Law Firm Fails to Win Big in its Opposition to "844-I-WIN-BIG" for Legal Services, TTAB Tosses Out Non-Use and Section 2(d) Claims

Sigal Law sought to register the mark 844-I-WIN-BIG for legal services, but Newton, Udinson, & Hill PLLC opposed, claiming non-use and likelihood of confusion with its common law mark WIN BIG LAW, also for legal services. The Board, however, found that applicant was using its mark as a source indicator as of the filing date of its application, and further found that opposer failed to prove that its alleged mark was distinctive. Newton, Udinson, & Hill PLLC v. Sigal Law Firm, PLLC, Opposition No. 91289155 (July 13, 2026) [not precedential] (Opinion by Judge Mark Lebow).

The Board spent about half of its opinion dealing with various evidentiary and procedural objections, overruling nearly all of them. It found opposer's reply brief was too long, and so it refused to consider the brief.

Likelihood of Confusion: Opposer claimed common law rights dating back to May 2021, but opposer failed to address the issue of whether WIN BIG LAW mark is distinctive "even though Applicant made it an issue." [Emphasis by the Board].

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.” In addition, Opposer itself highlights, in its main brief, that “in a directly related opposition involving the same parties and services, [it] alleges that the phrase ‘WIN BIG’ is merely descriptive or laudatory and so commonly used that it lacks distinctiveness.

Opposer admitted in its pending application for WIN BIG LAW that "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." The Board observed that "[t]his is precisely the type of laudatory, outcome-oriented message that has been held merely descriptive in analogous contexts."

The Board found the claimed mark WIN BIG LAW to be merely descriptive. Consequently, opposer was required to prove that the mark had acquired distinctiveness through secondary meaning.

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.

The Board concluded that, given the highly descriptive nature of the mark WIN BIG LAW, Opposer’s evidence fell short of the "substantial showing" required to establish acquired distinctiveness.

Because Opposer failed to establish that it owns a protectable mark, it failed to prove priority, and so its Section 2(d) claim was dismissed.

Nonuse: In its brief, Opposer argued that applicant’s use did not qualify as bona fide trademark use because (1) applicant’s services are provided only in Michigan, 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. The Board was not impressed.

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. * * * Applicant’s website is accessible to potential clients throughout the United States, and its services affect interstate commerce.

As to the question of non-use, the Board offered little discussion: "[t]he 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 those services and alongside its firm name."

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TTABlogger comment: Opposer, on the last day of its rebuttal period, tried to add a failure-to-function claim, but the Board refused, finding that the claim was not tried by implied consent. 

Text Copyright John L. Welch 2026.