Cosmedical Technologies, Inc.v.Michael C. Whitehurst

Trademark Trial and Appeal Board

Jul 9, 2013

No. 91203420 (T.T.A.B. Jul. 9, 2013)

GCP Mailed: July 9, 2013

Opposition No. 91203420

Cosmedical Technologies, Inc.

v.

Michael C. Whitehurst

Before Kuhlke, Wellington, and Gorowitz,
Administrative Trademark Judges.

By the Board:
Michael C. Whitehurst (“applicant”) seeks to register the mark COS-
MED in standard characters for “lasers for medical cosmetic procedures;
lasers for the cosmetic treatment of the face and skin” in International Class
10.1
Cosmedical Technologies, Inc. (“opposer”) has opposed the registration
of applicant’s mark on the ground of priority and likelihood of confusion
based upon its prior common-law use and ownership of a registration for the
mark COSMEDICAL TECHNOLGIES in standard characters for “cosmetics,
namely, non-medicated skin care preparations” in International Class 3, and

1 Application Serial No. 85160278, filed on October 25, 2010, based upon an
allegation of use in commerce under Section 1(a) of the Trademark Act, claiming
July 15, 2005 as both the date of first use and the date of first use in commerce.

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS DECISION IS NOT A
PRECEDENT OF THE
TTAB
Opposition No. 91203420

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for “medicated skin care preparations” in International Class 5.2 Opposer
has also asserted a claim of dilution as an additional ground for opposition.
Applicant, in his answer, has denied the salient allegations of the
notices of opposition.
This case now comes before the Board for consideration of opposer’s
motion (filed November 29, 2012) for summary judgment regarding its claim
of priority and likelihood of confusion only. The motion is fully briefed.3
For purposes of this order, we presume the parties’ familiarity with the
pleadings, the history of the proceeding and the arguments and evidence
submitted with respect to opposer’s motion.
A party is entitled to summary judgment when it has demonstrated that
there are no genuine disputes as to any material facts, and that it is entitled to
judgment as a matter of law. Fed. R. Civ. P. 56(a). The evidence must be viewed
in a light favorable to the nonmoving party, and all justifiable inferences are to
be drawn in the nonmovant’s favor. Opryland USA Inc. v. The Great American
Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992).
Upon careful consideration of the arguments and evidence presented
by the parties, and drawing all inferences with respect to the motion in favor

2 Registration No. 3301694, issued on October 2, 2007, Section 8 and 15 affidavits
accepted and acknowledged on December 31, 2012.
3 Applicant’s counsel’s entry of appearance filed on November 26, 2012 is noted.
Board records have been updated accordingly.

Opposition No. 91203420

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of the applicant as the nonmoving party, we find that opposer has not
demonstrated the absence of a genuine dispute of material fact for trial.
In light of the parties’ conflicting affidavits and other supporting
evidence, at a minimum, opposer has failed to show the absence of a genuine
dispute of material fact so as to dispose of this matter by way of summary
judgment. Specifically, genuine disputes of material fact exist as to (1)
whether opposer’s pleaded mark and applicant’s involved mark are similar in
appearance and whether the marks convey a similar meaning and/or
commercial impression, (2) the relatedness of the parties’ respective goods,
and (3) the similarities/dissimilarities of the parties’ respective trade
channels and consumers.
With regard to the question of standing and priority, however, we find
that inasmuch as opposer’s pleaded Registration No. 3301694 is of record by
submission of a Trademark Electronic Search System (“TESS”) database
printout of the same with opposer’s motion for summary judgment; opposer’s
standing has been established and priority is not at issue with respect to
mark and goods covered by the pleaded registration. See Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000) and
King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108,
110 (CCPA 1974). Moreover, applicant does not dispute opposer’s standing
and priority of use. Accordingly, there is no genuine dispute of material fact
as to opposer’s standing and priority.
Opposition No. 91203420

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In view thereof, opposer’s motion for summary judgment is DENIED
with regard to the claim of likelihood of confusion, but GRANTED with
regard to the issue of standing and priority of use.4
Trial Schedule
Proceedings herein are RESUMED. Discovery is closed. Trial dates
for this case, beginning with the deadline for opposer’s pretrial disclosures,
are reset as follows:
Plaintiff's Pretrial Disclosures Due 8/11/2013
Plaintiff's 30-day Trial Period Ends 9/25/2013
Defendant's Pretrial Disclosures Due 10/10/2013
Defendant's 30-day Trial Period Ends 11/24/2013
Plaintiff's Rebuttal Disclosures Due 12/9/2013
Plaintiff's 15-day Rebuttal Period Ends 1/8/2014

In each instance, a copy of the transcript of testimony, together with
copies of documentary exhibits, must be served on the adverse party within
thirty days after completion of the taking of testimony. Trademark Rule
2.125.

4 The parties should note that the evidence submitted in connection with a motion
for summary judgment or opposition thereto is of record only for consideration of
that motion, except for opposer’s evidence regarding its standing and priority of use.
Any such evidence to be considered at final hearing must be properly introduced in
evidence during the appropriate trial period. See Levi Strauss & Co. v. R. Joseph
Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993); and Pet Inc. v. Bassetti, 219 USPQ
911 (TTAB 1983). Additionally, the issues for trial are not limited to those
identified by the Board in explaining the denial of this motion for summary
judgment.

Opposition No. 91203420

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Briefs shall be filed in accordance with Trademark Rules 2.128(a) and
(b). An oral hearing will be set only upon request filed as provided by
Trademark Rule 2.129.