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ESTTA Tracking number:
`
`Filing date:
`
`ESTTA1333329
`01/10/2024
`
`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
`
`Newton, Udinson, & Hill PLLC
`
`Granted to date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`01/10/2024
`
`78 BETH DRIVE
`RICHBORO, PA 18954
`UNITED STATES
`
`JACLYN P. IONIN
`IONIN LAW LLC
`31 HUDSON YARDS
`FL 11
`NEW YORK, NY 10001
`UNITED STATES
`Primary email: jaclyn@ioninlaw.com
`Secondary email(s): trademarks@ioninlaw.com
`6464701167
`
`Docket no.
`
`Applicant information
`
`Application no.
`
`97617709
`
`Opposition filing
`date
`
`Applicant
`
`01/10/2024
`
`Sigal Law Firm, PLLC
`SUITE 100
`27041 SOUTHFIELD ROAD
`SOUTHFIELD, MI 48076
`UNITED STATES
`
`Goods/services affected by opposition
`
`Publication date
`
`09/12/2023
`
`Opposition period
`ends
`
`01/10/2024
`
`Class 045. First Use: Aug 22, 2022 First Use In Commerce: Aug 22, 2022
`All goods and services in the class are opposed, namely: Legal advisory services; Legal consultation
`services; Legal services; Providing customized legal information, counseling, and advice, and litiga-
`tion services in the field of Personal Injury Law; Providing legal services in the field of Personal Injury
`Law
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`No use of mark in commerce before application,
`amendment to allege use, or statement of use
`was due
`
`Trademark Act Section 1(a) and (c)
`
`

`

`No bona fide intent to use mark in commerce for
`identified goods or services
`
`Trademark Act Section 1(b), 44(e) or 66(a)
`
`Mark cited by opposer as basis for opposition
`
`U.S. application
`no.
`
`97454685
`
`Application date
`
`06/12/2022
`
`Registration date
`
`NONE
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`WIN BIG LAW
`
`NONE
`
`Class 045. First use: First Use: Jun 15, 2021 First Use In Commerce: Jun 15,
`2021
`Legal services
`
`Attachments
`
`Notice of Opposition - 844-I-WIN-BIG.pdf(119980 bytes )
`
`Signature
`
`/Jaclyn P. Ionin/
`
`Name
`
`Date
`
`JACLYN P. IONIN
`
`01/10/2024
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Serial No. 97617709
`Application Filed: October 3, 2022
`Mark: 844-I-WIN-BIG
`
`Newton, Udinson, & Hill, PLLC,
`Opposer
`
`Opposition No. ______________
`
`v.
`
`NOTICE OF OPPOSITION
`
`Sigal Law Firm, PLLC AKA The Sigal Law
`Firm,
`
`Applicant
`
`Opposer, Newton, Udinson, & Hill PLLC, a Pennsylvania professional limited liability company
`
`having an address of 78 Beth Drive Richboro, Pennsylvania 18954 (“Opposer”), believes that it will be
`
`damaged by the registration of the mark 844-I-WIN-BIG under U.S. Trademark Application Serial No.
`
`97617709 for “Legal advisory services; Legal consultation services; Legal services; Providing customized
`
`legal information, counseling, and advice, and litigation services in the field of Personal Injury Law;
`
`Providing legal services in the field of Personal Injury Law” in International Class 45 (the “Sigal
`
`Application”), and hereby opposes the same pursuant to 37 C.F.R. § 2.104 on the grounds of priority,
`
`likelihood of confusion, and no bona fide use in commerce.
`
`The Sigal Application was filed by Sigal Law Firm, PLLC AKA The Sigal Law Firm, a Michigan
`
`limited liability company having an address at 27041 Southfield Road, Suite 100, Southfield, Michigan
`
`48076 (“Applicant”).
`
`As grounds for opposition, Opposer alleges as follows:
`
`1.
`
`Opposer is the owner of the WIN BIG LAW trademark for legal services, and has used
`
`the mark in interstate commerce for such services since at least as early as June 15, 2021.
`
`1
`
`

`

`2.
`
`In addition to the common law rights in Opposer’s WIN BIG LAW mark, Opposer is the
`
`owner of U.S. Trademark Application Serial No. 97454685 for WIN BIG LAW (the “WIN BIG
`
`Application”) filed on June 12, 2022, in connection with “Legal Services” in International Class 45 (the
`
`“WIN BIG Services”).
`
`3.
`
`Since introducing its WIN BIG LAW Mark in 2021, Opposer has spent substantial time,
`
`effort, and money to promote the sale of its services under the WIN BIG LAW Mark.
`
`4.
`
`Since introducing its WIN BIG LAW Mark in 2021, Opposer has served and continues to
`
`serve substantial quantities of clients under the WIN BIG LAW Mark.
`
`5.
`
`By virtue of Opposer’s substantial use, sales, advertising, and promotion of the WIN BIG
`
`LAW Mark, and the publicity and media attention accorded the mark, the WIN BIG LAW Mark has
`
`become a well-known mark and has become distinctive of Opposer’s services.
`
`6.
`
`Despite Opposer’s prior rights in the WIN BIG LAW Mark, Applicant initially filed the
`
`Sigal Application for the mark 844-I-WIN-BIG on October 3, 2022, based on use in commerce of the
`
`844-I-WIN-BIG mark in connection with “Legal advisory services; Legal consultation services; Legal
`
`services; Providing customized legal information, counseling, and advice, and litigation services in the
`
`field of Personal Injury Law; Providing legal services in the field of Personal Injury Law” in International
`
`Class 45 (the “Sigal Services”) at least as early as August 22, 2022.
`
`7.
`
`The Sigal Application was published for opposition in the Official Gazette on September
`
`12, 2023. On October 11, 2023, Opposer requested, and the USPTO granted, a 30-day extension of time
`
`to oppose the Sigal Application.
`
`8.
`
`At the time of filing the Sigal Application, Applicant had actual notice of Opposer’s use
`
`of the WIN BIG LAW Mark.
`
`9.
`
`At the time of filing the Sigal Application, Applicant had at least constructive notice of
`
`Opposer’s use of the WIN BIG LAW Mark.
`
`2
`
`

`

`10.
`
`Opposer’s WIN BIG Application was filed on June 12, 2022 four months prior to
`
`Applicant’s Sigal Application, thus Applicant had constructive notice of Opposer’s use of the WIN BIG
`
`LAW Mark.
`
`11.
`
`Opposer’s first use in commerce of the WIN BIG LAW Mark was at least as early as June
`
`15, 2021, which is over fifteen months prior to Applicant’s filing date of October 3, 2022, and as such,
`
`Opposer has priority of use of the WIN BIG LAW Mark over Applicant.
`
`12.
`
`Opposer’s first use in commerce the WIN BIG LAW Mark was at least as early as June
`
`15, 2021, which is over fourteen months prior to Applicant’s alleged date of first of August 22, 2022.
`
`13.
`
`Opposer believes that registration of the Sigal Application will give Applicant at least a
`
`prima facie right to exclusive use of the 844-I-WIN-BIG Mark on the Sigal Services. Such use will cause
`
`a likelihood of confusion that would irreparably harm Opposer and its WIN BIG LAW Mark.
`
`PRIORITY & LIKELIHOOD OF CONFUSION
`
`14.
`
`Opposer repeats and realleges each and every allegation made in paragraphs 1 through 13
`
`above as fully set forth herein.
`
`15.
`
`Opposer has used the WIN BIG LAW Mark in commerce in the United States for the
`
`WIN BIG Services since at least as early as June 15, 2021, prior to the alleged first use date of the Sigal
`
`Application, the filing date of the Sigal Application, or any other priority date to which the Sigal
`
`Application is entitled.
`
`16.
`
`Accordingly, Opposer has priority in the WIN BIG LAW Mark over Applicant and its
`
`Sigal Application.
`
`17.
`
`The mark applied for in the Sigal Application is likely, when used in commerce, to cause
`
`confusion, mistake, or deception within the meaning of Section 2(d) of the Lanham Act.
`
`18.
`
`Applicant’s 844-I-WIN-BIG Mark is substantially or highly similar to Opposer’s WIN
`
`BIG LAW Mark in sound, appearance, and commercial impression.
`
`3
`
`

`

`19.
`
`Specifically the dominant portion of the mark applied for in the Sigal Application,
`
`“WIN-BIG” is identical in sight, sound, meaning, and commercial impression to the dominant and
`
`non-disclaimed portion of the mark in the WIN BIG Application and in which Opposer has priority.
`
`20.
`
`The Sigal Application is further likely to cause confusion because the Sigal Services are
`
`identical, or effectively identical, to the WIN BIG LAW Services.
`
`21.
`
`Alternatively,
`
`the Sigal Application is likely to cause confusion because the Sigal
`
`Services offered under the 844-I-WIN-BIG Mark are so closely related to the WIN BIG Services, that
`
`they could reasonably be expected to originate from the same source as the services offered under
`
`Opposer’s WIN BIG LAW Mark.
`
`22.
`
`In view of the fact that the dominant portions of the parties’ respective marks are
`
`identical in sight, sound, meaning, and commercial impression, and that the services are identical and/or
`
`effectively identical, or at minimum, so similar and closely related as to be expected to originate from the
`
`same source, Applicant’s use of “WIN BIG” in the applied-for mark in the Sigal Application would be
`
`likely to cause confusion, mistake, or deception among consumers, and therefore should be refused under
`
`Section 2(d) of the Lanham Act.
`
`23.
`
`Because of the identical nature of the dominant portion of the mark in the Sigal
`
`Application and the mark in which Opposer has priority and which is the subject of the WIN BIG
`
`Application, and because of the identical nature of the Sigal Services and the WIN BIG Services,
`
`consumers are likely to be confused, mistaken, or deceived into believing that Applicant’s services
`
`originate with Opposer or are in some way associated with or connected, sponsored, or authorized by
`
`Opposer, and therefore should be refused under Section 2(d) of the Lanham Act.
`
`NO BONA FIDE USE OR INTENT TO USE IN COMMERCE
`
`24.
`
`Opposer repeats and re-alleges each and every allegation in paragraphs 1 through 23
`
`above as fully set forth herein.
`
`4
`
`

`

`25.
`
`Applicant exclusively advertises and provides personal injury legal services under the
`
`844-I-WIN-BIG Mark.
`
`26.
`
`27.
`
`28.
`
`Applicant is based in Southfield, Michigan and does not have offices in any other states.
`
`Applicant provides services exclusively in Michigan.
`
`As of the date of filing of this Notice of Opposition, the attorneys employed by Applicant
`
`who provide the Sigal Services under the 844-I-WIN-BIG Mark are licensed to practice in Michigan, and
`
`do not actively practice anywhere else.
`
`29.
`
`As of the date of the filing of the Sigal Application, the attorneys employed by Applicant
`
`who provide the Sigal Services under the 844-I-WIN-BIG Mark were licensed to practice in Michigan,
`
`and do not actively practice anywhere else.
`
`30.
`
`As of the alleged first use date of the 844-I-WIN-BIG Mark in the Sigal Application, the
`
`attorneys employed by Applicant who provide the Sigal Services under the 844-I-WIN-BIG Mark were
`
`licensed to practice in Michigan, and do not actively practice anywhere else.
`
`31.
`
`Applicant had not made bona fide use of the mark in commerce in connection with the
`
`Sigal Services to support federal protection of its mark as of its alleged first use date.
`
`32.
`
`Applicant had not made bona fide use of the mark in commerce in connection with the
`
`Sigal Services to support federal protection of its mark as of its filing date.
`
`33.
`
`Applicant has not made bona fide use of the mark in commerce in connection with the
`
`Sigal Services to support federal protection of its mark as of the date of filing of this Notice of
`
`Opposition.
`
`34.
`
`Applicant did not have a bona fide intent to use the mark in commerce connection with
`
`the Sigal Services to support federal protection of its mark as of the filing date of the Sigal Application.
`
`35.
`
`Upon information and belief, Applicant does not have, and has never had, a bona fide
`
`intent to use the mark in commerce in connection with the Sigal Services to support federal protection of
`
`its mark.
`
`5
`
`

`

`36.
`
`Upon information and belief, since the October 3, 2022 filing date of the Sigal
`
`Application, Applicant has never made bona fide use in commerce of the 844-I-WIN-BIG Mark in
`
`connection with the Sigal Services to support federal protection of its mark.
`
`CONCLUSION
`
`37.
`
`The Sigal Application should be refused on the grounds of Opposer’s prior use of the
`
`WIN BIG LAW Mark because Applicant’s use of the 844-I-WIN-BIG Mark is likely to cause confusion
`
`or mistake in the minds of the public and/or lead the public and prospective purchasers to believe that
`
`Applicant’s services are those of Opposer, or that Opposer’s services are those of Applicant, and/or that
`
`Applicant and or Applicant’s services are endorsed or sponsored by, or are otherwise affiliated or
`
`connected with Opposer, all to the detriment and damage of Opposer.
`
`38.
`
`The Sigal Application should further be refused on the grounds of Applicant’s lack of
`
`bona fide use or intent to use the 844-I-WIN-BIG Mark in commerce for the Sigal Services to support a
`
`federal registration, all to the detriment and damage of Opposer.
`
`39.
`
`In view of
`
`the above, Applicant
`
`is not entitled to federal
`
`registration of
`
`the
`
`844-I-WIN-BIG Mark.
`
`WHEREFORE, by its undersigned Attorneys, Opposer, Newton, Udinson, & Hill, PLLC,
`
`respectfully requests that this opposition be sustained in favor of Opposer and that registration of
`
`Application Serial No. 97617709 be refused.
`
`Dated: New York, New York
`January 10, 2024
`
`Respectfully submitted,
`
`IONIN LAW LLC
`
`By:
`
`/s/ Jaclyn P. Ionin______
`Jaclyn P. Ionin, Esq.
`31 Hudson Yards, Fl. 11
`New York. NY 10001
`jaclyn@ioninlaw.com
`Attorneys for Opposer
`
`6
`
`

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