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

Thu Oct 24 15:53:23 UTC 2024

So are you suggesting that “Trusted Clients/Recently Trademark[ed]
Companies” not only abuses “trademark” by using it as a verb but also is
inaccurate and misleading?

I’m shocked.  Shocked!

Thank you,

Mark

*From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On Behalf
Of *Crane, Susan via E-trademarks
*Sent:* Thursday, October 24, 2024 11:49 AM
*To:* For trademark practitioners. This is not for laypersons to seek legal
advice. <e-trademarks at oppedahl-lists.com>
*Cc:* Crane, Susan <susan.crane at wyndham.com>
*Subject:* Re: [E-trademarks] New scam--claim of prior rights and
threatened opposition (with attached bogus opposition)

If you look at their website, they list four “Trusted Clients/Recently
Trademark Companies”:  BLESSED PUPPIES, READYTOHIRE, PERFECT HAVANA and UMI
HOMEGOODS.  All four are on their face, pro se filings, but one of the
correspondence emails is norifications at trademarkengine.com.

All four were abandoned for failure to respond.

*Susan L. Crane*

*Group Vice President, Legal*

*Intellectual Property, Brands & Marketing*

Wyndham Hotels & Resorts, Inc.

22 Sylvan Way

Parsippany, NJ 07054

*O* (973) 753-6455

*M* (973) 879-3420

Susan.Crane at wyndham.com

*From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On Behalf
Of *Kevin Grierson via E-trademarks
*Sent:* Thursday, October 24, 2024 11:19 AM
*To:* e-trademarks at oppedahl-lists.com
*Cc:* Kevin Grierson <kgrierson at cm.law>; TMscams at uspto.gov
*Subject:* [E-trademarks] New scam--claim of prior rights and threatened
opposition (with attached bogus opposition)

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

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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

[image: Mobile:]

  757-726-7799

[image: Fax:]

  866-521-5663 <fax:866-521-5663>

[image: Email:]

  kgrierson at cm.law

*Please note: Culhane Meadows is now CM Law*

*From:* legal <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

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.

This email message (including all attachments) is for the sole use of the
intended recipient(s) and may contain confidential information. If you are
not the intended recipient, please contact the sender by reply email and
destroy all copies of the original message. Unless otherwise indicated in
the body of this email, nothing in this communication is intended to
operate as an electronic signature and this transmission cannot be used to
form, document, or authenticate a contract. Wyndham Hotels and Resorts
and/or its affiliates may monitor all incoming and outgoing email
communications in the United States, including the content of emails and
attachments, for security, legal compliance, training, quality assurance
and other purposes.
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