M1 Holdings Inc. v. Members 1st Federal Credit Union
| M1 Holdings Inc. |
| Members 1st Federal Credit Union |
| Lincoln Savings Bank |
| 1:2022cv01162 |
| March 4, 2022 |
| US District Court for the Northern District of Illinois |
| Robert W Gettleman |
| Franklin U Valderrama |
| Trademark |
| 15 U.S.C. § 1051 Trademark Infringement |
| Plaintiff |
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Filing 30
RESPONSE by M1 Holdings Inc.in Opposition to MOTION by Counter Claimant Members 1st Federal Credit Union, Defendant Members 1st Federal Credit Union for preliminary injunction #13 with Corrected Exhibits (Attachments: #1 Exhibit A - USPTO Record Serial No. 76525054, #2 Exhibit B - 2004 Response to Office Action 76525054, #3 Exhibit C - The Wayback Machine - 2003 Capture Texas M1st Logo, #4 Exhibit D - Members M1st Texas Screen Capture, #5 Exhibit E - USPTO Record, Reg. No. 4145277, #6 Exhibit F - Cardworks, Inc. Petition for Cancellation, #7 Exhibit G - Cardworks, Inc. v. M1st Answer to Petition for Cancellation, #8 Exhibit H - USPTO Record, Serial No. 88639307, #9 Exhibit I - Excerpt of Members 1st Office Action 88639307, #10 Exhibit J - Members 1st v. 206 Design, LLC, et al. Complaint, #11 Exhibit K - Newsroom _ Members 1st Federal Credit Union, #12 Exhibit L - Dec 2, 2019 Facebook webpage, #13 Exhibit M - Correspondence from M. Scott, #14 Exhibit N - Excerpt of 1st Definition & Meaning - Merriam-Webster, #15 Exhibit O - Members 1st 2021 Annual Report, #16 Exhibit P - M1 Blog webpage, #17 Exhibit Q - Excerpt of One Definition & Meaning - Merriam-Webster, #18 Exhibit R - The Federal Reserve article - Money Stock Measures - H.6 Release, #19 Exhibit S - Declaration of Brian Barnes iso Opposition to Motion for Preliminary Injunction (executed 4.27.22))(Albritton, Douglas)
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Filing 29
RESPONSE by Lincoln Savings Bankin Opposition to MOTION by Counter Claimant Members 1st Federal Credit Union, Defendant Members 1st Federal Credit Union for preliminary injunction #13 Lincoln Savings Bank's Joinder in Opposition to Members 1st's Motion for Preliminary Injunction (Albritton, Douglas)
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Filing 28
RESPONSE by M1 Holdings Inc.in Opposition to MOTION by Counter Claimant Members 1st Federal Credit Union, Defendant Members 1st Federal Credit Union for preliminary injunction #13 M1 Holdings Inc.'s Response in Opposition to Members 1st's Motion for Preliminary Injunction (Attachments: #1 Exhibit A - USPTO Record Serial No. 76525054, #2 Exhibit B - 2004 Response to Office Action 76525054, #3 Exhibit C - The Wayback Machine - 2003 Capture Texas M1st Logo, #4 Exhibit D - Members M1st Texas Screen Capture, #5 Exhibit E - USPTO Record, Reg. No. 4145277, #6 Exhibit F - Cardworks, Inc. Petition for Cancellation, #7 Exhibit G - Cardworks, Inc. v. M1st Answer to Petition for Cancellation, #8 Exhibit H - USPTO Record, Serial No. 88639307, #9 Exhibit I - Members 1st Office Action 88639307, #10 Exhibit J - Members 1st v. 206 Design, LLC, et al. Complaint, #11 Exhibit K - Newsroom_Members 1st Credit Union, #12 Exhibit L - Dec. 2, 2019 Facebook webpage, #13 Exhibit M - Correspondence from M. Scott, #14 Exhibit N - 1st Definition & Meaning - Merriam-Webster, #15 Exhibit O - Members 1st 2021 Annual Report, #16 Exhibit P - M1 Blog webpage, #17 Exhibit Q - One Definition & Meaning - Merriam Webster, #18 Exhibit R - The Federal Reserve article - Money Stock Measures - H.6 Release, #19 Exhibit S - Declaration of Brian Barnes)(Albritton, Douglas)
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Filing 27
ATTORNEY Appearance for Counter Defendant Lincoln Savings Bank by Stacy Ann Baim (Baim, Stacy)
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Filing 26
ATTORNEY Appearance for Counter Defendant Lincoln Savings Bank by Peter Geer Hawkins (Hawkins, Peter)
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Filing 25
ATTORNEY Appearance for Counter Defendant Lincoln Savings Bank by Douglas Alan Albritton (Albritton, Douglas)
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Filing 24
Lincoln Savings Bank's ANSWER to counterclaim by Lincoln Savings Bank(Albritton, Douglas)
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Filing 23
M1 Holdings Inc.'s Answer to Counterclaims ANSWER to counterclaim Members 1st Federal Credit Union by M1 Holdings Inc.(Albritton, Douglas)
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Filing 22
MINUTE entry before the Honorable Franklin U. Valderrama: The Court sets the following briefing schedule on Defendant/Counter-Claimant Members 1st Federal Credit Union's preliminary injunction #13 : Plaintiff/Counter-Defendant M1 Holdings Inc. and Counter-Defendant Lincoln Savings Bank's response is due by 4/27/2022; Defendant/Counter-Claimant Members 1st Federal Credit Union's reply is due by 5/11/2022. Mailed notice (axc).
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Filing 21
NOTIFICATION of Affiliates pursuant to Local Rule 3.2 by Members 1st Federal Credit Union (Flanagan, Patricia)
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Filing 20
Certification by M1 Holdings Inc. Plaintiff's Certification of Distribution of Lanham Act Mediation Materials (Hawkins, Peter)
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Filing 19
SUMMONS Returned Executed by Members 1st Federal Credit Union as to Lincoln Savings Bank on 3/29/2022, answer due 4/19/2022. (Wolek, Adam)
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Filing 18
MINUTE entry before the Honorable Franklin U. Valderrama: Attorney Patricia M. Flanagan's motion for leave to appear pro hac vice #17 is granted. Mailed notice (axc).
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Filing 17
MOTION for Leave to Appear Pro Hac Vice Filing fee $ 150, receipt number 0752-19280990. (Flanagan, Patricia)
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Filing 16
EXECUTIVE COMMITTEE ORDER: Case reassigned to the Honorable Franklin U. Valderrama for all further proceedings. Honorable Robert W. Gettleman no longer assigned to the case pursuant to the provisions of 28 USC 294(b). Signed by Executive Committee on 3/24/2022. (td, )
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SUMMONS Issued as to Counter Defendant Lincoln Savings Bank (ey, )
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Filing 15
EXHIBIT by Counter Claimant Members 1st Federal Credit Union, Defendant Members 1st Federal Credit Union Exhibit 1 to Defendant's Answer, Affirmative Defenses and Counterclaim regarding counterclaim #12 (Wolek, Adam)
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Filing 14
MEMORANDUM by Members 1st Federal Credit Union in support of motion for preliminary injunction #13 (Attachments: #1 Declaration Decl. of J. Reimer, #2 Exhibit Ex. 1 to J. Reimer Decl., #3 Declaration Decl. of P. Flanagan, #4 Exhibit Ex. 2 to Decl. of P. Flanagan, #5 Exhibit Ex. 3 to Decl. of P. Flanagan, #6 Exhibit Ex. 4 to Decl. of P. Flanagan, #7 Exhibit Ex. 5 to Decl. of P. Flanagan, #8 Exhibit Ex. 6 to Decl. of P. Flanagan, #9 Exhibit Ex. 7 to Decl. of P. Flanagan, #10 Exhibit Ex. 8 to Decl. of P. Flanagan, #11 Exhibit Ex. 9 to Decl. of P. Flanagan)(Wolek, Adam)
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Filing 13
MOTION by Counter Claimant Members 1st Federal Credit Union, Defendant Members 1st Federal Credit Union for preliminary injunction (Wolek, Adam)
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Filing 12
Answer, Affirmative Defenses, and COUNTERCLAIM filed by Members 1st Federal Credit Union against M1 Holdings Inc., Lincoln Savings Bank .(Wolek, Adam)
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Filing 11
SUMMONS Returned Executed by M1 Holdings Inc. as to Members 1st Federal Credit Union on 3/21/2022, answer due 4/11/2022. (Albritton, Douglas)
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Filing 10
ATTORNEY Appearance for Defendant Members 1st Federal Credit Union by Adam Wolek (Wolek, Adam)
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SUMMONS Issued as to Defendant Members 1st Federal Credit Union (lma, )
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Filing 9
MAILED to plaintiff(s) counsel Lanham Mediation Program materials. (jh, )
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Filing 8
MAILED Trademark report to Patent Trademark Office, Alexandria VA. (jh, )
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Filing 7
NOTIFICATION of Affiliates pursuant to Local Rule 3.2 by M1 Holdings Inc. Plaintiff's Corporate Disclosure and Affiliation Statement (Albritton, Douglas)
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Filing 6
AMENDED civil cover sheet #2 Amended Civil Cover Sheet (Albritton, Douglas)
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Filing 5
ATTORNEY Appearance for Plaintiff M1 Holdings Inc. by Stacy Ann Baim (Baim, Stacy)
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Filing 4
ATTORNEY Appearance for Plaintiff M1 Holdings Inc. by Peter Geer Hawkins (Hawkins, Peter)
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Filing 3
ATTORNEY Appearance for Plaintiff M1 Holdings Inc. by Douglas Alan Albritton (Albritton, Douglas)
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Filing 2
CIVIL Cover Sheet (Albritton, Douglas)
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Filing 1
COMPLAINT Complaint for Declaratory Judgment of Non-Infringement filed by M1 Holdings Inc.; Jury Demand. Filing fee $ 402, receipt number 0752-19216178. (Attachments: #1 Exhibit Ex. A - Federal Trademark Registration No. 3,055,347, #2 Exhibit Ex. B - Federal Trademark Registration No. 6,461,513 and 6,448,395, #3 Exhibit Ex. C - 10/20/20 Correspondence, #4 Exhibit Ex. D - 10/29 20 Correspondence, #5 Exhibit Ex. E - 2/11/22 Correspondence, #6 Exhibit Ex. F - 2/17/22 Correspondence, #7 Exhibit Ex. G - 3/3/22 Correspondence)(Albritton, Douglas)
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CASE ASSIGNED to the Honorable Robert W. Gettleman. Designated as Magistrate Judge the Honorable Jeffrey Cole. Case assignment: Random assignment. (cxr, )
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CLERK'S NOTICE: Pursuant to Local Rule 73.1(b), a United States Magistrate Judge of this court is available to conduct all proceedings in this civil action. If all parties consent to have the currently assigned United States Magistrate Judge conduct all proceedings in this case, including trial, the entry of final judgment, and all post-trial proceedings, all parties must sign their names on the attached #Consent To# form. This consent form is eligible for filing only if executed by all parties. The parties can also express their consent to jurisdiction by a magistrate judge in any joint filing, including the Joint Initial Status Report or proposed Case Management Order. (cxr, )
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