Newton, Udinson, & Hill PLLC v. Sigal Law Firm, PLLC

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Mailed: July 13, 2026
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Newton, Udinson, & Hill PLLC
v.
Sigal Law Firm, PLLC
_____
Opposition No. 91289155
_____
Jessica Eaves Mathews, of Leverage Legal Group LLC,
for Newton, Udinson, & Hill PLLC.
Joanna M. Myers, Esq. and Andrew M. Grove, Esq. of Howard & Howard Attorneys
PLLC, for Sigal Law Firm, PLLC.
_____
Before Heasley, Thurmon and Lebow,
Administrative Trademark Judges.
Opinion by Lebow, Administrative Trademark Judge:
I. Background
Applicant, Sigal Law Firm PLLC, a personal injury law firm, seeks registration of
844-I-WIN-BIG
in standard characters on the Principal Register for use in connection with “legal
advisory services; legal consultation services; legal services; providing customized
legal information, counseling, and advice, and litigation services in the field of

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personal injury Law; providing legal services in the field of personal injury law” in
International Class 45.1
Opposer, Newton, Udinson, & Hill PLLC, also a personal injury law firm, filed a
notice of opposition opposing registration of Applicant’s proposed mark on grounds
that (1) it is likely to cause confusion with Opposer’s common law mark WIN BIG
LAW for “legal services” under Section 2(d) of the Trade Act, 15 U.S.C. 1052(d); and
(2) it was not used in commerce in connection with the identified services prior to the
filing of Applicant’s used-based application under Section 1(a) of the Trademark Act,
15 U.S.C. 1051(a).2
Applicant denied the salient allegations in the notice of opposition.3
Both Opposer and Applicant have filed briefs and the case is ready for decision.
For the reasons explained below, we dismiss the opposition.
II. Preliminary Issues
A. Opposer’s Motion to Amend Its Notice of Opposition
On September 30, 2025, the last day of its rebuttal testimony period, Opposer filed
1 Application Serial No. 97617709 (“the Application”) was filed on October 3, 2022 under
Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based on Applicant’s claim of first use
anywhere and use in commerce since at least as early as August 22, 2022.
2 1 TTABVUE 5-6 (Notice of Opposition). Citations in this opinion to the briefs and other
materials in the case file refer to TTABVUE, the Board’s online docketing system. The
number preceding TTABVUE corresponds to the docket entry number, and any numbers
following TTABVUE refer to the page(s) of the docket entry where the cited materials appear.
Opposer separately asserts in the notice of opposition that Applicant had “no bona fide use
or intent to use” the mark in commerce when it filed the Application, id. at 6-7, but this is
part of Opposer’s argument that Applicant’s purported use does not actually meet the
definition of use in commerce. Opposer does not treat the allegation as a separate claim.
3 4 TTABVUE.

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a “Motion For [sic] To Amend Notice of Opposition” seeking “leave to amend its Notice
of Opposition . . . to add an essential and newly confirmed ground for opposition: that
Applicant’s designation 844-I-WIN-BIG fails to function as a trademark under the
Lanham Act.”4 Opposer argues that “[b]ecause the proposed amendment is based on
evidence already a part of the record, justice requires that [it] be allowed to conform
its pleading to the established facts of the case.”5
Applicant, in response, argues that Opposer’s request to add a new claim on “the
very last day” of its rebuttal testimony period “impermissibly prevent[ed] Applicant
from submitting any evidence to defend against this claim.”6 According to Applicant,
“Opposer admits that all of the evidence needed was available to [it] at the time this
case was initiated” when it argues that “‘Applicant’s own specimens [submitted with
the application]’ and ‘archived Internet evidence’ dating both before and after
Applicant filed its application in October 2022 purportedly supports” a claim of failure
to function.7 As to Opposer’s criticism that Applicant did not offer evidence
“demonstrating consumer perception of 844-I-WIN-BIG as a trademark” or “show[]
consistent branding use,” Applicant explains that it did not present such evidence
“because it is not necessary to defend against the claims” of likelihood of confusion
and no bona fide use or intent to use the mark in commerce.8
4 30 TTABVUE.
5 Id. at 3.
6 39 TTABVUE 37-38 (Applicant’s Brief).
7 Id. at 38.
8 Id. (referring to Opposer’s Brief, 38 TTABVUE 36).

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“Despite its procedural objection,” replies Opposer, “Applicant devotes two full
pages to arguing the merits of the failure to function claim, contending that 844-I-
WIN-BIG ‘does indeed function as a mark,’ that it is ‘suggestive of legal services,’ and
that ‘the Examining Attorney believed Applicant’s specimens submitted with its
application demonstrated use of Applicant’s Mark as a mark.’”9 Opposer argues,
citing B.V.D. Licensing Corp. v. Body Action Design, Inc., 846 F.2d 727, 728 (Fed. Cir.
1988), that “[a] party that substantively engages with an unpleaded issue on the
merits cannot simultaneously claim the issue was not tried by consent.”10
Opposer’s motion was deferred until trial. We address it now.
Under Fed. R. Civ. P. 15(b), an unpleaded claim is tried by implied consent only if
the opposing party has been fairly apprised that the unpleaded issue was being
litigated and has had a fair opportunity to defend against it. See also Heil Co. v.
Tripleye GmbH, Opp. No. 91277359, 2024 TTAB LEXIS 494, at * 18 (“Implied consent
to the trial of an unpleaded issue can only be found where the non-offering party (1)
raised no objection to the introduction of evidence on the issue, and (2) was fairly
apprised that the evidence was being offered in support of the issue.”); TRADEMARK
TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 507.03(b) (June 2026).
The test is not satisfied merely because evidence relevant to the pleaded claims is
also relevant to the unpleaded claim, as Opposer seems to argue here. Instead, the
record must show that the non-offering party (here, Applicant) knew or should have
9 Id. at 19.
10 Id.

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known that the evidence was being offered in support of the new claim and had a
meaningful chance to meet it with its own evidence or argument. See Noble House
Home Furnishings, LLC v. Floorco Enterprises, LLC, No. 92057394, 2024 TTAB
LEXIS 494, at *49.
Here, the evidence that Opposer introduced regarding the manner of use of
Applicant’s mark was relevant to the already-pleaded claims of likelihood of confusion
and nonuse, and did not fairly apprise Applicant that a separate, distinct failure-to-
function claim was being litigated. As such, Applicant did not have a fair opportunity
to defend against that new ground. Moreover, Opposer could (and should) have
sought leave to amend much earlier—upon developing the relevant evidence during
discovery or the testimony period—rather than raising the issue at the eleventh hour
in its trial brief.
Applicant’s argument, that “even if the Board allows Opposer to amend and bring
this claim, Opposer has not demonstrated by a preponderance of the evidence that
Applicant’s Mark fails to function as a mark,” is standard “assuming arguendo”
practice in briefs before the Board to preserve procedural objections while protecting
an applicant on the merits of a claim in the event the Board rules against it. “Fairness
dictates whether an issue has been tried by consent -- there must be an absence of
doubt that the nonmoving party is aware that the issue is being tried.” Bell’s Brewery,
Inc. v. Innovation Brewing, 91215896, 2017 TTAB LEXIS 452, at *27 (quoting TBMP
§ 507.03(b) (June 2017). See also Moke Am. LLC v. Moke USA, LLC, 2020 TTAB
LEXIS 18, at *32 (“It is clear from Applicant’s objection in its brief that Applicant did

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not expressly consent to the trial of the claim that its application was void ab initio
due to lack of ownership.”). Here, Applicant’s alternative argument is not an
admission that the failure to function claim is properly before the Board; it’s defensive
housekeeping.
Opposer’s reliance on B.V.D. Licensing is misplaced. While that decision recites
general legal standard under Fed. R. Civ. P. 15(b) and TBMP § 507.03(b), its facts are
materially distinguishable from this record in ways that undermine (rather than
bolster) a finding of implied consent. There, the Board examined whether specific
evidence introduced without objection sufficed to apprise the non-offering party that
an unpleaded issue was being tried; it did not hold that overlap with pleaded claims
automatically establish consent, nor did it relax the “fairly apprised” requirement.
Opposer’s motion for leave to amend its notice of opposition is denied.
B. Opposer’s Evidentiary Objections
Opposer’s raises numerous objections to Applicant’s testimony and evidence.
1. Lack of Personal Knowledge or Foundation.
Opposer objects to paragraphs “9-13 and 15-18, inter alia” of the declaration
testimony of Applicant’s managing partner, Vadim Sigal, on the ground that he lacks
personal knowledge or did not provide “a proper evidentiary foundation” for his
testimony under Fed. R. Evid. Rule 602.11 Because these objections are procedural in
nature, they are untimely when raised for the first time in an opposer’s trial brief, as
they are here. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., Can. No. 92025859,
11 38 TTABVUE 40-41 (Opposer’s Brief).

Opposition No. 91289155
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2022 TTAB LEXIS 454, at *11 n.21 (lack of foundation is a procedural objection and
“because the foundation objections were raised only in the trial briefs, they are waived
as untimely”), aff’d Gen. Cigar Co. v. Del Tabaco, 2025 U.S. Dist. LEXIS 87607 (E.D.
Va. May 7, 2025); Rocket Trademarks Pty Ltd. v. Phard S.p.A., Opp. No. 91172486,
2011 TTAB LEXIS 39, at *10-11 (objection on grounds of improper authentication
based on lack of personal knowledge procedural in nature and waived where raised
for the first time in trial brief). Opposer’s objections based on lack of personal
knowledge or proper foundation are overruled.
2. Improper Lay Opinion and Legal Conclusions
Opposer also objects to paragraphs 10-13 of Mr. Sigal’s testimony “to the extent
[he] offers opinions or conclusions regarding likelihood of confusion, the strength or
weakness of Opposer’s mark, consumer sophistication, or the registrability and legal
effect of Applicant’s asserted designation.”12 Mr. Sigal is not an expert witness.
“Rule 701 of the Federal Rules of Evidence provides that lay opinion testimony is
permitted if it is “(a) rationally based on the witness’s perception; (b) helpful to clearly
understanding the witness’s testimony or to determining a fact in issue; and (c) not
based on scientific, technical, or other specialized knowledge within the scope of Rule
702.” Rapid Inc. v. Hungry Marketplace, Inc., Opp. No. 91236033, 2022 TTAB LEXIS
260, at 13-14* (emphasis omitted). “[T]he advisory committee notes accompanying
the amendment that added Rule 701(c) made clear that ‘particularized knowledge
that the witness has by virtue of his or her position in the business’ is not ‘scientific,
12 Id. at 41.

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technical, or other specialized knowledge, even if it involves knowledge that the
average person would have to consult an expert about….” Id. at *14.
We reviewed paragraphs 10-13 of Mr. Sigal’s declaration and find his testimony
rationally based on his perception as Applicant’s managing partner, helpful to our
understanding of his testimony and other facts at issue, and not based on scientific,
technical, or other specialized knowledge, but rather, on the particularized knowledge
the witness has through experience in his field. The objections are overruled.
3. Unsupported Evidence
Opposer objects to Mr. Sigal’s testimony declaration “at paragraphs 14-18, inter
alia, referencing alleged third-party trademarks, uses, or marketplace conditions
where the testimony is not supported by properly introduced documentary evidence
or where the witness lacks personal knowledge of the alleged uses.”13 But Mr. Sigal’s
testimony ends with paragraph 14, and his testimony there relates to Applicant’s
good faith adoption of 844-WIN-BIG.14 The objection is overruled.
4. Outdated or Incomplete USPTO Records
Opposer objects to Exhibits A-C of Applicant’s notice of reliance “to the extent it
relies on USPTO TSDR records for third-party applications or registrations that are
incomplete, outdated, or inaccurate as of the date they were made of record.”15
According to Opposer, “[s]everal records fail to reflect subsequent prosecution history,
changes in status, or intervening Board proceedings, rendering them misleading and
13 Id.
14 Id.
15 Id. at 41-42.

Opposition No. 91289155
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entitled to little or no probative weight.”16
But as Applicant observes, out of the approximately several hundred pages of
Exhibits A-C, Opposer “fails to identify a single purportedly incomplete, outdated, or
inaccurate record.”17 See Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380
(Fed. Cir. 2009) (a party’s “unsworn attorney argument . . . is not evidence”).
Moreover, there is no prohibition against introducing outdated or incomplete records.
Opposer’s objection is thus overruled, and “[w] e will accord this evidence whatever
probative value we deem appropriate.” Hangzhou Mengku Tech. Co. v. Shanghai
Zhengland Tech. Co., Opp. No. 91272143, 2024 TTAB LEXIS 575, at *13-15.
5. Third-Party Applications or Registrations that Post-Date
Opposer’s Alleged Priority Date
Opposer objects to the same evidence in Exhibits A-C of Mr. Sigal’s testimony
declaration on the ground that the attached third-party applications and
registrations identified therein purportedly post-date Opposer’s alleged May 2021
priority date.18 Opposer contends the evidence has “limited relevance, does not
diminish Opposer’s prior rights, and cannot be used to show that Opposer’s mark was
weak at the time Applicant adopted or applied for its asserted designation.”19 But in
arguing that the evidence has, at least, “limited” relevance, Opposer concedes that
the evidence is at least relevant to a degree. The objection is thus overruled; we
16 Id. at 42.
17 Id.
18 Id.
19 Id.

Opposition No. 91289155
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accord that evidence whatever probative value we deem appropriate. Hangzhou
Mengku Tech., 2024 TTAB LEXIS 575, at *13-15.
6. Third-Party Applications or Registrations Without Evidence of
Marketplace Use
Opposer objects to any third-party applications or registrations introduced
through Applicant’s notice of reliance “that are unaccompanied by competent
evidence of actual marketplace use” because Applicant did not prove that the marks
in those registrations are in use in commerce.20 According to Opposer, “[a]bsent
demonstrating the nature, extent, duration, geographic scope, or consumer exposure
of such alleged uses, the cited records are entitled to minimal probative weight in
assessing the strength of Opposers mark or the existence of a crowded field.”21 But
that does not make the documents inadmissible. The objection is thus overruled; we
accord that evidence whatever probative value we deem appropriate. Hangzhou
Mengku Tech., 2024 TTAB LEXIS 575, at *13-15.
7. Alleged Improper Use of Third-Party Evidence
Finally, Opposer objects to the Applicant’s notice of reliance “to the extent it is
offered to prove consumer perception, marketplace saturation or widespread
conditioning to distinguish among ‘WIN BIG’ marks” because “[t]hird-party
application and registration records, standing alone, are not probative of consumer
perception.”22
20 Id.
21 Id.
22 Id.

Opposition No. 91289155
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We sustain the objection as to pending applications in the record because,
contrary to Applicant’s contention, pending applications (even the “approved
applications” proffered by Applicant) have “‘no probative value other than as evidence
that the applications [were] filed.’” Edwards Lifesciences Corp. v. VigiLanz Corp.,
Opp. No. 91154210, 2010 TTAB LEXIS 84, at *10 n.4 (quoting In re Phillips-Van
Heusen Corp., No. 75664835, 2002 TTAB LEXIS 45, at *8 n.4)).
But we overrule it as to the mere offering of third-party registrations to show
weakness. Indeed, the whole point of submitting third-party registrations in this
context is to show conceptual weakness. See Juice Generation, Inc. v. GS Enters. LLC,
794 F.3d 1334, 1339 (Fed. Cir. 2015) (quoting 2 MCCARTHY ON TRADEMARKS AND
UNFAIR COMPETITION § 11:90 (4th ed. 2015) (“Third-party registrations are relevant
to prove that some segment of the composite marks which both contesting parties use
has a normally understood and well-recognized descriptive or suggestive meaning,
leading to the conclusion that segment is relatively weak.”).
C. Applicant’s Evidentiary Objections
Applicant has an objection or two of its own. Applicant first objects to the rebuttal
testimony declaration of Opposer’s attorney, Ms. Mathews (25 TTABVUE), and
requests that it be stricken and disregarded “to the extent she is testifying on the
facts of this case because she was never disclosed as a fact or expert witness in either
Opposer’s Initial or Pre-Trial disclosures.”23 According to Applicant, Ms. Mathews
“offers testimony in the form of factual statements and legal argument as to the
23 39 TTABVUE 45 (Applicant’s Brief).

Opposition No. 91289155
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contents of the webpages attached to her testimony, and making legal conclusions
regarding the use of Applicant’s mark,” which prejudices Applicant because it had no
opportunity to depose [her] or propound written discovery on the topics of her
testimony.”24
Applicant also objects to Ms. Mathews’ rebuttal testimony declaration “and the
exhibits attached thereto” because “it injects [her] as a fact witness in violation of the
attorney-witness rule and is inadmissible ….”25 For instance, asserts Applicant, Ms.
Mathews “‘testifies that Applicant’s mark ‘does not appear as a stand-alone identifier
or brand name,’ ‘is not displayed as a separate source-identifying mark,’ or that
Applicant’s Mark “appears only as contact information’ to name just a few
examples.”26
Opposer argues that these objections have no merit because “[c]ounsel of record
need not be separately disclosed as a witness,” and “[t]he Board routinely considers
testimony declarations by counsel of record authenticating documentary evidence,
including Internet evidence, without requiring disclosure as a witness.”27
Additionally, asserts Opposer, “Applicant had a full opportunity to cross-examine
[her] … and chose not to do so.”28 Moreover, asserts Opposer, “Applicant’s counsel …
submitted her own declaration … authenticating Internet evidence,” and “Applicant
24 Id.
25 Id. at 45-46.
26 Id. at 46 (citing 25 TTABVUE
27 41 TTABVIE 23 (Opposer’s Reply Brief).
28 Id.

Opposition No. 91289155
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cannot have it both ways ….”29
A party’s counsel of record generally need not be disclosed as a witness in initial
or pretrial disclosures, which are intended to identify non-party fact witnesses and
experts. See Trademark Rule 2.120(a), 37 C.F.R. § 2.120(a) and TBMP § 401.02. It’s
also true that the Board routinely accepts testimony declarations by counsel of record
that are limited to authenticating documentary evidence—including Internet
printouts and screenshots. See e.g., Flame & Wax, Inc. v. Laguna Candles, LLC, No.
92072343, 2022 TTAB LEXIS 272, at *17 (Petitioner’s counsel’s statement “identifies
and authenticates the documents … as those produced by Respondent’s counsel.”);
Sheetz of Del., Inc. v. Doctor’s Assocs., No. 91192657, 2013 TTAB LEXIS 468, at *11
(third-party Internet use authenticated by counsel). Such declarations are generally
viewed as foundational rather than substantive fact testimony. See Fed. Rule Evid.
901(a) (“To satisfy the requirement of authenticating or identifying an item of
evidence, the proponent must produce evidence sufficient to support a finding that
the item is what the proponent claims it is.”). “In other words, authentication
testimony does not add substantively to the evidence.” Kate Spade LLC v. Thatch,
No. 91216585, 2018 TTAB LEXIS 82, at *10).
But Ms. Mathews’ testimony goes beyond mere authentication. For example, she
testified that Applicant’s mark “does not appear as a stand-alone identifier or brand
name”; “is not displayed as a stand-alone identifying mark”; “appears solely as a
phone number for contact the firm, not as a trademark or source identifier” “and not
29 Id.

Opposition No. 91289155
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in any way as a stand-alone source-identifying mark.”30 She further testified that
after reviewing all of the materials, she “did not observe any advertising, promotional
content, or references to Applicant offering legal services outside the State of
Michigan.”31 These aren’t neutral descriptions of what appears on the webpages but
rather conclusions and legal characterizations as to how Applicant’s designation
functions in commerce, whether it serves as source-identification, and how it is
perceived by consumers—matters that go directly to the substantive issue in this
proceeding. Ms. Mathews’ statements cross the line into substantive fact testimony
and argument on contested issues. While counsel of record need not be disclosed as a
witness when providing only authentication testimony (Trademark Rule 2.120(a);
TBMP § 401.02), that principle doesn’t extend to substantive testimony on the merits.
We sustain Applicant’s objection to the rebuttal declaration of Ms. Mathews to
the extent it departs from authentic declaration testimony. We consider it only for
the limited purpose of authenticating the exhibits attached thereto (i.e., that they are
true and correct copies of the webpages or materials viewed).
D. Opposer’s Overlength Reply Brief
“Without prior leave of the Trademark Trial and Appeal Board, . . . a reply brief
shall not exceed twenty-five pages in its entirety.” Trademark Rule 2.128(b), 37.
C.F.R. § 2.28(b).”32 (emphasis added). “If a party files a brief that exceeds the page
30 25 TTABVUE 2-3 (Mathews Dec., ¶¶ 2-4,6-8).
31 Id. at 3 (¶¶ 10-11).
32 Parts of the brief that fall within the limit include, inter alia, the table of contents and
index of cases.

Opposition No. 91289155
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limit, but does not file a timely motion for leave to file such a brief, the brief will be
stricken in its entirety, without leave to file a substitute brief that meets the limit.”
TBMP § 537. “Strict compliance with the Trademark Rules of Practice, and where
applicable the Federal Rules of Civil Procedure and the Federal Rules of Evidence, is
required of all parties, whether or not they are represented by counsel.” Hole in 1
Drinks, Inc. v. Lajtay, No. 92065860, 2020 TTAB LEXIS 9, at *3.
Here, Opposer submitted a reply brief that is twenty-six (26) pages, including a
table of contents (optional to submit), index of cases (optional to submit), introduction
(optional to submit), argument, summary (optional to submit), and certificate of
services, which is more than twenty-five (25) pages. Notably, Applicant’s “conclusion”
on numbered pages 24-25 of the reply brief is single-spaced, leaving no doubt that the
page limit would have been exceeded by another page or two if Opposer had followed
proper procedures by using double spacing. This appears to be a subterfuge to avoid
the Board’s page limit. Cf. Consorzio del Prosciutto di Parma v. Parma Sausage
Prods. Inc., 1992 TTAB LEXIS 15, at *5 n.3 (warning that single-spaced footnotes
containing substantial discussion may be viewed as a subterfuge to avoid page limit).
We thus give Opposer’s reply brief no consideration.
III. The Record
The record includes the pleadings, the file of the Application by operation of
Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1), and the following additional
evidence submitted by the parties: Opposer submitted the testimony declarations

Opposition No. 91289155
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(with exhibits) of its partner, Frank Udinson,33 and its attorney, Jessica Eaves
Mathews.34 Applicant submitted the testimony declaration (with exhibits) of Vadim
Sigal, its managing partner in Applicant’s firm;35 and a notice of reliance on the file
history for Opposer’s pleaded application Serial No. 97454685 for the mark WIN BIG
LAW, third-party registration records, and printouts from third-party websites.36
IV. Entitlement to a Statutory Cause of Action
Establishing an entitlement to a statutory cause of action is a threshold
requirement in every inter partes case. See Corcamore, LLC v. SFM, LLC, 978 F.3d
1298, 1303 (Fed. Cir. 2020); Australian Therapeutic Supplies Pty. Ltd. v. Naked TM,
LLC, 965 F.3d 1370, 1373 (Fed. Cir. 2020). Therefore, Opposer, as plaintiff in this
cancellation proceeding, must prove its entitlement to a statutory cause of action
under Trademark Act Section 13, 15 U.S.C. § 1063. See, e.g., Meenaxi Enter., Inc. v.
Coca-Cola Co., 38 F.4th 1067, 1071-72 (Fed. Cir. 2022). Specifically, Opposer must
demonstrate that it has: (1) an interest falling within the zone of interests protected
by the statute, and (2) a reasonable belief in damage proximately caused by the
33 19 TTABVUE (“Udinson Dec.”).
34 20 TTABVUE (“First Mathews Dec.”); 21 TTABVUE (“Second Mathews Dec.”); 25
TTABVUE (“Mathews Rebuttal Dec.” with Exhibits 1-2); 26 TTABVUE (Mathews rebuttal
dec. exhibits 6-7); 27 TTABVUE (Mathews rebuttal dec. exhibits 3-5); 28 TTABVUE
(Mathews rebuttal dec. exhibit 6 part 3); 29 TTABVUE (Mathews rebuttal dec. exhibit 5 parts
3a and 3b).
35 23 TTABVUE (“Sigal Dec.”).
36 24 TTABVUE. Applicant also submitted a copy of its application and file history, which
was unnecessary because an opposed application is automatically of record in an opposition
proceeding. See In re SL&E Training Stable Inc., No. 78806669, 2008 TTAB LEXIS 55, at
*15 n.9 (attaching exhibits to brief of material already of record adds to the bulk of the file,
and requires Board to determine whether attachments had been properly made of record).

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registration of the mark. Curtin v. United Trademark Holdings, Inc., 137 F.4th 1359,
1367 (Fed. Cir. 2025) (citing Lexmark Int’l, Inc. v. Static Control Components, Inc.,
572 U.S. 118, 129-134 (2014)), cert. denied, __ U.S. __ (Apr. 20, 2026) (No. 25-435);
Corcamore, 978 F.3d at 1304-07.
Opposer’ entitlement to a statutory cause of action in this proceeding is supported
by the testimony of Frank Udinson, a partner in Opposer’s law firm, who plausibly
alleged that Applicant’s use and registration of 844-I-WIN-BIG is likely to cause
confusion with Opposer’s common law mark WIN BIG LAW. See, e.g., Monster Energy
Co. v. Lo, No. 81225050, 2023 TTAB LEXIS 14, at *16 (plausible likelihood of
confusion claim based on common law use is sufficient to show that an opposer has a
real interest in a proceeding beyond that of a mere intermeddler and a reasonable
basis for a belief in damage resulting from registration of the opposed mark);
Syngenta Crop Prot. Inc. v. Bio-Chek LLC, No. 91175091, 2009 TTAB LEXIS 70, at
*16 (testimony that plaintiff uses its mark “is sufficient to support opposer’s
allegations of a reasonable belief that it would be damaged by registration of
applicant’s mark.”).
V. Likelihood of Confusion
We begin with the claim of likelihood of confusion. Section 2(d) of the Trademark
Act prohibits registration of a mark that “[c]onsists or comprises a mark which so
resembles a mark registered in the Patent and Trademark Office, or a mark or
tradename previously used in the United States by another and not abandoned, as to
be likely, when used on or in connection with the goods or services of the applicant,

Opposition No. 91289155
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to cause confusion, mistake, or to deceive.” 15 U.S.C. § 1052(d). Thus, an opposer
must prove both priority and likelihood of confusion, and it must do so by a
preponderance of the evidence. See, e.g., Araujo v. Framboise Holdings Inc., 99 F.4th
1377, 1380 (Fed. Cir. 2024) (“The opposer has the burden to prove its prior use by a
preponderance of the evidence.”); Stratus Networks, Inc. v. UBTAUBET Commc’ns
Inc., 955 F.3d 994, 998 (Fed. Cir. 2020) (“In opposition proceedings, the opposer has
the burden of proving a likelihood of confusion by a preponderance of the evidence.”).
A. Priority and Distinctiveness
As noted above, Opposer bases its Section 2(d) claim on alleged prior use of the
term WIN BIG LAW. “A party opposing registration of a trademark due to a
likelihood of confusion with his own unregistered term cannot prevail unless he shows
that his term is distinctive of his goods, whether inherently or through the acquisition
of secondary meaning or through whatever other type of use may have developed a
trade identity.” Towers v. Advent Software, Inc., 913 F.2d 942, 945 (Fed. Cir. 1990)
(cleaned up); see also id. at 946 (“As to an unregistered term, such a likelihood of
confusion results when there are trade identity rights in the prior user's term. Those
trade identity rights arise when the term is distinctive, either inherently or through
the acquisition of secondary meaning.”). Thus, our evaluation of Opposer’s
proprietary rights in the term WIN BIG LAW begins with an analysis of its
distinctiveness.
Opposer claims common law rights in the term WIN BIG LAW for legal services

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based on use in commerce since at least May 6, 2021,37 and the record shows
commercial use and promotion of that term.38 But Opposer’s trial brief completely
fails to address whether WIN BIG LAW mark is distinctive even though Applicant
made it an issue. For example, Applicant denied Opposer’s allegation in the notice
of opposition that WIN BIG LAW “has become distinctive of Opposer’s services.”39
Applicant also made of record approximately 46 third-party registrations for marks
containing the words BIG and/or WIN” for legal services “to show the descriptiveness
and/or suggestiveness of Opposer’s Mark and its related weakness.”40 In addition,
Opposer itself highlights, in its main brief, that “in a directly related opposition
involving the same parties and services, Applicant alleges that the phrase ‘WIN BIG’
is merely descriptive or laudatory and so commonly used that it lacks
distinctiveness.”41
“A mark is merely descriptive if it immediately conveys information concerning a
feature, quality, or characteristic of the goods or services for which registration is
sought.” Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965, 975 (Fed. Cir.
2018) (quoting In re N.C. Lottery, 866 F.3d 1363, 1367 (Fed. Cir. 2017)). A mark is
suggestive, and not merely descriptive, if it “requires imagination, thought and
37 19 TTABVUE 38 (Udinson Decl., ¶ 4).
38 See generally, 19 TTABVUE (Udenson Dec.).
39 4 TTABVUE 3 (Answer, ¶4).
40 39 TTABVUE 18-19 (Applicant’s Brief); 24 TTABVUE 176-346 (Applicant’s NOR).
41 38 TTABVUE 21-22 (Opposer’s Brief). See also
the documents

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perception to reach a conclusion as to the nature of the goods.” In re Fat Boys Water
Sports LLC, No. 86490930, 2016 TTAB LEXIS 150, at *11 (quoting StonCor Grp., Inc.
v. Specialty Coatings, Inc., 759 F.3d 1327, 1332-33 (Fed. Cir. 2014)); see also In re
Gyulay, 820 F.2d 1216, 1217 (Fed. Cir. 1987). Laudatory terms that attribute quality,
excellence, or desirability to goods or services are considered merely descriptive. See
DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1256 (Fed. Cir.
2012); In re Boston Beer Co., 198 F.3d 1370, 1373 (Fed. Cir. 1999) (“THE BEST BEER
IN AMERICA” held merely descriptive and laudatory); In re Nett Designs, Inc., 236
F.3d 1339, 1342 (Fed. Cir. 2001) (“THE ULTIMATE BIKE RACK”) (same).
We first examine the individual components of Opposer’s claimed mark. The word
WIN is laudatory, suggesting success or victory in legal proceedings. Opposer admits
this in an office action response issued with regard to its pleaded pending application
for WIN BIG LAW: “The term WIN is commonly used among registrations for legal
services, and is therefore a weak term with regard to legal services and entitled to
only a narrow scope of protection.”42 The term BIG is likewise laudatory, implying
large, significant, or superior results. And the term LAW, which Opposer has
disclaimed in its application,43 is descriptive or generic for legal services.
We next consider Opposer’s WIN BIG LAW mark as a whole, and whether the
combination of component words in the mark “conveys any distinctive source-
identifying impression contrary to the descriptiveness of the individual parts.”
42 24 TTABVUE 130.
43 Id. at 80.

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Oppedahl & Larson, 373 F.3d at 1374. See also In re Gould Paper Corp., 834 F.2d
1017, 1018 (Fed. Cir. 1987). “The compound term [WIN BIG LAW] will be found
merely descriptive if the individual components retain their descriptive meaning in
relation to the services and the combination does not form a mark which has a distinct
nondescriptive meaning of its own as a whole.” Oppedahl & Larson, 373 F.3d at 1374.
“However, if those [three] portions individually are merely descriptive of an aspect of
[Opposer’s services], the PTO must also determine whether the mark as a whole, i.e.,
the combination of the individual parts, conveys any distinctive source-identifying
impression contrary to the descriptiveness of the individual parts.” Id.
Here, the combination WIN, BIG, and LAW as “WIN BIG LAW” does not create a
unique or incongruous commercial impression. Instead, as Opposer admits in its
pleaded pending application for that same mark: “The Applicant’s mark WIN BIG
LAW uses WIN as a verb, BIG as an adverb, and LAW as a noun, where the
meaning of the phrase is a law practice that “wins big” on behalf of its
clients, and the commercial impression is that the mark describes the
service provider.”44 This is precisely the type of laudatory, outcome-oriented
message that has been held merely descriptive in analogous contexts. See Boston
Beer, 198 F.3d at 1373-74; In re The Place, Inc., No. 76436826, 2005 TTAB LEXIS
451, at *6-7 (finding “THE GREATEST BAR” “laudatory and merely descriptive”).
While Opposer now contends that its prosecution arguments were limited to the term
WIN standing alone, the statements remain probative of how the term WIN is
44 Id. at 126 (emphasis added).

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perceived in the legal services field.
We find the claimed mark WIN BIG LAW is merely descriptive. Opposer,
therefore, was required to prove that its proposed mark had acquired distinctiveness
through secondary meaning. See Steelbuilding.com, 415 F.3d 1293, 1300 (Fed. Cir.
2005). In Steelbuilding.com, the Federal Circuit held that when a mark is highly
descriptive, the evidentiary burden of establishing acquired distinctiveness is
substantial. Id. at 1296. Circumstantial evidence such as length of use and
advertising expenditures, standing alone, is often insufficient. Direct evidence of
consumer recognition—such as consumer surveys or declarations from customers or
others in trade—is particularly important in such cases. Id.
Here, Opposer’s evidence consists primarily of its length of use of the term WIN
BIG LAW for around five years, or since May 6, 2021, substantial advertising
expenditures, social media activity, and billboards. While this evidence demonstrates
commercial promotion of the claimed mark, it consists largely of testimony from an
interested party and lacks objective evidence such as consumer surveys or third-party
declarations showing that the relevant consumers perceive WIN BIG LAW as
identifying Opposer as the source of the services, rather than as a promotional slogan
touting successful results. See e.g., Heritage Alliance v. Am. Policy Roundtable,
Docket No. 24-1155, 2023 TTAB LEXIS 429, at *32 (Fed. Cir. Apr. 9, 2025)
(precedential) (affirming the Board’s dismissal of the opposition based on the
opposer’s failure to prove that “iVoterGuide” and “iVoterGuide.com” (used for voter
guide/information services) had acquired distinctiveness); Comptime, Inc. v. E.

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Frances Paper, Inc., No. 92073884, 2023 TTAB LEXIS 597, at *19-23 (customer
reviews, ten years of substantially exclusive use, advertising expenditures, and
around $1.825 million in revenue insufficient to establish acquired distinctiveness);
In re Candy Bouquet Int’l, Inc., 2004 TTAB LEXIS 544, at *19-20 (applicant’s
evidence of 14 years of use, advertising expenditures, and approximately $9.9 million
in revenues held insufficient to establish acquired distinctiveness). Given the highly
descriptive nature of the mark WIN BIG LAW in this case, Opposer’s evidence falls
short of the substantial showing required to establish acquired distinctiveness.
B. Conclusion
Weighing the evidence as a whole, we conclude that Opposer has failed to prove
that its claimed mark is distinctive, whether inherently or through acquired
distinctiveness. Because Opposer has not established that it owns a protectable mark,
it has not proven priority. Opposer’s Section 2(d) claim therefore fails.
VI. Nonuse
We turn now to Opposer’s second claim alleged in the notice of opposition: nonuse
under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). Although the notice of
opposition refers to both a lack of “bona fide use or intent to use,”45 the application
was filed under Section 1(a) of the Trademark Act based on actual use in commerce.46
Because a claim of lack of bona fide intent to use is a proper ground for opposition
only with respect to applications filed under Section 1(b) of the Trademark Act, see,
45 1 TTABVUE 6-8
46 See note 1 supra.

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e.g., M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368, 1375-76 (Fed. Cir. 2015), we
construe the claim as one alleging that Applicant had not made bona fide use of the
mark in commerce at the time it filed the application.47
We note that in paragraph 25 of the Notice of Opposition, Opposer alleged that
“Applicant exclusively advertises and provides personal injury services under the
844-I-WIN-BIG Mark.”48 That contention is difficult to reconcile with Opposer’s claim
that Applicant has made no bona fide use of the mark.
In its brief, Opposer argues that Applicant’s use does not qualify as bona fide
trademark use because (1) Applicant’s services are provided only in Michigan,49 and
(2) Applicant uses 844-I-WIN-BIG solely as a telephone number and point of contact,
rather than as a source identifier for its legal services.50 We address each argument
below.
A. Geographic Scope of Use
Opposer contends that because Applicant provides legal services only in Michigan,
its use does not constitute “use in commerce” under the Lanham Act.51 Applicant
47 While Opposer’s arguments in its brief focus heavily on the way Applicant uses 844-I-WIN-
BIG (i.e., solely as a telephone number and point of contact) and thus resemble a claim that
the designation fails to function as a mark, recall that we denied Opposer’s motion to amend
the notice of opposition to add a separate failure to function claim. See Section IIA supra.
Accordingly, we only address the claim as originally pleaded—whether Applicant made bona
fide use of the mark in commerce as of the filing date under Section 1(a) of the Trademark
Act. The manner-of-use evidence remains relevant, however, to the question of whether
Applicant’s use qualifies as bona fide trademark use.
48 Id. (¶ 25).
49 38 TTABVUE 32-34 (Opposer’s Brief).
50 Id. at 32, 34.
51 Id. at 33.

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admits that its legal services are provided exclusively in Michigan,52 but asserts that
its attorneys are also admitted to practice in other states.53 In any event, even though
Applicant’s physical rendering of services is limited to Michigan, the record shows
that Applicant advertises its services on a publicly accessible website and through
other online channels that reach consumers nationwide.54
Use of a mark in connection with services that affect interstate commerce satisfies
the “use in commerce” requirement of Section 1(a), even if the services themselves
are rendered in only one state. See Larry Harmon Pictures Corp. v. Williams Rest.
Corp., 929 F.2d 662, 665 (Fed. Cir. 1991). In Larry Harmon, the Federal Circuit held
that a single-location restaurant satisfied the statutory “use in commerce”
requirement because its advertising reached customers from other states and because
its services affected interstate commerce. The Court emphasized that the Lanham
Act defines “commerce” as “all commerce which may lawfully be regulated by
Congress,” and rejected any requirement that the services themselves must be
rendered across state lines. Id. at 665. This principle has been applied to a variety of
service marks. See, e.g., In re Gastown, Inc., 326 F.2d 780, 782 (CCPA 1964)
(automotive service station located in one state satisfied use in commerce
requirement where it was situated on a federal interstate highway and served
customers traveling in interstate commerce); In re G.J. Sherrard Co., 1966 TTAB
52 4 TTABVUE 8-9 (Applicant’s Answer, ¶¶ 27-29).
53 39 TTABVUE 33 (Applicant’s Brief).
54 23 TTABVUE 4 (Sigal Decl., ¶ 11); 24 TTABVUE 324-42 (Exhibit D).

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LEXIS 23, at *3 (hotel located in only one state had valid use in commerce where it
had out-of-state guests and advertised in national magazines).
Here, Applicant’s website is accessible to potential clients throughout the United
States, and its services affect interstate commerce. On this record, Opposer has not
demonstrated that Applicant’s use fails to satisfy the interstate commerce
requirement of Section 1(a).
B. Manner of Use
Opposer’s principal argument is that Applicant uses 844-I-WIN-BIG only as a
telephone number and method of contacting the firm, and not as a source identifier
for its legal services.55 Opposer relies on Applicant’s specimens and website, where
the designation appears with a “Call” prompt, next to phone icons, and alongside
Applicant’s numeric telephone number.56 Opposer cites Paramount Pictures Corp. v.
White, 1994 TTAB LEXIS 15, at *12, and Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d
1350, 1360-62 (Fed. Cir. 2009), for the proposition that use must be more than
nominal or preparatory.57
While the way a designation is used is relevant to determining whether it
constitutes bona fide trademark use, the evidence shows that Applicant was actively
providing personal injury legal services to clients as of the filing date of the
application and was displaying 844-I-WIN-BIG on its website in connection with
55 38 TTABVUE 34-35 (Opposer’s Brief).
56 Id. at 34.
57 Id. at 34-35.

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those services and alongside its firm name.58
C. Conclusion
On this record, Opposer has failed to prove that Applicant did not make bona fide
use of 844-I-WIN-BIG in commerce as of the filing date. Because Opposer has not
carried its burden of showing that Applicant’s use fails to satisfy the use-in-commerce
requirement of Section 1(a), the nonuse claim fails.
Decision: The opposition is dismissed.
58 23 TTABVUE 4 (Sigal Decl., ¶ 11); 24 TTABVUE 324-42 (Exhibit D).