Therapeeds, Inc.v.Rehab United Sports Medicine & Physical Therapy, Inc.

Trademark Trial and Appeal Board

Apr 24, 2013

No. 92053963 (T.T.A.B. Apr. 24, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: April 24, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Therapeeds, Inc.

v.

Rehab United Sports Medicine & Physical Therapy, Inc.
_____

Cancellation No. 92053963
against Registration No. 3180156
_____

Mark D. Passler, Esq. of Akerman Senterfitt for Therapeeds, Inc.

Rehab United Sports Medicine & Physical Therapy, Inc., pro se.

_____

Before Quinn, Wellington and Adlin,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Therapeeds, Inc. (hereinafter “petitioner”) filed a petition to cancel the registra-
tion of Rehab United Sports Medicine & Physical Therapy, Inc. (hereinafter “re-
spondent”) for the mark THERAPEEDS in standard character format for “physical
therapy services” in International Class 44.1

1 Registration No. 3180156 was issued on December 5, 2006. A declaration of use pursuant
to Section 8 of the Act has been accepted.
Cancellation No. 92053963

2

Petitioner has alleged priority and likelihood of confusion as the ground for can-
cellation.2 Specifically, petitioner has alleged that since 1999 it has been using the
same mark, THERAPEEDS, in connection with “physical, occupational, speech, and
cognitive therapy for pediatric patients” and that it is the owner of application Seri-
al No. 85300163 for the same mark and has “the reasonable belief” that this mark
will be refused registration based on respondent’s registration. Petitioner alleges
that respondent’s use of its mark is “likely to cause confusion” with petitioner and
its services.
Respondent, in its answer, denied the salient allegations in the complaint.
The parties filed trial briefs.
The Record
The record, by operation of the rules, includes the pleadings and the file of the
subject registration.
In addition, petitioner has submitted the testimony, with exhibits, of Ms. Julie
Harper, petitioner’s president and clinical director, and an occupational therapist by
training.
During its testimony period, petitioner filed a notice of reliance on the following
materials: excerpts from a Rule 30(b)(6) deposition of respondent’s designated wit-
ness, Mr. Sean Hill, and certain exhibits introduced during this deposition;
printouts from third-party websites for the stated purpose of “demonstrat[ing] re-

2 Petitioner also made a general allegation that respondent has “abandoned trademark use
of” the registered mark. However, petitioner did not pursue this ground at trial or argue
this in its trial brief. Accordingly, any possible abandonment ground has been waived and
has not been given further consideration.
Cancellation No. 92053963

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latedness of [the parties’] services and trade channels”; copies of respondent’s re-
sponses to petitioner’s first set of interrogatories; and printouts from USPTO data-
bases for third-party registrations and a search result for the stated purpose of
“demonstrat[ing] relatedness” of the parties’ services.
Respondent did not offer any testimony or otherwise submit any evidence dur-
ing its testimony period. However, with its brief, respondent attached materials
that were previously not introduced into the record; petitioner’s objection to these
materials is sustained and they have been given no further consideration. Trade-
mark Rule 2.123(l); see also, Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, 90
USPQ2d 1112, 1116 (TTAB 2009).
Standing
Through the testimony of Ms. Harper, petitioner has established that it is in the
business of providing occupational and physical therapy services under the mark
THERAPEEDS; thus, it is not a “mere intermeddler” and has standing to petition to
cancel respondent’s mark. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842 (Fed. Cir. 2000); see also Lipton Industries, Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Priority
Petitioner has pleaded and relies on common law rights in its mark THERA-
PEEDS, in connection with physical, occupational, speech, and cognitive therapy for
pediatric patients. As plaintiff in this cancellation, petitioner must establish priori-
ty with respect to such rights. That is, petitioner must prove by a preponderance of
Cancellation No. 92053963

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the evidence that its common law rights were acquired before any date upon which
respondent may rely. Trademark Act Section 2, 15 U.S.C. §1052; Hydro-Dynamics
Inc. v. George Putnam & Company Inc., 811 F.2d 1470, 1 USPQ2d 1772, 1773 (Fed.
Cir. 1987) (The “decision as to priority is made in accordance with the preponder-
ance of the evidence”). For priority purposes, respondent, at the very least, can rely
on the filing date of its trademark application that matured into the subject regis-
tration, which was on September 29, 2005. See Trademark Act Section 7(c), 15
U.S.C. § 1057 (c). See also Larami Corp. v. Talk to Me Programs, Inc., 36 USPQ2d
1840 (TTAB 1995) (parties may rely on constructive use (filing) dates for purposes
of priority).
The record establishes that petitioner was formed in 1999 under the name
Therapeeds, Inc. and has continuously used the mark THERAPEEDS since that
date in connection with various types of therapeutic care and educational services.
Harper 7:23-24, 9:11-20. Specifically, these services include “therapy services to the
pediatric client from infancy to adulthood, and that involves providing evaluation
and assessment services as well as one-to-one therapy services to our clients ... con-
sultation services to parents … [and] continuing education classes to occupational
therapists, physical therapists, speech therapists … [and other professionals in the
field].” Harper 8:10-18. Between 1999 to 2001, petitioner rendered its services in
children’s homes and beginning in 2001 rendered services at treatment centers.
Harper 20:1-11.
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Respondent did not introduce any evidence or testimony and thus did not at-
tempt to prove its own priority or otherwise disprove petitioner’s showing of priori-
ty. And, while respondent may rely on the its constructive filing date in 2005 for
purposes of priority, we note that petitioner conceded (and submitted the testimony
of Mr. Sean Hill as support) that respondent’s first use of its THERAPEEDS mark
commenced in 2003. Thus, the earliest possible date Respondent can rely upon for
priority purposes is 2003.
Accordingly, the evidence shows that petitioner acquired common law rights in
the mark THERAPEEDS in 1999 in connection with, inter alia, physical therapy
services, and this precedes any date that respondent may rely upon. Petitioner has
proven priority of use.
Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the probative facts in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See
also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003). In any likelihood of confusion analysis, two key considerations are the simi-
larities between the marks and the similarities between the goods and/or services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976).
We initially address the du Pont factor involving the similarity or dissimilarity
of the marks when viewed in their entireties in terms of appearance, sound, conno-
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tation and commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir.
2005); see also In re E. I. du Pont De Nemours & Co., 177 USPQ at 567. Here, the
marks are essentially identical. Although petitioner has demonstrated use of its
mark employing mixed case lettering, i.e., TheraPeeds, this is of little consequence
because respondent’s registered mark is in standard characters, THERAPEEDS,
and we must therefore assume that respondent’s mark may be presented in various
styles and fonts, including the use of upper and lower case lettering as used by peti-
tioner. See, e.g., Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98
USPQ2d 1253, 1258-59 (Fed. Cir. 2011).
Because of the identity of the marks, this du Pont factor weighs heavily in favor
of finding a likelihood of confusion.
We next consider the du Pont factors regarding the similarity or dissimilarity of
the services, trade channels and classes of consumers. In our evaluation of these
factors, we are bound by the services identified in the involved registration, as well
as the previously mentioned services in connection with which petitioner has estab-
lished prior common law rights. As to the registration, in the absence of any re-
strictions or limitations we must assume the recited services are offered through all
the normal and usual trade channels for such services to all the usual consumers of
such services. See Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001 (Fed. Cir. 2002); and Octocom Systems Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1987).
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With the aforementioned principles in mind, we find that the parties’ services
are, in part, identical and would necessarily be offered in the same trade channels
to the same consumers. That is, petitioner has demonstrated use of its mark in
connection with, inter alia, physical therapy services for children. While these ser-
vices are somewhat limited, to the extent that they are offered in a pediatric setting,
respondent’s identification of physical therapy services is not limited and we must
assume that respondent may also provide physical therapy services to children. Pe-
titioner also renders “occupational therapy” services to children and said services
are closely related to respondent’s physical therapy services. As Ms. Harper ex-
plained, “[o]ccupational and physical therapy interrelate very much with the pedi-
atric client because all of us are focused on making sure that the child has the motor
skills to function in life … [petitioner] use[s] both occupational and physical therapy
services to support a child to function in their life.” Harper 12:8-14. Finally, be-
cause the parties’ services are identical in part, we must assume that the purchas-
ers and channels of trade for such identical services are the same. See Genesco Inc.
v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003).
Accordingly, the du Pont factors involving the similarity of the services, trade
channels and classes of purchasers weigh in favor of finding a likelihood of confu-
sion. Like the parties’ marks, their services are also identical, at least in part. See
Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992) (“[w]hen marks would appear on virtually identical
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goods or services, the degree of similarity [of the marks] necessary to support a con-
clusion of likely confusion declines.”)
As to the other du Pont factors argued by the parties, the evidence is limited or
non-existent and these factors are neutral in our analysis.
Based on the entire record and careful consideration of the parties’ arguments,
there is no doubt that a likelihood of confusion exists should both parties engage in
the contemporaneous use of the same mark, THERAPEEDS, in connection with
services that are identical, in part, and otherwise closely related.
Decision: The petition to cancel on the ground of priority and likelihood of con-
fusion is granted, and Registration No. 3180156 will be cancelled in due course.