[E-trademarks] New scam--claim of prior rights and threatened opposition (with attached bogus opposition)

[Kevin Grierson]

Client received this message last week, with a bogus notice of opposition (not a draft) attached from a non-existent attorney.  Client’s mark hasn’t been examined yet, so of course no opposition can be filed yet.  Clearly a BS claim, but not sure what the scammer’s angle is.

Kevin Grierson​​​​
|
Partner
[cid:image001.png at 01DB25FA.41B27DF0]
[Mobile:]
  757-726-7799<tel:757-726-7799>
[Fax:]
  866-521-5663<fax:866-521-5663>
[Email:]
  kgrierson at cm.law<mailto:kgrierson at cm.law>
Please note: Culhane Meadows is now CM Law


From: legal <legal at trademarkluxe.com<mailto:legal at trademarkluxe.com>>
Sent: Thursday, October 17, 2024 14:05
To:
Cc:
Subject: Infringement Alert: NOTICE OF POTENTIAL TRADEMARK INFRINGEMENT – [MARK]

Hi XXXX,

This email is to inform you on behalf of our client, Mr. Cody Marshall, the rightful owner of the business name "MARK​" (the "Mark"), who has been using it in commerce since 2005 and has established common law rights within the State of New York.

FACTS:
* Our client has been continuously using the Mark in commerce since 2005, establishing strong common law rights.
* The Mark has acquired distinctiveness and secondary meaning, identifying our client's services.
* Your trademark application with the USPTO for a similar mark may cause confusion among consumers and infringe on my client's rights under Section 2(d) of the Lanham Act (15 U.S.C. § 1052(d)).

LEGAL GROUNDS:
* Common law rights: Our client's prior use and continuous use of the Mark since 2005 establish superior rights. (See: Eclipse Assoc., Ltd. v. Data General Corp., 174 USPQ 486 (TDP 1972))
* Likelihood of confusion: The similarity between the marks may cause consumer confusion, violating Section 2(d) of the Lanham Act. (See: In re E. I. du Pont de Nemours & Co., 476 F.2d 1357 (CCPA 1973))

REQUEST:
We request that you engage in good-faith negotiations to resolve this matter mutually, considering the legal grounds and facts presented. Please find the PDF file of the Notice of Opposition attached to this email.

Please respond within (24-48) business hours from the issue date of this notice.

Regards,

Legal IP Team
Filing & Analysis | Trademark Luxe
(980) 202-0471
[cid:0.28869203040.4155484518148116094.1929ba721a2__inline__img__src]


​

Trademark Luxe stands as a premier authority in providing comprehensive trademark protection services. Our esteemed team of attorneys possesses a distinguished track record of successfully safeguarding a vast array of trademarks across diverse jurisdictions, encompassing the United States, United Kingdom, European Union, and global arenas. Recognizing the paramount importance of securing our clients' intellectual property rights, we are dedicated to delivering bespoke and impactful legal solutions. Our commitment to excellence is unwavering, and we strive to provide exceptional service that meets the unique needs of each client, thereby protecting their brand and business with precision and dedication.



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