Specialty Pharmacy Management, LLCv.Walgreen Co.

Trademark Trial and Appeal Board

Sep 15, 2021

91236453 (T.T.A.B. Sep. 15, 2021)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: September 15, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Specialty Pharmacy Management, LLC

v.

Walgreen Co.
_____

Opposition No. 91236453
_____

Ellen S. Simpson of Simpson & Simpson PLLC,
for Specialty Pharmacy Management, LLC.
Tamara A. Miller, Michelle Zimmerman, and Laura Schaefer,
of Leydig Voit & Mayer Ltd., for Walgreen Co.
_____

Before Cataldo, Taylor, and Lebow,
Administrative Trademark Judges.

Opinion by Lebow, Administrative Trademark Judge:
Walgreen Co. (“Applicant”) seeks registration of the mark ALLIANCERX
WALGREENS PRIME, in standard characters, on the Principal Register for:
Retail drug store services; retail pharmacy services; retail pharmacy
services featuring specialty pharmaceuticals; retail pharmacy services
featuring specialty pharmaceuticals provided via the Internet; retail
pharmacy services featuring retrospective drug utilization review
programs; specialized retail pharmacy services for patients with
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particular medical conditions; mail order services via a global computer
network featuring pharmacy products and retail pharmacy services and
medical supplies, in International Class 35;

Educational services, namely, providing courses in the fields of health
and wellness; providing medication administration and health and
wellness education services through live, printed, telephonic, and online
classes and instruction; educational services, namely, providing
lectures, seminars and individual training for patient self-care of
chronic disease states, in International Class 41; and

Healthcare and medical services, namely, infusion therapy services;
injectable therapies, ambulatory care and nursing care services; rental
of medical equipment; dispensing of specialty pharmaceuticals;
healthcare services, namely, reporting of results relating to clinical
programs, therapy management programs, and disease management
programs; interactive medical monitoring and alert services for
reminding clients of medical information, namely, medicinal dosages,
allergic sensitivity and prescription refills clinical pharmacy services,
namely, preparing and dispensing home infused medication;
prescription refill reminder services; web-based health assessment
services, namely, a series of health-related questions for response from
the user that result in a report that provides health-related information
in the form of recommended education resources and treatment
information, in International Class 44.1

Specialty Pharmacy Management, LLC (“Opposer”) has opposed registration of
Applicant’s mark, asserting priority and likelihood of confusion with its registered
marks RELIANCE RX (in standard characters)2 and the composite mark
RELIANCE/RX SPECIALTY PHARMACY YOU CAN RELY ON and Design,

1 Application Serial No. 87353224 (“the Application”) was filed on February 28, 2017, under
Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a
bona fide intention to use the mark in commerce.
2 Registration No. 4368886 (“the ’886 Registration) issued on July 16, 2013; Section 8
Statement of Use accepted.” RX in the mark is disclaimed.
Opposition No. 91236453
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,3 under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d).4 Both registrations identify the following services:
Specialty pharmacy services, namely, distributorship services in the
field of special purpose high-cost, infusion-based, injectable and oral
pharmaceuticals featuring the provision of pharmaceuticals ordered by
health care providers for use by health benefit plan subscribers;
administering pharmacy reimbursement programs and services in the
field of specialty pharmaceuticals for health benefit plan subscribers, in
International Class 35; and

Specialty pharmacy services, namely, dispensing of special purpose
pharmaceuticals, namely, infusion, injectable, and oral therapies, to
health care providers for use by health benefit plan subscribers, in
International Class 44.

Opposer also claims prior common law use of its marks for the same services.5
Applicant denied the salient allegations in its amended answer to the notice of
opposition, and counterclaimed to cancel the ’886 Registration for the standard
character mark RELIANCE RX on the ground that the underlying intent-to-use
application for that registration (application Serial No. 85062516, “the ’516
Application”) was improperly assigned during prosecution, in violation of Section
10(a)(1) of the Trademark Act, 15 U.S.C. § 1060(a)(1), thus rendering the application

3 Registration No. 4353300 (“the ’300 Registration) issued on June 18, 2013; Section 8
Statement of Use accepted. RX in the mark is disclaimed.
4 1 TTABVUE (Notice of Opposition). Citations in this opinion to the briefs, the record, and
other filings in the case refer to TTABVUE, the Board’s online docketing system. Turdin v.
Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). Specifically, the number preceding
TTABVUE corresponds to the docket entry number, and any numbers following TTABVUE
refer to the page number(s) of downloadable .pdf version of the document where the cited
materials appear.
5 Id.
Opposition No. 91236453
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and resulting registration void.6
Opposer denied the salient allegations in its answer to the counterclaim, and
raised a prior registration (“Morehouse”) defense: “Applicant will not be damaged by
the continued existence of [the ’886 Registration] for the mark RELIANCE RX
because Opposer owns the ’300 Registration “for the substantially same mark for use
in association with identical services to those set forth in [the ’886 Registration]
owned by Opposer.”7
The case is fully briefed. After carefully reviewing all of the evidence and
arguments presented, we dismiss both the opposition and counterclaim.
I. The Record
The evidentiary record in this case consists of the pleadings, the files of the
Application and the ’886 Registration by operation of Trademark Rule 2.122(b)(1), 37

6 Applicant also asserted two so-called “affirmative defenses” in its answer, but neither
qualify as such. In the first, Applicant asserts that Opposer cannot object to Applicant’s use
of the term “RX” because it disclaimed that term in its registrations; this is simply an
amplification of Applicant’s denials to the notice of opposition. In the second, Applicant
purports to reserve a right to assert future affirmative defenses, which is a nullity under the
Federal Rules of Civil Procedure. See, e.g., FDIC v. Mahajan, 923 F. Supp. 2d 1133, 1141
(N.D. Ill. 2013).
7 15 TTABVUE (Opposer’s Answer to Counterclaim). Opposer, like Applicant, asserted two
purported “affirmative defenses” to Applicant’s counterclaim that are not true affirmative
defenses. In the first, Opposer asserts “priority in the mark RELIANCE RX based on its
actual use of the mark prior to the date of filing of Applicant’s application for registration
based on an intent-to-use the mark in interested commerce….” Id. at 4. We construe this
claim in Opposer’s answer as a mere amplification of Opposer’s denials of the counterclaim.
In an opposition, priority is not at issue with respect to pleaded registrations, absent the
filing of a proper counterclaim to cancel them. See King Candy Co. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974); see also Trademark Rule 2.106(b)(3),
37 C.F.R. § 2.106(b)(3). When there is a counterclaim, as in this case, priority remains at
issue. As to the second, like Applicant, Opposer improperly seeks to reserve the right to
pursue future affirmative defenses.
Opposition No. 91236453
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C.F.R. § 2.122(b)(1), and the following evidence, comprising more than 5,000 pages of
testimony and documents, made of record by the parties during their respective
testimony periods:
A. Opposer’s Trial Evidence
 Notice of Reliance on Opposer’s Registrations including copies of the
registration certificates and printouts from the USPTO’s TESS
database showing the current status and title of the registrations.8
 Notices of Reliance on the discovery depositions of Applicant’s
30(b)(6)-designated witnesses: Melissa Pitsoulakis, Applicant’s
Director of Brand and Patient Experience;9 Crystal Fouchard,
Applicant’s Senior Director of Brand Marketing;10 and Joel Wright,
CEO of Walgreens Specialty Pharmacy Holdings LLC (d/b/a
AllianceRx Walgreens Prime).11
 Notice of Reliance on Applicant’s objections and responses to
Opposer’s first set of interrogatories,12 and first requests for
admission.13
 Notice of Reliance on Internet articles, pages from Opposer’s and
Applicant’s websites, and Google search results.14
 Testimony depositions of John Rodgers, Executive Vice President
and Chief Operating Officer of Independent Health Association,

8 35 TTABVUE 5-11. This was unnecessary with respect to the ’886 Registration, which was
already of record under Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b) because of Applicant’s
counterclaim. Robinson v. Hot Grabba Leaf, LLC, 2019 USPQ2d 149089, *2 n.16.
9 “Pitsoulakas Disc. Dep.”: 36-37 TTABVUE (confidential); 38 TTABVUE (public).
10 “Fouchard Disc. Dep.”: 39 TTABVUE (confidential); 40 TTABVUE (public).
11 “Wright Disc. Dep.”: 41 TTABVUE (confidential); 42 TTABVUE (public). AllianceRx
Walgreens Prime is the d/b/a of Walgreens Specialty Pharmacy Holdings, LLC, a joint
venture owned by Applicant and Prime Therapeutics LLC (“Prime”). 90 TTABVUE 74, 109.
12 43 TTABVUE (confidential); 44 TTABVUE (public).
13 45 TTABVUE.
14 46 TTABUVE.
Opposition No. 91236453
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Inc.;15 and Amy Nash, President of Opposer.16
B. Applicant’s Trial Evidence
 Notice of Reliance on Opposer’s responses to Applicant’s first and
second set of interrogatories, and first requests for admission.17
 Notice of Reliance on other registrations owned by Applicant,
including copies of the registration certificates and TESS database
status printouts.18
 Notices of Reliance on third-party registrations, including copies of
registration certificates, TESS database status printouts, and
Internet evidence of marks containing the terms RELIANCE,
RELIANT, ALLIANCE and/or RX, for healthcare-related goods
and/or services.19
 Notice of Reliance on Internet evidence relating to use of Applicant’s
WALGREENS mark.20
 Notice of Reliance on Walgreens Boots Alliance, Inc.’s Form 10-K
filings for fiscal years 2017 and 2019.21
 Notices of Reliance on third-party registrations for marks including
the term PRIME and owned by Prime, including copies of
registration certificates, TESS database status printouts, and
Internet evidence related thereto;22 and on various Internet
articles,23 and dictionary definitions of the terms RELIANCE,
ALLIANCE, and RX.24
 Notices of Reliance on portions of the discovery depositions of Amy

15 “Rodgers Test. Dep.”: 82 TTABVUE (confidential); 83 TTABVUE (public).
16 “Nash Test. Dep”: 84 TTABVUE (confidential); 85 TTABVUE (public).
17 49 TTABVUE (confidential); 50 TTABVUE (public).
18 51 TTABVUE.
19 52-53 TTABVUE.
20 54 TTABVUE.
21 55 TTABVUE.
22 56 TTABVUE.
23 57 TTABVUE.
24 58 TTABVUE.
Opposition No. 91236453
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Nash25 and John Rodgers.26
 Testimony depositions of Applicant’s witnesses: Laura Terry, Vice
President of Marketing at Prime Therapeutics, LLC;27 Joel Wright;28
Melissa Pisoulakis;29 and Crystal Fouchard.30
C. Opposer’s Rebuttal Evidence
1. Rebuttal testimony declaration of John Rodgers.31
1. Notice of Reliance on pages from Opposer’s website.32
2. Notices of Reliance on USPTO TESS database search results,
copies of third-party registrations, and Internet printouts
regarding the marks in those registrations;33 printouts from
Applicant’s Facebook page, and the Better Business Bureau;34
and a news article.35
D. Applicant’s Rebuttal Evidence on Counterclaim
1. Cross-examination of John Rodgers.36

25 59 TTABVUE (confidential); 60 TTABVUE (public).
26 61 TTABVUE (confidential); 62 TTABVUE (public).
27 “Terry Test. Dep.”: 63 TTABVUE (confidential); 64 TTABVUE (public).
28 “Wright Test. Dep.”: 89 TTABVUE (confidential); 90 TTABVUE (public).
29 “Pitsoulakis Test. Dep.”: 91 TTABVUE (confidential); 92 TTABVUE (public).
30 “Fouchard Test. Dep.”: 93 TTABVUE (confidential); 94 TTABVUE (public).
31 “Rodgers Rebuttal Test. Decl.”: 65 TTABVUE (confidential); 66 TTABVUE (public)
(“Rodgers Rebuttal Test. Decl.”).
32 68 TTABVUE.
33 69 TTABVUE.
34 70 TTABVUE.
35 71 TTABVUE.
36 “Rodgers Cross Test.”: 95 TTABVUE (confidential); 96 TTABVUE (public). The parties filed
a stipulation, 47 TTABVUE, which the Board approved, 48 TTABVUE, regarding the
testimony of Mr. Rodgers to avoid Applicant’s need to re-depose him on the issues raised in
the counterclaim. Opposer agreed to submit the entire transcript of the deposition into the
record, including Applicant’s cross-examination of the witness, which serves as Applicant’s
rebuttal evidence on the counterclaim.
Opposition No. 91236453
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II. Preliminary Issues
A. Opposer’s Over-designation of Evidence as Confidential
The parties filed a Stipulated Protective Order in place of the Board’s Standard
Protective Order, which the Board approved.37 The parties were advised that only
confidential or trade secret information should be filed pursuant to a stipulated
protective agreement, and that such an agreement may not be used as a means of
circumventing Trademark Rules 2.27(d) and (e), which provide that the file of a
published application or issued registration, and all proceeding filings relating
thereto, should otherwise be available for public inspection.38
Having carefully reviewed the evidence, it is clear to us that much of what Opposer
designated as “confidential,” is not in fact truly confidential. By way of example,
Opposer designated as confidential significant portions of the testimony of its main
witness, John Rodgers, including his testimony regarding Opposer’s ultimate parent
company Independent Health Association, Inc.’s (“IHA”) decision to assign the intent-
to-use application for the mark RELIANCE RX to Opposer, which matured into the
’886 Registration that is the subject of Applicant’s counterclaim; whether IHA ever
used the mark itself; and the manner of its control and management of Opposer’s
activities.39
Board proceedings are designed to be public, and the improper designation of
material as confidential thwarts that objective. Respondent’s over-designation of

37 18 TTABVUE (Stipulated Protective Order); 20 TTABVUE (Order approving stipulation).
38 20 TTABVUE.
39 82-83 TTABVUE 177-180, 212-218 (Rodgers Test. Dep.) (Public/Confidential).
Opposition No. 91236453
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testimony and evidence as confidential and commercially sensitive leaves us
uncertain as to what is intended to be truly confidential or a trade secret. It is more
difficult to make findings of fact, apply the facts to the law, and write decisions that
include specific citations to the evidence of record, when the facts may not be
discussed. The Board needs to be able to discuss the evidence of record, unless there
is an overriding need for confidentiality, so that the parties and reviewing court will
know the basis of the Board’s decision.
Therefore, in this opinion, we treat as confidential only evidence that is clearly
confidential or commercially sensitive. Trademark Rule 2.116(g), 37 C.F.R. § 2.116(g)
(“The Board may treat as not confidential that material which cannot reasonably be
considered confidential, notwithstanding a designation as such by a party.”); see also
Noble House Home Furnishings, LLC v. Floorco Enters., LLC, 118 USPQ2d 1413,
1416 n.21 (TTAB 2016) (“[W]e will treat only testimony and evidence that is truly
confidential or commercially sensitive as such.”); Edwards Lifesciences Corp. v.
VigiLanz Corp., 94 USPQ2d 1399, 1402-03 (TTAB 2010) (“Because of the over
designation of testimony and evidence by the parties, it is not clear to us what is
intended to be truly ‘Confidential’ and ‘Confidential Attorney’s Eyes Only.’ Therefore,
in rendering our decision, we will not be bound by the parties’ designation.”).
B. Objections to Evidence
Each party filed objections to the other’s evidence.40 We discuss Applicant’s

40 88 TTABVUE (Opposer’s Evidentiary Objections); 99-100 TTABVUE (Applicant’s
Evidentiary Objections).
Opposition No. 91236453
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objections to Opposer’s evidence of alleged actual confusion in great detail later in
this opinion. The parties’ remaining objections are largely directed to the weight,
rather than the admissibility, of the evidence. Because an opposition proceeding is
akin to a bench trial, the Board is capable of assessing the proper evidentiary weight
to be accorded the testimony and evidence, taking into account the imperfections
surrounding the admissibility of such testimony and evidence.
We will keep the objections in mind when considering the evidence. As necessary
and appropriate, we will point out any limitations in the evidence or otherwise note
that we cannot rely on the evidence in the manner sought. See Luxco, Inc. v. Consejo
Regulador del Tequila, A.C., 121 USPQ2d 1477, 1479 (TTAB 2017), appeal dismissed
per stipulation, No. 17-00345 (E.D. Va. August 24, 2017); U.S. Playing Card Co. v.
Harbro, LLC, 81 USPQ2d 1537, 1540 (TTAB 2006). See also Poly-America, L.P. v. Ill.
Tool Works Inc., 124 USPQ2d 1508, 1510 (TTAB 2017) (where the objections refer to
probative value rather than admissibility and the evidence that is subject to the
objections is not outcome determinative, “we choose not to make specific rulings on
each and every objection”).
III. Entitlement to a Statutory Cause of Action
Entitlement to invoke a statutory cause of action must be proven in every inter
partes case. See Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965
F.3d 1370, 2020 USPQ2d 10837, at *3 (Fed. Cir. 2020) (citing Lexmark Int’l, Inc. v.
Static Control Components, Inc., 572 U.S. 118, 109 USPQ2d 2061, 2067 n.4 (2014)).
In an opposition proceeding, a party in the position of opposer may oppose the
Opposition No. 91236453
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registration of an applicant’s mark where such opposition is within the zone of
interests protected by the statute, 15 U.S.C. § 1063, and the opposer’s reasonable
belief in damage is proximately caused by registration of the applicant’s mark.
Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at *6-7 (Fed. Cir.
2020), cert. denied, __ S. Ct. __ (2021).
Opposer’s entitlement to oppose registration of Applicant’s mark is established
through its pleaded registrations, which are properly of record, valid, subsisting,
owned by Opposer, and form the basis for a likelihood of confusion claim under 15
U.S.C. § 1052(d) that is not wholly without merit. Lipton Indus., Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). See also Coach Servs.,
Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727-28 (Fed. Cir.
2012). Opposer’s entitlement is further supported by evidence showing it to be a
competitor of Applicant, including its testimony that it uses its pleaded marks to
dispense specialty pharmaceuticals (as identified in Opposer’s pleaded registrations),
and Applicant seeks to register its mark for those same services. See, e.g., Books on
Tape, Inc. v. Booktape Corp., 836 F.2d 519, 5 USPQ2d 1301, 1302 (Fed. Cir. 1987)
(finding competitor has standing because it has an interest in the outcome beyond
that of the general public); Peterson v. Awshucks SC, LLC, 2020 USPQ2d 11526, at
*6 (TTAB 2020) (entitlement to a statutory cause of action found where petitioner
and respondent are competitors); Grote Indus., Inc. v. Truck-Lite Co., 126 USPQ2d
1197, 1201-02 (TTAB 2018) (standing found where plaintiff and defendant are
competitors).
Opposition No. 91236453
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Applicant’s entitlement to a statutory cause of action to assert a counterclaim
against Opposer’s pleaded ’886 Registration is inherent in its position as defendant
to the complaint. See Bankamerica Corp. v. Invest Am., 5 USPQ2d 1076, 1078 (TTAB
1987) (defendant seeking to cancel pleaded registration “cannot be characterized as
a mere intermeddler, inasmuch as the registration it seeks to cancel has been
asserted against it.”); M. Aron Corp. v. Remington Prods., Inc., 222 USPQ 93, 95
(TTAB 1984) (counterclaimant clearly has personal stake in the controversy).
IV. Applicant’s Counterclaim
We first consider Applicant’s counterclaim to cancel Opposer’s pleaded ’886
Registration to determine whether Opposer may rely on that registration in support
of its opposition to registration of Applicant’s mark.
A. Morehouse Defense Unavailable
As noted above, Opposer raised a prior registration defense to Applicant’s
counterclaim. This affirmative defense, also known as a Morehouse defense, was
articulated by the Court of Customs and Patent Appeals in Morehouse Mfg. Corp. v.
J. Strickland and Co., 407 F.2d 881, 56 C.C.P.A. 946, 160 USPQ 715 (CCPA 1969),
which held that ownership of a subsisting registration is a proper defense to a
cancellation proceeding when the registration is for the same or substantially
identical mark and for the same or substantially identical goods or services. See also
Mag Instrument, Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1711 (TTAB 2010).41

41 The rationale behind the Morehouse defense is that a party cannot suffer legal damage
from an opponent’s additional registration, over and above any damage it may suffer from
the party’s subsisting, unchallenged registration. Morehouse, 160 USPQ at 717; Missouri
Opposition No. 91236453
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The determination of whether the marks are the same or substantially identical
is based on a comparison of the marks in their entireties. “No part of the mark can be
ignored in comparing the marks as a whole.” O-M Bread Inc. v. U.S. Olympic Comm.,
65 F.3d 933, 36 USPQ2d 1041, 1045 (Fed. Cir. 1995) (internal citation omitted).
We find that the Morehouse defense is unavailable to Opposer in this proceeding
because the mark in the ’300 Registration is not
the same as, or substantially identical to, the mark RELIANCE RX in the ‘886
Registration. See Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1884
n.6 (TTAB 2006) (Morehouse defense does not apply where marks in the two
registrations being compared are not the same).
In addition to the shared terms RELIANCE and RX, the mark in the ’300
Registration also includes a vertical line separating those terms; a significant flower
design, ; and the stylized wording “SPECIALTY PHARMACY SERVICES
YOU CAN RELY ON.” The marks are clearly not the same or substantially identical,
and impart different commercial impressions. Hence, the Morehouse defense is
inapplicable. See, e.g., Citigroup Inc. v. Capital City Bank Group Inc., 94 USPQ2d
1645, 1652 (TTAB 2010), aff’d, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011)
(rejecting applicant’s contention that the mark in its prior

Silver Pages Directory Publishing Corp. Inc. v. Southwestern Bell Media, Inc., 6 USPQ2d
1028, 1030 (TTAB 1988).
Opposition No. 91236453
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registrations was the same or substantially identical to the standard character mark
CAPITAL CITY BANK in the application); O-M Bread Inc. 36 USPQ2d at 1045
(finding OLYMPIC and OLYMPIC KIDS are neither the same nor legally equivalent).
Opposer’s reliance on S&L Acquisition Co. v. Helene Arpels, Inc., 9 USPQ2d 1221
(TTAB 1987) and Sunbeam Corp. v. American Safety Razor Co., 207 USPQ 799 (TTAB
1980), in support of its argument that the marks in these registrations “are, in fact,
substantially the same marks,”42 is not persuasive. As Applicant points out,43 the
comparison in S&L Acquisition was between marks comprised of identical wording:
one in standard characters, the other stylized. No other elements were present in
those marks, thus distinguishing the facts in that case from those present here.
The facts in Sunbeam Corp. are also different from those now before us. In
addition to likelihood of confusion, the opposer in that case alleged that the
applicant’s mark was merely descriptive of safety razors. Sunbeam Corp.,
207 USPQ at 800-801. The Board found that while “the term ‘LADY’, per se,
undoubtedly is descriptive of applicant’s razors,” the addition of “the article ‘THE’ [in
the mark], though normally insignificant,” and a “fancy, eye-catching display”
comprised by the mark’s stylized design, was sufficient to overcome a charge of
descriptiveness. Id. at 804-805. In view of this finding, and turning to the opposer’s
likelihood of confusion claim, the Board further found that the applicant’s mark and

42 101 TTABVUE 11 (Opposer’s Combined Brief in Opposition to Counterclaim and Reply
Brief).
43 105 TTABVUE 8 (Applicant’s Reply Brief on Counterclaim).
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its closely similar design mark (“DOUBLE II” disclaimed) in its
prior registration had, “for all practical purposes, the same general impression.” Id.
at 805-806. In contradistinction to the facts in that case, the additional elements
including a flower design and the phrase “SPECIALTY PHARMACY
SERVICES YOU CAN RELY ON” in the ’300 Registration results in a mark that
imparts a different overall commercial impression than that of RELIANCE RX in the
’886 Registration.
B. Assignment of an Intent-to-Use Application
We turn now to the specifics of Applicant’s counterclaim, which asserts that the
’886 Registration should be cancelled because the underlying intent-to-use
application for that registration, the ’516 Application, was improperly assigned
during prosecution, thus rendering the application and resulting registration void.
Section 10(a)(1) of the Lanham Act, 15 U.S.C. § 1060(a)(1), which governs the
assignment of registered marks and those in pending applications for registration,
provides that:
A registered mark or a mark for which an application to register has
been filed shall be assignable with the good will of the business in which
the mark is used, or with that part of the good will of the business
connected with the use of and symbolized by the mark. Notwithstanding
the preceding sentence, no application to register a mark under section
1051(b) [based on an intent-to-use] shall be assignable prior to the filing
of an amendment [alleging use] under section 1051(c) of this title to
bring the application into conformity with section 1051(a) of this title or
the filing of the verified statement of use under section 1051(d) of this
title, except for an assignment to a successor to the business of the
Opposition No. 91236453
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applicant, or portion thereof, to which the mark pertains, if that
business is ongoing and existing.

In addition, in any assignment authorized under this section, “it shall not be
necessary to include the good will of the business connected with the use of and
symbolized by any other mark used in the business or by the name or style under
which the business is conducted.” Trademark Act § 10(a)(2), 15 U.S.C. § 1060(a)(2).
Thus, an intent-to-use application is not freely assignable; it may be assigned in
only two circumstances: (1) after an applicant has filed an allegation or statement of
use;44 or (2) prior to the filing of an allegation of use, if it is assigned “to a successor
to the business of the applicant, or portion thereof, to which the mark pertains, if that
business is ongoing and existing.” Id.
“The purpose of this ... limitation on assignment of an application is to prohibit
‘trafficking’ in marks: the buying and selling of ‘inchoate’ marks which as yet have no
real existence.” J. Thomas McCarthy, 3 MCCARTHY ON TRADEMARKS AND UNFAIR
COMPETITION § 18:13 (4th ed. 2008), citing Senate Judiciary Committee Report on
S. 1883, S. Rep. No. 100-515, 100th Cong. 2d Sess. 25 (1988) reprinted in United
States Trademark Association, The Trademark Law Revision Act of 1988 117 (1989).
C. Relevant Background of Opposer and the Assignment
The following background information, not in dispute, is relevant to an
understanding of the arguments presented by Opposer and Applicant.

44 An applicant asserting an intent-to-use filing basis must demonstrate use of a mark in
commerce before a registration may be granted. The demonstration of use is referred to as
an “amendment to allege use” if filed prior to publication, 15 U.S.C. § 1051(c), or a “statement
of use” when filed after a notice of allowance is issued, 15 U.S.C. § 1051(d).
Opposition No. 91236453
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Incorporated in 1977, Independent Health Association, Inc. (“IHA”) operates as a
“not-for-profit health plan … offering health care products and benefits namely,
health maintenance organization (HMO), point-of-service (POS), preferred provider
organization (PPO), and exclusive provider organization (EPO) products, Medicare
and Medicaid plans, traditional indemnity insurance, individual and small group
Exchange products, consumer-directed plans and health savings accounts, and
coverage for self-funded employers.”45
IHA is the parent company of Independent Health Corporation (“IHC”), which was
established in 1984 as a holding company and is solely owned by IHA.46 “IHC, which
does not have any employees, is the parent company for subsidiaries created by IHA,
which, in turn, offer their services to both subscribers and customers of IHA, as well
as to other health care benefit plans.”47 One of those subsidiaries is Opposer.48
IHA itself does not provide specialty pharmacy services and “has never dispensed
specialty pharmacy services.”49 Prior to the formation of Opposer, IHA contracted
with outside vendors to provide specialty pharmaceuticals to its members.”50 In early
2010, following internal discussions and “brainstorming” at IHA during the previous
year, a business plan (“summary of the business case”) was presented to IHA’s board

45 66 TTABVUE 3 (Rodgers Rebuttal Test. Decl., ¶ 6).
46 Id. (¶ 7). IHA refers to IHC as the parent company of Opposer, and itself as the
“grandparent” of Opposer. 83 TTABVUE 28-29 (Rodgers Test. Dep.) (Public).
47 66 TTABVUE 3-4 (Rodgers Rebuttal Test. Decl., ¶ 7).
48 Id.
49 82 TTABVUE 213 (Rodgers Test. Dep.) (Confidential).
50 Id.
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regarding the opportunity to create a “Specialty Pharmacy division” that would
dispense specialty pharmaceuticals directly.51 “The decision to create [what would
become Opposer] as a provider of specialty pharmaceutical products was made based
on the high cost of services and the lower level of satisfaction which IHA was
obtaining from the specialty pharmaceutical companies with whom IHA had
previously contracted.”52
Opposer was created in March 2010 to fill that role, not as a “division” of IHA in
the sense that term is typically used, but as a separate entity, an LLC, whose original
sole member was IHC, IHA’s wholly owned subsidiary.53 IHA developed the business
that would become Opposer “throughout 2010,”54 which included purchasing
equipment and software, signing a facilities lease,55 and adopting the mark
RELIANCE RX that would be used by the new business.56 IHA and its direct
subsidiary, IHC, advanced the costs of the drugs and the equity related to the
equipment and facilities that would be used by Opposer.57
In June and July of 2010, IHC, Opposer, and a third-party entity (“Manager”)
signed operating and management services agreements providing for the

51 Id. at 25-27, 331-332 (Exhibit O-4).
52 66 TTABVUE 5 (Rodgers Rebuttal Test. Decl., ¶ 12).
53 83 TTABVUE 19-21 (Rodgers Test. Dep.) (Public); 82 TTABVUE 24, 87, 203 (Rodgers Test.
Dep.) (Confidential).
54 83 TTABVUE 20 (Rodgers Test. Dep.) (Public).
55 82 TTABVUE 29 (Rodgers Test. Dep.) (Confidential).
56 83 TTABVUE 161-163 (Rodgers Test. Dep.) (Public).
57 82 TTABVUE 38 (Rodgers Test. Dep.) (Confidential).
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management of, and the rendering of administrative services to, Opposer by the
Manager.58 The management services agreement set forth specific performance
standards to be met by Opposer relating to the quality of services it provided,
including standards relating to member satisfaction such as accuracy in dispensing
prescriptions, accuracy of shipping, and time of delivery.59 During its tenure, the
Manager reported directly to John Rodgers, who is a licensed pharmacist, the
Executive Vice President and Chief Operating Officer of IHA, and the member of
IHC’s Board that was responsible for the oversight of Opposer.60
On June 14, 2010, IHA filed the ’516 Application to register the mark RELIANCE
RX for specialty pharmacy services, including the dispensing of special purpose
pharmaceuticals, based on its allegation of an intent to use the mark in connection
with such services. Opposer began its operations, that is, the “dispensing of
prescription drugs,” in September 2010.61
During prosecution of the ’516 Application, but prior to publication and allowance
of the mark, IHA made a decision to transfer ownership of the mark and the ’516
Application to Opposer.62 IHA executed an assignment to that effect on April 12, 2012,
which states in relevant part that:
[IHA] has adopted, used and is using the service mark RELIANCE RX
… in commerce in the United States, which is the subject of [the ’516

58 83 TTABVUE 111-112 (Rodgers Test. Dep.) (Public); Id. at 506-619 (Exhibits 24-26). The
identity of the Manager is considered confidential by Opposer, so we refer to it generally here.
59 Id. at 122, 588-589 (Exhibit 26).
60 82-83 TTABVUE 11, 118-124, 216 (Rodgers Test. Dep.) (Public/Confidential).
61 Id. at 19-21.
62 82 TTABVUE 177-178 (Rodgers Test. Dep.) (Confidential).
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Application] and … for good and valuable consideration … does hereby
assign unto the said [Opposer] all right, title and interest in and to said
service mark, together with the good will of the business symbolized by
said service mark together with said federal service mark application
for said service mark.63

The assignment was recorded with the USPTO’s Assignment Branch on June 1,
2012,64 and the RELIANCE RX mark therefore published in the name of Opposer.65
On April 12, 2013, Opposer filed a statement of use, which was accepted and the mark
registered in the name of Opposer.66 Mr. Rodgers testified that he is not aware of any
agreements between IHA and Opposer, other than the assignment, relating to the
RELIANCE RX trademark.67
D. Arguments
Applicant asserts that “when Opposer’s grandparent, IHA, filed [the ’516
Application], IHA never intended to use the mark for the services listed therein,” and
that “IHA’s intent all along was for the separate company formed by IHC, namely,
Opposer—the eventual assignee—to use the trademark.”68 Applicant also points to
the testimony of John Rodgers, who testified that IHA does not, itself, provide
specialty pharmacy services, or any services for that matter, under the mark
RELIANCE RX, and is not aware of any licenses of the mark (“other than what we’ve
done through here”), and instead relies on its relationship with Opposer, which does

63 83 TTABVUE 361 (Rodgers Test. Dep.) (Public).
64 82 TTABVUE 893 (Rodgers Test. Dep.) (Confidential).
65 August 1, 2012 Notice of Publication.
66 June 8, 2013 Notice of Acceptance; July 16, 2013 ’886 Registration.
67 83 TTABVUE 238 (Rodgers Test. Dep.) (Public).
68 98 TTABVUE 55 (Applicant’s Brief in Opposition and in Support of Counterclaim).
Opposition No. 91236453
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provide those services under the mark.69 Applicant further asserts that “[a]fter the
assignment of the intent-to-use application for RELIANCE RX, IHA continued to do
business just as it had previously done, and no part of IHA’s ongoing and existing
business was transferred to Opposer together with the application.”70 Based on the
foregoing, Applicant argues that IHA, the original owner of the ’516 Application,
never actually adopted the mark RELIANCE RX and therefore had no goodwill to
assign.71
Applicant also points out that the assignment itself “does not establish that IHA
had goodwill in the mark or an ongoing and existing business to transfer.”72 In
particular, the assignment “did not recite that the application was being assigned
together with any of IHA’s ‘ongoing and existing business’”; “IHA did not transfer the
business of the services in the pending application or any other assets to Opposer at
the time of the Assignment”; and “[t]he Assignment is the entire agreement between
IHA and Opposer regarding the transfer of the application and it was not part of a
larger transaction.”73 Applicant concludes that “Opposer was not then, and is not now,
a successor to any or all of the business of IHA. Therefore, the assignment of the
intent-to-use application for RELIANCE RX was invalid and the resulting

69 82 TTABVUE 214-215, 220 (Rodgers Test. Dep.) (Confidential).
70 106 TTABVUE 17 (Applicant’s Reply in Support of Counterclaim).
71 98 TTABVUE 55 (Applicant’s Brief in Opposition and in Support of Counterclaim).
72 Id. at 55-56.
73 Id. at 56.
Opposition No. 91236453
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registration must be cancelled.”74
Opposer, in response, argues that at the time IHA filed the ’516 Application and
began using the mark RELIANCE RX in association with specialty pharmacy
services, “IHA was the [controlling] owner of IHC which in turn was the [controlling]
owner of Opposer. As such, as the parent company, it is presumed that IHA was
exercising control over the nature and quality of the services provided by [Opposer]
and usage of the mark by [Opposer] inured to the benefit of IHA.”75
Opposer contends that “even without this presumption, the evidence shows that
IHA was exercising control over the nature and quality of the services offered by
[Opposer].”76 Opposer points to the testimony of John Rodgers,77 who explained that
IHA was “not completely happy” with the services of its outside vendors “and wanted
to have more control over [its] own destiny with these products.”78 Opposer further
emphasizes that Mr. Rodgers is a licensed pharmacist, and that in his position as
IHA’s Executive Vice President and Chief Operating Officer, “he continued to be
responsible to oversee the quality control of [Opposer] upon its creation.”79
In reply, Applicant argues that Opposer’s “related company” arguments should be
rejected because (1) “any control that Opposer’s grandparent [IHA] may have exerted

74 Id. at 17-18.
75 102 TTABVUE 15 (Opposer’s Reply Brief and Opposition to Counterclaim).
76 Id.
77 Id.
78 82 TTABVUE 28 (Rodgers Test. Dep.) (Confidential).
79 102 TTABVUE 15 (Opposer’s Reply Brief and Opposition to Counterclaim).
Opposition No. 91236453
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over the nature and quality of Opposer’s services offered under the mark RELIANCE
RX is irrelevant to the operative legal question” as to whether IHA transferred to
Opposer all of its existing business, or that portion of its business to which the mark
pertained, together with the ’516 Application; (2) “the record lacks evidence of any
license or implied license between IHA and Opposer”; (3) “the record establishes that
it was actually Opposer’s direct parent and sole member, namely [IHC], that
controlled Opposer and had oversight of the quality of services Opposer provided—
not the grandparent and original trademark applicant IHA”; and (4), there is no
recognized ‘related company’ exception to the rule of 15 U.S.C. § 1060(a)(1).”80
E. Analysis
There is no dispute that IHA, the original applicant of the ’516 Application,81
assigned its intent-to-use application to Opposer prior to filing an allegation or
statement of use. Thus, the first exception to Trademark Act § 10’s prohibition
against the assignment of an intent-to-use application is clearly not satisfied. Nor is
it disputed that Opposer is not the successor to IHA’s overall business, since IHA is
still operating its business82 and there is no evidence that Opposer took over the
responsibility of providing any of the services that IHA had traditionally provided
prior to the creation of Opposer. What is disputed is Opposer’s claim that it is a
successor to the portion of IHA’s business to which the mark pertains.
Perhaps the most useful way to approach the issue is to begin by discussing

80 106 TTABVUE 12 (Applicant’s Reply in Support of Counterclaim).
81 83 TTABVUE 15-16 (Rodgers Test. Dep.) (Public).
82 82 TTABVUE 17; 82 TTABVUE 17, 310 (Confidential).
Opposition No. 91236453
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certain arguments that we have not found to be particularly helpful, the first being
Applicant’s contention that IHA never intended to use the mark itself, but instead
intended “all along” for Opposer to use the RELIANCE RX mark.83 This fact, which
Opposer does not deny, sheds no light on the central question of whether IHA
transferred to Opposer the portion of the its business to which the RELIANCE RX
mark pertained, since Section 5 of the Trademark Act clearly permits applicants to
rely on the use of a mark by related companies. “Where … a mark sought to be
registered is or may be used legitimately by related companies, such use shall inure
to the benefit of the … 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.” Trademark Act § 5, 15 U.S.C. § 1055.
Second, the fact that the assignment does not establish that IHA had goodwill in
the mark RELIANCE RX, or an ongoing and existing business to transfer, is not
determinative. Indeed, Section 10 makes clear that “[i]n any assignment authorized
by this section, it shall not be necessary to include the good will of the business
connected with the use of and symbolized by any other mark used in the business or
by the name or style under which the business is conducted.” Hence, there is no
requirement that an assignment must recite language to that effect.
The questions before us boil down to the following: (1) Did IHA engage in a
business to which the mark RELIANCE RX pertained prior to its assignment to
Opposer? (2) If so, is Opposer the successor to that portion of IHA’s business to which

83 98 TTABVUE 55 (Applicant’s Brief in Opposition and in Support of Counterclaim).
Opposition No. 91236453
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the RELIANCE RX mark pertained?
1. Did IHA Engage in a Business to which the Mark RELIANCE
RX Pertained Prior to Assignment of the Mark to Opposer?
As noted above, Trademark Act § 5, 15 U.S.C. § 1055, provides that use of a mark
by a related company “shall inure to the benefit of the … applicant for registration….”
Trademark Act § 45, 15 U.S.C. § 1127, in turn, defines a “related company” as “any
person whose use of a mark is controlled by the owner of the mark with respect to the
nature and quality of the goods or services on or in connection with which the mark
is used.”
Opposer argues that its use of the mark RELIANCE RX, prior to the assignment,
inured to the benefit of IHA. This claim is by no means a novel one. As Opposer notes,
quoting Noble House Home Furnishings, LLC v. Floorco Enters., LLC, 118 USPQ2d
1413, 1421 (TTAB 2016),84
In most situations, the inherent nature of the parent’s overall control
over the affairs of a subsidiary will be sufficient to presume that the
parent is adequately exercising control over the nature and quality of
goods and services sold by the subsidiary under a mark owned by the
parent, without the need for a license or other agreement. If there is any
doubt on that score in a particular situation, it can be made clear by a
proper trademark license agreement between parent and subsidiaries.
Justice Brennan observed that “the parent corporation--not the
subsidiary whose every decision it controls--better fits the bill as the true
owner of any [trademark] property that the subsidiary nominally
possesses.” K Mart Corp. v. Cartier, Inc., 486 U.S. 281, 108 S. Ct. 1811,
100 L. Ed. 2d 313, 6 USPQ2d 1897, 1905 (1988) (concurring in part and
dissenting in part).

Notwithstanding any presumption, there is little doubt on this record that at the

84 102 TTABVUE 15 (Opposer’s Reply Brief and Opposition to Counterclaim).
Opposition No. 91236453
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time Opposer began using the mark RELIANCE RX in September 2010 to dispense
specialty pharmaceuticals, the use of that mark was controlled by IHA with respect
to the nature and quality of the services provided. IHA had already created and set
up the business that would become Opposer in March 2010, including all of the
activities that entailed, under its wholly-owned direct subsidiary, IHC, which it fully
controlled.85 As noted earlier, IHC, the direct parent of the subsidiaries created by
IHA, has no employees of its own.86
Thereafter, in June 2010 and prior to Opposer’s first alleged use of the mark, a
continuing administrative services agreement was signed by IHC, Opposer, and the
Manager that would be responsible for the management of Opposer.87 The Manager
reported directly to John Rodgers, who was not only the Executive Vice President and
Chief Operating Officer of IHA and the member of IHC’s Board responsible for
oversight of Opposer, but also the person who signed the agreement on behalf of
Opposer.88
Given the factual record in this case, Applicant’s contention that “it was actually
Opposer’s direct parent and sole member, namely [IHC], that controlled Opposer and
had oversight of the quality of services Opposer provided—not the grandparent and
original trademark applicant IHA”89—is unpersuasive. IHA was clearly in the

85 83 TTABVUE 20, 133 (Rodgers Test. Dep.) (Public); 82 TTABVUE 29 (Rodgers Test. Dep.)
(Confidential).
86 66 TTABVUE 3-4 (Rodgers Rebuttal Test. Decl., ¶ 7).
87 83 TTABVUE 118-120 (Rodgers Test. Dep.) (Public).
88 Id. at 118-120, 123-124, 202-205, 218.
89 106 TTABVUE 12 (Applicant’s Reply in Support of Counterclaim).
Opposition No. 91236453
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driver’s seat regarding the RELIANCE RX mark and the quality of services provided
thereunder by Opposer; a license between these related companies is not necessary
to establish this fact. There is thus no question that IHA would have been able to
claim Opposer’s use as its own had there been no assignment, since Opposer was a
“related company” that it fully controlled.
As the ultimate parent and controlling company of Opposer, IHA was able to claim
Opposer’s use of the mark RELIANCE RX for specialty pharmaceutical dispensary
services as its own. It therefore had a business to which the mark pertained.
2. Is Opposer the Successor to the Portion of IHA’s Business to
Which the Mark RELIANCE RX Pertained?
There was no direct transfer of any business from IHA to Opposer. In this regard,
Applicant correctly notes that “IHA did not transfer the business of the services in
the pending application or any other assets to Opposer at the time of the Assignment”
and “[t]he Assignment is the entire agreement between IHA and Opposer regarding
the transfer of the application and it was not part of a larger transaction.”90 These
facts, while true, are not determinative, since Section 10 of the Trademark Act
imposes no requirement that there be a transfer of business or assets, much less a
transfer of business or assets at the time of the assignment of the mark; it requires
only that the assignee of the mark and any goodwill associated therewith be the
“successor” to the business or portion of the business to which the mark pertains.
What, then, is the true meaning of the term “successor to applicant’s business”

90 98 TTABVUE 56 (Applicant’s Brief in Opposition and in Support of Counterclaim).
Opposition No. 91236453
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referenced in the Act? In its ordinary sense, a “successor” would seem to refer to the
person or company that takes over the business of another through an agreement
between the current owner and its successor. However, that sense of the term cannot
account for the facts at issue in this case, which concern the establishment of a new
entity, Opposer, by IHA for the very purpose of rendering the services that would be
ultimately provided by Opposer.
Notwithstanding IHA’s position as the ultimate parent company or “grandparent”
of Opposer, and the benefit of use that accrued to IHA as a related company that
owned the mark, Opposer already owned all of the assets of the company, save for the
intercompany services provided by IHA through its direct subsidiary, IHC, through
the administrative services agreement between the companies. What else, then,
needed to be transferred to Opposer by IHA—beyond the mark and goodwill that IHA
had acquired as the mark’s original owner—that Opposer did not already have? In
our judgement, that was all that was left to be transferred, and that is what was
transferred. In such circumstances, at least, it seems to us impossible to say that
Opposer is not the successor to that portion of the IHA’s business to which the mark
pertained.
Applicant cites to the Board’s decision in Central Garden & Pet Co. v. Doskocil
Mfg. Co., Inc., 108 USPQ2d 1134, 1142 (TTAB 2013), for the proposition that
Trademark Act § 10(a)(1) “plainly requires more than that the assignee be the
recipient of the goodwill associated with the mark or it would be superfluous.” Id. at
Opposition No. 91236453
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1147-48.91 In that case, in what appears at first blush to be the reverse situation of
that which is now before us, the Board found that the assignment of an intent-to-use
application for the mark ZILLA from the applicant, All-Glass—a company wholly-
owned by its parent company Pennington Seed, which in turn was wholly-owned by
its parent company Central Garden & Pet Co. (“Central”)—to Central, the ultimate
parent of All-Glass, ran afoul of Section 10 because “Central was not then, and is not
now, the successor to any or all of All-Glass.” Id. at 1149.
The Board in Central Garden noted, as we note in the case before us now, that the
recorded assignment of the ZILLA mark comprised the entire agreement between All-
Glass and Central regarding transfer of the application; Central did not provide any
evidence that the assignment document was part of a larger transaction between the
companies; and Central did not dispute that the assignment transferred only the
ZILLA mark and application, together with any associated goodwill, from All-Glass
to Central. After analyzing all of the facts relevant to its decision, the Board stated:
We have not forgotten that Central owned all of the stock in Pennington
Seed, and that Pennington Seed owned all of the stock in All-Glass,
which in turn owned the ZILLA application. In one sense, it could be
said that Central owned the application all along. But the application
was neither filed by Central nor by Pennington, Central’s subsidiary;
the application was filed by All-Glass, which was Pennington’s
subsidiary. Central chose to structure its business using multiple and
separate corporate subsidiaries, each of which counts as a “person”
under the Trademark Act. Such a business structure may offer some
advantages, but it also comes with some strictures, and the existence of
a corporation cannot be turned on or off at will to suit the occasion. This
result is merely the flip side of the principle that a parent corporation is
not liable for the wrongs of its subsidiary absent disregard of corporate
separateness, such as an “alter ego” relationship. Central purchased and

91 Id.
Opposition No. 91236453
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maintained All-Glass as a separate corporation, and All-Glass, not
Central, filed the ZILLA application, asserting that it had a bona fide
intention to use the mark in commerce. We cannot ignore the fact that
the intent-to-use application was transferred from one entity to another
in a transaction that did not satisfy the requirements of the statute.

The facts in Central Garden are distinguishable. Apart from the fact that All-
Glass was an already existing business engaged in the manufacture of aquariums
and terrariums under the mark before it was acquired by Pennington Seed, Central’s
direct and wholly-owned subsidiary, id. at 1138, “[a]fter the assignment, All-Glass
continued to produce ZILLA-branded products as it had previously done, and no part
of All-Glass was transferred to Central.” Id. at 1149-50. Hence, it was obvious that
Central did not take over the business of All-Glass and under no scenario could
Central be considered the “successor” to All-Glass’ business to which the mark
pertained.92
We agree with Applicant that there is no related company exception to the limited
circumstances under which an intent-to-use application may be assigned, and our
finding that Opposer is the successor to IHA’s portion of the business to which the
RELIANCE RX mark pertains does not rest on that alone. It is manifest that Opposer
was created by IHA for the very purpose of dispensing specialty pharmaceuticals and
was controlled by IHA. For all intents and purposes, Opposer is a “division” of IHA’s

92 106 TTABVUE 13-14 (Applicant’s Reply in Support of Counterclaim). Applicant also cites
to the Board’s non-precedential decision in Railrunner N.A., Inc. v. N.M. Dep’t of Transp.,
Opposition No. 91172851, 2008 TTAB LEXIS 58 (TTAB 2008), based on a different record,
which we find distinguishable. Although parties are permitted to cite to any Board decision,
non-precedential decisions are not binding on the Board. See In re Luxuria s.r.o., 100 USPQ2d
1146, 1151 n.7 (TTAB 2011) (parties may cite to non-precedential decisions, but they are not
binding on the Board and because they have no precedential effect, the Board generally will
not discuss them in other decisions).
Opposition No. 91236453
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business regardless of its separate entity status. Ownership of the mark was
therefore appropriately placed either in the name of IHA, in the name of its direct
subsidiary IHC, or in the name of Opposer, an LLC of which IHC is its sole member.
Notwithstanding Justice Brennan’s observation that “the parent corporation--not the
subsidiary whose every decision it controls--better fits the bill as the true owner of
any [trademark] property that the subsidiary nominally possesses,” K Mart Corp. v.
Cartier, Inc., 6 USPQ2d at 1905, the fact remains that practical and commercial
considerations will dictate a parent company’s decision on where to place such
ownership.
3. Conclusion
In sum, we find that IHA, the original applicant, assigned the RELIANCE RX
mark and application, together with the goodwill and the business to which the mark
pertained, to Opposer, its successor to that portion of the business. The counterclaim
is therefore dismissed.93
V. Likelihood of Confusion
To prevail on the ground of likelihood of confusion under Section 2(d), Opposer
must prove priority and likelihood of confusion by a preponderance of the evidence.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.
2000).

93 Our decision rests upon the particular factual circumstances present in this case and
should not be construed to mean that the existence of a parent-subsidiary relationship
necessarily satisfies the requires of Section 10 of the Act.
Opposition No. 91236453
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A. Priority
In the case at hand, Opposer bases its claim under Section 2(d), 15 U.S.C.
§ 1052(d), both on registered marks and on rights in those marks acquired through
use at common law. An opposer may rely on a registration for its § 2(d) claim, or
establish its prior proprietary rights in a trademark through other means. Otto Roth
& Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 43 (Fed. Cir. 1981).
Opposer has established that it owns the ’886 Registration for the standard character
mark RELIANCE RX and the ’300 Registration for the composite mark
. Although priority was an issue with respect to
the ’886 Registration, in view of our dismissal of Applicant’s counterclaim to cancel
that registration, priority is no longer an issue with regard to either registration with
respect to the services identified in those registrations. King Candy, 182 USPQ at
110 (CCPA 1974).
We focus our analysis on Opposer’s standard character mark RELIANCE RX in
the ’886 Registration which, of Registrant’s two pleaded registered marks identifying
the same services, is most similar to Applicant’s standard character mark
ALLIANCERX WALGREENS PRIME. If we find a likelihood of confusion as to this
mark, we need not find it as to the composite mark, and vice versa. See In re Max
Capital Grp., 93 USPQ2d 1243, 1245 (TTAB 2010).
B. The DuPont Factors
Section 2(d) of the Trademark Act provides that a mark may be refused
registration if it “[c]onsists of or comprises a mark which so resembles a mark
Opposition No. 91236453
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registered in the Patent and Trademark Office, or a mark or trade name previously
used in the United States by another and not abandoned, as to be likely, when used
on or in connection with the goods of the applicant, to cause confusion, or to cause
mistake, or to deceive….” 15 U.S.C. § 1052(d).
To determine whether there is a likelihood of confusion between the parties’
respective marks under Section 2(d), we analyze the evidence and arguments under
the DuPont factors. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973) (“DuPont”) cited in B&B Hardware, Inc. v. Hargis Indus., Inc.,
575 U.S. 138, 113 USPQ2d 2045, 2049 (2015). We consider each relevant DuPont
factor for which there is evidence and argument. In re Guild Mortg. Co., 912 F.3d
1376, 129 USPQ2d 1160, 1161-62 (Fed. Cir. 2019). “Not all DuPont factors are
relevant in each case, and the weight afforded to each factor depends on the
circumstances. … Any single factor may control a particular case.” Stratus Networks,
Inc. v. UBTA-UBET Commc’ns Inc., 955 F.3d 994, 2020 USPQ2d 10341, *3 (Fed. Cir.
2020).
“In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods and services.”
In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945 (Fed. Cir. 2004), cited
in Ricardo Media v. Inventive Software, 2019 USPQ2d 311355 at *5 (TTAB 2019).
1. The Strength of Opposer’s Mark
“In determining strength of a mark, we consider both inherent [or conceptual]
strength, based on the nature of the mark itself, and commercial [or marketplace]
strength or recognition.” Bell’s Brewery, Inc. v. Innovation Brewing, 125 USPQ2d
Opposition No. 91236453
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1340, 1345 (TTAB 2017) (citing Coach/Braunsdorf Affinity, Inc. v. 12 Interactive,
LLC, 110 USPQ2d 1458, 1476 (TTAB 2014)); see also In re Chippendales USA Inc.,
622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is
measured both by its conceptual strength (distinctiveness) and its marketplace
strength (secondary meaning).”).
The sixth DuPont factor considers “[t]he number and nature of similar marks in
use on similar goods [or services],” and “addresses marks similar to an opposer’s
registered mark, to demonstrate the strength or weakness of that mark.” Stoncor
Grp. V. Specialty Coatings, Inc., 759 F.3d 1327, 111 USPQ2d 1649, 1652 (Fed. Cir.
2014). “The weaker [a registrant’s] mark, the closer an applicant’s mark can come
without causing a likelihood of confusion and thereby invading what amounts to its
comparatively narrower range of protection.” Juice Generation, Inc. v. GS Enters.
LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015).
Applicant argues that Opposer’s mark RELIANCE RX “is inherently weak
because of the meaning the mark has in relation to Opposer’s services. The word
‘reliance’ connotes an ability to deliver what patients want from their pharmacies,
which is to be reliable, and therefore it is highly suggestive and laudatory” and
entitled to a narrow scope of protection.”94 In addition, Applicant made of record
copies of 15 use-based third-party registrations, as well as corresponding Internet use
evidence, for marks that contain the words “RELIANCE” or “RELIANT” for goods or

94 98 TTABVUE 40 (Applicant’s Brief in Opposition and in Support of Counterclaim).
Opposition No. 91236453
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services that Applicant describes as being “in the medical field.”95 Applicant argues
that the Internet use evidence for marks in the referenced third-party registrations
shows that Opposer’s mark is commercially weak.96
“The Federal Circuit has held that evidence of the extensive registration and use
of a term by others can be powerful evidence of the term’s weakness.” Tao Licensing,
LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1057 (TTAB 2017) (citing Jack
Wolfskin Ausrustung Fur Draussen GmbH & Co. v. Millennium Sports, S.L.U., 797
F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, 115 USPQ2d
at 1674. “Use evidence may reflect commercial weakness, while third-party
registration evidence that does not equate to proof of third-party use may bear on
conceptual weakness if a term is commonly registered for similar goods or services.”
Id. The “controlling inquiry is the extent of third-party marks in use on ‘similar’ goods
or services.” Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315,
128 USPQ2d 1686, 1694 (Fed. Cir. 2018) (citing Century 21 Real Estate Corp. v.
Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992)).
On the other hand, third-party registrations for unrelated goods and services have
no probative value regarding the conceptual weakness of a word or term in a mark.
In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017)

95 Id. at 37; 52 TTABVUE (Third-party Registrations).
96 98 TTABVUE 42 (Applicant’s Brief in Opposition and in Support of Counterclaim).
Applicant points to various evidence in the record to support Applicant’s further contention
that Opposer’s mark “RELIANCE RX is not famous,” as a further basis to argue that the
mark is commercially weak, Id., thus invoking the fifth DuPont factor. It is settled, however,
that marks need not be famous in order to be entitled to protection. See Cunningham, 55
USPQ2d at 1847.
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(disregarding third-party registrations for goods in classes other than those at issue
where the proffering party had “neither introduced evidence, nor provided adequate
explanation to support a determination that the existence of I AM marks for goods in
other classes … support a finding that registrants’ marks are weak with respect to
the goods identified in their registrations.”); Sheller-Globe Corp. v. Scott Paper Co.,
204 USPQ 329, 336 (TTAB 1979) (“[W]e need not comment on the third-party
registrations placed in the record by applicant save to note that they pertain to
completely unrelated goods and are therefore irrelevant.”).
As Opposer notes, none of Applicant’s third-party registration or use evidence for
marks containing RELIANCE or its variant RELIANT pertain to pharmacy services,
much less the dispensing of specialty pharmaceuticals, and Applicant does not
explain or present any evidence proving their relatedness. At best, they identify
marks registered and/or used with other types of goods and services in the medical
field, e.g., doctors and hospital equipment, medical chairs and tables, medical devices
and apparatus, chemicals for disinfecting medical instruments and equipment,
health insurance underwriting, laboratory services, consulting in the field of medical
practice management, physical rehabilitation services, cost management for
healthcare benefits, maintenance of healthcare reimbursement data, home
healthcare services, repair of medical equipment, and the like.97 Accordingly, we do
not find the third-party registration or use evidence to be probative of the strength of
Opposer’s mark.

97 52 TTABVUE (Third-party Registrations).
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While none of Applicant’s third-party evidence establishes that Opposer’s mark
RELIANCE RX is inherently or commercially weak, we find that the word
RELIANCE is laudatory to the extent it suggests the quality of Opposer’s services
that consumers may rely on, and is thus conceptually somewhat weak. RX is
descriptive of Opposer’s pharmacy services. We thus find Opposer’s RELIANCE RX
mark to be laudatory and suggestive of the recited services.
However, Opposer’s RELIANCE RX mark issued on the Principal Register
without a claim of acquired distinctiveness under Trademark Act Section 2(f), 15
U.S.C. § 1052(f), and we must accord the cited registration the presumption of validity
provided for under Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b). We
accordingly presume that the mark RELIANCE RX is inherently distinctive with no
need to acquire secondary meaning. On this record, we accord the RELIANCE RX
mark a slightly narrower scope of protection than we would an inherently distinctive
mark that was not shown to be laudatory and suggestive and this slightly favors
Applicant. Nonetheless, even weak marks are entitled to protection against
confusion. See In re Max Capital Grp., 93 USPQ2d at 1246 (TTAB 2010); King Candy,
182 USPQ at 109.
2. The Marks
Under the first DuPont factor, we consider the similarity or dissimilarity of
Opposer’s and Applicant’s marks “in their entireties as to appearance, sound,
connotation and commercial impression.” Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1159 (Fed. Cir. 2014) (quoting
DuPont, 177 USPQ at 567). “Similarity in any one of these elements may be sufficient
Opposition No. 91236453
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to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d
1742, 1746 (TTAB 2018), aff’d mem., 777 Fed. Appx. 516 (Fed. Cir. 2019) (quoting In
re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)).
Applicant’s mark ALLIANCERX WALGREENS PRIME and Opposer’s mark
RELIANCE RX are notably dissimilar in overall appearance, sharing just one term
in common—the descriptive or generic term “RX” for “prescriptions”98—which has
little import on our analysis. See Swatch AG (Swatch SA) (Swatch Ltd.) v. M. Z.
Berger & Co., Inc., 108 USPQ2d 1463, 1470 (TTAB 2013) (“It is well-settled that
descriptive or generic matter may have little or no significance in likelihood of
confusion determinations, and the fact that this generic root is common to the parties’
marks does not render them similar.”); Cunningham, 55 USPQ2d at 1846 (quoting In
re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985) (the
“descriptive component of a mark may be given little weight in reaching a conclusion
on likelihood of confusion”)).
The marks also differ in sound when considered in their entireties. Opposer is
quick to point out that the second and third syllables of the first term in each mark
sound the same, pointing to the dictionary definitions made of record by Applicant:99
RELIANCE is pronounced “ri-lahy-uhns” and ALLIANCE is pronounced “uh-lahy-

98 58 TTABVUE 19 (definition from Dictionary.com, based on the Random House Unabridged
Dictionary, Random House, Inc. 2021).
99 87 TTABVUE 28 (Opposer’s Main Brief, emphasis supplied).
Opposition No. 91236453
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uhns,”100 which “sound[] almost identical.”101 However, Opposer disregards the other
distinctive terms, WALGREENS and PRIME, in Applicant’s mark. This parsing of
different and commonly known words by syllable, and ignoring of other significant
elements in Applicant’s mark, is a classic example of the improper dissection of
marks, which is “clearly an improper basis for determining whether confusion is or is
not likely to occur.” CarX Serv. Sys., Inc. v. Exxon Corp., 215 U.S.P.Q. 345, 351 (1982);
see also In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ 1687, 1688 (Fed. Cir. 1992)
(“Certainly, it is improper to dissect a mark and marks must be considered in their
entireties.”).
The marks also engender completely different connotations and commercial
impressions. RELIANCE, in Opposer’s mark, means “confident or trustful
dependence,” “confidence,” or “something or someone relied on.”102 In contrast,
ALLIANCE, in Applicant’s mark, means “the act of allying or state of being allied,”
“a merging of efforts or interests by persons, families, states, or organizations,
persons or entities so allied,” or “correspondence in basic characteristics.”103 These
are common English words, and Opposer has presented no evidence suggesting that
ordinary consumers would attribute similar meanings to these words
notwithstanding their shared syllables.
The additional terms WALGREENS and PRIME in Applicant’s mark cannot be

100 58 TTABVUE 6, 13 (definitions from Dictionary.com).
101 87 TTABVUE 28 (Opposer’s Main Brief).
102 58 TTABVUE 13 (definitions from Dictionary.com).
103 Id. at 6.
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ignored, and they further augment the distinct commercial impressions conveyed by
the marks. Applicant’s house mark WALGREENS is also likely to have a strong
impact on the relevant consumer’s overall impression of Applicant’s mark
ALLIANCERX WALGREENS PRIME. Applicant owns “almost 9,000” Walgreens
stores, which fill “just over a billion prescriptions” per year, and Applicant’s gross
marketing investment in the brand is substantial.104 The website Morning Consult
(morningconsult.com) provides a ranking, purportedly based on an analysis of more
than 400,000 survey interviews, of the “Most Loved Brands In America 2019” and
lists Walgreens as No. 20 of “The Top 25 Most Loved Brands.”105 BrandFinance
(brandirectory.com) lists Walgreens at No. 9 in its 2019 ranking of the top 50 U.S.
retailers.106 Opposer’s President, Amy Nash, acknowledged that WALGREENS is “a
well-known mark” because “people are pretty familiar with the company.”107
The term “PRIME” in Applicant’s mark also is significant, particularly to the
extent it is recognized as being associated with Prime Therapeutics, LLC, with whom
Applicant has an association. According to Laura Terry, Prime Therapeutics’ Vice
President of Marketing since 2017, Prime Therapeutics LLC and its predecessor-in-
interest (Prime Therapeutics, Inc.) have provided pharmacy benefit services under
the mark PRIME THERAPEUTICS since as early as 1998.108 Ms. Terry further

104 93 TTABVUE 39-43, 82-83 (Fouchard Test. Dep.).
105 57 TTABVUE 23-25.
106 Id. at 26-28.
107 85 TTABVUE 29. 421 (Nash Test. Dep.).
108 64 TTABVUE 5 (Terry Test. Decl., ¶¶ 12-15).
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testified that as of 2001, Prime Therapeutics “functioned as a pharmacy benefit
manager for millions of health plan subscribers,” and currently is “the fourth largest
[pharmacy benefit manager] in the U.S,” providing [pharmacy benefit services] for
approximately 28 million health plan members.”109 In 2012, Prime Therapeutics
“launched Prime Therapeutics Specialty Pharmacy LLC, an affiliated company
dedicated to dispensing specialty drugs,” and the new company advertised its services
to payers of pharmacy services, self-insured employers, and medical providers.110
In 2017, Applicant and Prime Therapeutics entered a business venture that
formed a new company, Walgreens Specialty Pharmacy Holdings LLC d/b/a
AllianceRx Walgreens Prime, to bring together Applicant’s purchasing power and
Prime Therapeutics’ ability as a pharmacy benefit manager to work with health
insurance plans.111 According to Joel Wright, the CEO of Walgreens Specialty
Pharmacy Holdings LLC, the mark ALLIANCERX WALGREENS PRIME “describes
the partnership and value prop of bringing two large players in the industry
together,” and “alliance between Walgreens and Prime.”112
Two conclusions emerge from the foregoing discussion with seeming clarity: One
is that the words RELIANCE in Opposer’s mark and ALLIANCE in Applicant’s mark
have different connotations. RELIANCE has the laudatory suggestion that
consumers of Opposer’s services can “rely” on Opposer and the services provided

109 Id. at 5, (¶¶ 15, 26).
110 Id. at 6-7 (¶¶ 19-21).
111 90 TTABVUE 20, 74 (Wright Test. Dep.).
112 Id. at 100-101.
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under Opposer’s mark, as the definition of that word suggests. Indeed, Opposer’s
composite mark, although not focused on in our analysis, has the tag line, “Specialty
Pharmacy Services You Can Rely On” which corroborates our first conclusion about
the connotation of the mark we have closely considered. In contrast, ALLIANCE
connotes a merging of efforts or interests, which Applicant’s mark itself suggests is
between Applicant (WALGREENS) and Prime Therapeutics (PRIME). The second
conclusion is that that the words WALGREENS and PRIME are essential
components of the mark that clearly add to the overall commercial impression of
Applicant’s mark.
Opposer’s arguments relating to the similarity of the marks are largely premised
on its contentions that there is little difference between the words RELIANCE and
ALLIANCE in the respective marks, that they are “almost the same,” and that either
the term ALLIANCE or ALLIANCERX is the dominant element in Applicant’s mark;
ergo, there is a likelihood of confusion.113 However, in view of our finding that there
is a significant difference, particularly in meaning, between the words RELIANCE
and ALLIANCE, Opposer’s emphasis on first-term dominance as the basis to find
likelihood of confusion is unavailing.
Moreover, while it is clear that RELIANCE is the dominant element in Opposer’s
RELIANCE RX mark, it does not follow that ALLIANCE or ALLIANCERX must also
be the dominant element in Applicant’s mark ALLIANCERX WALGREENS PRIME.
Opposer argues that we should consider Applicant’s mark in the stylized form it is

113 87 TTABVUE 26-29 (Opposer’s Main Brief).
Opposition No. 91236453
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actually used, , because that shows the ALLIANCE
portion as dominant. We must, however, consider that Applicant’s standard character
mark could be displayed in any font style, color, and size, such as in a manner where
all of the wording in Applicant’s mark is displayed in the same font style, size and
color – thus undercutting Opposer’s argument that the word ALLIANCE is visually
or otherwise dominant. See SquirtCo v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937,
939 (Fed. Cir. 1983); In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1186-87
(TTAB 2018). Put another way, because Applicant seeks registration of a standard
character mark, our consideration of Applicant’s mark is not confined to how
Applicant currently displays its mark in the marketplace.
We agree with Opposer that “[i]t is often the first part of a mark which is most
likely to be impressed upon the mind of a purchaser and remembered” when making
purchasing decisions, as quoted in Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9
USPQ2d 1895, 1897 (TTAB 1988).114 In this case, however, given the general renown
of the Walgreen’s brand, consumers may not consider the word ALLIANCE to be the
dominant part of Applicant’s mark, but rather a term used to identify expanded
services of an “alliance” between Walgreen’s and Prime. Thus, the term may be
viewed more as a suggestive term.
Opposer also cites a line of cases standing for the proposition that consumers have
a penchant for shortening marks to support its first-term dominance argument, e.g.,

114 Id. at 26-27.
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In re Abcor Development Corp., 588 F.2d 511, 200 USPQ 215, 219 (CCPA 1978) (J.
Rich, concurring) (“companies are frequently called by shortened names”). Be that as
it may, they are more likely to recognize Walgreens, and/or Prime Therapeutics, the
named entities in the mark, as the source of Applicant’s services and may remember
those terms at least as well as the ALLIANCE portion. Moreover, as discussed, even
if consumers were to consider the word ALLIANCE to be the dominant part of
Applicant’s mark, the difference in meaning between ALLIANCE and the word
RELIANCE used in Opposer’s mark is significant and distinguishes the two marks
when they are considered in their entireties.
Opposer argues that the addition of a trade name or house mark to a registered
mark, such as WALGREENS and PRIME in Applicant’s mark, does not generally
avoid confusion,115 a point with which we agree. In cases involving the addition of a
house mark to one of two otherwise confusingly similar marks, it has been held that
such does not serve to avoid likelihood of confusion. Rather, such addition may
actually be an aggravation of the likelihood of confusion as opposed to an aid in
distinguishing the marks so as to avoid source confusion. Key West Fragrance &
Cosmetic Factory, Inc. v. Mennen Co., 216 USPQ 168 (TTAB 1982) (“Where the marks
are otherwise virtually the same, the addition of a house mark … is more likely to
add to the likelihood of confusion than to aid to distinguish the marks.”). Thus, if two
marks are already confusingly similar, the addition of a house mark or trade name
will not avoid a likelihood of confusion; and it may enhance that likelihood.

115 Id. at 41.
Opposition No. 91236453
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On the other hand, as Opposer acknowledges,116 “where there are some
recognizable differences in the asserted product marks … the addition of a house
mark … to the assertedly conflicting product [or service] mark has been determined
to render the marks as a whole sufficiently distinguishable.” In re Fiesta Palms LLC,
85 USPQ2d 1360, 1364 (TTAB 2007), quoting In re Christian Dior, S.A., 225 USPQ
533, 534 (TTAB 1985). In this case, there are recognizable differences between
Opposer’s mark RELIANCE RX and Applicant’s mark ALLIANCERX WALGREENS
PRIME, including the difference in connotations of the words RELIANCE and
ALLIANCE. Because those words are not confusingly similar in the context of these
marks, the addition of the house marks WALGREENS and PRIME to Applicant’s
mark makes them even less similar.
In sum, we find that the marks RELIANCE RX and ALLIANCERX WALGREENS
PRIME are more dissimilar than similar, and this first DuPont factor weighs heavily
against a finding of likelihood of confusion.
3. The Services and Channels of Trade
The second DuPont factor concerns the “similarity or dissimilarity and nature of
the goods or services as described in an application or registration,” and the third
concerns “the similarity or dissimilarity of established, likely-to-continue trade
channels” of the parties’ services. Stone Lion, 110 USPQ2d at 1159 (quoting DuPont,
177 USPQ at 567).
For convenience, we repeat Applicant’s recited services below:

116 Id.
Opposition No. 91236453
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Retail drug store services; retail pharmacy services; retail pharmacy
services featuring specialty pharmaceuticals; retail pharmacy services
featuring specialty pharmaceuticals provided via the Internet; retail
pharmacy services featuring retrospective drug utilization review
programs; specialized retail pharmacy services for patients with
particular medical conditions; mail order services via a global computer
network featuring pharmacy products and retail pharmacy services and
medical supplies, in International Class 35;

Educational services, namely, providing courses in the fields of health
and wellness; providing medication administration and health and
wellness education services through live, printed, telephonic, and online
classes and instruction; educational services, namely, providing
lectures, seminars and individual training for patient self-care of
chronic disease states, in International Class 41; and

Healthcare and medical services, namely, infusion therapy services;
injectable therapies, ambulatory care and nursing care services; rental
of medical equipment; dispensing of specialty pharmaceuticals;
healthcare services, namely, reporting of results relating to clinical
programs, therapy management programs, and disease management
programs; interactive medical monitoring and alert services for
reminding clients of medical information, namely, medicinal dosages,
allergic sensitivity and prescription refills clinical pharmacy services,
namely, preparing and dispensing home infused medication;
prescription refill reminder services; web-based health assessment
services, namely, a series of health-related questions for response from
the user that result in a report that provides health-related information
in the form of recommended education resources and treatment
information, in International Class 44.

Applicant’s Class 35 services of “retail pharmacy services featuring specialty
pharmaceuticals” encompass and overlap with Opposer’s Class 35 services, as
highlighted below:
Specialty pharmacy services, namely, distributorship services in the
field of special purpose high-cost, infusion-based, injectable and oral
pharmaceuticals featuring the provision of pharmaceuticals
ordered by health care providers for use by health benefit plan
subscribers; administering pharmacy reimbursement programs and
services in the field of specialty pharmaceuticals for health benefit plan
subscribers (Class 35); and
Opposition No. 91236453
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Applicant’s Class 44 services of “dispensing of specialty pharmaceuticals” are
essentially the same as Opposer’s Class 44 “Specialty pharmacy services, namely,
dispensing of special purpose pharmaceuticals” and, thus, the services are legally
identical in part (emphasis added). See S.W. Mgmt., Inc. v. Ocinomled, Ltd., 115
USPQ2d 1007, 1025 (TTAB 2015) (where services are broadly identified, they are
deemed to encompass all of the services of the nature and type described); In re
Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s
broadly worded identification of ‘furniture’ necessarily encompasses Registrant’s
narrowly identified ‘residential and commercial furniture’”). Moreover, as Opposer
notes, it is sufficient for a finding of likelihood of confusion if relatedness is
established for any item encompassed by the identification of goods or services within
a particular class in the Application.117 Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp.,
648 F.2d 1335, 209 USPQ 986 (CCPA 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110
USPQ2d 1734, 1745 (TTAB 2014).
Because the services are, in part identical, we must presume that the channels of
trade and classes of purchasers for those services are also identical. In re Viterra Inc.,
671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no
evidence regarding channels of trade and classes of consumers, the Board was
entitled to rely on this legal presumption in determining likelihood of confusion); Am.
Lebanese Syrian Associated Charities Inc. v. Child Health Research Inst., 101

117 Id. at 31.
Opposition No. 91236453
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USPQ2d 1022, 1028 (TTAB 2011).
The same cannot be said with respect to Applicant’s Class 41 services, which recite
“educational services, namely, providing courses in the fields of health and wellness;
providing medication administration and health and wellness education services
through live, printed, telephonic, and online classes and instruction; educational
services, namely, providing lectures, seminars and individual training for patient
self-care of chronic disease states.” These services do not directly overlap with
Opposer’s specialty pharmaceutical services. The closest services appear to be
Applicant’s “providing medication administration … education services,” since
medication administration would seem to include specialty medication
administration. However, it is unclear how medication administration relates to
pharmaceutical dispensary services, and Opposer has provided no evidence or
explanation regarding the same, or with respect to the trade channels regarding these
services. Absent evidence or testimony that these or other services in Class 41 of the
Application are related to Opposer’s specialty pharmaceutical services, we decline to
make such a finding.
In sum we find that the second and third DuPont factors weigh in favor of finding
likelihood of confusion with respect to Applicant’s services in Classes 35 and 44, but
against such a finding with respect to Applicant’s services in Class 41.
4. Consumer Sophistication and Care
Under the fourth DuPont factor, we consider “[t]he conditions under which and
buyers to whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.”
Stone Lion, 110 USPQ2d at 1159 (Fed. Cir. 2014) (quoting DuPont, 177 USPQ at 567).
Opposition No. 91236453
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Applicant argues that “[s]pecialty pharmacy services are costly and therefore the
subject of careful purchasing.”118 For instance, Applicant cites evidence that shows
the cost of single therapies can be as high as $700,000 per year at the upper range,
and that the average monthly cost for a specialty pharmaceutical can be thousands
of dollars per month.119 Applicant concludes that “[s]pecialty pharmacy services are
provided to careful patients and sophisticated healthcare providers,” who will
exercise a higher degree of care when making their purchasing decisions.120
Opposer does not dispute that specialty pharmacy services can be costly, but
points out that it is insurance company payers that are most concerned with such
costs because “they are the entities responsible for paying the cost.” In contrast,
Opposer asserts, “patients who are contacting Opposer are likely not sophisticated
consumers, rather, they are seeking medication for severe disease states and chronic
illness. Provider staff, such as medical office nurses or technicians ordering
prescriptions are also likely not sophisticated consumers as they are ordering
medications based on a physician’s order.” Opposer argues that “the fact that
specialty pharmacy services are expensive does not automatically lead to the
conclusion that the consumers of Opposer’s and Applicant’s services are
sophisticated.”
While specialty pharmaceuticals may be provided to careful patients and

118 98 TTABVUE 43 (Applicant’s Brief in Opposition and in Support of Counterclaim).
119 85 TTABVUE 378-379 (Nash Test. Dep.); 49-50 TTABVUE 13 (Opposer’s Interrogatory
Responses).
120 98 TTABVUE 43 (Applicant’s Brief in Opposition and in Support of Counterclaim).
Opposition No. 91236453
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sophisticated healthcare providers, those consumers are not immune from source
confusion. See In re Decombe, 9 USPQ2d 1812, 1814-15 (TTAB 1988) (“[B]eing
knowledgeable and/or sophisticated in a particular field does not necessarily endow
one with knowledge and sophistication in connection with the use of trademarks.”).
As Opposer’s CEO John Rodgers testified regarding medical providers, “[i]f
sophistication means they don’t make errors, I would disagree because they make
errors all the time.”121 Further, we must make our determination based on the least
sophisticated consumer, which in this case include patients who have a medical need
for a specialty pharmaceutical product, but who have neither medical nor legal
expertise, and may seek fulfillment of prescriptions based upon cost, convenience and
availability. See Stone Lion, 110 USPQ2d at 1157 (“Board precedent requires the
decision to be based ‘on the least sophisticated potential purchasers.’”) (quoting Gen.
Mills, Inc. v. Fage Dairy Proc. Indus. S.A., 100 USPQ2d 1584, 1600 (TTAB 2011),
judgment set aside on other grounds, 2014 WL 343267 (TTAB 2014)).
The fourth DuPont factor is neutral in our analysis.
5. Actual Confusion
Under the seventh and eighth DuPont factors, we consider the nature and extent
of any actual confusion, in light of the length of time and conditions under which
there has been contemporaneous use of the parties’ subject marks. DuPont, 177
USPQ at 567. The Board and the Federal Circuit, our primary reviewing court, have
long agreed on the importance of any evidence of actual confusion to the analysis of

121 83 TTABVUE 224 (Rodgers Test. Dep.).
Opposition No. 91236453
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whether there is a likelihood of confusion. See, e.g., In re Majestic Distilling Co., Inc.,
315 F.3d 1311, 65 USPQ2d 1201, 1201 (Fed. Cir. 2003) (“A showing of actual
confusion would of course be highly probative, if not conclusive, of a high likelihood
of confusion”). According to Professor McCarthy, “[c]onvincing evidence of significant
actual confusion occurring under actual marketplace conditions is the best evidence
of a likelihood of confusion.” J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND
UNFAIR COMPETITION § 23:13 (5th ed.).
Opposer’s president, Amy Nash, testified that after she became aware of several
incidents of confusion between the parties’ marks beginning around October of 2017,
she instructed her team to track any instances of confusion, keep records of them,
and to report them to her.122 Numerous alleged incidents of actual confusion,
consisting primarily of emails, patient progress reports, and “To Do” notes, sent or
prepared by Opposer’s employees were introduced through her testimony.123
Applicant objects to Opposer’s evidence of alleged confusion on various grounds,
including Ms. Nash’s competency to identify and authenticate the documents
introduced by Opposer; her competency to testify about the nature and circumstances
of the alleged incidents of confusion contained therein; hearsay; and violation of the
best evidence rule.124
a. Personal Knowledge and Authentication Objections
Fed. R. Evid. 602 provides that “[a] witness may testify to a matter only if evidence

122 85 TTABVUE 166-167 (Nash Test. Dep.).
123 Id. at 165-266, 326-340 (Nash Test. Dep.); 85 TTABVUE 687-780 (Exhibits).
124 100 TTABVUE 7-11 (Applicant’s Evidentiary Objections).
Opposition No. 91236453
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is introduced sufficient to support a finding that the witness has personal knowledge
of the matter” and that “[e]vidence to prove personal knowledge may consist of the
witness’s own testimony.” A companion rule, Fed. R. Evid. 901, provides that the
proponent of an item of evidence “must provide evidence sufficient to support a
finding that the item is what the proponent claims it is.”
Based on her testimony, we find that Ms. Nash was at least competent to identify
a majority of the documents reporting alleged incidents of confusion that were
introduced through her testimony. In her capacity as president of Opposer, Nash
reviewed the corporate documents of alleged incidents of confusion that she had
instructed Opposer’s employees to document and collect,125 and she provided
sufficient details during her testimony pertaining to the employees and the
documents themselves sufficient to determine their authenticity. Personal knowledge
is what Rule 602 of the Federal Rules of Evidence requires, and it is clear that
personal knowledge can be acquired by a review of files and records in the course of
a witness’s employment and the discharge of his or her job duties. See generally
Transamerica Fin. Corp. v. Trans-Am. Collections, Inc., 197 USPQ 43, 44 n.6 (TTAB
1977) (party may rely on historical documents maintained by the corporation over the

125 85 TTABVUE 167 (Nash Test. Dep.). Applicant also objects to the admissibility of some of
the same documented instances of alleged actual confusion that were introduced as exhibits
26 – 33 during the discovery cross-examination testimony of Applicant’s witness, Joel Wright,
and his related testimony, 41-42 TTABVUE 193-216, 282-298 (Wright Disc. Dep.), on grounds
of “lack of personal knowledge and competency of the witness to testify as to these documents
or the contents therein....” 100 TTABVUE 12 (Applicant’s Evidentiary Objections). However,
as is clear from Opposer’s cross-examination and Opposer’s response to this objection, the
exhibits were not offered for the purpose of authentication, but rather to determine whether
Mr. Wright had been made aware of certain specific instances of alleged confusion.
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years, in the normal operation thereof provided that the material is made of record
subject to the scrutiny and cross-examination of the adverse party). To that extent,
Applicant’s objection is overruled.
However, we exclude, and give no consideration to, certain documents,
notwithstanding our determination of the objection, including a chart summarizing
purported instances of confusion created by someone unknown (Exhibit 59);126 two
faxes of unknown significance that Ms. Nash knew nothing about (Exhibits 60-61);127
and emails between Ms. Nash and her attorneys providing summaries of collected
incidents of alleged confusion about which she had no personal knowledge, beyond
what was contained in the incident reports themselves (Exhibits 73, 86-87).128 The
supporting documents upon which the summaries are based speak for themselves.
We do not rely on the summaries to speak for them.
We give minimal consideration to Ms. Nash’s descriptions and/or
characterizations of the circumstances detailed in the reported instances of alleged
confusion beyond her identification of the named employees involved in the
communications or general information about Opposer’s operations because she has
no personal knowledge of the incidents themselves. Ms. Nash’s “team” determined
which documents were or were not relevant to the issue of actual confusion and she
had no knowledge about whether the determinations were made by team members

126 85 TTABVUE 687 (Nash Test. Dep).
127 Id. 688-691.
128 Id. at 715-716, 748-751, 753-764). See also AMPAT/Midwest, Inc. v. Illinois Tool Works,
Inc., 896 F.2d 1035, 1044–1045 (7th Cir. 1990) (summaries prepared for use in litigation are
generally inadmissible because litigation is not a regularly conducted business activity).
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or their supervisors.129 Her conclusory opinions about the significance of any of the
statements contained in the documents, particularly with regard to the ultimate
question of law in this case, have no probative value and have been given no weight.
“[W]e will not substitute the opinion of a witness, even an expert witness, for our
evaluation of the facts.” Edwards Lifesciences Corp., 94 USPQ2d at 1402 (citing
Mennen Co. v. Yamanouchi Pharm. Co., 203 USPQ 302, 305 (TTAB 1979).
b. Hearsay Objections
We next consider Applicant’s objections to the documented reports of alleged
confusion on the ground of hearsay, many of which we find are well-taken. All of the
documents introduced through Ms. Nash that can be considered reports of incidents
of alleged actual confusion are comprised of hearsay, and in most instances, multiple
levels of hearsay. Hearsay, “a statement other than one made by the declarant while
testifying at the trial or hearing, offered in evidence to prove the truth of the matter
asserted,” Fed. R. Evid. 801(c), “is inadmissible unless it falls within one of the
exceptions provided in the Federal Rules of Evidence.” United States v. Williams, 41
F.3d 192, 199 (4h Cir. 1994); Fed. R. Evid. 802. “If hearsay is unreliable then it stands
to reason that multiple hearsay is less reliable and would need more corroboration to
make it trustworthy.” Valdivia v. Schwarzenegger, 548 F. Supp. 2d 852, 1100 (E.D.
Cal. 2008) (finding that testimony of parole officer, who testified to statements made
to him by someone else was unreliable multiple hearsay).
The following “To Do” Note entry introduced through Exhibit 71 of Ms. Nash’s

129 Id. at 429-430.
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testimony deposition is quadruple hearsay and is representative of the multiple levels
of hearsay present in Opposer’s evidence of alleged confusion:
MD office called to say pt is having a problem getting his Copaxone and
wondered why, they have the auth in place until 1/19 I told her we have
not serviced the patient since 2013 and have it noted he has BCB she
said that is correct I told her we are not contracted with the commercial
plan she said they were dispensing thru CVS Caremark and are not able
to anymore and were told it needs to come thru us…I told her it probably
needs to go thru Walgreens Specialty she said “wait a minute they did
say “Alliance Pharmacy,” she thought they said “Reliance”….130

The “To Do Note” was purportedly entered by one of Opposer’s employees (Kathy
Kugler), “To Be Done By” by another (Tim Carroll) following her conversation with
an employee (unknown) at a doctor’s office (also unknown) who had spoken with a
patient (again unknown). None of the individuals are witnesses in this case and the
note was introduced into evidence by Ms. Nash, who herself had no personal
knowledge of the call.131
Exhibit 85 to Ms. Nash’s testimony provides another example. The document,
which consists of an electronic entry from the Progress Note History of a patient made
by one of Opposer’s employees, reads as follows:
Caitlin from MD office emailed me regarding this pt. She said she was
contacted by express scripts by April telling her that the script needs to
go to Alliance RX, this is not true. I spoke with Renee C over at express

130 Id. at 711.
131 Id. Despite its hearsay nature, the note itself provides no evidence of actual confusion. It
describes a call from an employee at a doctor’s office who, though initially confused as to why
Opposer was not dispensing a particular medication to its patient, realized during her call
with Opposer that the patient actually named a different entity, Alliance Pharmacy, not
Opposer: “[W]ait a minute they did say ‘Alliance Pharmacy’.” There was no confusion by the
patient who meant “ALLIANCE pharmacy,” or by the doctor’s office employee who heard
wrong. As detailed infra, this scenario is typical in the purported “actual confusion” evidence
provided by Opposer.
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scripts and we are ok to bill and fill the claim.132

We thus have someone (Caitlin) at an unknown doctor’s office who was reportedly
told something by someone else (April) at another company, who then contacted an
employee of Opposer, who called someone else (Renee) at that same other company
and then summarized these contacts in the progress note of an unknown patient.
Again, none of the named individuals are witnesses in this case, but the progress note
was introduced as an exhibit through the testimony of Ms. Nash, who has no personal
knowledge of the incident (or any of the incidents documented as reports of actual
confusion by Opposer133).
This type of multiple hearsay testimony is inherently unreliable. See Versa
Products Co., Inc. v. Bifold Co. (Manufacturing) Ltd., 50 F.3d 189, 33 USPQ2d 1801,
1818 (3d Cir. 1995) (excluding testimony of a witness who was told about alleged
statements of confusion, where no testimony was taken of the employees who received
the calls and inquiries); Source Services Corp. v. Source Telecomputing Corp., 635 F.
Supp. 600, 230 USPQ 290, 297 (N.D. Ill. 1986) (While evidence from employees who
received phone calls from members of the public was allowed, unsworn reports
prepared by employees and forwarded to plaintiff’s president, who testified, deemed
hearsay and not allowed under the business records exception of Fed. R. Evid. 803(6)).

132 Id. at 746.
133 Id. at 423. As with the previous example, even if we were to disregard the problems
inherent in this multiple hearsay, we would not find actual confusion. The content of the note
describes a scenario where a third party believes that a certain prescription should be filled
by another company, Applicant, and the employee at Opposer disagrees, contacts the same
company, and is able to get the work (the prescription) to be provided by Opposer. No one is
confused.
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See also Blansett Pharmacal Co. v. Carmrick Laboratories Inc., 25 USPQ2d 1473,
1476 (TTAB 1992) (statements attributed to others are hearsay and entitled to no
probative value); Corporate Fitness Programs Inc. v. Weider Health and Fitness Inc.,
2 USPQ2d 1682, 1690-91 (TTAB 1987) (testimony of others is of little probative value
in the absence of testimony from the persons allegedly confused as to whether they
were confused and, if so, what caused their confusion). In view thereof, Opposer’s
evidence of alleged confusion based on hearsay is entitled to little probative weight.
Opposer argues that none of the statements contained in the documented
incidents of alleged confusion, including the above-mentioned examples, are
inadmissible hearsay, “as they are not being submitted for the truth of the matter
asserted, but to show the confusion in the minds of patients, providers, payers, and
manufactures alike between Opposer’s mark and Applicant’s mark.”134 However, we
find that Opposer clearly intends to rely on the documents for the truth of at least
some of the matters asserted in all of the documents, which rest for their value on the
credibility of the out-of-court declarant, such as the fact that the persons Opposer
contacted, or those who contacted Opposer, were patients, providers, payers, and the
like, and that they were in fact confused as to the source of any service provided under
the marks. Indeed, it is not clear what relevance the testimony would have if offered
only for the purpose of showing that such statements were made.

134 104 TTABVUE 16 (Opposer’s Response to Applicant’s Objections). Opposer’s citation to
the Board’s non-precedential decision in Cutlery and More, LLC v. Dasalla Trading Co.,
Opposition No. 91201666, 2014 TTAB LEXIS 445 (TTAB 2014), which is based on different
factual circumstances, is not persuasive. See note 94.
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Opposer also argues that the statements contained in the documents are
admissible under several exceptions to the rule against hearsay set forth in Fed. R.
Evid. 803, including Rules 803(1) (Present Sense Impression), 803(3) (Then-Existing
State of Mind), and 803(6) (Records of Regularly Conducted Activity).135
Fed. R. Evid. 803(1) provides that “[a] statement describing or explaining an event
or condition, made while or immediately after the declarant perceived it” is not
excluded by the rule against hearsay. While the documented instances of alleged
confusion, such as patient progress notes, “to do notes,” and emails, represent
summaries or notes of Opposer’s employees’ conversations with various individuals,
Opposer does not explain how those documents fit within this hearsay exception.
Opposer’s employees’ notes taken during or immediately after their conversations
could potentially come under Rule 803(1). However, none of Opposer’s employees—
other than Ms. Nash, who was not involved in any of the reported conversations136—
are witnesses in this case. Those employee statements, as well as the statements
made by those persons who spoke with Opposer’s employees, are hearsay within
hearsay. When a statement involves hearsay within hearsay, the separate parts of
the statement must each conform to a hearsay exception, Fed. R. Evid. 805, and here
they do not.
Fed. R. Evid. 803(3) provides that “[a] statement of the declarant’s then-existing
state of mind (such as motive, intent, or plan) or emotional, sensory, or physical

135 104 TTABVUE 16-24 (Opposer’s Response to Applicant’s Objections).
136 85 TTABVUE 423 (Nash Test. Dep.).
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condition (such as mental feeling, pain, or bodily health), but not including a
statement of memory or belief to prove the fact remembered or believed unless it
relates to the validity or terms of the declarant’s will,” is not excluded by the rule
against hearsay. Opposer’s argument again runs into the wall presented by Fed. R.
Evid. 805, which requires each level of hearsay to be independently admissible. While
the statement of any person who spoke directly with an employee of Opposer may
itself fall within Rule 803(3), once again, none of the employees are witnesses in this
case. Thus, their reporting of those statements to Ms. Nash, who had no personal
knowledge of the conversations other than was what reported in the notes, as well as
the statements of those persons who purportedly spoke with the persons who spoke
directly with Opposer’s employees, do not fall within this exception to the rule. Rule
803(3) does not apply to hearsay within hearsay because one person cannot testify to
another person’s mental state.
Opposer argues that the documented instances of alleged confusion are admissible
because they fall within Fed. R. Evid. 803(6)’s “business record” exception.137 Fed. R.
Evid. 803(6) provides that “[a] record of an act, event, condition, or diagnosis” is not
excluded by the rule against hearsay if:
(A) the record was made at or near the time by—or from information
transmitted by—someone with knowledge; (B) the record was kept in
the course of a regularly conducted activity of a business, organization,
occupation, or calling, whether or not for profit; (C) making the record
was a regular practice of that activity; (D) all these conditions are shown
by the testimony of the custodian or another qualified witness, or by a
certification that complies with Rule 902(11) or (12) or with a statute
permitting certification; and (E) the opponent does not show that the

137 Id. at 22-24.
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source of information or the method or circumstances of preparation
indicate a lack of trustworthiness.

In this regard, Ms. Nash testified that the documented instances of alleged actual
confusion were made by her employees in the ordinary course of their job; that they
would come across such documents “throughout the course of working”; that Ms. Nash
“would learn about them in the course of [her] employment”; and that Opposer would
retain them as company business records.138 The documents, for the most part,
appear to have been made at or near the time of the incidents being reported.139
Applicant contends, however, that “Opposer’s ‘records’ of the alleged instances of
actual confusion do not fall within the business records exception to hearsay, as these
records were made in anticipation of litigation” and lack trustworthiness and
reliability.140 In support, Applicant points to Ms. Nash’s testimony that she had
instructed Opposer’s employees to make records of and “track” any instances of
confusion and report them to her only after Applicant’s mark came into use, which
occurred during the litigation of this case, and that those employees do not otherwise
report instances of confusion as they did with Opposer.141 According to Nash, she “was
tracking how big of an issue it was, what impact it had on the team.” Mistakes that
other medical providers make are not reported because “they don’t happen as

138 85 TTABVUE 174-175 (Nash Test. Dep.).
139 One of the alleged instances of confusion, an email from Opposer’s clinical operations
manager Katie Scibilia, reports an incident occurring four days prior and thus was not made
“at or near the time” of the event. Id. at 693 (Exhibit 62).
140 100 TTABVUE 22-23 (Applicant’s Evidentiary Objections).
141 85 TTABVUE 166-167, 426-427 (Nash Test. Dep.).
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frequently. They’re not instances of confusion with a name, which I thought was
different than the normal day-to-day confusion that a patient or provider would have,
so that’s why they reported to me.”142
Under the circumstances, we find that the records prepared by Opposer’s
employees, under instruction by Ms. Nash to document instances of confusion further
to this litigation, are not the type of business records contemplated by Fed. R. Evid.
803(6). While the typical patient “progress note” or “to do note” prepared by Opposer’s
employees in the course of their duties may indeed fall within that exception to the
rule, the actions of Opposer’s employees in this case, under instructions from Ms.
Nash “to track any instances of confusion”143 and report them to her during the course
of this litigation, fall outside of the general activities of Opposer’s regularly conducted
activity. See e.g., Certain Underwriters at Lloyd’s v. Sinkovich, 232 F.3d 200, 205–206
(4th Cir. 2000) (marine surveyor’s incident report, prepared in anticipation of
litigation at request of insurance company, was not prepared as part of his ordinary
course of investigating); Jones v. Bd. of Trs. Comty Coll., 75 F. Supp.2d 885, 889 (N.D.
Ill. 1999) (supervisor’s contemporaneous personal file notes about employees’
performance inadmissible because notes were not created as regularly conducted
business activity, but to build case against employees in anticipation of litigation);
Scheerer v. Hardee’s Food Sys., Inc., 92 F.3d 702, 706 (8th Cir. 1996) (incident report
lacks trustworthiness because it was made with knowledge that incident could result

142 Id. at 427-428.
143 Id. at 167.
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in litigation and not admissible as business record).
The emails comprising certain instances of alleged actual confusion are even less
prone to fall within the business records exception to the rule against hearsay than
the notes, given the absence of testimony by Ms. Nash that emails, unlike patient
progress notes or “to do” notes, are a regularly conducted business activity. “[E]-mail
presents ‘unique’ problems as a more casual form of communication” that are not
necessarily considered business records. United States v. Cone, 714 F.3d 197, 219–
220 (4th Cir. 2013), highlighting the issue and quoting Its My Party, Inc. v. Live
Nation, Inc., 2012 U.S. Dist. LEXIS 119625, at *14-15 (D. Md. Aug. 23, 2012)
(declining to accept “a blanket rule” that emails constitute business records and
excluding e-mails at issue because “more specificity is required regarding the party’s
recordkeeping practices to show a particular email in fact constitutes a reliable
business record”). Merely sending and receiving e-mail is insufficient to survive a
hearsay challenge. Id. at 220 (trial court’s observation that e-mails in this case were
kept as “a regular operation of the business” was insufficient to establish foundation
for admission under Rule 803(6)).
Even if the documents presented by Opposer could be considered business records
admissible under Rule 803(6)(B), the records still comprise multiple levels of hearsay
for which there is no foundation. See United States v. Bueno-Sierra, 99 F.3d 375, 379
n. 10 (11th Cir. 1996) (Rule 803(6) does not eliminate double hearsay problems;
“[r]ather, it commands that each link in the chain of possession must satisfy the
requirements of the business records exception or some other exception to the hearsay
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rule.”); United States v. Baker, 693 F.2d 183, 188, (D.C. Cir. 1982) (“[I]f the source of
the information is an outsider, Rule 803(6) does not, by itself, permit the admission
of the business record. The outsider’s statement must fall within another hearsay
exception to be admissible because it does not have the presumption of accuracy that
statements made during the regular course of business have.”). Applicant’s hearsay
objections are sustained.
c. “Best Evidence Rule” Objection
Applicant lodges a further objection to Opposer’s evidence of alleged actual
confusion based on the documents created following telephone calls between
Opposer’s employees and other individuals, such as patients and providers, on the
ground that it does not comply with the Best Evidence Rule.144 The Rule, codified in
Fed. R. Evid. 1002, states that “[a]n original writing, recording, or photograph is
required in order to prove its content unless these rules or a federal statute provides
otherwise.”
Applicant contends that “[n]early all of the instances alleged by Opposer to be
confusion took place as part of a conversation between Opposer’s employees and third
parties,” and these calls were recorded.145 However, the original voice recordings were
not produced, and “Ms. Nash admitted that the recordings of such calls could have
been transcribed, with any patient identifying information redacted, and produced to

144 100 TTABVUE 24-25 (Applicant’s Evidentiary Objections).
145 Id. at 25; 85 TTABVUE 430 (Nash Test. Dep.).
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Applicant, but they were not.”146 Applicant argues that the documented instances of
alleged actual confusion by Opposer’s employees are merely their “subjective
comments about conversations with third parties … some of which purported to
include the reasons for, and results of, the alleged confusion.”147 “[I]n no
circumstance,” asserts Applicant, “did Opposer provide the full context, or in other
words, the best evidence of, the telephone conversations that Opposer alleges show
that consumers were confused between the parties’ marks.”148
Opposer acknowledges that the Best Evidence Rule requires that the original
recording is required to prove its content unless otherwise provided by the Rules or
Act of Congress but argues, quoting citing Weinstein’s Federal Evidence, 6
WEINSTEIN’S FEDERAL EVIDENCE § 1004.01 (2nd ed. 1997), that “the rule has been
described as ‘one of preferences, not absolute exclusion.’”149 We agree, which is why
Fed. R. Evid. 1004 allows for the consideration of secondary evidence in limited
circumstances including: (1) when “all the originals are lost or destroyed, and not by
the proponent acting in bad faith”; (2) “an original cannot be obtained by any available
judicial process”; (3) “the party against whom the original would be offered had
control of the original; was at that time put on notice, by pleadings or otherwise, that
the original would be a subject of proof at the trial or hearing; and fails to produce it

146 100 TTABVUE 25 (Applicant’s Evidentiary Objections); 85 TTABVUE 430-432 (Nash Test.
Dep.).
147 100 TTABVUE 24 (Applicant’s Evidentiary Objections).
148 Id.
149 104 TTABVUE 24 (Opposer’s Response to Applicant’s Objections).
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at the trial or hearing”; or (4) “the writing, recording, or photograph is not closely
related to a controlling issue.” None of those exceptions are applicable here.
Opposer also argues that “Applicant did not raise any issue regarding the evidence
disclosed in response to Applicant’s request for documents relating to actual
confusion until trial.”150 Specifically, Opposer contends that:
At no time until Ms. Nash’s testimony deposition, did Applicant inquire
as to whether there was further documentation as to the instances of
confusion, asking for the first time at trial whether there was any other
evidence related to the instances of actual confusion, such as voice
recordings, and suggesting that Opposer should have produced
transcripts of such recordings even though they were not in existence.
Applicant cannot now claim that other evidence that was not in
existence should have been prepared and produced when no objection
was raised during the discovery period.”151

Opposer’s argument is misplaced. First, there is no evidence that Applicant was
aware, during the discovery period in this case, that the telephone calls, documented
in the various notes and emails purporting to show actual confusion, were recorded
by Opposer. Apparently, evidence that the calls were recorded only came to light
during cross-examination of Ms. Nash by Applicant during Opposer’s testimony
period. Second, even if Applicant had been aware that the calls were recorded, Ms.
Nash testified that the calls were not transcribed.152 Accordingly, there were no
transcriptions of the calls to produce. And, as Opposer notes, “there is no requirement
that Opposer produce documents [i.e., transcripts] which were not in existence.”153

150 Id.
151 Id. at 25.
152 85 TTABVUE 431-432 (Nash Test. Dep.).
153 104 TTABVUE 26 (Opposer’s Response to Applicant’s Objections)
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As the plaintiff in this proceeding, [Opposer] bears the burden of proof which
encompasses not only the ultimate burden of persuasion, but also the obligation of
going forward with sufficient proof of the material allegations of the Notice of
Opposition, including its allegation of actual confusion. Sanyo Watch Co., Inc. v.
Sanyo Elec. Co., Ltd., 691 F.2d 1019, 215 USPQ 833, 834 (Fed. Cir. 1982). While
evidence of actual confusion is not required in order to establish likelihood of
confusion, see Fort James Operating Co. v. Royal Paper Convering, Inc., 83 USPQ2d
1624, 1629 (TTAB 2007) (citing Weiss Assocs. Inc. v. HRL Assoc. Inc., 902 F.2d 1546,
14 USPQ2d 1840 (Fed. Cir. 1990)), Opposer has made it an issue in this case. Thus,
properly introducing instances of actual confusion into the record and persuading the
trier of fact as to the probative value of such evidence remains Opposer’s burden. See
Georgia-Pacific Corp. v. Great Plains Bag Co., 614 F.2d 757, 204 USPQ 697, 701
(CCPA 1980) (“Actual confusion is entitled to great weight but only if properly
proven.”).
Ms. Nash testified that Opposer did not produce any of the recordings because
they contained confidential patient information and because “we don’t know how to
get the patient PHI information off the recording.”154 Nevertheless, she acknowledged
that the recordings could have been transcribed and that sensitive information could
have been redacted, but this was not done.155 Ms. Nash further testified that various
data relating to medical providers, their staff, and the employees of specialty drug

154 Id. at 431.
155 Id. at 431-432.
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manufacturers—which comprise the majority of the third parties who spoke with
Opposer’s employees in these recorded conversations—is not protected by medical
privacy laws.156 Hence, they could have been transcribed and presented by Opposer
as evidence without concern of violating privacy laws, but they were not.
We find that the actual recorded phone calls of the conversations between
Opposer’s employees and various third-parties, which form the basis of Opposer’s
actual confusion allegations, and not the employees’ short, subjective, vague, and
conclusory notes and emails reporting those incidents, are the best evidence of the
purported trademark confusion. Accordingly, Applicant’s objection to Opposer’s
alleged actual confusion evidence on the ground that it violates the Best Evidence
Rule, Fed. R. Evid. 1002, is sustained.
d. No Evidence of Actual Confusion
Even if Opposer’s evidence of alleged actual confusion was not riddled with
hearsay and best evidence problems, we would still not find actual confusion. This is
because the various documents introduced by Opposer to show actual confusion,
including patient progress notes, “to do notes,” emails, and faxes are vague and
unclear, speculative and conclusory, some combination of the foregoing, or are simply
not evidence of actual confusion. The following examples of alleged actual confusion,
introduced as exhibits through the testimony of Ms. Nash, are representative of the
assorted problems found throughout Opposer’s evidence of alleged actual confusion.

 Exhibit 63 is an email from one of Opposer’s employees to another, which

156 Id. at 428.
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is reproduced below:

This email, which was apparently altered to delete the name of a patient,157 is not
probative because we have no details indicating why the caller purportedly thought
Opposer was AllianceRx, or why Opposer’s employee concluded that was the caller’s
thinking, which potentially could have been clarified if a transcript of the call was in
evidence. Was the patient given a wrong number? Was the patient also a customer of
Opposer, now or in the past, and confused the numbers. We do not know and cannot
infer the reason.

 Exhibit 69 is an email from one of Opposer’s employees to Ms. Nash,
advising her that Opposer received a prescription from a patient, but
“Alliance RX called saying patient is receiving med through their pharmacy
and asked that we reverse it out per Ashley’s note. I wasn’t involved in any
of these steps just noticed the notes.”158

Putting aside the fact that the writer “wasn’t involved in any of these steps,” this
email lacks probative value because nothing therein indicates there was confusion,
much less confusion as to source. For example, we have no information as to why
AllianceRx also received a prescription order, since it was already dispensing the

157 Id. at 452.
158 Id. at 707.
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medication. Ms. Nash testified that prescription transfers from one pharmacy to
another occur for multiple reasons, sometimes randomly.159
 Exhibit 74 contains two documents: a fax cover sheet from an unknown
person at AllianceRx Walgreens+Prime to an unknown person at Reliance;
and a page from the electronic Progress Note History of an unknown patient
entered by one of Opposer’s employees.160 The Progress Note contains the
following entry regarding a fax sent by Opposer to an unknown party: “Sent
a fax request for a prescription for the patient’s Repatha per the demo sheet
faxed over by Alliance.”161

Nothing but Ms. Nash’s speculation connects the two documents, and we are
left to presume that there were documents attached to the fax cover that included
the “demo sheet” referenced in the progress note. Ms. Nash speculated that the
recipient of the fax mentioned in the progress note entry could have been a doctor’s
office, but “we don’t” know.162 Regardless, there is no indication of confusion shown
in these documents.

 Exhibit 85 is an entry from an unknown patient’s Progress Note History by
one of Opposer’s employees, which states: “Called MD office and let
Courtney know that the scripts need to go Alliance RX to be filled. We are
not contracted.”163

159 Id. at 367-369.
160 Id. at 718-719.
161 Id. at 719.
162 Id. at 495.
163 Id. at 764.
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That Opposer’s employee recommended that “Courtney” contact Alliance since
Opposer is not “contracted” tells us nothing.

 Exhibit 62 is an email from an employee of Opposer to Ms. Nash, which
states: “Roswell called Friday night stating patient has been out of
medication (Spryce) for a couple of weeks due to insurance change, and
confusion from the provider by sending the Rx to Alliance Rx. No contact
was made from Alliance Rx to us to transfer the Rx. Jeff the pharmacist at
Roswell said “you guys sound the exact same, I can see why it was sent
there by mistake.”164

The reason for the purported confusion in this email is vague and unclear, since
no information is provided about as to why a prescription was sent to AllianceRx. The
conclusory statement by “Jeff the pharmacist” that there was a mistake, and his lay
opinion that “you guys sound exactly the same” has no probative value.

 Exhibit 72 is a progress note entry from the electronic Progress Note
History of an unknown patient written by one of Opposer’s employees
stating: “Tiffiney from Alliance pharmacy called because they were unable
to fill a script for Exemestane for the patient. Pt told them we could not fill
it. I told her we could if we had the script. We requested it but the MD office
sent it to them instead. She will fax it over to us or have someone call to do
a verbal.” 165

Clearly, the patient in this example was not confused as to the source of the
services, since the patient purportedly went to AllianceRX and told them Opposer

164 Id. at 693.
165 Id. at 713.
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could not fill it, thus recognizing them as separate providers. There could be any
number of reasons why the doctor’s office originally sent the prescription to
AllianceRx, such as that they thought Alliance could fill it. Put simply, we do not have
adequate information to find confusion here.

 Exhibit 66 is an email from one of Opposer’s employees to another of its
employees, stating “Makenacare called and asked if we were alliancerx or
reliancerx, just wanted to make you aware. No specific PT bc they have
aetna insurance.”166

 Exhibit 71 is a “To Do Note” entered by Opposer’s employee Kathy Kuglar,
which states: “MD office called to say pt is having a problem getting his
Copaxone and wondered why … she said they were dispensing thru CVS
Caremark and are not able to anymore and were told it needs to come thru
us…I told her it probably needs to go thru Walgreens Specialty she said
she thought they said
“Reliance”….

The purported inquiry by someone from Makena Care regarding which of two
names was associated with Opposer (Exhibit 66), and the statement by someone at
doctor’s office realizing that a patient was talking about Walgreens (AllianceRx
Walgreens Prime) and not Reliance Rx (Exhibit 71), if anything, demonstrate an
understanding by those individuals that the services of AllianceRx and Reliance Rx
are provided under different entities, which is not evidence of actual confusion. See

166 Id. at 701. Ms. Nash testified that Makena Care is a manufacturer’s hub program, which
is a “program that manufacturers have that help patients with assistance, helping them get
access to the product.” Id. at 193.
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Couch/Braunsdorf Affinity, 110 USPQ2d at 1479 (email received from a prospective
customer contacted by petitioner who inquired, “Is this the same company?” was “not
evidence of actual confusion because it indicates the prospective consumer suspected
that there were two different companies seeking business.”); Marshall Field & Co. v.
Mrs. Fields Cookies, 25 USPQ2d 1321, 1334 (TTAB 1992) (inquiries as to corporate
affiliations is not evidence of confusion because, without more, they “indicate that
these persons were aware that [the companies at issue] were two different entities”);
Elec. Water Conditioners, Inc. v. Turbomag Corp., 221 USPQ 162, 164 (TTAB 1984)
(“That questions have been raised as the relationship between firms is not evidence
of actual confusion of their trademarks.”); Toys “R” Us, Inc. v. Lamps R Us, 219 USPQ
340, 346 (TTAB 1983) (“The fact that questions have been raised as the possible
relationship between firms is not by itself evidence of actual confusion of their
marks.”).
Ms. Nash agreed that there are any number of reasons why a doctor’s office could
reach out to the wrong specialty pharmacy for reasons other than trademark
confusion, such as where a medical provider mistakenly believes that a particular
specialty pharmacy can cover a drug for patient when in fact they cannot because of
a certain payer relationship, or where they make a mistake regarding a patient’s
insurance coverage.167 Indeed, Opposer sometimes receives prescriptions from
medical providers that should have gone to other specialty pharmacies other than

167 Id. at 424.
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Applicant.168 The evidence of record supports Applicant’s contention that
“misdirected prescriptions and communications are routine in the specialty pharmacy
industry for a myriad of reasons that have nothing to do with pharmacy names.”169
A separate but related issue is the contractual relationship between IHA,
Opposer’s parent company, and Walgreens Specialty Pharmacy Holdings LLC (d/b/a
AllianceRx Walgreens Prime), which provides that IHA’s plan members may obtain
roughly 60-70 limited distribution drugs from AllianceRx Walgreens Prime that
Opposer cannot get from wholesalers and manufacturers.170 There is also a larger
open contract providing that AllianceRX can supply IHA’s members with drugs at
brand and generic rates.171 As Applicant observes, “[c]ertainly, in these
circumstances, a patient could be receiving specialty pharmaceuticals from both
Opposer and AllianceRx Walgreens Prime, resulting in provider confusion regardless
of names.”172
Given their contractual relationship, it is hardly surprising that consumers may
be confused as to whether the parties are affiliated in some way. We therefore must
account for this relationship in the context of our consideration of the incidents of
alleged confusion claimed by Opposer, many of which, as discussed further herein,

168 Id. at 425.
169 98 TTABVUE 47 (Applicant’s Brief in Opposition and in Support of Counterclaim).
170 82 TTABVUE 221-222 (Rodgers Test. Dep.) (Confidential); 90 TTABVUE 55-56 (Wright
Test. Dep.) (Confidential).
171 89 TTABVUE 55-56 (Wright Test. Dep.) (Confidential).
172 97 TTABVUE 47-48 (Applicant’s Brief in Opposition and in Support of Counterclaim)
(Confidential).
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are quite vague or lacking in sufficient detail to ascertain whether any actual
confusion as to source of the services provided under the marks has taken place.173
Overall, we find Opposer’s documented evidence of alleged actual confusion to be
lacking in probative value because it is comprised of multiple hearsay, is not the best
evidence of the telephone calls it represents, and is otherwise deficient in providing
relevant information from which we could conclude there has been actual confusion.
See Georgia-Pacific Corp. v. Great Plains Bag Co., 614 F.2d 757, 204 USPQ 697, 701
(CCPA 1980) (“Actual confusion is entitled to great weight but only if properly proven.
... Such is not the case here.”); Mini Melts, 118 USPQ at 1475 (“Without direct
testimony from these individuals, there is insufficient information to ascertain what
they were thinking, or what caused the purported confusion.”); Kraft, Inc. v. Balin,
209 USPQ 877, 882 (TTAB 1981) (it is necessary to fully probe the circumstances
surrounding a purported instance of confusion to learn whether it sheds any light on
what may normally be expected to occur in the marketplace).
As noted previously, none of the individuals identified in the reports of alleged
confusion were called by Opposer as witnesses in this case. We thus do not have the
actual words of any individuals who were purportedly confused, only conclusory and

173 As further evidence of actual confusion beyond the incidents of alleged actual confusion
documented by Opposer’s employees, Opposer points to a printout of the first page of the
results of a Google search of the term “RELIANCE RX,” which at the bottom of the page
identifies eight “Searches related to reliance,” one of which states “reliance rx walgreens
prime,” which is a combination of Opposer’s and Applicant’s marks. 87 TTABVUE 39
(Opposer’s Main Brief); 46 TTABVUE 22-26 (Opposer’s Seventh Notice of Reliance). A second
Google search for that mixed wording identifies Opposer’s website listed first, and Applicant’s
website listed second. This evidence is not probative, as we are not privy to the algorithm by
which Google selects and displays related search recommendations and we cannot simply
presume that such display has trademark significance.
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anecdotal summaries prepared by Opposer’s employees regarding their contacts with
third parties. Consequently, we have no way of knowing what the actual inquiries,
contacts, and calls summarized in the reports were about, and we are unable to
interpret the mental states demonstrated by those inquiries, contacts, and calls.
Courts and leading trademark treatises consistently note that relatively imprecise
averments of employees of parties in whose interest it is to prove confusion that the
employees have dealt with confused consumers, without further corroboration, are
generally not entitled to much weight. See, e.g., Vitek Sys., Inc. v. Abbott Labs., 675
F.2d 190, 216 USPQ 476, 479-80 (8th Cir. 1982) (factfinder could refuse to credit
uncorroborated testimony of interested persons about interacting with unspecified
confused consumers); see also Duluth News-Tribune v. Mesabi Publ’g Co., 84 F.3d
1093, 38 USPQ2d 1937, 1941 (8th Cir. 1996); A. Gilson Lalonde, 5 GILSON ON
TRADEMARKS § 5.04[4][c] (“[W]here the evidence of actual contemporaneous confusion
is filtered through a plaintiff’s employees or where people affiliated with the plaintiff
proclaim their confusion, courts are rightly wary of the possibility of bias and view
such evidence with skepticism”). On the important issue of actual confusion, we would
require better evidence.
This DuPont factor is neutral.
VI. Conclusion
Having considered all the evidence and arguments on the relevant DuPont factors,
we conclude that while the parties’ services and their channels of trade are in part
identical and overlapping in Classes 35 and 44, Opposer’s mark RELIANCE RX and
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Applicant’s mark ALLIANCE RX WALGREENS PRIME are too dissimilar to
warrant a finding of likelihood of confusion. In view of our finding that Opposer’s
evidence of alleged confusion is not probative, the DuPont factor concerning the
dissimilarity of the marks is dispositive in this case. Kellogg Co. v. Pack’em Enters.,
951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991) (“We know of no reason why, in a
particular case, a single du Pont factor may not be dispositive. ... ‘each [of the thirteen
factors] may from case to case play a dominant role.’”).
Decision: The opposition and counterclaim are dismissed.