Case Victories

Koko Braddahz LLC v. SHOOTZFAM, LLC
Proceeding No.: 91275718
Practice Area: Trademark Opposition
Outcome: Opposition sustained.
Description: Successful opposition to third party application seeking to register SHOOTZ based upon client’s earlier rights to the SHOOTZ trademark.

Bauer Hockey, Inc. v. Bodyjar, Inc.
Proceeding No.: 91225213
Practice Area: Trademark Opposition
Outcome: Opposition dismissed.
Description: Third party attempted to oppose client’s application for SIDE MISSION based upon earlier registrations for MISSION. After conveying to third party the intent to defend the action, the third party voluntarily asked the Trademark Trial and Appeal Board to dismiss the opposition.

Citigroup, Inc. v. City Title Loan, LLC
Proceeding No.: 91219849
Practice Area: Trademark Opposition
Outcome: Opposition dismissed.
Description: Third party attempted to oppose client’s application for CITY LOAN based upon earlier registrations for CITI and CITIBANK, among others. After conveying to third party the intent to defend the action, the third party voluntarily asked the Trademark Trial and Appeal Board to dismiss the opposition.

Echo Design Group, Inc. v.Echo Park Surf Squad
Proceeding No.: 91217744
Practice Area: Trademark Opposition
Outcome: Opposition dismissed.
Description: Third party attempted to oppose client’s application for CITY LOAN based upon earlier registrations for CITI and CITIBANK, among others. After conveying to third party the intent to defend the action, the third party voluntarily asked the Trademark Trial and Appeal Board to dismiss the opposition.

Naomi Snyder, Inc. v. Albion Co., Ltd.
Proceeding No.: 92084748 (March 27, 2024)
Practice Area: Trademark Cancellation
Outcome: Trademark registration cancelled by Trademark Trial and Appeal Board.
Description: Cancellation before the Trademark Trial and Appeal Board for EXAGE trademark registration that was blocking client’s application for XAGE3.

Novatech Inc. v. Novatech Multimedia & Security
Proceeding No.: 92084798 (March 27, 2024)
Practice Area: Trademark Cancellation
Outcome: Trademark registration cancelled by Trademark Trial and Appeal Board.
Description: Cancellation before the Trademark Trial and Appeal Board for NOVATECH MULTIMEDIA & SECURITY trademark registration that was blocking client’s applications NOVATECH and NOVATECH PRO.

Tara Brands, LLC v. Taurus For Men, LLC
Proceeding No.: 92083197 (September 13, 2023)
Practice Area: Trademark Cancellation
Outcome: Trademark registration cancelled by Trademark Trial and Appeal Board.
Description: Cancellation before the Trademark Trial and Appeal Board for TAURUS trademark registration that was blocking client’s application for TAURUS.

STR Natural, Inc. v. Stradivarius España, S.A.
Proceeding No.: 92083145 (August 31, 2023)
Practice Area: Trademark Cancellation
Outcome: Trademark registration cancelled by Trademark Trial and Appeal Board.
Description: Cancellation before the Trademark Trial and Appeal Board for STR trademark registration that was blocking client’s application for STR NATURAL.

Naomi Snyder, Inc. v. Wintis Corporation
Proceeding No.: 92082452 (June 2, 2023)
Practice Area: Trademark Cancellation
Outcome: Trademark registration cancelled by Trademark Trial and Appeal Board.
Description: Cancellation before the Trademark Trial and Appeal Board for ORGANIC LOVE trademark registration that was blocking client’s application for LOVE IS ORGANIC.

Notary Nation, Inc. v. Notary Nation, LLC
Proceeding No.: 92080049 (July 1, 2022)
Practice Area: Trademark Cancellation
Outcome: Trademark registration cancelled by Trademark Trial and Appeal Board.
Description: Cancellation before the Trademark Trial and Appeal Board for NOTARY NATION trademark registration based upon client’s earlier trademark rights to identical mark NOTARY NATION.

Koko Braddahz LLC v. New Shoots Limited
Proceeding No.: 92079545 (April 20, 2022)
Practice Area: Trademark Cancellation
Outcome: Trademark registrations cancelled by Trademark Trial and Appeal Board.
Description: Cancellation before the Trademark Trial and Appeal Board for NEW SHOOTS based upon client’s earlier rights to the SHOOTZ trademark.

Tara Brands, LLC v. Fundamental Earth, Inc.
Proceeding No.: 92077546 (July 2, 2021)
Practice Area: Trademark Cancellation
Outcome: Trademark registration cancelled by Trademark Trial and Appeal Board.
Description: A fraudulent trademark registration for FUNDAMENTAL was blocking client’s application to register the FUNDAMENTAL trademark for hair care products. Successfully petitioned to cancel the fraudulent registration.

Gary Christopher v. Ryan Grepper
Proceeding No.: 92070792 (July 20, 2020)
Practice Area: Trademark Cancellation
Outcome: Trademark registrations cancelled by Trademark Trial and Appeal Board.
Description: Cancellation before the Trademark Trial and Appeal Board for COOLEST coolers trademark registrations based upon client’s earlier trademark rights.

Tara Brands, LLC v. Tiburon Holdings, Inc.
Proceeding No.: 92068088 (March 20, 2019)
Practice Area: Trademark Cancellation
Outcome: Trademark registration cancelled by Trademark Trial and Appeal Board.
Description: A fraudulent trademark registration for ANATOMY was blocking client’s application to register the ANATOMY trademark for hair care products. Petitioned to cancel the fraudulent registration and successfully moved the Trademark Trial and Appeal Board for terminating sanctions when the opposing party failed to respond to discovery.

Tamara Latta v. Yapp Media, LLC
Proceeding No.: 92066869 (January 10, 2018)
Practice Area: Trademark Cancellation
Outcome: Trademark registration cancelled by Trademark Trial and Appeal Board.
Description: A fraudulent trademark registration for SPORTSYAPPER was blocking client’s application to register the SPORTSYAP! trademark for a sports app. Petitioned to cancel the fraudulent registration and successfully moved the Trademark Trial and Appeal Board for default judgment when the opposing party failed to respond.

LUV.IT Technologies, Inc. v. Bedrock VC, Inc.
Proceeding No.: 92065031 (March 26, 2018)
Practice Area: Trademark Cancellation
Outcome: Successfully defended attempt to cancel client’s trademark registration.
Description: When a company attempted to register LUVIT as a trademark, the U.S. Patent and Trademark Office refused registration based upon our client’s registration for LOVE IT. The company then resorted to trademark bully tactics and attempted to cancel our client’s trademark registration. Through careful and strategic tactics, The Kinder Law Group used the motion and discovery processes to place the case in position for judgment on the pleadings. The Trademark Trial and Appeal Board granted the judgment on the pleadings and dismissed the cancellation attempt.

Streamline Design & Silkscreen, Inc. v. Paper, Denim and Cloth, Inc.
Proceeding No.: 92062238 (March 29, 2016)
Practice Area: Trademark Cancellation
Outcome: Trademark registrations cancelled by Trademark Trial and Appeal Board.
Description: Several fraudulent trademark registrations for RESIN were blocking client’s application to register the IRON & RESIN trademark for retail clothing store services. Petitioned to cancel the fraudulent registrations and successfully moved the Trademark Trial and Appeal Board for default judgment when the opposing party failed to respond.

Relaximals, Inc. v. Brentwood Originals, LLC
Practice Area: Copyright Infringement
Outcome: Transferred case to insurance defense counsel.
Description: Sometimes the attorneys at The Kinder Law Group are doing their best work when they negotiate themselves out of a job. Here, the client was wrongly accused of copyright infringement and was faced with having to spend money to defend the case. The Kinder Law Group persuaded the client’s insurance company to defend the case on behalf of the client. The Kinder Law Group transferred the case to insurance defense counsel to defend the case at no additional cost to the client.

EKPG, Inc. v. LAT, LLC
Practice Area: Copyright Infringement
Outcome: Settled pursuant to a confidential win-win settlement agreement.
Description: Defended copyright infringement case involving fabric design. Resolved the case via confidential settlement agreement. Opposing party was so impressed with the manner in which TKLG resolved the case, they later ended up retaining TKLG. How many firms can claim to make both their client and the opposing party happy.

Cobra Engineering, Inc. v. Harley Davidson, Inc.
Practice Area: Copyright Infringement
Outcome: Settled pursuant to a confidential settlement agreement.
Description: Prosecuted a declaratory judgment action for non-infringement of copyright in regards to claims of copyright infringement involving the fair use display of Harley-Davidson motorcycles in company catalogs promotional of client’s aftermarket motorcycle parts and accessories products.

Wind Creek v. Tech Admin
(NAF Case No. FA1509001639763) [windcreek.com]: When a well-financed casino filed a domain name complaint with WIPO, Mr. Kinder defended the action and contested the wrongful accusation of cybersquatting. After the Panelist rejected Mr. Kinder’s arguments and issued a decision granting transfer, TKLG filed an appeal to the U.S. District Court. The casino owner retained legal counsel who specialized in tribal law who attempted to subvert the appeal.When Mr. Kinder forcefully opposed, the other side knew they were going to lose and agreed to enter into a consent judgment withdrawing the earlier panel decision. As a result, the client was entirely vindicated of any wrongdoing.

Defy Media v. Virtual Point
(WIPO Case No. 2015-1249) [addicting-games.com]: When a well-financed company (successor to Viacom) filed a UDRP action with WIPO in Geneva, Switzerland, Mr. Kinder contacted the company’s in-house counsel and offered them an opportunity to withdraw the complaint before he filed his response. When they refused, Mr. Kinder defended the action and proved that the other side was using the UDRP process in bad faith and attempting to take by force what was not rightfully theirs.

City Title Loan, LLC v. Bellnames Privacy Protection Service
(WIPO Case No. 2012-2021) [cityloan.com]: After filing a comprehensive complaint before the World Intellectual Property Organization in Geneva, Switzerland, Mr. Kinder successfully negotiated the immediate transfer of the domain name.

Diamond Mattress Company, Inc. v. Diamond Mattress
(WIPO Case No. D2010-1637) [diamondmattress.net] and [diamondmattress.org]: When a customer registered the domain name equivalent of a client’s brand name, Mr. Kinder coordinated a legal strategy that firmly, yet respectfully, took back what rightfully belonged to the client. The relationship with the client was preserved while maintaining the client’s rights.

Smiths Group plc v. Kevin Daste
(NAF Case No. FA0603000662360) [smithdetection.com] – A cybersquatter had registered the domain name equivalent of the Smiths Group multinational business. TKLG founder Brian Kinder demonstrated clear rights to the trademark and assembled a hard-hitting complaint. The domain name was ordered transferred to the client. Link to decision.

Gilead Sciences v. Kumar Patel
(WIPO Case No. D2005-0831) [gilead-sciences.com] – In this UDRP proceeding, a sophisticated cybersquatter had registered the hyphenated domain name equivalent of the names for several high profile companies, including many in the pharmaceutical industry. The cybersquatter attempted to create a First Amendment defense relating to Freedom of Speech by creating a website that featured highly inflammatory (and wholly untrue) statements concerning the target companies. Despite lawyers for other companies being unsuccessful in their efforts to recover the domain names, TKLG founder Brian Kinder created and implemented a sophisticated research strategy to gather evidence demonstrating bad faith registration and use (as opposed to a legitimately aggrieved and legitimate free speech issue). The domain name was ordered transferred to the client.

Crystal Cathedral v. Ed Stuivenberg
(World Intellectual Property Organization) Case No. D2002-0102 [thehourofpower.com]: A cybersquatter registered the domain name equivalent of a religious program broadcast throughout the world. He then put up a pornographic website in an effort to extort a quick settlement. Instead, Mr. Kinder quickly and inexpensively obtained a transfer order on behalf of the client.