Holmquistv.Synergy Rehabilitation, Inc.

Trademark Trial and Appeal Board

Nov 3, 1999

OPP (T.T.A.B. Nov. 3, 1999)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB 11/3/99
cab
Opposition No. 104,343
Opposition No. 104,344
Paul A. Holmquist and Colleen
P. Holmquist, dba Synergy
Physical Therapy
v.
Synergy Rehabilitation, Inc.
Before Quinn, Wendel and Bottorff, Administrative Trademark
Judges.
By the Board:
Applicant has filed two applications to register the
following marks:
SYNERGY. WORKING TOGETHER WORKS.1
and
2

1 Application Serial No. 74/699,781, typed form, filed on May 4, 1995,
and claiming use in commerce since February 1994.
2 Application Serial No. 74/699,781, filed on May 4, 1995, and claiming
use in commerce since February 1994; “REHABILITATION, INC.”
disclaimed.
UNITED STATES DEPARTMENT OF COMMERCE
Patent and Trademark Office
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513
Opposition Nos. 104,343 and 104,344
2
each for “physical, occupational and speech therapy” in Class 42.
As grounds for the opposition, opposers allege that applicant’s
marks so resemble opposers’ previously used and registered mark
SYNERGY PHYSICAL THERAPY3 for “physical therapy services” in
Class 42 and opposers’ previously used mark SYNERGY, used in
connection with opposers’ “physical therapy and related or
associated services,” as to be likely to cause confusion, mistake
or deception.
In its answers, applicant admits that “February 1994 is the
first use date alleged in its application for the subject mark;”
alleges that it began using “the tradename SYNERGY REHABILITATION
SERVICES” during 1993; and otherwise denies the salient
allegations of the notices of opposition.
This case now comes up on the parties’ cross motions for
summary judgment; applicant’s alternate motion to divide its
applications pursuant to Trademark Rule 2.86(a), to which
opposers have responded; opposers’ objection to the evidence
submitted by applicant in its cross motion for summary judgment,
to which applicant has responded; applicant’s objections to
opposers’ addition to the record for summary judgment, to which
opposers have responded; and opposers’ request for leave to file
a new paper in the nature of a petition decision by the Assistant

3 Registration No. 1,915,713, registered on August 29, 1995, and
claiming use in commerce since June 17, 1993 (date of first use set
forth as January 22, 1991); “PHYSICAL THERAPY” disclaimed.
Opposition Nos. 104,343 and 104,344
3
Commissioner for Trademarks and request for leave to file newly
acquired evidence, to which applicant has not responded.
In support of their motion for summary judgment, opposers
argue that there are no genuine issues of material fact, that
likelihood of confusion exists, and that they are entitled to
judgment as a matter of law. Opposers contend that there is no
issue as to priority, and that opposers are the prior users.
Opposers argue that applicant’s marks, SYNERGY. WORKING TOGETHER
WORKS. and SYNERGY REHABILITATION, INC. and design, are highly
similar to their mark, SYNERGY PHYSICAL THERAPY, because SYNERGY
is the first, and dominant, audio-literal term in each mark, and,
thus, the term most likely to be remembered by purchasers.
Opposers also argue that the connotations of the marks are the
same. Opposers contend that there is no issue as to the
relatedness of the services because the services are identical,
at least with respect to “physical therapy services.” Opposers
argue further that the channels of trade for the services are the
same, and that the services embrace all levels of buying and/or
purchasing consumers; that patients come to opposers with and
without prescriptions; that some patients seek opposers’ services
even though their prescriptions name a different physical therapy
organization; that opposers chose the name to avoid reliance on
individual therapist reputation; that physical therapy is for
correcting dysfunction and is not massage or fitness training;
and that action has been taken against a third party who caused
actual confusion when such use was discovered. Opposers also
Opposition Nos. 104,343 and 104,344
4
contend that any third-party uses of the term SYNERGY shown by
applicant are outside the parameters of the services as set forth
by applicant and opposers and are, therefore, not relevant to the
issue of likelihood of confusion between the subject marks
herein. Opposers argue that their mark is not weak, but
distinctive, and the term SYNERGY is the equivalent of SYNERGY
PHYSICAL THERAPY because PHYSICAL THERAPY is generic for the
services rendered under the mark.
In response, and in its cross motion for summary judgment,
applicant argues that there are no genuine issues of material
fact, that confusion is not likely, and that it is entitled to
judgment as a matter of law. In particular, applicant argues
that confusion is not likely because the practical market
realities include: a requirement for a medical prescription,
patient referral, importance of personal relationships and
reputation of the therapists, common practice in the field of
selecting similar tradenames and trademarks, and increasing
popularity of the term SYNERGY as part of a trademark within the
trade. Applicant contends that the term SYNERGY is “hot,” and in
recent years has become extremely popular for business of all
types, including the health industry. Applicant argues further
that there are distinct differences between the parties’
respective marks; that the term SYNERGY is weak and used
extensively by third parties, including those in the health care
field; and that there is an absence of any evidence of actual
confusion. Applicant argues that the marks must be compared in
Opposition Nos. 104,343 and 104,344
5
their entireties rather than focusing only on the term SYNERGY,
and that there are other elements in each of its marks which
distinguish them and create different commercial impressions from
opposers’ mark. Applicant acknowledges a certain amount of
overlap in the parties’ services but argues that, due to
substantial third-party use of the term SYNERGY in the health
care field, consumers are able to distinguish among the various
service providers and products in the industry. Applicant
concedes that the recitations of services in its applications and
opposers’ registration are unrestricted, but contends that other
factors, including differences in the marks and third-party uses
of the term SYNERGY, negate any impact of the services travelling
in the same channels of trade. Applicant argues that a high
degree of care is exercised by medical professionals and patients
in connection with physical therapy services, thus reducing any
possibility of confusion, and that there has been no actual
confusion.
Opposers’ motion for summary judgment is accompanied by the
following: a status and title copy of opposer’s pleaded
Registration No. 1,915,713; a dictionary definition of the term
“synergy;” a certified copy of opposers’ application Serial No.
75/176,768, against which applicant’s applications had been
referenced; copies of communications from the office of the
Assistant Commissioner for Trademarks concerning a petition filed
by opposers; a declaration of opposers that they are the owners
of the pleaded registration and above referenced application;
Opposition Nos. 104,343 and 104,344
6
copies of applicant’s specimens in its applications; copies of
documents produced by applicant in response to opposers’
discovery requests showing applicant’s use of the term SYNERGY in
advertising; a copy of applicant’s answers and objections to
opposers’ first and second sets of admissions; a declaration of
Paul A. Holmquist; a copy of the petition decision of the
Assistant Commissioner for Trademarks concerning opposers’
application Serial No. 75/176,768; and a copy of opposers’
Registration No. 2,246,947 into which application Serial No.
75/176,768 matured.
Applicant’s response and cross motion for summary judgment
is accompanied by the following: copies of fifteen federal
registrations consisting, at least in part, of the term SYNERGY;
Internet Yellow Page listings of companies operating under the
name SYNERGY, or variations thereof; the declaration of Laura A.
Newman, attorney for applicant, in support of associated
exhibits; a copy of a trademark search report for the term
SYNERGY covering federal and state registrations and common law
uses; copies from the Internet of information about various
products and services apparently offered under the term SYNERGY;
copies of pages thirteen-fourteen of opposers’ response to
applicant’s first interrogatories; the declaration of Jane
Wintersteen, president and general manager of Synergy
Rehabilitation, Inc., and accompanying exhibits; the declaration
of Anne Randolph, executive vice president of Client Services for
Synergy Rehabilitation, Inc., and accompanying exhibits; the
Opposition Nos. 104,343 and 104,344
7
declaration of Grace Medina-Chow, executive vice president of
Business Operations for Synergy Rehabilitation, Inc., and
accompanying exhibits; the declaration of Suellen Smith,
administrative director of Doctors Medical Center-Pinole Campus,
and accompanying exhibits; the declaration of Jim Kanyusik, legal
assistant with the law firm representing applicant, and
accompanying exhibits; the declaration of Anne Archambault, legal
assistant with the law firm representing applicant, and
accompanying exhibits; the declaration of Timothy Thor, physical
therapist for Guardian Health Group; the declaration of Mary
Oates, physical medicine and rehabilitation practitioner; and a
second declaration of Jane Wintersteen, and accompanying
exhibits.
Opposers’ requests to file a new paper and newly acquired
evidence
Opposers have requested leave to file a new paper for
consideration of a petition decision rendered by the Assistant
Commissioner for Trademarks granting opposers’ petition, in part,
to lift suspension of opposers’ application Serial No. 75/176,768
for the mark SYNERGY for “physical therapy services” in Class 42
in order to allow the subject application to proceed to
publication.4 Opposers have characterized the petition decision

4 Application Serial No. 75/176,768, claiming use in commerce since
June 17, 1993 and first use anywhere since January 22, 1991, was filed
subsequent to applicant’s applications which are the subject matter of
this proceeding. Applicant’s pending applications were referenced by
Opposition Nos. 104,343 and 104,344
8
as “the best evidence of what it contains.” Opposers have also
requested leave to file as newly acquired evidence a copy of
Registration No. 2,246,947,5 the registration into which
application Serial No. 75/176,768 matured. Opposers further
request leave to later file a certified copy of Registration No.
2,246,947, indicating that such a copy was not available when
opposers filed their request for leave to file newly acquired
evidence. Applicant has not filed any response to opposers’
requests.
If a plaintiff’s registration is pleaded, and such a
pleading is accompanied by a status and title copy of the
registration prepared by the Patent and Trademark Office, the
registration is of record for all purposes, including summary
judgment. Alternatively, a plaintiff may make its pleaded
registration of record for the purposes of summary judgment by
filing a status and title copy with its brief on the summary
judgment motion. See Trademark Rule 2.122(d)(1); and TBMP
Section 528.05(d).
Opposer has not filed a motion to amend the notice of
opposition to plead the additional registration that opposer now
seeks to make of record; and opposer was not able to include a
status and title copy of Registration No. 2,246,947. Moreover,

the Examining Attorney as potential bars to registration of opposers’
later filed application.
5 U.S. Registration No. 2,246,947, for the mark SYNERGY for “physical
therapy services” in Class 42, registered on May 25, 1999 and claiming
use in commerce since June 17, 1993, first use anywhere January 9,
1991.
Opposition Nos. 104,343 and 104,344
9
the Board does not find it necessary to its decision herein that
Registration No. 2,246,947 be made of record.6
Accordingly, opposer’s requests for leave to file a new
paper in the nature of a petition decision rendered by the
Assistant Commissioner for Trademarks and for leave to file newly
acquired evidence in the nature of a copy of Registration No.
2,246,947 are denied.
Opposers’ objections to applicant’s evidence
Opposers have objected to applicant’s submissions of
evidence and supporting declarations on the basis that
applicant’s evidence is irrelevant, constitutes hearsay, and
amounts to an abusive and harassing presentation of a
“hodgepodge.”
For purposes of summary judgment, a party may make of record
copies of other registrations; documents or things produced in
response to a request for production; official records, if
competent evidence and relevant to an issue; printed
publications, such as books and periodicals, available to the
general public in libraries or of general circulation among
members of the public or that segment of the public which is
relevant under an issue, if the publication is competent evidence
and relevant to an issue; and testimony from other proceedings,

6 The Board notes further that, in any event, even if this evidence had
been considered on opposers’ behalf, it would simply be cumulative to
that already of record.
Opposition Nos. 104,343 and 104,344
10
so far as relevant and material. In addition, affidavits may be
submitted in support of, or in opposition to, a motion for
summary judgment provided that they (l) are made on personal
knowledge; (2) set forth such facts as would be admissible in
evidence; and (3) show affirmatively that the affiant is
competent to testify to the matters stated therein. See Fed. R.
Civ. P. 56(e). This is so even though affidavits are self-
serving in nature, and even though there is no opportunity for
cross-examination of the affiant. Moreover, a copy of a
trademark search report, made of record as an exhibit to an
affidavit, submitted in opposition to a summary judgment motion,
may be sufficient to raise a genuine issue of material fact as to
the nature and extent of third-party use of a particular
designation. See Lloyd’s Food Products Inc. v. Eli’s Inc., 987
F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993). See, also, TBMP
Section 528.
Opposers’ blanket objections to applicant’s evidentiary
submissions and declarations will not be upheld, and the Board
has considered applicant’s evidence in determining the motions
for summary judgment before us. See, for example, Jean Patou
Inc. v. Theon Inc., 18 USPQ2d 1072 (TTAB 1990).
Applicant’s objection to opposers’ addition to the record
In accompaniment with their brief in response to applicant’s
cross motion for summary judgment, opposers included the
declaration of Paul A. Holmquist as an addition to the record for
Opposition Nos. 104,343 and 104,344
11
summary judgment. Applicant has objected to opposers’ addition
to the record for summary judgment. Specifically, applicant
objects to Paragraph No. 9, wherein Mr. Holmquist states that
Synergy Health Center in St. Paul, Minnesota “terminated its use
of Synergy in October of this year,” as impermissible hearsay and
further requests that the statement be stricken. Applicant also
objects to Paragraph No. 11 on the basis of relevancy, arguing
that statements concerning the comparative need by hospitals and
nursing homes for physical therapists versus occupational and
speech therapists are not relevant to the issues at hand.
Hearsay, a statement other than one made by the declarant
while testifying at trial or hearing offered into evidence to
prove the truth of the matter asserted, is not admissible except
as specifically provided. See Fed. R. Evi. 801, 802 and 803.
The statement made in Paragraph No. 9 of the declaration of
Paul A. Holmquist does not fall into any of the hearsay
exceptions and is hereby stricken.
As to the statement made in Paragraph 11 of the declaration
of Paul A. Holmquist, applicant’s objection is noted. See, for
example, Jean Patou Inc. v. Theon Inc., 18 USPQ2d 1072 (TTAB
1990).
Likelihood of confusion
The Board now turns to the parties’ cross motions for
summary judgment. In a motion for summary judgment, the moving
party has the burden of establishing the absence of any genuine
Opposition Nos. 104,343 and 104,344
12
issue of material fact and that it is entitled to judgment as a
matter of law. See Fed. R. Civ. P. 56. A genuine dispute with
respect to a material fact exists if sufficient evidence is
presented that a reasonable fact finder could decide the question
in favor of the non-moving party. See Opryland USA Inc. v. Great
American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed.
Cir. 1992). Thus, all doubts as to whether any particular
factual issues are genuinely in dispute must be resolved in the
light most favorable to the non-moving party. See Olde Tyme
Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ 1542 (Fed.
Cir. 1992).
In determining the issue of likelihood of confusion, and
hence whether there is any genuine issue of material fact
relating thereto, the Board must consider all of the probative
facts in evidence which are relevant to the factors bearing on
likelihood of confusion, as identified in In re E.I du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). As noted
in the du Pont decision itself, each of the factors, from case to
case, may play a dominant role. Id., 476 F.2d at 1361, 177 USPQ
at 567. Those factors as to which we have probative evidence are
discussed below. After a careful review of the record in this
case, we find that there are no genuine issues of material fact
relating to those factors.
Preliminarily, insofar as priority is concerned, opposers’
submission of a status and title copy of its pleaded registration
for the mark SYNERGY PHYSICAL THERAPY, showing that this
Opposition Nos. 104,343 and 104,344
13
registration is subsisting and owned by opposers, is sufficient
to establish priority with respect to the services recited in the
registration. See King Candy Co., Inc. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
As to the services offered by each party, opposers’
identified services, “physical therapy services,” and applicant’s
identified services, “physical, occupational and speech therapy
services,” are identical in part as to “physical therapy
services.” In addition, applicant acknowledges “a certain degree
of overlap” in the parties’ respective services. Thus, the
services are either the same or closely related.
As to the channels of trade, applicant concedes that the
recitations of services in opposers’ registration and applicant’s
applications are unrestricted. Thus, the Board must presume that
the services travel in all the normal channels of trade available
for the services. See Kangol Ltd. v. KangaROOS U.S.A., 974 F.2d
161, 23 USPQ2d 1945 (Fed Cir. 1992). Applicant attempts to
negate the impact of the parties’ respective services travelling
in the same channels of trade by arguing that a higher degree of
care is exercised by the medical professionals and patients in
connection with physical therapy services and that market
conditions, including physician referral and professional
relationships, reduce any possibility of confusion between the
parties’ marks. However, where the services are the same and
overlapping, and travel in the same channels of trade, even
sophisticated and knowledgeable consumers are not infallible in
Opposition Nos. 104,343 and 104,344
14
their recollection of trademarks. See, for example, HRL
Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB
1989), aff’d on point, 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir.
1990).
The key factor in this case is the degree of similarity of
the marks being used by opposers and applicant: SYNERGY PHYSICAL
THERAPY, opposers’ mark; and SYNERGY. WORKING TOGETHER WORKS; and
SYNERGY REHABILITATION, INC. and design, applicant’s marks. In
comparing the marks, the Board is guided by the general principle
that the greater the degree of similarity of the products or
services, the lesser the degree of similarity of the marks that
is required for there to be a likelihood of confusion. See
Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d
874, 23 USPQ2d 1698 (Fed. Cir. 1992). It is equally well
established that, although the marks must be considered in their
entireties, there is nothing improper in giving more or less
weight to a particular feature of a mark, particularly where
portions of the marks are descriptive or generic. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985); and In re Dixie Restaurants, Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
Applicant’s marks, SYNERGY. WORKING TOGETHER WORKS; and
SYNERGY REHABILITATION, INC. and design, and opposers’ mark,
SYNERGY PHYSICAL THERAPY, are similar in appearance, sound,
connotation and commercial impression. SYNERGY is the dominant,
audio-literal, source-indicating portion of each mark. The terms
Opposition Nos. 104,343 and 104,344
15
PHYSICAL THERAPY in opposers’ mark and REHABILITATION, INC. in
one of applicant’s marks do not serve to diminish the
similarities of the marks because, being descriptive and/or
generic, they identify the services. In applicant’s mark SYNERGY
REHABILITATION, INC. and design, SYNERGY is dominant because it
is presented in large lettering over the design. Also, greater
weight generally is given to a word portion of the mark, because
it is by the words that purchasers will refer to the goods, and
the words, rather than the design feature or the stylized
lettering, will therefore make a greater impression on the
consumers. See Ceccato v. Maniffatura Lane Gaetano Marzotto y
Figli S.p.A., 32 USPQ2d 1192 (TTAB 1994); and In re Appetito
Provisions Co., 3 USPQ2d 1553 (TTAB 1987). In applicant’s mark
SYNERGY. WORKING TOGETHER WORKS., the second phrase serves to
emphasize the meaning of the term SYNERGY, that is, “to work
together; combined or cooperative action or force.” (See
opposers’ Exhibit No. 2.) In addition, applicant emphasizes the
term SYNERGY in its advertising and uses the term SYNERGY,
centered, over the phrase WORKING TOGETHER WORKS. (See opposers’
Exhibit Ltrs. A-E.) Comparison of the commercial impressions
created by competing marks in their commercial context is
appropriate. See Giant Food, Inc. v. Nation’s Foodservice, Inc.,
710 F.2d 1569, 218 USPQ 393 (Fed. Cir. 1983). A comparison of
the parties’ respective marks shows that they are similar.
Applicant’s evidence in support of its argument that
the term SYNERGY is weak and extensively used by third parties,
Opposition Nos. 104,343 and 104,344
16
thus enabling consumers to distinguish minor differences between
the marks, is unpersuasive. The third-party uses which are
relevant to this proceeding would involve uses in connection with
“physical, occupational and speech therapy.” The evidence
submitted by applicant reveals only eight apparent uses of the
term SYNERGY in connection with such services. The case of
Steve’s Ice Cream v. Steve’s Famous Hot Dogs, 3 USPQ2d 1477 (TTAB
1987), upon which applicant relies, is distinguishable. In that
case, the evidence of third-party use submitted by the applicant
showed numerous uses of the term STEVE’S and its derivatives,
STEPHEN and STEVEN, in connection with the services at issue in
the case, including 173 restaurants and 87 food stores. See,
also, In re Broadway Chicken, Inc., 38 USPQ2d 1599 (TTAB 1996),
where no likelihood of confusion was found between applicant’s
mark BROADWAY CHICKEN for “restaurant services” and opposer’s
marks BROADWAY PIZZA for “restaurant services” and BROADWAY PIZZA
& BAR for “restaurant and bar services,” and the evidence
submitted included more that 575 directory listings of entities
whose names contained the term BROADWAY and who offered
restaurant services. We are not persuaded that the minimal
number of apparent third-party uses herein raises a material
issue of fact for trial. Stated differently, the Board is
convinced that there is a likelihood of confusion here as a
matter of law, where substantially similar marks are used in
connection with the same services, even assuming the existence of
these eight third-party uses.
Opposition Nos. 104,343 and 104,344
17
Although there is no evidence of actual confusion between
the parties’ respective uses, this does not preclude a finding of
likelihood of confusion. See, for example, Walgreen Co. v. Knoll
Pharmaceutical Co., 162 USPQ 609 (TTAB 1969).
Considering the substantial similarities between the marks,
we find that, when used on the identical and/or closely related
services, confusion is likely to result. Opposers, therefore,
have met their burden of establishing that no genuine issues of
material fact exist and that confusion is likely.
Accordingly applicant’s cross motion for summary judgment is
denied; opposers’ motion for summary judgment is granted,
judgment is entered against applicant and registration to
applicant is refused.
Applicant’s alternate motion to divide its applications
Applicant has filed an alternate motion to divide its
applications in the event that applicant’s cross motion for
summary judgment is not favorably received. By its motion to
divide, applicant seeks to separate “physical therapy services”
from “occupational and speech therapy services,” arguing that the
latter two services have not been opposed.
In response, opposer argues that its motion for summary
judgment does not constitute a withdrawal or waiver of any of the
pleadings; that such a separation of the services would be an
artificial separation because the services are combined as a
Opposition Nos. 104,343 and 104,344
18
package; and that such a separation would not avoid likelihood of
confusion.
A motion to divide is appropriate where an application which
is the subject of an opposition includes more than one service in
a single class, and the opposition is not directed to all of the
services. See Trademark Rule 2.86(a); and TBMP Section 516.
The Board has carefully reviewed the complaint in this
opposition and finds that opposer did not direct the opposition
to only “physical therapy services,” but to all services recited
by applicant in its applications.
Accordingly, applicant’s alternate motion to divide the
applications is denied, and all services recited in each of the
applications which are before the Board on this opposition are
subject to this opposition proceeding, and the grant of summary
judgment to opposers operates as judgment against applicant as to
all the recited services in the applications.
T. J. Quinn
H. R. Wendel
C. M. Bottorff
Administrative Trademark
Judges, Trademark Trial and
Appeal Board