`
`ESTTA Tracking number:
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`ESTTA1178809
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`Filing date:
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`12/15/2021
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
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`91272167
`
`Party
`
`Correspondence
`Address
`
`Defendant
`Emily Grace Thomas
`
`RICHARD W. HOFFMANN
`REISING ETHINGTON P.C.
`755 W. BIG BEAVER RD. SUITE 1850
`TROY, MI 48084
`UNITED STATES
`Primary Email: hoffmann@reising.com
`Secondary Email(s): docketing@reising.com, dcosta@reising.com, beck-
`er@reising.com
`2486893500
`
`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Answer
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`Richard W. Hoffmann
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`hoffmann@reising.com, dcosta@reising.com, docketing@reising.com
`
`/Richard W. Hoffmann/
`
`12/15/2021
`
`Attachments
`
`91272167 Answer and Affirmative Defenses.pdf(277703 bytes )
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`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91272167
`
`) )
`
`) Application Serial No. 79/245,112
`)
`
`) Mark:
`)
`
`) )
`
`) )
`
`OLSMAN, MACKENZIE, PEACOCK
`& WALLACE, P.C.,
`Opposer,
`
`v.
`
`EMILY GRACE THOMAS
`
`Applicant.
`
`APPLICANT EMILY GRACE THOMAS’ ANSWER AND AFFIRMATIVE DEFENSES TO
`OPPOSER OLSMAN, MACKENZIE, PEACOCK & WALLACE, P.C.’s NOTICE OF
`OPPOSITION
`
`Applicant, Emily Grace Thomas, an individual having an address at 29488 Woodward
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`Avenue, Suite 340, Royal Oak, MI 48073 (“Applicant”), by and through her attorneys of record,
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`Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) and the Federal Rules of Civil
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`Procedure (“Fed.R.Civ.P.”), answers Opposer, Olsman, Mackenzie, Peacock & Wallace, P.C
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`(hereafter “Opposer” ) Notice of Opposition as follows:
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`The grounds stated by Opposer for this Opposition are
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` mark of Application Serial No. 90387461 (the “Opposed
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`BIRTH JUSTICE Application”) by Applicant is likely to cause confusion, or to cause
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`mistake or to deceive with respect to Opposer’s prior use and adoption of
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`marks comprising BIRTH JUSTICE and
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` or (“Opposer’s BIRTH JUSTICE Mark”), on the basis of fraud for
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`falsely misrepresenting ownership and acting with reckless disregard for the truth before the
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`USPTO, and on the basis that Application Serial No. 90387461 is void ab initio for having been
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`filed in the name of party not owning the mark.
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`Applicant’s respective Answers to Opposers allegations are as follows:.
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`
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`1. Opposer is a law firm specializing in a variety of personal injury, neglect, police
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`misconduct, sexual abuse, and malpractice claims, including those relating to birth injury.
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`APPLICANT’S ANSWER: Applicant is without sufficient information upon which to form a belief
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`as to the truth or falsity of the allegations contained in Paragraph 1 of the Notice of Opposition and
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`therefore denies same.
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`2. In connection with its legal practice, Opposer has used the BIRTH JUSTICE logo
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` since at least as early as October 2018 in connection with its legal
`services (“Opposer’s Services”).
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`APPLICANT’S ANSWER: Applicant is without sufficient information upon which to form a belief
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`as to the truth or falsity of the allegations contained in Paragraph 2 of the Notice of Opposition and
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`therefore denies same.
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`3.
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`At Opposer’s direction and expense, Opposer’s graphic designer created the
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`logo for Opposer in August 2018, with all rights, title and interest
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`in such logo assigned to Opposer.
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`
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`APPLICANT’S ANSWER: Applicant denies the allegations of Paragraph 3 of the Notice of
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`Opposition.
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`4.
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`Opposer’s US Application Serial No. 97062312 pending with the USPTO for
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`12
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` for legal services (“Opposer’s BIRTH JUSTICE Application”).
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`
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`APPLICANT’S ANSWER: Applicant admits that Opposer’s US Application Serial No.
`97062312 pending with the USPTO for the identified mark in connection with legal services.
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`5.
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`In connection with its birth injury legal services, Opposer uses Opposer’s BIRTH
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`JUSTICE Mark on Opposer’s website, in social media, in promotional materials, and as a trade
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`name. The domain name birthjustice.com previously redirected to the BIRTH JUSTICE section
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`of Opposer’s website at www.olsmanlaw.com.
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`
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`APPLICANT’S ANSWER: Applicant is without sufficient information upon which to form a
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`belief as to the truth or falsity of the allegations contained in Paragraph 5 of the Notice of
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`Opposition and therefore denies same.
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`
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`6.
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`Applicant Ms. Thomas was employed by Opposer from approximately June 2018
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`through early September 2021.
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`
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`APPLICANT’S ANSWER: Applicant admits the allegation of Paragraph 6 of the Notice of
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`Opposition.
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`7.
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`During her employment with Opposer, Applicant participated in personal injury
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`and medical malpractice cases, including those involving birth trauma.
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`APPLICANT’S ANSWER: Applicant admits that she settled two birth injury cases while
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`at Opposer’s firm, both of which originated from a prior firm and the clients followed Applicant to
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`Opposer’s firm.
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`8. While employed by Opposer and notwithstanding Opposer’s rights in Opposer’s
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`BIRTH JUSTICE Marks, including but not limited to the
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`logo,
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`Applicant started a “Birth Justice” Facebook page in June 2019.
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`
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`APPLICANT’S ANSWER: Applicant admits the allegation of Paragraph 8 of the Notice of
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`Opposition.
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`9.
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`Without regard to Opposer’s rights and while employed by Opposer, Applicant
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`filed a trademark application for
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` on December 16, 2020 for “legal
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`services; namely providing legal consultation and research services, and litigation assistance and
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`strategy services relating to birth injury” (“Applicant’s Services”).
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`
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`APPLICANT’S ANSWER: Applicant denies that Opposer has any rights to any mark in this
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`Opposition, but Applicant admits that she filed the identified trademark application for Applicant’s
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`services.
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`14
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`10.
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`Applicant filed App. Serial No. 90387461 for
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` in her own
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`name, while still employed by Opposer.
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`APPLICANT’S ANSWER: Applicant denies any implication that Opposer has any rights to any
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`mark in this Opposition, but Applicant admits that Applicant filed the identified trademark
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`application for Applicant’s services on December 16, 2020.
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`
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`11.
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`Applicant filed the Opposed BIRTH JUSTICE Application using Opposer’s law
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`firm address of 2684 West Eleven Mile Road, Berkley, Michigan 48072.
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`
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`APPLICANT’S ANSWER: Applicant admits that when Applicant filed the trademark
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`application she used her then office mailing address at 2684 West eleven Mile Road, Berkley MI
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`48072.
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`12.
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`A little over a month after filing the Opposed BIRTH JUSTICE Application, and
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`while still employed by Opposer, Applicant filed a request to update the address associated with
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`the Opposed Application to her own address: 151 Lafayette, Apt. 319, Pontiac, Michigan 48342.
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`APPLICANT’S ANSWER: Applicant admits that it filed a Change Address or Representation
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`Form on January 27, 2021, identifying an address at 151 Lafayette, Apt. 319, Pontiac, Michigan
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`48342.
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`15
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`13.
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`The Opposed BIRTH JUSTICE Application was filed on a use basis, claiming a
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`date of first use and first use in commerce of February 25, 2019.
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`
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`APPLICANT’S ANSWER: Applicant admits the allegation of Paragraph 13 of the Notice of
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`Opposition.
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`14.
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`Applicant was employed by Opposer as of the first use and first use in commerce
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`date of February 25, 2019.
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`
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`APPLICANT’S ANSWER: Applicant admits that applicant was employed by Opposer as of
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`February 25, 2019, but denies any implication that Applicant’s claimed use was on behalf of
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`Opposer.
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`15.
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`Applicant entered a disclaimer of BIRTH JUSTICE in the Opposed BIRTH
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`JUSTICE Application, confirming she has no exclusive right to use “birth justice” apart from the
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`mark as shown.
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`
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`APPLICANT’S ANSWER: Applicant admits that a disclaimer was entered by Examiner’s
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`Amendment dated August 2,2021 which acknowledged that “No claim is made to the exclusive
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`right to use “BIRTH JUSTICE” apart from the mark as shown.
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`
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`16.
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`Applicant was aware of Opposer’s ownership of Opposer’s BIRTH JUSTICE
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`Mark prior to filing an application for the Opposed BIRTH JUSTICE Mark.
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`16
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`APPLICANT’S ANSWER: Applicant denies the allegation of Paragraph 16 of the Notice of
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`Opposition.
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`17.
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`The specimens submitted by Applicant in connection with the Opposed BIRTH
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`JUSTICE Application consist of Facebook pages touting Opposer’s settlement awards and
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`reflecting the birthjustice.com domain name, which redirected to Opposer’s website at
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`olsmanlaw.com.
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`
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`APPLICANT’S ANSWER: Applicant admits that the specimens consist of Facebook pages
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`maintained by Applicant and that the Facebook pages touting Opposer’s settlement awards and
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`reflecting the birthjustice.com domain name, which redirected to Applicant’s biography page.
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`18.
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`The
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` mark of the Opposed BIRTH JUSTICE
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`Application
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`replicates exactly the
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`logo that Opposer’s graphic artist created for
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`17
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`Opposer at Opposer’s direction and expense.
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`
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`APPLICANT’S ANSWER: Applicant denies that the Applicant’s mark replicates exactly the
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`logo of Opposer’s Application and Applicant further denies that Opposer’s graphic artist created
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`the logo of Opposer’s Application.
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`
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`19.
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`The inversion of the black and white color scheme in the Opposed BIRTH
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`JUSTICE Application does not differentiate that mark from Opposer’s BIRTH JUSTICE logo,
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`both of which appear below:
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`Applicant’s Mark
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`Opposer’s Mark
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`APPLICANT’S ANSWER: Applicant is without sufficient information upon which to form a belief
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`as to the truth or falsity of the allegations contained in Paragraph 19 of the Notice of Opposition and
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`therefore denies same.
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`20.
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`The Opposed BIRTH JUSTICE Application is not limited as to color.
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`APPLICANT’S ANSWER: Applicant admits that its Application is not limited as to color.
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`18
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`Opposer’s BIRTH JUSTICE Application is not limited as to color.
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`21.
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`APPLICANT’S ANSWER: Applicant is without sufficient information upon which to form a belief
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`as to the truth or falsity of the allegations contained in Paragraph 21 of the Notice of Opposition and
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`therefore denies same.
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`22.
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`As Opposer expects the Opposed BIRTH JUSTICE Application will be cited
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`against Opposer’s BIRTH JUSTICE Application, Opposer has standing to bring this proceeding.
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`APPLICANT’S ANSWER: Applicant is without sufficient information upon which to form a belief
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`as to the truth or falsity of the allegations contained in Paragraph 22 of the Notice of Opposition and
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`therefore denies same.
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`23.
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`Well prior to Applicant’s December 16, 2020 filing date of the Opposed BIRTH
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`JUSTICE Application, Opposer has used the BIRTH JUSTICE mark for legal services.
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`
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`APPLICANT’S ANSWER: Applicant denies the allegations contained in Paragraph 23 of the
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`Notice of Opposition.
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`24.
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`Any use by Applicant of Opposer’s BIRTH JUSTICE Mark inured to the benefit
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`of Opposer.
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`APPLICANT’S ANSWER: Applicant denies the allegations contained in Paragraph 24 of the
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`Notice of Opposition.
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`19
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`25.
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`As a result of the quality of Opposer’s Services and the widespread promotion
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`thereof under Opposer’s BIRTH JUSTICE Mark, Opposer and Opposer’s Services have attracted
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`substantial commercial interest and consumer recognition.
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`
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`APPLICANT’S ANSWER: Applicant is without sufficient information upon which to form a
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`belief as to the truth or falsity of the allegations contained in Paragraph 25 of the Notice of
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`Opposition and therefore denies same
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`26.
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`Opposer’s BIRTH JUSTICE Mark has become a symbol of Opposer, Opposer’s
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`Services, and Opposer’s goodwill.
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`
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`APPLICANT’S ANSWER: Applicant is without sufficient information upon which to form a
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`belief as to the truth or falsity of the allegations contained in Paragraph 26 of the Notice of
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`Opposition and therefore denies same.
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`27.
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`Opposer’s use of Opposer’s BIRTH JUSTICE Mark and the rights associated
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`therewith date to at least as early as October 2018 for legal services, predating the December 16,
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`2020 filing date and February 25, 2019 claimed first use and first use in commerce date of the
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`Opposed BIRTH JUSTICE Application, resulting in Opposer’s priority over Applicant.
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`APPLICANT’S ANSWER: Applicant denies that Opposer has any rights associated with the
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`BIRTH JUSTICE Mark, and accordingly denies the allegations of Paragraph 27 of the Notice of
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`Opposition.
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`28.
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`Applicant’s Services consist of legal services.
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`APPLICANT’S ANSWER: Applicant admits that the services listed in Applicant’s application
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`are Legal services; namely providing legal consultation and research services, and litigation
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`assistance and strategy services relating to birth injury, otherwise denied.
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`29.
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`Opposer’s Services consist of legal services.
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`APPLICANT’S ANSWER: Applicant admits that the services listed in Opposer’s application are
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`Legal services
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`The parties’ respective services are identical.
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`30.
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`APPLICANT’S ANSWER: Applicant denies that the listing of services in the respective
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`applications is “identical.”
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`31.
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`Applicant’s Services and Opposer’s Services are offered to the same consuming
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`public.
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`APPLICANT’S ANSWER: Applicant is without sufficient information upon which to form a
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`belief as to the truth or falsity of the allegations contained in Paragraph 31 of the Notice of
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`Opposition and therefore denies same.
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`32.
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`Applicant’s Services and Opposer’s Services are sold or offered in the
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`same channels of trade.
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`APPLICANT’S ANSWER: Applicant is without sufficient information upon which to form a
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`21
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`belief as to the truth or falsity of the allegations contained in Paragraph 32 of the Notice of
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`Opposition and therefore denies same.
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`33.
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`The mark of the Opposed BIRTH JUSTICE Application is identical to Opposer’s
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`BIRTH JUSTICE Mark.
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`APPLICANT’S ANSWER: Applicant denies the allegations of Paragraph 33 of the Notice of
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`Opposition.
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`34.
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`The BIRTH JUSTICE portion of the Opposed BIRTH JUSTICE Application is
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`pronounced the same as the BIRTH JUSTICE portion of Opposer’s BIRTH JUSTICE Mark.
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`APPLICANT’S ANSWER: Applicant is without sufficient information upon which to form a
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`belief as to the truth or falsity of the allegations contained in Paragraph 34 of the Notice of
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`Opposition and therefore denies same.
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`35.
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`In view of the identity of the marks, the identity of the services, the identity of the
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`purchasers, and the identity of the channels of trade, purchasers are likely to mistakenly assume
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`that Applicant’s Services originate from, are sponsored by, or are in some way associated with
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`Opposer.
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`APPLICANT’S ANSWER: Applicant denies the allegations of Paragraph 26 of the Notice of
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`Opposition.
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`36.
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`The Opposed BIRTH JUSTICE Application is thus likely to cause confusion, or to
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`cause mistake or to deceive. Accordingly, Opposer is likely to be damaged by registration of the
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`mark of Application Serial No. 90387461.
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`
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`APPLICANT’S ANSWER: Applicant is without sufficient information upon which to form a
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`belief as to the truth or falsity of the allegations contained in Paragraph 36 of the Notice of
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`Opposition and therefore denies same.
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`37.
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`Applicant left Opposer’s firm on or about September 2, 2021.
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`APPLICANT’S ANSWER: Applicant admits the allegation of Paragraph 37 of the Notice of
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`Opposition.
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`38.
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`Upon Applicant’s departure from Opposer’s firm, Opposer discovered that
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`Applicant has filed Application Serial No. 90387461, which was published for opposition on
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`September 7, 2021.
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`
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`APPLICANT’S ANSWER: Applicant is without sufficient information upon which to form a
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`belief as to the truth or falsity of the allegations contained in Paragraph 38 of the Notice of
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`Opposition and therefore denies same.
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`39.
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`On information and belief, notwithstanding Opposer’s prior rights in Opposer’s
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`BIRTH JUSTICE Mark, Applicant continues to use Opposer’s BIRTH JUSTICE Mark, and to
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`23
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`prosecute the Opposed Birth Justice Application.
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`APPLICANT’S ANSWER: Applicant denies that Opposer has any rights to any mark in this
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`Opposition, but Applicant admits that it continues to prosecute Applicant’s trademark application.
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`40.
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`Given Applicant’s former employment with Opposer and the identity of the marks,
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`Applicant’s continued use of Opposer’s BIRTH JUSTICE Mark has resulted in actual confusion in
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`the marketplace.
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`APPLICANT’S ANSWER: Applicant is without sufficient information upon which to form a
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`belief as to the truth or falsity of the allegations contained in Paragraph 38 of the Notice of
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`Opposition and therefore denies same.
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`41.
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`On information and belief, Applicant was aware of Opposer’s rights in Opposer’s
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`BIRTH JUSTICE Mark prior to filing the Opposed BIRTH JUSTICE Application.
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`APPLICANT’S ANSWER: Applicant denies that Opposer has any rights to any mark in this
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`Opposition and therefore denies the allegations of Paragraph 41 of the Notice of Opposition.
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`42.
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`Applicant even provided Opposer’s own law firm address to the USPTO when
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`filing the Opposed BIRTH JUSTICE Application.
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`
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`APPLICANT’S ANSWER: Applicant admits that when Applicant filed the trademark application
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`she used her then office mailing address at 2684 West eleven Mile Road, Berkley MI 48072.
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`24
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`43.
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`On information and belief, Applicant was aware she was not the owner of the
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`Opposed BIRTH JUSTICE Application at the time she filed the application.
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`APPLICANT’S ANSWER: Applicant denies the allegations of Paragraph 43 of the Notice of
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`Opposition.
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`44.
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`On information and belief, Applicant knew Opposer’s BIRTH JUSTICE Mark was
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`designed by Opposer’s graphic artist at Opposer’s direction and expense prior to the filing of the
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`Opposed BIRTH JUSTICE Application.
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`APPLICANT’S ANSWER: Applicant denies the allegations of Paragraph 45 of the Notice of
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`Opposition.
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`45.
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`On information and belief, Applicant knew Opposer’s BIRTH JUSTICE Mark was
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`owned by Opposer prior to the filing of the Opposed BIRTH JUSTICE Application.
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`
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`APPLICANT’S ANSWER: Applicant denies the allegations of Paragraph 45 of the Notice of
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`Opposition.
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`46.
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`In addition, at the time of filing Application No. 90387461, Applicant falsely
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`represented to the USPTO that no other party had the right to use the mark of the Opposed BIRTH
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`JUSTICE Application in commerce, thereby committing fraud on the US Patent and Trademark
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`Office.
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`25
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`APPLICANT’S ANSWER: Applicant denies the allegations of Paragraph 46 of the Notice of
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`Opposition.
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`47.
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`Applicant’s false statement of ownership in the Opposed BIRTH JUSTICE
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`Application was material to the filing.
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`APPLICANT’S ANSWER: Applicant denies the false premise and therefore denies the
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`allegations of Paragraph 43 of the Notice of Opposition.
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`48.
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`Applicant’s provision of Opposer’s law firm address as her address in the Opposed
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`BIRTH JUSTICE Application was material to the filing.
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`
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`APPLICANT’S ANSWER: Applicant is without sufficient information upon which to form a
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`belief as to the truth or falsity of the allegations contained in Paragraph 48 of the Notice of
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`Opposition and therefore denies same.
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`
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`49.
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`Applicant’s false statements in the Opposed BIRTH JUSTICE Application were
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`intended to deceive the USPTO.
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`
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`APPLICANT’S ANSWER: Applicant denies the false premise and therefore denies the
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`allegations of Paragraph 49 of the Notice of Opposition.
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`50.
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`In making false statements to the USPTO in connection with the Opposed BIRTH
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`26
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`JUSTICE Application, Applicant acted with a reckless disregard for the truth, resulting in fraud on
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`the USPTO.
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`APPLICANT’S ANSWER: Applicant denies the false premise and therefore denies the
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`allegations of Paragraph 50 of the Notice of Opposition.
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`51.
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`Because Applicant was not the owner of the mark of the Opposed BIRTH JUSTICE
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`Application at the time of the filing of that application, Application Serial No. 90387461 is void ab
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`initio.
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`APPLICANT’S ANSWER: Applicant denies the false premise and therefore denies the allegations
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`of Paragraph 51 of the Notice of Opposition
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`52.
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`If Applicant is granted the registration herein opposed, it would thereby obtain at
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`least a prima facie exclusive right to use of the mark of the Opposed BIRTH JUSTICE Application,
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`which would be a further source of damage.
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`APPLICANT’S ANSWER: Applicant denies that Opposer would suffer any damage and therefore
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`denies the allegations of Paragraph 52 of the Notice of Opposition.
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`1.
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`2.
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`AFFIRMATIVE DEFENSES
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`Opposer cannot demonstrate priority for its alleged mark, and/or application.
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`Opposer cannot demonstrate any likelihood that the public will be confused or misled
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`27
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`as to the source of Applicant’s goods, or that Applicant’s goods are associated with or endorsed by
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`Opposer.
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`3.
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`By having knowledge of Applicant’s use of the mark of the applied-for registration,
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`Opposer is estopped from claiming any likelihood that the public will be confused or misled as to the
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`source of Applicant’s goods, or that Applicant’s goods are associated with or endorsed by Opposer.
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`4.
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`By having knowledge of Applicant’s use of the mark of the applied-for registration,
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`Opposer has acquiesced in Applicant’s use and therefore the registrability of Applicant’s mark.
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`WHEREFORE, Applicant and Counter-Petitioner respectfully prays that:
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`PRAYER FOR RELIEF
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`a) the Opposition be dismissed and that this Opposition be sustained in favor of the Applicant
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`and that Applicant’s mark, Application Serial No. 90/387461, be permitted to proceed to
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`registration; and
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`b) it be awarded such further relief as this Board deems just and proper.
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`Date: December 15, 2021
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`Respectfully submitted,
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`By: /Richard W. Hoffmann/
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`RICHARD W. HOFFMANN (MI Bar No. P42352)
`JAMES D. STEVENS JR. (MI Bar No. 82081)
`Reising Ethington P.C.
`755 West Big Beaver Road, Suite 1850
`Troy, Michigan 48084
`Telephone: 248-689-3500
`Facsimile: 248-689-4071
`hoffmann@reising.com
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`Attorneys for Applicant Emily Grace Thomas
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`28
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