Healthplex, Inc.v.Genesis Health System

Trademark Trial and Appeal Board

Dec 8, 2016

No. 92060507 (T.T.A.B. Dec. 8, 2016)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: December 8, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Healthplex, Inc.

v.

Genesis Health System
___

Cancellation No. 92060507
___

Norman H. Zivin and Laura A. Alos of Cooper & Dunham LLP
for Healthplex, Inc.
April A. Price of Lane & Waterman LLP for Genesis Health System.
______

Before Ritchie, Kuczma and Adlin, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Genesis Health System (“Respondent”) owns a registration for the mark
HEALTHPLEX, in standard characters, for “Medical Services” (the “Registration”).1
In its petition for cancellation, Healthplex, Inc. (“Petitioner”) alleges prior use of an
identical mark for “dental health insurance services” including “providing group and
individual dental health insurance plans,” and pleads ownership of a registration for

1 Registration No. 4622462, issued October 14, 2014.
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the mark for “dental health insurance administration.”2 As grounds for cancellation,
Petitioner alleges that use of Respondent’s mark would be likely to cause confusion
with Petitioner’s mark. In its answer, Respondent denies the salient allegations in
the petition for cancellation, and asserts several “affirmative defenses” which merely
amplify its denials.
The Record
The record includes the pleadings, and, by operation of Trademark Rule 2.122(b),
the file of the involved Registration. In addition, the parties stipulated to, 7
TTABVue,3 and the Board approved, 8 TTABVue, the introduction of testimony by
declaration. The parties introduced the following trial evidence:
Testimonial declaration of Bruce H. Safran DDS, one of
Petitioner’s founders, and its former Vice President and
Secretary, and the exhibits thereto. 11 TTABVue, 12
TTABVue.

Respondent’s Notice of Reliance (“NOR”) on third-party
registrations, Internet printouts and Petitioner’s responses
to certain of Respondent’s interrogatories. 13 TTABVue.

Testimonial declaration of Kenneth Croken, Respondent’s
Vice President of Corporate Communications, Marketing
and Advocacy and the exhibits thereto. 14 TTABVue.

The parties disagree about whether Petitioner properly introduced its pleaded
Registration into evidence. Petitioner did not take advantage of Trademark Rule

2 Registration No. 3824608, issued July 27, 2010.
3 Citations to the record reference TTABVue, the Board’s online docketing system.
Specifically, the number preceding “TTABVue” corresponds to the docket entry number, and
any number(s) following “TTABVue” refer to the page number(s) of that particular docket
entry where the cited materials appear.
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2.122(d)(1) by attaching to its petition a printout of the Registration from an Office
database showing its current status and title. Instead, Petitioner introduced the
registration through Dr. Safran’s December 1, 2015 declaration, in which he testified
that Petitioner filed an application to register HEALTHPLEX on December 14, 2009,
and the resulting registration issued on July 27, 2010 and “now is incontestable.” 11
TTABVue 5, 13. Dr. Safran’s declaration includes as an exhibit a “soft” or “plain”
undated copy of the Registration certificate.
Respondent argues that this was insufficient to make the pleaded Registration of
record. We disagree.
In its January 26, 2015 Answer, Respondent admitted that the allegation that
Petitioner “is the owner” of the Registration “is consistent with the records of the
United States Patent and Trademark Office,” but claimed to be “without knowledge
or information sufficient to form a belief as to the truth of the underlying allegations
contained in those records.” 5 TTABVue 3. This is sufficient to find that Petitioner
owns the Registration, because we by definition rely in part on Office records to
determine ownership, at least in the absence of a counterclaim or evidence of
nonownership. As for status, Respondent’s admission was made less than two years
ago and Dr. Safran’s testimony that the Registration is now “incontestable,” which
necessarily means it was subsisting at the time of the testimony, was given one year
ago, and during trial. Rarely would evidence of status be introduced meaningfully
later than that. Moreover, given the overall nature of Dr. Safran’s testimony, we find
it appropriate in this case, to the extent Respondent’s admission and Dr. Safran’s
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testimony are otherwise insufficient, to “infer a claim” that Petitioner owned its
pleaded Registration and that the Registration was valid on the date of the testimony.
See Citigroup Inc. v. Capital City Bank Group Inc., 94 USPQ2d 1645, 1653 (TTAB
2010), aff’d, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011) (citations omitted)
(inferring “a claim that opposer is the owner of the registrations because of the nature
of the testimony”); cf. Royal Hawaiian Perfumes, Ltd. v. Diamond Head Prods. of
Haw., Inc., 204 USPQ 144, 146 (TTAB 1979) (status and title copy of registration
prepared two months prior to filing of opposition is reasonably contemporaneous).
Therefore, we find that Petitioner’s pleaded Registration is of record. We hasten to
add, however, that even if it was not, our substantive analysis of Petitioner’s claim
and the ultimate outcome of this proceeding would be the same.
Standing
Petitioner’s pleaded Registration establishes its standing. Cunningham v. Laser
Golf Corp., 222 F.3d 943, 945, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000). And even if
Petitioner’s Registration was not of record, Respondent has not contradicted Dr.
Safran’s convincing testimony that Petitioner has continuously used its mark for
dental health insurance services since 1984. 11 TTABVue 4-9, 14-101, 127-129, 245-
246, 252-258. That use also establishes Petitioner’s standing. Giersch v. Scripps
Networks, Inc., 90 USPQ2d 1020, 1022 (TTAB 2009) (“Petitioner has established his
common-law rights in the mark DESIGNED2SELL, and has thereby established his
standing to bring this proceeding.”); Syngenta Crop Prot. Inc. v. Bio-Chek LLC, 90
USPQ2d 1112, 1118 (TTAB 2009) (testimony that opposer uses its mark “is sufficient
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to support opposer’s allegations of a reasonable belief that it would be damaged …”
where opposer alleged likelihood of confusion).
Priority
As for priority, the filing date of the application resulting in Petitioner’s pleaded
registration is earlier than the filing date of the involved Registration, and earlier
than Respondent’s claimed use of its mark. 14 TTABVue 4; see Brewski Beer Co. v.
Brewski Brothers Inc., 47 USPQ2d 1281, 1284 (TTAB 1998) (a party “may rely on its
registration for the limited purpose of proving that its mark was in use as of the
application filing date”). Moreover, even if Petitioner’s registration was not of record,
Petitioner has established its prior use of HEALTHPLEX for dental health insurance
services. 11 TTABVue 4-9, 14-101, 127-129, 245-246, 252-258. While Respondent
contends that Petitioner has not established common law priority because “there is
no evidence of services rendered under the mark,” 22 TTABVue 8, Respondent’s
argument is belied by Dr. Safran’s testimony that Petitioner: (1) was founded “to
provide dental services to subscribing companies, governmental entities and
consumers, and to administer dental health insurance plans;” (2) “runs many dental
programs in connection with organizations offering other health care plans to their
members and employees;” and (3) “now is the largest independent provider of dental
plan services in the New York metropolitan area.” 11 TTABVue 4, 6, 7.
Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the probative facts in evidence that are relevant to the factors set forth in In
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re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See
also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003). In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976). Petitioner bears the burden of establishing that there is a likelihood of
confusion by a preponderance of the evidence. Cunningham, 55 USPQ2d at 1848;
West Florida Seafood, Inc. v. Jet Restaurants, Inc., 31 F.3d 1122, 31 USPQ2d 1660,
1662 (Fed. Cir. 1994). Indeed, “a presumption of validity attaches to” Respondent’s
involved registration. Id.; Cerveceria Centroamericana S.A. v. Cerveceria India Inc.,
892 F.2d 1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989); Kohler Co. v. Baldwin
Hardware Corp., 82 USPQ2d 1100, 1105-06 (TTAB 2007). We consider the likelihood
of confusion factors about which the parties introduced evidence or presented
argument, and treat the remaining factors as neutral.
The Marks
The marks are identical. This factor weighs heavily in favor of finding a likelihood
of confusion. Furthermore, because the marks are identical, the degree of similarity
between the services that is required to support a finding of likelihood of confusion is
reduced. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993);
Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB 2002); and
In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001).
The Services and Channels of Trade
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While the amount of evidence Petitioner must introduce to establish a relationship
between the services is reduced, in this case in which Petitioner pleads only likelihood
of confusion, rather than dilution, Petitioner’s burden to establish a relationship
between the parties’ services is not eliminated. Indeed, in particular cases, the
dissimilarity of the goods and services and their channels of trade may be dispositive.
See e.g. Han Beauty Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d 1557, 1560
(Fed. Cir. 2001) (“While it must consider each [du Pont] factor for which it has
evidence, the Board may focus its analysis on dispositive factors, such as similarity
of the marks and relatedness of the goods.”); The North Face Apparel Corp. v.
Sanyang Indus. Co., 116 USPQ2d 1217, 1233 (TTAB 2015) (“The difference in the
goods and services is dispositive on the issue of likelihood of confusion.”); In re
HerbalScience Group LLC, 96 USPQ2d 1321, 1325 (TTAB 2010) (despite nearly
identical marks, “there is no evidence of overlap between the channels of trade for
and purchasers of applicant’s and registrant’s products. Accordingly, the examining
attorney has failed to prove that applicant’s mark, if used for its identified goods, is
likely to cause confusion with the cited registration”); Morgan Creek Productions Inc.
v. Foria International Inc., 91 USPQ2d 1134, 1143 (TTAB 2009) (finding no likelihood
of confusion despite nearly identical marks, stating “the dissimilarity of the goods
due to their nature, the manners in which they are sold or distributed, and the
circumstances under which consumers would encounter them, is a dispositive factor
in this case”).
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While Petitioner is not relieved of its burden and must establish a relationship
between the services, we keep in mind that the services need not be identical or even
competitive in order to support a finding of likelihood of confusion. It is enough that
they are related in some manner or that the circumstances surrounding their
marketing are such that they would be likely to be seen by the same persons under
circumstances which could give rise, because of the marks used, to a mistaken belief
that Petitioner’s and Respondent’s services originate from or are in some way
associated with the same source or that there is an association between the sources
of the services. Hilson Research, Inc. v. Society for Human Resource Management, 27
USPQ2d 1423, 1432 (TTAB 1993); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB
1991); Schering Corp. v. Alza Corp., 207 USPQ 504, 507 (TTAB 1980); Oxford
Pendaflex Corp. v. Anixter Bros. Inc., 201 USPQ 851, 854 (TTAB 1978); In re
International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). The
issue is not whether purchasers would confuse the services, but rather whether there
is a likelihood of confusion as to the source of the services. In re Rexel Inc., 223 USPQ
830, 832 (TTAB 1984). It is settled that we must compare the services identified in
Respondent’s involved Registration to those identified in Petitioner’s pleaded
registration and for which it has established prior use. See Hewlett-Packard Co. v.
Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); Octocom
Systems, Inc. v. Houston Computers Services, Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
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Here, Petitioner failed to introduce any evidence that the parties’ services are
related. Instead, Petitioner relies on mere argument, stated in two slightly different
ways:
Respondent’s identified “medical services” is a “broad and
all-encompassing description that must be read to include
all types of medical services, including dental health
services and/or healthcare insurance services.”

Petitioner’s “services relate to dental care, a subset of
medical care and services. [Petitioner’s] website states
‘[s]ince 1977 it has been our vision that all people
understand the connection between oral health and overall
health … prevention is the right way to improve your oral
health and your overall health’ … A representative of
[Respondent] is quoted as stating that the company’s focus
is ‘not only going to be on healthcare, but on wellness for
the entire community’ … [Respondent]’s advertisements
[emphasize] its focus on ‘population health’ with ‘expanded
services’ and state that its facility ‘will continue [to expand]
with more phases to come.’”

18 TTABVue 16-18. We are not persuaded by this unsupported argument.
In the absence of any evidence that dental care or dental services are a subset of
medical services, we decline to make such a finding. While both medical and dental
services relate in the broadest sense to human health, that is not enough by itself to
establish that medical and dental services are related.
More importantly, even assuming that “medical services” encompasses “dental
care,” Petitioner has not established that it provides dental care. Rather, Petitioner’s
registration is for “dental health insurance administration,” and it has established
common law use of its mark for dental health insurance services and providing group
and individual dental health insurance plans. These are all insurance services, rather
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than any type of patient care, whether medical or dental. Therefore, on their face, the
services identified in the involved Registration appear to have no relationship to
Petitioner’s, and are targeted to different customers for different reasons.
Furthermore, as explained in more detail below, Petitioner has not demonstrated that
there is in fact a relationship between its services and Respondent’s, and there is no
reason apparent from the record why the customers of one party would be exposed to
the other’s services or mark.
In fact, while the record includes no evidence that the services are related or that
the trade channels overlap, it contains ample evidence of the lack of a relationship.
For example, Petitioner’s website has pages for members, dentists, group
administrators, brokers and visitors interested in dental insurance, but not dental
patients seeking to interact directly with a dentist:

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11 TTABVue 83. Similarly, Petitioner’s brochures and promotional materials are
focused exclusively on insurance-related services:

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11 TTABVue 45-46.
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Id. at 15.
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Id. at 31.

Id. at 21.
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Id. at 34.
This evidence reveals that Petitioner bills itself as a “rapidly growing publicly-
owned corporation focused solely on the development and administration of dental
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healthcare programs.” Id. at 45 (emphasis added). Its dental programs include
“traditional indemnity plans,” “capitation plans” and ASO or administrative services
only for self-insured plans.” Id.4 Petitioner’s capitation plans are claimed to provide
“more coverage at lower cost” than indemnity insurance. Id. at 46. Its focus is on “cost-
containment,” rates and other features of dental insurance, and targets its
promotional materials to employers and other buyers of insurance. Id. at 15-17, 20-
101, 253-257. References to and listings of “dental providers” are limited to
identifying those participating in Petitioner’s networks or insurance plans.
There is simply no evidence that Petitioner itself provides any type of medical
care, or for that matter dental care. Instead, it is in the insurance business, while
Respondent provides medical care. The qualifications and skills required of the
providers of these services and the needs of the relevant consumers are so different
that there is no basis for finding a relationship between the parties’ services.
Petitioner’s argument that there is a relationship is in some ways reminiscent of
arguments made in North Face Apparel. There, we rejected the opposer’s argument
that its clothing is related to bicycle parts merely because the clothing could be worn
while riding a bicycle. We also rejected the argument that consumers would assume
that opposer offers bicycle parts merely because it sponsors bicycle races. North Face
Apparel, 116 USPQ2d at 1230-31. We also found that consumers would not perceive

4 Respondent introduced evidence that “administrative services only” or “ASO” means “[a]
group health self-insurance program for large employers wherein the employer assumes
responsibility for all the risk, purchasing only administrative services from the insurer.” 13
TTABVue 71.
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opposer as the source of vehicles, merely because its mark was placed on a
recreational vehicle making a promotional road trip, which opposer featured in a
promotional blog. Id. at 1231. Similarly, in this case there is little likelihood that
consumers would perceive Respondent as a provider of dental health insurance or
related services merely because it provides medical services.
In fact, Petitioner introduced evidence about Respondent’s use of its mark which
makes this clear. Specifically:

11 TTABVue 248. This brochure references “physicians” and “primary care
providers,” and lists a number of doctors, but there are no dentists or dental services
identified. Similarly:
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Id. at 249. This sign references “physician” offices, centers for “surgery” and “digestive
health” and medical specialties such as “orthopedics” and “gastroenterology,” but not
dentists or dental care. This factor weighs heavily against a finding of likelihood of
confusion.
As for channels of trade, there is also no evidence of any overlap. To the contrary,
according to Dr. Safran, Petitioner’s customers seek to provide dental insurance to
others, and include “private employers,” “unions and governmental employers,”
“schools and health exchanges” and “health maintenance organizations.” 11
TTABVue 6. By contrast, Respondent’s customers “are patients in need of medical
care ….” 14 TTABVue 5. The difference in trade channels is in some ways reminiscent
of In re HerbalScience Group. There, the applicant sought to register MINDPOWER
for botanical, plant, chemical and herbal extracts for use in manufacturing
pharmaceuticals and similar products, but registration was refused based on a
registration of MIND POWER RX for dietary and nutritional supplements. Despite
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evidence that the goods were related, we reversed the refusal to register because of
differences between the channels of trade – the applicant’s goods were by definition
intended for manufacturers, while the registrant’s were intended for ordinary
consumers who would purchase them in drug and health food stores. In re
HerbalScience Group, 96 USPQ2d at 1324. Similarly, here, Petitioner’s services are
by definition intended for those who provide dental insurance for others, or for
individuals who need dental insurance, while Respondent’s medical services target
ordinary patients seeking treatment for or other help with medical issues:

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14 TTABVue 12.5 Given these differences, and the absence of any evidence of a
relationship between the channels of trade, this factor also weighs against a finding
of likelihood of confusion.6
The Strength of Petitioner’s Mark
Respondent introduced evidence that several third-parties own registrations for
marks including the term HEALTHPLEX7:
HEALTHPLEX (Stylized), Reg. No. 2377607, for “health
and sports club services.”

, with SPORTS CLUB disclaimed, Reg. No.
3067187, for “sports club services” and “health spa services,
namely, health and wellness of the body and spirit offered
at a sports club.”8

5 Even if we were to agree with Petitioner that there is a relationship between “medical
services” and Petitioner’s services, here, as in HerbalScience Group, the differences between
the channels of trade are sufficient by themselves for a finding of no likelihood of confusion.
6 Petitioner’s argument that the “normal” channels of trade for its services are the same as
those for Respondent’s services is not well taken, given the differences between dental
insurance services and medical services and the purchasers thereof. While we acknowledge
that purchasers of dental health insurance services, like everyone else, will likely desire or
require “medical services” from time to time, that is not enough to establish that the services
or channels of trade are related. Coach Services. Inc. v. Triumph Learning LLC, 668 F.3d
1356, 101 USPQ2d 1713, 1723 (Fed. Cir. 2012); Sports Authority Michigan Inc. v. PC
Authority Inc., 63 USPQ2d 1782, 1794 (TTAB 2002) (“We think it a fit subject for judicial
notice that purchasers of computer hardware and software also would be purchasers of, at
least, footwear and apparel, and perhaps sporting goods and equipment. There is nothing in
the record, however, to suggest that merely because the same consumer may purchase these
items, such consumer would consider the goods as likely to emanate from the same source or
have the same sponsorship.”). The question we are faced with here is whether consumers
“would consider the goods to emanate from the same source.” Coach Services, 101 USPQ2d
at 1723; 7-Eleven, Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007). The evidence
establishes that they would not.
7 We have not included several cancelled registrations.
8 Registration Nos. 2377607 and 3067187 have common ownership.
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HEALTHPLEX SOLUTIONS, in standard characters with
SOLUTIONS disclaimed, Reg. No. 3187061, for “business
consulting, management, planning and supervision.”

HEALTHPLEX, Reg. No. 1984274, for “real estate
management services” and “real estate development
services.”

13 TTABVue 19-66. However, these registrations do not establish that Petitioner’s
mark is weak, because the marks are not registered for Petitioner’s services,
Respondent’s services, or related services, and in any event there are only three
owners of the four registrations. This factor is neutral.
Balancing the Factors/Conclusion
While the marks are identical, there is no evidence of a relationship between
Petitioner’s and Respondent’s services, or their channels of trade. These factors are
dispositive. Han Beauty, 57 USPQ2d at 1560; North Face Apparel Corp., 116 USPQ2d
at 1233; Morgan Creek Productions, 91 USPQ2d at 1143.

Decision: The petition to cancel is dismissed.