IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In re Application of: First Global Securities, Inc.
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`Serial No.:
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`76/109,942
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`Filed:
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`August 15, 2000
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`Trademark:
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`FIRST GLOBAL
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`Int’l Class:
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`36
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`Published:
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`Official Gazette
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`Volume 1269, No. 2
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`April 8, 2003
`Page TM 459
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`§
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`Opposition No.:
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`§
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`§ §
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`§
`§
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`§ §
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`§
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`15‘ Global, Inc.,
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`Opposer,
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`v.
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`First Global Securities, Inc.,
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`Applicant.
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`Commissioner for Trademarks
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`TTAB
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`2900 Crystal Drive
`Arlington, Virginia 22202-3514
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`NOTICE OF OPPOSITION
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`1“ Global, Inc. (“Opposer”), a Texas corporation, having its principal place of
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`business at 8150 N. Central Expressway, Suite M-1000, Dallas, Texas 75206, believes
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`that it will be damaged by registration of the mark shown in Application Serial No.
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`020760 000005 DALLAS 162l937.l
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`

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`76/109,942, filed August 15, 2000 in International Class 36. Accordingly, Opposer
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`hereby opposes the registration of that mark.
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`The grounds for opposition are as follows:
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`1.
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`On or about August 15, 2000, Applicant, First Global Securities,
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`Inc. (“Applicant”) of 234 E. Colorado Blvd, Suite M120, Pasadena, California
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`91101, filed an intent-to-use application in the U.S. Patent and Trademark Office,
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`Application Serial No. 76/109,942, seeking registration on the Principal Register
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`of the trademark FIRST GLOBAL in International Class 36 for:
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`Financial Services, namely, financial management, financial planning and
`financial investment services in the field of tradable securities,
`commodities and futures; financing services, namely, conducting private
`placements and public offerings of securities, futures and commodities;
`investment banking, investment advice and investment management;
`security brokerage; financial services in the nature of investment
`securities; mortgage lending; investment brokerage; financial planning
`services; mutual fimd investment services; financial investment research,
`namely conducting research concerning investments in the United States
`and abroad and providing investment advice to clients; financial analysis
`and consultation for others; financial investment services, namely,
`arbitrage activities relating to mergers, tenders, liquidation and exchange
`offerings; underwriting of debt offerings of other companies and on behalf
`of clients, namely, brokerage and dealer services in securities, bonds,
`mutual flmds, commodities and investment vehicles provided to hedge
`fund managers and money managers; financial management services,
`namely, investment advisory services and money management services
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`as evidenced by the publication of said mark on page TM 459 in the April 8, 2003 issue
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`of the Official Gazette.
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`2.
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`Opposer is owner of the mark 1ST GLOBAL INC. & Design, Registration
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`No. 2,233,931, filed on January 7, 1998 in International Class 36, for “personal financial
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`planning and implementation services.” Opposer is also the owner of the mark 1ST
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`020760 000005 DALLAS 1621937. 1
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`
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`GLOBAL ACCESS, Registration No. 2,383,138, filed on September 27, 1999 in
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`International Class 36, for “providing access to personal financial planning services,
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`personal financial planning products and personal financial plarming information via a
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`global computer communication network.” Furthermore, Opposer has a pending
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`application for 1ST GLOBAL, Serial No. 76/495,138, filed on March 6, 2003 in
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`International Class 36, for “Financial services and consultation for accounting and legal
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`professionals and their respective clients, namely securities brokerage and dealer services,
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`investment brokerage services, securities and financial consultation and management,
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`insurance brokerage and administration, estate planning risk management, retirement
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`advice and wealth care management,” which mark Opposer has used in interstate
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`commerce since at least as early as 1997. A copy of the TARR Status Report for each of
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`these marks is attached as Opposer’s Exhibit 1.
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`3.
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`Opposer also possesses common law rights in the marks cited in Paragraph
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`2. Opposer has used 1ST GLOBAL INC. & Design in commerce since at least as early as
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`1997, has used 1ST GLOBAL ACCESS in commerce since at least as early as 1999, and
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`has used 1ST GLOBAL in commerce since at least as early as 1997. (See Exhibit 1.)
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`4.
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`Applicant’s mark FIRST GLOBAL, Serial No. 76/109,942, is phonetically
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`identical to the material portion of all of Opposer’s marks 1ST GLOBAL INC. & Design,
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`1ST GLOBAL ACCESS, and 1ST GLOBAL. Furthermore, the services under
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`Applicant’s mark include financial planning and implementation services in International
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`Class 36—the same as the services offered under Opposer’s marks (See Paragraph 2).
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`Because Applicant’s mark is similar to those of Opposer and because Applicant’s mark
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`covers similar financial services, Opposer’s marks and Applicant’s mark will likely have
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`020760 000005 DALLAS l62l937.1
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`similar charmels of trade as well as similar customers. Thus, Applicant’s mark so
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`resembles these registered marks of Opposer, as to be likely, when used on or in
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`connection with the services of Applicant, to cause confusion, to cause mistake, or to
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`deceive. Accordingly, Opposer’s claim of a likelihood of confusion is merited.
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`5.
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`Applicant’s mark has created actual confusion with Opposer’s mark, and
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`the existence of actual confusion between these marks reflects the likelihood of further
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`confusion. Any such confusion may injure the reputation of Opposer and may result in a
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`loss of business to Opposer.
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`6.
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`Because Applicant’s mark is confusingly similar to Opposer’s marks
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`(identified in Paragraph 2), Applicant’s use of the mark falsely suggests a connection with
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`Opposer. On information and belief, Applicant was denied a broker’s license and
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`registration in Connecticut in 2000 and was “debarred” by the Securities and Exchange
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`Board of India in 2001. These and other negative events related to Applicant are an
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`additional reason that Applicant’s use and registration of its mark will injure Opposer;
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`consumers will likely make a false association between Applicant and Opposer, which
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`association will damage Opposer’s business reputation and goodwill in its marks.
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`7.
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`Opposer would be injured by granting to Applicant a registration for the
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`mark FIRST GLOBAL because Applicant would obtain thereby at least a prima facie
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`exclusive right to use such mark. Such registration would be a source of damage and
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`injury to Opposer.
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`WHEREFORE, Opposer believes that it would be damaged by registration of the
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`mark shown in Application Serial No. 76/109,942 and prays this Opposition be sustained
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`020760 000005 DALLAS 1621937.!
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`in favor of Opposer and respectfully requests that no registration be issued on Application
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`Serial No. 76/109,942.
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`A duplicate copy of this Notice of Opposition is enclosed. Please withdraw the
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`filing fee of $300.00 and/or any deficiency in fees from Deposit Account No. 29-0821.
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`Date: August 4, 2003
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`Respectfully submitted,
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`THOMPSO
`
`IG T LLP
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`By:
`Lee Ann Wheelis Lockridge
`1700 Pacific Avenue, Suite 3300
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`Dallas, Texas 75201
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`Tel: (214) 969-1700
`Fax: (214)969-1751
`Attorneys for Opposer
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`I hereby certify that this correspondence is being deposited with the U.S. Post Office as Express Mail No. EL655263348US with
`sufficient postage in an Express Mail envelope addressed to: Commissioner for Trade arks, 2900 Crystal Drive, Arlington, VA
`22202-3514, on 8/4/03.
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`I Lg.,¢i9l Q38“
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`Name
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`020760 000005 DALLAS l62l937.l
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`~ 14
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`Exhibit 1
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`020760 000005 DALLAS l62l937.l
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`_ dgfatest Status Info
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`Page 1 of2
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`jg-fhank you for your request. Here are the latest results from the IA R v1eb_se1;ve_1;.
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`.
`
`page was generated by the TARR system on 2003-07-30 14:37:57 ET
`;§eria1 Number: 75414686
`§3«1Eé
`' Registration Number: 223393 1
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`Mark
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`
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`Ist GLOBAL. Inc.
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`(words only): 1ST GLOBAL, INC.
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`Current Status: Registered.
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`Date of Status: 1999-03-23
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`Filing Date: 1998-01-07
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`Registration Date: 1999-03-23
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`Law Office Assigned: TMEG Law Office 101
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`If you are the applicant or applicant's attorney and have questions about this file, please contact
`the Trademark Assistance Center at TrademarkAssistanceCenter@uspto.gov
`
`Current Location: 900 -Warehouse (Newington)
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`Date In Location: 1999-03-29
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`
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`CURRENT APPLICANT(S)/OWNER(S)
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`‘
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`1. 1st Global, Inc.
`
`Address:
`
`1st Global, Inc.
`8150 North Central Expressway Suite M 1000
`Dallas, TX 75206
`United States
`
`State or Country of Incorporation: Delaware
`Legal Entity Type: Corporation
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`http://tarr.uspto. gov/servlet/tarr?regser=registIation&entry=223 3 93 1
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`7/3 0/2003
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`Page 2 of2
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`£I;4_,atest Status Info
`F" ‘
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`_ GOODS AND/OR SERVICES
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`I
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`fflersonal Financial Planning and Implementation Services
`ZI§'nternational Class: 036
`jjIi;irst Use Date: 1997-10-27
`;‘I<;irst Use in Commerce Date: 1997-10-27
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`Basis: 1(a)
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`
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`ADDITIONAL INFORMATION
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`Disclaimer: "INC."
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`cu-n ISTOY
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`1999-03-23 - Registered - Principal Register
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`1998-12-29 - Published for opposition
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`1998-11-27 - Notice of publication
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`1998-10-27 - Approved for Pub - Principal Register (Initial exam)
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`1998-09-03 - Communication received from applicant
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`1998-08-17 - Non-final action mailed
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`1998-08-12 - Case file assigned to examining attorney
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`1998-07-23 - Case file assigned to examining attorney
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`CONTACT INFORMATION
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`Correspondent (Owner)
`RAMIRO GARCIA BARRON (Attorney of record)
`
`RAMIRO GARCIA BARRON
`ROBERTS CUNNINGHAM & STRIPLING LLP
`800 PRESTON COMMONS WEST
`81 17 PRESTON RD
`DALLAS TX 75225
`United States
`
`
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`http://tarr.uspto.gov/servlet/tarr?regser=registration&entry=223 393 1
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`7/30/2003
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`

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`_ Elfiatest Status Info
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`Page 1 of2
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`V
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`l
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`llilhank you for your request. Here are the latest results from the
`page was generated by the TARR system on 2003-07-30 14:38:18 ET
`Number: 75809163
`-élgegistration Number: 2383 138
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`Mark (words only): 1ST GLOBAL ACCESS
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`Current Status: Registered.
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`Date of Status: 2000-09-05
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`Filing Date: 1999-09-27
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`Registration Date: 2000-09-05
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`Law Office Assigned: TMO Law Office 111
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`If you are the applicant or applicant's attorney and have questions about this file, please contact
`the Trademark Assistance Center at TrademarkAssistanceCenter@uspto.gov
`
`Current Location: 900 -Warehouse (Newington)
`
`Date In Location: 2000-09-1 1
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`
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`CURRENT APPLICANT(S)/OWNER(S)
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`1. 1ST GLOBAL, INC.
`
`Address:
`
`1ST GLOBAL, INC.
`8150 N. Central Expressway, Suite M-1000
`Dallas, TX 75206
`United States
`
`State or Country of Incorporation: Texas
`Legal Entity Type: Corporation
`
`
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`GOODS AND/OR SERVICES
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`Providing access to personal financial planning services, personal financial planning products and
`personal financial planning information Via a global computer communication network
`International Class: 036
`First Use Date: 1999-09-01
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`First Use in Commerce Date: 1999-09-01
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`Basis: 1(a)
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`http ://tarr.uspto.gov/servlet/tarr?regser=registration&entry=23 8 3 l 3 8&action=Request+Stat. .. 7/3 0/2003
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`Jgatest Status Info
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`Page 2 of2
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`,.
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`f:;:j:
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`ADDITIONAL INFORMATION
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`jisclaimer: "GLOBAL ACCESS"
`;:I:’:rior Registration Number(s):
`*t861169
`2233931
`
`
`
`I
`I
`I
`PROSECUTION HISTORY
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`2000-00-05 - Rgistr cal Register
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`2000-06-13 - Published for opposition
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`2000-05-12 — Notice of publication
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`2000-04-09 - Approved for Pub - Principal Register (Initial exam)
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`2000-03-13 - Communication received from applicant
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`2000-O2-29 - Non-final action mailed
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`2000-02-04 - Case file assigned to examining attorney
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`2000-02-03 - Case file assigned to examining attorney
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`2000-02-01 - Case file assigned to examining attorney
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`CONTACT INFORMATION
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`Correspondent (Owner)
`MARISSA G. JAMES (Attorney of record)
`
`MARISSA G. JAMES
`
`ROBERTS, CUNNINGHAM & STRIPLING, L.L.P.
`800 PRESTON COMMONS WEST
`8117 PRESTON ROAD
`
`DALLAS, TEXAS 75225
`United States
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`
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`http://tarr.uspto.gov/servlet/tarr?regser———registration&entry=23 8 3 1 3 8&action=Request+Stat. .. 7/3 0/2003
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`

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`THOMPSON & KNIGHT up
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`ATTORNEYS AND COUNSELORS
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`

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`

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`THOMPSON & KNIGHT up
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`"’
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`‘
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`‘fif
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`.
`_
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`-- D173“ D1313 (214) 969'2582
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`Email: leeann.1ockridgei@tklaw.com
`5:
`
`ATTORNEYS AND COUNSELORS
`1700 PACIFIC AVENUE - SUITE 3300
`DALLAS, TEXAS 75201-4693
`(214) 969-1700
`FAX (214) 969-1751
`www.tk|aw.com
`
`August 4, 2003
`
`Qffflfi
`FORT WORTH
`HOUSTON
`
`MONTERREY, MEXICO
`ALGIERS, ALGERIA
`PARIS, FRANCE
`
`Via Express Mail
`Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, Virginia 22202-3514
`
`Re:
`
`.
`.
`.
`Notice of Opposition
`Mark:
`
`FIRST GLOBAL
`
`Serial No.:
`.
`.
`Publication Date:
`Applicant:
`
`76/109,942
`.
`April 8, 2003
`First Global Securities, Inc.
`
`Dear Sir:
`
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`I enclose an original and a copy of the opposer’s Notice of Opposition on the above-
`referenced application.
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`Please withdraw the required fee of $300.00 from the Deposit Account No. 20-0821 of
`Thompson & Knight, P.C.
`
`Please acknowledge receipt of the enclosed material by date stamping and returning the
`enclosed stamped and self-addressed postcard.
`
`I appreciate your assistance in this matter.
`
`
`
`LWL/co
`
`Enclosures
`cc: Craig J.J. Snyder, Esq. /
`‘St G‘°"a" 1”“
`\\\l\\\\\\\I\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\
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`020760 000005 DALLAS l624789.1
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`H31 #17