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`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
`General Email: TTABInfo@uspto.gov
`
`March 19, 2024
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`Opposition No. 91289155
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`Newton, Udinson, & Hill PLLC
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`v.
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`Sigal Law Firm, PLLC
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`
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`Lawrence T. Stanley, Jr., Interlocutory Attorney:
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`On March 18, 2024, at Opposer’s request, the Board participated in the parties’
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`discovery conference, which was conducted by phone. The participants were Jaclyn
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`Ionin, counsel for Opposer, Leonard Raykinsteen, counsel for Applicant, Vadim Sigal,
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`corporate representative for Applicant, and Lawrence T. Stanley, Jr., Interlocutory
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`Attorney for the Board.
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`I.
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`Related Proceedings
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`The parties confirmed that they are not currently involved in any other litigation
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`concerning the marks at issue in this proceeding. As set forth in the institution order,
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`the parties must notify the Board promptly in writing if they become parties to
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`another Board proceeding, or a civil action, which involves the same or related marks
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`or issues of law or fact which overlap with this case.
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`Opposition No. 91289155
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`II.
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`Settlement
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`The parties informed the Board that they have discussed settlement, and
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`pursuant to their agreement during the discovery conference, proceedings are
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`suspended for thirty days to allow them to further discuss settlement. If the
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`parties are unable to reach a settlement within thirty days but are continuing to
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`make progress towards settlement, they are encouraged to file a motion to suspend
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`proceedings for further settlement negotiations. Stipulations to suspend a proceeding
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`should be filed promptly because, absent suspension, the Board expects the parties
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`to adhere to the proceeding deadlines set by the Board.1 Atlanta-Fulton Cty. Zoo Inc.
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`v. De Palma, 45 USPQ2d 1858, 1859 (TTAB 1998) (“[I]t is well established that the
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`mere existence of settlement negotiations alone does not justify a party’s inaction or
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`delay.”).
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`III. Pleaded Claims and Defenses
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`A. Notice of Opposition
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`Applicant, a Michigan limited liability company, seeks registration of the mark
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`844-I-WIN-BIG,
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`in standard characters, for “legal advisory services;
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`legal
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`consultation services; legal services; providing customized legal information,
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`counseling, and advice, and litigation services in the field of personal injury law;
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`providing legal services in the field of personal injury law” in Class 45.2
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`1 Settlement discussions generally are confidential, so statements made during settlement
`discussions should not be submitted to the Board. The parties should preview Board filings
`with care to ensure that settlement matters do not inadvertently become part of the record.
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`2 Application Serial No. 97617709; filed October 3, 2022 under Section 1(a) of the Trademark
`Act, alleging a date of first use and date of first use in commerce of August 22, 2022.
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`
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`2
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`Opposition No. 91289155
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`Opposer, a Pennsylvania limited liability company, alleges prior use of the mark
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`WIN BIG LAW for legal services in interstate commerce since at least as early as
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`June 15, 2021. 1 TTABVUE 3, ¶ 1. Opposer also alleges ownership of application
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`Serial No. 97454685 for the mark WIN BIG LAW, in standard characters, for “legal
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`services” in International Class 45.3 Id. at 4, ¶ 2. As grounds for opposition, Opposer
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`pleads claims of likelihood of confusion under Section 2(d) of the Trademark Act (id.
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`at 5-6, ¶¶ 14-23) and nonuse (id. at 6-8, ¶¶ 24-36).
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`1.
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`Entitlement to a Statutory Cause of Action
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`Opposer has pleaded its entitlement to a statutory cause of action, formerly
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`referred to as standing, through its alleged prior use of its WIN BIG LAW mark in
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`connection with legal services, and the alleged damage that will occur by registration
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`of Applicant’s mark. 1 TTABVUE 3-4, ¶¶ 1-5; id. at 6, ¶ 23.
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`2.
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`Likelihood of Confusion
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`Opposer has pleaded a claim for likelihood of confusion in that Opposer alleges
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`that it has priority in its WIN BIG LAW mark and Applicant’s mark so closely
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`resembles Opposer’s mark that consumers are likely to be confused as to the source
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`of origin of Applicant’s services or the affiliation between Applicant and Opposer. Id.
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`at 5-6, ¶¶ 14-23.
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`3 Filed June 12, 2022 under Section 1(a) of the Trademark Act, alleging a date of first use
`and date of first use in commerce of June 15, 2021. “LAW” is disclaimed.
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`3
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`Opposition No. 91289155
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`3.
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`Nonuse
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`Opposer has pleaded a claim for nonuse in that Opposer alleges that Applicant
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`had not made bona fide use of the mark in commerce in connection with the involved
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`services as of the application filing date.4 1 TTABVUE 7, ¶ 32.
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`
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`B.
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`Answer
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`Applicant denies the salient allegations of the notice of opposition and purports to
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`plead four affirmative defenses. 4 TTABVUE. An affirmative defense is “[a]
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`defendant’s assertion raising new facts and arguments that, if true, will defeat the
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`plaintiff’s or prosecution’s claim, even if all allegations in the complaint are true.”
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`H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1720 (TTAB 2008) (citing Black’s
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`Law Dictionary, p. 430 (7th ed. 1999)).
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`1.
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`First Affirmative Defense
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`Applicant’s first affirmative defense (failure to state a claim) (4 TTABVUE 11,
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`¶40) is not a true affirmative defense. Failure to state a claim is not a true affirmative
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`defense because it asserts the insufficiency of the pleading of Opposer’s claims rather
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`than a statement of a defense to a properly pleaded claim. See Blackhorse et al. v. Pro
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`Football, Inc., 98 USPQ2d 1633, 1637 (TTAB 2011); Hornblower & Weeks, Inc. v.
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`Hornblower & Weeks, Inc., 60 USPQ2d 1733, 1738 n.7 (TTAB 2001). Furthermore, as
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`4 The Board notes that the ESTTA coversheet (1 TTABVUE 1) and Opposer’s notice of
`opposition (id. at 7, ¶ 34) include a purported claim for lack of a bona fide intent to use.
`Applicant’s involved application is a use-based application under Section 1(a) of the
`Trademark Act, not an intent to use application. As such, lack of a bona fide intent to use is
`not a viable claim. Compare Trademark Act Section 1(a) with Trademark Act Section 1(b),
`Section 44(d)(2), Section 44(e), and Section 66(a). To the extent Opposer intended to plead a
`claim for lack of a bona fide intent to use, it will receive no consideration.
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`
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`4
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`Opposition No. 91289155
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`already addressed, Opposer has sufficiently pleaded its entitlement to a statutory
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`cause of action and claims for likelihood of confusion and nonuse.
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`Accordingly, Applicant’s first affirmative defense (failure to state a claim) is
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`stricken.
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`2.
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`Second, Third, and Ninth Affirmative Defenses
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`Applicant’s second defense (no likelihood of confusion), third defense (Opposer
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`does not own or have exclusivity in the term WIN BIG), and fourth defense (Opposer’s
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`mark is weak) (4 TTABVUE 11-12. ¶¶ 41-46) are not true affirmative defenses.
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`However, to the extent they amplify the denials in Applicant’s answer, they are
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`permissible.5 See ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1236
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`n.11 (TTAB 2015).
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`IV. Accelerated Case Resolution (ACR) Procedures
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`The Board briefly addressed how cases can be streamlined using Accelerated Case
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`Resolution (“ACR”). In a traditional ACR proceeding, parties forego a formal trial in
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`favor of submitting briefs with attached evidence, and agreeing that the Board may
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`resolve any genuine disputes of material fact raised by the parties’ filings or the
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`record, and issue a final decision. See, e.g., Chanel Inc. v. Makarczyk, 106 USPQ2d
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`1774, 1776 (TTAB 2013). Short of traditional ACR, parties may stipulate to various
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`facts and procedures. Target Brands, Inc. v. Hughes, 85 USPQ2d 1676, 1678 (TTAB
`
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`5 The Board notes that Applicant attaches certain third-party registrations as exhibits to its
`answer. 4 TTABVUE 15-17. Except in two scenarios not applicable to Applicant in this case,
`exhibits attached to a pleading are not evidence on behalf of the party to whose pleading they
`are attached, and must be properly identified and introduced in evidence as exhibits during
`the testimony period. TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE
`(TBMP) § 704.05(a) (2023).
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`
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`5
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`Opposition No. 91289155
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`2007) (parties stipulated to entire record of the case including business records, public
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`records, government documents, marketing materials and materials obtained from
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`the Internet as well as thirteen paragraphs of facts; the parties agreed to reserve the
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`right to object to such facts and documents on the bases of relevance, materiality and
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`weight).
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`The following materials provide additional information regarding ACR:
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`1. General description of ACR:
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`https://www.uspto.gov/sites/default/files/trademarks/process/appeal/Accelerated_
`Case_Resolution__ACR__notice_from_TTAB_webpage_12_22_11.pdf.
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`2. FAQs on ACR:
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`https://www.uspto.gov/sites/default/files/documents/acr-faq-updates.doc.
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`3. TBMP §§ 528.05(a)(2), 702.04 and 705.
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`The assigned Interlocutory Attorney is available for telephone conferences to
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`further discuss ACR and to assist the parties in crafting an ACR stipulation, if the
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`parties are interested.
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`V.
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`Arrangements for Disclosure, Discovery, and Trial
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`The Board expects cooperation from the parties throughout disclosures, discovery,
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`and trial.
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`Pursuant to Trademark Rule 2.116(g), the Board’s standard protective order is
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`automatically
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`in effect
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`for this proceeding and may be accessed here:
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`6
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`Opposition No. 91289155
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`https://www.uspto.gov/sites/default/files/documents/Standard%20Protective%20Ord
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`er_02052020.pdf.6
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`Since the Board’s standard protective order automatically applies, parties cannot
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`withhold properly discoverable information on the basis of confidentiality. Amazon
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`Techs., Inc. v. Wax, 93 USPQ2d 1702, 1706 n.6 (TTAB 2009); TBMP §412.01.
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`The parties may seek only discovery that is relevant to the disputed issues and
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`proportional to the needs of the case. Fed. R. Civ. P. 26(b)(1). The parties should not
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`assert boilerplate or blanket objections in response to discovery requests. Fed. R. Civ.
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`P. 34(b)(2)(B) (party responding to a document request must “state with specificity
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`the grounds for objecting to [a] request, including the reasons”); Medtronic, Inc. v.
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`Pacesetter Sys., Inc., 222 USPQ 80, 83 (TTAB 1984) (“[I]t is incumbent upon a party
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`who has been served with interrogatories to respond by articulating his objections
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`(with particularity) to those interrogatories which he believes to be objectionable, and
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`by providing the information sought in those interrogatories which he believes to be
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`proper.”). If a party withholds information or documents in response to a discovery
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`request based on the attorney/client privilege and/or work product doctrine, the party
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`must produce a privilege log. Amazon Techs., 93 USPQ2d at 1706 n.6; No Fear Inc. v.
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`Rule, 54 USPQ2d 1551, 1556 (TTAB 2000).
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`6 The terms of the Board’s standard protective order may be modified, upon motion or upon
`stipulation approved by the Board. TBMP § 412.02. If the parties choose to modify the terms
`of the Board’s standard protective order and enter into their own stipulated protective order,
`a copy of the executed agreement should be filed with the Board. The Board will acknowledge
`receipt of the agreement, but the parties should not wait for the Board’s acknowledgement to
`conduct themselves in accordance with the terms of their agreement. TBMP § 412.02(a).
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`
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`7
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`Opposition No. 91289155
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`VI. Proceeding Dates
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`Proceedings are suspended for thirty days for settlement. If, during the
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`suspension period, either of the parties or their attorneys have a change of address
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`or email address, the Board should be informed. Trademark Rule 2.18(b)(1). In the
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`event that there is no word from either party concerning the progress of their
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`negotiations, upon conclusion of the suspension period, proceedings shall resume
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`without further notice or order from the Board upon the following
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`schedule:7
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`Proceedings Resume: April 18, 2024
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`Discovery Opens
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`Initial Disclosures Due
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`Expert Disclosures Due
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`Discovery Closes
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`Plaintiff’s Pretrial Disclosures Due
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`Plaintiff’s 30-day Trial Period Ends
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`Defendant’s Pretrial Disclosures Due
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`Defendant’s 30-day Trial Period Ends
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`Plaintiff’s Rebuttal Disclosures Due
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`Plaintiff’s 15-day Rebuttal Period Ends
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`Plaintiff’s Opening Brief Due
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`Defendant’s Brief Due
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`Plaintiff’s Reply Brief Due
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`Request for Oral Hearing (optional) Due
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`
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`4/22/2024
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`5/22/2024
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`9/19/2024
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`10/19/2024
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`12/3/2024
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`1/17/2025
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`2/1/2025
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`3/18/2025
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`4/2/2025
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`5/2/2025
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`7/1/2025
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`7/31/2025
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`8/15/2025
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`8/25/2025
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`7 As a reminder, a party must serve initial disclosures before serving discovery or filing a
`motion for summary judgment.
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`8
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`Opposition No. 91289155
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`Important Trial and Briefing Instructions
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`Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony is
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`taken and introduced out of the presence of the Board during the assigned testimony
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`periods. The parties may stipulate to a wide variety of matters, and many
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`requirements relevant to the trial phase of Board proceedings are set forth in
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`Trademark Rules 2.121 through 2.125. These include pretrial disclosures, the
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`manner and timing of taking testimony, matters in evidence, and the procedures for
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`submitting and serving testimony and other evidence, including affidavits,
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`declarations, deposition transcripts and stipulated evidence. Trial briefs shall be
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`submitted in accordance with Trademark Rules 2.128(a) and (b). Such briefs should
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`utilize citations to the TTABVUE record created during trial, to facilitate the Board’s
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`review of the evidence at final hearing. See TBMP § 801.03. Oral argument at final
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`hearing will be scheduled only upon the timely submission of a separate notice as
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`allowed by Trademark Rule 2.129(a).
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`9
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