iMedica Corporationv.Medica Health PlansMedica Health Plans v. iMedica Corporation

Trademark Trial and Appeal Board

Jun 7, 2007

No. 92043288 (T.T.A.B. Jun. 7, 2007)

Oral Hearing Mailed:
July 25, 2006 June 7, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

iMedica Corporation

v.

Medica Health Plans
_____

Opposition No. 91159617
__________________________

Medica Health Plans

v.

iMedica Corporation
_____

Cancellation No. 92043288
_____

Eric D. Paulsrud of Leonard, Street and Deinard for Medica
Health Plans.

Mark R. Leonard of Davis & Leonard, LLP for Imedica
Corporation.
______

Before Quinn, Holtzman and Zervas, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

This consolidated case involves (i) an opposition
proceeding brought by iMedica Corporation (“iMedica”)
THIS OPINION IS
NOT A PRECEDENT
OF THE T.T.A.B.
Opp. No. 91159617 and Canc. No. 92043288
2
against the registration of application Ser. No. 76370729
(“the ‘729 application”) filed by Medica Health Plans
(“MHP”); and (ii) a cancellation proceeding brought by MHP
against the continued registration of Registration
No. 2834742 (“the ‘742 registration”) owned by iMedica.
In the opposition, iMedica has opposed registration of
the mark IMEDICA (in typed form) in the ‘729 application,
filed February 13, 2002 under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), for the following services, as
amended:
“physician, hospital, clinic and pharmacy referral
services provided via a global computer network”
in International Class 35;

“providing on-line messaging among computer users
concerning health and medical information;
transmission of secure messaging between doctors,
nurses, medical staff and patients and other
computer users; providing on-line transmission of
medical and insurance records” in International
Class 38; and

“providing a web site on a global computer network
featuring medical, drug and health information,
namely, diagnostic advice, symptoms, conditions,
treatment, prevention, medical news, tips and
advice on health topics, health risks, nutrition
and immunization; health care in the nature of a
health maintenance organization via a global
computer network” in International Class 44.1

1 iMedica has not opposed the International Class 36 services in
the ‘729 application, i.e., “administration of prepaid healthcare
plans, healthcare plan administration services, underwriting
healthcare plan[s]; underwriting insurance for prepaid
healthcare.”

Opp. No. 91159617 and Canc. No. 92043288
3
In the notice of opposition, iMedica claims ownership of
application Serial No. 75774749 (“the ‘749 application”) for
the mark IMEDICA (in typed form), which ultimately
registered as the ‘742 registration and which is the subject
of MHP’s petition to cancel.2 iMedica filed the ‘749
application on August 13, 1999, and the mark registered on
April 20, 2004 for the following services:
“online ordering of medical supplies; providing
information in the field of medical office
management via a global computer network;
providing medical office administrative records
via a global computer network” in International
Class 35; and

“providing information in the fields of medicine,
clinical practice and patient care to others via a
global computer network; providing medical and
patient records to others via a global computer
network” in International Class 42.

The registration claims first use anywhere and first use in
commerce on February 8, 2001 for the services in both
International Classes. iMedica further asserts in the
notice of opposition that it has used the mark IMEDICA in
interstate commerce at least as early as February 15, 2000,
which is prior to the filing date of MHP’s application; and
that MHP’s use and registration of its mark is likely to
cause confusion, mistake or deception that MHP’s services
are those of iMedica or are otherwise endorsed, sponsored or
approved by iMedica under Sections 2(a) and 2(d) of the

2 We deem the notice of opposition to have been amended to allege
the ‘742 registration.
Opp. No. 91159617 and Canc. No. 92043288
4
Trademark Act, 15 U.S.C. §§ 1052(a) and 1052(d). MHP has
filed an answer admitting that the parties’ marks are
identical, answer at ¶ 6, but denying other salient
allegations of the notice of opposition.
In the cancellation proceeding in which MHP seeks to
cancel the ‘742 registration for IMEDICA, MHP has asserted
ownership of numerous registrations and applications
consisting of, or containing the term MEDICA for various
services; that it has a family of MEDICA marks; that it has
prior use since at least as early as February 12, 1991; and
that confusion is likely to be caused by iMedica’s use of
its registered mark.3 MHP filed status and title copies of
various registrations with its petition to cancel. iMedica,
in its answer, has denied the salient allegations of the
petition to cancel, but has admitted that the trade channels
of MHP’s IMEDICA mark which is the subject of the opposition
are identical to those of its mark.

3 Because neither party has briefed the Section 2(a) claim, the
Section 2(a) claim is moot.
MHP also alleged dilution under the Federal Dilution Act, 15
U.S.C. § 1125(c), in the petition to cancel, but withdrew its
claim at p. 7 of its first brief. We hence give MHP’s dilution
claim no further consideration.
Further, MHP has alleged that iMedica filed false requests for
extension of time to file a statement of use on five separate
occasions. Petition to cancel at ¶ 14. To the extent that MHP
is alleging fraud, because the parties have not briefed MHP’s
fraud claim, we consider it to have been waived by MHP.

Opp. No. 91159617 and Canc. No. 92043288
5
Both parties have filed briefs in both the opposition
and the cancellation. The Board held an oral hearing on
July 25, 2006.
Background
MHP is both an insurance company and a managed care
organization that does business in Minnesota, western
Wisconsin, North Dakota and South Dakota. Its customer
membership is approximately 1.2 million members and it has
about 50 percent market share in the Minneapolis/St. Paul
metropolitan area.
iMedica is a technology company that provides
electronic record management products and services for
physicians to better manage their practices. iMedica’s sole
product is PhysicianSuite, comprised of software and
hardware that allows physicians to work more efficiently by
allowing patient records to be prepared and managed
electronically instead of with pen and paper. With
PhysicianSuite, medical staff within an office may
communicate via instant messaging and allow doctors to
access information via the Internet and review referral
letters. iMedica has had fewer than 25 customers and those
customers are located in several states in the United States
including Minnesota, but not Wisconsin, Iowa and North and
South Dakota.
Opp. No. 91159617 and Canc. No. 92043288
6
The Record
In addition to the pleadings and the status and title
copies of the pleaded registrations submitted with the
petition to cancel, the record contains MHP’s first and
second notices of reliance which include, inter alia,
iMedica’s discovery responses; and iMedica’s first notice of
reliance which includes, inter alia, MHP’s discovery
responses. The record also contains the testimony, with
exhibits, of (i) iMedica’s two witnesses, namely, Dr.
Charles Koo, iMedica’s founder, former president and CEO,
and current chief technology officer; and Dr. Michael
Sullivan of Freeman Sullivan and Company, iMedica’s expert
witness; and (ii) MHP’s three witnesses, namely, John A.
Bunge, president of Legal Market Research, Inc., MHP’s
expert witness; Robert Longendyke, MHP’s senior vice
president of marketing and communications; and Scott Booher,
MHP’s chief information officer (“CIO”) and senior vice-
president. Additionally, the parties have stipulated to the
admission of certain evidence, namely, TARR copies of
certain registrations and an advertisement for iMedica’s
services.
Preliminary Matters
Motion to Amend Notice of Opposition
On August 10, 2005, the Board denied iMedica’s
contested motion (filed May 23, 2005) to amend its notice of
Opp. No. 91159617 and Canc. No. 92043288
7
opposition to add a claim of no bona fide intent to use
MHP’s mark in commerce to the extent that the motion seeks
relief under Fed. R. Civ. P. 15(a), but deferred
consideration of the motion to the extent that it seeks
relief under Fed. R. Civ. P. 15(b). Approximately three
months after the Board’s order, i.e., on November 1, 2005,
MHP questioned its witness Mr. Booher in his testimonial
deposition regarding MHP’s bona fide intent to use the mark
in commerce, asking among other questions “… at the time the
IMEDICA trademark application was filed on February 13,
2002, did Medica Health Plans have a bona fide intent to use
the mark in commerce in the United States …?” Booher dep.
at p. 12. In view of MHP’s questioning of Mr. Booher, which
occurred after the Board’s August 10, 2005 order, we find
that the issue of no bona fide intent to use the mark in
commerce was tried by the implied consent of the parties.
We accordingly grant iMedica’s motion to amend and consider
the notice of opposition amended to include a claim of no
bona fide intent to use the mark in commerce.
Evidentiary objections
Both parties have raised objections to some of the
evidence submitted by the other party. Each objection is
discussed below.
1. MHP objects to iMedica’s attempted “correction” of
Dr. Koo’s testimony. Dr. Koo testified as follows:
Opp. No. 91159617 and Canc. No. 92043288
8
Q. Okay, sitting here today, do you know if there, in
your opinion, would be any confusion if Medical Health
Plans was to use the name iMedica as part of their
business?

Mr. Leonard: Object to the extent that it calls for a
legal conclusion. You can answer, Charlie.

The Witness: No.

Mr. Paulsrud: Q. You don’t have any opinion?

A. No, I don’t think it causes any confusion.

Koo dep. at pp. 59-60. iMedica has filed a “correction
sheet” to the deposition transcript in which Mr. Koo sought
to change his answer to the first question above from “no”
to “yes” and the second question from “No, I don’t” to “Yes,
I do.” The Board does not permit any changes to a testimony
deposition which are substantive in nature and which, in
effect, changes the testimony after the fact. See Marshall
Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321 (TTAB
1992), citing Cadence Industries Corp. v. Kerr, 225 USPQ 331
(TTAB 1985); Entex Industries, Inc. v. Milton Bradley Co.,
213 USPQ 1116 (TTAB 1982). Because iMedica’s proposed
changes are substantive, MHP’s objection is well taken and
is sustained. Dr. Koo’s testimony remains as he originally
stated in his testimonial deposition.
2. iMedica has objected under Fed. R. Evid. 602 to
Mr. Booher’s testimony on the ground that he does not have
personal knowledge of the subject matter of his testimony as
it concerns MHP’s contention that it has a bona fide
Opp. No. 91159617 and Canc. No. 92043288
9
intention to use IMEDICA in commerce; and that “the
testimony improperly calls for a legal conclusion.”
iMedica’s opposition brief at p. 7. According to iMedica,
Mr. Booher testified that he was not responsible for the
decision to file an application and is not aware of the
status of MHP’s trademark. Booher dep. at pp. 27, 28 and
33. However, Mr. Longendyke testified that the ultimate
decision to adopt IMEDICA as a trademark was made by a team
consisting primarily of Mr. Longendyke and the CIO.
Longendyke dep. at p. 37. Mr. Booher testified that he was
the CIO; that he was involved, although “on the periphery”;
and further that he “was part of that decision [but] not the
ultimate decisionmaker.” Booher dep. at pp. 27 and 33. In
view of this testimony, we find that iMedica’s objection on
the basis that Mr. Booher did not have personal knowledge is
not well taken and overrule its objection on this basis.
With respect to iMedica’s objection that the
questioning of Mr. Booher was conclusory in that Mr. Booher
merely repeated “Yes, we do” in response to leading
questions on bona fide intent, and that the questions asked
for a legal conclusion, we overrule these objections. We
construe the questions as asking “did MHP intend to use the
mark in commerce when it filed its application?” Also,
iMedica’s attorney only objected to one of such questions at
Opp. No. 91159617 and Canc. No. 92043288
10
trial, and did not object at all to the leading nature of
the questions during trial.
However, mindful of iMedica’s objections, we give Mr.
Booher’s testimony the weight it is due on the question of
MHP’s bona fide intent to use IMEDICA in commerce.
3. iMedica objects to Mr. Bunge’s expert report
(Exhibit A to Mr. Bunge’s deposition) involving a likelihood
of confusion survey based on the Eveready protocol that Mr.
Bunge conducted and his opinion testimony regarding the
survey. iMedica maintains that the survey is unreliable and
inadmissible and that Mr. Bunge’s testimony fails to meet
the standards required by Fed. R. Evid. 702. In the survey,
Mr. Bunge identified the relevant universe for his survey as
“medical professionals in medical offices who are
responsible for making decisions on which medical services
to purchase for their practices,” and contacted all 917
physician offices in the Minneapolis/St. Paul, Minnesota
area. Fifty-seven respondents participated in his survey.
They were shown “a packet of two advertising materials for
iMedica Corporation, obtained from iMedica’s internet web
site, (a two page, 4-color piece titled iMedica
PhysicianSuite® describing iMedica Corporation and an
8 page, color piece that describes PhysicianSuite) ….”
Exhibit A to Bunge dep. at p. 2. Eight respondents, or
about 14 percent, indicated “that the company that puts out
Opp. No. 91159617 and Canc. No. 92043288
11
those products or services also puts out insurance products,
or that the company that puts out those products or services
is associated with Medica Health Plans or that the company
was authorized by Medica Health Plans to put out the
products or services.” Id.
We find that the small number of survey participants,
i.e., slightly greater than six percent, raises a question
as to the overall validity of the survey results. Mr. Bunge
has acknowledged that the number of participants was small.
However, MHP maintains that the survey is proper because Mr.
Bunge took the effort to verify that the sample size was
representative of the population surveyed.4 According to
his testimony, the respondents represented sixteen different
medical fields; and Mr. Bunge had “no reason to believe that
any other specialty would perceive these issues any
differently than those we surveyed.” Bunge dep. at p. 24.
For this reason, we do not find that the survey has no
probative value in view of the small number of survey
participants; rather, we find that it is not entitled to
great weight. See R. Leighton, Using Daubert-Kumho
Gatekeeping to Admit and Exclude Surveys in Lanham Act

4 According to Dr. Sullivan, the guidelines set forth at p. 245
in the Federal Judicial Center’s Reference Manual on Scientific
Evidence (2d ed. 2000) recommends that researchers “describe the
actions they took to attempt to verify that the completed sample
was representative of the population under study” if response
rates are lower that 90 percent. Sullivan report at unnumbered
p. 3.
Opp. No. 91159617 and Canc. No. 92043288
12
Advertising and Trademark Cases, 92 TMR 743, 777 (200) (“In
the end, however, there is no magic minimum number of
respondents that will make a sample per se reliable with
respect to any particular survey. Sample sizes as low as 32
respondents have been found to have some probity, but not
‘great weight.’”)
We also find that the survey results are questionable
because the survey did not fairly sample the universe of
possible respondents and is biased in MHP’s favor. See 3A
Callman on Unfair Competition, Trademarks & Monopolies,
Section 21.67 (4th ed. 1983) (“The universe cannot be chosen
in such a way as to bias the results in favor of either
party.”). Mr. Bunge only sampled medical practices in the
Minneapolis/St. Paul metropolitan area, an area in which MHP
maintains that it has a fifty-percent market share and where
it would likely be well-known. It appears, therefore, that
MHP sought to obtain responses from those respondents who
knew of MHP and its business, or even who were part of
medical practice groups that were providers for MHP. We
reasonably conclude that such respondents would be more
likely to believe that iMedica’s services under the IMEDICA
mark are connected to or sponsored by MHP.
Opp. No. 91159617 and Canc. No. 92043288
13
Thus, iMedica’s objections to Exhibit A and Mr. Bunge’s
testimony regarding the survey are overruled.5 However, we
do not accord the survey and Mr. Bunge’s testimony regarding
the survey great weight.
4. iMedica has objected to Exhibit B to Mr. Bunge’s
testimonial deposition, i.e., a report concerning a 1997
survey in which Mr. Bunge participated, and Mr. Bunge’s
testimony on the report. The survey was conducted in
connection with a claim of likelihood of confusion between
MEDICA and DATAMEDICA, a third-party’s mark. The purpose of
the survey was “to find out whether Medica would be
considered a famous name or not among health care
providers.” Bunge dep. at pp. 32 - 33. According to Mr.
Bunge, the survey concluded that “almost nine out of every
10 respondents, were aware of Medica in 1997”; and that
there is a “total level of awareness of 86 percent.” Bunge
dep. at pp. 33 and 116.
iMedica maintains that MHP did not include any
documentation relating to or supporting the analysis and
conclusions of the report on the 1997 survey with Mr.
Bunge’s expert report in this proceeding, as required under

5 The parties have discussed confidence intervals as they concern
the estimated “‘confusion’ rate.” We are persuaded that such
intervals do not apply here in light of the statement in the
Federal Judicial Center’s Reference Manual on Scientific Evidence
(2d ed. 2000) at p. 244 that “[c]onfidence intervals should not
be computed” in the case of a convenience sample.

Opp. No. 91159617 and Canc. No. 92043288
14
Fed. R. Civ. P. 26(a)(2). Additionally, iMedica maintains
that Mr. Bunge’s testimony does not lay a foundation to
determine the reasonableness of the methodology or results
of the 1997 survey which are needed to determine whether the
1997 survey is sufficiently reliable to allow it to be
admitted.
Federal Rule 26(a)(2) is not applicable in Board
proceedings. See TBMP §401 (2d ed. rev. 2004). Thus, we
overrule iMedica’s objection to Exhibit B and Mr. Bunge’s
testimony regarding Exhibit B. We also overrule any
objection that iMedica has to Mr. Bunge’s testimony
regarding fame because he has relied on Exhibit B in
determining that MEDICA is a famous mark. However, we do
consider that there is no evidence about the reasonableness
of the methodology or results of the report for determining
whether the results of the 1997 survey are sufficiently
reliable, and hence give Exhibit B, and Mr. Bunge’s
testimony regarding Exhibit B, limited weight in connection
with MHP’s contention that its mark is famous.
5. iMedica has objected to Exhibit C to Mr. Bunge’s
testimonial deposition, dated September 1993 and entitled
“Twin Cities Employer Health Care Study”; and Mr. Bunge’s
testimony regarding Exhibit C. The “Study” – which MHP
maintains was another survey - was prepared by a third party
for MHP without Mr. Bunge’s involvement. Because MHP has
Opp. No. 91159617 and Canc. No. 92043288
15
not offered any testimony of anyone with first-hand
knowledge of the survey, including any testimony as to the
mechanics of how the “Study” was conducted, we sustain
iMedica’s objection. See Fed. R. Evid. 703. We have not
considered the 1993 “Study” and Mr. Bunge’s testimony on the
“Study.”
6. iMedica has objected to Mr. Booher’s testimony
regarding the meaning of the letter “i” as a term in
trademarks generally and the admission of Exhibits P (search
results for “i” from AbbreviationZ) and Exhibit Q (search
results for “i” from acronymfinder.com). Because Mr. Booher
has testified that he located and downloaded the web pages
which are the subjects of Exhibits P and Q, they have been
sufficiently authenticated and hence are in the record as
evidence of the definition of “i” in AbbreviationsZ and
acronymfinder.com. See Raccioppi v. Appogee, Inc., 47
USPQ2d 1368 (TTAB 1998). As far as Mr. Booher’s testimony
regarding the meaning of “i” based on his experience, that
testimony is admissible as to his personal definition of the
term “i.” However, it is not admissible to the extent that
it is submitted to show how the consuming public in general
regards the term “i” because Mr. Booher has not been
qualified to provide testimony on how the consuming public
in general regards the term “i” or on the definition of “i.”
Opp. No. 91159617 and Canc. No. 92043288
16
Thus, iMedica’s objection is overruled in part and sustained
in part. See Fed. R. Evid. 701.
7. iMedica has objected to the introduction of the
Dechert Annual Reports on Trends in Trademarks from the
years 2000, 2001 and 2002, submitted with MHP’s second
notice of reliance. iMedica maintains that they are not
printed publications or official records, and there is no
indication that they are available to the general public in
libraries or of general circulation among members of the
public. Because there is no indication that these 7 to 11-
page reports are available to the general public in
libraries or of general circulation among members of the
public, or that segment of the general public which is
relevant under an issue in this proceeding, the reports are
not properly the subject of a notice of reliance. Because
MHP has not attempted to introduce these reports through the
testimony of any witnesses, iMedica’s objection is sustained
and these reports are not given further consideration.
Trademark Rule 2.122(e), 37 CFR § 2.122(e).
8. iMedica has objected to an amicus curiae brief
submitted by the International Trademark Association in JSL
Corp. v. Visa International Services Ass’n, No. 02-1753 (9th
Cir.), and MHP has stated that it does not contest its
exclusion from the record. We therefore have given the
amicus curiae letter brief no further consideration.
Opp. No. 91159617 and Canc. No. 92043288
17
We now turn to the merits of this case, considering
first MHP's petition to cancel Registration No. 2834742
pleaded by iMedica in the opposition.
Priority
As noted above, iMedica filed the ‘749 application
for IMEDICA on August 13, 1999. This date is earlier
than iMedica’s November 2000 first use date of IMEDICA.
See Koo dep. at pp. 15 – 21. Thus, iMedica is confined
to its application filing date as the earliest date on
which it can rely for priority purposes.
MHP asserts ownership of numerous registrations and
applications for marks consisting of or containing the term
MEDICA. Four of such registrations were filed earlier than
the August 13, 1999 filing date of iMedica’s ‘749
application. The four MHP registrations are:
Registration No. 1761828 (renewed) for the mark
MEDICA (in typed form), issued on March 30, 1993
from an application filed on October 21, 1991, for
“comprehensive health care plans and health plan
management services” in International Class 42;

Registration No. 2113265 for the mark MEDICA (in
typed form), issued on November 18, 1997 from an
application filed on October 31, 1994, for
“administration of prepaid healthcare plans,
healthcare plan administration services,
underwriting healthcare plans; underwriting
insurance for prepaid healthcare” in International
Class 36; and “healthcare in the nature of health
maintenance organization” in International Class
42, with Section 8 affidavit accepted and Section
15 acknowledged;

Registration No. 2239358 for the mark MEDICA
CALLLINK (stylized), issued on April 13, 1999 from
Opp. No. 91159617 and Canc. No. 92043288
18
an application filed on December 3, 1996, for
“medical consulting services, medical information
services and medical resources services available
via telephone” in International Class 42, with
Section 8 affidavit accepted and Section 15
acknowledged; and

Registration No. 2392584 for the mark MEDICA ELECT
(in typed form), issued on October 10, 2000 from
an application filed on June 11, 1998, for
“administration of prepaid healthcare plans;
health care plan administration services;
underwriting healthcare plans; underwriting
insurance for prepaid healthcare” in International
Class 36; and “medical services; hospitals; and
health maintenance organization” in International
Class 42, with Section 8 affidavit accepted and
Section 15 acknowledged.

MHP has entered a status and title copy of each of these
four registrations into the record.
Because the filing dates of the applications underlying
MHP’s pleaded registrations for the MEDICA, MEDICA CALLINK
and MEDICA ELECT marks are prior to the earliest date of use
on which iMedica is entitled to rely, that is the August 13,
1999 filing date of the ‘749 application, MHP’s priority has
been established. See Brewski Beer Co. v. Brewski Brothers
Inc., 47 USPQ2d 1281 (TTAB 1998) (plaintiff must show that
it was the first to use the mark or, if no evidence of prior
use is presented by a defendant and the plaintiff owns a
registration, that the plaintiff has the earliest filing
date of the application which matured into the
registration).
iMedica has argued that MHP cannot claim prior rights
in the IMEDICA mark based on use of the mark MEDICA with
Opp. No. 91159617 and Canc. No. 92043288
19
insurance related services because those services are
unrelated to iMedica’s services. We reject iMedica’s
argument – the question of the relationship of the parties’
services arises in the likelihood of confusion analysis, not
in connection with issues regarding priority.
Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In considering the evidence of record on
these factors, we keep in mind that “[t]he 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.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976).
Fame
The du Pont factor concerning the fame of the prior
mark plays a dominant role in likelihood of confusion cases
featuring a famous mark. Bose Corp. v. QSC Audio Products
Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir. 2002); Recot
Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894 (Fed.
Opp. No. 91159617 and Canc. No. 92043288
20
Cir. 2000); Kenner Parker Toys, Inc. v. Rose Art Industries,
Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992). Fame
for likelihood of confusion purposes arises “as long as a
significant portion of the relevant consuming public …
recognizes the mark as a source indicator.” Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005).
That is, we look to the class of customers and potential
customers of a product or service, and not the general
public. Here, the relevant consuming public comprises
prospective and actual purchasers or users of healthcare
insurance services. See Carefirst of Maryland, Inc. v.
FirstHealth of the Carolinas, 77 USPQ2d 1492 (TTAB 2005),
aff’d, 81 USPQ2d 1919 (Fed. Cir. 2007).
MHP has established that it has a substantial number of
members and substantial revenue and that its revenue and
membership has been increasing; in 2000 MHP had 1,027,886
individual members with $1,458,394,000 in revenue, and in
2003 MHP had 1,102,921 members with $1,852,322,000 in
revenue. Longendyke Dep. at p. 12; Exhibit H.
Additionally, MHP has established that its advertising
expenditures are substantial, amounting to millions of
dollars per year, with such expenditures rising each year.
Further, Mr. Longendyke has testified that MHP has a 50
percent market share in the Minneapolis/St. Paul metro area.
Opp. No. 91159617 and Canc. No. 92043288
21
Longendyke Dep. at p. 28. Mr. Booher has testified that MHP
“is very well known in the upper Midwest and has a very deep
penetration with the [health care] provider community ….”
Booher dep. at p. 20. We find that this evidence strongly
indicates that a significant portion of the relevant
consuming public associates MEDICA with MHP’s business
activities. The results of the 1997 survey, i.e., that 9
out of 10 respondents were aware of Medica and that there is
a “total level of awareness of 86 percent,” and Mr. Bunge’s
testimony regarding the 1997 survey, which we have given
limited weight to, provide some further support for our
finding.
iMedica’s challenges to MHP’s evidence of fame do not
persuade us otherwise. Specifically, iMedica maintains that
MHP’s 50 percent market share is only in one metropolitan
area; that MHP’s advertising expenditures are well below the
amounts spent in cases such as Bose, supra (annual
nationwide advertising expenses in excess of $30 million)
and Recot, supra ($80 million in annual national
advertising); that MHP does business in a limited geographic
area; and that the advertising expenditures of record do not
show expenditures by mark. Even though MHP’s advertising
expenditures are below those of Bose and Recot, they are not
insignificant in amount. Also, although MHP has introduced
evidence of its market share only in one market, that market
Opp. No. 91159617 and Canc. No. 92043288
22
includes a major U.S. metropolitan area and spans all or
part of four states. Moreover, the total number of MHP’s
members is significant, and so are its revenues. As far as
MHP’s advertising expenditures, we accept such expenditures
as advertising figures for the mark MEDICA because they are
consistent in amount, and MEDICA appears on virtually all of
the promotional materials of record, is part of MHP’s
corporate name and forms a part of most of the MHP marks in
MHP’s promotional materials of record.
Thus, we find that MHP is an extremely well known mark
in the geographic area in which it does business, especially
in Minnesota, and is entitled to benefit from the du Pont
factor regarding the fame of the mark. We acknowledge that
Medica is not know nationally, but national fame is not
necessary. See, e.g., Karl Karcher Enterprises Inc. v.
Stars Restaurants Corp., 35 USPQ2d 1125 (TTAB 1995) (opposer
had established notoriety in a specific area of operation);
Berghoff Restaurant Co. v. Washington Forge, Inc., 225 USPQ
603 (TTAB 1985) (opposer's proof of fame of its mark within
a limited geographic area sufficient to find its mark famous
for purposes of the likelihood of confusion analysis). This
factor therefore weighs heavily in favor of finding a
likelihood of confusion.

Opp. No. 91159617 and Canc. No. 92043288
23
The Marks
We next consider the similarity or dissimilarity of the
marks as to appearance, sound, connotation and commercial
impression. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005). While we must consider the marks in
their entireties, in articulating reasons for reaching a
conclusion on the issue of likelihood of confusion, there is
nothing improper in stating that, for rational reasons, more
or less weight has been given to a particular feature of a
mark. See In re National Data Corp., 753 F.2d 1056, 224
USPQ 749 (Fed. Cir. 1985).
The marks MEDICA and IMEDICA only differ by iMedica’s
addition of the letter “i” before MEDICA, which is MHP’s
entire mark. The evidence from acronymfinder.com and
AbbreviationZ shows that among the meanings of “i” is
“Internet.” See also In re Zanova, Inc., 59 USPQ2d 1300,
1304 (TTAB 2000) (“When we consider the possible
significance of ‘I’ in ITOOL to prospective purchasers of
applicant's goods or services, we find that they will
readily accept ‘I’ as meaning ‘Internet’….”). Thus, the
addition of the letter “i” to MEDICA does not create a
different commercial impression from MEDICA, but merely
indicates that there is an Internet feature to the services.
This is particularly true in the context of iMedica’s
Opp. No. 91159617 and Canc. No. 92043288
24
computer-related services, which iMedica’s identification of
services specifies are rendered via the Internet.6
Moreover, we find that the addition of the “i” to MEDICA
does not significantly change the meaning of the mark, given
that the record does not show any English language
definition for “imedica” or for MEDICA.
Further, iMedica has admitted that it uses the element
“i” in a lower case and the letter “m” in upper case
letters. iMedica’s responses to requests for admissions
nos. 38 and 39. The marks hence are similar in appearance,
with the capital “m” causing the purchaser to focus on the
“medica” portion of the mark. In terms of sound, the marks
are similar too, with the “medica” portion of iMedica’s mark
pronounced identically to MHP’s mark.
MEDICA ELECT and MEDICA CALLINK are also similar in
sound, meaning, appearance and commercial impression to
IMEDICA due to the shared component MEDICA. MEDICA is
positioned first in each of MHP’s marks. It accordingly is
the term in each of MHP’s marks most likely to be remembered
by purchasers. In iMedica’s mark, because of the visual
separation caused by the lower case “i” and the upper case
“m,” the association of the letter “i” with the Internet,
and the fact that the MEDICA portion begins with a capital

6 We therefore reject iMedica’s contention that the “i” signifies
“information.”

Opp. No. 91159617 and Canc. No. 92043288
25
letter, MEDICA dominates in the mark IMEDICA. While there
are apparent differences between iMedica’s mark and MEDICA
ELECT and MEDICA CALLLINK, the similarities between the
marks in light of the shared term MEDICA outweigh the
differences between IMEDICA and these marks.
iMedica has made of record numerous registrations
containing the term “medica,” and argues that they show that
“medica” is not a unique, dominant, coined term but rather
is a fairly common term suggestive of medical services and
medical technology fields.7 Several of the registrations
state that an English language translation of “medica” is
“doctor” or “medical” and/or include disclaimers of
“medica.” Many of such registrations recite goods and/or
services that have a connection to the healthcare field.
Third-party registrations are not evidence of use of
the marks shown therein. Without evidence of use, the
third-party registrations prove nothing about the impact of
the third-party marks on purchasers in terms of conditioning
consumers as to the existence of similar marks in the

7 In support of its argument, iMedica also made several
applications of record. Third-party applications are only proof
that the applications have been filed and thus are without
probative value to the likelihood of confusion issue. See Jetzon
Tire & Rubber Corp. v. General Motors Corp., 177 USPQ 467 (TTAB
1973).
Also, of the registrations made of record, we have not
considered those registrations that (i) claim goods or services
that are significantly different from MHP’s services, or (ii)
claim Section 44 of the Trademark Act as a basis for
registration.

Opp. No. 91159617 and Canc. No. 92043288
26
marketplace. AMF Inc. v. American Leisure Products, Inc.,
474 F.2d 1403, 177 USPQ 268 (CCPA 1973). They may, however,
be relied on to show that a word common to each mark has a
readily understood and well-known meaning and that it has
been adopted by third parties to express that meaning. Ritz
Hotel Ltd. v. Ritz Closet Seat Corp., 17 USPQ2d 1467 (TTAB
1990). In this case, the third-party registrations for
marks including MEDICA for medical products, medical
clinics, healthcare consultation and healthcare educational
services show that those in the healthcare industry use
MEDICA in a manner intending to connote “medical.” Such use
tends to show that MEDICA is slightly suggestive. However,
this does not appreciably weaken the strength of MHP’s
marks.
As far as policing of the marks, MHP has offered only
limited evidence of its policing activities. The record
contains one cease and desist letter directed to one third-
party and one consent agreement between MHP and another
third-party. Longendyke dep. at pp. 29 – 31; Exhibits K and
L. Because there is no evidence of third-party uses of
related marks which MHP has tolerated, MHP’s limited
enforcement activities do not indicate a willingness by MHP
to tolerate third-party uses of MEDICA.
Opp. No. 91159617 and Canc. No. 92043288
27
In view of the foregoing, the du Pont factor regarding
the similarity or dissimilarity of the marks weighs heavily
in MHP’s favor.
The Services
In arguing that the du Pont factor regarding the
similarity or dissimilarity of the services should be
resolved in its favor, MHP maintains that some of MHP’s
services described in its four registrations “overlap or
encompass many of the services described in iMedica’s
registration.” MHP reply brief at p. 15. According to MHP,
“health maintenance organization” (see Registration No.
2113265 for MEDICA and the registration for MEDICA ELECT)
would naturally include the International Class 42 services
of “providing information in the fields of medicine,
clinical practice and patient care to others … ; [and]
providing medical and patient records to others ….” MHP
reply brief at p. 16. “These services are part of what an
HMO [health maintenance organization] does.” Id. Mr.
Longendyke has testified that MHP currently provides
information in the fields of medicine, clinical practice and
patient care to members, providers and visitors via the
Internet, and that it provides member access to patient
records over the Internet to the extent those patient
records are claims records. Longendyke dep. p. 23. He has
also stated that physician claims may be submitted
Opp. No. 91159617 and Canc. No. 92043288
28
electronically; and that those submitting claims may obtain
information from MHP’s website regarding claim submissions,
including “why there is a holdup and explanations.”
Longendyke dep. at p. 16. Further, he testified that a
managed care organization, or health maintenance
organization is “much more than an insurance company.”
Longendyke dep. at 20.
A health maintenance organization or health insurer
certainly provides information in the fields of medicine,
clinical practice and patient care to others and provides
medical and patient records to others. Such services are
integral to those services which a health maintenance
organization and a health insurer provide to or for their
members and MHP currently provides such services. Thus, we
find that iMedica’s International Class 42 services are
encompassed within MHP’s health maintenance organization
and/or health insurance services.
iMedica’s International Class 35 services are similar
to MHP’s services. iMedica has admitted in its response to
request for admissions no. 36 that “iMedica’s customers
consist primarily of out-patient healthcare providers
ranging from 1 to 2 physician clinics up to 150+ physician
groups” and has stated at p. 25 of its main brief in the
cancellation that a physician who provides services to an
MHP customer is potentially a user, implying that the
Opp. No. 91159617 and Canc. No. 92043288
29
physician would come in contact with iMedica’s mark.8
Also, Mr. Longendyke has testified that MHP’s customers
include anyone in its geographic market in the market for
healthcare insurance; that these customers include employers
as well as individuals; and that MHP markets its services to
the same customers to which iMedica markets its services.
Longendyke dep. at p. 26 - 27. We therefore find that the
physician clinics and physician groups which purchase
iMedica’s services are also the employer groups which
purchase MHP’s services. Thus, there is an overlap in
purchasing entities.
iMedica, however, has argued that those who make
purchasing decisions for its services and MHP’s services
differ, even though they may be working in the same overall
healthcare field. iMedica cites to the Federal Circuit’s
decision in Electronic Design and Sales, Inc. v. Electronic
Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388 (Fed. Cir.
1992), for the proposition that only those who make
purchasing decisions could be considered relevant persons,
and that not all users are necessarily relevant persons for

8 iMedica adds, however, that there is no evidence that a
physician purchases MHP’s services or that an employer group
purchases iMedica’s services. This is not correct. Mr.
Longendyke has testified that MHP’s customers include anyone in
its geographic market in the market for healthcare insurance; and
that these customers include employers as well as individuals.
Longendyke dep. at pp. 25 – 26. Also, medical practice groups -
which are employer groups - to which iMedica markets its goods
are included as potential purchasers of MHP’s services.

Opp. No. 91159617 and Canc. No. 92043288
30
determining likelihood of confusion, especially where the
parties’ respective goods and services are non-competitive.
We are not persuaded by iMedica’s argument. First, Mr.
Longendyke has testified that MHP markets its services to
the same customers to which iMedica markets its services.
Longendyke dep. at p. 26 - 27. This is to be expected in
this case because iMedica has admitted that its customers
include “out-patient healthcare providers ranging from 1 to
2 physician clinics,” and it can be expected that physicians
in smaller clinics would make purchasing decisions involving
services of the nature of those provided by MHP and by
iMedica. Thus, unlike in Electronic Design, there is
evidence that both parties market to the same individuals.9
Second, even in larger clinics where it is not the
physician who is placing the order for iMedica’s services
but rather is a non-physician purchasing specialist, we view
skeptically any suggestion that a non-physician purchaser of
iMedica’s services, which are intended to be used by
physicians in running virtually every aspect of their
practices, would not have significant input from physicians.

9 iMedica maintains that its “sales efforts are directed to the
Chief Medical Officer, Medical Director, Medical Informatics
Officer, Chairman of IT committee, Administrator and/or chief
executive officer of outpatient clinics.” Brief at p. 32. MHP
responds that “[t]hese are the same individuals Medica is trying
to reach both to sell its health plan and HMO services, and also
to enlist as providers within its HMO network.” MHP reply brief
at p. 19; Longendyke dep. at pp. 25 – 26; Booher dep. at pp. 8 –
9.

Opp. No. 91159617 and Canc. No. 92043288
31
Such physicians would likely be the same physicians who are
MHP providers.
Because physicians are involved in purchasing decisions
for both services, especially when the physician is an
employer and requires medical insurance for his or her
practice group, the marketing of the parties’ respective
services is such that both services could be encountered by
the same persons under circumstances that could, because of
the similarity of the marks, give rise to the mistaken
belief that they originate from a common source. Hence we
find that iMedica’s International Class 35 services are
related to MHP’s health maintenance organization and health
insurance services.10 In re Martin's Famous Pastry Shoppe,
Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
The parties have argued extensively as to whether
iMedica’s services are within the zone of expansion of MHP’s
services under the doctrine of expansion. Because we have
found the services to overlap or to be related on other
grounds, we need not reach their arguments regarding the
zone of expansion.

10 iMedica’s argument that there is a lack of overlap between
relevant purchasers of each parties’ services because iMedica is
a technology company that provides electronic record management
products and services for physicians to better manage their
practices and MHP is a health maintenance organization that
provides its insurance products and services to employer groups,
Opp. No. 91159617 and Canc. No. 92043288
32
Trade Channels
We have found earlier in our decision that iMedica’s
International Class 42 services are encompassed within MHP’s
services. There are no specific trade channel limitations
in the parties’ respective identifications of services.
When there are no such limitations or restrictions in the
identification of goods and/or services as listed in the
subject registration and in the identification of goods
and/or services as set forth in any of a plaintiff’s
registration(s), the issue of likelihood of confusion is
determined in light of a consideration of all normal and
usual channels of trade and methods of distribution for the
respective goods and/or services. See, e.g., CBS Inc. v.
Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983);
Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937 (Fed.
Cir. 1983); Paula Payne Products Co. v. Johnson Publishing
Co., Inc., 473 F.2d 901, 177 USPQ 76 (CCPA 1973). Thus, we
find that the International Class 42 services are related.
With regard to the International Class 35 services,
neither party has submitted evidence on the exact nature of
the trade channels for their respective services.11

and its reliance on Electronic Design, supra, are misplaced for
the reasons mentioned above.
11 MHP relies on iMedica’s allegation in its original notice of
opposition that MHP’s International Class 35, 38 and 44 services
are within the same trade channels as the services of iMedica’s
registration. Because iMedica sought to remove that allegation
Opp. No. 91159617 and Canc. No. 92043288
33
Thus, we find that with respect to the International
Class 42 services, this du Pont factor must be resolved in
MHP’s favor, and that with respect to the International
Class 35 services, this factor is neutral.
Conditions of Sale and Sophistication of Purchasers
iMedica maintains that its customers include physicians
seeking electronic record management products and services
to better manage their practices; and that its customers are
sophisticated. MHP has acknowledged that iMedica’s
purchasers are sophisticated, but is silent regarding the
level of sophistication of MHP’s purchasers. iMedica has
pointed out that the Board, in Carefirst of Maryland, supra,
addressed the level of purchaser sophistication of
purchasers of healthcare and health insurance services. In
that case, the Board found that ordinary consumers are
prospective and actual purchasers or users of healthcare
insurance plans or programs; and stated that, even ordinary
consumers exercise some sophistication when it comes to
decisions relating to healthcare and healthcare insurance
services. The Board recognized the substantial financial
commitment of such insurance and services; that decisions to
purchase healthcare insurance and related services are
important; and that purchasers will proceed cautiously and

in its amended notice of opposition, we do not hold iMedica to
its allegation.

Opp. No. 91159617 and Canc. No. 92043288
34
deliberately in making their decisions. The Board also
considered non-purchasing users of healthcare and healthcare
insurance services, noting that a small business, for
example, might purchase coverage for its employees from a
single provider; and that in this situation, the employees
are not involved in the purchasing decision. According to
the Board, such non-purchasing users of healthcare and
healthcare insurance are also sophisticated. We know of no
reason why the same would not apply in this case with
respect to MHP’s services when MHP’s customers are employer
groups, and find that the purchasers of both parties’
services are sophisticated.
With respect to the conditions of purchase, the record
shows that the sales process for both parties’ services is
lengthy and involves repeated contact with either iMedica or
MHP by the prospective purchaser. iMedica’s answer to
interrogatory no. 7b. Further, both parties’ services are
expensive, with MHP’s services provided on a monthly
subscription or flat fee basis to its customers which can
cost thousands of dollars even for a small office. We
therefore find that the services are made with deliberation
and care.
While both parties’ purchasers may be sophisticated or
knowledgeable in a particular field, and even deliberate in
their purchasing decisions, they are not immune from source
Opp. No. 91159617 and Canc. No. 92043288
35
confusion. See In re Decombe, 9 USPQ2d 1812 (TTAB 1988); In
re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983). In view
of the substantial similarity of the parties’ marks, and
particularly the descriptive nature of the letter “i”
located at the beginning of iMedica’s mark which is
otherwise identical to MHP’s mark, we find that the factors
regarding the sophistication of purchasers and conditions of
sale weigh only slightly in iMedica’s favor.
Actual Confusion
There are no reports in the record of any instances of
actual confusion in the marketplace between the parties’
marks as used in connection with their services. This, of
course, may be attributable to the slight overlap where the
parties have been doing business and the relatively small
number of iMedica customers thus far.
The record does contain, however, a likelihood of
confusion survey in which several respondents expressed
confusion as to the source of iMedica’s services. As
discussed previously in this decision, MHP commissioned a
likelihood of confusion survey, using a universe of 917
physician offices with fifty-seven respondents participating
in the survey. Eight respondents, or about 14 percent,
indicated some source confusion. Courts have accepted
surveys showing similar rates of confusion. See Mutual of
Omaha Ins. Co. v. Novak, 836 F.2d 397, 5 USPQ2d 1314 (8th
Opp. No. 91159617 and Canc. No. 92043288
36
Cir. 1987) (declining to find that district court erred in
its decision after a trial on the merits to give evidence of
approximately ten percent of confusion “significant
weight”); Humble Oil & Refining Co. v. American Oil Co., 405
F.2d 803, 160 USPQ 289 (8th Cir. 1969) (finding that in
evaluating an application to modify an injunctive decree an
eleven percent rate of actual confusion “may not [be]
dismiss[ed] as de minimis”); Grotrian, Helfferich, Schulz,
Th. Steinweg Nachf v. Steinway & Sons, 365 F.Supp. 707, 180
USPQ 506 (S.D.N.Y. 1973) (concluding after a bench trial
that survey results that twenty-three recent purchasers had
some confusion of origin, 7.7 percent of 520 people
canvassed perceived a business connection between the two
companies and 8.5 percent confused the names was "strong
evidence of the likelihood of confusion"). In view of the
manner in which the survey was conducted, however, the
survey and Mr. Bunge’s testimony regarding the survey are
not entitled to great weight. Nonetheless, they have some
probative value on the question of likelihood of confusion,
to wit, the survey indicates that a sufficient number of
respondents believed that there was a connection between
iMedica and MHP upon reviewing certain promotional material
from iMedica. This evidence reinforces MHP’s position that
there is a likelihood of confusion between the marks.

Opp. No. 91159617 and Canc. No. 92043288
37
Family of Marks
The family of marks doctrine applies in situations
where the plaintiff has established a group of marks
characterized by a recognizable common characteristic,
wherein the marks are composed and used in such a way that
the public associates not only the individual marks, but the
common characteristic of the family, with the trademark
owner. See J & J Snack Foods Corp. v. McDonald's Corp., 932
F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991). It is well
settled that merely adopting, using and registering a group
of marks having a feature in common for similar goods or
related goods or services is insufficient to establish, as
against a defendant, a claim of ownership of a family of
marks characterized by the feature. Rather, it must be
demonstrated that prior to defendant's first use of its
challenged mark, the various marks said to constitute the
family, or at least a good number of them, were used and
promoted together in such a manner as to create among
purchasers an association of common ownership based upon the
family characteristic. Id., 18 USPQ2d at 1891. See also
Hester Industries Inc. v. Tyson Foods Inc., 2 USPQ2d 1646
(TTAB 1987); Cambridge Filter Corp. v. Sensodyne Corp., 189
USPQ 99 (TTAB 1975).
In this case, the record does not show that MHP’s
MEDICA marks were used and promoted together in such a
Opp. No. 91159617 and Canc. No. 92043288
38
manner as to create among purchasers an association of
common ownership based upon the family characteristic.
Thus, MHP has not met its burden of establishing that a
family of marks exists in this case. Simply using a series
of similar marks does not of itself establish the existence
of a family.
Length of Time During and Conditions
Under Which the Marks of the Parties Have Been in Use

Mr. Koo has testified that iMedica has only completed
one sale in the common geographic areas in which MHP and
iMedica have been doing business; and that iMedica has had
fewer than 25 customers. Koo dep. at pp. 39 and 42. In
view thereof, we find this factor neutral, even though both
marks have been used concurrently for at least five years
without any reported instances of actual confusion.
Conclusion
MHP has established it has priority by virtue of its
registrations for the marks MEDICA, MEDICA ELECT and MEDICA
CALLLINK. In balancing the above factors, and particularly
considering the regional fame of MEDICA and Federal Circuit
precedent providing that the fame of the mark is a dominant
factor in questions of likelihood of confusion, we find that
MHP has established by a preponderance of the evidence that
there is a likelihood of confusion between its mark and
MHP’s marks. Accordingly, the petition to cancel is granted
Opp. No. 91159617 and Canc. No. 92043288
39
and Registration No. 2834742 will be cancelled in due
course.
Imedica’s Claim of No Bona
Fide Intent to Use the Mark in Commerce

We now turn to iMedica’s claim in the opposition that
MHP did not have a bona fide intent to use its IMEDICA mark
in commerce. iMedica has based its claim on the testimony
of Mr. Longendyke that it was MHP’s normal practice to
generate an advertising plan, product literature, pamphlets,
and brochures once a new mark enters the trademark
registration process; and that MHP did not follow that
practice with regard to the IMEDICA mark because it has no
plans to use the mark. Further, iMedica points out that MHP
produced no documents related to its alleged planned use of
IMEDICA. Longendyke dep. at pp. 36, 38 and 39.
We are not persuaded by iMedica’s arguments. Mr.
Longendyke’s testimony is as follows:
Q. Are there any current advertising plans for the
IMEDICA mark?

A. No, there aren’t.

Q. Can you tell me why that is?

A. Because we think it’s a confused mark right
now and we don’t think it’s wise for us to use it.

Q. And no materials have been prepared using the
IMEDIA mark?

A. No, they have not.

Q. So there are no current plans to use IMEDICA as
a trademark for Medica Health Plans?
Opp. No. 91159617 and Canc. No. 92043288
40

A. Not currently.

Mr. Longendyke’s testimony was not that MHP had no plans to
use the mark; his testimony was that it did not have current
plans to use the mark. Also, Mr. Longendyke explained why
MHP had no current plans, and that was because it is a
“confused mark,” i.e., that it placed any plans to use the
mark aside until the conflict between the parties is
resolved. This explanation as to why it did not have
documents is reasonable and one that we accept, despite the
fact that MHP learned of iMedica and its imedica.com website
in November 2000 and filed its application over one year
later. MHP’s answer to interrogatory no. 3. Thus, we find
that iMedica has not shown by a preponderance of the
evidence that MHP lacked the necessary bona fide intention
to use the mark in commerce at the time of the filing of its
application for the IMEDICA mark.
iMedica has argued that there is no conflict over MHP’s
use of IMEDICA in connection with the International Class 36
services related to the administration of health care plans,
services which iMedica did not oppose, and that MHP still
did not create any documents or plans related to the use of
IMEDICA in connection with such International Class 36
services. MHP can hardly be faulted for suspending its
plans to use a mark on services identified in one
International Class in an application, after iMedica opposed
Opp. No. 91159617 and Canc. No. 92043288
41
three other International Classes in its application. MHP
may reasonably have viewed the services identified in the
IMEDICA application as complimentary, and hence may have
reasonably intended to use one mark on all four services,
rather than possibly using a different mark on the three
opposed services, if it did not prevail in the opposition.
Also, we are not persuaded by iMedica’s argument that MHP
filed its application for tactical purposes because six days
prior to the filing date of MHP’s application, MHP filed an
opposition against another application for IMEDICA by
iMedica. It certainly is reasonable for MHP to want to use
IMEDICA as an adjunct mark to its primary mark MEDICA,
especially for services which have a connection to the
Internet. Also, it is particularly telling that MHP filed
an application for EMEDICA, i.e., application Serial No.
76370965, on the same date that it filed its application for
IMEDICA. The filing of these two marks on the same date
suggests a business strategy in eventually using certain
mark(s) rather than a legal strategy in a dispute with
another party.
iMedica’s Claim of Likelihood
of Confusion in the Opposition

iMedica has alleged priority and likelihood of
confusion based both on the ‘742 registration and on its use
of IMEDICA in commerce. Because we have found above that
the ‘742 registration should be cancelled, iMedica’s
Opp. No. 91159617 and Canc. No. 92043288
42
opposition on the basis of the ‘742 registration is
dismissed. To the extent that iMedica bases its opposition
on its common law rights to IMEDICA, we have determined that
MHP has priority, not iMedica. Thus, to the extent that
iMedica opposes registration on the basis of its common law
rights, iMedica’s claim is dismissed.
DECISION: The petition for cancellation is granted and
iMedica’s Registration No. 2834742 shall be cancelled in due
course. iMedica’s opposition to MHP’s application Serial
No. 76370729 is dismissed with prejudice.