LLP
`
`5757thStreet,NW
`
`Washington, DC 20004
`
`Telephone202-344-4000
`
`Facsimile 202-344-8300
`
`www.venable.com
`
`
`
`rademark Assistance Center
`
`Writer's Direct Number:
`
`(202) 344-8152
`
`jlpatt@venable.com
`
`June 20, 2007
`
`Madison East, Concourse Level Room C 55
`
`600 Dulany Street
`Alexandria, VA 22314
`
`ATTENTION:
`
`TTAB-MOTION FOR SUSPENSION
`
`Re:
`
`Intersections, Inc. v. Identity Theft Guard Solutions, LLC
`Opposition No. 91 166497
`Mark: IDENTITY SAFEGUARDS
`
`Serial No. 78/286,737
`Attorney Ref. No.: 27993-215899
`
`Dear Sir or Madam:
`
`Attached hereto are the following documents:
`
`1) Motion for Suspension.
`
`2) Exhibit 1 (Civil Action Complaint).
`
`3) Certificate of Service.
`
`4) One Filing Receipt to be stamped and returned to the undersigned.
`
`Please charge any fees, if necessary, to Deposit Account No. 22-0261.
`
`Please direct all communication regarding this matter to the undersigned at the
`above address.
`
`Respectfully submitted,
`
`Enclosures:
`DC2/869696
`
`As Stated
`
`Jacq
`
`aguflfl
`
`e L.
`
`att
`
`HllllllllllIlllllllllllllllllllllllllllllllllllll
`
`06-20-2007
`U.S. Fhtent &TMOlclTM Mail RCEIDY. #34
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91166497
`Serial No. 78/286,737
`Mark: IDENTITY
`SAFEGUARDS
`
`) )
`
`) )
`
`INTERSECTIONS INC.
`
`Opposer,
`
`V.
`
`)
`)
`)
`IDENTITY THEFT GUARD SOLUTIONS, LLC )
`)
`
`) )
`
`Applicant.
`
`Attorney's Reference: 27993~215899
`
`Commissioner for Trademarks
`P.O. Box 1451
`
`Alexandria, Virginia 22313-1451
`
`MOTION FOR SUSPENSION
`
`Opposer, Intersections Inc., hereby moves the Trademark Trial and Appeal Board for an
`
`order suspending the above captioned proceeding in accordance with 37 C.F.R. §2.117(a),
`
`TBMP §510.02(a), pending the disposition of the Civil Action filed on June 13, 2007 by Opposer
`
`in the United States District Court for the Eastern District of Virginia.
`
`Opposer filed a Notice of Opposition against Serial No. 78/286,737 for the mark
`
`IDENTITY SAFEGUARDS on August 29, 2005. Applicant filed its Answer on October 17,
`
`2005. Opposer has now filed a civil action charging trademark infringement and unfair
`
`competition arising from Applicant's use of the mark IDENTITY SAFEGUARDS, among
`
`others. The Complaint filed in this Civil Action is attached hereto as Exhibit 1.
`
`Disposition of the civil action will determine whether Applicant's use and registration of
`
`the mark IDENTITY SAFEGUARDS to identify its services is likely to cause confusion and
`
`lead to deception as to the source of origin, sponsorship or approval of Applicant's goods with
`
`

`
`Opposer's Marks and whether Applicant's application should be withdrawn. Accordingly it is
`
`respectfully submitted that all further proceedings in Opposition No. 91166497 be suspended
`
`pending disposition of the Civil Action. Please note that this Motion is being filed within the
`
`discovery period and that when this proceeding is re-instituted, the Board is respectfully
`
`requested to include adequate time for the parties to complete discovery.
`
`Respectfully submitted,
`
` Date: June 20, 2007
`
`
`/
`e’ Lev sseur Patt
`cquel'
`enable LLP
`‘€75 7”‘ Avenue, N.W.
`Washington, D.C. 20004
`202-344-4000
`
`202-344-8300 (facsimile)
`
`Attorneys for Opposer
`
`867823
`
`

`
`CERTIFICATE OF SERVICE
`
`The undersigned, attorney for Applicant, hereby certifies that on this 20th day of June,
`
`2007, a true copy of the foregoing MOTION FOR SUSPENSION was served, by first class mail,
`
`postage prepaid to:
`
`Troy Greenfield, Esq.
`Bullivant, Houser, Bailey PC,
`1601 Fifth Avenue, Suite 2300,
`Seattle, Washington 98101-1618
`
`Carl J. Schwedler, Esq.
`Bullivant, Houser, Bailey PC,
`1415 L Street
`
`Suite 1000
`
`Sacramento, CA 95814
`
`867823
`
`

`
`EXHIBIT 1
`
`CIVIL ACTION COMPLAINT
`
`

`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF VIRGINIA
`ALEXANDRIA DIVISION
`
`)
`)
`)
`)
`
`INTERSECTIONS INC.,
`a Delaware Corporation,
`
`; c;
`l 3 P 2;
`Z391 JU:‘.-'
`ll
`":;3mlcr..:.~.mT
`M ‘
`’ ‘"5"
`‘°7""A
`‘ /
`_
`__
`Civil Action No. 07¢ v 575 3:4 5?’:
`
`) )
`
`) )
`
`Plaintiff,
`
`v.
`
`IDENTITY THEFT GUARD SOLUTIONS LLC)
`An Oregon Limited Liability Company,
`)
`)
`)
`Defendant.
`___.__________________.)
`
`Jury Trial Demanded
`
`COMPLAINT
`
`Plaintiff,
`
`Intersections
`
`Inc.
`
`(“Intersections”), brings
`
`this complaint against
`
`Defendant, Identity Theft Guard Solutions LLC (“Identity Theft Guard Solutions” or
`
`“Defendant”) alleging as follows:
`
`JURISDICTION AND VENUE
`
`1.
`
`This is an action for relief under the Federal Trademark Act, 15 U.S.C. §
`
`1051, §t_s.<:c1, (“Lanham Act”), particularly 15 U.S.C. §§ 1114, 1117 and 1125, for
`
`trademark infringement, false designation of origin, false description or representation,
`
`and related unfair competition. Plaintiff also asserts claims under the common law.
`
`2.
`
`This Court has subject matter jurisdiction over this action pursuant to 28
`
`U.S.C. §§ 1331, l332(a), l338(a), and l338(b). This Court also hasjurisdiction pursuant
`
`to 15 U.S.C. §1 121 and the doctrine of supplemental jurisdiction pursuant to 28 U.S.C. §
`
`1367(3).
`
`

`
`3.
`
`On information and belief, Defendant
`
`is
`
`subject
`
`to the personal
`
`jurisdiction of this Court because, among other things, Defendant has purposefully
`
`availed itself of the benefits of doing business in the Commonwealth of Virginia by
`
`providing services to the residents of the Commonwealth of Virginia and by selling
`products and services to businesses and individuals located in the Commonwealth of
`
`Virginia.
`
`4.
`
`Venue is proper under 28 U.S.C. §§ l391(b) and 1391(c) in that, upon
`
`information and belief, a substantial part of the events giving rise to the claims occurred
`
`in this District and Defendant is a resident of this District because it is a company subject
`
`to personal jurisdiction in this District.
`
`THE PARTIES
`
`5.
`
`Plaintiff, Intersections Inc.,
`
`is a Delaware corporation with its principal
`
`place of business at 14901 Bogle Drive, Chantilly, Virginia 20151.
`
`6.
`
`Upon information and belief, Defendant Identity Theft Guard Solutions
`
`LLC is an Oregon limited liability company, with its principal place of business at 8050
`
`SW Warm Springs Street, Suite 130, Tualatin, Oregon 97062.
`
`FACTUAL BACKGROUND
`
`INTERSECTIONS’ IDENTITY GUARD® PROGRAM
`
`7.
`
`Identity theft and credit card fraud are amongst
`
`the fastest growing
`
`segments of crime in America. According to the FTC, one in every eight adults, and one
`
`in every four households has been victimized by identity thieves in the past five years.
`
`In
`
`the past year, an estimated ten million Americans have been the victim of identity theft.
`
`8.
`
`Intersections, based in Chantilly, Virginia, was founded in 1999 and has
`
`

`
`become a leading provider of credit management and identity theft protection services.
`
`Currently, Intersections serves more than 5 million customers.
`
`Intersections provides its
`
`services both to consumers (“business to consumer” or “B to C” services) and to
`
`businesses (“business to business” or “B to B” services), including assisting consumers
`
`with credit management, credit monitoring,
`
`identity theft protection,
`
`identity thefl
`
`insurance, credit education, fraud resolution assistance, credit card registrations services
`
`and credit card cancellation and credit card monitoring services. Many of Intersections’
`
`B to B clients in turn make Intersections’ services available to their employees and/or
`
`customers.
`
`Intersections also provides its services to B to B clients to assist in their
`
`responses to data security breaches that may expose sensitive personal information.
`
`9.
`
`Launched in 1999,
`
`IDENTITY GUARD® is
`
`the brand name for
`
`Intersections’ credit management and identity theft protection services, which are
`
`directed both to individual consumers (B to C) and to business clients (B to B) that wish
`
`to market those services to consumers. The mark IDENTITY GUARD® has been in use
`
`in commerce in connection with Intersections’ services continuously from 1999 to the
`
`present. Consumers can access the IDENTITY GUARD® services through Intersections’
`
`website at www.identityguard.com, and B to B clients may learn about the services
`
`through that web site.
`
`10.
`
`Intersections has
`
`invested heavily in advertising and promoting its
`
`IDENTITY GUARD® and related services, including spending more than $14 Million
`
`disseminating advertising.
`
`Intersections advertises its services via the Internet, including
`
`through its own website,
`
`through banner ads and through adwords purchased through
`
`Yahoo!
`
`Inc.
`
`and Google,
`
`and also through telemarketing,
`
`radio and television
`
`

`
`advertisement. Additionally, Intersections’ services are advertised through a variety of
`
`media available through Intersections’ B to B clients,
`
`including in store collateral
`
`advertising displays, newsletters, direct mail, brochures, and handouts.
`
`11.
`
`During the past several years,
`
`Intersections has built up substantial
`
`consumer goodwill for its many services and programs directed to credit management
`
`and identity theft protection services, including its IDENTITY GUARD® service.
`
`12.
`
`As a result of Intersections’ extensive advertising and promotion of its
`
`IDENTITY GUARD® service, the public has come to associate the mark IDENTITY
`
`GUARD® with Intersections prior to Defendant’s wrongful actions complained of herein.
`
`13.
`
`Intersections
`
`owns,
`
`among
`
`others, United
`
`States
`
`Service Mark
`
`Registration No. 2,689,654 for the mark IDENTITY GUARD®, issued February 2003,
`
`for “credit card registration services” and “credit card cancellation services for lost or
`
`stolen cards; credit card monitoring services for lost or stolen cards.” A copy of this
`
`registration is attached as Exhibit A.
`
`14.
`
`Intersections has pending United States Service Mark applications for the
`
`marks IDENTITY GUARD and IDENTITY GUARD & Design, Serial Nos. 78/700,063
`
`and 78/702,238. Copies of the filing information for these applications are attached as
`
`Exhibit B.
`
`15.
`
`Since
`
`1999,
`
`Intersections has owned and used the domain name
`
`xnvwjdentityguard.com.
`
`16.
`
`Intersections has been vigilant in protecting its marks and has filed a civil
`
`Complaint in Federal Court and has filed opposition proceedings in the United States
`
`Patent & Trademark Office to protect its valuable brand IDENTITY GUARD® from
`
`
`
`

`
`encroachment by confusingly similar marks adopted by third parties.
`
`IDENTITY THEFT GUARD SOLUTIONS’
`
`“IDENTITY SAFEGUARDS” SERVICE
`
`17.
`
`On information and belief, in 2003, long after Intersections began using
`
`and registered its IDENTITY GUARD® service mark, Defendant Identity Theft Guard
`
`Solutions began operating websites under the domain name www.identitysafeguardscom
`
`(directed to both businesses (B to B) and individual consumers (B to C)). At this website,
`
`Defendant offers
`
`identity theft protection services under
`
`the name IDENTITY
`
`SAFEGUARDS.
`
`18.
`
`On information and belief, Defendant Identity Theft Guard Solutions uses
`
`the name IDENTITY SAFEGUARDS as a d/b/a/ for the business it operates through the
`
`website at www.identitysafeguards.com.
`
`19.
`
`The mark,
`
`IDENTITY SAFEGUARDS,
`
`and
`
`the
`
`domain
`
`name,
`
`www.identitysafeguardscom, adopted by Defendant Identity Theft Guard Solutions, are
`
`virtually identical
`
`to Intersections’
`
`registered marks IDENTITY GUARD®, and its
`
`domain name www.identityguard.com.
`
`20.
`
`Defendant Identity Theft Guard Solutions filed an application with the
`
`United States Patent and Trademark Office, Serial No. 78/286,737, for registration of the
`
`service mark IDENTITY SAFEGUARDS on August 13, 2003 which covers “provision
`
`of membership identity theft prevention, protection and recovery services, namely,
`
`monitoring consumer credit reports and providing participants with weekly credit alerts
`
`and yearly credit reports, as well as, in the event participants become victims of identity
`
`theft, referral to recovery advocates, fraud investigators, legal counsel and other experts
`
`

`
`necessary to develop and execute recovery plans; Provision of membership identity theft
`
`prevention and protection services, namely, providing participants with customized
`
`financial protection plans and identity theft prevention counseling; provision of
`
`membership identity theft prevention and protection services, namely, financial identity
`
`monitoring.” A copy of the filing information for this application is attached as Exhibit C.
`
`21. Intersections timely filed a Notice of Opposition objecting to Defendant’s
`
`application Serial No. 78/286,737 on August 29, 2005 and Opposition No. 91166497 is
`
`now pending before the Trademark Trial and Appeal Board at the United States Patent
`
`and Trademark Office.
`
`22. On information and belief, at least as early as its date of first use of the mark
`
`IDENTITY SAFEGUARDS, Defendant planned to market its services through employee
`
`benefits and direct to consumer channels.
`
`23. On information and belief, on or about March 20, 2007, Defendant changed
`
`its website and expanded its market
`
`to include companies in the legal,
`
`financial,
`
`health/medical, financial and education industries and added information regarding its
`
`new data security breach services.
`
`24. Defendant Identity Theft Guard Solutions offers similar credit monitoring,
`
`identity theft protection services and data security breach services to those offered by
`
`Intersections, through the same channels of trade and to the same types of customers, i.e.,
`
`to both B to B customers, and B to C customers.
`
`25. On information and belief, Defendant was aware of Intersections’ IDENTITY
`
`GUARD mark prior to its adoption and use of the mark IDENTITY SAFEGUARDS and
`
`the domain name www.identitysafeguards.com.
`
`

`
`26. Defendant was not authorized by Intersections to use the IDENTITY
`
`SAFEGUARDS Mark.
`
`27. Defendant’s continued and unauthorized use of the mark IDENTITY
`
`SAFEGUARDS and the domain name in connection with
`
`services substantially similar to those of Intersections under its IDENTITY GUARD®
`
`mark, and its domain name , is likely to cause confusion, mistake
`
`and deception of the public.
`
`28. By its conduct described above, Defendant has intentionally infringed and will
`
`continue to infringe Intersections’ IDENTITY GUARD® mark, all
`
`to the harm and
`
`detriment of Intersections.
`
`29. Defendant has caused its goods and services to enter into interstate commerce.
`
`COUNT I
`
`LANHAM ACT - TRADEMARK INFRINGEMENT
`
`UNDER SECTION 1114(1[
`
`30. Intersections incorporates by reference and realleges each and every allegation
`
`of Paragraphs 1-29 above.
`
`31. Defendant Identity Theft Guard Solutions’ conduct constitutes trademark
`
`infringement of Intersections’ Federally Registered mark in violation of Section 32(1) of
`
`the Lanham Act, 15 U.S.C. §lll4(1).
`
`32. Defendant’s IDENTITY SAFEGUARDS mark is confusingly similar to the
`
`Intersections’ IDENTITY GUARDE mark.
`
`33. Intersections has no control over the quality of services and goods offered by
`
`Defendant and because of the confusion as to the source, Intersections valuable goodwill
`
`

`
`with respect to IDENTITY GUARD® mark is at the mercy of Defendant.
`
`34. Defendant
`
`Identity Theft Guard Solutions’
`
`use of
`
`the
`
`IDENTITY
`
`SAFEGUARDS mark is likely to cause confusion or to cause mistake or to deceive as to
`
`the origin, sponsorship or affiliation of the goods and services advertised and sold by
`
`Defendant.
`
`35. Defendant’s conduct has caused, and unless restrained by the Court, will
`
`continue to cause irreparable injury to Intersections
`
`36. Defendant’s conduct has damaged Intersections
`
`in an amount
`
`to be
`
`determined at trial.
`
`37. Upon infonnation and belief, Defendant Identity Theft Guard Solutions’
`
`aforesaid infringing conduct has been willfiil, wanton, and malicious and done with an
`
`intent to deceive.
`
`Intersections is therefore entitled to an award of its reasonable
`
`attorneys’ fees and costs, and treble its actual damages.
`
`38. Intersections has no adequate remedy at law.
`
`COUNT II
`
`LANHAM ACT -UNFAIR COMPETITION UNDER §§ 43121)] 1 {(A1 and (B)
`
`39. Intersections incorporates by reference and realleges each and every allegation
`
`of Paragraphs 1-38 above.
`
`40. Defendant’s conduct constitutes unfair competition and the use of false
`
`descriptions and representations in violation of Section 43(a)(l)(A) and (B) of the
`
`Lanham Act, 15 U.S.C. §l l25(a)(1)(A) and (B).
`
`41. Defendant Identity Theft Guard Solutions — and /or their officers, agents,
`
`representatives, and employees — have made false and misleading representations about
`
`
`
`

`
`their connection to Intersections’ goods and services.
`
`Specifically, Defendant has
`
`adopted a mark and has advertised in the same channels of trade as Intersections with the
`
`confusingly similar mark such that Defendant’s product is likely to cause confiision, or to
`
`cause mistake, or
`
`to deceive as to the affiliation, connection, or association of
`
`Defendant’s product with Intersections’ IDENTITY GUARD® mark and the products
`
`associated therewith.
`
`42. Defendant has caused its goods and services to enter into interstate commerce.
`
`43. Defendant’s activities have deceived, or are likely to deceive, a substantial
`
`portion of the purchasing public, and such deception is material in that it is likely to
`
`influence the buying decisions of the purchasing public.
`
`44. By reason of Defendant Identity Theft Guard Solutions’ conduct as alleged
`
`above, Intersections has suffered, and will continue to suffer, substantial damage to its
`
`business reputation and goodwill, as well as diversion of trade and loss of profits in an
`
`amount not yet ascertained.
`
`45. Defendant’s conduct has caused, and unless restrained by the Court, will
`
`continue to cause irreparable injury to Intersections.
`
`46. Defendant’s conduct is in violation of § 43(a) of the Lanham Act (15 U.S.C. §
`
`l125(a)(1)(A) and (B)), and Intersections is entitled to injunctive relief and to monetary
`
`damages in an amount as yet undetermined but to be proven at trial, which damages may
`
`be trebled by this Court in its discretion.
`
`47. Intersections has no adequate remedy at law.
`
`

`
`COUNT III
`
`
`
`48. Intersections incorporates by reference and realleges each and every allegation
`
`of Paragraphs 1-47 above.
`
`49. Defendant’s IDENTITY SAFEGUARDS mark is confusingly similar to the
`
`Intersections’ IDENTITY GUARD® mark.
`
`50. Defendant
`
`Identity Theft Guard Solutions’
`
`use of
`
`the
`
`IDENTITY
`
`SAFEGUARDS mark is likely to cause confusion or to cause mistake or to deceive as to
`
`the origin, sponsorship or affiliation of the goods and services advertised and sold by
`
`Defendant.
`
`51. Defendant’s conduct constitutes trademark infringement under the common
`
`law.
`
`52.Defendant’s conduct has damaged Intersections
`
`in an amount
`
`to be
`
`determined at trial.
`
`53. Defendant’s conduct has caused, and unless restrained by the Court, will
`
`continue to cause irreparable injury to Intersections.
`
`54. Intersections has no adequate remedy at law.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, the Plaintiff, Intersections Inc. prays:
`
`A.
`
`That this Court will adjudge that Intersections’ service mark IDENTITY
`
`GUARD‘? has been infringed as a direct and proximate result of the acts of Defendant
`
`Identity Theft Guard Solutions as set forth in this Complaint, in violation of Intersections’
`
`10
`
`

`
`rights under the Lanham Act, 15 U.S.C. § 1114(1), § ll25(a) and under the Common
`
`Law;
`
`B.
`
`That this Court will adjudge that Defendant Identity Theft Guard Solutions
`
`has competed unfairly, and made false descriptions and representations of the origin of its
`
`services as set forth in this Complaint,
`
`in violation of Intersections’ rights under the
`
`Lanham Act, 15 U.S.C. § 1125, 1s_e_q, and in violation of the Virginia Common Law;
`
`C.
`
`That Defendant Identity Theft Guard Solutions and all officers, directors,
`
`agents, servants, employees, affiliates, attorneys, successors, and assigns of Defendant’s,
`
`and all persons in active concert or participation therewith, be preliminarily and
`
`permanently enjoined:
`
`1.
`
`from committing any further acts of trademark infringement or unfair
`
`competition;
`
`2.
`
`from using any term which is likely to be confused with Intersections‘
`
`IDENTITY GUARD® trademark asserted herein:
`
`3.
`
`from using the mark IDENTITY SAFEGUARDS in any way in the conduct of
`
`business, advertising or promoting its business;
`
`4.
`
`from committing any other acts calculated to cause purchasers to believe that
`
`Defendant's
`
`services are Intersections’, and from competing unfairly with
`
`Intersections in any way;
`
`D.
`
`That Defendant Identity Theft Guard Solutions be required to deliver up
`
`for destruction all packaging,
`
`labels, promotional materials, advertisements, and other
`
`materials that bear the marks IDENTITY SAFEGUARDS, IDENTITY GUARD, or any
`
`mark confusingly similar to Intersections’ IDENTITY GUARD service mark.
`
`ll
`
`

`
`E.
`
`That Defendant Identity Theft Guard Solutions be required to cease all use
`
`of the domain names wwwidentitysafeguards.com and any other domain names
`
`confusingly similar
`
`thereto, and to assign all
`
`rights
`
`to such domain names
`
`to
`
`Intersections.
`
`F.
`
`That Defendant Identity Theft Guard Solutions be directed to file with this
`
`Court and to serve upon Intersections within thirty (30) days after service of the
`
`injunction issued in this action, a written report under oath, setting forth in detail the
`
`manner of compliance with paragraphs D and E.
`
`G.
`
`That Intersections recover Defendant
`
`Identity Theft Guard Solutions’
`
`profits and/or damages Intersections suffered.
`
`H.
`
`That, due to Defendant Identity Thefi Guard Solutions’ willful actions and
`
`intentional disregard for Intersections’ rights, and to deter future infringement, the Court
`
`increase the damages and profits awarded under the Lanham Act.
`
`I.
`
`That Intersections recover pre-judgment and post-judgment
`
`interest on
`
`each and every award.
`
`J.
`
`That Intersections have and recover its attorneys’ fees, taxable costs and
`
`disbursements incurred in this action.
`
`K.
`
`That Intersections have such other and further relief as the Court may
`
`deem just and proper.
`
`I2
`
`

`
`JURY DEMAND
`
`Intersections demands a trial byjury of all matters to which it is entitled to a trial
`
`byjury pursuant to Fed. R. Civ. P. 38.
`
`Dated: June 12, 2007
`
`Venable LL ’
`575 7'“ Street, NW
`Washington, DC 20004-1601
`Telephone (202) 344-4000
`Fax (202) 344-8300
`
`Jacqueline Levasseur Patt
`District of Columbia Bar #469766
`
`Mary Ellen Himes,
`District of Maryland Bar #26815
`Venable LLP
`575 7”‘ Street, NW
`Washington, DC 20004-1601
`Telephone (202) 344-4000
`Fax (202) 344-8300
`‘Admitted to the Bar
`in Maryland and the District of
`Columbia
`
`Attorneys for the Plaintiff
`
`OF COUNSEL:
`
`#848375
`
`

`
`EXHIBIT A
`
`

`
`Int. Cls.: 35 and 36
`
`Prior U.S. Cls.: 100, 101 and 102
`
`Reg. No. 2,689,654
`United States Patent and Trademark Office Registered Feb. 25, 2003
`
`
`
`SERVICE MARK
`PRINCIPAL REGISTER
`
`IDENTITY GUARD
`
`INTERSECTIONS INC. (DELAWARE COMPANY)
`14930 BOGLE DRIVE
`CHANTILLY, VA 2215]
`
`CARD MONITORING SERVICES FOR LOST OR
`STOLEN CARDS, IN CLASS 36 (US. CLS. I00,
`I01
`AND 102).
`
`I
`
`R GI TRATION SERVICES,
`10%’ 131 AND 102)‘
`
`FIRST USE 12-1-1999; IN COMMERCE 12-I-I999.
`
`FIRST USE 12-I-1999; IN COMNIERCE 12-I-I999.
`FOR: CREDIT CARD CANCELLATION SERVI-
`CES FOR LOST OR STOLEN CARDS; CREDIT
`
`SER. NO_ 75_828,527’ FEED 10_21_]999_
`
`HOWARD B. LEVINE, EXAMINING ATTORNEY
`
`

`
`EXHIBIT B
`
`

`
`Trademark/Service Mark Application, Principal Register
`Serial Number: 78700063
`Filing Date: 08/25/2005
`
`
`The table below presents the data as entered.
`
`Input Field
`
`Entered
`
`MA RX
`
`STANDARD L'HAP..M.’T!':RS
`
`USPTO-GENERATED IMAGE
`
`l.l'l‘ERAL ELEMENT
`
`"‘““K 57" “WENT
`
`OVVNER SECTION
`
`NAME
`
`STREET
`
`CITY
`STATE
`
`ZIP/POSTAL CODE
`
`coumuv
`
`IDENTITY GUARD
`
`YES
`
`-<
`
`lDEN'l”lTY GUARD
`
`The mark consists of standard characters. without claim to any
`particular font. style, size. or color.
`
`Intersections lnc.
`
`I490! Boglc Drive
`
`Chantilly
`
`Virginia
`
`20 l 5!
`
`United States
`
`O A
`
`LEGAL ENTITY SECTION
`
`UTHORIZED EMAIL C‘()M.‘~|U.'€lCl\Tl0N
`
`Type
`
`STATE.(‘( JUNTRY OF lN(’ORPOR:\Tl0N
`
`GOODS AND/OR SERVICES SECTION
`
` FILING BASIS
`
`TNTERNATIONAL CLASS
`
`V
`D55““"T'°N
`
`FIRST use ANYWHERE DATE
`
`FIRST use lN (‘OMMERCE DATE
`
`PAYMENT SECTION
`
`NUMBER or CLASSES
`
`NL‘.\1BERDF masses PAID
`
`COR FOR/\TlON
`
`Delaware
`
`036
`
`Providing products and services to assist consumers Wllh credit
`mana cmerit,_credit monitoring, identity theft protection,
`identi
`thcftinsurance, and providing credit education and
`fraud resolution assistance
`
`Section 1(8)
`
`At least as early as 00/00/1999
`
`At least as early as 00/O0/l 999
`
`l
`
`

`
`
`
`325
`
`222
`
`Jacqueline Levasseur Pan
`V2"2b'22”’
`57522hS*rw-NW
`Washingtvn
`Dism°2°fC°'"mbia
`20°22-'60‘
`U""=2S‘2*°s
` 202-244-200°
`
`
`
`AUTHORIZED EMAIL COMMUNICATION
`
`N0
`
`CORRESPONDENCE SECTION
`
`27222-222662
`Hanison, Janet Satter-thwaite' Marcia Auberger’ Andrew
`
`Jacqueline Levasscur Part
`
`
`
` United
`
`Q 202-244-2200
`AUTHORIZED EMAIL COMMUNICATION
`NO
`
`FILING INFORMATION
`
`TEAS STAMP
`
`USPTO/BAS- l 5 1200 I 96 I 32-20
`050825094855155032-787000
`63-200 I 78dcf‘20d77e586b8e6
`fl eafe298320-DA- I053-2005
`0825094605366l50
`
`
`
`Trademark/Service Mark Application, Principal Register
`
`

`
`Serial Number: 78700063
`
`Filing Date: 08/25/2005
`
`To the Commissioner for Trademarks:
`
`MARK: (Standard Characters, see mark)
`The mark consists of standard characters, without claim to any particular font, style, size, or color.
`The literal element of the mark consists of IDENTITY GUARD.
`
`The applicant, Intersections lnc., a corporation of Delaware, residing at l490l Bogle Drive, Chantilly, Virginia. United States, 20l5l, requests
`registration of the trademark/service mark identified above in the United States Patent and Trademark Office on the Principal Register established
`by the Act ofluly 5, I946 (15 U.S.C. Section I051 et seq.), as amended.
`The applicant, or the applicant's related company or licensee, is using the mark in commerce, and lists below the dates of use by the applicant, or the
`applicant's related company, licensee, or predecessor in interest, of the mark on or in connection with the identified goods and/or services. I5 U.S.C.
`Section l05l(a), as amended.
`Intemational Class 036: Providing products and services to assist consumers with credit management, credit monitoring, identity theft
`protection, identity theft insurance, and providing credit education and fraud resolution assistance
`In International Class 036, the mark was first used at least as early as 00/00/ I999, and first used in commerce at least as early as 00/O0/ I 999, and is
`now in use in such commerce. The applicant is submitting or will submit one specimen for each class showing the mark as used in commerce on or
`in connection with any item in the class of listed goods and/or services.
`The applicant hereby appoints Jacqueline Levasseur Patt and Mark Harrison, Janet Satterthwaite, Marcia Auberger, Andrew Price of Venable LLP,
`575 7th Street, NW, Washington, District of Columbia, United States, 20004-l60l to submit this application on behalf of the applicant. The attorney
`docket/reference number is 27993-222663.
`
`A fee payment in the amount of $325 will be submitted with the application, representing payment for l class(es).
`Declaration
`
`The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18
`U.S.C. Section lOOl , and that such willful false statements, and the like, mayjeopardize the validity ofthe application or any resulting registration,
`declares that hdshe is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the
`trademark/service mark sought to be registered, or, if the application is being filed under l5 U.S.C. Section 105l(b), he/she believes applicant to be
`entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to
`use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection
`with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own
`knowledge are true; and that all statements made on information and belief are believed to be true.
`Mailing Address:
`Jacqueline Levasseur Patt
`575 7th Street, NW
`Washington, District of Columbia 20004- l60l
`RAM Sale Number: 1053
`
`RAM Accounting Date: 08/25/2005
`Serial Number: 78700063
`lntemet Transmission Date: Thu Aug 25 09:48:55 EDT 2005
`TEAS Stamp: USPTO/BAS-l5l200196132-20050825094855]S5
`032-78700063-200l78dcf20d77e586b8e6fleaf
`c2983 20«DA—l053-20050825094605366150
`
`

`
` IDENTITY GUARD
`
`

`
`IDENTITY GUARD
`
`

`
`Int. Cls.: 35 and 36
`
`Prior U.S. Cls.: 100, 101 and 102
`
`Reg. No. 2,689,654
`United States Patent and Trademark Office
`Registered Feb. 25, 2003
`
`SERVICE MARK
`PRINCIPAL REGISTER
`
`IDENTITY GUARD
`
`INTERSECTIONS INC. (DELAWARE COMPANY)
`14930 BOGLE DRIVE
`CHANTILLY, VA 22151
`
`CARD MONITORING SERVICES FOR LOST OR
`STOLEN CARDS, IN CLASS 36 (U.S. CLS. 100. 101
`AND 102).
`
`FOR: CREDIT CARD REGISTRATION SERVICES,
`IN CLASS 35 (U.S. CLS. 100, 101 AND 102).
`
`FIRST USE 12-1-1999; IN COMMERCE 12-1-1999.
`
`FIRST USE 12-1-1999; IN COMMERCE 12-1-1999.
`
`SER. NO. 75-828,527, FILED 10-21-1999.
`
`FOR: CREDIT CARD CANCELLATION SERVI-
`CES FOR LOST OR STOLEN CARDS; CREDIT
`
`HOWARD B. LEVINE, EXAMINING ATTORNEY
`
`

`
`Trademark/Service Mark Application, Principal Register
`Serial Number: 78702238
`
`Filing Date: 08/29/2005
`
`
`The table below presents the data as entered.
`
`Input Field
`
`Entered
`
`\\T|CRS\EXPORT9\lMAGEOUT9
`\787\O22\787()2238\xml l\AP P0002 JPG
`
`Z0
`
`O
`
`IDENTITY GUARD
`
`ZO
`
`YES
`
`826 x 898
`
` PIXEL coum AL'('l'iPTAl3LE
`
`MARK SECTION
`
`”""" "L5 ’‘'‘’‘‘E
`STANDARD CHARACTERS
`
`USVTD-GENERATED IMAGE
`
`LITERAL ELEMENT
`
`COLOR MARK
`
`mxtzt mum
`
`OWNER SECTION
`
`
`
`
`
`
`
`
`
`coumav
`
`AUTHORIZED EMAIL COMMLNICATION
`
`TYPE
`
`STATECOUNTRY or INCORPORATION
`
`GOODS AND/OR SERVICES SECTION
`
`United States
`
`NO
`
`CORPORATION
`
`Delaware
`
`INTERNATIONAL CLASS
`
`036
`
`
`
`.
`_
`D55‘ R”’T'°"
`
`FILING BASIS
`
`FIRST USE «\NY\\-‘HERE D.~\TE
`
`Providing products and services to assist consumers with credit
`inana ement,_credit monitoring, 1_d8_l'ltlty theft protection.
`identi
`lh€fl'll'lSUl'al_'lC8, and providing credit education and
`fraud resolution assistance
`
`SCCNOH 1(3)
`
`At least as early as O6/00/2001
`
`At least as early as 06/00/200]
`
`FIRST l'SE IN (‘O.\i.\lER('E DATE
`
` 3 PAYMENT SECTION
`
`

`
`NUMBER or cusses
`
`NUMBER or CLASSES PAID
`
`SUBTOTAL AMOUNT
`
`TOTAL AMOUNT
`
`ATTORNEY
`
`NAME
`
`FIRM NAME
`
`smear
`
`CITY
`STATE
`
`ZIP/POSTAL CODE
`
`COUNTRY
`
`PHONE
`
`FAX
`
`AUTHORIZED EMAIL COMMUNICATION
`
`ATTORNEY DOCKET NUMBER
`
`OTHER APPOINTED ATTORNEY(S)
`
`CORRESPONDENCE SECTION
`
`NAME
`
`FIRM NAME
`
`STREET
`
`cmr
`
`STATE
`
`ZIP/POSTAL com-:
`
`COUNTRY
`
`
`
`FAX
`
`AUTHORIZED EMAIL COMMUNICATION
`
`FILING INFORMATION
`
`SUBMIT DATE
`
`TEAS STAMP
`
`
`
`
`
`
`
`325
`
`325
`
`Jacqueline Levasseur Patt
`
`Venable LLP
`
`575 7th Street, NW
`
`Washington
`
`District of Columbia
`
`20004- I 601
`
`United States
`
`202-344-4000
`
`202-344-8300
`
`O
`
`27993-22 I 875
`
`Mark Harrison, Janet Sattenhwaite. Marcia Auberger, Andrew
`Price
`
`Jacqueline Levasseur Patt
`Venable LLP
`
`575 7th Street, NW
`
`Washington
`
`District of Columbia
`
`20004-160 I
`
`United States
`
`202-344-4000
`
`202-344-8300
`O
`
`Mon Aug 29 11:12:55 EDT 2005
`USPTO/BAS-I51200196132-20
`0508291 11255927060-787022
`38-20044cc7e5eefcc7068602
`65421e6t7a8a5-DA-I I90-200
`5082911 1101734330
`
`

`
`Trademark/Service Mark Application, Principal Register
`
`Serial Number: 78702238
`
`Filing Date: 08/29/2005
`
`To the Commissioner for Trademarks:
`
`MARK: IDENTITY GUARD (stylized and/or with design, see mark)
`The literal element ofthe mark consists of lDENTlTY GUARD.
`
`The applicant, Intersections lnc., a corporation of Delaware, residing at 14901 Bogle Drive, Chantilly, Virginia, United States, 20151, requests
`registration of the trademark/service mark identified above in the United States Patent and Trademark Office on the Principal Register established
`by the Act of July 5, 1946 (15 U.S.C. Section 1051 et seq.), as amended.
`The applicant, or the applicant's related company or licensee, is using the mark in commerce, and lists below the dates of use by the applicant, or the
`applicant's related company, licensee, or predecessor in interest, of the mark on or in connection with the identified goods and/or services. 15 U.S.C.
`Section 105 1(a), as amended.
`International Class 036: Providing products and services to assist consumers with credit management, credit monitoring, identity theft
`protection, identity thefi insurance, and providing credit education and fraud resolution assistance
`In lntemational Class 036, the mark was first used at least as early as 06/00/2001, and first used in commerce at least as early as 06/00/2001, and is
`now in use in such commerce. The applicant is submitting or will submit one specimen for each cla