Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA616362
`ESTTA Tracking number:
`07/17/2014
`
`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
`
`TrueCar, Inc.
`Corporation
`120 Broadway, Suite 200
`Santa Monica, CA 90401
`UNITED STATES
`
`Citizenship
`
`Delaware
`
`Attorney informa-
`tion
`
`John L. Slafsky
`Wilson Sonsini Goodrich & Rosati
`650 Page Mill Road
`Palo Alto, CA 94304-1050
`UNITED STATES
`trademarks@wsgr.com, jslafsky@wsgr.com, nferguson@wsgr.com
`Phone:650-493-9300
`Registration Subject to Cancellation
`
`Registration No
`Registrant
`
`Registration date
`3835457
`LIBERTY MUTUAL AGENCY CORPORATION
`175 BERKELEY STREET
`BOSTON, MA 02116
`UNITED STATES
`Goods/Services Subject to Cancellation
`
`08/17/2010
`
`Class 036. First Use: 2007/03/08 First Use In Commerce: 2007/03/08
`All goods and services in the class are cancelled, namely: Insurance services, namely, administration
`and underwriting of property and casualty insurance
`
`Grounds for Cancellation
`
`Abandonment
`
`Trademark Act section 14
`
`Attachments
`
`TrueCar Petition for Cancellation v Liberty Mutual Insurance re TRUE PRI-
`CING.pdf(141913 bytes )
`
`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.
`
`Certificate of Service
`
`Signature
`
`/Nathan E. Ferguson/
`
`

`
`Name
`Date
`
`Nathan E. Ferguson
`07/17/2014
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Cancellation No.
`
`
`
`PETITION FOR CANCELLATION
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`TRUECAR, INC., a Delaware corporation,
`
`Petitioner,
`
`v.
`
`LIBERTY MUTUAL AGENCY
`CORPORATION, a Delaware corporation
`
`Respondent.
`
`
`
`
`
`Re: Mark:
`Registration No.:
`International Class:
`Filed:
`Registered:
`
`TRUE PRICING
`3835457
`36
`November 7, 2006
`August 17, 2010
`
`
`
`
`Petitioner TrueCar, Inc. (the “Petitioner”) believes that it is and will continue to be
`
`damaged by Registration No. 3835457 (the “TRUE PRICING Registration”) as currently
`
`registered, and accordingly petitions to cancel the TRUE PRICING Registration.
`
`As grounds for this Petition, Petitioner alleges that:
`
`1.
`
`Petitioner TrueCar, Inc. (the “Petitioner”) is a Delaware corporation with its
`
`principal place of business at 120 Broadway, Suite 200, Santa Monica, California 90401.
`
`2.
`
`On information and belief, respondent Liberty Mutual Agency Corporation
`
`(“Respondent”) is a Delaware corporation.
`
`3.
`
`According to public records of the United States Patent and Trademark Office
`
`(“USPTO”), the current information regarding Registration No. 3835457 is as follows:
`
`
`
`1
`
`

`
`Registrant:
`Mark:
`
`Liberty Mutual Agency Corporation
`TRUE PRICING
`
`
`
`175 Berkeley Street
`Last listed address:
`Boston, Massachusetts 02116
`
`August 17, 2010
`Registration date:
`International Class: 36
`Services:
`Insurance services, namely, administration and underwriting of
`property and casualty insurance
`First use in commerce: March 8, 2007
`
`4.
`
`Petitioner is the owner of the follow U.S. trademark registrations (the “TrueCar
`
`Registrations”):
`
`Trademark
`
`Appl. #
`
`Filing Date
`
`Reg. #
`
`Classes
`
`Goods
`
`TRUECAR
`
`77707917
`
`06-Apr-2009
`
`3759175
`
`35, 42
`
`TRUEBUZZ
`
`77915751
`
`20-Jan-2010
`
`3837519
`
`35
`
`Class 35: providing motorized vehicle purchase
`advisory and consulting services; providing motorized
`vehicle value advisory and price evaluation services;
`providing information via a global computer network in
`connection with the price, value and specifications of
`motorized vehicles; statistical analysis of national and
`regional motorized vehicle price data; providing
`motorized vehicle price reports that include dealer cost,
`factory invoice price, average price, sticker price,
`MSRP, and a statistical analysis of price for a particular
`vehicle based on actual purchase data; marketing and
`advertising services for sellers of new and used
`motorized vehicles, motorized vehicle parts and
`accessories, and motorized vehicle repair,
`customization and restoration services
`
`Class 42: providing a web site featuring temporary use
`of non-downloadable software allowing web site users
`to search for, research, purchase and sell motorized
`vehicles
`
`Class 35: providing motorized vehicle purchase
`advisory and consulting services; providing consumer
`product information via a global computer network
`based on consumer interest ratings associated with
`particular models of motorized vehicles; statistical
`analysis of consumer product information data based
`on consumer comments, ratings and commentary about
`particular models of motorized vehicles; preparing
`business reports on the popularity and consumer
`interest in particular models of motorized vehicles
`
`
`First Use In
`Commerce
`30-Sep-2008
`
`15-Jan-2010
`
`
`
`2
`
`

`
`Trademark
`
`Appl. #
`
`Filing Date
`
`Reg. #
`
`Classes
`
`Goods
`
`TRUETRENDS
`
`85117877
`
`27-Aug-2010
`
`3976990
`
`35
`
`TRUEINSURANCE 77797984
`
`05-Aug-2009
`
`4350416
`
`35
`
`TRUEAVERAGE
`
`77797974
`
`05-Aug-2009
`
`4350415
`
`35
`
`TRUEINDEX
`
`77797971
`
`05-Aug-2009
`
`4350414
`
`35
`
`TRUETRADE
`
`77864246
`
`03-Nov-2009
`
`4491339
`
`35
`
`Class 35: providing motorized vehicle purchase
`advisory and consulting services; providing motorized
`vehicle value advisory and price evaluation services;
`providing information via a global computer network in
`connection with the price, value, and market time of
`motorized vehicles; statistical analysis of national and
`regional motorized vehicle price data; providing
`motorized vehicle price reports, namely, statistical
`analysis and measurement of prices and market time
`for particular motorized vehicles based on market data;
`providing motorized vehicle price reports, namely,
`price tracking and market price timing for particular
`motorized vehicles based on market data
`
`Class 35: providing motorized vehicle insurance
`advisory and consulting services; providing motorized
`vehicle insurance price evaluation services; providing
`information via a global computer network in
`connection with the price of insurance for motorized
`vehicles; statistical analysis of motorized vehicle
`insurance price data; providing motorized vehicle
`insurance price reports based on statistical analysis of
`market data; marketing and advertising services of
`motorized vehicle insurance for others
`
`Class 35: providing motorized vehicle purchase
`advisory and consulting services; providing motorized
`vehicle value advisory and price evaluation services;
`providing information via a global computer network in
`connection with the price and value of motorized
`vehicles; statistical analysis of motorized vehicle price
`data; providing motorized vehicle price reports based
`on statistical analysis of market data; marketing and
`advertising services for sellers of motorized vehicles
`
`Class 35: providing motorized vehicle purchase
`advisory and consulting services; providing motorized
`vehicle value advisory and price evaluation services;
`providing information via a global computer network in
`connection with the price and value of motorized
`vehicles; statistical analysis of motorized vehicle price
`data; providing motorized vehicle price reports based
`on statistical analysis of market data; marketing and
`advertising services for sellers of motorized vehicles
`
`Class 35: providing motorized vehicle value advisory
`and price evaluation services; providing information
`via a global computer network in connection with the
`price and value of motorized vehicles; providing
`information via a global computer network regarding
`the sale and auction of used motorized vehicles;
`statistical analysis of national and regional motorized
`vehicle value data; providing motorized vehicle value
`reports; marketing and advertising services for sellers
`of new and used motorized vehicles; marketing and
`advisory services for owners of motorized vehicles
`regarding motorized vehicle auctions and the purchase
`of used motorized vehicles by dealers; providing
`referrals to motorized vehicle dealerships
`
`
`First Use In
`Commerce
`15-Apr-2010
`
`12-Apr-2013
`
`31-Mar-2013
`
`31-Mar-2013
`
`09-May-2013
`
`
`
`3
`
`

`
`Trademark
`
`Appl. #
`
`Filing Date
`
`Reg. #
`
`Classes
`
`Goods
`
`TRUELOAN
`
`77963610
`
`19-Mar-2010
`
`4526012
`
`35, 36
`
`TRUEQUOTE
`
`77963608
`
`19-Mar-2010
`
`4403627
`
`35, 36
`
`TRUEVIEW
`
`85385121
`
`29-Jul-2011
`
`4440665
`
`42
`
`TRUECAR
`
`85800222
`
`11-Dec-2012
`
`4419891
`
`9
`
`TRUEMPG
`
`85924697
`
`06-May-2013
`
`4436580
`
`35, 42
`
`TRUETARGET
`
`85124399
`
`07-Sept-2010
`
`4062212
`
`36
`
`Class 35: statistical analysis of motorized vehicle
`purchase financing data for business purposes;
`preparing motorized vehicle purchase financing reports
`for others based on statistical analysis of market data;
`advertising and marketing motorized vehicle financing
`services of others
`
`Class 36: providing motorized vehicle purchase
`financing advisory and consulting services; providing
`motorized vehicle purchase financial evaluation
`services; providing information via a global computer
`network in connection with financing motorized vehicle
`purchases
`
`Class 35: statistical analysis of motorized vehicle
`insurance price data for business purposes; preparing
`motorized vehicle insurance financial price reports for
`others based on statistical analysis of market data;
`advertising and marketing motorized vehicle insurance
`services of others
`
`Class 36: providing motorized vehicle insurance
`advisory and consulting services; providing motorized
`vehicle insurance price financial evaluation services for
`insurance purposes; providing insurance information
`via a global computer network regarding the price of
`insurance for motorized vehicles
`
`Class 42: providing a website featuring temporary use
`of non-downloadable software allowing website users
`to research and analyze motorized vehicle price and
`sales data
`
`Class 9: computer application software for mobile
`devices, namely, software for accessing a database of
`information about motorized vehicles and motorized
`vehicle pricing; downloadable software allowing users
`to search for, research, purchase and sell motorized
`vehicles
`
`Class 35: providing information via a global computer
`network in connection with the gas mileage and fuel
`efficiency of motorized vehicles; statistical analysis of
`motorized vehicle gas mileage and fuel efficiency data;
`providing consumer product information via a global
`computer network based on motorized vehicle
`specifications; providing consumer product information
`via a global computer network based on the gas
`mileage and fuel efficiency of motorized vehicles
`
`Class 42: providing a website featuring temporary use
`of non-downloadable software allowing website users
`to research motorized vehicle specifications; providing
`a website featuring temporary use of non-downloadable
`software allowing website users to research motorized
`vehicle gas mileage and fuel efficiency information
`
`Class 36: providing information on vehicles for sale via
`a global communications network, namely, vehicle
`valuations
`
`
`First Use In
`Commerce
`17-June-2013
`
`29-May-2013
`
`19-Sept-2013
`
`24-April-2013
`
`31-Mar-2011
`
`07-Sept-2010
`
`
`
`4
`
`

`
`5.
`
`Petitioner is the owner of the following pending U.S. trademark applications (the
`
`“TrueCar Applications”):
`
`Trademark
`TRUEFINANCE
`
`Appl. #
`85895805
`
`Filing Date
`04-Apr-2013
`
`Classes
`35
`
`TRUEBOOK
`
` 86084114
`
`7-Oct-2013
`
`35, 42
`
`TRUEDISCOUNT
`
` 86044535
`
`21-Aug-2013
`
`35, 42
`
`Goods
`Class 35: providing motorized vehicle purchase and lease financing advisory and consulting
`services; providing motorized vehicle purchase and lease financing evaluation services;
`providing information via a global computer network in connection with the financing of
`motorized vehicle purchases and leases; statistical analysis of motorized vehicle purchase
`and lease financing data; providing motorized vehicle purchase and lease financing reports
`based on statistical analysis of market data; marketing and advertising services of motorized
`vehicle leases and motorized vehicle financing for others
`
`Class 35: providing motorized vehicle purchase advisory and consulting services; providing
`motorized vehicle value advisory and price evaluation services; providing information via a
`global computer network concerning the price and value of motorized vehicles; providing
`consumer product information for the purpose of selecting motor vehicles to meet the
`consumer's specifications; statistical analysis of national and regional motorized vehicle
`price data; providing motorized vehicle price reports that include a statistical analysis of
`price for a particular vehicle based on actual purchase data; marketing and advertising
`services for sellers of new and used motorized vehicles, motorized vehicle parts and
`accessories, and motorized vehicle repair, customization and restoration services; providing
`consumer product information via a global computer network based on motorized vehicle
`specifications; providing consumer product information via a global computer network
`based on the gas mileage and fuel efficiency of motorized vehicles; providing consumer
`product information via a global computer network in connection with the gas mileage and
`fuel efficiency of motorized vehicles; price data compiling and statistical analysis concerning
`motorized vehicle insurance; providing consumer product information, namely, motorized
`vehicle insurance price reports based on statistical analysis of market data; marketing and
`advertising services of motorized vehicle insurance for others; providing motorized vehicle
`purchase and lease financing evaluation services for consumers; providing consumer
`information via a global computer network in connection with the financing of motorized
`vehicle purchases and leases; statistical analysis of motorized vehicle purchase and lease
`financing data; providing consumer information in the nature of motorized vehicle purchase
`and lease financing reports based on statistical analysis of market data; marketing and
`advertising services of motorized vehicle leases and motorized vehicle financing for others
`
`Class 42: providing a website featuring temporary use of non-downloadable software
`allowing website users to search for, research, purchase and sell motorized vehicles;
`providing a web site featuring temporary use of non-downloadable software allowing
`website users to research motorized vehicle specifications; providing a website featuring
`temporary use of non-downloadable software allowing website users to research motorized
`vehicle gas mileage and fuel efficiency information
`
`Class 35: providing motorized vehicle purchase advisory and consulting services; providing
`motorized vehicle value advisory and price evaluation services; providing information via a
`global computer network concerning the price and value of motorized vehicles; providing
`consumer product information for the purpose of selecting motor vehicles to meet the
`consumer's specifications; statistical analysis of national and regional motorized vehicle
`price data; providing motorized vehicle price reports that include a statistical analysis of
`price for a particular vehicle based on actual purchase data; marketing and advertising
`services for sellers of new and used motorized vehicles, motorized vehicle parts and
`accessories, and motorized vehicle repair, customization and restoration services; providing
`consumer product information via a global computer network based on motorized vehicle
`specifications; providing consumer product information via a global computer network
`based on the gas mileage and fuel efficiency of motorized vehicles; providing consumer
`product information via a global computer network in connection with the gas mileage and
`fuel efficiency of motorized vehicles; price data compiling and statistical analysis concerning
`motorized vehicle insurance; providing consumer product information, namely, motorized
`vehicle insurance price reports based on statistical analysis of market data; marketing and
`advertising services of motorized vehicle insurance for others; providing motorized vehicle
`purchase and lease financing evaluation services for consumers; providing consumer
`information via a global computer network in connection with the financing of motorized
`vehicle purchases and leases; statistical analysis of motorized vehicle purchase and lease
`financing data; providing consumer information in the nature of motorized vehicle purchase
`and lease financing reports based on statistical analysis of market data; marketing and
`
`
`
`5
`
`

`
`Trademark
`
`Appl. #
`
`Filing Date
`
`Classes
`
`TRUEMILEAGE
`
` 86035335
`
`12-Aug-2013
`
`35, 42
`
`TRUELEASE
`
`86103498
`
`28-Oct.-2013
`
`35, 36
`
`Goods
`advertising services of motorized vehicle leases and motorized vehicle financing for others
`
`Class 42: providing a web site featuring temporary use of non-downloadable software
`allowing website users to search for, research, purchase and sell motorized vehicles;
`providing a web site featuring temporary use of non-downloadable software allowing
`website users to research motorized vehicle specifications; providing a website featuring
`temporary use of non-downloadable software allowing website users to research motorized
`vehicle gas mileage and fuel efficiency information
`
`Class 35: providing motorized vehicle purchase advisory and consulting services; providing
`motorized vehicle value advisory and price evaluation services; providing information via a
`global computer network concerning the price and value of motorized vehicles; providing
`consumer product information for the purpose of selecting motor vehicles to meet the
`consumer's specifications; statistical analysis of national and regional motorized vehicle
`price data; providing motorized vehicle price reports that include a statistical analysis of
`price for a particular vehicle based on actual purchase data; marketing and advertising
`services for sellers of new and used motorized vehicles, motorized vehicle parts and
`accessories, and motorized vehicle repair, customization and restoration services; providing
`consumer product information via a global computer network based on motorized vehicle
`specifications; providing consumer product information via a global computer network
`based on the gas mileage and fuel efficiency of motorized vehicles; providing consumer
`product information via a global computer network in connection with the gas mileage and
`fuel efficiency of motorized vehicles; price data compiling and statistical analysis concerning
`motorized vehicle insurance; providing consumer product information, namely, motorized
`vehicle insurance price reports based on statistical analysis of market data; marketing and
`advertising services of motorized vehicle insurance for others; providing motorized vehicle
`purchase and lease financing evaluation services for consumers; providing consumer
`information via a global computer network in connection with the financing of motorized
`vehicle purchases and leases; statistical analysis of motorized vehicle purchase and lease
`financing data; providing consumer information in the nature of motorized vehicle purchase
`and lease financing reports based on statistical analysis of market data; marketing and
`advertising services of motorized vehicle leases and motorized vehicle financing for others
`
`Class 42: providing a web site featuring temporary use of non-downloadable software
`allowing website users to search for, research, purchase and sell motorized vehicles;
`providing a web site featuring temporary use of non-downloadable software allowing
`website users to research motorized vehicle specifications; providing a website featuring
`temporary use of non-downloadable software allowing website users to research motorized
`vehicle gas mileage and fuel efficiency information
`Class 35: statistical analysis of motorized vehicle price data for business purposes; preparing
`motorized vehicle pricing financial reports for others; advertising and marketing for sellers
`and lessors of motorized vehicles
`
`Class 36: providing motorized vehicle financing advisory and consulting services; providing
`information via a global computer network in connection with motorized vehicle financing
`and pricing
`
`
`6.
`
`Petitioner is the owner of a family of TRUE-formative marks, including the marks
`
`in the TrueCar Registrations and the TrueCar Applications (collectively, the “TrueCar Marks”)
`
`7.
`
`Petitioner is informed and believes, and therefore alleges, that Respondent has
`
`ceased all use in commerce of the mark TRUE PRICING.
`
`8.
`
`Petitioner is informed and believes, and therefore alleges, that Respondent has no
`
`intent to resume use of the mark TRUE PRICING in commerce in connection with the services
`
`
`
`6
`
`

`
`in the TRUE PRICING Registration or in connection with any goods or services.
`
`9.
`
`Petitioner is informed and believes, and therefore alleges, that Respondent has
`
`abandoned the mark TRUE PRICING.
`
`10.
`
`Petitioner’s goods and services in the TrueCar Registrations and TrueCar
`
`Applications are highly related to the services in the TRUE PRICING Registration.
`
`11.
`
`Petitioner has invested substantial time, money, and effort in promoting,
`
`advertising, and familiarizing others with the TrueCar Marks, and enjoys substantial and
`
`exclusive goodwill and reputation in connection with the TrueCar Marks.
`
`12.
`
`If Respondent is permitted to retain the TRUE PRICING Registration for which
`
`cancellation is sought, thereby retaining prima facie exclusive rights to the mark TRUE
`
`PRICING for services highly related to the types of goods and services offered by Petitioner
`
`under its TrueCar Marks, Respondent would potentially be in a position to (i) contest the
`
`continued registration of Petitioner’s TrueCar Registrations, (ii) contest registration of the
`
`pending TrueCar Applications, and (iii) contest TrueCar’s use of the TrueCar Marks, based on a
`
`likelihood of confusion between Respondent’s TRUE PRICING mark and one or more of
`
`TrueCar’s TrueCar Marks, even though Respondent has abandoned all use of the TRUE
`
`PRICING mark.
`
`WHEREFORE, Petitioner prays:
`
`1.
`
`2.
`
`3.
`
`That Petitioner’s petition be sustained;
`
`That Registration No. 3835457 be cancelled; and
`
`For other relief as the Board may deem just and proper.
`
`
`
`7
`
`

`
`Please address all communications regarding this Consolidated Petition for Cancellation to:
`
`John L. Slafsky
`Nathan E. Ferguson
`Wilson Sonsini Goodrich & Rosati
`650 Page Mill Road
`Palo Alto, CA 94304
`Tel: (650) 493-9300
`Fax: (650) 493-6811
`trademarks@wsgr.com
`
`
`
`Dated: July 17, 2014
`
`Respectfully submitted,
`
`WILSON SONSINI GOODRICH & ROSATI
`Professional Corporation
`
`By: /Nathan E. Ferguson/____________
`John L. Slafsky
`Nathan E. Ferguson
`
`
`Attorneys for Petitioner
`TRUECAR, INC.
`
`8
`
`
`
`
`
`

`
`CERTIFICATE OF SERVICE BY MAIL
`
`I, Elvira Minjarez, declare:
`
`I am employed in Santa Clara County. I am over the age of 18 years and not a party to the
`
`within action. My business address is Wilson Sonsini Goodrich & Rosati, 650 Page Mill Road,
`
`Palo Alto, California 94304-1050.
`
`I am readily familiar with Wilson Sonsini Goodrich & Rosati’s practice for collection and
`
`processing of correspondence for mailing with the United States Postal Service. In the ordinary
`
`course of business, correspondence would be deposited with the United States Postal Service on
`
`this date.
`
`On this date, I served this PETITION FOR CANCELLATION on the company listed
`
`below, by placing the document described above in an envelope addressed as indicated below,
`
`which I sealed. I placed the envelope for collection and mailing with the United States Postal
`
`Service on this day, following ordinary business practices at Wilson Sonsini Goodrich & Rosati.
`
`Lisa Parker Gates
`Baker & Mckenzie, LLP
`300 E. Randolph St., Suite 5000
`Chicago, Illinois 60601
`
`I declare under penalty of perjury under the laws of the State of California that the
`
`foregoing is true and correct.
`
`Executed at Palo Alto, California on July 17, 2014.
`
`/s/ Elvira Minjarez
`Elvira Minjarez
`
`
`
`
`
`9