Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA849564
`
`Filing date:
`
`10/02/2017
`
`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 has filed a petition to cancel the registration indicated below.
`
`Petitioner Information
`
`Name
`
`Entity
`
`Address
`
`Attorney informa-
`tion
`
`Signal Funding, LLC
`
`Limited liability company
`
`Citizenship
`
`Delaware
`
`1780 Green Bay Road, Suite 202
`Highland Park, IL 60035
`UNITED STATES
`
`Judith L. Grubner
`Saul Ewing Arnstein & Lehr LLP
`161 N. Clark Street, Ste. 4200
`Chicago, IL 60601
`UNITED STATES
`Email: judith.grubner@saul.com, john.gekas@saul.com, joseph.kuo@saul.com
`Phone: 312-876-7100
`
`Registration Subject to Cancellation
`
`Registration No.
`
`3305665
`
`Registration date
`
`10/09/2007
`
`Registrant
`
`Oasis Legal Finance Operating Company, LLC
`Suite 500
`40 N. Skokie Blvd.
`Northbrook, IL 60062
`UNITED STATES
`
`Goods/Services Subject to Cancellation
`
`Class 036. First Use: 2003/07/15 First Use In Commerce: 2003/07/15
`All goods and services in the class are subject to cancellation, namely: Financial services, namely,
`lending money to law firms and providing cash advances to persons suing for damages arisingfrom
`personal injuries or other damagesto parties in litigation and other legal proceedings
`
`Grounds for Cancellation
`
`Fraud on the USPTO
`
`Trademark Act Section 14(3); In re Bose Corp.,
`580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir.
`2009)
`
`Related Proceed-
`ings
`
`Attachments
`
`Petition for Cancellation of OASIS, Reg. No. 4,889,677
`
`oasis legal finance cancellation petition.pdf(232352 bytes )
`oasis legal finance cencellation exA.pdf(710506 bytes )
`oasis legal finance cancellation exB.pdf(797689 bytes )
`oasis legal finance cancellation exC.pdf(1567762 bytes )
`
`

`

`Signature
`
`/judith l grubner/
`
`Name
`
`Date
`
`Judith L. Grubner
`
`10/02/2017
`
`

`

`IN THE UNITED STATE PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`CERTIFICATE OF TRANSMISSION
`I hereby certify that
`this correspondence is being
`transmitted by electronic mail by the ESTI'A system to the
`Trademark Trial and Appeal Board on the date shown below.
`Date: 100/2017
`fiudith lgrubnerl
`Judith L. Grubner
`
`
`
`Cancellation No.
`Registration No. 3,305,665
`MARK: OASIS LEGAL FINANCE
`
`In Re: Registration No. 3,305,665
`Intematlonal Class; 36
`Filing Date: December 13, 2006
`Registration Date: October 9’ 2007
`
`) )
`
`) )
`
`)
`)
`)
`
`) ) )
`
`SIGNAL FUNDING, LLC,
`
`Petitioner,
`
`v.
`
`OASIS LEGAL FINANCE
`OPERATING COMPANY, LLC,
`
`Respondent.
`
`PETITION FOR CANCELLATION
`
`Petitioner, SIGNAL FUNDING, LLC, a limited liability company duly organized and
`
`existing under the laws of Delaware (“Petitioner”), with an address of 1780 Green Bay Road,
`
`Suite 202, Highland Park Illinois 60035, believes that it will be damaged by the continued
`
`registration of the trademark OASIS LEGAL FINANCE (“Respondent’s Mark”) by Oasis Legal
`
`Finance Operating, LLC (“Respondent”), shown in US Trademark Registration No. 3,305,665
`
`(“Respondent’s Registration”) on the Principal Register of the US. Patent and Trademark Office
`
`(“USPTO”), as it relates to services in International Class 36, and hereby petitions to cancel
`
`Respondent’s Registration for those services
`
`. As grounds for this Cancellation, Petitioner states as follows:
`
`1.
`
`Respondent is a Delaware limited liability company whose address of record is
`
`Suite 500, 40 N. Skokie Blvd., Northbrook, Illinois 60062.
`
`

`

`2.
`
`Respondent filed its application for Respondent’s Mark (the “Application”) on
`
`December 13, 2006, for the following services in Class 36 (“Respondent’s Services”): “financial
`
`services, namely lending money to law firms and providing financial assistance and advances to
`
`parties in litigation and other legal proceedings.” Respondent’s Registration issued on October
`
`9, 2007, for the following amended services: “financial services, namely lending money to law
`
`firms and providing cash advances to persons suing for damages arising fiom personal injuries or
`
`other damages to parties in litigation and other legal proceedings.” A true copy of Respondent’s
`
`Application, Response to Office Action with signed Declaration, RegistratiOn Certificate, and
`
`TSDR record are attached as Exhibit A and incorporated herein.
`
`3.
`
`Respondent alleged a Section 1(a) use basis for Respondent’s Services, with a
`
`claimed first use in commerce date of July 15, 2003 (see Application, Exhibit A).
`
`4.
`
`The Application was filed without a signed Declaration. Registrant’s CFO, Ralph
`
`Shayne, signed the Declaration on May 24, 2007 (see Response to Office Action with
`
`Declaration, Exhibit A), declaring that “he/she believes the applicant to be the owner of the
`
`trademark/serviCe mark sought to be registered” and “that if the original application was
`
`submitted unsigned [as it was], and that all statements in the original application and this
`
`submission made of the declaration signer’s knowledge are true.”
`
`5.
`
`On October 8, 2013, Respondent filed its Combined Declaration of Use and
`
`Incontestability under Sections 8 and 15, signed by an officer, Richard Smolen. On August 4,
`
`2017, Respondent filed its Declaration of Use and Renewal Application under Sections 8 and 9,
`
`signed by its attorney, David Mart. Respondent continued to claim ownership of Respondent’s
`
`Mark in those Declarations.
`
`

`

`6'.
`
`On July 15, 2003, December 13, 2006, May 24, 2007, October 8, 2013, and
`
`August 4, 2017, Respondent was not the owner of Respondent’s Mark. The Mark was owned by
`
`Legal Recovery Finance LLC, which changed its name on September 12, 2003, to Oasis Legal
`
`Finance Group LLC (“Group”). Group was the owner of Respondent’s Mark until October
`
`2016. Group was the first user of the Oasis name for funding plaintiff litigation.
`
`7.
`
`'On October 5, 2016, Group assigned its rights to the marks Oasis and Oasis Legal
`
`Finance (“Oasis Marks”) to Petitioner. Group then changed its name to Oasis Shareholder
`
`Recovery LLC. Petitioner thus obtained rights in the Oasis Marks from the true owner, Group,
`
`Petitioner’s predecessor in interest. Petitioner, through a licensee, used the Oasis Marks from
`
`October 5, 2016 to May 2 2017. On May 2, 2017, Petitioner assigned its Oasis Marks to
`
`RaiseCo Holdings, LLC.
`
`8.
`
`On January 17, 2017, Respondent filed a Complaint captioned Oasis Legal
`
`Finance Operating Company LLC v. Gary Chodes, et at, Case No. l7-cv-00358 (the “Action”),
`
`in the U.S. District Court for the Northern District of Illinois, alleging that five defendants were
`
`infringing Respondent’s Mark and Registration. Petitioner was not named in that Complaint. On
`
`January 24, 2017, Respondent filed its First Amended Complaint, deleting three defendants. On
`
`February 21, 2017, Respondent filed its Second Amended Complaint, naming Petitioner as a
`
`defendant in the action and accusing Petitioner of inducing, encouraging, and/or partnering with
`
`other defendants, including Petitioner’s licensee and assignee, to infringe Respondent’s Mark
`
`and Registration. A true copy of the Second Amended Complaint, establishing Petitioner’s
`
`standing for this cancellation proceeding, is attached as Exhibit B and incorporated herein.
`
`9.
`
`On March 16, 2017, Petitioner filed its Answer to the Complaint, denying
`
`Respondent’s ownership of Respondent’s Mark and denying infringement.
`
`However,
`
`

`

`Respondent refuses to dismiss Petitioner from the Action and continues to accuse Petitioner of
`
`inducing infringement of Respondent’s Mark. A true copy of the Petitioner’s Answer to Second
`
`Amended Complaint is attached as Exhibit C and incorporated herein.
`
`10.
`
`Respondent’knowingly made the material false statement in its Application for
`
`Respondent’s Mark that it was the owner of Respondent’s Mark, intending thereby to deceive the
`
`USPTO, and it did deceive the USPTO into granting Respondent’s Registration. Without that
`
`knowing, material
`
`false statement, Respondent would not have received Respondent’s
`
`Registration.
`
`11.
`
`A registration obtained by a false claim of ownership is void ab initio. 37 CFR §
`
`2.71(d).
`
`12.
`
`If Respondent’s Registration remains on the Principal Register, Respondent has
`
`the exclusive right to use its Mark in connection with Respondent’s Services, and Respondent
`
`will continue to use Respondent’s Registration to accuse Petitioner of inducing infringement, a
`
`source of damage and injury to Petitioner.
`
`COUNT I
`
`FRAUD ON THE USPTO UNDER § 14131
`
`13.
`
`Petitioner adopts by reference the allegations of Paragraphs 1-11 as if specifically
`
`set forth herein in this Count I.
`
`14.
`
`Respondent was not the bona fide owner of Respondent’s Mark as of the filing
`
`date of its Application or at any time prior to'or after filing the Application.
`
`15.
`
`Respondent knew that its Declaration of bona fide ownership of Respondent’s
`
`Mark in the Application was false as of the filing date of the Application, the alleged first use in
`
`commerce date, and the date the Declaration was signed. That statement by Respondent was
`
`

`

`material to the registrability of Registrant’s Mark, in that the registration would not have issued
`
`Without it.
`
`16.
`
`Respondent made its material false statement with the intent to and for the
`
`purpose of deceiving the USPTO so that it would allow Respondent’s Registration to issue. That
`
`action by Respondent constitutes fraud on the USPTO under Trademark Act § 14(3), 15 U.S.C. §
`
`1064(3).
`
`17.
`
`If Respondent’s Registration remains on the Principal Register, Respondent has
`
`the exclusive right to use its Mark in connection with Respondent’s Services, and Respondent
`
`will continue to use Respondent’s Registration to accuse Petitioner of infiingement, a source of
`
`damage and injury to Petitioner.
`
`18.
`
`Accordingly, Petitioner is and will continue to be damaged by the continued
`
`registration of Respondent’s Mark and Respondent’s Registration should be cancelled as
`
`fraudulently obtained, pursuant to § 14(3).
`
`WHEREFORE, Petitioner prays that this cancellation be granted and that RegistratiOn
`
`No. 3,305,665 be cancelled.
`
`COUNT II
`
`RESPONDENT DOES NOT OWN THE REGISTERED MARK
`
`19.
`
`Petitioner adopts by reference the allegations of Paragraphs l-ll as if specifically
`
`set forth herein in this Count II.
`
`20.
`
`In a use-based application under 15 U.S.C. § 1051(a), only the owner of the mark
`
`may file the application to register the mark. If the filing entity is not the owner of the mark as
`
`of the filing date, the application is void ab initio. 37 CFR § 2.71(d).
`
`

`

`21.
`
`Respondent was not the owner of Respondent’s Mark, either at the time the
`
`Application was filed or at any time before or after that date; therefore, the Application was void.
`
`. 22.
`
`If Respondent’s Registration remains on the Principal Register, Respondent has
`
`the exclusive right to use its Mark in connection with Respondent’s Services, and Respondent
`
`will continue to use Respondent’s Registration to accuse Petitioner of infi'ingement, a source of
`
`damage and injury to Petitioner.
`
`23.
`
`Accordingly, Petitioner is and will continue to be damaged by the continued
`
`registration of Respondent’s Mark and Respondent’s Registration should be cancelled as void ab
`
`initio for
`
`lack of ownership of the Mark on the
`
`filing date of the Application.
`
`Respondent is being served a copy of this Petition for Cancellation and Exhibits A—C, at
`
`the correspondence address and e-mail address shown in the TSDR record for the Registration,
`
`as noted in the attached Certificate of Service.
`
`Petitioner hereby appoints Judith L. Grubner, Joseph M. Kuo, and Marcus S. Harris,
`
`members of the Bar of the State of Illinois, whose address is Saul Ewing Amstein & Lehr LLP,
`
`161 N. Clark Street, Suite 4200, Chicago, Illinois 60601, as its duly authorized agents and
`
`attorneys in the matter of the cancellation above identified, to prosecute said Cancellation, to
`
`transact all business in the U.S. Patent and Trademark Office and in the U.S. courts in connection
`
`with this Cancellation, to sign its name to all papers that may hereafter be filed in connection
`
`therewith and to receive all communications related to the same.
`
`Petitioner has paid the cancellation fee of$400.
`
`The Board may communicate with Petitioner’s attorneys by the e-mail addresses below.
`
`

`

`Date: October 2, 2017
`
`Respectfully submitted,
`
`SIGNAL FUNDING, LLC
`By:
`liudith l grubner/
`Judith L. Grubner
`
`Joseph M. Kuo
`Marcus S. Harris
`
`Saul Ewing Amstein & Lehr LLP
`161 North Clark Street, Suite 4200
`Chicago, Illinois 60601
`Phone: (312) 876-7100
`Fax: (312) 876—0288
`E-mail: Judith.Grubner
`
`saul.com
`
`Joseph.Kuo@saul.com
`Marcus.Harris@saul.com
`Attorneys for Petitioner
`
`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that on October 2, 2017, true and correct copies of the foregoing
`
`PETITION FOR CANCELLATION
`
`and
`
`EXHIBITS A-C
`
`were served on Respondent at its address of record:
`
`Oasis Legal Finance Operating, LLC
`Suite 500
`
`40 N. Skokie Blvd.
`
`Northbrook, IL 60062
`
`by first class mail, postage prepaid, and by e-mail at ipdocket@c1arkhill.com.
`
`/judith l grubner/
`
`One of the Attorneys for Petitioner
`
`

`

`EXHIBIT A
`
`

`

`Trademark/Service Mark Application, Principal Register
`
`Serial Number: 77063161
`
`Filing Date: 12/13/2006
`
`The table below presents the data as entered.
`
`SERIAL NUMBER
`
`‘ MARK INFORMATION
`
`. *MARK
`
`' s I‘ANDARD CHARAC'IERS
`
`USP'I o-GENERATED IMAGE
`
`LITERAL ELLMENI‘
`
`MARK STA I'EMENT
`
`' APPLICANT INFORMATION
`
`. *OW'NER or MARR
`
`- ‘STREET
`
`INTERNAL ADDRESS
`
`"CITY
`
`, *STATI‘
`
`_ (Required forU S applicants)
`,‘COUNTRY
`
`‘ ‘ZIP/POSTAL CODE
`. (Requued f0] U S appllcants only)
`
`LEGAL ENTITY INFORMATION
`
`, “"TYPE
`
`. *5 IA I‘E/COU'N I'RY WHERE LEGALLY ORGANIZED
`
`GOODS AND/0R SERVICES SECTION
`
`IN'I ERNATIO'NAL CLASS
`
`DESCRIPTION
`
`FILING BASIS
`
`FIRST USE ANYWHERE DATE
`
`”1151 USE IN COMMERCE DATE
`
`SPECIMEN
`IILE NAME(S)
`
`‘; 77063161
`
`1* OASIS LEGAL FINANCE
`
`YES
`
`. Lu...“ inuAurun‘__—m
`,3 YES
`OASIS LEGAL FINANCE
`
`
`
`: The mark consists of standard characters, without claim to any
`particular font, style, size, or color.
`
`
`, Oasis Legal Finance Operating Company, LLC
`
`630 Dundee Road
`
`3 Suite 340
`
`Northbrook
`
`Illinois
`
`3 United States
`
`' 60062
`
`bwptotm@bannerwitcof£com
`
`I LIMITED LIABILITY COMPANY
`
`: Delaware
`
`, 036
`
`Financial services, namely, lending money to law firms and
`providing financial assistance and advances to parties in
`
`, litigation and other legal proceedings.
`
`
`SECTION 1(a)
`
`- At least as early as 07/15/2003
`
`
`- At least as early as 07/15/2003
`
`,; \\TICRS\EXPORT\IMAGEOUT\7
`'j 70\63l\77063161\xm11\APPO 003.]PG
`
`. \\TICRS\EXPORT\IMAGEOUT\7
`
`BIT
`
`(Ibhhr
`
`

`

`SPECIMEN DESCRIPTION
`
`ATTORNEY INFORMATION
`
`NAME
`
`- ATTORNEY DOCKE r NINB'ER
`
`. FIRM NAME
`
`STREET
`
`‘ mraanm. spasms
`CITY
`
`STATE
`
`. cow I'RY
`
`2112111031 AL CODE
`
`= PHONE
`
`I‘AX
`
`- EMAIL ADDRESS
`
`70\631\77063161\xmll\APPO 004.J'PG
`
`' Scanned in pages from catalogues.
`
`. Helen Hill Minsker
`
`00698100005
`
`5 Banner & Witeoff, Ltd.
`‘ 10 South Wacker Drive
`
`Chicago
`
`Illinois
`
`United States
`
`60606
`
`. (312)463-5000
`
`3 (312)463-5001
`
`AUTHORIZED TO COMMUNICATE VIA EMAIL
`
`Yes
`
`Linda Kuczma, Julie Brown Ackerman, William J. Allen,
`'Matthew P. Becker, Phoebe Phillips Bower, Justin Busch,
`Marc S. Cooperman, Ted L. Field, Shawn P. Gorman, Michael
`’ J. Harris, Wendell W. Harris, Allen E. Hoover, Aimee Boss
`'3 Kolz, Michael L. Krashin, Erik S. Maurer, Timothy C. Meece,
`: Janice V. Mitrius, Paul J. Nykaza, Binal J. Patel, Thomas K.
`‘ Pratt, Robert H. Resis, Rebecca P. Rokos, Gregory G. Schlenz,
`Stephen L. Sheldon, Charles W. Shifley, Jason S. Shull,
`Richard S. Stockton, J. Pieter van Es, all of Whom are members
`
`f
`
`of the Bar of the State of Illinois; Robert F. Altherr who is a
`member of the Bar of the District of Columbia and State of
`
`Ohio; Elizabeth A. Almeter who is a member of the Bar of the
`State of New:r York; Mark T. Banner, Scott A. Burrow, David
`R. Gerk, Dale H. Hoscheit, all of whom are members of the
`Bar of the District of Columbia and State of Illinois; William
`W. Beckett, Steve S. Chang, Helen Hill Minskcr, William F.
`_ Rauchholz, all of whom are members of the Bar of the District
`' of Columbia; Jordan N. Bodner, Ross A. Dannenberg, Gary D.
`Fedorochko, John M. Fleming, Christopher R. Glembocki,
`: Anthony W. Kandare, Robert S. Kata, Christopher L. McKee,
`: Frederic M. Meeker, Joseph M. Potenza, Paul M. Rivard,
`; Christopher B. Roth, Benjamin C. Spehlmann, Franklin D.
`:Wolffe, Susan A. Wolffe, Bradley C. Wright, all of whom are
`5 members of the Bar of the District of Columbia and State of
`Virginia; James V. Callahan, Dale A. Malone, Jon 0. Nelson,
`all of whom are members of the Bar of the State of Illinois and
`
`; State of Massachusetts; Bradley F. Rademaker who is a
`member of the Bar of the State of Illinois and State of
`
`4 Wisconsin; Gregory J. Cohan, Judith Stone-Hulslander, who
`are members of the Bar of the State of Massachusetts; Jeffrey
`‘3 M. Cox who is a member of the Bar of the State of Illinois and
`1 State of Indiana; Thomas L. Evans who is a member of the Bar
`‘ of the District of Columbia and State of Oregon; William J.
`Fisher, Lisa M. Hemmendinger, Stephen C. Siu, all of whom
`
`. OTHER APPOIN I'ED ATTORNEY
`
`

`

`1 are members of the Bar of the District of Columbia and State
`: of Maryland; John P. Iwanicki and Sarah A. Kagan, who are
`' members of the Bar of the District of Columbia and State of
`i Massachusetts; Thomas H. Jackson who is a member of the
`. Bar of the District of Columbia and State ofNew Jersey;
`.3 William J. Klein who is a member of the Bar of the State of
`. Illinois and State of New Jersey; Chunhsi Andy Mu, who is a
`3 member of the Bar of the State of Virginia; Byron S. Kuzara
`1 who is a member of the Bar of the State of Oregon; Ernest V.
`: Linek who is a member of the Bar of the State of
`
`1, Massachusetts and State of New Jersey; Peter D. McDermott
`-' who is a member of the Bar of the State of Massachusetts and
`State of Michigan; Nina L. Medloek who is a member of the
`j Bar of the District of Columbia and State of Texas; Charles L.
`‘ Miller who is a member of the Bar of the State of Illinois and
`. State of Virginia; Darrell G. Mottley who is a member of the
`: Bar of the District of Columbia, State of New Jersey and State
`of Virginia; H. Wayne Porter who is a member (if the Bar of
`g the District of Columbia and State of Florida; Christopher J.
`: Renk who is a member of the Bar of the District of Columbia,
`State of Illinois and State of Minnesota; Stephen C. Siu who is
`.1 a member of the Bar of the State of Maryland; Joseph M.
`j Skerpon who is a member of the Bar of the District of
`'j Columbia and State of New York; and Sheldon W. Witcoff
`who is a member of the Bar of the District of Columbia, State
`g of Illinois and State of New York
`
`CORRESPONDENCE INFORMATION
`
`1mm
`111w NAME
`STREET
`INTERNAL menses
`
`.
`
`~
`
`'3 neienniu Minslter
`5 Banner & Witcoff, Ltd.
`; 1t; South VVacher Drive h
`
`. Suite 3000
`
`CITY
`5 MI E
`-- COUNIRY
`eminent
`. mom:
`FAX
`EMAIL ADDRESS
`1 AUTHORIZED T0 commwniavm EMAIL
`FEE INFORMATION
`
`NUMBER or CLASSES
`
`' Er}: PER CLASS
`
`IOTALI‘EE DUE
`
`SIGNATURE INFORMATION
`
`SIGNATURE
`
`SIGNA’IORY '5 NAME
`
`. SIGNA tom's POSITION
`
`: Chicago
`5 Illinoismmmmmmmmmmmmmm
`United States -
`W “““'—“" ______._____
`3252)453-5000M WWWWMW MMMMM __
`(3li)463-5001
`
`
`bwptonhn‘ébagnnerwwitcotlieom
`- Yes I .
`.
`I
`
`——
`
`M
`
`1
`
`325
`
`'325
`
`NOT PROVIDED
`
`1 NOT PROVIDED
`
`NOT PROVIDED
`
`

`

`DATE SIGNED
`
`FILING INFORMATION SECTION
`
`NOT PROVIDED
`
`SUBMIT DATE
`
`. TEAS STAMP
`
`Wed Dec 13 11:57:09 EST 2006
`
`’ USPTO/BAS—XICCXXXXXXXX-
`‘; 20061213115709242073-7706
`: 3161-3601b89a1697d62fd7fd
`
`j 45faSObd14a8-DA-1636-2006
`11213113802702865
`
`

`

`Trademark/Service Mark Application, Principal Register
`
`Serial Number: 77063161
`
`Filing Date: 12/13l2006
`
`To the Commissioner for Trademarks:
`
`MARK: OASIS LEGAL FINANCE (Standard Characters, see mark)
`The literal element of the mark consists of OASIS LEGAL FINANCE. The mark consists of standard characters, without claim to any particular
`font, style, size, or color.
`
`The applicant, Oasis Legal Finance Operating Company, LLC, a limited liability company legally organized under the laws of Delaware, having
`an address of Suite 340, 630 Dundee Road, Northbrook, Illinois, United States, 60062, requests registration of the trademark/service mark
`identified above in the United States Patent and Trademark Office on the Principal Register established by the Act of July 5, 1946 (15 U.S.C.
`Section 1051 et seq.), as amended.
`
`International Class 036: Financial services, namely, lending money to law firms and providing financial assistance and advances to parties
`in litigation and other legal proceedings.
`
`Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, or
`the applicant's predecessor in interest used the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C.
`Section 1051(a), as amended.
`
`In International Class 03 6, the mark was first usedat least as early as 07/15/2003, and first used in commerce at least as early as 07l1 512003, and
`is now in use in such commerce. The applicant is submitting or will submit one specimen for each ciass 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) Scanned in pages from catalogues.
`Specimen Filel
`Specimen File2
`
`The applicant hereby appoints Helen Hill Minsker and Linda Kuczma, Julie Brown Ackerman, William J. Allen, Matthew P. Becker, Phoebe
`Phillips Bower, Justin Busch, Marc S. Cooperman, Ted L. Field, Shawn P. German, Michael J. Harris, Wendell W. Harris, Allen B. Hoover,
`Aimee Boss Kolz, Michael L. Krashin, Erik S. Maurer, Timothy C. Meece, Janice V. Mitrius, Paul J. Nykaza, Binal J. Patel, Thomas K. Pratt,
`Robert H. Resis, Rebecca P. Rokos, Gregory G. Schlenz, Stephen L. Sheldon, Charles W. Shifley, Jason S. Shull, Richard S. Stockton, J. Pieter
`van Es, all of whom are members of the Bar of the State of Illinois; Robert F. Altherr who is a member of the Bar of the District of Columbia and
`State of Ohio; Elizabeth A. Almeter who is a member of the Bar of the State ofNew York; Mark T. Banner, Scott A. Bun-ow, David R. Gerk,
`Dale H. Hoschcit, all of whom are members of the Bar of the District of Columbia and State of. Illinois; William W. Beckett, Steve S. Chang,
`Helen Hill Minsker, William F. Rauchholz, all of whom are members of the Bar of the District of Columbia; Jordan N. Bodner, Ross A.
`Danncnberg, Gary D. Fedorochko, John M. Fleming, Christopher R. Glembocki, Anthony W. Kandare, Robert S. Katz, Christopher L. McKee,
`Frederic M. Meeker, Joseph M. Potenza, Paul M. Rivard, Christopher B. Roth, Benjamin C. Spehlmann, Franklin D. Wolffe, Susan A. Wolffe,
`Bradley C. Wright, all of whom are members of the Bar of the District of Columbia and State of Virginia; James V. Callahan, Dale A. Malone,
`Jon 0. Nelson, all ofwhom are members of the Bar of the State of Illinois and State of Massachusetts; Bradley F. Rademaker who is a member
`of the Bar of the State of Illinois and State of Wisconsin; Gregory J. Cohan, Judith Stone-Hulslander, who are members of the Bar of the State of
`Massachusetts; Jeffrey M. Cox who is a member of the Bar of the State of Illinois and State of Indiana; Thomas L. Evans who is a member of the
`Bar of the District of Columbia and State of Oregon; William J. Fisher, Lisa M. Hemmendinger, Stephen C. Siu, all of whom are members of the
`Bar of the District of Columbia and State of Maryland; John P. Iwanicki and Sarah A. Kagan, who are members of the Bar of the District of
`Columbia and State of Massachusetts; Thomas H. Jackson who is a member of the Bar of the District of Columbia and State ofNew Jersey;
`William J. Klein who is a member of the Bar of the State of Illinois and State of New Jersey; Chunhsi Andy Mu, who is a member of the Bar of
`the State of Virginia; Byron S. Kuzara who is a member of the Bar of the State of Oregon; Ernest V. Linek who is a member of the Bar of the
`State of Massachusetts and State of New Jersey; Peter D. McDermott who is a member of the Bar of the State of Massachusetts and State of
`Michigan; Nina L. Medlock who is a member of the Bar of the District of Columbia and State of Texas; Charles L. Miller who is a member of
`the Bar of the State of Illinois and State of Virginia; Darrell G. Mottley who is a member of the Bar of the District of Columbia, State of New
`Jersey and State of Virginia; H. Wayne Porter who is a member of the Bar of the District of Columbia and State of Florida; Christopher J. Renk
`who is a member of the Bar of the District of Columbia, State of Illinois and State of Minnesota; Stephen C. Siu who is a member of the Bar of
`the State of Maryland; Joseph M. Skerpon who is a member of the Bar of the District of Columbia and State of New York; and Sheldon W.
`Witcof‘f who is a member of the Bar of the District of Columbia, State of Illinois and State of New York of Banner & Witcoff, Ltd., Suite 3000,
`10 South Wacker Drive, Chicago, Illinois, United States, 60606 to submit this application on behalf of the applicant. The attorney
`docket/reference number is 00698700005.
`
`

`

`Correspondence Information: Helen Hill Minsker
`Suite 3000
`
`10 South Wacker Drive
`
`Chicago, Illinois 60606
`(3 1 2)463-5000(phone)
`(312)463-5001(fax)
`
`bwptotm@bannemritcofi‘.com (authorized)
`
`A fee payment in the amount of $325 will be submitted with the application, representing payment for l class(es).
`
`RAM Sale Number: 1636
`
`RAM Accounting Date: 12/13/2006
`
`Serial Number: 77063161
`Internet Transmission Date: Wed Dec 13 1 l :57:09 EST 2006
`TEAS Stamp: USPTO/BAS-XX)(.XX.XXX.XXX-20061213 1 157092
`42073 -77063 1 61 -3 601 b89a1697de2fd7fd45fa8
`0de4a8-DA—1636—20061213113802702865
`
`

`

`OASIS LEGAL FINANCE
`
`

`

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`Fri-3R)!
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`1
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`
`Response to Office Action
`
`The table below presents the data as entered.
`
`5 SERIAL NUMBER
`LAW OFFICE ASSIGNEI)“
`
`. MARK SECTION (no change)
`
`: 77063161
`LAW OFFICE 112
`
`.
`
`“
`
`A.RGUlVIENT(S)
`: Applicant submits this Supplemental Response for Application No. 77063161. Although the Examining Attorney did not mention it in the
`priority office action dated April 13,2007 (which Applicant responded to on May 19, 2007), Applicant notes that a signed Declaration1s
`'necessary for this application. The Declaration is filed with this response. It is believed that this application is now in condition for
`‘publication, and such action is reapectfully requested.
`SIGNATURE SECTION
`
`ORIGINAL PDF FILE
`
`(21);:ng PDT mm)
`
`SIGNA'I ORY'S NAME
`SIGNAIORY'S Posn ION
`: RESPONSE SIGNATURE
`SIGNA TORY‘S NAME
`SIGNAI‘ORY'S POSITION
`DATE SIGNED
`
`
`
`é HS 241486427-175340705 . OASIS._12df
`
`1 \\TICRS2\EXPORT13\770\631 \77063161\xm15\ROA0002.JP G
`
`i Ralph Shayne
`SChiefF-‘(inaneia‘l Officer
`[helen hill minskerl
`7
`.Helen Hill Minsker '
`
`ZA—tt—orj'w; (If—Hepard _._.. fl _ I - -
`' 06/221000?
`w—m '
`
`_
`
`‘
`
`AUTHORIZED SIGNA'Icar
`
`I YES
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`-
`
`-
`
`t
`
`TEAS sum
`
`1'7'JF1
`i V'
`
`‘. .|.'..
`\‘.i‘|‘.‘
`
`l-‘it.
`
`Fri Jun 22 18:03:38 EDT 2007
`
`j"£1"s§§5fa6fix.xmx§3€x‘.26— "m"
`5 07062218033 8065984470631
`; 61-3 70a74e3ea6a02da19d249
`l 64e3875f2794—N/A-NlA-2007
`‘ 0622175340705010
`
`---
`
`To the Commissioner for Trademarks:
`
`Response to Office Action
`
`Application serial no. 77063161 has been amended as follows:
`Argumenfls)
`
`

`

`In response to the substantiVe refusal(s), please note the following:
`
`Applicant submits this Supplemental Response for Application No. 77063161. Although the Examining Attorney did not mention it in the
`priority office action dated April 13, 2007 (which Applicant responded to on May 19, 2007), Applicant notes that a signed Declaration is
`necessary for this application. The Declaration is filed with this response. It is believed that this application is now in condition for publication,
`and such action is respectfully requested.
`
`Declaration Signature
`Original PDF file:
`HS 241486427—175340705 . 0ASIS.pdf
`Converted PDF file(s) (1 page)
`Signature Filel
`Signatory's Name: Ralph Shayne
`Signatory's Position: Chief Financial Officer
`
`Response Signature
`Signature: lhelen hill minsker/ Date: 06122/2007
`Signatory‘s Name: Helen Hill Minsker
`Signatory's Position: Attorney of Record
`
`The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which
`includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an
`associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not
`currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently
`filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to
`withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or
`Canadian attomey/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.
`
`Serial Number: '77063161
`Internet Transmission Date: Fri Jun 22 18:03:38 EDT 2007
`
`TEAS Stamp: USPTOfROA-XX.XXX.XX.XX-20070622180338065
`984-77063161-370a74e3ea6a02da19d24964c38
`75f2794-NlA-N/A-200706221753407050]0
`
`

`

`Mal-29. 200?
`
`8:59AM
`
`OASIS LEGAL FINANCE
`
`Response to Ofiee Action
`
`"0.525?
`
`P.
`
`2
`
`Pagez of3
`
`Declaration Signatui'e
`Ifthe applicant isseelcingreglotmtionunder Section 1(3) 311de Section 44 ofthe Tndemark Act, the
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