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CAUSE NO.

02-13-00409-CV

IN THE COURT OF APPEALS
FOR THE SECOND JUDICIAL DISTRICT OF TEXAS
FORT WORTH, TEXAS



Barbara Louise Morton d/b/a Timarron College Prep
Appellant

V.

Timarron Owners Association, Inc.
Appellee



Trial Court Cause No. 096-260449-12
Hon. R. H. Wallace, Jr., Presiding Judge

BRIEF OF APPELLANT



NORRED LAW, PLLC

Warren V. Norred
TX Bar Number 24045094
200 E. Abram, Suite 300
Arlington, TX 76010
P. 817.704.3984; F. 817.549.0161
Attorney for Appellant


ORAL ARGUMENT REQUESTED
ACCEPTED
02-13-00409-CV
SECOND COURT OF APPEALS
FORT WORTH, TEXAS
2/4/2014 10:31:04 PM
DEBRA SPISAK
CLERK
02-13-00409-CV, Appellant's Brief (Morton) Page 1

I. Identity of Parties and Counsel
The following is a list of all parties and all counsel in this matter:

A. Appellant is Barbara Louise Morton d/b/a Timarron College Prep, defendant in
the trial court.
The attorney representing Appellant is:

Norred Law, PLLC
Warren V. Norred, State Bar Number: 24045094
200 E. Abram, Suite 300
Arlington, TX 76010
P. 817.704.3984; F. 817.549.0161
wnorred@norredlaw.com

B. Appellee is Timarron Owners Assoc., Inc, plaintiff in the trial court.
The attorney representing Appellee is:

Wilson Legal Group P.C.
John T. Wilson, State Bar Number 24008284
16610 Dallas Parkway, Ste. 1000
Dallas, TX 75248-6806
P. 972.248.8080 F. 972.248.8088
john@wilsonlegalgroup.com

02-13-00409-CV, Appellant's Brief (Morton) Page 2

II. Table of Contents

I. Identity of Parties and Counsel......................................................................... 1
II. Table of Contents .............................................................................................. 2
III. Index of Authorities .......................................................................................... 1
IV. Statement of the Case ....................................................................................... 1
V. Statement Regarding Oral Argument ................................................................ 4
VI. Statement of Jurisdiction .................................................................................. 4
VII. Issues Presented ............................................................................................... 4
VIII. Statement of Facts ............................................................................................ 5
IX. Brief Procedural History .................................................................................. 7
X. Summary of the Argument ..............................................................................10
XI. Arguments ......................................................................................................12
XII. Prayer ............................................................................................................18
XIII. Appendix - The following documents are included in the attached Appendix. 19







02-13-00409-CV, Appendix to Appellant's Brief (Morton)

III. Index of Authorities

Statutes
TEX. BUS. & COMM. CODE 16.26 ............................................................................ 8
TEX. CIV. PRAC. & REM. CODE 51.012 ..................................................................... 5
Tex. Civ. Prac. & Rem. Code 73.001 ..................................................................... 3
Tex. Gov't Code 22.220 ........................................................................................... 5

Cases
BHP Petroleum Co. v. Millard, 800 S.W.2d 838 (Tex. 1990) ............................9, 10
Digital Imaging Assocs. v. State, 176 S.W.3d 851 (Tex.App.--Houston [1st Dist.]
2005, no pet) ....................................................................................................9, 11
ECC Parkway Joint Venture v. Baldwin, 765 S.W.2d 504, 514 (Tex. App.--Dallas
1989, writ denied) .................................................................................................12
Falls County v. Perkins & Cullum, 798 S.W.2d 868, (Tex.App.--Fort Worth, no
writ.) ............................................................................................................... 10, 11
J.C. Hadsell & Co., Inc. v. Allstate Ins. Co., 516 S.W.2d 211, 213-14 (Tex. Civ.
App. -- Texarkana 1974, writ dism'd w.o.j.) ........................................................12
Newman Oil Co. v. Alkek, 614 S.W.2d 653 (Tex.Civ.App.--Corpus Christi 1981,
writ ref'd n.r.e.) .................................................................................................9, 11
Noe v. McLendon, 2007 Tex. App. LEXIS 5708 (Tex.App.--Fort Worth 2007, no
pet.) .......................................................................................................................12
Page v. Page, 780 S.W.2d 1 (Tex.App.--Fort Worth 1989, no writ) ......................12
Placid Oil Co. v. Louisiana Gas Intrastate, Inc., 734 S.W.2d 1, 5 (Tex. App. --
Dallas 1987, writ ref'd n.r.e.) ................................................................................13
Tex. Mut. Ins. Co. v. Ledbetter, 251 S.W.3d 31 (Tex. 2008)...................................10
Winslow v. Acker, 781 S.W.2d 322, 328, 1989 Tex.App.--San Antonio 1989, writ
denied) ..................................................................................................................13

IV. Statement of the Case

1. Appellant provides tutoring services, identified with the public using the
common law trademark "Timarron College Prep", that has been active since
02-13-00409-CV, Appendix to Appellant's Brief (Morton)

2008, during which time it has provided tutoring services, which falls under
trademark International Class 41.
2. Appellee owns "Timarron Owners Association, Inc.", which is a Texas-
registered trademark under International Class 36 in 2003.
3. Appellee filed a civil suit for trademark infringement, unjust enrichment,
tortious interference with prospective business relations, and unfair
competition, and sought actual damages, special damages, and costs of suit.
4. During the pendency of the civil suit, both parties began the registration process
with the United States Patent and Trademark Office ("USPTO")
1
, and both
parties filed oppositions
2
before the USPTO
3
to prevent the other party from
obtaining its registration.

1
Timarron Owners' Assoc. Inc. actually applied for three trademarks employing the "Timarron"
name; the other two are not in dispute, as they are stylized marks and do not conflict with
Appellant's text-only mark.
2
As paraphrased from http://www.uspto.gov/trademarks/law/TTAB.jsp - An opposition
proceeding is an administrative process available before the United States Patent and Trademark
Office's Trademark Trial and Appeal Board. In an opposition, a person may oppose the
trademark application of another party in order to stop that party from obtaining a federal
registration. Before a trademark can register, the mark must be published for opposition in
the Official Gazette. Publication starts the opposition period, which initially lasts 30 days,
but may be extended. During the original opposition period, any party who believes that it
would be damaged if the published mark obtains registration may oppose registration. Although
there are many possible grounds for opposition, the most common one is a claim that a
likelihood of confusion exists between the trademarks. In this type of proceeding similar to a
civil court case, a three-judge panel issues a decision after both sides have had an opportunity to
present their evidence and make arguments in legal briefs before the Board.
3
References to the USPTO in this document may be to the trademark examination process, or to
the Trademark Trial and Appeal Board, depending on context.
02-13-00409-CV, Appendix to Appellant's Brief (Morton)

5. Appellee successfully requested that the USPTO abate the opposition on the
trademark disputes until this Texas civil case was concluded, arguing over
Appellant's objection that the results of this state case would provide valuable
insight and factual conclusions to assist in adjudication of the trademark
oppositions and registration process before the USPTO.
6. Appellant filed a motion for summary judgment to end the dispute in the state
case. On the date on which Appellee's response was due, Appellee dismissed its
claims, and argued that its dismissal ended the dispute because Appellant's
counterclaims were merely defensive. Appellant argued that Appellee's
dismissal could not eliminate Appellant's counter-claims for declaratory
judgment and attorney fees because the counter-claims were not merely
defensive, and had greater ramifications for the trademark disputes before the
USPTO.
7. After receiving argument from the parties, the trial court entered Appellee's
dismissal.
8. Appellant asks the Court of Appeals to reverse the trial courts ruling
dismissing Appellant's counterclaims, and remand the case to the trial court for
consideration of Appellant's motion for summary judgment.


02-13-00409-CV, Appendix to Appellant's Brief (Morton)

V. Statement Regarding Oral Argument

9. The Court would benefit from oral argument in this case because having the
attorneys present for oral argument to answer the Courts questions regarding the
dispute's interaction with the trademark disputes before the USPTO and aid the Court
to resolve the case more quickly.

VI. Statement of Jurisdiction

10. This Court has jurisdiction under TEX. GOV'T CODE 22.220 and TEX. CIV.
PRAC. & REM. CODE 51.012.

VII. Issues Presented

11. The trial court erred as a matter of law when it granted Appellee's Motion to
Dismiss, as the decision is incompliant with TEX. R. CIV. PRO. 162, in that the
dismissal prejudiced Appellants right to be heard on a pending claim for affirmative
relief.
12. The trial court erred as a matter of law when it granted Appellee's Motion to
Dismiss because Appellant had claimed attorney's fees, and TEX. R. CIV. PRO. 162
states that a dismissal shall have no effect on any motion for attorney's fees pending
at the time of dismissal.
02-13-00409-CV, Appendix to Appellant's Brief (Morton)


VIII. Statement of Facts

13. The following facts must be considered as true from the Appellants evidence
and pleadings under the standard of review this Court applies to appellate
proceedings, in that admissible evidence was provided to support all of the facts
asserted, and no contravening evidence was offered.
14. Since 1999, Appellant has provided tutoring services from Southlake, Texas,
using the word "Timarron" in her business name since that time, and specifically
doing business as "Timarron College Prep" since May 2008. [C.R. 34, 9]
15. Appellee, a homeowners association, owns a Texas-registered trademark for
insurance and financial services, falling under trademark International Class 36.
[C.R. 14]
16. So many businesses use the word "Timarron" in Southlake and the surrounding
area that it provides no identification of a provider of any particular good or
service. [C.R. 32, 2]
17. The word "Timarron" has been used openly for years by the following
businesses:
a. "The Courtyard at Timarron" is a current business in Southlake, TX.
b. "The Villages at Timarron" is a current business in Southlake, TX.
c. "Timarron Family Medicine, PA" is a current business in Southlake, TX.
d. "Timarron at Creekside Park" is a current business in Southlake, TX.
e. "Timarron Financial Services, LLC" is a current business in Southlake, TX.
02-13-00409-CV, Appendix to Appellant's Brief (Morton)

f. "Timarron Partners, Inc." is a current business in Grapevine, TX.
g. "Timmaron LLC" is a current business in Richardson, TX.
h. "Timarron Capital Inc" is a current business in Irving, TX.
i. "Timarron Custom Homes, Inc." is a current business in Keller, TX.
j. "Timarron Venture, Ltd." is a current business in Dallas, TX.
k. "Timarron Venture One, L.C." is a current business in Dallas, TX.
l. "Timarron Shopping Center, L.P." is a current business in Dallas, TX.
m. "Timarron Mortgage Group Inc." is a current business in Dallas, TX.
n. "Timarron Land Corporation" is a current business in Mesquite, TX.
o. "Timarron Skin & Laser" is a current business in Southlake, TX.
p. "Timarron Professional Eye" is a current business in Southlake, TX.
q. "Timarron Golf Club Maintenance" is a current business in Southlake, TX.
r. "Timarron Family Medicine" is a current business in Southlake, TX.
s. "Village at Timarron 4120" is a current business in Southlake, TX.
t. "Timarron Tiger Sharks" is a current business in Southlake, TX.

[C.R. 32-33, 3; 33, 6]

18. As an example of the USPTO's adjudication of marks concerning the word
"Timarron", the Court should note that the USPTO provided a Notice of Allowance
for "TIMARRON CAPITAL, INC." as a standard character mark in 2006 for
commercial loan services. Though that mark was eventually abandoned for lack of
use, the USPTO did not see any conflict between "TIMARRON CAPITAL, INC"
and "TIMARRON OWNERS ASSOC., INC." [C.R. 33, 5]
19. No reasonable person would see all of the businesses with the name
"TIMARRON" in and around Southlake, TX and think that they were all owned by
the same organization. [C.R. 33, 6]
20. Appellee has previously filed trademark infringement suits against
organizations using "Timarron", most recently losing at summary judgment against
02-13-00409-CV, Appendix to Appellant's Brief (Morton)

Neighborhood Networks Publishing, Inc. in the 352th District Court, Cause No. 352-
260448-12. [App. A, p.163]
IX. Brief Procedural History

21. On January 13, 2012, Appellant filed an application for federal trademark
registration for "Timarron College Prep" with her tutoring service. [C.R. 79-86]
22. About July 26, 2012, Appellee filed suit in the 96
th
District Court, Tarrant
County, for trademark infringement under TEX. BUS. & COMM. CODE 16.26, unjust
enrichment, tortious interference with prospective business relations, and unfair
competition. Appellee alleged that Appellants use of the trademark caused confusion
in the marketplace, directly and detrimentally impacting Appellees ability to
consummate sales with customers. [C.R. 4]
23. About September 7, 2012, Appellant denied the allegations in Appellee's
Original Petition, and responded with a counterclaim for declaratory judgment that it
was not infringing any trademark belonging to Appellant, as well as a claim to cancel
Appellee's Texas-registered mark after transfer to Travis County, tortious
interference with business relations, and attorney fees under CPRC 37. [C.R. 19]
24. On October 18, 2012, Appellee filed Opposition 91207557 to Appellant's
federal trademark application S/N 85516680, and then moved for a suspension of
that opposition on June 12, 2013, arguing that the instant case would resolve the
matter. On July 2, 2013, Appellant filed a response, arguing that the state case could
02-13-00409-CV, Appendix to Appellant's Brief (Morton)

be handled by the 96th District Court and the trademark oppositions by the USPTO.
The USPTO granted the motion to suspend. [C.R. 110-114]
25. On Nov. 15, 2012, Appellee filed an application for federal trademark
registration for "Timarron" in financial and insurance services. [App. A, p.1]
26. On May 21, 2013, Appellant requested and received an extension of time to
file opposition to Appellee's application S/ N 85780484, setting the deadline to
August 21, 2013. [App. A, p.169]
27. About July 15, 2013, Appellant filed Defendants Traditional and No-
Evidence Motion for Summary Judgment ("Appellant's MSJ") against Appellees
claims, as Appellee could show no evidence that Appellant used Appellees
registered mark in connection with the selling and offering for sale of goods that
were likely to deceive or cause confusion or mistake as to the source or origin of
said good, which is required to constitute infringement under TEX. BUS. & COMM.
CODE 16.26, because Appellees mark represents only insurance & financial
products found in International Trademark Class 36, and Appellant uses the mark
only to advertise tutoring services that no reasonable person could associate with
Plaintiff's mark. [C.R. 26]
28. About August 13, 2013, Appellee filed Plaintiffs First Amended Petition,
asserting additional infringement causes of action. [C.R. 39]
02-13-00409-CV, Appendix to Appellant's Brief (Morton)

29. On August 15, 2013, a week prior to the scheduled hearing on August 22,
2013 for Appellants MSJ to be heard and on the day that Appellee's response to
Appellant's MSJ was due, Appellee filed its Plaintiffs Notice of Non-Suit and
Dismissal Without Prejudice as to Entire Suit with Brief in Support. (Appellee never
filed a response to Appellant's MSJ.) [C.R. 58]
30. On August 20, 2013, the trial court entered an order of dismissal, dismissing
the case without prejudice. [C.R. 69] However, the court vacated the order of
dismissal during the hearing on Appellant's MSJ on August 22, 2013. [C.R. 71] The
court permitted a two-week period for Appellant to file a response to Appellees
Notice of Non-Suit, stating that the court would rule on the dismissal thereafter based
on the submitted arguments. [R.R. 29:11-13]
31. On August 21, 2013, Appellant filed Opposition 91212131 to registration of
Appellee's application for "Timarron", S/N 85780484. [App. A, p.2]
32. On Aug. 26, 2013, Appellant filed her Objection to Notice of Nonsuit and
Motion to Strike. [C.R. 72]
33. On September 3, 2013, Appellee filed Plaintiffs Response to Defendant
Mortions Objection to Plaintiffs Notice of Non-Suit and Motion to Strike and
Plaintiffs Motion for Entry of Order of Dismissal Based on Notice of Nonsuit filed
08/15/13 and Brief in Support. [C.R. 153]
02-13-00409-CV, Appendix to Appellant's Brief (Morton)

34. On October 28, 2013, the court dismissed Appellant's counter claims and
denied Appellants Motion for Summary Judgment. [C.R. 314]
35. On November 18, 2013, Appellant filed her Notice of Appeal. [C.R. 316]
36. On December 11, 2013, Appellant moved for suspension of her opposition
until the appeal on the instant case is concluded. [App. A, p.62]
X. Summary of the Argument

37. Appellee asserts that Appellant's counter-claims for declaratory action and
attorney fees are mere mirrors of Appellee's original claims, so they are dismissed
pursuant to Rule 162 and case law, citing BHP Petroleum Co. v. Millard, 800
S.W.2d 838 (Tex. 1990), Newman Oil Co. v. Alkek, 614 S.W.2d 653 (Tex.App.--
Corpus Christi 1981, writ ref'd n.r.e.), and Digital Imaging Assocs. v. State, 176
S.W.3d 851 (Tex.App.--Houston [1st Dist.] 2005, no pet).
38. Appellant argues that TEX. R. CIV. PRO 162 allows Appellant's counterclaim
for attorney fees to survive the dismissal, and also argues that in the Second Court
of Appeals, her counterclaim for attorney fees is an affirmative relief claim that
survives plaintiff's dismissal pursuant to controlling case law, citing Falls County
v. Perkins & Cullum, 798 S.W.2d 868, (Tex.App.--Fort Worth, no writ.).
39. Appellant additionally argues that her counter-claims are more than mere
mirrors of Appellee's original claims, because she is currently seeking registration
of her trademark in the USPTO, which has abated proceedings until this dispute is
02-13-00409-CV, Appendix to Appellant's Brief (Morton)

adjudicated. Appellant argues that the registration of her trademark and the
intertwined opposition proceedings are an affirmative relief relying on this case, as
Appellee's own arguments state. [C.R. 144-152]
40. In all of Appellee's argument, never does Appellee address why the two
pending trademark registrations and oppositions do not constitute more than "mere
mirrors" of Appellee's original claims. In no way can this complex case involving
ongoing trademark litigation be considered analogous to a simple-minded attempt
to shoehorn attorneys fees into a case where such does not belong.
41. Because other proceedings depend upon the outcome of Appellant's claims,
and constitutes "true declaration controlling an ongoing and continuing
relationship" as discussed in BHP Petroleum Co. v. Millard, 800 S.W.2d 838, 841
(Tex. 1990), case law does not support Appellee authority in this case to
unilaterally terminate the suit in full. Tex. Mut. Ins. Co. v. Ledbetter, 251 S.W.3d
31 (Tex. 2008).
42. Appellant reiterates that Declaratory Judgment is appropriate in this case, as
her argument is distinguished from that of Appellee on at least one note, in that the
parties' trademark registrations and oppositions, which have been abated until the
adjudication of this case, constitutes an ongoing and continuing relationship,
dependent upon the outcome of Appellants claims.
02-13-00409-CV, Appendix to Appellant's Brief (Morton)

43. Furthermore, Appellant argues that the doctrine of estoppel should have
been applied in this case, as Appellee should have been barred from arguing
against its winning position at the federal level in this case, as it argued that
adjudication of the case would assist the USPTO in its treatment of the trademark
oppositions between the parties. As a result of Appellees successful argument
abating the oppositions filed between the parties before the USPTO, Appellant has
been unable to obtain her trademark. Appellee took a legal position, benefitted
from it, and is thus estopped from changing his mind with the court's blessing.
XI. Arguments

A. Appellants request for attorney fees pursuant to the Texas Declaratory Act
is a claim for Affirmative Relief in the Second Court of Appeals.

44. Appellee states that a defensive claim for attorney fees is not an affirmative
claim for relief, citing Newman Oil Co. v. Alkek, 614 S.W.2d 653 (Tex.Civ.--
Corpus Christi 1981, writ ref'd n.r.e.), Digital Imaging Assocs. v. State, 176
S.W.3d 851 (Tex.App.--Houston [1st Dist.] 2005, no pet.), and several other cases
that are not controlling. [C.R. 62]
45. Appellee's arguments, written and oral, tends to inappropriately blend the
absolute right to nonsuit his own claims as stated in Rule 162 with a right to
demand that a court dismiss all claims and the case in full. [C.R. 62, 7]
02-13-00409-CV, Appendix to Appellant's Brief (Morton)

46. In the Second Court of Appeals, however, a claim for attorney fees pursuant
to the Texas Declaratory Act has been found to be an affirmative claim for relief.
For example, in Falls County v. Perkins & Cullum, 798 S.W.2d 868, 871
(Tex.App.--Fort Worth 1990, no writ), Judge Spurlock explained that several
courts have recognized that a claim for attorney fees under the Declaratory Act is a
"claim for affirmative relief", and cited holdings from courts all over the state,
including ECC Parkway Joint Venture v. Baldwin, 765 S.W.2d 504, 514
(Tex. App.--Dallas 1989, writ denied), J.C. Hadsell & Co., Inc. v. Allstate Ins.
Co., 516 S.W.2d 211, 213-14 (Tex.App.--Texarkana 1974, writ dism'd w.o.j.), and
of course, the Second Court of Appeals in Page v. Page, 780 S.W.2d 1 (Tex.App.--
Fort Worth 1989, no writ). More recently, this holding remains undisturbed,
including Noe v. McLendon, 2007 Tex. App. LEXIS 5708 (Tex.App.--Fort Worth
2007, no pet.).
47. In each of the cases cited above, an appeals court has determined that a
claim for attorney fees pursuant to a declaratory action should survive a nonsuit.
Appellee appears to enjoy making proclamations about its ability to nonsuit at will,
which Appellant does not contest, but then confuse that with an ability to eliminate
all claims against it by that nonsuit.
48. Case law in the Second Court of Appeals is clear - attorney fees are a claim
for affirmative relief which survive a plaintiff's non-suit if the adverse party's
02-13-00409-CV, Appendix to Appellant's Brief (Morton)

counterclaims are addressing more than merely a negative position of plaintiff's
claims.
49. In the instant case, Appellee specifically is suing on infringement of its
Texas-registered mark "Timarron" mentioned in Appellee's Original Petition. [C.R.
5,6] However, Appellant sought a declaration that she was not infringing any
mark held or owned by Appellee [C.R. 20, 7]. Appellee has more than one
common law mark, currently owning two federal registrations and a third for
which Appellee has filed but Appellant has opposed formally. Therefore, if there
was any question about whether the counter-claims were merely defensive, that
question was answered when Appellee filed additional federal registrations.
B. Appellants request for Declaratory Relief is proper under the Texas
Declaratory Judgment Act

50. Appellee argues that Appellants cause of action for declaratory relief is
improper under the Texas Declaratory Judgment Act in that Appellants cause of
action for declaratory relief merely seeks to settle disputes that were already
pending before the trial court in Appellees original claims.
51. Appellant argues that according to Rule 162, a dismissal by a party does not
impact an adverse party's claim for affirmative relief or attorney fees if the claim
has greater ramifications than found in the original suit.
52. While Appellee correctly argues that a defendant's claim for declaratory
judgment which is a mere mirror of a plaintiff's claims is terminated by the
02-13-00409-CV, Appendix to Appellant's Brief (Morton)

plaintiff's nonsuit, case law indicates clearly that "when a declaratory judgment
counterclaim has greater ramifications than the original suit, the court may allow
the counterclaim." Winslow v. Acker, 781 S.W.2d 322, 328, 1989 Tex.App.--San
Antonio 1989, writ denied), citing Placid Oil Co. v. Louisiana Gas Intrastate, Inc.,
734 S.W.2d 1, 5 (Tex.App. -- Dallas 1987, writ ref'd n.r.e.).
53. In Winslow, the counterclaim would settle an ongoing royalty interest
dispute, so the appeals court determined that the counterclaim had more than the
sole purpose of providing a vehicle to obtain attorney fees.
54. Appellee argues that the determination of greater ramifications in relation
to a declaratory judgment claim depends upon the parties having an ongoing and
continuing relationship, most commonly a contractual one. [C.R. 163, 19]
Appellant argues that the ongoing trademark disputes constitute on ongoing and
continuing relationship.
55. In the case at bar, Appellant is attempting to obtain federal registration of
her trademark [C.R. 79-83]. Appellee filed a suit to stop Appellant from obtaining
her federal trademark registration [C.R. 96-102], and then asked the USPTO to
suspend its proceedings in that opposition until the case at bar is adjudicated [C.R.
110-114].
02-13-00409-CV, Appendix to Appellant's Brief (Morton)

56. In its arguments, Appellee argues the point it now argues against, shown in
paragraph eight, copied from the document [C.R. 112].

57. To be fair, Appellant argued that this state case did not have bearing on the
national case in front of the USPTO; after Appellant objected, Appellee then
reiterated its argument:

58. Appellee goes on through this document, arguing exactly opposite to what it
now states so emphatically in court:

02-13-00409-CV, Appendix to Appellant's Brief (Morton)

59. The USPTO was convinced by Appellee to suspend the opposition. Having
had his cake at the USPTO, Appellee now wants to argue just the opposite and ask
this Court let him eat his cake in this Court as well.
60. Appellant asked that the court take judicial notice of the USPTO documents,
as they are readily available to the public on the USPTO's online system. Appellant
previously asked the trial court to take judicial notice of these files, and Appellee
did not object. [C.R. 76, 15] To assist the Court, the documents filed in the two
oppositions are attached in Appendix A and B.
61. Appellee should be estopped from arguing against his winning position at
the federal level in this case. Appellant had to pay a price for Appellee's win, as
she has been unable to obtain her trademark; Appellee cannot now say in this court
that its argument was wrong.
62. The USPTO's decision at the Trademark Trial and Appeal Board is three
pages and worth reading in full. It grants the suspension, concluding with the
statement that "the state court's determination regarding these issues may provide
some persuasive insight with regard to opposer's claim of priority and likelihood of
confusion asserted in this proceeding." [App. B, 12]
63. As the case law points out, and as Appellee has already argued in this case,
the ramifications of this case extend beyond this particular case. Appellant's
02-13-00409-CV, Appendix to Appellant's Brief (Morton)

counter-claims should remain alive, and be adjudicated in the Court where
Appellee requested such and where so much work has already been completed.
XII. Prayer

64. Appellant prays that this Court reverse the trial courts ruling and judgment,
and remand the case back to the trial court for further proceedings.
Respectfully submitted,

NORRED LAW, PLLC


By:
Warren V. Norred; TX Bar Number 24045094
200 E. Abram, Suite 300; Arlington, TX 76010;
P. 817.704.3984; F. 817.549.0161
Attorney for Appellant Barbara Louise Morton
d/b/a Timarron College Prep

CERTIFICATE OF COMPLIANCE BY COUNSEL - Pursuant to Tex. R. App. Pro. 9.4, I
hereby certify that this Appellant's Brief contains 2958 words. This is a computer-generated
document created in Microsoft Word, using 12 or 14-point typeface for all text, except for footnotes
which are in 12-point typeface. In making this certificate of compliance, I am relying on the word
count provided by the software used to prepare the document.


By:
Warren V. Norred; TX Bar Number 24045094


CERTIFICATE OF SERVICE - A copy of this Appellants Brief was served upon John Wilson,
counsel for Appellee, via electronic service (972-248-8088), pursuant to Rule 9.5 of Texas Rules of
Appellate Procedure on this day, February 4, 2013.



Warren V. Norred; Attorney for Appellant


02-13-00409-CV, Appendix to Appellant's Brief (Morton)

XIII. Appendix - The following documents are included in the attached Appendix.

A. Documents constituting Opposition 91212131, filed by Appellant to oppose
Appellee's trademark application S/ N 85780484.
B. Documents constituting Opposition 91207557, filed by Appellee to oppose
Appellant's trademark application, S/N 85516680.

02-13-00409-CV, Appendix to Appellant's Brief (Morton)

CAUSE NO. 02-13-00409-CV

IN THE COURT OF APPEALS
FOR THE SECOND JUDICIAL DISTRICT OF TEXAS
FORT WORTH, TEXAS

Barbara Louise Morton d/b/a Timarron College Prep,
Appellant

V.

Timarron Owners Association, Inc.
Appellee



Trial Court Cause No. 096-260449-12
Hon. R. H. Wallace, Jr., Presiding Judge

APPENDIX IN SUPPORT OF APPELLANTS OPENING BRIEF



NORRED LAW, PLLC

Warren V. Norred
TX Bar Number 24045094
200 E. Abram, Suite 300
Arlington, TX 76010
P. 817.704.3984; F. 817.549.0161
Attorney for Appellant



Mark Information
Mark Literal Elements: TIMARRON
Standard Character Claim: Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
Mark Drawing Type: 4 - STANDARD CHARACTER MARK
Goods and Services
Note: The following symbols indicate that theregistrant/owner has amended the goods/services:
Brackets [..] indicate deleted goods/services;
Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of
Asterisks *..* identify additional (new) wording in the goods/services.
For: Association services, namely, promoting the interests of current homeowners and marketing to attract new homeowners; Business
management of homeowners associations for others; Homeowner association services, namely, promoting the interests of
homeowners in a specific community and marketing the community nationwide to prospective new residents and property owners
International Class(es): 035 - Primary Class U.S Class(es): 100, 101, 102
Class Status: ACTIVE
Basis: 1(a)
First Use: May 15, 1992 Use in Commerce: May 15, 1992
Basis Information (Case Level)
Filed Use: Yes Currently Use: Yes Amended Use: No
Filed ITU: No Currently ITU: No Amended ITU: No
Filed 44D: No Currently 44D: No Amended 44D: No
Filed 44E: No Currently 44E: No Amended 44E: No
Filed 66A: No Currently 66A: No
Filed No Basis: No Currently No Basis: No
Current Owner(s) Information
Owner Name: Timarron Owners Association, Inc.
Owner Address: 700 Wentwood Drive
Southlake, TEXAS 76092
UNITED STATES
Legal Entity Type: CORPORATION State or Country Where
Organized:
TEXAS
Attorney/Correspondence Information
Attorney of Record
Attorney Name: John T. Wilson Docket Number: 11-002008-17
Attorney Primary Email
Address:
john@wilsonlegalgroup.com Attorney Email
Authorized:
Yes
Correspondent
Generated on: This page was generated by TSDR on 2014-02-02 22:08:58 EST
Mark: TIMARRON
US Serial Number: 85780484 Application Filing Date: Nov. 15, 2012
Filed as TEAS Plus: Yes Currently TEAS Plus: Yes
Register: Principal
Mark Type: Service Mark
Status: An opposition after publication is pending at the Trademark Trial and Appeal Board. For further information, see TTABVUE on the
Trademark Trial and Appeal Board web page.
Status Date: Aug. 21, 2013
Publication Date: Apr. 23, 2013
Appendix A, p. 1
Correspondent
Name/Address:
JOHN T WILSON
WILSON LEGAL GROUP PC
16610 DALLAS PKWY STE 1000
DALLAS, TEXAS 75248-6802
UNITED STATES
Phone: 9722488080 Fax: 9722488088
Correspondent e-mail: john@wilsonlegalgroup.comkandace@wilsonlega
lgroup.comsul@wilsonlegalgroup.com ana@wilso
nlegalgroup.com
Correspondent e-mail
Authorized:
Yes
Domestic Representative - Not Found
Prosecution History
Date Description
Proceeding
Number
Aug. 21, 2013 OPPOSITION INSTITUTED NO. 999999 212131
May 21, 2013 EXTENSION OF TIME TO OPPOSE RECEIVED
Apr. 23, 2013 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
Apr. 23, 2013 PUBLISHED FOR OPPOSITION
Apr. 03, 2013 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
Mar. 12, 2013 APPROVED FOR PUB - PRINCIPAL REGISTER
Mar. 11, 2013 ASSIGNED TO EXAMINER 83280
Nov. 23, 2012 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
Nov. 19, 2012 NEW APPLICATION ENTERED IN TRAM
TM Staff and Location Information
TM Staff Information
TM Attorney: KAJUBI, ELIZABETH N Law Office Assigned: LAW OFFICE 107
File Location
Current Location: PUBLICATION AND ISSUE SECTION Date in Location: Mar. 18, 2013
Proceedings
Summary
Number of Proceedings: 2
Type of Proceeding: Opposition
Proceeding Number: 91212131 Filing Date: Aug 21, 2013
Status: Pending Status Date: Aug 21, 2013
Interlocutory Attorney: GEORGE POLOGEORGIS
Defendant
Name: Timarron Owners Association, Inc.
Correspondent Address: JOHN T WILSON
WILSON LEGAL GROUP PC
16610 DALLAS PKWY STE 1000
DALLAS TX , 75248-6802
UNITED STATES
Correspondent e-mail: john@wilsonlegalgroup.com , kandace@wilsonlegalgroup.com , sul@wilsonlegalgroup.com , ana@wilsonlegalgroup.com , amanda@
wilsonlegalgroup.com
Associated marks
Mark Application Status
Serial
Number
Registration
Number
TIMARRON
Opposition Pending 85780484
Plaintiff(s)
Name: Barbara Morton
Correspondent Address: WARREN V NORRED
NORRED LAW PLLC
200 E ABRAM STE 300
ARLINGTON TX , 76001
UNITED STATES
Correspondent e-mail: wnorred@norredlaw.com
Prosecution History
Entry

Appendix A, p. 2
Number
History Text Date Due Date
1
FILED AND FEE
Aug 21, 2013
2
NOTICE AND TRIAL DATES SENT; ANSWER DUE:
Aug 21, 2013 Sep 30, 2013
3
PENDING, INSTITUTED
Aug 21, 2013
4
ANSWER
Sep 30, 2013
5
P MOT TO SUSP PEND DISP CIV ACTION
Dec 11, 2013
6
D OPP TO SUSP; X-MOT TO CONSOLIDATE
Dec 20, 2013
Type of Proceeding: Extension of Time
Proceeding Number: 85780484 Filing Date: May 21, 2013
Status: Terminated Status Date: Aug 21, 2013
Interlocutory Attorney:
Defendant
Name: Timarron Owners Association, Inc.
Correspondent Address: JOHN T. WILSON
WILSON LEGAL GROUP, PC
16610 DALLAS PKWY STE 1000
DALLAS TX , 75248-6802
UNITED STATES
Associated marks
Mark Application Status
Serial
Number
Registration
Number
TIMARRON
Opposition Pending 85780484
Potential Opposer(s)
Name: BarbaraMorton
Correspondent Address: Warren V. Norred
Norred Law, PLLC
200 E. Abram, Suite 300
Arlington TX , 76010
UNITED STATES
Correspondent e-mail: wnorred@norredlaw.com
Associated marks
Mark Application Status Serial Number
Registration
Number
Prosecution History
Entry
Number
History Text Date Due Date
1
INCOMING - EXT TIME TO OPPOSE FILED
May 21, 2013
2
EXTENSION OF TIME GRANTED
May 21, 2013
Appendix A, p. 3
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
ESTTA Tracking number: ESTTA578147
Filing date: 12/20/2013
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 91212131
Party Defendant
Timarron Owners Association, Inc.
Correspondence
Address
JOHN T WILSON
WILSON LEGAL GROUP PC
16610 DALLAS PKWY SUITE 1000
DALLAS, TX 75248-6802
UNITED STATES
john@wilsonlegalgroup.com, kandace@wilsonlegalgroup.com,
sul@wilsonlegalgroup.com, ana@wilsonlegalgroup.com,
amanda@wilsonlegalgroup.com
Submission Other Motions/Papers
Filer's Name John T. Wilson
Filer's e-mail john@wilsonlegalgroup.com, ecf@wilsonlegalgroup.com
Signature /s/ John T. Wilson
Date 12/20/2013
Attachments Pages from Applicant's Response to Opposer's Mtn to Suspend.pdf(5258256
bytes )
Exhibit A.pdf(1848339 bytes )
Exhibit B.pdf(4310846 bytes )
Exhibit C.pdf(1867138 bytes )
Exhibit D.pdf(487279 bytes )
Exhibit E.pdf(1900833 bytes )
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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
ESTTA Tracking number: ESTTA575749
Filing date: 12/11/2013
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 91212131
Party Plaintiff
Barbara Morton
Correspondence
Address
WARREN V NORRED
NORRED LAW PLLC
200 E ABRAM, SUITE 300
ARLINGTON, TX 76001
UNITED STATES
wnorred@norredlaw.com
Submission Motion to Suspend for Civil Action
Filer's Name Warrren V. Norred
Filer's e-mail wnorred@norredlaw.com
Signature /Warren V. Norred/
Date 12/11/2013
Attachments 2013_12_11-MortonMotionToAbateA.pdf(3077840 bytes )
Appendix A, p. 62
Applicant's Objection to Motion to Suspend Opposition Page 1

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

BARBARA MORTON
Opposer Opposition No: 91212131

v. Mark: TIMARRON

TIMARRON OWNERS ASSOCIATION, INC. In re Trademark No: 85780484
Applicant.

OPPOSER'S MOTION TO SUSPEND OPPOSITION PURSUANT TO 37 CFR 2.117

Opposer, BARBARA MORTION, dba TIMARRON OWNERS ASSOCIATION, INC.,
submits this Motion to Suspend Opposition ("Motion"), pursuant to 37 C.F.R. 2.117.
I. Procedural Background
1. Opposer is Barbara Morton, dba Timarron College Prep; Applicant is Timarron Owners
Association, Inc. ("TOA'').
2. On August 21, 2013, Opposer Mortonn filed Opposition No. 91212131 against Applicant
TOA, who filed application 85780484, seeking registration for the word mark "TIMARRON" in
class 35, described as:
"Association services, namely, promoting the interests of current homeowners and marketing
to attract new homeowners; Business management of homeowners associations for others;
Homeowner association services, namely, promoting the interests of homeowners in a
specific community and marketing the community nationwide to prospective new residents
and property owners."

3. In addition to the application and opposition already discussed infra, Morton filed to register
the word mark "TIMARRON COLLEGE PREP" in application 8551680, to which Applicant
TOA has filed Opposition No. 91207557.
4. In the state case filed in Tarrant County District Court in Texas as Cause No. 096-260449-12,
Applicant TOA sued Opposer Morton, alleging Trademark Infringement and associated claims
Appendix A, p. 63
Applicant's Objection to Motion to Suspend Opposition Page 2

concerning the "TIMARRON" mark and seeking to restrain Morton's use of "TIMARRON
COLLEGE PREP".
5. After Applicant TOA filed its suit for infringement and filed its opposition to Morton's
application for "TIMARRON COLLEGE PREP", Applicant requested that its opposition be
suspended until the state action was final, which the Board granted. Applicant's Motion to
Suspend is attached as Exhibit A, which also includes TOA's Original Petition for trademark
infringement and Morton's Answer.
6. In the state action, Morton filed a motion for summary judgment, attached as Exhibit B and
incorporated in full herein. A week prior to the hearing set on the motion, TOA dismissed its
claims, ostensibly understanding that it was about to lose and not wishing to see the matter fully
and finally litigated, and resolved against it. The trial court allowed the case in full to be
dismissed, dismissing Morton's counterclaims, which would be of use in these proceedings. That
action remains active in the Second Court of Appeals as 02-13-00409-CV; docket on the appeal
is publicly available and kept current at the following URL where the Board may freely view it:
http://www.search.txcourts.gov/Case.aspx?cn=02-13-00409-CV.
7. Though Morton objected to the abatement initially in her own proceedings, this Board
decided to suspend the opposition action in her application seeking to register "TIMARRON
COLLEGE PREP" and significant work at the state level regarding the dispute has occurred.
8. Under the same reasoning employed by the Board to suspend action in the opposition to
Morton's application 8551680, Morton now asks the Board to suspend the opposition at bar
pursuant to 37 CFR 2.117, as the resolution of the state action will have significant bearing on
the outcome of this proceeding.

Appendix A, p. 64
Applicant's Objection to Motion to Suspend Opposition Page 3

II. Prayer
WHEREFORE, Morton respectfully requests that the Board grant the Motion and
suspend Opposition No. 91212131until the state case is final.
Respectfully submitted,

By: /Warren V. Norred/
Warren V. Norred, Texas Bar No. 24045094
200 E. Abram, suite 300, Arlington, TX 76001
Tel. (817) 704-3984, Fax. (817) 549-0161
Attorney for PLAINTIFFs

CERTIFICATE OF SERVICE - I certify that on December 11, 2013, a true and correct copy
of this Motion to Suspend was served by fax to John Wilson at 972.248.8088.



Warren V. Norred
Appendix A, p. 65
Applicant's Objection to Motion to Suspend Opposition

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

BARBARA MORTON
Opposer Opposition No: 91212131

v. Mark: TIMARRON

TIMARRON OWNERS ASSOCIATION, INC. In re Trademark No: 85780484
Applicant.


EXHIBIT A

MOTION TO SUSPEND FOR CIVIL ACTION
IN RELATED OPPOSITION 91207557
Exh. A, p. 1 Appendix A, p. 66
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
ESTTA Tracking number: ESTTA1475
Filing date: 06/12/2013
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 91207557
Party Plaintiff
Timarron Owners Association, Inc.
Correspondence
Address
JOHN T WILSON
WILSON LEGAL GROUP PC
16610 DALLAS PARKWAY 2000
DALLAS, TX 75248
UNITED STATES
john@wilsonlegalgroup.com, kandace@wilsonlegalgroup.com,
sul@wilsonlegalgroup.com, ana@wilsonlegalgroup.com
Submission Motion to Suspend for Civil Action
Filer's Name John T. Wilson
Filer's e-mail john@wilsonlegalgroup.com, uspto@wilsonlegalgroup.com
Signature /John T. Wilson/
Date 06/12/2013
Attachments Opposer's Motion to Suspend Opposition 6.12.13.pdf(5602720 bytes )
Exh. A, p. 2 Appendix A, p. 67
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
In the matter of trademark Serial No.: 85/516680
Mark: TIMARRON COLLEGE PREP
Published in the Official Gazette on October 16, 2012
TIMARRON OWNERS ASSOCIATION, INC
Opposer,
v.
TIMARRON COLLEGE PREP
Applicant.
Opposition No. 91207557
MOTION TO SUSPEND OPPOSITION PURSUANT TO 37 C.F.R. 2.117
Opposer files this Motion to Suspend Opposition Pursuant to 37 C.F. R. 2.117, as
authorized by Title 37 2.117 of the U.S. CODE OF FEDERAL REGULATIONS.
I. Procedural Background
1. Opposer is Timarron Owners Association, Inc. ("TOA''); Applicant is Timarron
College Prep ("TCP").
2. On or about October 18, 2012, Opposer filed its Notice of Opposition against
Applicant, in light of Opposer's superior rights in and to "TIMARRON," and in light of
Applicant's seeking to register the word mark TIMARRON COLLEGE PREP as a trademark for
"after school tutoring programs" and "education services" in International Class 041.
3. On or about July 26, 2012, Opposer filed its Original Petition in Timarron
Owners Association, Inc. v Barbara Louise Morton d/b/a College Prep; Cause No. 096-260449-
12, pending in the District Court of the 96th Judicial District of Tarrant County Texas (the "Civil
Lawsuit") alleging claims of Trademark Infringement, Unjust Enrichment, Tortious Interference,
MOTION TO SUSPEND OPPOSITION PAGEl
Exh. A, p. 3 Appendix A, p. 68
and Unfair Competition as they pertain to the TIMARRON mark, and seeking inter alia, for the
Court to restrain TCP from trading off of the good will and reputation of TOA's TIMARRON
mark. A true and correct copy of said Original Petition is attached hereto as "Exhibit 1" and is
incorporated by reference as if fully set forth herein.
4. On or about September 7, 2012, TCP filed its Original Answer and Counterclaim
in the Civil Lawsuit. A true and correct copy of said Original Answer and Counterclaim is
attached hereto as "Exhibit 2" and is incorporated by reference as if fully set forth herein.
5. On or about October 11 , 2012, TOA filed its Original Answer and Special
Exceptions to Defendant/Counter-Plaintiffs Original Counterclaim.
6. The Civil Lawsuit is currently in the discovery stage of litigation.
II. Arguments & Authorities
7. 37 C.F.R. 2.117(a) states:
Whenever it shall come to the attention of the Trademark Trial and
Appeal Board that a party or parties to a pending case are engaged in a
civil action or another Board proceeding which may have a bearing on
the case, proceedings before the Board may be suspended until
termination of the civil action or the other Board proceeding.
8. Accordingly, Timarron Owners Association, Inc. respectfully requests that this
Board suspend this action in light of the Civil Lawsuit for the reason that the Civil Lawsuit,
because it includes a cause of action for trademark infringement related to the Mark and seeks
declaratory relief determining the owner of the Mark, is likely to have a substantial bearing on
the outcome of this proceeding.
MOTION TO SUSPEND OPPOSITION PAGE2
Exh. A, p. 4 Appendix A, p. 69
B. Conclusion
For these reasons, because of the Civil Lawsuit in which Timarron Owners Association,
Inc. and Timarron College Prep are currently engaged, Timarron Owners Association asks The
Trademark Trial and Appeal Board to suspend this opposition proceeding pending the resolution
ofthe Civil Lawsuit.
DATED: June 12,2013.
MOTION TO SUSPEND OPPOSITION
Respectfully submitted,
WILSON LEGAL GROUP P.C.
By: Is/John T. Wilson
John T. Wilson
State Bar No. 24008284
Kandace D. Walter
State Bar No. 24047068
16610 Dallas Parkway, Suite 2000
Dallas, Texas 75248
(T) 972.248.8080;
(F) 972.248.8088;
ATTORNEYS FOR OPPOSER
TIMARRON OWNERS
ASSOCIATION, INC.
PAGE3
Exh. A, p. 5 Appendix A, p. 70
CERTIFICATE OF SERVICE
This is to certify that a true and correct copy of the above Motion has been served upon
Opposer, by and through its counsel of record, pursuant to Rules of Federal Civil Procedure on
June 12, 2013.
Mark W. Handley
Handley Law Firm, PLLC
P.O. Box 97
Grapevine, Texas 76099-0097
Facsimile: (972) 518-1777
MOTION TO SUSPEND OPPOSITION
Warren V. Norred
200 E. Abram
Suite 300
Arlington, TX 76001
Facsimile: (817) 549-0161
Is/John T. Wilson
John T. Wilson
PAGE4
Exh. A, p. 6 Appendix A, p. 71
"EXHIBIT 1"
Exh. A, p. 7 Appendix A, p. 72
TIMARRON OWNERS
ASSOCIATION, INC.
Plaintiff,
v.
BARBARA LOUISE MORTON D/B/A
TIMARRON COLLEGE PREP
Defendants.











IN THE DISTRICT COURT
\'--"
C\\0. JUDICIAL DISTRICT
TARRANT COUNTY, TEXAS
PLAINTIFF TIMARRON OWNERS ASSOCIATION, INC.'S ORIGINAL PETITION
TO THE HONORABLE JUDGE OF SAID COURT:
COMES NOW Plaintiff TIMARRON OWNERS ASSOCIATION, INC. and files this
Original Petition against BARBARA LOUISE MORTON DIBIA TIMARRON COLLEGE
PREP (the "Petition"), and in support of said Petition avers the following:
I. DISCOVERY CONTROL PLAN
1. Plaintiff intends to conduct discovery under Level2 of the TEXAS RULE OF CNrr..
PROCEDURE 190.3/190.4.
II. VENUE AND JURISDICTION
2. Plaintiff TIMARRON OWNERS ASSOCIATION, INC. ("TIMARRON") is a
Texas corporation whose principal place of business is located in Tarrant County, Texas.
3. Defendant BARBARA LOUISE MORTON D/B/A TIMARRON COLLEGE
PREP ("MORTON") is an individual who resides and may be served at 476 Cherokee Ct. S.,
Keller, Texas 76248 or wherever else she may be found.
.. . .._ ~
PLAINTIFF TIMARRON OWNER'S ASSOCIATION ORIGINAL PETITION
Exh. A, p. 8 Appendix A, p. 73
4. This Court has jurisdiction over this matter because the amount in controversy is
within the jurisdictional limits of the Court.
5. Venue is appropriate in Tarrant County in that all or substantially all of the acts
and/or omissions that form the basis of this suit occurred in Tarrant County, Texas.
III. FACTUAL BACKGROUND
6. TIMARRON is the owner of a trademark, specifically, Texas Trademark
Registration No. 800205842 (the "Mark"). A true and correct copy of the Texas Secretary of
State' s Record for the Mark and the Assignment of said Mark to TIMARRON is attached hereto
as "Exhibit A" and is incorporated by reference as if fully set forth herein.
7. The Mark was first used in commerce as early as the Declaration of Covenants,
Conditions, and Restrictions for TIMARRON, dated May 15, 1992.
8. MORTON has been using the Mark in connection with its promotions,
advertisements, websites, and operations without TIMARRON' s authorization or permission.
9. MORTON' s unauthorized use of the Mark has caused consumers to erroneously
believe that MORTON is sponsored by, connected to, and/or otherwise affiliated with
TIMARRON.
10. MORTON's unauthorized use of the Mark has caused consumers to erroneously
believe that MORTON's goods and/or services are sponsored by, connected to, and/or otherwise
affiliated with TIMARRON.
11. MORTON' s unauthorized use of the Mark has caused consumers to erroneously
believe that MORTON's websites, including, but not limited to, www.timarroncollegeprep.com,
are sponsored by, connected to, and/or otherwise affiliated with TIMARRON.
PLAINTIFF TIMARRON OWNER'S ASSOCIATION ORIGINAL PETITION PAGE2
Exh. A, p. 9 Appendix A, p. 74
12. MORTON has purposely used the Mark to cause confusion in the marketplace
with regard to the sponsorship, approval, and/or affiliation of MORTON's goods and/or services
with TIMARRON.
13. MORTON has intentionally and fraudulently held her goods and/or services out
to be the products of TIMARRON.
14. MORTON's promotion, advertisement, and/or operation under the Mark has
tortuously interfered with TIMARRON's ability to consummate sales with customers who are
attempting to purchase products sponsored by, approved by, and/or otherwise connected with
TIMARRON.
15. On or about January 18, 201:2, counsel for TIMARRON issued a cease and desist
letter to MORTON directing her to stop her promotion, advertisement, and operation under the
Mark and any other unauthorized use of the Mark (the "C&D Letter"). A true and correct copy
of said C&D Letter is attached hereto as "Exhibit B" and is incorporated by reference as if fully
set forth herein.
16. Despite receiving the C&D Letter, MORTON has continued her unauthorized use
of the Mark and sale of goods bearing the Mark.
17. MORTON has sold goods bearing the Mark and/or promoted herself, advertised
herself, and/or operated under the Mark in the State of Texas, including, but not limited to, in
Tarrant County.
IV. SUMMARY OF CAUSES OF ACTION
18. This suit is for the following causes of action against MORTON: i) Trademark
Infringement Under TEXAS BUSINESS AND COMMERCE CODE 16.26; ii) Unjust Enrichment; iii)
Tortious Interference with Prospective Business Relations; and, iv) Unfair Competition.
PLAINTIFF T IMARRON OWNER'S ASSOCIATION ORIGINAL PETITION PAGE3
Exh. A, p. 10 Appendix A, p. 75
V. CAUSES OF ACTION
19. TIMARRON hereby reincorporates paragraphs 1 through 18 in accordance with
TEXAS RULE OF CIVIL PROCEDURE 58.
TRADEMARK INFRINGEMENT UNDER TEXAS BUSINESS AND COMMERCE CODE 16.26
20. TIMARRON owns the Mark, registered under Chapter 16 of the TEXAS BUSINESS
AND COMMERCE CODE.
21. MORTON, without TIMARRON's consent, authorization, or permission, used
and continues to use the Mark and/or a colorable imitation of the Mark in connection with the
selling and offering for sale of goods and/or services in the State of Texas when such use was
and is likely to deceive and/or cause confusion and/or mistake as to the source or origin of said
goods.
22. TIMARRON has been damaged by MORTON' s unauthorized use of the Mark.
23. Pursuant to TBCC 16.26(c), TIMARRON is entitled to have MORTON enjoined
from using the Mark in the State of Texas.
24. Pursuant to TBCC 16.26(d), TIMARRON is entitled to recover all damages
caused by MORTON's unauthorized use of the Mark since at least the date ofthe C&D Letter,
when MORTON had constructive notice ofTIMARRON's ownership of the Mark.
UNJUST ENRICHMENT
25. TIMARRON owns the Mark, constituting a valuable, proprietary resource.
26. MORTON unlawfully misappropriated and traded upon the Mark for use in her
own proprietary endeavors.
27. MORTON has been unjustly enriched by her unlawful misappropriation and use
ofthe Mark, to TIMARRON's detriment.
PLAINTIFF TIMARRON OWNER'S ASSOCJATION ORIGlNALPETJTlON PAGE4
Exh. A, p. 11 Appendix A, p. 76
28. TIMARRON is entitled to recover all valuable considerations MORTON has
gained by her unlawful misappropriation and use of the Mark.
TORTIOUS INTERFERENCE WITH PROSPECTIVE BUSINESS RELATIONS
29. TIMARRON, through its use of its Mark, was reasonably likely to enter in
business relations with consumers.
30. MORTON, by her continued, unauthorized use of the Mark after recei ving notice
of TIMARRON' s ownership thereof through the C&D Letter, intentionally interfered with
TIMARRON' s prospective business relations by diluting the Mark and creating confusion about
the Mark in the market.
31 . MORTON's unauthorized use of the Mark was and is tortious and unlawful.
32. MORTON' s tortious interference has caused injury to TIMARRON by diluting
the Mark and creating confusion about the Mark in the market, directly and detrimentally
impacting TIMARRON's ability to consummate business relations with consumers.
UNFAIR COMPETITION
33. TIMARRON owns the Mark, constituting a valuable trade resource.
34. TIMARRON has developed goodwill associated with the Mark
35. MORTON unlawfully misappropriated the Mark and traded upon the goodwill
developed therein in furtherance of her own commercial goals and to the detriment of
TIMARRON' s commercial endeavors.
36. MORTON's unlawful use ofthe Mark has caused TIMARRON injury.
VI. DEMAND FOR ACCOUNTING, REQUEST FOR TURN O V ~ AND REQUEST
TO HOLD HARMLESS
31. Pursuant to TBCC 16.26, TIMARRON demands an accounting of MORTON's
sales resulting from MORTON's unlawful use of the Mark and/or sales involving MORTON's
PLAINTIFF TIMARRON OWNER'S ASSOCIATION ORIGINAL PETITION PAGES
Exh. A, p. 12 Appendix A, p. 77
goods bearing the Mark and/or services sold under the Mark. TIMARRON requests that, after
such accounting, all MORTON's profits from such sales, particularly those sales occurring after
the C&D Letter had been received and notice ofTIMARRON's ownership of the Mark given, be
paid to TIMARRON. TIMARRON further requests all goods and advertisements bearing the
Mark in MORTON's possession be turned over to TIMARRON and/ or destroyed as the Court
deems proper.
32. TIMARRON requests the Court order MORTON to indemnifY and hold harmless
TIMARRON against any and all possible claims of third parties arising out of the sale, offer of
sale, distribution or use of MORTON's goods bearing the Mark or that bear confusingly similar
designs to the Mark or otherwise based on or incorporating TIMARRON' s Mark. TJMARRON
further requests the Court order MORTON to identifY vendors or resellers used to produce or sell
their infiinging goods.
VII. APPLICATION FOR TEMPORARY RESTRAINING ORDER
33. Because of MORTON's unauthorized use of the Mark, MORTON has
undermined TIMARRON's business by selling goods and/or products that bear the Mark and/or
confusingly similar designs and/or by falsely representing the goods produced and/or sold by
MORTON have the sponsorship ofTIMARRON.
34. MORTON's sale of goods and/or products bearing the Mark and/or confusingly
similar designs have caused and continue to cause TIMARRON irreparable harm for which there
is no adequate remedy at law.
35. Since TIMARRON can readily establish itself as owner of the Mark,
TIMARRON is likely to succeed on the merits of the case prohibiting MORTON's unauthorized
use of the Mark and confusingly similar designs.
PLAINTIFF TIMARRON OWNER'S ASSOCIATION ORIGINAL PETITION PAGE6
Exh. A, p. 13 Appendix A, p. 78
36. The injury faced by TIMARRON outweighs the injury that would be sustained by
enjoining MORTON from her unauthorized use of the Mark and related stylistic designs.
37. Furthermore, the Court's granting of a temporary restraining order against
MORTON's use of the Mark and confusingly similar designs would not adversely affect public
policy or public interest.
38. TIMARRON respectfully demands that MORTON be restrained from selling any
goods and/or products containing either the Marks and/or confusingly similar designs. If
necessary, TIMARRON is willing to post a bond in order for the Court to issue the temporary
restraining order against MORTON.
VIII. ATTORNEY'S FEES
39. Because of the conduct of MORTON, TIMARRON has been compelled to
engage the services of an attorney to prosecute this action. As a result, TIMARRON is entitled
to recover both jointly and severally from MORTON a reasonable sum for the necessary services
of Wilson Legal Group, P.C. in the preparation and trial of this action and for any appeals related
thereto.
IX. CONDITIONS PRECEDENT
40. All conditions precedent to Plaintiff's causes of action have been performed
and/or have occurred.
X. RULE 194 REQUEST FOR DISCLOSURE
41. Pursuant to Rule 194 of the Texas Rules of Civil Procedure, MORTON is
requested to disclose within fifty (SO) days after service of this request, the information or
material described in Rule 194 of the Texas Rules of Civil Procedure. The originals or copies of
documents and other tangible items requested must be produced for inspection and copying at
PLAINTIFF T IMARRON OWNER'S ASSOCIATION ORIGINAL PETITION PAGE7
Exh. A, p. 14 Appendix A, p. 79
Wilson Legal Group P.C., 16610 Dallas Parkway, Suite 2000, Dallas, Texas 75248 together with
a written response. Each written response must be preceded by the request to which it applies.
No objection or assertion of work product privilege is permitted to a request under this rule.
XI. PRAYER FOR RELIEF
WHEREFORE, PREMISES CONSIDERED, Plaintiff TIMARRON OWNERS
ASSOCIATION, INC., respectfully requests:
a. That judgment be entered in favor of Plaintiff against Defendant BARBARA
LOUISE MORTON D/B/A TIMARRON COLLEGE PREP for actual damages in
an amount in excess of the minimum jurisdictional limits of the Court as can be
shown;
b. An award of Plaintiffs actual and special damages as pleaded within the
jurisdictional limits of the Court;
c. An award to Plaintiff of Defendant's ill-gotten profits;
d. An award of Plaintiff's court costs in an amount to be determined by the Court;
e. An award of Plaintiff's reasonable and necessary attorneys' fees;
f. That Plaintiff recover pre-judgment and post-judgment interest on all sums
awarded at the highest rate permitted by law; and
g. An award to TIMARRON for such further relief, at law or in equity, to which it is
justly entitled.
PLAINTIFF T!MARRON OWNER'S ASSOCIATION ORIGINAL PETITION PAGES
Exh. A, p. 15 Appendix A, p. 80
DATED: July 26,2012.
Respectfully submitted,
WILSON LEGAL GROUP P.C.
By: /s/.John T. Wilson
John T. Wilson
State Bar No. 24008284
Kandace D. Walter
State Bar No. 24047068
16610 Dallas Parkway, Suite 2000
Dallas, Texas 75248
(T) 972.248.8080;
(F) 972.248.8088;
ATTORNEYSFORTIMARRON
OWNERS ASSOCIATION, INC.
PLAINTIFF TIMARRON OWNER' S ASSOCIATION ORIGINAL P ETITION PAGE9
Exh. A, p. 16 Appendix A, p. 81
. .
"EXHIBIT A"
Exh. A, p. 17 Appendix A, p. 82
TRADEMARK INQUIRY - VIEW TRADEMARK ' . Page 1 of 1
TEXAS SECRETARY of STATE
HOPE ANDRADE
UCC 1 Business Organizations I Trademarks I Notary I Account I HelpfFees I Briefcase I Logout
TRADEMARK INQUIRY -VIEW TRADEMARK
Registration Number:
Status:
Classification:
Word Description: .
Disclaimer:
800205842
Registered
Insurance & Financial:
Class 36
TIMARRON
N/A
Registration Date:
Date of Expiration:
Design Code:
July 18, 2003
July 18, 2013
031702
REGISTRANTS FILING HISTORY CLASSIFICATION
Last Update
May 21.2003
Name
Timarron Owners Association, Inc.
I Return to Search J
l- --- --------- - --
Address
700 Wentwood Drive
Southlake, TX 76092 USA
I
l
__I
https://directsos.state.tx. us/tm _inquiry/tm _inquiry-trademark.asp?spage=reg&:Sregistratio. .. 7/17/2012
Exh. A, p. 18 Appendix A, p. 83
ASSIGNMENT OF
OF A TRADEMARK/SERVICE MARK
FILED
In the Office of the
Secretary of State of Texas
To: Office of the Secretary of State
Corporations Section
P. 0. Box 13697
Austin, Texas 78711-3697
Asillgnor: Westerra Timarron L.P.
Address: 13155 Noel Road-LB54, Suite 700
City: Dallas State:
Registration No. 800205842
.
Timarron Owners Association, Jnr .
700 Wentwood Drive
Southlake, Texas 76092
Texas
.FEB 16 2010
Corporations Section
Zip: 75240
"Date of-Registration: May 21, 2003
Except as hereinafter provided, Assignor assigns to Assignee all right, title and interest in
to tbe above referenced mark and its registratio-.., together with the good will of the
business with whicb the mark is used, or that part of good will connected with the use
of, and symbolized by, the mark. Assignor reserves the to continue to this mark
in its name and for the limited purpose of marketing, adver!lsement;
djstribution, lease or sale of Assignor's products and services.
Date: \-8 "'l
0
f/misc/assignmentoftegistrationoftradcmilrk. westerra-timarron
.
... J
Exh. A, p. 19 Appendix A, p. 84
"EXHIBIT B"
Exh. A, p. 20 Appendix A, p. 85
WILSON LEGAL GROUP P.C.
16610 Dallas Parlrway
Suite 2000
Dallas, Texas 75248
Telephone 972.248.8080
Facsimile 972.248.8088
Attomeys & Counselors at Law
John T. Wilson
E-mail: john@wilsonlegalgroup.com
Barbara Morton
Timan-on College Prep
630 E. Southlake Blvd., Suite 111
Southlake, Texas 76092
Barbara Morton
Timarron College Prep
251 E. Southlake Blvd., Suite 110
Southlake, Texas 76092
Barbara Morton
Timarron College Prep
251 S. Main Street, Suite 101
KelJer, Texas 76248
-v.w.w.ilsonlegalgroup.com
January 18, 2012
(Via Certified Mail, Return Receipt
Requested No. 7010-1870-0001-6973-3232
and Regular First Class Mail)
(Via Certified Mail, Return Receipt
Requested No. 7010-1870-0001-6973-3249
and Regular First Class Mail)
(Via Certified Mail, Return Receipt
Requested No. 7010-2000-0002-7331-9860
and Regular First Class Mail)
Re: CEASE AND DESIST NOTICE
To Whom it May Concern:
Please be advised that this firm represents Timarron Owners Association, Inc.
(hereinafter the "HOA"). As you may know, "Timarron" (hereinafter the "Mark") is a state
registered trademark (Registration No. 800205842) of the HOA and the use of the Mark, without
our client's express consent, is a violation of state and federal trademark laws under which the
Mark is protected.
Your promotion, advertisement, and operation under the Mark constitutes an
infringement of the HOA's common law, state, and federal trademark rights. Consumers,
retailers, wholesalers, real estate professionals, and the public at large will be and probably have
already been misled into believing that you are affiliated with our client, that you are approved,
sponsored or supplied by it, or the reverse.
ACCORDINGLY, TAKE NOTICE THAT YOUR ARE HEREBY NOTIFIED TO
IMMEDIATELY CEASE AND DESIST THE USE OF THE MARK AND ALL
CONFUSINGLY SIMILAR VARIA TJONS OF THE MARK.
Exh. A, p. 21 Appendix A, p. 86
Cease and Desist Notice
January 18, 2012
Page 2 of2
Under the circumstances, we demand that you immediately cease and desist all further
promotion, advertisement, and operation under the name Timarron or any variation of the Mark.
In particular, we demand that you do not display any signage, distribute any literature,
promotional items, or in any other way advertise the name Tirnarron in print or on the internet.
We wish to receive your assurances in writing by noon on January 25, 2012, that you will
comply with the above cease and desist demand. If you fail to advise us by then that you will not
promote, advertise, or operate your business under the name Timarron, or any variations of the
Mark, our client shall, without further notice to you, take such steps as may be necessary to
assert its statutory rights to recover profits, damages, and costs thereof: attorney's fees, and
otherwise to protect its interests.
This is a serious matter that requires your immediate attention. I urge you to handle this
matter accordingly.
cc: Via Electronic Mail
Client
Sincerely yours,
WILSON LEGAL GROUP P.C .
.. ~ ~ : : :
Exh. A, p. 22 Appendix A, p. 87
"EXHIBIT 2"
Exh. A, p. 23 Appendix A, p. 88
Cause No. 096-260449-12
TIMARRON OWNERS ASSOC., INC.
Plaintiff,
IN THE DISTRICT COURT
v.








96TH JUDICIAL DISTRICT
BARBARA LOUISE MORTON D/B/A/
TIMARRON COLLEGE PREP
Defendant.
TARRANT COUNTY, TEXAS
DEFENDANT MORTON'S ORIGINAL ANSWER, COUNTERCLAIMS, and
MOTION TO TRANSFER
NOW COMES Defendant BARBARA LOUIS MORTON, files this Original Answer in
the above-styled and numbered cause, denying Plaintiffs claims, asking the Court for a
declaration that Defendant is not infringing any common law trademark claimed by Plaintiff, and
once the declaration is established, a transfer to Travis County District Court so that Defendant
may seek cancellation of the Texas-registered trademark of TIMARRON OWNERS
ASSOCIATION, INC, and would show the following:
I. PARTY VERIFICATION
I. Defendant/Counter-Plaintiff, BARBARA MORTON, is an individual residing in Tarrant
County, Texas, and may be contacted through her attorney of record, Warren Norred.
2. PlaintiffTIMARRON OWNERS ASSOCIATION, INC. has already appeared in this suit.
II. JURISDICTION AND VENUE
3. The subject matter in controversy is within the jurisdictional limits of this court.
4. Plaintiff has established venue in Tarrant County, so venue for the counterclaims is also
properly in Tarrant County under TEX. C!V. PRAC. & REM. CODE 15.062(a).
5. Counterclaims against Plaintiff may require transfer to Travis County if the suit progresses to
an action on the merits of those claims.
96-260449-12, Defendant's Original Answer & Counterclaims Page 1
Exh. A, p. 24 Appendix A, p. 89
Ill. GENERAL DENIAL
6. Defendant denies each and every allegation of Plaintiffs Original Petition.
IV. COUNTERCLAIM FOR DECLARATORY JUDGMENT
7. Defendant requests that this Court issue declaratory judgment that it has not infringed any
trademark belonging to Plaintiff. pursuant to the Texas Uniform Declaratory Judgments Act,
Texas Civil Practice and Remedies Code, Chapter 37, in that:
a. Defendant's trademark has been active since 2008, during which time it has provided
tutoring services. which falls under trademark International Class 41.
b. Plaintiffs Texas-registered trademark, provided in its petition, is for insurance and
financial services, falling under trademark International Class 36.
c. Plaintiff has based its case under an incorrect theory that that every mark that includes
the word "Timarron" infringes Plaintiffs mark. However. there are nearly 40
busi nesses in Texas that use "Timarron" or a similar mark, including a home owner's
association in San Antonio, the Tamaron Property Owners Association. which has
existed and used the mark for seven years prior to Plaintiffs Texas registration.
V. COUNTERCLAIM FOR DISCLAIMER OR CANCELLATION
8. Defendant requests that this Court issue an order cancelling Plaintiffs trademarks, as
Plaintiff does not appear to provide services that would appropriately fall under Class 36,
and should be cancelled pursuant to TEX. Bus. & COM. CODE 16.064(4)(D) [registered
mark was obtained fraudulently].
VI. COUNTERCLAIM FOR
TORTIOUS INTERFERENCE WITH BUSINESS RELATIONS
9. Defendant has suffered damages for Plaintiffs agents actions that have interfered in
96-260449-12, Defendant's Original Answer & Counterclaims Page 2
Exh. A, p. 25 Appendix A, p. 90
potential leases and other contracts, and caused Defendant to suffer malicious and wanton
interference, disturbance, or annoyance in her business dealings.
VII. MOTION TO TRANSFER
10. In accordance with TEX. Bus. & COM. CODE 16.106 (20 12), this action must be
transferred to Travis County, as it includes an action to cancel a trademark. Defendant is
content to allow discovery and time for a potential settlement before a hearing on this
motion to transfer in the hope that the issue might be settled before hearing and court be
required to order on this issue.
VIII. ATTORNEY FEES
11. In accordance with TEX. CIV. PRAC. & REM. CODE 37, Defendant requests attorney fees.
IX. PRAYER
12. Defendant prays the CoUI1, after notice and hearing or t rial, enters declaratory judgment
in favor of Defendant, cancel or amend Third-Party Defendant's registered trademark,
awards Defendant the costs of court, attorney's fees, and such further relief as Defendant
may be entitled to in law or in equity.
B y ~ ~ ~ ~ ~ ~ ~ ~ ~ ~ ~ ~
Warren V. Norred, Texas Bar
200 E. Abram, Suite 300, Arlington, TX 760 10
Tel. (8 17) 704-3984, Fax. (8 17) 549-0161
96-260449-12, Defendant's Original Answer & Counterclaims Page 3
Exh. A, p. 26 Appendix A, p. 91
Applicant's Objection to Motion to Suspend Opposition

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

BARBARA MORTON
Opposer Opposition No: 91212131

v. Mark: TIMARRON

TIMARRON OWNERS ASSOCIATION, INC. In re Trademark No: 85780484
Applicant.


EXHIBIT B
MOTION FOR SUMMARY JUDGMENT

BY OPPOSER MORTON, IN CAUSE NO. 96-260449-121,
96TH DISTRICT COURT, TARRANT COUNTY, TEXAS



Exh. B, p. 1 Appendix A, p. 92
. -\
Cause No. 096-260449-12 S
TIMARRON OWNERS ASSOC., INC.
Plaintiff,








o-:"'
IN THE DISTRICT
?J c..f!

v.
96TH JUDICIAL DISTRIG:l' ..
I ".
f1i .
:;::.>---
BARBARA LOUISE MORTON D/B/A/
TIMARRON COLLEGE PREP
-;;:.
TARRANT COUNTY, TEXAS
Defendant.
,..
DEFENDANT MORTON'S
TRADITIONAL AND NO EVIDENCE MOTION FOR SUMMARY JUDGMENT
Defendant Morton asks the court to sign a final summary judgment against Plaintiff on all claims
under the traditional and no-evidence standards, and in favor of Defendant's Counter-Claims.
A. Introduction
I. Plaintiff sued Defendant Morton for:
a. trademark infringement,
b. unjust enrichment,
c. tortious interference with prospective business relations, and
d. unfair competition.
2. Defendant answered the suit with counterclaims for:
a. declaratory judgment,
b. disclaimer or cancellation of Plaintiffs Texas-registered mark,
c. tortious interference with business relations,
d. motion to transfer the case to Travis County, and
e. attorney fees.
3. Discovery in this suit is governed by a Level 2 discovery control plan.
B. Defendant moves for a No-Evidence Summary Judgment against Plaintiff's Claims
4. Trademark Infringement - Plaintiff can show no evidence that Defendant used Plaintiffs
registered mark in connection with the selling and offering for sale of goods that is likely to
deceive or cause confusion or mistake as to the source or origin of said good, which is
required to constitute infringement under TEX. Bus. & COMM. CODE 16.26, because
96-260449-12, Defendant's Traditional and No Evidence MSJ Page 1
-\
Exh. B, p. 2
Appendix A, p. 93
Plaintiff's mark represents only insurance & financial products found in International
Trademark Class 36 (see Plaintiff's Original Petition, Exhibit A), and Defendant uses the
mark only to advertise tutoring services that no reasonable person could associate with
Plaintiff's mark. Without evidence of likely confusion, the infringement claim must fail.
5. Unjust Enrichment - Generally, to sustain an action for unjust enrichment, there must be
some basis for the law to infer a promise on the part of the defendant to the plaintiff to pay
for the benefit or property, as discussed in Berger Engineering Co. v. Village Casuals, Inc.,
576 S. W .2d 649, 652 (Tex. Civ. App.--Beaumont 1978, no writ) ("there must exist between
the parties an implication that the party performing the services would be paid by the party
accepting and benefiting by them"). The absence of such a relationship between a coventurer
and the other coventurer's father, for example, defeated a coventurer's claim of unjust
enrichment against the father, even though the father took depreciation and operating losses
stemming from the joint venture as deductions in his personal federal income tax return in
Shwiff v. Priest, 650 S. W .2d 894, 902 (Tex. App.-San Antonio 1983, writ refd n.r.e.).
Plaintiff can show no relationship between the Parties that will sustain a claim for unjust
enrichment, so its claim must fail.
6. Tortious Interference With Prospective Business Relations - Plaintiff's claim must fail
because Plaintiff can provide no evidence on any of its elements, as listed in Faucette v.
Chantos, 322 S.W.3d 901, 914 (Tex. App.--Houston [14th Dist.] 2010, no pet. h.):
a. There must be a "reasonable probability" that the plaintiff would have entered into the
prospective relations. This must be a specific relationship.
b. The defendant's conduct must have been independently tortious or wrongful.
c. The defendant's interference must have resulted in actual harm or damage.
96-260449-12, Defendant's Traditional and No Evidence MSJ Page2
Exh. B, p. 3
Appendix A, p. 94
d. The defendant's acts of interference must have been the proximate cause of the plaintiffs
damages.
e. When the interference is with prospective business relations that are the subject of
competition, the plaintiff must show defendant's actions violated antitrust laws or caused
third persons to refuse to deal with the plaintiff. Caller-Times Pub. Co. v. Triad
Communications, 855 S. W .2d 18, 22 (Tex. App.-Corpus Christi 1993, no writ).
7. Unfair Competition- Among other elements, Plaintiff must prove that Defendant's use of the
trade mark would be likely to confuse the public. Thompson v. Thompson Air Conditioning &
Heating, Inc., 884 S. W .2d 555, 558 (Tex. App.-Texarkana 1994, no writ). As the Parties
provide very different services that have no relation, Defendant's use of the mark would not
be likely to confuse the public.
8. Defendant attaches affidavits to this motion as Exhibit A to establish facts in support of this
motion and incorporates the affidavits by reference.
C. Argument & Authorities Supporting Defendant's No-Evidence Motion
9. A court may grant a no-evidence motion for summary judgment if the movant can show that
adequate time for discovery has passed and the nonmovant has no evidence to support one or
more essential elements of its claim or defense. TEX. R. CIV. P. 166a(i).
I 0. An adequate time for discovery has passed.
11. Defendant is entitled to summary judgment because Plaintiff cannot, by any admissible
evidence, demonstrate there is any evidence to support the specific elements as discussed
supra, causing all five of Plaintiff's substantive claims to fail.
96-260449-12, Defendant's Traditional and No Evidence MSJ Page3
Exh. B, p. 4
Appendix A, p. 95
D. Defendant also moves for a Traditional Summary Judgment against Plaintifrs Claims
12. To prevail on summary judgment, a movant must conclusively establish all elements of its
cause of action as a matter of law, TEX. R. Crv. P. 166a(c); Defendant herein incorporates the
prior factual discussion in previous paragraphs, and adds the additional facts and argument in
support of a traditional summary judgment as follows.
13. Facts- There is no reason to believe that consumers will confuse TIMARRON OWNER'S
ASSOCIATION with TIMARRON COLLEGE PREP, as consumers are already aware of
these two businesses and others in operation in the Southlake and surrounding area, along
with many others, and would not see yet another business in the area using the word
TIMARRON as connected to Plaintiff. As discussed in Exhibit A, the following commercial
enterprises exist near Plaintiff:
a. "The Courtyard at Timarron" is a current business in Southlake, TX.
b. "The Villages at Timarron" is a current business in Southlake, TX.
c. "Timarron Family Medicine, PA" is a current business in Southlake, TX.
d. "Timarron at Creekside Park" is a current business in Southlake, TX.
e. "Timarron Financial Services, LLC" is a current business in Southlake, TX.
f. "Timarron Partners, Inc." is a current business in Grapevine, TX.
g. "Timmaron LLC" is a current business in Richardson, TX.
h. "Timarron Capital Inc" is a current business in Irving, TX.
i. "Timarron Custom Homes, Inc." is a current business in Keller, TX.
j. "Timarron Venture, Ltd." is a current business in Dallas, TX.
k. "Timarron Venture One, L.C ... is a current business in Dallas, TX.
I. "Timarron Shopping Center, L.P." is a current business in Dallas, TX.
m. "Timarron Mortgage Group Inc." is a current business in Dallas, TX.
n. "Timarron Land Corporation" is a current business in Mesquite, TX.
o. "Timarron Skin & Laser" is a current business in Southlake, TX.
p. "Timarron Professional Eye" is a current business in Southlake, TX.
q. ''Timarron Golf Club Maintenance" is a current business in Southlake, TX.
r. "Timarron Family Medicine" is a current business in Southlake, TX.
s. "Village at Timarron 4120" is a current business in Southlake, TX.
t. "Timarron Tiger Sharks" is a current business in Southlake, TX.
96-260449-12, Defendant's Traditional and No Evidence MSJ Page4
Exh. B, p. 5
Appendix A, p. 96
14. No similarity of Goods - Plaintiff's claims requires at least a reasonable possibility that
consumer confusion might result from Defendant's use of the word "Timarron", but the
services provided by TIMARRON OWNER'S ASSOCIATION is not remotely connected to
the educational tutoring services provided by Defendant.
15. No Confusion - After recognizing that the services offered by the Plaintiff and Defendant are
so different, and there are so many other commercial enterprises using the word .. Timarron",
no reasonable person could be confused as to think that one organization is responsible for all
of the enterprises.
16. Affirmative Defense of Laches - Applicant has been using TIMARRON as part of her mark
for years, along with many other entities in the area. Timarron home owners have employed
Defendant's mentoring services for years. The delay in filing suit was not reasonable or
excusable. Though the Lanham Act has no Statute of Limitations, federal courts often look to
state law and apply the doctrine of laches accordingly; the Texas Deceptive Trade Practices
Act has a statute of limitations of two years, which supports a finding of laches in this case.
Plaintiff cannot lie in wait while Defendant builds her business and then try to force a
business name change.
17. Affirmative Defense of Dilution - The word "TIMARRON" is used by many businesses in
the Southlake, TX area. In the minds of consumers, the word "TIMARRON" is not attached
to one particular business. The word "TIMARRON" is diluted; no single. entity can claim
exclusive rights to the word.
18. No Colorable Claim for Common Law Trademark Confusion - Plaintiff's claim to a common
law trademark is limited to its full name "TIMARRON OWNER'S ASSOCIATION", by
which it is known. Defendant does not use Plaintiffs common law mark.
96-260449-12, Defendant's Traditional and No Evidence MSJ PageS
Exh. B, p. 6
Appendix A, p. 97
19. Summarv of Motion for Traditional Summary Judgment - Based on the above facts,
Defendant asks the Court for a declaration that Defendant is not infringing Plaintiff's
registered mark, and award fees in accordance with TEX. CIV. PRAC. & REM. CODE 37, in
accordance with the following paragraph.
E. Attorney Fees
20. Defendant is entitled, under the authority of TEX. CIV. PRAC. & REM. CODE 37, to
reasonable and necessary attorney fees that were incurred in the prosecution of this suit and
contingent attorney fees in case of unsuccessful appeal, as supported by Exhibit B, including:
a. Defendant is entitled to attorney fees incurred in the amount of $7515.00.
b. If this case is unsuccessfully appealed to the court of appeals, Defendant is entitled to an
additional $15,000; if to the Texas Supreme Court, an additional amount of$15,000.
F. Prayer
21. Defendant asks for summary judgment against Plaintiff with regard to all of its claims, and
summary judgment on her claim for declaratory judgment and associated attorney fees,
including pre- and post-judgment interest.
22. Defendant waives all causes of action and relief not requested in this motion.
By:

200 E. Abram, Suite 300, Arlington, TX 760 I 0
Tel. (817) 704-3984, Fax. (817) 549-0161
CERTIFICATE OF SERVICE- I certify that on 2013, a true and correct copy of
Defendant's MSJ was served by fax to John Wilson 97 48.8080.

96-260449-12, Defendant's Traditional and No Evidence MSJ Page6
Exh. B, p. 7
Appendix A, p. 98
Cause No. 096-260449-12
TIMARRON OWNERS ASSOC., INC.
Plaintiff,
IN THE DISTRICT COURT


96TH JUDICIAL DISTRICT
v.

BARBARA LOUISE MORTON D/8/Al
TIMARRON COLLEGE PREP
Defendant.

TARRANT COUNTY, TEXAS

EXHIBIT A
AFFIDAVIT OF DEFENDANT BARBARA MORTON
BEFORE ME, the undersigned authority, on this day personally appeared Barbara Morton, who
swore on oath that the following facts are true:
"My name is Barbara Louis Morton. I am over 18 years of age, of sound mind, and fully
competent to make this affidavit. 1 have personal knowledge of the facts stated herein and they
are all true and correct."
1. "I did not intentionally use 'TIMARRON' in the name of my tutoring service in order to
take advantage ofPiaintitrs name, or any of the many businesses using the same word.
2. "The use of ''TIMARRON" by itself cannot be used as a trademark because it is used by so
many other people that it provides no identification of the provider of any good or service.
3. "I am familiar with the commercial enterprises in and around the Dallas-Fort Worth area. I
have personally seen more than a dozen entities using the name "TIMARRON" in their
title, and a search on the Internet revealed the following commercial entities in north Texas.
a. The Courtyard at Timarron is a current business in Southlake, TX.
b. The Villages at Timarron is a current business in Southlake, TX.
c. Timarron Family Medicine, PA is a current business in Southlake, TX.
d. Timarron at Creekside Park is a current business in Southlake, TX.
e. Timarron Financial Services, LLC is a current business in Southlake, TX.
f. Timarron Partners, Inc. is a current business in Grapevine, TX.
g. Timmaron LLC is a current business in Richardson, TX.
96-260449-12, Defendant's Traditional and No Evidence MS) Page7
Exh. B, p. 8
Appendix A, p. 99
h. Timarron Capital Inc is a current business in Irving, TX.
i. Timarron Custom Homes, Inc. is a current business in Keller, TX.
j. Timarron Venture, Ltd. is a current business in Dallas, TX.
k. Timarron Venture One, L.C. is a current business in Dallas, TX.
I. Timarron Shopping Center, L.P. is a current business in Dallas, TX.
m. Timarron Mortgage Group Inc. is a current business in Dallas, TX.
n. Timarron Land Corporation is a current business in Mesquite, TX.
o. Timarron Skin & Laser is a current business in Southlake, TX.
p. Timarron Professional Eye is a current business in Southlake, TX.
q. Timarron Golf Club Maintenance is a current business in Southlake, TX.
r. Timarron Family Medicine is a current business in Southlake, TX.
s. Village at Timarron 4120 is a current business in Southlake, TX.
t. Timarron Tiger Sharks is a current business in Southlake, TX."
4. "The number of businesses using the word "TIMARRON" in the geographic area indicates
that even if the word "TIMARRON" was at one time a valid trademark, it is too diluted to
be protectable as a mark today."
5. "Besides the commercial enterprises listed above, I have seen that the USPTO provided a
Notice of Allowance for "TIMARRON CAPITAL, INC." as a standard character mark in
2006 for commercial loan services. Though that mark was eventually abandoned for lack of
use, the USPTO did not see any conflict between "TIMARRON CAPITAL, INC" and
''TIMARRON OWNERS ASSOC., INC."
6. No reasonable person would see all of the businesses with the name "TIMARRON" in
them and think that they were all owned by the same organization. It's just a common name
used commercially in this geographic area. lfTIMARRON OWNERS ASSOC., INC. was
the first organization to use "TIMARRON" and everyone else has used it in response, then
it would be unfair to wait more than 20 years of use by two dozen other entities before
reacting. None of the businesses using "TIMARRON" have hidden that fact.
7. "There is no likelihood of confusion between my tutoring service and TIMARRON
OWNERS ASSOC., INC."
96-260449-12, Defendant's Traditional and No Evidence MSJ PageS
Exh. B, p. 9
Appendix A, p. 100
J u 1. 11. 2 0 13 12 : 2 6 PM No. 8719 P. 3
8. "There is no simflarlty of goods betweenTIMARR.ON OWNERS ASSOC., INC., whicll is
a home owner association, and my organization. which provides tutoring services."
9. "I have performed tutoring services since 1999 with the wold in my entity
name; I have been doing business specifically as WJ"IMARR.ON COLLEGE PREP" since at
least as far back as May 2008.
10. was naming my company, I learned that 'TIMARR.ON' meant 'child of promise' m
the Hopi laoguage. I do not recall where or how I learned that, and I do not coutend tbat I
am some sort of expert on the Hopi language. But when I learned it, I chose to use 1he wotd
in my company's name on tbat basis."
11. "I had to hire Warren Norred to defend me in this suit I am paying him $300 per h0\1!', and
bave accumulated legal fees as detalled in Exhibit B."
Barbata L. Morton
StJBSCRIBEDANDSWORNTOBEFOREMEby It Date: 7ol3_
9626044912, Defendant's Traditional and No Evidence MSJ
Page9
Exh. B, p. 10
Appendix A, p. 101
Cause No. 096-260449-12
TIMARRON OWNERS ASSOC., INC.
Plaintiff,
IN THE DISTRICT COURT


96TH JUDICIAL DISTRICT
v.

BARBARA LOUISE MORTON D/B/A/
TIMARRON COLLEGE PREP
Defendant.

TARRANT COUNTY, TEXAS

EXHIBITB
AFFIDAVIT OF WARREN NORRED IN SUPPORT OF ATTORNEY FEES
BEFORE ME, the undersigned authority, on this day personally appeared Warren V. Norred,
who swore on oath that the following facts are true:
"My name is Warren V. Norred. I am over 18 years of age, of sound mind, and fully
competent to make this affidavit. I have personal knowledge of the facts stated herein and they
are all true and correct."
"Movant Barbara Louis Morton employed Norred Law, PLLC in connection with the
matter on which this suit is based. Movant is entitled to recover the reasonable attomeyts fees
requested herein pursuant to the Declaratory Judgment Act, TEX. Crv. PRAC. & REM. CoDE 37.
It is my opinion that these fees are reasonable attomey
1
s fees based upon the following factors:
1. The novelty and difficulty of the issue involved, the skill required to provide the
legal services properly, and my experience, reputation, and expertise in
perfonning the services;
2. The time and labor involved to perfonn the legal services properly; and,
3. The fee customarily charged in the community for similar services."
"I charge $300 per hour for attorney time on this case. The estimated fees in this case are,
to date, $6615.00, which includes the fees for the initial consult, writing of the answer, amended
96-260449-12, Defendant's Traditional and No Evidence MSJ Page 10
Exh. B, p. 11
Appendix A, p. 102
answer. handling discovery issues. preparation and service of the Motion for Summary Judgment
to which this affidavit is attached. I anticipate another three hours to pmticipate in the hearing on
this motion and post-hearing issues. totaling $7515.00.
"In support of this accounting. I have attached a prc-billto this aftidavit as Attachment I.
reflecting a true and correct accounting of the tasks that my office has performed for this case."
JL is my opinion that attorney's tees in the amount of $5,000.00 would be a reasonable
fee for the services required to perform post-judgment discovery and to satisf)' the judgment by
writ of execution and other procedures. $10.000.00 if appealed to the Court or Appeals. and
S 15.000.00 to the Supreme Com1.
\V&fren V. Norred
SUBSCRIBED AND S\VORN TO BEFORE l\1E by \Varren V. Norred on July /,}.. 2013.
' / '
:?." . ;; /

.
. -:r . c&t:. '- ./
Notary Public. State of Texas
Page 11
Exh. B, p. 12
Appendix A, p. 103
PRE-BILL
Norred Law, PLLC
Bobbie Morton
476 Cherokee Ct. S
Keller, TX 76248
Client:
Matter:
Matter Type:
Comments:
File Open Date:
Billing Mode:
Billing Frequency :
ACCOUNT
AGING
Remarks:
Fees Billed to Date:
ATTACHMENT 1
Bobbie Morton
Date:
Time:
Page:
7/1212013
9:32AM
I of2
12-439
12-439
Timarron v. Bobbie Morton - Trademark
LIT Litigation
7/26/2012
Hourly
Monthly
~
s 0.00
$0.00
Bill Date: 7/1212013
Start Date: 11111900
Last Bill:
30-59 Days
s 0.00
Costs Billed to Date:
Originating Timekeeper:
Responsible Timekeeper:
Billing Format Code:
Fees/Costs Cut Date:
Payments Cut Date:
Type of Bill:
WVN
WVN
GEN
7/1212013
7/1212013
Regular
60-89 Days
$0.00
90 Davs and Over
$0.00
$0.00
Ticket
~ a t e IimeJseener Description ~
0.33
Ammm1
$99.00 BL 17 112512012 WVN Initial disc with BM re HOA dispute.
10
19
18
11
2
3
4
s
6
7
8
20
21
9
12
4/412012 WVN
4/1412012 WVN
512912012 WVN
812212012 WVN
812312012 WVN
812412012 WVN
8125/2012 WVN
8/31/2012 WVN
91612012 WVN
917/2012 WVN
9/8/2012 WVN
10/1212012 WVN
11/2712012 WVN
1211512012 VVVN
111112013 VVVN
5/15/2013 WVN
Email exchange with BM; decided not to send letter.
Email with BM on decision not to get an agreement with
HOA.
Email disc with BM about new lease at Courtyard at
Timarron.
Rec'd petition.
Rec'd rest of Pet.
Rec'd evidence from BM, number of emails with examples
of other Timarron companies.
Rec'd additional evidence ofTimarron used.
Begin drafting answer.
Complete Answer. Added counter-claims of tortious
interference.
File and serve answer
Write Rule II for email and email to JW. Examined
national trademark.
Rec'd Timarron's answer.
Wrote and filed response to Notice of Opposition.
Sent discovery to Wilson via email.
Wrote & served Discovery to HOA.
Rec'd discovery requests from HOA.
Continued On Next Page
0.33
0.10
0.17
0.50
0.17
0.50
0.17
0.50
3.50
1.00
0.50
0.50
2.00
0.25
2.00
0.25
$99.00 BL
$30.00 BL
$51.00 BL
$150.00 BL
$51.00 BL
$150.00 BL
$51.00 BL
$150.00 BL
$1 ,050.00 BL
$300.00 BL
$150.00 BL
$150.00 BL
$600.00 BL
$75.00 BL
$600.00 BL
$75.00 BL
Exh. B, p. 13
Appendix A, p. 104
PRE-BILL
Norred Law, PLLC
Client: 12-439
Matter: 12-439
13
5/16/2013 WVN
14
5/16/2013 WVN
IS
5/17/2013 WVN
16
5/1712013 WVN
23
S/22120\3 EF
26
5/30/2013 EF
24 5/3112013 EF
25 5/3112013 WVN
28 6/3/2013 EF
27 6/4/2013 EF
32 6/1712013 WVN
30
7/312013 WVN
29 71512013 WVN
Bobbie Morton
Timarron v. Bobbie Morton - Trademark
Status to client. Discussion of opposition to HOA's marks. 0.25
Email disc re: deposition of BM, set for July I 5.
0.25
Disc re: trademark case, opposition case.
0.75
BM sent out req. discovery on 12117, followed with phone 0.83
discussion.
Emailed Admissions to Bobbie. A waiting responses. 0.00
Prepared Admissions Responses. 1.25
Drafted Interrogatory answers. 1.75
Instruct and draft discovery. 0.75
Drafted Production responses/emailed Bobbie/LM on 0.75
Bobbie's cell.
Served Discovery Responses (lnt, Adm, & Prod). 0.25
Rec'd Motion to Compel. No hrg set yet. 0.25
Draft MSJ. 3.00
Finalize, file, serve MSJ. 2.00
Total Houn: 24.85
Billable Hours: 24.85
Timekeeper Summary
Timekeeper EF worked 4.00 hours at $90.00 per hour, totaling $360.00.
Timekeeper WVN worked 20.85 hours at $300.00 per hour, totaling $6,255.00.
Prior Balance:
Payments Received:
Current Fees:
Sales Tax on Fees:
Advanced Costs:
Sales Tax on Costs:
Administrative Cost:
Late Charges:
Additional Retainer Due:
TOTAL AMOUNT DUE:
$0.00
$0.00
$6,615.00
$0.00
$0.00
$0.00
$0.00
$0.00
$0.00
$0.00
$6,615.00
Date:
Time:
Page:
$75.00
$75.00
$225.00
$249.00
$0.00
$112.50
$157.50
$225.00
$67.50
$22.50
$75.00
$900.00
$600.00
$6,615.00
Fees and Costs ( Fees Only ( Costs Only ( Don't Bill [
711212013
9:32AM
2of2
BL
BL
BL
BL
BL
BL
BL
BL
BL
BL
BL
BL
BL
Exh. B, p. 14
Appendix A, p. 105
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
ESTTA Tracking number: ESTTA562047
Filing date: 09/30/2013
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 91212131
Party Defendant
Timarron Owners Association, Inc.
Correspondence
Address
JOHN T WILSON
WILSON LEGAL GROUP PC
16610 DALLAS PKWY SUITE 1000
DALLAS, TX 75248-6802
UNITED STATES
john@wilsonlegalgroup.com, kandace@wilsonlegalgroup.com,
sul@wilsonlegalgroup.com, ana@wilsonlegalgroup.com
Submission Answer
Filer's Name John T. Wilson
Filer's e-mail john@wilsonlegalgroup.com, amanda@wilsonlegalgroup.com
Signature /s/ John T. Wilson
Date 09/30/2013
Attachments Applicant's Original Answer.pdf(31774 bytes )
Exhibit A.pdf(345282 bytes )
Exhibit B.pdf(3768736 bytes )
Exhibit C.pdf(17358 bytes )
Appendix A, p. 106

APPLICANTS ORIGINAL ANSWER PAGE 1
IN THE UNITED STATE PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

BARBARA LOUISE MORTON D/B/A
TIMARRON COLLEGE PREP

Opposer, Opposition No.: 91212131

v. Mark: TIMARRON

TIMARRON OWNERS In re Trademark No.: 85516680
ASSOCIATION, INC.

Applicant.


APPLICANTS ORIGINAL ANSWER


COMES NOW Applicant TIMARRON OWNERS ASSOCIATION, INC.
(TIMARRON) which files this Original Answer (the Answer) to Opposer BARBARA
LOUISE MORTON D/B/A TIMARRON COLLEGE PREPs Notice of Opposition (the
Opposition) and, in support of said Answer, would show the Board the following:
1. Applicant admits the allegations contained in paragraph 1 of the first section of
the Opposition.
2. Applicant is without knowledge or information sufficient to form a belief about
the truth or accuracy of the allegations contained in paragraph 2 of the first section of the
Opposition; accordingly, such allegations are denied.
3. Applicant admits the allegations contained in paragraph 3 of the first section of
the Opposition.
As grounds of the opposition, it is alleged that:
1. Applicant admits the allegations contained in paragraph 1 of the second section of
Appendix A, p. 107

APPLICANTS ORIGINAL ANSWER PAGE 2
the Opposition.
1

2. Applicant is without knowledge or information sufficient to form a belief about
the truth or accuracy of the allegations contained in paragraph 2 of the second section of the
Opposition; accordingly, such allegations are denied.
a. Applicant is without knowledge or information sufficient to form a belief about the
truth or accuracy of the allegations contained in subparagraph a. of paragraph 2 of
the second section of the Opposition; accordingly, such allegations are denied.
b. Applicant is without knowledge or information sufficient to form a belief about the
truth or accuracy of the allegations contained in subparagraph b. of paragraph 2 of
the second section of the Opposition; accordingly, such allegations are denied.
c. Applicant is without knowledge or information sufficient to form a belief about the
truth or accuracy of the allegations contained in subparagraph c. of paragraph 2 of
the second section of the Opposition; accordingly, such allegations are denied.
d. Applicant is without knowledge or information sufficient to form a belief about the
truth or accuracy of the allegations contained in subparagraph d. of paragraph 2 of
the second section of the Opposition; accordingly, such allegations are denied.
e. Applicant is without knowledge or information sufficient to form a belief about the
truth or accuracy of the allegations contained in subparagraph e. of paragraph 2 of
the second section of the Opposition; accordingly, such allegations are denied.
f. Applicant is without knowledge or information sufficient to form a belief about the
truth or accuracy of the allegations contained in subparagraph f. of paragraph 2 of
the second section of the Opposition; accordingly, such allegations are denied.

1
N.B. It should be noted that the Opposition contains a numerical error as to its paragraphs, having multiple
paragraphs with the same numbering. For the sake of clarity, Applicant herein follows Opposers numbering
conventions in the Opposition.
Appendix A, p. 108

APPLICANTS ORIGINAL ANSWER PAGE 3
g. Applicant is without knowledge or information sufficient to form a belief about the
truth or accuracy of the allegations contained in subparagraph g. of paragraph 2 of
the second section of the Opposition; accordingly, such allegations are denied.
h. Applicant is without knowledge or information sufficient to form a belief about the
truth or accuracy of the allegations contained in subparagraph h. of paragraph 2 of
the second section of the Opposition; accordingly, such allegations are denied.
i. Applicant is without knowledge or information sufficient to form a belief about the
truth or accuracy of the allegations contained in subparagraph i. of paragraph 2 of
the second section of the Opposition; accordingly, such allegations are denied.
j. Applicant is without knowledge or information sufficient to form a belief about the
truth or accuracy of the allegations contained in subparagraph j. of paragraph 2 of
the second section of the Opposition; accordingly, such allegations are denied.
k. Applicant is without knowledge or information sufficient to form a belief about the
truth or accuracy of the allegations contained in subparagraph k. of paragraph 2 of
the second section of the Opposition; accordingly, such allegations are denied.
l. Applicant is without knowledge or information sufficient to form a belief about the
truth or accuracy of the allegations contained in subparagraph l. of paragraph 2 of
the second section of the Opposition; accordingly, such allegations are denied.
m. Applicant is without knowledge or information sufficient to form a belief about the
truth or accuracy of the allegations contained in subparagraph m. of paragraph 2 of
the second section of the Opposition; accordingly, such allegations are denied.
n. Applicant is without knowledge or information sufficient to form a belief about the
truth or accuracy of the allegations contained in subparagraph n. of paragraph 2 of
Appendix A, p. 109

APPLICANTS ORIGINAL ANSWER PAGE 4
the second section of the Opposition; accordingly, such allegations are denied.
o. Applicant is without knowledge or information sufficient to form a belief about the
truth or accuracy of the allegations contained in subparagraph o. of paragraph 2 of
the second section of the Opposition; accordingly, such allegations are denied.
p. Applicant is without knowledge or information sufficient to form a belief about the
truth or accuracy of the allegations contained in subparagraph p. of paragraph 2 of
the second section of the Opposition; accordingly, such allegations are denied.
q. Applicant is without knowledge or information sufficient to form a belief about the
truth or accuracy of the allegations contained in subparagraph q. of paragraph 2 of
the second section of the Opposition; accordingly, such allegations are denied.
r. Applicant is without knowledge or information sufficient to form a belief about the
truth or accuracy of the allegations contained in subparagraph r. of paragraph 2 of
the second section of the Opposition; accordingly, such allegations are denied.
s. Applicant is without knowledge or information sufficient to form a belief about the
truth or accuracy of the allegations contained in subparagraph s. of paragraph 2 of
the second section of the Opposition; accordingly, such allegations are denied.
t. Applicant is without knowledge or information sufficient to form a belief about the
truth or accuracy of the allegations contained in subparagraph t. of paragraph 2 of
the second section of the Opposition; accordingly, such allegations are denied.
3. Applicant is without knowledge or information sufficient to form a belief about
the truth or accuracy of the allegations contained in paragraph 3 of the second section of the
Opposition; accordingly, such allegations are denied.
a. Applicant denies the allegations contained in subparagraph a. of paragraph 3 of the
Appendix A, p. 110

APPLICANTS ORIGINAL ANSWER PAGE 5
second section of the Opposition.
b. Applicant admits the allegations contained in subparagraph b. of paragraph 3 of the
second section of the Opposition.
2

c. Applicant is without knowledge or information sufficient to form a belief about the
truth or accuracy of the allegations contained in subparagraph c. of paragraph 3 of
the second section of the Opposition; accordingly, such allegations are denied.
Laches
4. Applicant is without knowledge or information sufficient to form a belief about
the truth or accuracy of the allegations contained in paragraph 4 of the second section of the
Opposition; accordingly such allegations are denied.
5. Applicant is without knowledge or information sufficient to form a belief about
the truth or accuracy of the allegations contained in paragraph 5 of the second section of the
Opposition; accordingly such allegations are denied.
6. Applicant is without knowledge or information sufficient to form a belief about
the truth or accuracy of the allegations contained in paragraph 6 of the second section of the
Opposition; accordingly such allegations are denied.
Affirmative Defense of Dilution
7. Applicant is without knowledge or information sufficient to form a belief about
the truth or accuracy of the allegations contained in paragraph 7 of the second section of the
Opposition; accordingly such allegations are denied.

2
N.B. In the interest of clarity, it should be noted that Applicant non-suited its claims without prejudice in the matter
of Timarron Owners Association, Inc. v. Barbara Louise Morton d/b/a Timarron College Prep; Cause No. 096-
260449-12, before the 96th J udicial District Court of Tarrant County, due, in part, to Opposer bring her opposition
and in favor of resolving the disputes between Opposer and Applicant before a federal venue. Such voluntary non-
suit at Plaintiffs discretion in no way constituted an acknowledgement or suggestion by Applicant that its claims
raised against Opposer in such state lawsuit were without merit or untenable, and Applicant explicitly denies such a
possibility.
Appendix A, p. 111

APPLICANTS ORIGINAL ANSWER PAGE 6
8. Applicant denies the allegations contained in paragraph 8 of the second section of
the Opposition.
9. Applicant admits the allegation that it is known by the name TIMARRON
OWNERS ASSOCIATION contained in paragraph 9 of the second section of the Opposition;
all other allegations contained in paragraph 9 of the second section of the Opposition are denied.
Applicants mark is not valid.
10. Applicant admits the allegation that the State of Texas has given a registration to
Applicant for TIMARRON contained in paragraph 10 of the second section of the Opposition;
Applicant denies the allegation that Applicant has challenged such registration in the 96th
Tarrant County; Applicant is without knowledge or information sufficient to form a belief about
the truth or accuracy of the remaining allegations contained in paragraph 10 of the second
section of the Opposition; accordingly, such allegations are denied.
Prayer
11. Applicant denies that Opposer is entitled to the relief requested in the prayer of
the Opposition.
APPLICANTS AFFIRMATIVE DEFENSES
12. Applicant affirmatively pleads the defense of judicial estoppel and alleges that
Opposer is estopped from claiming that registration of Applicants trademark will create a false
suggestion of a connection in that Opposer has previously affirmatively pled that Applicant and
Opposers concurrent use of the term Timarron does not create a false suggestion of a
connection between Applicant and Opposer. Specifically, in Defendant Mortons Traditional
and No Evidence Motion for Summary Judgment (the Prior Summary J udgment Motion), filed
under Cause No. 096-260449-12 before the 96th J udicial District of Tarrant County, Texas (the
Appendix A, p. 112

APPLICANTS ORIGINAL ANSWER PAGE 7
State Litigation), Opposer affirmatively pled that [t]here is no reason to believe that
consumers will confuse TIMARRON OWNERS ASSOCIATION with TIMARRON
COLLEGE PREP and that consumers would not see yet another business in the area using the
word TIMARRON as connected to Plaintiff [TIMARRON]. Prior Summary J udgment Motion,
p. 4, 13. A true and correct copy of said Prior Summary J udgment Motion filed in the State
Litigation is attached hereto as Exhibit A and is incorporated by reference as if fully set forth
herein. Further, Opposer is currently seeking a federal trademark registration in which
application for registration Opposer has disclaimed all elements except for the term Timarron,
as required by the trademark examiner. Specifically, as part of the proceedings of Federal
Trademark Application No. 85516680 for the phrase Timarron College Prep (Opposers
Trademark Application), the trademark examining attorney issued an Office Action to Opposer
(the Office Action to Opposer), requiring, inter alia, that Opposer disclaim the descriptive
wording college prep apart from the mark shown because it merely describes an ingredient,
quality, characteristic, function, feature, purpose or use of [Opposers] goods and/or services.
Office Action to Opposer, p. 3-4, Disclaimer. A true and correct copy of said Office Action to
Opposer in Opposers Trademark Application is attached hereto as Exhibit B and is
incorporated by reference as if fully set forth herein. In response to said Office Action to
Opposer, Opposer filed her Response to Office Action, wherein Opposer specifically disclaimed
the phrase college prep as part of her trademark application, stating that [n]o claim is made to
the exclusive right to use college prep apart from the mark shown. Response to Office Action,
p. 2, Disclaimer. A true and correct copy of said Response to Office Action in Opposers
Trademark Application is attached hereto as Exhibit C and is incorporated by reference as if
fully set forth herein. Accordingly, Opposer is and should be judicially estopped from claiming
Appendix A, p. 113

APPLICANTS ORIGINAL ANSWER PAGE 8
that registration of Applicants trademark will create a false suggestion of a connection.
13. Applicant affirmatively pleads the defense of priority and alleges that its date of
first use of the term Timarron in commerce predates Opposers date of first use.
14. Applicant affirmatively pleads the defense of judicial estoppel and alleges that
Opposer is estopped from claiming that registration of Applicants trademark will lead to a
likelihood of confusion in that Opposer has previously affirmatively pled that there is no
likelihood of confusion arising from Applicant. Specifically, in the Prior Summary J udgment
Motion, Opposer affirmatively pled that [t]here is no reason to believe that consumers will
confuse TIMARRON OWNERS ASSOCIATION with TIMARRON COLLEGE PREP and
that consumers would not see yet another business in the area using the word TIMARRON as
connected to Plaintiff [TIMARRON]. Prior Summary J udgment Motion, p. 4, 13. Further,
Opposer is currently seeking a federal trademark registration in which application for registration
Opposer has disclaimed all elements except for the term Timarron, as required by the
trademark examiner. Specifically, as part of the proceedings of Opposers Trademark
Application, the trademark examining attorney issued the Office Action to Opposer, requiring,
inter alia, that Opposer disclaim the descriptive wording college prep apart from the mark
shown because it merely describes an ingredient, quality, characteristic, function, feature,
purpose or use of [Opposers] goods and/or services. Office Action to Opposer, p. 3-4,
Disclaimer. In response to said Office Action to Opposer, Opposer filed her Response to Office
Action, wherein Opposer specifically disclaimed the phrase college prep as part of her
trademark application, stating that [n]o claim is made to the exclusive right to use college prep
apart from the mark shown. Response to Office Action, p. 2, Disclaimer. Accordingly,
Opposer is and should be judicially estopped from claiming that registration of Applicants
Appendix A, p. 114

APPLICANTS ORIGINAL ANSWER PAGE 9
trademark will lead to a likelihood of confusion.
15. Applicant affirmatively pleads the defense of judicial estoppel and alleges that
Opposer is estopped from claiming that the term Timarron is primarily geographical such that
it cannot be a registered trademark in that Opposer is currently seeking federal trademark
registration for the phrase Timarron College Prep but has not disclaimed the term Timarron
as merely geographical as part of such application. See Federal Trademark Application No.
85516680. Accordingly, because Opposer currently affirmatively seeks a federal trademark
registration including the term Timarron but has not disclaimed such term as being merely
geographic, Opposer is and should be judicially estopped from claiming as part of her opposition
to Applicants trademark that the term Timarron is merely geographic.
16. Applicant affirmatively pleads the defense of judicial estoppel and alleges that
Opposer is estopped from claiming that the term Timarron is diluted such that it cannot be a
registered trademark in that Opposer is currently seeking a federal trademark registration in
which application for registration Opposer has disclaimed all elements except for the term
Timarron, as required by the trademark examiner. Specifically, as part of the proceedings of
Opposers Trademark Application, the trademark examining attorney issued the Office Action to
Opposer, requiring, inter alia, that Opposer disclaim the descriptive wording college prep
apart from the mark shown because it merely describes an ingredient, quality, characteristic,
function, feature, purpose or use of [Opposers] goods and/or services. Office Action to
Opposer, p. 3-4, Disclaimer. In response to said Office Action to Opposer, Opposer filed her
Response to Office Action, wherein Opposer specifically disclaimed the phrase college prep as
part of her trademark application, stating that [n]o claim is made to the exclusive right to use
college prep apart from the mark shown. Response to Office Action, p. 2, Disclaimer.
Appendix A, p. 115

APPLICANTS ORIGINAL ANSWER PAGE 10
Accordingly, Opposer is and should be judicially estopped from claiming that the term
Timarron is diluted such that it cannot be a registered trademark.
17. Applicant affirmatively pleads the defense of judicial estoppel and alleges that
Opposer is estopped from claiming that the term Timarron is so generic such that it cannot be a
registered trademark in that Opposer is currently seeking a federal trademark registration in
which application for registration Opposer has disclaimed all elements except for the term
Timarron, as required by the trademark examiner. Specifically, as part of the proceedings of
Opposers Trademark Application, the trademark examining attorney issued the Office Action to
Opposer, requiring, inter alia, that Opposer disclaim the descriptive wording college prep
apart from the mark shown because it merely describes an ingredient, quality, characteristic,
function, feature, purpose or use of [Opposers] goods and/or services. Office Action to
Opposer, p. 3-4, Disclaimer. In response to said Office Action to Opposer, Opposer filed her
Response to Office Action, wherein Opposer specifically disclaimed the phrase college prep as
part of her trademark application, stating that [n]o claim is made to the exclusive right to use
college prep apart from the mark shown. Response to Office Action, p. 2, Disclaimer.
Accordingly, Opposer is and should be judicially estopped from claiming that the term
Timarron is so genereic that it cannot be a registered trademark.
18. Applicant affirmatively pleads the defense of waiver and alleges that Opposer is
barred from disputing the validity of Applicants State Trademark for the term Timarron in
that Opposer has previously affirmatively waived such claims. Specifically, in the Prior
Summary J udgment Motion, Opposer affirmatively stated, Defendant waives all causes of
action and relief not requested in this motion. Prior Summary J udgment Motion, p. 6, 22.
Despite having affirmatively sought to invalidate Applicants State Trademark in her Original
Appendix A, p. 116

APPLICANTS ORIGINAL ANSWER PAGE 11
Answer and Counterclaim in the State Litigation, Opposer did not seek such invalidation of
Applicants State Trademark as part of her Prior Summary J udgment Motion and, accordingly,
waived such relief and cause of action. See Prior Summary J udgment Motion, pp. 1-6. As such,
Opposer has waived her ability to contest the validity of Applicants State Trademark and is and
should be barred from seeking such relief herein.
PRAYER
WHEREFORE, PREMISES CONSIDERED, Applicant TIMARRON OWNERS
ASSOCIATION, INC. respectfully prays that this Board deny Opposer BARBARA LOUISE
MORTON D/B/A TIMARRON COLLEGE PREPs Opposition in its entirety and for such
further relief, at law or in equity, to which Applicant may show itself entitled.
DATED: September 30, 2013


Respectfully submitted,
WILSON LEGAL GROUP P.C.


By: /s/J ohn T. Wilson
J ohn T. Wilson
State Bar No. 24008284
Kandace D. Walter
State Bar No. 24047068
16610 Dallas Parkway, Suite 1000
Dallas, Texas 75248
Telephone: (972) 248-8080
Facsimile: (972) 248-8088

ATTORNEYS FOR APPLICANT
TIMARRON OWNERS ASSOCIATION,
INC.

Appendix A, p. 117

APPLICANTS ORIGINAL ANSWER PAGE 12
CERTIFICATE OF SERVICE

The undersigned hereby certifies that, on September 30, 2013, a true and correct copy of
the foregoing was served on Warren V. Norred of The Law Office of Warren V. Norred, located
at 200 E. Abram St., Ste. 300, Arlington, Texas 76010; facsimile no.: (817) 549-0161 in
accordance with the Federal Rules of Civil Procedure.

/s/J ohn T. Wilson
J ohn T. Wilson

Appendix A, p. 118








EXHIBIT A
Appendix A, p. 119
.-\
::c. -
Cause No. 096-260449-12
0

TIMARRON OWNERS ASSOC., INC. IN THE DISTRICT
Plaintiff, J:' (") rr1
v.
<"">' ,.. oO
96TH JUDICIAL

.. ;
BARBARA LOUISE MORTON D/B/A/
TIMARRON COLLEGE PREP
c::J .z:- - ...
.. \ ()l
TARRANTCOUNTY,TEXAS
Defendant.
DEFENDANT MORTON'S
TRADITIONAL AND NO EVIDENCE MOTION FOR SUMMARY JUDGMENT
Defendant Morton asks the court to sign a final summary judgment against Plaintiff on all claims
under the traditional and no-evidence standards, and in favor of Defendant's Counter-Claims.
A. Introduction
I. Plaintiff sued Defendant Morton for:
a. trademark infringement,
b. unjust enrichment,
c. tortious interference with prospective business relations, and
d. unfair competition.
2. Defendant answered the suit with counterclaims for:
a. declaratory judgment,
b. disclaimer or cancellation of Plaintiffs Texas-registered mark,
c. tortious interference with business relations,
d. motion to transfer the case to Travis County, and
e. attorney fees.
3. Discovery in this suit is governed by a Level2 discovery control plan.
B. Defendant moves for a No-Evidence Summary Judgment against Plaintifrs Claims
4. Trademark Infringement - Plaintiff can show no evidence that Defendant used Plaintiffs
registered mark in connection with the selling and offering for sale of goods that is likely to
deceive or cause confusion or mistake as to the source or origin of said good, which is
required to constitute infringement under TEX. Bus. & COMM. CODE 16.26, because
96-260449-12, Defendant's Traditional and No Evidence MSJ Page 1
Appendix A, p. 120
Plaintiffs mark represents only insurance & financial products found in International
Trademark Class 36 (see Plaintiffs Original Petition, Exhibit A), and Defendant uses the
mark only to advertise tutoring services that no reasonable person could associate with
Plaintiffs mark. Without evidence oflikely confusion, the infringement claim must fail.
5. Unjust Enrichment - Generally, to sustain an action for unjust enrichment, there must be
some basis for the law to infer a promise on the part of the defendant to the plaintiff to pay
for the benefit or property, as discussed in Berger Engineering Co. v. Village Casuals, Inc.,
576 S. W.2d 649, 652 (Tex. Civ. App.--Beaumont 1978, no writ) ("there must exist between
the parties an implication that the party performing the services would be paid by the party
accepting and benefiting by them"). The absence of such a relationship between a coventurer
and the other coventurer's father, for example, defeated a coventurer's claim of unjust
enrichment against the father, even though the father took depreciation and operating losses
stemming from the joint venture as deductions in his personal federal income tax return in
Shwiff v. Priest, 650 S.W.2d 894, 902 (Tex. App.--San Antonio 1983, writ refd n.r.e.).
Plaintiff can show no relationship between the Parties that will sustain a claim for unjust
enrichment, so its claim must fail.
6. Tortious Interference With Prospective Business Relations - Plaintiffs claim must fail
because Plaintiff can provide no evidence on any of its elements, as listed in Faucette v.
Chantos, 322 S.W.3d 901,914 (Tex. App.--Houston [14th Dist.] 2010, no pet. h.):
a. There must be a "reasonable probability" that the plaintiff would have entered into the
prospective relations. This must be a specific relationship.
b. The defendant's conduct must have been independently tortious or wrongful.
c. The defendant's interference must have resulted in actual harm or damage.
96-260449-12, Defendant's Traditional and No Evidence MSJ Page2
Appendix A, p. 121
d. The defendant's acts of interference must have been the proximate cause of the plaintiffs
damages.
e. When the interference is with prospective business relations that are the subject of
competition, the plaintiff must show defendant's actions violated antitrust laws or caused
third persons to refuse to deal with the plaintiff. Caller-Times Pub. Co. v. Triad
Communications, 855 S.W.2d 18,22 (Tex. App.--Corpus Christi 1993, no writ).
7. Unfair Competition- Among other elements, Plaintiff must prove that Defendant's use of the
trade mark would be likely to confuse the public. Thompson v. Thompson Air Conditioning &
Heating, Inc., 884 S.W.2d 555, 558 (Tex. App.--Texarkana 1994, no writ). As the Parties
provide very different services that have no relation, Defendant's use of the mark would not
be likely to confuse the public.
8. Defendant attaches affidavits to this motion as Exhibit A to establish facts in support of this
motion and incorporates the affidavits by reference.
C. Argument & Authorities Supporting Defendant's No-Evidence Motion
9. A court may grant a no-evidence motion for summary judgment if the movant can show that
adequate time for discovery has passed and the nonmovant has no evidence to support one or
more essential elements of its claim or defense. TEX. R. Civ. P. 166a(i).
I 0. An adequate time for discovery has passed.
II. Defendant is entitled to summary judgment because Plaintiff cannot, by any admissible
evidence, demonstrate there is any evidence to support the specific elements as discussed
supra, causing all five of Plaintiffs substantive claims to fail.
96-260449-12, Defendant's Traditional and No Evidence MSJ Page3
Appendix A, p. 122
D. Defendant also moves for a Traditional Summarv Judgment against Plaintiffs Claims
12. To prevail on summary judgment, a movant must conclusively establish all elements of its
cause of action as a matter oflaw, TEX. R. Civ. P. 166a(c); Defendant herein incorporates the
prior factual discussion in previous paragraphs, and adds the additional facts and argument in
support of a traditional summary judgment as follows.
13. Facts - There is no reason to believe that consumers will confuse TIMARRON OWNER'S
ASSOCIATION with TIMARRON COLLEGE PREP, as consumers are already aware of
these two businesses and others in operation in the Southlake and surrounding area, along
with many others, and would not see yet another business in the area using the word
TIMARRON as connected to Plaintiff. As discussed in Exhibit A, the following commercial
enterprises exist near Plaintiff:
a. "The Courtyard at Timarron" is a current business in Southlake, TX.
b. "The Villages at Timarron" is a current business in Southlake, TX.
c. "Timarron Family Medicine, PA" is a current business in Southlake, TX.
d. "Timarron at Creekside Park" is a current business in Southlake, TX.
e. "Timarron Financial Services, LLC" is a current business in Southlake, TX.
f. "Timarron Partners, Inc." is a current business in Grapevine, TX.
g. "Timmaron LLC" is a current business in Richardson, TX.
h. "Timarron Capital Inc" is a current business in Irving, TX.
i. "Timarron Custom Homes, Inc." is a current business in Keller, TX.
j. "Timarron Venture, Ltd." is a current business in Dallas, TX.
k. "Timarron Venture One, L.C." is a current business in Dallas, TX.
I. "Timarron Shopping Center, L.P." is a current business in Dallas, TX.
m. "Timarron Mortgage Group Inc." is a current business in Dallas, TX.
n. "Timarron Land Corporation" is a current business in Mesquite, TX.
o. "Timarron Skin & Laser" is a current business in Southlake, TX.
p. "Timarron Professional Eye" is a current business in Southlake, TX.
q. "Timarron Golf Club Maintenance" is a current business in Southlake, TX.
r. "Timarron Family Medicine" is a current business in Southlake, TX.
s. "Village at Timarron 4120" is a current business in Southlake, TX.
t. "Timarron Tiger Sharks" is a current business in Southlake, TX.
96-260449-12, Defendant's Traditional and No Evidence MSJ Page4
Appendix A, p. 123
14. No similarity of Goods - Plaintiffs claims requires at least a reasonable possibility that
consumer confusion might result from Defendant's use of the word "Timarron", but the
services provided by TIMARRON OWNER'S ASSOCIATION is not remotely connected to
the educational tutoring services provided by Defendant.
15. No Confusion - After recognizing that the services offered by the Plaintiff and Defendant are
so different, and there are so many other commercial enterprises using the word "Timarron",
no reasonable person could be confused as to think that one organization is responsible for all
of the enterprises.
16. Affirmative Defense of Laches- Applicant has been using TIMARRON as part of her mark
for years, along with many other entities in the area. Timarron home owners have employed
Defendant's mentoring services for years. The delay in filing suit was not reasonable or
excusable. Though the Lanham Act has no Statute of Limitations, federal courts often look to
state law and apply the doctrine of laches accordingly; the Texas Deceptive Trade Practices
Act has a statute of limitations of two years, which supports a finding oflaches in this case.
Plaintiff cannot lie in wait while Defendant builds her business and then try to force a
business name change.
17. Affirmative Defense of Dilution - The word "TIMARRON" is used by many businesses in
the Southlake, TX area. In the minds of consumers, the word "TIMARRON" is not attached
to one particular business. The word "TIMARRON" is diluted; no single entity can claim
exclusive rights to the word.
18. No Colorable Claim for Common Law Trademark Confusion - Plaintiffs claim to a common
law trademark is limited to its full name "TIMARRON OWNER'S ASSOCIATION", by
which it is known. Defendant does not use Plaintiffs common law mark.
96-260449-12, Defendant's Traditional and No Evidence MSJ PageS
Appendix A, p. 124
19. Summary of Motion for Traditional Summary Judgment - Based on the above facts,
Defendant asks the Court for a declaration that Defendant is not infringing Plaintiffs
registered mark, and award fees in accordance with TEX. CIV. PRAC. & REM. CODE 37, in
accordance with the following paragraph.
E. Attorney Fees
20. Defendant is entitled, under the authority of TEX. Clv. PRAC. & REM. CODE 37, to
reasonable and necessary attorney fees that were incurred in the prosecution of this suit and
contingent attorney fees in case of unsuccessful appeal, as supported by Exhibit B, including:
a. Defendant is entitled to attorney fees incurred in the amount of$7515.00.
b. If this case is unsuccessfully appealed to the court of appeals, Defendant is entitled to an
additional $15,000; if to the Texas Supreme Court, an additional amount of$15,000.
F. Praver
21. Defendant asks for summary judgment against Plaintiff with regard to all of its claims, and
summary judgment on her claim for declaratory judgment and associated attorney fees,
including pre- and post-judgment interest.
22. Defendant waives all causes of action and relief not requested in this motion.
Respect
B y : ~ ~ ~ ~ ~ ~ ~ ~ ~ ~ ~ ~
Warren V. Norred, Texas Bar . 2 4
200 E. Abram, Suite 300, Arlington, TX 76010
Tel. (817) 704-3984, Fax. (817) 549-0161
CERTIFICATE OF SERVICE- I certify that on July \f).. , 2013, a true and correct copy of
Defendant's MSJ was served by fax to John Wilson a 97 48.8080.
~
96-260449-12, Defendant's Traditional and No Evidence MSJ Page6
Appendix A, p. 125
Cause No. 096-260449-12
TIMARRON OWNERS ASSOC., INC.
Plaintiff,








IN THE DISTRICT COURT
v. 96TH JUDICIAL DISTRICT
BARBARA LOUISE MORTON D/B/A/
TIMARRON COLLEGE PREP
Defendant.
TARRANT COUNTY, TEXAS
EXHIBIT A
AFFIDAVIT OF DEFENDANT BARBARA MORTON
BEFORE ME, the undersigned authority, on this day personally appeared Barbara Morton, who
swore on oath that the following facts are true:
"My name is Barbara Louis Morton. I am over 18 years of age, of sound mind, and fully
competent to make this affidavit. I have personal knowledge of the facts stated herein and they
are all true and correct."
I. "I did not intentionally use 'TIMARRON' in the name of my tutoring service in order to
take advantage of Plaintiff's name, or any of the many businesses using the same word.
2. "The use of "TIMARRON" by itself cannot be used as a trademark because it is used by so
many other people that it provides no identification of the provider of any good or service.
3. "I am familiar with the commercial enterprises in and around the Dallas-Fort Worth area. I
have personally seen more than a dozen entities using the name "TIMARRON" in their
title, and a search on the Internet revealed the following commercial entities in north Texas.
a. The Courtyard at Timarron is a current business in Southlake, TX.
b. The Villages at Timarron is a current business in Southlake, TX.
c. Timarron Family Medicine, PA is a current business in Southlake, TX.
d. Timarron at Creekside Park is a current business in Southlake, TX.
e. Timarron Financial Services, LLC is a current business in Southlake, TX.
f. Timarron Partners, Inc. is a current business in Grapevine, TX.
g. Timmaron LLC is a current business in Richardson, TX.
96260449-12, Defendant's Traditional and No Evidence MSJ Page 7
Appendix A, p. 126
h. Timarron Capital Inc is a current business in Irving, TX.
1. Timarron Custom Homes, Inc. is a current business in Keller, TX.
j. Timarron Venture, Ltd. is a current business in Dallas, TX.
k. Timarron Venture One, L.C. is a current business in Dallas, TX.
I. Timarron Shopping Center, L.P. is a current business in Dallas, TX.
m. Timarron Mortgage Group Inc. is a current business in Dallas, TX.
n. Timarron Land Corporation is a current business in Mesquite, TX.
o. Timarron Skin & Laser is a current business in Southlake, TX.
p. Timarron Professional Eye is a current business in Southlake, TX.
q. Timarron Golf Club Maintenance is a current business in Southlake, TX.
r. Timarron Family Medicine is a current business in Southlake, TX.
s. Village at Timarron 4120 is a current business in Southlake, TX.
t. Timarron Tiger Sharks is a current business in Southlake, TX."
4. "The number of businesses using the word "TIMARRON" in the geographic area indicates
that even if the word "TIMARRON" was at one time a valid trademark, it is too diluted to
be protectable as a mark today."
5. "Besides the commercial enterprises listed above, I have seen that the USPTO provided a
Notice of Allowance for "TIMARRON CAPITAL, INC." as a standard character mark in
2006 for commercial loan services. Though that mark was eventually abandoned for lack of
use, the USPTO did not see any conflict between "TIMARRON CAPITAL, INC" and
"TIMARRON OWNERS ASSOC., INC."
6. No reasonable person would see all of the businesses with the name "TIMARRON" in
them and think that they were all owned by the same organization. It's just a common name
used commercially in this geographic area. IfTIMARRON OWNERS ASSOC., INC. was
the first organization to use "TIMARRON" and everyone else has used it in response, then
it would be unfair to wait more than 20 years of use by two dozen other entities before
reacting. None of the businesses using "TIMARRON" have hidden that fact.
7. "There is no likelihood of confusion between my tutoring service and TIMARRON
OWNERS ASSOC., INC."
96-260449-12, Defendant's Traditional and No Evidence MSJ PageS
Appendix A, p. 127
Jul.11. 2013 12:26PM No.8719 P. 3
8. "There is no similarity of goods between TIMARRON OWNERS ASSOC., INC., which is
a home owner association. and my organization, which provides tutoring services."
9. '1 have performed tutoring services since 1999 with the word "TTMARRON" in my entity
name; I have been doing business specifically as "TIMARRON COLLEGE PREP" since at
least as far back as May 2008.
10. "When I was naming my company, I learned that TIMARRON' meant 'child of promise' in
the Hopi language. I do not recall where or how I learned that, and I do not contend that I
am some sort of expert on the Hopi language. But when I learned it, I chose to use the word
in my company's name on that basis."
11. "I had to hire Warren Norred to defend me in this suit I am paying him $300 per hour, and
have accumulated legal fees as detailed in Exhibit B."
Barbara L. Morton
SUBSCRIBED AND SWORN TO BEFORE ME by J . . ~ fl
WNDY A ICNliTSON
My Commission &pim
Mm8,2016
96-260449-12, Defendant's Trnditional and No Evidence MSJ
Date:'2ot,3_
Page9
Appendix A, p. 128
Cause No. 096-260449-12
TIMARRON OWNERS ASSOC., INC.
Plaintiff,








IN THE DISTRICT COURT
v. 96TH JUDICIAL DISTRICT
BARBARA LOUISE MORTON D/B/A/
TIMARRON COLLEGE PREP
Defendant.
TARRANT COUNTY, TEXAS
EXHIBITB
AFFIDAVIT OF WARREN NORRED IN SUPPORT OF ATTORNEY FEES
BEFORE ME, the undersigned authority, on this day personally appeared Warren V. Norred,
who swore on oath that the following facts are true:
"My name is Warren V. Norred. I am over 18 years of age, of sound mind, and fully
competent to make this affidavit. I have personal knowledge of the facts stated herein and they
are all true and correct."
"Movant Barbara Louis Morton employed Norred Law, PLLC in connection with the
matter on which this suit is based. Movant is entitled to recover the reasonable attorney's fees
requested herein pursuant to the Declaratory Judgment Act, TEX. CIV. PRAC. & REM. CODE 37.
It is my opinion that these fees are reasonable attorney's fees based upon the following factors:
I. The novelty and difficulty of the issue involved, the skill required to provide the
legal services properly, and my experience, reputation, and expertise in
performing the services;
2. The time and labor involved to perform the legal services properly; and,
3. The fee customarily charged in the community for similar services."
"I charge $300 per hour for attorney time on this case. The estimated fees in this case are,
to date, $6615.00, which includes the fees for the initial consult, writing of the answer, amended
96-260449-12, Defendant's Traditional and No Evidence MSJ Page 10
Appendix A, p. 129
answer, handling discovery issues, preparation and service of the Motion for Summary Judgment
to which this affidavit is attached. I anticipate another three hours to participate in the hearing on
this motion and post-hearing issues, totaling $7515.00.
"In support ofthis accounting, I have attached a pre-bill to this affidavit as Attachment I,
reflecting a true and correct accounting of the tasks that my office has performed for this case."
"It is my opinion that attorney's fees in the amount of $5,000.00 would be a reasonable
fee for the services required to perform post-judgment discovery and to satisfy the judgment by
writ of execution and other procedures, $10,000.00 if appealed to the Court of Appeals, and
$15,000.00 to the Supreme Court."
Wlfrren V. Norred
SUBSCRIBED AND SWORN TO BEFORE ME by Warren V. Norred on July / :)_, 2013.
.... L. EllEN FLINT
b?.:x_:;;-;, Notary Public. State oflexas
; : .. 1'i".' My commission ExpiTeS
May 22 2017
I

,;?d#/t-7-
Notary Public, State of Texas
96-260449-12, Defendant's Traditional and No Evidence MSJ Page 11
Appendix A, p. 130
PRE-BILL
Norred Law, PLLC
Bobbie Morton
476 Cherokee Ct. S
Keller, TX 76248
Client:
Matter:
Matter Type:
Comments:
File Open Date:
Billing Mode:
Billing Frequency :
Remarks:
ACCOU!'(T
AGI:\'G
Fees Billed to Date:
Ticket
ATTACHMENT 1
Bobbie Morton
Date:
Time:
Page:
7/12/2013
9:32AM
I of2
12-439
12-439 Timarron v. Bobbie Morton - Trademark
LIT Litigation
7/26/2012
Hourly
Monthly
Current
$ 0.00
$0.00
Bill Date: 7/12/2013
Start Date: 1/1/1900
Last Bill:
30-59 Davs
$ 0.00
Costs Billed to Date:
Fees
Originating Timekeeper: WVN
Responsible Timekeeper:
Billing Format Code:
Fees/Costs Cut Date:
Payments Cut Date:
Type of Bill:
WVN
GEN
7/12/2013
7/12/2013
Regular
60-89 Davs
$0.00
90 Davs and Over
$0.00
$0.00
Number Date Timekee!)er Description Hours Amount
17 1/25/2012 WVN Initial disc with BM re HOA dispute. 0.33 $99.00 BL
10 4/4/2012 WVN Email exchange with BM; decided not to send letter. 0.33 $99.00 BL
19
4/14/2012 WVN Email with BM on decision not to get an agreement with 0.10 $30.00 BL
HOA.
18 5/29/2012 WVN Email disc with BM about new lease at Courtyard at 0.17 $51.00 BL
Timarron.
II 8/22/2012 WVN Rec'd petition. 0.50 $150.00 BL
8/23/2012 WVN Rec'd rest of Pet. 0.17 $51.00 BL
2
8/24/2012 WVN Rec'd evidence from BM, number of emails with examples 0.50 $150.00 BL
of other Timarron companies.
3
8/25/2012 WVN Rec'd additional evidence ofTimarron used. 0.17 $51.00 BL
4 8/31/2012 WVN Begin drafting answer. 0.50 $150.00 BL
5 9/6/2012 WVN Complete Answer. Added counter-claims of tortious 3.50 $1,050.00 BL
interference.
6
917/2012 WVN File and serve answer 1.00 $300.00 BL
7
9/8/2012 WVN Write Rule II for email and email to JW. Examined 0.50 $150.00 BL
national trademark.
8
10/12/2012 WVN Rec'd Timarron's answer. 0.50 $150.00 BL
20 11/27/2012 WVN Wrote and filed response to Notice of Opposition. 2.00 $600.00 BL
21 12/15/2012 WVN Sent discovery to Wilson via email. 0.25 $75.00 BL
9 1/11/2013 WVN Wrote & served Discovery to HOA. 2.00 $600.00 BL
12 5/15/2013 WVN Rec'd discovery requests from HOA. 0.25 $75.00 BL
Continued On Next Page
Appendix A, p. 131
PRE-BILL
Norred Law, PLLC
Client: 12-439
Matter: 12-439
13 5116/2013 WVN
14 5/16/2013 WVN
15 5/17/2013 WVN
16 5117/2013 WVN
23 5/22/2013 EF
26
5/30/2013 EF
24 5/31/2013 EF
25
5/31/2013 WVN
28 6/3/2013 EF
27 6/4/2013 EF
32 6117/2013 WVN
30
7/3/2013 WVN
29 7/5/2013 WVN
Bobbie Morton
Timarron v. Bobbie Morton- Trademark
Status to client. Discussion of opposition to HOA's marks. 0.25
Email disc re: deposition of BM, set for July 15. 0.25
Disc re: trademark case, opposition case. 0.75
BM sent out req. discovery on 12/17, followed with phone 0.83
discussion.
Emailed Admissions to Bobbie. Awaiting responses. 0.00
Prepared Admissions Responses. 1.25
Drafted Interrogatory answers. 1.75
Instruct and draft discovery. 0.75
Drafted Production responses/emailed Bobbie!LM on 0.75
Bobbie's cell.
Served Discovery Responses (lnt, Adm, & Prod). 0.25
Rec'd Motion to Compel. No hrg set yet. 0.25
Draft MSJ. 3.00
Finalize, file, serve MSJ. 2.00
Totalllours: 24.85
Billable Hours: 24.85
Timekeeper Summary
Timekeeper EF worked 4.00 hours at $90.00 per hour, totaling $360.00.
Timekeeper WVN worked 20.85 hours at $300.00 per hour, totaling $6,255.00.
Prior Balance:
Payments Received:
Current Fees:
Sales Tax on Fees:
Advanced Costs:
Sales Tax on Costs:
Administrative Cost:
Late Charges:
Additional Retainer Due:
TOTAL AMOUNT DUE:
$0.00
$0.00
$6,615.00
$0.00
$0.00
$0.00
$0.00
$0.00
$0.00
$0.00
$6,615.00
Date:
Time:
Page:
$75.00
$75.00
$225.00
$249.00
$0.00
$112.50
$157.50
$225.00
$67.50
$22.50
$75.00
$900.00
$600.00
$6,615.00
Fees and Costs ( Fees Only [ Costs Only [ Don't Bill [
7/12/2013
9:32AM
2of2
BL
BL
BL
BL
BL
BL
BL
BL
BL
BL
BL
BL
BL
Appendix A, p. 132








EXHIBIT B
Appendix A, p. 133
To: Morton, Barbara (docket@iplaw.pro)
Subject: U.S. TRADEMARK APPLICATION NO. 85516680 - TIMARRON
COLLEGE PREP - BMRT-28480TM
Sent: 4/21/2012 11:14:47 AM
Sent As: ECOM116@USPTO.GOV
Attachments: Attachment - 1
Attachment - 2
Attachment - 3
Attachment - 4
Attachment - 5
Attachment - 6
Attachment - 7
Attachment - 8
Attachment - 9
Attachment - 10
Attachment - 11
Attachment - 12
Attachment - 13
Attachment - 14
Attachment - 15
Attachment - 16
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANTS TRADEMARK APPLICATION

APPLICATION SERIAL NO. 85516680

MARK: TIMARRON COLLEGE PREP

*85516680*
CORRESPONDENT ADDRESS:
MARK W HANDLEY
HANDLEY LAW FIRM, PLLC
PO BOX 97
GRAPEVINE, TX 76099-0097

CLICK HERE TO RESPOND TO THIS LETTER:


http://www.uspto.gov/trademarks/teas/response_forms.jsp

APPLICANT: Morton, Barbara

CORRESPONDENTS REFERENCE/DOCKET
NO:
BMRT-28480TM
CORRESPONDENT E-MAIL ADDRESS:
docket@iplaw.pro

Appendix A, p. 134

OFFICE ACTION

STRICT DEADLINE TO RESPOND TO THIS LETTER


TO AVOID ABANDONMENT OF APPLICANTS TRADEMARK APPLICATION, THE USPTO MUST
RECEIVE APPLICANTS COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE
ISSUE/MAILING DATE BELOW.

ISSUE/MAILING DATE: 4/21/2012

TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT


FEE: Applicants who filed their application online using the reduced-fee TEAS Plus application must
continue to submit certain documents online using TEAS, including responses to Office actions. See 37
C.F.R. 2.23(a)(1). For a complete list of these documents, see TMEP 819.02(b). In addition, such
applicants must accept correspondence from the Office via e-mail throughout the examination process and
must maintain a valid e-mail address. 37 C.F.R. 2.23(a)(2); TMEP 819, 819.02(a). TEAS Plus
applicants who do not meet these requirements must submit an additional fee of $50 per international class
of goods and/or services. 37 C.F.R. 2.6(a)(1)(iv); TMEP 819.04. In appropriate situations and where
all issues can be resolved by amendment, responding by telephone to authorize an examiners amendment
will not incur this additional fee.

The referenced application has been reviewed by the assigned trademark examining attorney. Applicant
must respond timely and completely to the issue(s) below. 15 U.S.C. 1062(b); 37 C.F.R. 2.62(a),
2.65(a); TMEP 711, 718.03.

Search Results

The trademark examining attorney has searched the Offices database of registered and pending marks
and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP
704.02; see 15 U.S.C. 1052(d).

Identification of Goods

The identification of goods is indefinite and must be clarified because it includes the open-ended wording
including. See TMEP 1402.01, 1402.03(a). The identification must be specific and all-inclusive.
Therefore, this wording should be deleted and replaced with namely. This applies to each instance
where including appears in the identification.

Applicant may amend the identification to list only those items that are within the scope of the goods set
forth in the application or within the scope of a previously accepted amendment to the identification. See
37 C.F.R. 2.71(a); TMEP 1402.06 et seq., 1402.07.

Disclaimer

Applicant must disclaim the descriptive wording college prep apart from the mark as shown because it
merely describes an ingredient, quality, characteristic, function, feature, purpose or use of applicants
Appendix A, p. 135
goods and/or services. See 15 U.S.C. 1052(e)(1), 1056(a); In re Steelbuilding.com, 415 F.3d 1293,
1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009,
1010 (Fed. Cir. 1987); TMEP 1213, 1213.03(a).

Specifically, the attached evidence shows that college prep describes a school that helps to prepare
students for college. The applicants identification of services and specimen show that the applicant
operates such a school. Thus, college prep is descriptive of the services. As additional evidence,
copies of registrations for similar services that have disclaimed this wording are attached.

A disclaimer is a statement that applicant does not claim exclusive rights to an unregistrable component
of a mark; it does not affect the appearance of the mark. TMEP 1213. An unregistrable component of a
mark includes wording and designs that are merely descriptive or generic of the services, and is wording
or an illustration that others would need to use to describe or show their services in the marketplace. 15
U.S.C. 1052(e); see TMEP 1209.03(f), 1213.03 et seq.

Applicant may submit the following standardized format for a disclaimer:

No claim is made to the exclusive right to use college prep apart from the mark as shown.

TMEP 1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493 (Commr Pats. 1983).

/Doritt Carroll/
Trademark Examining Attorney
Law Office 116
Phone: (571) 272-9138
doritt.carroll@uspto.gov
www.uspto.gov/teas/index.html

TO RESPOND TO THIS LETTER: Go to http://www.uspto.gov/trademarks/teas/response_forms.jsp. Please


wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of
the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. Forquestions
about the Office action itself, please contact the assigned trademark examining attorney.E-mail
communications will not be accepted as responses to Office actions; therefore, do not respond to this
Office action by e-mail.

All informal e-mail communications relevant to this application will be placed in the official
application record.

WHO MUST SIGN THE RESPONSE: It must be personally signed byan individual applicant
orsomeone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint
applicants).If an applicant is represented by an attorney, the attorney must sign the response.

PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does
not miss crucial deadlines or official notices, check the status of the application every three to four months
using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.uspto.gov/. Please keep a
Appendix A, p. 136
copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-
9199. For more information on checking status, see http://www.uspto.gov/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at


http://www.uspto.gov/teas/eTEASpageE.htm.

Appendix A, p. 137
Appendix A, p. 138
Appendix A, p. 139
Appendix A, p. 140
Appendix A, p. 141
Appendix A, p. 142
Appendix A, p. 143
Appendix A, p. 144
Appendix A, p. 145
Appendix A, p. 146
Appendix A, p. 147
Appendix A, p. 148
Appendix A, p. 149
Appendix A, p. 150
Appendix A, p. 151
Appendix A, p. 152
Appendix A, p. 153
To: Morton, Barbara (docket@iplaw.pro)
Subject: U.S. TRADEMARK APPLICATION NO. 85516680 - TIMARRON
COLLEGE PREP - BMRT-28480TM
Sent: 4/21/2012 11:14:49 AM
Sent As: ECOM116@USPTO.GOV
Attachments:
IMPORTANT NOTICE REGARDING YOUR
U.S. TRADEMARK APPLICATION

USPTO OFFICE ACTION HAS ISSUED ON 4/21/2012 FOR


SERIAL NO. 85516680

Please follow the instructions below to continue the prosecution of your application:

TO READ OFFICE ACTION: Click on this link or go to


http://portal.uspto.gov/external/portal/tow and enter the application serial number to access the
Office action.

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24
hours of this e-mail notification.

RESPONSEIS REQUIRED: You should carefully review the Office action to determine (1) how to
respond; and (2) the applicable response time period. Your response deadline will be calculated from
4/21/2012 (or sooner if specified in the office action).

Do NOT hit Reply to this e-mail notification, or otherwise attempt to e-mail your response, as the
USPTO does NOT accept e-mailed responses. Instead, the USPTO recommends that you respond
online using the Trademark Electronic Application System Response Form.

HELP: For technical assistance in accessing the Office action, please e-mail
TDR@uspto.gov. Please contact the assigned examining attorney with questions about the Office
action.

WARNING

Failure to file the required response by the applicable deadline will result in the
ABANDONMENT of your application.

Appendix A, p. 154








EXHIBIT C
Appendix A, p. 155
PTO Form 1957 (Rev 9/2005)
OMB No. 0651-0050 (Exp. 05/31/2014)
Response to Office Action
The table below presents the data as entered.
Input Field Entered
SERIAL NUMBER 85516680
LAW OFFICE ASSIGNED LAW OFFICE 116
MARK SECTION (no change)
GOODS AND/OR SERVICES SECTION (current)
INTERNATIONAL CLASS
041
DESCRIPTION
Conducting after school tutoring programs; Education services, namely, providing tutoring in the field
of mathematics, sciences, social studies, language arts and foreign languages; Education services,
namely providing tutoring in the fields of curriculum for all educational levels, including primary and
secondary grades, and college level, including undergraduate, graduate and post-graduate levels;
Education services, namely providing tutoring in the fields of taking academic entrance examinations
and standardized tests; Providing courses of instruction at the primary and secondary levels, and college
levels, including undergraduate, graduate and post-graduate level; Teaching in the field of mathematics,
sciences, social studies, language arts and foreign languages
FILING BASIS
Section 1(a)
FIRST USE ANYWHERE DATE
At least as early as 05/31/2008
FIRST USE IN COMMERCE DATE
At least as early as 05/31/2008
GOODS AND/OR SERVICES SECTION (proposed)
INTERNATIONAL CLASS
041
TRACKED TEXT DESCRIPTION
Conducting after school tutoring programs; Education services, namely, providing tutoring in the field
of mathematics, sciences, social studies, language arts and foreign languages; Education services,
namely providing tutoring in the fields of curriculum for all educational levels, including primary and
secondary grades, and college level, including undergraduate, graduate and post-graduate levels;
Education services, namely providing tutoring in the fields of curriculum for all educational levels,
namely primary and secondary grades, and college level, namely undergraduate, graduate and post-
graduate levels; Education services, namely providing tutoring in the fields of taking academic entrance
examinations and standardized tests; Providing courses of instruction at the primary and secondary
levels, and college levels, including undergraduate, graduate and post-graduate level; Providing courses
of instruction at the primary and secondary levels, and college levels, namely undergraduate, graduate
and post-graduate level; Teaching in the field of mathematics, sciences, social studies, language arts and
Appendix A, p. 156
foreign languages
FINALDESCRIPTION
Conducting after school tutoring programs; Education services, namely, providing tutoring in the field
of mathematics, sciences, social studies, language arts and foreign languages; Education services,
namely providing tutoring in the fields of curriculum for all educational levels, namely primary and
secondary grades, and college level, namely undergraduate, graduate and post-graduate levels;
Education services, namely providing tutoring in the fields of taking academic entrance examinations
and standardized tests; Providing courses of instruction at the primary and secondary levels, and college
levels, namely undergraduate, graduate and post-graduate level; Teaching in the field of mathematics,
sciences, social studies, language arts and foreign languages
FILING BASIS
Section 1(a)
FIRST USE ANYWHERE DATE
At least as early as 05/31/2008
FIRST USE IN COMMERCE DATE
At least as early as 05/31/2008
ADDITIONAL STATEMENTS SECTION
DISCLAIMER
No claim is made to the exclusive right to use college prep
apart from the mark as shown.
SIGNATURE SECTION
RESPONSE SIGNATURE
/Mark Handley/
SIGNATORY'S NAME
Mark W Handley, Esq.
SIGNATORY'S POSITION
Attorney of Record, Member State Bar of Texas
SIGNATORY'S PHONE NUMBER
972-518-1713
DATE SIGNED
08/27/2012
AUTHORIZED SIGNATORY
YES
FILING INFORMATION SECTION
SUBMIT DATE
Mon Aug 27 09:47:15 EDT 2012
TEAS STAMP
USPTO/ROA-173.71.42.71-20
120827094715387351-855166
80-490e828e4b7a12b5d8af7b
cd0aad05c1619-N/A-N/A-201
20827094017800973
PTO Form 1957 (Rev 9/2005)
OMB No. 0651-0050 (Exp. 05/31/2014)
Response to Office Action
Appendix A, p. 157
To the Commissioner for Trademarks:
Application serial no. 85516680 has been amended as follows:
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Conducting after school tutoring programs; Education services, namely, providing
tutoring in the field of mathematics, sciences, social studies, language arts and foreign languages;
Education services, namely providing tutoring in the fields of curriculum for all educational levels,
including primary and secondary grades, and college level, including undergraduate, graduate and post-
graduate levels; Education services, namely providing tutoring in the fields of taking academic entrance
examinations and standardized tests; Providing courses of instruction at the primary and secondary levels,
and college levels, including undergraduate, graduate and post-graduate level; Teaching in the field of
mathematics, sciences, social studies, language arts and foreign languages
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the
applicant's related company or licensee is using the mark in commerce, on or in connection with the
identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least
as early as 05/31/2008 and first used in commerce at least as early as 05/31/2008, and is now in use in
such commerce.
Proposed:
Tracked Text Description: Conducting after school tutoring programs; Education services, namely,
providing tutoring in the field of mathematics, sciences, social studies, language arts and foreign
languages; Education services, namely providing tutoring in the fields of curriculum for all educational
levels, including primary and secondary grades, and college level, including undergraduate, graduate and
post-graduate levels; Education services, namely providing tutoring in the fields of curriculum for all
educational levels, namely primary and secondary grades, and college level, namely undergraduate,
graduate and post-graduate levels; Education services, namely providing tutoring in the fields of taking
academic entrance examinations and standardized tests; Providing courses of instruction at the primary
and secondary levels, and college levels, including undergraduate, graduate and post-graduate level;
Providing courses of instruction at the primary and secondary levels, and college levels, namely
undergraduate, graduate and post-graduate level; Teaching in the field of mathematics, sciences, social
studies, language arts and foreign languages
Class 041 for Conducting after school tutoring programs; Education services, namely, providing tutoring
in the field of mathematics, sciences, social studies, language arts and foreign languages; Education
services, namely providing tutoring in the fields of curriculum for all educational levels, namely primary
and secondary grades, and college level, namely undergraduate, graduate and post-graduate levels;
Education services, namely providing tutoring in the fields of taking academic entrance examinations and
standardized tests; Providing courses of instruction at the primary and secondary levels, and college levels,
namely undergraduate, graduate and post-graduate level; Teaching in the field of mathematics, sciences,
social studies, language arts and foreign languages
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the
applicant's related company or licensee is using the mark in commerce, on or in connection with the
identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least
as early as 05/31/2008 and first used in commerce at least as early as 05/31/2008, and is now in use in
such commerce.
ADDITIONAL STATEMENTS
Appendix A, p. 158
Disclaimer
No claim is made to the exclusive right to use college prep apart from the mark as shown.
SIGNATURE(S)
Response Signature
Signature: /Mark Handley/Date: 08/27/2012
Signatory's Name: Mark W Handley, Esq.
Signatory's Position: Attorney of Record, Member State Bar of Texas
Signatory's Phone Number: 972-518-1713
The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the
highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal
territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to
the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian
attorney/agent not currently associated with his/her company/firm previously represented the applicant in
this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power
of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to
withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the
applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing
him/her as an associate attorney in this matter.

Serial Number: 85516680


Internet Transmission Date: Mon Aug 27 09:47:15 EDT 2012
TEAS Stamp: USPTO/ROA-173.71.42.71-20120827094715387
351-85516680-490e828e4b7a12b5d8af7bcd0aa
d05c1619-N/A-N/A-20120827094017800973
Appendix A, p. 159
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
ESTTA Tracking number: ESTTA555164
Filing date: 08/21/2013
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Notice of Opposition
Notice is hereby given that the following party opposes registration of the indicated application.
Opposer Information
Name Barbara Morton
Timarron College Prep
Granted to Date
of previous
extension
08/21/2013
Address 630 E. Southlake Blvd., Suite 111
Southlake, TX 76092
UNITED STATES
Party who filed
Extension of time
to oppose
BarbaraMorton
Relationship to
party who filed
Extension of time
to oppose
The first name has a typographical error, missing the space between 'Barbara'
and 'Morton'. The company name is a name under which Ms. Morton does
business.
Attorney
information
Warren V. Norred
Norred Law, PLLC
200 E. Abram, Suite 300
Arlington, TX 76010
UNITED STATES
wnorred@norredlaw.com Phone:817-704-3984
Applicant Information
Application No 85780484 Publication date 04/23/2013
Opposition Filing
Date
08/21/2013 Opposition
Period Ends
08/21/2013
Applicant Timarron Owners Association, Inc.
700 Wentwood Drive
Southlake, TX 76092
UNITED STATES
Goods/Services Affected by Opposition
Class 035. First Use: 1992/05/15 First Use In Commerce: 1992/05/15
All goods and services in the class are opposed, namely: Association services, namely, promoting
the interests of current homeowners and marketing to attract new homeowners; Business
management of homeowners associations for others; Homeowner association services, namely,
promoting the interests of homeowners in a specific community and marketing the community
nationwide to prospective new residents and property owners
Grounds for Opposition
Appendix A, p. 160
False suggestion of a connection Trademark Act section 2(a)
Priority and likelihood of confusion Trademark Act section 2(d)
The mark is primarily geographically descriptive Trademark Act section 2(e)(2)
Dilution Trademark Act section 43(c)
Genericness Trademark Act section 23
Mark Cited by Opposer as Basis for Opposition
U.S. Application/
Registration No.
NONE Application Date NONE
Registration Date NONE
Word Mark TIMARRON COLLEGE PREP
Goods/Services Conducting after school tutoring programs; Education services,
namely, providing tutoring in the field of mathematics, sciences, social
studies, language arts and foreign languages; Education services,
namely, providing tutoring in the fields of curriculum for all educational
levels, namely, primary and secondary grades, and college level,
namely, undergraduate, graduate and post-graduate levels; Education
services, namely, providing tutoring in the fields of taking academic
entrance examinations and standardized tests; Providing courses of
instruction at the primary and secondary levels, and college levels,
namely, undergraduate, graduate and post-graduate level; Teaching
in the field of mathematics, sciences, social studies, language arts
and foreign languages
Related
Proceedings
Opposition 91186534 Parties are also involved in a Texas state case in Tarrant
County, 096-260449-12, in which the Applicant filed suit against Opposer for
trademark infringement, though Applicant recently dismissed its claims.
Attachments Notice of Opposition to Timarron HOA.pdf(414706 bytes )
Certificate of Service
The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
record by Facsimile or email (by agreement only) on this date.
Signature /Warren V. Norred/
Name Warren V. Norred
Date 08/21/2013
Appendix A, p. 161
Opposer's Notice of Opposition Page 1

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

TIMARRON COLLEGE PREP
Opposer Opposition No: ___________

v. Mark: TIMARRON

TIMARRON OWNERS ASSOCIATION In re Trademark No: 85516680
Applicant.

NOTICE OF OPPOSITION

OPPOSER:
Barbara Mortion, dba Timarron College Prep
630 E. Southlake Boulevardl, Suite 111
Southlake, TX 76092


APPLICANT:
Timarron Owners Asso., Inc.
Texas Partnership
700 Wentwood Drive
Southlake, Texas 76092
1. Applicant, TIMARRON OWNER ASSOCIATION, is a Texas corporation.
2. Opposer, BARBARA MORTION, dba TIMARRON COLLEGE PREP believes that
it will be damaged by registration of the subject mark and thereby opposes the same.
3. This Notice of Opposition has been timely filed, having first received an order extending
the deadline to file from its original deadline to August 21, 2013.

As grounds of opposition, it is alleged that:
1. Applicant seeks to register the word mark "TIMARRON" as a service mark in Int'l Class
35, and described on its application as "Association services, namely, promoting the
interests of current homeowners and marketing to attract new homeowners; Business
management of homeowners associations for others; Homeowner association services,
namely, promoting the interests of homeowners in a specific community and marketing
the community nationwide to prospective new residents and property owners."
2. Opposer would agree that Applicant has a common law mark for "Timarron Owners
Appendix A, p. 162
Association", the name for which is well known. However, Opposer asserts that
"Timarron" has been used in the business name of more than twenty businesses around
the area, including but not limited to the the following:
a. "The Courtyard at Timarron" is a current business in Southlake, TX.
b. "The Villages at Timarron" is a current business in Southlake, TX.
c. " Timarron Family Medicine, PA" is a current business in Southlake, TX.
d. "Timarron at Creekside Park" is a current business in Southlake, TX.
e. "Timarron Financial Services, LLC" is a current business in Southlake, TX.
f. "Timarron Partners, Inc." is a current business in Grapevine, TX.
g. "Timmaron LLC" is a current business in Richardson, TX.
h. "Timarron Capital Inc" is a current business in Irving, TX.
i. "Timarron Custom Homes, Inc." is a current business in Keller, TX.
j. "Timarron Venture, Ltd." is a current business in Dallas, TX.
k. "Timarron Venture One, L.C." is a current business in Dallas, TX.
l. "Timarron Shopping Center, L.P." is a current business in Dallas, TX.
m. "Timarron Mortgage Group Inc." is a current business in Dallas, TX.
n. "Timarron Land Corporation" is a current business in Mesquite, TX.
o. "Timarron Skin & Laser" is a current business in Southlake, TX.
p. "Timarron Professional Eye" is a current business in Southlake, TX.
q. "Timarron Golf Club Maintenance" is a current business in Southlake, TX.
r. "Timarron Family Medicine" is a current business in Southlake, TX.
s. "Village at Timarron 4120" is a current business in Southlake, TX.
t. "Timarron Tiger Sharks" is a current business in Southlake, TX.

3. Though Applicant might point out that most of the services provided by the above-listed
organizations do not offer home owner association services, but Applicant's legal
proceedings at state court plead very differently.
a. Applicant lost its state case by summary judgment when it sued Neighborhood
Networks Publishing, Inc. in Texas Tarrant County District Court 352, Cause No.
352-260448-12. provided by Applicant.
b. Applicant recently dismissed its claims against Opposer in Texas Tarrant County
District Court 096-260449-12
c. Opposer is aware of a third company contacted by Applicant, where Opposer has
threatened another suit on similarly bad logic.
Laches

4. Many near organizations have been using TIMARRON as part of their mark for years,
along with many other entities in the area.
Appendix A, p. 163
Opposer's Notice of Opposition Page 3

5. Many businesses near Applicant have used "Timarron"
6. The delay in filing suit was not reasonable or excusable.
Affirmative Defense of Dilution

7. The word "TIMARRON" is used by many businesses in the Southlake, TX area. In the
minds of consumers, the word "TIMARRON" is not attached to one particular business.
8. "TIMARRON" is so diluted that no single entity should be able to have exclusive rights
to the word.
9. Opposer's claim to a common law trademark is limited to its full name "TIMARRON
OWNER'S ASSOCIATION", by which it is known.
Applicant's mark is not valid.

10. The State of Texas has given a registration to Applicant for "TIMARRON", which
Applicant has challenged in the 96th Tarrant County as detailed above, Opposer expects
to result in a cancellation of the state mark.
Prayer

WHEREFORE, Applicant respectfully requests that the Applicant's mark be rejected.
Respectfully submitted,
By: /Warren V. Norred/
Warren V. Norred, Texas Bar No. 24045094
200 E. Abram, suite 300, Arlington, TX 76001
Tel. (817) 704-3984, Fax. (817) 549-0161
Attorney for PLAINTIFF

CERTIFICATE OF SERVICE - I certify that on August 21, 2013, a true and correct copy of
Opposer's Notice of Opposition above served by fax to John Wilson at 972.248.8088.



Warren V. Norred

Appendix A, p. 164









Mailed: August 21, 2013

Opposition No. 91212131
Serial No. 85780484

JOHN T WILSON
WILSON LEGAL GROUP PC
16610 DALLAS PKWY
SUITE 1000
DALLAS, TX 75248-6802
UNITED STATES
Barbara Morton
1


v.

Timarron Owners Association, Inc.

WARREN V NORRED
NORRED LAW PLLC
200 E ABRAM
SUITE 300
ARLINGTON, TX 76001
UNITED STATES


Veronica P. White, Paralegal Specialist:

A notice of opposition to the registration sought by the above-
identified application has been filed. A service copy of the notice of
opposition was forwarded to applicant (defendant) by the opposer
(plaintiff). An electronic version of the notice of opposition is
viewable in the electronic file for this proceeding via the Board's
TTABVUE system: http://ttabvue.uspto.gov/ttabvue/.

Proceedings will be conducted in accordance with the Trademark Rules of
Practice, set forth in Title 37, part 2, of the Code of Federal
Regulations ("Trademark Rules"). These rules may be viewed at the
USPTO's trademarks page: http://www.uspto.gov/trademarks/index.jsp. The Board's
main webpage (http://www.uspto.gov/trademarks/process/appeal/index.jsp) includes
information on amendments to the Trademark Rules applicable to Board
proceedings, on Alternative Dispute Resolution (ADR), Frequently Asked
Questions about Board proceedings, and a web link to the Board's manual
of procedure (the TBMP).

1
Opposers explanation as to why its name differs from its name in the
previously granted extension of time to oppose is noted and accepted.

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Appendix A, p. 165
Opposition No. 91212131

2

Plaintiff must notify the Board when service has been ineffective,
within 10 days of the date of receipt of a returned service copy or the
date on which plaintiff learns that service has been ineffective.
Plaintiff has no subsequent duty to investigate the defendant's
whereabouts, but if plaintiff by its own voluntary investigation or
through any other means discovers a newer correspondence address for the
defendant, then such address must be provided to the Board. Likewise,
if by voluntary investigation or other means the plaintiff discovers
information indicating that a different party may have an interest in
defending the case, such information must be provided to the Board. The
Board will then effect service, by publication in the Official Gazette
if necessary. See Trademark Rule 2.118. In circumstances involving
ineffective service or return of defendant's copy of the Board's
institution order, the Board may issue an order noting the proper
defendant and address to be used for serving that party.

Defendant's ANSWER IS DUE FORTY DAYS after the mailing date of this
order. (See Patent and Trademark Rule 1.7 for expiration of this or any
deadline falling on a Saturday, Sunday or federal holiday.) Other
deadlines the parties must docket or calendar are either set forth below
(if you are reading a mailed paper copy of this order) or are included
in the electronic copy of this institution order viewable in the Board's
TTABVUE system at the following web address: http://ttabvue.uspto.gov/ttabvue/.


Defendant's answer and any other filing made by any party must include
proof of service. See Trademark Rule 2.119. If they agree to, the
parties may utilize electronic means, e.g., e-mail or fax, during the
proceeding for forwarding of service copies. See Trademark Rule
2.119(b)(6).

The parties also are referred in particular to Trademark Rule 2.126,
which pertains to the form of submissions. Paper submissions, including
but not limited to exhibits and transcripts of depositions, not filed in
accordance with Trademark Rule 2.126 may not be given consideration or
entered into the case file.



Time to Answer 9/30/2013
Deadline for Discovery Conference 10/30/2013
Discovery Opens 10/30/2013
Initial Disclosures Due 11/29/2013
Expert Disclosures Due 3/29/2014
Discovery Closes 4/28/2014
Plaintiff's Pretrial Disclosures 6/12/2014
Plaintiff's 30-day Trial Period Ends 7/27/2014
Defendant's Pretrial Disclosures 8/11/2014
Defendant's 30-day Trial Period Ends 9/25/2014
Plaintiff's Rebuttal Disclosures 10/10/2014
Plaintiff's 15-day Rebuttal Period Ends 11/9/2014
Appendix A, p. 166
Opposition No. 91212131

3
As noted in the schedule of dates for this case, the parties are
required to have a conference to discuss: (1) the nature of and basis
for their respective claims and defenses, (2) the possibility of
settling the case or at least narrowing the scope of claims or defenses,
and (3) arrangements relating to disclosures, discovery and introduction
of evidence at trial, should the parties not agree to settle the case.
See Trademark Rule 2.120(a)(2). Discussion of the first two of these
three subjects should include a discussion of whether the parties wish
to seek mediation, arbitration or some other means for resolving their
dispute. Discussion of the third subject should include a discussion of
whether the Board's Accelerated Case Resolution (ACR) process may be a
more efficient and economical means of trying the involved claims and
defenses. Information on the ACR process is available at the Board's
main webpage. Finally, if the parties choose to proceed with the
disclosure, discovery and trial procedures that govern this case and
which are set out in the Trademark Rules and Federal Rules of Civil
Procedure, then they must discuss whether to alter or amend any such
procedures, and whether to alter or amend the Standard Protective Order
(further discussed below). Discussion of alterations or amendments of
otherwise prescribed procedures can include discussion of limitations on
disclosures or discovery, willingness to enter into stipulations of
fact, and willingness to enter into stipulations regarding more
efficient options for introducing at trial information or material
obtained through disclosures or discovery.

The parties are required to conference in person, by telephone, or by
any other means on which they may agree. A Board interlocutory attorney
or administrative trademark judge will participate in the conference,
upon request of any party, provided that such participation is requested
no later than ten (10) days prior to the deadline for the conference.
See Trademark Rule 2.120(a)(2). The request for Board participation
must be made through the Electronic System for Trademark Trials and
Appeals (ESTTA) or by telephone call to the interlocutory attorney
assigned to the case, whose name can be found by referencing the TTABVUE
record for this case at http://ttabvue.uspto.gov/ttabvue/. The parties should
contact the assigned interlocutory attorney or file a request for Board
participation through ESTTA only after the parties have agreed on
possible dates and times for their conference. Subsequent participation
of a Board attorney or judge in the conference will be by telephone and
the parties shall place the call at the agreed date and time, in the
absence of other arrangements made with the assigned interlocutory
attorney.

The Board's Standard Protective Order is applicable to this case, but
the parties may agree to supplement that standard order or substitute a
protective agreement of their choosing, subject to approval by the
Board. The standard order is available for viewing at:
http://www.uspto.gov/trademarks/process/appeal/guidelines/stndagmnt.jsp. Any party
without access to the web may request a hard copy of the standard order
from the Board. The standard order does not automatically protect a
party's confidential information and its provisions must be utilized as
needed by the parties. See Trademark Rule 2.116(g).

Information about the discovery phase of the Board proceeding is
available in chapter 400 of the TBMP. By virtue of amendments to the
Trademark Rules effective November 1, 2007, the initial disclosures and
expert disclosures scheduled during the discovery phase are required
Appendix A, p. 167
Opposition No. 91212131

4
only in cases commenced on or after that date. The TBMP has not yet
been amended to include information on these disclosures and the parties
are referred to the August 1, 2007 Notice of Final Rulemaking (72 Fed.
Reg. 42242) posted on the Board's webpage. The deadlines for pretrial
disclosures included in the trial phase of the schedule for this case
also resulted from the referenced amendments to the Trademark Rules, and
also are discussed in the Notice of Final Rulemaking.

The parties must note that the Board allows them to utilize telephone
conferences to discuss or resolve a wide range of interlocutory matters
that may arise during this case. In addition, the assigned
interlocutory attorney has discretion to require the parties to
participate in a telephone conference to resolve matters of concern to
the Board. See TBMP 502.06(a) (2d ed. rev. 2004).

The TBMP includes information on the introduction of evidence during the
trial phase of the case, including by notice of reliance and by taking
of testimony from witnesses. See TBMP 703 and 704. Any notice of
reliance must be filed during the filing party's assigned testimony
period, with a copy served on all other parties. Any testimony of a
witness must be both noticed and taken during the party's testimony
period. A party that has taken testimony must serve on any adverse
party a copy of the transcript of such testimony, together with copies
of any exhibits introduced during the testimony, within thirty (30) days
after the completion of the testimony deposition. See Trademark Rule
2.125.

Briefs shall be filed in accordance with Trademark Rules 2.128(a) and
(b). An oral hearing after briefing is not required but will be
scheduled upon request of any party, as provided by Trademark Rule
2.129.

If the parties to this proceeding are (or during the pendency of this
proceeding become) parties in another Board proceeding or a civil action
involving related marks or other issues of law or fact which overlap
with this case, they shall notify the Board immediately, so that the
Board can consider whether consolidation or suspension of proceedings is
appropriate.

ESTTA NOTE: For faster handling of all papers the parties need to file with
the Board, the Board strongly encourages use of electronic filing through the
Electronic System for Trademark Trials and Appeals (ESTTA). Various
electronic filing forms, some of which may be used as is, and others which may
require attachments, are available at http://estta.uspto.gov.
Appendix A, p. 168






Warren V. Norred
Norred Law, PLLC
200 E. Abram, Suite 300
Arlington, TX 76010


Mailed: May 21, 2013

Serial No.: 85780484
ESTTA TRACKING NO: ESTTA538976


The request to extend time to oppose is granted until
8/21/2013 on behalf of potential opposer BarbaraMorton

Please do not hesitate to contact the Trademark Trial and
Appeal Board at (571)272-8500 if you have any questions
relating to this extension.

Note from the Trademark Trial and Appeal Board

TTAB forms for electronic filing of extensions of time to
oppose, notices of opposition, petition for cancellation, notice
of ex parte appeal, and inter partes filings are now available
at http://estta.uspto.gov. Images of TTAB proceeding files can
be viewed using TTABVue at http://ttabvue.uspto.gov.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Appendix A, p. 169
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
ESTTA Tracking number: ESTTA538976
Filing date: 05/21/2013
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Applicant: Timarron Owners Association, Inc.
Application Serial Number: 85780484
Application Filing Date: 11/15/2012
Mark: TIMARRON
Date of Publication 04/23/2013
First 90 Day Request for Extension of Time to Oppose for Good Cause
Pursuant to 37 C.F.R. Section 2.102, Barbara Morton, 630 E. Southlake Blvd., Suite 111, Southlake, TX
76092, UNITED STATES, an individual and a citizen of UNITED STATES respectfully requests that he/she
be granted a 90-day extension of time to file a notice of opposition against the above-identified mark for
cause shown .
Potential opposer believes that good causes are established for this request by:
-
The potential opposer needs additional time to confer with counsel
-
Potential opposer is engaged in state litigation and discovery; there is reasonable hope for resolution
during the process.
The time within which to file a notice of opposition is set to expire on 05/23/2013. Barbara Morton respectfully
requests that the time period within which to file an opposition be extended until 08/21/2013.
Respectfully submitted,
/Warren V. Norred/
05/21/2013
Warren V. Norred
Norred Law, PLLC
200 E. Abram, Suite 300
Arlington, TX 76010
UNITED STATES
wnorred@norredlaw.com
817-704-3984
Appendix A, p. 170

Mark Information
Mark Literal Elements: TIMARRON COLLEGE PREP
Standard Character Claim: Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
Mark Drawing Type: 4 - STANDARD CHARACTER MARK
Disclaimer: "COLLEGE PREP"
Translation: The English translation of "TIMARRON" in the mark is "Child of Importance" in the Hopi Native American Indian language.
Goods and Services
Note: The following symbols indicate that theregistrant/owner has amended the goods/services:
Brackets [..] indicate deleted goods/services;
Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of
Asterisks *..* identify additional (new) wording in the goods/services.
For: Conducting after school tutoring programs; Education services, namely, providing tutoring in the field of mathematics, sciences, social
studies, language arts and foreign languages; Education services, namely, providing tutoring in the fields of curriculum for all
educational levels, namely, primary and secondary grades, and college level, namely, undergraduate, graduate and post-graduate
levels; Education services, namely, providing tutoring in the fields of taking academic entrance examinations and standardized tests;
Providing courses of instruction at the primary and secondary levels, and college levels, namely, undergraduate, graduate and post-
graduate level; Teaching in the field of mathematics, sciences, social studies, language arts and foreign languages
International Class(es): 041 - Primary Class U.S Class(es): 100, 101, 107
Class Status: ACTIVE
Basis: 1(a)
First Use: May 31, 2008 Use in Commerce: May 31, 2008
Basis Information (Case Level)
Filed Use: Yes Currently Use: Yes Amended Use: No
Filed ITU: No Currently ITU: No Amended ITU: No
Filed 44D: No Currently 44D: No Amended 44D: No
Filed 44E: No Currently 44E: No Amended 44E: No
Filed 66A: No Currently 66A: No
Filed No Basis: No Currently No Basis: No
Current Owner(s) Information
Owner Name: Morton, Barbara
DBA, AKA, Formerly: DBA Timarron College Prep
Owner Address: 630 E. Southlake Blvd., Suite 111
Southlake, TEXAS 76092
UNITED STATES
Legal Entity Type: INDIVIDUAL Citizenship: UNITED STATES
Attorney/Correspondence Information
Attorney of Record
Generated on: This page was generated by TSDR on 2014-02-02 22:01:11 EST
Mark: TIMARRON COLLEGE PREP
US Serial Number: 85516680 Application Filing Date: Jan. 13, 2012
Filed as TEAS Plus: Yes Currently TEAS Plus: Yes
Register: Principal
Mark Type: Service Mark
Status: An opposition after publication is pending at the Trademark Trial and Appeal Board. For further information, see TTABVUE on the
Trademark Trial and Appeal Board web page.
Status Date: Oct. 18, 2012
Publication Date: Oct. 16, 2012
Appendix B, p. 1
Attorney Name: Mark W Handley Docket Number: BMRT-28480TM
Attorney Primary Email
Address:
docket@iplaw.pro Attorney Email
Authorized:
Yes
Correspondent
Correspondent
Name/Address:
WARREN V NORRED
200 E ABRAM
SUITE 300
ARLINGTON, TEXAS 76001
UNITED STATES
Phone: 972-518-1713 Fax: 972-518-1777
Correspondent e-mail: docket@iplaw.pro mail@txip.us Correspondent e-mail
Authorized:
Yes
Domestic Representative - Not Found
Prosecution History
Date Description
Proceeding
Number
Oct. 18, 2012 OPPOSITION INSTITUTED NO. 999999 207557
Oct. 18, 2012 OPPOSITION PAPERS RECEIVED AT TTAB
Oct. 16, 2012 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
Oct. 16, 2012 PUBLISHED FOR OPPOSITION
Sep. 26, 2012 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
Sep. 10, 2012 LAW OFFICE PUBLICATION REVIEW COMPLETED 67287
Sep. 07, 2012 ASSIGNED TO LIE 67287
Aug. 27, 2012 APPROVED FOR PUB - PRINCIPAL REGISTER
Aug. 27, 2012 TEAS/EMAIL CORRESPONDENCE ENTERED 88889
Aug. 27, 2012 CORRESPONDENCE RECEIVED IN LAW OFFICE 88889
Aug. 27, 2012 TEAS RESPONSE TO OFFICE ACTION RECEIVED
Apr. 21, 2012 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325
Apr. 21, 2012 NON-FINAL ACTION E-MAILED 6325
Apr. 21, 2012 NON-FINAL ACTION WRITTEN 73703
Apr. 19, 2012 ASSIGNED TO EXAMINER 73703
Jan. 20, 2012 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
Jan. 17, 2012 NEW APPLICATION ENTERED IN TRAM
TM Staff and Location Information
TM Staff Information
TM Attorney: CARROLL, DORITT Law Office Assigned: LAW OFFICE 116
File Location
Current Location: PUBLICATION AND ISSUE SECTION Date in Location: Sep. 10, 2012
Proceedings
Summary
Number of Proceedings: 1
Type of Proceeding: Opposition
Proceeding Number: 91207557 Filing Date: Oct 18, 2012
Status: Pending Status Date: Oct 18, 2012
Interlocutory Attorney: GEORGE POLOGEORGIS
Defendant
Name: Barbara Morton dba Timarron College Prep
Correspondent Address: WARREN V NORRED
200 E ABRAM , SUITE 300
ARLINGTON TX , 76001
UNITED STATES
Correspondent e-mail: wnorred@norredlaw.com
Associated marks

Appendix B, p. 2
Mark Application Status
Serial
Number
Registration
Number
TIMARRON COLLEGE PREP
Opposition Pending 85516680
Plaintiff(s)
Name: Timarron Owners Association, Inc.
Correspondent Address: JOHN T WILSON
WILSON LEGAL GROUP PC
16610 DALLAS PARKWAY 2000
DALLAS TX , 75248
UNITED STATES
Correspondent e-mail: john@wilsonlegalgroup.com , kandace@wilsonlegalgroup.com , sul@wilsonlegalgroup.com , ana@wilsonlegalgroup.com
Associated marks
Mark Application Status Serial Number
Registration
Number
TIMARRON
Prosecution History
Entry
Number
History Text Date Due Date
1
FILED AND FEE
Oct 18, 2012
2
NOTICE AND TRIAL DATES SENT; ANSWER DUE:
Oct 18, 2012 Nov 27, 2012
3
PENDING, INSTITUTED
Oct 18, 2012
4
ANSWER
Nov 27, 2012
5
P MOT TO SUSP PEND DISP CIV ACTION
Jun 12, 2013
6
D OPP/RESP TO MOTION
Jul 02, 2013
7
P REPLY IN SUPPORT OF MOTION
Jul 05, 2013
8
SUSP PEND DISP OF CIVIL ACTION
Jul 09, 2013
9
PLS NOTICE OF DISMISSAL OF C/A AND MOT TO
CONSOLIDATE
Nov 21, 2013
Appendix B, p. 3
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
ESTTA Tracking number: ESTTA572246
Filing date: 11/21/2013
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 91207557
Party Plaintiff
Timarron Owners Association, Inc.
Correspondence
Address
JOHN T WILSON
WILSON LEGAL GROUP PC
16610 DALLAS PARKWAY 2000
DALLAS, TX 75248
UNITED STATES
john@wilsonlegalgroup.com, kandace@wilsonlegalgroup.com,
sul@wilsonlegalgroup.com, ana@wilsonlegalgroup.com
Submission Other Motions/Papers
Filer's Name John Wilson
Filer's e-mail john@wilsonlegalgroup.com
Signature /s/John T. Wilson
Date 11/21/2013
Attachments TOA Ntc of Dismissal & Mtn to Consolidate.pdf(1495001 bytes )
Appendix B, p. 4
IN .THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
In the matter of trademark Serial No.: 85/ 516680
Mark: TIMARRON COLLEGE PREP
Published in the Official Gazette on October 16, 2012
TIMARRON OWNERS ASSOCIATION, INC
Opposer,
v.
TIMARRON COLLEGE PREP
Applicant.
Opposition No. 91207557
TIMARRON OWNERS ASSOCIATION, INC.'S NOTICE OF DISMISSAL OF CIVIL
LITIGATION AND MOTION TO RE-OPEN
AND CONSOLIDATE OPPOSITION PROCEEDINGS
On or about July 19, 2013 the United States Patent and Trademark Office's Trademark
Trial and Appeal Board (the "TT AB") entered an order suspending the above styled opposition
proceeding in light of a simultaneously pending civil action between the above referenced parties-
the final determination of which was still outstanding.
At that time the TTAB cited that the civil action pending before the 96
111
Judicial District
Court of Tarrant County, Texas under Cause No: 096-260449-12 (the "State Court Case") could
have a bearing on the issues in this opposition proceeding and ordered that the parties notify the
TT AB upon a final order in the State Court Case.
On or about August 21 , 2013, while the State Court Case was still pending, Timarron
College Prep ("College Prep") filed its Notice of Opposition against Timarron Owners
1
Notice of Dismissal of Civil Litigation and
Motion to Re-Open Opposition and to Consolidate
Appendix B, p. 5
Association, Inc. (TOA) with the TTAB under Opposition No.: 91212131, in re Trademark No:
85516680 (the "College Prep Opposition").
Prior to that, on or about July 12, 2013, College Prep filed a Motion for Summary Judgment
in the Sate Court Case, wherein it waived all causes of action against TOA and all relief not
specifically requested within its Motion for Summary Judgment (the "College Prep MSJ"),
including College Prep's case of action challenging TOA's state trademark.
At that time, in light of College Prep's waiver of its claims related to TOA's state
trademark, and whereas the remaining matters at issue between the parties pertained solely to
questions of infringement, TOA moved to dismiss the State Court Case, such that the validity of
the parties' respective trademarks issues might be determined by the TT AB in a federal venue
prior to a state court' s addressing of the issue of potential infringement.
On or about October 26, 2013, the 96
1
h Judicial District Court of Tarrant County, Texas
entered a final order in the State Court Case dismissing the suit without prejudice in its entirety
(the "Order of Dismissal"). A true and correct copy of said Order of Dismissal is attached hereto
and incorporated by referenced herein as "Exhibit A."
Accordingly Timarron Owners Association, Inc. files this Notice of Dismissal of Civil
Litigation and Motion to Re-open and Consolidate Opposition Proceedings under TBMP 511 and
requests that the TT AB re-open the above styled opposition proceeding (the "TOA Opposition").
Further, TOA requests that this action be consolidated with the above referenced College Prep
Opposition. Pursuant to TBMP 511 , "if actions before the court involve a common question of
law or fact, the court may: (1) join for hearing or trial any or all matters at issue in the actions; (2)
consolidate the actions; or (3) issue any other orders to avoid unnecessary cost or delay." Because
both the TOA Opposition and the College Prep Opposition revolve around TOA 's and College
2
Notice ofDismissal of Civil Litigation and
Motion to Re-Open Opposition and to Consolidate
Appendix B, p. 6
Prep' s respective rights to register trademarks containing the term "Timarron" and around their
respective uses thereof, both the TOA Opposition and the College Prep Opposition involve
common questions oflaw and fact. Accordingly, TOA respectfully requests that the TTAB enter
an order re-opening the TOA Opposition proceeding and consolidating it with the College Prep
Opposition proceeding.
Dated: November 21,2013.
Notice of Dismissal of Civil Litigation and
Motion to Re-Open Opposition and to Consolidate
Respectfully submitted,
WILSON LEGAL GROUP P.C.
By: Is/John T. Wilson
John T. Wilson
State Bar No. 24008284
KandaceD. Walter
State Bar No. 24047068
Ryan S. Prugh
State Bar No: 24088259
16610 Dallas Parkway, Suite 1000
Dallas, Texas 75248
(T) 972.248.8080;
(F) 972.248.8088;
ATTORNEYS FOR OPPOSER
TIMARRON OWNERS
ASSOCIATION, INC.
3
Appendix B, p. 7
CERTIFICATE OF SERVICE
This is to certify that a true and correct copy of the above Notice has been served upon
Opposer, by and through its counsel of record, pursuant to Rules of Federal Civil Procedure on
November 21,2013.
Mark W. Handley
Handley Law Firm, PLLC
P.O. Box 97
Grapevine, Texas 76099-0097
Facsimile: (972) 518-1777
Notice of Dismissal of Civil Litigation and
Motion to Re-Open Opposition and to Consolidate
Warren V. Norred
200 E. Abram
Suite 300
Arlington, TX 76001
Facsimile: (817) 549-0161
/s!.John T. Wilson
John T. Wilson
4
Appendix B, p. 8
"EXHIBIT A"
Appendix B, p. 9
CAUSE NO.
TIMARRON OWNERS ASSOCIATION,
INC.,
























IN THE DISTRICT COURT
Plaintiff,
VS.
BARBARA LOUISE MORTON DIBIA
TIMARRON COLLEGE PREP,
Defendant,
TARRANT COUNTY, TEXAS
BARBARA LOUISE MORTON DIB! A
TIMARRON COLLEGE PREP,
Counterplaintiff,
vs.
TIMARRON OWNERS ASSOCIATION,
INC.,
Counterdefendant. 96TH JUDICIAL DISTRICT
ORDER OF J!ISMISSAL
Came on to be considered" Defendant Morton's Objection to Plaintiff's Notice of Nonsuit
and Motion to Strike" and "Plaintiff's Motion for Entry of Order of Dismissal Based on Notice of
Nonsuit Filed 08115113. "Having reviewed those matters, as well as all other pleadings on file, the
Court finds that the Plaintiffs motion should be GRANTED.
The Court fmds that PlaintiffTimarron Owners Association, Inc., by and through its nonsuit,
has dismissed all its claims asserted and alleged against Defendant Barbara Louise Morton dlb/a
Timarron College Prep.
ORDER OF DISMISSAL
Cause No. 096-260449-12; Timarron Owners Association, Inc. v. Morton ...
Page I of2 Pages
Coures
. JJ. "'.C.
-;t
C!l 1 v.,.._ ,t...(
Appendix B, p. 10
The Court further finds that Defendant, in her traditional and no-evidence motion for
summary judgment, has waived all causes of action and relief not specifically requested within her
motion for summary judgment.
The Court further finds that neither party has any outstanding affirmative requests for relief.
IT IS THEREFORE ORDERED, ADJUDGED, AND DECREED that all causes of action
and counterclaims asserted herein are hereby dismissed without prejudice.
IT IS FURTHER ORDERED, ADJUDGED, AND DECREED that this suit is hereby
dismissed without prejudice in its entirety.
SIGNED this { ~ d a y of October 2013.
ORDER OF DISMISSAL
Cause No. 096-260449-12; Timarron Owners Association, Inc. v. Barbara Louise Morton ...
Page 2 of2 Pages
Appendix B, p. 11








Mailed: July 9, 2013

Opposition No. 91207557

Timarron Owners Association,
Inc.

v.

Barbara Morton dba Timarron
College Prep


George C. Pologeorgis,
Interlocutory Attorney:
This case now comes before the Board for consideration of opposers
motion (filed June 12, 2013) to suspend this opposition proceeding pending
the final determination of a civil action between the parties in the District
Court, 96
th
Judicial District, Tarrant County, Texas.
1
The motion is fully
briefed.
Opposer has submitted a copy of the complaint in the state court
action.
It is the policy of the Board to suspend proceedings when the parties
are involved in a civil action which may be dispositive of or have a bearing on
the Board case. See Trademark Rule 2.117(a).

1
Case No. 096 260449 12, styled Timarron Owners Association, Inc. v. Barbara
Louise Morton d/b/a Timarron College Prep, filed on or about July 26, 2012.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Appendix B, p. 12
Opposition No. 91207557

2
Following a careful review of the civil action complaint, the Board finds
that a decision by the state court could have a bearing on this issues in this
opposition proceeding. The Board notes that that opposer and applicant are
both parties to the state court action and that the state court action and the
Board proceeding involve a substantial amount of identical questions of law
and fact. Specifically, opposer has asserted a claim of trademark
infringement in the state court action and seeks to enjoin applicant from
using its involved mark herein. Here, opposer has asserted a claim of
priority and likelihood of confusion as its ground for opposition. While the
Board may not necessarily be bound by the state courts decision regarding
the issue of likelihood of confusion and/or trademark infringement, the state
courts determination regarding these issues may provide some persuasive
insight with regard to opposers claim of priority and likelihood of confusion
asserted in this proceeding. See Professional Economics Incorporated v.
Professional Economics Services, Inc., 205 USPQ 368 (TTAB 1979).
Moreover, to the extent the state court grants opposers request for injunctive
relief and enjoins applicant from using its involved mark, such a holding may
affect the registrability of applicants subject mark.
In view thereof, and since, as stated above, the outcome of the state
court action may have a bearing on the question of applicants right of
registration, opposers motion to suspend is GRANTED.
Appendix B, p. 13
Opposition No. 91207557

3
Accordingly, proceedings herein are suspended pending final
disposition of the state court action between the parties, including all
appeals.
Within twenty days after the final determination of the state court
action, including all appeals, the interested party should notify the Board so
that this case may be called up for appropriate action.
During the suspension period the Board should be notified of any
address changes for the parties or their attorneys.

Appendix B, p. 14
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
ESTTA Tracking number: ESTTA546970
Filing date: 07/05/2013
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 91207557
Party Plaintiff
Timarron Owners Association, Inc.
Correspondence
Address
JOHN T WILSON
WILSON LEGAL GROUP PC
16610 DALLAS PARKWAY 2000
DALLAS, TX 75248
UNITED STATES
john@wilsonlegalgroup.com, kandace@wilsonlegalgroup.com,
sul@wilsonlegalgroup.com, ana@wilsonlegalgroup.com
Submission Reply in Support of Motion
Filer's Name John T. Wilson
Filer's e-mail john@wilsonlegalgroup.com, kandace@wilsonlegalgroup.com,
amanda@wilsonlegalgroup.com, paul@wilsonlegalgroup.com
Signature /s/ John T. Wilson
Date 07/05/2013
Attachments TOA Reply to Objection to Mtn to Suspend 7.5.13.pdf(14313 bytes )
Appendix B, p. 15

REPLY TO OBJECTION TO MOTION TO SUSPEND OPPOSITION PAGE 1
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In the matter of trademark Serial No.: 85/516680
Mark: TIMARRON COLLEGE PREP
Published in the Official Gazette on October 16, 2012

TIMARRON OWNERS ASSOCIATION, INC
Opposer,

v.


TIMARRON COLLEGE PREP
Applicant.

Opposition No. 91207557


______________________________________________________________________________

TIMARRON OWNERS ASSOCIATION, INC.'S REPLY TO
APPLICANT'S OBJECTION TO OPPOSER'S MOTION TO SUSPEND
OPPOSITION PURSUANT TO 37 C.F.R. 2.117
______________________________________________________________________________

Opposer files this Reply to Applicant's Objection to Opposer's Motion to Suspend
Opposition Pursuant to 37 C.F.R. 2.117, and shows as follows:
I. Background
1. On or about June12, 2013, Opposer TIMARRON OWNERS ASSOCIATION,
INC. (hereinafter "TOA") filed its Motion to Suspend Opposition Pursuant to 37 C.F.R. 2.117,
wherein TOA requested that the Trademark Trial and Appeal Board suspend this opposition
proceeding pending the resolution of the Civil Litigation which also revolves around the
Trademark that is of interest in this proceeding (the "Motion").
2. On or about July 2, 2013, Applicant Timarron College Prep (hereinafter "TCP"),
filed its Objection to Motion to Suspend Opposition (the Objection).
Appendix B, p. 16

REPLY TO OBJECTION TO MOTION TO SUSPEND OPPOSITION PAGE 2
3. As previously stated in TOA's Motion to Suspend, On or about July 26, 2012,
Opposer filed its Original Petition in Timarron Owners Association, Inc. v Barbara Louise
Morton d/b/a College Prep; Cause No. 096-260449-12, pending in the District Court of the 96th
Judicial District of Tarrant County Texas (the "Civil Litigation") alleging claims of Trademark
Infringement, Unjust Enrichment, Tortious Interference, and Unfair Competition as they pertain
to the TIMARRON mark, and seeking inter alia, for the Court to restrain TCP from trading off
of the good will and reputation of TOA's TIMARRON mark. A true and correct copy of said
Original Petition was previously attached to TOA's Motion to Suspend, and was incorporated for
the Board's reference at that time.
II. Arguments
4. TOA's Motion to Suspend should be granted in the interests of judicial economy
in that there is no need for this opposition proceeding to be ongoing as a separate legal
proceeding from the Civil Litigation, when one will have a determinative bearing on the other.
5. Contrary to Applicant TCP's argument in their objection to the Motion, granting
the Motion to Suspend will in no way place Federal law subject to Texas law, but rather will
recognize the interests of judicial economy and the efficiency of suspending a legal proceeding
affected by the material and informative outcome of a simultaneously ongoing legal proceeding.
6. Specifically, in the Civil Litigation TOA is currently suing TCP for claims of
trademark infringement related to TCP's infringing use of TOA's state trademark "TIMARRON,"
Reg. No. 800205842 (the "Mark"). The mark which TCP is currently seeking to register, and
which is of interest in this Opposition proceeding, contains "TIMARRON." The question of
whether Applicant TCP has infringed Opposer TOA's state trademark is of immediate
importance to the outcome of this Opposition proceeding.
Appendix B, p. 17

REPLY TO OBJECTION TO MOTION TO SUSPEND OPPOSITION PAGE 3
7. The specifics of this Opposition proceeding will, by and large, be affected by the
outcome of the Civil Litigation. Because Opposer TOA seeks to hold Applicant TCP liable for
trademark infringement of a trademark for which Applicant TCP now seeks a federal trademark,
if Opposer TOA prevails in its action for trademark infringement in the Civil Litigation, such a
result would have a determinate bearing on this opposition proceeding.
8. Similarly, if Opposer TOA does not prevail in its action for trademark
infringement in the Civil Litigation against TCP, such an outcome would also have an immediate
impact on this opposition proceeding. Accordingly, it is in the interests of judicial economy, that
this opposition proceeding be suspended pending the outcome of the civil litigation.
III. Conclusion
For these reasons, and because the Civil Litigation in which Timarron Owners
Association, Inc. and Timarron College Prep are currently engaged will likely have a
determinative bearing on this Opposition proceeding, Timarron Owners Association asks The
Trademark Trial and Appeal Board to suspend this Opposition proceeding pending the resolution
of the Civil Litigation.
DATED: July 5, 2013.

Appendix B, p. 18

REPLY TO OBJECTION TO MOTION TO SUSPEND OPPOSITION PAGE 4

Respectfully submitted,
WILSON LEGAL GROUP P.C.


By: /s/John T. Wilson
John T. Wilson
State Bar No. 24008284
Kandace D. Walter
State Bar No. 24047068
16610 Dallas Parkway, Suite 1000
Dallas, Texas 75248
(T) 972.248.8080;
(F) 972.248.8088;

ATTORNEYS FOR OPPOSER
TIMARRON OWNERS
ASSOCIATION, INC.



CERTIFICATE OF SERVICE

This is to certify that a true and correct copy of the above Motion has been served upon
Opposer, by and through its counsel of record, pursuant to Rules of Federal Civil Procedure on
July 5, 2013.
Mark W. Handley
Handley Law Firm, PLLC
P.O. Box 97
Grapevine, Texas 76099-0097
Facsimile: (972) 518-1777

Warren V. Norred
200 E. Abram
Suite 300
Arlington, TX 76001
Facsimile: (817) 549-0161


/s/John T. Wilson
John T. Wilson


Appendix B, p. 19
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
ESTTA Tracking number: ESTTA546504
Filing date: 07/02/2013
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 91207557
Party Defendant
Barbara Morton dba Timarron College Prep
Correspondence
Address
WARREN V NORRED
200 E ABRAM , SUITE 300
ARLINGTON, TX 76001
UNITED STATES
wnorred@norredlaw.com
Submission Opposition/Response to Motion
Filer's Name Warren V. Norred
Filer's e-mail wnorred@norredlaw.com, eflint@norredlaw.com, anorred@norredlaw.com
Signature /Warren V. Norred/
Date 07/02/2013
Attachments 2013_07_02-ApplicantObjectionMotSuspendOpp.pdf(492373 bytes )
Appendix B, p. 20
Applicant's Objection to Motion to Suspend Opposition Page 1

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

TIMARRON OWNERS ASSOCIATION, INC
Opposer Opposition No: 91207557

v. Mark: TIMARRON COLLEGE PREP

TIMARRON COLLEGE PREP In re Trademark No: 85/516680
Applicant. Publ. October 16, 2012

APPLICANT'S OBJECTION TO MOTION TO SUSPEND OPPOSITION

Applicant, TIMARRON OWNERS ASSOCIATION, INC., by its attorney, hereby
submits its Objection to Opposer's Motion to Suspend Opposition ("Motion"), filed without
notice to Applicant, and would show the Board as follows.
1. Opposer has moved that the Board suspend the above numbered opposition due to a civil
action filed in Tarrant County District Court in Texas, Cause No. 096-260449-12.
Opposer attached its suit as Exhibit 1 to its Motion, and incorporated herein by reference.
2. Applicant has counter-sued Opposer, seeking cancelation of the Texas-registered mark.
Applicant's counter-suit is attached as Exhibit A to this objection.
3. 37 CFR 2.117 does not require suspension, but only states the Board may suspend the
proceedings. The referenced state civil suit is based on a Texas-registered mark, and has
no bearing on any national application. As the civil suit has no bearing on the Opposition,
there is no good reason to suspend the Opposition. Moreover, to abate proceedings in this
Opposition is to place Texas trademark law in a superior position to the federal process.
4. Further, the Board should deny the motion because Opposer has failed to provide service
of its motion to Applicant. The certificate of service on the Motion states only that
Opposer served Applicant, but fails to state by what method Applicant was served, and is
therefore not compliant. As stated in the Notes of Advisory Committee on 1991
Appendix B, p. 21
amendments of Fed Rules Civ Proc R 5, "The certificate will generally specify the date as
well as the manner of service, but parties employing private delivery services may
sometimes be unable to specify the date of delivery." Applicant denies that it was
provided any service whatsoever, and has attached a supporting affidavit as Exhibit B.

Prayer

WHEREFORE, Applicant respectfully requests that the Board deny the Motion
and continue the Opposition proceeding.
Respectfully submitted,

By: /Warren V. Norred/
Warren V. Norred, Texas Bar No. 24045094
200 E. Abram, suite 300, Arlington, TX 76001
Tel. (817) 704-3984, Fax. (817) 549-0161
Attorney for Applicant

CERTIFICATE OF SERVICE - I certify that on July 2, 2013, a true and correct copy of
APPLICANT'S OBJECTION TO MOTION TO SUSPEND OPPOSITION above was served
by fax to John Wilson at 972.248.8088.



Warren V. Norred
Appendix B, p. 22
Cause No. 096-260449-12
TIMARRON OWNERS ASSOC., INC.
Plaintiff,
IN THE DISTRICT COURT


v.
96TH JUDICIAL DISTRICT

BARBARA LOUISE MORTON D/B/A/
TIMARRON COLLEGE PREP
Defendant.
TARRANT COUNTY, TEXAS

DEFENDANT MORTON'S FIRST AMENDED ORIGINAL ANSWER,
COUNTERCLAIMS, and MOTION TO TRANSFER
NOW COMES Defendant BARBARA LOUIS MORTON, files this Original Answer in
the above-styled and numbered cause, denying Plaintiffs claims, asking the Court for a
declaration that Defendant is not infringing any common law trademark claimed by Plaintiff, and
once the declaration is established, a transfer to Travis County District Court so that Defendant
may seek cancellation of the Texas-registered trademark of TIMARRON OWNERS
ASSOCIATION, INC, and would show the following:
I. PARTY VERIFICATION
1. Defendant/Counter-Plaintiff, BARBARA MORTON, is an individual residing in Tarrant
County, Texas, and may be contacted through her attorney of record, Warren Norred.
2. PlaintiffTIMARRON OWNERS ASSOCIATION, INC. has already appeared in this suit.
II. JURISDICTION AND VENUE
3. The subject matter in controversy is within the jurisdictional limits of this court.
4. Plaintiff has established venue in Tarrant County, so venue for the counterclaims is also
properly in Tarrant County under TEX. CIV. PRAC. & REM. CODE 15.062(a).
5. Counterclaims against Plaintiff may require transfer to Travis County if the suit progresses to
an action on the merits of those claims.
96-260449-12, Defendant's First Amended Answer & Counterclaims Page 1
Appendix B, p. 23
III. GENERAL DENIAL
6. Defendant denies each and every allegation of Plaintiffs Original Petition.
IV. COUNTERCLAIM FOR DECLARATORY JUDGMENT
7. Defendant requests that this Court issue declaratory judgment that it has not infringed any
trademark belonging to Plaintiff, pursuant to the Texas Uniform Declaratory Judgments Act,
Texas Civil Practice and Remedies Code, Chapter 37, in that:
a. Defendant's trademark has been active since 2008, during which time it has provided
tutoring services, which falls under trademark International Class 41.
b. Plaintiffs Texas-registered trademark, provided in its petition, is for insurance and
financial services, falling under trademark International Class 36.
c. Plaintiff has based its case under an incorrect theory that that every mark that includes
the word "Timarron" infringes Plaintiffs mark. However, there are nearly 40
businesses in Texas that use "Timarron" or a similar mark, including a home owner's
association in San Antonio, the Tamaron Property Owners Association, which has
existed and used the mark for seven years prior to Plaintiffs Texas registration.
V. COUNTERCLAIM FOR DISCLAIMER OR CANCELLATION
8. Defendant requests that this Court issue an order cancelling Plaintiffs trademarks, as
Plaintiff does not appear to provide services that would appropriately fall under Class 36,
and should be cancelled pursuant to TEX. Bus. & COM. CODE 16.064(4)(D) [registered
mark was obtained fraudulently].
VI. COUNTERCLAIM FOR
TORTIOUS INTERFERENCE WITH BUSINESS RELATIONS
9. Defendant has suffered damages for Plaintiffs agents actions that have interfered in
96-260449-12, Defendant's First Amended Answer & Counterclaims Page2
Appendix B, p. 24
potential leases and other contracts, and caused Defendant to suffer malicious and wanton
interference, disturbance, or annoyance in her business dealings.
VII. MOTION TO TRANSFER
10. In accordance with TEX. Bus. & CoM. CODE 16.106 (20 12), this action must be
transferred to Travis County, as it includes an action to cancel a trademark. Defendant is
content to allow discovery and time for a potential settlement before a hearing on this
motion to transfer in the hope that the issue might be settled before hearing and court be
required to order on this issue.
VIII. ATTORNEY FEES
11. In accordance with TEX. Civ. PRAC. & REM. CODE 37, Defendant requests attorney fees.
IX. PRAYER
12. Defendant prays the Court, after notice and hearing or trial, enters declaratory judgment
in favor of Defendant, cancel or amend Plaintiffs state-registered trademark, award
Defendant the costs of court, attorney's fees, and such further relief as Defendant may be
entitled to in law or in equity.
CERTIFICATE OF SERVICE- I certify that on May 17, a true and correct copy of Defendant's
Original Answer above served by fax to John Wilson t 9 .248.8080.

96-260449-12, Defendant's First Amended Answer & Counterclaims Page3
Appendix B, p. 25
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
TIMARRON OWNERS ASSOCIATION, INC
Opposer

Opposition No: 91 207557

v. Mark: TIMARRON COLLEGE PREP

TIMARRON COLLEGE PREP
Applicant.
In re Trademark No: 85/516680
Pub I. October 16, 2012
EXHIBIT B
AFFIDAVIT OF WARREN NORRED
BEFORE ME, the undersigned authority, on thi s day personall y appeared Warren
Norred, who swore on oath that the foll owing facts are true:
"My name is Warren Norred. I am over 18, of sOLmd mind, and fully competent to
make thi s affidavit.
"My office never received service of Opposer' s Motion to Suspend Opposition. even
though that motion contains a certificate of service."
"FURTHER, AFFIANT SAYETH NOT. "
Warren Norred
SUBSCRIBED AND SWORN TO by Warren on Jul y 2, 201 3.
L. ELLEN FLINT - - . - z
Notary Public. State of Texas
_:.j My commission Ex
7
plres otary ubllc, State of Texas
.. May 22. 201

Applicant's Object ion to Motion to Suspend Opposition Page 3
Appendix B, p. 26
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
ESTTA Tracking number: ESTTA1475
Filing date: 06/12/2013
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 91207557
Party Plaintiff
Timarron Owners Association, Inc.
Correspondence
Address
JOHN T WILSON
WILSON LEGAL GROUP PC
16610 DALLAS PARKWAY 2000
DALLAS, TX 75248
UNITED STATES
john@wilsonlegalgroup.com, kandace@wilsonlegalgroup.com,
sul@wilsonlegalgroup.com, ana@wilsonlegalgroup.com
Submission Motion to Suspend for Civil Action
Filer's Name John T. Wilson
Filer's e-mail john@wilsonlegalgroup.com, uspto@wilsonlegalgroup.com
Signature /John T. Wilson/
Date 06/12/2013
Attachments Opposer's Motion to Suspend Opposition 6.12.13.pdf(5602720 bytes )
Appendix B, p. 27
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
In the matter of trademark Serial No.: 85/516680
Mark: TIMARRON COLLEGE PREP
Published in the Official Gazette on October 16, 2012
TIMARRON OWNERS ASSOCIATION, INC
Opposer,
v.
TIMARRON COLLEGE PREP
Applicant.
Opposition No. 91207557
MOTION TO SUSPEND OPPOSITION PURSUANT TO 37 C.F.R. 2.117
Opposer files this Motion to Suspend Opposition Pursuant to 37 C.F. R. 2.117, as
authorized by Title 37 2.117 of the U.S. CODE OF FEDERAL REGULATIONS.
I. Procedural Background
1. Opposer is Timarron Owners Association, Inc. ("TOA''); Applicant is Timarron
College Prep ("TCP").
2. On or about October 18, 2012, Opposer filed its Notice of Opposition against
Applicant, in light of Opposer's superior rights in and to "TIMARRON," and in light of
Applicant's seeking to register the word mark TIMARRON COLLEGE PREP as a trademark for
"after school tutoring programs" and "education services" in International Class 041.
3. On or about July 26, 2012, Opposer filed its Original Petition in Timarron
Owners Association, Inc. v Barbara Louise Morton d/b/a College Prep; Cause No. 096-260449-
12, pending in the District Court of the 96th Judicial District of Tarrant County Texas (the "Civil
Lawsuit") alleging claims of Trademark Infringement, Unjust Enrichment, Tortious Interference,
MOTION TO SUSPEND OPPOSITION PAGEl
Appendix B, p. 28
and Unfair Competition as they pertain to the TIMARRON mark, and seeking inter alia, for the
Court to restrain TCP from trading off of the good will and reputation of TOA's TIMARRON
mark. A true and correct copy of said Original Petition is attached hereto as "Exhibit 1" and is
incorporated by reference as if fully set forth herein.
4. On or about September 7, 2012, TCP filed its Original Answer and Counterclaim
in the Civil Lawsuit. A true and correct copy of said Original Answer and Counterclaim is
attached hereto as "Exhibit 2" and is incorporated by reference as if fully set forth herein.
5. On or about October 11 , 2012, TOA filed its Original Answer and Special
Exceptions to Defendant/Counter-Plaintiffs Original Counterclaim.
6. The Civil Lawsuit is currently in the discovery stage of litigation.
II. Arguments & Authorities
7. 37 C.F.R. 2.117(a) states:
Whenever it shall come to the attention of the Trademark Trial and
Appeal Board that a party or parties to a pending case are engaged in a
civil action or another Board proceeding which may have a bearing on
the case, proceedings before the Board may be suspended until
termination of the civil action or the other Board proceeding.
8. Accordingly, Timarron Owners Association, Inc. respectfully requests that this
Board suspend this action in light of the Civil Lawsuit for the reason that the Civil Lawsuit,
because it includes a cause of action for trademark infringement related to the Mark and seeks
declaratory relief determining the owner of the Mark, is likely to have a substantial bearing on
the outcome of this proceeding.
MOTION TO SUSPEND OPPOSITION PAGE2
Appendix B, p. 29
B. Conclusion
For these reasons, because of the Civil Lawsuit in which Timarron Owners Association,
Inc. and Timarron College Prep are currently engaged, Timarron Owners Association asks The
Trademark Trial and Appeal Board to suspend this opposition proceeding pending the resolution
ofthe Civil Lawsuit.
DATED: June 12,2013.
MOTION TO SUSPEND OPPOSITION
Respectfully submitted,
WILSON LEGAL GROUP P.C.
By: Is/John T. Wilson
John T. Wilson
State Bar No. 24008284
Kandace D. Walter
State Bar No. 24047068
16610 Dallas Parkway, Suite 2000
Dallas, Texas 75248
(T) 972.248.8080;
(F) 972.248.8088;
ATTORNEYS FOR OPPOSER
TIMARRON OWNERS
ASSOCIATION, INC.
PAGE3
Appendix B, p. 30
CERTIFICATE OF SERVICE
This is to certify that a true and correct copy of the above Motion has been served upon
Opposer, by and through its counsel of record, pursuant to Rules of Federal Civil Procedure on
June 12, 2013.
Mark W. Handley
Handley Law Firm, PLLC
P.O. Box 97
Grapevine, Texas 76099-0097
Facsimile: (972) 518-1777
MOTION TO SUSPEND OPPOSITION
Warren V. Norred
200 E. Abram
Suite 300
Arlington, TX 76001
Facsimile: (817) 549-0161
Is/John T. Wilson
John T. Wilson
PAGE4
Appendix B, p. 31
"EXHIBIT 1"
Appendix B, p. 32
TIMARRON OWNERS
ASSOCIATION, INC.
Plaintiff,
v.
BARBARA LOUISE MORTON D/B/A
TIMARRON COLLEGE PREP
Defendants.











IN THE DISTRICT COURT
\'--"
C\\0. JUDICIAL DISTRICT
TARRANT COUNTY, TEXAS
PLAINTIFF TIMARRON OWNERS ASSOCIATION, INC.'S ORIGINAL PETITION
TO THE HONORABLE JUDGE OF SAID COURT:
COMES NOW Plaintiff TIMARRON OWNERS ASSOCIATION, INC. and files this
Original Petition against BARBARA LOUISE MORTON DIBIA TIMARRON COLLEGE
PREP (the "Petition"), and in support of said Petition avers the following:
I. DISCOVERY CONTROL PLAN
1. Plaintiff intends to conduct discovery under Level2 of the TEXAS RULE OF CNrr..
PROCEDURE 190.3/190.4.
II. VENUE AND JURISDICTION
2. Plaintiff TIMARRON OWNERS ASSOCIATION, INC. ("TIMARRON") is a
Texas corporation whose principal place of business is located in Tarrant County, Texas.
3. Defendant BARBARA LOUISE MORTON D/B/A TIMARRON COLLEGE
PREP ("MORTON") is an individual who resides and may be served at 476 Cherokee Ct. S.,
Keller, Texas 76248 or wherever else she may be found.
.. . .._ ~
PLAINTIFF TIMARRON OWNER'S ASSOCIATION ORIGINAL PETITION
Appendix B, p. 33
4. This Court has jurisdiction over this matter because the amount in controversy is
within the jurisdictional limits of the Court.
5. Venue is appropriate in Tarrant County in that all or substantially all of the acts
and/or omissions that form the basis of this suit occurred in Tarrant County, Texas.
III. FACTUAL BACKGROUND
6. TIMARRON is the owner of a trademark, specifically, Texas Trademark
Registration No. 800205842 (the "Mark"). A true and correct copy of the Texas Secretary of
State' s Record for the Mark and the Assignment of said Mark to TIMARRON is attached hereto
as "Exhibit A" and is incorporated by reference as if fully set forth herein.
7. The Mark was first used in commerce as early as the Declaration of Covenants,
Conditions, and Restrictions for TIMARRON, dated May 15, 1992.
8. MORTON has been using the Mark in connection with its promotions,
advertisements, websites, and operations without TIMARRON' s authorization or permission.
9. MORTON' s unauthorized use of the Mark has caused consumers to erroneously
believe that MORTON is sponsored by, connected to, and/or otherwise affiliated with
TIMARRON.
10. MORTON's unauthorized use of the Mark has caused consumers to erroneously
believe that MORTON's goods and/or services are sponsored by, connected to, and/or otherwise
affiliated with TIMARRON.
11. MORTON' s unauthorized use of the Mark has caused consumers to erroneously
believe that MORTON's websites, including, but not limited to, www.timarroncollegeprep.com,
are sponsored by, connected to, and/or otherwise affiliated with TIMARRON.
PLAINTIFF TIMARRON OWNER'S ASSOCIATION ORIGINAL PETITION PAGE2
Appendix B, p. 34
12. MORTON has purposely used the Mark to cause confusion in the marketplace
with regard to the sponsorship, approval, and/or affiliation of MORTON's goods and/or services
with TIMARRON.
13. MORTON has intentionally and fraudulently held her goods and/or services out
to be the products of TIMARRON.
14. MORTON's promotion, advertisement, and/or operation under the Mark has
tortuously interfered with TIMARRON's ability to consummate sales with customers who are
attempting to purchase products sponsored by, approved by, and/or otherwise connected with
TIMARRON.
15. On or about January 18, 201:2, counsel for TIMARRON issued a cease and desist
letter to MORTON directing her to stop her promotion, advertisement, and operation under the
Mark and any other unauthorized use of the Mark (the "C&D Letter"). A true and correct copy
of said C&D Letter is attached hereto as "Exhibit B" and is incorporated by reference as if fully
set forth herein.
16. Despite receiving the C&D Letter, MORTON has continued her unauthorized use
of the Mark and sale of goods bearing the Mark.
17. MORTON has sold goods bearing the Mark and/or promoted herself, advertised
herself, and/or operated under the Mark in the State of Texas, including, but not limited to, in
Tarrant County.
IV. SUMMARY OF CAUSES OF ACTION
18. This suit is for the following causes of action against MORTON: i) Trademark
Infringement Under TEXAS BUSINESS AND COMMERCE CODE 16.26; ii) Unjust Enrichment; iii)
Tortious Interference with Prospective Business Relations; and, iv) Unfair Competition.
PLAINTIFF T IMARRON OWNER'S ASSOCIATION ORIGINAL PETITION PAGE3
Appendix B, p. 35
V. CAUSES OF ACTION
19. TIMARRON hereby reincorporates paragraphs 1 through 18 in accordance with
TEXAS RULE OF CIVIL PROCEDURE 58.
TRADEMARK INFRINGEMENT UNDER TEXAS BUSINESS AND COMMERCE CODE 16.26
20. TIMARRON owns the Mark, registered under Chapter 16 of the TEXAS BUSINESS
AND COMMERCE CODE.
21. MORTON, without TIMARRON's consent, authorization, or permission, used
and continues to use the Mark and/or a colorable imitation of the Mark in connection with the
selling and offering for sale of goods and/or services in the State of Texas when such use was
and is likely to deceive and/or cause confusion and/or mistake as to the source or origin of said
goods.
22. TIMARRON has been damaged by MORTON' s unauthorized use of the Mark.
23. Pursuant to TBCC 16.26(c), TIMARRON is entitled to have MORTON enjoined
from using the Mark in the State of Texas.
24. Pursuant to TBCC 16.26(d), TIMARRON is entitled to recover all damages
caused by MORTON's unauthorized use of the Mark since at least the date ofthe C&D Letter,
when MORTON had constructive notice ofTIMARRON's ownership of the Mark.
UNJUST ENRICHMENT
25. TIMARRON owns the Mark, constituting a valuable, proprietary resource.
26. MORTON unlawfully misappropriated and traded upon the Mark for use in her
own proprietary endeavors.
27. MORTON has been unjustly enriched by her unlawful misappropriation and use
ofthe Mark, to TIMARRON's detriment.
PLAINTIFF TIMARRON OWNER'S ASSOCJATION ORIGlNALPETJTlON PAGE4
Appendix B, p. 36
28. TIMARRON is entitled to recover all valuable considerations MORTON has
gained by her unlawful misappropriation and use of the Mark.
TORTIOUS INTERFERENCE WITH PROSPECTIVE BUSINESS RELATIONS
29. TIMARRON, through its use of its Mark, was reasonably likely to enter in
business relations with consumers.
30. MORTON, by her continued, unauthorized use of the Mark after recei ving notice
of TIMARRON' s ownership thereof through the C&D Letter, intentionally interfered with
TIMARRON' s prospective business relations by diluting the Mark and creating confusion about
the Mark in the market.
31 . MORTON's unauthorized use of the Mark was and is tortious and unlawful.
32. MORTON' s tortious interference has caused injury to TIMARRON by diluting
the Mark and creating confusion about the Mark in the market, directly and detrimentally
impacting TIMARRON's ability to consummate business relations with consumers.
UNFAIR COMPETITION
33. TIMARRON owns the Mark, constituting a valuable trade resource.
34. TIMARRON has developed goodwill associated with the Mark
35. MORTON unlawfully misappropriated the Mark and traded upon the goodwill
developed therein in furtherance of her own commercial goals and to the detriment of
TIMARRON' s commercial endeavors.
36. MORTON's unlawful use ofthe Mark has caused TIMARRON injury.
VI. DEMAND FOR ACCOUNTING, REQUEST FOR TURN O V ~ AND REQUEST
TO HOLD HARMLESS
31. Pursuant to TBCC 16.26, TIMARRON demands an accounting of MORTON's
sales resulting from MORTON's unlawful use of the Mark and/or sales involving MORTON's
PLAINTIFF TIMARRON OWNER'S ASSOCIATION ORIGINAL PETITION PAGES
Appendix B, p. 37
goods bearing the Mark and/or services sold under the Mark. TIMARRON requests that, after
such accounting, all MORTON's profits from such sales, particularly those sales occurring after
the C&D Letter had been received and notice ofTIMARRON's ownership of the Mark given, be
paid to TIMARRON. TIMARRON further requests all goods and advertisements bearing the
Mark in MORTON's possession be turned over to TIMARRON and/ or destroyed as the Court
deems proper.
32. TIMARRON requests the Court order MORTON to indemnifY and hold harmless
TIMARRON against any and all possible claims of third parties arising out of the sale, offer of
sale, distribution or use of MORTON's goods bearing the Mark or that bear confusingly similar
designs to the Mark or otherwise based on or incorporating TIMARRON' s Mark. TJMARRON
further requests the Court order MORTON to identifY vendors or resellers used to produce or sell
their infiinging goods.
VII. APPLICATION FOR TEMPORARY RESTRAINING ORDER
33. Because of MORTON's unauthorized use of the Mark, MORTON has
undermined TIMARRON's business by selling goods and/or products that bear the Mark and/or
confusingly similar designs and/or by falsely representing the goods produced and/or sold by
MORTON have the sponsorship ofTIMARRON.
34. MORTON's sale of goods and/or products bearing the Mark and/or confusingly
similar designs have caused and continue to cause TIMARRON irreparable harm for which there
is no adequate remedy at law.
35. Since TIMARRON can readily establish itself as owner of the Mark,
TIMARRON is likely to succeed on the merits of the case prohibiting MORTON's unauthorized
use of the Mark and confusingly similar designs.
PLAINTIFF TIMARRON OWNER'S ASSOCIATION ORIGINAL PETITION PAGE6
Appendix B, p. 38
36. The injury faced by TIMARRON outweighs the injury that would be sustained by
enjoining MORTON from her unauthorized use of the Mark and related stylistic designs.
37. Furthermore, the Court's granting of a temporary restraining order against
MORTON's use of the Mark and confusingly similar designs would not adversely affect public
policy or public interest.
38. TIMARRON respectfully demands that MORTON be restrained from selling any
goods and/or products containing either the Marks and/or confusingly similar designs. If
necessary, TIMARRON is willing to post a bond in order for the Court to issue the temporary
restraining order against MORTON.
VIII. ATTORNEY'S FEES
39. Because of the conduct of MORTON, TIMARRON has been compelled to
engage the services of an attorney to prosecute this action. As a result, TIMARRON is entitled
to recover both jointly and severally from MORTON a reasonable sum for the necessary services
of Wilson Legal Group, P.C. in the preparation and trial of this action and for any appeals related
thereto.
IX. CONDITIONS PRECEDENT
40. All conditions precedent to Plaintiff's causes of action have been performed
and/or have occurred.
X. RULE 194 REQUEST FOR DISCLOSURE
41. Pursuant to Rule 194 of the Texas Rules of Civil Procedure, MORTON is
requested to disclose within fifty (SO) days after service of this request, the information or
material described in Rule 194 of the Texas Rules of Civil Procedure. The originals or copies of
documents and other tangible items requested must be produced for inspection and copying at
PLAINTIFF T IMARRON OWNER'S ASSOCIATION ORIGINAL PETITION PAGE7
Appendix B, p. 39
Wilson Legal Group P.C., 16610 Dallas Parkway, Suite 2000, Dallas, Texas 75248 together with
a written response. Each written response must be preceded by the request to which it applies.
No objection or assertion of work product privilege is permitted to a request under this rule.
XI. PRAYER FOR RELIEF
WHEREFORE, PREMISES CONSIDERED, Plaintiff TIMARRON OWNERS
ASSOCIATION, INC., respectfully requests:
a. That judgment be entered in favor of Plaintiff against Defendant BARBARA
LOUISE MORTON D/B/A TIMARRON COLLEGE PREP for actual damages in
an amount in excess of the minimum jurisdictional limits of the Court as can be
shown;
b. An award of Plaintiffs actual and special damages as pleaded within the
jurisdictional limits of the Court;
c. An award to Plaintiff of Defendant's ill-gotten profits;
d. An award of Plaintiff's court costs in an amount to be determined by the Court;
e. An award of Plaintiff's reasonable and necessary attorneys' fees;
f. That Plaintiff recover pre-judgment and post-judgment interest on all sums
awarded at the highest rate permitted by law; and
g. An award to TIMARRON for such further relief, at law or in equity, to which it is
justly entitled.
PLAINTIFF T!MARRON OWNER'S ASSOCIATION ORIGINAL PETITION PAGES
Appendix B, p. 40
DATED: July 26,2012.
Respectfully submitted,
WILSON LEGAL GROUP P.C.
By: /s/.John T. Wilson
John T. Wilson
State Bar No. 24008284
Kandace D. Walter
State Bar No. 24047068
16610 Dallas Parkway, Suite 2000
Dallas, Texas 75248
(T) 972.248.8080;
(F) 972.248.8088;
ATTORNEYSFORTIMARRON
OWNERS ASSOCIATION, INC.
PLAINTIFF TIMARRON OWNER' S ASSOCIATION ORIGINAL P ETITION PAGE9
Appendix B, p. 41
. .
"EXHIBIT A"
Appendix B, p. 42
TRADEMARK INQUIRY - VIEW TRADEMARK ' . Page 1 of 1
TEXAS SECRETARY of STATE
HOPE ANDRADE
UCC 1 Business Organizations I Trademarks I Notary I Account I HelpfFees I Briefcase I Logout
TRADEMARK INQUIRY -VIEW TRADEMARK
Registration Number:
Status:
Classification:
Word Description: .
Disclaimer:
800205842
Registered
Insurance & Financial:
Class 36
TIMARRON
N/A
Registration Date:
Date of Expiration:
Design Code:
July 18, 2003
July 18, 2013
031702
REGISTRANTS FILING HISTORY CLASSIFICATION
Last Update
May 21.2003
Name
Timarron Owners Association, Inc.
I Return to Search J
l- --- --------- - --
Address
700 Wentwood Drive
Southlake, TX 76092 USA
I
l
__I
https://directsos.state.tx. us/tm _inquiry/tm _inquiry-trademark.asp?spage=reg&:Sregistratio. .. 7/17/2012
Appendix B, p. 43
ASSIGNMENT OF
OF A TRADEMARK/SERVICE MARK
FILED
In the Office of the
Secretary of State of Texas
To: Office of the Secretary of State
Corporations Section
P. 0. Box 13697
Austin, Texas 78711-3697
Asillgnor: Westerra Timarron L.P.
Address: 13155 Noel Road-LB54, Suite 700
City: Dallas State:
Registration No. 800205842
.
Timarron Owners Association, Jnr .
700 Wentwood Drive
Southlake, Texas 76092
Texas
.FEB 16 2010
Corporations Section
Zip: 75240
"Date of-Registration: May 21, 2003
Except as hereinafter provided, Assignor assigns to Assignee all right, title and interest in
to tbe above referenced mark and its registratio-.., together with the good will of the
business with whicb the mark is used, or that part of good will connected with the use
of, and symbolized by, the mark. Assignor reserves the to continue to this mark
in its name and for the limited purpose of marketing, adver!lsement;
djstribution, lease or sale of Assignor's products and services.
Date: \-8 "'l
0
f/misc/assignmentoftegistrationoftradcmilrk. westerra-timarron
.
... J
Appendix B, p. 44
"EXHIBIT B"
Appendix B, p. 45
WILSON LEGAL GROUP P.C.
16610 Dallas Parlrway
Suite 2000
Dallas, Texas 75248
Telephone 972.248.8080
Facsimile 972.248.8088
Attomeys & Counselors at Law
John T. Wilson
E-mail: john@wilsonlegalgroup.com
Barbara Morton
Timan-on College Prep
630 E. Southlake Blvd., Suite 111
Southlake, Texas 76092
Barbara Morton
Timarron College Prep
251 E. Southlake Blvd., Suite 110
Southlake, Texas 76092
Barbara Morton
Timarron College Prep
251 S. Main Street, Suite 101
KelJer, Texas 76248
-v.w.w.ilsonlegalgroup.com
January 18, 2012
(Via Certified Mail, Return Receipt
Requested No. 7010-1870-0001-6973-3232
and Regular First Class Mail)
(Via Certified Mail, Return Receipt
Requested No. 7010-1870-0001-6973-3249
and Regular First Class Mail)
(Via Certified Mail, Return Receipt
Requested No. 7010-2000-0002-7331-9860
and Regular First Class Mail)
Re: CEASE AND DESIST NOTICE
To Whom it May Concern:
Please be advised that this firm represents Timarron Owners Association, Inc.
(hereinafter the "HOA"). As you may know, "Timarron" (hereinafter the "Mark") is a state
registered trademark (Registration No. 800205842) of the HOA and the use of the Mark, without
our client's express consent, is a violation of state and federal trademark laws under which the
Mark is protected.
Your promotion, advertisement, and operation under the Mark constitutes an
infringement of the HOA's common law, state, and federal trademark rights. Consumers,
retailers, wholesalers, real estate professionals, and the public at large will be and probably have
already been misled into believing that you are affiliated with our client, that you are approved,
sponsored or supplied by it, or the reverse.
ACCORDINGLY, TAKE NOTICE THAT YOUR ARE HEREBY NOTIFIED TO
IMMEDIATELY CEASE AND DESIST THE USE OF THE MARK AND ALL
CONFUSINGLY SIMILAR VARIA TJONS OF THE MARK.
Appendix B, p. 46
Cease and Desist Notice
January 18, 2012
Page 2 of2
Under the circumstances, we demand that you immediately cease and desist all further
promotion, advertisement, and operation under the name Timarron or any variation of the Mark.
In particular, we demand that you do not display any signage, distribute any literature,
promotional items, or in any other way advertise the name Tirnarron in print or on the internet.
We wish to receive your assurances in writing by noon on January 25, 2012, that you will
comply with the above cease and desist demand. If you fail to advise us by then that you will not
promote, advertise, or operate your business under the name Timarron, or any variations of the
Mark, our client shall, without further notice to you, take such steps as may be necessary to
assert its statutory rights to recover profits, damages, and costs thereof: attorney's fees, and
otherwise to protect its interests.
This is a serious matter that requires your immediate attention. I urge you to handle this
matter accordingly.
cc: Via Electronic Mail
Client
Sincerely yours,
WILSON LEGAL GROUP P.C .
.. ~ ~ : : :
Appendix B, p. 47
"EXHIBIT 2"
Appendix B, p. 48
Cause No. 096-260449-12
TIMARRON OWNERS ASSOC., INC.
Plaintiff,
IN THE DISTRICT COURT
v.








96TH JUDICIAL DISTRICT
BARBARA LOUISE MORTON D/B/A/
TIMARRON COLLEGE PREP
Defendant.
TARRANT COUNTY, TEXAS
DEFENDANT MORTON'S ORIGINAL ANSWER, COUNTERCLAIMS, and
MOTION TO TRANSFER
NOW COMES Defendant BARBARA LOUIS MORTON, files this Original Answer in
the above-styled and numbered cause, denying Plaintiffs claims, asking the Court for a
declaration that Defendant is not infringing any common law trademark claimed by Plaintiff, and
once the declaration is established, a transfer to Travis County District Court so that Defendant
may seek cancellation of the Texas-registered trademark of TIMARRON OWNERS
ASSOCIATION, INC, and would show the following:
I. PARTY VERIFICATION
I. Defendant/Counter-Plaintiff, BARBARA MORTON, is an individual residing in Tarrant
County, Texas, and may be contacted through her attorney of record, Warren Norred.
2. PlaintiffTIMARRON OWNERS ASSOCIATION, INC. has already appeared in this suit.
II. JURISDICTION AND VENUE
3. The subject matter in controversy is within the jurisdictional limits of this court.
4. Plaintiff has established venue in Tarrant County, so venue for the counterclaims is also
properly in Tarrant County under TEX. C!V. PRAC. & REM. CODE 15.062(a).
5. Counterclaims against Plaintiff may require transfer to Travis County if the suit progresses to
an action on the merits of those claims.
96-260449-12, Defendant's Original Answer & Counterclaims Page 1
Appendix B, p. 49
Ill. GENERAL DENIAL
6. Defendant denies each and every allegation of Plaintiffs Original Petition.
IV. COUNTERCLAIM FOR DECLARATORY JUDGMENT
7. Defendant requests that this Court issue declaratory judgment that it has not infringed any
trademark belonging to Plaintiff. pursuant to the Texas Uniform Declaratory Judgments Act,
Texas Civil Practice and Remedies Code, Chapter 37, in that:
a. Defendant's trademark has been active since 2008, during which time it has provided
tutoring services. which falls under trademark International Class 41.
b. Plaintiffs Texas-registered trademark, provided in its petition, is for insurance and
financial services, falling under trademark International Class 36.
c. Plaintiff has based its case under an incorrect theory that that every mark that includes
the word "Timarron" infringes Plaintiffs mark. However. there are nearly 40
busi nesses in Texas that use "Timarron" or a similar mark, including a home owner's
association in San Antonio, the Tamaron Property Owners Association. which has
existed and used the mark for seven years prior to Plaintiffs Texas registration.
V. COUNTERCLAIM FOR DISCLAIMER OR CANCELLATION
8. Defendant requests that this Court issue an order cancelling Plaintiffs trademarks, as
Plaintiff does not appear to provide services that would appropriately fall under Class 36,
and should be cancelled pursuant to TEX. Bus. & COM. CODE 16.064(4)(D) [registered
mark was obtained fraudulently].
VI. COUNTERCLAIM FOR
TORTIOUS INTERFERENCE WITH BUSINESS RELATIONS
9. Defendant has suffered damages for Plaintiffs agents actions that have interfered in
96-260449-12, Defendant's Original Answer & Counterclaims Page 2
Appendix B, p. 50
potential leases and other contracts, and caused Defendant to suffer malicious and wanton
interference, disturbance, or annoyance in her business dealings.
VII. MOTION TO TRANSFER
10. In accordance with TEX. Bus. & COM. CODE 16.106 (20 12), this action must be
transferred to Travis County, as it includes an action to cancel a trademark. Defendant is
content to allow discovery and time for a potential settlement before a hearing on this
motion to transfer in the hope that the issue might be settled before hearing and court be
required to order on this issue.
VIII. ATTORNEY FEES
11. In accordance with TEX. CIV. PRAC. & REM. CODE 37, Defendant requests attorney fees.
IX. PRAYER
12. Defendant prays the CoUI1, after notice and hearing or t rial, enters declaratory judgment
in favor of Defendant, cancel or amend Third-Party Defendant's registered trademark,
awards Defendant the costs of court, attorney's fees, and such further relief as Defendant
may be entitled to in law or in equity.
B y ~ ~ ~ ~ ~ ~ ~ ~ ~ ~ ~ ~
Warren V. Norred, Texas Bar
200 E. Abram, Suite 300, Arlington, TX 760 10
Tel. (8 17) 704-3984, Fax. (8 17) 549-0161
96-260449-12, Defendant's Original Answer & Counterclaims Page 3
Appendix B, p. 51
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
ESTTA Tracking number: ESTTA507527
Filing date: 11/27/2012
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 91207557
Party Defendant
Morton, Barbara
Correspondence
Address
MARK W HANDLEY
HANDLEY LAW FIRM, PLLC
PO BOX 97
GRAPEVINE, TX 76099-0097
docket@iplaw.pro;mail@txip.us
Submission Answer
Filer's Name Warren V. Norred
Filer's e-mail wnorred@norredlaw.com
Signature /Warren V. Norred/
Date 11/27/2012
Attachments Response to Notice of Opposition FILED.pdf ( 4 pages )(354456 bytes )
Appendix B, p. 52
Applicant's Original Answer to Notice of Opposition Page 1

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

TIMARRON OWNERS ASSOCIATION, INC
Opposer Opposition No: 91186534

v. Mark: TIMARRON COLLEGE PREP

TIMARRON COLLEGE PREP In re Trademark No: 85/516680
Applicant.


APPLICANT'S ORIGINAL ANSWER TO NOTICE OF OPPOSITION
WITH AFFIRMATIVE DEFENSES

Applicant, TIMARRON OWNERS ASSOCIATION, INC., by its attorney, hereby
submits its Original Answer to the Notice of Opposition filed by Opposer, TIMARRON
COLLEGE PREP, as follows:
1. Applicant admits the allegation in paragraph 1.
2. Opposer includes multiple allegations in paragraph 2. Applicant denies that Opposer has
superior rights to TIMARRON, as at least 20 other commercial entities in or around the
Southlake area that have been using TIMARRON in their name for many years, and that
no single party can claim an exclusive use of the mark TIMARRON. Applicant is without
knowledge or information sufficient to form a belief as to the other allegations of
Paragraph 2 and therefore denies the same.
3. Applicant denies the allegations in paragraph 3, as applicant is aware of at least 20 other
commercial entities in the Dallas-Fort Worth area that use TIMARRON as a common
law or state-registered mark. Even the USPTO found no difficulty in issuing an
allowance for "TIMARRON CAPITAL, INC." as a standard character mark in 2006.
4. Applicant is without knowledge or information sufficient to form a belief as to the
allegations of Paragraph 4 and therefore denies the same, except that Applicant is aware
Appendix B, p. 53
that Opposer has used "TIMARRON OWNERS ASSOCIATION" and abbreviations of
that same mark has been used, such as "TIMARRON HOA", just as other entities in the
Southlake and DFW area have done for many years.
5. Opposer includes multiple allegations in paragraph 2. Applicant denies the allegations in
paragraph 5, if that paragraph is intended to be a full rendition of the communications
between the parties. Applicant has also filed counter-claims in the district court to cancel
Applicant's state registration. Applicant does not recall a "request" to cease using
TIMARRON made by Opposer, and thus denies the allegations. Applicant also notes that
Opposer has recently applied for registration of several versions of TIMARRON, to
which Applicant will soon file an opposition.
6. Applicant denies the allegation in paragraph 6.
7. Applicant denies the allegation in paragraph 7. Consumers are more sophisticated than to
believe that the disparate 20 businesses in the area are affiliated, and are aware that
Timarron is a common name used by commercial entities in and around Southlake, TX.
Ground for Opposition - Trademark Act 2(d), Priority and Likelihood of Confusion

8. The mark TIMARRON is weak. There is no reason to believe that consumers will
confuse TIMARRON OWNER'S ASSOCIATION with TIMARRON COLLEGE PREP,
as consumers are already aware of these two businesses are in operation in the area, along
with many others, and would not see yet another business in the area using the word
TIMARRON as connected to Opposer. See the following as existing businesses which
are currently in operation near Opposer:
a. "The Courtyard at Timarron" is a current business in Southlake, TX.
b. "The Villages at Timarron" is a current business in Southlake, TX.
c. " Timarron Family Medicine, PA" is a current business in Southlake, TX.
d. "Timarron at Creekside Park" is a current business in Southlake, TX.
Appendix B, p. 54
Applicant's Original Answer to Notice of Opposition Page 3

e. "Timarron Financial Services, LLC" is a current business in Southlake, TX.
f. "Timarron Partners, Inc." is a current business in Grapevine, TX.
g. "Timmaron LLC" is a current business in Richardson, TX.
h. "Timarron Capital Inc" is a current business in Irving, TX.
i. "Timarron Custom Homes, Inc." is a current business in Keller, TX.
j. "Timarron Venture, Ltd." is a current business in Dallas, TX.
k. "Timarron Venture One, L.C." is a current business in Dallas, TX.
l. "Timarron Shopping Center, L.P." is a current business in Dallas, TX.
m. "Timarron Mortgage Group Inc." is a current business in Dallas, TX.
n. "Timarron Land Corporation" is a current business in Mesquite, TX.
o. "Timarron Skin & Laser" is a current business in Southlake, TX.
p. "Timarron Professional Eye" is a current business in Southlake, TX.
q. "Timarron Golf Club Maintenance" is a current business in Southlake, TX.
r. "Timarron Family Medicine" is a current business in Southlake, TX.
s. "Village at Timarron 4120" is a current business in Southlake, TX.
t. "Timarron Tiger Sharks" is a current business in Southlake, TX.

9. No similarity of Goods - Opposer's claim that consumer confusion might result is wholly
in error, as the services provided by TIMARRON OWNER'S ASSOCIATION is not
remotely connected to the educational services provided by Applicant.
Affirmative Defense of Laches

10. Applicant has been using TIMARRON as part of her mark for years, along with many
other entities in the area.
11. Members of Opposer have employed Applicant's mentoring services for years, so
Opposer has been fully aware of Applicant's use of TIMARRON in her mark.
12. The delay in filing suit was not reasonable or excusable. Though the Lanham Act has no
Statute of Limitations, federal courts often look to state law and apply the doctrine of
laches accordingly; the Texas Deceptive Trade Practices Act has a statute of limitations
of two years, which supports a finding of laches in this case. Opposer cannot just lie in
wait while Applicant builds her business and then try to force a business name change.


Appendix B, p. 55
Affirmative Defense of Dilution

13. The word "TIMARRON" is used by many businesses in the Southlake, TX area. In the
minds of consumers, the word "TIMARRON" is not attached to one particular business.
14. The word "TIMARRON" is so diluted that no single entity should be able to have
exclusive rights to the word.
15. Opposer's claim to a common law trademark is limited to its full name "TIMARRON
OWNER'S ASSOCIATION", by which it is known.
Affirmative Defense - Opposer has no valid mark.

16. The State of Texas has given a registration to Opposer for TIMARRON, which Applicant
has challenged in the state lawsuit, and which Applicant expects to result in cancellation.
Prayer

WHEREFORE, Applicant respectfully requests that the Notice of Opposition be
rejected and that Applicant's mark be allowed to proceed to registration.
Respectfully submitted,

By: /Warren V. Norred/
Warren V. Norred, Texas Bar No. 24045094
200 E. Abram, suite 300, Arlington, TX 76001
Tel. (817) 704-3984, Fax. (817) 549-0161
Attorney for PLAINTIFFs

CERTIFICATE OF SERVICE - I certify that on November 27, 2012, a true and correct copy
of Defendant's Original Answer above served by fax to John Wilson at 972.248.8088.



Warren V. Norred

Appendix B, p. 56
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
ESTTA Tracking number: ESTTA500768
Filing date: 10/18/2012
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Notice of Opposition
Notice is hereby given that the following party opposes registration of the indicated application.
Opposer Information
Name Timarron Owners Association, Inc.
Entity corporation Citizenship Texas
Address 700 Wentwood Drive
Southlake, TX 76092
UNITED STATES
Attorney
information
John T. Wilson
Wilson Legal Group, P.C.
16610 Dallas Parkway 2000
Dallas, TX 75248
UNITED STATES
john@wilsonlegalgroup.com, kandace@wilsonlegalgroup.com,
sul@wilsonlegalgroup.com, ana@wilsonlegalgroup.com Phone:9722488080
Applicant Information
Application No 85516680 Publication date 10/16/2012
Opposition Filing
Date
10/18/2012 Opposition
Period Ends
11/15/2012
Applicant Morton, Barbara
630 E. Southlake Blvd., Suite 111
Southlake, TX 76092
UNITED STATES
Goods/Services Affected by Opposition
Class 041. First Use: 2008/05/31 First Use In Commerce: 2008/05/31
All goods and services in the class are opposed, namely: Conducting after school tutoring programs;
Education services, namely, providing tutoring in the field of mathematics, sciences, social studies,
language arts and foreign languages; Education services, namely, providing tutoring in the fields of
curriculum for all educational levels, namely, primary and secondary grades, and college level,
namely, undergraduate, graduate and post-graduate levels; Education services, namely, providing
tutoring in the fields of taking academic entrance examinations and standardized tests; Providing
courses of instruction at the primary and secondary levels, and college levels, namely,
undergraduate, graduate and post-graduate level; Teaching in the field of mathematics, sciences,
social studies, language arts and foreign languages
Grounds for Opposition
Priority and likelihood of confusion Trademark Act section 2(d)
Mark Cited by Opposer as Basis for Opposition
U.S. Application/
Registration No.
NONE Application Date NONE
Appendix B, p. 57
Registration Date NONE
Word Mark TIMARRON
Goods/Services REAL ESTATE MANAGEMENT SERVICES, INSURANCE AND
FINANCIAL
Related
Proceedings
Cause No. 096-260449-12, 96th Judicial District Court, Tarrant County, Texas
Attachments Timarron_Opposition.pdf ( 5 pages )(1363495 bytes )
Certificate of Service
The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
record by First Class Mail on this date.
Signature /John T. Wilson/
Name John T. Wilson
Date 10/18/2012
Appendix B, p. 58
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
In the matter of trademark Serial No.: 85/516680
Mark: TIMARRON COLLEGE PREP
Published in the Official Gazette on October 16, 2012
TIMARRON OWNERS ASSOCIATION, INC
Opposer,
v.
TIMARRON COLLEGE PREP
Applicant.
Opposition No. ____ _ _
NOTICE OF OPPOSITION
Timarron Owners Association, Inc.
Texas Partnership
700 Wentwood Drive
Southlake, Texas 76092
The above-identified Opposer believes that it will be damaged by registration of the mark shown
in the above-identified application and thereby opposes the same.
Barbara Morton dba
Timarron College Prep
630 E. Southlake Boulevard, Suite 111
Southlake, Texas 76092
Timarron Owners Association, Inc., a corporation organized and existing under the laws
of the State of Texas, believes that it will be damaged by registration of the mark shown in
application having Serial No. 85/516680 in International Class 041 (various types of education
services) and hereby opposes the same.
This Notice of Opposition has been timely filed as the thirty (30) day period from the
October 16, 2012 publication date has not yet run.
1
Appendix B, p. 59
As grounds of opposition, it is alleged that:
I.
Applicant seeks to register the word mark TIMARRON COLLEGE PREP as a trademark
for "after school tutoring programs" and "education services" in International Class 041, as
evidenced by the recent trademark application.
II.
Opposer has superior rights in and to "TIMARRON" because its usage of its common
law mark predates Applicant's usage of the mark. Opposer registered its mark as early as 2003
with the State of Texas although Opposer's use of its common law mark began as early as 1991.
Opposer has, since at least 1991, used its common law mark "Timarron Owner's Association,
Inc." in relation to the homeowners association and country club located in Southlake, Texas.
Opposer registered the business entity "Timarron Owners Association, Inc." with the Texas
Secretary of State on July 5, 1991.
III.
By the time Applicant started to use the mark, based on Applicant's first use date of May
31, 2008, Opposer had established seventeen (17) years of good will and name recognition in the
Southlake community through its common law mark. "TIMARRON" is synonymous with
luxury, class, and sophistication due to the work and reputation developed by Opposer.
IV.
Opposer has used the identifier TIMARRON throughout Southlake, Texas and
surrounding suburban communities since 1991. Opposer' s TIMARRON mark is famous in
Southlake. Opposer has developed extremely valuable goodwill in respect to its state registered
TIMARRON by virtue of its efforts, the expenditure of considerable sums for community
2
Appendix B, p. 60
activities, website, and the excellence of the living experience offered by TIMARRON
OWNERS ASSOCIATION.
v.
On December 9, 2011, Opposer sent a letter to TIMARRON COLLEGE PREP informing
Applicant that the use of TIMARRON was infringing on Opposer's State registered mark.
Opposer requested that Applicant cease both the use of the infringing name as well as trading off
of the success of Opposer. Applicant did not respond to the correspondence but proceeded to file
for federal registration on January 13, 2012. On January 18, 2012legal counsel for Opposer sent
a cease and desist letter to Applicant TIMARRON COLLEGE PREP requesting that Applicant
cease using the mark and all confusingly similar variations of the mark. On July 26, 2012,
TIMARRON OWNERS ASSOCIATION filed suit against TIMARRON COLLEGE PREP in
the 96
1
h Judicial District Court of Tarrant County.
VI.
Applicant is trading off of the good will and reputation in the community that Opposer
has spent years building. Consumers have come to expect the high standards from all businesses
and organizations associated with TIMARRON OWNERS ASSOCIATION. The expectation
for excellence stems from the reputation developed by TIMARRON OWNERS ASSOCIATION.
VII.
Opposer's common law mark and registered mark and Applicant' s proposed mark are
confusingly similar due to their use of the term "TIMARRON". Consumers will easily and
frequently assume an affiliation between the marks. Since Applicant's proposed mark will be
available in the same community and same trade channels as Opposer's marks, there is a
substantial likelihood that the marks will be confused therewith and mistaken therefore, and will
3
Appendix B, p. 61
lead to deception or mistakes as to the origin of Applicant's "TIMARRON." There is a
significant possibility that consumers will assume that TIMARRON COLLEGE PREP is
endorsed and/or supported by TIMARRON OWNERS ASSOCIATION.
VIII.
Opposer will suffer harm from the registration of TIMARRON COLLEGE PREP.
Citizens of the Southlake area are undoubtedly associating the mark of TIMARRON COLLEGE
PREP with TIMARRON OWNERS ASSOCIATION. TIMARRON OWNERS ASSOCIATION
has been well known in the community since at least 1991 while TIMARRON COLLEGE PREP
has allegedly been in the area since 2008. TIMARRON COLLEGE PREP is benefiting from and
trading off of the good will and reputation that TIMARRON OWNERS ASSOCIATION has
established over the past twenty-one (21) years. Undoubtedly, customers of TIMARRON
COLLEGE PREP are under the impression that TIMARRON COLLEGE PREP is associated
with the TIMARRON OWNERS ASSOCIATION and Timarron Country Club and other luxury
brands in the Southlake area.
VIII.
Furthermore, any defect, objection, fault or dissatisfactory services rendered by Applicant
would necessarily reflect poorly upon the TIMARRON OWNERS ASSOCIATION and
seriously injure the reputation which the Opposer has established with its residents and business
partners.
IX.
If Applicant is granted the registration herein opposed, it would thereby obtain at least a
prima facie exclusive right to the use of its mark. Such registration would be a source of damage
and injury to the Opposer.
4
Appendix B, p. 62
WHEREFORE, the Opposer TIMARRON OWNERS ASSOCIATION prays that
application Serial No. 85/516680 be rejected, and that the mark therein sought for the goods
therein specified in Class 41 be denied and refused.
Date: October 18, 2012
Respectfully submitted,
Timarron Owners Association
Opposer
Is/ John T. Wilson
John T. Wilson
Kandace D. Walter
Sul Lee
Wilson Legal Group, P.C.
16610 Dallas Parkway, Suite 2000
Dallas, Texas 75248
Telephone: (972) 248-8080
Facsimile: (972) 248-8088
Attorneys for Opposer
CERTIFICATE OF SERVICE
This is to certify that a true and correct copy of the above Opposition has been served
upon opposing counsel on October 18,2012:
Attorney for Plaintiffs,
Mark W. Handley
Handley Law Firm, PLLC
P.O. Box 97
Grapevine, Texas 76099-0097
Facsimile: (972) 518-1777
5
Is/ John T. Wilson
John T. Wilson
Appendix B, p. 63







Mailed: October 18, 2012

Opposition No. 91207557
Serial No. 85516680

MARK W HANDLEY
HANDLEY LAW FIRM, PLLC
PO BOX 97
GRAPEVINE, TX 76099-0097
docket@iplaw.pro;mail@txip.us
Timarron Owners Association, Inc.

v.

Morton, Barbara


John T. Wilson
Wilson Legal Group, P.C.
16610 Dallas Parkway2000
Dallas, TX 75248
john@wilsonlegalgroup.com, kandace@wilsonlegalgroup.com,
sul@wilsonlegalgroup.com, ana@wilsonlegalgroup.com


ESTTA500768


A notice of opposition to the registration sought by the above-
identified application has been filed. A service copy of the notice of
opposition was forwarded to applicant (defendant) by the opposer
(plaintiff). An electronic version of the notice of opposition is
viewable in the electronic file for this proceeding via the Board's
TTABVUE system: http://ttabvue.uspto.gov/ttabvue/v?qs=91207557.

Proceedings will be conducted in accordance with the Trademark Rules of
Practice, set forth in Title 37, part 2, of the Code of Federal
Regulations ("Trademark Rules"). These rules may be viewed at the
USPTO's trademarks page: http://www.uspto.gov/trademarks/index.jsp. The Board's
main webpage (http://www.uspto.gov/trademarks/process/appeal/index.jsp) includes
information on amendments to the Trademark Rules applicable to Board
proceedings, on Alternative Dispute Resolution (ADR), Frequently Asked
Questions about Board proceedings, and a web link to the Board's manual
of procedure (the TBMP).

Plaintiff must notify the Board when service has been ineffective,
within 10 days of the date of receipt of a returned service copy or the
date on which plaintiff learns that service has been ineffective.
Plaintiff has no subsequent duty to investigate the defendant's
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Appendix B, p. 64
2
whereabouts, but if plaintiff by its own voluntary investigation or
through any other means discovers a newer correspondence address for
the defendant, then such address must be provided to the Board.
Likewise, if by voluntary investigation or other means the plaintiff
discovers information indicating that a different party may have an
interest in defending the case, such information must be provided to
the Board. The Board will then effect service, by publication in the
Official Gazette if necessary. See Trademark Rule 2.118. In
circumstances involving ineffective service or return of defendant's
copy of the Board's institution order, the Board may issue an order
noting the proper defendant and address to be used for serving that
party.

Defendant's ANSWER IS DUE FORTY DAYS after the mailing date of this
order. (See Patent and Trademark Rule 1.7 for expiration of this or
any deadline falling on a Saturday, Sunday or federal holiday.) Other
deadlines the parties must docket or calendar are either set forth
below (if you are reading a mailed paper copy of this order) or are
included in the electronic copy of this institution order viewable in
the Board's TTABVUE system at the following web address:
http://ttabvue.uspto.gov/ttabvue/.

Defendant's answer and any other filing made by any party must include
proof of service. See Trademark Rule 2.119. If they agree to, the
parties may utilize electronic means, e.g., e-mail or fax, during the
proceeding for forwarding of service copies. See Trademark Rule
2.119(b)(6).

The parties also are referred in particular to Trademark Rule 2.126,
which pertains to the form of submissions. Paper submissions,
including but not limited to exhibits and transcripts of depositions,
not filed in accordance with Trademark Rule 2.126 may not be given
consideration or entered into the case file.



As noted in the schedule of dates for this case, the parties are
required to have a conference to discuss: (1) the nature of and basis
for their respective claims and defenses, (2) the possibility of
Time to Answer 11/27/2012
Deadline for Discovery Conference 12/27/2012
Discovery Opens 12/27/2012
Initial Disclosures Due 1/26/2013
Expert Disclosures Due 5/26/2013
Discovery Closes 6/25/2013
Plaintiff's Pretrial Disclosures 8/9/2013
Plaintiff's 30-day Trial Period Ends 9/23/2013
Defendant's Pretrial Disclosures 10/8/2013
Defendant's 30-day Trial Period Ends 11/22/2013
Plaintiff's Rebuttal Disclosures 12/7/2013
Plaintiff's 15-day Rebuttal Period Ends 1/6/2014
Appendix B, p. 65
3
settling the case or at least narrowing the scope of claims or
defenses, and (3) arrangements relating to disclosures, discovery and
introduction of evidence at trial, should the parties not agree to
settle the case. See Trademark Rule 2.120(a)(2). Discussion of the
first two of these three subjects should include a discussion of
whether the parties wish to seek mediation, arbitration or some other
means for resolving their dispute. Discussion of the third subject
should include a discussion of whether the Board's Accelerated Case
Resolution (ACR) process may be a more efficient and economical means
of trying the involved claims and defenses. Information on the ACR
process is available at the Board's main webpage. Finally, if the
parties choose to proceed with the disclosure, discovery and trial
procedures that govern this case and which are set out in the Trademark
Rules and Federal Rules of Civil Procedure, then they must discuss
whether to alter or amend any such procedures, and whether to alter or
amend the Standard Protective Order (further discussed below).
Discussion of alterations or amendments of otherwise prescribed
procedures can include discussion of limitations on disclosures or
discovery, willingness to enter into stipulations of fact, and
willingness to enter into stipulations regarding more efficient options
for introducing at trial information or material obtained through
disclosures or discovery.

The parties are required to conference in person, by telephone, or by
any other means on which they may agree. A Board interlocutory
attorney or administrative trademark judge will participate in the
conference, upon request of any party, provided that such participation
is requested no later than ten (10) days prior to the deadline for the
conference. See Trademark Rule 2.120(a)(2). The request for Board
participation must be made through the Electronic System for Trademark
Trials and Appeals (ESTTA) or by telephone call to the interlocutory
attorney assigned to the case, whose name can be found by referencing
the TTABVUE record for this case at http://ttabvue.uspto.gov/ttabvue/. The
parties should contact the assigned interlocutory attorney or file a
request for Board participation through ESTTA only after the parties
have agreed on possible dates and times for their conference.
Subsequent participation of a Board attorney or judge in the conference
will be by telephone and the parties shall place the call at the agreed
date and time, in the absence of other arrangements made with the
assigned interlocutory attorney.

The Board's Standard Protective Order is applicable to this case, but
the parties may agree to supplement that standard order or substitute a
protective agreement of their choosing, subject to approval by the
Board. The standard order is available for viewing at:
http://www.uspto.gov/trademarks/process/appeal/guidelines/stndagmnt.jsp. Any party
without access to the web may request a hard copy of the standard order
from the Board. The standard order does not automatically protect a
party's confidential information and its provisions must be utilized as
needed by the parties. See Trademark Rule 2.116(g).

Information about the discovery phase of the Board proceeding is
available in chapter 400 of the TBMP. By virtue of amendments to the
Trademark Rules effective November 1, 2007, the initial disclosures and
expert disclosures scheduled during the discovery phase are required
only in cases commenced on or after that date. The TBMP has not yet
been amended to include information on these disclosures and the
Appendix B, p. 66
4
parties are referred to the August 1, 2007 Notice of Final Rulemaking
(72 Fed. Reg. 42242) posted on the Board's webpage. The deadlines for
pretrial disclosures included in the trial phase of the schedule for
this case also resulted from the referenced amendments to the Trademark
Rules, and also are discussed in the Notice of Final Rulemaking.

The parties must note that the Board allows them to utilize telephone
conferences to discuss or resolve a wide range of interlocutory matters
that may arise during this case. In addition, the assigned
interlocutory attorney has discretion to require the parties to
participate in a telephone conference to resolve matters of concern to
the Board. See TBMP 502.06(a) (2d ed. rev. 2004).

The TBMP includes information on the introduction of evidence during
the trial phase of the case, including by notice of reliance and by
taking of testimony from witnesses. See TBMP 703 and 704. Any
notice of reliance must be filed during the filing party's assigned
testimony period, with a copy served on all other parties. Any
testimony of a witness must be both noticed and taken during the
party's testimony period. A party that has taken testimony must serve
on any adverse party a copy of the transcript of such testimony,
together with copies of any exhibits introduced during the testimony,
within thirty (30) days after the completion of the testimony
deposition. See Trademark Rule 2.125.

Briefs shall be filed in accordance with Trademark Rules 2.128(a) and
(b). An oral hearing after briefing is not required but will be
scheduled upon request of any party, as provided by Trademark Rule
2.129.

If the parties to this proceeding are (or during the pendency of this
proceeding become) parties in another Board proceeding or a civil
action involving related marks or other issues of law or fact which
overlap with this case, they shall notify the Board immediately, so
that the Board can consider whether consolidation or suspension of
proceedings is appropriate.

ESTTA NOTE: For faster handling of all papers the parties need to file
with the Board, the Board strongly encourages use of electronic filing
through the Electronic System for Trademark Trials and Appeals (ESTTA).
Various electronic filing forms, some of which may be used as is, and
others which may require attachments, are available at http://estta.uspto.gov.

Appendix B, p. 67