Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1294087
`06/28/2023
`
`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
`
`Saint Paul Agency, LLC
`
`Granted to date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`06/28/2023
`
`6 W 5TH STREET
`#525
`ST. PAUL, MN 55102
`UNITED STATES
`
`RUSSELL M. SPENCE, JR.
`THE SPENCE LAW FIRM
`222 S. 9TH STREET
`SUITE 1600
`MINNEAPOLIS, MN 55402
`UNITED STATES
`Primary email: spence@spence.law
`Secondary email(s): beeman@spence.law, perez@spence.law
`6123379007
`
`Docket no.
`
`Applicant information
`
`Application no.
`
`97324065
`
`Opposition filing
`date
`
`Applicant
`
`06/28/2023
`
`Nicolet Law Office, S.C.
`SUITE 205
`517 2ND STREET
`HUDSON, WI 54016
`UNITED STATES
`
`Publication date
`
`02/28/2023
`
`Opposition period
`ends
`
`06/28/2023
`
`Goods/services affected by opposition
`
`Class 045. First Use: Apr 20, 2007 First Use In Commerce: Apr 20, 2007
`All goods and services in the class are opposed, namely: Legal services
`
`Grounds for opposition
`
`The mark is merely descriptive
`
`Trademark Act Section 2(e)(1)
`
`The mark is primarily merely a surname
`
`Trademark Act Section 2(e)(4)
`
`Fraud on the USPTO
`
`In re Bose Corp., 580 F.3d 1240, 91 USPQ2d
`1938 (Fed. Cir. 2009)
`
`

`

`Attachments
`
`2023.06.28-SPA-TTAB Opposition.pdf(181959 bytes )
`TTAB-Exh-A.pdf(1849031 bytes )
`TTAB-Exh-B.pdf(228901 bytes )
`TTAB-Exh-C.pdf(2559726 bytes )
`TTAB-Exh-D.pdf(3447957 bytes )
`TTAB-Exh-E.pdf(192614 bytes )
`TTAB-Exh-F.pdf(1724560 bytes )
`
`Signature
`
`/Russell M. Spence, Jr./
`
`Name
`
`Date
`
`RUSSELL M. SPENCE, JR.
`
`06/28/2023
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the Matter of Application Serial No. 97/324,065
`For the mark: NICOLET LAW
`Published: February 28, 2023
`
`
`
`Opposition No. _______
`
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` –
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` – – – – – – – – – – – – – – – – – – – – – – – – – X
`SAINT PAUL AGENCY, LLC
`:
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`
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`:
`
`
`Opposer,
`:
`
`
`:
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`v.
`:
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`
`:
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`NICOLET LAW OFFICE, S.C.,
`:
`
`
`:
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`Applicant.
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`:
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` – – – – – – – – – – – – – – – – – – – – – – – – – – X
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`NOTICE OF OPPOSITION
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`
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`Saint Paul Agency, LLC ("Opposer"), a limited liability company organized and existing
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`under the laws of Minnesota with a principal place of business at 6 W 5th Street, Unit 525, St.
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`Paul, MN 55102, believes that it will be damaged by the issuance of a registration for the alleged
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`trademark "Nicolet Law" as shown in Application Serial No. 97/324,065 (the "Application"), and
`
`hereby opposes the same. As grounds for opposition, Opposer alleges as follows:
`
`1. On March 22, 2022, Nicolet Law Office, S.C. (“Applicant”) filed an application for
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`registration of the mark NICOLET LAW in International Class 45 for services
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`described as “Legal services.” Applicant has attorneys who practice within its firm
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`who share the surname Nicolet.
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`2.
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`The Application was published for opposition on February 28, 2023, and Opposer
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`has timely filed for, and the Trademark Trial and Appeal Board has granted, both an
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`initial thirty-day extension and subsequent sixty-day extension of time to file an
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`opposition; until June 28, 2023.
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`

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`3. Opposer is and has been in the business of providing advertising services to
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`businesses since at least as early as July 9, 2015. In connection with this business,
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`Opposer offers for sale and provides advertising services for personal injury law firms
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`throughout Wisconsin and Minnesota which compete directly with Applicant.
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`4. Opposer, and others, would be harmed by Applicant being granted exclusive right to
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`use this mark, which is in fact the surname of lawyers at Applicant’s firm, even
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`though Opposer has never sought to register "Nicolet Law" as a trademark, nor
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`claimed exclusive rights in the designation in connection with any goods or services.
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`5.
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`The USPTO initially rejected the Application, appropriately so, on the grounds that
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`"Nicolet Law" is primarily merely a surname identifying Applicant's legal services.
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`The USPTO’s Office Action further required any further efforts by Applicant to
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`register the mark to include a disclaimer of the term “Law” apart from use in
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`connection with the mark as a whole.
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`6. However, the USPTO withdrew this objection in response to Applicant's Section 2(f)
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`declaration that the mark has allegedly acquired a secondary meaning through
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`Applicant’s use of the mark “in commerce that the U.S. Congress may lawfully
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`regulate for at least five years immediately before the date” of Applicant’s response
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`to the Application’s first Office Action.
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`7. On February 8, 2023, the USPTO Examining Attorney approved the Application for
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`publication.
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`8.
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`Previously, on November 14, 2022, based on its perception of claimed exclusive
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`rights in the descriptive, surname designation "Nicolet Law," Applicant objected to
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`2
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`
`
`
`
`

`

`Opposer's errant and unknown use of the designation in connection with Opposer's
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`business by commencing a legal proceeding against Opposer for trademark
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`infringement, among other claims. Attached as Exhibit A is a true and correct copy
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`of Applicant's November 14, 2022, Complaint. Attached as Exhibit B is a true and
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`correct copy of Opposer's May 22, 2023, Answer and Counterclaim against
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`Applicant.
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`9.
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`If Applicant obtains the registration herein opposed, Applicant would obtain an
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`exclusive right to use the descriptive, primarily surname “Nicolet Law” mark, to the
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`exclusion of others. Such registration would be a source of damage and injury to
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`Opposer and others who are currently in a trademark infringement lawsuit in federal
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`court over the use of the “Nicolet Law” mark.
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`10. Moreover, and central to the policy against granting such a monopoly to register and
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`exclusively use a surname as a mark, to the exclusion of all others, another law firm
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`is currently using a mark which is the same or similar to Applicant’s yet-to-be
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`approved mark, to advertise that firm’s legal services, at the uniform resource locator
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`(“URL”) address www.NicoletLawyers.com. A true and correct copy of a printout of
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`that currently-in-use website is attached hereto as Exhibit C.
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`
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`3
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`

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`FIRST GROUND FOR OPPOSITION - MERE DESCRIPTIVENESS
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`11. Opposer incorporates by reference the allegations in Paragraphs 1 through 10 above.
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`12. The designation "Nicolet Law" is merely descriptive of Applicant's legal services,
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`and Applicant has not shown and cannot show that the designation has acquired
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`distinctiveness.
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`13. As a descriptive designation without secondary meaning, "Nicolet Law" does not
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`distinguish Applicant's legal services from those provided by others within the legal
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`industry.
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`14. Applicant’s Section 2(f) declaration was not accompanied by any advertising
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`expenditures, sales revenues, examples of advertising or marketing materials,
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`affidavits from relevant consumers attesting to their understanding of the term
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`“Nicolet Law” as a source identifier, nor any consumer surveys.
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`15. Applicant has provided no evidence of secondary meaning in the phrase “Nicolet
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`Law” and only initiated the Application following the events that initiated
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`Applicant’s federal trademark infringement proceeding.
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`16. Therefore, Opposer would be injured by the registration sought by Applicant for the
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`descriptive designation “Nicolet Law”, which would unreasonably and unjustly
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`provide Applicant prima facie evidence of a protectable mark in the parties’ ongoing
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`trademark infringement case.
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`17. Based on the foregoing, registration of "Nicolet Law" exceeds the scope of
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`permissible registration under 15 U.S.C. § 1052(e)(1), which prohibits registration of
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`merely descriptive terms.
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`4
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`

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`SECOND GROUND FOR OPPOSITION – PRIMARLY MERELY A SURNAME
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`18. Opposer incorporates by reference the allegations in Paragraphs 1 through 17 above.
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`19. The Applicant’s claimed “Nicolet Law” mark is primarily merely a surname under
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`Section 2(e)(4) of the Lanham Trademark Act, 15 U.S.C. § 1051, 1052 et seq.
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`20. Applicant presently has three attorneys, namely Russell D. Nicolet, Adam L. Nicolet,
`
`and Benjamin J. Nicolet, who share the surname “Nicolet.” Therefore, the “Nicolet
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`Law” mark functions merely as a surname for Applicant.
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`21. “Nicolet” is a common surname in the United States. As the Examining Attorney
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`initially pointed out in the January 6, 2023 Office Action, the surname “Nicolet”
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`appears 1178 times as a surname in the LEXISNEXIS® surname database. A search
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`of the URL www.whitepages.com returned over one hundred results across the
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`country for the surname “Nicolet”. See Office Action dated 1/6/23.
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`22. Opposer hereby relies upon the following service mark applications and TTAB
`
`proceedings, contained in Exhibits D and E to show that a mark that primarily
`
`functions as a surname should not be registered on the Principal Register. Exhibit D
`
`and Exhibit E are hereby incorporated by reference as if fully set forth herein. Those
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`applications are: “A.F. DAVIS LAW” (Ser. No. 77/082,308) and “MILLER LAW
`
`GROUP” (Ser. No. 77/343,411). Exhibits D and E contain service mark applications
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`for legal services, whose marks contain surnames. Exhibits D, E and their related
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`Trademark Office Actions show that a mark which is primarily a surname should be
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`refused registration on the Principal Register. Further, Exhibits D and E also confirm
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`that “law” and “law group” are merely descriptive or generic terms which do not
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`overcome a mark’s surname significance.
`
`5
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`
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`

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`23. The Application disclaims “Law” apart from use with the “Nicolet Law” mark as a
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`whole, thus the application effectively seeks to register a surname. Applicant cannot
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`show exclusive use of the non-disclaimed portion of the term “Nicolet” for legal
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`services.
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`24. Applicant is not even the sole entity providing legal services using the surname
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`“Nicolet” in Wisconsin, and through interstate commerce, as a third-party law firm,
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`the Law Office of Spiro Nicolet, is operating in Milwaukee, Wisconsin and Chicago,
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`Illinois. See Exhibit C, the true and correct copy of the www.NicoletLawyers.com
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`web page printout.
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`25. Opposer and others such as Nicolet Lawyers would be injured by the registration
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`sought by Applicant for the descriptive designation “Nicolet Law.”
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`26. Based on the foregoing, registration of "Nicolet Law" exceeds the scope of
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`permissible registration under 15 U.S.C. § 1052(e)(4), which prohibits registration of
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`marks which are primarily merely surnames.
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`THIRD GROUND FOR OPPOSITION – FRAUD
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`27. Opposer incorporates by reference the allegations in Paragraphs 1 through 26 above.
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`28. On January 16, 2023, Applicant filed its Section 2(f) declaration as a response to the
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`Non-final Office Action issued January 6, 2023.
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`29.
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`In Applicant’s Section 2(f) declaration, a true and correct copy of which is attached
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`hereto as Exhibit F, Applicant, through its Attorney of Record, Carol N. Skinner,
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`represented to the USPTO that Applicant’s mark “has become distinctive of the
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`goods/services through the applicant’s substantially exclusive and continuous use of
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`6
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`
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`

`

`the mark in commerce that the U.S. congress may lawfully regulate for at least the
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`five years immediately before the date of this statement” (the “Representation”)
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`(emphasis added).
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`30. Upon information and belief, Applicant knew or had reason to know that the
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`Representation was false at the time it was made on Applicant’s behalf. Applicant
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`practices in the same area of law and within the same state as attorney Spiros Nicolet,
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`who operates the URL www.NicoletLawyers.com.
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`31. The only reasonable inference from the foregoing is that Applicant made the
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`Representation to mislead the USPTO or to cause the USPTO to approve the
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`Application for publication and grant a registration for the “Nicolet Law” mark.
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`32. The false or misleading Representation was material because, but for that
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`Representation, the USPTO likely would not have approved the Application for
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`publication. However, in reliance on the false or misleading Representation, the
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`USPTO approved the Application for publication on February 28, 2023.
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`33. Opposer would be injured by the registration sought by Applicant for the descriptive
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`designation “Nicolet Law.”
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`34. Based on the foregoing, it appears Applicant committed fraud or made misleading
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`statements in connection with the filing of the Application, which is also grounds for
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`denial of the Application in its entirety.
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`7
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`

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`WHEREFORE, Opposer respectfully requests that its opposition be sustained and that U.S.
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`Application Serial No. 97/324,065 be denied.
`
`Dated: June 28, 2023
`Minneapolis, MN
`
`
`
`Respectfully submitted,
`
`THE SPENCE LAW FIRM
`
`
`s/Russell M. Spence, Jr./
`Russell M. Spence, Jr. Atty. No. 241052
`Two22 Tower, Suite 1600
`222 South 9th Street
`Minneapolis, Minnesota 55402
`(612) 337-9007
`spence@spence.law
`
`ATTORNEYS FOR OPPOSER SAINT PAUL
`AGENCY, LLC
`
`
`8
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`

`

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`EXHIBIT
`EXHIBIT
`
`A
`A
`
`

`

`Case: 3:22-cv-00654 Document #: 1 Filed: 11/14/22 Page 1 of 15
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF WISCONSIN
`___________________________________________________________
`
`NICOLET LAW OFFICE S.C.
`
`Plaintiff,
`
`v.
`
`BYE, GOFF & ROHDE, LTD. and
`SAINT PAUL AGENCY, LLC
`
`Civil Action No. 22-CV-654
`
`Defendants.
`___________________________________________________________
`
`COMPLAINT
`___________________________________________________________
`
`Plaintiff Nicolet Law Office S.C. (“Nicolet”), by its counsel at Gass Turek LLC, states
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`the following for its Complaint against Bye, Goff & Rohde, Ltd. (“Bye Goff”) and Saint Paul
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`Agency, LLC (“Saint Paul”) (collectively “Defendants”).
`
`NATURE OF THE DISPUTE
`
`1.
`
`This action arises from Defendants' repeated, willful, egregious, and deceptive
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`Google Ads campaigns misappropriating Nicolet’s name and trademark. Specifically, Bye
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`Goff—with the assistance of its online marketing agency, Saint Paul—has launched sponsored
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`online advertisements improperly using Nicolet’s name and trademark in the “headline” of
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`the advertisement, as depicted below:
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`BGR Advertisement
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`Nicolet Name
`
`

`

`Case: 3:22-cv-00654 Document #: 1 Filed: 11/14/22 Page 2 of 15
`
`2.
`
`These advertisements are inherently misleading because they misdirect
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`unsuspecting potential clients searching for Nicolet towards Bye Goff’s website. For instance,
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`when a potential client used Google.com to search for “Nicolet Law,” one of the first items
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`listed on the results page was the result depicted above, purporting to be a link to Nicolet’s
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`website: “Nicolet law – Serving Wisconsin & Minnesota.” When that link is clicked, however,
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`the potential client would be taken to Bye Goff’s website, exposed to Bye Goff’s marketing
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`efforts, and potentially lured into retaining Bye Goff as his or her attorney. The unsuspecting
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`client may even believe there is some affiliation between Bye Goff and Nicolet, which simply
`
`is not true as they are competitors in the field of representing injured individuals in personal
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`injury claims.
`
`3.
`
`In addition to deceiving potential clients and the general public, these online
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`advertisements infringe on Nicolet’s trademark in “NICOLET LAW.”
`
`4.
`
`In March 2022, Nicolet demanded that Bye Goff and Saint Paul immediately
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`end their deceptive campaign of using Nicolet’s name in their sponsored advertisements.
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`When confronted, Bye Goff and Saint Paul agreed to stop using the advertisements. Despite
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`their tacit acknowledgment of wrongdoing, however, Bye Goff and Saint Paul renewed their
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`deceptive campaign using Nicolet’s name in the sponsored advertisements as recently as
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`August 10, 2022.
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`5.
`
`Bye Goff and Saint Paul’s conduct violates the Lanham Act and various
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`Wisconsin statutes prohibiting deceptive advertising and trademark infringement. As a result
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`of those violations, Nicolet is entitled to compensatory damages, treble damages, attorneys’
`
`fees, an injunction preventing further deceptive practices, and other relief supported by law.
`
`2
`
`

`

`Case: 3:22-cv-00654 Document #: 1 Filed: 11/14/22 Page 3 of 15
`
`THE PARTIES
`
`6.
`
`Nicolet and Bye Goff are personal injury law firms who serve clients located in
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`Wisconsin and Minnesota. Nicolet and Bye Goff directly compete against one another to
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`attract and retain clients seeking compensation for personal injuries.
`
`7.
`
`Plaintiff Nicolet is a service corporation organized and existing under the laws
`
`of the State of Wisconsin, with its principal place of business located at 517 Second Street, Unit
`
`#205, Hudson, Wisconsin. Nicolet has 14 office locations throughout Wisconsin and
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`Minnesota.
`
`8.
`
`Defendant Bye Goff is a service corporation organized and existing under the
`
`laws of the State of Wisconsin, with its principal place of business located at 258 Riverside
`
`Drive, River Falls, Wisconsin. Bye Goff has three locations in Western Wisconsin.
`
`9.
`
`Defendant Saint Paul is an advertising agency organized and existing under the
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`laws of the State of Minnesota, with its principal place of business located at 2117 Upper St.
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`Dennis Rd., St. Paul, Minnesota.
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`JURISDICTION AND VENUE
`
`10.
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`This Court has subject matter jurisdiction under section 39 of the Lanham Act,
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`15 U.S.C. § 1121, and under 28 U.S.C. § 1331 and 1338.
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`11.
`
`This Court has personal jurisdiction over Defendants because they (a) engaged
`
`in Google Ads campaigns that targeted residents of the State of Wisconsin; (b) regularly
`
`transact and conduct business within the State of Wisconsin; and/or (c) have made or
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`established contacts within the State of Wisconsin sufficient to permit the exercise of personal
`
`jurisdiction.
`
`12.
`
`The Western District of Wisconsin is a proper venue pursuant to 28 U.S.C. §
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`1391(b)(2) because a substantial part of the acts or omissions giving rise to Nicolet’s claims
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`occurred in this District and Bye Goff maintains physical office locations within this District.
`
`3
`
`

`

`Case: 3:22-cv-00654 Document #: 1 Filed: 11/14/22 Page 4 of 15
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`FACTUAL BACKGROUND
`
`13.
`
`Nicolet has been using the trademark NICOLET LAW in interstate commerce
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`in association with legal services since at least as early as April 20, 2007, and it has common
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`law trademark rights in that mark beginning on that date.
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`14.
`
`Nicolet is the owner of Wisconsin Trademark Registration No. 20220086677
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`for the mark NICOLET LAW, used in association with legal services.
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`15.
`
`Nicolet is the owner of U.S. Trademark Application No. 97324065 for the mark
`
`NICOLET LAW, used in association with legal services, that was filed March 22, 2022.
`
`16.
`
`Nicolet has developed a well-earned reputation for aggressive and effective legal
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`representation, as evidenced by positive reviews and referrals from clients. To leverage that
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`goodwill, Nicolet uses the mark NICOLET LAW extensively in its marketing and advertising
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`efforts, which include digital, print, television, and billboard advertisements throughout
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`Wisconsin and Minnesota. Nicolet has spent substantial time and expense to promote the
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`NICOLET LAW mark in connection with marketing and advertising its legal services.
`
`A.
`
`Defendants Misappropriate Nicolet’s Name and Engage in Deceptive
`and Misleading Advertising.
`
`17.
`
`Some time prior to March 2022, Bye Goff retained Saint Paul to initiate and
`
`execute a Google Ads campaign to market and advertise Bye Goff’s legal services. Upon
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`information and belief, Bye Goff maintained control over the ultimate content of the
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`advertisements created and published by Saint Paul on Bye Goff’s behalf. At all times relevant
`
`to this Complaint, Saint Paul acted as Bye Goff’s agent in creating and launching the
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`misleading and infringing Google Ads campaigns referenced below.
`
`18.
`
`Upon information and belief, the Google Ads campaign consisted of (1)
`
`purchasing keywords that would result in Bye Goff sponsored advertisements appearing at
`
`the top of certain search results (e.g., purchasing “Nicolet” so that any search of Nicolet would
`
`4
`
`

`

`Case: 3:22-cv-00654 Document #: 1 Filed: 11/14/22 Page 5 of 15
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`cause Bye Goff’s sponsored ad to appear at the top of the results page); and (2) creating
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`sponsored advertisements that would attract clicks by persons searching for legal services.
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`19.
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`As Bye Goff’s hired agent, Saint Paul executed the campaign of purchasing
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`keywords and creating sponsored advertisements to draw traffic to Bye Goff’s website.
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`20.
`
`Bye Goff and Saint Paul intended the advertisement campaign to create profit
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`for each of them. For Bye Goff, the intent was to increase traffic to Bye Goff’s website and
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`increase the number of clients who would retain Bye Goff to prosecute their personal injury
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`claims. For Saint Paul, the intent was to develop a productive campaign that would result in
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`more business from Bye Goff and, upon information and belief, revenue from each click on
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`the sponsored ad Saint Paul generated for Bye Goff.
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`21.
`
`Saint Paul represented to Nicolet that the campaign described above “began in
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`the evening of March 14, 2022.” That representation was false. In reality, the advertising
`
`campaign began no later than March 7, 2022.
`
`22.
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`The sponsored ad is the part of the campaign viewable to the public. A key
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`feature of the sponsored ad is the headline, which is the text of the hyperlink that takes the
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`user away from the Google results and to a different webpage. Here, Saint Paul and Bye Goff
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`were able to customize the text of the headline to say whatever they wanted.
`
`23.
`
`Saint Paul intentionally chose to use Nicolet’s name in multiple headlines of
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`sponsored advertisements that Saint Paul created for Bye Goff. In the examples depicted
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`below, the headline is shown in blue text (e.g., “Nicolet law – Serving Wisconsin &
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`Minnesota”):
`
`5
`
`

`

`Case: 3:22-cv-00654 Document #: 1 Filed: 11/14/22 Page 6 of 15
`
`The “headline”
`
`The “headline”
`
`The “headline”
`
`The “headline”
`
`24.
`
`As depicted above, the sponsored advertisements created by Saint Paul used
`
`Nicolet’s name in the headline to draw attention to the advertisement. A potential client
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`searching Google for “Nicolet Law” may reasonably believe that clicking a link at or near the
`
`6
`
`

`

`Case: 3:22-cv-00654 Document #: 1 Filed: 11/14/22 Page 7 of 15
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`top of the results page that incorporates the words “Nicolet law” would take them to Nicolet’s
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`webpage. In reality, however, clicking the “Nicolet law” link would have taken the potential
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`client to Bye Goff’s website.
`
`25.
`
`The problematic sponsored advertisements were all created by Saint Paul for
`
`Bye Goff.
`
`26.
`
`Saint Paul and Bye Goff both knew, and intended, that the problematic
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`sponsored advertisements would enter interstate commerce.
`
`27.
`
`In fact, the problematic sponsored advertisements did enter interstate
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`commerce. The problematic sponsored advertisements were all available to the public
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`searching Google for legal representation between at least March 7 and March 16, 2022.
`
`28.
`
`There were at least six “click-throughs” of the problematic sponsored
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`advertisements between March 7 and March 15, 2022.
`
`29.
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`Upon information and belief, the problematic advertisements actually deceived
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`potential clients into believing (a) they were being directed to Nicolet’s website when, in fact,
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`they were directed to Bye Goff’s competing website; and/or (b) that Bye Goff was affiliated
`
`with Nicolet. At minimum, the problematic sponsored advertisements were likely to deceive
`
`and confuse potential clients about the sponsor of the website they were about to access and
`
`the existence of an affiliation between Bye Goff and Nicolet that did not actually exist.
`
`30.
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`Indeed, Google has conducted internal studies suggesting there is significant
`
`confusion among persons using online search engines when, like here, trademarks are
`
`included in the title or body of the advertisement. See Rosetta Stone Ltd. v. Google, Inc., 676
`
`F.3d 144, 156 (4th Cir. 2012). Likely for this reason, Google restricts the use of trademarks in
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`the text of sponsored advertisements. See https://support.google.com/adspolicy/answer/
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`6118. For example, Google allows advertisers to “use the trademark in ad text if the trademark
`
`7
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`Case: 3:22-cv-00654 Document #: 1 Filed: 11/14/22 Page 8 of 15
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`owner has authorized them.” (emphasis supplied). Nicolet never authorized Defendants to
`
`use its trademarks in their ad text.
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`B.
`
`Nicolet Demands Defendants Cease and Desist their Unlawful False
`Advertising Campaign.
`
`31.
`
`On or about March 16, 2022, Nicolet, through its counsel, sent written
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`correspondence demanding that Bye Goff immediately end its false and misleading online
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`marketing campaign. (See Exhibit A).
`
`32.
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`In response, on or about March 17, 2022, Bye Goff responded in writing stating
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`that “all of our marketing is handled by a third-party vendor,” presumably Saint Paul. Bye
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`Goff reported that it had directed its vendor “to immediately take down any sponsored Google
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`advertisements which purported to use the Nicolet name, or cause any confusion between the
`
`two firms. This was accomplished by 5:30 yesterday evening.” (Exhibit B).
`
`33.
`
`Nicolet, through its counsel, also corresponded with Saint Paul about its false
`
`and misleading campaign for Bye Goff. Saint Paul acknowledged that it received instructions
`
`from Bye Goff to end the campaign, which Saint Paul claimed to have done “by 4:55 p.m. on
`
`March 16, 2022.” (Exhibit C). Saint Paul also claimed the campaign “was active for no more
`
`than 48 hours.” That statement was false, and Saint Paul knew or should have known it was
`
`false because its own records confirmed the campaign began earlier than March 14, 2022.
`
`C.
`
`Defendants Restart their Unlawful Ad Campaign.
`
`34.
`
`Despite prior warnings, and their promise to “take down” sponsored
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`advertisements using Nicolet’s name, Bye Goff and Saint Paul resumed their advertising
`
`campaign, again misappropriating Nicolet’s trademark and infringing Nicolet's trademark
`
`rights.
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`8
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`Case: 3:22-cv-00654 Document #: 1 Filed: 11/14/22 Page 9 of 15
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`35.
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`On or about August 10, 2022, Nicolet discovered that Bye Goff was again using
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`sponsored advertisements on Google that explicitly referenced “Nicolet law” in the
`
`advertisements’ headlines. Examples of these advertisements are depicted below:
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`9
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`Case: 3:22-cv-00654 Document #: 1 Filed: 11/14/22 Page 10 of 15
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`36.
`
`As with the March 2022 sponsored advertisements, Saint Paul and/or Bye Goff
`
`chose the words in the headlines of the advertisements depicted immediately above. One or
`
`both of Saint Paul and Bye Goff intentionally chose to use the words “Nicolet law” in the
`
`headlines of the sponsored advertisements published in August 2022 despite previous
`
`warnings that such headlines were deceptive and their assurance that offending
`
`advertisements would be removed from Google.
`
`37.
`
`Saint Paul and Bye Goff intended to profit directly from the sponsored
`
`advertisements that were published on Google in August 2022.
`
`38.
`
`Saint Paul and Bye Goff intended the August 2022 sponsored advertisements
`
`to enter interstate commerce. Indeed, the deceptive sponsored advertisements actually
`
`entered interstate commerce by being published on Google’s search engine results for
`
`purposes of driving legal business to Bye Goff from, among other places, eastern Minnesota.
`
`FIRST CLAIM FOR RELIEF
`Unfair Competition Under Section 43(a)(1)(A) of the Lanham Act,
`15 U.S.C. § 1125(a)(1)(A)
`
`39.
`
`Nicolet hereby incorporates by reference and realleges each and every
`
`allegation of Paragraphs 1 through 38 above.
`
`40.
`
`Section 43(a)(1)(A) of the Lanham Act, 15 U.S.C. § 1125(a)(1)(A), imposes civil
`
`liability on any person who, in connection with any services, uses any word or name that is
`
`likely to cause confusion, or to cause mistake, or to deceive as to the “affiliation, connection,
`
`or association of such person with another person, or as to the origin, sponsorship, or approval
`
`of his or her goods, services, or commercial activities by another person.”
`
`41.
`
`Bye Goff’s and Saint Paul’s Google advertising campaigns included false
`
`statements affiliating, connecting, or associating Bye Goff and Nicolet when no such
`
`affiliation, connection or association existed. For example, Bye Goff’s sponsored
`
`advertisements expressly referenced “Nicolet Law” in the conspicuous headline of the
`
`10
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`Case: 3:22-cv-00654 Document #: 1 Filed: 11/14/22 Page 11 of 15
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`advertisements, thereby attempting to leverage Nicolet Law’s goodwill to attract potential
`
`clients to Bye Goff’s website.
`
`42.
`
`Bye Goff and Saint Paul’s Goggle advertising campaigns were likely to deceive
`
`and confuse, and cause mistakes among, a substantial segment of the public seeking legal
`
`representation, including Nicolet’s potential clients. For example, Defendants’ advertising
`
`campaigns likely deceived consumers performing a Google search for “Nicolet Law” and
`
`clicking a hyperlink containing the phrase “Nicolet law” into believing they are accessing
`
`Nicolet’s website, when in reality the website belonged to Nicolet’s competitor, Bye Goff.
`
`43.
`
`Bye Goff and Saint Paul’s advertising campaigns presented a substantial
`
`likelihood of confusion because both Bye Goff and Nicolet provide similar legal services in a
`
`similar geographic area. Moreover, potential consumers of legal services using Google to
`
`search for law firms generally do not exercise a high degree of care when scrutinizing their
`
`search results, making it easy for consumers to be duped into clicking on a headline with the
`
`phrase “Nicolet law” believing the targeted website is actually affiliated with Nicolet.
`
`44.
`
`Bye Goff and Saint Paul’s deception was material to a potential client’s search
`
`for legal services. The deceptive component of the advertisement is in its “headline”—the
`
`different colored, larger font hyperlink intended to seize a consumer’s attention and entice a
`
`click by that consumer. Bye Goff and Saint Paul’s deceptive Goggle advertising campaigns
`
`likely influenced Nicolet’s potential clients to make decisions about hiring legal counsel. For
`
`example, the deceptive headline led potential clients to Bye Goff’s website, which it maintains
`
`to attract clients. Cf. Promatek Industries, Ltd. v. Equitrac Corp., 300 F.3d 808, 812-13 (7th
`
`Cir. 2002) (“Customers believing they are entering the first store rather than the second are
`
`still likely to mill around before they leave. The same theory is true for websites. Consumers
`
`who are directed to Equitrac's webpage are likely to learn more about Equitrac and its
`
`products before beginning a new search for Promatek and Copitrak.”).
`
`11
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`Case: 3:22-cv-00654 Document #: 1 Filed: 11/14/22 Page 12 of 15
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`45.
`
`Bye Goff and Saint Paul each intended to unlawfully profit from the false and
`
`misleading Google advertising campaigns.
`
`46.
`
`Because Nicolet and Bye Goff compete directly for providing legal services to
`
`injured individuals, Nicolet has suffered both an ascertainable, direct economic loss of money
`
`and a loss of goodwill by the actual and attempted diversion of potential clients from Nicolet.
`
`Moreover, Defendants’ conduct is a “black eye” on the legal industry as a whole, further
`
`damaging Nicolet and its goodwill.
`
`47.
`
`Unless enjoined by this Court, Defendants’ false and deceptive practices will
`
`continue to cause irreparable harm to Nicolet, for which there is no adequate remedy at law.
`
`SECOND CAUSE OF ACTION
`Fraudulent Representations Violating Section 100.18, Wis. Stat.
`
`48.
`
`Nicolet hereby incorporates by reference and realleges each and every
`
`allegation of Paragraphs 1 through 47 above.
`
`49.
`
`Bye Goff and Saint Paul created, authored, circulated, and published online
`
`advertising with the intent to market and increase the public consumption of legal services
`
`offered by Bye Goff and to induce the public to enter into contracts with Bye Goff to provide
`
`legal services.
`
`50.
`
`Bye Goff and Saint Paul’s Google advertising campaigns contain
`
`representations or statements of fact that are untrue, deceptive, and misleading in violation
`
`of Section 100.18(1), Wis. Stat.
`
`51.
`
`Nicolet has suffered