MedBox, LLCv.PVM International, Inc.

Trademark Trial and Appeal Board

Oct 10, 2013

No. 91199915 (T.T.A.B. Oct. 10, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: October 10, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

MedBox, LLC

v.

PVM International, Inc.
___

Opposition No. 91199915
to Application Serial No. 85151027
___

Gregory E. Upchurch of LegalMetric Inc. for MedBox, LLC.

Thomas I. Rozsa of Rozsa Law Group LC for PVM International, Inc.
______

Before Taylor, Bergsman and Adlin, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:

Applicant PVM International, Inc. (“applicant” or “PVMI”) seeks registration
of the mark shown below

Opposition No. 91199915

2

for a “free standing vending machine which dispenses medicines and prescription
herbal supplements after obtaining verification of the prescription and the identity
of the individual obtaining the medicine or prescription herbal supplements and
processing payment for the medicine or prescription herbal supplement.”1 In its
notice of opposition, MedBox, LLC (“opposer”) alleges that since 2006 it has: (1)
“publicly advertised its services on its website, www.medbox.com, including
consulting services assisting in optimizing information technology for pharmacies,
doctors, patients and the pharmaceutical industry, such that MedBox is the trade
name of Opposer’s services”; and (2) “advertised its products on its website,
including opposer’s MedBox Automated Dispensing Robot and the MedBox
Consultant for patients and physicians.” Notice of Opposition ¶ 2. As grounds for
opposition, opposer alleges that use of applicant’s mark is likely to cause confusion
with opposer’s name and mark and falsely suggest a connection with opposer, that
applicant’s mark is generic and/or “descriptive or deceptively misdescriptive” of
applicant’s goods, and that applicant committed fraud because it “knew or should
have known of Opposer’s prior use of the term MedBox before the filing” of the
involved application, and failed to disclose to the Office “the existence of Opposer’s
superior rights in the term MedBox.” Id. ¶¶ 6-10. However, opposer only pursued
the pleaded claims of likelihood of confusion and fraud at trial, and therefore the

1 Application Serial No. 85151027, filed October 12, 2010, alleging an intent to use the
mark in commerce. The description of the mark is: “The mark consists of the word
‘MEDBOX’ and the design of a pole with a globe at the top with the outline of continents on
the globe with a pair of wings extending from either side of the pole and a pair of
intertwined serpents facing each other on the pole below the wings.”
Opposition No. 91199915

3

claims of false suggestion of a connection, genericness, mere descriptiveness and
deceptive misdescriptiveness have been waived and will be given no further
consideration. Krause v. Krause Publications, Inc., 76 USPQ2d 1904, 1906 n.2
(TTAB 2005); Viacom International Inc. v. Komm, 46 USPQ2d 1233, 1235 n.3
(TTAB 1998).
In its answer, applicant denies the salient allegations in the notice of
opposition. It also sets forth a number of what it refers to as “affirmative defenses,”
which are in fact merely amplifications of applicant’s denials of the allegations in
the notice of opposition. Compare TBMP § 311.02(b) (3d ed. rev.2 2013) with TBMP
§ 311.02(d).
In addition, during trial, both parties took testimony regarding whether
applicant had a bona fide intention to use the involved mark at the time it filed the
involved application. In its Trial Brief, opposer specifically alleges that applicant
did not have a bona fide intent to use the involved mark on the application’s filing
date. In its responsive Trial Brief, applicant addresses this issue substantively,
without objecting to consideration of a claim of no bona fide intent to use based on
opposer’s failure to plead such a claim in its notice of opposition. Opposer’s Trial
Brief at 8-9; Applicant’s Trial Brief at 11-13. Accordingly, we find that in addition
to the pleaded claims of likelihood of confusion and fraud, an unpleaded claim of no
bona fide intent to use was also tried, by implied consent, and we therefore deem
the pleadings amended to conform with the evidence. Fed. R. Civ. P. 15(b)(2);
TBMP § 507.03(b).
Opposition No. 91199915

4

The Record
The record consists of the pleadings, the file of the involved application,
applicant’s notice of reliance (“NOR”) on third-party registrations and TTABVue
status inquiries printed from the Internet (TTABVue Docket No. 17), and the
testimonial depositions of Vincent Mehdizadeh, an officer of applicant (TTABVue
Docket No. 18) (“Mehdizadeh Tr.”) and Dr. C. David Butler, opposer’s controlling
member (TTABVue Docket No. 19) (“Butler Tr.”), both of which were noticed by
opposer.
Preliminary Issues
In its brief, “Applicant contends that Opposer’s Trial Brief was filed 20 days
late, on June 24, 2013.” Applicant’s Trial Brief at 7. Applicant is correct that
opposer’s trial brief is untimely. Pursuant to the Board’s order of February 8, 2013,
opposer’s rebuttal testimony period closed on April 5, 2013, and pursuant to
Trademark Rule 2.128(a)(1), opposer’s brief was due “not later than sixty days”
thereafter. Although applicant has not specifically moved to strike opposer’s trial
brief, we decline to consider it because it is untimely.2
Applicant’s brief is also technically untimely, because it was due “not later
than thirty days after the due date of the first brief,” but was not filed until July 25,
2013. Trademark Rule 2.128(a)(1) (emphasis supplied). Nevertheless, we recognize
that requiring applicant to comply with the Rule when opposer’s brief was itself

2 However, we have considered opposer’s brief to the extent it makes clear that
opposer declined to pursue the pleaded claims of false suggestion of a connection,
genericness, mere descriptiveness and deceptive misdescriptiveness.
Opposition No. 91199915

5

significantly late would be unfair, and because applicant filed its brief within 30
days of opposer’s brief, we exercise our discretion to consider applicant’s brief.
Applicant also objects, on the ground of hearsay, to Dr. Butler’s testimony
regarding alleged actual consumer confusion, and to e-mails which allegedly reveal
actual confusion. We decline to strike this evidence, for two reasons. First, the e-
mails and testimony are not being submitted to establish the truth of the matters
asserted therein, but instead are offered primarily to establish that the e-mails
were sent, or that Dr. Butler received the communications, and are therefore not
hearsay. Fed. R. Civ. P. 801(c)(2) (hearsay is a statement “a party offers in evidence
to prove the truth of the matter asserted in the statement”); Towers v. Advent
Software Inc., 17 USPQ2d 1471 1473 n.3 (TTAB 1989), aff’d, 913 F.2d 942, 16
USPQ2d 1039 (Fed. Cir. 1990); Corporate Fitness Programs Inc. v. Weider Health
and Fitness Inc., 2 USPQ2d 1682, 1690-91 (TTAB 1987), set aside following
settlement, 7 USPQ2d 1828 (TTAB 1988). Second, some of the statements in the e-
mails fall under the “state of mind” or “business records” exceptions to the hearsay
rule. Fed. R. Evid. 803(3) and (6); National Rural Cooperative Ass’n v. Suzlon Wind
Energy Corp., 78 USPQ2d 1881, 1887 n.4 (TTAB 2006), aff’d, 214 Fed.Appx. 987
(Fed. Cir. 2007). While we have considered this evidence for whatever probative
value it may have, for the reasons discussed below, it is not particularly probative.
The Parties and Their Marks
Opposer’s controlling member Dr. Butler is a pharmacist, and has specific
experience with how pharmacists and companies can best “use information within
Opposition No. 91199915

6

their pharmacy practices.” Butler Tr. at 27-30. He invented “a box for holding and
dispensing prescription medications, commonly known as meds,” which he calls a
MEDBOX. Id. at 9. Dr. Butler first started using the name MEDBOX on the
Internet, on June 28, 2006, the day he purchased the Internet domain name
“medbox.com.” Id. at 66-67 and Exs. 52, 53. Dr. Butler incorporated opposer
Medbox, LLC shortly thereafter, on July 10, 2006. Id. at 10.
Opposer has not sold any MEDBOX robotic dispensers, nor has it produced
any. Id. at 11, 86-87. Instead, opposer has “primarily been focused on talking to
venture capitalists and angel investors and attending trade shows and trying to
promote the product for – to obtain funding, for further development.” Id. at 12.
Opposer promoted the product at the Health Care Information Management
Systems Society Annual Meeting and National Rural Health Association Annual
Meeting in 2009 and the Institute for Health Technology Transformation Health IT
Summit in 2010. Opposer also filed a patent application for the MEDBOX
dispenser in 2006, which is currently pending. Id. at 11-12, 15, 72-81, 84 and Exs.
10, 56-64. Opposer’s efforts to raise capital for the MEDBOX dispenser have thus
far been unsuccessful. Id. at 86-90, 92-95.
Opposer also offers pharmaceutical consulting services under the MEDBOX
name and mark, specifically “with regard to pharmacy and drug product
distribution and use within pharmacies and physician offices and insurance
companies involved with Medicare Part D, which is the drug product Medicare Act.”
Opposition No. 91199915

7

Id. at 11, 17 and Ex. 10.3 As described on opposer’s website, opposer’s consulting
services assist “in optimizing information technology for pharmacies, doctors,
patients and the pharmaceutical industry,” including by improving websites, search
engine optimization, loading FDA NDC drug codes and manufacturer labeling
information onto pharmacy software and data mining. Id. at 66-67 and Exs. 52-53.
Opposer has provided its pharmaceutical-related services to Blue Cross/Blue Shield
of Michigan and Walgreens, among others, and its “sales of services” since 2006
have exceeded $300,000. Id. at 11 and Ex. 10. As Dr. Butler testified concerning
why he decided to use the MEDBOX name in connection with his pharmacy-related
services in addition to the robotic dispenser:
…once I had established the fact that I was going to try to
grow MedBox, I was also looking for ways to maintain my
cash flow. And I already had the MedBox corporate
name. I could increase brand awareness by promoting
myself and my knowledge, going to companies that, at
some point, could even potentially become customers and
investors, so that the more they heard my name as a
service, the more I could do horizontal structure and also
sell the product.

Id. at 101.

3 During his deposition, Dr. Butler answered questions about, and read from,
opposer’s responses to applicant’s first set of interrogatories, a copy of which is included as
Exhibit 10 to the Butler deposition. Generally, under Trademark Rule 2.120(j)(5), a party
may not introduce or rely upon its own responses to an adversary’s written discovery
requests. In this case, however, notwithstanding that Dr. Butler read from opposer’s
discovery responses at times, there is an adequate foundation for his testimony and it is not
based on opposer’s discovery responses, but instead on his personal knowledge. Moreover,
under Trademark Rule. 2.120(j)(6), nothing precludes the “reading or use” of interrogatory
responses “as part of the examination or cross-examination of any witness during the
testimony period of any party.” During his testimony, Mr. Mehdizadeh read from
applicant’s responses to opposer’s interrogatories, which was not improper for the same
reasons.
Opposition No. 91199915

8

Applicant’s Medbox product is a “biometric medicine dispensing system that
can dispense a wide variety of medicine and is sold to traditional pharmacies,
doctors’ offices, hospitals, urgent care centers, and alternative medicine clinics.”
Mehdizadeh Tr. at 13 and Ex. 2. There is no evidence regarding when applicant
first started using its mark in commerce. Applicant also offers “consulting services
to individuals seeking to establish a new clinic.” Id.
Two days after applicant filed its application, it entered into a license
agreement with Prescription Vending Machines Inc. (“PVM”), pursuant to which
PVM was granted “an exclusive license to use [applicant’s] MEDBOX Trademark
for use in conjunction with [the] free standing vending machines which dispense
medicines,” identified in applicant’s application. Mehdizadeh Tr. at 7-10 and Ex. 8.
The license, at Paragraph 4, includes quality control provisions which require PVM
to provide to applicant “evidence that it has properly complied with Licensor’s high
standards for the production and sale of the subject free standing vending machine,”
and, in the event applicant determines that PVM’s machines do not meet the
standards, it may “demand that Licensee make whatever modifications are
necessary” in order for the machines to become compliant. Id. Mr. Mehdizadeh
controls both applicant and PVM. Id. at 11. At the time applicant filed its
application, it intended for the MEDBOX product to be distributed by its licensee
PVM. Id. at 10.
PVM operates a website, “cannamedbox.com,” which promotes medical
marijuana clinics which use the vending machine offered under applicant’s involved
Opposition No. 91199915

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mark. Id. at 12-13. However, neither applicant nor PVM “get involved in supplying
[their customers] medication or telling them where to go to find medication or
anything in that magnitude. We simply are a technology retailer.” Id. at 13-14. In
fact, Mr. Mehdizadeh testified that marijuana is “not what the machine is intended
for. If people utilize the technology in states that allow that utilization in that
capacity that’s really up to them. And they take the necessary legal risks
accordingly.” Id. at 15.
Applicant offered to purchase opposer’s “medbox.com” domain name in a
letter dated December 2, 2010. Butler Tr. at 18, 56-57 and Exs. 10, 45; Mehdizadeh
Tr. at 17-18 and Ex. 4. In the letter, Mr. Mehdizadeh claims that he “patented the
use of biometrics and cameras on dispensing machines for the purpose of
distribution of medical cannabis in alternative medicine clinics and OTC drugs for
use in doctor’s offices,” and that at the time of the letter he had sold more than 100
machines worldwide. Mehdizadeh Tr. Ex. 4. Neither Mr. Mehdizadeh nor applicant
became aware that opposer owned the “medbox.com” domain name until December
2010. Mehdizadeh Tr. at 17-18.
Opposer has received telephone calls and e-mails which opposer claims were
intended for applicant. Butler Tr. at 24, 57-64 and Exs. 46-50. In fact, one of the e-
mails was sent to Dr. Butler with a copy to Mr. Mehdizadeh, and others specifically
reference marijuana, even though opposer’s products and services have nothing to
do with marijuana, including because “there’s a risk in dealing with an illegal
Opposition No. 91199915

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substance, if [opposer is] associated with it.” Id. at 20, 24-27, 62-63, 106 and Exs.
46, 49, 50.
Standing
Opposer has established that it uses MEDBOX for at least its pharmacy-
related consulting services. Butler Tr. at 11, 17, 66-67 and Exs. 10, 52, 53.
Applicant seeks registration of its mark for a pharmaceutical-related product.
Accordingly, opposer has standing. Automedx, Inc. v. Artivent Corp., 95 USPQ2d
1976, 1978 (TTAB 2010); Giersch v. Scripps Networks, Inc., 90 USPQ2d 1020, 1022
(TTAB 2009) (“Petitioner has established his common-law rights in the mark
DESIGNED2SELL, and has thereby established his standing to bring this
proceeding.”); Syngenta Crop Prot. Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1118
(TTAB 2009) (testimony that opposer uses its mark “is sufficient to support
opposer’s allegations of a reasonable belief that it would be damaged …” where
opposer alleged likelihood of confusion).
Applicant’s Bona Fide Intent to Use
Turning first to opposer’s claim that applicant did not have a bona fide intent
to use the involved mark, which was tried by implied consent, opposer takes the
position that applicant itself never had any intention of using the mark MEDBOX,
but rather intended that only its licensee PVM would use the mark. Opposer
contends that applicant’s intent to license use of the mark to PVM means that
applicant did not have a bona fide intent to use the mark.
Opposition No. 91199915

11

We disagree. Opposer has failed to contradict Mr. Mehdizadeh’s testimony
that at the time applicant filed the involved application, it intended for use of the
mark to be by its licensee PVM. Moreover, applicant’s stated intention is fully
supported by applicant entering into the license with PVM a mere two days later.
Furthermore, opposer’s arguments to the contrary notwithstanding, licensee
PVM’s use of the mark inures and/or will inure to the benefit of applicant, PVM’s
licensor, even where, as here, applicant itself never used the mark.
Where a registered mark or a mark sought to be
registered is or may be used legitimately by related
companies, such use shall inure to the benefit of the
registrant or applicant for registration, and such use shall
not affect the validity of such mark or of its registration,
provided such mark is not used in such manner as to
deceive the public. If first use of a mark by a person is
controlled by the registrant or applicant for registration of
the mark with respect to the nature and quality of the
goods or services, such first use shall inure to the benefit
of the registrant or applicant.

15 U.S.C. § 1055. See, Pneutek, Inc. v. Scherr, 211 USPQ 824, 833 (TTAB 1981)
(“rights to a mark may be acquired and maintained through the use of that mark by
a controlled licensee even when the only use of the mark has been, and is being,
made by the licensee”) (emphasis supplied); Trademark Rule 2.38(a); TMEP
§ 1201.03 (2013); see also, Woodstock’s Enterprises Inc. (California) v. Woodstock’s
Enterprises Inc. (Oregon), 43 USPQ2d 1440, 1446-48 (TTAB 1997), aff’d, 152 F.3d
942 (Fed. Cir. 1998) (addressing sufficiency of licensor’s quality control).
It is not relevant, at least in this case, that the involved application is based
on applicant’s intention to use the mark, or that applicant intended for its use of the
Opposition No. 91199915

12

mark to be made by its controlled licensee. In fact, while in a use-based application
under Section 1(a) of the Act “the applicant should state in the body of the
application that the applicant has adopted and is using the mark through its related
company (or equivalent explanatory wording),” in an intent-to-use application under
Section 1(b) of the Act, “the statement that the applicant is using the mark through
a related company should be included in the amendment to allege use … or
statement of use ….” TMEP § 1201.03(a) (emphasis in original). Here, applicant
has not yet submitted an amendment to allege use or statement of use and it was
therefore not improper for applicant to not disclose, in the application itself, that its
use would be through its licensee PVM.
In short, opposer has not established that applicant did not have a bona fide
intention to use the involved mark at the time it filed the involved application.
Accordingly, the claim of no bona fide intent to use, which was tried by implied
consent, is dismissed, with prejudice.
Priority
Applicant has not established when it (or its licensee) first started using
MEDBOX for the “free standing vending machine” identified in the involved
application. Therefore, the earliest date upon which applicant may rely is October
12, 2010, the filing date of its involved application. Cent. Garden & Pet Co. v.
Doskocil Mfg. Co., __ USPQ2d ___, 2013 WL 4635990 at *5 (TTAB Aug. 16, 2013)
(“for when an application or registration is of record, the party may rely on the filing
date of the application for registration, i.e., its constructive use date”); Syngenta, 90
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Opposition No. 91199915

14

opposer has not established that MEDBOX is distinctive of its robotic prescription
medicine dispenser. In fact, it appears that MEDBOX may be merely descriptive of
the prescription medicine dispenser under Section 2(e)(1) of the Act, because Dr.
Butler testified that prescription medications are “commonly known as meds,” the
evidence of record reveals that opposer’s robotic dispenser is intended to be in the
shape of a large box and Dr. Butler testified that “the natural name” for the device
is MEDBOX. Butler Tr. at 9 and Ex. 10. Furthermore, because opposer has yet to
use MEDBOX for the robotic dispenser, the mark has not acquired secondary
meaning for that product.
However, the situation is different with respect to opposer’s pharmacy-
related consulting services. In fact, while MED alone may be suggestive of the
subject of opposer’s services, the term in question is MEDBOX, which is unitary and
does not call to mind services at all. In short, there is nothing about MEDBOX
which immediately calls to mind opposer’s services. Therefore, we consider whether
use of applicant’s mark for its vending machine is likely to cause confusion with
opposer’s MEDBOX consulting services.
Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an
analysis of all of the probative facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are
Opposition No. 91199915

15

the similarities between the marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976). Opposer bears the burden of establishing that there is a
likelihood of confusion by a preponderance of the evidence. Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed. Cir. 2000).
Similarity of the Marks
We must consider the similarities and dissimilarities of the parties’ marks in
appearance, sound, meaning and commercial impression. Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005). The test is not whether the marks can be distinguished
when subjected to a side-by-side comparison, but rather whether the marks are
sufficiently similar in their entireties that confusion as to the source of the goods
and services offered under the respective marks is likely to result.
Of course, one feature of a mark may be more significant than another, and it
is not improper to give more weight to the dominant feature of a mark in
determining its commercial impression. In re Nat’l Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985) (“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 the ultimate conclusion rests on consideration of the marks in their
entireties. Indeed, this type of analysis appears to be unavoidable.”).
In this case, the parties’ marks are quite similar because they share the term
MEDBOX, which is the entirety of opposer’s mark. While we may not ignore the
Opposition No. 91199915

16

fairly distinctive design component of applicant’s mark, and have not done so, the
literal portion of applicant’s mark is its dominant feature. In re Appetito Provisions
Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987) (“because applicant’s mark shares with
registrant’s mark that element responsible for creating its overall commercial
impression, the marks are confusingly similar”); see also, Bellbrook Dairies, Inc. v.
Hawthorn-Mellody Farms Dairy, Inc., 253 F.2d 431, 117 USPQ 213 (CCPA 1958)
(recognizing and applying general rule “that one may not appropriate the entire
mark of another and avoid a likelihood of confusion by the addition thereto of
descriptive or otherwise subordinate matter”). In fact, our cases “reflect the
principle that if a mark comprises both a word and a design, the word is normally
accorded greater weight because it would be used by purchasers to request the
goods or services.” M.C.I. Foods, Inc. v. Brady Bunte, 96 USPQ2d 1544, 1551
(TTAB 2010); see also, CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200
(Fed. Cir. 1983). For all of these reasons, considering the parties’ marks in their
entireties, we find that their similarities greatly outweigh their dissimilarities, and
this factor therefore weighs heavily in favor of a finding of likelihood of confusion.
Goods/Services and Channels of Trade
Turning to the parties’ goods and services and channels of trade, it is settled
that they need not be identical or even competitive in order to support a finding of
likelihood of confusion. It is enough that the goods and services are related in some
manner or that the circumstances surrounding their marketing are such that they
would be likely to be seen by the same persons under circumstances which could
Opposition No. 91199915

17

give rise, because of the marks used, to a mistaken belief that applicant’s goods and
opposer’s services originate from or are in some way associated with the same
source or that there is an association between the sources of the goods and services.
Hilson Research, Inc. v. Society for Human Resource Management, 27 USPQ2d
1423, 1432 (TTAB 1993); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991);
Schering Corp. v. Alza Corp., 207 USPQ 504, 507 (TTAB 1980); Oxford Pendaflex
Corp. v. Anixter Bros. Inc., 201 USPQ 851, 854 (TTAB 1978); In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). The issue is not
whether purchasers would confuse the goods and services, but rather whether there
is a likelihood of confusion as to the source of the goods and services. In re Rexel
Inc., 223 USPQ 830, 832 (TTAB 1984). Furthermore, it is settled that we must
consider the goods as identified in applicant’s involved application and the services
opposer has proven are offered under its mark. See Hewlett-Packard Co. v. Packard
Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); Octocom
Systems, Inc. v. Houston Computers Services, Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
Here, opposer’s information technology and other services assist in “drug
product distribution,” Butler Tr. at 11, and applicant’s vending machine dispenses,
or “distributes,” medicine, i.e. “drug products.” Applicant’s goods and opposer’s
services are therefore related, in that they both enable providers to distribute
medicine effectively and efficiently. Furthermore, Mr. Mehdizadeh claims that he
“patented the use of biometrics and cameras” on his MEDBOX vending machine,
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and applicant claims that the machine “uses pre-registered biometric scan to
identify authorized users” and “can track and restrict usage as well deliver (sic)
unalterable reports that can monitor activity.” Mehdizadeh Tr. Exs. 4, 7. In other
words, like opposer’s services, applicant’s box provides information and other
technologies in order to assist in drug distribution. While applicant’s drug
distribution technology is delivered in the form of a product, the vending machine,
and opposer’s drug distribution technology is delivered via consulting and other
services, it is settled that goods and services may be related. In re Hyper Shoppes
(Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (BIGGS for retail
grocery and general merchandise store services likely to be confused with BIGGS
for furniture); In re Thomas, 79 USPQ2d 1021, 1024 (TTAB 2006) (“It is clear that
consumers would be likely to believe that jewelry on the one hand and retail stores
selling jewelry on the other emanate from or are sponsored by the same source if
such goods and services are sold under the same or similar marks.”).5 In short, we
find that applicant’s product and opposer’s services are at least related, which
further supports a finding of likelihood of confusion.
As for channels of trade, it is clear that they overlap. Applicant’s machines
dispense medicines, and opposer’s services are focused on the distribution of

5 It also appears that applicant’s technology-intensive vending machines and
opposer’s technology-intensive consulting services could be complementary, in that one of
applicant’s customers could seek opposer’s assistance in managing or utilizing applicant’s
machine, or opposer’s customers could seek to employ applicant’s machine as one way of
improving their drug product distribution processes. See Octocom, 918 F.2d 937, 16
USPQ2d at 1788 (modems and computer programs are commonly used together in
networking). See also In re Martin’s In re Toshiba Medical Systems Corp., 91 USPQ2d
1266, 1272 (TTAB 2009).Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290
(Fed. Cir. 1984); In re Toshiba Medical Systems Corp., 91 USPQ2d 1266, 1272 (TTAB 2009).
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medicines. In fact, both parties offer their goods and services to pharmacies and
doctor’s offices. Compare Mehdizadeh Tr. at 13 and Exs. 2 and 7 with Butler Tr. at
11. This factor therefore also weighs in favor of a likelihood of confusion.
Applicant’s Intent
To the extent that opposer argues that applicant has used or applied for
registration of its mark in bad faith, there is no evidence which would support such
a conclusion. In fact, there is no evidence in the record that applicant was even
aware of opposer or opposer’s mark at the time it started using its involved mark
(whenever that was), or at the time it filed its involved application. While
applicant’s offer to purchase the “medbox.com” domain name reveals that applicant
was aware of opposer’s name or mark on the date of the offer, the offer was not
made until almost two months after applicant filed the involved application. More
importantly, however, even if there was evidence that applicant was aware of
opposer on the application’s filing date, it is settled that “mere knowledge of the
existence of the prior user should not, by itself, constitute bad faith.” Action
Temporary Services, Inc. v. Labor Force, Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1310
(Fed. Cir. 1989) (emphasis in original). This factor is therefore neutral.
Actual Confusion
Opposer’s evidence of actual confusion is not relevant in this case because
none of it reveals confusion between opposer’s services, which we are focused on
here, and applicant’s goods. Indeed, to the extent that opposer’s evidence reveals
the cause of a consumer’s alleged actual confusion, the cause is consumers’
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awareness of both applicant’s product and opposer’s attempts to market its robotic
dispenser, rather than opposer’s pharmaceutical consulting services.
In any event, opposer’s evidence of alleged actual confusion between the
parties’ machines is neither extensive nor persuasive, and the vast majority of it
does not in fact establish actual confusion, as there is no indication that the authors
of the e-mails were confused in any manner, let alone between opposer and
applicant due to either’s use of MEDBOX. Butler Tr. Ex. 51. There is only one e-
mail which gives us pause. It was sent to Dr. Butler with a copy to Mr.
Mehdizadeh. It states: “There is another machine called Med Box and I’m confused
which is which as I just saw the machine at the Denver show and it was not red but
black as I remember and it was for medical Marijuana. How is it that there is two
medication dispensing systems with the same name … Who’s on first and who’s on
second???” Id. Ex. 46. This e-mail establishes the author’s awareness that both Dr.
Butler and Mr. Mehdizadeh are involved with actual or potential products called
MEDBOX. However, this is at most a single, de minimis instance suggesting actual
confusion, which is insufficient to find that there has been meaningful actual
confusion in the marketplace. Syndicat Des Proprietaires Viticulteurs De
Chateaneuf-Du-Pape v. Pasquier DesVignes, 107 USPQ2d 1930, 1942 (TTAB 2012);
Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 USPQ2d 1901, 1905
(TTAB 2007). Accordingly, we find that this factor is also neutral.
Third Party Use of Similar Marks
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Applicant introduced printouts from Office records which reveal that third
parties own registrations for the marks MEDBOXES & Design and C-CURE
MEDBOX, both of which are registered for medical or pharmaceutical products, and
neither of which opposer challenged. Applicant’s NOR. Applicant argues that as a
result of these registrations “[t]here is no exclusivity to the word ‘medbox.’”
Applicant’s Trial Brief at 21. However, it is settled that third-party registrations
are not evidence that the marks are in use on a commercial scale or that the public
has become familiar with them. See Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476
F.2d 1004, 177 USPQ 462, 463 (CCPA 1973) (the purchasing public is not aware of
registrations reposing in the U.S. Patent and Trademark Office); Productos Lacteos
Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934
(TTAB 2011).
[I]t would be sheer speculation to draw any inferences
about which, if any, of the marks subject of the third
party (sic) registrations are still in use. Because of this
doubt, third party (sic) registration evidence proves
nothing about the impact of the third-party marks on
purchasers in terms of dilution of the mark in question or
conditioning of the purchasers as to their weakness in
distinguishing source.
In re Hub Distributing, Inc., 218 USPQ 284, 286 (TTAB 1983). See also Olde Tyme
Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992)
(“As to strength of a mark, however, registration evidence may not be given any
weight”). Accordingly, this factor is neutral.
Conclusion Regarding Likelihood of Confusion
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The parties’ marks are quite similar, their goods and services are related and
their channels of trade overlap. Accordingly, after a careful review of all evidence of
record, and based on a preponderance of the evidence, we conclude that there is a
likelihood of confusion between the parties’ marks.6
Fraud
For the sake of completeness, we also consider opposer’s fraud claim. That
claim is based on opposer’s allegation that applicant’s claim to have a bona fide
intent to use the mark MEDBOX was intentionally false because applicant in fact
intended for its licensee PVM to use the mark. However, as explained in connection
with opposer’s claim of no bona fide intent to use, there was nothing improper or
false in applicant declaring that it had a bona fide intent to use the involved mark
(through its licensee). Furthermore, to the extent that the fraud claim is based on
the allegation that applicant and/or Mr. Mehdizadeh knew about opposer or
opposer’s use of MEDBOX prior to filing the involved application, that is not enough
to establish fraud, and even if it was, the record contains no evidence supporting the
allegation. Applicant filed the involved application on October 12, 2010, and did not
offer to purchase opposer’s “medbox.com” domain name until almost two months
later. Opposer has not cited any evidence that applicant was aware of opposer or its
MEDBOX mark before October 12, 2010. Accordingly, opposer has not established
that applicant made a material misrepresentation in connection with the involved
application, let alone that applicant made a material misrepresentation with the

6 In the absence of any evidence bearing on the remaining du Pont factors, we find
that those factors are all neutral.
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intent to deceive the Office. Accordingly, the claim of fraud is dismissed with
prejudice. In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009).

Decision: The opposition is sustained and registration of applicant’s mark
is refused under Section 2(d) of the Trademark Act.