Foundation Medicine, Inc.v.Albert F. Czap

Trademark Trial and Appeal Board

Sep 18, 2020

91243763 (T.T.A.B. Sep. 18, 2020)

Mailed: September 18, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Foundation Medicine, Inc.
v.
Albert F. Czap
___

Opposition No. 91243763
___

Douglas R. Wolf, John L. Strand and Ryan M. Van Olst of
Wolf, Greenfield & Sacks, P.C. for Foundation Medicine, Inc.

Margaret N. McGann and Jonathan H. Love of
Parsons, Behle & Latimer for Albert F. Czap.
______
Before Wellington, Adlin and Hudis,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Applicant Albert F. Czap seeks registration of FOUNDATIONAL MEDICINE
REVIEW, in standard characters (MEDICINE REVIEW disclaimed), for “journals in
the field of medicine” in International Class 16, and “providing on-line non-
downloadable articles in the field of medicine and health care” in International Class
41.1 In its notice of opposition, Opposer Foundation Medicine, Inc. pleads ownership

1 Application Serial No. 87763474 was filed January 20, 2018 under Section 1(b) of the
Trademark Act, based on an alleged bona fide intent to use the mark in commerce.
This Opinion is not a
Precedent of the TTAB
Opposition No. 91243763
2
of two registrations for the mark FOUNDATION MEDICINE, both over five years
old, in the forms and for the services set forth below:
Mark Services
FOUNDATION MEDICINE (standard
characters, MEDICINE disclaimed)2
“electronic storage of medical data and
medical information for healthcare
professionals” in International Class 39;

and

“cancer genomic and molecular medical
testing for diagnostic or treatment
purposes; cancer diagnostic services;
providing medical information through
the collection and analysis of cancer-
associated genetic and treatment
information; providing medical
data/information to healthcare
professionals” in International Class 44

(MEDICINE disclaimed)3
“online portal featuring links to medical
and scientific research in the field of
cancer treatment and diagnosis and
clinical trials information; providing
collected and analyzed medical
information in the field of cancer
genomics and treatment information for
cancer for scientific research purposes”
in International Class 42;

and

“online portal featuring patient medical
test results from medical testing for
diagnosis or treatment purposes and
links to medical information; genomic

2 Registration No. 4150592, issued May 29, 2012; Section 8 affidavit accepted, Section 15
affidavit acknowledged.
3 Registration No. 4776494, issued July 21, 2015. The registration includes this description
of the mark, claiming colors as indicated: “The mark consists of a green generally hexagon
shape where the bottom corner is separate and both legs extend upwards and then outwardly
at angle with ‘FOUNDATION’ in orange above ‘MEDICINE’ in gray.”
Opposition No. 91243763
3
and genetic and molecular medical
testing for cancer diagnostic or
treatment purposes; diagnostic services,
namely, medical diagnostic testing for
cancer; providing collected and analyzed
medical information in the field of
cancer genomics and treatment
information for cancer for diagnostic and
treatment purposes; providing medical
data and information to healthcare
professionals” in International Class 44

While Opposer primarily relies on is pleaded registrations, it also alleges prior use of
FOUNDATION MEDICINE for “medical and scientific research, the provision of
medical information, and related online portals.” As grounds for opposition, Opposer
alleges under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), that use of Applicant’s
mark would likely cause confusion with Opposer’s mark.4 In his answer, Applicant
denies the salient allegations in the notice of opposition and asserts a purported
“affirmative defense” which merely amplifies his denials.
I. The Record
The record consists of the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of Applicant’s involved application. In addition, Opposer

4 Opposer argues in its brief that it owns a “family” of marks, but failed to so plead, and the
issue was not tried. We have therefore considered each of Opposer’s pleaded marks
separately, without regard to Opposer’s “family” argument. Productos Lacteos Tocumbo S.A.
de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1927 (TTAB 2011) (“Petitioner’s
reference to a family of marks in its brief will not be considered because this claim was neither
pleaded nor tried by the parties.”).

Opposition No. 91243763
4
introduced:
Notice of Reliance on portions of Applicant’s responses to
Opposer’s written discovery requests, dictionary
definitions, several of its unpleaded registrations and
third-party registrations (“Opp. NOR”). 11 TTABVUE.5

Testimony Declaration of John Truesdell, its Senior
Director and Lifestyle Leader, and the exhibits thereto
(“Truesdell Dec.”). 12 TTABVUE.

Applicant introduced:
Notice of Reliance on dictionary definitions, portions of
Opposer’s responses to Applicant’s written discovery
requests, official records, Internet printouts and third-
party registrations (“App. NOR”). 13 TTABVUE.

II. The Parties and Their Marks
Opposer, which refers to itself as “The Molecular Information Company,” claims
on its website to connect “physicians and their patients to the latest cancer treatment
approaches,” and to be “making precision medicine a reality for thousands.” 12
TTABVUE 3, 19 (Truesdell Dec. ¶ 7 and Ex. C). More specifically, Opposer claims to
have “developed a fully informative genomic profile to identify a patient’s individual
molecular alterations and match them with relevant targeted therapies and clinical
trials.” Id. at 31 (Truesdell Dec. Ex. E).
While Opposer seems to primarily focus on developing medical tests, it also has
used its pleaded standard character mark since 2010 and its pleaded design mark
since 2013 in connection with “the provision of information and data in the fields of

5 Citations to the record reference TTABVUE, the Board’s online docketing system. The
number preceding “TTABVUE” corresponds to the docket entry number(s), and any
number(s) following “TTABVUE” refer to the page number(s) of the docket entry where the
cited materials appear.
Opposition No. 91243763
5
medicine and healthcare.” Id. at 2-3 (Truesdell Dec. ¶¶ 4-5). This includes offering
“online portals featuring the FOUNDATION MEDICINE Marks and links to medical
and scientific research in the fields of cancer treatment, diagnostics, and clinical trial
information,” as shown below:

Id. at 3, 13 (Truesdell Dec. ¶ 6 and Ex. B).
Opposition No. 91243763
6
Opposer provides information under its pleaded marks not just to researchers,
healthcare providers and biopharmaceutical companies, but also to “patients and
families of patients who may have been diagnosed with cancer.” Id. at 4-5 (Truesdell
Dec. ¶¶ 10-11). Opposer claims to have published “over 200 peer-reviewed articles,”
and provides links to at least some of them, apparently on its website:

Id. at 7, 89- 128 (Truesdell Dec. ¶ 13 and Ex. U).
Applicant “has not sold, or offered for sale, any goods or services under Applicant’s
mark.” 11 TTABVUE 10 (Applicant’s Response to Opposer’s Interrogatory No. 4).
Applicant nevertheless claims that his goods and services “are offered to the public
for no cost to consumers.” Id. Applicant does not claim any use of his involved mark
prior to the filing date of his involved application, however. In any event, Applicant
claims that his “articles in the field of medicine and health care” are provided on the
Opposition No. 91243763
7
“foundationalmedicine.com” website, as well as via Applicant’s Facebook, Twitter and
LinkedIn accounts. Id. at 11 (Applicant’s Response to Opposer’s Interrogatory No. 6).
III. Likelihood of Confusion
Before addressing whether the parties’ marks are likely to be confused, we must
first consider whether Opposer is entitled to bring this proceeding. If it is we must
then consider whether priority is at issue and if it is which party has it. See 15 U.S.C.
§§ 1052(d) and 1063.
A. Opposer’s Entitlement to Statutory Cause of Action6
To establish entitlement to a statutory cause of action under Section 13 of the
Trademark Act, such as a cause of action for likelihood of confusion, a plaintiff must
demonstrate a real interest in the proceeding and a reasonable belief of damage.
Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020
USPQ2d 10837 at *3 (Fed. Cir. 2020); see also Empresa Cubana Del Tabaco v. Gen.
Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058 (Fed. Cir. 2014); Coach Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727 (Fed. Cir. 2012);
Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999). Here,
Opposer has established its entitlement to bring this proceeding because it has a “real
interest” and a “reasonable belief of damage.” Australian Therapeutic, 2020 USPQ2d
10837 at *3. Indeed, Opposer’s pleaded registrations, which were properly made of

6 Our decisions have previously analyzed the requirements of Sections 13 and 14 of the
Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” We now refer to this
inquiry as entitlement to a statutory cause of action. Despite the change in nomenclature,
our prior decisions and those of the Federal Circuit interpreting Sections 13 and 14 remain
equally applicable.
Opposition No. 91243763
8
record, 1 TTABVUE 9-14, establish that it is entitled to oppose registration of
Applicant’s mark on the ground of likelihood of confusion. Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000).
B. Priority Is Not At Issue
Because Applicant has not counterclaimed to cancel either of Opposer’s pleaded
registrations, priority is not at issue with respect to the marks and goods and services
identified therein. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108, 110 (CCPA 1974). In any event, Opposer has established common law use
of its mark, prior to Applicant’s filing date, for “provision of information and data in
the fields of medicine and healthcare.” 12 TTABVUE 2-3 (Truesdell Dec. ¶¶ 4-5).
C. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth
factors to be considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods and services. 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 goods
and differences in the marks.”). Opposer bears the burden of establishing that there
is a likelihood of confusion by a preponderance of the evidence. Cunningham, 55
Opposition No. 91243763
9
USPQ2d at 1848. We consider the likelihood of confusion factors about which there
is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d
1160, 1162-63 (Fed. Cir. 2019).
1. The Goods and Services
The parties’ services are identified broadly in the involved application and pleaded
registrations, such that Applicant’s services encompass Opposer’s services and vice
versa. Specifically, under both of its pleaded marks Opposer provides “medical
data/information to healthcare professionals,” which is broad enough to encompass
Applicant’s “providing on-line non-downloadable articles in the field of medicine and
health care.”7 While Applicant’s “journals in the field of medicine” are identified as
goods, that is of little consequence here where Opposer’s services are essentially the
same – “providing medical data/information.” In fact, whether the information is
provided in online/electronic journals (or through the “online portal” identified in

7 Applicant argues that “[w]hen viewed in the proper context, Opposer’s ‘medical and
treatment information/data’ is a reference to the results of Opposer’s genomic testing and
diagnostic services.” 16 TTABVUE 20. However, as Applicant points out in his discovery
responses, we must base our determination “on the basis of the description of the goods” and
services in Opposer’s pleaded registrations. 11 TTABVUE 11-12 (responses to Opposer’s
Interrogatory Nos. 6, 7). “We have no authority to read any restrictions or limitations into
the registrant’s description of goods” based on evidence of actual marketplace use. In re Thor
Tech, Inc., 90 USPQ2d 1634, 1638 (TTAB 2009). See also In re i.am.symbolic, LLC, 866 F.3d
1315, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017) (“It is well established that the Board may
not read limitations into an unrestricted registration or application.”) (quoting SquirtCo v.
Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983)). Furthermore, and for
essentially the same reason, to the extent Applicant argues that confusion is unlikely because
consumers will exercise care in purchasing the parties’ goods and services, we must base our
decision on the least sophisticated purchasers for those goods and services. Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162-63 (Fed.
Cir. 2014).
Opposition No. 91243763
10
Opposer’s pleaded design mark registration), or through traditional journals
distributed on paper, is not substantively relevant. In short, Opposer’s services are
legally identical to Applicant’s goods and services.8 Cf. In re JobDiva, Inc., 843 F.3d
936, 121 USPQ2d 1122, 1126 (Fed. Cir. 2016) (“We agree with the Board's initial
observation that, with modern technology, the line between services and products
sometimes blurs . . . careful analysis is required to determine whether web-based
offerings, like those JobDiva provides, are products or services.”); In re Ancor
Holdings, LLC, 79 USPQ2d 1218, 1221 (TTAB 2006) (“Because of the . . . blurring
between services and products that has occurred with the development and growth
of web-based products and services it is important to review all the information in
the record to understand both how the mark is used and how it will be perceived by
potential customers.”).
Even if Opposer’s “providing medical data/information” does not encompass
Applicant’s “journals in the field of medicine,” the record makes clear that these goods
and services are closely related. Indeed, Opposer provided digitized examples of
articles it published in journals in the field of medicine. 12 TTABVUE 7, 130-153
(Truesdell Dec. ¶ 13 and Ex. V).

8 In any event, Opposer introduced a number of third-party registrations showing marks
registered for services similar to Opposer’s services on the one hand, and the types of goods
and services identified by Applicant on the other. 11 TTABVUE 78-133. “Third-party
registrations which cover a number of differing goods and/or services, and which are based
on use in commerce, although not evidence that the marks shown therein are in use on a
commercial scale or that the public is familiar with them, may nevertheless have some
probative value to the extent that they may serve to suggest that such goods or services are
of a type which may emanate from a single source.” See In re Mucky Duck Mustard Co., 6
USPQ2d 1467, 1470 n.6 (TTAB 1998).
Opposition No. 91243763
11
Moreover, because the goods and services are legally identical, we must presume
that the channels of trade and classes of purchasers are as well. In re Viterra Inc.,
671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no
evidence regarding channels of trade and classes of consumers, the Board was
entitled to rely on this legal presumption in determining likelihood of confusion);
American Lebanese Syrian Associated Charities Inc. v. Child Health Research
Institute, 101 USPQ2d 1022, 1028 (TTAB 2011). To the extent that Opposer’s services
and Applicant’s goods are not legally identical, Opposer has established that their
channels of trade overlap. 12 TTABVUE 7, 90-128, 130-153 (Truesdell Dec. ¶ 13 and
Exs. U and V).
The legal identity of (and close relationship between) the goods and services and
their overlapping channels of trade and classes of purchasers not only weigh heavily
in favor of finding a likelihood of confusion, but also reduce the degree of similarity
between the marks necessary to find a likelihood of confusion. In re Viterra, 101
USPQ2d at 1908; In re Mighty Leaf Tea, 94 USPQ2d at 1260; In re Max Capital Group
Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010).
2. The Marks
The marks are quite similar “in their entireties as to 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) (quoting du Pont, 177 USPQ at 567). Indeed, the only difference between
Applicant’s mark on the one hand, and Opposer’s standard character mark and the
literal portion of Opposer’s design mark on the other, is that Applicant’s mark adds
Opposition No. 91243763
12
the suffix “al” to FOUNDATION, and the merely descriptive or generic term REVIEW
to the end of the mark. These are distinctions without a meaningful difference.
In fact, in his brief, Applicant argues that the first word in his mark,
FOUNDATIONAL, “is an adjective.” 16 TTABVUE 16. When added to an adjective,
the suffix “al” means “of, relating to, or characterized by.”9 Thus, not only does the
suffix AL do little to distinguish the word FOUNDATIONAL from the word
FOUNDATION (on which it is based) in appearance or sound, but the terms also
convey the same meaning. In fact, as Opposer points out in its brief, Applicant
introduced dictionary evidence revealing that “foundational” means “of, relating to,
or forming or serving as a base or foundation,” with one example of usage of the term
being “foundational volumes.” 13 TTABVUE 23-25; 15 TTABVUE 18.
The word REVIEW, which is the trailing term in Applicant’s mark and absent
from Opposer’s marks, is merely descriptive or generic for Applicant’s “journals” and
“articles.” 11 TTABVUE 51 (defining “review” as “a magazine containing articles of
criticism and appraisal, often in a specific field”). This is why Applicant disclaimed
MEDICINE REVIEW in his involved application, and why the term is entitled to less
weight in our analysis. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has noted that

9 merriam-webster.com/dictionary/AL. The Board may take judicial notice of dictionary
definitions, including online dictionaries that exist in printed format or have regular fixed
editions. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d
594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold TV Inc. v. Metronome Enters. Inc., 96
USPQ2d 1031, 1038 n.14 (TTAB 2010).

Opposition No. 91243763
13
the ‘descriptive component of a mark may be given little weight in reaching a
conclusion on the likelihood of confusion.’”) (quoting In re Nat’l Data Corp., 753 F.2d
1056, 224 USPQ 749, 752 (Fed. Cir. 1985)).
While Opposer’s design mark is not quite as close to Applicant’s mark, it is still
highly similar. In fact, the design element is not particularly distinctive, and as a
result the literal portion of the mark, by which consumers will call for Opposer’s
services, is dominant. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1911 (Fed.
Cir. 2012); In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987)
(holding that “if one of the marks comprises both a word and a design, then the word
is normally accorded greater weight because it would be used by purchasers to
request the goods or services” and “because applicant’s mark shares with registrant’s
mark that element responsible for creating its overall commercial impression, the
marks are confusingly similar”).
In short, FOUNDATION MEDICINE (in both its standard character and design
forms) and FOUNDATIONAL MEDICINE REVIEW are highly similar in
appearance, sound, meaning and commercial impression, so much so that some
consumers familiar with Opposer’s marks could even perceive Applicant’s as
identifying one of Opposer’s publications. This factor also weighs heavily in support
of finding a likelihood of confusion.
3. The Strength of Opposer’s Marks
Opposer argues that its marks are commercially strong, based on: use of the
standard character mark since 2010 and the design mark since 2013; promotional
efforts, including not insubstantial but not overly impressive advertising expenses
Opposition No. 91243763
14
between 2015-2018; and media exposure in publications including The Boston Globe,
Forbes and Wired. 15 TTABVUE 28-31. Applicant argues that Opposer’s marks are
weak based on third-party registrations of marks containing the term FOUNDATION
“in the medical and healthcare industry.” 16 TTABVUE 23-24. Applicant does not
specify whether it is referring to commercial or conceptual weakness, however.10
Opposer’s commercial strength evidence is not enough to convince us that its
marks are entitled to more than an average level of protection for marks registered
on the Principal Register. The advertising figures are not overwhelming and there is
insufficient evidence that Opposer’s marks have had a substantial impact on the
consuming public.
Applicant’s third-party registration evidence is quantitatively and qualitatively
insufficient to show that Opposer’s mark is conceptually weak. In each of the seven
third-party registrations Applicant relies upon, 13 TTABVUE 316-327, either the
marks, or the goods or services, or both, are too different from Opposer’s mark and
services for the third-party registrations to be probative. See In re i.am.symbolic, 123
USPQ2d at 1751-52 (“Symbolic has not pointed to any record evidence to support a
finding that multiple third parties use the mark I AM for the listed goods in its class
3 and 9 applications.”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d

10 Applicant asserts that the third-party registrations establish use of the registered marks.
They do not. In re Mucky Duck, 6 USPQ2d at 1470 n.6 (third-party registrations are “not
evidence that the marks shown therein are in use on a commercial scale or that the public is
familiar with them”).

Opposition No. 91243763
15
874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992) (“The relevant du Pont inquiry is ‘[t]he
number and nature of similar marks in use on similar goods’ … It is less relevant
that ‘Century is used on unrelated goods or services such as ‘Century Dental Centers’
or ‘Century Seafoods.’”) (quoting Weiss Assocs. v. HRL Assocs., 902 F.2d 1546, 14
USPQ2d 1840, 1842 (Fed. Cir. 1990)); In re Inn at St. Johns, LLC, 126 USPQ2d 1742,
1746 (TTAB 2018). In addition, in several of the registrations upon which Applicant
relies, FOUNDATION is used to identify charitable or association services.
We find that Opposer’s marks are entitled to a normal scope of protection for
marks registered on the Principal Register.11 This factor is neutral.
IV. Conclusion
The parties’ marks are quite similar, their goods and services are legally identical
or at least closely related and the channels of trade are presumed to overlap.
Confusion is likely.

Decision: The opposition to registration of Applicant’s FOUNDATIONAL
MEDICINE REVIEW mark on the ground of likelihood of confusion is sustained.

11 Opposer half-heartedly argues about other du Pont factors which are not relevant on the
record presented. There is no evidence of actual confusion of record, or that there has been
an opportunity for actual confusion to occur, and this factor is therefore irrelevant. Moreover,
while Applicant may have been aware of Opposer or one or more of its marks prior to filing
his involved application, that is insufficient to establish bad faith. Action Temporary Services,
Inc. v. Labor Force, Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1310 (Fed. Cir. 1989) ("mere
knowledge of the existence of the prior user should not, by itself, constitute bad faith").