`ESTTA289741
`ESTTA Tracking number:
`06/15/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91184047
`Defendant
`The TriZetto Group, Inc.
`Daniel A. Crowe, Esq.
`Bryan Cave LLP
`One Metropolitan Square, 211 N. Broadway, Suite 3600
`St. Louis, MO 63102-2733
`UNITED STATES
`mapaskar@bryancave.com
`Opposition/Response to Motion
`Mark A. Paskar
`mapaskar@bryancave.com, dacrowe@bryancave.com
`/Mark A. Paskar/
`06/15/2009
`Opp MSJ.pdf ( 102 pages )(10224802 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial Nos. 77/029,672
`Filed on October 26, 2006
`Published in the Trademark Official Gazette on May 29, 2007
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`FARMACO—LOGlCA B.V.,
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`Opposer.
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`VS
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`THE TRIZETTO GROUP,
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`Applicant.
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`Commissioner for Trademarks
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`Trademark Trial and Appeal Board
`P.O. Box I451
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`Alexandria, VA 223 13-145 l
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`Opposition No. 91 l84047
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`Serial No. 77/029,672
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`\y\J\/\y\./\/\/\y\./\J
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`BRIEF IN OPPOSITION TO OPPOSER FARMACO-LOGICA’S
`MOTION FOR SUMMARY JUDGMENT
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`COMES NOW Applicant The TriZetto Group, Inc. (“TriZetto”) and files its Brief in Opposition
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`to Opposer Farmaco—Logica B.V.’s (“Farmaco”) Motion For Summary Judgment.
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`INTRODUCTION
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`Genuine issues of material fact preclude a finding of likelihood of confusion as a matter of law
`under the multi—factor LIPgn_t analysis. The sophistication of the parties’ customers,
`the fame of
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`TriZetto’s FACETS mark and the complete lack of fame of Farmaco’s PHACET mark, and the absence
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`of any actual confusion all weigh heavily against the existence of likelihood of confusion. Whether the
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`marks at issue are confusingly similar, cover similar goods, or share similar trade channels all hinge on
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`genuine issues of material fact and therefore cannot serve as a basis for summary judgment. Moreover,
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`contrary to its present position in this Opposition proceeding, Farmaco itself previously asserted to the
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`Board that there is no likelihood of confusion between its PHACET mark and TriZetto’s FACETS mark
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`for the goods at issue here. The Qu_I_’9_n_t analysis is a fact-intensive inquiry, and Farmaco’s changed
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`position demonstrates that there are genuine issues of material fact in this case and that Farmaco is not
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`entitled to judgment as a matter of law.
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`Furthermore, undisputed facts support TriZetto’s complete
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`defense against Farmaco’s claim of likelihood of confusion based on TriZetto’s existing registration of
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`the FACETS mark for substantially identical software.
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`Accordingly, TriZetto respectfully requests that Farmaco’s motion for summary judgment be
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`denied.
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`I.
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`Use, Market, and Fame of TriZetto’s FACETS Mark.
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`MATERIAL FACTS
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`TriZetto and a predecessor-in—interest have used the FACETS mark since at least as early as 1993
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`for various goods and services in the field of managed health care.
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`_S_e_e Declaration of J. Sullivan
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`(“Sullivan Decl.”) 1] 3 (attached as Ex. 1). Among other uses, TriZett0 has used the mark continuously
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`since at
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`least as early as July 12, 1993 in connection with computer software for health care plan
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`management and administration and for computer software for claims and benefits administration for
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`Medicare and Medicaid managed care.
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`§e§ fig Declaration of T. Mayer (“Mayer Dec|.”) W 4-7
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`(attached as Ex. 2). TriZetto distributes its FACETS software to customers in two ways.
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`_S_e_e_ Q at 1] 9.
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`First, TriZetto will provide a customer with a copy of the FACETS software, and the customer will
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`install the software at the customer’s or a third party’s data center.
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`_S_e_e i_d_. Alternatively, TriZetto will
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`offer to “host” its FACETS software for the customer at TriZetto’s data center and will provide the
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`customer with remote access to the software. fl i_<L
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`jp_eit_l1;c_i‘_<;a_s_e_,_th,e_;1_ser
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`interface and
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`functionality of the software_ is identi_<_:_a_l; the alternatives are merely different ways for TriZetto to
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`distribute, and for the customer to access and use the software.
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`_S_e_e gl_. at 1]
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`l l. The “hosted” method
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`of delivery, involving the installation of the software at TriZetto’s facilities, sometimes is referred to by
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`TriZetto and others in the industry as “application service provider (ASP)” services, which are reflected
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`in, among others, TriZetto’s U.S. Trademark Reg. No. 3,482,938 (the “’938 Registration”), a status and
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`2
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`
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`title copy of which is attached to the Sullivan Declaration as Exhibit A.
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`_S_e§ Sullivan Decl. 1]6 and Ex.
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`A thereto.
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`TriZetto owns several registrations for its FACETS mark (and variations thereof). See Sullivan
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`Decl. 1] 7 and Ex. B thereto. Among said registrations, TriZetto owns the ’938 Registration for the mark
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`FACETS in standard characters for “application service provider (ASP) featuring software for health
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`care plan management and administration;
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`implementation, maintenance and support of
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`computer software; application service provider (ASP) featuring software for claims and benefits
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`administration for Medicare and Medicaid managed care” in International Class 42, claiming a date
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`of first use ofJuly I2, 1993.
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`_S_e§ i_d. at 1] 6 and Ex. A thereto.
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`TriZetto filed U.S. Trademark Application No. 77/029,672 (the ’672 Application) with the U.S.
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`Patent and Trademark Office (“PTO”) on November 1, 2006 seeking to register the mark FACETS in
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`standard characters for “computer software for health care plan management and administration;
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`computer software for claims and benefits administration for Medicare and Medicaid managed
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`care,” in International Class 9, claiming a date of first use of July 12, 1993. The ’672 Application is the
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`subject of the present opposition.
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`TriZetto’s customers include large- and medium-sized health plans and third-party administrators
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`in the United States. Declaration of Robeit Renzi (“Renzi Decl.”) 1] 9 (attached as Ex. 3).
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`FACETS is
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`an enterprise software system that helps TriZetto’s customers automate and manage many of their key
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`business functions.
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`I_d. at 1] 8.
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`In short, the FACETS software is core and critical to the business of
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`TriZetto’s customers, who are very sophisticated and represent some of the largest companies in the
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`United States.
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`lg. at
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`1] 9. Given the importance of the software to TriZetto’s customers,
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`these
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`professional buyers, with the help of their procurement and legal departments, make software purchases
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`only after conducting extensive research, submitting detailed requests for information and proposals, and
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`participating in lengthy contractual negotiations.
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`I_d. at 1] 9; Declaration of David Arnold (“Arnold
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`Decl.”) 1] 5 (attached as Ex. 4). The sales cycle often can be as long as two years, and in some cases
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`longer. Renzi Decl. 1] 9. Many customers also engage third—party consultants that advise them during the
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`negotiation process. E; Arnold Decl. 1] 5. The primary purchasing market for TriZetto’s FACETS
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`products does not
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`include medical practitioners who provide direct medical services to individual
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`patients, a much more fragmented market. Renzi Decl. 1]1] 6-7; Arnold Decl. 1] 3. Moreover, vendors
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`in the managed health care field such as TriZetto do not typically provide software in the health care field.
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`Arnold Decl. 1] 4.
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`TriZetto and a predecessor-in-interest have expended significant amounts of time, money and
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`effort in advertising and promoting all of the FACETS marks, both registered and common law, and the
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`goods and services offered under them, and have thus developed substantial goodwill in the marks. Renzi
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`Decl. 1] 3. Over the past five years, TriZetto has invested approximately $500,000 to $1 million
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`annually in advertising its FACETS product line, resulting in approximately $600 million in sales. E.
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`Based on such extensive use and exposure, TriZetto’s customers in the field of managed care recognize
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`the FACETS marks and associate TriZetto’s FACETS computer software with TriZetto. Arnold Decl.
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`1]1] 6-7.
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`II.
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`The Prior Opposition Between TriZetto and Farmaco.
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`In 2005, well over a decade after TriZetto began using its FACETS mark in connection with,
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`inter @, software used in the managed health care field, Farmaco applied to register PHACET on the
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`basis of Trademark Act Section 66(a) for, among other things, “[c]entral processing units and data
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`processors for the reproduction, storage and archiving of data in the health care field; computers,
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`computer peripherals, and computer software for recording patient health data, in the health care field” in
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`Class 09. g Declaration of P. Kuks in Support of Farmaco-Logica’s Motion For Summary Judgment
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`and Ex. A thereto; Sullivan Decl. 1]1] 3-5; Mayer Decl. 1]1] 4-7.
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`Prior to its 2005 filing, Farmaco had
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`never used the PHACET mark in the United States, in connection with goods or services of any kind.
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`Sfi Declaration of L. Merritt (“Merritt Decl.”) 1] 7 (attached as Ex. 5) and Ex. C thereto, Response Nos.
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`36-40 at p. 13-14.
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`In January 2007, TriZetto filed Opposition No. 91175355 (the “Prior Opposition”) to the
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`application that would later become the PHACET registration (the “PHACET Registration”)'/ on the
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`ground that Farmaco’s PHACET mark so resembled various senior TriZetto FACETS marks, both
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`registered and at common law (collectively,
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`the “TriZetto Marks”) as to be likely, when used in
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`connection with the Farmaco’s goods to cause confusion, or to cause mistake, or to deceive. E
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`Merritt Decl. 1l4 and Ex. A thereto. TriZetto opposed the registration of Farmaco’s PHACET mark
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`based on its initial concerns that Farmaco would use the mark in the field of managed health care and that
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`the apparent similar pronunciations and appearances of PHACET to the TriZetto Marks were likely to
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`cause confusion.
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`§e_e i_d.
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`Significantly, TriZetto’s opposition to the PHACET Registration was
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`explicitly based on TriZetto’s priority of use of the FACETS mark in connection with “goods and
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`services in the field of managed health care, including computer software and services as an application
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`service provider...”
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`§e_e Merritt Decl. fil 4 and Ex. A thereto at 1]
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`l (emphasis added). Accordingly,
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`one of the primary issues in the Prior Opposition was whether the PHACET Registration caused a
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`likelihood of confusion with respect to TriZetto’s prior common law rights in its software for the
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`managed health care industry.
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`In its Amended Answer in the Prior Opposition, Farmaco flatly denied that any likelihood of
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`confusion exists between the PHACET Registration and the TriZetto marks, including TriZetto’s prior
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`use of FACETS in connection with its software products.
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`fig Merritt Decl.1l 5 and Ex. B thereto at 1] 6.
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`Moreover, in addition to denying that any likelihood of confusion existed, Farmaco asserted:
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`The
`-l I. There are important differences between the word marks FACETS and PHACET.
`different letters at the beginning of both marks lead to different visual appearances of the marks.
`Moreover, if [Farmaco’s] and [TriZetto’s] marks were to appear in any alphabetical
`listing,
`it
`would be under “F,” in the one use, and under “P” in the other.
`Finally, the word “facet”
`appears in most English dictionaries (such as The American Heritage Dictionary of the English
`Language, 4th ed. 2000) whereas the word “phacet” does not. These differences will prevent
`purchasers and prosp_ective_gL_Irchasers of [Farmaco’s| and |TriZetto’s| goods and services from
`being confused, mistaken, or d_e_ceived._
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`TriZetto utilizes the defined term “PHACET Registration” herein to refer to both U.S. Trademark Reg. No.
`”
`3,395,039 and the application filed by Farmaco on November 8, 2005 (U.S. Trademark App. Serial No. 79/021,243)
`that would eventually mature into U.S. Trademark Reg. No. 3,395,039.
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`5
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`l2. The application of of [sic] computer systems in health care processes has a major impact on
`the workflow, efficiency and quality of these processes.
`The costs associated with the
`procurement and implementation of such systems and related services are many thousands of
`dollars and they are not sold at retail.
`For these reasons, purchasers and prg_s_pective purchasers
`of ]Farmac__o’s| services and ]TriZetto’s| goods and services,
`i_.;e_._l1ealth care institutions and
`})LQfeSSl0l1al§, are sq];histicate__d__and highly professional and take gre_m care before purchasji1g
`sucl1_goods and services. Where _s_gpl1isticaj;ioi1,__e:_><pertise and care are involved in the
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`p1_1_rc_hasing_pr_ocess, there is no likelihood of confusio1_i,_1__1_3_i_stake or deception.
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`(emphasis added).
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`_Se_e Merritt Decl. 1] 5 and Ex. B thereto at 1]
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`ll—l2 (emphasis added).
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`Farmaco
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`further asserted that FACETS is “not a particularly distinctive mark” therefore “eliminat[ing] any
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`likelihood of prospective purchasers going [sic] to be misled to believe that goods and services offered
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`under the PHACET mark emanate from or may otherwise be associated with Opposer.”
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`See Merritt
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`Decl. 1] 5 and Ex. B thereto at fil l3.
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`These statements in Farmaco’s Amended Answer were not Farmaco’s only unequivocal
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`assertions regarding the supposed lack of a likelihood of confusion during the Prior Opposition.
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`Farmaco responded to TriZetto’s Request for Admission by stating:
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`REQ QUEST NO. 32:
`Admit or deny Applicant’s use of Applicant’s Mark [i.e., the PHACET mark] in connection with
`Applicant’s Goods and Services is likely to cause confusion with Opposer’s use of Opposer’s
`FACETS mark.
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`RESPONSE:
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`Applicant denies this allegation.
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`§e_e_ Merritt Decl. 1l7 and Ex. C thereto at p. 12.
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`In its Responses to Requests for Admissions, Farmaco
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`also denied that the TriZetto FACETS mark and Farmaco’s PHACET mark were phonetically similar
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`(Request No. 21), that they created a similar commercial impression (Request No. 22), that they were
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`visually similar (Request No. 23), and that the field of health care encompassed the field of managed
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`health care (Request No. 42).
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`See Merritt Decl. 1] 7 and Ex. C thereto at pp. 8-9.
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`In light of Farmaco’s vehement and consistent position of no likelihood of confusion, TriZetto
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`contacted Farmaco in an attempt to resolve the opposition amicably. E Declaration of K. Thiessen,
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`(“Thiessen Decl.”) 111] 3-4 (attached as Ex. 6). During such discussions, Farmaco continued its
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`vehement and consistent denial of any likelihood of confusion between the PHACET Registration and
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`TriZetto’s FACETS mark.
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`£1. at 114.
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`In correspondence with TriZetto in the course of the Prior
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`Opposition, Farmaco’s managing director, Paul Kuks, gave written and oral assurances that Farmaco saw
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`no similarity between PHACET and FACETS and maintained there could be no likelihood of confusion
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`because, among other reasons, the marks were distinguishable and PHACET would not be registered or
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`used for the same goods and services as TriZetto’s FACETS mark. _S_e§ Q at 111] 4-6.
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`For example,
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`during the course of the parties’ discussions, Farmaco stated:
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`“I continue to believe that a coexistence of your company’s FACETS marks and my company’s
`PHACET (not PHACETS) mark is possible without [any restrictive agreement between the
`parties].” E. at 1l 7 and Ex. A thereto, Email from P. Kuks to K. Thiessen (Jan. 18, 2008).
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`“I do not think that there is any possible confusion between trademarks used by your company
`and my company’s trademarks.”
`Id.
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`Accordingly,
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`in reliance upon Farmaco’s positions and representations in the pleadings,
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`discovery responses and discussions between the parties in the Prior Opposition, TriZetto withdrew its
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`opposition stating, “In response to Opposer’s discovery requests, Applicant has represented that (1) it has
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`not yet used the PHACET mark in the U.S.; (2) that
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`its intended use of the PHACET mark will
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`encompass only those goods and services identified in the application, i.e., goods and services ‘in the
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`field of health care’; and (3) that ‘the field of health care’ does not encompass the ‘field of managed
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`health care.’ Based on Applicant’s clarification as to its field of intended use, Opposer agrees that the
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`field of use for its FACETS mark is distinct from App|icant’s intended field of use for the PHACET
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`mark.”
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`_S_e_e Merritt Decl. 1] 8 and Ex. D thereto at p. I.
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`In response to TriZetto’s withdrawal, the
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`Board dismissed the Prior Opposition with prejudice.
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`§e_:§ id. at 1] 9 and Ex. E thereto.
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`III.
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`The Current Opposition.
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`Following the dismissal of TriZetto’s opposition to Farmaco’s application for the PHACET mark,
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`in May 2008, Farmaco amended its notice of opposition to TriZetto’s application for the FACETS mark
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`for computer software (Application Serial No. 77/029,672) in the present proceeding, adding the very
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`ground for opposition it had previously so adamantly denied.
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`In complete contradiction to its prior
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`statements, Farmaco asserted that “Applicant’s FACETS mark so resembles Opposer’s PHACET mark as
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`to be likely .
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`.
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`.
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`to cause confusion, or to cause mistake, or to deceive.” See Amended Notice of
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`Opposition in Opposition No. 91184047 (May 14, 2008) at 11 4.
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`In addition, for the first time in its
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`Amended Notice of Opposition in the present proceeding, Farmaco alleged that it would be damaged by
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`the registration of the FACETS mark because “purchasers are likely to attribute the source of
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`sponsorship of [TriZetto’s] goods to [Farmaco].” ii at 116.
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`IV.
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`Farmaco’s PHACET Registration.
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`Farmaco’s PHACET Registration defines the field of use for the mark PHACET as “the health
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`care field,” a field distinct from that of managed health care, as Farmaco acknowledges in its motion for
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`summary judgment, by distinguishing the “fields of both health care and managed health care” and
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`addressing “software to be used in the field of health care (or the managed health care field .
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`.
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`.
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`.).”
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`Farmaco’s Memorandum in Support of Motion for Summary Judgment,
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`15,
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`19
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`(“Farmaco
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`Memorandum”); see also Renzi Decl. 1111 6-7; Arnold Decl. 1111 3-4.
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`Farmaco does not allege prior use of
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`its PHACET mark and there is no evidence in the record whatsoever to indicate that Farmaco has ever
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`used PHACET in the United States.
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`Farmaco Memorandum, 19; Merritt Decl. 11 7 and Ex. C thereto, at
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`11 36. There is no evidence of any actual confusion between TriZetto and Farmaco’s respective marks.
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`Farmaco Memorandum, 19.
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`Farmaco acknowledges that both TriZetto and Farmaco’s customers are
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`“prone to be sophisticated.”
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`Farmaco Memorandum, 18.
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`ARGUMENT
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`1.
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`Summary Judgment Standard.
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`The Federal Rules of Civil Procedure apply to this proceeding.
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`37 C.F.R. § 2.1116(a). A
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`party is entitled to summaryjudgment under Federal Rule 56(c) only where the record of evidence shows
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`“there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a
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`matter of law.”
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`Fed. R. Civ. P. 56(c). To establish that a factual dispute is genuine, the non-movant
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`“need only present evidence from which a jury might return a verdict in [its] favor.” Anderson v.
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`Liberty Lobby,
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`Inc., 477 U.S. 242, 257, 106 S.Ct. 2505, 2514 (1986).
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`In reviewing a motion for
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`summary judgment, “the Board must view the evidence in the light most favorable to the nonmovant.
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`Since opposing factual inferences may arise from the same set of undisputed subsidiary facts, the Board
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`must draw all reasonable inferences in favor of the nonmovant.” Olde Tyme Foods, Inc. v. Round_x’s_,
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`3, 961 F.2d 200, 202 (Fed. Cir. 1992) (reversing Board’s grant of summary judgment for drawing
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`factual inferences in movant’s favor).
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`II.
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`Genuine Issues of Material Fact Preclude Summary Judgment on Likelihood of Confusion.
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`Genuine issues of material fact preclude a finding of likelihood of confusion as a matter of law
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`under the multi-factor DuPont analysis. Certain undisputed facts show, in fact, that the analysis weighs
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`against a finding of likelihood of confusion. Whether the marks are confusingly similar, cover similar
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`goods, or share similar trade channels hinge on genuine issues of disputed material fact and cannot serve
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`as a basis for summary judgment. Because Farmaco cannot maintain its argument that there are no
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`genuine issues of disputed material fact as to the existence of likelihood of confusion,
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`its summary
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`judgment motion must be denied.
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`A.
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`Likelihood of Confusion Test Under DuPont.
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`The 1973 decision in Apglication of E. l. DuPont DeNemours & Co. laid out thirteen factors to
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`be considered, when of record, to determine likelihood of confusion under 2(d) of the Lanham Act.
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`Application of E.
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`l.
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`l;L_iP_o_nt__DeNeinours & C__3_(_)_., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563, 567 (C.C.P.A.
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`1973). Not all thirteen factors are relevant in every case and the Board may give individual factors more
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`or less weight in making a particulardetermination.
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`In re Dixie Restaurants lQg_._, I05 F.3d 1405, I407,
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`41 U.S.P.Q.2d 1531, i533 (Fed. Cir. 1997).
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`In this opposition, at least six DuPont factors are relevant to
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`the proceeding:
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`(1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound,
`connotation and commercial impression.
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`(2) The similarity or dissimilarity and nature of the goods or services as described in an
`application or registration or in connection with which a prior mark is in use.
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`(3) The similarity or dissimilarity of established, likely—to—continue trade channels.
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`(4) The conditions under which and buyers to whom sales are made, i.e. “impulse” vs. careful,
`sophisticated purchasing.
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`(5) The fame of the prior mark (sales, advertising, length of use).
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`(7) The nature and extent of any actual confusion.
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`_l2u[;x)_nt, 476 F.2d at 1361, 177 U.S.P.Q. at 567.
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`Likelihood of confusion is a fact-intensive inquiry that is difficult to determine conclusively at
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`the summaryjudgment stage of proceedings before a full factual record is developed. & Au—Tomotive
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`Gold, Inc. v. Volkswagejt of America, lnc., 457 F.3d 1062, 1075, 80 U.S.P.Q.2d 1293, 1303 (9th Cir.
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`2006)(“Because the likelihood of confusion is often a fact-intensive inquiry, courts are generally
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`reluctant to decide this issue at the summary judgment stage”); Mid-State Aftermarket Bo_c_ly Page
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`v. MQVP, Inc., 466 F.3d 630, 634, 80 U.S.P.Q.2d 1534, 1537 (8th Cir. 2006)(“likelihood of confusion
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`and false advertising are fact-intensive inquiries”); Country Floors. Inc. v. Partnership Composed of
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`Gepner and Ford, 930 F.2d 1056, 1063, 18 U.S.P.Q.2d 1577, 1583 (3d Cir. 1991)(characterizing
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`summaryjudgment for likelihood of confusion as “the exception”).
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`Perhaps the strongest evidence weighing against a finding of likelihood of confusion on summary
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`judgment is the fact that the PTO never cited the PHACET Registration during the examination of
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`TriZetto’s ‘672 Application. Farmaco’s assertion that there are no genuine issues of disputed material
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`fact as to likelihood of confusion is wrong and its motion for summaryjudgment must be denied.
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`B.
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`Three DuPont Factors Undisputedly Weigh Against 21 Finding of Likelihood of
`Confusion.
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`Of the six DuPont factors most relevant to this proceeding, three undisputed factors weigh
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`against finding an existence of likelihood of confusion.
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`I.
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`Customer sophistication weighs against a likelihood of confusion.
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`The parties agree that TriZetto and Farmaco’s purchasers are sophisticated, as Farmaco
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`acknowledged in its motion for summary judgment.
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`Farmaco Memorandum, 18.
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`“[S]ophisticated
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`consumers may be expected to exercise greater care.” Electronic Desigji & Sales. Inc. v. Electronic Data
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`10
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`
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`Systems Corp._, 954 F.2d 713, 718, 21 U.S.P.Q.2d 1388, 1392 (Fed. Cir.
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`l992)(internal quotation
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`omitted). TriZetto has used its FACETS mark in the managed health care field for over fifteen years.
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`Its customers make careful purchasing decisions based on research and negotiation, and they associate
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`FACETS products with TriZetto. Arnold Decl. 1] 5.
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`“[T]here is always less likelihood of confusion
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`where goods are expensive and purchased after careful consideration.” ED&S, 954 F.2d at 718, 21
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`U.S.P.Q.2d at 1392.
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`In Electronic Design & Sales, the applicant applied for the mark E.D.S. for use in
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`the medical field; the opposer used the mark EDS also in the medical field. Li. at 714-15. The Federal
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`Circuit held that likelihood of confusion had not been proven,
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`in part because most of the relevant
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`purchasers of the parties’ respective goods were experienced buyers who made purchases after study and
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`negotiation.
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`l_d_. at 718-19. The court determined that the Board gave the “near identity of the marks”
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`“excessive weight .
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`.
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`.
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`in light of the sophistication of purchasers.” Li. at 718 n.2. Here, too, any
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`similarity between the marks at issue (which are clearly not as similar as those involved in EQ&_S_) would
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`be counterbalanced by the sophistication and careful purchasing habits of TriZetto and Farmaco’s buyers.
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`Thus, TriZetto’s sophisticated customers in the field of managed health care would be able to distinguish
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`without confusion a FACETS product from a PHACET product. Arnold Decl. 1| 8; Renzi Decl. 119.
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`The sophistication ofthe parties’ customers weighs against a finding of likelihood of confusion.
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`2.
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`The lack of fame of PHACET weighs against likelihood of confusion.
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`It is undisputed that TriZetto and a predecessor in interest have used FACETS and similar marks
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`in the field of managed health care for over fifteen years. These years of continuous use, as well as
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`substantial amounts of time, money and effort spent in advertising and promoting the FACETS marks
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`and the goods and services offered under them have allowed the marks to become famous in the field of
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`managed health care. Renzi Decl. 11 5; Arnold Decl. 11 6. TriZetto’s customers recognize the FACETS
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`mark and associate TriZetto’s FACETS computer software with TriZetto. Arnold Decl. {[11 6-8. There is
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`no evidence of any fame of PHACET in the record.
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`3115771
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`11
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`
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`“[T]he fame of the mark must always be accorded full weight when determining the likelihood
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`of confusion.” Recot, Inc. v. Becton, 214 F.3d i322, I328, 54 U.S.P.Q.2d 1894, l897 (Fed. Cir. 2000).
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`Here, the length of use and fame of FACETS weighs against finding that customers in the managed
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`health care field would confuse FACETS with Farmaco’s mark as does the complete absence of the fame
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`of the PHACET mark.
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`3.
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`Lack of actual confusion weighs against likelihood of confusion.
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`The absence of actual confusion is a factor that favors a finding that no likelihood of confusion
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`exists.
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`§]:&r_t_s_ Authority Michigan Inc.
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`v. PC Authority lnc.,
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`63 U.S.P.Q.2d
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`1782,
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`1798
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`(T.T.A.B. 2002). Here, Farmaco and TriZetto agree that there is no evidence of actual confusion
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`between their respective marks.
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`Farmaco Memorandum,
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`l9. The lack of actual confusion is not
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`surprising in light of the undisputed fact that TriZetto’s primary market is in the United States, while
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`Farmaco has never used its PHACET mark in commerce in the United States. The lack of evidence of
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`actual confusion weighs against a finding of likelihood of confusion.
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`C.
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`Genuine Issues of Disputed Material Fact Underlie the Remaining Three Relevant
`DuPont Factors.
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`Genuine issues of disputed material fact surround central questions as to the similarity of
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`TriZetto’s FACETS mark and Farmaco°s PHACET mark, the similarity of the goods that the marks cover,
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`and the similarity of their respective trade channels. The remaining three DuPont factors relevant to
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`this proceeding therefore cannot weigh in favor of likelihood of confusion as a matter of law.
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`1.
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`Similarity or dissimilarity of the marks.
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`Under DuPont, the appearance, sound, connotation, and commercial impression of two marks are
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`compared to determine their similarity or dissimilarity. DuPont, 476 F.2d 1357, 1361, I77 U.S.P.Q.
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`563, 567.
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`Farmaco’s PHACET and TriZetto’s FACETS have obvious differences in appearance.
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`The marks begin with different letters, which is the first impression a customer would encounter.
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`In
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`fact, as Farmaco pointed out in the Prior Opposition, one of the “important differences between the word
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`marks FACETS and PHACET” include the fact that “were [they] to appear in any alphabetical listing, it
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`3ll577l
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`I2
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`
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`would be under ‘F,’ in the one use, and under ‘P’ in the other.” Merritt Decl. 1] 5 and Ex. B thereto.
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`TriZetto’s FACETS mark is plural where Farmaco’s PHACET mark is singular, again resulting in a
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`different commercial
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`impression. There are also differences in the marks’ connotations, because
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`“facet” is a word in the English language and “phacet” is not. While pronunciations of the two marks
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`are likely to be similar, “phonetic similarity alone is insufficient in this case to establish as a matter of
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`law that the uses of the respective marks are likely to cause confusion.” Olde Tyme Foods, lnc., 961
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`F.2d at 203.
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`The first I_)_u@ factor cannot weigh in favor of likelihood of confusion as a matter of law.
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`2.
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`Similarity or dissimilarity of the goods.
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`The similarity or dissimilarity of goods must be analyzed under _Qu_P@£t by reviewing the goods’
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`descriptions or their prior use. , 476 F.2d 1357, 1361, I77 U.S.P.Q. 563, 567.
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`The respective descriptions of Farmaco and TriZetto’s marks are undoubtedly different.
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`Farmaco’s PHACET Registration describes the goods it covers, in relevant part, as:
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`[c]entral processing units and data processors for the reproduction, storage and archiving of data
`in the health care field; computers, computer peripherals, and computer software for recording
`patient health data, in the health care field
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`PHACET Registration, Ex. G. TriZetto’s ’672 Application, on the other hand, describes its goods as
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`computer software for health care plan management and administration; computer software for
`claims and benefits administration for Medicare and Medicaid managed care
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`’672 Application, Ex. D.
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`Though both descriptions incorporate software, Farmaco’s software is used “for recording patient health
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`data,
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`in the health care field,” while TriZetto’s software is used “for health care plan management and
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`administration” and “claims and benefits administration.” Based on the descriptions alone, the two
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`types of software have distinctly different functions, are provided by different vendors, and are used by
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`different customers.
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`Farmaco’s software is used in an individual patient setting. TriZetto’s software,
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`on the other hand, is used to manage and administer claims, benefits, and health care plans outside the
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`individual patient setting. Renzi Decl.
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`111} 6-8. The different functions and uses of the parties’
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`3ll577l
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`l3
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`
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`respective software products weigh against a finding of likelihood of confusion.
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`_S_e§_ TMEP §
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`l402.03(d) (requiring that identifications for computer programs be highly specific in that they must
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`explicitly set forth both a function/purpose and the field of use of the software).
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`“The purpose of
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`requiring specificity in identifying computer programs is to avoid the issuance of unnecessary refusals of
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`registration under l5 U.S.C. § l502(d) where the actual goods of the parties are not related and there is
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`no confiict in the market place [citation omitted].”
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`_S_e§ i_cL The PTO’s well-established position that
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`the same or similar marks may coexist for different types of computer software is reinforced by its
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`recognition of “the proliferation of computer programs over recent years and the degree of specification
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`that these programs have....”
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`fige Q Farmaco acknowledges, and TriZetto agrees, that the fields of
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`“health care” and “managed care” are distinct from one another.
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`_Sfi Farmaco Memorandum,
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`l5, l9
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`(distinguishing the “fields of both health care and managed health care” and addressing “software to be
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`used in the field of health care (or the managed health care field .
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`.
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`. .)”; Arnold Decl. 1l2. Moreover, the
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`types of software recited in TriZetto’s application and the Farmaco registration are not
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`typically
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`distributed by the same vendor. Arnold Decl. 1] 4. The factual
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`inference drawn from these facts in
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`TriZetto’s favor weighs toward a finding of no likelihood of confusion, and the goods described in the
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`PHACET Registration and the ’672 Application cannot be said to be confusingly similar as a matter of
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`law.
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`The second DuPont factor cannot weigh in favor of likelihood of confusion for purposes of
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`summaryjudgment.
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`3.
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`Similarity or dissimilarity of trade channels.
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`The facts on the record support a finding that TriZetto and