L. Woerner, Inc.v.Healthcare Retirement Corp. of America

Trademark Trial and Appeal Board

Jan 22, 2004

No. 92028027 (T.T.A.B. Jan. 22, 2004)

Hearing: Mailed: 22 JAN 2004
17 JUN 2003 Paper No. 64
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
L. Woerner, Inc.
v.
Healthcare Retirement Corporation of America,
a.k.a. Healthcare and Retirement Corporation
_____
Cancellation No. 92028027
_____
Erika N.D. Stanat of Harter, Secrest & Emery LLP for L.
Woerner, Inc.
Gene A. Tabachnick of Reed Smith LLP for Healthcare
Retirement Corporation of America, a.k.a. Healthcare and
Retirement Corporation.
______
Before Hairston, Bucher, and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On September 11, 1998, L. Woerner, Inc. (petitioner)
filed a petition to cancel Registration No. 1,793,002 owned
by respondent, Healthcare Retirement Corporation of America,
a.k.a. Healthcare and Retirement Corporation for the mark
HCR (stylized) shown below:
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Cancellation No. 92028027
2
The registration1 is for “educational services; namely,
conducting classes, seminars, and workshops for health care
training” in International Class 41 and “health care;
physical and occupational rehabilitation; transitional
health care; nursing home care” in International Class 42.
Petitioner seeks to cancel respondent’s registration on
the ground that there is a likelihood of confusion with its
common law mark HCR that it alleges it has continuously used
with health care services. Respondent denied the salient
allegations of the petition to cancel.
The Record
The record consists of the file of the involved
registration; the trial testimony deposition, with
accompanying exhibits, of petitioner’s founder, Louise
Woerner; the trial testimony deposition, with accompanying
exhibits, of R. Jeffrey Bixler, respondent’s general counsel
and secretary; and respondent’s three notices of reliance.2
1 The registration issued September 14, 1993, and it is based on
an application filed October 9, 1992. The registration contains
an allegation of a date of first use and a date of first use in
commerce of December 3, 1984.
2 There are numerous evidentiary objections to the evidence that
will be discussed subsequently.
Cancellation No. 92028027
3
Both parties have filed briefs. An oral hearing was
held on June 17, 2003.
Facts
As discussed below, the critical period in this
proceeding concerns the use of the term HCR by the parties
in 1981. On February 19, 1981, the Board of Directors of
respondent, which was originally known as Wolfe Industries,
Inc., voted to change the name of the corporation to “Health
Care and Retirement Corporation of America (‘HCR’)” subject
to the approval of shareholders. Bixler dep. at 9-10 and
Ex. 5 at 3. Respondent alleges that it has continuously
provided health care services since the inception of HCR in
1981. Bixler dep. at 14.
In 1978, petitioner’s predecessor, HomeCall of
Rochester, Inc., was incorporated “to perform the following
functions: yard work, shopping, transportation, meal
planning and preparation, companionship, housecleaning,
laundry, and any other similar non-medical services. The
corporation will not practice the profession of nursing.”
Woerner dep., Ex. 1. However, by November 12, 1981,
HomeCall of Rochester, Inc. changed its name to L. Woerner,
Inc. and the certificate of incorporation indicated that the
corporation would “not practice the profession of nursing
but will provide licensed nurses to care for clients in
their home.” Woerner dep., Ex. 3. On April 12, 1982, a
Cancellation No. 92028027
4
paper entitled “Written Consent of the Sole Director of L.
Woerner, Inc.” approved “the use by the Corporation of the
assumed name ‘HCR’ in the conduct of its business
activities.” Woerner dep., Exhibit 5. Petitioner’s
financial report indicates that in 1981, petitioner received
$163,379 in revenues from “personal care services.” Woerner
dep., Exhibit 12.
Both petitioner and respondent now use the mark HCR on
various health care related services. See Woerner dep.
Exhibit 55 (August 1984 advertisement for HCR’s personal
care, home health, and skilled nursing services) and Exhibit
48 (1997 booklet listing fees for licensed practical nurses
and registered nurses); Bixler dep. at 16.
Evidentiary Questions
Petitioner has made numerous evidentiary objections to
respondent’s evidence. Petitioner objects to respondent’s
submission of a non-status and title copy of its expired
registration with a notice of reliance. Exhibit B. We
agree that respondent has not followed the proper procedure
for introducing a copy of an expired registration it owned
by notice of reliance so we will not consider this evidence.
TBMP § 704.03(b)(1) (2d ed. June 2003). However,
petitioner’s objection to documents (Exhibit I) from
respondent’s expired registration is overruled inasmuch as
respondent has properly introduced the documents by notice
Cancellation No. 92028027
5
of reliance. Id. ("If a party owns a registration which is
not the subject of the proceeding and wishes to make of
record the registration file history (rather than just the
certificate of registration), or a portion thereof, it may
do so by 1) filing, during its testimony period, a copy of
the file history, or the portion it wishes to introduce,
together with a notice of reliance thereon as an official
record pursuant to 37 CFR § 2.122(e)…”). Petitioner has
also objected to respondent’s submission of a declaration
with an attached franchise agreement by notice of reliance.
A declaration or affidavit in lieu of a deposition can be
submitted in an inter partes proceeding if the parties
stipulate to its admissibility. TBMP § 705 (Parties may
stipulate that the “testimony of a witness may be submitted
in the form of an affidavit by the witness”). However,
there is no stipulation in this case and, therefore, the
declaration and franchise agreement may not be properly
submitted by a notice of reliance. 37 CFR § 2.122(e); TBMP
704.02. Therefore, we will not consider Exhibit H.
We overrule petitioner’s objection to the exhibits 1
and 3 through 11 in the deposition of Mr. Bixler on the
ground that respondent did not lay a proper foundation.3
3 Exhibits 9, 10, and 11 include three corporate annual reports.
Respondent’s counsel inquired of the witness if the witness was
aware of any inaccurate statements in these annual reports.
Bixler dep. at 24, 25, and 26. While the witness answered that
he was not aware of any inaccuracies, the witness did not adopt
Cancellation No. 92028027
6
Bixler’s testimony indicates that he was a corporate officer
with responsibility for maintaining all the corporation’s
books and records (Bixler dep. at 4-5), and respondent laid
a proper foundation for these records. Petitioner’s
objection to Bixler Exhibit 1, a TESS printout of
respondent’s registration, is overruled. This exhibit is
simply a printout of the registration that petitioner seeks
to cancel. The information in this registration is already
of record in the proceeding automatically. 37 CFR
§ 2.122(b) (“The file of each application or registration
specified in … each registration against which a petition or
counterclaim for cancellation is filed forms part of the
record of the proceeding without any action by the parties
and reference may be made to the file for any relevant and
competent purpose”). Petitioner’s objection to respondent’s
Exhibit 7, another copy of respondent’s expired
registration, is overruled. Respondent’s witness simply
referred to the services in the registration to identify the
services on which respondent was using the mark. Respondent
is not relying on this registration to prove ownership of a
Federal registration. TBMP § 704.03(b)(1)(A). We sustain
the objection to exhibit 2, which is another copy of the
the statements in the annual reports as his testimony.
Therefore, the document cannot be used to prove the truth of the
matter asserted in it. Accord Berring v. Jacob, 595 S.W.2d 412,
413 (Mo. App. 1980) (“If the statements read are agreed to, they
become evidence because the witness adopts them as his own”).
Cancellation No. 92028027
7
franchise agreement between HomeCall, Inc. and HomeCall of
Rochester, Inc. Respondent has not laid a proper foundation
for the admissibility of this agreement. Also, we overrule
petitioner’s objection to respondent’s documents on the
ground that respondent has not introduced the originals
because there is no issue of authenticity or unfairness.
See Fed. R. Evid. 1003 (A “duplicate is admissible to the
same extent as the original”); Advisory Committee Note
(“Therefore, if no genuine issue exists as to authenticity
and no other reason exists for requiring the original, a
duplicate is admissible under the rule”). Finally, we
overrule petitioner’s objection that respondent did not
provide copies to petitioner and a similar objection by
respondent that petitioner did not serve a copy of its
exhibits on respondent. The evidence to support these
objections is inconclusive.
Introduction
Petitioner, by alleging use of the same letters on the
same or similar services, has standing because it has
asserted a claim of likelihood of confusion "which is not
wholly without merit.” Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185, 188 (CCPA 1982).
Also, there is no evidence that petitioner’s mark is not
inherently distinctive, so we turn to the key issues in the
case, priority and likelihood of confusion.
Cancellation No. 92028027
8
Priority
We now examine the evidence to determine who has
priority of use of the mark. The difficulty of determining
priority is compounded in this case by the length of the
time that has elapsed since the allegations of use and the
paucity of evidence that was submitted from that period.
Respondent’s registration issued as a result of an
application filed on October 9, 1992. The registration
alleges a date of first use and a date of first use in
commerce of December 3, 1984. Respondent now seeks to prove
an earlier date of first use. Respondent must prove this
earlier date of first use by clear and convincing evidence.
Martahus v. Video Duplication Services Inc., 3 F.3d 417, 27
USPQ2d 1846, 1852 n.7 (Fed. Cir. 1993) (“VCDS alleges use
prior to the date that it apparently listed in its
registration application as its date of first use, i.e.,
prior to May of 1985, and therefore VCDS has the burden of
establishing that use by clear and convincing evidence
instead of mere preponderance of the evidence”); Hydro-
Dynamics Inc. v. George Putnam & Company Inc., 811 F.2d
1470, 1 USPQ2d 1772, 1773 (Fed. Cir. 1987) (“ Where an
applicant seeks to prove a date earlier than the date
alleged in its application, a heavier burden has been
imposed on the applicant than the common law burden of
preponderance of the evidence”).
Cancellation No. 92028027
9
Respondent alleges that “[s]ince May 7, 1981,
Registrant HCR has continuously used its HCR mark in
connection with the services identified in the registration
at issue.” Respondent’s Brief at 4. As support for this
date of first use, respondent refers to the testimony of its
witness, a copy of its expired registration, and its Annual
Reports for the years 1981, 1982, and 1983. Respondent’s
Brief at 18. In addition to the testimony, the following
evidence provides some support for respondent’s position
that it began using the mark in 1981: (1) A March 13, 1981
notice of a special meeting of shareholders on March 27,
1981, to consider a proposal “to create the ‘Health Care and
Retirement Corporation of America’ (‘HCR’) out of the
present Wolfe Companies” (Bixler Exhibit 4); (2) Minutes of
a February 19, 1981 Board of Directors meeting that resolved
that “subject to the approval of shareholders the Amended
Articles of Incorporation of the Corporation are hereby
amended to change the name of the Corporation form Wolfe
Industries, Inc. to Health Care and Retirement Corporation
of America (‘HCR’)” (Bixler Exhibit 5); a Lima News article
dated April 20, 1981 that describes the Wolfe Industries
reorganization and notes that “HCR will handle design and
construction work, financing and leasing services and total
Cancellation No. 92028027
10
management services for the health care and retirement
industries” (Bixler Exhibit 8).4
While the 1981 Annual Report shows the mark HCR on the
cover, it obviously was prepared after 1981 because it is a
report prepared after the year had concluded. It is dated
April 23, 1982. Respondent’s later annual reports for 1982
and 1983 are not probative of respondent’s use of the mark
in 1981. Respondent’s newspaper article is dated April 20,
1981, which obviously precedes respondent’s asserted date of
first use of May 7, 1981. Respondent’s Brief at 4. The
newspaper article uses the future tense and it does not
establish when respondent used the mark in the future. Even
the services referred to in the article are not clearly
identified (“total management services for the health care
and retirement industry”).
Respondent has also included a database printout of its
expired registration, which is not evidence of the
allegations in the document. TBMP § 704.03(b)(1) (An
expired registration “is not evidence of anything except
that the registration issued”).5 The witness also testified
4 While the newspaper article does not prove the truth of the
matter asserted in the article, it does indicate that respondent
was known as HCR in 1981.
5 The Federal Circuit has held that “where there is additional
evidence relating to actual use, such a [regulatory] license
becomes quite probative in that it further corroborates the other
evidence. The same applies to a state registration.” West
Florida Seafood, 31 USPQ2d at 1127. Even if we consider the
information about the expired registration to be of record, we
note that the mark in that registration HCR HEALTH CARE AND
Cancellation No. 92028027
11
that respondent was using its mark at that time in a
slightly different form with a design and its corporate name
(Health Care and Retirement Corporation of America”). See
Bixler dep. at 14 and Exhibit 6 (Q. Does HCR use the mark
as shown in Exhibit 6 today? A. No). Finally, the witness
testified that the corporation was listed on the NASDAQ
stock exchange with the symbol, HCRX, “in the early 1980’s.”
Bixler dep. at 27 (The witness also explained that the “X”
was used because “NASDAQ required four letters in the stock
symbol”).6 This evidence does not establish that respondent
began using the mark for the identified services on May 7,
1981.7
“[O]ral testimony, if sufficiently probative, is
normally satisfactory to establish priority of use in a
trademark proceeding.” Powermatics, Inc. v. Globe Roofing
Products Co., 341 F.2d 127, 144 USPQ 430, 432 (CCPA 1965).
Such testimony should “not be characterized by
RETIREMENT CORPORATION OF AMERICA and design is significantly
different from the mark in this case, HCR (stylized). See Van
Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 17 USPQ2d
1866, 1869 (Fed. Cir. 1991) (“‘CLOTHES THAT WORK’ and ‘CLOTHES
THAT WORK. FOR THE WORK YOU DO’ are not legal equivalents”).
6 Respondent’s 1981 Annual Report (p. 24) reports that
respondent’s stock “has been publicly traded since December 10,
1981 on the over-the-counter market and is quoted on NASDAQ under
the symbol HCRX.”
7 Respondent’s other evidence consists of a certificate of
incorporation for petitioner; petitioner’s answers to
interrogatories; a copy of a registration for the mark HOMECALL;
handwritten notes; pages from a phone directory; and minutes of a
meeting from Heartland Health Care Company’s Board of Directors
meeting in which there is a discussion about forming a new
company called Health Care and Retirement Corporation of America.
Cancellation No. 92028027
12
contradictions, inconsistencies and indefiniteness but
should carry with it conviction of its accuracy and
applicability.” B.R. Baker Co. v. Lebow Bros., 150 F.2d
580, 66 USPQ 232, 236 (CCPA 1945). In this case,
respondent’s witness apparently did not have personal
knowledge of the corporation’s use of the mark in 1981.8
Bixler dep. at 38 (Witness not employed by respondent at the
time Exhibit 9, the 1981 Annual Report, prepared). The
evidence of respondent’s use of the mark in 1981 is
nebulous, and its witness’s testimony is only somewhat
probative. National Blank Book Co. v. Leather Crafted
Products, 218 USPQ 827, 828 (TTAB 1983) (“It was incumbent
upon opposer in attempting to prove the date of first use of
1968 either to have a witness testify from personal
knowledge that the mark ‘ESP’ was in use as of 1968 or, if
no such person was still employed by opposer, to prove the
date of first use by authenticating business records”).
However, we are not unmindful of the Federal Circuit’s
admonition that we must not view the individual items in the
evidence standing alone, but rather as a whole when we are
determining priority.
The TTAB concluded that each piece of evidence
individually failed to establish prior use. However,
whether a particular piece of evidence by itself
establishes prior use is not necessarily dispositive as
8 Apparently, Mr. Bixler joined respondent in 1984. Bixler dep.
at 18 (“Since ’84, I have personal knowledge of … these services
by HCR”).
Cancellation No. 92028027
13
to whether a party has established prior use by a
preponderance. Rather, one should look at the evidence
as a whole, as if each piece were part of a puzzle
which, when fitted together, establishes prior use.
The TTAB failed to appreciate this. Instead, the TTAB
dissected the evidence to the point it refused to
recognize, or at least it overlooked, the clear
interrelationships existing between the several pieces
of evidence submitted.
West Florida Seafood Inc. v. Jet Restaurants Inc., 31 F.3d
1122, 31 USPQ2d 1660, 1663 (Fed. Cir. 1994).
We do view respondent’s Annual Report for 1981 as a
form of advertising that shows that the mark HCR in
identical or nearly identical stylization was used in
association with respondent’s nursing home care services by
April of 1982. It also corroborates the witness testimony
concerning the use of its mark at least by April of 1982.
However, we are not convinced by clear and convincing
evidence that respondent began using its mark on the
services in the registration on May 7, 1981.9 Because of
the lack of definiteness of the date when use first began,
we must assume that respondent did not begin using the mark
on its identified services any earlier than the end of April
1982.
9 While “[p]rior use of a term in advertising, as a tradename, as
a style or model designation, or in a purely descriptive sense
may be sufficient to prevent a later user from obtaining federal
registration of that term, … [t]his kind of priority, however, is
purely defensive.” 2 McCarthy on Trademarks and Unfair
Competition (4th ed. 2003), § 16.22. Obviously, we are not called
upon to determine in this case whether respondent has, or can
establish, that it has prior trade name use.
Cancellation No. 92028027
14
Petitioner, on the other hand, does not allege
ownership of a registration; rather it relies on its common
law rights in the term HCR. In that case, “the decision as
to priority is made in accordance with the preponderance of
the evidence.” Hydro-Dynamics, 1 USPQ2d at 1773.
Petitioner’s evidence of priority of use is also less than
overwhelming, but it shows that petitioner was actually
using the term HCR in 1981. Like respondent, petitioner
began its business operations under a different name.
Petitioner started business operations as HomeCall of
Rochester, Inc. in May or June of 1978. Woerner dep. at 11.
Petitioner’s founder testified that because its original
name resulted in people mistakenly assuming that the company
was an escort service, the employees began to refer to the
company as HCR. Woerner dep. at 11-12. Evidence of the use
of the term HCR during the period 1978 to 1981 includes the
following. Exhibit 2 is a duck figurine wearing a uniform
with the letters HCR on it. The witness testified that the
duck was made by the witness’s son as a class project, that
the logo on the duck’s uniform was first used in 1979, and
that petitioner’s employees were required to “wear these
uniform shirts when they delivered HCR services.” Woerner
dep. at 17-18. Petitioner’s Exhibit 9 demonstrates that it
was using the term HCR, Inc. on letterhead stationery on
October 5, 1981. Petitioner also submitted three in-house
Cancellation No. 92028027
15
documents showing use of the term HCR, Inc. Exhibit 73 is
entitled “In-Service Training Log” for an employee with
entries dating from April 24, 1980, through September 23,
1985. Exhibit 74 is entitled “Employee Check-List” with
entries dating from October 25, 1979. Exhibit 75 is
entitled “Termination/Reactivation Log” for an employee. It
contains one entry under “date of employment” consisting of
the notation “January 12, 1980.” The letterhead on these
exhibits is shown below.
Based on these exhibits and the testimony of petitioner’s
witness, it is clear that petitioner has used the letters
HCR at least as part of a trade name even prior to the
earliest date (May 5, 1981) alleged by respondent.
While we find that petitioner used the letters HCR
first, we now must determine on what services the parties
Cancellation No. 92028027
16
used their respective trade names or trademarks. For
respondent, its witness testified that it was using the mark
on “health care; physical and occupational rehabilitation;
transitional health care; nursing home care” and
“educational services; namely, conducting classes, seminars,
and workshops for health care training.” Bixler dep. at 12-
13. Petitioner asserts that is has used the trade name HCR
“in association with its provision of home health care
services and its training and consulting services, including
seminars and workshops, since 1978.” Petitioner’s Brief at
27. Respondent argues that petitioner “did not deliver
health care services until 1988.” Respondent’s Brief at 13.
Respondent relies on the fact that petitioner’s certificate
of incorporation identified petitioner’s purpose as: “To
provide personnel to perform the following functions: yard
work, shopping, transportation, meal planning and
preparation, companionship, housecleaning, laundry, and
other similar non-medical services. The corporation will
not practice the profession of medicine or nursing.”
Respondent’s Brief at 13 (emphasis omitted); Petitioner’s
Exhibit 1. Respondent notes that it was not until 1988 that
petitioner’s certificate of incorporation was amended to
include these health care services.
While petitioner’s evidence does not establish that it
was providing health care services in 1981 and early 1982,
Cancellation No. 92028027
17
it is clear that petitioner was using HCR as a trade name
for services related to assisting patients and the elderly
in 1981. Petitioner’s “In-Service Training Log” contains
the notation “Inservice” in 1980. The employee newsletters
indicate that “inservice” included wrapping Christmas
presents and listening to a local congressman speak.
Woerner Exhibit 57, p. 2 (“[W]e are holding an inservice
here at the office to help wrap gifts which will be put in
the Christmas stockings for our clients. This will count in
your record as having attended an inservice”) and Exhibit 56
(“We are planning our Christmas in-service for December 18,
1981 … As in the past you are invited to bring a guest … Our
Congressman, Barber Conable, … plans to speak to us briefly
about what home care means to older Americans”). It is not
clear what other training was offered in 1981. The exhibits
with dates prior to 1982 (Nos. 73-75) appear to be in-house
documents. In addition, we have considered petitioner’s
Exhibits 9 (a letter to petitioner’s accountant) and Exhibit
10 (a letter to the Small Business Administration with an
attached business plan). Neither exhibit gives any insight
into the nature of petitioner’s services.10
10 Petitioner’s Exhibit 59 was an unsigned letter with a similar
letterhead from petitioner’s associate manager to Helen Munier
containing minutes from an advisory committee meeting with
written notes. Apparently the copy of the letter was obtained
from a third party. See Woerner dep. at 146-47.
Cancellation No. 92028027
18
Petitioner’s witness described its services in the
summer of 1978 as an “array of home economic services that
family members used to do when they were at home to do them”
and a “whole variety of things but not medical services, not
treatments but care, not cure.” Woerner dep. at 12-13.
While petitioner had one employee who was a nurse, the
witness admitted that petitioner provided “no hands-on care
and treatment services.” Woerner dep. at 13. Her duties
were described as doing “assessments to develop plans of
care. She did self-care teaching, she did training for our
aides … We saw ourselves as improving people’s functional
status, not really an illness care model but helping people
to live better than they might otherwise. So she was the
technical expert.” Woerner dep. at 14.
Based on the evidence, we must conclude that prior to
May of 1982, petitioner’s home health aide services were
likely similar to the functions identified in its
certificate of incorporation namely “yard work, shopping,
transportation, meal planning and preparation,
companionship, housecleaning, laundry, and other similar
non-medical services.” Petitioner’s Exhibit 1. While these
services are not nursing home services or transitional
health care services, these services were directed to
elderly people and people with health care problems.
Petitioner also submitted evidence that in 1981, it amended
Cancellation No. 92028027
19
its certificate of incorporation to provide nursing
services. However, it is not clear when petitioner began to
provide these nursing or health care services and we cannot
conclude that petitioner was providing these services under
the HCR trade name or trademark prior to respondent. On the
other hand, regarding respondent, we conclude that, at least
by the April of 1982, it was providing health care services
under the HCR mark. Viewed in its entirety, petitioner’s
evidence indicates that it was providing non-medical home
health aide services to the elderly or people with health
problems. Some of these services would undoubtedly be
similar to services provided in a nursing home. Therefore,
we conclude that petitioner has established priority of use
of the term HCR in connection with home health aide and
similar non-medical services.
Likelihood of Confusion
We now consider whether the marks as used on the
services are confusingly similar in view of the factors set
out in In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). See also In re E. I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); and Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1896 (Fed. Cir. 2000). In considering the
evidence of record on these factors, we must keep in mind
that “[t]he fundamental inquiry mandated by § 2(d) goes to
Cancellation No. 92028027
20
the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
Regarding the marks, we hold that they are for the
identical letters HCR. The stylizations in respondent’s
registered mark and in petitioner’s displays of its marks
are minimal. Therefore, we conclude that petitioner’s and
respondent’s marks are virtually identical.
The next question concerns the relatedness of the
services in connection with which the parties use their
respective marks. We have already concluded that petitioner
has only submitted evidence that would lead us to conclude
that its services in 1981, which are identified as home
health aide services, involved doing yard work, shopping,
transportation, meal planning and preparation,
companionship, housecleaning, laundry, and other similar
non-medical services for others. Respondent’s services were
educational services; namely, conducting classes, seminars,
and workshops for health care training and health care;
physical and occupational rehabilitation; transitional
health care; and nursing home care.
While these services are not identical, we conclude
that patients receiving health care services or
contemplating nursing home care services may also be in need
Cancellation No. 92028027
21
of housecleaning, laundry and other similar non-medical
services. When virtually identical marks are used on these
services, prospective purchasers are likely to believe that
the services originate or are associated with the same
source. Therefore, respondent’s and petitioner’s services
are related.
Here, even though petitioner employed a nurse, it did
so to improve the delivery of petitioner’s home health aide
services. Providing health care training, rehabilitation,
health care and nursing home care services is significantly
different than providing a high school graduate to cook,
clean, and shop for an individual. Woerner dep. at 152
(Petitioner’s witness refers to its services as “home health
aide services”). While we hold that petitioner’s home
health aide services are related to registrant’s health care
services, we do not find that, in early 1982, these services
included the same type of services that were provided by
respondent.11
Laches
Respondent also argues that the petition to cancel
should be denied because of laches inasmuch as “petitioner
11 We have not considered petitioner’s testimony that several
phone calls to petitioner were actually intended for respondent
or that callers thought that respondent’s listing on the New York
Stock Exchange with the symbol HCR was a reference to petitioner.
These inquiries all appear to have occurred after petitioner and
respondent were both using the mark HCR on health care services.
There is little doubt that if the parties are using virtually
Cancellation No. 92028027
22
waited ten years to challenge Registrant[‘s] HCR[] mark.”
Respondent’s Brief at 20. While petitioner may have known
about respondent for ten years, “laches, with respect to
protesting the issuance of the registration for the mark,
could not possibly start to run prior to when … [the]
application for registration was published for opposition.”
National Cable Television Ass'n, Inc. v. American Cinema
Editors, Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1432 (Fed.
Cir. 1991. Inasmuch as respondent’s registration was
published for opposition on June 22, 1993, and the petition
for cancellation was filed on September 11, 1998, the
applicable period for considering laches is approximately
five years.12
“To prevail on its affirmative defense [of laches,
respondent] was required to establish that there was undue
or 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'Ouest de la France, 245 F.3d 1359, 58 USPQ2d 1460,
1462 (Fed. Cir. 2001). Petitioner waited approximately five
identical marks on the same services, there would be a likelihood
of confusion.
12 While respondent argues that “Petitioner knew of Registrant’s
HCR’s use and registration of its ‘HCR’ mark” (Respondent’s Brief
at 20) that registration was for a different mark, HCR HEALTH
CARE AND RETIREMENT CORPORATION OF AMERICA and design, and it was
cancelled on June 2, 1989. It is not clear how laches could
apply to a party’s knowledge of a registration of a different
mark that was subsequently cancelled shortly after the party
became aware of it.
Cancellation No. 92028027
23
years prior to bringing this petition to cancel. We have
held that a five-year period without a significant
explanation is an unreasonably long period to wait prior to
filing a petition to cancel. Turner v. Hops Grill & Bar
Inc., 52 USPQ2d 1310, 1312 (TTAB 1999) (“It is noted that
the only reason petitioner presented for his delay is his
lack of actual knowledge. Because actual knowledge is not
the appropriate measure, and the length of the delay is
clearly substantial, petitioner's delay in objecting to
respondent's registration is unreasonable”). While
petitioner indicates that recent incidents of alleged actual
confusion may have prompted the filing of the petition to
cancel (Woerner dep. at 179-180), waiting to see if there is
actual confusion does justify a long delay in filing a
petition to cancel. We note that petitioner does not allege
it was without actual knowledge of respondent’s mark.
Second, respondent has indicated that it spends millions of
dollars advertising its services. Bixler dep. at 30.
Certainly, by delaying the filing of the petition to cancel,
respondent has been prejudiced to the extent that it has
expended millions of dollars continuing to promote and
develop a mark that petitioner was planning to petition to
cancel. See Lincoln Logs Ltd. v. Lincoln Pre-Cut Log Homes,
Inc., 971 F.2d 732, 23 USPQ2d 1701, 1704 (Fed. Cir. 1992)
(“Opposer's right to prevail in this proceeding arises from
Cancellation No. 92028027
24
the particular provisions of the Lanham Act that are
designed to encourage registration of marks. Opposer took
advantage of those provisions. Applicant did not.
Applicant, as prior user, could and should have taken steps
to prevent registration by Opposer of the mark LINCOLN. It
had an opportunity to oppose or petition to cancel Opposer's
registration during a period of more than five years and
failed to avail itself of that opportunity”).
The last point we discuss is whether the confusion is
inevitable because, if it is, then the defense of laches is
not applicable. Reflange Inc. v. R-Con International, 17
USPQ2d 1125, 1131 (TTAB 1990) (“It is not necessary to
discuss this theory because it is well established that
equitable defenses such as laches and estoppel will not be
considered and applied where, as here, the marks of the
parties are identical and the goods are the same or
essentially the same”). Here, we cannot hold that confusion
would be inevitable when virtually identical marks would be
used on the services of doing yard work, shopping, cleaning,
and similar services for others and respondent’s health care
related services. The evidence does not demonstrate that
potential customers would inevitably be confused when they
see these marks on nursing home and health care services and
the service of providing high school graduates to cook and
Cancellation No. 92028027
25
clean and do yard maintenance for elderly people or people
with health problems.
Therefore, inasmuch as petitioner has waited almost
five years after the issuance of respondent’s registration
and respondent has continued to spend substantial amounts in
promoting its services under the HCR mark, we determine that
petitioner has delayed too long in filing this petition to
cancel.
Decision: The petition to cancel Registration No.
1,793,002 is denied.