Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA895010
`
`Filing date:
`
`05/07/2018
`
`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 has filed a petition to cancel the registration indicated below.
`
`Petitioner Information
`
`Name
`
`Entity
`
`Address
`
`Attorney informa-
`tion
`
`BlueOwl LLC
`
`LIMITED LIABILITY COM-
`PANY
`
`One Sansome St.
`Suite 3100
`San Francisco, CA 94104
`UNITED STATES
`
`Citizenship
`
`DELAWARE
`
`Brian L. Heidelberger
`Loeb & Loeb LLP
`321 North Clark St.
`Suite 2300
`Chicago, IL 60654
`UNITED STATES
`Email: chdocket@loeb.com, rnewman@loeb.com, bheidelberger@loeb.com
`Phone: 312.464.3353
`
`Registration Subject to Cancellation
`
`Registration No.
`
`3236136
`
`Registration date
`
`05/01/2007
`
`International Re-
`gistration No.
`
`Registrant
`
`NONE
`
`International Re-
`gistration Date
`
`NONE
`
`Hyundai Marine & Fire Insurance Co., Ltd.
`178, Sejongno, Jongno-gu
`Seoul
`REPUBLIC OF KOREA
`
`Goods/Services Subject to Cancellation
`
`Class 036. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are subject to cancellation, namely: life insurance underwriting
`services; guarantee assurance underwriting services; re-insurance underwriting services; insurance
`agency services; insurance brokerage services; securities brokerage services; automobile insurance
`underwriting services; real estate leasing services; loan financing services; insurance consulting ser-
`vices; and providing information in insurance matters
`
`Grounds for Cancellation
`
`Abandonment
`
`Trademark Act Section 14(3)
`
`Attachments
`
`16280573_1.pdf(460392 bytes )
`
`

`

`Signature
`
`/Brian L. Heidelberger/
`
`Name
`
`Date
`
`Brian L. Heidelberger
`
`05/07/2018
`
`

`

`
`
`IN THE IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Registration No. 3,236,136: HICAR (and Design)
`
`BLUEOWL LLC,
`
`
`Petitioner,
`
`
`v.
`
`
`HYUNDAI MARINE & FIRE INSURANCE
`CO., LTD.
`
`Registrant.
`
`
`
`Cancellation No.: __________
`
`) ) ) ) ) ) ) ) ) )
`
`
`
`
`
`
`
`
`PETITION TO CANCEL
`
`BlueOwl LLC (“Petitioner”), a Delaware limited liability company, located and doing
`
`business at One Sansome St., Suite 3100, San Francisco, California, 94104, believes it will be
`
`damaged by the maintenance of HICAR (and Design), Reg. No. 3,236,136 (“Registered Mark”),
`
`for, in relevant part, “insurance agency services; insurance brokerage services” and “automobile
`
`insurance underwriting services” in International Class 36 (“Registrant’s Goods”), owned by
`
`Hyundai Marine & Fire Insurance Co., Ltd. (“Registrant”), a Republic of Korea corporation,
`
`located and doing business at 178, Sejongno, Jongno-gu, Seoul, Korea, Republic of, and hereby
`
`petitions to cancel same.
`
`As grounds for this cancellation, Petitioner alleges:
`
`1.
`
`Petitioner is an affiliate of HiRoad Assurance Company, an Illinois insurance
`
`company that is a technology-driven provider of property and casualty insurance.
`
`2.
`
`Petitioner owns the trademark application Serial No. 87/277,071 for the mark HI
`
`(and Design) ( “Petitioner’s Mark”).
`
`
`
`
`1
`
`

`

`
`
`3.
`
`Petitioner’s Mark was refused registration by the United States Patent and
`
`Trademark Office under 15 U.S.C. § 1052(d) based on claimed likelihood of confusion with the
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`Registered Mark.
`
`4.
`
`On information and belief, Registrant has ceased use, within the meaning of 15
`
`U.S.C. § 1127, of the Registered Mark for Registrant’s Goods.
`
`5.
`
`The relevant portion of Registrant’s submitted specimen in its April 19, 2017
`
`Declaration of Use and/or Excusable Nonuse/Application for Renewal of Registration of a Mark
`
`under
`
`Sections
`
`8
`
`&
`
`9,
`
`namely
`
`Registrant’s
`
`website
`
`at
`
`http://hyundaiinsuranceusa.com/products.html#, indicates that the services provided under the
`
`Registered Mark are not provided in the United States. A copy of the website is attached as
`
`Exhibit A.
`
`6.
`
`On information and belief, in the event that Registrant at one time made use of
`
`the Registered Mark for Registrant’s Goods in commerce in the United States within the meaning
`
`of 15 U.S.C. § 1127, Registrant has ceased such use, does not intend to resume such use, and has
`
`not made use of the Registered Mark for Registrant’s Goods for more than three (3) years from
`
`the date hereof.
`
`7.
`
`Registrant has abandoned Registration No. 3,236,136.
`
`WHEREFORE, continued registration of the Registered Mark for Registrant’s Goods is
`
`and continues to be damaging to Petitioner and Petitioner requests that it be cancelled.
`
`Please debit our Deposit Account No. 502876 for the filing fee and for any additional
`
`necessary fees.
`
`Please address all correspondence to Brian L. Heidelberger, Loeb & Loeb LLP, 321 N.
`
`Clark Street, Suite 2300, Chicago, Illinois 60654.
`
`2
`
`

`

`
`
`
`
`
`
`
`Date: May 7, 2018
`
`
`
`
`
`
`
`
`
`LOEB & LOEB LLP
`
`By:
`
`__/s/ Brian L. Heidelberger_______
`Brian L. Heidelberger
`Robert H. Newman
`321 North Clark St., Suite 2300
`Chicago, Illinois 60654
`Telephone: (312) 464-3353
`Facsimile: (312) 264-0428
`chdocket@loeb.com
`rnewman@loeb.com
`bheidelberger@loeb.com
`
`
`
`
`Attorneys for Petitioner
`
`
`
`
`
`
`
`
`
`
`
`3
`
`

`

`
`
`Exhibit A
`Exhibit A
`
`
`J/D Hyundai Insulznce USAF x‘\\
`(— G i G) hyundaiinsuranoeifiacom/pmducts htrnHF
`
`Marine cargo insurance covers the loss or damage to ships, cargo, terminals and
`any transport of cargo where property is transferred, acquired or held between the
`point of origin and final destination.
`COMMERCIAL PACKAGE POLICY INSURANCE
`
`Room 710, 7F, Sun Wah Tower
`115 Nguyen Hue Blvd., Dist. 1,
`Ho Chi Minh City, Wetnarn
`
`Coverage is tailored to provide businesses with insurance protection for most
`property exposures, including exposurfi to inventory or other business assets,
`against loss or damage caused by fire, theft and some natural disasters.
`
`The General Liability section also covers third-party liability exposures resulting
`from personal and/or advertising injury, including medical expenses, as well as
`accidents stemming from on-site mishaps, including any injuries or damagfi
`occurring from use of goods or services sold on-premises. In addition to the
`indemnity limits induded in the package, it also covers supplemental exposures
`such as payments for attorney fees, court costs and other similar expenses
`associated with your claim or for defense in a resulting liability law suit.
`
`By bundling your business insurance coverages under a single Commercial
`Package Policy, you have the advantage of more comprehensive coverage at a
`discounted rate.
`
`
`
`
`HICAR SERVICE
`
`IN PREPARATION
`
`
`
`
`
`
`
`y' 13 Hyundai Insurance USA: x ‘\
`
`(-
`C (D hyundannsuranceusa.com/products.mmtis
`
`jieiavrmm" "stew—i
`
`—~'_fi-r“—‘rr‘r—" ’-’
`
`
`
`CAREERS
`
`CONIACT
`
`
`
`HYUNDAI
`OVERSEAS NETWORKS
`
`KOREA
`178, Sejongno, Jongnogu
`Seoul, Korea 110-731
`
`ABOUT _ CLAIMS
`
`HOME
`HYUNDAI
`Products
`
`PERSONALLINESPROGRAM: &—-—-—— , i
`
`HOMEOWNERS INSURANCE
`
`LINGDOM
`
`.J'me Street
`
`508
`ator Tower
`Road
`District
`ina
`
`1402, Part C
`.rnaflonal Plaza
`in Guan Road
`:Zhina
`
`hiya Building
`:arwaHZho, ChiyodarKu
`an 10070011
`
`
`
`fl
`
`Homeowners insurance provides fin:
`unexpected risks and disasters A st
`home, your personal property, as w:
`
`property. It also provides coverage r
`injury and/or property damage that
`HICAR SERVICE
`
`members, including household pe
`
`We are preparing to offer Hicar Service in U.S.
`Most damage caused by disasters
`I
`
`HicaR Service is wellknown in Korea and has bee
`raised for its
`however, there are some exclusion
`
`are
`
`superior Service.
`not covered by Homeowners ins
`'
`
`- Service offers emergency claim, ' - diagnostics and vehicle-
`through a separate third-party polic'
`
`maintenance-related issues are sole
`relate- -
`,
`
`covered by insurance.
`1. EMERGENCY CLAIMS
`DWELLING FIRE INSURANCE
`
`
`
`
`
`Dwelling fire insurance typically only
`It usually does not afford any cover;
`endorsement, for surrounding struct
`insurance is usually purchased for 5!
`
`Emergency Rescue Recovery Support
`Emergency Towing Sen/ice
`_
`_
`Emergency Fueling Servtce
`Battery Charging Service
`| Mk Release Can/ire
`
`4
`
`