Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA227044
`ESTTA Tracking number:
`07/29/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Petition for Cancellation
`
`Notice is hereby given that the following party requests to cancel indicated registration.
`Petitioner Information
`
`Kansas
`
`Name
`Entity
`Address
`
`Builders' Mutual Casualty Company
`Corporation
`Citizenship
`1100 Walnut Street Suite 3010
`Kansas City, MO 64106
`UNITED STATES
`
`Attorney
`information
`
`Jeffrey E. Fine
`Polsinelli Shalton Flanigan Suelthaus PC
`100 S. Fourth St. Suite 1100
`St. Louis, MO 63102
`UNITED STATES
`uspt@polsinelli.com Phone:314-889-8000
`Registration Subject to Cancellation
`
`Registration No
`Registrant
`
`Registration date
`2741656
`Builders Mutual Insurance Company
`6716 Six Forks Road
`Raleigh, NC 27615
`UNITED STATES
`Goods/Services Subject to Cancellation
`
`07/29/2003
`
`Class 036. First Use: 1997/09/24 First Use In Commerce: 1997/09/24
`All goods and services in the class are cancelled, namely: Insurance services, namely in the field of
`administration, underwriting, auditing, claims processing, accounting, loss control, and agency
`management of fire, property, water damage, burglary and theft, glass, boiler and machinery,
`elevator, collision, personal injury liability, property damage liability, workers' compensation and
`employer's liability, fidelity and surety, motor vehicle and aircraft, marine, marine protection and
`indemnity, general liability, builders risk, commercial, and umbrella liability insurance
`
`Grounds for Cancellation
`
`Genericness
`Priority and likelihood of confusion
`The mark is merely descriptive
`
`Trademark Act section 23
`Trademark Act section 2(d)
`Trademark Act section 2(e)(1)
`
`Mark Cited by Petitioner as Basis for Cancellation
`
`U.S. Application/
`Registration No.
`Registration Date
`
`NONE
`
`NONE
`
`Application Date
`
`NONE
`
`
`ESTTA227044
`ESTTA Tracking number:
`07/29/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Petition for Cancellation
`
`Notice is hereby given that the following party requests to cancel indicated registration.
`Petitioner Information
`
`Kansas
`
`Name
`Entity
`Address
`
`Builders' Mutual Casualty Company
`Corporation
`Citizenship
`1100 Walnut Street Suite 3010
`Kansas City, MO 64106
`UNITED STATES
`
`Attorney
`information
`
`Jeffrey E. Fine
`Polsinelli Shalton Flanigan Suelthaus PC
`100 S. Fourth St. Suite 1100
`St. Louis, MO 63102
`UNITED STATES
`uspt@polsinelli.com Phone:314-889-8000
`Registration Subject to Cancellation
`
`Registration No
`Registrant
`
`Registration date
`2741656
`Builders Mutual Insurance Company
`6716 Six Forks Road
`Raleigh, NC 27615
`UNITED STATES
`Goods/Services Subject to Cancellation
`
`07/29/2003
`
`Class 036. First Use: 1997/09/24 First Use In Commerce: 1997/09/24
`All goods and services in the class are cancelled, namely: Insurance services, namely in the field of
`administration, underwriting, auditing, claims processing, accounting, loss control, and agency
`management of fire, property, water damage, burglary and theft, glass, boiler and machinery,
`elevator, collision, personal injury liability, property damage liability, workers' compensation and
`employer's liability, fidelity and surety, motor vehicle and aircraft, marine, marine protection and
`indemnity, general liability, builders risk, commercial, and umbrella liability insurance
`
`Grounds for Cancellation
`
`Genericness
`Priority and likelihood of confusion
`The mark is merely descriptive
`
`Trademark Act section 23
`Trademark Act section 2(d)
`Trademark Act section 2(e)(1)
`
`Mark Cited by Petitioner as Basis for Cancellation
`
`U.S. Application/
`Registration No.
`Registration Date
`
`NONE
`
`NONE
`
`Application Date
`
`NONE
`
`
`
`Word Mark
`Goods/Services
`
`Attachments
`
`BUILDERS' ASSOCIATION SELF-INSURER'S FUND; BUILDERS
`Providing workers' compensation insurance and other insurance
`coverage to members of the building, construction, and related
`industries.
`
`STLOUIS-
`#389509-v3-BUILDERS__MUTUAL_CASUALTY_COMPANY--Petition_for_Can
`cellation.pdf ( 6 pages )(28144 bytes )
`Exhibit A.pdf ( 2 pages )(1685775 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
`Name
`Date
`
`/Jeffrey E. Fine/
`Jeffrey E. Fine
`07/29/2008
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of United States Trademark:
`
`Mark:
`
`BUILDERS MUTUAL
`
`Registrant:
`Registration No.:
`Class No.:
`
`Builders Mutual Insurance Company
`2,741,656
`036
`
`July 29, 2003
`Registered:
`
`
`BUILDERS’ MUTUAL CASUALTY
`
`COMPANY,
`
`Petitioner,
`
`CANCELLATION NO.:
`
`V.
`
`BUILDERS MUTUAL INSURANCE
`
`COMPANY, LLC,
`
`Registrant.
`
`PETITION FOR CANCELLATION
`
`Petitioner Builders’ Mutual Casualty Company (“BMCC”), a corporation organized and
`
`operating under the laws of the State of Kansas, having its principal place of business at 1100
`
`Walnut Street, Suite 3010, Kansas City, Missouri 64106, has been and will continue to be
`
`damaged by the registration of the trademark for the mark BUILDERS MUTUAL, Registration
`
`No. 2,741,656, registered July 29, 2003 (“Registrant’s Mark”), by Builders Mutual Insurance
`
`Company, a North Carolina corporation (“Registrant”), for “[i]nsurance services, namely in the
`
`field of administration, underwriting, auditing, claims processing, accounting, loss control, and
`
`agency management of fire, property, water damage, burglary and theft, glass, boiler and
`
`machinery, elevator, collision, personal
`
`injury liability, property damage liability, workers’
`
`compensation and employer’s liability, fidelity and surety, motor Vehicle and aircraft, marine,
`
`
`
`marine protection and indemnity, general
`
`liability, builders risk, commercial, and umbrella
`
`liability insurance” in International Class 036, and therefore petitions to cancel the same. As
`
`grounds for its cancellation, BMCC states as follows:
`
`1.
`
`BMCC is licensed to provide workers’ compensation coverage in both the States
`
`of Kansas and Missouri and is the successor of self—insurance funded trusts that were formed in
`
`1982 and 1983, respectively, for such purpose.
`
`2.
`
`BMCC is currently seeking approval from other state insurance departments to
`
`write insurance policies in other states.
`
`3.
`
`Registrant, upon information and belief,
`
`is
`
`licensed to provide workers’
`
`compensation and other insurance coverage in the States of North Carolina, South Carolina,
`
`Virginia, and Tennessee to members of the building industry. A true and accurate copy of the
`
`specimen presented by the Registrant to the USPTO in connection with Registrant’s Mark is
`
`attached hereto as ExhibitA and is incorporated herein by reference.
`
`4.
`
`As Registrant’s own specimen indicates, its services are directed to members of
`
`the building industry. See Exhibit A.
`
`5.
`
`6.
`
`Registrant’s Mark was registered on July 29, 2003, on a Section 2(f) basis.
`
`As part of the procurement of its registration, Registrant was required to disclaim
`
`the word “Mutual.”
`
`7.
`
`BMCC acknowledges that the Registrant’s Mark was previously the subject of
`
`Supplemental Registration No. 2,413,276, registered on December 12, 2000, which has now
`
`been cancelled.
`
`8.
`
`This petition is being filed within five (5) years from the date of Registrant’s
`
`registration of its mark on the Principal Register.
`
`
`
`9.
`
`BMCC petitions to cancel Registrant’s Mark because registration of Registrant’s
`
`Mark should never have been allowed for the reasons set forth below.
`
`10.
`
`As grounds for cancellation, BMCC states that Registrant’s Mark is not capable
`
`of distinguishing its insurance services because the principal significance of Registrant’s Mark is
`
`generic to the relevant consumers for those services and is therefore incapable of distinguishing
`
`Registrant’s services from those of others. Registrant’s Mark is generic as it is used in its plain,
`
`everyday meaning. Registrant’s Mark disclaims the word “mutual” and significantly, other
`
`registrations owned by Registrant
`
`include disclaimers of “by Builders Mutual,” “Builders
`
`University,” and “Insurance Company.”
`
`ll.
`
`As further grounds for cancellation, BMCC states that Registrant’s Mark is highly
`
`descriptive as applied to its insurance services, is incapable of acquiring secondary meaning or
`
`distinguishing Registrant’s services, and is therefore incapable of functioning as a trademark.
`
`12.
`
`As further grounds for cancellation, BMCC states that Registrant’s Mark is
`
`merely descriptive as applied to insurance services and is without acquired distinctiveness and is
`
`therefore incapable of distinguishing Registrant’s services from those of others. Registrant’s
`
`Mark is merely descriptive as it conveys an immediate idea of the qualities or characteristics of
`
`Registrant’s services with a degree of particularity that prevents it from operating as a trademark
`
`for these services without acquired distinctiveness.
`
`13.
`
`As further grounds for cancellation, BMCC states that Registrant’s Mark lacks
`
`acquired distinctiveness and is therefore incapable of distinguishing Registrant’s services from
`
`those of others.
`
`14.
`
`As further grounds for cancellation, BMCC states that even if Registrant’s Mark
`
`were otherwise capable of registration, Registrant’s Mark should never have been registered
`
`
`
`under Section 2(d) of the Lanham Act as Registrant’s Mark so resembles the marks used by
`
`BMCC in commerce in the United States since at least 1982, including “Builders’ Association
`
`Self—Insurers’ Fund,” that the registration of Registrant’s Mark is likely to cause confusion, or to
`
`cause rr1istake, or to deceive with respect to the marks used by BMCC.
`
`15.
`
`As Registrant’s Mark has been registered for less than five (5) years, it can be
`
`cancelled for any reason that would have initially prevented registration.
`
`16.
`
`Each of the foregoing reasons should have properly prevented the registration of
`
`Registrant’s Mark and therefore are proper grounds for now canceling Registrant’s Mark.
`
`17.
`
`The continued registration of Registrant’s Mark is inconsistent with the rights of
`
`BMCC and all others to freely describe their goods and services by using these generic or, at the
`
`very least descriptive,
`
`terms with no showing of acquired distinctiveness on the part of
`
`Registrant.
`
`18.
`
`The continued registration of Registrant’s Mark would wrongfully create the
`
`appearance,
`
`to the detriment of BMCC and all others,
`
`that Registrant has the right to the
`
`exclusive use of this non—distinctive phrase in connection with insurance services.
`
`19.
`
`The continued registration of Registrant’s Mark provides Registrant with a prima
`
`facie exclusive right to use Registrant’s Mark, despite the fact that said mark should be incapable
`
`of registration for the reasons set forth above.
`
`20.
`
`The continued registration of Registrant’s Mark is further inconsistent with the
`
`rights of BMCC to be able to use its own marks that it used well before Registrant’s Mark was
`
`ever used.
`
`21.
`
`BMCC has standing to bring this action because for all of the foregoing reasons,
`
`BMCC has been and will continue to be damaged by the registration of Registrant’s Mark.
`
`
`
`22.
`
`BMCC further has standing to bring this action because BMCC has a real interest
`
`in this mark as a competitor of Registrant engaged in providing sin1ilar or closely related services
`
`as Registrant in the insurance industry and BMCC has a present and prospective right to use
`
`these terms in its business.
`
`WHEREFORE, BMCC respectfully prays
`
`that U.S. Trademark Registration No.
`
`2,741,656 be cancelled in whole and for such other and further relief as this Board deems just
`
`and proper in the premises.
`
`Dated this
`
`day of July 2008.
`
`Respectfully submitted,
`
`POLSINELLI SHALTON FLANIGAN SUELTHAUS PC
`
`By:
`
`/Jeffrey E. Fine/
`JEFFREY E. FINE
`
`KEITH J. GRADY
`
`JOHN M. CHALLIS
`
`100 South Fourth Street, Suite 1100
`
`St. Louis, Missouri 63102
`
`Phone:
`
`(314) 889-8000
`
`Facsimile:
`
`(314) 231-1776
`
`E—Mails:
`
`jfine@polsinelli.com
`kgrady @ polsinelli.com
`jchallis @polsinelli.com
`
`ATTORNEYS FOR PETITIONER BUILDERS’
`
`MUTUAL CASUALTY COMPANY
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true and correct copy of the above and foregoing
`Petition for Cancellation was served by First Class United States Mail, postage prepaid this 29
`day of July 2008, to:
`
`Builders Mutual Insurance Company
`6716 Six Forks Road
`
`Raleigh, NC 27615
`Owner 0fRec0rd
`
`Catherine R. Stuart, Esq.
`Theresa L. Spawn, Esq.
`Stuart Law Firm, PLLC
`
`1033 Wade Avenue, Suite 202
`
`Raleigh, NC 27605
`Registered Correspondent for Owner of Record
`
`/Jeffrey E. Fine/
`
`054677 / 121619
`JEFIN 389509
`
`
`
`
`
`\\A\\\\\\\\\\\\\A\\A\A\\A\\\\m\xmm\A\\\\\\\\\\\\\\\\\\\\\\
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
