Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1151105
`08/04/2021
`
`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
`
`Feller & Wendt, LLC
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`08/04/2021
`
`1834 E 3100 N
`LAYTON, UT 84040
`UNITED STATES
`
`Attorney informa-
`tion
`
`BRYANT HENDRIKSEN
`FELLER AND WENDT
`1834 E 3100 N
`LAYTON, UT 84040
`UNITED STATES
`Primary Email: bmhendriksen@fellerwendt.com
`Secondary Email(s): thaddeuswendt@fellerwendt.com,
`mattfeller@fellerwendt.com, brianhansen@fellerwendt.com
`8014995060
`
`Docket Number
`
`Applicant Information
`
`Application No.
`
`90231912
`
`Publication date
`
`04/06/2021
`
`Opposition Filing
`Date
`
`Applicant
`
`08/04/2021
`
`Opposition Peri-
`od Ends
`
`08/04/2021
`
`Ross Downs
`4214 STERLINGTON ROAD
`MONROE, LA 71203
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 045. First Use: 2020/09/01 First Use In Commerce: 2020/09/01
`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)
`
`The mark is merely descriptive
`
`Trademark Act Section 2(e)(1)
`
`The mark is primarily merely a surname
`
`Trademark Act Section 2(e)(4)
`
`Other
`
`Application was filed for unrestricted registration,
`application for concurrent use alleging priority
`filed by opposer prior to Application clearing op-
`
`
`ESTTA1151105
`08/04/2021
`
`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
`
`Feller & Wendt, LLC
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`08/04/2021
`
`1834 E 3100 N
`LAYTON, UT 84040
`UNITED STATES
`
`Attorney informa-
`tion
`
`BRYANT HENDRIKSEN
`FELLER AND WENDT
`1834 E 3100 N
`LAYTON, UT 84040
`UNITED STATES
`Primary Email: bmhendriksen@fellerwendt.com
`Secondary Email(s): thaddeuswendt@fellerwendt.com,
`mattfeller@fellerwendt.com, brianhansen@fellerwendt.com
`8014995060
`
`Docket Number
`
`Applicant Information
`
`Application No.
`
`90231912
`
`Publication date
`
`04/06/2021
`
`Opposition Filing
`Date
`
`Applicant
`
`08/04/2021
`
`Opposition Peri-
`od Ends
`
`08/04/2021
`
`Ross Downs
`4214 STERLINGTON ROAD
`MONROE, LA 71203
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 045. First Use: 2020/09/01 First Use In Commerce: 2020/09/01
`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)
`
`The mark is merely descriptive
`
`Trademark Act Section 2(e)(1)
`
`The mark is primarily merely a surname
`
`Trademark Act Section 2(e)(4)
`
`Other
`
`Application was filed for unrestricted registration,
`application for concurrent use alleging priority
`filed by opposer prior to Application clearing op-
`
`
`
`position period. See Southwestern Management,
`Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1020
`n.73 (TTAB 2015), aff'd mem., 652 F. App'x 971
`(Fed. Cir. 2016); Pro-Cuts v. Schilz-Price Enter-
`prises Inc., 27 USPQ2d 1224, 1226 (TTAB 1993)
`See also America's Best Franchising Inc. v. Ab-
`bott, 106 USPQ2d 1540, 1544 (TTAB 2013).
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Application
`No.
`
`90863817
`
`Application Date
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Related Proceed-
`ings
`
`Concurrent Use Application 90863817
`
`Attachments
`
`021.08.04_Notice of Opposition.pdf(168083 bytes )
`
`Signature
`
`/Bryant Hendriksen/
`
`Name
`
`Date
`
`BRYANT HENDRIKSEN
`
`08/04/2021
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Feller & Wendt, LLC,
`
`
`Opposer,
`
`
`
`v.
`
`
`Ross Downs,
`
`
`Applicant
`
`
`
`
`
`
`
`
`Mark: OUR FAMILY PROTECTING
`YOURS
`
`
`
`Application No. 90231912
`
`Filed: October 2, 2020
`
`
`
`NOTICE OF OPPOSITION
`
`Pursuant to 15 U.S.C. § 1063
`
`In the matter of trademark Application No. 90231912 filed by Applicant, Earl Ross
`
`Downs, Jr. a.k.a. Ross Downs ("Applicant"), as a service mark for legal services filed on October
`
`2, 2020, and published for opposition in the Official Gazette of April 6, 2021, the time to oppose
`
`having been extended, Opposer, Feller & Wendt, LLC ("Opposer") a limited liability company
`
`and law firm organized and existing under the laws of the State of Utah and located and doing
`
`business at 1834 E 3100 N, Layton, UT 84040, believes that it will be damaged by the
`
`registration of the alleged mark shown in Application No. 90231912 and opposes the registration
`
`under the provisions of 15 U.S.C. §1063 (Trademark Act of 1946, Section 13).
`
`As grounds of opposition, it is alleged that:
`
`1. Opposer has since at least as early as September 30, 2013, continuously used the ‘Our
`
`Family Protecting Yours’ mark (hereinafter the “Service Mark”) on its website,
`
`television, social media, and print advertisements, and elsewhere to promote and
`
`
`
`advertise their service as a law firm, distinctly identify their approach to providing
`
`legal services to and communicating with clients, and establish their reputation for
`
`providing quality representation.
`
`2. Opposer presently uses the Service Mark on its website, television, social media, and
`
`print advertisements, and elsewhere to promote and advertise their service as a law
`
`firm, distinctly identify their approach to providing legal services to and
`
`communicating with clients, and establish their reputation for providing quality
`
`representation.
`
`3. Opposer is now, and for years has been, known by and associated with the Service
`
`Mark, building a national reputation for quality legal services and representation of
`
`clients in courtrooms across the country.
`
`4. Opposer does now, and has for years prior to Applicant’s usage of and application for
`
`the ‘Our Family Protecting Yours’ service mark (hereinafter when used by Applicant
`
`the “Applicant Mark” or “Applicant’s Mark”), provide legal services almost
`
`exclusively if not entirely in the areas of plaintiff’s representation, namely, personal
`
`injury, medical malpractice, etc and has, during that entire period of time, engaged in
`
`the use of the Service Mark to promote and advertise and to identify the
`
`distinctiveness and quality of such services.
`
`5. Opposer has law offices open in Utah, Idaho, and Arizona and is currently
`
`representing clients domiciled in even more states and internationally.
`
`6. Opposer is known by and associated with the Service Mark not only in states and
`
`localities in which it has law offices but across the United States. Namely, its
`
`attorneys have been admitted pro hac vice in many states as associated trial counsel,
`
`
`
`its attorneys are frequently invited to and do teach other plaintiff’s attorneys across
`
`the country in courtroom and litigation techniques representing their brand with the
`
`Service Mark as they do so, Opposer frequently consults with other plaintiff’s counsel
`
`across the country, and Opposer also is also associated with class counsel in multiple
`
`national class-action lawsuits, using the Service Mark as an identifying mark in each
`
`instance.
`
`7. Applicant applied for registration of the Applicant Mark on October 2, 2020, for
`
`services in Class 45, namely legal services. Applicant’s Mark is not only confusingly
`
`similar but identical to Opposer’s Service Mark.
`
`8. Applicant’s Mark has not yet cleared the opposition period.
`
`9. Upon information and belief, Applicant and his law firm provide legal services
`
`almost exclusively, if not entirely, in the areas of plaintiff’s representation, namely,
`
`personal injury, medical malpractice, etc, are in part substantially identical and in part
`
`closely related to Opposer’s legal services, yet of inferior quality to Opposer’s legal
`
`services.
`
`10. Upon information and belief, Applicant and his law firm exclusively employ
`
`attorneys who share the same surname and are related to Applicant.
`
`11. Upon information and belief, Applicant engages in the use of the Applicant Mark to
`
`identify its services, which are substantially similar to Opposer’s.
`
`12. Upon information and belief, Applicant engages in the use of the Applicant Mark
`
`without regard to negative impacts to Opposer, both targeting the same clients and
`
`confusing clients and potential clients as to location of and quality of Opposer’s
`
`services and reputation.
`
`
`
`13. The use by Opposer of the Service Mark for the legal services alleged herein is long
`
`prior to any date which may be lawfully claimed by Applicant, and consequently
`
`Opposer has priority.
`
`14. Opposer has filed a Concurrent Use Application, No. 90863817, for registration of
`
`the Service Mark.
`
`COUNT 1
`
`LIKELIHOOD OF CONFUSION
`
`15. The registration of the Applicant Mark to Applicant will cause the relevant persons
`
`seeking legal services to erroneously assume and thus be confused, misled, or
`
`deceived , that Applicant's services are provided by, controlled by, sponsored by, or
`
`in some way connected, related or associated with Opposer, in violation of Section
`
`2(d) of the Lanham Act, 15 U.S.C. § 1052(d), all to Opposer's irreparable damage.
`
`COUNT 2
`APPLICANT’S USE OF MARK IS MERELY DESCRIPTIVE
`
`16. The use of the Applicant Mark by Applicant is merely descriptive, reflecting only that
`
`members of the same family are employed by a law firm, which by its nature protects
`
`its clients. See In re Omaha Nat’l Corp.,819 F.2d 1117, 1119, 2 USPQ2d 1859, 1861
`
`(Fed. Cir. 1987) (descriptiveness is not limited to a quality or characteristic of the
`
`service itself but includes a designation descriptive of the service provider.)
`
`17. Applicant’s use of the Applicant Mark has not acquired distinctiveness or secondary
`
`meaning under 15 U.S.C. § 1052(f)2.
`
`18. Therefore, the Applicant Mark as used by Applicant cannot be registered.
`
`COUNT 3
`APPLICANT’S USE OF MARK IS PRIMARLIY AS A SURNAME
`
`
`
`19. The use of the Service Mark by Applicant is only used in context of Applicant’s
`
`Surname, Downs and his eponymous Downs Law Firm which only employs attorneys
`
`with the same last name, and as such the primary, and only, significance of the term is
`
`a surname significance. See In re Eximius Coffee, 120 USPQ2d 1276, 1277 (TTAB
`
`2016) (citing In re Harris-Intertype Corp., 518 F.2d 629, 186 USPQ 238, 239 (CCPA
`
`1975).
`
`20. Therefore, the Applicant Mark as used by Applicant cannot be registered.
`
`COUNT 4
`
`FAILURE TO AMEND TO CONCURRENT APPLICATION
`
`21. Action on Applicant’s Application No. 90231912 must be suspended pending
`
`disposition of Opposer’s Concurrent Use Application No. 90863817 because
`
`Applicant’s Application was filed for unrestricted registration and has not yet cleared
`
`the opposition period. See Southwestern Management, Inc. v. Ocinomled, Ltd., 115
`
`USPQ2d 1007, 1020 n.73 (TTAB 2015), aff’d mem., 652 F. App’x 971 (Fed. Cir.
`
`2016); Pro-Cuts v. Schilz-Price Enterprises Inc., 27 USPQ2d 1224, 1226 (TTAB
`
`1993) See also America’s Best Franchising Inc. v. Abbott, 106 USPQ2d 1540, 1544
`
`(TTAB 2013).
`
`RELIEF REQUESTED
`22. WHEREFORE, Opposer prays that the application for registration of the ‘Our Family
`
`Protecting Yours’ service mark by Ross Downs a.k.a. Earl Ross Downs, Jr., No.:
`
`90231912, filed on June 13, 2014 be denied and that this Opposition be sustained or
`
`in the alternative that action on Application No.: 90231912 be suspended pending the
`
`outcome of Opposer’s Concurrent Use Application No. 90863817.
`
`
`
`
`
`
`
`I hereby certify that on the 4th day of August, 2021, I caused the above pleading (NOTICE
`
`OF OPPOSITION) to be served on APPLICANT ROSS DOWNS A.K.A EARL ROSS
`
`DOWNS, JR. via the following individuals as indicated below:
`
`Via Email as acknowledged and permitted by Counsel for Applicant:
`
`Andrew G. Vicknair
`SHIELDS MOTT L.L.P.
`
`650 Poydras Street, Suite 2600
`New Orleans, Louisiana 70130
`(504) 581-4445
`(504) 581-4440 (fax)
`AGVICKNAIR@SHIELDSMOTT.COM
`Attorney for Applicant
`
`
`DATED this 4th day of August, 2021.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Bryant M. Hendriksen
`BRYANT M. HENDRIKSEN
`
`Attorney for Opposer
`
`
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