Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA943532
`
`Filing date:
`
`12/21/2018
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91242862
`
`Party
`
`Correspondence
`Address
`
`Plaintiff
`Ridgeline Law Office, Inc.
`
`Susan Hollander & Sharoni Finkelstein
`Venable LLP
`101 California Street, Suite 3800
`San Francisco, CA 94111
`UNITED STATES
`ipdocketingsf@venable.com, ssfinkelstein@venable.com, emgor-
`nall@venable.com
`4156533750
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Motion to Amend Pleading/Amended Pleading
`
`Sharoni S. Finkelstein
`
`ssfinkelstein@venable.com, ssbrooks@venable.com, ipdocket-
`ingsf@venable.com, hedmonds@venable.com
`
`Signature
`
`Date
`
`/Sharoni S. Finkelstein/
`
`12/21/2018
`
`Attachments
`
`Amended Notice of Opposition.pdf(25850 bytes )
`
`
`
`ESTTA Tracking number:
`
`ESTTA943532
`
`Filing date:
`
`12/21/2018
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91242862
`
`Party
`
`Correspondence
`Address
`
`Plaintiff
`Ridgeline Law Office, Inc.
`
`Susan Hollander & Sharoni Finkelstein
`Venable LLP
`101 California Street, Suite 3800
`San Francisco, CA 94111
`UNITED STATES
`ipdocketingsf@venable.com, ssfinkelstein@venable.com, emgor-
`nall@venable.com
`4156533750
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Motion to Amend Pleading/Amended Pleading
`
`Sharoni S. Finkelstein
`
`ssfinkelstein@venable.com, ssbrooks@venable.com, ipdocket-
`ingsf@venable.com, hedmonds@venable.com
`
`Signature
`
`Date
`
`/Sharoni S. Finkelstein/
`
`12/21/2018
`
`Attachments
`
`Amended Notice of Opposition.pdf(25850 bytes )
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application Serial No. 87/792,620
`Published in the Official Gazette on August 7, 2018
`Mark: RIDGELINE VENTURE LAW
`
`Ridgeline Law Office, Inc.,
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`Opposition No. 91242862
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`Opposer,
`
`v.
`
`Christopher Intellectual Property Law,
`PLLC d/b/a Ridgeline Venture Law,
`
`Applicant.
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`AMENDED NOTICE OF OPPOSITION
`
`Ridgeline Law Office, Inc., a corporation organized and existing under the laws of
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`California, with a business address of 3107 Washington Street, San Francisco CA 94115
`
`(“Opposer”) believes that it will be damaged by registration of the RIDGELINE VENTURE LAW
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`word mark shown in Application Serial No. 87/792,620 (the “Applied-for Mark”), and hereby
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`opposes its registration pursuant to 15 U.S.C. §§ 1051 et seq., including specifically 15 U.S.C. §
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`1063.
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`This Amended Notice of Opposition has been timely filed. Fed. R. Civ. P. 12(b)(6); TBMP
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`§§ 503.03. As grounds for its opposition, Opposer alleges as follows:
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`1.
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`Upon information and belief, applicant Christopher Intellectual Property Law,
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`PLLC d/b/a Ridgeline Venture Law is limited liability company organized and existing under the
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`laws of Tennessee, with a business address of 800 Market St., Ste 200, Chattanooga, Tennessee
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`37402 (“Applicant”).
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`1
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`
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`2.
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`As illustrated in Application Serial No. 87/792,620, Applicant seeks to register the
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`mark RIDGELINE VENTURE LAW for “Intellectual property consultation; Legal services;
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`Patent licensing; Advisory services relating to intellectual property rights; Legal services, namely,
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`intellectual property consulting services in the field of identification, strategy, analytics, and
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`invention; Licensing of intellectual property; Licensing of patent applications; Licensing of
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`trademarks” in International Class 45.
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`3.
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`Opposer is a law firm that provides a range of legal services to clients throughout
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`the United States and internationally, including in the state of Tennessee. Since at least as early
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`as April 3, 2017, Opposer has continuously and pervasively used the RIDGELINE trademark as
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`the name of its well-established law firm, and clients and prospective clients have come to
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`recognize RIDGELINE as identifying Opposer and its legal services.
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`4.
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`Opposer owns United States Trademark Applications
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`for
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`the trademark
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`RIDGELINE (the “RIDGELINE Marks”). Below is a list showing Opposer’s U.S. applications
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`for its RIDGELINE Marks.
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`Mark
`RIDGELINE
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`Description of Services
`Class 45 – Legal services
`Class 45 – Legal services
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`Serial No.
`87/816,544
`87/816,564
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`True and correct copies of pages printed from the USPTO’s online database reflecting Opposer’s
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`applications for the RIDGELINE Marks listed above are attached hereto as Exhibit A.
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`5.
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`The RIDGELINE Marks are inherently distinctive as applied to legal services.
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`2
`
`
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`COUNT I: LIKELIHOOD OF CONFUSION
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`6.
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`Opposer has been and will continue to be damaged by Applicant’s attempted
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`registration and use of the Applied-for Mark. The USPTO has cited the Applied-for Mark as a
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`provisional bar to registration of Opposer’s RIDGELINE Marks based on a potential likelihood of
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`confusion between the Applied-for Mark and Opposer’s RIDGELINE Marks. See Exhibits B–C.
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`7.
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`Opposer’s RIDGELINE Marks have priority over the Applied-for Mark. Opposer
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`has used the RIDGELINE Marks in commerce in the United States since at least as early as April
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`3, 2017. By contrast, Applicant did not apply to register the Applied-for Mark until over ten
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`months later, on February 9, 2018. According to the claimed first-use date stated in Application
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`Serial No. 87/792,620, Applicant likewise did not begin using the Applied-for Mark until February
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`9, 2018.
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`8.
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`Applicant’s proposed RIDGELINE VENTURE LAW mark is confusingly similar
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`to Opposer’s RIDGELINE Marks in appearance, sound, and overall impression pursuant to 15
`
`U.S.C. § 1052(d). The dominant portion of the Applied-for Mark is “RIDGELINE,” which is
`
`identical to the word element of Opposer’s RIDGELINE Marks. Indeed, Applicant has disclaimed
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`any exclusive right to the descriptive phrase “VENTURE LAW” apart from the mark as shown,
`
`such that the only wording in the Applied-for Mark for which exclusive ownership is claimed is
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`“RIDGELINE.” Further, the Applied-for Mark wholly incorporates Opposer’s RIDGELINE
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`mark, Application Serial No. 87/816,544.
`
`9.
`
`The services offered by Opposer and Applicant are identical. Opposer’s
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`RIDGELINE Marks cover “legal services” in International Class 45. Likewise, the Applied-for
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`Mark covers “legal services” in International Class 45, among other things.
`
`3
`
`
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`10.
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`Upon information and belief, Applicant and Opposer also offer their respective
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`legal services to the same classes of consumers in overlapping geographic locations. Indeed, there
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`is no geographic limitation in Application Serial No. 87/792,620, and Opposer offers its legal
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`services to clients throughout the United States and internationally. Further, upon information and
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`belief, both Applicant and Opposer advertise their legal services through their respective websites.
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`11.
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`Because Opposer’s RIDGELINE Marks and the Applied-for Mark are virtually
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`identical and are used in connection with identical legal services, the Applied-for Mark is
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`confusingly similar to Opposer’s RIDGELINE Marks pursuant to 15 U.S.C. § 1052(d).
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`12.
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`The maturation of Application Serial No. 87/792,620 into registration will cause a
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`likelihood of confusion, mistake or deception with respect to the source or origin of Applicant’s
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`services. Consumers will erroneously believe that Applicant’s services are offered by, licensed,
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`or associated with Opposer.
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`13.
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`Pursuant to 15 U.S.C. § 1063(a), Opposer has been and will continue to be damaged
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`by Applicant’s proposed mark, which, if registered, would grant Applicant a prima facie exclusive
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`right to use the proposed mark despite Opposer’s priority over Applicant and the likelihood of
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`confusion, dilution, and injury to Opposer’s goodwill that will be caused by registration of
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`Applicant’s mark.
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`14.
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`In summary, registration of the proposed mark would be incorrect and improper in
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`view of the requirements of the Trademark Act of 1946, as amended, including specifically but
`
`not limited to the provisions of 15 U.S.C. §§ 1051, et seq.
`
`///
`
`///
`
`///
`
`4
`
`
`
`COUNT II: FRAUD ON THE TRADEMARK OFFICE
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`15.
`
`Upon information and belief, Applicant knowingly made false, material
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`representations of fact in connection with Application Serial No. 87/792,620 with intent to deceive
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`the USPTO.
`
`16.
`
`On February 1, 2018, Applicant sent an email to Opposer notifying it that Applicant
`
`was considering rebranding its legal practice from “Christopher IP Law” to “Ridgeline Venture
`
`Law Group.” Applicant noted that he “like[s] the name [Ridgeline Venture Law], but have found
`
`[Opposer’s] law firm established in a separate state.” Applicant asked Opposer for “any
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`impressions [the firm] may offer” about the considered rebranding.
`
`17.
`
`On February 9, 2018 at 4:26 p.m. PST, counsel for Opposer sent an email to
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`Applicant acknowledging Applicant’s February 1st email to Opposer. Approximately one hour
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`later, on February 9, 2018 at 5:49 p.m. PST, Applicant filed Application Serial No. 87/792,620 for
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`RIDGELINE VENTURE LAW.
`
`In so doing, Applicant knowingly made false, material
`
`representations of fact.
`
`18.
`
`In connection with Application Serial No. 87/792,620, Applicant submitted a
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`signed Declaration attesting, under oath, that to the best of its knowledge and belief “no other
`
`persons . . . have the right to use the mark in commerce, either in the identical form or in such near
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`resemblance as to be likely, when used on or in connection with the foods/services of such other
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`persons, to cause confusion or mistake, or to deceive.” See Exhibit D.
`
`19.
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`At the time the Declaration was signed, there was in fact another use of the same
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`or a confusingly similar mark. In particular, Opposer had common law rights in the RIDGELINE
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`Marks by virtue of its exclusive use of the marks in commerce.
`
`5
`
`
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`20.
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`By virtue of its use of the RIDGELINE Marks in commerce since at least as early
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`as April 3, 2017, Opposer has legal rights superior to Applicant’s. Applicant did not begin using
`
`the Applied-for Mark or apply to register the same until February 9, 2018, over ten months after
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`Opposer’s first use of the RIDGELINE Marks.
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`21.
`
`Applicant knew that Opposer used and had superior rights in the RIDGELINE
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`Marks. Indeed, on February 1, 2018, prior to signing the Declaration, Applicant sent an email to
`
`Opposer acknowledging that Opposer operates a law firm under the RIDGELINE Marks. At that
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`time, Applicant had neither applied to register the Applied-for Mark, nor had it commenced use of
`
`the Applied-for Mark. Thus, the rights Opposer had in the RIDGELINE Marks were superior to
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`any rights Applicant now claims in the Applied-for Mark.
`
`22.
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`Further, on March 9, 2018, Applicant filed with the USPTO a Voluntary
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`Amendment stating that “[u]pon filing [Application Serial No. 87/792,620], the applicant was
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`aware of a solo legal practitioner based along the coastal mountain range of California operating
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`as Ridgeline Law Office, Inc.” See Exhibit E. Applicant has thus admitted that, at the time he
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`filed Application Serial No. 87/792,620, he was aware of a “persons [with] the right to use the
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`[RIDGELINE] mark in commerce.”
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`23.
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`Applicant has no reasonable basis for believing that there is no likelihood of
`
`confusion between the Applied-for Mark and the RIDGELINE Marks. The dominant portion of
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`the Applied-for Mark is “RIDGELINE,” which is identical to the word element of Opposer’s
`
`RIDGELINE Marks. Indeed, Applicant has disclaimed any exclusive right to use the descriptive
`
`phrase “VENTURE LAW” apart from the mark as shown, such that the only wording in the
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`Applied-for Mark for which exclusive ownership is claimed is “RIDGELINE.” Further, the
`
`services offered by Opposer and Applicant are identical: Opposer’s RIDGELINE Marks cover
`
`6
`
`
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`“legal services” in International Class 45, while the Applied-for Mark covers “legal services” in
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`International Class 45, among other things. Thus, there is substantial identity between the parties’
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`marks and the services offered thereunder, such that Applicant had no reasonable basis for its
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`averred belief that no other person had a right to use the same or a confusingly similar mark on or
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`in connection with the services identified in the application.
`
`24.
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`Upon information and belief, the Declaration signed by Applicant, under oath, was
`
`knowingly false and was made with the intent to deceive the USPTO and to procure a registration
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`to which it was not entitled.
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`25.
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`Upon information and belief, Application Serial No. 87/792,620 would not have
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`been approved for publication but for Applicant’s knowingly false and fraudulent declaration.
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`26.
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`Applicant is not entitled to continue Application Serial No. 87/792,620 because
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`Applicant committed fraud in the procurement of the approval of said application, and said
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`application is therefore void.
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`WHEREFORE, Opposer prays that said Application Serial No. 87/792,620 be rejected,
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`that no registration be issued thereon to Applicant, and that this opposition be sustained in favor
`
`of the Opposer.
`
`Dated: December 21, 2018
`
`Respectfully submitted,
`
`VENABLE LLP
`
`/s/ Sarah S. Brooks
`Susan E. Hollander
`101 California Street, Suite 3800
`San Francisco, California 94111
`Tel.: (415) 653-3750
`Fax: (415) 653-3755
`
`7
`
`
`
`Sarah S. Brooks
`Sharoni S. Finkelstein
`2049 Century Park East, Suite 2300
`Los Angeles, California 90067
`Tel.: (310) 229-9900
`Fax: (310) 229-9901
`
`Attorneys for Opposer
`Ridgeline Law Office, Inc.
`
`8
`
`
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`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing AMENDED NOTICE
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`OF OPPOSITION has been served on Applicant’s counsel by forwarding said copy on
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`December 21, 2018 via email to:
`
`Kevin Christopher (kevin@venturelaw.org; info@venturelaw.org)
`
`/s/ Sharoni S. Finkelstein
`Sharoni S. Finkelstein
`
`9
`
`
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