ESTTA Tracking number:
`
`ESTTA1332956
`
`Filing date:
`
`01/09/2024
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`91285757
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`Nicolet Law Office, S.C.
`
`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
`
`cskinner@skinnerlaw.com, ccarper@skinnerlaw.com
`
`/Carol N. Skinner/
`
`01/09/2024
`
`Answer to Opposition 91285757.pdf(94835 bytes )
`Exhibit A.pdf(718783 bytes )
`Certificate of Service - 91285757 - 1-9-24.pdf(214192 bytes )
`
`
`
`ESTTA1332956
`
`Filing date:
`
`01/09/2024
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`91285757
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`Nicolet Law Office, S.C.
`
`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
`
`cskinner@skinnerlaw.com, ccarper@skinnerlaw.com
`
`/Carol N. Skinner/
`
`01/09/2024
`
`Answer to Opposition 91285757.pdf(94835 bytes )
`Exhibit A.pdf(718783 bytes )
`Certificate of Service - 91285757 - 1-9-24.pdf(214192 bytes )
`
`
`
`IN THE UNITED STATES PATENT AND
`TRADEMARK OFFICE BEFORE THE TRADEMARK
`TRIAL AND APPEAL BOARD
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`Opposer,
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`Opposition No. 91285757
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`
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`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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`BYE, GOFF & ROHDE, LTD.
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`
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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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`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 Bye, Goff &
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`Rohde, Ltd. (hereafter BGR or Opposer), as follows:
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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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`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 current
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`printout of a 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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`
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`2
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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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`Affirmatively allege that any use of a mark containing the word “Nicolet” by Attorney Spiros
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`Nicolet of which Applicant is presently aware would not affect Applicant’s position that its mark
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`is entitled to registration under section 2(f) of the Trademark Act.
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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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`
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`4
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`
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`1.
`
`2.
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`Nicolet Law realleges all preceding affirmative statements.
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`Opposer BGR has proffered no information lending credence to its claims that it
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`will be in any way damaged by the registration of Applicant’s trademark.
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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 is not entitled to oppose Applicant’s mark, as it has not established, nor
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`will it establish that it is within the zone of interests protected by the statute. It has neither pled
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`nor established a “real interest,” i.e., a direct and personal stake in the outcome of this
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`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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`5
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`WHEREFORE, Applicant Nicolet Law Office, S.C. prays that Bye, Goff & Rohde’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 9th day of January, 2024.
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`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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`nicoletlawyers.com - Google Search
`
`https://www.google.com/search?q=nicoletlawyers.com&sca_esv=5...
`
`Go gle
`
`nicoletlawyers.com
`
`xX
`
`8 @ Q
`
`Images
`
`News
`
`Perspectives
`
`Shopping
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`Maps
`
`Videos
`
`Books
`
`Flights
`
`Finance
`
`All filters
`
`About 2,610,000 results (0.46 seconds)
`
`Showing results for nicolet lawyers
`Searchinstead for nicoletlawyers.com
`
`Results for Hudson, WI 54016=@ Use precise location
`
`Nicolet LaWW
`https://nicoletlaw.com :
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`Nicolet Law: Award-Winning Wisconsin & Minnesota Injury...
`With decades of combined legal experience, our team of compassionate, local attorneysis
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`prepared to meet your unique legal challenges head-on, and providethe...
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`The Nicolet Law Story
`Since 2007, Nicolet Law hasbuilt its reputation on providing...
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`Attorneys
`The award-winning attorneys at Nicolet Law Office have...
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`EXHIBIT
`
`
`
`es
`
`
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`nicoletlawyers.com - Google Search
`
`https://www.google.com/search?q=nicoletlawyers.com&sca_esv=5...
`
`@ Facebook- Nicolet Law Office: Accident & Injury Lawyers
`7.8K+ followers
`
`Nicolet Law Office: Accident & Injury Lawyers
`Meet Braxton Phillips, a dedicated and enthusiastic personal injury attorney serving out of our
`Eau Claire, Wisconsin office!
`
`Rating: 4.8 - 63 votes
`
`Businesses
`
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`& Injury Lawyers
`
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`
`(ea)
`
`Map data ©2024 Googie
`
`Rating +
`
`Hours +
`
`Nicolet Law Accident & Injury Lawyers
`4.9
`(175) - Personal injury attorney
`15+ years in business - 517 2nd St Unit #205 - (715) 304-0222
`Open 24 hours
`Onsite services - Online appointments
`
`Nicolet Law Accident& Injury Lawyers
`5.0
`(6) Personal injury attorney
`15+ years in business - River Falls, WI - (715) 333-3220
`Open 24 hours
`Onsite services - Online appointments
`
`Nicolet Law Accident & Injury Lawyers
`5.0
`(26) - Personalinjury attorney
`15+ years in business - New Richmond, WI: (715) 260-4764
`Open 24 hours
`Onsite services - Online appointments
`
`More businesses >
`
`©
`
`Website
`
`Directions
`
`©
`
`Website
`
`Directions
`
`&
`
`Website
`
`Directions
`
`Ss
`
`LinkedIn - Nicolet Law Office, S.C.
`840+ followers
`
`Nicolet Law Office, S.C.
`
`Award-Winning Wisconsin & Minnesota Injury Lawyers | Nicolet Law Office, S.C. is a midwest-
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`local, award-winning law firm focusing in the areas of Personal ...
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`
`nicoletlawyers.com - Google Search
`
`https://www.google.com/search?q=nicoletlawyers.com&sca_esv=5...
`
`.
`Super Lawyers
`https://profiles.superlawyers.com>... » Hudson
`
`Benjamin Nicolet - Personal Injury attorneys
`Benjamin Nicolet is one of the top rated Personal Injury attorneys in Hudson, WI. He has met
`the stringent Super Lawyers selection criteria.
`
`Videos
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`:
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`4:09
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`aint
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`Aug 23, 2023
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`Nicolet Law Office, S.C. -Attorney Adam Nicolet. | Meet Adam ...
`
`Facebook - Nicolet Law Office: Accident & Injury Lawyers
`Dec 17, 2019
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`Nicolet Law is Wisconsin and Minnesota's Accident & Injury...
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`Facebook - Nicolet Law Office: Accident & Injury Lawyers
`Jun 7, 2021
`
`Hudson | Wisconsin Personal Injury Lawyers| Nicolet Law Office
`
`YouTube - Nicolet Law
`Aug 31, 2020
`
`View all >
`
`Feedback
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`©)
`
`Instagram - nicolet_law
`19.8K+ followers
`
`:
`
`Nicolet Law (@nicolet_law)
`Nicolet Law Award-Winning Injury & Accident Lawyers. Insurance Companies Fear The Beard
`Injured? Get Nicolet. 1-855-NICOLET. WI, MN, ND. 517 2nd Street...
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`ni
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`LinkedIn - Russell Nicolet
`1.5K+ followers
`
`:
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`Russell Nicolet - Nicolet Law Office, S.C.
`St. Croix County, Wisconsin, United States - Nicolet Law Office, S.C.
`
`| started Nicolet Law in 2007 as a way to help people, and that has growninto a team with...
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`
`|
`
`Super Lawyers
`https://profiles.superiawyers.com » Lawyer directory
`
`Nicolet Law Office, S.C. in Hudson, Wisconsin
`Nicolet Law Office, S.C.. 517 2nd Street Unit #205. Hudson, WI 54016 Phone: 715-304-0222
`
`https://www.nicoletlaw.com https://www.nicoletlaw.com ...
`
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`nicoletlawyers.com - Google Search
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`https://www.google.com/search?q=nicoletlawyers.com&sca_esv=5...
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`Related searches
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`1/9/2024, 12:58 PM
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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
`
`BYE, GOFF & ROHDE, LTD.
`
`Opposer,
`
`SE
`
`NICOLET LAW OFFICE, 8.C.,
`
`Applicant-
`Respondent.
`
`Opposition No. 91285757
`
`CERTIFICATE OF SERVICE
`
`I, Christie J. Carper, of the City of Hudson, County of St. Croix, State of Wisconsin,
`
`hereby certify that a true and complete copy of the foregoing Applicant’s Answer to Opposition
`
`and Exhibit A have been served on Russell M. Spence,Jr., The Spence Law Firm by forwarding
`
`perezi@spence.law.
`
`Date: January 9, 2024 ef and Associates
`
`
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