IHC Health Services, Inc. and Inter-mountain Health Care, Inc.v.Gupta Institute for Pain Wellness & Rehabilitation

Trademark Trial and Appeal Board

Mar 18, 2019

No. 92066704 (T.T.A.B. Mar. 18, 2019)

WINTER
March 18, 2019

Cancellation No. 92066704

IHC Health Services, Inc. and Intermountain
Health Care, Inc.

v.
Gupta Institute for Pain Wellness &
Rehabilitation

Before Bergsman, Kuczma, and Greenbaum,
Administrative Trademark Judges.

By the Board:

Background
Gupta Institute for Pain Wellness & Rehabilitation (“Respondent”) owns
trademark Registration No. 5143362 for the standard character mark PAIN
INSTACARE for “medical clinic services.”1 IHC Health Services, Inc. and
Intermountain Health Care, Inc. (“Petitioners” or, respectively, “IHC” or
“Intermountain”) seek to cancel Respondent’s registration on the ground of likelihood
of confusion. In support of their claim, Petitioners allege that IHC is a wholly-owned
subsidiary of Intermountain; that Petitioners provide and have provided since as

1 U.S. Reg. No. 5143362, issued February 14, 2017. The exclusive right to use the term “PAIN”
is disclaimed.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
General Email: TTABInfo@uspto.gov
THIS ORDER IS NOT A
PRECEDENT OF THE
TTAB
Cancellation No. 92066704

2
early as April 30, 1985 medical services through hospitals, surgery centers, doctors,
clinics, and homecare and hospice providers in connection with the mark
INSTACARE; that IHC is the owner of application Serial No. 87298951 for the
standard character mark INSTACARE for use with “hospital, medical and health
care services”;2 that Intermountain is the owner of trademark registration no.
3865324 for the standard character mark INTERMOUNTAIN INSTACARE for use
with “hospital, medical and health care services”;3 that the earliest date of first use
that Respondent can claim with respect to the mark PAIN INSTACARE is April 8,
2016, the filing date of the underlying application of the involved registration; that
Petitioners’ first use of the INSTACARE mark is prior to any priority date upon which
Respondent can rely; that the USPTO has refused registration of IHC’s INSTACARE
mark on the ground of likelihood of confusion with Respondent’s mark; and that if, as
the USPTO contends, Petitioners’ INSTACARE mark so resembles Registrant’s
PAIN INSTACARE mark such that when they are used with the parties’ respective
services, it is likely that a potential consumer would be confused, mistaken, or
deceived as to the source of the parties’ respective services, then because Petitioners’
first use date of the INSTACARE mark is prior to any priority date on which

2 Application Serial No. 87298951, filed January 12, 2017, based on Petitioner’s claim of use
in commerce under Section 1(a) of the Trademark Act, claiming April 30, 1985 as the dates
of first use and first use in commerce.

3 U.S. Reg. No. 3865324, issued October 19, 2010, under Section 2(f) of the Trademark Act in
part as to the term “INTERMOUNTAIN”; claiming January 1, 1984, as its dates of use;
Sections 8 & 15 Affidavits accepted and acknowledged.

Cancellation No. 92066704

3
Respondent can rely, Petitioners are entitled to cancellation of Respondent’s mark.
Respondent denies Petitioners’ salient allegations.4
This case now comes up for consideration of Petitioners’ fully briefed motion (filed
November 2, 2018) for summary judgment on their claim of likelihood of confusion
based on their rights accrued at common law in the mark INSTACARE.
We have considered the parties’ briefs on the contested motion, but do not discuss
all of the arguments and submissions. Guess? IP Holder LP v. Knowluxe LLC, 116
USPQ2d 2018, 2019 (TTAB 2015) (“While the Board carefully considers all
arguments made by the parties in connection with a motion, there is no requirement
that the Board’s order repeat or discuss irrelevant arguments.”).
Petitioners’ Motion for Summary Judgment
• Legal Standard
Summary judgment is appropriate where the movant shows the absence of any
genuine dispute as to any material fact, and that it is entitled to judgment as a matter
of law. See Fed. R. Civ. P. 56(a); see also Celotex Corp. v. Catrett, 477 U.S. 317, 323-
324 (1986); Sweats Fashions, Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560,
4 USPQ2d 1793, 1796 (Fed. Cir. 1987); Freki Corp. N.V. v. Pinnacle Entm’t, Inc., 126
USPQ2d 1697, 1700 (TTAB 2018). “A party asserting that a fact cannot be or is
genuinely disputed must support the assertion by (A) citing to particular parts of
materials in the record …; or (B) showing that the materials cited do not establish
the absence or presence of a genuine dispute, or that an adverse party cannot produce

4 Respondent’s affirmative defenses were stricken by the Board in its order mailed
February 16, 2018 (11 TTABVUE).
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admissible evidence to support the fact.” Fed. R. Civ. P. 56(c)(1). A factual dispute is
genuine if, on the evidence of record, a reasonable fact finder could resolve the matter
in favor of the non-movant. Opryland USA Inc. v. Great Am. Music Show Inc.,
970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992); Olde Tyme Foods, Inc. v.
Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992).
In deciding a motion for summary judgment, the Board may not resolve any
factual dispute; it may only determine whether a genuine dispute of material fact
exists. See, e.g., Meyers v. Brooks Shoe Inc., 912 F.2d 1459, 16 USPQ2d 1055, 1056
(Fed. Cir. 1990) (“If there is a real dispute about a material fact or factual inference,
summary judgment is inappropriate; the factual dispute should be reserved for
trial.”). Specifically, when deciding a motion for summary judgment, the Board may
not weigh the evidence in an area of disputed fact or make credibility determinations.
See, e.g., Lemelson v. TRW, Inc., 760 F.2d 1254, 225 USPQ 697, 701 (Fed. Cir. 1983)
(court cannot engage in fact-finding on a motion for summary judgment); Metro. Life
Ins. Co. v. Bancorp Servs. LLC, 527 F.3d 1330, 87 USPQ2d 1140, 1146 (Fed. Cir. 2008)
(when resolving conflicting accounts requires ruling on the weight and credibility of
the evidence, summary judgment not available). Further, the non-movant must be
given the benefit of all reasonable doubt as to whether a genuine dispute as to
material facts exists, and the evidentiary record on summary judgment and all
inferences to be drawn from the undisputed facts must be viewed in the light most
favorable to the non-movant. See Opryland, 23 USPQ2d at 1472.
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Additionally, when the movant has supported its motion with sufficient evidence
that, if unopposed, indicates there is no genuine dispute of material fact and that the
moving party is entitled to judgment as a matter of law, the burden then shifts to the
nonmoving party to demonstrate the existence of a genuine dispute of material fact
to be resolved at trial. Enbridge, Inc. v. Excelerate Energy LP, 92 USPQ2d 1537, 1540
(TTAB 2009). Specifically, “[t]he party opposing the motion must point to an
evidentiary conflict created on the record at least by a counter statement of a fact or
facts set forth in detail in an affidavit by a knowledgeable affiant.” Barmag Barmer
Maschinenfabrik AG v. Murata Machinery, Ltd., 731 F.3d 831, 221 USPQ 561, 564
(Fed. Cir. 1984).
Petitioners seek summary judgment with respect to priority and likelihood of
confusion in connection with the common law use of their mark INSTACARE.
Therefore, Petitioners must demonstrate that there is no genuine dispute of material
fact that: 1) they have standing to bring this proceeding; 2) they have priority; and
that 3) contemporaneous use of the parties’ respective marks on or in connection with
their respective services would be likely to cause confusion, mistake or to deceive
consumers. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844
(Fed. Cir. 2000); Life Zone Inc. v. Middleman Grp. Inc., 87 USPQ2d 1953, 1959 (TTAB
2008); Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., 60 USPQ2d 1733, 1735
(TTAB 2001).
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• Standing
Standing is a threshold issue that must be proven by a 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), cert. denied, 135 S. Ct. 1401 (2015); Ritchie v.
Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999); see also Sinclair
Oil Corp. v. Kendrick, 85 USPQ2d 1032, 1037 (TTAB 2007) (at summary judgment,
opposer must not only establish a valid ground, but also must prove its standing).
The purpose of the standing requirement, which is directed solely to the interest of
the plaintiff, is to prevent litigation when there is no real controversy between the
parties. Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982).
Petitioners have submitted the declaration of Chris Thornock, Petitioner
Intermountain’s Vice President and Chief Operating Officer and Compliance Officer,
who testifies that that “Intermountain” (comprised of both Petitioners IHC and
Intermountain) has continuously used the mark INSTACARE in commerce with
medical and health care services from at least as early as March 1, 1983 to the present
(Thornock dec., ¶ 5, 12 TTABVUE 27). Additionally, Petitioner IHC has shown that
its trademark application for registration of the trademark INSTACARE was denied
registration under Section 2(d) of the Trademark Act on the basis of Respondent’s
registration (declaration of Joshua G. Gigger, Petitioners’ counsel, ¶¶ 3 and 5, Exh. 1
and 3; 12 TTABVUE 129, 133 and 152). Moreover, Respondent does not dispute that
Petitioners have standing to bring their petition for cancellation. In view of the
Cancellation No. 92066704

7
foregoing, there is no genuine dispute as to the material fact that Petitioners have
standing to bring this cancellation. See ShutEmDown Sports Inc. v. Lacy, 102
USPQ2d 1036, 1041 (TTAB 2012) (evidence of record showing petitioner’s pending
application refused registration based on respondent’s registration); Giersch v.
Scripps Networks Inc., 90 USPQ2d 1020, 1022 (TTAB 2009) (common-law use
sufficient to establish standing).
• Priority

With respect to priority on a likelihood of confusion claim brought under
Trademark Act Section 2(d), a party must show that there is no genuine dispute that,
vis-à-vis the other party, it owns “a mark or trade name previously used in the United
States … and not abandoned….” Trademark Act Section 2, 15 U.S.C. § 1052. A party
may establish its own prior proprietary rights in a mark through ownership of a prior
registration, actual use or through use analogous to trademark use, such as use in
advertising brochures, trade publications, catalogues, newspaper advertisements and
Internet websites which create a public awareness of the designation as a trademark
identifying the party as a source. See Trademark Act Sections 2(d) and 45, 15 U.S.C.
§§ 1052(d) and 1127; see also T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1372, 37
USPQ2d 1879 (Fed. Cir. 1996), vacating Pactel Teletrac v. T.A.B. Systems, 32
USPQ2d 1668 (TTAB 1994).
In order for Petitioners to prevail on their Section 2(d) claim, they first must prove
that there is no genuine dispute of material fact regarding their prior proprietary
rights in a distinctive mark and that their interest in that mark was obtained prior
Cancellation No. 92066704

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to either the filing date of Respondent’s application for registration or Respondent’s
proven date of first use, whichever is earlier. Herbko Int’l Inc. v. Kappa Books Inc.,
64 USPQ2d 1375, 1378 (Fed. Cir. 2002); Otto Roth & Co. v. Universal Foods Corp.,
640 F.2d 1317, 1320, 209 USPQ 40, 43 (CCPA 1981). Petitioners may attempt to
establish prior proprietary rights through prior trademark use, prior use as a trade
name, or prior use analogous to trademark use. Id.
Turning first to Petitioners’ use of the INSTACARE mark, Petitioners submitted
the following materials to support their priority:
(i) The declaration of Mr. Thornock, discussed supra, in which he states that
“Intermountain” (comprised of both Petitioners IHC and Intermountain) has
continuously used the mark INSTACARE in commerce with medical and health
care services from at least as early as March 1, 1983 to the present (Thornock
dec., ¶ 5, 12 TTABVUE 27);
(ii) Exhibits D and E to Mr. Thornock’s declaration, namely, printouts from
the Internet Archive Wayback Machine and from Petitioners’ website, which
show Petitioners’ promotion of INSTACARE urgent care clinics since at least as
early as July 1, 1997 (Thornock dec., ¶¶ 11 and 12; 12 TTABVUE 28, 59-66); and
(iii) Exhibit 4 to the Gigger declaration, namely, Respondent’s answers to
Petitioners’ amended first requests for admission (Gigger dec. ¶ 6 and Exh. 4; 12
TTABVUE 129, 166), in which Respondent admits at nos. 57 and 58 that it did
not use its mark with its registered services before January 1, 1984 and May 19,
2009, respectively.
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Respondent, in its answer and responsive brief, has not questioned the
distinctiveness of Petitioners’ INSTACARE mark. Further, there is nothing in the
record to suggest that Petitioners’ INSTACARE mark is merely descriptive or
otherwise lacking in distinctiveness as used in connection with Petitioners’ services.
We therefore find that there is no genuine dispute of material fact that the mark
INSTACARE is distinctive. See Wet Seal Inc. v. FD Mgmt., Inc., 82 USPQ2d 1629,
1634 (TTAB 2007) (absent argument or evidence to the contrary, opposer's mark
deemed distinctive); see also Otto Roth, 209 USPQ at 44 (appellee did not question
the inherent distinctiveness of appellant’s marks, and therefore the court assumed it
functioned as a trademark); Giersch, 90 USPQ2d at 1023 (“Respondent has not raised
an issue as to the distinctiveness of petitioner’s mark or otherwise put petitioner on
notice of this defense, and therefore we find that the mark is distinctive.”).
As regards Respondent’s mark, PAIN INSTACARE, “[i]t is well settled that in
the absence of any evidence of earlier use, the earliest date upon which respondent
may rely is the filing date of the underlying application that matured into the subject
registration.” Weatherford/Lamb Inc. v. C&J Energy Svcs. Inc., 96 USPQ2d 1834,
1837 (TTAB 2010). The underlying application to the involved registration was filed
on April 8, 2016. See Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1). Respondent
has not submitted any evidence showing a date of first use earlier than Petitioners’
date of first use of their INSTACARE mark, namely, March 1, 1983, and that date
precedes April 8, 2016 by over 33 years. Respondent also admitted in response to
request no. 58 of Petitioners’ amended first request for admissions that it had not
Cancellation No. 92066704

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used its mark with its services before May 19, 2009 (Gigger dec. ¶ 6, 12 TTABVUE
129, 166). Moreover, Respondent did not set forth any argument regarding priority,
nor did it submit any evidence that would show that Petitioners do not have priority
vis-à-vis Respondent’s mark by virtue of the rights Petitioners have accrued in the
INSTACARE mark. In view of the foregoing, we find that there is no genuine dispute
that Petitioners’ have priority of use of the INSTACARE mark.
• Likelihood of Confusion
Likelihood of confusion depends on an analysis of all of the probative facts in
evidence that are relevant to the thirteen factors set forth in In re E. I. du Pont de
Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), and we must deny
summary judgment if there are genuine disputes as to any of these factors which
would be material to a decision on the merits. While the Board must consider each
factor for which it has evidence, the Board may focus its analysis on dispositive
factors. See Han Beauty Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d 1557,
1559 (Fed. Cir. 2001); Olde Tyme Foods, Inc. v. Roundy’s, Inc., 22 USPQ2d at 1544
(only those du Pont factors shown to be material or relevant in the particular case
and about which there is evidence are to be considered); ProMark Brands Inc. v. GFA
Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015). In any likelihood of confusion
analysis, however, two key considerations are the similarities between the marks and
the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976) (“The fundamental
inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential
Cancellation No. 92066704

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characteristics of the goods and differences in the marks.”); see also In re Dixie Rests.
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); Bell’s Brewery, Inc. v.
Innovation Brewing, 125 USPQ2d 1340, 1344-45 (TTAB 2017).
o Similarity of the Marks
With respect to the similarity of the marks, we must compare the parties’ 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, 1692 (Fed. Cir.
2005). Because we must consider the marks in their entireties, our analysis cannot
be predicated on a dissection of the marks into their various components, although
“‘there is nothing improper in stating that, for rational reasons, more or less weight
has been given to a particular feature of a mark, provided the ultimate conclusion
rests on consideration of the marks in their entireties.”’ In re Detroit Athletic Co., 903
F.3d 1297, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (quoting In re Nat’l Data Corp.,
753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985)). The focus is on the perception
and recollection of the average purchaser, who normally retains a general rather than
specific impression of trademarks. See Chemetron Corp. v. Morris Coupling & Clamp
Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106
(TTAB 1975). Because the services at issue are medical services rendered through
hospitals, surgery centers, doctors, clinics, and homecare and hospice providers
(Petitioners) and “medical clinic services” (Respondent), the average purchaser is an
ordinary consumer.
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We find that there is no genuine dispute as to the material fact that the mark
PAIN INSTACARE is highly similar to INSTACARE. Both marks include the
identical distinctive term “INSTACARE.” Moreover, the first term in Respondent’s
mark, “PAIN,” is descriptive and has been disclaimed, and is therefore afforded less
weight. See Nat’l Data., 224 USPQ at 751 (While it is a basic principle that “marks
must be compared in their entireties ... [t]hat a particular feature is descriptive or
generic with respect to the involved goods or services is one commonly accepted
rationale for giving less weight to a portion of a mark.”). To further support the merely
descriptive nature of the term “PAIN” with respect to Respondent’s services,
Petitioners have submitted a printout from www.merriam-webster.com showing that
the term “pain” is defined as a “physical suffering associated with [a] bodily disorder
(such as a disease or an injury)” (Gigger dec. ¶ 14, Exh. 6, 12 TTABVUE 130, 177),
and evidence that Respondent’s services include treating a wide variety of medical
conditions that cause pain (Gigger dec. ¶ 11, Exh. 9, no. 65 of Respondent’s responses
to Petitioners’ second set of requests for admission, 12 TTABVUE 129, 207-250).
Furthermore, adding a term to a registered mark, as in this case, generally does
not obviate the similarity between the compared marks nor does it overcome a
likelihood of confusion under Trademark Act Section 2(d). See In re Chatam Int’l Inc.,
380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (GASPAR’S ALE and JOSE
GASPAR GOLD confusingly similar); Wella Corp, v. California Concept Corp., 558
F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (CALIFORNIA CONCEPT similar to
registered mark CONCEPT); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc.,
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526 F.2d 556, 188 USPQ 105, 106 (CCPA 1975) (BENGAL and BENGAL LANCER
and design confusingly similar). Likewise, even though Respondent’s mark begins
with the term “pain,” the mark still may be found to be confusingly similar to
Petitioners’ INSTACARE mark because both marks incorporate the identical term,
INSTACARE. See, e.g., Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce,
228 USPQ 689 (TTAB 1986), aff’d 1 USPQ2d 1813 (Fed. Cir. 1987).
Respondent argues that Petitioners’ INTERMOUNTAIN INSTACARE mark
evokes a different commercial impression from Respondent’s PAIN INSTACARE
mark. However, this argument is irrelevant because the subject motion only relies on
Petitioners’ INSTACARE mark. Moreover, merely arguing that the PAIN
INSTACARE mark has a different commercial impression from either the
INSTACARE or INTERMOUNTAIN INSTACARE marks without submitting any
evidence to contradict Petitioners’ arguments, has not raised a genuine dispute of
material fact regarding the similarities of the marks at issue. See Barmag Barmer
221 USPQ at 564 (“The party opposing the motion must point to an evidentiary
conflict created on the record at least by a counter statement of a fact or facts set forth
in detail in an affidavit by a knowledgeable affiant. Mere denials or conclusory
statements are insufficient.”). In view of the foregoing, while there is a difference in
the marks, we find that it is insufficient to raise a genuine dispute of material fact as
to the similarity of the marks when they are compared in their entireties.
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o Strength of Petitioners’ INSTACARE mark
Petitioners also argue that their INSTACARE mark is strong and therefore
entitled to a wider scope of protection. Strength may be measured indirectly by the
volume of sales and advertising expenditures in connection with the goods or services
sold under the mark, and other factors such as length of time of use of the mark;
widespread critical assessments; notice by independent sources of the goods or
services identified by the marks; and the general reputation of the goods or services.
See Palm Bay Imps., 73 USPQ2d at 1694; Weider Publ’ns, LLC v. D & D Beauty Care
Co., 109 USPQ2d 1347, 1354 (TTAB 2014), appeal dismissed per stipulation, No.
2014-1461 (Fed. Cir. Oct. 10, 2014).
In support of their assertion that the mark INSTACARE is strong, we note in
particular the following evidence submitted by Petitioners:
(i) IHC’s principal states that the INSTACARE mark has been used since at
least March 1, 1983 through the present (Thornock dec. ¶ 5, 12 TTABVUE 27);
(ii) Petitioners have provided medical and health care services under their
INSTACARE mark to millions of patients, including more than 2.4 million patients
from 2014 to 2017 (Id., ¶ 4, 12 TTABVUE 27);
(iii) Petitioners have spent approximately $126,434 from January 1, 2013
through September 30, 2018, in various types of advertising for their services in
connection with the INSTACARE mark (Id. ¶¶ 8-9, 12 TTABVUE 27);
(iv) Printouts of Petitioners’ internet advertising of their services in connection
with the INSTACARE mark from their website
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intermountainhealcare.org/services/urgent-care/instacare-clinics/ downloaded on
October 24, 2018 (Id. ¶ 12, Exh. E, 12 TTABVUE 28, 61-66).
(v) The term “INSTACARE” was not found at the dictionary sites of merriam-
webster.com/dictionary/instacare or dictionary.com/misspelling?term=instacare on
November 1, 2018 (Gigger dec., ¶¶ 14-15, Exhs. 12 and 13, 12 TTABVUE 129, 590
and 594);
(vi) Petitioners have consistently policed third-party use of their INSTACARE
mark (Thornock dec. ¶ 15, Exhs. H and I, 12 TTABVUE 28, 90-97);
(vii) Third parties have sought licensing arrangements with Petitioners to use
their INSTACARE mark (Id. ¶ 16, 12 TTABVUE 29); and
(viii) Third parties have recognized Intermountain’s use of the INSTACARE
mark in connection with its urgent care clinics (Id. ¶ 17, Exh. L, 12 TTABVUE 29,
108-109).
In view of the foregoing evidence, we find that there is no genuine dispute of
material fact that based on the record as a whole, Petitioner’s mark is appropriately
placed on the strong side of the “spectrum from very strong to very weak.” Joseph
Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733,
1734 (Fed. Cir. 2017) (quoting In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d
1059, 1063 (Fed. Cir. 2003)); Tao Licensing, LLC v. Bender Consulting Ltd., 125
USPQ2d 1043, 1059 (TTAB 2017) (“The commercial strength of Petitioner’s TAO
mark outweighs any conceptual weakness.”).
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o Relatedness of the Parties’ Services
Petitioners have provided copies of USPTO Trademark Electronic Search System
(“TESS”) records which show that 1095 entities own use-based registrations for the
same marks used in connection with both “health care” or “healthcare” and “medical
clinics” services, such as those provided by the parties (Gigger dec. ¶ 13 and Exh. 11;
12 TTABVUE 129, 270-310). In particular, Petitioners have provided printouts of use-
based, third-party registrations from the TESS search, which serve to suggest that
the parties’ services are of a type which may emanate from a single source (12
TTABVUE 311-588). See In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785
(TTAB 1993).
Additionally, Petitioners have submitted a copy of Respondent’s responses to
Petitioners’ requests for admission, wherein Respondent admitted that its services
“are medical services” and that its services include medical services and health care
services, which are Petitioners’ services (Gigger dec. ¶ 6 and Exh. 4, responses 2-4;
12 TTABVUE 129, 160-61). Further, Petitioners provided copies of pages from their
annual reports, as well as printouts of pages from the internet, showing that
Petitioners provide services that include “medical clinic” services (Thornock dec. ¶¶
7, 10-13, Exhs. B, C, D, E and F; 12 TTABVUE 27-28, and, see, e.g., 12 TTABVUE
47, 56, 61, 68, 70, 79, 83-89, 99, and 100). In view of the foregoing, we find that there
is no genuine dispute of material fact that Petitioners’ services encompass
Respondent’s services, thus, the parties’ services are related.
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o Established, likely-to-continue channels of trade and
purchasers to whom sales are made

Respondent argues that there is no likelihood of confusion because the parties
have different customer bases and use different channels of trade. This argument is
not well-taken. Where, as here, Respondent’s registration has no limitation on the
channels of trade in the identification of services, it is presumed that Respondent’s
services move in all normal channels of trade for those services and that they reach
all potential purchasers for those services. See, e.g., Octocom Sys., Inc. v. Houston
Computers Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1788 (Fed. Cir. 1990) (where
application has no restriction on trade channels, it cannot be narrowed by testimony
regarding applicant’s use in fact); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ
937, 939 (Fed. Cir. 1983); see also Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268
(TTAB 2003); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992) (because there
are no limitations as to channels of trade or classes of purchasers in either the
application or the cited registration, it is presumed that the registration and the
application move in all channels of trade normal for those services, and that the
services are available to all classes of purchasers for the listed services). The trade
channels for Respondent’s services therefore are presumed to include, for example,
hospitals, surgery centers, and clinics, which are the same trade channels through
which Petitioners provide their services (Thornock dec. ¶ 3, 12 TTABVUE 27). In view
of the foregoing, we find no genuine dispute of material fact that the parties’ services
and their respective channels of trade are related and that some of the classes of
consumers overlap.
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o Location of the Parties’ Services and Trade Channels
Respondent contends that there is no likelihood of confusion because the parties’
services are provided in very different geographic locations in the United States5 and
are limited to local settings where the physician(s), medical staff, and medical
facilities are located. Respondent’s arguments are not well taken and the cases cited
by Respondent are inapposite. The Board is constrained to evaluate the likelihood of
confusion in terms of potentially nationwide markets when Respondent has a
geographically unrestricted registration. See Giant Food, Inc. v. Nation’s Foodservice,
Inc., 710 F.2d 1565, 218 USPQ 390, 393 (Fed. Cir. 1983) (“Section 7(b) of the
Trademark Act of 1946, 15 U.S.C. §1057(b), creates a presumption that the registrant
has the exclusive right to use its mark throughout the United States. Therefore, the
geographical distance between the present locations of the respective businesses of
the two parties has little relevance in this case.”). In view thereof, even if the parties’
services are marketed and sold in discrete areas of the country, we must consider
whether there would be a likelihood of confusion if the parties were to use their marks
in connection with their respective services in the same area.
o Conditions under which and buyers to whom sales are made,
that is, ‘impulse’ vs. careful, sophisticated purchasing

Respondent also asserts that there is no likelihood of confusion because the
parties’ customers are sophisticated. However, Respondent has not submitted any
evidence to support the contention that the parties’ customers are sophisticated, and

5 In the declaration of Dr. Rajan Gupta, he states that Respondent’s U.S. operations are
located in Cherry Hill, New Jersey and Philadelphia, Pennsylvania (Gupta dec., ¶ 4, 14
TTABVUE 15).
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19
as discussed supra, mere argument, without supporting evidence, is insufficient to
create a genuine dispute regarding a material fact. See Barmag Barmer, 221 USPQ
at 564. Moreover, even if such evidence had been submitted, we could not consider it
because we may not consider extrinsic evidence to restrict the classes of consumers
in the absence of any such restrictions in the identification of services in Respondent’s
registration. See In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986)
(evidence that relevant goods are expensive wines sold to discriminating purchasers
must be disregarded given the absence of any such restrictions in the application or
registration); see also Stawski v. Lawson, 129 USPQ2d 1036, 1055 (TTAB 2018);
ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1243 (TTAB 2015).
o Lack of Bad Faith
Respondent asserts that there is no evidence of bad faith in adopting its mark. As
regards bad faith, “[w]hen there is evidence of [a party’s] intent to adopt a mark that
suggests to purchasers a successful mark already in use by another, the Board may,
and ought to, take into account that intent when resolving the issue of likelihood of
confusion when that issue is not free from doubt.” First Int’l Serv. Corp. v. Chuckles
Inc., 5 USPQ2d 1628, 1633 (TTAB 1988). Thus, if a plaintiff demonstrates bad faith
on the part of the defending party, then such a showing can be used to find likelihood
of confusion. The contrary is not true, that is, the fact that Petitioners have not shown
bad faith on the part of Respondent does not raise a genuine dispute for trial. Lack of
intent to trade on or copy another’s mark will not prevent a finding of likelihood of
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20
confusion if a likelihood of confusion otherwise exists. See J & J Snack Foods Corp.
v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991).
o No Actual Confusion
Respondent also points out that there is no evidence of actual confusion. The
absence of any reported instances of confusion is meaningful only if the record
indicates appreciable and continuous use by Respondent of its mark for a significant
period of time in the same markets as those served by Petitioners under their mark.
Citigroup Inc. v. Capital City Bank Grp., Inc., 94 USPQ2d 1645, 1660 (TTAB 2010),
aff’d, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011); Gillette Canada Inc. v. Ranir
Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). In other words, for the absence of actual
confusion to be probative, there must have been a reasonable opportunity for
confusion to have occurred. Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283,
1287 (TTAB 2007) (the probative value of the absence of actual confusion depends
upon there being a significant opportunity for actual confusion to have occurred); Red
Carpet Corp. v. Johnstown American Enterprises Inc., 7 USPQ2d 1404, 1406-1407
(TTAB 1988); Central Soya Co., Inc. v. North American Plant Breeders, 212 USPQ 37,
48 (TTAB 1981) (“the absence of actual confusion over a reasonable period of time
might well suggest that the likelihood of confusion is only a remote possibility with
little probability of occurring”).
In this instance, the alleged lack of actual confusion is not probative because of
the limited period of time in which the parties’ respective marks were in use
concurrently, i.e., as of the filing date of the summary judgment motion, less than 2½
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21
years. Additionally, there is no evidence of record showing that the parties have
provided their services in the same markets in connection with their respective
marks. As noted above, Respondent contends that the parties’ services are provided
in very different geographic locations in the United States. In view of the foregoing,
the lack of evidence of actual confusion carries little weight and does not raise a
genuine dispute for trial. See J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144
USPQ 435, 438 (CCPA 1965). In any event, the issue before us is the likelihood of
confusion, not actual confusion. Herbko Int'l Inc., 64 USPQ2d at 1380 (actual
confusion not required).
Finally, we note that the record contains no evidence or arguments regarding a
genuine dispute of material fact as to any other factors bearing on the issue of
likelihood of confusion, as set forth in du Pont.
Conclusion
Based on the foregoing, we find that Petitioners have met their burden of showing
that there is no genuine dispute of material fact with respect to their standing and
their likelihood of confusion claim, that Respondent has failed to submit any evidence
in support of its contention that a genuine dispute of material fact remains to be
resolved at trial, and that Petitioners are entitled to judgment as a matter of law on
their claim of likelihood of confusion. Accordingly, Petitioners’ motion for summary
judgment is GRANTED and their petition to cancel U.S. Reg. No. 5143362 is
GRANTED. The involved registration will be cancelled in due course.
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