Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA278374
`ESTTA Tracking number:
`04/15/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Granted to Date
`of previous
`extension
`Address
`
`Stress Engineering Services, Inc.
`04/15/2009
`
`13800 Westfair East Drive
`Houston, TX 77041
`UNITED STATES
`
`Attorney
`information
`
`Remy M. Davis
`Thompson & Knight LLP
`1722 Routh StreetSuite 1500
`Dallas, TX 75201
`UNITED STATES
`remy.davis@tklaw.com
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`77529892
`04/15/2009
`
`Publication date
`Opposition
`Period Ends
`
`12/16/2008
`04/15/2009
`
`Mohr Partners, Inc.
`14643 Dallas Parkway
`Dallas, TX 75254
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 042. First Use: 1987/12/31 First Use In Commerce: 1987/12/31
`All goods and services in the class are opposed, namely: Consulting in the fields of engineering and
`architecture; Engineering services for building and property condition assessment, facility
`management, repair and restoration, building instrumentation and monitoring, and environmental
`consulting; Planning and layout design for the interior space of retail business establishments
`
`Grounds for Opposition
`
`False suggestion of a connection
`Priority and likelihood of confusion
`
`Trademark Act section 2(a)
`Trademark Act section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Application/
`Registration No.
`Registration Date
`Word Mark
`
`NONE
`
`NONE
`MOHR
`
`Application Date
`
`NONE
`
`
`ESTTA278374
`ESTTA Tracking number:
`04/15/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Granted to Date
`of previous
`extension
`Address
`
`Stress Engineering Services, Inc.
`04/15/2009
`
`13800 Westfair East Drive
`Houston, TX 77041
`UNITED STATES
`
`Attorney
`information
`
`Remy M. Davis
`Thompson & Knight LLP
`1722 Routh StreetSuite 1500
`Dallas, TX 75201
`UNITED STATES
`remy.davis@tklaw.com
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`77529892
`04/15/2009
`
`Publication date
`Opposition
`Period Ends
`
`12/16/2008
`04/15/2009
`
`Mohr Partners, Inc.
`14643 Dallas Parkway
`Dallas, TX 75254
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 042. First Use: 1987/12/31 First Use In Commerce: 1987/12/31
`All goods and services in the class are opposed, namely: Consulting in the fields of engineering and
`architecture; Engineering services for building and property condition assessment, facility
`management, repair and restoration, building instrumentation and monitoring, and environmental
`consulting; Planning and layout design for the interior space of retail business establishments
`
`Grounds for Opposition
`
`False suggestion of a connection
`Priority and likelihood of confusion
`
`Trademark Act section 2(a)
`Trademark Act section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Application/
`Registration No.
`Registration Date
`Word Mark
`
`NONE
`
`NONE
`MOHR
`
`Application Date
`
`NONE
`
`
`
`Goods/Services
`
`Engineering consulting services in the fields of industrial testing,
`mechanical design and product development.
`
`Attachments
`
`Notice of Opposition.pdf ( 6 pages )(2508902 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
`
`/Remy M. Davis/
`Remy M. Davis
`04/15/2009
`
`
`
`IN TI IE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re Application of:
`
`Mohr Partners, Inc.
`
`Serial No.:
`
`Filed:
`
`Trademark:
`
`Int'l Class:
`
`Published:
`
`77/529,892
`
`July 23, 2008
`
`MOHR PARTNERS
`
`42
`
`December 16, 2008
`
`Opposition No.
`
`§ §
`
`§
`§
`§
`
`§ §
`
`§
`
`Stress Engineering Services, Inc.
`
`V.
`
`Mohr Partners, Inc.
`
`Opposer,
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`STRESS ENGINEERING SERVICES, INC. ("Opposer"), Texas corporation,
`
`having a business and corporate address of 13800 Westfair East Drive, Houston, Texas
`
`77041, believes that it will be damaged by registration of the mark shown in Application
`
`Serial No. 77/529,892 filed July 23, 2008 in International Class 42, and hereby opposes
`
`the same.
`
`As grounds for opposition, it is alleged that:
`
`1.
`
`On or about July 23, 2008, Applicant, MOHR PARTNERS, INC.
`
`("Applicant"), a Texas corporation, listing an 14643 Dallas Parkway, Dallas, Texas
`
`75254, filed an application with the U.S. Patent and Trademark Office, Application Serial
`
`330281 000070 DALLAS 2479091.]
`
`
`
`No. 77/529,892 seeking registration on the Principal Register of the trademark MOHR
`
`PARTNERS for “Consulting in the fields of engineering and architecture; Engineering
`
`services for building and property condition assessment, facility management, repair and
`
`restoration, building instrumentation and monitoring, and environmental consulting;
`
`Planning and layout design for the interior space of retail business establishments” in
`
`International Class 42 as evidenced by the publication of said mark on December 16,
`
`2008. Applicant’s application is based on a current use of the mark in commerce and
`
`identifies a date of first use of December 31, 1987 and a date of first use in commerce of
`
`December 31, 2007.
`
`2.
`
`Commencing at least as early as 1978, Opposer began using the service
`
`mark “MOHR” in connection with engineering consulting services in the fields of
`
`industrial testing, mechanical design and product development.
`
`3.
`
`Opposer is the owner of U.S. Application Ser. No. 77/626,037 for the
`
`service mark MOHR ENGINEERING DIVISION for use with “engineering consulting
`
`services in the fields of industrial testing, mechanical design and product development.”
`
`4.
`
`()pposer is the owner of U.S. Application Ser. No. 77/626,050 for the
`
`mark MOHR & Design for use with “engineering consulting services in the fields of
`
`industrial testing, mechanical design and product development.”
`
`5.
`
`Commencing at least as early as 1999, Opposer began using the service
`
`mark MOHR ENGINEERING DIVISION in connection with engineering consulting
`
`services in the fields of industrial testing, mechanical design and product development.
`
`330281 000070 DALLAS 2479091.]
`
`
`
`6.
`
`Commencing at least as ealry as July 2001, Opposer began using the
`
`service mark MOHR & Design in connection with engineering consulting services in the
`
`fields of industrial testing, mechanical design and product development.
`
`7.
`
`Applicant’s application has been cited against Opposer’s application for
`
`the mark MOI IR ENGINEERING DIVISION (Ser. No. 77/626,037) by the Examining
`
`Attorney as causing a potential likelihood of confusion.
`
`8.
`
`Opposer’s application for the mark MOHR & Design (Ser. No.
`
`77/626,050) has been suspended by the Examining Attorney pending the disposition of
`
`Applicant’s application.
`
`9.
`
`Commencing prior to the filing date of Applicant's application and
`
`continuing to the present, Opposer has used the mark “MOHR” in connection with its
`
`engineering consulting services in in the fields of industrial testing, mechanical design
`
`and product development in interstate commerce. At no time has there been a cessation
`
`of use of the mark in connection with the identified services. Accordingly, Opposer has
`
`priority over Applicant based upon its prior use of the “MOHR” mark.
`
`10.
`
`As a result ofoffering its services under the "MOHR" mark since 1978,
`
`Opposer has built up substantial goodwill in the mark and the mark has come to signify
`
`services originating with Opposer. Given the length of use, Opposer's "MOHR" mark
`
`had acquired distinctiveness under 15 U.S.C. § l052(l) prior to the first use of
`
`Applicant’s MOHR PARTNERS mark.
`
`1 1.
`
`The general public and others familiar with Opposer's "MOI IR" mark,
`
`upon seeing Applicant's services offered under a mark using the term “MOHR
`
`PARTNERS” will be likely to believe that such services originated from Opposer or were
`
`330281 000070 DALLAS 247909l.l
`
`
`
`offered in association or affiliation with, or under authorization by, Opposer. Thus,
`
`Applicant's mark, as used with its proposed services, will lead persons familiar with
`
`Opposer's "MOHR" mark to believe that Applicant's services are offered by, in
`
`association or affiliation with, or under license from, Opposer.
`
`12.
`
`If Applicant is permitted to register its mark for the services specified in
`
`the application herein opposed, such use and registration would result in confusion in the
`
`trade due to the similarity between Applicant’s mark and Opposer’s mark, thereby
`
`damaging and injuring Opposer. Any such confusion may result in loss of business to
`
`Opposer. Furthermore, any defect, objection or fault found with Applicant’s services
`
`marketed under its mark may reflect upon and injure the reputation that Opposer has
`
`established for its services in association with its “MOHR” mark.
`
`13.
`
`Additionally, Applicant's mark, by reason of its similarity to Opposer's
`
`“MOIIR” mark, will be able to gain a subliminal or subconscious association to
`
`Opposer's “MOHR” mark and thereby trade on the reputation of Opposer and Opposer's
`
`"MOHR" mark.
`
`14.
`
`Opposer will be injured by the granting to Applicant of a Certificate of
`
`Registration for the mark "MOHR PARTNERS” because such Registration would
`
`thereby provide Applicant with the prima facie exclusive right to use such mark. Such
`
`registration would be a source of damage and injury to Opposer.
`
`330281 000070 DALLAS 2479091.]
`
`
`
`WHEREFORE, Opposer respectfully prays that its Opposition be sustained and
`
`the application for registration, Application Serial No. 77/529,892, by Applicant be
`
`denied and refused.
`
`Dated: April 15, 2009
`
`Respectfully submitted,
`
`THOMPSON & KNIGHT LLP
`
`ATTORNEYS FOR OPPOSER
`
`'71/L — 0214/io
`
`Vis
`Remy M.
`Deborah L. Lively
`Herbert J. Hammond
`
`Thompson & Knight LLP
`One Arts Plaza
`
`1722 Routh Street, Suite 1500
`
`Dallas, Texas 75201
`
`(214) 969-1700
`(214) 969-1751 (Fax)
`
`330281 000070 DALLAS 2479091.]
`
`
`
`Certificate of Service
`
`I hereby certify that a true and correct copy of the foregoing NOTICE OF
`
`OPPOSITION is being served upon Applicant's attorney of record, Shauna M. Wertheim,
`
`by first class mail, postage prepaid, on this 15th day of April, 2009, in an envelope
`
`addressed to:
`
`Shauna M. Wertheim
`
`The Marbury Law Group, LLC
`11800 Sunrise Valley Drive, Suite 1000
`Reston, Virginia 20191
`
`K
`
`l%7'l/1' Pm/1/.v
`
`RernyM avis
`
`330281 000070 DALLAS 2479091.]
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
