`
`ESTTA Tracking number:
`
`ESTTA861685
`
`Filing date:
`
`11/30/2017
`
`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
`
`Amer Group, Inc.
`
`Corporation
`
`One Blackfield, # 416
`Tiburon, CA 94920
`UNITED STATES
`
`Citizenship
`
`Delaware
`
`Attorney informa-
`tion
`
`Mark B. Harrison
`Venable LLP
`P.O. Box 34385
`Washington, DC 20043-9998
`UNITED STATES
`Email: trademarkdocket@venable.com, mbharrison@venable.com,
`cmitros@venable.com
`Phone: 2023444019
`
`Registration Subject to Cancellation
`
`Registration No.
`
`3386354
`
`Registration date
`
`02/19/2008
`
`Registrant
`
`ANBANG INSURANCE GROUP CO., LTD.
`1202, 12TH FLOOR, NO. 6, JIANGUOMENWAI
`STREET
`BEIJING
`CHINA
`
`Goods/Services Subject to Cancellation
`
`Class 036. First Use: 2005/12/23 First Use In Commerce: 2007/02/12
`All goods and services in the class are subject to cancellation, namely: Insurance, namely, life insur-
`ance underwriting, marine insurance underwriting, accident insurance underwriting, fire insurance un-
`derwriting, insurance brokerage, actuarial services, insurance consultancy, capital investment, safe
`deposit box services
`
`Grounds for Cancellation
`
`Abandonment
`
`Related Proceed-
`ings
`
`Cancellation No. 92066287
`
`Trademark Act Section 14(3)
`
`Attachments
`
`Petition to Cancel Reg. No. 3386354.pdf(222688 bytes )
`
`Signature
`
`Name
`
`/Catherine Mitros/
`
`Catherine Mitros
`
`
`
`Date
`
`1113012011
`11/30/2017
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`____________________________________
`
`Cancellation No. ______________________
`
`Mark:
`Registration No. 3386354
`
`)
`
`) )
`
`) )
`
`)
`
`Amer Group, Inc.
`
`Petitioner,
`
`v.
`
`Anbang Insurance Group Co., Ltd.
`
`)
`)
`)
`)
`Registrant.
`____________________________________ )
`Attorney’s Reference: 136134.423701
`
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, Virginia 22313-1451
`
`ATTN:
`
`BOX TTAB – FEE
`
`PETITION TO CANCEL REGISTRATION NO. 3386354
`
`Amer Group, Inc. a Delaware corporation with its address at One Blackfield, # 416,
`
`Tiburon, CA, 94920 (“Petitioner”) believes that it is and will be damaged by Registration No.
`
`3386354 (the “Registered Mark”) and hereby petitions to cancel the same.
`
`As grounds for this Petition, it is alleged:
`
`1. Petitioner is the owner of US Registration No. 5074065 (Exhibit A) for the stylized
`
`mark
`
`(“Petitioner’s Registration”). The non-Latin characters in this
`
`mark transliterate to “AN BANG JI TUAN” and JI TUAN means “group of
`
`companies.”
`
`2. Petitioner’s mark covers the following services in Class 36:
`
`
`
`Insurance services, namely, writing property and casualty insurance; actuarial services;
`
`insurance brokerage; insurance information; insurance consultancy; appraisals for
`
`insurance claims of personal property; accident insurance underwriting; fire insurance
`
`underwriting; health insurance underwriting; insurance underwriting services for all
`
`types of insurance; life insurance underwriting, marine insurance underwriting;
`
`providing extended warranties on homes and cars; real estate listing services; housing
`
`agencies; apartment house management; real estate brokers; leasing of real estate;
`
`leasing of farms; real estate agencies; real estate management; rental of offices; renting
`
`of flats and renting of apartments; rent collection; pawnbrokerage; issuance of prepaid
`
`credit and debit cards and tokens of value; issue of tokens of value; issuing of travellers'
`
`checks; safe deposit box services; banking; commodity brokerage; brokerage of carbon
`
`credits; business liquidation services; financial management; financing services; home
`
`banking; savings bank services; trustee services and fiduciary representatives; currency
`
`trading and exchange services; exchanging money; securities and commodities trading
`
`services for others; financial clearing houses; stocks and bonds brokerage; stock
`
`exchange quotations; stock brokerage services; loan and credit services; lease-purchase
`
`financing; credit bureau; hire-purchase financing; installment loans; consumer lending;
`
`arranging of loans; mortgage banking; surety services; bail bonding; financial
`
`guarantees; debt recovery services; factoring agency services; debt collection agencies;
`
`factoring agencies; investment advisory services; capital investment services; financial
`
`services, namely, investment fund transfer and transaction services; mutual fund
`
`investment; providing venture capital, development capital, private equity and
`
`investment funding; financial investment services, namely, administering the issuance,
`
`underwriting and distribution of securities; money transfer; financial transaction
`
`-- 22 --
`
`
`
`services, namely, providing secure commercial transactions and payment options;
`
`financial transaction services, namely, providing secure commercial transactions and
`
`payment options; financial administration of retirement plans; electronic funds transfer;
`
`check cashing; money order services; charge card services; credit card services; debit
`
`card services; issuance of credit cards; tax payment processing services; duty drawback
`
`services; customs brokerage; financial information; financial analysis, namely,
`
`compiling and analyzing statistics, data and other sources of information for financial
`
`purposes; check verification; debt advisory services; financial consultancy; repair cost
`
`evaluation; financial services, namely, credit agencies featuring credit processing,
`
`namely, credit checking, credit analyzing, and financial reporting services; credit
`
`reporting services; financial appraisal and valuation of homes; financial information
`
`and evaluations; fiscal valuations and assessments; charitable fundraising; financial
`
`sponsorship of financial conferences; collection agencies; financial valuations; antique
`
`appraisal; jewelry appraisals; art appraisal; financial evaluation of wool; financial
`
`evaluation of standing timber; numismatic appraisal; real estate appraisal; and stamp
`
`appraisal
`
`3. The non-Latin characters in the Registered Mark transliterate to “ANBANG.”
`
`4. Petitioner’s Registration fully incorporates the Registered Mark (albeit with a space
`
`between AN and BANG).
`
`5. The Registered Mark covers the following services in Class 36:
`
`Insurance, namely, life insurance underwriting, marine insurance underwriting,
`
`accident insurance underwriting, fire insurance underwriting, insurance brokerage,
`
`actuarial services, insurance consultancy, capital investment, safe deposit box services
`
`-- 33 --
`
`
`
`6. Upon information and belief, Registrant is not currently using, has no intent to resume
`
`use, and has consequently abandoned use of the Registered Mark in the United States in
`
`connection with the services listed in the subject registration.
`
`7. Upon information and belief, the Registrant primarily offers its services in China.
`
`8. Upon information and belief, the mark
`
`shown in Registration No. 3386354 is
`
`no longer in use in connection with all of the services listed in that registration, and has
`
`therefore become abandoned.
`
`9. Upon information and belief, the mark
`
`shown in Registration No. 3386354 is
`
`no longer in use in connection with any of the services listed in that registration, and
`
`has therefore become abandoned.
`
`10. Upon information and belief, the services offered through Registrant’s website are not
`
`available in US commerce.
`
`11. If the Registrant is permitted to retain Registration No. 3386354, a cloud will be placed
`
`on Petitioner’s Registration, on the mark that is the subject of Petitioner’s Registration,
`
`and on Petitioner’s right to use, register and expand the use of that mark. Continued
`
`registration of the Registered Mark would thus be a source of damage and injury to the
`
`Petitioner.
`
`WHEREFORE, Petitioner respectfully requests that this Petition be granted and that
`
`Registration No. 3386354 be canceled.
`
`Authorization is granted to charge the filing fee of $400.00 (1 Class) to Deposit Account
`
`No. 22-0261 and notify the undersigned accordingly.
`
`Please conduct all correspondence in this matter with the undersigned at the below address.
`
`-- 44 --
`
`
`
`Date: November 30, 2017
`
`Respectfully submitted,
`
`Mark B. Harrison
`Rebecca Liebowitz
`Catherine Mitros
`Venable LLP
`P.O. Box 34385
`Washington, D.C. 20048-9998
`Telephone: 202-344-4019
`Facsimile: 202-344-8300
`
`Attorneys for Petitioner
`
`-- 55 --
`
`
`
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`
`Word Mark AB AN BANG JI TUAN AN BANG GROUP
`
`Translations The non-Latin characters in the mark transliterate to "AN BANG JI TUAN". The non-Latin characters in the mark transliterate
`to "AN BANG JI TUAN" and "JI TUAN" means "GROUP OF COMPANIES" in English and "AN BANG" has no meaning.
`
`Goods and
`Services
`
`IC 036. US 100 101 102. G & S: Insurance services, namely, writing property and casualty insurance; actuarial services;
`insurance brokerage; insurance information; insurance consultancy; appraisals for insurance claims of personal property;
`accident insurance underwriting; fire insurance underwriting; health insurance underwriting; insurance underwriting services
`for all types of insurance; life insurance underwriting, marine insurance underwriting; providing extended warranties on homes
`and cars; real estate listing services; housing agencies; apartment house management; real estate brokers; leasing of real
`estate; leasing of farms; real estate agencies; real estate management; rental of offices; renting of flats and renting of
`apartments; rent collection; pawnbrokerage; issuance of prepaid credit and debit cards and tokens of value; issue of tokens of
`value; issuing of travellers' checks; safe deposit box services; banking; commodity brokerage; brokerage of carbon credits;
`business liquidation services; financial management; financing services; home banking; savings bank services; trustee
`services and fiduciary representatives; currency trading and exchange services; exchanging money; securities and
`commodities trading services for others; financial clearing houses; stocks and bonds brokerage; stock exchange quotations;
`stock brokerage services; loan and credit services; lease-purchase financing; credit bureau; hire-purchase financing;
`installment loans; consumer lending; arranging of loans; mortgage banking; surety services; bail bonding; financial
`guarantees; debt recovery services; factoring agency services; debt collection agencies; factoring agencies; investment
`advisory services; capital investment services; financial services, namely, investment fund transfer and transaction services;
`mutual fund investment; providing venture capital, development capital, private equity and investment funding; financial
`investment services, namely, administering the issuance, underwriting and distribution of securities; money transfer; financial
`transaction services, namely, providing secure commercial transactions and payment options; financial transaction services,
`namely, providing secure commercial transactions and payment options; financial administration of retirement plans; electronic
`funds transfer; check cashing; money order services; charge card services; credit card services; debit card services; issuance
`of credit cards; tax payment processing services; duty drawback services; customs brokerage; financial information; financial
`analysis, namely, compiling and analyzing statistics, data and other sources of information for financial purposes; check
`verification; debt advisory services; financial consultancy; repair cost evaluation; financial services, namely, credit agencies
`featuring credit processing, namely, credit checking, credit analyzing, and financial reporting services; credit reporting
`services; financial appraisal and valuation of homes; financial information and evaluations; fiscal valuations and assessments;
`charitable fundraising; financial sponsorship of financial conferences; collection agencies; financial valuations; antique
`appraisal; jewelry appraisals; art appraisal; financial evaluation of wool; financial evaluation of standing timber; numismatic
`appraisal; real estate appraisal; and stamp appraisal. FIRST USE: 20010100. FIRST USE IN COMMERCE: 20010100
`
`http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4809:9eaqk2.2.2
`
`11/30/2017
`
`
`
`Trademark Electronic Search System (TESS)
`
`Page 2 of 2
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`Mark
`Drawing
`Code
`
`Design
`Search Code
`
`(3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS
`
`05.15.02 - Laurel leaves or branches (borders or frames); Wreaths
`26.03.21 - Ovals that are completely or partially shaded
`27.03.01 - Geometric figures forming letters, numerals or punctuation
`28.01.03 - Asian characters; Chinese characters; Japanese characters
`
`Serial
`Number
`
`86556832
`
`Filing Date March 7, 2015
`
`Current
`Basis
`
`Original
`Filing Basis
`
`Published
`for
`Opposition
`
`Registration
`Number
`
`Registration
`Date
`
`1A
`
`1B
`
`March 8, 2016
`
`5074065
`
`November 1, 2016
`
`Owner
`
`(REGISTRANT) Amer Group, Inc. CORPORATION DELAWARE One Blackfield, Suite 416 Tiburon CALIFORNIA 94920
`
`Attorney of
`Record
`
`Disclaimer
`
`Georgiy L. Khayet
`
`NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "GROUP" AND THE NON-LATIN CHARACTERS
`TRANSLITERATED TO "JI TUAN" APART FROM THE MARK AS SHOWN
`
`Description
`of Mark
`
`The color(s) red and blue is/are claimed as a feature of the mark. The mark consists of the stylized blue letters "AB" with a red
`circle in the letter "A" in between an artistic rendering of two red branches, above red stylized Chinese characters
`transliterated as "AN BANG JI TUAN," above the stylized blue words "AN BANG GROUP".
`
`Type of
`Mark
`
`SERVICE MARK
`
`Register
`
`PRINCIPAL
`
`Live/Dead
`Indicator
`
`LIVE
`
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`11/30/2017
`
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