HealthFirst, Inc.v.Greenville Hospital System

Trademark Trial and Appeal Board

Aug 26, 2003

No. 91106208 (T.T.A.B. Aug. 26, 2003)

Mailed: 26 AUG 2003
Paper No. 47
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
HealthFirst, Inc.
v.
Greenville Hospital System
_____
Opposition No. 106,208
to application Serial No. 75/158,941
_____
Edward Klagsbrun of McLaughlin & Stern, LLP for HealthFirst,
Inc.
John B. Hardaway, III of Nexsen Pruet Jacobs & Pollard, LLC
for Greenville Hospital System.
______
Before Seeherman, Holtzman, and Drost, Administrative
Trademark Judges.
Opinion by Drost, Administrative Trademark Judge:
Greenville Hospital System (applicant) has applied to
register the mark HEALTHFIRST (typed) for:
Providing health care benefit plans for other[s],
health care cost containment, health care cost review,
health care utilization and review services, hospital
management, medical cost management, medical referrals,
and physician referrals in International Class 35
Insurance administration, administration of employee
benefit plans, administration of pre-paid health care
plans, administration of preferred provider plans,
underwriting insurance for pre-paid health care,
administration of pre-paid health care plans,
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Opposition No. 106,208
2
organizing pre-paid health care plans, and medical
insurance underwriting in International Class 36
Health clubs and physical fitness instruction in
International Class 41
Health care, health care in the nature of HMOs, health
care, namely, assisting individuals to stop smoking,
providing health and medical information, supplying
prescription drugs to health plan participants for the
funding organization, hospitals, emergency medical
assistance, medical clinics, maintaining files and
records concerning the medical condition of
individuals, medical counseling, rental of medical
equipment, medical laboratories, medical research,
medical testing, medical services, in vitro
fertilization, physical fitness consultation, physical
rehabilitation, physical therapy, and physician
services in International Class 421
HealthFirst, Inc. (opposer) has opposed the
registration of applicant’s mark. In its notice of
opposition, opposer alleges that it has used the marks
HEALTHFIRST and design and HEALTHFIRST WHERE THE CARE STARTS
and design since 1993. It also claims that it will be
damaged because “[i]f two entities are entitled to provide
identical services under similar marks, there is a
likelihood that the public will be confused.” Notice of
Opposition, p. 4. Applicant denied the salient allegations
of the notice of opposition.
The Record
The record consists of the following items: the file
of the involved application; the trial testimony deposition
1 Serial No. 75/158,941 filed August 30, 1996. The application
contains an allegation of a bona fide intention to use the mark
in commerce.
Opposition No. 106,208
3
of opposer’s senior vice-president, Thomas W. Bergdall, with
accompanying exhibits; copies of opposer’s interrogatories
and applicant’s answers to interrogatories; excerpts of
South Carolina laws, the file wrapper of applicant’s
Registration No. 1,683,958 and printouts from the USPTO’s
database, and copies of applicant’s license agreements.
Applicant has submitted the trial testimony deposition of
applicant’s former employee, Cornelia Outten, with
accompanying exhibits2; copies of the file wrappers of
opposer’s trademark applications (Serial. Nos. 75/117,694
and 117,256) and copies of applicant’s interrogatories and
opposer’s responses.
Likelihood of Confusion
The parties in this case essentially concede that there
is a likelihood of confusion here and the central issue is
the question of who has priority. See Opposer’s Brief at 6
(“Accordingly, there is a likelihood of confusion between
the respective marks”); Applicant’s brief at 1 (“Both
parties agree that there is a likelihood of confusion
between Applicant’s HEALTHFIRST mark and Opposer’s
2 Opposer’s objection to this deposition on the ground that it
has not been verified is overruled. Applicant has submitted the
signature of the witness. Accord Tampa Rico Inc. v. Puros Indios
Cigars Inc., 56 USPQ2d 1382, 1383 (TTAB 2000) (“[W]hile it is
clear that Mr. Reyes did not sign his deposition as Trademark
Rule 2.123(e)(5) requires, it is equally clear that this defect
is curable: applicant is ordered to send Mr. Reyes a
copy of the Spanish language transcript for his signature”).
Opposition No. 106,208
4
HealthFirst mark”) (emphasis deleted).3 Indeed, there is
little doubt that when applicant’s HEALTHFIRST mark in typed
form is used on the same health care services associated
with opposer’s HEALTHFIRST mark and design, there would be a
likelihood of confusion. In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also
Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896
(Fed. Cir. 2000). Moreover, although the application covers
services in four classes, it is clear that opposer has based
its opposition on the likelihood of confusion with respect
to opposer’s health care services. Therefore, we proceed to
the central question of priority.4
Priority
Opposer does not allege ownership of a registration,
rather it relies on its common law rights in the marks
HEALTHFIRST and design for health care services. In that
case, “the decision as to priority is made in accordance
with the preponderance of the evidence.” Hydro-Dynamics
Inc. v. George Putnam & Company Inc., 811 F.2d 1470, 1
USPQ2d 1772, 1773 (Fed. Cir. 1987).
3 Subsequent quotations from the parties’ papers will likewise
not set the marks out in bold as the parties do.
4 While opposer alleges that the mark HEALTHFIRST is weak, it is
not clear what relevance that argument has in this case. The
parties have agreed that there is confusion. Even if they did
not, confusion would still be likely when virtually the same word
mark HEALTHFIRST is used on the same services, even if the mark
is weak.
Opposition No. 106,208
5
Opposer and applicant agree that opposer has used its
mark on health care services since 1994. See Applicant’s
Brief at 9 (“Since September 1994, Opposer or an affiliate
have used the mark HealthFirst to provide managed health
care plans”). Opposer has alleged that it began using the
mark before that time. “Opposer has used the HEALTHFIRST
mark, through its predecessor in interest, the Greater New
York Hospital Association, in December 1992 in recruiting
member hospitals. Since 1993, Opposer began using the
HealthFirst mark for the same purpose and subsequently, in
September of 1994 used the mark in connection with the
successful conclusion of contracts between HealthFirst, Inc.
and the City of New York.” Opposer’s Brief at 7-8.
Opposer’s allegation of a date of first use earlier than
September 1994 is not supported by the record. Opposer’s
witness testified that “HealthFirst first became active in
offering services to members in September of 1994… I am
confident in the September of 1994 date.” Bergdall dep. at
10-11.5 The evidence of an earlier date of use is not
persuasive. The witness’s testimony was vague and it was
not based on the witness’s own experience. See Bergdall
dep. at 12 (“At some point in their discussions to
organizing this hospital-controlled managed-care company,
5 The witness became senior vice-president of opposer in August
of 1995. Bergdall Dep. at 6. Prior to that, he was an attorney
for the City of New York. Bergdall dep. at 38.
Opposition No. 106,208
6
they began using the name HealthFirst… It wouldn’t be based
on my recollection. From my conversations with Paul and
primarily Pat Wang, at Greater New York, I know that it was
in late 1992, because it was – everyone has clear
recollections”). It is not even clear how the mark was
used. See Bergdall dep. at 41 (“What would have been used
in 1992, to my knowledge and belief, was using this as a
name to recruit hospitals to join in this common enterprise
to form this managed care company. There was no public
advertisements. There was no program that was offered to
the public”).6 Therefore, based on the evidence of record
we conclude that opposer has established September of 1994
as its priority of use date for its health care services.
Opposer does not allege that it has used the mark on all the
services that are in the opposed application and it has not
established an earlier priority date for any other service.
The September 1994 date is significant because
applicant filed its intent to use application on August 30,
1996, and unless applicant had used the mark prior to that
filing date, opposer would have priority. Zirco Corp. v.
American Telephone and Telegraph Co., 21 USPQ2d 1542, 1544
(TTAB 1991) (“[T]here can be no doubt but that the right to
6 Perhaps because of the vagueness of the evidence, opposer
subsequently argues that the “evidence of record is clear as to
Opposer’s rights, it has used the mark HealthFirst since 1993.”
Opposer’s Br. at 17.
Opposition No. 106,208
7
rely upon the constructive use date comes into existence
with the filing of the intent-to-use application and that an
intent-to-use applicant can rely upon this date in an
opposition brought by a third party asserting common law
rights”). However, an applicant can establish a priority
date earlier than its application’s filing date. Corporate
Document Services inc. v. I.C.E.D. Management Inc., 48
USPQ2d 1477, 1479 (TTAB 1998) (“[A]n intent-to-use applicant
is entitled to rely upon actual use, or use analogous to
trademark use, prior to the constructive use date of the
intent-to-use application”). When an applicant attempts to
prove a date of first use earlier than the date alleged in
its use-based application, it must establish this date by
clear and convincing evidence. Martahus v. Video
Duplication Services Inc., 3 F.3d 417, 7 USPQ2d 1846, 1852
n.7 (Fed. Cir. 1993) (“VCDS alleges use prior to the date
that it apparently listed in its registration application as
its date of first use, i.e., prior to May of 1985, and
therefore VCDS has the burden of establishing that use by
clear and convincing evidence instead of mere preponderance
of the evidence”); Hydro-Dynamics, 1 USPQ2d at 1773 (“ Where
an applicant seeks to prove a date earlier than the date
alleged in its application, a heavier burden has been
imposed on the applicant than the common law burden of
preponderance of the evidence”). Even if the same standard
Opposition No. 106,208
8
is applied to applicants who seek to establish a date of
actual use prior to the intent-to-use application’s filing
date, we find that applicant’s evidence is sufficient to
establish its priority in this case.
Applicant relies on the testimony deposition of
Cornelia Outten to support its claim of an earlier date of
use. The witness left the applicant in January 1995.
Outten dep. at 5. Applicant asked the witness: “And if
you’re aware that these services were offered or not offered
prior to, say, 1992, if you would just advise me as I go
through the list.” Outten dep. at 10. The witness was then
asked about each service in the application individually.
She answered in the affirmative for most of the services in
the application. Outten dep. at 10-12 (Providing healthcare
benefit plans for others, healthcare cost containment,
healthcare cost review, healthcare utilization and review
services, hospital management, medial cost management,
medical referrals, physician referrals, insurance
administration, administration of employee benefit plans,
administration of prepaid insurance plans, underwriting
insurance for prepaid healthcare, administration of prepaid
healthcare plans, organizing prepaid healthcare plans,
medical insurance underwriting, physical fitness
instruction, primary healthcare, smoking cessation classes,
providing health and medical information, emergency medical
Opposition No. 106,208
9
assistance, maintaining files and records concerning medical
conditions of individuals, medical counseling, rental of
medical equipment, operation of medical laboratories,
medical research, medical testing, in vitro fertilization,
physical fitness consultation, physical rehabilitation,
physical therapy, physician services, healthcare
publications and medical practice management).7
On cross-examination, the witness was asked to
elaborate on her direct testimony and she explained that
“all of those programs and services were initially offered
through the Greenville Hospital System employee benefit plan
and expanded into the community in 1990 when we began the
enrollment of other employee groups.” Outten dep. at 28.
The witness also identified a brochure entitled
“HealthFirst, A Partnership for High Quality Cost-effective
Health Care” that she said “was used in our materials for
employer groups that we were contracting with… I believe
this was developed in 1990, ’91, ’92, that time frame.”
Outten dep. at 14-17. See also Outten dep. at 23-24:
In 1989, we began marketing and selling HealthFirst
services to other employers within that area. I
believe our second account beyond the hospital
employees was Liberty Corporation, and I think their
effective date was January of 1990…. We provided the
HealthFirst network, which was the organization of
physicians, hospitals, and ancillary providers that
made up the provider component; we provided to Liberty
7 It was clear that the witness was indicating that the
“HealthFirst name was associated with” these services. Outten
dep. at 12.
Opposition No. 106,208
10
assistance with health benefits design; we provided
utilization management services; member services;
provider services; and re-pricing services to Liberty
Corporation.
The witness also explained that these services such as
providing healthcare benefit plans for others and healthcare
cost containment were “provided under the HealthFirst name.”
Outten dep. at 27. “It was the middle of ’87 – June or July
of 1987 is when the program known as HealthFirst became
recognized by the hospital and the provider community.”
Outten dep. at 6-7.
In order to prevail on the issue of priority, applicant
can rely on intrastate use and use analogous to trademark
use prior to the intent-to-use application’s filing date.
Corporate Document Services, 48 USPQ2d at 1479. The
evidence demonstrates that applicant was using the mark
HEALTHFIRST on services that were identical to, or closely
related to, opposer’s services prior to opposer’s date of
first use of September 1994.
Opposer does offer two arguments to attempt to undercut
applicant’s evidence of use. First, opposer argues that the
witness’s testimony is contradicted by applicant’s earlier
answer to an interrogatory. The opposer’s interrogatory
asked applicant to provide the date each service identified
in the applicant was provided by the applicant. Applicant
responded to the interrogatory by providing a list of
services and a date of first use prefaced by the statement
Opposition No. 106,208
11
“that at least the following services have been and are
being provided under the HEALTHFIRST mark, either by
Applicant or by Applicant’s licensees.” Opposer’s Notice of
Reliance dated January 19, 2001, Ex. 2. Applicant then
indicated that numerous services including administration of
employee health care benefit plans, health care cost
containment, health care cost review, health care
utilization and review services, hospital management,
medical cost management, medical referrals, physician
referrals, insurance administration, administration of
employee benefit plans, administration of preferred provider
plans, providing health and medical information, and
maintaining files and records concerning the medical
condition of individuals were provided by 1992.
Applicant’s witness confirmed that applicant used the
mark on these services and, in addition, she testified that
applicant also used the mark on primary health care,
emergency medical assistance, medical clinics, medical
counseling, rental of medical equipment, medical testing, in
vitro fertilization, physical fitness consultation, physical
rehabilitation, physical therapy and physician services.
Outten dep. at 10-14. While applicant’s witness expanded on
the services for which applicant was using the mark, the
testimony has not been undermined by its answer to the
interrogatory.
Opposition No. 106,208
12
Opposer’s second argument concerns a provision in a
license agreement between applicant and a third party. The
agreement indicates that applicant had filed an ITU
application and that “Licensor shall convert Services
described in (2), all of which are identified in the ITU
application, to use-based applications as soon as reasonably
feasible following implementation of one or more of these
Services by Licensee.” Opposer’s Notice of Reliance, Ex. 3,
003677. The license is dated February 27, 1998.
Apparently, opposer would have this agreement stand for the
proposition that as “this license agreement was executed in
February 1998, clearly no use could have taken place prior
thereto.” Opposer’s Brief at 18.8 However, the evidence of
record of applicant’s use of the mark on various promotional
items and Ms. Outten’s testimony rebuts opposer’s argument
and indicates that this provision is not to be read as
opposer maintains. It is clear that applicant had used the
mark on various services well before the date of this
agreement and this agreement appears to be directed to
perfecting its intent-to-use application.
We also briefly discuss several other issues that
opposer raises. First, opposer argues that applicant’s
8 Opposer’s argument does not take into consideration the fact
that an applicant may have used a mark in intrastate commerce.
As discussed previously, this type of use may be sufficient to
establish priority but it would not be sufficient to justify the
filing of a use-based application.
Opposition No. 106,208
13
termination of business with its primary licensee as of
December 31, 1999, “acknowledges that any use by this
licensee has been discontinued and that there is no intent
to resume use of the mark.” Opposer’s Brief at 18.
Discontinuing business with a “primary” licensee hardly
demonstrates that applicant has discontinued all use of the
mark and that it has no intent to resume use. Opposer’s
evidence of abandonment of an intent-to-use application
falls far short of that necessary for it to prevail. In
addition, we note that opposer’s allegation of abandonment
would involve the period beginning after this opposition was
filed (June 2, 1997). The Court of Customs and Patent
Appeals has recognized that a party litigating its right to
register a mark may refrain from using the mark until it is
clear that the party will be permitted to register the mark.
Community of Roquefort v. Santo, 443 F.2d 1196, 170 USPQ
205, 208 (CCPA 1971) (An applicant’s “subsequent decision to
hold further activities in abeyance pending the outcome of
the opposition appears to be but a reasonable business
precaution and does not demonstrate a lack of intention to
market the product commercially upon successful termination
of the proceeding”).
Opposer also argues that the mark “HEALTHFIRST is
descriptive of the services designated in the opposed
application. The term “‘Health’ describes the area of
Opposition No. 106,208
14
services, i.e. ‘health care’ while the term ‘First’ is
merely laudatory, suggesting that the owner of the mark is
the first choice in health care services.” Opposer’s Brief
at 20. Opposer was notified in a previous decision in this
case that “mere descriptiveness has not been pleaded by
opposer as a ground for opposition.” Opinion dated May 30,
2000, p.8 n.2. Opposer continues to argue that it has
pleaded descriptiveness by referring to statements in its
notice of opposition that “Opposer will be denied the right
to continue using the mark in a manner in which it is now
legally entitled to do so” and that the application will
“prevent other parties from using a similar mark.”
Opposer’s Brief at 20. Obviously, these statements do not
plead that applicant’s mark is merely descriptive.9
Inasmuch as opposer never amended its pleadings and the
issue has not been tried by express or implied consent,
opposer is not entitled to prevail on this point.
Finally, opposer has included evidence that applicant
has been chartered by the State of South Carolina to
“provide its services for the benefit of Greenville County
residents, thereby limiting the use of the mark to
intrastate use.” Opposer’s Brief at 17. Opposer argues
that applicant “is limited to intrastate commerce in
9 It is also noted that it is manifestly untimely to request
reconsideration of the Board’s determination that opposer has not
pleaded mere descriptiveness as a ground for opposition.
Opposition No. 106,208
15
connection with the mark HEALTHFIRST, a use insufficient to
satisfy a claim of use in interstate commerce.” Id. We
note that applicant’s charter does not limit its operations
to only the County of Greenville in South Carolina. Again,
we point out that applicant has filed an intent-to-use
application. Based on the evidence of record, we simply
have no basis at this point to hold that applicant is
prohibited from using its mark in interstate commerce.10
Decision: The opposition is dismissed.
10 Until applicant submits its Statement of Use, any other
questions regarding applicant’s use in commerce are premature.