Moore Business Forms, Inc.v.Richard A. Harder, Jr.

Trademark Trial and Appeal Board

Feb 5, 1998

No. 91091991 (T.T.A.B. Feb. 5, 1998)

Paper No. 39
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB FEB 5, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_______
Trademark Trial and Appeal Board
_______
Moore Business Forms, Inc.
v.
Richard A. Harder, Jr.
_______
Opposition No. 91,991
to application Serial No. 74/323,847
filed on October 19, 1992
_______
Robert A. Vanderhye of Nixon & Vanderhye for opposer
Erwin J. Keup, Esq. for applicant
_______
Before Hanak, Quinn and Walters, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Moore Business Forms, Inc. filed its opposition to the
application of Richard A. Harder, Jr. to register the mark
MCP for “business management and consulting services to
dentists.”1
As grounds for opposition, opposer asserts that
applicant’s mark, when applied to applicant’s goods, so

1 Application Serial No. 74/323,847, filed October 19, 1992, in
International Class 35, based upon an allegation of a bona fide
intention to use the mark in commerce in connection with the identified
services.
Opposition No. 91,991
2
resembles opposer’s previously used and registered mark MCP
for “paper business forms”2 as to be likely to cause
confusion under Section 2(d) of the Trademark Act. Opposer
asserts that it has so used its mark in commerce since 1971;
that opposer has advertised and sold its MCP business forms
to health care professionals, including the dental
community; that opposer’s mark is “strong” and “widely
used”; and that the parties’ goods and services travel in
the same channels of trade.
Applicant, in its answer, denies the salient
allegations of the likelihood of confusion claim and asserts
affirmatively that opposer has failed to allege grounds
sufficient to establish standing herein3; and that the
parties’ goods and services travel in “entirely different”
channels of trade.
The Record
The record consists of the pleadings; the file of the
involved application; a title and status copy of opposer’s
pleaded Registration No. 965,147; and various specified
responses of applicant to opposer’s interrogatories and
requests for admissions, all made of record by opposer’s
notice of reliance; and the testimony depositions by opposer

2 Registration No. 965,147, issued July 31, 1973, in International Class
16 and renewed for a term of 10 years from July 31, 1993. [Sections 8
and 15 affidavits accepted and acknowledged, respectively.]
Opposition No. 91,991
3
of Robert M. Reinbold, Jr., opposer’s Portfolio Manager for
core products, and Richard A. Harder, Jr., applicant, both
with accompanying exhibits.4 Both parties filed briefs on
the case.
The Parties
Opposer is a manufacturer and distributor of business
forms, referred to by its Portfolios Manager, Robert M.
Reinbold, Jr., as “the largest business forms manufacturer
in the world.” The mark MCP, which appears to be an acronym
for Moore Clean Print, is used on some of opposer’s
carbonless business forms. Mr. Reinbold testified that he
is aware of the continuous use of MCP in connection with
such forms since at least 1975, when Mr. Reinbold first
joined opposer’s sales force. These business forms are sold
to all segments of the market, including small and large
businesses and including health services, which comprise 18%
of opposer’s “carbonless sales.” Opposer’s forms bearing
the MCP mark are marketed in various ways including, among
others, by a direct sales force and through telemarketing,
direct mail, catalogs, distributors and referrals.
Confidential business information submitted by opposer under
the protective order herein establishes that opposer has

3 We consider this allegation to have been waived as applicant filed no
motion to dismiss or for summary judgment on this basis; nor did
applicant otherwise address this issue at trial or in its brief.
4 Portions of both witness’ testimony and exhibits are filed pursuant to
a protective order which was agreed to by the parties and approved by
the Board.
Opposition No. 91,991
4
made substantial annual sales of its MCP products; that
opposer has a significant share of the U.S. market among
major carbonless paper manufacturers; and that opposer has,
and continues to make, significant sales of its carbonless
paper products to the health care community including,
specifically, dental customers.
Opposer’s evidence includes promotional packages and
several copies of its forms. For example, Reinhold exhibit
2 is a promotional brochure for Moore’s Ultra-Image MCP
carbonless paper, for which Reinhold exhibit 6 is a demo
form used by opposer’s sales force. The cover page of
Reinhold exhibit 2 contains the statement “Improve Your
Image With Ultra-Image™ MCP® paper” and the inside copy
includes the following:
That’s the idea behind our Ultra-Image™ Moore
Clean Print line of carbonless paper products.
Ultra-Image™ MCP® carbonless paper - for all your
business communications - is everything you’ve
been waiting for in a high-quality paper product.
Reinhold exhibits 3-5 are demo forms used by opposer’s sales
force of, respectively, the Moore Speediply® Form, the Moore
Continuous Form, and the Moore Speediweb®. While not using
the mark MCP, the promotional copy on each demo form states
that the form is made of Moore Clean Print® carbonless
paper.

Opposition No. 91,991
5
Reinhold exhibits 7 and 8 are advertisements that,
according to Mr. Reinhold, appeared during the 1980’s in
magazines such as Fortune, Business Week and Industry Week.
These ads feature prominently the mark MOORE and design and
the mark MOORE BUSINESS FORMS. The copy in these two
advertisements is the same and includes the following:
New MCP Bold Image can make important
contributions to healthcare managers’ efforts to
contain costs. Because this advanced carbonless
paper with the new bold image is priced the same
as ordinary carbonless paper.
Reinhold exhibits 9-15 are sample forms used in dental
programs or practices. Except for Reinhold exhibit 13, each
form is custom-printed with the name, address and, in some
cases, logo of the purchasing dental program or practice.
The name “Moore Business Forms” and the mark MCP appears in
very small print on the perforated top or side edge, i.e.,
the detachable computer feed strip, of each form.
Applicant, Richard A. Harder, Jr., is a dentist who is
an employee of Western Dental Services, Incorporated and an
owner and consultant to five group dental practices. Dr.
Harder testified that he has been using the mark MCP since
1991; that it is an acronym for Managed Care Process; and
that he often uses MCP in conjunction with the phrase
Managed Care Process. Dr. Harder describes his services
rendered in connection with the mark MCP as follows:
MCP, or Managed Care Process, involves a method by
which a practitioner or a health care delivery
Opposition No. 91,991
6
system is able to optimize, improve and provide
care for patients, considering the technology
available, considering the resources that are
available and the needs of the people, the type of
care they need, and it involves an element of
strategic planning and continuous quality
improvement and quality assurance.
Applicant offers his services to individual and group
dental practices. His marketing of his services includes
speaking appearances at dental association meetings and
seminars; articles and interviews in professional
publications; a newsletter; and direct mail to colleagues.
In response to questioning by his counsel, Dr. Harder
described the extent to which his services include the
development of business forms, as follows:
Ques. I just have one question, Dr. Harder.
Isn’t it true, regarding trade channels, isn’t it
true that you do not sell forms to dentists but
rather sell consulting advice on what they should
put into their own forms?
Ans. That’s correct. I have never marketed
or sold any type of form, and the development of
forms for an office would be incidental or a small
part of what I do in my consulting services.
Ques. So if I were a dentist and a customer of
yours, you would come in and analyze my practice
and then advise me of what you thought I should
put into the forms, such as not only the questions
but what language that would be put in and things
like that?
Ans. Yes, that particular role would be
secondary to an overall assessment of the goals
and objectives of the practice, looking at
strategy for the practice in terms of systems
management and then once those components were
determined, if there was a need for the staff and
the doctors to have better record keeping or a
different way of tracking what they do, those
Opposition No. 91,991
7
types of forms are generally custom made versus
being purchased or sold.
Ques. And the forms that you identified today
are generally forms that you adapted to your own
practice and used as samples when you are advising
or consulting with a dentist so that he can come
up with his own forms?
Ans. That’s correct, and when I ever do show
examples, they are almost always modified or
altered to meet the needs of that particular
practice. I really can’t think of a situation
where someone used the same form.
Applicant stated that he creates forms for his dental
offices and consulting clients using both office word
processing programs and other software; that his forms are
developed from personal experience and by combining features
of forms found on the market and sample forms recommended by
dental associations; that the mark MCP does not routinely
appear on these forms; that he has never maintained or sold
a proprietary interest in the forms he develops; and that
forms developed for a client reside on the client’s computer
system.
Applicant admits that he is aware of opposer’s business
as a manufacturer of forms and that, as a result of the
trademark search in connection with his mark, he learned of
opposer’s ownership of the mark MCP for such forms.
Applicant asserts, however, that he did not adopt the mark
MCP with any intent to trade on opposer’s goodwill in its
mark, as he believes the parties’ goods and services are
Opposition No. 91,991
8
very different.5 Applicant states that his practice
purchases business forms from vendors, although he has not
seen opposer’s forms in use by his practice nor has he
adapted his forms from any of opposer’s forms. Applicant
acknowledges that opposer’s forms could be sold to the same
dentists to whom he markets his services.
Analysis
Inasmuch as a certified copy of opposer’s registration
is of record, there is no issue with respect to opposer’s
priority.6 King Candy Co., Inc. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Our determination of likelihood of confusion under
Section 2(d) must be based on an analysis of all of the
probative facts in evidence that are relevant to the factors
bearing on the likelihood of confusion issue. In re E.I.
duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). Key considerations in this case are the similarities
between the marks, the similarities between the goods and
services, the channels of trade, and the class of

5 Opposer does not allege bad faith in applicant’s adoption of the mark
herein and, in view of our decision that the parties’ goods and services
are significantly different, we find no intent to copy opposer’s mark on
the part of applicant.
6 In view of opposer’s incontestable registration for the mark MCP for
paper business forms, applicant’s contention that opposer uses its mark
MCP to identify carbonless paper, not business forms, is an attack on
the validity of the registration which must be addressed in a
counterclaim to cancel that registration. Since such a counterclaim was
not filed herein, we give no consideration to applicant’s contention.
Opposition No. 91,991
9
purchasers. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
Considering, first, the marks, there is no question
that the parties’ marks are identical.7
We consider, next, the goods and services of the
parties. As both opposer’s and applicant’s identifications
of goods and services are broadly worded, we presume both
parties’ goods and services are sold in all of the normal
channels of trade to all of the normal purchasers for goods
and services of the type identified. See Canadian Imperial
Bank v. Wells Fargo, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987). However, even reading the identifications of goods
and services herein broadly and considering opposer’s
evidence of use of its mark, we find that applicant’s
management and consulting services are quite different from
opposer’s sale of paper business forms. We do not find on
this record either that applicant’s identification of
services in the application encompasses the sale of business
forms, or that opposer’s identification of goods in its

7 Because the application herein is for registration of the mark MCP
alone and there is evidence that opposer owns a registration for the
mark MCP and uses its MCP mark alone, the similarity of the parties’
marks is not mitigated in any respect by the fact that opposer’s mark
MCP may be an acronym for Moore Clean Print or that applicant’s mark MCP
may be an acronym for Managed Care Process.
Opposition No. 91,991
10
registration encompasses the distinct service of custom
designing business forms.8
Further, opposer has not established that the custom
design and development of forms by applicant is sufficiently
distinct from his business management and consulting
services to be considered either a separate service or the
sale of such goods. Applicant’s statements regarding the
development of forms for his clients indicates that such
activity is merely ancillary to his business management and
consulting services and is not separately identifiable as
either a distinct custom designing service or as the sale of
goods in the nature of business forms.
Applicant acknowledges that opposer may sell its forms
bearing the mark MCP to the same class of purchasers,
individual and group dental practices and programs, to whom
applicant markets its services under the MCP mark. The
record supports the additional conclusion that forms
developed by applicant as part of his management and
consulting services are for the same range of uses by dental
customers as applicant’s forms.
However, the fact that the class of purchasers may be
the same does not require us to also conclude, as opposer

8 While opposer’s witness, Mr. Reinhold, indicated that registrant does
engage in the custom design of forms, there is no evidence indicating
the nature or extent of that service or what mark is used in connection
with that service. All of the evidence presented by opposer supports
its use of the mark MCP in connection with business forms upon which
Opposition No. 91,991
11
seems to urge, that the channels of trade are the same. We
find that, in this case, common sense dictates that the
channels of trade for business management and consulting
services rendered to dental customers are likely to be quite
different from the channels of trade for business forms used
by such customers. Opposer has presented no evidence to the
contrary.
While the record establishes substantial sales of
opposer’s products under the mark MCP, this evidence alone
is insufficient support for opposer’s allegation that its
trademark is well-known and, thus, entitled to a wide
latitude of legal protection. Kenner Parker Toys Inc. v.
Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453,
1456 (Fed. Cir. 1992), cert. denied, 113 S.Ct. 181 (1992).
Further, even if opposer had established that its mark is
famous, opposer would not be entitled to preclude the
subsequent registration of the same or similar mark in
connection with any and all goods and services including
those completely unrelated to the goods of opposer. To do
otherwise would be to bestow upon opposer a right in gross
which is contrary to Section 2(d) and to the recognized
principle of trademark law that ownership of a mark does not
create a “monopoly” therein. Amica Mutual Insurance Company
v. R.H. Cosmetics Corp., 204 USPQ 155 (TTAB 1979) and cases

opposer may print a customer’s name and logo, not with services of any
Opposition No. 91,991
12
cited therein; Penthouse International, Ltd. v. Dyn
Electronics, Inc., 196 USPQ 251 (TTAB 1977).
Therefore, despite the fact that the parties’ marks are
identical, we find that applicant’s services, business
management and consulting services to dentists, are
significantly different from opposer’s goods, paper business
forms; that any design and development of forms by applicant
is in connection with, or ancillary to, his business
management and consulting services and does not, based on
the evidence herein, constitute either a distinct service or
the sale of goods; that the evidence does not support the
conclusion that opposer’s registration or its use of the
mark MCP encompasses the custom design of business forms;
and that, while both applicant’s services and opposer’s
goods may be marketed and sold to the same class of
purchasers, dental customers, the channels of trade for
applicant’s services versus opposer’s goods are quite
different. In view of the differences between the goods and
services and the trade channels therefor, we find that
confusion as to the source or sponsorship of applicant’s
services and opposer’s goods is not likely.

type.
Opposition No. 91,991
13
Decision: The opposition is dismissed.
E. W. Hanak
T. J. Quinn
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board