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Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1164314
`10/06/2021
`
`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
`
`Entity
`
`Address
`
`Attorney informa-
`tion
`
`Olsman, MacKenzie, Peacock & Wallace, P.C.
`
`professional corporation
`
`Citizenship
`
`Michigan
`
`2684 WEST ELEVEN MILE ROAD
`BERKLEY, MI 48072
`UNITED STATES
`
`MARY MARGARET L. O'DONNELL
`BLUE FILAMENT LAW PLLC
`700 E. MAPLE, SUITE 450
`BIRMINGHAM, MI 48009
`UNITED STATES
`Primary Email: interpartes@bluefilamentlaw.com
`Secondary Email(s): mmo@bluefilamentlaw.com
`248-430-5771
`
`Docket Number
`
`OMPW-2000
`
`Applicant Information
`
`Application No.
`
`90387461
`
`Publication date
`
`09/07/2021
`
`Opposition Filing
`Date
`
`Applicant
`
`10/06/2021
`
`Opposition Peri-
`od Ends
`
`10/07/2021
`
`Emily Grace Thomas
`151 LAFAYETTE, APT. 319
`PONTIAC, MI 48342
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 045. First Use: 2019/02/25 First Use In Commerce: 2019/02/25
`All goods and services in the class are opposed, namely: Legal services, namely, providing legalcon-
`sultation and research services, andlitigation assistance and strategy services relating to birth injury
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Applicant not rightful owner of mark for identified
`goods or services
`
`Trademark Act Section 1
`
`Fraud on the USPTO
`
`Other
`
`In re Bose Corp., 580 F.3d 1240, 91 USPQ2d
`1938 (Fed. Cir. 2009)
`
`application void ab initio as Applicant was not
`owner of mark at time of filing
`
`

`

`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Application
`No.
`
`97062312
`
`Application Date
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Attachments
`
`Notice Opposition BIRTH JUSTICE 10.06.2021.pdf(253125 bytes )
`
`Signature
`
`/MMLO/
`
`Name
`
`Date
`
`Mary Margaret L. O'Donnell
`
`10/06/2021
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`OLSMAN, MACKENZIE, PEACOCK
`& WALLACE, P.C.,
`
`
`
`
`Opposer,
`
`
`
`
`
`
`
`
`
`
`
`
`Opposition No. __________
`
`
`
`
`
`
`
`
`
`
`
`
`
`v.
`
`
`
`
`EMILY GRACE THOMAS,
`
`
`
`
`
`Applicant.
`___________________________________/
`
`
`App. Serial No. 90387461 for
`
`
`
`
`NOTICE OF OPPOSITION
`
`Opposer, OLSMAN, MACKENZIE, PEACOCK & WALLACE, P.C., a professional
`
`
`
`corporation of Michigan, of 2684 West Eleven Mile Road, Berkley, Michigan 48072 (“Opposer”
`
`or “The Firm”), believes
`
`that Opposer will be damaged by
`
`registration of
`
`the
`
` mark of Application Serial No. 90387461 (the “Opposed BIRTH
`
`JUSTICE Application”) by Applicant EMILY GRACE THOMAS, an individual of the United
`
`States, of 151 Lafayette, Apt. 319, Pontiac, Michigan 48342 (“Applicant”) and hereby opposes
`
`the same on the grounds the BIRTH JUSTICE & Design mark of Application Serial No.
`
`90387461 is likely to cause confusion, or to cause mistake or to deceive with respect to
`
`
`
`1
`
`

`

`Opposer’s prior use and adoption of marks comprising BIRTH
`
`JUSTICE and
`
` or (“Opposer’s BIRTH JUSTICE Mark”), on the basis of fraud
`
`for falsely misrepresenting ownership and acting with reckless disregard for the truth before the
`
`USPTO, and on the basis that Application Serial No. 90387461 is void ab initio for having been
`
`filed in the name of party not owning the mark. As further grounds for the opposition, Opposer
`
`states as follows:
`
`1.
`
`Opposer is a law firm specializing in a variety of personal injury, neglect, police
`
`misconduct, sexual abuse, and malpractice claims, including those relating to birth injury.
`
`2.
`
`In connection with its legal practice, Opposer has used the BIRTH JUSTICE logo
`
` since at least as early as October 2018 in connection with its
`
`legal services (“Opposer’s Services”).
`
`
`
`2
`
`

`

`3.
`
`At Opposer’s direction and expense, Opposer’s graphic designer created the
`
`logo for Opposer in August 2018, with all rights, title and interest
`
`in such logo assigned to Opposer.
`
`4.
`
`Opposer’s US Application Serial No. 97062312 pending with the USPTO for
`
` for legal services (“Opposer’s BIRTH JUSTICE Application”).
`
`5.
`
`In connection with its birth injury legal services, Opposer uses Opposer’s BIRTH
`
`JUSTICE Mark on Opposer’s website, in social media, in promotional materials, and as a trade
`
`name. The domain name birthjustice.com previously redirected to the BIRTH JUSTICE section
`
`of Opposer’s website at www.olsmanlaw.com.
`
`6.
`
`Applicant Ms. Thomas was employed by Opposer from approximately June 2018
`
`through early September 2021.
`
`7.
`
`During her employment with Opposer, Applicant participated in personal injury
`
`and medical malpractice cases, including those involving birth trauma.
`
`
`
`3
`
`

`

`8.
`
`While employed by Opposer and notwithstanding Opposer’s rights in Opposer’s
`
`BIRTH JUSTICE Marks, including but not limited to the
`
`logo,
`
`Applicant started a “Birth Justice” Facebook page in June 2019.
`
`9.
`
`Without regard to Opposer’s rights and while employed by Opposer, Applicant
`
`filed a trademark application for
`
` on December 16, 2020 for “legal
`
`services; namely providing legal consultation and research services, and litigation assistance and
`
`strategy services relating to birth injury” (“Applicant’s Services”).
`
`10.
`
`Applicant filed App. Serial No. 90387461 for
`
` in her own
`
`name, while still employed by Opposer.
`
`11.
`
`Applicant filed the Opposed BIRTH JUSTICE Application using Opposer’s law
`
`firm address of 2684 West Eleven Mile Road, Berkley, Michigan 48072.
`
`
`
`4
`
`

`

`12.
`
`A little over a month after filing the Opposed BIRTH JUSTICE Application, and
`
`while still employed by Opposer, Applicant filed a request to update the address associated with
`
`the Opposed Application to her own address: 151 Lafayette, Apt. 319, Pontiac, Michigan 48342.
`
`13.
`
`The Opposed BIRTH JUSTICE Application was filed on a use basis, claiming a
`
`date of first use and first use in commerce of February 25, 2019.
`
`14.
`
`Applicant was employed by Opposer as of the first use and first use in commerce
`
`date of February 25, 2019.
`
`15.
`
`Applicant entered a disclaimer of BIRTH JUSTICE in the Opposed BIRTH
`
`JUSTICE Application, confirming she has no exclusive right to use “birth justice” apart from the
`
`mark as shown.
`
`16.
`
`Applicant was aware of Opposer’s ownership of Opposer’s BIRTH JUSTICE
`
`Mark prior to filing an application for the Opposed BIRTH JUSTICE Mark.
`
`17.
`
`The specimens submitted by Applicant in connection with the Opposed BIRTH
`
`JUSTICE Application consist of Facebook pages touting Opposer’s settlement awards and
`
`reflecting the birthjustice.com domain name, which redirected to Opposer’s website at
`
`olsmanlaw.com.
`
`
`
`5
`
`

`

`18.
`
`The
`
` mark of the Opposed BIRTH JUSTICE Application
`
`replicates exactly the
`
`logo that Opposer’s graphic artist created for
`
`Opposer at Opposer’s direction and expense.
`
`19.
`
`The inversion of the black and white color scheme in the Opposed BIRTH
`
`JUSTICE Application does not differentiate that mark from Opposer’s BIRTH JUSTICE logo,
`
`both of which appear below:
`
`Applicant’s Mark
`
`Opposer’s Mark
`
`
`
`
`
`
`
`
`
`
`
`20.
`
`21.
`
`22.
`
`The Opposed BIRTH JUSTICE Application is not limited as to color.
`
`Opposer’s BIRTH JUSTICE Application is not limited as to color.
`
`As Opposer expects the Opposed BIRTH JUSTICE Application will be cited
`
`against Opposer’s BIRTH JUSTICE Application, Opposer has standing to bring this proceeding.
`6
`
`
`
`

`

`23. Well prior to Applicant’s December 16, 2020 filing date of the Opposed BIRTH
`
`JUSTICE Application, Opposer has used the BIRTH JUSTICE mark for legal services.
`
`24.
`
`of Opposer.
`
`25.
`
`Any use by Applicant of Opposer’s BIRTH JUSTICE Mark inured to the benefit
`
`As a result of the quality of Opposer’s Services and the widespread promotion
`
`thereof under Opposer’s BIRTH JUSTICE Mark, Opposer and Opposer’s Services have attracted
`
`substantial commercial interest and consumer recognition.
`
`26.
`
`Opposer’s BIRTH JUSTICE Mark has become a symbol of Opposer, Opposer’s
`
`Services, and Opposer’s goodwill.
`
`27.
`
`Opposer’s use of Opposer’s BIRTH JUSTICE Mark and the rights associated
`
`therewith date to at least as early as October 2018 for legal services, predating the December 16,
`
`2020 filing date and February 25, 2019 claimed first use and first use in commerce date of the
`
`Opposed BIRTH JUSTICE Application, resulting in Opposer’s priority over Applicant.
`
`28.
`
`29.
`
`30.
`
`31.
`
`public.
`
`32.
`
`Applicant’s Services consist of legal services.
`
`Opposer’s Services consist of legal services.
`
`The parties’ respective services are identical.
`
`Applicant’s Services and Opposer’s Services are offered to the same consuming
`
`Applicant’s Services and Opposer’s Services are sold or offered in the same
`
`channels of trade.
`
`33.
`
`The mark of the Opposed BIRTH JUSTICE Application is identical to Opposer’s
`
`BIRTH JUSTICE Mark.
`
`
`
`7
`
`

`

`34.
`
`The BIRTH JUSTICE portion of the Opposed BIRTH JUSTICE Application is
`
`pronounced the same as the BIRTH JUSTICE portion of Opposer’s BIRTH JUSTICE Mark.
`
`35.
`
`In view of the identity of the marks, the identity of the services, the identity of the
`
`purchasers, and the identity of the channels of trade, purchasers are likely to mistakenly assume
`
`that Applicant’s Services originate from, are sponsored by, or are in some way associated with
`
`Opposer.
`
`36.
`
`The Opposed BIRTH JUSTICE Application is thus likely to cause confusion, or to
`
`cause mistake or to deceive. Accordingly, Opposer is likely to be damaged by registration of the
`
`mark of Application Serial No. 90387461.
`
`37.
`
`38.
`
`Applicant left Opposer’s firm on or about September 2, 2021.
`
`Upon Applicant’s departure from Opposer’s firm, Opposer discovered that
`
`Applicant has filed Application Serial No. 90387461, which was published for opposition on
`
`September 7, 2021.
`
`39.
`
`On information and belief, notwithstanding Opposer’s prior rights in Opposer’s
`
`BIRTH JUSTICE Mark, Applicant continues to use Opposer’s BIRTH JUSTICE Mark, and to
`
`prosecute the Opposed Birth Justice Application.
`
`40.
`
`Given Applicant’s former employment with Opposer and the identity of the marks,
`
`Applicant’s continued use of Opposer’s BIRTH JUSTICE Mark has resulted in actual confusion in
`
`the marketplace.
`
`41.
`
`On information and belief, Applicant was aware of Opposer’s rights in Opposer’s
`
`BIRTH JUSTICE Mark prior to filing the Opposed BIRTH JUSTICE Application.
`
`42.
`
`Applicant even provided Opposer’s own law firm address to the USPTO when
`
`filing the Opposed BIRTH JUSTICE Application.
`
`8
`
`
`
`

`

`43.
`
`On information and belief, Applicant was aware she was not the owner of the
`
`Opposed BIRTH JUSTICE Application at the time she filed the application.
`
`44.
`
`On information and belief, Applicant knew Opposer’s BIRTH JUSTICE Mark was
`
`designed by Opposer’s graphic artist at Opposer’s direction and expense prior to the filing of the
`
`Opposed BIRTH JUSTICE Application.
`
`45.
`
`On information and belief, Applicant knew Opposer’s BIRTH JUSTICE Mark was
`
`owned by Opposer prior to the filing of the Opposed BIRTH JUSTICE Application.
`
`46.
`
`In addition, at the time of filing Application No. 90387461, Applicant falsely
`
`represented to the USPTO that no other party had the right to use the mark of the Opposed BIRTH
`
`JUSTICE Application in commerce, thereby committing fraud on the US Patent and Trademark
`
`Office.
`
`47.
`
`Applicant’s false statement of ownership in the Opposed BIRTH JUSTICE
`
`Application was material to the filing.
`
`48.
`
`Applicant’s provision of Opposer’s law firm address as her address in the Opposed
`
`BIRTH JUSTICE Application was material to the filing.
`
`49.
`
`Applicant’s false statements in the Opposed BIRTH JUSTICE Application were
`
`intended to deceive the USPTO.
`
`50.
`
`In making false statements to the USPTO in connection with the Opposed BIRTH
`
`JUSTICE Application, Applicant acted with a reckless disregard for the truth, resulting in fraud on
`
`the USPTO.
`
`51.
`
`Because Applicant was not the owner of the mark of the Opposed BIRTH JUSTICE
`
`Application at the time of the filing of that application, Application Serial No. 90387461 is void ab
`
`initio.
`
`
`
`9
`
`

`

`52.
`
`If Applicant is granted the registration herein opposed, it would thereby obtain at
`
`least a prima facie exclusive right to use of the mark of the Opposed BIRTH JUSTICE
`
`Application, which would be a further source of damage.
`
`
`
`WHEREFORE, Opposer prays that Application Serial No. 90387461 be refused
`
`registration, and that this Opposition be sustained in favor of Opposer.
`
` A
`
` filing fee for the Notice of Opposition is being submitted electronically herewith. While
`
`Opposer believes sufficient funds have been submitted via the electronic filing system, to the
`
`extent additional fees are deemed owing, they may be debited from Deposit Account No. 50-5464.
`
`
`
`Dated: October 6, 2021
`
`
`
`
`
`Respectfully submitted,
`
`/MMLO/
`By:
`Mary Margaret L. O’Donnell
`Briana Emerson
`BLUE FILAMENT LAW PLLC
`700 E. Maple, Suite 450
`Birmingham, Michigan 48009
`Telephone: 248-430-5771
`Email: interpartes@bluefilamentlaw.com
`
`Attorneys for Opposer
`
`
`
`10
`
`

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