Nutrition Care Systems, Inc.v.NCS HealthCare, Inc.

Trademark Trial and Appeal Board

Jun 21, 2002

No. 94001169 (T.T.A.B. Jun. 21, 2002)

az Mailed: June 21, 2002

Concurrent Use No. 1,169

Nutrition Care Systems,
Inc.

v.

NCS HealthCare, Inc.

Before Wendel, Bucher and Rogers, Administrative
Trademark Judges.

By the Board.

Nutrition Care Systems, Inc. (hereinafter
“applicant”) has filed an application for a concurrent
use registration for the mark NCS for “dietary consulting
services namely, nutrition management services, food
management consulting, and menu services for health care
facilities.”1 The application, which seeks registration
for the geographic area consisting of the states of
Illinois, Wisconsin, Iowa and Missouri, sets forth NCS
HealthCare, Inc. as the exception to applicant's claim of
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513

DIPOSITION
IS NOT CITABLE
AS PRECEDENT
OF THE TTAB
Concurrent Use No. 1,169
2
an otherwise exclusive right to use its mark in commerce.
NCS HealthCare, Inc. had earlier filed applications for
the mark NCS (in typed form)2 and for the mark:3

Both applications recite the following services:
health care services, namely, pharmacy
consulting in the field of health care plans;
nutritional services, namely, operating diet
kitchens for nursing facilities and health care
facilities; rehabilitation services; infusion
therapy services; medical home care services;
pharmacy psychiatric consulting services;
consulting services directed to medicare part B
patient and health care services; environmental
consulting services; and consulting in the field
of building and physical plant security
measures.

NCS HealthCare, Inc.’s NCS mark has registered as
territorially unrestricted Registration No. 2,229,820 and
the NCS HEALTHCARE (stylized) mark has registered as
territorially unrestricted Registration No. 2,229,819.4

1 Application Serial No. 75/433,055 was filed on February 12,
1998 and claims first use of the mark on December 17, 1993 and
first use in commerce on February 6, 1995.
2 Application Serial No. 75/032,801 was filed on December 14,
1995 and claims first use of the mark and first use in commerce
in April, 1974.
3 Application Serial No. 75/032,800 was filed on December 14,
1995 and claims first use of the mark and first use in commerce
in January, 1978; HEALTHCARE has been disclaimed.
4 Both marks registered on March 9, 1999.
Concurrent Use No. 1,169
3
This case now comes up on NCS HealthCare, Inc.’s
(hereinafter “registrant”) motion for summary judgment.
According to registrant:
Nutrition Care will be unable, as a matter of
law, to meet its ‘burden of proof’ that there
will not be a likelihood of confusion if
Nutrition Care’s concurrent use application is
permitted to register. Both NCS HealthCare and
Nutrition Care are using and/or advertising
identical service marks (viz. “NCS”) for
services to nursing homes or centers in the
territorial area claimed by concurrent use
applicant. Moreover, by its repeated cease and
desist correspondence to NCS, Nutrition Care has
previously taken the position so firmly as to
amount to an admission that a likelihood of
confusion will exist in the market place.

In support of its motion, registrant has filed the
affidavit of Wayne Morrow, registrant’s Director of
Marketing, who states as follows:
1. NCS HealthCare has been providing dietary
consulting and management services under the
mark “NCS” since approximately 1974.

2. NCS HealthCare has been promoting NCS
services, including, dietary consulting and
management services via the Internet[,]
since at least as early as 1996.

3. NCS HealthCare provides dietary consulting
and management services in, inter alia,
Illinois, Wisconsin, Iowa and Missouri.

4. NCS HealthCare advertises dietary consulting
and management services in, inter alia,
Illinois, Wisconsin, Iowa and Missouri.

Registrant has also filed a printout of one of its
Web pages; three “cease and desist” letters in which
Concurrent Use No. 1,169
4
applicant contends that registrant’s NCS HEALTHCARE
mark infringes applicant's NCS mark; and copies of
the
Concurrent Use No. 1,169
5
registrations for registrant’s NCS and NCS
HEALTHCARE marks.5
In its filings of January 24, 2002 and March 4,
2002, applicant raises arguments regarding the chain of
title for the NCS and NCS HEALTHCARE registrations. This
concurrent use proceeding, however, only concerns the
question of whether applicant is entitled to a concurrent
use registration in the recited territories and with the
excepted user named by applicant in its concurrent use
application. Applicant's arguments do not concern this
question.
Summary judgment, which registrant seeks, is an
appropriate method of disposing of a case in which
there are no genuine issues of material fact in
dispute, thus leaving the case to be resolved as a
matter of law. See Fed. R. Civ. P. 56(c). The
purpose of summary judgment is to avoid an

5 We have not received a supporting affidavit or declaration in
connection with registrant’s evidence. See Fed. R. Civ. P.
56(e). Because applicant has not objected to registrant’s
evidence on this basis, we have considered registrant’s evidence
as if it had been stipulated into the record.
For the benefit of the parties regarding evidence taken from
the Internet, however, we advise that printouts from the
Internet are not self-authenticating. In order for a printout
from a Web page to be made of record in connection with a motion
for summary judgment, it should be introduced through a
declaration or affidavit of the person who accessed the Web
page. See Trademark Rule 2.122(e); Fed. R. Civ. P. 56(e); and
Concurrent Use No. 1,169
6
unnecessary trial where additional evidence would
not reasonably be

Fed. R. Evid. 901(a). See also Raccioppi v. Apogee, 47 USPQ2d
1368 (TTAB 1998).
Concurrent Use No. 1,169
7
expected to change the outcome. See Pure Gold, Inc.
v. Syntex (U.S.A.), Inc., 739 F.2d 624, 222 USPQ 741
(Fed. Cir. 1984). A party moving for summary
judgment has the burden of demonstrating the absence
of any genuine issue of material fact, and that it
is entitled to summary judgment as a matter of law.
See Celotex Corp. v. Catrett, 477 U.S. 317, 106 S.
Ct. 2548 (1986). The evidence must be viewed in a
light favorable to the non-movant, and all
justifiable inferences are to be drawn in the non-
movant’s favor. See Old Tyme Food, Inc. v. Roundy’s
Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
Our starting point in addressing registrant’s motion
is with Section 2(d) of the Trademark Act,6 which
concerns,

6 Section 2(d) provides:
No trademark by which the goods of the applicant may be
distinguished from the goods of others shall be refused
registration on the principal register on account of its nature
unless it --
* * *
(d) consists of or comprises a mark which so resembles a mark
registered in the Patent and Trademark Office or a mark or trade
name previously used in the United States by another and not
abandoned, as to be likely, when applied to the goods of the
applicant, to cause confusion, or to cause mistake, or to
deceive: Provided, that when the Commissioner determines that
confusion, mistake, or deception is not likely to result from
the continued use by more than one person of the same or similar
marks under conditions and limitations as to the mode or place
of use of the marks or the goods in connection with which such
marks are used, concurrent registrations may be issued to such
Concurrent Use No. 1,169
8
inter alia, circumstances under which concurrent use
registrations may issue. The concurrent use proviso of
Section 2(d) sets out two requirements for issuance of a
concurrent use registration of the same or similar mark
to more than one person. First, an applicant must have
become entitled to use the mark as a result of lawful
concurrent use in commerce prior to the dates recited in
the proviso (in this case, applicant must have use prior
to the earliest of the filing dates of the applications
which matured into registrant’s registrations); and
second, it must be determined that confusion is not
likely to result from the continued use of applicant's
mark in the territory claimed. See In re Beatrice Foods
Co., 429 F. 2d 466, 166 USPQ 431 (CCPA 1970); and Over
the Rainbow, Ltd. v. Over the Rainbow, Inc., 227 USPQ 879
(TTAB 1985).
With respect to the first or the jurisdictional
requirement for concurrent use registrations, there is no
dispute that applicant's use of NCS for the recited
services commenced prior to the filing date of the
applications which matured into the NCS and NCS

persons when they have become entitled to use such marks as a
result of their concurrent lawful use in commerce prior to (i)
the earliest of the filing dates of the applications pending or
of any registration issued under this Act … .
Concurrent Use No. 1,169
9
HEALTHCARE registrations. We have no reason to assume
that this was other than an innocent use without notice
of registrant's use and activity under the NCS and NCS
HEALTHCARE marks. Thus, the jurisdictional requirement
of "lawful use in commerce" prior to the earliest filing
dates of the registrations of registrant involved in this
proceeding is satisfied, and the only issue is whether
confusion would be likely from the continued use of
applicant's mark in the territory claimed.
In regard, however, to the second requirement of the
Section 2(d) concurrent use proviso, we believe that
confusion under Section 2(d) is likely to result from
applicant's use of its mark in the recited territory.
Our determination is based on an analysis of the facts
in evidence that are relevant to the factors identified
in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563 (CCPA 1973) as bearing on the likelihood of
confusion issue. Two key considerations which we focus
on are the similarities or dissimilarities of the marks
and the similarities or dissimilarities between the
identified goods and/or services. See Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ
24 (CCPA 1976).
Concurrent Use No. 1,169
10
Insofar as the marks are concerned, applicant and
registrant’s NCS marks (both in typed form) are
identical, and applicant's NCS mark and registrant’s NCS
HEALTHCARE mark, (with HEALTHCARE disclaimed and NCS as
the dominant portion of the mark),7 are highly similar.
In this regard, we also rely on applicant's own letters
to registrant

7 NCS is the dominant portion of the NCS HEALTHCARE mark because
HEALTHCARE identifies applicant's “healthcare” services, it has
been disclaimed, and it appears in smaller letters in a
different font than the term NCS, which has a thick bold font.
Concurrent Use No. 1,169
11
alleging that use of registrant’s marks infringes on
applicant's mark. Thus, we conclude that there is no
genuine issue of material fact as to the similarities of
the marks.
Turning next to the services, we limit our analysis
of the similarity or relatedness of the services to the
identifications in the involved application and
registrations. See Octocom Systems Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783
(Fed. Cir. 1990), and Canadian Imperial Bank of Commerce,
National Association v. Wells Fargo Bank, 811 F.2d 1490,
1 USPQ2d 1813 (Fed. Cir. 1987). In our view, there is no
genuine issue of material fact that applicant's “dietary
consulting services namely, nutrition management
services, food management consulting, and menu services
for health care facilities” are highly similar to
registrant’s “nutritional services, namely, operating
diet kitchens for nursing facilities and health care
facilities.” Both are nutritional services offered to
health care facilities and applicant has as much as
admitted that the services are the same in its November
2, 1996 “cease and desist” letter, stating that
registrant offers “the same dietary consulting and
management services as” applicant. Also, applicant, in
Concurrent Use No. 1,169
12
its response to the motion for summary judgment, has not
disputed registrant’s contention that both parties’
services are directed to nursing homes or centers.
Thus, we conclude that there is no genuine issue of
material fact that purchasers or prospective purchasers
of the parties’ dietary consulting or nutritional
services, are likely to believe that the services are
somehow affiliated with or sponsored by the same entity.
Whether such purchasers will encounter both parties’
marks in circumstances wherein confusion will be likely
is the salient question raised by registrant’s summary
judgment motion.8 Registrant maintains that “both
concurrent use applicant and registrant are providing
dietary consulting and management services in Illinois,
Wisconsin, Iowa and Missouri under the service mark
‘NCS,’” and Mr. Morrow has testified in paragraphs 3 and
4 of his affidavit that registrant provides and
advertises dietary consulting and management services in

8 It is well established that where the trading territories of
concurrent users overlap in actual use, that fact precludes the
granting of concurrent use registrations, see Daniel R. Gray,
d.b.a. Daffy Dan's v. Daffy Dan's Bargaintown, 823 F.2d 522, 3
USPQ2d 1306 (Fed. Cir. 1987); My Aching Back, Inc. v. Alfred
Klugman, 6 USPQ2d 1892 (TTAB 1988); Over the Rainbow, Ltd. v.
Over the Rainbow, Inc., supra; In re Place for Vision, Inc., 196
USPQ 267 (TTAB 1977); Texas Meat Packers, Inc. v. Rueckert Meat
Co., 143 USPQ 325 (TTAB 1964); and Central West Oil Corp. v.
Continental Oil Co., 135 USPQ 469 (TTAB 1962).

Concurrent Use No. 1,169
13
the states claimed by applicant in its application. In
view thereof, we conclude that there is no genuine issue
of material fact that registrant is using its mark in the
territories claimed by applicant in its concurrent use
application.
Because we have concluded that there is a likelihood
of confusion from the concurrent use of applicant's mark
and registrant’s mark, for the identified services, and
that registrant is using its marks in the territories
claimed by applicant, applicant cannot satisfy the second
of the two Section 2(d) requirements for the issuance of
a concurrent use registration, i.e., that confusion is
not likely to result from the continued use of
applicant's mark in the territory claimed. We therefore
grant registrant’s motion for summary judgment, dissolve
the concurrent use proceeding; and refuse registration of
applicant's concurrent use application.