ESTTA Tracking number:
`
`ESTTA1353800
`
`Filing date:
`
`04/22/2024
`
`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
`
`LevelTen Energy, Inc.
`
`Corporation
`
`Incorporated or
`registered in
`
`Delaware
`
`837 NORTH 34TH STREET, SUITE 200
`SEATTLE, WA 98103
`UNITED STATES
`
`Attorney informa-
`tion
`
`LUCAS S. MICHELS
`IRONMARK LAW GROUP, PLLC
`215 N.E. 40TH STREET, SUITE C-3
`SEATTLE, WA 98105
`UNITED STATES
`Primary email: lsmichels@ironmarklaw.com
`Secondary email(s): trademarks@ironmarklaw.com, csbeer@ironmarklaw.com
`+1 (206) 547-1914
`
`Docket no.
`
`Registration subject to cancellation
`
`Registration no.
`
`5863777
`
`Registration date
`
`09/17/2019
`
`Register
`
`Registrant
`
`Principal
`
`UrbanLeap, Inc.
`350 TOWNSEND STREET, SUITE 312
`SAN FRANCISCO, CA 94107
`UNITED STATES
`
`Goods/services subject to cancellation
`
`Class 035. First Use: Feb 9, 2018 First Use In Commerce: Feb 9, 2018
`All goods and services in the class are subject to cancellation, namely: Online marketplace, namely,
`operating a website for sellers and buyers of goods and/or services where information of goods and/
`or services is provided, and where transactions can be processed by the marketplace operator;
`matching government entities with vendors, namely, facilitating transactions between buyers and
`sellers through providing government entity buyers with information about sellers, goods, and/or ser-
`vices; consulting services in the fields of procurement of goods and services and evaluating goods
`and services prior to purchase; consulting services, namely, analysis and redefinition of procurement
`and purchase processes, evaluation of goods and services processes, and defining the government
`entities' innovation strategy
`
`Class 042. First Use: Feb 9, 2018 First Use In Commerce: Feb 9, 2018
`All goods and services in the class are subject to cancellation, namely: Providing temporary use of
`online non-downloadable software for use in screening, testing, evaluating, tracking and adopting
`new technologies; providing temporary use of online non-downloadable software for use in imple-
`menting pilots of new technologies for users to test and evaluate; providing temporary use of online
`non-downloadable software for use in planning and contracting for the use of new technologies;
`
`

`

`providing temporary use of online non-downloadable software for users to communicate and collabor-
`ate with vendors and team members; providing temporary use of online non-downloadable software
`for use in managing workflow; providing temporary use of online non-downloadable software for use
`in screening and prioritizing procurement proposals; providing temporary use of online non-
`downloadable software to create reports of insights and metrics; providing temporary use of online
`non-downloadable procurement software; providing temporary use of online non-downloadable soft-
`ware for users to communicate results with governments leaders, public representatives, and cit-
`izens; consulting services, namely, consulting on the processes of evaluating the quality of products
`and new technologies, and consulting on innovation strategy
`
`Grounds for cancellation
`
`Abandonment
`
`Trademark Act Section 14(3)
`
`Attachments
`
`20240422 Petition for Cancellation URBANLEAP LevelTen Energy Inc.pdf
`(2713883 bytes )
`
`Signature
`
`/lsmichels/
`
`Name
`
`Date
`
`Lucas S. Michels
`
`04/22/2024
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Trademark Registration No. 5,863,777
`For the Mark – URBANLEAP
`Date Registered – September 17, 2019
`
`
`LEVELTEN ENERGY, INC., a Delaware
`corporation,
`
`Petitioner,
`
`
`
`v.
`
`URBANLEAP, INC., a Delaware corporation,
`
`Respondent.
`
`
`
`
`
`
`
`
`
`
`PETITION FOR CANCELLATION
`
`Cancellation No.
`
`I. Parties and Petition.
`
`Petitioner, LEVELTEN ENERGY, INC., is a Delaware corporation located and doing
`business at 837 North 34th Street, Suite 200, Seattle, Washington 98103.
`
`To the best of Petitioner’s knowledge, the current owner of USPTO registration No.
`5,863,777 (the “Registration”) is Respondent, URBANLEAP, INC., a dissolved
`Delaware corporation whose last known address was 350 Townsend Street, Suite
`312, San Francisco, California 94107.
`
`Petitioner believes that it is and will continue to be damaged by the Registration,
`and hereby petitions to cancel the Registration. As grounds for this petition, it is
`alleged that:
`
`II. Facts.
`
`intent-to-use trademark
`On February 27, 2018, Respondent filed an
`1.
`application with the U.S. PATENT AND TRADEMARK OFFICE (“USPTO”) to register
`the work mark URBANLEAP (the “Respondent Mark”) for online marketplace;
`matching government entities with vendors; consulting services in International Class
`(IC) 035, and providing temporary use of online non-downloadable software for use in
`screening, testing, evaluating, tracking and adopting new technologies; providing
`temporary use of online non-downloadable software for use in implementing pilots of
`new technologies for users to test and evaluate; providing temporary use of online non-
`downloadable software for use in planning and contracting for the use of new
`technologies; providing temporary use of online non-downloadable software for users to
`communicate and collaborate with vendors and team members; providing temporary use
`
`Page - 1 Petition for Cancellation
`TTAB Cancellation Proceeding No.
`
`
`
`
`

`

`of online non-downloadable software for use in managing workflow; providing
`temporary use of online non-downloadable software for use in screening and prioritizing
`procurement proposals; providing temporary use of online non-downloadable software to
`create reports of insights and metrics; providing temporary use of online non-
`downloadable procurement software; providing temporary use of online non-
`downloadable software for users to communicate results with governments leaders,
`public representatives, and citizens; consulting services in IC 042. Respondent’s
`USPTO application for the Respondent Mark was assigned Serial No. 87,813,530
`(the “Respondent Application”).
`
`On December 18, 2018, the claimed services in the Respondent Application
`2.
`were amended to online marketplace, namely, operating a website for sellers and buyers
`of goods and/or services where information of goods and/or services is provided, and
`where transactions can be processed by the marketplace operator; matching government
`entities with vendors, namely, facilitating transactions between buyers and sellers
`through providing government entity buyers with information about sellers, goods,
`and/or services; consulting services in the fields of procurement of goods and services and
`evaluating goods and services prior to purchase; consulting services, namely, analysis
`and redefinition of procurement and purchase processes, evaluation of goods and
`services processes, and defining the government entities innovation strategy in IC 035,
`and providing temporary use of online non-downloadable software for use in screening,
`testing, evaluating, tracking and adopting new technologies; providing temporary use of
`online non-downloadable software for use in implementing pilots of new technologies for
`users to test and evaluate; providing temporary use of online non-downloadable software
`for use in planning and contracting for the use of new technologies; providing temporary
`use of online non-downloadable software for users to communicate and collaborate with
`vendors and team members; providing temporary use of online non-downloadable
`software for use in managing workflow; providing temporary use of online non-
`downloadable software for use in screening and prioritizing procurement proposals;
`providing temporary use of online non-downloadable software to create reports of
`insights and metrics; providing temporary use of online non-downloadable procurement
`software; providing temporary use of online non-downloadable software for users to
`communicate results with governments leaders, public representatives, and citizens;
`consulting services, namely, consulting on the processes of evaluating the quality of
`products and new technologies, and consulting on innovation strategy in IC 042
`(collectively, the “Respondent Services”).
`
`On July 2, 2019, Respondent filed a Statement of Use for the Respondent
`3.
`Application, claiming a first date of use anywhere and first date of use in commerce
`as of February 9, 2018, which was accepted by the USPTO on August 16, 2019.
`
`The Respondent Application registered on the USPTO Principal Trademark
`4.
`Register on September 17, 2019, becoming the Registration.
`
`On or around October 31, 2022, Respondent’s officials announced that
`5.
`Respondent was shutting down its business offered under the Respondent Mark. See
`EXHIBIT A.
`
`Page - 2 Petition for Cancellation
`TTAB Cancellation Proceeding No.
`
`
`
`
`

`

`Two months later, on or around December 22, 2022, Respondent’s corporate
`6.
`entity as registered with the Delaware Division of Corporations was dissolved. See
`EXHIBIT B.
`
`7. On information and belief, as well as Petitioner’s own investigations,
`Respondent’s website in which the Respondent Services were offered under the
`Respondent Mark, namely www.urbanleap.com (“Respondent Website”), has been
`inactive since 2022, and the domain to the Respondent Website has been made
`available for public sale. See EXHIBIT C.
`
`8. On August 25, 2022, Petitioner filed an intent-to-use trademark application for
`the word mark LEAP (“Petitioner Mark”) on the USPTO Principal Register for
`services for evaluating, arranging, facilitating, awarding, and executing of contracts and
`requests for proposals intended for the carbon-free energy industry in IC 036, and online
`non-downloadable software services for evaluating, arranging, facilitating, awarding,
`and executing of contracts and requests for proposals intended for the carbon-free energy
`industry in IC 042. Petitioner’s application for the Petitioner Mark was assigned
`Serial No. 97,565,824 (“Petitioner Application”).
`
`Since its filing, the claimed services in the Petitioner Application have been
`9.
`amended to procurement services, namely, procurement of contracts for others for the
`purchase of energy for the carbon-free energy industry; negotiation of business contracts
`for others for the carbon-free energy industry; outsourcing services in the nature of
`arranging service contracts for others for the carbon-free energy industry in IC 035, and
`providing online non-downloadable software for evaluating, arranging, facilitating,
`awarding, and executing of contracts and requests for proposals intended for the carbon-
`free energy industry in IC 042 (collectively, the “Petitioner Services”)
`
`10. The Petitioner Application was issued a non-final office action letter on June
`20, 2023, and a final office action letter on February 2, 2024, both citing a likelihood
`of confusion refusal based on the Respondent Mark in the Registration.
`
`III. Basis for Cancellation.
`Abandonment
`15 U.S.C. § 1064(3)
`
`Petitioner realleges and incorporates by reference the preceding allegations
`11.
`contained herein.
`
`12. Upon information and belief, the Respondent Mark has been abandoned in
`accordance with 15 U.S.C. § 1127, based on the announcement of the shutting down
`of Respondent’s business on or around October 31, 2022, Respondent’s corporate
`dissolution on or around December 22, 2022, Respondent’s shutting down of the
`Respondent Website and apparent non-use of the Respondent Mark since 2022, and
`the placement of the Respondent Website domain for public sale.
`
`Page - 3 Petition for Cancellation
`TTAB Cancellation Proceeding No.
`
`
`
`
`

`

`13. Upon information and belief, based on the facts and allegations detailed in
`Paragraph 12 herein, Respondent has abandoned the Respondent Mark without any
`intent to resume use.
`
`14. By virtue of Respondent’s abandonment of the Respondent Mark as claimed
`in the Registration without intent to resume use, the Registration should be
`cancelled.
`
`15. Petitioner will be harmed by the continued registration of the Registration as
`it prevents Petitioner from otherwise registering its valid rights to the Petitioner
`Mark with the USPTO as provided in the Petitioner Application.
`
`WHEREFORE, Petitioner prays that Registration No. 5,863,777 be cancelled and that
`this Petition for Cancellation be sustained in favor of Petitioner.
`
`
`
`RESPECTFULLY SUBMITTED this 22nd day of April 2024.
`
`IRONMARK LAW GROUP, PLLC
`
`
`
`Lucas S. Michels
`Wash. State Bar No. 45350
`(Active member since 2012 and in good standing)
`Christopher S. Beer
`Wash. State Bar No. 27426
`(Active member since 1997 and in good standing)
`215 N.E. 40th Street, Suite C-3
`Seattle, Washington 98105
`E-Mails: lsmichels@ironmarklaw.com,
`csbeer@ironmarklaw.com,
`trademarks@ironmarklaw.com
`
`Attorneys for Petitioner
`
`Page - 4 Petition for Cancellation
`TTAB Cancellation Proceeding No.
`
`
`
`
`

`

`
`
`Exhibit A
`Exhibit A
`
`
`
`
`
`
`
`

`

`Procurement and Innovation Tech Startup UrbanLeap Shuts Down
`
`2/6/24, 10:32 PM
`
`
`
`NewslettersNewsletters WebinarsWebinars
`
`
`
`
`
`EventsEvents
`
`
`
`MagazineMagazine
`
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`
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`GOVTECH BIZGOVTECH BIZ
`
`Procurement and Innovation Tech StartupProcurement and Innovation Tech Startup
`
`
`UrbanLeap Shuts DownUrbanLeap Shuts Down
`
`The five-year-old company said it served 35 local governments, helping
`them buy fireworks, IT systems and even sonography services for
`cemeteries. The Gov Tech 100 firm recently partnered with CentralSquare
`Technologies.
`
`October 31, 2022 • News Staf
`
`https://www.govtech.com/biz/procurement-and-innovation-tech-startup-urbanleap-shuts-down
`
`Page 1 of 9
`
`

`

`Procurement and Innovation Tech Startup UrbanLeap Shuts Down
`
`2/6/24, 10:32 PM
`
`Shutterstock
`
`UrbanLeap is no more.
`
`The Silicon Valley-based government technology firm that recently boasted that it was
`
`“reinventing the public procurement market” has shut down, according to an email
`
`from CEO Arik Bronshtein and CTO Erez Druk.
`
`“Fixing government procurement did prove to be hard. And although we got
`
`meaningfully close, today we’re shutting down UrbanLeap,” the email read. “Shutting
`
`down is a failure. When entrepreneurs are asked why they failed, there is only one
`
`adequate answer: ‘I wasn’t good enough.’ We were good, we were smart, we worked
`
`insanely hard for 5 years. But we weren’t good enough. And we will share our
`
`reflections soon enough.”
`
`https://www.govtech.com/biz/procurement-and-innovation-tech-startup-urbanleap-shuts-down
`
`Page 2 of 9
`
`

`

`Procurement and Innovation Tech Startup UrbanLeap Shuts Down
`
`2/6/24, 10:32 PM
`
`ADVERTISEMENT
`
`The two executives could not be immediately reached for additional comment, and
`
`the UrbanLeap website, still up as of Monday afternoon, ofered no information or
`
`acknowledgment of the company shutdown.
`
`UrbanLeap made the most recent GovTech 100.
`
`In August, in an announcement that helped to illustrate what UrbanLeap was trying to
`
`do in the gov tech market, CentralSquare Technologies, which sells public-sector
`
`software, said it had formed a strategic partnership with the company.
`
`https://www.govtech.com/biz/procurement-and-innovation-tech-startup-urbanleap-shuts-down
`
`Page 3 of 9
`
`

`

`Procurement and Innovation Tech Startup UrbanLeap Shuts Down
`
`2/6/24, 10:32 PM
`
`ADVERTISEMENT
`
`“This partnership provides government entities a solution to take control of the
`
`procurement process within a single platform to develop, publish and evaluate bids,”
`
`the announcement read.
`
`According to data from Crunchbase, UrbanLeap raised $4.2 million in total funding
`
`and had two investors.
`
`The shutdown email from the company’s executives painted a finer picture of
`
`UrbanLeap’s activities.
`
`“35 municipalities used us to deploy $16M+ throughout the procurement process,” the
`
`email read. “They leveraged UrbanLeap to procure anything: printers, IT systems, road
`
`construction, fireworks and even sonography services to figure out which cemetery
`
`spots are currently occupied.”
`
`Back in 2021, the company, after initially aiming to help local governments run pilots
`
`and otherwise try out new ideas, launched a procurement tool meant to help public
`
`agencies with the buying process. At the time a company executive said the tech
`
`could prove especially useful for purchases of products that a specific government
`
`had not bought before, or for particularly complicated purchases.
`
`The shutdown email from the UrbanLeap CEO and CTO ofers insight on the
`
`procurement and gov tech spaces and their challenges — business insight that might
`
`feel familiar to other people and organizations involved in public agency operations
`
`and gov tech even as the industry as a whole continues to grow and attract significant
`
`investment.
`
`“We like to joke that we picked the hardest possible business for our first startup.
`
`https://www.govtech.com/biz/procurement-and-innovation-tech-startup-urbanleap-shuts-down
`
`Page 4 of 9
`
`

`

`Procurement and Innovation Tech Startup UrbanLeap Shuts Down
`
`2/6/24, 10:32 PM
`
`Governments are not the fastest adopters in the world,” the email read. “Achieving the
`
`best outcome for every government purchase is an important mission. Government
`
`procurement is how 10 (percent) of the economy is run. It is how taxpayer dollars are
`
`being spent. It is how governments are able to provide, and sometimes fail to provide,
`
`critical services to their residents.”
`
`
`
`
`
`Workforce and People,, Local GovernmentLocal Government,, GovTech BizGovTech Biz,, FinanceFinance
`
`Tags:Tags: Workforce and People
`
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`
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`
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`Email Address*
`
`

`

`Procurement and Innovation Tech Startup UrbanLeap Shuts Down
`
`2/6/24, 10:32 PM
`
`ADVERTISEMENT
`
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`
`Page 6 of 9
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`Procurement and Innovation Tech Startup UrbanLeap Shuts Down
`
`2/6/24, 10:32 PM
`
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`Procurement and Innovation Tech Startup UrbanLeap Shuts Down
`
`2/6/24, 10:32 PM
`
`
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`AboutAbout
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`Page 8 of 9
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`

`Procurement and Innovation Tech Startup UrbanLeap Shuts Down
`
`2/6/24, 10:32 PM
`
`https://www.govtech.com/biz/procurement-and-innovation-tech-startup-urbanleap-shuts-down
`
`Page 9 of 9
`
`

`

`
`
`Exhibit B
`Exhibit B
`
`
`
`
`
`
`

`

`Division of Corporations - Filing
`
`2/6/24, 8:40 PM
`
`Delaware.gov
`
`Governor | General Assembly | Courts | Elected Officials | State Agencies
`
`
`
`Department of State: Division of Corporations
`
`HOME
`
`View Search Results
`
`Allowable Characters
`
`Entity Details
`
`File Number:
`
`6613136
`
`Incorporation Date /
`Formation Date:
`
`11/13/2017
`(mm/dd/yyyy)
`
`Entity Name:
`
`URBANLEAP, INC.
`
`Entity Kind:
`
`Corporation
`
`Entity Type: General
`
`Residency:
`
`Domestic
`
`State: State:
`
`Status:
`
`Dissolved
`
`Status Date:
`
`12/22/2022
`
`REGISTERED AGENT INFORMATION
`
`Name:
`
`Address:
`
`City:
`
`State:
`
`Phone:
`
`INCORPORATING SERVICES, LTD.
`
`3500 S DUPONT HWY
`
`DOVER
`
`DE
`
`302-531-0855
`
`County: Kent
`
`Postal Code:
`
`19901
`
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`https://icis.corp.delaware.gov/Ecorp/EntitySearch/EntitySearchStatus.aspx?i=6613136&d=n
`
`Page 1 of 1
`
`

`

`
`
`Exhibit C
`Exhibit C
`
`
`
`
`
`
`
`

`

`4/22/24, 10:22 AM
`
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