Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1132257
`05/07/2021
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding No.
`
`92076524
`
`Filing Party
`
`Other Party
`
`Plaintiff
`Mercato, Inc.
`
`Defendant
`Mercatus Technologies Inc.
`
`Pending Motion
`
`There is no motion currently pending and no other motion is being filed concur-
`rent with this consent motion.
`
`Attachments
`
`Motion to Suspend Pending Civil Action - Mercato v. Mercatus.pdf(4284668
`bytes )
`
`Consent Motion for Suspension in View of Civil Proceeding
`
`The parties are engaged in a civil action which may have a bearing on this proceeding. Accordingly, Mercato,
`Inc. hereby requests suspension of this proceeding pending a final determination of the civil action. Trade-
`mark Rule 2.117.
`Mercato, Inc. has secured the express consent of all other parties to this proceeding for the suspension re-
`quested herein.
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this submission has been served upon all parties, at their ad-
`dress of record by Email on this date.
`Respectfully submitted,
`/Paul A. Bost/
`Paul A. Bost
`pbost@smrh.com
`05/07/2021
`
`

`

`
`
`
`
`THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Docket No.: 74ZA-321968
`
`In re Registration No. 4,654,847 for the
`trademark MERCATUS in Classes 9, 12, 35,
`37, 38, 39, and 42
`
`Mercato, Inc.,
`
`
`
`
`
`
`
`v.
`
`Petitioner,
`
`Mercatus Technologies Inc.,
`
`
`
`
`
`Registrant.
`
`
`Cancellation No.: 92-076524
`
`PETITIONER, INC.’S CONSENTED
`MOTION TO SUSPEND PROCEEDINGS
`PURSUANT TO 37 C.F.R. § 2.177(a)
`
`
`Pursuant to 37 C.F.R. § 2.177(a) and TBMP §510, Petitioner Mercato, Inc.
`
`
`
`(“Petitioner”), with the consent of Registrant Mercatus Technologies, Inc. (“Registrant”),
`
`moves the Board to suspend the proceedings on the grounds that the parties have filed claims
`
`and counterclaims against each other in the United States District Court for Delaware (the
`
`“Civil Action”), which case is captioned Mercatus Technologies, Inc. v. Mercato, Inc., Case
`
`No. 1:19-CV-01076-CFC. A true and correct copy of Registrant’s complaint in the Civil
`
`Action is attached hereto as Exhibit A. The complaint alleges, inter alia, that Petitioner’s use
`
`of “Mercato” infringes Opposer’s alleged rights in MERCATUS. A true and correct copy of
`
`Petitioner’s counterclaims in the Civil Action are attached hereto as Exhibit B. The
`
`counterclaims petition to cancel, inter alia, Registrant’s registration at issue in this proceeding
`
`on the same grounds asserted by Petitioner herein.
`
`Under 37 C.F.R. § 2.117(a), “[w]henever it shall come to the attention of the
`
`Trademark Trial and Appeal Board that a party or parties to a pending case are engaged in a
`
`civil action or another Board proceeding which may have a bearing on the case, proceedings
`
` 1
`
`
`
`

`

`
`
`before the Board may be suspended until termination of the civil action or the other Board
`
`proceeding.” 37 C.F.R. § 2.117(a). See also TBMP § 510.02(a). Here, the Civil Action may
`
`be dispositive of the Board proceedings, as the issues to be determined by the Board here are
`
`identical (or substantially similar) to those that the United States District Court will decide in
`
`the Civil Action.
`
`Registrant’s motion should be granted for the following four reasons.
`
`First, and most importantly, if the Board suspends the proceedings and allows the
`
`United States District Court to rule first, the United States District Court’s decision would be
`
`binding on the Board under the doctrines of res judicata and collateral estoppel. Mother’s
`
`Restaurant Inc. v. Mama’s Pizza, Inc., 723 F.2d 1566, 1569-73 (Fed. Cir. 1983) (collateral
`
`estoppel); Midland Cooperatives, Inc. v. Midland International Corp., 421 F.2d 754, 758-59
`
`(CCPA 1970) (res judicata).
`
`By contrast, if the Board decides this proceeding before the United States District
`
`Court adjudicates the Civil Action, the Board’s findings could be challenged in the Civil
`
`Action or in another civil action in another federal district court. 15 U.S.C. § 1071(b).
`
`Therefore, in the interest of judicial economy, the Board should suspend the Board
`
`proceeding. A ruling by the United States District Court in the Civil Action will control the
`
`outcome of the Board proceeding, but not necessarily vice versa. See B &B Hardware, Inc. v.
`
`Hargis Industries, Inc., 135 U.S. 1293, 113 USPQ2d 2045, 2048, 2053, 2056 (2015).
`
`Second, allowing these matters to be resolved by the Civil Action promotes judicial
`
`efficiency and encourages the parties themselves to resolve this dispute in the most efficient
`
`matter possible. The fundamental issues in the Board proceeding are essentially identical to –
`
`and encompassed within – certain of the issues in the Civil Action, as described above.
`
` 2
`
`
`
`

`

`
`
`Indeed, the Civil Action need only have a bearing on the Board’s decisions with respect to the
`
`Board proceeding to justify a suspension. See New Orleans Louisiana Saints LLC v. Who
`
`Dat? Inc., 99 USPQ2d 1550, 1552 (TTAB 2011). If the Board proceeding is suspended
`
`pending the disposition of the Civil Action, the parties will avoid unnecessarily expending
`
`resources fighting the proverbial “battle” on two “fronts” instead of just one. Thus,
`
`suspending the Board proceeding will not prejudice either party, as it will allow the parties to
`
`resolve their entire dispute while expending the least amount of resources. The Civil Action
`
`will resolve all issues before the Board and then some, whereas the converse is not true.
`
`Third, the consolidated proceedings should be suspended to avoid inconsistent rulings
`
`between the Board and the United States District Court, especially since the United States
`
`District Court’s decision will ultimately be binding on the Board.
`
`
`
`Fourth, Registrant consents to the suspension of the proceedings.
`
`For the reasons stated herein, the Board should suspend the Board proceeding pending
`
`the outcome of the Civil Action. Should the Board deny this motion to suspend, Petitioner
`
`requests the Board to reset all pending deadlines to run from Petitioner’s filing of this motion.
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
`
`
`By /s/Paul A. Bost
`
`Jill M. Pietrini
`Paul A. Bost
`Attorneys for Petitioner
`MERCATO, INC.
`
`
`
`
` 3
`
`
`
`
`
`
`Dated: May 7, 2021
`
`
`
`
`
`
`
`
`

`

`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that the PETITIONER, INC.’S CONSENTED MOTION TO
`SUSPEND PROCEEDINGS PURSUANT TO 37 C.F.R. § 2.177(a) is being emailed to
`RKenney@kenneyip.com and ipdockets@kenneyip.com on this 7th day of May, 2021.
`
`
`/s/Paul A. Bost
`Paul A. Bost
`
`
`
`
`
`
`
`
`CERTIFICATE OF E-FILING
`
`I hereby certify that the APPLICANT AMPLY POWER, INC.’S MOTION TO
`SUSPEND PROCEEDINGS PURSUANT TO 37 C.F.R. § 2.177(a) is being transmitted
`electronically via ESTTA on this 7th day of May, 2021.
`
`
`/s/Paul A. Bost
`Paul A. Bost
`
`
`
`SMRH:4824-9348-0936.1
`
` 4
`
`
`
`

`

`EXHIBIT A
`
`

`

`Case 1:19-cv-01076-CFC Document 1 Filed 06/10/19 Page 1 of 9 PageID #: 1
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Plaintiffs,
`
`Defendant.
`
`
`
`
`
`
` Civil Action No.
`
` JURY TRIAL DEMANDED
`
`
`
`
`
`
`MERCATUS TECHNOLOGIES, INC.,
`
`and
`
`MERCATUS USA INC.,
`
`
`
`v.
`
`MERCATO, INC.,
`
`
`
`
`
`
`
`
`
`
`
`
`
`COMPLAINT FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION
`
`
`
`
`Plaintiffs, Mercatus Technologies, Inc., and Mercatus USA Inc. (collectively "Mercatus"),
`
`by and through its attorneys, bring this action against Defendant, Mercato, Inc. ("Mercato"). As
`
`grounds for this Complaint, Mercatus alleges the following:
`
`NATURE OF THE ACTION
`
`1.
`
`This is an action for trademark infringement and unfair competition arising under
`
`the trademark and unfair competition laws of the United States, 15 U.S.C. § 1114 and 1125(a), and
`
`state unfair competition laws related to Mercato's use of the mark MERCATO in connection with
`
`providing e-commerce services to grocers and other merchants for online ordering and delivery of
`
`products to consumers.
`
`2.
`
`Mercatus is a leading creator and builder of web and mobile applications
`
`exclusively for grocery retailers to help them to extend their brand's online presence, offer
`
`personalized experiences to their customers, and sell their products on the web. It has been
`
`providing these services to grocery retailers in the United States under the trademark MERCATUS
`
`

`

`Case 1:19-cv-01076-CFC Document 1 Filed 06/10/19 Page 2 of 9 PageID #: 2
`
`since at least as early as 2010. Mercatus recently became aware that Mercato is providing the same
`
`services to grocers, as well as consumers, under the trademark MERCATO, which use has begun to
`
`overlap with the Mercatus channels of trade and to cause confusion and/or the likelihood of
`
`confusion in the relevant marketplace. The continued use of the MERCATO mark by Mercato will
`
`continue to cause harm to Mercatus and the value and strength of the MERCATUS mark.
`
`THE PARTIES
`
`3.
`
`Plaintiff, Mercatus Technologies, Inc., is a corporation organized under the laws of
`
`Canada with its principal place of business at 60 Adelaide St. E., Suite 700 Toronto, Ontario
`
`CANADA M5C3E4.
`
`4.
`
`Plaintiff, Mercatus USA Inc., is a corporation organized under the laws of the state
`
`of Delaware with its principal place of business at 6000 Fairview Rd., Suite 1200, Charlotte, North
`
`Carolina 28210. Mercatus USA, Inc., is a wholly owned subsidiary of Mercatus Technologies, Inc.
`
`5.
`
`Defendant, Mercato, Inc., is a corporation organized under the laws of the state of
`
`Delaware, with a principal place of business at 550 West B. Street, 4th Floor, San Diego, CA
`
`92101.
`
`JURISDICTION AND VENUE
`
`6.
`
`This Court has subject matter jurisdiction over this action pursuant to 28 U.S.C. §§
`
`1331, 1338 and 1367, and 15 U.S.C. § 1121 because this is an action for trademark infringement
`
`and related unfair competition claims under federal law.
`
`7.
`
`This Court has personal jurisdiction over Mercato because Mercato is a Delaware
`
`corporation. This Court also has personal jurisdiction over Mercato because, on information and
`
`belief, Mercato regularly engages in business and derives revenue from services rendered in
`
`Delaware. Mercato markets and offers it services using the infringing MERCATO mark via the
`
`2
`
`

`

`Case 1:19-cv-01076-CFC Document 1 Filed 06/10/19 Page 3 of 9 PageID #: 3
`
`Internet on its active website, www.mercato.com, through which merchants in this judicial district
`
`can manage the sale of their goods.
`
`8.
`
`Venue is proper in this district pursuant to 28 U.S.C. § 1391(b) and (c) because
`
`Mercato is subject to personal jurisdiction in this District.
`
`FACTS
`
`9.
`
`Mercatus was incorporated in Canada in 2004. Mercatus began in 2004 as a
`
`privately funded group of passionate innovators who identified a gap in the retail technology
`
`market. Focusing on both hardware and software, Mercatus commercialized an intuitive, small-
`
`screen computer for grocery carts. It offered shoppers coupons, recipe ideas, loyalty rewards and
`
`more, all served up at their fingertips in-store. Subsequently, it saw a bigger opportunity for its
`
`proprietary software, helping retailers manage inventory, increase customer retention and improve
`
`margins. It was a compelling and expansive vision that earned Mercatus globally-recognized clients
`
`and industry accolades. Recognizing that mobile technology would lead to even greater
`
`opportunities for grocers to deliver exceptional customer experiences, Mercatus focused on the
`
`web-based platform technology it delivers today. Mercatus holds more than 150 patents registered
`
`in over 20 countries, and it continues to build on its heritage of innovation to deliver solutions that
`
`make leading grocers more adaptive, attentive and profitable.
`
`10.
`
`Since at least as early as 2010, Mercatus has used the distinctive MERCATUS mark
`
`in the United States in connection with its software platforms through which grocers establish
`
`customized online product purchasing applications for their customers. On December 2, 2010,
`
`Mercatus filed three separate trademark applications for the MERCATUS mark in connection with
`
`hardware, software and design and maintenance services relating to its electronic retail purchasing
`
`3
`
`

`

`Case 1:19-cv-01076-CFC Document 1 Filed 06/10/19 Page 4 of 9 PageID #: 4
`
`and delivery applications for retailers. All three applications registered on December 16, 2014.
`
`Copies of those registrations are appended hereto collectively as Exhibit 1.
`
`11. Mercatus has made continuous and extensive use of the MERCATUS mark in the
`
`United States since at least as early as 2010, teaming with large, national grocery store chains as
`
`well as much smaller, sometimes regional grocers. Through this use, Mercatus has established
`
`widespread recognition of its mark in the grocery industry and valuable goodwill in the
`
`MERCATUS mark.
`
`12. Mercatus has spent considerable sums advertising its goods and services offered in
`
`the United States under the MERCATUS mark since 2010, and Mercatus has achieved significant
`
`sales success of its MERCATUS goods and services during that period.
`
`13.
`
`As a result of this extensive use, advertising and sales of goods and services in the
`
`United States, merchants, including grocers, have come to recognize the MERCATUS mark as
`
`indicating the source of excellent products and services relating to electronic retail purchasing and
`
`delivery applications for retailers.
`
`14.
`
`In February 2019, representatives from Mercatus attended the annual National
`
`Grocer's Association show in San Diego as an Exhibitor. It was at that show that Mercatus learned
`
`of the existence of Mercato, who was likewise an exhibitor, and the extent to which Mercato’s
`
`services are similar to those of Mercatus. A copy of the Exhibitor list from that show is appended
`
`hereto as Exhibit 2
`
`(also available at: https://s23.a2zinc.net/clients/clarionux/nga2019/
`
`public/Exhibitors.aspx?sortMenu=104001), and shows on page seven
`
`(7) Mercato.com,
`
`immediately followed by Mercatus Technologies, Inc.
`
`15.
`
`On or about April 25, 2019, Mercatus informed Mercato of the existence of
`
`Mercatus’ trademark rights in the MERCATUS mark, and of Mercatus’ corresponding US
`
`4
`
`

`

`Case 1:19-cv-01076-CFC Document 1 Filed 06/10/19 Page 5 of 9 PageID #: 5
`
`trademark registrations. A copy of the April 25, 2019, letter to Mercato is appended hereto as
`
`Exhibit 3.
`
`16.
`
`On information and belief, Mercato uses the mark MERCATO in connection with
`
`products and services that are identical or nearly identical to those offered by Mercatus under the
`
`MERCATUS mark and the marks MERCATUS and MERCATO are highly similar in appearance,
`
`pronunciation and meaning. The use of the MERCATO mark by Mercato began at some time
`
`subsequent to the first use by Mercatus of the MERCATUS mark in the United States. Mercato also
`
`owns and operates the active web site at the URL www.mercato.com, which is directed, in part, to
`
`grocers that sell products online through Mercato’s web site.
`
`FIRST CLAIM FOR RELIEF
`FEDERAL TRADEMARK INFRINGEMENT
`15 U.S.C. § 1114
`
`The allegations contained in paragraphs 1 through 16 are incorporated herein by
`
`17.
`
`reference.
`
`18.
`
`This claim is brought under 15 U.S.C. § 1114.
`
`19. Mercatus has continuously and extensively used the MERCATUS mark in the
`
`United States since at least as early as 2010 and has obtained several federal trademark registrations
`
`for the MERCATUS mark. See Exhibit 1. That use began long prior to Mercato's use of the
`
`MERCATO mark.
`
`20.
`
`By its use of the MERCATO mark, Defendant has infringed and continues to
`
`infringe Mercatus' trademark rights in violation of the Lanham Act § 32, 15 U.S.C. § 1114.
`
`Mercato's use of the MERCATO mark for identical products and services, offered within the very
`
`same industry confuses, misleads and deceives members of the retail services field into believing
`
`5
`
`

`

`Case 1:19-cv-01076-CFC Document 1 Filed 06/10/19 Page 6 of 9 PageID #: 6
`
`that Mercatus has allowed, sponsored, approved, or licensed Mercato to provide competing
`
`products or services, or that Mercato is in some way connected to or affiliated with Mercatus.
`
`21. Mercatus is and will continue to be injured by Mercato's infringing conduct.
`
`SECOND CLAIM FOR RELIEF
`FEDERAL UNFAIR COMPETITION
`15 U.S.C. § 1125(a)
`
`The allegations contained in paragraphs 1 through 21 are incorporated herein by
`
`22.
`
`reference.
`
`23.
`
`This claim is brought under 15 U.S.C. § 1125(a).
`
`24. Mercatus has continuously and extensively used the MERCATUS mark since at
`
`least as early as 2010 in the United States and has common law and federally-registered rights in the
`
`MERCATUS mark. See Exhibit 1. That use began long before Mercato's use of the MERCATO
`
`mark.
`
`25.
`
`By its use of the MERCATO mark, Defendant has competed unfairly and has
`
`infringed, and continues to infringe, Mercatus' trademark rights in violation of the Lanham Act §
`
`43(a), 15 U.S.C. § 1125(a). Mercato's use of the MERCATO mark for identical products and
`
`services, offered within the very same industry confuses, misleads and deceives members of the
`
`retail services field into believing that Mercatus has allowed, sponsored, approved, or licensed
`
`Mercato to provide competing products or services, or that Mercato is in some way connected to or
`
`affiliated with Mercatus.
`
`26. Mercatus is and will continue to be injured by Mercato trading on the reputation and
`
`goodwill of the MERCATUS products and services among the relevant retailer industry.
`
`6
`
`

`

`Case 1:19-cv-01076-CFC Document 1 Filed 06/10/19 Page 7 of 9 PageID #: 7
`
`THIRD CLAIM FOR RELIEF
`COMMON LAW TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION
`
`The allegations contained in paragraphs 1 through 26 are incorporated herein by
`
`27.
`
`reference.
`
`28. Mercatus has continuously and extensively used the MERCATUS mark in the
`
`United States since at least as early as 2010, and thus owns common law rights in the trademark
`
`MERCATUS.
`
`29. Mercatus has continuously and extensively used the MERCATUS mark since long
`
`before the marketing or offer to sell goods and services under the mark MERCATO by Mercato.
`
`30. Mercato's acts constitute common law trademark infringement and unfair
`
`competition, and have caused and will continue to cause confusion to the injury of Mercatus.
`
`FOURTH CLAIM FOR RELIEF
`DELAWARE DECEPTIVE TRADE PRACTICE
`6 Del. C. § 2532
`
`The allegations contained in paragraphs 1 through 30 are incorporated herein by
`
`31.
`
`reference.
`
`32.
`
`This claim is brought under the Delaware Deceptive Trade Practices Act, 6 Del. C. §
`
`2532.
`
`33. Mercato's use of the MERCATO mark has caused and will continue to cause
`
`confusion or misunderstanding as to the source or origin of Mercato's goods and services.
`
`34. Mercato's use of the MERCATO mark has and will continue to cause confusion or
`
`misunderstanding as to their affiliation, connection, association with, or endorsement by Mercatus.
`
`35. Mercato's use of the MERCATO mark constitutes a violation of the Delaware
`
`Deceptive Trade Practices Act and has caused and/or will cause Mercatus substantial money
`
`damage, loss, injury, in an amount to be determined at a trial of this action.
`
`7
`
`

`

`Case 1:19-cv-01076-CFC Document 1 Filed 06/10/19 Page 8 of 9 PageID #: 8
`
`DEMAND FOR JURY TRIAL
`
`
`
`Plaintiffs, Mercatus Technologies, Inc. and Mercatus USA Inc. request a jury trial on all
`
`issues so triable.
`
`PRAYER FOR RELIEF
`
`
`
`WHEREFORE, Plaintiffs, Mercatus Technologies, Inc. and Mercatus USA Inc.,
`
`respectfully pray for the following relief against Defendant, Mercato, Inc., as follows:
`
`a.
`
`An order declaring that Mercato's unauthorized use of the MARCATO mark
`
`violates the Lanham Act, 15 U.S.C. §§ 1114 and 1125(a);
`
`b.
`
`An order permanently enjoining and restraining Mercato and any party in active
`
`concert and participation with Mercato from:
`
`1.
`
`Further infringing the MERCATUS mark and making any use of the
`
`MERCATO mark, or any colorable imitations to advertise, promote, display,
`
`sell or offer any products or services in the electronic retail commerce industry;
`
`2.
`
`Otherwise unfairly competing with Mercatus.
`
`c.
`
`An order directing any other relief that the Court may deem appropriate to prevent
`
`the relevant consumers from deriving any erroneous impression that any products or services by
`
`Mercato are authorized by Mercatus or are in any way related to Mercatus or its products or
`
`services.
`
`d.
`
`An order directing an accounting and judgment be rendered against Mercato for:
`
`1.
`
`All profits received by Mercato as a result of its infringement and/or unfair
`
`competition of the MERCATUS mark a provided for in 15 U.S.C. § 1117; and
`
`2.
`
`An award to Mercatus for costs, including reasonable attorney fees and
`
`disbursements in this action, pursuant to 15 U.S.C. §§ 1114 and 1117;
`
`8
`
`

`

`Case 1:19-cv-01076-CFC Document 1 Filed 06/10/19 Page 9 of 9 PageID #: 9
`
`e.
`
`Any other and further relief that the Court deems just and proper.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Dated: June 10, 2019
`
`OF COUNSEL:
`
`Robert J. Kenney
`Michael T. Smith
`BIRCH, STEWART, KOLASCH &
`BIRCH, LLP
`8110 Gatehouse Road, Suite 100
`Falls Church, VA 22042
`(703) 205-8000
`mailroom@bskb.com
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`O’KELLY ERNST & JOYCE, LLC
`
`/s/ Sean T. O’Kelly
`
`Sean T. O’Kelly (No. 4349)
`901 N. Market Street, Suite 1000
`Wilmington, Delaware 19801
`(302) 778-4000
`(302) 295-2873 (facsimile)
`sokelly@oelegal.com
`
`
`9
`
` .
`
`
`
`

`

`Case 1:19-cv-01076-CFC Document 1-1 Filed 06/10/19 Page 1 of 13 PageID #: 10
`Case 1:19-cv-01076—CFC Document 1-1 Filed 06/10/19 Page 1 of 13 PageID #: 10
`
`
`
`EXHIBIT 1
`EXHIBIT 1
`
`

`

`Case 1:19-cv-01076-CFC Document 1-1 Filed 06/10/19 Page 2 of 13 PageID #: 11
`Case 1:19-cv-01076—CFC Document 1-1 Filed 06/10/19 Page 2 of 13 PageID #: 11
`
`MERCATUS
`
`MERCATUS TECHNOLOGIES INC. (CANADA CORPORATION)
`Reg. No, 4,654,847
`60 ADELAIDE ST. E, SUITE 700
`_
`Registered Dec. 16, 2014 TORONTO, ONTARIO, CANADA M5C3E4
`
`Int. Cls.: 9, 12, 35, 37, 38, FOR: SHOPPING CART, TRANSPORT CART, AND SHOPPING BASKET INFORMATION,
`39 and 42
`TRACKING AND RETURN SYSTEMS, NAMELY, ELECTRONIC SYSTEMS COMPRIS NG
`COMPUTER HA RDWAREAND SOFTWARE, WIRELESS TRANS MITTERS, TRANSCEIVERS
`AND STATIC AND INTERACTIVE GRAPIIICAL USER INTERFACES CONNECTED TO
`ONE OR MORE HOST COMPUTER SYSTEMS VIA ONE OR MORE LOCAL, WIDE AREA
`OR GI IORAL COMPI ITER NETWORKS, EXTRANETS, INTRANETS, THE. INTERNET, THE
`WORLDWIDE WEB, TELEPHONE NETWORKS OR CABLE NETWORKS, TO TRACK THE
`IN-STORE OR ON PREMISES LOCATION, SHOPPING PATTERNS, MOVEMENT PATTERNS,
`PURCHASES AND SELECTIONS OF PERSONS USING SHOPPING CARTS, TRANSPORT
`CARTS AND SHOPPING BASKETS, AND TO PROVIDE INFORMATION, DIRECTIONS,
`ADVERTISING AND ENTERTAINMENT TO THOSE PERSONS WHILE THEY ARE US NG
`THOSE SHOPPING CARTS, TRANSPORT CARTS AND SHOPPING BASKETS, SHOPP NG
`CART, TRANSPORT CART, AND SHOPPING BASKET INFORMATION, TRACKING AND
`RETURN SYSTEMS. NAMELY, ELECTRONIC SYSTEMS COMPRISING COMPUTER
`HARDWARE AND SOFTWARE, WIRELESS TRANSMITTERS, TRANSCEIVERS AND
`STATIC AND IN ERACTIV «, GRAPHICAL IISER INTERFACES CONNECTED TO ONE OR
`MORE HOST COMPUTER SYSTEMS VIA ONE OR MORE LOCAL, WIDE AREA OR
`GLOBAL COMPUTER NE'WORKS, EXTRANETS, INTRANETS, THE INTERNET, THE
`WORLDWIDE WEB, TELEPHONE NETWORKS OR CABLE NETWORKS, TO ENSURE HE
`RETURN OF SHOPPING CARTS, TRANSPORT CARTS, AND SHOPPING BASKETS; COM—
`PUTER SOFTWARE FOR USE IN ASSOCIATION WITII REAL TIME COMMERCE APPLIC—
`ATIONS AND REAL TIME ELECTRONIC COMMERCE APPLICATIONS THAT COLLECTS,
`ARCHIVES, ORGANIZFS, AND DISPLAYS DATA RELATING TO SHOPPERS PURCHASING,
`MOVEMENT, AND PRODUCT SELECTION, AND PROVIDES INFORMATION, DIRECTIONS,
`ADVERTISINGAND ENTERTAINMENT TO SHOPPERS FOR USE WITH SHOPPING CARTS,
`TRANSPORT CARTS, SHOPPING BASKETS, AND ELECTRONIC MARKETPLACES,
`NAMELY, WIDEAREA OR GLOBAL COMPUTER NETWORKS, EXTRANETS, INTRANETS,
`THE INTERNET, THE WORLDWIDE WEB, TELEPHONE NETWORKS AND CABLE NET—
`WORKS, FOR CATALOGUE, INVENTORY AND PRICE LIST BROWSING, INTERNET
`BROWSING, ORDER PROCESSING, ORDER CONFIRMATION, PURCHASE PROCESSING,
`PURCIIASE TALLYING, CREDIT CARD PROCESSING, DEBIT CARD PROCESSING, IN-
`VENTORY CONTROL AND RESTOCKING, PRICE AND PRODUCT COMPARISON, RAIN
`CHECK, COUPON AND SPECIAL OFFER NOTIFICATION, REGISTRATION, ISSUANCE
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`TRADEIVIARK
`
`SERVICE I“ARK
`
`PRINCIPAL REGISTER
`
`
`
`Deputv Director “the United States
`“Wm“ deemm" 0m“
`
`

`

`Case 1:19-cv-01076-CFC Document 1-1 Filed 06/10/19 Page 3 of 13 PageID #: 12
`Case 1:19-cv-01076—CFC Document 1—1 Filed 06/10/19 Page 3 of 13 PageID #: 12
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`Reg. No. 4,654,847 AND REDEMPTION, CONVEYANCE OF INFORMATION ABOUT THE PRODUCTS AND
`
`SERVICES OF THIRD PARTIES, RECIPE AND HOW TO INFORMATION, PROVIDING
`
`ADVERTISING, PROMOTIONAL AND EDUCATIONAL INFORMATION, PROVIDING AU-
`DIO, VISUAL AND AUDIO-VISUAL ENTERTAINMENT, ELECTRONIC MAIL AND TEXT
`MESSAGING, DATA MINING, AND FOR PROVIDING CONSUMER AND USER SURVEYS;
`COMPUTER SOFTWARE TO FACILITATE REAL TIME COMMUNICATIONS WITH PUR-
`CIIASERS AND OTIIERS USING SIIOPPING CARTS, TRANSPORT CARTS OR SIIOPPING
`BASKET, VIA ONE OR MORE LOCAL, WIDEAREA OR GLOBAL COMPUTER NETWORKS,
`EXTRANETS,
`INTRANETS, THE INTERNET, THE WORLDWIDE WEB, TELEPHONE
`NE'WVORKS OR CABLE NETWORKS, IN CLASS 9 (US. CLS. 21, 23, 26, 36 AND 38).
`
`
`
`
`
`FOR: HANDLES FEATURING DISPLAY SCREENS AND DISPLAY SCREEN HOUSINGS,
`FOR USE ON SHOPPING CARTS AND TRANSPORT CARTS, IN CLASS 12 (US. CLS. 19,
`21,23, 31, 35 AND 44).
`
`FOR: DATABASE MANAGEMENT; PROVIDING BUSINESS AND COMMERCIAL INF ORIVI—
`ATION CONCERNING COMMERCE AND ELECTRONIC COMMERCE TRANSACTING;
`BUSINESS PROCESS OUTSOURCING SERVICES IN THE FIELDS OF WEB SITE DESIGN,
`ELECTRONIC MARKETING AND PROMOTION, DATA MINING, DATA COLLECTION
`AND ANALYSIS, COMMERCEAND ELECTRONIC COMMERCE TRANSACTION HOSTING,
`REAL TIME CUSTOMER SUPPORT TO ENHANCE COMMERCE TRANSACTIONS FOR
`THE USERS OF SAME, ELEC I‘RONIC PAYMENT SERVICES, INTEGRATED CUSI‘O IER
`SUPPORT SERVICES AND ELECTRONIC DELIVERY OF AUDIO, VISUAL AND AUDIO-
`VISUAL ENTERTAINMENT; ADVERTISING SERVICES, ADVERTISING INF ORMATION
`SERVICES, PROVIDING ADVERTISING AND MARKETING, DESIGN OF ADVERTISING
`MATERIALS FOR OTHERS; ELECTRONIC COMMERCE SERVICES, NAMEI .Y, PROVIDING
`INFORMATION ABOUT PRODUCTS VIA TELECOMMUNICATION NETWORKS FOR
`ADVERTISING AND SALES PURPOSES; PROMOTING THE GOODS AND SERVICES OF
`OTHERS VIA PRESS RELEASES, CONTESTS, PROMOTIONAL SALES, DISCOUNTS,
`COUPONS, SPECIAL OFFERAND GIFT GIVEAWAY PROGRAMS, CORPORATE IDENTITY
`SERVICES; ADVERTISING AND MARKETING OF THE BRANDS, BUSINESSES, PROFILES,
`WARES AND SERVICES OF OTHERS, IN CLASS 35 (US. CLS. 100, 101 AND 102).
`
`
`
`
`
`
`
`FOR: INSTALLATION AND MAINTENANCE OF COMPUTER HARDWARE SYSTEMS AND
`HANDHELD COMTVIUNICATION DEVICES TO MEET THIRD PARTY SPECIFICATIONS;
`INSTALLATION AND MAINTENANCE OF COMPUTER HARDWARE; TECHNICAL SUP—
`PORT SERVICES, NAMELY, TROUBLESHOOTING IN THE NATURE OF THE REPAIR OF
`COMPUTER HARDWARE, IN CLASS 37 (US. CLS. 100, 103 AND 106).
`
`FOR: ELECTRONIC MAIL SERVICES; TEXT AND NUMERIC WIRELESS DIGITAL MES-
`SAGING SERVICES; ELECTRONIC BULLETIN BOARD SERVICES; VOICE, VIDEO AND
`TEXT MESSAGING SERVICES VIA ONE OR MORE LOCAL, WIDE AREA OR GLOBAL
`COMPUTER NETWORKS, EXTRANETS, INTRANETS, THE INTERNET, THE WORLDWIDE
`WEB, TELEPHONE NETWORKS OR CABLE NETWORKS, IN CLASS 38 (US. CLS. 100, 101
`AND 104).
`
`FOR: ELECTRONIC STORAGE SERVICES FOR ARCHIVING DATA CONCERNING THE
`BEHAVIOR OF SHOPPERS IN STORES, NAMELY, SHOPPERS' PURCHASING, MOVEMENT
`AND PRODUCT SELECTION; ELECTRONIC STORAGE OF DATA CONCERNING THE
`BEHAVIOR OF SHOPPERS IN STORES, NAMELY, SHOPPERS‘ PURCHASING, MOVEMENT
`AND PRODUCT SELECTION FOR ARCIIIVING PURPOSES, IN CLASS 39 (US. CLS. 100
`AND 105).
`
`FOR: DEVELOPMENT AND DESIGN OF TECHNOLOGY-BASED INFORMATION SOLU-
`TIONS, NAMELY, COMPUTER SOFTWARE, FOR THE RETAIL SECTOR DESIGNED TO
`IMPROVE PROFITABILITY, ENHANCE COMPETITIVENESS AND SIRENGTHEN CUS—
`TOMER RELATIONS HIPS; COMPUTER SOFTWARE CONSULTING, NAMELY, THE DESIGN,
`INSTALLATION, UPDATINGAND MAINTENANCE OF COMPUTER SOFTWARE TO MEET
`
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`

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`Case 1:19-cv-01076-CFC Document 1-1 Filed 06/10/19 Page 4 of 13 PageID #: 13
`Case 1:19-cv-01076—CFC Document 1-1 Filed 06/10/19 Page 4 of 13 PageID #: 13
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`Reg. No. 4,654,847 THIRD PARTY SPECIFICATIONS; COMPUTER CONSULTING SERVICES, NAMELY,
`
`DESIGN OF COMPUTER INFRA STRUCTURES AND NETWORKED APPLICATIONS;
`COMPUTER SYSTEM ADMINISTRATION FOR OTHERS; APPLICATION SERVICE PRO-
`VIDER (ASP), NAMELY, HOSTING COMPUTER SOFTWAREAPPLICATIONS OF OTHERS
`TO MEET THIRD PARTY SPECIFICATIONS; TECHNICAL SUPPORT SERVICES, NAMELY,
`TROUBLESHOOTING IN THE NATURE OF DIAGNOSING COMPUTER HARDWARE AND
`SOFTWARE PROBLEMS; INSTALLATION AND MAINTENANCE OF COMPUTER SOFT-
`WARE, IN CLASS 42 (US. CLS. 100 AND 101).
`
`
`
`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PAR-
`TICULAR FONT, STYLE, SIZE, OR COLOR.
`
`PRIORITY CLAIMED UNDER SEC. 44(D) ON CANADA APPLICATION NO. 1492276, FILED
`8-13-2010, REG. NO. TMA858214, DATED 8-21-2013, EXPIRES 8-21-2028.
`
`SER. NO. 85—189,532, FILED 12—2—2010.
`
`MICHELE SWAIN, EXAMINING ATTORNEY
`
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`

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`Case 1:19-cv-01076—CFC Document 1-1 Filed 06/10/19 Page 5 of 13 PageID #: 14
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`REQUIREMENTS TO MAINTAIN YOUR FEDERAL
`TRADElVIARK REGISTRATION
`
`DOCUlVIENTS BELOW DURING THE SPECIFIED TIlWE PERIODS.
`
`WARNIN G: YOUR REGISTRATION WILL BE CANCELLED IF YOU DO 1V OT FILE THE
`
`Requirements in the First Ten Years*
`What and When to File:
`
`First Filing Deadline: You must file a Declaration of Use (or Excusable Nonusc) between the
`5th and 6th years after the registration date See 15 U.S.C, §§1058, 1141k_ 1f the declaration is
`accepted, the registration will continue in force for the remainder of the ten-year period, calculated
`from the registration date, unless cancelled by an order of the Commissioner for Trademarks or a
`federal court,
`
`Second Filing Deadline.- You must file a Declaration of Use (or Excusable Nonusc) and an
`Application for Renewal between the 9th and 10th years after the registration date.*
`See 15 U_S.C. §1059,
`
`Requirements in Successive Ten-Year Periods*
`What and When to File:
`
`You must file a Declaration oste (or Excusable Nonusc) and an Application for Renewal between
`every 9th and lOth—year period, calculated from the registration date.*
`
`Grace Period Filings"
`
`The above documents will be accepted as timely if filed within six months after the deadlines listed above
`with the payment of an additional fee.
`
`
`
`*ATTENTION MADRID PROTOCOL REGISTRANTS: The holder of an international registration with
`an extension of protection to the United States under the Madrid Protocol must timely file the Declarations
`of Use (or Excusable Nonuse) referenced above directly with the USPTO, The time periods for filing are
`based on the US. registration date (not the international registration date). The deadlines and grace periods
`for thc Dcclarations of Usc (or Excusablc Nonusc) arc idcntical to thosc for nationally issued registrations
`See 15 U.S.C. §§1058, 1141k. However, owners of international registrations do not file renewal applications
`at the USPTO. instead, the holder must file a renewal of the underlying international registration at the
`International Bureau of the World Intellectual Propelty Organization, under A Iticle 7 of the Madrid Protocol,
`before the expiration of each ten-year term of protection, calculated from the date of the international
`registration, See 15 U.S.C. §1141j. For more information and renewal forms for the international registration,
`see http://www.wipo,int/madrid/en/L
`
`NOTE: Fees and requirements for maintaining registrations are subject to change. Please check the
`USPTO website for further information. With the exception of renewal applications for registered
`extensions ofprotection, you can file the registration maintenance documents referenced above online
`at http://www.usptogov.
`
`Page: 4 / RN # 4,654,847
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`

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`Case 1:19-cv-01076-CFC Document 1-1 Filed 06/10/19 Page 6 of 13 PageID #: 15
`Case 1:19-cv-01076—CFC Document 1-1 Filed 06/10/19 Page 6 of 13 PageID #: 15
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`’OEWRU gatateg of gluten
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`
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`‘l' mercétus
`
`MERCAT'US TECHNOLOGIES INC. (CANADA