Essential Medical Supply, Inc.v.Invacare Corp.

Trademark Trial and Appeal Board

Aug 18, 2005

No. 92042736 (T.T.A.B. Aug. 18, 2005)

Mailed: August 18, 2005
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Essential Medical Supply, Inc.
v.
Invacare Corporation
_____

Cancellation No. 92042736
_____

Enrique G. Estevez, Esq. of Allen, Dyer, Doppelt, Milbrath
& Gilchrist, P.A. for Essential Medical Supply, Inc.

Bradford J. Patrick of Mansour Gavin Gerlack & Manos Co. LPA
for Invacare Corporation.
______

Before Hairston, Walters and Walsh, Administrative Trademark
Judges.

Opinion by Hairston, Administrative Trademark Judge:

A petition has been filed by Essential Medical Supply,
Inc. to cancel a registration issued to Invacare Corporation
for the mark ESSENTIAL for “wheelchair cushion.”1

1 Registration No. 2,746,780, issued August 5, 2003, claiming
first use and first use in commerce in August 2001.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Cancellation No. 92042736
2
As grounds for cancellation, petitioner asserts that
since at least as early as 1991 it “has used the name
ESSENTIAL in connection with wheelchair cushions by using
the name on packaging and advertising…”; that it is the
owner of application Serial No. 78252574 for the mark
ESSENTIAL MEDICAL SUPPLY for “wholesale services featuring
medical supplies”; and that respondent’s mark ESSENTIAL,
when used on wheelchair cushions, so resembles petitioner’s
marks ESSENTIAL and ESSENTIAL MEDICAL SUPPLY, INC. as to be
likely to cause confusion.2
Respondent, in its answer to the petition to cancel,
denied the salient allegations therein. As an affirmative
defense respondent asserts that the petition is barred by
laches and estoppel because prior to filing the petition to
cancel petitioner did not notify respondent of its
objections. In addition, respondent asserts that
“[p]etitioner’s claimed use of the mark ESSENTIAL as
represented in the Petition only occurs as part of
Petitioner’s mark ESSENTIAL MEDICAL SUPPLY, INC. and is not
used separately to identify any goods or services.”

2 We note that attached to the petition to cancel are copies of
packaging and advertising materials. An exhibit attached to a
pleading is not evidence on behalf of the party to whose pleading
the exhibit is attached unless identified and introduced into
evidence as an exhibit during the period for taking testimony.
Trademark Rule 2.122(c). These exhibits were not introduced by
petitioner at trial and therefore we have given them no
consideration in reaching our decision herein.
Cancellation No. 92042736
3
Evidentiary Matters and the Record
Before turning to the merits of the case, we must
consider several evidentiary matters. First, we note that
both parties submitted their respective testimony by way of
affidavit. While generally the Board requires a stipulation
to introduce testimony in the form of an affidavit, since
neither party has objected to the adverse party’s testimony
on this basis, we deem the parties to have stipulated to the
introduction of testimony by way of affidavit.
Second, respondent has objected to the rebuttal
testimony affidavits of petitioner’s witnesses Carol
Hoepner, Tara Baril, Elizabeth Flippinger, and Erica Ladd as
improper rebuttal. The rebuttal testimony concerns alleged
instances of actual confusion and the relationship between
petitioner and respondent. Respondent’s objections are
sustained to the extent that testimony as to alleged
instances of actual confusion are elements of opposer’s
case-in-chief. It was incumbent upon petitioner, during its
case-in-chief, to introduce testimony relating to the
specific nature of the alleged instances of actual
confusion. In other words, petitioner could not wait until
its rebuttal testimony period to offer details about the
alleged instances of actual confusion.
However, the rebuttal testimony concerning petitioner’s
and respondent’s relationship will be considered since this
Cancellation No. 92042736
4
evidence is in rebuttal to respondent’s testimony that
respondent sold products to petitioner.
In view of the foregoing, the record consists of the
file of the subject application, the affidavit and rebuttal
affidavit (with exhibits) of petitioner’s owner, Carol A.
Hoepner; and the affidavit of respondent’s vice-president,
Bridget A. Miller.
Briefs have been filed, but an oral hearing was not
requested.
The Record
Petitioner’s witness Carol A. Hoepner avers, in
relevant part, that:
Since June 3, 1985, I have owned and operated Essential
Medical Supply, Inc. (“EMS”) a wholesaler of medical
equipment presently located at 4515 Metric Drive, Suite 3,
Winter Park, Florida 32792.

Since May 1, 1986, EMS has used the mark ESSENTIAL
MEDICAL SUPPLY, INC. and design on all its advertisements,
catalogs and goods.

EMS has come to be well known in the industry,
particularly by the term ESSENTIAL, which is the most
pertinent and distinctive component in its mark.

The U.S. Patent and Trademark Office has awarded
trademark registration No. 2874628 to EMS’s mark ESSENTIAL
MEDICAL SUPPLY, INC. based on our company’s continuous use
of this mark in interstate commerce since May 1, 1986.

EMS has sold wheelchair cushions under the mark
ESSENTIAL MEDICAL SUPPLY, INC. since 1987.

Invacare’s use of the mark ESSENTIAL, for its
wheelchair cushions has already caused confusion in
the marketplace, as I myself have taken calls from
customers confusing our company as to the source of
wheelchair cushions sold under the mark ESSENTIAL by
Cancellation No. 92042736
5
Invacare; in addition I am aware that our customer
service department has received numerous inquiries from
customers who have mistaken EMS as the source of
Invacare’s ESSENTIAL wheelchair cushions.

Respondent’s witness, Bridget Miller avers, in
relevant part, that:
Since July 1993, I have been employed by Invacare
Corporation (“Invacare”) in its legal/risk management
department. Currently, I am its Vice President and
General Counsel.

According to the company records of Invacare,
Invacare sold goods to Essential Medical Supply, Inc.
(“EMS”) between June 1989 and January 1994, and
thereafter EMS’s account was closed.

Invacare is the durable medical equipment industry
leader and known as the manufacturer of a line of
wheelchair cushions branded with the registered trademark
ESSENTIAL®.

According to the records of the company of Invacare,
Invacare has neither awareness of, nor possession of, any
actual or potential confusion in the trade, or among the
public, concerning the source of manufacture of
Invacare’s wheelchair cushions marketed under its
registered trademark ESSENTIAL® and of any goods sold by
EMS under its registered mark Essential Medical Supply,
Inc.®

According to the company records of Invacare, EMS
has never demanded that Invacare cease and desist use of
Invacare’s registered trademark ESSENTIAL.®

Petitioner’s witness Carol Hoepner, avers in her
rebuttal affidavit, in relevant part, that:
The relationship between [petitioner and respondent]
was much closer than that between mere seller and buyer,
in fact, EMS was an authorized distributor for Invacare
and Invacare acted as an original equipment manufacturer
for Essential’s Endurance Wheelchair.

Petitioner EMS has been unable to previously notify
Invacare of instances of actual confusion because we did
not become aware of the problem until we discovered
Cancellation No. 92042736
6
Invacare’s pending application for federal registration
of the mark ESSENTIAL.

While myself and others in our company separately
handled a number of phone calls from dealers asking
various details regarding “Essential” wheelchair cushions
which were not in our catalog, because we had no formal
process for internally sharing this anecdotal
information, the misguided calls were individually
attributed to inattentive customers.

We did not collectively recognize that there was a
serious problem of confusion in the marketplace until
after one of our employees by chance happened to check
the on-line trademark records available from the Patent
and Trademark Office and discovered that Invacare had
filed an application for trademark registration for the
subject mark. Once this was brought to the company’s
attention and the information about the various misguided
phone calls was pieced together, it became clear that
there was trademark confusion taking place.

Priority

Turning first to the issue of priority, although
petitioner’s witness, Ms. Hoepner, avers that petitioner
owns a registration for the mark ESSENTIAL MEDICAL
SUPPLY, INC., petitioner failed to make such registration
of record. (See Trademark Rule 2.122(d)). Thus,
petitioner may not rely on this registration to prove its
priority. Instead, petitioner must rely on common law
use of ESSENTIAL MEDICAL SUPPLY, INC. to prove its
priority. Petitioner’s witness Ms. Hoepner averred
Cancellation No. 92042736
7
that since 1986 petitioner has used the mark ESSENTIAL
MEDICAL SUPPLY, INC. and design on all its
advertisements, catalogs and goods and that petitioner
has sold wheelchair cushions under the mark ESSENTIAL
MEDICAL SUPPLY, INC. since 1987. It is not necessary
that petitioner submit documentary evidence to support
its date of first use. The testimony of a single witness
can be sufficient to prove priority. See 3 J. Thomas
McCarthy: McCarthy on Trademarks and Unfair Competition
§ 16.06(2) (4th ed. 2005). Petitioner’s 1987 date of
first use is earlier than respondent’s claimed date of
first use of August 2001. Thus, petitioner has
established its priority with respect to the mark
ESSENTIAL MEDICAL SUPPLY, INC. for wheelchair cushions.
Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that
are relevant to the factors bearing on the likelihood of
confusion issue. See In re E. I. duPont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1971). In the
analysis of likelihood of confusion in this case, two key
considerations are the similarities between the marks and
the similarities between the goods. Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ
24, 29 (CCPA 1976).
Cancellation No. 92042736
8
We consider first the goods of the parties, and
obviously they are identical - wheelchair cushions. This
factor weighs in favor of a likelihood of confusion.
Considering next the marks, as our principal
reviewing court has indicated, while marks must be
considered in their entireties, including any descriptive
matter, in articulating reasons for reaching a conclusion
on the issue of likelihood of confusion, “there is
nothing improper in stating that for rational reasons,
more or less weight has been given to a particular
feature of a mark, provided [that] the ultimate
conclusion rests on consideration of the marks in their
entireties.” In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985). For instance,
according to the court, “that a particular feature is
descriptive . . . with respect to the involved goods and
services is one commonly accepted rationale for giving
less weight to a portion of a mark . . . “ Id.
In this case, when the respective marks are
considered in their entireties, it is plain that they are
highly similar in appearance, sound, connotation and
commercial impression. The dominant portion of
petitioner’s mark ESSENTIAL MEDICAL SUPPLY, INC. is the
word ESSENTIAL due to the descriptive or generic nature
Cancellation No. 92042736
9
of the words MEDICAL SUPPLY, INC. The word ESSENTIAL is
respondent’s mark in its entirety.
Moreover, the proper test for confusing similarity
is not whether the marks in their entireties are
distinguishable on the basis of a side-by-side comparison
inasmuch as this is not ordinarily the way that consumers
will be exposed to the marks. Instead, it is the
similarity of the general overall commercial impression
engendered by the marks which must determine, due to the
fallibility of memory, whether confusion as to source or
sponsorship is likely. The proper emphasis is
accordingly on the recollection of the average purchaser,
who retains a general rather than a specific impression
of marks. See, e.g., Grandpa Pidgeon’s of Missouri, Inc.
v. Borgsmiller, 477 F.2d 586, 177 USPQ 573, 574 (CCPA
1973). Here, the descriptive words MEDICAL SUPPLY, INC.
in petitioner’s mark, while not present in respondent’s
mark, are insufficient to distinguish such marks, due to
the fact that their shared term ESSENTIAL creates a
substantial similarity in sound, appearance, meaning and
commercial impression in the marks. This factor also
favors a likelihood of confusion.
This brings us to the affirmative defenses of
laches. To prevail on this affirmative defense,
respondent had to establish that there was undue or
Cancellation No. 92042736
10
unreasonable delay by petitioner in asserting its rights,
and prejudice to respondent resulting from the delay.
Bridgestone/Firestone Research Inc. v. Automobile Club de
l’Quest de la France, 245 F.3d 1359, 58 USPQ2d 1460 (Fed.
Cir. 2001). For purposes of determining whether there
has been unreasonable delay, we look to the publication
date and issue date of the subject registration. See
National Cable Television Ass’n., Inc. v. American Cinema
Editors, Inc., 937 F.2d 1572, 1581, 19 USPQ2d 1424, 1432
(Fed. Cir. 1991) (laches runs from the time from which
action could be taken against the trademark rights
inhering upon registration). Petitioner brought this
cancellation proceeding on December 5, 2003, only four
months after the issuance of the registration on August
5, 2003. Thus, petitioner did not unduly delay in
bringing this petition to cancel. Moreover, there is no
evidence that respondent was prejudiced in this very
short period of time. In view thereof, we find that
respondent has not demonstrated that petitioner’s claim
is barred by laches.
The parties have argued with respect to whether any
instances of actual confusion have occurred. The
testimony of petitioner’s witness is too limited to
establish actual confusion. Nonetheless, the fact that
there is no evidence of actual confusion of record does
Cancellation No. 92042736
11
not persuade us to find that confusion is not likely.
Evidence of actual confusion is not a prerequisite to
finding likelihood of confusion.
We accordingly conclude that contemporaneous use by
respondent of the mark ESSENTIAL in connection with
wheelchair cushions is likely to cause confusion with
petitioner’s use of ESSENTIAL MEDICAL SUPPLY, INC. in
connection with the identical goods.
Decision: The petition to cancel is granted.