Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA479524
`ESTTA Tracking number:
`06/21/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Entity
`Composed Of:
`Address
`
`Nova Healthcare Management, LLP
`Partnership
`Citizenship
`Ulf Rohde (United States), Gert Rohde (Germany)
`5771 Enid Street
`Houston, TX 77009
`UNITED STATES
`
`Texas
`
`Attorney
`information
`
`Ellen S. Simpson
`Simpson & Simpson, PLLC
`5555 Main Street
`Williamsville, NY 14221
`UNITED STATES
`esimpson@idealawyers.com, swright@idealawyers.com,
`edinsmore@idealawyers.com Phone:7166261564
`Applicant Information
`
`85502394
`06/21/2012
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`Publication date
`Opposition
`Period Ends
`Nova Healthcare Management, LLP
`5771 Enid Street
`Houston, TX 77009
`UNITED STATES
`Goods/Services Affected by Opposition
`
`05/22/2012
`06/21/2012
`
`Class 045.
`All goods and services in the class are opposed, namely: case management services, namely, the
`coordination of necessary medical services, vocational issues and educational services for persons
`injured at work
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution
`
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`
`2927338
`
`Application Date
`
`08/04/2003
`
`02/22/2005
`
`Foreign Priority
`Date
`NOVA HEALTHCARE ADMINISTRATORS
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`U.S. Application/
`Registration No.
`Registration Date
`Word Mark
`
`Goods/Services
`
`U.S. Application/
`Registration No.
`Registration Date
`Design Mark
`
`NONE
`
`Class 036. First use: First Use: 1991/03/00 First Use In Commerce: 1991/03/00
`Third party administrator of employee benefit plans; insurance administration
`and brokerage services
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`U.S. Service Mark Application Serial No. 85/657,195 for the mark
`NOVA, filed June 20, 2012 and not yet available on TARR/TDR;
`third party administration of employee benefit plans; insurance
`administration and brokerage services in International Class 36, and
`wellness, disease management and case management services in
`International Class 44
`
`NONE
`
`NONE
`
`Application Date
`
`NONE
`
`Goods/Services
`
`U.S. Service Mark Application Serial No. 85/657,173 for the mark
`NOVA & Design, filed June 20, 2012 and not yet available on TARR/
`TDR; SERVICES: third party administration of employee benefit
`plans; insurance administration and brokerage services in
`International Class 36, and wellness, disease management and case
`
`

`
`U.S. Application/
`Registration No.
`Registration Date
`Word Mark
`Goods/Services
`
`U.S. Application/
`Registration No.
`Registration Date
`Design Mark
`
`management services in International Class 44
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`NOVA
`third party administration of employee benefit plans; insurance
`administration and brokerage services in International Class 36, and
`wellness, disease management and case management services in
`International Class 44
`
`NONE
`
`NONE
`
`Application Date
`
`NONE
`
`Goods/Services
`
`third party administration of employee benefit plans; insurance
`administration and brokerage services in International Class 36, and
`wellness, disease management and case management services in
`International Class 44
`
`Attachments
`
`76536990#TMSN.gif ( 1 page )( bytes )
`IHAO111US_imagefile_uspto.jpg
`IHAO111US_imagefile_uspto1.jpg
`IHAO111US_opp.pdf ( 8 pages )(47884 bytes )
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`
`

`
`record by First Class Mail on this date.
`
`Signature
`Name
`Date
`
`/Ellen S. Simpson/
`Ellen S. Simpson
`06/21/2012
`
`

`
`ATTORNEY DOCKET NO.: 0035.IHAO111US
`
`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of U.S. Service Mark Application Serial No. 85/502,394
`Published in the Oflicial Gazette on May 22, 2012
`
`Opposition No.
`
`Independent Health Association, Inc.
`
`Opposer,
`
`V.
`
`Nova Healthcare Management, LLP
`
`Applicant.
`
`\_/\_/\_/\_/\_/\_/\_/\_/\_/\_/
`
`Commissioner for Trademarks
`
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`ATTN: Trademark Trial and Appeal Board
`
`NOTICE OF OPPOSITION
`
`Independent Health Association, Inc. (“Opposer”), formed in the State of New York,
`
`having a principal place of business at 511 Farber Lakes Drive, Buffalo, New York, 14221,
`
`believes that it will be damaged by registration of the mark
`
`(.3 E-f‘.%:§;
`‘ W Fifi shown in Serial No.
`
`85/502,394 filed by Nova Healthcare Management, LLP
`
`(“Applicant”) and hereby opposes
`
`the same.
`
`As grounds for opposition, Opposer states as follows:
`
`1.
`
`Opposer, Independent Health Association, Inc., formed in the State of New York
`
`with a principal place of business in New York, is a leading company in the field of managed
`
`health care, providing health care benefit plans and related administrative services to health care
`
`providers, employers, and plan subscribers.
`
`N‘z:3
`Upon information and belief, Applicant has not used the mark ‘
`
`1n the
`
`2.
`
`United States for the services set out in U.S. Service Mark Application Serial No. 85/502,394,
`
`

`
`prior to December 22, 20ll, the date of filing of Applicant’s intent—to—use application for this
`
`mark.
`
`3.
`
`Since at least as early as March l, 1991, long prior to the filing date of the
`
`application opposed herein, Opposer has been using, and continues to use, the service mark
`
`NOVA HEALTHCARE ADMINISTRATORS in interstate commerce in connection with third
`
`party administrator of employee benefit plans, insurance administration and brokerage services.
`
`The service mark NOVA HEALTHCARE ADMINISTRATORS has become identified with
`
`Opposer and its services and is well known and famous in connection with Opposer’s services.
`
`4.
`
`Since at least as early as January 20ll, long prior to the filing date of the
`
`application opposed herein, Opposer continuously has used the service mark NOVA in interstate
`
`commerce in connection with the advertising, promotion and sale of third party administration of
`
`employee benefit plans, insurance administration and brokerage services, as well as wellness,
`
`disease management and case management services. The service mark NOVA has become
`
`identified with Opposer and its services and is well known and famous in connection with
`
`Opposer’s services. As a result, Opposer has established common—law rights in the NOVA
`
`mark.
`
`5.
`
`Since at least as early as January 20ll, long prior to the filing date of the
`
`application opposed herein, Opposer continuously has used the service mark
`
`‘.
`
`V
`
`.
`
`Sit
`r _
`in
`
`commerce in connection with the advertising, promotion and sale of third party administration of
`
`employee benefit plans, insurance administration and brokerage services, as well as wellness,
`
`1'1:
`
`IEQVB’
`-
`-
`-
`disease management and case management services. The service mark ‘
`..
`- has become
`
`identified with Opposer and its services and is well known and famous in connection with
`
`ii”!
`
`Opposer’s services. As a result, Opposer has established common—law rights in the
`
`mark.
`
`

`
`6.
`
`Opposer has been using, and continues to use, the marks NOVA and
`
`_
`
`.
`
`._
`
`_«-.w_
`
`from a date prior to December 22, 2011,
`
`the date of filing of Applicant’s intent—to—use
`
`<
`application for the mark ‘
`
`‘(:3
`A “l” , and a date prior to any date of first use that can be relied
`
`upon by Applicant for the mark
`
`’ {I} 1/E1
`...§ §
`
`. Since at least as early as January 2011, Opposer has
`
`expended a substantial amount of time, money and effort promoting, marketing and advertising
`
`its services under and in connection with the NOVA and
`
`marks. As a result of
`
`Opposer’s continuous use of these marks, Opposer has developed and enjoys extensive goodwill
`
`and customer recognition throughout the United States with respect to these marks.
`
`7.
`
`Opposer is the owner of U.S. Service Mark Registration No. 2,927,338, dated
`
`February 22, 2005, pursuant to U.S. Service Mark Application Serial No. 76/536,990 filed on
`
`Aug. 04, 2003 for the service mark NOVA HEALTHCARE ADMINISTRATORS for use in
`
`association with third party administrator of employee benefit plans; insurance administration
`
`and brokerage services in lntemational Class 36 (Exhibit 1).
`
`8.
`
`The above referenced U.S. Service Mark Registration No. 2,927,338 for the
`
`service mark NOVA HEALTHCARE ADMINISTRATORS has become incontestable under
`
`Section 15 of the Lanham Act, 15 U.S.C. §l065, constituting conclusive evidence of the validity
`
`of the registered marks and Opposer’s exclusive right to use the same.
`
`9.
`
`Opposer is also the owner of pending U.S. Service Mark Application Serial No.
`
`85/657,195, filed on June 20, 2012, for the service mark NOVA for use in association with third
`
`party administration of employee benefit plans; insurance administration and brokerage services
`
`in lntemational Class 36, and wellness, disease management and case management services in
`
`lntemational Class 44 (Exhibit 2).
`
`

`
`10.
`
`Opposer is also the owner of pending U.S. Service Mark Application Serial No.
`
`85/657,173, filed on June 20, 2012, for the mark
`
`for use in association with third
`
`party administration of employee benefit plans; insurance administration and brokerage services
`
`in International Class 36, and wellness, disease management and case management services in
`
`International Class 44 (Exhibit 3). The marks cited above in Paragraphs 2 through 10 are hereby
`
`entitled the “NOVA marks.”
`
`11.
`
`For many years, Opposer has extensively used and promoted its services using its
`
`family of NOVA marks. Opposer has developed exceedingly valuable goodwill with respect to
`
`its the family of NOVA marks cited above. By virtue of its efforts,
`
`the expenditure of
`
`considerable sums for advertising and promotional activities, and by virtue of the excellence of
`
`its services, Opposer has developed exceedingly valuable goodwill with respect to these NOVA
`
`marks. Opposer’s NOVA marks are well known to consumers and have been distinctive and
`
`famous since prior to the filing date of the application opposed herein.
`
`12.
`
`By its Application Serial No. 85/502,394, Applicant seeks to register the mark
`
`{f}§4-"ER
`‘
`“ '3} for use in association with “case management services, namely, the coordination of
`
`necessary medical services, vocational issues and educational services for persons injured at
`
`wor ” in International Class 45
`
`13.
`
`The opposed application is an intent—to—use based application filed on December
`
`22, 2011, which date is well after Opposer first commenced use of and/or registered its NOVA
`
`marks.
`
`14.
`
`Applicant’s mark,
`
`(.3 I-"£1.
`_,..+.§,<§»s'*-‘
`
`_
`
`, is confusingly similar in sight, sound and meaning
`
`to Opposer’s aforesaid marks owned and used by Opposer which all include the word NOVA.
`
`The use and registration of Applicant’s mark
`4
`
`C3 “VT.-4%
`,..3‘.9‘:..é‘.s’*
`
`.
`
`would result in confusion, mistake
`
`

`
`and/or deception as to the source or origin of Applicant’s services, leading consumers to believe
`
`that they are somehow affiliated with, approved, sponsored or licensed by Opposer.
`
`15.
`
`If Applicant is permitted to use and register Applicant’s mark for the services
`
`identified in the Application, confusion in trade, resulting in irreparable damage and injury to
`
`Opposer, inevitably would result by reason of the sin1ilarity between Applicant’s and Opposer’s
`
`marks and the services sold and provided thereunder. Any objection or fault found with the
`
`services marketed under Applicant’s mark,’
`
`t
`
`’ (:3
`““'i§’$“‘;E , would reflect on, and injure,
`
`the
`
`reputation Opposer has established for the services provided under its aforesaid marks.
`
`If
`
`Applicant is granted the registration herein opposed, Applicant would obtain a prima facie
`
`exclusive right to use the mark set forth in its application for registration. Such registration
`
`would become a source of damage and injury to Opposer through the generation of confusion,
`
`mistake, and/or deception, the dilution of Opposer’s marks and the diminution of Opposer’s
`
`ability to control the quality of services sold thereunder.
`
`16.
`
`Moreover, such registration would run contrary to the requirement that all doubts
`
`as to the likelihood of confusion must be resolved in favor of Opposer, and against Applicant,
`
`who has a legal duty to select a mark dissimilar to marks already in use.
`
`17.
`
`Applicant’s mark, as used on the services listed in the Application, would dilute,
`
`or be likely to dilute, the distinctiveness of Opposer’s aforesaid marks, resulting in damage to
`
`Opposer, its goodwill and strength and value of its marks.
`
`18.
`
`In view of the similarity in sight, sound and meaning between Applicant’s mark
`
`N€i}}—'}-=‘§
`....f§.!tw‘..ei*‘
`
`and Opposer’s aforesaid marks;
`
`the similarity between the respective services of
`
`Applicant and Opposer associated with Opposer’s aforesaid marks; and the similarity of the
`
`channels of trade and customer base for Applicant’s alleged services and Opposer’s services;
`
`

`
`Applicant’s mark so resembles Opposer’s aforesaid marks as to be likely to cause confusion,
`
`and/or to cause mistake, and/or to deceive.
`
`WHEREFORE, Opposer prays that U.S. Service Mark Application Serial No. 85/502,394
`
`be rejected, that no registration be issued thereon to Applicant, and that this opposition be
`
`sustained in favor of Opposer.
`
`Opposer hereby submits the requisite filing fee in the amount of $300.00 as required in
`
`37 C.F.R. § 2.6(a)(17). Please charge any additional fees to Account No. 50-0822.
`
`Respectfully submitted,
`
`
`
`Ellen S. Simpson
`Attorney for Opposer
`Simpson & Simpson PLLC
`5555 Main Street
`
`Williamsville, New York 14221
`
`(tel) 716-626-1564 / (fax) 716-626-0366
`
`DATED: June 21, 2012
`
`

`
`CERTIFICATION UNDER 37 C.F.R.
`
`1.8
`
`I hereby certify that this NOTICE OF OPPOSITION is being filed electronically with the
`
`United States Patent and Trademark Office utilizing the Electronic System for Trademark Trials
`
`and Appeals on this 213‘ day of June, 2012.
`
`
`
`Ellen S. Simpson
`Attorney for Opposer
`Simpson & Simpson PLLC
`5555 Main Street
`
`Williamsville, New York 14221
`
`(tel) 716-626-1564
`
`(fax) 716-626-0366
`
`

`
`CERTIFICATE OF SERVICE
`
`I certify that a true copy of this NOTICE OF OPPOSITION was served upon the
`
`Applicant by depositing a copy thereof with the U.S. Postal Service, Via first class mail, postage
`
`prepaid, directed to Applicant’s counsel:
`
`Dated: June 21, 2012
`
`Richard D. Fladung
`Strasburger & Price, LLP
`1401 McKinney St. Ste 2200
`Houston, Texas 77010-4035
`
`
`
`Ellen S. Simpson
`Attorney for Opposer
`Simpson & Simpson, PLLC
`5555 Main Street
`
`Williamsville, New York 14221
`
`Telephone: (716) 626- 1564
`Facsimile: (716) 626-0366