Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1302116
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`Filing date:
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`08/07/2023
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding no.
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`91285756
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`Party
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`Correspondence
`address
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`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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`Attachments
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`Defendant
`Nicolet Law Office, S.C.
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`CAROL N. SKINNER
`SKINNER AND ASSOCIATES
`212 COMMERCIAL STREET
`HUDSON, WI 54016
`UNITED STATES
`Primary email: cskinner@skinnerlaw.com
`Secondary email(s): ccarper@skinnerlaw.com
`715-386-5800
`
`Answer
`
`Carol N. Skinner
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`cskinner@skinnerlaw.com, ccarper@skinnerlaw.com
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`/Carol N. Skinner/
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`08/07/2023
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`Answer to Opposition.pdf(94331 bytes )
`Exhibit A nicoletlawyers.com - Google Search 8-3-23.pdf(780499 bytes )
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`

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`IN THE UNITED STATES PATENT AND
`TRADEMARK OFFICE BEFORE THE TRADEMARK
`TRIAL AND APPEAL BOARD
`
`
`
`In the Matter of Application Serial No. 97324065
`For the Mark: NICOLET LAW
`Filed: 03/22/2022
`Published: 02/28/2023
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`SAINT PAUL AGENCY, LLC
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`Opposer,
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`v.
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`NICOLET LAW OFFICE, S.C.,
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`Applicant-
`Respondent.
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`APPLICANT'S ANSWER TO OPPOSITION
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`Opposition No. 91285756
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`The Applicant, Nicolet Law Office, S.C. (hereafter Nicolet Law or Applicant), by its
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`attorneys Skinner and Associates by Carol N. Skinner, answers the Opposition of Saint Paul
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`Agency, LLC (hereafter Saint Paul Agency or Opposer), as follows:
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`
`
`
`
`
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`1.
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`2.
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`3.
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`Admits the allegations contained in paragraph 1.
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`Admits the allegations contained in paragraph 2.
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`Lacks information sufficient to form a belief regarding the allegations contained
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`in paragraph 3, and puts Opposer to its proof thereon.
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`4.
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`5.
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`Denies the allegations contained in paragraph 4.
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`Admits that the USPTO initially issued a refusal based on surname, and required a
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`disclaimer of the word “LAW” apart from the mark as shown. Denies remaining assumptions.
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`1
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`6.
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`7.
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`8.
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`Admits the allegations contained in paragraph 6.
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`Admits the allegations contained in paragraph 7.
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`Admits that Nicolet Law was forced to initiate legal action in US District Court
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`for the Western District of Wisconsin, Case No. 2-cv-654-slc, in order to stop Opposer’s
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`repeated, intentional infringing use of Nicolet Law’s mark in an attempt to misdirect consumers
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`to Opposer’s client, a competing personal injury law firm, Bye, Goff & Rhode, Ltd. Denies that
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`Opposer’s use of Applicant’s mark was either “errant” or “unknowing.”
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`
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`
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`9.
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`Denies the allegations contained in paragraph 9.
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`10.
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`Denies the allegations contained in paragraph 10 as written, and affirmatively
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`alleges that attorney Spiros Nicolet, an immigration lawyer in Chicago, IL, did purchase the url
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`nicoletlawyers.com, does not use this url in marketing, and has voluntarily redirected all
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`searchers using this url to spirosnicoletlawoffices.com. A true and correct copy of a printout of a
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`Google search for nicoletlawyers.com is attached hereto as Exhibit A.
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`11.
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`Realleges all previous answers.
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`12.
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`Denies the allegations/legal conclusions contained in paragraph 12.
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`13.
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`Denies the allegations/legal conclusions contained in paragraph 13.
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`14.
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`Admits the allegations contained in paragraph 14, but affirmatively alleges that no
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`such evidence is necessary, given the presumption of acquired distinctiveness after substantially
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`exclusive and continuous use of the mark in interstate commerce for the identified services for a
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`period of time exceeding five years. Nicolet Law has in fact been using the mark NICOLET
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`LAW mark in association with legal services in interstate commerce substantially exclusively
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`and continuously since at least as early as April 20, 2007.
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`
`
`2
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`

`

`
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`15.
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`Realleges its response to the allegations contained in paragraph 15, and
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`affirmatively alleges that Applicant has had common law trademark rights in the mark
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`NICOLET LAW since at least as early as April 20, 2007.
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`
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`16.
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`Denies that Opposer would be injured by Applicant’s registration, denies that the
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`mark is descriptive, and affirmatively alleges that Opposer’s sole reason for filing the instant
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`Opposition is to aid its defense or obtain leverage in Case No. 2-cv-654-slc, and not because it
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`has a reasonable belief that it will be damaged under any lawful basis stated in or envisioned by
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`Trademark Act §13(a), 15 U.S.C. §1063(a), or §309.03(b) of the Trademark Trial and Appeal
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`Board Manual of Procedure (TBMP).
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`17.
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`Denies the allegations contained in paragraph 17.
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`18.
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`Realleges all previous answers.
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`19.
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`Denies the allegations contained in paragraph 19.
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`20.
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`Admits the factual content of the allegations contained in paragraph 20; denies the
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`legal conclusion.
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`21.
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`Denies the allegations contained in paragraph 21, and affirmatively alleges that
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`either 1178 or “over one hundred” individuals with the surname “Nicolet” out of a possible
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`322,278,200 individuals living in the United States does not establish that the name is a common
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`surname.
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`
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`22.
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`Neither admits nor denies that Opposer relies on information contained in
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`Opposer’s exhibits, but affirmatively alleges that the common surnames “Davis” and “Miller”
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`are not comparable to the surname “Nicolet”, nor does Opposer’s evidence prove anything
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`relevant to this Opposition.
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`
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`23.
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`Denies the allegations contained in paragraph 23, and affirmatively alleges that
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`Applicant seeks to register the mark NICOLET LAW, which has acquired descriptiveness as a
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`
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`3
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`

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`source identifier for Applicant’s legal services by dint of more than 16 years of substantially
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`exclusive and continuous use of the mark in interstate commerce.
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`
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`24.
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`Realleges its response to paragraph 10 of this Answer, in response to the
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`allegations contained in paragraph 24.
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`25.
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`Denies the allegations contained in paragraph 25.
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`26.
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`Denies the allegations contained in paragraph 26.
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`27.
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`Realleges all previous answers.
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`28.
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`Admits the allegations contained in paragraph 28.
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`29.
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`Admits the allegations contained in paragraph 29.
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`30.
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`Denies the allegation contained in paragraph 30, and affirmatively allege that
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`counsel for Applicant first learned of the existence of Attorney Spiros Nicolet more than four
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`months after submitting the Section 2(f) Declaration. Upon information and belief, Attorney
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`Spiros Nicolet had not used the url nicoletlawyers.com to market his services prior to late May of
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`2023, instead using the url midwestgreencard.com to identify his immigration practice.
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`31.
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`Denies the allegation contained in paragraph 31.
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`32.
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`Denies the allegation contained in paragraph 32.
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`33.
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`Denies the allegation contained in paragraph 33, and questions the statutory
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`entitlement of Opposer to bring this Opposition.
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`34.
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`Denies the allegation contained in paragraph 34.
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`AFFIRMATIVE DEFENSES
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`Pleading further, Applicant sets forth the following affirmative and other defenses:
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`1.
`
`2.
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`Nicolet Law realleges all preceding affirmative statements.
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`Opposer St. Paul Agency has proffered no information lending credence to its
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`claims that it will be in any way damaged by the registration of Applicant’s trademark.
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`
`
`4
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`

`

`3.
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`Opposer has not offered, nor will be able to offer any evidence that it has
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`suffered, nor will suffer any damage by the registration of Applicant’s trademark.
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`4.
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`Opposer St. Paul Agency is not entitled to oppose Applicant’s mark, as it has not
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`established, nor will it establish that it is within the zone of interests protected by the statute. It
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`has neither pled nor established a “real interest,” i.e., a direct and personal stake in the outcome
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`of this Opposition, nor a reasonable basis to believe it will be damaged by the registration of
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`Applicant’s trademark.
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`5.
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`Opposer is unlawfully using this proceeding in an effort to invent a defense
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`against the claim of intentional trademark infringement set forth in Case No. 2-cv-654-slc, with
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`no reasonable basis in fact to believe it has suffered or will suffer damage by the registration of
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`Applicant’s trademark.
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`6.
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`Having unclean hands, Opposer should be required to bear all costs of this
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`proceeding.
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`
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`
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`
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`5
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`

`

`WHEREFORE, Applicant Nicolet Law Office, S.C. prays that Saint Paul Agency’s
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`Opposition be dismissed with prejudice, Opposer required to pay Applicant’s fees and costs
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`incurred in this proceeding, and the Application Serial No. 97324065 be allowed to proceed to
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`registration.
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`Respectfully submitted this 7th day of August, 2023.
`
`SKINNER AND ASSOCIATES
`
`
`
`
`Carol N. Skinner
`Attorneys for Nicolet Law Office, S.C.
`Attorney ID # 1017307
`
`
`212 Commercial
`Hudson, WI 54016
`(715) 386-5800
`cskinner@skinnerlaw.com
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`6
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`

`

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`St. Croix County, Wisconsin, United States · Nicolet Law Office, S.C.
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`May 27, 2023 — Find all reviews about Nicolet Law Accident & Injury Lawyers at 306 W
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`Superior St #606, Duluth, MN 55802, USA. Rated by real customers from ...
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`Rating: 5 · 27 votes
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`Nicolet Law Accident & Injury Lawyers
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`New Richmond Personal Injury Attorneys | At Nicolet Law Accident & Injury Lawyers, we
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`handle personal injury and automobile accident cases, workers' comp ...
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`My Local Services
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`Nicolet Law Accident & Injury Lawyers, Milwaukee
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`Nicolet Law Accident & Injury Lawyers - Legal Services Milwaukee, Wisconsin, 53207. . View
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`contact details, opening hours and reviews.
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`Minnesota Parent
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`Minneapolis Personal Injury Lawyers
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`Principal attorney, Russell Nicolet, has been helping families claim the compensation they
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`deserve for over a decade. He cares deeply for his clients and treats ...
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`Nicolet Law Accident & Injury Lawyers
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`Nicolet Law Accident & Injury Lawyers is located in Rochester and is serving clients across the
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`state of Minnesota. Our Rochester personal injury lawyers ...
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`Nicolet Law Accident & Injury Lawyers
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`Nicolet Law Accident & Injury Lawyers in Madison, Wisconsin – Research lawyer reviews
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`about Personal Injury Attorneys. At Nicolet Law Accident & Injury ...
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`5 of 8
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`8/3/2023, 2:09 PM
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