James S. Beckmanv.LifeNet Health

Trademark Trial and Appeal Board

Feb 20, 2019

91235765 (T.T.A.B. Feb. 20, 2019)

Mailed: February 20, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
————
James S. Beckman
v.
LifeNet Health
___

Opposition No. 91235765
___
Trent C. Keisling of Keisling & Pieper PLC
for James S. Beckman.

John W. McGlynn of RatnerPrestia
for LifeNet Health.
______
Before Adlin, Lynch and Coggins,
Administrative Trademark Judges.
Opinion by Adlin, Administrative Trademark Judge:
Applicant LifeNet Health seeks registration of the mark THERADERM, in
standard characters, for “human allograft tissue; human dermal tissue for use in the
treatment of burns and wound healing.”1 In his notice of opposition, Opposer James
S. Beckman, M.D. alleges prior use and registration of an identical mark
(THERADERM in standard characters) for:
non-medicated foot and hand cream, skin moisturizer, sun
screen preparations, skin lotion, skin cleansing lotion, non-

1 Application Serial No. 87405396, filed April 10, 2017 under Section 1(b) of the Trademark
Act, based on an alleged intent to use the mark in commerce.
This Opinion is not a
Precedent of the TTAB
Opposition No. 91235765
2
medicated cosmetic skin chemical peels, skin lighteners,
non-medicated cosmetic acne treatment preparations, skin
rejuvenation preparations, namely, skin cream; non-
medicated skin care preparations, non-medicated skin care
preparation, namely, oil free skin gel; non-medicated
sunburn relief preparations, namely, non-medicated
ointments for the prevention and treatment of sunburn;
skin emollients, skin soap, skin toners and skin cream.2

As grounds for opposition, Opposer alleges that use of Applicant’s mark would be
likely to cause confusion with Opposer’s mark pursuant to Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d). In its answer, Applicant denies the salient
allegations in the notice of opposition.
I. The Record
The records consist of the pleadings and, by operation of Trademark Rule 2.122(b),
the file of Applicant’s involved application. In addition, Opposer introduced his own
testimonial declaration, with exhibits (“Beckman Dec.”), and a notice of reliance on
his pleaded registration. Applicant did not take any testimony or introduce any other
evidence, nor did it file a trial brief.
II. Standing and Priority
Opposer’s pleaded registration, 6 TTABVUE 4-5,3 establishes Opposer’s standing.
See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058,

2 Registration No. 3722252, issued December 8, 2009; Section 8 Affidavit accepted, Section
15 Affidavit acknowledged.
3 Citations to the record refer to TTABVUE, the Board’s online docketing system. Specifically,
the number preceding “TTABVUE” corresponds to the docket entry number(s), and any num-
ber(s) following “TTABVUE” refer to the page number(s) of the docket entry where the cited
materials appear.
Opposition No. 91235765
3
1062 (Fed. Cir. 2014); Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1844 (Fed. Cir. 2000).
Because Applicant has not counterclaimed to cancel the registration, priority is
not at issue with respect to the goods identified therein. King Candy Co. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974). In any event,
Opposer has established prior common law use of his mark for the skin care products
identified in his pleaded registration. 5 TTABVUE 2-3 (Beckman Dec. ¶¶ 5, 10).
III. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth
factors to be considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the
cumulative effect of differences in the essential characteristics of the goods and
differences in the marks.”). Opposer bears the burden of establishing that there is a
likelihood of confusion by a preponderance of the evidence. Cunningham, 55 USPQ2d
at 1848. We consider the likelihood of confusion factors about which there is evidence,
and treat the remaining factors as neutral.
Opposition No. 91235765
4
A. The Marks
The marks are identical. This factor not only weighs heavily in favor of finding a
likelihood of confusion, but also reduces the degree of similarity between the goods
that is required to support a finding of likelihood of confusion. In re Shell Oil Co., 992
F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); Time Warner Entm’t Co. v. Jones,
65 USPQ2d 1650, 1661 (TTAB 2002); and In re Opus One Inc., 60 USPQ2d 1812, 1815
(TTAB 2001).
B. The Goods, Channels of Trade and Classes of Consumers
Although the parties’ identified goods all relate to skin and skin care, that is not
enough by itself to establish that they are related. In fact, “a finding that the goods
are similar is not based on whether a general term or overarching relationship can
be found to encompass them both.” Edwards Lifesciences Corp. v. VigiLanz Corp., 94
USPQ2d 1399, 1410 (TTAB 2010) (citing Harvey Hubbell Inc. v. Tokyo Seimitsu Co.,
Ltd., 188 USPQ 517, 520 (TTAB 1975)); In re W.W. Henry Co., 82 USPQ2d 1213, 1215
(TTAB 2007) (“[T]o demonstrate that goods are related, it is not sufficient that a
particular term may be found which may broadly describe the goods”); see also, Bose
Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1310 (Fed. Cir.
2002) (stating, in dicta, that “a broad general market category is not a generally
reliable test of relatedness of products”). Moreover, because Applicant’s goods are
“essentially skin graft materials,” 5 TTABVUE 4 (Beckman Dec. ¶ 15), at first glance
it appears that Applicant’s goods would be offered to surgeons or other medical
professionals, while Opposer’s goods are typical skin care consumer products.
Opposition No. 91235765
5
Opposer has established that the goods, channels of trade and classes of consumers
are much more similar than appears at first glance, however.
Specifically, Opposer is a plastic surgeon, and attends “conferences and
conventions for plastic surgeons throughout the country” where he sells “products
using the THERADERM mark.” 5 TTABVUE 2, 3 (Beckman Dec. ¶¶ 2, 7-8). Opposer’s
focus on plastic surgeons is clear from his company’s brochure, which explains that
Opposer’s goods are only available through “members of The American Society of
Plastic and Reconstructive Surgery”:

5 TTABVUE 10-12 (Beckman Dec. Ex. 2) (highlighting added).
The brochure goes on to explain that the “70% lactic acid peel” version of Opposer’s
product is performed by “plastic surgery practices” and “plastic surgeons,” while the
“10% solution” is intended for use by patients themselves, at home:
Opposition No. 91235765
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Id. at 10 (highlighting added). In fact, Opposer touts its goods as a way for plastic
surgeons to expand their patient base:

Id. at 11 (emphasis added).
This evidence establishes that there is a more extensive relationship between the
parties’ goods than merely being intended to care for or treat human skin. In fact,
Opposer’s brochure makes clear that his goods are complementary to Applicant’s
Opposition No. 91235765
7
goods, in that “[i]n many cases, patients are requesting a home care regimen following
costly facial procedures. Theraderm lets you [plastic surgery practices] recommend
and provide a professional system.” Id. In other words, some patients who undergo a
facial procedure using Applicant’s dermal tissue may also use, or at least be the target
consumers for, Opposer’s skincare products, both the home and plastic surgeon office
versions. Complementary goods, such as Opposer’s and Applicant’s in this case, are
often found to be related. See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d
1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984); Gen. Mills, Inc. v. Fage Dairy Processing
Indus. SA, 100 USPQ2d 1584, 1597-98 (TTAB 2011), judgment set aside on other
grounds, 110 USPQ2d 1679 (TTAB 2014); In re Toshiba Med. Sys. Corp., 91 USPQ2d
1266, 1272 (TTAB 2009). Here, because Opposer’s and Applicant’s goods are intended
to be used by the same surgeons, practices and ultimate patients, as different
components of the same overall treatments, and for some of the same ultimate
purposes, they are related. Moreover, from the parties’ identifications of goods
themselves, it is clear that Applicant’s and Opposer’s goods are both used to treat
types of burns. This factor also weighs in favor of finding a likelihood of confusion.
Furthermore, Opposer has established that the channels of trade and classes of
consumers overlap. Plastic surgeons’ offices will purchase Applicant’s dermal tissue
for use in surgery, and Opposer’s skincare products are also purchased by plastic sur-
geons for use following surgery (whether Opposer’s products are applied by a plastic
surgeon in her office, or by the patient at home after being acquired from the plastic
surgeon). 5 TTABVUE 10-12. Opposer offers and promotes its goods at plastic surgery
Opposition No. 91235765
8
conferences and conventions, 5 TTABVUE 2, 3 (Beckman Dec. ¶¶ 2, 7-8), which is at
least one channel of trade in which Applicant’s goods would be expected to travel. Id.
at 4 (Beckman Dec. ¶ 16). See Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d
1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump Designs, LLC, 80 USPQ2d
1370, 1374 (TTAB 2006) (goods presumed to be “offered in all channels of trade which
would be normal therefor”); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Thus,
the channels of trade for Opposer’s and Applicant’s goods include conferences and
conventions for plastic surgeons, such as those where Opposer promotes and sells its
goods. Furthermore, as indicated, and as established by Dr. Beckman’s testimony and
Applicant’s identification of goods, the class of consumers for the parties’ goods in-
cludes plastic surgeons and their practices. These factors also weigh in favor of find-
ing a likelihood of confusion.
IV. Conclusion
The parties offer related goods sold in overlapping channels of trade to the same
consumers under identical marks. Confusion is likely.

Decision: The opposition is sustained on Opposer’s likelihood of confusion claim
under Section 2(d) of the Trademark Act, and registration of Applicant’s mark is
refused.