Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA451622
`ESTTA Tracking number:
`01/17/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Petition for Cancellation
`
`Notice is hereby given that the following party requests to cancel indicated registration.
`Petitioner Information
`
`Name
`Entity
`Address
`
`Laurie Williams
`Individual
`14304 Gate Dancer Lane
`Boyds, MD 20841
`UNITED STATES
`
`Citizenship
`
`UNITED STATES
`
`Attorney
`information
`
`Travis Tunnell
`Anderson Dailey LLP
`2002 Summit Blvd NE Suite 1250
`Atlanta, GA 30319
`UNITED STATES
`tunnell@andersondailey.com, tunnell@gmail.com Phone:404-442-1810
`Registration Subject to Cancellation
`
`Registration No
`Registrant
`
`3933108
`Columbus Bar Association
`Suite 1100 175 South Third Street
`Columbus, OH 43215
`UNITED STATES
`Goods/Services Subject to Cancellation
`
`Registration date
`
`03/15/2011
`
`Class 035. First Use: 2010/09/20 First Use In Commerce: 2010/09/20
`All goods and services in the class are cancelled, namely: providing a searchable database directory
`listing of lawyers via a global computer network
`
`Grounds for Cancellation
`
`Torres v. Cantine Torresella S.r.l.Fraud
`Priority and likelihood of confusion
`
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`Trademark Act section 2(d)
`
`Marks Cited by Petitioner as Basis for Cancellation
`
`U.S. Application
`No.
`Registration Date
`
`78013019
`
`NONE
`
`Word Mark
`
`LAWYERFINDER
`
`Application Date
`
`06/16/2000
`
`Foreign Priority
`Date
`
`NONE
`
`
`ESTTA451622
`ESTTA Tracking number:
`01/17/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Petition for Cancellation
`
`Notice is hereby given that the following party requests to cancel indicated registration.
`Petitioner Information
`
`Name
`Entity
`Address
`
`Laurie Williams
`Individual
`14304 Gate Dancer Lane
`Boyds, MD 20841
`UNITED STATES
`
`Citizenship
`
`UNITED STATES
`
`Attorney
`information
`
`Travis Tunnell
`Anderson Dailey LLP
`2002 Summit Blvd NE Suite 1250
`Atlanta, GA 30319
`UNITED STATES
`tunnell@andersondailey.com, tunnell@gmail.com Phone:404-442-1810
`Registration Subject to Cancellation
`
`Registration No
`Registrant
`
`3933108
`Columbus Bar Association
`Suite 1100 175 South Third Street
`Columbus, OH 43215
`UNITED STATES
`Goods/Services Subject to Cancellation
`
`Registration date
`
`03/15/2011
`
`Class 035. First Use: 2010/09/20 First Use In Commerce: 2010/09/20
`All goods and services in the class are cancelled, namely: providing a searchable database directory
`listing of lawyers via a global computer network
`
`Grounds for Cancellation
`
`Torres v. Cantine Torresella S.r.l.Fraud
`Priority and likelihood of confusion
`
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`Trademark Act section 2(d)
`
`Marks Cited by Petitioner as Basis for Cancellation
`
`U.S. Application
`No.
`Registration Date
`
`78013019
`
`NONE
`
`Word Mark
`
`LAWYERFINDER
`
`Application Date
`
`06/16/2000
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 042. First use: First Use: 1996/04/30 First Use In Commerce: 1996/05/31
`Legal resource, advertising, Internet Marketing
`
`U.S. Application
`No.
`Registration Date
`
`85484175
`
`NONE
`
`Word Mark
`Design Mark
`
`LAWYERFINDER
`
`Application Date
`
`11/30/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 1997/04/30 First Use In Commerce: 1997/05/31
`Providing a searchable online advertising website and informational guide
`featuring the goods and services of other vendors via the internet in the field of
`law
`
`Attachments
`
`78013019#TMSN.gif ( 1 page )( bytes )
`85484175#TMSN.jpeg ( 1 page )( bytes )
`Petition To Cancel.pdf ( 10 pages )(49781 bytes )
`Williams Petition to Cancel Exhibits.pdf ( 64 pages )(4671329 bytes )
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Certificate of Service
`
`Signature
`Name
`
`/Travis Tunnell/
`Travis Tunnell
`
`
`
`Date
`
`01/17/2012
`ow/2012
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the matter of trademark Registration No. 3,933,108
`For the mark: LAWYERFINDER.COM
`Date registered: October 5, 2010
`
`
`JAMES WILLIAMS and LAURIE
`
`WILLIAMS.
`
`
`
`
`
`
`
`
`
`
`
`Petitioners
`
`
`
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`
`
`COLUMBUS BAR ASSOCIATION
`
`
`
`
`
`
`
`Registrant
`
`
`
`
`:
`:
`:
`:
`:
`:
`:
`:
`:
`:
`
`
`
`
`
`Cancellation No.:_______________
`
`PETITION TO CANCEL
`
`PETITION TO CANCEL
`
`
`
`James and Laurie Williams (“Petitioners”) have been and believe they will continue to be
`
`damaged by the continued registration of the mark LAWYERFINDER.COM ("the Mark")
`
`shown in United States Trademark Registration No. 3,933,108 ("the Registration"), which
`
`according to the United States Patent and Trademark Office's ("USPTO") website, was filed on
`
`September 29, 2010 and registered on March 15, 2011, and hereby petition for cancellation of
`
`this Registration.
`
`As grounds for cancellation, Petitioners allege:
`
`I. The Parties.
`
`
`1. Petitioners, James and Laurie Williams, are publishers of the website
`
`www.lawyerfinder.com, and their address is 14304 Gate Dancer Lane, Boyds, Maryland 20841.
`
`2.
`
` The name and address of the current owner of U.S. Registration No 3,933,108 for
`
`LAWYERFINDER.COM is the Columbus Bar Association ("Registrant"), located at 175 South
`
`Third Street, Suite 1100, Columbus, Ohio 43215.
`
`
`
`1
`
`
`
`II. The Registration: LAWYERFINDER.COM
`
`
`3. Petitioners incorporate the above paragraphs of Petitioners’ grounds of cancellation
`
`against Registrant and makes such paragraphs a part hereof.
`
`4. Registrant represented in its application that it used the Mark
`
`LAWYERFINDER.COM in connection with “providing a searchable database directory listing
`
`of lawyers via a global computer network", in International Class 35, and represented that its first
`
`use of the Mark in commerce with said goods and services was on September 20, 2010. See
`
`Exhibit A.
`
`
`
`III. Petitioners’ Mark And Services: LAWYERFINDER and www.layerfinder.com
`
`5.
`
`Petitioners incorporate the above paragraphs of Petitioners’ grounds of
`
`cancellation against Registrant and makes such paragraphs a part hereof.
`
`6.
`
`Petitioners are owners of the common law mark “LAWYERFINDER,” which
`
`they have used in commerce since May 31, 1997.
`
`7.
`
`Petitioners own and operate a website known as “LAWYERFINDER™”, which
`
`is located at the domain www.layerfinder.com. See Exhibit B.
`
`8.
`
`Petitioners’ LAWYERFINDER website provides users with a searchable
`
`directory of advertisements featuring lawyers and law firms, and it also offers a number of legal
`
`informational articles and other services.
`
`9. On June 16th, 2000 Petitioners filed a trademark application, Serial No. 78013019,
`
`for the mark LAWYERFINDER. However, this application was ultimately abandoned after
`
`Petitioners failed to timely respond to an office action sent by the Examining Attorney. See
`
`Exhibit C.
`
`
`
`2
`
`
`
`10.
`
`Petitioners’ services are widely used in the United States by individuals
`
`attempting to locate legal counsel and by attorneys wishing to advertise their practices.
`
`11.
`
`Petitioners have invested substantial financial and temporal resources to develop,
`
`market and maintain their LAWYERFINDER mark.
`
`12.
`
`Over the years, Petitioners have continuously improved the layout and features of
`
`the www.lawyerfinder.com site, as shown on the web-pages attached as Exhibit D.
`
`13.
`
`Through widespread and continuous use, Petitioners’ LAWYERFINDER mark
`
`has acquired an excellent reputation and is a valuable asset of Petitioners.
`
`14.
`
`Petitioners’ LAWYERFINDER mark is distinctive of Petitioners’ services and
`
`has become widely and favorably known in the minds of the public as identifying the source of
`
`their services.
`
`15.
`
`As a direct and proximate result of Petitioners long usage and promotion of their
`
`services in interstate commerce, Petitioners owns valuable goodwill symbolized by the
`
`“LAWYERFINDER” trademark.
`
`16.
`
`Registrant’s LAWYERFINDER.COM registration is identical or confusingly
`
`similar to petitioners’ pending trademark application, Serial No. 85484175, for the mark
`
`LAWYERFINDER. See Exhibit E.
`
`17.
`
`Petitioner’s trademark application for LAWYERFINDER was filed in connection
`
`with “providing a searchable online advertising website and informational guide featuring the
`
`goods and services of other vendors via the internet in the field of law,” in International Class 35.
`
`18.
`
`The services listed in Registrant’s LAWYERFINDER.COM Registration are
`
`either identical or closely related to Petitioners’ Goods.
`
`
`
`
`
`3
`
`
`
`IV. Claims.
`
`A. Lanham Act § 2(d): Prior Adoption and Use and Likelihood of Confusion.
`
`19.
`
`Petitioners incorporate the above paragraphs of Petitioners’ grounds of
`
`cancellation against Registrant and makes such paragraphs a part hereof.
`
`20.
`
`Petitioners’ first use of their mark LAWYERFINDER, in connection with their
`
`services, preceded the first use date indicated in the Registration by more than a decade.
`
`21.
`
`Petitioners’ use of their domain “lawyerfinder.com” preceded Registrant's use of
`
`the Registration LAWYERFINDER.COM by more than a decade.
`
`22.
`
`The marks at-issue of both Registrant and Petitioners are nearly identical. Both
`
`marks contain the term "LAWYERFINDER" and this term is a salient part of both marks.
`
`23.
`
`Registrant’s LAWYERFINDER.COM registration is identical or confusingly
`
`similar to Petitioners’ domain www.lawyerfinder.com.
`
`24.
`
`25.
`
`26.
`
`The services marketed by Registrant and Petitioners are highly similar.
`
`On information and belief, the channels of trade used by the parties are analogous.
`
`On information and belief, the services of the parties are sold to and marketed to
`
`the same or a similar class of purchasers.
`
`27.
`
`In view of the similarity of the respective marks, the commonality in
`
`characteristics of end-users, and the related nature of the goods described in the registrations of
`
`the respective parties, it is alleged that Registrant’s mark so resembles Petitioners’ trademark
`
`previously used in the United States, and not abandoned, so as to likely cause confusion, or to
`
`cause mistake, or to deceive.
`
`28.
`
`Accordingly, Petitioners asks that the Registration be canceled and removed from
`
`the principal register.
`
`
`
`4
`
`
`
`B. Lanham Act § 2(a): False Suggestion of a Connection of Registrant’s Mark with
`Petitioners
`
`29.
`
`Petitioners incorporate the above paragraphs of Petitioners’ grounds of
`
`cancellation against Registrant and makes such paragraphs a part hereof.
`
`30.
`
`Petitioners market information about their LAWYERFINDER services to the
`
`public at considerable cost.
`
`31.
`
`As part of their marketing efforts, Petitioners have developed considerable brand
`
`recognition for their Mark and have used their Mark in commerce to create an association
`
`between their Mark and the services they offer.
`
`32.
`
` Registrant has caused to be registered the mark “LAWYERFINDER.COM” that
`
`is nigh identical to Petitioners’ mark “LAWYERFINDER”, and is in fact identical to Petitioners’
`
`domain name, “www.lawyerfinder.com.”
`
`33.
`
` In view of the similarity of Registrant’s mark with Petitioners’ mark, and in view
`
`of the related nature of the uses thereof, it is alleged that Registrant’s mark consists of and
`
`comprises matter that may falsely suggest a connection with Petitioners.
`
` C. Fraud on the Patent and Trademark Office. – Knowledge of Prior Use
`
`34.
`
`Petitioners incorporate the above paragraphs of Petitioners’ grounds of
`
`cancellation against Registrant and makes such paragraphs a part hereof.
`
`35. When Registrant filed its Application, Registrant knew of should have known of
`
`Petitioners’ superior right to the “LAWYERFINDER™” mark and the prior existence of their
`
`www.lawyerfinder.com domain name, both of which were in active use for over a decade.
`
`5
`
`
`
`
`
`
`
`36.
`
`Registrant knew or should have known at the time it filed its declaration that it did
`
`not have exclusive rights to a mark consisting of a domain name, when said domain name is
`
`actively being used to market competing services, when it submitted its application to the United
`
`States Patent and Trademark Office.
`
`37.
`
`Registrant knew or should have known that Petitioners’ “LAWYERFINDER™”
`
`mark and their www.lawyerfinder.com domain name were identical or confusingly similar to
`
`Registrant’s LAWYERFINDER.COM mark when filing its application for the Registration.
`
`38.
`
`Registrant knew or should have known that registration of the
`
`LAWYERFINDER.COM mark would create a likelihood of confusion among consumers if the
`
`two parties used their marks contemporaneously.
`
`39.
`
`Registrant knew or should have known that the existence of Petitioners’ Marks
`
`was a material fact for the examiner, and yet knowingly failed to disclose the existence of
`
`Petitioners’ mark to the USPTO at the time of its application, and knowingly concealed such fact
`
`so as to mislead the examiner into believing that Registrant was entitled to registration on the
`
`Principal Register.
`
`40.
`
`Specifically, an authorized agent of Registrant, who knew or should have known
`
`that the statement was false, affirmed that it was “the owner of the mark sought to be registered”
`
`and also falsely affirmed that “no other person, firm, corporation, or association has the right to
`
`use the mark in commerce, either in the identical form thereof or in such near resemblance
`
`thereto as to be likely, when used on or in connection with the goods/services of such other
`
`person, to cause confusion, or to cause mistake, or to deceive.”
`
`41.
`
`Reasonably relying upon the truth of said false statement, the USPTO did grant
`
`said Registration on the Supplemental Register.
`
`
`
`6
`
`
`
`42.
`
`The continued registration of the subject mark of the Registration is causing
`
`injury to Petitioners’ rights in their mark, Petitioners investment in their mark, Petitioners’
`
`goodwill and business plans, and will continue to cause injury to Petitioners until the registration
`
`is cancelled.
`
`43.
`
`Registrant is not entitled to the continued registration of its mark, because
`
`Registrant committed fraud in the procurement of the Registration.
`
`D. Fraud on the Patent and Trademark Office – Mark Not In Use
`
`44.
`
`Petitioners incorporate the above paragraphs of Petitioners’ grounds of
`
`cancellation against Registrant and makes such paragraphs a part hereof.
`
`45.
`
`Registrant made a sworn declaration that it was using the Mark
`
`LAWYERFINDER.COM in connection with providing a searchable database directory listing of
`
`lawyers via a global computer network" in International Class 35, and represented that its first
`
`use of the Mark in commerce was September 20, 2010.
`
`46.
`
`On information and belief, Registrant has never used its mark in interstate
`
`commerce in connection with the goods and services identified in Reg. No. 3,933,108. Indeed,
`
`based on the results of an investigation it conducted, Petitioners assert that Registrant is not
`
`current selling, and has not previously sold the services identified in its application in the United
`
`States in conjunction with the LAWYERFINDER.COM mark, in spite of representations it made
`
`to the USPTO to the contrary.
`
`47.
`
`In its application Registrant provided a specimen allegedly showing use of the
`
`mark “LAWERYFINDER.COM.” Registrant identified the specimen as “showing the mark as
`
`used in commerce on or in connection with any item in the class of listed goods and/or services,
`
`consisting of a(n) digital copy of flyer.”
`
`
`
`7
`
`
`
`48.
`
`Registrant’s flyer identifies “LAWYERFINDER.COM” as “the foremost online
`
`consumer resource for local lawyer and legal information”, and further states that the “site
`
`features two main areas, "Find an attorney," (featuring attorney profiles by area of law) and
`
`"Legal Tool Kit," where consumers may research their legal problem.”
`
`49.
`
`Registrant definitively identifies its product as an online website, however in the
`
`specimen, the only examples of the website are screen captures of a website bearing the
`
`trademark “COLUMBUSLAWYERFINDER.com” The Columbus Lawyer Finder site is located
`
`at the address, www.columbuslawyerfinder.com.
`
`50.
`
`The specimen shows the LAWYERFINDER.COM mark in use with goods or
`
`services that are similar, but are in fact different from the goods or services listed in the
`
`application. Accordingly, the specimen failed to show use of the LAWYERFINDER.COM mark
`
`in connection with the goods and services identified in the application.
`
`51.
`
`Upon information and belief, Registrant did not, and to date, still does not have
`
`searchable database directory listing of lawyers in use on the internet that is used in conjunction
`
`with the mark LAWYERFINDER.COM.
`
`52.
`
`Registrant knew or should have known that its failure to use the mark in
`
`commerce with the services recited in U.S. Registration No. 3,933,108 prior to the application
`
`was a material fact for the examiner, and yet failed to disclose the existence of Petitioners’ mark
`
`to the USPTO at the time of its application, and concealed such fact so to mislead the examiner
`
`into believing that Registrant was entitled to registration on the principal register.
`
`53.
`
`Registrant knew or should have known that its sworn statements that it was using
`
`the LAWYERFINDER.COM mark in interstate commerce in connection with all of the goods
`
`and services recited in Registration No. 3,933,108 prior to filing were false.
`
`
`
`8
`
`
`
`54.
`
`Registrant knew or should have known that its statements to the USPTO attesting
`
`it was using the LAWYERFINDER.COM mark in interstate commerce in connection with all of
`
`the goods and services recited in Registration No. 3,933,108 were material misrepresentations
`
`that were intended to deceive the USPTO into believing that Registrant’s Mark had met the
`
`statutory conditions required to grant a registration for the mark. Such statements were material
`
`because the USPTO would not have granted Registration No. 3,933,108 in the absence of
`
`Registrant attesting that it had met these requirements.
`
`55.
`
`The USPTO reasonably relied on the truth of such false statements and did in fact
`
`grant Registration No. 3,933,108.
`
`56.
`
`LAWYERFINDER.COM was not in lawful use by Registrant in commerce in
`
`connection with the services recited in U.S. Registration No. 3,933,108 prior to the application
`
`date as required by 15 U.S.C § 1091(a).
`
`57.
`
`Because "LAWYERFINDER.COM" was not in lawful use by Registrant in
`
`commerce in connection with the services, U.S. Registration No. 3,933,108 should be cancelled.
`
`
`
`V. Request For Relief.
`
`WHEREFORE, Petitioners asks that this Petition be granted, that the Registration be
`
`canceled and removed from the Supplemental Register.
`
`
`
`Please direct all correspondence relating to this matter to the attorneys for Petitioners at
`
`the address shown below.
`
`
`
`9
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`/Travis Tunnell/________
`
`Travis Tunnell
`Georgia Bar No. 238206
`Counsel for Applicant
`
`ANDERSON DAILEY LLP
`2002 Summit Boulevard
`Suite 1250
`Atlanta, Georgia 30319
`404 442 1800 (voice)
`404 442 1820 (data)
`tunnell@andersondailey.com
`
`
`10
`
`
`
`
`
`
`
`Exhibit A
`Exhibit A
`
`
`
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`LAWYERFINDER.COM
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`Goods and Services
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`IC 035. US 100 101 102. G & S: providing a searchable database directory listing of lawyers via a
`global computer network. FIRST USE: 20100920. FIRST USE IN COMMERCE: 20100920
`
`Standard Characters
`Claimed
`
`Mark Drawing Code
`
`(4) STANDARD CHARACTER MARK
`
`Serial Number
`
`85140933
`
`Filing Date
`
`September 29, 2010
`
`Current Filing Basis
`
`Original Filing Basis
`
`1A
`
`1A
`
`Date Amended to
`Current Register
`
`January 7, 2011
`
`Registration Number
`
`3933108
`
`Registration Date
`
`March 15, 2011
`
`Owner
`
`(REGISTRANT) Columbus Bar Association CORPORATION OHIO Suite 1100 175 South Third
`Street Columbus OHIO 43215
`
`Attorney of Record
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`Michael P. Mahoney
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`Prior Registrations
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`3699866
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`SERVICE MARK
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`Register
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`SUPPLEMENTAL
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`Live/Dead Indicator
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`LIVE
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`
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`Trademark Snap Shot Publication & Issue Review Stylesheet
`(Table presents the data on Publication & Issue Review Complete)
`
`SERIAL NUMBER
`
`85140933
`
`FILING DATE
`
`REG NUMBER
`
`0000000
`
`REG DATE
`
`09/29/2010
`
`03/15/2011
`
`OVERVIEW
`
`REGISTER
`
`INTL REG #
`
`SUPPLEMENTAL
`
`MARK TYPE
`
`SERVICE MARK
`
`N/A
`
`INTL REG DATE
`
`N/A
`
`109
`
`N/A
`
`NO
`
`NO
`
`N/A
`
`N/A
`
`TM ATTORNEY
`
`WHITE, RICHARD F
`
`L.O. ASSIGNED
`
`RUN DATE
`
`PUB DATE
`
`STATUS
`
`PUB INFORMATION
`
`02/08/2011
`
`N/A
`
`681-PUBLICATION/ISSUE REVIEW COMPLETE
`
`STATUS DATE
`
`02/05/2011
`
`LITERAL MARK ELEMENT
`
`LAWYERFINDER.COM
`
`DATE ABANDONED
`
`SECTION 2F
`
`SECTION 8
`
`SECTION 15
`
`RENEWAL FILED
`
`N/A
`
`NO
`
`NO
`
`NO
`
`NO
`
`DATE CANCELLED
`
`SECTION 2F IN PART
`
`SECTION 8 IN PART
`
`REPUB 12C
`
`RENEWAL DATE
`
`DATE AMEND REG
`
`01/07/2011
`
`FILED BASIS
`
`CURRENT BASIS
`
`AMENDED BASIS
`
`FILING BASIS
`
`1 (a)
`
`1 (b)
`
`44D
`
`44E
`
`66A
`
`NO BASIS
`
`YES
`
`NO
`
`NO
`
`NO
`
`NO
`
`NO
`
`1 (a)
`
`1 (b)
`
`44D
`
`44E
`
`66A
`
`NO BASIS
`
`1 (a)
`
`1 (b)
`
`44D
`
`44E
`
`YES
`
`NO
`
`NO
`
`NO
`
`NO
`
`NO
`
`NO
`
`NO
`
`NO
`
`NO
`
`STANDARD CHARACTER MARK
`
`YES
`
`LITERAL MARK ELEMENT
`
`LAWYERFINDER.COM
`
`MARK DATA
`
`
`
`MARK DRAWING CODE
`
`COLOR DRAWING FLAG
`
`4-STANDARD CHARACTER MARK
`
`NO
`
`PARTY TYPE
`
`NAME
`
`ADDRESS
`
`ENTITY
`
`CITIZENSHIP
`
`CURRENT OWNER INFORMATION
`
`10-ORIGINAL APPLICANT
`
`Columbus Bar Association
`
`Suite 1100
`175 South Third Street
`Columbus, OH 43215
`
`03-CORPORATION
`
`Ohio
`
`INTERNATIONAL CLASS
`
`035
`
`GOODS AND SERVICES
`
` DESCRIPTION TEXT
`
`providing a searchable database directory listing of lawyers
`via a global computer network
`
`GOODS AND SERVICES CLASSIFICATION
`
`INTERNATIONAL
`CLASS
`
`035
`
`FIRST USE
`DATE
`
`09/20/2010
`
`09/20/2010
`
`CLASS
`STATUS
`
`6-ACTIVE
`
`FIRST USE
`IN
`COMMERCE
`DATE
`
`MISCELLANEOUS INFORMATION/STATEMENTS
`
`CHANGE IN REGISTRATION
`
`NO
`
`PSEUDO MARK
`
`OWNER OF US REG NOS
`
`LAWYER FINDER
`
`3699866
`
`PROSECUTION HISTORY
`
`DATE
`
`ENT CD
`
`ENT
`TYPE
`
`DESCRIPTION
`
`ENT NUM
`
`02/05/2011
`
`02/05/2011
`
`01/07/2011
`
`01/07/2011
`
`01/07/2011
`
`01/07/2011
`
`01/07/2011
`
`PREV
`
`ALIE
`
`CNTA
`
`XAEC
`
`GNEN
`
`GNEA
`
`CNEA
`
`O
`
`A
`
`O
`
`I
`
`O
`
`F
`
`R
`
`LAW OFFICE PUBLICATION REVIEW COMPLETED
`
`ASSIGNED TO LIE
`
`APPROVED FOR REGISTRATION SUPPLEMENTAL
`REGISTER
`
`EXAMINER'S AMENDMENT ENTERED
`
`NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED
`
`EXAMINERS AMENDMENT E-MAILED
`
`EXAMINERS AMENDMENT -WRITTEN
`
`011
`
`010
`
`009
`
`008
`
`007
`
`006
`
`005
`
`
`
`01/07/2011
`
`10/05/2010
`
`10/04/2010
`
`DOCK
`
`MPMK
`
`NWOS
`
`10/02/2010
`
`NWAP
`
`D
`
`O
`
`I
`
`I
`
`ASSIGNED TO EXAMINER
`
`NOTICE OF PSEUDO MARK MAILED
`
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED
`IN TRAM
`
`NEW APPLICATION ENTERED IN TRAM
`
`004
`
`003
`
`002
`
`001
`
`CURRENT CORRESPONDENCE INFORMATION
`
`ATTORNEY
`
`CORRESPONDENCE ADDRESS
`
`Michael P. Mahoney
`
`MICHAEL P. MAHONEY
`BAILEY CAVALIERI LLC
`10 W BROAD ST STE 2100
`COLUMBUS, OH 43215-3455
`
`DOMESTIC REPRESENTATIVE
`
`NONE
`
`
`
`LaWyerFinder.c0m
`
`
`
`Trademark Snap Shot Amendment & Mail Processing Stylesheet
`(Table presents the data on Amendment & Mail Processing Complete)
`
`SERIAL NUMBER
`
`85140933
`
`FILING DATE
`
`REG NUMBER
`
`0000000
`
`REG DATE
`
`09/29/2010
`
`N/A
`
`OVERVIEW
`
`REGISTER
`
`INTL REG #
`
`SUPPLEMENTAL
`
`MARK TYPE
`
`SERVICE MARK
`
`N/A
`
`INTL REG DATE
`
`N/A
`
`109
`
`N/A
`
`NO
`
`NO
`
`N/A
`
`N/A
`
`TM ATTORNEY
`
`WHITE, RICHARD F
`
`L.O. ASSIGNED
`
`PUB INFORMATION
`
`RUN DATE
`
`PUB DATE
`
`STATUS
`
`01/08/2011
`
`N/A
`
`680-APPROVED FOR PUBLICATON
`
`STATUS DATE
`
`01/07/2011
`
`LITERAL MARK ELEMENT
`
`LAWYERFINDER.COM
`
`DATE ABANDONED
`
`SECTION 2F
`
`SECTION 8
`
`SECTION 15
`
`RENEWAL FILED
`
`N/A
`
`NO
`
`NO
`
`NO
`
`NO
`
`DATE CANCELLED
`
`SECTION 2F IN PART
`
`SECTION 8 IN PART
`
`REPUB 12C
`
`RENEWAL DATE
`
`DATE AMEND REG
`
`01/07/2011
`
`FILED BASIS
`
`CURRENT BASIS
`
`AMENDED BASIS
`
`FILING BASIS
`
`1 (a)
`
`1 (b)
`
`44D
`
`44E
`
`66A
`
`NO BASIS
`
`YES
`
`NO
`
`NO
`
`NO
`
`NO
`
`NO
`
`1 (a)
`
`1 (b)
`
`44D
`
`44E
`
`66A
`
`NO BASIS
`
`1 (a)
`
`1 (b)
`
`44D
`
`44E
`
`YES
`
`NO
`
`NO
`
`NO
`
`NO
`
`NO
`
`NO
`
`NO
`
`NO
`
`NO
`
`STANDARD CHARACTER MARK
`
`YES
`
`LITERAL MARK ELEMENT
`
`LAWYERFINDER.COM
`
`MARK DATA
`
`
`
`MARK DRAWING CODE
`
`COLOR DRAWING FLAG
`
`4-STANDARD CHARACTER MARK
`
`NO
`
`PARTY TYPE
`
`NAME
`
`ADDRESS
`
`ENTITY
`
`CITIZENSHIP
`
`CURRENT OWNER INFORMATION
`
`10-ORIGINAL APPLICANT
`
`Columbus Bar Association
`
`Suite 1100
`175 South Third Street
`Columbus, OH 43215
`
`03-CORPORATION
`
`Ohio
`
`INTERNATIONAL CLASS
`
`035
`
`GOODS AND SERVICES
`
` DESCRIPTION TEXT
`
`providing a searchable database directory listing of lawyers
`via a global computer network
`
`GOODS AND SERVICES CLASSIFICATION
`
`INTERNATIONAL
`CLASS
`
`035
`
`FIRST USE
`DATE
`
`09/20/2010
`
`09/20/2010
`
`CLASS
`STATUS
`
`6-ACTIVE
`
`FIRST USE
`IN
`COMMERCE
`DATE
`
`MISCELLANEOUS INFORMATION/STATEMENTS
`
`CHANGE IN REGISTRATION
`
`NO
`
`PSEUDO MARK
`
`OWNER OF US REG NOS
`
`LAWYER FINDER
`
`3699866
`
`PROSECUTION HISTORY
`
`DATE
`
`ENT CD
`
`ENT
`TYPE
`
`DESCRIPTION
`
`ENT NUM
`
`01/07/2011
`
`CNTA
`
`01/07/2011
`
`01/07/2011
`
`01/07/2011
`
`01/07/2011
`
`01/07/2011
`
`10/05/2010
`
`XAEC
`
`GNEN
`
`GNEA
`
`CNEA
`
`DOCK
`
`MPMK
`
`O
`
`I
`
`O
`
`F
`
`R
`
`D
`
`O
`
`APPROVED FOR REGISTRATION SUPPLEMENTAL
`REGISTER
`
`EXAMINER'S AMENDMENT ENTERED
`
`NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED
`
`EXAMINERS AMENDMENT E-MAILED
`
`EXAMINERS AMENDMENT -WRITTEN
`
`ASSIGNED TO EXAMINER
`
`NOTICE OF PSEUDO MARK MAILED
`
`009
`
`008
`
`007
`
`006
`
`005
`
`004
`
`003
`
`
`
`10/04/2010
`
`NWOS
`
`10/02/2010
`
`NWAP
`
`I
`
`I
`
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED
`IN TRAM
`
`NEW APPLICATION ENTERED IN TRAM
`
`002
`
`001
`
`CURRENT CORRESPONDENCE INFORMATION
`
`ATTORNEY
`
`CORRESPONDENCE ADDRESS
`
`Michael P. Mahoney
`
`MICHAEL P. MAHONEY
`BAILEY CAVALIERI LLC
`10 W BROAD ST STE 2100
`COLUMBUS, OH 43215-3455
`
`DOMESTIC REPRESENTATIVE
`
`NONE
`
`
`
`LaWyerFinder.c0m
`
`
`
`Trademark Snap Shot Publication Stylesheet
`(Table presents the data on Publication Approval)
`
`OVERVIEW
`
`SERIAL NUMBER
`
`85140933
`
`FILING DATE
`
`REG NUMBER
`
`0000000
`
`REG DATE
`
`09/29/2010
`
`N/A
`
`REGISTER
`
`INTL REG #
`
`SUPPLEMENTAL
`
`MARK TYPE
`
`SERVICE MARK
`
`N/A
`
`INTL REG DATE
`
`N/A
`
`109
`
`N/A
`
`NO
`
`NO
`
`N/A
`
`N/A
`
`TM ATTORNEY
`
`WHITE, RICHARD F
`
`L.O. ASSIGNED
`
`PUB INFORMATION
`
`RUN DATE
`
`PUB DATE
`
`STATUS
`
`01/08/2011
`
`N/A
`
`680-APPROVED FOR PUBLICATON
`
`STATUS DATE
`
`01/07/2011
`
`LITERAL MARK ELEMENT
`
`LAWYERFINDER.COM
`
`DATE ABANDONED
`
`SECTION 2F
`
`SECTION 8
`
`SECTION 15
`
`RENEWAL FILED
`
`N/A
`
`NO
`
`NO
`
`NO
`
`NO
`
`DATE CANCELLED
`
`SECTION 2F IN PART
`
`SECTION 8 IN PART
`
`REPUB 12C
`
`RENEWAL DATE
`
`DATE AMEND REG
`
`01/07/2011
`
`FILED BASIS
`
`CURRENT BASIS
`
`AMENDED BASIS
`
`FILING BASIS
`
`1 (a)
`
`1 (b)
`
`44D
`
`44E
`
`66A
`
`NO BASIS
`
`YES
`
`NO
`
`NO
`
`NO
`
`NO
`
`NO
`
`1 (a)
`
`1 (b)
`
`44D
`
`44E
`
`66A
`
`NO BASIS
`
`1 (a)
`
`1 (b)
`
`44D
`
`44E
`
`YES
`
`NO
`
`NO
`
`NO
`
`NO
`
`NO
`
`NO
`
`NO
`
`NO
`
`NO
`
`STANDARD CHARACTER MARK
`
`YES
`
`LITERAL MARK ELEMENT
`
`LAWYERFINDER.COM
`
`MARK DATA
`
`
`
`MARK DRAWING CODE
`
`COLOR DRAWING FLAG
`
`4-STANDARD CHARACTER MARK
`
`NO
`
`PARTY TYPE
`
`NAME
`
`ADDRESS
`
`ENTITY
`
`CITIZENSHIP
`
`CURRENT OWNER INFORMATION
`
`10-ORIGINAL APPLICANT
`
`Columbus Bar Association
`
`Suite 1100
`175 South Third Street
`Columbus, OH 43215
`
`03-CORPORATION
`
`Ohio
`
`INTERNATIONAL CLASS
`
`035
`
`GOODS AND SERVICES
`
` DESCRIPTION TEXT
`
`providing a searchable database directory listing of lawyers
`via a global computer network
`
`GOODS AND SERVICES CLASSIFICATION
`
`INTERNATIONAL
`CLASS
`
`035
`
`FIRST USE
`DATE
`
`09/20/2010
`
`09/20/2010
`
`CLASS
`STATUS
`
`6-ACTIVE
`
`FIRST USE
`IN
`COMMERCE
`DATE
`
`MISCELLANEOUS INFORMATION/STATEMENTS
`
`CHANGE IN REGISTRATION
`
`NO
`
`PSEUDO MARK
`
`OWNER OF US REG NOS
`
`LAWYER FINDER
`
`3699866
`
`PROSECUTION HISTORY
`
`DATE
`
`ENT CD
`
`ENT
`TYPE
`
`DESCRIPTION
`
`ENT NUM
`
`01/07/2011
`
`CNTA
`
`01/07/2011
`
`01/07/2011
`
`01/07/2011
`
`01/07/2011
`
`01/07/2011
`
`10/05/2010
`
`XAEC
`
`GNEN
`
`GNEA
`
`CNEA
`
`DOCK
`
`MPMK
`
`O
`
`I
`
`O
`
`F
`
`R
`
`D
`
`O
`
`APPROVED FOR REGISTRATION SUPPLEMENTAL
`REGISTER
`
`EXAMINER'S AMENDMENT ENTERED
`
`NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED
`
`EXAMINERS AMENDMENT E-MAILED
`
`EXAMINERS AMENDMENT -WRITTEN
`
`ASSIGNED TO EXAMINER
`
`NOTICE OF PSEUDO MARK MAILED
`
`009
`
`008
`
`007
`
`006
`
`005
`
`004
`
`003
`
`
`
`10/04/2010
`
`NWOS
`
`10/02/2010
`
`NWAP
`
`I
`
`I
`
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED
`IN TRAM
`
`NEW APPLICATION ENTERED IN TRAM
`
`002
`
`001
`
`CURRENT CORRESPONDENCE INFORMATION
`
`ATTORNEY
`
`CORRESPONDENCE ADDRESS
`
`Michael P. Mahoney
`
`MICHAEL P. MAHONEY
`BAILEY CAVALIERI LLC
`10 W BROAD ST STE 2100
`COLUMBUS, OH 43215-3455
`
`DOMESTIC REPRESENTATIVE
`
`NONE
`
`
`
`LaWyerFinder.c0m
`
`
`
`To:
`
`Columbus Bar Association (michael.mahoney@baileycavalieri.com)
`
`Subject:
`
`U.S. TRADEMARK APPLICATION NO. 85140933 -
`LAWYERFINDER.COM - N/A
`
`Sent:
`
`1/7/2011 4:18:33 PM
`
`Sent As:
`
`ECOM109@USPTO.GOV
`
`Attachments:
`
`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
`
`
`
`
`
`*85140933*
`
`
`
`GENERAL TRADEMARK INFORMATION:
`http://www.uspto.gov/main/trademarks.htm
`
`
`
`
`
`
`
` APPLICATION SERIAL NO. 85140933
`
`
`
` MARK: LAWYERFINDER.COM
`
`
`
`
` CORRESPONDENT ADDRESS:
` MICHAEL P. MAHONEY
` BAILEY CAVALIERI LLC
` 10 W BROAD ST STE 2100
` COLUMBUS, OH 43215-3455
`
` APPLICANT: Columbus Bar Association
`
` CORRESPONDENT’S REFERENCE/DOCKET
`NO: N/A
`
`
`
`
`
`
`
` CORRESPONDENT E-MAIL ADDRESS:
` michael.mahoney@baileycavalieri.com
`
`EXAMINER’S AMENDMENT
`
`ISSUE/MAILING DATE: 1/7/2011
`
`
`
`DATABASE SEARCH: The trademark examining attorney has searched the USPTO’s database of
`registered and pending marks and has found no conflicting marks that would bar registration under
`Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
`
`APPLICATION HAS BEEN AMENDED: In accordance with the authorization granted by Michael P.
`Mahoney on January 7, 2011, the trademark examining attorney has amended the application as indicated
`below. Ple
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