Health Netv.Mid-America Health Network, Inc.

Trademark Trial and Appeal Board

Jan 13, 2000

No. 91094072 (T.T.A.B. Jan. 13, 2000)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB 1/13/00
CBG
Opposition No. 94,0721
Health Net
v.
Mid-America Health
Network, Inc.
Before Simms, Cissel and Quinn, Administrative Trademark
Judges.
By the Board:
Applicant Mid-America Health Network, Inc. seeks to
register the mark HEALTHNET HORIZONS for use in connection
with “mental health care cost containment and utilization
review services and the provision of the names of contracted
physicians and other health care professionals to interested
parties.” 2
Health Net has opposed registration under Section 2(d)
of the Trademark Act on the ground that applicant’s mark, if
used in connection with applicant’s services, would so
resemble opposer’s previously used and registered mark

1 This case has not been consolidated with the related
proceeding, Opposition No. 93,163.
2 Application Serial No. 74/351,017, filed January 22, 1993,
based on applicant’s bona fide intention to use the mark in
commerce.
UNITED STATES DEPARTMENT OF COMMERCE
Patent and Trademark Office
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513
Opposition No. 94,072
2
HEALTH NET for “medical and hospitalization insurance
underwriting” 3 as to be likely to cause confusion.
In its answer, applicant denied the salient allegations
of the notice of opposition, and set forth “affirmative
defenses.” Further, applicant asserted a counterclaim to
cancel opposer’s pleaded registration on the ground of
fraud. More specifically, applicant asserted that the
statements as to first use were false, and that opposer had
not used the mark in commerce when the application was
filed.
This case now comes up on opposer’s motion for summary
judgment, filed September 30, 1999, on its pleaded Section
2(d) claim, 4 with certificates of mailing and service dated
September 27, 1999, and on applicant’s motion to extend time
to respond thereto, filed October 15, 1999. Opposer’s
opposition to applicant’s motion to extend is acknowledged.
Applicant filed its response to the summary judgment motion
on November 22, 1999, but the timeliness of the response is
dependent on our approval of applicant’s motion to extend.

3 Registration No. 1,147,331, issued February 17, 1981; combined
Sections 8 and 15 affidavit filed. The word “Health” is
disclaimed apart from the mark as registered.
4 We granted opposer’s prior motion for summary judgment in the
related proceeding on June 29, 1999, and entered judgment in
opposer’s favor on its claim of priority and likelihood of
confusion. However, applicant’s mark and services differ
somewhat in the two oppositions. Further, the summary judgment
has not, at this time, become a final judgment. Therefore, issue
and claim preclusion do not apply to the instant proceeding.
Opposition No. 94,072
3
With regard to applicant’s motion to extend, it is well
known that the Board has long been liberal in granting such
motions, so long as the moving party has not been guilty of
negligence or bad faith, and the privilege of extensions is
not abused. See, e.g., American Vitamin Products, Inc. v.
DowBrands Inc., 22 USPQ2d 1313, 1315 (TTAB 1992). The
Board, however, also is aware of complaints that it has been
too lenient in many cases and allowed over-zealous
litigators to remake Board proceedings into protracted
litigation. See, generally, Notice of Final Rulemaking,
published in the Federal Register on September 9, 1998 at 63
FR 48081, and comments and responses published in the
notice. Accordingly, the Board recently has been
scrutinizing motions to extend more carefully.
In this case, we note the complete absence of support
for applicant’s assertion of good cause that is required for
a motion to extend. Other than alluding to “unexpected,
conflicting obligations” which have prevented applicant’s
counsel from timely responding to the summary judgment
motion, applicant has provided no specific information to
establish that applicant’s counsel had other obligations.
Consequently, we have no way to determine whether these
obligations actually were “unexpected” and “conflicting.”
Applicant’s other arguments regarding the past practices of
the parties, and the possibility that applicant would pursue
Opposition No. 94,072
4
settlement negotiations with opposer if the motion were
granted, are not persuasive in light of opposer’s responses
thereto.
Simply put, applicant has failed to meet its burden of
persuasion on the motion to extend. Accordingly, the motion
is denied.
In view of the foregoing, applicant’s response to the
summary judgment motion was due on November 1, 1999. See 37
C.F.R. §§2.127(e)(1) and 2.119(c). While we recognize that
we may treat opposer’s motion as conceded pursuant to 37
C.F.R. §2.127(a) because applicant did not file a timely
response, we have considered the motion on its merits due to
its potentially dispositive nature.
We now turn to opposer’s motion for summary judgment on
priority and likelihood of confusion. In support of its
motion, opposer submitted (1) the declaration of opposer’s
counsel, Elizabeth Barrowman Gibson, (2) a copy of our June
29, 1999 order in the related proceeding, and (3) the
declaration of Beverly Ann Fittipaldo, opposer’s former vice
president, government and community relations, together with
related exhibits. 5
The summary judgment motion is a pre-trial device to
dispose of cases in which the “pleadings, depositions,

5 The June 29, 1999 order and the Fittipaldo declaration were
attached as exhibits to the Gibson declaration. Ms. Fittipaldo
Opposition No. 94,072
5
answers to interrogatories, and admissions on file, together
with the affidavits, if any, show that there is no genuine
issue as to any material fact and that the moving party is
entitled to judgment as a matter of law.” Fed. R. Civ. P.
56(c). The moving party has the burden of demonstrating,
prima facie, that there is no genuine issue of material
fact, and that it is entitled to judgment as a matter of
law. In considering the propriety of summary judgment, the
Board may not resolve issues of fact; it may only ascertain
whether such issues are present. All doubts as to whether
or not particular factual issues are genuinely in dispute
must be resolved against the moving party, and all
inferences to be drawn from the undisputed facts must be
viewed in the light most favorable to the nonmoving party.
Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22
USPQ2d 1542 (Fed. Cir. 1992).
After careful consideration of the evidence and the
parties’ arguments, we find that there is no genuine issue
of material fact remaining for trial with respect to
opposer’s priority of use and the likelihood of confusion.
Insofar as priority is concerned, opposer has
established, through the uncontroverted sworn statements of
Ms. Fittipaldo, that opposer continuously has provided its

still was a vice president for opposer at the time her
declaration was given.
Opposition No. 94,072
6
health maintenance organization services and related
services under its HEALTH NET mark since 1978. That is,
opposer began using its mark long prior to the earliest date
upon which applicant is entitled to rely.
Thus, there is no genuine issue of material fact as to
either opposer’s standing or priority of use. We are aware,
of course, that opposer’s registration is under attack
based, in part, on applicant’s allegation that the first use
dates are false. This pending counterclaim, however, has no
bearing on opposer’s undisputed showing of prior use in
commerce long prior to applicant’s first use. That is to
say, any finding that opposer’s registration was obtained by
fraud, or that the underlying application is void ab initio,
would not undermine opposer’s priority of use. The
undisputed facts regarding opposer’s first use in commerce
(either intrastate or interstate) establish opposer’s
priority.
With respect to likelihood of confusion, two key
considerations are the similarities between the marks and
the similarities between the services. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
We find that there is no genuine issue of material fact as
to the issue of likelihood of confusion, and that opposer is
entitled to judgment on the issue. Kellogg Co. v. Pack’em
Opposition No. 94,072
7
Enterprises, Inc. 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir.
1991).
First, although we recognize that the marks are to be
viewed in their entireties, it is well settled that one
portion of a mark may be considered more prominent in
determining similarity. In this case, it is undisputed that
HEALTHNET is the dominant portion of applicant’s mark.
HEALTHNET is virtually identical to the entirety of
opposer’s mark in sound, appearance and commercial
impression, differing only by a space in opposer’s mark. See
Giant Food, Inc. v. National Food Service, Inc., 710 F.2d
1565, 218 USPQ 390 (Fed. Cir. 1983). Applicant’s addition
of the term HORIZONS to the term HEALTHNET is insufficient
to avoid likelihood of confusion. See, e.g., Coca-Cola
Bottling Co. of Memphis, Tennessee, Inc. v. Joseph E.
Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA
1975).
Second, the services set forth in the application and
opposer’s registration are closely related, if not largely
identical. Opposer is engaged in providing health care
services in the nature of a health maintenance organization.
Ms. Fittipaldo’s undisputed statements include one to the
effect that opposer provides, as part of its HMO services,
the same services as those listed in applicant’s
Opposition No. 94,072
8
application. In view of the similarity of the marks and
services, a potential purchaser would be likely to
mistakenly ascribe a common source to the medical and
hospitalization insurance underwriting services performed
under opposer’s HEALTH NET mark, and the mental health care
cost containment and utilization review services, and
provision of the names of contracted physicians and other
health care professionals to interested parties, which will
be performed under applicant’s HEALTHNET HORIZONS mark.
Opposer’s motion for summary judgment therefore is
granted, and judgment is entered in opposer’s favor on the
issues of priority of use and likelihood of confusion in the
opposition.
Finally, although opposer’s motion does not
specifically seek entry of judgment in its favor on the
counterclaim of fraud, we already have decided this issue in
favor of opposer in the related proceeding, Opposition No.
93,163. That decision applies equally here, as the
counterclaim in this case is no different. Accordingly,
Opposition No. 94,072
9
judgment is hereby entered in favor of opposer on the issue
of fraud, and the counterclaim is dismissed with prejudice.
R. L. Simms
R. F. Cissel
T. J. Quinn
Administrative Trademark
Judges Trademark Trial and
Appeal Board