ESTTA Tracking number:
`
`Filing date:
`
`ESTTA1358511
`05/14/2024
`
`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
`
`Granted to date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`Glen J. Lerner
`
`05/18/2024
`
`C/O WHITELAW LEGAL GROUP
`3838 TAMIAMI TRAIL N., SUITE 310
`NAPLES, FL 34103
`UNITED STATES
`
`JENNIFER L. WHITELAW
`WHITELAW LEGAL GROUP
`3838 TAMIAMI TRAIL N.
`SUITE 310
`NAPLES, FL 34103
`UNITED STATES
`Primary email: ttabmail@whitelawfirm.com
`Secondary email(s): usptomail@whitelawfirm.com
`No phone number provided
`
`Docket no.
`
`Applicant information
`
`Application no.
`
`97936849
`
`Opposition filing
`date
`
`Applicant
`
`05/14/2024
`
`Clarel Jean-Louis Jr.
`1261 PARKER ROAD
`CONYERS, GA 30094
`UNITED STATES
`
`Publication date
`
`03/19/2024
`
`Opposition period
`ends
`
`05/18/2024
`
`Goods/services affected by opposition
`
`Class 044. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Chiropractic services
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Other
`
`Grounds as more fully set forth in the Notice of
`Opposition filed herein
`
`Marks cited by opposer as basis for opposition
`
`U.S. registration
`no.
`
`4318769
`
`Application date
`
`04/30/2012
`
`

`

`Register
`
`Principal
`
`Registration date
`
`04/09/2013
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`CAR WRECK GET A CHECK
`
`NONE
`
`Class 045. First use: First Use: Sep 7, 2012 First Use In Commerce: Sep 7,
`2012
`Legal services, namely, providing legal advice, counsel, and representation to
`individuals who have sustained a personal injury or damage to personal property
`in a motor vehicle accident
`
`U.S. registration
`no.
`
`4824793
`
`Register
`
`Principal
`
`Registration date
`
`10/06/2015
`
`Application date
`
`02/12/2014
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`IN A WRECK NEED A CHECK
`
`NONE
`
`Class 045. First use: First Use: 1999 First Use In Commerce: 1999
`Legal services; Legal services in the field of personal injury and tort claims; Leg-
`al counseling and advice to others; Providing information to others on legal ser-
`vices; Providing information to others on legal services via the internet
`
`U.S. registration
`no.
`
`4446411
`
`Register
`
`Principal
`
`Registration date
`
`12/10/2013
`
`Application date
`
`11/02/2012
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`IN A WRECK? NEED A CHECK?
`
`NONE
`
`Class 045. First use: First Use: Nov 1, 2010 First Use In Commerce: Nov 1,
`2010
`Legal services
`
`U.S. registration
`no.
`
`6789718
`
`Register
`
`Principal
`
`Application date
`
`06/23/2015
`
`Registration date
`
`07/12/2022
`
`Foreign priority
`
`NONE
`
`

`

`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`FROM WRECK TO CHECK
`
`date
`
`NONE
`
`Class 045. First use: First Use: Jun 5, 2019 First Use In Commerce: Jun 5, 2019
`Legal services
`
`U.S. registration
`no.
`
`6952116
`
`Register
`
`Principal
`
`Registration date
`
`01/17/2023
`
`Application date
`
`11/28/2017
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`Attachments
`
`TURN YOUR WRECK INTO A CHECK
`
`NONE
`
`Class 045. First use: First Use: 2006 First Use In Commerce: 2006
`Legal services
`
`85612433#TMSN.png( bytes )
`86191518#TMSN.png( bytes )
`85770221#TMSN.png( bytes )
`86671095#TMSN.png( bytes )
`87699851#TMSN.png( bytes )
`Notice of Opposition Serial No. 97936849.pdf(115481 bytes )
`
`Signature
`
`/Jennifer L. Whitelaw/
`
`Name
`
`Date
`
`JENNIFER L. WHITELAW
`
`05/14/2024
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
` ______________________________________________________________________
`To the Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, Virginia 22313-1451
`______________________________________________________________________
`In the matter of Application Serial No. 97936849 for the mark CAR WRECK? GET CHECKED
`FOR A WRECK, Published in the Official Gazette on March 19, 2024
`
`
`GLEN J. LERNER,
`
`
`
`
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`
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` Opposer,
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` v.
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`
`
`
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`
`
`CLAREL JEAN-LOUIS JR.,
`
`
`
`
`
`
`
`
`
`
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` Applicant.
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`
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`Opposition No.
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`NOTICE OF OPPOSITION
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`
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`Opposer GLEN J. LERNER (hereinafter “Opposer”), an individual, believes he will be
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`damaged by registration of the mark CAR WRECK? GET CHECKED FOR A CHECK, shown
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`in Serial No. 97936849, filed May 15, 2023 (hereinafter the “Subject Mark”), by CLAREL
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`JEAN-LOUIS JR, (hereinafter “Applicant”), and published for opposition in the Official
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`Gazette of March 19, 2024. GLEN J. LERNER hereby opposes registration of the subject
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`application in International Class 044, on the following grounds:
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`1.
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`Opposer is a well known and highly successful attorney with a national reputation for
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`success in the legal profession and one of the largest advertisers of legal services in the
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`United States.
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`2.
`
`Opposer owns, among others, the following trademarks, including without limitation, all
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`right, title and interest in and to:
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`

`

`Notice of Opposition to Serial No. 97936849
`Mark: CAR WRECK? GET CHECKED FOR A CHECK
`Page 2
`
`
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` CAR WRECK GET A CHECK, U.S. Registration No. 4318769 for Legal
`services, namely, providing legal advice, counsel, and representation to individuals
`who have sustained a personal injury or damage to personal property in a motor
`vehicle accident in Class 45 (a mark which also has achieved the status of
`incontestable pursuant to the Federal Trademark Act);
`
`
`
`
`
`3.
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`IN A WRECK NEED A CHECK, U.S. Registration No. 4824793 for Legal
`services; Legal services in the field of personal injury and tort claims; Legal
`counseling and advice to others; Providing information to others on legal services;
`Providing information to others on legal services via the internet in Class 45 (a mark
`which also has achieved the status of incontestable pursuant to the Federal
`Trademark Act);
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`IN A WRECK? NEED A CHECK? U.S. Registration No. 4446411 for legal
`services in Class 45 (a mark which also has achieved the status of incontestable
`pursuant to the Federal Trademark Act);
`
`FROM WRECK TO CHECK, , U.S. Registration No. 6789718 for legal services
`in Class 45; and
`
`
`
` 
`
`
`
` 
`
`
`
` 
`
` TURN YOUR WRECK INTO A CHECK, U.S. Registration No. 6952116 for
`legal services in Class 45
`
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`(hereinafter collectively referred to as the “WRECK/CHECK Family of Marks”).
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`Opposer’s WRECK/CHECK Family of Marks are all fully valid and legally subsisting
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`and, Opposer has invested considerable time and resources in the development of its
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`trademarks, reputation, and goodwill.
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`4.
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`Opposer has used one or more of Opposer’s WRECK/CHECK Family of Marks in the
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`United States since at least as early as 1999, and long prior to any first use date which has
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`been or could be claimed by Applicant.
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`5.
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`Opposer has used all of the marks of Opposer’s WRECK/CHECK Family of Marks in the
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`United States, and the same have each and all come to possess a widely recognizable
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`reputation and favorable brand recognition. By virtue of Opposer’s widely successful
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`

`

`Notice of Opposition to Serial No. 97936849
`Mark: CAR WRECK? GET CHECKED FOR A CHECK
`Page 3
`
`
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`efforts and the expenditure of considerable sums for advertising and promotional
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`activities, and by virtue of the excellence of the services associated with Opposer’s
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`WRECK/CHECK Family of Marks, the same have also achieved a valuable reputation,
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`as well as the trust of its consumers.
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`6.
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`Applicant seeks to register the mark CAR WRECK? GET CHECKED FOR A CHECK
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`as a trademark for services in Class 044, as more fully set forth in the publication of the
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`Subject Mark in the Official Gazette of the United States Patent and Trademark Office on
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`March 19, 2024. The U.S. Trademark Application Serial No. 97936849 was filed on
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`May 15, 2023 (hereinafter “the Subject Application”).
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`7.
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`8.
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`Upon Information and belief, Applicant has not yet used the Subject Mark in commerce.
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`The Subject Application should be denied registration pursuant to Section 2(d) of the
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`Trademark Act on the basis of Opposer’s long standing rights and prior registrations and
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`application filings for Opposer’s WRECK/CHECK Family of Marks.
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`9.
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`The Subject Mark also so resembles Opposer’s WRECK/CHECK Family of Marks as to
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`be likely, when applied to the services of Applicant, to cause confusion, mistake, or to
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`deceive consumers as to the source, sponsorship, or approval of Applicant’s services,
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`thereby resulting in detriment to Opposer and its reputation.
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`10.
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`Alternatively, the registration of the Subject Mark as applied for would be a source of
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`damage, harm, and/or injury to Opposer and a source of likely confusion to Opposer’s
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`many clients who rely upon the reputation of the Opposer, the high quality of Opposer’s
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`services, as distinguished by Opposer’s WRECK/CHECK Family of Marks, and because
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`

`

`Notice of Opposition to Serial No. 97936849
`Mark: CAR WRECK? GET CHECKED FOR A CHECK
`Page 4
`
`
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`consumers may be caused to mistakenly attribute the source or sponsorship of
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`Applicant’s services to Opposer.
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`
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`
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`WHEREFORE, Opposer, believes that it will be harmed by said registration of the
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`Subject Mark and requests that this Opposition be sustained and registration be refused to
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`Applicant, and Opposer further seeks such other and further relief in the premises as may be
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`deemed just and proper.
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`The required filing fee is submitted herewith.
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`Opposer hereby appoints the undersigned in connection herewith.
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`Respectfully submitted,
`
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`
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`/JENNIFER L. WHITELAW/
`JENNIFER L. WHITELAW
`WHITELAW LEGAL GROUP
`Attorney for Opposer
`GLEN J. LERNER
`3838 Tamiami Trail North
`Suite 310
`Naples, Florida 34103
`Telephone: (239) 262-1001
`Facsimile: (239) 261-0057
`Email: ttabmail@whitelawfirm.com
`
`