Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1207933
`05/09/2022
`
`ESTTA Tracking number:
`
`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
`
`CPR Certification LLC
`
`Granted to date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`05/07/2022
`
`401 E JACKSON STREET
`SUITE 1500
`TAMPA, FL 33602
`UNITED STATES
`
`BRITTANY J. MAXEY-FISHER
`MAXEY-FISHER, PLLC
`100 SECOND AVENUE SOUTH
`SUITE 401N
`ST. PETERSBURG, FL 33701
`UNITED STATES
`Primary email: ttab@maxeyfisher.com
`Secondary email(s): laura@ucpra.org, rich@ucpra.org, JSchifino@gunster.com,
`bmaxeyfisher@maxeyfisher.com, director@ucpra.org
`7272304949
`
`Docket no.
`
`857002
`
`Applicant information
`
`Application no.
`
`97016512
`
`Opposition filing
`date
`
`Applicant
`
`05/09/2022
`
`Publication date
`
`03/08/2022
`
`Opposition period
`ends
`
`05/07/2022
`
`CPR, LLC
`8051 N. TAMIAMI TRAIL, SUITE E6
`SARASOTA, FL 34243
`UNITED STATES
`
`Goods/services affected by opposition
`
`Class 041. First Use: Nov 4, 2015 First Use In Commerce: Nov 4, 2015
`All goods and services in the class are opposed, namely: Education services, namely, providing live
`and on-line classes, courses, workshops, seminars and conferences in the field of cardiopulmonary
`resuscitation, Automated External Defibrillator (AED), first aid, Machine Training, Bloodborne Patho-
`gen, Certified Nursing Assistant (CNA), Emergency Medical Technician (EMT), and PHLEBOTOMY;
`Educational services, namely, conducting classes, courses, workshops, seminars and conferences in
`the field of cardiopulmonary resuscitation, Automated External Defibrillator (AED), first aid, Machine
`Training, Bloodborne Pathogen, Certified Nursing Assistant (CNA),Emergency Medical Technician
`(EMT), andPHLEBOTOMY
`
`

`

`Grounds for opposition
`
`Applicant not rightful owner of mark for identified
`goods or services
`
`Trademark Act Section 1
`
`Fraud on the USPTO
`
`In re Bose Corp., 580 F.3d 1240, 91 USPQ2d
`1938 (Fed. Cir. 2009)
`
`Attachments
`
`20220509_857002_CPR_CERTIFICATION_Notice_of_Opposition_.pdf(557105
`8 bytes )
`
`Signature
`
`/Brittany J. Maxey-Fisher/
`
`Name
`
`Date
`
`Brittany J. Maxey-Fisher
`
`05/09/2022
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application Serial No. 97/016,512
`Published: March 08, 2022
`
`
`
`
`
`
`CPR Certification, LLC,
` Opposer,
`
`
` v.
`
`CPR, LLC,
`
` Applicant.
`
`
`
`
`
`
`
`
`
`
`
` Proceeding No. ___________________
`
`
`
`NOTICE OF OPPOSITION
`
`
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, Virginia 22313-1451
`
`
`
`CPR Certification, LLC (“Opposer”), a Florida Limited Liability Company, believes that
`
`it will be harmed and damaged by the issuance of a Registration by the United States Patent and
`
`Trademark Office (“USPTO”) for the
`
` word plus design mark shown in CPR,
`
`LLC’s (“Applicant”) Application Serial No. 97/016,512 (the “Challenged Application”) in
`
`connection with all of the applied-for Services in International Classification 041, and hereby
`
`opposes the Challenged Application for these Services on the following grounds:
`
`1.
`
`Opposer is CPR Certification, LLC, a Florida Limited Liability Company having
`
`an address of 401 East Jackson Street, Suite 1500, Tampa, Florida 33602.
`
`
`
`1
`
`

`

`2.
`
`Opposer is Owner of Application Serial No. 97/401,683 for the
`
`design
`
`mark (“Opposer’s Design Mark”).
`
`3.
`
`Applicant CPR, LLC, is a Florida Limited Liability Company having an address of
`
`8051 N. Tamiami Trail, Suite E6, Sarasota, Florida 34243.
`
`4.
`
`The Challenged Application is for the following word plus design mark:
`
`
`
`(the “CPR Mark”) for Education services, namely, providing live and on-line classes, courses,
`
`workshops, seminars and conferences in the field of cardiopulmonary resuscitation, Automated
`
`External Defibrillator (AED), first aid, Machine Training, Bloodborne Pathogen, Certified Nursing
`
`Assistant (CNA), Emergency Medical Technician (EMT), and PHLEBOTOMY; Educational
`
`services, namely, conducting classes, courses, workshops, seminars and conferences in the field
`
`of cardiopulmonary resuscitation, Automated External Defibrillator (AED), first aid, Machine
`
`Training, Bloodborne Pathogen, Certified Nursing Assistant (CNA), Emergency Medical
`
`Technician (EMT), and PHLEBOTOMY, in International Classification 041 (“Applicant’s
`
`Services”). The Challenged Application is attached hereto as Exhibit A.
`
`PROCEDURAL BACKGROUND
`
`5.
`
`Opposer hereby incorporates by reference the allegations contained in Paragraphs
`
`l to 4 above.
`
`6.
`
`On September 08, 2021, Applicant, CPR, LLC, through Applicant’s Attorney of
`
`Record, filed the Challenged Application for the
`
`word plus design mark.
`
`
`
`2
`
`

`

`7.
`
`Applicant filed the Challenged Application as use-based under Section 1(a) of the
`
`Lanham Act, 15 U.S.C. §1051(a).
`
`8.
`
`In the Challenged Application, Applicant claims November 04, 2015, as the First
`
`Date of Use of the CPR Mark anywhere.
`
`9.
`
`In the Challenged Application, Applicant claims November 04, 2015, as the First
`
`Date of Use of the CPR Mark in commerce.
`
`10.
`
`In the Challenged Application, Applicant failed to disclaim the literal element
`
`“CPR” and the literal element “CERTIFICATION”.
`
`11.
`
`In the Challenged Application, Applicant represented to the USPTO the
`
`following:
`
`“To the best of the signatory’s knowledge and belief, no other persons, except, if
`applicable, concurrent users, have the right to use the mark in commerce, either in the
`identical form or in such near resemblance as to be likely, when used on or in connection
`with the goods/services of such other persons, to cause confusion or mistake, or to
`deceive.
`
`To the best of the signatory’s knowledge, information, and belief, formed after an inquiry
`reasonable under the circumstances, the allegations and other factual contentions made
`above have evidentiary support.
`
`The signatory being warned that willful false statements and the like are punishable by
`fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false
`statements and the like may jeopardize the validity of the application or submission or
`any registration resulting therefrom, declares that all statements made of his/her own
`knowledge are true and all statements made on information and belief are believed to be
`true.” (the “Declaration”).
`
`12.
`
`On December 23, 2021, Applicant, CPR, LLC, through Applicant’s Attorney of
`
`
`
`Record, filed Application Serial No. 97/187,126 for the CPR CERTIFICATION word mark
`
`(“CPR CERTIFICATION Word Mark”).
`
`13.
`
`In the CPR CERTIFICATION Word Mark, Applicant also failed to disclaim the
`
`literal element “CPR” and the literal element “CERTIFICATION”.
`
`
`
`3
`
`

`

`14.
`
`On January 31, 2022, Applicant, through Applicant’s Attorney of Record
`
`approved a Disclaimer via Correspondence with the Examining Attorney for the Challenged
`
`Application.
`
`15.
`
`On February 01, 2022, the Examining Attorney for the Challenged Application
`
`issued an Examiner’s Amendment and added the following Disclaimer: “No claim is made to the
`
`exclusive right to use ‘CPR CERTIFICATION’ apart from the mark as shown.”
`
`16.
`
`On March 08, 2022, the Challenged Application was published in the Trademark
`
`Official Gazette.
`
`17.
`
`On April 07, 2022, Opposer filed the First 30 Day Request for Extension of Time
`
`to Oppose the Challenged Application pursuant to 37 C.F.R. §2.102.
`
`18.
`
`On April 08, 2022, the First 30 Day Request for Extension of Time to Oppose the
`
`Challenged Application was granted by the USPTO’s Trademark Trial and Appeal Board
`
`(“TTAB”).
`
`STATEMENT OF FACTS
`
`19.
`
`Opposer hereby incorporates by reference the allegations contained in Paragraphs
`
`l to 18 above.
`
`20.
`
`Opposer CPR Certification, LLC is in the business of providing classes, seminars,
`
`workshops, and other educational services in the field of health, cardiovascular health,
`
`cardiopulmonary resuscitation (CPR), Automated External Defibrillator (AED), first aid,
`
`Machine Training, Bloodborne Pathogen, Certified Nursing Assistant (CNA), Emergency
`
`Medical Technician (EMT), Phlebotomy, and prevention or reduction of cardiac events,
`
`cardiovascular disease, and stroke (“Opposer’s Services”).
`
`21.
`
`Opposer’s founder, owner, and managing member is Mr. Sami Halabi (“Halabi”).
`
`
`
`4
`
`

`

`22.
`
`Prior to founding Opposer CPR Certification, LLC, Halabi founded, owned,
`
`and/or operated a number of CPR certification businesses (collectively, “Halabi’s CPR
`
`Businesses”), including Orlando Certified CPR, CPR Certification Tampa, and Fit Industries
`
`LLC.
`
`23.
`
`In late 2013, Halabi began preparations to start his first CPR certification
`
`business.
`
`24.
`
`Halabi became CPR certified and began his first CPR certification business on
`
`July 10, 2014.
`
`25.
`
`Halabi began offering CPR certification services in Orlando, Florida under the
`
`name Orlando Certified CPR.
`
`26.
`
`On September 08, 2015, Halabi commissioned a logo design concept for Halabi’s
`
`CPR Businesses through the website Fiverr.com.
`
`27.
`
`On September 12, 2015, Halabi received the following commissioned design
`
`concept from Fiverr.com (the “Original Commissioned Logo”):
`
`
`
`28.
`
`On September 14, 2015, Halabi interviewed and subsequently hired Mr. Douglas
`
`Joos (“Joos”) to design a custom website based on the Original Commissioned Logo.
`
`29.
`
`Shortly thereafter, Halabi directed Joos to alter the Original Commissioned Logo
`
`to the CPR Mark that is the subject of this Opposition action.
`
`30.
`
`Halabi expanded Halabi’s CPR Businesses’ certification services to Tampa,
`
`Florida, Houston, Texas, and other cities across the United States.
`
`
`
`5
`
`

`

`31.
`
`For each city into which Halabi expanded, Halabi used the literal element “CPR”,
`
`the literal element “CERTIFICATION”, and the CPR Mark followed by each unique city name,
`
`for example:
`
`.
`
`32.
`
`Halabi used the literal element “CPR”, the literal element “CERTIFICATION”,
`
`and the CPR Mark as a logo from 2015 to February 2021.
`
`33.
`
`For over seven (7) years, Halabi has provided educational services by conducting
`
`classes, courses, workshops, seminars and conferences in the field of cardiopulmonary
`
`resuscitation (CPR) certification, emergency medical technician (EMT) training, and first aid.
`
`34.
`
`On February 17, 2017, Fit Industries LLC (“Fit”) organized under the laws of
`
`Florida and registered with the Florida Department of State, Division of Corporations as a
`
`Florida Limited Liability Company.
`
`35.
`
`The February 17, 2017, Articles of Organization for Fit list both Halabi and Joos
`
`as the Authorized Members of Fit.
`
`36.
`
`Despite being in business with Halabi for Fit, upon information and belief, Joos
`
`directed the creation and registration of Applicant in November 2020.
`
`37.
`
`Specifically, on November 11, 2020, Applicant registered with the Florida
`
`Department of State, Division of Corporations as a Florida Limited Liability Company.
`
`38.
`
`The November 11, 2020, Articles of Organization for Applicant lists the
`
`Registered Agent of Applicant as Cindy’s Florida, LLC, having an address of 8051 N. Tamiami
`
`Trail, Suite E6, Sarasota, Florida 34243.
`
`
`
`6
`
`

`

`39.
`
`The Registered Agent and Manager of Cindy’s Florida, LLC is Cynthia L.
`
`Davies, having an address of 8051 N. Tamiami Trail, Suite E6, Sarasota, Florida 34243.
`
`40.
`
`Upon information and belief, Cindy’s Florida, LLC facilitates the formation of
`
`anonymous Limited Liability Companies in Florida.
`
`41.
`
`The November 11, 2020, Articles of Organization for Applicant lists the
`
`Authorized Member of Applicant as Venture Cap Holdings LLC, with an address of 1309
`
`Coffeen Avenue, Suite 1200, Sheridan, WY 82801.
`
`42.
`
`Upon information and belief, the Registered Agent for Venture Cap Holdings,
`
`LLC is Cloud Peak Law, LLC, located at 1095 Sugar View Dr Ste 500, Sheridan, WY 82801.
`
`43.
`
`Upon information and belief, Cloud Peak Law, LLC facilitates the formation of
`
`anonymous Limited Liability Companies in Wyoming.
`
`44.
`
`Applicant is not the successor to Fit.
`
`45.
`
`Applicant is not the successor to Halabi’s CPR Businesses.
`
`46.
`
`Fit and Applicant have never discussed, negotiated, or entered into an agreement
`
`or license.
`
`47.
`
`In fact, Fit and Applicant have no business relationship and have never had a
`
`business relationship.
`
`48. Moreover, Halabi had no knowledge of the establishment and registration of
`
`Applicant while conducting business with Joos through Fit.
`
`49.
`
`As of February 08, 2021, Fit offered CPR certification classes in the following
`
`twenty-two (22) cities:
`
`• Atlanta, GA
`• Austin, TX
`• Charlotte, NC
`• Clearwater, FL
`
`
`
`7
`
`

`

`• Dallas, TX
`• El Paso, TX
`• Fort Lauderdale, FL
`• Fort Worth, TX
`• Houston, TX
`• Jacksonville, FL
`• Las Vegas, NV
`• Memphis, TN
`• Miami, FL
`• New Orleans, LA
`• Orlando, FL
`• Phoenix, AZ
`• San Antonio, TX
`• St. Louis, MO
`• Tallahassee, FL
`• Tampa, FL
`• Tucson, AZ
`• West Palm Beach, FL
`
`On February 08, 2021, after prolonged negotiations, Halabi agreed to dissolve Fit
`
`50.
`
`and entered into a Dissolution Agreement (“Dissolution Agreement”) with Joos. A redacted copy
`
`of the Dissolution Agreement is attached hereto as Exhibit B.
`
`51.
`
`The Effective Date of the Dissolution Agreement is February 08, 2021.
`
`52.
`
`The only parties to the Dissolution Agreement are Halabi and Joos.
`
`53.
`
`In the Dissolution Agreement, Halabi and Joos are defined as the “Members” of
`
`Fit.
`
`54.
`
`The Dissolution Agreement provides, in relevant part in Section 7, “The Members
`
`agree that the Company's current logo as seen on the websites currently operated by Fit shall
`
`become the sole and exclusive property of Joos.”
`
`
`
`8
`
`

`

`55.
`
`Section 7 of the Dissolution Agreement sets forth Halabi’s rights to the literal
`
`elements and the logo design and states in relevant part, “Halabi may use the words ‘CPR,’
`
`‘Certification,’ and the unique city name in a new logo.”
`
`56.
`
`Further in Section 7, the Dissolution Agreement provides “the design (as used for
`
`the websites operated by Halabi, and as used in other documents and materials for the operation
`
`of the business, such as Certificates of Completion and business cards) cannot incorporate the
`
`logo and must be different than the one currently used by Fit.”
`
`57.
`
`The Dissolution Agreement also limited the geographic scope and restricted the
`
`territory of the parties’ competitive activities from February 08, 2021, until February 08, 2022.
`
`58.
`
`The “Restricted Territory” under the Dissolution Agreement is defined in Section
`
`5 as “The geographic area in which competition is prohibited includes the county in which the
`
`domain name city for each Distributed Website is located.”
`
`59.
`
`Upon information and belief, the counties defined as the “Restricted Territory” in
`
`which competition is prohibited under the Dissolution Agreement are the following counties
`
`which correspond with the twenty-two (22) cities in which Fit operated CPR classes on February
`
`08, 2021:
`
`• Bexar County, TX
`• Broward County, FL
`• Clark County, NV
`• Dallas County, TX
`• Duval County, FL
`• El Paso County, TX
`• Fulton County, GA
`• Hillsborough County, FL
`• Houston County, TX
`• Leon County, FL
`• Maricopa County, AZ
`• Mecklenburg County, NC
`
`
`
`9
`
`

`

`• Miami-Date, FL
`• Orange County, FL
`• Orleans Parish, LA
`• Palm Beach County, FL
`• Pima County, AZ
`• Pinellas County, FL
`• St. Louis County, MO
`• Shelby County, TN
`• Tarrant County, TX
`• Travis County, TX
`
`60.
`
`Joos and Halabi acknowledged and agreed to the geographic scope of the
`
`Restricted Territory in Section 5 of the Dissolution Agreement.
`
`61.
`
`The Dissolution Agreement defines the “Restricted Period” and the “Prohibited
`
`Activities,” in Section 5.
`
`62.
`
`The Dissolution Agreement provides, in relevant part in Section 5,
`
`“The Members hereby agree that they will not, in any Restricted Territory, during the
`twelve (12) month period following the Effective Date of this Agreement (“Restricted
`Period”) engage in, be associated with, employed by, perform services for or have any
`type of ownership interest in, directly or indirectly, a business in any manner similar to,
`or in competition with, the Company’s business of providing training and certification for
`CPR, First Aid, and Bloodborne Pathogen (“Fit’s Business Services”), or other acts of
`competition which include, (i) the pursuit of customers through the use of websites or by
`any other means where such customers are solicited for any Fit’s Business Services in the
`other Member’s Restricted Territory, and (ii) setting up training sites in the other
`Member’s Restricted Territory (collectively “Prohibited Activities)” (emphasis added).
`
`The Restricted Period under the Dissolution agreement is “the twelve (12) month
`
`63.
`
`period following” February 08, 2021.
`
`64.
`
`The Dissolution Agreement provides, in Section 5,
`
`“The Members agree that that they will not, during the Restricted Period, be connected,
`directly or indirectly, with any person, firm, corporation, or other entity engaged in, and
`will not have any financial interest in, the Prohibited Activities. Each Member further
`agrees that during the Restricted Period, he will not, directly or indirectly, be employed
`by or become a partner of, or a stockholder of or act as an officer, director, independent
`contractor, consultant, principal, agent, proprietor, or in any other capacity for any
`
`
`
`10
`
`

`

`partnership, company or other entity engaged in the Prohibited Activities. This covenant
`will be applicable to the Members within the Restricted Territory only.”
`
`In Section 6, the Dissolution Agreement defines February 22, 2021, as the
`
`65.
`
`“Transition Date” when each Member began their own individual separate business operations.
`
`66.
`
`On March 25, 2021, the Articles of Dissolution for Fit (“Articles of Dissolution”)
`
`were filed with the Florida Department of State, Division of Corporations.
`
`67.
`
`The Articles of Dissolution state “The dissolution was authorized by written
`
`consent of the Members of the Company on February 08, 2021, pursuant to a written Dissolution
`
`Agreement.”
`
`68.
`
`The Dissolution Agreement states, in relevant part in Section 1, “Upon the
`
`termination of the Company, all of the Members’ privileges, obligations, and interests as
`
`members in Fit shall terminate.”
`
`69.
`
`Since February 22, 2021, Opposer has used the
`
`word plus
`
`design mark as Opposer’s logo (“Opposer’s Mark”).
`
`70.
`
`Joos was aware of Opposer’s use of Opposer’s Mark as soon as Opposer began
`
`using Opposer’s Mark on February 22, 2021.
`
`71.
`
`The Dissolution Agreement did not transfer the goodwill of Fit to Joos, Halabi,
`
`nor Applicant.
`
`72.
`
`The goodwill of Halabi’s CPR Businesses was never transferred to Applicant.
`
`73.
`
`Applicant was not a party to the Dissolution Agreement.
`
`74.
`
`Because Joos was provided the exclusive use of the CPR Mark for which
`
`Applicant has applied, Opposer contends Joos was, during the Restricted Period, an employee,
`
`
`
`11
`
`

`

`partner, stockholder, officer, director, independent contractor, consultant, principal, agent,
`
`proprietor of, or otherwise connected in another capacity, directly or indirectly, to Applicant.
`
`75.
`
`Upon information and belief, Joos remains an employee, partner, stockholder,
`
`officer, director, independent contractor, consultant, principal, agent, proprietor of, or otherwise
`
`connected in another capacity, directly or indirectly, to Applicant.
`
`76.
`
`On March 17, 2022, Counsel for Joos sent a Cease-and-Desist Letter to Halabi
`
`demanding Halabi and Opposer cease and desist using Opposer’s Mark and alleging Halabi and
`
`Opposer are infringing on Joos’ trademark and copyright rights (“Demand Letter”). A copy of
`
`the Demand Letter is attached hereto as Exhibit C.
`
`77.
`
`The Demand Letter fails to make any mention Applicant.
`
`78.
`
`The Demand Letter repeatedly cites to the Dissolution Agreement.
`
`79.
`
`The Demand Letter repeatedly cites to “Mr. Joos’ logo,” and identifies the
`
`following as “Mr. Joos’ Logo for CPR Pittsburgh”:
`
`80.
`
`The Demand Letter states the logo used by Joos “is his exclusive property . . .
`
`
`
`which he has full and exclusive rights to.”
`
`81.
`
`The Demand Letter states Halabi “did not retain and [is] not entitled to use any of
`
`the logos, the rights of which were retained exclusively by Mr. Joos.”
`
`82.
`
`The Demand Letter states “Mr. Joos is the owner of common law trademark rights
`
`to this logo. Nonetheless, we are aware that you are continuing to use a nearly identical logo to
`
`the one owned exclusively by Mr. Joos, in addition to identical text, in attempting to advertise
`
`your CPR certification businesses” (emphasis added).
`
`
`
`12
`
`

`

`83.
`
`The Demand Letter states “Mr. Joos is prepared to take all steps necessary to
`
`protect his valuable intellectual property rights.”
`
`84.
`
`The Demand Letter further states “If we are unable to resolve this matter, we are
`
`prepared to proceed with filing and formal service of a complaint in order to commence
`
`litigation. Mr. Joos will seek all available remedies, including but not limited to injunctive relief
`
`and monetary relief such as your company’s profits, damages suffered by Mr. Joos’ entities, and
`
`attorneys’ fees” (emphasis added).
`
`OPPOSER’S ENTITLEMENT TO FILE OPPOSITION
`
`85.
`
`Opposer hereby incorporates by reference the allegations contained in Paragraphs
`
`l to 84 above.
`
`86.
`
`Opposer is entitled to file this Notice of Opposition because Opposer believes it
`
`would be damaged by the Registration of the Challenged Application to Applicant upon the
`
`Principal Register, as required under 15 U.S.C. § 1063, based on the following allegations.
`
`87.
`
`Because Opposer is in the business of providing Opposer’s Services, owns the
`
`common law rights to Opposer’s Mark and Opposer’s Design Mark, and Opposer and Applicant
`
`are competitors, the Challenged Application and any resulting Registration would interfere with
`
`the Opposer’s current business. Opposer therefore has a real interest in opposing the Challenged
`
`Application and the entitlement to a statutory cause of action to bring this action.
`
`FIRST GROUND FOR OPPOSITION – APPLICANT IS NOT AND WAS NOT AT THE
`
`TIME OF THE FILING OF ITS APPLICATION THE RIGHTFUL OWNER
`
`88.
`
`Opposer hereby incorporates by reference the allegations contained in Paragraphs
`
`l to 87 above.
`
`89.
`
`The Effective Date of the Dissolution Agreement is February 08, 2021.
`
`
`
`13
`
`

`

`90.
`
`The goodwill of Fit was never transferred to Joos or Halabi.
`
`91.
`
`The Dissolution Agreement limits the scope of Halabi and Joos’ competitive
`
`activities from February 08, 2021, until February 08, 2022.
`
`92.
`
`The Dissolution Agreement states that “This covenant will be applicable to the
`
`Members within the Restricted Territory only.”
`
`93.
`
`The Dissolution Agreement defines the “Restricted Territory” as “The geographic
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`area in which competition is prohibited includes the county in which the domain name city for
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`each Distributed Website is located.”
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`94.
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`Upon information and belief, the counties defined as the “Restricted Territory” in
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`which competition is prohibited under the Dissolution Agreement are the counties which
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`correspond the with twenty-two (22) cities in which Fit operated CPR classes on February 08,
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`2021.
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`95.
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`The Dissolution Agreement provides
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`“The Members agree that that they will not, during the Restricted Period, be connected,
`directly or indirectly, with any person, firm, corporation, or other entity engaged in, and
`will not have any financial interest in, the Prohibited Activities. Each Member further
`agrees that during the Restricted Period, he will not, directly or indirectly, be employed
`by or become a partner of, or a stockholder of or act as an officer, director, independent
`contractor, consultant, principal, agent, proprietor, or in any other capacity for any
`partnership, company or other entity engaged in the Prohibited Activities.”
`
`96.
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`The Restricted Period under the Dissolution Agreement is February 08, 2021 to
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`February 08, 2022.
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`97.
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`The Challenged Application was filed on September 08, 2021.
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`98.
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`On September 08, 2021, under the Dissolution Agreement, Joos was restricted
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`from the Prohibited Activities in the Restricted Territory.
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`
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`99.
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`On September 08, 2021, under the Dissolution Agreement, Joos was restricted
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`from using the CPR Mark for Applicant’s Services within the counties operated by Halabi and
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`Opposer.
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`100. Upon information and belief, Joos was, during the Restricted Period, an
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`employee, partner, stockholder, officer, director, independent contractor, consultant, principal,
`
`agent, proprietor of, or otherwise connected in another capacity, directly or indirectly, to
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`Applicant.
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`101. Upon information and belief, Joos remains an employee, partner, stockholder,
`
`officer, director, independent contractor, consultant, principal, agent, proprietor of, or otherwise
`
`connected in another capacity, directly or indirectly, to Applicant.
`
`102. At the time the Challenged Application was filed, Joos was contractually
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`restricted from being connected, directly or indirectly, with any person, firm, corporation, or
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`other entity engaged in, or have any financial interest in, a business in any manner similar to, or
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`in competition with, the business of providing training and certification for CPR, first aid, and
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`bloodborne pathogen services, and other acts of competition in Halabi’s Restricted Territory.
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`103. Therefore, Joos did not own nationwide exclusive rights in the CPR Mark, the
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`literal element “CPR”, or the literal element “CERTIFICATION”.
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`104. At the time of filing, Joos did not own nationwide exclusive rights in the CPR
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`Mark for Applicant’s Services.
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`105. At the time of filing, Applicant therefore could not itself own nationwide
`
`exclusive rights in the CPR Mark for Applicant’s Services.
`
`106. At no point has Applicant owned nationwide exclusive rights to the literal element
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`“CPR” nor the literal element “CERTIFICATION” for Applicant’s Services.
`
`
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`107. Upon information and belief, Joos, through the veil of Applicant, attempts to
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`expand his rights in the CPR Mark by pursing Prohibited Activities within the Restricted
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`Territory during the Restricted Period.
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`108. Upon information and belief, Applicant attempted to use the USPTO to expand
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`the scope of Applicant’s rights to the CPR Mark.
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`109. Upon information and belief, Applicant attempts to use the USPTO to expand the
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`scope of Applicant’s rights to the literal elements “CPR” and “CERTIFICATION”.
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`110. Upon information and belief, the Declaration is false, and the Challenged
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`Application is not entitled to Registration because Applicant is not and was not at the time the
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`Challenged Application was filed, the rightful exclusive owner of the CPR Mark.
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`111. Upon information and belief, Applicant is aware it is not, and was aware it was
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`not at the time of filing, the exclusive owner, and is not entitled to nationwide exclusive use of
`
`the CPR Mark, the literal element “CPR”, or the literal element “CERTIFICATION” in
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`commerce.
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`112.
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` Opposer has and has always had the right to use the literal element “CPR”, the
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`literal element “CERTIFICATION”, and Opposer’s Mark in commerce within the Member’s
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`contractually agreed-upon territories.
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`113. Opposer, as of February 22, 2021, has continually used the literal element “CPR”,
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`the literal element “CERTIFICATION”, and Opposer’s Mark in commerce within the Member’s
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`contractually agreed-upon territories.
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`SECOND GROUND FOR OPPOSITION – FRAUD ON THE USPTO
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`(Fraud in the Declaration)
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`114. Opposer hereby incorporates by reference the allegations contained in Paragraphs
`
`l to 113 above.
`
`
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`115. A portion of Applicant’s Declaration, that “no other persons, except, if applicable,
`
`concurrent users, have the right to use the mark in commerce, either in the identical form or in
`
`such near resemblance as to be likely, when used on or in connection with the goods/services of
`
`such other persons, to cause confusion or mistake, or to deceive,” was a knowingly false and
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`material statement intended to deceive the USPTO in order to secure a Federal Trademark
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`Registration for the Challenged Application.
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`116. Applicant knew or should have known the Declaration was false at the time it was
`
`made.
`
`117. The Declaration was false at the time Applicant made it, because Applicant knew
`
`or should have known Applicant was not entitled to nationwide exclusive use of the CPR Mark,
`
`the literal element “CPR”, or the literal element “CERTIFICATION” in commerce.
`
`118. Opposer has always had the right to use the literal element “CPR”, the literal
`
`element “CERTIFICATION”, and a different design element in commerce within the Member’s
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`contractually agreed-upon Restricted Territories.
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`119. Opposer has used Opposer’s Mark since February 22, 2021.
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`120. The Challenged Application was filed September 08, 2021.
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`121. Upon information and belief, since November of 2020, Joos has been and remains
`
`an employee, partner, stockholder, officer, director, independent contractor, consultant, principal,
`
`agent, proprietor of, or otherwise connected in another capacity, directly or indirectly, to
`
`Applicant.
`
`122. Because of the relationship between Joos and Halabi, Applicant knew or should
`
`have known that at the time of filing the Challenged Application it was prohibited from using the
`
`CPR Mark in Opposer’s Restricted Territory.
`
`
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`123. Upon information and belief, Applicant has been aware of Opposer’s use of
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`Opposer’s Mark since Opposer began using Opposer’s Mark on February 22, 2021.
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`124. Opposer and Applicant are competitors in the CPR certification business and
`
`share multiple large metropolitan advertising markets, such as the Dallas-Fort Worth Metroplex
`
`and the Greater Miami Metropolitan Area.
`
`125. Upon information and belief, Applicant has attempted to use the USPTO to
`
`expand Applicant’s rights in the literal element “CPR”, the literal element “CERTIFICATION”
`
`and the CPR Mark, rights it knew or should have known it does not possess.
`
`126. Moreover, Applicant has demonstrated a pattern of fraudulent behavior.
`
`127. Specifically, Applicant filed the Challenged Application during the Restricted
`
`Period under the Dissolution Agreement.
`
`128. Moreover, at the time of filing the Challenged Application, Applicant failed to
`
`disclaim the literal elements “CPR” and “CERTIFICATION” in the Challenged Application.
`
`129. Furthermore, Applicant likewise filed the CPR CERTIFICATION Word Mark
`
`during the Restricted Period.
`
`130. As of the date of this Notice of Opposition, Applicant still has failed to disclaim
`
`the literal elements “CPR” and “CERTIFICATION” in the CPR CERTIFICATION Word Mark.
`
`131.
`
`In the March 17, 2022 Demand Letter, despite the terms and conditions of Joos
`
`and Halabi’s Dissolution Agreement for Fit, Counsel for Joos cites Opposer’s “identical text” as
`
`a reason “to proceed with filing and formal service of a complaint in order to commence
`
`litigation. Mr. Joos will seek all available remedies, including but not limited to injunctive relief
`
`and monetary relief such as your company’s profits, damages suffered by Mr. Joos’ entities, and
`
`attorneys’ fees.”
`
`
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`132. Halabi and Opposer continue to have the right to use the literal element “CPR”
`
`and the literal element “CERTIFICATION” for Opposer’s Services based on the terms of the
`
`Dissolution Agreement.
`
`133. As evidenced by the timing of the filing and Applicant’s knowledge, the only
`
`reasonable inference from the foregoing is Applicant made the Declaration to mislead the
`
`USPTO and cause the USPTO to approve the Challenged Application for publication and grant a
`
`Registration for the Challenged Application.
`
`134. The USPTO relied on Applicant’s false statement in the examination of the
`
`Challenged Application.
`
`135. Had the USPTO known that Applicant’s Declaration was false, the Challenged
`
`Application would not have proceeded to publication.
`
`136. Therefore, Applicant committed fraud on the USPTO through its false
`
`Declaration of nationwide exclusive rights to use the mark in commerce.
`
`THIRD