Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA463523
`ESTTA Tracking number:
`03/23/2012
`
`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
`
`Randy H. McMurray P.C.
`Citizenship
`Corporation
`333 S Grand Avenue, Suite 2300 c/o CBLH
`Los Angeles, CA 90071
`UNITED STATES
`
`California
`
`Attorney
`information
`
`Victor K. Sapphire, Esq.
`CONNOLLY BOVE LODGE & HUTZ LLP
`333 S GRAND AVE STE 2300
`LOS ANGELES, CA 90071
`UNITED STATES
`trademarks@cblh.com, vsapphire@cblh.com Phone:2137872523
`Registration Subject to Cancellation
`
`Registration No
`Registrant
`
`2930153
`COCHRAN FIRM, P.C., THE
`163 W. MAIN STREET
`DOTHAN, AL 36301
`UNITED STATES
`Goods/Services Subject to Cancellation
`
`Registration date
`
`03/08/2005
`
`Class 042. First Use: 1998/05/00 First Use In Commerce: 1998/05/00
`All goods and services in the class are cancelled, namely: Professional legal services
`
`Grounds for Cancellation
`
`Deceptiveness
`Torres v. Cantine Torresella S.r.l.Fraud
`Abandonment
`The registration is being used by, or with the
`permission of, the registrant so as to
`misrepresent the source of the goods or services
`on or in connection with which the mark is used.
`
`Trademark Act section 2(a)
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`Trademark Act section 14
`Trademark Act section 14
`
`Mark Cited by Petitioner as Basis for Cancellation
`
`U.S. Application/
`Registration No.
`Registration Date
`Word Mark
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`THE COCHRAN FIRM; THE COCHRAN FIRM LOS ANGELES
`
`

`
`Goods/Services
`
`PROFESSIONAL LEGAL SERVICES
`
`Attachments
`
`COCHRANcancel.pdf ( 6 pages )(954800 bytes )
`
`Certificate of Service
`
`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.
`
`Signature
`Name
`Date
`
`/victor sapphire/
`Victor K. Sapphire, Esq.
`03/23/2012
`
`

`
`
`
`INTIIF NITED §T TE
`
` PATENT AND TRADEMARK OEFIQZE
`BEF(' RF TI-IE ' R DEMARK TRIAL AND APPEAI BOA
`
`Randy H. McMurray P.C.,
`
`Cancellation No.
`
`Petitioner,
`
`V.
`
`The Cochran Firm. P.C.
`
`Registrant
`
`Registration No. 2,930,153
`
`Mark: THE COCHRAN FIRM
`
`
`
`PETITION FOR CANCELLATION
`
`Commissioner for Trademarks
`
`PO Box 145]
`
`Alexandria. VA 223134451
`
`Petitioner Randy ll. McMurray P.C. ('”MeMurray"), believes it will be damaged by the
`
`continued registration of the mark THE COCIIRAN FIRM in Registration No. 2,930,153 in
`
`connection with "professional legal services" in Intemational Class 42. The '153 Registration for
`
`the mark is allegedly owned by The Cochran Firm, P.C., a corporation with its business address
`
`at 163 W. Main Street, Dothan, Alabama 36301 ("Registrant"), and Petitioner hereby petitions
`
`for cancellation of said registration.
`
`As grounds for the cancellation, it is alleged that:
`
`Viclilr K. Sapphire, Esq.
`('.‘nIInnlIy Hove Imlge & llnlz LLP
`333 S. Grand Avenue. Suite 13'!!!)
`Los Angeles, California 90071
`(213) 1812523
`
`

`
`1.
`
`Petitioner is the owner of valuable rights in the mark T!-lI*l COCE-IRAN
`
`FIRM in connection with services similar or identical to those identified in the ‘I53 Registration,
`
`as well as of the business and goodwill connected therewith.
`
`2.
`
`Petitioner is a professional corporation organized under the laws of
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`California comprising Randy H. McMurray, an individual and attorney. Petitioner's renown
`
`stemming from his many years ofwork. including as an associate and partner of the renowned
`
`attorney Johnnie Cochran, and as a member of his law firm, which has long been known as "The
`
`Cochran I*‘irn1"_. as well as his continuing work with .and management of the principal office in
`
`Los Angeles ofthe tirm after the death of Mr. Cochran and formation ofa new law partnership
`
`under the "The Cochran Firm Los Angeles" name (the "LA Partnership"), extends throughout
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`Southern California and North America.
`
`3.
`
`On information and belief, Registrant is a professional corporation
`
`organized under the laws of Alabama with a principal address of 163 West Main Street, Post
`
`Office Box 927, Dothan, Alabama 36302.
`
`4.
`
`Afier the 2005 death of the original registrant. Johnnie Cochran,
`
`ownership ofthe registration appears to have passed to his estate. However. in the absence of an
`
`assignment and continuing license addressing the goodwill from the firm's ongoing activities
`
`under the TI lli COL‘ I [RAN FIRM mark. the rights of the Estate oflohnnie L. Cochran Junior
`
`(the "I*Istatc") are believed to have extinguished at that time as a result ofa naked assignment and
`
`non-use by the assignee. the Estate.
`
`5.
`
`Notwithstanding the foregoing, in 2007, The Estate executed and had
`
`recorded in the U Trademark Office an Assigmnenl of its entire interest in the registration to
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`Registrant.
`
`6.
`
`On information and belief, neither Mr. Cochran nor his estate had i11 place
`
`any written or other license agreement governing the use of the TI-IE COCHRAN FIRM mark by
`
`the law firm.
`
`7.
`
`On information and belief, the business and goodwill in the THF,
`
`COCHRAN FIRM mark were not transferred to the Estate. The assignment of rights in the
`
`Victor K. Sapphire, Esq.
`Kionnolly Rave Lmlge & Ilulz LLP
`333 South Grand Avenue, Suite ZJENI
`Les Augeies, California ‘)l]tJ7l
`(213) 7811523
`
`

`
`subject mark of the '1 53 Reg. to Registrant was therefore a naked license, and the Registration is
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`invalid.
`
`8.
`
`Even if the foregoing assignment of the 'l53 Reg. is valid, which
`
`Petitioner does not concede, there is no license agreement between Registrant and Petitioner,
`
`either as an individual member or as managing partner of the LA Partnership in the principal
`
`office of the late Mr. Cochran's timt, which has for several years operated as a California limited
`
`liability partnership under the name "The Cochran Firm Los Angcles". The parties have not
`
`emplaced terms governing good will in connection with the mark, or quality control; therefore
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`there is no valid license that may be found to exist even implicitly between the parties, and the
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`Registration is invalid.
`
`9.
`
`On information and belief, Registrant has no license agreements with any
`
`of the Registrant's other purported licensees/affiliates providing for good will generated by use of
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`the subject mark of the ‘I53 Reg. to inure to Registrant.
`
`10.
`
`Petitioner and the LA Partnership are not and for many years have not
`
`been members of the Registrant's organimtion andfor protessional corporation, and the parties to
`
`this proceeding are thus not part of one single tirm, nor otherwise comprising a common entity,
`
`as such terms are commonly understood in the context of law practices.
`
`I 1.
`
`On June 7, 201 l, Registrant filed a Declaration of Continuing Use under
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`Section 8 in the 'l 53 Reg. with a supporting specimen. According to the Declaration, the
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`supporting specimen comprises "the Cochran Firm brochure".
`
`12.
`
`The specimen identifies a number ofcities, including Los Angeles, as
`
`locations where Registrant maintains offices. However, the LA Partnership is a separate and
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`distinct business organization from Registrant, as is borne out in the LA Partnership's Amended
`
`and Restated Partnership Agreement dated as of January 1, 201 U, which does not identify
`
`Registrant nor any of its individual members as partners or members of the LA Partnership.
`
`13.
`
`The specimen fraudulently misrepresents Registrant as a firrn where "The
`
`Partners ot‘Thc Cochran Firm have won" a variety ofirnpressive verdicts, specifically:
`
`-
`
`Eleven verdicts in excess of $l 00 Million;
`
`Victor K. Sapphire, Esq.
`Connolly Bow: Lodge & Hut: L1,!’
`333 South ("Emmi Avenue. Suite 2300
`Les .-‘mgelrs, California *J(|'li'.F[
`1213) 787-2523
`
`

`
`-
`
`-
`
`Over 36 verdicts in excess of$lU Million;
`
`Hundreds of verdicts or settlements in excess of $1 Million;
`
`Over $1 Billion obtained in environmental settlements or verdicts,
`
`while in truth, Registrant's partncrsfsharcholders have not obtained those results between them.
`
`14.
`
`The specimen fraudulently misrepresents Registrant as "America's Law
`
`Firm", where consumers are led to believe the firm is operating in 21 cities throughout the
`
`country, in Atlanta, Birmingham, Chicago, Dallas, Detroit, Dothan, llouston, Huntsville,
`
`Jackson, Las Vegas. Los Angelcs, Memphis, Miami, Minneapolis, Milwaukee, Mobile, New
`
`Orleans, New York, Philadelphia. Tuskegee, and Washington, DC.
`
`15.
`
`On information and belief, Registrant is not organized as a law firm
`
`partnership or corporation with satellite offices in the cities identified in Paragraph 14, above.
`
`16.
`
`On information and belief, Registrant operates a naked licensing scheme
`
`with law practitioners in the cities identified in Paragraph 14 concerning use of the THE
`
`COG} IRAN FIRM mark, where said practitioners are not required to maintain any level of
`
`quality controlled or enforced by Registrant, therefore the statements in the specimen are false
`
`and fraudulently misrcpresentativc, tainting the Section 8 Declaration of Use.
`
`1?.
`
`Registrant has not won verdicts and settlements amounting to the sums
`
`alleged in Paragraph 13, above, either alone or through licensees operating under valid trademark
`
`licenses.
`
`18.
`
`Registrant does not operate as a single firm nor as an association through
`
`valid licenses in the 21 cities identified in its specimen supporting its Section 8 Declaration.
`
`19.
`
`Petitioner has developed strong trademark rights and goodwill in the Title‘
`
`COCTHRAN FIRM mark since becoming the director and managing partner of the Los Angeles
`
`ofiice after the death of Mr. Cochran. Ile has maintained and grown the practice since that time,
`
`operating in and from the Los Angeles office, which was the principal office ofthe firm during
`
`the period that Mr. Cochran was practicing and managing the firm, and the Los Angeles office is
`
`still regarded by consumers as the principal location of "TI-IE COCI-{RAN FIRM".
`
`Victor K. Srulpliire, Iisq.
`(.‘¢mnol|_v Bow: Lodge 8; Hut: I.l.P
`333 South Gram! :\vI.'nue. Suite 1530!]
`Les Angeli.-5. Califorania 90071
`(213) T8?-252.3
`
`

`
`20.
`
`Petitioner first learned of the ‘I 53 Registration when. on February 6, 2012.
`
`Registrant sent Petitioner a threatening letter demanding Petitioner cease and desist use of Tl-Iii
`
`COC1-IRAN FIRM mark, notwithstanding the good will that has inured to Petitioner over the
`
`course ofthe past several years of Petitioner's and the LA Partnership's use.
`
`2|.
`
`Registrant does not have valid and enforceable rights in the Tl-IE
`
`COCHRAN FIRM mark as a result of the naked assignment andfor naked licensing of the mark
`
`by Registrant and/or its predecessor(s) in interest, inter aha.
`
`22.
`
`Registrant's improper use of its fraudulent and invalid registration is
`
`threatening Petitioner's ability to conduct its business and is interfering with same. to the
`
`detriment of Petitioner and Petitioner's clients. Petitioner's lawful use of its Tl lli COCI-[RAN
`
`FIRM mark will be impaired by continued registration of Registrant's mark and thus, Petitioner
`
`believes it will be damaged by the continuance of registrant's registration.
`
`WI-IEREFORE, in accordance with Section 13 of the Trademark Act (15 U.S.C.
`
`Section 1063), Petitioner prays that this Cancellation be sustained and that Registration No.
`
`2,930,153 be cancelled.
`
`Respectfully submitted.
`
`Dated:
`
`L'?/
`
`By:
`
`V
`
`_
`
`l
`
`Victor K. Sapphire
`Attorneys for Petitioner
`COl\lNOl..I..Y BOVI3 I.0I')GI~l & HUT7. LLP
`
`333 S. Grand Avenue. Suite 2300
`
`Los Angeles, California 90071
`
`(213) 787-2500
`
`Victor K. Sapphire. Est].
`(Tormully Rave Ledge & Ilntr. LLP
`.333 Smith Grand Avenue, Suite 23%
`Los A ngeles, California 90071
`(213) 737-2523
`
`

`
` CE
`
`It is hereby certified that a true copy of the foregoing PE£'l"lTION TO CANCl.~lL is being
`transmitted via tirst~class mail addressed to the Registrant as follows:
`
`The Cochran Firm, PC.
`163 W. Main Street
`
`Dothan, Alabama 36301
`
`Dated: _
`
`f
`
`I
`J /4!
`
`By
`
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`
`Victor K. Sapphire. Esq.
`(‘onnnlly Bcwe Lmlge & llnlz LLP
`33.} South Grand Avenue, Suite 2300
`Les Angeles. California 90071
`[213] 737-2523