Medica Health Plansv.Sharon Rous-maniere

Trademark Trial and Appeal Board

May 7, 2008

No. 91172089 (T.T.A.B. May. 7, 2008)

Mailed:
May 7, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Medica Health Plans

v.

Sharon Rousmaniere
_____

Opposition No. 91172089
_____

Eric D. Paulsrud of Leonard, Street and Deinard for Medica
Health Plans.

Jon A. Schiffrin, Esq. for Sharon Rousmaniere.
______

Before Drost, Zervas and Taylor, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

On October 28, 2005, Sharon Rousmaniere (“applicant”)
filed an application (Serial No. 78742277) for the mark
GOMEDICA (in standard character form) for “on-line business
directories featuring medical providers; providing on-line
directory information services also featuring hyperlinks to
other web sites” in International Class 35. The application
THIS OPINION IS
NOT A PRECEDENT
OF THE T.T.A.B.
Opp. No. 91172089
2
claims a bona fide intent to use the mark in commerce under
Trademark Act Section 1(b), 35 U.S.C. § 1051(b).
Medica Health Plans (“opposer”) has opposed
registration of applicant's mark. In the notice of
opposition, opposer claims ownership of numerous
registrations for marks comprising the term MEDICA alone or
MEDICA and other terms, including the following
registrations:
Registration No. 1761828 (renewed November 24,
2003) for the mark MEDICA (in typed form) for
“comprehensive health care plans and health plan
management services” in International Class 42;

Registration No. 2113265 (renewed September 2,
2007) for the mark MEDICA (in typed form) for
“administration of prepaid healthcare plans;
healthcare plan administration services;
underwriting healthcare plans; underwriting
insurance for prepaid healthcare” in International
Class 36, and “healthcare in the nature of health
maintenance organizations (HMO)” in International
Class 42; and

Registration No. 2851516 (issued June 8, 2004) for
the mark MEDICA (in typed form) for, inter alia,
“physician, dental, hospital, clinic and pharmacy
referral services provided via a global computer
network” in International Class 35.

Applicant has also alleged that it has a family of marks,
that it has priority and that confusion, mistake and
deception are likely to be caused by applicant's use of its
mark on the services described in its application. Further,
opposer has alleged that its marks are “both well-known and
famous in Registrant’s geographic market area and elsewhere
Opp. No. 91172089
3
throughout the United States.” Notice of opposition at
paragraph 20.
Applicant has filed an answer denying the salient
allegations of the notice of opposition. The opposition has
been fully briefed.
The Record
In addition to the pleadings and the status and title
copies of the pleaded registrations submitted with the
notice of opposition, see Trademark Rule 2.122(d), 35 C.F.R.
§ 2.122(d), the record contains the file history of
applicant's application, opposer’s notice of reliance,
opposer's supplemental notice of reliance, the testimony,
with exhibits, of Robert Longendyke, opposer's senior vice
president of marketing and communications, and applicant's
notice of reliance.
Standing/Priority
Because opposer has properly made its pleaded
registrations of record, opposer has established its
standing. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842 (Fed. Cir. 2000); Lipton Industries, Inc. v.
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Also, priority is not an issue in this case because (i)
applicant has admitted that opposer is the prior user of the
mark MEDICA on the services listed in each of the pleaded
registrations, opposer's notice of reliance, ex. 18,
Opp. No. 91172089
4
response to request for admission no. 4, and (ii) opposer’s
pleaded registrations are of record. See King Candy Co. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974).
Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In considering the evidence of record on
these factors, we keep in mind that “[t]he fundamental
inquiry mandated by §2(d) goes to 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 (CCPA
1976).
Fame
The du Pont factor concerning the fame of the prior
mark plays a dominant role in likelihood of confusion cases
featuring a famous mark. Bose Corp. v. QSC Audio Products
Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir. 2002); Recot
Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894 (Fed.
Cir. 2000); Kenner Parker Toys, Inc. v. Rose Art Industries,
Opp. No. 91172089
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Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992). Fame
for likelihood of confusion purposes arises “as long as a
significant portion of the relevant consuming public …
recognizes the mark as a source indicator.” Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005).
That is, we look to the class of customers and potential
customers of a product or service, and not the general
public. Here, the relevant consuming public includes
prospective and actual purchasers or users of healthcare
providers. See Carefirst of Maryland, Inc. v. FirstHealth
of the Carolinas, 77 USPQ2d 1492 (TTAB 2005), aff’d, 81
USPQ2d 1919 (Fed. Cir. 2007).
Opposer has established that it has a substantial
number of members and substantial revenue and that its
revenue and membership has been increasing; in 2001 opposer
had 954,075 individual members with $1,520,601,000 in
revenue, and in 2005 opposer had 1,238,486 members with
$2,219,177,000 in revenue. Longendyke dep. at p. 38; ex. 1
at p. 31. Additionally, opposer has established that its
advertising expenditures are substantial, amounting to “in
excess of a million dollars a year” since 2001. Longendyke
dep. at p. 40. Further, opposer has “about a 40 percent”
market share in Minneapolis and “about 25 percent” market
share in the state of Minnesota. Id. Opposer also offers
Opp. No. 91172089
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healthcare services to consumers in three additional states,
i.e., North Dakota, South Dakota and Wisconsin.1 Longendyke
dep. at p. 7; ex. 6 to Longendyke dep.
We find that this evidence strongly indicates that a
significant portion of the relevant consuming public
associates MEDICA with opposer's business activities.
Opposer has a significant market share in a major U.S. city
and does business in four states. Its revenues, membership
and advertising expenditures are significant in size.
Opposer's website and advertising material of record
prominently feature the MEDICA mark for a variety of
healthcare related services. Longendyke dep. ex. 2 – 4.
Thus, we find that MEDICA is an extremely well known mark in
the geographic area in which it does business, especially in
Minnesota, and that opposer is entitled to benefit from the
du Pont factor regarding the fame of the mark. We
acknowledge that MEDICA is not known nationally, but
national fame is not necessary. See, e.g., Karl Karcher
Enterprises Inc. v. Stars Restaurants Corp., 35 USPQ2d 1125
(TTAB 1995) (opposer had established notoriety in a specific
area of operation); Berghoff Restaurant Co. v. Washington

1 Mr. Longendyke has testified that “Medica is going beyond the
four-state region … pretty much spanning the United States.”
Longendyke dep. at pp. 11 – 12. It is not clear which of
opposer's services Mr. Longendyke is referring to in his
testimony. Thus, we do not find that opposer offers its services
nationally – his testimony in this regard has limited probative
value.
Opp. No. 91172089
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Forge, Inc., 225 USPQ 603 (TTAB 1985) (opposer's proof of
fame of its mark within a limited geographic area sufficient
to find its mark famous for purposes of the likelihood of
confusion analysis). This factor therefore weighs heavily
in favor of finding a likelihood of confusion.
The Services
We turn next to the du Pont factor regarding the
similarity or dissimilarity of opposer's and applicant's
services, beginning with opposer's services recited in
Registration No. 2851516. Opposer's services are
“physician, dental, hospital, clinic and pharmacy referral
services provided via a global computer network” and
Applicant's services are “on-line business directories
featuring medical providers; providing on-line directory
information services also featuring hyperlinks to other web
sites.” Opposer maintains that the services are “not merely
highly related, but identical.” Applicant’s response is
that this is “speculation,” but has not offered any
specifics or evidence on how the services differ. Rather,
applicant maintains that in view of the differences in the
marks, confusion is not likely, and that this du Pont factor
does not favor either party. Brief at p. 14.
A page from applicant's website explains applicant's
services:
People Seeking Healthcare Consult GoMedicaTM

Opp. No. 91172089
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Through extensive key word marketing, search
engine optimization, links on key sites,
traditional advertising and more, we position
GoMedicaTM and you to be seen by people searching
for healthcare providers.

When a person searches for your specialty – or the
diagnostic procedures or treatments you offer – in
your geographic area, your profile appears. Only
after someone reads about you and then goes on to
contact you do we charge a fee.

Longendyke ex. 11 at p. 1. Additionally, the following
statements appear in a “demo” on applicant's website:
GoMedica helps people take control of their health
by letting them search a wide range of healthcare
options.

People can search for Physicians, Psychologists,
Naturopaths, Acupuncturists, Dentists,
Optometrists and many other practitioners.

They can also use GoMedica’s keyword option to
search by treatment or condition.

This step allows users to refine their search by
choosing the type of specialist and distance they
are willing to travel.

They can also use this page to search for specific
treatments or insurance coverage among other
things.

From this listing, the user can click through to
the Provider Profile Page of a practitioner to
learn more about him or her.

Longengdyke dep. ex. 11 at pp. 4 – 10. With regards to
opposer's services, Mr. Longendyke has testified that “we
help people to find providers within [our] network,
physicians, facilities, hospitals.” Longendyke dep. at p.
10.
Opp. No. 91172089
9
Because both opposer’s and applicant’s services
encompass locating medical providers via a global computer
network, we find that opposer's and applicant's services are
legally identical.
As for opposer's comprehensive health care plans and
HMO services recited in its two other registrations, we find
that applicant's services are similar to those services.
The Board has found services to be similar when they are
related in some manner or the circumstances surrounding
their marketing are such that they would be likely to be
encountered by the same persons in situations that would
give rise, because of the marks used thereon, to a mistaken
belief that they originate from or are in some way
associated with the same provider. See In re Melville
Corp., 18 USPQ2d 1386 (TTAB 1991); In re International
Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).
Here, applicant's services may be used to locate a provider
of health care services within opposer's health care plans
or HMOs. In other words, applicant's GoMedica services may
be used to find Medica health care providers. Hence, there
is a relationship between such services.
In view of the foregoing, we resolve the du Pont factor
regarding the similarity of the services in opposer's favor.

Opp. No. 91172089
10
Classes of Consumers and Trade Channels
Applicant has admitted that “one intended group of
users” of its services is “individuals seeking a physician
or other health care.” Opposer's notice of reliance, ex.
18, response to request for admissions no. 16. Such “users”
include consumers of opposer's services recited in all three
of the registrations mentioned above. Thus, the classes of
purchasers overlap.
Additionally, because neither party further limits its
trade channels beyond the Internet, we consider the parties’
respective services to be offered in all of the normal and
usual channels of trade and methods of distribution for such
on-line services. See, e.g., CBS Inc. v. Morrow, 708 F.2d
1579, 218 USPQ 198 (Fed. Cir. 1983); Squirtco v. Tomy Corp.,
697 F.2d 1038, 216 USPQ 937 (Fed. Cir. 1983); Paula Payne
Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901,
177 USPQ 76 (CCPA 1973). In view thereof, we find too that
the trade channels overlap or are otherwise related to one
another.
The du Pont factors regarding the classes of consumers
and trade channels are therefore resolved in opposer's
favor.
The Marks
We next consider the similarity or dissimilarity of the
marks as to appearance, sound, connotation and commercial
Opp. No. 91172089
11
impression. Palm Bay, 73 USPQ2d at 1691. While we must
consider the marks in their entireties, 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. See In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). We
keep in mind that when marks would appear on identical
services, as they partially do here, the degree of
similarity necessary to support a conclusion of likely
confusion declines with respect to that class of services
(in this case, the International Class 35 services).
Century 21 Real Estate Corp. v. Century Life of America, 970
F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
Applicant's mark GOMEDICA only differs from opposer's
mark MEDICA in that applicant’s mark includes the word GO
before MEDICA. The connotation of GOMEDICA is to go with,
or to go to, MEDICA, both of which encourage the consumer to
use the service offered by a provider known as MEDICA. See
Malarkey-Taylor Assocs. V. Cellular Telecommunications
Indus. Assn., 929 F. Supp. 473, 40 USPQ2d 1136 (D.D.C. 1996)
(“The Court finds several confusing similarities between
WirelessNOW and Go Wireless Now! … Defendant precedes those
words with ‘Go’ and completes its mark with an exclamation
point, but each of these additions can easily be read as
Opp. No. 91172089
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flourishes added to encourage people to use a product with a
name composed of ‘wireless’ and ‘now’ in conjunction with
each other.”). Because GO is a directive to the consumer,
we give more weight to MEDICA in applicant's mark and find
that the marks are highly similar in connotation and
commercial impression.
The marks are similar in appearance too. Both marks
include the term MEDICA. Further, as opposer correctly
points out, applicant's mark is in standard character form,
and hence applicant is not limited to displaying its mark in
a particular manner or style. Applicant may depict its mark
with GO in substantially smaller lettering than MEDICA, or
in a different font or color shade than MEDICA. See
Phillips Petroleum Co. v. C.J. Webb Inc., 442 F.2d 1376, 170
USPQ 35 (CCPA 1971). In fact, applicant has admitted that
“a proposed use of GOMEDICA will be the use of a capital
letter ‘G’ and a capital letter ‘M’”; and that “a proposed
use of GOMEDICA will be using the word ‘Go’ in a lighter
shade of blue and the word ‘Medica’ in a darker shade of
blue.” Longendyke dep. ex. 18, response to request for
admissions nos. 7 and 8. Also, in response to opposer's
request for admissions no. 6, applicant admitted that it
intends to use its mark in the following form:

Opp. No. 91172089
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We therefore find that MEDICA in applicant's mark will
create a greater impression on purchasers than GO. With
respect to the sound of the marks, the addition of GO to
MEDICA is a minor addition; the pronunciation of MEDICA is
not affected by the addition of GO.
Applicant has made of record numerous third-party use-
based registrations for marks containing the term “medica”
in the health and healthcare fields. According to
applicant, they show that “medica” is “diluted”; that “all
of these marks coexist on the Principal Register, even with
the shared use of ‘medica’”; that “this portion of the
underlying marks ought to be given a narrow scope of
protection”; and that “‘medica’ translates to ‘medical,’ and
is so commonly used that the public will look to other
elements to distinguish the source of the goods, including
but not limited to, the other different letters that compose
GOMEDICA ….” Brief at p. 12.
We first make it clear that we reject any suggestion by
applicant that MEDICA is a descriptive term. MEDICA is the
subject of several registrations which are entitled to the
presumptions of Section 7(b) of the Trademark Act, 35 U.S.C.
§ 1057(b), and applicant's suggestion that MEDICA is
descriptive is a collateral attack on such registrations,
which are not the subject of a counterclaim or a separate
petition. See Countour Chain-Lounge Co., Inc. v. The
Opp. No. 91172089
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Englander Co., Inc., 324 F.2d 186, 139 USPQ 285 (CCPA 1963);
Trademark Rule 2.106(b)(2)(ii), 37 C.F.R. § 2.106(b)(2)(ii).
We next point out that the third-party registrations
submitted by applicant are not evidence of use of the marks
shown therein. Without evidence of use, the third-party
registrations prove nothing about the impact of the third-
party marks on purchasers in terms of conditioning consumers
as to the existence of similar marks in the marketplace.
AMF Inc. v. American Leisure Products, Inc., 474 F.2d 1403,
177 USPQ 268 (CCPA 1973). They may, however, be relied on
to show that a word common to each mark has a readily
understood and well-known meaning and that it has been
adopted by third parties to express that meaning. Ritz
Hotel Ltd. v. Ritz Closet Seat Corp., 17 USPQ2d 1467 (TTAB
1990). In this case, the record does not show that there is
any English language definition of “medica.” The third-
party registrations for marks including MEDICA for goods or
services related to the healthcare field establish that
those in the healthcare field use MEDICA in a manner
intending to connote “medical.” Such use tends to show that
MEDICA is suggestive. However, this does not appreciably
weaken the strength of opposer's mark.
Applicant has also argued that “medica” can be
translated to “doctor” or “medical” and cites to several
third-party registrations which include a translation
Opp. No. 91172089
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statement identifying “medica” as “doctor” or “medical,” and
an entry from Cassell’s Spanish & English Dictionary (1969)
submitted with applicant's notice of reliance. We are not
persuaded by applicant's argument. Simply because a
translation exists does not persuade us that consumers of
opposer's services would “stop and translate” opposer's
mark. Palm Bay, 73 USPQ2d at 1696 (“The doctrine [of
foreign equivalents] should be applied only when it is
likely that the ordinary American purchaser would “stop and
translate [the word] into its English equivalent,” citing In
re Pan Tex Hotel Corp., 190 USPQ 109 (TTAB 1976)).
Additionally, applicant has submitted third-party
registrations “showing ‘GO’ used with other words for
similar services … in which none of them found ‘go’ to be
descriptive in any way such as GO LOCAL, GO NANNIES, GO HWY,
and GO SMART, which are all involved with online information
services.” Applicant's brief at p. 6. She has also
submitted third-party registrations in support of her
contention that “‘go’ coexists with a stand alone mark, such
as TIME and GOTIME for online magazines and travel
information services, PORT and GOPORT for software for
interfacing a global computer network and providing access
to a global computer network, and PAN and GOPAN for online
database retrieval and removing information from computer
networks ….” Id. at p. 7. According to applicant, “‘go,’
Opp. No. 91172089
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which has not been found descriptive in the past for similar
services, should be given more weight due to the descriptive
or suggestive nature of the term ‘medica.’” Brief at p. 7.
Applicant's argument is not persuasive. Some of the
marks comprise slogans which the assigned examining attorney
may have considered unitary and for this reason did not
require a disclaimer of GO. Others are for services that
are unrelated to applicant's and registrant’s services. See
Registration No. 3238889 for “educational services, namely,
instructing youngsters and women in the fundamentals of
running, track and field and cross country by organizing and
conducting running clubs and training programs.” Also, each
case must be decided on its own merits, and previous
decisions by examining attorneys are not binding on the
Board. See In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564 (Fed. Cir. 2001); In re Sunmarks Inc., 32 USPQ2d
1470 (TTAB 1994); In re National Novice Hockey League, Inc.,
222 USPQ 638 (TTAB 1984).
In view of the foregoing, we resolve the du Pont factor
regarding the similarity or dissimilarity of the marks in
opposer's favor.
Conditions of Sale and Sophistication of Purchasers
Applicant maintains that this factor “is of minimal
importance.” This factor hence does not favor either party.

Opp. No. 91172089
17
Variety of Goods/Services on Which the Mark is Used
As mentioned at the beginning of this decision, opposer
has pleaded that it owns a family of marks. It has not
specified the members of its alleged family of marks, and
has not even sought to establish that it has advertised and
promoted the family in a manner designed to create an
association of common origin for all marks containing the
family formative or “surname.” See generally, 4 McCarthy on
Trademarks and Unfair Competition § 23:61 (4th ed. 2007).
Additionally, opposer has not specified what “health
plan products and services” it would like us to consider
under this du Pont factor, and we will not cull through the
record to locate evidence of use of such marks on “health
plan products and services” which opposer could be referring
to in arguing that this factor be resolved in its favor. We
therefore find that this factor does not favor either party.
Remaining du Pont Factors
We have also considered the limited discussion of the
remaining du Pont factors which the parties have provided in
their briefs and any evidence pertaining thereto. Such
factors either are not relevant or are neutral in our
analysis.2

2 Applicant, in her discussion regarding her right to exclude
others from the use of her mark, has requested that we take
judicial notice of opposer's failure to oppose an earlier
application, since abandoned, for the mark GOMEDICA. Applicant's
request is denied as being outside the scope of matters for which
Opp. No. 91172089
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Conclusion
In balancing the above factors, and particularly
considering the regional fame of MEDICA and Federal Circuit
precedent providing that the fame of the mark is a dominant
factor in questions of likelihood of confusion, we find that
opposer has established by a preponderance of the evidence
that there is a likelihood of confusion between its marks
and applicant's mark.
DECISION: The opposition is sustained and registration
to applicant is refused.

the Board takes judicial notice. See TBMP §704.12(a) (2d ed.
rev. 2004).