This Opinion is a
Precedent of the TTAB
Hearing: December 10, 2025 Mailed: September 10, 2026
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
Olsman, MacKenzie, Peacock & Wallace, P.C.
v.
Emily Grace Thomas
Opposition No. 91272167
Mary Margaret L. O’Donnell of Blue Filament Law PLLC,
for Olsman, MacKenzie, Peacock & Wallace, P.C.
Richard W. Hoffmann of Dinsmore & Shohl LLP,1
for Emily Grace Thomas.
Before English, Stanley, and Lavache,
Administrative Trademark Judges.
Opinion by Stanley, Administrative Trademark Judge:
This case concerns a dispute between a law firm and its former associate over
ownership of a trademark that the associate conceived before joining the firm, but
which was not finalized or used in commerce until after her employment began.
1 The change of correspondence for Applicant Emily Grace Thomas, filed September 2, 2026,
is noted, and the Board’s records have been updated accordingly.
Opposition No. 91272167
Emily Grace Thomas (“Applicant”) seeks registration on the Principal Register of
the composite mark (with “BIRTH JUSTICE” disclaimed) for “legal
services, namely, providing legal consultation and research services, and litigation
assistance and strategy services relating to birth injury,” in International Class 45.2
Olsman, MacKenzie, Peacock & Wallace, P.C. (“Opposer” or the “Olsman firm”)
opposes registration on the grounds of non-ownership, fraud based on non-ownership
and an incorrect domicile address, and likelihood of confusion under Trademark Act
Section 2(d), 15 U.S.C. § 1052(d), based on prior use of the composite mark
in connection with legal services.3 In support of its claims, Opposer
2 Application Serial No. 90387461 was filed on December 16, 2020, based upon Applicant’s
allegation of use of the mark in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), alleging February 25, 2019 as the date of first use anywhere and first use in commerce. The application includes the following description of the mark: “The mark consists of the word ‘BIRTH’ above the word ‘JUSTICE’, to the left of these words is a stylized design of lady justice holding a baby in her right arm with a design [of] a sword behind her.” Color is not claimed as a feature of the mark.
3 Notice of Opposition, 1 TTABVUE.
Citations to the record throughout the decision include references to TTABVUE, the Board’s online docketing system. The number preceding “TTABVUE” corresponds to the docket entry number; the number(s) following “TTABVUE” refer to the page number(s) of that particular docket entry.
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pleads ownership of a trademark application for its pleaded composite mark for “legal
services,” in International Class 45.4
In her answer, Applicant admits that: (1) “Opposer’s US Application Serial No.
97062312 [is] pending with the USPTO for the identified mark in connection with
legal services”;5 (2) she was employed by Opposer “from approximately June 2018
through early September 2021”;6 (3) “[w]hile employed by Opposer and
notwithstanding Opposer’s rights in Opposer’s BIRTH JUSTICE Marks, including
but not limited to the [pleaded Birth Justice] logo, Applicant started a ‘Birth Justice’
Facebook page in June 2019”;7 (4) Applicant filed the opposed application in her own
4 Application Serial No. 97062312 was filed on October 6, 2021, based upon Opposer’s allegation of use of the mark in commerce under Section 1(a) of the Trademark Act, alleging August 10, 2018 as the date of first use anywhere and “October 2018” as the date of first use in commerce. The application includes the following description of the mark: “The mark consists of the [word] ‘BIRTH’ above the word ‘JUSTICE’ to the left of a stylized design of a blindfolded female figure holding a baby in her right arm, a set of scales in her left hand, and a sword behind her.” Color is not claimed as a feature of the mark.
Applicant argues in her brief that Opposer misrepresented the date of first use in its pleaded application. Applicant’s Br., 79 TTABVUE 34-37, 39-40. However, Opposer’s pleaded application is not before us. The Board has no jurisdiction over an application that is still pending before an examining attorney. See, e.g., Home Juice Co. v. Runglin Cos. Inc., No. 92014533, 1986 WL 83744, at *2 n.7 (TTAB 1986). In any event, a false date of first use in an application, alone, does not constitute fraud. Hiraga v. Arena, No. 92047976, 2009 WL 723334, at *6 (TTAB 2009) (“[T]he critical question in this case is whether the mark was in use in connection with the identified goods as of the filing date of his use-based application. That is, if the mark was in use in commerce as of the filing date, then the claimed date of first use, even if false, does not constitute fraud because the first use date is not material to the Office’s decision to approve a mark for publication.”).
5 Answer, 9 TTABVUE 4-5, ¶ 4.
6 Id. at 5, ¶ 6.
7 Id. at 5-6, ¶ 8. Although Applicant admits in Paragraph 8 that she started a “Birth Justice”
Facebook page in June 2019 “notwithstanding Opposer’s rights in Opposer’s BIRTH JUSTICE Marks,” we do not interpret this as an admission that Opposer owns its pleaded composite mark; the admission does not specify what “rights” Opposer has in its pleaded mark, and Applicant’s denials elsewhere in the Answer clearly demonstrate that she denies Opposer’s claims in this proceeding.
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name while still employed by Opposer and “used her then office mailing address at
[Opposer’s firm,] 2684 West [E]leven Mile Road, Berkley MI 48072”;8 (5) “[a] little
over a month after filing the Opposed BIRTH JUSTICE Application, and while still
employed by Opposer, Applicant filed a request to update the address associated with
the Opposed Application to her own address …”;9 (6) Applicant “was employed by
Opposer as of February 25, 2019” (i.e., the claimed first use date in the application);10
(7) Applicant’s “specimens consist of Facebook pages maintained by Applicant” and
“the Facebook pages tout[] Opposer’s settlement awards and reflect[] the
birthjustice.com domain name, which redirected to Applicant’s biography page” on
Opposer’s website, olsmanlaw.com;11 and (8) Applicant left the Olsman firm “on or
about September 2, 2021.”12 Applicant otherwise denies the salient allegations in the
Notice of Opposition.13
8 Id. at 7, ¶ 12; see also id. at 15, ¶ 42.
9 Id. at 7, ¶12.
10 Id. at 8, ¶¶ 13-14.
11 Id. at 9, ¶ 17.
12 Id. at 15, ¶ 37.
13 In her answer, Applicant also pleaded four “affirmative defenses” (lack of priority, lack of
a likelihood of confusion, estoppel, and acquiescence). Id. at 19-20. Lack of priority and lack of a likelihood of confusion are not true affirmative defenses, but rather are amplifications of Applicant’s denials to the allegations underlying Opposer’s Section 2(d) claim. Applicant did not pursue her estoppel or acquiescence defenses at trial or address them in her brief, thereby forfeiting or impliedly waiving those defenses. See Tequila Cuadra S. de RL de CV v. Manufacturera De Botas Cuadra, S.A. de C.V., No. 91282327, 2025 WL 1431504, at *1 n.3 (TTAB 2025); Keystone Consol. Indus. v. Franklin Inv. Corp., No. 92066927, 2024 WL 3771168, at *2 n.10 (TTAB 2024) (“Affirmative defenses that were asserted in an answer but then not pursued at trial may be deemed impliedly waived, while affirmative defenses that were never asserted may be deemed forfeited.”).
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The case is fully briefed, and an oral hearing was held on December 10, 2025.
Having considered the evidentiary record, the pleadings, the parties’ arguments, and
applicable authorities, as explained below, we find that Opposer has proven by a
preponderance of the evidence its entitlement to bring a statutory cause of action and
its non-ownership claim. See Wonderbread 5 v. Gilles, No. 92052150, 2015 WL
4380986, at *7 (TTAB 2015) (citing Metro Traffic Control, Inc. v. Shadow Network
Inc., 104 F.3d 336, 339 (Fed. Cir. 1997)) (non-ownership must be proven by a
preponderance of the evidence). We therefore sustain the opposition on that ground.
We do not reach Opposer’s other claims. See Tequila Cuadra, 2025 WL 1431504, at
*1.
I. The Record
The record consists of the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of Applicant’s opposed application. Before either party
filed any evidence in the proceeding, the parties stipulated that “[a]ll documents
produced by either party in this Opposition that bear a production number shall be
deemed authenticated for trial”14 and that “the discovery deposition of Daniel
Kosmowski may be offered in evidence by way of Notice of Reliance in lieu of a
separate testimony deposition.”15 The Board approved the former stipulation in an
order dated March 8, 2024,16 and we now approve the latter stipulation.
14 37 TTABVUE.
15 39 TTABVUE.
16 38 TTABVUE.
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During its trial period, Opposer submitted:
• Opposer’s First Notice of Reliance (“NOR”) on Applicant’s Disclosures
and Interrogatory and Admission Request Responses.17
• Opposer’s Second Notice of Reliance on Discovery Deposition of
Applicant Emily Grace Thomas and exhibits thereto (“Thomas
Discovery Deposition Transcript”).18
• Opposer’s Third Notice of Reliance on Stipulated Non-Party Witness
Discovery Deposition of Daniel Kosmowski (“Kosmowski Deposition
Transcript”).19
• Opposer’s Fourth Notice of Reliance on Stipulated Admissibility of
Documents, Printed Publications and Internet Materials.20
• Opposer’s Fifth Notice of Reliance on Stipulated Admissibility of
Documents, Printed Publications and/or Internet Materials.21
• Declaration of Donna MacKenzie and exhibits thereto (“MacKenzie
Declaration”).22
During her trial period, Applicant submitted:
• Cross-Examination Testimonial Transcript of Donna MacKenzie and
exhibits thereto (“MacKenzie Cross Transcript”).23
17 Opposer’s First NOR, 40 TTABVUE.
18 Thomas Disc. Depo. Tr., 41 TTABVUE (confidential version), 43 TTABVUE (public, redacted version). 43 TTABVUE is a “corrected” version of 42 TTABVUE. We have only considered 43 TTABVUE.
For information in the briefs and evidence filed under seal as confidential, we discuss the confidential information only in general terms.
19 Kosmowski Depo. Tr., 45 TTABVUE.
20 Opposer’s Fourth NOR, 44 TTABVUE.
21 Opposer’s Fifth NOR, 48 TTABVUE (public, redacted version), 49 TTABVUE (confidential
version).
22 MacKenzie Decl., 46 (confidential version), 47 TTABVUE (public, redacted version).
23 MacKenzie Cross Tr., 56 TTABVUE.
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• Declaration of Emily Grace Thomas and exhibits thereto (“Thomas
Declaration”).24
• Applicant’s First Notice of Reliance on Rule 30(b)(6) Discovery
Deposition of Opposer and Individual Discovery Deposition of Ms.
MacKenzie and exhibits thereto (“MacKenzie Deposition Transcript”).25
• Applicant’s Second Notice of Reliance on Official Records: Court filings
and application file for Opposer’s pleaded application.26
• Applicant’s Third Notice of Reliance on Opposer’s Initial Disclosures and
Discovery Responses.27
• Corrected Declaration of Daniel Kosmowski and exhibits thereto
(“Kosmowski Declaration”).28
During its rebuttal period, Opposer submitted:
• Testimonial Deposition Transcript of Emily Grace Thomas and exhibits
thereto (“Thomas Testimony Transcript”).29
• Cross Examination Testimonial Transcript of Emily Grace Thomas and
exhibits thereto (“Thomas Cross Transcript”).30
• Rebuttal Declaration of Donna MacKenzie and exhibits thereto
(“MacKenzie Rebuttal Declaration”).31
• Rebuttal Declaration of Emily Peacock and exhibits thereto (“Peacock
Rebuttal Declaration”).32
24 Thomas Decl., 57 TTABVUE.
25 MacKenzie Depo. Tr., 59 TTABVUE.
26 Applicant’s Second NOR, 60 TTABVUE.
27 Applicant’s Third NOR, 61 TTABVUE.
28 Kosmowski Decl., 62 TTABVUE. 62 TTABVUE is a “corrected” version of 58 TTABVUE.
We have only considered 62 TTABVUE.
29 Thomas Test. Tr., 71 TTABVUE (confidential version), 74 TTABVUE (public version).
30 Thomas Cross Tr., 72-73 TTABVUE.
31 MacKenzie Rebuttal Decl., 75 TTABVUE.
32 Peacock Rebuttal Decl., 76 TTABVUE (confidential version), 77 TTABVUE (public, redacted version).
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II. Factual Background
A. Applicant’s Conception of a Logo
Applicant is an attorney who specializes in birth‑injury matters, a subspecialty of
medical malpractice law.33 In 2013, she joined Reiter & Walsh, P.C. as an associate
attorney.34 That firm focuses its practice on birth‑injury cases.35 By January 2018,
Applicant had decided to leave Reiter & Walsh to gain greater autonomy over her
cases and was considering starting her own law firm.36
In January 2018, while on a “holiday break” at Reiter & Walsh, Applicant began
developing a brand for her legal services.37 She decided to include the phrase “Birth
Justice” and conceived an image of Lady Justice holding a baby. 38 On January 1,
2018, she searched Google for Lady Justice images and emailed links with examples
to herself; none “had a lady justice holding a baby in one arm.”39 That same day, she
sketched her concept for a logo.40 Representative sketches appear below:41
33 Thomas Decl. at ¶ 4, 57 TTABVUE 3; see also Thomas Disc. Depo. Tr. at 251:14-23, 43
TTABVUE 254; Thomas Cross. Tr. at 78:2-17, 72 TTABVUE 80.
34 Thomas Decl. at ¶ 12, 57 TTABVUE 6; Thomas Disc. Depo. Tr. at 73:18-74:4, 43 TTABVUE
76-77.
35 Thomas Decl. at ¶ 12, 57 TTABVUE 6.
36 Thomas Decl. at ¶ 13, id. at 6.
37 Thomas Decl. at ¶ 14, 57 TTABVUE 6; Thomas Cross. Tr. at 43:13-17, 72 TTABVUE 45.
38 Thomas Decl. at ¶ 14, 57 TTABVUE 6.
39 Thomas Decl. at ¶ 15, id.; see also Ex. A03 to Thomas Decl., id. at 43-45 (email messages
with Google search links).
40 Thomas Decl. at ¶ 16, id. at 6; Kosmowski Decl. at ¶ 4, 62 TTABVUE 2. See also Ex. A04
to Thomas Decl., 57 TTABVUE 47-53 (images from a sketch book). We note that the images in the sketch book are not dated. Whether these images were created on January 1, 2018 or after does not impact our analysis.
41 Ex. A04 to Thomas Decl., id. at 48-50.
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Applicant did not use the January 1, 2018 sketches in connection with any goods
or services.42 On January 28, 2018, she registered the domain name
birthjustice.com.43
B. Applicant’s Employment with Opposer
Before leaving Reiter & Walsh, Applicant discussed joining the Olsman firm, a
personal-injury law firm,44 with two of Opposer’s principals, Donna MacKenzie and
Emily Peacock.45 During those discussions, Applicant informed Opposer that she was
developing a “Birth Justice” brand for her birth‑injury practice.46
Applicant left Reiter & Walsh in early June 2018 and promptly joined the Olsman
firm on June 4, 2018 as an “associate attorney.”47 Opposer paid her a base salary,
with the potential for performance‑based bonuses, including bonuses tied to
42 Thomas Disc. Depo. Tr. at 243:7-9, 43 TTABVUE 246; Thomas Cross Tr. at 48:12-49:19
and 52:18-22, 72 TTABVUE 50-52 and 54; Thomas Test. Tr. at 243:20-244:1, 74 TTABVUE 245-46.
43 Thomas Decl. at ¶ 17, 57 TTABVUE 6; see also Ex. A05 to Thomas Decl., id. at 55.
44 MacKenzie Decl. at ¶ 3, 47 TTABVUE 2-3.
45 Thomas Decl. at ¶ 19, id. at 7.
46 Thomas Decl. at ¶ 21, 57 TTABVUE 7.
47Thomas Disc. Depo. Tr. at 75:21-22, 43 TTABVUE 78; MacKenzie Decl. at ¶16, 47 TTABVUE 5; Thomas Decl. at ¶ 24, 57 TTABVUE 8.
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recoveries in matters she handled or originated.48 Applicant did not sign an
employment agreement, and the parties did not memorialize any agreement
concerning the design or ownership of trademarks to be used in connection with
Applicant’s practice.49 When Applicant joined the Olsman firm, Opposer did not
advertise a birth‑injury practice; afterward, however, Opposer began advertising that
specialty on its website using language Applicant drafted.50
While employed at the Olsman firm, Opposer paid certain of Applicant’s expenses,
including business travel, conference attendance, and professional memberships.51
Opposer also advanced or paid all costs for the birth‑injury matters on which
Applicant worked.52 Applicant testified that Opposer’s agreement to front her case
costs was “the reason” she joined the firm.53 All clients Applicant represented during
her employment with the Olsman firm were engaged under Opposer’s fee
agreement.54
48 MacKenzie Depo. Tr. at 264:3-265:2, 59 TTABVUE 344-45; Thomas Test. Tr. at 32:20-25,
74 TTABVUE 34.
49 Thomas Disc. Depo. Tr. at 116:12-14 and 185:13-16, 43 TTABVUE 119 and 188; MacKenzie
Cross Tr. at 97:5-11, 56 TTABVUE 99; MacKenzie Depo. Tr. at 105:25-106:2 and 108:4-6, 59 TTABVUE 111-12 and 114; Thomas Test. Tr. at 209:11-14, 74 TTABVUE 211. 50 Thomas Decl. at ¶¶ 23 and 34, 57 TTABVUE 7-8 and 10; see also Exs. A11 and A12 to
Thomas Decl., id. at 75-78 and 82-86.
51 MacKenzie Decl. at ¶¶ 20-21, 25, 47 TTABVUE 6-8; see also Exs. B-M to MacKenzie Decl.,
id. at 26-65.
52MacKenzie Decl. at ¶ 41, id. at 11; Thomas Cross Tr. at 39:9-40:18 and 249:6-21, 72 TTABVUE 41-42 and 251.
53 Thomas Test. Tr. at 113:22-24, 74 TTABVUE 115; see also Thomas Disc. Depo. Tr. at 76:8-20, 43 TTABVUE 79.
54 Thomas Disc. Depo. Tr. at 193:21-24, 43 TTABVUE 196; MacKenzie Decl. at ¶¶ 17 and 26,
47 TTABVUE 5-6 and 8; Thomas Cross Tr. at 170:20-25, 72 TTABVUE 172; Thomas Test.
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Applicant did not work for any other firm while employed by Opposer, nor did she
practice independently.55 Like other Olsman attorneys, she used firm equipment and
resources (including paralegals, legal assistants, and nurse consultants) and was
required to document case expenses, which the firm reviewed before approving.56 Her
work at the Olsman firm was covered by Opposer’s professional‑liability insurance,
for which Opposer paid the premiums.57
C. The Design and Creation of the Birth Justice Logo
In late May 2018—after Applicant had described her Birth Justice concept to Ms.
MacKenzie and Ms. Peacock but before she joined the Olsman firm—Opposer emailed
its web-developer, Esquire Interactive, LLC, to add a “birth injury” page to the firm
website.58 Opposer copied Applicant on one of those emails so that Applicant could
provide her input on the contents of the webpage, and Applicant responded with
proposed language.59 Opposer also contacted Ellen Krugel, the owner of EPK Design,
a graphic designer with whom Opposer had a longstanding relationship.60 Opposer
Tr. at 34:15-35:13 and 240:13-22, 74 TTABVUE 36-37 and 242; MacKenzie Rebuttal Decl. at ¶ 10, 75 TTABVUE 4.
55 MacKenzie Decl. at ¶ 18, 47 TTABVUE 6; Thomas Cross Tr. at 24:25-25:11, 72 TTABVUE
26-27; Thomas Test. Tr. at 33:9-24 and 35:3-9, 74 TTABVUE 35 and 37.
56 MacKenzie Rebuttal Decl. at ¶ 26, 75 TTABVUE 9.
57 MacKenzie Decl. at ¶¶ 18 and 27, 47 TTABVUE 6 and 9; Thomas Disc. Depo. Tr. at 89:9-14, 43 TTABVUE 92; MacKenzie Rebuttal Decl. at ¶¶ 10 and 34, 75 TTABVUE 4 and 12. 58 MacKenzie Decl. at ¶ 52, 47 TTABVUE 14; see also Ex. Q to MacKenzie Decl., id. at 73-74.
59 Ex. R to MacKenzie Decl., id. at 76-77.
60 MacKenzie Decl. at ¶¶ 43 and 56, 47 TTABVUE 11 and 15. Applicant notes in her brief
that at some point she subpoenaed EPK Design for a deposition and documents but EPK Design never complied with the subpoena, and Opposer allegedly told EPK Design that the deposition was cancelled. Applicant’s Br., 79 TTABVUE 18 and n.58. Counsel for the parties discussed the EPK Design subpoena during the cross-examination of Ms. MacKenzie, and
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requested that EPK Design assist with the updates on the website and design a “Lady
Justice logo.”61 On July 19, 2018—after Applicant had joined the Olsman firm—Ms.
Krugel emailed a quote to Ms. MacKenzie that included the tasks “Logo Design of
Birth Justice” and redesign of Olsmanlaw.com.62 EPK Design’s quote specified that
the logo would “utiliz[e] fonts and colors within the existing Olsman brand” and be
delivered for Opposer’s “unlimited use with any of [its] other collateral material.”63
EPK Design invoiced Opposer for its work, and Opposer paid the invoices.64
EPK Design communicated with both Opposer’s principals and Applicant during
the design process. On the day EPK Design sent its quote, Ms. MacKenzie encouraged
Applicant to work directly with EPK Design “to make sure [EPK Design] is on the
right track with your logo” and Ms. Peacock expressed excitement “to see what [Ms.
Krugel] comes up with!”:65
Applicant’s counsel threatened to “move to strike everything that related to EPK.” MacKenzie Cross. Tr. at 179:7-188:4, 56 TTABVUE 181-90. No such motion to strike was ever filed, and no objections lodged in the deposition related to EPK Design were renewed in Applicant’s brief. It is unclear if Applicant ever sought to enforce the subpoena in federal court. See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) §§ 404.03(a)(2), 703.01(f)(2), 521 (2026). No testimony of EPK Design has been made of record. 61 MacKenzie Decl. at ¶ 55, 47 TTABVUE 14.
62Ex. S to MacKenzie Decl., id. at 79; Ex. T to MacKenzie Decl., 46 TTABVUE 93-94 (Confidential).
63 Opposer’s Reply Br., 80 TTABVUE 11 (quoting Ex. T to MacKenzie Decl., 46 TTABVUE
93-94 (confidential)).
64 MacKenzie Decl. at ¶ 55, 47 TTABVUE 14; Ex. U to MacKenzie Decl., 46 TTABVUE 96-99
(Confidential).
65 Ex. A16 to Thomas Decl., 57 TTABVUE 100.
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Thereafter, Applicant communicated directly with Ms. Krugel. In fact, the next
day (July 20, 2018), Applicant emailed Ms. Krugel one of the “simpler line art logos”
that Applicant had found when she searched for images on January 1, 2018.66 This
appears to be the only email that Applicant sent to Ms. Krugel that did not copy Ms.
MacKenzie and Ms. Peacock on the communication. The “line art” image she sent to
Ms. Krugel appears below:67
66 Ex. A17 to Thomas Decl., 57 TTABVUE 102.
67 Id.
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Applicant does not recall whether she sent her January 1, 2018 hand sketches to
Ms. Krugel, and Applicant has no record of doing so; but if the sketches were not sent,
Applicant believes that she at least described them to Ms. Krugel.68
On August 8, 2018, EPK Design delivered first drafts of the logo and redesigned
business‑card layouts at a meeting between Ms. Krugel, Ms. MacKenzie, and
Applicant.69 On August 10, 2018, EPK Design emailed the original version of the logo
design presented at the August 8th meeting along with a revised logo to Ms.
MacKenzie, Ms. Peacock, and Applicant.70 Images of the original and revised versions
appear below:
68 Thomas Cross Tr. at 63:7-21 and 65:17-20, 72 TTABVUE 65 and 67; Thomas Test. Tr. at
187:3-16, 74 TTABVUE 189.
69 MacKenzie Decl. at ¶ 61, 47 TTABVUE 16; Ex. V to MacKenzie Decl., id. at 83 (email
confirming August 8, 2018 meeting); Thomas Decl. at ¶ 40, 57 TTABVUE 12. Ms. MacKenzie testified that Applicant did not attend this meeting because Applicant was in Colorado on August 8th. MacKenzie Decl. at ¶ 61, 47 TTABVUE 16. Applicant testified that she did attend this meeting and that she did not leave for Colorado until August 9th. Thomas Decl. at ¶¶ 40-41, 57 TTABVUE 12 (citing Exhibits A18 and A19 to Thomas Decl., id. at 103-12) (images of Applicant’s calendar and travel records for trip to Colorado). 70 MacKenzie Decl. at ¶ 62, 47 TTABVUE 16; Ex. W to MacKenzie Decl., id. at 85 (email with
original and revised logo).
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The next day (August 11, 2018), Applicant emailed Ms. MacKenzie and Ms.
Peacock with comments and said she would “draw some mockups of what [Applicant]
would ask [Ms. Krugel] to change”:71
Later the same day, Ms. Peacock responded to Applicant’s email, agreeing with
Applicant’s comments to the logo design.72 Applicant responded later that day, letting
Ms. MacKenzie and Ms. Peacock know that Applicant drew “some logo revision ideas”
that were intended to make the logo less “cartoony.”73 The sketches that Applicant
sent to Ms. MacKenzie and Ms. Peacock appear below:74
71 Ex. A21 to Thomas Decl., 57 TTABVUE 117.
72 Id. at 118.
73 Id. at 119; see also Ex. A22 to Thomas Decl., id. at 130-47 (sketches that Applicant created
using an Adobe program).
74 Ex. A21 to Thomas Decl., id. at 120-27.
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In response to Applicant’s email, Ms. Peacock provided her input and encouraged
Applicant to work with Ms. Krugel on the design because it “is your baby (pun
intended)”:75
75 Ex. A23 to Thomas Decl., id. at 149.
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Applicant thanked Ms. Peacock for her email,76 and then emailed Ms. Krugel the
drawings she had previously sent Ms. MacKenzie and Ms. Peacock; Applicant copied
Ms. MacKenzie and Ms. Peacock on that email.77 Applicant and Ms. Krugel thereafter
spoke by telephone to discuss Applicant’s suggested revisions.78 On August 17, 2018,
Ms. Krugel emailed a further revised logo to Applicant, copying Ms. MacKenzie and
Ms. Peacock.79 The revised logo appears below:80
76 Ex. A24 to Thomas Decl., id. at 152.
77 Ex. A25 to Thomas Decl., 155-63.
78 Ex. A26 to Thomas Decl., id. at 165 (email from Ms. Krugel proposing telephone conference); Ex. A27 to Thomas Decl., id. at 168 (email from Applicant confirming telephone conference).
79 Ex. A28 to Thomas Decl., id. at 171-73.
80 Id. at 173.
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Applicant replied the same day saying she “love[d] it” and proposed minor
refinements (e.g., thin or remove the belt or adjust sword placement); Ms. MacKenzie
and Ms. Peacock were again copied on the email.81 Ms. Krugel made the suggested
revisions the same day, and emailed a revised version to Applicant, and again copied
Ms. MacKenzie and Ms. Peacock on the email.82 That revised logo appears below:83
On September 4, 2018, Opposer paid EPK Design’s invoice for, inter alia, “Design
of Birth Justice logo.”84 On September 18, 2018, Applicant emailed Ms. MacKenzie
and Ms. Peacock to let them know that the logo is done: “My birth justice logo is done
81 Ex. A29 to Thomas Decl., id. at 175.
82 Ex. A30 to Thomas Decl., id. at 178-81.
83 Id. at 181.
84 Ex. U to MacKenzie Decl., 46 TTABVUE 96-97 (Confidential).
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and awesome.”85 An image of the final logo appears below (we refer to the final logo
hereafter as the “Birth Justice Logo”):86
D. Use of the Birth Justice Logo
In addition to commissioning EPK Design to create the Birth Justice Logo,
Opposer engaged EPK Design to redesign the firm’s business cards.87 As it did for the
logo design work, Opposer paid EPK Design for this work.88 EPK Design prepared
business card layouts for several employees, including Applicant; Applicant was the
only attorney at the Olsman firm specializing in birth-injury matters and her
business card was the only one that incorporated the Birth Justice Logo.89 Applicant
85 Thomas Decl. at ¶ 50, 57 TTABVUE 13; Ex. A31 to Thomas Decl., id. at 183.
86 Opposer’s Fifth NOR, 48 TTABVUE 167.
87MacKenzie Decl. at ¶¶ 61-62, 66, 47 TTABVUE 16-17; Ex. U to MacKenzie Decl., 46 TTABVUE 96 (Confidential) (listing “Business Card Redesign” as one of the invoiced services).
88 Ex. U to MacKenzie Decl., 46 TTABVUE 97 (Confidential).
89 Thomas Decl. at ¶ 52, 57 TTABVUE 13-14; Ex. A33 to Thomas Decl., id. at 189-90; Thomas
Cross. Tr. at 150:18-25, 72 TTABVUE 152.
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provided specific input on the appearance of her card.90 Images of the front and back
of Applicant’s business card appear below:91
On October 25-26, 2018, Applicant attended an American Association for Justice
(AAJ) conference in Atlanta, Georgia, with Jules Olsman, a partner of the firm.92
Opposer registered Applicant for the conference as an Olsman attorney and paid her
registration fee.93 Although EPK Design was preparing the business‑card layouts,
printing through EPK Design was not completed in time for the conference.94
Applicant therefore arranged to have the cards printed by her husband, Dan
Kosmowski, at her expense,95 and she distributed them at the conference.96 The
parties agree that the Birth Justice Logo was first used in commerce at the AAJ
conference in October 2018.97
90 Thomas Decl. at ¶ 51, id. at 13; Ex. A32 to Thomas Decl., id. at 186-87.
91 Ex. A34 to Thomas Decl., id. at 195.
92 Thomas Decl. at ¶ 54, id. at 14; Thomas Cross. Tr. at 36:22-37:24, 72 TTABVUE 38-39;
MacKenzie Rebuttal Decl. at ¶ 32, 75 TTABVUE 11-12.
93 MacKenzie Decl. at ¶ 21, 47 TTABVUE 7; Ex. H to MacKenzie Decl., id. 48-49.
94 Thomas Decl. at ¶ 53, 57 TTABVUE 14; see also Thomas Disc. Depo. Tr. at 123:10-12, 43
TTABVUE 126 (“I wanted to take those cards with me, and the firm did not print them yet.”). 95 Thomas Decl. at ¶ 53, 57 TTABVUE 14; Ex. A34 to Thomas Decl., id. at 192-98.
96 Thomas Decl. at ¶ 54, id. at 14.
97 Id.; MacKenzie Cross Tr. at 62:6-10, 56 TTABVUE 64 (“I don’t have the final document
approving the final logo, but it was obviously approved because it was used in commerce in
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Beyond business cards, after the AAJ conference, Applicant used the logo on
presentation slide decks, her personal Facebook page, a birth‑injury Facebook page
she created, her LinkedIn page, printed cards, and various promotional items she
ordered and paid for (e.g., mugs, a banner, and apparel).98 The first use of the logo in
a presentation occurred when Applicant presented at the Michigan Negligence Law
Section program held at the Michigan State University Management Education
Center in Troy, Michigan on November 18, 2019.99 The program materials identified
Applicant as an Olsman attorney and listed the presentation topic as “New
E‑Discovery rules and what they mean for your clients.”100 Images of the first and
last slide from Applicant’s November 18, 2019 presentation appear below (with an
arrow pointing to the Birth Justice Logo):101
October of 2018”). We note that the date of first use in commerce listed in Opposer’s pleaded application (“October 2018”) is consistent with the first use of the Birth Justice Logo at the AAJ conference.
98 Thomas Decl. at ¶ 55, 57 TTABVUE 14; Exs. A35-A38 to Thomas Decl., id. at 199-241.
99Opposer’s First NOR, Applicant’s Supplemental Response to Interrogatory No. 37, 40 TTABVUE 85-87.
100 Ex. A43 to Thomas Decl., 57 TTABVUE 306-07 (agenda for the seminar).
101 Id. at 308 (cover slide to the presentation), 325 (final slide to the presentation).
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The Birth Justice Logo also appeared on Opposer’s website, on the page describing
its birth‑injury practice, but it was not added until spring 2020—approximately
eighteen months after the agreed first use in commerce of the Birth Justice Logo at
the AAJ Conference (but while Applicant remained employed by Opposer).102 An
image of the Birth Justice Logo on Opposer’s “Birth Injury Resource Center” webpage
is below:103
During Applicant’s employment, Applicant did not display the Birth Justice Logo
at a website under the domain name, birthjustice.com; rather birthjustice.com
redirected visitors to Applicant’s biography page on Opposer’s website.104
102 Thomas Decl. at ¶ 56, id. at 14-15.
103 Ex. A39 to Thomas Decl., id. at 243 (screenshot from Wayback Machine of “Birth Injury
Resource Center” page on Opposer’s website).
104 Thomas Decl. at ¶ 57, id. at 15; see also Opposer’s Fourth NOR, 44 TTABVUE 177 (screenshot from Wayback Machine reflecting that “birthjustice.com” redirected to “olsmanlaw.com/person/emily-thomas” as of May 22, 2019).
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E. Trademark Applications for the Birth Justice Logo
On December 16, 2020—while still employed at the Olsman firm—Applicant filed
the involved application.105 On September 2, 2021, Applicant resigned from the
Olsman firm and joined a firm her husband previously created, Brain Care Law,
PLLC; she joined as a 50% owner of the firm.106 On September 29, 2021, EPK Design
assigned any rights it may have had in the Birth Justice Logo to Opposer. 107 On
October 6, 2021, Opposer filed its application for its pleaded mark.108 During
examination of Opposer’s application, the USPTO cited Applicant’s involved
application as a potential bar to registration of Opposer’s mark.109
105 Thomas Decl. at ¶ 77, 57 TTABVUE 19.
106 Ex. C to Opposer’s First NOR, Applicant’s Response to Opposer’s Interrogatory No. 2, 40
TTABVUE 25; Thomas Disc. Depo. Tr. at 94:22-95:13, 43 TTABVUE 97-98; Kosmowski Depo. Tr. at 39:17-23, 45 TTABVUE 44; Thomas Decl. at ¶ 2, 57 TTABVUE 3. Applicant appears to have performed exceptionally well as an attorney at the Olsman firm, including obtaining “two of the biggest settlements in the history of the Olsman firm[,]” which resulted in Opposer “receiv[ing] compensation from these two cases far in excess of any of the funds they may have fronted Applicant for her cases.” Applicant’s Br., 79 TTABVUE 15 (citing Thomas Decl. at ¶ 60, 57 TTABVUE 15-16; MacKenzie Cross Tr. at 172:19-173:10, 56 TTABVUE 174-75; Ex. A44 to Applicant’s Second NOR, 60 TTABVUE 6-24 (Opposer’s Claim for Quantum Meruit Attorney Fees filed in the Circuit Court for the County of Kalamazoo in Case No. 19-0386-NH)).
107Ex. BB to MacKenzie Decl., 47 TTABVUE 161 (Assignment agreement between EPK Design and Opposer). Ms. MacKenzie testified that the assignment was executed in the event EPK Design had any remaining rights itself in the Birth Justice Logo. MacKenzie Depo. Tr. at 252:19-23, 59 TTABVUE 332.
108Ex. A59 to Applicant’s Second NOR, 60 TTABVUE 48-55 (application for Opposer’s pleaded mark).
MacKenzie Decl. at ¶ 77, 47 TTABVUE 19; Ex. A59 to Applicant’s Second NOR, 60 109
TTABVUE 26 (suspension notice).
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III. Entitlement to a Statutory Cause of Action
Entitlement to a statutory cause of action is an element of the plaintiff’s case in
every inter partes proceeding. See Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 1303
(Fed. Cir. 2020); Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 1274
(Fed. Cir. 2014). A party in the position of plaintiff may oppose registration of a mark
when such opposition is within the zone of interests protected by the statute, and the
plaintiff has a reasonable belief in damage that is proximately caused by registration
of the mark. JNF LLC v. Harwood Int’l Inc., No. 92070634, 2022 WL 4379238, at *1
(TTAB 2022) (citing Meenaxi Enter., Inc. v. Coca-Cola Co., 38 F.4th 1067, 1070 (Fed.
Cir. 2022)).
Applicant does not dispute Opposer’s statutory entitlement. In any event,
Opposer’s pleaded application is of record as well as a notice of suspension
demonstrating that the application has been suspended because the USPTO
identified Applicant’s prior‑filed, pending application as a potential bar to
registration under Section 2(d).110 This is sufficient to establish Opposer’s entitlement
to oppose the involved application based on non-ownership. Cf. Empresa Cubana del
Tabaco, 753 F.3d at 1274 (USPTO’s refusal to register petitioner’s mark based on a
likelihood of confusion with respondent’s registered marks demonstrated petitioner’s
real interest in the proceeding and reasonable belief in damage); Rapid Inc. v. Hungry
Marketplace, Inc., No. 91236033, 2022 WL 2965804, at *6 (TTAB 2022) (USPTO’s
suspension of opposer’s pleaded application pending disposition of subject application
110 Ex. A59 to Applicant’s Second NOR, 60 TTABVUE 26.
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sufficiently established opposer’s entitlement to assert Section 2(d) claim); Hole in 1
Drinks, Inc. v. Lajtay, No. 92065860, 2020 WL 859853, at *4, 7 (TTAB 2020)
(USPTO’s citation of respondent’s registration as a bar to petitioner’s application
established entitlement for lack of bona fide intent to use claim based “on two parties
… claiming superior rights based on shared circumstances”; claim analogous to nonownership claim).
IV. Unpleaded Defense of Oral or Implied License
In her brief, Applicant argues that “[t]here is no rule that an employee cannot own
a mark and grant the employer an oral license to use it[,]” and Applicant contends
that “[t]he facts here line up with those” in a non-precedential case, Brody Chem. Co.
v. Goldthorpe, No. 91204070, 2014 WL 2997638 (TTAB 2014), where the Board found
that an employee owned the mark and granted an oral license to Opposer.111 Opposer
responds that this oral or implied license theory should not be considered because
Applicant did not plead it as a defense and raised it for the first time in her trial
brief.112
“Generally, parties in proceedings before the Board may not rely on unpleaded
claims, issues or defenses, and the Board will not consider them.” DowntownDC Bus.
Improvement Dist. v. Clarke, No. 91275100, 2024 WL 4449409, at *9 (TTAB 2024);
111 Applicant’s Br., 79 TTABVUE 20, 30-31. Applicant fails to clearly identify Brody Chem.
as a non-precedential decision, as provided in TBMP § 101.03(a)(2) (“Any nonprecedential cases must be clearly identified as nonprecedential.”). “[T]he Board discourages the citation to non-precedential opinions,” which are not binding on the Board. DC Comics v. Cellular Nerd LLC, No. 91246950, 2022 WL 17832492, at *3 (TTAB 2022).
112 Opposer’s Reply Br., 80 TTABVUE 8 n.8, 16.
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see also Kohler Co. v. Baldwin Hardware Corp., No. 92041434, 2007 WL 117575, at
*1 n.3 (TTAB 2007) (raising claim for first time in plaintiff’s brief is manifestly
untimely; belated fraud claim given no further consideration). A party’s pleading
must be amended under Fed. R. Civ. P. 15(b) to assert such a claim, issue or defense,
or the claim, issue or defense must have been tried by express or implied consent
under Fed. R. Civ. P. 15(b)(2) for the Board to consider it. DowntownDC Bus.
Improvement Dist., 2024 WL 4449409, at *9.
Because Applicant did not plead an oral or implied license defense,113 nor seek to
amend her answer under Fed. R. Civ. P. 15(b), the defense must have been tried by
express or implied consent under Fed. R. Civ. P. 15(b)(2) for us to consider it. Id.; see
also Morgan Creek Prods. Inc. v. Foria Int’l Inc., No. 91173806, 2009 WL 1719597, at
*5 (TTAB 2009) (“The question of whether an issue was tried by consent is basically
one of fairness. The non-moving party must be aware that the issue is being tried,
and therefore there should be no doubt on this matter.”).
Here, Opposer objected to Applicant’s reliance on an oral or implied license
defense on the ground that it was neither pleaded nor tried by consent. 114 Thus, the
defense was not tried by express consent.
We further agree that Opposer was not fairly apprised that Applicant intended to
pursue such a defense at trial. Applicant does not testify that an oral or implied
license existed; nor does she identify any evidence in the record that would have
113 See Answer, 9 TTABVUE.
114 Opposer’s Rebuttal Br., 80 TTABVUE 8 n.8 and 16.
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apprised Opposer of her intent to rely on such a defense. Applicant does testify that,
“[w]hile I was at the Olsman firm, I let the Olsman firm use My Birth Justice Mark,
but only as I directed and in connection with the birth injury services that I alone
provided.”115 This testimony was offered to support her position that she joined the
Olsman firm with the concept for the Birth Justice Logo, she was the only person at
the firm to use the logo, her uses of the logo inured to her benefit, and any uses that
Opposer made of the logo (e.g., on its website) while she worked at the firm were at
her direction and any uses after she left the firm were without her permission. The
testimony was not offered to support that she licensed the mark to Opposer before
the mark was ever used.
Under these facts, Opposer was not fairly apprised that Applicant intended to
pursue an oral or implied license defense at trial, and therefore this defense, raised
for the first time in Applicant’s brief, was not tried by implied consent. See Hole in 1
Drinks, 2020 WL 859853, at *8 (“[I]mplied consent to the trial of an unpleaded issue
can be found only 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.”); see also TBMP § 507.03(b). Accordingly,
we accord no consideration to Applicant’s oral or implied license arguments.
115 Thomas Decl. at ¶ 33, 57 TTABVUE 10; see also Thomas Decl. at ¶ 56, id. at 14 (“I allowed
the Olsman firm to display My Birth Justice Mark on a single page of its website.”). When asked in her discovery deposition whether she “ever [had] any license agreement with the Olsman law firm,” Applicant avoided directly answering the question: “The logo only ever appeared where I directed it to appear, and I believe the logo only ever appeared places I put it.” Thomas Disc. Depo. Tr. at 185:17-21, 43 TTABVUE 188.
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V. Non-Ownership
Only the owner of a mark may file an application to register it under Section 1(a)
of the Trademark Act. 15 U.S.C. § 1051(a)(1) (“The owner of a trademark used in
commerce may request registration of its trademark on the principal register ….”).
See Holiday Inn v. Holiday Inns, Inc., 534 F.2d 312, 319 n.6 (CCPA 1976) (“One must
be the owner of a mark before it can be registered.”); Wonderbread 5, 2015 WL
4380986, at *8 (“only the owner of the mark may file an application”). “[A]n
application filed by one who is not the owner of the mark sought to be registered is a
void application.” In re Tong Yang Cement Corp., No. 73730247, 1991 WL 326558, at
*2 (TTAB 1991) (citing In re Techsonic Indus., 1982 WL 52038, at *1 (TTAB 1982)
(proceeding number not available)); see also Great Seats, Ltd. v. Great Seats, Inc., No.
92032524, 2007 WL 1740870, at *5 (TTAB 2007) (“In a use-based application under
Trademark Act Section 1(a), only the owner of the mark may file the application for
registration of the mark; if the entity filing the application is not the owner of the
mark as of the filing date, the application is void ab initio.”); Trademark Rule 2.71(d),
37 C.F.R. § 2.71(d) (“An application filed in the name of an entity that did not own
the mark as of the filing date of the application is void.”).
The question before us is whether Applicant, in her individual capacity, owned the
Birth Justice Logo for the identified services as of the December 16, 2020 application
filing date. Because there are no pertinent written agreements between the parties
that might bear on ownership of the Birth Justice Logo, we examine the activities
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related to the Birth Justice Logo that occurred on or before Applicant’s December 16,
2020 filing date.
We begin with Applicant’s January 2018 activities—conceiving a brand and
registering the birthjustice.com domain—both of which predate her employment with
Opposer. It is well settled that merely designing or inventing a symbol does not create
trademark rights. See Hole In 1 Drinks, 2020 WL 859853, at *10 (“To the extent that
Respondent argues he created the mark, trademark rights are not gained by creating
a mark, but through use of the mark.”); Reflange Inc. v. R‑Con Int’l, No. 92016423,
1990 WL 354565, at *6 (TTAB 1990) (“[I]t is not the act of inventing a trademark
which creates prior rights.”); see also J. Thomas McCarthy, 2 MCCARTHY ON
TRADEMARKS AND UNFAIR COMPETITION § 16:11 (5th ed. June 2026 Update)
(“MCCARTHY”) and cases cited therein. Nor does registering a domain name, standing
alone, confer trademark rights. See Brookfield Commc’ns, Inc. v. W. Coast Ent. Corp.,
174 F.3d 1036, 1052 (9th Cir. 1999) (domain name registration alone is not trademark
“use” creating rights); see also 4 MCCARTHY § 25A:18 (“Simply registering a word or
words as a domain name does not itself establish trademark rights.”). Applicant
acknowledges that she brought only a concept for a logo and preliminary sketches to
the Olsman firm, not a finished logo:116
116 Thomas Cross Tr. at 230:17-24, 72 TTABVUE 232.
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Accordingly, neither Applicant’s January 2018 conception of her brand (including her
rough sketches), nor her registration of birthjustice.com, establish ownership of the
Birth Justice Logo on their own.
Having determined that Applicant’s pre-employment activities did not create any
trademark rights in the Birth Justice Logo, we next consider whether there was an
oral agreement concerning ownership of the Birth Justice Logo.117 As already
discussed, there was no written agreement between the parties, not even an
employment agreement, let alone an agreement concerning ownership of intellectual
property.118 Applicant, however, asserts that during recruitment discussions with
Ms. MacKenzie and Ms. Peacock, she made clear she would own the logo she had
117Whether the parties orally agreed to ownership of the mark is a different issue than whether the parties agreed to either an oral or implied license to use the mark, which, as discussed supra, has not been considered.
118Thomas Disc. Depo. Tr. at 116:12-14 and 185:13-16, 43 TTABVUE 119 and 188; MacKenzie Cross Tr. at 97:5-11, 56 TTABVUE 99; MacKenzie Depo. Tr. at 105:25-106:2 and 108:4-6, 59 TTABVUE 111-12 and 114; Thomas Test. Tr. at 209:11-14, 74 TTABVUE 211.
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begun developing,119 and Applicant points to emails from Ms. MacKenzie and Ms.
Peacock as confirming the parties’ understanding that Applicant owned the Birth
Justice Logo, specifically: (1) Ms. MacKenzie’s email stating: “Emily T [Applicant],
please make sure [EPK Design] is on the right track with your [Applicant’s] logo;”120
and (2) Ms. Peacock’s email stating that the Birth Justice Logo “is your [Applicant’s]
baby[.]”121 Applicant also identifies her own email, where she stated that “[m]y birth
justice logo is done and awesome.”122
We do not view these informal expressions, especially when made between
attorneys, as statements of ownership or as transfers of rights. Notably, Applicant
wrote to Ms. Krugel that “Donna loved our final logo.”123 Just as the use of “your”
and “my” were not statements of individual ownership, the use of “our” is not a
statement of joint ownership. The context explains the phrasing: Applicant was the
firm’s sole birth‑injury specialist, and the logo was intended to promote those services
within the firm’s practice. The references to “your logo” and “your baby” are consistent
with an attorney’s lead role on a practice‑area initiative, not with a conveyance or
recognition of ownership. As Ms. MacKenzie testified, “it would not make financial
sense for the firm to agree that an employee would own a logo that the firm’s designer
Applicant’s Br., 79 TTABVUE 21 (citing Thomas Decl. at ¶¶ 21-23 and 30-32, 57 119
TTABVUE 7 and 10).
120 Applicant’s Br., 79 TTABVUE 26 (quoting Ex. A16 to Thomas Decl., 57 TTABVUE 100)
(emphasis added in by Applicant; in italics in brief, in bold here).
121 Id. (quoting Ex. A23 to Thomas Decl., 57 TTABVUE 149).
122 Id. (quoting Ex. A31 to Thomas Decl., 57 TTABVUE 183) (emphasis added in by Applicant;
in italics in brief, in bold here).
123 Ex. 78 to Thomas Disc. Depo. Tr., 43 TTABVUE 640 (emphasis added).
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created and the firm fully funded.”124 See DowntownDC Bus. Improvement Dist., 2024
WL 4449409, at *12 n.85 (noting similar testimony from employer, refuting
employee’s testimony that employer paid for the creation of a mark to be owned by
the employee).
Because Applicant did not arrive at the Olsman firm with trademark rights in the
Birth Justice Logo and the record does not support there being an agreement between
the parties concerning ownership of the logo, we next consider the activities
surrounding the creation and use of the logo while Applicant worked at the Olsman
firm to see if they reveal an understanding between the parties as to ownership of the
mark. Before discussing those activities, we first address the relationship between
Opposer and Applicant. Their relationship is one of an employer and employee.
Applicant does not dispute that she was an employee of the Olsman firm, and the
record clearly establishes an employer/employee relationship. For example:
• Applicant was hired as an “associate attorney” as the Olsman firm, not
a shareholder of the firm;125
• Opposer paid Applicant a base salary, with the potential for
performance‑based bonuses;126
• While employed at the Olsman firm, Opposer paid certain of Applicant’s
expenses, including business travel, conference attendance, and
professional memberships;127
124 MacKenzie Rebuttal Decl. at ¶ 17, 75 TTABVUE 7.
Thomas Disc. Depo. Tr. at 75:21-22, 43 TTABVUE 78; MacKenzie Decl. at ¶16, 47 125
TTABVUE 5; Thomas Decl. at ¶ 24, 57 TTABVUE 8.
126 MacKenzie Depo. Tr. at 264:3-265:2, 59 TTABVUE 344-45; Thomas Test. Tr. at 32:20-25,
74 TTABVUE 34.
127 MacKenzie Decl. at ¶¶ 20-21, 25, 47 TTABVUE 6-8; see also Exs. B-M to MacKenzie Decl.,
id. at 26-65.
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• All clients Applicant represented during her employment signed a fee
agreement with Opposer, not Applicant;128
• Applicant used firm equipment and resources (including paralegals,
legal assistants, and nurse consultants) while employed by the Olsman
firm;129
• Applicant was covered by Opposer’s professional-liability insurance,
which Opposer paid;130 and
• Applicant gave notice to Jules Olsman on September 2, 2021 that
September 2 would be her last day working at the Olsman firm.131
Applicant argues that the factors set forth in Lyons v. Am. Coll. of Veterinary
Sports Med. & Rehab., 859 F.3d 1023 (Fed. Cir. 2017) apply here. Lyons involved an
ownership dispute between a number of veterinarians who formed a committee to
organize a veterinary specialist organization. After Dr. Lyons was dismissed from the
committee, she registered the mark THE AMERICAN COLLEGE OF VETERINARY
SPORTS MEDICINE AND REHABILITATION, which had been used by the
committee while she was a member. The committee sought cancellation of the
registration, and the Board concluded that she did not own the mark when the
application that matured into her registration was filed. The Federal Circuit
affirmed, accepting the Board’s analytical framework, which focused on “(1) the
parties’ objective intentions or expectations; (2) who the public associates with the
128 Thomas Disc. Depo. Tr. at 193:21-24, 43 TTABVUE 196; MacKenzie Decl. at ¶¶ 17 and
26, 47 TTABVUE 5-6 and 8; Thomas Cross Tr. at 170:20-25, 72 TTABVUE 172; Thomas Test. Tr. at 34:15-35:13 and 240:13-22, 74 TTABVUE 36-37 and 242; MacKenzie Rebuttal Decl. at ¶ 10, 75 TTABVUE 4.
129 MacKenzie Rebuttal Decl. at ¶ 26, 75 TTABVUE 9.
130 MacKenzie Decl. at ¶¶ 18 and 27, 47 TTABVUE 6 and 9; Thomas Disc. Depo. Tr. at 89:9-14, 43 TTABVUE 92; MacKenzie Rebuttal Decl. at ¶¶ 10 and 34, 75 TTABVUE 4 and 12. 131 Thomas Disc. Depo. Tr. at 94:22-96:4, 43 TTABVUE 97-99.
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mark; and (3) to whom the public looks to stand behind the quality of goods or services
offered under the mark.” Id. at 1029. The Court found this legal framework acceptable
“for resolving ownership disputes when there has been a departure from or change of
membership in a group and, in the absence of a formal agreement governing
ownership of the mark, both the departing member and the remnant group claim
ownership of the mark.” Id.
This case does not involve that type of ownership dispute. Applicant was not a
founding member of the Olsman firm, or even a shareholder of the firm; she was an
“associate attorney.”132 As such, we do not apply the Lyons factors. Nevertheless, we
consider Applicant’s arguments presented under the Lyons factors in determining
whether Applicant obtained rights to the applied-for mark, vis-à-vis her employer,
the Olsman firm.
Generally, “the mere suggestion by … an employee during or before entering
employment that the employer market its product under a particular designation
cannot bestow any proprietary right in said trademark upon the employee.” Scranton
Plastic Laminating, Inc. v. Mason, No. 91053914, 1975 WL 21259, at *9 (TTAB 1975).
As Professor McCarthy explains:
If an employee designs a mark in the course of
employment and the employer uses it, it would seem clear
that the employer is the ‘owner’ of the mark. Ownership
by the employer will be clear if the employer has an
intellectual property policy binding the employee. But if a
person was in business and sold a product under a mark,
132 MacKenzie Decl. at ¶16, 47 TTABVUE 5 (Applicant was an associate attorney); Thomas
Disc. Depo. Tr. at 96:12-18, 43 TTABVUE 99 (Applicant was not a shareholder of the Olsman firm; she was an “associate attorney”).
- 34 -Opposition No. 91272167
and then entered into employment under an agreement to
assign to the employer all marks developed as an
employee, the employee, not the employer, is the owner of
the pre-employment mark.
2 MCCARTHY § 16:36 (footnote omitted).
We have no doubt that Applicant was acting within the scope of her employment
with Opposer when she participated in the development of the Birth Justice Logo and
subsequently used the logo. The RESTATEMENT (THIRD) OF AGENCY gives guidance on
when an employee acts within the scope of employment. It provides as follows:
An employee acts within the scope of employment when
performing work assigned by the employer or engaging in
a course of conduct subject to the employer’s control.
An employee’s act is not within the scope of employment
when it occurs within an independent course of conduct not
intended by the employee to serve any purpose of the
employer.
RESTATEMENT (THIRD) OF AGENCY § 7.07 (A.L.I. Oct. 2024 Update).
Although Applicant did not have an employment agreement that required her to
create any trademarks or participate in the creative process for developing a
trademark,133 Opposer is a law firm, and promotional work for a law firm is squarely
within the scope of an attorney’s employment. The development of a mark to promote
the firm’s legal services in the birth-injury field is exactly that—promotional work for
the firm, and Applicant was hired for her birth‑injury expertise. She arrived at the
firm with a concept for a logo, but the logo had not been finalized, let alone ever used
in connection with any goods or services. Applicant and others at the Olsman firm, in
133 Applicant’s Br., 79 TTABVUE 15 (citing Thomas Decl. at ¶¶ 66-67, 57 TTABVUE 17).
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conjunction with a graphic design firm retained and paid-for by Opposer, took
Applicant’s idea for a logo and developed that idea into a final logo design that
Applicant and the firm used to promote Applicant’s practice-area specialty at the
Olsman firm. It was natural and appropriate for Applicant to provide design input.
Indeed, this is consistent with the input the Olsman firm sought from Applicant on
birth-injury marketing matters generally.134
Although Applicant came to the Olsman firm with the brand concept and Opposer
granted Applicant meaningful creative input during the design process, the record
shows Opposer ultimately controlled the project: Opposer retained EPK Design, with
whom it had a long-standing prior relationship, to create the logo; EPK Design billed
Opposer; and Opposer paid the invoices. Furthermore, the creation of the Birth
Justice Logo served the firm’s business purpose, namely to promote the legal services
that Applicant was providing as an associate of the Olsman firm. In view thereof,
Applicant’s role in the creation process for the Birth Justice Logo did not give
Applicant any trademark rights in the logo.
That brings us to the first use of the Birth Justice Logo. “‘[I]n any controversy
involving ownership of a particular mark or priority therein, the right thereto accrues
to the party first to use the mark in trade and not to the first adopter but subsequent
user in trade. In sum, trademark rights arise from use and not mere adoption.’”
134 Thomas Disc. Depo. Tr. at 121:5-7, 43 TTABVUE 124 (When asked if Applicant worked on
“marketing matters” when employed by Opposer, Applicant explained: [“Ms. MacKenzie and Ms. Peacock] would give me -- anything birth injury was my area of specialty, and I would review and provide input on those things.”).
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DowntownDC Bus. Improvement Dist., 2024 WL 4449409, at *12 (quoting La Maur
Inc. v. Int’l Pharm. Corp., No. 91057590, 1978 WL 21258, at *4 (TTAB 1978)); see also
Holiday Inn, 534 F.2d at 319 n.6 (“It is fundamental that ownership of a mark is
acquired by use, not by registration.”). The same principle applies in the
employer‑employee context: “[o]wnership as between employer and employee will
depend upon who first used the term as a mark and who the mark identifies.” 2
MCCARTHY § 16:36.
The logo’s first use in commerce occurred when Applicant distributed business
cards at an AAJ conference in Atlanta, Georgia in October 2018. The question is
whether that use inured to the benefit of Applicant in her individual capacity or
Opposer, Applicant’s employer.
Applicant was an Olsman employee at the time of the conference, and the front of
her business card identified her as such. Applicant testified concerning what she
would tell people when handing them a card:135
135 Thomas Cross Tr. at 164:7-13, 72 TTABVUE 166.
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Because the first use of the Birth Justice Logo was on Applicant’s Olsman business
card, which identified Applicant as an Olsman attorney, listed her contact
information at the Olsman firm (mailing address, email address, and telephone
number), and included the URL for the Olsman firm, and because her attendance at
the conference and use of the business cards promoted the firm’s business (and
thereby created an association in the minds of consumers between the Birth Justice
Logo and the Olsman firm), we find that this use of the Birth Justice Logo did not
inure to the employee’s (Applicant’s) benefit in her individual capacity; the use inured
to the employer’s (Opposer’s) benefit. See Smith v. Tobacco By‑Products & Chem.
Corp., 243 F.2d 188, 191 (CCPA 1957) (use made through a corporation inures to the
corporation, not the individual); DowntownDC Bus. Improvement Dist., 2024 WL
4449409, at *15 (employee’s use of involved mark inured to employer’s benefit;
employer owned the mark); Welscraft, Inc. v. Dougherty, No. 92009186, 1969 WL
8374, at *2 (TTAB 1969) (individual was not owner of mark where goods were sold
under the mark through the company, not by the individual).
Likewise, the uses of the Birth Justice Logo between the first use and the
December 16, 2020 application filing date did not inure to Applicant’s benefit in her
individual capacity. Those uses included, for example, the appearance of the Birth
Justice Logo on slide decks for presentations, social media websites, and promotional
items. But each of the uses of the Birth Justice Logo before December 16, 2020
occurred while Applicant was an employee of Opposer and promoted the legal services
she was providing as an attorney at the Olsman firm.
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Because the Birth Justice Logo was created and used within the scope of
Applicant’s employment, there is a presumption that any use of the Birth Justice
Logo “‘during [the relevant] period .... was done so [by Applicant] as [an employee of]
opposer, on behalf of opposer, and in furtherance of opposer’s business; and any
goodwill created by such use inured to opposer’s benefit.’” DowntownDC Bus.
Improvement Dist., 2024 WL 4449409, at *15 (quoting Scranton Plastic Laminating,
1975 WL 21259, at *9). Therefore, it is incumbent upon Applicant to rebut this
presumption.136 Id.
We acknowledge that Applicant undertook certain promotional actions
independent of what was expected or required of an associate of the Olsman firm. For
example, Applicant’s husband arranged for printing her business cards and Applicant
paid for them herself (even though Opposer was arranging to print cards); Applicant
personally registered and paid to maintain the birthjustice.com domain, which
appeared on her business card along with the firm’s website and, during the relevant
period, which redirected to her biography page on the firm’s website; Applicant
136DowntownDC holds that in the employer-employee context, there is a rebuttable presumption that the employer owns the disputed mark based on its use of the mark. DowntownDC Bus. Improvement Dist., 2024 WL 4449409, at *15. In that context, the presumption of ownership can be rebutted by “competent and convincing proof” of the adversary’s ownership of the mark. Id. “Competent and convincing proof” requires only preponderant evidence that is sufficient to rebut the presumption of ownership. Cf. In re Becton, Dickinson & Co., 675 F.3d 1368, 1374 (Fed. Cir. 2012) (“the ‘competent evidence’ standard [requires] proof by preponderant evidence”). It does not require “clear and convincing evidence” of the sort required in other contexts such as proof of fraud, In re Bose Corp., 580 F.3d 1240, 1243 (Fed. Cir. 2009), and proof of a date of first use earlier than the date recited in an application or registration, Hydro-Dynamics, Inc. v. George Putnam & Co., 811 F.2d 1470, 1473 (Fed. Cir. 1987), in which our primary reviewing court has required a more stringent evidentiary standard.
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promoted her legal services on her personal Facebook page; and she purchased
various promotional items bearing the Birth Justice Logo, which she distributed to
firm clients and employees.
Although these actions show Applicant’s initiative and commitment in promoting
her and her employer’s legal practice, the legal services promoted were provided in
her capacity as an associate of the Olsman firm during the relevant period (i.e., from
the logo’s first use in commerce through the December 16, 2020 filing date).
Considered in context, these activities that were neither required nor expected of an
associate attorney are outweighed by the evidence that the Birth Justice Logo was
created and used within the scope of Applicant’s employment with Opposer during
that period.
Applicant also presents arguments under the Lyons factors, which we have
considered in determining whether Applicant has overcome the presumption that the
use of the Birth Justice Logo inured to Opposer’s benefit. First, Applicant points to
the emails that included references by Opposer to “your” logo and Applicant’s
references to “my” logo to argue that the parties objectively intended for Applicant to
own the Birth Justice Logo.137 As discussed above, we disagree with Applicant’s
interpretation of the banter in those communications. Notably, when Ms. Peacock
wrote that the Birth Justice Logo “is your baby,” she immediately qualified the
remark with “(pun intended),”138 signaling that the phrase was a play on the birth137 Applicant’s Br., 79 TTABVUE 20-28.
138 Ex. A23 to Thomas Decl., 57 TTABVUE 149.
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injury subject matter, not a deliberate acknowledgment of Applicant’s ownership.
When these informal references to “your” logo and “my” logo are considered against
Ms. MacKenzie’s unrebutted testimony that “it would not make financial sense for
the Olsman firm to agree that an employee would own a logo that the firm created
via the firm’s own graphic artist and that the firm fully funded,”139 and against
Applicant’s own reference to “our final logo” in her email to Ms. Krugel,140 they most
reasonably reflect the casual tone of colleagues collaborating on a practice-area
initiative—not an expression of the parties’ objective intent that Applicant
individually own the Birth Justice Logo.
Second, Applicant contends that consumers would associate the Birth Justice
Logo with Applicant in her individual capacity and would look to Applicant in her
individual capacity to stand behind the legal services she provides.141 These
contentions are unsupported by the record. The logo’s first use was on Applicant’s
business cards, which identified her as an attorney of the Olsman firm on the front
and displayed the firm’s website URL on the back next to the logo. In her first
presentation after the logo’s creation, Applicant placed the logo alongside the firm’s
logo and identified herself as an Olsman attorney, listing firm contact information.
This evidence shows consumers would associate the logo with both Applicant in her
capacity as an Olsman firm lawyer and the firm itself—not with Applicant alone.
139 MacKenzie Rebuttal Decl. at ¶ 17, 75 TTABVUE 7.
140 Ex. 78 to Thomas Disc. Depo. Tr., 43 TTABVUE 640.
141 Applicant’s Br., 79 TTABVUE 28-30.
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Likewise, where the services at issue are legal services that Applicant provided to
clients who signed the firm’s fee agreement, and where Applicant was covered by the
firm’s professional‑liability insurance, consumers would look to the firm, not
Applicant alone, to stand behind the quality of those services.
On this record, we find that Applicant has not rebutted Opposer’s prima facie case
that Applicant was Opposer’s employee during the relevant period and that, as such,
any use of the Birth Justice Logo by Applicant during the relevant period inured to
Opposer’s benefit.
VI. Conclusion
In sum, even if: (1) Applicant conceived the idea of using a Lady Justice figure
holding a baby to promote her practice before joining the Olsman firm; (2) Applicant
devoted more time than anyone else to the creative process for the Birth Justice Logo;
(3) the Birth Justice Logo only ever appeared in connection with promoting
Applicant’s area of specialty (birth-injury law) before the application filing date;
(4) Applicant was and is an exceptional birth-injury attorney; and (5) Applicant
generated significant recoveries for the firm relative to her compensation—those facts
do not establish ownership of the Birth Justice Logo in Applicant’s individual
capacity.
On the facts before us, we find that the conception, creation, and use of the Birth
Justice Logo before the application filing date do not support Applicant owning the
Birth Justice Logo in her individual capacity as of that filing date. Applicant’s
participation in the logo’s development and subsequent use of the logo while employed
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by the Olsman firm were within the scope of her employment, and therefore her role
in the creation process and subsequent use of the logo do not establish her ownership
of the Birth Justice Logo. See DowntownDC Bus. Improvement Dist., 2024 WL
4449409, at *12-15 (finding that Applicant created and used the involved
DOWNTOWN DC DISTRICT OF FASHION mark within the scope of her
employment).
On this record, Opposer has established its entitlement to a statutory cause of
action and has proven by a preponderance of the evidence that Applicant, in her
individual capacity, did not own the Birth Justice Logo for the services identified in
the application as of the December 16, 2020 filing date. We therefore find in favor of
Opposer on its non‑ownership claim.
Decision: The opposition is sustained on the ground that Applicant was not the
owner of the applied-for mark when she filed the opposed application.142
142 Because we resolve this proceeding on Opposer’s non-ownership claim, we need not and
do not reach Opposer’s other claims. See Tequila Cuadra, 2025 WL 1431504, at *1 n.3.
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