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

Thu Oct 24 18:33:43 UTC 2024

That would be my guess too, but it seems pretty involved.  Maybe they are trying to run it as an automated scam via AI?  I’m halfway tempted to respond to see what they say.

Kevin Grierson
|
Partner
[cid:image001.png at 01DB2621.4CFEE0F0]
[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: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Sam Castree via E-trademarks
Sent: Thursday, October 24, 2024 11:52 AM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Sam Castree <sam at castreelaw.com>
Subject: Re: [E-trademarks] New scam--claim of prior rights and threatened opposition (with attached bogus opposition)

EXTERNAL EMAIL
If I had to guess, the angle is to get some sort of settlement agreement (complete with monetary payment) from the client for the right to use and register the mark.  Just a guess, though.  I sure am getting tired of the lengths to which some of these scammers are going.

Cheers,

Sam Castree, III

Sam Castree Law, LLC
3421 W. Elm St.
McHenry, IL 60050
(815) 344-6300

On Thu, Oct 24, 2024 at 10:21 AM Kevin Grierson via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>> wrote:
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 01DB2621.4CFEE0F0]
[Mobile:]
  757-726-7799<tel:757-726-7799>
[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:image005.jpg at 01DB2621.4CFEE0F0]

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.

--
E-trademarks mailing list
E-trademarks at oppedahl-lists.com<mailto:E-trademarks at oppedahl-lists.com>
http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20241024/05fd8760/attachment.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.png
Type: image/png
Size: 5049 bytes
Desc: image001.png
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20241024/05fd8760/attachment.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image002.png
Type: image/png
Size: 285 bytes
Desc: image002.png
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20241024/05fd8760/attachment-0001.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image003.png
Type: image/png
Size: 452 bytes
Desc: image003.png
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20241024/05fd8760/attachment-0002.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image004.png
Type: image/png
Size: 394 bytes
Desc: image004.png
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20241024/05fd8760/attachment-0003.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image005.jpg
Type: image/jpeg
Size: 26217 bytes
Desc: image005.jpg
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20241024/05fd8760/attachment.jpg>