`
`
`
`Ferrell
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
`General Email: TTABInfo@uspto.gov
`
`October 27, 2023
`
`Concurrent Use No. 94003140
`
`Sparks Law, LLC (RI)
`(Application Serial No. 87709845)
`
`
`v.
`
`
`Sparks Law, LLC (GA)
`(Registration No. 5668170)
`(Application Serial No. 90188648)
`
`
`
`By the Trademark Trial and Appeal Board:
`
`This proceeding now comes before the Board for consideration of the parties’
`
`response, filed August 31, 2023, to the Board’s August 14, 2023 order (the Board’s
`
`“Previous Order”).
`
`In the Previous Order, the Board required the parties to (1) clarify whether both
`
`parties were claiming the State of New York as part of their areas of use; (2) inform
`
`the Board of their intention regarding the remainder of the United States with
`
`respect to each party’s area of use; and (3) amend the parties’ respective recitation of
`
`services, if desired.1
`
`
`1 5 TTABVUE 5-6. Citations to the concurrent use proceeding record refer to TTABVUE, the
`Board’s online docketing system. See Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6
`(TTAB 2014). Specifically, the number preceding “TTABVUE” corresponds to the docket
`
`
`
`
`
`Concurrent Use No. 94003140
`
`
`In response, the parties clarified that Sparks Law, LLC (RI) (“Sparks RI”) deletes
`
`the entire State of New York from its area of use for its application and Sparks Law,
`
`LLC (GA) (“Sparks GA”) retains the entire State of New York as an area of use for its
`
`application. Additionally, the parties specified that neither party claims the
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`remainder of the United States, other than the states specificall y mentioned, as an
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`area of use. Finally, the parties proposed amendments to their respective
`
`identifications of services.
`
`Sparks GA’s Registration No. 5668170
`
`The Board further reviewed the parties’ Amendment to Trademark Settlement
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`and Concurrent Use Agreement (“Amended Agreement”), filed June 6, 2023, and the
`
`instant response to the Previous Order.2 While the parties’ amended their agreement
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`with respect to their respective applications regarding, inter alia, the geographic and
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`identification of services restrictions, the parties’ Amended Agreement and the
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`instant response to the Previous Order do not reference amended limitations with
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`respect to Sparks GA’s Registration No. 5668170 (“Sparks GA’s Registration”), which
`
`is also subject to this proceeding.3 Accordingly, with respect to Sparks GA’s
`
`
`entry number, and any number(s) following “TTABVUE” refer to the page number(s) of the
`docket entry where the cited materials appear.
`
`2 See 3, 6 TTABVUE.
`
`3 See id. In both the Amendment Agreement and the response to the Previous Order,
`the parties’ only refer to their respective applications and do not menti on Sparks GA’s
`Registration No. 5668170 at all, except to the extent the registration is included in
`the parties’ original agreement as incorporated by reference in paragraph 7 of the
`Amended Agreement. See id.
`
`
`
`2
`
`
`
`Concurrent Use No. 94003140
`
`
`Registration, for the reasons discussed in the Board’s May 8, 2023 order,4 the parties’
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`Amended Agreement, in conjunction with the parties’ response to the Previous Order,
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`fails to persuade the Board that there is no likelihood of confusion arising from the
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`parties’ concurrent use of virtually identical marks for similar services in, at least in
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`part, overlapping geographic areas.
`
`Sparks RI’s Proposed Identification of Services Amendment
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`In the parties’ response, Sparks RI proposed an amendment to application Serial
`
`No. 87709845, with Sparks GA’s consent.
`
`By the proposed amendment, Sparks RI seeks to amend the identification of
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`services in International Class 45 as follows (additions in bold):
`
`FROM: Legal services
`
`TO:
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`Legal services in the field of personal injury law
`
`The amendment is limiting in nature, as required by Trademark Rule 2.71(a), and
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`Sparks GA consents thereto. Accordingly, the amendment is acceptable. However,
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`entry of the amendment is deferred, as discussed below.
`
`Sparks GA’s Proposed Identification of Services Amendment
`
`In the parties’ response, Sparks GA proposed an amendment to application Serial
`
`No. 90188648, with Sparks RI’s consent.
`
`By the proposed amendment, Sparks GA seeks to amend the identification of
`
`services in International Class 45 as follows (additions in bold):
`
`FROM: Legal services
`
`
`4 See 1 TTABVUE.
`
`
`
`3
`
`
`
`Concurrent Use No. 94003140
`
`
`TO:
`
`Legal services in the field of business transactional, trusts and
`estates, and intellectual property law
`
`
`The amendment is limiting in nature, as required by Trademark Rule 2.71(a), and
`
`Sparks RI consents thereto. Accordingly, the amendment is acceptable. However,
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`entry of the amendment is deferred, as discussed below.
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`Next Steps
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`1. Geographic Restriction for Sparks GA’s Registration
`
`The parties are allowed until thirty days from the date of this order to clarify
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`that the agreed-to geographic limitations regarding Sparks GA’s application Serial
`
`No. 90188648 are also applicable to Sparks GA’s Registration.
`
`2. Identification of Services Amendment for Sparks GA’s Registration
`
`The parties are also allowed until thirty days from the date of this order to
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`clarify that the agreed-to amended identification of services regarding Sparks GA’s
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`application Serial No. 90188648 are also applicable to Sparks GA’s Registration.
`
`However, as explained in the Previous Order, an amendment to a registration has
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`additional requirements discussed in TBMP § 514.01. In particular, Trademark Rule
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`2.173 requires that an amendment (1) be accompanied by the proper fee required by
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`Trademark Rule 2.6 and (2) be verified or supported by a declaration under
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`Trademark Rule 2.20. See Trademark Rules 2.6(a)(11), 2.133(a) and 2.173(b).
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`Accordingly, if Sparks GA intends to amend its Registration No. 5668170, it must
`
`
`
`4
`
`
`
`Concurrent Use No. 94003140
`
`
`also comply with the requirements of Trademark Rule 2.173 in any response to this
`
`order.5
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`Proceedings Remain Suspended
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`Proceedings remain suspended and the proposed amendments to the parties’
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`identifications of services are deferred pending resolution of these matters.
`
`
`5 The recitation of services in Sparks GA’s registration may be amended by filing a consented
`motion with the Board using the appropriate ESTTA form.
`
`
`
`5
`
`
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