IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Transcription

1 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD MASTER INSPECTOR CERTIFICATION BOARD, INC., Petitioner, Cancellation No. Trademark: NATIONAL HOME INSPECTOR EXAMINATION EXAMINATION BOARD OF PROFESSIONAL HOME INSPECTORS, INC., Reg. No.: 2,619,101 Registrant. PETITION FOR CANCELLATION Master Inspector Certification Board, Inc. (the Petitioner believes that it is being damaged and will continue to be damaged by the registration of the trademark NATIONAL HOME INSPECTOR EXAMINATION on the Supplemental Register for title of written examination taken by professional home inspectors to determine their qualifications for association membership and/or state licensing in International Class 016, as shown in U.S. Trademark Registration No. 2,619,101 (the Registration and, through its attorneys, petitions to cancel this Registration. In support of this Petition for Cancellation, Petitioner alleges as follows: 1. Petitioner is a Colorado non-profit corporation with tax-exempt status under Section 501(c(6 of the Internal Revenue Code. Petitioner s principal place of business is at th Street, Suite 301, Boulder, Colorado Petitioner is an established and respected provider of certification

2 standards that promote excellence and professionalism for inspection professionals operating in the residential and commercial-building inspection industry. Petitioner has promulgated rigorous certification standards that allow qualifying home inspectors to earn the Certified Master Inspector designation, which is the highest professional designation available in the industry. 3. Beginning prior to the application filing date and registration date of the Registration, Petitioner has used the certification mark and name CERTIFIED MASTER INSPECTOR to certify home inspection services, which are provided by inspectors that meet Petitioner s rigorous certification standards. 4. Petitioner owns U.S. Certification Mark Registration No. 5,089,809 for the certification mark CERTIFIED MASTER INSPECTOR covering home inspection services in U.S. Class B in use since at least as early as May 1998 and U.S. Certification Mark Registration No. 5,189,338 for the certification mark CMI for home inspection services... and commercial building inspection services... in U.S. Class B in use since at least as early as April Upon information and belief, Examination Board of Professional Home Inspectors, Inc. (the Registrant is an Illinois corporation having a business address of 800 E. Northwest Highway, Suite 700, Palatine, Illinois While the application to register the Registration (the Application was pending, Registrant disclaimed, through its attorney representative, the term examination as merely describing an ingredient, quality, characteristic, function, feature, purpose, or use of Registrant s goods, and thus as an unregistrable component of the mark NATIONAL HOME INSPECTOR EXAMINATION. A copy of the 2

3 Response to Office Action containing Registrant s disclaimer is attached hereto as Exhibit A. 7. The term home inspection is defined as: A complete, professional inspection of a property intended to check and evaluate the safety of the structure and mechanical condition. (Home Inspection In BusinessDictionary.com. Retrieved March 7, 2018, from It follows that a home inspector is a professional who performs home inspections. 8. Upon information and belief, Registrant s examination includes questions pertaining to matters outside the scope of the term home inspector examination. 9. The adjective national is defined as: Of, relating to, or maintained by a nation as an organized whole or independent political unit; owned, preserved, or maintained by the federal government; peculiar or common to the whole people of a country; devoted to one s own nation; nationalist; concerning or encompassing an entire nation; and limited to one nation. (National In Dictionary.com. Retrieved March 6, 2018, from Upon information and belief, Registrant is not affiliated with or approved by the United States federal government or any administrative body with authority to approve it on a national basis. 11. Upon information and belief, Registrant does not administer its home inspector examination in each U.S. state and is not recognized by the home-inspection licensing authority of each state. Instead, Registrant s home inspector examination is recognized as part of the home inspector licensing requirements of only twenty-nine 3

4 states, as explained at Registrant s Internet website Upon information and belief, Petitioner and Registrant compete for the same consumers, namely inspectors of residential property seeking professional certifications, professional examinations, and other professional credentials. 13. Petitioner, a competitor of Registrant, has an interest in using the phrase national home inspector examination in its business and is likely to be damaged by the continued registration of the mark NATIONAL HOME INSPECTOR EXAMINATION. COUNT I Deceptively Misdescriptive (15 U.S.C. 1052(e and 15 U.S.C Petitioner realleges and incorporates by reference the preceding allegations of this Petition for Cancellation. 15. The term national home inspector examination falsely conveys an immediate idea of the goods with which Registrant s mark is used, namely the term national home inspector examination falsely indicates a nationally administered, recognized, authorized, and/or accredited examination for home inspectors. Therefore, examinations administered under the mark NATIONAL HOME INSPECTOR EXAMINATION would reasonably be expected by ordinary consumers (i.e., home inspectors to be a home inspection examination that is affiliated with, approved by, administered by, or recognized by the U.S. federal government or some other 4

5 administrative body with national approval authority and/or to be recognized and accredited nationally as part of the home-inspector licensing requirements of every U.S. state, such that the mark misdescribes the multi-state, not national, home inspector examination administered under the mark. 16. Home inspection professionals seeking certification via a home-inspection examination are likely to believe that the misdescription correctly describes the examination administered under the mark and that the examination is a nationally accredited examination covering matters exclusively relating to home inspection that is authorized by the federal government or some other national approval body and/or recognized and accepted by the home inspection licensing authority in each U.S. state. COUNT II Trademark Contains Deceptive Matter (15 U.S.C. 1052(a and 15 U.S.C Petitioner realleges and incorporates by reference the preceding allegations of this Petition for Cancellation. 18. The term national home inspector examination falsely conveys an immediate idea of the goods with which Registrant s mark is used, namely the term national home inspector examination falsely indicates a nationally administered, recognized, authorized, and/or accredited examination for home inspectors. Therefore, examinations administered under the mark NATIONAL HOME INSPECTOR EXAMINATION would reasonably be expected by ordinary consumers (i.e., home inspectors to be a home inspection examination that is affiliated with, approved by, 5

6 administered by, or recognized by the U.S. federal government or some other administrative body with national approval authority and/or to be recognized and accredited nationally as part of the home-inspector licensing requirements of every U.S. state, such that the mark misdescribes the multi-state, not national, home inspector examination administered under the mark. 19. Home inspection professionals seeking certification via a home-inspection examination are likely to believe that the misdescription correctly describes the examination administered under the mark and that the examination is a nationally accredited examination covering matters exclusively relating to home inspection that is authorized by the federal government or some other national approval body and/or recognized and accepted by the home inspection licensing authority in each U.S. state. 20. The misrepresentation would be material to a reasonable home inspector consumer in deciding whether or not to purchase, or sit for, the examination. COUNT III Trademark is Generic (15 U.S.C. 1064(3 and 15 U.S.C Petitioner realleges and incorporates by reference the preceding allegations of this Petition for Cancellation. 22. Registrant is not entitled to exclusive use of the term national home inspector examination in commerce for the goods identified in the Registration. 23. The purchasing public would not understand or believe that home inspector examinations offered under the term national home inspector examination refer to Registrant. 6

7 24. The term national home inspector examination is generic in that its primary significance to the purchasing public is a national examination administered to home inspection professionals, and therefore, the term is generic with regard to the goods identified in the Registration and incapable of serving as an indicator of source. 25. The term national home inspector examination is necessary to accurately describe the subject matter of Petitioner s and other third parties home inspection education, credential, and examination goods and services. 26. If Registrant is allowed to maintain its registration for NATIONAL HOME INSPECTOR EXAMINATION, Registrant would continue to improperly obstruct Petitioner s as well as other third parties descriptive use of the term. WHEREFORE, Petitioner respectfully requests that the Registration be cancelled and that this Petition be granted. This Petition is submitted electronically together with the filing fee of $400. Dated: March 14, 2018 Respectfully submitted, /James A. Sheridan 43114/ James A. Sheridan Libby Huskey SHERIDAN LAW LLC 1600 Jackson Street, Ste. 350 Golden, CO @sheridanlaw.com Telephone: ( Facsimile: ATTORNEYS FOR PETITIONER MASTER INSPECTOR CERTIFICATION BOARD, INC. 7

8 CERTIFICATE OF SERVICE I hereby certify that on March 14, 2018, I served a true and correct copy of the foregoing PETITION FOR CANCELLATION by electronic mail and by U.S. mail, postage prepaid, and addressed to the following: Melissa A. Vallone, Attorney of Record Barnes & Thornburg LLP P.O. Box 2786 Chicago, Illinois mvallone@btlaw.com /James A. Sheridan 43114/ JAMES A. SHERIDAN SHERIDAN LAW LLC 8

9 Exhibit A