Care One, LLCv.Caring One LLC

Trademark Trial and Appeal Board

Mar 30, 2018

No. 91225060 (T.T.A.B. Mar. 30, 2018)

Mailed: March 30, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Care One, LLC
v.
Caring One LLC
_____

Opposition No. 91225060
_____

Ronald L. Israel of Chiesa Shahinian & Giantomasi PC,
for Care One, LLC.

Barbara L. (Pixie) Waite of Law Office of Barbara L. Waite P.C.,
for Caring One LLC.
_____

Before Mermelstein, Lykos, and Hightower,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
Caring One LLC (“Applicant”) seeks to register the mark CARING ONE in
standard characters on the Principal Register for “medical inbound and outbound call
center services, clinical and non-clinical, to patients of health care service providers”
in International Class 35.1 Care One, LLC (“Opposer”) opposes registration under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), asserting priority and a

1 Application Serial No. 86628136 was filed May 13, 2015 based on Applicant’s allegation of
first use and use in commerce as of December 31, 2012 under Trademark Act Section 1(a),
15 U.S.C. § 1051(a).
This Opinion Is Not a
Precedent of the TTAB
Opposition No. 91225060
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likelihood of confusion with its mark CAREONE, used at common law in connection
with certain health care services and incorporated into four registered marks owned
by Opposer, as detailed infra. We dismiss the opposition.
I. Record
The record comprises the pleadings and, without any action by the parties, the file
of the involved application. Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1). In
addition, Opposer introduced the following evidence into the record:
• Copies of Opposer’s four pleaded registrations on the Principal Register,
which were made part of the record pursuant to Trademark Rule
2.122(d)(1), 37 C.F.R. § 2.122(d)(1), when they were submitted via current
printouts from the United States Patent and Trademark Office Trademark
Electronic Search System (TESS) and Trademark Status and Document
Retrieval (TSDR) electronic databases as an exhibit accompanying the
Notice of Opposition.2 The registered marks are:
1. (with “Senior Care Company” disclaimed) for
“nursing home and rehabilitation patient care services” in
International Class 44;3

2 By submitting current printouts of its pleaded registrations with the Notice of Opposition,
the registrations were received in evidence and Opposer need not also have submitted status
and title copies of those registrations by Notice of Reliance during trial. Exhibits 17-20 to
Opposer’s Notice of Reliance, 20 TTABVUE 9-21.
3 Registration No. 3957790, issued May 10, 2011; Section 8 and 15 declaration accepted and
acknowledged July 12, 2017. The description of the mark states: “The mark consists of the
wording ‘CareOne’ in green positioned above a tan colored stylized design comprised of the
arms and heads of two stick figures holding hands to form a rounded shape with single
straight lines positioned on both sides of the design. The wording ‘A Senior Care Company’
is positioned beneath the design element in light green.” The colors green and tan are claimed
as a feature of the mark.
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2. A CAREONE SENIOR CARE COMMUNITY, in standard characters
and with “senior care community” disclaimed, for “nursing home and
rehabilitation patient care services” in International Class 44;4
3. A CAREONE SENIOR CARE CENTER, in standard characters and
with “senior care center” disclaimed, for “nursing home and
rehabilitation patient care services” in International Class 44;5 and
4. (with “Home” disclaimed) for “medical
services, namely, comprehensive care discharge planning for
patients from inpatient medical rehabilitation settings concerning
pre-discharge home evaluations, after-discharge evaluations,
therapy and medical therapeutic technology consultation, medical
care coordination and home care orientation information,” in
International Class 44.6
• The testimony affidavit of Timothy Hodges (“Hodges Testimony Aff.”), Chief
Strategy Officer of Care One Management, LLC, a management services
company and affiliate of Opposer, with Exhibits 1-16. 17-18 and
19 (confidential) TTABVUE;
• Opposer’s Notice of Reliance with Exhibits 17-45, comprising:
1. Certain of Applicant’s responses to Opposer’s interrogatories
(Exhibits 21-24);
2. Excerpts and exhibits from the discovery deposition of Thomas L.
Hudson, Applicant’s President (Exhibits 25-42) (“Hudson Dep.”); and
3. Excerpts and exhibits from the discovery deposition of Kyle
Richardson, Applicant’s Vice-President, Business Development
(Exhibits 43-45).
20 and 21 (confidential) TTABVUE.

4 Registration No. 3969847, issued May 31, 2011; Section 8 and 15 declaration accepted and
acknowledged July 17, 2017.
5 Registration No. 3969848, issued May 31, 2011; Section 8 and 15 declaration accepted and
acknowledged January 1, 2018.
6 Registration No. 4134451, issued May 1, 2012; Section 8 and 15 declaration accepted and
acknowledged October 28, 2017. The description of the mark states: “The mark consists of
the stylized wording ‘NEXT STEP HOME BY CAREONE.’ A partial outline of a house
appears to the right of the word ‘NEXT’.” Color is not claimed as a feature of the mark.
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• Opposer’s Second (Rebuttal) Notice of Reliance with Exhibits 46 and 47,
comprising additional excerpts from the discovery depositions of
Mr. Hudson and Mr. Richardson. 23 and 24 (confidential) TTABVUE.
Applicant, in turn, submitted the testimony declaration of Mr. Hudson (“Hudson
Testimony Decl.”). 22 TTABVUE.
As noted, some of the proffered evidence has been designated confidential and filed
under seal. We have discussed only in general terms the relevant evidence submitted
under seal.
II. Opposer’s Standing
Standing is a threshold issue that must be proven by the plaintiff in every inter
partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014); see also, e.g., Bell’s Brewery, Inc. v. Innovation
Brewing, 125 USPQ2d 1340, 1344 (TTAB 2017). Opposer’s standing to oppose
registration of Applicant’s mark, which is not challenged by Applicant, is established
by its four pleaded registrations, which the record shows to be valid and subsisting,
and owned by Opposer. See, e.g., Bell’s Brewery, 125 USPQ2d at 1344.
III. Parties
By way of background only, Applicant describes its business as
perform[ing] back office services for healthcare providers
via a telephone call center. Such services include but are
not limited to obtaining personal healthcare information
from customer members, answering member questions
regarding insurance coverage, coaching customer members
on compliance with healthcare directives, updating service
directories of healthcare providers, and the like.
Hudson Testimony Decl. ¶ 1, 22 TTABVUE 2.
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Opposer was founded in 1998. Hodges Testimony Aff. ¶ 6, 17 TTABVUE 4. By and
through its subsidiaries, affiliates, and related entities, Opposer owns, operates, or
manages more than 60 senior living and post-acute care facilities in New Jersey,
Connecticut, Maryland, Massachusetts, Pennsylvania, and Virginia, the majority of
which use the CAREONE mark in connection with their services. Id. at ¶ 8, 17
TTABVUE 4-6 (listing 42 CAREONE facilities).
IV. Priority
Because Opposer’s pleaded registrations are of record, priority is not at issue with
respect to the marks and services recited in Opposer’s pleaded registrations. Mini
Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1469 (TTAB 2016) (citing
King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974)). Opposer also relies on common-law rights in the mark CAREONE standing
alone.7 A party may establish its own prior proprietary rights in a mark through an
earlier constructive filing date accorded to the party’s own registration or application,
actual use, or through use analogous to trademark use that creates a public
awareness of the designation as a trademark identifying the party as a source. See
Giersch v. Scripps Network Inc., 90 USPQ2d 1020, 1022 (TTAB 2009).
Here, Applicant submitted the testimony of Mr. Hudson, its President, that
Applicant began using its CAREONE mark in December 2012 in connection with call

7 Opposer refers to its “family of marks” several times in its brief, but because likelihood of
confusion with any asserted family of marks was neither pleaded nor tried by consent, we do
not consider it. See, e.g., Wise F&I, LLC v. Allstate Ins. Co., 120 USPQ2d 1103, 1107 (TTAB
2016); Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d
1921, 1927-28 (TTAB 2011).
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center services. Hudson Testimony Decl. ¶ 2, 22 TTABVUE 2. Testimony of a single
witness may be adequate to establish priority. See, e.g., Exec. Coach Builders, Inc. v.
SPV Coach Co., 123 USPQ2d 1175, 1184 (TTAB 2017). Mr. Hudson’s testimony is
clear, uncontradicted, and consistent with both Applicant’s responses to Opposer’s
Interrogatories No. 2 and 9 (see 20 TTABVUE 24-26, 28) and the subject application,
which alleges December 31, 2012 as the date of first use and use in commerce of
Applicant’s mark. Because Mr. Hudson’s testimony established Applicant’s use as of
the month of December 2012, we construe Applicant’s priority date to be the last day
of that month. Cf. TMEP § 903.06 (Oct. 2017) (“When a month and year are given
without a specified day, the date presumed for purposes of examination is the last
day of the month.”). Therefore, in order to establish prior common-law rights over
Applicant, Opposer must prove use of its CAREONE mark in commerce before
Applicant’s priority date of December 31, 2012.8
The testimony affidavit of Mr. Hodges, Opposer’s Chief Strategy Officer, includes
the following statements regarding priority at common law in the CAREONE mark:

8 We are not persuaded by Opposer’s argument in its reply brief that Applicant conceded
Opposer’s priority of use through the following statement in Applicant’s brief: “In the interest
of judicial economy, Applicant will not repeat those elements of Opposer’s brief with which it
does not disagree.” Applicant’s Brief at 1, 27 TTABVUE 2. Applicant also states in its brief
that, notwithstanding Opposer’s reliance on its federal registrations as evidence of the dates
of first use of the registered marks, “Opposer’s basic argument clearly relies upon its common-
law rights in CARE ONE as a trademark and trade name.” Applicant’s Brief at 1-2, 27
TTABVUE 2-3. We do not read Applicant’s brief as a concession of Opposer’s priority in the
CAREONE mark for the services Opposer offers at common law. We also remind Opposer
that, even if a defendant in an inter partes proceeding files neither evidence nor a trial brief,
the plaintiff bears the burden of establishing the elements of its claim. See, e.g., Trademark
Rules 2.116(b) and 2.128(a), 37 C.F.R. §§ 2.116(b) and 2.128(a); B&B Hardware, Inc. v.
Hargis Indus., Inc., 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015); TBMP §§ 702.04(a)
and 801.02(b) (June 2017).
Opposition No. 91225060
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10. CareOne has used the CAREONE name and
mark extensively and continuously since at least as early
as 2004 in connection with its health care services.
11. CareOne uses the name and mark CAREONE
in connection with marketing, promoting and advertising
the wide variety of the services it provides, including but
not limited to sub-acute rehabilitation services, assisted
living services, long-term care services, Alzheimer’s and
memory care services, personalized fitness services, respite
care services and long term acute care hospital services.
Hodges Testimony Aff. ¶¶ 10-11, 17 TTABVUE 7. Opposer does not, however, make
clear the date it began using the CAREONE mark in association with any of these
specifically identified services, and other parts of the affidavit suggest that not all
have been provided since 2004. For example, at ¶ 15, Mr. Hodges testifies: “Over the
two decades since CareOne’s formation, CareOne has greatly expanded the types of
services it provides to its patients and their families.” Id., 17 TTABVUE 8. At ¶ 17,
Mr. Hodges testifies that, “in 2017, CareOne launched its Forever Fit program under
its CAREONE name and mark, which provides personalized strength training
services for older adults.” Id., 17 TTABVUE 9. The Forever Fit program appears to
be the “personalized fitness services” listed at ¶ 11 of the affidavit. Because the fitness
program was launched some five years after Applicant’s December 2012 priority date,
Opposer has not established priority in these services. With regard to the remaining
services referenced, we find that Mr. Hodges’ cited testimony is insufficiently clear to
establish use of the CAREONE mark at common law in association with any specific
services as of 2004.
Opposer also submitted as exhibits in support of Mr. Hodges’ affidavit numerous
brochures, screenshots and printouts from its websites, and other examples of
Opposition No. 91225060
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advertising, marketing, and promotional materials. Most of the exhibits, however,
either are undated, post-date Applicant’s priority date, or were printed from
Opposer’s website in 2017, at the time of trial. Without specific corroborating
testimony, moreover, the documents are hearsay for the truth of the matters asserted.
See FED. R. EVID. 801(c).
We do find, however, that Opposer’s testimony along with its documentary
evidence establishes common-law priority in the CAREONE mark alone for its Care
Navigator program launched in 2012, in which a licensed nurse practitioner
“establishes a relationship with patients and their families upon hospital admission.”
Exhibit 4 to Hodges Testimony Aff., 18 TTABVUE 36 (press release dated March 20,
2012 announcing launch of the program). The Care Navigator assists with
preparation of a medical health record, provides education regarding the diagnosis
and next steps in care, and continues to assist patients and families after discharge.
Id.; Hodges Testimony Aff. ¶ 15, 17 TTABVUE 8-9. The press release prominently
uses the CAREONE name, as seen in the following excerpt:

Opposition No. 91225060
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To summarize, we find that Opposer has established prior use in the following
marks and services:
• CAREONE for services provided through Opposer’s Care Navigator
program;
• , A CAREONE SENIOR CARE COMMUNITY, and A
CAREONE SENIOR CARE CENTER for “nursing home and rehabilitation
patient care services”; and
• for “medical services, namely, comprehensive care
discharge planning for patients from inpatient medical rehabilitation
settings concerning pre-discharge home evaluations, after-discharge
evaluations, therapy and medical therapeutic technology consultation,
medical care coordination and home care orientation information.”
V. Likelihood of Confusion
We assess all probative facts in evidence that are relevant to the factors bearing
on the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d
1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis,
however, two key considerations are the similarities between the marks and the
similarities between the goods or services, the first two du Pont factors. See Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976)
(“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of
differences in the essential characteristics of the [services] and differences in the
marks.”). Opposer bears the burden of proving its claim of likelihood of confusion by
a preponderance of the evidence. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
Opposition No. 91225060
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USPQ2d 1842, 1848 (Fed. Cir. 2000). We address in turn du Pont factors for which
the parties submitted evidence or argument, focusing our analysis as Opposer did on
its CAREONE house mark. See, e.g., Opposer’s Brief at 1, 26 TTABVUE 7; In re Max
Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
A. Similarity of the Marks
The first du Pont factor is the similarity of the parties’ marks. In a likelihood of
confusion analysis, we compare the marks in their entireties for similarities and
dissimilarities in appearance, sound, connotation and commercial impression. Palm
Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1691 (Fed. Cir. 2005). “The proper test is not a side-by-side
comparison of the marks, but instead whether the marks are sufficiently similar in
terms of their commercial impression such that persons who encounter the marks
would be likely to assume a connection between the parties.” Coach Servs. Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(quotation omitted).
We consider Opposer’s common-law mark CAREONE standing alone and we also
consider each pleaded registered mark as a whole, focusing on CAREONE as the
dominant element.9 See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746
F.3d 1317, 110 USPQ2d 1157, 1160-61 (Fed. Cir. 2014). Applicant’s mark CARING
ONE is visually and aurally similar to Opposer’s mark CAREONE, given that the

9 As noted, Opposer’s arguments are focused on its CAREONE house mark rather than on
any of its registered marks. Because each of Opposer’s registered marks contains additional
matter, they are less similar to Applicant’s CARING ONE mark than Opposer’s mark
CAREONE alone.
Opposition No. 91225060
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marks are composed of CARE or its formative CARING followed by the word ONE.
There marks are distinct, however, in meaning and overall commercial impression.
Applicant’s mark uses the adjectival form CARING, suggesting an individual (“one”)
who cares. This connotation is absent from Opposer’s mark. Differences in
connotation and commercial impression can weigh strongly in the likelihood of
confusion analysis. See, e.g., Champagne Louis Roederer S.A. v. Delicato Vineyards,
148 F.3d 1373, 47 USPQ2d 1459, 1460 (Fed. Cir. 1998) (per curiam) (affirming
dismissal based on different commercial impressions of CRYSTAL CREEK and
CRISTAL); H.D. Lee Co. v. Maidenform, Inc., 87 USPQ2d 1715, 1729 (TTAB 2008)
(finding ONE FAB FIT makes different commercial impression from ONE TRUE
FIT); Parfums de Coeur, Ltd. v. Lazarus, 83 USPQ2d 1012, 1017-18 (TTAB 2007)
(finding BM BODYMAN and design differs in connotation and commercial
impression from BOD MAN); In re Sears, Roebuck & Co., 2 USPQ2d 1312, 1314
(TTAB 1987) (finding CROSS-OVER for bras creates different commercial impression
from CROSSOVER for ladies’ sportswear); In re Sydel Lingerie Co., 197 USPQ 629
(TTAB 1977) (finding BOTTOMS UP for ladies’ and children’s underwear projects
different commercial impression from BOTTOMS UP for men’s suits, coats and
trousers). Considering the marks in their entireties, we find the first du Pont factor,
particularly the dissimilarity in connotation and overall commercial impression, to
weigh against a finding that confusion is likely.
B. Strength of Opposer’s CAREONE Mark
Likelihood of confusion fame varies along a spectrum from very strong to very
weak. Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122
Opposition No. 91225060
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USPQ2d 1733, 1734 (Fed. Cir. 2017) (per curiam). The commercial strength of a mark
may be measured indirectly by the volume of sales of and advertising expenditures
for the goods or services identified by the marks, the length of time those indicia of
commercial awareness have been evident, widespread critical assessments, notice by
independent sources of the services, and the general reputation of the services. In re
Mr. Recipe, 118 USPQ2d 1084, 1086 (TTAB 2016) (citing Bose Corp. v. QSC Audio
Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305-06, 1309 (Fed. Cir. 2002)).
There is no direct evidence reflecting the quantum of consumer recognition of the
CAREONE mark and no evidence of unsolicited media recognition or publicity by
third parties. See Palm Bay Imps., 73 USPQ2d at 1694-95; Inter IKEA Sys. B.V. v.
Akea, LLC, 110 USPQ2d 1734, 1738-39 (TTAB 2014). Because the CAREONE mark
has been in use for at least 14 years and is associated with more than 40 senior living
and post-acute care facilities, however, we find the mark to be relatively commercially
strong. Hodges Testimony Aff. ¶¶ 8-10, 17 TTABVUE 4-7. In testimony filed under
seal, Opposer also indicated high revenue and marketing figures for 2015 and 2016.
Id. at ¶¶ 12, 32, 19 TTABVUE 7, 13 (confidential).
We do not agree that the evidence approaches the level required to find a high
degree of fame in the CAREONE mark, as Opposer argues. See Opposer’s Brief at 27,
26 TTABVUE 33. Cf., e.g., Joseph Phelps Vineyards, 122 USPQ2d at 1734 (discussing
evidence of “extensive recognition and accolade” for wine sold under opposer’s mark);
Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000)
(noting that retail sales of products under the famous mark FRITO-LAY exceeded $6
billion in 1995, for a greater than 50 percent market share in the domestic snack chip
Opposition No. 91225060
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industry); Motion Picture Ass’n of Am. Inc. v. Respect Sportswear Inc., 83 USPQ2d
1555, 1560 (TTAB 2007) (stating that opposer’s members spent $4 billion on
advertisements and promotion in one year).
As for conceptual strength of the CAREONE mark, given the highly descriptive
nature of “care” in association with health care services and the laudatory nature of
the term “one,” we find Opposer’s mark to be relatively weak conceptually. There is
no evidence concerning the number and nature of similar marks registered or used
for similar services.
In view of these findings, we accord Opposer’s common-law mark a moderate scope
of protection, not the expanded scope of protection famous marks enjoy.
C. Similarity of the Services
We next consider the second du Pont factor, determining the similarity or
dissimilarity of the parties’ services. Our decision is based on the identification of
services as set forth in the application and, in part, on those recited in Opposer’s
registrations. Stone Lion, 110 USPQ2d at 1162. In this case, we also consider the
similarity of Applicant’s identified services to the services in which Opposer has
proven priority at common law. See, e.g., Bell’s Brewery, 125 USPQ2d at 1344 (finding
prior proprietary rights in both opposer’s registered and common-law marks).
Applicant’s services are narrowly identified as “medical inbound and outbound
call center services, clinical and non-clinical, to patients of health care service
providers.” Opposer contends that it uses the CAREONE mark “in connection with a
wide variety of goods and services, including a multitude of telephonic support
services.” Opposer’s Brief at 18, 26 TTABVUE 24. In more detail, Opposer argues
Opposition No. 91225060
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that: “In connection with the provision of its primary services to patients and
residents, Opposer provides inbound and outbound call services to its patients,
residents and their families.” Opposer’s Brief at 24, 26 TTABVUE 30 (citing Hodges
Testimony Aff. ¶¶ 19-21, 17 TTABVUE 9-10, Exhibit 7 (confidential), 19 TTABVUE
21-73, & Exhibits 8-9, 18 TTABVUE 43-46). The cited evidence pertains to emergency
call centers in Opposer’s assisted living communities, Opposer’s “Because We Care”
customer satisfaction hotline, and follow-up calls to patients discharged from many
of Opposer’s locations.10 The record shows that these types of calls are made as part
of Opposer’s nursing home and medical rehabilitation services.
Opposer has not established prior common-law rights in the CAREONE mark in
commerce in connection with telephonic services. Nor has it established a
relationship between the types of telephone calls associated with the provision of its
services to Applicant’s recited call center services. That Opposer’s services at times
involve telephone calls with consumers is insufficient for a finding of relatedness with
Applicant’s recited services. There is no evidence that customers would contract with
Opposer or other providers of nursing home and rehabilitation patient care services
for medical call center services. Conversely, there is no evidence that providers of
nursing home and rehabilitation patient care are the types of health care services
providers that purchase “medical inbound and outbound call center services.”

10 Another use of the CAREONE mark in association with telephone calls is Opposer’s Shared
Admissions Support Services, but that was not launched until 2014, after Applicant’s priority
date. Hodges Testimony Aff. ¶ 16, 17 TTABVUE 9, and Exhibit 5, 18 TTABVUE 37-39; see
also Hodges Testimony Aff. ¶ 36, 17 TTABVUE 14 (stating that “the services claimed in the
CARING ONE application[ ] directly overlap with some of the services CareOne provides,
including its Because We Care hotline and Shared Admissions Support services”).
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Opposer argues that the services for which Applicant seeks registration are within
the natural scope of expansion for Opposer’s health care services. Opposer’s Brief at
25, 26 TTABVUE 31. Under the doctrine of natural expansion, the first user of a mark
in connection with particular services possesses superior rights in the mark as
against subsequent users of the same or a similar mark for services which purchasers
might reasonably expect to emanate from it in the normal expansion of business
under the mark. Orange Bang, Inc. v. Olé Mexican Foods, Inc., 116 USPQ2d 1102,
1119 (TTAB 2015). Application of the doctrine is strictly limited to cases in which
expansion is “natural,” that is, where the services of the subsequent user and those
of the first user are of such nature that purchasers would generally expect them to
emanate from the same source. Mason Eng’g & Design Corp. v. Mateson Chem. Corp.,
225 USPQ 956, 962 (TTAB 1985). Typically, in an inter partes proceeding, the
doctrine of natural expansion is used in connection with priority rather than du Pont
factor two. Orange Bang, 116 USPQ2d at 1119; see also 4 J. THOMAS MCCARTHY,
MCCARTHY ON TRADEMARKS & UNFAIR COMPETITION § 24:20 (5th ed. 2018) (“The
‘natural expansion’ thesis seems to be nothing more than an unnecessarily
complicated application of the likelihood of confusion of source or sponsorship test to
a particular factual situation.”).
In this case, there is no evidence that consumers expect “medical inbound and
outbound call center services, clinical and non-clinical, to patients of health care
service providers” to emanate from the same source as Opposer’s health care services,
which – both at common law and as identified in Opposer’s pleaded registrations –
are centered on nursing home and medical rehabilitation and discharge planning.
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We find that Opposer has not established by a preponderance of the evidence that
Applicant’s services are similar or related to Opposer’s services. The second du Pont
factor thus weighs heavily against a finding that confusion is likely.
D. Similarity of the Trade Channels and Classes of Customers
The third and fourth du Pont factors assess the similarity of the parties’
established, likely-to-continue trade channels and the classes of customers to whom
the services are sold. On its face, Applicant’s recitation indicates that its services are
offered to health care service providers11 and rendered through direct calls to their
patients. At times, Applicant uses the CARING ONE mark when making or receiving
patient calls. See Deposition Testimony of Mr. Hudson at 56:10-57:5 and
Mr. Richardson at 24:15-25:3, Exhibits 46-47 to Opposer’s Second (Rebuttal) Notice
of Reliance, 23 TTABVUE 10-11, 19-20. There is no evidence that Applicant offers
services directly to consumers, and Applicant’s president testified that it does not.
Hudson Testimony Decl. ¶ 1, 22 TTABVUE 2 (“Applicant offers no services to
consumers/patients.”).
Opposer submitted evidence that, in connection with the provision of its services
at common law and recited in its pleaded registrations, it “works with Medicare and
Medicaid, as well as a wide variety of primary insurance companies, supplemental
insurance companies, managed care organizations, managed healthcare benefit
companies and their affiliates.” Hodges Testimony Aff. ¶ 28, 17 TTABVUE 12.

11 In its response to Opposer’s Interrogatory No. 2(e), Applicant identified the trade channels
through which it offers services as follows: “Contacting providers of healthcare services,
including hospitals, physicians, insurers, and consultants.” Exhibit 21 to Opposer’s Notice of
Reliance, 20 TTABVUE 25-26.
Opposition No. 91225060
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Although it “works with” health care service providers, there is no evidence that
Opposer renders services to them. Rather, Opposer provides and markets its services
under the CAREONE mark to patients and their families. Those purchasing the
parties’ respective services thus are different: Opposer’s customers are patients and
families, while Applicant’s customers are health care service providers.
Even if some of Opposer’s patients are contacted by Applicant, or vice-versa, we
have no basis on which to find that they would believe Opposer has expanded into
call center services other than the conclusory testimony of Mr. Hodges, Opposer’s
Chief Strategy Officer (“I believe it is likely that potential clients, customers and
vendors of either party in this litigation or medical professionals could easily assume
that the parties are affiliated or related to each other, though they are not.”). Hodges
Testimony Aff. ¶ 36, 17 TTABVUE 15. We find that the third and fourth du Pont
factors weigh against a likelihood of confusion.
E. Variety of Services On Which Opposer’s Mark Is Used
Opposer argues that the ninth du Pont factor, concerning the variety of services
on which a mark is used, weighs in favor of a finding that confusion is likely because
it uses the CAREONE mark in association with a wide variety of services. As noted
supra, however, although Opposer does use the CAREONE mark – alone or in
composite marks – in association with a variety of services, they are centered on
nursing home and inpatient medical rehabilitation services for patients and related
patient services. We find this du Pont factor to be neutral.
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F. Concurrent Use Without Evidence of Actual Confusion; Extent of
Potential Confusion
Applicant argues that the eighth and twelfth du Pont factors weigh against a
likelihood of confusion: “The length of time during and conditions under which there
has been concurrent use without evidence of actual confusion” and “The extent of
potential confusion, i.e., whether de minimis or substantial.” du Pont, 177 USPQ at
567. Opposer contends that the extent of potential confusion is substantial, arguing
that consumers “might easily believe” that Opposer had expanded into the field of
call center services. Opposer’s Brief at 25, 26 TTABVUE 31.
It is not necessary to show actual confusion in order to establish likelihood of
confusion. Herbko Int’l Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375,
1380 (Fed. Cir. 2002); Weiss Assocs. Inc. v. HRL Assocs. Inc., 902 F.2d 1546, 14
USPQ2d 1840, 1842-43 (Fed. Cir. 1990). Yet as our primary reviewing court has
stated, “extended periods of side-by-side sales without actual confusion may tend to
refute a likelihood of confusion.” Han Beauty Inc. v. Alberto-Culver Co., 236 F.3d 1333,
57 USPQ2d 1557, 1560-61 (Fed. Cir. 2001).
Here, the parties had used their marks concurrently for approximately four and a
half years at the time of trial with no evidence of actual confusion. Sales and
marketing data is filed under seal, but the size of Opposer dwarfs that of Applicant.
In addition, Applicant has no clients outside of Maryland, where it is based, while
Opposer appears to use the CAREONE mark on facilities located only in
Massachusetts and New Jersey. Hudson Dep. at 55:17-18, 20 TTABVUE 73; Hodges
Testimony Aff. ¶ 8, 17 TTABVUE 5-6. It is thus unclear what opportunity there has
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been for Applicant’s fledgling business to have created confusion. See Cunningham,
55 USPQ2d at 1847; Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1287
(TTAB 2007). We find the eighth du Pont factor neutral.
With respect to the twelfth factor, we find it likely that customers would take care
both in choosing nursing home or rehabilitation services on the one hand and medical
call center services on the other. Nonetheless, in the absence of probative evidence,
we also find the twelfth factor to be neutral.
VI. Conclusion
We have carefully considered all arguments and evidence of record, including any
not specifically discussed herein, as they pertain to the relevant likelihood of
confusion factors. We have found the dissimilarity of the parties’ services to weigh
strongly against a likelihood of confusion. The dissimilarity of the marks, considering
the moderate scope of protection due Opposer’s CAREONE mark, and of the trade
channels and classes of customers also weigh against a finding that confusion is
likely. The remaining factors are neutral and, to the extent that any other du Pont
factors for which no evidence was presented by Applicant or Opposer may be
applicable, we also treat them as neutral.
Opposer correctly argues that doubt regarding likelihood of confusion should be
resolved in its favor, but in this case, we have no doubt. Considering the record as a
whole, we find that Opposer has not carried its burden to establish by a
preponderance of the evidence that Applicant’s mark CARING ONE is likely to cause
consumer confusion with Opposer’s mark CAREONE when used in association with
the call center services identified in the subject application.
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Decision: The opposition to registration of application Serial No. 86628136 is
dismissed.