Legacy Healthv.Western States Lodging and Management, L.C.

Trademark Trial and Appeal Board

Jun 3, 2015

No. 91199416 (T.T.A.B. Jun. 3, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: June 3, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Legacy Health

v.

Western States Lodging and Management, L.C.
_____

Opposition No. 91199416
_____

Steven E. Klein of Stoel Rives LLP for Legacy Health.

Jarod Marrott of Kirton & McConkie for Western States Lodging and
Management, L.C.
_____

Before Bergsman, Masiello and Goodman,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Western States Lodging and Management, L.C. (“Applicant”) seeks registration
on the Principal Register of the three marks listed below, all filed February 29,
2008, and based on use, for the following services:
Providing assisted living facilities; providing assisted
living facilities for individuals with Alzheimer's or related
dementia; providing congregate living facilities for
independent seniors; continuing care retirement homes;
providing age-restricted congregate living facilities in
apartments, in Class 43; and
Opposition No. 91199416
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Providing physical rehabilitation, health care services and
skilled nursing services to seniors and seniors with
Alzheimer's in assisted living facilities, congregate living
facilities, and retirement homes, in Class 44.
1. Serial No. 77409675 for the mark LEGACY HOUSE, in standard characters.
Applicant disclaimed the exclusive right to use the word “House”;
2. Serial No. 77409664 for the mark LEGACY VILLAGE, in standard
characters; and
3. Serial No. 77409679 for the mark LEGACY RETIREMENT RESIDENCE, in
standard characters. Applicant disclaimed the exclusive right to use the term
“Retirement Residence.”
Legacy Health (“Opposer”) filed Notices of Opposition against the registration of
Applicant’s marks on the ground of likelihood of confusion under Section 2(d) of the
Trademark Act of 1946, 15 U.S.C. § 1052(d). Opposer pleaded ownership of the five
registrations listed below all for “health care services”:
1. Registration No. 1847147 for the mark LEGACY, in typed drawing format;1
2. Registration No. 1574034 for the mark LEGACY and design, shown below:2

1 Registered July 26, 2994; renewed. Prior to November 2, 2003, “standard character”
drawings were known as “typed” drawings. A typed mark is the legal equivalent of a
standard character mark. TMEP § 807.03(i) (January 2015).
2 Registered December 26, 1989; renewed.
Opposition No. 91199416
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3. Registration No. 1574033 for the mark LEGACY HEALTH SYSTEM, in
typed drawing format. Opposer disclaimed the exclusive right to use the term
“Health System”;3
4. Registration No. 3899583 for the mark OUR LEGACY IS HEALTHY KIDS,
in standard characters. Opposer disclaimed the exclusive right to use the term
“Healthy Kids”;4 and
5. Registration No. 3876668 for the mark OUR LEGACY IS YOURS, in
standard characters.5
Applicant, in its Answer, denied the salient allegations in the Notices of
Opposition specifically noting that the records in the USPTO identify Legacy Health
System, not Legacy Health, as the owner of the pleaded registrations and, therefore,
denying that Opposer is the owner of the pleaded registrations.
I. Preliminary Issues
A. Citations to the record.
Citations to the record in this opinion are to the TTABVUE docket entry number
and the electronic page number where the document or testimony appears. Because
the Board primarily uses TTABVUE in reviewing evidence, the Board prefers that
citations to material or testimony in the record that has not been designated
confidential include the TTABVUE docket entry number and the TTABVUE page
number.

3 Registered December 26, 1989; renewed.
4 Registered January 4, 2011.
5 Registered November 16, 2010.
Opposition No. 91199416
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B. Applicant’s motion to amend its pleading to conform to the evidence and to
add a counterclaim to cancel Opposer’s pleaded registrations on the ground of
abandonment pursuant to Fed. R. Civ. P. 15(b).6

Applicant, through its notice of reliance, introduced into evidence copies of
Opposer’s licenses with Texas Regional Heart Center, P.A.7 and Beacon
Communities, Inc.8 and a settlement agreement with Legacy Hospital Partners,
Inc.9 as evidence of Opposer’s naked licensing of its LEGACY marks.10 In its brief,
Applicant argued that Opposer’s pleaded registrations should be cancelled on the
ground that Opposer “had engaged in naked licensing of the term ‘LEGACY’ and of
the asserted marks, and that such naked licensing has resulted in abandonment of
any ability to prevent third-party uses of the term ‘LEGACY’ and further in
abandonment of the asserted marks.”11
Opposer, in an appendix to its brief, objected to the licenses and settlement
agreement on the ground that the pleadings failed to assert abandonment through

6 In its December 5, 2014 Order, the Board denied Applicant’s motion to amend its pleading
to add a counterclaim to cancel Opposer’s pleaded registrations on the ground of
abandonment pursuant to Fed. R. Civ. P. 15(a) because “Applicant unduly delayed in
seeking leave to amend once it learned of the basis for the amendment during Opposer’s
trial period” and because at the time Applicant filed its motion “trial has concluded and the
matter is fully briefed,” the amendment “would be prejudicial to Opposer by increasing the
time, effort and expense by Opposer to defend against the challenges to its pleaded
registrations.” 75 TTABVUE 5.
7 51 TTABVUE 227-228.
8 51 TTABVUE 233-234.
9 51 TTABVUE 235-240.
10 48 TTABVUE 17 (See Exhibits 150 and 151). Opposer stipulated to the authenticity of
trademark license and settlement agreement. 47 TTABVUE 2.
11 67 TTABVUE 47-48.
Opposition No. 91199416
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“naked licensing” as a counterclaim for cancellation. Also, Opposer asserted that
abandonment by naked licensing was not tried by consent.12
Implied consent to the trial of an unpleaded issue can be found only where the
nonoffering party (1) raised no objection to the introduction of the evidence on the
issue, and (2) was fairly apprised that the evidence was being offered in support of
the issue. Morgan Creek Productions Inc. v. Foria International Inc., 91 USPQ2d
1134, 1138 (TTAB 2009). The question of whether an issue was tried by consent is
basically one of fairness. The non-moving party must be aware that the issue is
being tried, and therefore there should be no doubt on this matter. Id. at 1139.
While Applicant apprised Opposer in its notice of reliance that the licenses and
settlement agreement were being introduced to prove Opposer’s abandonment of the
marks in its pleaded registrations through naked licensing, Opposer timely raised
an objection to the evidence in the appendix to its brief.
Objections to a notice of reliance on substantive grounds,
such as objections on the grounds that evidence offered
under a notice of reliance constitutes hearsay or improper
rebuttal, or is incompetent, irrelevant, or immaterial,
normally need not and should not be raised by motion to
strike. Rather, such objections should be raised in the
objecting party's brief on the case, unless the ground for
objection is one that could have been cured if raised
promptly by motion to strike.
TBMP § 532 (June 2014).
Further, Applicant contends that Opposer produced its responses to Applicant’s
discovery requests on October 4, 2013, during Opposer’s testimony period.13

12 63 TTABVUE 31.
Opposition No. 91199416
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However, because Applicant did not timely file a motion to compel discovery,14 it
would have behooved Applicant to file a motion to amend its pleading to add a
counterclaim as soon as it became aware of the grounds rather than wait to
introduce the documents at issue through a notice of reliance on February 24, 2014,
more than four months after receiving them, in the hope Opposer would not object.
We find that the issue of whether Opposer abandoned the marks in its pleaded
registrations through naked licensing was not tried by implied consent.
C. “Opposer’s Motion In The Alternative To Withdraw And Amend
Admissions.”15

Applicant served Opposer with two sets of requests for admission on July 6, 2012
and August 15, 2012.16 Because the parties were discussing settlement, they agreed
to “an indefinite extension of time” to respond.17 In fact, on February 4, 2013,
Opposer filed a motion for an extension of trial dates with consent based on the fact
that the parties were engaged in settlement negotiations.18 There is no record of a
follow-up demand for discovery responses on the part of Applicant.
On February 7, 2013, Applicant sent an email to Opposer rejecting Opposer’s
proposal of an assignment of Applicant’s trademark rights to Opposer with a license
back and, in the alternative, proposing an agreement incorporating limited

13 68 TTABVUE 5.
14 38 TTABVUE 2.
15 70 TTABVUE.
16 67 TTABVUE 9.
17 Id.
18 30 TTABVUE. On May 13, 2013, Opposer filed another request for an extension of trial
dates with consent based on settlement negotiations. 32 TTABVUE.
Opposition No. 91199416
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geographic rights. Applicant inquired whether this was acceptable to Opposer and
stated that, if not, the opposition should proceed.19
We therefore do not think it makes sense to spend the
parties’ money and time preparing for and attending
mediation. If you feel differently (if you feel that your
client is now willing to settle on terms similar to those
outlined above), please let us know and we can reevaluate
whether mediation makes sense.
Otherwise, we anticipate that we should proceed with the
opposition proceedings.20
Applicant asserts that, in response, Opposer sought to reopen settlement
discussions.21 However, it does not appear that settlement negotiations had stopped
and, in its above-noted communication, Applicant did not clearly and
unambiguously state that regardless of the status of settlement negotiations,
Applicant was demanding that the outstanding discovery responses be served.
Moreover, there was no subsequent inquiry by Applicant to Opposer as to the status
of the discovery responses.
On October 2, 2013, Opposer wrote to Applicant terminating settlement
discussions and advising Applicant that it would serve its discovery responses on
October 4, 2013, which it did.22
We find that Opposer was acting under the reasonable belief that its time to
respond to Applicant’s requests for admission was suspended pending settlement

19 Applicant’s Brief (67 TTABVUE 9) referencing Applicant’s October 2, 2013 motion to
compel (37 TTABVUE 59).
20 37 TTABVUE 59.
21 Id.
22 69 TTABVUE 8-9.
Opposition No. 91199416
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negotiations. In view thereof, Opposer’s October 4, 2013 responses were timely and,
therefore, Opposer’s motion to withdraw and amend the admissions is moot.23
D. Applicant’s objection to Opposer’s second notice of reliance.24
On April 10, 2014, during Opposer’s time to introduce rebuttal testimony and
evidence, Opposer filed a notice of reliance on a copy of a petition for cancellation in
Western States Lodging and Management, L.C. v. Senior Lifestyle Corp.,
(Cancellation No. 92049049) printed from the USPTO electronic database as an
admission against interest purportedly to prove that the word “Legacy” is the
dominant portion of Applicant’s mark.
Applicant lodged an objection to Opposer’s notice of reliance on the ground that
the petition for cancellation constitutes improper rebuttal.25 Applicant asserts that
Opposer offered the evidence in support of its case-in-chief, rather than to rebut any
evidence proffered by Applicant.26 In response, Opposer argues that it introduced
the petition for cancellation to discredit the probative value of the third-party use of
marks comprising in whole or in part the word “Legacy.”27

23 Even if we did not find Opposer’s responses to be timely, we would accord limited
probative value to Opposer’s purported admissions because they would be technical
admissions obtained only because Opposer failed to respond timely to Applicant's requests
for admission. Moreover, as discussed below, because the evidence regarding the likelihood
of confusion analysis does not corroborate the essence of the admissions, we would not find
such technical admissions to favor either party on the question of likelihood of confusion.
See Duramax Marine LLC v. R.W. Fernstrum & Co., 80 USPQ2d 1780, 1796 n. 25 (TTAB
2006).
24 54 TTABVUE.
25 67 TTABVUE 67.
26 67 TTABVUE 68.
27 69 TTABVUE 19.
Opposition No. 91199416
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The similarity or dissimilarity of the marks in their entireties in terms of
appearance, sound, connotation and commercial impression is one of the likelihood
of confusion factors. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973). As such, evidence regarding whether a portion of Applicant’s
marks is more dominant than other parts of the marks in determining whether the
marks at issue are similar or dissimilar should be proffered by Opposer as part of
its case-in-chief, not in rebuttal to evidence that shows that the common portion of
the marks at issue is extensively used by third parties. Accordingly, Applicant’s
objection is sustained and we do not consider the petition for cancellation proffered
in Opposer’s notice of reliance.
E. Other objections to evidence.
The parties have lodged numerous other objections. None of the evidence sought
to be excluded is outcome determinative. Moreover, the Board is capable of
weighing the relevance and strength or weakness of the objected-to testimony and
evidence, including any inherent limitations, and this precludes the need to strike
the testimony and evidence. Given these facts, coupled with the number of
objections, we see no compelling reason to discuss the specific objections in detail.
As necessary and appropriate, we will point out any limitations applied to the
evidence or otherwise note that the evidence cannot be relied upon in the manner
sought. We have considered all of the testimony and evidence introduced into the
record. In doing so, we have kept in mind the various objections raised by the
Opposition No. 91199416
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parties and we have accorded whatever probative value the subject testimony and
evidence merit.
II. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), Applicant’s application files.
A. Opposer’s testimony and evidence.
1. Notice of reliance on the following items (44 TTABVUE)
a. Copies of Opposer’s pleaded registrations printed from the
electronic database of the USPTO for Registration Nos. 1847147, 1574033, and
1574033 purportedly showing the current title to and status of the registrations;28
b. Copies of the prosecution file histories for Registration Nos.
1847147, 1574033, and 1574033;29
c. A copy of a certification by the State of Oregon Office of the
Secretary of State of a copy of the Articles of Amendment filed April 5, 2010
changing the name of Legacy Health System to Legacy Health;30
d. Dictionary definitions;31
e. Excerpts from Opposer’s website;32
f. News articles referencing Opposer;33

28 44 TTABVUE 11-12, 66-68, 119-121. See the discussion on standing below.
29 44 TTABVUE 13-64, 69-117, 122-182,
30 44 TTABVUE 184-194.
31 44 TTABVUE 195-223.
32 44 TTABVUE 224-247.
33 44 TTABVUE 249-286.
Opposition No. 91199416
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g. U.S. Department of Education, National Center for Education
for Statistics publication entitled “The Health Literacy of America’s Adults”
(2003);34 and
h. U.S. Department of Health and Human Services report entitled
“National Action Plan to Improve Health Literacy” (2010);35
2. Testimony deposition of Wayne Clark, Opposer’s Vice President of
Marketing and Community Relations, with attached exhibits;36
3. Testimony deposition of Patricia Newton, M.D., Opposer’s Director of
Geriatric Medicine and Director of Medical Ethics, with attached exhibits;37
4. Testimony deposition of Kathy Slininger, Opposer’s Accounting
Manager;38 and
5. Discovery deposition of Paul Fairholm, a partner in Applicant, with
attached exhibits.39
B. Applicant’s testimony and evidence.
1. Notice of reliance on the following items:40

34 44 TTABVUE 287-362.
35 44 TTABVUE 363-442.
36 55 TTABVUE.
37 58 TTABVUE.
38 59 TTABVUE.
39 60 TTABVUE.
40 Applicant proffered a copy of the declaration of Opposer’s Vice President and Chief Legal
Officer and Compliance Officer with attached exhibits filed in a district court action in
support of a motion to dismiss. 51 TTABVUE 220-241. “The term ‘official records’ as used in
37 CFR § 2.122(e) refers not to a party's company business records, but rather to the
records of public offices or agencies, or records kept in the performance of duty by a public
officer.” TBMP § 704.07 (June 2014 ). See also, Brooks v. Creative Arts By Calloway LLC, 93
Opposition No. 91199416
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a. Excerpts from third-party websites of companies using the word
“Legacy” as part of their names;41
b. Copies of third-party registrations consisting of the word
“Legacy” as part of the mark;42
c. An excerpt from Opposer’s website;43
d. An excerpt from the Google Maps website;44
e. Excerpts from various Wikipedia entries;45 and
f. Tables from various websites purportedly to evidence health
care expenditures in the United States;46
g. Copies of Opposer’s licenses with Texas Regional Heart Center,
P.A. and Beacon Communities, Inc. and a settlement agreement with Legacy
Hospital Partners, Inc.;47

USPQ2d 1823, 1826 (TTAB 2010) (applicant's copies of legal briefs that do not reflect they
were received by court not admissible under notice of reliance), aff’d on other grounds sub
nom, Creative Arts by Calloway, LLC v. Brooks, Civ. No. 09-cv-10488 (CS) (SDNY Dec. 27,
2012), dismissed, No. 13-147 (unpublished) (2d Cir. March 7, 2013); 7-Eleven, Inc. v.
Wechsler, 83 USPQ2d 1715, 1717 n.3 (TTAB 2007) (opposer’s file copy of documents from
Board proceeding, such as applicant’s opposition brief to opposer's summary judgment
motion, do not constitute official records); Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 1233
(TTAB 1992) (party's own file copies of documents from a Board proceeding are not official
records); Conde Nast Publications Inc. v. Vogue Travel, Inc., 205 USPQ 579, 580 n.5 (TTAB
1979) (official records are records prepared by a public officer). Because the declaration was
not from the court records, it is not an official record that may be filed through a notice of
reliance. Accordingly, the declaration has not been properly made of record and we have not
given it any consideration.
41 48 TTABVUE, 49 TTABVUE, and 50 TTABVUE.
42 51 TTABVUE 3-68.
43 51 TTABVUE 70.
44 51 TTABVUE 71-74.
45 51 TTABVUE 75-145.
46 51 TTABVUE 146-219.
Opposition No. 91199416
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h. Opposer’s responses to Applicant’s first set of requests for
admission;48
i. Opposer’s responses to Applicant’s second set of requests for
admission;49 and
2. Testimony deposition of Paul Fairholm.50
Opposer lodged an objection to documents printed from the Internet introduced
into evidence through Applicant’s notice of reliance on the ground that Applicant
did not include the URL and date they were printed as part of the Internet
documents.51 See Safer v. OMS Investments, Inc., 94 USPQ2d 1031, 1039 (TTAB
2010) (“if a document obtained from the Internet identifies its date of publication or
date that it was accessed and printed, and its source (e.g., the URL), it may be
admitted into evidence pursuant to a notice of reliance in the same manner as a
printed publication in general circulation in accordance with Trademark Rule
2.122(e).”).
Applicant seeks to submit by notice of reliance Internet
documents that do not appear to have been
contemporaneously printed with their date and source
information appearing on the face of the document.
Rather, it appears that the source and date information
for Applicant’s Exhibits 1-45, 60, 78, 102 (pp 3-4), 146-148
was stamped on the documents by Applicant as part of
the process of marking them with exhibit numbers and, as
such, constitute hearsay. Because the underlying

47 51 TTABVUE 227-240.
48 51 TTABVUE 287-341.
49 51 TTABVUE 342-361.
50 53 TTABVUE.
51 63 TTABVUE 30.
Opposition No. 91199416
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documents attached as Exhibits 1-45, 60, 78, 102 (pp 3-4),
146-148 to Applicant’s Notice of Reliance are not self-
authenticating, they cannot be submitted via notice of
reliance under 37 CFR § 2.122(e).52
The Board prefers that the URL and date the documents were printed appear as
part of the document itself and not information added later by the offering party as
done in this case by Applicant’s counsel. Nevertheless, the subsequent addition of
the URL and date the document was printed permits the nonoffering party to verify
the document through the date and source information and to rebut the probative
value of the document by showing that there has been a significant change to the
document as submitted by the offering party. TBMP § 704.08(b).
Opposer’s objection is overruled.
III. Standing
Opposer introduced into evidence copies of Registration No. 1847147 for the
mark LEGACY, Registration No. 1574033 for the mark LEGACY HEALTH
SYSTEM, and Registration No. 1574034 for the mark LEGACY and design printed
from the USPTO electronic database.53 The copies of the registrations showed the
current status of the registrations but displayed title in Legacy Health System, not
Opposer Legacy Health. However, Opposer also introduced through its notice of
reliance its Articles of Amendment filed April 5, 2010 changing the name of Legacy
Health System to Legacy Health.54 In addition, Wayne Clark, Opposer’s Vice

52 Id.
53 44 TTABVUE 11-12, 66-68, 119-121,
54 44 TTABVUE 184-194.
Opposition No. 91199416
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President of Marketing and Community Relations, identified the registrations as
Opposer’s registrations.55 Applicant, in its brief, did not challenge Opposer’s
standing.
Since at all times the registrations were owned by Opposer either as Legacy
Health Systems or Legacy Health, we find that, through the totality of the evidence,
Opposer has established its ownership of its pleaded registrations. Because Opposer
has made of record its pleaded registrations, Opposer has established its standing.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.
2000); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982).
IV. Priority
Because Opposer has made of record its pleaded registrations, Section 2(d)
priority is not an issue in the opposition as to the marks and the services covered by
the pleaded registrations. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108, 110 (CCPA 1974).
V. Likelihood of confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative 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., 177 USPQ at 567. See
also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed.
Cir. 2003). In any likelihood of confusion analysis, two key considerations are the

55 55 TTABVUE 23, 24 and 25.
Opposition No. 91199416
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similarities between the marks and the similarities between the services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 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.”). These factors, and any other relevant du Pont factors in the
proceeding now before us, will be considered in this decision.
A. The similarity or dissimilarity and nature of the services; established, likely-
to-continue channels of trade and classes of consumers.

We must consider the services as they are described in Applicant’s applications
and Opposer’s pleaded registrations. Octocom Systems, Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority
is legion that the question of registrability of an applicant's mark must be decided
on the basis of the identification of goods set forth in the application regardless of
what the record may reveal as to the particular nature of an applicant's goods, the
particular channels of trade or the class of purchasers to which the sales of goods
are directed”). See also Paula Payne Products v. Johnson Publishing Co., 473 F.2d
901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the issue of
likelihood of confusion must be decided on the basis of the respective descriptions of
goods”). We also do not read limitations into the identification of services. Squirtco
v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983) (“There is no
specific limitation and nothing in the inherent nature of Squirtco’s mark or goods
that restricts the usage of SQUIRT for balloons to promotion of soft drinks. The
Board, thus, improperly read limitations into the registration”).
Opposition No. 91199416
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Applicant’s services in Class 44, “providing physical rehabilitation, health care
services and skilled nursing services to seniors and seniors with Alzheimer's in
assisted living facilities, congregate living facilities, and retirement homes,” are in
part, legally identical to Opposer’s “healthcare services” because Opposer’s
healthcare services are broad enough to encompass Applicant’s health care services
to seniors and seniors with Alzheimer’s in assisted living facilities, congregate living
facilities, and retirement homes. It is sufficient for a finding of likelihood of
confusion if relatedness is established for any item encompassed by the
identification of services within a particular class in the application. Tuxedo
Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986 (CCPA
1981); Inter IKEA Sys. B.V. v. Area, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014);
General Mills Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d 1584, 1588
n.1 (TTAB 2011), judgment set aside on other grounds, 110 USPQ2d 1679 (TTAB
2014) (non-precedential); Baseball America Inc. v. Power play Sports Ltd., 71
USPQ2d 1844, 1847 n.9 (TTAB 2004). Once likely confusion is found as to one item,
registration is refused as to the entire class. Id.
Applicant’s Class 44 services are limited to “seniors.” However, because
Opposer’s description of services is not limited to any particular group, it is
presumed that Opposer’s healthcare services move in all channels of trade normal
for those services, and that they are available to all classes of purchasers for those
services, including seniors. See Paula Payne Products Co. v. Johnson Publishing
Co., 473 F.2d 901, 177 USPQ 76 (CCPA 1973); Balart Co. v. Camera-Mart, Inc., 258
Opposition No. 91199416
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F.2d 956, 119 USPQ 139 (CCPA 1958); In re Link vest S.A., 24 USPQ2d 1716, 1716
(TTAB 1992). Moreover, because the services described in Applicant’s Class 44
identification of services and Opposer’s identification of services are in part, legally
identical, we must presume that the channels of trade and classes of purchasers are
the same. See In re Veteran Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012) (even though there was no evidence regarding channels of trade and classes of
consumers, the Board was entitled to rely on this legal presumption in determining
likelihood of confusion); In re Yalata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721,
723 (CCPA 1968) (where there are legally identical goods, the channels of trade and
classes of purchasers are considered to be the same); American Lebanese Syrian
Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022,
1028 (TTAB 2011).
The analysis with respect to Applicant’s services in Class 43, “providing assisted
living facilities; providing assisted living facilities for individuals with Alzheimer's
or related dementia; providing congregate living facilities for independent seniors;
continuing care retirement homes; providing age-restricted congregate living
facilities in apartments,” is not as straight forward. It requires an analysis of the
relationship between “healthcare services” and the above-noted activities in
Applicant’s description of services.
“Healthcare” is defined as follows:
The prevention, treatment, and management of illness
and the preservation of mental and physical well-being
Opposition No. 91199416
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through the services offered by the medical and allied
health professions.56
Wayne Clark testified that healthcare services “covers all forms of health care,
from inpatient to outpatient to pharmacy to long-term care, to extended care,
laboratory services, imaging, surgery, doctors of course, and other providers.”57 In
this regard, Opposer provides “a wide range of health services to its market,”58
including rehabilitation services and physical therapy.59 In addition, as part of its
healthcare services, Opposer operates health care facilities,60 including the
LEGACY Hopewell House Hospice Center, an inpatient hospice facility.61 Further,
Opposer uses its LEGACY and design mark in connection with its St. Aidan’s Place
residence for individuals with Alzheimer’s disease or similar dementias62 and for
Trinity Place, a daycare program for individuals with Alzheimer’s disease and other
memory disorders.63 St. Aidan’s Place provides assisted living for individuals who
can no longer live at home because of memory loss, confusion, and other difficulties
and “who require assistance with daily activities, but don’t require nursing care.”64

56 THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (5th ed. 2011). 44
TTABVUE 199. See also MERRIAM-WEBSTER (m-w.com) at 44 TTABVUE 200.
57 55 TTABVUE 128.
58 55 TTABVUE 18-19.
59 55 TTABVUE 128-129.
60 55 TTABVUE 18-19.
61 55 TTABVUE 45-46 and 237.
62 55 TTABVUE 60 and 262-269.
63 55 TTABVUE 63-64 and 270-271.
64 55 TTABVUE 264.
Opposition No. 91199416
- 20 -

According to Mr. Clark, Opposer’s healthcare services are rendered through
“hospitals, physician offices, outpatient facilities such as imaging and laboratory,
home care, hospice,” and “retirement [communities] if they were nursing home-type
communities” and assisted living facilities.65
Paul Fairholm, one of Applicant’s partners, testified that Applicant’s home
healthcare services entails providing care for people in their homes, its hospice care
provides end-of-life care, either in facilities or in people’s homes,66 and its senior
living business involves providing “housing to seniors in the assisted living,
independent living, skilled nursing, and multifamily, age-restricted, for seniors.”67
Applicant does not provide nursing, pharmacy, “clinic and hospital-type services” as
part of its senior living services.68 Mr. Fairholm explained the differences between
the services of the parties in the following testimony:
We are a senior housing company. We are not medically
based. We are nursing or what we call activities of daily
living based. We don't have clinics. We don't have
laboratories. We don't have on-site pharmacies. We don't
have surgical suites. We don't have doctors that run the
show. We are apartments. We have nurses, but not 24
hours a day. Most of our care is provided by certified
nursing assistants, so the skill level is different between
our facilities. Our residents are there for longer periods of
time. We call them residents, not patients. There's a lot of
-- those are the kinds of differences, but I think there are
some very distinct differences between our services.69

65 55 TTABVUE 120.
66 60 TTABVUE 15-16.
67 60 TTABVUE 17.
68 53 TTABVUE 10-12.
69 53 TTABVUE 27.
Opposition No. 91199416
- 21 -

On the other hand, Mr. Fairholm testified that Applicant provides healthcare
services to its residents.
Q. Does Western States provide health care services to
residents of its facilities?
A. We provide nursing services, assistance with
activities of daily living.
Q. Would those be considered health care services?
A. Yes.
Q. Do your residents -- do the residents of your
facilities ever receive health care services from
outside doctors?
A. Yes.
Q. Do they receive those services within the facilities?
A. Occasionally but not typically.
Q. And in those situations the doctor or the health
care provider would come to your facility and see
your residents or your resident at the facility?
A. Again, that's not normal. They usually go to the
doctor's office, but it has occurred.70
Because healthcare includes “the preservation of mental and physical well-being
through the services offered by the medical and allied health professions,” which
may include extended care and the care of individuals with Alzheimer’s disease and
other dementia, and because Applicant’s services include skilled nursing services
for seniors, we find that Applicant’s services identified as “providing assisted living
facilities; providing assisted living facilities for individuals with Alzheimer's or
related dementia; providing congregate living facilities for independent seniors;

70 53 TTAVUE 28-29.
Opposition No. 91199416
- 22 -

continuing care retirement homes; providing age-restricted congregate living
facilities in apartments” are related to Opposer’s “healthcare services.”
B. The conditions under which and buyers to whom sales are made, i.e.,
“impulse” vs. careful sophisticated purchasing.

Paul Fairholm described the circumstances under which a person decides to
become a resident or user of Applicant’s services, in the testimony presented
below:71
A person considering Legacy House typically is someone
who is considering assisted living services. Once they
have decided they need those kinds of services, they will
make an inquiry. After the inquiry is made, they will
typically tour the facility with an influencer, which could
be a family member or someone they trust, and then most
of the time they investigate other competitive-type
facilities, and typically they will do two to four visits
before making a decision. And a visit -- a tour would be of
the room, of the amenities, of the services offered within
the community.72
* * *
Our research of our residents that have come into our
facilities indicate that that -- for an assisted living service,
which is Legacy House, is typically about 30 days before
they -- from the time they tour to the time they make a
decision.73
* * *

71 Opposer objected to Mr. Fairholm’s testimony “regarding the actual process ‘by which a
person becomes a resident or user of’ one of the facilities operated by Applicant under the
applied-for marks” on the ground that it is not relevant. 63 TTABVUE 30. We disagree. The
testimony is relevant to the degree of care potential users exercise in making their
purchasing decision. Opposer’s objection is overruled.
72 53 TTABVUE 12. “For assisted living there is typically an influencer, which is normally a
child of the resident. For congregate care and independent living, typically the resident
makes the initial contact and then brings in the influencer, which, again, is a child or
trusted person.” 53 TTABVUE 15.
73 53 TTABVUE 13.
Opposition No. 91199416
- 23 -

We will discuss types of apartments. We will discuss the
amenities offered within the building. We will discuss the
pricing for the base -- the base pricing and any ancillary
or additional pricing on top of that. We will discuss
additional services, for instance, transportation, those
kinds of services.74
* * *
I think they are not only deciding on the facility they
choose, there's the financing of that. So typically a home
sale or a divesting of a major asset is important. That's
how they afford it. So that's another decision they would
have to make. And certainly our residents are older, and
so health and ability to care for self are major decisions in
that process.75
* * *
Each resident is unique and they have unique care issues.
For example, a diabetic would want to know that we could
provide the diabetic care that was needed long term.
Some residents have mobility issues, so location within
the building and how they can move around the building
would be a critical decision in making -- determining
services and needs. Finances, obviously, would be very
important. Our staff and staffing patterns would be very
important. Those would be kinds of things that they
would consider.76
Further, the units in Applicant’s facilities are expensive. LEGACY HOUSE
studio apartments in non-memory care start at $2,150 per month, while studio
apartments for memory care start at $4,000 per month. There may be additional
fees for various levels of care which can add $600 to $1,200 per month.77

74 53 TTABVUE 13.
75 53 TTABVUE 17.
76 53 TTABVUE 18.
77 53 TTABVUE 15-16.
Opposition No. 91199416
- 24 -

Our average rate in a Legacy House for base fee is about
$3200 a month for base fee, so 32 times 12 would be 36 to
40,000 a year. And then the ancillary charge, probably an
additional 700 to a $1,000 a month, so another 10 to
$12,000 on top of that for a Legacy House.78
While the decision-making for the LEGACY VILLAGE services has similarities
with the LEGACY HOUSE decision-making process, because LEGACY VILLAGE
includes independent living facilities in addition to assisted living facilities, there
are some differences in the purchasing decision. “An independent living is more of a
choice than a need driven, and so they take more time, and our research has
indicated they take about six months from inquiry to move-in to make that
decision.”79 The purchasing decision with respect to LEGACY RETIREMENT
RESIDENCE services is similar to the process for LEGACY VILLAGE services.80
Opposer, on the other hand, argues that “the relevant purchasers of health care
services are members of the general public, which encompasses consumers of all
levels of care,” citing the testimony of Wayne Clark.81 Opposer further argues that
consumers of health care in the United States display low levels of “health literacy,”
with most consumers operating at a sixth-grade level.82
Assuming arguendo that Opposer is correct and that the average consumer of
healthcare services in the United States does not exercise a high degree of care in

78 53 TTBVUE 16.
79 53 TTABVUE 21. People thinking about selecting LEGACY VILLAGE services are also
typically accompanied by a child or trusted friend. Id.
80 53 TTABVUE 22-23.
81 63 TTABVUE 24 and 55 TTABVUE 121.
82 63 TTABVUE 25 and 55 TTABVUE 122-125.
Opposition No. 91199416
- 25 -

making decisions regarding his/her healthcare provider, the relevant class of
consumers in our analysis is the more limited class of Applicant’s potential
consumers. They are the only consumers and potential consumers who will
encounter both marks under marketplace conditions. Because the evidence
establishes the consumers and potential consumers of Applicant’s services exercise
a high degree of care in making their purchasing decisions, including the use of an
“influencer” in helping to make the decision, we find that this du Pont factor weighs
against finding that there is a likelihood of confusion.
C. The number and nature of similar marks in use in connection with similar
services.

One of Applicant’s main arguments is that Opposer’s LEGACY marks are weak
marks entitled to only a narrow scope of protection or exclusivity of use because the
word “Legacy” has been used by numerous third parties in connection with health
care related services.83 To support this argument, Applicant introduced into
evidence extensive excerpts from third-party websites summarized in the table
below.84

83 67 TTABVUE 15-24.
84 The third-party registrations submitted by Applicant at 51 TTABVUE 3-68 have limited
probative value in relation to the strength of Opposer’s marks because the registrations are
not evidence that the registered marks are in use on a commercial scale or that the public
has become familiar with them. See Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004,
177 USPQ 462, 463 (CCPA 1973) (the purchasing public is not aware of registrations
reposing in the U.S. Patent and Trademark Office); Productos Lacteos Tocumbo S.A. de C.V.
v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934 (TTAB 2011). See also Olde Tyme
Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992) (“As to
strength of a mark, however, registration evidence may not be given any weight.”); In re
Hub Distributing, Inc., 218 USPQ 284, 285 (TTAB 1983) ) (“third party registrations in this
Office, absent evidence of actual use of the marks subject of the third-party registrations, …
are entitled to little weight on the question of likelihood of confusion.”). Accordingly, in
Opposition No. 91199416
- 26 -

Third Party Location Service TTABVUE

Legacy Community
Health Services85

Houston,
Texas
Primary healthcare
services
48 TTABVUE 20

Legacy Heart Care Texas Cardiovascular
medical services
50 TTABVUE 2

Legacy Heart
Center
Plano, Texas Cardiovascular care 48 TTABVUE 57

Legacy Medical
Village86
Plano, Texas Comprehensive
healthcare services
48 TTABVUE 27

The Legacy At
Home
Plano, Texas Home healthcare
services
49 TTABVUE 184

Legacy Home
Health Hospice
Somewhere in
Texas
Home healthcare
services and hospice
services
48 TTABVUE 41

Legacy ER Frisco, Texas Emergency medical
care services
48 TTABVUE 47

Legacy Male
Health Institute,
P.A.
Frisco, Texas Vasectomy reversal
surgery and
infertility treatment
services
49 TTABVUE 10

Legacy Health
Services
Northeast Ohio Long term care and
rehabilitation
services
48 TTABVUE 21

analyzing the strength of Opposer’s marks, we focus on the evidence of actual third-party
use.
85 Applicant also submitted an excerpt from this third party at 50 TTABVUE 6.
86 The Children’s Medical Center website advertises Children’s at Legacy in Plano, Texas.
48 TTABVUE 29. It is not clear whether this is part of the Legacy Medical Village or
whether it is an independent facility.
Opposition No. 91199416
- 27 -

Third Party Location Service TTABVUE

Legacy Plastic
Surgeons
Akron, Ohio Plastic surgery
services
49 TTABVUE 3

Legacy Medical
Equipment
Troy, Ohio Providing home
medical equipment
49 TTABVUE 169

Legacy Fort Smith
Health and
Rehabilitation
Center
Fort Smith,
Arkansas
Long term care and
rehabilitation
services
48 TTABVUE 22

Legacy Healthcare Southern
California
Nursing and
rehabilitation
services
48 TTABVUE 23

Legacy Medical
Services
Los Angeles,
California
Medical concierge
services
49 TTABVUE 7

One Legacy California Organ and tissue
donation services
49 TTABVUE 178

Legacy Healthcare
Services
Raleigh, NC
Providing services
in 8 unidentified
states
Physical therapy,
occupational
therapy,
speech/language
pathology and
wellness services for
seniors
48 TTABVUE 25

Opposition No. 91199416
- 28 -

Third Party Location Service TTABVUE

Legacy Health and
Rehabilitation
Pleasant Grove,
Alabama
Long term care and
rehabilitation
services
48 TTABVUE 26

Legacy Hospice Livingston,
Alabama
Hospice care 48 TTABVUE 30

Legacy Medical
Center
Orlando, Florida Primary care
healthcare services
48 TTABVUE 28

Legacy Hospice87 Charlottesville,
Virginia
Hospice care 48 TTABVUE 33

Legacy Hospice
Inc.
Virginia Hospice care 48 TTABVUE 37

Legacy Home
Health & Hospice
Idaho Home health care
and hospice services
48 TTABVUE 36

The Legacy Rehab
& Care Center
Bullhead City,
Arizona
Assisted living
services, including
long term care,
rehabilitative care,
and Alzheimer’s and
dementia care
48 TTABVUE 55

Legacy Hospice Arizona Hospice care 48 TTABVUE 39

Legacy OB/GYN
Clinic
American Fork,
Utah
Women’s healthcare
specializing in high-
risk pregnancy and
deliver and
gynecologic surgery
48 TTABVUE 44

Legacy Vein Clinic Mishawaka,
Indiana
Vein care services 48 TTABVUE 45

87 Applicant also submitted this excerpt at 49 TTABVUE 9.
Opposition No. 91199416
- 29 -

Third Party Location Service TTABVUE

The Living Legacy
Foundation
Maryland Organ and tissue
donation services
49 TTABVUE 180

Legacy Home Care Suburban
Maryland,
Washington D.C.
metropolitan area
Home healthcare
services
48 TTABVUE 49

Legacy HomeCare,
LLC
Somewhere in
Tennessee
Long term care
services and home
health care services
48 TTABVUE 52

St. Mary’s Legacy
Clinic
Knoxville,
Tennessee
Healthcare services 50 TTABVUE 69

Legacy Pediatrics Rochester, New
York
Pediatric medical
services
50 TTABVUE 72

Legacy Clinical
Consultants
Chicago, Illinois Psychology and
social work services
50 TTABVUE 79

Silver Legacy
Casino
Reno, Nevada Health club and spa
services
49 TTABVUE 19

Legacy Eyecare Omaha, Nebraska Eye and vision care
services
48 TTABVUE 50

Legacy Hospice Colorado Hospice care 48 TTABVUE 35

LifeLegacy
Foundation
Nationwide Promoting human
tissue donation
49 TTABVUE 21

The Mayo Legacy Nationwide Charitable
fundraising services
50 TTABVUE 70

Legacy Nationwide Reducing tobacco
use
49 TTABVUE 11

Legacy Nursing
and Rehabilitation
Unidentified Long term care and
rehabilitation
services
48 TTABVUE 54
Opposition No. 91199416
- 30 -

Third Party Location Service TTABVUE

Legacy Surgery
Center
Unidentified Outpatient surgical
services
49 TTABVUE 5

Legacy Physicians
Group
Unidentified Long term care
services
49 TTABVUE 5

Legacy Care Home Unidentified Home nursing care
services
49 TTABVUE 8

Legacy Healthcare
Consultants
Strategic and
financial planning
services for
hospitals, health
systems, academic
medical centers and
physician groups
50 TTABVUE 81

EquiLife Legacy
Series
Life insurance
services
49 TTABVUE 110

Legacy Care Tax deferred
annuity services
49 TTABVUE 163

Pan-American
Legacy Value
Insurance plan 49 TTABVUE 188

The table below shows third-party use of the word “Legacy” in connection with
dental services:
Third party Location TTABVUE

Legacy Dental California 49 TTABVUE 165

Legacy Orthodontics Tustin, California 50 TTABVUE 66

Legacy Smiles Idaho 49 TTABVUE 173

Legacy Dental Idaho Falls, Idaho 50 TTABVUE 54

Legacy Hill Dentistry Smyrna, Tennessee 50 TTABVUE 7
Opposition No. 91199416
- 31 -

Third party Location TTABVUE

Legacy Dental Salt Lake City, Utah 50 TTABVUE 9

Legacy Pediatric Dentistry Layton, Utah 50 TTABVUE 12

Legacy Dental Team Boynton Beach, Florida 50 TTABVUE 13

Legacy Dental Care Ballwin, Missouri 50 TTABVUE 15

Legacy Orthodontics Waterloo, Columbia, and
Florissant, Missouri
50 TTABVUE 57

Legacy Dental Group Glendale, Arizona 50 TTABVUE 17

Legacy Dental Group Canton, Texas 50 TTABVUE 19

Legacy Dental Dallas, Texas 50 TTABVUE 23

Legacy Dental Burleson, Texas 50 TTABVUE 49

Legacy Dental Albuquerque, New Mexico 50 TTABVUE 21

Legacy Dental Group PLLC Bremerton and Silverdale,
Washington
50 TTABVUE 27

Legacy Smiles Peoria, Illinois 50 TTABVUE 30

Legacy Orthodontics Columbia, Illinois 50 TTABVUE 60

Legacy Dental Arts Eagle River, Alaska 50 TTABVUE 31

Legacy Dental Group Birmingham, Michigan 50 TTABVUE 34

Legacy Dental Omaha, Nebraska 50 TTABVUE 37

Legacy Dental Care Blaine, Minnesota 50 TTABVUE 42

Legacy Family Dentistry Gainesville, Georgia 50 TTABVUE 52

Legacy Orthodontics Kennesaw, Georgia 50 TTABVUE 55

Legacy Orthodontics Leesburg, Virginia 50 TTABVUE 61
Opposition No. 91199416
- 32 -

The table below shows third-party use of the word “Legacy” in connection with
products:
Third Party Goods TTABVUE

CADD-Legacy Pumps Medical infusion pump 49 TTABVUE 22

NexGen Legacy Constrained
Condylar Knee
Artificial Knee 49 TTABVUE 93

Legacy Reformer Pilates equipment 49 TTABVUE 171

Legacy Dental Dental equipment 50 TTABVUE 51

Legacy Medikin Teaching
Aids
Teaching aids (e.g., dolls) to
teach children about medical
procedures
50 TTABVUE 82

The following table shows examples of third parties using the word “Legacy” as
part of a tagline:
Third Party Location Service TTABVUE

Catholic Health
Initiatives

A spirit of
innovation, a
legacy of care
Texas, Tennessee,
Colorado, Kentucky,
Kansas, Nebraska, Ohio,
New Jersey, Iowa,
Maryland, Minnesota,
Pennsylvania, Missouri
Washington, Wisconsin,
Oregon, North Dakota,
and Arkansas
Healthcare
services
49 TTABVUE 52

Genesis

Your legacy,
enhancing life
through knowledge
Memphis, Tennessee Body donor
program
49 TTABVUE 162

Opposition No. 91199416
- 33 -

Third Party Location Service TTABVUE

Wheeling Hospital

A Tradition of
Excellence. A
Legacy of Caring
Wheeling, West Virginia Healthcare
services
49 TTABVUE 182

This evidence tells us that there are numerous third parties using the word
“Legacy” as part of their service marks and/or trade names in connection with
healthcare services. However, it does not tell us anything about the extent of the
usage and whether consumers in the specific trading areas are likely to encounter
overlapping uses of “Legacy.” Nevertheless, the third-party use is sufficient to show
that the word “Legacy” has been extensively adopted and used as a service mark
and trade name in connection with healthcare services and services related to
healthcare. As a result, a mark comprising, in whole or in part, the word “Legacy”
in connection with healthcare services should be given a restricted scope of
protection. In other words, Opposer’s LEGACY marks are not entitled to such a
broad scope of protection as to bar the registration of every mark comprising, in
whole or in part, the word “Legacy”; it will only bar the registration of marks “as to
which the resemblance to [Opposer’s marks] is striking enough to cause one seeing
it to assume that there is some connection, association or sponsorship between the
two.” Pizza Inn, Inc. v. Russo, 221 USPQ 281, 283 (TTAB 1983). See also Anthony’s
Pizza & Pasta International Inc. v. Anthony’s Pizza Holding Co., 95 USPQ2d 1271,
1278 (TTAB 2009), aff’d unpublished, No. 2010-1191 (Fed Cir. November 18, 2010).
Compare In re Broadway Chicken, Inc., 38 USPQ2d 1559, 1566 (TTAB 1996) (wide-
Opposition No. 91199416
- 34 -

spread third-party use supported the finding that the marks were not likely to
cause confusion because “at least half, if not more, of the third-party telephone
directory listings of enterprises whose trade name names/marks contain the term
BROADWAY have listed addresses on a street, road, avenue, etc., named
‘BROADWAY.’ To purchasers familiar with these enterprises, the term
BROADWAY will have geographic significance”).
D. The similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation, and commercial impression.

We now turn to the du Pont likelihood of confusion factor focusing on the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177
USPQ at 567. In a particular case, “two marks may be found to be confusingly
similar if there are sufficient similarities in terms of sound or visual appearance or
connotation.” Kabushiki Kaisha Hattori Seiko v. Satellite Int’l, Ltd., 29 USPQ2d
1317, 1318 (TTAB 1991), aff’d mem., 979 F.2d 216 (Fed. Cir. 1992) (emphasis in the
original; citation omitted). See also Eveready Battery Co. v. Green Planet Inc., 91
USPQ2d 1511, 1519 (TTAB 2009), citing Krim-Ko Corp. v. The Coca-Cola Co., 390
F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in
either form, spelling or sound alone is likely to cause confusion.”).
In comparing the marks, we are mindful that where, as here, the services are in
part identical, the degree of similarity necessary to find likelihood of confusion need
not be as great as where there is a recognizable disparity between the services.
Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713,
Opposition No. 91199416
- 35 -

1721 (Fed. Cir. 2012); Century 21 Real Estate Corp. v. Century Life of America, 970
F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enterprises Inc. v. Rind,
85 USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough HealthCare Products Inc. v.
Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007).
The test is not whether the marks can be distinguished when subjected to a side-
by-side comparison, but rather whether the marks are sufficiently similar in terms
of their overall commercial impression so that confusion as to the source of the
goods or services offered under the respective marks is likely to result. San
Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 196 USPQ
1, 3 (CCPA 1977); Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741
(TTAB 1991), aff'd unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). The proper
focus is on the recollection of the average customer, who retains a general rather
than specific impression of the marks. Winnebago Indus., Inc. v. Oliver & Winston,
Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106, 108 (TTAB 1975). Since the services involve providing health care and
services related to health care to seniors, the average customer must be considered
to be an ordinary senior member of the general public.
We focus our analysis of the similarities or dissimilarities of the marks on
Registration No. 1847147 for the mark LEGACY, in typed drawing format, for
“health care services” because that is the mark most likely to support a finding of
likelihood of confusion. That is, if confusion is likely between Opposer’s LEGACY
mark and Applicant’s marks, there is no need for us to consider the likelihood of
Opposition No. 91199416
- 36 -

confusion with Opposer’s other marks, while if there is no likelihood of confusion
between Opposer’s LEGACY mark and Applicant's marks, then there would be no
likelihood of confusion with Opposer’s other marks. See, e.g., In re Max Capital
Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
Applicant’s marks are LEGACY HOUSE, LEGACY VILLAGE, and LEGACY
RETIREMENT RESIDENCE. Applicant disclaimed the exclusive right to use the
word “House” because it merely describes the type of quarters where the services
are rendered and the term “Retirement Residence” because it merely describes the
type of facility where the services are rendered.88 It is well-settled that disclaimed,
descriptive matter may have less significance in likelihood of confusion
determinations. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has noted that
the ‘descriptive component of a mark may be given little weight in reaching a
conclusion on the likelihood of confusion.’”) (quoting In re National Data Corp., 753
F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985)); In re Dixie Rests. Inc., 105 F.3d
1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Code Consultants, Inc.,
60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in
creating the mark’s commercial impression”). Thus, the word “Legacy” is the
dominant portion of the marks LEGACY HOUSE and LEGACY RETIREMENT
RESIDENCE.

88 The June 8, 2008 Office Actions in Serial No. 77409675 for the mark LEGACY HOUSE
and in Serial No. 77409679 for the mark LEGACY RETIREMENT RESIDENCE.
Opposition No. 91199416
- 37 -

With respect to the mark LEGACY VILLAGE, the word “Village” is suggestive of
congregate living facilities as the word “Village” is defined as “small group of
dwellings in a rural area, usually ranking in size between a hamlet and a town.”89
Thus, the word “Legacy” also is the dominant element of the mark LEGACY
VILLAGE.
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 a consideration of the marks in their entireties. In re National
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
The significance of the word “Legacy” as the dominant element of Applicant’s
marks is further reinforced by its location as the first part of the marks. See Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is the most prominent part of the
mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the
first word to appear on the label); Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering
the marks, consumers will first notice the identical lead word); Presto Products Inc.
v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first
part of a mark which is most likely to be impressed upon the mind of a purchaser
and remembered”).

89 THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (5th ed. 2011). 44
TTABVUE 221.
Opposition No. 91199416
- 38 -

Applicant’s marks are similar to Opposer’s mark because they incorporate the
word Legacy. In similar circumstances, where a junior user has incorporated the
entire mark of the senior user, the Board has found that the marks are similar. See
In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010)
(applicant’s mark ML is similar to registrant’s mark ML MARK LEES); Coca-Cola
Bottling Co. of Memphis, Tennessee, Inc. v. Joseph E. Seagram and Sons, Inc., 526
F.2d 556, 188 USPQ 105 (CCPA 1975) (applicant’s mark BENGAL LANCER for
club soda, quinine water and ginger ale is likely to cause confusion with BENGAL
for gin); Johnson Publishing Co. v. International Development Ltd., 221 USPQ 155,
156 (TTAB 1982) (applicant’s mark EBONY DRUM for hairdressing and conditioner
is likely to cause confusion with EBONY for cosmetics); In re Cosvetic Laboratories,
Inc., 202 USPQ 842 (TTAB 1979) (applicant’s mark HEAD START COSVETIC for
vitamins for hair conditioners and shampoo is likely to cause confusion with HEAD
START for men’s hair lotion and after-shaving lotion). Services offered under
Applicant’s marks could appear to prospective purchasers to be a “Legacy” line of
congregate living facilities as an expansion of Opposer’s healthcare services.
The facts in this case differ from those in Knight Textile Corp. v. Jones
Investment Co., 75 USPQ2d 1313 (TTAB 2005), where the Board held that
applicant’s mark NORTON MCNAUGTON ESSENTIALS for women’s clothing is
not similar to opposer’s ESSENTIALS mark for identical goods. In Knight Textile
Corp., the Board found that the word “Essentials,” the word common to both marks,
is highly suggestive when used in connection with clothing. The Board relied on
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dictionary definitions of the word “Essentials” to find that the word “Essentials”
“connotes that the clothing items sold under the marks are basic and indispensable
components of, or ‘essentials’ of, one’s wardrobe.” Id. at 1316. Accordingly, the
Board concluded that the word “Essentials” in applicant’s mark NORTON
MCNAUGHTON ESSENTIALS contributed less to the commercial impression of
Applicant’s mark than NORTON MCNAUGHTON. Thus, the addition of the house
mark NORTON MCNAUGHTON to applicant’s mark NORTON MCNAUGHTON
ESSENTIALS was sufficient to distinguish the marks. Id. at 1315.
In the case currently before the Board, the common word “Legacy” is an
arbitrary rather than a suggestive term. The word “Legacy” is defined as follows:
1. Money or property give to another by will.
2. Something handed down from an ancestor or
predecessor or from the past: a legacy of religious
freedom.
3. An individual who is either an applicant to an
educational institution or a matriculated student and is
the child of an alumna or alumnus.90
The word “Legacy” is that portion of Applicant’s mark which creates its commercial
impression. The addition of the descriptive words “House” and “Retirement
Residence” and the suggestive word “Village” do not suffice to distinguish
Applicant’s marks from Opposer’s LEGACY mark.
Likewise, In re Broadway Chicken, Inc., supra, is inapposite. The record in
Broadway Chicken included numerous third-party registrations including the name

90 THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (5th ed. 2011).
44 TTABVUE 208. See also Merriam-Webster online (m-w.com) at 44 TTABVUE 209.
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“Broadway” and numerous directories listing numerous entities with the name
“Broadway” as part of the trade name. The Board noted that the record in
Broadway Chicken, like the record in this case, did not reveal the extent of use by
the third parties, that some of the businesses may be small enterprises in remote
locations that affected only a small portion of the purchasing public, and that some
of them may have gone out of business. 38 USPQ2d 1565 n. 16. However, the Board
was impressed by the magnitude of the third-party evidence which amounted to
hundreds of entities in multiple sources. Moreover, the Board found that (i) some of
the cities had more than one listing, 38 USPQ2d 1562, (ii) that the multiple sources
of the evidence corroborated each other, 38 USPQ2d at 1565, (iii) that “at least half,
if not more of the third-party telephone directory listings of enterprises whose trade
names/marks contain the term BROADWAY have listed addresses on a street,
avenue, etc., named ‘BROADWAY,’ 38 USPQ2d at 1566, (iv) that there is a
dictionary definition for BROADWAY defining it as “a street in New York City,
famous for its theaters, restaurants, and bright lights,” 38 USPQ2d at 1566, and (v)
that the Board takes “a somewhat more permissive stance with respect to the
introduction and evaluation of evidence in an ex parte proceeding than we do in an
inter partes proceeding.” 38 USPQ2d at 1565. Under these circumstances, the
Board in Broadway Chicken found the evidence of third-party use was sufficient,
“for purposes of an ex parte proceeding, to persuade us that confusion is not likely.”
38 USPQ2d at 1566.

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Under the circumstances presented in this case, we find that consumers will
focus on the word “Legacy” when referring to the marks of the parties and that the
differences between Opposer’s mark LEGACY and Applicant’s marks LEGACY
HOUSE, LEGACY VILLAGE, and LEGACY RETIREMENT RESIDENCE are not
sufficient to distinguish Applicant’s marks from Opposer’s mark. In view thereof, we
find that the similarities in the marks outweigh the differences and, therefore, the
marks are similar in terms of appearance, sound, connotation and commercial
impression.
E. The length of time during and conditions under which there has been
concurrent use without evidence of actual confusion.

According to Wayne Clark, Opposer’s Vice President of Marketing and
Community Relations, Opposer has five licensed hospitals, 42 clinics, a reference
laboratory, and a “scattering” of other outpatient facilities located in Oregon and
Washington.91 Opposer does not maintain or operate facilities outside of
Washington and Oregon.92 However, Opposer does “physician outreach into Idaho
and Montana.”93
Applicant, on the other hand, has a facility in Utah,94 but no facilities in Oregon,
Washington, Montana, or Idaho, nor does it advertise in those areas.95 In fact, Mr.

91 55 TTABVUE 19.
92 55 TTABVUE 19.
93 55 TTABVUE 20.
94 60 TTABVUE 19.
95 60 TTABVUE 21.
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Fairholm testified that the geographic trading area for its facility is primarily
within a five mile radius.96
The absence of any reported instances of confusion is meaningful only if the
record indicates appreciable and continuous use by Applicant of its marks for a
significant period of time in the same markets as those served by Opposer under its
marks. Citigroup Inc. v. Capital City Bank Group, 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”).
Since the parties operate in separate and distinct trading areas, there has not
been a reasonable opportunity for actual confusion to have occurred. This du Pont
factor is neutral.

96 60 TTABVUE 19-20.
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F. Balancing the factors.
On the one hand, because the relevant consumers exercise a high degree of
care when making their purchasing decisions and the evidence shows that LEGACY
marks have been extensively adopted in the healthcare field weighs against finding
that there is a likelihood of confusion. However, “likelihood of confusion is to be
avoided, as much between ‘weak’ marks as between ‘strong’ marks, or as between a
‘weak’ and ‘strong’ mark,’” King Candy Co. v. Eunice King's Kitchen, Inc., 182 USPQ
at 109, especially in this case where the marks are very similar.
1. Applicant’s Class 43 services.
Because the marks are very similar, the services are related and move in the
same channels of trade and sold to the same classes of consumer, we find that
Applicant’s marks LEGACY HOUSE, LEGACY VILLAGE, and LEGACY
RETIREMENT RESIDENCE for “providing assisted living facilities; providing
assisted living facilities for individuals with Alzheimer's or related dementia;
providing congregate living facilities for independent seniors; continuing care
retirement homes; providing age-restricted congregate living facilities in
apartments” is likely to cause confusion with Opposer’s marks LEGACY for
“healthcare services.”
2. Applicant’s Class 44 services.
Because the marks are very similar, the services are in part identical and there
is a presumption that the services move in the same channels of trade and are sold
to the same classes of consumers, we find that Applicant’s marks LEGACY HOUSE,
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LEGACY VILLAGE, and LEGACY RETIREMENT RESIDENCE for “providing
physical rehabilitation, health care services and skilled nursing services to seniors
and seniors with Alzheimer's in assisted living facilities, congregate living facilities,
and retirement homes” is likely to cause confusion with Opposer’s marks LEGACY
for “healthcare services.”
Decision: The opposition is sustained and registration to Applicant is refused.