The Solomon-Page Group LLC and The Clinical Resource Network LLCv.Clinical Resources Network

Trademark Trial and Appeal Board

Mar 12, 2012

No. 91195692 (T.T.A.B. Mar. 12, 2012)

gcp Mailed: March 12, 2012

Opposition No. 91195692

The Solomon-Page Group LLC
and The Clinical Resource
Network LLC

v.

Clinical Resources Network

Before Kuhlke, Mermelstein, and Bergsman,
Administrative Trademark Judges.

By the Board:
Clinical Resources Network (“applicant”) seeks to
register the mark CRN CHANGING THE PACE OF CLINICAL TRIALS and
design, as displayed below, for
“Business consulting in the field of administering and
managing clinical research and clinical trials for
medical, clinical research organizations,
biopharmaceutical, and biotechnology companies to
increase patient convenience, participation and
retention” in International Class 35;

“Medical and scientific research, namely, assisting and
conducting clinical trials, and compiling of clinical
trial data” in International Class 42; and

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS DECISION IS NOT A
PRECEDENCT OF THE TTAB
Opposition No. 91195692

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“Medical evaluation services, namely, assist in
functional assessment programs, by collecting and
gathering results, data and biological samples for
individuals and patients participating in clinical trials
for drugs and medical devices; nursing services,
phlebotomy services, and testing of blood, fitness and
urine of clinical participants, offered in patient's
home, doctor's offices, and alternate site venues” in
International Class 44.1

The Solomon-Page Group LLC and The Clinical Resource
Network LLC (“opposers”) have filed a notice of opposition to
registration of applicant’s mark. As grounds for the
opposition, opposers have asserted a claim of priority and
likelihood of confusion. In support of their claim, opposers
allege that opposer The Clinical Resource Network LLC is a
single member limited liability company whose sole member is
opposer The Solomon-Page Group LLC. Additionally, opposer The
Solomon-Page Group LLC has pleaded ownership of its registered
CRN mark in standard character form for “employment

1 Application Serial No. 77669980, filed on February 13, 2009,
based on use in commerce under Trademark Act Section 1(a), 15
U.S.C. Section 1051(a), alleging May 1, 2008, as both the date of
first use anywhere and the date of first use in commerce for each
identified class of services.
Opposition No. 91195692

3
recruiting, placement and staffing” in International Class
35.2
Applicant, in its answer, has denied the salient
allegations of the notice of opposition. Additionally,
applicant has asserted the following defenses, affirmative
defenses, and improper collateral attacks on the validity of
opposers’ pleaded registration (see discussion below):
1. Defendant has not had an opportunity to complete its
investigation of all of plaintiffs’ or opposers’
claims and discovery in this matter and reserves the
right to assert additional affirmative defenses as
they are discovered;

2. Defendant raises the affirmative defense of
invalidity of Registration No. 3,206,179;

3. Defendant raises the affirmative defense of failure
to police other uses of the “CRN” marks;

4. Defendant raises the affirmative defense of fraud in
the procurement of Registration No. 3,206,179.
Plaintiffs committed fraud by engaging in the
following: a) submitting a drawing of the CRN mark
that did not include a blue three dimensional cube
and a jumbled version of the letters CRN; b)
describing the “CRN” mark as a standard character
mark; c) claiming a section 1(a) basis for the “CRN”
mark, but failing to comply with 37 C.F.R. 2.51(a)
and TBMP 807.12; d) these material representations
were made with the intent to deceive and mislead the
United States Patent and Trademark Office (“USPTO”);
and e) the Plaintiffs’ acts misled the USPTO into
approving a section 1(a) based registration of the
“CRN” mark that does not substantially represent the
mark actually used by the Plaintiffs;

2 Registration No. 3206179, issued on February 6, 2007, claiming
September 2002 as both the date of first use anywhere and the
date of first use in commerce.

Opposition No. 91195692

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5. Defendant raises the affirmative defense of unclean
hands;

6. Defendant raises the affirmative defense of
estoppel;

7. Defendant raises the affirmative defense of laches;

8. Defendant raises the affirmative defense of
acquiescence;

9. Defendant raises the prior registration or Morehouse
defense on its registration for “Changing the Pace
of Clinical Trials, Fewer Patients Faster to
Market;” and

10. Defendant raises the affirmative defense of amending
its description of services to cure and alleviate
any hypothetical likelihood of confusion of its “CRN
Changing the Pace of Clinical Trials” mark and
Plaintiffs’ registered or common law marks.
Defendant requests that the Trademark Trial and
Appeal Board (TTAB) approve registration of the mark
“CRN Changing the Pace of Clinical Trials” with a
modification to its description of services under
classes 35, 42, and 44. However, Defendant only
seeks such a modification to the extent it is
necessary to alleviate any hypothetical likelihood
of confusion.

This case now comes before the Board for consideration of
(1) applicant’s motion for summary judgment on opposers’
standing and their asserted claim of likelihood of confusion
and (2) opposers’ cross-motion for partial summary judgment
regarding opposers’ standing and priority of use, as well as
applicant’s asserted affirmative defenses.
For purposes of this order, we presume the parties’
familiarity with the pleadings, the history of the proceeding
and the arguments and evidence submitted with respect to
Opposition No. 91195692

5
applicant’s motion for summary judgment and opposers’ cross-
motion for partial summary judgment.
Summary judgment is an appropriate method of disposing
of cases that present no genuine disputes of material fact,
thus leaving the case to be resolved as a matter of law.
See Fed. R. Civ. P. 56(a). The evidence must be viewed in a
light favorable to the nonmoving party, and all justifiable
inferences are to be drawn in the nonmovant’s favor.
Lloyd’s Food Products, Inc. v. Eli’s, Inc, 987 F.2d 766, 25
USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA Inc. v. The
Great American Music Show, Inc., 970 F.2d 847, 23 USPQ2d
1471 (Fed. Cir. 1992).
Here, each moving party has the burden of demonstrating
the absence of any genuine dispute of material fact, and
that it is entitled to judgment as a matter of law. See
Celotex Corp. v. Catrett, 477 U.S. 317 (1986); Sweats
Fashions Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4
USPQ2d 1793 (Fed. Cir. 1987). The mere fact that cross-
motions for summary judgment have been filed does not
necessarily mean that there are no genuine disputes of
material fact, and that a trial is unnecessary. See
University Book Store v. University of Wisconsin Board of
Regents, 33 USPQ2d 1385, 1389-90 (TTAB 1994).

Opposition No. 91195692

6
Opposers’ Standing and Priority
We first turn to the issues of opposers’ standing and
priority. We find that opposer The Solomon-Page Group LLC has
established its standing to oppose registration of applicant’s
involved application. In particular, opposer The Solomon-Page
Group LLC has properly made of record its pleaded registration
for the mark CRN. In view of this registration, and its
proper introduction into the record, opposer The Solomon-Page
Group LLC has shown that it has a direct commercial interest
in this proceeding and therefore has established its standing.
See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842 (Fed. Cir. 2000); Ritchie v. Simpson, 170 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005). Similarly, the record
establishes that the activities and operations of opposer The
Clinical Resource Network LLC, including use of opposers’
pleaded mark CRN in connection with the services identified,
has been controlled and continues to be controlled by opposer
The Solomon-Page Group LLC. As such, opposer The Clinical
Resource Network LLC has demonstrated that it is not a mere
intermeddler and has a sufficient commercial interest in
opposing the registration of applicant’s involved mark. See
Ritchie v. Simpson, supra.
Furthermore, in light of opposer The Solomon-Page Group
LLC’s ownership of its valid and subsisting pleaded
registration, there is no issue regarding The Solomon-Page
Opposition No. 91195692

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Group LLC’s priority. King Candy, Inc. v. Eunice Kings’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Moreover, opposer The Clinical Resource Network LLC has
established that, since September 2002, it has used the
pleaded CRN mark in connection with recruitment and placement
services in the pharmaceutical community. We note that such
use predates applicant’s claimed dates of first use as well as
the filing date of applicant’s involved application.
Accordingly, we find that there are no genuine disputes
of material fact regarding opposers’ standing and priority.
In view thereof, applicant’s motion for summary judgment
regarding opposers’ standing is denied and opposers’ partial
motion for summary judgment concerning their standing and
priority is granted.
Opposers’ Claim of Likelihood of Confusion
As noted above, in addition to opposers’ standing,
applicant seeks summary judgment on opposers’ claim of
likelihood of confusion.
We initially note that, in addition to opposing
applicant’s motion for summary judgment on the merits,
opposers have objected to applicant’s Statement of Facts,
and corresponding exhibits thereto, on the following
grounds: (1) the Statement of Facts is not an affidavit or
declaration, (2) the Statement of Facts is not made on
personal knowledge and it includes hundreds of exhibits with
Opposition No. 91195692

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no foundation and often no authentication, and (3) the
Statement of Facts, in combination with applicant’s brief,
exceeds the established page limits for briefs.
We find that the Statement of Facts does not constitute
a declaration or affidavit in support of applicant’s motion
for summary judgment and, inasmuch as its inclusion with
applicant’s brief would exceed the page limitations for a
motion for summary judgment under Trademark Rule 2.127(e),
we have given it no consideration in our determination
herein. A statement of facts should be made part of a
party’s motion; a party may not circumvent the Board’s page
limit by submitting part of a motion as a separate
statement. In re Psygnosis Ltd., 51 USPQ2d 1594, 1596 (TTAB
1999) (arguments filed as attachment to brief considered in
page limit). We may, however, consider evidence attached to
the statement of facts. See Mattel Inc. v. Brainy Baby Co.,
101 USPQ2d 1140, 1141-42 (TTAB 2011)
With regard to opposers’ objections to the exhibits
attached to applicant’s Statement of Facts, i.e., printouts
of registrations and application files, third-party
registrations, office actions, responses to office actions,
etc., we note that, in its reply brief, applicant submitted
the declaration of its then counsel, Vihar R. Patel, who
declares, based upon his personal knowledge, that Exhibits
A-C and E-O of applicant’s Statement of Facts are genuine
Opposition No. 91195692

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and authentic documents that were either downloaded or
printed from the USPTO’s database or website. In light of
this declaration, (which cures the technical defects
opposers have identified with regard to the exhibits),
opposers’ objections to the Exhibits A-C and E-O are
overruled and said exhibits have been afforded their
appropriate probative weight. Opposers’ objection to
Exhibit D (an “alleged” copy of the specimen displaying
opposers’ pleaded mark submitted during the prosecution of
the underlying application of opposers’ pleaded
registration}, however, is sustained and this exhibit has
been given no consideration for lack of proper
authentication and foundation.
Notwithstanding the foregoing and after reviewing the
arguments and supporting evidence, and drawing all
inferences with respect to applicant’s motion in favor of
opposers, we nonetheless find that applicant has not met its
burden of establishing that there are no genuine disputes of
material fact for trial with regard to opposers’ likelihood
of confusion claim.
We find that, at a minimum, the record reveals that
genuine disputes of material fact exist as to (1) the
similarities of the parties’ respective marks, (2) the
strength of opposers’ pleaded mark, and (3) the relatedness
of the parties’ respective services.
Opposition No. 91195692

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In view thereof, applicant’s motion for summary
judgment on opposers’ claim of likelihood of confusion is
denied.3
Applicant’s Affirmative Defenses
We now turn to opposers’ partial motion for summary
judgment regarding applicant’s affirmative defenses. We will
address each affirmative defense separately.
Reservation of Right to Assert Additional Affirmative Defenses
We find that this is not an appropriate affirmative
defense but merely an advisory statement that applicant
reserves the “right” to amend its answer at some future date
to add additional affirmative defenses after conducting
discovery in this matter. A defendant cannot reserve
unidentified defenses since it does not provide a plaintiff
fair notice of such defenses. Whether or not applicant may,
at some future point, add an affirmative defense would be

3 The parties should note that the evidence submitted in
connection with a motion for summary judgment or opposition
thereto is of record only for consideration of that motion. Any
such evidence to be considered at final hearing must be properly
introduced in evidence during the appropriate trial period. See
Levi Strauss & Co. v. R. Joseph Sportswear Inc., 28 USPQ2d 1464
(TTAB 1993); and Pet Inc. v. Bassetti, 219 USPQ 911 (TTAB 1983).
Thus, for example, if opposers wish to rely on the pleaded
registration at trial for purposes other than standing or
priority, opposers would need to resubmit the registration.
Additionally, the issues for trial are not limited to those
identified by the Board in explaining the denial of a motion for
summary judgment. Rather, the issues for trial are framed by the
pleadings and any issues not pleaded but which may yet be tried
by express or implied consent of the parties.

Opposition No. 91195692

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resolved by way of a motion to amend for Board approval.
Accordingly, this affirmative defense will be given no further
consideration.

Invalidity of Opposers’ Pleaded Registration No. 3206179
This defense is essentially a collateral attack on
opposers’ pleaded registration and is impermissible absent a
counterclaim. Trademark Rule 2.106(b)(2)(ii). See also TBMP
§ 311.02(b) (3d ed. 2011). We note that applicant has not
asserted a counterclaim to cancel opposers’ pleaded
registration on any ground in this proceeding. Accordingly,
this affirmative defense will be given no further
consideration.

Opposers’ Failure to Police its Pleaded Mark
We find that this “affirmative defense” is not a
collateral attack on opposers’ pleaded mark; rather, we
construe it as merely an amplification of applicant’s denials
regarding opposers’ asserted claim of likelihood of confusion.
Accordingly, although it is not an affirmative defense, we see
no harm in leaving it in applicant’s pleading.

Fraud in the Procurement of Opposers’ Pleaded Registration
As with applicant’s affirmative defense of invalidity of
opposers’ pleaded registration, we find this affirmative
Opposition No. 91195692

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defense to constitute an impermissible collateral attack on
opposers’ pleaded registration absent a counterclaim.4 In
view thereof, this affirmative defense will be given no
further consideration.

Unclean Hands
With respect to applicant’s affirmative defense of
unclean hands, the Board initially notes that applicant has
failed to plead sufficient facts to support this defense or
provide opposer with sufficient notice of any allegedly
specific improper actions. Further, applicant has failed to
provide any affirmative proof or argument in support of this
defense. Cf. Land O' Lakes Inc. v. Hugunin, 88 USPQ2d 1957,
1959-60 (TTAB 2008) (applicant’s motion for summary judgment
on laches denied where applicant did not show absence of
genuine issues of material fact). Accordingly, applicant’s
affirmative defense of unclean hands will be given no
further consideration.

Estoppel
We note that it has been consistently held that the
doctrine of estoppel may be invoked only by one who has been

4 We note that applicant filed a separate petition seeking to
cancel opposers’ pleaded registration on the ground of fraud.
See Cancellation No. 92053178. By order dated July 21, 2011, the
Board dismissed the petition to cancel with prejudice.

Opposition No. 91195692

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prejudiced by the conduct relied upon to create the estoppel,
and therefore, a party may not base its claim for relief on
the asserted rights of strangers with whom it is not in
privity of interest. See Textron, Inc. v. The Gillette
Company, 180 USPQ 152, 154 (TTAB 1973).
In this case, applicant has failed to plead sufficient
facts to support that it was induced to select its mark
because of the conduct of opposer or that applicant is in
privity with third parties who have used similar marks for
similar goods or services with opposers’ acquiescence
thereto. See Gastown Inc. of Delaware v. Gas City Ltd., 187
USPQ 760 (TTAB 1975). Further, while we acknowledge that
applicant, in opposition to opposers’ motion for partial
summary judgment, has argued that it detrimentally relied
upon (1) opposers’ failure to object to other users of the
letters “CRN,” (2) opposers’ knowledge of applicant’s use of
its mark at trade show and trade show booths, and (3)
opposers’ knowledge of applicant’s use of its mark in public
journals and articles as a basis for its estoppel defense,
applicant has nevertheless failed to provide any affirmative
proof of such reliance and as such has failed to raise a
genuine dispute of material fact as to this affirmative
defense. Levi Strauss & Co. v. Genesco, Inc., 742 F.2d
1401, 222 USPQ 939, 941 (Fed. Cir. 1984) (“Levi’s mere
assertion that eight fact issues exist is insufficient to
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avoid summary judgment. Argument and assertion of counsel
cannot substitute for factual statements under oath that
establish a genuine material issue of fact.”); Sweats
Fashions Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4
USPQ2d 1793 (Fed. Cir. 1987) (“Mere conclusory statements
and denials do not take on dignity by placing them in
affidavit form.”); Barmag Barmer Maschinenfabrik AG v.
Murata Mach., Ltd., 731 F.2d 831, 836, 221 USPQ 561, 564
(Fed. Cir. 1984) (“The party opposing the motion must point
to an evidentiary conflict created on the record at least by
a counter statement of a fact or facts set forth in detail
in an affidavit by a knowledgeable affiant. Mere denials or
conclusory statements are insufficient.”). Accordingly,
this affirmative defense will be given no further
consideration.

Laches and Acquiescence
The Board notes that in general the affirmative
defenses of laches and acquiescence are inapplicable in
opposition proceedings. See National Cable Television Ass’n
Inc. v. Am. Cinema Editors Inc., 19 UPSQ2d 1424, 1432 (Fed.
Cir. 1991). Even if these defenses were available in this
case, applicant has failed to present evidence sufficient to
raise a genuine dispute as to these defenses. In view
thereof, applicant’s affirmative defenses of laches and
Opposition No. 91195692

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acquiescence fail, as a matter of law, and are also given no
further consideration.5

Morehouse Defense
The Morehouse defense is an equitable affirmative
defense which is available in situations where a party
already owns a registration for the substantially identical
mark for substantially identical goods and services. It is
based on the theory that a party cannot be further injured
by the registration sought or already owned because there
already exists a substantially similar registration and,
therefore, an additional registration for the same mark for
substantially identical goods and services can no more
injure the plaintiff than the subsisting prior registration.
See Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d
881, 160 USPQ 715 (CCPA 1969). See also Carl Karcher
Enterprises, Inc. v. Gold Star Chili, Inc., 222 USPQ 727,
728 (TTAB 1983) (uses the substantially identical standard).

5 “[U]nder certain circumstances, a laches defense in an
opposition proceeding may be based upon opposer's failure to
object to an applicant’s earlier registration of substantially
the same mark for substantially the same goods.” See Aquion
Partners L.P. v. Envirogard Prod. Ltd., 43 USPQ2d 1371, 1373
(TTAB 1997). We note that applicant has invoked the prior
registration defense or Morehouse defense as a separate
affirmative defense, however, as explained infra, the prior
registration/Morehouse defense is not applicable in this case.

Opposition No. 91195692

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In support of its Morehouse defense, applicant
maintains that it is the owner of Registration No. 3315724
for the mark CHANGING THE PACE OF CLINCIAL TRIALS, FEWER
PATIENTS, FASTER TO MARKET in standard characters for
“medical and scientific research, namely, conducting
clinical trials for others by offering specialized in-home
and alternate-site phlebotomy, nursing, drug administration,
and testing services for clinical trials.”
We find that the mark applicant is currently seeking to
register, i.e., CRN CHANGING THE PACE OF CLINICAL TRIALS and
design, is not identical or substantially identical to the
subject mark of its asserted Morehouse registration. The
involved mark herein contains the distinctive lettering CRN
and a design element which do not appear in applicant’s
asserted Morehouse registration and the prior registration
comprises the wording FEWER PATIENTS, FASTER TO MARKET,
which does not appear in the subject application.
Accordingly, the Morehouse defense is not applicable in this
instance and is therefore given no further consideration.

Amendment to Applicant’s Identification of Services To Avoid
Hypothetical Likelihood of Confusion

While we recognize that applicant may raise by
affirmative defense that, notwithstanding opposers’ asserted
claim of priority and likelihood of confusion, it is
Opposition No. 91195692

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entitled to registration if it amends its application to
avoid a likelihood of confusion, we note that applicant has
failed to provide a proposed amendment to its recitation of
services for the Board’s consideration. Applicant’s wholly-
speculative intent to narrow the description of its services
in some unspecified manner, at a future date, is
insufficient.6 In view thereof, this affirmative defense
will be given no further consideration.
In sum, applicant’s motion for summary judgment is denied
in its entirety and opposers’ cross-motion for partial summary
judgment with regard to their standing and priority, as well
as for summary judgment on applicant’s asserted affirmative
defenses 1-2 and 4-10, is granted. Opposers’ motion for
partial summary judgment regarding applicant’s Affirmative
Defense No. 3, however, is denied.
Proceedings herein are resumed. Discovery, disclosure
deadlines and trial dates are reset as follows:
Expert Disclosures Due 5/18/2012
Discovery Closes 6/17/2012
Plaintiff's Pretrial
Disclosures 8/1/2012

6This is not to say that applicant may not file a motion to amend
the recitation of services identified in its application for
Board approval. However, if the motion to amend is unconsented,
the Board will generally defer consideration of the proposed
amendment until final decision. See Space Base, Inc. v. Stadis
Corp., 17 USPQ2d 1216 (TTAB 1990); TBMP § 514.02 (3d ed. 2011).
Such a motion, if filed, should be raised early enough in the
proceeding that any discovery to which opposer may be entitled on
this issue can be taken prior to trial. Failure to do so may
result in denial of the motion.

Opposition No. 91195692

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Plaintiff's 30-day Trial Period
Ends 9/15/2012
Defendant's Pretrial
Disclosures 9/30/2012
Defendant's 30-day Trial Period
Ends 11/14/2012
Plaintiff's Rebuttal
Disclosures 11/29/2012
Plaintiff's 15-day Rebuttal
Period Ends 12/29/2012

In each instance, a copy of the transcript of
testimony, together with copies of documentary exhibits,
must be served on the adverse party within thirty days after
completion of the taking of testimony. Trademark Rule
2.125.
Briefs shall be filed in accordance with Trademark
Rules 2.128(a) and (b). An oral hearing will be set only
upon request filed as provided by Trademark Rule 2.129.