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ESTTA Tracking number:
`
`Filing date:
`
`ESTTA1350803
`04/08/2024
`
`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
`
`Morgan Global, PLLC
`
`Granted to date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`04/10/2024
`
`20 NORTH ORANGE, SUITE 1600
`ORLANDO, FL 32801
`UNITED STATES
`
`CHRISTOPHER P. BUSSERT
`KILPATRICK TOWNSEND & STOCKTON LLP
`1100 PEACHTREE STREET, NE
`SUITE 2800
`ATLANTA, GA 30309
`UNITED STATES
`Primary email: cbussert@ktslaw.com
`Secondary email(s): kteilhaber@ktslaw.com, tmadmin@ktslaw.com
`4048156500
`
`Docket no.
`
`Applicant information
`
`Application no.
`
`97056967
`
`Opposition filing
`date
`
`Applicant
`
`04/08/2024
`
`Lauren Fielder
`5005 ARAX CV.
`AUSTIN, TX 78731
`UNITED STATES
`
`Publication date
`
`12/12/2023
`
`Opposition period
`ends
`
`04/10/2024
`
`Goods/services affected by opposition
`
`Class 041. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Arranging and conducting of training
`courses in the field of law
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`Trademark Act Sections 2 and 43(c)
`
`Mark cited by opposer as basis for opposition
`
`U.S. registration
`no.
`
`2510452
`
`Application date
`
`04/16/2001
`
`

`

`Register
`
`Principal
`
`Registration date
`
`11/20/2001
`
`Word mark
`
`Design mark
`
`FOR THE PEOPLE
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 042. First use: First Use: Jan 1, 1993 First Use In Commerce: Jan 1, 1993
`ATTORNEY SERVICES
`
`Attachments
`
`76240057#TMSN.png( bytes )
`2024.04.08 Notice of Opposition_97056967.pdf(175759 bytes )
`
`Signature
`
`/Christopher P. Bussert/
`
`Name
`
`Date
`
`CHRISTOPHER P. BUSSERT
`
`04/08/2024
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application Serial No. 97/056,967; LAW FOR THE PEOPLE; Published in the
`Official Gazette of December 12, 2023
`
`Opposition No. __________
`
`)
`)
`
`) )
`
`)
`)
`)
`)
`)
`
`MORGAN GLOBAL, PLLC,
`
`Opposer,
`
`v.
`
`LAUREN FIELDER,
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`Opposer Morgan Global, PLLC (“Opposer”), a Florida professional association
`
`whose business address is 20 North Orange Avenue, Suite 1600, Orlando, Florida 32801,
`
`believes that it will be damaged by registration of the LAW FOR THE PEOPLE mark as
`
`currently shown in Application Serial No. 97/056,967 (“Applicant’s Application”) and, because
`
`it is entitled to a statutory cause of action, hereby opposes the same pursuant to the provisions of
`
`15 U.S.C. § 1063.
`
`On October 1, 2021, Lauren Fielder (“Applicant”) filed Applicant’s Application
`
`to register the LAW FOR THE PEOPLE (“Applicant’s Mark”) for “arranging and conducting
`
`training courses in the field of law” in International Class 41; and “legal services, namely
`
`providing customized documentation, information, counseling, advice and consultation services
`
`in all areas of law” in International Class 45 (“Applicant’s Original Services”). During the
`
`prosecution of Applicant’s Application, as explained in further detail below, the International
`
`Class 45 services were deleted from the Application leaving only the International Class 41
`
`

`

`services (“Applicant’s Revised Services”). Applicant’s Application was published in the Official
`
`Gazette on December 12, 2023. Opposer has obtained an extension of time through and
`
`including April 10, 2024 to file a Notice of Opposition. As grounds for its opposition, Opposer
`
`alleges:
`
`1.
`
`Opposer’s licensee, Morgan & Morgan, is a leading law firm specializing in
`
`representing individuals in a wide variety of matters nationwide. Morgan & Morgan
`
`currently has over 1,000 lawyers, and offices in all 50 states and Washington, D.C.
`
`2.
`
`Morgan & Morgan attorneys provide representation and consultation in a wide
`
`variety of legal matters, including personal injury, medical malpractice, worker’s
`
`compensation, nursing home abuse, wrongful death, product liability, product recalls,
`
`premises liability, business and civil rights litigation, insurance disputes, social security
`
`disability, veterans benefits and workplace disputes. Morgan & Morgan attorneys also
`
`represent individuals and consumers in class actions in several of the foregoing practice
`
`areas. As many of the subject areas in which Morgan & Morgan provides representation
`
`and consultation involve sophisticated legal subjects, Morgan & Morgan attorneys spend
`
`significant time explaining the law and informing their clients of their legal options as a
`
`part of their delivery of legal services.
`
`3.
`
`Opposer, its predecessors in interest and/or Morgan & Morgan have prominently
`
`and continuously used the FOR THE PEOPLE® service mark (“FOR THE PEOPLE®
`
`Mark”) since at least as early as January 1, 1993. On November 20, 2001, one of Opposer’s
`
`2
`
`

`

`predecessors in interest received U.S. Registration No. 2,510,452 covering the FOR THE
`
`PEOPLE® Mark for “attorney services” (“FOR THE PEOPLE® Registration”).
`
`4.
`
`The original registrant of the FOR THE PEOPLE® Registration was Morgan,
`
`Colling & Gilbert, P.A. of Orlando, Florida. On February 23, 2005, Morgan, Colling &
`
`Gilbert changed its name to The Morgan Firm, P.A. On November 15, 2006, The Morgan
`
`Firm, P.A. changed its name to Morgan & Morgan, P.A. On October 4, 2016 Morgan &
`
`Morgan P.A. assigned all right, title and interest in and to the FOR THE PEOPLE® Mark
`
`and FOR THE PEOPLE® Registration to Morgan Global, PLLC.
`
`5.
`
`The FOR THE PEOPLE® Registration is incontestable pursuant to 15 U.S.C. §
`
`1065 as the mark has been in continuous use in commerce for more than five years from
`
`the date of registration and the required affidavit of incontestability has been filed with the
`
`U.S. Patent and Trademark Office. Because the FOR THE PEOPLE® Registration is
`
`incontestable, pursuant to 15 U.S.C. §1115(b), the registration is conclusive evidence of the
`
`validity of the registered mark and of Opposer’s exclusive rights to use the mark on or in
`
`connection with attorney services.
`
`6.
`
`Opposer, its predecessors and Morgan & Morgan have expended tens of millions of
`
`dollars advertising and promoting its attorney services under its FOR THE PEOPLE®
`
`Mark throughout the United States in various media including television and radio spots,
`
`transit and billboard signage, and on the Internet including social media. Morgan &
`
`Morgan advertises its attorney services on its website accessable through the domain name
`
`
`
`3
`
`

`

`www.forthepeople.com (“FOR THE PEOPLE® Website”) and all Morgan & Morgan firm
`
`attorneys use a forthepeople.com derivative email address to communicate with clients,
`
`potential clients and others in the legal field.
`
`7.
`
`Morgan & Morgan attorneys have, since prior to the application filing date of
`
`Applicant’s Application, provided on the FOR THE PEOLE® Website a variety of
`
`educational and informational materials including legal newsletters and blogs to clients and
`
`potential clients of a wide variety of legal subjects. See https://forthepeople.com/blog. The
`
`FOR THE PEOPLE® Website also includes a “Frequently Asked Questions” section that
`
`provides further information on a wide variety of legal subjects. See
`
`https://forthepeople.com/FAQ/. Morgan & Morgan attorneys also on occasion serve as
`
`lecturers and/or adjunct professors on various legal subjects at law schools located around
`
`the country.
`
`8.
`
`Since prior to the application filing date of Applicant’s Application, Morgan &
`
`Morgan has promoted and sponsored a FOR THE PEOPLE Scholarship provided to law
`
`students. Applicant’s FOR THE PEOPLE Mark and forthepeople.com domain name are
`
`also promoted at a number of community outreach activities including in connection with a
`
`mobile insurance claims center.
`
`9.
`
`As a result of the continuous and exclusive use of the FOR THE PEOPLE® Mark
`
`by Opposer, its predecessors and/or Morgan & Morgan in the legal field, the mark enjoys
`
`wide public acceptance and association with Opposer and has come to be recognized
`
`
`
`4
`
`

`

`widely and favorably by the public as an indicator of the origin of a wide variety of
`
`attorney services provided in the legal field.
`
`10.
`
`As a result of the extensive use and promotion of the FOR THE PEOPLE® Mark in
`
`interstate commerce by Opposer, its predecessor and Morgan & Morgan, Opposer now
`
`owns valuable goodwill that is symbolized by Opposer’s FOR THE PEOPLE® Mark. The
`
`relevant consuming public has come to associate the FOR THE PEOPLE® Mark as
`
`identifying the wide variety of attorney services offered by Morgan & Morgan. Opposer’s
`
`FOR THE PEOPLE® Mark is distinctive and has achieved significant secondary meaning
`
`and fame.
`
`11.
`
`As a result of the extensive and continuous use and promotion of Opposer’s FOR
`
`THE PEOPLE® Mark, the FOR THE PEOPLE® Mark has become famous and highly
`
`distinctive of Morgan & Morgan’s attorney services.
`
`12.
`
`Opposer’s FOR THE PEOPLE® Mark is famous and distinctive within the
`
`meaning of 15 U.S.C. § 1125(c) in that:
`
`(a)
`
`the mark possesses both inherent and acquired distinctiveness;
`
`(b)
`
`Opposer, its predecessors and Morgan & Morgan have made extensive
`
`and exclusive use of the FOR THE PEOPLE® Mark for attorney services
`
`for an extended period of time;
`
`
`
`5
`
`

`

`(c)
`
`Opposer, its predecessors and Morgan & Morgan have extensively
`
`promoted the services provided under the FOR THE PEOPLE® Mark
`
`throughout the United States;
`
`(d)
`
`Opposer and Morgan & Morgan have used, and are currently using, the
`
`FOR THE PEOPLE® Mark throughout the United States;
`
`(e)
`
`Morgan & Morgan currently is providing a wide variety of attorney
`
`services under the FOR THE PEOPLE® Mark;
`
`(f)
`
`Opposer, primarily through the activities of Morgan & Morgan, has
`
`successfully cultivated a high degree of recognition of the FOR THE
`
`PEOPLE® Mark in the trading areas and channels in which both Opposer
`
`and Applicant are doing business;
`
`(g)
`
`on information and belief, there is no significant third party use of the
`
`FOR THE PEOPLE® Mark or phonetic equivalents thereof in the legal
`
`field; and
`
`(h)
`
`the FOR THE PEOPLE® Mark is covered by an incontestable federal
`
`registration.
`
`13.
`
`On October 1, 2021, Applicant Lauren Fielder applied to register the LAW FOR
`
`THE PEOPLE mark under Application Serial No. 97/056,967 for Applicant’s Original
`
`Services.
`
`14.
`
`On July 1, 2022, a Non-Final Office Action issued in connection with Applicant’s
`
`Application (“July 2022 Office Action”). Specifically a Section 2(d) refusal was issued in
`
`
`
`6
`
`

`

`connection with Applicant’s International Class 45 services because of a likelihood of
`
`confusion with Opposer’s FOR THE PEOPLE® Registration.
`
`15.
`
`In comparing Applicant’s LAW FOR THE PEOPLE mark and Opposer’s FOR
`
`THE PEOPLE® Mark in the July 2022 Office Action, the examining attorney observed:
`
`“The marks are confusingly similar because they feature the wording ‘FOR THE PEOPLE’
`
`as the dominant term(s)” and “Since the compared marks feature the wording “FOR THE
`
`PEOPLE,” the marks are confusingly similar.” July 2022 Office Action at 2-3.
`
`16.
`
`On January 13, 2023, a Notice of Abandonment issued in connection with
`
`Applicant’s Application as a result of Applicant’s failure to respond timely to the July 2022
`
`Office Action.
`
`17.
`
`On March 10, 2023, Applicant filed a Petition to Revive Abandoned Application
`
`(“Petition to Revive”) asserting that “the failure to respond to the [July 2022] Office Action
`
`was unintentional.” Petition to Revive at 1.
`
`18.
`
`Applicant further asserted in the Petition to Revive that “I am called law for the
`
`people because I have set myself out as different from other law firms because I spend lots
`
`of time explaining the law to my clients along with delivering legal services. I am a full-
`
`time-law professor so explaining things is what makes me different. This is how I market
`
`myself to my clients. ‘For the People’ represents what someone says in court. I am not a
`
`courtroom lawyer.” Petition to Revive, 1.
`
`7
`
`
`
`

`

`19.
`
`Applicant also agreed in the Petition to Revive to a disclaimer of the term “LAW”
`
`thereby confirming that “For the People” represents the dominant portion of Applicant’s
`
`Mark.
`
`20.
`
`On July 24, 2023, a Final Action issued as to Applicant’s Application (“Final
`
`Action”). Therein the examining attorney maintained his refusal under Section 2(d) as to
`
`Applicant’s International Class 45 services as a result of a likelihood of confusion with
`
`Opposer’s FOR THE PEOPLE® Registration.
`
`21.
`
`In comparing Applicant’s LAW FOR THE PEOPLE mark with Opposer’s FOR
`
`THE PEOPLE® mark in the Final Action, the examining attorney reiterated: “The marks
`
`are confusingly similar because they feature the wording ‘FOR THE PEOPLE’ as the
`
`dominant term(s).” Final Action at 2.
`
`22.
`
`The examining attorney noted further in the Final Action: “The considered marks
`
`feature the wording FOR THE PEOPLE and are both for legal services, thus converting the
`
`impression of lawyers ‘FOR THE PEOPLE’” and “Since the compared marks feature the
`
`wording “FOR THE PEOPLE”, the marks are confusingly similar.” Final Action at 3.
`
`23.
`
`On November 7, 2023, the examining attorney issued an Examiner’s Amendment in
`
`connection with Applicant’s Application. Therein the examining attorney noted that the
`
`application had been “partially abandoned” and that the International Class 45 services
`
`
`
`8
`
`

`

`would be deleted from Applicant’s Application as a result of Applicant’s failure to respond
`
`to the Final Action.
`
`24.
`
`Applicant failed to file a second petition to revive the abandoned International Class
`
`45 services.
`
`25.
`
`On December 12, 2023, Applicant’s Application for Applicant’s Amended Services
`
`was published in the Official Gazette.
`
`GROUND I
`
`Likelihood of Confusion
`
`26.
`
`Opposer hereby incorporates by reference the allegations of Paragraphs 1-25
`
`hereof as if fully set forth herein.
`
`27.
`
`Because of the high degree of distinctiveness of Opposer’s FOR THE PEOPLE®
`
`Mark in the legal field, the length of time Opposer, its predecessors and Morgan & Morgan have
`
`used the FOR THE PEOPLE® Mark, the vast advertising and publicity the FOR THE
`
`PEOPLE® Mark has received, the substantial trading area in which the FOR THE PEOPLE®
`
`Mark is used, and the high degree of consumer recognition of the FOR THE PEOPLE® Mark,
`
`the FOR THE PEOPLE® Mark is a well known, strong, and famous trademark, deserving of a
`
`broad scope of legal protection.
`
`
`
`9
`
`

`

`28.
`
`Applicant’s Mark is closely similar to Opposer’s FOR THE PEOPLE® Mark in
`
`sound, sight and commercial impression.
`
`29.
`
` Applicant’s Mark encompasses Opposer’s FOR THE PEOPLE® Mark in its
`
`entirely with the only difference being that the phrase “FOR THE PEOPLE” is preceded by the
`
`disclaimed term “LAW” in Applicant’s Mark.
`
`30.
`
`Applicant’s Amended Services are identical to certain of the services historically
`
`provided by Morgan & Morgan under the FOR THE PEOPLE® Mark and are related to those
`
`covered by Opposer’s FOR THE PEOPLE® Registration. Both Applicant’s Amended Services
`
`and Opposer’s services under the FOR THE PEOPLE® Mark are provided in the legal field and
`
`involve legal subject matter.
`
`31.
`
`On information and belief, Applicant was aware of Opposer’s FOR THE
`
`PEOPLE® Mark at the time it adopted the LAW FOR THE PEOPLE mark.
`
`32.
`
`Applicant’s Mark, when used in connection with Applicant’s Amended Services,
`
`so resembles Opposer’s previously used, and registered, FOR THE PEOPLE® Mark as to be
`
`likely to cause confusion, mistake, and/or to deceive consumers concerning an affiliation,
`
`connection, association or sponsorship with the source of services offered under the FOR THE
`
`
`
`10
`
`

`

`PEOPLE® Mark, in violation of 15 U.S.C. § 1052(d), with consequent injury to Opposer, the
`
`public and the trade.
`
`33.
`
`Opposer believes it will be damaged by registration of Applicant’s Mark, and is
`
`entitled to a statutory cause of action, because the mark in its entirety so resembles Opposer’s
`
`FOR THE PEOPLE® Mark previously used, and registered, in the United States, and not
`
`abandoned, as to be likely to cause customer confusion, mistake and deception, particularly in
`
`view of the high degree of similarity of the respective marks and closely related nature of the
`
`respective parties’ goods and/or services. Persons familiar with Opposer’s FOR THE PEOPLE®
`
`Mark would be likely to believe erroneously that Applicant’s Amended Services are offered by
`
`Opposer or endorsed and sponsored by Opposer, and registration of Applicant’s Mark on the
`
`Principal Register would be inconsistent with Opposer’s rights in its federally registered and
`
`common law rights in its FOR THE PEOPLE® Mark.
`
`GROUND II
`
`Dilution of the Famous Mark
`
`34.
`
`Opposer hereby incorporates by reference the allegations of Paragraphs 1-33
`
`hereof as if fully set forth herein.
`
`35.
`
`Because of the high degree of inherent and acquired distinctiveness of the FOR
`
`THE PEOPLE® Mark in the legal field, the length of time and extent to which Opposer, its
`
`predecessors and Morgan & Morgan have used the FOR THE PEOPLE® Mark, the vast
`
`
`
`11
`
`

`

`advertising and publicity the FOR THE PEOPLE® Mark has received, the substantial trading
`
`area in which the FOR THE PEOPLE® Mark is used, and the high degree of consumer
`
`recognition of the FOR THE PEOPLE® Mark, the FOR THE PEOPLE® Mark is a famous
`
`trademark pursuant to 15 U.S.C. § 1125(c)(1).
`
`36.
`
`The FOR THE PEOPLE® Mark became famous long before Applicant’s first use,
`
`actual or constructive, of the LAW FOR THE PEOPLE mark in the United States.
`
`37.
`
`Applicant’s Mark, when used on or in connection with Applicant’s Amended
`
`Services, would lessen the capacity of Opposer’s FOR THE PEOPLE® Mark to identify and
`
`distinguish Opposer’s goods and services offered in the legal field thereunder and, as such,
`
`would cause dilution of the FOR THE PEOPLE® Mark in violation of 15 U.S.C. § 1052.
`
`38.
`
`Pursuant to 15 U.S.C. § 1063(a), Opposer believes it will be damaged by the
`
`registration sought by Applicant, and is entitled to a statutory cause of action, because such
`
`registration will support and assist Applicant in the use of the LAW FOR THE PEOPLE mark,
`
`and would give color and exclusive statutory right to Applicant in violation and derogation of
`
`prior and superior statutory and common law rights of Opposer.
`
`39.
`
`For all of the foregoing reasons, Opposer requests that Application Serial
`
`No. 97/056,967 be refused registration, and that this opposition be sustained in favor of Opposer.
`
`
`
`12
`
`

`

`40.
`
`Opposer therefore requests that Application Serial No. 97/056,967 be refused
`
`registration, and that this opposition be sustained in favor of Opposer.
`
`41.
`
`The required fee for instituting this opposition proceeding accompanies this
`
`notice. The Commissioner is authorized to charge Kilpatrick Townsend & Stockton LLP’s credit
`
`card account as indicated on the USPTO’s online fee payment management tool, Financial
`
`Manager, for the amount of the required filing fee. The Commissioner is authorized to charge
`
`Kilpatrick Townsend & Stockton LLP’s Deposit Account No. 20-1430 if there is a deficiency in
`
`the required filing fee.
`
`Dated: April 8, 2024
`
`Respectfully submitted,
`
`By /Christopher P. Bussert/
`Christopher P. Bussert
`KILPATRICK TOWNSEND & STOCKTON LLP
`1100 Peachtree Street, Suite 2800
`Atlanta, Georgia 30309-4530
`Telephone: (404) 815-6545
`Facsimile: (404) 541-3144
`E-mail: cbussert@ktslaw.com
`
`Attorneys for Opposer
`MORGAN GLOBAL, PLLC
`
`
`
`13
`
`

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