Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA472087
`ESTTA Tracking number:
`05/11/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92055262
`Plaintiff
`Tenet Federal Credit Union
`TAWNYA R WOJCIECHOWSKI
`TRW LAW GROUP
`19900 MACARTHUR BOULEVARD, SUITE 1150
`IRVINE, CA 92612-8433
`UNITED STATES
`tawnya@trwlawgroup.com
`Other Motions/Papers
`Tawnya Wojciechowski
`tawnya@trwlawgroup.com, ra@law4cus.com, LS@carepointfinancial.com
`/trw/
`05/11/2012
`Executed motion to enter co-existence agreement.pdf ( 2 pages )(54635 bytes )
`Executed co-existence agreement Carepoint.pdf ( 3 pages )(193218 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Registration No. 3637724
`
`Issued on June 16, 2009
`
`Tenet Federal Credit Union,
`
`Cancellation No.2 92055262
`
`
`
`
`Petitioner,
`
`- against -
`
`CarPoint Financial Services LLC,
`
`Registrant.
`
`Commissioner for Trademarks
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`MOTION AND STIPULATION FOR AMENDMENT OF REGISTRATION
`
`Petitioner Tenet Federal Credit Union, (Petitioner”), a federally chartered credit
`union, located at 2373 West La Palma Avenue, Anaheim, Califomia 92801, and
`Registrant, CarePoint Financial Services LLC (“Registrant”), a Colorado limited liability
`company, located at 9781 S. Meridian Boulevard, Suite 110, Englewood, Colorado
`80112, have agreed to a co-existence agreement which amends United States Trademark
`Registration No. 3637724 for CAREPOINT FINANCIAL for “financial services in the
`field of money lending” in International Class 36 to the following:
`
`“Financial services, namely the purchasing of healthcare receivables from providers
`that work in the field of Worker’s Compensation and personal injury, purchasing private
`pay healthcare receivables, and providing loans to healthcare providers where the
`provider’s receivables and assets are used as collateral, in International Class 36”
`
`

`
`Upon entry of the Amendment and allowance of the Application Serial Number:
`85294952 for Petitioner’s CAREPOINT FEDERAL CREDIT UNION mark by the
`examining attorney, Petitioner will dismiss this cancellation proceeding before the Board.
`
`Date: April 12, 2012
`
`Respectfully submitted
`
`TRW LAW GROUP
`
`/s/
`Tawnya R. Woj ciechowski, Esquire
`TRW Law Group
`19900 MacArthur Boulevard, Suite 1150
`Irvine, CA 92612-8433
`Telephone (949) 701-4747
`Attorney for Petitioner
`Tenet Federal Credit Union
`
`STIPULATED AND CONSENTED:
`
`CarePoint Financial Services LLC
`
`By:
`
`.29-—~
`Date: April 12, 2012
`Larry Sherman
`Chief Executive Officer
`
`

`
`CO-EXISTENCE AGREEMENT
`AND
`
`CONSENT TO CO-EXISTING REGISTRATIONS
`
`day of April, 2012, by and between Tenet Federal Credit
`This Agreement, made this /
`Union, a federally chartered credit union, having a business address of 2372 West La Palma
`Avenue, Anaheim, California 92801 (“Tenet”), and CarePoint Financial Services LLC, a
`Colorado limited liability company, having a business address of 9781 S. Meridian Boulevard,
`Suite 110, Englewood, Colorado 80112 (“CFS”).
`
`Whereas, CFS registered the service mark CAREPOINT FINANCIAL in association with
`“financial services in the field of money lending” under US. Trademark Registration No.:
`3637724, used since as early as November 17, 2006 (referred to hereafter as “CAREPOINT
`FINANCIAL Mark” or “CFS Registration”);
`
`Whereas, Tenet filed an application to register the mark CAREPOINT FEDERAL CREDIT
`UNION for its credit union services; financial services, namely, banking; depository accounts,
`namely savings accounts, checking accounts, money market accounts, certificates of deposit,
`IRAs, deferred compensation accounts; loan programs, namely, vehicle loans, credit cards, lines
`of credit, computer loans, real estate loans, mortgages, home equity loans; online banking
`services, automated teller machine services, home banking, bill pay, electronic deposits, ATM
`access services; investment services, namely,
`investment advice services; fund transfer and
`transaction services; and banking services provided by telephone connections, under Serial
`Number 85294952, (referred to hereafter as “CAREPOINT FEDERAL CREDIT UNION Mark”
`or “Tenet Application”);
`
`Whereas, Tenet’s CAREPOINT FEDERAL CREDIT UNION mark’s application was finally
`refiised at the United States Patent and Trademark Office (“USPTO”) on the basis of the pre-
`existing CAREPOINT FINANCIAL Mark as used for “financial services in the field of money
`lending.” Tenet subsequently filed a petition for partial cancellation of the Registration with the
`Trademark Trial and Appeal Board (“TTAB”) which is currently pending before the TTAB
`under Cancellation Number 92055262 (the “Cancellation Action”) and which the Parties agree
`would be resolved by this Agreement
`
`Whereas, Tenet and CFS agree that there is no likelihood of confusion, mistake or deception
`amongst consumers between the use of the CAREPOINT FINANCIAL Mark and the
`CAREPOINT FEDERAL CREDIT UNION Mark,
`respectively,
`in their respective trade
`territories and markets and for the services of each company, as amended below;
`
`Whereas, Tenet and CFS are each interested in securing and/or maintaining a Federal Trademark
`Registration for their respective marks under the CAREPOINT FINANCIAL Mark and the
`CAREPOINT FEDERAL CREDIT UNION Mark, sometimes collectively referred to as
`“mar
`”) which marks are the subject ofthe application and registration identified above; and
`
`Whereas, Tenet and CFS are willing to take all reasonable steps to cooperate and work together
`to avoid causing confusion in their respective businesses and to eliminate any confusion that may
`arise in the future in connection with the marks;
`
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`

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`Now, therefore, in consideration of good and valuable consideration, it is agreed as follows:
`
`CFS has agreed to amend its Registration at the United States Patent and Trademark
`1.
`Office (“USPTO”) to the following services, which it recognizes is a narrower definition of
`financial services than originally set forth in the Registration, namely “Financial services,
`namely the purchasing of healthcare receivables from providers that work in the field of
`Worker’s Compensation and personal injury, purchasing private pay healthcare receivables, and
`providing loans to healthcare providers where the provider’s receivables and assets are used as
`collatera .” Tenet and CFS also agree to cooperate in facilitating the above amendment of the
`Registration with the USPTO and will provide any further documentation necessary to enter such
`amendment to obtain a new Registration listing the above services.
`
`Tenet and CFS believe that there is no likelihood of confusion or conflict between the
`2.
`marks described above which are the subject of the identified CAREPOINT FEDERAL CREDIT
`UNION Application and the CAREPOINT FINANCIAL SERVICES Registration when used in
`association with the above-identified businesses and services, as amended. Tenet and CFS agree
`to cooperate and work together to minimize, and avoid, causing confusion in their respective
`trades to eliminate any potential for confusion that may arise in the future in relation to their
`respective marks.
`
`Tenet will take no action to contest or interfere with the use and continued registration of
`3.
`the CAREPOINT FINANCIAL SERVICES Mark and Registration and Tenet hereby consents to
`the use and registration of such mark. Similarly, CFS will take no action to contest or interfere
`with the current CAREPOINT FEDERAL CREDIT UNION Application, and the use and
`registration of the CAREPOINT FEDERAL CREDIT UNION Mark and CFS hereby consents to
`the use and registration of such mark.
`
`Once the Registration is amended as set forth in Paragraph 1 above and the Application is
`4.
`allowed by the USPTO by issuance of a Notice of Allowance, the Parties will dismiss the
`Cancellation Action with prejudice. If the request for amendment of CFS’s Registration is denied
`by the Board, CFS will voluntarily surrender the Registration, and file a new application for
`registration of the CFS Mark with the amended identification of services; and Tenet will not
`oppose the new application or seek to cancel any registration that matures therefrom.
`
`Because the Parties wish to insure that there is no confusion, mistake or deception
`5.
`amongst consumers,
`the Parties further agree that any emails,
`telephone communications,
`correspondence, inquiries, or other communications received by one party intended for the other
`will be responded to by a response which:
`
`(A)
`
`promptly informs the originator of the communication that the recipient is
`not Tenet or CFS, whichever is applicable;
`
`(B)
`
`informs the originator that the recipient is not related in any way to the
`other party;
`
`(C)
`
`informs the originator of the communication that the party they are
`seeking may be contacted at the address shown above or such other addresses
`as one party may specify to the other by written notice; and
`
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`(D)
`
`does not include an express or implied attempt or willingness to interest
`the communicator in the services of the recipient.
`
`Each party shall take any and all steps and execute, acknowledge and deliver any and all
`6.
`further documents that the other may reasonably request to effectuate the intent and purpose of
`this Agreement.
`
`The failure of either party to insist on any one or more instances upon strict performance
`7.
`by the other if its obligations hereunder shall not constitute a waiver or relinquishment of any
`such obligation for the future and the obligation shall continue in full force and effect.
`
`This Agreement shall be made binding upon, and shall
`8.
`successors and assigns of the parties.
`
`inure to the benefit of, the
`
`in perpetuity unless rescinded,
`This Agreement shall continue in force and effect
`9.
`modified or revised by the parties, in a written document executed by the parties or their
`successors and assigns; however, in the event that one of the parties, including all successors and
`assigns with respect to such marks, abandons its respective mark, the other party shall not be
`bound by the terms of this Agreement.
`
`In witness whereof, the Parties by their duly authorized representatives have executed this
`Agreement on the date first written above.
`'
`
`CarePoint Financial Services LLC
`
`By:
`PrintName and Title:
`
`
`
`£»4f~_1E"Z
`
`S H5-/"Ni I‘l"\/
`
`Tenet Federal Credit Union
`
`/
`
`DWT 144636l8v3 0089458—000005
`Coexistence and consent to coexisting regislJ'ations.doc