1)
`
`TTAB
`
`I hereby certify that this correspondence is being deposited with the United States Postal Service as first class mail
`in an envelope addressed to the Trademark Trial and Appeal Board, Commissioner for Trademarks, P.O. Box 1451,
`Alexandria, VA 22313-1451, on the date shown below
`
`Date: January 16, 2006
`
`S
`
`an D. Rector
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`NEXT STEP FINANCIAL LLC
`
`Petitioner
`
`V.
`
`SPECIAL INSURANCE SERVICES, INC.
`
`Respondent
`_T_________________.__.___:l
`
`Opposition No. 91 174748
`
`In the Matter of Trademark
`
`Registration Application No. 78600238
`For the Mark: NEXSTEP
`
`Date of Publication: October 24, 2006
`
`JOINT MOTION TO SUSPEND OPPOSITION PROCEEDINGS
`
`Box TTAB
`
`Commissioner for Trademarks
`
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Sir:
`
`Petitioner, NEXT STEP FINANCIAL LLC (hereinafter “Petitioner”), and respondent,
`
`SPECIAL INSURANCE SERVICES, INC. (hereinafter “Respondent”), move pursuant to 37
`
`C.F.R. § 2.117(c), that the above-captioned opposition proceedings be suspended pending final
`
`action on Petitioner’s United States trademark registration application # 78810486 (the
`
`“Application”), in accordance with the terms of the parties’ Consent Agreement.
`
`As grounds for their motion, the parties state as follows:
`
`(H0828l64.2 1
`
`01-19-2007
`
`‘
`U.S. Patent & TMOfc/TM Mail Rcpt Dt. #3
`
`

`
`Petitioner has been using the mark NEXTSTEP in commerce since at least as early as
`
`April 1, 1999, for various insurance services. Petitioner has applied to register the mark
`
`NEXTSTEP in the United States Patent and Trademark Office for use in International
`
`Class 36.
`
`Respondent has applied to register the mark NEXSTEP in International Class 36. The
`
`dates of first use anywhere and in commerce listed in the application is November 30,
`
`2004 and April 1, 2005, respectively.
`
`The parties are aware of no actual confusion between their respective uses of
`
`NEXTSTEP and NEXSTEP and have entered into a Consent Agreement for each party’s
`
`respective rights to the use and registration of its own marks in such a manner as to avoid
`
`any likelihood of confusion between each party’s respective goods and services in the
`
`marketplace. A copy of the Consent Agreement is attached as Exhibit A.
`
`Provided the terms of the Consent Agreement are followed, the parties believe that there
`
`is no likelihood of confusion or conflict between the respective marks, including
`
`Petitioner’s Application for registration of its NEXTSTEP mark and Respondent’s
`
`application for registration of its NEXSTEP mark, both in International Class 36.
`
`The parties have agreed to suspend opposition proceedings pending final action on
`
`Petitioner’s Application for registration of its NEXTSTEP mark in International Class 36.
`
`If the registration is granted, the parties will dismiss the proceeding with prejudice. If the
`
`registration is refused, based in whole or in part on Respondent’s claim to the NEXSTEP
`
`mark and the refusal is made final, the parties have agreed that Petitioner may reactivate
`
`the opposition proceeding.
`
`(H0828l64.l )
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`2
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`

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`_.\~.
`
`WHEREFORE, the parties respectfully request that this matter be suspended pending
`
`final action on Petitioner’s United States trademark registration application # 78810486.
`
`NEXT STEP FINANCIAL LLC
`
`SPECIAL INSURANCE SERVICES, INC.
`
`Petitioner
`
`Respondent
`
`,flM Al
`
`Susan D. Rector, Esq.
`Schottenstein Zox & Dunn Co., L.P.A.
`250 West Street
`
`
`
`Columbus, OH 43215
`
`Phone: (614) 462-2700
`Fax: (614) 462-5135
`Attorneyfor Petitioner
`
`Irvin TX 75062
`
`Phone: (214) 296-5700
`Fax: (214) 296-5710
`Attorneyfor Respondent
`
`(H0828l64.l
`
`)
`
`3
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`

`
`EXHIBIT A
`
`CONSENT AGREEMENT
`
`This Consent Agreement (the "Agreement") is made and entered into by and between
`Next Step Financial LLC, a Colorado limited liability company having offices at 1010 15”‘
`Street. Apt. 27J, Denver, Colorado 80202-2312 (“Next Step”); and Special Insurance Services,
`Inc., a Texas corporation having offices at 6509 Windcrest Drive, Suite 200, Plano, Texas 75024
`(G‘SIS!7) .
`
`Background Infonnation
`
`SIS holds an application for U.S. trademark registration, Serial No. 78600238, for
`A.
`the mark NEXSTEP in International Class 036. The dates of first use anywhere and of first use
`in commerce listed in the application are 11/30/2004 and 04/01/2005, respectively.
`The
`identification of services
`in the application is:
`“insurance services, namely, offering
`supplemental medical plans available to employers’ current group medical plans.”
`
`Next Step has been using the mark NEXTSTEP in commerce since at least as
`B.
`early as 04/01/1999 and has filed an application for U.S. trademark registration, Serial No.
`78810486, in lntemational Class 036. The identification of the services in the application is:
`“Insurance services, namely, property and casualty insurance agency services, brokerage, claims
`processing, consultation, underwriting and administration of namely, homeowners insurance,
`automobile insurance, personal excess liability/umbrella insurance, valuable articles insurance,
`earthquake insurance, flood insurance, watercraft insurance, recreational vehicles insurance,
`farm and ranch insurance, life insurance, disability insurance, aviation insurance, commercial
`property insurance, commercial general liability insurance, workers compensation insurance,
`business owners insurance, fidelity insurance, commercial excess liability/umbrella insurance,
`directors and officers insurance, bonds insurance,
`fiduciary, employment practices and e-
`commerce liability insurance, professional liability, transportation insurance, credit insurance,
`personal accident and health insurance, aircraft insurance, fire insurance, malpractice insurance,
`mortgage guaranty insurance, crop and livestock insurance, personal injury insurance, annuities,
`endowment insurance, industrial insurance; Specifically NOT offering supplemental medical
`plans available to employers as an addition to the employers‘ current group medical plans;
`Mortgage lending services, mortgage banking services, property and casualty insurance agency
`services, and real estate closing and title insurance agency services, wholesale mortgage lending
`and mortgage loan underwriting services, residential real estate loan financing, mortgage
`brokerage, and mortgage banking, mortgage loan servicing and real estate lending services;
`mortgage lending and financial services, namely, loan processing, loan collections, wholesale
`and retail mortgage services, namely purchasing mortgage loans from real estate and mortgage
`brokers and correspondent lenders for others, brokering the sale and servicing of mortgage loans
`to secondary mortgage lenders, maintenance of mortgage escrow accounts, and purchasing
`mortgage loans from real estate and mortgage brokers and correspondent lenders; Real estate
`services, namely, real estate brokerage services, real estate financing services, real estate
`consultation services, real estate investment services, real estate management services, leasing of
`real estate, real estate acquisition services, real estate agency services, Real estate property
`management services acquisition services, escrow services, listing, management, procurement
`for others, consulting,
`land acquisition” (collectively “Services Other Than Supplemental
`Medical Plan Services”)
`
`{HOB250Z6.3 :
`
`

`
`The parties are aware of no actual confusion between their respective uses of their
`C.
`respective marks and desire to enter into a mutual consent agreement for each party's respective
`rights to the use and registration of its own marks in such a manner as to avoid any likelihood of
`confusion between each party's respective goods and services in the marketplace.
`
`Provisions
`
`NOW, THEREFORE, in consideration of the foregoing and mutual covenants set forth
`below, the parties agree as follows:
`
`Application of Next Step. Next Step has applied to register the mark
`Section 1.
`NEXTSTEP in the U.S. Patent and Trademark Office ("PTO") for the following uses and agrees
`to use the mark in accordance with the terms of this Agreement: for Services Other Than
`Supplemental Medical Plan Services in International Class 036.
`
`Application of SIS. SIS has applied to register the mark NEXSTEP in the
`Section 2.
`PTO for the following uses and agrees to use the mark in accordance with the terms of this
`Agreement: offering supplemental medical plans available to employers as an addition to the
`employers’ current group medical plans in International Class 036.
`
`Provided the terms of this Agreement are followed, the parties believe that there is no
`likelihood of confusion or conflict between the respective marks, including Next Step's pending
`application for registration of its NEXTSTEP mark in International Class 036 and SIS’s pending
`application for registration of its NEXSTEP mark, in International Class 036. The parties shall
`execute any necessary letters of consent and any other documents and filings required or helpful
`in order to effectuate the terms of this Agreement and to carry out its intent.
`
`Section 3.
`
`Us ge.
`
`Next Step will not use the NEXTSTEP mark or its Next Step Financial LLC or
`(a)
`Next Step Financial name (with or without descriptive terms) in commerce and/or associated
`with the offering of supplemental medical plans to employers for any purpose.
`
`SIS will not use the NEXSTEP mark or a similar legal name (with or without
`(b)
`descriptive terms) in commerce and/or associated with Services Other Than Supplemental
`Medical Plan Services for any purpose.
`
`The parties acknowledge and agree that (i) the primary services that they currently
`(c)
`provide to third parties are described in Sections 1 and 2, respectively, and (ii) there exists the
`possibility that either party may offer services in the future that are within that party's natural
`zone of expansion but which may in some respects be similar to services provided by the other
`party. The parties agree that if either party's provision of services within its natural zone of
`expansion causes actual confusion or may result in likelihood of confusion, then the parties agree
`to take the actions described in Section 4 of this Agreement.
`
`The parties acknowledge and agree that from time to time either party may
`(d)
`advertise its respective services in regional or national publications that may be distributed in the
`areas where the other party provides services. The parties agree that
`the placing of such
`
`{Hos2so26.3 ;
`
`2
`
`

`
`4)
`
`advertising shall not be a violation of this Agreement, but if either party becomes aware of
`confusion or the likelihood of confusion as a result of the distribution of such advertising, the
`provisions of Section 4 of this Agreement shall apply.
`
`No Contest. Both parties agree not to contest each other’s respective uses
`Section 4.
`and registrations of the marks NEXTSTEP and NEXSTEP and their respective legal names in
`any way by civil action, PTO proceedings or any other proceeding if such uses and registrations
`are in accordance with the terms of this Agreement. Both parties further agree that a copy of this
`Agreement may be filed with the PTO or Trademark Trial and Appeal Board in connection with
`proceedings before either body or be admissible in court proceedings. Notwithstanding the
`foregoing, the parties acknowledge that Next Step has filed a Notice of Opposition to oppose the
`application for registration of NEXSTEP, Serial No. 78/600238, and both parties agree to
`suspend the opposition proceeding pending final action on Next Step’s application for
`registration of its NEXTSTEP mark.
`If the registration is granted, the parties will promptly
`dismiss the proceeding with prejudice. If the registration is refused based in whole or in part on
`SIS’s claim to the NEXSTEP mark and the refusal is made final, Next Step may reactivate the
`
`opposition proceeding.
`
`SIS acknowledges and agrees that Next Step is justified in detrimentally relying on SIS’s
`representations, warranties and covenants in this Agreement (in not filing a Notice of Opposition
`before the PTO or Trademark Trial and Appeal Board or taking any other PTO interference
`actions) and any failure, breach or default to fully satisfy all of SIS’s duties and obligations
`would irreparably harm and damage Next Step.
`
`Next Step acknowledges and agrees that SIS is justified in detrimentally relying on Next
`Step’s representations, warranties and covenants in this Agreement (in not filing a Notice of
`Opposition before the PTO or Trademark Trial and Appeal Board or taking any other PTO
`interference actions) and any failure, breach or default to fully satisfy all of Next Step’s duties
`and obligations would irreparably harm and damage SIS.
`
`Notwithstanding the foregoing provisions in this section, the parties agree they reserve all
`rights with respect to any use, application or registration that is not expressly prohibited by this
`Agreement. Each party further agrees to give the other party prior written notice of any
`application for a new registration or amendment of an existing registration that includes the mark
`NEXTSTEP or NEXSTEP no later than the date the application or amendment is filed.
`
`If either party believes that uses authorized by this
`Actual Confusion.
`Section 5.
`Agreement have resulted in actual confusion or that such usage — despite adherence to the terms
`of this Agreement — may result in likelihood of confusion in the market place, the parties agree to
`work together, in good faith, to eliminate or minimize such CO11f11SlOIl and/or to take steps
`necessary to avoid the likelihood of confiision arising from use of the NEXTSTEP and
`NEXSTEP marks.
`
`Compliance. The parties recognize and agree that compliance with the
`Section 6.
`terms of this Agreement will prevent conflict between the marks and preclude a likelihood of
`confusion between such marks.
`
`{H082S026.3 )
`
`3
`
`

`
`45
`
`Sharing the Cost of Pursuing Infiingers. The parties agree to assist each
`Section 7.
`other in the enforcement of any rights to the NEXTSTEP or NEXSTEP mark on the terms of this
`Section 7. The parties agree to promptly notify each other in writing of any infringements or
`imitations of the marks NEXTSTEP and NEXSTEP by third parties that come to either party's
`attention.
`If the parties agree to jointly take action on account of any such infringement or
`imitation, they shall ‘agree in each instance on how they will allocate among themselves all costs
`and expenses,
`including attorney's fees,
`incurred in connection with such action and shall
`mutually agree on legal counsel to take such action. Neither party shall contact the third party,
`make any demands or claims, institute any suit or PTO proceeding or take any other action on
`account of such infringements or imitations without first notifying the other party. If the parties
`do not reach a mutual agreement on such joint action, either party if it so desires, may commence
`or prosecute any claims or suits in its own name against the third party at its sole expense.
`
`Section 8.
`
`Miscellaneous Provisions.
`
`This Agreement extends to and is binding upon the affiliates, subsidiaries,
`(a)
`successors and assigns of the parties. For purposes of this Agreement, the “parties” shall mean
`Next Step and SIS and their affiliates, subsidiaries, successors and assigns.
`
`Any notices or communication required under this Agreement shall be in writing
`(b)
`and shall be deemed to be delivered to the other party at the address specified below one (1) day
`after it is sent by a nationally recognized overnight delivery service or three (3) days after it is
`sent by certified mail, return receipt requested postage-prepaid:
`
`Contact:
`
`Contact:
`
`Mr. Andrew Pagel
`President
`Next Step Financial LLC
`1010 15 St. Apt. 27]
`Denver, Colorado 80202-2312
`
`Jill Hazlett
`Executive Vice President
`Special Insurance Services, Inc.
`6509 Windcrest Drive, Suite 200
`
`Plano, Texas 75024
`
`This Agreement shall be governed by and construed in accordance with the laws
`(c)
`of Texas without regard to its conflicts of law provisions.
`
`This Agreement sets forth the entire understanding of the parties regarding the
`((1)
`subject matter of this Agreement and supersedes all previous understandings, whether written,
`oral or verbal, and may not be modified except in a writing executed by authorized officers of
`both parties.
`
`The invalidity or unenforceability of any provision of the Agreement will in no
`(e)
`way affect the validity and enforceability of any other provision of this Agreement.
`
`Neither party will be liable to the other or be in breach of this Agreement for any
`(0
`failure or delay in rendering performance arising out of causes beyond its reasonable control and
`without its fault or negligence. Such causes may include, but are not limited to, acts of God or of
`a public enemy,
`terrorism,
`fires,
`floods, epidemics, quarantine restrictions, strikes, freight
`
`:H0825026.3 )
`
`4
`
`

`
`'3
`
`embargoes or unusually severe Weather. Dates or times of performance will be extended to the
`extent of delays excused by this section, provided that the party Wh.osc performance is affected
`notifies the other promptly of the existence and nature of such delay.
`
`This Agreement may be executed in one or more counterparts, all of which shall
`(g)
`be considered one and the same Agreement, binding on all parties hereto, notwithstanding that
`all parties are not signatories to the same counterpart
`
`Consistent with the terms and conditions hereof, each party hereto shall execute
`(h)
`and deliver all instruments, certificates and other documents and shall perform all of its acts
`which the other party may reasonably request in order to carry out this Agreement and the
`intentions of the parties contemplated hereby.
`
`Nothing herein expressed or implied is intended or shall be construed to confer
`(i)
`upon or give any person other than the parties hereto, and their permitted successors and assigns,
`any rights or remedies under or by reason of this Agreement.
`
`the authorized representatives of the parties hereto, have
`TN WITNESS WHEREOF,
`executed this Agreement on the date written below to be efiective on the latest date that it is
`signed.
`
`SPEClAL INSURANCE SERVICES, INC.
`
`
`
`By:
`
`Title:
`
`NEXT STEP FINAN
`
`LLC
`
` By:
`
`,/ "
`1/’,/Andrew Pagel, President
`
`Date: December §, 2006
`
`Date:
`
`December _, 2006
`
`IIIOKZSIHILJ )
`
`5
`
`

`
`r)
`
`embargoes or unusually severe weather. Dates or times of performance will be extended to the
`extent of delays excused by this section, provided that the party whose performance is affected
`notifies the other promptly of the existence and nature of such delay.
`
`This Agreement may be executed in one or more counterparts, all of which shall
`(g)
`be considered one and the same Agreement, binding on all parties hereto, notwithstanding that
`all parties are not signatories to the same counterpart.
`
`Consistent with the terms and conditions hereof, each party hereto shall execute
`(h)
`and deliver all instruments, certificates and other documents and shall perform all of its acts
`which the other party may reasonably request in order to carry out this Agreement and the
`intentions of the parties contemplated hereby.
`
`Nothing herein expressed or implied is intended or shall be construed to confer
`(i)
`upon or give any person other than the parties hereto, and their permitted successors and assigns,
`any rights or remedies under or by reason of this Agreement.
`
`IN WITNESS WHEREOF, the authorized representatives of the parties hereto, have
`executed this Agreement on the date written below to be effective on the latest date that it is
`signed.
`
`NEXT STEP FINANCIAL LLC
`
`SPECIAL INSURANCE SERVICES, INC.
`
`
`
`
`ett, E ecuti 2‘ «ic President
`
`'
`
`By: ________________
`Andrew Pagel, President
`
`By:
`
`Date: December _, 2006
`
`Date: DecemberZ,(2006
`
`(H08250263 )
`
`5