Springfield Professional Park, 8322A Traford Lane, Springfield, Virginia 22152
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`Attorney and Counsellor at Law
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`Telephone No. (703) 644-5000
`Fax No. (703) 644-5755
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`E-Mail: nfmlaw@msn.com
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`TTAB
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`March 30, 2009
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`FEDERAL EXPRESS TRACKING NO. 8545 6802 9527
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`Trademark Assistance Center
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`Madison East, Concourse Level Room C 55
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`600 Dulany Street
`Alexandria, VA 22314
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`A»
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`</ /‘ »,
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`’
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`Re: Mercer Insurance Group, Inc. v. Mercer, Inc.
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`Trademarks: MERCER HEALTH PLAN SOLUTIONS Reg. 2,635,835
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`MERCER Reg. 2,902,605
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`MERCER Reg. 2,945,426
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`MERCER GLOBAL INVESTMENTS Reg. 3,532,408
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`Enclosed please find a Consolidated Petition for Cancellation for the above identified marks.
`A check in the amount of $300.00 is enclosed to cover the applicable fee.
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`If the enclosed fee payment is found inadequate, please draw any additional amount from my
`deposit account number 13-1720.
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` ‘ omey for Opposer
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`Enclosures
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`lilllllllllillllllllllllllllllllllllllllililllllli
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`U301-2009
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`MERCER INSURANCE GROUP, INC.
`
`) Cancellation No.
`
`Petitioner,
`
`‘v.
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`MERCER, INC.
`
`Registrant.
`
`)
`) Registration No. 2,635,835
`) Registration No. 2,902,605
`) Registration No. 2,945,426
`) Registration No. 3,532,408
`)
`)
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`CONSOLIDATED PETITION FOR CANCELLATION
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`Petitioner, Mercer Insurance Group, Inc., a Pennsylvania corporation, located and doing
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`business at 10 North Highway 31 Pennington, New Jersey 08534, (hereinafter “Petitioner”), believes
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`that it will be damaged by U.S. Registration Nos. 2,635,835; 2,902,605; 2,945,426; and 3,532,408
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`reportedly owned by Mercer, Inc., a corporation of Delaware, having a place of business of business
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`at 1 166 Avenue of the Americas, New York, New York 10036, (hereinafter “Registrant”), and
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`hereby petitions to cancel the aforementioned registrations.
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`The grounds for cancellation are as follows:
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`1.
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`Petitioner is an insurance holding company that through its subsidiaries undervvrites
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`property, casualty, and business insurance and processes claims for homeowners, vehicle owners,
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`property owners, and business owners for all types of fire, property, casualty, automobile, liability,
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`and workers’ compensation insurance excluding life and health insurance.
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`2.
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`Registrant is a global consulting firm active in all aspects of strategic and operation
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`human resource consulting and implementation. Areas of emphasis include, but are not limited to,
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`employee benefits, compensation communication and actuarial services, risk management and
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`financial and investment services, and insurance brokerage services.
`04/O2/2009 SHILSDIT 00000001 3902605
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`01 FC:640l
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`7.r"»fl1
`
`;'
`
`.";I
`
`

`
`Consolidated Petition for Cancellation of
`Registration Nos. 2,635,835; 2,902,605; 2,945,426; and 3,532,408
`FEDERAL EXPRESS TRACKING NO. 8545 6802 9527
`
`Page 2
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`3;
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`On information and belief, Registrant owns Registration No. 2,902,605 that issued on
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`November 16, 2004 for the standard character mark MERCER, and Registration No. 2,945,426 that
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`issued on May 3, 2005 for the stylized mark MERCER, both for “financial analysis and consultation;
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`financial management; financial planning; financial portfolio management; financial research;
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`insurance consultation and administration; consultation and administration of employee pension
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`plans and employee benefits plans; insurance brokerage services,” in International Class 36.
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`4.
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`On information and belief, Registrant owns Registration 2,635,835 that issued on
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`October 15, 2002 for the standard character mark MERCER HEALTH PLAN SOLUTIONS for
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`“consulting and administration services in the field of health insurance,” in International Class 36.
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`5.
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`On information and belief, Registrant owns Registration 3,532,408 that issued on
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`November 11, 2008 for the stylized mark MERCER GLOBAL INVESTMENTS for “investment
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`services, namely, brokerage, consultation, and management; financial analysis and consultation;
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`financial management; financial plarming; financial portfolio management; financial research; asset
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`management; investment portfolio administration; consulting services in the field of banking,
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`securities, asset management and insurance; financial modeling; risk management, namely, risk
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`analytics and quantification of performance, risk and projected outcomes; banking services; trust
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`services, namely, investment and trust company services; mutual funds, including brokerage,
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`distribution and investment,” in International Class 36.
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`6.
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`On January 18, 2005, Petitioner filed application Serial No. 76/628,589 for the mark
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`MERCER INSURANCE COMPANY for “property, casualty, and business insurance underwriting
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`and claims processing services rendered to homeowners, vehicle owners, property owners, and
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`

`
`Consolidated Petition for Cancellation of
`Registration Nos. 2,635,835; 2,902,605; 2,945,426; and 3,532,408
`FEDERAL EXPRESS TRACKING NO. 8545 6802 9527
`
`Page 3
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`business-owners for all types of fire, property, casualty, automobile, liability, and workers‘
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`compensation insurance excluding life and health insurance,” in International Class 36.
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`7.
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`On May 10, 2002, Petitioner filed application Serial No. 76/405,138 for the mark
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`THE MERCER INSURANCE GROUP for “property, casualty, and business insurance underwriting
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`and claims processing services rendered to homeowners, vehicle owners, property owners, and
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`business owners for all types of fire, property, casualty, automobile, liability, and workers’
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`compensation insurance excluding life and health insurance,” in International Class 36.
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`8.
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`In 1844, Petitioner’s subsidiary Mercer Insurance Company, now a Pennsylvania
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`corporation, initially became a corporation of the State of New Jersey when the New Jersey
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`Legislature passed a Special Act entitled “An Act to Incorporate the Mercer County Mutual Fire
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`Insurance Company.”
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`9.
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`Since at least as early as 1844 until 1959, Petitioner’s subsidiary Mercer Insurance
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`Company exclusively and continuously used the trade name and mark MERCER COUNTY
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`MUTUAL FIRE INSURANCE COMPANY to identify and distinguish its fire insurance
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`underwriting and claims processing services, and for its 115 year exclusive and continuous use, the
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`mark of Petitioner’s subsidiary, Mercer Insurance Company, became known to purchasers as
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`performing a source-identifying function for its services.
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`10.
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`In 1958, Mercer County Mutual Fire Insurance Company amended its act of
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`incorporation to change its trade name to Mercer Mutual Insurance Company; expanded its fire
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`insurance coverage to include other property and casualty lines to better serve its customers and meet
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`the needs of a changing property-casualty insurance marketplace; and used the mark MERCER
`
`

`
`Consolidated Petition for Cancellation of
`Registration Nos. 2,635,835; 2,902,605; 2,945,426; and 3,532,408
`FEDERAL EXPRESS TRACKING N0. 8545 6802 9527
`
`Page 4
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`MUTUA-L INSURANCE COMPANY as a source—identifying function for its expanded services.
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`1_l.
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`Since at least as early as 1959, Petitioner’s subsidiary exclusively and continuously
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`used the trade name and mark MERCER MUTUAL INSURANCE COMPANY until 2003 when its
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`trade name and mark changed to MERCER INSURANCE COMPANY to identify and distinguish its
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`“property, casualty, and business insurance underwriting and claims processing services rendered to
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`homeowners, vehicle owners, property owners, and business owners for all types of fire, property,
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`casualty, automobile, liability, and workers’ compensation insurance excluding life and health
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`insurance,” in International Class 36.
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`12.
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`Since at least as early as 1981, Mercer Insurance Company incorporated in New
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`Jersey and used its trade name as a service mark MERCER INSURANCE COMPANY for a source-
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`identifying function of its property, casualty, and business insurance underwriting and claims
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`processing services rendered to homeowners, Vehicle owners, property owners, and business owners
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`for all types of fire, property, casualty, automobile, liability, and workers’ compensation insurance
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`excluding life and health insurance, in International Class 36. In 1997, Mercer Insurance Company
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`changed its name to Mercer Insurance Company of New Jersey and became Petitioner’s subsidiary.
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`13.
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`In 1997, Petitioner’s 1844 subsidiary redomesticated its 153 year old New Jersey
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`corporation in Pennsylvania with the trade name, Mercer Mutual Insurance Company, that continued
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`to also use it as a service mark to identify its services, and in 2003 through conversion from mutual
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`to stock form, Petitioner’s 1844 subsidiary changed the Pennsylvania corporation trade name to
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`Mercer Insurance Company that it also continued to use as a service mark for the same services it
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`had conducted since 1959.
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`14.
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`Since at least as early as 1959, Petitioner’s 1844 subsidiary’s legally equivalent marks
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`

`
`Consolidated Petition for Cancellation of
`Registration Nos. 2,635,835; 2,902,605; 2,945,426; and 3,532,408
`FEDERAL EXPRESS TRACKING NO. 8545 6802 9527
`
`Page 5
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`MERCER MUTUAL INSURANCE COMPANY and MERCER INSURANCE COMPANY having
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`the same commercial impression, have been exclusively, continuously, and consecutively used to
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`identify and distinguish its services identified in International Class 36. Thus Petitioner enjoys
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`priority of use of its composite MERCER INSURANCE COMPANY mark over Registrant’s
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`Registrations 3,532,408; 2,902,605; and 2,945,426.
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`15.
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`Since at least as early as 1997, Petitioner was incorporated in Pennsylvania with the
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`trade name Mercer Insurance Group, Inc. and used its trade name as a service mark THE MERCER
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`INSURANCE GROUP as a source-identifying function for its subsidiaries’ services, namely,
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`“insurance underwriting and claims processing services for all types of insurance excluding life and
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`health insurance,” in International Class 36. Thus Petitioner enjoys priority of use of its composite
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`THE MERCER INSURANCE GROUP mark over Registrant’s Registration 2,635,835.
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`16.
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`Since at least as early as 1981, Mercer Insurance Company, now Petitioner’s
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`subsidiary, incorporated in New Jersey and uses its trade name as a service mark MERCER
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`INSURANCE COMPANY as a source-identifying function for its services, namely, insurance
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`underwriting and claims processing services for workman’s compensation, customized coverage for
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`artisan contractors, excess liability limits for business owners, coverage for business vehicles,
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`personal injury protection, and customized coverage for non-profit religious institutions excluding
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`life and employee health benefits insurance, in International Class 36. Thus Petitioner enjoys
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`priority of use of its composite MERCER INSURANCE COMPANY mark over Registrant’s
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`Registration 3,532,408.
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`17.
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`Registrant identified the date of first use of the standard character mark MERCER as
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`“l9750000” or December 31, 1975.
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`

`
`Consolidated Petition for Cancellation of
`Registration Nos. 2,635,835; 2,902,605; 2,945,426; and 3,532,408
`FEDERAL EXPRESS TRACKING N0. 8545 6802 9527
`
`Page 6
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`18.
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`Registrant identified the date of first use of the stylized mark MERCER as
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`“l97500_00” or December 31, 1975.
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`19.
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`Registrant identified the date of first use of the standard character mark MERCER
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`HEALTH PLAN SOLUTIONS as “1999l130” or November 11, 1999.
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`20.
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`Registrant identified the date of first use of the stylized mark MERCER GLOBAL
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`INVESTMENTS as “2005033l” or March 31, 2005.
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`21.
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`Petitioner’s applications in the United States Patent and Trademark Office to register
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`the marks MERCER INSURANCE COMPANY and THE MERCER INSURANCE GROUP for
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`services identified in International Class 36 have been refused registration by the Patent and
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`Trademark Office on the basis of Registrant’s Registration Nos. 2,902,605 and 2,945,426.
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`22.
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`Petitioner’s application in the United States Patent and Trademark Office to register
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`the mark THE MERCER INSURANCE GROUP for services identified in International Class 36
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`have been refused registration by the Patent and Trademark Office on the basis of Registrant’s
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`Registration No. 2,635,835.
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`23.
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`Petitioner’s application in the United States Patent and Trademark Office to register
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`the mark MERCER INSURANCE COMPANY for services identified in International Class 36 have
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`been refused registration by the Patent and Trademark Office on the basis of Registrant’s
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`Registration No. 3,532,408.
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`24.
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`Unless Registration Nos. 2,635,835; 2,902,605; 2,945,426; and 3,532,408 are
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`cancelled, Petitioner will likely not be able to register its marks in lntemational Class 36 and
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`Petitioner’s use of said marks could be impaired and subject to attack. Petitioner will be damaged
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`thereby within the meaning of 15 U.S.C. §l064 since it will not have the protection afforded by the
`
`

`
`Consolidated Petition for Cancellation of
`Registration Nos. 2,635,835; 2,902,605; 2,945,426; and 3,532,408
`FEDERAL EXPRESS TRACKING N0. 8545 6802 9527
`
`Page 7
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`Trademark Act of 1946 and may be forced to use its marks under a threat of interference that is
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`inappropriate.
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`WHEREFORE, Petitioner prays that Registration Nos. 2,635,835; 2,902,605; 2,945,426; and
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`3,532,408 be cancelled.
`
` eil F.
`
`arkva
`
`A ' mey for Petitioner
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`CERTIFICATE OF MAILING
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`I hereby certify that this Consolidated Petition for Cancellation is being deposited with the
`Federal Express Overnight Delivery with the FEDERAL EXPRESS TRACKING N0. 8545 6802
`9527 in an envelope addressed to: Trademark Assistance Center Ma ' on East, Concourse Level
`Room C 55, 600 Dulany Street, Alexandria, VA 22314
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`the dat
`
`
`Neil F. Markva
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`Dated: March 30, 2009