Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA261249
`ESTTA Tracking number:
`01/19/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92049928
`Defendant
`Homeserve plc
`Brian P. O'Donnell
`MORGAN, LEWIS & BOCKIUS LLP
`1111 Pennsylvania Ave., N.W.
`Washington, DC 20004
`UNITED STATES
`Motion to Suspend for Civil Action
`Brian P. O'Donnell
`bodonnell@morganlewis.com, trademarks@morganlewis.com
`/Brian P. O'Donnell/
`01/19/2009
`Motion to Suspend.PDF ( 75 pages )(3797548 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Registration No. 3,224,227
`Issued: April 3, 2007
`Mark: HOME SERVICE USA Plus Design
`
`In the matter of Registration No. 2,969,200
`Issued: July 19, 2005
`Mark: HOME SERVICE Plus Design
`
`Consolidated Cancellation No.: 92049928
`
`Filed: September 12, 2008
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`CROSS COUNTRY HOME
`
`SERVICES, INC.,
`
`Petitioner,
`
`vs.
`
`HOMESERVE PLC
`
`Respondent.
`
`MOTION TO SUSPEND CONSOLIDATED CANCELLATION PROCEEDING
`AND MEMORANDUM IN SUPPORT THEREOF
`
`Pursuant to T.B.M.P. § 5l0.02(a) and 37 C.F.R. § 2.1 l7(a), Respondent Homeserve plc
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`(“Respondent”), by and through counsel Morgan, Lewis & Bockius, LLP, hereby respectfully
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`requests suspension of Consolidated Cancellation No. 92049928 (“Cancellation Proceeding”)
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`filed by Petitioner Cross Country Home Services, Inc. (“Petitioner”) pending resolution of the
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`civil action pending before the United States District Court for the Southern District of Florida,
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`styled Cross Country Home Services, Inc. v. Homeserve plc and Home Services USA
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`Corporation, Civil Action No. 08-CV-61456 (hereinafter the “Civil Action”).
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`I.
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`FACTUAL BACKGROUND
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`Petitioner filed its Consolidated Petition to Cancel (“Petition”) on September l2, 2008
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`against Respondent’s Reg. No. 2,969,200 for the mark HOME SERVICE Plus Design and Reg.
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`No. 3,224,227 for the mark HOME SERVICE USA Plus Design, both for use in connection with
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`insurance services, namely insurance for maintenance and repair services relating to utilities, gas
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`boilers, household appliances and installations, plumbing services, electrical services; and the
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`

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`installation, maintenance and repair services relating to utilities and household appliances and
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`installations; plumbing services, electrical services.
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`As grounds for cancellation, Petitioner has asserted genericness and a likelihood of
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`confusion with its alleged marks HOMESERVE and HOMESERVE 24 (collectively, the
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`“HOMESERVE marks”). As a basis for its likelihood of confusion claim, Petitioner alleged
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`rights in the HOMESERVE marks arising from common law and federal registration (namely,
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`Reg. No. 2,944,609 for HOMESERVE and Reg. No. 2,103,948 for HOMESERVE 24), both for
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`use in connection with home maintenance repair services provided through a network of selected
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`independent contractors.
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`Concurrently with the filing of the Cancellation Proceeding, Petitioner filed the Civil
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`Action in the United States District Court for the Southern District of Florida for federal
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`trademark infringement and federal and common law unfair competition against Respondent and
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`its wholly-owned U.S. subsidiary, Home Service USA Corporation (“HSUSA”), relating to
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`Respondent’s alleged unlawfiil use of the mark HOMESERVE.
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`In the Civil Action, Petitioner
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`based its likelihood of confusion claims on rights arising from common law and the same federal
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`registrations for the HOMESERVE marks as it asserted in this Cancellation Proceeding.‘
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`On January 16, 2009, Respondent filed an Answer to the Civil Action denying that it
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`infringes Petitioner’s alleged rights in the HOMESERVE marks. Respondent’s U.S. subsidiary,
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`HSUSA, also asserted counterclaims for declaratory judgment of non—infringement of the
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`HOMESERVE marks under the Lanham Act, 15 U.S.C. §§ l 1 l4 and ll25(a), respectively.
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`Copies of the relevant pleadings in the Civil Action are attached hereto as Exhibits l—2.
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`1 CCHS stated in the “Related Proceedings” section of its Petition that it “has filed a lawsuit for trademark
`infringement against Registrant and its related company Home Service USA Corp. in the United States District
`Court for the Southern District of Florida, Case No. 08-CV-61456.”
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`

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`II.
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`ARGUMENT
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`The Board has inherent power to suspend proceedings and it has been the Board’s long-
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`standing policy to suspend a Board action when there is a related civil action which may have a
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`bearing on the Board proceeding. See Other Telephone Co. v. Connecticut Nat 7 Telephone Co.,
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`Inc., 181 U.S.P.Q. 125, 126-27 (T.T.A.B. 1974); Townley Clothes, Inc. v. Goldring, Inc, 100
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`U.S.P.Q. 57, 58 (“mt is deemed the sounder practice to suspend the [Board] proceedings
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`pending termination of the Court action.”); 6 J. Thomas McCarthy, MCCARTHY ON
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`TRADEMARKS AND UNFAIR COMPETITION § 32:47 (4th ed. 2008) (“It is standard procedure for the
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`Trademark Board to stay administrative proceedings pending the outcome of court litigation
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`between the same parties involving related issues”); see also T.B.M.P. § 5l0.02(a) and 37
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`C.F.R. § 2.1 17(a). The language of 37 CPR. § 2.1 17(a) makes plain this policy:
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`Whenever it shall come to the attention of the Trademark Trial and
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`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.
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`Further supporting the Board’s preference for suspension is the well—settled principle that
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`to the extent issues in common with those in a Board proceeding may be decided in a federal
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`civil action, the federal court decision is often binding, under principles of collateral estoppel, on
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`the Board but Board decisions are not binding on federal courts. See, e. g., Goya Foods Inc. v.
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`Tropicana Products, Inc., 848 F.2d 848 (2d Cir. 1988); American Bakeries Co. v. Pan—0~Gola’
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`Baking Co., 650 F. Supp. 563 (D. Minn. 1986); In re Alfred Dunhill Ltd, 224 U.S.P.Q. 501
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`(T.T.A.B. 1984) (“A federal court determination of a trademark issue normally has a binding
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`effect in subsequent proceedings before the Board involving the same parties and issue.”)
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`In this case, Petitioner and Respondent are parties in both proceedings. The marks
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`

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`asserted by CCHS in both proceedings are identical (i.e., the HOMESERVE marks). Both
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`proceedings also involve common issues of law because Respondent’s U.S. subsidiary, HSUSA,
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`has counterclaimed for a declaration of non—infringement that HSUSA’s use of the HOME
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`SERVICE marks does not infringe Petitioner’s alleged rights in its HOMESERVE marks.
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`HSUSA’s counterclaim will necessarily be resolved by the district court’s determination on the
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`issue of likelihood of confusion — substantially the same legal standard applied in this
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`Cancellation Proceeding to determine Respondent’s entitlement to maintain its HOME
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`SERVICE registrations. Accordingly, however the district court rules on likelihood of
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`confusion, the district court’s ruling will bear on this Cancellation Proceeding. Furthermore, in
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`resolving the Civil Action, the district court will be required to make findings regarding various
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`factors supporting or negating a likelihood of confusion, namely the strength of the asserted
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`HOMESERVE marks, the proximity of the parties’ services, the relatedness of the trade
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`channels, and consumer sophistication, among other factors. Accordingly, the decision in the
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`Civil Action will have a bearing on this Cancellation Proceeding
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`Conservation of the parties’ resources favor suspension of this Cancellation Proceeding
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`because it is highly likely that both proceedings will involve the production of the same, or
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`substantially the same, documents and will require the testimony of the same witnesses.
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`Moreover, the promotion ofjudicial economy also favor suspension of this Cancellation
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`Proceeding because many (if not all) of the issues will be adjudicated by a single decisional
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`body, the federal district court.
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`In advance of the filing of this motion, Respondent sought Petitioner’s stipulation to
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`suspend these proceedings pending disposition of the Civil Action and was refused. Petitioner
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`did not explain the basis for its refusal to stipulate to the suspension.
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`

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`III.
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`CONCLUSION
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`For all of the forgoing reasons, Respondent Homeserve plc respectfully requests that the
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`Board issue an Order suspending the Cancellation Proceeding pending the outcome of the related
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`Civil Action.
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`Respectfully submitted,
`
`HOMESERVE PLC
`
`Dated: January 19, 2009
`
`
`
`
`rett 1. Miller
`Brian P. O’Donnell
`
`MORGAN, LEWIS & BOCKIUS LLP
`1111 Pennsylvania Avenue, N.W.
`Washington, D.C. 20004
`(202) 739~3000
`(202) 739-3001 (fax)
`
`Counselfor Respondent Homeserve plc
`
`

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`CERTIFICATE OF SERVICE
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`1, Brian P. O’Donnell, do hereby certify that on January 19, 2009 I served a true and
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`correct copy of the foregoing MOTION TO SUSPEND CONSOLIDATED CANCELLATION
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`PROCEEDING AND MEMORANDUM IN SUPPORT THEREOF by first class mail, postage
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`pre-paid, and electronic mail on:
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`David Wolf, Esq.
`John L. Strand, Esq.
`WOLF, GREENFIELD & SACKS, P.C.
`600 Atlantic Avenue
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`Boston, MA 02210
`dwolf@wolfgreenfield.com, jstrand@wolfgreenfield.co1n
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`gas 2" 05%,, £4
`rian P. O’Donnell
`
`MORGAN, LEWIS & BOCKIUS LLP
`
`1111 Pennsylvania Avenue, N.W.
`Washington, D.C. 20004
`(202) 739-3000
`(202) 739-3001 (fax)
`
`

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`Exhibit 1
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`

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`Case O:O8—cv—61456—PAS gcument 1
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`Entered on FLSD Dock tO9/12/2008
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`Page 1 of 22
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF FLORIDA
`
`CASE NO. :
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`08-CV-61456-Seitz-O'Su|livan
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`CROSS COUNTRY HOME SERVICES,
`INC., a Delaware corporation,
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`Plaintiff,
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`V.
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`HOME SERVICE USA CORR, a Florida
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`corporation and
`HOMESERVE PLC, a foreign
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`corporation
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`Defendants.
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`/
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`FlLEDby VT o.c.
`ELECTRONIC
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`SEPT. 12, 2008
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`srsvsw M. uxmmom-:
`CLERK u.s. msr. c7.
`s.o. or FLA.-MIAMI
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`COMPLAINT AND JURY DEMAND
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`Cross Country Home Services, Inc. (“Cross Country Home Services”) brings this civil
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`action against Home Service USA Corp. (“Home Service USA”) and Homeserve plc.
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`NATURE OF ACTION
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`l.
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`Cross Country Home Services contends Home Service USA infringes its federally
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`registered trademarks HOMESERVE and HOMESERVE 24 by using “Homeserve plc” as a
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`mark in promoting identical services in the same trading areas previously established by Cross
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`Country Home Services. Home Services USA’s infringement is apparently controlled and
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`abetted by its United Kingdom parent Homeserve plc.
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`PLAINTIFF CROSS COUNTRY HOME SERVICES, INC.
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`2.
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`Plaintiff, Cross Country Home Services, is a Delaware corporation with its
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`principal place of business at 1625 NW 136th Avenue, Suite 200, Ft. Lauderdale, FL 33323.
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`1of22
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`

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`08—6eVe-6:tM5/6>4$@Il>zeO'ScLdli|i.vram Entered on FLSD Dock tO9/12/2008
`V
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`Page 2 of 22
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`Plaintiff has been engaged in the business of administering various home protection and repair
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`services since 1988.
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`3.
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`Plaintiff owns a number of United States trademark registrations, including for the
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`marks HOMESERVE (U.S. Reg. No. 2,944,609; registered April 26, 2004) for home
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`maintenance repair services provided through a network of selected independent contractors;
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`and, HOMESERVE 24 (U.S. Reg. No. 2,103,948; registered Oct. 7, 1997) for home maintenance
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`repair services provided through a network of selected independent contractors (the
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`“HOMESERVE marks”). The registrations for the HOMESERVE marks are in full force and
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`effect. The registration for HOMESERVE 24 is incontestable. Copies of these registrations are
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`attached to this Complaint as Exhibits A and B.
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`4.
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`Plaintiff also owns rights in the HOMESERVE marks at common law.
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`DEFENDANTS
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`5.
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`Defendant Home Service USA, is a Florida corporation whose principal place
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`of business is at 5301 Blue Lagoon Drive, Suite 400, Miami, FL 33126.
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`6.
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`Defendant I-Iomeserve plc is a U.K. corporation having its principal place of
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`business at Cable Dr., Walsall, West Midlands WS2 7BN, England.
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`JURISDICTION
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`7.
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`This is an action for trademark infringement and unfair competition arising under
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`the laws of the United States, namely the Lanham Act, 15 U.S.C. § 1051, et seq. Therefore, this
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`Court has jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338. This Court has supplemental
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`jurisdiction over Cross Country Home Services’ state—law claim pursuant to 28 U.S.C. §1367 in
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`that the state law claim is integrally related to the Federal claim and arises from a common
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`3426239
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`2 M22
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`_ 2 __
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`

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`08-edele-6:3815&‘l$£il>Z£i‘S’cldi1iitVl8|l1
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`Entered on FLSD Dock t 09/12/2008
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`Page 3 of 22
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`nucleus of operative facts such that the administration of such claims herein is in the interest of
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`judicial economy.
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`8.
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`This Court has personal jurisdiction over Home Service USA, which is a citizen
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`of Florida and a resident of Miami, Florida. This Court has personal jurisdiction over
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`Homeserve plc pursuant to Fla. Stat. § 48. l 93(b) because Homeserve plc committed tortious acts
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`of trademark infringement and unfair competition in Florida.
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`9.
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`Venue is proper in this Court under 28 U.S.C. § 1391 because at least a
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`substantial part of the events giving rise to the claims of this complaint took place in this judicial
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`district because Cross Country Home Services is based in this district as is Home Services USA.
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`BACKGROUND
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`10.
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`Defendant Homeserve plc, a company based in United Kingdom, formed the
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`Home Service USA Corp., as a subsidiary corporation in the United States. Homeserve plc uses
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`the mark HOMESERVE in the U.K. for services identical to those offered by Home Service
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`USA in the U.S.
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`11.
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`Home Service USA offers nearly identical services as Cross Country Home
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`Services in identical or overlapping trading areas under and in connection with the infringing
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`mark HOMESERVE. This use is exemplified on Home Service USA’s website and marketing
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`materials which display the following use of the mark HOMESERVE:
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`Home Service A
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`USA
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`or Homeserve pl:
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`12.
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`On information and belief, Horneserve plc has authority over Home Service
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`USA’s transactions, including Home Service USA’s uses of the mark HOMESERVE.
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`$426239
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`3of22
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`_ 3 _,
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`

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`Case 0:08-cv—61456-PAS
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`egcument 1
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`Entered on FLSD Dock t 09/12/2008
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`Page 4 of 22
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`13.
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`These activities occurred notwithstanding Home Service USA’s and Horneserve
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`plc’s knowledge of the longtime use, ownership and registration of the I-IOMESERVE marks by
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`Cross Country Home Services in the United States.
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`14.
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`On information and belief, Home Service USA adopted and uses the mark
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`HOMESERVE at the direction of Homeserve plc, despite their knowledge of the longtime use,
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`Ownership and registration of the HOMESERVE marks by Cross Country Home Services.
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`15.
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`Cross Country Home Services’ common law and registered rights in the
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`HOMESERVE marks pre-date Home Service USA’s use of HOMESERVE.
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`16.
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`Cross Country Home Services placed Home Service USA on actual notice of the
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`similarity and likelihood of confusion between Home Service USA’s uses of HOMESERVE and
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`Cross Country Home Services’ HOMESERVE marks.
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`17.
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`Home Service USA willfully disregarded Cross Country Home Services" rights
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`and continued to use HOMESERVE in interstate commerce.
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`18.
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`The acts of Home Service USA and Homeserve plc, as described above, were and
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`are willful and made with knowledge of Cross Country Home Services’ prior ownership and
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`registration of the HOMESERVE marks.
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`COUNT I
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`(Trademark Infringement under 15 U.S.C. § 1 1 14)
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`19.
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`The allegations of Paragraphs 1-18 above are incorporated by reference.
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`20.
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`Cross Country Home Services owns United States Registrations numbered
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`2,944,609, and 2,103,948 (incontestable).
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`21.
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`Home Service USA uses colorable imitations of Cross Country Home Services’
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`HOMESERVE marks in commerce as its trademark, and in association with its sale and
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`3425239
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`., 4 ,
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`Case 0:08-cv-61456-PAS gicumentii
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`Entered on FLSD Dock t 09/12/2008
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`Page 5 of 22
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`advertisement of services similar or identical to the types of services sold by Cross Country
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`Home Services under Cross Country Home Services’ HOMESERVE marks.
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`22.
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`Home Service USA’s use of HOMESERVE is without permission of Cross
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`Country Home Services and is likely to cause confusion or mistake or to deceive. Home Service
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`USA is therefore liable to Cross Country Home Services for infringement under 15 U.S.C. §
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`1114.
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`23.
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`On information and belief, such use by Home Service USA is knowing and
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`willful and with the intent to trade off the good will established by Cross Country Home Services
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`in its HOMESERVE marks.
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`24.
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`On information and belief, Homeserve plc induced Home Service USA’s
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`infringement of the HOMESERVE marks.
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`In addition, on information and belief, Horneserve
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`plc controls Home Service USA’s use ofthe HOMESERVE mark. Horneserve plc is therefore
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`contributorily and vicariously liable to Cross Country Home Services for infringement under 15
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`U.S.C.§ H14.
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`25.
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`Cross Country Home Services has been damaged by such conduct in an amount to
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`be determined at trial.
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`26.
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`Unless enjoined, Home Service USA’s and Horneserve plc’s behavior will
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`continue and will cause Cross Country Home Services to suffer irreparable harm for which there
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`is no adequate remedy at law. Therefore, Cross Country Home Services is entitled to injunctive
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`relief.
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`It is also entitled to damages for the infringement.
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`M2623‘?!
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`‘ 5 W
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`Case 0:08-cv—61456-PAS Document 1
`V
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`Entered on FLSD Docket 09/12/2008
`w
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`Page 6 of 22
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`v~
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`(False Designation of Origin under 15 U.S.C.§ 1125(a))
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`COUNT II
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`27.
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`28.
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`The allegations of Paragraphs l-18 above are incorporated by reference.
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`Cross Country Home Services’ HOMESERVE marks are recognized for quality
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`in the home service repair industry.
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`29.
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`Home Service USA provides its goods to a similar if not identical class of
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`consumers as Cross Country Home Services in the same areas.
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`30.
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`Home Service USA’s use of a mark confusingly similar to Cross Country Home
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`Services’ HOMESERVE marks has the effect of associating Home Service USA with Cross
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`Country Home Services’ HOMESERVE marks in the minds of the purchasing public and of
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`trading off the goodwill acquired by Cross Country Home Services.
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`31.
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`Home Service USA’s actions are likely to cause confusion or mistake, or to
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`deceive as to the affiliation, connection or association of Home Service USA with Cross Country
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`Home Services or as to the origin, sponsorship or approval of Home Service USA’s goods by
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`Cross Country Home Services, entitling Cross Country Home Services to relief under 15 U.S.C.§
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`l 125(a).
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`32.
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`On information and beliefi Homeserve plc induced Home Service USA’s
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`infringement of the HOMESERVE marks and Homeserve plc controls Home Service USA’s use
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`of the HOMESERVE mark. Homeserve plc is therefore contributorily and vicariously liable to
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`Cross Country Home Services under 15 U.S.C. § 1l25(a).
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`33.
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`Cross Country Home Services has been damaged by such conduct in an amount to
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`be determined at trial.
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`34.
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`Unless enjoined, Home Service USA’s behavior will continue and will cause
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`Cross Country Home Services to suffer irreparable harm ‘for which there is no adequate remedy
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`mzszss»
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`- 5 -
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`

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`Case 0:08-cv—61456—PAS
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`{Document 1
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`Entered on FLSD Docket 09/12/2008
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`Page 7 of 22
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` r
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`at law. Therefore, Cross Country Home Services is entitled to injunctive relief.
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`It is also entitled
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`to damages for such false designation of origin.
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`COUNT III
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`(Common Law Unfair Competition)
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`35.
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`36.
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`The allegations of Paragraphs l-l8, above are incorporated by reference.
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`Cross Country Home Services owns respective rights in the HOMESERVE and
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`HOMESERVE 24 marks at common law.
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`37.
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`By the above-described conduct, Home Service USA and Homeserve plc have
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`engaged in unfair competition under common law.
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`38.
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`Cross Country Home Services has been damaged by such conduct in an amount to
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`be determined at trial.
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`39.
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`Unless enjoined, Home Service USA’s and Homeserve plc’s behavior will
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`continue and will cause Cross Country Home Services to suffer irreparable harm for which there
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`is no adequate remedy at law. Therefore, Cross Country Home Services is entitled to injunctive
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`relief.
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`It is also entitled to damages for such conduct.
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`RELIEF REQUESTED
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`For the above reasons, Cross Country Home Services prays that the Court declare and a
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`judgment be entered that:
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`A.
`
`B.
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`The Court has jurisdiction over the parties and subject matter of this action;
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`Cross Country Home Services’ HOMESERVE marks and U.S. Registration Nos.
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`2,944,609 and 2,103,948 are valid and subsisting and are infringed by Home Service USA;
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`5425239
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`, 3; ,
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`Case O:O8—cv-61456—PAS iefocument 1
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`Entered on FLSD Dcilset 09/12/2008
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`Page 8 of 22
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`'
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`C.
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`Home Service USA and Homeserve plc are liable to Cross Country Home
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`Services for infringement and false designation under 15 U.S.C. §§ 1114, l125(a) and common
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`law;
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`D.
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`Home Service USA and Ho-meserve plc have committed unfair competition under
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`the common law;
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`E.
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`Home Service USA and Homeserve plc, as well as all their agents,
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`representatives, employees, assigns and all persons acting in concert or privity with them, are
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`permanently enjoined from maintaining, using, disseminating, reproducing, promoting,
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`distributing or otherwise using the mark HOMESERVE or any mark confusingly similar thereto,
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`and are permanently enjoined from using HOMESERVE as all or part of any mark, product
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`configuration, or design;
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`F.
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`Home Service USA’s and Homeserve plc’s infringement, false designation of
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`origin and unfair competition have been willful;
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`G.
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`Home Service USA shall deliver to Cross Country Home Services or to the Court
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`for destruction all materials bearing the infringing marks or colorable copies of Cross Country
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`Home Services’ marks, and shall immediately delete all on-line usage of the HOMESERVE
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`marks;
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`H.
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`Home Service USA and Homeserve plc shall file and serve a report in writing,
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`and under oath, setting forth the manner and form in which they have complied with the Court’s
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`order and injunction;
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`I.
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`Home Service USA and Horneserve plc shall pay to Cross Country Home
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`Services any damages attributable to Home Service USA’s and Homeserve plc’s infringement of
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`Cross Country Home Services’ HOMESERVE marks and shall account for all gains, profits, and
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`1425239
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`_ 3 _
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`

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`Case O:O8—cv«61456-PAS klaecument 1
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`Entered on FLSD Doflkjet 09/12/2008
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`Page 9 of 22
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`—< ,
`
`advantages derived through that infringement (including an accounting up through the entry of
`
`injunction), and such damages authorized by law, including 15 U.S.C. § ll 17;
`
`J.
`
`Home Service USA and Homeserve plc shall pay for corrective advertising as the
`
`Court deems appropriate;
`
`K.
`
`Home Service USA and Horneserve plc shall pay Cross Country Home Services
`
`its reasonable costs pursuant to 28 U.S.C. § 1920 and attorneys’ fees pursuant to 15 U.S.C. §
`
`lll7; and,
`
`L.
`
`Cross Country Home Services be given such other and further relief as this Court
`
`may award.
`
`2425239
`
`- 9 -
`
`

`
`Case 0:08—cv—61456-PAS wcument 1
`
`Entered on FLSD Docket 09/12/2008
`\J
`
`Page 10 of 22
`
`
`
`JURY DEMAND
`
`Cross Country Home Services demands a trial by jury of all issues so triable.
`
`Dated:
`
`/8’; 07038
`
`Respectfully Submitted,
`
`FELDMAN, GALE, P.A.
`One Biscayne Tower, 30”‘ Floor
`2 South Biscayne Boulevard
`Miami, Florida 33131-4332
`Phone:
`305-358~500l
`Fax:
`305—358~3309
`
`J
`
`unn
`
`Fla. Bar. No.: 50l28l
`
`E-Mail: JMum1./cDFeldn1anGale.com
`
`Stephanie C. Alvarez
`Fla. Bar. No.: 127280
`
`E-Mail: SAlvmez@FeldmmGale.com
`
`OF COUNSEL:
`
`David Wolf
`
`dwolf@wolfgreenf1eld.com
`John L. Strand
`
`jstrand@wolfgreenfield.com
`WOLF GREENFIELD & SACKS, RC.
`600 Atlantic Avenue
`
`Boston, MA 02210
`
`phone 617.646.8000
`fax 617.646.8646
`
`Counsel for Plaintiff
`
`Cross Country Home Services, Inc.
`
`E42523?
`
`

`
`Case O:O8—cv-61456-PAS
`
`eflcument 1
`
`Entered on FLSD Doc‘k3t 09/12/2008
`
`Page 11 of 22
`
`
`
`EXHIBIT A
`
`

`
`Case O:O8—cv—61456—PAS Qcfittment 1
`
`Entered on FLSD Doel<‘:3’t 09/12/2008
`
`Page 12 of 22
`
`
`
`
`
`CERTIFICATE OF REGISTRATION
`
`’ PRINCIPAL REGISTER
`
`The Mark shown in this certificate has been registered in the United States
`Patent and Trademark Oflce to the named registrant.
`
`The records of the United States Patent and Yiademark Oflice show that
`an application for registration ofthe Mark shown in this Certzfcate was filed in the
`Ofiice; that the application was examined and determined to be in compliance with
`the requirements ofthe law and with the regulations prescribed by the Director ofthe
`United States Patent and Yhademanlc Oflice; and that the Applicant is entitled to
`regishation ofthe Mark under the 2hza'emarkAct qf1946, awlmended.
`
`A copy of the Mark and pertinent data from the application are part of
`this certificate.
`
`the owner of the
`To avoid CANCELLATION of the registration,
`registration must submit a declaration of continued use or excusable non-use
`between tltefiflh and sixth years after the registration date. (See nextpagefor more
`infonnation.) Assuming such a declaration is properly filed, the registration will
`remain inforcefor ten (10) years, unless terminated by an order ofthe Commissioner
`for Trademarks or a federal court. (See next page firr information on maintenance
`requirementsfin‘ successive ten-yearperiods.)
`
`
`
`I
`
`

`
`.__Case O:O8—cv~61456-PAS ®)cu_ment 1
`
`Entered on FLSD D$tAQ9/12/2008
`
`Page ‘I3 of 22
`
`
`
`Int. CL: 37 '
`
`Prior U.S. Cls.: 100, 103, and 106
`
`Reg. No. 2,944,609 .
`United States Patent and Trademark Office
`Regktemi Apr..26, 2005
`
`SERVICE MARK
`PRINCIPAL REGISTER
`
`HOMESERVE
`
`CROSS COUNTRY HOME SERVICES, INC. (DE-
`LAWARE CORPORATION)
`1625 NW l36'l'H AVENUE. #100
`FT. LAUDERDALE. FL 33323
`
`FOR: HOME MAINTENANCE REPAIR SERVICES
`PROVIDED THROUGH A NETWORK OF SELEC-
`TED INDEPENDENT CONTRACTORS, IN CLASS 37
`(US. CLS. 100. 103 AND 106).
`
`FIRST USE M-I999; IN COMMERCE I-I-1999.
`
`OWNER OF U.S. REG. NO. 2.l03.948.
`
`SN '76-S33.6}6. FILED 7-30-2003.
`
`BRIAN BROWN, EXAMINING ATTORNEY
`
`

`
`Case 0:08-cv-61456—PAS gcument 1
`
`Entered on FLSD Dockgt 09/12/2008
`
`Page 14 of 22
`
`
`
`EXHIBIT B
`
`

`
`Case 0:O8—cv—61456—PAS
`
`Qofiument 1
`
`Entered on FLSD Docket 09/12/2008
`5)
`
`Page 15 of 22
`
`
`
`
`
`CERTIFICATE OF REGISTRATION
`PRINCIPAL REGISTER
`
`
`
`2
`
`The Markshown tnthis certgficate has been registeredin the UnitedStates
`Patent and Ilmdemarlt Ojffice to the named registrant.
`
`The records ofthe United States Patent and Iiademark Oflice show that
`
`an applicationfor registmtion ofthe Mark shown in this Cettiflcate wasfiled in the
`
`Ofiice, that the application was examined and determinedto be in compliance with
`the requirements Qfthe law and with the regnlatianspreecribed by the Cbmmission er
`
`ofPatents and Thademarlts, and that the Applicant is entitled to registration of the
`
`Mark under the Thtdemarlt Act of1946, as Amended.
`
`A copy of the Mark and pertinent data from the application are a part of
`
`this certificate.
`
`This registration shall remain in force for TEN (10) years, unless .
`
`terminated earlier as provided by law, andsubject to compliance with theprovisions
`
`ofSection 8 ofthe 1}'ademarkAct of1946, as Amended.
`
`Commissioner of Patents and 'n'adcmarks
`
`

`
`Case 0:08-cv-61456-PAS Qcyument 1
`i
`
`Entered on FLSD Docket O9/12/2008
`J
`
`Page 16 of 22
`
`‘
`
`Int. CL: 37
`
`Prior U.S. Cls.: 100, 103; and 106
`
`A Reg. No. 2,103,948
`United States Patent and Trademark.Office
`Registered Oct. 7, 1991
`
`SERVICE MARK
`PRINCIPAL REGISTER
`
`HOMESERVE 24
`
`I0—O-I995;
`
`FIRST USE
`I0‘-0-I995.
`NO CLAIM IS MADE TO THE EXCLUSIVE
`RIGHT TO USE “24", APART FROM 'I’I'lE
`MARK AS SHOWN.
`
`IN COMMERCE .
`
`SN 74—7I7.065. FILED 8-f7-1995.
`
`KAREN KUHLKE. EXAMINING ATTORNEY
`
`CROSS COUNTRY GROUP, INC... THE (MASSA-
`CHUSETTS CORPORATION)
`4040 MYSTIC VALLEY PARKWAY
`BOSTON, MA 02155
`
`I’-‘OR: HOME MAINTENANCE REPAIR SERV~
`ICES PROVIDED THROUGH A NETWORK OF
`SELECTED INDEPENDENT CONTRACTORS.
`IN CLASS‘ 37 (US. CLS. I00. 103 AND 106).
`
`‘"Q.‘5ZZ..'—a.»~«......"‘".'..-a-v
`
`

`
`Case O:08~cv—61456—PAS f‘EI)/ocument 1
`
`Entered on FLSD Dock, t 09/12/2008
`
`Page 17 of 22
`
`—
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF FLORIDA
`
`CASE NO.
`
`CROSS COUNTRY HOME SERVICES,
`» INC.,
`
`Plaintiff,
`
`V.
`
`HOME SERVICE USA CORR, and
`HOMESERVE PLC,
`
`Defendants.
`
`NOTICE OF CHANGE OF FIRM AND ADDRESS OF COUNSEL FOR
`
`PLAINTIFF,
`CROSS COUNTRY HOME SERVICES INC.
`
`Janet T. Munn, Esq., of Epstein, Becker & Green, P.C., Counsel for Plaintiff,
`
`Cross County Home Services,
`
`Inc., hereby gives notice of her change of firm and
`
`address. Counsel is now with the firm of Feldman Gale, RA. The address for her new
`
`firm is: Feldman Gale, P.A., One Biscayne Tower, 30"‘ Floor, 2 South Biscayne Blvd.,
`
`Miami, FL 33131.
`
`Her new email address is imunnfcbfeldmangalecom. Her direct
`
`dial
`
`is 305.397.0798 and her telecopy number is 305.358.3309. Undersigned counsel
`
`respectfully requests that the Court change its records to reflect counsel’s new contact
`
`information and that all papers served in this matter be served on counsel at her new
`
`address.
`
`

`
`Case 0:08-cv-61456-PAS Qgcument 1
`
`Entered on FLSD Dock t09/12/2008
`
`Page 18 of 22
`
`CASE NO.
`
`Respectfully submitted,
`
`
`
` anet T. Munn, Esq.
`
`unn
`
`feldman a1e.com
`
`Feldman Gale, P.A.
`One Biscayne Tower, 30"’ FL
`2 South Biscayne Blvd.
`Miami, FL 33131
`Tel. 305.397.0798
`Fax No. 305.358.3309.
`
`Dated:
`
`

`
`Case O:O8—cv—61456-PAS
`
`egmment 1
`
`Entered on FLSD Dockei 09/12/2008
`
`Page 19 of 22
`
`% A0 l20 (Rev. 3/04
`To
`'
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`PO. BOX 1450
`Alexandria. VA 223134450
`
`TRADEMARK
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § ll16 you are hereby advised that a court action has been
`
`Southern Dlstnct of Honda
`on the following G Patents or
`G Trademarks:
`filed in the U.S, District Court
`
`Us’ DISTRICT COUR%outhern District of Florida
`DEFENDANT
`
`
`
`HOME SERVICES USA CORP. and HOMESERV PLC
`
`DATE F”9W2/2008
`
`
`
`
`
`PLAINTIFF
`CROSS COUNTRY HOME SERVICES, INC.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`TR}:gg*A"ER%RNO
`1 Reg. No. 2,944,609
`
`
`
`HOLDER OF PATENT on TRADEMARK
`CROSS COUNTRY HOME SERVICES, INC.
`
`4/26/2004
`
`
`
`
`
`2 Reg. No. 2103.948
`10/7/1997
`CROSS COUNTRY HOME SERVICES, INC.
`——
`
`
`——
`
`
`
`
`
`In the above-—entiIled case, the following patent(s)/ tradernarl<(s) have been included:
`
`INCLUDED BY
`
`G Amendment
`
`G Answer
`
`G Cross Bill
`
`G Other Pleadin;
`
`
`
`
`
`
`
`E—
`
`I ——
`
`——
` ——
`
`
`
`DECISION/JUDGEMENT
`
`In the above-—-entitled case, the following decision has been rendered or judgement issued:
`
`Copy 1—Upon initiation of action, mail this copy to Director Copy 3-Upon termination of action, mail this copy to Director
`Copy 2-—Upon filing document adding patent (8), mail this copy to Director Copy 4-Case file copy
`
`
`

`
`Case O:O8—cv—61456-PAS
`
`oczument 1
`
`Entered on FLSD Doci<eJt§O9/12/2008
`
`Page 20 of 22
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1450
`
`Alexandria. VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`
` on the following G Patents orSouthern District of Florida G Trademarks:
`
`tiled in the US. District Court
`
`CROSS COUNTRY HOME SERVICES, INC.
`
`DEFENDANT
`HOME SERVICES USA CORP. and HOMESERV PLC
`
` PLAINTIFF
`
`PATENT OR
`TRADEMARK NO
`1 Reg. No. 2,944,609
`2 Reg. No. 2,103,948
`
`DATE OF PATENT
`OR TRADEMARK
`4/26/2004 7
`10/7/1997
`
`HOLDER OF PATENT OR TRADEMARK
`CROSS COUNTRY HOME SERVICES, INC.
`CROSS COUNTRY HOME SERVICES, INC.
`
`INCLUDED BY
`
`G Amendment
`
`G Other Pleadin
`G Cross Bill
`G Answer
`HOLDER OF PATENT OR TRADEMARK
`
`DECISION/JUDGEMENT
`
`Copy 1-Upon initiation of action. mail this copy to Director Copy 3-«Upon termination of action, mail this copy to Director
`Ccpy 2~—Upon filing document adding patent{s}. mail this copy is Director Copy 4»-=Case file copy
`
`
`

`
`Case 0:08-cv-61456-PAS gcument 1
`
`Entered on FLSD Dock t09/12/2008
`
`Page 21 of 22
`
`TRADEMARK
`
`Mail stop 3
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 223134450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`
` on the following G Patents orSouthern District of Home G Trademarks:
`
`filed in the U.S. District Court
`
`PLAINTIFF
`CROSS COUNTRY HOME SERVICES, INC.
`
`DEFENDANT
`HOME SERVICES USA CORP. and HOMESERV PLC
`
`1 Reg. No. 2,944,609
`2 Reg. No. 2,103,9