In June of 2007 I took over a pending USPTO trademark application for a new client. The client’s former attorney passed away unexpectedly, and the appeal brief was overdue. I was able to move for an extension with the TTAB and file a Brief.  The appeal was successful (it was not decided on the merits as the cited registration was not renewed during the registration process). And then after the mark was published in the public records, an extension of time to oppose was filed by a rather large company. A Notice of Opposition was filed in August of 2008. The opposition was fully contested, including a deposition of the client and a oral hearing before the TTAB argued by Associate Mark Donahey (at a public conference in front of a crowd of about 75 attorneys), and in June of 2012, the Board ruled in our favor and denied all the claims in the Notice of Opposition. Just this month – after submitting evidence of using the trademark in commerce, the METRO LIVING & Design mark below has finally become registered, more than seven years after it was filed in July of 2005.

Following receipt of the registration, I was honored to receive this note from the client:

To my attorneys Erik and Mark, I could not have done this without you.  Your belief in my fight kept me going when I was ready to give up and you were always there to take my calls and keep me going.  Thank you very much, we did it with your expertise and understanding of Trademark law.

– Jonathan Benner-Ortega ABR, CDPE, E-Pro

Associate Broker/CEO Metro Living
IKON Realty

For me, practicing trademark law is about the businesses and brands and people that are invested in the trademarks, as much as it is about the law.  Of course, to successfully navigate trademark registration or a trademark dispute, knowledge of the law and the rules is important, but it is only a means to an end. That end – helping business owners – is what makes it all both fun and rewarding.

Mark Image



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