Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA470596
`ESTTA Tracking number:
`05/03/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92055398
`Defendant
`The Cochran Firm, P.C.
`
`THE COCHRAN FIRM PC
`163 W MAIN STREET
`DOTHAN, AL 36301
`UNITED STATES
`Answer
`Thomas D. Foster
`foster@tdfoster.com
`/Thomas D. Foster/
`05/03/2012
`6511.001-01 20120503 ANSWER.pdf ( 12 pages )(39215 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`ESTTA470596
`ESTTA Tracking number:
`05/03/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92055398
`Defendant
`The Cochran Firm, P.C.
`
`THE COCHRAN FIRM PC
`163 W MAIN STREET
`DOTHAN, AL 36301
`UNITED STATES
`Answer
`Thomas D. Foster
`foster@tdfoster.com
`/Thomas D. Foster/
`05/03/2012
`6511.001-01 20120503 ANSWER.pdf ( 12 pages )(39215 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`Attorney Ref. No.: 6511.001-01
`______________________________
`Randy H. McMurray P.C.
` )
`Petitioner,
` )
` )
` )
` )
` )
` )
`The Cochran Firm, P.C.,
` )
`Registrant.
`______________________________ )
`
`v.
`
`
`
`
`
`
`
`
`
`
`Cancellation No. 92055398
`Reg. No. 2930153
`
`Mark: THE COCHRAN FIRM
`
`
`
`ANSWER TO CANCELLATION PETITION
`
`The Cochran Firm, P.C., (“Registrant”), hereby answers the Petition for Cancellation of
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`plaintiff, Randy H. McMurray P.C., (“Petitioner”), to Registrant’s trademark Registration No.
`
`2930153, as follows:
`
`Petition Paragraph No. 1
`
`Petitioner is the owner of valuable rights in the mark THE COCHRAN FIRM in
`connection with services similar or identical to those identified in the '153
`Registration, as well as of the business and goodwill connected therewith.
`
`
`Answer to Paragraph No. 1
`
`Denied
`
`Petition Paragraph No. 2
`
`Petitioner is a professional corporation organized under the laws of California
`comprising Randy H. McMurray, an individual and attorney. Petitioner's renown
`stemming from his many years or work, 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 Firm", as well as his continuing work with
`and management of the principal office in Los Angeles of the firm after the death
`of Mr. Cochran and formation of a new law partnership under the "The Cochran
`Firm Los Angeles" name (the "LA Partnership"), extends throughout Southern
`California and North America.
`
`
`
`6511.001-01
`
`−1−
`
`
`
`Answer to Paragraph No. 2
`
`Admitted that 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 claim of
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`renown is denied to the extent it calls for a subjective evaluation. Registrant is aware that
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`permission was given by the Registrant to the Petitioner and attorney Brian Dunn to form a new
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`law partnership under the name The Cochran Firm Los Angeles. In said partnership agreement as
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`amended and as duly executed by the petitioner it agrees and acknowledges in SECTION 1.02 of
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`the Agreement that "The name of the Partnership... shall be The Cochran Firm Los Angeles,
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`provided however, the name 'Cochran" is used by the Partnership under license from the
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`Cochran Firm and its partners, Samuel A. Cherry, Jr., J. Keith Givens and Jock Smith (the
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`National Firm). In the event such license expires or is revoked, the partnership shall adopt
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`another name."
`
`
`Petition Paragraph No. 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.
`
`
`
`Answer to Paragraph No. 3
`
`Admitted
`
`Petition Paragraph No. 4
`
`After the 2005 death of the original registrant, Johnnie Cochran, ownership of the
`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 THE COCHRAN FIRM mark, the rights of the Estate
`of Johnnie L. Cochran Junior (the "Estate") are believed to have extinguished at
`that time as a result of a naked assignment and non-use by the assignee, the
`Estate.
`
`
`6511.001-01
`
`−2−
`
`
`
`Answer to Paragraph No. 4
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`Admitted that ownership of the registration passed to Johnnie Cochran’s estate. Denied
`
`that the rights of the Estate to the registration were extinguished as a result of a naked
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`assignment and non-use by the assignee, the Estate.
`
`
`Petition Paragraph No. 5
`
`
`Notwithstanding the foregoing, in 2007, The Estate executed and had recorded in
`the U.S. Trademark Office an Assignment of its entire interest in the registration
`to Registrant.
`
`
`
`Answer to Paragraph No. 5
`
`Admitted that the Estate executed and had recorded in the U.S. Trademark Office an
`
`Assignment of its entire interest in the registration to Registrant. Denied that the rights of the
`
`Estate were extinguished as a result of a naked assignment and non-use by the assignee, the
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`Estate as intimated.
`
`
`Petition Paragraph No. 6
`
`
`On information and belief, neither Mr. Cochran nor his estate had in place any
`written or other license agreement governing the use of the THE COCHRAN
`FIRM mark by the law firm.
`
`
`
`Answer to Paragraph No. 6
`
`Denied
`
`
`Petition Paragraph No. 7
`
`
`On information and belief the business and goodwill in the THE COCHRAN
`FIRM mark were not transferred to the Estate. The assignment of rights in the
`subject mark of the '153 Reg. to Registrant was therefore a naked license, and the
`Registration is invalid.
`
`
`6511.001-01
`
`−3−
`
`
`
`Answer to Paragraph No. 7
`
`Denied
`
`
`Petition Paragraph No. 8
`
`
`
`
`
`
`
`
`Even if the foregoing assignment of the '153 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 firm, which has for several years
`operated as a California limited liability partnership under the name "The Cochran
`Firm Los Angeles". The parties have not emplaced terms governing good will in
`connection with the mark, or quality control; therefore there is no valid license
`that may be found to exist even implicitly between the parties, and the
`Registration is invalid.
`
`
`
`Answer to Paragraph No. 8
`
`Denied
`
`
`Petition Paragraph No. 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 the subject mark of the '153 Reg. to inure to Registrant.
`
`
`
`Answer to Paragraph No. 9
`
`Denied
`
`Petition Paragraph No. 10
`
`Petitioner and the LA Partnership are not and for many years have not been
`members of the Registrant's organization and/or professional corporation, and the
`parties to this proceeding are thus not part of one single firm, nor otherwise
`comprising a common entity, as such terms are commonly understood in the
`context of law practices.
`
`Answer to Paragraph No. 10
`
`Denied
`
`
`
`
`6511.001-01
`
`−4−
`
`
`
`
`Petition Paragraph No. 11
`
`
`On June 7, 2011, Registrant filed a Declaration of Continuing Use under Section
`8 in the '153 Reg. with a supporting specimen. According to the Declaration, the
`supporting specimen comprises "the Cochran firm brochure".
`
`
`Answer to Paragraph No. 11
`
`
`Admitted
`
`
`Petition Paragraph No. 12
`
`
`The specimen identifies a number of cities, including Los Angeles, as locations
`where Registrant maintains offices. However, the LA Partnership is a separate
`and distinct business organization from Registrant, as is borne out in the LA
`Partnership's Amended and Restated Partnership Agreement dated as of January I,
`2010, which does not identify Registrant nor any of its individual members as
`partners or members of the LA Partnership.
`
`
`
`Answer to Paragraph No. 12
`
`Admitted that the specimen identifies a number of cities, including Los Angeles , as
`
`locations where Registrant maintains offices but denies that it is a separate and distinct business
`
`organization as borne out by the express language of the "LA Partnership's Amended and
`
`Restated Partnership Agreement dated as of January 1, 2010" which specifically provides that
`
`the partnership operates "under license from The Cochran Firm” (your Registrant herein) with
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`said license extended under agreement of compliance with the operating provisions of the
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`Cochran Firm. The Cochran Firm Los Angeles operated as a Cochran Firm partner until January,
`
`2012.
`
`
`Petition Paragraph No. 13
`
`
`The specimen fraudulently misrepresents Registrant as a firm where "The
`Partners of The Cochran firm have won" a variety of impressive verdicts,
`
`
`6511.001-01
`
`−5−
`
`
`
`specifically: Eleven verdicts in excess of $100 Million; Over 36 verdicts in excess
`of $10 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 partners/shareholders have not obtained those results between them.
`
`
`Answer to Paragraph No. 13
`
`
`Denied
`
`
`
`Petition Paragraph No. 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, Houston,
`Huntsville, Jackson, Las Vegas, Los Angeles, Memphis, Miami, Minneapolis,
`Milwaukee, Mobile, New Orleans, New York, Philadelphia, Tuskegee, and
`Washington, DC.
`
`
`
`Answer to Paragraph No. 14
`
`Denied
`
`Petition Paragraph No. 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.
`
`
`
`Answer to Paragraph No. 15
`
`Denied
`
`Petition Paragraph No. 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
`COCHRAN 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 misrepresentative, tainting the Section 8
`Declaration of Use.
`
`−6−
`
`
`
`
`6511.001-01
`
`
`
`Answer to Paragraph No. 16
`
`Denied
`
`
`Petition Paragraph No. 17
`
`
`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.
`
`
`
`Answer to Paragraph No. 17
`
`Denied
`
`
`Petition Paragraph No. 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.
`
`
`
`Answer to Paragraph No. 18
`
`Denied
`
`Petition Paragraph No. 19
`
`Petitioner has developed strong trademark rights and goodwill in the THE
`COCHRAN FIRM mark since becoming the director and managing partner of the
`Los Angeles office after the death of Mr. Cochran. He has maintained and grown
`the practice since that time, operating in and from the Los Angeles office, which
`was the principal office of the 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 "THE COCHRAN FIRM".
`
`
`
`Answer to Paragraph No. 19
`
`
`Denied that Petitioner has developed strong trademark rights and goodwill in The
`
`Cochran Firm mark "since" becoming the managing partner after the death of Mr. Cochran.
`
`
`6511.001-01
`
`−7−
`
`
`
`Petitioner’s claim suggests incorrectly that Petitioner became the managing partner of the LA
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`Cochran office immediately following Mr. Cochran’s death in 2005. The petitioner has not been
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`the managing partner of the LA Cochran office since the death of Mr. Cochran. Registrant
`
`admits that the Los Angeles office of the Cochran Firm was an office maintained by the
`
`Registrant for the last seven years of Mr. Cochran's life and had been maintained by Mr. Cochran
`
`for a number of years prior thereto. Registrant is without sufficient knowledge to form a belief as
`
`to the truthfulness of the claim that consumers regard the LA office as the principal location of
`
`the Cochran Firm so this claim is denied.
`
`
`Petition Paragraph No. 20
`
`
`Petitioner first learned of the '153 Registration when, on February 6, 2012,
`Registrant sent Petitioner a threatening letter demanding Petitioner cease and
`desist use of THE COCHRAN FIRM mark, notwithstanding the good will that
`has inured to Petitioner over the course of the past several years of Petitioner's
`and the LA Partnership's use.
`
`
`
`Answer to Paragraph No. 20
`
`Denied. Petitioner had at least constructive notice of the Registrant's claim of ownership
`
`rights to the registered mark well prior to February 6, 2012 since the THE COCHRAN FIRM
`
`mark issued on the Principal Register on March 8, 2005. Further, by virtue of the express
`
`language of the LA Partnership’s Amended and Restated Partnership Agreement the Petitioner
`
`has duly acknowledged the Registrants’ ownership of the rights associated with the use of the
`
`−8−
`
`Cochran name in its practice.
`
`///
`
`
`
`
`6511.001-01
`
`
`
`Petition Paragraph No. 21
`
`
`Registrant does not have valid and enforceable rights in the THE COCHRAN
`FIRM mark as a result of the naked assignment and/or naked licensing of the
`mark by Registrant and/or its predecessor(s) in interest, inter alia.
`
`
`
`Answer to Paragraph No. 21
`
`Denied
`
`
`Petition Paragraph No. 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 THE
`COCHRAN 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.
`
`
`
`Answer to Paragraph No. 22
`
`Denied
`
`
`
`23.
`
`Registrant requests that the Board dismiss this Cancellation and grant final judgment in
`
`RELIEF REQUESTED
`
`favor of Registrant, in entirety.
`
`AFFIRMATIVE DEFENSES
`
`FIRST AFFIRMATIVE DEFENSE
`
`24.
`
`The Petition for Cancellation, and each claim therein, fails to assert facts sufficient to
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`constitute grounds for Cancellation.
`
`
`
`SECOND AFFIRMATIVE DEFENSE
`
`Each of Petitioner's claims is barred by the doctrine of laches.
`
`25.
`
`6511.001-01
`
`−9−
`
`
`
`THIRD AFFIRMATIVE DEFENSE
`
`26.
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`Each of Petitioner's claims is barred by the doctrine of estoppel.
`
`
`
`FOURTH AFFIRMATIVE DEFENSE
`
`27.
`
`Each of Petitioner's claims is barred by the doctrine of waiver.
`
`
`
`FIFTH AFFIRMATIVE DEFENSE
`
`28.
`
`Each of Petitioner's claims is barred by the doctrine of acquiescence.
`
`
`
`SIXTH AFFIRMATIVE DEFENSE
`
`29.
`
`Petitioner has failed to plead facts sufficient to show an ownership interest in the
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`trademark in question.
`
`
`
`ADDITIONAL AFFIRMATIVE DEFENSES
`
`30.
`
`Registrant hereby incorporates by reference those Affirmative Defenses enumerated in
`
`Rule 8 of the Federal Rules of Civil Procedure as if fully set forth at length herein. In the
`
`event further investigation or discovery reveals the applicability of any such defenses,
`
`Registrant reserves the right to seek leave to amend its Answer to specifically assert the
`
`same. Said Defenses are incorporated by reference for the specific purpose of not
`
`−10−
`
`waiving the same.
`
`///
`
`
`
`
`6511.001-01
`
`
`
`In view of the above allegations, Registrant requests that the Board dismiss this
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`Cancellation and grant final judgment in favor of Registrant, in entirety.
`
`Respectfully submitted,
`
`Date: May 3, 2012
`
`
`
`TDFoster - Intellectual Property Law
`
`/Thomas D. Foster/
`Thomas D. Foster, Esq
`Registration No. 44,686
`Counsel for Registrant
`
`12626 High Bluff Drive, Suite 150
`San Diego, CA 92130
`
`Phone: 858.922.2170
`Fax: 858.722.1990
`foster@tdfoster.com
`
`
`
`.
`
`
`
`
`6511.001-01
`
`−11−
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true and correct copy of the foregoing “ANSWER TO
`CANCELLATION PETITION” was served on May 3, 2012 by first-class mail, postage prepaid,
`to Petitioner’s counsel addressed as follows:
`
`
`Victor K Sapphire
`Connolly Bove Lodge & Hutz LLP
`333 S Grand Avenue Suite 2300
`Los Angeles, CA 90071.
`
`
`Date: May 3, 2012
`
`
`
`/Thomas D. Foster/
`Thomas D. Foster, Esq.
`
`CERTIFICATE OF ELECTRONIC FILING
`
`I hereby certify that this correspondence is being transmitted by electronic mail to the Trademark
`Trial and Appeal Board, U.S. Patent and Trademark Office, via the ESTTA system, on the date
`identified below.
`
`Date: May 3, 2012
`
`/Thomas D. Foster/
`Thomas D. Foster, Esq.
`
`
`
`
`6511.001-01
`
`−12−
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