Robert E. Beer, M.D., Inc.v.Kenneth Beer

Trademark Trial and Appeal Board

Nov 28, 2016

No. 91218552 (T.T.A.B. Nov. 28, 2016)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: November 28, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Robert E. Beer, M.D., Inc.
v.
Kenneth Beer
_____

Opposition No. 91218552
_____

Wendy Peterson of Not Just Patents LLC
for Robert E. Beer, M.D., Inc.

Mark C. Johnson of The Concept Law Group PA
for Kenneth Beer.
_____

Before Quinn, Ritchie, and Shaw, Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Kenneth Beer (“Applicant”) filed an application to register the mark DERMNOW
(in standard characters) for “dermatology services” in International Class 44.1

1 Application Serial No. 86242034, filed April 3, 2014 under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), alleging a bona fide intention to use the mark in commerce.
Opposition No. 91218552

2

Robert E. Beer, M.D., Inc. (“Opposer”) opposed registration on the ground that
Applicant did not have a bona fide intention to use the mark in commerce in
connection with the identified services at the time he filed the present application.2
Applicant denied the allegations comprising the amended notice of opposition,
and more specifically, denied the claim of lack of a bona fide intention to use the
present mark.
Evidentiary Objections
Before considering the merits of this proceeding, we turn to an evidentiary
matter. The parties agreed to expedite this proceeding through the Board’s
Accelerated Case Resolution procedure, as reflected in the Board’s order dated April
24, 2015. (17 TTABVUE). See generally TBMP § 702.04 (2016). In a subsequent order
issued by the Board on March 25, 2016, the parties were given a deadline to exchange
evidence that they intended to submit with their main trial briefs. (28 TTABVUE).
Opposer timely exchanged certain evidence on the last day; over one month after the
deadline, Opposer filed a “supplemental notice of trial evidence,” which listed
additional evidence upon which it intended to rely. This additional evidence
comprises Applicant’s declaration, a third-party’s declaration, and Applicant’s
previously filed applications, later abandoned.

2 The original notice of opposition was grounded solely on priority and likelihood of confusion.
Opposer subsequently withdrew this ground with prejudice, and sought to amend its pleading
to claim that Applicant did not own the mark, and that Applicant lacked a bona fide intent
to use the mark. The Board, in an order dated September 2, 2015, dismissed the likelihood of
confusion claim with prejudice, and denied the amendment to allege lack of ownership. In
the same order, the Board allowed Opposer to proceed with its claim of no bona fide intent to
use the mark.
Opposition No. 91218552

3

Applicant, in its main brief, has objected to this additional evidence on three
grounds. More specifically, Applicant states that “Opposer’s dilatory circumvention
of the Board’s order [dated March 25, 2016] prohibited Applicant from providing
additional testimony addressing said supplemental submissions without further
delay of these proceedings.” (31 TTABVUE 6). Applicant also contends that “nowhere
in Opposer’s supplemental notice of reliance did it indicate how or why the cited
materials were relevant to Opposer’s case-in-chief.” (31 TTABVUE 8). Lastly,
Applicant contends that the evidence of Applicant’s previously filed applications “lack
foundation and are irrelevant.” (31 TTABVUE 9).
In a second objection, Applicant also objects to Opposer’s initial notice of reliance,
and the evidence relied upon, more specifically, Applicant’s responses to discovery
requests. Applicant argues that this evidence was “not used by Opposer in its trial
brief.” (31 TTABVUE 7).
Opposer, in its reply brief, states that the evidence at issue was furnished by
Applicant and, thus, Applicant cannot claim surprise at trial, given that the evidence
is Applicant’s own evidence. Opposer also claims that Applicant failed to timely object
to the supplemental disclosure, rather waiting until three months later to do so in its
brief. Opposer points out that Applicant never requested any additional testimony
time or leave to submit additional evidence in rebuttal, and that Applicant’s “lack of
objection in a timely manner would indicate its implied consent or waiver to the
supplemental disclosure.” (32 TTABVUE 5-6).
Opposition No. 91218552

4

We agree with Opposer’s assessment of the evidentiary dispute, and find that the
objections are not well taken. The fact that the evidence listed in Opposer’s original
notice of reliance was not referenced in Opposer’s brief is no reason to strike it. With
respect to the supplemental notice of reliance, all of the evidence relied upon by
Opposer was furnished by Applicant and, thus, there was no surprise. In the face of
Opposer’s supplemental notice of reliance, Applicant could have moved for an
extension of its time to submit additional testimony or evidence; given the
circumstances, an extension likely would have been granted, notwithstanding any
corresponding delay. Further, to the extent that the supplemental notice of reliance
did not state the relevancy of the proffered evidence as provided in Trademark Rule
2.122(e), this objection is deemed waived because Applicant failed to timely raise this
objection so that the error could be cured, but rather waited until its brief. TBMP
§ 707.02(a)-(b). See Corporacion Habanos SA v. Guantanamera Cigars Co., 102
USPQ2d 1085, 1093 (TTAB 2012); Hunt-Wesson Foods, Inc. v. Riceland Foods, Inc.,
201 USPQ 881, 883 (TTAB 1979).
In sum, Applicant’s objections are overruled in their entirety. In determining the
merits of this proceeding, we will consider all of the evidence of record, including the
relevancy thereof, and accord it appropriate probative value.
The Record
The record consists of the pleadings; the application at issue; the declarations of
Applicant and Joseph Lazzaro, with related exhibits; excerpts of Applicant’s website;
official records; email communications; domain name information; copies of
Opposition No. 91218552

5

Applicant’s previously filed applications, now abandoned; Applicant’s responses to
discovery requests, and Opposer’s responses to discovery requests. (30-31
TTABVUE).
Standing
The parties are both providers of dermatology services; nine days after Applicant
filed the present application, Opposer filed its application to register the identical
mark DERMNOW for identical services. Opposer’s application Serial No. 86364040
was suspended on November 26, 2014 based on Applicant’s earlier-filed application
involved herein, the Examining Attorney indicating that “[i]f the mark in
[Applicant’s] application registers, Applicant’s mark may be refused registration
under Section 2(d) because of a likelihood of confusion with that registered mark.”
Applicant, in its answer to the amended notice of opposition, admitted Opposer’s
standing. (26 TTABVUE 2). Moreover, Opposer's evidence of its pending trademark
application, and evidence that the application has been suspended pending resolution
of the subject application demonstrate that Opposer has a reasonable belief that it
would be damaged by registration of Applicant's mark, thus establishing its standing.
Empresa Cubana Del Tobaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058
(Fed. Cir. 2014); Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1959
(TTAB 2008), citing Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842
(Fed. Cir. 2000) and Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982).

Opposition No. 91218552

6

Bona Fide Intent
Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), states that:
A person who has a bona fide intention, under
circumstances showing the good faith of such person, to use
a trademark in commerce may request registration of its
trademark on the principal register hereby established by
paying the prescribed fee and filing in the Patent and
Trademark Office an application and a verified statement,
in such form as may be prescribed by the Director.

Opposer has the burden of demonstrating by a preponderance of the evidence that
applicant lacked a bona fide intent to use the mark on the identified services at the
time it filed its application. See Research in Motion Ltd. v. NBOR Corp., 92 USPQ2d
1926, 1930 (TTAB 2009); L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883, 1891
(TTAB 2008). We note at the outset that our inquiry is not into Applicant’s subjective
state of mind alone. As the Federal Circuit has stated, “[t]he reference to
‘circumstances showing the good faith’ strongly suggests that the applicant’s intent
must be demonstrable and more than a mere subjective belief.” M.Z. Berger & Co. v.
Swatch AG, 787 F.3d 1368, 114 USPQ2d 1892, 1897 (Fed. Cir. 2015), aff’g, Swatch
AG (Swatch SA) (Swatch Ltd.) v. M.Z. Berger & Co., 108 USPQ2d 1463 (TTAB 2013).
Rather, evidence of circumstances bearing on intent
is “objective” in the sense that it is evidence in the form of
real life facts and by the actions of the applicant, not by the
applicant’s testimony as to its subjective state of mind.
That is, Congress did not intend the issue to be resolved
simply by an officer of applicant later testifying, “Yes,
indeed, at the time we filed that application, I did truly
intend to use the mark at some time in the future.”

Opposition No. 91218552

7

L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1444 (TTAB 2012) (quoting 3 J. Thomas
McCarthy, McCarthy on Trademarks & Unfair Competition § 19:14 (4th ed. 2009));
see also SmithKline Beecham Corp. v. Omnisource DDS LLC, 97 USPQ2d 1300, 1305
(TTAB 2010); Research In Motion Ltd. v. NBOR Corp., 92 USPQ2d at 1931. In
addition, “an applicant’s intent must reflect an intention to use the mark consistent
with the Trademark Act’s definition of ‘use in commerce’: [T]he bona fide use of a
mark in the ordinary course of trade, and not made merely to reserve a right in a
mark.” M.Z. Berger & Co. v. Swatch AG, 114 USPQ2d at 1898.
Thus, as the Board consistently has held, our determination whether an applicant
has a bona fide intention to use the mark in commerce is an objective determination,
based on all the circumstances. Boston Red Sox Baseball Club L.P. v. Sherman, 88
USPQ2d 1581, 1587 (TTAB 2008). In the words of the Federal Circuit:
[W]e hold that whether an applicant had a ‘bona fide intent’
to use the mark in commerce at the time of the application
requires objective evidence of intent. 15 U.S.C. §
1051(b)(1). Although the evidentiary bar is not high, the
circumstances must indicate that the applicant's intent to
use the mark was firm and not merely intent to reserve a
right in the mark. (emphasis added).

M.Z. Berger & Co. v. Swatch AG, 114 USPQ2d at 1898.

One way an opposer can establish its prima facie case of no bona fide intent is by
proving that the applicant has no documentary evidence to support its allegation in
the application of its claimed previous bona fide intent to use the mark in commerce
as of the application filing date. Saul Zaentz Co. v. Bumb, 95 USPQ2d 1723, 1727
(TTAB 2010). Opposer has taken this avenue to question Applicant’s bona fide intent.
Opposition No. 91218552

8

The absence of any documentary evidence regarding an applicant’s bona fide
intention to use a mark in commerce is sufficient to prove that an applicant lacks the
intention required by Section 1(b) of the Trademark Act, unless other facts are
presented which adequately explain or outweigh applicant’s failure to provide such
documentary evidence. See Honda Motor Co. v. Winkelmann, 90 USPQ2d 1660, 1662
(TTAB 2009); L.C. Licensing Inc. v. Berman, 86 USPQ2d at 1891. If opposer satisfies
its initial burden of showing the absence of documentary evidence regarding
applicant’s bona fide intention to use the mark, the burden of production shifts to
applicant to come forward with evidence adequately explaining or outweighing the
failure to provide such documentary evidence. See Commodore Elecs. Ltd. v. CBM
Kabushiki Kaisha, 26 USPQ2d 1503, 1507 n.11 (TTAB 1993).
Applicant is a board certified dermatologist and has been in practice as a
dermatologist since 1989; he has authored several scientific articles and textbook
chapters, as well as articles for national publications such as The New York Times,
all on dermatology and cosmetic surgery. (30 TTABVUE 15-16). Applicant renders
his services from office locations in West Palm Beach and Jupiter, Florida. In
February 2014 Applicant launched his website, www.palmbeachcosmetic.com, which
advertises Applicant’s dermatology services, and includes information about
Applicant, his practice and dermatology products, services and procedures. Id.
Applicant perceived a need for an urgent-care treatment option for dermatology
services for prospective patients; these services would be rendered in an emergency
or urgent-care setting and, according to Applicant, such a service has not been
Opposition No. 91218552

9

previously offered by dermatology physicians. In preparation to use the mark
DERMNOW, Applicant decided to set up a business entity to eventually offer the
services under the mark, opining that “establishing a successful and licensed
business that provides medical services to individuals is not a quick process.” (30
TTABVUE 16-17). To this end, Applicant registered an entity in the state of Florida
in February 2014 under the name “DermNow, P.A.” to be used in connection with
rendering dermatology services under the mark; the “entity is solely owned and
operated by [Applicant], personally.” (30 TTABVUE 17). Applicant also directed his
administrative assistant on February 10, 2014 to start preparations to register a
website, and to begin the process to register the mark DERMNOW. (30 TTABVUE
17). Applicant indicates that his urgent-care dermatology services will be offered in
addition to those services already provided by Applicant’s principal practice, and out
of the same locations in Florida, or in remote locations where prospective customers
are located. Applicant, in February 2014, had leads on hiring additional physician
assistants and nurse practitioners who would be able to assist in providing
Applicant’s enhanced services. (30 TTABVUE 18). Applicant also contacted
Galderma, a company principally involved in the sale of dermatology products and
research in dermatology science advances, to ensure that he would have a sufficient
inventory of dermatology products. In that same month Applicant also contacted
insurance carriers so that his services rendered under the mark would be covered by
insurance; he shortly received a verbal confirmation that his urgent-care dermatology
services would be covered. On April 3, 2014 Applicant filed his trademark application.
Opposition No. 91218552

10

On May 9, 2014, Applicant discussed with his physician assistant the plan to
grow the practice under the mark to include urgent-care dermatology services, and
“the need to avoid distractions and setbacks that could potentially delay the offering
of urgent-care dermatological services under the Dermnow trademark.” (30
TTABVUE 19). Once Applicant learned in August 2014 of the possibility of Opposer’s
filing a notice of opposition, Applicant believed it prudent to not expend significant
resources continuing to develop services under the applied-for mark. Applicant’s
current plans, upon completion of this proceeding, are to build out space at one of his
medical facility locations, and start taking appointments. With that in mind, in
December 2014 Applicant did direct his administrative assistant to make sure the
domain name was set up in Applicant’s name to allow prospective patients to make
appointments under the DERMNOW mark. On December 12, 2014, Applicant
obtained domain names for www.dermnowcenter.com and www.derm-now.com. The
website at www.dermnowcenter.com is active, and includes the ability for prospective
patients to contact Applicant and make appointments. (30 TTABVUE 20). Applicant
has attached as exhibits to his testimony screen shots of his website, as well of copies
of emails confirming the discussions referenced above.
Joseph Lazzaro, president of Studio Ink, Co., handled the domain name
registration, and his testimony regarding that process corroborates that of Applicant.
(30 TTABVUE 52).
We find that Applicant has been rendering dermatology services, and is capable
of providing an expanded variety of dermatology services, including such services
Opposition No. 91218552

11

rendered in an emergency or urgent care environment. Applicant’s pre-filing
activities include the following events, all of which are supported by documentation:
the creation of two websites featuring the mark DERMNOW (30 TTABVUE 40-42;
43-51); the registration of the business entity Dermnow, P.A. at Applicant’s business
address where he practices (30 TTABVUE 28-37); contact with a dermatology
supplier of products (30 TTABVUE 38); contact with a staffing company to ensure
availability of medical professionals to assist in the rendering of services under the
mark DERMNOW (30 TTABVUE 38); and contact with insurer carriers to confirm
that medical services rendered under the mark would be covered by insurance (30
TTABVUE 38).
We find that Applicant, together with medical professionals hired by Applicant,
planned to provide dermatology services to individuals remotely or at one of
Applicant’s locations at which Applicant already offered dermatology services.
Applicant already owned tools and other resources to provide these services via his
established dermatology medical practice. The essential services remain
“dermatology services,” just that the additional dermatology services would be offered
in an emergency or urgent-care setting. Applicant has the capacity to practice
dermatology services, is actually engaged in providing dermatology services, and is
not merely trying to reserve a right in the mark DERMNOW.
Further, although unnecessary to decide the issue at hand, we find that
Applicant’s post-filing conduct bolsters his assertion of a bona fide intention to use
Opposition No. 91218552

12

the mark.3 These events include internal discussions within his practice regarding
the planned growth and use of the mark DERMNOW, as for example, an expansion
of building space, increased staffing, and registration of the domain names
www.derm-now.com and www.dernowcenter.com. While these discussions occurred
after the filing of the application, they corroborate the other evidence referenced
above showing that Applicant otherwise had the capacity and intent to use the mark
DERNOW in connection with dermatology services. Rolex Watch U.S.A. Inc. v. AFP
Imaging Corp., 101 USPQ2d 1188, 1197-98 (TTAB 2011), vacated on other grounds,
Rolex Watch U.S.A. Inc. v. AFP Imaging Corp.,107 USPQ2d 1626 (TTAB 2013).
Applicant’s decision to put his expansion plans on hold pending the outcome of this
proceeding is justified, and does not detract from his bona fide intention at the time
of filing his application.
Applicant contends that he “has provided documentation corroborating his steps
to use the DERMNOW trademark in connection with the branch of medicine he had
been practicing for over thirty years (and which is described in [his present
application]), dermatology services.” (emphasis in original). In this connection, it
bears repeating that the recitation of services in the present application is
“dermatology services,” which is broad enough to cover all types of such services,
including those offered in an urgent-care or emergency environment. If the services

3 Filing a trademark application, in and of itself, is not an act that signifies a bona fide intent.
Research In Motion Ltd. v. NBOR Corp., 92 USPQ2d at 1931 (“If the filing and prosecution
of a trademark application constituted a bona fide intent to use a mark, then in effect, lack
of a bona fide intent to use would never be a ground for opposition or cancellation, since an
inter partes proceeding can only be brought if the defendant has filed an application.”).
Opposition No. 91218552

13

are described broadly, as is the case herein, and there is no limitation as to their
nature, type, channels of trade, or class of purchasers, it is presumed that the
recitation encompasses all services of the type described, that they move in all normal
channels of trade, and that they are available to all classes of purchasers. See, e.g.,
Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367, 1373, 107
USPQ2d 1167, 1173 (Fed. Cir. 2013). Opposer appears to argue, without supporting
evidence, that it is a quantum leap for a dermatologist to expand from the routine
types of dermatology services to these types of services being offered in emergency
and urgent-care situations, because physicians have not done this before. However,
as just noted, “dermatology services” is a broadly worded recitation of services, and
legally encompasses all type of such services, regardless of the manner of delivery,
that is, whether rendered at a scheduled office appointment or in an emergency visit.
Thus, we are not persuaded by Opposer’s arguments.
Applicant’s filing and subsequent abandonment of prior applications is not
persuasive of a different result. Cf. L’Oreal S.A. v. Marcon, 102 USPQ2d at 1443-44.
The other applications, filed in 1999, 2003 and 2010, were for different marks and/or
different goods or services than those involved here; we find this evidence to have
minimal probative value on the bona fide intent at the time of filing in 2014 to use
DERMNOW for dermatology services. Indeed, an applicant can file more than one
intent-to-use application covering the same goods or services and still have the
requisite bona fide intention to use each mark. Commodore Electronics Ltd. v. CBM
Opposition No. 91218552

14

Kabushiki Kaisha, 26 USPQ2d at 1506 n.7 (quoting S. Rep. No. 100-515, 100th Cong.
2d Sess. at 24-25 (1988)).
In sum, consideration of the evidence as a whole supports a finding that Applicant
had a bona fide intent to use the mark DERMNOW at the time he filed his
application. Applicant’s testimony is credible; this clear and uncontradicted
testimony, supported by documentary evidence, together comprise objective facts that
establish his bona fide intention to use the mark. Lane Ltd. v. Jackson Int’l Trading
Co., 33 USPQ2d 1351, 1355 (TTAB 1994). Applicant already has an existing
dermatology practice, and is well equipped and capable to render such services, and
to expand his menu of services to include other dermatology treatments. Applicant
took specific and objectively verifiable steps to launch his mark, which established
his bona fide intent to use the mark. The fact that Applicant held off from launching
his expanded services under the mark because of this pending proceeding does not
diminish his intent. See Wet Seal Inc. v. FD Mgmt. Inc., 82 USPQ2d 1629, 1643 (TTAB
2007) (“Merely because applicant may not have taken steps to actually launch or
introduce a particular product does not mean that applicant otherwise had no
intention to develop or market the product.”).

Decision: The opposition grounded on Applicant’s alleged lack of bona fide intent to
use his applied-for mark is dismissed.