Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA598992
`ESTTA Tracking number:
`04/16/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Granted to Date
`of previous
`extension
`Address
`
`Willis North America Inc.
`04/16/2014
`
`26 Century Blvd, 7S
`Nashville, TN 37214
`UNITED STATES
`
`Attorney
`information
`
`Patrick J. Concannon
`Edwards Wildman Palmer LLP
`F.D.R. Station, P.O. Box 130
`New York, NY 10150
`UNITED STATES
`trademark@edwardswildman.com,pconcannon@edwardswildman.com,
`kdonahue@edwardswildman.com Phone:617-239-0419
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85957446
`04/16/2014
`
`Publication date
`Opposition
`Period Ends
`
`12/17/2013
`04/16/2014
`
`EVOSURE LLC
`Suite 307
`Austin, TX 78704
`GERMANY
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 2013/04/24 First Use In Commerce: 2013/04/24
`All goods and services in the class are opposed, namely: Computer software that provides real-time,
`integrated business management intelligence by combining information from various databases and
`presenting it in an easy-to-understand user interface
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`3892687
`
`12/21/2010
`
`Word Mark
`
`WILLPLACE
`
`Application Date
`
`10/06/2009
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 0 First Use In Commerce: 0
`Data-processing services; business and management advice, database
`management
`Class 036. First use: First Use: 0 First Use In Commerce: 0
`Insurance and reinsurance brokerage services; insurance brokerage,
`consultationand information in the fields of accident, fire, life, accident and
`health, travel, automobile, property, personal property, workers' compensation,
`fine art, jewelry, specie, kidnap and ransom, bloodstock, livestock, aquaculture,
`construction, cargo, professional liability, product recall, oil wells; insurance
`information and consultancy
`
`Attachments
`
`79076290#TMSN.jpeg( bytes )
`RISKPLACE Notice of Opposition.pdf(334937 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
`
`/PJC/
`Patrick J. Concannon
`04/16/2014
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OF'FICE
`BEFORE THE TRADEMARI( TRIAL AND APPEAL BOARI)
`
`In the Matter of Application SerialNo. 85/957446 for the Mark RISKPLACE
`Filed on June 12,2013
`Published in the Official Gazelle on December 17,2013
`
`Opposition No.:
`
`) ) )) ) )) ) ) )
`
`Willis North America Inc,,
`
`Evosure LLC,
`
`Opposer
`
`Applicant.
`
`BOX TTAB FEE
`Assistant Commi ssioner for
`Trademarks P.O. Box 1451
`Alexandria, V A 223 13 -l 45 1
`
`NOTICE OF'OPPOSITION
`
`Opposer Willis Nofth America Inc., a corporation organized and existing under the laws of the
`
`state of Delaware, having an address at26 Century Boulevard, 75, Nashville, Tennessee,37214, and a
`
`wholly owned subsidiary of 'Willis Group Limited, a company organized and existing under the laws of
`
`the United Kingdom, having an address at The 'Willis Building, 5l Lime Street, London EC3M 7DQ,
`
`United Kingdom, (collectively referred to as "Willis"), believes that it would be damaged by issuance of
`
`the proposed registration of the trademark RISKPLACE in Application No. 851957446 (the
`
`"Application") published in the Official Gazelte on December 17,2013 and filed by Evosure LLC, a
`
`limited liability company organized and existing under the laws of the state of Delaware ("Evosure"), and
`
`hereby opposes the Application.
`
`As grounds for this Opposition, Willis relies upon the rights developed by it and its predecessors
`
`in interest, and alleges upon information and belief as follows:
`
`AM 32t956622
`
`

`
`Willis'Marks
`
`L Willis Group Limited was founded in 1959 and is organized and existing under the laws
`
`of the United Kingdom, with its principal place of business located in London, United Kingdom.
`
`2. Willis North America Inc. is a wholly owned subsidiary of Willis Group Limited (and
`
`thus a "related company" to Willis Group Limited under 15 U,S.C. $ 1127) and is organized and existing
`
`under the laws of Delaware, with its principal place of business located in Nashville, Tennessee. 'Willis
`
`North America Inc. and Willis Group Limited constitute a single source due to the unity of control
`
`assefted by Willis Group Limited.
`
`3.
`
`V/illis is a leading global risk advisor and insurance broker. Willis offers risk advisory,
`
`insurance and reinsurance brokerage, employee benefits brokerage and related consulting services to
`
`clients in the United States and internationally, covering a wide array of industries. Willis developed and
`
`offers an insurance placement platform under its trademark V/ILLPLACE@ that processes risk and
`
`business data to allow clients to select the most appropriate insurance broker based on price, industry and
`
`geography,
`
`4.
`
`Prior to Evosure's filing the Application and, upon information and belief, prior to any
`
`date of first use or priority date upon which Evosure can rely, V/illis obtained a registration for the
`
`WILLPLACE@ mark (Reg, No, 3,892,687) in connection with "data-processing services; business and
`
`management advice, database management" in International Class 35 and "insurance and reinsurance
`
`brokerage services; insurance brokerage, consultation and information in the fields of accident, fire, life,
`
`accident and health, travel, automobile, property, personal properly, workers' compensation, fine art,
`
`jewelry, specie, kidnap and ransom, bloodstock, livestock, aquaculture, construction, cargo, professional
`
`liability, product recall, oil wells; insurance information and consultancy" in International Class 36,
`
`Attached as Exhibit A is the TESS record showing status and title of the pleaded registration.
`
`5. Willis' WILLPLACE@ registration identified above is valid and subsisting, unrevoked
`
`and uncancelled, and constitutes primafacie evidence of the validity of Willis' exclusive right to use the
`
`n¡r,l ZZ\SSAîZ. Z2
`
`

`
`mark in the registration in commerce in connection with the services described in the registration, without
`
`condition or limitation. V/illis' V/ILLPLACE@ registration constitutes constructive notice of Willis'
`
`ownership of WILLPLACE@for the services described in the registration, as provided for by $$ 7(b) and
`
`22 of the Lanham Act, I 5 U.S.C.A. $$ 1057(b) and 1072.
`6. Willis also owns nationwide common law trademark rights in 'WILLPLACE in
`
`connection with the services in the above registration by vinue of its use of WILLPLACE throughout the
`
`United States. Upon information and belief Willis established such common law rights in its
`
`WILLPLACE mark prior to any date of first use or priority date upon which Evosure can rely in relation
`
`to the mark RISKPLACE.
`
`7, Willis has expended substantial amounts of time and effort in advertising and promoting
`its services under its WILLPLACE@ mark. As a result of ìù/illis' adveúising and promotional activities
`
`and continuous and exclusive use of WILLPLACE@, the relevant public has come to associate and
`
`identifo WILLPLACE@ exclusively with Willis and the mark has attained a high degree of consumer
`
`recognition. Willis derives substantial goodwill from such identification by consumers,
`
`{p.@t's Mark
`8. Willis hereby incorporates by reference the allegations in Paragraphs I through 7 hereof
`
`as if fully set forth herein.
`
`9.
`
`Upon information and beliet Evosure LLC is a Delaware limited liability company with
`
`a mailing address of Suite 307,510 S. Congress Avenue, Austin, Texas, 78704.
`
`10. Evosure filed the Application on June 12,2013. The Application covers "computer
`
`software that provides real-time, integrated business management intelligence by combining information
`
`from various databases and presenting it in an easy-to-understand user interface" in International Class 9,
`Count I: Likelihood of Confusion
`I l. Willis hereby incorporates by reference the allegations in Paragraphs 1 through l0 hereof
`
`as if fully set forth herein.
`
`¡¡¡ tztssaaz. z3
`
`

`
`12. The RISKPLACE mark, as set forth in the Application, is highly similar in sight, sound,
`
`connotation, and commercial impression to Willis' WILLPLACE@ Mark. The distinctive suffix element
`
`"PLACE" in Applicant's mark is shared with V/illis' WLLPLACE@ mark, causing the respective marks
`
`RISKPLACE and WILLPLACE@ to be confusingly similar on their whole,
`
`13. The goods in the Application and the services in ìWillis'pleaded registration are either
`
`directly overlapping or closely related (and thus must be presumed, absent explicit limitations not
`
`applicable here, to be traveling in the same channels of trade), and target the same audiences. Both the
`
`services identified by Willis' WILLPLACE@ mark and the goods in the subject Application are used for
`
`purposes of analyzing business and insurance data.
`
`14. Because Evosure's RISKPLACE and Willis' WILLPLACE are confusingly similar, and
`
`because the goods and services identified by the respective marks either overlap or are closely related and
`
`target the same audience, there is a strong likelihood that the public will believe that Evosure's
`
`RISKPLACE mark used in connection with the subject goods emanates from, is associated with, is
`
`connected to or is sponsored by Willis. Accordingly, consumer confusion is likely between the
`
`V/ILLPLACE@ mark and the RISKPLACE mark in the Application,
`
`15, Accordingly, Evosure's RISKPLACE mark in the Application is likely to cause
`
`confusion, mistake, or to deceive the public into believing that Evosure's goods emanate from or are
`
`somehow affiliated or associated with, connected to or sponsored by Willis, in violation of Section 2(d) of
`
`the Lanham Act,
`
`16.
`
`If Evosure is permitted to register or use the RISKPLACE mark, there would be a
`
`likelihood of confusion as to the source of Evosure's goods, resulting in damage and injury to Willis.
`
`17. Willis will be damaged by Evosure's proposed registration of the RISKPLACE mark
`
`because such registration will support and assist Evosure in the confusing and misleading use of
`
`RISKPLACE, and will give color of rights to Evosure in violation of Willis' prior and superior statutory
`
`and common law rights in its WILLPLACE@ mark.
`
`X¡,tt I2ISSAAZ. Z4
`
`

`
`WHEREFORE, Willis prays that this Opposition be sustained and that the application for registration of
`
`the subject RISKPLACE mark be denied in all respects,
`
`Dated: April16,2014
`
`Respectfully submitted,
`V/ILLIS NORTH AMERICA INC
`
`By its attorneys,
`ildman Palmer LLP
`
`J
`P
`Kelly A. Donahue
`Edwards Wildman Palmer LLP
`F.D.R. Station, P.O. Box 130
`New York, NY 10150
`Phone: 617-239-0419
`Fax: 617-227-4420
`Email : rr ademark@edwardswi I dman. com
`
`n¡¡ntgsaez. z5
`
`

`
`CERTIFICATE OF ELECTRONIC MAILING
`
`I hereby certif, that the foregoing Notice of Opposition is bein
`Trademark Trial and Appeal Board's ESTTA System on this I
`
`g submitted electronically through the
`6'n day of April20l4.
`
`CERTIFICATE OF' SERVICE
`
`I hereby certif that a copy of the foregoing Notice of Opposition is being deposited with the U,S, Postal
`Service with sufnrcient postage as first class mailthis 16th day of April 2014 inan envelope addressed to
`Applicant's counsel of record at the following address:
`
`Mr. Michael V/illiams, Esq,
`P.O. Box 340071
`Austin, Texas 7 8734-0002
`
`n¡vtzztssddz z6
`
`

`
`Exhibit A
`
`n¡v zztgssez z7
`
`

`
`Page I of2
`
`United States Patent and Trademark Office
`Home lsite Index lSearch I feq I olossary le uides lcontacts leBusiness leBiz alerts I News I Help
`Trademarks > Trademark Electronic Search System (TESS)
`
`IESS was last updated on Wed Apr 16 03:10:26 EDT 2014
`
`@@@@
`Logout, Please logout when you are done to release system resources allocated for you
`Record I out of 't
`@i@I@(Usefl.le,,Back,,buttanofthelnternetËrou¡sertareturn
`fo IESS)
`
`Word Mark
`Goods and
`Services
`
`WILLPLACE
`lC 035. US 100 101 102. G & S: Data-processing services; business and management advice, database
`management
`
`lC 036. US 100 101 1O2. G & S: lnsurance and reinsurance brokerage services; insurance brokerage,
`consultation and information in the fields of accident, fire, life, accident and health, travel, automobile,
`property, personal property, workers' compensation, fìne art, jewelry, specie, kidnap and ransom,
`bloodstock, livestock, aquaculture, construction, cargo, professional liability, product recall, oil wells;
`insurance information and consultancy
`
`Standard
`Gharacters
`Claimed
`Mark Drawing
`Code
`Trademark
`Search Facility
`Classification
`Code
`Serial Number
`Filing Date
`Current Basis
`OriginalFiling
`Basis
`Published for
`Opposition
`Registration
`Number
`lnternational
`Registration
`Number
`Registration
`Date
`Owner
`
`(4) STANDARD CHARACTER MARK
`
`SHAPES-MISC Miscellaneous shaped designs
`
`79076290
`October 6, 2009
`664
`
`664
`
`October 5,2010
`
`3892687
`
`1 021 986
`
`December 21,2010
`
`(REGISTRANT) Willis Group Limited COMPANY UNITED KINGDOM The Willis Building, 51 Lime Street
`London EC3M 7DQ UNITED KINGDOM
`
`http ://tmsearch.uspto. gov/bin/shor,vheld?Èd oc &state:4803 : d6kggg.2. 1
`
`411612014
`
`

`
`Page2 of2
`
`Priority Date
`Type of Mark
`Register
`Live/Dead
`lndicator
`
`September 22,2009
`SERVICE MARK
`PRINCIPAL
`
`LIVE
`
`!@@@@EE@@r@
`
`I.HOME ISITEINDEXI SEARGH IeBUSINESS I HELP I PRIVACYPoLIcY
`
`http ://tmsearch.uspto. gov/bin/showfield?f:doc&state:4803
`
`: d6kg eg.z.l
`
`4lt6t20I4
`
`

`
`Page I of 1
`
`United $tates Patent and Trademark Office
`
`nome lSite Index lSearcn I cuiaes I Contacts le3usiness leBiz alerts I news I netp
`Assignments on the Web > Trademärk Query
`No assignment has been recorded at the USPTO
`
`For Serial Number= 79fJ7629fJ
`
`lf you have any comments or queslions concerning the data displayed, contact PRD / Assignments al 57 1-272-3350. v.2.3 4
`Web interface last modified: Jul 8, 2013 v.2.3.4
`
`I,HOME I INDEXI SEARCH I eBUSINESS I CONTACTUS I PRIVAGYSTATEMENT
`
`http://assignments.uspto.gov/assignments/q?db=.tm&qt:sno&reel:&frame:&sno:79076290
`
`4/I612014