Trademark Trial and Appeal Board Electronic Filing System. httgj/estta.usQto.gov
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Notice is hereby given that the following party requests to cancel indicated registration.
`
`Petition for Cancellation
`
`Petitioner Information
`
`Castle Branch, Inc.
`
`Corporation
`
`Citizenship
`
`North Carolina
`
`trademarks@wardandsmith.com
`
`1845 Sir Tyler Drive
`Wilmington, NC 28405
`UNITED STATES
`
`Angela P. Doughty
`Ward & Smith, P.A.
`1001 College Court
`New Bern, NC 28562
`UNITED STATES
`
`Registrations Subject to Cancellation
`
`Registration No
`
`3244047
`
`Registration date
`
`05/22/2007
`
`GERMANY
`
`Registrant
`
`Certiphi Screening, Inc.
`1105 Industrial Boulevard
`
`Southampton, PA 18966
`
`Goods/Services Subject to Cancellation
`
`Class 045. First Use: 2000/08/07 First Use In Commerce: 2000/08/07
`
`BACKGROUND SCREENING SERVICES TO THE HEALTHCARE INDUSTRY
`
`All goods and services in the class are cancelled, namely: PROVIDING PRE-EMPLOYMENT
`
`Grounds for Cancellation
`
`GERMANY
`
`Certiphi Screening, Inc.
`1105 Industrial Boulevard
`
`Southampton, PA 18966
`
`Registrant
`
`Goods/Services Subject to Cancellation
`
`Class 045. First Use: 2000/08/07 First Use In Commerce: 2000/08/07
`
`All goods and services in the class are cancelled, namely: PROVIDING PRE-EMPLOYMENT
`
`BACKGROUND SCREENING SERVICES TO THE HEALTHCARE INDUSTRY
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA570672
`ESTTA Tracking number:
`11/13/2013
`
`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
`
`Name
`Entity
`Address
`
`Castle Branch, Inc.
`Corporation
`1845 Sir Tyler Drive
`Wilmington, NC 28405
`UNITED STATES
`
`Citizenship
`
`North Carolina
`
`Attorney
`information
`
`Angela P. Doughty
`Ward & Smith, P.A.
`1001 College Court
`New Bern, NC 28562
`UNITED STATES
`trademarks@wardandsmith.com
`Registrations Subject to Cancellation
`
`Registration No
`Registrant
`
`3244047
`Certiphi Screening, Inc.
`1105 Industrial Boulevard
`Southampton, PA 18966
`GERMANY
`Goods/Services Subject to Cancellation
`
`Registration date
`
`05/22/2007
`
`Class 045. First Use: 2000/08/07 First Use In Commerce: 2000/08/07
`All goods and services in the class are cancelled, namely: PROVIDING PRE-EMPLOYMENT
`BACKGROUND SCREENING SERVICES TO THE HEALTHCARE INDUSTRY
`
`Grounds for Cancellation
`
`Torres v. Cantine Torresella S.r.l.Fraud
`Genericness
`Abandonment
`Registration No
`Registrant
`
`3370520
`Certiphi Screening, Inc.
`1105 Industrial Boulevard
`Southampton, PA 18966
`GERMANY
`Goods/Services Subject to Cancellation
`
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`Trademark Act section 23
`Trademark Act section 14
`Registration date
`01/15/2008
`
`Class 045. First Use: 2000/08/07 First Use In Commerce: 2000/08/07
`All goods and services in the class are cancelled, namely: PROVIDING PRE-EMPLOYMENT
`BACKGROUND SCREENING SERVICES TO THE HEALTHCARE INDUSTRY
`
`

`
`Grounds for Cancellation
`
`Torres v. Cantine Torresella S.r./.Fraud
`Genericness
`
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`Trademark Act section 23
`
`Abandonment
`
`3508675
`Certiphi Screening, Inc.
`1105 Industrial Boulevard
`
`Southampton, PA 18966
`GERMANY
`
`Trademark Act section 14
`
`Registration date
`
`Goods/Services Subject to Cancellation
`
`Class 035. First Use: 2000/08/07 First Use In Commerce: 2000/08/07
`
`All goods and services in the class are cancelled, namely: Providing a web-based platform,
`name|y,an on-line interactive computer database featuring pre—emp|oyment background screening
`services for the healthcare industry; providing a website for monitoringand report management of the
`
`09/30/2008 Registrant
`results ofemployee background screening for the healthcare industry
`
`
`Grounds for Cancellation
`
`Torres v. Cantine Torresella S.r./.Fraud
`
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`Trademarmtzs
`Trademark Act section 14
`
`Related
`Proceedings
`
`Petitioner is aware of a Complaint filed, but not served, in the U.S. District Court
`for the Eastern District of Pennsylvania; Certiphi Screening, Inc. v. Castle
`Branch, |nc.; Civil Action No. 2:13—ev—06315—TJS.
`
`Attachments
`
`PetitionforCance||ation.pdf(28404 bytes )
`Exhibits.pdf(780234 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
`
`Angela P. Doughty Date
`
`/APD/
`
`11/13/2013
`
`Grounds for Cancellation
`
`Torres v. Cantine Torresella S.r.l.Fraud
`Genericness
`Abandonment
`Registration No
`Registrant
`
`3508675
`Certiphi Screening, Inc.
`1105 Industrial Boulevard
`Southampton, PA 18966
`GERMANY
`Goods/Services Subject to Cancellation
`
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`Trademark Act section 23
`Trademark Act section 14
`Registration date
`09/30/2008
`
`Class 035. First Use: 2000/08/07 First Use In Commerce: 2000/08/07
`All goods and services in the class are cancelled, namely: Providing a web-based platform,
`namely,an on-line interactive computer database featuring pre-employment background screening
`services for the healthcare industry; providing a website for monitoringand report management of the
`results ofemployee background screening for the healthcare industry
`
`Grounds for Cancellation
`
`Torres v. Cantine Torresella S.r.l.Fraud
`Genericness
`Abandonment
`
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`Trademark Act section 23
`Trademark Act section 14
`
`Related
`Proceedings
`
`Petitioner is aware of a Complaint filed, but not served, in the U.S. District Court
`for the Eastern District of Pennsylvania; Certiphi Screening, Inc. v. Castle
`Branch, Inc.; Civil Action No. 2:13-ev-06315-TJS.
`
`Attachments
`
`PetitionforCancellation.pdf(28404 bytes )
`Exhibits.pdf(780234 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
`
`/APD/
`Angela P. Doughty
`11/13/2013
`
`

`
`
`
`
`
`
`
`Castle Branch, Inc.,
`
`
`
`Certiphi Screening, Inc.,
`
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Cancellation No.: ___________
`
`Reg Nos.: 3,244,047;
`3,370,520; and 3,508,675
`
`Marks: CERTIPHI;
`CERTIPHI SCREENING;
`and MYCERTIPHI.COM
`
`PETITION FOR
`CANCELLATION
`
`
`
`November 13, 2013
`
`Petitioner,
`
`v.
`
`Registrant.
`
`PETITION FOR CANCELLATION
`
`Petitioner Castle Branch, Inc. (“Petitioner”), a North Carolina corporation, located at
`
`1845 Sir Tyler Drive, Wilmington, NC 28405, is being damaged by each of the
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`Registration Nos. 3,244,047; 3,370,520; and 3,508,675 (collectively, the "Trademarks"),
`
`and hereby petitions to cancel same under the provisions of 15 U.S.C. § 1064(3).
`
`As grounds for this Petition, it is alleged that:
`
`Background
`
`1. Petitioner is a leading provider of, among other things, public records and
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`background investigation, research, drug testing and other related screening services
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`("Petitioner's Services").
`
`2. Since at least as early as September 2001, Petitioner has continuously used the
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`domain www.certifiedbackground.com, the trade name CertifiedBackground.com, and
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`the mark CERTIFIEDBACKGROUND.COM in conjunction with a specialized logo in
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`relation to the Petitioner's Services.
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`3. Since at least as early as 2001, Petitioner has expended a substantial amount of
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`time, resources, and effort to develop and protect the goodwill associated with its
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`CERTIFIEDBACKGROUND.COM name.
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`4. Upon information and belief, Certiphi Screening, Inc. ("Registrant") is a
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`corporation organized and existing under the laws of Delaware, doing business at 1105
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`Industrial Boulevard, Southampton, PA 18966.
`
`5. Registrant is the owner of United States Trademark Registration No. 3,244,047
`
`for CERTIPHI filed on December 19, 2005 in International Class 045 for "providing pre-
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`employment background screening services to the healthcare industry"; claiming first use
`
`on August 7, 2000. A true and correct copy of the registration is attached hereto as
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`Exhibit A.
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`6. Registrant is the owner of United States Trademark Registration No. 3,370,520
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`for CERTIPHI SCREENING filed on December 22, 2005 in International Class 045 for
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`"providing pre-employment background screening services to the healthcare industry";
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`claiming first use on August 7, 2000. A true and correct copy of the registration is
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`attached hereto as Exhibit B.
`
`7. Registrant is the owner of United States Trademark Registration No. 3,508,675
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`for MYCERTIPHI.COM filed on December 22, 2005 in International Class 035 for
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`"providing a web-based platform, namely, an on-line interactive computer database
`
`featuring pre-employment background screening services for the healthcare industry;
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`providing a website for monitoring and report management of the results of employee
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`
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`2
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`
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`background screening for the healthcare industry"; claiming first use on August 7, 2000.
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`A true and correct copy of the registration is attached hereto as Exhibit C.
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`8.
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`In correspondence dated November 4, 2013, Registrant, based on the
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`Trademarks, demanded that Petitioner cease any and all use of the term "certified" in
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`connection with Petitioner's Services (the “November Demand Letter”).
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`9. Along with the November Demand Letter, Registrant enclosed a copy of a
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`complaint filed in the United States District Court for the Eastern District of
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`Pennsylvania on October 29, 2013 ("Complaint"). A true and correct copy of the
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`Complaint is attached hereto as Exhibit D.
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`10. The Complaint alleges, among other things, federal and common law trademark
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`infringement. Specifically, the Complaint alleges that Petitioner's use of the term
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`"certified" in relation to Petitioner's Services infringes Registrant's Trademarks.
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`11. In the November Demand Letter, Registrant stated it had not served the
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`Complaint, but threatened to do so if Petitioner refuses to cease use of the term "certified"
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`in connection with Petitioner's Services.
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`First Basis for Cancellation:
`
`Genericness
`
`12. The allegations contained in Paragraphs 1 through 11, inclusive, are incorporated
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`by reference as if fully set forth.
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`13. The term "CERTIPHI" is phonetically equivalent to “certify.”
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`14. Service providers and consumers widely use the term "certify" in the background
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`screening industry, including but not limited to Registrant's screening services directed to
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`the healthcare industry, to describe, attest, and signify to customers that the
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`3
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`characteristics, features, and quality of the screening services provided and resulting
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`reports are reliable, true, correct, and/or accurate. In other words, providers in the
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`screening services industry "certify" their services and the relevant public understands the
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`term "certify" to universally describe a quality, characteristic, and feature expected of all
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`screening service providers and thus cannot function as an indication of source.
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`15. There are many providers of screening services and interactive online databases
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`of such screening information using the term "certify" in its generic form.
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`16. The term "certify" has become generic in that the primary significance of the
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`term to the relevant public when used in relation to screening services is to signify to
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`consumers a quality, characteristic, and feature of the high reliability, authenticity,
`
`and/or accuracy of the screening services and resulting reports provided as a part of the
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`screening service.
`
`17. The wide general use, acceptance, and understanding of the term "certify" in the
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`screening industry is indicative of its status as a generic term, and as such it does not
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`qualify for the protection granted by a federal trademark.
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`18. The CERTIPHI mark as used in relation to Registrant's services does not qualify
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`for the protection granted by a federal trademark because it is the phonetic equivalent of
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`the generic term “certify.”
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`19. The CERTIPHI SCREENING mark as used in relation to Registrant's services
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`does not qualify for the protection granted by a federal trademark because CERTIPHI is
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`the phonetic equivalent of the generic term “certify” and the term SCREENING is
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`disclaimed from the registration and fails to add any source-identification significance.
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`20. The MYCERTIPHI.COM mark as used in relation to Registrant's services does
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`4
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`not qualify for the protection granted by a federal trademark because the dominant
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`portion of the mark – CERTIPHI – is the phonetic equivalent of the generic term
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`“certify” and the surrounding terms "my" and ".com" do not add any source-identifying
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`significance.
`
`21. Registrant is not entitled to continued registration of the Trademarks because the
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`terms covered in the registration do not qualify for the protection granted by a federal
`
`trademark.
`
`Second Basis for Cancellation:
`
`Fraud Involving the Registration of a Generic Term
`
`22. The allegations contained in Paragraphs 1 through 21, inclusive, are incorporated
`
`by reference as if fully set forth.
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`23. For the reasons set forth above, "certify" and its phonetic equivalents are generic
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`for Registrant's services.
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`24. At the time of Registrant's filing of the applications for the Trademarks in 2005,
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`both Registrant and Petitioner had been using "certify," or its phonetic equivalent, since
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`at least 2001.
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`25. Registrant knew its use of CERTIPHI was generic for Registrant's services when
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`it applied for the Trademarks in 2005.
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`26. Registrant knew that others in the industry, including Petitioner, had a right to
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`use, and were using, "certify" and its phonetic equivalents as a generic term to
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`immediately signify to consumers a quality, characteristic, and/or feature of goods and
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`services that are related, overlapping, and identical to Registrant's.
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`27. Registrant intentionally failed to disclose the generic nature of "certify" to the
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`5
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`
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`United States Patent and Trademark Office ("USPTO") when it applied for registration of
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`CERTIPHI on or around December 19, 2005.
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`28. Had the USPTO been made aware of the generic nature of "certify," the
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`Registrations for the Trademarks would not have issued.
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`29. By intentionally failing to disclose the generic nature of "certify" to the USPTO,
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`Registrant intended to procure registrations to which it was not entitled.
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`30. Each of Registrant's fraudulently registered Trademarks is causing injury to
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`Petitioner and will continue to cause injury until cancelled.
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`31. Registrant is not entitled to continued registration of the Trademarks because
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`Registrant committed fraud in the procurement of the registrations.
`
`Third Basis for Cancellation:
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`Fraud Involving 2(f) Claim of "Substantially Exclusive" Use
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`32. The allegations contained in Paragraphs 1 through 31, inclusive, are incorporated
`
`by reference as if fully set forth.
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`33. Since at least 2001, Petitioner and others have used "certify" or its phonetic
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`equivalents in relation to goods and services similar, overlapping, and/or identical to
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`those of the Registrant.
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`34. During prosecution of the CERTIPHI registration, Registrant, pursuant to 15
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`U.S.C. § 1052(f), claimed that "[t]he mark has become distinctive of the goods/services
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`through applicant's substantially exclusive and continuous use in commerce for at least
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`the five years immediately before the date of this statement [December 18, 2006]." A
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`true and correct copy of the CERTIPHI Office Action Response in which Registrant
`
`made the "substantially exclusive" use declaration is included as Exhibit E.
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`6
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`35. During prosecution of the CERTIPHI SCREENING registration, Registrant,
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`pursuant to 15 U.S.C. § 1052(f), claimed "[t]he mark has become distinctive of the
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`goods/services through the applicant's substantially exclusive and continuous use in
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`commerce for at least the five years immediately before the date of this statement
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`[December 18, 2006]." A true and correct copy of the CERTIPHI SCREENING Office
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`Action Response in which Registrant made the "substantially exclusive" use declaration
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`is included as Exhibit F.
`
`36. Registrant's use of CERTIPHI in the five years prior to December 18, 2006 was
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`not "substantially exclusive" because of the concurrent and substantial use by Petitioner
`
`and others of "certify" and its phonetic equivalents in relation to goods and services
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`identical, overlapping, and similar to Registrant's.
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`37. Registrant's use of CERTIPHI SCREENING in the five years prior to December
`
`18, 2006 was not "substantially exclusive" because of the concurrent and substantial use
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`by Petitioner and others of "certify" and its phonetic equivalents in relation to goods and
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`services identical, overlapping, and similar to Registrant's.
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`38. When Registrant made the distinctiveness claims on the record in the CERTIPHI
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`Office Action Response, Registrant knew of Petitioner's use of "certify" as a generic term
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`universally understood in the industry to immediately convey a quality, characteristic,
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`and feature of goods and services identical, overlapping, and similar to those of the
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`Registrant.
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`39. When Registrant made the distinctiveness claims on the record in the CERTIPHI
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`SCREENING Office Action Response, Registrant knew of Petitioner’s use of "certify" as
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`a generic term universally understood in the industry to immediately convey a quality,
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`7
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`characteristic, and feature of goods and services identical, overlapping, and similar to
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`those of the Registrant.
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`40. Similarly, when Registrant made the distinctiveness claims on the record in the
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`CERTIPHI Office Action Response, Registrant knew of others in the industry, in addition
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`to Petitioner, using "certify" as a generic term universally understood in the industry to
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`immediately convey a quality, characteristic, and feature of goods and services identical,
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`overlapping, and similar to those of the Registrant.
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`41. Similarly, when Registrant made the distinctiveness claims on the record in the
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`CERTIPHI SCREENING Office Action Response, Registrant knew of others in addition
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`to Petitioner using “certify” as a generic term universally understood in the industry to
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`immediately convey a quality, characteristic, and feature of goods and services identical,
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`overlapping, and similar to those of the Registrant.
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`42. Accordingly, Registrant knew that its use of CERTIPHI – the phonetic
`
`equivalent of "certify" – was not substantially exclusive over the previous five years as
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`required under 15 U.S.C. § 1052(f) when it submitted the declarations of "substantially
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`exclusive" use.
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`43. Likewise, Registrant knew that its use of CERTIPHI SCREENING – the
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`phonetic equivalent of "certify" combined with the disclaimed term "screening" – was not
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`substantially exclusive over the previous five years as required under 15 U.S.C. § 1052(f)
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`when it submitted the declarations of "substantially exclusive" use.
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`44. But for Registrant's false declarations of "substantially exclusive" use referenced
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`in the CERTIPHI Office Action Response, the USPTO would not have issued a
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`registration.
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`8
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`45. But for Registrant’s false declarations of “substantially exclusive” use referenced
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`in the CERTIPHI SCREENING Office Action Response, the USPTO would have issued
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`a registration.
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`46. When Registrant submitted the knowingly false substantially exclusive use
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`declaration during prosecution of the CERTIPHI application, it did so intending to
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`procure a registration to which Registrant knew it was not entitled.
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`47. When Registrant submitted the knowingly false substantially exclusive
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`declaration during prosecution of the CERTIPHI SCREENING application it did so
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`intending to procure a registration to which Registrant knew it was not entitled.
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`48. Each of Registrant's CERTIPHI and CERTIPHI SCREENING registrations is
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`causing injury to Petitioner and will continue to cause injury until cancelled.
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`49. Registrant is not entitled to continued registration of CERTIPHI because
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`Registrant committed fraud in the procurement of the registration.
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`50. Registrant is not entitled to continued registration of CERTIPHI SCREENING
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`because Registrant committed fraud in the procurement of the registration.
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`Fourth Basis for Cancellation:
`
`Abandonment of the Trademarks Based on Failure to Police
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`51. The allegations contained in Paragraphs 1 through 50, inclusive, are incorporated
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`by reference as if fully set forth.
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`52. Petitioner has used "certified" in relation to its services since at least 2001.
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`53. There are multiple users of the generic term "certify" and its phonetic equivalents
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`in the background screening industry, including but not limited to Registrant's screening
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`services directed at the healthcare industry, using "certify" in relation to services that are
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`identical, overlapping, and/or similar to Registrant's services.
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`54. In its application for the Trademarks, Registrant claims a date of first use of
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`August 7, 2000.
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`55. In its Complaint, Registrant claims use of its trade name “Certiphi” dating back
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`to July 26, 2001. Specifically, Registrant alleges that it created an entity named
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`“Certiphi” in the State of Delaware on July 26, 2001 and that Registrant has been using
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`its trade name in connection with providing its services "since that time." (Ex. D at ¶ 10
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`(emphasis added).)
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`56. Registrant and Petitioner are competitors, and have been since 2001, and have
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`been aware of each other's presence in the marketplace for over twelve years.
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`Accordingly, Registrant has been aware of Petitioner's use of "certifiy" and its phonetic
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`equivalents since Petitioner began such use in 2001.
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`57. In the twelve years spanning from Registrant's first knowledge of Petitioner's use
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`of "certify" and its phonetic equivalents in 2001 through the sending of the November
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`Demand Letter in November 2013, Registrant has made no demand whatsoever for
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`Petitioner to cease its use of the terms "certify," "certified," or any other phonetic
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`equivalent.
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`58. Upon information and belief, Registrant has taken no action of any kind to
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`enforce any rights now claimed in the Trademarks against Petitioner or any third party.
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`59. Registrant's failure to take any action to enforce its alleged trademark rights has
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`allowed third parties to use the same or similar mark in relation to identical, overlapping,
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`or similar services, thereby causing CERTIPHI and its phonetic equivalents to lose
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`significance as an indication of origin.
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`10
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`60. Given Petitioner's long-standing use of "certified," a phonetic equivalent of
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`"certify," Registrant's knowledge of Petitioner’s use since 2001, and Registrant's
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`knowledge of the use of "certify" and its phonetic equivalents by others, Registrant's lack
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`of any enforcement of what it contends to be its rights in the Trademarks over the last
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`twelve years is unreasonable.
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`61. By unreasonably allowing the Trademarks to lose significance as an indication of
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`origin, Registrant has abandoned any rights in the Trademarks.
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`
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`WHEREFORE, Petitioner has been, is, and will continue to be damaged by each of
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`Registration Nos. 3,244,047; 3,370,520; and 3,508,675 and prays that this Petition for
`
`Cancellation be sustained in favor of Petitioner, that judgment be entered against
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`Registrant, and that U.S. Trademark Registration Nos. 3,244,047; 3,370,520; and
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`3,508,675 be cancelled.
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`Respectfully submitted,
`
`
`
`/Angela P. Doughty/
`Angela P. Doughty
`Attorney for Petitioner
`Ward and Smith, P.A.
`P.O. Box 867
`New Bern, NC 28563-0867
`(252) 672-5400
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`Dated: November 13, 2013
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`11
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and complete copy of Petitioner's Petition for
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`Cancellation is being sent by First Class Mail on the 13th day of November, 2013, to the
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`address of record for the Registrant at the following address:
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`Certiphi Screening, Inc.
`1105 Industrial Boulevard
`Southampton, PA 18966
`
`/Angela P. Doughty/
`Angela P. Doughty
`Attorney for Petitioner
`Ward and Smith, P.A.
`P.O. Box 867
`New Bern, NC 28563-0867
`(252) 672-5400
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`

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`Exhibit A
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`Exhibit A
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`

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`Trademark Electronic Search System (TESS)
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`Page 1 of 2
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`United States Patent and Trademark Office
`
`Home|Site Index|Search|FAQ|Glossary|Guides|Contacts|eBusiness|eBiz alerts|News|Help
`Trademarks > Trademark Electronic Search System (TESS)
`
`TESS was last updated on Wed Nov 13 03:10:26 EST 2013
`
`Logout
`
` Please logout when you are done to release system resources allocated for you.
`Record 1 out of 1
`
`return to TESS)
`
`( Use the "Back" button of the Internet Browser to
`
`Word Mark
`Goods and
`Services
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`CERTIPHI
`IC 045. US 100 101. G & S: PROVIDING PRE-EMPLOYMENT BACKGROUND SCREENING
`SERVICES TO THE HEALTHCARE INDUSTRY. FIRST USE: 20000807. FIRST USE IN
`COMMERCE: 20000807
`
`(4) STANDARD CHARACTER MARK
`78775960
`December 19, 2005
`1A
`1A
`
`Standard
`Characters
`Claimed
`Mark Drawing
`Code
`Serial Number
`Filing Date
`Current Basis
`Original Filing
`Basis
`Published for
`Opposition
`Registration
`3244047
`Number
`Registration Date May 22, 2007
`Owner
`(REGISTRANT) Certiphi Screening, Inc. CORPORATION DELAWARE 1105 Industrial
`Boulevard Southampton PENNSYLVANIA 18966
`Attorney of Record MARK D. SIMPSON
`Type of Mark
`SERVICE MARK
`Register
`PRINCIPAL-2(F)
`Affidavit Text
`SECT 15. SECT 8 (6-YR).
`
`March 6, 2007
`
`http://tess2.uspto.gov/bin/showfield?f=doc&state=4805:yxxo7w.2.1
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`11/13/2013
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`

`
`Trademark Electronic Search System (TESS)
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`Page 2 of 2
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`Live/Dead
`Indicator
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`LIVE
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`|.HOME | SITE INDEX| SEARCH | eBUSINESS | HELP | PRIVACY POLICY
`
`http://tess2.uspto.gov/bin/showfield?f=doc&state=4805:yxxo7w.2.1
`
`11/13/2013
`
`

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`Exhibit B
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`
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`Exhibit B
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`
`
`
`

`
`Trademark Electronic Search System (TESS)
`
`Page 1 of 2
`
`United States Patent and Trademark Office
`
`Home|Site Index|Search|FAQ|Glossary|Guides|Contacts|eBusiness|eBiz alerts|News|Help
`Trademarks > Trademark Electronic Search System (TESS)
`
`TESS was last updated on Wed Nov 13 03:10:26 EST 2013
`
`Logout
`
` Please logout when you are done to release system resources allocated for you.
`Record 1 out of 1
`
`return to TESS)
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`( Use the "Back" button of the Internet Browser to
`
`Word Mark
`Goods and Services
`
`Standard Characters
`Claimed
`Mark Drawing Code
`Serial Number
`Filing Date
`Current Basis
`Original Filing Basis
`Published for
`Opposition
`Registration Number
`Registration Date
`Owner
`
`Attorney of Record
`Disclaimer
`
`Type of Mark
`Register
`Live/Dead Indicator
`Distinctiveness
`Limitation Statement
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`CERTIPHI SCREENING
`IC 045. US 100 101. G & S: PROVIDING PRE-EMPLOYMENT BACKGROUND
`SCREENING SERVICES TO THE HEALTHCARE INDUSTRY. FIRST USE: 20000807.
`FIRST USE IN COMMERCE: 20000807
`
`(4) STANDARD CHARACTER MARK
`78778912
`December 22, 2005
`1A
`1B
`
`April 17, 2007
`3370520
`January 15, 2008
`(REGISTRANT) Certiphi Screening, Inc. CORPORATION DELAWARE 1105 Industrial
`Boulevard Southampton PENNSYLVANIA 18966
`Mark D. Simpson
`NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "SCREENING" APART FROM
`THE MARK AS SHOWN
`SERVICE MARK
`PRINCIPAL-2(F)-IN PART
`LIVE
`as to "CERTIPHI"
`
`http://tess2.uspto.gov/bin/showfield?f=doc&state=4805:yxxo7w.3.1
`
`11/13/2013
`
`

`
`Trademark Electronic Search System (TESS)
`
`Page 2 of 2
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`|.HOME | SITE INDEX| SEARCH | eBUSINESS | HELP | PRIVACY POLICY
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`http://tess2.uspto.gov/bin/showfield?f=doc&state=4805:yxxo7w.3.1
`
`11/13/2013
`
`

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`Exhibit C
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`
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`Exhibit C
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`

`
`Trademark Electronic Search System (TESS)
`
`Page 1 of 2
`
`United States Patent and Trademark Office
`
`Home|Site Index|Search|FAQ|Glossary|Guides|Contacts|eBusiness|eBiz alerts|News|Help
`Trademarks > Trademark Electronic Search System (TESS)
`
`TESS was last updated on Wed Nov 13 03:10:26 EST 2013
`
`Logout
`
` Please logout when you are done to release system resources allocated for you.
`Record 1 out of 1
`
`return to TESS)
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`( Use the "Back" button of the Internet Browser to
`
`Word Mark
`Goods and
`Services
`
`Standard
`Characters
`Claimed
`Mark Drawing
`Code
`Trademark
`Search Facility
`Classification
`Code
`Serial Number
`Filing Date
`Current Basis
`Original Filing
`Basis
`Published for
`Opposition
`Registration
`Number
`Registration
`Date
`Owner
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`MYCERTIPHI.COM
`IC 035. US 100 101 102. G & S: Providing a web-based platform, namely, an on-line interactive
`computer database featuring pre-employment background screening services for the healthcare
`industry; providing a website for monitoring and report management of the results of employee
`background screening for the healthcare industry. FIRST USE: 20000807. FIRST USE IN
`COMMERCE: 20000807
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`(4) STANDARD CHARACTER MARK
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`NOTATION-SYMBOLS Notation Symbols such as Non-Latin characters,punctuation and
`mathematical signs,zodiac signs,prescription marks
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`78778911
`December 22, 2005
`1A
`1A
`
`July 15, 2008
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`3508675
`
`September 30, 2008
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`(REGISTRANT) Certiphi Screening, Inc. CORPORATION DELAWARE 1105 Industrial Boulevard
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`http://tess2.uspto.gov/bin/showfield?f=doc&state=4805:yxxo7w.4.1
`
`11/13/2013
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`

`
`Trademark Electronic Search System (TESS)
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`Page 2 of 2
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`Attorney of
`Record
`Type of Mark
`Register
`Live/Dead
`Indicator
`
`Southampton PENNSYLVANIA 18966
`Mark D. Simpson
`SERVICE MARK
`PRINCIPAL
`LIVE
`
`|.HOME | SITE INDEX| SEARCH | eBUSINESS | HELP | PRIVACY POLICY
`
`http://tess2.uspto.gov/bin/showfield?f=doc&state=4805:yxxo7w.4.1
`
`11/13/2013
`
`

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`Exhibit D
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`Exhibit D
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`Case 2:13—cv—O6315-TJS Document 1 Filed 10/29/13 Page 1 of 8
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE EASTERN DISTRICT OF PENNSYLVANIA
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`CERTIPHI SCREENING, INC.
`251 Veterans Way
`Warminster, PA 18974
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`.
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`Plaintiff,
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`V.
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`CBRTIFIEDBACKROUNDCOM.
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`(a division of CASTLEBRANCH)
`1845 Sir Tyler Drive
`Wilmington, NC 28405
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`and
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`CASTLE BRANCH, INC.
`1845 Sir Tyler Drive
`Wilmington, NC 28405
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`Defendants.
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`*
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`$
`
`>1:
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`>3
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`=l=
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`24
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`*
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`*
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`3'5
`
`=l=
`
`it
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`*
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`*3‘
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`*
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`*
`
`"-‘
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`*
`
`=51
`
`A
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`Civil Action No.
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`*
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`*
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`=3
`
`*
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`>3!
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`COMPLAINT
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`1.
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`This is a civil action for trademark infringement, false designation of origin, and
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`unfair competition arising under the Federal Trademark Act of 1946, as amended, 15. U.S.C.
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`§lO5 1, et seq. and the common law of Pennsylvania.
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`Parties
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`2.
`
`Plaintiff CERTIPHI SCREENING,
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`INC.
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`(“CERTIPHI”)
`
`is
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`a Delaware
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`corporation with its principal place of business at 251 Veterans Way, Warminster, PA 18974.
`
`3.
`
`Upon information and belief, Defendants CBRTIFIEDBACKGROUNDCOM is
`
`a division of CASTLE BRANCH, INC. (collectively referred to herein as “CERTlFlED").
`
`l€9S‘273.i
`
`lD.“29!20l3
`
`

`
`Case 2:13—cv-O6315—TJS Documentl Filed'_10/29/13 Page2of8
`
`CASTLE BRANCH, INC. is a North Carolina corporation with a principal place of business at
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`1845 Sir Tyler Drive, Wilmington, NC 28405.
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`Jurisdiction and Venue
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`4.
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`This Court has subject matter jurisdiction under 28 U.S.C. §
`
`i332 because
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`Plaintiff is incorporated and has its principal place of business in Pennsylvania and Defendant is
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`incorporated in and has its principal place of business in North Carolina. The matter in
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`controversy,
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`exclusive of
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`interest
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`and costs,
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`exceeds Seventy-Five Thousand Dollars
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`($75,000.00).
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`5.
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`This Court has jurisdiction of the subject matter and the parties under § 39 of the
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`Federal Trademark Act, 15 U.S.C. § H21, and the Judicial Code, 28 U.S.C. §§ 1331, l332(a)
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`and (e), 1338 and 1367, because this case arises under the Federal Trademark Act, as amended,
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`15 U.S.C. §§ 1061, etseq.
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`6.
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`Venue is proper in this district pursuant to 28 U.S.C. §§ I‘39l(b) and l39l(d)
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`because Defendant regularly conducts business in this district.
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`COUNT I 1 LRADEMARK INFRINGEMENT)
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`7.
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`CERTIPHI realleges and incorporates by reference the allegations in paragraphs 1
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`through 6 herein as if full set forth.
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`8.
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`CERTIPHI
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`is
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`in the business of providing customized Screening services,
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`including background checks, occupational health screening, and Department of Transportation
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`(DOT) compliance services, for the educational institutions and the healthcare services industry.
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`CERTIPHI is well known and nationally recognized as pre-eminent in the field of applicant
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`1495273.! IOi'29f20l3
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`2
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`

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`Case 2:13—cv—O6315-TJS' Document 1 Filed 10/29113 Page 3 of 8
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`screening and related services in these fields.
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`CERTIPOI-ll is the only applicant screening
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`company endorsed by the American Hospital Association.
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`9.
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`CERTIPHI conducts thousands of screenings for its customers annually.
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`10.
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`CERTI