throbber
ESTTA Tracking number:
`
`ESTTA1334009
`
`Filing date:
`
`01/15/2024
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`91289155
`
`Party
`
`Correspondence
`address
`
`Defendant
`Sigal Law Firm, PLLC
`
`LEONARD RAYKINSTEEN
`NEXUS LAW PLLC
`3128 WALTON BLVD. #270
`ROCHESTER HILLS, MI 48309
`UNITED STATES
`Primary email: lraykinsteen@nexusiplaw.com
`334-294-7592
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Answer
`
`Leonard raykinsteen
`
`office@nexusiplaw.com
`
`/Leonard Raykinsteen/
`
`01/15/2024
`
`Attachments
`
`91289155_Answer_to_Notice_of_Opposition.pdf(186616 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91289155
`
`Application Serial No. 97/617,709
`
`
`)
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`
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`
`)
`NEWTON, UDINSON & HILL PLLC,
`)
`
`
`)
`Opposer,
`)
`
`
`)
`vs.
`
`)
`
`
`)
`
`
`)
`
`
`)
`Applicant.
`______________________________________________________________________________
`
`
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`SIGAL LAW FIRM PLLC,
`
`
`
`
`
`APPLICANT’S ANSWER TO NOTICE OF OPPOSITION
`
`Applicant, Sigal Law Firm PLLC, by and through its attorneys, hereby answers the
`
`allegations set forth in the Notice of Opposition 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.
`
`Response: Applicant is without knowledge or information sufficient to form a belief as
`
`to the allegations and therefore denies the same.
`
`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
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`International Class 45 (the “WIN BIG Services”).
`
`Response: Admitted that the United States Patent and Trademark Office (“USPTO”)
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`Trademark Database (the “Database”) reflects that U.S. Trademark Application Serial No.
`
`97/454,685 for WIN BIG LAW was filed by the Opposer on June 12, 2022, in connection with
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`“Legal Services” in International Class 45 (“Opposer’s Mark”). To the extent there are other
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`

`

`allegations in this paragraph, Applicant is without knowledge or information sufficient to form a
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`belief as to the accuracy of the allegations and therefore denies the same.
`
`3.
`
`Since introducing its WIN BIG LAW Mark in 2021, Opposer has spent
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`substantial time, effort, and money to promote the sale of its services under the WIN BIG LAW
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`Mark.
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`Response: Applicant is without knowledge or information sufficient to form a belief as
`
`to the allegations and therefore denies the same.
`
`4.
`
`Since introducing its WIN BIG LAW Mark in 2021, Opposer has served and
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`continues to serve substantial quantities of clients under the WIN BIG LAW Mark.
`
`Response: Applicant is without knowledge or information sufficient to form a belief as
`
`to the allegations and therefore denies the same.
`
`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.
`
`Response: Applicant is without knowledge or information sufficient to form a belief as
`
`to the allegations and therefore denies the same.
`
`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
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`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
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`August 22, 2022.
`
`
`
`2
`
`

`

`Response: Admitted that Applicant filed Application Serial No. 97/617,709
`
`(“Application”) for registration of the mark 844-I-WIN-BIG for use in commerce in connection
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`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
`
`(“Applicant’s Mark”) on October 3, 2022. To the extent there are other allegations in this
`
`paragraph, Applicant is without knowledge or information sufficient to form a belief as to the
`
`accuracy of the allegations and therefore denies the same.
`
`7.
`
`The Sigal Application was published for opposition in the Official Gazette on
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`September 12, 2023. On October 11, 2023, Opposer requested, and the USPTO granted, a 30-day
`
`extension of time to oppose the Sigal Application.
`
`Response: Admitted that the 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 Application.
`
`8.
`
`At the time of filing the Sigal Application, Applicant had actual notice of
`
`Opposer’s use of the WIN BIG LAW Mark.
`
`Response: Denied that at the time of filing the Application, Applicant had actual notice
`
`of Opposer’s use of the Opposer’s 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.
`
`Response: Applicant is without knowledge or information sufficient to form a belief as
`
`to the allegations and therefore denies the same.
`
`
`
`3
`
`

`

`10. Opposer’s WIN BIG Application was filed on June 12, 2022 four months prior to
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`Applicant’s Sigal Application, thus Applicant had constructive notice of Opposer’s use of the
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`WIN BIG LAW Mark.
`
`Response: Applicant is without knowledge or information sufficient to form a belief as
`
`to the allegations and therefore denies the same.
`
`11.
`
`Opposer’s first use in commerce of the WIN BIG LAW Mark was at least as early
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`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.
`
`Response: Applicant is without knowledge or information sufficient to form a belief as
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`to the allegations and therefore denies the same.
`
`12.
`
`Opposer’s first use in commerce the WIN BIG LAW Mark was at least as early as
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`June 15, 2021, which is over fourteen months prior to Applicant’s alleged date of first of August
`
`22, 2022.
`
`Response: Applicant is without knowledge or information sufficient to form a belief as
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`to the allegations and therefore denies the same.
`
`13. Opposer believes that registration of the Sigal Application will give Applicant at
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`least a prima facie right to exclusive use of the 844-I-WIN-BIG Mark on the Sigal Services.
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`Such use will cause a likelihood of confusion that would irreparably harm Opposer and its WIN
`
`BIG LAW Mark.
`
`Response: Denied as to a likelihood of confusion between the Applicant’s Mark and
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`Opposer’s Mark. Denied that registration of the Application would irreparably harm Opposer
`
`and the Opposer’s mark. To the extent there are other allegations in this paragraph, Applicant is
`
`
`
`4
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`

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`without knowledge or information sufficient to form a belief as to the accuracy of the allegations
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`and therefore denies the same.
`
`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.
`
`Response: Applicant repeats and reasserts statements provided in response to each and
`
`every allegation made in paragraphs 1 through 13 above.
`
`15.
`
`Opposer has used the WIN BIG LAW Mark in commerce in the United States for
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`the WIN BIG Services since at least as early as June 15, 2021, prior to the alleged first use date
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`of the Sigal Application, the filing date of the Sigal Application, or any other priority date to
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`which the Sigal Application is entitled.
`
`Response: Applicant is without knowledge or information sufficient to form a belief as
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`to the allegations and therefore denies the same.
`
`16.
`
`Accordingly, Opposer has priority in the WIN BIG LAW Mark over Applicant
`
`and its Sigal Application.
`
`Response: Applicant is without knowledge or information sufficient to form a belief as
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`to the allegations and therefore denies the same.
`
`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.
`
`Response: Denied.
`
`18.
`
`Applicant’s 844-I-WIN-BIG Mark is substantially or highly similar to Opposer’s
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`WIN BIG LAW Mark in sound, appearance, and commercial impression.
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`
`
`5
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`

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`Response: Denied.
`
`19.
`
`Specifically the dominant portion of the mark applied for in the Sigal Application,
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`“WIN-BIG” is identical in sight, sound, meaning, and commercial impression to the dominant
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`and non-disclaimed portion of the mark in the WIN BIG Application and in which Opposer has
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`priority.
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`Response: Denied.
`
`20.
`
`The Sigal Application is further likely to cause confusion because the Sigal
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`Services are identical, or effectively identical, to the WIN BIG LAW Services.
`
`Response: Denied.
`
`21.
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`Alternatively, the Sigal Application is likely to cause confusion because the Sigal
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`Services offered under the 844-I-WIN-BIG Mark are so closely related to the WIN BIG
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`Services, that they could reasonably be expected to originate from the same source as the
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`services offered under Opposer’s WIN BIG LAW Mark.
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`Response: Denied.
`
`22.
`
`In view of the fact that the dominant portions of the parties’ respective marks are
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`identical in sight, sound, meaning, and commercial impression, and that the services are identical
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`and/or effectively identical, or at minimum, so similar and closely related as to be expected to
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`originate from the same source, Applicant’s use of “WIN BIG” in the applied-for mark in the
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`Sigal Application would be likely to cause confusion, mistake, or deception among consumers,
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`and therefore should be refused under Section 2(d) of the Lanham Act.
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`Response: Denied.
`
`
`
`6
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`

`

`23.
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`Because of the identical nature of the dominant portion of the mark in the Sigal
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`Application and the mark in which Opposer has priority and which is the subject of the WIN
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`BIG Application, and because of the identical nature of the Sigal Services and the WIN BIG
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`Services, consumers are likely to be confused, mistaken, or deceived into believing that
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`Applicant’s services originate with Opposer or are in some way associated with or connected,
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`sponsored, or authorized by Opposer, and therefore should be refused under Section 2(d) of the
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`Lanham Act.
`
`Response: Denied.
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`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.
`
`Response: Applicant repeats and reasserts statements provided in response to each and
`
`every allegation made in paragraphs 1 through 23 above.
`
`25.
`
`Applicant exclusively advertises and provides personal injury legal services under
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`the 844-I-WIN-BIG Mark.
`
`Response: Denied.
`
`26.
`
`Applicant is based in Southfield, Michigan and does not have offices in any other
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`states.
`
`Response: Admitted.
`
`27.
`
`Applicant provides services exclusively in Michigan.
`
`Response: Admitted.
`
`
`
`7
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`

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`28.
`
`As of the date of filing of this Notice of Opposition, the attorneys employed by
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`Applicant who provide the Sigal Services under the 844-I-WIN-BIG Mark are licensed to
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`practice in Michigan, and do not actively practice anywhere else.
`
`Response: Admitted.
`
`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.
`
`Response: Admitted.
`
`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.
`
`Response: Admitted.
`
`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.
`
`Response: Denied.
`
`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.
`
`Response: Denied.
`
`33.
`
`Applicant has not made bona fide use of the mark in commerce in connection
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`with the Sigal Services to support federal protection of its mark as of the date of filing of this
`
`Notice of Opposition.
`
`
`
`8
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`

`

`Response: Denied.
`
`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.
`
`Response: Denied.
`
`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.
`
`Response: Denied.
`
`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.
`
`Response: Denied.
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`CONCLUSION
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`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
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`cause confusion or mistake in the minds of the public and/or lead the public and prospective
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`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
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`sponsored by, or are otherwise affiliated or connected with Opposer, all to the detriment and
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`damage of Opposer.
`
`Response: Denied.
`
`
`
`9
`
`

`

`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
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`Services to support a federal registration, all to the detriment and damage of Opposer.
`
`Response: Denied.
`
`39.
`
`In view of the above, Applicant is not entitled to federal registration of the 844-I-
`
`WIN-BIG Mark.
`
`Response: Denied.
`
`As and for its AFFIRMATIVE DEFENSES, Applicant states as follows:
`
`FIRST AFFIRMATIVE DEFENSE
`
`40.
`
`The Notice of Opposition fails to state a claim upon which relief can be granted.
`
`SECOND AFFIRMATIVE DEFENSE
`
`41.
`
`There is no likelihood of confusion, mistake, or deception in the minds of the
`
`public between Applicant’s Mark and the Opposer’s Mark. In view of the weakness of elements
`
`of Opposer’s Mark and the stark differences in sight, sound, meaning, and the overall
`
`commercial impressions of Opposer’s Marks and Applicant’s Mark, registration of Applicant’s
`
`Mark will not result in a likelihood of confusion.
`
`THIRD AFFIRMATIVE DEFENSE
`
`42.
`
`Opposer does not own or have exclusivity to the term “WIN BIG”. The term
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`“WIN BIG” is not a term or mark that is exclusive to Opposer, as applied to Opposer’s goods
`
`listed in the Notice of Opposition. Opposer does not have exclusivity to the term “WIN BIG”,
`
`which is a common formative term appearing in numerous composite marks that are
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`concurrently registered by numerous different third-party owners, including by way of example:
`
`
`
`10
`
`

`

`• THINK BIG, WIN BIG (Reg. No. 7,262,661) registered in connection with legal
`
`services, in Class 45;
`
`• HEAVY HITTERS WIN BIG (Reg. No. 7,262,660) registered in connection
`
`with legal services, in Class 45.
`
`43.
`
`Attached as Exhibit 1 hereto is a collection of true and accurate copies of
`
`trademark registrations for the above identified exemplary registrations of third-party owners.
`
`44.
`
`Applicant states that, in view of the state of registrations of third-party owners and
`
`absence of exclusive rights in Opposer of the term “WIN BIG”, no likelihood of confusion
`
`results from registration of Applicant’s Mark.
`
`45.
`
`Applicant further states that, as a matter of public policy, it would be unfair and
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`extremely detrimental to Applicant and to numerous third-party mark owners if Opposer were
`
`allowed to usurp all others’ rights to the term “WIN BIG”.
`
`FOURTH AFFIRMATIVE DEFENSE
`
`46.
`
`Applicant states that the Opposer’s Mark expressly disclaims the exclusive right
`
`to use the term “LAW” apart from the mark as shown, and further states that the term “WIN
`
`BIG” is at least highly suggestive when used in connection with attorney, legal or litigation
`
`services. TMEP 1207.01 expressly states that: “[i]f the common element of two marks is ‘weak’
`
`in that it is generic, descriptive, or highly suggestive of the named goods or services, it is
`
`unlikely that consumers will be confused.” See, e.g., Juice Generation, Inc. v. GS Enters. LLC,
`
`794 F.3d 1334, 1338-40 (Fed. Cir. 2015). Accordingly, Applicant states that the Applicant’s
`
`Mark would not present a likelihood of confusion with the Opposer’s Mark in the mind of a
`
`reasonable consumer because the term “WIN BIG” is highly suggestive when used in connection
`
`with attorney, legal or litigation services.
`
`
`
`11
`
`

`

`WHEREFORE, Applicant respectfully requests that this Notice of Opposition be
`
`rejected, and that Applicant’s Mark be allowed to proceed to registration.
`
`
`
`
`
`
`
`
`
`Date: January 15, 2024
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`___________________
`Leonard Raykinsteen
`Nexus Law PLLC
`3128 Walton Blvd. #270
`Rochester Hills, MI 48309
`(248) 920-9797
`LRaykinsteen@nexusiplaw.com
`office@nexusiplaw.com
`Attorneys for Applicant
`
`
`
`
`
`
`
`
`
`
`
`
`
`12
`
`

`

`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that a true and complete copy of the foregoing document has been served
`
`on Jaclyn P. Ionin by forwarding said copy on January 15, 2024, via e-mail to:
`
`Jaclyn P. Ionin
`IONIN LAW LLC
`31 Hudson Yards, Fl. 11
`New York. NY 10001
`
`Email: jaclyn@ioninlaw.com
`
`
`
`__________________
`Leonard Raykinsteen
`
`
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`Signature:
`
`
`
`Date:
`
`
`
`January 15, 2024
`
`13
`
`

`

`
`
`
`
`
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`
`
`EXHIBIT 1
`EXHIBIT 1
`
`
`
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`
`14
`
`

`

`gauited States of Amery,
`
`Untteh tates Patent and Trabemark Office
`
`HEAVY HITTERS WIN BIG
`
`Reg. No, 7.262660
`Registered Jan. 02,2024
`Wing, (71aS
`Service Wlark
`
`Princip
`
`oeer
`
`(DISTRICT OF COLUMBIA Profecsimal Limited
`
`LAWCO RSA, PLLC.
`ocgantpatree
`Fort Laudendok, FLORIDA 33301
`CLASS 45> Aliomey serysco: Legal btice, Legal eertiece Lagat mbice;
`Lape eervsom
`FORGET DRE.
`1 1-1§-7009- LS OOMECE 11-15-5883
`THE MRED CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM To
`457 PARTICULAR PONT STYLE, S000 OR COLCHE
`
`CHW HER OF DS. REG) ha Dates’
`
`SER. AORTE, FLED i] 2]
`
`
`
`Korine aly Vida
`
`Director ol the Linited States
`Patent and Trademark Office
`
`
`
`
`
`15
`15
`
`
`
`

`

`
`
`qauited States of Amery,
`United #tates Patent anb Trabemark Office
`lta
`
`THINK BIG, WIN BIG
`
`Reg. Na. 7,262 661
`Registered dam.02,2024
`dnt. (Ls a5
`
`LAWOO GSA PLLC (OSTRICT OF COLUNOELA Profcasimal Limited
`iegiaPlasewe
`Fw Landlentate, FLORIDA 3201
`
`Service dark
`
`Principal Register
`
`serveces Leopal mbice; Lepel servicer: Lotpetem ileice;
`
`CLASS 4% Avtermey
`Cattperiamn eorvaces
`FURST LSE 11-[5-2000- Bs COCR1-1-0
`THE MARE OONSESTS “Of STADIA D CULARACTERS WITHOUT CLAIM To
`AY FAGTOUIOAR BOST STYLE, Soe Oe OOLCHL
`
`CAV REN OF LCS. REG AA SS psd
`
`SER SCE WOH6L2 bh, FLED Ge) 22]
`
`
`
`onliBelle Vide.
`
`[Nrector of the United States
`Patent and Trademark Office
`
`
`
`16
`16
`
`
`
`

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