASCLARK@GMAIL.COM
`3104157112
`
`Docket Number
`
`Applicant Information
`
`Application No.
`
`87939686
`
`Publication date
`
`02/23/2021
`
`Opposition Filing
`Date
`
`Applicant
`
`04/23/2021
`
`Opposition Peri-
`od Ends
`
`04/24/2021
`
`Baker, Lonita K
`11505 GARDEN COVE CT
`LOUISVILLE, KY 40291
`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: Providing legal information, namely, legal
`information about civil rights, personal injury, business law, and criminal law proffered to clients hired
`by an individual attorney and not pertaining to membership of any social club organization
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`No bona fide intent to use mark in commerce for
`identified goods or services
`
`Trademark Act Section 1(b), 44(e) or 66(a)
`
`
`
`False suggestion of a connection with persons,
`living or dead, institutions, beliefs, or national
`symbols, or brings them into contempt, or disrep-
`ute
`
`Trademark Act Section 2(a)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`5769971
`
`Registration Date
`
`06/04/2019
`
`Word Mark
`
`Design Mark
`
`DIVA LAWYERS
`
`Application Date
`
`09/04/2015
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 200. First use: First Use: 2014/01/13 First Use In Commerce: 2018/05/01
`Indicating membership in a social club organization of female attorneys
`
`Attachments
`
`86748634#TMSN.png( bytes )
`Adobe Statement in Support of Notice of Opposition.pdf(286138 bytes )
`
`Signature
`
`/Atyria S. Clark/
`
`Name
`
`Date
`
`ATYRIA S CLARK
`
`04/23/2021
`
`
`
`
`
`Atyria S. Clark (SBN: 226295)
`THE COMMUNITY LAW FIRM
`1158 26th Street, Suite 783
`Santa Monica, CA 90403
`Telephone: (310) 415-7112
`Facsimile: (310) 496-1284
`Email: communitylawfirm@gmail.com
`
`
`Attorney for Opposer
`THE DIVA LAWYERS SOCIAL CLUB INC
`
`
`UNITED STATES TRADEMARK TRIALS AND APPEALS
`
`STATEMENT IN SUPPORT OF OPPOSITION TO TRADEMARK
`REGISTRATION FOR APPLICATION SERIAL NO.: 87939686
`
`
`
`THE DIVA LAWYERS SOCIAL CLUB INC submits its statement in
`
`support of its opposition to registration of Serial No.: 8793986 for DIVA
`
`ATTORNEY LONITA BAKER as follows:
`
`1. My name is Atyria S. Clark. I am attorney licensed in the states of
`
`California and Florida to practice law.
`
`2.
`
`I am the attorney of record for the trademark registrant, THE DIVA
`
`LAWYERS SOCIAL CLUB, INC.
`
`3.
`
`I am also an officer and director of THE DIVA LAWYERS
`
`SOCIAL CLUB, INC.
`
`4.
`
`On June 4, 2019, THE DIVA LAWYERS SOCIAL CLUB, INC.
`
`(“Opposer”) successfully registered our collective membership mark “DIVA
`
`
`
`STATEMENT IN SUPPORT OF OPPOSITION TO REGISTRATION
`
`
`
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`Page 1 of 5
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`LAWYERS” to identify members of our social group organization consisting of
`
`certain select female attorneys who have been initiated into our organization.
`
`5.
`
`On May 29, 2018, an attorney Ms. Lonita Baker, filed an application
`
`to have the trademark “DIVA ATTORNEY LONITA BAKER” registered in
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`connection with “providing legal information, namely, legal information about
`
`civil rights, personal injury, business law, and criminal law proffered to clients
`
`hired by an individual attorney and not pertaining to membership of any social
`
`club organization.”
`
`6.
`
`Opposer objects to the registration of this mark because it will
`
`certainly cause likelihood of confusion with its collective membership mark.
`
`7.
`
`Additionally, the proposed registrant of “DIVA ATTORNEY
`
`LONITA BAKER” has not established a bona fide intent to use the mark in
`
`commerce for identified goods and services.
`
`8. Moreover, the proposed mark indicates a false suggestion of a
`
`connection with the person and institution, THE DIVA LAWYERS SOCIAL
`
`CLUB, INC.
`
`9.
`
`The two words in both marks, “DIVA LAWYERS” and “DIVA
`
`ATTORNEY LONITA BAKER” suggest that Lonita Baker is a member of THE
`
`DIVA LAWYERS SOCIAL CLUB, given that the term “Diva Lawyers” and
`
`“Diva Attorney” mean the exact same thing and are synonyms of one another.
`
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`Page 2 of 5
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`
`STATEMENT IN SUPPORT OF OPPOSITION TO REGISTRATION
`
`
`
`
`
`10. If the mark “DIVA ATTORNEY LONITA BAKER” is registered,
`
`this mark will lead to the public confusing this mark with the “DIVA
`
`LAWYERS” mark and cause the public to believe that this attorney, Lonita
`
`Baker, is a member of THE DIVA LAWYERS SOCIAL CLUB, INC, when she
`
`is not.
`
`11. THE DIVA LAWYERS SOCIAL CLUB, INC is a social club of
`
`certain select female attorneys who must meet certain stringent requirements and
`
`submit to a detailed initiation process before they can become members of the
`
`club.
`
`12. Allowing just any female attorney to associate themselves to the club
`
`by registering an extremely similar mark would seriously dilute the strength of
`
`the Opposer’s collective membership mark and cause the public confusion about
`
`who is a member of THE DIVA LAWYERS SOCIAL CLUB, INC and who is
`
`not.
`
`13. The terms “lawyer” and “attorney” have the exact same meanings
`
`and are often used interchangeably among legal professionals and lay people
`
`alike.
`
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`Page 3 of 5
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`STATEMENT IN SUPPORT OF OPPOSITION TO REGISTRATION
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`14.
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`In fact, the actual definition of the term “lawyer” encompasses the
`
`term “attorney.”1
`
`15. Similarly, the actual definition of the term “attorney” encompasses
`
`the term “lawyer.”2
`
`16. Given that these two words are direct synonyms of each other, there
`
`is no way the public would not be confused seeing the term “Diva Lawyers” in a
`
`mark with “Diva Attorney” in a mark.
`
`17. Moreover, because the terms “lawyer” and “attorney” are direct
`
`synonyms of each other and mean the same thing, the mark “DIVA ATTONREY
`
`LONITA BAKER” creates a false suggestion of a connection with THE DIVA
`
`LAWYERS SOCIAL CLUB, INC.
`
`18. Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a) bars
`
`registration of marks that falsely suggest a connection with persons (living or
`
`dead), institutions, national symbols or beliefs.
`
`19. Registration of the mark “DIVA ATTORNEY LONITA BAKER”
`
`would falsely suggest that this attorney is connected with other attorneys who are
`
`
`1 “Lawyer: 1. A person who practices or studies law; an attorney or a counselor.”
`Definitions from Oxford Languages.
`2 “Attorney: 1. A person appointed to act for another in business or legal matters.
`2. A lawyer.” Definitions from Oxford Languages.
`
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`Page 4 of 5
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`STATEMENT IN SUPPORT OF OPPOSITION TO REGISTRATION
`
`
`
`
`
`actual members of the DIVA LAWYERS SOCIAL CLUB, INC and/or connected
`
`with the organization.
`
`20. Although the applicant for the mark “DIVA ATTORNEY LONITA
`
`BAKER” claims that her mark will be used in connection with “providing legal
`
`information, namely, legal information about civil rights, personal injury,
`
`business law, and criminal law proffered to clients hired by an individual attorney
`
`and not pertaining to membership of any social club organization,” she has not
`
`established a bona fide intent to use this mark in commerce for these identified
`
`goods and services.
`
`21. Even if at some point she did offer legal services under the mark
`
`“DIVA ATTORNEY LONITA BAKER,” this would not preclude the public
`
`from confusing that mark with the collective membership mark “DIVA
`
`LAWYERS” since all Diva Lawyers are lawyers and offer legal services in their
`
`capacities as lawyers aka attorneys.
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`22. For the foregoing reasons, the Opposer respectfully requests the
`
`Trademark Trials and Appeals Board to deny this proposed registration.
`
`
`Dated: April 22, 2021
`
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`_/Atyria S. Clark/______________
`ATYRIA S. CLARK
`
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`Page 5 of 5
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`STATEMENT IN SUPPORT OF OPPOSITION TO REGISTRATION
`
`
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